Three Reasons Why Christian Louboutin (rightfully) Loses Battle Against YSL
Hi everyone. Thank you for all the feedback on the CBS segment. Your support has been overwhelming and super encouraging.
Now, let's turn to the question on everyones mind: why did Louboutin lose when his red lacquered sole is so distinctive and clearly has secondary meaning (which is a legal term meaning consumers see the red sole and immediately know Louboutin makes that shoe)?
(remember SJP in Sex in the City? Louboutin can thank her and J-LO for increasing the recognizablity of his red sole, but I digress)
In the legal world, color can sometimes be a trademark if it meets the Qualitex test, which says color alone sometimes may be used as a trademark:
“where that color has attained secondary meaning and therefore identifies and distinguishes a particular brand (and thus indicates its source),” but not where it is functional, meaning that the use of the color will put a competitor at a significant disadvantage because the color is essential to the use or purpose of the product, or affects the cost of quality of the product."
But wait, Staci, you say. I though I just read that you think Louboutin's red sole has secondary meaning? Yes, I do. But Louboutin still loses to YSL and here's three reasons why:
1. Louboutin's testimony. This was probably Louboutin's biggest mistake. When asked why he put red on his shoe's outsoles, he said red gave his shoes "energy," red is "engaging," red is "sexy" and red "attracts men to the women who wear my shoes." WOW. His lawyers did not do a good job here, or more likely Louboutin just didn't listen. All the reasons stated are considered functional under trademark law and do not support a finding the color red is a source indicator of the brand (a requirement for securing trademark protection). To be even more blunt, Louboutin should have said, I put red on the bottoms of my shoes so people knew who made them while women were walking in my shoes ans wearing them around town.
2. Louboutin's trademark. Louboutin's trademark application was vague -- it did not specify what color red (i.e. pantone color), it did not specify whether the red would limited to laquard (as is most common with Louboutin, which begs the question why did they challenge YSL "flat" red shoe) or whether it would be used only on soles of high heels or flats (the application said high fashion shoes) or even whether the use would be limited to couture compared to mass.
3. Chilling effect on the Business of Fashion. In our world, there are three primary colors: red, blue and yellow. If one designer was granted a monopoly on red, what would stop another from claiming yellow? Due to Louboutin's poorly drafted trademark application, Louboutin asked for and received, very very broad protection. If the Court upheld its registration, it foresaw unlimited controversies: is a red to close to Louboutin's? Is use on a low end flat ok? Does every designer have to run to the court before releasing a collection or worse yet ask Louboutin's permission? Granting one company a monopoly on a color would allow large companies with large legal war chests to flood the trademark office and the courts. Small designers would be hurt and the same litany of concerns surrounding the adoption of the Destruction of Affordable Fashion Bill i.e. the IDPPPA are raised here.
And one side note, sorry because I usually hate long posts: the judge did not say a fashion companies can never trademark a color as many are claiming he did.
The judge said it is hard to claim color as a trademark in fashion and based on the facts of this case - Louboutin's awful trademark application and disastrous admission - Louboutin is not entitled use red as a trademark.
I also have to wonder why Louboutin chose YSL as its test case? Especially when the YSL shoes Louboutin claim are causing customer confusion look nothing like his and have been used by YSL long before Louboutin used his red soles.
Again, poor lawyering or maybe the result of two long time French competitors taking a grudge match to the US Courts. Someone should have warned Louboutin about the American legal system.
Now, based on the judge's comments this week, it is clear he will cancel Louboutin's red sole mark, unless Louboutin immediately appeals the Judge's denial of Louboutin's request for a preliminary injunction.
Since the law and the facts of this case are so clear, the only reason Louboutin would appeal is ego or lack of clear thinking as he is likely still seeing red.
When I first suggested to friends and colleagues that there is such a thing as "fashion law," they laughed. Now, six years into being a practicing Fashion Lawyer (as a Fashion Litigator and doing Fashion transactions), I don't get any laughter when I tell people what I do. Most ask:
Well, we knew it was coming. Today, Senator Charles Schumer introduced the 
Third, only an article that is "unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles," qualify as a fashion design. As a member of the fashion community, I shrudder to think how a judge is going to decide THAT question.
