Louboutin v. YSL: Leaving not-quite-well enough alone [UPDATED 8/4/11]
After Louboutin's serviceable, if not exactly compelling, showing in court on July 22nd, the plaintiff's attorney clearly felt that he hadn't gotten everything off his chest. Hence his recent hand-delivered letter to the judge, placed in the court's filing system yesterday, subsequently reported on by Women's Wear Daily, and provided for your enjoyment here.
Some highlights from the letter, along with LAW OF FASHION's commentary:
- Louboutin reiterates its concern that "[a]bsent a preliminary injunction it is likely that the third party manufacturers who copy Louboutin will see a green light to resume their equally harmful copying." This isn't necessarily true; it depends on the route the judge takes to a denial of the preliminary injunction. If, for example, he declined to grant it based on "delay" or the "equities" of this particular case, would-be knockoff artists would be ill-advised to consider the ruling a green light. But if the judge withholds the injunction on the ground that Louboutin does not have a "likelihood of success on the merits," that's another story -- a scary one, from Louboutin's perspective.
- Louboutin again states that its registration is "specifically for a 'bright red lacquered outsole' used on 'women's luxury designer footwear.'" (Italics in letter.) In court, the judge had expressed concern that the registration does not contain more specific color characteristics than the phrase "bright red." So Louboutin cites a provision of the trademark registration bible that requires registrants to state only "the generic name of the color claimed," and which makes clear that the drawing on file with the Trademark Office -- as opposed to the description accompanying it -- controls for determining what exactly is protected by trademark law.
- Louboutin finds a great quote to rebut the court's expression of discomfort on the question of "how close is too close" in the realm of color trademarks: a statement by the Court of Appeals for the Federal Circuit that "deciding likelihood of confusion among color shades . . . is no more difficult or subtle than deciding likelihood of confusion where word marks are involved." Unfortunately for Louboutin, Federal Circuit case law isn't controlling here, and there's been a very important Supreme Court opinion on colors-as-trademarks that post-dates the cited opinion, arguably "clearing the field" to some degree.
- Louboutin writes: "The argument of its counsel that YSL does not understand the meaning of 'women's luxury designer footwear' is unconvincing." This is a risky statement to make in the wake of the Alice in Wonderland-esque exchange that took place in court between the judge and Louboutin's attorney, wherein the latter maintained that "high-fashion" could refer to the height of a heel rather than, say, what every English-speaking human being knows it to mean.
- Louboutin argues that "[f]ashion experts reject the notion that the use of Mr. Louboutin's red color on outsoles is necessary for the design of a 'monochrome' shoe[.]" In LOF's view, this adds nothing to the debate. Either "monochrome" means one thing (a monochrome upper), in which case the expert's opinion is true but unhelpful, or the term means something else (a matching upper and outsole), in which case the expert is simply wrong.
- Louboutin does score a palpable hit by turning YSL's claims about its longtime use of red-soled shoes against the defendant: "YSL's purported 'reintroduction' of red outsoles in 2004 [since their previous use in the late 1960s], only after Louboutin had made his Red Sole Mark famous as an indicator of source [suggests] infringement." The thing is, LOF isn't quite sure Louboutin has its dates right. In LOF's recollection, YSL mentioned making red-soled shoes in the 80s, which, if true, would dull the blow of Louboutin's argument to some degree.
- Louboutin finally addresses YSL's "fair use" argument in a meaningful way. It's unclear whether the plaintiff just recently realized that it needed to cover its ass on the fair use issue, or whether it simply ran out of space in its reply brief and is essentially using this letter to circumvent the crushing page limits imposed on parties, especially when it comes to plaintiffs' replies.
- Louboutin sends out a (polite, roundabout) warning shot to the court in response to Judge Marrero's articulated concern about how future designers will avoid liability if the court rules for Louboutin: "It is not the obligation of the trademark owner, nor of the court, to provide advisory opinions to the second comer on how close they can come to the mark without being held liable for infringement." The phrase "advisory opinion" was undoubtedly chosen to catch the judge's eye, as the Supreme Court has ruled that nothing less than the Constitution prohibits federal judges from issuing so-called "advisory opinions" by ruling on matters not specifically at issue in a given case.
- Alas, after a couple of strong pages, Louboutin concludes by overselling its case: "To accept the theories, novel as they are, of YSL, 'would be the death knell for trademark protection.'" Louboutin cites to a Ninth Circuit case where the defendant was selling keychains featuring the plaintiff's trademark because it liked how the mark looked. While one can draw a superficial parallel between that case and this one, it doesn't take three years of law school to distinguish the two. It seems to LOF that the most one can credibly say about a ruling in favor of YSL is that it might be the "death knell" for colors serving as trademarks on aesthetically-oriented products... if that.
In short, despite a couple of good jabs, this letter probably isn't a game-changer.
UPDATE (8/4/11): LAW OF FASHION has obtained the letter YSL sent to the court in reply to Louboutin's letter, as well as several exhibits that accompanied the defendant's letter. (Yes, this letter was mentioned in the same WWD article linked to above... but better late than never.) While this writer is on the go and can't go through YSL's materials on granular level, here are a couple of highlights (hyperlinks provided by LOF):
- Practically the first words out of YSL's mouth, er, keyboard, are "Louboutin's trademark registration never should have been granted." Well, damn. (They've said it before, but this sentence just slaps you in the face.) The reason: "a single primary color for an article of fashion is aesthetically functional and, as such, no fashion compay should be permitted to monopolize that color." As LOF has pointed out in the past, this is a plausible, albeit sweeping, way to resolve the dispute. If adopted by the judge, this position would essentially carve out an entire category of goods from single-color-as-trademark protection. The argument is certainly defensible, but the issue is sufficiently important and intellectually provocative -- plus, it's been a while since the Supreme Court last addressed colors-as-trademarks -- that a ruling along these lines could very well make it up to the highest court for review.
- Interestingly, YSL produces a "key fact that Louboutin failed to disclose" that strongly suggests aesthetic functionality: in 2002, the Trademark Office rejected Louboutin's initial application because the red was sole "merely an ornamental feature of the goods" that "makes the goods more decorative." It's important to point out that courts differ in the amount of deference granted to USPTO findings, depending on the judge, the circuit, how far the application got in the registration process, and other factors. Also, as explained below, it's possible that this rejection isn't technically part of the evidentiary record. But even if it's not, there's just no way this genie can be re-bottled.
- Another reason the registration never should have been granted, YSL maintains, is that it is too indefinite. One of the most powerful parts of YSL's oral argument to the court on July 22nd was an anecdote about YSL's deposition of Christian Louboutin (the man), during which the deponent could -- or would -- not say which of a number of reds were "too close" to his signature shade.
- It would have been a powerful (and potentially fatal) blow to Louboutin if YSL had responded to Louboutin's letter to the court with a statement to the effect of "actually, we sold red-soled shoes in 1967, 1972, 1978, 1985, 1992..." and so on. But YSL can't produce such a list, it explains, because the company "does not keep samples of every style [it sells], so YSL is not easily able to identify which shoes had red soles in the 1970s, 1980s, and 1990s." Oh well.
- YSL's letter to the court, more emphatically than its opposition brief, stresses the "radically anti-competitive effects" of the position Louboutin advocates (i.e., that YSL should "stay far enough away" from its color to avoid possible infringement.) YSL calls this system "unworkable," particularly in light of Louboutin's admission that colors look different once printed. This admission, you see, means even if a fashion house "stayed far enough away" from Louboutin's shade of red on the drawing board, it might sent the specs to its manufacturer only to end up with thousands of shoes that turn out not to be "far enough away," leading either to potential liability or a dumpster full of fancy shoes.
- Finally, YSL's letter reiterates its arguments that Louboutin's purported red-sole mark lacks secondary meaning among the relevant consumers and that the YSL's employment of the color at issue is a "fair use." Man, LOF should have explained the difference between copyright and trademark fair use a long time ago. Soon... promise.
After reviewing both parties' submissions, Judge Marrero announced on August 3rd that he would not consider certain exhibits included with YSL's response. Louboutin tried to make much of this in the press, but in all likelihood, this snag won't make much of a difference. There's already a mountain of evidence in the record, and LAW OF FASHION has a feeling the judge has pretty much made up his mind by this point. But as far as when he'll share the contents thereof, that's anybody's guess.
[This post does not constitute legal advice or form an attorney-client relationship with any person or entity. The plaintiff's letter has intentionally been quoted in an incomplete manner, for ease of reading. Although it should go without saying, the plaintiff may not have intended the passages in the manner LOF has characterized them here. To see the court filings, including the quoted letter, in their entirety, go to Scribd.]