Louboutin Continues to See Red and Tiffany is Blue in the Face

Any fashionista worth her Prada knows that Christian Louboutin and Yves Saint Laurent have turned New York courtrooms into their stomping ground over their right to use red bottom soled shoes. 

CanadaFashionLaw has been covering this case with interest and reporting on all the developments.  It’s been a busy (and interesting) couple of months.

If you’re fashionably late to the courtroom drama, CanadaFashionLaw provided an overview of what is at stake between the parties.  CanadaFashionLaw also provided a detailed summary and analysis of the court's decision that declined Christian Louboutin’s request for a preliminary injunction.

As predicted, Christian Louboutin did not take very kindly to the rejection and has issued an appeal against the judgment. 

Looking to 'up the legal ante', Tiffany has also put in its two cents and made submissions to the Court supporting Christian Louboutin’s position.  No need for a poker face here, we know that Tiffany is concerned that about the possible domino effect that the decision could have for Tiffany’s protection of its color trade-mark (robin egg blue for jewelery boxes).  And with that, I’ve run out of poker analogies.  Let the legal games begin!

CanadaFashionLaw, remind me again about the decision that Christian Louboutin is appealing?

OK.  Quick run through.  Christian Louboutin is well-known for its red bottom-soled shoes.  In fact, Christian Louboutin obtained a trade-mark registration in the US for it, which gives them nation-wide exclusivity.  Yves Saint Laurent started to incorporate this red bottom-soled shoe in its footwear line.  Christian Louboutin came back with “on no you didn’t!” and commenced a legal action against Yves Saint Laurent for trade-mark infringement.  Christian Louboutin sought an order from the court requesting that Yves Saint Laurent cease from selling these shoes in the meantime until the court made a final decision.  The court came back and said – nah, Yves Saint Laurent, go ahead, go on with your bad self.  In fact, Christian Louboutin, you may not even have the right to exclusivity after all.  Christian Loubouin was not happy with this at all. 

Here’s a run down of the major points made by the Court in denying Christian Louboutin’s request:

1.       The judge recognized that color can be protected as a trade-mark, but there is a functionality bar. 

2.       In some industrial markets, products are so standardized in shape, design and general composition that color can be a key distinguishing feature.  But, the judge held that the fashion industry is a different beast that should not be given the same benefits.

3.       Because color is so integral to the fashion industry, whose whole mandate is ornamental and aesthetic, color takes a more prominent role.  It defines seasons, trends and tastes. 

4.       In the fashion world, according to the judge, color advances expression of ideas through fashion more so than to identify the source of the design, which is a fundamental tenet of trademarks law. 

5.       The judge recognized that there are instances when color can play a greater role in a fashion brand’s life, citing Louis Vuitton and Burberry as examples.  Yet, in his opinion, these cases are different as the famed Louis Vuitton and Burberry are comprised of different colors in a design configuration.  Christian Louboutin’s claimed trade-mark is comprised of only one vaguely described color “lacquered red”.

6.                  The judge seemed to put a fair amount of emphasis on the artistic nature of the fashion industry, thereby differentiating from other consumer products industry, using terms such as “fanciful business” and then launched into an analogy between artists and fashion designers (Monet and Christian Louboutin are, apparently, one and the same), which is a little outside the scope of the matter at hand. 

7.       The trade-mark registration covers “lacquered red soles” for women’s high fashion designer footwear.  The judge felt that this is an ambiguous color claim and could have significant ramifications for competition. 

8.        Ultimately, the judge questioned whether a color in the fashion industry can be functional and, therefore, not eligible for trade-mark protection.  The judge also stated that the color was functional because adding the lacquer to the shoe increased the cost of production for the shoe, which validated the increased retail price.

Let’s Break Down Christian Louboutin’s Appeal

Christian Louboutin is seeking to overturn this decision by bringing it to the attention of the Court of Appeal, a higher level of court.  Christian Louboutin posed three questions to the Court of Appeal:

  • The judge agreed that Christian Louboutin’s red bottomed soles were world famous, which are the subject matter of a US trade-mark registration.  How then can the judge ignore his own findings and that of the US Trademarks Office by stating that Christian Louboutin's red bottomed soles cannot act as a trade-mark in the fashion industry?

  • Did the judge make an error in stating that a single color could not act a trade-mark in the fashion industry based solely on the doctrine of aesthetic functionality?

  • Did the judge exercise a little too much discretion in reaching its decision by ignoring fundamental trade-mark law principles and evidentiary proof?

What Did Christian Louboutin Have to Say for Himself?

CanadaFashionLaw read through the 100+ page submissions.  Here’s a look at the themes:

Christian Louboutin is world renowned,

J-Lo has immortalized the trade-mark by creating a song about Christian Louboutin shoes, 

Christian Louboutin shoes are the fifth character of Sex and the City, and

Christian Louboutin is not a painter.

But let’s get serious for a second.  If this decision stands, it could have serious implications for Christian Louboutin.  Christian Louboutin has built its business on the red bottomed soled shoes.  It’s an integral part of its brand.  If any Yves, Saint or Laurent can use the red bottomed soled shoes, then the most recognizable component of Christian Louboutin’s brand is now up for grabs for anyone. 

Not good new for Christian Louboutin.  But this may also have bigger implications beyond Christian Louboutin.

What’s With Tiffany Getting Involved?

As the holiday season approaches, what girl isn’t having visions of little blue boxes dance in her head?  Was everyone thinking of Tiffany jewellery boxes?  Thought so.  A that's because that blue color applied to those jewellery boxes is an integral feature of Tiffany's brand. 

If this decision stands, it basically means that:

A single color may not function as a trade-mark;

If color is applied to a utilitarian article, it may not function as a trademark;

If the color is aesthetically appealing, which draws consumers to the product, it may not function as a trade-mark;

If the cost of applying the color increases the production costs on a high priced item, the color has functional qualities and therefore cannot function as a trade-mark. 

Now, for the non-legal fashionista reader, you may be scratching your head wondering, "CanadaFashionLaw what are you talking about".  The diatribe above was the essence of the judge’s rationale about why Christian Louboutin may not have rights to its trade-mark.  And to a large extent it flies against the well-established rationale of allowing a color to function as a trade-mark.  If a company consistently uses color as part of its trade-mark to the point that it becomes a distinguishing feature to the consumer, ta dah - trade-mark!  But this does not stand true if the color is functional - this green army fatigues.  In that instance, the color is functional because it acts as camoflague.  But red on the bottom sole of a shoe and blue on a jewellery box?  There's no rationale or functional reason. 

If this decision stands, it could have wide-reaching implications beyond Christian Louboutin.  If a single color cannot function as a trade-mark, could Tiffany’s blue box trade-mark also be in jeopardy?  It’s not something that Tiffany is interested in finding out.  As such, in a survival of the fittest move, Tiffany has thrown its well-jewelled hat into the ring by submitting an amicus curiae brief to the court.  This allows Tiffany, who is not a party in the legal dispute, to put in its two cents for the judge’s consideration.  This ensures that the Court of Appeal will consider the far-reaching implications that upholding the decision will have on non-related parties.

Women Helping Women Through Clothes

As Toronto's LG Fashion Week kicks off this week, CanadaFashionLaw eagerly clasps her fashion week industry passes in anticipation of a week full of runway shows.  (I love my job!) But before the festival of fabulousness commences, CanadaFashionLaw wants to pause for a cause.  CanadaFashionLaw recently became aware of a great organization, Dress For Success, that aims to help women launch their career through the gift of clothes.  In the interview below, CanadaFashionLaw hopes to tap into the season of giving a little early.

Tell us about your organization and what it aims to achieve.

The mission of Dress for Success Toronto is to promote the economic independence of disadvantaged women by providing professional attire, a network of support and the career development tools to help women thrive in work and in life.

Our programs include the Suiting Program, which outfits women in professional attire for job interviews and employment; the Dress Rehersal Program where clients go through a mock interview and feedback session and can get assistance with resume/cover letter writing; and the Profesional Women's Group, which offers women ongoing support as they successfully transition into the workplace. 

How has the response been in Toronto?

The response in Toronto has been extremely positive.  Dress for Success Toronto serves job-ready women by referral only through our community partnerships with over 300 non-profit organizations.  Clients come to us from domestic violence agencies, homeless shelters and job-training programs. We work together with our referring agencies to provide delivery of services designed to elevate the lives of low income women and their families.

The concept goes way beyond clothes.  Women helping women really seems to be a central theme.  Can you share any success stories?

Latoya was introduced to Dress for Success Toronto in 2009 by a government employment centre.    She came to use our services and was encouraged to sign up for mentorship, assistance with resume writing and once she landed a job, she was invited to join the Professional Women’s Group, a group for newly employed women that have used our services that offers monthly workshops, networking and support.  When I asked Latoya about what this organization means to her, this is the response she gave:

“A suit will last a year a two but it’s the lessons and support we receive that will last a life time and help us to better integrate and become successful in our lives and career.   Dress for Success is a driving force in my career development.  Getting a job is just the beginning, you have to start over, re-qualify and work your way up. This can be very demanding, difficult and challenging at times. I am better able to balance both personal and work life and cope with a new culture through the workshops and support I receive at Dress for Success.  This is more than just about suits; it is part of my survival. I may have received suits on my first visit but it’s the encouragement, support, joy and fulfillment that I receive that keeps me coming back.”
What are the biggest challenges that your organization has faced?

Our biggest challenge is that people think we're just about the suits!  The Suiting Program is an important part of what we do; however, our other programming is also essential to helping women become self-sufficient by addressing their social and economic needs in relation to work.  For example, the Professional Women's Group offers women ongoing support as they successfully transition into the workforce, build thriving careers and prosper in the mainstream workplace.  Funding to support all the other programming we do is essential in order for us to fulfill our mission.  We can't run our quality programming on clothing donations alone. 

There is a lot of buzz about your organization’s Fundraising Gala on November 2, 2011 at the Bata Shoe Museum.  Can you give us the scoop?

It is Dress for Success Toronto’s inaugural Fundraising Gala!  The theme of the night is “Most Memorable Shoes” while guests are having a “Heel of a Good Time!” Attendees will enjoy refreshments and hors d’oeuvres while watching a fashion show featuring the EDIT by Jeanne Beker denim collection and Ron White Shoes, complemented by the original fashions of GISH (Girls in Skirts), Sarah Stevenson Designs and MINK, talented local Toronto designers.

There will be signature cocktails, and “innovative interactive entertainment” for guests to enjoy.  We also have a special guest appearance and book signing by internationally renowned Canadian fashion icon, Jeanne Beker!

More information about the event, including ticket sales, can be found on our website: www.dressforsuccess.org/toronto

How else can people roll up their sleeves and help out? 

Dress for Success Toronto has several opportunities for individuals to get involved.

We take donations of new and gently used professional attire at our 188 Lowther Avenue location in Toronto.  Individuals interested in donating to us can go to our website for more information (www.dressforsuccess.org/Toronto) or e-mail us at donate@dressforsuccesstoronto.org.

We also have several ways an individual can volunteer!  Volunteer roles include stylists, merchandisers and career services.  Anyone interested in volunteering with us can e-mail volunteer@dressforsuccesstoronto.org.  With the help of our volunteers, we can continue to have a positive impact on the lives of low income women, their children and future generations.

Through a $100 donation, you can give one woman access to the whole suite of Dress for Success programs.  We all know how good it feels to put on the right outfit when headed out to a big meeting or event - first impressions are key, so imagine if you didn't have this ability!  Your $100 donation can make this difference.  Holiday season is just around the corner and helping one individual take the steps back into the workforce can make this a happy holiday season with hope for the future.  Donations can be made online through our website (www.dressforsuccess.org/toronto)

More Opportunities Abound in Toronto for Fashion Designers

One week before the launch of Toronto’s LG Fashion Week for the 2012 Spring-Summer collection, it was announced that the TFI New Labels competition has been given a face-lift.

The Toronto Fashion Incubator has teamed up with note-worthy Toronto-based fashion players, TNT and Suzanne Rogers.

Who is eligible?  Canadian fashion designers who have been in the business for three years or less.

What’s at stake? 

First, there is an opportunity to win a cash prize of $25,000 for the Suzanne Rogers Award for Most Promising New Label.  

Second, TNT will sponsor a design studio for 1 year at the Toronto Fashion Incubator.  

Third, Flare magazine will run a full one page editorial feature on the designer. 

Fourth, an opportunity to show the collection at Toronto Fashion Incubator’s TFI New Labels, which is a fashion show aimed at highlighting Canada’s emerging designer.  Attracting between 500 and 1,000 industry professionals, TFI New Labels is a great opportunity for these designers to showcase their talent.
Who are these players?  CanadaFashionLaw has previously introduced you to both Toronto Fashion Incubator and TNT.  Suzanne Rogers is a philanthropist who has married her love for fashion with her ability to raise funds for charities with finesse.  Rogers’ most recent noteworthy endeavor was her exclusive and private fashion show and dinner attended by Toronto’s most fabulous, wherein Marchesa was brought back to the runway.  Flare magazine is one of Canada's pre-eminent fashion magazines, which is reported to have over 1.5 million monthly subscribers. 

All in all, it’s great to see Toronto’s own helping to pave the way for Toronto’s own.

See you at TFI New Labels on May 3, 2012!

There's a New Retail Sheriff in Town

As the days get colder, the nights get longer and our cravings for hot chocolate with Baileys and whipped cream heighten, so does our need to find a good book.  Thanks to a recent event hosted by Fashion Group International’s Toronto chapter, CanadaFashionLaw need look no further.

This week, CanadaFashionLaw eagerly attended a presentation by Robin Lewis, hosted by FGI-Toronto.  Robin Lewis, author of the book “The New Rules of Retail”, is a retail consultant and former vice-president and executive editor of Women’s Wear Daily.  In “The New Rules of Retail”, Robin looks at the transformation of retail and what it means to the fashion and consumer products industries. 

This book is a must-read if you are:
  • in the fashion industry,
  • involved in the consumer products chain,
  • are a marketing professional or
  • just want to be an informed consumer.

In his presentation, Lewis provides an oversight of his theories.  In a nutshell, the shift to consumer power, coupled with rampant globalization and significant technological developments have been retail game changers.  According to Lewis, there has been a 3-part evolution in retail.  At first, the producers called the shots.  Retail outlets were few and far between and mostly centered in urban areas.  With the shift to urbanization, the producer’s power diminished.  This period was marked by an increase in malls, specialized retail outlets and big box stores.  As media became an ever-increasing force, the onus shifted to retailers to create demand for products.  In the current stage, globalization and technological advances have taken the retail market to a whole new level.  Effective mass global manufacturing and distribution networks have created an unprecedented surge in supply, thanks to the proliferation of retail outlets or e-commerce websites.

We live in a globalized, mass marketed, consumer hungry society. 
We know that. 
But what does this mean for the business of retail?  

Consumer value has shifted, going beyond the desire of quality and fair pricing.  Consumers want experiences – they want to emotionally connect to their retailer.  Lewis even went so far as to discuss the consumer’s neurological connection being tied to their retail experience. Customization is key; conformity is out.  Democratization of trends is in; exclusivity is out. Community is utmost.  Sustainability is a way of business and no longer a marketing tool. Survival of the fittest is not sufficient.  Retailers must excel in every aspect.  

CanadaFashionLaw urges you to run as fast as your stiletto-clad, pedicured feet will go to pick up a copy of Robin Lewis’ “The New Rules of Retail”.  

Silently in the Night…Canada Gets its ACTA Together

Did you know that this past week Canada become a signatory to the international treaty the Anti-Counterfeiting Trade Agreement (orACTA”, if you want to flex your legal prowess)?  Chances are you don’t and you’re not alone, but CanadaFashionLaw does and is eager to share!  Sharing is caring, after all!

What is the Anti-Counterfeiting Trade Agreement?

The Anti-Counterfeiting Trade Agreement is an international treaty that was cooked up by Japan and the US in 2006 in a joint effort to combat counterfeit products on a global scale.  In 2007, Canada joined the negotiations but did not become a signatory until very recently.  

ACTA attempts to create international standards to facilitate a cohesive global attack on counterfeiting between countries. 

Why Do We Need a Global Agreement for Counterfeiting?

Perturbed that you may not be able to get your designer purse for a fraction of the cost?  Too bad, so sad!  Counterfeiting is a serious issue that needs to be addressed.  CanadaFashionLaw previously tackled the great ramifications of counterfeiting to Canada (click here to hone up on this issue). 

Canada’s Foreign Affairs and International Trade department endorsed the necessity of bolstering Canadian intellectual property laws:

The emphasis on innovation as a measure of global competitiveness as well as the growth in participation of the Canadian economy in global trade have made the international dimension of intellectual property policy increasingly important.”
Why All the Secrecy?

Some of the countries that participated in the negotiations (cue fake cough “US) classified the negotiations as secret.  Thus, although the Canadian government has been involved in the negotiations for a number of years, the Canadian public was not allowed access to any of the information.  There was essentially no information available on Canada’s position on ACTA.  At one point, a well-reputed Canadian intellectual property law professor submitted an access to information request to the Canadian government.  Rumour has it that in response to the request, the Canadian government only confirmed the name of the act.  Of course, this type of secrecy does not sit well with many stakeholders.    

What Does ACTA Entail?

ACTA can be broken down to a 3 prong plan of attack:

  1. Improving international cooperation between countries;
  2. Establishing best practices for enforcement;
  3. Architecting a more effective legal framework for enforcement.

An interesting aspect of ACTA, which will directly benefit Canada, is the focus on border controls.  Going back to CanadaFashionLaw’s previous article dealing with the issue of counterfeiting, Canada’s ability to enable borders patrol to actively participate in the war against counterfeiting is critical.  It is critical in controlling the import of counterfeit products into Canada and it is also critical in ensuring that Canada is a player in the international trade market.

Who RSVP’d to the Party?

So far, Australia, Japan, Mexico, Morocco, New Zealand, Korea, Singapore and the US have endorsed ACTA, along with Canada. 

So What Next?

Probably, we wait.  Ratification of legislation is one thing, implementation is another.