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.