Christian Louboutin Secures "Exclusivity" North of the Border

Just a quick update from CanadaFashionLaw on what is happening north of the border in respect of the Christian Louboutin v. Yves Saint Laurent.  (This stems back to two previous articles on CanadaFashionLaw.)

At the outset on the Christian Louboutin v. Yves Saint Laurent debacle, Christian Louboutin owned a US trade-mark registration for the red lacquered soled shoes.  The Canadian trade-mark was pending.  Although there was an opportunity for Yves Saint Laurent to go on the offensive via opposition proceedings, it chose (or neglected) to do so.  As such, Christian Louboutin is now the proud owned of a Canadian trade-mark registration for red lacquered soled shoes.  Why didn’t Yves Saint Laurent go on the offensive?  We don’t know.  But check out CanadaFashionLaw’s previous article that looked at business factors affecting multi-jurisdictional litigation.  

Trade-marks Heavy Hitter Comes Out Swinging for Christian Louboutin

Not only has Tiffany thrown in its hat into the Christian Louboutin v. Yves Saint Laurent show down, a trade-marks law international heavy hitter is also tossing its hat into the ring.  That’s right: INTA has also filed an amicus brief supporting Christian Louboutin.  Now for legal fashionistas, INTA means something.  For CanadaFashionLaw’s fabulous non-lawyer fashionistas, let’s provide some context.  Here’s a description of INTA from its own submissions:

“Founded in 1878, INTA is a not-for-profit organization dedicated to the support and advancement of trademarks and related intellectual property concepts as essential elements of trade and commerce.  INTA has over 5,700 in more than 190 countries.  Its members include trademark owners, law firms, and other professionals who regularly assist brand owners in the creation, protection and enforcement of their trademarks.  All of INTA’s members share the goal of promoting an understanding of the essential role trademarks play in fostering informed decisions by consumers, effective commerce and fair competition.”

CanadaFashionLaw has been a committee member of INTA for a number of years and can vouch that in the intellectual property law world, it is a highly respected and influential organization.  So, the fact that INTA is raising the stakes in this case and getting involved is worthy of a glass of pino grigio!  It’s juicy.

Why is INTA getting involved? 

Straight from the branded horse’s mouth:

“[INTA is] interested in the development of clear, consistent and fair principles of trademark and unfair competition law…As an independent organization dedicated to the advancement of trademark law, INTA is uniquely qualified to aid the Court in its determination of this important matter”. 

Translation: it also believes that the court’s decision in respect of the rejection of Christian Louboutin’s request for a preliminary injunction against Yves Saint Laurent is wrong.  As wrong as neon-colored leggings!

    
What’s the problem?

First of all, INTA’s submissions are very narrow.  It only specifically relates to the court’s comments on the validity of Christian Louboutin’s trade-mark registration.  INTA does not comment on the issues of trademark infringement or dilution. 

Here’s INTA’s beef:

a)         In contemplating Christian Louboutin’s trademark rights, the court took an overly broad interpretation: red on fashion articles.  The real issue to consider should have centered on lacquered red on soles of footwear.

b)         The court found that the trade-mark registration was invalid as the color had functional qualities, relying on the doctrine of aesthetic functionality.  INTA holds that the judge did not properly apply the correct analysis for a finding under this doctrine.  Rather than narrowing in the effect that Christian Louboutin’s trade-mark registration would have on the luxury shoe industry, the court looked at the effect it would have throughout the fashion industry.

What does INTA have to say for itself?

Here’s a summary of INTA’s position:

a)        The court appeared to start with the assumption that Christian Louboutin’s trademark registration was invalid, which flies in the face of the presumption of validity when obtaining a trademark registration. 

b)        The court unilaterally broadened Christian Louboutin’s trademark claims to encompass all shades and tones of red, rather than specifically dealing with the color at hand: lacquered red on the sole of footwear. 

c)         The court then construed a hypothetical situation to consider the ramifications of granting an entity a monopoly over a color, rather than analyzing the particulars of this specific scenario. 

d)        The court failed to recognize the substantive work provided by the US Patent and Trademarks Office in ensuring the registered trademarks are valid trademarks that are worthy of the rights conferred onto registered trademarks:

            “Registration is not merely clerical, but rather the result of a substantive examination process and opportunity for interested parties to be heard.”

e)        The trade-mark registration granted by the US Patent and Trademarks Office was entirely consistent with established US trademarks law and, therefore, Christian Louboutin’s trade-mark registration is valid and worthy of recognition.  

f)         The Court’s discussion of Monet’s use of blue in his water lily series was flawed as it was never the subject of a trade-mark and, therefore, falls entirely outside the scope of the matter at hand.

g)        In determining whether the color was functional (thereby negating the trade-mark protection), the Court wrongly applied the doctrine of aesthetic functionality.  INTA provides a useful summary of the purpose of this doctrine:

            “The bedrock of the doctrine is the legitimate need of competitors to use a utilitarian feature that is less expensive, of better quality, or more efficient to manufacture.  By ensuring that competitors remain free to copy useful product features, the doctrine prevents trademark law from undermining its own and the patent law’s pro-competitive objectives.”

h)        The doctrine of aesthetic functionality is a controversial principle, which INTA has lobbied against in past amicus briefs.  Not only does INTA guard against employing this doctrine, but if the Court does adopt this doctrine it should do so correctly.  Overall, INTA maintains that the doctrine of aesthetic functionality has absolutely no application to this case.  

In a united stand with Tiffany, INTA rounds out its submissions by stating:

         “If the District Court’s opinion stands uncorrected, it will have far reaching consequences for brand owners and consumers alike.  Rights granted as a result of the careful examination process of the Federal trademark registration system could be upended arbitrarily, making it easier for third parties to use the well-recognized brand of others, damaging brand owners and increasing the potential for consumer confusion.”

Tiffany Throwing Rocks

Christian Louboutin, Yves Saint Laurent and Tiffany, oh my!  This well-dressed litigation is becoming increasingly more complex.  (CanadaFashionLaw has been following this case extensively – click here for a full rundown).  

In lending a well-jeweled hand to Christian Louboutin in the fight to assert his trade-mark rights to red-bottomed soled shoes, Tiffany throws its iced-out rocks against the most recent decision denying Christian Louboutin injunctive relief against Yves Saint Laurent.  CanadaFashionLaw was happy to get its hands on a copy of Tiffany’s Amicus Brief. 

Although seemingly unrelated (jewelry v. shoes), Tiffany and Christian Louboutin are united in their stand that trade-marks can be comprised of one color (robin’s egg blue and red lacquer).

Why is Tiffany getting involved in Christian Louboutin v. Yves Saint Laurent case? 

It’s a luxury house of cards. 

In the recent decision rejecting Christian Louboutin’s request for a preliminary injunction, the judge called into question the registrability of Christian Louboutin’s trade-mark (red soled shoes) on the basis that a single color cannot act as a trade-mark in the fashion industry.  Relying on the robin’s egg blue as a distinctive part of its branding, Tiffany’s trade-mark could also be susceptible to attack under the same line of reasoning.  Tiffany did not hold back:

“Tiffany files this amicus curiae brief because the District Court’s opinion in this case adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any fashion item, even where the color has achieved ‘secondary meaning’ and is associated with a single brand.  Amicus curiae respectfully submit that adoption of such a blanket rule was unnecessary to a resolution of the preliminary injunction motion below and should be rejected by this Court.”

Here’s a summary of Tiffany’s position:

a)         Ownership of a trade-mark registration is prima facie evidence of the validity of the trade-mark.  If that trade-mark registration is to be invalidated, the onus is on the defendant (in this case Yves Saint Laurent) – not on the plaintiff (Christian Louboutin) to prove its validity.

b)         It is established in trade-marks law that a single color can function as a trade-mark, especially when it has acquired secondary meaning.  In the decision, the judge repeatedly acknowledged how infamous Christian Louboutin’s red bottomed soles have become.  Ultimately, the judge made a sweeping exception for the fashion industry.

c)         Rather than making sweeping generalizations about whether established trade-mark law principles apply to the fashion industry as a whole, the judge should have examined the issue at hand:

            “The proper inquiry is whether the particular mark at issues has been registered with the (US Patent and Trademarks Office) and whether the particular mark has secondary meaning”

d)         US trade-mark legislation does not carve out trade-mark principles as applicable to some industries and not applicable to others.  Any such sweeping generalizations are contrary to fundamental principles of trade-marks law.

e)         The judge called into question whether Christian Louboutin’s was a valid registration on account of color being a function of fashion and therefore incapable of being a trade-mark.  Tiffany called into question this rationale:

            “A design feature of a particular product is essential to the use or purpose of the product only if the feature is dictated by the functions to be performed; a feature that merely accommodates a useful function is not enough’. 

            A shoe is a shoe, regardless of the color of its bottom sole.  There is no function to a red bottomed shoe. 

f)         Tiffany then called into question the judge’s reasoning that the red bottomed sole increased production costs, thereby justifying an inflated retail price, which is indicative of the functionality of the trade-mark.  Tiffany argued that this rationale is topsy-turvy.  If the trade-mark decreases the production cost, thereby increasing the profit margin, then there is functionality. 

Stay tuned to CanadaFashionLaw as this case unfolds!

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)