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Louboutin's (US) red-sole trademark number 3361597

Take it as red - this dispute is not over yet

Fashion designers, as a class, should gain only limited IP protection, according to Judge Victor Marrero of the Southern District of New York.  Giving judgment in Christian Louboutin SA et al v. Yves Saint Laurent America, Inc et al., 1:11-cv-2381 (NYSD August 10, 2011), Judge Marrero acknowledged that the world famous Louboutin house has acquired extensive reputation and goodwill in their red soles – to the point that said soles have acquired a secondary meaning of designating Louboutin footwear only – yet ruled that this meant nothing because their goods are items of fashion.

The decision is curious since Judge Marrero relies, at least in part, on a comparison between apples and oranges.  Although he says that his ruling is peculiar to the fashion industry, he attempts to rationalize his conclusion by reference to a hypothetical dispute between Monet and Picasso about whether they can both use the same color in a painting.  If there is any application in this hypothetical to footwear, or even fashion in general, it’s very well hidden.

The analogy also falls flat when you consider that this is a trademark dispute.  The primary function of a trademark is to indicate the origin of particular goods and/or services.  Here, the Court accepted that footwear sold with the color red on a specific part had become synonymous with Louboutin, meaning that it was understood by the relevant public to be a sign that the shoe or boot in question had been made by Louboutin.  The use of color somewhere, anywhere, in a painting for the purpose of conveying an emotion, and not to tell the public who the painter is, has no bearing on the current dispute.  The analogy simply doesn’t work on any level and isn’t helpful.

Many readers will be aware that this is not the first time that (US) Judges have decided the fashion industry should enjoy fewer IP protections that other industries.  Under the Copyright Act, a designer must convince a judge that his clothing warrants copyright protection either because his creation is not functional, or because the artistic design it embodies can be separated from its utilitarian aspects.  Some Circuits, including the Second Circuit (which includes New York), have construed this test against fashion designers en masse, holding that “clothes are particularly unlikely to meet … [the test for conceptual separability] – the very decorative elements that stand out being intrinsic to the decorative function of the clothing.” See Whimsicality, Inc. v. Rubie’s Costume Co., 891 F.2d 452, 455 (2d Cir. 1989), and “Protecting Works of Fashion from Design Piracy”, by Christine Magdo, here.

(Perhaps it’s worth noting that the Southern District of New York is the same Court that held last year that “storage” within the DMCA was not limited to, err, storage, but also excused the use, licensing, branding and monetizing of unauthorized reproductions of copyright material… See the discussion on the 4th and 5th pages of this article.)

So we will wait to see what happens next.  The parties have a CMC on August 17, 2011, at 2pm, where the cancellation of Louboutin’s mark will be discussed (seemingly at the instigation of Judge Marrero and not YSL).

Christian Louboutin SA et al. v. Yves Saint Laurent America, Inc et al., 1:11-cv-2381 (NYSD August 10, 2011)