Everything You Need To Understand The Louboutin v. YSL Lawsuit

by Charles Colman | 3:51 pm, August 12th, 2011

Q: What do you mean, “fashion is just different”?

A: Judges generally don’t like to draw industry-specific lines in their rulings, at least not where those lines aren’t already laid out in statutes passed by Congress.  They’re under a lot of pressure not to “legislate from the bench,” to use a phrase that has become popular — especially among conservatives — in recent years.  But Judge Victor Marrero went ahead and drew an industry-specific line in his ruling on Wednesday, writing that “in the fashion industry color serves ornamental and aesthetic functions vital to robust competition[.]“  As a result, it didn’t matter that Louboutin’s red sole was famously associated with the company; the functionality doctrine (specifically, the “aesthetic functionality” component of that doctrine) meant Louboutin’s red sole could not serve as a trademark.  One especially damaging piece of evidence for Christian Louboutin was an excerpt of a deposition of the namesake designer, in which he said he had decided to make his soles red because it “g[a]ve his line of shoes ‘energy,’” and because the color was “‘engaging, flirtatious, memorable and the color of passion,’ as well as ‘sexy.’”  Sometimes, a single admission can lose a case, and this might very well have been that admission for Louboutin.  The designer was basically admitting that his red soles served a function other than designating his company as the source of the shoes.

Q: What do you mean “lose a case” — the case isn’t over yet, right?

A: That’s true; all a judge decides on a preliminary injunction motion is whether the party seeking the injunction has a “likelihood of success” if the case moves forward.  But it is pretty clear from the judge’s decision, as well as his accompanying order for Louboutin to “show cause” why he shouldn’t cancel the company’s trademark registration, that he’s made up his mind on the aesthetic functionality issue.  In fact, his opinion even makes reference to an appeal to the Second Circuit Court of Appeals, which further suggests that the judge will stick to his guns.  Because the stakes are so high for Louboutin, it will very likely take this case as far as it can, perhaps even appealing to the Supreme Court if the Second Circuit turns out to agree with Judge Marrero.  And the Supreme Court might actually take the case, since it hasn’t specifically addressed colors-as-trademarks since the 1995 dry cleaning pad decision.  Trademark lawyers see the prospect of a new Supreme Court opinion on this issue as something fun; the parties, however, may only see the cost of litigating a case that far up the court system, and — for Louboutin — the potentially disastrous result of bright-red soles becoming fair game for other purveyors of women’s shoes.

Q: Okay, I get it, but this is obviously far more interesting for you than it is for me.  Anything else I should know?

A: I just want to leave you with one especially florid quote from an unusually flowery opinion.  The prose is remarkable because you usually find philosophical passages like this in Supreme Court opinions and occasionally in circuit court opinions, but very rarely in district court decisions.  Enjoy:

“[Painting and fashion design] share a dependence on color as an indispensable medium.  Color constitutes a critical attribute of the goods each form designs.  Alone, in combinations, in harmonious or even incongruous blends, in varying patterns and shapes, the whole spectrum of light serves as a primal ingredient without which neither painting nor fashion design as expressive and ornamental art would flourish.  For, color depicts elemental properties.  As it projects expression of the artist’s mental world, it captures the mutability, the fancy, the moods of the visual world, in both spheres working as a means to execute singular concepts born of imagination for which not just any other shade will do.  Hence, color in this context plays a unique role.  It is a feature purposely given to an article of art or design to depict the idea as the creator conceived it, and to evoke an effect intended.  In ornamenting, it draws attention to itself, and to the object for which its tone forms a distinct expressive feature.  From these perspectives, color in turn elementally performs a creative function; it aims to please or be useful, not to identify and advertise a commercial source.”

[This post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed herein are those of the writer on the particular date of this post, and should not necessarily be attributed to his law firm or its clients.]

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