Monday, September 10, 2012

Louboutin v. YSL – Second Circuit misses the ‘mark’‎

Robin Barnes
Hamad Hamad

Last November, we wrote an article on the Louboutin red sole trademark case against YSL ‎shortly after Tiffany filed its amicus brief supporting Louboutin’s position at the Second ‎Circuit.  Our primary focus was the difference between Tiffany’s and Louboutin’s trademark ‎registrations.  Tiffany’s registrations claimed a fairly specific color, namely “robin’s-egg ‎blue,” while Louboutin’s registration simply and broadly claimed “red.”  We noted that, at least ‎until the Second Circuit ruled on the issue, it would be advisable to claim colors with some ‎specificity in trademark applications.  ‎

As we previously noted, while not perfect, the opinion did a good job of criticizing the breadth ‎and vagueness of the color description in Louboutin’s registration.  Now that the Second ‎Circuit has ruled, we feel that we should reexamine the district court’s opinion in light of its ‎characterization by the Second Circuit.  ‎
According to the Second Circuit, the district court held “that a single color can never serve as a ‎trademark in the fashion industry” and that “in the fashion industry, single-color marks are ‎inherently ‘functional.’”  That’s not how we read the district court’s decision.  As we ‎previously noted, the district court did analyze the question of whether a single color could ‎serve as a trademark in the fashion industry and spent considerable time on the functionality ‎issue, but ultimately did not issue any direct holding or per se rule on the viability of single-‎color marks in this context.  Specifically, the district court denied Louboutin’s request for a ‎preliminary injunction (which is based on a likelihood of success standard) because the court ‎had “serious doubts that Louboutin possesses a protectable mark.”   Had the district court held ‎that a single color can never serve as a trademark in the fashion industry, it would have stated ‎that Louboutin did not possess a protectable mark rather than merely expressing doubt.   ‎

Putting aside the issue of how far the district court did or did not go, it seems the Second ‎Circuit missed the mark by not going far enough to limit Louboutin’s trademark rights.  The ‎Second Circuit reversed the district court’s order to the extent that it denied Louboutin ‎trademark protection (which it really did not at the preliminary injunction stage, but might ‎have at a later stage of the proceedings) and limited the mark to a red outsole contrasting with ‎the other parts of the shoe (and ordered that Louboutin’s registration be amended accordingly).  ‎Since YSL’s allegedly infringing shoes were monochromatic, the Second Circuit affirmed the ‎denial of the injunction based on its ruling that Louboutin’s rights were limited to contrasting ‎uppers.  However, the Second Circuit did not address the claimed “red” color itself or the type ‎of footwear to which the red color is applied. ‎

The district court spent a good number of paragraphs discussing the vagueness and ambiguity ‎of Louboutin’s trademark with respect to both of these issues.  Let’s first take a look at the ‎color dimension.  Here’s what we said last November concerning the vagueness and breadth of ‎the claimed color:‎

Imagine the difficulty for competitors – are fire engine, cherry, ‎and brick red all covered by Louboutin’s registration?  There are ‎difficulties on the consumer side too – can multiple shades of red ‎establish sufficient secondary meaning to support the registration, ‎and can the average person even tell the difference between ‎certain shades?‎

Or perhaps it is “Chinese Red” (Pantone No. 18-1663 TP) that is covered by Louboutin’s ‎registration, as Louboutin asserted in his preliminary injunction reply brief? Oh, but wait, after ‎YSL pointed out that it never used Chinese Red, Louboutin insisted that YSL used a (different) ‎shade that was still too close.  Which shade?  We don’t know.  Apparently, neither does ‎Louboutin.  At one point in argument, Louboutin asked the district court to pick a particular ‎range of colors above and below Pantone No. 18-1663 TP and find that anything within that ‎range of hues and shades of red would be infringing its trademark.  The district court declined ‎because it found that such an approach would have “the effect of appropriating more than a ‎dozen shades of red-and perhaps other colors [such as pink and orange] as well.”‎

It appears that the real problem is not that Louboutin’s registration claimed a single color.  The ‎real problem is that Louboutin’s registration claimed an entire spectrum of red colors.‎

And what about the type of footwear?  The registration states “women’s high fashion designer ‎footwear.”  What is high fashion?  As the district court pointed out, Louboutin sued Zara in ‎France.  And while Zara makes some nice, trendy stuff, it’s not exactly the type of brand that ‎would be considered “high fashion.”  And what types of shoes exactly? Would flats and flip-‎flops be included? What about low-heeled shoes?  At one point Louboutin tried to limit his ‎registration to “high-heeled” shoes, but as the district court also pointed out, the registration ‎doesn’t include that limitation.   ‎

Here’s something else to consider: what about design-your-own shoe websites and stores?  ‎Would a customer be liable for infringing Louboutin’s mark for using Nike ID to make Air ‎Force 1’s with a glossy red sole and a black upper?  Would a customer be liable for infringing ‎Louboutin’s mark for ordering a custom pair of sandals to be made with a glossy red sole and ‎brown straps?  Would the manufacturers have any liability?‎

Perhaps these are bad analogies because designers would know better than to pursue an ‎infringement claim against a competitor’s shoe that is clearly not going to cause customer ‎confusion, right?  Maybe not, since Louboutin sued YSL for a monochromatic shoe that wasn’t ‎lacquered and didn’t use the Chinese Red that Louboutin now claims is his shade of red.  ‎Customers and competitors alike are left without proper guidance as to which hues or shades of ‎‎“red” are off limits.  ‎

Louboutin’s registration was too broad and too vague and remains so even after the Second ‎Circuit’s ruling.  Although the Second Circuit did well to at least limit the registration to ‎contrasting uppers, it could have taken this opportunity to rein in a clearly overbroad and vague ‎registration.  Having passed on that opportunity, did the Second Circuit effectively  hand ‎Louboutin an exclusive palette of the entire spectrum of “red” to be used on shoe outsoles as ‎long as the uppers are a contrasting color?  We’re not suggesting that Louboutin should ‎necessarily be tied to a specific Pantone No. (although, interestingly, some foreign countries ‎require a specific Pantone No. when a color claim is made in a trademark application), but ‎Louboutin’s registration should have at least been limited to a word-description of the ‎particular hue or shade of red that he intended to claim.  In the end, the Second Circuit’s ‎opinion does not shed much light on the boundaries of color claims in the fashion world, but we ‎still think is advisable to claim color marks with some specificity.  After all, Tiffany seems to ‎be doing just fine with “robin’s-egg blue.”‎