26 January 2012

KingCast fetishizes over Louboutin v. YSL Second Circuit Trademark Appeal.

15 Dec 2012 update (Funny I thought I had set a Lexis tickler for this case but whatever) Louboutin wins! Sort of. Although it's not quite so clear... because IIRC the YSL shoes were monochrome and the Court held no infraction there, so both sides can gloat a bit. I know a lot about the law and what should happen in Court, but as to why an Alzheimer's patient was locked out of Federal Court in Connecticut yesterday when she was clearly entitled to be in a settlement conference relating to DSS/Title XIX/Medicaid processing delays occasioned by Roderick Bremby, remains to be seen. Commissioner Bremby clearly perjured himself too, but the Court has not addressed that fact. Take time to take a look.
KingCast knows Patent and Trademark Law but Cannot understand why CT Federal Court slammed an ALZ patient i...

As a lawyer who appreciates the feminine form I must say that the ongoing Christian Louboutin v. YSL litigation (Fashionista) is as fascinating as J-Lo's quick recovery at 3:08. Unfortunately I didn't realize I could have caught the oral argument on Tuesday so I will have to wait for the Second Circuit Court of Appeals Decision sometime later this year to see who has stronger footing in this matter. Look at the cast of characters involved here in the right thumbnail, and there are six more amici below the fold that I could not fit on my screen capture. Anyway, I hear where he is coming from, but I'm not sure where he's going.... nor is he at times:

7 In response to YSL's inquiry as to whether a particular YSL shoe infringes the Red Sole Mark, Christian Louboutin responded at his deposition that he "will think about it." (Hamid Decl. Ex. A (Docket No. 32-1) at 60:11-14.) In response to YSL's inquiry as to whether Christian Louboutin would "object to any shade of red on a sole," counsel for Christian Louboutin instructed him not to answer. (Id. at 46:4-18 (emphasis added).)

This is a case with far-reaching legal, artistic and intellectual implications and this is not in any way meant to disrespect his arguments. However, I'm just not sure how it can work as a practical matter, and some of this is due to the way his original Trademark was filed, a trifle short on descriptors, i.e. no mention of laquer. Also, can Ferrari sue Nissan for building a swoopy sports car that is indeed, Ferrari red on a Pantone scale? Negative. Could BMW or Jeep successfully trademark their kidney or 7 slit grilles? As a BMW guy I was pissed at Pontiac for its cheeseball copycat Grand Am grille but the answer is no, though I'm sorry for mixing metaphors between color and shape. Not to mention functionality, but that's yet another piece of the puzzle.

Anyway, on the other hand, there are a host of good arguments I'm reading in the Louboutin Reply Brief, three of which interest me the most are secondary meaning, confusion/fair use and irreparable harm, pp. 18, 27. The Lower Court's own words clearly show a manifest secondary meaning that his lawyers at McCarter & English are quick to point out at Fn13 was earned without advertising. The Court in dicta wrote that Plaintiff "departed from longstanding conventions and norms of his industry, transforming the staid black or beige bottom of a shoe into a red brand with worldwide recognition at the high end of women's wear, a product visually so eccentric and striking that it is easily perceived and remembered." Secondary meaning, done. 

Next, there is substantial argument about how the experts did their jobs in surveys but in the post-sale context from 10, 20, 30 feet away (pun fully intended) most people would assume they are looking at a pair of Louboutins if they see the bottom of the YSL. Confusion, done.

Irreparable harm is argued because the Court is likely to invalidate the trademark. Therefore, if every high end designer with no pride decided to mimic the shoe they could do so at will, and that would definitely be a Bad Day for Plaintiff. Irreparable Harm, done.

But whether or not the Appeal is ultimately successful remains to be seen. I believe the YSL shoes were all monochrome and if so, does that change anythng? And the fact that Louboutin and YSL have a collaboration history also is intriguing. Query, what would YSL have done if the shoe were on the other foot?

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