Tag Archives: YSL

Summertime Things

Do You Know The Way To San Jose?” Hal David and Burt Bacharach.

It’s been a long time between posts–largely because a trial in San Jose, CA beckoned me out West and I’ve just begun to settle back into the blogging routine.

While I was away, the Olympics took place in London, largely without any of the ambush advertising/trademark incidents many feared might infiltrate the event. Hanes, the underwear maker, produced a tv commercial featuring a well-muscled model swinging on a series of metal rings, perhaps bringing to mind the Olympic rings symbol without paying to become an official Olympic sponsor. But mostly, the advertisers that aired commercials during the Olympic fortnight played by the rules while the athletes swam, ran, dove, dressaged and rhythmically tumbled their way to gold, silver, and bronze, if not to lucrative commercial endorsements.

Neil Armstrong, the first man to walk on the moon, and the quintessential American hero, passed away, but not without NBC committing one of the most egregious gaffes in recent memory. “Astronaut Neil Young, first man to walk on the moon, dies at age 82,” read the online report’s headline at NBCNews.com. One small step for man, one giant screw up for journalistic kind. Neil Young, by the way, is alive and well, tearing up stages with his longtime band Crazy Horse adding their unique brand of raw rock to Neil’s Ragged Glory for the first time in years.

The Republicans held their convention in Tampa, undermining their claim to competency by scheduling the event in Florida during the height of hurricane season, and by inviting Clint Eastwood to interview an empty chair.

And just last week, legendary lyricist Hal David died. David teamed with Burt Bacharach on a string of top 40 and Oscar-winning hits during the 60s and 70s, including “Do You Know The Way To San Jose,” “Alfie,” and “Raindrops Keep Falling On My Head.” His keen and provocative lyrical sense was typified in this line from Alfie: “What’s it all about, Alfie? Is it just for the moment we live? What’s it all about when you sort it out, Alfie? Are we meant to take more
than we give or are we meant to be kind?” I vote for kind.

On the trademark front, the Court of Appeals for the Second Circuit give Christian Louboutin a qualified victory in the “Red Shoes” case I wrote about in one of my earliest posts. The lower court had kicked out Louboutin’s claim of trademark rights for the red outer soles of its shoes, reasoning that a single color could never function as a trademark in the fashion industry. But the Second Circuit booted that categorical rule, concluding that an earlier Supreme Court case upholding a single-color trademark for an industrial product applied equally to the realm of fashion. Still, Louboutin again failed in its effort to block YSL from selling a monochromatic shoe that was red, top to bottom. The appeals court ruled that Louboutin’s trademark only covered red soles with contrasting uppers, where the red created visual “pop.” So, in the spirit of Neil Armstrong, we can conclude that the Red Shoe decision was one small step for Louboutin, but not a giant leap for shoe-kind.

QUOTE OF THE DAY: “Imagination will often carry us to worlds that never were. But without it we go nowhere.” Carl Sagan

1 Comment

Filed under IP

The Angels Want To Wear My Red Shoes

“Oh, I used to be disgusted. And now I try to be amused. But since their wings have got rusted, you know the angels want to wear my red shoes.”  Elvis CostelloIn the music world, angels covet Elvis Costello’s red shoes. In the world of high fashion, the coveted red shoes come exclusively from Christian Louboutin. At least that’s what Louboutin thinks. For over twenty years, Louboutin has outfitted its luxury high heels with a lacquered red outsole. It claims to have built that colorful feature into “one of the most prominent brand identifiers in the United States and throughout the world.” Louboutin even got the United States Patent and Trademark Office to recognize trademark rights in the red lacquered outsole, granting Louboutin a coveted Federal Trademark Registration.

But Yves St. Laurent was unimpressed and undeterred. Despite Louboutin’s trademark and consistent efforts to police its trademark against infringers, YSL launched a red sole shoe of its own. Louboutin predictably sued, claiming the usual litany of evils and damages that typically populate trademark lawsuits. Louboutin argued that YSL’s red shoes would confuse consumers and weaken its strong trademark, all at the cost of irreparable injury to the heart and soul of Louboutin’s red sole trademark.

YSL fought back with a barrage of defenses.  Among them was YSL’s claim that Louboutin should not have a monopoly on the color red for shoes.  All shoe makers should have the entire spectrum of colors to work with, according to YSL.  Giving Louboutin sole control of red soles would put YSL and the likes of Jimmy Choo and Monolo Blahnik, not to mention Thom McCann (I’m dating myself here) at a competitive disadvantage.  In technical trademark parlance, YSL argued that Louboutin’s Red Shoe Trademark was “aesthetically functional.”

Trademark professionals and judges know that trademarks don’t just protect words or logos.  Trademarks can also cover product shapes and colors.  Owens Corning’s “pink” for home insulation is a famous example of a color trademark.  But the Supreme Court has drawn a line on the rights of companies to use trademark law to  claim a color as their own.  In certain circumstances, a single color used for a product can deserve trademark protection, when consumers have come to associate that color as the source of the product, just as they associate “Golden Arches” with McDonalds.  The Court has cautioned, however,  that “functional” uses of color cannot be trademarked. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).  ( In that case, the alleged color trademark was a particular shade of  green/gold used by Qualitex for dry-cleaner press pads.)

In particular, the Supreme Court in Qualitex endorsed in general terms the doctrine of “aesthetic functionality,” a concept that had vexed and continues to vex judges and lawyers.  Under the doctrine of aesthetic functionality, an aesthetic feature of a product can be functional in the sense that it serves a purpose beyond identifying a brand as being sold by a certain company.
The Supreme Court left the ironing out of the aesthetic  functionality doctrine to other cases and other trademarks.

The Louboutin v. YSL case is the latest and most prominent example of the challenges courts face when called upon to grapple with the concept of aesthetic functionality.  The trial court denied Louboutin’s request to put a stop to YSL’s use of red soles.  According to the court, Louboutin’s red sole is aesthetically functional–shoemakers such as Louboutin would be put at a competitive disadvantage if red is removed from their design palettes.

Now Louboutin is appealing that ruling.  The lawyers for each side argued their positions last month, and a decision is expected later this year.
So as we wait for the other shoe to drop, we can listen to Mr. Costello and dream of strolling the sidewalks of 5th Avenue or the Champs Elysees in Louboutin and YSL.

“Whenever I’m in a situation where I’m wearing the same as 600 other people and doing the same thing as 600 other people, looking back, I always found ways to make myself different, whether it be having a red lining inside of my jacket, having red shoes, it hasn’t changed.” Jeremy Irons

1 Comment

Filed under Uncategorized