Louboutin's last stand: reply brief claims YSL's only excuse is "fashion made them do it"
And tomorrow, the district court is scheduled to decide whether to grant Louboutin its requested preliminary injunction. For reasons explained by LAW OF FASHION last week, a decision in favor of either Louboutin or Yves Saint Laurent could effectively end the case. So what does Louboutin have to say for itself? Like last time, let's skip the small talk and go straight to the brief (italics, bold, hyperlinks, and [bracketed portions] mine, except where noted):
- Louboutin is not, "as YSL misleadingly argues, [trying] to claim a monopoly over the color red . . . . But when YSL ignores countless color choices, including other reds, and apes the famous signature of the LOUBOUTIN brand[, it destroys] the goodwill painstakingly built in the Red Sole Mark. Other competitors will likely join YSL with their own red soles. Unless this court enjoins [i.e., stops] YSL, the floodgates will open, and the Louboutin business will be devastated."
- Louboutin has engaged in "substantially exclusive use" of the Red Sole Mark for "over 19 years." Against a "tsunami of undisputed evidence, YSL [makes a] bogus argument that [the relevant consumer] does not connect 'red soles exclusively with Louboutin'" [when that] is exactly what the undisputed evidence proves." (Emphasis Louboutin's.)
- YSL cites "random internet offers to show that [non-Louboutin] red-soled shoes are available in the United States" but this is merely "an attempt to mislead this Court. The shoes shown are for the most part eBay offers, which are one and two-offs and [thus] meaningless." Further, "[v]irtually all of the shoes shown [by YSL] have been either rejected as non infringing by Louboutin or [are] the subject of policing actions, which are ongoing . . . . The presence of copyists in the marketplace is in fact an affirmation of strong secondary meaning [among consumers.]"
- The Trademark Office has "warn[ed] of potential confusion in using the term 'aesthetic functionality.'" Color is protectible as a trademark whenever it "is not 'essential to the use or purpose of the article or if it does not affect the cost or quality of the article,' that is, if exclusive use of the feature would not put competitors at a significant non-reputation-related disadvantage.'" The mere fact that Louboutin uses role soles because they are "engaging" or "flirtatious" does not make the Red Sole Mark aesthetically functional. If the court denies YSL the right to use bright-red soles, the company will not suffer a significant aesthetic disadvantage because it will still be able to make its shoes "engaging" and "flirtatious" by using "[e]ven Louboutin's red . . . on other, more visible, parts of the shoe." And of course, a "trademark for a shoe's outsole also does not prevent use by others of many shades of red (as well as other colors)."
- "The world of fashion is no exception; [past cases demonstrate that] color marks are protectible against infringers." [Ed. Recall that YSL framed the issue more narrowly: "we are unaware of any case in which a court has upheld trademark protection to a mark consisting solely of a single color on a portion of an article of apparel." This sort of issue-framing is a big part of what litigators do: strategic spin to get away from bad precedent, get closer to good precedent, or win the judge over when there is no precedent on point.]
- "Contrary to claims in [YSL's materials]," Louboutin's survey "showed actual street conditions and was not 'leading'; many features of the shoe were on display." [Ed. YSL argued that Louboutin's survey was flawed, in part because it focused "unnaturally" on the sole of the shoe.] "[I]t is not surprising that fewer identified the YSL shoes as Louboutin [in YSL's survey, because the defendant gave] respondents only a fleeting glance at the trademark (only a few of the 17 seconds of video) and made no effort to determine if respondents had seen the red soles."
- "Unable to refute the evidence, YSL proffers an excuse: fashion made them do it. . . . But fashion creates no need to copy Louboutin's red sole on a shoe, 'monochrome' or otherwise, when so many choices of color and color placement exist."
Louboutin and YSL basically talk past each other on the post-sale confusion and "fair use" issues. It's probably safe to say that judges (or at least the overburdened clerks who take the first pass at reading briefs, and have to research critical issues dodged by the parties) usually don't like this. In LOF's view, Louboutin's perfunctory treatment (just eleven lines of text) of YSL's "fair use" claim is misguided, since -- as indicated in the previous post on the case -- the judge could potentially avoid answering some of the thornier questions raised by this dispute simply by disposing of it on fair use grounds.
In any event, we don't have long to wait to see whose arguments will carry the day; as WWD reports, the court will decide whether to grant the preliminary injunction tomorrow. Sadly, the ruling will be issued too late in the day for inclusion in this writer's Friday fashion law roundup on Styleite.com, CATWALK JUSTICE. But naturally, LOF will let you know what happens... after all, the fate of red-soled shoes hangs in the balance.
[This post does not constitute legal advice or form an attorney-client relationship with any person or entity. The parties' briefs have intentionally been chopped apart and pieced back together, for ease of reading. Although it should go without saying, the parties may not have intended the passages in the manner LOF has characterized them here. To see the court filings in their entirety, go to Scribd.]