Ms. O'Hagan Wolfe
February 8, 2013
BackgroundOn September 5, 2012, this Court issued its opinion in this matter, affirming the
district court's denial of Louboutin's motion for a preliminary injunction and reversing in
part the order of the district court insofar as it purported to deny trademark protection to
Louboutin's use of a red outsole that contrasts with a shoe's upper. The Court found that
it is the
between the sole and the upper that causes the sole to 'pop,' and todistinguish [Louboutin as] its creator."
Op. at 29. The Court held that
in thosecircumstances where the sole contrasts with the upper does Louboutin's use of a red solequalify for trademark protection. The Court further held, therefore, that any trademarkrights Louboutin may have in use of a red sole
do not apply when the sole and the upper
do not contrast. Op. at 29-30.
Whether Louboutin does have trademark rights, and whether those rights wouldprevent use of a red sole in other contexts, is beyond the scope of the limited issuenow before the Court. For example, this Court expressly left for another day thequestion of whether Louboutin's trademark, even as modified by the Court, isaesthetically functional. Op. at 30. Further, although the Court held based on what itdescribed as "undisputed facts" that the modified trademark has secondary meaning,Op. at 27, YSL did in fact vigorously dispute that issue below, including throughsurvey evidence that demonstrated that only 24% of relevant consumers associate redsoles exclusively with a single source, the determinative factor in measuring whethera trademark has attained secondary meaning.
Thomas & Betts
Corp. v. Panduit Corp.,
138 F.3d 277, 295 (7th Cir. 1998) ("figures in the 30% range[are] marginal and [do] not establish secondary meaning as a matter of law");
A-1313-1358 (record evidence demonstrating extensive third party use of redoutsoles). YSL does not dispute that red soles are strongly associated with Louboutin,Op. at 5, but YSL does dispute that red soles are
associated withLouboutin. That issue was never reached by the District Court in light of its ruling onfunctionality, nor need it be reached by this Court at this time given the limited issuenow before the Court; in the event of any further disputes between the parties, YSLcan press those arguments then, along with its arguments that its use of the color redon non-monochromatic shoes (perhaps similar to its use of red outsoles on its Chinesecollection,
A-977-79 (Vaissie Decl. ¶¶ 18(b)&(c)), as shown below), has been afair use (which also was disputed below but not addressed by this Court or theDistrict Court).
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