–Catlan McCurdy, Attorney

Louboutin attempts to hypnotize you.

The most publicized trademark lawsuit in 2012 has now come to a close, and while Louboutin was denied its motion for a preliminary injunction, the company should be happy it didn’t lose everything.

As you might recall, the District Court initially denied Louboutin’s motion in August 2011 and then went one step too far, claiming that color alone could not be a trademark in fashion industry. The decision was surprising, and I thought overreaching. Louboutin obviously appealed, and argued against the decision before the Second Circuit in January 2012.

Eight long months later, the Second Circuit finally issued its decision, and as predicted here, reversed the District Court insofar as it purported to deny trademark protection to Louboutin’s use of contrasting red lacquered soles, but affirmed the District Court’s refusal to issue a preliminary injunction. The Second Circuit panel was courteous in its decision, stating that the District Court addressed “a difficult and novel issue of trademark law,” but nevertheless made it clear that the Supreme Court in deciding Qualitex specifically forbade the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context. Fashion, dry cleaning, whatever.

The Second Circuit then went on to limit Louboutin’s registration to “only those situations in which the red lacquered outsole contrasts in color with the adjoining ‘upper’ of the shoe.” Because the shoe produced by YSL was a monochrome red shoe, there was no reason for an injunction.

In short, all this lawsuit did for Louboutin was to limit its own registration and cost a lot of money. My two cents? If Louboutin is serious about enforcing its what-we-now-know-is-valid trademark, then the company should start going after actual infringers, like the 16 year old in Ireland, and stop risking its intellectual property.