A recent Mall of America and Nordstrom shopping trip (with visiting extended family), coupled with some initial moments of admitted boredom, led me to wandering through the shoe department:

Let’s just say, the stroll through the shoe department made it all worthwhile, to capture the above image, showing Louboutin’s latest fashion sense, leading to my mental stroll down memory lane:

Louboutin Red: Blending Into the Background

Louboutin Red-Sole & Surrounding Contrast: An Implied Trademark Limitation

Louboutin: Still Waiting on the Second Circuit Court of Appeals

Louboutin Wins Second Circuit Appeal, Sort Of . . . .

Louboutin & Lessons Learned

That seven month span of blogging was pretty special (February 12, 2012 through September 17, 2012), actually making the case for narrowing Louboutin’s red sole color trademark registration.

In the end, the Second Circuit Court of Appeals ordered the amendment of the red sole color registration to compel the limitation we said was implied: Contrast with the remainder of the shoe.

This, of course, opened the door to requiring that Louboutin tolerate monochrome red shoes, as any red soles on a monochrome red shoe would not possess the necessary constrast to be seen.

Since then, Louboutin has been seeking global protection for his contrasting red-color trademark applied to shoe soles, with a recent win in the EU, however, he’s currently been snagged in India.

Given the striking shoe above, other Louboutin spiked shoes below, and knowing Louboutin’s comfort with non-traditional trademarks, filings at the USPTO seemed plausible, but no, none yet:

Afterall, the spikes appear purely ornamental with the potential for acquired distinctiveness, and no functionality, well, unless this footwear is designed for, shall we say, painful kicks in the pants.

At this point, the Louboutin brand appears synonymous with the red-sole of a woman’s shoe, which probably explains the non-verbal trademark below being applied to other fashion items:

 

 

So, we’ll keep a lookout for new non-traditional trademark filings by Louboutin, while you keep a lookout for any look-for advertising that might set the stage for claimed rights in a spiked mark.

Earlier this month the Southern District of New York granted the defendant’s Motion for Summary in Louis Vuitton Malletier, S.A. v. My Other Bag , Inc. The fashion giant had brought suit against a California company over its sales of a canvas tote bag that included an image that “evoked” Louis Vuitton’s classic handbag design. An image of the Defendant’s products is shown below and you can read more about the Motion for Summary Judgment here.

 

Fresh off their victory, the Defendant My Other Bag (“MOB”) filed a Motion for Attorney’s fees just last week. MOB claims that the facts of the case render it an “exceptional” case under the Lanham Act and therefore request an award of $398,821.

In its Memorandum, MOB acknowledges that the Second Circuit normally requires a showing of “bad faith” before awarding attorney fees. However, the Supreme Court’s ruling in Octane Fitness v. Icon Health & Fitness, 134 S. Ct. 1749, 1758 (2014) rejected this interpretation of the term “exceptional,” instead finding that an exceptional case is merely one that stands out from others due to the relative merits of the claims or the litigation conduct of the parties. Although the case involved a claim of patent infringement, much of the language in the Patent Act mirrors the language of the Lanham Act and, as a result, courts regularly rely on decisions interpreting provisions of one act to interpret the other. Indeed, the Third, Fourth, and Sixth Circuits (and numerous district courts) have all recognized the applicability of Octane Fitness to requests for attorney fees under the Lanham Act.

Does MOB have a winning claim? MOB won on summary judgment on all three claims. That’s helpful, but does not mean that Louis Vuitton’s claims were weak enough to justify an award of attorney fees. Moreover, defenses of fair use or parody are particularly difficult to evaluate as courts frequently reach different conclusions on similar facts. In fact, Louis Vuitton successfully sued Hyundai Motor Co. in the same district under arguably less favorable facts (as MOB points out in its motion, though, Hyundai Motors undermined its own case with some poorly worded testimony).

Predictably, MOB also throws out the “bully” label.  This is by far the first time the label has been thrown at Louis Vuitton.  MOB argues that Louis Vuitton has pursued numerous “weak” claims, including a law school symposium’s use of the LV design on a promotional poster, a “Chewy Vuitton” dog toy, a Danish artist who placed a photograph of a child refugee holding a Louis Vuitton bag on a t-shirt (and then the painting of that photograph), other art exhibits, and the appearance of a character named “Lewis Vuitton” in the movie The Hangover II.  It certainly can’t help that Louis Vuitton appears to wear these tactics as a badge of honor, alleging in its own pleadings that it “actively and aggressively” enforces its trademark rights.

The chances of the court not adopting Octane Fitness are low, but the better question is whether the court considers the facts of the case to justify an award. It will also be interesting to see what consideration the court gives to Louis Vuitton’s perceived “bullying” tactics. When granting the Motion for Summary Judgment, the court did not seem particularly impressed with Louis Vuitton’s claims as it wondered whether the company “just cannot take a joke.” Maybe a $400,000 bill would be the perfect punchline.

Earlier this week, Converse launched an all-out offensive to combat what it considers counterfeit and knock-off versions of its Chuck Taylor All-Star line of sneakers. Reports peg the number as at least 22 separate lawsuits against more than 30 companies, both in district court and at the International Trade Commission (the “ITC”). The defendants read like a who’s who list in the fashion or retail world: Wal-Mart, Skechers, H&M, Ralph Lauren, Ed Hardy, Fila,  and others.  An image below, courtesy of the New York Times, shows the Converse All Star (left) next to the Fila version (middle) and Skechers (right):

 

And the view from the back, with a slight change in positioning from the front view

(From left to right: Converse, Skechers, Fila)

Halfway through one of the articles, I realized that even I had fallen victim to one of the defendants. I purchased these guys about a year and a half ago:

Making a direct comparison, there are certainly similarities. The white sole, the toe bumper, and the midsole cap all match up with the claimed mark in Converse’s registration. Other similarities include the placement of the brand name on the back sole as well as the contrasting use of a white sole with a solid colored top. However, there are no laces or other similarities with the toe box, mid-sole, or any portion other than the rubber sole.

There certainly will be a lot of digital ink spilled on this lawsuit as there are a number of interesting legal issues. But one item that isn’t discussed as frequently in the trademark is the role that the ITC can play as part of a robust intellectual property enforcement strategy.

As noted above, Converse filed a complaint (small ‘c’ complaint) with the ITC, alleging similar facts as those in the district court complaints. The relevant statutory provision is 19 U.S.C. Sec. 1337 (aka Section 337 of the U.S. Tariff Act). The ITC provides a distinct forum with unique advantages for certain situations. The ITC Trial Lawyers Association has a helpful FAQ here. One of the primary differences of an ITC proceeding is that it utilizes in rem jurisdiction based upon the presence of imported goods. The ITC will consider claims of trademark, patent, and copyright infringement, as well as trade secret misappropriation and a limited number of other business torts. Once an investigation is instituted, it is conducted similar to a Trademark Trial and Appeal Board or district court proceeding. There is an Administrative Law Judge, discovery, motion practice, and a trial. A major difference, though, is that an ITC staff attorney can participate throughout the process in order to ensure that the public interest is protected (also, no jury). Decisions of the ITC can be appealed to the U.S. Court of Appeals for the Federal Circuit and the decisions  (decisions are also subject to official “disapproval” by the President, but this rarely occurs).

If the plaintiff is successful, the ITC can issue permanent exclusion orders or cease and desist orders. Exclusion orders prevent the importation of the articles at issue in the proceeding (and potentially those of third-parties). The cease and desist order can enjoin defendants from certain activities within the United States. There are no damages available at the ITC.

Proceedings at the ITC may not always be available or a cost effective means of trademark enforcement. The ITC is most appropriate for consumer goods. And because money damages are not available, the volume of imported infringing goods must be large enough to justify the cost and expense of an ITC proceeding. The proceedings are also helpful where a trademark is unregistered and therefore cannot be recorded with the U.S. Customs and Border Protection division of the Dept. of Homeland Security.

There are a number of potential benefits to an ITC proceeding:

  • The process has a compressed schedule and often is concluded within a year;
  • Although damages aren’t available to the plaintiff, violations of an exclusion order carry up to a $100,000 fine per violation;
  • The ITC can enforce unregistered trademark rights as well as copyright, patent, trade secret, and general unfair competition claims; and
  • The ITC can issue exclusion orders that are not subject to the “irreparable harm” standard for traditional injunctive relief.

The last bit is worth highlighting. In light of the Supreme Court decisions in eBay v. MercExchange, 547 U.S. 388 (2006), and Winter v. Natural Resources Defense Council, 555 U.S. 7 (2008), district courts and appellate courts have begun raising the bar for plaintiffs to obtain injunctive relief for trademark infringement. For decades, most jurisdictions provided a presumption of irreparable harm upon a successful showing of a likelihood of confusion in a trademark infringement action. The Ninth Circuit reversed this long-standing case law in Herb Reed Enterprises, LLC v. Florida Entertainment Management, Inc. Although the plaintiffs appealed, the Supreme Court denied cert on October 6, 2014.

Depending on the fate of the presumption of irreparable harm in trademark cases, practitioners may want to take note of the remedies available at the ITC as the ease of obtaining an injunction upon a successful showing of likelihood of confusion may change the calculus as to whether an ITC proceeding would be worthwhile. Although the ITC isn’t as well-known as the other players in the game, if the other circuits follow the Herb Reed lead, the ITC may soon become an all-star in the minds of trademark lawyers around the country.

There has been quite a flap surrounding the poster and invitation used by the University of Pennsylvania Law School to promote Penn Intellectual Property Group’s Fashion Law Symposium, scheduled for a week from tomorrow. The symposium appears to be designed as a serious affair, boasting an all-star cast of general counsel from the fashion industry, including those from Ralph Lauren, Forever 21, and Coach — to discuss in the first panel: “Trademark and the Fast Fashion Phenomenon.” The second panel is set to discuss “Copyright for Fashion Design: Evaluating the IDPPPA.” Last, copyright scholar David Nimmer is addressing “Copyright and the Fall Line” in his keynote address, and a number of big name law firms are symposium sponsors or donors, including Kenyon & Kenyon, Fox Rothschild, Covington & Burling, and Finnegan (or, maybe not Finnegan any longer).

Louis Vuitton — owner of the likely famous trade dress and individual marks depicted on the designer bag shown above — objected to the use of the poster shown below in this cease and desist letter, and LV now has been branded a serial “trademark bully” for it (and past objections against other alleged infringements). The Penn Law School Associate Dean for Communications apparently agreed to cease use, but then the accommodation was formally withdrawn by the University’s Associate General Counsel, in this response letter, defending the poster as a clever parody. As far as I can tell, the coverage of this flap is highly critical of Louis Vuitton for sending the demand letter in the first place, and entirely in favor of the University’s final decision to not cease use; for some examples of the coverage, see Techdirt, Above the Law, Law of FashionEric Goldman’s Technology & Marketing Law Blog, The Volokh Conspiracy, Johanna Blakely, and Alison Frankel’s ON THE CASE.

While I tend to agree the tone of the LV letter was excessive, and a few carefully-placed phone calls instead of a written demand, with greatly toned down the rhetoric, likely would have been more effective, what has left me a bit surprised by the coverage of this dispute is the absence of any scrutiny of the University’s response or position.

And while some have suggested that Louis Vuitton was schooled on the law by the University and its students, I really think a closer examination reveals there are at least a few loose strings on the University’s garment.

Yet, it seems no one is asking any questions probing the University’s claimed parody, and my concern about the popular “trademark bully” label and a social media shame-wagon approach to this issue is it sends the wrong message in that it greatly oversimplifies a very complex body of trademark parody case law — decisions that most counsel as quite unpredictable if they ever go the distance.

Like it or not, unlike the defense of federal dilution claims where certain conduct is excepted from liability, neither noncommercial use nor parody is excepted from or an affirmative defense to trademark infringement. Parody is really just another way of saying, there is no likelihood of confusion, which no one will know for sure, without credible survey evidence of the relevant public.

So, an overly harsh skeptic (not me, of course) might have paraphrased the University’s “parody defense” with a heavy dose of sarcasm: “Louis Vuitton, can’t you take a joke? Our work is an effective and obvious parody of you, to anyone who sees it (assuming they actually notice it) — not just those who are privy to the joke. Yeah, we’re all in on it. The symposium we are promoting in this poster actually is a laughing matter, never-mind the otherwise serious topics and tone or that it has been approved for continuing legal education credits, not comedic credits. It always was and remains our intent to poke fun at and ridicule you, and just you, in your absence, of course, with even some of your competitors present, by the way, but now that you have seen it and complained, if you’d like to come, please join us for the festivities, we’ll save a special seat for you, you might actually learn something!”

I’m admittedly not familiar with prior PIPG symposiums, but it might be interesting to see promotional posters of those events, to determine whether a common theme or reputation of poking fun at third parties is present — if so, perhaps it has become a common element like the satire and parodies a reader of Mad Magazine has come to expect. Or perhaps, such history might better explain this claimed parody, as with consumers of parody pet toy products who have been found to recognize the parody from the clearly different uses and inherent incongruity. But, for the University to simply call it a clever parody, merely begs the question of whether it is an effective one, or whether it is nevertheless likely to cause confusion not only to source, but as to sponsorship, affiliation, connection, or approval, as well.

Is it not at least plausible that the modified LV artwork was designed to simply attract attention and fill seats in the auditorium, and not to make fun of LV, and that LV’s design was so meticulously reproduced that some who see it won’t even notice the subtle changes? After all, trademark parody case law certainly supports the proposition that the more outlandish, outrageous, shocking and/or offensive the parody, the less likely confusion will result. We’ll probably never know, but it wouldn’t surprise me at all — if survey evidence were pursued on these facts — to find support for an actionable level of likelihood of confusion as to LV’s sponsorship, affiliation, connection, or approval of the fashion law symposium, especially since LV noted it has sponsored such events by other schools (Fordham Law School’s Fashion Law Institute). This, it seems to me, is a key alleged fact overlooked in the Associate Dean’s response. Moreover, the focus on comparing luxury goods to educational seminars seems to miss the mark, as there appears to be a direct overlap in the sponsorship of fashion law seminars.

Other possible loose strings to tug on might be the University’s apparent belief that “lawyers, law students, and fashion industry executives who will attend the symposium” would have to believe that LV “organized” the symposium, for there to be a problem, as opposed to simply having some other connection with it, such as through sponsorship, affiliation, or approval. I also wonder about the narrowly defined scope of the relevant public, as the symposium is open to the public, and presumably more will see the poster/invitation and be influenced by it than those who actually attend.

Back to the application of the “trademark bully” label on these facts, beyond the fact that parody is not a defense to trademark infringement, it is just another way of saying, there is no likelihood of confusion, it is worth noting that the trademark parody cases are “difficult to outline with any precision,” and “a review of the trademark parody cases gives us few bright line rules.” Indeed, some have said the trademark parody cases reflect a “barometer of both the presiding judge’s sense of humor and sense of fairness.” These cases are not black and white. Given that, and for the other reasons mentioned, the facts of this example don’t appear to me to be conducive to a label that assumes the trademark infringement claim to be frivolous or lacking any objective merit.

So, while it may be stylish to apply the shaming “trademark bully” label to Louis Vuitton, at the moment, I’m not convinced it fits, at least on these facts.

Where do you come down on this example?

–Catlan McCurdy, Attorney

Another fashion icon has joined the ongoing trademark dispute between Yves Saint Laurent and Louboutin, and despite the fact that many of its goods are very small, the company is actually quite a giant. Tiffany and Company.

Yes, Tiffany. We’ve all been waiting for the company’s two amicus cents to be thrown into the fight. I know I have. Since filing the amicus brief, Tiffany has been called a friend or ally of Louboutin, but I think their so-called “friendship” is secondary to Tiffany’s primary concern of protecting its own little blue boxes. If, as it has been predicted, Judge Marrero’s ruling in Christian Louboutin SA v. Yves Saint Laurent America Inc. eliminates trademark protection for color marks in fashion, Tiffany is going to have to worry about a lot more than alliances in the industry. What will Tiffany do with all of its free time if it doesn’t have to go around suing e-Bay  on the daily?

Needless to say, I was pleased to see some strong language in the amicus brief filed by Fross Zelnick Lehrman & Zissu, P.C. Sidenote, Fross Zelnick is the same firm that represented Louboutin before the USPTO in 2008 in securing the registration for the red-sole mark currently at issue. Coincidence? I think not.

The amicus brief stated that District Court’s opinion in this case had adopted “a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any “fashion item,” even where the color has achieved “secondary meaning” and is associated with a single brand. Amicus curiae respectfully submit that adoption of such a blanket rule was unnecessary to a resolution of the preliminary injunction motion below and should be rejected by this Court.” The brief goes on to state that neither the language of the Lanham Act nor legal precedent to support such a per se rule.

Do I agree with this brief? Absolutely. Color can achieve secondary meaning, even in fashion where color is arguably as important as cut, fabric, and styling. A bright line rule eliminating trademark protection for colors in the fashion industry alone is unnecessary and baseless. Decisions on issues such as the one at hand should be undertaken on a case-by-case basis.