A judgment was recently issued in another closely-watched case, this one involving two well-known French manufacturers of high fashion shoes: Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding Inc. This posting describes the litigation surveys that were presented and rebutted by both sides in this matter, which provides another interesting look at the “battle of the experts” (to quote McCarthy on Trademarks and Unfair Competition) that can occur in this type of intellectual property litigation.
In particular, this matter provides a window into likelihood of confusion surveys and secondary meaning surveys. This posting will look at some of the litigation surveys presented, and the counter-arguments.
The Basics of Christian Louboutin v Yves Saint Laurent
Many readers likely already know the basics, and you can read the detail in the court’s decision. The key facts are as follows: Louboutin, who makes expensive high-fashion shoes with red soles, alleged that Yves Saint Laurent (YSL), another high-fashion shoe company, was infringing by making red shoes that also had red outsoles. A decision issued September 5, 2012 by the U.S. Second Circuit Court of Appeals partially upheld and partially reversed a prior decision by the U.S. District Court for the Southern District of New York.
The decision from the Court of Appeals ruled that Louboutin could trademark the color red for the outsoles of the shoes, but only where the red was in contrast to the color of the rest of the shoe. As the court wrote, “It is the contrast between the sole and the upper that causes the sole to ‘pop’, and to distinguish its creator.” Louboutin was able to protect its trademark on the color red, while YSL was able to continue making the all-red shoes. Both sides claimed victory.
The rest of this post looks at the litigation surveys filed.
Litigation Surveys in Louboutin v YSL
I’ve written in other postings that survey experts typically start by looking at the issues of the case to develop an implicit theory of consumer behavior that underlies the litigation survey and connects the litigation survey to the arguments put forth in a matter. In this case, the arguments involved two concepts potentially relevant to surveys.
One issue was likelihood of confusion. Louboutin argued that the lacquered red distinguished its shoes from other shoes in the marketplace, and that consumers who saw a similar color on other fashion shoes would have a high likelihood of confusion.
The second issue was secondary meaning. Louboutin argued that consumers associated the color red with Louboutin specifically, while YSL maintained that the color was not associated with a specific manufacturer.
Both sides commissioned survey experts to develop and present surveys, and both sides argued against the surveys provided by the opposition. Let’s look at the surveys provided on both of these issues, and the opposing responses. (Disclaimer: I was not involved in this case; this post describes litigation surveys I learned about through publicly available sources.)
Likelihood of Confusion Surveys in Louboutin v YSL
Louboutin commissioned a survey expert to conduct a likelihood of confusion survey, which measured whether consumers who viewed the YSL shoe might think the shoe was made by Louboutin. In the survey, consumers were shown a picture of the YSL red shoe, which has both a red sole and red upper, and answered questions about who made the shoe. Of these consumers, 47% answered that the shoes were made by Louboutin, and of that group, nearly all (96%) said they named Louboutin because of the sole. As the court stated in commenting on that survey, “… of those consumers who misidentified the pictured shoes as Louboutin-made, nearly every one cited the red sole of the shoe, rather than its general red color.”
YSL’s attorneys argued that the survey was “deceptive” and “deeply flawed” because it drew attention to the red outsoles and “focused unnaturally on the sole” in conditions that did not mimic the real world. YSL’s attorneys retained their own survey expert, who commissioned a survey that showed a brief video of a woman walking around in the shoe. The YSL likelihood of confusion survey showed the video twice, and then asked questions to measure the likelihood of confusion. The results from this survey showed much lower levels for the measured likelihood of confusion; less than 5% of survey participants believed that the YSL shoes were made by Louboutin.
Attorneys for Louboutin countered that the photograph reflected actual street conditions” and was not leading because it allowed consumers to better view the shoe, including the red sole. In my experience, it is not at all unusual for surveys to be evaluated based on whether they replicate marketplace conditions; I’ve written about that topic in prior posts.
A second issue argued in the back and forth about the likelihood of confusion surveys was whether it is better to have the stimulus in view during the questions (as with the Louboutin confusion survey) or whether the stimulus should be out of view when questions were asked (as with the YSL confusion). The format when the stimulus is not in view is sometimes called a “memory test” because respondents must rely on their memories to answer questions.
Secondary Meaning Survey in Louboutin v YSL
Both sides submitted surveys of secondary meaning. YSL’s survey expert measured secondary meaning and found that only 24% of relevant consumers associated the red soles with a single source. Attorneys for Louboutin argued that the survey was “flawed” by respondent selection and non-standard survey questions.
Although I don’t have as much room in this post to discuss the secondary meaning survey, I’ll mention that the Appeals Court found that Louboutin’s red soles had acquired “limited secondary meaning as a distinctive symbol that identifies the Louboutin brand…” The court did not find evidence that the secondary meaning extended to uses where the sole did not contrast with other parts of the shoe.
Conclusions for Secondary Meaning Surveys and Likelihood of Confusion Surveys
As I mentioned, this case was quite high profile, with two parties who were willing to invest resources to present and counter litigation surveys. Other parties were also interested – Tiffany filed an amicus brief in the matter, as did the International Trademark Association.
Surveys can be particularly important for matters involving likelihood of confusion and secondary meaning. Want to learn more? I’ve provided some video blogs explaining how to measure both likelihood of confusion and secondary meaning in a Lanham Act survey.
Dr. Bruce Isaacson
MMR Strategy Group