At issue in the Louboutin case is whether a color can be trademarked for fashion items. In the Gucci case, the judge said that the red-green-red coloration when designated to three stripes is a viable trademark that demands protection.

“In the context of Louboutin, Judge Scheindlin tacitly affirmed that color marks are protectable,” said Susan Scafidi, director of Fordham University’s Fashion Law Institute.

Media Mentions – Managing IP – 4-4-12

Gucci v. Guess: What Happens When Designers Fight
Managing Intellectual Property, April 4, 2012

Susan Scafidi, a law professor at Fordham University, said it’s less common for designers to see their work blatantly copied by close competitors or name brands than it is for them to notice fast-fashion knockoffs of their work.

“When there’s truly a clash of titans – YSL suing Ralph Lauren, or Armani accusing Dolce & Gabbana of copying – major headlines result and fashion world event planners have to rearrange seating faster than wedding planners faced with feuding in-laws, Scafidi told Managing IP.

Media Mentions – Footwear News – 5-22-12

Lawyer: Marc Fisher Footwear Content With Gucci, Guess Outcome[break]Footwear News, May 22, 2012

Excerpt:

Susan Scafidi, a fashion law professor at Fordham University, said that the judge’s ruling likely stemmed, in part, from the lack of evidence produced by Gucci in court.

“Despite the claim of hundreds of styles being copied, the fact that not that many styles actually were [presented] probably influenced the final award,” Scafidi said. “Frankly, Gucci didn’t realistically expect the crazy number it asked for.”

Media Mentions – WWD 10-25-11

Tiffany & Co. Backs Christian Louboutin in Red Trademark Case
Women’s Wear Daily, October 25, 2011

In April, Louboutin sued Yves Saint Laurent in New York federal court, claiming that an all-red pump created by the rival house violated its red-sole mark that it obtained in 2008.

Louboutin asked the court to stop the sale of YSL’s shoe while the case was under review. But in August, presiding Judge Victor Marrero denied that request and instead questioned Louboutin’s mark, noting that no one designer should have a “monopoly” on any color. Louboutin then filed an appeal, which is currently under review.

“Tiffany has a reason to be concerned,” said Susan Scafidi, director of Fordham University’s Fashion Law Institute, who explained that if Louboutin’s mark is eventually canceled it would “weaken color trademarks across the world of fashion.”

Enter Tiffany, which registered its signature blue trademark for packaging in 1998. While there is a distinction between Louboutin’s mark and Tiffany’s mark — one is for “product packaging,” the other for “product configuration” — Scafidi said based on the “broad nature” of Judge Marrero’s ruling, there may be some cause for concern.

Media Mentions – WWD – 4-25-11

Web Ground Zero in Ongoing War on Counterfeits /
Enter the Blonde Lady
(First Annual Fashion Law Institute Symposium)
WWD, April 25, 2011

Media Mentions – Lohud 4-27-11

NYC bill would criminalize buying knockoff goods
Wall Street Journal Online, April 27, 2011

NEW YORK — A city lawmaker said Tuesday she’ll introduce a bill to criminalize the purchase of counterfeit designer goods including handbags and watches.

The bill proposed by City Councilwoman Margaret Chin would impose penalties of up to a year in jail or a $1,000 fine for buying knockoffs.

…

It is already illegal to sell fake designer goods, but Susan Scafidi, head of the Fashion Law Institute at Fordham University, said that if Chin’s bill passes New York would be the first U.S. city to criminalize their purchase.

Scafidi said France and Italy have passed laws against buying counterfeits and have succeeded in curbing their sale.

“We’ve known for a long time that demand drives sales, especially when combined with the unfortunately exciting experience of an illicit transaction on Canal Street, but New York City has previously been reluctant to arrest guests in the city,” Scafidi said. “Now, the cheap tourist thrill of buying a fake bag may come with free accommodations — behind bars.”

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Media Mentions – WWD – 5-22-2012

Media Mentions – Managing IP – 4-4-12

Media Mentions – Footwear News – 5-22-12

Media Mentions – WWD 10-25-11

Media Mentions – WWD – 4-25-11

Media Mentions – Lohud 4-27-11