By: Sharon Urias, Esq.
For over a year Christian Louboutin, a famous French shoemaker, has been engaged in a lawsuit with French designer Yves Saint Laurent over Louboutin’s red-sole designer shoes. For over twenty years, Louboutin has been painting the soles of its pricey women’s shoes a lacquered red, which has made the shoes recognizable from quite a distance and highly coveted and popular, as well. Louboutin was awarded a trademark for the shoes by the U.S. Patent and Trademark Office in 2008.
Yves Saint Laurent, the company named for the famous French designer who passed away in 2008, designed a “monochrome” line of designer shoes that would have the same color throughout the whole shoe – sole and all. Claiming that its red sole shoes were protected by trademark, Louboutin sued for trademark infringement to prevent Yves Saint Laurent from selling all red shoes. Last summer, New York federal judge Victor Marrero, rejected Louboutin’s request for a preliminary injunction, indicating the designer would most undoubtedly lose its trademark claim against Saint Laurent and that a single color can never serve as a trademark in the fashion industry because color is a necessary element of fashion design. Louboutin then appealed his case.
The Second Circuit of Appeal of the United States recently rejected the district court’s ruling with the decision that Louboutin’s red sole is entitled to limited trademark protection that extends only to a red lacquered outer sole that contrasts with the color of the rest of the shoe and not to shoes that are monochromatically red. U.S. Circuit Judge Jose Cabranes wrote in the decision, “The district court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality. We conclude that the trademark, as thus modified, is entitled to trademark protection.” However, Judge Cabranes did also say that Yves Saint Laurent’s use of a red outer sole on monochromatic red shoes “does not infringe on Louboutin’s trademark”, and that granting Louboutin broad rights for the color red would harm competition.
This decision is important to brand owners and of particular significance to the fashion industry. The Louboutin decision reinforces the U.S. position that a single color can serve as a trademark only if it has acquired distinctiveness by its owner to the point that the public associates it with a particular brand. Louboutin registered as a trademark the red sole on the basis of its strong reputation in the signature red sole, achieved through twenty years of extensive use, sales and advertising.
Both sides seemed to be satisfied with the appellate court decision.
Henry Lewin, the attorney for Louboutin, said his client “was pleased that our central premise, the color of the red sole, can be a trademark,” and … “that this is a significant win, not only for Louboutin, but for the fashion industry in general.”
Yves Saint Laurent attorney, David Bernstein, said, “We are happy to have achieved a victory in defending against Louboutin’s lawsuit. YSL will continue to produce monochromatic shoes with red outsoles, as it has done since the 1970’s.”
