Victory for both Christian Louboutin and YSL in the Battle of the Red Soles
Last year, the legal battle between Christian Louboutin and Yves Saint Laurent (now called Saint Laurent Paris, of course) shook things up in the fashion law/intellectual property arena. The question posed was: Does Christian Louboutin have the protected right to exclusively produce shoes with those fantastic signature red soles?
In order for a color to be protectable as a trademark, the public must associate it with a brand, the color muss be more than merely ornamental, and it cannot be functional aside from distinguishing and identifying its source. When a product’s feature is “aesthetically functional,” they are ineligible for trademark protection. But when is a color functional or non-functional? In the fashion world, the question becomes much more complex and the stakes are much higher for color use than in industries where color is not such an essential element. In the frequently cited Qualitex case, for instance, a dry cleaning company successfully enjoined a competitor from using a similarly colored green press pad cover. The distinctive pink color of Owens-Corning fiberglass insulation is protected by law. Tiffany’s has that well-known robin’s egg blue box color on lock. But what implications would a similar holding have on the fashion industry, where colors could make or break a look? Further, because there is certainly no dearth of imitators riding on the Louboutin red sole train (you can find black shoes with a red sole just about anywhere these days — from in a bargain bin to on the top shelf of a high-end department store), how can the Louboutin brand adequately protect its value?
Louboutin began lacquering its soles “China Red” twenty years ago in 1992 and, over time, those flashy red bottoms became practically synonymous with the brand. In 2001, Louboutin was unsuccessful in trademarking the red soles with the U.S. Patent and Trademark Office, but prevailed in 2008. In 2011, it brought a trademark infringement claim against fashion powerhouse YSL for producing a shoe with a red sole. Judge Marrero of the district court, however, dismissed the case and denied an injunction.
I was fortunate enough to attend the Christian Louboutin S.A. v. Yves Saint Laurent America Inc. hearing in court on January 24, 2012, wherein the lawyers for Louboutin and YSL each made their oral arguments (and also found myself helplessly gawking when I caught a glimpse of Mr. Christian Louboutin himself, who was accompanied by Ms. Diane von Furstenburg). YSL’s counsel relied heavily on a pair of shiny, candy apple red YSL Tribute heels — with a matching red sole. YSL, according to its counsel, has been producing shoes using this monochromatic upper and sole style since the 1970s. Granting Louboutin the right to exclusively use the red sole, he argued, would deprive YSL (or any other designer) the right to make such shoes in the future.
On September 5, 2012 — just before this year’s New York Fashion Week, actually — the Second Circuit U.S. Court of Appeals in Manhattan weighed in on this loaded issue, and overturned the lower court’s decision. The appeals judge attempted to find a middle ground to appease both Louboutin and YSL, holding that Louboutin’s combination of a red sole is indeed protectable — but with certain exceptions.
“We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand and is therefore a distinctive symbol that qualifies for trademark protection,” said the court.
It is a limited victory for both Louboutin and YSL — Louboutin is entitled to its trademarked use of the red sole, so long as it contrasts with the shoe’s upper. YSL can continue on producing monochromatic shoes, including its all-red pumps.
Readers, what do you think about this decision? As NYMag.com reported, the lower court made a strong point that designers are artists, and that, as artists, they should have the right to use the full palette of colors in their designs. On the other hand, shouldn’t innovation and genuinely novel designs be afforded protection against copycats? Feel free to take the rousing discussion over to the comments.