The doctrine of aesthetic functionality was revived in the recent Louboutin case to protect the competitive need to use color to communicate a particular message. In that case, Christian Louboutin S.A. tried to enforce its trademarked red lacquered outsole against Yves Saint Laurent’s use of the color red on a monochromatic shoe (including on the outsole). Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 447-48 (S.D.N.Y. 2011). The district court relied on Qualitex, finding that color would only be protectable if it distinguishes one’s goods and identifies their source, without serving a function. Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 162 (1995). It accordingly held that Louboutin’s red outsole served non-trademark functions, such as eluding energy and sexiness, and could not be upheld as a trademark as it would hinder creativity and artistic freedom in the fashion industry to preclude competitors from using the color on shoes.
The U.S. Court of Appeals for the Second Circuit reversed the district court’s decision. It noted that to uphold the district court’s decision would be to single out the fashion industry and hold it to a different standard than other industries. It reviewed Louboutin’s evidence of acquired distinctiveness of the mark and determined that it had little support for acquired distinctiveness extending to uses where the red outsole did not contrast with the upper portion of the shoe (e.g., monochromatic shoe like that of YSL). Thus,it held that Louboutin’s red outsole is entitled to limited protection as a trademark. Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2d Cir. 2012). This protection amounts to a limitation of the red outsole registration to situations where the red outsole contrasts in color with the upper portion of the shoe.
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