Fashion Designer Louboutin Wins Appeal with Modified Red Sole Mark

by Ladas & Parry LLP
Contact

Christian Louboutin, the designer whose shoes have graced the feet of many fashion-forward women, won the latest round in the fight over the exclusive right to use red soles for women’s footwear.

On September 5, 2012, the Second Circuit Court of Appeals reversed the lower court’s decision that a single color could not serve as a trademark and held Louboutin’s Red Sole Mark Registration No. 3,361,597 to be a valid trademark, when used with a different color upper shoe. The Appeals court specifically directed the USPTO “to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining ‘upper’ of the shoe.” Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc., 11-3303-CV, 2012 WL 3832285, at *14 (2d Cir. Sept. 5, 2012).

Since 1992, Louboutin’s signature luxury shoes with red soles have been featured in magazines, film, TV, and runways around the world. Louboutin’s trademark application, filed in March 2007, contained a claim for the single color red, namely, a “lacquered red sole on footwear.” The USPTO granted registration in January 2008.

In 2011, luxury clothing brand Yves Saint Laurent (“YSL”) launched a line of “monochrome” shoes in various colors including red. Upon learning of YSL’s red monochrome shoes (which featured the color red on every part of the shoe from the upper to the outsole), Louboutin filed suit in the Southern District of New York, asserting violations of the Lanham Act and sought a preliminary injunction enjoining YSL from marketing the red version of its monochrome shoes. The District Court denied the injunction and ruled that a single color could not serve as a trademark in the fashion industry based on the doctrine of “aesthetic functionality.” Christian Louboutin S.A. v. Yves St. Laurent America, Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011). The lower court reasoned that, in the fashion industry, single-color marks are inherently “functional” and that any such registered trademark would likely be held invalid.

On appeal, the Second Circuit reversed in part, holding that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark.” Christian Louboutin S.A., 2012 WL 3832285, at *7. The court rejected the aesthetic functionality defense, stating that competition would not be inhibited because others could still produce red monochromatic shoes without infringing the modified Red Sole Mark. The court considered Louboutin’s “advertising expenditures, media coverage, and sales success” (Id. at *13) in determining that Louboutin had acquired secondary meaning for the red soles when used in contrast to the rest of the shoe.

The case has been remanded to the District Court for further proceedings with regard to YSL’s counterclaim seeking cancellation of the Red Sole Mark trademark registration and damages.

The Second Circuit’s ruling is a major decision in the fashion industry, particularly since the Cour de Cassation, France’s highest court of appeals, ruled against Louboutin in favor of Zara, a mass-market retailer selling cheaper red-soled heels.

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ladas & Parry LLP | Attorney Advertising

Written by:

Ladas & Parry LLP
Contact
more
less

Ladas & Parry LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.