Seeing Red

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Fashionistas everywhere, along with a certain well-known design house, received some good news recently.  On September 5, 2012, the U.S. Circuit Court of Appeals for the 2nd Circuit rendered its decision in Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc. (No. 11-3303-cv (2d Cir. Sept. 5, 2012)) partially reversing the lower court’s ruling[1] that Louboutin’s famous red soled shoes were not entitled to trademark protection. The case stems from a dispute between rival fashion houses Christian Louboutin and Yves Saint Laurent regarding whether YSL’s use of a red colored sole on its shoe design infringed Louboutin’s trademark rights in the red soled shoe design[2].

YSL had designed a line of monochromatic shoes featuring an outsole that matched the color of the upper.  It was the red shoe in particular that caught Louboutin’s attention, and which prompted their filing of a complaint and request for a preliminary injunction to prevent YSL from selling any shoes bearing the red sole during the pendency of the case, on the basis that YSL’s shoes were likely to cause confusion among the relevant consumer (you know,  the ones that can afford to spend their children’s college funds on really pretty footwear). The lower court determined that a “single color can never serve as a trademark in the fashion industry,” based on its interpretation that Louboutin’s federal trademark registration claimed the color red entirely.[3] The court reasoned that awarding Louboutin a monopoly on the color red would impede competition with other designers in the industry. 

On appeal, the Second Circuit ruled that Louboutin’s Red Sole Mark had acquired distinctiveness, a/k/a secondary meaning, among the relevant consumer. In other words, consumers had come to identify Louboutin as the sole source (pun intended) of the uniquely colored footwear. See e.g. every mention of Christina Aguilera’s footwear ever. The decision, while a win for Louboutin, also limits the scope of trademark protection awarded Louboutin. The Second Circuit noted that protection would not extend to monochromatic shoes, i.e. red uppers with a red sole, but rather, that secondary meaning would be afforded only to shoes that bear the red sole and a contrasting colored upper, since it is the contrasting red sole that serves to distinguish the source of the shoes from other shoe designers. Interestingly, this means that YSL is permitted to continue to sell the very shoes that were the basis for the original lawsuit in the first place.

[1] 778 F. Supplemental. 2d 445 (S.D.N.Y. 2011)

[2] For the full exciting back story, please see Are Brand Owners Seeing Red?: Loubountin and Yves Saint Laurent and the Ongoing Battle Over Aesthetic Functionality by my esteemed colleagues, Emily Bayton and Nathaniel Edwards.  http://www.iptoday.com/issues/2012/04/are-brand-owners-seeing-red-loubountin-and-yves-saint-laurent-and-ongoing-battle-over-aesthetic-functionality.asp

[3] U.S. Registration No. 3361597 consisting of a “lacquered red sole on footwear.”