The appeals court is expected to decide Louboutin v. Yves Saint Laurent in the next few weeks. This case, originated by Louboutin in 2011, and now on appeal, brought two of the world's elite fashion designers and most exclusive brands to court over Louboutin's trademark for its famous China red soled shoes. As a San Francisco trademark lawyer, I think this is an interesting case which greatly affects the rules regarding color trademarks and possibly which shoes you should buy this spring.
The District Court Denied Louboutin's Request for Preliminary Injunction
The U.S. District Court for the Southern District of New York, in its August 10, 2011 decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., calls into question whether a single color may serve as a trademark for fashion. The case arose from an action for trademark infringement brought by luxury shoe designer, Christian Louboutin, against Yves Saint Laurent America. Louboutin is well-known for his collection of luxurious women's shoes, which have bright red glossy soles. He also owns U.S. Trademark Registration No. 3,361,597 for the mark, which is described in the registration certificate as "a lacquered red sole on footwear:"
Louboutin alleged, in relevant part, that Yves Saint Laurent's sale of four shoe designs that are entirely red, with a red sole, were likely to confuse consumers as to the source of the Yves Saint Laurent shoes, in violation of Louboutin's trademark rights. In the 2011 decision, Judge Victor Marrero denied Louboutin's motion for preliminary injunction, finding that Louboutin was unlikely to be able to establish that he had a protectable mark, since color cannot serve as a trademark if it is functional. Judge Marrero's lengthy opinion discussed the similarities between high fashion footwear designers and fine artists and held that Louboutin's trademark has an aesthetic purpose which obstructs fair competition.
Louboutin Appealed the District Court's Denial of his Request for Injunction
On January 24, 2012 Christian Louboutin, through his attorneys, argued his appeal to the U.S. Court of Appeals for the 2nd Circuit to protect his trademark on red lacquered soles. A decision should be rendered spring 2012. The question before the court presents two vastly different views of the purpose of color in fashion design and has implications for other industries where color used as a source indicator arguably has an aesthetic or functional purpose.
Louboutin's Legal Argument
Louboutin known for the lacquered Chinese red finish on the soles of his designer heels argues that this red feature serves strictly to identify his brand. Louboutin attests the red soles are exclusive brand identity, as in the case of Tiffany's signature robin's egg blue used in connection with jewelry and other items. (Tiffany's filed an amicus brief supporting Louboutin's position on color and trademarks.)
On appeal Louboutin argued that Judge Marrero erred: "By putting a distinctive red color on the previously ignored bottom portion of the shoe, Louboutin established a strong brand identifier. The red outsole has no [other] utility." The appellate brief refuted Judge Marrero's decision that the trademark hinders competition, by arguing that the Judge's conclusion was simply conjecture unsupported by evidence.
Yves Saint Laurent's Counter Argument
Yves Saint Laurent countered on appeal that by Louboutin's own admission the red sole has an aesthetic purpose. Therefore, according to Yves Saint Laurent, Louboutin does not qualify for trademark registration under the U.S. Supreme Court's 1995 opinion in Qualitex v. Jacobson Products, which decrees that a color can be trademarked strictly in the event that it "can act as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function." When color serves a singular aesthetic function and is not a source of brand identification, as Yves Saint Laurent contends, the color is not viable for trademark protection.
The United States Supreme Court held in Qualitex that a color may be trademarked if it qualifies as having secondary meaning.
Secondary meaning refers to the circumstance where consumers instantly associate the mark (a red color in this case) with the brand, to the exclusion of all others. However, if a color is a functional feature that affects the use, quality or cost of a product, the mark does not meet the criteria for trademark protection.
Therefore, Louboutin's counsel argues that the public associates the red soled high heeled shoe exclusively with Christian Louboutin and compares Louboutin's red sole to the valid trademarks of Burberry's plaid as well as Gucci's stripes. "Outstripping them all has been the Red Outsole Mark. Its trademark status has been conferred upon it by the consuming public." Indeed, would women spend hundreds or thousands of dollars to snag a pair of crimson soled shoes without secondary meaning?
However, the lower court expressed concern that other designers might lay claims to additional colors, leading to the eventual exhaustion of available colors. This could potentially damage the fashion world's creativity and overall viability. Additionally, other fields where the aesthetic use of color is fundamental to the product, such as
cosmetics, home décor and commercial art, could suffer the same fate.
Law School Faculty Members File Amicus Brief in Support of Yves Saint Laurent
Notably eleven law school faculty members filed an amicus brief supporting Yves Saint Laurent. The brief drafted by Rebecca Tushnet of Georgetown Law Center stated: "This court should recognize that the shadow cast by a mark in a single color on a fashion item creates enormous uncertainty for other designers and should regard claims of single color trademarks in fashion with considerable skepticism..."
The professors distinguished between design patents and color trademarks, arguing that trademarks for colors serving an aesthetic purpose would confer similar monopolistic rights as design patents, creating an entirely anti-competitive situation.
There's a lot at stake for Louboutin as his red soled shoes may be one of the most powerful trademarks in the world. If competitors were allowed to produce their own version of red soled shoes, such items would no longer confirm an association with the wealth and prestige currently unique to Louboutin. Additionally, the court's decision could have a broad impact on the fashion industry's use of color as well as any industry where the color of a product would be considered to contribute "expressive, ornamental and aesthetic" functions.
A decision on the appeal is expected this spring. Until then, you may be wise to hold off on a purchase of red soled shoes.
For related reading on trademark law and trademark protection review the following posts on this blog:
Christian Louboutin's Appellate Brief U.S. Court of Appeals for the Second Circuit, Filed October 17, 2011
"Protecting Single Color Trademarks In Fashion After Louboutin" 30 CARDOZO ARTS & ENT. L. J, (forthcoming May 2012)
"From The Red Carpet to Red Soles" New York Law Journal, February 27, 2012
San Francisco trademark and business lawyers at Kabak Law Group offers comprehensive trademark advice and counsel to established brands and entrepreneurs in all matters of trademark enforcement, protection, actions and legal proceedings. Matthew Kabak, principal and founder, has extensive experience in all aspects of trademark portfolio management.