Aug 12 2011

NY Court Gives Louboutin Suit Over its Red Soles the Boot!

In a battle between two of the most recognized names in women’s fashion Louboutin and Yves St. Laurent, the first round goes to YSL as Judge Victor Marrero of NY’s Southern District refused to grant an injunction against YSL’s release of a red-soled shoe line.

The case highlights the difficulty in obtaining protection over fashion design and the subtle arguments that can make all the difference. Louboutin’s red soled shoes sell for at least $1,000 per pair, a price range that makes their target market a very small percentage of the world’s population. Thanks to social media, Jennifer Lopez and Reality TV’s constant reminder of how unlucky we all are to not be able to afford the things celebrities and the nouveau riche “must-have,” however, Louboutin’s “trademark” red soles have come into the popular mind-set. In fact in 2008, the US Patent and Trademark Office granted Louboutin a “trademark” for use of the lacquered Chinese Red sole in “women’s high fashion designer footwear.”

The quotes around “trademark” are there because Judge Marrero ruled that the red soles are not a protectable trademark after all. In a lengthy decision that is equal parts a fashion review article and a law review article, Judge Marrero ruled that the red sole trademark was too broad and was part of the shoe’s function as opposed to a trade dress design that was protectable.

The Classic Louboutin shoe

Louboutin began making red out-soled shoes in 1992, but YSL argued that red shoes and shoes with red soles had existed long before Louboutin (they traced it’s origins back to Louis XIV and even found instances of their own red soled shoes from the 1970s). The court recognized that Louboutin had done a great job of making red soled shoes synonymous with their brand, which as I have stated in previous posts, is normally what is required to have a successful fashion design claim (“secondary meaning” is the legal term for this argument). Here’s what the court acknowledged regarding the close association of red-soled shoes and Louboutin:

When Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled black shoes flaunt a glamorous statement that pops out at once. For those in the know cognitive bulbs flash to associate: “Louboutin.”

But the court said that is simply not enough to stop others from using a high lacquered Chinese Red on the outside sole of a shoe because it is too much a function of the shoe and trademark protection cannot be awarded to functional items. Louboutin’s claim was hurt in this regard by an affidavit submitted by Christian Louboutin in support of his trademark application. It stated that the company used red because it portrays “energy” and that this particular color of red is “the color of passion” and is “flirtatious.” The court said that this language meant that this single-color design mark did in fact serve a function by being used to send out these messages. It is this function that distinguishes the red sole from other single color trademarks that are protectable -like Owen-Corning’s trademarked pink fiberglass insulation. The color pink conveys no message other than to identify the insulation as being Owen Corning’s therefore it is protectable. John Deere, on the other hand Judge Marrero pointed out, was unable to protect its “green” tractor color as a trademark because it chose green because farmers prefer the tractor to match the color of the trailer it is often pulling which are normally green; the color therefore served a function separate from identifying the product as coming from one particular source.

The court also distinguished Louboutin’s design from Louis Vuitton’s multicolor-“LV” design and Burberry’s classic plaid because those involve not a single color but “the arrangement of different colors and thus their synergy to create a distinct recognizable image purposely intended to identify a source while at the same time serving as an expressive, ornamental or decorative concept.” Because of the single color, as well, the court was concerned that if the court granted the injunction, it would open up a “fashion war” with design companies trying to trademark other single color items that had become associated with their companies. Forever tying up the this color would also hinder competition the court said, which is always the other side of the balancing scale in granting protection to intellectual property.Louboutin had asked the court to protect a spectrum of red that covered at least 12 shades. Louboutin here was hurt by his own testimony at a deposition he gave in support of the injunction motion. He was shown a red YSL shoe and was asked whether it would infringe on his trademark and he replied that he would “think about it.” When he was asked if he would object to any red soled shoe, his lawyer objected and instructed him not to answer. So the court did not feel comfortable that designers would have to get some sort of advance clearance from Louboutin as to whether their particular red sole infringed on his. On top of this, Louboutin also claimed that the glossy coating was part of the trademark so the court wondered whether a flat red shoe would infringe on the mark or would it be permissible? The court said that Louboutin’s attempt to monopolize this idea would just be too broad and general a trademark as to warrant protection. It therefore decide to deny the injunction,effectively allowing YSL to produce the similar shoes.

YSL’s lawyers however, made a slight technical error. They never specifically asked the court for summary judgment and for a declaration that the trademark given to Louboutin in 2008 should be extinguished. The court therefore did not grant this relief or decide this issue. Instead, it set August 17, 2011 as a hearing date for Louboutin to argue why this relief should not be given. Based on this record and this decision, it seems clear that the court will order this trademark extinguished and all designers will be free to place a lacquered red outsole on their high heels. What effect this will have on the product is unclear, but its big business. Louboutin sold 240,000 pairs of these last year!

This decision will likely send shockwaves through the design industry as most industry folks would have bet their life on the strength of the Louboutin red sole trademark. But this decision makes clear that courts must draw the line between protecting creativity, innovation and ambition and allowing one company to control a broad general concept. Hopefully the courts concern over “fashion wars” will send a message to Congress to seriously consider whether it is a good idea to pass the Innovative Design Protection and Piracy Prevention Act proposed by US Sen. Chuck Schumer. This Act essentially tries to do by legislation what Louboutin could not do by court order – granting protection to functional items. Its passage would lead to the stifling of young innovative designers and to unfair competition as large established houses would bring multiple actions to stifle competition against its basic functional designs. Ironically, had this act been in place when Louboutin began his red soled shoe design, YSL could have stopped him by proving that it had issued a red soled shoe in the 1970s.

I’ll keep you posted as to what happens to the trademark after the August 17th hearing.

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