Copyright Law Fashion Law Intellectual Property Litigation Trademark Law

Appeals Court Restores Louboutin’s Red Sole Trademark

Round Two in the battle between two high couture fashion houses, Christian Louboutin and Yves Saint Laurent, goes to Louboutin as the Second Circuit (the federal appeals court that covers New York) reversed a lower court’s finding that Louboutin’s famous red sole could not constitute a trademark.

Yves Saint Laurent had produced a line of monochromatic shoes whose soles matched its uppers in color – Louboutin sued to stop YSL from producing such a shoe in red saying it would confuse customers into thinking they were Louboutins violating Louboutin’s registered trademark in shoes bearing high-lacquered red soles. The lower court ruled that a single color could never constitute a trademark in the fashion industry and further held that the color served a useful function because Louboutin admitted he chose red because red denotes “sexiness.” In general terms, a product feature is functional and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article, that is, if exclusive use of the feature would put competitors at a significant non-reputation-related disadvantage.” For a full discussion of the doctrines of functionality and, more specifically, “aesthetic functionality,” go to law school.

The famous Louboutin red sole shoes with black stiletto heels

Louboutin took the appeal to the Second Circuit after its loss as the lower court’s decision did not just mean that YSL could use red soles, but that anyone could produce a line of red soled shoes. This would essentially lay to waste all the millions Louboutin had spent in marketing and all the good will and recognition he had created in the two decades or so he produced the shoe. The appeals court found that the district court erred in holding that a single color could not constitute a trademark. It cited two key cases In Re Owens-Corning Fiberglass Corp a 1985 Second Circuit case which upheld the color pink as a trademark of Owens Corning for fiberglass and Qualitex Co. v. Jacobsen Products Co. a 1995 US Supreme Court case that allowed green-gold pads on dryer presses to constitute a trademark of the plaintiff (yes, someone went all the way to the Supreme Court over the color of dryer press pads). The court here said that those cases showed that in certain circumstances a color can on its own constitute a trademark. It relied on the language expressed by the Supremes in Qualitex:

“Color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”

In deciding that this was the case with Louboutin’s red soles, the court still gave YSL a partial victory. The court ruled that YSL could still produce the red-soled red upper shoe as Louboutin could not claim a trademark over an all-red shoe. Considering that this is all YSL wanted to do in the first place, overall this was pretty good news for YSL. So here’s a case where both sides won. YSL gets to make it monochromatic red soled shoe and Louboutin gets to stop all comers from using a red sole on a non-red shoe. Without a doubt, Louboutin had more riding on this than YSL and they are breathing a sigh of relief there for sure. As are fashionistas everywhere who would have seen their expensive kicks get devalued when Payless and Target started producing red-soled shoes for $19.99.

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