Intellectual Property Attorney

Luxury Designer Louboutin Wins Right To Protect The Color Red — But Only Sometimes

In a case that has garnered considerable media attention since its inception, luxury designer Christian Louboutin scored a key legal victory on September 5, 2012, when a three-judge panel of the U.S. Court of Appeals for the Second Circuit held that Louboutin’s “trademark, consisting of a red, lacquered outsole on a high fashion women’s shoe, has acquired limited ‘secondary meaning’ as a distinctive symbol that identifies the Louboutin brand” and qualifies for trademark protection. The Second Circuit’s opinion directly overturned the decision of the lower court which had held that a single color is forever incapable of serving as a trademark in the fashion industry.

The case arose in 2011 when Louboutin learned that rival luxury designer Yves Saint Laurent (“YSL”) was in the initial stages of launching a line of shoes incorporating varying colors, including red. YSL’s line of shoes were to be starkly different from Louboutin’s line insofar as the entire shoe (i.e., the “insole, heel, upper and outsole” versus just the outsole) were designed to be a single, monochromatic color. After YSL refused to remove the shoes from the marketplace, Louboutin filed a lawsuit on April 7, 2011 asserting, among other things, trademark infringement, trademark dilution and unfair competition. YSL responded by, in part, seeking to cancel Louboutin’s federal trademark registration for the red sole and for damages. On August 10, 2011, the district court denied Louboutin’s request for a preliminary injunction holding that it was not likely to succeed on the merits, i.e., that it was unlikely to show that Louboutin’s red sole is entitled to trademark protection.

The Second Circuit, in an opinion written by Judge Jose A. Cabranes, disagreed with the district court’s decision and held that Louboutin’s red soles are entitled to trademark protection, butonly when a different color is used on the rest of the shoe. Specifically, Judge Cabranes wrote: “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand and is therefore a distinctive symbol that qualifies for trademark protection.” Indeed, the Second Circuit was influenced by the popularity and distinctiveness of Louboutin’s high-end shoes and, in particular, the “striking” use of a red sole in contrast to other colors on a shoe, such as the prominent use of a red outsole in contrast to a black insole, heel or upper.

While the decision marks a victory for Louboutin, as it is now able to enforce its trademark for a red sole when used in contrast with other colors, it is also a victory for YSL. The Second Circuit specifically refused to extend trademark protection to exclusive use of the red sole where there is no contrast with the rest of the shoe. Thus, YSL can proceed with marketing its line of monochromatic shoes. Judge Cabranes wrote: “As the District Court observed, ‘[w]hen 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. As clearly suggested by the District Court, it is the
contrast between the sole and the upper that causes the sole to ‘pop,’ and to distinguish its creator.”

The Second Circuit remanded the case back to the district court for further proceedings, such as for determination of YSL’s counterclaim for damages.

The case is Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., Docket No. 11-3303-cv (2d Cir.).

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