October 15, 2012
Previously published on October 2012
Christian Louboutin, the designer whose shoes have graced the feet of many fashion-forward women, won the latest round in the fight over the exclusive right to use red soles for women’s footwear. On September 5, 2012, the Second Circuit Court of Appeals reversed the lower court’s decision that a single color could not serve as a trademark and held Louboutin’s Red Sole Mark Registration No. 3,361,597 to be a valid trademark, when used with a different color upper shoe. The Appeals court specifically directed the USPTO “to limit the registration of the Red Sole Mark to only those situations in which the red lacquered outsole contrasts in color with the adjoining ‘upper’ of the shoe.” Christian Louboutin S.A. v. Yves St. Laurent America Holding, Inc., 11-3303-CV, 2012 WL 3832285, at *14 (2d Cir. Sept. 5, 2012). Since 1992, Louboutin’s signature luxury shoes with red soles have been featured in magazines, film, TV, and runways around the world. Louboutin’s trademark application, filed in March 2007, contained a claim for the single color red, namely, a “lacquered red sole on footwear.” The USPTO granted registration in January 2008. In 2011, luxury clothing brand Yves Saint Laurent (“YSL”) launched a line of “monochrome” shoes in various colors including red. Upon learning of YSL’s red monochrome shoes (which featured the color red on every part of the shoe from the upper to the outsole), Louboutin filed suit in the Southern District of New York, asserting violations of the Lanham Act and sought a preliminary injunction enjoining YSL from marketing the red version of its monochrome shoes. The District Court denied the injunction and ruled that a single color could not serve as a trademark in the fashion industry based on the doctrine of “aesthetic functionality.” Christian Louboutin S.A. v. Yves St. Laurent America, Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011). The lower court reasoned that, in the fashion industry, single-color marks are inherently “functional” and that any such registered trademark would likely be held invalid. On appeal, the Second Circuit reversed in part, holding that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark.” Christian Louboutin S.A., 2012 WL 3832285, at *7. The court rejected the aesthetic functionality defense, stating that competition would not be inhibited because others could still produce red monochromatic shoes without infringing the modified Red Sole Mark. The court considered Louboutin’s “advertising expenditures, media coverage, and sales success” (Id. at *13) in determining that Louboutin had acquired secondary meaning for the red soles when used in contrast to the rest of the shoe. The case has been remanded to the District Court for further proceedings with regard to YSL’s counterclaim seeking cancellation of the Red Sole Mark trademark registration and damages. The Second Circuit’s ruling is a major decision in the fashion industry, particularly since the Cour de Cassation, France’s highest court of appeals, ruled against Louboutin in favor of Zara, a mass-market retailer selling cheaper red-soled heels.
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