Louboutin loses YSL battle but wins trademark war

The famous shoe designer Louboutin successfully overturned a district court’s ruling that the famous red sole of the ultra-expensive shoes were trademark worthy.  French designer Yves Saint Laurent (YSL) left the courthouse claiming victory as well in that their solid red shoes “don’t infringe Louboutin’s mark.”  The iconic red soles of the Louboutin shoe’s are a symbol of the brand much like the blue box of Tiffany’s jewelry and are important to the exclusivity of the brand.  The court however, ruled that the distinctive color of the sole was not subject to exclusive use allowing competitor YSL to produce a shoe comprised totally (including the sole) of the famous red hue.  Now the question is, was the court correct in determining that colors alone are not trademark worthy and how does this apply in the international fashion market?

It is my opinion that the court was correct in determining the red color of Louboutin soles cannot be used exclusively.  A color is too simple to be monopolized by a company simply because they used it first, or are more well known for using it.  The real key is the application of the color to the brand itself.  Much like the Tiffany box, the red soles are the identifying feature of Louboutin shoes.  If the court were to allow another shoe company to replicate the red sole there would be nothing left to distinguish Louboutin from other competitors.  The court was correct in distinguishing between the use of the color for an entire shoe as opposed to just the sole.

Important in all of this litigation is the application of the trademark in the international fashion market.  According to the World Customs Organization, the fashion industry as a whole loses “up to $9.2 billion per year to counterfeiters.”  It is vitally important to designers around the world to be able to protect the features that make their brands desirable.  In this case, Louboutin may not be able to prevent YSL from producing all red shoes, but they will be able to protect other companies from degrading the image Louboutin built with their iconic red soles.

 

SOURCES: Thomson Reuters, The Weave

 

5 comments

  1. It is important to note that the court did not find the use of the color in its entirety as infringement, likely, if the other company was to only use the color for its sole this would be a different story. Colors to a company are vitally important. A lot of money is spent in marketing developing certain brand colors. Pepsi is famous for its blue can, coke for its red. When I worked in print, it was important that all marketing materials were specifically the pantone color the marketing departments requested. No variations were allowed because it was important to have uniformity. With that being said, one would hardly notice if someone used Pepsi blue on a shoe, or product that was not soda, or not in relation to Pepsi’s logo. Here, we are dealing with a color that is specifically on the sole of a shoe, naturally if another company used the same exact color on their sole people would think the shoe was Louboutin’s. I do not think it is fair to say red is red. Louboutin’s red is as iconic as the Tiffany Blue box and if another jeweler was to use that blue on their box, you can bet Tiffany would be up in arms. What if the box was black or white with the Tiffany blue ribbon? Similar problem. If I saw that color blue on a ribbon I might think Tiffany’s to be sadly mistaken later. I think the use of the same color iconic red anywhere on a shoe is a problem for shoppers and people may be fooled by the product.

  2. So Louboutin wins- sort of.

    He won in the sense that the Second Circuit reversed the District Court, insofar as the District Court held that that a single color can never serve as a trademark in the fashion industry, for such a holding is inconsistent with US Supreme Court precedent in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995).

    He won in the sense that the Second Circuit found the red, lacquered outsole on a high fashion woman’s shoe to have acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand.

    However, the Second Circuit did affirm the District Court insofar as it refused to enjoin the use of red lacquered outsoles in all situations. Although the Second Circuit extended trademark protection to Louboutin’s use of contrasting red lacquered outsoles, the Court also limited the trademark to uses in which the red outsole contrasts with the color of the remainder of the shoe. This is an unquestionable and certain loss for Louboutin, who had sought to enjoin YSL from using a red sole as part of a monochrome red shoe.

    And, that’s really the point; is it not? The presence of a red sole on an all red shoe means nothing because it just blends into background of the shoe. I think this is the right result. There has to be visual contrast between the red outsole and the remaining portions of the shoe. Just take a look at the pictures in the following links. One shows the Louboutin shoe, while the other shows the YSL shoe:
    http://www.duetsblog.com/files/2012/02/christian-louboutin-pigalle-pumps-black-leather-2.jpg
    http://www.duetsblog.com/files/2012/02/1323778021399485.jpg

  3. While I do agree with the District Court’s decision to allow YSL to create an entirely red shoe, I do not believe this is a complete loss for Louboutin. This case is the proverbial “line in the sand” for the famous red-soled shoes. By litigating this case the Court has drawn the line that other shoe companies cannot cross. Louboutin has also sent a clear message; now we know where the line is, cross it and we will litigate. The result may even be beneficial for the Courts; by having an aggressive approach to infringement on Louboutin’s design he may have actually prevented future would be “infringers” to think twice before they cross that line. Preventing the Courts from wasting their time on obvious infringement cases.

  4. In the recent trademark case involving Christian Louboutin and YSL, I think that the court got it just right. The court struck a perfect balance in ruling that the contrasting red sole against the rest of the shoe was trademark worthy, but that YSL did not infringe by using an all red shoe. A color can certainly be an identifying factor when used in a particular way, as Lindsay’s previous comment states. However, I do not think that on its own, a color is identifiable enough to warrant trademark protection. To inhibit others from using a particular color would discourage creativity in the arts. I don’t think that someone wearing a Chinese red dress would confuse it with being made by Louboutin. However, a color used in a certain way, such as a red sole contrasting with the rest of a women’s shoe, is certainly identified with the famous French designer shoes. If other brands could use this distinguishing style it would enable confusion and endanger consumer welfare on a global scale.

  5. Personally, I tend to disagree with this court’s decision. As Peter mentioned, in Qualitex v. Jacobson, the plaintiff sued for trademark infringement claiming that their green-gold color used in their dry cleaning pads where trademarked. The court found that if the company can prove the color developed “secondary meaning,” then the color can be trademarked. Secondary meaning is acquired if the color’s purpose is to identify and distinguish a product in the minds of the public. Although I agree that perhaps the desired result came out of this case in terms of protecting the sole with contrasting outer soles, I believe that the sole color itself should have been trademarked in accordance with the Qualitex holding. The red sole has acquired its secondary meaning even to those unknowledgeable in women’s fashion like myself. With that being the case, I believe that the court should have held that red sole is trademarked in all aspects to protect the product identification that Louboutin has developed with their shoes.

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