Red-Sole Shoes: Walking a Fine Line
In a recent decision, the United States District Court for the Southern District of New York denied Christian Louboutin S.A. et al’s (“Louboutin”) request for a preliminary injunction against Yves Saint Laurent, America, Inc. et al (“YSL”). On Friday, August 12, 2011, Louboutin filed a notice of appeal asking that the U.S. Court of Appeals for the Second Circuit overturn the District Court’s decision and grant the injunction.Louboutin is a designer of high-end women’s shoes, all featuring a readily identifiable red sole.
Based on the fact that Louboutin’s use of the red sole was considered unique and had acquired distinctiveness (meaning that consumers recognized that these types of shoes with red soles were Louboutin shoes), the United States Patent and Trademark Office allowed Louboutin to obtain a trademark registration for a lacquered red sole on footwear.
Louboutin claimed, and the Court acknowledged, that Louboutin expended significant resources building his reputation and goodwill and that Louboutin has been successful in closely associating the red-sole trademark with Louboutin. In fact, the Court notes that even YSL had stated that the red-sole was closely associated with Louboutin shoes.
YSL’s Cruise 2011 collection included four styles of shoes, each featuring red soles similar to those of Louboutin. Louboutin objected to YSL’s sale of the red-sole shoes, claiming that the shade of red used by YSL was confusingly similar to the red used by Louboutin such that YSL was infringing its trademark. When YSL refused to cease sales of the four shoe styles, Louboutin filed its lawsuit against YSL for trademark infringement and unfair competition and sought a preliminary injunction to prevent any further sales of the YSL shoes.
The primary question addressed by the Court was whether Louboutin was entitled to trademark protection for its lacquered red soles on footwear. Based on the fact that Louboutin’s use of the red sole was considered unique and had acquired distinctiveness (meaning that consumers recognized that these types of shoes with red soles were Louboutin shoes), the United States Patent and Trademark Office allowed Louboutin to obtain a trademark registration for a lacquered red sole on footwear.
The Court began its analysis with regard to the protection of colors by looking at other trademark protection for colors that had been registered, albeit in different industries. Generally, colors may be protected as a trademark if the color has acquired secondary meaning and distinguishes a brand, but not where a color is functional and is essential to the use or purpose of a product. In the fashion industry, color has been found to function as a trademark when it is used in a distinct pattern or in combinations of shades, and where use of the color manifests an effort to design a uniquely identifiable mark embedded in the products. For instance, Burberry has been able to successfully register its “check pattern” and Louis Vuitton has been able to register its LV monogram in a pattern of rows featuring 33 different colors.
Here, the Court posed the question as to whether trademark protection can be extended to a single color used as an “expressive and defining quality of an article of wear produced in the fashion industry.” The Court decided that the color red as applied to the soles of shoes could not be granted trademark protection, both because Louboutin’s red soles were deemed functional and because the claim to the color red was too broad. In other words, the Court found that other designers should be able to use the color red on the soles of their shoes and that this right should not be given solely to Louboutin as this would inhibit competition. Per the Court, providing Louboutin with this right would give Louboutin exclusive use of the entire palette of colors while preventing its competitors from having the same right. Furthermore, with regard to the functionality determination, the Court relied on Mr. Louboutin’s belief that red is sexy and helps attract men to the women that wear Louboutin’s designs.
The Court also believed that Louboutin’s claim to the color red was overbroad as competitors would be unable to determine whether their use of a particular red color on the sole of the shoe was too similar to that of Louboutin and whether such use would infringe Louboutin’s rights.
The Court also seemed especially concerned with granting one designer the exclusive right to use a color (never mind the fact that Louboutin was only seeking protection for the color red as applied to the soles of shoes) since another designer could theoretically stake out a different color for the soles of its shoes, and so on until there was no room for any designer to practice their craft without fear of an infringement claim. Therefore, it seems that the Court overlooked the source identification strength of Louboutin’s red soles in an attempt to allow designers to create without restrictions.
The Court’s decision raises an important question for all trademark owners: if successfully creating a way for consumers to recognize your products doesn’t lead to trademark protection, what does?
In its decision, the Court specifically states that it believes that Louboutin’s use of the red-soled shoe has gained secondary meaning as consumers recognize the “red-soled” shoes as Louboutin shoes. However, the Court compares use of red on shoes with the use of color by artists in paintings, specifically stating that if Monet used a certain blue in his paintings, Picasso could have objected that the blue used was the same as in Picasso’s blue period and thus, could have prevented Monet from using the color. The analogy simply does not fit. Louboutin used red in a very specific way on his shoes—in a lacquer finish only on the soles. Such use does not serve any function except as a source indicator. A better analogy would have been the use of Tommy Hilfiger’s green buttonhole eyelet which is the subject of three (3) unchallenged trademark registrations. If Tommy Hilfiger can prevent other designers from using a green buttonhole eyelet, even in connection with green shirts, then the question arises as to why Louboutin cannot prevent its competitors from using a red-soled shoe. The answer is simple—because each of these designers has established the given color as an indicator of source through its widespread and exclusive use, which is one of the most important and fundamental principals in establishing a trademark.
Given the Court’s decision and the relied-upon analysis, it is not surprising that Louboutin appealed the decision. While there may be significant questions, including questions of fact, as to the degree of protection afforded to Louboutin’s lacquered red soles and the likelihood of consumer confusion with the YSL shoes, it is hard to imagine the Court’s application of secondary meaning remaining unchallenged. Acceptance of the Court’s proposition—that the degree of consumer recognition and source identification is not germane to the strength of a trademark—would result in a complete change in current trademark laws, and in the very definition of a trademark.
While it is understandable that the Court does not want to limit the artistic creativity of other designers by disallowing their use of red-soled shoes, or does not want other designers to lay claim to other colors at the exclusion of all competitors, it does not appear logical that a designer that has already established secondary meaning in its trademark should now be stripped of protection due to hypothetical scenarios that may never culminate in reality. Thus, the Court of Appeals may take a different approach in analyzing the strength of Louboutin’s red sole trademark. Since Louboutin has seemingly developed extensive goodwill in and to red soles and since consumers tend to recognize Louboutin’s shoes because of the red soles, it would be surprising if the Court of Appeals invalidated Louboutin’s trademark rights in the red soles.
Farah Bhatti is a shareholder and chair of Buchalter Nemer’s intellectual property practice group. She can be reached at (949) 224-6291 or fbhatti@buchalter.com.
Jessie Reider is an associate in Buchalter Nemer’s intellectual property practice group in Los Angeles. She can be reached at (213) 891-5031 or jreider@buchalter.com
