The war of the rose-coloured shoes
On 10th August 2011 the US District Court for the Southern District of New York denied a motion for preliminary injunction brought by Christian Louboutin and his design house in a high-profile trademark litigation against Yves Saint Laurent America, Inc (YSL) (Christian Louboutin SA v Yves Saint Laurent America, Inc, No 11-cv-2381-VM (SDNY August 10 2011) (order denying preliminary injunction)). Since 2008 Louboutin has owned US Trademark Registration 3,361,597 for the colour red for use on the sole of footwear. Louboutin’s red-soled shoes are coveted by women worldwide. Prior to this lawsuit, Louboutin had not been shy about enforcing his alleged rights in his red-soled shoes, but no one had publicly challenged those rights until YSL. The case pits French couture footwear house against French couture fashion house, but the decision will affect the entire fashion industry, from high-end to mass market. At stake is the freedom to use colour for fashion versus the rights of a trademark owner to stake a claim and build a brand.
In April 2011 Louboutin filed suit against YSL, alleging trademark infringement and counterfeiting, among other federal and state law claims, and specifically challenging four models of footwear in YSL’s Cruise 2011 collection. Each of the challenged models is available in several monochromatic colourways, including ones “in which the shoe is entirely red (or entirely blue, or entirely yellow, etc.)” (Figure 2). Louboutin challenged only the red colourway of each of these models. In turn, YSL in turn, asserted counterclaims seeking, among other things, cancellation of Louboutin’s red sole registration (Figure 1).
Figure 1: Louboutin’s red sole registration (US Trademark Registration 3,361,597 (registered January 1 2008))
In a 32-page order by Judge Victor Marrero, the court found that the colour red, as used on the allegedly infringing products, “serves ornamental and aesthetic functions vital to robust competition” in the fashion industry, and concluded that: “Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”
The court not only declined to grant Louboutin’s motion to bar YSL from marketing the red shoes that Louboutin had alleged infringed its trademark registration, but also appeared ready to cancel Louboutin’s trademark registration outright. Louboutin immediately appealed to the Court of Appeals for the Second Circuit(Christian Louboutin SA v Yves Saint Laurent America, Inc, No 11-cv-2381-VM (SDNY August 12 2011) (Notice of Appeal)), and the proceedings in the Southern District of New York have been stayed pending resolution of the appeal (Christian Louboutin SA v Yves Saint Laurent America, Inc, No 11-cv- 2381-VM (SDNY August 19 2011) (order staying proceedings pending resolution of Louboutin’s appeal)).
The lower court’s decision to deny Louboutin’s motion hinged largely on the seldom used (see, eg, Au-Tomotive Gold, Inc v Volkswagen of Am, Inc, 457 F 3d 1062, 1064 (9th Cir 2006)) doctrine of aesthetic functionality. The court cited Supreme Court precedent establishing that:
“[c]olor alone ‘sometimes’ may be protectable as a trademark, ‘where that color has attained secondary meaning and therefore identifies and distinguishes a particular brand’ [but not] where it is ‘functional,’ meaning that color is essential to the use or purpose of the product, or affects the cost or quality of the product.”
Observing that “for Lanham Act purposes… in fashion markets color serves not solely to identify sponsorship or source, but… primarily to advance expressive, ornamental and aesthetic purposes”, the court identified “the narrow question presented” as of whether the statute governing federal trademark law “extends protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry”.
The judge’s analysis began with a lengthy analogy in which he compared the instant dispute among footwear’s couture giants to a “fanciful” hypothetical one between French Impressionist painter Claude Monet and Spanish Cubist painter and sculptor Pablo Picasso. If Picasso were to file a trademark registration for a shade of blue for use in depicting the colour of water in a canvas painting, Marrero posited, would Picasso be entitled to relief in a trademark infringement action against Monet for his use of that shade to depict water in his own paintings? In answering this hypothetical question, Marrero offered a number of parallels between the functions filled by the use of colour in high art and high fashion. He observed that:
- Both fields “find common ground and goals in… art and commerce”.
- “Both integrally depend on creativity”.
- “The items generated by both painters and fashion designers acquire commercial value as they gain recognition.”
The creative energies of painter and fashion designer are devoted to appeal to the same sense in the beholder and wearer: aesthetics. Both strive to please patrons and markets by creating objects that not only serve a commercial purpose, but also possess ornamental beauty (subjectively perceived and defined). Quintessentially, both painting and fashion embrace matters of taste. In consequence, they share vicissitudes natural to any matter of palate or palette. They change as seasons change.
Marrero found that the fields shared “a dependence on color as an indispensable medium” towards cultivating aesthetic appeal to the consumer. He identified colour as “a critical attribute of the goods” that “performs a creative function” in that “it aims to please or be useful, not to identify and advertise a commercial source”. Marrero found that “allowing one artist or designer to appropriate an entire shade… would unduly hinder not just commerce and competition, but art as well”. As to whether the use of a single colour was functional in the context of the fashion industry, the court found “significant, nontrademark functions for [Louboutin’s] choosing red for his outsoles”. The court quoted as evidence Louboutin’s own assertions that red soles “give his shoe styles energy” and that they are “engaging” and “sexy”. Marrero noted further that YSL’s use of the red monochromatic styles at issue “is part of the brand’s history, meaning that each of the challenged shoe models is entirely red”. “Color”, the court observed, “serves an additional significant nontrademark function: ‘to satisfy the noble instinct for giving the right touch of beauty to common and necessary things’”.
Having found that “[t]o attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal – all comprise nontrademark functions of color in fashion”, the court turned to the question of “whether granting trademark rights for Louboutin’s use of the color red as a brand would significantly hinder competition”. Finding “Louboutin’s claim to ‘the color red’” to be “overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act”, the court concluded that “Louboutin’s ownership claim to a red outsole would hinder competition not only in high fashion shoes, but potentially in the markets for other women’s wear articles as well”.
Louboutin’s claim would cast a red cloud over the whole industry, limiting what other designers could do while allowing Louboutin to paint with a full palette. Louboutin would thus be able to market a total outfit in his red, while other designers would not.
In view of “serious doubts” as to the validity of Louboutin’s red sole registration, the lower court found that Louboutin had not established a likelihood of success on the merits of its trademark and unfair competition claims, and thus denied its motion for preliminary injunction. Even more saliently, the lower court observed that the validity of Louboutin’s red sole registration “is the heart of this litigation”, and ordered that parties appear for a case management conference one week later at which Louboutin would be required to show cause why the red sole registration should not be cancelled outright.
Figure 2: YSL’s red suede “Palais” slingbacks (www.bluefly.com/Yves-Saint-Laurent-red-suede-Palais-105-platform-slingbacks/cat20022/315374401)
On August 12 2011, two days after the issuance of Marrero’s order denying Louboutin’s motion for a preliminary injunction, Louboutin filed a notice of its appeal to the Court of Appeals for the Second Circuit (Christian Louboutin SA v Yves Saint Laurent America, Inc, No 11-3303 (2d Cir August 26 2011) (Addendum B to Form C: Issues Proposed to Be Raised on Appeal)). The issues on appeal revolve around whether the district court erred in its findings and conclusions of law. The majority of the issues on appeal are to be reviewed de novo – that is, anew without consideration of the lower court’s determination.
If the Second Circuit affirms the district court’s decision, it is likely that Louboutin’s red sole registration will be cancelled. The lack of a trademark registration, coupled with the court’s negative findings, would be likely to prevent Louboutin from stopping others from using the colour red on the soles of women’s footwear. This may also limit the capacity of other designers and manufacturers to register or enforce rights in the use of single colours for footwear outsoles, and potentially restrict the range of available protection for the use of single colours in other elements of fashion design as well.
If the Second Circuit overturns the district court’s decision, it may have equally broad implications for the future of Louboutin and the fashion industry at large. Such a victory for Louboutin would serve to bolster and reinforce its enforcement of its red sole registration and would bar YSL and others from using the colour red on the soles of women’s footwear. More broadly, it would establish a favourable precedent for other designers seeking to register or enforce rights in the use of single colours in footwear and possibly other elements of fashion design.
Louboutin has filed a motion for expedited review and has proposed a schedule according to which the appeal may potentially be heard as early as December 2011 (Christian Louboutin SA v Yves Saint Laurent America, Inc, No 11-3303 (2d Cir September 7 2011) (Appellants’ Emergency Motion for Expedited Review and Proposed Scheduling Order)).
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