Katherine A. Compton 2012-12-26 02:21:45
Christian Louboutin has captured the soul of women’s shoes — a glossy, red sole, to be exact. For years, celebrities from Angelina Jolie to Beyoncé have donned Louboutin’s high heels with the signature red-lacquered sole at more than $3,000 a pair. More than a pricey fashion statement, the red-soled shoes became the subject of a fierce legal battle, and in 2012, a landmark trademark decision. The courts had to decide whether color in the fashion industry could be subject to trademark protection. Christian Louboutin began painting the “outsoles” of women’s high heel shoes as early as 1992. In 2008, Louboutin obtained a trademark specifically on his red outsoles. In January 2011, Louboutin learned that Yves Saint Laurent was selling a line of “monochrome” (one color) women’s shoes, which included red pumps with red soles. Louboutin believed the YSL shoes were confusingly similar to Louboutin’s trademarked red outsoles. In April 2011, Louboutin sued YSL for trademark infringement in the U. S. District Court for the Southern District of New York, and sought a preliminary injunction against YSL to prevent the use of its monochrome red shoes during the pendency of the lawsuit. Yves Saint Laurent brought a counterclaim to invalidate Louboutin’s trademark, among other counterclaims. Christian Louboutin S.A., et al. v. Yves Saint Laurent, Am. Inc., et al., Case No. 1:11-cv-02381, U. S. District Court for the Southern District of New York (Manhattan). The district court not only denied Louboutin’s preliminary injunction against YSL, but clearly indicated in its ruling that if YSL filed summary judgment on its counterclaim to invalidate Louboutin’s trademark, it would be granted. The court specifically held that a single color can never be protected by trademark in the fashion industry and thus Louboutin’s trademark was likely not enforceable. Christian Louboutin S.A., et al. v. Yves Saint Laurent, Am., Inc., et al. 778 F. Supp. 2d 445, 457 (S.D.N.Y. 2011). In the district court’s order, Judge Marrero stated: Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds 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 therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief that it seeks. In essence, the district court held that Louboutin’s red outsole is aesthetic and does not act as a source identifier and likely cannot be the subject of a trademark. The lower court determined that color could be a trademark if it “acts as a symbol that distinguishes a firm’s goods and identifies their source without serving any other significant function.” The example given by the court was a pill manufactured in a certain color to avoid confusion with other medications. But the lower court ignored the fact that luxury shoppers identify a certain color with a particular luxury brand. For example, Tiffany & Co. is well known for its “robinsegg blue” gift boxes. Hermès has its distinctive orange packaging. Louboutin’s lead counsel, Harley Lewin, recognized that the lower court’s ruling put Louboutin’s entire brand at stake. Lewin, a shareholder at McCarter & English, immediately filed an interlocutory appeal to the Second Circuit in Louboutin S.A. et. al. v. Yves Saint Laurent America Holding Inc., et. al. 11-3303-cv (Sept. 5, 2012). The lower court’s ruling caught the attention of the fashion industry and legal professionals alike. Tiffany & Co. and the International Trademark Association filed amicas curaie briefs in support of Louboutin’s position. A group of law professors filed an amicas curaie brief in support of YSL. On Sept. 5, 2012, Louboutin and the fashion industry took a collective sigh of relief. The appellate court reversed the lower court’s decision to the extent it held that color, and in this case, Louboutin’s red outsole, could not serve as a trademark in the fashion industry. The appellate court held that Louboutin’s trademark on its red outsole was enforceable when the red outsole contrasts with the color of the remainder of the shoe. Because Louboutin only sought to enjoin YSL from use of a red sole as part of a monochrome (all one color) red shoe, the appellate court affirmed, in part, the lower court’s decision, to the extent it declined to enjoin the use of red outsoles against YSL on its monochrome red shoes. The appellate court held that district court Judge Victor Marrero’s decision that a single color can never be protected by trademark in the fashion industry was inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), which held it could not find “any obvious theoretical objection to the use of color alone as a trademark, where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” Id. at 162. Therefore, the appellate court held that the district court erred in denying Louboutin’s preliminary injunction on improper grounds. Christian Louboutin S.A. v. Yves Saint Laurent America Holdings Inc., --- F.3d ----, 2012 WL 3832285, (C. A. 2 (N.Y.) 2012). The appellate court determined that Louboutin’s red outsole had acquired a secondary meaning in the marketplace. The appellate court held: “Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, has acquired limited ‘secondary meaning’ as a distinctive symbol that identifies the Louboutin brand.” Id. at *1. The appellate court did not reach whether YSL’s use of the red outsole caused consumer confusion, or whether the Louboutin mark, as modified is functional, because the monochrome design used by YSL is not a use conflicting with Louboutin’s mark, as modified by the appellate court. On Oct. 12, 2012, YSL dismissed their counterclaims against Louboutin. KATHERINE A. COMPTON has practiced law for more than 25 years. She handles all types of complex commercial litigation, with an emphasis on franchise, trade secret, trademark infringement, and banking litigation. Compton recently joined the Law Offices of Marc H. Richman in Dallas.
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