Just three weeks ago, after seven long months, the US Court of Appeals has finally rendered its decision in the case of the Red-Lacquered Sole.
In case you haven’t been following, last year the high-end footwear designer, Christian Louboutin filed a claim against Yves Saint Laurent for infringing a registered trademark, after they manufactured monochromatic shoes that incorporated a red lacquered sole, which has been the signature mark of the Louboutin brand for the last 20 years. The District Court that heard the case attempted to tackle the question of whether a single color can serve as a trademark in the fashion industry and went so far as to implement a per se rule, that all such marks are invalid and thus not protected by trademark law.
Louboutin, having his “Red Sole Mark” registered with the USPTO for the last four years, filed to appeal the decision that would deem it invalid, and the appeal was held back in January. After months of waiting, the Appellate Court finally came down with their decision on September 5th, (I’ve been busy) and I think both sides have walked away with a win.
The Court found that the district court erred in interpreting the doctrine of aesthetic functionality by implementing a per se rule, and found that it would be inconsistent with the 1995 Qualitex Co. v. Jacobsen Products Co., (514 U.S. 159) decision, to deny a single color mark protection if it met the requirements for a valid mark set out under the Lanham Act. The debate comes down to whether granting trademark protection to a single color monopolizes a design element that inhibits competition in the marketplace, which is based on the theory that color has what’s called “aesthetic functionality”. But the Court reasoned that, ”distinctive and arbitrary arrangements of predominantly ornamental features that do not hinder potential competitors from entering the same market with differently dressed versions of the product are non-functional, and [are] hence eligible for [trademark protection].”‘ Fabrication Enters., Inc., 64 F.3d at 59.
With this in mind, the Court dove into the necessary factual analysis to determine whether the Red Sole Mark has acquired “secondary meaning” and warrants the protection Louboutin has been fighting for. The secondary meaning of a trademark is present when the mark identifies the source without performing any other significant function. The evidence offered in the case included records of advertising expenditures, media coverage and sales success over the last 20 years. After review, the Court found that Louboutin had in fact established a “limited secondary meaning,” meaning that through the company’s longstanding effort and success, they have established a worldwide association with the color red on the sole of a shoe, when in contrast with the upper sole, which does not extend to instances when it is the same color as the rest of the shoe. The Court found, as I previously expected it should, that it’s the “pop” of contrasting color in the design that consumers have come to recognize as the Louboutin signature. In fact the opinion references a study done in which consumers did not associate a monochromatic red shoe with Louboutin as often as they associated a contrasting-color design.
This factual finding is the basis for the new limitation on the very valid Louboutin “Red Sole Mark” and as such, the Court further held that YSL’s monochromatic red shoes did not fit the description of a “red lacquered outsole that contrasts with the color of the adjoining upper“, thus there was no need to analyze whether infringement occurred, and the injunction was thrown out.
So in the end, the Louboutin got to keep their trademark and YSL was free to make their monochromatic ruby slippers. Hopefully the decision will keep both sides happy in the years to come, and offer Louboutin more concrete protection against the more suspect infringers that produce cheap imitation Louboutins.