Louboutin v. YSL (778 F.Supp. 2d 445)
Louboutin filed this action back in June for claims that YSL infringed on “The Red Sole Mark,” which was the trademark registered to them in 2008, for the use of the color red on the outsoles of their shoes. This opinion touches on an interesting question… is the use of a single color alone protectable by trademark under the Lanham Act? The Court held that it was unlikely that Louboutin would be able to prove their trademark was valid, and denied their preliminary motion for an injunction. The validity of the Red Sole Mark is potentially in jeopardy, as YSL’s counterclaim called for its cancellation.
The Louboutin brand has undoubtedly established a certain notoriety as well as a prevalent association with the use of a red outsole in the world of fashion. The Court narrows in on the question of whether or not color can be functional. A design is functional if “its ‘aesthetic value’ is able to confer a significant benefit that cannot practically be duplicated by the use of alternative designs” (Restatement (Third) on Unfair Competition). Furthermore, color serves a functional purpose if it is “essential to the use or purpose of the article or affects [its] cost or quality” (Qualitex Co. v. Jacobsen Products).
In order for a designer’s color trademark to be considered invalid, its purpose has to go beyond merely identifying the designer or its source. A color that serves a functional purpose gives way to unfair competition, inhibits artistic freedom and is strictly limited by law. Typically, such trademarks have existed in more industrial settings, where functionality is much easier to define. The color orange, for example, when placed on a construction worker’s jacket, or the blue of a dye that’s used in a science or medical lab to contrast certain things under a microscope. These colors are so functional to their products that if trademarked, their production would be monopolized. Applying these principles to fashion design, the Court provides us with a uniquely artistic discussion.
This type of case is difficult specifically because it questions the use of a single color. Other trademarks on color are typically those on color combinations or patterns involving several colors. For example, Burberry holds a valid trademark on their “check” pattern colors and Louis Vuitton of their monogram pattern.
In their discussion of Louboutin’s use of the color red, the Court employs an interesting hypothetical legal battle where Picasso sues Monet for using the same shade of blue that was the hallmark of his Blue Period to paint his water lilies. Fashion’s use of color is compared vigorously to high art, and it’s noted that artists should enjoy the freedom to pick from “every streak of the rainbow.” When you’re in the field of fashion design, the means to express your art are vital. Fashion designers are at the mercy of trend demands, and the use of a color could be vital to another designer. Fashion design is the commercial business of manufacturing ornamental beauty, in which the Court finds color to be essential to robust competition, thus functional.
“…color in turn elementally performs a creative function; it aims to please or to be useful, not to identify and advertise a commercial source.” (p.452)
Louboutin’s camp even said themselves that using the color gives his shoes “energy,” that red is “sexy,” flirty,” and “engaging,” and that it “attracts men to the women that wear [his] shoes.” Because of the serious doubts casts on the validity of the Red Sole Mark, the court denied Louboutin’s injunction, and set a hearing for the cancellation of the mark, which the rest of the claims would rely on.
As far as YSL’s case, it’s crucial to understand that the four models Louboutin called into question were actually monochromatic red. They were the solid red versions of shoes from his Cruise 2011 collection: the Tribute, Palais, Tributoo, and Woodstock heels. I have to say, I agree with the court that Louboutin stretched his boundaries a bit, and foolishly. Now his trademark is under the microscope, and I do think he has something valuable to protect. Also, it’s not really realistic to attack YSL for infringement. It’s not like people are buying YSL shoes because they look like Louboutins. I know if I were wearing YSL pumps, I’d be pretty psyched enough about that fact. And if I wanted to buy knockoff Louboutins I’m not going to spend the same amount at YSL, I’m going to check out Steve Madden or ALDO. Maybe it’s personal? After all, they used to share a label.
The Court deems the trademark to be far too broad, and unfairly registered without limitations. Louboutin tried to argue that he uses a specific “Chinese red,” and that his trademark only applies to high-heeled shoes. However, as the trademark stands to be read, it only applies to the use of “red” on the outsoles of “women’s footwear.” Since this wasn’t a hearing to amend their trademark language, these arguments failed. The case was decided in light of the language of the mark.
I think the court gave an amazingly poetic and thorough analysis to these claims, but for me there’s something missing in the discussion. I agree that it’s unfair to allow color trademarks in general, but there’s something to be said about Louboutin’s use of red as distinct from the color of the rest of the shoe. That’s what Louboutin is known for; gorgeous heels with a brightly contrasting and eye-catching red outsole, not red shoes. Allowing the injunction to succeed would certainly prevent YSL from selling any monochromatic red shoes, which also served a specific styling purpose. YSL claimed that these models were specifically coordinated to his Cruise 2011 clothing line.
I’d hate to see Louboutin lose his trademark, but I think the language needs to be amended. Maybe a cancellation would give Louboutin an opportunity to amend the language and try again. Or maybe I still have a lot to learn… Either way, there’s no doubt that Louboutin makes some incredible footwear, and that red sole gives him away every time.
Louboutin "Daffodile Brodee"
Don’t forget to listen to J.Lo’s song, Louboutins.
And check out this article on how YOU can turn any of your shoes into Louboutins.
*More to come on the International Law of this case.
UPDATE: Read a follow up to this case at Diamonds are a Louboutin’s Best Friend