Tripping on the Red Carpet? Color Trademarks and the Fashion Industry in Loubotin v. Yves Saint Laurent

Tripping on the Red Carpet? Color Trademarks and the Fashion Industry in Loubotin v. Yves Saint Laurent

Christian Louboutin's gravity-defying high-heeled shoes are beloved by glamorous female celebrities. Their shiny red lacquered soles are well-known to casual celebrity-watchers and followers of fashion. The controversy began when Yves Saint Laurent started selling shoes that were entirely one color. Louboutin sued YSL in the Southern District of New York for trademark infringement, false designation of origin and dilution. In this Analysis, Anne Gilson LaLonde discusses color trademarks and Loubotin v. Yves Saint Laurent. She writes:

Louboutin sued YSL in the Southern District of New York for trademark infringement, false designation of origin and dilution. YSL counterclaimed for cancellation of Louboutin's U.S. trademark registration on the ground that it was nondistinctive, ornamental, and functional.

     Louboutin moved for a preliminary injunction. In a flowery opinion, the court not only refused to issue an injunction, but also stated its intention to grant partial summary judgment for YSL on its counterclaim to cancel Louboutin's registration once such a motion was made. Christian Louboutin, S.A. v. Yves Saint Laurent Am., Inc., 2011 U.S. Dist. LEXIS 90200 (S.D.N.Y. 2011) [enhanced version available to lexis.com subscribers]. Louboutin has appealed the denial of injunctive relief to the Second Circuit. Christian Louboutin, S.A. v. Yves Saint Laurent Am., Inc., 11-CV-3303 (appeal filed Aug. 15, 2011).

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The Louboutin Mark Has Undeniably Acquired Distinctiveness

     The Louboutin opinion emphasizes that the red on the shoe sole is source-identifying. At the start of its opinion, the court evokes a red carpet scene where "heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on high-heeled black shoes . . . . For those in the know, cognitive bulbs instantly flash to associate: 'Louboutin.'" The red color plainly meets the source identification requirement, and it is arguably famous as well.

The Louboutin Red Sole May Well Be Aesthetically Functional, Particularly Under the Facts of this Case

     Because the red sole has such strong source identification, it is particularly difficult to accept the possibility that it might not be a protectable trademark. In this case, however, there is a plausible argument to be made that protecting the Louboutin mark would mean stopping others from using a product feature that is necessary to compete in the marketplace.

     On the subject of functionality, the district court noted that Louboutin said he chose the color red because it was "engaging," "flirtatious," "memorable" and "sexy" and gave his shoes "energy." The court saw these statements as admissions that the color red is functional.

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