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
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).
Louboutin Mark Has Undeniably Acquired Distinctiveness
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.
Red Sole May Well Be Aesthetically Functional, Particularly Under the Facts of
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.
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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