Louboutin v. Yves Saint Laurent (Battle over red sole shoes)

Citation: Christian Louboutin S.A.., v. Yves Saint Laurent Am. Holding, Inc., US 2^nd Circuit 11-3303-cv

Facts:

Red high-heeled shoes is the signature style (commonly known as “sammy red-bottoms”) that has been adopted by Christian Louboutin, a French upmarket footwear company since 1992.

In 2008, the red lacquered outsole was registered as a trademark with the United States Patent and Trade Office.

Louboutin filed a suit for trademark infringement against YSL in April 2011 for selling a shoe with a red sole.

The District Court for the Southern District of New York rejected the application for a preliminary injunction against YSL while holding that a single colour could not be protected under trademark.

An appeal was filed against the District Court decision.

The final judgement was delivered in September 2012.

Judgement:

The question presented before the Court was whether a single colour can serve as a legally protected trademark in the fashion industry.

The Court referred to the Qualitex judgement in which while granting the green-gold colour of a dry cleaning press pad, it was held that the colour could not be objected to under the “functionality doctrine.” It was also held that colour could meet the basic legal requirements for use as a trademark and a symbol that distinguishes a firm’s goods and identifies their source.

The Court went on to observe that aspects of a product that are functional cannot serve as a trademark. Functionality can be of 2 kinds; utilitarian and aesthetic. A product feature is functional in the utilitarian sense if it is essential to the purpose of the article or if it affects the cost or quality of the article. On the other hand, where “aesthetic functionality” is the central question, courts must enquire as to whether recognizing the trademark would put competitors at a significant non-reputation related disadvantage.

It was determined that no rule per se governs the protection of single colour marks in the fashion industry, any more than it can do so in any other industry.

It was further observed that the red sole mark as it currently stands was ineligible for protection insofar as it would preclude competitor’s use of red soles in all situations, it can be concluded that the mark has acquired a secondary meaning and thus the requisite “distinctiveness” to merit protection.

During the suit, Tiffany & Co., which has obtained trademark protection for its blue box, filed an amicus curiae brief on trademarking a colour.

It was held that Louboutin has trademark rights over red-soled shoes but not monochromatic red shoes.

Further, Louboutin has rights only with respect to shoes which have a contrasting upper colour with the red soles.

Louboutin’s registration was amended accordingly.

Held that YSL’s use of the monochromatic red shoes does not infringe on the mark as modified.