Louboutin Has the Fashion Industry Seeing Red

April 2, 2012

Christina M. Licursi, Douglas R. Wolf

(as published in The Weekly Consensus Newsletter)

In August of last year, a court in New York denied Christian Louboutin’s motion for a preliminary injunction, ruling that Louboutin, the French maker of luxury shoes coveted by fashionistas and donned by uncounted stars, will likely fail in its efforts to stop other shoemakers from making high-heeled shoes with red soles. The appeal was argued this past week.

Louboutin’s case, originally filed in April of last year, has garnered significant press and has the fashion industry on both sides of the catwalk. The court denied Louboutin’s request for an immediate injunction (without waiting for a trail), requesting to stop the sale of women’s shoes with red soles by Yves Saint Laurent. The judge questioned the validity of the trademark, saying, “Louboutin’s claim would cast a red cloud over the whole industry, cramping what other designers do, while allowing Louboutin to paint with a full palette.” The court continued, “Louboutin is unlikely to be able to prove its red outsole brand is entitled to trademark protection, even if [the red sole] has gained” substantial public as a brand.

The court took the position that Louboutin’s trademark was not entitled to protection because it is “functional” and “ornamental.” The court commented that the Trademark Office was “perhaps swayed in part by the widespread recognition the red sole had already attained” as the shoes became a favorite of famous clients, such as Oprah Winfrey and Scarlet Johansson.

Louboutin appealed the decision to the U.S. Second Circuit Court of Appeals and appears to be poised to fight this case to the end. Much is at stake for the designer, who has grown exponentially since 1992. Louboutin has achieved enormous success since the designer first began applying glossy vivid red to the outsoles of his fancy women’s shoes with red nail polish. Now, hovering at around $1,000 a pair, the shoes are a favorite of celebrities, causing the red outsole to become closely associated with the Louboutin name. Louboutin is projected to sell almost a quarter of a million of shoes in the U.S. this year.

On appeal, Louboutin emphasizes that it does not seek exclusive rights to the color red generally, but wants to protect a “particular color, in a particular place, on a particular item” (i.e. scarlet red in the bottom of high-heeled shoes). Louboutin is not arguing that designers cannot use the color red; they are arguing that competitors should not be able to use red on the soles because it could lead to consumer confusion.

Despite the lower court’s inclination that those in the fashion industry would endorse its opinion, some of the most prominent brand owners in the fashion industry have come out in support of Louboutin. The reality is that color has long been used by designers as a signature of sorts, such as brown-and-gold Louis Vuitton bags, Burberry plaid, the pink label of a Thomas Pink shirt, and the blue rubber labels on Keds sneakers. The Supreme Court has held that a color (even a single shade) can be a valid trademark “’where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” Notably, jewelry company Tiffany & Co., who has their blue box trademarked, filed an amicus curiae brief in support of Louboutin.

The case raises a myriad of interesting issues for designers and brand owners alike. Surely, designers should be able to exercise their creativity and not be distracted by potential lawsuits. On the other hand, brand owners should be able to protect and enforce their trademarks. The issues are not mutually exclusive.

The court’s position looked at the “fashion world” generally and seemed to adopt a strict rule that a “single color” can never constitute a protectable trademark when used on any “article of wear produced in the fashion industry.” The expectation is that the decision will be modified, if not reversed. The evidence is substantial that the mark has become recognized as a source identifier (brand), and to preclude any protection or require something more would change the understanding of brand protection today.