Seeing Red: Christian Louboutin v. Yves Saint Laurent
In April of 2011, French shoe designer Christian Louboutin filed suit against fashion house Yves Saint Laurent (YSL) for trademark infringement and requested an injunction against the fashion house. Louboutin alleged that YSL’s Cruise 2011 Collection included four models of shoes with red soles, a trademark that Louboutin attained back in 2008. Fellow IP Brief Blogger Caroline Goussé previously blogged about the case when it first gained attention in both the fashion and legal world. Last month, a U.S. District court judge ruled in favor of the defendant and denied the injunction.
For those fashion illiterate out there, here is a quick overview of the two parties. Christian Louboutin, a Parisian-born shoemaker, is famous for his red lacquered soled shoes. Louboutin does not advertise or market his shoes; they are best promoted on the red carpet. Louboutin’s shoes, which can sell for more than $1,000 a pair, are wardrobe staples for the fashion elite and are coveted by the fashion hungry. The red soles became so synonymous with the Louboutin name that in 2008 Louboutin was awarded a registered trademark for the “lacquered red soles” by the U.S. Patent and Trademark Office. Yves Saint Laurent is another French fashion house that is well-known for its men’s and women’s ready-to-wear lines as well as its accessories, including leather goods and shoes. YSL debuted its Cruise 2011 Collection which included four models of high-heeled pumps that featured red soles. A short time after the collection showed at Fashion Week, Louboutin moved to enjoin YSL from selling the red-soled models.
Last month, U.S. District Court Judge Victor Marrero denied Louboutin’s request to stop YSL from producing and selling the infringing models. Judge Marrero stated that while Louboutin owned the trademark, the request to block all merchandise based on a color was far-reaching. The judge explained that “Louboutin’s claim to ‘the color red’ is, without some limitation, overly broad and inconsistent with the scene of trademark registration.” Judge Marrero wrote that color “serves ornamental and aesthetic functions vital to robust competition.” He went on to add that fashion designers are members of a creative industry and should not be prohibited from using the color red on the soles of shoes if they wish.
Judge Marrero’s decision seems to be in contradiction with the ability of a designer to trademark a color. Why award a trademark if it won’t be honored and protected in the courtroom? This judgment does not bode well for the fashion industry, which is in a constant struggle to protect itself against counterfeiters and knock-offs. Since YSL and Louboutin target the same customers and are both sold in high-end retail stores, like Barney’s and Bergdorf Goodman, there is a significant concern that a customer will mistake a pair of YSL shoes for a pair of Louboutin shoes and “customer confusion” plays a key role in trademark infringement cases.
The fashion world is in a frenzy about the judgment and is urging Louboutin to appeal the case. Only time will tell what will happen, but for now those red-soled shoes you see walking down the street might not be Christian Louboutins.
Seeing Red: Christian Louboutin v. Yves Saint Laurent: Celebrity shoe designer Christian Louboutin was… http://t.co/WlXVcOI #IP
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[...] Yves Saint Laurent is another French fashion house that is well-known for its men’s and women’s ready-to-wear lines as well as its accessories, including leather goods and shoes. YSL debuted its Cruise 2011 Collection which included four models of high-heeled pumps that featured red soles. A short time after the collection showed at Fashion Week, Louboutin moved to enjoin YSL from selling the red-soled models. [ipbrief] [...]
Seeing Red: Christian Louboutin v. Yves Saint Laurent http://ow.ly/6p2bR #ip #trademark
[...] shoe store, Minaj headed to Versace where her Young Money associate Drake was manning the …Seeing Red: Christian Louboutin v. Yves Saint LaurentAmerican University Intellectual Property Briefall 15 news [...]
The judge made a good decision in this case. While I understand the need for trademark protection; in this case red colored soles have existed throughout history long before Louboutin decided to use the color. Just because he was awarded a trademark does not mean that the USPTO was correct in giving it to him. Hence the reason for the lawsuit and the ruling by the judge. If Louboutin had trademarked something unique he would have had a case.
I agree that a trademark probably should not have been issued because the terms of the registration were too broad. However, I think Louboutin deserved to prevail in this suit, but it did not couch its arguments properly. The better argument is that it doesn't own a trademark in red soles of shoes, but that it owns either a trademark in red soled-shoes when the rest of the shoe is not red (YSL's product that served as the basis of the suit were shoes that were all red, including the sole) or trade dress. The judge in the case somehow found that red soles are "functional" and thus could not serve as the basis of the trademark–I don't agree that they are "functional" within the meaning of the Lanham Act because soles can be any color and serve the same functional purpose, while Louboutin made the specific creative choice to use red soles on shoes that are colors other than that same shade of red. I think the strongest argument is the trade dress (rather than trademark) argument, which, like trademark, does not require formal registration; it has the same functionality requirement (again, I believe the judge erred in finding functionality here); it has a "distinctiveness" requirement, which I believe Louboutin has achieved because consumers associate the soles with the brand.
[...] to Missoni’s designs. And while they’re at it, they can go ahead and design some red-soled shoes to go along with [...]
There are similar issues in the UK case of BP v Kelly . In the high court BP lost , but this was overturned on appeal.
I think rich traders set a very bad example. If they think a trade mark is invalidly registered they should challenge it before going ahead and using. What will YSL do next – use floral designs very close to Louis Vuiton's registrations?
I think YSL will regret their behaviour in the long run.
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