Louboutin v. YSL: Can a Color Merit Trademark Protection?
With respect to Christian Louboutin’s famous red-soled shoes, the Second Circuit Court of Appeals says yes! Louboutin, known worldwide for its iconic shoes with red soles, has painted the soles of its women’s high heels a shade of red that it calls China Red since 1992. Last year Louboutin was denied a preliminary injunction against competitor Yves Saint Laurent (“YSL”) to prevent YSL from selling red-soled shoes. The YSL shoe at issue, the red Trib Too, is a monochromatic red shoe (comprising a completely red stiletto with a red sole). In denying the injunction, District Judge Victor Marrero had ruled that the trademark Louboutin had obtained for its lacquered red soles was overly broad and most likely not protectable, and concluding that the law did not allow for recognition of a trademark for the use of a single color for fashion items.
In a unanimous decision that both companies see as a victory, the Second Circuit did not agree with Judge Marrero’s trademark ruling. Judge Jose Cabranes characterized Louboutin’s red-soled shoes as having the requisite distinctiveness to merit trademark protection. The court held that “the contrast between the sole and the upper that causes the sole to ‘pop’ and distinguish its creator.” However, the court affirmed Judge Marrero’s denial of an injunction against YSL from making, using and selling “a red lacquered outsole as applied to a monochrome red shoe.” The decision draws a distinction based on the ‘pop’ of red. In effect, Louboutin may prevent any other designer from creating a shoe with a red sole, as long as the rest of the shoe is not red.
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