Earlier this year shoe icon Christian Louboutin sued Yves St. Laurent (“YSL”). They were seeing red (pun intended) over the recent Yves St. Laurent 2011 Resort collection, which included red-soled shoes, the Louboutin signature brand detail. In 1992 Louboutin began using the red lacquer sole. In 2008, the red soles were registered as mark in the US Patent and Trademark Office, and on January 1, 2008, number 3, 361,597, the “red sole mark” came to life.
Louboutin filed a trademark action against YSL, which YSL prominently countered with a counter-suit seeking cancellation of the Louboutin trademark registration. Louboutin responded with a request for a preliminary injunction temporarily preventing YSL from selling the shoes until the dispute was settled. In August the court flatly denied Loboutin’s request. The Court stated, “Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief that it seeks.” However, “Color alone “ sometimes ” may be protectable as a trademark, “where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” Conversely, color may not be protectable where it is “functional,” meaning that the color is essential to the use or purpose of the product, or affects the cost or quality of the product.”
In short, the Court argued that clothes are inherently aesthetic, the addition of an aesthetic feature like the color is merely a function of the design and therefore not protectable as a trademark. I would imagine the same outcome had the designer claimed a specific cut of a dress or pant, or use of a specific material. A finding converse to this would open the flood-gates to claims that new designs or aesthetics are trademarks and preventing any others from their use. Taking this argument to an extreme, the “little black dress” is largely credited to Coco Chanel – if she had elected to trademark the aesthetics that make up this classic design, one would be hard pressed to recognize today’s fashion. While the red sole has become synonymous with Louboutin, with women paying $595- $1000 for a pair of these status symbol shoes, the ability to take an entire color off of the pallet of future designers would be far reaching and stifle the creativity contained in future catalogs and runways.
Thanks to Sara Harrison for her assistance with this post.