Trademark Law | Expert Legal Commentary
December 18, 2012
Louboutin v. Yves Saint Laurent: Second Circuit Upholds Trademark Protection for Red-Soled Shoes
Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.
Tom Zuber and Jeff Zuber of Zuber Lawler & Del Duca
The Second Circuit recently held that single-color marks could receive trademark protection. In Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., the Court found that Christian Louboutin’s signature red shoe sole was a “distinctive symbol” that had come to represent the brand and deserved trademark status. The Court’s holding reversed the district court, which would have barred single-color marks as a per se rule.
Since 1992, Christian Louboutin (“Louboutin”) has produced high-end footwear, which nearly always features a bright-red lacquered outsole. Louboutin applied for and received a trademark for the red sole in 2008.
In 2011, Yves Saint Laurent (“YSL”), the luxury fashion house, released a series of shoes in a “monochrome” theme utilizing various colors, including red. Upon learning of its competitor’s shoe line, Louboutin filed an action in district court, alleging numerous claims under the Lanham Act including infringement and trademark dilution. Louboutin also asked for a preliminary injunction preventing YSL from marketing the red monochrome shoes or any other shoe resembling Louboutin’s red sole.
The district court held against Louboutin, denying the injunction and holding that in the fashion industry, “single-color marks are inherently ‘functional’ and that any such registered trademark would likely be held invalid.” Functionality in trademark law serves as a defense to infringement claims by invalidating the trademark, and thus the district court thought that Louboutin would be unable to uphold the validity of its red sole mark.
The Second Circuit faced three main issues. First, was the district court correct in holding that single-color marks could never receive trademark protection? Second, if single-color marks could be trademarked, did the red sole mark merit protection? Third, if the red mark was protected, did YSL’s monochrome shoes infringe?
Court Finds No Per Se Rule Against Single-Color Marks
The Court first held that no per se rule barred single-color marks. In Qualitex Co. v. Jacobsen Products, the Supreme Court noted that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function” 514 U.S. 159, 166 (1995). The Second Circuit interpreted this to forbid “the implementation of a per se rule that would deny protection for the use of a single color as a trademark in a particular industrial context.”
In doing so, the Court addressed the district court’s concern that a single color could act as a trademark in the fashion industry. Trademark law generally forbids protection for “functional” elements, such as those that affect the use of an article or its cost or quality. It also forbids protection on elements that are essential to compete in a given market. The district court may have been afraid that colors as trademarks in the fashion industry might severely limit competition if only one company could make red shoes, for example, and thus held against protecting single-color marks. The Court, however, noted that functionality doctrine does not guarantee that designers will always have the “greatest range” of creativity, but “only the ability to fairly compete within a given market.”
Court Upholds Protection of the Red Sole Mark
With no per se rule in place to bar single color marks, the Court concluded that the red sole mark merited protection. To merit protection, a mark must show “distinctiveness” by proving that the mark is inherently distinctive or by showing the mark has acquired secondary meaning in the public eye. In examining a mark for secondary meaning, a court will ask whether “the public is moved in any degree to buy an article because of its source,” using such factors as (1) advertising expenditures; (2) consumer studies linking the mark to a source; (3) unsolicited media coverage; (4) sales success; (5) attempts to plagiarize the mark; and (6) length and exclusivity of the mark’s use.
The Court found extensive evidence in concluding that the red sole mark symbolized the Louboutin brand and distinguished it from its competitors. The Court noted Louboutin’s significant investment in the red sole mark, media coverage of the mark, and the public’s close association of the mark with the brand. The Court ultimately held that “the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand, and is therefore a distinctive symbol that qualifies for trademark protection.”
Narrowing of the Red Sole Mark Serves to Distinguish YSL’s All-Red Shoe
This specific holding narrowed Louboutin’s trademark to situations when the red sole is matched with a contrasting upper. The Court relied on evidence that the red sole mark’s ability to stand out from competitors depended on the color contrast between the red sole and a non-red upper of the shoe. Conversely, the Court determined that shoes employing the same red color on the sole and upper was not a use of the red sole mark. This conclusion led to the Court dismissing Louboutin’s trademark claims because YSL’s shoe was entirely red and thus not a use of the red sole mark.
The Court in Louboutin has demonstrated the Court’s reluctance to find industry-specific functionality doctrines and its willingness in this case to uphold an otherwise distinctive mark. Companies with design and branding concerns should contact experienced trademark counsel to see how Louboutin may affect your ability to protect your company’s intellectual property.
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