In recent years, Christian Louboutin has scored a hit with Hollywood and the “jet set” for his enigmatic shoes which have a “trademark” bright-red outsole or undersole (basically the not-so-visible bottom of the shoe which contacts the ground), and which typically sell for $600 or more a pair. In 2011, Louboutin and his companies (Louboutin) filed a legal action in the US courts for trademark infringement of its red-soled shoes against designer Yves Saint Laurent, Inc. and its holdings (YSL) as a defensive part of their IP management. Louboutin claimed that the YSL should be barred from selling the similar shoe design, and sought $1M in damages in the lawsuit as part of a protective IP strategy.
A request for a preliminary injunction was denied in April 2011 by U.S. District Judge Victor Marrero. Unimpressed with the Plaintiff’s claims, Judge Marrero in his decision created a hypothetical example in which Picasso attempts to prevent Monet from using the color blue in the Water Lilies series because the color had been Picasso’s hallmark during his Blue Period – accentuating the potential misuse of color appropriation in the name of IP rights to stifle competition (or creative expression) in the arts. While paintings are the domain of copyrights not trademarks, Judge Marrero’s point does resonate with the matter at hand regarding the fashion industry.
Likewise, in August 2011, Judge Marrero denied Louboutin’s request to stop YSL from selling women’s shoes with red soles. The judge brought the validity of Louboutin’s registered trademark into question, stating his impression that “Louboutin is unlikely to be able to prove 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” – a serious crimp in Louboutin’s IP strategy.
On appeal (read about the final decision here), the two sides presented their arguments regarding the district court ruling. A lawyer for Louboutin asserted to the appeals judges, “We don’t claim shades of red. We don’t claim anything but the mark as registered.”
In addition to the parties involved, jewelry company Tiffany & Co. (Tiffany), which has its robin-egg-blue box trademarked, has filed an amicus curiae brief in support of Louboutin’s appeal, while a group of law professors (LP) have filed an amicus curiae brief opposing the appeal. The following analysis brings some of the legal arguments raised in said briefs into perspective.
It has been held by the Supreme Court that a color can be a valid trademark “where the color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand.”
Tiffany argued that the District Court erred in failing to apply the above standard to a registered trademark, and in adopting a per se rule that a single color can never constitute a protectable trademark when used on any “article of wear produced in the fashion industry.” According to Tiffany, the District Court in effect concluded that use of a single color for fashion items is per se essential to the use and purpose of fashion, and thus, is functional as such. However, Tiffany argues that the proper analysis for functionality should have been to examine the particular context of the case, and find if the red-sole mark is essential to the use and purpose of Louboutin’s shoes.
The court noted that a color is deemed functional if it “is essential to the use or purpose of the product,” or if it “affects the cost or quality of the product.” Tiffany maintained that both prongs of the test cannot be satisfied. As for the second prong, Tiffany cited case law stating that a design feature affecting the cost or quality of an article is one which permits the article to be manufactured at a lower cost, or one which constitutes an improvement in the operation of the goods.
In contrast, the District Court held that the red-sole mark affects the cost of Louboutin’s shoe because adding the red lacquer finish to the shoe outsole makes the production more expensive. Tiffany argued that “this analysis turns the ‘affects the cost’ prong of the functionality test on its head.” Tiffany further claimed that if the use of a feature makes the product more expensive to produce, “this demonstrates that the feature is not a functional element that the competitors need in order to compete.” Tiffany even stated that the district judge admitted that his interpretation of the test was not in the spirit of how the ruling was initially envisioned.