Order may reduce scope of trademark protection afforded to fashion industry

United States of America
In Christian Louboutin SA v Yves Saint Laurent America Inc (No 11 Civ 2381 (VM) SDNY, August 11 2011), the US District Court for the Southern District of New York has denied a motion for a preliminary injunction filed by plaintiffs Christian Louboutin SA, Christian Louboutin LLC and Christian Louboutin individually (collectively Louboutin) against a collection of defendants associated with the fashion house Yves Saint Laurent (collectively YSL), holding that Louboutin’s trademark registration for “a lacquered red sole on footwear” (Registration  3,361,597, issued January 1 2008) was not entitled to protection under the Lanham Act

The court’s reasoning in support of its order, if widely accepted, may substantially limit the ability of brand owners to obtain trademark protection over simple design elements, such as a single colour, which serve an aesthetic as well as a source identifying function.

Around 1992 Christian Louboutin, a fashion designer, began colouring the outsoles of his designer high heels a vivid, lacquered red colour. The lacquered soles proved to be a hit, becoming closely associated with the Christian Louboutin brand and eventually earning Louboutin approximately $135 million in projected revenue for 2011. This success eventually led to imitators, including, as alleged by Louboutin, YSL, which produced four shoes in its Cruise 2011 collection bearing a red outsole as part of their designs. 

After negotiations between YSL and Louboutin over YSL’s four red-soled designs failed, Louboutin filed suit in the Southern District of New York, asserting seven causes of action, including trademark infringement, false designation of origin and unfair competition, trademark dilution and related state law claims. Louboutin then moved for a preliminary injunction barring YSL from marketing any shoes that use the same or confusingly similar shade of red as protected by Louboutin’s registration. 

Courts have previously granted trademark protection to a single colour. The Federal Circuit has held that a particular pink colour for fiberglass insulation was entitled to protection (In re Owens-Corning Fiberglas Corp (774 F2d 1116, 123 (Fed Cir 1985))) and, most famously, the Supreme Court granted protection to a special shade of green-gold on dry cleaning pads (Qualitex Co v Jacobson Products Co (514 US 159 (1995))). That Supreme Court decision also made it clear, however, that trademark law may not be used to extend monopoly protection over colour as a functional element of a product. 

As suggested by the Supreme Court in Qualitex, the Louboutin court held that, because the lacquered red colour was chosen largely for aesthetic appeal, and aesthetic appeal may constitute a functional element in certain contexts such as the fashion industry, Louboutin’s use of colour alone on high-fashion shoes was a functional element that was not entitled to protection. In the court’s opinion, that distinguished high-heeled shoes from more industrial products, such as fiberglass or dry cleaning pads, where stylistic goals play a much smaller role in the product colour. 

The court was also influenced by the potential breadth of Louboutin’s claim. Though Louboutin’s motion papers identified the colour as Pantone 18-1663 TP, or 'Chinese red', the registration identifies the colour only as 'red' and the motion papers could not read in a limitation that does not appear on the face of the registration. Furthermore, Louboutin conceded that the same shade of red may appear lighter or darker depending on the material or medium it was applied to and, despite the fact that YSL’s accused shoes used a different shade than Pantone 18-1663 TP, Louboutin still claimed infringement because the chosen shade was confusingly similar to 'Chinese red'. This helped convince the court that recognition of a trademark over colour alone in this broad context “would unduly hinder not just commerce and competition, but art as well”. 

The court then ruled that Louboutin could not establish a likelihood of success on the merits of its trademark infringement and unfair competition claims, and therefore was not entitled to a preliminary injunction under the traditional test. Having determined that Louboutin could not demonstrate a likelihood that its lacquered red outsole merited protection, the court summarily denied preliminary injunctive relief on Louboutin’s remaining claims, none of which could succeed absent a protectable mark. Additionally, while YSL had asserted a counterclaim for cancellation of Louboutin’s registration, the court determined that this summary judgment on this point was premature, albeit likely to be granted in favour of YSL at the appropriate time.

Overall, this court’s order may reduce the scope of trademark protection afforded to the fashion industry, at least in the Southern District of New York. Based on the court’s interpretation of the functionality doctrine in Qualitex, combined with the potential undue burden on artistic expression, colour alone may not be entitled to protection where it serves a significant and unique aesthetic goal, even where that unique aesthetic makes that colour a distinct source-identifying feature. 

Howard J Shire and Eric Carnevale, Kenyon & Kenyon LLP, New York

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