Christian Louboutin Sarl won trademark protection for its women’s shoes with red soles and different colored tops while an appeals court also ruled the company can’t trademark a design that is simply all red.
Louboutin had sought a preliminary injunction that would have prevented Yves Saint Laurent America Inc. from selling all- red shoes that Louboutin claimed were identical to some of its own. U.S. District Judge Victor Marrero in August 2011 rejected Louboutin’s bid for an injunction and indicated it would probably lose the trademark case against Yves Saint Laurent.
The U.S. Appeals Court in Manhattan ruled today that Louboutin’s red sole is entitled to limited trademark protection, extending only to a red lacquered outer sole that contrasts with the color of the rest of the shoe and not to shoes that are monochromatically red. The judges affirmed the lower court’s denial of the injunction against Yves Saint Laurent and sent the case back to the trial judge.
“The district court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality,” U.S. Circuit Judge Jose Cabranes wrote in today’s decision. “We conclude that the trademark, as thus modified, is entitled to trademark protection.”
Cabranes also said that Yves Saint Laurent’s use of a red outer sole on monochromatic red shoes “does not infringe” on Louboutin’s trademark. Granting Louboutin broad rights for the color red would harm competition, he said.
“We are happy to have achieved a victory in defending against Louboutin’s lawsuit,” David Bernstein, a lawyer for Debevoise & Plimpton LLP who represents Yves Saint Laurent, said in an e-mail. “YSL will continue to produce monochromatic shoes with red outsoles, as it has done since the 1970s.”
Bernstein said in a telephone interview that the district court will now consider Yves Saint Laurent’s claim that Louboutin interfered with its business when it contacted shoe vendors and ordered them to return the red shoes to Yves Saint Laurent. “A lot of them did return them and refuse to sell them,” he said.
Yves Saint Laurent, the company named for the designer who died in 2008, began selling shoes with red outsoles “long before Mr. Louboutin began using them,” Bernstein told Marrero at a district court hearing in July. He told the appeals court that the designer’s monochromatic shoe is “the DNA of the brand.”
Marrero had put off deciding whether to cancel Louboutin’s trademark for the red sole until the appeals court ruled.
“We are pleased that our central premise, that color on the red sole, can be a trademark,” Harley Lewin, a lawyer representing Louboutin at McCarter & English LLP, said in an e-mail. “We consider this a significant win, not only for Louboutin, but for the fashion industry in general.” He said he would “carefully study” the part of the ruling referring to monochromatic shoes.
Louboutin, a Paris-based fashion company, claimed in its lawsuit filed in April 2011 that Yves Saint Laurent’s red-soled shoes “threaten to mislead the public.”
Christian Louboutin, the designer for whom the company is named, said he got the idea for the red soles when he painted red nail polish on the black soles of a pair of women’s shoes.
Louboutin’s red soles were introduced in 1992 and have been on all of its luxury shoes since then, according to court papers. They have been popularized by people including Sarah Jessica Parker, the star of the TV show “Sex and the City.”
On the website of high-fashion department store Barneys New York Inc., Louboutin’s red-soled high-heeled shoes are priced from $625 to $3,995 a pair. In court papers Louboutin projected U.S. retail sales of shoes for 2011 at $135 million.
The U.S. Patent and Trademark Office awarded Louboutin a trademark for the red sole in 2008, according to court filings.
Yves Saint Laurent is a unit of Paris-based PPR, which owns luxury brands including Gucci. PPR rose 95 cents to 125.70 euros in Paris trading. Louboutin’s shares don’t trade publicly.
The appeal is Christian Louboutin SA v. Yves Saint Laurent America Inc. (PP), 11-3303, U.S. Court of Appeals for the Second Circuit (Manhattan). The lower-court case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 1:11-cv-02381, U.S. District Court, Southern District of New York (Manhattan).