French shoemaker Christian Louboutin has been locked in a battle with French designer powerhouse Yves Saint Laurent for over a year over Louboutin’s iconic red-sole designer shoes. Louboutin has been painting the shoes of its pricey heels “China Red” for twenty years. According to the legend a bottle of red nail polish was accidentally knocked over in Louboutin’s fashion house and it spilled onto the black sole of a Louboutin shoe. The designer loved the color juxtaposition so much that from then on he has been painting the soles of all his shoes red. As a result, Louboutin shoes are recognizable from miles away. Louboutin was awarded a trademark by the U.S. Patent and Trademark Office four years ago. The shoes retail for anywhere from $600 to $4,000. Projected U.S. sales in 2011 alone were $135 million.
Yves Saint Laurent subsequently sought to introduce a “monochrome” line of women’s designer shoes that would have the same color throughout the shoe-soles and all. Louboutin then sued to prevent Yves Saint Laurent from carrying through on its plans, claiming that its red sole shoes are protected by trademark. Last summer, a federal judge in New York rejected Louboutin’s request for a preliminary injunction, noting that the designer would probably lose its trademark claim against Yves Saint Laurent. Louboutin then appealed. Christian Louboutin SA v. Yves Saint Laurent America Inc., (PP), 11-3303 (2d Cir. 2012)
Recently, the Second Circuit decided that in fact Louboutin is entitled to limited trademark protection for its red sole shoes. Specifically, Louboutin is entitled to a trademark protection for its red soles except when the shoe itself is also red. In other words, for Louboutin to receive trademark protection, the red soles have to contrast with the color on the rest of the shoe. The Second Circuit partially reversed the lower court’s order and sent the case back to the lower court for further proceedings.
The appellate court noted that the district court had an “incorrect understanding of the doctrine of aesthetic functionality”.
Yves Saint Laurent had contended before the lower court that the designer had been selling shoes with red outer soles long before Louboutin started using them. It contended that the monochromatic shoe was the “DNA of the [YSL] brand.”
Louboutin contended that Yves Saint Laurent’s competing red sole shoes would mislead the public.
Round one went to YSL and round two went to Louboutin. It will be interesting to see what happens when the case returns to the lower court. Stay tuned…