In the case of Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., the U.S. Court of Appeals for the Second Circuit announced yesterday, Wednesday, September 5, that it was partially reversing the District Court’s ruling against Louboutin and that the French shoe designer is entitled to trademark protection for its iconic red heel, except when the shoes are entirely red.
This legal battle between fashion powerhouses examined the question of whether or not Christian Louboutin’s red sole is in fact entitled to trademark protection. In April 2011, Louboutin, which has painted the soles of its women’s heels “China Red” since 1992, sought a preliminary injunction to prevent Yves Saint Laurent from selling a line of monochromatic women’s shoes with its heel also painted red. Though Louboutin filed a trademark application with the United States Patent and Trademark Office in 2008, Federal District Court Judge Victor Marrero in New York rejected Louboutin’s claim in August 2011. Marrero acknowledged that the Louboutin red sole had become a recognizable symbol of the brand, as many Hollywood actresses are photographed and filmed wearing the expensive shoes, but that the law prevents a single color from being trademarked. Marrero said that “because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection.”
Calling this conclusion into question, the Court of Appeals stated that the red soles had acquired “secondary meaning” under the Lanham Act as a recognizable symbol of the Louboutin brand. Judge Jose Cabranes, who wrote for a unanimous three-judge panel, explained in the court opinion that the red sole had the “requisite ‘distinctiveness’ to merit protection.” Judge Cabranes wrote that it was “the contrast between the sole and the upper that causes the sole to ‘pop’ and to distinguish its creator.”As such, Louboutin does, in fact, have the right to trademark its red soles, as long as the sole contrasts with the rest of the shoe. It partially reversed the lower court’s order and sent the case back to the district court for further proceedings. However, the appeals court is still allowing Yves Saint Laurent to sell its line of monochromatic shoes.
Both sides have declared victory. On the one hand, Harley I. Lewin, lawyer for Christian Louboutin, said that the company “considers this a significant win for Louboutin” and that he believes Louboutin may be able to return to court one day to win protection even in cases where the shoes are also red. On the other hand, David H. Bernstein, lawyer for Yves Saint Laurent, said that for them it’s “a complete victory,” as the luxury brand has been permitted to sell its line of red shoes.