Thursday, September 6, 2012

Your Red Soles Are Safe: Christian Louboutin v. YSL

We have an update in the world of Christian Louboutin v. YSL.  You'll remember that Christian Louboutin sued Yves St. Laurent over its red soles trademark.  YSL was selling a series of shoes that were all one color, including the soles.  There was a red pair that had red soles and formed the basis of the lawsuit.  (There were also purple, green, and yellow pairs.)  I talked about the Complaint here, and the Order here

The summary goes like this:  Louboutin filed a motion for a preliminary injunction, which would prevent Yves Saint Laurent from selling any shoes with red soles until the lawsuit is finished.  To win on this motion, they had to prove "likelihood of success on the merits," which in layman's speech means "do you have a shot at winning this thing?"  The District Court Judge thought not.  He was not wild about color as a trademark, and essentially felt that red soles are ornamental and aesthetic, and thus not protectable by trademark.  As a result, he denied Louboutin's motion, believing that they would not be able to prove success on the merits of the claim. 

No shock, Louboutin appealed.  Now the Second Circuit has ruled  Here is the full opinion, if you are so inclined.  They ruled that a single color can be used as a trademark in the fashion industry.  This is a huge -- and I believe correct --  decision.  There is no reason why color as a trademark should be treated differently in the fashion industry than in any other industry.  Also, this:

We further conclude that Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. 
Absolutely correct.  Sometimes the courts do get it right.

However, it doesn't mean that Louboutin is a big winner.  The Second Circuit also held that because Louboutin's trademark covers only a red sole that contrasts with the shoe's body, YSL can keep selling its entirely red shoes.  (Remember what I said about the Louboutin trademarks being surprisingly weak?  Yeah, here's where it comes back to bite them.) 

So, both sides are claiming victory, and you can likely expect to see a settlement very soon.


  1. I, too, think that an appeal on the decision was the right move on Louboutin’s part. After all, the trademark they were fighting to keep was not the color, since color is universal and can be applied to anything by anyone in any shade or hue. They were fighting to trademark the IDEA of red soles. The idea of red soles being linked immediately to a pair of Louboutins is what they wanted, and I’m glad they got it in the end.

    Cade Culpepper