A federal judge has refused to grant a preliminary injunction stopping Yves Saint Laurent from selling shoes with a red sole that rival design house Christian Louboutin claims infringe on its trademark.Saying he did not believe that a designer could trademark a color, Southern District Judge Victor Marrero in Christian Louboutin SA v. Yves Saint Laurent America Inc., 11-cv-2381, yesterday ruled that Louboutin is unlikely to prevail in its claims against YSL, and, further, that if YSL moved for summary judgment that Louboutin's trademark is invalid, he would grant it.
Louboutin sued YSL in April, alleging that several of its rival's shoes infringed Louboutin's 2008 trademark on women's shoes with a red outsole, in violation of the Lanham Act. Louboutin has identified its particular shade as "Chinese red," but argued that any confusingly similar shade would infringe the trademark. YSL's allegedly infringing shoes are monochrome, entirely red, including their outsoles.
In denying the motion, Judge Marrero said that a color, being an essential element of fashion design, could not be trademarked, even though the red outsole was strongly associated with Louboutin shoes in the public mind.
"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, even if it has gained enough public recognition in the market to have acquired secondary meaning," he said.
The judge acknowledged that courts had recognized the use of color in trademarks in the fashion industry before, but only in patterns with multiple designs to create a unique mark, like the Louis Vuitton logo or Burberry plaid. He also noted that courts had recognized trademarks covering single colors, but only for industrial products, which would be identical if manufacturers did not use color to distinguish their products.
That use of trademarks, he said, is not applicable to fashion.
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Louboutin sued YSL in April, alleging that several of its rival's shoes infringed Louboutin's 2008 trademark on women's shoes with a red outsole, in violation of the Lanham Act. Louboutin has identified its particular shade as "Chinese red," but argued that any confusingly similar shade would infringe the trademark. YSL's allegedly infringing shoes are monochrome, entirely red, including their outsoles.
In denying the motion, Judge Marrero said that a color, being an essential element of fashion design, could not be trademarked, even though the red outsole was strongly associated with Louboutin shoes in the public mind.
"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, even if it has gained enough public recognition in the market to have acquired secondary meaning," he said.
Reuters/Carlo Allegri
Red soles have been the trademark of Christian Louboutin's shoes since 1992.
That use of trademarks, he said, is not applicable to fashion.
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