Designer Christian Louboutin got the idea for his iconic,
red-soled shoes when, believing that a pair of sky-high black pumps
"lacked energy," he applied red nail polish to the
bottom. The overall effect was considered such a success that the
shiny, red-lacquered sole became a permanent fixture of
Louboutin's footwear designs. Since then, Louboutin's
signature heels have been beloved by fashionable people the world
over. So much so, that the Louboutin brand is under constant attack
from fake and knock-off designs. In the last few years, the company
has served hundreds of Digital Millennium Copyright Act notices on
Google to remove sites selling fake goods from their search
results. It has also set up a separate website to protect the brand
by identifying hundreds of websites that sell fake luxury goods and
summarizing legal actions taken against the most egregious
counterfeiters.
This past summer, however, one particular entity was thrust into
the spotlight as the object of Louboutin's legal efforts. Yves
Saint Laurent America, Inc.—itself a designer of
much-coveted, high-end heels—was sued by Louboutin over a
pair of red-soled, red suede pumps, which Louboutin claimed were
virtually identical to its own, signature red-soled shoes. Yet,
Yves Saint Laurent claimed that it has been manufacturing red-soled
shoes like the pair at issue long before Christian Louboutin
popularized them. In any event, it argued, no fashion designer
should be permitted to monopolize any color.
In the end, U.S. District Judge Victor Marrero sided with Yves
Saint Laurent, rejecting Louboutin's request for a preliminary
injunction and holding that the Lanham Act does not permit
designers to corner the market on a color—even if that
color has gained enough public recognition to have acquired
secondary meaning. Much to Louboutin's dismay, Judge Marrero
distinguished the present case from earlier, similar cases in which
trademark registrations were upheld in colors and patterns
in fashion. In such cases, the colors and/or patterns were wholly
or partially intended to embed a uniquly identifiable mark in the
goods, whereas here, the red color is merely an "indispensable
medium" that is functional or aesthetically pleasing, rather
than an indicator of origin.
Judge Marrero even indicated a willingness to convert the record to
a partial summary judgment motion canceling the trademark.
Louboutin is now preparing its appeal.
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