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In May, high-end French footwear designer Christian Louboutin
suffered yet another loss in its ongoing legal battle over its
iconic red-soled shoes. On May 30, 2012, the Cour de
Cassation—the highest French court of
appeals—determined there was no risk of consumer
confusion between a red peep-toe platform heel with red soles sold
by Spanish fashion retailer Zara and Louboutin's own "Yo
Yo" design, a nude peep-toe platform heel with his signature
red soles. In denying Louboutin's claims, the court found
Louboutin's French trademark specifications (the description of
the mark) to be too vague, noting the absence of a specific Pantone
color reference in the trademark. Further, in ruling against
Louboutin, the court ordered him to pay approximately $3,600 in
litigation costs to Zara France, pursuant to Article 700 of the
Noveaue Code de Procedure Civile.
Designer Christian Louboutin testified that the idea for his red
soles launched after he applied bright red nail polish to a pair of
sky-high pumps he felt "lacked energy." The effect was
such a success that it became a permanent feature of
Louboutin's footwear designs. However, the red soles have also
become a permanent feature of other parties' shoe
designs as well, causing Louboutin to spend millions of dollars
each year seeking to protect its designs. Louboutin has served
hundreds of Digital Millennium Copyright Act notices on Google to
remove from its search results photos of its shoes on websites
allegedly selling counterfeits. Louboutin has also set up a website
dedicated to identifying the mounting number of fakes.
This most recent decision comes nearly a year after Louboutin
suffered a similar loss in the Southern District of New York
against designer Yves Saint Laurent (YSL). In that case, District
Judge Victor Marrero denied Louboutin's motion for a
preliminary injunction seeking to enjoin YSL's sales of four
designs of red shoes with red soles and held that Louboutin was not
legally entitled to corner the market on a
color—notwithstanding the high-level of public
recognition the red-soled shoes have gained. In his ruling, Judge
Marrero distinguished earlier trademark disputes, wherein colors
and/or patterns were wholly or partially intended to act as a
source identifier; by contrast, the red color of Louboutin's
soles, by his own testimony, served a functional purpose, i.e.
provided "energy," rather than to identify a
commercial source. Judge Marrero went even further, indicating
a willingness to convert Louboutin's motion for a preliminary
injunction to a partial summary judgment motion canceling
Louboutin's trademark.
Yet, these two losses have not diminished Louboutin's desire
to protect the red soles. The Southern District of New York
decision is currently on appeal to the Second Circuit Court of
Appeals, and since the original decision in French court, Louboutin
has re-filed his French trademark to include a highly specific
shade of red—Pantone 18-1663TP. As Louboutin's quest
for protection continues, Venable will keep monitoring these
cases.
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