Thursday, January 26, 2012

The Saints Want to Wear (Down) My (Trademarked) Red Soles

Yesterday’s WSJ reported on the continuing legal battle between the well-heeled shoe designers Christian Louboutin (CL) and Yves Saint Lauren (YSL). The battle surrounds the legal use of the trademarked color red on the outsoles of women’s fashion shoes. 

In 2008, CL was able to obtain a trademark registration of this “lacquered red sole on footwear,” as shown in the following picture in the trademark application:

The trademark was granted and so it would appear that he has a case against the use of the same “lacquered red sole” as shown by other designers. Attorneys for CL claimed the use of the same bright red soles by YSL would be the wearing down or dilution of his trademark.

In its complaint, CL showed red shoes with red soles by YSL (like those on the right above) citing that they infringe on his trademark. (The gorgeous pumps on the left are iconic Louboutin). Were you thinking that the clunkers on the right might be CL’s? Can the government grant a trademark to a color used in fashion? Is the color of the sole of a shoe considered part of its function? Why am I asking these questions?

These are the questions that need to be answered in order to determine if CL’s trademark was granted in error (as the federal district court judge implied in his initial decision last year), if CL has a case against YSL and the denial of its injunction, and if the fashion industry is different from other industries in its use of color (i.e. will trademarked colors hinder creativity).

In its October appeal to the Second Circuit Court of Appeals, CL states that the district court erred in denying its request for an injunction against YSL on these three counts:
  1. Denying trademark protection on the grounds of aesthetic functionality;
  2. Not applying the strictly limited doctrine of aesthetic functionality to hold that a single color on a fashion item could not act as a trademark;
  3. Abusing discretion because the court’s analysis was legally erroneous.

(Read the whole appeal linked above – it is really fascinating.)

Basically, the federal judge denied the injunction on the grounds that color could not be trademarked in fashion without causing “not only commerce and competition, but art as well” to suffer.  Furthermore, as trademark is supposed to protect a non-functional aspect of the design, it was the opinion of the judge that the color of the sole of the shoe was functional.

“By putting a distinctive red color on the previously ignored bottom portion of the shoe, Louboutin established a strong brand identifier.”

I completely agree with this statement in the appeal. Unfortunately, it goes on to say, “The red outsole has no utility and in fact adds to the cost of manufacture to the economic advantage of competitors.  That the Red Outsole Mark is pleasing to consumers does not impair its ability to act as a trademark.”

This is unfortunate only in that in his denial of the injunction, the judge used Mr. Louboutin’s own words to refute the red outsole’s utility in stating that the red color gives his shoes “energy,” is “engaging,” “sexy,” and “attracts men.”  Where did the judge find Mr. Louboutin saying these things?  In the supporting documents to his trademark application the appeal reports (I couldn't find it in any of the government documents for the trademark). 

So do red soles really reflect sex, or has Louboutin smartly built an empire suggesting it?

I love this case because it is helping me to understand the importance and scope of trademarks through a product that I completely understand and appreciate. (For a decent overview of how patent, copyright, and trademark differ related to the case see here.)

As the owner of what I’m certain now is a rip-off pair of Louboutin’s I’d admit that it’s the glimpse of an unapologetically bright red on the underside of a shoe where there is usually only dirt and scuff marks that makes the item quite a bit more titillating. Having the sole match the uppers as used by YSL is simply matchy-matchy and possibly a boon to CL products.  Taking a functional product like a shoe and making it the desire of many women is a marketing skill of the highest order. But should CL own the trademark to that particular red on the sole of all women's fashion shoes?

I’m not sure where I stand on the validity of the trademark issue, but as it was issued I think the judge needed to uphold the law and YSL needs to question the issuance of the trademark on the sexy red sole.

I’m going to try to stay teetering on top of the issue.

I would like to find and link to Judge Marrero's original ruling, but have been unsuccessful in finding it online so far. Here is the original trademark registration as issued.

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