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-Spencer L. Simons, former Director, O'Quinn Law Library and Associate Professor of Law

Tuesday, September 11, 2012

Shoes and the Second Circuit

Law and high fashion met last week when the United States Court of Appeals for the Second Circuit held that the French show designer Christian Louboutin has an enforceable trademark for the use of red outsoles when the shoe’s upper is a contrasting color. 

For those unfamiliar with Louboutin’s creations, they have become the “it” shoe among celebrities from Sarah Jessica Parker (whose Carrie Bradshaw character made the shoes a household name on “Sex and the City”), to Jennifer Lopez, who released a single named after the designer shoes,“Louboutins,” in 2009. First popularized by Princess Caroline in Monaco in 1991, the shoes currently retail for between 500 to 6,000 dollars a pair.

Louboutin is far from the first to popularize red heels and soles for high end shoes.  According to Phillip Mansel’s Dressed to Rule (available at the M.D. Anderson library, GT1754 .M36 2005), Louis XIV favored the color as well, even passing an edict forbidding all but the noble-born from wearing red heels. As a painted sole will wear and scuff easily should it interact with dirt or pavement, its fragility makes it an enduring symbol of wealth and luxury.  

In the case before the Second Circuit, Christian Louboutin first sought to enjoin Yves Saint Laurent from selling its monochrome line of heels in red (also available in purple, green, and yellow). The red Yves Saint Laurent shoes were accused of infringing on Louboutin’s mark, which protects “a lacquered red sole on footwear” according to its trademark filed with the U.S. Patent and Trademark Office. The district court denied the injunction on finding that color was protectable only when it “acts as a symbol that distinguishes a firm’s goods and identifies their source, without serving any function.” In fashion, the court explained “single color marks are inherently ‘functional’ and that any such registered trademark would likely be held invalid.” Christian Louboutin S.A. v. Yves Saint Laurent Holding, Inc., No. 11-3303-cv, 2012 WL 3832285, at *3 (2d Cir. Sept. 5, 2012). 

The Second Circuit reversed the District Court’s decision.  In its analysis, the court examined (1) whether or not the mark is distinctive; and (2) if distinctive, does the defendant’ use of a similar mark cause confusion? While the color red is not inherently distinctive, when used in the context of a shoe’s outsole, it came to identify the source of the product rather than the product itself. The court found that Louboutin’s mark was distinctive, as it had acquired a secondary meaning “as a distinctive symbol that identifies the Louboutin brand.” Christian Louboutin, at *12. But, the court further found that the mark only extends to uses where the red sole is used on a non-red shoe. The distinctiveness of Louboutin’s mark is dependent on the “pop” of color that comes from the contrast between the sole and the upper.  Since the Yves Saint Laurent shoes in question were completely monochromatic, red from upper to sole, they did not infringe on the Louboutin mark, so the issue of potential confusion was not reached.

Of course, a distinctive mark that identifies a luxury brand will often be copied by counterfeiters, and the simplicity of Louboutin’s mark is easy to copy. Just in August, U.S. Customs and Border Protection confiscated 20,457 pairs of counterfeit Christian Louboutin shoes at the Los Angeles/Long Beach seaport. And at least one company offers a way for less well-heeled customers to “Louboutinize” their heels, with red adhesive stickers that you can fit to your shoes for that signature trademark look. 

For more about trademark law, here a just a few of the resources available at the O’Quinn Law Library:

Gilson on trademarks / Anne Gilson Lalonde ; Karin Green; Jerome Gilson. KF3180.G542  

Intellectual property : patents, trademarks, and copyright in a nutshell / by Arthur R. Miller, Michael H. Davis.

Internet domain names, trademarks and free speech / Jacqueline Lipton. K564.C6L57 2010

McCarthy on trademarks and unfair competition / J. Thomas McCarthy. KF3180.M29 1996

New practitioner's guide to intellectual property / David R. Gerk, John M. Fleming.  KF2979.G47 2012

Understanding trademark law / Mary LaFrance. KF3180.L34 2009

Cinnamon buns, marching ducks and cherry-scented racecar exhaust: protecting nontraditional trademarks / by Jerome Gilson, Anne Gilson LaLonde. KF3180.G529 2005

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