Can Christian Louboutin Save His Sole?
Article Date: Wednesday, June 06, 2012
Written By: Clara R. Cottrell & Christopher L. Sorey
“A pair of shoes can change your life. Just ask Cinderella.”
~ Anonymous
Trademark practitioners and fashionistas everywhere are eagerly awaiting a decision by the Second Circuit that could have a tremendous impact on trade dress and America’s brand conscious shoe aficionados. It also marks a rare instance where both trademark attorneys and fashion houses are seeing red.
The shoes of Christian Louboutin (“Louboutin”) are arguably easily identifiable and unmistakable by the red lacquer soles that adorn the shoes. When a woman walks into a room wearing high heels with red lacquer outsoles, any fashion conscious person knows that she’s wearing Louboutin, or Loubies as folks in the know would say. One pair of Louboutin can easily go for $1,000 or more. The price and recognizability add to the caché of Loubies, leading to these shoes being routinely worn by celebrities and featured on the red carpets of awards shows. Louboutin, through the help of these celebrity devotees, has built up a considerable reputation as the end all and be all of the well heeled. The money has followed closely on the heels of success with estimates of approximately 240,000 pairs sold in the US alone.
Louboutin decided in 2007 to file for registration of his famous heels with the U.S. Patent & Trademark Office (“PTO”) seeking to protect his red colored outsole. The PTO subsequently issued US trademark registration number 3,361,597 for “a lacquered red sole on footwear” (the “Red Sole” mark) claiming a first use date going back to 1992.
In January of 2011, Louboutin contacted the fashion house of Yves Saint Laurent (“YSL”) to complain of YSL’s use of red outsoles on a newly introduced line of women’s shoes. YSL’s shoes were red monochromatic high-heels consisting of red outsoles and red insoles. Louboutin demanded that YSL remove the offending shoes from the market. YSL refused and Louboutin sued.
In the suit brought by Louboutin in the U.S. District Court for the Southern District of New York, Louboutin asserted that YSL’s use of the red outsoles constituted: (1) trademark infringement; (2) false designation of origin and unfair competition; (3) trademark dilution; and (4) unlawful deceptive acts and practices. In its answer to Louboutin’s complaint, YSL raised counterclaims seeking cancellation of the Red Sole mark on the grounds that the mark was merely ornamental, functional, was not distinctive, and that the mark had been secured through fraud. Louboutin requested the court issue a preliminary injunction to prevent YSL from marketing the allegedly infringing shoes during the pendency of the action. In its analysis of the motion for preliminary injunction, the court first had to determine whether Louboutin could succeed on its claims based on the evidence presented thus far. In this analysis, the court relied on the preeminent trademark case involving color, Qualitex Company v. Jacobson Products Company, 514 U.S. 159 (1995). In Qualitex, the Supreme Court stated that color can be protectable under the Lanham Act as a trademark if it is distinctive, acts as a source identifier for a company’s goods or services and does not serve any significant function. On Aug. 10, 2011, the court refused Louboutin’s request for the preliminary injunction and, in doing so, tipped their hand as to whether Louboutin could succeed on the merits of the case. The court explained in its ruling denying the injunction that it did not believe Louboutin could “succeed on its claim that YSL infringed the Red Sole mark.” The court concluded that Louboutin’s Red Sole mark was functional on the ground that “color serves ornamental and aesthetic functions vital to robust competition” in the fashion industry. With the writing, in red no doubt, plainly visible on the wall, Louboutin appealed the court’s ruling to the Second Circuit.
The court’s ruling touched off a media frenzy with reports about the case appearing everywhere from notable newspapers and magazines to fashion blogs and Twitter feeds. Criticism of the court’s ruling seemed to hone in on the parts of the opinion where the judge added a somewhat whimsical or artistic flair by citing Walt Whitman and comparing fashion designers to the likes of Monet and Picasso. The judge also seemed to have mischaracterized what the trademark registration actually covers and the rights it conveys. Even those supporting the underlying premise that the Red Sole is functional have criticized the judge’s opinion for missing the point.
Although not entirely unusual, the appeal has received several amicus briefs, most notably from the International Trademark Association (“INTA”) on behalf of Louboutin and from a group of law school professors supporting YSL’s position. INTA specifically argued that the court erred in rejecting or dismissing the presumption of validity accorded the US registration owned by Louboutin, that the court misconstrued the Louboutin registration as a limitless claim to the color Red and it incorrectly applied the doctrine of aesthetic functionality. It is this application of the doctrine of aesthetic functionality which we believe will probably drive the decision on the appeal.
The doctrine of aesthetic functionality essentially states that an attractive or aesthetically pleasing design can be considered “functional” if that feature contributes to the value or performance of the product. Restatement of Torts § 742. There are many critics of this doctrine and the courts have not applied it evenly or consistently. In the Fourth Circuit, for example, one district court has opined that it had “no reason to think that the Fourth Circuit would be inclined to adopt such a policy.” Devan Designs, Inc. v. Palliser Furniture Corp., 25 USPQ2d 1991, 2002 (M.D.N.C. 1992), aff’d, 27 USPQ2d 1399 (4th Cir. 1993). Turning to the circuit in which the Louboutin case is pending, the Second Circuit’s view on aesthetic functionality is that the doctrine bars trademark protection for any purely ornamental feature where no alternative designs are available to competitors. Wallace Int’l Silversmiths, Inc. v. Godinger Silver Art Co., 915 F.2d 76, 16 U.S.P.Q.2d 1555 (2nd Cir. 1990), cert. denied, 499 US 976, 113 L. Ed. 2d 720, 11 S. Ct. 1622 (1991).
With the foregoing in mind, the case leads one to ask, “Is the Red Sole an ornamental feature of which there are no alternative designs?” Take this situation as an example. Imagine if a woman wants to wear an entirely red outfit from head to toe. She looks for high heels to match the outfit and yes she finds plenty of red high heels but believes that the black or tan outsole distracts from the look she wants. What alternatives does she have? If Louboutin keeps his trademark, then she will only have one red heeled shoe to buy. The Red Sole mark would then fail the doctrine of aesthetic functionality.
Because the doctrine of aesthetic functionality will probably be the touch point for the Second Circuit’s decision, and in light of the precedent regarding the doctrine, we believe that the court will likely affirm the lower court’s ruling and invalidate the Louboutin trademark. However, we hope that such a decision will further elucidate the doctrine to provide more guidance for trademark attorneys and fashion houses. •
Clara Cottrell is an associate in the corporate group at Smith Moore Leatherwood LLP, focusing on intellectual property.
Christopher Sorey practices intellectual property law at Wyrick Robbins Yates & Ponton LLP.
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