Louboutin v YSL - Calling Languish lawtalkers and fashionistas

[Martinus]

Louboutin v YSL
Lay off my red-soled shoes
Can a colour be a trademark?
Aug 20th 2011 | from the print edition

APPEARING on "So You Think You Can Dance", an American TV show, Jennifer Lopez starts her song "Louboutins" by lying sulkily in sheets of red silk on a bed in a giant sparkly shoe and making a phone call. "Hello, Santa," she says, batting her eyelashes, "I would like a shiny new pair of Louboutin shoes. You know, the ones with the high heels and red bottoms."

In the 20 years since Christian Louboutin made his first pair of ladies' shoes with shiny red-lacquered soles, his vertiginously heeled, sexy, colourful and nearly unwearable creations have become an object of desire for celebrities like Ms Lopez, Angelina Jolie and Madonna, who even lets her daughter Lourdes wear a metal-studded number. Today the puckish Frenchman is the biggest star in high-fashion shoe design, selling about 240,000 pairs a year in America at prices ranging from $395 for espadrilles to as much as $6,000 for a "super-platform" pump covered in crystals. The revenue of his company, Louboutin, is forecast at $135m this year.

Yet all this could be at risk, says Louboutin's lawyer, if Yves Saint Laurent (YSL), another fashion firm, continues to gain the upper hand in a legal dispute between the two companies. On August 10th a district court in New York refused to grant a preliminary injunction stopping YSL from selling shoes with a red sole that Louboutin says infringe its trademark. The judge did not believe that a designer could trademark a colour. He asked both parties to appear again in court on August 19th to decide how to proceed with the case.

"We don't like it," says Harley Lewin of McCarter & English, an American law firm which is representing Louboutin. The judge has overreached, according to Mr Lewin, by making this a case about the justification of Louboutin's trademark rather than a ruling on a request for a temporary injunction prohibiting the sale of red-soled YSL shoes. He intends to appeal against the decision.

Louboutin sued YSL alleging that several of its rival's shoes infringed Louboutin's trademark on women's shoes with a red outsole, which was granted to the company in 2008 by America's Patent and Trademark Office. Louboutin identifies the shade it uses as "Chinese red", but argues that any confusingly similar shade would infringe the trademark. YSL's offending shoes are red all over.

In denying the request for an injunction the judge said that in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, so Louboutin was unlikely to be able to prove that its brand was entitled to trademark protection. He acknowledged that courts had recognised the use of colour in trademarks in the fashion industry before, but only in patterns with multiple designs such as the Louis Vuitton logo or Burberry check. Trademarks have been given to single colours for industrial products, such as yellow for Post-it notes.

Louboutin retorts that granting a trademark to one or several colours, such as Gucci's stripes, is the same. Moreover, it maintains that Christian Louboutin was the first to use red outsoles. Not true, says its opponent, who claims that King Louis XIV had red-heeled dancing shoes in the 18th century and Dorothy danced in ruby slippers in "The Wizard of the Oz".

The judge has made up his mind that no fashion designer should be allowed a monopoly on colour because as artists they all need to be able to use the full palette. To make this point, he imagined Picasso taking Monet to court over the use of blue in his painting of water lilies, because it was the same or close to the distinctive shade of indigo, the "colour of melancholy" he used in his Blue Period. Moreover, unlike patent law, trademarks are never about granting monopolies, argues David Bernstein, a lawyer for YSL at Debevoise and Plimpton. Trademarks are merely the right to indicate the origin of a product or service.

Susan Scafidi of Fordham University School of Law in New York says that the judge sidestepped the important question by boiling the argument down to aesthetic functionality. The true challenge of the case, says Ms Scafidi, is to determine when the use of colour on a portion of apparel is a design element and when it is a trademark. It will now be the job of an appeal court to rule on the matter. And if Louboutin loses again, the company says it will take its case all the way to the Supreme Court.

To my non-IP-lawyer mind, this seems less of a trademark issue and more of a product plagiarism issue - the question is not whether Louboutin should be able to trademark a colour, but whether the YSL shoes can be seen to create a false impression in an average viewer that the shoes are Louboutin's.

Frankly, I don't see the basis for this if the shoe is red all other - but if they are just using a red sole, I think Louboutin's case would have a merit.

[The Brain]

"The Wizard of the Oz"?

[Brazen]

I think YSL is a prestigious enough name not to need pass for Louboutins, it's really a question of the sole suiting the shoe for them. But is interesting that Louboutin choose to go after another quality brand than the high-street rip-offs.

Trademarking colour is nothing new. In 1998 Cadbury tried and failed to register purple packaging for chocolate as a trade mark*. T-Mobile has registered their particular magenta.

* If you Google "Cadbury purple" the first hits are how to have a Cadbury purple=themed wedding 

[Martinus]

Brazen, the examples you quote (and many people throw around) are imo not applicable.

It's one thing to trademark a color of the packaging or a logo (a client of mine has succesfully trademarked the equivalent of Cadbury purple in Poland, for a chocolate brand no less) - and quite another to trademark a color of the product itself - especially when the color is not in itself special or unusual in the line of industry.

Packaging is not an integral part of the product - so I can see trademarking the color of one to make it distinct. For example if Loboutin sold its shoes in a particular fuschia box, I can see them trademarking it.

However, they are trying to trademark a colour of the final product - and a colour that is not, in itself unusual. It's as if Cadbury tries to trademark the "chocolate white" color of its white pralines.

[stjaba]

To my non-IP-lawyer mind, this seems less of a trademark issue and more of a product plagiarism issue - the question is not whether Louboutin should be able to trademark a colour, but whether the YSL shoes can be seen to create a false impression in an average viewer that the shoes are Louboutin's.

I don't see the distinction you are making. If Louboutin had successfully trademarked the trademark "red" for high end designer shoes, it should be able to sue YSL for trademark infringement. This is exactly what happened in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), where the US Supreme Court held that a company could trademark a color if the color had acquired "secondary meaning."

It's one thing to trademark a color of the packaging or a logo (a client of mine has succesfully trademarked the equivalent of Cadbury purple in Poland, for a chocolate brand no less) - and quite another to trademark a color of the product itself - especially when the color is not in itself special or unusual in the line of industry.

And the distinction about packaging vs. the product isn't necessarily true in the US either. In Qualitex, for instance, the company had trademarked the color green for dry cleaning pads. The pads themselves were green, not the packaging. 

[dps]

To my non-IP-lawyer mind, this seems less of a trademark issue and more of a product plagiarism issue - the question is not whether Louboutin should be able to trademark a colour, but whether the YSL shoes can be seen to create a false impression in an average viewer that the shoes are Louboutin's.

Frankly, I don't see the basis for this if the shoe is red all other - but if they are just using a red sole, I think Louboutin's case would have a merit.

I tend to agree, though I also agree with Brazen that Yves Saint Laurent is such a well-known brand in its own right that they have no reason to try and makie the public believe that their shoes are actually Louboutins.

EDIT:  to address what stjaba posted, what I was agreeing with was Marti's point about red soles vs. all red shoes.

[The Minsky Moment]

To my non-IP-lawyer mind, this seems less of a trademark issue and more of a product plagiarism issue - the question is not whether Louboutin should be able to trademark a colour, but whether the YSL shoes can be seen to create a false impression in an average viewer that the shoes are Louboutin's.

Trademark law in the US is the mechanism by which this is done.  The typical test is whether the allegedly infrininging product causes confusion as to the source of the goods in the mind of the consumer.

[ulmont]

To my non-IP-lawyer mind, this seems less of a trademark issue and more of a product plagiarism issue - the question is not whether Louboutin should be able to trademark a colour, but whether the YSL shoes can be seen to create a false impression in an average viewer that the shoes are Louboutin's.

Trademark law in the US is the mechanism by which this is done.  The typical test is whether the allegedly infrininging product causes confusion as to the source of the goods in the mind of the consumer.

Color looks like more of a functionality issue - while pink is an arbitrary color for insulation, it would seem to be functional for shoes (i.e., you need the whole palette etc.).

[The Minsky Moment]

Color looks like more of a functionality issue - while pink is an arbitrary color for insulation, it would seem to be functional for shoes (i.e., you need the whole palette etc.).

Yes - that was the core issue in dispute in this particular case.  The article does a crappy job of explaining it - the judge wasn't deciding in the abtract whether color could be a key aspect of a trademarkable design  but whether specifically with respect to shoe soles whether the color was functional or not.

[Martinus]

To my non-IP-lawyer mind, this seems less of a trademark issue and more of a product plagiarism issue - the question is not whether Louboutin should be able to trademark a colour, but whether the YSL shoes can be seen to create a false impression in an average viewer that the shoes are Louboutin's.

I don't see the distinction you are making. If Louboutin had successfully trademarked the trademark "red" for high end designer shoes, it should be able to sue YSL for trademark infringement. This is exactly what happened in Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159 (1995), where the US Supreme Court held that a company could trademark a color if the color had acquired "secondary meaning."

It's one thing to trademark a color of the packaging or a logo (a client of mine has succesfully trademarked the equivalent of Cadbury purple in Poland, for a chocolate brand no less) - and quite another to trademark a color of the product itself - especially when the color is not in itself special or unusual in the line of industry.

And the distinction about packaging vs. the product isn't necessarily true in the US either. In Qualitex, for instance, the company had trademarked the color green for dry cleaning pads. The pads themselves were green, not the packaging.

That's what I addressed by making the caveat about the color being special or unusual (and thus distinctive).

To continue my example, if Cadbury released a line of purple chocolates, I can see them trademarking that (and it would be like trademarking the green dry cleaning pads - because the color of the product is not inherent to the product quality/usefulnes). But not if they released a line of brown chocolates. Same with color red - in fashion it is one of the basic colors and has always been. Preventing the color from being used by a trademark would be an abuse of a right.

[DontSayBanana]

My guess: they're going to lose it, and the trademark is going to be clarified to specify shoes with separate-colored soles.

And it's more than just the logo, Mart.  If enough branding materials are out there, the color can be put under a blanket trademark, but only within the industry in which the trademarking business operates; for example, other telecommunications companies are actually barred from using the shade of magenta trademarked by T-Mobile.

[Habsburg]

Chanel.