On the tree-lined Avenue George V in Paris’ 8th Arrondissement, mere steps from the Seine and just across the street from where Cristóbal Balenciaga opened his own maison in 1937, Yves Saint Laurent’s team was in the midst of working on the brand’s Resort offerings in early April 2011 when a package arrived. The stack of documents was hand-delivered to the fashion house in Paris, as well as to its American headquarters on the heavily foot-trafficked 57th Street, nestled between Louis Vuitton and Chanel’s midtown outposts, and addressed to Yves Saint Laurent America, Inc. and its Paris-based entity, Yves Saint Laurent SAS.
Fifteen years prior, Christian Louboutin was on the receiving end of a delivery of its own. A carefully packaged prototype of a high heel shoe arrived from Italy to the workshop of the budding Parisian brand. The concept shoe, with its stacked heel and floral applique, was missing something. As the story goes, the designer, Mr. Christian Louboutin, reached for a bottle of red nail polish – “Thank God, there was this girl painting her nails at the time,” he told the New Yorker – and with that, the shoe’s sole went from a dull black to a striking red. “Then it popped,” and the foundation of a footwear revolution was born.
Fast forward less than two decades and Louboutin was selling more than 600,000 pairs of shoes per year – all of which bore Pantone 18-1663 TPX “Chinese red”-hued soles. There was nary a red carpet that was not smattered with actresses in the brand’s shoes, or a magazine that was without an editorial in which Louboutin shoes appeared. Online, some 48 percent of luxury footwear searches in 2011 were for Louboutins.
Back on Avenue George V, which is where Yves Saint Laurent’s ateliers and corporate head office were located back in 2011, Yves Saint Laurent was turning out noteworthy footwear, as well. In fact, the garments of Yves Saint Laurent’s soon-to-be-ousted creative director Stefano Pilati were being outshined, according to critics, by Yves Saint Laurent footwear. You needn’t look further than Tim Blanks’ Style.com take on the Spring/Summer 2012 YSL collection. The first two sentences – “The shoes! The shoes!” – told you everything you needed to know.
Given that a significant portion of high fashion brands’ revenue routinely comes from the sale of accessories, including handbags and footwear, the praise for YSL’s offerings was no small matter. It was significant for the brand’s bottom line, as touted by its parent company, the corporate conglomerate now known as Kering, and it was not being overlooked by rival Christian Louboutin.
Inside that package addressed to Yves Saint Laurent was not a shoe; it was a complaint. Christian Louboutin was suing the company for more than $1 million.
The Most Closely Watched Case in Fashion
Within a matter of days, the media was abuzz. Christian Louboutin’s legal team had filed a trademark infringement lawsuit in a New York federal court, giving rise to what would swiftly become one of the most infamous footwear lawsuits in fashion history. After all, on the receiving end of that complaint was not a fast fashion retailer or a frequently-sued footwear company like Steve Madden. It was a fellow luxury goods brand, and at the heart of the closely-watched lawsuit was Louboutin’s trademark-protected red sole and its allegations that by selling $800-plus red high heeled shoes that also bore a red sole, YSL was infringing its coveted federal trademark registration that Louboutin had maintained since January 2008.
After attempting to handle the matter out of court, thereby avoiding litigation, Louboutin filed suit; the complaint was signed by Harley Lewin, the renowned intellectual property attorney who heads up the intellectual property group at McCarter & English, one of the oldest and largest law firms in the U.S.
Mr. Lewin has been working alongside Louboutin arduously for over a month, first in an attempt to amicably come to a resolution with Yves Saint Laurent over the parties’ lookalike shoe soles, and then to determine the most appropriate place in the world to file a lawsuit, when it became clear that YSL would not, under any certain circumstances, pull its own red-soled shoes from the shelves of its boutiques and those of some of the globe’s most upscale stores.
In its lawsuit, Louboutin asserted that the red-soled YSL shoes were being sold in many of the exact same stores and websites as its own shoes, thereby enabling YSL to confuse consumers and “take unfair advantage of the enormous goodwill and brand recognition in the red sole trademark that [Louboutin] has developed over the past two decades.” The sale of “identical and/or highly similar” shoes by YSL was actively impairing Louboutin’s “ability to control its reputation, and the quality and careful distribution of Louboutin footwear.”
Louboutin stated that it “repeatedly sought to have [YSL] remove the infringing footwear from the marketplace,” only to have YSL “advise Louboutin that it was going to continue to sell the infringing footwear.” After attempting to handle the matter out of court, and thereby avoid litigation, Louboutin filed suit in a New York federal court.
Faced with the newly-filed suit, the ball was in YSL’s court. Even then, instead of agreeing to quietly settle the case amongst themselves outside of court and away from the prying eyes of the media, which was eager to air the rivals’ dirty legal laundry, YSL took action of its own.
Louboutin had been granted that registration by the U.S. Patent and Trademark Office (“USPTO”) for the mark back in early January 2008, and by way of its invalidation attempt, YSL wanted to ensure that such protection came to an abrupt halt.
That battle, which played out in federal court in New York – and on the pages of media outlets across the globe – inched towards a close two years later. On the heels of proceedings before the U.S. District Court for the Southern District of New York, which denied Louboutin’s request for a preliminary injunction – a binding court order would have prevented YSL from selling its own red-soled pumps for the duration of the case – on the basis that “single-color marks are inherently ‘functional’ and that any such registered trademark [including Louboutin’s red sole trademark] would likely be held invalid,” Louboutin appealed.
The footwear brand argued that the court had failed to properly apply existing Supreme Court precedent from a 1995 case, Qualitex Co. v. Jacobson Products Co. That case may have centered on dry cleaning “press pads,” but it, nonetheless, had a significant relation to the case at hand, as in Qualitex, the Supreme Court held that a color is, in fact, capable of meeting the legal requirements for trademark registration, assuming that it has acquired secondary meaning (i.e., the trademark holder can show that consumers can identify a trademark with a single source).
While the media was on high alert, closely watching the developments in the case, trademark practitioners, academics, and fellow consumer goods brands were paying attention, as well. In between the district court issuing its decision and the case’s day before the U.S. Court of Appeals Second Circuit, a group of eleven law professors from an array of different schools in the U.S. came together to draft and file an amicus brief in support of YSL. They argued that in order to preserve innovation and competition in the market, the protection of single colors in fashion should be rejected.
Meanwhile, counsel for Tiffany & Co. filed a brief of their own the court, siding with Louboutin and its ability to claim rights in its specific use of the color red. Tiffany & Co., after all, had a dog in this fight, as it maintains an arsenal of trademarks registrations for its robin’s egg blue.
In a highly-anticipated decision in September 2012, the Second Circuit overturned the lower court’s decision. It stated that Louboutin’s red sole has, in fact, “acquired [the necessary] secondary meaning as a distinctive symbol that identifies the Louboutin brand.” Elaborating, the court held, “We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, ‘the primary significance’ of which is ‘to identify the source of the product rather than the product itself.’”
Louboutin’s counsel celebrated the brand’s win: thanks to the court’s decision Louboutin “will be able to protect a life’s work as the same is embodied in the red sole found on his women’s luxury shoes,” Lewin asserted.
However, YSL did not leave court that day without a win of its own, as the appeals court’s 3-judge panel held that Louboutin’s rights were limited to shoes where the sole contrasts in color with the rest of the shoe. In other words: Louboutin’s trademark does not extend to shoes that have a red body and a red sole.
The Case Was Not Over
Let off the hook, so to speak, because its shoes – namely, its Tribute, Tribute, Tribtoo, Palais, and Woodstock styles – consist of an all-over red body complete with a red sole, YSL’s counsel, prominent New York-based litigator David Bernstein of Debevoise & Plimpton, claimed victory, as well, telling the press, “The Court has conclusively ruled that YSL’s monochromatic red shoes do not infringe any trademark rights of Louboutin, which guarantees that YSL can continue to make monochromatic shoes in a wide variety of colors, including red.”
The case was not over, though. Still up for debate as of January 2013 was the actual language of the trademark registration for Louboutin’s red sole, as in limiting of the breadth of Louboutin’s trademark rights from the sweeping “lacquered red sole on footwear” to a red sole on a contrasting colored shoe, the Second Circuit ordered that the USPTO modify the language of Louboutin’s trademark registration.
Ultimately, the language would be determined to read as follows: “a red lacquered outsole on footwear that contrasts with the color of the adjoining (‘upper’) portion of the shoe.”
Seemingly emboldened by its victory, Louboutin used that momentum of its win to look beyond the confines of the U.S. and its trademark system to engage in a tour de force aimed at formally amassing and/or enforcing rights in other jurisdictions, including Switzerland, France, Belgium, China, India, and beyond. What has come of that has been nothing short of a time-consuming and resource-intensive fight, and at times, the results have been mixed.
On one hand, the validity of the famed footwear brand’s trademark has been upheld by a series of important decisions, including ones from the Paris Court of Appeal, the Court of Justice for the European Union, the Hanseatic Court of Appeals in Germany, the Beijing High Court, and the European Union Intellectual Property Office, among others.
At the same time, though, there have been set backs. In 2012, for instance, Louboutin was handed a loss in a case it filed against Zara in France, with the court holding that “there was no risk of consumer confusion between a red peep-toe platform heel with red soles sold by [the] Spanish fashion retailer and Louboutin’s own ‘Yo Yo’ design, a nude peep-toe platform heel with his signature red soles.” As Hogan Lovells’ Camille Pecnard wrote at the time, “The French Supreme Court [ultimately] concluded that Louboutin’s trademark had to be declared invalid and dismissed Louboutin’s claims.”
Louboutin has since re-filed its French trademark to include a highly specific shade of red—Pantone 18-1663TP.
All the while, the nearly 30-year old Louboutin brand has continued its efforts to dominate international markets with its red sole, upping its the number of pairs of $700-plus red-soles heels, sneakers, and flats it sells in a year from 600,000 to more than 1 million pairs as of 2017 (the number may have grown further since then), and in the process. And from a legal perspective, it has foreshadowed, right along with fellow color rights holders like Tiffany & Co., the increased efforts by brands to build out such trademarks of their own, and to a large extent, it laid the groundwork for what an aggressive global quest for color rights looks like.
But even beyond that, Louboutin’s global trademark fights – some of which are still ongoing – are about more than just a red sole; they tell a story about branding and brand building in the upper echelon of the fashion industry, where the products are expensive and the fights are high-stakes. And maybe most importantly of all, they speak to a brand’s goodwill and of awareness among consumers, which is precisely what is at the very heart of trademark rights, after all.
Not Just About a Red Sole
Reflecting on the case years later, Lewin describes it as “one of the most interesting cases in my career because it crossed over from the law and business side to the consumer side. Not only did lawyers follow it, or business leaders and CEOs, but it caught the eye of the consumers. It was all over digital media, as well as the print media and television and radio around the world, whether it was because it was a dispute between two French designers, whether it was because it was a legal dispute, or because it involved high fashion with some salacious content like people calling each other names.”
“The press was relentless on this case and they followed it closely. Most of the talking heads on television routinely got it wrong,” he recalls. “So, we had to manage the message from the point of the client because either side could easily have won the legal fight but lost the public opinion fight, and, in doing so, especially from Louboutin’s point of view, it would have dramatically affected the business. So, we took extraordinary pains to both manage the message as well fight the case in court.”
And the element of consumer attention was significant. It meant that the case was about more than just a red shoe sole. It was about consumer perception.
“As it happens, and it has happened before, in my career in other cases,” Lewin says, “the cases morph and they become bigger than the trial itself both as a matter of law, because the issues ripple around the world, and also, because it’s a matter of the public, and in this case, one of the most ticklish things, and the realization that we had with the client, was that we were really trying the case in two forms: we were trying the case in courts, but we were also trying the case in the court of public opinion, which does not ordinarily happen.”
With the high-stakes nature of rights at play, and given that the world was watching closely “for almost two years,” according to Lewin, “we – and the case, itself – became a game changer.”