Christian Louboutin made headlines when it filed suit against Yves Saint Laurent in April 2011 for trademark infringement stemming from YSL’s use of red soles on its shoes. Louboutin’s suit prompted YSL to challenge the validity of Louboutin’s federally registered trademark – which extends to the Chinese red shoe soles. Judge Marrero of the Federal District Court in Manhattan ruled that the mark was “overly broad” and most likely not protectable. As such, Louboutin’s request that YSL be stopped from selling its red shoes was denied pending resolution of the status of the trademark.
In September, a New York federal court of appeals ruled that Louboutin’s federally registered trademark over the red soles is, in fact, valid. The one caveat: the trademark does not extend to all-over red shoes, such as some of the YSL shoes at issue. Both parties claim a victory in the ruling – the validity of Louboutin’s trademark was upheld and YSL can continue to make its monochrome red shoes with red soles.
Here is a breakdown of the litigation …
April 2011: Christian Louboutin files a trademark infringement lawsuit against luxury competitor Yves Saint Laurent for its manufacturing of shoes with red soles, specifically the Palais pump and slingback. Louboutin received trademark protection for the red-varnished heels in 2008 and claims exclusive use of the iconic red soles. The company is seeking $1 million in damages from YSL.
June 1, 2011: YSL has filed documents with the court stating that “Louboutin was fraudulent in its trademark application claim that the company had ‘exclusive’ use of the red sole: “Red outsoles are a commonly used ornamental design feature in footwear, dating as far back as the red shoes worn by King Louis XIV in the 1600s and the ruby red shoes that carried Dorothy home in The Wizard of Oz.”
August 5, 2011: A ruling in the Louboutin v. YSL case has still not been issued, but Louboutin has the upper hand for the moment. Yesterday Judge Victor Marrero ruled that YSL’s exhibits were inadmissible. Both sides had submitted letters outlining their positions to the court. In addition, YSL submitted additional documents, including a chart depicting YSL red- soled shoes that have allegedly been on the market since 2004. Marrero struck down YSL’s chart after Harley Lewin (Louboutin’s counsel) argued that the chart’s accuracy could not be verified. Lewin’s exact words: “This exhibit is a bald attempt of YSL and counsel to circumvent the law and sneak into evidence the chart they acknowledged was a ‘demonstrative’ at the July 22 hearing.”
August 10, 2011: U.S. District Court Judge Victor Marrero has ruled to deny Christian Louboutin’s request for a preliminary injunction that would prevent YSL from selling the red-soled shoes from its 2011 resort collection. He wrote in his ruling: “Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”
August 15, 2011: Louboutin has filed an appeal to the court’s decision to deny the brand a preliminary injunction against YSL. This move has bought Louboutin’s attorneys some extra time before YSL can push to have the red sole trademark canceled entirely.
August 19, 2011: Lawyers for both designers met before Judge Victor Marrero to argue whether or not YSL can challenge the trademark, but the judge put everything on hold until the appellate court rules on his decision to reject Louboutin’s preliminary injunction request from earlier this month.
August 22, 2011: Judge Marrero ruled that YSL has the right to create and sell red-soled shoes. Now that the judge decided to deny Louboutin’s preliminary injunction, up next is YSL’s push to have the red-sole trademark canceled entirely via a motion for summary judgment. In his initial ruling on Wednesday, Judge Marrero stated that “Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection” because color is ornamental in the industry. Lewin has already appealed the judge’s temporary injunction ruling, and has vowed to appeal any forthcoming decisions endangering the trademark.
October 17, 2011: Harley Lewin, on behalf of Christian Louboutin, filed an appellate brief with the Second Circuit, presenting the following issues for review:
1. Was it error for the district court to refuse to enforce Louboutin’s trademark rights in its federally registered Red Outsole Mark, after finding the mark to be distinctive, strong and world famous, on the ground that a single color may not act as a trademark in the fashion industry?
2. Was it error for the district court to rule that a single color on a fashion item could not act as a trademark under the strictly limited doctrine of aesthetic functionality, even where the mark is distinctive, identifies the Louboutin brand, has been granted federal registration under the Lanham Act, and has become famous as an indicator of source for women’s high fashion designer footwear?
3. Did the district court abuse its discretion in denying Louboutin’s motion for a preliminary injunction to enforce its distinctive, famous, federally registered Red Outsole Mark based on its newly minted per se bar on single color trademarks in the fashion industry, where it gave no weight to the statutory presumption of trademark validity, applied an erroneous analysis of trademark infringement and trademark dilution, ignored undisputed proof of likelihood of confusion and irreparable harm, and found hindrance to competition in the fashion industry?
October 24, 2011: Tiffany & Co. weighed in on Christian Louboutin SA’s trademark and unfair competition suit that aims to keep Yves Saint Laurent America Inc. from selling red-soled shoes, urging the Second Circuit to reject a blanket ban on color marks in the fashion industry. The jeweler, whose blue box packaging is trademarked, filed an amicus brief in support of Louboutin’s efforts to challenge a New York federal judge’s conclusion that the shoemaker’s trademark for red-soled shoes is invalid as a matter of law because colors are aesthetically functional in the fashion industry.
January 4, 2012: A group of 11 law professors all from an array of different schools in the U.S. filed an amicus curiae brief in support of Yves Saint Laurent in their defense against Christian Louboutin’s trademark infringement claim in respect of their red soles. In a somewhat interwoven argument, the brief criticized Louboutin and INTA’s analysis of the doctrine of aesthetic functionality and argued that in order to preserve innovation and competition the protection of single colors in fashion markets should be rejected. The doctrine of aesthetic functionality asks whether an aesthetic feature of a product is functional because it is “essential to effective competition.”
January 24, 2012: The two French luxury giants were back in court today. This time before the U.S. Court of Appeals for the 2nd Circuit in New York; the three judges present were Senior Judge Chester Straub, Judge Jose Cabranes, and Judge Debra Livingston. Louboutin is not backing down without a fight! By way of its counsel, Harley Lewin, Louboutin is asking the court of appeals to order an injunction against Yves Saint Laurent to stop the company from selling red-soled shoes, including its Tribute, Tribute, Tribtoo, Palais, and Woodstock styles. Louboutin claims this is a violation of the trademark it was awarded by the USPTO for the red sole in 2008.
The judges focused on with two key issues: whether Marrero properly interpreted US trademark law, and whether the case should be sent back to the District Court for additional fact finding, such as whether there would be consumer confusion between the brands should YSL continue selling its red-soled shoes.
September 5, 2012: The United States Court of Appeals Second Circuit (Jose A. Cabranes, Circuit Judge) issued a decision, holding that the District Court’s decision that a “single color can never serve as a trademark in the fashion industry is inconsistent with the U.S. Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995)” and that Louboutin’s red sole mark is a valid trademark. However, the Second Circuit court ruled that YSL did not commit any infringement with its all red shoe.
The panel explained that Louboutin’s trademark, which is the red lacquered outsole found in its high-fashion shoes, “has acquired limited secondary meaning as a distinctive symbol that identifies the Louboutin brand.” It ruled that Louboutin held a valid trademark over the red outsole because of such distinctiveness. It said: “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.’” However, the Second Circuit limited the use of the Louboutin Red Sole trademark to a red outsole which is different from the color of the rest of the shoe.
October 1, 2012: YSL’s counsel filed a motion to dismiss its six existing counterclaims against Louboutin. “Now that the Court of Appeals has definitively ruled for Yves Saint Laurent and has dismissed Christian Louboutin’s claims … Yves Saint Laurent has decided to end what was left of the litigation and refocus its energies on its business and its creative designs,” YSL’s counsel, David Bernstein, said after filing to dismiss its half of the case today.
December 27, 2012: The Manhattan federal district court officially dismissed the case, confirming that Louboutin has no further claims against YSL.
January 4, 2013: Now that the Second Circuit has ruled on the case and the scope of Louboutin’s trademark, the USPTO will consider both parties’ proposals and determine the final wording of the Louboutin trademark.
In a letter to the USPTO, Louboutin’s counsel, Harley Lewin, proposes a broader scope for the red sole trademark: “The mark consists of a lacquered red outsole on footwear that contrasts with the color of any visible portions of the shoe.” This would essentially give Louboutin the right to prevent others from making shoes with red soles (as long as the shoes themselves are not red). This would also give Louboutin to right to prevent others from selling red soled shoes even if the majority (but not all) of the shoe is red. The edit to the Louboutin registration comes after the N.Y. district court called the scope of the trademark into question.
March 8, 2013: The United States Court of Appeals for the Second Circuit released its latest opinion, rejecting Christian Louboutin SA’s request that it alter an earlier ruling limiting the scope of Louboutin’s trademark on red-soled shoes, closing the book on the designer’s trademark dispute with rival Yves Saint Laurent SAS.
March 22, 2013: Christian Louboutin v. YSL has technically been over since YSL dropped its existing claims in December, but the parties have been battling out of court over the language of the modified trademark for Louboutin’s red sole. As of 2008, Louboutin’s federally registered trademark extends to “a red lacquered outsole on footwear that contrasts with the color of the adjoining (‘upper’) portion of the shoe.”
Louboutin’s counsel argues that the red sole mark should be broader (namely that the lacquered red outsole must simply contrast with the color of any visible portions of the shoe). On the other hand, YSL has argued for a narrower interpretation: that the trademark extend only to the lacquered red outsole that contrasts with the color of the adjoining remaining portion of the shoe.”
Today, the Second Circuit court held that Louboutin cannot interfere with the USPTO’s orders to limit the trademark, as this matter does not present the “exceptional circumstances” required to grant such a request. Further, the Court held that Louboutin has not identified “any authority for making such a modification to the mandate.”