Update from AmeriKat: Louboutin sees red after injunction rejected against YSL

The AmeriKat has previously reported about the on-going battle between Christian Louboutin and Yves Saint Laurent over the use of a red sole on a pair of Yves Saint Laurent shoes. Louboutin's iconic footwear are identified on the street and red-carpet by their flash of red lacquer sole - a colored sole so famous that the shoe designer owns a US trade mark for red soles on the bottom of footwear. The USPTO granted the trade mark (Reg 3,361,597) on 1 January 2008 for "women's high fashion designer footwear" with the verbal description accompanying the visual depiction as follows

"The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear. The dotted lines are not part of the mark but are intended only to show placement of the mark."

Louboutin sued Yves Saint Laurent for trade mark infringement over the red sole and petitioned the court for an injunction to prohibit Yves Saint Laurent from selling the offending shoes, including YSL's models - Tribute, Tribtoo, Palais and Woodstock.

However, last week Judge Victor Marrero denied the injunction. He stated that

"Louboutin‟s claim would cast a red cloud over the whole industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette."

The AmeriKat has had not had time to fully consider Judge Marrero's decision on the merits of the injunction, but has set out some interesting passages below. By way of a reminder, however, to obtain a preliminary injunction, Louboutin must have established (1) irreparable harm and (2) either (a) likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor] (Monserrate v New York State Senate (2010)). It was the second part of the test that Judge Marrero's decision focused. As expected, Judge Marrero went through the case law on color and secondary meaning (see AmeriKat post here). He also illustrated the question before the court with an 'interesting' leap into the world of Impressionist and Cubist painters:

"The narrow question presented here is whether the Lanham Act extends protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry. In other words, the Court must decide whether there is something unique about the fashion world that militates against extending trademark protection to a single color, although such registrations have sometimes been upheld in other industries.

To answer this question, and recognizing the fanciful business from which this lawsuit arises, the Court begins with a fanciful hypothetical. Suppose that Monet (picture, right), having just painted his water lilies, encounters a legal challenge from Picasso, who seeks by injunction to bar display or sale of those works. In his complaint, Picasso alleges that Monet, in depicting the color of water, used a distinctive indigo that Picasso claims was the same or too close to the exquisite shade that Picasso declares is “the color of melancholy,” the hallmark of his Blue Period, and is the one Picasso applied in his images of water in paintings of that collection. By virtue of his longstanding prior use of that unique tinge of blue in context, affirmed by its registration by the trademark office, Picasso asserts exclusive ownership of the specific tone to portray that color of water in canvas painting.

Should a court grant Picasso relief?"

Uhh......The AmeriKat is pretty sure that her fellow female feline, Merpel, will have some things to say about this, but understands what Judge Marerro was trying to do in illustrating the similarities between designer and painter who

"strive to please patrons and markets by creating objects that not only serve a commercial purpose
but also possess ornamental beauty."

The illustration goes to show that one's use of color in a field commerce which inhabits the world of art and design can not (and should not) be easily protected. He stated:

"No one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also staked out a claim to it as a trademark in that context. If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion. The law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise."

The AmeriKat understands the beauty of this philosophical and academic analogy, but the similarity between the two forms of art and commerce remain similar only in a vacuum. In the real world, fine art and fashion are treated differently in the eyes of the law. If fashion designs benefited from the level of protection afforded to their brothers in fine art by way of copyright, perhaps one could more easily extend this analogy - but the fact is that in the U.S. fashion designers have no protection for their design, save for the protection they can evoke by way of trade mark registration (such as Louboutin's registration) and use of copyright prints in their garments. But such a criticism from the AmeriKat of the analogy is more of a critique of the state of law in this area, not of the interpretation of the present laws.

Although Judge Marrero acknowledged that Louboutin had, in applying red colored lacquer to the soles of his shoes, created a product "so eccentric and striking that it is easily perceived and remembered", he nevertheless that

"Louboutin's claim to 'the color red' is, without some limitation, overly broad and inconsistent with the scheme of trade mark registration established by the Lanham Act. Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants. YSL has various reasons for seeking to use red on its outsoles -- for example, to reference traditional Chinese lacquer ware, to create a monochromatic shoe, and to create a cohesive look consisting of color-coordinating shoes and garments.

Presumably, if Louboutin were to succeed on its claim of trademark infringement, YSL and other designers would be prohibited from achieving those stylistic goals. In this respect, Louboutin's ownership claim to a red outsole would hinder competition not only in high fashion shoes, but potentially in the markets for other women‟s wear articles as well. Designers of dresses, coats, bags, hats and gloves who may conceive a red shade for those articles with matching monochromatic shoes would face the shadow or reality of litigation in choosing bands of red to give expression to their ideas.

The effects of this specter -- the uncertainty and apprehension it generates -- are especially acute in the fashion industry because of its grounding on the creative elements discussed above. "

David Bernstein, Yves Saint Laurent's lawyer (and yes it appears to be the very same from the Bacardi battle reported here), stated that

"This was a trademark that never should've been issued...YSL has been using red since the 1970s, other designers have used red on the soles of their shoes. They aren't doing so to confuse people, but because it is a design aesthetic."

However, according to CNN, Harley Lewin for Louboutin stated that he has never received such support from fellow attorneys, law professors and the fashion industry telling him

"This [verdict] is an abomination. Tell your client to appeal."

In two days time on 17 August, the parties will meet for a case management conference where it is reported Lewin will announce Louboutin's appeal of the decision.

The AmeriKat knew there was going to be trouble with granting an injunction in this case. Even had Louboutin managed to get past the first and second hurdles of the test (the court did not consider the first hurdle re irreparable harm because Louboutin did not demonstrate that its red sole mark merited protection) it would have been a pretty tall task to try and come up with a form of an injunction that prevented the alleged harm without being overly broad. Prohibiting the sale of any red-soled shoe ("red" being the subject of the trade mark registration) would have been too broad, i.e. what red? Louboutin argued that the Court draw a designated range above and below the borderlines of Pantone No. 18-1663 TP or "Chinese Red" and declare all stripes of red within that zone forbidden to competitors. Judge Marrero did not like that suggestion as it would have had the effect of Louboutin appropriating even more shades of red than the one at issue. What form of injunction could Judge Marrero have ever granted without it being overly broad?

Judge Marrero's decision on the color red here

Pantone's 175 new colors here

Trooping of the Color here

A Lack of Color here