Solomon’s Verdict on Red Shoe Soles

As I discussed in a previous post, red soles have been a hot issue to patent.

Christian Louboutin is well known for his classic red soles, and has a faithful following of women coveting his footwear. Louboutin had filed a case against Yves Saint Laurent in April 2011. A federal court has now pronounced that the French shoemaker Christian Louboutin SA can trademark its red soles.

Originally, the red soles had taken a secondary meaning and was considered to be symbolic to the brand itself. The U.S. Court of Appeals for the Second Circuit has now ruled in the favor of Louboutin.

The court limited the brand's trademark to footwear where the red sole contrasts with the color of the r
est of the shoe. This basically prevents competitors that are using a red sole, such as the YSL, to use a red sole,  but leaves open the possibility of e.g., having a red heel that would contrast to the rest of the shoe.

Furthermore, as YSL quite correctly pointed out, its s monochromatic red shoes do not infringe any trademark rights of Louboutin. YSL can therefore continue to make monochromatic shoes in a wide variety of colors, including red. David H. Bernstein of Debevoise & Plimpton LLP, YSL's rep on the case, stated:"YSL will continue to produce monochromatic shoes with red outsoles, as it has done since the 1970s."

A true Solomon’s verdict!

Red-heeled and Signature-soled – Christian Louboutin Lost His Trademark Infringement Case in NY

French designer Christian Louboutin is very unhappy with a recent New York Court decision. In this ruling, Judge Victor Marrero of the Southern District of New York stated that Louboutin cannot block Yves Saint Laurent from copying its distinctive red soles. The trademark that Christian Louboutin obtained in 2008 for “lacquered red soles” and used in women’s high fashion designer footwear is “overly broad” and therefore doesn’t offer protection.

The court rejected Louboutin’s request to forbid YSL from selling more red-soled shoes while the case was pending.  The judge found it unlikely that Louboutin would succeed with his claims for trademark infringement and unfair competition. 

The ruling stated that trademarks can be obtained for fashion purposes for a single color but only if the color is used in a distinct pattern or combination of shades. (E.g., Louis Vuitton’s LV monogram or Burberry’s signature beige plaid). But a fashion designer cannot claim trademark protection for a single shade such as the color red. 

Louboutin’s claim failed on two important points:

1. The precise color red is not identified in the registration
2. The trademark does not specify what type of lacquered coating would be protected and which type of  high fashion shoe.

 The judge also ruled that color is a basic element of fashion and therefore cannot be claimed exclusively by an individual designer.  “Awarding one participant in the designer shoe market a monopoly on the color red,” the court found,”would impermissibly hinder competition among other participants.” 

It would be, the court analogized, like depriving a painter 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.” 

The court went on to stated that if the trademark would be upheld, it would trigger endless fashion wars and hinder the legitimate competition in high fashion designer shoes. 

Louboutin is not the first one to use red in footwear. Aristocrats in the 1600s sported red-heeled shoes. A portrait of Charles II of England from 1675 shows him swearing shoes with red heels as well as red soles. Louis XIV of France made them the “it” item among Europe’s monarchs. He even issued an edict saying that only members of the nobility by birth were allowed to wear them.

Recently, red soles have brought glamor and sex appeal to footwear. Valentino Garavani  has been producing red-heeled shoes since 1969. He uses orange-like rouge that is referred to as “Valentino Red.”  In the 1970s, Yves Saint Laurent started producing the monochrome shoe, which is entirely one color — from the leather upper to the inside to the heel and the sole – in purple, blue and red. Charles Jourdan (Louboutin was his apprentice in the ’80s) also painted the soles of his shoes red. The concept is therefore far from new or innovative.

Christian Louboutin is strongly advised not the appeal. Instead, he might opt for a signature red color and trademark it as “Louboutin Red”.