Christian Louboutin has been designing expensive women’s shoes with a distinctive red sole since 1992. In 2008, Louboutin obtained a US trademark registration for what was called in the register the ‘Red Sole Mark’. The 2011 cruisewear collection from the design house founded by Yves Saint Laurent (YSL) featured a number of shoes entirely in a similar colour, including their soles. Louboutin sued.
Marrero USDJ was asked to enjoin YSL from selling the red shoes but refused to do so: Christian Louboutin SA v Yves Saint Laurent America Inc. (SDNY, 10 August 2011) [Link available here]. He had ‘serious doubts’ that Louboutin’s mark was genuinely protectable. Colour alone may sometimes be protectable, but not typically, and not where protection would significantly hinder competition. Giving Louboutin a monopoly over the colour red would be like saying that Monet couldn’t use blue because Picasso cornered the market on it in his Blue Period. Even if valid, the Red Sole Mark only extended to a particular Pantone number; acceding to Louboutin’s request for protection of a zone of related shades was unworkable.
The judge clearly had fun in considering ‘the broad spectrum of absurdities that would follow’ granting the injunction: among the authorities cited is a 2009 song in which Jennifer Lopez extols her Louboutins.