Shoemaker Christian Louboutin will have to suffer a competitor’s red-soled shoes just a bit longer, it seems. In a cheeky opinion that references “Dorothy’s famous ruby slippers,” paraphrases Walt Whitman’s Leaves of Grass and quotes a Jennifer Lopez song verbatim, federal Judge Victor Marrero of the Southern District of New York has denied a motion for preliminary injunctive relief brought by Plaintiff Christian Louboutin S.A. against world-famous fashion house Yves Saint Laurent (“YSL”). Louboutin originally filed suit against YSL in April, asserting that four shoes from YSL’s Cruise 2011 collection (the Tribute, Tribtoo, Palais and Woodstock, to be specific) infringed Louboutin’s federally-registered lacquered red sole trademark (the “Red Sole Mark,” an example of which is depicted here). For its part, YSL counter-claimed for cancellation of the trademark, alleging that the Red Sole Mark is ornamental, functional and that the registration was secured by Louboutin only through fraud on the Trademark Office.

In his August 10, 2011 ruling on Louboutin’s preliminary injunction motion, Judge Marrero refused to order YSL to stop selling the four accused shoes during the pendency of the lawsuit. First, the judge determined that the Red Sole Mark is easily recognizable—which will come as no surprise to fans1 of the plaintiff’s high-priced, celebrity-favorite shoes. In particular, Judge Marrero noted the widespread fame of the mark and innovation of Christian Louboutin himself in selecting it:

Christian Louboutin’s bold divergence from the worn path paid its dividends. Louboutin succeeded to the point where, in the high-stakes commercial markets and social circles in which these things matter a great deal, the red outsole became closely associated with Louboutin. Leading designers have said it, including YSL, however begrudgingly. Film stars and other A-list notables equally pay homage, at prices that for some styles command as much as $1,000 a pair… When Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once. For those in the know, cognitive bulbs instantly flash to associate: “Louboutin.”… No doubt, then, Christian Louboutin broke ground and made inroads in a narrow market. He departed from longstanding conventions and norms of his industry, transforming the staid black or beige bottom of a show into a red brand with worldwide recognition at the high end of women’s wear, a product visually so eccentric and striking that it is easily perceived and remembered.

Despite these findings, Judge Marrero denied Louboutin’s motion, because he found the shoe company is not likely to succeed on the merits of its case. In fact, Judge Merrero expressed “serious doubts that Louboutin possesses a protectable mark.”

After providing a thorough history of color trademarks (Owens-Corning, Qualitex) and background on the doctrine of aesthetic functionality, the judge nonetheless found that the “fashion world” is “unique” and plays by different rules in contrast to other industries. In particular, Judge Merrero found that “in fashion markets color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes.” The judge compared the “creative energies” of a shoe designer to those of a painter, and found that “allowing one artist or designer to appropriate an entire shade” would “unduly hinder not just commerce and competition, but art as well.” In other words, “conferring legal recognition on Louboutin’s claim raises the specter of fashion wars.” Interestingly, Judge Marrero applied the “cost” inquiry of the functionality test (which looks to whether a product feature “affects [the product’s] cost or quality”) in a novel way, noting that although “adding the red lacquered finish to a plain raw leather sole is more expensive, not less,” for high fashion designers such as the parties, “the higher cost of production is desirable because it makes the final creation that much more exclusive, and costly.” And, notably, Judge Merrero did not address the possibility of consumer confusion in his opinion at all.

In an interview on Wednesday, Louboutin’s lawyer admitted to being “disappointed” with the ruling and claimed that although he had not yet had a chance to confer with his client, he believed Louboutin would “win hands down” on an appeal. No doubt those in the fashion industry will continue to watch the case closely—first, to see whether an appeal is in fact filed; and then, assuming there is an appeal, to see whether Judge Merrero’s distinction between the fashion industry and the rest of the world when it comes to color trademarks will be upheld. (Merrero’s ruling comes just one day after Owens-Corning—the original color trademark registrant—filed its latest suit in U.S. federal court in Georgia (Case No. 1:11-cv-02597) against a U.K.-based company (Kingspan Industries Ltd.) that dared to offer competing pink-colored insulation products.)