Fashion brands – particularly those that use color as a designation of origin – were relieved to find that that color marks are alive and well in the fashion space.   That is part of what the Second Circuit Court of Appeals held yesterday in its long awaited decision in Christian Louboutin, S.A. et al v. Yves Saint Laurent America Holding, Inc. et al. (11 cv 3303).  Click here to see the full decision.

Louboutin, owner of a federal trademark registration for its red sole mark, sued YSL on April 7, 2011 alleging trademark infringement, counterfeiting, unfair competition and a host of related claims concerning YSL’s monochrome red shoe.   On August 10, 2011, the District Court denied Louboutin’s request for a preliminary injunction.  In doing so, the District Court found that single-color marks in the fashion industry are inherently “functional” and would likely be held invalid.  Louboutin appealed.

The Second Circuit undertook a close examination of the history of color mark protection, and the affirmative defense of “aesthetic functionality”.  The Court held that there was no per se functionality rule in any industry, including fashion, and noted that a highly fact-specific analysis must be undertaken.   The Second Circuit undertook such an analysis and determined that Louboutin’s red sole mark was a valid and protectable mark, albeit in modified form.   Specifically, the Court found that Louboutin had established the requisite secondary meaning when the red sole was contrasted against a different color “upper”, but not where the red sole was part of a monochrome red shoe – such as that offered by YSL.   The Second Circuit thus exercised its authority to modify the mark under the Lanham Act, 15 U.S.C. Section 1119.  

While the Second Circuit revived Louboutin’s red sole mark, it also allowed YSL to escape infringement by its modification of the mark.   The case was remanded in part so that YSL’s counterclaims could be addressed.