After a federal court judge denied an injunction to shoemaker Christian Louboutin, which was seeking to bar Yves Saint Laurent from selling heels with red soles, Louboutin has appealed to the Second Circuit. Louboutin had sought an injunction and damages, arguing that YSL’s use of a red sole on several pairs of high-end shoes violated its trademark registration and took advantage of its “instantly recognizable” mark.
U.S. District Court Judge Victor Marrero disagreed and ruled that the Lanham Act did not allow a designer to trademark a color, which serves an “ornamental and aesthetic” function in the fashion industry.
But the court denied a motion for a preliminary injunction and indicated that had YSL filed a motion for summary judgment, Judge Marrero would have cancelled Louboutin’s trademark. Despite the statutory presumption that a federally registered trademark is valid, the court said that Louboutin’s claim to “the color red” was “overly broad and inconsistent” with the scheme of trademark registration under the Lanham Act.
“Placing off limit signs on any given chromatic band by allowing one artist or designer to appropriate an entire shade and hang an ambiguous threatening cloud over a swath of other neighboring hues, thus delimiting zones where other imaginations may not veer or wander, would unduly hinder not just commerce and competition, but art as well.”
On August 10, Louboutin filed notice of its appeal to the Second Circuit. While the case is on appeal, Judge Marrero said he would wait to decide whether to cancel Louboutin’s trademark.
In other trademark news, the Hells Angels filed a federal lawsuit in California alleging that a designer and several retailers, including Amazon, are illegally manufacturing and selling items that infringe the club’s trademarks.
At issue: a white, short-sleeved T‑shirt that reads “My Boyfriend’s A Hells Angel” on the front and features a pair of wings on the back. The shirt infringes the biker club’s three registered trademarks in violation of the Lanham Act, according to the complaint.
The suit seeks the recall and destruction of the T-shirts, an injunction against the defendants from using the Hells Angels marks, and trebled monetary damages.
To read the complaint in Louboutin v. Yves Saint Laurent, click here.
To read the court’s order denying an injunction, click here.
To read the complaint in Hells Angels v. Wildfox, click here.
Why it matters: The Louboutin case has been closely watched by members of the fashion industry, and we will continue to follow the suit as it progresses through the federal appellate court. The Hells Angels suit serves as a reminder to use caution when attempting to emulate any of the biker group’s marks, as it jealously guards its rights. It has previously filed suits against entities as varied as Saks Fifth Avenue and designer Alexander McQueen over the club’s “death head” mark on rings and clutch purses, and Marvel Entertainment over a comic book featuring the Hells Angels. “We bring these lawsuits from time to time not just to punish but to educate,” Hells Angels attorney Fritz Clapp told the LA Times. “Somebody thought erroneously that Hells Angels is a generic term.”