United States District Court, Southern District of New York, 2011 WL 3505350, Christian Louboutin S.A. v. Yves Saint Laurent AM., Inc.

The District Court denied Christian Louboutin (Louboutin)'s request for preliminary injunctive relief against Yves Saint Laurent (YSL)'s marketing of red-soled shoes on the grounds that Louboutin's trademark for red-soled shoes was not likely protectable. In its decision, the court focused on the aesthetic functionality of single color marks in the fashion industry.

In 2011, YSL offered four shoes with red-colored outsoles, namely, the Tribute, Tribtoo, Palais, and Woodstock models, as part of its Cruise collection. Each of these models was for a monochromatic color design in which the sole matched the color of the upper portion of the shoe and was offered in red as well as other colors (e.g., entirely blue). YSL previously offered an all-red Tribute model in its 2008 collection.

Click here to view image of YSL 2008 Tribute.

In early 2011, Louboutin approached YSL to discuss the use of red-colored soles on these models and, after YSL refused to remove the challenged models from the market, Louboutin filed a lawsuit for, inter alia, trademark infringement based on its trademark rights in red-colored soles for designer footwear, including U.S. Reg. No. 3,361,597. YSL counterclaimed for cancellation of the Louboutin trademark registration.

Click here to view image of Louboutin's Red-Sole Trademark.

Louboutin also moved for preliminary injunctive relief to prevent YSL from marketing any shoes featuring a red-colored sole during the pendency of the action.

On August 10, 2011, the District Court for the Southern District of New York denied Louboutin's motion on the grounds that Louboutin's trademark rights for the red-colored sole were not likely protectable. Further, the court concluded that because the red sole mark was ornamental and functional in the fashion industry market, it would be compelled to grant a motion for summary judgment brought by the defendant with respect to the counterclaims for cancellation of Louboutin's trademark.

In finding that the mark was not likely protectable, the court relied heavily on the doctrine of aesthetic functionality and analogized fashion design to artistic expression, in particular paintings. The court concluded in the same way that an artist should not be barred from employing a color, neither should a designer be barred, despite conceding that red-colored soles were closely associated with Louboutin. In its decision, the court distinguished the availability of trademark protection for single-color marks in industrial fields as opposed to more design-centric fields such as fashion.

Louboutin has appealed the court's decision to the U.S. Court of Appeals for the Second Circuit.