The Southern District of New York recently issued a decision in Christian Louboutin S.A. v. Yves Saint Laurent America, Inc.1 addressing the use of the color red to trademark shoes. This case is being closely watched by members of the fashion industry and other brand owners, whose ability to use single colors to distinguish their products or services may be restricted in the future.

In April 2011, the luxury French shoe and bag designer Christian Louboutin S.A. (“Louboutin”) sued fashion house Yves Saint Laurent (“YSL”), accusing it of making shoes that infringed Louboutin’s well known, lacquered red soles for women’s designer shoes (click here to see Fig. 1). Louboutin obtained a trademark registration in the U.S. Patent and Trademark Office for its lacquered red soles in 2008. Louboutin challenged four shoe models made by YSL with bright red soles used as part of a monochromatic design in which the shoes are entirely red (or entirely blue, etc.) so as to create a seamless look (click here to see Fig. 2).

The Court recently denied Louboutin’s request for a preliminary injunction order barring YSL from selling its red soled shoes, on the basis that Louboutin would be unlikely to prove that its own lacquered red soles do in fact operate as a trademark, even if the public primarily associated those soles with Louboutin. The Court also indicated that Louboutin’s federal registration for its lacquered red soles could be vulnerable to cancellation as overly broad. Louboutin has now appealed this decision to the Second Circuit.

In issuing its order, the Court refused to recognize that a single color alone used on fashion items can function as a trademark because of “the broad spectrum of absurdities that would follow.”

The Court conceded that “distinct patterns or combinations of shades that manifest a conscious effect to design a uniquely identifiable mark embedded in the goods,” including patterns such as repeated logos or fabric prints (for example, the Burberry check), can be protected as a trademark. The Court also accepted that a single color as applied to industrial products – such as Owens Corning’s pink insulation – can be protected, so long as the color is not functional (in other words, the color is not essential to the purpose of the product and does affect the cost or quality of the product), such that there is no competitive need for it.

However, in the case of color applied to fashion items, the Court found that color largely serves ornamental or aesthetic purposes, which are vital to robust competition in the fashion industry. In the case of Louboutin’s shoes, in a declaration filed with United States Patent and Trademark Office, the designer Louboutin noted that his red soles “happened by accident as I felt the shoes lacked energy so I applied red nail polish to the soles of a shoe.” He also noted that “[t]he shiny red color of the soles has no function other than to identify to the public that the shoes are mine.” Nevertheless, the Court held that the red outsole, while serving as a strong source identifier, also served a variety of non-trademark functions, including decoration and beauty because of its “bright and unexpected color.” Based on this, the Court found that it is unlikely that Louboutin could appropriate the color red for exclusive use for shoes, drawing an analogy to the art world, where it noted that Picasso, creator of the Blue Period, could not have stopped Monet from using a distinctive indigo color to depict the water surrounding his water lilies.

At the end of its decision, the Court ordered Louboutin to show cause why it should not cancel its federal trademark registration for “a lacquered red sole on footwear,” although resolution of this issue will be deferred until the Second Circuit rules on Louboutin’s appeal of the Court’s decision.

Did the Court go too far in finding Louboutin’s use of color to be functional? Should Louboutin’s trademark rights be limited to a particular shade of lacquered red or to use of red in conjunction with non-red shoe uppers only? A ruling on the appeal will likely be made early next year, and may have far reaching implications for the fashion industry and color mark owners generally. The fashion industry, in particular, relies strongly on trademark law for protection of fashion items because U.S. copyright laws currently provide little to no protection for fashion designs, and proposed amendments to these laws have been thwarted and/or are still before Congress.