United States Court of Appeals for the Second Circuit, Decision of 5 September 2012, No. 11-3303-cv, Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.

Although the Second Circuit reversed the portion of the lower court’s decision finding that a single color can never function as a trademark in the fashion industry, the appellate court also narrowed the scope of the Christian Louboutin (Louboutin) red sole trademark to shoes having a contrasting upper portion thereby allowing Yves Saint Laurent (YSL) to escape any claims of infringement.

Louboutin initially sought a preliminary injunction against YSL’s sale of shoes featuring red-colored soles in view of Louboutin’s common law and federal trademark rights in its red sole trademark.

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The YSL shoes in question were monochromatic in color, featuring both an upper portion of the shoe and sole in the same red color.

On August 10, 2011, the District Court for the Southern District of New York denied Louboutin’s request for injunctive relief, finding that Louboutin’s red sole mark was likely not protectable and concluded that single color marks can never serve as a trademark in the fashion industry.

Louboutin appealed the decision to the Second Circuit with mixed results.

Importantly, the Second Circuit reversed the lower court’s finding that a single color can never serve as a trademark in the fashion industry.

The Second Circuit also concluded that Louboutin, by virtue of its advertising expenditures, media coverage and sales success, as well as survey evidence, had acquired secondary meaning in the red sole mark. Even YSL’s CEO acknowledged that "[i]n the fashion or luxury world, it is absolutely clear that we recognize the notoriety of the distinctive signature constituted by the red sole of LOUBOUTIN models in contrast with the general presentation of the model, particularly its upper, and so for all shades of red."

The court, however, found that the evidence of record only established that Louboutin had acquired secondary meaning for uses in which the red sole contrasted with the upper portion of the shoe but not in instances where the upper portion of the shoe did not contrast with the sole.

Accordingly, the Second Circuit modified the red sole mark such that the scope of protection for the mark is limited to those instances in which the red sole contrasts with the upper portion of the shoe.

Because the YSL shoes in question were monochromatic and did not have a contrasting red sole, the Second Circuit concluded that YSL’s use of the color red on the soles of its monochromatic shoes was not a use of the red sole trademark (as modified by the court) and affirmed the lower court’s denial of preliminary injunctive relief.

Thus, while the decision allowed Louboutin to affirm the validity of its red sole mark as modified, the modification also cleared YSL of any infringement allegations