Fashion Law, Trademark Law – Christian Louboutin wins split decision on trademark infringment dispute with YSL over red-soled shoes

Avoiding what could have been a disastrous ruling, the 2nd U.S. Circuit Court of Appeals ruled that fashion designer, Christian Louboutin, can enforce a trademark in red-soled shoes unless the entire shoe is red (here is the Google Scholar version of the ruling).

As noted in our previous blog post, the lower District Court declined to grant an injunction to stop YSL from selling red-colored shoes with red soles. In so doing, the District Court had “serious doubts” that Louboutin’s trademark of red-soled shoes was protectible because that court believed color served a function in the fashion industry, unlike something like pink-colored insulation, where the pink color does not make the insulation work better and only serves to identify the Owens-Corning brand.

Had the 2nd Circuit Court agreed with the District Court’s reasoning, Louboutin’s ability to stop competitors from selling red-soled shoes would have been severely limited.  However, the 2nd Circuit Court held that there was no need to treat the fashion industry in a different manner than any other industry.  Louboutin’s trademark was analyzed like any other trademark, and the fairly unique status of red-soled shoes being linked to Louboutin entitled this trademark to be valid and enforceable.  The 2nd Circuit Court did limit the scope of the trademark to red-soled shoes where the upper was a different color.  Although there was some basis to limit the trademark in this manner (customer surveys, testimony from YSL executives), if Louboutin was entitled to a trademark for red-soled shoes, the rationale for carving out an exception for all-red shoes does seem a little suspect.

As a result, the 2nd Circuit Court did not bar YSL from selling their shoes because YSL’s entire shoe was red (see this Daily Mail story for a comparison of the shoes).  Since the point of this lawsuit was to stop YSL from selling its shoe, the lawsuit actually failed in its purpose.  However, the 2nd Circuit Court’s ruling did validate Louboutin’s efforts to enforce the trademark over any other red-soled shoes with different color uppers.

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