The Second Circuit here in New York has just issued its long anticipated decision in the Louboutin v. Yves Saint Laurent case. (Decision here: Louboutin v YSL_Sept 5 12). Having just skimmed the decision, it appears that Louboutin can score this as a victory, but only partially.
Here are some excerpts from the opinion, written by Judge Cabranes:
“We conclude that the District Court’s holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011) (“Louboutin”), is inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995) (“Qualitex”), and that the District Court therefore erred by resting its denial of Louboutin’s preliminary injunction motion on that ground.”
In other words, yes, you can have a trademark in a single color, even in the fashion industry.
“We further conclude that Louboutin’s trademark, which covers the red, lacquered outsole of a woman’s high fashion shoe, has acquired limited “secondary meaning” as a distinctive symbol that identifies the Louboutin brand. As explained below, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, we limit the trademark to uses in which the red outsole contrasts with the remainder of the shoe (known as the “upper”). We conclude that the trademark, as thus modified, is entitled to trademark protection. Finally, we conclude that, because the monochrome design employed by YSL is not a use of Louboutin’s modified trademark, we need not, and indeed should not, address whether YSL’s use of a red outsole risks consumer confusion or whether the Louboutin mark, as modified, is ‘functional.'”
The court also held that “the District Court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality and was therefore error.”
In other words, yes Louboutin, has an enforceable trademark, but because YSL’s shoe was monochrome (non-contrasting), it loses on the infringement question. Had YSL’s shoe had a red sole and a contrasting upper, the result may have been quite different.
I think Louboutin should look at this as a victory, considering that their color mark has been much under attack for some time now. At least now Louboutin knows that (at least in the US), the mark is valid and enforceable (as long as the infringing shoes have red soles and uppers of a contrasting color).
This is my takeaway from a very quick skimming of the opinion. Further analysis will follow as soon as I’ve had a chance to give it a thorough reading. Stay tuned… (Question of the day: will either party appeal?)
Hat-tip to my friend and colleague Lorraine Fleck for alerting me to the issuance of the decision.