Picture yourself at an event in an elegant room at the Pierre or at a table in a vulgar New York City club. In both places, you will probably spot at least one person wearing them. The lacquered red soles catch your eye, and you instantly wonder whether the owner has a trust fund or spent an entire pay check in order to afford them. It doesn’t matter if they are covered in ten yards of faux ostrich fur. All anyone cares about is the red sole. The red sole screams, “Women, be jealous! Men, be impressed! I am chic and powerful. My shoes say so.” Although most fashion savvy people might have bet their lives that Christian Louboutin’s red sole is a legitimate trademark, Judge Victor Marrero ruled otherwise in August 2011.
This summer, Judge Marrero denied Christian Louboutin’s request that Yves Saint Laurent stop selling shoes with red soles. Despite the fact that the U.S. Patent and Trademark Office issued Louboutin a trademark on red soles in 2008, Judge Marrero stated that one designer should not be able to have a “monopoly” on a color.
On October 17, 2011, lawyers for Christian Louboutin filed their first brief to the U.S. Court of Appeals for the Second Circuit arguing that Judge Marrero made “errors of law in determining that Louboutin’s red outsole mark was likely invalid.” Although the judge conceded that the red sole has become “closely associated with Louboutin,” it would be unfair to prevent other designers from using that color red.
If the YSL red soles caught your eye while you were dancing at a club, and you thought, “Christian Louboutins,” this could arguably prove that the lower court was wrong. Louboutin’s counsel stated in its brief, “The court below appears not to understand that trademarks are based on consumer recognition, and a word, symbol, color or design cannot act as a trademark unless the public recognizes it as an identifier of the source of a particular good or service.”
Basically, the central question is: Would the average consumer be confused as to the source when looking at the YSL shoes?
Aside from consumer confusion, Louboutin’s lead counsel, Harley Lewin of McCarter & English LLP, has argued that YSL’s red-soled shoes will dilute Louboutin’s brand and cause irreparable harm. Louboutin’s main concern is that other designers will follow YSL’s lead and prevent the public from associating red soles with his brand. This could effectively destroy Louboutin’s goodwill, which he has been maintaining since 1992 when he first swiped the color red on the soles of his shoes.
It is noted in the brief that Judge Marrero concluded that permitting fashion designers to trademark colors would hinder competition in the fashion industry. But the United States Supreme Court held in Qualitex Co. v. Jacobson Products Co. that a color can be trademarked as long as it has acquired secondary meaning (e.g. robin’s egg blue = Tiffany & Co.). Would women across the country spend hundreds (sometimes thousands) of dollars on red-soled shoes if the color did not have secondary meaning?
If a red sole indicates to the public that one is wearing an expensive, stylish brand, then Christian Louboutin’s trademark is arguably one of the most powerful trademarks in the world today.
The power of the red sole might fade away if Louboutin is unable to prevent others from copying him. Louboutin’s counsel compared the red sole to the Burberry plaid and the Gucci stripes, which are both legitimate trademarks. “Outstripping them all has been the Red Outsole Mark. Its trademark status has been conferred upon it by the consuming public,” Louboutin’s counsel stated in its brief.
WWD reported that Lewin stated, “All the briefs from both sides are on a schedule that the Court of Appeals agreed with. Considering what is at stake, it is probably fair to assume a ruling sometime in early spring, if not earlier.”
For those who will be attending glamorous affairs next spring, think twice before purchasing a pair of Louboutins as a way to denote wealth and prestige. The red sole might appear on many designers’ shoes and no longer convey the message it does today.
UPDATE: WWD reported on October 24, 2011 that Tiffany & Co. has filed a brief, known as an amicus curiae, in support of Christian Louboutin’s appeal to reverse Judge Marrero’s decision. Tiffany is not necessarily taking Louboutin’s side, but is rather focusing on the notion that a color can be trademarked.