The Ultimate Shoe-down: Christian Louboutin S.A. v. Yves Saint Laurent America
In The Wizard of Oz, Dorothy taps her ruby red slippers three times to go home. What if the ruby colour found themselves on a pair of five-inch wedged heels? If the Wicked Witch of the West could get her hands on that pair, would she then hold the power to transport herself to Kansas too?
Christian Louboutin, the famed French shoemaker celebrated by everyone from Jennifer Lopez to Carrie Bradshaw from Sex and the City, would answer in the positive. For Louboutin – and for those who swear by his stilettos as a means to elongate legs, boost confidence and even seduce men – the magical power of his shoes lies with the signature red-coloured sole.
That may not be the case any more.
Last week, a judge in the United States denied a preliminary injunction sought by Christian Louboutin against Yves Saint Laurent (YSL), another high-end French label, for producing a pair of high heels that featured red soles similar to those on Louboutins. This is the first victory in the continuing battle between these two fashion houses. Judge Victor Marrero of the Federal District in Manhattan ruled that Christian Louboutin’s trademark – “lacquered red soles” – was overly broad and therefore not likely to be protectable.
There has been no timeline released as to when the judge will come out with a final decision. Judge Marrero has asked for more time. The implications from this week’s court proceedings are two-fold: first, Yves Saint Laurent can continue producing these shoes for the time being; more importantly, though, the denial of the preliminary injunction may embolden other manufacturers to add a scarlet wash on their shoes.
Facts of the Case:
Christian Louboutin first filed a lawsuit against Yves Saint Laurent in April of this year. Louboutin argued that YSL’s red-soled shoes were “likely to cause and is causing confusion, mistake and deception among the relevant purchasing public.” That is, hoards of female shoppers at Barneys would mistake a YSL creation for a Christian Louboutin creation in their shopping frenzy. Further, the plaintiffs claimed that Louboutin was “the first designer to develop the idea of having red soles on women’s shoes” over twenty years ago.
YSL decided to countersue last month. They challenged the trademark on the red sole that Louboutin was purportedly granted. The YSL legal team took the position that the trademark should never have been granted in the first place, reasoning that no “fashion designer should be able to monopolize any colour.”
Even if a colour could be trademarked, YSL’s legal team is not convinced that thetrademark belongs to Christian Louboutin. They delved into fashion history, citing a pair of shoes from 1962 that featured the disputed red colour. The shoes were made by YSL. Further, the legal team point to real and imaginary figures like King Louis the XIV of France and Dorothy from The Wizard of Oz as sporting shoes with those very qualities that Christian Louboutin claims to be theirs exclusively.
Can a Colour be Trademarked?
Yes; but only in very specific circumstances. It is understood in American law that a colour can only be trademarked if they serve to identify the source of the product. This is all that the colour can serve.
For example, Tiffany & Co., the famed jewelry maker, owns a trademark on a blue colour produced privately by Pantone. This is colloquially known as Tiffany Blue. In addition to making women weak at the knees and hearts flutter, that colour marks the pendant or ring as made by Tiffany & Co. Veuve Cliqcout, which makes high-end champagne, owns the trademark to the orange colour that is found on their bottles. Less glamorously, Owens-Corning has trademark protection over the pink colour of its fiber insulation products.
The problem with Christian Louboutin’s trademark is that the red colour on the soles of his shoes seems to serve another purpose. It is less about identifying the source of the product than evoking a certain feeling, conjuring a kind of sensuality, elegance and panache for the wearer. In court documents, Louboutin describes it in such a way: “The location of the bright colour on the outside of a woman’s pump is said to provide an alluring “flash of red” when a woman walks down the street, or on the red carpet of a special event.”
Not convinced that the colour of the sole serves to identify the source of the product, Judge Marrero makes an apt analogy: allowing Louboutin to claim the scarlet colour as his own would be akin to prohibiting Monet from using a specific shade of blue in his Water Lilies series because another artist, say, Picasso, had been there first with his paintings from his Blue Period.
What about Copyright?
Besides pitting two of the world’s most influential shoe designers against each other, the reason why this case has garnered such intense publicity is that it marks the possible trajectory of the copyright bill that the Council of Fashion Designers of America (CFDA) has been lobbying Congress for for the last five years.
Although this case concerns trademarks while the CFDA has its sights on copyright, in fashion, the two are inextricably linked. The lacquered red soles for which Christian Louboutin claims to have exclusive rights is really comparable to the Proenza Schouler prohibiting any other designer from creating a blouse with the same cut on the sleeves as they have done in the past. The scarlet colour would mark the shoe as created by Christian Louboutin in the same way as the cut of the sleeves on the blouse would mark it as created by Proenza Schouler.
The CFDA has endeavoured for five years to push this apparel design copyright bill in Congress. Earlier in June, a new bill was proposed, whereby the threshold for copying was changed from “substantially similar” to “substantially identical” designs. It was specifically noted that similarities in colour and pattern would not count.
While this bill would pay homage to the originality of such creators as the late Alexander McQueen, it would mainly be a symbolic victory. The real outcome of a law like this, as Judge Marrero alluded to earlier this week, would be less than desirable. Should the law really tackle questions of who made the first asymmetrical dress? And should the law really try to locate the origins of the red-soled shoe?