These Heels Were Made for Walking: Christian Louboutin S.A. v Yves Saint Laurent America Inc.

Last year, TheCourt.ca tackled the increasingly heated battle between two luxury fashion houses, Christian Louboutin and Yves Saint Laurent (YSL). Christian Louboutin, the famous French shoe designer best known for his heels with the red sole, sued Yves Saint Laurent for trademark infringement, claiming more than $1 million in damages. The battle began when Yves Saint Laurent came out with its Spring 2011 line, which featured monochromatic shoes. Although the shoes came in a variety of colours, Louboutin took issue with the red heels; the outer soles were painted in the same lacquered red that Louboutin had been using for 20 years to signify his brand. The facts, as summarized in the earlier commentary, follow:

Louboutin argued that YSL’s red-soled shoes were “likely to cause and is causing confusion, mistake and deception among the relevant purchasing public.”…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.

At trial, Justice Victor Marrero of the Federal District Court in Manhattan denied a preliminary injunction sought by Christian Louboutin, stating that the trademark was overly broad because a single colour could never be protected as a trademark in the fashion industry. Justice Marrero held that granting trademark protection to the colour red would provide a monopoly over the colour in a way that would stifle the creativity of other designers. It was a bit disingenuous to suggest that Louboutin was seeking trademark protection over the colour red, however. Rather, he was seeking trademark protection over the colour red used on the outer sole of a heel. Regardless, the tension visible in all intellectual property disputes— the protection of creators’ rights versus ensuring the public’s access to seek inspiration from other creators in order to regenerate, reproduce, and engage in new creative enterprises — is very much at play in this case.  Louboutin appealed the decision of Justice Marrero, and the Appellate Court issued its decision on September 5^th, 2012.

In its decision, the Appellate Court determined that colour can be the subject of trademark protection if it acts as a symbol that distinguishes a product and identifies its source.  The Court stated that the purpose of trademark law is to protect both the public, and the creator of the business enterprise with which the mark is associated. A mark can achieve this when it leads a consumer to think about the brand rather than the product itself. The public is protected from deceit by ensuring that the mark is associated with one particular brand; the creator of the business enterprise is protected by ensuring that he is able to “enjoy business earned through investment in the good will and reputation attached to a trade name.” After explaining this general purpose of trademark law, the Court went on to outline the two-stage analysis for assessing trademark infringement. The first stage requires determining whether the mark merits protection. This is done by inquiring whether the mark is distinctive either inherently (because it’s intrinsic nature identifies a particular source) or by acquiring a “secondary meaning” in the public mind. If the mark is distinctive, the second stage of the analysis asks whether the defendant’s use of the mark is likely to cause consumer confusion. At this stage, if the defendant can show that the mark is functional, this will act as a defense to an infringement claim.

In this case, the Court concluded that the mark was not simply a red outer sole in any circumstance, but a red outer sole contrasted with a different colour on the remainder of the shoe. The Court had little difficulty finding that this mark had acquired secondary meaning in the market so as to render it distinctive:

 “It was used so consistently and prominently by the designer that it had become a symbol, ‘the primary significance’ of which was ‘to identify the source of the product rather than the product itself. By placing the colour red in a context that seemed unusual, and deliberately tying that color to his product, the designer created an identifying mark firmly associated with his brand.”

Because the Court narrowed the mark that Louboutin sought to protect, it did not need to go on to assess the second stage of the analysis. Furthermore, because YSL designed a monochromatic shoe, it could not infringe Louboutin’s mark, which required a contrast. Interestingly, Louboutin’s description of the mark in the trademark registration did not mention the contrast between the outer sole and the shoe. The description simply stated: “The colour red is claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear.” In response, the Court stated:

 “Since their development in 1992, Louboutin’s shoes have been characterized by their most striking feature: a bright, lacquered red outsole, which nearly always contrasts sharply with the color of the rest of the shoe” [emphasis added].

It seems that the Court revised the description of the protectable mark as contained in the trademark registration to facilitate a compromise between the two fashion houses: Louboutin could retain exclusive use of its red sole on a contrastingly coloured shoe, while YSL could continue to produce its monochromatic line of footwear. On October 16^th, YSL applied to withdraw its counterclaims against Louboutin (YSL had argued that trademark protection should never have been granted to Christian Louboutin in the first place). It looks as though the stiletto wars are coming to an end, at least for the time being.

The Appellate Court’s judgment suggests that it was particular attune to the lack of adequate intellectual property protection for the fashion industry. Particularly, the Court recognized that the use of colour is not simply ornamentation, which is not the proper subject of trademark protection, but could also be “a tool in the palette of a designer” used to distinguish the designer’s brand. It will be interesting to see whether this case leads to legislative change in the creation of sui generis protection for the fashion industry. For example, the Council of Fashion Designers of America has been lobbying congress for better protection, specifically copyright protection, and has the following to say in its 2011 Annual Report:

Throughout the year, the CFDA continued to work closely with the American Apparel and Footwear Association to lobby for the Innovation and Design Protection and Piracy Prevention Act (IDPPPA), which proposes three years of copyright protection for “unique and original designs.” The legislation, if passed, would for the first time allow creative designers to benefit from legal protections, and at the same time continue to ensure the competitiveness of the U.S. apparel and footwear industry as it delivers fashionable and affordable goods to the public.

Canada also seems to lack sufficient protection for the fashion design industry. While some might argue that the current intellectual property regime (specifically, copyright, trademark and patents) can adequately provide protection to creations by fashion designers, others suggest that the current regime does not protect fashion design and, consequently, this area is ripe for statutory intervention . This case should prompt us to think about the ways in which, if any, fashion design is different from other creative enterprises (i.e. cinematographic works, logos, inventions) and whether this warrants a different kind of protective regime. For example, the fashion industry is susceptible to the mass-production of knock-off items which force designers to drive down their prices to compete with their less expensive look-alikes. While the problem of knock-offs may also plague other creative areas (i.e. paintings), the fashion designer is (arguably) less protected, or may have a more difficult time accessing what protections are available, than other kinds of creators precisely because the established intellectual property jurisprudence has not had occasion enough to consider the challenges posed by the world of fashion design. In thinking about whether sui generisprotection is warranted, we might want to consider the significance of the fashion industry. Fashion design is an integral part of arts and culture. Since it plays a central (though often overlooked role) in both individual and collective expression –expression that can be political and symbolic but is always communicative—it may warrant a greater degree of protection (or a more easily accessible system of protection) for creators than what is currently available on either side of the border. Perhaps the Appellate Court’s decision is step—or even a confident strut—in this direction.