Chistian Louboutin couldn’t prevent Yves Saint Laurent from selling red soled shoes, in a decision handed down from the United States Court of Appeals, 2nd Circuit, earlier this week.  Originally, Louboutin tried to prevent his competitor, Yves Saint Laurent, from copying his signature-red soled shoes by filing a million dollar trademark infringement, unfair competition, and false designation of origin lawsuit this April.  Allegations were that the Yves Saint Laurent shoes would confuse and mislead customers that are already familiar with the infamous Louboutin red bottoms.

Louboutin argued that his registered trademark entitles his red soled shoes to trademark protection.

The lower court decided that this registered trademark would likely be held invalid, because single-color marks are inherently “functional” in the fashion industry.  The Second Circuit reversed the order of the District Court, though, holding that the fashion industry is an exception to the Supreme Court’s protection of a single color.  Thus, YSL couldn’t be prevented from selling monochrome red shoes with red soles.

Louboutin sells about 240,000 pairs each year in the United States alone, with revenues of about $135 million.  One pair generally costs $100s but can sell in the $1,000s.  The judge commented on Louboutin’s bold divergence from other paths and how brilliant and eye dropping a glimpse of a beautiful pair on the red carpet make a statement, but stopped short of allowing them to be trademarked.  That would be taking it too far and hinder competition in an impermissible way.

Fashion and clothing designers often have many questions about their intellectual property rights.  If you are in the fashion industry, and want to know how trademarks and copyrights affect your business, seek the advice of an intellectual property attorney with experience in Entertainment Law.

Filed under: Civil Litigation, Trademarks by Yau Jo-Anne Thursday, October 25th, 2012