Christian Louboutin v. Yves Saint Laurent: Trademark, Color, and Functionality
They are a staple of the fashion industry. They are a symbol of aristocracy and elegance. Any man (or woman) with the means and a deserving significant other would love to get his hands on a pair. Synonymous with “class” and “luxury”, you know them as Christian Louboutins. I will never understand the hype, but the proof is in the pudding, or better yet—in the trademarked red-lacquered outsoles of Louboutin shoes.
At the risk of boring you and sounding too “lawyerly”, allow me to delve into some fundamental trademark law principles. This will make for a better explanation of how Christian Louboutin was able to trademark his red outsoles and prevail over Yves Saint Laurent in a recent lawsuit over Louboutin’s famous color mark.
What is a Trademark and Who Cares About Functionality?
A trademark is a word, name, symbol, or other designation that is distinctive of a person’s goods or services. The purpose of a trademark is to identify a source of goods or services (e.g., Louboutin) and distinguish it from others (e.g., Yves Saint Laurent). See where I’m going with this? Trademark law is also about efficiency. Imagine how tedious and absurd it would be to have to ask your significant other to buy you “that milk chocolate bar filled with caramel, peanuts, and nougat”, instead of simply asking for a Snickers bar.
Convenience aside, trademarks work to protect consumers and producers. They protect consumers from source-confusion of various goods. For example, there’s always the possibility that your significant other mistakenly buys you a Baby Ruth chocolate bar instead of the requested Snickers bar. In the alternative, trademark law protects senior producers from dilution (or damage) of the value of their trademarks caused by other junior producers who use confusingly similar marks in an attempt to reap the benefits of the goodwill and fame of senior marks. Imagine how Mars (the Snickers manufacturer) would feel if a new chocolate company starts using $nickerz as its trademark to attract clientele by suggesting affiliation with the world-renowned Snickers bar. This would be especially harmful and unfair to the Mars company if $nickerz bars were inferior in quality and taste because it would damage Mars’ reputation for deliciousness.
I only address the consumer-producer paradigm because, somewhere along this tightrope, the interests converge, and functionality is the common denominator. In the context of aesthetic product features such as colors (which can be trademarked—keep reading), functional marks are ones that would put competitors at a “significant non-reputation related disadvantage” if exclusively appropriated by one producer. Such functional features cannot be trademarked. The rationale is to prevent trademark law, which seeks to promote competition, from instead inhibiting competition by allowing producers to monopolize a useful product feature. Thus, the functionality defense marks the convergence at which both consumers and producers are being protected from monopolies on useful product features disguised as trademarks. Now let’s get back to Louboutins.
Christian Louboutin v. Yves Saint Laurent
The appealed-lawsuit between Christian Louboutin and Yves Saint Laurent (“YSL”) stemmed from YSL’s alleged use and infringement of Louboutin’s iconic trademark: the distinctive red-lacquered outsole. For all of you rugged “manly” men who could care less about fashion, a prototypical example is the two-tone stilettos, which pair the red outsoles with another solid color such as black on the rest of the shoe. For all of you visual learners, feel free to peep the photo above.
Louboutin sued YSL for infringing this trademark after learning of YSL’s line of monochromatic red shoes, which utilize red on the outsoles as well as the rest of each shoe. In other words, the whole shoe is red. Not surprisingly, YSL raised a functionality defense, calling into question the legitimacy of Louboutin’s trademark. YSL argued, as the District Court held, that no color can ever be trademarked in the fashion industry because all colors are a competitive necessity in a field that revolves around aesthetics. Oddly enough, this case turned out to be a win-win scenario for both Louboutin and YSL.
The United States Court of Appeals for the Second Circuit reversed the District Court’s holding and concluded that Louboutin’s red outsoles serve as a valid trademark. The court based its conclusion on the well-settled Supreme Court rule that a color can be trademarked if it acquires enough distinctiveness that people would generally associate that color with a particular source of goods. Seeing as how iconic Louboutin’s red bottoms have become, it’s no wonder why the court decided in Louboutin’s favor.
But I wasn’t lying when I said that this case turned out to be a win-win for both parties. Even though the court deemed the outsoles to be a valid trademark, it also decided that Louboutin’s trademark is limited “to uses in which the red outsole contrasts with the remainder of the shoe (known as the ‘upper’).” Therefore, YSL’s monochromatic red shoes were not found to be an infringing use of Louboutin’s mark.
Ladies, you all know what this means: if you want a pair of red-bottomed, fancy-looking stilettos, you still have to pay (or find a significant other who is willing to pay) a pretty penny for Louboutins. Or, you can always do away with the “bougie” two-tone look and settle for YSL’s unicolored pumps instead. The choice is yours. For all of you Fashionistas, the Louboutin case means two things: first, you will have to spend a ton of money in advertising and promoting your aesthetic product features if you want to trademark them. Secondly, do not try and trademark only one color as uniformly applied to your apparel because you will fail miserably. Remember, the legal inquiry will always be about competitive necessity.
 The fashion and entertainment industries are technically one in the same. Fashion is a subset of the broader entertainment field.
 See 15 U.S.C. § 1127.
 Snickers is arguably one of the most iconic trademarks in the world, next to Coca Cola and Nike.
 See Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 696 F.3d 206, 219-220 (2d Cir. 2012).
 See 15 U.S.C. § 1052(e)(5).
 See TMEP §1202.02(a)(ii).
 See Christian Louboutin S.A, supra note 4, at 212.
Image by Arroser under Attribution-Share Alike 3.0 Unported license.