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Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.

United States Court of Appeals for the Second Circuit
696 F.3d 206 (2d Cir. 2012) modification denied, 709 F3d 140 (2d. Cir. 2013) (2012)
ELI5:

Rule of Law:

A single color can serve as a legally protected trademark in the fashion industry when it has acquired secondary meaning and serves as a source identifier. However, that protection may be limited to the specific use that acquired distinctiveness, such as when the color contrasts with the rest of the product.


Facts:

  • In 1992, Christian Louboutin began painting the outsoles of his high-fashion women's shoes with a high-gloss red lacquer.
  • Over the years, the red lacquered outsole became a signature of the Louboutin brand, often featured on shoes worn by celebrities and fashion icons.
  • Louboutin invested substantial resources in promoting the red sole, which became closely associated with his brand in the fashion community.
  • Yves Saint Laurent (YSL) has a history of designing and selling monochrome shoes, where the entire shoe is the same color, dating back to the 1970s.
  • In 2011, YSL began marketing a line of monochrome shoes, including a version that was entirely red, from the upper to the insole, heel, and outsole.
  • Louboutin learned of YSL's all-red shoe and demanded that YSL cease marketing it, asserting that it infringed on his trademark.
  • After negotiations between the two fashion houses failed, Louboutin initiated a legal action.

Procedural Posture:

  • Christian Louboutin obtained U.S. Trademark Registration No. 3,361,597 for a lacquered red sole on footwear in 2008.
  • Louboutin sued Yves Saint Laurent (YSL) in the U.S. District Court for the Southern District of New York, alleging trademark infringement and related claims.
  • Louboutin filed a motion for a preliminary injunction to prevent YSL from selling footwear with red outsoles.
  • YSL responded with counterclaims seeking the cancellation of Louboutin's trademark registration.
  • The District Court denied Louboutin's motion for a preliminary injunction, holding as a matter of law that a single color can never serve as a trademark in the fashion industry.
  • Louboutin appealed the denial of the preliminary injunction to the U.S. Court of Appeals for the Second Circuit.

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Issue:

Is a single color, specifically a red lacquered outsole on women's high-heeled footwear, capable of being a protectable trademark under the Lanham Act?


Opinions:

Majority - Cabranes

Yes, a single color can be a protectable trademark if it has acquired secondary meaning, but that protection is not absolute. The court rejected the district court's per se rule that a single color can never be a trademark in the fashion industry, finding it inconsistent with the Supreme Court's precedent in Qualitex. The court held that Louboutin's red sole had acquired secondary meaning and was a valid mark, but only where the red outsole contrasts with the color of the shoe's upper. The court reasoned that it is the specific, source-identifying contrast that the public has come to associate with Louboutin. Because YSL's shoe was monochromatic red, it did not feature this contrast and therefore did not infringe upon Louboutin's mark as modified by the court.



Analysis:

This decision solidifies the application of the Supreme Court's Qualitex ruling to the fashion industry, affirming that color alone can be trademarked if it acquires secondary meaning. However, the court's modification of Louboutin's trademark sets a crucial precedent that protection may be limited to the specific context in which distinctiveness was established. This nuanced approach balances the protection of a famous mark against the anti-competitive risk of granting a monopoly on a color, ensuring competitors can still use the color in ways that do not trade on the markholder's reputation, such as in a monochromatic design.

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