Caseflicks

Court of Appeals for the Second Circuit • 2012

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

696 F.3d 206 | 2012 U.S. App. LEXIS 18663

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Takeaway

In short, a color can identify a brand even in fashion, but trademark protection extends only as far as the source-identifying meaning the evidence establishes.

Background

Since 1992, Christian Louboutin had used lacquered red outsoles on high-fashion shoes, usually in sharp contrast with the rest of the shoe. He registered a red-sole trademark in 2008. When Yves Saint Laurent (YSL) introduced an all-red shoe with a red outsole, Louboutin sued and sought a preliminary injunction.

The district court denied the injunction. It reasoned that a single color could never be protected as a trademark in the fashion industry because color is functional in fashion. Louboutin appealed.

Issues

Issue #1

Whether Louboutin’s red-sole trademark can be protected in the fashion industry and enforced against YSL’s all-red shoes.

Holding

A single color can serve as a fashion trademark. Louboutin’s mark is protectable when its lacquered red outsole contrasts with the shoe’s upper, but it does not extend to YSL’s monochrome red shoes.

Reasoning

Under Qualitex, color is not categorically excluded from trademark protection. The district court therefore erred in treating every single-color fashion mark as functional. Aesthetic functionality requires a fact-specific inquiry into whether exclusive use would put competitors at a significant disadvantage unrelated to the mark’s reputation.

A single color generally must acquire secondary meaning: consumers must recognize it as identifying a source, rather than merely as a product feature. Louboutin’s advertising, sales, media attention, and consistent use showed that a red outsole contrasting with the rest of the shoe had come to identify his brand.

The evidence did not show the same source-identifying meaning when a red outsole appeared on an entirely red shoe. The court therefore used its authority under the Lanham Act to limit the registration to lacquered red outsoles that contrast with the shoe’s upper.

YSL’s all-red shoe fell outside the mark as limited, so Louboutin could not obtain the requested injunction. The court did not decide whether use of the modified mark would cause consumer confusion or whether that mark was functional.