August 11th, 2011
As I mentioned in a previous post, Christian Louboutin sued Yves Saint Laurent in April, alleging that YSL’s use of red colored soles infringed Louboutin’s trademarked red sole.
The court yesterday denied Louboutin’s request to grant a preliminary injunction restricting YSL from marketing the shoes at issue during the pendency of the action. The court held that Louboutin did not establish a likelihood of succeeding on the merits because Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.
Overview of the case is below; full opinion can be read here.
The USPTO approved registration of Louboutin’s red sole mark in 2008. In early 2011, Louboutin approached YSL about a number of shoes in YSL’s Cruise 2011 Collection that incorporated red soles of a shade that Louboutin thought closely resembled its trademark protected color mark. YSL refused to remove the shoes from the market, so Louboutin filed suit against YSL for federal claims of trademark infringement and counterfeiting, false designation of origin and unfair competition and trademark dilution, as well as state law claims for trademark infringement, trademark dilution, unfair competition and unlawful deceptive acts and practices. YSL then asserted counterclaims seeking cancellation of the Red Sole Mark on the grounds that it is not distinctive, ornamental, functional, and was secured by fraud on the PTO, as well as damages for tortious interference with business relations and unfair competition.
The issue at hand was whether, despite Louboutin’s “innovation” and widespread public association between the brand and the red sole, trademark protection should have been granted.
To obtain a preliminary injunction, Louboutin must establish (1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor].
The court looked to whether trademark infringement had occurred, first evaluating whether the mark at issue should be protected by trademark. The registration of the red sole mark gives rise to a statutory presumption of protection; however, this presumption can be rebutted. A color can be a protected trademark when it has acquired a secondary meaning associated with the brand, but it may not serve a function aside from being a brand identifier. Specifically, when related to fashion, the court noted, “color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes.” Some color marks used in fashion have merited trademark protection, usually being a combination of colors in a distinctive pattern that identifies the brand (think Louis Vuitton or Burberry).
The court here addressed the narrow issue of whether a single color mark can be granted for use in the fashion industry. By comparing fashion designers to painters, the court recognized the importance of the use of color in this specific industry and the role of color serving a creative, rather than commercial, purpose. “No one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also staked out a claim to it as a trademark in that context. If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion. The law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise.” Additionally, Louboutin himself acknowledges that the red sole serves nontrademark functions. Specifically, it is “sexy,” “engaging” and “attracts men to women who wear [the] shoes.” The court also found that granting of trademark protection over the mark would significantly hinder competition. Hence, Louboutin could not prove a likelihood of success on the merits of the case, so the court denied the preliminary injunction.
Of note is the fact that the court did not actually find in favor of YSL because YSL had not brought a motion for summary judgment. The court did note that if YSL had brought summary judgment, ”the Court’s conclusion that the Red Sole Mark is ornamental and functional in its fashion industry market would compel it to grant partial summary judgment in favor of YSL on YSL’s counterclaims seeking cancellation of Louboutin’s mark.”
The court did order all parties to appear at a “case management conference on August 17, 2011 at 2:00 p.m., at which Louboutin shall show cause why the record of this action as it now exists should not be converted into a motion for partial summary judgment cancelling Louboutin’s trademark at issue here for the reasons stated in the Court’s decision above.”