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| Robin Barnes |
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| Hamad Hamad |
Last November, we wrote an article on the Louboutin red sole trademark case against YSL shortly after Tiffany filed its amicus brief supporting Louboutin’s position at the Second Circuit. Our primary focus was the difference between Tiffany’s and Louboutin’s trademark registrations. Tiffany’s registrations claimed a fairly specific color, namely “robin’s-egg blue,” while Louboutin’s registration simply and broadly claimed “red.” We noted that, at least until the Second Circuit ruled on the issue, it would be advisable to claim colors with some specificity in trademark applications.
As we previously noted, while not perfect, the opinion did a good job of criticizing the breadth and vagueness of the color description in Louboutin’s registration. Now that the Second Circuit has ruled, we feel that we should reexamine the district court’s opinion in light of its characterization by the Second Circuit.
According to the Second Circuit, the district court held “that a single color can never serve as a trademark in the fashion industry” and that “in the fashion industry, single-color marks are inherently ‘functional.’” That’s not how we read the district court’s decision. As we previously noted, the district court did analyze the question of whether a single color could serve as a trademark in the fashion industry and spent considerable time on the functionality issue, but ultimately did not issue any direct holding or per se rule on the viability of single-color marks in this context. Specifically, the district court denied Louboutin’s request for a preliminary injunction (which is based on a likelihood of success standard) because the court had “serious doubts that Louboutin possesses a protectable mark.” Had the district court held that a single color can never serve as a trademark in the fashion industry, it would have stated that Louboutin did not possess a protectable mark rather than merely expressing doubt.
Putting aside the issue of how far the district court did or did not go, it seems the Second Circuit missed the mark by not going far enough to limit Louboutin’s trademark rights. The Second Circuit reversed the district court’s order to the extent that it denied Louboutin trademark protection (which it really did not at the preliminary injunction stage, but might have at a later stage of the proceedings) and limited the mark to a red outsole contrasting with the other parts of the shoe (and ordered that Louboutin’s registration be amended accordingly). Since YSL’s allegedly infringing shoes were monochromatic, the Second Circuit affirmed the denial of the injunction based on its ruling that Louboutin’s rights were limited to contrasting uppers. However, the Second Circuit did not address the claimed “red” color itself or the type of footwear to which the red color is applied.
The district court spent a good number of paragraphs discussing the vagueness and ambiguity of Louboutin’s trademark with respect to both of these issues. Let’s first take a look at the color dimension. Here’s what we said last November concerning the vagueness and breadth of the claimed color:
Imagine the difficulty for competitors – are fire engine, cherry, and brick red all covered by Louboutin’s registration? There are difficulties on the consumer side too – can multiple shades of red establish sufficient secondary meaning to support the registration, and can the average person even tell the difference between certain shades?
Or perhaps it is “Chinese Red” (Pantone No. 18-1663 TP) that is covered by Louboutin’s registration, as Louboutin asserted in his preliminary injunction reply brief? Oh, but wait, after YSL pointed out that it never used Chinese Red, Louboutin insisted that YSL used a (different) shade that was still too close. Which shade? We don’t know. Apparently, neither does Louboutin. At one point in argument, Louboutin asked the district court to pick a particular range of colors above and below Pantone No. 18-1663 TP and find that anything within that range of hues and shades of red would be infringing its trademark. The district court declined because it found that such an approach would have “the effect of appropriating more than a dozen shades of red-and perhaps other colors [such as pink and orange] as well.”
It appears that the real problem is not that Louboutin’s registration claimed a single color. The real problem is that Louboutin’s registration claimed an entire spectrum of red colors.
And what about the type of footwear? The registration states “women’s high fashion designer footwear.” What is high fashion? As the district court pointed out, Louboutin sued Zara in France. And while Zara makes some nice, trendy stuff, it’s not exactly the type of brand that would be considered “high fashion.” And what types of shoes exactly? Would flats and flip-flops be included? What about low-heeled shoes? At one point Louboutin tried to limit his registration to “high-heeled” shoes, but as the district court also pointed out, the registration doesn’t include that limitation.
Here’s something else to consider: what about design-your-own shoe websites and stores? Would a customer be liable for infringing Louboutin’s mark for using Nike ID to make Air Force 1’s with a glossy red sole and a black upper? Would a customer be liable for infringing Louboutin’s mark for ordering a custom pair of sandals to be made with a glossy red sole and brown straps? Would the manufacturers have any liability?
Perhaps these are bad analogies because designers would know better than to pursue an infringement claim against a competitor’s shoe that is clearly not going to cause customer confusion, right? Maybe not, since Louboutin sued YSL for a monochromatic shoe that wasn’t lacquered and didn’t use the Chinese Red that Louboutin now claims is his shade of red. Customers and competitors alike are left without proper guidance as to which hues or shades of “red” are off limits.
Louboutin’s registration was too broad and too vague and remains so even after the Second Circuit’s ruling. Although the Second Circuit did well to at least limit the registration to contrasting uppers, it could have taken this opportunity to rein in a clearly overbroad and vague registration. Having passed on that opportunity, did the Second Circuit effectively hand Louboutin an exclusive palette of the entire spectrum of “red” to be used on shoe outsoles as long as the uppers are a contrasting color? We’re not suggesting that Louboutin should necessarily be tied to a specific Pantone No. (although, interestingly, some foreign countries require a specific Pantone No. when a color claim is made in a trademark application), but Louboutin’s registration should have at least been limited to a word-description of the particular hue or shade of red that he intended to claim. In the end, the Second Circuit’s opinion does not shed much light on the boundaries of color claims in the fashion world, but we still think is advisable to claim color marks with some specificity. After all, Tiffany seems to be doing just fine with “robin’s-egg blue.”
