Louboutin v. YSL – Second Circuit misses the ‘mark’‎

Robin Barnes

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.”‎

Louboutin red sole trademark dispute gets Tiffany-twisted

Authors:  Robin Barnes and Hamad Hamad             

Whether you are a regular fashionista or a certified shoe fanatic, you probably know about Christian Louboutin’s suit against Yves Saint Laurent alleging infringement of Louboutin’s registered trademark for red soles.  After the district court denied Louboutin’s preliminary injunction request and set a hearing to consider cancelling Louboutin’s registration, Louboutin appealed to the Second Circuit. Last week, Tiffany & Co. filed a brief supporting Louboutin’s position.

You can watch this CBS News segment for a quick recap of the case.

One issue on appeal is the breadth of Louboutin’s registration, which simply recites that the “mark consists of a lacquered red sole.”  While the court’s opinion is not perfect, it astutely questioned the breadth and vagueness of this description.  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?


 Interestingly, the red color depicted in Louboutin’s registration for the color of the sole of a shoe

is not the same color used in its design mark registration,

, which makes you wonder if Louboutin even knows his own shade of red. 

Tiffany’s interest is not surprising given the trademark registrations on its famous blue boxes and little blue bags.  In an effort to protect its own blue registration, Tiffany argued that the court erred by creating a rule that a single color can never be a valid mark for fashion items.  While the court did seriously question the ability to protect a single color for fashion items, its decision was ultimately based on its determination that Louboutin didn’t have a protectable mark, not just because a single color was claimed.  Although functionality issues were addressed by the court and by Tiffany, what’s interesting here is the discussion and concerns over the broad assertion of trademark in the single color “red.”

The issue of the breadth of a single claimed color is interesting because of the contrast between Louboutin’s and Tiffany’s registrations.  Tiffany’s registrations claim “robin’s-egg blue.”  Would a similar level of specificity have satisfied the Louboutin court?  Who knows, but Tiffany could at least rely on a distinct shade of blue if it were in Louboutin’s position, perhaps alleviating the court’s concerns about an overly broad and vague registration.

Even more interesting (in a non-legal sense) is the Tiffany twist: the law firm that wrote Tiffany’s amicus brief also prosecuted its robin’s-egg blue registrations AND Louboutin’s red sole registration.  Was there a strategic decision by counsel to go broad in Louboutin’s application and narrower in Tiffany’s?  It’s also possible (perhaps probable?) that Louboutin instructed his counsel to seek broad trademark protection for “red.”  Until the Second Circuit rules, however, it’s too early to draw concrete conclusions for prosecution strategy, but this distinction suggests that specificity in single color mark descriptions (at least in the fashion industry) may avoid future litigation complications.

Protection under the Copyright Fashion Bill (ID3PA)

Author:  Jason Nardiello

The Innovative Design Protection and Piracy Prevention Act (HR.2511, formerly the IDPPPA, now called the ID3PA) is a proposed amendment to the Copyright Act. The bill (which I will refer to as the “Fashion Bill”) is now in its fourth version and if it passes, it will be the most significant law for both the apparel design industry and individual designers.

The aim of the Fashion Bill is to address a “loophole” in current IP protection for apparel. Under current copyright law, companies engaged in the wholesale copying of apparel--essentially pirates--do so with little threat of liability. This is the result of years of judicial decisions which, in the aggregate, now provide a substantial degree of immunity from copyright infringement for apparel copyists. In contrast, copying literature or music to the extent that apparel is currently copied would certainly be considered unlawful under copyright law.

On July 15, 2011 Congress again heard testimony in support of the passage of the Fashion Bill, which seeks to address this gap in the protection of apparel. The testimony and supporting documents can be found here.

Apparel protected under the Fashion Bill

To be subject to protection, the article of apparel must be new and novel. The types of apparel protected are:

•  men’s, women’s or children’s clothing

•  underwear

•  outerwear

•  accessories (gloves, footwear, headgear, handbags, purses, wallets, duffel bags, suitcases, tote bags, and belts)

How protection is obtained under the Fashion Bill

In order to be protected under the Act, the article must be created after the enactment of the Fashion Bill.

Further, although registration is not required, design owners must include a notification on the article’s label along with the year and owner’s name.

What is not protected

•  Designs more than 3 years old, measured from the time the design is made public

•  Designs created prior to the enactment of the Fashion Bill

•  Designs that are “substantially identical” to a protected design

•  An advertisement, book, periodical, newspaper, photograph, broadcast or motion picture of an article of apparel (if you photograph a dress that is a protected design, the photograph would not infringe the Fashion Bill)

Other features of the Fashion Bill and some thoughts

To address objections that earlier proposed versions of the Fashion Bill were too protective of leading designers and would hinder competition, proponents of the Bill agreed to inclusion of the narrower “substantially identical” standard for infringement, which both advances the agenda of stopping pirates while still permitting “inspired by” designs . Under this standard, only a true copy would likely be actionable under the Fashion Bill.  For instance, companies such as Forever 21, which do not hide the fact that they copy hit designers and sell the clothing at a fraction of the original price of the authentic article, would likely find themselves in violation of the Fashion Bill, should it pass. Can you tell which dress is the original created by top designer, Jonathan Saunders and which is the one coped by Forever 21?

Here’s a hint: The dress on the right was offered for sale for $22.80 while the one on the left sold for over $1000. This kind of “reproduction” would probably not be considered merely “inspired by” but rather a substantially identical copy of a protected design.

If the Fashion Bill finally becomes law, the two biggest battle grounds for litigation will likely be centered on (1) what constitutes “substantially identical” and (2) what design is considered “new” or “novel” sufficient to trigger protection.

Through the author’s contact with general counsel of some luxury goods companies, future articles will discuss how some proponents of the Fashion Bill view “substantially identical” and “new” or “novel” under the Act. You may be surprised.