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Christian Louboutin Does Not Own the Color Red
- 8/22/2011


A recent decision by a district court judge in the Southern District of New York casts doubt on the protectabilty of color as a trademark in fashion items.  The court denied a motion for preliminary injunction filed by Christian Louboutin (Louboutin) against Yves Saint Laurent (YSL) to prevent YSL from selling shoes including red outer soles.  In its decision, the court indicated that it was unlikely that Louboutin’s registered trademark for red colored outsoles on designer footwear was protectable given the ornamental and functional role that color plays in the fashion world.


In April, after failing to reach an agreement out of court, Louboutin filed suit against YSL alleging that YSL was infringing Louboutin’s trademark Registration No. 3,361,597.  The mark relates to the use of the color red on the outsoles of  women’s high fashion designer footwear.  Louboutin requested a preliminary injunction and $1 million in damages.


YSL argued that Louboutin’s mark should be canceled because it is not distinctive, is merely ornamental and is functional.  On July 22, 2010, a hearing was held on the preliminary injunction issue.


On August 10, 2011, the court denied Louboutin’s request for preliminary injunction.  The court acknowledged that red soled shoes were stongly associated with Louboutin, however, found that Louboutin’s mark was ornamental and functional, and thus, not protectable.  Specifically, the court noted that “[B]ecause in the fashion industry color serves ornamental and aesthetic functions vital to robust competition …the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection.”  Since the mark was not protectable, the court found that it was unlikely that Louboutin would succeed on its claim of trademark infringement, and thus, a preliminary injunction was inappropriate. 


In a troubling development for Louboutin, the court further made clear its inclination to cancel Louboutin’s mark outright.  Despite the fact that no summary judgment motions have been filed by either party, the court explained that it would likely grant a motion for summary judgment to cancel the mark if it were made.  Specifically the court noted that if YSL were to file a summary judgment motion for cancellation, “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’s counterclaims seeking cancellation of Louboutin’s mark.”  


Despite this rather clear rebuke, Louboutin will apparently fight on.  A Notice of Appeal to the Second Circuit was filed on August 13, 2011.  Further, Louboutin’s attorneys have made clear in public statements that they believe the court’s decision was in error and that they will prevail on appeal. 


Check back with the Ostrolenk Faber web site for updates on this case.