Ruling Rendered Between Louboutin and Yves Saint Laurent

The contestants on Project Runway aren’t the only ones being judged this week. As Mercedes-Benz Fashion Week starts in New York, a year-long battle between Christian Louboutin and Yves Saint Laurent comes to a close in court. The dueling design firms, both from Paris, have been involved in a trademark standoff since Louboutin sued Saint Laurent in 2011 when Saint Laurent’s resort collection featured an entirely red shoe. And the question arose, was Saint Laurent’s shoe stepping on the toes of Louboutin’s brand?

An all red shoe might not seem like that big of a deal to people outside of the fashion tents, but for fashionistas in the trenches and on the red carpet, the matter touches their souls (er... soles). Court papers state that since 1992, luxury shoes and accessories maker Louboutin has branded all of his iconic high heels by using a shade known as “china red” for its soles. When Saint Laurent debuted its all red suede shoe in a hue close to the one used by Louboutin, the designer gloves came off and the matter went to court.

According to Bloomberg Businessweek, David Bernstein, a lawyer for Debevoise & Plimpton LLP who represents Yves Saint Laurent, told the court that Saint Laurent has used red outsoles as far back as the 70’s “long before Mr. Louboutin began using them.” Last August, U.S. District Judge Victor Marrero agreed and ruled in favor of Saint Laurent. However, the decision handed down this week by the U.S. Appeals Court in Manhattan partially reserves an earlier ruling by the lower Federal Court.

“The district court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality,” U.S. Circuit Judge Jose Cabranes wrote in this week’s decision. “We conclude that the trademark, as thus modified, is entitled to trademark protection.”

Does that mean Louboutin or companies like UPS can copyright a color? Not exactly. Blogherald explains that “in general copyright protects artistic expressions (literature, movies, photos, music, etc.), patents protect ideas and inventions and trademark protects any “mark” associated with a business.”

No one can copyright a color, but they can trademark the way the color is used in brand identification to prevent confusion in the consumer market. Because of the UPS trademark, no other delivery service can transport parcels in a brown truck or outfit their employees in brown uniforms. Likewise, the court ruled that no other shoe company could market shoes with china red soles and a contrasting color for the upper portion of the footwear by granting Louboutin the trademark to the concept that is cohesive with his brand.

"We hold that the lacquered red outsole, as applied to a shoe with an 'upper' of a different color, has 'come to identify and distinguish' the Louboutin brand and is therefore a distinctive symbol that qualifies for trademark protection," Cabranes wrote in a 31-page opinion. However, the court granted an exception to the use of red soles when the upper portion of the shoe is the same color red, thus allowing Saint Laurent the opportunity to continue manufacturing and marketing the red shoe from the resort collection.

"Louboutin dodged a big bullet here," said intellectual-property lawyer Marc Reiner to the Wall Street Journal. "A loss could have been catastrophic for the company."

Louboutin’s lawyer Harley I. Lewin said they were "tremendously pleased" with the court's decision to uphold its trademark, but "we're disappointed on the monochrome carve-out." Bernstein declared the decision, "a complete victory. The court has conclusively determined that we have the right to make these shoes."

Image courtesy of Louboutin