Christian Louboutin is not about to let its very recognizable red sole get stepped on. The flash of color under spikey heels has become an identifying mark of the designer's high-priced shoes. Last August, Louboutin sought to protect that red sole in a case that pitted the iconic design house against another fashion legend, Yves Saint Laurent, who introduced shoes that were red all over, including the soles. But Louboutin was rebuffed by US District Judge Victor Marrero.
Hizzoner ruled that Christian Louboutin did not have a lock on the color red. In his opinion, Marrero wrote that "Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers could do while allowing Louboutin to paint with a full palette. Louboutin would thus be able to market a total outfit in red, while other designers would not."
On Tuesday, Christian Louboutin was back in court, this time at the U.S. 2nd Circuit Court of Appeals in New York, in an attempt to defend its right to exclusively use red, and specifically a tone it calls "China Red," on the soles of it shoes. Louboutin's attorney, Harley Lewin, told a three-judge panel that "Christian Louboutin has created one of the more iconic trademarks of the 21st century. Louboutin turned a pedestrian item into a thing of beauty."
Opposing attorney David Bernstein, arguing on behalf of Yves St. Laurent, countered "Artists of this type need the full palette of colors available. In order to compete and compete fairly, we need red. We don't want to find out that we can make green, blue, purple shoes... but we are enjoined from making red."
Louboutin actually was granted a federal trademark for its red-soled shoes in 2008. It followed a precedent that suggests a color can be trademarked when it is a single, distinct color used only to identify or promote a brand. Examples include Owens Corning's pink insulation and Tiffany's teal blue packaging.
Jeannie Suk, a Harvard professor of law, wrote in the New York Times that "the Supreme Court has previously held that a color alone could be a trademark... because the color served to identify the maker of the product — and had no other function." According to Suk, however, "if the color is a useful feature in a product... it can't be a trademark, even if it is source-identifying, because excluding competitors from a useful feature would be anti-competitive." Suk says Louboutin's case might be stronger if the company wanted to trademark "China Red" rather than "red," but it seems to be standing on the side of the broader color. Fashion, writes Suk, "remains a realm in which copying is perfectly legal — unless a design is deemed a trademark, that is." Suk suggests that more lawsuits could be likely in the fashion world unless laws are revised to give the it "limited industry-specific protections."
Another more subtle reason for Christian Louboutin's protective posture may be the fact that it has been battered by counterfeiters. In May 2010, Louboutin launched a "Stop Fake Christian Louboutin" website in an effort to stem the tide of cheap knockoffs. The company pointedly says on the site: "Keep in mind that when something is too good to be true, that's usually what it is worth. Websites selling low low priced Louboutin looking shoes (so called “cheap Louboutin”) are probably not selling the real thing. We make no shoes in Asia. There is no factory in China that can sell legitimate shoes to anyone as we do not use any factories in China."
A brand's trademark does not guarantee protection, but having the trademark legally registered makes it easier to prosecute counterfeiters.
As for Louboutin's appeal, Fordham law professor Susan Scafidi generally agreed with professor Jeannie Suk. Scafidi told the Wall Street Journal, "there are broader issues raised by this case, and they're that fashion designs really have no protection. The industry has been trying for 100 years, but intellectual property law still stops right at fashion's door."