The Genteel
February 27, 2021



The Design Exchange's upcoming Christian Louboutin exhibition will celebrate the famed French designer's 20-year foothold as one of the most prolific shoe designers of this century. Guests will glimpse at exhibits ranging from initial sketches and raw materials to prototypes, recreations of Louboutin's Parisian studio and the collection of shoes Louboutin produced in collaboration with filmmaker David Lynch for the 2007 "Fetish" exhibition.

Christian Louboutin YSL Design Exchange
Christian Louboutin - the magician.

But over the last two years, Louboutin's infamous red-sole shoes have been the focus of not just shoe connoisseurs and museum exhibitions, but at the centre of a lawsuit with Yves Saint Laurent. Major fashion brands don't often publicly lawyer-up against each other, as most high-profile cases end up settling under confidential terms (most recently, Lululemon and Calvin Klein's dispute over design patent rights to yoga pants). The Louboutin and Yves Saint Laurent case represented a rare opportunity to debate essential legal principles that deeply affect the fashion industry.

The fundamental issues of the case have caused a visceral response within the fashion community: does a fashion house have the right to claim exclusivity over a colour on clothing or accessories? Whereas some fashionistas were incredulous that anyone could equate a red-bottomed shoe with anyone other than Louboutin, others questioned what long-term impact such exclusivity could have on the fashion industry.

If fashion houses staked out exclusivity to their own colour(s), would the creativity of other designers' be legally stunted? And, if exclusivity to certain colours is granted to particular companies, should there be a system of checks and balances to protect the creativity of others? With such far-reaching implications for the fashion industry, a great deal rode on this case beyond the fate of the two litigants.

In 2008, Christian Louboutin was granted a trade-mark registration for "lacquered red sole on footwear" by the United States Patent and Trademarks Office (USPTO), giving the company exclusive US-wide rights to use red lacquered soles on "women's high fashion designer footwear." With the trade-mark registration in its pocket, Yves Saint Laurent's S/S 2011 collection had Christian Louboutin seeing red. The collection included a selection of monotone shoes: purple shoes with purple soles, green shoes with green soles and red shoes with red soles, prompting Christian Louboutin to launch a trade-mark infringement suit against Yves Saint Laurent in New York State, seeking an injunction and US$1 million in damages. (An injunction is a court order that restrains a party from continuing its questionable conduct. In this matter, Christian Louboutin asked the court to force Yves Saint Laurent to stop selling its allegedly infringing shoes.)

If fashion houses each staked out exclusivity to their own colour(s), would the creativity of other designers' be legally stunted?

Yves Saint Laurent hit back, seeking to invalidate Louboutin's trade-mark registration, which would strip Louboutin of all exclusive rights to red-bottomed soles in the US, a critical and lucrative market. Indeed, Louboutin had a lot riding on this decision; if Yves Saint Laurent was successful, other fashion houses would be allowed to use red-bottomed soles. Fearing a spill-over effect, Tiffany & Co. carefully monitored the case (and made its own submissions to the court supporting Louboutin's position), as the decision could have wider implications affecting Tiffany's rights to its beloved little blue box. (Tiffany & Co. owns a US trade-mark registration for robin-egg blue in respect of its jewellery boxes.)

Initially, Christian Louboutin suffered a blow at the trial stage as the judge declined its request for a preliminary injunction, allowing Yves Saint Laurent to continue selling the footwear in question. Although the trial judge recognised that in some instances colour can act as a trade-mark if it has acquired secondary meaning, it did not grant Louboutin this leniency.

Interestingly (and as we later see, erroneously), the trial judge made a significant distinction that raised some finely plucked eyebrows: the fashion industry may be exempt from some well-established legal principles. The trial judge deemed colour to be integral to the fashion industry: colour defines seasons, tastes and trends; and it advances expressions of ideas within the fashion industry, rather than acting as an identifier of source of the design. Therefore, the trial judge held that claiming exclusivity over "red lacquered soles" for women's shoes would be prejudicial to the fashion industry as a whole.

However, it is a well-established legal principle that if a company consistently uses colour as part of its product to the point that it becomes a distinguishing feature to the consumer and enables the consumer to associate the product with the company - ta-dah - that colour can function as a trade-mark. Louboutin demonstrated to the court that it had exclusively used red-bottomed soles for the last 20 years and had acquired significant secondary meaning, even becoming part of pop culture.

Christian Louboutin YSL Design Exchange
Christian Louboutin shoes on display at
the Design Museum's exhibit in 2012.

Not content with the trial judge's decision, Christian Louboutin appealed to a higher court to challenge the trial judge's decision. Ultimately, the appeal decision forced Yves Saint Laurent and Louboutin to co-exist in the marketplace. Although the Court of Appeal acknowledged that a single colour can function as a trade-mark and that Louboutin had acquired the requisite secondary meaning, the scope of Louboutin's exclusivity was restricted. The court opined that Louboutin's acquired distinctiveness only in respect of shoes whose colour was in stark contrast to the red-coloured soles. Therefore, Yves Saint Laurent's use of red shoes with red soles was not an infringement of Louboutin's trade-mark rights.

As part of the decision, Christian Louboutin was required to carve back the scope of protection granted in its US trade-mark registration to reflect the court-ordered limitations to Louboutin's exclusivity: exclusivity to red-coloured soles on shoes whose colour were in stark contrast. Although Yves Saint Laurent opted not to appeal this decision further, the parties are currently embroiled in a dispute before the USPTO on how to best satisfy the appeal court's decision with respect to the colour claim.

Unlike the Design Exchange's upcoming exhibition, fashion isn't always pretty. As the Christian Louboutin case demonstrated, when it comes to intellectual property, designers and brands are prepared to fight tooth and nail for their respective creative rights.



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