“Oh, I used to be disgusted. And now I try to be amused. But since their wings have got rusted, you know the angels want to wear my red shoes.” Elvis CostelloIn the music world, angels covet Elvis Costello’s red shoes. In the world of high fashion, the coveted red shoes come exclusively from Christian Louboutin. At least that’s what Louboutin thinks. For over twenty years, Louboutin has outfitted its luxury high heels with a lacquered red outsole. It claims to have built that colorful feature into “one of the most prominent brand identifiers in the United States and throughout the world.” Louboutin even got the United States Patent and Trademark Office to recognize trademark rights in the red lacquered outsole, granting Louboutin a coveted Federal Trademark Registration.
But Yves St. Laurent was unimpressed and undeterred. Despite Louboutin’s trademark and consistent efforts to police its trademark against infringers, YSL launched a red sole shoe of its own. Louboutin predictably sued, claiming the usual litany of evils and damages that typically populate trademark lawsuits. Louboutin argued that YSL’s red shoes would confuse consumers and weaken its strong trademark, all at the cost of irreparable injury to the heart and soul of Louboutin’s red sole trademark.
YSL fought back with a barrage of defenses. Among them was YSL’s claim that Louboutin should not have a monopoly on the color red for shoes. All shoe makers should have the entire spectrum of colors to work with, according to YSL. Giving Louboutin sole control of red soles would put YSL and the likes of Jimmy Choo and Monolo Blahnik, not to mention Thom McCann (I’m dating myself here) at a competitive disadvantage. In technical trademark parlance, YSL argued that Louboutin’s Red Shoe Trademark was “aesthetically functional.”
Trademark professionals and judges know that trademarks don’t just protect words or logos. Trademarks can also cover product shapes and colors. Owens Corning’s “pink” for home insulation is a famous example of a color trademark. But the Supreme Court has drawn a line on the rights of companies to use trademark law to claim a color as their own. In certain circumstances, a single color used for a product can deserve trademark protection, when consumers have come to associate that color as the source of the product, just as they associate “Golden Arches” with McDonalds. The Court has cautioned, however, that “functional” uses of color cannot be trademarked. Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995). ( In that case, the alleged color trademark was a particular shade of green/gold used by Qualitex for dry-cleaner press pads.)
In particular, the Supreme Court in Qualitex endorsed in general terms the doctrine of “aesthetic functionality,” a concept that had vexed and continues to vex judges and lawyers. Under the doctrine of aesthetic functionality, an aesthetic feature of a product can be functional in the sense that it serves a purpose beyond identifying a brand as being sold by a certain company.
The Supreme Court left the ironing out of the aesthetic functionality doctrine to other cases and other trademarks.
The Louboutin v. YSL case is the latest and most prominent example of the challenges courts face when called upon to grapple with the concept of aesthetic functionality. The trial court denied Louboutin’s request to put a stop to YSL’s use of red soles. According to the court, Louboutin’s red sole is aesthetically functional–shoemakers such as Louboutin would be put at a competitive disadvantage if red is removed from their design palettes.
Now Louboutin is appealing that ruling. The lawyers for each side argued their positions last month, and a decision is expected later this year.
So as we wait for the other shoe to drop, we can listen to Mr. Costello and dream of strolling the sidewalks of 5th Avenue or the Champs Elysees in Louboutin and YSL.
QUOTE OF THE DAY
“Whenever I’m in a situation where I’m wearing the same as 600 other people and doing the same thing as 600 other people, looking back, I always found ways to make myself different, whether it be having a red lining inside of my jacket, having red shoes, it hasn’t changed.” Jeremy Irons