By Caroline Ahn

As fashionistas, celebrities and other shoe aficionados will attest, Christian Louboutin designs fabulous high end footwear. Besides the design of the shoes, what makes Louboutin shoes stand out? The bright red outer soles. Many of us have seen photos of celebrities and socialites donning high heels with the red soles and immediately recognize that they are wearing Louboutin shoes. Although Christian Louboutin has invested a great deal of resources in creating and promoting his brand, including obtaining a trademark registration for a lacquered red sole for women’€™s high fashion designer footwear, the validity and enforceability of the Red Sole trademark is in jeopardy due to a recent legal dispute with competitor Yves Saint Laurent.

Following the unveiling of Yves Saint Laurent’s Cruise 2011 collection that featured four shoes bearing bright red outsoles as part of a monochromatic design, Christian Louboutin, Christian Louboutin S.A. and Christian Louboutin, L.L.C. (collectively, “€œLouboutin”€) filed suit against Yves Saint Laurent America, Inc. and others (collectively, “YSL”€) alleging trademark infringement and counterfeiting, among other claims. Louboutin then moved to enjoin YSL from selling the accused shoes during the pendency of the lawsuit.

While recognizing the fame of Louboutin’€™s signature red-soled shoes, on August 10, 2011, the Hon. Victor Marrero, a U.S. District Court judge for the Southern District of New York denied Christian Louboutin’€™s motion for preliminary injunction and refused to preclude its competitor YSL from selling certain shoes featuring red-colored outer soles.

Judge Marrero indicated that the heart of the litigation lies in the validity of Louboutin’€™s Red Sole trademark and stated that Louboutin’s claimed trademark is not likely to be protectable. Weaving the lyrics of Jennifer Lopez and prose of Whitman in his opinion, Judge Marrero acknowledged Louboutin’s “€œbold divergence from the worn path… [and] its dividends. Louboutin succeeded to the point where… the red outsole became closely associated with Louboutin. Leading designers have said it, including YSL, however begrudgingly.”

Judge Marrero acknowledged Louboutin’s innovation, his departure “from longstanding conventions and norms of his industry, transforming the staid black or beige bottom of a shoe into a red brand with world wide recognition at the high end of women’s wear”€ and “€œthe broad association of the high fashion red outsole with him as its source€,” but concluded that trademark protection “€œshould not have been granted”€ to Louboutin’s Red Sole trademark registration.

According to Judge Marrero, “€œin 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, even if it has gained enough public recognition in the market to have acquired secondary meaning.”

As a comparison, Judge Marrero posed a “€œfanciful hypothetical” of Picasso (known for the “€œthe color of melancholy€,” the hallmark of his Blue Period) complaining about Monet’s use of a distinctive indigo color for depicting water in Monet’s paintings of water lilies. Just as it would be improper to preclude Monet selling or displaying his paintings that use the distinctive color blue, Judge Marrero determined that Louboutin’s claim to the color red is overly broad and awarding one shoe designer a “monopoly on the color red would impermissibly hinder competition.”

Whereas courts have approved the use of a single color as a trademark for industrial products, e.g. green-gold for pads used on dry cleaning process (Qualitex) and pink for fibrous glass insulation (Owens-Corning Fiberglass), Judge Marrero distinguished this case by stating that fashion is dependent on colors. In fashion markets, “€œcolor serves not solely to identify sponsorship or source, but it is used in designs primarily to advance expressive, ornamental and aesthetic purposes.”€ Further, Judge Marrero noted that the color red serves to give Louboutin’s shoes “€œenergy”€ and having the red soles affects the costs of the shoes since it would be more expensive to apply the color to the soles, rather than not.

Two days after the Judge Marrero’s Order, Louboutin appealed the Order to the U.S. Court of Appeals for the Second Circuit. Following a conference held on August 19, 2011, the Court stayed the case pending the resolution of the appeal.