Christian Louboutin denied preliminary injunction against Yves Saint Laurent America
In a highly significant decision affecting the fashion industry, Christian Louboutin ("Louboutin") was denied a preliminary injunction last week on 10 August 2011, that he sought against Yves Saint Laurent America ("YSL") in Christian Louboutin S.A. v Yves Saint Laurent America, Inc.et al.
YSL have used a shade of red on the outsoles of several models of monochrome shoes. Louboutin sued for infringement of his U.S. trade mark registration for a lacquered red outsole on footwear. Louboutin's claims included a claim for trade mark infringement, counterfeiting and trade mark dilution. YSL’s various counterclaims included a claim for cancellation of Louboutin’s trade mark registration. YSL claimed, inter alia, that Louboutin's registration should be cancelled as it was not distinctive, and was ornamental, functional and secured by fraud. Louboutin then requested the court grant a preliminary injunction, to stop YSL from marketing the monochrome shoes.
In this judgement, United States District Judge Marrero voiced concerns about not stifling artistic freedom, encouraging fair competition and expressed he believed fashion designers and painters to "stem from related creative stock". After considering a hypothetical dispute between Monet and Picasso over the colour of water, Judge Marrero held that each fashion designer should be able to freely choose "every pigment of the spectrum" when producing artful works. Why should Louboutin be able to stop other designers from picking "color (sic) from every streak of the rainbow" when Louboutin could "paint with a full palette"?
Judge Marrero was also concerned that similar claims may be made for a singular colour being used on other parts of shoes (including sports shoes!) and even other fashion items like "inner linings, collars, or buttons on coats, jackets, or dresses in both women's and men's apparel" (Any ideas, anyone?).
Things seemed to really collapse for Louboutin when he proposed that the Court draw a designated range both above and below the borderlines of Pantone No. 18-1663 TP, and declare all other stripes of red within that zone be forbidden to competitors. The problem with this was that Louboutin's registration didn't claim these colours for the soles of high-heeled shoes, rather it simply claimed the colour red used on the soles of “high fashion” footwear. The proposal made in court went far beyond the injunction Louboutin was after.
Judge Marrero also said that even if the trade mark had acquired “secondary meaning”, he believed it unlikely that Louboutin could prove the red outsole is entitled to trade mark protection. This is interesting, particularly because the mark is registered in the UK, on the basis of distinctiveness acquired through use.
It is doubtful that this will be the last we hear of this case, particularly because of the notoriety Louboutin’s shoes have developed. We will have to wait and see.
For more information or to discuss your Intellectual Property issues, please contact Rebecca Dimaridis.
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