Christian Louboutin has a reason to celebrate just in time for Fashion Week–and not just because his namesake shoes will undoubtedly be flooding the streets of New York this time tomorrow.
WWD is reporting that after one of the most drawn out suits in fashion history, the New York federal court of appeals has awarded Louboutin the right to trademark protection over his, well, trademark red soles.
From the opinion:
We see no reason why a single-color mark in the specific context of the fashion industry could not acquire secondary meaning―and therefore serve as a brand or source identifier―if it is used so consistently and prominently by a particular designer that it becomes a symbol, “the primary significance” of which is “to identify the source of the product rather than the product itself.”
So all’s well that ends well, right? Well… not exactly. The court’s ruling included one pretty significant stipulation: Louboutins are now protected from knockoffs–except for when the entire shoes are red. Which, as you’ll recall, was the case with those all-red YSL pumps, which prompted the suit in the first place. So the YSL case, which now has a narrower scope concerning the use of all-red shoes (soles included) will be kicked back to a lower court.
UPDATE: YSL just issued the following press release:
Today, the U.S. Court of Appeals for the Second Circuit directed that final judgment be entered in Yves Saint Laurent’s favor on all of Christian Louboutin’s claims, and affirmed the district court’s denial of Louboutin’s request for a preliminary injunction to prevent YSL from selling monochromatic women’s shoes with red outsoles in the United States.
A YSL spokesman said: “We are gratified to have succeeded in defending against Louboutin’s lawsuit, and we are pleased to have fought successfully for YSL’s right to produce the highest quality original designs, inspired by and developed in an open creative environment, and in so doing to defend this freedom on behalf of the entire creative community.”
David H. Bernstein of Debevoise & Plimpton LLP, who represented YSL in the litigation, stated: “This is a complete win for YSL. The Court has conclusively ruled that YSL’s monochromatic red shoes do not infringe any trademark rights of Louboutin, which guarantees that YSL can continue to make monochromitic shoes in a wide variety of colors, including red.”
YSL’s ready-to-wear shoe collections have included styles with red (and other colored) outsoles since the 1970s, long before the existence of the Louboutin brand. The specific styles at issue in Louboutin’s lawsuit are only the most recent examples of a time-honored YSL tradition of offering monochrome shoes in an array of colors, including red.
According to YSL, Louboutin has been wrong from the start to suggest that YSL made monochromatic red-soled shoes in order to imitate Louboutin’s design. YSL is a venerated fashion house with the utmost in creative talent and has no need to trade on the good will of other brands. YSL will continue to make fair use of the color red, along with all the other colors in its designers’ palettes, in the design of its monochromatic shoes.
YSL is represented by David H. Bernstein, Jyotin Hamid and Rayna Feldman of Debevoise & Plimpton LLP.
UPDATE: Christian Louboutin just released the following statement:
“We welcome the decision of the Court of Appeals and will study today’s ruling at great
length. We are extremely pleased and gratified that the Appellate Court found our key
arguments to be correct: first that color can and does serve as a trademark in the fashion
industry, and that Christian Louboutin’s world famous Red Sole trademark is valid,
protectable and enforceable. As we have said throughout these proceedings and we reiterate now, especially in the light of this decision, we will continue to take all steps available to protect our trademark.”