London - The bright red soles on French footwear designer Christian Louboutin’s high-heeled shoes are so distinctive they deserve trademark protection, a US appeals court has ruled.
A three-judge panel at the 2nd US Circuit Court of Appeals in New York last week reversed a lower court’s finding that a single colour could not be trademarked in the fashion industry.
Paris-based Louboutin, whose pumps have graced many famous feet, sued rival Yves Saint Laurent (YSL) in April 2011 in a Manhattan court over what he claimed is his signature use of lacquered red on shoe soles.
In August 2011, Manhattan federal judge Victor Marrero denied Louboutin's request for a preliminary injunction that would have prevented YSL from selling pumps with red soles.
But in last week’s ruling, the appeals court panel said Louboutin’s long-standing use of the red sole was “a distinctive symbol that qualifies for trademark protection”.
However, Judges Chester Straub, Jose Cabranes and Debra Ann Livingston limited Louboutin’s trademark to shoes where the sole stands out in contrast to the rest of the pump. The finding would allow YSL to produce a monochrome red shoe with a red sole, the opinion said.
David Bernstein, a lawyer for YSL, called the opinion a victory for the label, which is part of French fashion company PPR SA.
“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 monochromatic shoes in a wide variety of colours, including red,” Bernstein said in a statement.
For its part, Louboutin also called the ruling a win.
Thanks to the ruling, Louboutin “will be able to protect a life’s work as the same is embodied in the red sole found on his women’s luxury shoes,” said Louboutin lawyer Harley Lewin.
The opinion based its reasoning on a 1995 US Supreme Court decision Qualitex Co v Jacobson Products Co and on the Lanham Act, which governs trademark law.
The Qualitex decision left open the possibility of defending a single colour trademark on the grounds that its use, under certain circumstances, is uniquely associated with a brand, the appeals court said.
YSL had argued that Louboutin’s red sole trademark was obtained fraudulently and sued its rival to cancel it.
YSL also had other counter claims pending against Louboutin as part of this case. YSL has now dropped all of its lawsuits.
Since shortly after Louboutin founded his first boutique in 1991 in Paris, his lawsuit said, all his shoes have had red-lacquered soles. They can fetch more than $1 000 (R8 630) a pair. – Reuters
Martha Stewart admits she paints soles black
For many women, much of the appeal of Christian Louboutin heels is in the dramatic flash of red on the sole.
However, Martha Stewart, whose empire is worth $638 million, has admitted that she is not a fan of the label’s signature, and uses black paint to obscure it.
The media mogul, 71, told InStyle: “See the soles? I paint them black.”
Explaining the unlikely practice, which might be considered sacrilege by many fashionistas who covet the shoes, she continued: “I don’t like them red, even though they’re his trademark.”
But while the legendary French cobbler is famously protective about the red sole trademark, it seems he doesn’t object to Stewart’s customising.
“He doesn’t mind,” she said. “He said it’s okay if I do that – I asked him!” – Daily Mail