B.A.F.F.L.E.D. Fashion Law

A Potential Way For More Designers To Monopolize Specific Style Characteristics…

By: Attorney India Rios

You want to know why Christian Louboutin is the only shoe designer who can use the color red on the soles of its shoes when the shoe itself is any color but the color red? I can sum it up for you in three words –Trade Dress Protection— a form of United States trademark law. Want to learn more about how Christian Louboutin was able to stop Yves Saint Laurent and any other design from making shoes with red soles unless the entire shoe will be red? First, let me give you a quick trademark law breakdown. 

The purpose of trademark law is to prevent consumer confusion. Labels let consumers know what to expect from a particular brand. Trademarks can be any word, symbol, sound, color, phrase, or combination used to identify and distinguish one source from another and help consumers identify the product in question. 

Trade dress protects the overall commercial look and feel of a product or service. Its range is extensive, and the protection extends to various elements of a product or product packagings such as the shape, design, color, and more. Trade dress takes its security one step further, and it allows trade dress protection for establishments with a distinct look and feel of a product or establishment. Still, like trademark protection, to be eligible for trade dress protection, the design must be distinct and nonfunctional. Essentially, distinct means unlike any others in the market place and nonfunctional as in the design is not required for the product or design to work. 

So now that we have gotten through that trade dress law blitz, let's get back to the questions before us:

(1) How was Louboutin able to stop Laurent and any other designer from making shoes with red soles unless the entire shoe is red?

(2) Why aren’t more designers using trade dress protection to create a monopoly in a specific brand recognizer for their designs?

(3) Is your brand eligible for trade dress protection?

In short, Louboutin’s iconic red sole has built up significant source recognition, which has resulted in the sole qualifying for secondary meaning. Furthermore, the design feature is distinct from amongst the fashion house's competitors. When people see a shoe with a red sole, they almost instinctively think that Christian Louboutin made the shoe. The soles, therefore, help the designer distinguish itself from its competitors. Trade dress protection at its core is about distinctiveness and source recognition. 

In the groundbreaking lawsuit between Louboutin and Laurent, Laurent wins the battle, but Louboutin won the war. The court ultimately determined that Louboutin was entitled to trade dress protection for their signature red soles. Yet YSL was allowed to make shoes with red soles as long as the entire shoe is red. The court further found that the Louboutin's trade dress, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the Louboutin brand. Secondary meaning is the key to trade dress protection. Secondary meaning is a legal term of art that represents a designation given to trade dress that by itself is not necessarily inherently distinctive. However, the general consumer of that product has grown to associate that symbol with the brand its self. One generally does not acquire secondary meaning overnight. 

To take advantage of trade dress protection, a designer would need to (1) identify its signature designs and colors and (2) use the designs and colors in a manner that makes the designer's brand distinguishable from others similarly situated in the marketplace. The best way for a designer to posture their brand for trade dress protection is to implement these design characteristics early on in its lifetime. Building brand recognition is a slow grind, and the road to trade dress protection is a long road. The length of the process leaves many designers vulnerable to design pirates.  

Ultimately, whether your designs are eligible for trade dress protection will depend on whether your designs have source-identifying characteristics. Acquiring trade dress protection can be a long process, and the protection offered can be minimal. For example, in Louboutin, the court found that the red sole alone was protectable when the shoe itself was not all red. To obtain trade dress protection for your designs, one would have to wait until you have acquired secondary meaning. Additionally, you will need to use other forms of intellectual property protection for the design parts that trade dress protection will not protect. The narrow protection trade dress protection provides, paired with the cost and amount of time it takes to obtain trade dress protection, make it an unattractive choice for many designers. 

B.A.F.F.L.E.D. Fashion Law

Louboutin Adds Protection with Design Patents--

Fab shoemaker Christian Louboutin is always working to protect his brand.  His latest attempt has been obtaining a design patent for his spiked toe design.  He's already overcome the red sole battle, and is now continuing on in making sure there's no confusion as to what belongs to him and only him.

In addition to the spiked toe patent, CL has about 10 others.  His design patents include some of his lace-up boots and stuffed flats...surely more are to come.  Be careful doing your fall and winter shopping.  There's likely to be fakes out there.  Christian isn't the only one protecting his brand with every design protection option possible.  Jimmy Choo, YSL (a former Louboutin opponent in court), and Celine are just a few others also taking the protection to the next level.





With the counterfeit market grossing in the billions, no chances can be taken! 

For more on Intellectual Property Basics, click here.  And for a plethora of fashion law news and tips, click here! 

B.A.F.F.L.E.D. Fashion Law

The Battle At Red Sole:  A Win-Win, Ultimately--

Just yesterday, the U.S. Court of Appeals for the 2nd District ruled on the Louboutin v. Yves Saint Laurent (now Saint Laurent Paris) case in regards to the ever popular red soled shoe.

Here is a review of what happened:

• The Appellate Court affirmed in part and reversed in part the ruling of the District Court.
• The Court affirmed the ruling which denied Louboutin a preliminary injunction to stop YSL from selling their monochromatic shoes--covered in red on top and bottom.  
• The Court reversed the finding of Louboutin's trademark to be invalid by the District Court--saying a color can, in fact, serve as a trademark in the fashion industry.

• The Affirmation
• Both the District Court and Appellate Court denied Louboutin an injunction to stop YSL from selling their all red shoes.  The reason being, on the District Court level was largely because a color couldn't be used as a trademark-- so Louboutin couldn't stop YSL from selling their shoe.  On the Appellate level, the injunction denial was affirmed because the trademark approved for Louboutin is one for red soles contrasting the "upper" of the shoe. The YSL shoe did not have a contrasting sole and upper.

• The Reversal

• This helps explain the affirmation a bit.  The Appellate Court reversed the lower court's ruling, finding the Red Sole Mark invalid.  This was reversed because of the "secondary meaning" developed by the Louboutin red sole in the market.  As the Appellate Court noted from precedent: Secondary meaning is acquired when, in the minds of the public, the primary significance of a product feature...is to identify the source of the product rather than the product itself.  Ultimately, consumers have been trained through marketing and promotion to associate red soles contrasting their uppers as high-fashion Louboutin shoes.  With a modified understanding of the mark, Louboutin prevailed. 

• The Steps Ahead
• In a nutshell, both sides can be seen as winners.  Louboutin has protected their contrasting red sole as a valid trademark in the fashion industry.  It is used to identify their brand, as required for trademark registration, but does not limit competition in the market.  YSL can continue marketing their monochromatic shoe.  The red sole trademark is not infringed when used in a way contrary to a red sole contrasting a non-red upper.  
• The Court reminded us about some of the main principles of trademark law, providing:
• By placing the color red in a context that seems unusual and deliberately tying that color to his product, Louboutin has created an identifying mark firmly associated with his brand which, to "those in the know" instantly denotes his shoes' source, Louboutin.
• It is the first principle of trademark law, that an owner may not use the mark as a means of excluding competitors from a market.
• Allowing red soles in all circumstances to be the trademark possession would limit shoe marketing.  Modifying the mark to apply only in a specific manner promotes competition--a primary crux in trademark law.  
• The fashion industry, like other industries, has special concerns in the operation of trademark law.
• Although there is no copyright protection in the fashion industry generally, trademark is essential to the industry and cases like this are major for this creative market.

As promised, we've been watching this one for some time now.  If you've missed out on how we got to this point, check out these Flashbacks to get up to speed:

The Battle At Red Sole: Not So Cut and Dry 

The Battle At Red Sole: Did The Court Get It Right?

For more on what's going on in fashion law...and there's quite a bit, consult the Fashion Law Files!

B.A.F.F.L.E.D. Fashion Law

The Battle at Red-Sole:  Not so Cut and Dry-

The lawsuit between Christian Louboutin and Yves Saint Laurent appeared to be a trademark battle set to end easily.  YSL would be told they could not use red soles on their shoes because Louboutin has a trademark on the color and use by another designer would confuse consumers.  We explained this logic and lesson in trademark not too long ago.

Now it appears things aren't as black and white as they seem.  There's some gray....maybe even red.  Trademarks have a number of provisions to be met for use and protection, and color is no different.  Colors can be trademarked when they serve the function of identifying a brand in the market.  The Tiffany teal-blue boxes fall into this category.  One would think the red bottom does as well, but it is not the story Mr. Louboutin is telling.  He said the shoes have red soles "because red “attracts men to the women who wear my shoes."  True and fine, but uh, did you check with legal on this?  

To protect the trademark, the designer must prove the red bottoms serve as an identifier for their products--which in the market, they do!  Everyone knows and expects red soles from Louboutin.  However, this case must be successfully made in court.  Red soles by any other designer will cause confusion and hurt the Louboutin brand.

We are anxious to see what happens next, and will keep you posted, step after red-soled step.

B.A.F.F.L.E.D. Fashion Law

The Battle at Red Sole: Did The Court Get It Right?

We don't think so.  News hit earlier today about the drama over red-soles.  If you've been paying any attention to the trademark case between Christian Louboutin and Yves Saint Laurent, you know they are battling over the use of the red sole trademark.

Louboutin has a trademark protecting their use of a "bright red outsole" for the footwear they produce.  The Southern District of NY judge denied their motion to keep YSL from using red soles on their shoes while the case pends: “Because in the fashion industry colour 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,” said the judge in his ruling.  YSL even alleges Louboutin does not deserve the trademark at all because of the generic nature of red shades to possibly be used in shoe soles.

We have some trouble with this.  As mentioned here before, trademarks are tested based on: Strength, Similarity, and Proximity in the market.  In this case, we see YSL failing to prove Louboutin shouldn't have their trademark, and then so, the injunction.  Here's the breakdown:

Strength:  Louboutin has an extremely strong mark in their "red-bottoms", simply because everyone knows them by the moniker, and expects shoes with red soles to be made by Christian Louboutin. It's known everywhere, in all media outlets-- fashion and non-fashion. The company has made their mark in the shoe and fashion industry, simply by making sure every shoe they produce has a red outsole.  All YSL shoes do not.

Similarity:  Sure the shades of red are vast and vary, but any non-"Louboutin Red" should be immediately suspected as a fake.  You know it when you see it.  The sole YSL claims to have been using since the 70s is, in fact, similar to the Louboutin sole.   However, using the colored sole on a shoe here and there over the years leaves way for a gap in the market, which Louboutin has filled.

Proximity in the marketplace:  Louboutin wins here, too.  YSL shoes and Louboutin shoes are clearly in the same market and can lead to confusion in the exact same customer base.  EVERY Louboutin shoe has a red sole, no matter the style, upper color, or heel height; and the brand is widely known for it.  Finding red soles on other shoes, especially in the luxury market will confuse consumers, and force the ever-vigilant fashionista to watch their purchases and selections.  No shot to YSL; it's a great brand.  You just need your own niche in the market.

So, after this breakdown of trademark testing, we are extremely anxious to see how this case pans out.  We believe Louboutin has met all the criteria it needs to keep its red sole protected, and are actually quite shocked this case is even in court.  

Share your thoughts on this one with us.  We'll be watching it every red step.

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