Can a shoe company claim a red outsole (i.e., the part that comes in direct contact with the ground) as an exclusive right under the U.S. Intellectual Property Laws? The answer may surprise you. In a recent case, Christian Louboutin SA v. Yves Saint Laurent America Holding Inc., the Court of Appeals for the Second Circuit in New York said the answer was YES.

Many years ago, CL claimed trademark rights in his high end shoes with a red sole, and applied and obtained federal trademark registration for it as well. But CL overreached; it was not content only with shoes that had a contrasting red sole, but claimed that its trademark covered any red soled shoe, whether or not the sole color contrasted with the color of the rest of the shoe. Therefore, when YSL, another high-end French shoe designer, sought to debut an entirely red colored shoe as part of its cruise collection line in 2011, Louboutin protested and asked a New York federal court to stop YSL from doing so on grounds that the proposed shoe would infringe Louboutin’s trademark. YSL counterclaimed to cancel the registration on grounds that the red sole was aesthetically functional, i.e., it served a purpose other than to identify Louboutin as the source, and the exclusive use of the feature “would put competitors at a significant non-reputation-related disadvantage.”
District Judge Victor Marrero agreed with YSL. He noted that under well established trademark laws, functional features could not be protected as a trademark and shoe color performed an aesthetic function, and was therefore not protectable as a trademark. On appeal, Louboutin argued that that based on the decisions of the U.S. Supreme Court, judge had been wrong in excluding a color from trademark protection.

The Second Circuit, clearly reluctant to take away the rights of CL, which is known to many by its glossy red sole mark, but recognizing the rights of others to use the color carved out a compromise. It decided that CL could have its protection, but only for shoes where the red sole contrasted with the rest of the shoe.

Dr. Dariush Adli
PRESIDENT/FOUNDER
Adli Law Group P.C