By Rob Lower
With a trademark this fragile, Christian Louboutin shouldn’t throw stones in a glass house. Last year, Louboutin sued another high-end shoemaker, Yves Saint Laurent S.A.S., alleging YSL’s shoes infringe Louboutin’s federally registered trademark for red shoe soles. On top of losing in Southern District of New York late last year (appeal pending), Louboutin is now defending counterclaims by YSL seeking cancellation of the red sole mark along with damages.
So can you actually get a trademark on a color? Yes, says the Supreme Court, along with a list of caveats below. First, here’s the shoes:
Left — Louboutin’s Rolando
Right — YSL’s Palais 105 (one of YSL’s four allegedly infringing monochrome shoes)
While this looks like a home run for Louboutin at first blush, his registered mark looks quite a bit different:
As implied by the registration, Louboutin’s red soles are unique only when the rest of the shoe is not red. Additionally, Louboutin’s optimistic claim to all-red shoes raises issues raised by the Supreme Court last time they addressed color trademarks. In Qualitex v. Jacobson Products Co., 514 U.S. 159 (1995) the court allowed a “green-gold” color trademark for dry cleaning press pads. However, the court was careful to limit the holding that “no special legal rule prevents color alone from serving as a trademark”, stating color “cannot serve as a trademark” if it is “functional”. According to the court, color is “functional” for trademark purposes when it is “essential to the use or purpose of the article or if it affects the cost or quality of the article”.
For example, a trademark for the color black on car tires would be functional, because changing tires’ natural color would raise the cost of manufacture. Similarly, the color red as used in traffic lights is essential to accomplishing lights’ purpose of stopping traffic.
Louboutin has a good argument that the increased cost of installing “lacquered red soles” falls solely on him and not his competitors. Although not explicitly stated in Qualitex, the court was clearly concerned about increased costs for competitors of color mark holders. Nonetheless, for shoes manufactured as a single part from colored foam (e.g., Crocs), red shoes soles cannot be made in any color but red without altering the manufacturing process. For Crocs, compliance with Louboutin’s expansive claim would require modification to hide the color of the sole, driving the total cost of manufacture up for red Crocs like these:
Although shoes by Louboutin and YSL are sharply distinguished from Crocs in price and appearance, Louboutin has sued other low cost shoemakers in the past for infringement. See, Zara France, S.A.R.L. v. Christian Louboutin, S.A. (En français).
Another example, Mont Blanc’s “snowcap” mark, is a clear indication of Mont Blanc only because of what the rest of the pen is not — white. If the entire pen were white, the snowcap would lose its capacity to indicate the source of the pen. For the same reason a lawsuit by Mont Blanc alleging infringement by an all-white pen ought to fail, Louboutin’s claim to all-red shoes should be dismissed.
Prospective plaintiffs should hold competitors’ products up next to their registration, and not their products, before filing infringement suits to see if their allegations can pass the straight face test. Louboutin now faces a substantial likelihood of losing his registered trademark mark along with his case, which remains on appeal in the Court of Appeals for the Second Circuit, where oral argument was held 24 January 2012.