High Drama in High Fashion: Trademark-able Colors?

By Joseph Norman *

Louboutin heelsRed soles, blue boxes; are these proper trademark subjects?  French high-fashion house Christian Louboutin and New York City American iconoclastic jeweler Tiffany & Co. think so.  Both companies are known for using a specific color to represent their brand.  Louboutin is known for its stiletto heels adorned with its signature bright red lacquered outsoles and Tiffany & Co. is known for the famous blue of its Tiffany boxes.  Whether these specific uses of color are trademark proper arose earlier this year when Louboutin turned heads in the fashion world by suing fellow French couture fashion house Yves Saint Laurent (YSL) for infringing on Louboutin’s signature red soles in YSL’s Cruise 2011 collection.  Louboutin received a trademark on the red soles in 2008 and its shoes have featured the distinctive red color since 1992.  Sex and the City, the hit television show, is mostly responsible for popularizing the $445 to $4,645 (www.barneys.com product search “Louboutin”) a pair shoes.

Initially, Louboutin sought a preliminary injunction against YSL, which Southern District of New York Judge Victor Marrero rejected in August on grounds that the trademarked red color unduly hindered competition in the fashion industry.  Marrero grounded his decision on the “aesthetic functionality doctrine,” holding that Louboutin’s use of the color “serves ornamental and aesthetic functions vital to robust competition.”  Christian Louboutin S.A. v. Yves Saint Laurent American, Inc., 778 F. Supp 2d 445, 449 (S.D.N.Y. 2011).  The Court distinguished between uses of color that attain secondary meaning, which are trademark proper, and uses of color that are “functional,” where the color’s use is essential to the purpose of the product.  Id. at 450.  Secondary meaning of an attribute pertains, in the legal context, to aspects that are inherently distinctive—marks that the consuming public associates with a particular brand rather than an arbitrary characteristic or quality of the product.  See generally Zatarain’s, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786 (5th Cir. 1983).  Finally, Marrero concluded by calling into question the validity of Louboutin’s trademark altogether, theorizing that “[L]ouboutin 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.”  Louboutin, 778 F. Supp 2d at 449.

Alarmed that Marrero’s injunction refusal might turn into an outright cancellation of its trademark, Louboutin appealed the decision to the Second Circuit, where the issue remains.  On appeal, Louboutin is likely to question Marrero’s use of aesthetic functionality—a rarely used doctrine.  See Katherine Morton, “Sole” Searching: Christian Louboutin’s Fight against Yves Saint Laurent – and the Aesthetic Functionality Doctrine – to Own the Color Red (Nov. 17, 2011) (unpublished manuscript) (on file with the Wake Forest Journal of Business and Intellectual Property Law).  Moreover, the lower court punted on the real issue: when is the use of color on a portion of apparel a design element and when is it a trademark?

Tiffany giftBecause trademarks identify and distinguish the source of goods between one party and another, See The Lanham Act, 15 U.S.C. §§ 1051-1141 (2006), fashion industry participants are anxiously awaiting the resolution of Louboutin’s claims.  Should the Second Circuit determine that Louboutin’s “Red Sole Mark” cannot be sustained, major changes are likely to come to some of fashion’s biggest names.  Designers’ that have relied on proprietary colors—such as Valentino red, Hermes orange, and Tiffany blue—may have less ability to use those colors to distinguish their brands, particularly if competing brands can use the formerly-trademarked colors.  To that end, Tiffany & Co. recently filed an amicus brief with the Second Circuit asserting the broad and sweeping scope of Marrero’s blanket rule on color use in fashion and questioning the prudence of a bright-line rejection of color marks in fashion.

To the casual fashion observer, to whom red soles and blue boxes likely identify certain brands, a case-by-case determination makes more sense.  Otherwise, what would my wife think when I bring home a robin’s egg blue box only to find out it came from Zales?

Special thanks to Katie Morton, whose note “Sole” Searching: Christian Louboutin’s Fight against Yves Saint Laurent – and the Aesthetic Functionality Doctrine – to Own the Color Red” was incredibly helpful.

*  Joseph Norman is a third-year law student at Wake Forest University School of Law.  He holds a Bachelor of Science in Management from North Carolina State University and an MBA in Finance from the McColl School of Business at Queens University of Charlotte.  Prior to enrolling in law school, Mr. Norman worked for Wells Fargo Wealth Management in Equity Research.  Upon graduation in May 2012, Mr. Norman will practice corporate law.