YSL Claims It Created Red Soles Christian Louboutin Loses Soled Shoes Case

by hearit

The color red becomes a fiery, hot battle. Parisian cobbler Christian Louboutin first slapped red soles on his pumps and platforms about 19 years ago, in 1992. YSL says it had the idea back in the 70s. The lawsuit heats up as Louboutin could lose his red-soled trademark for shoes.

Trademarking a specific color is hard. Few have managed to do it -- and the United States has only allowed trademarks centered on color for about a decade and a half, since 1996. But Christian Louboutin managed to do it, to protect his brand. Or so he thought.

Christian Louboutin got those red soles on his shoes officially filed with the U.S. Patent and Trademark Office about three years ago in 2008 -- when his red-lacquer soles were approved by the office: Registration No. 902955, Pantone 18.1663TP, Class 25. The red Louboutin soles -- officially dubbed "Chinese Red" as Pantone-18 -- were inspired by the idea to use red nail polish to color one of the outsoles of his Christian Louboutin heels introduced nearly two decades ago, in 1992.

Now Louboutin wants an injunction against Yves Saint Laurent and about a million bucks in damages regarding the trademark he holds in the United States and 75 additional countries.

Yves Saint Laurent (YSL) is a subsidiary of Gucci Group. Louboutin claims the YSL shoes have featured shades of red that are the same or similar to his own.

Christian Louboutin’s lawyers have been claiming Yves Saint Laurent’s red “Palais Pump” and “Palais Slingback” of the 2011 Cruise Collection and Taboo, Woodstock, and Tribute models -- which include matching or similar red soles -- are “virtually identical” to his trademarked red soles. Attorneys argue it's so well known that “the lead characters regularly wore Louboutin footwear in ‘Sex and the City,” according to Harvey I. Lewin of McCarter & English. And the lawsuit's specific: Louboutin isn't claiming Yves Saint Laurent or other shoe manufacturers can never use red on any part of a shoe, he's saying red cannot appear on a shoe's sole because it will add confusion -- that consumers will recognize it as belonging to his collections.

Both Christian Louboutin and Yves Saint Laurent shoes are carried at Neiman Marcus. And Yves Saint Laurent is just the first stop. Christian Louboutin has also filed a second lawsuit against Sao Paulo-based Carmen Steffens of Brazil -- for shoes with “rosette” soles.

For those who think trademarking a color is silly, it's actually proved very profitable, and protected brands that link their identity to such specifics. Tiffany & Co., and what has become synonymous with the company -- "Tiffany Blue" owns the color trademark of Pantone 1837. Champagne-maker Veuve Clicqout owns the trademark for the orange color that appears on its bottle labels. And Owens-Corning owns a trademark for the pink color of its fiberglass insulation products -- with ads that featured the 'Pink Panther.'

But Christian Louboutin is not doing so well in court: A New York judge has denied an injunction against YSL (Gucci) saying, “Louboutin’s claim to the ‘the color red’ is, without some limitation, overly broad and inconsistent with the scene of trademark registration.”

So why does Tiffany & Co. get its "Tiffany Blue" while Louboutin seems to be losing his red? American law protects and allows colors to be trademarked if they serve to identify the source of a product -- and don't have any other function.

Sao Paulo-based Carmen Steffens of Brazil doesn't seem to have plans to drop its red-soled shoes any time soon: The manufacturer claims the company is headquartered in a tropical country and has used bright colors in product designs for nearly two decades. The Louboutin lawsuit against Carmen Steffens is only in France -- where the shoe-maker has recently opened a flagship store less than a year ago. That flagship store, opened in September, kind of happens to be adjacent to a Louboutin boutique on Rue de Grenelle in France. Of nearly 250 styles in Carmen Steffens France’s collection, only about three models of shoes use shades of red. As the company's president claims, the manufacturer has been including colors on its soles for years -- nearly ever color imaginable, not just red. Pinks, blues, green, yellows and those colors inbetween have all been featured.

But that's kind of where things get interesting too: While Carmen Steffens claims it's been using the colored soles for 18 years, the timeframe matches up to the same number of years Christian Louboutin has been using those red-lacquer soles since he introduced them about 19 years ago in 1992. The problem: Louboutin didn't work on getting that trademark through until more than 15 years after he began using the red soles, and that could present a problem. Louboutin may have been the first one to start using the exact red soles for which he's become famous, but he let a lot of years slip by in the interim -- allowing a lot of time for other shoe manufacturers the opportunity to create a pattern of similar use in their shoe collections since.

President of U.S. operations for Carmen Steffens Mark Willingham, claims red to be no different than any other colors used on its soles: “Over the years, we’ve incorporated almost every color imaginable into our footwear soles—including various tones of red,” he says. “It’s part of our brand’s DNA.” There's a similarity there: Carmen Steffens has now been using colored soles, including reds, for roughly 18 years.

Uh-oh, Louboutin. Someone's created a record of use. And they don't seem to have plans to stop now.

In fact YSL makes claims that pre-date either company: YSL says that Louboutin's claim as the originator of red soles is a false one. In fact, YSL says, its brand has made shoes with that specific feature since the 1970's -- inspiration drawn from "King Louis XIV's red-heeled dancing shoes or Dorothy's famous ruby slippers in 'The Wizard of Oz'.'

There is one key difference: YSL did not obtain a trademark from the U.S. Patent and Trademark Office.

It's all bad news for Christian Louboutin and his brand in the United States. He's lost the first round in a battle to protect his brand -- a federal judge, in August, denying the shoe designer's preliminary injunction against YSL. A federal judge isn't helping protect Louboutin's trademark because, he says, Christian Louboutin probably shouldn't have received a trademark for the red soles at all. Federal Judge Victor Marrero refuses to block other shoe manufacturers: “Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition,” rules Judge Marrero, “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 protection in the market to have secondary meaning."

The major part of Louboutin's problem may be the fashion industry itself which constantly changes according to several key factors -- and revolves around color. Judge Victor Marrero has argued that Louboutin's claim to keep the color red for his use only is similar to ”enjoining Monet from using a specific shade of blue in his Water Lilies series because Picasso had gotten there first with the paintings in his Blue Period.” Judge Marrero's ruling includes the idea that, “”Fashion … is susceptible to taste … Thus, at any moment when the market and the deities of design… proclaim that ‘passion’ is in for a given season and must be expressed in reds in the year’s various collections, Louboutin’s claim would cast a red cloud over the whole industry, cramping what other [fashion or shoe] designers could do, while allowing [Christian] Louboutin to paint with a full palette.”

But it's not over. Louboutin's case will be headed back to court again in August 2011 -- and the company says it’s prepared to “fight like hell to the end.” The Christian Louboutin lawsuit brings much more to the forefront, however, than the question of whether or not a color should be legally allowed to be trademarked. Louboutin already received a trademark for the red soles three years ago in 2008. Perhaps the better question is whether a judge can battle the protection that was supposedly issued by the U.S. Patent and Trademark Office.