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Louboutin Wins Round Two Against Yves Saint Laurent in Fight Over Red Soles

Written by Joseph DiCioccio The Second Circuit recently issued an opinion in the Louboutin v. Yves Saint Laurent trademark case.  To refresh your memory, Louboutin, the high-end women’s shoe designer, had secured a U.S. trademark registration for the color red as used on the outsoles of women’s shoes.  Yves Saint Laurent had been selling shoes with similar red soles, and after initial trademark infringement settlement talks between the parties failed, Louboutin sued for, among other claims, trademark infringement.  The Southern District of New York held that a single color could never serve as a trademark in the fashion industry and thus denied Louboutin’s motion for a preliminary injunction (that would have stopped the sale of the offending shoes during the trial).  Louboutin appealed the decision.  In its recent opinion, the Second Circuit struck down the district court’s holding and determined that a color can, under certain circumstances, function as a trademark, even in the fashion industry.  A copy of the Second Circuit’s opinion can be found here.  We’ll just give you a few quick highlights. The headline is that the Second Circuit struck down the district court’s holding that color could never function as a trademark in the fashion context.  To sighs of relief from throughout New York's fashion industry, the Second Circuit found no support for the district court's ad hoc rule and analyzed the issue exactly as we thought they would, pursuant to the factors typically applied in the aesthetic functionality doctrine.  More of interest to Louboutin, the Second Circuit also reversed the district court’s denial of Louboutin’s preliminary injunction insofar as it applied to shoes with contrasting red soles.  Meaning, for the time being, Louboutin can continue to enforce its red-sole shoe mark provided that the shoes against which it seeks to assert its rights have red soles that contrast with the “upper” (the top part of the shoe).  The Second Circuit affirmed the denial of the preliminary injunction as it pertained to enforcing the red sole mark against monochromatic all-red shoes, holding that in those cases, without any contrast the red sole did not serve its source-identifying function (and thus couldn't be a trademark, no matter how much secondary meaning it may have). The case has now been remanded  to the district court to continue with Yves Saint Laurent’s counterclaims (asserting the registration is invalid).

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Joseph DiCioccio