Louboutin defends red-sole trademark

Susan Scafidi in New York Post, January 25, 2012

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The red soles were out in force.

Fans of famed footwear designer Christian Louboutin helped fill a Manhattan courtroom yesterday for the latest battle in the legal war over his trademark scarlet-soled high heels. Dozens of young women — some sporting Louboutin heels — were among the spectators at the US Second Circuit Court of Appeals, along with Louboutin himself and fellow fashionista Diane von Furstenberg.

The two style-setters sat side-by-side as three appeals judges kicked around Louboutin’s bid to block the Yves Saint Laurent fashion house from allegedly infringing on his signature motif.

At issue is Louboutin’s request for an injunction barring YSL from selling several models of all-red shoes that included red soles that the designer says stomp on his trademark rights. He says he needs to protect his instantly recognizable brand to keep YSL and “other copyists” from walking off with his business, which was projected to ring up $135 million in retail sales in the United States last year.

But Manhattan federal Judge Victor Marrero turned down Louboutin in August, in essence ruling that the shoe designer couldn’t trademark a color. “In the fashion industry color serves ornamental and aesthetic functions vital to robust competition,” Marrero ruled.

In court yesterday, presiding Judge José Cabranes asked if the designer wanted to trademark “the color red,” as suggested by YSL. “We don’t claim basic red,” said Louboutin lawyer Harley Lewin, who insisted the designer only wanted to protect “a
particular color, in a particular place, on a particular item.”

Judge Chester Straub — who made YSL lawyer David Bernstein remove a “distracting” red shoe from his table — asked the lawyer whether he thought a color could be trademarked. Bernstein acknowledged that colors could be protected for certain uses, such as brown-and-gold Louis Vuitton bags,

Burberry plaid and the blue rubber labels on Keds sneakers. But he maintained that “those are unusual things that don’t hinder competition.”
The panel reserved decision. Outside court, Von Furstenberg called the 40-minute hearing “very interesting.” Louboutin tried to curb his tongue, insisting: “I cannot speak about this now.”

Meanwhile, Fordham fashion-law professor Susan Scafidi said she was “voting with my feet” by wearing a $745 pair of black patent-leather Louboutin stilettos to the hearing.

“I think Judge Marrero colored outside the lines,” Scafidi said.