The Red-Sole Case

Susan Scafidi in The Wall Street Journal, January 25, 2012

Media Source

Can the color red be trademarked? Two luxury brands took to open court Tuesday to battle over the hue.

When it comes to corporate colors, brown belongs to United Parcel Service Inc., Owens Corning protects its own shade of pink, and Tiffany & Co. has domain over robin's-egg blue.

On Tuesday, the famed French shoemaker Christian Louboutin SA stepped into the U.S. 2nd Circuit Court of Appeals in Manhattan to make the case that it should effectively own the exclusive right to use red—it calls the shade "China Red"—to coat the bottoms of its popular, pricey high-heeled shoes.

In front of a large and conspicuously well-dressed audience—more than a few women present wore red-soled shoes— lawyers for both sides made their arguments.

"Christian Louboutin has created one of the more iconic trademarks of the 21st century," argued attorney Harley Lewin, before a three-judge panel. "Louboutin turned a pedestrian item into a thing of beauty."

Mr. Lewin and his client were in court hoping to reverse a lower-court ruling that appeared to suggest Louboutin shouldn't be allowed to hold a trademark for its signature red-soled shoes, sported in recent years by red-carpet A-list celebrities nationwide, from actresses Scarlett Johansson and Halle Berry to singers Beyoncé and Christina Aguilera.

Last August, Manhattan Federal Judge Victor Marrero denied Louboutin's request to stop another iconic French fashion house, Yves Saint Laurent, from selling a line of shoes whose tops, as well as bottoms, are red.

"Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers could do while allowing Louboutin to paint with a full palette," wrote Judge Marrero in his opinion. "Louboutin would thus be able to market a total outfit in red, while other designers would not."

David Bernstein, a lawyer for Yves Saint Laurent, argued on Tuesday that the judges should uphold the bulk of Judge Marrero's ruling.

"Artists of this type need the full palette of colors available. In order to compete and compete fairly, we need red," said Mr. Bernstein. "We don't want to find out that we can make green, blue, purple shoes... but we are enjoined from making red."

Louboutin was granted a trademark registration to use the red for its shoe soles in 2008. But in his opinion denying Louboutin's injunction, Judge Marrero strongly suggested that the registration was granted in error. He acknowledged that trademarks can be given for the colors on products, chiefly when a single color is used only to identify or advertise a brand, like the pink used for Owens Corning's insulation.

But Judge Marrero questioned whether a color could ever be trademarked for use in fashion, where "color . . . performs a creative function; it aims to please or be useful, not to identify and advertise a commercial source."

During the hearing, the appeals-court judges wrestled with two main issues: whether Judge Marrero properly interpreted trademark law, and whether to send the case back to him for additional findings, such as whether there would be a "likelihood of confusion" between the two brands.

Of the panel's judges—Jose A. Cabranes, Debra Ann Livingston and Chester J. Straub—Judge Straub asked the most pointed questions of the lawyers, especially YSL's Mr. Bernstein.

He requested, for example, that Mr. Bernstein point to the place in Judge Marrero's opinion where he explains his blanket proposition that colors can't be used as trademarks in fashion.

"Where does he recite in great detail the basis for his holding?" asked Judge Straub. "You're not going to find it!"

Susan Scafidi, a law professor at Fordham University and an expert in law and fashion who has been following the case, said that she hoped the appellate court would correct Judge Marrero, who, in her opinion, "colored well outside the lines" in his ruling.

"There are broader issues raised by this case, and they're that fashion designs really have no protection," she said. "The industry has been trying for 100 years, but intellectual property law still stops right at fashion's door."

—Matthew Day contributed to this article.