Sole survivor

Susan Scafidi in Footwear News, September 06, 2012

Media Source

As Fashion Week began buzzing in New York yesterday, a federal judge downtown had a message for luxury shoe designers: watch your step.

The court granted French shoemaker Christian Louboutin SA exclusive right to sell shoes with flashy red soles, except for when an entire shoe is red, such as the “monochromatic” high heels designed by Yves Saint Laurent, which started the legal scuffle in the first place.

“It’s really very difficult to win these kinds of trademarks, so the industry at-large is breathing a sigh of relief — Tiffany with its blue boxes; Hermes with its orange; Gucci with its stripes,” said Susan Scafidi, a professor of fashion law at Fordham University.

Louboutin has been making red-soled shoes since 1992 and won a trademark for the design in 2008. When YSL, a unit of luxury giant PPR, released its monochromatic line of high-heels — which sell for about $800 a pair — Louboutin filed in federal court to block their sale.

Louboutin lost that suit about a year ago, as the court likened its position to Picasso trying to reserve rights to the color blue.

But its trademark was upheld in appeals court yesterday. Specifically, the court ruled that Louboutin soles had acquired “secondary meaning,” which is to say people affiliate them with the brand.

“This was a given,” Scafidi said. “The average fashionista can spot a red sole at many more than 50 paces.”

YSL, however, can continue to sell its all-red shoes and called the ruling “a complete win” in a statement yesterday. It also noted that it has been making red soles since the 1970s and is a venerated fashion house with “no need to trade on the good will of other brands.” 

The key to the case was proving that Louboutin’s claim wasn’t simply to the color red, but how it was presented on the shoe, according to John Crittendon, a trademark expert and partner at New York-based law firm Cooley LLP.

“It respects Louboutin’s trademark rights,” he said. “But also preserves the freedom of others in the fashion industry.”