By LARRY NEUMEISTER
Associated Press
NEW YORK (AP) - The
distinctive red soles of Christian Louboutin shoes are entitled to
trademark protection, even if the company can't exactly call the color
its own, a federal appeals court said Wednesday.
The 2nd U.S. Circuit Court
of Appeals in Manhattan reversed a lower court judge who had ruled
against the French maker of luxury shoes worn by stars such as Sarah
Jessica Parker, Scarlett Johansson and Halle Berry.
The appeals court said
Louboutin was entitled to protect its brand against red-soled shoes made
by competitor Yves Saint Laurent S.A.S., which is also based in Paris,
though it instructed the U.S. Patent and Trademark Office to limit
registration of the trademark to situations in which the red lacquered
outsole contrasts in color with the adjoining upper part of the shoe.
In 2008, the trademark
office granted protection to Louboutin, which has applied glossy vivid
red to the outsoles of women's shoes since 1992. The shoes sell for up
to $1,000 a pair.
U.S. District Judge Victor
Marrero went too far in August 2011 when he ruled that a single color
can never serve as a trademark in the fashion industry, the appeals
court said.
It said Louboutin's bright
red outsole had acquired limited secondary meaning as a distinctive
symbol that identifies the Louboutin brand, and it credited some of the
judge's findings about Louboutin's successful efforts to market the
distinctive look to support its conclusion. It noted that the U.S.
Bureau of Customs and Border Protection had recently seized over 20,000
counterfeit Louboutin shoes illegally shipped to the United States.
Still, the appeals court
said it was limiting the trademark "to uses in which the red outsole
contrasts with the color of the rest of the shoe." It noted, for
instance, that Yves Saint Laurent's use of a red outsole on
monochromatic red shoes does not infringe on Louboutin's trademark.
"It is the contrast between
the sole and the upper that causes the sole to 'pop,' and to
distinguish its creator," the appeals court wrote.
A Louboutin lawyer, Harley
Lewin, said: "Louboutin is enormously pleased that its central
arguments, that indeed a single color can and does serve as a trademark
in the fashion industry and perhaps even more importantly, that its Red
Sole trademark is valid and enforceable and will remain so, have been
confirmed as correct."
Attorney David H. Bernstein
for Yves Saint Laurent praised the ruling as "a total victory for us,"
since the company will be able to continue making all-red shoes.
"They brought this case to
stop us from making these shoes and they lost," he said. "Our client has
the right to continue to do what it has always done."
In a statement, Yves Saint
Laurent rejected Louboutin's claims that it was trying to imitate its
competitor's color scheme, saying it was "a venerated fashion house with
the utmost in creative talent and has no need to trade on the goodwill
of other brands." It said it has featured red and other colored outsoles
since the 1970s.
The appeals court found
support for its reasoning in a 1985 appeals ruling in favor of a
fiberglass manufacturer who sought a trademark on the pink color of its
residential insulation material and in a 1995 Supreme Court decision
protecting the green-gold color of a dry cleaning press pad. In that
ruling, the Supreme Court concluded that "color alone, at least
sometimes, can meet the basic legal requirements for use as a trademark.
It can act as a symbol that distinguishes a firm's goods and identifies
their source, without serving any other significant function."
