YSL Seeing Red
The legal battle over whether YSL infringed on Louboutin’s red sole mark continues. On Wednesday YSL answered Louboutin’s complaint seeking a preliminary injunction. The issue stems from YSL’s red pump with a red sole, which CL argues infringes upon it’s red-sole trademark obtained in 2008. Next Friday’s hearing will determine whether or not stores can continue to sell YSL’s red pump. See original complaint here.
In it’s answer YSL, claims Louboutin can’t show irreparable harm or consumer confusion, which is important in obtaining the injunction. In addition YSL has filed its own counterclaims challenging the validity of Louboutin’s red sole trademark, arguing a fashion designer should not be able to monopolize any color and the Louboutin trademark should have never been granted. The attorney for CL notes they are not claiming ownership of all red soles but only a bright lacquered red.
YSL does raise an interesting point–should a designer be able to trademark a color? Some companies have trademarked colors for their product–think Tiffany blue, but the doctrine of aesthetic functionality may suggest otherwise for CL. Under the doctrine when an attractive product feature serves a purpose beyond identifying the source of a product as being sold by a certain company, the feature might not be protectable as a trademark. This is because it would interfere with legitimate competition by allowing the producer sole control of a useful product feature.
Does red envoke luxury or sexiness and therefore have a functional role? Arguably red soles have no purpose beyond identifying the source of the good but they are an important attribute in the commercial success of Louboutin shoes which
sparked others to add color to their soles.
Check back for the ruling from New York’s Southern District.
Fashion Law Contributor