Aesthetic Functionality in Louboutin v. YSL - JOANNA HAN, 2L - IPLS Fashion Chair

It doesn’t take a fashion guru to recognize Christian Louboutin’s famed black heels, complete with their contrasting red outsoles. These iconic heels are now the subject of an appeal to the Second Circuit, after Judge Victor Marrero found enforcement of the Louboutin mark protecting these famous heels was barred by the aesthetic functionality doctrine. Recently, Christian Louboutin asserted multiple claims against Yves Saint Laurent (“YSL”) relating to YSL’s Cruise 2011 collection, which featured shoes that were entirely red, including the outsoles, that similarly modeled Louboutin’s red outsoles. Judge Victor Marrero of Federal District in Manhattan, who decided Christian Louboutin vs. Yves Saint Laurent, agreed that Louboutin gained “public recognition in the market to have acquired secondary meaning,” but he ultimately held that, “[b]ecause in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection...” The crux of the case rested on whether the color of the outsoles serves as a non-trademark function other than as a source identifier. The court recognized that once the source identifier becomes “decorative” and “an object of beauty,” then the color serves as an aesthetic function, which is not granted trademark protection. Here, the court denied Louboutin’s preliminary injunction because the red soles are “sexy” and “attracts men to the women who wear [the] shoes,” which serves a non-trademark, aesthetic function. The court was additionally concerned about “significantly hindering competition” if it were to grant Louboutin exclusive use of the color red. It worried that the protection of even this well-known color of red would encourage designers to claim protection for any color, depleting the permissible usage of colors. Louboutin filed an appeal on October 19, 2011, and, thereafter, Tiffany & Co. filed amicus curiae to support Louboutin. Tiffany & Co. has the same interest as Louboutin in protecting a single color—its signature blue-colored boxes. Although there is danger in giving a company protection to monopolize one single color, the court should have considered the applicability of trade dress, or the visual characteristics of a product that signify the source of the product to consumers. Particularly because the YSL shoes were entirely red and not necessarily the “Chinese red” that made Louboutin’s outsoles famous, the court might have considered limiting protection for Louboutin to the specific hue of red and its association with the overall design. However, there are good legal and policy arguments on both sides of the lawsuit, and the decision is sure to affect a large portion of the fashion industry, only heightening the anticipation of the Second Circuit’s decision.