Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc.
696 F.3d 206
2d Cir.2012Background
- Louboutin paints a red lacquered outsole on high-fashion women's shoes and registered the Red Sole Mark in January 2008.
- YSL planned a monochrome red shoe line with a matching red outsole, prompting Louboutin to seek a preliminary injunction.
- The district court denied the injunction, holding that a single color cannot be protected as a trademark in fashion and that the Red Sole Mark was likely non-protectable.
- The court treated Qualitex as supporting a per se rule against single-color marks in fashion due to aesthetic functionality.
- On appeal, the Second Circuit held there is no industry-wide per se rule; the mark has acquired secondary meaning only when the red outsole contrasts with the shoe upper.
- The court affirmed in part, reversed in part, and remanded for further proceedings on counterclaims.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Can a single color serve as a trademark in fashion? | Louboutin contends color marks can be protected. | YSL argues color marks are inherently functional in fashion. | No per se rule; color may be protected if distinctive. |
| Does Louboutin's Red Sole Mark have secondary meaning? | Symbol has acquired secondary meaning due to advertising and use. | Secondary meaning not established for the Red Sole Mark. | Mark has limited secondary meaning when used with contrasting upper. |
| Is the Red Sole Mark functional to bar protection? | Functionality should not bar protection where color identifies source. | Color functionality would deny exclusive use. | Functional issues limited to the modified mark; not dispositive for all uses. |
Key Cases Cited
- Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159 (Supreme Court 1995) (color can function as a trademark when meeting basic requirements)
- In re Owens-Corning Fiberglas Corp., 774 F.2d 1116 (Fed. Cir. 1985) (color can serve as a trademark protecting source)
- Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (Supreme Court 1995) (principle that color marks can be non-functional and protectable)
- TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (Supreme Court 2001) (aesthetic functionality may bar protection when it harms competition)
- LeSportsac, Inc. v. K Mart Corp., 754 F.2d 71 (2d Cir. 1985) (design features can be non-functional and protectable)