Judge Marrero of the SDNY district court has denied Louboutin’s preliminary injunction request against Yves St. Laurent’s use of a red sole in its monochrome red pump ladies shoe.
Christian Louboutin v Yves Saint Laurent
Marty Schwimmer summarizes the issues and makes the following points:
The court has now dismissed Louboutin’s motion. It is a long decision that makes a lot of points that are, imho, color depletion and shade confusion arguments. However at the core of the holding, the court seizes on YSL’s point about the competitive need in fashion to be able to, for example, sell monochrome shoes, and sell red monochrome shoes, and sell red dresses that go with red shoes, and holds that red soles are functional. On to the Second Circuit.
The thought occurs: maybe, Louboutin’s trademark is a red lacquered sole when used with an upper that is any color other than red. According to this decision, any manufacturer’s red shoes could use red soles. But does any manufacturer’s black shoes need red soles?
Charles Colman’s provides Judge Marrero’s “blockbuster” quote:
Because 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 even if it has gained enough public recognition in the market to have acquired secondary meaning.
Professor Susan Scafidi uses Judge Marrero’s decision as an example of why fashion designers need copyright protection:
Judge Marrero, however, hung his order on the hypothetical example of Picasso attempting to prevent Monet from using the color blue in the Water Lilies series because the color had been Picasso’s hallmark during his Blue Period. Unthinkable from an art history perspective, of course. The court acknowledges that no analogy is perfect — but then goes on to claim that both painting and fashion design exist in the overlapping spheres of art and commerce, and that neither is well served by individual monopolies on color.
Setting aside the troubling conflation of use of a red sole as a trademark versus use as a design element, the separation of which is the true challenge in this case, the court’s analogy raises an essential question: Why are paintings characterized as “art” and entitled to full copyright protection while fashion receives almost none?






