(New York, NY) Federal judge Victor Marrero has ruled a hard and fast judgement against fashion designer Louboutin and his request for an injuction against rival Yves Saint Laurent.
Louboutin’s shoes, many of which that have price tags in the thousands of dollars, are noticeable from yards away by their distinctive Chinese Red outsole. In 2008 the fashion design company trademarked the red sole with the description, “The mark consists of a lacquered red sole on footwear. The dotted lines are not part of the mark but are intended only to show placement of the mark.”
Just this past April, Louboutin sued Yves Saint Laurent for trademark infringement when the latter began selling shoes in their 2011 Cruise collection: the Tribute, Tribtoo, Palais and Woodstock; all with red outsoles. Susan Scafidi of law school Fordham University stated that, “Christian [Louboutin] isn’t saying to Yves Saint Laurent, ‘You can never use red on any part of a shoe’ […]He’s saying you can’t put it on a sole because consumers recognize it as mine, and the consumers will be confused.”
Judge Marrero disagrees however, and has ruled that Louboutin’s may not stop competitors from selling red soled shoes, citing that, “Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants. YSL has various reasons for seeking to use red on its outsoles.”
While this comes as a blow to the Louboutin brand, it may bring a sigh of relief to other fashion designers. Staci Riordan of law firm Fox Rothschild comments, “[This ruling] allows for designers to be more artistic […] they don’t have to be always looking over their shoulders saying, ‘Am I going to get sued because I used red that’s two shades off of their red?’” The two fashion giants are currently at a stand off as Judge Marrero decides whether or not Louboutin has any right to keep the trademark in question, though sources say that Louboutin’s lawyers will take this fight to the steps of congress if need be.
Written by Joshua Whitfield, Trademarkia Inc.