Last year, we wrote about how high end fashion shoe designer Christian Louboutin* had lost
a trademark lawsuit concerning the company's attempt to block other shoe makers from making high heel shoes with red soles. Louboutin is apparently famous for its red soled shoes, but the judge in the case pointed out that this was silly and the company never should have received the trademark in the first place:
“Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition,” Judge Marrero ruled, “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 protection in the market to have secondary meaning.”
Unfortunately, on appeal, the 2nd Circuit has disagreed and said that the lower court erred
-- though with a specific condition. It claims that Louboutin's red soled trademark is legitimate if and only if
it's on shoes with a different color. If the shoe itself is completely red, then others can have a red sole (which was the situation in this particular lawsuit). Still, this seems troubling, as it seems to flat out limit reasonable design choices that other shoemakers might choose to make. The court goes through the caselaw history on colors as trademark, and the question of whether or not a color is "functional" or not (trademarks can't be functional). While the court admits that "aesthetic function and branding success can sometimes be difficult to distinguish" you'd think it would be careful not to overprotect, but the court comes down on the other side here, mainly because it says Louboutin's red soles have created a "distinctive" mark that identifies such shoes as Louboutin's. While I can see where the argument comes from, precluding other designers from offering red soled shoes seems pretty excessive.
Rebecca Tushnet does her customarily comprehensive breakdown of the insane parts of the decision
, pointing out that "it's notable just how many contradictions the court has to swallow" to come out with the ruling it does. It basically sidesteps key questions, dances around the caselaw, and figures out a way to back into the conclusion it was comfortable with issuing, while avoiding some larger questions. As a result it's a bit of a mess, but shoemakers be forewarned: apparently red soles on other color shoes is the sole domain of one shoemaker.
* As we wrote in our last post on this case: for reasons that go way beyond my understanding, it seems that one of (if not) the largest comment spammers we get are people trying to sell (probably counterfeit) Christian Louboutin shoes. Talk about bad targeting by spammers. This is not exactly a Louboutin audience. However, we get hundreds of such comments a day. Our spam filters use a few heuristics to determine what is spam and what is not and while it's not definite, there's at least a high likelihood that if you mention "Louboutin" in your comment that it will be held by the spam filter. We'll endeavor to free this as quickly as possible. Or just don't mention it in your comment at all, and hopefully it'll get through...