I previously posted a blog entry on Christian Louboutin’s lawsuit against Yves Saint Laurent (YSL), which concerns Saint Laurent’s introduction into the market of women’s shoes with red soles. I raised the possibility that the red soles served a functional purpose and that Louboutin would therefore be unsuccessful in pressing a trademark infringement claim against YSL. A District Court judge has now indicated that he is of the view that the red sole is functional, and has denied Louboutin’s motion for a prelininary injunction. The order from Judge Victor Marrero is available here.

Louboutin is well-known for selling high-end women’s shoes in which the sole is a red lacquer color. The Louboutin red soled shoe has adorned the likes of Oprah, Scarlett Johansson, and Halle Berry. The character Carrie Bradshaw in Sex and the City sports them, and Jennifer Lopez has sung a song about them. Louboutin therefore perceived the YSL red soled shoe coming onto the market with some concern. Louboutin filed a lawsuit in the Southern District of New York in April 2011, alleging trademark infringement and citing its registration with the USPTO of a trademark for women’s shoes with red soles.

In my previous post, I raised the possibility that however much Louboutin feels that YSL has copied its business idea, its claim might fail based on the doctrine of trademark functionality. Essentially, things that serve a valuable utilitarian purpose–whether it is making a product cheaper to produce, easier to use, or aesthetically more attractive–are ineligible for trademark protection. (They may be eligible for patent protection in some cases.) While the doctrine of aesthetic functionality has a somewhat checkered history, with a number of judges at times voicing a degree of skepticism, the Supreme Court has now firmly endorsed it, and has specifically done so in the context of trademarked colors. In Qualitex Co. v. Jacobson Co., 514 U.S. 159 (1995), the Supreme Court indicated that colors may qualify for trademark protection, but cautioned that the aesthetic functionality doctrine would preclude a color giving a competitor an unfair advantage:

[W]here a color serves a significant nontrademark function–whether to distinguish a heart pill from a digestive medicine or to satisfy the “noble instinct for giving the right touch of beauty to common and necessary things,” G. K. Chesterton, Simplicity and Tolstoy 61 (1912)–courts will examine whether its use as a mark would permit one competitor (or a group) to interfere with legitimate (nontrademark related) competition through actual or potential exclusive use of an important product ingredient.

In his order, Judge Marrero embarks on an extended discussion of color’s ability to create an element of visual appeal that goes far beyond mere recitation of legal precedents. He gives what he allows to be a “fanciful hypothetical” involving Monet and Picasso to illustrate the ability of color to create an allure in a product:

Suppose that Monet, having just painted his water lilies, encounters a legal challenge from Picasso, who seeks by injunction to bar display or sale of those works. In his complaint, Picasso alleges that Monet, in depicting the color of water, used a distinctive indigo that Picasso claims was the same or too close to the exquisite shade that Picasso declares is “the color of melancholy,” the hallmark of his Blue Period, and is the one Picasso applied in his images of water in paintings of that collection. By virtue of his longstanding prior use of that unique tinge of blue in context, affirmed by its registration by the trademark office, Picasso asserts exclusive ownership of the specific tone to portray that color of water in canvas painting. Should a court grant Picasso relief?

The Court continues its analysis by making clear that in its view, the world of painting and the world of fashion are not all that different. One might question whether the Court’s analogy is truly apt, insofar as it is highly unlikely that any art patron would be confused as to the painter of a painting they were buying, but the point the Court is trying to make concerns the necessity of preserving free rights to colors in the fashion industry, lest one competitor gain the sole ability to produce visually appealing fashion items. The Court concludes that if one accepts that a painter should not be granted a monopoly over use of a color, then “[i]f as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion.”

In analyzing the Louboutin red sole specifically, Judge Marrero notes the “significant, nontrademark functions” that he states Louboutin has conceded influenced his design choice in choosing red for the soles of his line of women’s shoes. Louboutin has stated that the red coloring conveys “energy” and is “engaging,” and that it gives the shoes a “sexy” look that “attracts men to the women who wear my shoes.” This is on par with what I wrote in my previous post on this subject about why red in particular may be a functional color in this case. Just as red has obvious connotations when one chooses a car, so too it does in the world of clothing. Louboutin’s statements merely state what is intuitively apparent to consumers when it comes to the color red’s ability to give a product a certain feel.

In addition to accepting Louboutin’s own statements regarding significant nontrademark aspects to his color choice, the Court also makes the argument that the red coloring serves to significantly affect the price of the goods, and therefore is also functional. Although the Court allows that adding red to the soles would tend to raise production costs slightly, “for high fashion designers such as Louboutin and YSL, the higher cost of production is desirable because it makes the final creation that much more exclusive, and costly.”

The Court concludes that Louboutin is unlikely to succeed on its trademark claims after going into some detail regarding the exact color that Louboutin identifies it uses on its shoes (Chinese red), and whether it properly stated such information in its original trademark application. But these details do not appear to matter too much to the Court’s ultimate conclusion, which is really much broader. The Court evidently does not believe that color should ever receive protection in the fashion industry. In the Court’s words, it “cannot conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.”

Although the Court tries to distinguish Qualitex as involving industrial items–the case centered on the coloring of dry cleaning presses–Qualitex itself did not make any effort to limit its holding to industrial products. Thus, to the extent that the Court’s order goes beyond merely stating that Louboutin’s red soles are functional and declaring a per se rule that color in the fashion world is always functional, it will be interesting to see whether this analysis is followed by other courts. But the basic ruling that Louboutin’s red soles are functional is not that surprising.