What the heel?

Posted by | April 20, 2011 | General | No Comments

On April 7, 2011 one French fashion designer sued another in US Federal District Court for the Southern District of New York.  Now, anyone who knows me can tell you, a fashionista, I am not.  But this case sure is fashionating!  (Sorry, I could not resist!)  Shoe and handbag designer, Christian Louboutin, filed suit against fashion designer Yves Saint Laurent America (YSL) alleging that YSL copied Louboutin’s red shoe sole trademark.

That’s right:

The soles of these shoes represent the soul of the CHRISTIAN LOUBOUTIN brand, and Louboutin’s gonna sue if he has to to prevent others from stepping on his toes.

Louboutin claims to be the first designer to sell shoes with red colored soles, which the suit asserts, “is instantly recognizable.”  The suit continues:

[framed_box]The Red Sole Mark is the signature of CHRISTIAN LOUBOUTIN brand footwear.  Louboutin footwear is instantly recognizable as a result of Plaintiff’s trademark red outsole.  The location of the bright color on the outsole of a woman’s pump is said to provide an alluring “flash of red” when a woman walks down the street, or on the red carpet of a special event.[/framed_box]

The red carpet statement is no joke!  The suit attributes the growth of Louboutin footwear in the US to celebrities, specifically calling out the March 2005 cover of Vanity Fair, featuring the cast of Desperate Housewives, all wearing Louboutin shoes, as well as numerous other celebrity shoe sightings.  These shoes are famous that ABC Entertainment News even did a photo montage of Celebrities Who Love Christian Louboutin Shoes, while ABC News itself ran a story on the lawsuit the day after it was filed.  At least 24 paragraphs of the complaint address the celebritydom of Louboutin shoes.

Louboutin has two US trademark registrations for its “Red Sole Mark,” one was granted on January 1, 2008 and the other on January 29, 2008.  The odd thing is, the YSL shoes that allegedly infringe on the Louboutin sole mark are ALL red, not just their soles:

Further, they’re also part of a collection of multi-colored shoes that are solid colors, soles and all:

Louboutin will have to prove not just that its soles function as a mark, which I think it easily can prove, but also that YSL’s soles infringe, which I think will be tough to prove given the seemingly ornamental, functional aspect of YSL’s colored shoe soles.  Since both companies have deep pockets, this case could actually go to trial, so we should get to watch it for years to come.

Even more interesting, is that Louboutin would choose to pursue LVT instead of, say www.christianlouboutin-knockoff.com:

Louboutin probably figures that there’s a higher chance of collecting damages (or a monetary settlement) from a well know fashion designer than from a blatant counterfeiter.

Trademarks are not limited to words and logos; marks can be colors, sounds, and even scents!  Knock-offs generally aren’t a good business model.  As this case shows, you might not realize that what you’re copying is protected, and you never know what rights will be asserted by brand (or copyright) owners.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.

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