Christian Louboutin, maker of the famous red-soled heels, was denied a preliminary injunction by Judge Victor Marrero in the US District Court for the Southern District of New York. This loss of the request for the preliminary injunction may foreshadow a potential greater loss that may be soon to come—the loss of trademark rights in the red sole. Louboutin is upset over Yves Saint Laurent’s (YSL) line of all red shoes (Image 1), including red soles, due to a likelihood that they will be confused with Louboutin’s trademarked red soles (Image 2).

Judge Marrero rejected Louboutin’s request for a preliminary injunction on the grounds that “in the fashion industry[,] color serves ornamental and aesthetic functions vital to robust competition” and that the Lanham Act does not permit a designer to own the rights to every hue of red on the sole of a shoe as it is “overly broad” and “inconsistent with the scheme of trademark registration.” While a trademark in the red sole gives Louboutin a presumption that the red soles are a valid trademark, that presumption may be overcome. And, in this case, Judge Marrero has expressed his belief that that presumption will be overcome. He ordered all parties to return to court August 17, 2011, for a hearing to determine if the preliminary injunction will be converted into a motion for partial summary judgment, thus canceling Louboutin’s famous trademark. Louboutin is appealing the order to the US Court of Appeals for the Second Circuit.

As you may recall from our previous Alert, this is not the only case in which Louboutin is asserting his rights in the red-soled shoes. This decision, however, may have broad implications on the rights that his fashion house (and others) can take in a color. Arent Fox will continue to monitor this suit and other fashion and trademark issues. Please contact Anthony V. Lupo, Sarah L. Bruno, or Eva J. Pulliam with questions.