Red Bottoms Hit Rock Bottom in Southern District Court of New York

Last year I pondered whether I should watch the new USA Network television series “Covert Affairs,” starring Piper Perabo as Annie Walker, a new recruit to the CIA. I told myself I would give it a chance and watch the first episode to see if I like it. The first episode introduced the viewers to 28-year-old Annie Walker wearing a well-tailored black pant suit and a pair of black high-heeled Christian Louboutin‘s “Red Bottoms.” From the moment I saw those shoes I was sold on watching the show throughout its season. I remember telling myself that because the main character of this show was wearing the hottest shoes in fashion at the time, “If the show turns out to be not so good, there is a high probability the fashion will still be great.” After season 1 ended, I was happy to say that it actually was a pretty good show that made excellent fashion choices by keeping Annie in a pair of “Red Bottoms” anytime she sported a pair of high heels.

Unfortunately for the shoe designer Christian Louboutin, a district court judge from the fashion capital, New York City, was not so excited about the red-sole shoes like I was. Judge Marrero denied Louboutin’s motion for preliminary injunction and granted the defendant’s, Yves Saint Laurent, motion for summary judgment. Judge Marrero declared Louboutin’s red sole trademark invalid. The court held that the red soles are aesthetically functional, and thus not protectable by trademark law. The judge also had a big problem with allowing anything fashion-related to have a trademark on one solid color.

Respectfully, I believe Judge Marrero’s holding is not aligned with trademark law. The Supreme Court held in Qualitex v. Jacobson Products Co., Inc., 514 U.S. 159 (1995) that when applying the aesthetic functionality doctrine to a color, “color depletion” must be considered. Meaning, if the depletion of available colors in that market would mean that protection would hinder competition, trademark law should not be afforded to a color in that market. Louboutin is not trying to stop shoe designers from using the color red on top of their shoes. Rather, he is just trying to stop others from creating red-soled shoes. Furthermore, he is not trying to prevent shoe designers from putting purple, orange, green, and any other color but red on the bottom of their shoe. Protection of the red soles would not hinder the competition of other designers. It was almost unheard of to have a colored bottom shoe sole other than black or brown until Louboutin’s “Red-Bottoms.”

The Judge’s issue with anything fashion related having one solid color would be understandable if the article at issue was a t-shirt or the top portion a pair of shoes. This is a different circumstance because this is the bottom of a pair of shoes. People wearing these shoes will not be matching their outfit to go with the bottom of their shoes. In Qualitex, the court held that the green-gold colored dry cleaning pads acted purely as a symbol and a source identifier and served no other purpose. Here, the red sole of Louboutin’s shoes serves no purpose other than to help consumers identify the source of this product. Singling out the fashion industry by prohibiting one solid color acquiring trademark protection is unfair in certain situations, especially like in Louboutin’s situation. The color pink is a registered trademark for Owens Corning fiberglass insulation and there has not been any proof that competition in the fiberglass industry has been stifled due to this one solid color registration.

Interestingly, Judge Marreo never mentions “secondary meaning” in his decision that held that Louboutin’s registered trademark was invalid. To have secondary meaning in trademark law is like striking gold! I think Louboutin’s lawyers should argue on appeal that the red sole is the trade dress of the shoe, which has acquired secondary meaning. According to the Supreme Court in Wal-mart Stores, Inc. v. Samara Brothers, Inc., 120 S. Ct. 1339 (2000), “a color, like a “descriptive” word mark, could eventually “come to indicate a product’s origin,” it should be protected upon a showing of secondary meaning.” With this standard, Louboutin should not have a problem getting his trademark registration reinstated on appeal.

Frankly, no one could even form an argument that the “Red Bottoms” have not acquired secondary meaning. Every relevant female celebrity owns a pair, from Beyonce, Madonna, Angelina Jolie, Oprah, and the list goes on and on. Jennifer Lopez even created a song about her “Red Bottoms” called “Louboutins!” The famous shoes have also made plenty of appearances on the on the big screen, for the sake of naming a couple: “Sex in The City 2” and “Bad Teacher” with Cameron Diaz.

Trademark scholars are wondering how the Court of Appeals will handle this matter, but fashionistas are even more on the edge of their heels to see how the legal system will determine the next fashion “in or out” for our O’ so loved “Red Bottoms.”