by Asmah Tareen
They were an unexpected gift from my husband. Lovely strappy black Christian Louboutin heels with the signature red lacquered soles. I had casually mentioned to him that when Oprah sat on her couch interviewing guests, you couldn’t help but notice her perfectly shiny red soles. A few weeks later those signature “China Red” lacquered soles showed up in a box at my front door. This Midwestern mom and lawyer officially had the footwear of celebrities, a first foray into high fashion. But it didn’t take long for the gleam and those trademarked red soles to wear off. My red soles were undergoing a legal battle far beyond my size 7½s.
Louboutin obtained a federal trademark registration on those red bottoms in 2008, essentially receiving legally protectable recognition of the red sole as a unique identifier of the brand. While good trademarks typically need to be a little more than "just a color," (for a little more legal analysis, see http://www.fredlaw.com/areas/ebusiness/archive.html#shoes) Louboutin’s artistic use of China Red over two decades has clearly been a strong brand identifier raising Louboutin’s profile as an internationally recognizable brand.
Women like myself who do not live in the world of high fashion began to recognize shiny red soles on supermodel and celebrity feet dotting the pages of fashion and tabloid magazines. J. Lo sang, "I’m throwin’ on my Louboutin’s. . . Watch these red bottoms" and moms from Minnesota (or their generous husbands, as the case may be) found Barney’s of New York online and ordered a pair.
So it wasn’t surprising that in 2011, when Yves Saint Lauren introduced a line of monochrome shoes including a red shoe with a red insole, heel, upper and outsole, Louboutin was irritated enough to call in the lawyers. They tried to stop YSL from selling them, arguing that they infringed Louboutin’s federal trademark rights. The federal court in New York not only denied Louboutin’s request to stop YSL but went one step further and held that a single color could never serve as a trademark in the fashion industry and Louboutin’s trademark rights were likely not enforceable in the first place. Louboutin appealed.
The U.S. Court of Appeals for the Second Circuit recently issued a decision that split the shoes, so to speak. The Court recognized Louboutin’s trademark rights in red-colored soles for high fashion shoes, noting that they have become a distinctive symbol identifying the Louboutin brand. However, the Court limited Louboutin’s protectable rights to shoes in which the red sole contrasts with the color of the rest of the shoe. This means YSL can go ahead and market and sell its all red shoes. The fashion houses could potentially continue to assert other legal arguments against each other’s rights to use red soles.
For now, both fashion houses are declaring legal victory.
However, my own pair of Louboutins wasn’t as victorious.
After wearing them once gently -- mostly on carpet and often sitting down because it hurt too much to walk in them -- the signature red soles were shiny red no more. The China Red scuffed and cruelly chipped off exposing spots of far less sexy cork-colored sole.
What happened? Oprah’s were never scuffed. Clearly mine were defective, I reasoned.
My Midwest sensibilities scolded me: "Return them. You had no business walking around in Angelina Jolie shoes."
My sister in Chicago responded, "Return them?? It doesn’t matter if they’re scuffed! It doesn’t matter if they hurt your feet! If the man who loves you buys you a pair of Louboutins, you just shut up and love them and wear them no matter what!"
Barneys of New York must have agreed with my sister, as it rejected my attempt to return or exchange them. According to Louboutin’s website, they were not defective, this is normal for very expensive, high-fashion shoes. The website logically explained:
“Our red soles… Please be advised that red soles of our shoes will become worn. Do not worry as this is not a defect of the shoe and is expected to happen from use. We strongly recommend consulting a leather care professional or cobbler for specific advice and maintenance. Should you need to repair or refurbish an item purchased online we are happy to suggest the following repair specialists. . . .”
Oprah probably has a cobbler.
Last year, my scuffed Louboutins and I attended a black-tie event in London. Late in the evening, I entered a powder room full of fashionable women who, like myself, were carrying around their bruised-sole Louboutins (aha! Even fashionable women couldn’t wear them all night!). While reapplying her lipstick, a lovely British woman leaned over and assured me that for only $200, I could simply send my Louboutins to a specialist to have them “Re-red!” No thanks, for now I’ll keep wearing (and carrying around) my bruised pair and hope that Louboutin’s next foray into seeking legal protection involves obtaining patent protection on a new formula of China Red lacquer that doesn’t bruise. Then, I might even get another pair.
Asmah Tareen is a business and intellectual property attorney at the Minneapolis-based law firm of Fredrikson & Byron, P.A. Her e-mail is firstname.lastname@example.org