By  on August 18, 2011

Christian Louboutin has said that when he came up with his now-famous sole back in 1992, he drew inspiration from the color of his assistant’s nails, and coated the bottom of a pair of his newly minted women’s shoes a vibrant red.

Now, Louboutin’s famous trademark, which it obtained in 2008, is in danger after a New York federal judge denied the fashion house a preliminary injunction barring the sale of a red monochrome pump created by rival Yves Saint Laurent.

Originally filed in April, Louboutin’s lawsuit claimed that YSL infringed upon its red-sole mark with an all-red shoe from its monochromatic cruise 2011 collection

Lawyers for both sides are to appear before Judge Victor Marrero today so that Louboutin can “show cause” as to why the decision should “not be converted to a motion for partial summary judgment canceling Louboutin’s trademark.”

Already appealing the court’s decision, attorneys for Louboutin said that if the judge rules to cancel its mark sua sponte, or without prior motions or further requests from the parties, it would fight that decision, too.

“Louboutin’s nightmare is that every fast-fashion retailer will begin stirring up vats of red dye because it believes the trademark is officially canceled or is about to be,” said Susan Scafidi, director of Fordham University’s Fashion Law Institute. “Louboutin stands to lose so much. This is identity theft for him. Those red soles are almost as recognizable as his name.”

At the heart of the debate is a basic question about identity, namely, what makes an object uniquely and universally identifiable as a single entity or brand?

In this case, what makes a Louboutin a Louboutin? Is it the shoe’s logos? The red sole? The craftsmanship? The price point?

“The philosophical question is, if it doesn’t have a red sole, is it a Louboutin?” Scafidi said. “If the shoe has house designs on it, yes, but the question is, will the public see it that way?”

Bubbling beneath trademark cases is the need to satisfy what the law calls “secondary meaning,” which is essentially proving that, in the public’s mind, the mark has become associated with a single source, not just the item itself. Here, Louboutin’s red sole is protected under trade dress, an area of intellectual property law that deals with the design or appearance of a product. Louboutin has argued that the link between mark and product is vital to its DNA, part of its identity, and infringing upon that would cause irreparable harm.

But Judge Marrero said last Wednesday that the secondary meaning of the color red is irrelevant in this matter because it performs a “creative function.” As in art, color is so important to creativity and expression that, no one designer should have a “monopoly” on it, he explained. If that is the case, then Tiffany & Co., which has trademarked its signature blue, may potentially have a cause for concern, said Scafidi, who added that the Court of Appeals will have a lot to chew on in light of Judge Marrero’s decision to “sidestep the question of secondary meaning.”

While Judge Marrero’s decision won’t likely have a major impact on past rulings, his ruling is a break from the way the judicial community typically views similar trademark cases. According to legal experts, even if the Court of Appeals agrees with the judge, Louboutin will keep fighting — maybe even all the way to the Supreme Court level.

At the end of the day, color trademarks are tricky, according to Heather McDonald, a partner at Baker Hostetler.

Louboutin was able to obtain the red-sole mark because “he was the first to attempt such a thing,” she said. “It would be harder if he tried to obtain that mark today.”

While having a design feature that is synonymous with a brand is important, owning a trademark doesn’t really matter when looking at the larger question of identity, argued Hana Ben-Shabat, a retail consultant and partner at A.T. Kearney.

“A trademark matters just in the sense that you can take [legal] action,” she said. “But at the end of the day, what makes a Louboutin a Louboutin is the fact that the shoes are beautifully made and beautifully crafted. And those who want to be associated with the brand want to be a part of that.”

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