Red sole diary: Christian Louboutin can trademark a color, but it doesn’t help him much

That flash of red does its job. ()
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It's been a little more than a week since Christian Louboutin, the French shoe designer who was at the forefront of the movement to bring back the four-inch heel in the early '90s, sued Gucci-owned fashion house Yves Saint-Laurent in a Manhattan federal courthouse: Since 1992, Louboutins have been known for their lacquer-red soles, and, the designer's counsel claimed, a red sole introduced by Yves Saint-Laurent violated the trademark feature he registered in the U.S. in 2007.

His lawyers have since struck a second time, suing the Brazilian design house Carmen Steffens for red-sole infringement in France.

I conducted some grossly unscientific polling to see what Louboutin's target audience thinks of his legal claims, and found that there's no consensus on whether Louboutin's claim is absurd or Yves Saint-Laurent a copycat. Over drinks, one friend, a public-relations executive from the Upper East Side with, let's say, a history of shoe worship, thought it was simple: “He came up with the red soles, he invested a lot in them, you can’t just copy that.” At the coffee machine, an impressively fashion-forward administrator at my office noted, “That’s how everyone knows his shoes.” But another well-dressed friend furrowed her brow and snorted. “What, he owns the color red now? Nobody else can make red shoes?”

In fact, I think the law fundamentally supports all three reactions, partly. On the whole, fashion designs get very little intellectual property protection. They aren’t usually eligible for patents or copyrights. Patents are for inventions, copyrights for creative works, and fashion traditionally falls outside both definitions.

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Senator Chuck Schumer (disclosure: my former boss) sponsored a bill last year to create a special limited three-year copyright for certain unique fashion designs, and while it had some supporters, others argued persuasively that the lack of fashion protection is a good thing. Unlike a new drug or pop single, where copies just displace the original and steal away potential customers, much of the copying in fashion fuels the whole industry. This is a realm in which clothes from last season are no longer valuable. Speed, change, and imitation are the hallmarks of the business. When a designer introduces a new trick, if it strikes a chord then every competitor makes their own version and every stylish customer wants it. Fast-moving trends reduce the life cycle of the product so that people feel the need to refresh their wardrobes constantly—and keep the fashion houses in business.

Of course blatant copycats don’t have credibility. How many times has Tim Gunn arched his eyebrows at a "Project Runway" contestant and singsonged that their projects looked awfully similar to some famous designer’s collection or that they need a course in fashion history? Among serious designers, “derivative” is an insult almost worse than "cheap-looking."

How does all this apply to the Louboutin case? First, some background. Louboutins are well known to fashion gurus, famous for their insanely high heels, fanciful designs, and bright red undersoles.

The legend, and now the lawsuit, has it that almost 20 years ago Louboutin first kicked a pair of shoes up a notch by painting the soles red with nail polish; they've appeared on every shoe he's sold in the United States since. Many of those were on famous feet: the complaint makes so much use of celebrities and models wearing Louboutin's shoes that it reads in places more like a Page Six item than a legal document.

And in fashion's other, fantasy universe they're similarly ubiquitous among the--eh, well-heeled: Carrie Bradshaw and Barbie both have pairs in their fictional closets. Louboutins were even the title subject of a terrible-yet-catchy Jennifer Lopez song in which she mentions the red soles alongside her own iconic posterior: I'm throwing on my Louboutins / Watch these red bottoms / And the back of my jeans / Watch me go / Bye baby.

In fact there's a reason all of this makes it into the court documents, and not just the news reports hoping to take what might otherwise be a rather dry intellectual property dispute and sex it up with some boldface names. In one much more pedestrian case, the Supreme Court ruled explicitly that Qualitex Co., a maker of dry-cleaning equipment, could "own" a certain puke-green color. A color, according to the ruling, may serve as a trademark provided it fulfills the same purpose as a more traditional trademark such as a brand name or a logo: to identify a particular provider. U.P.S.’ brown trucks and Owens-Corning’s pink insulation both enjoy trademark protection.

But the Court also noted that competitors may still copy colors if they are “functional”—that is, if they are important to the way a product works beyond merely the reputation they bestow.

For Louboutin to prevail, then, it will have to show three things: that consumers associate the red sole with Louboutin shoes (that's where his celebrity clients come in); that they might be confused by an imitator; and that the red soles are not “functional”—which is to say, the basic function of a competing product isn't hampered by not copying the color.

The first should be easy. All the friends in my informal poll recognized the red soles as a unique Louboutin feature (and not just from reading a recent Lauren Collins New Yorker profile that called them “a marketing gimmick that renders an otherwise indistinguishable product instantly recognizable”). Plus, Louboutin secured a registration from the U.S. Patent and Trademark Office for “a lacquered red sole” on “women’s high fashion designer footwear,” which means a court will presume its validity.

The parties might well commission surveys and make lots of other arguments about the connection in the public’s mind between red soles and Louboutin. If I were Y.S.L.’s lawyer I might try to argue that the public to be assessed should include fashion-backward men in Dockers and Levis. But in trademark law the relevant public is the base of likely customers, and those women know their Louboutins.

Sometimes defendants in cases involving luxury goods try to use that point to their advantage on the second question, about potential consumer confusion. Y.S.L. could argue that knowledgeable customers ready to spend $1000 on a pair of shoes do not accidentally buy the wrong ones. But that’s not normally enough to overcome otherwise confusing similarity. Think of counterfeiting: people who buy Kate Spade bags and Rolex watches on Canal Street understand they are not purchasing genuine articles, but trademark law still forbids the knock-offs. In addition, uses that “dilute” the uniqueness of a trademark can run afoul of the law, and Louboutin claims that Y.S.L. is undermining the strong consumer perception that red soles equal Louboutin.

So if Y.S.L. is going to win, it probably will have to argue that red soles are “functional.” This is where the application of law to fashion gets a little ridiculous. Most traditional cases about functionality involve mechanical attributes: The shape of a spray bottle’s nozzle, or a physical feature that’s cheaper to make than the competing alternatives.

In contrast, it’s pretty hard to portray fanciful design choices as “functional.” The very name of the doctrine applied to aspects of style and appearance—“aesthetic functionality”—betrays the contradiction at the core of the idea. Isn’t every single detail about the look of a fashionable shoe, dress, or handbag potentially part of its usefulness and its competitive value? What other use does fashion have?

The Louboutin complaint notes that the color “is said to provide an alluring ‘flash of red’ when a woman walks down the street.” Does that mean it helps the shoe to, putting it crudely, do the job Jennifer Lopez clearly thinks it does, rather than just identifying the shoe's maker? Perhaps, except sometimes the brand cachet is exactly the alluring part of a fashion accessory, from Converse high tops to Carrie Bradshaw’s Louboutins and Manolos.

The particular facts of the Y.S.L. case offer a better functionality argument, because the supposedly infringing shoes are entirely red, not just red on the sole. Even if Louboutin can monopolize the surprising flash of red on the bottom of a different-colored shoe, can that trademark really force all other makers of red shoes to eschew red soles? If Y.S.L. instead put a bright lacquered gold sole on a red shoe, wouldn’t that seem more like stealing Louboutin's trademark? I think this argument could win the case for Y.S.L., not because there is something wrong with Loubotin holding a trademark in a color, but because going after red shoes pushes his rights too far.

Putting aside Y.S.L.’s entirely red shoes, that still leaves Louboutin in control of most red soles. But that hardly opens a backdoor route to fashion copyright. The trademark doctrines I just described pull off a pretty neat trick of accommodating most of my friends’ competing instincts.

If people began copying Louboutin’s red soles the year after he first slathered on that nail polish, they would face no legal impediment. The color would be decoration, but not branding—at least not yet. (That's why Louboutin's own lawyers are at such pains to emphasize how long ago he painted his first sole.) Perhaps red soles would become the season’s must-have. Louboutin might well have earned some renown within the industry for inspiring such a trend, but he couldn’t control it.

With time, luck, success, and some savvy marketing, however, Louboutin now benefits from a strong public association between his brand and those red soles. If you copy them today, you may face a lawsuit as well as tsk tsks from Tim Gunn. Now, you are interfering with the long-term communications between Louboutin and the public. If, however, you can show that you need to copy a design feature that “belongs” to someone else—as Y.S.L. may argue it needs red soles for red shoes—then you can get off the hook.

As a result, fashion now gets intellectual property protection that’s the mirror image of patents and copyrights. Those versions of I.P. apply right away, and eventually expire (think of prescription pharmaceuticals that eventually get generic competition when their patents lapse). Leaving fashion I.P. to trademark inverts this pattern, telling would-be copiers to get it while it’s hot.

Which might just answer that other claim about the meaning and purpose of originality in fashion: Fashion must innovate to survive, but it also must imitate and interpret. In a funny way, trademark law leaves fashion in a position to do both.