Louboutin sued YSL over an all-red shoe — and ended with a narrower trademark

The lacquered red outsole had been Christian Louboutin's signature for years, and in 2008 the company registered it as a US trademark. In 2011, Yves Saint Laurent released a monochrome collection — shoes entirely one colour, upper and sole alike, including all-red styles like the Tribute and Tribtoo. In April 2011 Louboutin sued in Manhattan federal court for trademark infringement, counterfeiting and dilution, seeking an injunction to stop the all-red shoes. YSL answered with a counterclaim: cancel the trademark outright, because a single colour was functional and merely ornamental.

The first ruling was a blow. In August 2011 Judge Victor Marrero denied Louboutin's preliminary injunction, holding that trademark law could not let one brand monopolise a colour in fashion — colours served decorative and aesthetic purposes there, and the Red Sole mark was likely invalid. Louboutin appealed. On September 5, 2012, the Second Circuit reversed that per se rule: following Qualitex, a single colour can be protected in fashion if it has acquired secondary meaning, and Louboutin's sole had — through advertising, press, surveys and sales.

But the victory was rewritten on the way down. The court found the secondary meaning did not extend to all-red shoes: Louboutin could produce just four images of such shoes, while YSL had sold monochrome footwear since the 1970s. The judges ordered the trademark office to amend the registration — protection only where the red outsole contrasts with the upper. YSL kept selling its all-red shoes; Louboutin kept a valid trademark, narrower than the one it had enforced from. Both sides claimed victory, and both were partly right.