I know I’m not an attorney, nor am I schooled in trademark law, but as someone who works with brands everyday to develop unique environments that differentiate a brand from its competitors, watching the Louboutin vs. YSL case unfold has been quite eye-opening.
As a registered architect, I deal with the law in a very rudimentary way: building code compliance. To my mind there are two schools of thought on compliance: the letter of the law, and the spirit of the law. I fall into the latter category. (I also went to a state school instead of one of the Ivy Leagues and am a closet socialist).
I always root for the little guy—not that Louboutin can be considered the little guy when they sell an estimated 240,000 pairs of shoes annually. But unfortunately for Louboutin, it appears Manhattan Federal Judge Victor Marrero is a letter of the law kind of guy, appears to know very little of brand equity, and fails to distinguish the fundamental difference between the application of color to the sole of a shoe and a painter’s selection of color within a work of art. I think it’s fabulous that he elevates fashion to such a level, but really the two hardly make for an appropriate comparison.
The crux of the issue appears to lie with the interpretation of “secondary meaning” as applied by the courts regarding the criteria to which an attribute contributes to something being (pardon my creative English) trademark-able. From what I’ve read, color seems to be quite difficult to trademark. The judge’s opinion, according to an August 19th article in WWD, is that “the secondary meaning of the color red is irrelevant in this matter because it performs a ‘creative function.’” Meanwhile, the judge totally acknowledges (although not in these exact words) that even a heterosexual man would recognize a Louboutin shoe if he saw the red sole on the shoe of a woman walking down the street. No offense to straight guys.
Judge Marrero not only seems to be intent on dismissing the suit against YSL but wants to further his error by potentially stripping Louboutin of its 2008 trademark on the exclusive use of red soles. Truly rubbing salt in the wound, it appears that if a summary judgment is granted, the judge’s ruling could lead to the cancellation of Louboutin’s trademark – which YSL clearly intends to pursue. This will cause pure anarchy in the fashion world. It’s bad enough that today’s designs by Karl Lagerfeld often end up in Forever 21 tomorrow. If Louboutin’s trademark is cancelled, I’m going to be able to buy red-soled shoes from Payless. And all you jewelers that wish you were Tiffany & Co, start ordering your new Robin’s Egg Blue boxes.
Retail is hard enough these days. People don’t have jobs. Some have everything they could possible need already. Italy’s economy appears to be in trouble. Does the legal system REALLY need to make it that much harder? Really? As retail designers, we always look for unique ways to solve our clients’ design problems with something that is “own-able” (creating new words again) for their brand identity and the associated environment. Using a 3form product isn’t necessarily own-able, but using it in a way no one else would think of is.
The same logic applies to the red soled shoes. The actual evidence that YSL has produced in their defense are two very specific red-soled shoes in history: the ruby slippers and the heels of King Louis XIV. Interestingly enough, Louis XIV, XV, and XVI all wore red heels – it was a symbol of nobility, and DEFINITELY had a secondary meaning. It’s also ironic that both the Wicked Witch of the East (and subsequently the West) and Louis XVI got killed wearing them. But I digress.
I think the significant difference in Louboutin’s use of the red sole is that it was genius, as all truly inspired brand work is. It took the single most functional part of the shoe, the sole, that which is exposed to dirt and grime and snow and road salt, not to mention carelessly discarded chewing gum and a whole host of elements I don’t even want to think about, and elevated it to equal status of importance as the rest of the shoe by applying a lacquered red finish on it. It’s the pink silk lining of a wealthy woman’s wardrobe. It’s that little fortune tucked inside the fortune cookie (not truly a Chinese tradition by the way – invented in the US) that’s the whole point of getting the cookie in the first place– because let’s face it, they taste pretty nasty.
If all shoes have red soles, they would no longer be special or noteworthy. At the time of Louis XVI, if someone other than nobility had dared to wear a red heeled shoe, Marie Antoinette probably would have said “off with their head.” It’s the proof of membership to a very select club. If YSL wants its monolithic collection – have at it. Make it pink or blue or green or even another tone of red. Guaranteed there is either a Pantone or an RML number attached to that very specific red. It’s not indiscriminate, it’s not arbitrary, and it doesn’t change with shoe design as far as I know.
Brand is all about consistency – and so are the soles of a Louboutin shoe. But brand is also about building a relationship with its customers, being reliable, having value, and providing credibility. If I had a closet full of Louboutin shoes, I’d sue the courts for devaluing my investment as surely as I’d go after a brokerage firm whose agent knowingly sold me a bad stock. If you compare this case to one of brand identity, it’s pretty cut and dried. A corporate logo is totally trademark-able, and infringement is totally prosecutable. I see no difference here. The problem here is that Judge Marrero is a letter of the law kind of guy, and all he sees is the sole of a shoe.
Kathleen Jordan is a principal in Gensler’s New York office, and a leader of our retail practice with over 24 years of experience across the United States and internationally. Kathleen has led a broad range of retail design projects as both an outside consultant and as an in-house designer. She has led projects from merchandising and design development all the way through construction documentation and administration, and many of her projects have earned national and international design awards. Contact her at firstname.lastname@example.org.