206 696 FEDERAL REPORTER, 3d SERIES

tion, we conclude that the district court’s Yves Saint Laurent, (an unincorporated
rejection of Jones’s motion to reduce the association), John Does, A to Z, (Un-
amount of punitive damages must be over- identified), Jane Does, A to Z, (Un-
turned. We believe the award was imper- identified), XYZ Companies, 1 to 10,
missibly excessive. Our ruling should not (Unidentified), Defendants–Appellees.
be construed as making light of Jones’s
Docket No. 11–3303–cv.
misconduct. Without question Jones en-
gaged in serious misconduct which justifies United States Court of Appeals,
a punitive award. On the other hand, his Second Circuit.
misconduct in light of all the circumstances
Argued: Jan. 24, 2012.
was not so egregious as to justify punitive
damages of $300,000. We conclude upon Decided: Sept. 5, 2012.
all the relevant factors discussed above Background: French footwear designer
that the highest level of punitive damages brought action against American competi-
that can properly be sustained is $100,000. tor, alleging that competitor violated Lan-
ham Act and New York law by producing
‘‘high fashion’’ shoes with designer’s trade-
CONCLUSION
marked, signature lacquered red outsoles.
The judgment awarding punitive dam- Competitor counter–claimed for cancella-
ages is hereby vacated, and a new trial is tion of designer’s trademark registration.
ordered limited to the issue of the amount The United States District Court for the
of punitive damages unless Payne agrees Southern District of New York, Victor
to a remittitur reducing the amount of Marrero, J., 778 F.Supp.2d 445, denied
punitive damages to $100,000. In all other designer’s motion for preliminary injunc-
respects, the judgment is affirmed. tion. Designer appealed.
Holding: The Court of Appeals, José A.
Cabranes, Circuit Judge, held that as lim-
ited to outsoles’ color contrast with shoes’

,
upper components, design feature acquired
secondary meaning.
Affirmed in part and reversed and re-
manded in part.

1. Trademarks O1064
CHRISTIAN LOUBOUTIN S.A., Chris- For purposes of trademark protection,
tian Louboutin, L.L.C., Christian an ‘‘ornamental feature’’ is one that does
Louboutin, Plaintiffs–Counter–Defen- not serve a purpose in the design of a
dants–Appellants, product. Lanham Act, § 1 et seq., 15
U.S.C.A. § 1051 et seq.
v. See publication Words and Phras-
es for other judicial constructions
YVES SAINT LAURENT AMERICA and definitions.
HOLDING, INC., Yves Saint Laurent
S.A.S., Yves Saint Laurent America, 2. Injunction O1092
Inc., Defendants–Counter–Claimants– To obtain a preliminary injunction, the
Appellees, moving party must establish irreparable
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 207
Cite as 696 F.3d 206 (2nd Cir. 2012)

harm and either (1) a likelihood of success 7. Trademarks O1421

on the merits or (2) sufficiently serious Courts analyze trademark infringe-
questions going to the merits to make ment claims in two stages, first looking to
them a fair ground for litigation and a see whether the mark merits protection,
balance of hardships tipping decidedly to- and second, if and only if the trademark is
ward the party requesting the preliminary distinctive within the meaning of trade-
relief. mark law, and is therefore valid and pro-
tectable, the court must then determine
3. Federal Courts O815 whether the defendant’s use of a similar
Court of Appeals reviews the denial of mark is likely to cause consumer confu-
a preliminary injunction for an abuse of sion. Lanham Act, § 1 et seq., 15
discretion. U.S.C.A. § 1051 et seq.

4. Trademarks O1000 8. Trademarks O1030, 1034

In order for a mark to be protectable,
Principal purpose of federal trade-
it must be distinctive and not generic.
mark law is to secure the public’s interest
Lanham Act, § 1 et seq., 15 U.S.C.A.
in protection against deceit as to the
§ 1051 et seq.
sources of its purchases, and the business-
man’s right to enjoy business earned 9. Trademarks O1031
through investment in the good will and Mark is said to be inherently distinc-
reputation attached to a trade name. Lan- tive, and thus it is protectable under feder-
ham Act, § 1 et seq., 15 U.S.C.A. § 1051 et al trademark law, if its intrinsic nature
seq. serves to identify a particular source.
Lanham Act, § 1 et seq., 15 U.S.C.A.
5. Trademarks O1183 § 1051 et seq.
Federal trademark law provides the
10. Trademarks O1032
owner of a mark with the enforceable right
Even a mark that is not inherently
to exclude others from using the mark.
distinctive may nonetheless acquire dis-
Lanham Act, § 1 et seq., 15 U.S.C.A.
tinctiveness, and thus be protectable under
§ 1051 et seq.
federal trademark law, by developing a
6. Copyrights and Intellectual Property ‘‘secondary meaning’’ in the public mind,
O1 meaning that, in the minds of the public,
the primary significance of a product fea-
Patents O1
ture is to identify the source of the product
Trademarks O1064 rather than the product itself. Lanham
Federal trademark law is not intended Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.
to protect innovation by giving the innova- See publication Words and Phras-
es for other judicial constructions
tor a monopoly over a useful product fea- and definitions.
ture; such a monopoly is the realm of
patent law or copyright law, which seek to 11. Trademarks O1064
encourage innovation, and not of trade- If a markholder has successfully dem-
mark law, which seeks to preserve a vigor- onstrated that its mark is valid and that
ously competitive market for the benefit of the competitor’s mark is likely to cause
consumers. Lanham Act, § 1 et seq., 15 confusion, the competitor can nevertheless
U.S.C.A. § 1051 et seq. prevail by showing that the mark is func-
208 696 FEDERAL REPORTER, 3d SERIES

tional. Lanham Act, § 1 et seq., 15 quality of the article. Lanham Act, § 1 et

U.S.C.A. § 1051 et seq. seq., 15 U.S.C.A. § 1051 et seq.
See publication Words and Phras-
12. Trademarks O1064 es for other judicial constructions
and definitions.
Functionality of a mark can be dem-
onstrated by, inter alia, showing that the 18. Trademarks O1064
mark has either traditional utilitarian func-
Product feature is ‘‘essential’’ to the
tionality or aesthetic functionality. Lan-
use or purpose of the article, as required
ham Act, § 1 et seq., 15 U.S.C.A. § 1051 et
to be deemed functional in a utilitarian
seq.
sense, if it is dictated by the functions to
13. Trademarks O1030 be performed by the article. Lanham Act,
§ 1 et seq., 15 U.S.C.A. § 1051 et seq.
If a mark is capable of being or be-
See publication Words and Phras-
coming distinctive of the applicant’s goods es for other judicial constructions
in commerce, then it is capable of serving and definitions.
as a trademark. Lanham Act, § 1 et seq.,
15 U.S.C.A. § 1051 et seq. 19. Trademarks O1064
Product feature ‘‘affects the cost or
14. Trademarks O1057(2) quality of the article,’’ as required to be
Color alone can meet the basic legal deemed functional, and thus not protecta-
requirements for use as a trademark, ble under trademark law, where it permits
where it acts as a symbol that distin- the article to be manufactured at a lower
guishes a firm’s goods and identifies their cost or constitutes an improvement in the
source, without serving any other signifi- operation of the goods. Lanham Act, § 1
cant function. Lanham Act, § 1 et seq., 15 et seq., 15 U.S.C.A. § 1051 et seq.
U.S.C.A. § 1051 et seq. See publication Words and Phras-
es for other judicial constructions
15. Trademarks O1064 and definitions.

Aspects of a product that are function- 20. Trademarks O1064

al generally cannot serve as a trademark. Generally, where a product’s design is
Lanham Act, § 1 et seq., 15 U.S.C.A. functional, there is no need to proceed
§ 1051 et seq. further in the analysis of whether the de-
sign is protected by federal trademark law.
16. Patents O191
Lanham Act, § 1 et seq., 15 U.S.C.A.
Functional features of a product can § 1051 et seq.
be protected only through the patent sys-
tem, which grants a limited monopoly over 21. Trademarks O1064
such features until they are released into When the aesthetic design of a prod-
general use. uct is itself the mark for which trademark
protection is sought, the court may deem
17. Trademarks O1064 the mark functional, and thus not protecta-
Product feature is considered to be ble, if giving the markholder the right to
‘‘functional,’’ and thus not protectable un- use it exclusively would put competitors at
der trademark law, in a utilitarian sense if a significant non–reputation–related disad-
it is (1) essential to the use or purpose of vantage. Lanham Act, § 1 et seq., 15
the article, or if it (2) affects the cost or U.S.C.A. § 1051 et seq.
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 209
Cite as 696 F.3d 206 (2nd Cir. 2012)

22. Trademarks O1064 petition by limiting the range of adequate

Test for aesthetic functionality of a alternative designs, the aesthetic function-
product feature, for purposes of determin- ality doctrine denies such protection.
ing its protectability under federal trade- Lanham Act, § 1 et seq., 15 U.S.C.A.
mark law, is threefold: first, the court § 1051 et seq.
addresses whether the design feature is
27. Trademarks O1064
either essential to the use or purpose or
affects the cost or quality of the product at Distinctive and arbitrary arrange-
issue, second, if the feature would, from a ments of predominantly ornamental fea-
traditional utilitarian perspective, be con- tures that do not hinder potential competi-
sidered essential to the use or purpose or tors from entering the same market with
to affect its cost or quality, then the design differently dressed versions of the product
feature is functional, but, third, if the de- are non–functional, and are hence eligible
sign feature is not functional from a tradi- for trademark protection. Lanham Act,
tional perspective, it must still be shown § 1 et seq., 15 U.S.C.A. § 1051 et seq.
not to have a significant effect on competi-
28. Trademarks O1064
tion in order to receive trademark protec-
tion. Lanham Act, § 1 et seq., 15 Mark is ‘‘aesthetically functional,’’ and
U.S.C.A. § 1051 et seq. therefore ineligible for protection under
the Lanham Act, where protection of the
23. Trademarks O1064 mark significantly undermines competi-
Lanham Act protection does not ex- tors’ ability to compete in the relevant
tend to configurations of ornamental fea- market. Lanham Act, § 1 et seq., 15
tures which would significantly limit the U.S.C.A. § 1051 et seq.
range of competitive designs available. See publication Words and Phras-
Lanham Act, § 1 et seq., 15 U.S.C.A. es for other judicial constructions
§ 1051 et seq. and definitions.

24. Trademarks O1064 29. Trademarks O1064

Doctrine of aesthetic functionality In making a determination as to
bars protection of a mark that is necessary whether a mark is aesthetically functional,
to compete in the relevant market. Lan- and therefore ineligible for protection un-
ham Act, § 1 et seq., 15 U.S.C.A. § 1051 et der the Lanham Act, courts must carefully
seq. weigh the competitive benefits of protect-
25. Trademarks O1064 ing the source–identifying aspects of a
Ultimate test of aesthetic functionali- mark against the competitive costs of pre-
ty, for purposes of determining a mark’s cluding competitors from using the fea-
protectability, is whether the recognition ture. Lanham Act, § 1 et seq., 15
of trademark rights in an aesthetic design U.S.C.A. § 1051 et seq.
feature would significantly hinder competi- 30. Trademarks O1064
tion. Lanham Act, § 1 et seq., 15
In determining whether a mark has
U.S.C.A. § 1051 et seq.
an aesthetic function so as to preclude
26. Trademarks O1064 trademark protection, courts must take
Where an ornamental feature is care to ensure that the mark’s very suc-
claimed as a trademark and trademark cess in denoting and promoting its source
protection would significantly hinder com- does not itself defeat the markholder’s
210 696 FEDERAL REPORTER, 3d SERIES

right to protect that mark. Lanham Act, confusion even at the expense of a manu-
§ 1 et seq., 15 U.S.C.A. § 1051 et seq. facturer’s creativity.
31. Trademarks O1064 37. Trademarks O1360
Analysis of the aesthetic functionality
Certificate of registration with the
of a mark is highly fact–specific, requiring
United States Patent and Trademark Of-
the court to consider both the markhold-
fice (USPTO) is prima facie evidence that
er’s right to enjoy the benefits of its effort
the mark is registered and valid, that the
to distinguish its product and the public’s
registrant owns the mark, and that the
right to the vigorously competitive market
registrant has the exclusive right to use
protected by the Lanham Act, which an
the mark in commerce. Lanham Act,
overly broad trademark might hinder.
§ 7(b), 15 U.S.C.A. § 1057(b).
Lanham Act, § 1 et seq., 15 U.S.C.A.
§ 1051 et seq. 38. Trademarks O1065(3)
32. Trademarks O1057(2) French footwear designer’s trade-
No per se rule governs the protection marked, signature lacquered red outsoles
of single–color marks in the fashion indus- acquired limited secondary meaning as dis-
try. Lanham Act, § 1 et seq., 15 U.S.C.A. tinctive symbol to identify his brand, and
§ 1051 et seq. thus that design feature was valid and
protectable under Lanham Act to extent
33. Trademarks O1064
that red outsoles contrasted with color of
Functionality defense to a trademark
shoe’s ‘‘upper’’ component; in that context,
infringement claim does not guarantee a
design feature created ‘‘symbol,’’ as shown
competitor the greatest range for his crea-
by designer’s advertising expenditures,
tive outlet, but only the ability to fairly
media coverage, and sales success over 20
compete within a given market. Lanham
years of use, and created ‘‘brand with
Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.
worldwide recognition’’ insofar as feature
34. Trademarks O1064 caused lacquered red outsole to ‘‘pop’’ in
Purpose of the functionality defense to contrast to upper’s color, as consumers
a trademark infringement claim is to pre- recognized contrast between color of out-
vent advances in functional design from sole and color of upper as distinctive fea-
being monopolized by the owner of the ture of designer’s footwear. Lanham Act,
mark in order to encourage competition § 1 et seq., 15 U.S.C.A. § 1051 et seq.
and the broadest dissemination of useful
design features. Lanham Act, § 1 et seq., 39. Trademarks O1057(2)
15 U.S.C.A. § 1051 et seq. In the case of a single–color mark,
distinctiveness must generally be proved
35. Copyrights and Intellectual Property
by demonstrating that the mark has ac-
O12(1)
quired secondary meaning. Lanham Act,
Copyright, unlike trademark, rewards
§ 1 et seq., 15 U.S.C.A. § 1051 et seq.
creativity and originality even if they inter-
fere with the rights of an existing copy- 40. Trademarks O1032
right holder.
Crucial question in a trademark case
36. Trademarks O1080 involving secondary meaning always is
Trademark system, unlike the copy- whether the public is moved in any degree
right system, aims to prevent consumer to buy an article because of its source.
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 211
Cite as 696 F.3d 206 (2nd Cir. 2012)

Lanham Act, § 1 et seq., 15 U.S.C.A. voise & Plimpton LLP, New York, NY, for
§ 1051 et seq. Defendants–Counter–Claimants–Appellees
Yves Saint Laurent America Holding, Inc.,
41. Trademarks O1032
Yves Saint Laurent S.A.S., and Yves Saint
Factors that are relevant in determin- Laurent America, Inc., and Defendants–
ing secondary meaning in a trademark Appellees Yves Saint Laurent, (an unincor-
case include (1) advertising expenditures, porated association), John Does, A to Z,
(2) consumer studies linking the mark to a (Unidentified), Jane Does, A to Z, (Un-
source, (3) unsolicited media coverage of identified), XYZ Companies, (Unidenti-
the product, (4) sales success, (5) attempts fied).
to plagiarize the mark, and (6) length and
Janet L. Cullum (John W. Crittenden,
exclusivity of the mark’s use. Lanham
Cooley LLP, San Francisco, CA, and Su-
Act, § 1 et seq., 15 U.S.C.A. § 1051 et seq.
san J. Hightower, Pirkey Barber LLP,
42. Trademarks O1032 Austin, TX, on the brief), Cooley LLP,
Whether a mark has acquired distinc- New York, NY, for amicus curiae Interna-
tiveness is an inherently factual inquiry. tional Trademark Association, in support
Lanham Act, § 1 et seq., 15 U.S.C.A. of Plaintiffs–Counter–Defendants–Appel-
§ 1051 et seq. lants.

43. Trademarks O1689 Richard Z. Lehv (Jason D. Jones on the

brief), Fross Zelnick Lehrman & Zissu,
Where the record contains sufficient
P.C., New York, NY, for amici curiae Tif-
undisputed facts to resolve the question of
fany (NJ) LLC and Tiffany & Co., in
a mark’s distinctiveness, the court may do
support of Plaintiffs–Counter–Defendants–
so as a matter of law. Lanham Act, § 1 et
Appellants.
seq., 15 U.S.C.A. § 1051 et seq.
Rebecca Tushnet, Professor of Law,
44. Trademarks O1032 Georgetown University Law Center,
To determine whether a mark has sec- Washington, D.C., on the brief, for amici
ondary meaning, it is not always the gen- curiae Professors of Law in Trademark
eral public’s understanding but, depending and Related Fields, in support of Defen-
upon the product, often only a segment of dants–Counter–Claimants–Appellees.
consumers that need be examined. Lan-
ham Act, § 1 et seq., 15 U.S.C.A. § 1051 et Before: CABRANES, STRAUB, and
seq. LIVINGSTON, Circuit Judges.

i A. CABRANES, Circuit Judge:

JOSE
The question presented is whether a
single color may serve as a legally protect-
Harley I. Lewin (Lee Carl Bromberg ed trademark in the fashion industry and,
and Charles D. Ray, on the brief), McCar- in particular, as the mark for a particular
ter & English, LLP, New York, NY, Bos- style of high fashion women’s footwear.
ton, MA, Hartford, CT, for Plaintiffs– Christian Louboutin, a designer of high-
Counter–Defendants–Appellants Christian fashion women’s footwear and accessories,
Louboutin S.A., Christian Louboutin, has since 1992 painted the ‘‘outsoles’’ of his
L.L.C., Christian Louboutin. women’s high-heeled shoes with a high-
David H. Bernstein (Jyotin Hamid and gloss red lacquer. In 2008, he registered
Rayna S. Feldman, on the brief), Debe- the red lacquered outsole as a trademark
212 696 FEDERAL REPORTER, 3d SERIES

with the United States Patent and Trade We further conclude that Louboutin’s
Office (‘‘PTO’’).1 We are asked to decide trademark, which covers the red, lac-
whether that mark is protectable under quered outsole of a woman’s high fashion
federal trademark law. shoe, has acquired limited ‘‘secondary
Louboutin, Christian Louboutin S.A., meaning’’ as a distinctive symbol that iden-
and Christian Louboutin, L.L.C. (jointly, tifies the Louboutin brand. As explained
‘‘Louboutin’’), bring this interlocutory ap- below, pursuant to Section 37 of the Lan-
peal from an August 10, 2011 order of the ham Act, 15 U.S.C. § 1119, we limit the
United States District Court for the South- trademark to uses in which the red outsole
ern District of New York (Victor Marrero, contrasts with the remainder of the shoe
Judge ) denying a motion for a preliminary (known as the ‘‘upper’’). We conclude that
injunction against alleged trademark in- the trademark, as thus modified, is entitled
fringement by Yves Saint Laurent Amer- to trademark protection. Finally, we con-
ica Holding, Inc., Yves Saint Laurent clude that, because the monochrome de-
S.A.S., and Yves Saint Laurent America, sign employed by YSL is not a use of
Inc. (jointly, ‘‘YSL’’). The District Court, Louboutin’s modified trademark, we need
in addressing a difficult and novel issue of not, and indeed should not, address wheth-
trademark law, held that, because a single er YSL’s use of a red outsole risks con-
color can never be protected by trademark sumer confusion or whether the Louboutin
in the fashion industry, Louboutin’s trade- mark, as modified, is ‘‘functional.’’
mark was likely not enforceable. It there- We therefore (1) affirm in part the order
fore declined to enter a preliminary injunc- of the District Court, insofar as it declined
tion to restrain YSL’s alleged use of the to enjoin the use of all red lacquered out-
mark. soles; (2) reverse in part the order of the
We conclude that the District Court’s District Court insofar as it purported to
holding that a single color can never serve deny trademark protection to Louboutin’s
as a trademark in the fashion industry, use of contrasting red lacquered outsoles;
Christian Louboutin S.A. v. Yves Saint and (3) enter judgment accordingly. We
Laurent America, Inc., 778 F.Supp.2d 445, remand for further proceedings with re-
451, 457 (S.D.N.Y.2011) (‘‘Louboutin ’’), is gard to YSL’s counterclaims.
inconsistent with the Supreme Court’s de-
cision in Qualitex Co. v. Jacobson Prod- BACKGROUND2
ucts Co., 514 U.S. 159, 162, 115 S.Ct. 1300, This appeal arises out of an action for
131 L.Ed.2d 248 (1995) (‘‘Qualitex ’’), and injunctive relief and enforcement of a
that the District Court therefore erred by trademark brought by Louboutin, together
resting its denial of Louboutin’s prelimi- with the corporate entities that constitute
nary injunction motion on that ground. his eponymous French fashion house,

1. Specifically, the registration for the Loub- tested facts asserted by the plaintiff to the
outin mark states: ‘‘The color(s) red is/are District Court and to us, as well as the facts
claimed as a feature of the mark. The mark found by the District Court in its opinion. See
consists of a lacquered red sole on footwear.’’ Lopez Torres v. N.Y. State Bd. of Elections, 462
Joint App’x 294 (capitalization altered). F.3d 161, 172 (2d Cir.2006) (drawing conclu-
sions of law based upon facts found by the
2. Because the District Court did not hold an
district court during a preliminary injunction
evidentiary hearing prior to issuing its ruling
on the preliminary injunction, the facts in this proceeding), rev’d on other grounds, 552 U.S.
section are principally drawn from the uncon- 196, 128 S.Ct. 791, 169 L.Ed.2d 665 (2008).
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 213
Cite as 696 F.3d 206 (2nd Cir. 2012)

against YSL, a venerable French fashion tered). The written description was ac-
institution. Louboutin is best known for companied by a diagram indicating the
his emphasis upon the otherwise-largely- placement of the color:
ignored outsole of the shoe. Since their
development in 1992, Louboutin’s shoes
have been characterized by their most
striking feature: a bright, lacquered red
outsole, which nearly always contrasts In 2011, YSL prepared to market a line
sharply with the color of the rest of the of ‘‘monochrome’’ shoes in purple, green,
shoe. yellow, and red. YSL shoes in the mono-
chrome style feature the same color on the
Christian Louboutin introduced his sig-
entire shoe, so that the red version is all
nature footwear to the fashion market in
red, including a red insole, heel, upper, and
1992. Since then, his shoes have grown in
outsole. This was not the first time that
popularity, appearing regularly on various
YSL had designed a monochrome footwear
celebrities and fashion icons. The District
line, or even a line of footwear with red
Court concluded, and YSL does not dis-
soles; indeed, YSL maintains that since
pute, that ‘‘Louboutin [had] invested sub-
the 1970s it had sold such shoes in red and
stantial amounts of capital building a repu-
other colors.
tation and good will, as well as promoting
and protecting Louboutin’s claim to exclu- In January 2011, Louboutin avers, his
sive ownership of the mark as its signature fashion house learned that YSL was mar-
in women’s high fashion footwear.’’ Loub- keting and selling a monochrome red shoe
outin, 778 F.Supp.2d at 447. The District with a red sole. Louboutin requested the
Court further found that Louboutin had removal of the allegedly infringing shoes
succeeded in promoting his shoes ‘‘to the from the market, and Louboutin and YSL
point where, in the high-stakes commercial briefly entered into negotiations in order
markets and social circles in which these to avert litigation.
things matter a great deal, the red outsole The negotiations having failed, Loubout-
became closely associated with Louboutin. in filed this action on April 7, 2011, assert-
Leading designers have said it, including ing claims under the Lanham Act, 15
YSL, however begrudgingly.’’ Id. at 447– U.S.C. § 1051 et seq., for (1) trademark
48. As a result of Louboutin’s marketing infringement and counterfeiting, (2) false
efforts, the District Court found, the ‘‘flash designation of origin and unfair competi-
of a red sole’’ is today ‘‘instantly’’ recogniz- tion, and (3) trademark dilution, as well as
able, to ‘‘those in the know,’’ as Loubout- state law claims for (4) trademark infringe-
in’s handiwork. Id. at 448. ment, (5) trademark dilution, (6) unfair
On the strength of the fashion world’s competition, and (7) unlawful deceptive
asserted recognition of the red sole, Loub- acts and practices. Louboutin also sought
outin on March 27, 2007 filed an applica- a preliminary injunction preventing YSL
tion with the PTO to protect his mark (the from marketing, during the pendency of
‘‘Red Sole Mark’’ or the ‘‘Mark’’). The the action, any shoes, including red mono-
trademark was granted in January 2008, chrome shoes, bearing outsoles in a shade
and stated: ‘‘The color(s) red is/are of red identical to the Red Sole Mark, or in
claimed as a feature of the mark. The any shade which so resembles the Red
mark consists of a lacquered red sole on Sole Mark as to cause confusion among
footwear.’’ Id. at 449 (capitalization al- consumers.
214 696 FEDERAL REPORTER, 3d SERIES

[1] In response, YSL asserted two trademark protection to a single color.’’

counterclaims: (1) seeking cancellation of Louboutin, 778 F.Supp.2d at 451.
the Red Sole Mark on the grounds that (a) Interpreting the Supreme Court’s hold-
it is not ‘‘distinctive,’’ 3 but instead merely ing in Qualitex, the District Court ex-
‘‘ornamental,’’ 4 (b) it is ‘‘functional,’’ 5 and plained that color is protectable as a trade-
(c) it was secured by fraud on the PTO; mark only if it ‘‘ ‘acts as a symbol that
and (2) seeking damages for (a) tortious distinguishes a firm’s goods and identifies
interference with business relations and their source, without serving any other
(b) unfair competition. On July 22, 2011, significant function.’ ’’ Id. at 450 (quoting
after a limited and expedited discovery Qualitex, 514 U.S. at 166, 115 S.Ct. 1300)
(alteration omitted). The District Court
process, the parties argued the prelimi-
further observed, albeit without citation to
nary injunction motion. As noted above,
authority, that ‘‘whatever commercial pur-
see note 2, ante, the District Court did not
poses may support extending trademark
hold an evidentiary hearing. protection to a single color for industrial
On August 10, 2011, the District Court goods do not easily fit the unique charac-
issued a Decision and Order denying the teristics and needs—the creativity, aesth-
injunction and holding that the Louboutin etics, taste, and seasonal change—that de-
fine production of articles of fashion.’’ Id.
fashion house had not shown a likelihood
at 451. For that reason, the District
of success on the merits of its claims. As
Court held that, in the fashion industry,
the District Court saw it, the ‘‘narrow
single-color marks are inherently ‘‘func-
question’’ presented by the case was
tional’’ and that any such registered trade-
‘‘whether the Lanham Act extends protec- mark would likely be held invalid. Id. at
tion to a trademark composed of a single 457. The Court therefore held that Loub-
color used as an expressive and defining outin was unlikely to be able to prove that
quality of an article of wear produced in the Red Sole Mark was eligible for trade-
the fashion industry’’—that is, ‘‘whether mark protection, and denied Louboutin’s
there is something unique about the fash- motion for a preliminary injunction.6 Id.
ion world that militates against extending at 449–50, 457. This appeal followed.

3. See Part IV.A, post. 514 U.S. at 165, 115 S.Ct. 1300 (quoting
Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S.
4. An ornamental feature is one that ‘‘do[es] 844, 850, n. 10, 102 S.Ct. 2182, 72 L.Ed.2d
not serve a purpose’’ in the design of a prod- 606 (1982)). For a full discussion of the
uct. See TrafFix Devices, Inc. v. Marketing doctrines of functionality and, more specifi-
Displays, Inc., 532 U.S. 23, 35, 121 S.Ct. cally, ‘‘aesthetic functionality,’’ see Part III,
1255, 149 L.Ed.2d 164 (2001); see also Wal- post.
lace Int’l Silversmiths, Inc. v. Godinger Silver
Art Co., Inc., 916 F.2d 76, 80 (2d Cir.1990)
6. The District Court also issued an order to
(holding that ‘‘the features at issue are strictly
show cause why ‘‘the record of this action as
ornamental because they neither affect the
it now exists should not be converted into a
use of the [product] nor contribute to its effi-
motion for partial summary judgment cancel-
cient manufacture’’).
ling Louboutin’s trademark at issue here for
5. ‘‘ ‘[I]n general terms, a product feature is the reasons stated in the Court’s decision
functional,’ and cannot serve as a trademark, above.’’ Louboutin, 778 F.Supp.2d at 458.
‘if it is essential to the use or purpose of the Nine days later, the Court stayed the entire
article or if it affects the cost or quality of the case pending the resolution of this appeal.
article,’ that is, if exclusive use of the feature Christian Louboutin S.A. v. Yves Saint Laurent
would put competitors at a significant non- Am., Inc., No. 11–cv–2381 (VM), Docket En-
reputation-related disadvantage.’’ Qualitex, try 60 (S.D.N.Y. Aug. 19, 2011).
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 215
Cite as 696 F.3d 206 (2nd Cir. 2012)

On appeal, Louboutin argues that the single color is protectable as a trademark,

District Court erred in (1) holding, based both generally and in the specific context
on the doctrine of ‘‘aesthetic functionality,’’ of the fashion industry. We then address
that the Red Sole Mark was not entitled to the doctrine of ‘‘aesthetic functionality’’
legal protection; (2) applying the doctrine and consider whether, as the District
of aesthetic functionality to hold that a Court held, a single-color mark is neces-
single color on a fashion item could not act sarily ‘‘functional’’ in the context of the
as a trademark; (3) failing to give weight fashion industry—with the result that no
to the statutory presumption of validity such mark could ever be trademarked in
deriving from the Red Sole Mark’s regis- that industry. Finally, we determine
tration; (4) applying an improper analysis whether the Red Sole Mark is a valid
of trademark infringement and dilution; trademark entitled to the protection of the
(5) ignoring allegedly undisputed proof of Lanham Act.
likelihood of confusion and irreparable
harm; and (6) announcing a per se rule of II. Trademark Protection of Single–
functionality in a manner that violated Color Marks
Federal Rule of Civil Procedure 52.7
We begin by briefly recalling what
DISCUSSION trademark law is—and what it is not.
I. Standard of Review [4, 5] The principal purpose of federal
[2, 3] The District Court may grant a trademark law is to ‘‘secure the public’s
preliminary injunction if the moving party interest in protection against deceit as to
establishes ‘‘(a) irreparable harm and (b) the sources of its purchases, [and] the
either (1) likelihood of success on the mer- businessman’s right to enjoy business
its or (2) sufficiently serious questions go- earned through investment in the good will
ing to the merits to make them a fair and reputation attached to a trade name.’’
ground for litigation and a balance of hard- Fabrication Enters., Inc. v. Hygenic
ships tipping decidedly toward the party Corp., 64 F.3d 53, 57 (2d Cir.1995) (inter-
requesting the preliminary relief.’’ UBS nal quotation mark omitted) (alteration in
Fin. Servs., Inc. v. W. Va. Univ. Hosps., the original).
Inc., 660 F.3d 643, 648 (2d Cir.2011) (inter- [T]rademark law, by preventing others
nal quotation marks omitted). We review from copying a source-identifying mark,
the denial of a preliminary injunction for reduces the customer’s costs of shopping
‘‘abuse of discretion.’’ Dexter 345 Inc. v. and making purchasing decisions, for it
Cuomo, 663 F.3d 59, 63 (2d Cir.2011); cf. quickly and easily assures a potential
Sims v. Blot, 534 F.3d 117, 132 (2d Cir. customer that this item—the item with
2008) (explaining that the term of art this mark—is made by the same produc-
‘‘abuse of discretion’’ includes errors of er as other similarly marked items that
law). he or she liked (or disliked) in the past.
We address the District Court’s order in At the same time, the law helps assure a
three parts. We first consider whether a producer that it (and not an imitating

7. Federal Rule of Civil Procedure 52(a)(2) re- outin asserts that the District Court failed to
quires that ‘‘[i]n granting or refusing an inter- make findings of fact as required by that rule,
locutory injunction, the court must TTT state and announced a new per se legal rule rather
[separately] the findings [of fact] and conclu- than merely entering conclusions of law.
sions [of law] that support its action.’’ Loub-
216 696 FEDERAL REPORTER, 3d SERIES

competitor) will reap the financial, repu- Design, Inc. v. PAJ, Inc., 262 F.3d 101,
tation-related rewards associated with a 115 (2d Cir. 2001) (internal quotation
desirable product. marks omitted).

Qualitex, 514 U.S. at 163–64, 115 S.Ct. A. The Analytical Framework

1300 (internal quotation marks, citation, [7] We analyze trademark infringe-
and alteration omitted). In accordance ment claims in two stages.
with these purposes of the Lanham Act, [8–10] ‘‘First, we look to see whether
the law provides the owner of a mark with plaintiff’s mark merits protection.’’ Louis
the ‘‘enforceable right to exclude others Vuitton Malletier v. Dooney & Bourke,
from using [the mark].’’ La Societe Ano- Inc., 454 F.3d 108, 115 (2d Cir.2006). In
nyme des Parfums le Galion v. Jean Pa- order for a trademark to be protectable,
tou, Inc., 495 F.2d 1265, 1271 (2d Cir. the mark must be ‘‘distinctive’’ and not
1974). ‘‘generic.’’ Genesee Brewing Co. v. Stroh
Brewing Co., 124 F.3d 137, 143 (2d Cir.
[6] Nevertheless, trademark law is not 1997). A mark is said to be ‘‘inherently’’
intended to ‘‘protect[ ] innovation by giving distinctive if ‘‘[its] intrinsic nature serves
the innovator a monopoly ’’ over a useful to identify a particular source.’’ Two Pe-
product feature. Fabrication Enters., sos, Inc. v. Taco Cabana, Inc., 505 U.S.
Inc., 64 F.3d at 59 n. 4 (emphasis added); 763, 768, 112 S.Ct. 2753, 120 L.Ed.2d 615
see Nora Beverages, Inc. v. Perrier Grp. of (1992).9 Even a mark that is not inherent-
Am., 269 F.3d 114, 120 n. 4 (2d Cir.2001) ly distinctive may nonetheless ‘‘acquire’’
(noting that trademark law should not be distinctiveness by developing ‘‘secondary
meaning’’ in the public mind. Inwood
used to ‘‘inhibit[ ] legitimate competition
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844,
by giving monopoly control to a producer
851 n. 11, 102 S.Ct. 2182, 72 L.Ed.2d 606
over a useful product’’). Such a monopoly (1982). A mark has acquired ‘‘secondary
is the realm of patent law or copyright law, meaning’’ when, ‘‘in the minds of the pub-
which seek to encourage innovation, and lic, the primary significance of a product
not of trademark law, which seeks to pre- feature TTT is to identify the source of the
serve a ‘‘vigorously competitive market’’ product rather than the product itself.’’
for the benefit of consumers.8 Yurman Id.10

8. See Fabrication Enters., Inc., 64 F.3d at 59 146 L.Ed.2d 182 (2000) (noting with approval
n. 4 (‘‘The Lanham Act is not concerned with instances in which courts analyzed distinc-
protecting innovation by giving the innovator tiveness with regard to trade dress by analogy
a monopoly, which is the function of patent to the law of registered trademarks); Louis
law.’’); cf. Carol Barnhart Inc. v. Econ. Cover Vuitton Malletier, 454 F.3d at 115 (noting that
Corp., 773 F.2d 411, 421 n. 1 (2d Cir.1985) the ‘‘same analysis [used in claims of trade
(Newman, J., dissenting) (‘‘Any concern that dress infringement] applies to claims of trade-
copyright protection may accord a monopoly mark infringement under § 32’’); Fabrication
to advances in functional design is adequately Enters., Inc., 64 F.3d at 57 n. 2 (noting that
met by confining the scope of copyright pro- the distinction between defendant’s counter-
tection to the precise expression of the propri- claims of trade dress and trademark infringe-
etor’s design.’’ (citation omitted)). ment was ‘‘immaterial TTT because functional-
ity TTT is a defense in both trademark and
9. Although Two Pesos, and several of the oth- trade dress cases’’).
er cases we rely upon, discuss unregistered
trade dress rather than a registered trade- 10. ‘‘A certificate of registration with the PTO
mark, the infringement analysis is the same. is prima facie evidence that the mark is regis-
See Wal–Mart Stores, Inc. v. Samara Bros., tered and valid (i.e., protect[a]ble), that the
Inc., 529 U.S. 205, 210–11, 120 S.Ct. 1339, registrant owns the mark, and that the regis-
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 217
Cite as 696 F.3d 206 (2nd Cir. 2012)

[11, 12] Second, if (and only if) the the Supreme Court had expressed a
plaintiff’s trademark is ‘‘distinctive’’ within Delphic and suitably ambiguous skepticism
the meaning of trademark law and is that single-color marks could be registered
therefore valid and protectable, we must as trademarks, see A. Leschen & Sons
then determine ‘‘whether [the] defendant’s Rope Co. v. Broderick & Bascom Rope Co.,
use of a similar mark is likely to cause 201 U.S. 166, 171, 26 S.Ct. 425, 50 L.Ed.
consumer confusion.’’ Louis Vuitton Mal- 710 (1906) (observing that ‘‘[w]hether mere
letier, 454 F.3d at 115. In this second color can constitute a valid trade-mark
stage, if a markholder has successfully may admit of doubt’’), other courts occa-
demonstrated that its mark is valid and sionally employed common law unfair com-
that the competitor’s mark is likely to petition principles to protect the use of
cause confusion, ‘‘the competitor can [nev- color as a distinguishing product feature.
ertheless] prevail TTT by showing that the See, e.g., Yellow Cab Transit Co. v. Louis-
[mark] is functional’’—a traditional defense ville Taxicab & Transfer Co., 147 F.2d
to the enforcement of a trademark. 407, 415 (6th Cir.1945) (holding that the
Stormy Clime Ltd. v. ProGroup, Inc., 809 user of a mark was ‘‘entitled to protection
F.2d 971, 974 (2d Cir.1987) (‘‘Stormy in its long established use of the color
Clime ’’), disapproved on other grounds by
yellow on its taxicabs TTT, inasmuch as it
Two Pesos, 505 U.S. at 773, 112 S.Ct. 2753.
has acquired a good will by use of the
The ‘‘functionality’’ of a mark can be dem-
yellow color scheme on taxicabs by virtue
onstrated by, inter alia, showing that the
of appropriate application of the doctrine
mark has either traditional ‘‘utilitarian’’
of secondary meaning’’). Although courts
functionality or ‘‘aesthetic’’ functionality.
did not go so far as to hold that single-
New Colt Holding Corp. v. RJG Holdings
color marks could merit trademark protec-
of Fla., Inc., 312 F.Supp.2d 195, 212
tion, the recognition by some courts that
(D.Conn.2004); see Section III, post.
color standing alone can, in some circum-
With this traditional (if somewhat me- stances, acquire secondary meaning was
chanical) taxonomy in mind, we turn to the an important building block in the evolu-
history of single-color trademarks. tion of single-color marks.
B. A Brief History of Single–Color After the passage of the Lanham Act,
Marks which codified ‘‘in the broadest of terms’’
Prior to the adoption of our modern the ‘‘universe’’ of things eligible for trade-
statutory trademark scheme in the Lan- mark protection, Qualitex, 514 U.S. at 162,
ham Act of 1946, 15 U.S.C. § 1051 et seq., 115 S.Ct. 1300, courts ‘‘gradually TTT re-
the status of single-color trademarks rest- jected the dictum [of earlier cases] TTT to
ed on uncertain ground. See generally In the effect that color alone is not subject to
re Owens–Corning Fiberglas Corp., 774 trademark [protection],’’ Owens–Corning,
F.2d 1116, 1118–19 (Fed.Cir.1985) (‘‘Ow- 774 F.2d at 1122, and owners of color-
ens–Corning ’’). Although as early as 1906 related marks began to enjoy a degree of

trant has the exclusive right to use the mark protection. See 15 U.S.C. § 1115(a) (a party
in commerce.’’ Lane Capital Mgmt., Inc. v. seeking to invalidate a registration must
Lane Capital Mgmt., Inc., 192 F.3d 337, 345 prove the existence of a ‘‘legal or equitable
(2d Cir.1999). In order to rebut the presump- defense or defect TTT which might have been
tion of validity, the allegedly infringing party asserted if such mark had not been regis-
must show, by a preponderance of the evi- tered’’).
dence, see id., that the mark is ineligible for
218 696 FEDERAL REPORTER, 3d SERIES

enforcement success. See, e.g., Applica- protection of the green-gold color of a dry
tion of Hehr Mfg. Co., 47 CCPA 1116, 279 cleaning press pad. The question present-
F.2d 526, 528 (1960) (holding that a square ed was ‘‘whether the [Lanham Act] per-
red label intended for use on automobile mits the registration of a trademark that
trailer windows was eligible for trademark consists, purely and simply, of a color.’’
registration); Artus Corp. v. Nordic Co., Qualitex, 514 U.S. at 160–61, 115 S.Ct.
512 F.Supp. 1184, 1190 (W.D.Pa.1981) 1300 (citation omitted). Reversing a deci-
(protecting plaintiff’s arbitrary color sion of the Ninth Circuit that had declared
scheme for metal spacers). Nevertheless, color per se ineligible for trademark pro-
the issue of single-color mark registration tection, the Court observed that ‘‘it is diffi-
lay largely dormant until 1985, when the cult to find, in basic trademark objectives,
United States Court of Appeals for the a reason to disqualify absolutely the use of
Federal Circuit decided Owens–Corning. a color as a mark.’’ Id. at 164, 115 S.Ct.
1300. The Court held, among other
[13] Faced with the question of
things, that it could find no ‘‘principled
whether a fiberglass manufacturer could
objection to the use of color as a mark in
trademark the pink color of its residential
the important ‘functionality’ doctrine of
insulation material, the Federal Circuit in
trademark law.’’ Id. It concluded that
Owens–Corning began by recounting the
‘‘color alone, at least sometimes, can meet
evolution of color as a product-source de-
the basic legal requirements for use as a
signator. In language that continues to
trademark. It can act as a symbol that
hold force today, the Court observed that
distinguishes a firm’s goods and identifies
jurisprudence under the Lanham Act had
their source, without serving any other
‘‘developed in accordance with the statuto-
significant function.’’ Id. at 166, 115 S.Ct.
ry principle that if a mark is capable of
1300 (emphasis added).
being or becoming distinctive of [the] ap-
plicant’s goods in commerce, then it is ca-
pable of serving as a trademark.’’ Ow- III. The ‘‘Functionality’’ Defense
ens–Corning, 774 F.2d at 1120. Noting [15, 16] As the Supreme Court ob-
that ‘‘[Owens–Corning’s] use of the color served in Qualitex, aspects of a product
‘pink’ performs no non-trademark func- that are ‘‘functional’’ generally ‘‘cannot
tion, and is consistent with the commer- serve as a trademark.’’ Id. at 165, 115
cial and public purposes of trademarks,’’ S.Ct. 1300 (internal quotation mark omit-
the Court concluded that the use ‘‘serves ted). We have observed that ‘‘[t]he doc-
the classical trademark function of indi- trine of functionality prevents trademark
cating the origin of the goods, and there- law from inhibiting legitimate competition
by protects the public.’’ Id. at 1123. On by giving monopoly control to a producer
that basis, the Court held that Owens– over a useful product.’’ Nora Beverages,
Corning was ‘‘entitled to register its Inc., 269 F.3d at 120 n. 4; see Genesee
mark.’’ Id. at 1128. Brewing Co., 124 F.3d at 145 n. 5 (it is a
‘‘fundamental principle of trademark law
C. Single–Color Marks Today that a trademark TTT does not grant a
[14] The question of whether a color monopoly of production’’). This is so be-
can be protected as a trademark or trade cause functional features can be protected
dress was finally resolved in 1995 by the only through the patent system, which
Supreme Court’s decision in Qualitex, grants a limited monopoly over such fea-
which involved a claim for trade dress tures until they are released into general
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 219
Cite as 696 F.3d 206 (2nd Cir. 2012)

use (typically after either 14 or 20 years, the use or purpose of the article,’’ or if it
depending on the type of patent). See (2) ‘‘affects the cost or quality of the arti-
Fabrication Enters., Inc., 64 F.3d at 58–59 cle.’’ Inwood Labs., 456 U.S. at 850 n. 10,
& n. 4 (‘‘The Lanham Act is not concerned 102 S.Ct. 2182.12 A feature is essential ‘‘ ‘if
with protecting innovation by giving the [it] is dictated by the functions to be per-
innovator a monopoly, which is the func- formed’ ’’ by the article. LeSportsac, Inc.
tion of patent law.’’); Stormy Clime, 809 v. K mart Corp., 754 F.2d 71, 76 (2d
F.2d at 977–78 (‘‘Courts must proceed with Cir.1985) (quoting Warner Bros. Inc. v.
caution in assessing claims to unregistered Gay Toys Inc., 724 F.2d 327, 331 (2d Cir.
trademark protection in the design of 1983)).13 It affects the cost or quality of
products so as not to undermine the objec- the article where it ‘‘ ‘permits the article to
tives of the patent lawsTTTT Since trade- be manufactured at a lower cost’ or ‘consti-
mark protection extends for an unlimited tutes an improvement in the operation of
period, expansive trade dress protection the goods.’ ’’ 14 Id. (quoting Warner Bros.,
for the design of products would prevent Inc., 724 F.2d at 331). A finding that a
some functional products from enriching product feature is functional according to
the public domain.’’).
the Inwood test will ordinarily render the
As noted above, two forms of the func- feature ineligible for trademark protection.
tionality doctrine are relevant to us today:
‘‘traditional’’ or ‘‘utilitarian’’ functionality,
B. ‘‘Aesthetic Functionality’’
and ‘‘aesthetic’’ functionality. Both forms
serve as an affirmative defense to a trade- [20, 21] Generally, ‘‘[w]here [a prod-
mark infringement claim. uct’s] design is functional under the In-
wood formulation there is no need to pro-
A. ‘‘Traditional’’ or ‘‘Utilitarian’’ ceed further.’’ TrafFix Devices, Inc. v.
Functionality Marketing Displays, Inc., 532 U.S. 23, 33,
[17–19] According to our traditional 121 S.Ct. 1255, 149 L.Ed.2d 164 (2001)
understanding of functionality, a product (‘‘TrafFix ’’). Nevertheless, as the Su-
feature is considered to be ‘‘functional’’ in preme Court had held in 1995 in Qualitex,
a utilitarian sense 11 if it is (1) ‘‘essential to when the aesthetic design of a product is

11. See Wallace Int’l Silversmiths, Inc. v. Go- used to open and close the bags [we]re color
dinger Silver Art Co., 916 F.2d 76, 80 (2d coordinated with the bags themselves, and
Cir.1990) (noting that the term ‘‘functionali- usually [we]re pulled with hollow rectangular
ty’’ as commonly understood seems to imply metal sliders.’’ LeSportsac, 754 F.2d at 74.
‘‘only utilitarian considerations’’).

12. An issue on appeal in Inwood was whether 14. In Warner Brothers, we cited as examples
the color of a name-brand prescription pill Kellogg Co. v. National Biscuit Co., 305 U.S.
was functional, and therefore available for 111, 122, 59 S.Ct. 109, 83 L.Ed. 73 (1938), in
use by manufacturers of the drug’s generic which the pillow shape of a shredded wheat
equivalent, because the color assisted phar- biscuit was deemed functional because the
macists in dispensing the correct prescription. cost of the cereal would be increased and its
See Inwood, 456 U.S. at 847, 849–51, 102 quality lessened by any other form, and Fisher
S.Ct. 2182; but see id. at 857 n. 20, 102 S.Ct. Stoves Inc. v. All Nighter Stove Works, Inc.,
2182 (declining to rule on the functionality of 626 F.2d 193, 195 (1st Cir.1980), in which a
the color). two-tier woodstove design was deemed func-
tional because it improved the operation of
13. In LeSportsac, K Mart challenged the trade the stove. See Warner Bros., Inc., 724 F.2d at
dress of a backpack composed of ‘‘parachute
331.
nylon and trimmed in cotton carpet tape with
matching cotton-webbing straps. The zippers
220 696 FEDERAL REPORTER, 3d SERIES

itself the mark for which protection is pass the fact-intensive Qualitex test and
sought, we may also deem the mark func- be shown not to have a significant effect on
tional if giving the markholder the right to competition in order to receive trademark
use it exclusively ‘‘would put competitors protection.
at a significant non-reputation-related dis-
advantage,’’ Qualitex, 514 U.S. at 165, 115 i. The Development of the Aesthetic
S.Ct. 1300. This remains true even if there Functionality Doctrine
is ‘‘no indication that [the mark has] any Although the theory of aesthetic func-
bearing on the use or purpose of the prod- tionality was proposed as early as 1938,16
uct or its cost or quality.’’ TrafFix, 532 the first court to adopt the theory as the
U.S. at 33, 121 S.Ct. 1255; see Landscape basis for denial of protection of a design
Forms, Inc. v. Colum. Cascade Co., 70 was the United States Court of Appeals
F.3d 251, 253 (2d Cir.1995) (when evaluat- for the Ninth Circuit in Pagliero v. Wal-
ing design trademarks we consider wheth- lace China Co., 198 F.2d 339 (9th Cir.
er ‘‘certain features of the design are es- 1952). In Pagliero, the Court of Appeals
sential to effective competition in [the] determined that the Wallace China Com-
particular market’’). pany was not entitled to the exclusive use
of a particular floral design on hotel china,
[22] As set forth below, the test for
despite its ‘‘creat[ion of] a substantial mar-
aesthetic functionality is threefold: At the
ket for its products bearing these designs
start, we address the two prongs of the
by virtue of extensive advertising.’’ Id. at
Inwood test, asking whether the design
340. The design, the Court held, was
feature is either ‘‘essential to the use or
‘‘functional’’ because it satisfied ‘‘a demand
purpose’’ or ‘‘affects the cost or quality’’ of
for the aesthetic as well as for the utilitari-
the product at issue. Next, if necessary,
an.’’ Id. at 343–44. Because the ‘‘particu-
we turn to a third prong, which is the
lar feature is an important ingredient in
competition inquiry set forth in Qualitex.
the commercial success of the product, the
In other words, if a design feature would,
interest in free competition permits its imi-
from a traditional utilitarian perspective,
tation in the absence of a patent or copy-
be considered ‘‘essential to the use or pur-
right.’’ Id. at 343 (emphasis added).
pose’’ of the article, or to affect its cost or
quality, then the design feature is function- [23, 24] Despite its apparent counterin-
al under Inwood and our inquiry ends.15 tuitiveness (how can the purely aesthetic
But if the design feature is not ‘‘functional’’ be deemed functional, one might ask?), our
from a traditional perspective, it must still Court has long accepted the doctrine of

15. See, e.g., Industria Arredamenti Fratelli Sa- comment to that Section, the Restatement
poriti v. Charles Craig, Ltd., 725 F.2d 18, 19 explained several ways in which goods or
(2d Cir.1984) (interlocking design of couch their features might be functional. With re-
cushions was a visual ‘‘label’’ but served a gard to ‘‘goods [that] are bought largely for
utilitarian purpose by keeping cushions in their aesthetic value,’’ the Restatement sug-
place and was therefore functional). gested that ‘‘their features may be functional
because they definitely contribute to that val-
16. In 1938, the Restatement of Torts stated
that ‘‘[a] feature of goods is functional TTT if it ue and thus aid the performance of an object
affects their purpose, action or performance, for which the goods are intended.’’ Id.
or the facility or economy of processing, han- § 742, cmt. a. This was the first time that a
dling or using them; it is non-functional if it commentator had proposed that an aesthetic
does not have any of such effects.’’ Restate- product feature might be functional. See 1
ment of Torts § 742 (1938). In the official McCarthy on Trademarks § 7:79 (4th ed.).
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 221
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aesthetic functionality. See, e.g., Warner ‘‘[t]he ultimate test of aesthetic functional-
Bros., Inc., 724 F.2d at 329–32 (distinctive ity TTT is whether the recognition of
color and symbols on toy car were not trademark rights [in an aesthetic design
functional, and so were protectable as feature] would significantly hinder compe-
trade dress).17 We have rejected, howev- tition.’’ Qualitex, 514 U.S. at 170, 115
er, the circular ‘‘important ingredient’’ test S.Ct. 1300 (quoting Restatement (Third) of
formulated by the Pagliero court, which Unfair Competition § 17, cmt. c, at 176
inevitably penalized markholders for their (1993)) (internal quotation marks omitted).
success in promoting their product.18 In- Six years later, reiterating its Qualitex
stead, we have concluded that ‘‘Lanham analysis, the Supreme Court in TrafFix
Act protection does not extend to configu- declared that where ‘‘[a]esthetic function-
rations of ornamental features which ality [is] the central question,’’ courts must
would significantly limit the range of com-
‘‘inquire’’ as to whether recognizing the
petitive designs available.’’ Coach Leath-
trademark ‘‘would put competitors at a
erware Co. v. AnnTaylor, Inc., 933 F.2d
significant non-reputation-related disad-
162, 171 (2d Cir.1991) (emphasis added).
vantage.’’ TrafFix, 532 U.S. at 32–33, 121
Accordingly, we have held that the doc-
S.Ct. 1255.
trine of aesthetic functionality bars protec-
tion of a mark that is ‘‘necessary to com- Although we have not recently had occa-
pete in the [relevant] market.’’ Villeroy & sion to apply the doctrine of aesthetic func-
Boch Keramische Werke K.G. v. THC Sys., tionality thus enunciated by the Supreme
Inc., 999 F.2d 619, 622 (2d Cir.1993). Court, it is clear that the combined effect
of Qualitex and TrafFix was to validate
ii. A Modern Formulation of the the aesthetic functionality doctrine as it
Aesthetic Functionality had already been developed by this Court
Doctrine in cases including Wallace International
[25] In 1995, the Supreme Court in Silversmiths, Stormy Clime, and LeSport-
Qualitex gave its imprimatur to the aesth- sac. See Yurman Design, Inc., 262 F.3d
etic functionality doctrine, holding that at 116 (confirming, five months after the

17. The doctrine of aesthetic functionality re- preme Court has recognized the aesthetic
mains controversial in our sister circuits, functionality doctrine only in dicta, and that
which have applied the doctrine in varying therefore the Fifth Circuit’s long-standing re-
ways (and some not at all). For example, the jection of the doctrine was not abrogated by
Seventh Circuit has applied the doctrine of Qualitex and TrafFix ).
aesthetic functionality liberally, holding that
‘‘[f]ashion is a form of function.’’ See Jay
18. See Wallace Int’l Silversmiths, 916 F.2d at
Franco & Sons, Inc. v. Franek, 615 F.3d 855,
860 (7th Cir.2010). The Sixth Circuit recent- 80 (‘‘We rejected Pagliero [ ’s ‘important in-
ly discussed the doctrine, but made clear that gredient’ formulation] in [Le ]Sportsac and re-
it has not yet decided whether or not to adopt iterate that rejection here.’’ (internal citation
it. See Maker’s Mark Distillery, Inc. v. Diageo omitted)); Mark P. McKenna, (Dys)function-
N. Am., Inc., 679 F.3d 410, 417–19 (6th Cir. ality, 48 Hous. L.Rev. 823, 851 (2011)
2012). The Ninth Circuit has applied the (‘‘Courts that apply the aesthetic functionality
doctrine inconsistently. See 1 McCarthy on doctrine today overwhelmingly rely on the
Trademarks § 7:80 (4th ed.) (collecting test the Supreme Court endorsed in TrafFix
cases). The Fifth Circuit rejects the doctrine [rather than the Pagliero test], TTT asking
of aesthetic functionality entirely. Bd. of Su- whether exclusive use of the claimed feature
pervisors for La. State Univ. Agric. & Mech. put competitors at a significant non-reputa-
Coll. v. Smack Apparel Co., 550 F.3d 465,
tion-related disadvantage.’’).
487–88 (5th Cir.2008) (arguing that the Su-
222 696 FEDERAL REPORTER, 3d SERIES

TrafFix decision, that a putative design tifying aspects’’ of a mark against the
trademark is ‘‘aesthetic[ally] functional[ ],’’ ‘‘competitive costs of precluding competi-
and therefore barred from trademark pro- tors from using the feature.’’ Fabrication
tection, if granting ‘‘the right to use [the Enters., Inc., 64 F.3d at 59.
mark] exclusively ‘would put competitors
at a significant non-reputation-related dis- [30] Finally, we note that a product
advantage’ ’’ (quoting TrafFix, 532 U.S. at feature’s successful source indication can
32, 121 S.Ct. 1255)). sometimes be difficult to distinguish from
the feature’s aesthetic function, if any.
[26, 27] On the one hand, ‘‘ ‘[w]here an
See, e.g., Jay Franco & Sons, Inc. v. Fra-
ornamental feature is claimed as a trade-
nek, 615 F.3d 855, 857 (7th Cir.2010) (not-
mark and trademark protection would sig-
ing that ‘‘[f]iguring out which designs
nificantly hinder competition by limiting
[produce a benefit other than source iden-
the range of adequate alternative designs,
tification] can be tricky’’). Therefore, in
the aesthetic functionality doctrine denies
determining whether a mark has an aesth-
such protection.’ ’’ Forschner Grp., Inc. v.
etic function so as to preclude trademark
Arrow Trading Co., 124 F.3d 402, 409–10
protection, we take care to ensure that the
(2d Cir.1997) (quoting Wallace Int’l Silver-
mark’s very success in denoting (and pro-
smiths, Inc., 916 F.2d at 81). But on the
moting) its source does not itself defeat
other hand, ‘‘ ‘distinctive and arbitrary ar-
the markholder’s right to protect that
rangements of predominantly ornamental
mark. See Wallace Int’l Silversmiths,
features that do not hinder potential com-
Inc., 916 F.2d at 80 (rejecting argument
petitors from entering the same market
that ‘‘the commercial success of an aesth-
with differently dressed versions of the
etic feature automatically destroys all of
product are non-functional[,] and [are]
the originator’s trademark interest in it,
hence eligible for [trademark protec-
notwithstanding the feature’s secondary
tion].’ ’’ Fabrication Enters., Inc., 64 F.3d
meaning and the lack of any evidence that
at 59 (quoting Stormy Clime, 809 F.2d at
competitors cannot develop non-infringing,
977) (emphasis added).
attractive patterns’’).
[28, 29] In short, a mark is aesthetical-
ly functional, and therefore ineligible for [31] Because aesthetic function and
protection under the Lanham Act, where branding success can sometimes be diffi-
protection of the mark significantly under- cult to distinguish, the aesthetic functional-
mines competitors’ ability to compete in ity analysis is highly fact-specific. In con-
the relevant market. See Knitwaves, Inc. ducting this inquiry, courts must consider
v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d both the markholder’s right to enjoy the
Cir.1995) (linking aesthetic functionality to benefits of its effort to distinguish its prod-
availability of alternative designs for chil- uct and the public’s right to the ‘‘vigorous-
dren’s fall-themed sweaters); Landscape ly competitive market[ ]’’ protected by the
Forms, Inc., 70 F.3d at 253 (holding that Lanham Act, which an overly broad trade-
‘‘in order for a court to find a product mark might hinder. Yurman Design, Inc.,
design functional, it must first find that 262 F.3d at 115 (internal quotation mark
certain features of the design are essential omitted). In sum, courts must avoid
to effective competition in a particular jumping to the conclusion that an aesthetic
market’’). In making this determination, feature is functional merely because it de-
courts must carefully weigh ‘‘the competi- notes the product’s desirable source. Cf.
tive benefits of protecting the source-iden- Pagliero, 198 F.2d at 343.
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 223
Cite as 696 F.3d 206 (2nd Cir. 2012)

iii. Aesthetic Functionality in against extending trademark protection to

the Fashion Industry a single color.’’ Louboutin, 778 F.Supp.2d
[32] We now turn to the per se rule of at 451.
functionality for color marks in the fashion
Even if Qualitex could be read to permit
industry adopted by the District Court—a
an industry-specific per se rule of function-
rule that would effectively deny trademark
ality (a reading we think doubtful), such a
protection to any deployment of a single
rule would be neither necessary nor appro-
color in an item of apparel. As noted
priate here. We readily acknowledge that
above, the Qualitex Court expressly held
the fashion industry, like other industries,
that ‘‘sometimes[ ] a color will meet ordi-
nary legal trademark requirements[, a]nd, has special concerns in the operation of
when it does so, no special legal rule pre- trademark law; it has been argued force-
vents color alone from serving as a trade- fully that United States law does not pro-
mark.’’ Qualitex, 514 U.S. at 161, 115 tect fashion design adequately.19 Indeed,
S.Ct. 1300. In other words, the Supreme the case on appeal is particularly difficult
Court specifically forbade the implementa- precisely because, as the District Court
tion of a per se rule that would deny well noted, in the fashion industry, color
protection for the use of a single color as a can serve as a tool in the palette of a
trademark in a particular industrial con- designer, rather than as mere ornamenta-
text. Qualitex requires an individualized, tion. Louboutin, 778 F.Supp.2d at 452–53.
fact-based inquiry into the nature of the
trademark, and cannot be read to sanction [33–36] Nevertheless, the functionality
an industry-based per se rule. The Dis- defense does not guarantee a competitor
trict Court created just such a rule, on the ‘‘the greatest range for [his] creative out-
theory that ‘‘there is something unique let,’’ id. at 452–53, but only the ability to
about the fashion world that militates fairly compete within a given market.20

19. The intellectual property protection of It is arguable that, in the particular circum-
fashion design has been for years a subject of stances of this case, the more appropriate
controversy among commentators. Some vehicle for the protection of the Red Sole
have proposed working within the confines of Mark would have been copyright rather than
the current intellectual property system, while trademark. See generally Kieselstein–Cord v.
others have advocated that fashion design Accessories by Pearl, Inc., 632 F.2d 989, 993–
may be an appropriate area for sui generis 94 (2d Cir.1980) (addressing the broad issue
statutory protection. See generally C. Scott of aesthetically functional copyrights and
Hemphill & Jeannie Suk, The Law, Culture, holding that decorative belt buckles that were
and Economics of Fashion, 61 Stan. L.Rev. used principally for ornamentation could be
1147 (2009); see also id. at 1184–90. (In- copyrighted because the primary ornamental
deed, suggested legislation creating such pro- aspect of the buckles was conceptually sepa-
tection has been considered several times by rate from their subsidiary utilitarian func-
Congress, although not adopted. See, e.g., tion); Laura A. Heymann, The Trade-
Design Piracy Prohibition Act, H.R.2033, mark/Copyright Divide, 60 SMU L.Rev. 55
110th Cong. § 2(c) (2007); Design Piracy (2007). However, because Louboutin has
Prohibition Act, S.1957, 110th Cong. § 2(c) chosen to rely on the law of trademarks to
(2007).) Still other commentators have sug- protect his intellectual property, we necessari-
gested that intellectual property protection of ly limit our review to that body of law and do
fashion design would be damaging to the in- not further address the broad and complex
dustry and should be avoided. See Kal Raus- issue of fashion design protection.
tiala & Christopher Sprigman, The Piracy Par-
adox: Innovation and Intellectual Property in 20. The trademark system, in this way, stands
Fashion Design, 92 Va. L.Rev. 1687, 1775–77 in sharp contrast to the copyright system.
(2006). Copyright, unlike trademark, rewards creativ-
224 696 FEDERAL REPORTER, 3d SERIES

See Wallace Int’l Silversmiths, Inc., 916 than it can do so in any other industry, we
F.2d at 81 (‘‘It is a first principle of trade- turn our attention to the Red Sole Mark.
mark law that an owner may not use the As we have explained, Part II.A, ante, we
mark as a means of excluding competitors analyze a trademark infringement claim in
from a TTT market.’’ (emphasis added)). two stages, asking first whether the mark
The purpose of the functionality defense ‘‘merits protection’’ and, second, whether
‘‘is to prevent advances in functional de- the allegedly infringing use of the mark (or
sign from being monopolized by the owner a similar mark) is ‘‘likely to cause consum-
of [the mark] TTT in order to encourage er confusion.’’ Louis Vuitton Malletier,
competition and the broadest dissemina- 454 F.3d at 115. The functionality defense
tion of useful design features.’’ Fabrica- (including the tripartite aesthetic function-
tion Enters., Inc., 64 F.3d at 58 (internal ality test) is an affirmative defense that we
quotation marks omitted) (emphasis add- consider at the second stage of this analy-
ed). sis. Stormy Clime, Ltd., 809 F.2d at 974.
In short, ‘‘[b]y focusing upon hindrances
to legitimate competition, the [aesthetic] [37] We have stated the basic rule that
functionality test, carefully applied, can ac- ‘‘[a] certificate of registration with the
commodate consumers’ somewhat conflict- PTO is prima facie evidence that the mark
ing interests in being assured enough is registered and valid (i.e., protect[a]ble),
product differentiation to avoid confusion that the registrant owns the mark, and
as to source and in being afforded the that the registrant has the exclusive right
benefits of competition among producers.’’ to use the mark in commerce.’’ Lane Cap-
Stormy Clime, 809 F.2d at 978–79. ital Mgmt., Inc., 192 F.3d at 345. As the
District Court correctly noted, ‘‘Loubout-
IV. The Red Sole Mark in’s certificate of registration of the Red
Having determined that no per se rule Sole Mark gives rise to a statutory pre-
governs the protection of single-color sumption that the mark is valid.’’ 21 Loub-
marks in the fashion industry, any more outin, 778 F.Supp.2d at 450 (citing 15

ity and originality even if they interfere with identical to one already trademarked by an-
the rights of an existing copyright holder. In other individual or corporation, he must ‘‘go
the copyright system there is a defense to back to the drawing board.’’ See Blendco,
infringement known as ‘‘independent cre- Inc. v. Conagra Foods, Inc., 132 Fed.Appx.
ation’’: if a writer or musician, through the 520, 523 (5th Cir.2005) (although defendant’s
creative process, independently arrives at an allegedly independent creation of infringing
arrangement of words or notes that is the mark tended to show that infringement was
subject of a copyright, he may market the not willful, defendant remained liable for
result of his creativity despite the existing damages); Tuccillo v. Geisha NYC, LLC, 635
copyright. See Feist Publ’ns, Inc. v. Rural Tel.
F.Supp.2d 227 (E.D.N.Y.2009) (same).
Serv. Co., 499 U.S. 340, 346, 111 S.Ct. 1282,
113 L.Ed.2d 358 (1991) (requesting that the
reader ‘‘assume that two poets, each ignorant 21. Louboutin argues that the District Court
of the other, compose identical poems. Nei- disregarded the statutory presumption of va-
ther work is novel, yet both are original and, lidity to which the Red Sole Mark was enti-
hence, copyrightable’’); Procter & Gamble Co. tled. We disagree. The District Court’s rul-
v. Colgate–Palmolive Co., 199 F.3d 74, 77–78 ing rested at least in part on its determination
(2d Cir.1999). The trademark system, unlike that the Red Sole Mark is functional and is
the copyright system, aims to prevent con- therefore invalid, and its opinion clearly rec-
sumer confusion even at the expense of a ognized that, at the threshold of analysis,
manufacturer’s creativity: in trademark, if a Louboutin was entitled to the statutory pre-
branding specialist produces a mark that is sumption.
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 225
Cite as 696 F.3d 206 (2nd Cir. 2012)

U.S.C. § 1057(b)).22 But the District S.Ct. 2182 (‘‘[S]econdary meaning’’ is ac-
Court found, in effect, that YSL had rebut- quired when ‘‘in the minds of the public,
ted that presumption by showing that the the primary significance of a product fea-
Red Sole Mark is ineligible for protection ture TTT is to identify the source of the
because a single color can never achieve product rather than the product itself’’).
trademark protection in the fashion indus- For the reasons that follow, we hold that
try. As explained above, that holding was the Red Sole Mark has acquired limited
error. secondary meaning as a distinctive symbol
Although, as set forth below, we deter- that identifies the Louboutin brand, and
mine that the Mark as it currently stands that it is therefore a valid and protectable
is ineligible for protection insofar as it mark as modified below. See PaperCutter,
would preclude competitors’ use of red Inc. v. Fay’s Drug Co., Inc., 900 F.2d 558,
outsoles in all situations, including the 559 (2d Cir.1990) (a mark having second-
monochromatic use now before us, we con- ary meaning is a valid mark).
clude that the Mark has acquired second- [39] Although a single color, standing
ary meaning—and thus the requisite ‘‘dis- alone, can almost never be inherently dis-
tinctness’’ to merit protection—when used tinctive because it does not ‘‘almost auto-
as a red outsole contrasting with the re- matically tell a customer that [it] refer[s]
mainder of the shoe. Because in this case to a brand,’’ Qualitex, 514 U.S. at 162–63,
we determine that the Red Sole Mark 115 S.Ct. 1300 (emphasis omitted); see
merits protection only as modified, and Mana Prods., Inc. v. Columbia Cosmetics
because YSL’s use of a red outsole on Mfg., Inc., 65 F.3d 1063, 1070 (2d Cir.
monochromatic red shoes does not in- 1995), a color as used here is certainly
fringe on the Mark as modified, we need capable of acquiring secondary meaning.
not, and do not, reach the issues of cus- As the Qualitex Court put it,
tomer confusion and functionality at the over time, customers may come to treat
second stage of the trademark infringe- a particular color on a product or its
ment analysis described above. packaging (say, a color that in context
seems unusual, such as pink on a firm’s
A. Distinctiveness insulating material or red on the head of
[38] We first address whether the Red a large industrial bolt) as signifying a
Sole Mark ‘‘merits protection’’ as a distinc- brand. And, if so, that color would have
tive mark. As discussed above, distinc- come to identify and distinguish the
tiveness may be shown either by proof that goods—i.e., ‘‘to indicate’’ their
the mark is itself inherently distinctive, or ‘‘source’’—much in the way that descrip-
by showing that the mark has acquired, tive words on a product TTT can come to
through use, secondary meaning in the indicate a product’s origin.
public eye. See Wal–Mart Stores, Inc. v. Id. at 163, 115 S.Ct. 1300 (emphasis add-
Samara Bros., Inc., 529 U.S. 205, 210–11, ed). In the case of a single-color mark,
120 S.Ct. 1339, 146 L.Ed.2d 182 (2000); therefore, distinctiveness must generally
Inwood Labs., 456 U.S. at 851 n. 11, 102 be proved by demonstrating that the mark

22. We note that a registered trademark that 417–18. Because the Red Sole Mark has not
has been in continuous use for at least five been in use for five consecutive years since its
years may, in certain circumstances, be registration, it is not yet entitled to the special
deemed ‘‘incontestable.’’ 15 U.S.C. § 1065; protection available to incontestable marks.
see Maker’s Mark Distillery, Inc., 679 F.3d at
226 696 FEDERAL REPORTER, 3d SERIES

has acquired secondary meaning. Id. at 990, 993 (2d Cir.1987). Where, as here,
165–66, 115 S.Ct. 1300. the record contains sufficient undisputed
We see no reason why a single-color facts to resolve the question of distinctive-
mark in the specific context of the fashion ness—not to speak of facts found by the
industry could not acquire secondary District Court that are based upon evi-
meaning—and therefore serve as a brand dence of record and not clearly errone-
or source identifier—if it is used so consis- ous—we may do so as a matter of law.
tently and prominently by a particular de- See id. at 993–94; Warner Bros., Inc. v.
signer that it becomes a symbol, ‘‘the pri- Gay Toys, Inc., 724 F.2d 327, 333–34 (2d
mary significance’’ of which is ‘‘to identify Cir.1983) (determining, based on the
the source of the product rather than the weight of the evidence, that the challenged
product itself.’’ Inwood Labs., 456 U.S. at mark had established secondary meaning).
851 n. 11, 102 S.Ct. 2182; see also Mana The record before the District Court
Prods., Inc., 65 F.3d at 1071 (‘‘In light of included extensive evidence of Louboutin’s
the Supreme Court’s decision in Qualitex, advertising expenditures, media coverage,
color is today capable of obtaining trade- and sales success, demonstrating both that
mark status in the same manner that a Louboutin has created a ‘‘symbol’’ within
descriptive mark satisfies the statutory the meaning of Qualitex, see Qualitex, 514
definition of a trademark, by acting as a U.S. at 162, 115 S.Ct. 1300, and that the
symbol and attaining secondary mean- symbol has gained secondary meaning that
ing.’’). causes it to be ‘‘uniquely’’ associated with
[40–44] ‘‘The crucial question in a case the Louboutin brand, see Two Pesos, Inc.,
involving secondary meaning always is 505 U.S. at 766 n. 4, 112 S.Ct. 2753. There
whether the public is moved in any degree is no dispute that Louboutin originated
to buy an article because of its source.’’ 23 this particular commercial use of the lac-
Genesee Brewing Co., 124 F.3d at 143 n. 4. quered red color over twenty years ago.
‘‘Factors that are relevant in determining As the District Court determined, in find-
secondary meaning include ‘(1) advertising ings of fact that are supported by the
expenditures, (2) consumer studies linking record and not clearly erroneous, ‘‘Loub-
the mark to a source, (3) unsolicited media outin invested substantial amounts of capi-
coverage of the product, (4) sales success, tal building a reputation and good will, as
(5) attempts to plagiarize the mark, and, well as promoting and protecting Loubout-
(6) length and exclusivity of the mark’s in’s claim to exclusive ownership of the
use.’ ’’ Id. (quoting Centaur Commc’ns, mark as its signature in women’s high
Ltd. v. A/S/M Commc’ns, Inc., 830 F.2d fashion footwear.’’ Louboutin, 778
1217, 1222 (2d Cir.1987)). Whether a F.Supp.2d at 447. And there is no dispute
mark has acquired distinctiveness is ‘‘an that Louboutin’s efforts were successful
inherently factual inquiry.’’ Yarmuth– ‘‘to the point where, in the high-stakes
Dion, Inc. v. D’ion Furs, Inc., 835 F.2d commercial markets and social circles in

23. Importantly, to determine whether a mark Corp., 644 F.2d 946, 950 n. 2 (2d Cir.1981)
has secondary meaning, ‘‘it is not always the (finding that a survey of ‘‘500 romance read-
general public’s understanding but—depend- ers in three cities’’ in which fifty percent of
ing upon the product—often only a segment the respondents identified a certain book cov-
of consumers that need be examined.’’ Cen- er design as having been produced by a cer-
taur Commc’ns, Ltd. v. A/S/M Commc’ns, Inc., tain publisher was ‘‘probative of secondary
830 F.2d 1217, 1221 (2d Cir.1987); see, e.g., meaning’’).
Harlequin Enters. Ltd. v. Gulf & Western
 CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA 227
Cite as 696 F.3d 206 (2nd Cir. 2012)

which these things matter a great deal, the liminary injunction are not clearly erro-
red outsole became closely associated with neous. We hold that the lacquered red
Louboutin,’’ id. at 447–48 (emphasis add- outsole, as applied to a shoe with an ‘‘up-
ed), and where unsolicited media attention per’’ 25 of a different color, has ‘‘come to
to that red sole became rampant. Indeed, identify and distinguish’’ the Louboutin
the Chief Executive Officer of YSL’s par- brand, Qualitex, 514 U.S. at 163, 115
ent corporation, François–Henri Pinault, S.Ct. 1300, and is therefore a distinctive
himself acknowledged that, ‘‘[i]n the fash- symbol that qualifies for trademark pro-
ion or luxury world, it is absolutely clear tection.
that we recognize the notoriety of the dis- We further hold that the record fails to
tinctive signature constituted by the red demonstrate that the secondary meaning
sole of LOUBOUTIN models in contrast of the Red Sole Mark extends to uses in
with the general presentation of the model, which the sole does not contrast with the
particularly its upper, and so for all shades upper—in other words, when a red sole is
of red.’’ 24 Joint App’x 529. used on a monochromatic red shoe. As
In light of the evidence in the record, the District Court observed, ‘‘[w]hen Hol-
including extensive consumer surveys lywood starlets cross red carpets and high
submitted by both parties during the pre- fashion models strut down runways, and
liminary injunction proceedings, and of heads turn and eyes drop to the celebri-
the factual findings of the District Court, ties’ feet, lacquered red outsoles on high-
we think it plain that Louboutin’s mar- heeled, black shoes flaunt a glamorous
keting efforts have created what the able statement that pops out at once.’’ Loubout-
district judge described as ‘‘a TTT brand in, 778 F.Supp.2d at 448 (emphasis added).
with worldwide recognition,’’ Louboutin, As clearly suggested by the District Court,
778 F.Supp.2d at 448. By placing the it is the contrast between the sole and the
color red ‘‘in [a] context [that] seems un- upper that causes the sole to ‘‘pop,’’ and to
usual,’’ Qualitex, 514 U.S. at 162, 115 distinguish its creator.
S.Ct. 1300, and deliberately tying that The evidentiary record further demon-
color to his product, Louboutin has creat- strates that the Louboutin mark is closely
ed an identifying mark firmly associated associated with contrast. For example,
with his brand which, ‘‘to those in the Pinault, the chief executive of YSL’s par-
know,’’ ‘‘instantly’’ denotes his shoes’ ent company, wrote that the ‘‘distinctive
source, Louboutin, 778 F.Supp.2d at 448. signature’’ of the Mark is in its ‘‘contrast
These findings of fact by the District with the general presentation of the [shoe],
Court in addressing a motion for a pre- particularly its upper.’’ Joint App’x 529.

24. As an example of the interest of plagiariz- http://www.cbp.gov/xp/cgov/newsroom/news

ers in ‘‘knocking off’’ Louboutin’s mark—an- releases/local/08162012 5.xml; see Ives Labs.,
other Centaur Communications consider- Inc. v. Darby Drug Co., 638 F.2d 538, 544 n. 8
ation—we take judicial notice, pursuant to (2d Cir.1981) (taking judicial notice of exis-
Federal Rule of Evidence 201, of a recent tence of official government proceeding),
seizure by the United States Bureau of Cus- rev’d on other grounds by Inwood Labs., Inc. v.
toms and Border Protection of over 20,000 Ives Labs., Inc., 456 U.S. 844, 102 S.Ct. 2182,
counterfeit Louboutin shoes illegally shipped 72 L.Ed.2d 606 (1982).
to the United States, with an estimated retail
value of over $18 million. CBP Seizes More
25. As noted above, we use the word ‘‘upper’’
than 18 Million in Fake Women’s Fashion
to refer to the visible portions of the shoe
Shoes, U.S. Dep’t of Homeland Sec., Customs
& Border Prot. (Thursday, Aug. 16, 2012), other than the outsole.
228 696 FEDERAL REPORTER, 3d SERIES

Of the hundreds of pictures of Louboutin cause the red sole on YSL’s monochrome
shoes submitted to the District Court, only shoes is neither a use of, nor confusingly
four were monochrome red. Compare id. similar to, the Red Sole Mark. We there-
19, 415, 438, 587 (depicting monochrome fore affirm the denial of the preliminary
Louboutin shoes), with id. 415–27, 431–47, injunction insofar as Louboutin could not
593–653, 680–724 (photographs and news have shown a likelihood of success on the
articles depicting Louboutin shoes). And merits in the absence of an infringing use
Louboutin’s own consumer surveys show of the Red Sole Mark by YSL.
that when consumers were shown the YSL
monochrome red shoe, of those consumers B. Likelihood of Confusion and
who misidentified the pictured shoes as Functionality
Louboutin-made, nearly every one cited
the red sole of the shoe, rather than its Having limited the Red Sole Mark as
general red color. We conclude, based described above, and having established
upon the record before us, that Louboutin that the red sole used by YSL is not a use
has not established secondary meaning in of the Red Sole Mark, it is axiomatic that
an application of a red sole to a red shoe, we need not—and should not—address ei-
but only where the red sole contrasts with ther the likelihood of consumer confusion
the ‘‘upper’’ of the shoe. The use of a red or whether the modified Mark is function-
lacquer on the outsole of a red shoe of the al.
same color is not a use of the Red Sole
Mark. CONCLUSION
Because we conclude that the secondary
To summarize:
meaning of the mark held by Louboutin
extends only to the use of a lacquered red We hold that the District Court’s conclu-
outsole that contrasts with the adjoining sion that a single color can never serve as
portion of the shoe, we modify the Red a trademark in the fashion industry was
Sole Mark, pursuant to Section 37 of the based on an incorrect understanding of the
Lanham Act, 15 U.S.C. § 1119,26 insofar as doctrine of aesthetic functionality and was
it is sought to be applied to any shoe therefore error. We further hold that the
bearing the same color ‘‘upper’’ as the District Court’s holding, that Louboutin’s
outsole. We therefore instruct the Di- trademark has developed ‘‘secondary
rector of the Patent and Trade Office to meaning’’ in the public eye, was firmly
limit the registration of the Red Sole Mark rooted in the evidence of record and was
to only those situations in which the red not clearly erroneous, and that the Red
lacquered outsole contrasts in color with Sole Mark is therefore a valid and enforce-
the adjoining ‘‘upper’’ of the shoe. See id. able trademark. We limit the Red Sole
In sum, we hold that the Red Sole Mark Mark pursuant to Section 37 of the Lan-
is valid and enforceable as modified. This ham Act, 15 U.S.C. § 1119, to a red lac-
holding disposes of the Lanham Act claims quered outsole that contrasts with the col-
brought by both Louboutin and YSL be- or of the adjoining ‘‘upper.’’

26. 15 U.S.C. § 1119 provides that ‘‘[i]n any the registrations of any party to the action.
action involving a registered mark the court Decrees and orders shall be certified by the
may determine the right to registration, order court to the Director, who shall make appro-
the cancellation of registrations, in whole or priate entry upon the records of the Patent
in part, restore canceled registrations, and and Trademark Office, and shall be controlled
otherwise rectify the register with respect to thereby.’’ (emphasis added).
 U.S. v. CARTER 229
Cite as 696 F.3d 229 (2nd Cir. 2012)

Accordingly, we (1) affirm in part the Northern District of New York, Frederick
order of the District Court, insofar as it J. Scullin, Jr., J., to conspiracy to distrib-
declined to enjoin the use of a red lac- ute, and conspiracy to possess with intent
quered outsole as applied to a monochrome to distribute, fifty grams or more of co-
red shoe; (2) reverse in part the order of caine base and was sentenced to 10 years
the District Court insofar as it purported in prison as the statutory mandatory mini-
to deny trademark protection to Loubout- mum. Defendant appealed.
in’s use of contrasting red lacquered out- Holding: The Court of Appeals, José A.
soles; and (3) enter judgment accordingly. Cabranes, Circuit Judge, held that district
We remand for further proceedings with court was not authorized to sentence de-
regard to YSL’s counterclaims. In the fendant below statutory mandatory mini-
interest of judicial economy, either party mum sentence.
may restore jurisdiction to this Court to Affirmed.
consider whatever arguments remain or
arise relating to this case by sending a
letter to the Clerk of this Court within 14 1. Criminal Law O1156.2
days of the District Court’s final judgment. Appellate courts review the procedur-
Any such proceedings will be assigned to al and substantive reasonableness of a dis-
this panel. trict court’s sentencing decision for an
The Clerk of the Court is hereby direct- abuse of discretion, keeping in mind that a
ed to notify the Director of the United district court has abused its discretion if it
States Patent and Trade Office of this based its ruling on an erroneous view of
Judgment, which concerns U.S. Trade- the law or on a clearly erroneous assess-
mark Registration No. 3,361,597 held by ment of the evidence, or rendered a deci-
Christian Louboutin and dated January 1, sion that cannot be located within the
2008. range of permissible decisions.

2. Criminal Law O1139

, Appellate courts review de novo the

legal aspects of a district court’s decision
to apply a mandatory minimum sentence.

3. Conspiracy O51
UNITED STATES of America,
Sentencing and Punishment O34
Appellee,
Following defendant’s guilty plea to
v.
conspiracy to distribute and conspiracy to
Ronald CARTER, Defendant–Appellant. possess with intent to distribute fifty
Docket No. 11–3605–cr. grams or more of cocaine base, district
court was not authorized to sentence de-
United States Court of Appeals, fendant below statutory mandatory mini-
Second Circuit. mum sentence of 10 years imprisonment
by sentencing statute listing various fac-
Submitted: Sept. 20, 2012.
tors to determine a sentence; sentencing
Decided: Sept. 28, 2012. statute applied ‘‘except as otherwise specif-
Background: Defendant pled guilty in the ically provided,’’ and statute under which
United States District Court for the defendant was convicted contained specific