By, Manasvi Sharma

 

Of all the things Disney does, one of the things it probably does the best is marketing. With Frozen II hitting the theatres in November 2019 and entering the million-dollar club at Global Box Office,[1] the marketing team had already prepared its movie inspired merchandise that the fans will like to add to their closet and collection.

Out of all the items that were added for sale to Disney’s official website, one item that garnered special attention in particular (for an altogether different reason) is the “Anna Costume Boot for Kids – Frozen 2” (hereinafter, “Anna’s boots”).[2] Anna’s boots came into the limelight for its design consisting of the red sole. Anyone who is aware of the fashion industry, knows that red soles are Christian Louboutin’s signature.[3] Christian Louboutin is a French fashion designer with an eponymous high-end footwear brand. Every single one of his footwear incorporates a shiny, red-lacquered sole that have become his signature to an extent that his brand was granted federal registration of its “Red Sole Trademark” in the United States in 2008. Their soles are like tail-lights: red on the way back.[4]

Louboutin has been aware of possible trademark infringements in this regard leading to being a party to some major lawsuits accusing respective opposite parties for such legal infringements. In 2012, Louboutin sued Yves Saint Laurent, an iconic Paris-based prominent luxury fashion house, over its sale of pair of monochrome red shoes having a red outsole and red upper.[5] The Second Circuit held that the red sole is not inherently distinctive, but that the sole has acquired second meaning. Consequently, the concerned court of law directed the United States Patent and Trademark Office (USPTO) to limit Louboutin’s trademark[6] to “situations in which the red lacquered outsole contrasts in colour with the adjoining ‘upper’ of the shoe”.[7]

On the other part of the planet, Louboutin’s trademark recognition in India became a matter of dispute when Louboutin filed suits against certain Indian retailers, the reason being, the Indian Trade Marks Act, 1999 only provides trademark protection to “combination of colours” and not to a single colour.[8] Louboutin’s legal claims went through a rollercoaster ride with three cases before Delhi High Court pronouncing different judgements. Ultimately, the Delhi High Court, in its judgment dated July 31, 2018 in the case of Christian Louboutin v. Ashish Bansal,[9] granted permanent injunction and punitive damages against a Delhi based retailer for infringing the famed ‘Red Sole’ trademark of Christian Louboutin.

One pattern that can be deduced from these cases is that Louboutin has never shied away in taking actions against anyone that has come across as a threat to his red sole, whether it is a big fashion house or a small retailer, Louboutin does not spare. This is the very reason why Disney might be on its radar next owing to Anna’s boots.

So, does Disney has a chance to save itself? The answer is fairly affirmative. Although, Anna’s boots do match the description of “the color red on the sole of non-red shoes”,[10] it integrates the red heel as well. This particular aspect of the design of the costume boot might fall outside the limitation put on Louboutin’s trademark as a result of the aforementioned Yves Saint Laurent case. Furthermore, another major contention that possibly lies here is that the red colour of Anna’s boots isn’t the same red that the soles of Christian Louboutin shoes carry. Thus, the technicalities of Intellectual Property regulations in this context can come to the rescue of Disney.

Another question that arises at this juncture is, why would Louboutin go on to sue Disney if all the above-mentioned factors are in existence already? Amy Reynolds, a Partner in the IP and Technology, Protection and Enforcement team in Fieldfisher’s London office explained, that Louboutin might still sue Disney (or preferably settle the matter in secrecy) just to prevent its signature red soles from becoming “generic” or the threat of dilution of its trademark. That is to say that Louboutin may take certain legal actions to protect the sanctity of its red sole trademark and prevent notional damages. However, to know whether Louboutin moves ahead in this direction, one has to wait and watch.

Coming back to the original question asked in the title of this piece – Can Elsa save Anna from Louboutin? Not sure about Her Majesty, but a strong legal team, for sure, can.


[1] Jen Juneau, Frozen 2 Officially Hits $1 Billion at the Global Box Office, People (Dec. 16, 2019, 10:21 AM), https://people.com/movies/frozen-2-hits-1-billion-box-office/.

[3] Chitra Ramaswamy, Interview: Christian Louboutin, Shoe Designer, Scotsman (May 08, 2012, 00:00), https://www.scotsman.com/lifestyle/fashion/interview-christian-louboutin-shoe-designer-1-2278783.

[4] Lauren Collins, Sole Mate, The New Yorker (Mar 21, 2011), https://www.newyorker.com/magazine/2011/03/28/sole-mate.

[5] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012).

[6] Hannah Elliot, Both Sides Claim Victory in YSL v. Louboutin Shoe Case, Forbes (Sep 05, 2012, 05:31pm), https://www.forbes.com/sites/hannahelliott/2012/09/05/both-sides-claim-victory-in-ysl-v-louboutin-shoe-case/#48a04f991eef ; See also, Cases of Interest: Christian Louboutin v. Yves Saint Laurent, The Fashion Law (Oct 06, 2016), https://www.thefashionlaw.com/learn/christian-louboutin-v-yves-saint-laurent.

[7] Charlotte Marie Petilla, Seeing Red: Second Circuit Modifies Louboutin Trademark Registration, Trademark & Copyright Law (Sep 05, 2012), https://www.trademarkandcopyrightlawblog.com/2012/09/seeing-red-second-circuit-modifies-louboutin-trademark-registration/.

[8] The Trade Marks Act, 1999 No. 47 of 1999, § 10.

[9] Christian Louboutin Sas v. Ashish Bansal, 2018 SCC OnLine Del 10205 (Del HC: 2018) (India).

[10] supra, note 5.

Image source:  Photo by pan xiaozhen on Unsplash