U.S. District Judge Victor Marrero’s decision to deny Christian Louboutin’s injunction in Louboutin v. Yves Saint Laurent raises recurring issues regarding fashion’s place in U. S.  intellectual property law. The recent decision — with implications, too, for entertainment lawyers with celebrity clients wishing to extend their personal brands and build fortunes in lines of fashion items — was based on the reasoning that Louboutin’s color use  did not create a valid trademark, despite prolific evidence that proved it had acquired secondary meaning. As the company gears up to keep fighting claims of trademark infringement, the case proves that fashion continues to struggle in clearing the utilitarian and secondary meaning hurdles of copyright, trademark and in some cases patent law and to be seen as an innovative art form meriting IP protection.

The case also shows that trademark protection, long the most relied upon legal strategy for the fashion industry, also may fall short. While Louboutin’s debatable use of color as a trademark may be unique to this case, that such an industry power player may be at risk of losing its legal protections makes vulnerable a legal strategy underpinning the development of emerging fashion lines, many of which get launched today by celebrities.

Licensing deals in footwear, fragrance, handbags, accessories and apparel have become an integral part of personal — and profitable — branding. Rachel Zoe, Mary Kate and Ashley Olsen, Jessica Simpson, Jay Z, and Jennifer Lopez are among the many celebrities who have built empires through successful fashion lines.

As entertainment lawyers help clients navigate brand development, they might want to scrutinzie the trademark that many of them seek to legally protect their products.

While many of these are mass markets lines, and therefore won’t raise the same infringement issues that luxury brands might,  it might be in the legal interest of emerging fashion lines, luxury or celebrity endorsed, to develop logos or symbols; these could sidestep the functionality doctrine, until fashion earns its rightful place in U.S. intellectual property law. Or it may be they could garner other IP protections, be it through the proposed Innovative Design Protection and Piracy Prevention Act or other legislation.

Further it will be key for lawyers to help clients avoid what Marrero termed Louboutin’s “vague” trademark registration;  in the most recent case involving Madonna’s trademark of the phrase Material Girl, lawyers could prove a boon to clients, helping them to avoid assuming they hold a trademark.