McCarter, Debevoise to continue Louboutin-YSL shoe fight

Design house Christian Louboutin—represented by McCarter & English IP partner Harley Lewin—is appealing a federal judge's decision allowing high-fashion rival Yves Saint Laurent to proceed with plans to sell red-soled shoes that Louboutin claims infringe its trademark.

In a notice of appeal filed Friday, Louboutin asks the U.S. Court of Appeals for the Second Circuit to do something Manhattan federal district court judge Victor Marrero refused to do last Wednesday: issue a temporary injunction prohibiting the sale of the YSL shoes in question, part of a monochrome line that comes in such other colors as purple and orange.

While acknowledging that the public strongly associates red outsoles with the Louboutin brand, Marrero said color is an essential element in fashion design that cannot be trademarked. Beyond finding that Louboutin would have a hard time winning the infringement suit it filed against YSL in April, Marrero said he would rule in YSL's favor on summary judgment should the company move to invalidate Louboutin's trademark.

"Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition," the judge wrote, "the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning."

Explaining the decision to appeal the ruling, Lewin called it "dismaying" and said he believes the judge overrreached and misapplied the law as it applies to aesthetic functionality. He noted that his client's 2008 trademark specifically covers "bright red-colored, lacquered outsoles of women's luxury designer footwear" and allows other designers to use different shades in other contexts.

"It was really disappointing," Lewin said. "YSL itself conceded that the Louboutin red sole is a trademark, and the judge went all the way back to, 'Should this have been a trademark at all?' We were surprised at the scope of his ruling."

YSL counsel David Bernstein, a Debevoise & Plimpton partner, lauded Marrero's decision. Bernstein said his client has used red outsoles on its shoes periodically over the past 20 years and that Louboutin has never pursued legal action before. Expressing confidence that YSL will ultimately prevail, Bernstein argued that its designers are artists who need to have a full color palate available to them.

"The judge went to the absolute heart of the case," Bernstein said. "He ruled that by law, Louboutin is not entitled to a trademark registration or any trademark protection for the color red. Cut, color, and material are the basic building blocks of fashion, and no one designer can monopolize that."

A conference in the case is set for Friday at which Marrero will further consider the question of invalidating the Louboutin trademark, Bernstein said.

(Published by The Am Law Daily - August 15, 2011)