It's round one to Yves Saint Laurent in the trademark infringement lawsuit which has been playing out in the New York courts.

Entertaining scenes in a New York courtroom in April this year when squabbling fashion houses Christian Louboutin and Yves Saint Laurent met to argue the former's allegations that the latter infringed their Red Sole trademark for their 2011 cruise collection.

Federal judge, Victor Marrero, had denied Christian Louboutin's request that what they perceive as 'copycat' red soled shoes from YSL's 2011 resort collection, are blocked from sale for the duration of court proceedings.

Refusing Louboutin's request for a preliminary injunction, Marrero wrote in his ruling:

'Because in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, 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.'

Yves Saint Laurent's lawyer, David Bernstein, argued that his client had been using red as a signature colour since the fashion house was founded in 1962 and that even King Louis XIV of France and Dorothy from the Wizard of Oz had red-soled shoes. He went on to question whether Louboutin's Red

Sole trademark, which the French cobbler attained in New York in 2008, was even valid and ask whether any designer can monopolise a colour: "We are unaware of any case in which a court has upheld trademark protection to a mark consisting solely of a single color on a portion of an article of apparel," - a debate further inflamed this week by Giancarlo Giammetti, the honorary president of Valentino, who stated that if any house should have a monopoly on red, it should be Valentino.

For his part, Louboutin's lawyer, Harley Lewin, claimed that his client is not "as YSL misleadingly argues, [trying] to claim a monopoly over the colour red . . . . But when YSL ignores countless colour choices, including other reds, and apes the famous signature of the Louboutin brand, [it destroys] the goodwill painstakingly built in the Red Sole Mark." He further stressed that "Unless this court enjoins YSL, the floodgates will open, and the Louboutin business will be devastated."

Another light note to finish before the judge retired then to consider his verdict, Fashion-law.org report that 'unable to refute the evidence, YSL proffers an excuse: 'fashion made them do it'

Christian Louboutin, whose luxury, red-soled shoes are worn by celebrities such as Victoria Beckham, Kate Moss and Sarah Jessica Parker, started legal proceedings against Yves Saint Laurent America Inc. in April, alleging it was selling shoes with red soles that are "virtually identical" to its own.

Mr Louboutin is seeking more than $1million damages for alleged infringement of his 'Red Sole' trademark, claiming that he was the first designer to develop the idea of having red soles on women's shoes.

YSL hit back, with their court papers stating 'Red outsoles are a commonly used ornamental design feature in footwear, dating as far back as the red shoes worn by King Louis XIV in the 1600s and the ruby red shoes that carried Dorothy home in The Wizard of Oz.'

YSL also allege that Mr Louboutin was fraudulent in his trademark application claim that he had 'exclusive' use of the red sole.

'As an industry leader who has devoted his entire professional life to women's footwear, Mr Louboutin either knew or should have known about some or all of the dozens of footwear models that rendered his sworn statement false.'

A Manhattan federal judge denied famed shoe-maker Christian Louboutin an injunction that sought to stop fashion house Yves Saint Laurent from selling red-bottomed shoes, a staple of Louboutin's footwear line. But a federal judge in Manhattan has denied its request for a preliminary injunction. Both parties have been ordered back to court next week.

The French shoe-designer was suing over four particular shoes in the YSL 2011 collection: the Tribute, Tribtoo, Palais and Woodstock models. Which all sport bright-red outsoles.

The Christian Louboutin lawsuit, which was first filed in April this year, claims that Yves Saint Laurent’s sale of lookalike shoes in Manhattan stores such as Saks Fifth Avenue, Barneys and Bergdorf Goodman was ‘likely to cause and is causing confusion, mistake and deception among the relevant purchasing public.'

Louboutin, who trademarked the crimson underbelly in 2008, claimed that he pioneered the red-sole in 1992 when he first polished a shoe bottom with red nail polish. However, Judge Victor Marrero dismissed that argument, writing in his ruling that "Louboutin's claim to “the colour red” is, without some limitation, overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act."

The judge also went on to say, "Louboutin's claim raises the specter of fashion wars. If Louboutin owns Chinese Red for the outsole of high fashion women‟s shoes, another designer can just as well stake out a claim for exclusive use of another shade of red, or indeed even Louboutin‟s color, for the insole, while yet another could, like the world colonizers of eras past dividing conquered territories and markets, plant its flag on the entire heel for its Chinese Red."

The lawsuit states that Mr Louboutin came up with his red sole signature nearly 20 years ago, when he painted red nail polish on the black soles of a pair of women's shoes.

It read: 'Mr Louboutin is the first designer to develop the idea of having red soles on

women's shoes.

'The location of the bright colour on the outsole of a woman’s pump is said to provide an alluring "flash of red" when a woman walks down the street, or on the red carpet of a special event.'

But last month YSL decided to counter sue, stating that the Christian Louboutin, which claims to have been awarded an official trademark for the red sole in 2008, had no right to monopolise a colour.

YSL's legal team said: 'Louboutin’s trademark should have never been granted.

'We just don’t think that any fashion designer should be able to monopolise any colour.'

Last week, it appeared that Judge Victor Marrero had sided with Mr Louboutin's lawyers, when he refused to accept arguments submitted by YSL.

YSL's lawyers argued that the label had been using red as a signature colour since it launched in 1962, and that even King Louis XIV of France and Dorothy from the Wizard of Oz had worn red-soled shoes.

Shared retailers: Christian Louboutin's lawsuit claims that YSL's sale of lookalike shoes in New York stores such as Saks Fifth Avenue was 'causing confusion'

After today's ruling, Louboutin's lawyer, Harley Lewin of McCarter & English LLP, told The Cut:

'We are profoundly disappointed in Judge Marrero's decision. Although we are still studying it, it appears he has decided that in the fashion industry, one colour should not serve as a trademark. While he acknowledges the fashion industry at large has recognised the Louboutin Red Sole as a trademark source indicator, he has concluded that the fashion industry needs to use colours on outsoles without restriction and this, despite a mountain of evidence to the contrary, including a recent decision by the 2nd Panel of Appeal at OAMI in the EU that concluded exactly the opposite, calling Mr. Louboutin's adoption of the bright red outsole brilliant. We will evaluate all the alternatives available in the days to come.'

But lawyers for Christian Louboutin argued that these were unreliable findings and Judge Marrero agreed.

YSL's lawyer, David Bernstein of Debevoise & Plimpton LLP, said in a statement:

'We're gratified that Judge Marrero has agreed with YSL that no designer should be allowed to monopolise a single colour for an article of apparel. As Judge Marrero indicated, YSL designers are artists and, like other artists, they should have the right to use the full palette of colours in designing their fashions for each season.
As YSL has noted from the start, this is a trademark registration that never should have issued, and we are pleased that Judge Marrero has agreed that the registration likely should be cancelled.'

However, it's not over yet. While Judge Marrero has ruled the sale of YSL's shoes can go ahead in the short term, he has asked for more time to consider a verdict, ordering both parties back to court next week.It is not known when a verdict on the case will be reached as the Judge has now asked for this extra time.

via mail & telegraph UK

UPDATE:

The Red-Sole Case

Can the colour red be trademarked? Two luxury brands took to open court Tuesday to battle

LOUBOUTIN THE CASE CONTINUES

YSL Trib Too, left, and Louboutin Bambou

UPS and Tiffany each own their own particular shades, but does Christian Louboutin also lay claim to red soles? Ashby Jones discusses on Markets Hub. (Photo: Lindsay Holmes)

When it comes to corporate colors, brown belongs to United Parcel Service Inc., Owens Corning protects its own shade of pink, and Tiffany & Co. has domain over robin's-egg blue.

On Tuesday 24 January 2012, the famed French shoemaker Christian Louboutin SA stepped into the U.S. 2nd Circuit Court of Appeals in Manhattan to make the case that it should effectively own the exclusive right to use red—it calls the shade "China Red"—to coat the bottoms of its popular, pricey high-heeled shoes.

In front of a large and conspicuously well-dressed audience—more than a few women present wore red-soled shoes— lawyers for both sides made their arguments

"Christian Louboutin has created one of the more iconic trademarks of the 21st century," argued attorney Harley Lewin, before a three-judge panel. "Louboutin turned a pedestrian item into a thing of beauty."

Mr. Lewin and his client were in court hoping to reverse a lower-court ruling that appeared to suggest Louboutin shouldn't be allowed to hold a trademark for its signature red-soled shoes, sported in recent years by red-carpet A-list celebrities nationwide, from actresses Scarlett Johansson and Halle Berry to singers Beyoncé and Christina Aguilera.

Last August, Manhattan Federal Judge Victor Marrero denied Louboutin's request to stop another iconic French fashion house, Yves Saint Laurent, from selling a line of shoes whose tops, as well as bottoms, are red.

"Louboutin's claim would cast a red cloud over the whole industry, cramping what other designers could do while allowing Louboutin to paint with a full palette," wrote Judge Marrero in his opinion. "Louboutin would thus be able to market a total outfit in red, while other designers would not."

David Bernstein, a lawyer for Yves Saint Laurent, argued on Tuesday that the judges should uphold the bulk of Judge Marrero's ruling.

"Artists of this type need the full palette of colors available. In order to compete and compete fairly, we need red," said Mr. Bernstein. "We don't want to find out that we can make green, blue, purple shoes... but we are enjoined from making red."

Louboutin was granted a trademark registration to use the red for its shoe soles in 2008. But in his opinion denying Louboutin's injunction, Judge Marrero strongly suggested that the registration was granted in error. He acknowledged that trademarks can be given for the colors on products, chiefly when a single color is used only to identify or advertise a brand, like the pink used for Owens Corning's insulation.

But Judge Marrero questioned whether a color could ever be trademarked for use in fashion, where "color . . . performs a creative function; it aims to please or be useful, not to identify and advertise a commercial source.

During the hearing, the appeals-court judges wrestled with two main issues: whether Judge Marrero properly interpreted trademark law, and whether to send the case back to him for additional findings, such as whether there would be a "likelihood of confusion" between the two brands.

Of the panel's judges—Jose A. Cabranes, Debra Ann Livingston and Chester J. Straub—Judge Straub asked the most pointed questions of the lawyers, especially YSL's Mr. Bernstein.

He requested, for example, that Mr. Bernstein point to the place in Judge Marrero's opinion where he explains his blanket proposition that colors can't be used as trademarks in fashion.

"Where does he recite in great detail the basis for his holding?" asked Judge Straub. "You're not going to find it!"

Susan Scafidi, a law professor at Fordham University and an expert in law and fashion who has been following the case, said that she hoped the appellate court would correct Judge Marrero, who, in her opinion, "colored well outside the lines" in his ruling.

"There are broader issues raised by this case, and they're that fashion designs really have no protection," she said. "The industry has been trying for 100 years, but intellectual property law still stops right at fashion's door."
Read earlier details

—Matthew Day contributed to this article.Thanks The Wall Street Journal LOUBOUTIN & YSL - THE CASE CONCLUDES

Fashion giants Yves Saint Laurent, this week has finally decided they will drop their lawsuit agains luxury shoe designer Christian Louboutin, finally.

Louboutin sued YSL and since Delortae Agency have been following this case carefully since it began April 2011 for using red soles on the bottom of its red pumps, Louboutin claim infringed on the footwear brand’s trademark.

Interestingly New York federal court judge Victor Marrero had earlier had disagreed with Louboutin, and allowed YSL to continue to sell the shoes. The legitimacy of Louboutin’s trademark was secondly called into question. What does this now mean for the luxury foot designer, this recent court decision still grants Christian Louboutin trademark protection over the red sole alone.

David Bernstein said this week “Now that the Court of Appeals has definitively ruled for Yves Saint Laurent and has dismissed Christian Louboutin’s claims, Yves Saint Laurent has decided to end what was left of the litigation and refocus its energies on its business and its creative designs, Saint Laurent’s attorney, David Bernstein stated.

“From our perspective, the Appeals Court decision was a complete victory for us,” said YSL lawyer David Bernstein. “We got the right to sell the shoes and the court even narrowed Louboutin’s trademark. It’s our hope that Louboutin will stop using the [trademark] registration in an anti-competitive way.”

In order to make the case that the patent office that granted Louboutin its mark had done so fraudulently, YSL would have to bring the matter to the United States Patent and Trademark Office. Why this sudden turnaround by YSL can only be speculated that the already growing bad blood between the two luxury giants would be messy to continue to enforce and not do them or rather we believe, the negative publicity that showed major celebrities coming out in support of Louboutin taking every opportunity to be seen in a pair, is not worth something YSL may fear they would struggle to recover from.

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