2nd Circ. Should Remand Louboutin Red Sole IP Suit: INTA (Law360)
By Jacqueline Bell
The International Trademark Association weighed in Monday on Christian Louboutin SA's trademark and unfair competition suit against Yves Saint Laurent America Inc. over red-soled shoes, urging the Second Circuit to force the trial court to reconsider its view of Louboutin's red mark.
In an amicus brief, the association argued that the lower court had incorrectly considered Louboutin's trademark on red soles as a broad claim to the color red, rather than the narrower claim Louboutin made in its trademark registration of "a lacquered red sole on footwear," thereby improperly viewing the case as a bid by Louboutin to bar fashion industry competitors from using red.
"Overlooking the definition in the registration, the court then evaluated the mark as if it were merely a color that an artist or designer would use, rather than a valid trademark identifying the source of appellants' goods," the association said.
The INTA said it was not taking any position on whether Louboutin or YSL should ultimately prevail in the high-profile trademark fight, but was only asking the Second Circuit to send the case back to the lower court with advice on how to properly analyze Louboutin's red sole mark.
"To analyze the registration properly in accordance with the Lanham Act, the district court would begin with the presumption that the red sole mark is a distinctive identifier of Louboutin goods and thus a valid trademark," the INTA said. "The court would then consider and weigh the evidence proffered by the parties on the question of validity, and determine whether appellants had rebutted the presumption by a preponderance of the evidence."
Louboutin is appealing U.S. District Judge Victor Marrero's decision to deny its request for a preliminary injunction barring YSL from selling several shoe models while Louboutin pursues claims the footwear violates its 2008 trademark on red outer soles on women's shoes. Louboutin maintains YSL is trying to take advantage of the cachet associated with Louboutin's red lacquered soles by making its own shoes with nearly identical red bottoms.
Though previous courts have agreed to grant trademark protection to single colors used to identify brands in industrial contexts, the judge concluded that in fashion, color does more than just highlight a product's source.
Judge Marrero subsequently indicated that he might cancel the trademark based on his finding but put off consideration of the issue pending the outcome of Louboutin's appeal.
David Bernstein of Debevoise & Plimpton LLP, who represents YSL, told Law 360 Tuesday that Judge Marrero was "exactly right" in denying Louboutin's request for a preliminary injunction.
"We look forward to presenting YSL's arguments to the court of appeals when we file our brief next month and remain confident that the court will uphold the denial of the preliminary injunction," Bernstein said.
An attorney for Louboutin was not immediately available to comment.
The INTA is represented by Janet L. Cullum and John W. Crittenden of Cooley LLP and Susan J. Hightower of Pirkey Barber LLP.
Louboutin is represented by Harley I. Lewin and Lee C. Bromberg of McCarter & English LLP.
YSL is represented by David Bernstein, Jyotin Hamid, Jill van Berg and Rayna Feldman of Debevoise & Plimpton LLP.
The case is Christian Louboutin SA v. Yves Saint Laurent America Inc., case number 11-3303, in the U.S. Court of Appeals for the Second Circuit.
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