In a written decision released Wednesday, Manhattan federal judge Victor Marrero not only denied Louboutin the right to bar YSL from selling red-soled shoes from its 2011 cruise collection, but he also implied that if the case continued, he would move to find for the defendant without a full trial.
The judge wrote, “The court’s conclusion that the red-sole mark is ornamental and functional in its fashion industry market would compel it to grant partial summary judgment in favor of YSL on YSL’s counterclaims seeking cancellation of Louboutin’s mark.”
Susan Scafidi, academic director of the Fashion Law Institute at Fordham Law School, noted, “The order all but invites YSL to seek a summary judgment motion that would result in the cancellation of Louboutin’s trademark, unless a higher court were to disagree. It seems that the doctrine of aesthetic functionality was very persuasive.”
Louboutin first filed a lawsuit against YSL in April to protect its red-sole shoes, which were granted a registered trademark in 2008. To obtain an injunction against YSL, it would have had to prove YSL’s sales of its red-soled footwear caused “irreparable harm” against its brand, law experts told Footwear News.
“Louboutin went for the jugular and missed,” said Richard Stockton, a lawyer at Banner & Witcoff. “That doesn’t mean they’re out of the fight, but we’ve gone down to a case that is questioning how strong Louboutin’s trademark rights are.”
Scafidi agreed: “If an injunction is an arrow in the road, the signs are not pointing straight to a spectacular legal victory. Louboutin has more of an uphill battle now than initially anticipated, [while] YSL can be guardedly happy at this point.”
David Bernstein, partner at Debevoise & Plimpton, which represents YSL, told FN, “We’re thrilled. Judge Marrero found [for us] on the central ground of our defense, which is that Louboutin’s trademark never should have been issued, that no one designer should be entitled to monopolize a single color for fashion items.”
He added, “If Louboutin does persist [in going to trial], we fully expect that we will defend this case right to the end. But I don’t think we need a trial, as Judge Marrero is very likely to grant us summary judgment. I believe he will also cancel the registration.”
Judge Marrero decided that “awarding one participant in the designer shoe market monopoly on the color red would impermissibly hinder competition among other participants.”
“If Louboutin owns ‘Chinese Red’ for the outsole of high fashion women’s shoes, another designer can just as well — like the world colonizers of eras past dividing conquered territories and markets — plant its flag on the entire heel for its ‘Chinese Red.’ … In sum, the court cannot conceive … of the broad spectrum of absurdities that would allow recognition of a trademark for the use of a single color for fashion items,” he added.
Louboutin’s attorney, Harley Lewin of McCarter & English, told FN the designer, along with others in the company, is dismayed.
“We’re going to fight like hell,” he added. “[I think] the judge is wrong on the law as well as the facts. He has created a rule of breathtaking scope and one [that] would be subject to reversal if it’s taken up. [Even in] consumer foods, packaging and color serve to distinguish one product from another. It’s frankly an insult to a host of other industries to say fashion industry needs to be more creative with color.”
Judge Marrero has ordered that both parties meet next Wednesday afternoon, at which Louboutin must “show cause why the record of this action as it now exists should not be converted into a motion for partial summary judgment canceling Louboutin’s trademark.”