“C’est faux!,” Christian Louboutin muttered in a moment of exasperation in the Court of Appeals Tuesday, where his legal battle continued against Yves Saint Laurent America Inc. for trademark infringement and unfair competition.
The designer was taking exception to YSL’s assertion that the French house has been selling monochromatic shoes — red included — since the 1970s, an argument meant to demonstrate a reasonable history of using red outsoles on women’s shoes before Louboutin began featuring them.
Meanwhile, when asked why Louboutin waited to commence legal action in 2011 when YSL had sold shoes with red soles several years prior, his lawyer, Harley Lewin of McCarter & English, retorted, “We can only do something about what we know. When we found out, we moved.”
The case to prevent YSL from continuing to sell its all-over-red shoes, initially filed in April 2011 and now under appeal, revolves around several issues, chief of which is whether Louboutin’s Chinese-red lacquer sole, registered as a trademark in 2008, is in fact valid and enforceable.
“But it’s not just about the color, it’s a specific red, in a glossy finish, on the outsole of shoes,” said Randy Lipsitz, partner in Kramer Levin Naftalis & Frankel’s intellectual property department, which is not involved in the case.
“And the deeper question, having said the trademark is valid, is whether YSL infringed on it by making monochromatic shoes. That’s more interesting. Louboutin has built [his trademark] up over many years and it has acquired substantial secondary meaning. So what the case is ultimately coming down to is how far the protection can extend without preventing fair competition,” Lipsitz added. “But this will drag out for the rest of year, at least, unless they settle — and that’s unlikely.”
In court, Lewin gave forceful arguments to Judges Chester Straub, José Cabranes and Debra Ann Livingston as to why they should overturn New York Southern District Judge Victor Marrero’s decision in August to deny the shoe label a preliminary injunction against YSL.
YSL’s lawyer, David Bernstein of Debevoise & Plimpton, countered at one point, “We [can’t be] allowed to make green, yellow and purple shoes but be enjoined from making red ones. We [need to] have shoes that match the collection.”
Near the end of the hearing, which concluded today, Judge Cabranes asked Lewin what he would like the panel to do. Lewin said he would like to be granted the preliminary injunction, to which Judge Cabranes responded, “You can’t expect us to do that, right?”
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What will likely happen though, said lawyers, is the chance for Louboutin to make additional findings and then proceed to a full trial to present evidence — an outcome YSL wants. Experts said the judges will take at least a few months to come to a decision.
Louboutin, accompanied to the courtroom by his close friend and designer Diane von Furstenberg, attended the hearing in a gray wool pinstripe suit, purple tie and gray sneakers before returning to Paris without taking interviews.
But Von Furstenberg seemed pleased with the day’s proceedings. “Where’s Harley? He did a great job today,” she said in the elevator going down.