Saint Laurent red-soles

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Louboutin wins appeal over Saint Laurent red-soles shoes

Christian Louboutin Sarl won a round in its fight to uphold a trademark for red soles on women’s shoes as a federal appeals court ruled that the fashion designer has legal protection if the outer sole is that color.

Louboutin had sought a preliminary injunction that would have prevented Yves Saint Laurent America Inc. from selling red- soled shoes that Louboutin claimed were identical to its own. U.S. District Judge Victor Marrero in August 2011 rejected Louboutin’s bid for an injunction and indicated it would probably lose the trademark case against Yves Saint Laurent.

The U.S. Appeals Court in Manhattan ruled today that Louboutin’s red sole is entitled to limited trademark protection, extending only to a red lacquered outer sole that contrasts with the color of the rest of the shoe and not to shoes that are monochromatically red. The judges affirmed the lower court’s denial of the injunction against Yves Saint Laurent, which was selling all-red shoes, and sent the case back to the trial judge.

The district court’s conclusion that a single color can never serve as a trademark in the fashion industry was based on an incorrect understanding of the doctrine of aesthetic functionality,” U.S. Circuit Judge Jose Cabranes wrote in today’s decision. “We conclude that the trademark, as thus modified, is entitled to trademark protection.

Marrero had put off deciding whether to cancel Louboutin’s trademark for the red sole until the appeals court ruled.

‘Central premise’

We are pleased that our central premise, that color on the red sole, can be a trademark,” Harley Lewin, a lawyer representing Louboutin at McCarter & English LLP, said in an e- mail. “We consider this a significant win, not only for Louboutin, but for the fashion industry in general.” He said he would “carefully study” the part of the ruling referring to monochromatic shoes.

Camilla Jenkins, a spokeswoman for Debevoise & Plimpton LLP, which represented Yves Saint Laurent, said the firm has no immediate comment.

Yves Saint Laurent, the company named for the designer who died in 2008, began selling shoes with red outsoles “long before Mr. Louboutin began using them,” David Bernstein, a lawyer at Debevoise, told Marrero at a hearing in July. He told the appeals court that the designer’s monochromatic shoe is “the DNA of the brand.

‘Aesthetic functions’

Because in the fashion industry color 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,” Marrero said in the opinion that was overturned today.

Louboutin, a Paris-based fashion company, claimed in its lawsuit filed in April 2011 that Yves Saint Laurent’s red-soled shoes “threaten to mislead the public.

Christian Louboutin, the designer for whom the company is named, said he got the idea for the red soles when he painted red nail polish on the black soles of a pair of women’s shoes.

Louboutin’s red soles were introduced in 1992 and have been on all of its luxury shoes since then, according to court papers. They have been popularized by people including Sarah Jessica Parker, the star of the TV show “Sex and the City.

On the website of high-fashion department store Barneys, Louboutin’s red-soled high-heeled shoes are priced from $625 to $3,995 a pair. In court papers Louboutin projected U.S. retail sales of shoes for 2011 at $135 million.

Red sole

The U.S. Patent and Trademark Office awarded Louboutin a trademark for the red sole in 2008, according to court filings.

Yves Saint Laurent is a unit of Paris-based PPR, which owns luxury brands including Gucci. PPR rose 1.05 euros to 125.80 euros in Paris trading. Louboutin’s shares don’t trade publicly.

The appeal is Christian Louboutin SA v. Yves Saint Laurent America Inc., (PP) 11-3303, U.S. Court of Appeals for the Second Circuit (Manhattan). The lower-court case is Christian Louboutin SA v. Yves Saint Laurent America Inc., 1:11-cv-02381, U.S. District Court, Southern District of New York (Manhattan).

(Published by Bloomberg – September 5, 2012)


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