Fordham Law

Louboutin Presses 2nd Circ. To Reverse Red Sole Mark Ruling

Susan Scafidi in Law 360, January 24, 2012

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Law360, New York (January 24, 2012, 8:07 PM ET) -- Paris' Christian Louboutin SA took the closely watched trademark and unfair competition case over its famous red-soled shoes to the Second Circuit on Tuesday, pushing for the reversal of a ruling suggesting that color used in fashion cannot be trademarked.

Louboutin has been fighting since April to stop rival French fashion powerhouse Yves Saint Laurent SAS from making red-soled women's shoes — a Louboutin staple that fetches as much as $1,000 a pair and has even earned a tribute song from Jennifer Lopez.

“Mr. Louboutin had created one of the most iconic trademarks of the 20th century," the company's attorney Harley I. Lewin of McCarter & English LLP said at oral arguments before an appeals panel. "Louboutin turned a pedestrian item, the bottom of a shoe, into a thing of beauty."

The judges will decide whether a lower court erred when it said color in a piece of fashion is like color in art: not trademarkable. The August decision denied Louboutin's request for a preliminary court order blocking YSL from copying Louboutin's shoes.

The case, which deals with a narrow area of trademark law, has drawn widespread attention — dozens of well-appointed observers, many in Louboutins themselves, packed the Manhattan courtroom's gallery to watch the arguments.

“Everyone is interested,” said Randy Lipsitz of Kramer Levin Naftalis & Frankel LLP, who watched the proceedings. His early read on the panel's direction is that the lower court judge, U.S. District Judge Victor Marrero, will get the case back to do more prying.

U.S. Circuit Judge Chester Straub, in particular, criticized Marrero's ruling, which he said was “far-reaching” but short on evidence. “Judge Straub was saying, 'Judge Marrero gave us a lot of his thoughts, but where's the beef?''” Lipsitz said. He expects a decision in a few months, though he said the case might ultimately go before the U.S. Supreme Court.

The case will now probably go to trial, said another close observer of the case who attended the hearing, Fordham University School of Law Professor Susan Scafidi.
“If the district court judge had been hearing this [argument], he would have been a little red-faced,” Scafidi, an admitted Louboutin fan, said.

YSL, for its part, does not dispute Louboutin's artistry, even as it emphasizes it would never want its limited-run designs to be confused with his and that red-soled shoes were popular in pre-revolution France.

The company should, though, have the freedom to make shoes all in red, including the sole, to match its fashion lines, YSL attorney David H. Bernstein of Debevoise & Plimpton LLP argued.

Several groups have split on Judge Marrero's opinion, in which he likened Louboutin's trademark to an attempt by Picasso to trademark the color blue in melancholy paintings. The International Trademark Association and Tiffany & Co., which packages its jewelry in distinctive blue boxes, have both supported the Louboutin mark in amicus curiae briefs. A group of professors from Georgetown University, Boston University and others argued the lower court had made the correct decision.

“We have somebody who has sort of created a new mouse trap, in a way, by making the sole of a shoe such an enormous source identifier,” said Robert Zelnick, a McDermott Will & Emery LLP partner who has also been following the case.
“On the other hand, I think there are concerns about color depletion. There are only so many primary colors,” he said.

Judges Chester J. Straub, Jose A. Cabranes and Debra Ann Livingston sat on the panel for the Second Circuit.

Louboutin is represented by Harley I. Lewin of McCarter & English LLP.

YSL is represented by David Hal Bernstein 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.