Christian Louboutin S.A. v. Yves Saint Laurent Am. Inc.

• Decision Date: 10 August 2011
• Docket Number: No. 11 Civ. 2381(VM).,11 Civ. 2381(VM).
• Citation: 778 F.Supp.2d 445
• Parties: CHRISTIAN LOUBOUTIN S.A. et al., Plaintiffs,v.YVES SAINT LAURENT AMERICA, INC. et al., Defendants.
• Court: U.S. District Court — Southern District of New York

778 F.Supp.2d 445

CHRISTIAN LOUBOUTIN S.A. et al., Plaintiffs,

v.YVES SAINT LAURENT AMERICA, INC. et al., Defendants.

No. 11 Civ. 2381(VM).

United States District Court, S.D. New York.

Aug. 10, 2011.

Harley Irwin Lewin, McCarter & English, LLP, New York, NY, Lee Carl Bromberg, McCarter & English, LLP, Boston, MA, for Plaintiffs.David H. Bernstein, Jyotin Hamid, Jill Van Berg, Rayna S. Feldman, Debevoise & Plimpton, LLP, New York, NY, for Defendants.

DECISION AND ORDER

VICTOR MARRERO, District Judge.

Plaintiffs Christian Louboutin S.A., Christian Louboutin, L.L.C. and Christian Louboutin individually (collectively, “Louboutin”) brought this action against Yves Saint Laurent America, Inc., Yves Saint Laurent America Holding, Inc., Yves Saint Laurent S.A.S., Yves Saint Laurent, John and Jane Does A–Z and unidentified XYZ Companies 1–10 (collectively, “YSL”), asserting various claims under the Lanham Act, 15 U.S.C. § 1051 et seq. and New York law. YSL's opposition asserts various counterclaims seeking cancellation of Louboutin's trademark registration and damages. Louboutin now moves under Rule 65 of the Federal Rules of Civil Procedure for a preliminary injunction. For the reasons discussed below, Louboutin's motion is DENIED.

I. BACKGROUND ¹

Sometime around 1992 designer Christian Louboutin had a bright idea. He began coloring glossy vivid red the outsoles of his high fashion women's shoes. Whether inspired by a stroke of original genius or, as competitor YSL retorts, copied from King Louis XIV's red-heeled dancing shoes, or Dorothy's famous ruby slippers in “The Wizard of Oz,” or other styles long available in the contemporary market—including those sold by YSL Christian Louboutin deviated from industry custom. In his own words, this diversion was meant to give his line of shoes “energy,” a purpose for which he chose a shade of red because he regarded it as “engaging, flirtatious, memorable and the color of passion,” as well as “sexy.” (Mourot Decl. Ex. C (Docket No. 22–7) ¶ 3; id. (Docket No. 22–12) at 4.) In pursuit of the red sole's virtues, Louboutin invested substantial amounts of capital building a reputation and good will, as well as promoting and protecting Louboutin's claim to exclusive ownership of the mark as its signature in women's high fashion footwear.

Over the years, the high fashion industry responded. Christian Louboutin's bold divergence from the worn path paid its dividends. Louboutin succeeded to the point where, in the high-stakes commercial markets and social circles in which these things matter a great deal, the red outsole became closely associated with Louboutin. Leading designers have said it, including YSL, however begrudgingly. Film stars and other A-list notables equally pay homage, at prices that for some styles command as much as $1,000 a pair. And even at that expense, a respectable niche of consumers wears the brand, to the tune of about 240,000 pairs a year sold in the United States, with revenues of approximately $135 million projected for 2011. When Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities' feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once. For those in the know, cognitive bulbs instantly flash to associate: “Louboutin.” This recognition is acknowledged, for instance, at least by a clientele of the well-heeled, in the words of a lyrical stylist of modern times:

Boy, watch me walk it out ... Walk this right up out the house I'm throwin' on my Louboutins ... ²

And as an equally marked sign of Louboutin's success, competitors and black market infringers, while denying any offense, mimic and market its red sole fashion.

No doubt, then, Christian Louboutin broke ground and made inroads in a narrow market. He departed from longstanding conventions and norms of his industry, transforming the staid black or beige bottom of a shoe into a red brand with worldwide recognition at the high end of women's wear, a product visually so eccentric and striking that it is easily perceived and remembered.

The law, like the marketplace, applauds innovators. It rewards the trend-setters, the market-makers, the path-finding non-conformists who march to the beat of their own drums. To foster such creativity, statutes and common law rules accord to inspired pioneers various means of recompense and incentives. Through grants of patents and trademark registrations, the law protects ingenuity and penalizes unfair competition. In this case, the United States Patent and Trademark Office (“PTO”), perhaps swayed in part by the widespread recognition the red sole had already attained, invested Louboutin's brand with legal distinction in 2008 by approving registration of the mark. The issue now before the Court is whether, despite Christian Louboutin's acknowledged innovation and the broad association of the high fashion red outsole with him as its source, trademark protection should not have been granted to that registration.

The PTO awarded a trademark with Registration No. 3,361,597 (the “Red Sole Mark”) to Louboutin on January 1, 2008. The certificate of registration includes both a verbal description of the mark and a line drawing intended to show placement of the mark as indicated below:

Image 1 (1.45" X 1.67") Available for Offline Print

The verbal description reads:

FOR: WOMEN'S HIGH FASHION DESIGNER FOOTWEAR, IN CLASS 25 (U.S. CLS. 22 AND 39).

FIRST USE 0–0–1992; IN COMMERCE 0–0–1992.

THE COLOR(S) RED IS/ARE CLAIMED AS A FEATURE OF THE MARK.

THE MARK CONSISTS OF A LACQUERED RED SOLE ON FOOTWEAR. THE DOTTED LINES ARE NOT PART OF THE MARK BUT ARE INTENDED ONLY TO SHOW PLACEMENT OF THE MARK.

(Mourot Decl. Ex. A (Docket No. 22–1).)

Louboutin approached YSL in January 2011 to discuss several models of shoes offered by YSL that Louboutin claims use the same or a confusingly similar shade of red as that protected by the Red Sole Mark. YSL, a fashion house founded in 1962, produces seasonal collections that include footwear. According to YSL, red outsoles have appeared occasionally in YSL collections dating back to the 1970s. Louboutin takes issue with four shoes from YSL's Cruise ³ 2011 collection: the Tribute, Tribtoo, Palais and Woodstock models. Each of the challenged models bears a bright red outsole as part of a monochromatic design in which the shoe is entirely red (or entirely blue, or entirely yellow, etc.). An all-red version of the Tribute previously appeared in YSL's Cruise 2008 collection.

After YSL refused to withdraw the challenged models from the market, Louboutin filed this action asserting claims under the Lanham Act for (1) trademark infringement and counterfeiting, (2) false designation of origin and unfair competition and (3) trademark dilution, as well as state law claims for (4) trademark infringement, (5) trademark dilution, (6) unfair competition and (7) unlawful deceptive acts and practices. In response, YSL asserted counterclaims seeking (1) cancellation of the Red Sole Mark on the grounds that it is (a) not distinctive, (b) ornamental, (c) functional, and (d) was secured by fraud on the PTO, as well as (2) damages for (a) tortious interference with business relations and (b) unfair competition.

Louboutin now seeks a preliminary injunction preventing YSL from marketing during the pendency of this action any shoes that use the same or a confusingly similar shade of red as that protected by the Red Sole Mark. Hence, this case poses a Whitmanesque question. Paraphrased for adaptation to the heuristics of the law, it could be framed like this. A lawyer said What is the red on the outsole of a woman's shoe? and fetching it to court with full hands asks the judge to rule it is

[A] gift and remembrancer designedly dropt, Bearing the owner's name someway in the corners, that we may see and remark, and say Whose?⁴

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, even if it has gained enough public recognition in the market to have acquired secondary meaning. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL infringed the Red Sole Mark to warrant the relief that it seeks.

II. DISCUSSION

To obtain a preliminary injunction, Louboutin must establish “(1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor].” Monserrate v. N.Y. State Senate, 599 F.3d 148, 154 (2d Cir.2010) (emphasis added); Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 242 (2d Cir.2009).

A. TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION UNDER THE LANHAM ACT

To succeed on its claims for trademark infringement and unfair competition under the Lanham Act, Louboutin must demonstrate that (1) its Red Sole Mark merits protection and (2) YSL's use of the same or a sufficiently similar mark is likely to cause consumer confusion as to the origin or sponsorship of YSL's shoes. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir.2009); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir.2006).

The first question, therefore, is whether Louboutin's Red Sole Mark merits protection. The Lanham Act permits the registration of a “trademark,” which it defines as

any word, name, symbol, or device, or any combination thereof ... [,] which a person has a bona fide intention to use in commerce and applies to register ..., to identify and distinguish his or her goods ... from those manufactured and sold by others and to indicate the source of the goods.

15 U.S.C. § 1127. Louboutin's...