Louboutin Wins Trademark but Loses Case against YSL

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In fashion circles, fans and owners of Louboutin’s famed red-lacquered sole high-heeled shoes can rest easy; a 2nd Circuit Court of Appeals 31-page opinion states that under some special circumstances colors in the fashion industry can be trademarked and Louboutin shoes meet those special requirements.

However, the opinion also makes clear that YSL’s all-red shoes, which Louboutin objected to, do not infringe Louboutin’s trademark.  The decision, made last Wednesday, overturns a previous ruling made by U.S. District Judge Victor Marrero which stated that a single colour should not merit trademark protection.   Marrero justified his decision stating: “there is something unique about the fashion world that militates against extending trademark protection to a single color.”

Both parties in this case are claiming victory, with YSL lawyer David Bernstein of Debevoise and Plimpton claiming “total victory” as the opinion will dismiss infringement claims, and Louboutin counsel Harley Lewin of McCarter & English stating that while YSL was “off the hook” for infringement, Louboutin emerged as the winner retaining its trademark for red soles.

The opinion also noted that copyright and trademark laws do not adequately protect fashion design.  The recent seizure of 20,000 fake Louboutin shoes was mentioned in the document, and fashion lawyer Judith Roth of Schiff Hardin spoke about the case to the media.

“You almost get the sense that the court got it,” she said, also adding that protection is very important for fashion designers.