Satomi Aki is a JD candidate at Osgoode Hall Law School.
On August 10, 2011, the US District Court denied Christian Louboutin S.A.’s motion for an preliminary injunction against Yves Saint Laurent (YSL) to stop marketing the shoes that allegedly infringe Louboutin’s trademarked red lacquered heel pending the outcome of the trademark infringement lawsuit that was filed in April 2011 (For more see Canada Fashion Law blogger and Osgoode alum Ashlee Froese’s IPilogue post).
In order to get the injunction, the onus was on Louboutin, the plaintiff, to 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”.
Although the plaintiff’s registered trademark, which was granted in January 2008, gave rise to a rebuttable statutory presumption that the mark is valid pursuant to s. 1057(b) of The Lanham Act, Judge Victor Marreo was clearly unconvinced; he rejected Louboutin’s motion on the basis that Louboutin did not demonstrate a sufficient likelihood that the red sole mark merits protection under the Act. Judge Marreo reasoned that the red sole mark was simply too broad in that it could encompass all styles of shoes and include several shades of red. In addition, he added that individual monopolies on colour do not serve well in fashion design: “the law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise”. However, Judge Marreo did note that an exception to this rule is the use of colour in distinct patterns or combinations of shades that are an identifiable mark in goods (examples include the Louis Vuitton monogram and the Burberry check pattern).
In response to the decision, Louboutin’s US attorney Harvey Lewin said “We’re going to fight like hell”. They have already appealed the decision.
The decision puts a damper on Louboutin’s case against YSL. Moreover, it takes away from Louboutin’s greater crusade against all counterfeit Louboutin shoes. In the last several years, Louboutin has intensified its campaign against copycats; in May 2010, the company established Stop Fake Louboutins, a website that includes a search engine that distinguishes legitimate online Louboutin retailers from contraband websites. More recently, in April 2011, Louboutin sued Carmen Steffans, a Brazilian footwear company, in France for selling shoes that also infringe on the signature red sole shoes.