INTA Issues Statement Regarding Its Amicus Brief in Louboutin S.A. v. Yves Saint Laurent Red Sole Mark Case

To ensure that courts give proper recognition to rights conferred by trademark registrations under U.S. law and follow precedent protecting trademarks that also have aesthetic attributes, the International Trademark Association (INTA) filed an amicus brief on November 14, 2011 in a widely-watched case involving Christian Louboutin's registered Red Sole trademark for women's high-fashion designer footwear. 

The case, Christian Louboutin S.A. v. Yves Saint Laurent America Holding, Inc., filed in the U.S. District Court for the Southern District of New York, centers on Louboutin's claim that shoes Yves Saint Laurent produced entirely in red infringed and were likely to dilute the Red Sole mark.  INTA believes that in denying Louboutin's motion for a preliminary injunction, the District Court committed two key errors that, if uncorrected, could have adverse consequences for brand owners and consumers alike, making it harder to stop infringers and counterfeiters. 

In its brief in Louboutin's appeal to the U.S. Court of Appeals for the Second Circuit, INTA argued that the lower court disregarded the registration's description of the mark as a "lacquered red sole," mischaracterizing it broadly as "the color red," and failed to presume it a valid mark as the Lanham Trademark Act requires.  INTA also argued that the court's analogy to a "fanciful hypothetical" lawsuit by Picasso against Monet over the color blue ignored a long history of precedent that marks are legally protected even if consumers are also drawn to them for other reasons, like their aesthetic appeal or to show allegiance to a team.   

-John Crittenden

INTA's Brief: http://www.inta.org/Advocacy/Documents/INTALouboutinYSL.pdf

For further discussion of this case, see: Red Shoes Made for Walking but Not Trademarking? International Trademark Association Files Amicus Brief in Christian Louboutin/Yves Saint Laurent Red Mark Lawsuit