Update on the Red Shoes Controversy: Christian Louboutin v. Yves Saint Laurent

Update on the Red Shoes Controversy: Christian Louboutin v. Yves Saint Laurent

Christian Louboutin SA et al v. Yves Saint Laurent America, Inc et al., 1:11cv2381 (NYSD April 7, 2011)

In April, Christian Louboutin sued Yves Saint-Laurent for trademark infringement, claiming that Yves Saint-Laurent's line of shoes infringed Louboutin's distinctive red soles. As stated in the complaint:

In 2007, Plaintiff Christian Louboutin applied to register his red sole trademark with the U.S. Patent and Trademark Office. On January 1, 2008, the U.S. Patent and Trademark Office awarded a federal trademark registration to Mr. Louboutin on the Principal Register on the ground that the Red Sole Mark had acquired distinctiveness based on its many years of continuous use in commerce, the considerable media attention featuring the Red Sole Mark, consumer association of the Red Sole Mark with Louboutin Footwear, and the considerable sales of Louboutin Footwear bearing the Red Sole Mark.

Yves Saint-Laurent counterclaimed, seeking the mark's cancellation. Yves Saint-Laurent's first amended counterclaim asserted:

These counterclaims arise from Louboutin's assertion of trademark rights that are based on fraudulently obtained, invalid trademark registrations (the "Contested Marks"). Louboutin claims to have the exclusive right to use red outsoles on women's footwear - even on shoes, like all the YSL models challenged in this lawsuit, that are entirely red. Louboutin's attempt to monopolize the use of red outsoles - even to the extent of claiming that no other designer can make an all-red shoe - is unsupported by law, defies common sense and would unduly restrict the design options available to competitors in this market.

Update: Motions currently pending before the court:

Louboutin's Motion for Preliminary Injunction Louboutin's Motion to Dismiss the Counterclaim
Response Response
Reply Reply
Request for Judicial Notice in Support


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