YSL drops 18-month lawsuit against Christian Louboutin as both sides claim they won battle of the red-soled shoes
14:52 GMT, 17 October 2012
Yves Saint Laurent
has dropped its lawsuit against Christian Louboutin, finally closing a
drawn-out case over who owns red-soles, for good.
The most recent court
decision satisfied the french
fashion house, which allows YSL to make monochromatic red shoes, where both
the soles and uppers are red.
2008 trademark protection over the red sole alone will continue to be upheld, a decision which lead YSL to cancel its six counterclaims against Louboutin.
Battle: The New York Court of Appeals ruled that the distinctive red soles of Christian Louboutin shoes are entitled to trademark protection
Red rival: YSL say they are 'extremely
satisfied' that they can continue to produce 'monochrome' versions of
their Tribtoo platform pumps
In court documents filed Tuesday, YSL
said it 'has decided that these claims are no longer worth pursuing…
thus resolving what remains of this litigation and allowing the parties
to close the book on this litigation and refocus their attention on
their respective fashion creations.'
The case began in April 2011, when Christian Louboutin sued YSL for using red soles on the bottom of its red pumps.
Louboutin demanded $1million in damages, which was based on a trademark granted to Louboutin in 2008 for red soles.
Yet the case was subsequently
referred to the appeals court after a New York district judge ruled that
Louboutin had exclusive rights to red soles, but dismissed claims that YSL's all-red shoes were an infringement of Louboutin's trademark.
'YSL has decided to refocus energies on its business and creative designs'
Last month, the case was mostly resolved when the Court of Appeals ruled that Louboutin’s trademark should not be enforceable on red-sole shoes with matching red uppers.
YSL filed a request to drop the rest
of its counterclaims without prejudice against Christian Louboutin,
according to a brief issued by YSL's lawyer, David Bernstein.
'Without prejudice means we have the
right to re-file claims to cancel the trademark if Louboutin challenges
us again with respect to our designs,' he told WWD.
Both sides claim victory.
Seeing red: In April 2011 Christian Louboutin sued YSL for using red soles on the bottom of its red pumps, demanding $1million in damages
Victory: Last year Zara won the right to sell their red-soled heels (left) which Louboutin said copied their Yo Yo slingbacks (right)
Louboutin's lawyer, Harley Lewin, telling Reuters that the ruling enables the company
'to protect a life's work… embodied in the red sole found
on his women's luxury shoes'.
And in a statement released Tuesday evening, Louboutin added that the
ruling 'reaffirm[s] the validity of our trademark rights on the red
sole in the U.S. [which] deprived Yves Saint Laurent of its claim for
cancellation of our trademark.'
Mean, Mr Bernstein, YSL's lawyer,
told WWD: 'Now that the Court of Appeals has definitively ruled for Yves
Saint Laurent and has dismissed Christian Louboutin’s claims, Yves
Saint Laurent has decided to end what was left of the litigation and
refocus its energies on its business and its creative designs.'
Christian Louboutin has applied glossy vivid red to its soles since 1992, the iconic shoes selling for upwards of $700 a pair.
year Louboutin sued lost a lawsuit against Spanish brand Zara after
claiming that an open- toed red-soled shoe it was selling for 40 was
similar to its Yo Yo style.
French court ruled that Zara’s cut-price shoe could not be confused
with that made by the high-end designer and the Cour de Cassation – the
final court of appeal – upheld the decision.
A LEGAL FIRM EXPLAINS THE COPYRIGHT RULING
law recognises that, in the right context, a single colour can become
distinctive of particular goods or services – such as purple for
Cadbury's chocolate, or green for BP service stations.
it is all about context – in the right situation, red might be
associated exclusively with London buses, but nobody would think a red
pillar box was connected with London buses.
the New York court held that, in the right situation, a lacquered red
sole on footwear was associated exclusively with Christian Louboutin and
they were entitled to trade mark protection – but it also held that it
was the flash of the red sole (on a shoe of a contrasting colour) that
was an important factor in making this association.
the New York court held that Christian Louboutin could not prevent YSL
from selling their monochrome red shoe (which, even though it had a red
sole, did not give the impression of a shoe with a red flash).
as an overall comment, a single colour such as that used for the sole
of a Christian Louboutin can distinguish the goods from those of
competitors – but whether it will depends on the context in which it is
used. In this case, as part of a monochrome red shoe, it was not
Ian Wood, Partner in Intellectual Property at Charles Russell LLP