YSL drops 18-month lawsuit against Christian Louboutin as both sides claim they won battle of the red-soled shoes

Battle: The New York Court of Appeals ruled that the distinctive red soles of Christian Louboutin shoes are entitled to trademark protection

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.
However Louboutin's 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
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.

Last 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.
A 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

The 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.

But 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.

So 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.

So 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).

So, as an overall comment, a single color 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 distinctive.'

Ian Wood, Partner in Intellectual Property at Charles Russell LLP

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