Louboutin doesn’t own red soles, judge says

Failure to grant the injunction, which Louboutin argued was vital to protect its trademark for lacquered red soles, opens the door for YSL and other brands to retail red-soled shoes without fear of effective legal action from Louboutin.

‘Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning,’ Judge Victor Marrero wrote in his ruling.

Louboutin’s lawyer, Harley Lewin of McCarter & English LLP, told news sources that his client was ‘profoundly disappointed’ in the judge’s decision.

‘While he acknowledges the fashion industry at large has recognized the Louboutin Red Sole as a trademark source indicator, he has concluded that the fashion industry needs to use colors on outsoles without restriction…. We will evaluate all the alternatives available in the days to come.’

YSL’s representation, David Bernstein of Debevoise & Plimpton LLP, struck a triumphant note.

‘We're gratified that Judge Marrero has agreed with YSL that no designer should be allowed to monopolize a single color for an article of apparel,’ he said. ‘[T]his is a trademark registration that never should have issued, and we are pleased that Judge Marrero has agreed that the registration likely should be cancelled.’

The decision is the first ruling in what legal experts expect to be a drawn-out trial that could overturn a trademark granted to Louboutin in 2008. Should YSL prevail, the brand’s lawyers said that they will pursue counterclaims against