My September 5, 2012 article, “2nd Circuit Says Yes to Louboutin’s Red Sole Trademark,” poses the question: “is this decision a true victory for Louboutin or YSL?”  Tamlin H. Bason’s article in Patent, Trademark & Copyright Law Daily seems to suggest that both sides are claiming victory. 

******

Reproduced with permission from Patent,Trademark & Copyright Law Daily, (Sept. 12, 2012). Copyright 2012 by The Bureau of National Affairs, Inc. (800-372-1033) <http://www.bna.com>

By Tamlin H. Bason 

Both parties claimed victory after the U.S. Court of Appeals for the Second Circuit Sept. 5 determined that Christian Louboutin’s trademark on red soled shoes was valid and that Yves Saint Laurent’s monochrome red shoe did not infringe the registered mark. Christian Louboutin S.A. v. Yves Saint Laurent America Holding Inc., 2d Cir., No. 11-3303-cv, 9/5/12).


Continue Reading Both Sides Claim Victory as 2nd Cir. Upholds Louboutin’s Mark, Says YSL Didn’t Infringe

Right on time for New York’s Fashion Week, the United States Court of Appeals for the Second Circuit ruled today that “Louboutin’s trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe” has acquired secondary meaning as a distinctive source-identifier for Louboutin’s luxury brand.  More than one year after a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision invalidating Louboutin’s red sole trademark, the Second Circuit has rendered Christian Louboutin’s iconic “Chinese red” soles to be a valid, protectable, and enforceable trademark.


Continue Reading 2nd Circuit Says Yes to Louboutin’s Red Sole Trademark

Reposted from DLA Piper’s Law à la Mode Edition 4 – Winter 2011

By:  Michael K. Barron, Sarah Phillips and Nadea Taylor (Boston and London)
“AdWords,” the paid, subscription-based Google referencing service which allows users to advertise their companies alongside Google search results, has recently been the subject of much legal scrutiny.  In late September, the European Court of Justice (ECJ) gave a preliminary ruling on questions referred to it by the English High Court in the case between Interflora and Marks & Spencer (“M&S”), regarding the purchase by M&S of the Google AdWord “Interflora” and other similar AdWords. 
In answering the questions referred to it, the ECJ repeated much of the recent jurisprudence in this area, in particular from the Google France case.  Previous cases established that purchasing a third parties’ trademark as an AdWord would only amount to trademark infringement if such use would have an adverse effect on one of the functions of the trademark.  
The ECJ gave the following guidance on how national courts should assess whether the use by a third party of a sign identical with a trademark in relation to identical goods or services has an adverse affect on one of the functions of the trademark:

By: Radiance A. Walters (Washington, DC)

Red-soled stilettos for only $39.99?  French luxury shoe designer Christian Louboutin continues the fight to protect its iconic “Chinese red” soles.  This past August, a U.S. federal district court denied a preliminary injunction against Yves Saint Laurent (YSL) and issued a decision that questioned the validity of Louboutin’s red-sole trademarkOn October 17, 2011, Louboutin’s lawyers appealed that decision to the U.S. Court of Appeals for the Second Circuit.  Shortly thereafter, premier jeweler Tiffany & Co. filed an amicus brief in support of Louboutin, furthering the fight to protect color as a trademark.  The International Trademark Association (INTA) also filed an amicus brief on November 14, 2011 taking the position that the District Court erred in rejecting the U.S. presumption of validity attendant to Louboutin’s federal trademark registration.  Further, INTA argues that the District Court incorrectly construed the Louboutin’s registration as a broad claim to the color red instead of the narrower claim to “lacquered red sole on footwear,” which is what the registration actually covers.  The Court of Appeals is left with the daunting task of determining whether and when color may function as merely a design element versus a source-identifying trademark.  


Continue Reading For the Love of Red . . . Soles The Louboutin – YSL Shoe Saga Continues