By  on August 10, 2011

NEW YORK — A Manhattan federal judge denied Christian Louboutin a preliminary injunction Wednesday that would have barred Yves Saint Laurent from selling red-soled shoes from its 2011 cruise collection, arguing that restrictions on a single color could stifle both art and commerce.

Louboutin sued YSL in the Southern District of New York in April in an effort to protect its 2008 red-sole trademark.

“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,” wrote Judge Victor Marrero in his ruling.

“I think the court is completely wrong,” said Louboutin attorney Harley Lewin of McCarter & English. “The court essentially indicated that it does not believe that a single color can be a trademark in the fashion industry. We’re disheartened.”

Lewin said the company was assessing its options and acknowledged that Louboutin’s trademark was at risk.

“YSL is thrilled that Judge Marrero agreed with us that no designer should be allowed to hold a monopoly on a primary color for an article of apparel,” said the company’s attorney, David Bernstein of Debevoise & Plimpton LLP.

Bernstein said YSL would ask the court for a summary judgment, which could result in Louboutin’s trademark being canceled. He also said YSL would continue to press its counterclaims, which charge that Louboutin interfered with YSL’s ability to sell its shoes by prompting department stores to return some inventory to the brand.

Judge Marrero was complimentary of the designer’s accomplishments, even as he denied the requested injunction.

“Sometime around 1992, designer Christian Louboutin had a bright idea,” Marrero wrote of the designer’s famed red-soled shoes, which he noted sell 240,000 pairs annually in the U.S., with sales this year projected at $135 million.

But Marrero posed a hypothetical lawsuit in which Pablo Picasso attempts to prevent Claude Monet from displaying or selling his water lilies painting because it uses an indigo too close to “the color of melancholy” that defined Picasso’s Blue Period.

“Fashion designers and painters both regard themselves, and others regard them, as being engaged in labors for which artistic talent, as well as personal expression as a means to channel it, are vital,” he wrote. “Moreover, the items generated by both painters and fashion designers acquire commercial value as they gain recognition.”

But Marrero said placing a color off limits would unduly hinder commerce, competition and art and that both painters and designers require artistic freedom and fair competition to survive.

“In both forms, the greatest range for creative outlet exists with its highest, most vibrant and all-encompassing energies where every pigment of the spectrum is freely available for the creator to apply, where every painter and designer in producing artful works enjoys equal freedom to pick and choose color from every streak of the rainbow,” he said.

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