Louboutin/YSL Lawsuit on Hold Pending Appeal

Federal appellate court to decide appeal of the district court’s preliminary injunction ruling before it will address issue of canceling Louboutin’s trademark.

Christian Louboutin can breathe a sigh of relief — at least temporarily.

This story first appeared in the August 22, 2011 issue of WWD.  Subscribe Today.

New York federal Judge Victor Marrero, who is overseeing Louboutin’s lawsuit against rival Yves Saint Laurent, decided Friday to put the case on hold until the appellate court can rule on his preliminary injunction decision.

This comes on the heels of the court’s decision to deny Louboutin an injunction barring the sale of a red monochrome pump created by YSL. Filed in April, Louboutin alleged that YSL infringed upon its red-sole mark, which it obtained in 2008.

Part of the court’s recent ruling included speculation that Louboutin’s red-sole trademark should be canceled altogether. Soon after that decision was delivered, Louboutin filed an appeal.

On Friday, both sides appeared before the judge in a case management hearing, so that Louboutin could prove its mark is integral to its brand and that the color red is more than simply decorative.

Lawyers for Louboutin argued that it would be able to accomplish this in discovery.

Although the judge said he “was not entirely persuaded” discovery would clarify this issue, he felt it would make more sense for the Court of Appeals to wrestle with his recent ruling first, before he considered canceling the plaintiff’s trademark altogether.

“There is something different about fashion. In fashion, color is an ingredient,” the judge said, musing that designers use color just as a chef uses “salt and pepper,” or a writer uses the word “the.”

For now, those questions can be tabled. According to experts, the appellate court will likely put Louboutin’s case on the fast track, which in legal speak means a decision could come down in the next few weeks.