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YSL Files Response in Louboutin Appeal

A hearing date has been set for Jan. 24 for oral argument before the federal court of appeals in Manhattan.

NEW YORK — Lawyers for Yves Saint Laurent made a federal court of appeals deadline to file its response in the Christian Louboutin red-sole trademark appeal before yearend.

This story first appeared in the December 28, 2011 issue of WWD.  Subscribe Today.

The YSL attorneys filed their appellate brief on Tuesday.

The dispute began in April, when Louboutin sued YSL in a New York federal court in Manhattan, claiming that YSL’s red pump violated its red-sole trademark. In August, the presiding judge denied Louboutin’s request for a preliminary injunction and instead questioned the validity of the trademark, which Louboutin obtained in 2008.

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District court Judge Victor Marrero concluded that no one designer should have a “monopoly” on any color. He also rejected Louboutin’s arguments that infringing on its trademark would cause “irreparable harm” and that YSL’s shoe caused “consumer confusion.”

Louboutin’s attorneys appealed the decision and in October filed their appellate brief focused on Judge Marrero’s “errors of law” in determining that Louboutin’s red outsole mark was invalid.

In the court document filed Tuesday, YSL argued that Louboutin cannot overcome the “formidable hurdle” necessary to obtain a reversal of the lower court’s denial of the request for a preliminary injunction. YSL said appellate review of the denial is based on an abuse of discretion, a deferential standard that shouldn’t be disturbed so long as it “falls within a range of permissible decisions.” It argued that functionality in trademark cases has long been treated as a question of fact reviewed under the clear error standard. YSL also cited a case in which a court determined that when there are two permissible views of the evidence, the fact finder’s “choice between them cannot be clearly erroneous.”

YSL also argued that there were other reasons why the lower court’s decision should be upheld, such as Louboutin’s inability to show “irreparable harm” and a failure to establish a secondary meaning for the red-colored trademark.

What seems key, however, is whether there’s even enough of a record of evidence and documents for the district court to rule as it did.

As expected, that’s a key point in both the Louboutin and YSL briefs on file with the appellate court. Louboutin said the undeveloped record precluded any definitive ruling on the functionality issue. YSL, in its brief, argued that Louboutin’s admission of the lack of a record should mean that substantive appellate review should wait until a final decision is made on the merits, one based on a fully developed transcript of the issues and documents presented before the court.

Harley I. Lewin, a partner at McCarter & English, which represents Louboutin, said, “We have taken a quick review [of the brief and], there are no surprises here. YSL essentially is mirroring the arguments it used at the lower level, which is entirely expected.”

According to Lewin, a hearing date has been set for Jan. 24 for oral argument in the afternoon before the Second Circuit Court of Appeals in Manhattan.

“We are pretty confident our brief is persuasive. Nonetheless, it remains the decision of the Court of Appeals at the end of the day,” Lewin said.