"Heel"ing Their Wounds: Yves Saint Laurent Moves On From Battle With Louboutin - Fordham Intellectual Property, Media & Entertainment Law Journal
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“Heel”ing Their Wounds: Yves Saint Laurent Moves On From Battle With Louboutin

“Heel”ing Their Wounds: Yves Saint Laurent Moves On From Battle With Louboutin

The dramatic saga between Louboutin and Yves Saint Laurent is coming to an end, it seems.

Since April 2011, the two fashion empires have fought over the right to sell shoes with red-colored soles. This past September, the New York Federal Court of Appeals came out with a ruling that was somewhat of a compromise. The Court determined that Louboutin was entitled to a trademark for the famous red sole, but that it could not stop Yves Saint Laurent and others from selling monochromatic red shoes, the very thing that provoked Louboutin to sue. Predictably, both parties declared victory after the ruling was announced. Although they seemed content in the ruling, there remained counterclaims by Yves Saint Laurent that threatened to drag the legal battle on.

Yves Saint Laurent has decided to move on and is now seeking to dismiss the suits it brought against Louboutin. Representation for the company has asked a federal judge to dismiss the claims, effectively ending the lawsuit Louboutin originally brought against Yves Saint Laurent. In the filing to the Court, Yves Saint Laurent expressed a desire to move forward from the ruling and refocus on creating designs. (Yves Saint Laurent also happened to mention in the filing that the Court definitely had rejected Louboutin’s claims, despite widespread interpretation that both parties partially won.) Yves Saint Laurent’s decision to walk away comments on the perception of the ruling itself.

The apparent conclusion of the suit allows for brief reflection over the case. What does dismissal of the counterclaims tell the public? Yves Saint Laurent’s desire for dismissal of the counterclaims leads to the inference that the company is either a) satisfied with the ruling, or b) unwilling to pursue further legal action. It is likely that both are the case in this matter.

Despite claims to the contrary, each of the parties has reason to be content. In a shortsighted way, Yves Saint Laurent won the right to produce and sell the monochromatic red shoes that sparked the initial controversy. The court justified Yves Saint Laurent’s production of the shoes, and simultaneously blessed continued production. Put simply, Yves Saint Laurent can continue to sell the shoes it so vehemently defended. But from a legal perspective, Yves Saint Laurent has drawn the short end of the stick (or heel?). Significantly, the Court upheld Louboutin’s trademark for red-soled shoes, consequently opening the color trademark door wider than it had been before (Qualitix v. Jacobson had already established that color could meet the legal standards for a trademark.) Louboutin is now able to legally prevent other high-end shoemakers from selling red-soled shoes with an upper in a contrasting color. The ruling increased the value of Louboutin’s already-expensive red-soled heels.

Although cases can certainly last for far longer in the abyss of the legal system, it is likely that both Louboutin and Yves Saint Laurent are exhausted. Or, at least, their lawyers are. The companies have spent the better part of a year championing their arguments in court and in the media. For better or for worse, the case garnered widespread attention and required large amounts of energy. It is not hard to understand why Yves Saint Laurent is so willing to walk away.

Yves Saint Laurent’s decision to seek dismissal for its counterclaims against Louboutin is not without significance. In fact, it provides a lens within which the Court of Appeals’ ruling can be seen. At the very least, Yves Saint Laurent is content with what it gained from the case, and certainly, is ready to strut away in its monochromatic red shoes.

Brooke Luxenburg