Luxury shoe designer Christian Louboutin is still cooling his
red-lacquered heels waiting for the 2nd Circuit Court of Appeals
to rule in his trademark battle with Yves Saint Laurent. But
fashion stops for no man. Since the expedited appeal over his
red soles was argued back in January, closets worth of red-soled
Louboutin knockoffs have been unboxed by customs officials in
the Port of Los Angeles, his lawyer, Harley Lewin of McCarter &
English, said.
The issue at the 2nd Circuit is whether U.S. District Judge
Victor Marrero of Manhattan erred in a whimsical opinion in August 2011, in which he not only denied Louboutin's request
that YSL be barred from selling red-soled shoes but also said
that the Patent and Trademark Office shouldn't have awarded
Louboutin a trademark on red soles in the first place. The
appeals panel of Senior Judge Chester Straub and judges Jose
Cabranes and Debra Livingston heard arguments from Lewin and YSL
counsel David Bernstein of Debevoise & Plimpton on Jan.
24. Though the judges didn't lack for questions during the argument, they've been quiet ever since.
The Louboutin company, according to Lewin, had expected a
decision by now and has been "treading water" in enforcing its
usual trademark protection procedures against fakes and
"no-name" shoes with red soles. In the last six weeks, Lewin
said, he has seen a huge increase in notifications from U.S.
customs agents, alerting him about imported shoes with soles
similar to Louboutin's trademarked red bottoms. Some cartons,
Lewin said, contained more than 10,000 pairs of shoes, which are
likely intended for shopping mall chain stores or other retail
outlets.
He attributed the rise, at least partially, to the long wait
for a ruling from the 2nd Circuit. "Everyone was thinking a
decision (would) come out pretty quickly," he said. "When it
(didn't) come out quickly, these copycats ... ordered goods in
order to make the fall season." Adding to the problem, Lewin
said, is a misperception that Marrero's opinion invalidated
Louboutin's trademark. Though Marrero's order denied Louboutin's
injunction request and ordered the company to show cause as to
why its trademark shouldn't be canceled, the mark wasn't ever
actually cancelled, and the parties argued the issue of when
colors should be trademarked to the 2nd Circuit.
"We've been on the head of a pin, fearful this was going to
take place, and it has," Lewin said, referring to the upswing in
allegedly infringing imports. He and Louboutin's trademark team,
meanwhile, have delayed filing any new infringement suits and
are instead calling alleged wrongdoers and sending
cease-and-desist letters.
YSL, on the other hand, doesn't seem to mind the wait for a
ruling from the appeals court -- and says Louboutin has only
itself to blame for the delay. The fashion house that brought
you Le Smoking jacket is continuing to use any color the muses
prompt, including red. "It's business as usual," said
Debevoise's Bernstein. He also said that if Louboutin hadn't
sought an interlocutory appeal of Marrero's injunction ruling,
the parties could have been at trial right now. "Louboutin is
wasting time having this appeal," he said.
"That the court did not issue a quick decision just confirms
what Judge Cabranes said at the end of the oral argument -- that
the court was not going to issue an injunction," Bernstein
continued. "We expect the case to be returned to Judge Marrero
so that we can finally get on with discovery and our motion for
summary judgment."
Lewin said he's "guardedly confident of the outcome on
appeal" and is hoping that time is on Louboutin's side, at least
in the 2nd Circuit's consideration. "My thought was and remains
that they're taking time because they're writing a long and
well-considered decision," he said.
Like designers throughout Manhattan, perhaps the 2nd Circuit
is waiting to make its big red-soled splash during New York
Fashion Week in September.
(Reporting by Erin Geiger Smith)
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