Christian Louboutin S.A. et al v. Yves Saint Laurent America, Inc. et al

Filing 39

ANSWER to 28 Amended Counterclaim,. Document filed by Christian Louboutin S.A., Christian Louboutin, L.L.C., Christian Louboutin.(Bromberg, Lee)

Harley I. Lewin
McCarter & English, LLP
245 Park Avenue, 27th Floor
New York, NY 10167
Tel: [phone]
Fax: [phone]
[e-mail]
Lee Carl Bromberg
McCarter & English, LLP
265 Franklin Street
Boston, MA 02110
Tel: [phone]
Fax: [phone]
[e-mail]
Attorneys for Plaintiffs
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
CHRISTIAN LOUBOUTIN S.A.; CHRISTIAN
LOUBOUTIN, L.L.C.; and CHRISTIAN
LOUBOUTIN,
Plaintiffs/Counterclaim-Defendants,
v.
YVES SAINT LAURENT AMERICA, INC.;
YVES SAINT LAURENT AMERICA
HOLDING, INC.; YVES SAINT LAURENT
S.A.S.; YVES SAINT LAURENT (an
unincorporated association); JOHN AND JANE
DOES A-Z (UNIDENTIFIED); and XYZ
COMPANIES 1-10 (UNIDENTIFIED),
Defendants/Counterclaim-Plaintiffs.

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Civil Action No.: 11 Civ. 2381 (VM)

ECF Case

ANSWER TO FIRST
AMENDED COUNTERCLAIMS

Plaintiffs/Counterclaim-Defendants Christian Louboutin S.A., Christian Louboutin,
L.L.C. and Christian Louboutin (collectively, “Louboutin”), answer Defendants/CounterclaimPlaintiffs Yves Saint Laurent America, Inc., Yves Saint Laurent America Holding, Inc., and

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Yves Saint Laurent S.A.S.’s (collectively, “YSL”) First Amended Counterclaims (“Amended
Counterclaims”) as follows (the headings below track those headings used by Defendants):
AMENDED COUNTERCLAIMS
Introduction
1.

Louboutin denies the allegations contained in Paragraph 1 of the Amended

Counterclaims.
2.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of allegations concerning the “use of red outsoles for their ornamental
qualities” by YSL and third parties but denies that the colors of any YSL shoes have received
significant attention in any media in the United States and denies the remaining allegations
contained in Paragraph 2 of the Amended Counterclaims.
3.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations relating to the period of time that YSL has sold shoes with
red outsoles except admits that any such sales by YSL took place well after the adoption, use and
extraordinary growth of the Red Sole trademark by Louboutin and denies the remaining
allegations contained in Paragraph 3 of the Amended Counterclaims.
4.

Louboutin denies the allegations contained in Paragraph 4 of the Amended

Counterclaims.
5.

Louboutin denies the allegations contained in Paragraph 5 of the Amended

Counterclaims.
6.

Louboutin denies the allegations contained in Paragraph 6 of the Amended

Counterclaims.

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7.

Louboutin denies the allegations contained in Paragraph 7 of the Amended

Counterclaims.
8.

The allegations contained in Paragraph 8 of the Amended Counterclaims purport

to describe the nature of the relief sought by YSL, and therefore no responsive pleading is
required. To the extent Paragraph 8 makes factual allegations, they are denied.
Jurisdiction and Venue
9.

Louboutin admits the allegations contained in Paragraph 9 of the Amended

Counterclaims.
10.

Louboutin admits the allegations contained in Paragraph 10 of the Amended

Counterclaims.
11.

Louboutin admits the allegations contained in Paragraph 11 of the Amended

Counterclaims.
The Parties
12.

Louboutin admits the allegations contained in Paragraph 12 of the Amended

Counterclaims.
13.

Louboutin admits the allegations contained in Paragraph 13 of the Amended

Counterclaims.
14.

Louboutin admits that Counterclaim-Plaintiff has its principal place of business at

7, Avenuue Geoge V, Paris 75008, France, and is without knowledge or information sufficient to
form a belief as to the truth or falsity of the remaining allegations contained in Paragraph 14 of
the Amended Counterclaims.
15.

Louboutin admits the allegations contained in Paragraph 15 of the Amended

Counterclaims.

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16.

Louboutin admits the allegations contained in Paragraph 16 of the Amended

Counterclaims.
17.

Louboutin admits the allegations contained in Paragraph 17 of the Amended

Counterclaims.

The YSL Brand
18.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 18 of the Amended Counterclaims.
19.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 19 of the Amended Counterclaims.
20.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 20 of the Amended Counterclaims.

YSL’s Historical Use of Red Outsoles
21.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 21 of the Amended Counterclaims,
except denies any use by YSL of a red sole was frequent and/or that sale by YSL of shoes with
red soles similar to those used by Louboutin were other than minimal and/or infringing..
22.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 22 of the Amended Counterclaims,
except denies that any sales of YSL shoes in the United States with outsoles that infringed the
Louboutin Red Sole mark were numerous either in terms of models or pairage being at best,

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minimal and in large measure of colors that were not similar to that color forming Louboutin’s
Red Sole mark..
23.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 23 of the Amended Counterclaims,
except denies, on information and belief, that either the Tai Tai or Lotus model shoes were sold
to consumers in the United States and denies to the extent implicated, that the alleged runway
show of YSL took place in the United States.
24.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 24 of the Amended Counterclaims,
except denies that “[t]here are numerous other examples of YSL shoes with red outsoles
promoted and/or sold in the United States” denies that the particular shoe shown was sold in the
United States to any degree, and denies that any such runway show of YSL took place in the
United States.
25.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 25 of the Amended Counterclaims,
except denies any implication that by reason of any shoe of YSL being in an “offered” collection
that shoe was sold in the United States in other than minimal amounts and admits that the YSL
shoes as pictured infringe upon and were released for sale after issuance of the Red Sole mark to
Louboutin.
26.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 26 of the Amended Counterclaims,
except specially denies that YSL “monochrome” shoes contain the same red color from upper to
outsole.

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27.

Louboutin denies the allegations contained in Paragraph 27 of the Amended

Counterclaims.

Third Party Use of Red Outsoles
28.

Louboutin is without knowledge or information sufficient to form a belief as to

the truth or falsity of the allegations contained in Paragraph 28 of the Amended Counterclaims,
except denies that any third party user of a red sole has received broad media coverage in the
United States, or is well known to the public in the United States, except Louboutin.

Louboutin’s Contested Marks
29.

Louboutin denies the allegations contained in Paragraph 29 of the Amended

Counterclaims.
30.

Louboutin admits the allegations contained in Paragraph 30 of the Amended

Counterclaims, except denies that the reason Mr. Louboutin abandoned the first application was
to avoid responding to the USPTO’s office action and that Louboutin’s primary cause of action
is based only on U.S. Reg. No. 3,361,597 and denies that U.S. Reg. No. 3,376,197 is limited to
red outsoles on footwear.
31.

Louboutin denies the allegations contained in Paragraph 31 of the Amended

Counterclaims.
32.

Louboutin denies the allegations contained in Paragraph 32 of the Amended

Counterclaims.

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33.

Louboutin admits that Mr. Louboutin designed and sold shoes with blue outsoles,

silver outsoles and pink outsoles on a “trial” basis, or for other designers but denies the
remaining allegations contained in Paragraph 33 of the Amended Counterclaims.

Louboutin’s Bad Faith and Unlawful Interference with YSL’s Business
34.

Louboutin admits that it contacted YSL regarding the Tribute, Tribtoo, Palais and

Woodstock models in January 2011 and that YSL refused to stop selling Tribute, Tribtoo, Palais
and Woodstock models bearing red outsoles and denies the remaining allegations contained in
Paragraph 34 of the Amended Counterclaims.
35.

Louboutin admits that it sent a letter to YSL on March 14, 2011 and that it filed

its Complaint and motion papers on April 7, 2011 and denies the remaining allegations contained
in Paragraph 35 of the Amended Counterclaims.
36.

Louboutin denies the allegations contained in Paragraph 36 of the Amended

Counterclaims.
37.

Louboutin denies the allegations contained in Paragraph 37 of the Amended

Counterclaims, except admits on information and belief, it was advised by certain department
stores in the United States that they had independently elected to return inventory of the
infringing YSL shoes to YSL.
38.

Louboutin denies the allegations contained in Paragraph 38 of the Amended

Counterclaims.

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Answer to the First Counterclaim
Cancellation of Marks under 15 U.S.C. §§ 1119, 1052(f) [Lack of Distinctiveness]
39.

Louboutin repeats and realleges with the same force and effect as though fully set

forth here in full, its answer to each and every allegation contained in each paragraph
incorporated by reference in Paragraph 39 of the Amended Counterclaims.
40.

Louboutin denies the characterization of its United States Trademark

Registrations as “Contested Marks,” denies that they were fraudulently obtained or are invalid,
admits it is asserting trademark rights in and to Registration No. 3,361,597, only, and denies it is
asserting trademark rights to application Serial No. 76/261,832, which was withdrawn, admits
the assertion of trademark rights extends to bright red lacquer applied to the outsole of women’s
luxury shoes and denies the remaining allegations in Paragraph 40 of the Amended Complaint..
41.

Louboutin denies the allegations contained in Paragraph 41 of the Amended

Counterclaims.
42.

Louboutin denies the allegations contained in Paragraph 42 of the Amended

Counterclaims.
43.

Louboutin denies the allegations contained in Paragraph 43 of the Amended

Counterclaims.
44.

Louboutin denies the allegations contained in Paragraph 44 of the Amended

Counterclaims.

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Answer to the Second Counterclaim
Cancellation of Marks under §§ 15 U.S.C. 1119, 1052(f) [Ornamental]
45.

Louboutin repeats and realleges with the same force and effect as though fully set

forth here in full, its answer to each and every allegation contained in each paragraph
incorporated by reference in Paragraph 45 of the Amended Counterclaims.
46.

Louboutin denies the characterization of its United States Trademark

Registrations as “Contested Marks,” denies that they were fraudulently obtained or are invalid,
and admits the remaining allegations contained in Paragraph 46 of the Amended Counterclaims.
47.

Louboutin denies the allegations contained in Paragraph 47 of the Amended

Counterclaims.
48.

Louboutin denies the allegations contained in Paragraph 48 of the Amended

Counterclaims.
49.

Louboutin denies the allegations contained in Paragraph 49 of the Amended

Counterclaims.
50.

Louboutin denies the allegations contained in Paragraph 50 of the Amended

Counterclaims.

Answer to the Third Counterclaim
Cancellation of Marks under 15 U.S.C. §§ 1119, 1064(3) [Fraud on the USPTO]
51.

Louboutin repeats and realleges with the same force and effect as though fully set

forth here in full, its answer to each and every allegation contained in each paragraph
incorporated by reference in Paragraph 51 of the Amended Counterclaims.
52.

Louboutin denies the allegations contained in Paragraph 52 of the Amended

Counterclaims.

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53.

Louboutin denies the allegations contained in Paragraph 53 of the Amended

Counterclaims.
54.

Louboutin denies the allegations contained in Paragraph 54 of the Amended

Counterclaims.
55.

Louboutin denies the allegations contained in Paragraph 55 of the Amended

Counterclaims.

Answer to the Fourth Counterclaim
Cancellation of Marks under 15 U.S.C §§ 1119, 1064(3) [Functionality]
56.

Louboutin repeats and realleges with the same force and effect as though fully set

forth here in full, its answer to each and every allegation contained in each paragraph
incorporated by reference in Paragraph 56 of the Amended Counterclaims.
57.

Louboutin denies the allegations contained in Paragraph 57 of the Amended

Counterclaims.
58.

Louboutin denies the allegations contained in Paragraph 58 of the Amended

Counterclaims.
59.

Louboutin denies the allegations contained in Paragraph 59 of the Amended

Counterclaims.

Answer to the Fifth Counterclaim
Tortious Interference with Business Relations
60.

Louboutin repeats and realleges with the same force and effect as though fully set

forth here in full, its answer to each and every allegation contained in each paragraph
incorporated by reference in Paragraph 60 of the Amended Counterclaims.

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61.

Louboutin denies the allegations contained in Paragraph 61 of the Amended

Counterclaims.
62.

Louboutin denies the allegations contained in Paragraph 62 of the Amended

Counterclaims.
63.

Louboutin denies the allegations contained in Paragraph 63 of the Amended

Counterclaims.

Answer to the Sixth Counterclaim
Unfair Competition
64.

Louboutin repeats and realleges with the same force and effect as though fully set

forth here in full, its answer to each and every allegation contained in each paragraph
incorporated by reference in Paragraph 64 of the Amended Counterclaims.
65.

Louboutin denies the allegations contained in Paragraph 65 of the Amended

Counterclaims.
66.

Louboutin denies the allegations contained in Paragraph 66 of the Amended

Counterclaims.
YSL’S PRAYER FOR RELIEF
Louboutin denies that YSL is entitled to any relief.
AFFIRMATIVE DEFENSES
FIRST AFFIRMATIVE DEFENSE
67.

YSL fails to state Amended Counterclaims against Louboutin upon which relief

can be granted.

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SECOND AFFIRMATIVE DEFENSE
68.

YSL’s amended counterclaims are barred either in whole or in part by the

doctrines of waiver, laches, and/or estoppel.
THIRD AFFIRMATIVE DEFENSE
69.

YSL’s amended counterclaims are barred, in whole or in part, by the doctrine of

unclean hands.
FOURTH AFFIRMATIVE DEFENSE
70.

YSL’s amended counterclaims are barred, in whole or in part, because all of

Louboutin’s activities were undertaken and conducted in good faith.
FIFTH AFFIRMATIVE DEFENSE
71.

YSL failed to plead its counterclaim for fraud on the U.S. Patent and Trademark

with the particularity required by Fed. R. Civ. P. 9(b).
SIXTH AFFIRMATIVE DEFENSE
72.

YSL has sustained no actual damages caused by Louboutin.
SEVENTH AFFIRMATIVE DEFENSE

73.

YSL’s alleged damages, if any, must be reduced in whole or in part, by the

amount that it was able to mitigate such alleged damages, or by the amount YSL failed to
mitigate its alleged damages.
EIGHTH AFFIRMATIVE DEFENSE
74.

YSL fails to state counterclaims upon which an award of punitive damages or

attorneys’ fees can be granted.

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Louboutin hereby gives notice that it intends to rely upon such other defenses as may
become available or apparent during the course of this action and thus reserves the right to
amend this list to assert such defenses.
JURY DEMAND
Louboutin demands trial by jury on all claims, including YSL’s Amended Counterclaims.
WHEREFORE, Plaintiffs/Counterclaim-Defendants Christian Louboutin S.A., Christian
Louboutin, L.L.C. and Christian Louboutin respectfully request that this Court dismiss
Defendants/Counterclaim-Plaintiffs Yves Saint Laurent America, Inc., Yves Saint Laurent
America Holding, Inc. and Yves Saint Laurent S.A.S.’s First Amended Counterclaims with
prejudice, deny YSL any relief, award to Louboutin its costs, disbursements and attorney’s fees,
and grant such other relief to Louboutin as the Court may deem just and warranted.
Dated: July 18, 2011
McCARTER & ENGLISH, LLP

By:

/s/Lee Carl Bromberg
Harley I. Lewin
Lee Carl Bromberg

Harley I. Lewin
245 Park Avenue, 27th Floor
New York, NY 10167
Tel: [phone]
Fax: [phone]
[e-mail]
Lee Carl Bromberg
McCarter & English, LLP
265 Franklin Street
Boston, MA 02110
Tel: [phone]
Fax: [phone]
[e-mail]

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