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

Filing 40

REPLY MEMORANDUM OF LAW in Support re: 17 MOTION for Preliminary Injunction.. Document filed by Christian Louboutin S.A., Christian Louboutin, L.L.C., Christian Louboutin. (Bromberg, Lee)

UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
CHRISTIAN LOUBOUTIN S.A.; CHRISTIAN
LOUBOUTIN, L.L.C.; and CHRISTIAN
LOUBOUTIN,
Plaintiffs,
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.

X Civil Action No.: 11 Civ. 2381 (VM)
:
: ECF Case
:
:
:
:
:
:
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X

PLAINTIFFS’ REPLY MEMORANDUM OF LAW IN SUPPORT OF
APPLICATION FOR A PRELIMINARY INJUNCTION

Harley I. Lewin
McCARTER & ENGLISH, LLP
245 Park Avenue, 27th Floor
New York, New York 10167
Tel.: [phone]
Fax: [phone]
Lee Carl Bromberg
McCARTER & ENGLISH, LLP
265 Franklin Street
Boston, Massachusetts 02110
Tel: [phone]
Fax: [phone]
Attorneys for Plaintiffs Christian Louboutin
S.A., Christian Louboutin, L.L.C., and
Christian Louboutin

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TABLE OF CONTENTS
Page
TABLE OF AUTHORITIES .......................................................................................................... ii
INTRODUCTION ...........................................................................................................................1
I.

LOUBOUTIN WILL LIKELY SUCCEED ON THE MERITS .........................................1
A.

Louboutin’s Trademark Is Protectible And Strong..................................................1
1. The Red Sole Mark Has Strong Secondary Meaning. ........................................1
2. The Trademark Examiner Properly Registered The Red Sole Mark. .................3
3. The Red Sole Mark Is Not Aesthetically Functional. .........................................4

B.

A Strong Likelihood Of Confusion Is Demonstrated By Undisputed Evidence .....5

C.

YSL’s Copying Of The Red Sole Mark Is Not Fair Use .........................................7

D.

The Fame of the Red Sole Mark Supports The Dilution Claim ..............................8

II.

LOUBOUTIN FACES IRREPARABLE HARM ...............................................................8

III.

BALANCE OF EQUITIES AND PUBLIC INTEREST FAVOR LOUBOUTIN..............9

CONCLUSION..............................................................................................................................10

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TABLE OF AUTHORITIES
CASES

Page(s)

AB Electrolux v. Bermil Indus. Corp.,
481 F. Supp. 2d 325 (S.D.N.Y. 2007)......................................................................................10
Adidas Am., Inc. v. Payless Shoesource, Inc.,
546 F. Supp. 2d 1029 (D. Ore. 2008).........................................................................................6
Bd. of Supervisors for La. State Univ. Agric. & Mech. Coll. v. Smack Apparel Co.,
550 F.3d 465 (5th Cir. 2008) .....................................................................................................4
Burberry Ltd. v. Euro Moda, Inc.,
No. 08 Civ. 5781, 2009 U.S. Dist. LEXIS 53250 (S.D.N.Y. June 10, 2009)........................4, 8
Camp Beverly Hills v. Camp Cent. Park,
No. 82 Civ. 2838, 1982 U.S. Dist. LEXIS 10019 (S.D.N.Y. May 10, 1982)........................7, 9
Cartier v. Samo’s Sons, Inc.,
No. 04 Civ. 2268, 2005 U.S. Dist. LEXIS 23395 (S.D.N.Y. Oct. 11, 2005) ........................3, 7
Deere & Co. v. MTD Holdings Inc.,
No. 00 Civ. 5936, 2004 U.S. Dist. LEXIS 2550 (S.D.N.Y. Feb. 19, 2004) ..............................2
EMI Catalogue P'Ship v. Hill, Holliday, Connors, Cosmopulos Inc.,
No. 99-7922, 2000 U.S. App. LEXIS 30761 (2d Cir. Sept. 15, 2000) ......................................8
Heisman Trophy Trust v. Smack Apparel Co.,
595 F. Supp. 2d 320 (S.D.N.Y. 2009)........................................................................................7
Ideal Toy Corp. v. Chinese Arts & Crafts, Inc.,
530 F. Supp. 375 (S.D.N.Y. 1981) ............................................................................................9
Inwood Labs., Inc. v. Ives Labs, Inc.,
456 U.S. 844 (1982)...................................................................................................................4
Jay Franco & Sons, Inc. v. Franek,
615 F.3d 855 (7th Cir. 2010) .................................................................................................4, 5
Johnson & Johnson v. Actavis Group hf,
No. 06 Civ. 8209, 2008 U.S. Dist. LEXIS 17680 (S.D.N.Y. Feb. 21, 2008) ............................4
Keds Corp. v. Renee Int’l Trading Corp.,
888 F.2d 215 (1st Cir. 1989)......................................................................................................7
LeSportsac, Inc. v. K Mart Corp.,
754 F.2d 71 (2d Cir. 1985).........................................................................................................9

ii
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Lois Sportswear, U.S.A., Inc. v. Levi Strauss & Co.,
799 F.2d 867 (2d Cir. 1986).......................................................................................................6
Marks Org., Inc. v. Joles,
No. 09 CV 10629, 2011 U.S. Dist. LEXIS 28182 (S.D.N.Y. Mar. 16, 2011).......................8, 9
McNeil-PPC, Inc. v. Merisant Co.,
No. 04-1090, 2004 U.S. Dist. LEXIS 27733 (D.P.R. July 29, 2004) ........................................5
Miramax Films Corp. v. Columbia Pictures Entm’t, Inc.,
996 F. Supp. 294 (S.D.N.Y. 1998) ............................................................................................9
Nat’l Football League v. Coors Brewing Co.,
No. 99-7921, 1999 U.S. App. LEXIS 32547 (2d Cir. Dec. 15, 1999)................................... 7-8
New York City Triathlon, LLC v. NYC Triathlon Club,
704 F. Supp. 2d 305 (S.D.N.Y. 2010)........................................................................................8
ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy,
314 F.3d 62 (2d Cir. 2002).......................................................................................................10
Qualitex Co. v. Jacobson Prods. Co.,
514 U.S. 159 (1995)...............................................................................................................3, 4
Roederer v. J. Garcia Carrion, S.A.,
732 F. Supp. 2d 836 (D. Minn. 2010)....................................................................................3, 7
Salinger v. Colting,
607 F.3d 68 (2d Cir. 2010).........................................................................................................9
Venetianairs Corp. of Am. v. A & P Import Co.,
429 F.2d 1079 (2d Cir. 1970).....................................................................................................7
STATUTES
15 U.S.C. § 1052(f)..........................................................................................................................3
15 U.S.C. § 1057(b) .........................................................................................................................1
15 U.S.C. § 1115(b)(4) ....................................................................................................................8
OTHER AUTHORITIES
Trademark Manual of Examining Procedure (“TMEP”) - 7th Ed. § 1202.05(a) ............................3
TMEP - 7th Ed. § 1202.05(b) ..........................................................................................................3
TMEP - 7th Ed. § 1202.02(a)(vi).....................................................................................................3

iii
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TMEP - 4th Ed. § 1202.02(a)(iii)(C) ...............................................................................................3

iv
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INTRODUCTION
Louboutin seeks to enforce its famous, federally registered lacquer red mark for the
outsoles of women’s footwear (“Red Sole Mark”); not, as YSL misleadingly argues, to claim a
monopoly over the color red. Massive and undisputed evidence of broad media coverage and
public recognition demonstrate that the Red Sole Mark is distinctive, protectible, and even
famous. From Oprah to Barbie’s special Louboutin shoes and Louboutin’s half-million fans on
Facebook, luxury goods consumers and the general public have overwhelming exposure to the
Red Sole Mark. Against this tide, including YSL’s own admissions about its prominence, YSL’s
legal arguments that the Red Sole Mark is not distinctive ring hollow.
But when YSL ignores countless color choices, including other reds, and apes the famous
signature of the LOUBOUTIN brand, it infringes and exposes Louboutin to irreparable harm via
a loss of control over its own brand identity and ravaging of the goodwill painstakingly built in
the Red Sole Mark. Other competitors will likely join YSL with their own red soles. Unless this
court enjoins YSL, the floodgates will open, and the Louboutin business will be devastated.
I.

LOUBOUTIN WILL LIKELY SUCCEED ON THE MERITS
A.

Louboutin’s Trademark Is Protectible And Strong

1. The Red Sole Mark Has Strong Secondary Meaning.
registered mark is presumptively inherently distinctive.

1

Louboutin’s federally

15 U.S.C. § 1057(b).1

Its a)

Trademark registration for the Red Sole Mark as distinctive throughout the 27 countries of the
EU was granted by an EU appellate court on June 16, 2011 because Louboutin sought protection
of a specific shade of red (Pantone No. 18,1663TP) applied to a high heel shoe and not the color
red per se; the color red applied to the sole of a high heel shoe diverges significantly from
industry standards and is so striking that it will be easily memorable; evidence, including media
coverage, that the Red Sole Mark is perceived in the market as an indicator of commercial origin
existed and Louboutin vigorously enforced and policed the mark. The special court in Europe
considered and rejected all the arguments YSL submitted in this matter. Lewin S. Dec. at Ex. A.
“Dec.”, “S. Dec.” or “2d S. Dec.” preceded by a surname refers to the declarations or
supplemental declarations submitted, in support of Louboutin’s application for a preliminary
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substantially exclusive use over 19 years, b) media coverage, c) advertising expenditures, d)
sales success, e) numerous copyists, and f) consumer survey evidence all prove strong secondary
meaning. YSL concedes “a strong association, between red soles and Louboutin,” and that the
red sole is the signature of the Louboutin brand and a strong visual code known by all. YSL’s
Memorandum in Opposition dated July 12, 2011 (“YSL Opp.”) at 14.2 Even the Poret Dec.
admits that Louboutin is “the most prominent source” of red-soled shoes. Against this tsunami
of undisputed evidence, YSL’s bogus argument that the proven association does not connect “red
soles exclusively with Louboutin,” YSL Opp. at 14, collapses.

That is exactly what the

undisputed evidence proves.
YSL offers no real evidence to contest the issuance of a preliminary injunction. Instead,
through the Samuels Dec., it presents an unseemly attack on the trademark examiner who
granted the registration, and two ineffectual attacks on the Klein Survey submitted by Louboutin.
Although the Klein Survey was designed to measure confusion, the frequency with which
respondents identified the red soles as a source identifier (58%) and their exclusive association of
red soles with Louboutin are strong evidence of secondary meaning. The Ford Survey yielded a
lower recognition level, but it was flawed by a poorly chosen panel of respondents and by nonstandard survey questions. Klein S. Dec. at ¶¶ 18-27. Despite these flaws, respondents in the
Ford Survey most frequently identified Louboutin as the source of the red sole shoes shown.
Deere & Co. v. MTD Holdings Inc., No. 00 Civ. 5936, 2004 U.S. Dist. LEXIS 2550, at *33
(S.D.N.Y. Feb. 19, 2004) (secondary meaning for color mark shown as plaintiff’s brand “comes
to minds most frequently”).
injunction, of Alexis Mourot, Robert Klein, Roman Khaykin, Xavier Ragot, Sharad Misra,
Shawna Rose, Kristina Musailov, Lynne Beresford, Gabrielle Goldaper, Anne Chasser and
Harley Lewin or to the declarations submitted by YSL in opposition.
2
Lewin Dec. at Exs. B-D; Lewin S. Dec. at Ex. C at 11; Mourot, Ex. L.
2
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The Schrader Dec., citing random internet offers to show that red-soled shoes are
available in the United States is an attempt to mislead this Court. The shoes shown are for the
most part eBay offers, which are one and two-offs and meaningless. See Roederer v. J. Garcia
Carrion, S.A., 732 F. Supp. 2d 836, 868 (D. Minn. 2010). Virtually all the shoes shown have
been either rejected as non infringing by Louboutin or the subject of policing actions, which are
ongoing. Ragot Dec. at ¶¶ 5-7.3 The presence of copyists in the marketplace is in fact an
affirmation of strong secondary meaning. Cartier v. Samo’s Sons, Inc., No. 04 Civ. 2268, 2005
U.S. Dist. LEXIS 23395, at *14-15 (S.D.N.Y. Oct. 11, 2005). Louboutin’s active enforcement
efforts prove the strength of the Red Sole Mark. See Misra Dec. at ¶¶ 3-5; Ragot Dec. at ¶¶ 5-7.
2. The Trademark Examiner Properly Registered The Red Sole Mark. A color
mark that has acquired distinctiveness and is not functional may be registered. Trademark
Manual of Examining Procedure (“TMEP”) at § 1202.05(a), (b); Qualitex Co. v. Jacobson
Prods. Co., 514 U.S. 159, 166 (1995). As former Commissioner for Trademarks Beresford
attests, the Red Sole Mark was properly registered. Beresford Dec. at ¶¶ 2, 14-23.
Contrary to Samuels’s assertion, the Examining Attorney did follow the USPTO’s
regulations.4 Beresford Dec. at ¶¶ 25, 28; Samuels Dec. at ¶ 7.5 The USPTO warns of potential
confusion in using “the term ‘aesthetic functionality’.” TMEP at § 1202.02(a)(vi).6 To say, as

3

Louboutin also monitors, on a daily basis, the activities of 9 auction websites for listings that
infringe the Red Sole Mark. Since 2009 alone, Louboutin has filed takedown notifications for
over 325,000 internet auction listings of shoes bearing the Red Sole Mark. See Misra Dec. at ¶ 3.
4
For example, Samuels states the examining attorney failed to properly consider the
functionality issue because Mr. Louboutin stated in his 15 U.S.C. § 1052(f) declaration that he
selected the color red because it is “engaging, flirtatious, memorable, and the color of passion.”
Samuels Dec. at ¶ 7.
5
Samuels admits, however, Mr. Louboutin’s declaration contains much evidence that the Red
Sole Mark had acquired distinctiveness. Id. at ¶ 6.
6
The identical language also existed in the fourth edition of TMEP at § 1202.02(a)(iii)(C), which
governed when the application to register the Red Sole Mark was examined.
3
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Samuels does, that an artist’s use of words such as “engaging” or “flirtatious” should have given
rise to further inquiry by the Examining Attorney is without merit; those very qualities are
available to YSL by using red on the shoe uppers, straps, decorations, etc. The trademark for a
shoe’s outsole also does not prevent use by others of many shades of red (as well as other
colors). Beresford Dec. at ¶ 27. Also, search and analysis did not show any competitive
advantage for Louboutin’s use of the Red Sole Mark. Id. at ¶ 26. Thus, the Examining Attorney
properly concluded that the Red Sole Mark was registrable.
3. The Red Sole Mark Is Not Aesthetically Functional. Where color identifies source
and is not “‘essential to the use or purpose of the article or if it [does not] affect[] the cost or
quality of the article,’ that is, if exclusive use of the feature would [not] put competitors at a
significant non-reputation-related disadvantage,” then it is protectible.7 Qualitex Co., 514 U.S. at
165 (quoting Inwood Labs., Inc. v. Ives Labs, Inc., 456 U.S. 844, 850 n.10 (1982)); Johnson &
Johnson v. Actavis Group hf, No. 06 Civ. 8209, 2008 U.S. Dist. LEXIS 17680, at *8 (S.D.N.Y.
Feb. 21, 2008) (gold package color not functional for antibiotics and creams).

“[T]hat a

trademark is desirable does not … render it unprotectable.” Bd. of Supervisors for La. State
Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 488 (5th Cir. 2008) (school
colors on apparel not functional). As shown above, the Red Sole Mark is a source identifier. See
Beresford Dec. at ¶ 2; Goldaper Dec. at ¶¶ 1b, 17; Chasser Dec. at ¶¶ 10, 14-15.
The world of fashion is no exception; color marks are protectible against infringers. See,
e.g., Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781, 2009 U.S. Dist. LEXIS 53250
(S.D.N.Y. June 10, 2009).8 YSL’s reliance on Jay Franco & Sons, Inc. v. Franek, 615 F.3d 855

7

It is undisputed that the Red Sole Mark does not improve the performance of Louboutin shoes.
The Burberry plaid consisting of black, tan, red, and white is a federally registered trademark.
See, e.g., U.S. Registration No. 3,529,814. The USPTO has also registered the color yellow for
8

4
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(7th Cir. 2010), is misplaced. The Court there acknowledged that “designs…that are merely
pleasing” are protectible and only “rudimentary” elements, such as “all shades of the color
purple rather than a single shade” encounter functionality objections.

Id. at 860.

Here

Louboutin’s trademark covers a specific red for outsoles, not the broad spectrum of red hues.9
Many shades of red and other colors are available for use by any party who wants to produce a
shoe, “monochrome” or otherwise, without infringing the Red Sole Mark. Even Louboutin’s red
color is available for competitors on other, more visible, parts of the shoe. Goldaper Dec. at ¶¶
1b, 18. The huge variety of other reds (and colors) repudiates Mr. Samuels’s assertion of
competitive advantage. See, e.g., id. at ¶ 18; see also McNeil-PPC, Inc. v. Merisant Co., No. 041090, 2004 U.S. Dist. LEXIS 27733, at *44 (D.P.R. July 29, 2004) (no competitive need for the
color yellow in trade dress of no calorie sweeteners).
B.

A Strong Likelihood Of Confusion Is Demonstrated By Undisputed Evidence

By YSL’s own admissions, the Red Sole Mark is strong and prominent in the market.
YSL uses the identical color on its infringing shoes, and the products are essentially the same -luxury high fashion women’s footwear. These key Polaroid factors prove a strong likelihood of
confusion on the undisputed evidence. But there is more.
The Klein Survey found net confusion of 47.1% among respondents, who thought a YSL
shoe with a red outsole came from Louboutin. Klein Dec. at ¶¶ 6-7. 96% of these respondents
said the red sole showed it was a Louboutin shoe. Id. This proves actual confusion.
Contrary to claims in the Poret Report, the Klein Survey photograph showed actual street
conditions and was not “leading”; many features of the shoe were on display. Klein S. Dec. at ¶¶
bracelets for cancer research fundraising and education (U.S. Reg. No. 3,317,268), Tiffany blue
for bags and boxes (see, e.g., U.S. Reg. No. 2,184,128) and blue, bluish-gray, and bluish-black
for U.S. Post Office uniforms (U.S. Reg. No. 3,061,551).
9
Commissioner Beresford indicates the color on the registration is the color protected, no more
nor less. Beresford Dec. at ¶ 12.
5
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8-12. The ability of a respondent to view the image while answering questions enhances the
accuracy of the survey by eliminating perception and memory test concerns; it is accepted
practice. For example, Dr. Ford, YSL’s other survey expert, used this practice in the survey he
designed for this case. Ford Dec. at ¶ 21. Courts have excluded an expert’s survey where the
respondent could not see the image while the questions were being asked. Klein S. Dec. at ¶ 10.
Because the Poret Survey gives respondents only a fleeting glance at the trademark (only
a few of the 17 seconds of video) and made no effort to determine if respondents had seen the
red soles, it is not surprising that fewer identified the YSL shoes as Louboutin. If a respondent
does not focus on or see the red soles of the shoes, then their responses are irrelevant. Id.
Contrast the Klein Survey, where confirmation that respondents saw the red soles yielded much
higher levels of confusion. Id.
A deliberate copying of the Red Sole Mark to bolster sagging sales is also proven on this
record by Louboutin, without contradiction by YSL. This constitutes “bad faith” under the
Polaroid factors and further proves likelihood of confusion. Unable to refute the evidence, YSL
proffers an excuse: fashion made them do it. YSL Opp. at 11-12. But fashion creates no need to
copy Louboutin’s red sole on a shoe, “monochrome” or otherwise, when so many choices of
color and color placement exist. Goldaper Dec. at ¶¶ 1a, 1b.
YSL resorts to unconvincing legalistic arguments to defend its copying and use of
Louboutin’s registered trademark.

For example, contrary to YSL’s contention, post-sale

confusion is well recognized, even where the infringing product is not counterfeit goods. Lois
Sportswear, U.S.A., Inc. v. Levi Strauss & Co., 799 F.2d 867, 872 (2d Cir. 1986) (competing
jeans); Adidas Am., Inc. v. Payless Shoesource, Inc., 546 F. Supp. 2d 1029, 1058-59 (D. Ore.
2008) (sneakers). Here both point-of-sale confusion and post-sale confusion are likely.

6
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YSL’s assertion that third-party use weakens the Red Sole Mark has no evidentiary
support. Roederer, 732 F. Supp. 2d at 868 (CRISTAL mark for champagne commercially strong
despite third party internet use of CRISTAL). The Schrader Dec. recounts one-off and postmarket sales offers, many in noninfringing colors (e.g., pink), many others involving copyists
subject to enforcement actions by Louboutin. As such, the Schrader Dec. supports the strength
of the Red Sole Mark. See Cartier, 2005 U.S. Dist. LEXIS 23395, at *14-15 (plagiarists show
strength of mark).
Because YSL’s red outsoles are virtually identical to the Red Sole Mark, confusion is
likely. Heisman Trophy Trust v. Smack Apparel Co., 595 F. Supp. 2d 320, 327 (S.D.N.Y. 2009).
House marks on the shoes do not eliminate the potential for confusion. See Camp Beverly Hills
v. Camp Cent. Park, No. 82 Civ. 2838, 1982 U.S. Dist. LEXIS 10019, at *8 (S.D.N.Y. May 10,
1982); Keds Corp. v. Renee Int’l Trading Corp., 888 F.2d 215, 222 (1st Cir. 1989). This is
especially the case because of the parties’ prior collaboration.10 See Camp Beverly Hills, 1982
U.S. Dist. LEXIS 10019, at *8 (“The public’s belief that the mark’s owner sponsored or
otherwise approved the use of the trademark satisfies the confusion requirement.”) (internal
quotation omitted). This point-of-sale confusion, with both marks seen, is ignored by YSL.
C.

YSL’s Copying of the Red Sole Mark Is Not Fair Use

The red outsoles identify the source (Louboutin) of women’s shoes in the minds of
consumers on the undisputed evidence. See, e.g., Lewin S. Dec. at Ex. C at 31. For this reason
alone YSL’s fair use defense fails. See Venetianairs Corp. of Am. v. A & P Import Co., 429 F.2d
1079, 1082 (2d Cir. 1970) (defendant’s “‘trademark use’ was both effected and intended”); Nat’l
Football League v. Coors Brewing Co., No. 99-7921, 1999 U.S. App. LEXIS 32547, at *7 (2d
10

In 2002 Mr. Louboutin designed a shoe for use at Mr. Saint Laurent’s final haute couture
show. The shoe contained the Red Sole Mark as well as YSL’s and Louboutin’s house marks.
See Lewin S. Dec. at Ex. B at 23-24, 26-27.
7
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Cir. Dec. 15, 1999) (unpublished) (defendants’ use of plaintiff’s mark to indicate source not a
fair use). Moreover, as shown in Section I.B., YSL acted in bad faith. See EMI Catalogue
P'Ship v. Hill, Holliday, Connors, Cosmopulos Inc., No. 99-7922, 2000 U.S. App. LEXIS 30761,
at *24 (2d Cir. Sept. 15, 2000) (no fair use where “defendant in adopting its mark intended to
capitalize on plaintiff’s good will”). YSL’s use of red soles to emulate Louboutin’s success is
not a fair use. See 15 U.S.C. § 1115(b)(4).
D.

The Fame Of The Red Sole Mark Supports The Dilution Claim

A mark is famous when it is “widely recognized by the general consuming public,” as a
result of widespread publicity, promotion and sales. Burberry, 2009 U.S. Dist. LEXIS 53250, at
*31-32 (BURBERRY mark for high-end fashion apparel famous).
Undisputed evidence proves that the Red Sole Mark has become widely recognized by
the general consuming public. Louboutin has a strong retail and advertising presence in the
United States and enjoys voluminous unsolicited media coverage. See, e.g., Mourot Dec. at ¶ 8;
Rose Dec. at ¶¶ 7, 28. The Red Sole mark appears on nationally televised broadcasts and in
widely circulated publications. From Oprah to Barbie to Facebook, the Red Sole Mark enjoys
vast public exposure. Louboutin is likely to prevail on its federal dilution claim.
II.

LOUBOUTIN FACES IRREPARABLE HARM
The likelihood of confusion demonstrated above shows that Louboutin faces the

imminent risk that it will lose control over its famous Red Sole Mark. That loss of control will
quickly erode the goodwill that Louboutin has built in the Red Sole Mark. Louboutin proves a
threat of irreparable harm by showing loss of goodwill and loss of ability to control its
reputation. New York City Triathlon, LLC v. NYC Triathlon Club, 704 F. Supp. 2d 305, 325
(S.D.N.Y. 2010). The “harm to the plaintiff’s property interest has often been characterized as
irreparable in light of possible market confusion.” Marks Org., Inc. v. Joles, No. 09 CV 10629,
8
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2011 U.S. Dist. LEXIS 28182, at *28 (S.D.N.Y. Mar. 16, 2011) (quoting Salinger v. Colting,
607 F.3d 68, 81 (2d Cir. 2010)) (internal quotation omitted). Louboutin faces that threat here.
Louboutin actively polices the Red Sole Mark to shut down copyists. This task will
become impossible if competitors can copy the Red Sole Mark at will, as YSL has done here.
Already another competitor has signaled its intent to follow suit. Khaykin 2d S. Dec. at ¶ 6.c. A
flood of red soles in high fashion women’s footwear creates the danger that Louboutin’s
goodwill, market prominence and fame will be destroyed, thus threatening its entire business.
See Declaration of former Commissioner of Trademarks Chasser at ¶¶ 15-19.
YSL’s argument that Louboutin “delayed” lacks merit. Louboutin sought a business
resolution before burdening the parties and this Court with litigation.

That effort failing,

Louboutin quickly filed suit. Such delays are justified. Marks Org., 2011 U.S. Dist. LEXIS
28182, at *24-25 (16-month delay no bar to preliminary injunction). YSL’s argument that the
briefing schedule it insisted upon counts against Louboutin as “delay” is facially absurd.
Contrary to YSL’s opportunistic argument, an increase in plaintiff’s sales during the time
the infringing product was sold does not rebut irreparable harm. See, e.g., Camp Beverly Hills,
1982 U.S. Dist. LEXIS 10019, at *10 n.13 (inferring plaintiff would have earned more in the
absence of infringement); Miramax Films Corp. v. Columbia Pictures Entm’t, Inc., 996 F. Supp.
294, 300 (S.D.N.Y. 1998).
III.

BALANCE OF EQUITIES AND PUBLIC INTEREST FAVOR LOUBOUTIN
The threat of irreparable harm to Louboutin’s Red Sole Mark and goodwill clearly

outweighs any potential short term economic harm to YSL. LeSportsac, Inc. v. K Mart Corp.,
754 F.2d 71, 79 (2d Cir. 1985); Ideal Toy Corp. v. Chinese Arts & Crafts, Inc., 530 F. Supp. 375,
380 (S.D.N.Y. 1981). If an injunction does not issue, Louboutin will be unable to enforce its

9
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signature mark, opening the floodgates for unfettered use by third parties.11

This would

devastate Louboutin’s business. In contrast, the harm to YSL, if any, would be miniscule as
YSL’s use of red outsoles on women’s shoes has been intermittent and de minimus in the U.S.
(only 1,631 pairs sold in Cruise 2011). Vaissie Dec. at ¶¶ 27, 32, 35. Louboutin, in contrast,
expects 2011 U.S. sales of 240,000 pairs. Mourot Dec. at ¶ 30. Entry of an injunction would
leave YSL’s shoe business intact, with the slight exception of its infringing red outsoles.
“[T]he public interest embodied in the Lanham Act itself … [is] sufficient to tip the
balance in favor of [Louboutin].” See AB Electrolux v. Bermil Indus. Corp., 481 F. Supp. 2d
325, 336 (S.D.N.Y. 2007).

There is a “strong interest in preventing public confusion.”

ProFitness Physical Therapy Ctr. v. Pro-Fit Orthopedic & Sports Physical Therapy, 314 F.3d
62, 68 (2d Cir. 2002).
CONCLUSION
For the foregoing reasons, this Court should enter an order preliminarily enjoining YSL
from selling footwear that infringes the Red Sole Mark.
Dated: July 19, 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
265 Franklin Street
Boston, MA 02110
Tel: [phone]
Fax: [phone]
[e-mail]

Attorneys for Plaintiffs Christian Louboutin S.A., Christian
Louboutin, L.L.C., and Christian Louboutin
11

Indeed, Louboutin’s investigator was informed by a competitor, Christian Dior, that Dior
would begin making shoes with red soles for the next season. Khaykin 2d S. Dec. at ¶ 6.c.
10
ME1 11998646v.1