Christian Louboutin S.A. et al v. Yves Saint Laurent America, Inc. et al
Filing
54
TRANSCRIPT of Proceedings re: Conference held on 7/22/2011 before Judge Victor Marrero. Court Reporter/Transcriber: Carol Ganley, (212) 805-0300. Transcript may be viewed at the court public terminal or purchased through the Court Reporter/Transcriber before the deadline for Release of Transcript Restriction. After that date it may be obtained through PACER. Redaction Request due 9/5/2011. Redacted Transcript Deadline set for 9/15/2011. Release of Transcript Restriction set for 11/11/2011.(McGuirk, Kelly)
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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CHRISTIAN LOUBOUTIN S.A.,
CHRISTIAN LOUBOUTIN, L.L.C.
and CHRISTIAN LOUBOUTIN,
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Plaintiffs,
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v.
YVES SAINT LAURENT AMERICA,
INC., YVES SAINT LAURENT
AMERICA HOLDING, INC, et al.,
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11 CV 2381 (VM)
Defendants.
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New York, N.Y.
July 22, 2011
3:30 p.m.
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Before:
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HON. VICTOR MARRERO,
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District Judge
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APPEARANCES
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MCCARTER & ENGLISH
Attorneys for Plaintiffs
BY: HARLEY I. LEWIN
LEE CARL BROMBERG
DEBEVOISE & PLIMPTON, LLP
Attorneys for Defendants
BY: DAVID H. BERNSTEIN
JYOTIN HAMID
JILL van BERG
RAYNA S. FELDMAN
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SOUTHERN DISTRICT REPORTERS, P.C.
(212) 805-0300
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(Case called)
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THE COURT:
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This is a proceeding in the matter of Louboutin v.
Good afternoon.
Thank you.
Be seated.
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Yves Saint Laurent, docket No. 11 CV 2381.
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this hearing on the application of the plaintiff for
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preliminary injunctive relief.
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received and reviewed the submissions from both sides,
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voluminous as it is, and this hearing is scheduled as a formal
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hearing on the record on the application.
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In this case, the Court has
Let's first address housekeeping matters of how long
the parties contemplate for their respective presentations.
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The Court scheduled
MR. LEWIN:
Your Honor, Harley Lewin, for the
plaintiffs, your Honor.
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We were informed that there was an hour set aside.
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planned for about 20-some-odd minutes and if I could hold a
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couple minutes back in reserve for reply.
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THE COURT:
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MR. BERNSTEIN:
We
All right.
We had heard the same, your Honor, and
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so we'll be prepared to go for about half an hour, subject to
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whatever questions your Honor may have.
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THE COURT:
All right.
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begin.
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So in that event, let us
going to be attorney argument?
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Do any of the parties have witnesses, or is it just
MR. LEWIN:
Again, your Honor, this is a motion
hearing, no testimony.
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THE COURT:
Shall we begin?
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MR. LEWIN:
With pleasure, your Honor.
May I
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introduce myself.
I'm Harley Lewin for the plaintiffs,
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McCarter & English, with my colleague Lee Bromberg.
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permission, sir, we have the general counsel of Christian
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Louboutin, Mr. Xavier Ragot, and we've asked him to join us at
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this table.
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THE COURT:
All right.
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MR. LEWIN:
With your
Thank you.
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Sir, your Honor, this is a case about, in very simple
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terms, one of the iconic and strongest visual cues in our view
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that's come in the 20th Century and the beginning of the 21st
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Century, the red outsoled, bright red lacquered outsoled
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Christian Louboutin.
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marks certainly from 2000 to 2011.
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everyone's testimony and has achieved a spectacular public
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acceptance.
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visual cue, and it has been in use that way for 20 years on
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virtually all of the shoes Mr. Louboutin brought into the
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United States.
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March 28, 2011, which they call Sole Mate, S-O-L-E, said that
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it took an otherwise indistinguishable product, the high-heeled
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shoe, and separated it from the masses.
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It is probably one of the true sparkling
It is iconic by almost
It is, to use the words of YSL itself a strong
It is unique.
The New Yorker in the profile
This is a genuine Louboutin shoe, your Honor, with its
sparkling red sole.
You hear the term "flash of red," it is an
SOUTHERN DISTRICT REPORTERS, P.C.
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extraordinary source indicator to the public.
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graced by the fashion world, celebrities, television, media.
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We sent you, as you say, voluminous evidence to that extent.
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YSL knows this.
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They searched for many years for a comparable visual cue and
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never were able to develop one.
They knew it.
It has been
Their people have admitted it.
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Ms. Vaissie, in her deposition testimony was
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specifically asked whether they were able to develop a strong
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visual cue, and she said no.
Since then being clever, what
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they did was to take what may have been an incidental
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time-to-time use of a red outsole of a shoe and they took a
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quantum leap at the end of 2010.
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least five shoes that we're aware of, four that we were aware
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of when we filed the complaint, a fifth that has since been
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discovered, landed in the United States.
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In the beginning of 2011, at
What's happened now is after several months of
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negotiations in January and February and then March, when
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negotiations proved fruitless and there was no ability to
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settle the case, on an amicable basis, Louboutin promptly filed
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a lawsuit and, as your Honor is aware, sought at that time
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preliminary injunction.
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scheduling and calendar and foreign as well as domestic
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discovery.
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We're here today by reason of
We would ask the Court to keep in mind several things
as you listen to this presentation today from both sides.
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First, the focus here is on postsale confusion; the confusion
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that occurs after somebody buys something and it goes walking
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down the street, or, in the case of Louboutin, as seen on JLo's
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feet or as seen on the red carpet of the Oscars or the media,
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but it's postsale confusion.
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The second thing we ask you to keep in mind, your
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Honor, is that we address the U.S. market.
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runway shows in Paris, what may or may not have happened
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somewhere else in the world.
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We don't address
The third thing that we're talking about, your Honor,
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is that we're not talking about shoes.
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what occurs on the upper part of the shoe, only the outsole,
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just as is pictured in the trademark over on the easel before
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you.
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No one is talking about
In terms of foreign law, we recently asked the Court
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to at least consider a decision that was made the other day by
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the second level of the Court of Appeals of the OAMI, which is
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the high court ruling on trademarks.
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would be rude of us to even imply that somehow or other that
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court was offering guidance to your Honor.
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virtually every objection that has been raised by YSL in these
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proceedings has been considered by the Court and we would hope
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very much that after today's hearing, a ruling by your Honor
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would be similar.
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We do not, of course, it
But we do note that
I would note finally without a preliminary injunction
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there's a very, very good chance that the YSL shoes that are
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held in inventory will return, the weather is quite warm, that
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the third parties that are watching this case so closely will
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see or interpret it as a possibility for them to reenter the
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market.
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harm is bound to occur under the circumstances we're faced
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with.
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And as I will explain a little bit later, irreparable
THE COURT:
Mr. Lewin, you mentioned that your focus
is what happens in the United States.
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MR. LEWIN:
Correct.
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THE COURT:
But now you've introduced something of
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what happened in Brussels with the decision by the European
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Union court.
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European Union court, there was a Court of Appeals of Paris
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decision which essentially did not recognize the mark in that
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particular case.
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application of the second Court of Appeals decision which came
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out after the European Union and also whether or not we're
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looking only at what happens in the United States or does this
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have any bearing on what this Court should be looking at.
But there's also the fact that six days after the
You may want to address what is the
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MR. LEWIN:
Let me take the second part first.
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I don't think the decisions in either case have a
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direct bearing on your Honor's decision today.
I think the law
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is very clear that trademarks are territorial in application of
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the Lanham Act in this case, is applicable to the events in the
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United States.
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interesting and we thought possibly helpful discussion in the
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second case, OAMI case.
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I do think, however, that there is an
As to the second part or first part of your Honor's
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statement, the decision of the French court involved a
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different trademark.
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that's what's so interesting.
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essentially is a sort of a drawing of a red sole but simply
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without any shoe on it, and if you read the decision very
It does not involve that trademark.
And
It involved a trademark that
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carefully, they make a point of that.
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strength of the trademark.
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with the public.
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but they said that's not what's before them.
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They acknowledge the
They acknowledge the association
They acknowledge it as a source indicator,
What's before them is this other trademark, and then
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for very unique reasons in France, under French law, it did not
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qualify as a trademark.
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mark is the same mark that is before your Honor, that mark that
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is registered in the United States, and that mark received a
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ruling from the OAMI that indicated that they were going
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forward with registration of that mark in 27 countries.
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THE COURT:
What was so interesting is the second
All right.
Let's address that for a
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moment because there the Court essentially constrained the mark
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in two very significant ways.
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It has Pantone with a specific number Pantone, and it also said
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high heels.
One is it's not the color red.
We're not talking about just any old footwear.
SOUTHERN DISTRICT REPORTERS, P.C.
(212) 805-0300
If
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you look at the chart you have on the board there, which is the
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U.S. registration, your client's registration in the U.S. says
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the color red is claimed as a feature of the mark and also says
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that it's for footwear.
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high-heeled footwear or for low-heeled footwear or for flats or
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for platforms.
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It doesn't say that it's for
Coming back to the question of red, your registration
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says the color red is claimed as a feature of the mark.
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you five drawings.
Which of these is red?
I show
I represent to you
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that these are different shades taken from a computer.
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under your registration, which of these would be red?
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MR. LEWIN:
But
Your Honor, you've asked the question in
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two parts, both with the verbal description as well as the
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sample, the drawing of the mark.
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office, under its TMEP guidelines, specifically states and
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requests that people use a general verbal description of the
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mark to be registered.
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United States trademark
THE COURT:
But you use the very general description
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MR. LEWIN:
Yes, your Honor.
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THE COURT:
All right.
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MR. LEWIN:
That's not what governs.
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of red.
If I may.
That's not what
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the law says.
The law says what governs is the sample
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submitted and the drawing of the sample is required to be the
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same as the sample submitted.
In the case of any conflict
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between the language that's used and the sample that's
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permitted, you go with the sample, that color.
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Our mark is that color.
Whether it's Pantone 18-1663,
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whether it's some other Pantone number, that's the color.
In
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terms of your question, which one of those would be infringing,
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I would compare any of those to that color.
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close, it would be infringing.
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would not be.
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Honor, and the reason that they do it, and Ms. Beresford points
If it came too
If it's far enough away, it
But what the law says very specifically, your
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this out, the commission of trademarks in her declaration, is
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that when you search a mark electronically now, they want you
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to be able to search using common words.
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give examples in the USPTO.
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brown, something-something, and they're presuming that you may
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or may not know the Pantone number that you're searching for.
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So what they say is you type in red and then you get this and
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you pull that up, and as a second-comer, your duty is to
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compare it to the mark that's registered.
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They specifically
What they don't want is red,
What's very clear, your Honor, if you look at the file
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that was submitted in this case, the trademark application
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submitted a photograph of a shoe, not an actual Louboutin shoe,
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but a photograph of a shoe.
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photograph is reproduced in that drawing and that red is the
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same red that's in that sample.
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specifically says is that that's the red that governs.
And in that regard, that
And what the law very
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There's
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no requirement to use the Pantone number, and you are asked by
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the PTO to use general color language.
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THE COURT:
It's not the words.
Let's suppose for the moment that this is
that red.
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MR. LEWIN:
All right.
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THE COURT:
All right.
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And let's say for the moment
this is not.
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MR. LEWIN:
Yes, sir.
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THE COURT:
So you see JLo walking down the street
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using shoes of this color and then comes Angelina with shoes of
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this color.
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MR. LEWIN:
Yes, sir.
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THE COURT:
Is it your view then that if Angelina is
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wearing Yves Saint Laurent shoes of this color would not
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infringe upon the mark?
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MR. LEWIN:
No, sir.
No, sir.
If that were the color
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that was reproduced on the shoes that Angelina was wearing at
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YSL, she would be infringing.
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It would be too close, and the likelihood of confusion, as you
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measure it under any other circumstances, would be too close.
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THE COURT:
That would be an infringing use.
You have to have some kind of light meter
going around.
MR. LEWIN:
Maybe.
But I think what comes clear is
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that on the back of shoes and when shoes are in the street,
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there's a particular image that gets cast, and that image is
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the image that matters.
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Let me give you an example.
This is a red.
This is a
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red that's cited by Ms. Vaissie in her declaration as one of
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the red shoes that YSL has brought in over the years.
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the Divine shoe and the color that she cites is Grenade, this
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color.
This is
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May I approach the bench, your Honor.
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THE COURT:
Sure.
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MR. LEWIN:
Now, that arguably falls within the red
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THE COURT:
Yes.
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MR. LEWIN:
In our view, that's not infringing.
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family.
It's
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a dark, wine color, and it wouldn't be infringing.
It doesn't
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resemble this color, which is another YSL shoe, which in our
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view is infringing.
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THE COURT:
Let me then turn to another question.
The
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sample raises another question.
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says it is for lacquered red shoes.
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what lacquered means, perhaps you can explain it, but this has
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a kind of a red leather.
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color, your Pantone, whatever it is, but it's not shiny, it's
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not like nail polish, but it's Benjamin Moore flat, would that
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be infringing?
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MR. LEWIN:
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answer, your Honor.
Your registration specifically
Of course, I don't know
So if you have a shoe that is that
I would have to give you the classic legal
It depends.
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Let me make a distinction.
There's a distinction
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between what we claim that we own is a trademark and what may
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or may not be infringing as a trademark.
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outsole is precisely that.
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on like paint.
That bright lacquered
Lacquer is a clear material sprayed
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THE COURT:
Laminate.
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MR. LEWIN:
It's not a laminate as much as it is a
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ladies' nail polish and then they buff it and make it bright
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and shiny.
And Louboutin's testimony is they do much the same.
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Mr. Russo testified in his deposition that they hand rub shoes
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to achieve the shiny effect.
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rights are limited to that which is identical to his mark.
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think like any other trademark question, it's a factually
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intensive inquiry.
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name or logo or design against what's been registered and
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what's been used.
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that if you want to take lacquer, for example, that the effect
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of lacquer could be achieved by some other means, I don't know,
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polishing by hand or something, shoe polish or something or it
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may be dulled or as you say glint in the street.
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there's a simple question here, how close can someone come to
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what's been a properly registered, valid, strong trademark and
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I don't think there's any right under any circumstances to come
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so close that you confuse people.
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I don't think that Louboutin's
I
And you measure the particular product or
And I believe very strongly, your Honor,
THE COURT:
But I think
Let me come back then to the other aspect
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of your registration.
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footwear.
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Your registration is for red on
This is a footwear and so is a thong, flats.
In the EU case, as you know, the EU, reading between
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the lines, is essentially saying you overreach if what you want
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is red on any kind of shoe.
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particular Pantone ending in 63 red and high heels.
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is it here?
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So which
And where does it say that?
MR. LEWIN:
Your Honor, not footwear.
It says women's
high fashion designer footwear.
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We might recognize it if it's a
THE COURT:
Does high fashion mean dollars or does
high fashion mean the height of the heel?
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MR. LEWIN:
I don't think it means dollars, your
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Honor.
I'm inclined to think based on the drawing and the
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sample submitted it means the height of the heel.
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claiming --
I'm not
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THE COURT:
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dress high fashion?
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MR. LEWIN:
Depends on the dress.
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THE COURT:
Is a Size eight high fashion but size two
MR. LEWIN:
No, your Honor.
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That's a definitional problem here.
Is a
is not?
It would very much depend
on the cut and style of the dress, the pricing of the dress.
THE COURT:
We are sort of mincing words here, because
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you're saying that high fashion there defines heels and I'm
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wondering whether under ordinary language that would be a fair
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interpretation of what high fashion means.
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It says high
fashion designer footwear.
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MR. LEWIN:
Women's.
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THE COURT:
Yes.
MR. LEWIN:
I can't answer specifically that, you also
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Women's also.
Women's.
We're in agreement on
that.
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add the word designer, and I think that that has clear meaning.
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I don't think it means an average piece of footwear.
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add each of those components together, women's, designer, high
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fashion shoes, I think that the examiner was comfortable with
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that description and I think it carves out a market, a niche
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market to which this trademark applies.
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the Air Jordan sneakers that came out in the '80s in red, for
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example, whether men's or women's.
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THE COURT:
If you
It would not apply to
In the EU, they also limited it also by
saying it doesn't apply to orthopedic shoes.
MR. LEWIN:
That's correct, your Honor.
To my
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knowledge, and I could be corrected, I don't know of too many
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designer's high-end luxury orthopedic products that are out
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there today.
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THE COURT:
That's probably true.
But the important
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point is that the EU court basically said if you're talking
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about footwear that's red without anything more, that may be
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overreaching.
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MR. LEWIN:
I agree.
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THE COURT:
And they said we are going to limit it in
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several respects:
One, high heel; two, particular Pantone;
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three, high fashion designer type stuff, not orthopedics.
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MR. LEWIN:
I agree.
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THE COURT:
But my question to you is:
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I agree.
Where in this
case do you have those kinds of limitations?
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MR. LEWIN:
You have exactly that limitation, your
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THE COURT:
Where?
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MR. LEWIN:
This color is the only color registered
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Honor.
for Louboutin, whatever you want to call it.
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THE COURT:
I grant you that what you've said is the
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MR. LEWIN:
That's right.
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THE COURT:
But you're not addressing the question of
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color.
lacquered red.
You're not addressing the issue of footwear.
MR. LEWIN:
I am addressing the issue of footwear in
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its description because I said it's women's high fashion
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designer, and I think that those have very specific meanings.
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THE COURT:
So if I took this shoe and made it a
platform two inches lower with a huge heel, would that be -MR. LEWIN:
If it was designed by YSL and it had a red
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outsole, it may well be because it sells for $800 and it's a
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designer product.
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lowered it even further to a relative flat shoe and it came in
But if you took that same shoe and you
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under someone's no name, it might or might not be because I
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think the issue is not identical, it's infringement.
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THE COURT:
How far does YSL have to lower the shoe in
order not to infringe?
MR. LEWIN:
If it made a flat sole, guppies or --
It would be unlikely that we would speak
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to infringement under those circumstances.
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Honor, there are certain shoes before you that would be a very
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close call under the circumstances, those Chinese shoes that
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were supposedly put in.
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THE COURT:
Right.
In fact, your
But, Mr. Lewin, the law is
11
supposed to give notice to someone who is trying to comply with
12
the law, especially in the setting of business, what is
13
permitted and what is not permitted.
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having is that you're suggesting here that it's kind of either
15
a moving target or that every time Yves Saint Laurent or some
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other manufacturer wishes to see whether it is infringing, it
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would have to come to a court and ask the judge to compare that
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red versus some other red, shoe by shoe, and determine whether
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or not it infringes.
And the difficulty I'm
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MR. LEWIN:
Your Honor, may I.
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THE COURT:
Yes.
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MR. LEWIN:
I'm sorry.
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THE COURT:
No.
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MR. LEWIN:
If you just give me a moment, I want to
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I don't mean to interrupt.
Please do.
look for one particular reference.
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THE COURT:
Yes.
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MR. LEWIN:
I guess if I boil this down, what I'm
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saying is the following:
The criteria you've outlined I think
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are really no different than if somebody wants to adopt a word
5
that's similar to a made-up word.
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adopt the word Esson, or something.
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close?
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oil services or whatever it may be.
9
a judgment.
Take Exxon and they want to
Is that or is that not too
Well, they could see Exxon and they know Exxon is for
But they're going to make
They're either going to go to their lawyer,
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they're going to look at the marketplace, and they're going to
11
make a judgment.
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trademark field, what is or is not too close.
That happens every single day in the
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I agree with your Honor, a trademark registration in
14
the United States is supposed to guide the second-comer as to
15
what he can do and what he cannot do.
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of distinctive red is specifically provided as a matter of law
17
because the sample governs, not the words.
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somebody determine whether a red is arguably too close?
19
He searches the word red, he finds this trademark application,
20
the trademark registration, he compares the shoe, color that he
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intends to use, with the color there.
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I think that the issue
The sample.
Can
Sure.
Parenthetically, your Honor, it's extremely difficult
23
when you hold up samples of reds because everything prints
24
differently.
25
survey, your Honor, is one of the shoes that YSL says is
This shoe, which is the shoe we tested in the
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monochrome.
2
The sides, of course, are completely different.
3
look at most of the shoes that are claimed to be red, the red
4
varies because of the way it prints on leather versus some
5
other material, so you can't really tell when you look at a
6
color printed on a piece of paper.
7
The red outsole is different than the red upper.
But if you
Does a person in business understand what a women's
8
luxury high-heeled designer shoe is?
9
the USPTO did.
I think they do.
I think
Really in no one's mind was that too broad to
10
be able to determine what is or what is not an appropriate use
11
of the second-comer's color and what shoe he can put it on or
12
cannot put it on.
13
The Europeans make a lot of noise in many countries
14
about telling where the mark belongs and on what the product
15
belongs.
16
the sample.
17
women's shoe, and it is a luxury designer item.
18
As a matter of law, what governs is the drawing and
That drawing is of a high-heeled shoe.
It is of a
Now, I understand, your Honor, that it may be some
19
issue, but if I'm a businessman, my job is to stay far enough
20
away that I can't get confused.
21
to do the same thing that the registration's for.
22
what's going on here.
23
high-heeled designer shoe with a red outsole that infringes.
That's my job.
My job is not
And that's
Exactly the same thing, a women's luxury
24
THE COURT:
Anything else before we proceed?
25
MR. LEWIN:
No, not responsive to what you were
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saying, your Honor.
2
THE COURT:
You're beginning to push on the time.
3
MR. LEWIN:
Yes, I understand, your Honor.
4
Your Honor, I'm not going to take a lot more time.
5
had a long, arduously prepared opening statement, but that's
6
fine.
I
7
It wouldn't be the first time it's happened.
I would say to you, your Honor, that if somebody came
8
to us today and said if you'll amend your application to
9
high-heeled shoes only, non-orthopedics, as they did, in fact,
10
in those proceedings, but not by the high court, the middle
11
level, we probably would do it, but we complied with the law,
12
and when you have a mark that is as well known as this
13
trademark, even as a matter of common law, your Honor, whether
14
we had a registration or not, we would still ask for that
15
preliminary injunction just as they did with the LSU case with
16
the university colors.
17
in status.
18
on a women's luxury high-heeled shoe as a source indicator.
19
When they see that on the street and you see the red sole, 47.1
20
percent of the people who looked at the YSL shoe used that red
21
outsole as a source indicator.
22
We would still argue that it's iconic
We would still argue that the public uses that red
THE COURT:
Mr. Lewin, you also said that it is the
23
drawing that governs.
Looking at the drawing and looking at
24
the actual registration, it says the dotted lines are not part
25
of the mark but are intended only to show placement of the
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mark.
2
MR. LEWIN:
That's correct.
3
THE COURT:
So?
4
MR. LEWIN:
That's correct, your Honor.
We're not
5
claiming the trademark, that that particular shoe is our
6
trademark.
We're claiming that that's the place on that kind
7
of a shoe.
That's why you use a dotted line.
8
this shoe, your Honor, which is a Louboutin shoe.
9
is a trademark, not the upper.
10
We would claim
The outsole
Not this particular
configuration of it.
11
THE COURT:
I understand that.
But the reason I bring
12
that up is apropos of our discussion as to how low a shoe has
13
to be and what part of the shoe has to be visible in order for
14
infringement to occur.
15
not part of the mark, then presumably almost any way in which
16
you shape the outer part of that shoe theoretically could be
17
covered by the word "footwear."
18
19
MR. LEWIN:
If the outer part of the shoe here is
Your Honor, it's not footwear.
It's
women's luxury designer footwear.
20
THE COURT:
Footwear.
21
MR. LEWIN:
It's not merely footwear.
22
THE COURT:
If Yves Saint Laurent sold a $1,000 sandal
23
that's one inch off the ground, and it had red --
24
25
MR. LEWIN:
We wouldn't have a problem with it, your
Honor.
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THE COURT:
How does Yves Saint Laurent know that?
2
MR. LEWIN:
Because I think Yves Saint Laurent takes
3
4
its guidance right from that drawing.
I don't think anybody knows it, your Honor, just like
5
I said Exxon and Esson.
6
enough away?
7
infringer know?
8
100 percent, but if he's coming too close, how does he know?
9
He doesn't know.
10
11
How does Esson know that he's far
How does Esson know?
How does any potential
Unless he's absolutely duplicating the mark
THE COURT:
If the drawing counts, if the drawing is
what you go by --
12
MR. LEWIN:
Yes, it is.
13
THE COURT:
-- this drawing doesn't tell me what's
14
behind the heel.
See where the heel goes?
15
MR. LEWIN:
Yes.
16
THE COURT:
Does it tell me that the red goes also
17
down along?
18
MR. LEWIN:
No.
19
THE COURT:
It doesn't tell you that?
20
MR. LEWIN:
No.
21
THE COURT:
How would Yves Saint Laurent know that?
22
MR. LEWIN:
Yves Saint Laurent would be justifiably,
23
in assuming that if they only did the inside of the heel and
24
did not do the red sole of that shoe, they would be safe.
25
an outsole, your Honor.
It's
It has a very specific meaning in the
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footwear industry.
2
what it means.
3
this part on down.
4
It doesn't mean heel.
Period.
That's not
nothing less.
The footwear industry takes an outsole to be
That's what an outsole is, nothing more,
5
THE COURT:
All right.
6
MR. LEWIN:
Yes, sir.
7
MR. BERNSTEIN:
8
Do you want to sum up then?
Your Honor, may we put our
demonstrative up.
9
THE COURT:
Yes.
10
MR. LEWIN:
If I may, your Honor.
11
THE COURT:
Yes.
12
MR. LEWIN:
A couple of good things.
Somehow or
13
other, your Honor, YSL recognized it as a trademark, and, as I
14
said a moment ago, your Honor, even in common law, as far as
15
we're concerned, if we had no registration whatsoever, we would
16
be entitled to injunctive relief under these circumstances.
17
would be entitled because, as Mr. Russo, who was for eight
18
years the designer for YSL, says, the red sole, he says, YSL
19
says, right, are you familiar with the red sole, oh, any person
20
who works in the fashion industry is, the businessman, a moment
21
ago you said any person, what did you mean.
22
red sole in the fashion industry has become a distinctive mark
23
for Christian Louboutin.
We
I mean that the
He knows.
24
Now, PPR, who is the parent company of YSL, the head
25
of PPR, says very specifically, in a letter to our client, he
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says, in the fashion or luxury world, your Honor, it's
2
absolutely clear we recognize the notoriety of the distinctive
3
signature constituted by the red sole of Louboutin's models in
4
contrast with the general presentation of the model,
5
particularly its upper, and he recognizes that for all shades
6
of red.
7
one shade.
8
9
10
11
That's further than we went.
We are only claiming the
This is Mr. Pinault.
The photograph, your Honor, is the photograph on the
street of the YSL shoe.
monochrome.
It's this shoe, claiming to be
That's the shoe.
As I say, your Honor, you may have a quarrel with the
12
registration.
Indeed, we don't think so.
We think even YSL
13
recognizes what an outsole is on a shoe, what a woman's luxury
14
high-heeled shoe is, what a woman's luxury shoe is, pardon me,
15
and what a designer shoe is.
16
We think the world has done that at large, and whether you
17
apply the registration or whether you apply the common law, we
18
still think, your Honor, that with the confusion that reigns
19
when that shoe goes down the street, the core mark of this
20
company will be lost.
21
it does is because of that singular identity.
We think the PTO has done that.
The reason it sells the kind of product
22
Thank you.
23
THE COURT:
24
MR. BERNSTEIN:
25
Thank you.
Good afternoon, your Honor.
I'm David
Bernstein with Debevoise & Plimpton, here with my partner Joe
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Hamid, my colleagues Jill van Berg and Rayna Feldman.
Nicole
2
Mara, the general counsel of Gucci, which is the parent
3
company, is here as well.
4
Your questions to Mr. Lewin are quite prescient, your
5
Honor, with respect to why this is not a trademark that should
6
be deemed valid and why it's not a trademark that should be
7
enforced against my client.
8
Mr. Louboutin himself is incredibly relevant to the questions
9
you were asking because we don't know what that trademark
And the deposition of
10
registration, which we think was improperly granted, means.
11
don't know what we are and are not allowed to do, and indeed,
12
Mr. Louboutin himself doesn't know.
13
points.
14
We
So just a couple of quick
No. 1, this is a Louboutin shoe.
I'm sorry it's used.
15
It's a bit scuffed.
16
believe this is covered by the trademark registration.
17
Certainly my reading of the registration is the same as your
18
Honor's: the dotted part doesn't count.
19
covers flats.
20
heels, it covers thin heels.
21
says red, lacquered red, unlike the new European application.
22
It doesn't say Pantone 18-1663TP.
23
if that's what they were claiming, although even then I must
24
say I believe that would be a functional mark as well.
25
But it's a flat with a red sole.
I
So I do believe it
I believe it covers high heels, it covers thick
And as your Honor mentioned, it
They could have said that,
The decision of the OHIM board, let's be very clear
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1
about what that was.
2
deciding whether someone's mark was infringed.
3
even a decision as to whether that mark is now a registration.
4
That was only a decision from OHIM, which manages the European
5
community trademark, as to whether the application can proceed
6
to the next step, which would be publication and then other
7
people can come and object.
8
9
That is not a court of law that was
That was not
Louboutin tells you that that court considered and
rejected all of YSL's concerns.
YSL has not even had the
10
opportunity yet to file its objection, and I can tell the Court
11
and it will be no surprise, of course, to Louboutin, that we
12
fully expect in Europe to oppose that trademark registration;
13
it's now only an application, and we will be submitting to the
14
registration board all sorts of arguments as to why that
15
trademark, even limited to 18-1663TP Pantone, even limited to
16
shoes that are not orthopedics and all of the others that your
17
Honor mentioned, should not be registered.
18
There's another decision from Paris, and I actually
19
agree with Mr. Lewin, I think all of the decisions from Europe
20
don't really bind or are terribly relevant to the Court.
21
another decision in Paris dealt with the shoes made by Cesare
22
Paciotti.
23
Paciotti in France saying this infringed his rights and the
24
French court, and your Honor has the decision, rejected that
25
suit and said that Louboutin is not entitled to broad
This is Mr. Paciotti's shoe.
But
Louboutin sued
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protection for red.
2
the United States and has never been challenged in the United
3
States.
4
5
Indeed, Paciotti sells red-soled shoes in
So what is this case about?
What did Mr. Louboutin
say?
6
THE COURT:
Let me come back to a statement you made
7
concerning what happened in the French proceedings.
You
8
acknowledge that they did limit it there to high heels
9
specifically and also specifically to a particular Pantone, the
10
one ending in 63.
11
acknowledges that its mark is similarly limited to something
12
like what happened in the European Union application?
13
What if Louboutin either amends or
MR. BERNSTEIN:
Then this case is over, your Honor,
14
because for the first time on Tuesday, for the first time,
15
Louboutin took the position that this is their Pantone color,
16
and that's all they're seeking to protect.
17
back and looks at their initial preliminary injunction papers,
18
they talk about red.
19
request, tell us what Pantone number you used.
20
to, it was never offered to us.
21
deposition, Do you know what Pantone color you use.
22
no.
23
24
25
If your Honor goes
We asked in discovery, we had a discovery
Never responded
We asked Mr. Louboutin in his
He said
Then we said, Would you object -Your Honor, would you like me to hand up the full
transcript?
THE COURT:
No.
That's all right.
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MR. BERNSTEIN:
We asked Mr. Louboutin:
2
"Q.
Would you object if another designer made a shoe that had
3
an outsole that was any of these colors?"
4
him the Pantone book with the number of reds, he said:
5
"A.
And we were showing
I would have an objection if they use a red sole."
6
Then my partner, Mr. Hamid asks, just on the next
7
page:
8
"Q.
9
10
He answered:
"A.
11
12
I must see a red sole.
"Mr. Hamid:
That's not my question.
My question is,
would you object to any shade of red on a sole?"
13
14
Are all shades of red objectionable to you?"
Mr. Lewin then instructs his client not to answer that
question.
15
Your Honor, we tried very hard to know what is it that
16
we're allowed to do.
We actually showed Mr. Louboutin in his
17
deposition a number of Yves Saint Laurent shoes and asked him,
18
Do you object to this.
19
year's campaign.
20
Cruise 2011.
21
him and said:
Here's one, your Honor.
It's from this
Excuse me, the campaign that ended.
This is called the Gypsy shoe.
It's the
We showed this to
"Do you object to this?
22
He said, "I'll think about it."
23
We said, "Please do."
24
He said, "I'll think about it back in my office."
25
"Q.
If Yves Saint Laurent wants to know if it can sell the
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shoe or not, you can't tell us whether you object?
2
"A.
Right now?
3
"Q.
Yes, right now.
4
"A.
No, I can't say."
5
Your Honor, if Mr. Louboutin, in his deposition, can't
6
tell us what we're allowed to do and what we're not allowed to
7
do, how are we supposed to figure it out when we're designing
8
shoes?
9
It goes to the question of whether this should be a trademark
This goes, of course, to the more fundamental issue.
10
at all or whether it is aesthetically functional to take a
11
primary color like red, apply it to a shoe, and say we are the
12
only ones who have the right to make these shoes.
13
In Qualitex, the Supreme Court told us that although
14
color can be protected in appropriate circumstances, if the
15
color is something that is unique, it can be protectable, but
16
if it's being used in an anticompetitive way to give one party
17
monopoly rights over a useful feature, a feature that doesn't
18
exclusively serve a source-identifying trademark-like function,
19
then that's not something that's appropriate.
20
aesthetically functional, and the Supreme Court even noted some
21
other cases.
22
It would be
It noted the Brunswick case, your Honor, where there
23
was a claim that the use of the color black on boat engines,
24
which was trade dress, the Supreme Court noted with approval,
25
no, that's aesthetically functional.
You need to be able to
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use black for boat motors because it matches lots of different
2
types of boats, lots of different color boats; you want to be
3
able to coordinate, and also because black makes things look
4
smaller and so you might want your boat engine to look smaller.
5
The Supreme Court noted the John Deere case where
6
there was a claim that green-colored farm equipment serves as a
7
trade dress and protectable trademark, and the court said no,
8
that's aesthetically functional.
9
equipment to match and then I suppose the green blends in with
Farmers might want their
10
the green scenery.
11
recognized in those circumstances the color is not serving as a
12
trademark, but rather it's serving some other purpose, a
13
purpose that should not be monopolized, and that is the case
14
with Yves Saint Laurent shoes, your Honor.
15
Whatever it is, the Supreme Court
It's interesting.
One of the things I did in
16
preparing was I went back and I read the initial preliminary
17
injunction brief that was filed on April 7.
18
Louboutin's April 7 brief, they wrote, "YSL shoes never bore
19
red-colored outsoles."
On page 10 of
20
Now, we've learned that's not true.
21
May I move this up so you can see it, your Honor.
22
THE COURT:
Yes.
23
MR. LEWIN:
We're going to object to this.
24
document has never been shown before to us.
25
to us in discovery.
This
It wasn't provided
We have no idea of anything about this,
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your Honor.
2
We don't know whether the document accurately reflects
3
anything.
4
taken from, sir.
5
6
7
We don't know whether those pictures are accurate.
It's a chart and we don't know what the chart's been
THE COURT:
All right.
Mr. Bernstein will explain it
to you now.
MR. BERNSTEIN:
Your Honor, this is a demonstrative.
8
It's not an evidentiary hearing, of course.
9
demonstrative, just all drawn from documents that we've
10
produced in the case.
11
It's a
Saint Laurent, to put it in context.
12
Let me give a little history of Yves
The House of Yves Saint Laurent was founded almost 50
13
years ago.
14
one of his signature colors.
15
one who can make red dresses, but he did famously make red
16
dresses, and it's hard to remember in today's colorful world,
17
but back in the '60s that was quite a statement.
18
of his colors from the start.
19
Mr. Yves Saint Laurent or the House of Yves Saint Laurent
20
designed red-soled shoes, and your Honor has seen pictures of
21
those in the record.
22
we've not been able to find those old shoes; we're certainly
23
still looking for them, but you do have images of them.
24
25
In the early '60s, Mr. Yves Saint Laurent made red
Now, he didn't say I'm the only
Red was one
And starting in the '70s,
Unfortunately, in the time we've had,
Use of red-soled shoes by Yves Saint Laurent goes back
long before Mr. Louboutin himself first started using red on
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his shoes, which was, I believe, 1992.
2
Going back to 2003, looking at the last eight years or so, Yves
3
Saint Laurent has produced no less than 15 different models of
4
shoes that have had on them, and they've not had red outsoles
5
because we want people to think our shoes are from Christian
6
Louboutin.
7
To the contrary.
We go back to the '70s.
Yves Saint Laurent has its story
8
design history, Yves Saint Laurent wants its shoes to stand
9
apart.
We want people to know that when they buy an Yves Saint
10
Laurent shoe they know what they're getting.
11
doubt it because it comes in a box that couldn't say Yves Saint
12
Laurent bigger.
13
boutiques or in Yves Saint Laurent sections of department
14
stores like Bergdorf Goodman and Saks Fifth Avenue, so you know
15
exactly what you're getting, which is why Mr. Lewin said at the
16
start this case is only about postsale confusion.
17
possibly be confused when they buy an 800 or $1,000 pair of
18
shoes as to whether they're getting Yves Saint Laurent or
19
Louboutin.
20
You couldn't
They're sold only in Yves Saint Laurent
No one could
Your Honor, when we have used red, it has been not as
21
a trademark, not to say I want you to know who I'm from because
22
I have a red sole.
23
design element.
24
here, your Honor, so you can see the actual colors.
25
will agree with Mr. Lewin that when you print color, it doesn't
It's as a design element.
It's a critical
So on this chart, and we have all of the shoes
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always print the same way on paper as it does on leather and
2
the lighting conditions.
3
These are two shoes that are reflected in the first
4
column.
5
you and also give Mr. Lewin a smaller version of this so you
6
can see it.
7
in 2004, Yves Saint Laurent designed a collection that was
8
inspired by Chinese elements, and because it was inspired by
9
Chinese elements, he used red lacquered soles on his shoes.
10
Actually, if your Honor would like, I can hand up to
So the first column, your Honor, is from 2004, and
And I've got two of the actual samples here, your Honor.
11
Why did he use red lacquered soles on his shoes?
12
Chinese restaurants that I used to go to when I was a kid
13
always had red lacquered elements.
14
element that you see very often in Chinese-themed issues.
15
to each part of this whole collection, the shoes had this red
16
lacquered sole.
17
talking about a collection.
18
shoes and that's all they do, Yves Saint Laurent is an entire
19
fashion house.
20
21
The
Red lacquer is a key design
So
It's also important to understand that I'm
THE COURT:
Unlike Louboutin, which designs
You were never sued by the Chinese
restaurants, I assume.
22
MR. BERNSTEIN:
Fortunately not, your Honor, although
23
I know the Court has had a number of Chinese restaurant suits
24
lately.
25
So when Yves Saint Laurent designs a collection, it's
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a head-to-toe collection, and the shoes are part of that.
2
that Chinese collection, we had these Chinese shoes, and what
3
is most interesting is that Mr. Louboutin himself was at the
4
runway show where these shoes were shown.
5
Mr. Lewin said to you at the start this case isn't about runway
6
shows in Paris.
7
about Mr. Louboutin having seen these shows at the runway show
8
in 2004.
9
In
That's also why
He doesn't want this case to be about anything
But at the runway show in 2004, every single model
10
wore shoes with red soles.
11
goes back to 1992.
12
complained to Yves Saint Laurent when he saw these shoes, and
13
these shoes for us were huge sellers.
14
Mr. Louboutin claims his trademark
Here we are 12 years later, he never
We don't sell shoes the way Louboutin does.
As your
15
Honor will see from the chart, we sold only 3,800 pairs of
16
these shoes in the United States.
17
was an incredibly successful shoe collection.
18
just 2004, your Honor.
19
Germain.
20
campaign, once again with a red sole.
21
it's a used shoe it's a little bit scuffed, which is why the
22
image on the picture is a bit scuffed.
23
red-soled shoe in 2005, not a huge seller in the United States,
24
just a little over a hundred pairs, but still a prominent shoe
25
designed not because we want to take advantage of the rights
For Yves Saint Laurent, that
But it wasn't
In 2005, we had a shoe called the St.
This was a very well-known shoe featured in an ad
I apologize.
Because
But, once again, a
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that Mr. Louboutin may or may not have but because this was
2
part of the monochromatic theme of our collections.
3
creation of monochromatic color blocking is also a venerated
4
tradition of Yves Saint Laurent.
5
And the
It is just not true that when Christian Louboutin
6
designed his shoes in 1992 he separated his high-heeled shoes
7
from the masses.
8
for many, many years, and I know there were some chuckles about
9
it but King Louis XIV famously had red-soled shoes and Dorothy
10
in the Wizard of Oz, when I was a kid, had her red-soled shoes
11
that carried her home at the end of the day.
People have been using color on shoe bottoms
12
THE COURT:
13
MR. BERNSTEIN:
14
She still does.
Sorry.
Thank you, your Honor.
Wizard
of Oz.
15
It's not only red.
We have used many colors on shoes,
16
so if we design a blue shoe, your Honor, it has a blue sole.
17
If we design a green shoe, it has a green sole.
18
not for the sole to pop out, which is what the Louboutin shoe
19
does.
20
Mr. Lewin has brought a red version, but the classic Louboutin
21
look is this one where the red sole pops out from the rest of
22
the shoe.
23
of a monochrome style where, as part of an entire collection,
24
the whole shoe provides a block of color.
25
The idea is
The sole is designed to pop out from the shoe.
It's the contrasting upper as opposed to the concept
THE COURT:
Let me stop you for a moment to see if you
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can address Mr. Lewin's point about what Louboutin registered
2
and that particular color and to what extent you need to go
3
near the color between that Pantone and all the extremes of
4
red.
5
acknowledge would not cause them any problem.
6
what extent does Yves Saint Laurent have to go into their
7
territory, if they're claiming a territory?
8
9
There may be 20 different others that they would probably
MR. BERNSTEIN:
The issue is to
First of all, I think I started on
this and I forgot to finish my point, we have a declaration
10
that says we do not use their Pantone color, and we didn't know
11
about it so we couldn't have put it in earlier because when we
12
asked in discovery what Pantone color do you use, they refused
13
to produce the document, and when we asked Mr. Louboutin he
14
didn't give it to us.
15
THE COURT:
We know what it is now and if I'm reading
16
between the lines, Mr. Lewin says as long as it's not that
17
Pantone or something within a couple of degrees of it, you're
18
okay.
19
MR. BERNSTEIN:
It's the couple of degrees of it that
20
makes me nervous, your Honor, because we showed Mr. Louboutin
21
the Pantone book and we said tell us which of these reds we can
22
use, which ones we can't.
He said I can't tell you, I need to
23
see it on the actual sole.
So I guess what he's telling us is
24
we have to go ahead and produce the shoes and then go to Paris
25
and show them to him.
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THE COURT:
2
MR. BERNSTEIN:
3
Or go to court.
Or go to court, which would be a very
expensive way of designing shoes, your Honor.
4
The key point is this.
We do not use their Pantone.
5
We don't use this color, and if your Honor would like, I can
6
hand up a declaration, but I'm representing it to the Court.
7
actually don't think, though, that Mr. Lewin would be satisfied
8
because he wants the degrees.
9
degrees go, and from a preliminary injunction perspective,
I
The question is how far do those
10
candidly, this case, this motion should be denied for a number
11
of reasons, one of which is, as you can see from this chart,
12
your Honor, we've been doing this for years.
13
using relatively similar shades of red for years, and when we
14
design the shoes, we don't sit down and say let's pick the
15
Pantone of Louboutin and design our entire collection around
16
it.
17
We have been
Quite the contrary.
The creative designer for the Yves Saint Laurent
18
house, for each season, thinks about what will be the theme of
19
this season.
20
at issue here, the creative director said for this season I'm
21
going to hearken back to the color card used by Mr. Yves Saint
22
Laurent himself in 1967.
23
the Marrakesh collection.
24
25
And for the Cruise 2011 season, which is the one
THE COURT:
And it was the colors he developed in
You're saying, Mr. Bernstein, for every
season there's a color so this issue is going to be moot next
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2
year?
MR. BERNSTEIN:
Absolutely not, your Honor, because we
3
need to know that our designers are not constrained in having
4
to worry every time they want to design an entire collection as
5
to whether the red they want to use is going to be too close to
6
Mr. Louboutin's.
7
never have been issued, but even if it was, we have a fair use
8
right to use the color red in all of its shades in designing
9
our shoes.
10
This is a trademark registration that should
Now, I guess it would be an advisory opinion with
11
respect to this one Pantone color because none of our shoes use
12
this Pantone color.
13
should have said in your trademark registration, just as their
14
new registration in Europe says, this registration covers the
15
color red and specifically, Pantone 18-1663TP, which they could
16
absolutely have said in the description, and if that was
17
exactly what the registration was, they may have gotten that,
18
although I still believe it's aesthetically functional to take
19
a primary color and say you're the only one who has the right
20
to use it on the sole of a shoe, when so many other designers
21
have used it, and not just us, of course but Chanel.
So, if the Court were to say, Look, you
22
Louboutin puts in a declaration saying they spoke to
23
an unnamed store clerk in Boston who said Chanel doesn't make
24
red shoes so this might be fake.
25
Chanel and they have personally confirmed to me that this is an
I personally spoke with
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absolutely authentic shoe that was sold in the 2008 collection.
2
And in their declaration, they say this Christian Dior shoe
3
which our investigators found, someone told them we don't make
4
red-soled shoes, so it might be fake.
5
Dior.
6
7
MR. LEWIN:
Objection, your Honor.
With all due
respect, counsel's testifying now.
8
9
We called Christian
MR. BERNSTEIN:
I'm making representations.
There's
an affidavit, a declaration put in that said Debevoise &
10
Plimpton is trying to mislead the Court, and I must say I took
11
offense at that, your Honor.
12
declaration on Tuesday, we wanted to make sure that we were not
13
bringing shoes to Court that were counterfeit shoes.
14
an authentic Christian Dior shoe that was sold in their 2005
15
season.
16
able to use a primary color red as a design choice in designing
17
our shoes.
18
shoes.
And I won't bore your Honor with all the other
THE COURT:
20
MR. BERNSTEIN:
22
23
24
25
This is
We are not the only designer who feels the need to be
19
21
And so when we saw that
All right.
I think you get the point that this is
a color choice that many designers have the right to use.
THE COURT:
Begin to wrap up, Mr. Bernstein,
summarize.
MR. BERNSTEIN:
I'd say, your Honor, that the
preliminary injunction should be denied then for a wide variety
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of reasons.
2
is something that Yves Saint Laurent has done for many years.
3
Indeed, one of the things Mr. Lewin said to you is that there
4
was a quantum leap with our 2010 collection.
5
the sales, your Honor, you'll see in fact for better or worse,
6
our sales in 2010, 2011, were not as high as they were in some
7
past years.
8
of what we've done.
9
No. 1, there's no irreparable injury because this
There was no quantum leap.
If you look at
This is a continuation
On top of that, Mr. Lewin said to you that there were
10
negotiations in January and February and March.
11
respect, if you look at the declaration of the CEO of
12
Louboutin, Mr. Mourot, he concedes in his declaration that on
13
January 17 they receives a letter from Yves Saint Laurent
14
telling them we will not accede to your demands.
15
almost 12 weeks to bring this motion.
16
case, the Second Circuit says that is way too long.
17
indication that you have no irreparable injury.
18
With all due
They waited
Under the Cititrust
That is an
Not only is there no irreparable injury, there is no
19
likelihood of success.
20
because aesthetic functionality bars their trademark, because
21
our survey on secondary meaning shows that their mark doesn't
22
have secondary meaning.
23
There's no likelihood of success
We don't dispute, your Honor, that many people
24
associate red soles with Louboutin, but they don't exclusively
25
associate.
When we asked people in our survey, does only one
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company or more than one company make red soles, only 24
2
percent say one company.
3
questions, but I won't go into them now, your Honor.
4
We could go on about the survey
Then, of course, we have our survey.
The postsale
5
confusion survey that Louboutin has offered, which showed 49
6
percent confusion, showed an incredibly unfair stimulus of the
7
shoe with someone's heel hanging in the air.
8
concept of postsale confusion doesn't apply in this context
9
when we're talking about equally expensive and high quality
Now, the whole
10
shoes.
11
show people a fair stimulus of how they would see it in the
12
marketplace, not a giant image with someone's shoe up in the
13
air like this, focused directly on the sole, which is a leading
14
way of saying, I'm asking you about the red sole.
15
survey expert did a video where people if you saw someone
16
walking around, you could see all aspects of the shoe, the top,
17
the bottom, the sole, and found negligible confusion.
18
But even if you were going to do a survey, you need to
Instead, our
Finally, your Honor, even in the unlikely event that
19
there was confusion, our fair use defense would bar this claim
20
because we are not using the color red on the bottom of our
21
shoes in any way as an indicator of source of trademark.
22
are using it in good faith, in a descriptive fashion, whether
23
it's to describe a Spanish theme or a Chinese theme or for this
24
monochrome key style.
25
We would respectfully ask that the preliminary
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injunction be denied.
2
THE COURT:
3
MR. BERNSTEIN:
4
THE COURT:
Mr. Lewin, did you want to respond?
5
MR. LEWIN:
Just a few minutes, your Honor.
6
If I may, your Honor, before I go further, if I can
7
Thank you, your Honor.
just approach for a second.
8
9
Thank you.
On the back of the Louboutin business card is the
Louboutin trademark that was the subject of the Paciotti
10
dispute and subject of the recent ruling of the high court in
11
France overturning it.
12
unenforceable.
13
because the name Christian Louboutin was on the bottom of one
14
shoe and the name of Paciotti was on the bottom of the other
15
that they made the distinction with that other trademark.
16
ultimate demise, properly so, was because it did not picture
17
itself on a shoe.
18
picture.
19
The Paciotti case did not hold it was
The Paciotti case held in their instance
Its
It could be anything that particular
With respect to the statements that were made by
20
Mr. Bernstein, if I can, first of all, the sales numbers, those
21
sales numbers are taken from Ms. Vaissie's affidavit, her
22
declaration.
23
there is not a single document showing sales, not one.
24
no receipts.
25
documents.
If you notice, your Honor, in her declaration,
There's no consumer documents.
There's no shipment documents.
There's
There's no sales
It's Ms. Vaissie
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testifying that she thinks her records show or that the records
2
appear to show something about sales.
3
That's the first thing.
The second thing, your Honor, is as your Honor has
4
right in front of it, that's one of the colors that's over
5
there.
6
would have no objection, your Honor.
7
and they talk about what they can do and what they can't do,
8
that shoe fits fine.
9
Three shoes on that list are that color, to which we
They talk about guidance
In terms of fashion, your Honor, and the so-called
10
need to use this particular color, there are several hundred
11
reds in the 9,000 colors of Pantone, and a fashion expert,
12
Gabriele Goldaper, indicated very clearly that to make a shoe
13
go with a collection, you do not need the bottom.
14
talking about the shoe.
15
edge would be perfectly suitable to match in anything they had
16
in that color.
17
anything of its kind.
18
We're not
This shoe, this YSL shoe, with a red
We're not talking about owning the color red or
THE COURT:
Mr. Lewin, we were narrowed before to a
19
question of degrees.
20
starting from 63 how many up and how many down from that scale
21
you would find infringing?
22
MR. LEWIN:
Have you identified on the Pantone scale
Offhand, your Honor, no.
But you can take
23
guidance from Judge Sweet's decision in Oil of Olay back in
24
1978 when he was unable at a preliminary injunction stage to do
25
it.
He ordered the defendants to stay 40 percent away.
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was his solution at least temporarily.
2
red?
3
red-orange?
4
mathematical calculation with a Pantone scale in front of me?
5
No.
6
scale is all about.
7
designs shoes.
8
scale off a page that somehow or other he can tell what's
9
infringing or noninfringing, he's not a lawyer.
No.
Are we troubled by pink?
No.
Are we troubled by dark
No.
Are we troubled by
Have I sat down personally and done a
Mr. Louboutin can't because he doesn't know what a Pantone
He's a designer.
He sits with markers and
This claim that because he can't pick a Pantone
He's a
10
designer.
11
this, and they said to him, which one, what do you see, he said
12
I see my red shoe, I see my red outsole, when he talks about
13
what it has to look like, your Honor.
14
15
He said when they showed him two shoes, sir, like
What we are saying at the end of the day is the
following --
16
THE COURT:
All right.
But, Mr. Lewin, I'm sure that
17
you're not suggesting that Yves Saint Laurent has to go to
18
Mr. Louboutin and ask for permission.
19
MR. LEWIN:
No, not at all, your Honor.
20
THE COURT:
Are you saying that this Court then should
21
take 63 and say up ten percent, down ten percent is okay, and
22
that gives them the guidance they need?
23
MR. LEWIN:
I'm not sure this Court is supposed to
24
give them that kind of guidance, your Honor, but I am saying
25
this.
I think a preliminary injunction should lie against the
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shoes that are at issue in this case, and I think that further
2
if they wanted to get guidance going forward as to what they
3
could do and what would be permitted to be done, if the Court
4
felt it was in its competency to do that, and Judge Sweet
5
certainly did, was to say stay X percent away, yes, sure.
6
that's not the question.
7
But
The question is whether these four shoes infringe on
8
the Louboutin red outsole, and they're saying that they have to
9
have it, that there's some sort of aesthetic need to use a red
10
outsole to match clothes.
11
fashion declarations say to you.
12
your Honor.
13
United States of any of these red shoes of any quantity, and
14
they throw in this panoply of red shoes which are clearly
15
infringing and shoes which are not.
16
you, your Honor, is not.
17
the red that Louboutin has.
18
There isn't.
That's what the
The attorney is testifying,
There's no evidence here, none, about sales in the
The one there in front of
This one, it is.
It looks just like
Now, I'm not a mathematician and I'm not a designer,
19
but if I was, as Mr. Russo is, their own guy, I would know how
20
far away to stay.
21
THE COURT:
22
MR. BERNSTEIN:
23
THE COURT:
24
MR. BERNSTEIN:
25
All right.
Thank you.
One minute, your Honor?
One minute.
No. 1, if there's any question about
the providence of that chart, your Honor, I'm handing Mr. Lewin
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and the Court a version that has the cites from the record for
2
every fact that's there.
3
No. 2, my last point, your Honor, these are two shoes
4
that are on the chart from 2009.
We showed both of them to
5
Mr. Louboutin at his deposition, and he said I object to both
6
of those.
7
kind of proof that there's no irreparable harm, that we were
8
selling these shoes two years ago.
9
your Honor can compare them.
That's two years ago, your Honor.
That alone is the
Those are different reds,
Indeed, I believe, although I'm
10
not looking at it in front of you, that the Grenade shoe was
11
shown to Mr. Louboutin and my recollection is that he said I
12
don't know.
13
the two, but he said I don't know about this one, it's very
14
close.
15
It may have been Mr. Mourot.
I may be confusing
The point is they don't know, we don't know.
16
a mark that should not be a trademark at all.
17
This is
shouldn't be enforced against these shoes.
18
Your Honor, thank you very much.
19
THE COURT:
It certainly
Thank you very much.
That was very
20
helpful, and we will reserve judgment and attempt to issue a
21
ruling as soon as possible.
22
MR. LEWIN:
Thank you, your Honor.
23
THE COURT:
I should have taken care of one other
24
point.
Assuming for the moment that this case were to go to
25
trial, how soon would the parties be prepared to go to trial?
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2
Assume as short a leash as possible.
MR. LEWIN:
Mr. Louboutin's biography is coming out, I
3
know this may sound a little far afield, at the end of October,
4
and they have planned almost a yearlong 20th anniversary
5
celebration, worldwide celebration.
6
Mr. Louboutin anticipating something like this, and we are
7
advised that in between, this has been a year in the planning,
8
that somewhere around the end of November, possibly the
9
beginning of December, would be the very earliest.
10
THE COURT:
12
Mr. Bernstein.
13
MR. BERNSTEIN:
Otherwise,
it just won't work.
11
We had talked to
Thank you.
First of all, your Honor, I think the
14
next step after what we hope is denial of the preliminary
15
injunction will be a motion for summary junction on aesthetic
16
functionality and fair use.
17
will dispose of the case.
18
Honor, we are prepared to move very expeditiously.
19
defendants don't stand up and say let's try it fast.
20
like this resolved.
21
THE COURT:
We think as a matter of law that
But if there is to be a trial, your
Normally
We would
If you wanted to resolve it this year,
22
don't look to summary judgment.
23
years from now if there's no appeal.
24
25
MR. BERNSTEIN:
You'll get a decision two
We're prepared to have no discovery
and to go right to trial on this case because I think the
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issues are that straightforward.
So we would be looking to
2
move quickly, and the reason I say that is we design four
3
seasons a year.
4
Damocles over the designers, what are they allowed.
5
not just Yves Saint Laurent.
6
watching this case.
We have a lot of reporters from the
7
fashion world here.
Women's Wear Daily has been reporting on
8
this case every day.
Other fashion companies are concerned
9
about this overreaching claim.
This case is now hanging like a sword of
And it's
All of the fashion world is
So we would like, your Honor,
10
as quick a trial date as possible, and we're prepared to do it
11
with no more discovery.
12
already, and we'd like to move forward.
We think the parties have had enough
13
THE COURT:
Thank you.
14
MR. LEWIN:
Your Honor, may I just point out.
15
THE COURT:
Yes.
16
MR. LEWIN:
This chart that was just handed to you by
17
counsel would indicate that we want discovery.
This is bogus.
18
These references to the record are all to Ms. Vaissie's
19
declaration.
20
We're going to question her on this.
21
discovery, your Honor.
Ms. Vaissie's declaration has no proof on it.
22
THE COURT:
23
All right.
So for sure, we want
and a good evening.
24
MR. BERNSTEIN:
25
MR. LEWIN:
Thank you.
Have a good day
Thank you, your Honor.
Thank you, your Honor.
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