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, [phone]. 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)

1
17mWchrC
1
2
3
4

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

5

Plaintiffs,

6
7
8

v.
YVES SAINT LAURENT AMERICA,
INC., YVES SAINT LAURENT
AMERICA HOLDING, INC, et al.,

9
10

11 CV 2381 (VM)

Defendants.
------------------------------x
New York, N.Y.
July 22, 2011
3:30 p.m.

11
12
Before:
13

HON. VICTOR MARRERO,
14
District Judge
15
APPEARANCES
16
17
18
19
20
21

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

22
23
24
25
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

2
17mWchrC
1

(Case called)

2

THE COURT:

3

This is a proceeding in the matter of Louboutin v.

Good afternoon.

Thank you.

Be seated.

4

Yves Saint Laurent, docket No. 11 CV 2381.

5

this hearing on the application of the plaintiff for

6

preliminary injunctive relief.

7

received and reviewed the submissions from both sides,

8

voluminous as it is, and this hearing is scheduled as a formal

9

hearing on the record on the application.

10
11

In this case, the Court has

Let's first address housekeeping matters of how long
the parties contemplate for their respective presentations.

12
13

The Court scheduled

MR. LEWIN:

Your Honor, Harley Lewin, for the

plaintiffs, your Honor.

14

We were informed that there was an hour set aside.

15

planned for about 20-some-odd minutes and if I could hold a

16

couple minutes back in reserve for reply.

17

THE COURT:

18

MR. BERNSTEIN:

We

All right.
We had heard the same, your Honor, and

19

so we'll be prepared to go for about half an hour, subject to

20

whatever questions your Honor may have.

21

THE COURT:

All right.

22

begin.

23

So in that event, let us

going to be attorney argument?

24
25

Do any of the parties have witnesses, or is it just

MR. LEWIN:

Again, your Honor, this is a motion

hearing, no testimony.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

3
17mWchrC
1

THE COURT:

Shall we begin?

2

MR. LEWIN:

With pleasure, your Honor.

May I

3

introduce myself.

I'm Harley Lewin for the plaintiffs,

4

McCarter & English, with my colleague Lee Bromberg.

5

permission, sir, we have the general counsel of Christian

6

Louboutin, Mr. Xavier Ragot, and we've asked him to join us at

7

this table.

8

THE COURT:

All right.

9

MR. LEWIN:

With your

Thank you.

10

Sir, your Honor, this is a case about, in very simple

11

terms, one of the iconic and strongest visual cues in our view

12

that's come in the 20th Century and the beginning of the 21st

13

Century, the red outsoled, bright red lacquered outsoled

14

Christian Louboutin.

15

marks certainly from 2000 to 2011.

16

everyone's testimony and has achieved a spectacular public

17

acceptance.

18

visual cue, and it has been in use that way for 20 years on

19

virtually all of the shoes Mr. Louboutin brought into the

20

United States.

21

March 28, 2011, which they call Sole Mate, S-O-L-E, said that

22

it took an otherwise indistinguishable product, the high-heeled

23

shoe, and separated it from the masses.

24
25

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.
[phone]

4
17mWchrC
1

extraordinary source indicator to the public.

2

graced by the fashion world, celebrities, television, media.

3

We sent you, as you say, voluminous evidence to that extent.

4

YSL knows this.

5

They searched for many years for a comparable visual cue and

6

never were able to develop one.

They knew it.

It has been

Their people have admitted it.

7

Ms. Vaissie, in her deposition testimony was

8

specifically asked whether they were able to develop a strong

9

visual cue, and she said no.

Since then being clever, what

10

they did was to take what may have been an incidental

11

time-to-time use of a red outsole of a shoe and they took a

12

quantum leap at the end of 2010.

13

least five shoes that we're aware of, four that we were aware

14

of when we filed the complaint, a fifth that has since been

15

discovered, landed in the United States.

16

In the beginning of 2011, at

What's happened now is after several months of

17

negotiations in January and February and then March, when

18

negotiations proved fruitless and there was no ability to

19

settle the case, on an amicable basis, Louboutin promptly filed

20

a lawsuit and, as your Honor is aware, sought at that time

21

preliminary injunction.

22

scheduling and calendar and foreign as well as domestic

23

discovery.

24
25

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.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

5
17mWchrC
1

First, the focus here is on postsale confusion; the confusion

2

that occurs after somebody buys something and it goes walking

3

down the street, or, in the case of Louboutin, as seen on JLo's

4

feet or as seen on the red carpet of the Oscars or the media,

5

but it's postsale confusion.

6

The second thing we ask you to keep in mind, your

7

Honor, is that we address the U.S. market.

8

runway shows in Paris, what may or may not have happened

9

somewhere else in the world.

10

We don't address

The third thing that we're talking about, your Honor,

11

is that we're not talking about shoes.

12

what occurs on the upper part of the shoe, only the outsole,

13

just as is pictured in the trademark over on the easel before

14

you.

15

No one is talking about

In terms of foreign law, we recently asked the Court

16

to at least consider a decision that was made the other day by

17

the second level of the Court of Appeals of the OAMI, which is

18

the high court ruling on trademarks.

19

would be rude of us to even imply that somehow or other that

20

court was offering guidance to your Honor.

21

virtually every objection that has been raised by YSL in these

22

proceedings has been considered by the Court and we would hope

23

very much that after today's hearing, a ruling by your Honor

24

would be similar.

25

We do not, of course, it

But we do note that

I would note finally without a preliminary injunction
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

6
17mWchrC
1

there's a very, very good chance that the YSL shoes that are

2

held in inventory will return, the weather is quite warm, that

3

the third parties that are watching this case so closely will

4

see or interpret it as a possibility for them to reenter the

5

market.

6

harm is bound to occur under the circumstances we're faced

7

with.

8
9

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.

10

MR. LEWIN:

Correct.

11

THE COURT:

But now you've introduced something of

12

what happened in Brussels with the decision by the European

13

Union court.

14

European Union court, there was a Court of Appeals of Paris

15

decision which essentially did not recognize the mark in that

16

particular case.

17

application of the second Court of Appeals decision which came

18

out after the European Union and also whether or not we're

19

looking only at what happens in the United States or does this

20

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

21

MR. LEWIN:

Let me take the second part first.

22

I don't think the decisions in either case have a

23

direct bearing on your Honor's decision today.

I think the law

24

is very clear that trademarks are territorial in application of

25

the Lanham Act in this case, is applicable to the events in the
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

7
17mWchrC
1

United States.

2

interesting and we thought possibly helpful discussion in the

3

second case, OAMI case.

4

I do think, however, that there is an

As to the second part or first part of your Honor's

5

statement, the decision of the French court involved a

6

different trademark.

7

that's what's so interesting.

8

essentially is a sort of a drawing of a red sole but simply

9

without any shoe on it, and if you read the decision very

It does not involve that trademark.

And

It involved a trademark that

10

carefully, they make a point of that.

11

strength of the trademark.

12

with the public.

13

but they said that's not what's before them.

14

They acknowledge the

They acknowledge the association

They acknowledge it as a source indicator,

What's before them is this other trademark, and then

15

for very unique reasons in France, under French law, it did not

16

qualify as a trademark.

17

mark is the same mark that is before your Honor, that mark that

18

is registered in the United States, and that mark received a

19

ruling from the OAMI that indicated that they were going

20

forward with registration of that mark in 27 countries.

21

THE COURT:

What was so interesting is the second

All right.

Let's address that for a

22

moment because there the Court essentially constrained the mark

23

in two very significant ways.

24

It has Pantone with a specific number Pantone, and it also said

25

high heels.

One is it's not the color red.

We're not talking about just any old footwear.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

If

8
17mWchrC
1

you look at the chart you have on the board there, which is the

2

U.S. registration, your client's registration in the U.S. says

3

the color red is claimed as a feature of the mark and also says

4

that it's for footwear.

5

high-heeled footwear or for low-heeled footwear or for flats or

6

for platforms.

7

It doesn't say that it's for

Coming back to the question of red, your registration

8

says the color red is claimed as a feature of the mark.

9

you five drawings.

Which of these is red?

I show

I represent to you

10

that these are different shades taken from a computer.

11

under your registration, which of these would be red?

12

MR. LEWIN:

But

Your Honor, you've asked the question in

13

two parts, both with the verbal description as well as the

14

sample, the drawing of the mark.

15

office, under its TMEP guidelines, specifically states and

16

requests that people use a general verbal description of the

17

mark to be registered.

18

United States trademark

THE COURT:

But you use the very general description

20

MR. LEWIN:

Yes, your Honor.

21

THE COURT:

All right.

22

MR. LEWIN:

That's not what governs.

19

of red.
If I may.

That's not what

23

the law says.

The law says what governs is the sample

24

submitted and the drawing of the sample is required to be the

25

same as the sample submitted.

In the case of any conflict

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

9
17mWchrC
1

between the language that's used and the sample that's

2

permitted, you go with the sample, that color.

3

Our mark is that color.

Whether it's Pantone 18-1663,

4

whether it's some other Pantone number, that's the color.

In

5

terms of your question, which one of those would be infringing,

6

I would compare any of those to that color.

7

close, it would be infringing.

8

would not be.

9

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

10

this out, the commission of trademarks in her declaration, is

11

that when you search a mark electronically now, they want you

12

to be able to search using common words.

13

give examples in the USPTO.

14

brown, something-something, and they're presuming that you may

15

or may not know the Pantone number that you're searching for.

16

So what they say is you type in red and then you get this and

17

you pull that up, and as a second-comer, your duty is to

18

compare it to the mark that's registered.

19

They specifically

What they don't want is red,

What's very clear, your Honor, if you look at the file

20

that was submitted in this case, the trademark application

21

submitted a photograph of a shoe, not an actual Louboutin shoe,

22

but a photograph of a shoe.

23

photograph is reproduced in that drawing and that red is the

24

same red that's in that sample.

25

specifically says is that that's the red that governs.

And in that regard, that

And what the law very

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

There's

10
17mWchrC
1

no requirement to use the Pantone number, and you are asked by

2

the PTO to use general color language.

3
4

THE COURT:

It's not the words.

Let's suppose for the moment that this is

that red.

5

MR. LEWIN:

All right.

6

THE COURT:

All right.

7

And let's say for the moment

this is not.

8

MR. LEWIN:

Yes, sir.

9

THE COURT:

So you see JLo walking down the street

10

using shoes of this color and then comes Angelina with shoes of

11

this color.

12

MR. LEWIN:

Yes, sir.

13

THE COURT:

Is it your view then that if Angelina is

14

wearing Yves Saint Laurent shoes of this color would not

15

infringe upon the mark?

16

MR. LEWIN:

No, sir.

No, sir.

If that were the color

17

that was reproduced on the shoes that Angelina was wearing at

18

YSL, she would be infringing.

19

It would be too close, and the likelihood of confusion, as you

20

measure it under any other circumstances, would be too close.

21
22
23

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

24

that on the back of shoes and when shoes are in the street,

25

there's a particular image that gets cast, and that image is
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

11
17mWchrC
1

the image that matters.

2

Let me give you an example.

This is a red.

This is a

3

red that's cited by Ms. Vaissie in her declaration as one of

4

the red shoes that YSL has brought in over the years.

5

the Divine shoe and the color that she cites is Grenade, this

6

color.

This is

7

May I approach the bench, your Honor.

8

THE COURT:

Sure.

9

MR. LEWIN:

Now, that arguably falls within the red

11

THE COURT:

Yes.

12

MR. LEWIN:

In our view, that's not infringing.

10

family.

It's

13

a dark, wine color, and it wouldn't be infringing.

It doesn't

14

resemble this color, which is another YSL shoe, which in our

15

view is infringing.

16

THE COURT:

Let me then turn to another question.

The

17

sample raises another question.

18

says it is for lacquered red shoes.

19

what lacquered means, perhaps you can explain it, but this has

20

a kind of a red leather.

21

color, your Pantone, whatever it is, but it's not shiny, it's

22

not like nail polish, but it's Benjamin Moore flat, would that

23

be infringing?

24

MR. LEWIN:

25

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.

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

12
17mWchrC
1

Let me make a distinction.

There's a distinction

2

between what we claim that we own is a trademark and what may

3

or may not be infringing as a trademark.

4

outsole is precisely that.

5

on like paint.

That bright lacquered

Lacquer is a clear material sprayed

6

THE COURT:

Laminate.

7

MR. LEWIN:

It's not a laminate as much as it is a

8

ladies' nail polish and then they buff it and make it bright

9

and shiny.

And Louboutin's testimony is they do much the same.

10

Mr. Russo testified in his deposition that they hand rub shoes

11

to achieve the shiny effect.

12

rights are limited to that which is identical to his mark.

13

think like any other trademark question, it's a factually

14

intensive inquiry.

15

name or logo or design against what's been registered and

16

what's been used.

17

that if you want to take lacquer, for example, that the effect

18

of lacquer could be achieved by some other means, I don't know,

19

polishing by hand or something, shoe polish or something or it

20

may be dulled or as you say glint in the street.

21

there's a simple question here, how close can someone come to

22

what's been a properly registered, valid, strong trademark and

23

I don't think there's any right under any circumstances to come

24

so close that you confuse people.

25

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

13
17mWchrC
1

of your registration.

2

footwear.

3

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

4

the lines, is essentially saying you overreach if what you want

5

is red on any kind of shoe.

6

particular Pantone ending in 63 red and high heels.

7

is it here?

8
9

So which

And where does it say that?

MR. LEWIN:

Your Honor, not footwear.

It says women's

high fashion designer footwear.

10
11

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?

12

MR. LEWIN:

I don't think it means dollars, your

13

Honor.

I'm inclined to think based on the drawing and the

14

sample submitted it means the height of the heel.

15

claiming --

I'm not

16

THE COURT:

17

dress high fashion?

18

MR. LEWIN:

Depends on the dress.

19

THE COURT:

Is a Size eight high fashion but size two

MR. LEWIN:

No, your Honor.

20
21
22
23

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

24

you're saying that high fashion there defines heels and I'm

25

wondering whether under ordinary language that would be a fair
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

14
17mWchrC
1

interpretation of what high fashion means.

2

It says high

fashion designer footwear.

3

MR. LEWIN:

Women's.

4

THE COURT:

Yes.

MR. LEWIN:

I can't answer specifically that, you also

5
6

Women's also.

Women's.

We're in agreement on

that.

7

add the word designer, and I think that that has clear meaning.

8

I don't think it means an average piece of footwear.

9

add each of those components together, women's, designer, high

10

fashion shoes, I think that the examiner was comfortable with

11

that description and I think it carves out a market, a niche

12

market to which this trademark applies.

13

the Air Jordan sneakers that came out in the '80s in red, for

14

example, whether men's or women's.

15
16
17

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

18

knowledge, and I could be corrected, I don't know of too many

19

designer's high-end luxury orthopedic products that are out

20

there today.

21

THE COURT:

That's probably true.

But the important

22

point is that the EU court basically said if you're talking

23

about footwear that's red without anything more, that may be

24

overreaching.

25

MR. LEWIN:

I agree.

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

15
17mWchrC
1

THE COURT:

And they said we are going to limit it in

2

several respects:

One, high heel; two, particular Pantone;

3

three, high fashion designer type stuff, not orthopedics.

4

MR. LEWIN:

I agree.

5

THE COURT:

But my question to you is:

6

I agree.
Where in this

case do you have those kinds of limitations?

7

MR. LEWIN:

You have exactly that limitation, your

9

THE COURT:

Where?

10

MR. LEWIN:

This color is the only color registered

8

11

Honor.

for Louboutin, whatever you want to call it.

12

THE COURT:

I grant you that what you've said is the

14

MR. LEWIN:

That's right.

15

THE COURT:

But you're not addressing the question of

13

16
17

color.

lacquered red.

You're not addressing the issue of footwear.

MR. LEWIN:

I am addressing the issue of footwear in

18

its description because I said it's women's high fashion

19

designer, and I think that those have very specific meanings.

20
21
22

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

23

outsole, it may well be because it sells for $800 and it's a

24

designer product.

25

lowered it even further to a relative flat shoe and it came in

But if you took that same shoe and you

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

16
17mWchrC
1

under someone's no name, it might or might not be because I

2

think the issue is not identical, it's infringement.

3
4
5

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

6

to infringement under those circumstances.

7

Honor, there are certain shoes before you that would be a very

8

close call under the circumstances, those Chinese shoes that

9

were supposedly put in.

10

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.

14

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

16

other manufacturer wishes to see whether it is infringing, it

17

would have to come to a court and ask the judge to compare that

18

red versus some other red, shoe by shoe, and determine whether

19

or not it infringes.

And the difficulty I'm

20

MR. LEWIN:

Your Honor, may I.

21

THE COURT:

Yes.

22

MR. LEWIN:

I'm sorry.

23

THE COURT:

No.

24

MR. LEWIN:

If you just give me a moment, I want to

25

I don't mean to interrupt.

Please do.

look for one particular reference.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

17
17mWchrC
1

THE COURT:

Yes.

2

MR. LEWIN:

I guess if I boil this down, what I'm

3

saying is the following:

The criteria you've outlined I think

4

are really no different than if somebody wants to adopt a word

5

that's similar to a made-up word.

6

adopt the word Esson, or something.

7

close?

8

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,

10

they're going to look at the marketplace, and they're going to

11

make a judgment.

12

trademark field, what is or is not too close.

That happens every single day in the

13

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.

16

of distinctive red is specifically provided as a matter of law

17

because the sample governs, not the words.

18

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

21

intends to use, with the color there.

22

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

18
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

19
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

20
17mWchrC
1

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.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

21
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

22
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

23
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

24
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

25
17mWchrC
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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

26
17mWchrC
1

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.

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

27
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

28
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

29
17mWchrC
1

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,

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

30
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

31
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

I actually

32
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

33
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

34
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

35
17mWchrC
1

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.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

36
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

37
17mWchrC
1
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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

38
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

39
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

40
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

We

41
17mWchrC
1

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

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

42
17mWchrC
1

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.
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

That

43
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

44
17mWchrC
1

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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

45
17mWchrC
1

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?
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

46
17mWchrC
1
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
SOUTHERN DISTRICT REPORTERS, P.C.
[phone]

47
17mWchrC
1

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.

SOUTHERN DISTRICT REPORTERS, P.C.
[phone]