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

Filing 56

TRANSCRIPT of Proceedings re: Conference held on 7/27/2011 before Judge Victor Marrero. Court Reporter/Transcriber: William Richards, [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)

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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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CHRISTIAN LOUBOUTIN,

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Plaintiff,

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v.
YVES SAINT LAURENT,

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11 CV 2381 (VM)

Defendant.
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July 27, 2011
11:00 a.m.

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Before:
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HON. VICTOR MARRERO,
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District Judge
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APPEARANCES (Via telephone)
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MCCARTER & ENGLISH
Attorneys for Plaintiff
BY: HARLEY LEWIN
LEE BROMBERG
DEBEVOISE & PLIMPTON
Attorneys for Defendant
BY: DAVID BERNSTEIN
JILL VAN BERG

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THE COURT:

Good morning, this is Judge Marrero.

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MR. LEWIN:

Good morning, your Honor, this is Harley

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Lewin, and I have Lee Bromberg on the phone with me for

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plaintiffs.

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MR. BERNSTEIN:

Your Honor, it's David Bernstein at

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Debevoise & Plimpton.

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represent Yves Saint Laurent.

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THE COURT:

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short notice by this means.

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I'm with Jill Van Berg, and of course we

All right, thank you for responding on

I scheduled a conference, in part, in response to

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Mr. Lewin's letter of July 25, asking whether there would be

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any interest on the part of the Court for the parties to

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address some of the questions that came up at the hearing last

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week.

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Mr. Bernstein, did you receive this letter?

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MR. BERNSTEIN:

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We did, and we're prepared to address

those same points as well, your Honor.
THE COURT:

All right.

Now before we get there, I had

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a couple of questions that I wanted to pose that did not come

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out clearly at the conference.

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Mr. Lewin, the plaintiff's allegations here are that

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Louboutin has been using the red sole on these women's shoes

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since roughly 1992, and it registered the mark in the United

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States in 2007.

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mark commenced in 1992, was it the same shade of red that was

One question is, when the use of this red sole

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involved in the case that went to the European Court; has

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Louboutin, in other words, used that same exact shade uniformly

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and consistently throughout its entire claim to that particular

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mark?

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MR. LEWIN:

The answer to that is yes, your Honor.

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MR. BERNSTEIN:

Although, your Honor, if I may,

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there's a very interesting anomaly that only came to our

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attention when Mr. Lewin focused us on the trademark

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registration through his letter.

And that is that Louboutin

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has two trademark registrations.

The one that Mr. Lewin showed

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you on the big board in court is a U.S. registration 3361597,

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and you saw that that had the dotted line of a high heel shoe

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with a particular red sole.

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But in preparing for this morning's call, and after

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reading Mr. Lewin's letter, we went and we looked at the second

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trademark registration that Louboutin has in the United States,

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and it's based on the French registration that was at issue in

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the Paciotti case, and the U.S. registration is 3376197.

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that's based on their international registration, which is

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number 0902955.

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And

What was very interesting to me when I looked at that
is that it's a different shade of red, your Honor.
THE COURT:

Well, Mr. Bernstein, you have anticipated

the question that I had, which is exactly where you're driving.
My question was what was the registration, the color
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shade of the registration that Louboutin obtained in the United

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States in 2008?

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it has been using since 1992, and which was the subject of the

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French or the European application, and whether Louboutin has

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been using that color consistently in all of its products as

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sold in the United States, or has there ever been any variation

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of the color to some other shade of red during the course of

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its claim to that mark?

Is it exactly the same as the other color that

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MR. LEWIN:

Your Honor --

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THE COURT:

Yes.

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MR. LEWIN -- this is Mr. Lewin again.

I think there

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is a little bit of a misdirection here, but let me answer your

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question directly.

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Mr. Louboutin was asked and answered a question in his

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deposition and I have -- I can tell you that I've confirmed it,

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that the shade of red he used on the shoes since 1992 has not

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varied from the red selected by Mr. Louboutin when he first

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printed the shoe -- red nail polish.

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consistently used by Mr. Louboutin on virtually every single

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shoe that's been produced, period.

That red has been

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THE COURT:

Both here and in Europe?

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MR. LEWIN:

Yes, sir.

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THE COURT:

All right.

And is that shade the same

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shade that is the subject of the U.S. application?

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this is another variation, Mr. Lewin.

And now

You recall that when we

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discussed the matter at the hearing, you, yourself,

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acknowledged that sometimes shades on paper don't come out

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exactly the way they should because it depends on absorption by

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the fabric and all kinds of other factors, so that what's on

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paper may not necessarily be the same shade that you may find

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on a shoe.

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follow-up competitor be able to determine which red it is,

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since the paper itself is not the indicator of what the mark

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is?

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And to that extent, the question is, how does a

MR. LEWIN:

Well, let me answer that as well.

In the

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first, in the first instance, of course, you're right, your

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Honor.

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of whether a particular shade one may select, may indeed print

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differently on paper versus leather versus cloth.

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I think both sides I think acknowledge that regardless

The TMEP, and when you apply for a color mark,

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specifically requires that the digital image that is submitted

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as the drawing in connection with a color, has to be an

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accurate representation of the mark as applied for, meaning

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that the mark that's used on footwear.

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perhaps some difference between the mark that may appear on the

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footwear and the mark that's registered, the fact in terms of

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infringement or the judgment of the infringement is the mark

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that's registered governs.

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language.

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says under Section 807.07C, when the color is shown on a

So while there is

There is very very specific

In fact, your Honor, in the TMEP that specifically

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drawing page and paper or digitized image is inconsistent with

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the color claimed in a written application, the drawing

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controls, meaning that the drawing is what is supposed to give

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notice of your color to a second color that is being registered

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or in fact has been registered.

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In terms of the second part of your question, your

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Honor, which is, how does a second comer know what to do.

The

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second comer is I think held to the standard that -- the same

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standard that Judge Sweet enunciated in the Olay case in 1983

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which is, essentially, a judgment that is made to stay far

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enough away from that particular color.

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for example, a red to the outsole of a shoe, the issue becomes

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that whether that red infringes upon the red that's registered,

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which is a legal judgment of likelihood of confusion.

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somebody in an industrial format, such as the designer Russo or

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others in the design group of YSL were to select a red, they

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know well enough to know that the way you avoid the problem is

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to stay far enough away.

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If somebody applies,

If

That question, your Honor, is one that we did address

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a little bit.

And I used an example of a ward mark that -- or

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the point is that the obligation is not on us to tell them nor

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is it upon a court necessarily.

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second comer to avoid the confusion.

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Olay case, where it was the so-called Ryan extension, Judge

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Sweet held the second comer not to be able to use the

The obligation is on the
And that -- even if the

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particular color scheme that was used in that case by the first

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registrant.

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So it's a judgment call.

THE COURT:

There's no bright line.

All right, thank you.

And I acknowledge

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that you did address -- you did address at least the latter

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portion of this discussion at the hearing last week.

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All right, Mr. Bernstein.

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MR. BERNSTEIN:

Thank you, your Honor.

I would make

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two points in response to what Mr. Lewin just mentioned.

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The

first is that, again, if you look at the two trademark

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registrations, they are two different shades.

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very well be, as Mr. Lewin has stated, that Mr. Louboutin had

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used the same color throughout.

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You know, we don't know, we haven't taken historical discovery,

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but I'll accept that.

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And so it may

I don't, I don't doubt that.

But from the perspective of what is a competitor

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supposed to do, it's actually quite interesting to look at

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these two different trade registrations, which clearly are

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different shades of red, and that's -- that is unexplained.

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Now --

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THE COURT:

All right, let me -- Mr. Bernstein, are

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you suggesting, based on this line of argument, that in fact

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Louboutin has now registered two entirely different shades of

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red for its hue here?

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MR. BERNSTEIN:

Yes, your Honor, that is the case.

The two numbers I gave you -- and your Clerk could look this up
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on USPTO website or we could send you printouts of the two

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trademark registrations -- are clearly different shades of red.

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The one that Mr. Lewin showed in court I would say is a

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brighter red, and the second registration, which was -- which

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was filed in August 2006, and it was registered in

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January 2008, is a different shade.

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that is that it really goes to --

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THE COURT:

But the significance of

Let me -- sorry to interrupt, but I want

to make sure we get the whole thing on the record.

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We have a Reporter, by the way, taking a transcript.

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Mr. Bernstein, what is your view as to these two U.S.

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registrations in relation to the French pantone that ends in

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663 that was the subject of the European application; is that a

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different shade of red or is it the same as one of the two U.S.

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registrations?

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MR. BERNSTEIN:

Because the two U.S. registrations

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don't indicate what their pantone is, I just don't know the

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answer to that.

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THE COURT:

Is it conceivable, then, that could be

three shades of red?

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MR. LEWIN:

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answer that question for you.

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THE COURT:

Yes.

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MR. LEWIN:

It is the second, the one you saw in the

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I'm sorry, this is Mr. Lewin.

I can

courtroom with the large dotted line high heeled shoe is in
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fact the same rendition that was used in the color -- in the

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application that has now been approved by EU.

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THE COURT:

Except that the EU, essentially, if I may

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say, it adjusted the application at the stage of those

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proceedings in order to give a number to the shade.

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no shade when the proceedings began, is that correct?

There was

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MR. LEWIN:

May I respond to that, your Honor?

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THE COURT:

Yes.

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MR. LEWIN:

Your Honor, again, the TMEP specifically

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requires that a generic word be used, and the option in its

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latest variation, that is to say version seven of the TMEP, the

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brand new one, that you can use -- where it says very

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specifically, it says under 807078i, if the color is ambiguous,

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you got to -- examiner has to require clarification.

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Apparently, this did not occur.

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following, sir.

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generic name and the color claimed.

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include a reference to a commercial identification system.

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USPTO does not endorse or recommend any one commercial color

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identification system.

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usually not necessary to indicate shades of a color, but the

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examining attorney has the discretion to require that the

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applicant indicate shades of a color, if necessary, to

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accurately describe the mark.

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United States -- the reason the European Union uses a pantone

And it goes on to say the

It says, the color claim must include the
The color claimed may also
The

And then it goes on to say, sir, it is

In simple terms, the reason the

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system or pantone number -- and so a number of the individual

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countries of the Union -- is that that's their law.

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In our case what guides the second comer or what

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guides anybody is a comparison between the color as registered,

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right, and the color used on the outside of a shoe that they

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intend to market, and then the judgment then becomes one of

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likelihood of confusion.

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THE COURT:

All right.

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MR. LEWIN:

And we ought not lose sight of that.

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MR. BERNSTEIN:

And the point I wanted to make with

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respect to Mr. Lewin's last point, your Honor, is the

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following:

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everybody knows it's a trademark; you know, Exxon, we all know

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Exxon or Esson is meant to be a trademark that indicates the

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brand of the gas station that you're going to, for example.

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And so it does make sense for courts in that circumstance to

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look at the trademark Exxon and say, has a second comer come

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too close, because the second comer is also using it as a

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trademark for their own.

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When we're dealing with word in trademarks, and

But the situation is very different here, your Honor.

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Because when Yves Saint Laurent sells shoes, the trademark that

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they put on it very very prominently is there YSL signature

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trademark.

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When they choose the color of the shoe, they don't
think of that in any way as a trademark.

All they think

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they're doing at that point is designing a color to coordinate

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with the rest of the clothing collection of the season.

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they're making those color choices not to indicate source or

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brand; not to say we're going to choose a particular shade of

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red or blue or green because we want people to know it comes

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from Yves Saint Laurent.

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because it's an ornamental element of the product of the shoe.

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And

They're choosing that shade of color

And so I don't disagree with Mr. Lewin about how
courts normally go about thinking of infringement when we're

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thinking of traditional trademarks, that people understand

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they're meant to be trademarks.

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there's two registrations that have different shades, when we

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showed Mr. Louboutin and Mr. Mourot, who is the CEO of his

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company, the pantone books and said, you know, which shades are

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we allowed to do.

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show it to me on a sole.

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shoes, like the shoe Mr. Lewin showed you in court, which ended

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up on your desk, your Honor, the Granad, very high pump, and

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Mr. Louboutin specifically said, you know, I don't know, I

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would need to go back to my office and think about it.

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I mistakenly referred to the Gypsy shoe in court when I read

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that part of the transcript.

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highly indefinite, and that this trademark, whether it's

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limited to one color, one particular shade reference or whether

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it's just more generally red, which is the position that the

But in this circumstance when

And they said, I don't know, you'd have to
When we showed them some of the

I think

All of this shows that it's

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plaintiffs have taken in this case up until the point of their

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reply, it shows you how indefinite it is and how very difficult

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it is for any competitor to do what Mr. Lewin just said, which

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is stay far enough away.

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can use a whole bunch of different shades of red in designing

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our shoes, that is exactly the very anti-competitive concerns

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that we would have about trademark that's being enforced in

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this case.

If stay far enough away means that we

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THE COURT:

All right, let me then come back --

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MR. LEWIN:

Your Honor, may I reply to that, since

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Mr. Bernstein has somewhat side stepped what you were just

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talking about.

If you don't mind?

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THE COURT:

Just briefly.

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MR. LEWIN:

It is not germane, it's simply irrelevant.

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In fact, I think the second thing is whether or not their use

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ultimately serves as a source indicator in a post sale context,

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the answer to that is yes.

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says their intent is, the intent ultimately is not relevant.

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It's the fact of use, and you can't get around it if you have a

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second comer under the law.

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Regardless of what Mr. Bernstein

The second -- the third thing is I think the idea that

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pantone number is a red herring, your Honor.

Because even if

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you looked up a pantone number on a piece of paper and you

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said, which neither Mr. Louboutin as a designer who

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specifically said he doesn't use it, he said magic markers -SOUTHERN DISTRICT REPORTERS, P.C.
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he doesn't use it when he talks to factories, and Mr. Mourot

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doesn't know, who is a managing party, they don't do business

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in pantone colors.

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herring there.

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So I think we're listening to bit of a red

But the fact of the matter is even if you have the

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pantone color, what somebody would do is open it up in the

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book, look at the pantone color, look at the shades that might

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be covered on either side of that pantone cover, and make this

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very same business judgment that everybody does day in and day

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out, what would avoid confusion.
THE COURT:

All right.

That's their duty.
Mr. Lewin, your position, your

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client's position is that we should follow Judge Sweet's edict

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and say draw a swath 40 percent above and 40 percent below the

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663 pantone, and that's what Yves Saint Laurent should then

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abide by?

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MR. LEWIN:

I can't say the answer to that, your

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Honor, without, without at the end of the day -- it's certainly

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the prerogative of the Court to issue an injunction that it's

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comfortable with that would guide the actions of YSL.

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that there's a -- Judge Sweet was under somewhat different

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constraints when he came up with that remedy, because the

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particular colors that they were dealing with were not clearly

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defined as they are in this case.

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dress matter, and because of that there was no registration to

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guide him, so I think he got a bit clever.

I think

It was, that was a trade

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But if the Court were to do that then, you know,

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whether we were satisfied or not, we'd have to live with it.

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It's not necessarily my position, no, sir.

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My position is that there are a whole lot of reds that

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have been used just like the one that was put up on your desk

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in that -- and we said pointedly that would not bother us.

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Pink wouldn't bother us, red orange wouldn't bother us.

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we are concerned about is a very simple measurement, is the

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likelihood of confusion between use of the red sole on a

What

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competitor shoe that's a high profile competitor in a luxury

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footwear business, that in the post sale context jumps out just

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the same way Louboutin sole does.

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that, however it's defined, we'd live with it.

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MR. BERNSTEIN:

If it's far enough away from

And I just have to -- I just make one

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point.

The very shoe that Mr. Lewin showed you in court and

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handed to you, your Honor, that ended up on your desk that

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Mr. Lewin now tells you they're fine with, that exact sole we

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showed to Mr. Louboutin at page 60 of the transcript.

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said he didn't know whether he objects to it; he'd have to

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think about it back at the office.

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THE COURT:

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MR. BERNSTEIN:

And he

All right.
And that's the exact same sole that

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Mr. Lewin is now telling you is fine.

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shifting target nature of the trademark.

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THE COURT:

This shows you the

All right, let's bring this to a close and

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come back to where we started, which is Mr. Lewin's letter of

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July 25 and his proposal for the parties to address some of

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these issues further.

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I don't need to have any extensive memoranda of law here.

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I suggest you do is to summarize whatever additional positions

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you think we should take into account in brief letters of three

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to four pages at most, and we'll take them into consideration.

The question is by when and by how much.

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Question --

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MR. LEWIN:

Thank you, your Honor.

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THE COURT:

By when would you need to have that?

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MR. LEWIN:

What

We can have it to you on the close of

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That's perfect

with us.

business Friday, sir, if that's sufficiently fast.

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THE COURT:

All right.

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MR. BERNSTEIN:

Mr. Bernstein?

Your Honor, I'm in court with a

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mediation next week, and then have to go to Washington for a

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meeting at the MTC.

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next week to reply?

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MR. LEWIN:

Would the Court allow us till the end of

Your Honor, we think it ought to come in

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simultaneously.

I don't think there should be a reply.

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get it in fast, so can they.

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THE COURT:

All right, I agree.

If we

I don't need to have

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replies.

Just submit your respective positions by the end of

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the week.

And, Mr. Bernstein, if you need an additional day,

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you could submit it on Monday.
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MR. BERNSTEIN:

I appreciate that, your Honor.

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THE COURT:

All right.

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MR. LEWIN:

Yes, sir.

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THE COURT:

All right, thank you.

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MR. BERNSTEIN:

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MR. LEWIN:

Thank you for your time, your Honor.

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THE COURT:

All right, you're very welcome.

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(Adjourned)

Thank you, your Honor.

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