Judge Victor Marrero has ruled to deny Christian Louboutin's request for a preliminary injunction that would prevent YSL from selling the red-soled shoes from its 2011 resort collection. He wrote in his ruling:
Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.
When reached for comment, Louboutin's lawyer, Harley Lewin of McCarter & English LLP, stated:
We are profoundly disappointed in Judge Marrero’s decision. Although we are still studying it, it appears he has decided that in the fashion industry, one color should not serve as a trademark. While he acknowledges the fashion industry at large has recognized the Louboutin Red Sole as a trademark source indicator, he has concluded that the fashion industry needs to use colors on outsoles without restriction and this, despite a mountain of evidence to the contrary, including a recent decision by the 2nd Panel of Appeal at OAMI in the EU that concluded exactly the opposite, calling Mr. Louboutin’s adoption of the bright red outsole brilliant. We will evaluate all the alternatives available in the days to come.
Meanwhile, YSL's lawyer, David Bernstein of Debevoise & Plimpton LLP, says:
We're gratified that Judge Marrero has agreed with YSL that no designer should be allowed to monopolize a single color for an article of apparel. As Judge Marrero indicated, YSL designers are artists and, like other artists, they should have the right to use the full palette of colors in designing their fashions for each season.
As YSL has noted from the start, this is a trademark registration that never should have issued, and we are pleased that Judge Marrero has agreed that the registration likely should be cancelled.
In other words, this isn't over yet.