Case- Law & Ethics
Case- Law & ethics
1 of 2 DOCUMENTS
CHRISTIAN LOUBOUTIN S.A., CHRISTIAN LOUBOUTIN, L.L.C., CHRISTIAN LOUBOUTIN, Plaintiffs-Counter-Defendants-Appellants, v. YVES SAINT LAURENT AMERICA HOLDING, INC., YVES SAINT LAURENT S.A.S., YVES SAINT LAURENT AMERICA, INC., Defendants-Counter-Claimants-Appellees, YVES SAINT LAURENT, (an unincorporated association), JOHN DOES, A TO Z, (Unidentified), JANE DOES, A TO Z, (Unidentified), XYZ COMPANIES, 1 TO 10, (Unidentified), Defendants-Appellees.
Docket No. 11-3303-cv
UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
696 F.3d 206; 2012 U.S. App. LEXIS 18663; 103 U.S.P.Q.2D (BNA) 1937
January 24, 2012, Argued September 5, 2012, Decided
SUBSEQUENT HISTORY: As Amended December 20, 2012.
PRIOR HISTORY: [**1]
Fashion designer Christian Louboutin brings this appeal from an August 10, 2011 order of the United States District Court for the Southern District of New York (Victor Marrero, Judge) denying a motion for a preliminary injunction against alleged trademark infringement by Yves Saint Laurent, a competing fashion house ("YSL"). The District Court found that Louboutin's trademark was likely not enforceable and declined to enter a preliminary injunction against YSL's use of the trademark.
We conclude that the District Court's holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011), is inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995), and that the District Court therefore erred by resting its denial of Louboutin's preliminary injunction motion on that ground. We further conclude that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the
1 of 2 DOCUMENTS
CHRISTIAN LOUBOUTIN S.A., CHRISTIAN LOUBOUTIN, L.L.C., CHRISTIAN LOUBOUTIN, Plaintiffs-Counter-Defendants-Appellants, v. YVES SAINT LAURENT AMERICA HOLDING, INC., YVES SAINT LAURENT S.A.S., YVES SAINT LAURENT AMERICA, INC., Defendants-Counter-Claimants-Appellees, YVES SAINT LAURENT, (an unincorporated association), JOHN DOES, A TO Z, (Unidentified), JANE DOES, A TO Z, (Unidentified), XYZ COMPANIES, 1 TO 10, (Unidentified), Defendants-Appellees.
Docket No. 11-3303-cv
UNITED STATES COURT OF APPEALS FOR THE SECOND CIRCUIT
696 F.3d 206; 2012 U.S. App. LEXIS 18663; 103 U.S.P.Q.2D (BNA) 1937
January 24, 2012, Argued September 5, 2012, Decided
SUBSEQUENT HISTORY: As Amended December 20, 2012.
PRIOR HISTORY: [**1]
Fashion designer Christian Louboutin brings this appeal from an August 10, 2011 order of the United States District Court for the Southern District of New York (Victor Marrero, Judge) denying a motion for a preliminary injunction against alleged trademark infringement by Yves Saint Laurent, a competing fashion house ("YSL"). The District Court found that Louboutin's trademark was likely not enforceable and declined to enter a preliminary injunction against YSL's use of the trademark.
We conclude that the District Court's holding that a single color can never serve as a trademark in the fashion industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457 (S.D.N.Y. 2011), is inconsistent with the Supreme Court's decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162, 115 S. Ct. 1300, 131 L. Ed. 2d 248 (1995), and that the District Court therefore erred by resting its denial of Louboutin's preliminary injunction motion on that ground. We further conclude that Louboutin's trademark, consisting of a red, lacquered outsole on a high fashion woman's shoe, has acquired limited "secondary meaning" as a distinctive symbol that identifies the