Yves Saint Laurent SAS, following an appeals court ruling in September that it has the legal right to sell monochromatic women’s shoes with red soles, asked a federal judge to dismiss counterclaims it filed against Christian Louboutin Sarl.
Yves Saint Laurent seeks to end the lawsuit Louboutin brought to prevent Saint Laurent from selling red-soled shoes, according to a filing today in Manhattan. Saint Laurent tried to persuade the federal courts to reject Louboutin’s trademark for red soles. The U.S. Court of Appeals in New York, in a mixed decision, said Louboutin had a limited right to the trademark but couldn’t stop Saint Laurent from selling monochromatic red shoes.
“Now that the Second Circuit has definitively rejected Louboutin’s claims against YSL, YSL prefers to refocus its energies on its business and creative designs, and has determined that these claims are no longer worth pursuing,” Yves Saint Laurent said in the filing.
U.S. District Judge Victor Marrero in August 2011 rejected a bid by Louboutin for an injunction to stop Saint Laurent from selling the shoes. Louboutin appealed and Marrero said he would defer deciding whether to cancel Louboutin’s trademark for the red sole until after the appeals court ruled. The appeals court said Louboutin’s trademark didn’t extend to all-red shoes.
“It’s not unexpected,” Harley Lewin, a lawyer with McCarter & English LLP who represented Louboutin, said in a phone interview. “We’re talking to the client about whether there are any further steps to take. This is all that was left. The essential dispute was resolved.”
Saint Laurent seeks to dismiss six counterclaims. Four were over trademark rights, and Saint Laurent said in its filing that the district court no longer has jurisdiction over this issue.
The two other claims were for tortious interference and unfair competition. Saint Laurent said Louboutin called certain retailers and told them to stop selling Saint Laurent’s red shoes because it owned the trademark.
“We were able to mitigate our damages by re-selling the shoes that were returned,” David Bernstein, a lawyer with Debevoise & Plimpton LLP who represented Saint Laurent, said in a phone interview.
As for the trademark counterclaims, Bernstein said that because Louboutin’s claims against Saint Laurent were dismissed, the only place to pursue cancellation of the trademark would be the U.S. Patent and Trademark Office. He said Saint Laurent would not pursue that action unless “Louboutin were to file a new lawsuit against us.”
Louboutin, a Paris-based fashion company, claimed in its lawsuit filed in April 2011 that Yves Saint Laurent’s red-soled footwear “threaten to mislead the public.”
Christian Louboutin, the designer for whom the company is named, got the idea for the red soles when he painted red nail polish on the black soles of a pair of women’s shoes. Louboutin’s red soles were introduced in 1992 and have been on all of its luxury shoes since then, according to court papers. They have been popularized by actresses like Sarah Jessica Parker in the TV show “Sex and the City.”
Yves Saint Laurent is a unit of Paris-based PPR, which owns other luxury brands including Gucci. PPR rose 1.05 euros to 133.05 euros at 10:33 a.m. New York time in Paris Stock Market trading. Louboutin’s shares aren’t traded publicly.
The case is Christian Louboutin SA v. Yves Saint Laurent America, 11-2381, U.S. District Court, Southern District of New York (Manhattan.)