CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA
778 F.Supp.2d 445 (2011)
United States District Court, S.D. New York.
August 10, 2011.
ORDERED that counsel for all parties are directed to appear for a case management conference on August 17, 2011 at 2:00 p.m., at which Louboutin shall show cause why the record of this action as it now exists should not be converted into a motion for partial summary judgment cancelling Louboutin's trademark at issue here for the reasons stated in the Court's decision above.
1. The factual summary below is derived from the following documents: Plaintiff's Amended Memorandum of Law in Support of Application for a Preliminary Injunction, dated June 21, 2011, and any exhibits and declarations attached thereto; Defendants/Counterclaim-Plaintiffs' Memorandum of Law in Opposition to Motion for Preliminary Injunction, dated July 12, 2011, and any exhibits and declarations attached thereto; and Plaintiff's Reply Memorandum of Law in Support of Application for a Preliminary Injunction, dated July 19, 2011, and any exhibits and declarations attached thereto. The Court will make no further citations to these sources unless otherwise specified.
2. Jennifer Lopez, Louboutins (Epic Records 2009).
3. "Cruise" in this context refers to the fashion season between winter and spring, which is sold in stores beginning in November of each year. (Vaissié Decl. (Docket No. 34) ¶ 11.)
4. Walt Whitman, Leaves of Grass 195 (Karen Karbiener ed., 2004). The text from which this passage derives (italics in the original) reads:
A child said What is the grass? fetching it to me with full hands
... I guess it is the handkerchief of the Lord, A scented gift and remembrancer designedly dropt, Bearing the owner's name someway in the corners, that we may see and remark and say Whose?
5. The TEXTILE color system assists designers in selecting and specifying color to be used in the manufacture of textiles and apparel. In 2003, the TEXTILE color system was replaced with the FASHION + HOME color system, and the suffix of each color was changed from "TP" to "TPX."
6. Louboutin's suggestion that the Court require other designers to stay some percentage away from Chinese Red raises the question: some percentage of what? Chinese Red, like any color, is made up of a certain combination of other colors. Based on the Court's research, this combination can be expressed in various metrics, such as a combination of RGB (red, green, blue) or CMYK (cyan, magenta, yellow, black), or HSB (hue, saturation, brightness). See Mark Galer & Les Horvat, Digital Imaging: Essential Skills 3-5, 7 (3d ed.2005). In Adobe Color Picker, see id. at 6, a variance of just 10 percent in any of these inputs, in either direction, yields more than a dozen shades visibly different from Chinese Red, in some cases so different as to appear to the casual observer pink on one side of Chinese Red or orange on the other.
7. In response to YSL's inquiry as to whether a particular YSL shoe infringes the Red Sole Mark, Christian Louboutin responded at his deposition that he "will think about it." (Hamid Decl. Ex. A (Docket No. 32-1) at 60:11-14.) In response to YSL's inquiry as to whether Christian Louboutin would "object to any shade of red on a sole," counsel for Christian Louboutin instructed him not to answer. (Id. at 46:4-18 (emphasis added).)
8. The Court notes that Louboutin's claim for unlawful deceptive acts and practices, although not a basis for its motion for a preliminary injunction, similarly would fail in this context. See R.D. Corp. v. Jewelex New York Ltd., ___ F.Supp.2d ___, ___, No. 07 Civ. 13, 2011 WL 1742111, at *5 (S.D.N.Y. May 4, 2011) (dismissing claim for unlawful deceptive acts and practices under New York General Business Law § 349 because it arose out of a dispute between competitors involving trademark infringement).