CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA
778 F.Supp.2d 445 (2011)
United States District Court, S.D. New York.
August 10, 2011.
[A] gift and remembrancer designedly dropt, Bearing the owner's name someway in the corners, that we may see and remark, and say Whose?4 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. The Court therefore concludes that Louboutin has not established a likelihood that it will succeed on its claims that YSL II. DISCUSSION
infringed the Red Sole Mark to warrant the relief that it seeks.
To obtain a preliminary injunction, Louboutin must establish "(1) irreparable harm and (2) either (a) a likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor]." Monserrate v. N.Y. State Senate, 599 F.3d 148, 154 (2d Cir.2010) (emphasis added); Zino Davidoff SA v. CVS Corp., 571 F.3d 238, 242 (2d Cir.2009).
A. TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION UNDER THE LANHAM ACT
To succeed on its claims for trademark infringement and unfair competition under the Lanham Act, Louboutin must demonstrate that (1) its Red Sole Mark merits protection and (2) YSL's use of the same or a sufficiently similar mark is likely to cause consumer confusion as to the origin or sponsorship of YSL's shoes. See Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir.2009); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir.2006).
The first question, therefore, is whether Louboutin's Red Sole Mark merits protection. The Lanham Act permits the registration of a "trademark," which it defines as