Shoe Designer Kicks Out Its Counterclaims



DuetsBlog has taken an interest in the Louboutin v. Yves Saint Laurent case venued in the Southern District of New York.  I, along with my colleague Steve Baird, have previously written about this important color trademark case, which was remanded from the Second Circuit (here, here, here and here). Last week, Yves Saint Laurent (“YSL”) asked the court to dismiss the counterclaims it had filed against Louboutin, which will essentially end the battle between these two shoe designers.

YSL had filed six counterclaims against Louboutin. Four of the counterclaims involved cancellation of trademark claims. YSL asserted that there was no longer subject matter jurisdiction over the counterclaims because Louboutin’s trademark infringement claims were no longer in the case. Accordingly, the claims would have to be brought before the Trademark Trial & Appeal Board (the “TTAB”) of the United States if YSL wanted to pursue its claims to cancel the trademarks. YSL, therefore, sought to dismiss those counterclaims with prejudice in the district court.

The remaining two counterclaims asserted by YSL related to unfair competition and tortious interference. Specifically, they were based on Louboutin calling retailers and telling them to stop selling YSL’s red shoes because it owned the trademark. In response, Louboutin could have asserted the Noerr-Pennington doctrine, which has recognized the right of a trademark owner to protect its rights by sending cease and decease letters to third party infringers.  Because YSL is voluntarily dismissing these counterclaims, Louboutin will not have to defend itself at this time.  However, YSL is seeking a dismissal of these counterclaims without prejudice so there is a chance that these claims may be resurrected in the future.

Now that YSL is walking its stilettos away from its counterclaims, this is likely the last chapter in the saga of the battling shoe designers.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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