Los Angeles – Yves Saint Laurent SAS asked a Manhattan federal court on Tuesday to dismiss its remaining counterclaims in Christian Louboutin’s trademark lawsuit over his signature red-soled shoes, following the Second Circuit’s September ruling letting YSL off the hook for the infringement claims.
On Sept. 5 the Second Circuit directed that final judgment be entered in YSL’s favor on all of Louboutin’s federal trademark claims. The court ruled conclusively that the YSL monochromatic shoes that Louboutin challenged in the lawsuit do not infringe any trademark rights, even though it also found that Louboutin is indeed entitled to trademark protection for the soles.
The only issues remaining to be litigated following the appeals court’s ruling are YSL’s counterclaims against Louboutin for cancellation of its federal trademarks, tortious interference and unfair competition, YSL said.
“In light of YSL’s conclusive victory in defeating Louboutin’s claims, and for the reasons detailed herein, YSL believes it appropriate to dismiss its counterclaims voluntarily, thus resolving what remains of this litigation and allowing the parties to close the book on this litigation and refocus their attention on their respective fashion creations,” YSL’s motion to dismiss says.
The district court had jurisdiction over the cancellation counterclaims only because of the now-dismissed trademark infringement claims against YSL, the company says. Now that those claims are out of the picture, the court no longer has subject matter jurisdiction, according to YSL.
YSL did note that such cancellation claims can and must be brought before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board if there is no other basis for federal jurisdiction, so the cancellation counterclaims should be dismissed without prejudice.
The counterclaims for tortious interference and unfair competition, meanwhile,were based on Louboutin’s efforts in 2011 to pressure certain retailers to return to YSL the red monochromatic shoes challenged in the case.
“Although YSL maintains its view that such actions were wrongful, YSL was able to mitigate some of its damages by reselling the returned inventory at YSL boutiques or through e-commerce,” YSL’s motion says. “In light of that, and given its desire to refocus its energies on its business and creative designs, YSL has decided that these claims are no longer worth pursuing.”