11-3303-cv
Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc.


                                  UNITED STATES COURT OF APPEALS
                                     FOR THE SECOND CIRCUIT

                                                    August Term, 2011

(Argued: January 24, 2012                                                            Decided: March 8, 2013)

                                                 Docket No. 11-3303-cv

            _______________________________________________________________

        CHRISTIAN LOUBOUTIN S.A., CHRISTIAN LOUBOUTIN, L.L.C., CHRISTIAN LOUBOUTIN,

                                         Plaintiffs-Counter-Defendants-Appellants,


                                                               v.


     YVES SAINT LAURENT AMERICA HOLDING, INC., YVES SAINT LAURENT S.A.S., YVES SAINT
                                LAURENT AMERICA, INC.,

                                         Defendants-Counter-Claimants-Appellees,

 YVES SAINT LAURENT, (an unincorporated association), JOHN DOES, A TO Z, (Unidentified), JANE
                  DOES, A TO Z, (Unidentified), XYZ COMPANIES, 1 TO 10, (Unidentified),

                                                    Defendants-Appellees.

             ______________________________________________________________

Before: CABRANES, STRAUB, and LIVINGSTON, Circuit Judges.

         Fashion designer Christian Louboutin brings this appeal from an August 10, 2011 order of

the United States District Court for the Southern District of New York (Victor Marrero, Judge)

denying a motion for a preliminary injunction against alleged trademark infringement by Yves Saint

Laurent (“YSL”), a competing fashion house. In an opinion filed September 5, 2012, we concluded

that the District Court’s holding that a single color can never serve as a trademark in the fashion

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industry, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 451, 457

(S.D.N.Y. 2011), was inconsistent with the Supreme Court’s decision in Qualitex Co. v. Jacobson

Products Co., 514 U.S. 159, 162 (1995), and that the District Court therefore erred by resting its denial

of Louboutin’s preliminary injunction motion on that ground. We further held that Louboutin’s

trademark, consisting of a red, lacquered outsole on a high fashion woman’s shoe, when limited to

uses in which the red outsole contrasts with the color of the remainder of the shoe, has acquired

“secondary meaning” as a distinctive symbol that identifies the Louboutin brand. Pursuant to

Section 37 of the Lanham Act, 15 U.S.C. § 1119, we therefore limited the trademark to uses in

which the red outsole contrasts with the color of the remainder of the shoe. Because Louboutin

sought to enjoin YSL from using a red sole as part of a monochrome red shoe, we affirmed in part the

order of the District Court insofar as it declined to enjoin the use of red lacquered outsoles in all

situations.

        On September 27, 2012, the Clerk of the Court issued a mandate which, inter alia, directed

the United States Patent and Trademark Office to “make appropriate entry upon that Office’s

records to reflect that U.S. Trademark Registration No. 3,361,597, held by Christian Louboutin and

dated January 1, 2008, is limited to a red lacquered outsole on footwear that contrasts with the color

of the adjoining (“upper”) portion of the shoe.” On January 25, 2013, Louboutin filed a letter with

the Clerk of the Court requesting a modification of that mandate. Because Louboutin has not made

the showing necessary for recall of the mandate, we deny that letter motion.

        Motion denied.

                HARLEY I. LEWIN (Lee Carl Bromberg and Charles D. Ray, on the brief), McCarter &
                     English, LLP, New York, NY, Boston, MA, Hartford, CT, for Plaintiffs-
                     Counter-Defendants-Appellants Christian Louboutin S.A., Christian Louboutin,
                     L.L.C., Christian Louboutin.



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               DAVID H. BERNSTEIN (Jyotin Hamid and Rayna S. Feldman, on the brief), Debevoise
                     & Plimpton LLP, New York, NY, for Defendants-Counter-Claimants-Appellees
                     Yves Saint Laurent America Holding, Inc., Yves Saint Laurent S.A.S., and Yves Saint
                     Laurent America, Inc., and Defendants-Appellees Yves Saint Laurent, (an
                     unincorporated association), John Does, A to Z, (Unidentified), Jane Does, A to Z,
                     (Unidentified), XYZ Companies, (Unidentified).

               Janet L. Cullum (John W. Crittenden, Cooley LLP, San Francisco, CA, and Susan J.
                       Hightower, Pirkey Barber LLP, Austin, TX, on the brief), Cooley LLP, New
                       York, NY, for amicus curiae International Trademark Association, in support of
                       Plaintiffs-Counter-Defendants-Appellants.

               Richard Z. Lehv (Jason D. Jones on the brief), Fross Zelnick Lehrman & Zissu, P.C.,
                      New York, NY, for amici curiae Tiffany (NJ) LLC and Tiffany & Co., in support of
                      Plaintiffs-Counter-Defendants-Appellants.

               Rebecca Tushnet, Professor of Law, Georgetown University Law Center,
                     Washington, D.C., on the brief, for amici curiae Professors of Law in Trademark and
                     Related Fields, in support of Defendants-Counter-Claimants-Appellees.

PER CURIAM:

       This litigation concerns the validity of a trademark for a red, lacquered outsole on a high

fashion woman’s shoe. On September 5, 2012, we issued an opinion which, inter alia, limited the

trademark, pursuant to Section 37 of the Lanham Act, 15 U.S.C. § 1119, to uses in which the red

outsole contrasts with the color of the remainder of the shoe. On September 27, 2012, the Clerk of

the Court issued a mandate which directed the United States Patent and Trademark Office

(“USPTO”) to “make appropriate entry upon that Office’s records to reflect that U.S. Trademark

Registration No. 3,361,597, held by Christian Louboutin and dated January 1, 2008, is limited to a

red lacquered outsole on footwear that contrasts with the color of the adjoining (“upper”) portion of

the shoe.”

       Plaintiffs Louboutin, Christian Louboutin S.A., and Christian Louboutin, L.L.C. (jointly,

“Louboutin”) now seek a modification of the mandate. Louboutin advises the Court that the

USPTO intends to amend the trademark by adopting the language of mandate verbatim. Louboutin


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argues that we should modify the mandate to instruct the USPTO to revise the trademark in a

manner that, in Louboutin’s view, would be more precise.

        Louboutin does not, however, identify any authority for making such a modification to the

mandate. Indeed, granting Louboutin’s request would require us to recall the mandate. See Sargent v.

Columbia Forest Prods., Inc., 75 F.3d 86, 89 (2d Cir. 1996); Johnstone v. Kelly, 812 F.2d 821, 821-22 (2d

Cir. 1987). Our power to recall a mandate “can be exercised only in extraordinary circumstances”

and “is one of last resort, to be held in reserve against grave, unforeseen contingencies.” Calderon v.

Thompson, 523 U.S. 538, 550 (1998); see also Sargent, 75 F.3d at 89 (observing that the power to recall a

mandate “is to be exercised sparingly . . . and reserved for exceptional circumstances.” (internal

quotation marks and citations omitted)). We have previously identified four factors to consider in

determining whether to recall a mandate: “(1) whether the governing law is unquestionably

inconsistent with the earlier decision; (2) whether the movant brought to the Court’s attention that a

dispositive decision was pending in another court; (3) whether there was a substantial lapse in time

between the issuing of the mandate and the motion to recall the mandate; and (4) whether the

equities ‘strongly favor’ relief.” Stevens v. Miller, 676 F.3d 62, 69 (2d Cir. 2012) (quoting Sargent, 75

F.3d at 90).

        Louboutin has made no showing that any of the factors favor recall and modification of the

mandate. In short, this matter does not present the “exceptional circumstances” required to grant

such a request. Sargent, 75 F.3d at 89 (internal quotation marks omitted). Louboutin’s motion is

therefore DENIED.




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