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The Second Circuit Court of Appeals heard arguments this week in the Christian Louboutin-YSL trademark appeal, once again raising the issue of whether a designer can trademark a color.
When U.S. District Judge Vincent Marrero ruled in August that a color cannot be protected, Louboutin, a 20-year veteran of the footwear industry, vowed to "fight like hell" for his sole.
He has lived up to that promise.
On Tuesday, Louboutin appeared in court with longtime friend and fashion designer Diane Von Furstenberg for the trademark appeal. (Von Furstenberg wasn't only there for moral support; she is also president of the Council of Fashion Designers of America, a trade group that is closely following the case.)
Louboutin's lawyers suggested that Judge Marrero's characterization of the Louboutin trademark as a "monopoly" on a color was overly broad, as Louboutin was only trying to protect his signature, Chinese-red soles. The lawyer told the court, "We don't claim anything but the mark as it is registered," reports Women's Wear Daily.
Judge Chester Straub seemed open to Louboutin's arguments, and noted that Judge Marrero had not cited the basis for his findings in the holding. That, alone, could be sufficient to reverse and remand the case.
For those who question whether the red-sole trademark appeal is the most ridiculous issue to ever reach a federal appellate court, keep in mind that companies invest significant capital in branding, and trademark cancellation jeopardizes that branding investment. Furthermore, there is precedent for upholding the Louboutin red-sole trademark, albeit from another district.
In 2010, a district court recognized Maker's Mark's exclusive use of the dripping red-wax seal for which its bottles have become known. Maker's Mark, which is currently defending its red-wax seal in a Sixth Circuit Court of Appeals challenge, maintains that other companies "have competitive desire to use the wax, not a competitive need to use wax." The same form-over-function argument could be applied to Christian Louboutin's red-sole trademark; YSL may have a desire to create monochromatic shoes, but they do not have a competitive need for red-soled shoes.
Even if the Second Circuit Court of Appeals rules for the red-sole trademark in the Louboutin-YSL appeal, the case is far from over; the two parties would then return to Judge Marrero, and prepare for discovery in what will likely be a very long battle.