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Monday, February 27, 2012
From the Red Carpet to Red Soles
Second Circuit considers shoe designer’s case to trademark a color.
BY Erica D. Klein
And Yuridia Caire
F
Supreme Court’s Colorful History
The Supreme Court first recognized
the protectability of color as a trademark in Qualitex Co. v. Jacobson Products Co.2 In considering whether greengold used for a dry cleaning press pad
serves a brand-identifying function, the
Supreme Court stated that color “can act
as a symbol that distinguishes a firm’s
Erica D. Klein is a partner with Kramer Levin Naftalis &
Frankel in New York, and Yuridia Caire is an associate
in the firm’s Silicon Valley office. Both specialize in intellectual property.
TM
RAFAL PYTEL/BIGSTOCK
ASHION, while difficult to define,
is easy to identify. Anyone walking
down Rodeo Drive or reading the
likes of Vogue readily recognizes a brand
not only by its labels, but also by the
style, shape or color of its collections.
But in an industry where aesthetic appeal
drives purchasing decisions, are these
elements rightfully proprietary assets,
or rather decorative elements available
for all to use? The recent case of Christian Louboutin S.A. v. Yves Saint Laurent
America Inc.,1 concerning a red sole on
shoes, has ignited this tension, and has
highlighted fashion designers’ struggles
to protect their valuable creations from
others looking to emulate their appeal.
goods and identifies their source, without
serving any other significant function.”3
Before this decision, it was often argued
that granting trademark protection to
colors would deplete the colors available to competitors. Qualitex rejected
this depletion theory, reasoning that
alternative colors are plentiful. That it
would be legally difficult to determine
whether use of a similar color on a similar
product would confuse customers was
also rejected, as such determinations
are regularly made with respect to the
similarity of words and symbols.4
Under Qualitex, color marks can never
be inherently distinctive.5 For a color to
be considered a trademark, the color
must have achieved secondary meaning.6
A color also cannot act as a trademark if
it is “functional,” i.e., “essential to the use
or purpose of the article or if it affects the
cost or quality of the article.”7 The core of
this doctrine recognizes that competitors
must be free to use utilitarian features
that render products less expensive, of
better quality, or more efficient to manufacture. For example, yellow has been
deemed functional for safety signs, as it
has tangible benefits that create a competitive need for its use. 8 Similarly, black
was found to serve a functional purpose,
and thus not protectable, when used
Monday, February 27, 2012
on outboard boat motors, since black
matches many boat colors and makes
the motor appear smaller.9
The Circuits’ Views
While it is widely agreed that colors
yielding a utilitarian advantage should
not be removed from the market by
granting monopoly status, i.e., a trademark registration, to one player, the case
for refusing a monopoly because a color
is aesthetically appealing is less unanimous. In L.D. Kichler Co. v. Davoil Inc.,10
the Federal Circuit considered whether
the aesthetic appeal of a rust color for
lighting fixtures was functional because
consumers desired lighting fixtures to
be compatible with furnishings. While
the court acknowledged that consumer
preference existed, it held that “[m]ere
taste or preference cannot render a
color—unless it is ‘the best, or at least
one, of a few superior designs’—de jure
functional.”11
The Ninth Circuit’s view of aesthetic
functionality considers whether purely
aesthetic features might be “functional”
because of a perceived competitive need
to copy an ornamental (as distinguished
from utilitarian) product feature.12 As
initially applied, the Ninth Circuit held
a broad view of aesthetic functionality,
favoring consumer interest over trademark rights. For example, in the 1952
decision of Pagliero v. Wallace China
Co., the Ninth Circuit held that because
certain china patterns were desirable
to consumers, they were aesthetically
functional and could be used by competitor hotels.13
The Ninth Circuit more recently narrowed its deference to aesthetic functionality, finding in 2006 that a marquee
license plate bearing the VW company
logo was not a purely aesthetic product feature, but rather served a sourceidentifying function sufficient to support
a claim of trademark infringement.14 The
Ninth Circuit again considered aesthetic
functionality in 2011, in the context of
t-shirts displaying the character Betty
Boop. Initially, the court refused to
enjoin defendant’s sales on the basis
that defendant was using Betty Boop
as a “functional aesthetic component[]
of the product, not trademarks.”15 This
decision prompted numerous amicus
briefs, including by the International
Trademark Association (INTA), the
Motion Picture Association of America,
and several entities representing sports
leagues and universities.
Upon rehearing, the Ninth Circuit withdrew its earlier decision, and issued a
narrowly tailored opinion that avoids
widespread legal and commercial implications.16 Though the fate of the aesthetic
functionality doctrine in the Ninth Circuit
is still uncertain, it appears to be more
limited in its current application than in
its previous history.
To deem a trademark functional
based on aesthetic appeal in the
Second Circuit, a court must find
that the mark is “essential to effective competition.”
Traditionally, the Second Circuit’s view
of aesthetic functionality has been more
restrictive than that of the Ninth Circuit,
requiring “a finding of foreclosure of alternatives” to deny trademark protection.17
To deem a trademark functional based
on aesthetic appeal in the Second Circuit, a court must find that the mark is
“essential to effective competition.”18 The
Christian Louboutin v. Yves Saint Laurent
America case decided by the Southern
District of New York in August 2011, and
now on appeal to the Second Circuit,
questions whether the aesthetic appeal
of color in the fashion industry presents a
special circumstance warranting its own
legal paradigm, or whether the existing
legal framework provides an appropriate
scheme for evaluation.
‘Louboutin v. YSL’
Louboutin sued YSL for trademark
infringement and sought a preliminary
injunction to enjoin YSL from marketing
any shoes that use the same or confusingly similar shade of red as Louboutin’s
protected “Red Sole Mark.” The “Red
Sole Mark” is the subject of a federal
registration conferring protection of
“a lacquered red sole on footwear” for
use in connection with “women’s high
fashion designer footwear.”19 The YSL
shoes at issue comprised a monochromatic red body and red sole. As framed
by the court, “[t]he narrow question
presented here is whether the Lanham
Act extends protection to a trademark
composed of a single color used as an
expressive and defining quality of an
article of wear produced in the fashion
industry.”20
Louboutin’s registration gives rise
to a statutory presumption of validity. 21 The court acknowledged that
the Lanham Act has been applied in
the fashion industry to “distinct patterns or combinations of shades that
manifest a conscious effort to design
a uniquely identifiable mark embedded in the goods.”22 Yet, because the
court analyzed Louboutin’s position as
a claim “to the color red” rather than
the more limited color and placement
stated in the registration, Louboutin’s claim was found “overly broad
and inconsistent with the scheme of
trademark registration established by
the Lanham Act.”23
Accordingly, the aesthetic appeal
of Louboutin’s shoes was found to be
functional, and Louboutin’s preliminary
injunction motion was denied.24 The
court posited that fashion should not be
viewed within the district’s precedential
framework, but rather should be subject
to a different analysis. “Because in the
fashion industry color serves ornamental and aesthetic functions vital to the
robust competition,” the court found
that Louboutin is unlikely to be able to
prove that its Red Sole Mark is entitled
to trademark protection, and infringed
by YSL.25
The Louboutin decision garnered
much attention within the fashion
industry and the Trademark Bar. An
amicus brief filed by Tiffany & Co.
argued that the Louboutin case adopted
a “sweeping and unprecedented per se
Monday, February 27, 2012
rule against granting trademark protection to any single color that is used on
any ‘fashion item,’ even where the color has achieved ‘secondary meaning’
and is associated with a single brand”
(emphasis in original).26
Similarly, INTA argued in its amicus
brief that the district court misconstrued
Louboutin’s mark as consisting of “the
color red” as opposed to a “lacquered
red sole on footwear” as stated in the
registration, and did not properly consider the validity of the registration.27
INTA further argued that the district
court erred in applying the Ninth Circuit’s
aesthetic functionality test rather than
the aesthetic functionality test of the Second Circuit.28 On the YSL side, a group
of university professors filed an amicus
brief arguing that the district court properly applied the doctrine of aesthetic
functionality, and that color marks are
inherently suspect.29 Oral argument was
held in front of the Second Circuit on
Jan. 24, 2012.
For the time being, while fashion brand
owners may successfully secure registrations for color trademarks, enforcing
such registrations appears less certain.
Thus, with trademark rights and remedies
in flux, it is important to consider other
forms of protection available to the fashion world.
Copyright and Patent Law
In addition to trademarks, certain
elements of fashion may find protection through copyright or patent law.
Copyright law protects works “fixed
in any tangible medium” belonging to
a wide range of creative or artistic works,
including “pictorial, graphic, and sculptural works.”30 Certain fashion articles
have been held protectable on this basis,
including David Yurman jewelry designs31
and Diane von Furstenberg prints.32 However, pursuant to the “useful articles” doctrine, copyright protection is available
only if there is expressive component
“separable from its useful function.”33
As such, most clothing and shoes are
unlikely to satisfy this test due to the
function performed for the wearer.
Patent law also provides limited protection for elements of fashion design. In
general terms, a “utility patent” protects
for 20 years the way an article is used and
works (35 U.S.C. §101), while a “design
patent” protects for 14 years the way an
article looks (35 U.S.C. §171).34 Design
patents have been secured by industry
leaders such as Levi for jeans,35 Gucci
for handbags36 and Stuart Weitzman for
shoes.37 Both types of patents may be
obtained on an article if invention resides
in its utility and ornamental appearance,38
such as Crocs shoes.39 It may take up
to 18 months to obtain either type of
patent, however, and the process may
incur thousands of dollars. Thus, because
copyright and patent laws provide only
limited intellectual property protection
and do not always correspond with the
lifespan of fashion articles or fashion
trends, alternative options for legal protection have long been sought.
Pending Legislation
The Innovative Design Protection and
Piracy Prevention Act (S.3278) (IDPPA)
was introduced in August 2011, sponsored by Sen. Charles Schumer, D-N.Y.
The IDPPA follows a series of earlier
bills that sought to increase the scope
of copyright protection available to
fashion designs. If enacted, the IDPPA
would amend the Copyright Act to provide three years of protection to fashion
designs that meet defined standards of
originality and novelty. As defined in the
bill, a fashion design is the “appearance
as a whole of an article of apparel including its ornamentation,”40 and infringement of a protected design occurs if a
copy is found to be “substantially identical in overall visual appearance”41 to
the protected design, so long as it can
be “reasonably inferred [that the copyist] saw or otherwise had knowledge
of the protected design.”42 Advocates
and adversaries are divided regarding
whether creativity would be stifled by
more protection or whether the lack of
protection hinders innovation. There is
a strong case to be made on either side.
But for now, as with the protection of
color in the nation’s fashion capital, we
must wait to see what the next season
brings.
••••••••••••••••
•••••••••••••
1. 778 F. Supp. 2d 445 (S.D.N.Y. 2011).
2. 514 U.S. 159 (1995).
3. Id. at 166.
4. Id. at 167.
5. Id. at 159; see also Trademark Manual of Examining Procedure (TMEP) (8th ed. Oct. 2011) §1202.05(a).
6. TMEP §1202.05(a).
7. Qualitex, 514 U.S. at 165.
8. In re Orange Communications Inc., 41 U.S.P.Q.2d (BNA)
1036 (T.T.A.B. 1996) (color yellow held to be functional for
public telephones and telephone booths because it was more
visible under all lighting conditions in the event of an emergency).
9. See Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527
(Fed. Cir. 1994), cert. denied, 514 U.S. 1050 (1995), overruled
in part on other grounds by Cold War Museum v. Cold War Air
Museum, 586 F.3d 1352 (Fed. Cir. 2009).
10. 192 F.3d 1349 (Fed. Cir. 1999).
11. Id. at 1353.
12. See Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir.
1952); see also Au-Tomotive Gold Inc. v. Volkswagen of America
Inc. et al., 457 F.3d 1062, 1071 (9th Cir. 2006).
13. Pagliero, 198 F.2d 339.
14. Au-Tomotive Gold Inc., 457 F.3d at 1075.
15. Fleischer Studios Inc. v. A.V.E.L.A. Inc., 636 F.3d 1115,
1124 (9th Cir. Feb. 23, 2011).
16. Fleischer Studios Inc. v. A.V.E.L.A. Inc., 654 F.3d 958 (9th
Cir. Aug. 19, 2011).
17. Wallace Int’l Silversmiths Inc. v. Godinger Silver Art Co.,
916 F.2d 76, 81 (2d Cir. 1990).
18. Landscape Forms Inc. v. Columbia Cascade Co., 70 F.3d
251, 253 (2d Cir. 1995).
19. U.S. Registration No. 3,361,597 issued Jan. 1, 2008.
20. Christian Louboutin v. Yves Saint Laurent America, 778 F.
Supp. 2d 445, 451 (S.D.N.Y. 2011).
21. Id. at 450.
22. Id. at 451.
23. Id. at 454.
24. Id. at 458.
25. Id. at 449.
26. Brief of Amicus Curiae Tiffany (NJ) LLC and Tiffany &
Co. in Support of Appellants’ Appeal Seeking Reversal of the
District Court’s Decision Denying Appellants’ Motion for Preliminary Injunction at 3, Christian Louboutin S.A., 778 F. Supp.
2d 445.
27. Brief of Amicus Curiae International Trademark Association in Support of Vacatur and Remand at 1-2, Christian
Louboutin S.A., 778 F. Supp. 2d 445.
28. Id. at 2, 24.
29. Brief of Amicus Curiae Law Professors in Support of Defendants-Counter-Claimants-Appellees and Urging Affirmance
at 11, Christian Louboutin S.A., 778 F. Supp. 2d 445.
30. 17 U.S.C. §102.
31. See, e.g., U.S. Copyright Registration No. VA0001702208.
32. See, e.g., U.S. Copyright Registration Nos. VA0001637221,
VAu001025526.
33. See, e.g., Chosun Int’l. Inc., v. Chrisha Creations, Ltd., 413
F.3d 324 (2d Cir. 2005) (holding that costume designs may warrant copyright protection); Kieselstein-Cord v. Accessories by
Pearl Inc., 632 F.2d 989 (2d Cir. 1980) (finding belt buckle designs copyrightable).
34. MPEP §1502.01.
35. See, e.g., U.S. Patent D436,714.
36. See, e.g., U.S. Patent D564,224.
37. See, e.g., U.S. Patent D545,039; D629,595.
38. MPEP §1502.01.
39. Crocs hold one patent covering various utility aspects
of its footwear, U.S. Patent No. 6,993,858 B2 and three design
patents, U.S. Patent Nos. D517,788, D517,789 and D517,790.
40. IDPPA, H.R. 2511, 112th Cong. §2(a)(7)(A).
41. Id. at §2(e)(3)(A).
42. Id. at §2(e)(1)(C).
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