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Monday, 9 January 2012

Letter from AmeriKat II: Law professors side with Yves Saint Laurent in Louboutin battle

Yves Saint Laurent finds friends in 11 law professors in Louboutin red sole battle

Five days ago a group of 11 law professors all from different universities filed an amicus curiae brief in support of Yves Saint Laurent in their defence against Christian Louboutin's trade mark infringement claim (see previous stories here and here) in respect of their red soles. In a somewhat interwoven argument, the brief criticized Louboutin and INTA's analysis of the doctrine of aesthetic functionality and argued that in order to preserve innovation and competition the protection of single colors in fashion markets should be rejected. The doctrine of aesthetic functionality asks whether an aesthetic feature of a product is functional because it is "essential to effective competition".

In the Second Circuit the test for aesthetic functionality was laid down in Wallace International Silversmith v Godinger Silver Art (1990).  The case stated that:
 "[W]here an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of alternative designs, the aesthetic functionality doctrine denies such protection." 
Pretty purple suede Louboutin pumps
This test echoes the Supreme Court's dicta in Qualitex which states that "[I]f a design's aesthetic value' lies in its ability to 'confe[r] a significant benefit that cannot be practically duplicated by the use of alternative designs, ' then the design is 'functional.'" That is to say, where it is necessary for competitors like YSL to use the color red on soles of footwear in order to compete effectively and there are no alternatives, then this points to Louboutin's red sole trade mark as being functional. The brief argues that the Supreme Court in Qualitex has "repeatedly stated that functional features are not protectable regardless of secondary meaning", i.e. the recognition by consumers that a red sole means Lobuoutin does not rescue it from losing protection due to functionality. INTA however argued that when the attractiveness of a design such as a red sole comes solely from the secondary meaning generated by the red sole (i.e., red soles are attractive because they = Louboutin), then any "aesthetic appeal" in the design comes from the meaning conveyed by the trade mark. The brief countered that even if Louboutin did not exist, the attractiveness of an all-red shoe would nevertheless still exist.  

The professors' filing argued that Louboutin and INTA (see brief here) would "apparently prefer that only utilitarian functionality exist", however the Second Circuit and Supreme Court has long-established case law recognizing the importance of the aesthetic functionality to trade mark law in circumstances where consumers' preferences for attractive product design drives their purchases.  The aesthetic functionality doctrine's purpose is thus to prevent  trade mark protection for "patent-like protection for attractive but non-novel product features" in order to maintain competition. The brief cited a recent article by Mark McKenna entitled "(Dys)Functionality" in the Houston Law Review which stated
 "Farm equipment does not work better because it is green—it does not till better, work longer, or cut more reliably—just as strawberry-flavored flashfrozen ice cream does not taste better because it is pink. If, however, consumers expect their farm equipment to be green or their strawberry flavored ice cream to be pink, then those colors serve non-source-related functions, and they do so even if consumers also associate the colors with John Deere and Dippin’ Dots, respectively..." 
Would Tiffany object to the limited
edition blue-soled Louboutin shoes
designed for their wedding collection
as "something blue" for brides?
Of course single colors have been held by the Courts to be non-functional in particular product streams, such as in building/industrial materials where color is not considered a central product characteristic by its consumers. The brief argues that a court may legitimately tell builders that their walls and buildings will still stand if they use a blue screw instead of a red screw, but the courts cannot tell a designer that an outfit works equally well with blue shoes, as it does with red shoes. The brief argues throughout that it is in this fashion context and in this market in which the protection of the red sole mark must be analyzed.

In citing the Second Circuit case of Wallace - a case about the registration of baroque designs for silverware where the court found the designs were aesthetically functional because protection afforded to the trade mark would limit the range of adequate alternative baroque designs -- the brief argued that when the aim is to create color compatibility or a red monochromatic effect in fashion design there is no alternative but to use red.
"The question is not whether other designers can compete with Louboutin by offering attractive blue shoes to consumers who want red shoes. The question is whether Louboutin’s competitors can make red shoes for consumers who want red shoes because of their aesthetic appeal." 
The brief went on to state that 
"[a] woman who buys red shoes is doing so for a reason – red shoes have a particular meaning to her, and to others, that cannot be supplied or even approximated by shoes of a different color. Given the substantial creativity involved in both fashion design and fashion consumption, courts should not lightly allow one particular competitor to monopolize particular fashion sub-markets. To tell a designer that other single colors are “adequate – at least until someone else appropriates them, as amicus Tiffany would like to do with respect to robin’s egg blue (and, no doubt, as other fashion firms will rush to do with respect to any number of other colors if appellant’s arguments are upheld – is to interfere significantly with both creative freedom and with consumers’ ability to make fashion choices that are both highly individual and deeply personal." 
Which is the infringing red?
A theme in Louboutin's and the amici's arguments was that Judge Marrero went too far in looking beyond the trade mark as claimed on the registration, but examined the protection of the "color red" in general. The law professors argued that the District Court properly dealt with the rights that Louboutin claimed to own which were not limited to a lacquered red sole as claimed on the trade mark registration. Louboutin had, they argued, claimed "entire swathes of the color spectrum" (remember the X% range above and below the claimed "Chinese Red"?). The brief argued that the District Court properly evaluated the broad claim and the broader the claim the more likely it encompasses functional matter (Jay Franck & Sons v Franck (2010)) Because, unlike patents, the boundaries of trade mark protection are indistinct in that trade mark monopolies do not only deter the identical use of a mark but also uses that are confusingly (or "dilutingly") similar, the functionality analysis should also take into account the scope of the claimed trade mark in order to determine what the alternatives to the use of that mark are, i.e., which red could be used that is not infringing? The District Court was therefore correct in evaluating the claim to red as formulated during the litigation.

Calvin Klein S/S 2011
The brief also took some time to address Tiffany's amicus brief and its claim to robin's-egg blue for product packaging to fashion items. The brief argued that the Court should not create a rule that would make it easy for companies like Tiffany or "any other entity with a nonfunctional color mark for a non-fashion product" to claim they are entitled to control portions of the fashion market in respect of a color. To demonstrate this, the professors pointed to Calvin Klein's Spring/Summer 2011 collection. The collection used robin's egg blue on many of the collection's pieces, including blazers and trousers. The brief asks whether Tiffany's claim to a robin egg's blue in respect of fashion items restrict Calvin Klein's ability to show a collection like the Spring/Summer 2011 collection? The uncertainty that users would face with such claims from Lobuoutin and Tiffany "would cause precisely the harms that functionality doctrine aims at averting."

The arguments contained in the brief seem to the AmeriKat to encapsulate a more general policy argument that militates against the protection of single-color as applied to fashion items, than any hard-line legal analysis (or it may be the jet-lag getting to her). Indeed the points raised in the brief echo her closing questions following the AmeriKat's report on the Tiffany amicus brief:
"Does YSL need to use red soles in order to compete effectively in high-end womens' footwear? On one view, of course it does not. It can use other shades on its shoe - the shoe design itself will still be open to YSL to design how it sees fit, the only prohibition is using red on the sole (what red, of course, is still a live point in this case and wisely not one Tiffany touched on). However, from an industry standpoint, why should YSL be prevented from marketing a monochrome red shoe as part of its monochrome footwear collection?" The AmeriKat thinks that one of the key issue here is that of "certainty". 
There will always be grey areas surrounding the ambit of protection for a trade mark, but is the grey area even larger (and unnecessarily so) in respect of registrations for single colors for fashion items, so much so that the grey area encroaches upon the area of free competition? With two weeks to go until the oral hearing in the appeal of the case, what do readers think?

5 comments:

Anonymous said...

Surely the key question is whether red soles actually function as a trade mark? That is to say, do consumers rely upon that sign as designating trade origin? If they do, then it should be protectable; if not, not. But it is not enough for this purpose that consumers associate red soles with one trade source in the sense of recognising that (to date) only one source has marketed such shoes. No further or more complicated analysis is needed.

Filemot said...

surely the grey area round Chinese red soles is pretty limited and the Klein rags are not Tiffany coloured to my eye. But most of all what to do the Law Professors think that women say when they wear red shoes?

Anonymous said...

'All of INTA’s members share the goal of promoting an understanding of the essential role trademarks play in fostering informed decisions by consumers, effective commerce, and fair competition.'(INTA´s brief in the case). In this case I think that INTA forgot the aspect of fair compitition in its brief!

Anonymous said...

--- oh, the excesses of modern trade mark law:

“I can’t believe it’s not Louboutin”.

I personally cannot understand how the building blocks of our perception can be registered for the sole use of one entity, for eternity, provided you pay renewals. A time-limited right to protect imaginative design, yes, but eternity - I shudder.

George Brock-Nannestad

Almost Emeritus said...

Re Filemot's comment, you cannot rely on how something appears on your computer screen unless your monitor has been accurately calibrated against a standard. CRT displays have a different colour gamut from LCD displays, which again differ from the gamut of PDP displays, and there are ranges of colours that are impossible to display accurately on any computer monitor. Your computer has to synthesise its colours by mixing appropriate proportions of RGB produced by its phosphors or the like, whereas the Pantone system, which was designed with printing in mind, includes a range of standardised pure pigments which make a much wider gamut available.

Thus you would really need to actually view the item itself using a standardised illumination source in order to make a valid assessment of the similarity or otherwise of two colours.

A problem with defining colours by reference to a standard, is that you need to make measurements using light sources and sensor elements of known properties. The Pantone web site indicates that colour patches should be replaced every year to avoid errors due to fading.

While a machine measurement will accurately define the properties of a given colour sample under the standardised measurement conditions, colours that appear to the eye to match under fluorescent light, can look very different under daylight, and vice versa, due to the different spectra of the respective light sources.

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