Yves Saint Laurent finds friends in 11 law professors in Louboutin red sole battle
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|
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?
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?|
|Calvin Klein S/S 2011|
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?