Letter from AmeriKat: Innovation Over Imitation

Last Sunday, the AmeriKat was recovering from a nasty bout of bronchitis. To cheer her spirits, she decided to grant herself a dose of pre-planned enjoyment in the form of live music. Wrapped up warm in a navy blue trench coat and various cashmere sweaters, she braved the incredibly fresh 'summer' skies to watch the acclaimed My Morning Jacket perform in the grandiose arena of Somerset House. The crystalline cry of the guitars, pulse-rattling base, and atmospheric harmonies melted many an audience member as the band waltzed through their set. When the first smoky chords of Wordless Chorus were played, the audience immediately geared themselves up to sing one of the most popular, and IP apropos, lyrics by the band:

"We are the innovators, they are the imitators."

The question of who is the innovator and who is the imitator is the perennial question for all intellectual property law, and this week's stories are no exception. (picture, above left - the AmeriKat asleep after the concert on one of the guitars)

Louboutin judge promises red-soles ruling on injunction soon

The Amerikat previously reported on the stiletto feud between Christian Louboutin and Yves Saint Laurent back in April when Louboutin sued Yves Saint Laurent for trade mark and trade dress infringement for selling shoes that allegedly bear the identical red soles that that have made Louboutin famous. Louboutin was granted a US trade mark in 2008 for its red-lacquered sole. Louboutin has claimed $1million in damages and has asked the court to grant a preliminary injunction against Yves Saint Laurent. (picture, right - the offending Yves Saint Laurent shoe)

During a hearing last Thursday, US District Judge Victor Marrero stated that he would decide on whether to grant Louboutin's request for a preliminary injunction "as soon as possible".

Following the hearing Harley Lewin, one of Louboutin's lawyers, stated that

"This is the lifeblood of this company, the red sole. When people see the red sole on the street they think Louboutin."

The AmeriKat has previously regaled readers regarding the origin of the Louboutin red sole (here) which was introduced as a mark of the shoe brand in 1992. Following the court filing, Yves Saint Laurent hit back arguing that Louboutin had no monopoly over the red-colored shoe soles and that similar applications were commonplace before Louboutin's use (picture, left - a Louboutin). The defence filed by Yves Saint Laurent stated:

"Red outsoles are commonly used ornamental design feature in footwear, dating as far back as the red shoes worn by King Louis XIV in the 1600s and the ruby red shoes that carried Dorothy home in The Wizard of Oz. As an industry leader who has devoted his entire professional life to women's footwear, Mr. Louboutin either knew or should have known about some or all of the dozens of footwear models that rendered his sworn statement false."

Even so, the lack of innovation does not mean that Louboutin's lawsuit would fail. Like with EU trade mark law (dare the AmeriKat say there is such a thing), a sign that is otherwise common place or generic can acquire distinctiveness through use and be protected by trade mark law. The same can apply for color trade marks and trade dress in the U.S. as long as the color has acquired a "secondary meaning" and is non-functional, i.e. the color does not function except as an indication as to source (Qualitex v Jacobson) Ask any shopper on Fifth Avenue and the AmeriKat thinks one could quickly come to the conclusion that the primary function of the red-sole is that of indicating the source of the shoe as being Louboutin - that or signalling to the poor masses that one can afford such a shoe. However, it does then become an interesting "chicken or the egg" type question. Does the non-functional indication of source by way of the red-sole give the shoes a aesthetic functional value or does the aesthetic functional value of the red-sole give the shoes a non-functional indication as to source? Or is that just asking the same question in a different way? (picture, above right - Sex and the City made Louboutins and their red soles a house hold name)

Such questions and debates are not presently before the court, however (see New York and WWD's report about the debate here). The first hurdle is for Judge Marrero to decide whether or not to grant Louboutin's injunction. During the hearing, it was reported that the judge repeatedly asked Louboutin's counsel about the design elements of the shoe, including the shade of red on the sole, in order to determine what would and would not be trade mark infringement for the purposes of granting an injunction. (picture, left - various shades of red, but which one is infringing?)

Yves Saint Laurent's lawyer, David Bernstein, emphasized the potential danger of an over-wide injunction stating that

"We don't know what we are and what we are not allowed to do. Even Mr. Louboutin does not know. "

The AmeriKat is quizzical about the injunction issue. Where is the irreparable harm? Yves Saint Laurent have been able to quantify the number of sales of the allegedly offending shoe. Does it warrant an injunction at this stage? Or is the heavy-hitting approach with the injunction just fodder for the media so Louboutin can send the message that they are serious about those who use red-soles on their shoes? We await Judge Marrero's decision...

We are the innovators, screams re-introduced IDPPPA fashion copyright bill

Like with patent reform, the AmeriKat was hit with another strong sense of IP deja vu when two weeks ago, Representative Bob Goodlatte (R-VA) (picture, right) reintroduced the Innovative Design Protection and Piracy Prevention Act (IDPPPA) - not a very fashionable acronym. The bill would give three years of copyright protection to new, innovative designs with the hope that such protection would stem off the flood of fast-fashion copies.

After Rep. Goodlatte's introduction, Proenza Schouler designers Lazaro Hernandez and Jack McCollough testified before members of Congress arguing that the IDPPPA was necessary for young designers. Hernandez, one of several designers to have testified before Congress on this issue, explained the frustration that designers, like Proenza Schouler, encounter when after growing a company from scratch one sees its signature piece copied en masse by retailers. The signature piece Hernandez was referring to is their PS1 satchel. Readers may recall a recent AmeriKat report regarding the PS1 (picture, below) and a similar bag marketed by Target (see report here).

Without useful IP tools like trade mark patterns or fixtures adorning their bags, the Proenza Schouler bags are feats of design - not branding. Fashion designs are not afforded protection in the U.S., as they are in the U.K. and EU, and thus the investment of time and money in this work can frustratingly be lost due to rampant copying. Hernandez told Congress:

“Our designs are born in our imagination. We create something from nothing at all,...By far the majority of apparel is based on garments already in the public domain. Nothing about the proposed legislation will change that. Nobody will ever be able to claim ownership of the T-shirt or pencil skirt. This bill is intended to protect only those designs that are truly original."

The IDPPPA, now in its second incarnation, has a higher standard of proof for designers than the previous bill. Besides demonstrating that a design is new and innovative, designers also now have to show that a copy is "substantially identical" rather than "substantially similar" and that the similarities between the two are in the construction and not surface decoration such as color and patterns. All of this is feeling a bit "UK Unregistered Design Rights" to the AmeriKat - noooo-ooooo......!

Irrespective of the content of the bill, the mere passage of such fashion legislation would be a symbolic victory for sections of the fashion industry who have been lobbying with the Council of Fashion Designers of America for this legislation for the past five years. However, with the US government dealing with the debt ceiling, it is unlikely that there will be much enthusiasm for concentrating on this legislation, and even on the more-publicized patent reform, until the Fall.

For more information see the report in the New York Times and Washington Post.

And now for something different...patents (sort of)

The AmeriKat picked up an issue of The Spectator last week and read with interest a recap of this year's commencement speeches in the U.S. The tradition, which sadly does not extend itself to well to the British higher education system, is where a usually famous individual gives an inspirational/funny/serious speech to the graduating class. The AmeriKat was interested to note that this year USPTO Director David Kappos gave a Commencement address at UC-Davis's College of Engineering graduation (picture, left - David Kappos giving his speech). No mention of the word "intellectual property", but there were 15 mentions of the word "innovate" signalling the stated desire of the US government to spur innovation to kick-start a lagging economy. Kappos stated:

"Ladies and gentleman—with the degrees conferred upon you today, you will lead the course of history by innovating & implementing; and by building & making. Innovation bridges cultures through new channels of communication; innovation renews hope in villages plagued by disease; innovation stems the tide of environmental degradation; innovation builds new industry; and innovation affords a young mind the chance to dream and the chance to make those dreams come true."

Innovate, ladies and gentleman, do not imitate.