While there is so much fashion law news of dubious importance that CATWALK JUSTICE could cover this week, one case towers over all others in its importance and heel height. That case, of course, is Christian Louboutin S.A. v. Yves Saint Laurent America, which CATWALK JUSTICE has reported on before, and which CJ’s author has blogged about on LAW OF FASHION in exhaustive, exhausting detail. (Quick plug for the new, official LAW OF FASHION LinkedIn group affiliated with the blog, where we discuss all things fashionable and legal; we’d love to have you.)
Because of the enormous importance of this week’s ruling in the Louboutin case, CATWALK JUSTICE is going to devote this week’s entire column to the case. So without further ado, let’s break this thing down… in Q&A format!
Question: What’s the difference between patents, copyrights, and trademarks, and which of these are relevant in the Louboutin case?
Answer: You’ve identified the “big three” in intellectual property. Patents cover novel inventions of useful products and processes, as well as certain ornamental aspects of functional goods. Copyrights protect non-utilitarian, original works of authorship. Only trademark protection (along with related, secondary areas of IP) is at issue in the Louboutin case. Trademarks protect words, symbols, and pretty much anything else that indicates the source of a good or service. But it’s that “pretty much” that is the new thorn in Louboutin’s side.
Q: Everyone knows that bright-red soles = Louboutin, so why is this a hard case?
A: Louboutin sued YSL for selling a variety of monochrome shoes that had bright-red soles (along with bright-red “uppers”). Along with the usual defenses to claims of trademark infringement — an insufficient percentage of consumers associate bright-red soles with Louboutin, consumers are not likely to be confused about the source of the shoes — YSL took the aggressive position that a single color on an article of apparel can never be a valid trademark. The U.S. Supreme Court has already ruled that color alone may serve as a trademark, provided there is an adequate level of consumer recognition and the color is not functional. (No one could, for example, claim trademark rights in the color red for stop signs.) The reason for this “functionality” bar is that it is patent law’s job — and not that of trademark law — to grant monopolies on useful items. And when patent law does grant those rights, they’re temporary — fourteen to twenty years, depending on the type of patent — whereas trademark protection can theoretically last forever.
YSL seized on this functionality rule, urging the district court to carve out what was essentially a special exception for fashion, taking the position that single colors are always functional in fashion because they are a basic design element that all labels need to have access to in order to compete in the marketplace. Many district court judges are wary of “making new law,” as that is generally the role of appellate courts in the judiciary; but YSL’s lawyers were likely emboldened to take such an aggressive stance because 1) YSL is a venerable design house with strong credibility; 2) Louboutin had (probably unwisely) sued over monochrome shoes, instead of shoes where the red sole contrasts with the upper; 3) Louboutin’s trademark registration was quite vague, and judges don’t like uncertainty in the law; and 4) the question “Is a single color inherently functional in fashion?” was posed during proceedings over Louboutin’s requested preliminary injunction — an early stage of the case where a plaintiff has an extra burden to get what it wants from the court.
Q: So you’re saying that if a trademark is found to be functional, it doesn’t matter whether the trademark owner has secured a registration from the Trademark Office, or how many consumers associate the trademark with the owner?
A: That’s right. Unlike some other challenges to trademark registrations, a challenge for functionality can be brought at any time. (Similarly, a challenge that a mark is, or has become, “generic” can be brought at any time, which is why companies like Chanel sometimes run ads instructing people not to use their brand names in a generic way; they’re trying to avoid what trademark lawyers call “genericide.”)
Q: But doesn’t color always serve the “function” of making something more attractive?
A: In many instances, yes. But in many industries, the attractiveness of the product doesn’t matter. The product at issue in the Supreme Court case I mentioned earlier, for example, was a dry cleaning pad with a distinctive green-gold color. Dry cleaners probably don’t care what color their pads are; the customers never see them, anyway. But in fashion, color is a central feature that determines whether consumers will want to buy the product or not. YSL’s lawyers argued, quite persuasively, that because of this, fashion is just different. And the judge accepted that argument.