Trademark Color Wars
We are in the midst of Mercedes-Benz Fashion Week here on the Upper West Side, and lucky for Fordham students, many runway shows showcasing upcoming fashions for Fall 2012 are taking place right next door. On Friday, Professor Scafidi and the Fashion Law Institute hosted an event appropriately titled, “The Law of the Fashion Show.” This event invited several industry giants to discuss the legal issues that producers of a large-scale fashion show may have to face, especially with respect to intellectual property law – for example, the use of music in shows and ownership over photographs of models taken on the runway.
In the past few years, the IP world has been taking note of the fashion industry as an area ripe with unsolved legal controversies, given that many of these issues have developed following the Internet boom. Counterfeit garments and luxury goods seem to make the news on a weekly basis. Some cases, like Costco Wholesale Corp. v. Omega S.A., gain marquee attention from the legal industry — sometimes even making their way to the Supreme Court and back, without seeing a full resolution of the issues. One case that has gotten a lot of press recently, including in our own blog, is Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., which was argued before the Second Circuit just a few weeks ago on January 24th.
For those unfamiliar, shoe designer Christian Louboutin initiated this lawsuit after his competitor, Yves Saint Laurent, designed and marketed its Tribute, Tribtoo, Palais, and Woodstock shoes in its 2011 Cruise Collection. The shoes were designed as monochromatic pieces, and some of these came in red. However, the soles on the red pairs red matched Louboutin’s iconic (and trademarked) Chinese Red (Pantone 18-1663) sole, which made the shoe designer a fashion legend. Louboutin began using the signature lacquered red sole on all his designs in 1992, after seeing an assistant applying nail polish of the same hue. The trademark was filed in 2007 and registered in 2008.
Because it can serve to indicate the origin of a product or service, color can sometimes be protected through trademark law. The fashion industry holds a few examples — famous ones include Tiffany’s robin egg blue and Hermès’ iconic orange. To trademark a color, the applicant has to show that the color has attained a “secondary meaning,” indicating its source. Moreover, a trademark cannot be functional. A trademark is functional if its “aesthetic value is able to confer a significant benefit that cannot practically be duplicated by the use of alternative designs.” (See Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 778 F. Supp. 2d 445).
In the District Court opinion, Judge Marrero explained that there may be a fine line between using a color in a manner that is “functional,” and therefore not eligible for trademark, versus using a color in a manner that is trademarkable. Because in fashion, like in art, reasoned Judge Marrero, color serves an aesthetic purpose, one company should not be granted a trademark on a certain color sole. While a box of a certain color (such as the iconic Tiffany & Co. gift boxes) may not be “functional” under this analysis, the District Court found in the context of a garment a color may have a certain function, and a fashion designer should not have a monopoly over it.
Oral arguments in the Second Circuit focused on whether this aspect of the trademark law was interpreted correctly. Because color may be trademarked solely as a brand identifier, Louboutin’s attorney, Harley Lewin of McCarter & English requested that the Second Circuit order additional discovery to take place before Marrero.
While Tiffany & Co. provided an amicus brief in support of Louboutin, If the decision by SDNY is upheld, Tiffany blue may still be safe. Louboutin, on the other hand, may need to look for other other ways of distinguishing its product. One thing the shoemaker could consider could be to design a logo, still in China Red, perhaps, and position it such that it covers much of the shoe’s sole in a manner that is still identified, but such that the logo is unquestionably protected by trademark law. This could potentially continue to give the designer’s shoes the visibility and glamour that the solid red soles currently provide.
Although color alone cannot be patented, and due to trademark law, artists may not keep a monopoly over a color, Louboutin could look to international intellectual property law for examples on how to protect color. One example that comes to mind is artist Yves Klein’s patenting of the process for creating his signature International Klein Blue. To distinguish many of his paintings, Klein began using a bright ultramarine hue extensively in his paintings starting in 1958. In 1961, however, he made this color exclusively his by filing for (and ultimately receiving) a patent in France for the method of creating this hue.
Conceptually, this type of patent could work in the U.S. if Louboutin filed for a patent for the steps required in creating a new color. Hypothetically, Louboutin could create a new “Louboutin red,” for example, through a patented chemical process, and apply it to the soles of any new designs he releases. This way, until a competitor found a new means by which to create this color, Louboutin’s signature hue would be protected from impostors.
Until there is a reversal, however, Louboutin (and other designers) may have to continue to live with the age-old maxim, ever true in the fashion industry: “imitation is the highest form of flattery.”