Why Alba Footwear should pick up where YSL left off in defending against Louboutin (PLUS: I'm officially on NYU Law's faculty!)
This writer, one Charles Colman, is happy to announce that he is now *officially* an Acting Assistant Professor at NYU Law School. The proof: my faculty profile, posted here. My firm, Charles Colman Law, PLLC, remains open for business.
In other news, the World IP Review has been kind enough to quote me in three different articles over the past month:
- "Disney withdraws Day of the Dead mark application" (May 13, 2013)
- "Judge bars copyright class action against YouTube" (May 20, 2013)
- "Louboutin launches new 'red sole' case" (May 31, 2013)
I'd like to direct your attention to the last piece, in particular, as it addresses issues that I've examined in great detail in the past. (See these blog posts on the 2011-2012 Louboutin v. YSL case and this magazine article on the trademark-law doctrine of "aesthetic functionality.") Here's an excerpt from the middle of the third WIPR article:
Charles Colman, founder of Charles Colman Law PLLC, said that the defendants may have an argument for aesthetic functionality.
“If a company is selling only high heels with red soles, it looks a bit suspect, like they’re trying to free ride on Louboutin’s reputation, and the public’s desire for Louboutin shoes,” he said.
However, Alba Footwear sells shoes featuring sole in a variety of colours, and red just happens to be among those soles, he added.
“Unless these other designs are decoys, intended to lend legitimacy to Alba’s red-soled shoes, the defendant has a strong ‘aesthetic functionality’ argument, a slight variation on the approach that YSL took in its defense against Louboutin in 2011-2012.”
Louboutin's Complaint against Alba Footwear et al. is posted at Scribd and embedded below. But allow me to highlight the photos of the allegedly infringing shoes singled out in Louboutin's allegations:
Now, take a look at some of Alba's other offerings (not mentioned in Louboutin's Complaint, of course):
You can see that (as discussed in the WIPR article) Alba features a variety of colors and visual motifs on its soles. Also, interestingly, unlike Louboutin's standard red-soled pumps, at least some of Alba's shoes incorporating red soles do not extend the color to the inside of the heel:
Further, it appears that all of Alba's shoes prominently display the ALBA logo on the inside of the shoe (as was true of the YSL logo in the higher-profile predecessor to this case -- one reason why Louboutin's attorneys were forced to abandon their "point-of-sale confusion" theory of trademark infringement in favor of an "initial-interest confusion" theory of liability -- a problematic doctrine that LAW OF FASHION will have to address later):
But forget about consumer confusion, or lack thereof, for the time being; even assuming there is a cognizable "likelihood of confusion" (or "likelihood of dilution") on these facts, that is trumped by the doctrine of "aesthetic functionality" -- if the latter can be shown. (For nuances concerning the burden of proof, go here.) Recall that Judge Victor Marrero, the district-court judge who presided over the initial proceedings in the Louboutin v. YSL litigation, did find that trademark liability for YSL was precluded by virtue of the aesthetic functionality doctrine. In this latest case, the fact that defendant Alba Footwear uses red among myriad colors and designs for its soles strongly underscores the central message in Judge Marrero's Aug. 8, 2011 opinion (excerpted, with added emphasis):
[Painting and fashion design] share a dependence on color as an indispensable medium. Color constitutes a critical attribute of the goods each form designs. Alone, in combinations, in harmonious or even incongruous blends, in varying patterns and shapes, the whole spectrum of light serves as a primal ingredient without which neither painting nor fashion design as expressive and ornamental art would flourish. For, color depicts elemental properties. As it projects expression of the artist’s mental world, it captures the mutability, the fancy, the moods of the visual world, in both spheres working as a means to execute singular concepts born of imagination for which not just any other shade will do. Hence, color in this context plays a unique role. It is a feature purposely given to an article of art or design to depict the idea as the creator conceived it, and to evoke an effect intended. In ornamenting, it draws attention to itself, and to the object for which its tone forms a distinct expressive feature. From these perspectives, color in turn elementally performs a creative function; it aims to please or be useful, not to identify and advertise a commercial source....
[P]erhaps the most crucial among the features painting and design share as commerce and art are two interrelated qualities that both creative fields depend upon to thrive, and indeed to survive: artistic freedom and fair competition. In both forms, the greatest range for creative outlet exists with its highest, most vibrant and all-encompassing energies where every pigment is freely available for the creator to apply.... Placing off-limits signs on any given chromatic band by allowing one artist or designer to appropriate an entire shade and hang an ambiguous threatening cloud over a swath of neighboring hues, thus delimiting zones where other imaginations may not veer or wander, would unduly hinder not just commerce and competition, but art as well.
This passage was good law (in both senses of the phrase) until the Second Circuit mucked everything up on appeal with its bizarre, quasi-sua sponte findings of fact in a tortured opinion whose only apparent objective -- and only achievement, certainly -- was avoiding the thorny aesthetic functionality issue before it. Importantly, however, the Second Circuit did not foreclose the invocation of an aesthetic functionality defense in cases like this, even if the court did express disapproval of Judge Marrero's fashion-specific, per se rule. The appellate court merely affirmed Judge Marrero's denial of a preliminary injunction to Louboutin on different (i.e., secondary meaning) grounds. (Strangely, everyone seems to have forgotten -- perhaps because of Louboutin's remarkably effective spin on the outcome of the case -- that this was the procedural posture of the Louboutin v. YSL appeal, and that the propriety of Marrero's having denied Louboutin's requested injunction was the only question the Second Circuit purported to address.)
So, yes, the issue of aesthetic functionality is still very much on the table. In layman's terms, the key question might be put as follows: Should Louboutin be able to use federal trademark law to prevent Alba from using the color red -- even just bright "Chinese lacquer red" -- as part of a diverse palette for Alba's high-heel soles, just because Louboutin got to that color first?
[Side note: Some attorneys might take issue with the phrasing of the last part of my question, emphasizing the "secondary meaning" hurdle that the Supreme Court imposed on color trademarks in a 1995 case called Qualitex Co. v. Jacobson Prods. Co. I can't have that debate here and now, especially with an imaginary party. But while we're on the subject of Qualitex, what if other colors are snatched up by a series of trademark claimants, and designers' palettes gradually dwindle to the least desirable colors?]
In thinking about this important public-policy question, remember not to confuse the goals of patent law -- which limits competition, to a certain degree, in order to spur innovation -- with trademark law -- which aims to encourage competition, by ensuring the integrity of source identifiers.
I think you know the right answer here.
[Like everything on LAW OF FASHION, this post is for entertainment and informational purposes only, and does not constitute legal advice or create an attorney-client relationship among any individuals or entities. Any views expressed in this post or at the linked web pages are those of the relevant writer(s) on a particular date, and should not necessarily be attributed to Charles Colman; Charles Colman Law, PLLC; New York University; The Center for the Study of Fashion, Law, or Society; or any subdivisions, agents, representatives, or clients thereof. Neither the writer of this post nor LAW OF FASHION (or any person or entity associated with either) can or will warrant the thoroughness or accuracy of the content here or at the cited sources.]