A quick word about Tiffany's amicus brief in the Louboutin v. YSL case

Posted by Charles Colman

As you've probably heard by now, jeweler Tiffany (of the famous, robin's egg-blue boxes) has filed an amicus brief in the Louboutin v. YSL case, which is currently on appeal before the Second Circuit.  LAW OF FASHION has posted Tiffany's brief here.


While LOF can't engage in a full scholarly analysis of Tiffany's argument at the moment, it does wish to make some quick observations about the brief (which, as mentioned in a footnote, was authored by the same firm that filed the Louboutin trademark registration now in peril.)


The first thing that caught LOF's eye (first appearing on page 7, and again on page 13) was Tiffany's assertion that a court should rule on a defendant's "functionality" argument only after going through the multi-pronged "likelihood of confusion" analysis. Apart from being bad policy (because such a rule would unnecessarily prolong many trademark cases), Tiffany's only support for this assertion appears to be a treatise:


"As to the order in which these issues are to be decided, Professor McCarthy explains: '[T]he Second Circuit has said that a court should first decide on the issues [of validity of the mark] and likely confusion and only if a prima facie case is established then proceed to the defense of functionality.' 1 MCCARTHY § 7:69 at 7-196 (citing Stormy Cline, 809 F.2d 971)."


Tiffany quotes from the McCarthy treatise again on page 20, in an effort to persuade the Second Circuit that the District Court applied the incorrect test for "aesthetic functionality":


"1 MCCARTHY § 7:80 at 7-246 ('The Second Circuit adopted the policy . . . that an aesthetic, nonutilitarian feature is barred from trademark protection only if there are no alternative designs available to competitors.')"


In LOF's view, anytime a brief relies so heavily on secondary sources -- and especially a single secondary source, particularly for that source's interpretation of case law that the brief could just as easily cite or quote directly -- one should be suspicious that the case law might not say quite what the party wishes it said.


In any event, the following passage, on page 21, appears to be the crux of Tiffany's argument:


"Instead of conducting the proper analysis, the District Court appears to have relied again on sweeping generalities about the fashion industry as a whole, stating that '[f]ashion is dependent on color,' and that color as a whole (not the particular color mark at issue here) is an “indispensable medium.” Op. at 454, 452. Based on these broad generalities, the District Court went on to conclude that the use of a single color in fashion is per se aesthetically functional because protection of a single color would purportedly “cramp[] what other designers could do” in an industry that is 'susceptible to taste, to idiosyncrasies and whims and moods, both of designers and consumers.' Op. at 454.


But such speculation and generalizations are not the proper way to analyze an aesthetic functionality defense. The limited question in the aesthetic functionality inquiry is not whether designers in general need to be able to use colors on unspecified products, but whether makers of competitive shoes need to use red soles to compete effectively. The District Court did not conduct this required analysis."


Tiffany's argument might have superficial appeal, especially to self-proclaimed advocates of "judicial restraint."  Sure, deal with this defense on a case-by-case basis... that makes sense.  But stop and think about the real-world impact of Tiffany's argument.  Its articulation of the aesthetic functionality doctrine would make the defense virtually impossible to assert in practice.  What sort of evidence could a defendant possibly produce that would conclusively prove that competitors need to use "lipstick-red" soles (or "robin's egg-blue" packaging) specifically?

The impossibility of making such a showing may well have provided the rationale behind the District Court's "sweeping generality" (in Tiffany's words) about the singular importance of color in fashion design.  As Judge Marrero's decision wisely recognized, the specific color at issue doesn't matter; granting exclusive rights in any single shade will, by definition, hinder competition in the fashion industry, where color plays such a prominent role in determining the desirability of products.


In short, LOF understands why Tiffany opted for this approach, but we're not persuaded.


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[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 writer on a particular date, and should not necessarily be attributed to this writer, his law firm, or its clients.]