JURIST Guest Columnist Danielle Gorman, Benjamin N. Cardozo School of Law Class of 2013, is a Staff Editor for the Cardozo Arts & Entertainment Law Journal. She writes on the need for a revised opinion in the Yves Saint Laurent v. Louboutin case that would allow for the future protection of certain single color marks in the fashion industry…

Integral to the success of French footwear designer Christian Louboutin is his instantly recognizable, source-identifying mark: the red outsole. The Red Sole Mark received federal trademark registration in 2008, affording protection to “a lacquered red sole on footwear.” Despite this preemptively valid registration and the overwhelming association in consumers’ minds between the red sole and the Louboutin brand, the Red Sole Mark could lose its federal protection if the US Court of Appeals for the Second Circuit upholds a decision of the US District Court for the Southern District of New York. The district court acknowledged that color alone may sometimes be protected as a trademark — a premise set forth by the Supreme Court in 1995 in Qualitex v. Jacobson — but its analysis of the protectability of a single color trademark was complicated by the fact that the color mark was applied to an article in the fashion industry, where “color serves ornamental and aesthetic functions vital to robust competition.”

The Louboutin v. Yves Saint Laurent decision has led other designers, such as amicus curiae Tiffany & Co., to conclude that single color marks in fashion will never be allowed federal trademark protection. This per se bar on single color marks in fashion is problematic because it is based on a generalized analysis of the fashion industry as a whole and could erode trademark protection within fashion beyond just single color marks. Using the district court’s rationale, many currently enforceable multi-color marks in fashion, such as the Burberry check, could be canceled under similarly broad constructions of functionality, aesthetic functionality and color depletion theory. As a result, the fashion industry could experience an uncertain or dwindling amount of protection. Moreover, the effects of Louboutin could ripple into other industries. Amicus curiae International Trademark Association fears that “[r]ights granted as a result of the careful examination process of the Federal trademark registration system could be upended arbitrarily” if courts construe the mark holder’s mark to be broader than it actually is rather than relying on the specific language and construction of each trademark’s registration.

The Second Circuit should vacate and remand the district court’s opinion. The district court’s erroneous characterization of Louboutin’s registration as a “claim ‘to the color red'” rather than a claim for “a lacquered red sole on footwear” and its broad construal of the doctrine of aesthetic functionality establish a poor precedent for analyzing the protectability of single color trademarks. Rather than invoking generalizations and criticized theories in order to forego a more specific competitive necessity analysis, courts should make an individual, holistic examination of the trademark in question on a case-by-case basis.

By characterizing Louboutin’s claim as a claim to the color red, the district court advanced the color depletion theory. Color depletion theory reflects the concern that the number of colors available for appropriation is limited and granting exclusive rights in any color would thus be anticompetitive. However, in ruling that single colors can serve as trademarks, the court in In re Owens-Corning acknowledged that “following passage of the Lanham Act courts have declined to perpetuate [the color depletion theory’s] per se prohibition which is in conflict with the liberating purposes of the Act,” and agreed with the Trademark Trial and Appeal Board that “the color depletion argument is an unreasonable restriction on the acquisition of trademark rights.” The Supreme Court adopted this position in Qualitex, holding that the color depletion argument is unpersuasive “largely because it relies on an occasional problem to justify a blanket prohibition.”

Nonetheless, the district court invoked this theory in order to deem the Red Sole Mark a “monopoly on the color red.” Though the court posits “Louboutin would thus be able to market a total outfit in his red, while other designers would not,” Louboutin’s trademark registration specifically limits the red mark to footwear and includes a line drawing to show placement of the mark on the outsole of a shoe. Moreover, the court neglected the specific facts of the case in favor of applying the color depletion theory at the outset. Owens-Corning and Master Distributors, Inc. v. Pako Corporation provide that each case is to be decided on its facts and where a party has met all the normal trademark requirements, the color depletion theory should not bar the party’s single color mark from protection.

In general, the color depletion theory fails to take into account the specific properties of color — including hue, saturation and value — and therefore underestimates the thousands, if not millions, of different colors distinguishable to the human eye. Descriptive word marks address these scarcity issues by requiring secondary meaning for protection. This compromise is also appropriate for assessing color trademarks. Where color, such as Louboutin’s red, has acquired secondary meaning, the threat of depletion should be allayed. The invocation of color depletion theory in Louboutin diverges from the modern trajectory set in place by Owens-Corning and Qualitex and sets a defective precedent for the review of other single color marks in fashion.

The district court also erred in its broad construal of aesthetic functionality. Aesthetic functionality is based on the premise that the visual appeal of a trademark may be essential to effective competition or an important ingredient in the commercial success of the product, and must, therefore, be free for all to imitate. In Pagliero v. Wallace China Co., the US Court of Appeals for the Ninth Circuit applied the aesthetic functionality doctrine and found that the defendant was entitled to copy the plaintiff’s china designs, since the attractiveness of the design was the primary selling feature of the china and thereby served a non-trademark function. However, the Second Circuit specifically rejected the Pagliero test for aesthetic functionality in deciding the nearly identical case of Villeroy & Boch Keramische Werke v. THC Systems. In Qualitex, the Supreme Court adopted the Restatement standard, which limits aesthetic functionality to situations where the design “confers a significant benefit that cannot practically be duplicated by the use of alternative designs.” The use of the aesthetic functionality doctrine for source-identifying marks currently varies by circuit, though most courts have rejected or limited its application.

However, in Louboutin the court reverted to a broad construal of aesthetic functionality, finding that in fashion color is used primarily to advance expressive, ornamental and aesthetic purposes. Rather than examining the availability of alternative designs, the court automatically found a threat to competition based on the premise that color is part of the consumer appeal of fashion items. The question should not have been whether fashion designers in general need to use the color red, but rather whether footwear designers need to use red outsoles in order to compete effectively in their market. The generalized construal of aesthetic functionality in Louboutin could render nearly every mark in fashion unprotectable, with the presumption that a visually appealing mark is necessary for free competition since fashion is premised on aesthetic beauty. The Ninth Circuit recognized the implications of such a standard in Vuitton et Fils S.A. v. J. Young Enterprises, where it rejected the contention that Louis Vuitton’s mark was aesthetically functional merely because it appealed to consumers.

Scholars have long argued against such a broad interpretation of aesthetic functionality. Thomas McCarthy, author of the leading treatise on trademark law, contends that “[t]he notion of ‘aesthetic functionality’ is an unwarranted and illogical expansion of the functionality policy, carrying it far outside the utilitarian rationale that created the policy.” Others note that it is contradictory to deny trademark protection to marks on the basis of their consumer appeal and demand, since creation of this demand is a recognized trademark function. Many are wary of the doctrine simply because there is no clear standard or unity among the courts.

In considering Yves Saint Laurent’s counterclaim on remand, the district court should consider Louboutin’s trademark in the context of its 2008 registration, and specifically ask whether Louboutin’s lacquered red outsoles are a competitive necessity. Single color marks in fashion, where those marks meet all other trademark requirements, merit protection because the ability to register such marks would fit well within the Lanham Act and fortify the fashion industry’s current shortage of intellectual property protections. The court will probably find no likelihood of confusion between Louboutin’s shoes and the Yves Saint Laurent heels that prompted this infringement suit, and thus no likelihood of success on the merits to warrant a preliminary injunction for Louboutin. However, the opinion of the district court must be revised in order to allow for the possibility of protecting distinctive and non-functional single color marks in fashion in the future.

Danielle Gorman is a Staff Writer on “The Cardozo Jurist,” the newspaper of the Cardozo School of Law, and a member of the Intellectual Property Law Society. She has interned at the State of New York Office of the Attorney General in the Consumer Frauds Bureau. Danielle received her undergraduate degree at Lehigh University where she studied English and Journalism.

Suggested citation: Danielle Gorman, Trademark Protection for Distinctive Single Color Marks, JURIST – Dateline, Dec. 3, 2011, http://jurist.org/dateline/2011/12/danielle-gorman-trademark-law.php.