Thursday

DOROTHY'S RED SHOES NOT ILLEGAL. BUT IS IT GOOD LAW?

First, let me be clear. I am no fan of color trademarks. Especially single color trademarks. Yes I know the Lanham Act says "Any word, name symbol or device” may qualify as a trademark. But, unless I get too close to your word trademark, I am free to slavishly copy your needlessly expensive designer shoes. And market them as my own.

Color trademarks can often be more powerful. Once the law allows me to claim the red soles of my needlessly expensive shoes as a trademark, you, my competitor will not be able to slavishly copy my product. Not only that, but even if your needlessly expensive designer shoe is quite different from my needlessly expensive designer shoe, you may not be able to use my “trademark/color” in your product.

Not a bad world to live in for the trademark owner. And I suspect that’s how the folks at Louboutin felt. At least until yesterday. That’s when Judge Marrero of the SDNY brought them back to the real dog eat dog fashion world.

In a very readable, clever opinion, Judge Marrero concluded that because color was such an integral part of the fashion industry, nobody, including Louboutin, could establish trademark rights in a single color.

I should be thrilled. Bucking the trend towards too much protection for brand owners, an enlightened federal judge preserves competition.
Consumers benefit.

Perhaps. But the best I can say is right result based on puzzling legal analysis.

My strongest objection to the decision is the way in which Judge Marrero conditions the very definition of what constitutes a trademark on a particular industrial setting. No such limitation can be found anywhere in the plain wording of the statute. And, to the best of my imperfect knowledge, no other judge has used such logic to define a trademark.

To support his analysis Judge Marrero cited the well-known legal doctrine of functionality. Functionality is meant to limit the reach of product features claimed as trademarks. But here too, Judge Marrero seemed to use the functionality doctrine in puzzling ways to support his decision.

M. Louboutin readily admitted that he chose red for the outsoles of his shoes because red was sexy, has energy, and is engaging. Sounds to me like the logic behind millions of brands, packages, and graphic symbols.

The plain fact is that nobody had ever thought to use a vibrant color as part of the outsole of a shoe. Louboutin did it. Louboutin promoted it. The world of needlessly expensive designer shoes strongly associates red outsoles with just one manufacturer. The judge turned a strength into a weakness.

Often a brand owner will be anxious to claim a feature as a trademark because that feature makes the product easier or less expensive to make. Again, the functionality doctrine, properly applied, preserves competition by allowing competitors to use that feature.

Typically, when a claimed feature makes an item more expensive to produce it argues for trademark protection because no rational competitor would want to spend more to produce a competing product.

Not so for Judge Marrero. While he readily acknowledged that producing red outsoles with a lacquered made such shoes more expensive to produce, in the upside down world of high fashion more costly to produce was a competitive advantage. Again, the judge turned strength into a weakness.

A thoughtful reader- that is to say anyone who has ventured this far- may be inclined to ask: What’s going on here?

Here’s the best I can offer.
The defendant in this case was the world famous design house Yves. St. Laurent. Did YSL have any interest in producing shoes with a red lacquered outsole? Nope. Does YSL want anyone to mistake their shoes for those made by Louboutin? Nope.

But YSL loves to produce needlessly expensive monochromatic designer shoes. In a rainbow of colors. Including an all red shoe with a red outsole.

IMHO the all red YSL shoes spooked Judge Marrero.
Could the good judge have upheld the validity of the Louboutin mark but then concluded that YSL’s monochromatic red shoes were not infringing the red outsole trademark?

Don’t see why not. I suspect that his will be somewhat of a hot potato for the Second Circuit Court of Appeals. Surely the decision will be appealed.





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