As has been widely reported the fashion shoe company Christian Louboutin was rebuffed in its efforts to stop Yves St. Laurent from using the color red on certain YSL high fashion shoes. This despite the fact that Louboutin has developed  a recognized trademark for the color  red applied to the outsoles of all Louboutin shoes. I have already written a post criticizing the district court decision. And sure enough Louboutin  appealed.

Now Louboutin has an ally. Tiffany, the world famous jewelry company, has filed a friend of the court legal brief that encourages the Second Circuit to overturn the district judge and enforce Louboutin's trademark in the color red. In a sense you can readily understand why Tiffany would be concerned. They too claim ownership of a distinctive blue trademark( Tiffany blue) used on boxes and bags for their jewelry.

The Tiffany lawyers rip Judge Marrerro's decision to shreds. But they fail to fully address the one fact that makes the case troublesome. The fundamental tenet of trademark law is that the verbal or non verbal symbol being claimed should stand apart from the product it identifies.  Of course I cannot use Tiffany blue for a box or bag, at least not for jewelry. But I can slavishly copy a Tiffany ring or bracelet  (not otherwise protected) so long as I distinguish my name and  my packaging.

But the Louboutin red trademark is embedded in the outsole of its shoes. To honor that trademark means limiting how others can produce their shoes. The brand no longer stands apart from the object it identifies.  In theory the functionality doctrine is meant to limit what would otherwise be deemed a trademark. Judge Marrerro takes a crack at the trademark functionality doctrine.  The Tiffany lawyers propose a standard that would apparently exempt any brand from ever being functional.

I don't know if the Second Circuit will find the Louboutin outsole to be functional. But I'm certain that they will see the mischief that results when the brand and the product are intertwined. I am betting my usual ham sandwich that Louboutin will not overturn judge Marrerrro's decision.

My suggestion: rather than fudge the matter,  the Second Circuit should take the chance to reign in  what can qualify as a trademark. Tell brand owners that they can't use trademark law as a means of monopolizing a product feature or attribute. Not just color. But any feature or attribute that is embedded in the product at issue.

And not just the fashion industry. Which isn't, as it turns out,  all that special.


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