No Trademark Protection for Single Color Used in Fashion Items, S.D.N.Y. Judge Rules

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As color serves ornamental and aesthetic function vital to innovation and competition in the fashion industry, a fashion designer is unable to show that the single color red he used on the outsole of a shoe brand is entitled to protection as a trademark, the U.S. District Court for the Southern District of New York ruled Aug. 10 (Christian Louboutin S.A. v. Yves Saint Laurent America Inc., , S.D.N.Y., No. 1:11-cv-02381-VM, 8/10/11).

Denying the designer a preliminary injunction barring competitor Yves Saint Laurent from using a similar color red in its shoe designs, the court ruled that the Lanham Act does not serve “as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items.” The court said that, although single colors may be serve as trademarks for industrial products, in fashion markets color serves not only to identify source, but to advance expressive purposes.

Designer Sues YSL for Using His Color

Designer Christian Louboutin designed a high fashion high heeled shoe with a an outsole in glossy vivid red (what he calls “Chinese red”). Over the years, the shoe design became popular and famous in the fashion industry, and in 2008, he was awarded a trademark registration from the Patent and Trademark Office for the lacquered red sole shoes.

Louboutin sued Yves Saint Laurent, a fashion house founded in 1962, for trademark infringement, false designation of origin, and dilution stemming from four shoe models in YSL's 2011 collection. Each of those models bear a bright red outsole as part of a monochromatic design in which the shoe is entirely red.

YSL asserted counterclaims seeking cancellation of the Red Sole mark and damages on the grounds that it is not distinctive, but rather, ornamental, functional, secured by fraud on the PTO.

Louboutin sought a preliminary injunction preventing YSL from marketing during the pendency of this action any shoes that use the same or a confusingly similar shade of red as that protected by the red sole mark.

Color Serves Nontrademark Functions

Judge Victor Marrero said that for Louboutin to succeed on its claims for trademark infringement and unfair competition, he would need to show that his red sole mark merits protection and that YSL's use of the same or sufficiently similar mark is likely to cause consumer confusion as to the origin or sponsorship of YSL's shoes.

Looking first at whether Louboutin's mark warranted protection, the court said that his certificate of registration of the mark gives rise to a statutory presumption that the mark is valid, but that this presumption may be rebutted.

“Color alone ‘sometimes' may be protectable as a trademark, ‘where that color has attained ‘secondary meaning' and therefore identifies and distinguishes a particular brand,'” the court said, citing Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 34 USPQ2d 1161 (1995). However, color is not protectable where it is functional—the color is essential to the use or purpose of the product or affects the cost or quality of the product.

The court said that other courts have approved the use of a single color as a trademark for industrial products—such as green-gold for pads used on dry cleaning presses—but, “whatever commercial purposes may support extending trademark protection to a single color for industrial goods do not easily fit the unique characteristics and needs—the creativity, aesthetics, taste, and seasonal change—that define production of articles of fashion.”

“Can one imagine industrial models sashaying down the runways in displays of the designs and shades of the season's collections of wall insulation?” the court asked. “The difference for Lanham Act purposes … is that in fashion markets color serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes.”

In the fashion industry, colors have been registered, but only for distinct patterns that manifest a conscious effort to design a uniquely identifiable mark embedded in the goods, the court said.

Monet and Picasso

“The narrow question presented here is whether the Lanham Act extends protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry,” the court said.

The court used a hypothetical to help dissect this question, in which Picasso sues Monet for using a distinctive indigo that Picasso claimed was too close to the shade used as the hallmark of his Blue Period. Both fashion and art share a dependence on color as an indispensable medium, the court said. But artistic freedom and fair competition are “perhaps the most crucial among the features painting and fashion design share as commerce and art.”

“No one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also staked out a claim to it as a trademark in that context,” the court said. “If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion.”

The court also said that the question of whether the use of a single color in the fashion industry can constitute a valid mark necessarily raises another one: whether a single color may be functional in that context. Louboutin himself acknowledged significant, non-trademark functions for choosing red for his outsoles, the court said, saying that the color gives his shoes an energy and a sexiness. YSL has used red to evoke Chinese design elements.

The outsole of a shoe, according to the court, is “a pedestrian thing,” that then becomes decorative when coated in a bright and unexpected color.

No Trademark for Single Color in Fashion

As the use of the red outsoles serves nontrademark functions other than as a source identifier, and affects the cost and quality of the shoe, the court said that it must examine whether granting trademark rights for Louboutin's use of the color red as a brand would significantly hinder competition. Would such rights permit one competitor to interfere with legitimate competition through actual or potential exclusive use of an important product ingredient, the court questioned.

“Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants,” the court said. “YSL has various reasons for seeking to use red on its outsoles …. Louboutin's ownership claim to a red outsole would hinder competition not only in high fashion shoes, but potentially in the markets for other women's wear articles as well.”

Fashion is dependent on colors and is subject to “temporal changes,” the court said. Louboutin's claim would “cast a red cloud over the whole industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette,” the court concluded.

YSL maintained that the precise color of the styles Louboutin challenges is not Chinese red, and that it has never used the red Louboutin trademarked: Pantone No. 18-1663 TP.

Louboutin, however, said that YSL infringed by using a shade confusingly too close to its red. The court rejected this argument because Louboutin could not provide an explanation as to why those models are confusingly similar to its claimed mark.

“Finally, conferring legal recognition on Louboutin's claim raises the specter of fashion wars,” the court added. “If Louboutin owns Chinese Red for the outsole of high fashion women's shoes, another designer can just as well stake out a claim for exclusive use of another shade of red, or indeed even Louboutin's color, for the insole, while yet another could, like the world colonizers of eras past dividing conquered territories and markets, plant its flag on the entire heel for its Chinese red.”

“Because in the fashion industry color serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning,” the court said, concluding:

In sum, the Court cannot conceive that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items. Because the Court has serious doubts that Louboutin possesses a protectable mark, the Court finds that Louboutin cannot establish a likelihood that it will succeed on its claims for trademark infringement and unfair competition under the Lanham Act. Thus there is no warrant to grant injunctive relief on the claims.

Louboutin was represented by Harley Irwin Lewin of McCarter & English, New York. YSL was represented by David H. Bernstein of Debevoise & Plimpton, New York.

Business as Usual

The lifeblood of the fashion industry is competition, and trademarks associated with names remain “absolutely the number one most important thing” in terms of protecting design interests, Corey Field, a partner at Ballard Spahr, Los Angeles, and president of the Copyright Society of the USA, told BNA in an interview Aug. 12.

This case was not about image and names, however, Field said. Rather, it was about the creative and innovative side of the industry. He said that he did not think the decision will change the way business is done or affect how consumers purchase shoes.

Louboutin is not going to be hurt by K-Mart selling similar style shoes, he said, because knock-offs are nothing new. As for YSL copying Louboutin's shoes, Field said that this will just mean more competition and that it is the norm in the fashion industry.

Thus, if Louboutin's trademark is cancelled, Field said that he does not see it changing or hurting Louboutin's business.

By Nathan Pollard

Opinion at http://pub.bna.com/ptcj/112381Aug10.pdf