Trademarks and the Aesthetic Functionality Doctrine
This post was co-authored by Casey Hall, Sr. Marketer, and Will Ashenmacher, FindLaw Blog Writer
Some trademarks are fairly obvious. Other times, there may be a legitimate question as to the scope of trademark protection for a specific design aspect of a product. In these closer cases, courts must rely upon legal treatises and other sources to determine whether an aspect of a product’s design is worthy of trademark protection.
Last year, pricey shoe maker Christian Louboutin (beloved by Rihanna and Jennifer Lopez) sued rival French fashion house Yves St. Laurent (which counts Anne Hathaway and Victoria Beckham as fans). The reason: YSL had announced plans for a pair of high heels that would be entirely red, including, of course, the soles.
A central question before the court in this case was how to apply the “aesthetic functionality” doctrine. Under this doctrine, an aesthetic design that would otherwise be subject to trademark protection is considered “functional” and therefore not protected. For products that are purchased primarily for their aesthetic value, aesthetic features may sometimes be considered functional because they contribute significantly to the intended purpose of the product. To help sort out this confusing issue on which not all courts agree, the Second Circuit made several references to the work of J. Thomas McCarthy, a law professor and authoritative author who has dedicated himself to explaining just this sort of confusing trademark issue. Watch a short video of McCarthy offering insights into trademark law.
What is interesting about this case is that it wasn’t as though YSL were churning out Louboutin knockoffs; it wasn’t giving all its shoes red soles in the hopes of confusing customers and siphoning off Louboutin’s fans. Instead, YSL wanted to make shoes that were entirely red and Louboutin seemed to be saying that it and it alone had the right to use the color red in making high heels.
In September, the court held that while Louboutin’s 2008 trademark on soles rendered in its signature “China Red” was proper, it could not prevent other shoe makers from creating shoes that were entirely red. Thus, Louboutin’s red soles were safe, but it could not stop YSL from making all-red high heels.
It isn’t as if specific uses of unique shades of a given color cannot be protected (Owens-Corning fiberglass insulation, anyone?), but the issue of the extent to which any one entity can control broader uses and applications of a general color is probably going to come up again — and probably sooner rather than later.