CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA
778 F.Supp.2d 445 (2011)
United States District Court, S.D. New York.
August 10, 2011.
any word, name, symbol, or device, or any combination thereof ... [,] which a person has a bona fide intention to use in commerce and applies to register ..., to identify and distinguish his or her goods ... from those manufactured and sold by others and to indicate the source of the goods.
15 U.S.C. § 1127. Louboutin's certificate of registration of the Red Sole Mark gives rise to a statutory presumption that the mark is valid. See 15 U.S.C. § 1057(b); Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999). However, that presumption of validity may be rebutted. See Lane Capital Mgmt., 192 F.3d at 345. Color alone "sometimes" may be protectable as a trademark, "where that color has attained `secondary meaning' and therefore identifies and distinguishes a particular brand (and thus indicates its `source')." Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 161, 163, 115 S.Ct. 1300, 131 L.Ed.2d 248 (1995) (emphasis added); Louis Vuitton Malletier, 454 F.3d at 115. Conversely, color may not be protectable where it is "functional," meaning that the color is essential to the use or purpose of the product, or affects the cost or quality of the product. Qualitex, 514 U.S. at 165, 115 S.Ct. 1300. In short, color can meet the legal requirements for a trademark if it "act[s] as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function." Id. at 166, 115 S.Ct. 1300 (emphasis added). As defined in the Restatement (Third) of Unfair Competition, a design is functional if its "aesthetic value" is able to "confe[r] a significant benefit that cannot practically be duplicated by the use of alternative designs." Id. at 170, 115 S.Ct. 1300 (quoting Restatement (Third) of Unfair Competition § 17 cmt. c (1993)). Applying these principles, courts have approved the use of a single color as a trademark for industrial products. See, e.g., id. at 160, 115 S.Ct. 1300 (green-gold for pads used on dry cleaning presses); In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1123 (Fed.Cir.1985) (pink for fibrous glass insulation). In some industrial
markets the design, shape and general composition of the goods are relatively uniform, so as to conform to industry-wide standards. Steel bolts, fiber glass wall insulation and cleaning press pads, for example, are what they are regardless of which manufacturer produces them. The application of color to the product can be isolated to a single purpose: to change the article's external appearance so as to distinguish one source from another. 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. That distinction may be readily visualized through an image of the incongruity presented by use of color in other industries in contrast to 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 difference for Lanham Act purposes, as elaborated below, 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, the Lanham Act has been upheld to permit the registration of the use of color in a trademark, but only in distinct patterns or combinations of shades that manifest a conscious effort to design a uniquely identifiable mark embedded in the goods. See, e.g., Louis Vuitton Malletier, 454 F.3d at 116 ("LV" monogram combined in a pattern of rows with 33 bright colors); Burberry Ltd. v. Euro Moda, Inc., No. 08 Civ. 5781, 2009 WL 1675080, at *5 (S.D.N.Y. June 10, 2009) (registered Burberry check pattern entitled to statutory presumption of validity). In these cases the courts clearly point out that the approved trademark applies to color not as an abstract concept, or to a specific single shade, but to the arrangement of different colors and thus their synergy to create a distinct recognizable image purposely intended to identify a source while at the same time serving as an expressive, ornamental or decorative concept.
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. In other words, the Court must decide whether there is something unique about the fashion world that militates against extending trademark protection to a single color, although such registrations have sometimes been upheld in other industries.
1. The factual summary below is derived from the following documents: Plaintiff's Amended Memorandum of Law in Support of Application for a Preliminary Injunction, dated June 21, 2011, and any exhibits and declarations attached thereto; Defendants/Counterclaim-Plaintiffs' Memorandum of Law in Opposition to Motion for Preliminary Injunction, dated July 12, 2011, and any exhibits and declarations attached thereto; and Plaintiff's Reply Memorandum of Law in Support of Application for a Preliminary Injunction, dated July 19, 2011, and any exhibits and declarations attached thereto. The Court will make no further citations to these sources unless otherwise specified.
2. Jennifer Lopez, Louboutins (Epic Records 2009).
3. "Cruise" in this context refers to the fashion season between winter and spring, which is sold in stores beginning in November of each year. (Vaissié Decl. (Docket No. 34) ¶ 11.)
4. Walt Whitman, Leaves of Grass 195 (Karen Karbiener ed., 2004). The text from which this passage derives (italics in the original) reads:
A child said What is the grass? fetching it to me with full hands
....
... I guess it is the handkerchief of the Lord, A scented gift and remembrancer designedly dropt, Bearing the owner's name someway in the corners, that we may see and remark and say Whose?
5. The TEXTILE color system assists designers in selecting and specifying color to be used in the manufacture of textiles and apparel. In 2003, the TEXTILE color system was replaced with the FASHION + HOME color system, and the suffix of each color was changed from "TP" to "TPX."
6. Louboutin's suggestion that the Court require other designers to stay some percentage away from Chinese Red raises the question: some percentage of what? Chinese Red, like any color, is made up of a certain combination of other colors. Based on the Court's research, this combination can be expressed in various metrics, such as a combination of RGB (red, green, blue) or CMYK (cyan, magenta, yellow, black), or HSB (hue, saturation, brightness). See Mark Galer & Les Horvat, Digital Imaging: Essential Skills 3-5, 7 (3d ed.2005). In Adobe Color Picker, see id. at 6, a variance of just 10 percent in any of these inputs, in either direction, yields more than a dozen shades visibly different from Chinese Red, in some cases so different as to appear to the casual observer pink on one side of Chinese Red or orange on the other.
7. In response to YSL's inquiry as to whether a particular YSL shoe infringes the Red Sole Mark, Christian Louboutin responded at his deposition that he "will think about it." (Hamid Decl. Ex. A (Docket No. 32-1) at 60:11-14.) In response to YSL's inquiry as to whether Christian Louboutin would "object to any shade of red on a sole," counsel for Christian Louboutin instructed him not to answer. (Id. at 46:4-18 (emphasis added).)
8. The Court notes that Louboutin's claim for unlawful deceptive acts and practices, although not a basis for its motion for a preliminary injunction, similarly would fail in this context. See R.D. Corp. v. Jewelex New York Ltd., ___ F.Supp.2d ___, ___, No. 07 Civ. 13, 2011 WL 1742111, at *5 (S.D.N.Y. May 4, 2011) (dismissing claim for unlawful deceptive acts and practices under New York General Business Law § 349 because it arose out of a dispute between competitors involving trademark infringement).