CHRISTIAN LOUBOUTIN v. YVES SAINT LAURENT AMERICA
778 F.Supp.2d 445 (2011)
United States District Court, S.D. New York.
August 10, 2011.
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. "The functionality doctrine . . . forbids the use of a product's feature as a trademark where doing so will put a competitor at a significant disadvantage because the feature is `essential to the use or purpose of the article' or `affects [its] cost or quality.'" Qualitex, 514 U.S. at 169, 115 S.Ct. 1300 (quoting Inwood Labs., Inc. v. Ives, 456 U.S. 844, 850 n. 10, 102 S.Ct. 2182, 72 L.Ed.2d 606 (1982)). Use of a single color has been held functional, and therefore not protectable under the Lanham Act, in other contexts. See, e.g., Brunswick Corp. v. British Seagull Ltd., 35 F.3d 1527, 1533 (Fed.Cir.1994) (black for marine outboard engines held functional because it is "compatib[le] with a wide variety of boat colors and [can] make objects appear smaller"); Deere & Co. v. Farmhand, Inc., 560 F.Supp. 85, 98 (S.D.Iowa 1982) (green for farm equipment held functional because farmers "prefer to match their loaders to their tractor"), aff'd, 721 F.2d 253 (8th Cir.1983). These cases illustrate the principle that "[a]esthetic appeal can be functional; often we value products for their looks." Eco Mfg. LLC v. Honeywell Int'l Inc., 357 F.3d 649, 653 (7th Cir.2003) (emphasis in original). Christian Louboutin himself has acknowledged significant, nontrademark functions for choosing red for his outsoles. As already quoted above, he stated that he chose the color to give his shoe styles "energy" and because it is "engaging." (Mourot Decl. Ex. C (Docket No. 22-7) ¶ 3.) He has also said that red is "sexy" and "attracts men to the women who wear my shoes." (Id.; Mourot Decl. Ex. C (Docket No. 22-12) at 4.) YSL, for its part, has used red to evoke Chinese design elements. For the Cruise 2011 collection, YSL employed the monochromatic style that it indicates is part of the brand's history, meaning that each of the challenged shoe models is entirely red. The shoes also coordinate with clothing items offered in the same collection. Color serves an additional significant nontrademark function: "to satisfy the `noble instinct for giving the right touch of beauty
to common and necessary things.'" Qualitex, 514 U.S. at 170, 115 S.Ct. 1300 (quoting G. Chesterton, Simplicity and Tolstoy 61 (1912)). The outsole of a shoe is, almost literally, a pedestrian thing. Yet, coated in a bright and unexpected color, the outsole becomes decorative, an object of beauty. To attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal—all comprise nontrademark functions of color in fashion.
The red outsole also affects the cost of the shoe, although perhaps not in the way Qualitex envisioned. Arguably, adding the red lacquered finish to a plain raw leather sole is more expensive, not less, than producing shoes otherwise identical but without that extra ornamental finish. (See Mourot Decl. Ex. C (Docket No. 22-7) ¶ 3.) Yet, for high fashion designers such as Louboutin and YSL, the higher cost of production is desirable because it makes the final creation that much more exclusive, and costly.
Because the use of red outsoles serves nontrademark functions other than as a source identifier, and affects the cost and quality of the shoe, the Court must examine whether granting trademark rights for Louboutin's use of the color red as a brand would "significantly hinder competition," that is, "permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient." Qualitex, 514 U.S. at 170, 115 S.Ct. 1300. Here, Christian Louboutin singularly claimed "the color red" as a feature of the mark, and he registered a "lacquered red sole" for "women's high fashion designer footwear." (Mourot Decl. Ex. A (Docket No. 22-1).) Both components of the mark pose serious legal concerns as well as threats to legitimate competition in the designer shoe market.
Louboutin's claim to "the color red" is, without some limitation, overly broad and inconsistent with the scheme of trademark registration established by the Lanham Act. Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants. YSL has various reasons for seeking to use red on its outsoles-for example, to reference traditional Chinese lacquer ware, to create a monochromatic shoe, and to create a cohesive look consisting of color-coordinating shoes and garments. Presumably, if Louboutin were to succeed on its claim of trademark infringement, YSL and other designers would be prohibited from achieving those stylistic goals. In this respect, 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. Designers of dresses, coats, bags, hats and gloves who may conceive a red shade for those articles with matching monochromatic shoes would face the shadow or reality of litigation in choosing bands of red to give expression to their ideas.
The effects of this specter—the uncertainty and apprehension it generates—are especially acute in the fashion industry because of its grounding on the creative elements discussed above. Fashion is dependent on colors. It is subject to temporal change. It is susceptible to taste, to idiosyncrasies and whims and moods, both of designers and consumers. Thus, at any moment when the market and the deities of design, by whatever fancy they decide those things, proclaim that "passion" is in for a given season and must be expressed in reds in the year's various collections, 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.
Louboutin would thus be able to market a total outfit in his red, while other designers would not. And this impediment would apply not just with respect to Louboutin's registered "the color red," but, on its theory as pressed in this litigation, to a broader band of various other shades of red which would be available to Louboutin but which it could bar others from using.
Louboutin asserts that it is the color depicted in the registration's drawing, and not the verbal reference to the "color red," that controls. In its reply brief, Louboutin identified that color for the first time as Pantone No. 18-1663 TP, or "Chinese Red," part of the PANTONE TEXTILE color system.5 Yet that identification raises additional issues. Louboutin cannot amend or augment its PTO registration by representations it makes in this litigation. Accordingly, the color that governs here remains, as Louboutin points out, the shade of red depicted in the registration's drawing. As Louboutin concedes, however, because of varying absorption and reflection qualities of the material to which it is applied, a color as it manifests on paper would appear quite different— some lighter, some darker hues—on other mediums such as leather and cloth. A competitor examining the Louboutin registration drawing for guidance as to what color it applies to may therefore remain unable to determine precisely which shade or shades it encompasses and which others are available for it to safely use.