After Louboutin: Responding to Trademark Ownership of Color in Creative Contexts
| Publication year | 2013 |
After Louboutin: Responding to Trademark Ownership of Color in Creative Contexts
Monica Sullivan
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"I found I could say things with color and shapes that I couldn't say any other way . . . things I had no words for."
Georgia O'Keeffe1
As an artist, it would be difficult to complete a work of art if you were limited to the use of certain colors, only those colors that no other artist had claimed. Imagine, for instance, that Monet, upon completion of his water lilies, is sued by Picasso for using a certain shade of blue.2 Picasso claims that the blue used by Monet is the same blue he uses to express melancholy.3 In fact, Picasso has used that blue throughout a number of his paintings, and it has become somewhat of a theme in his work.4 Should Picasso have ownership of that shade of blue?5
Fashion designers, artists, filmmakers, and architects alike "share a dependence on color as an indispensable medium."6 Color is expressive; it serves to "depict the idea" of the creator.7 Color serves to translate what a creator seeks to communicate to others. Despite the importance of color in the creative process, courts have allowed single colors to serve as trademarks under certain circumstances. For instance, the United States Supreme Court and the United States Court of Appeals for the Federal Circuit have recognized trademarks for a green-gold color used
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by a manufacturer on dry cleaning press pads and a shade of pink used on insulation.8
But is trademark registration of color inappropriate in certain artistic contexts? Specifically, should single-color marks be eligible for trademark protection in the fashion industry, "one of the world's most important creative industries?"9 The answer to this question is significant in the fashion industry where "visual impact is of the utmost importance."10 While there should not be a per se rule against such trademarks, single-color marks in the fashion context are inherently suspect.11 This Comment asserts that the trademark doctrine of aesthetic functionality may provide protection for the creative use of color in fashion. In certain circumstances, as Judge Posner stated simply, "[b]eauty is function," and when functionality is present, no trademark protection is warranted.12 This Comment also asserts that the trademark concept of secondary meaning may serve as a check to the broad availability of color mark registration. If courts take a hard-line approach on what is required to prove secondary meaning, only those owners who have truly cultivated their color marks, and successfully created an association between their marks and the source of their marks in the minds of the public, will succeed in obtaining trademark protection.
A trademark is any "word, name, symbol, or device, or any combination thereof used by a person, or which a person has a bona fide intention to use in commerce . . . to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the
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source of the goods . . . ."13 Trademarks serve to protect consumers from deception and confusion, ensuring that consumers receive the products they intend to purchase.14 Trademarks also serve to protect an owner's cultivation of, and investment in a source-identifying product.15 Trademarks are of particular importance in the fashion industry because the other intellectual property regimes, copyright and patent law, offer designers very limited protection.16
Trademarks in the fashion industry commonly take the form of logos and insignia.17 Designers often incorporate these protected marks into their designs.18 Classic examples of such registered marks include Louis Vuitton's Toile monogram,19 Burberry's plaid,20 and Gucci's green-red-green stripe.21 However, in 2008, a designer applied for and successfully registered a more unconventional mark—a color.22 Famed shoe designer Christian Louboutin registered a trademark that claimed exclusive use of the color red for the outsoles of the shoes he designs.23 Unsurprisingly, it only took a few years for this mark to become a hot source of litigation.24 While trademark law provided the District Court for the Southern District of New York with some guidance on the issue, the validity of single-color marks was an issue of first impression in the context of the fashion industry. For that reason, it is important to look at the history of single-color marks in general, prior to examining color trademarks in the fashion industry.
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A. In General: "Color . . . Its Own Animal"25
The issue of whether color is eligible for trademark protection was addressed as early as 1906.26 In A. Leschen & Sons Rope Co. v. Broderick & Bascom Rope Co.,27 the United States Supreme Court made the following landmark statement on the issue: "Whether mere color can constitute a valid trademark may admit of doubt. Doubtless it may, if it be impressed in a particular design, as a circle, square, triangle, a cross, or a star. But the authorities do not go farther than this."28 Despite the fact that the Court's statement was made in dicta, it became controlling on the issue of color trademarks.29 The Court's statement sparked a sort of prohibition era in which the courts and the United States Patent and Trademark Office (USPTO) refused trademark protection for single-color marks.30
However, in a few instances, courts used common law unfair competition principles to protect the use of color.31 For example, in Yellow Cab Transit Co. v. Louisville Taxicab & Transfer Co.,32 the United States Court of Appeals for the Sixth Circuit held that while a defendant cab company had no exclusive right to the use of the color yellow, it was entitled to trademark protection for the color so long as it could establish secondary meaning.33 Still, cases like Yellow Cab were rare following the Court's powerful dicta in A. Leschen & Sons Rope Co., and protection for the use of color was sparse.
The icy treatment of single-color marks did not change much until the passage of the federal trademark statutory scheme, the Trademark Act of 1946 (hereinafter referred to as the "Lanham Act").34 The passage of the Lanham Act resulted in a broad revision of trademark law.35 The Lanham Act broadly defined trademark as "'any word, name, symbol, or device or any combination thereof adopted and used by a manufacturer or merchant to identify his goods and distinguish them from those manufactured or sold by others.'"36 In the past, registration
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was limited to "technical" common law trademarks.37 On the contrary, the Lanham Act provided that registration should not be refused on account of the nature of the mark unless one of the specific exceptions, set forth in the statute, applied.38
In fight of the passage of the Lanham Act, courts began to depart from the dicta of A. Leschen & Sons Rope Co., and registration became available in many circumstances where it was previously excluded, including the registration of color trademarks.39 For instance, in In re Hehr Manufacturing,40 the United States Court of Customs and Patent Appeals held that a square red label could be registered as a trademark since the label distinguished and identified the owner's goods.41 Gradually, the prohibition on the use of color marks dissolved and courts started to look at the facts of each color mark case individually.42 During this period, the registration of color marks simply depended upon meeting the legal requirements for registration, and courts took into account the "nature of the goods, how the color [was] used, the number of colors or color combinations available, the number of competitors, and customary marketing practices."43
The increase in the registration of color trademarks following the passage of the Lanham Act also resulted in an increase of litigation challenging such marks. As cases on color trademarks were handed down, a number of common arguments developed as justifications for denying trademark protection of color marks.44 These arguments are worth noting. Among these are the color depletion theory, the shade confusion theory, and the doctrine of aesthetic functionality.45 The color depletion theory is based on the argument that if you give a plaintiff exclusive rights to a single color, you are effectively giving that plaintiff a monopoly in that color.46 Consequently, if single-color marks are granted, eventually no color will be available for competitors to use.47 In a famous color depletion theory case, Campbell Soup Co. v.
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Armour & Co.,48 the United States Court of Appeals for the Third Circuit denied plaintiff Campbell Soup Company's motion for an injunction to stop defendant Armour & Company from using red and white labels.49 In refusing the injunction, the court of appeals noted, "If they may thus monopolize red in all of its shades the next manufacturer may monopolize orange in all its shades and the next yellow in the same way. Obviously, the list of colors will soon run out."50
Another argument against trademark protection for color marks is the shade confusion theory. The premise of the shade confusion theory is that differences in colors can be slight and difficult to discern.51 The concern at the heart of the shade confusion theory is that trademark infringement actions will "denigrate into questions of shade confusion."52
A third justification for denying trademark protection of color marks is the doctrine of functionality.53 There are two forms of functionality that may serve as affirmative defenses in trademark infringement claims—utilitarian (or traditional) functionality and aesthetic functionality.54 Utilitarian functionality is present when a product feature is either "(1) essential to the use or purpose of the article, or . . . (2) affects the cost or quality of the article."55 If there...
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