CHAPTER 12 - § 12.05

• Jurisdiction: United States

§ 12.05 THE FUTURE OF AESTHETIC FUNCTIONALITY

One case to keep an eye on with regard to aesthetic functionality is Christian Louboutin v. Yves Saint Laurent.³⁴ In August 2011, Judge Marrero of the Southern District of New York refused to grant a preliminary injunction barring Yves Saint Laurent (YSL) from selling fashion shoes with red outsoles.³⁵ The plaintiff, Christian Louboutin, began using red outsoles on its shoes in 1992, and since that time such shoes have become so desired that they sometimes sell for over $1,000 per pair.³⁶ Both Louboutin and YSL's shoes in question are shown below, along with the image from Louboutin's trade dress registration.

While Judge Marrero did not explicitly refer to the aesthetic functionality doctrine in the opinion denying the preliminary injunction, the opinion is rife with references to it. The court also went far out of its way to differentiate the fashion industry from other fields, making the following comments:

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 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.

. . .

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.³⁷

Judge Marrero's heavy reliance on fashion industry standards and practices is troubling and makes it seem as though he was looking for something within the law to justify his decision. In reality, the industry should not matter. Courts do not take industry practices into account in deciding other trademark and trade dress cases; if they did, the law of trademark and trade dress would vary from industry to industry, and this is not a desirable result from a public policy perspective.

The court also seemed unnecessarily preoccupied with the fact that Louboutin was claiming a single color, as opposed to a color scheme.³⁸ The court cited with approval the multicolor trade dress of Louis Vuitton and Burberry (examples shown below), but then drew a clear line between those cases and the Louboutin red outsole.³⁹

The court did address the functionality of the red outsole and cited to the Supreme Court's decision in Qualitex.⁴⁰ The bulk of the court's analysis centered on utilitarian functionality—whether the red outsole affected the cost or quality of the shoe. As to cost, the court again referenced the fashion industry in justifying its decision:

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. . . . 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.

In almost all cases, an increase in production cost goes against a finding of utilitarian functionality. Without making a decision on utilitarian functionality, the court went on to address "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 (non-trademark-related) competition through actual or potential exclusive use of an important product ingredient'" (quoting Qualitex).⁴¹ In other words, the court would decide whether a lacquered red outsole for shoes was aesthetically functional. The court addressed in great detail the color actually used by Louboutin (Pantone No. 18-1663 TP), the color used by YSL, the presence or...