Wednesday, September 05, 2012
Louboutin v. YSL released
Here is a link to the opinion. Before my detailed review: district court erred under Qualitex in holding a single color could never function as a TM in the fashion industry; the red sole is protectable and has secondary meaning, but only as a contrasting color to the rest of the outer shoe and Louboutin isn't entitled to prohibit the use of monocolor shoes.
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The key here is on p.12, and again on p. 24, where the court situates the functionality inquiry as subsequent to the likelihood of confusion inquiry. That strikes me as wrong--functionality isn't a personal defense, it goes to the protectability of the plaintiff's mark, though a defendant may still bear the burden of establishing the functionality of a registered mark due to the presumption of validity. That said, I can understand the desire not to reach the question of functionality with respect to non-monochrome shoes where it isn't necessary to resolving the dispute and an alternative line of reasoning will avoid a forfeiture. But the functionality discussion in the opinion strikes me as dicta--all it really says is that _this case_ does not present an occasion to pass on the application of functionality doctrine to claims of color marks in the fashion industry.
As an aside, the discussion of the way successful brands generate their own aesthetic appeal strikes me as relatively enlightened for the Second Circuit.
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