Louboutin Trademark Decision Affects More Than Fashion

By Deanne Katz, Esq. on September 13, 2012 | Last updated on March 21, 2019

The fashion world has been abuzz with the case of Christian Louboutin v. Yves Saint Laurent (YSL) over red soled shoes.

The appellate ruling came out in early September and both sides claimed victory. YSL is now allowed to sell its monochrome shoes that include a red model and Louboutin has received validation that color can sometimes be trademarked in fashion.

But if you're not a fashion enthusiast is the case still relevant?

Well, if your company deals in trademarks at all the decision gives some important clarification to a particular doctrine of trademark law.

The doctrine called 'aesthetic functionality' prohibits trademarks on aesthetic qualities that actually provide a functional purpose but it hasn't gotten a lot of clarification in the past.

The Louboutin case changed that.

In the federal court decision, the judge ruled that since aesthetic value is a significant function in all fashion, aesthetic marks such as color cannot be trademarked in the fashion industry. The Second Circuit Court of Appeals wasn't pleased with that analysis.

The appellate court ruled that there can be no per se rule about aesthetic functionality for a given industry. Instead an inquiry must be done in each individual case.

The court also created a handy test to use for determining aesthetic functionality in the future.

Under the newly issued rule, color and other aesthetic qualities can be trademarked if they meet two requirements. First, the main functionality of the aesthetic choice must be to identify the maker. Second, the aesthetic trait must be shown not to have a significant effect on competition.

It's ok to earn business by trading on your recognizable reputation. We all know what comes in the Tiffany's blue box.

What isn't ok is decreasing competition by blocking others out of a certain aesthetic trait. After all, that blue box isn't stopping others from selling diamonds.

This isn't the final word in the issue of aesthetic functionality since circuits view it differently. But it is the first real test for this trademark doctrine which could make it easier to work with when preparing a case. Whether or not you're dying for a pair of Louboutins, you can at least salute them for that.

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