YSL Is Pumped!

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Judge Marrero of the SDNY district court has denied Louboutin’s preliminary injunction request against Yves St. Laurent’s use of a red sole in its monochrome red pump ladies shoe.
Christian Louboutin v Yves Saint Laurent

Marty Schwimmer summarizes the issues and makes the following points:

The court has now dismissed Louboutin’s motion. It is a long decision that makes a lot of points that are, imho, color depletion and shade confusion arguments. However at the core of the holding, the court seizes on YSL’s point about the competitive need in fashion to be able to, for example, sell monochrome shoes, and sell red monochrome shoes, and sell red dresses that go with red shoes, and holds that red soles are functional. On to the Second Circuit.

The thought occurs: maybe, Louboutin’s trademark is a red lacquered sole when used with an upper that is any color other than red. According to this decision, any manufacturer’s red shoes could use red soles. But does any manufacturer’s black shoes need red soles?

Charles Colman’s provides Judge Marrero’s “blockbuster” quote:

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.

Professor Susan Scafidi uses Judge Marrero’s decision as an example of why fashion designers need copyright protection:

Judge Marrero, however, hung his order on the hypothetical example of Picasso attempting to prevent Monet from using the color blue in the Water Lilies series because the color had been Picasso’s hallmark during his Blue Period. Unthinkable from an art history perspective, of course. The court acknowledges that no analogy is perfect — but then goes on to claim that both painting and fashion design exist in the overlapping spheres of art and commerce, and that neither is well served by individual monopolies on color.

Setting aside the troubling conflation of use of a red sole as a trademark versus use as a design element, the separation of which is the true challenge in this case, the court’s analogy raises an essential question: Why are paintings characterized as “art” and entitled to full copyright protection while fashion receives almost none?

It’s Summertime & the Living Is International

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Agora, Inc., a publisher of a newsletter and the website internationalliving.com, has sued Bo Rinaldi and International Living, a Lake Oswego publisher of the website internationalliving.co for trademark infringement. Agora seeks a preliminary injunction against use of its mark and the domain name internationalliving.co.
Agora v. Rinaldi & Int’l Living

Who Knew? A Galette Trademark Registration

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I stumbled on this product configuration trademark registration for pastries. For years I’ve been making rustic fruit galettes, a dessert made with pie dough. Instead of using a pie tin or pan, the fruit is placed on a circle of dough and then the edges are folded up and over each other (not crimped), creating some overlap that holds in the fruit. Until now I thought this was a traditional French way to prepare a fruit dessert. Au contraire.

Evidently, the folded edge is not functional and not a generic method of enclosing fruit in dough to be baked, but actually is a source indicator for Chudleigh’s, a commercial bakery in Ontario, Canada. The folded dough shape is designed to evoke apple blossoms, which in turn are meant to evoke an apple orchard. Because the bakery also operates an apple orchard, the pastry shape suggests Chudleigh’s is its source. So says Chudleigh’s office action response.

In that response, Chudleigh distinguished its pastry from Hostess and McDonald’s fruit pies. And then compared the pastry to traditional pies:

Finally, even if Applicant’s BLOSSOM product is not compared to snack cakes, but instead to baked goods in general, applicant is aware of no similar pie shape. Applicant’s BLOSSOM pastry has large folds arranged in a concave circle. The typical tart or piecrust is fluted by pinching the edges of the crust around the convex edge of the pan.

(Emphasis mine.)

Feast your eyes on this gallery of images for comparison. Any dessert lovers or bakers out there have an opinion on this? Is this a distinct and unique shape for a pastry and therefore capable of identifying source? Is the folded over pie edge functional because the shape is merely the result of an easy method to keep fruit enclosed? Is this shape a smaller version of a traditional galette? Where’s the acquired distinctiveness?

 

(Galette photo by Arnold Gatilao, CC Attribution 2.0 license)

 

The real reason for Louboutin’s infringement lawsuit against Yves Saint Laurent

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The Times reports about dress codes in New York clubs as a means to keep out customers deemed undesirable.

For women, shoes are key. “Minimum five-inch heel,” he said. “Christians are our favorite,” he added, referring not to the faithful but to Christian Louboutin, the designer known for his red soles. Jimmy Choo and Christian Dior are also welcome.

It makes sense that Louboutin would have a trademark registration for red soles to prevent knock-offs and counterfeiting, but it was kind of perplexing why it would sue deep-pocketed, well-lawyered YSL. But now I know. How else to make it easier for New York doormen to keep out the riff-raff those who can’t afford or would want to pay $1000 for a pair of shoes?

Preliminary injunctions filings can be found on The Trademark Blog.

Even more Dropbox

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Now it’s getting interesting. In a previous post about Dropbox I guessed that the extensions for time to oppose the Dropbox trademark registrations were likely to be over whether Dropbox was descriptive. Yousendit was granted an additional 60 days to oppose, but Officeware (owner of filesanywhere.com) and Box.net have filed their oppositions, not because of a contention that Dropbox is descriptive, but because of claims of prior use and likelihood of confusion with their marks.
FilesAnywhere Opposition to Dropbox Registration
Box.net Opposition to Dropbox Registration

A reader brought to my attention Officeware’s trademark infringement lawsuit in Texas, alleging priority for filesanywhere.com’s common-law trademark use of “Dropbox.”
FilesAnywhere v. Dropbox Complaint

Filseanywhere asserts use of “Dropbox” since 2004 and use of a blue open box logo since 2006. Dropbox was founded in 2007.

Officeware is owned by Immediatek, a company traded on the OTC Bulletin Board. Immediatek had revenues of about $2 million last year, but a net loss of $800,000. Billionaire Mark Cuban is a major investor of Immediatek. Dropbox is a private company, but had revenues of more than $100 million in 2010 and has significant venture capital funding.

Oregon Trademark Database

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The State of Oregon has made publicly available a list of active Oregon state trademark registrations. Unfortunately, the list doesn’t have descriptions of goods and services, a key element in any trademark rights analysis.

The processing fee for an Oregon state trademark is $50. Although an Oregon trademark doesn’t confer all the benefits of federal registration, it does have some benefits over a common-law trademark, including trademark rights extended to the entire state without having to prove the geographical reach of your trademark use and triple damages of defendant’s profits as well as attorney’s fees.

Fan Fiction

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Lev Grossman writes about fan fiction in Time, exploring the issue of copyright and the rights of authors:

There are plenty of major writers who can’t abide fan fiction based on their work. They post statements about it on their websites. Orson Scott Card, author of the classic Ender’s Game books, has written, “I will sue, because if I do NOT act vigorously to protect my copyright, I will lose that copyright … So fan fiction, while flattering, is also an attack on my means of livelihood.” Anne Rice is every bit as vehement: “I do not allow fan fiction. The characters are copyrighted. It upsets me terribly to even think about fan fiction with my characters. I advise my readers to write your own original stories with your own characters.”

The legal argument against fan fiction isn’t actually very strong. The scenario Card describes, in which an author’s rights are diminished because he or she doesn’t actively defend them, is associated more with trademark than with copyright. But in practice, a fan-fiction writer who receives a cease-and-desist letter has almost no choice but to comply. No fan wants to go through the bother and expense of litigating against a celebrity or a major corporation. As a result, no definitive legal precedent exists.

But there’s more to argue about than legal niceties. A lot of authors feel emotionally and viscerally that nobody else has any business using their characters. George R.R. Martin, author of A Game of Thrones, writes on his website, “My characters are my children … I don’t want people making off with them, thank you. Even people who say they love my children.” Ursula K. Le Guin, another giant of the fantasy canon, writes, “To me, it’s not sharing but an invasion, literally — strangers coming in and taking over the country I live in, my heartland.”

Copyright law is an exception to our free speech rights, Constitutionally provided as an economic incentive for authors to create works. Since copyright is an exception to our fundamental value of not having the government interfere with our speech without a really good reason, authors and artists should think long and hard about whether this curb on free speech is properly balanced against the emotional connection they have with their work. And Grossman is right; Orson Scott Card’s statement on copyright law is incorrect. Failure to enforce a copyright does not mean you will lose it.

Lashing out…

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Esquire published a funny, satirical article about Jerome Corsi’s book “Where’s the Birth Certificate” after President Obama released his long form certificate.

In an exclusive interview, a reflective Farah, who wrote the book’s foreword and also published Corsi’s earlier best-selling work, Unfit for Command: Swift Boat Veterans Speak out Against John Kerry and Capricorn One: NASA, JFK, and the Great “Moon Landing” Cover-Up, said that after much serious reflection, he could not go forward with the project. “I believe with all my heart that Barack Obama is destroying this country, and I will continue to stand against his administration at every turn, but in light of recent events, this book has become problematic, and contains what I now believe to be factual inaccuracies,” he said this morning. “I cannot in good conscience publish it and expect anyone to believe it.”

First Amendment free speech protections make it difficult to win a defamation claim against an established journalism publication. The plaintiff must prove by clear and convincing evidence that the defamatory statement was made “with knowledge that it was actually false or with reckless disregard of whether it was false or not.” Almost impossible with a satirical article about a matter of public concern. As an end-run around this, Corsi and the book’s publisher are pleading a Lanham Act false advertising claim (in addition to defamation and other state law claims) on the theory that Esquire is a competitor and that the satirical article is misleading. Uh, good luck with that. I’m not sure, however, if this lawsuit actually exists until I personally go to the federal District of Columbia courthouse and physically examine the complaint. Even then, how do I know it’s not a forgery?

Farah vs. Esquire

And while we’re on the subject of defamation, Peter Paul Piro, a forensic art expert, has sued the New Yorker and the writer David Grann of maybe my favorite New Yorker article of the past year for defamation. After what looked like a typical well-written profile piece, Grann wrote one of the most astonishing paragraphs I’ve read (warning, spoiler):

And so, with this final flourish, the glittering portrait of Peter Paul Biro was complete: he was the triumphant scientist who had transformed the art world. Like “La Bella Principessa,” the image was romantic, almost idealized—the version of Biro that was most appealing to the eye. But, somewhere along the way, I began to notice small, and then more glaring, imperfections in this picture.

Biro v Condé Nast