By Ashlee Froese of Keyser Mason Ball LLP
only has Tiffany thrown in its hat into the Christian Louboutin v. Yves
Saint Laurent show down, a trade-marks law international heavy hitter
is also tossing its hat into the ring. That's right: INTA has also filed an amicus brief supporting Christian Louboutin. Now for legal fashionistas, INTA means something. For CanadaFashionLaw's fabulous non-lawyer fashionistas, let's provide some context. Here's a description of INTA from its own submissions:
in 1878, INTA is a not-for-profit organization dedicated to the support
and advancement of trademarks and related intellectual property
concepts as essential elements of trade and commerce. INTA has over 5,700 in more than 190 countries. Its
members include trademark owners, law firms, and other professionals
who regularly assist brand owners in the creation, protection and
enforcement of their trademarks. All
of INTA's members share the goal of promoting an understanding of the
essential role trademarks play in fostering informed decisions by
consumers, effective commerce and fair competition."
been a committee member of INTA for a number of years and can vouch
that in the intellectual property law world, it is a highly respected
and influential organization. So, the fact that INTA is raising the stakes in this case and getting involved is worthy of a glass of pino grigio! It's juicy.
Why is INTA getting involved?
Straight from the branded horse's mouth:
is] interested in the development of clear, consistent and fair
principles of trademark and unfair competition law...As an independent
organization dedicated to the advancement of trademark law, INTA is
uniquely qualified to aid the Court in its determination of this
it also believes that the court's decision in respect of the rejection
of Christian Louboutin's request for a preliminary injunction against
Yves Saint Laurent is wrong. As wrong as neon-colored leggings!
What's the problem?
First of all, INTA's submissions are very narrow. It only specifically relates to the court's comments on the validity of Christian Louboutin's trade-mark registration. INTA does not comment on the issues of trademark infringement or dilution.
Here's INTA's beef:
contemplating Christian Louboutin's trademark rights, the court took an
overly broad interpretation: red on fashion articles. The real issue to consider should have centered on lacquered red on soles of footwear.
court found that the trade-mark registration was invalid as the color
had functional qualities, relying on the doctrine of aesthetic
functionality. INTA holds that the judge did not properly apply the correct analysis for a finding under this doctrine. Rather
than narrowing in the effect that Christian Louboutin's trade-mark
registration would have on the luxury shoe industry, the court looked at
the effect it would have throughout the fashion industry.
What does INTA have to say for itself?
Here's a summary of INTA's position:
court appeared to start with the assumption that Christian Louboutin's
trademark registration was invalid, which flies in the face of the
presumption of validity when obtaining a trademark registration.
court unilaterally broadened Christian Louboutin's trademark claims to
encompass all shades and tones of red, rather than specifically dealing
with the color at hand: lacquered red on the sole of footwear.
court then construed a hypothetical situation to consider the
ramifications of granting an entity a monopoly over a color, rather than
analyzing the particulars of this specific scenario.
court failed to recognize the substantive work provided by the US
Patent and Trademarks Office in ensuring the registered trademarks are valid trademarks that are worthy of the rights conferred onto registered trademarks:
is not merely clerical, but rather the result of a substantive
examination process and opportunity for interested parties to be heard."
trade-mark registration granted by the US Patent and Trademarks Office
was entirely consistent with established US trademarks law and,
therefore, Christian Louboutin's trade-mark registration is valid and
worthy of recognition.
Court's discussion of Monet's use of blue in his water lily series was
flawed as it was never the subject of a trade-mark and, therefore, falls
entirely outside the scope of the matter at hand.
determining whether the color was functional (thereby negating the
trade-mark protection), the Court wrongly applied the doctrine of
aesthetic functionality. INTA provides a useful summary of the purpose of this doctrine:
bedrock of the doctrine is the legitimate need of competitors to use a
utilitarian feature that is less expensive, of better quality, or more
efficient to manufacture. By
ensuring that competitors remain free to copy useful product features,
the doctrine prevents trademark law from undermining its own and the
patent law's pro-competitive objectives."
h) The doctrine of aesthetic functionality is a controversial principle, which INTA has lobbied against in past amicus briefs. Not only does INTA guard against employing this doctrine, but if the Court does adopt this doctrine it should do so correctly. Overall, INTA maintains that the doctrine of aesthetic functionality has absolutely no application to this case.
In a united stand with Tiffany, INTA rounds out its submissions by stating:
the District Court's opinion stands uncorrected, it will have far
reaching consequences for brand owners and consumers alike. Rights
granted as a result of the careful examination process of the Federal
trademark registration system could be upended arbitrarily, making it
easier for third parties to use the well-recognized brand of others,
damaging brand owners and increasing the potential for consumer
View more from Canada Fashion Law and @BrandFashionLaw
(C) Ashlee Froese, 2011. All rights reserved.
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