Jewellery retailer Tiffany has filed an amicus brief in the Second Circuit supporting Louboutin’s appeal for a reversal of the decision handed down by the Southern District of New York.
In the brief, the jeweller said the district court “adopted a sweeping and unprecedented per se rule against granting trademark protection to any single color that is used on any ‘fashion item,’ even where the color has achieved ‘secondary meaning’ and is associated with a single brand”.
Tiffany frequently pointed to its famous robin’s-egg blue mark, which it uses on packaging, jewellery and fashion accessories.
The blue box with a white ribbon (No 2,184,128) and the robin’s-egg blue as used on boxes (No 2,359,351), shopping bags (No 2,416,795) and on the cover of catalogs (No 2,416,794) are registered marks.
The case has garnered significant attention because it involves two of fashion’s heavy hitters, with Yves Saint Laurent and its monochromatic shoes on the other side. But what has made it even more interesting, lawyers said, is how Judge Victor Marrero made his decision.
“Not only did the judge deny the injunction, but he put some things on the record that were troubling,” Jeff Van Hoosear, of Knobbe Martens Olson & Bear, said. “Tiffany just wants to make sure the appellate court knows their position that clearly colour is recognised as a trade mark and there’s a registration.”
In the brief, Tiffany contended that the court further erred in its analysis of whether the red sole mark is functional, appearing “to have relied on generalities about the ‘fashion industry’ as a whole – analyzing whether the use of a single color is ‘functional’ when used on ‘fashion items’”.
Lawyers told Managing IP that any fashion brand owner using colour as a source identifier should be concerned with the Louboutin ruling.
“What this judge did was basically what the legislature is supposed to do,” said Timothy Kelly of Fitzpatrick Cella Harper & Scinto. “Under the Lanham Act, a trade mark can be any word, symbol or device that serves to distinguish the goods of one entity from the goods of another. It doesn’t say ‘…except in the fashion industry’”.
Katy Basile of Novak Druce said Tiffany was careful in its brief not to take sides and instead focused on what it views as the judge’s erroneous analysis.
Rather than applying a blanket rule for the fashion industry, Tiffany argues that a colour trade mark should be analysed on a case-by-case basis.
“Tiffany’s trying to say this isn’t some big statement that you can’t use the colour ever,” Basile said. “The question is: Does someone have a right to stop someone else? What’s the person doing that’s creating a likelihood of confusion? The concept of functionality becomes the final factor.”
Louboutin’s counsel, Lee Bromberg of McCarter & English, said the amicus brief makes a strong and forceful statement that trade mark rights are decided by the consumer.
“The district court looked at it from the perspective of the designer of the industry,” Bromberg said. “That’s looking through the wrong end of the telescope.”
Tiffany is represented by Fross Zelnick Lehrman & Zissu.