Nude Descending A Window Washing Platform: 9th Circuit Trade Dress Decision

Plaintiff claims trade dress in its traction hoist (used for things like moving window washing platforms). The trade dress claim was in:

1) a cube-shaped gear box with horizontal fins;

2) a cylindrical motor mounted in an off-set position on the cube and partially overhanging the edge of the cube:

3) the cylindrical motor including vertical fins on a lower portion and a generally smooth sheet metal upper cover having a control descent lever and top cap positioned over the upper end and supported by rectangular legs;

4) a rectangular control box cantilevered to the motor by a square shaped member, the control box posi- tioned over the cube, the control box including controls thereon; and
5) a rectangular frame.

Plaintiff claims that the overall exterior appearance of the hoist is nonfunctional because the design demonstrates a ‘cubist’ look and feel. You don’t think I’m serious so look at page 1277 of the decision.

Depicted above is a cubist nude descending a window washing platform operated by plaintiff’s hoist.

The Ninth Circuit affirmed the lower court’s dismissal, noting that there was no evidence that anything about the external appearance exists for any nonfunctional purpose. It also found that this was an exceptional case, and upheld an award of attorney’s fees (but remanded for the exact amount of fees).

Decision Secalt Tirak Trade Dress Shape


The Dark Red Night of the Sole, con't


There were two primary arguments against single color marks – the first was ‘color depletion theory’ and the other was ‘shade confusion theory: The gist of the color depletion theory was that there were only so many colors so taking even one out of circulation disadvantaged competitors. The shade confusion theory went to the difficulty in analysis if there were single color marks and can be summed up by the zen koan “What is confusingly similar to taupe?”

Then came Qualitex v Jacobson which upheld the registrability of green–gold dry-cleaning pads which looked like this:

and held that a color is registrable if the color has acquired secondary meaning for the relevant goods and does not function as a necessary element of the product, or does not otherwise improve the products appeal to consumers.   Discussion of Qualitex and link to text of decision here.

So, that brings us to the Louboutin v YSL case.  Louboutin sells shoes with red lacquered soles that look like this:

If I asked my wife “who puts out shoes with red soles, she would say “Louboutin” (and, having studied French, she would pronounce it correctly).   Jennifer Lopez sings about Louboutins and Beyonce wears them and they sell 500,000 units a year and so on and  I would guess that using the conventional ways we measure these things, that red lacquered soles have acquired secondary meaning designating Louboutin as the source.

Now, YSL sells shoes and it sells red things and it sells red shoes such as the “TribToo” high heel pump in red patent leather:



And one thing that YSL likes to do is sell ‘monochrome shoes’, that match the color of the sole to the upper to achieve ‘a solid block of color’ so that ‘no part of the shoe stands out.”  So YSL sold shoes with red soles.

The parties discuss but get nowhere and Louboutin sues for trademark infringement and dilution.  The prelim papers are here. You may want to glance at the papers first.  Both sides are represented by fantastic lawyers.  But when I read YSL’s point about monochrome shoes, I went ‘hmmm.’

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?

Decision Louboutin Ysl Prelim


Trade Dress Complaint re PED EGG

Manufacturer of Ped Egg, as seen on TV, sues alleged counterfeiter for trade dress.

Complaint Ped Egg Trade Dress


Turbo Snake As Seen On TV v TV Brands Sink Wizard

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Complaint Tv Turbo Snake


Black Card v Black Card Trade Dress

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American Express provides the Centurion credit card, known as the Black Card. The annual fee is reportedly $2500. Defendant offers a black card (and claims it filed a patent for its ‘carbon and carbon-based’ card).
Complaint Black Card


Trade Dress Suit re Lacrosse Helmets

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Plaintiff (represented by friend of the blog John Welch) sues New Balance alleging infringement in trade dress of lacrosse helmet.
Complaint Sports Helmet


Heart Attack Grill v Heart Stoppers for Burgers

Laughing in the face of death, Heart Attack Grill sues Heart Stoppers (both are burger restaurant) for infringing use of ‘high caloric food, medically themed’ burger. Both places offer quadruple burgers, have wait-staff wearing nurses uniforms, etc. Both places allow people over 350 to eat free. Heart Attack Grill seems to have only one location (iin Arizona) and defendant seems to be only in Florida, so there may be a question as to whether there is trans-fat in the dawn donuts.
Coverage here.
Is there a public policy issue here? Coming to the table of equity with greasy hands?
Complaint Heart Attack Grill


"Case Study" of Design Within Reach's Move To "Knock-Offs" Plus Questions For Discussion

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Design Within Reach, a retailer of designer furniture, used to promote itself as ‘The source for licensed classics,’ selling modern classics such as the Barcelona Chair and Eames Chair. This earned it a certain following but also a non-following who referred to it as ‘Design Out Of Reach.” This FastCompany article details its current finanical troubles and its re-positioning away from licensed products to sell what some may refer to as knock-offs. The article contains interesting quotes by designers whose products have been ‘knocked-off’ by DNR, as well as by licensors (such as the Eames estate) that still do business with DNR but are having second thoughts. Bonus quote from Prof. McCarthy re trade dress protection of furniture, or lack thereof.
Things to think about:
1. Is it ironic that licensed versions of Modernism, a movement that, to the extent that it was inspired in part by the Bauhaus movement and thus had at least a stated objective of bringing ‘design’ to the ‘masses,’ are, for most part, unaffordable to the masses? Or is it some word other than ‘ironic’?
2. Is trade dress protection for the shape of Modern furniture more or less appropriate, given the simplicity of Modern design? Is there a public policy argument to be made against trade dress protection for the shape of furniture?
3. Does DWR’s prior relationship with the designers that it ‘knocks off’ influence your opinion of DWR?
4. Is there a Platonic chair that is intelligently designed and is affordable?
March 2009 blog post on trademark suit against DWR here.
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YooHoo v Beanie Boos re Crossed Big Pupiled Colored Iris Eye Dolls

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Aurora, seller of YOOHOO AND FRIENDS plush dolls sues Ty, maker of BEANIE BOOS plush dolls for copyright and trade dress infringement, regardnig dolls that have crossed eyes, big pupils and colored irises.
The photograph of the Beanie Boos was taken by Sondra Schlossberg.
Memo Yoohoo v Beanie Boo Copyright Trade Dress


Trade Dress Suit Re Danish Cookie Tins

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Note that I did not have access to legible exhibits to the complaint. I understand these to be cookie tins offered by plaintiff and defendant and not necessarily the products involved in this action.
Complaint Danish Butter Cookies