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

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

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

Complaint Ped Egg Trade Dress