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A Red-Leather Year for Aesthetic Functionality

By Charles E. Colman

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recent decision in the high-fanfare, high-heeled case of Christian Louboutin S.A. v. Yves Saint Laurent America cements mid-2010 to mid-2011 as a “red-leather year” for the aesthetic functionality doctrine. This doctrine, which withholds trademark protection from ornamental features over which a grant of exclusive rights would significantly hinder competition, has had—in the à propos words of the Ninth Circuit—a decidedly “checkered” history. Like intellectual property protection in general, the doctrine’s scope has periodically expanded and contracted since it was formally recognized by the Ninth Circuit in 1952. But after that same appellate court largely banished aesthetic functionality in a 2006 decision that appeared to mark the end of an era, several recent, broadly worded decisions (including the headline-grabbing August 2011 ruling in Louboutin) indicate that the aesthetic functionality doctrine may now be in a period of rapid growth—perhaps even in the Ninth Circuit. Trademark practitioners should stay abreast of the changes in this area of the law; anyone who remains under the impression that the doctrine has been rendered toothless might be in for a nasty bite. Though most intellectual property lawyers have long since forgotten the nuances of first year Constitutional Law, they likely have a vague recollection of “footnote 4” of United States v. Carolene Products,1 which famously grew into the modern test for determining when courts should apply “strict scrutiny.” The trademark law doctrine of “aesthetic functionality” has a similarly humble origin that, coincidentally, dates from the same year as Carolene Products—the blandly named “Comment a” in § 742 of the Restatement of Torts, which explained:
When goods are bought largely for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended.

From this seed grew the gnarled tree now known as “aesthetic functionality.” The U.S. Supreme Court first took serious note of the doctrine on the path to its ruling in a landmark 1995 case, Qualitex v. Jacobson Products, in which the court affirmed the general validity of color trademarks, subject to several caveats. One such caveat was the “aesthetic functionality” bar, which the court articulated using language from the most recent edition of the Restatement of Unfair Competition:
[I]f a design’s ‘aesthetic value’ lies in its ability to ‘confer a significant benefit that cannot practically be duplicated by the use of alternative designs,’ then the design is ‘functional’” [and thus unprotectable under trademark law.] The ‘ultimate test of aesthetic functionality . . . is whether the recognition of trademark rights would significantly hinder competition.’”2

that is non-trademark-related has enjoyed only limited application . . . to product features that serve an aesthetic purpose wholly independent of any source-identifying function.”4 The court’s rather aggressive statements may have been prompted by the extreme fact pattern in Auto Gold. At issue were key chains and license plate covers that featured exact replicas of the Volkswagen (VW) and Audi logos. The manufacturer of these products, Auto Gold, had no affiliation with either car company; it had sought, but failed to obtain, licenses to use the logos in question.5 After Auto Gold was sued by BMW in the 1990s, it filed suit in Arizona concerning its VW and Audi products, seeking, inter alia, a declaratory judgment that it had not engaged in trademark infringement or dilution; VW and Audi filed the expected counterclaims. Auto Gold argued that its use of the logos was protected under the aesthetic functionality doctrine because the logos—rather than indicating the source of the goods—were “the actual benefit that the consumer wishes to purchase.”6 The district court agreed with Auto Gold; the Ninth Circuit did not. The appellate court conceded that “[c]onsumers sometimes buy products bearing marks . . . for the appeal of the mark itself, without regard to whether it signifies the origin or sponsorship of the product,” but nevertheless found significant the lack of evidence in this case that “consumers buy Auto Gold’s products solely because of their ‘intrinsic’ aesthetic appeal.”7 Instead, in the court’s view, the attraction of Auto Gold’s products was “tied to the reputation and association with Volkswagen and Audi;” as such, applying the aesthetic functionality defense in this case “would be the death knell for trademark protection.”8 The panel reversed and remanded. In order to arrive at this ruling, the Ninth Circuit panel found it necessary to distinguish its own quarter-century-old aesthetic functionality precedent, Job’s Daughters.9 In that 1980 case, a unanimous panel had ruled in favor of a defendant that had, without authorization, created jewelry bearing the mark of an international women’s organization. (Interestingly, as in Auto Gold, the allegedly infringing party in Job’s Daughters had approached the trademark owner about the possibility of a license, and had likewise been rebuffed.) The Auto Gold panel had little choice but to distinguish Job’s Daughters, as the decision contained multiple passages in the following vein:
We commonly identify ourselves by displaying emblems expressing allegiances. Our jewelry, clothing, and cars are emblazoned with inscriptions showing the organizations we belong to, the schools we attend, the landmarks we have visited, the sports teams we support, the beverages we imbibe. [But it] would be naive to conclude that the name or emblem is

Yet just eleven years after Qualitex,3 in 2006, the Ninth Circuit in Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc. (Auto Gold) cavalierly declared that the aesthetic functionality doctrine retained only “limited vitality,” that “[s]everal oft-quoted cases involving trade dress claims have criticized the doctrine,” and that “[t]he concept of an ‘aesthetic’ function

Charles E. Colman is the founder of Charles Colman Law, PLLC, where he handles intellectual property disputes and other matters arising in fashion, music, art, and related industries. He can be reached at cc@charlescolmanlaw.com. Research assistance for this article was provided by Samuel Van Eichner of the Benjamin N. Cardozo School of Law (J.D. expected June 2012).

Published in Landslide Volume 4, Number 2, November/December 2011. © 2011 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

desired because consumers believe that the product somehow originated with or was sponsored by the organization the name or emblem signifies . . . . [As such, in] the context of this case, the name and emblem are functional aesthetic components of the jewelry, in that they are being merchandised on the basis of their intrinsic value, not as a designation of origin or sponsorship . . . . [To rule otherwise would grant] a trademark’s owner a complete monopoly over its use, including in functional use, in commercial merchandising [despite] legislative history reveal[ing] no congressional design to bestow such broad property rights on trademark owners.”10

Confronted with such sweeping reasoning, the Auto Gold court brushed aside Job’s Daughters as a “somewhat unique case” concerning “collective” marks, whose “broad language [had soon been] clarified and narrowed.”11 After thus reassuring itself, the Auto Gold panel concluded the relevant portion of its opinion by stating that it “[took] comfort that the doctrine of aesthetic functionality, as we apply it in this case, has simply returned from whence it came.”12 The court suggested that this “whence” might be the state of the doctrine as of 1938, but the panel’s choice of words implied a more ominous fate for aesthetic functionality. Thus, it may come as no surprise that after Auto Gold, the doctrine went into something of a hibernation period. A survey of federal court opinions filed from August 2006 to August 2010 containing the phrase “aesthetic functionality” indicates that the defense was raised relatively infrequently in the wake of Auto Gold. Further, even when raised during this period, the defense was virtually always rejected, often with reference to the 2006 decision.13 Recent developments, however, indicate that the Auto Gold panel’s “comfort” was premature. Beginning last year, aesthetic functionality appears to have staged a dramatic (if fitful) return from the oubliette to which many thought it relegated. Indeed, several decisions handed down from August 2010 to August 2011 suggest that what did not kill the doctrine, as the saying goes, may have made it stronger. The doctrine first reemerged from its cave in an August 2010 ruling by the Seventh Circuit in Franco & Sons, Inc. v. Franek.14 The principles announced in Franek appear to have strongly influenced Judge Victor Marrero’s aesthetic functionality-based denial of a preliminary injunction in Christian Louboutin S.A. v. Yves Saint Laurent America.15 Even courts in the Ninth Circuit appear to be “coming around” since Auto Gold, albeit in spurts and starts. Collectively, these decisions suggest that the doctrine of “aesthetic functionality” may well be in a period of major growth. Trademark practitioners should stay abreast of these changes over the next several years; anyone who continues to consider the doctrine toothless because of Auto Gold might be in for a nasty bite.

Franco & Sons, Inc. v. Franek With the Seventh Circuit’s August 2010 decision in Franco & Sons, Inc. v. Franek,16 the federal appellate courts waded back into the murky waters of aesthetic functionality, so to speak, in a case over purported trademark rights in round beach towels. Chief Judge Frank Easterbrook, writing for a panel that included Judges Posner and Evans, affirmed the district court’s grant of summary judgment to Franco as to the invalidity of Franek’s registered trademark in the circular shape of his towels. The court

engaged in a conventional functionality analysis, noting that a utility patent for a round towel bag (whose claims contained language similar to Franek’s advertisements touting the advantages of round towels for lazy sunbathers) gave rise to a presumption of functionality under the Supreme Court’s 2001 decision in TrafFix Devices v. Mktg. Displays.17 But while the Seventh Circuit could likely have disposed of the case merely by ruling that Franek had failed to rebut this presumption of functionality, Chief Judge Easterbrook clearly had more to say on the subject at hand. Thus, Easterbrook continued at length, in an opinion that ultimately served as a ringing endorsement of the aesthetic functionality doctrine. The panel’s unanimous decision began with a relatively subtle rejection of a central premise of Auto Gold. Chief Judge Easterbrook recounted the Supreme Court’s holding in Wal-Mart Stores v. Samara Bros., Inc.18 that trade dress protection for product design, as opposed to product packaging, exists only upon the acquisition of secondary meaning (an association in the minds of consumers). From this, Easterbrook apparently reasoned that product design marks are “descriptive” for purposes of trademark law,19 as he rejected Franco’s argument that the towel lacked adequate secondary meaning based on the rule that such association is conclusively presumed after five years of continuous commercial use of the mark.20 Because Franek’s trademark registration for his round towels dated to 1988, and Franek had shown continuous commercial use since then, it was “incontestable” in this case that consumers associated the round towel shape with Franek.21 Because the Chief Judge moved on from here to find the claimed trade dress aesthetically functional, his reasoning effectively negates the Ninth Circuit’s statement in Auto Gold that “[i]n practice, aesthetic functionality has been limited to product features that serve an aesthetic purpose wholly independent of any sourceidentifying function.”22 Easterbrook’s finding of incontestability necessarily presumed that the towel’s round shape did indeed serve a “source-identifying function,” but the Seventh Circuit nevertheless invalidated the claimed mark based on aesthetic functionality. Thus, even assuming the Auto Gold court’s reported limitation on the doctrine was correct when written, the statement is no longer accurate post-Franek. In any event, one need not read tea leaves to understand the importance of Franek for the aesthetic functionality doctrine. Later in the opinion, Judge Easterbrook makes this simple but powerful declaration: “Fashion is a form of function. A design’s aesthetic appeal can be as functional as its tangible characteristics.”23 Unlike the Ninth and Fifth Circuits, which had fairly recently dismissed the relevance of the Supreme Court’s Qualitex decision to the aesthetic functionality defense,24 Easterbrook seized on the court’s statement in Qualitex that “[a] color would be functional if its exclusive use by a single designer ‘would put competitors at a significant non-reputation-related disadvantage.’”25 Easterbrook recognized that in the abstract, it might be difficult to “distinguish[] between designs that are fashionable enough to be functional and those that are merely pleasing.” However, this was not a close case, as “Franek wants a trademark on the circle. Granting a producer the exclusive use of a basic element of design (shape, material, color, and so forth) impoverishes other designers’ palettes.”26 Many consumers would want the shape for the shape, not because of its source, the Chief Judge noted, and the aesthetic functionality doctrine forbade granting

Published in Landslide Volume 4, Number 2, November/December 2011. © 2011 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

a monopoly on that shape in the form of trademark protection. The panel concluded by throwing Franek a crumb of advice: “If Franek is worried that consumers will confuse Jay Franco’s round beach towels with his, he can imprint a distinctive verbal or pictorial mark on his towels.”27

Christian Louboutin S.A. v. Yves Saint Laurent America Chief Judge Easterbrook’s opinion in Franek did not go unnoticed. Indeed, just to make clear the decision’s significance, Easterbrook himself cited Franek on the very day it was filed. The decision, he explained, stood for the principle that “attractiveness is a kind of function.”28 Thus validated, aesthetic functionality once again appeared to be a viable defense to trademark infringement. In mid-2011, Yves Saint Laurent tested this viability, launching an aggressive counteroffensive against Christian Louboutin S.A., after Louboutin sued YSL for selling bright red, monochrome high heels.29 Here, “monochrome” meant that along with a bright red “upper,” YSL’s heels also featured a bright red sole—shoe designer Christian Louboutin’s well-known “signature” and the subject of a longstanding federal trademark registration. Louboutin sought a preliminary injunction against YSL on the basis of trademark infringement and related theories, but was soon met with a vigorous aesthetic functionality defense, accompanied by a counterclaim for the cancellation of Louboutin’s registration.30 Passages from the Seventh Circuit’s Franek decision took center stage in YSL’s opposition brief, including Easterbrook’s statements that “[f]ashion is a form of function” and that a “design’s aesthetic appeal can be as functional as its tangible characteristics.”31 YSL put its own spin on another key Franek passage by strategically adding emphasis: “Granting a producer the exclusive use of a basic element of design (shape, material, color, and so forth) impoverishes other designers’ palettes.”32 On August 10, 2011, in a high-profile decision, Judge Marrero of the Southern District of New York denied Louboutin’s requested preliminary injunction. Marrero had evidently taken Chief Judge Easterbrook’s pronouncements to heart, even if his sweeping, florid opinion in favor of YSL never actually cited Franek. Thus, on an apparent issue of first impression, Marrero ruled that single colors are per se aesthetically functional in the realm of fashion design, since “in the fashion industry color serves ornamental and aesthetic functions vital to robust competition. . . .”33 As such, “Louboutin [was] unlikely to be able to prove that its red outsole brand [was] entitled to trademark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning.”34 Judge Marrero grounded his ruling in the language of the Supreme Court’s Qualitex decision, adopting that court’s definition of “aesthetic functionality”: If a design’s “aesthetic value . . . ‘confer[s] a significant benefit that cannot practically be duplicated by the use of alternative designs,’ then the design is ‘functional.’”35 For Judge Marrero, there was little question that relevant consumers had come to associate bright red soles with Louboutin; the court even quoted song lyrics about the company’s signature sole color in its decision. But this association was irrelevant, Marrero ruled, because of the importance of the freedom to use color in art—and by extension, fashion:

Color constitutes a critical attribute of the goods [in both painting and fashion]. Alone, in combinations, in harmonious or even incongruous blends, in varying patterns and shapes, the whole spectrum of light serves as a primal ingredient without which neither painting nor fashion design as expressive and ornamental art would flourish. . . . Color in turn elementally performs a creative function; it aims to please or be useful, not to identify and advertise a commercial source.36

Judge Marrero purported to address only the “narrow question” of “whether the Lanham Act extends protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry,”37 but it is self-evident from his extended analogy between fashion and painting that the Louboutin ruling is not so limited. Indeed, in the following passage, Marrero takes a view of the “functional” roles of color so expansive that, if applied literally, it could potentially render valid color marks the exception rather than the rule: “To attract, to reference, to stand out, to blend in, to beautify, to endow with sex appeal— all comprise nontrademark functions of color in fashion.”38 At the risk of stating the obvious, while these characteristics are perhaps more closely tied to color in the context of fashion, they are by no means so limited. Louboutin immediately announced its intention to appeal the denial of the requested injunction; in the meantime, Judge Marrero agreed to withhold judgment on YSL’s requested cancellation of Louboutin’s trademark registration. How the Second Circuit will rule is, of course, anyone’s guess. The appellate court could affirm Marrero’s denial of the preliminary injunction on narrower grounds—for example, on the basis of trademark fair use,39 an issue briefed at some length by the parties, but not reached by Judge Marrero due to his broader repudiation of Louboutin’s trademark rights on aesthetic functionality grounds. If, however, the Second Circuit affirms Judge Marrero’s decision and adopts his reasoning, that will unequivocally cement aesthetic functionality’s status as a force once again to be reckoned with.

Ninth Circuit Revisits Aesthetic Functionality Like their colleagues in the Second and Seventh Circuits, Ninth Circuit judges appear to be revisiting aesthetic functionality and questioning the wisdom of Auto Gold’s marginalization of the defense. In Jumpitz Corp. v. Viacom International, for example, the Southern District of California rejected purported trade dress rights in a children’s network’s color-based “visual system” on aesthetic functionality grounds, as the system was “used because it is ‘aesthetically pleasing to children, not to denote product source.’”40 Tellingly, the court’s decision—handed down on August 13, 2010, just two days after Chief Judge Easterbrook’s ruling in Franek—observed that “[a]llowing Viacom to assert a protectable interest in its broadly defined ‘visual system’ would stifle competitors in the field of children’s entertainment in a way not contemplated by the Lanham Act.”41 In December 2010, another Ninth Circuit district court bucked the Auto Gold trend in Mattel, Inc. v. MGA Entertainment, Inc.42 Here, the Central District of California found two types of doll packaging to be functional in the traditional sense, and yet—like Chief Judge Easterbrook in Franek—continued on to explain that trademark protection

Published in Landslide Volume 4, Number 2, November/December 2011. © 2011 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

was also unavailable due to the aesthetic functionality doctrine. Notably, Mattel had produced no evidence that consumers were drawn to the appearance of the primary type of packaging at issue, yet the court adhered to its aesthetic functionality ruling on the basis that “it is MGA’s burden to prove the nonfunctionality of its asserted trade dress.”43 The Jumpitz and MGA courts’ decisions could be viewed as flares sent up to the Ninth Circuit requesting reconsideration of the appellate court’s attitude toward aesthetic functionality. But this request, if intended at all, was polite; neither district court’s decision contravened the teachings of Auto Gold by deeming source designating trade dress to be aesthetically functional.44

Fleischer Studios v. A.V.E.L.A., Inc. (Feb. 23, 2011) Perhaps taking note of the district courts’ flares in Jumpitz and MGA, the Ninth Circuit in Fleischer Studios v. A.V.E.L.A.45 did revisit Auto Gold—not by limiting or refining it, but rather by ignoring its existence altogether. (As explained below, the panel backpedaled several months later.) At issue in A.V.E.L.A. was copyright and trademark protection in the famous “Betty Boop” character. Although Fleischer Studios had staked a claim of ownership in the character, A.V.E.L.A. and others had generated revenue by restoring vintage posters of Betty Boop, then selling and licensing those images.46 Fleischer Studios sued. After the district court granted summary judgment to A.V.E.L.A. on both Fleischer’s copyright and trademark claims— never mentioning “functionality” in its discussion of trademark law47—a split panel affirmed the district court’s trademark ruling on different grounds: “A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.”48 This was essentially the same argument unsuccessfully advanced by the defendants in Auto Gold, yet the A.V.E.L.A. panel (which had no members in common with the panel in the 2006 case) did not cite Auto Gold in either its majority or dissenting opinions. Instead, the majority found the parties’ trademark arguments “mooted by controlling precedent that neither party cited”: Job’s Daughters, which the Auto Gold panel had dispatched to the graveyard of distinguished precedent.49 The A.V.E.L.A. court went on to quote passages from Job’s Daughters that were deeply in conflict with Auto Gold— for example: “Trademark law does not prevent a person from copying so-called ‘functional’ features of a product which constitute the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.”50 In this case, according to the majority, “[e]ven a cursory examination, let alone a close one . . . reveal[ed] that A.V.E.L.A. is not using Betty Boop as a trademark, but instead as a functional product.”51 Perhaps to alleviate concerns about the ramifications of such a broad holding, the A.V.E.L.A. majority bolstered its trademark ruling by invoking the Rorshach test of intellectual property law: Dastar Corp. v. Twentieth Century Fox Film Corp.52 Trademark protection was also unavailable for the Betty Boop character, the A.V.E.L.A. majority explained, because “ruling in Fleischer’s favor [on the trademark issue] would prevent the Betty Boop character from ever entering the public domain,” contrary to the teachings of Dastar.53 Dastar addendum notwithstanding, the opinion immediately caused controversy. Was the dispositive question for aesthetic

functionality now simply whether an otherwise enforceable trademark was being used in a non-trademark (and thus permissible) manner? One representative article commented that the A.V.E.L.A. majority had “misapplied the doctrine of aesthetic functionality, flinging the door wide open for infringers and counterfeiters to use valuable logos with impunity.”54 Practitioner and industry groups filed passionate amicus briefs in support of Fleischer Studios’ petition for a panel rehearing or rehearing en banc. The International Trademark Association (INTA), for example, argued that “the majority erred by sua sponte reincarnating the outdated and much-criticized aesthetic functionality doctrine of [Job’s Daughters and] essentially overruled Au-Tomotive Gold. . . .”55 According to INTA, “[i]f the majority’s opinion [stood] uncorrected, it [would] have far-reaching consequences” for brand owners, circuit harmony, and the trademark/copyright interface.56 The Motion Picture Association of America (MPAA) wrote, along similar lines: “The majority’s stretching of the ‘aesthetic functionality’ dictum of Job’s Daughters beyond the context of collective marks and without consideration of . . . Au-Tomotive’s narrowing of the ‘aesthetic functionality’ theory was error.”57 These amici also took issue with the majority’s application of Dastar, but it was clear that aesthetic functionality was the main issue on everyone’s mind.

Fleischer Studios v. A.V.E.L.A., Inc. (Aug. 19, 2011) For reasons known only to the judges involved, the A.V.E.L.A. majority withdrew its original decision on August 19, 2011.58 The opinion that superseded it, the panel explained, rendered moot—at least for the time being—Fleischer Studios’ petition for a panel rehearing or a rehearing en banc. In the new decision, the majority’s original trademark analysis had vanished; neither Auto Gold nor Job’s Daughters received a single citation, and Dastar was likewise ignored. Instead, the majority ruled that Fleischer Studios had, as a matter of law, failed to produce sufficient evidence of secondary meaning in the Betty Boop image to give rise to a genuine issue for trial.59 As for Fleischer’s alleged trademark rights in the words “Betty Boop,” the majority punted. Contrary to the district court’s holding, “the mere fact of fractured ownership [was] not, by itself, conclusive evidence of a lack of secondary meaning.”60 This error, along with the district court’s failure to adequately support its findings on the issues of “use in commerce” and “likelihood of confusion,” warranted vacatur of the court’s ruling on the Betty Boop word mark, and required that the panel remand the case for further proceedings.61 Conclusion It is difficult—perhaps impossible—to know what to make of the A.V.E.L.A. saga. Although the panel withdrew its aesthetic functionality-based opinion, the decision that took its place notably declined to endorse the position advocated by the above-mentioned amici—that Auto Gold is still the law of the Ninth Circuit. The panel’s second opinion likewise declined to adopt INTA’s characterization of Job’s Daughters as “outdated and much-criticized.” Perhaps the most that can be said of the withdrawn opinion in A.V.E.L.A. is that it indicates at least two Ninth Circuit judges62 are prepared to abandon Auto Gold in favor of Job’s Daughters under the right circumstances. Meanwhile, the recent decisions in Jumpitz and MGA show

Published in Landslide Volume 4, Number 2, November/December 2011. © 2011 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

that aesthetic functionality is by no means defunct in the Ninth Circuit. Even courts in the Fifth Circuit, which purportedly does not recognize the aesthetic functionality doctrine at all, may be wavering, perhaps in part because the status of Auto Gold—on which the Fifth Circuit has so heavily relied in the past—has now been called into question.63 And the rulings in Louboutin (at least, to the extent upheld by the Second Circuit) and Franek (on which Chief Judge Easterbrook has already had the final word) now provide compelling authority for a broad reading of the aesthetic functionality defense, each opinion having laid out a cogent analytical framework for the doctrine that other courts may well adopt. In short, despite some bumps along the way, it has undoubtedly been a “red-leather” year for the aesthetic functionality doctrine. While the future of the doctrine remains somewhat uncertain, trademark practitioners can be sure of one thing: We have not heard the last of aesthetic functionality. n

Endnotes
1. 304 U.S. 144 (1938). 2. Qualitex v. Jacobson Prods., 514 U.S. 159, 170 (1995) (quoting Restatement (Third) of Unfair Competition § 17 cmt. c, at 175–76 (1993)). 3. In the intervening period, the Supreme Court decided TrafFix Devices v. Mktg. Displays, 523 U.S. 23, 33 (2001), in which it wrote that “aesthetic functionality [had been] the central question” in Qualitex. This was probably incorrect as a descriptive matter. See 1 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 7:80 (4th ed.) (calling “amazing and incomprehensible [the] statement that in the 1995 Qualitex case, ‘aesthetic functionality was the central question’”). For our purposes, however, TrafFix is relevant only insofar as it reaffirms the existence of the aesthetic functionality doctrine and shortens the period between the Supreme Court’s most recent reference to the doctrine and the Ninth Circuit’s effective repudiation of it. 4. Au-Tomotive Gold, Inc. v. Volkswagen of America, Inc., 457 F.3d 1062, 1073 (9th Cir. 2006), cert. denied, 549 U.S. 1282 (Mar. 19, 2007). 5. Id. at 1065. 6. Id. at 1064. Auto Gold’s primary argument before the district court concerned trademark law’s “first-sale doctrine,” premised on the fact that “in at least some cases, genuine trademark medallions purchased from [VW and Audi]” were used to make Auto Gold’s products. Id. at 1065. However, the district court declined to consider the first-sale defense because it found summary judgment appropriate for Auto Gold on aesthetic functionality grounds. Id. The Ninth Circuit likewise withheld judgment on the first-sale defense, remanding the case for consideration of that issue. Id. at 1075, 1078. 7. Id. at 1073. 8. Id. at 1064, 1074. 9. International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980). 10. Id. at 918. 11. Auto Gold, 457 F.3d at 1069. 12. Id. at 1074. 13. See, e.g., Walker & Zanger, Inc. v. Paragon Indus., Inc., 549 F. Supp. 2d 1168, 1177–78 (N.D. Cal. 2007) (citing Auto Gold and ruling that “design features constitut[ing] ornamental attributes of the product [at issue here] are nonfunctional”); K & N Eng’g, Inc. v. Bulat, 259 F. Appx. 994, 995 (9th Cir. 2007) (citing Auto Gold for principle that where “mark does not serve an aesthetic purpose wholly independent from its function of identifying [a product’s source], [the] aesthetic functionality defense fails”); Bd. of Supervisors for Louisiana State Univ. Agric. & Mech. Coll. v. Smack Apparel Co., 550 F.3d 465, 488 n.108 (5th Cir. 2008) (citing Auto Gold for notion that neither Qualitex nor TrafFix required the Fifth Circuit to recognize aesthetic functionality); Johnson & Johnson v. Actavis Group

hf, 06 Civ. 8209, 2008 U.S. Dist. LEXIS 5242, at *9 (S.D.N.Y. Jan. 25, 2008) (ruling that no reasonable jury could conclude that exclusive trademark rights in “gold/yellow color would significantly hinder competition in antibiotic ointments”); R.F.M.A.S., Inc. v. Mimi So, 619 F. Supp. 2d 39, 81 (S.D.N.Y. 2009), reconsideration denied, 640 F. Supp. 2d 506 (2009) (denying defendant’s motion for summary judgment because “a rational factfinder could conclude that [the claimed trade dress rights in jewelry designs] would not prevent others from creating alternative competitive jewelry or otherwise create a monopoly in the marketplace”). 14. 615 F.3d 855 (7th Cir. 2010). 15. 11 Civ. 2381, 2011 U.S. Dist. LEXIS 90200 (S.D.N.Y. Aug. 10, 2011). 16. 615 F.3d 855 (7th Cir. 2010). 17. Id. at 857–58 (citing TrafFix Devices, 532 U.S. at 29). 18. 529 U.S. 205 (2000). 19. But see Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1008 (2d Cir. 1995) (when a plaintiff’s product and claimed trade dress are the same, courts “do not ask whether [the trade dress] is ‘generic,’ ‘descriptive,’ ‘suggestive,’ or ‘arbitrary or fanciful’” because these “categorizations [are] inapplicable to product features”). 20. Franek, 615 F.3d at 860 (citing 15 U.S.C. §§ 1065, 1115(b)). 21. Id. 22. Auto Gold, 457 F.3d at 1073. 23. Id. at 861. 24. See supra note 13. 25. Id. at 857 (quoting Qualitex, 514 U.S. at 165). 26. Franek, 615 F.3d at 860. 27. Id. at 861. 28. Specialized Seating, Inc. v. Greenwich Indus., L.P., 616 F.3d 722 (7th Cir. 2010) (emphasis in original). 29. Christian Louboutin S.A. v. Yves Saint Laurent America, Inc., 11 Civ. 2381, 2011 U.S. Dist. LEXIS 90200 (S.D.N.Y. Aug. 10, 2011). 30. See generally Louboutin, 1:11 Civ. 02381-VM, Defendant/ Counterclaim-Plaintiffs’ Memorandum of Law in Opposition to Motion for Preliminary Injunction (Jul. 12, 2011). 31. Id. at *11 (quoting Franek, 615 F.3d at 860). 32. Id. at *12 (emphasis in party’s brief). 33. Louboutin, 2011 U.S. Dist. LEXIS 90200, at *8. 34. Id. at *9 (emphasis added). 35. Id. at *10 (citing Qualitex, 514 U.S. at 176, quoting Restatement (Third) of Unfair Competition § 17 cmt. c, at 175–76 (1993)). 36. Id. at *16–*17. 37. Id. at *13. 38. Id. at *20. 39. See 15 U.S.C. § 1115(b)(4). 40. 09 Civ. 1063, 2010 U.S. Dist. LEXIS 84042, at *19, *20–*22 (S.D. Cal. Aug. 13, 2010) (“visual system” consisting of “particular color palette (distinctive shades of orange, green, and cyan blue) and design (‘soft’ and ‘whimsical’ geometric shapes as mortise or framing devices” unprotectable on, inter alia, aesthetic functionality grounds). 41. Id. at *25–*26. Cf. Franek, 615 F.3d at 861 (“We cannot permit [Franek] to keep the indefinite competitive advantage in producing [round] beach towels this trademark creates.”). 42. 04 Civ. 9049, 2010 U.S. Dist. LEXIS 136922, *204–*205 (C.D. Cal. Dec. 27, 2010). 43. Id. at *204. 44. See Jumpitz, 2010 U.S. Dist. LEXIS 84042, at *22 (inadequate evidence of secondary meaning); MGA, 2010 U.S. Dist. LEXIS 136922, at *198, *200 (same). 45. 636 F.3d 1115 (9th Cir. 2011). 46. Id. at 1118. 47. 2:06 Civ. 06229, 2009 U.S. Dist. LEXIS 130735, *30–*48 (C.D. Cal. Jun. 29, 2009). 48. 636 F.3d at 1124. 49. See id. at 1122; Job’s Daughters, 633 F.2d 912. 50. Id. at 1122 (quoting Job’s Daughters, 633 F.2d at 917). 51. Id. at 1124 (citing Job’s Daughters, 633 F.2d at 919).

Published in Landslide Volume 4, Number 2, November/December 2011. © 2011 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

52. 539 U.S. 23 (2000). 53. A.V.E.L.A., 636 F.3d at 1125. Judge Susan Graber, dissenting, would not have reached the plaintiff’s trademark claims on this appeal, in light of perceived errors in the district court’s copyright analysis. Id. at 1127 n.4. 54. See, e.g., Anne Gilson LaLonde, Ninth Circuit Misunderstands Aesthetic Functionality, LexisNexis, Copyright & Trademark Law Community, Jun. 13, 2011, http://www.lexisnexis.com/community/ copyright-trademarklaw/blogs/copyrightandtrademarkcommentary/ archive/2011/06/13/ninth-circuit-misunderstands-aesthetic-functionality. aspx (last visited August 26, 2011). 55. A.V.E.L.A., No. 09-56317, Brief of Amicus Curiae International Trademark Association in Support of Rehearing or Rehearing En Banc, Mar. 23, 2011, at 1. 56. Id. at 2. 57. A.V.E.L.A., No. 09-56317, Brief of Amicus Curiae Motion Picture Association of America, Inc. in Support of Plaintiff-Appellant’s Petition for Panel Rehearing or, in the Alternative, Rehearing En Banc, Mar. 23, 2011, at 15. 58. No. 09-56317, 2011 U.S. App. LEXIS 17220 (9th Cir. Aug. 19, 2011). 59. Id. at *21. Central to this ruling was the majority’s finding that

the district court had not abused its discretion in refusing to admit evidence of a federal trademark registration in the image of Betty Boop due to timing problems, and the majority’s subsequent refusal to take judicial notice of the registration. Id. at *17–*20. 60. Id. at *23. 61. Id. at *25. 62. Judge Graber, who dissented from both the February and August majority opinions, expressed no view on the majority’s trademark ruling in the first opinion, but stated in the second opinion that she “[did] not disagree with the majority’s analysis of the trademark issue.” Cf. 636 F.3d at 1125 n.4; 2011 U.S. App. LEXIS 17220, at *33 n.4. In neither instance was it necessary for her to reach the trademark issue, so her addition to the second decision may indicate that she disagrees with the majority’s original reasoning concerning aesthetic functionality. 63. See supra at note 13. One Fifth Circuit district court recently ruled that “the color yellow, as applied to vapor barrier used in the construction industry, is de jure functional and not legally protectable under federal trademark law,” in part because the color “enhanc[ed] visual contrast”— one of the permutations of aesthetic functionality specifically identified by Judge Marrero in Louboutin. See Poly-America, L.P. v. Stego Indus., L.L.C., 3:08-CV-2224-G, 2011 U.S. Dist. LEXIS 82647, at *34 (N.D. Tex. Jul. 27, 2011).

Published in Landslide Volume 4, Number 2, November/December 2011. © 2011 by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.