From the SelectedWorks of Sara Falk. April 3, 2013

From the SelectedWorks of Sara Falk April 3, 2013 What Do You Care What the Color of my Sole Is?: Analyzing if Copyright Law is a Better Solution for the Those Seeking Protection for Color in the Fashion Industry Sara Falk Available at: https://works.bepress.com/sara_falk/1/

Comment What Do You Care What the Color of my Sole Is?: Analyzing if Copyright Law is a Better Solution for the Those Seeking Protection for Color in the Fashion Industry Editor: Yuki Haraguchi

Abstract Intellectual property law in the United States offers very limited protection for color elements in fashion design. Recently, the Second Circuit decided that Christian Louboutin, a high-end designer known for shoes with red lower soles, could seek protection under trademark law for a red lower sole that contrasted with the shoe s upper sole. However, this decision limited Louboutin s original trademark. Historically, there has never been a court case dealing with copyrighting color in the fashion industry in the Second Circuit. The Second Circuit noted that this case should have actually been litigated under copyright law and not trademark law. Historically, the usual avenue for seeking protection for color is under trademark law. This Comment applies United States copyright law to the Louboutin case to establish that color should be protected under copyright law. This Comment argues that fashion designers should now seek protection under copyright law, rather than trademark law, to protect their use of color in their designs since copyright law offers more legal rights and protection. Additionally, this Comment will refute the shade confusion and color depletion theories, which legal scholars and courts have used to argue that color should not be afforded protection at all. i

Table of Contents I. Introduction... 1 II. Understanding Past Fashion Copyright Cases to Establish Copyright Protection for Color in the Future... 8 A. Traditional Protection for Color Under the Lanham Act... 9 B. Protecting Intellectual Property Under United States Copyright Law... 10 1. The Work Must be Original and Creative... 11 2. The Finding of Copyright Infringement... 11 C. Traditional Protection for Fashion Under the United States Copyright Act... 12 1. Useful Articles are not Eligible for Copyright... 12 2. The Pictorial, Graphics and Sculptural Aspects of Useful Articles may be Copyrightable if they are Separate from the Article Physically or Conceptually... 14 D. Fashion Fabric Design Cases Offer the Best Comparison for Future Fashion Color Cases... 16 1. Fabric Designs are Considered Writings under Copyright Law... 16 2. The Average Lay Observer Test... 17 3. The Substantial Similarity Test... 18 4. The Aesthetic Appeal Test... 21 5. Design and Color Elements in Fashion... 22 ii

6. Protecting the Fashion Pattern that Identifies a Brand. 25 E. Concerns for Protecting Color Under Intellectual Property.26 1. Compeititon Will Suffer from Shade Confusion... 26 2. The Fashion Industry will Suffer from Color Depletion.. 28 III. Applying Copyright Law to the Christian Louboutin Court Decision and How This Will Affect Future Color Copyright Cases in the Fashion Industry... 28 A. The Language of the Copyright Act Allows for Color to be Copyrighted... 31 1. Color is Included in the Category of Pictorial, Graphic, and Sculptural Works of the Copyright Act... 31 2. Color is Not Always Part of the Useful Article... 35 B. The Red Lower Sole is an Original and Creative Design... 36 C. The Red Lower Sole is not a Useful Article... 39 D. The Red Lower Sole is Synonymous with the Christian Louboutin Brand... 47 E. The Yves Saint Laurent All Red Shoe Copied Louboutin s Shoes with Red Soles... 58 F. The Shade Confusion and Color Depletion Theories should not apply to all Color Aspects of Fashion Design... 64 IV. The Fashion Industry Should Now Seek Protection Under Copyright Law To Protect their Use of Color in their Designs.. 69 iii

V. Conclusion... 75 iv

I. Introduction It became visually apparent from 50 feet that someone was wearing [Christian] Louboutin; it was a detail recognizable not just to the fashionista but the husband of the fashionista. 1 Christian Louboutin (Louboutin), a high-end fashion designer, uses red lacquer on the lower soles of all his shoes. 2 The latest reports show that Louboutin s retail sales exceeded $250 million in 2010 and that Louboutin sells 600,000 pairs of shoes a year. 3 1 See Cotton Timberlake, Shoes Rule When it Comes to Store Profits, BusinessWeek (Aug. 23, 2012), http://www.businessweek.com/articles/2012-08-23/shoes-rule-whenit-comes-to-store-profits (quoting Robert Burke, founder of a namesake luxury-goods consulting firm in New York). 2 See Kevin Perry, The Secret of my Success: Christian Louboutin, British GQ (Dec. 6, 2012), http://www.gqmagazine.co.uk/style/articles/2012-12/06/christian-louboutinshoes-interview (discussing how Louboutin paints all of the lower soles of his shoes red). 3 See Sole Provider, Elle (Oct. 28, 2011), http://www.elle.com/fashion/spotlight/christian-louboutin (inquiring why Louboutin has been so successful for 20 years). 1

As a result of Louboutin s success, he registered a trademark, shoes with red lower soles, in 2008 with the United States Patent and Trademark Office. 4 Louboutin sued Yves Saint Laurent (YSL) for trademark infringement for selling shoes that also had red lacquer on the bottom soles of their shoes. 5 Louboutin lost their trademark infringement suit in the Southern District of New York and appealed the decision to the Second Circuit. 6 In September 2012, the Second Circuit in Christian Louboutin v. Yves Saint Laurent modified Louboutin s trademark. 7 Louboutin s new trademark is now for a red lacquered bottom sole that contrasts with the color of the adjoining upper portion of 4 See U.S. Patent No. 77141789 (filed Mar. 27, 2007). 5 See, e.g., Christian Louboutin. v. Yves Saint Laurent Am. Inc., 778 F. Supp. 2d 445, 447 (S.D.N.Y. 2011) (asserting trademark infringement, false designation of origin and unfair competition, and trademark dilution under the Lanham Act). 6 See Christian Louboutin v. Yves Saint Laurent Am. Inc., 696 F.3d 206, 212 (2d Cir. 2012) (bringing this interlocutory appeal from an August 10, 2011 order of the United States District Court for the Southern District of New York). 7 Id. at 228 (limiting the mark to a red lacquered outsole that contrasts with the color of the adjoining upper). 2

the shoe. 8 Therefore, YSL and other companies do not violate Louboutin s trademark when they manufacture a shoe with red soles when the entire shoe is also red. 9 In footnote 19, the court notes the more appropriate vehicle would have been to use copyright law instead of trademark law. 10 However, because the parties only brought a trademark infringement claim, the court limited their review to trademark law. 11 In the United States, the Lanham Act governs trademark law. 12 Trademark law offers protection for a word, term, name, symbol 8 Id. (changing Louboutin s trademark). 9 Id. at 229 (reversing in part the order of the District Court insofar as it purported to deny trademark protection to Louboutin's use of contrasting red lacquered outsoles). 10 Id. at 223 ( It is arguable that, in the particular circumstances of this case, the more appropriate vehicle for the protection of the Red Sole Mark would have been copyright rather than trademark ). 11 Christian Louboutin v. Yves Saint Laurent Am. Inc., 696 F.3d 206, 223 (2d Cir. 2012) (stating Louboutin chose to protect his intellectual property under trademark law). 12 15 U.S.C. 1051-1150 (1947). 3

or device that is likely to cause consumer confusion. 13 In contrast to trademark law, copyright law offers protection for creative expressions. 14 To establish copyright infringement, a plaintiff must prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. 15 Fashion elements fall under the pictorial, 13 See 15 U.S.C. 1051, 1125(a)(1)(A)(1947) (allowing trademark protection for a mark that is likely to cause consumer confusion, consumer mistake, or consumers to be deceived of the product s origin); Two Pesos Inc. v. Taco Cabana Inc., 124 F.3d 137, 143 (2d Cir. 1997)(discussing how trademark law allows a merchant to identify its goods and to distinguish those goods from those made or sold by another). 14 See, e.g., Lee B. Burgunder, Trademark and Copyright: How Intimate Should the Close Association Become?, 29 Santa Clara L. Rev. 89, 91 (1989) (asserting that original expression is not spontaneously generated, but rather requires human investment). 15 17 U.S.C. 501(a) (1976). See L.A. Printex Indus. Inc. v. Aeropostale Inc., 676 F.3d 841, 846 (9th Cir. 2012) (reaffirming the test for copyright infringement); Knitwaves Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir. 1995) (laying out the basic two part test for finding copyright infringement). 4

graphic, and sculptural works category under copyright law, and may be copyrighted if they do not have a utilitarian function. 16 Finally, courts and legal scholars have been hesitant to offer protection under copyright or trademark law for color at all. 17 Legal scholars argue that under the shade confusion and color 16 See id. at 101 ( the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article ); see also Kieselstein-Cord v. Accessories by Pearl Inc., 632 F.2d 989, 995 (2d Cir. 1980)(Weinstein, J. dissenting)(stating that a useful article is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information). 17 See Christian Louboutin. v. Yves Saint Laurent Am. Inc., 778 F. Supp. 2d 445, 451 (S.D.N.Y. 2011) (arguing that whatever commercial purposes may support extending trademark protection for a single color for industrial goods do not easily fit the unique characteristics that define an article of fashion). 5

depletion theories, color should not be protected. 18 The shade confusion theory is based on the idea that since there are so many external factors than can determine how individuals view color, color cannot be protected. 19 The color depletion theory is constructed around the idea that if the law starts protecting color, the available colors will eventually run out. 20 18 See Laura R. Visintine, The Registrability of Color Per Se As A Trademark After Qualitex Co. v. Jacobson Products Co., 40 St. Louis U. L.J. 611, 621 (1996) (discussing how courts use the color depletion theory to automatically bar protection for color and the shade confusion theory to assert that discerning whether two shades are similar enough is too difficult for the courts). 19 See U.S. Resp. Brief, at 21-22, Qualitex Co. v. Jacobson Products Co. Inc., 514 U.S. 159 (1994) (describing how shade confusion is also a substantial concern in determining whether to grant registration rights to mere product color). 20 See Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (3d Cir. 1949) (discussing how one cannot trademark red and white alone since it would monopolize red in all of its shades along with other colors and the list of colors will soon run out). 6

Generally, the fashion industry does not utilize copyright law protection. 21 As a result, there are a limited number of court decisions related to copyright law in fashion. Therefore, this Comment analyzes the Christian Louboutin v. Yves Saint Laurent (hereafter the Louboutin case) under copyright law to determine if that is a better avenue for protection of color in the fashion industry for future cases. It then argues that copyright law in the United States should protect color in the fashion industry. Part II of this Comment analogizes the recent Louboutin case s court decision with past fashion cases that were decided under United States copyright law as a basis for analyzing the Louboutin decision under copyright law. Part III of this Comment applies United States copyright law and fashion 21 See Karina K. Terakura, Insufficiency of Trade Dress Protection: Lack of Guidance for Trade Dress Infringement Litigation in the Fashion Design Industry, 22 U. Haw. L. Rev. 569, 606 (2000)(discussing how because most fashion designs embody both ornamental and utilitarian elements, a separation cannot occur, and therefore copyright protection is not a viable option for designers); Tedmond Wong, To Copy or Not to Copy, That Is the Question: The Game Theory Approach to Protecting Fashion Designs, 160 U. Pa. L. Rev. 1139, 1146 (2012) (asserting that fashion designs have not yet fallen within copyright). 7

copyright cases to the Louboutin case. Furthermore, in its application of past fashion copyright cases, this Comment establishes that color should be protected under copyright law by refuting the shade confusion and color depletion theories. Part IV of this Comment recommends that fashion designers use copyright law, rather than trademark law, to protect their use of color. Part V concludes that if the Louboutin case were decided under copyright law, the red sole would have been protected completely; and in the future the fashion industry should use copyright law to protect color in their designs. II. Understanding Past Fashion Copyright Cases to Establish Copyright Protection for Color in the Future Traditionally, companies have sought intellectual property protection for color under trademark law. 22 However, Judge Jose 22 See Brief of Amicus Curiae Tiffany LLC and Tiffany and Company in Support of Appellants' Appeal Seeking Reversal of the District Court's Decision Denying Appellants' Motion for Preliminary Injunction, Christian Louboutin v. Yves Saint Laurent Am. Inc., 696 F.3d 206, 207 (2d Cir. 2012) (discussing how Tiffany owns trademarks for the robin's egg blue color used on boxes, and on shopping bags); see also McCarthy on Trademarks and Unfair Competition 8:4.50 (4th ed.) (demonstrating 8

A. Cabranes of the Second Circuit stated in footnote 19 of the Louboutin case that Louboutin should have sought protection for his red sole under copyright law rather than trademark law. 23 To evaluate the Louboutin case under copyright law, it is necessary to discuss what is required to receive protection under United States copyright law. Then, it is necessary to analogize protecting color with past court decisions concerning the fashion industry with the Louboutin case. A. Traditional Protection for Color Under the Lanham Act Qualitex Co. v. Jacobson Products Co. is the seminal Supreme Court decision in 1995 that established there was not a special legal rule preventing color alone from serving as a trademark. 24 In this case, Qualitex registered as a trademark the green-gold color of their dry cleaning press pads. 25 Jacobson started producing dry cleaning press pads with the same examples of trademarks such as the G shape of the frame of a GUCCI watch, and the shape of Hermès handbags). 23 See Christian Louboutin v. Yves Saint Laurent Am. Inc., 696 F.3d 206, 223 (stating copyright law should have been used). 24 See Qualitex Co. v. Jacobson Products Co. Inc., 514 U.S. 159, 161 (1995) (concluding that sometimes a color will meet ordinary legal trademark requirements). 25 See U.S. Patent No. 1,633,711 (filed Feb. 5, 1991). 9

color. 26 Qualitex sued Jacobson for trademark infringement and Qualitex was granted trademark protection. 27 B. Protecting Intellectual Property Under United States Copyright Law Copyright law in the United States is established in the United States Constitution 28 and codified in the Federal Copyright Act of 1976. 29 The Federal Copyright Act establishes six rights for the owner of the copyright, and any violation of those six rights is a copyright infringement. 30 26 See Qualitex, 514 U.S. at 160 (alleging Jacobsen started coloring pads a similar green-gold that Qualitex used). 27 See id. at 173 (holding that Qualitex s use of the green-gold color on its pads meets the basic trademark requirements). 28 See U.S. Const. art. I, 8, cl. 8 ( to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries ). 29 See generally 17 U.S.C. 101 (1976) (codifying copyright law). 30 See id. at 107-122 (establishing the right to reproduce the work into copies, the right to create derivative works of the original work, the right to distribute copies of the work to the public by sale, lease, or rental, the right to perform the 10

1. The Work Must be Original and Creative In order for an individual to receive copyright approval, the work must be original and creative. 31 Copyright protection subsists in original works of authorship that are in any tangible medium. 32 Thus, there is no copyright protection for an idea. 33 2. The Finding of Copyright Infringement An individual s copyright is infringed upon when their work is actually copied. 34 A work is actually copied when a defendant admits that he or she copied the work, 35 the tangible objects look identical, or the objects are substantially similar. 36 work publicly, and the right to display the work publicly); id. at 501(a) (establishing copyright infringement). 31 Id. at 102(a). 32 Id. 33 17 U.S.C. 102(b) (1976). 34 Id. at 102(a). 35 See Knitwaves Inc. v. Lollytags Ltd., 71 F.3d 996, 1000 (2d Cir. 1995) (discussing how defendant admitted that he used no other design references than the plaintiff s sweaters). 36 See id. at 1002 (establishing that in most cases, the test for substantial similarity is the ordinary observer test, which asks 11

Thus, an individual must intentionally make significant changes to their item to avoid similarity between other protected items. 37 C. Traditional Protection for Fashion Under the United States Copyright Act 1. Useful Articles are not Eligible for Copyright The design of a useful article is not eligible for copyright protection. 38 A useful article has an intrinsic utilitarian function. 39 Additionally, a useful article that has whether an average lay observer would recognize the alleged copy as having been derived from the copyrighted work). 37 See id. (stating that a defendant may avoid infringement by intentionally making changes so the works are not similar). 38 See 17 U.S.C. 101 (1976) (codifying that features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article are copyrightable). 39 See Inwood Lab. Inc. v. Ives Lab. Inc., 456 U.S. 844, 850 (1982) (discussing that utilitarian functionality is essential to the use, purpose, or cost of the article). C.f. Kieselstein- Cord v. Accessories by Pearl Inc., 632 F.2d 989, 993 (2d Cir. 1980) (holding that if something is physically or conceptually separable, this can be copyrighted). 12

an aesthetic function cannot be copyrightable. 40 However, an article s pictorial, graphic, or sculptural features are eligible for copyright protection if they are capable of existing independently from the article s utilitarian aspects. 41 Historically, courts have identified clothing as useful articles that are not copyrightable since it is generally not possible to separate the utilitarian and design elements. 42 40 See Coach Leatherware Co. v. Ann Taylor Inc., 933 F.2d 162, 171 (2d Cir. 1991) (declaring that the test for aesthetic functionality is when the court finds the ornamental features would significantly limit the competitive designs available). 41 See U.S. Copyright Office, Compendium II: Copyright Office Practices, Copyrightable Matter: Pictorial, Graphic, and Sculptural Works (1984) at 505.02, 505.03 (describing that the determination of separability may be made on either a physical or conceptual basis) (hereinafter Compendium II). 42 See Wong, supra note 21 at 1145 (discussing how an article of clothing cannot receive copyright protection because clothing is utilitarian in nature). See generally, Susan Scafidi, Intellectual Property and Fashion Design (Peter K. Yu ed. 2007) (describing the interplay of different forms of intellectual property protection for fashion designers). 13

2. The Pictorial, Graphics and Sculptural Aspects of Useful Articles may be Copyrightable if they are Separate from the Article Physically or Conceptually The Copyright Office periodically publishes a Compendium, which is the general guide on registration, recordation, and related practices consulted by the Copyright Office staff and the public. 43 According to the Copyright Office in Compendium II, conceptual separability is described as the the pictorial, graphic, or sculptural features, while physically inseparable by ordinary means from the utilitarian item, are never the less clearly recognizable as a pictorial, graphic, or sculptural work which can be independent of the shape of the useful article. 44 In addition, according to the manual, physical separability derives from the principle that a copyrightable work of sculpture which is later incorporated into a useful article retains its copyright protection. 45 Design elements of fashion articles find both of these tests very difficult to meet. 46 43 See Compendium II, supra note 41 (describing the Compendium). 44 See Compendium II, supra note 41 at 505.03. 45 See Compendium II, supra note 41 at 505.05. 46 See Christine Cox and Jennifer Jenkins, Between the Seams, A Fertile Commons: An Overview of the Relationship Between Fashion and Intellectual Property, (Jan. 29, 2005) 14

Chosun Int l Inc. v. Chrisha Creations Ltd. discusses the physical and conceptual tests in the Second Circuit. 47 In this case, Chosun, a designer and manufacturer of Halloween costumes, sued Chrisha for infringement of original animal-themed children s costumes. 48 Physical separablitity is when a component of a useful article can be removed from the original item and separately sold, without impacting the article s functionality. 49 Conceptual separablitity is where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences. 50 Under copyright protection, color will be categorized as a http://learcenter.org/pdf/rtsjenkinscox.pdf at 6 (asserting that copyrights generally are not granted to apparel because articles of clothing are considered useful articles as opposed to works of art). C.f. Barnhart v. Economy Cover Corp., 773 F.2d 411, 418 (2d Cir. 1985) (holding that mannequins used to display clothing were useful articles). 47 See generally Chosun Int'l Inc. v. Chrisha Creations Ltd., 413 F.3d 324 (2d Cir. 2005) (discussing how an article can be separate from its utilitarian function under copyright law). 48 Id. at 328 (alleging trademark infringement). 49 Id. at 329 (describing the elements of physical separability). 50 Id. (stating the elements for conceptual separability). 15

conceptually separate element since it cannot be physically separated from the useful article. D. Fashion Fabric Design Cases Offer the Best Comparison for Future Fashion Color Cases Comparing past fabric design cases with color is the best way to understand protection since there are not any cases that deal with copyrighting color in the fashion industry. 51 1. Fabric Designs are Considered Writings under Copyright Law Copyright law was first established in the United States Constitution. 52 The word writings is broadly construed; it includes all its forms that may be used to the end that the author's ideas are tangibly expressed. 53 Fabric designs are 51 See generally C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147, 1199 (2009) (discussing how copyright protects distinctive fabric patterns and physically separable ornaments, thus encouraging a designer to favor patterns over solids for new designs). 52 See U.S. Const. art. I, 8 cl. 8 (showing definition for writings under the United States Constitution). 53 See, e.g., Folio Impressions Inc. v. Byer California, 937 F.2d 759, 763 (2d Cir. 1991) (asserting that among those forms of writings entitled to copyright protection are fabric designs). 16

considered writings for copyright law purposes and are protectable. 54 Therefore, color designs should be considered writings because color is used in the same way as fabric designs are. The courts have articulated three tests to find copyright infringement. These include the average lay observer test, the substantial similarity test, and the aesthetics appeal test. 55 These tests have factors that the courts use to evaluate copyright infringement. 2. The Average Lay Observer Test One test for copyright infringement is whether an average lay observer would find a substantial similarity in the designs. 56 In Soptra Fabrics Corp. v. Stafford Knitting Mills Inc. Soptra sued Stafford for copyright infringement of its 54 See Whimsicality Inc. v. Rubies Costume Co., 891 F.2d 452, 455 (2d Cir. 1989) (asserting that fabric designs are distinguished from dress designs as being copyrightable). 55 See generally Danielle E. Gorman, Protecting Single Color Trademarks in Fashion After Louboutin, 30 Cardozo Arts & Ent. L.J. 369 (2012) (discussing the three tests in copyright law). 56 See Soptra Fabrics Corp. v. Stafford Knitting Mills Inc., 490 F.2d 1092, 1093 (2d Cir. 1974) (establishing that the underlying test for infringement as being whether an average lay observer would find a substantial similarity in the design). 17

colored geometric fabric design. 57 The judge stated that if one examined the designs up close, one could see slight variations in the design. 58 However, the underlying test for infringement is whether an average lay observer would find a substantial similarity in the designs, and those small differences could not be observed without a rigorous analysis. 59 This case establishes that courts need to look at the average lay observer, and not focus on what can be observed under strict judicial scrutiny. 60 3. The Substantial Similarity Test In addition to the average lay observer test, there is copyright infringement if the two items are substantially similar to one another. 61 In Knitwaves, Inc. v. Lollytogs Ltd. 57 See id. at 1093 (adjudicating whether the design was merely inspired, or was flatly pirated). 58 See id. (noting the designs differences was only obviously dissimilar from a few feet away). 59 See id. at 1094 (discussing how it was important that the two colors used in the dresses were the same). 60 See Concord Fabrics Inc. v. Marcus Bros. Textile Corp., 409 F.2d 1315 (2d Cir. 1969) (holding that even though the patterns in question had some difference in their color and design, the average observer would find them substantially similar). 61 See generally Victoria Elman, From the Runway to the 18

Knitwaves sued Lollytog for copyright infringement of their Leaf and Squirrel sweaters. 62 The court established that it must examine the work s total concept and feel when comparing articles to determine if there are substantial similarities between the two items. 63 The court in Knitwaves also cited Folio Impressions that established a more discerning test when comparing products that Courtroom: How Substantial Similarity Is Unfit for Fashion, 30 Cardozo L. Rev. 683, 705 (2008) (describing the details of the substantial similarity test). 62 See Knitwaves Inc. v. Lollytogs Ltd., 71 F.3d 996, 997 (2d Cir. 1995) (stating that defendant contends the design was altered so that the sweaters are not substantially similar). 63 See Eden Toys Inc. v. Marshall Field & Co., 675 F.2d 498, 501 (2d Cir. 1982) (holding that two snowmen were not substantially similar since their scarves were different colors, the buttons were the same color but of different sizes, and the snowmen s heads were different); see also Soptra Fabrics Corp. v. Stafford Knitting Mills Inc., 490 F.2d 1092, 1093 (2d Cir. 1974) (explaining that Lollytogs' sweaters are substantially similar to Knitwaves' since Lollytogs used the same two fall color symbols in the same manner on similar backgrounds). 19

contain both protectable and unprotectable elements. 64 In this case, Folio Impressions claimed infringement for their rose fabric design. 65 The court held that only the roses on the fabric design were copyrightable, but the background was not because it was not original. 66 However, the court held that the roses were not substantially similar to one another; therefore, there was no infringement. 67 This case established that a court, when examining a design that has protectable and unprotectable 64 See Folio Impressions Inc. v. Byer California, 937 F.2d 759, 766 (2d Cir. 1991) (establishing that when only parts of the design is eligible for copyright protection, the observer's inspection must be more discerning). 65 See id. at 762 (alleging copyright infringement of their Baroque rose pattern). 66 See id. at 764 (stating a reasonable juror could hold the background was not original). 67 See id. at 766 (holding that the roses themselves are not substantially similar since each of the roses in defendant s pattern are identical, while the roses in the plaintiff s pattern differ from each other in their details). 20

elements, may choose to employ a more discerning test in determining if the articles are substantially similar. 68 4. The Aesthetic Appeal Test Another element in proving copyright infringement is if two designs have the same aesthetic appeal so the ordinary observer could not tell the difference between the two designs. 69 In Peter Pan Fabrics Inc. v. Martin Weiner Corp. Peter Pan sued Weiner for copying the ornamental designs on their fabric. 70 The court observed that the distribution of the symbols on each patterns were not identical. 71 Despite the patterns not being identical, the court held that Peter Pan s fabric design was 68 See id. (establishing that since only some of the design enjoys copyright protection, the observer's inspection must be more discerning). 69 See generally Elman, supra note 61 at 706 (discussing the ordinary observer test). 70 See Peter Pan Fabrics Inc. v. Martin Weiner Corp., 274 F.2d 487, 488 (2d Cir. 1960) (establishing that Peter Pan registered their Byzantium with the Copyright Office). 71 See id. at 489 (observing that both designs have the same general color, and the symbols resemble each other). 21

infringed upon since the ordinary observer would not see the disparities, and regard their aesthetic appeal as the same. 72 5. Design and Color Elements in Fashion Certain design elements that are separable from the utilitarian function of the article can be copyrighted. 73 In Kieselstein-Cord v. Accessories by Pearl Inc. Kieselstein-Cord manufactured belts with unique belt buckles. 74 Pearl Inc. admitted to copying the belt buckle design and selling its imitations. 75 The court held that the belt buckles were conceptually separable from their subsidiary utilitarian function; therefore, they could be copyrightable. 76 72 See id. at 489 (holding it is enough the people on the street would think the dresses were the same). 73 See Mazer v. Stein, 347 U.S. 201, 218 (1954) (holding that artistic designs, not their utilitarian aspects, are protected). 74 See Kieselstein-Cord v. Accessories by Pearl Inc., 632 F.2d 989, 990 (2d Cir. 1980) (describing the two belt buckles as having rounded corners, a sculpted surface, and a rectangular cut-out at one end for the belt attachment). 75 See id. at 991 (describing how order forms referred to Barry K copy, BK copy, and Barry Kieselstein Knock off). 76 Compare Mazer, 347 U.S. at 218 (allowing copyright protection for a statute as a base of a lamp) with Kieselstein-Cord, 632 22

Furthermore, the court in Chosun Int l Inc. v. Chrisha Creations Ltd. held that sculpted animal heads of costumes could potentially be protected. 77 The court stated that Chosun might be able to show that the animal heads evoke in the observer a concept separate from that of the costume s function. 78 F.2d at 990 (holding that belt buckles are utilitarian objects which are generally not copyrightable, but these buckles are decorative in nature and used principally for ornamentation). 77 See Chosun Int'l Inc. v. Chrisha Creations Ltd., 413 F.3d 324, 329 (2d Cir. 2005) (stating that it is at least possible that elements of Chosun's plush sculpted animal costumes are separable from the overall design of the costume). 78 See id. at 330 (discussing how a jury could find separabliity from the facts). 23

Color arrangements in fabric designs are copyrightable. 79 In L.A. Printex Indus. Inc. v. Aeropostale Inc. LA Printex filed action against Aeropostle alleging infringement of a stylized pattern of flowers and branches in their textile designs. 80 The court followed the Second Circuit s idea that a court should not dissect the fabric designs into component parts and compare only copyrightable elements in the context of fabric designs, but 79 See Greeff Fabrics Inc. v. Spectrum Fabrics Corp., No. 81 CIV. 5426 (RLC), 1981 WL 1384, at *4 (S.D.N.Y. Oct. 23, 1981) (stating that the same design in different colors may give rise to separate copyrights); 1 Melville B. Nimmer & David Nimmer, Nimmer on Copyright 2.14 (Matthew Bender rev. ed. 2011) (asserting that an original combination or arrangement of colors should be regarded as an artistic creation capable of copyright protection, and similarity of color arrangements may create an inference of copying). But see Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003) (holding that a sculptor may not prevent others from depicting jellyfish in bright colors, because many jellyfish are brightly colored). 80 See L.A. Printex Indus. Inc. v. Aeropostale Inc., 676 F.3d 841, 845 (9th Cir. 2012) (suing for copyright infringement). 24

rather look at the overall appearance between the articles. 81 Taking into account the similar color arrangements, the court noted that, although mere variations of color are not copyrightable, similarities in color arrangements are probative of copying. 82 Therefore, color elements in a design, especially their placement, are copyrightable. 83 Designs elements that are combined in an original way are copyrightable. 84 In Yurman Design Inc. v. PAJ Inc. Yurman claimed that PAJ had infringed five Yurman copyrighted jewelry 81 See id. at 849 (arguing that the court might have to decide that there can be no originality in a painting because all colors of paint have been used somewhere in the past). 82 See id. at 851 (holding that the color arrangement of the design is markedly similar to the color arrangement of defendants' design). But see 37 C.F.R. 202.1(a) (2012) (stating that color is one of the examples of works that are not subject to copyright and applications for registration). 83 See generally Yurman Design Inc. v. PAJ Inc., 262 F.3d 101, 109 (2d Cir. 2001) (discussing that copyright law may protect a combination of elements that are unoriginal in themselves). 84 See id. at 112 (establishing that Yurman's position on the copyright claims is that its designs, which express original combinations of unprotectable elements, were infringed upon). 25

designs. 85 The Second Circuit upheld the jury s findings that the designs were substantially similar to one another and that the average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work. 86 6. Protecting the Fashion Pattern that Identifies a Brand Patterns on a designer s articles that identify the designer s brand are eligible for copyright protection under the average lay observer, aesthetic appeal and substantially similarity tests. 87 In Coach Inc. v. Horizon Trading USA Inc. Coach sued Horizon Trading for selling counterfeit Coach sunglasses with their Signature C design. 88 The court held that the pattern was able to receive copyright protection since 85 See id. at 107 (alleging infringement of jewelry designs). 86 See id. at 111 (applying the court s common sense to each design, the jury could have reached that conclusion). 87 See Coach Inc. v. Horizon Trading USA Inc., 11 CIV. 3535, 2012 WL 5451274 at *3 (S.D.N.Y. Nov. 7, 2012) (holding there was substantial similarity between the patterns). 88 See id. at *1 (explaining how Coach has registered copyrights for variations of the Signature C design on different items). 26

an ordinary observer would overlook the disparities between the two items, and regard their aesthetic appeal as the same. 89 E. Concerns for Protecting Color Under Intellectual Property Courts have also relied on legal scholars shade confusion and color depletion theories to suggest that color should not be protected under copyright or trademark law at all. 1. Competition will Suffer From Shade Confusion Shade confusion is a concern in determining whether to grant registration rights to color since many factors other than the product color itself influence a person s perception of color. 90 The combination of wavelengths in sunlight changes throughout the day, which causes individuals to view the object s color differently. 91 Additionally, no color looks alike to the same two people, and in reality most colors are too close 89 See id. at *6 (asserting that the defendants' products and marks were not distinguishable from Coach products); see also Coach Inc. v. Abner s Fashion, No. CV 08-8191, 2009 WL 4810179 at *3 (C.D. Cal. Dec. 7, 2009) (upholding the claim since the defendants' configured their marks to resemble Coach's marks). 90 See U.S. Resp. Brief, at 21-22 (discussing shade confusion). 91 See id. (asserting how sunlight affects color perception). 27

to be indistinguishable. 92 Finally, there is the argument that courts are unable to analyze the perception of color. 93 2. The Fashion Industry will Suffer from Color Depletion Another argument for denying protection for color is the limited supply of colors available. 94 The color depletion theory was described in Campbell Soup Co. vs. Armour & Co. 95 The court held that the red and white background of Campbell s soup cans 92 See id. (articulating why color looks different to people and why people cannot actually distinguish between too many colors). 93 See Thompson Medical Co. v. Pfizer Inc., 753 F.2d 208, 213 (2d Cir. 1985) (arguing the judiciary is unable to distinguish between marks). But see J. Christopher Carraway, Color As A Trademark Under the Lanham Act: Confusion in the Circuits and the Need for Uniformity, Autumn Law & Contemp. Probs. 243, 264 (1994) (explaining that courts are able to make decisions distinguishing colors). 94 See U.S. Resp. Brief, at 21-22 (discussing color depletion). 95 See Campbell Soup Co. vs. Armour & Co., 175 F.2d 795, 798 (3d Cir. 1949) (asserting a color depletion argument). But see id. at 799 (clarifying that trademark protection is available when the color is combined with other things in a distinctive 28

were not entitled to trademark protection since this would cause the colors available to eventually run out. 96 III. Applying Copyright Law to the Christian Louboutin Court Decision and How This Will Affect Future Color Copyright Cases in the Fashion Industry Both Louboutin and YSL considered the Louboutin case a victory. 97 However, the court modified Louboutin s trademark to include protection only for shoes with a red sole with a contrasting upper sole. 98 On the surface, this seems to be a simple distinction. However, this is not necessarily true in reality since this raises questions on how contrasting the upper 96 See id. at 798 (reasoning that if Campbell may monopolize red in all of its shades, another manufacturer could monopolize other colors, the list of colors would soon run out). 97 Benjamin Weiser, Shoe Designer Can Protect Its Pop of Red, Court Says, N.Y. Times, Sept. 5, 2012, at A23 (reporting that Harry I. Lewin, a lawyer for Louboutin, said, We consider this a significant win for Louboutin ). But see id. (reporting that David H. Bernstein, a lawyer for YSL, said, For us, it s a complete victory because it confirms that YSL has the right to use the color red ). 98 See Christian Louboutin v. Yves Saint Laurent Am. Inc., 696 F.3d 206, 217 (2d Cir. 2012) (limiting the trademark). 29

sole has to be. Take the example of the YSL shoe design that was at issue in this case. 99 The upper sole of the shoe was completely red and so was the lower sole of the shoe; therefore, it did not infringe on Louboutin s trademark. 100 Yet, what if YSL modifies that design and adds one or a few black accents to the shoe (some black piping, a black buckle, or black rhinestones), is that a contrasting upper sole? This is the question left open by the Second Circuit s decision. This confusion can be reconciled by applying copyright law to this case. 101 Moreover, even though this case has already been decided, 102 examining it under copyright law will establish that 99 Accord Simy Wolf, Red Shoe Diaries: Shoe Designer Louboutin Wins Appeal Against Yves Saint Laurent Horti-Couture-Flower Inspired Dior Gowns, Martindale-Hubbell Blog (Oct. 1, 2012), http://blog.martindale.com/red-shoe-diaries-shoe-designerlouboutin-wins-appeal-against-yves-saint-laurent (showing a picture of the Louboutin and YSL shoe). 100 See Louboutin, 696 F.3d at 229 (allowing YSL to produce shoes with a red upper and lower sole). 101 See id. at 219 (discussing how copyright law instead of trademark law would have been more appropriate in this case). 102 Accord Vicki M. Young, Christian Louboutin, YSL Suit Dismissed, Women s Wear Daily (Dec. 28, 2012), 30

in the future Louboutin should seek protection under copyright law for their red sole. 103 Furthermore, by analyzing this case under copyright law, this will guide future fashion designers to seek protection for color under copyright law. A. The Language of the Copyright Act Allows for Color to be Copyrighted The language of the Copyright Act does not specifically mention color as being protected; however, courts interpret the http://www.wwd.com/fashion-news/fashion-scoops/finally-done- 6556656 (reporting that the Manhattan federal district court entered a final order confirming that Louboutin has no further claims against YSL). 103 See Weiser, supra note 97 (noting that Harry I. Lewin, a lawyer for Louboutin, said he believed Louboutin might be able to return to court someday and argue that it deserved protection for its red sole, even on monochrome-colored shoes). See generally Stop Fake Christian Louboutin, http://www.stopfakelouboutin.com (last visited Jan. 3, 2013) (showing Louboutin s commitment to stopping forgeries of his shoes internationally). 31

Act to decide what is protected. 104 Therefore, there is nothing that initially precludes the protection of color. 1. Color is Included in the Category of Pictorial, Graphic, and Sculptural Works of the Copyright Act 105 Color would be considered a sculptural or graphic element under the Copyright Act. Color is not a pictorial element since it does not depict a picture. 106 One could argue that a picture could just be a solid color, but the stronger argument can be 104 See Kieselstein-Cord v. Accessories by Pearl Inc., 632 F.2d 989, 993 (2d Cir. 1980) (interpreting what is a pictorial, graphic, or sculptural object under the Copyright Act). 105 See 17 U.S.C 101 (1978) ( Pictorial, graphic, and sculptural works include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans ). 106 See Merriam-Webster Dictionary 1711 (3d ed. 1981) (defining pictorial as pertaining to, expressed in, or of the nature of a picture; illustrated by or containing pictures; of or pertaining to the art of painting and drawing pictures, the pictures themselves, or their makers ). 32

made for color being a graphic element. 107 Color could be considered a sculptural element 108 if it was used in a clothing item that has a three dimensional sculptural elements attached to the article 109 Yet, the best argument is that color is a graphic element since it demonstrates a clear and effective picture of what brand the designer article is. 110 A designer s unique work includes their choice and placement of color; and is therefore a graphic element of a design. Color is both a graphic in the terms of being an 107 See id. at 990 (giving the dictionary definitions for graphic). 108 See id. at 2044 (defining sculptural as art of carving, modeling, welding, or otherwise producing figurative or abstract works of art in three dimensions ). 109 See Horti-Couture-Flower Inspired Dior Gowns, Sprout Blog (July 20, 2010), http://www.sprout-flowers.com/2010/07/horticouture-flower-inspired-dior.html (showing how during the Dior 2010 haute couture fashion show all the designs had three dimensional flowers on the dresses). 110 See Merriam-Webster Dictionary at 990 (3d ed. 1981) (introducing the definition for graphic). 33

adjective 111 and a noun. 112 A specific color is an adjective, especially when consistently placed, when it conveys a clear and effective picture of what designer brand an item is. 113 Additionally, color could be construed as a noun since placing color on a fashion article is a technique of placing a graphic on an article. Therefore, color is best protected under the graphic element of the Copyright Act. 111 See id. (defining graphic as an adjective as giving a clear and effective picture; vivid; pertaining to the use of diagrams, graphs, mathematical curves, or the like; diagrammatic; of, pertaining to, or expressed by writing: written, inscribed, or drawn; depicted in a realistic or vivid manner ). 112 See id. (defining graphic as a noun as the arts or techniques, as engraving, etching, drypoint, woodcut, lithography, and other methods, by which copies of an original design are printed from a plate, block, or the like ). 113 See Christian Louboutin v. Yves Saint Laurent Am. Inc., 696 F.3d 206, 212 (2d Cir. 2012) (explaining Louboutin's red sole trademark has acquired limited secondary meaning as a distinctive symbol that identifies the Louboutin brand). See, e.g., Suzy Menkes, Tiffany, In New Packaging, N.Y. Times, Sept. 12 2006, http://www.nytimes.com/2006/09/12/style/12ihtrtiffany.2782763.html (discussing the famous Tiffany Blue). 34

Further support for why color should be included under copyright law can be seen in the Chosun Int l, Inc. v. Chrisha Creations, Ltd. case. 114 In this case, the design elements in question were sculpted animal heads of children s costumes that could be considered conceptually separate elements. 115 This is similar to the Louboutin case where color, like the animal heads, could be considered a graphic element that can be conceptually separated under the Copyright Act. Louboutin proves that the red sole is now equated with the Louboutin brand. 116 Therefore, the addition of the red sole is a graphic element that does not enhance the shoe s functionality; it is used solely to invoke in the consumer and public the concept that the individual is wearing a Louboutin designed shoe. 117 114 See generally Chosun Int'l Inc. v. Chrisha Creations Ltd., 413 F.3d 324, 329 (2d Cir. 2005) (discussing conceptually separate elements within in a copyright case). 115 See id. at 328 (holding that Chosun may be able to show that they invoke a concept separate from the clothing s function). 116 See generally Louboutin, 696 F.3d at 229 (discussing how in pop culture the red sole is linked with the Louboutin brand). 117 See id. at 228 (stating that the court does not need to analyze if the red sole mark is functional). 35

2. Color is Not Always Part of the Useful Article As long as one can physically or conceptually remove the color aspect of the article, the Copyright Act will protect color. 118 As will be discussed below, the red sole on Louboutin s shoes can be conceptually separated from the useful part of the article because it invokes in the ordinary observer the Louboutin brand. It is true that the use of color could not be removed from the article in every case, 119 but there is not a complete bar of this in the United States Copyright Act. 120 B. The Red Lower Sole is an Original and Creative Design The use of the red lacquer sole is an original and creative design since no other footwear designer has used a red sole on 118 See Chosun, 413 F.3d at 330 (discussing that design elements that can be conceptualized as existing independently of their utilitarian function are eligible for copyright protection). 119 E.g. Blue Dresses, Frugal Fashionista Blog (2009), http://frugal-fashionistas.com/2009/01/blue-dresses/ (displaying eight blue dresses to show that blue itself is not protectable). 120 See generally 17 U.S.C. 101 (1976) (stating that pictorial, graphic, or sculptural works can be protected as long as they are not useful articles). 36

the bottom of their shoes consistently to identify its brand. 121 In the copyright context, originality means the work was independently created by its author, and not copied from someone else's work. 122 The level of originality and creativity that must be shown is minimal. 123 Louboutin has been using his red lacquer sole since he started his business in 1992. 124 121 See Perry, supra note 2 (quoting Louboutin, My red soles are a part of my identity because people relate them to me, to my shoes and to my work); Searching for red sole shoes, Google, http://google.com, (search red sole shoes ) (showing that when one searches red sole shoes every website relates to Louboutin). 122 See 17 U.S.C. 1309(f) (1976) (codifying how the party seeking protection has the burden of establishing originality). 123 See, e.g., Alfred Bell & Co. v. Catalda Fine Arts Inc., 191 F.2d 99, 103 (2d Cir. 1951) (determining that all that is required in terms of originality is that the author contributed something more than a merely trivial variation). See Burgunder, supra note 14 (stating that the originality barrier is an easy hurdle because it is met merely by showing that there is some spark of creativity). 124 See Marianna Mairesse and Katie L. Connor, Christian Louboutin: In his Shoes, Marie Claire (Feb. 27, 2012), http://www.marieclaire.com/celebrity- 37