One of the pleasures of practicing law, perhaps especially in the technology space –is in observing how technology trends and legal theories intersect, ebb and flow over time. Many people in the trademark world watched excitedly over 17 years ago when the U.S. Supreme Court, in Qualitex v. Jacobson, determined that single colors could be protected as trademarks—as long as the color, as applied to the relevant products, was not merely functional. Previously, some feared that granting trademark protection to single color (even if the color was non-functional) would be anti-competitive because colors were in short supply. Hence, no one should own one color exclusively. The Qualitex ruling seemed to provide closure on the issue by focusing the analysis on the functionality of the color shade rather than the potential for that color to be removed from the designer’s pallet.
But recently, as the trademark community knows, the Second Circuit Court of Appeals took up the appeal in Louboutin v. Yves Saint Laurent, a case that revisits the protectability of color, this time as used to identify a brand of shoes. The District Court opined that the use of red on a shoe sole (or on any fashion item) was “functional” by its very nature and that granting a monopoly to color on a fashion item was outside the bounds of trademark law protection. The District Court characterized the impact of protecting colors in the fashion industry as one encouraging anti-competitive color grabs:
…Louboutin’s claim would cast a red cloud over the whole [fashion] industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette. Louboutin would thus be able to market a total outfit in his red, while other designers would not. And this impediment would apply not just with respect to Louboutin’s registered ‘the color red,’ but, on its theory as pressed in this litigation, to a broader band of various other shades of red which would be available to Louboutin but which it could bar others from using.
Unpacking that argument, it seems that the District Court’s real concern is not so much that the colors are functional in the fashion industry, but that designers’ pallets will become incrementally limited as each designer lays claim to a shade. That sounds a lot to this blogger like we are revisiting color depletion as a basis for declining to protect single color marks. And that, in turn lead me to consider how a re-emergence of depletion theory might impact other industries who seek to use common and limited elements (such as letters) as trademarks. You can read more about that here.