A Red-Leather Year for Aesthetic Functionality
4:2 LANDSLIDE (American Bar Association), November-December 2011
6 Pages Posted: 31 Jul 2012 Last revised: 19 Jun 2014
Date Written: August 15, 2011
An August 2011 decision in the high-fanfare, high-heeled case of Christian Louboutin 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 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.
UPDATE (Jan. 2014): For a proposal that the courts and USPTO rely more heavily on the doctrine of "genericism" as a potential solution to the problems associated with the "aesthetic functionality" doctrine, please visit the LAW OF FASHION website -- containing a presentation given at the NYU 2014 Tri-State IP Workshop and forming the basis for a full-length work-in-progress.
Keywords: louboutin, ysl, yves saint laurent, trademark, aesthetic functionality, red sole
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