THE DEVIL WEARS TRADEMARK:
HOW THE EASHION INDUSTRY HAS EXPANDED
TRADEMARK DOCTRINE TO ITS DETRIMENT
I. I N T R O D U C T I O N
Over the past decade, the uncertainty of fashion's status as protectable
intellectual property has generated enormous controversy. It is no
wonder: in 2011, apparel sales in the United States amounted to almost
two hundred billion dollars;1 handbag sales alone accounted for
eight billion dollars that year and are continuing to balloon at ten percent
annually.^ This trend is also global. Fashion has become one of
the largest and most dynamic industries in the world. Global fashion
revenue totals one trillion dollars per year, representing four percent of
global GDP.3 Unsurprisingly, then, the question of intellectual property
protection for fashion design has commanded attention from designers,
litigators, policymakers, and consumers. Nevertheless, growth in
the industry's economic importance and in the ease of pirating fashion
designs have both outpaced legal change.4
American fashion designers have largely failed to achieve protection
for their designs through existing copyright and patent law and through
lobbying for changes to those or other laws. Instead, as this Note argues,
designers have turned their efforts to the courts, where their lawyers
have co-opted trademark law as a tool for protecting designs that
arguably would not have been entitled to protection under the traditional
scope of trademark law or under any other intellectual property
scheme in the United States. While much has been written on the
expansion of trademark doctrine, little attention has been given to
trademark law's increased protection of what this Note terms "quasidesigns"
— patterns or shapes that walk the line between logos and designs.
Such quasi-designs are nominally trademarkable logos but practically
nontrademarkable designs — and perhaps functionally both. By
highlighting some of the most infiuential cases in this arena, this Note
exposes and analyzes the language in recent court opinions that signals
' NPD Reports on the U.S. Apparel Market 2011: Results Show Marked Improvement over 2010,
NPD GROUP (Mar. 29, 2012), http://www.npd.com/wps/portal/npd/us/news/press-releases/pr_i2O329.
2 Cotten Timberlake, Coach Drops as Kors Grabs Handbag Customers in Slowdown: Retail,
BLOOMBERG (Aug. i, 2012, 12:00 AM), http://www.bloomberg.com/news/2012-08-01/coach
-droops-as-kors-grabs-handbag-customers-in-slowdown-retail.html.
3 Guillermo C. Jimenez, Fashion Law: Overview of a New Legal Discipline, in FASHION LAW
3, 6 (Guillermo C. Jimenez & Barbara Kolsun eds., 2010).
4 See Michael S. Mireles, Jr., Towards Recognizing and Reconciling the Multiplicity of Values
and Interests in Trademark Law, 44 IND. L. REV. 427, 435-38 (2011) (noting that, while trademark
protections have arguably expanded, other legal protections applicable to fashion have contracted).
995
996 HARVARD LAW REVIEW [Vol. 127:995
judicial relaxation of the traditional conceptual scope of trademark law,
such that trademarks are no longer strictly limited to logos and may instead
be rooted in quasi-designs. Such decisions are effectively creating
a loophole in the system whereby designers can receive permanent rights
over quasi-designs that masquerade as logos.
This Note also argues, however, that the industry's efforts to co-opt
trademark law lead largely to negative and even self-defeating results,
such as a bias favoring large incumbent brands and the inducement of
laziness in design. Specifically, designers have — perhaps predictably —
shifted their design focus from innovation in the product itself to the
generation of more prominent and elaborate iterations of the logos emblazoned
on their products. Such a focus on logos may ultimately
harm a brand's image as the market becomes oversaturated with exposure.
Furthermore, society receives nothing in return for protecting
these rights. Instead of allowing this creeping doctrinal expansion to
continue. Congress should simply create sui generis legislation for the
protection of fashion design, under either copyright or patent law.
This Note proceeds in four parts. Part 11 discusses why the fashion
industry, for both practical and strategic reasons, has turned to trademark
law as the means of protecting design. Part III shows, by highlighting
and analyzing some of the most impactful trademark cases, how
courts have gradually expanded trademark doctrine's reach to include
quasi-designs. Part IV presents the largely negative implications of such
expansion. Part V concludes with some thoughts on what form sui generis
legislation for fashion design might take.
n. WHY THE FASHION INDUSTRY HAS RESORTED TO
TRADEMARK LAW FOR PROTECTION OE DESIGNS
A. Lack of Protectionfrom Traditional
Copyright and Patent Law Regimes
U.S. copyright and patent regimes shun protection for fashion design.
Though the United States is an outlier in this respect,-^ its lack of
copyright protection for fashion design is historical: U.S. law has long
sought to draw a line between works of art, which are copyrightable,
and "useful articles," the utilitarian aspects of which are not copyrightable.^
Shirts, dresses, pants, footwear, and bags are all considered
"useful articles." On the other hand, "pictorial, graphic, or sculptural
^ Matthew S. Miller, Piracy in Our Own Backyard: A Comparative Analysis of the Implications
of Fashion Copying in the United States for the International Copyright Community, 2 J.
INT'L MEDIA & ENT. L. 133,156 (2008).
6 See 17 U.S.C. § ioi (2012) (defining "useful articles" as "having an intrinsic utilitarian function
that is not merely to portray the appearance of the article or to convey information").
2014] THE DEVIL WEARS TRADEMARK 997
works," wherein the features of the design "can be identified separately
from, and are capable of existing independently of, the utilitarian aspects
of the article," may be protected.' This distinction is termed the
doctrine of conceptual separability, which — in jurisdictions that recognize
the doctrine — allows for the protection of a design when the
design can be conceptually separated from the object in which it is
embodied.* Under this doctrine then, a textile print of a dress or a
unique flourish on the dress may be copyrightable, but the design of
the dress is not. However, the difficulty of proving conceptual separability
eliminates it as an effective venue for fashion design protection.^
]y[ore recently. Justice Breyer "dropped a puzzling clue"'° about design
copyright in his majority opinion in Kirtsaeng v. John Wiley &
Sons, Inc.,^^ hinting at a possible broadening of copyright doctrine to
include fashion design. In listing three paradigmatic imported goods
protected by copyright, the Court included: "a video game made in Japan,
a film made in Germany, or a dress (with a design copyright)
made in China."'^ Scholars have noted that the inclusion of a dress on
this list is "striking"!^ and may portend the beginnings of the adoption
of more liberal design copyright for fashion design, but it is still too
early to tell.'^ Until the Supreme Court has an opportunity to clarify
Justice Breyer's elusive pronouncement in Kirtsaeng, copyright law's
narrow and uncertain application render it a largely inoperative tool
for intellectual property protection for fashion.
Neither can the fashion industry rely on patent law for protection.
Patents — specifically design patents — protect "new, original, and ornamental
design[s] for an article of manufacture," and if granted, provide
fifteen years of protection.'^ Despite this promising language, there
are structural and procedural reasons why design patents are not an effective
means for protecting fashion and other short-lived new designs.
7 Id.
* Sec, e.g., Carol Barnhartlnc. v. Econ. Cover Corp., 773 F.2d 411, 414-18 (2d Cir. 1985).
9 See ROBERT C. LIND, COPYRIGHT LAW 40 (3d ed. 2006) (noting the split of authority regarding
the test of conceptual separability).
'0 C. Scott Hemphill & Jeannie Suk, Reaction, What "Design Copyright"?, 126 HARV. L. REV.
F 164, 164(2013).
" 133 S. Ct. 1351 (2013).
'2 Id. at 1360.
'3 Hemphill & Suk, supra note 10, at 164.
I* See id. at 165-66.
'^ 35 U.S.C. §§ 171, 173 (2006), amended by Patent Law Treaties Implementation Act of 2012,
Pub. L. No. 112-211, sec. 102, § 173, sec. 202, § 171, 126 Stat. 1527, 1532, 1535-36. The term for
a design patent was recently extended from fourteen to fifteen years. For an overview of the applicability
of intellectual property to fashion designs, see Oliver Herzfeld, Protecting Fashion
Designs, FORBES (Jan. 3, 2013, 9:14 AM), http://www.forbes.com/sites/oliverherzfeld/2013/01/03
/protecting-fashion-designs.
9 9 8 HARVARD LAW REVIEW [Vol. 127:995
First and foremost, a design patent, like any other patent, can only
protect an invention that is both novel'^ and nonobvious." Many, if
not most, fashion designs would fail the novelty requirement because
fashion designs are often derivative of one another'^ or of a designer's
previous works, rendering them unpatentable due to anticipation by
prior art. Nonobviousness — which requires that nothing came before
an invention that would have suggested to the creator how to make her
design''' — is an even more subjective requirement than novelty and
likely very difficult to apply in the fashion context. Second, because design
patents protect designs, they fail to protect features dictated solely
by function.2° This limitation, then, casts doubt upon whether a design
patent can ever cover features of clothing that must be present in order
for the article tofitthe human form.^' Third, patents are ineffective at
protecting fashion design because of the logistical impracticality of obtaining
them. The patent process is lengthy and costly and would often
exceed the marketable duration of any individual fashion item.^^ Plus,
since patenting requires publication of the design, patenting may even
aid copyists. Thus, unless the patent involves materials or technologies
that are highly innovative and require significant research and development
to create — such as those seen in the high-technology athletic
fabrics and footwear of Under Armour or Lululemon^^ — the patent is
likely not worth pursuing.
B. Failure to Effect Legislative Change
Stakeholders in the fashion industry have launched numerous efforts
to gain protection from Congress,^'' but Congress has not yielded.
Indeed, since 1914, over seventy bills intended either to protect designs
through copyright law or to create a design-specific protection system
16 See 35 U.S.C. § 102 (2006 & Supp. V 2011), amended by Patent Law Treaties Implementation
Act of 2012, Pub. L. No. 112-211, sec. 102, § iO2(d)(2), 126 Stat. 1527, 1531.
'^ See id. § 103.
18 See Brooke Olaussen, Design Patents: Fashion's Next Big Thing?, 4 INTELL. PROR BRIEF
62, 62 (2012).
19 See Graham v. John Deere Co., 383 U.S. i, 11 (1966).
20 See 35 U.S.C. § 171.
2' Susanna Monseau, European Design Rights: A Model for the Protection of All Designers
from Piracy, 48 A M . BUS. L.J. 27, 43-44 (2011).
22 See id. at 42; Herzfeld, supra note 15. Before issuance, a patent application must be reviewed
by the United States Patent and TVademark Office to determine if the product or design is
eligible for protection, a process that historically has taken about two years, though new procedures
have been put in place to reduce this period. See Monseau, supra note 21, at 42; Herzfeld,
supra note 15.
23 See Olaussen, supra note 18, at 62.
2'' See Meaghan McGurrin Ehrhard, Note, Protecting the Seasonal Arts: Fashion Design,
Copyright Law, and the Viability of the Innovative Design Protection 6- Piracy Prevention Act, 45
C O N N . L . R E V . 285,291 (2012).
2014] THE DEVIL WEARS TRADEMARK 999
have been introduced.2s All have failed.2« Congress has consistently
rejected proposed bills to protect industrial designs, and on the whole
it has seemed hostile to the idea of increasing protection. For example.
Congress explicitly deleted the proposed Title II from the Copyright
Act of 1976, a title that would have created "a new limited form of
copyright protection for 'original' designs which are clearly a part of a
useful article, regardless of whether such designs could stand by themselves,
separate from the article itself."2' Similarly telUng is the fact
that even after the United States acceded to the Berne Convention,2*
which required the protection of applied art,2' Congress did not create
a law to cover industrial design.-'°
Congress has refused to pass protective legislation primarily for
fear of restraining competition or promoting litigiousness. Congress
recognized "that to make such designs eligible for copyright would be
to create a 'new monopoly' having obvious and significant anticompetitive
effects."^* For example, if shapes fell within such protection, the
potential anticompetitive effects might include: first, monopolies over
certain utilitarian objects where function mandates a certain shape,
such as scissors or paper clips; second, monopolies over certain designs
where consumers sometimes demand or expect uniformity of shape,
such as a stove; and third, monopoHes over basic geometric shapes, of
which there are only a limited number.32 Furthermore, skeptics of
fashion protection legislation point out that such laws might ultimately
harm independent designers who do not have enough funds to effectively
initiate or defend infringement challenges in
25 Kevin V. Tu, Counterfeit Fashion: The Interplay Between Copyright and Trademark Law in
Original Fashion Designs and Designer Knockoffs, 18 TEX. INTELL. PROP. L.J. 419, 429 (2010).
26 Id.
2'' H.R. REP. N O . 94-1476, at 50 (1976); see also Safia A. Nurbhai, Note, Style Piracy Revisited,
10 J.L. & POL'Y 489, 501 (2002). Rejection of the title was based on the "fundamental objection,"
id., that the title "would create a new set of exclusive rights, the benefits of which did
not necessarily outweigh 'the disadvantage of removing such designs from free public use.'" Id.
(quoting H.R. REP NO. 94-1476, at 50).
28 Berne Convention for the Protection of Literary and Artistic Works, Sep. 9, 1886, S.
T R E A T Y D O C . N O . 99-27, 828 U.N.T.S. 221 [hereinafter Berne Convention].
29 See id. art. 2(1). However, the Convention notes that "it shall be a matter for legislation in
the [signatory] countries . . . to determine the extent of the application of their laws to works of
applied art and industrial designs and models, as well as the conditions under which such works,
designs and models shall be protected." Id. art. 2(7).
30 Monseau, supra note 21, at 48.
31 Esquire, Inc. v. Ringer, 591 F.2d 796, 801 (D.C. Cir. 1978) (footnote omitted) (quoting H.R.
REP. N O . 94-1476, at 50).
32 Id. at 801 n.15.
33 See, e.g., Katy Tasker, The Innovative Design Protection and Piracy Prevention Act: Litigation,
Uncertainty, and Economic Harm, PUB. KNOWLEDGE (July 15, 2011), http://publicknowledge
.org/blog/innovative-design-protection-and-piracy-preve.
IOOO HARVARD LAW REVIEW [Vol. 127:995
Most recently. Congress considered a new bill called the Innovative
Design Protection Act34 (IDPA). The bill was a proposed amendment
to the Copyright Act that would have provided for a three-year term
of protection for original elements or arrangements of fashion designs
that were the result of a designer's "own creative endeavor" and that
"provide[d] a unique, distinguishable, non-trivial and non-utilitarian
variation over prior designs."^^ Like its predecessors, however, the bill
failed to
III. THE EXPANDING REACH OF U.S. TRADEMARK LAW
A. The Fashion Industry's Increased Reliance on Trademark Law
This Part explains how the fashion industry has come to rely more
on trademark law for protection of its trademarks (and designs), and
how such reliance has led to the expansion of trademark doctrine. Part
IV of this Note will discuss some of the implications of this expansion.
At first blush, trademark law does not seem like the obvious choice
for protecting fashion intellectual property. Though trademark law is
often considered part of and taught alongside the broader intellectual
property scheme to which patent and copyright law also belong, it is
inherently quite different. Both patent and copyright are fundamentally
incentive-based systems. The creator invents something from
which the rest of society can benefit, and society rewards that inventor
with a limited-duration monopoly to monetize the invention. This reward
also serves as incentive for an inventor to invent. It is a tradeoff
that, at least theoretically, as a whole encourages innovation.
Trademark law is not based on this principle of a tradeoff between
society and an inventor. Instead, trademarks originated to protect a
product's source-identifier.3' Rights were focused on protecting producers
or merchants from illegitimate diversions of their trade rather
than on protecting consumers.-** It was not until the 1946 passage of
34 S. 3523, ii2th Cong. (2012).
35 Id. § 2(a)(2XB).
36 See S. 3S23 (112th): Innovative Design Protection Act of 2012, GOVTRACK.US, https://
www.govtrack.us/congress/bills/112/s3523 (last visited Nov. 24, 2013).
3' Jeanne C. Fromer, The Role of Creativity in Trademark Law, 86 NOTRE DAME L. REV.
1885, 1890-91 (2011). Trademarks became legitimized through two historical uses: first, merchants
(not craftsmen) would affix marks on their goods so that they would be able to identify and
retrieve their own goods after shipping, and second, guilds would often require a regulatory production
mark to be placed upon certain goods so that defective goods could be traced to their
originator and such individuals could be punished. Id.; see also Frank I. Schechter, The Rational
Basis of Trademark Protection, 40 HARV L. REV. 813, 814 (1927).
38 See Mark P. McKenna, The Normative Foundations of Trademark Law, 97 TRADEMARK
REP. 1126,1126 (2007).
2OI4] THE DEVIL WEARS TRADEMARK IOOI
the federal Lanham Act^^ that trademark law's purposes expanded beyond
source-identification. The Lanham Act defines a trademark as
"any word, name, symbol, or device, or any combination thereof" that
is used or intended to be used by a person "in commerce . . . to identify
and distinguish his or her goods."'*° The Lanham Act's two primary
goals are to protect producers from unfair competition and consumers
from deception.'*!
Even so, it may still not be clear why trademarks have become the
center of attention in infringement disputes between designers — after
all, trademarks prohibit copying of source-identifiers (that is, logos
such as the red Target bullseye), not designs. However, the fashion industry
has long realized that trademark law's nonconformity with the
general quid-pro-quo schemes of copyright and patent law can actually
work to its advantage.'*^ Recall that a trademark is permanent."*^ It
can endure indefinitely so long as the registrant continues to use it in
commerce.'*'* If a designer can confiate logo and design, then he can
conveniently obtain permanent, practically no-strings-attached rights
to the design. On top of this prospect, consider the fact that the speed
of the fashion cycle is many times faster than the speed of litigation: a
design will be in and out of the shops before the litigation has even
commenced.'*^ Designs are seasonal, but because a trademark can last
forever, it is worth the litigation expense.
Related to trademark is the doctrine of trade dress, which has been
another avenue of attack for design litigants. Trade dress is generally
understood to be the "total image and overall appearance" of a prod-
39 15 U.S.C. §§ io5i-ii4in (2012).
40 Id. § 1127.
41 Id. §§ 1058-59; S. R E P N O . 79-1333, at 3 (1946), reprinted in 1946 U.S.C.C.A.N. 1274,
1274. To establish a prima facie case of trademark infringement, a plaintiff must prove "(i) that it
has a protectible ownership interest in the mark; and (2) that the . . . use of the mark is likely to
cause consumer confusion" as to its source. Dep't of Parks & Recreation v. Bazaar Del Mundo
Inc., 448 F.3d 1118, 1124 (9th Cir. 2006). The Supreme Court has recognized that marks may be
classified in five categories of increasingly distinct marks: "(i) generic; (2) descriptive; (3) suggestive;
(4) arbitrary; or (5) fanciful." Two Pesos, Inc. v. Tkco Cabana, Inc., 505 U.S. 763, 768 (1992).
42 See Lauren Howard, An Uningenious Paradox: Intellectual Property Protections for Fashion
Designs, 32 COLUM. J.L. & ARTS 333, 336 (2009) ("TVademark is particularly important
to fashion labels, as it protects designers' most important asset: their brand."); Felix Salmon,
Susan Scafidi on Copyrighting Fashion, UPSTART Bus. J. (Sept. 19, 2007, 12:00 AM), http://
upstart.bizjournals.com/views/blogs/market-movers/2oo7/o9/19/susan-scafidi-on-copyrighting
-fashion.html ("Revenues and profits at the big fashion houses rely heavily on trademark protection
— all those little 'CC,' 'GG,' and 'LV initiab decorating handbags and other must-have
items.").
« 15 U.S.C. §§ 1058-1059-
44 Id. § iO58(a), (b)(i)(A).
45 See Interview with Imogen Wiseman, Partner, FJ Cleveland LLP (Jan. 22, 2013) (notes on
file with the Harvard Law School Library).
1002 HARVARD LAW REVIEW [Vol. 127:995
, including "features such as size, shape, color or color combinations,
texture, graphics, or even particular sales techniques."^^ Thus,
in addition to asserting rights over brand names and insignia, fashion
designers can in certain circumstances assert that the actual shape of
an article has become, through association in the customer's mind, a
trade dress — take, for example, the glass Coca-Cola bottle. Designers
may resort to trade dress to sue the manufacturer or distributor of a
knockoff whose design is so similar to an original design that it causes
confusion about the origin of the knockoff.
This standard has traditionally been very difficult to meet, but has
become easier in the past decade. The Supreme Court in Wal-Mart
Stores, Inc. v. Samara Bros.*^ held that to prevail on a trade dress infringement
claim, the plaintiff must prove that its trade dress is distinctive,
or in other words, show that the trade dress is either "inherently
distinctive"'*« or has acquired distinctiveness through "secondary
meaning. "50 Where trade dress infringement has been seen as a possibility
by courts, it has been in the rare case of high-profile, wellestabhshed
designs, such as certain Adidas-brand shoes.^' Therefore,
trade dress has traditionally not been a sure route by which designers —
especially new designers — may attain protection for their designs.
B. How Trademark Law Has Expanded
The economic benefits of creating a design that heavily incorporates
the use of a trademark (termed "brand innovation"" by some
scholars) are obvious. A designer may indirectly obtain protection for
a design so long as the design incorporates the use of a protectable
trademark. As Professor Susan Scafidi notes: "[Y]ou didn't think that
all of those repeated logos were just aesthetic choices, did you?""
The cases presented in this section do not always represent a court
victory for fashion design, but the language of the decisions showcases
a pattern of courts' subtle and increased willingness to expand the hoto
Blue Bell Bio-Med. v. Cin-Bad, Inc., 864 F.2d 1253, 1256 (5th Cir. 1989).
t ' Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 764 n.i (1992) (quoting John H. Harland
Co. V. Clarke Checks, Inc., 711 F.2d 966, 980 (nth Cir. 1983)) (internal quotation mark omitted).
•** 529 U.S. 205 (2000).
« Id. at 210.
so /d. at 211.
S' See, e.g., Adidas-Salomon AG v. Target Corp., 228 F. Supp. 2d 1192 (D. Or. 2002).
52 See Interview with Noam Shemtov, Senior Lecturer in Intellectual Prop, and Tech. Law,
Queen Mary, Univ. of London, Sch. of Law (Jan. 23, 2013) (notes on file with the Harvard Law
School Library).
53 Salmon, supra note 42 (quoting Susan Scafidi); jee also Tu, supra note 25, at 432 ("In light of
the protection granted to trademarks, a fashion designer that incorporates a registered trademark
into a fashion design may obtain indirect protection of the design itself from those who misappropriate
the mark for use on counterfeit goods.").
2014] THE DEVIL WEARS TRADEMARK 1003
rizons of trademark doctrine in a way that allows quasi-designs to be
protected as trademarks.
I. Louis Vuitton Malletier v. Dooney & Bourke, Inc.- Beginnings of
Protecting Logos that Are Arguably Designs. — Louis Vuitton is a
French high-fashion firm that designs handbags and is well known for
its Toile Monogram that consists of entwined "LV" initials set against
one of three motifs.^'* Vuitton registered this design pattern and the
individual unique shapes as trademarks with the U.S. Patent and
Trademark Office (USPTO).^^ In October 2002, Vuitton updated this
Toile Monogram by printing the entwined "LV" initials in thirty-three
bright colors on either a white or black background.^* This design —
arguably a quasi-design — Vuitton called the Louis Vuitton Monogram
Multicolore,^^ but it was not a registered trademark.^* By 2004,
Vuitton had sold 70,000 bags and accessories with the Multicolore pattern
in the United States and generated over forty million dollars in
sales.^' In July 2003, Dooney & Bourke, an American fashion firm
known for its handbags consisting of the interlocking initials "DB" in a
repeating pattern, began manufacturing and selling its "It-Bag" line of
bags, which eventually featured the entwined "DB" initials printed in
contrasting colors on a variety of colored backgrounds.*°
Vuitton sued Dooney & Bourke in the U.S. District Court for the
Southern District of New York shortly after Dooney & Bourke introduced
its "It-Bag" collection, claiming "trademark infringement, unfair
competition and false designation, and trademark dilution, under federal
and New York state law."^' Vuitton specifically claimed trademark
infringement because it knew other forms of intellectual property,
most notably trade dress, would be inadequate to protect its
Multicolore pattern.^^ In fact, it filed the lawsuit with the hope that
the court might consider expanding the scope of trademark protection
in a direction that would safeguard design (or, at least, designs that
were incorporated into a trademark).''^
Vuitton, on the surface, lost. The Second Circuit did not engage
with Vuitton on its reasons for filing this lawsuit — that is, to counter
the phenomenon of design piracy in the fashion industry. By its language
the court seemed opposed to expanding trademark doctrine to
^^ Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 112 (2d Cir. 2006).
55 Id.
56 Id.
57 Id.
58 Id. at 115.
59 Id. at 112-13.
60 Id. at 113.
61 Id.
62 See id. at 115-16.
63 See id.
1004 HARVARD LAW REVIEW [Vol. 127:995
give refuge to fashion.«-* The court merely remanded the case back to
the district court, with instructions for how the district court should
conduct the likelihood-of-confusion analysis necessary to evaluate "the
precise trademark claimed" by Vuitton.«^
But the industry scored at least a small victory. A year before the
Louis Vuitton Malletier v. Dooney & Bourke, Inc.^^ case, the Second
Circuit had dealt with a nearly identical case, where Vuitton had sued
Burlington Coat Factory for trademark infringement.«' There the Second
Circuit approached the case with apparently the same degree of
doctrinal rigidity as it did in the later Dooney & Bourke case: it chose to
focus on the district court's assessment of consumers' likelihood of confusion
rather than taking the opportunity to analyze the proper scope of
trademark doctrine.«*
However, a deeper analysis reveals that more crucial than the
court's similar focus on the adequacy of likelihood-of-confusion analyses
are its dicta in both cases. In neither case did the court pronounce
Vuitton's Multicolore trademark to be invalid. Far from it. In Louis
Vuitton Malletier v. Burlington Coat Factory Warehouse Corp.,'''^ the
court touted the prominence of Vuitton's Multicolore design in the
marketplace,'0 almost as if tacitly agreeing that, if challenged, the
Multicolore design would hold up as a mark. Then in Dooney &
Bourke, the court itself made the leap it hinted at in Burlington Coat
Factory: with colorful and powerful language, it pronounced Vuitton's
Multicolore mark to be a valid trademark:
Notably, plaintiff does not claim a separate trademark in the colors
alone. . . .
Instead, plaintiff maintains that the polychromatic display is an "essential
part" of its trademarked design, and that other handbag manufacturers
are free to create their own brightly-colored handbags so long
as they do not do so in a manner confusingly similar to the Vuitton combination
of color and defined design. With regard to its own trademark,
[Vuitton] asserts that it "cannot dissect the color from the pattern. . . .
[T]he strength of the mark here is . . . the synergy between the colors and
the [traditional] Louis Vuitton trademarks."
6'' See id. at ii6-i8; Ashley E. Hofmeister, Note, Louis Vuitton Malletier v. Dooney & Bourke,
Inc.; Resisting Expansion of Trademark Protection in the Fashion Industry, 3 J. BUS. & TECH. L.
187, 203-04 (2008).
65 Dooney & Bourke, 454 F.3d at 119-20.
66 454 F 3 d 108 (2d Cir. 2006).
6' Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 536 (2d
Cir. 2005).
68 See id. at 539.
'0 See id. at 535.
2014] THE DEVIL WEARS TRADEMARK
Vuitton does not seek to protect the overall look of its handbags, that
is, its trade dress, but rather the narrower trademark it has established in
its colored pattern. . . .
Vuitton's Multicolore mark, consisting of styled shapes and letters —
the traditional Toile mark combined with the 33 Murakami colors — is
original in the handbag market and inherently distinctive.'1
Despite the court's declining to address directly Vuitton's design piracy
concerns, the court's statement (while not binding on future cases)
ameliorated those concerns by perpetuating a conception of trademark
doctrine that would allow or even encourage broad protection of this
type of design pattern. This Multicolore pattern is a noteworthy departure
from Vuitton's original mono-color trademark, especially when
one considers just how basic such a pattern actually is. By approving
of Vuitton's Multicolore mark, the court suggested that patterns as
basic as printed designer's initials in various colors on a black or white
background may be off-limits in the future to other designers.
2. Christian Louboutin S.A. v. Yves Saint Laurent America Holding,
Inc.; Expansion of Trademark Protection to Single Colors. — A
few years after the Dooney & Bourke case, the Second Circuit faced a
similarly high-profile trademark infringement dispute between two
well-known shoe designers, Christian Louboutin and Yves Saint Laurent
(YSL)." In this case, the court expanded trademark doctrine by a degree
that the Dooney & Bourke court stopped short of — the Second
Circuit pronounced that a single color on a fashion item could constitute
a trademark.
In 1992, Louboutin, a French designer, put bright lacquered red on
the outsoles of its high heels and in January 2008, obtained a trademark
(the "Red Sole Mark"") from the USPTO for such a red sole.'4
This trademark would also be classified as a quasi-design. YSL, an
American competitor, made several models of shoes following a
"'monochrome' design concept," meaning that these shoes were one
color all over, including the outsole." The shoes came in all-yellow.
'1 Dooney & Bourke, 454 F.3d at 115-16 (second and third alterations in original). Vuitton
ultimately lost the case on remand because the district court found that Dooney & Bourke's conduct
failed to qualify as willfully deceitful and because Vuitton could not prove actual damages
from brand dilution. See Louis Vuitton Malletier v. Dooney & Bourke, Inc., 500 F. Supp. 2d 276,
282-83 (S.D.N.Y. 2007).
'2 Christian Louboutin S.A. v. Yves Saint Laurent Am. Holding, Inc., 696 F.3d 206 (2d Cir. 2012).
'3 Id. at 213.
'4 Brief for Plaindffs-Counter-Defendants-Appellants and Special Appendix at 3, Louboutin,
696 F.3d 206 (No. ii-3303-cv). Louboutin has stated that he chose the color red to inject "energy"
into his lines of shoes and because red is "'engaging, flirtatious, memorable and the color of passion,'
as well as 'sexy.'" Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp.
2d 445, 447 (S.D.N.Y. 2011) (quoting Declaration of Alexis Mourot at 3-4).
75 Brief for Defendants-Counter-Claimants-Appellees at i, Louboutin, 696 F.3d 206 (No. 11-
3303-cv).
IOOÓ HARVARD LAW REVIEW [Vol. 127:995
all-green, all-red, all-blue, and all-purple.'^ YSL offered these monochrome
shoes in four shades of matte red: "rouge," "fiame," "fragola/
rosa," and "lobster.""
In the ensuing infringement case, the district court held that
Louboutin's Red Sole Mark did not merit protection. It reasoned that,
uniquely in the fashion industry, color has aesthetic and expressive
purposes.'^ Because the fashion industry "is dependent on colors,""
the court found that artists' use of the full palette of colors should be
unconstrained; otherwise, allowing trademarking of a single color
would limit artistic freedom and promote unfair competition.8°
On appeal, however, the Second Circuit concluded that a single
color — more specifically, a quasi-design premised primarily on the
placement of a single color — could serve as a trademark in the fashion
industry.*! It found that to hold otherwise would have been inconsistent
with the Supreme Court's ruling in Qualitex Co. v. Jacobson
Products Co.,^^ a case where the gold-green color on dry-cleaning press
pads was held as a valid trademark.^^ The Second Circuit found that
Louboutin's Red Sole Mark had acquired "secondary meaning," but
with one modification: the red outsole must contrast with the remainder
of the shoe in order for the mark to be valid.*'* And finally, the
court concluded that because YSL's shoes utilized a monochrome design
(that is, there was no contrast between the red outsole and the
upper part of the shoe), they did not infringe Louboutin's Red Sole
Mark as modified.*^
Comparing the two Louis Vuitton cases with Louboutin, it is clear
that the Second Circuit has widened its stance on the scope of trademark
law. In Dooney & Bourke, the court asserted that one of the
reasons Vuitton's Multicolore mark was a valid trademark was that
Vuitton did "not claim a separate trademark in the colors alone."*^
Both Vuitton's multicolor logo and Louboutin's red sole were arguably
as much design choices as ways to help consumers identify the source of
a product. Thus, Louboutin can be read as allowing designers to protect
a design component under trademark law — something they could
'6 Id. at 2.
" Id. at 10. Only the all-red shoes were at issue in the case. Id.
'8 See Louboutin, 778 F. Supp. 2d at 453-54.
" /d. at 454.
80 See id. The court analogized this case to Picasso's laying claim to the color blue as part of
his hypothetically trademarked Blue Period and then objecting to Monet's use of the same color.
Id. at 451.
81 Louboutin, 696 F.3d at 212.
82 514 U.S. 159 (1995); see Louboutin, 696 F.3d at 212.
83 Qualitex, 514 U.S. at 166.
84 Louboutin, 696 F.3d at 228.
85 Id.
86 Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006).
2014] THE DEVIL WEARS TRADEMARK IOO7
not have done in copyright law under the doctrine of conceptual separability.
The claimed trademark — the red sole — actually embodies
the design of the shoe, and this design cannot be separated from the
utility of the product, for if the red sole were separated conceptually
from the bottom of the shoe, then it would simply be a color in space,
which would not qualify as a "design." This feature of the shoe differs
from, for example, a textile print design on a dress, which would still
qualify as a design even if it were disembodied from the dress.
Even more remarkable in comparison is the outcome of a case
Louboutin had concurrently filed against Zara France for infringement
of the same red sole.*' The French Court of Cassation (France's highest
court of civil and criminal appeals) actually cancelled Louboutin's
mark for lack of "distinctiveness," finding that "the reputation of
Louboutin's . . . red sole shoes related . . . to a concept, rather than to
the trademark."** To wit, a U.S. court's conception of what designs
are protectable actually exceeded that of a French court, despite
France being generally known for having one of the most robust systems
of fashion design protection.*'
3. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co.; Ninth
Circuit Ignores Precedent to Expand Trademark Protectability. — In
2011, Levi Strauss sued Abercrombie & Fitch for infringing and diluting
the federally registered trademark on Levi Strauss's "Arcuate" logo
design, which appears on the back pockets of its denim jeans.'° The
Arcuate logo design consists of two connected arches that meet in
the center of the pocket." Levi Strauss created blue jeans and has
been selling them since the 1870s, and "[s]ales of garments bearing
the Arcuate mark have accounted for more than ninety-five percent of
Levi Strauss's revenue over the past thirty years, totaling roughly fifty
billion dollars."^2 In 2006, Abercrombie added a design to the back
pockets of its jeans that, according to Levi Strauss, "incorporate[d] the
distinctive arcing elements of the Arcuate trademark."'^ According to
the court, Abercrombie's new design was similar, though not identical,
to the Arcuate design: it "consist[ed] of two less-pronounced arch-
8' Cour de cassation [Cass.] [supreme court for judicial matters] com.. May 30, 2012 (Fr.),
http://www.legifrance.gouv.fr/affichJuriJudi.doPoldActionsrech JuriJudi&idTexte=JURITEXToo
00259635 95&fastReqId=65483972 6&fastPos= I.
88 Supreme Court Invalidates Louboutin's Red-Sole Trademark, INT'L L. OFF. (Nov. 12,
2012), http://www.internationallawoffice.com/newsletters/detail.aspx?g=e7f9eei6-36df-44bi-8io8
8' See Shelley C. Sackel, Art Is in the Eye of the Beholder: A Recommendation for Tailoring
Design Piracy Legislation to Protect Fashion Design and the Public Domain, 35 AIPLA Q.J. 473,
484 (2007).
'0 Levi Strauss & Co. v. Abercrombie & Fitch Ti-ading Co., 633 F.3d 1158, 1159 (9th Cir 2011).
9' Id.
92 Id.
93 Id. (quoting Brief of Appellant at 4, LeuJ Strauss, 633 F.3d 1158 (No. 09-16322)).
I008 HARVARD LAW REVIEW [Vol. 127:995
es . . . connected by a 'dipsy doodle,' which resembles the mathematical
sign for infinity," and the design "sits lower on the [Abercrombie
jean] pocket than Levi Strauss's Arcuate design."'*
In analyzing Levi Strauss's trademark dilution claim, the district
court considered whether the two marks were "identical or nearly
identical."'5 Though in previous trademark dilution cases the Ninth
Circuit had approved of such a stringent similarity standard,'*" here it
disapproved, instead relaxing the stringency of the similarity requirement.''
Its reasoning was that the cases in which it had used an "identical
or nearly identical" standard predated or were otherwise unaffected
by the passage of the Trademark Dilution Revision Act of
2006'^ (TDRA), and that this standard "did not survive Congress's enactment
of the TDRA."" While the Ninth Circuit could have read the
TDRA in a way that would have made its intent more consistent with
the "identical or nearly identical" approach, which the court had already
set in its own precedent, as well as more consistent with a similarly
strict standard embraced by other circuits pre-TDRA,'°° it instead
chose to read the statute in a way that departed from and
loosened the standard previously applied. The court purported to interpret
the statute afresh, looking only to the "plain language" of the
Act to conclude that a plaintiff need not show that a challenged mark
is "identical, nearly identical, or [even] substantially similar" to the
plaintiff's established trademark in order to obtain relief.'°' Instead,
all that a plaintiff must show is that the challenged mark is "likely to
9'* Id.
95 Id. a t 1161 (emphasis omitted) (quoting Levi Strauss & Co. v. Abercrombie & Fitch TVading
Co., No. C 07-03752 JSW, 2009 W L 1082175, at *7 (N.D. Cal. Apr. 22, 2009) (emphasis added))
(internal quotation marks omitted).
96 See, e.g.. Jada Toys, Inc. v. Mattel, Inc., 518 F.3d 628, 634 (9th Cir. 2008); Perfumebay.com
Inc. V. eBay Inc., 506 F.3d 1165, 1180 (9th Cir. 2007); Thane Int'l, Inc. v. Ti-ek Bicycle Corp., 305
F.3d 894, 905 (9th Cir. 2002); Playboy Enters., Inc. v. Welles, 279 F.3d 796, 806 (9th Cir. 2002).
9' Levi Strauss, 633 F.3d at 1172.
98 Pub. L. No. 109-312, 120 Stat. 1730 (codified as amended in scattered sections of 15 U.S.C).
Congress passed the TDRA to overturn the Supreme Court decision in Moseley v. V Secret Catalogue,
Inc., 537 U.S. 418 (2003), which had required a showing of actual trademark dilution, rather
than a likelihood of dilution. See Robert G. Bone, A Skeptical View of the Trademark Dilution Revision
Act, II I N T E L L . PROP. L . B U L L . 187, 187 (2007). The TDRA resolves other issues involving
fame, blurring, and tarnishment that arose in cases decided under the original Federal IVademark
Dilution Act of 1995, Pub. L. No. 104-98, 109 Stat. 985 (codified as amended in scattered sections of
the U.S. Code). For example, marks that are recognized only in limited geographic areas or niche
markets do not qualify for dilution protection under the TDRA. Dale M. Cendali & Bonnie L.
Schriefer, The Trademark Dilution Revision Act of 2006: A Welcome — and Needed — Change, 105
M I C H . L . R E V . F I R S T I M P R E S S I O N S 109 (2009), http://www.michiganlawreview.org/articles/the
-trademark-dilution-revision-act-of-2006-a-welcome-and-needed-change.
99 Levi Strauss, 633 F.3d at 1159.
100 /d. at 1165.
'01 Id. at 1172; .see id. at 1171-73.
2014] THE DEVIL WEARS TRADEMARK IOO9
impair the distinctiveness" of the plaintiff's established mark.*°2 Thus,
the Ninth Circuit reversed the district court's judgment with respect to
Levi's TDRA claims, announcing that a "less-demanding standard
could have tipped the balance in favor of Levi Strauss. "*°^
Each of the cases above involves a different aspect of trademark law,
not to mention a different sector of the design world, but taken together,
they show that trademark doctrine is expanding through the proactive,
tenacious, and resourceful litigation strategies of plaintiffs as well as
through the apparently growing trend of courts to side with them.
Whether these judges realize it or not, they have signaled an increasing
willingness to grant protections to quasi-designs — protections that these
plaintiffs would not have been able to secure under copyright or patent
law, and that give designers certain rights against design copyists. This
trend can be detected in courts' application of trade dress law as well.
C. Protection of Quasi-Designs Through Trade Dress
Even where counterfeiters copy only the essence of a design instead
of imitating it entirely, designers may seek redress in trade dress and
secondary meaning pursuant to section 43(a) of the Lanham Act.*°'*
/. Wal-Mart Stores, Inc. v. Samara Bros.; Supreme Court Extends
Trade Dress Protection to Clothing Designs. — Wal-Mart Stores, Inc.
V. Samara Bros, was the first case in which the Supreme Court
acknowledged that unregistered trade dress could extend to clothing
designs.*°' Samara was a designer of children's clothing, and it sued
Wal-Mart — which had requested that its manufacturers produce
clothing based on pictures of Samara's designs — for producing and
selling knockoffs. *°« The Court drew a line between "productpackaging
trade dress," which it had formerly deemed to be inherently
distinctive (because packaging "normally is taken by the consumer to
indicate origin") and "product-design trade dress," which would require
a showing of secondary meaning in order to be considered an
indicator of origin. *°' Recognizing that its ruling would create "some
hard cases at the margin," it advised courts to err on the side of caution
and to classify ambiguous trade dress as product design so as
to require a showing of secondary meaning. *°* However, in spite of
this cautionary language, the Court expanded trade dress doctrine
significantly — from covering only product packaging to covering
*02 Id. at 1172.
*03 Id. at 1174.
104 15 U.S.C. §1125(2012).
105 529 U.S. 205, 207 (2000).
106 Id. at 2O7-K38.
10' Id. at 215 (emphasis omitted).
*08 Id.
IOIO HARVARD LAW REVIEW [Vol. 127:995
product design — thereby bringing fashion design within its ambit of
protection.
2. Adidas-Salomon AG v. Target Corp. and Hermès International
V. Steven Stolman, Ltd..- Trade Dress May Protect Aesthetic Design
Choices. — Adidas-Salomon AG v. Target Corp.,^°'^ a trade dress dispute
over the design of footwear, demonstrates how a designer may use trade
dress to protect aesthetic design choices, so long as he successfully
shows that the design has acquired secondary meaning. Adidas claimed
its shoes comprised the following design elements that were distinctive
and thus source-identifiers: (i) three stripes on the side of the shoe; (2) a
rubber "shell toe"; (3) a particularly flat sole; and (4) a portion on the
outer back heel section including a design. 11° Target, the defendant,
sold similar-looking athletic footwear bearing four stripes."' Citing
Wal-Mart Stores, Adidas argued that this design constituted "product
packaging,"! 12 whereas Target argued it was a "product design."ii3 The
court classified the pattern as a "product design" but still found that the
pattern had acquired secondary meaning,ii4 and that Target's shoes
posed a likely risk of confusion for consumers."^
Not long after these apparel- and footwear-design cases, handbag
designers also sought protection based on trade dress. Hermès, an international
maker of luxury goods, sought redress for trade dress infringement
related to the design of its famous $5000 Birkin bags in
Hermès International v. Steven Stolman, Ltd. n'' According to
Hermès's complaint, Stolman, the defendant, had begun selling a bag
called the "Jelly Kelly," which looked very similar to the Hermès
Birkin bag."'' There were differences, however: The Hermès bags
were made either of dyed calf leather or Amazonia rubber (an environmentally
friendly rubber found only in the Amazon),n* whereas
Stolman's versions, which cost about $145 each, were made out of
cheaper rubber. "^ The Jelly Kelly bags were also different from the
Birkin bags in that the keyhole cutouts on the flaps of the Jelly Kelly
were larger than those of the Birkin, the straps were longer, and the
classic locket dangling from the Birkin's horizontal strap was ab-
109 228 F. Supp. 2d. 1192 (D. Or. 2002).
110 /d. at 1194.
111 W. at 1196.
112 Id. at 1207. •
113 Id. at 1206.
114 Id. at 1207-09.
115 Id. at 1211-13.
116 Complaint, Hermès Int'l v. Steven Stolman, Ltd., No. CV 03 3722 (E.D.N.Y. July 30, 2003),
2003 WL 23883672; see id. at 2, 4, 2003 WL 23883672, at *2, *4.
11' Id. at 8, 2003 WL 23883672, at *8.
118 Id. at 5, 2003 WL 23883672, at *5.
11' Id. at 8-9, 2003 WL 23883672, at »8-9.
2014] THE DEVIL WEARS TRADEMARK IOI I
° Hermès claimed that the design of the Birkin bags, "specifically
[their] unique closure, lock, key and shape," was "strongly associated
with Hermès."*2i Despite the Jelly Kelly's differences in these exact
features, Hermès "obtained a permanent injunction against the sale of
[Stolman's] bags, along with an undisclosed settlement."'^^
Considering collectively the above cases on trademark and trade
dress, it is important to note that all of the disputed marks were marks
whose designs overlapped with the marks' source-identifying functions.
The courts' piecemeal expansion of trademark doctrine to include
protection of clesign, however, may ultimately hurt the industry
that spurred such change.
IV. IMPLICATIONS OF TRADEMARK LAW'S
EXPANDED PROTECTIVE REACH
Protecting fashion design through trademark introduces a complex
weave of normative, economic, and legal considerations. Three key
consequences include (i) stifiing fashion design innovation, (2) creating
an imbalance in protection that privileges incumbent fashion houses,
(3) contributing to a decisive lack of clarity in trademark doctrine as
applied to fashion, and (4) perpetuating a counterproductive lack of
uniformity between the United States' and other countries' approaches
to protecting intellectual property.
First, trademark law's increased protection of quasi-designs discourages
artistic innovation in design, instead perversely incentivizing
"logo-fication." Designers trying to secure protection for their goods
will opt to generate more logos (and more ways to display them) instead
of creating new designs. For example, a designer might place
an existing logo on a different backdrop or produce iterations of preexisting
logos so that the brand remains recognizable. Even Giorgio
Armani, who had always been skeptical of using monograms as an exterior
decorative element, acceded to the use of an eagle logo for
Emporio Armani to deter copyists.*" Thus, logo-fication may result in
further proliferation of handbags with prominent identifiers and fewer
types of uniquely tailored clothing.1^4
Indeed trademarks, which can last forever, are antithetical to the
credo of fashion, which is based on temporality. The faster the old dies,
the more quickly it is replaced by the new, and the more revenue there is
to be made. As Coco Chanel famously said: "[F]ashion should slip out of
120 Ginia Bellafante, A "Satire" of a Classic Fails to Amuse the August House of Hermes, N.Y.
T I M E S , Aug. 12, 2003, at B8.
121 Complaint, supra note i i 6 , at 4, 2003 W L 23883672, at *4.
122 TXi, .sa^ra note 25, at 438.
123 RENATA MOLHO, BEING ARMANI 92 (2007).
124 See id.
IOI2 HARVARD LAW REVIEW [Vol. 127:995
your hands. The very idea of protecting the seasonal arts is childish.
One should not bother to protect that which dies the minute it was
born."'2s Protecting quasi-designs is tantamount to artificial protectionism,
stripping fashion designers of the incentive to compete continually
by overturning the old with the new. It also encourages such designers
to focus first on generating recognizable logos as opposed to experimenting
with creative designs or ensuring the quality of their products.
Moreover, the doctrinal expansion of trademark effectively awards a
permanent monopoly to creators of trademarked quasi-designs. But the
recipients of such monopolies, unlike in patent and copyright law, give
nothing back to society in return. Patents expire after twenty years, and
copyrights expire seventy years after the death of the creator. The protected
creations thereafter fall into the public domain. But because
trademark rights are permanent, the owners of trademarked quasidesigns
will never have to contribute to society's box of creative tools.
Furthermore, and ironically, a designer's logo-centric approach may
actually come back to haunt the brand. The more recognizable the
logo (and hence, the stronger the protection it receives), the easier it is
to copy. Status-crazed people in recent years have begun using such
logos in the most unhkely places, including in tattoos and on garbage
bags, assault rifles, and toilet seats.'^"^ Many have begun to mock
and protest such rampant and indiscriminate uses of logos.'^^ Louis
Vuitton has felt the backlash of its logo-focused approach: at Louis
Vuitton's February 2013 fashion show in Paris, the fashion house's
most famous logos — the Monogram and Damier canvases — curiously
made no appearance.'^* Notably, the company had reported two
consecutive quarters of its slowest revenue growth since 2009.'^'^ As a
result, the company's chairman and chief executive, Bernard Arnault,
indicated that the fashion house would shift its strategy, intending to
"open fewer stores, focus on more luxurious materials and reduce the
visibility of its monogrammed products."'^°
'2S Lynsey Blackmon, Comment, The Devil Wears Prado: A Look at the Design Piracy Prohibition
Act and the Extension of Copyright Protection to the World of Fashion, 35 PEPP. L. REV.
107, 112 (2007) (quoting Coco Chanel) (internal quotation marks omitted).
'26 Angela Meiquan Wang, J5 Things That Shouldn't Be Louis Vuitton-Monogrammed,
B U Z Z F E E D (NOV. 9, 2012, 9:24 PM), http://www.buzzfeed.com/angelameiquan/35-things-that
-shouldnt-be-louis-vuitton-monogram-7ofn.
'2' See, e.g., id. ("The bags are already enough. Please, no more.").
'28 Suleman Anaya, Has Logo Fatigue Reached a Tipping Point?, BUS. FASHION (Mar. 11,
2013), http://www.businessoffashion.com/2013/03/has-logo-fatigue-reached-a-tipping-point.html
("[W]hat does it mean when the world's largest luxury brand shifts its focus away from the very
trademarks on which its success has been built?").
'29 Id.
'30 Id. ("Of course it would be easier for Louis Vuitton to boost its revenue; all it would take
would be to launch ten new products with the monogram product, but down the road it's not a
good strategy." (quoting Bernard Arnault) (internal quotation marks omitted)).
2014] THE DEVIL WEARS TRADEMARK IO13
Second, trademark's protection of design logos favors incumbent
players to the detriment of emergent designers. Whether protecting
product designs or brand names from customer confusion or dilution by
similar marks, the consistent requirement in all the cases discussed
above was that a trademark or design had obtained significant recognition
of its uniqueness. Thus, trademark protection tends to be stronger
for well-known designers with famous brand names. This type of reputational
protection provided by trademark law may encourage design
decisions that would strengthen protection, such as the prominent use of
visible trademarks on merchandise.'3' The focus on the uses of logos
serves to reinforce the incumbency of the big fashion houses whose logos
are most recognizable.'^^ The more easily recognizable the logo is,
the stronger the protection, and thus the harder it is for emerging designers
to establish their brands. This bias in favor of incumbent players is
tantamount to suppressing competition, which directly subverts one of
the key goals of the Lanham Act.
Third, while the cases above may showcase designers' ability, in
certain cases, to circumvent the strictures of the current intellectual
property regime, court-initiated protection of quasi-designs does not
lead to comprehensive, long-term protection upon which designers
may rely. Most of the cases discussed in Part III resulted in handcrafted,
one-off decisions that gave little guidance to future courts on
how to apply the doctrine and little predictability for future designers
and potential copyists on where courts have actually drawn the line.
Take, for example, Louboutin. Both sides in that case thought they
had won'3^: Louboutin retained the exclusive right to use the color red
on the bottom of its shoes whenever the outer portion of the shoe was
any color besides red, and YSL's all-red shoes were found not to have
infringed Louboutin's trademark. But this holding did not clarify, for
example, the soundness of the lower court's application of the "aesthetic
functionality" doctrine.'^^^ And because of this ambiguity, a fashion
house like Tiffany's is unfortunately left in the dark as to whether its
131 See Salmon, supra note 42.
132 See Susan Scafidi, Intellectual Property and Fashion Design, in i INTELLECTUAL
PROPERTY AND INFORMATION WEALTH 115, 121-23 (Peter K. Yu ed., 2007) (describing the
interplay of different forms of intellectual property protection for fashion designers).
133 See Hannah Elliott, Both Sides Claim Victory in YSL v. Louboutin Shoe Case, FORBES
(Sept. 5, 2012, 5:31 PM), http://www.forbes.com/sites/hannahelliott/2012/09/05/both-sides-claim
-victory-in-ysl-v-louboutin-shoe-case.
13'' Aesthetic functionality concerns whether the purely aesthetic aspects of a product, such as
color, might nonetheless affect utility or cost. Claire Guehenno, Color War: The Louboutin Decision
and Single-Color Marks in the Fashion Industry, 4 HARV. J. SPORTS & ENT. L. 225, 231
(2013). T h e color of medicine capsules is an example of aesthetic functionality. See Inwood
Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.io (1982).
I0I4 HARVARD LAW REVIEW [Vol. 127:995
robin's egg-blue design — given that it is a single color — can hold up
in court as a valid trademark.
Finally, when considered in an international context, such decisions
worsen the current state of international disparity in intellectual property
protection regimes. The consequences of America's independent,
piecemeal protection of fashion design have become evident as American
fashion designs have gained greater global appeal. *3^ As the
Council of Fashion Designers of America (CFDA) reported to the
United States Trade Representative:
"[Fjashion design has matured to the point where U.S. original creations
are increasingly being copied abroad, and we therefore have an interest in
ensuring continued reciprocal protection for these original works." . . .
"European designers and their trade associations are becoming increasingly
dissatisfied because, even though Europe protects U.S. designs, the U.S.
does not adequately protect European designs."*^«
For designers whose products enjoy international demand, it will be
difficult to protect their designs simultaneously in America's trademarkbased
regime and in Europe's copyright-based regime. To illustrate: in
Société Yves Saint Laurent Couture S.A. v. Société Louis Dreyfus Retail
Management 5.^.,*^' YSL sued Ralph Lauren under French copyright
law in a case concerning Ralph Lauren's $1000 imitation of a YSL
$15,000 tuxedo dress.*38 A French court found that Ralph Lauren had
copied YSL's dress and fined the American designer $383,000.*^' While
YSL recovered for Ralph Lauren's sale of the knock-offs in France, it
could not have done so for the sale of the same articles in the United
States. *'*° That case was decided in 1994, before the wave of trademark
expansion that occurred in the 2000s in the United States.
If YSL were to bring the same case today in both countries, it
would perhaps have filed previously for trademark or trade dress pro-
135 Miller, supra note 5, at 156.
136 Id. (emphasis omitted) (quoting Email from Peter Arnold, Exec. Dir., Council of Fashion
Designers of Am., to Mark Mowrey, Deputy Assistant U.S. Trade Representative for Eur. and the
Mediterranean (Dec. 17, 2004), available at http://www.ustr.gov/archive/assets/World_Regions
/Europe_Middle_East/Transatlantic_Dialogue/Public_Comments/asset_upload_file63 7_7044.pdf).
Some have argued that the Berne Convention, to which the United States is a signatory, actually
mandates copyright protection for fashion design. See id. at 147. The preamble to tbe Berne
Convention provides that signatories are "equally animated by the desire to protect, in as effective
and uniform a manner as possible, the rights of authors in their literary and artistic works."
Berne Convention, supra note 28, pmbl. To the extent that U.S. courts have offered design protection
via trademark expansion, their decisions may be considered ad hoc, partial fulfillment of
the United States' treaty commitments.
*3'' Tribunal de Commerce [Trib. Comm.] [commercial court] Paris, May 18, 1994 (Fr.), translated
in 1994 E U R O P E A N COMMERCIAL CASES [E.C.C.] 512.
*38 Julie P. Tsai, Comment, Fashioning Protection: A Note on the Protection of Fashion Designs
in the United States, 9 LEWIS & CLARK L. REV. 447, 464-65 (2005).
139 /d. at 465.
1« Id.
2014] THE DEVIL WEARS TRADEMARK
tection of its tuxedo dress in order to recover for damages in the United
States. And assuming that, like Samara, it had its trademark or
trade dress approved by the USPTO, YSL would sue for trademark
infringement in the United States. Accordingly, then, YSL would be
suing for trademark infringement in one country and copyright infringement
in another — on the basis of infringement of the very same
article. In the process of such litigation, YSL might even be compelled
to assert statements for one case that may undercut its case in the other
country. For example, one might imagine that to obtain copyright
or patent protection for a design that is merely an iteration of an earlier,
original design, a fashion house might have to argue for a design's
originality in order to meet novelty requirements that are typical of
most intellectual property protection systems. Yet, in order to receive
trademark protection, the designer might have to argue that the second
mark bears substantial similarity to the original mark, thereby suggesting
that this second mark is not original at all, undermining the argument
for patentability.
V. CONCLUSION
All of these factors taken together suggest that sui generis legislation
from Congress might be the best way both to provide protection
for new and incumbent fashion designers and to promote creativity in
the industry. If Congress does not affirmatively create legislation to
protect design in a more orderly way now, it may later have to fashion
defensive legislation to undo court-crafted changes to trademark doctrine
that stifle creativity and competition.
The IDPA was a good start. It proposed a reasonably short length
of protection: three years. This term of protection is comparable to
that of France, where the term of years is left up to the discretion of
judges, who usually decide that "protection should last so long as the
design is capable of being effectively exploited" (typically from eighteen
months to two years in fashion). i4i France also applies a looser
originality requirement than the IDPA would have — French originality
is determined "on an ad hoc basis, looking to any works which may
have inspired the design at issue"i42 — potentially justifying its even
shorter term of protection.
However, the IDPA's language was likely too vague to have been effective
even if it had passed. It would have protected "the appearance
•41 Leslie J. Hagin, Note, A Comparative Analysis of Copyright Laws Applied to Fashion Works:
Renewing the Proposal for Folding Fashion Works into the United States Copyright Regime, 26
TEX. INT'L L.J. 341, 374 (1991) (quoting 2 JEAN VINCENT, GUIDE JURIDIQUE § 37, at 204-205
(1987) (translated by author)).
142 Id.
IOl6 HARVARD LAW REVIEW [Vol. 127:995
as a whole" of arficles of apparel.i'*^ Such a broad definition would
likely open the door to the trivial yet costly litigation of which its critics
warn. Compare this language to the more descriptive guide provided
by the Community Designs Regulationi44 adopted about a decade ago
by the European Union to provide a more uniform system for protecting
European designs from infringement in other EU member countries.
Under the Community Designs Regulation, "design" is deñned as
"the outward appearance of a product or part of it, resulting from the
lines, contours, colours, shape, texture, materials and/or its ornamentation."i4s
A perfectly precise and all-encompassing definition is impossible
— fashion would not be fashion if it were so easily captured in
words — but a definition can provide guidance to designers and courts.
Still, critics of sui generis legislation may argue that the benefits of
protection are ultimately outweighed by the cost of increased (and unnecessary)
litigation. One way to get around this issue is by modifying
the litigation process or limiting the court remedies available for fashion
design. In the United Kingdom, the Patents County Court deals on an
expedited basis with patents, registered UK or Community designs,
trademark disputes, copyright disputes, unregistered designs, and databases,
i"**^ Design-copying cases are decided solely by a sole judge who
has the final and only say about whether two designs are similar, i"*'
This juryless decisionmaking process may seem unfair to some, but
overall it has the advantage of expediting litigation of designs that will
be out of vogue in a few months anyway, allowing designers to move on
with their work rather than maintain protracted court battles.
The piecemeal granting of trademark protection to quasi-designs
will stagnate the fashion industry, both artistically and economically. It
will aid the nearly permanent removal of artistic tools from the public
domain with no corresponding benefit to the public. Sui generis legislation,
while bound to be imperfect, may be the best way to balance the
goals of artistic innovation, idea protection, and fair competition.
143 S. 3523, ii2th Cong. § 2(aX2) (2012).
•44 Council Regulation 6/2002, 2002 O.J. (L 3) i, amended by Council Regulation 1891/2006,
2006 O.J. (L 386) 14.
145 What is a Design?, OFF. FOR HARMONIZATION IN THE INTERNAL MKT. (TRADE MARKS
& DESIGNS), http://oaimi.europa.eu/ows/rw/pages/RCD/design.en.do (last visited Nov. 24, 2013).
•46 Alison Rea, United Kingdom: IP Enforcement for Small and Medium Sized Companies —
The Patents County, MONDAQ, http://www.mondaq.eom/x/2 i89S6/Patent/Increased+Regulation
+Likely-^To4.Lead-^To4.More-^Outsourcing-^AndOr-^Redundancies-^In-^The-^Financial+Services
-fSector (last updated Jan. 31, 2013).
•4' See Interview with Imogen Wiseman, supra note 45.
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