(1) expert evidence may be offered concerning the usefulness of the article and whether any apparent functional aspects can be separated from the artistic aspects…(2) evidence of Poe’s intent in designing the article may be relevant in determining whether it has a utilitarian function…(3) testimony concerning the custom and usage within the art world and the clothing trade concerning such objects also may be relevant;…and (4) the district court may also consider the admissibility of evidence as to Aquatint No. 5’s marketability as a work of art.Similar to Brandir, these factors highlight the object’s functionality in light of its aesthetic elements. After analyzing relevant case law to determine the meaning of intrinsic utilitarian function, Professor Hick defines the term as objects that are designed with a specific function in mind (a factor mentioned in Brandir and Poe), such as a hammer that is designed to drive nails into a surface. The extrinsic function, however, is derived from how consumers interact with the product—if one uses a hammer as a paperweight, that would constitute an extrinsic function of the hammer. Furthermore, Thomas Byron explains how one might affix a coiled extension cord to a wall or use a Van Gogh painting to swat flies. Yet, displaying the extension cord as art, does not eradicate the primary purpose of the object; nor does using a famous artwork for a mundane task implicate that the art piece is less intrinsically artistic. Therefore, he concludes, while many objects “may serve both aesthetic and utilitarian ends, different objects intrinsically serve these ends in varying degrees.” In sum, courts and academics have treated utility and aesthetics as operating on a spectrum. At one end, there are objects that are purely functional, such as certain types of hardware. At the other end, there are inherently aesthetic works, such as a painting. In between, there are more questionable works, namely belt buckles and toys, which incorporate both aesthetic and utilitarian features in the design. In determining whether the design is subject to a separability test, the Copyright Act stipulates that it must possess an intrinsic utilitarian function, which courts have failed to adequately define. While Kisselstein Cord explicitly identifies jewelry as a protectable aesthetic category of the Copyright Act (not subject to useful articles analysis), the latter four cases seem to question the categorization of jewelry as a purely sculptural work.  While one district court held that rings are useful articles, two district courts explicitly rejected this argument and instead categorized rings as protectable ornamental sculptural pieces. In DBC of New York, Inc. v. Merit Diamond Corp., the Southern District of New York took the position that rings are useful articles and proceeded with a useful articles analysis. The court explained how the rings’ configuration—marquis stones flanked in a trillion ring setting—did not exist independently of its utilitarian counterparts. The court did not include a reason why it categorized the diamond rings as useful articles; rather, the court, citing Carol Barnhart, reasoned, “the design of a useful article … 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.” After briefly conducting a separability analysis, the court held that the plaintiff’s rings did not warrant copyright protection. Two district courts explicitly disagreed with the court’s treatment of rings as a useful article in DBC of New York. Nearly a decade after, the Southern District in Weindling Int’l, Corp. v. Kobi Katz, Inc. stated that rings are “chiefly works of art, or more precisely ornamental sculptures, even if mass-produced.” After examining the combination of the rings’ unoriginal elements—flaring supports, channel setting, triangle cut-outs, and sharp-edged apexes—it concluded that, in combination, the bridge ring merited copyright protection (specifically known as compilation protection). Additionally, the Northern District Court of Illinois in Donald Bruce & Co. v. B. H. Multi Com Corp. stated that it did not agree with the defendant’s reliance on the incorrect ruling in DBC of New York. In determining whether plaintiff’s Skalet Ring Line was copyrightable, the court flatly rejected the defendant’s argument that rings can serve as useful articles saying, “[t]he [r]ing is purely ornamental, its sole purpose is to portray its appearance.” Accordingly, the court concluded that since the ring is not a useful article under § 101 of the Copyright Act, it therefore did not need to “determine whether the utilitarian aspects of the mount are separable from the sculptural elements.” After looking at the Skalet Ring Line’s originality and assessing the validity of the copyright, the court dismissed defendant’s motion for summary judgment. While the Copyright Act of 1976 did not expressly include the term “artistic jewelry,” for the most part, rings are considered sculptural works. The absence of any reasoning behind the useful articles analysis for the diamond rings in DBC of New York further demonstrates that rings should be treated on the aesthetic end of the copyright spectrum.  predating the history of sculpture and even painting. Yet, rings can be considered useful in many senses. Rings have taken the forms of seals for legal documents, contracts, and international treaties, have been used for talismanic reasons and amuletic properties, and are still used today as portable bank accounts and to display socially meaningful codes. Paul Greenhalgh delineates how the “design” category emerged from the “decorative arts.” Specifically, in the 19th century, “[t]he decorative arts steadily congealed into a salon de refuse of genres that cohered only by virtue of their exclusion [from the category of fine arts]. Outside the fine arts, there was no fixed nomenclature or hierarchy. Variously—and interchangeably—known as the decorative, useful, industrial, applied or ornamental arts, they struggled to maintain a place in intellectual life ….” At the end of the nineteenth century, artists engaged in craft ethic differentiated themselves from those who produced large-scale manufacturing creations, which became known as design. One of the purposes of rings is to adorn, and therefore rings can remain as a decorative art, distinguished from a fine art. Yet, because many jewelry designers mass-produce their creations, rings can also be considered designs. Interestingly, though, in the height of the Arts and Crafts revolution from 1970-1980 in the United States, “jewelry had begun to take a new meaning in the art world.” This period has been compared to the “new painting” age that developed throughout Europe between 1880-1910 and subsequently in the United States from 1940-1960. The late 1960s generated revolutionary jewelry students, especially potent in the art world, who challenged longstanding conventions and questioned the very notion of jewelry. With the advent of new materials and metals, jewelry designers were tooled with new ways to create “individualistic art.” Specifically, jewelry designers employed non-precious metals and other soft metals as well as recycled materials, new plastics, and other refractory metals that could be colored in novel ways. For instance, Crangi explained how she was one of the first designers to employ rugged brass in her creations when the company launched in 2001. These innovative changes in jewelry design resulted in an invigorating and challenging debate whether jewelry was still “Art with a capital A”, Overall, jewelry has evolved to a forum for “conceptual exploration and personal expression.”  Moreover, artistic expression lies in how designers choose materials, how they work the materials to transform an object, and ultimately breathe new life into it. Jewelry design is said to be the “highest level of craftsmanship and creativity—not blindly making [jewelry pieces] to preordained templates, but thinking through making, applying individual philosophies, personal intellect, active intuition, sensitivity, continuously inquiring and experimenting, and immense passion ….” By including perspectives from jewelry designers, this section will further explain how a ring is an ornamental sculpture for purposes of the Copyright Act. Specifically, it will examine three relevant factors in ring design: artistic creativity and how the Copyright Act has aimed to protect that process; jewelry designers’ perspectives and infusion of artistic concepts; and how rings differ from clothing, a useful article.  and “work[s] of art.” While the Act currently stipulates that PGSs qualify as a category of copyrightable subject matter, it further explains the phrase with references to art in the definitions section, saying PGS include: “works of fine, graphic, and applied art, photographs, prints and art reproductions …. Such works shall include works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned ….” There are also policy concerns behind the Copyright Act that seek to incentivize “authors” to create artistic works. Many academics have supported the utilitarian justification for copyright protection: the Constitution authorized copyright legislation “to promote the Progress of Science and useful Arts,” thereby suggesting an incentive rationale to encourage innovative activity through a system that promotes exclusive rights for the tangible results of creative efforts. Accordingly, Professor Fromer argues that while the drafters of copyright legislation may not have had “artistic creativity” in mind, “[copyright]’s standard of originality for protectability, principally aligns with our understanding of how creativity proceeds and is valued in the artistic realm.” Specifically, the low bar for originality incentivizes authors to create works that are not “highly original,” rather drawing on previous artistic works, which are typically in line with consumers’ tastes. Many ring designers employ artistic creativity, which further supports the notion that rings are sculptural works not subject to a useful articles analysis. While scientific creativity seeks to find practical solutions for problems, artistic creativity focuses on the problem, posing questions to an audience to provoke debate and discussion. The spirit of open-ended inquiry coincides with the Copyright Act’s requirement of originality, as the author identifies a problem and fixes it in a work of art. While jewelry is not considered a fine art in the strict sense, many jewelry designers see themselves as using artistic creativity in the process. Norman Cherry interviewed seventeen jewelry designers, many who describe their creative process in artistic terms. For example, Simon Cottrell creates his designs in a structured form of improvisation, similar to how a jazz musician develops an initial theme and, through a complex combination of prior knowledge, experience, and intuition, eventually reaches a final destination. Additionally, Ruudt Peters conveys that alchemy is a process in jewelry design that transmutes “prosaic materials into a visual poetry.” Moreover, jewelry designers are actively engaged in a method referred to as “discovery of the problem,” which involves both “deciding which artistic medium, materials, and represented objects will be used” and “harnessing experiences and themes for artistic expression.” Most jewelry artists do not rigidly follow a blueprint in the design process; they employ a number of different methodologies for their creations. Gruenberg states that “[m]uch of what I do is instinctive … I don’t consciously follow a step-by-step process to construct a ring.” When creating the ring template for 3D printing, she says that she designs, experiments with components, reacts, and then redesigns—like drawing through materials. During the process new problems may arise and the artist is tempted to reframe that problem. For instance, Peter Skubik designed a mercury ring by creating a mold, pouring liquid mercury into the mold and cooling the mercury in carbon dioxide snow to solidify it. Once he removed the solidified ring from the mold, the ring melted a little and lost its form. It created a dripping effect, calling attention to the malleable metal in relation to the sturdy mold. Lastly, Courtney Crangi commented on her brother Phillip Crangi’s designs saying that during college he noticed how “steel and gold love to live together;” he has since created a fine jewelry line that includes rings that combine the two materials. Accordingly, copyright law rewards many artists and writers for articulating a particular emotion or subjective concept into a tangible work, rather than “only one problem solution receives the prize of copyright,” as in the patent regime. Overall, the Copyright Act’s low originality threshold is designed to award the use of artistic creativity. Many jewelry designers describe their creation process in poetic terms and focus on the discovery of a problem, which mirrors the creative process of other artists, musicians, and writers. Thus, jewelry should be considered on the aesthetic side of the copyright spectrum not subject to a useful articles analysis as it incentivizes jewelry designers to engage in artistic creativity.  Accordingly, it is important to see how jewelry designers view their pieces to determine whether rings qualify as useful articles. To many designers and academics, jewelry is considered “one of the most vibrant, exciting and challenging contemporary art forms.” Many jewelry designers see themselves as artists. In line with the 1976 Copyright Act’s objectives, jewelry designers have compared their work to that of a sculptor. Similar to sculptural objects, rings “consist of a physical object that has its own discrete existence.” In fact, Skubik views his rings in isolation from the body and sees them as art even when it is not worn. While there is a commercial component to jewelry design, Tanya Gruenberg, the creator of Studio Grun jewelry designs, states that she manages the production as a businesswoman, yet creates as an artist. For sales, she has to think formulaically, keeping track of her cash flow and inventory. As an artist, she sees her rings as a platform for investigating the interplay of a diverse range of mixed media—3D printing, plastic molds, and gemstones—to highlight a “unique degradation aesthetic while maintaining elegant accents.” Other jewelry designers infuse different art world concepts into their designs, such as abstraction, minimalism, and color schemes. Along with her husband, Emmy van Leersum creates pieces in an abstract manner that “rejected the craft tradition of the silversmith and strove instead to eradicate any trace of personal expression from their creations.” Additionally, Otto Künzli highlights social critique, frequently disparaging the pretentions of jewelry in his pieces. Lastly, Irene Neuwirth, a native from South California, explains that her inspiration is the ocean: “[i]ts purity, power and colors are all key elements at the origin of her designs.” Overall, many jewelry designers see themselves as artists and incorporate many artistic themes into their pieces, thereby highlighting how jewelry is more of an art form for purposes of the Copyright Act.  rings are inherently different from other industrial designs. As mentioned, the copyright system treats fashion pieces as useful articles, and most jewelry designs as sculptural ornamental pieces. However, many designers would submit that the nature of rings is innately tied to the human finger as rings are made—and imagined—to be worn. In this regard, rings are similar to garments in that the body is the site of the creative work. However, rings are remarkably different in the sense that they do not protect people from cold temperatures, which could be considered an intrinsic utilitarian function of clothing. Additionally, clothing is used for modesty purposes in many cultures, whereas rings could be said to have a complete opposite function—they mainly serve an adornment purpose: “it beautifies, within the value system of the local culture, and sometimes renders the wearer socially or sexually desirable.” Of course, fashion designs can accomplish the same objective, but the copyright system does not treat that as a primary objective of clothing. Unlike clothing, which in most parts of the world you are legally required to wear, donning rings is a choice. Many jewelry designers would submit that the primary purpose of rings is to decorate fingers and convey a specific style. Similar to clothing, though, jewelry designers must cater to trends, and in order “to be complete,” their designs should be purchased and worn by others. Many traditional artists are generally free from those “constraints of commerce,” whereas many jewelry designers have to develop a business sense. Furthermore, English and Dormer argue that art “confers a status upon an object that is currently higher than and different from the status of craft or design” seen in jewelry. However, the Copyright Act still considers many sculptural works as works of art, even if they are mass-produced or marketed for commercial purposes. Judge Rakoff in Weindling International, points out “[a]rtistic design, after all, is at the very heart of the jewelry business, even in its crasser commercial forms.” Furthermore, some designers see their rings as a more “intimate” art form between the creator and audience. The weight of a ring combined with its “texture and size” on one’s finger and size serves as a tactile “constant reminder of its presence.” Moreover, a ring, after being worn for years, “acquires a patina of age and even conforms itself to the shape of the finger.” While clothing and jewelry share similar elements, a ring’s primary purpose is to adorn, which makes it more of an ornamental sculptural work for purposes of the Copyright Act. Additionally, the copyright system and its low threshold for originality is designed to afford tangible rights to the artistic creative efforts of designers. Since, many jewelry designers engage in artistic creativity (focusing on the problem) and infuse their designs with artistic concepts (expressing a particular problem), their designs should be protected as aesthetic works.  Given that rings do possess some functional uses, this section assesses whether those uses constitute an “intrinsic utilitarian function” in terms of the Copyright Act. Both Gay Toys and Poe have explained that not all uses rise to the level of intrinsic utilitarian function. Continuing, this section examines functional aspects underlying ring designs, such as those considered in Brandir, and assess whether that is an important factor in determining intrinsic utilitarian function. Lastly, the section analyzes critical reception of rings, and how the copyright system considers museum display.  Accordingly, Jewelry by December 1967, a designer on Etsy, lists a Mozambique Garnet Ring and explains “[g]arnet is said to be the stone of romantic love and passion, enhancing sensuality, sexuality, and intimacy.”
C. The Impact of Gas Chromatography-Mass Spectrometry (GC-MS) Technologies on the Fragrance IndustryIn the popular imagination, consumers have held to the romantic notion that fragrances, particularly perfumes applied to the body, are created from closely held and undetectable formulas. For instance, the conceit of Patrick Süskind’s novel Perfume centers on its murderous protagonist’s prodigious capacity to analyze scents. Tom Robbin’s Jitterbug Perfume, on the other hand, tells the picaresque tale of the arduous quest to discover the formula of an ancient fragrance ultimately revealed to have contained the recherché ingredient of beet blossom essence. In fact, using contemporary GC-MS technologies, one can learn with remarkable accuracy the formula of any fragrance. GC-MS is a technique for separating the components of a vapor by observing the different speed by which each chemical component is expelled from a long tube through which a sample of the vapor is swept. Once the components have been separated, a mass spectrometry apparatus identifies the various separated molecules and their relative volumes in the composition of the vapor. GC-MS technology has disconcerted fragrance houses because it enables practically anyone to obtain a fragrance’s formula swiftly and inexpensively. The most costly component of a fragrance, the formula is typically developed from months, or even years, of research costing hundreds of thousands of dollars. Unsurprisingly, as GC-MS technologies have become increasingly affordable and effective, a parasitical industry has emerged, that manufactures and distributes lower cost “smell-alike” versions of well-known fragrances. Five multinational corporations, four of which originated in Western Europe, dominate the world fragrance market. For years this industrial concentration fostered a tacit agreement among the industry’s largest players. Under this informal understanding, the major fragrance houses would not cannibalize each other by manufacturing competing products based on formulas of a competitor acquired through reverse engineering. Otherwise, a competitor could undercut an innovator’s market by selling products at prices that did not reflect the innovator’s R&D expenditures. The increasing accessibility and accuracy of GC-MS technologies in recent years has tested the stability of this “gentleman’s agreement” among fragrance manufacturers. Moreover, this understanding never extended to the client base of the major fragrance producers, ranging from consumer products giants like Unilever to couture houses like Dior (LVMH), that attach their brands to fine fragrances that are developed and manufactured by large external suppliers. Moreover, GC-MS technologies have provided these clients a new means of negotiating lower prices for the development of new fragrances, as well as those for ongoing supplies of already commissioned products. If a fragrance house balks at the price negotiated by a client for ongoing supplies of a product that it developed for the client, the client could reverse engineer the fragrance, and then buy supplies of it at a lower price from a competitor of the initial supplier. The competitor would have legitimately obtained the formula without incurring the cost of creating it. GC-MS technologies also make it more feasible for clients themselves to produce supplies of perfumes developed at their behest by fragrance houses. This discomfiting potential was realized in 2011, when the luxury conglomerate LVMH built a fragrance compounding facility outside Paris and began producing supplies of concentrates for their popular scents like “Miss Dior Chérie”, “Dior Homme”, and “Kenzo Flowers”. Previously, they had obtained these supplies from Givaudan, Firmenich, and IFF, after these companies had developed the respective formulas. LVMH claimed that the blends that they produced for these brands embodied subtle modifications of those that had been produced by Givaudan, et al., presumably a tactic to avert liability for breaching any contractual obligation to purchase concentrates from the companies that developed the original fragrances. LVMH’s actions were particularly distressing to fragrance houses because they involved the production of successful and well-established perfumes. Profits derived from sale of the liquid blends to produce these goods cover not only the costs of their development, but also the formulation of a constant stream of new proprietary blends that manufacturers use to compete for new business. As the owner of fragrance brands like Givenchy and Dior, LVMH is one of the most significant players in the retail fragrance industry. Moreover, the company is one of the most important clients for fragrance houses, continually commissioning the development of new products that capitalize on their deep R&D expertise. Therefore, fragrance houses are naturally reluctant to alienate themselves from such a powerful client. These companies could contractually preclude clients such as LVMH from certain uses of newly developed formulas, or from obtaining supplies of certain fragrance compounds from other sources. Such terms, however, would be difficult to negotiate in light of the bargaining advantage that analytic technologies now provide to these industry clients. Given the feasibility of legally reverse engineering and independently producing a fragrance, clients would agree not to do so only in exchange for price concessions, or guarantees regarding the ongoing manufacture and quality of a product, e.g., the sourcing of ingredients from a particular supplier. To summarize, over the past few decades, the availability and enhanced capacity of GC-MS technologies have significantly challenged the fragrance industry’s business model. The industry’s most valuable assets, proprietary formulas, can now be legally acquired by anyone with access to a well-equipped laboratory. The effects of the loss of trade secret protection, resulting from use of these technologies, have been compounded by unprecedented calls for greater government regulation of the industry’s products, which could require the public disclosure of the ingredients, or even the formulas, of proprietary fragrance compounds. Now that trade secret protection has been compromised for the fragrance industry, are there other forms of intellectual property for which this industry should seek protection instead?  Even those who independently develop or reverse engineer an invention covered by patent are prohibited from unauthorized manufacture, use, and sale of products or services that implement it. However, this sweeping prohibition is tempered by the patent holder’s obligation to disclose, at the time of registration, the composition and functioning of his invention, which information enters the public domain when the patent term expires. Despite the strength of patent protection, the fragrance industry does not rely heavily upon this form of intellectual property for the protection of fragrance formulas, and those of fine fragrances in particular. An invention must be useful to be patentable. Like the jewelry business, the fragrance industry promotes high-end perfumes as pure luxuries. Ascribing utility to these goods tarnishes their cachet of exclusivity, and thereby the economic value associated with entirely discretionary products. Moreover, the fragrance industry eschews the trade-off between patent’s twenty-year term of monopolistic control and full disclosure of the patented invention. This is not only because the market for many of the industry’s high-end products lasts more than twenty years, but also because longevity in the marketplace of some of these products actually makes them more valuable over time. While the fragrance industry does not primarily rely on patents to protect the formulas used to produce fragrances, there have been thousands of applications in U.S. Patent Class 512 covering “perfume compositions”. However, most of these applications are for innovative means for extracting, manufacturing, or delivering fragrances. The relatively few registered patents that protect the formulas of fragrant compounds are grounded in claims of the product’s useful capacity to supplant noxious odors or – more dubitably – to promote physical and mental health. Fragrance companies also rely upon patents to protect some of their most valuable assets: new fragrance molecules that they have developed, known as “captives”. These proprietary molecules typically are not valuable because of the beauty of their scent, but rather for their capacity to create original, safer, or less costly fragrances. The handful of fragrance companies that dominate the world market create and own most captives because only these companies can afford the significant R&D investment required for their creation. Companies that develop patentable molecules may initially manufacture fragrances employing these captives, but much of their profit is derived from selling or licensing them to other fragrance manufacturers that more exhaustively explore and capitalize on their potential.  because the registering author must simply claim that his work is more than de minimus original expression. In other words, an author may register expression already copyrighted or in the public domain, as long as it is his expression produced independently of the preexisting work. Copyright owners enjoy a “bundle of rights” in a protected work, including those to reproduce and perform it, and to create derivative works. The term of copyright is significantly longer than that of a patent, although the protection copyright offers is moderated – particularly in the United States – by “fair use” and other exemptions permitting certain unauthorized uses of copyrighted works for educational and archival purposes. Globally, the scope of copyrightable expression has grown exponentially since enactment of the Statute of Anne in 1710, which established authors’ rights in their books. The margins of protection have expanded, accommodated by evolving copyright statutes that provide illustrative, but not exhaustive, examples of copyrightable works. The French copyright statute, for instance, delineates fourteen exemplary categories of works typically considered works of protectable authorship, but prefaces this list with a broad statement extending copyright protection to all intellectual creations, “regardless of their embodiment, merit, or purpose.” The United States Copyright Statute offers a similarly broad definition of copyrightable authorship, followed by an illustrative list of eight categories of copyrightable works. Because copyrights are easy to obtain and provide lengthy terms of protection, they would appear to be an attractive means of protection for the fragrance industry. Copyrights, like patents, provide owners near monopolies on the use of their protected information, so one could not reverse engineer and reproduce a copyrighted fragrance without authorization from the copyright owner. Moreover, the term of protection offered by copyright is now several times that of a patent, typically providing owners control over their works for the better part of a century. Fragrances are ultimately embodied and perceived as particular combinations of airborne molecules. Nevertheless, fragrances, like pharmaceuticals, may ultimately be reduced to works of information fixed in visual symbols comprising a formula. In this respect – and in others – they are akin to music scores whose visual information is used to produce a performance by which a work of music is typically broadly disseminated, and ultimately perceived as sound. A skilled and patient musician can “reverse engineer” and reproduce a music score from repeatedly listening to a performance. Digital audio technologies can dissect the sounds of performances of even relatively complex musical works and render increasingly accurate scores in traditional music notation. Just as an audio recording of the reading of a book is a copy of a literary work, a music score derived from the sounds of a performance is a copy of the musical work underlying both the performance and the score. Likewise, if we consider man-made fragrances to be copyrightable works of authorship, the dissection and reconstruction of a fragrance, whether by a human with preternatural olfaction or by a mechanical apparatus for molecular analysis, results in a copy of that fragrance, which only the copyright owner is authorized to make. There is no indication, until the latter half of the twentieth century, that perfumers regarded copyright as a means to protect their original blends of fragrances. Apart from the fact that the original focus of copyright protection was literary texts, there was no need for such protection given the difficulty of copying a fragrance by separating the components and determining their role in a particular blend. Given this impediment, fragrance formulas could enjoy perpetual protection as trade secrets rather than merely a term of perhaps fourteen or twenty-eight years as copyrighted works of authorship. By the end of the twentieth century, the breadth of copyrightable subject matter had grown to include works as disparate as fictional characters, and computer programs, far beyond the contemplation of those who promoted authors’ rights in the eighteenth century. At the same time, technologies for molecular analysis had become so advanced and accessible that perfumers could no longer depend upon secrecy to prevent competitors from learning the formulas of their fragrances. Copyright surfaced, therefore, as a potential new means of protecting fragrance formulas, attractive to an increasing number of perfumers who consider themselves authors and artists creating original aesthetic works. Although France is no longer a leading fragrance producer, it remains an influential force in the fragrance industry. Though France has lost much of the agriculture and extraction work associated with the industry, it has retained the expertise for manufacturing fragrances and creating new blends. French ventures have capitalized upon this element of national patrimony, offering education and degrees for the study of fragrance creation. Even today many perfumers at major fragrance companies have trained, at least in part, in France. Not surprisingly then, the most significant débat on whether fragrances are copyrightable expression occurred in France.
C. France and the Netherlands: Odor in the CourtsIn the early 1970’s, the French fragrance manufacturer De Laire contracted with the couture house Rochas to create several new fragrances. De Laire agreed to divulge the formulas of these fragrances to Rochas in exchange for Rochas’s promise to purchase from De Laire all concentrates of any new fragrances that the fashion house chose to add to its perfume line. After providing Rochas the formula for one or two perfumes, but subsequently receiving no orders to produce them, De Laire sued, claiming that Rochas had infringed its copyright by producing a fragrance using De Laire’s formula. De Laire’s claim failed when an appeals court upheld a lower court’s finding that perfumes are practical works and therefore eligible only for patent protection. Moreover, because perfumes are not tractable to meaningful and consistent description by those who perceive them, they cannot be considered copyrightable “works of intellect”. The holding reflects a view that perfumes cannot be considered original expression because human olfaction is too crude to perceive and describe fragrances except in broad terms. Fifteen years after the Rochas dispute the French perfume house Molinard created a fragrance marketed as a “smell-alike” of “Angel,” the popular perfume created by Olivier Cresp for Quest International, commissioned by fashion designer Thierry Mugler. When Mugler sued Molinard for copyright infringement, the Paris Tribunal de Commerce discounted the defendant’s argument based on Rochas that as products of industrial technique, perfumes couldn’t qualify as original works of personal intellection. Comparing the formula of a perfume to a music score, the Mugler court suggested that variations among perceptions and reactions to a scent are akin to idiosyncratic receptions among those listening to the same musical work, and do not indicate ineligibility for copyright protection. Several years after Mugler the cosmetic giant L’Oréal sued Bellure, an importer of “smell-alike” fragrances, claiming it was infringing L’Oréal’s copyright in Trésor. Deciding the dispute in favor of L’Oréal, the Paris Cour d’appel noted that the fact that the French Intellectual Property Code does not include fragrances among its list of copyrightable works was not dispositive on the issue of copyrightability. All works of intellect are eligible for copyright protection, even those that might also be patentable, or are not fixed, if they are perceptible and reveal the imprint of the creator’s personality. At the same time L’Oréal was prosecuting its claim against Bellure in France, its subsidiary Lancôme initiated a copyright infringement action against the Dutch perfume seller Kecofa in the Netherlands. Lancôme claimed Kecofa’s Female Treasure was not only a counterfeit of Trésor, but also infringed its copyright. The dispute advanced to the Netherlands’ Supreme Court, which ultimately confirmed the lower courts’ findings that fragrances are copyrightable. The Court also noted that the Dutch copyright statute has a catholic scope of protection, and cannot be read as excluding fragrances that are perceptible, original (i.e., bearing the personal imprint of their creator) and not purely technical (i.e., useful). Back in France, shortly after the conclusion of the Kecofa litigation in the Netherlands, the same Paris appeals court that determined L’Oréal’s Trésor could be protected by copyright reached a consistent conclusion in a claim involving designer Jean-Paul Gaultier’s perfume Le Mâle. Gaultier’s perfume manufacturer, Beauté Prestige International, sued a competitor, Senteur Mazal for infringing the copyrights and trademarks of Gaultier’s perfumes by which it marketed “smell-alikes” sold at prices much lower than those of the Gaultier products. Like the court in the earlier Mugler decision, the Gaultier court discounted the defendant’s argument that variances in human perception of fragrances make it impossible to establish that a perfume possesses the originality required for copyright protection. Responding to this argument the court noted that literary, graphical, and musical works are also perceived variously, but these variations in perception do not undermine the originality of these works. The opinions in these Dutch and French cases, which emphasize the role of the perfume creator, give short shrift to that of the user in determining whether fragrance may be copyrightable. The decision in L’Oréal’s case against Bellure, for instance, expressly found that a perfume could reveal the personality of its creator, and thereby be an original work. Neither L’Oréal, nor any of the other cases, however, addressed the issue of what constitutes the “revelation” of a work, a question that necessarily implicates those perceiving the “revealed” work. The shortcoming of these decisions lies not in their determination that the work of perfumers can be a complex intellectual and aesthetic endeavor akin to writing and painting, but rather in the fact that they do not consider the lack of human olfactory capacity to perceive the complexity of the work rendered from this intellectual investment. The ultimate issue in all of the cases involving the copyrightability of fragrance, therefore, is how perceptible must expression be to be protectable by copyright. Despite the pro-copyright outcomes of the Kecofa, Mugler, and Gaultier cases, the Cour de cassation recently delivered a severe check to those advocating copyright eligibility for fragrances in France, by addressing this issue of perception. In 2006 Patrice Farque was prosecuted for selling counterfeit fragrances at a flea market outside Paris. When the case foundered for lack of evidence Lancôme et al. claimed that by selling imitations of its fragrances Patrice Farque had infringed Lancôme’s copyright in these products. When Lancôme’s case ultimately advanced to the Cour de cassation (commercial section) in 2013, the court determined unequivocally that fragrance is not copyrightable expression. The court separated the act of creating a fragrance from that of perceiving it, finding that while the development of a perfume may involve creative intellection beyond technical know-how, this original thought cannot be broadly communicated because it cannot be sufficiently perceived. With its 2013 decision in Lancôme v. Farque the Cour de cassation dashed expectations that French copyright law might offer the fragrance industry a new means by which to protect its perfume formulas. Courts in the United States have not yet fielded the question of whether fragrances may enjoy copyright protection. In fact, the existing classifications under which works may be registered in the United States would not accommodate an application for a work of fragrance. Accordingly, except in the Netherlands, copyrights, like patents, offer little potential solace to an industry unsettled by the vulnerability of its most valuable intellectual property.  and even single colors. Moreover, legally protectable visual trademarks were no longer limited to those comprising words and/or designs, but had been extended also to the “trade dress” of products and services. Although U.S. law now protects colors, scents, and sounds, international conventions and other national trademark regimes are typically less accommodating than the United States of these non-traditional marks. For example, the World Trade Organization’s multilateral Agreement on Trade-Related Aspects of Intellectual Property establishes only that combinations of colors may be eligible for trademark protection, and that registration may be conditioned on the mark having already acquired distinctiveness in the market through use. There is considerable variation among national trademark regimes on trademark protection for color marks, and even relatively liberal regimes, like that of Germany, may protect only those single-color marks that have acquired secondary meaning. There is a similar lack of consistency among national trademark regimes with respect to sound marks, stemming in part from the fact that some nations, like Mexico and Brazil, permit registration only of marks that are visually perceptible. While sound marks are not visually perceptible, they can be verbally documented quite accurately. Many sounds, like the iconic NBC chimes comprising the intervals of a rising sixth followed by a falling third, can be represented visually through music notation. Similarly, scent marks can be accurately visually represented using the standard chemical symbols and verbal instructions of formulas, but are less tractable to verbal description than sound marks. Courts have been reluctant to recognize colors, scents, and flavors as trademarks because doing so could allow the initial user to unfairly monopolize the viable marks for particular categories of goods and services. A fundamental purpose of trademark protection is to protect consumers from deceptively labeled goods. However, courts have held that this objective should not limit competition in a market by rewarding early entrants with potentially perpetual exclusive use of a limited number of marks. In particular, scent, flavor, and single-color marks are more readily depleted than design and word marks. This is not because there are fewer potential marks in these classes, but rather because consumers are less able to distinguish among them than among design, word, and sound marks. For example, there are innumerable shades of red, but it is difficult to distinguish readily between Stanford’s “cardinal” and Harvard’s “crimson” without additional verbal or visual information. On the contrary, it is impossible to confuse the different verbal mottos also branding these universities. Consumers would not be served by a prohibition on other universities using the color red as part of their “brand” simply because Harvard was the first to do so. It is desirable, however, to curtail another university’s branding itself with the color red, the motto “Veritas”, and – obviously – the name Harvard, because it curbs potential confusion on the part of consumers, as well as unwarranted derogation that the original Harvard might suffer. Like single colors, scents and flavors are problematic trademarks because the typical consumer cannot distinguish variations in scents and flavors as easily as those of designs and words. While there is an infinite variety of scents and flavors, we tend to classify them, as we do shades of color, using relatively limited taxonomies: “royal blue”, “blood red”, etc. For instance, we use “floral” to describe the scents of hundreds of different flowers, and “spicy” to refer to the taste of hundreds of different piquant flavors. The greater the number of words or designs that are combined in a mark, the more complex and inherently distinctive it is likely to be. This is not true for scents and flavors. Combinations of different scents and of different flavors may yield more complex chemical compounds, but we tend to perceive these not as distinctive new scents and flavors but rather as muzzy blends of the relatively few existing generic categories: “this wine has a citrusy flavor;” “this moisturizer has a vegetal scent.” There are, of course, thousands of varieties of vegetal scents and citrusy flavors but humans cannot readily distinguish among them using a broadly shared taxonomy. Accordingly, because this perceptual inadequacy presents a risk for trademark depletion, most trademark regimes do not accommodate scent marks. International conventions touching on intellectual property, like the TRIPS Agreement and the European Union Trademark Directive, do not expressly permit or prohibit trademark protection for scent marks. However, international courts and national laws have made it difficult or impossible to register them. On the national level the trademark statutes of France and Germany implicitly preempt scent mark registrations by limiting protection to marks that can be visually represented. In 2002 the European Court of Justice (ECJ) considered the question of what constitutes graphical representation of a scent mark. The dispute involved an appeal from the ruling of a German court that upheld the national trademark office’s refusal to register a scent. The applicant, Ralf Sieckmann, had submitted a fragrance claiming it as a mark denoting a range of professional services. As graphical representations of the mark Sieckmann provided a sample of the fragrance in a liquid, the chemical composition of the fragrance (C6H5-CH = CHCOOCH3), and a description of it as “balsamically fruity with a slight hint of cinnamon.” The ECJ determined that none of these submissions, alone or combined, were an effective graphical representation of the scent as a trademark. Although the submissions were visual, they did not enable consumers “… to guarantee the identity of the origin of the marked product or service…by enabling him, without any possibility of confusion, to distinguish that product or service from others…” In other words, these representations are ineffective graphical representations because the appearance of an amber liquid, and the words “balsamically fruity” are so commonplace that when consumers encounter them they will conjure any number of scents (and tastes). Moreover, only a narrow sector of consumers who are trained as chemists might recognize “C6H5-CH = CHCOOCH3” as the fragrant compound Methyl Cinnamate. Consumers’ limited capacity to perceive Sieckmann’s mark through these visual representations would obscure the boundaries of protection trademark registration might provide. This would defeat the purpose of graphical representation, which is required “…specifically to avoid any element of subjectivity in the process of identifying and perceiving the sign,” and would provide overly broad protection that is potentially detrimental both to consumers and competitors of the trademark owner. Moreover, even if consumers recognized the chemical formula for Methyl Cinnamate, as readily as we recognize H2O as that for water, the fragrance mark itself is inherently unstable “…because of different factors which influence the manner in which it can actually be perceived, such as concentration, quantity, temperature or the substance bearing the odor.” Unlike the European Union, the United States does not require that trademarks be represented graphically to be registered. In fact, the United States Patent and Trademark Office (USPTO) has accommodated registration for such marks by establishing a classification for them: Mark Drawing Code 6, “for situations for which no drawing is possible, such as sound.” Nevertheless, while there are many United States trademark registrations for sounds there are remarkably few for scents. The first scent mark registration was issued in 1991, after the Trademark Trial and Appeal Board overturned the USPTO’s initial denial of a trademark registration for a floral scent used to brand sewing thread. Since then, only fifteen additional fragrance marks have been registered, and only four are still “living”. These include the scents of vanilla and citrus for cosmetics and fuel oil respectively, and that of coconut to mark the retail space of a beach apparel seller. Most of the now expired fragrance marks were registered by Smead, Inc., a Minnesota office supplies manufacturer, to protect their branding of their paper products with fragrances like peppermint and peach. The fact that Smead allowed their scent trademark registrations to lapse suggests that the company determined that consumers did not effectively associate the scents with their particular source. Smead might have more successfully developed consumer association between the scent of the paper products and their manufacturer if it had deployed a single fragrance across its entire line of products. While Smead could not monopolize the idea of scenting paper, which stationers have been doing for centuries, it might have monopolized the use of a particular fragrance for paper products. Smead’s use of various fragrances to mark interchangeable products, likely led consumers to associate the fragrance more with the particular variants – scent of peaches for the peach colored file folders, etc. – than with the manufacturer.  In contrast, the buzzing fluorescence and concrete floors of Costco generate brisk efficiency for the grim acquisition of huge quantities of “house brand” paper products and similar utilitarian goods sold at “volume discount” prices. In general, the more a product’s economic value stems from its purported refinement and exclusivity (e.g., perfume, jewelry, haute couture) the more its retail sales are tied to visual presentation and other factors extrinsic to the product itself. The cost of presentation and other less immediately apparent external factors, like polite salesclerks, clean washrooms, or a forgiving returns policy, are built into the retail prices of these goods. Accordingly, while Target sells for $80 a two-and-a-half ounce bottle of the eau de toilette of Patou’s Joy, Nordstrom charges $130 for the same item. Retailers also use sound to boost sales, which is not a recent phenomenon. Even before the advent of technologies for recording and broadcasting musical works, department stores engaged musicians whose live performances promoted not only sales of sheet music, but also the sale of other merchandise, once the music had lured customers into the store. Some retailers, restaurants, and hotels still enhance their public spaces with live music performances. However, with the development of recording and broadcasting technologies, this goal is now met mainly through recorded performances of musical works. “Background music” is now so prevalent in commercial spaces in the United States that it is disconcerting to enter a shop or restaurant blessedly free of it. Like the visual décor of commercial spaces, these aural ambiances are now artfully developed and deployed to promote sales of goods and services to specific populations of consumers. This deployment is now so pervasive in retail spaces that the withholding of music and all visual adornment in “big box” stores like Costco, appears to be a deliberate reassurance to customers seeking to purchase goods at “no-frills” prices. Because the sound of recorded music is now so commonplace in retail locations, customers do not listen to it as they might have a century ago. Customers still hear the music, however, and the character of the music becomes a familiar and predictable attribute of a particular commercial milieu. In other words, regardless what music being played, it is being deployed as “muzak”, i.e. an aural enhancement of an environment in which retailers anticipate that we will focus on something else, namely purchasing their goods or services. This ambient music affects the experience and behavior of customers in these retail spaces. Retailers play music to entice customers to linger over merchandise by providing familiar and affirmative “sound tracks”. They tailor the music to appeal to consumers based on factors like age, race, gender, and economic class. While a misogynist rap number broadcast in a Nike store might subliminally flatter the egos of young male customers, it would likely alienate shoppers at Tiffany’s browsing engagement rings and bone china. Accordingly, shopping malls and department stores broadcast varied “soundscapes” in which the disparate “sound tracks” comprising them are regularly updated to conform to the evolving musical tastes of their targeted consumers. Like music, scents have long been used in the marketing of goods and services. The aroma of baking cookies, with its homey associations, has often been used to market houses; the alarming odor of burnt wood has been used to sell fire insurance policies to protect such property. Moreover, developers of scent delivery systems have capitalized upon existing technologies like ink-jet printing and smartphones to create new means of communicating scents, particularly in connection with advertising and entertainment. Marketers, however, increasingly use fragrances not to conjure a narrowly defined good or service, but to mark an overall environment in which retail customers purchase the goods or services of a particular seller. This practice is not limited to sellers of luxury goods and services: today “… marketing using scent is catching on among retailers and in car showrooms, sports stadiums, airports, banks and apartment buildings that seek to distinguish themselves with customers via the deeply influential sense of smell.” For example, the air in the lobbies of all Omni hotels is infused with the scent of lemongrass. Omni anticipates that its repeat customers will learn to associate this scent with comfortable accommodations, and specifically those offered by Omni. Hyatt’s objectives in their use of fragrance are more nuanced than Omni’s. Hyatt scents the air of the public spaces of each of its sumptuous “Park Hyatt” properties with a different and unique bespoke fragrance, which is also used to scent the lotions, soaps, and candles liberally sprinkled throughout the particular hotel’s public and private spaces. Hyatt hopes that because customers will encounter a particular bespoke fragrancs only at the hotel in which it is deployed; they will associate it not with “Hyatt” – which has properties ranging from relatively austere to luxuriant – but with a particular top-tier Hyatt hotel that is purposefully distinct from all other Hyatt properties. Retailers scent their salesrooms hoping to imprint customers’ memories with a positive association between a fragrance and the experience of shopping at their stores. Retailers may do so also to promote sales of the fragrance itself, like Abercrombie & Fitch’s “Fierce.” The distinctive environment of this retailer is a carefully manufactured mix: visual elements like dim lighting and exiguously dressed young clerks; a loud soundtrack of popular music that teenagers find appealing; and an atmosphere constantly infused with the scent of “Fierce,” the retailer’s “signature” scent. As Abercrombie’s website proclaims, “Fierce”, sold as a cologne, body wash, and candles, is “[k]nown as the world’s hottest fragrance…a symbol of masculinity and great American achievement.” In other words, the retailer’s hypertrophic sensory ambiance is intended to evoke that of attractive nuisances like Los Angeles’s Sunset Strip music “clubs” that entice the same customers that Abercrombie targets: just-legal teenagers untethered from their parents, but in possession of their credit cards.  A product’s trade dress may be a concatenation of elements that are not separately protectable as trademarks, but the amalgamation of these elements is protectable because of its capacity to identify the source of a product or service. In this respect, the whole is greater than the sum of its parts. The trade dress of a product or service might also be the combination of separately protectable marks. If, for instance, a computer manufacturer tagged its products with an image of a lemon, colored them a bright yellow, and imbued their laptops and peripherals with a lemon scent, all three tags contribute to the products’ trade dress despite the fact that each of them might be separately protected as a trademark when applied to computing machinery. Trade dress can now be registered as trademarks on the Principal Register in the United States. Nevertheless, the trade dresses for most products and services have not been registered. This may be because a trade dress, like a trade secret, is typically developed incrementally over time, and its value often becomes apparent to the owner only when another tries to capitalize upon it. Also, trade dress tends to be more protean than word and design marks. Whereas the hairstyle and apparel of Betty Crocker or the Morton Salt Girl needs to be updated only every few decades, the soundscape of a department store must be adjusted to evolving markets far more frequently to retain its potency. Moreover, trade dress often combines non-traditional marks like sounds, colors, and scents that retailers use to create a deeper emotional response in consumers than that engendered by purely visual marks. In recent decades, as these non-traditional marks and trade dress have become more prevalent, U.S. courts have recognized their capacity, like that of traditional word and design marks, to enable consumers to distinguish among sources of goods and services. Two Supreme Court cases, in particular, have established a vastly larger sphere of protectable trademarks than that of half a century ago. In Two Pesos, Inc. v. Taco Cabana, Inc., the Supreme Court determined that trade dress was entitled to the same protection as that afforded to word and design trademarks. The parties were small Mexican fast food chains that deployed a similar décor in all of their restaurants. Taco Cabana was established seven years earlier than Two Pesos, and claimed that Two Pesos infringed its trade dress by using interior decoration confusingly similar to theirs. The plaintiff’s description of their trade dress was more discursive than those typically used for word or design marks, comprising not only specific ornamental objects like “artifacts, paintings, and murals,” but also color schemes and architectural features like “a stepped exterior,” and “bright awnings and umbrellas.” A district court jury found Two Pesos liable for trademark infringement, having determined that that Taco Cabana’s décor was protectable trade dress because it was inherently distinctive, despite the fact that the plaintiff had not demonstrated that its trade dress had acquired secondary meaning. The Fifth Circuit upheld the lower court’s judgment and Two Pesos appealed. The Supreme Court granted a writ of certiorari because of a circuit split; the Second Circuit precedent conflicted with that of the Fifth, holding that, unlike a registered trademark, unregistered trade dress like the plaintiff’s could obtain protection under the Lanham Act only if it were inherently distinctive and had acquired secondary meaning through use in commerce. In Two Pesos, the Supreme Court rejected the Second Circuit’s narrower approach, and upheld the Fifth Circuit’s broader understanding of protection available to trade dress under the Lanham Act. Because trade dress serves exactly the same function as trademarks, the Court reasoned, there is no reason why trade dress should be subject to more stringent standards than traditional registered marks like words and designs, to obtain protection under the federal statute. Three years later, in Qualitex Co. v. Jacobson Prods. Co., the Supreme Court further accommodated trade dress as protectable information, determining that a single color could constitute a valid trademark. The single color at issue was a bilious green/gold hue that Qualitex used on the dry cleaning pads they manufactured. When Jacobson appealed the district court’s ruling that it was liable for infringing Qualitex’s single-color trademark, the Ninth Circuit court overturned this decision, finding that color alone could not qualify for trademark protection. Qualitex, in turn, appealed to the Supreme Court, which granted a writ of certiorari to resolve contradictory precedent from various federal circuit courts on the validity of single-color trademarks. The Supreme Court overruled the Ninth Circuit and upheld the validity of Qualitex’s single-color trademark registration. Like the multifaceted décor indicating Taco Cabana’s restaurant services, the particular shade of green with which Qualitex “dressed” its products distinguished them from those of others, and served no other practical purpose. Moreover, Qualitex had used the color in this capacity for over thirty years, during which it acquired distinctiveness as consumers came to associate it with this company’s product. Qualitex’s trade dress gradually matured into a protectable trademark as it developed secondary meaning through ongoing use in the marketplace. In other words, it is only through ongoing exposure to a single color used to dress a product that consumers will begin to link that particular color with that product’s manufacturer. This gradually built association renders the color protectable despite the fact that consumers may have encountered or associated it with unrelated products. Taco Cabana’s décor, on the other hand, was found to be inherently distinctive and therefore did not require a similar incubatory period in which to establish its eligibility for trademark protection. Such complex trade dress tends to be unique, and consumers are likely to immediately associate it with the source of the product or service it is “dressing”.  The term for a patent is only twenty years – shorter than the market lifespan of a successful perfume. Moreover, fragrances must be “useful” to be patented – not a designation that fragrance manufacturers would want applied to most of their products, particularly fine fragrances. As French courts ultimately determined, copyright is not a viable form of protection for fragrances, despite the creative thought their creation may involve, because this intellection cannot be communicated or perceived in an effective and consistent manner. Given these shortcomings of other forms of legal protection for intellectual property, trademark and trade dress emerge as the most viable options for protection. However, a number of idiosyncrasies particular to fragrance trade dress may condition its trademark protection. Recorded music is one of the most commonly used elements to create a distinctive trade dress, but recorded music is more tightly constrained by intellectual property law than is fragrance. Retailers typically do not own the copyrights of musical works that they broadcast in their stores, and therefore must pay royalties to their owners. However, the legitimate use of another’s intellectual property might become part of the user’s legally protectable multisensory trade dress. For instance, if one retailer were to consistently broadcast Bee Gees songs in its shops, it might be able to prevent other retailers from using these songs by claiming that consistent use and consumer association had transformed the music into a protectable component of its trade dress. Such use of another’s copyrighted material does not provide a retailer any legal interest in the music or the recordings themselves. If a retailer owns the underlying musical work being performed in connection with their goods, it might also seek trademark protection for the music itself. While sound marks typically comprise merely a few non-musical sounds or notes – like NBC’s – a larger musical work, like a jingle, can also function as a trademark. The efficacy of such marks, however, may ultimately depend upon consumers’ ongoing familiarity with the words of the jingle that identify the retailer or brand. Accordingly, while NBC’s sound mark continues to be effective, that of Mr. Softee, Inc. for instance, has become genericized. Today the tinkling sound of the Mr. Softee jingle, invariably heard without its long-forgotten words, conjures the sale of aerated ice cream from itinerant trucks by any number of purveyors. In fact, any singsong tune, rendered in a chimey timbre, and sounding from a truck on a city street during the summer will elicit memories of ice cream and popsicles. Because fragrance enjoys relatively limited intellectual property law protection, retailers are less legally constrained in their deployment of fragrance in their public sales spaces. Fragrances are not copyrightable works, so the copyright performance and display rights applicable to musical and artistic works do not regulate their release into communal spaces, even commercial spaces. Many small retailers and service providers like spas routinely scent their atmospheres, delivering established brands of fragrances through various delivery methods, such as aerosols, scented candles, and potpourris. For example, there is nothing objectionable to Diptyque or Shoyeido about a clothing boutique owner lighting a Diptyque candle in his shop, or a spa manager burning a stick of Shoyeido incense on the premises, because doing so promotes sales of these products among customers who inquire about what they smell. Fragrance brands would likely object, however, if a large retailer used their air conditioning system to disseminate one of their fragrances consistently, and without authorization. With scant intellectual property protection fragrance producers possess little control over use of their products, but trademark protection may offer an untapped compensatory benefit. Once Chanel sells a bottle of its well-known No. 5 the company has virtually no legal means of controlling how the buyer uses it. However, trademark may allow it to regain some authority over sales and use of this product. For instance, if Omni Hotels began to scent all of their properties with No. 5, rather than using their proprietary lemongrass fragrance, Chanel would likely assert a claim under the Lanham Act of unfair competition, and “passing off”. Even if Omni used no visual evidence of the brand, Chanel would argue that by “marking” their air with the well-known No. 5 Omni was attempting to lead consumers to believe that its mid-range hotels are legitimately associated with this purveyor of top-tier luxury products. This association would potentially sully Chanel’s image. Therefore, even though no other business uses No. 5 as trade dress, Chanel could prevent such use if it can demonstrate that consistently scenting the air of a commercial space would likely create confusion “as to the source, sponsorship, or association between goods or services.” Fragrance’s relatively brief period of perceptibility affects its trademark capacity. While consumers may “tune out” the sounds and images of a retailer’s trade dress they cannot stop hearing and seeing them unless they block or replace the sounds and images. In contrast, humans become habituated to scent relatively swiftly. Once we have perceived an odor, our awareness of it rapidly wanes even though we continue to be exposed to the same concentration of it in the atmosphere. Because of its brief period of perceptibility, fragrance is more likely to be protected as trade dress when used in a multisensory combination of various stimuli like colors, images, and sounds. When one first enters an interior space, a signature fragrance by itself may be the first confirmation that one is at a particular retailer, hotel, or spa. As that perception wanes, however, visual and aural stimuli will play a more prominent role in consumers’ awareness of a particular vendor. In fact, the consistent combination of a particular fragrance with other visual and aural stimuli will likely strengthen through such amalgamation, the association of that fragrance with a specific retailer. The greater the number of sensory elements comprising a trade dress, the more likely it is to be protectable as a distinctive indicator of a particular source of goods or services. Taco Cabana’s trade dress was protectable only because it combined a number of architectural and decorative elements; the murals, umbrellas, and interior design only become distinctive when combined. The greater the complexity of the trade dress, however, the narrower the scope of its protection. Accordingly, if Abercrombie were to claim a trade dress that comprises visual elements as well as sounds and scents, it would be difficult for this retailer to establish unfair competition based upon a competitor’s use of a discrete element of Abercrombie’s multisensory trade dress. Fragrance’s capacity for trademark protection may directly benefit retailers and fragrance brands, but not the industrial manufacturers of fragrance blends. A fragrance manufacturer cannot protect a fragrance as trade dress for its products or services because fragrances are its products and services. As such they cannot acquire the distinctiveness, or secondary meaning necessary to obtain trademark protection. Manufacturers sell even fine fragrances to retail products manufacturers like couture houses and cosmetic companies that package and label commissioned blends under their own brands. These brands, like retailers and hotel chains that scent their atmospheres, do not publicize the name of the manufacturer that produced the scent. In short, major fragrance manufacturers are akin to ghostwriters who cede copyright in their writings in exchange for fees from the commissioning parties to whom the published works are attributed. Although they are not the primary beneficiaries of fragrance trade dress protection, fragrance manufacturers may indirectly capitalize on the growing accommodation under U.S. trademark law for the protection of non-traditional trade dress. Ghostwriters are aware of the economic value of the copyrights that they assign to the attributed author of their works, and this value is reflected in their fees. The fact that a commissioned fragrance may now be deployed and protected as trade dress adds economic value greater than that of fragrances distributed exclusively as retail products. Given that fragrances increasingly function as valuable and legally protectable branding agents, fragrance creators should factor this development into the fees they charge for the creation and production of products deployed in this innovative manner.  As discussed earlier, once this information has been disseminated there is little recourse under copyright or trade secret law to check its distribution or implementation. Patents also are of limited efficacy to fragrance manufacturers, effectively protecting only newly discovered “captive” molecules. Johann Böttiger’s enterprise (Meissen Porcelain) lost its most valuable, and seemingly mission-critical, trade secret within decades of its establishment. Yet, hundreds of years after what would appear to have been a devastating loss, Meissen Porcelain is flourishing not only because it diversified its merchandise, but more importantly because it capitalized upon the prestige associated with the quality of its porcelain, and also its market lead, made possible by the fact that it was the first European enterprise capable of producing it. Like Meissen Porcelain, major fragrance houses have long histories, most having existed for well over a century. Unlike Meissen, however, these fragrance companies have functioned as ghostwriters, creating and manufacturing products ultimately sold as emanations of their customers, including couture houses, retailers, and consumer products companies. To an increasing extent, these fragrances are not merely sold by retailers as consumer products but are also used, like broadcast recordings of musical works, as a component of a larger trade dress by which consumers identify a particular retailer or service provider. The economic potential in fragrance trade dress can be analogized to that inherent in the public performance of copyrighted musical works. Copyright owners of musical works cannot control, or derive financial benefit from, private performances of their songs. When their copyrighted compositions are performed in public, however, they are legally entitled to receive royalties for these uses of their works. Like copyright owners, fragrance manufacturers and retailers cannot control, or derive financial benefit from, private uses of their legitimately acquired products. Nonetheless, as these products are increasingly deployed in public – especially commercial – spaces, they acquire value beyond that ascribable to their hedonic attributes, by contributing to the branding of a commercial product or service. In other words, just as a copyrighted song realizes greater economic value through public performances, a fragrance acquires greater economic value when it becomes part of a legally protectable trade dress through its deployment in a commercial public space. The legal protections for fragrance remain limited. Like the Meissen Porcelain enterprise in the 1720s, individual fragrance manufacturers today can never recapture once-secret information that is now widely known, or readily and legitimately ascertained by others through reverse engineering. Accordingly, trade secret protection is an increasingly elusive quarry for this industry. Patent protection is similarly inefficacious, due to its limited duration and requirement of usefulness — a characterization unpalatable to luxury purveyors. As works of fragrance are not copyrightable, their diffusion in public spaces cannot be regulated as performances of them. When such use results in the establishment of legally protectable trade dress, however, fragrance creators could acquire a portion of the economic value of this interest, in the creation of which they have played a significant role. By capitalizing on the value stemming from the increasing use of fragrances in establishing protected brands, fragrance houses might find through trademark law partial compensation for this loss of intellectual property.
Fashion is a form of imitation and so of social equalization . . . . It unites those of a social class and segregates them from others.
 Infusing human creativity with aesthetic imagination, fashion design makes men and women look endlessly appealing with the constant emergence of new fashion trends. But this quest for beauty and fantasy does not come without cost. Rather, to stay in fashion, one needs to ceaselessly acquire new items defined by the latest fashion trends. In this marketplace, fashion has become a very simple idea. It is about money. It is one’s purchasing power that determines whether one can be fashionable. Furthermore, designers have acknowledged that having business acumen has become crucial for faring well, because fashion has been dominated by commercial strategies. It is therefore no wonder that the world of fashion has become a gigantic industry. It is estimated that the 2012 revenue of the fashion industry hit $482.8 billion. With the increasingly rapid commercialization of fashion creativity, trademark law has been adapted to provide stronger protection for famous fashion brands. This is particularly important for the fashion industry because intellectual property law generally does not protect fashion designs, except for trademarks used to merchandize fashion designs. But how far should trademark law go in strengthening legal protection of the fashion industry? This issue is now more important than ever. Recent years have seen formidable power amassed by some rapidly expanding luxury companies, which has not only overshadowed certain part of the fashion sector but has also threatened free speech and humanitarian initiatives. The scope of trademark protection looms even larger in the wake of the recent fashion war waged in the United States by two French luxury fashion companies: Christian Louboutin and Yves Saint Laurent. The former has made the red sole the iconic design feature of its women’s footwear. During this fashion war, Christian Louboutin asserted that it should have complete “territorial” control of the red sole, to be landmarked by flags of trademark protection. By focusing on this fashion warfare, this article opens a perspective on the ramifications of the trademarkability of the red sole for the role of trademark law in regulating the development of the fashion industry and the cultural evolution of human society. It argues that we should reconsider whether Louboutin’s red sole mark is distinctive enough to warrant trademark protection. The article proposes that this issue must be examined from the social justice perspective. It contends that social justice should have the trumping power to deny trademark protection of the red sole mark even if it is adequately distinctive. A closer look at the concept of trademark distinctiveness, as this article shows, sheds new light on whether single color marks like the red sole mark merit trademark protection. Since the Louboutin litigation, commentators have overwhelmingly focused on the role of the aesthetic functionality doctrine in deciding the trademarkability of single color marks. Indeed, the courts that decided the Louboutin cases focused heavily on the aesthetic functionality doctrine. This focus, however, may have led both commentators and the courts to take for granted that the Louboutin red sole mark is adequately distinctive. By contrast, paying greater consideration to the concept of trademark distinctiveness will reveal that the Louboutin red sole mark may not be adequately distinctive to warrant trademark protection. This conclusion carries very far-reaching implications. The red sole warfare is still raging in the fashion arena. In the United States, after its litigation against YSL, Christian Louboutin commenced action against other fashion companies that marketed red-sole shoes. In Europe, Christian Louboutin launched similar legal actions against Zara and Van Haren, two fast fashion companies that have also marketed red-sole shoes. The fashion world still awaits a final answer as to whether Christian Louboutin can legally monopolize the color red on shoe soles by defending the trademarkability of its red sole mark. Moreover, there has been an increasing number of single color symbols registered as trademarks. This raises the question of whether single color marks will hinder competition and harm consumer interests. Statistics show that a number of single color trademarks have been registered in the United States. More surprisingly, familiar colors are protected by registered trademarks. Target owns a trademark for its signature red, Tiffany for its Tiffany blue, UPS for brown, and T-Mobile for magenta. On the other hand, the social justice perspective discussed in this article calls for a theoretical and policy shift in trademark theory. Trademark law has long been shaped by the economic efficiency policy. Following this policy, trademark law serves the economic need to incentivize enterprises to offer high quality goods and to protect the consumer interest in obtaining correct information about the source of goods. As utilitarian-based economic calculations are notorious for neglect of distributive issues, conventional trademark theory has also turned a blind eye to the social justice dimension of the law. Nevertheless, this issue awaits acute diagnosis and treatment. Recent decades have seen trademark law evolve from the guarantee of the authenticity of sources of goods and services into a legal instrument with an additional status-conferring function. The statutory insertion of anti-dilution protection exemplifies this shift. With worsening social inequalities nationally and globally, this Article argues that social justice must be wholeheartedly embraced as a core value for trademark protection of famous trademarks (especially those famous luxury brands). Without nuanced social justice analysis, trademark theory and practice will continue to shield the rich from the world of poverty. Against this backdrop, the red sole mark as a luxury brand provides a lens through which we can re-examine the social justice issues in trademark law. It further shows the urgent need to inject social justice considerations into the ongoing debate about how intellectual property law should be reformed to encourage fashion design innovation. This Article proceeds as follows. Part I discusses the role of the concept of trademark distinctiveness in the law and how the Louboutin courts dealt with this issue. Part II examines the complexity of weighing the acquired distinctiveness status of marks by courts. It further reveals that the Louboutin courts unduly simplified the inquiry into whether the Louboutin red sole mark had acquired requisite distinctiveness. Based on these discussions, Part III puts forward the social justice mandate that should be incorporated into the judicial scrutiny of the distinctiveness of a mark. It shows that the Louboutin courts shied away from confronting the social injustices that had been caused by the protection of the Louboutin red sole trademark. These damaged social justice values, the Article will further show, have been long cherished by the American liberal tradition and the equality-oriented protections of the First and Fourteenth Amendments.  The concept of distinctiveness serves as a threshold requirement in trademark law, filtering out signs that are not capable of indicating sources. Conventionally, the distinctiveness of a mark is weighed by the Abercrombie test, which was set forth in Abercrombie & Fitch Co. v. Hunting World, Inc. Following this test, courts frequently classify marks into four categories in order of generally decreasing distinctiveness: (1) arbitrary or fanciful; (2) suggestive; (3) descriptive; and (4) generic. Marks falling into any of the first two categories are deemed inherently distinctive and capable of being registered as trademarks. Descriptive marks that comprise the third category can be registered as trademarks only if they acquired distinctiveness through use. Generic marks form the last category of marks. They completely lack distinctivenessand thus cannot be registered as a trademark. For example, “apple” is a generic mark for apples, as would be “fruit.” Therefore, the Abercrombietest identifies inherent and acquired distinctiveness as two kinds of source-indicating capability that would make signs initially eligible for trademark protection.  For example, “Kodak” for photographic equipment or “Exxon” for oil and gas products and services. Arbitrary marks are signs with dictionary meanings and in common usage that do not in any respect describe the goods or service to which they are attached. Like a fanciful mark, an arbitrary mark is inherently distinctive, but only “within its product market and entitled to little or no protection outside of that area.” For example, “Apple” is arbitrary for computers, but generic for apples and descriptive for apple-flavored candy, liquor, or pies. Suggestive marks are also inherently distinctive and considered strong marks, but less so than arbitrary or fanciful marks. They have a descriptive aspect but differ from descriptive marks in that they merely suggest rather than describe the qualities of the goods or services to which they are attached. The predominant test of whether a mark is suggestive or descriptive is the so-called “imagination test,” which holds that a mark “is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods” and “descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” For example, the word “Citibank” is suggestive because it suggests “an urban or modern bank.” Likewise, “Goliath” suggests “a large size” pencil and “Roach Motel” suggests insect traps.  Descriptive marks are not inherently distinctive but may acquire distinctiveness over time and use if the public comes to recognize the mark as an indication of a source, thus granting the mark acquired distinctiveness or “secondary meaning.” For example, the word “Best” for milk connotes to buyers an assertion of quality. This descriptive connotation is the “primary” meaning of the word “Best.” Over a period of extensive advertising and sales, however, the word “Best” may acquire a new and different meaning such that milk buyers associate the word “Best” not just with its primary meaning of high-quality milk, but also with a developed “secondary” meaning indicating a particular milk producer. For a descriptive mark to acquire a secondary meaning, it is not necessary for the public to be able to identify the source by name: “it is sufficient if the public is aware that the product comes from a single, though anonymous, source.” The most important factor is whether consumers are able to associate a mark with a producer of goods. However, even if a mark that has acquired a second meaning may not be protectable where the mark is “functional,” that is, where it is essential to the use or purpose of the product or affects the cost or quality of the product. Qualitex Co. v. Jacobson Products Co., Inc., a landmark Supreme Court case, dealt with the functionality doctrine. The mark in question was a green-gold color. Apart from using that color to avoid noticeable stains, the green-gold color served no other function. There was also no competitive need in the industry for such a green-gold color, as other colors were equally usable. Therefore, the Supreme Court held that the color met the legal requirements for a trademark as it “acts as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”   This justification has heavily informed the evolution of major trademark doctrines including the concept of trademark distinctiveness. For example, if the brand “Sanka” had no name, a consumer ordering it in a restaurant would have to ask for “the decaffeinated coffee made by General Foods.” This requires the consumer to remember more and say more, and also requires the waiter to read and remember more than just a “Sanka.” Landes and Posner’s model also identifies “administrative costs” associated with litigating and resolving disputes on questions of protectability. Although courts could always inquire into the economic effects of allowing a particular producer to have exclusive rights to a particular mark, the administrative costs of doing so would outweigh any expected benefits. Therefore, “the law has sorted potential marks into a few broad classes according to distinctiveness and has made classification determinative of legality.” Under Landes and Posner’s model, fanciful, arbitrary, and suggestive marks are inherently distinctive and eligible for trademark protection not because of consumers’ perception of their distinctiveness, but because the “elasticity of supply” of such terms is high, since there are plenty of words for sellers to choose from. Hence, protection of these categories of terms will not impose significant costs on competitors. On the other hand, descriptive marks are prima facie ineligible for protection because a given product only has so many attributes and protection of a word that describes a key attribute will enable the trademark holder to obtain economic rent by making it “more costly for his rivals to inform their customers of the attributes of their brands without using the same descriptive word.” Hence, protection for such non-distinctive terms would cause social loss and hamper competition. However, Landes and Posner’s model does not distinguish between a descriptive mark that has acquired distinctiveness and one that is inherently distinctive. As long as the mark is distinctive, the economic model presumes that trademark protection could lower consumers’ search costs by indicating the source of the goods, and hence create net social benefits.  the Supreme Court’s Qualitex decision paved the way for increased registrations of single color trademarks. The recent litigation between Christian Louboutin and YSL raised a question as to whether the red sole could be eligible for trademark protection. Christian Louboutin, a French luxury company, has used red lacquered outsoles for its high fashion women’s shoes since 1992. It applied to register the red sole mark and the U.S. Patent and Trademark Office approved the application in 2008. In 2011, YSL sold four monochromatic shoe models bearing red outsoles similar to those of Louboutin. After failed negotiations, Christian Louboutin filed a lawsuit against YSL in the Southern District of New York for trademark infringement and sought a preliminary injunction to prevent YSL from marketing the shoes concerned. In response, YSL counter-claimed for cancellation of Christian Louboutin’s trademark on the grounds that it is not distinctive. The District Court ruled in favour of YSL, holding that the red sole mark was a functional aspect of fashion design and thereby not eligible for trademark protection. Christian Louboutin appealed to the Second Circuit, which later overturned the District Court’s decision on the functionality of the red sole mark.   After considering the special role of the red color in fashion design, the District Court concluded that the registration of the red sole mark should be invalidated. Although Louboutin’s certificate of registration gave rise to the statutory presumption that the trademark was valid and merited protection, the District Court determined that the presumption of validity may be rebutted. In rebutting the presumption, the District Court turned to the Supreme Court’s Qualitex decision, which held that color might be protectable as a trademark “where that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand.” However, it may not be protectable where it is “functional,” meaning that color is essential to the use or purpose of the product, or affects the cost or quality of the product. In other words, color can meet the legal requirements for a trademark only if “it can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Following the Qualitex decision, the District Court pointed out that trademark protection has been extended to a single color in other industries. However, in the fashion industry, only distinct patterns or combinations of shades and colors that create a distinct recognizable mark were eligible for trademark protection. Applying the law to the facts, the District Court reasoned that given the unique characteristics and needs of the fashion industry, color serves not simply to identify or advertise a commercial source, but possesses ornamental beauty and performs a creative function, aiming to please, beautify, and be useful. The District Court quoted Christian Louboutin himself, who acknowledged significant, non-trademark functions for choosing red for his outsoles, such as showing “sex appeal” and “energy.” Furthermore, adding a red lacquered finish to the shoe also made the cost of production higher than the cost for those without the same ornamental finish. Therefore, Christian Louboutin’s trademark registration for use of a single lacquered red color on outsoles was “functional,” and had affected the cost and quality of the shoes and also significantly undermined competitors’ ability to compete in the fashion industry. On these grounds, the District Court ruled that a single color can never serve as a trademark in the fashion industry, rendering the red sole mark ineligible for trademark protection.  The Second Circuit pointed out that the doctrine denies trademark protection only where “an ornamental feature is claimed as a trademark and trademark protection would significantly hinder competition by limiting the range of adequate alternative designs.” However, “distinctive and arbitrary arrangements of predominantly ornamental features” that do not “significantly undermine competitors’ ability to compete in the relevant market” are non-functional and thus eligible for trademark protection. After rejecting the District Court’s blanket exclusion of single color fashion marks from trademark protection, the Second Circuit proceeded to determine whether the red sole mark was distinctive enough to merit trademark protection. The Supreme Court has held that color marks “can never be inherently distinctive.” They can only be protected as trademarks if they have acquired secondary meaning. The Second Circuit followed the Supreme Court’s decisions by directly examining whether the red sole mark has gained sufficient secondary meaning in the minds of the public. The Second Circuit pointed to evidence submitted by Louboutin that included substantial advertising expenditures, widespread media coverage, and prominent sales success. The combination of these evidential facts demonstrated that Louboutin’s color mark had requisite secondary meaning so as to merit trademark protection when used as a red outsole contrasting with the remainder of the shoe. The Second Circuit, however, found that without the contrast with the remainder of the shoe, the Louboutin’s red sole mark had not acquired requisite secondary meaning. In particular, the court ruled that it had not done so “in an application of a red sole to a red shoe.” Therefore, it held that YSL’s use of the red sole on its monochrome shoes did not constitute use of the Louboutin red sole mark. Nor had it caused likelihood of confusion. The court further held that the evidence presented by Louboutin failed to demonstrate that the secondary meaning of the red sole mark extended to uses in which the sole did not contrast with the remainder of the shoe. In particular, Louboutin’s own consumer surveys show that when consumers were shown YSL’s monochrome red shoe, nearly everyone misidentified the red sole of the shoe as Louboutin’s, rather than its red color generally. Therefore, the Court held that Louboutin’s trademark protection was limited to the use of contrasting red lacquered outsoles only. And since Louboutin sought to enjoin YSL from using a red sole as part of a monochrome red shoe, the District Court’s order to deny preliminary injunction to Louboutin was affirmed in part.  the doctrine of secondary meaning allows a user of a non-inherently distinctive symbol to receive trademark protection if his attempts are effective enough to achieve consumer recognition of the symbol as source-identifying. Therefore, plaintiffs (senior mark users) must furnish evidence showing the acquisition of secondary meaning. Although courts have applied slightly different standards of review, they have taken the following two steps to examine the existence of secondary meaning. First, courts consider the scope of the purchasing public that may associate a mark with the producer. Second, courts determine the effectiveness of a plaintiff’s promotional efforts in creating secondary meaning among the purchasing public.  It is therefore important to identify the relevant purchasing public. In most cases, the purchasing public consists of consumers. However, if the relevant buying class consists of both dealers and ultimate consumers, then the state of mind of the dealers would also be important. Case law has adopted the notion that it is the mental association of the mark in the minds of current as well as prospective buyers that matters. This precludes asking merely what a casual and disinterested potential consumer thought. For example, in Levi Strauss & Co. v. Blue Bell, Inc. the court asserted that “[t]he basic element of secondary meaning is, thus, the mental association by a substantial segment of consumers and potential consumers between the alleged mark and a single source of the product.” Specifically, courts have ruled that the purchasing public refers to a specific segment of the general public. For example, in Centaur Communications, Ltd. v. A/S/M Communications, Inc., the relevant segment of the purchasing public for determining whether secondary meaning exists for the title of a marketing trade magazine was defined as “executives in the international marketing and advertising community in the United States.” The court further declared that, “[i]t is only necessary to show that a substantial segment of the relevant group of consumers made the requisite association between the product and the producer.”  It is only necessary that a “substantial part” of the purchasing public or a “significant number” of prospective purchasers identify the term as a trademark. Case law has followed this guidance. For instance, the court in Folmer Graflex Corp. v. Graphic Photo Serv. specified that “[w]hat is required is that a substantial section of the purchasing public should be proved to identify the trade name of the plaintiff’s goods, and that this should be true of the district in which the defendant’s trade is done.” Moreover, another court in North Carolina Dairy Foundation, Inc. v. Foremost-Mackesson, Inc. confirmed that “[p]roof of secondary meaning is sufficient if it is shown that a substantial segment of the buying population associates the mark with a single source.” Courts have defined in different ways what a “substantial number” of the purchasing public means. Some courts have emphasized that secondary meaning requires proof that more than a “relatively small number of people” associate the designation with the applicant for registration. Other courts have required “more than proof of the existence of one person or even a relatively small number of people who associate the term with a single source.” In Norm Thompson Outfitters, Inc. v. General Motors Corp., the court pointed to the “sparseness of people” who associate the mark with plaintiff in holding that acquisition of secondary meaning had not adequately been shown. Where a survey has been conducted to ascertain the percentage of people for whom the mark has acquired secondary meaning, courts have been vague in defining what the minimum acceptable percentage is. However, it is clear that a percentage below 10 percent is generally insufficient. In Roselux Chemical Co. v. Parsons Ammonia Co., a survey showing that ten percent of users associated the name with a single source was deemed insufficient. Likewise, in Citizens Banking Corp. v. Citizens Financial Group, Inc., an eight percent identification with the plaintiff’s mark was found “insufficient to demonstrate secondary meaning.”  To determine whether a term has acquired secondary meaning, courts usually require the senior mark user to submit direct evidence in the form of direct consumer testimonies and/or consumer surveys. Courts also consider circumstantial evidence such as: (1) exclusivity, length, and manner of use; (2) amount and manner of advertising; (3) amount of sales and number of customers; (4) established place in the market; and/or (5) proof of intentional copying. Direct evidence in the form of consumer testimonies and professionally conducted surveys is important because it directly reflects buyers’ state of mind. The Eighth Circuit stated that “[c]onsumer surveys are recognized by several circuits as the most direct and persuasive evidence of secondary meaning.” The Ninth Circuit also deemed consumer surveys “the most persuasive evidence of secondary meaning.” If a case is unclear, a survey is usually necessary to prove secondary meaning. However, survey evidence is “not a requirement for such proof,” and the “absence of consumer surveys need not preclude a finding of acquired distinctiveness.” In fact, secondary meaning is more often proved by circumstantial evidence, which is “sufficient to meet a party’s burden of proof to establish a claim.” Circumstantial evidence of the seller’s efforts in advertising the mark routinely consists of evidence of the size of the seller, the number of sales made, large amounts spent in promotion and advertising, the scope of publicity given to the mark, and any similar evidence showing wide exposure of the buyer class to the mark in question. However, in determining whether a mark has acquired secondary meaning, the crucial issue is not the promotional efforts made by a senior mark user, but the effectiveness of those efforts. As the Federal Circuit put it, “[t]he test of secondary meaning is the effectiveness of the efforts to create it.” For example, in Tonawanda Street Corp. v. Fay’s Drug Co., Inc., the court held that long and exclusive use without evidence of consumer recognition was insufficient in proving secondary meaning. And in Genovese Drug Stores, Inc. v. TGC Stores, Inc., the court held that “[t]he expenditure of large sums of money alone does not establish secondary meaning ‘unless the [trademark proprietor] explains how its efforts were effective in causing the relevant group of consumers to associate the mark with [a single source].’” As to the minimum sufficiency of evidence required to prove secondary meaning, the general rule is that the more descriptive the term, the greater the evidentiary burden to establish secondary meaning. In other words, the less distinctive the term, the greater the quantity and quality of evidence of secondary meaning needed to prove the requisite degree of distinctiveness. For example, in Supreme Wine Co. v. American Distilling Co., the court found that, “the word ‘supreme’ is so totally lacking in distinctiveness, originality and uniqueness that, in the absence of compelling proof that it has acquired a secondary meaning to the buying public, it is not entitled to trademark protection.” Moreover, in Commerce Nat. Ins. Services, Inc. v. Commerce Ins. Agency, Inc., the court held that for a highly descriptive term, “the evidentiary bar must be placed somewhat higher.” For example, if survey evidence was used for a highly descriptive mark, then the evidentiary proof of secondary meaning would correspondingly require a higher percentage of survey respondents who could recognize or associate the mark with the seller. This approach is also taken by the Federal Circuit, which ruled that the burden to prove secondary meaning “becomes more difficult as the mark’s descriptiveness increases.” The Restatement also observes that “[h]ighly descriptive terms . . . are less likely to be perceived as trademarks and more likely to be useful to competing sellers than are less descriptive terms. More substantial evidence of secondary meaning thus will ordinarily be required to establish their distinctiveness.”  This section will demonstrate that the Louboutin courts have failed to take seriously the two key issues in the secondary meaning inquiry as discussed in the preceding section. The courts’ upholding of the distinctiveness of the red sole mark is thus dubious, a point that has not yet been raised by many commentators.  In this process, courts consider whether prospective consumers will likely be confused about sources of goods or services. For example, in American Luggage Works, Inc. v. United States Trunk Co., the plaintiffs failed to prove that retail dealers would likely be confused by the defendant’s hand luggage bag designs, because they tended to make a purchase “only after [a] detailed talk with a manufacturer’s salesman or upon careful inspection of a manufacturer’s catalog or both.” The court held that, “the issue is not whether the goods would be confused by a casual observer, (trained or untrained, professional or lay,) but the issue is whether the goods would be confused by a prospective purchaser at the time he considered making the purchase.” Although the District Court in the Louboutin litigation invalidated the red sole mark, it indirectly acknowledged that the mark had acquired secondary meaning as follows:
In an acquisitive society, the drive for monopoly advantage is a very powerful pressure. Unchecked, it would no doubt . . . register the sun and the moon as exclusive trade-marks.
Ralph S. Brown
Film stars and other A-list notables equally pay homage, at prices that for some styles command as much as $1,000 a pair. And even at that expense, a respectable niche of consumers wears the brand, to the tune of about 240,000 pairs a year sold in the United States, with revenues of approximately $135 million projected for 2011. When Hollywood starlets cross red carpets and high fashion models strut down runways, and heads turn and eyes drop to the celebrities’ feet, lacquered red outsoles on high-heeled, black shoes flaunt a glamorous statement that pops out at once. For those in the know, cognitive bulbs instantly flash to associate: “Louboutin.” This recognition is acknowledged, for instance, at least by a clientele of the well-heeled, in the words of a lyrical stylist of modern times [in Jennifer Lopez’s “Louboutins” song].With this presentation of facts, the District Court quickly concluded that the red sole mark had morphed into a brand with “worldwide recognition at the high end of women’s wear.” The Second Circuit agreed with the District Court’s line of reasoning in this regard. The passage quoted above, however, merely shows that only a small number of famous people like film stars and A-list notables were counted as the consuming public for the secondary meaning inquiry. The mention of the “Louboutins” song, again, indicates only that high-profile people like Jennifer Lopez are regular consumers of red-soled Louboutin shoes. Although the District Court referred to the fact that around 240,000 pairs of shoes were sold in America in a particular year, it did not direct Louboutin to prove who bought their shoes. Are the buyers only those celebrities who are rich enough to buy many pairs for red-carpet events? Or are they wealthy women living in gated suburbs? Or could they be college students who dream of finding jobs in Wall Street and wear red-soled Louboutin shoes to impress their future employers? Neither the District Court nor the Second Circuit delved into this issue by specifying the relevant segment of the consuming public for the secondary meaning inquiry.  and a showing of secondary meaning is required in weighing whether a single color mark can qualify for trademark protection. Nevertheless, nothing else in the District Court’s decision addressed whether the evidence presented by Christian Louboutin showed their promotional efforts had been effective in creating secondary meaning. Instead, the District Court invalidated the red sole mark by relying on the functionality doctrine. While the Circuit Court overturned the District Court’s ruling with regard to the functionality doctrine, it deferred to the District Court’s ambiguous ruling on the acquisition of requisite secondary meaning by Christian Louboutin. In doing so, the Circuit Court quickly concluded as follows:
The record before the District Court included extensive evidence of Louboutin’s advertising expenditures, media coverage, and sales success, demonstrating both that Louboutin has created a “symbol” within the meaning of Qualitex, . . . and that the symbol has gained secondary meaning that causes it to be “uniquely” associated with the Louboutin brand . . . . There is no dispute that Louboutin originated this particular commercial use of the lacquered red color over twenty years ago. As the District Court determined, in findings of fact that are supported by the record and not clearly erroneous, “Louboutin invested substantial amounts of capital building a reputation and good will, as well as promoting and protecting Louboutin’s claim to exclusive ownership of the mark as its signature in women’s high fashion footwear.” . . . And there is no dispute that Louboutin’s efforts were successful “to the point where, in the high-stakes commercial markets and social circles in which these things matter a great deal, the red outsole became closely associated with Louboutin,” . . . and where unsolicited media attention to that red sole became rampant.This passage showed that the Second Circuit heavily relied on the District Court’s finding that the red sole mark had acquired secondary meaning. However, this inference is arguably inappropriate. Elsewhere in its decision, the Circuit Court quickly confirmed that “[w]here, as here, the record contains sufficient undisputed facts to resolve the question of distinctiveness—not to speak of facts found by the District Court that are based upon evidence of record and not clearly erroneous—we may do so as a matter of law.” However, the District Court, as I showed earlier, did not delve deeply into the secondary meaning inquiry. It simply repeated some of the promotional facts submitted by Louboutin, but did not conduct an evidential inquiry to weigh whether promotional efforts were actually effective in creating secondary meaning. Because of the District Court’s focus on the functionality doctrine, the overall decision ignored the necessity of applying the secondary meaning doctrine rigorously, leading to an incomplete application of it in the Louboutin decision. It did not ascertain the relevant segment of the consuming public that would designate the red sole mark as the symbol for identifying source. Nor did it discuss whether Louboutin had presented sufficient evidence to show the effectiveness of its promotional efforts in establishing the secondary meaning of the red sole mark. Moreover, it was also inappropriate for the Second Circuit to cite the Warner Bros., Inc. v. Gay Toys, Inc. decision to support its treatment of the acquired secondary meaning of the red sole mark as a matter of law rather than a factual inquiry. This is because the Warner Bros. court did not appropriately apply the secondary meaning doctrine. It did not consider the relevant segment of the consuming public, nor did it require the plaintiff to show evidence proving the effectiveness of its promotional efforts. Against this backdrop, the Second Circuit did not point out that the District Court had erroneously ignored the need to apply the secondary meaning doctrine. Nor did the Circuit Court provide sufficient analysis of the effectiveness of Louboutin’s promotional efforts in creating secondary meaning. In the single passage quoted above, the Second Circuit did not explain why Louboutin’s advertising expenditures, media coverage, and sales success would necessarily lead to the creation of secondary meaning. For example, regarding sales success, the Second Circuit must have noticed that the District Court cited the fact that 240,000 pairs of shoes were sold in America in a particular year. But what is critical in the secondary meaning analysis is “whether the public is moved in any degree to buy an article because of its source.” Therefore, the Second Circuit should examine whether the public’s purchase of Louboutin was motivated by their recognition of the red sole as the indicator of Louboutin being the producer the red-soled shoes. Like the District Court, the Second Circuit, however, did not consider at all why people purchased Louboutin shoes. Was it because people were attracted by the Christian Louboutin brand only, or by the overall design of its shoes? Or was it because consumers were motivated to buy on the basis of their mental association between the red sole and Louboutin shoes? In other words, the Second Circuit should have responded specifically to the third question and then considered why sales success could show that the red sole mark had acquired secondary meaning in the marketplace. It pointed out that unsolicited media attention to the red sole mark had become rampant, but it did not discuss whether Christian Louboutin had furnished any data to show the extent of media coverage. Worse still, it did not consider whether media coverage was actually effective in helping Christian Louboutin acquire secondary meaning. Another issue the Louboutin courts failed to deal with was whether a heightened evidentiary burden should be placed on Louboutin. As discussed above, the more descriptive a mark is, the greater the evidentiary burden to establish secondary meaning. As YSL counter-argued, “[r]ed outsoles are a commonly used ornamental design feature in footwear, dating as far back as the red shoes worn by King Louis XIV in the 1600s and the ruby red shoes that carried Dorothy home in The Wizard of Oz.” The common use of red outsoles may indicate that they function to describe certain aesthetic features. Therefore, the Louboutin courts should have considered whether the red sole mark was highly descriptive or not. If it was, then Louboutin should have presented more evidence to prove that the red sole mark had acquired requisite secondary meaning.  Media coverage about fashion has been rife with the discussion about how expensive Christian Louboutin shoes are. It was reported that a pair of Lady Spiked Leopard-Print Platform Pumps with a 5 3/4-inch heel cost $1,595, a pair of black boots $2,645, and a pair of crystal-encrusted shoes $6,000. Journalists and online commentators complain about high prices in a whimsical vein. For example, a New York Times essay lamented that “Versions of [Louboutin] shoes in exotic skins, like crocodile, can cost as much as $4,645, which, it is strange to say, is anything but exceptional in this world.” Unsurprisingly, a direct consequence of red-sole monopolization is that other fashion houses and ordinary shoe makers will not be allowed to use red soles on the bottoms of their shoes. This will lead to an indirect consequence, that medium- or low-income people will not be able to purchase and consume red-soled shoes since the red-soled shoes are all priced very high after they are attached to the red color mark and the Christian Louboutin word mark. The economic injustice caused by the red-sole trademark carries two major implications. On a legal level, the red-sole trademark would deprive the poor or even middle-income people of the privilege of buying/wearing shoes with red soles. Louboutin’s red sole trademark would prohibit any other shoe maker from making shoes with red soles or even clothes and handbags imprinted with pictures of non-Louboutin red-soled shoes. Any use of the red sole, in this context, would trigger violation of trademark law, thanks to the likelihood of confusion doctrine or the trademark dilution doctrine. When Christian Louboutin dominates the market with its trademark power, no other shoe makers are allowed to make and sell shoes with red soles. Poor women will not be able to buy cheap shoes with red soles. Poor men will not be able to afford to gift their beloved women with shoes with red soles. If poor persons desire to own red-soled shoes, they will have to save up for a long while while sacrificing spending on other goods in order to afford a pair of Louboutin shoes. Alternatively, they can put their red-sole dreams on hold, aspire to become rich first, achieve wealth, and then buy Louboutin shoes as a declaration of their finally being rich. But how many poor people can achieve that in contemporary American society with its increased concentration of social wealth among the top 1 percent while the laws are being changed increasingly in favor of big companies like Christian Louboutin? Moreover, on the ethical level, the red-sole trademark would legitimize egoist luxury spending behavior without due regard to the suffering of the poor. By upholding the red-sole trademark registration, the court signaled its implicit endorsement of pricey red-soled shoes that can only be merchandized by Christian Louboutin. Because luxury goods protected by trademarks only target people with deep pockets, it makes sense for luxury companies like Christian Louboutin to exclude those who still struggle for bread and butter from owning red-soled shoes. One may point out that this pure economic or monetary calculation is fine when trademark law is applied in its literal sense, but it may not be as permissible if ethical considerations are channeled into the legal analysis. Ethically speaking, is it still fine that as long as Louboutin has acquired secondary meaning, the red-sole color mark should be trademarked as a symbol catering only to the rich? Many people may respond in the negative. The judicial recognition of the red-sole trademark, in fact, has caused a profound ethical consequence. It will translate into an implicit endorsement of the luxury strategy that makes red-soled shoes “patently, obscenely, even self-destructively overpriced.” Consequently, other shoe makers’ attempts to lower the prices of red-soled shoes for low-or-middle-income people by making and selling them without the Christian Louboutin tag would be penalized as a violation of trademark law.
Louboutin actively polices the Red Sole Mark to shut down copyists. This task will become impossible if competitors can copy the Red Sole Mark at will, as YSL has done here. Already another competitor has signaled its intent to follow suit. A flood of red soles in high fashion women’s footwear creates the danger that Louboutin’s goodwill, market prominence and fame will be destroyed, thus threatening its entire business.This statement, however, begs the question why Christian Louboutin as a commercial entity only desires to use red-soles to serve rich and famous people. The reason is very simple. Louboutin has marketed the red sole by adding the luxury aura to the energy and passion signaled by the color red. The red sole, therefore, is elevated as a luxury symbol for a luxury company that caters to the rich and famous. Conspicuous consumption describes the behavior of consuming luxury goods where less expensive substitutes bring the same or even higher functional utilities. Rich people showcase their pecuniary strength through conspicuous consumption to affirm their social status. To explain the relationship between luxury goods and conspicuous consumption, Thorstein Veblen argued that it is not the accumulation of wealth that confers status but the evidence of wealth which requires its wasteful exhibition. The possession of luxury goods which are priced much higher than their non-luxury equivalents connotes affluence and generates superiority as consumers consider themselves one of the few who can afford the goods. Conspicuous consumption has been highlighted as a major selling point in modern luxury merchandising. Luxury companies use high prices as a marker of quality, craftsmanship, and design of their products, and limit possession of luxury goods to those who can afford them. Therefore, they allow their customers to publicly signal their status in society and to gain the esteem of others. The registration of the red sole as a trademark has entrenched this mark as part of the conspicuous consumption of luxury goods. While price connotes social status, price itself, however, does not determine the desirability of a brand. Consumers have the propensity to associate a particular brand with the “type” of consumers who buys that brand. Louboutin can monopolize the red-sole and dominate the red-sole market serving the likes of Wall Street and Hollywood. During the litigation against YSL, Christian Louboutin flaunted a long list of celebrities who had been his loyal consumers. The message is very clear: wear Louboutin high heels with red-soles, and you will be seen by the public as a member of the Wall Street and Hollywood elite. From this perspective, the red sole has become a public passport to allow people to declare their affiliation with Wall Street and Hollywood. While the red sole is reserved only for the rich to show off their wealth and status, the judicial validation of the red-sole mark will be an ethical failure. It highlights the stark contrast between the rich and the poor, mirrored by a luxury economy where luxury stores shine bright in the centers of major cities that nonetheless struggle with high income inequality. Luxury capitals like New York, London, and Hong Kong have prospered as their poverty rates and luxury-spending rise, resulting in the coexistence of slums and luxury stores. Beneath this worsening economic inequality lies an ethical crisis. This ethical crisis is caused by rich luxury consumers’ indifference to the sufferings of poor people. Luxury goods are by no means necessary goods for survival. No luxury consumer would die or suffer physically if he or she stopped purchasing or consuming luxury goods. But the diversion of money from purchasing luxury goods to aiding the poor could yield profound humanitarian benefits. In 2011, the rich spent $250 billion in total on luxury goods. In the same year, around 15 million children died from hunger. Against this backdrop, I raised a question in a recent article about whether many luxury consumers are civilized enough to call themselves human beings based on their sensitivity, and insensitivity, to the suffering of the poor.  Therefore it could only have trademark protection over “the contrast between the sole and the upper [portion of the shoe].” But this ruling did not invalidate the red sole trademark at all. Instead, it still preserves trademark protection over the red-sole. At this point, the Second Circuit added that “Louboutin has not established secondary meaning in an application of a red sole to a red shoe. . . . The use of a red lacquer on the outsole of a red shoe of the same color is not a use of the Red Sole Mark.” Therefore, the Second Circuit only deprived Christian Louboutin of its trademark rights over the red sole use on a red shoe. It kept the door open for Louboutin to claim trademark rights over the use of the red-sole on shoes of any color other than red. The application of the social justice mandate, however, would reverse the Second Circuit’s decision. Social justice should be a factor that can override the finding of acquired distinctiveness through the secondary meaning inquiry. As discussed above, the red-sole mark carries social justice consequences. From this perspective, the Louboutin courts have also failed to consider the social justice issues that should be integrated into their scrutiny of the distinctiveness of the red-sole mark. Although the battle was waged between two luxury companies, Christian Louboutin and YSL, the litigation has the potential to have tremendous impacts on other fashion companies and particularly consumers. Therefore, the application of social mandate reflects the fact that weighing the distinctiveness of a mark always has an impact on other relevant marks and their consumers. As Professor Barton Beebe points out, “[I]t is … a mark’s distinctiveness from other marks, its salience, that makes consumers aware of it and that will affect whether consumers are likely to confuse it with a junior, similar mark.” Following this mandate, courts should not simply isolate the scrutiny of distinctiveness to a mark itself. Rather, they should consider the larger impact of protecting a distinctive mark on other marks and their consumers. For example, courts should note that the trademark protection of the red-sole mark may cause serious social injustices. If the red-sole is trademarkable, should we also protect red collars and cuffs that may acquire secondary meaning after being strenuously marketed? The same question applies to other colors that are basic ingredients of fashion design and marketing. From this perspective, the trademark protection of the red sole may open a floodgate for increasingly allowing simple fashion symbols to be protected as luxury brands, leading to greater social injustices. Moreover, courts should consider the social justice implications of granting trademark protection in non-fashion contexts. Can Facebook register the blue, long stripe that constantly appears on its website and has become a “distinctive” feature of Facebook operation? The same question can be raised for CNN’s extensive use of the red stripe for its website operation. In this context, courts must vigilantly consider from the social justice perspective whether single color marks of that type merit trademark protection even if they have acquired sufficient secondary meaning. There are two ways in which the court can apply the social justice mandate. First, the mandate allows a defendant to assert social justice factors to request a court disprove or override the distinctiveness of a mark. If the court can identify the specific social injustices (economic and status injustice as revealed above) based on the evidence submitted by the defendant, it can invalidate the registration of a mark like the red-sole mark, unless its owner furnishes further evidence to refute the allegations that the mark runs counter to the social justice mandate. Alternatively, the court may opt to protect a mark in a different manner that is less likely to perpetuate social injustice. For example, the court can protect the red sole color mark only when it is used together with the “Christian Louboutin” word mark. This option only recognizes that the red sole mark has acquired secondary meaning when it is combined with the “Christian Louboutin” word mark. Therefore, the use of the red sole mark by others with their own brands would not trigger infringement liability.  The Court concluded by noting that “unless there is some special reason that convincingly militates against the use of color alone as a trademark, trademark law would protect Qualitex’s use of the green-gold color on its press pads.” Following this statement, the Supreme Court proceeded to examine whether there were any additional “special reason[s]” for invalidating the mark concerned. The Court considered whether the protection of single colors would result in shade confusion, making it difficult for courts to settle color-related trademark cases. It also considered whether single color trademarks would cause color depletion in ways that no alternative colors are left for competitors to use in a particular industry. Only after reviewing these two additional issues did the Court affirm the validity of the green-gold mark concerned. Therefore, it is clear that the Supreme Court allows lower courts to use additional policy factors to determine the trademarkability of single color marks. Moreover, the Supreme Court has emphasized the importance of public policy in deciding difficult trademark cases. In Wal-Mart Stores, Inc. v. Samara Bros., the Supreme Court dealt with the tough question as to whether trade dresses should be treated as inherently distinctive or need to acquire secondary meaning to warrant trademark protection. At the end of its decision, the Court highlighted the “great consumer benefit” that would be derived from requiring a showing of secondary meaning of a trade dress. The social justice mandate centers on consumer benefits. The mandate is intended to protect more consumers from the harms caused by the registration of single color marks. Therefore, it is a policy-oriented factor commensurate with the consumer benefit test. Last but not least, courts have carved out the heightened evidentiary requirement necessitated by the social justice mandate. As single color marks are highly descriptive marks, owners of such marks, according to some courts, are required to shoulder a heavier burden of proof. For example, the court in In re Owens-Corning Fiberglas Corp., a landmark color mark decision, required that the evidence submitted by the applicant must be substantial because “by their very nature color marks carry a difficult burden in demonstrating distinctiveness and trademark character.” The Federal Circuit applied Third Circuit law to drive home the point that claimed owners of single color marks should present more evidence of secondary meaning than mere long-time use and advertising.  Nevertheless, disparities exist in all modern societies. For example, income inequality exists in many societies and continues to worsen. Against this backdrop, social justice has been championed as a human value to minimize the impact unequal distribution of resources has on the disadvantaged. The following statement by John Rawls captures the essence of social justice as a fundamental human value:
Justice is the first virtue of social institutions, as truth is of systems of thought. A theory however elegant and economical must be rejected or revised if it is untrue; likewise laws and institutions no matter how efficient and well-arranged must be reformed or abolished if they are unjust.Hailed as a fundamental human value, social justice measures the degree of inequality a society accommodates through its institutions. According to Rawls, social justice has two major principles. Called the equal liberty principle, the first principle directs that “each person is to have an equal right to the most extensive basic liberty compatible with a similar liberty for others.” The second principle of social justice has two sub-principles. The first one is called the difference principle. It dictates that social inequalities are justified if and only if they work to the benefit of the least advantaged in society. The second sub-principle, labeled the equal opportunity principle, requires that “offices and positions must be open to everyone under conditions of fair equality of opportunity.” The Rawlsian theory lends strong support to the incorporation of social justice into the secondary meaning inquiry. First, it places social justice as a supreme value to assess the legitimacy of institutional decisions and rules. Embodied with this supreme value, the social justice mandate can be used as the final arbiter in deciding whether a single color mark should be granted trademark protection. Second, the difference principle highlights the distributive concerns that judges must consider. Rawls suggests several ways of defining the most disadvantaged group. An easy way, as he emphasizes, is to consider an individual’s “place in the distribution of income and wealth.” This characterization of the most disadvantaged group is “in terms of relative income and [wealth] with no reference to social positions. For example, all persons with less than half the median may be regarded as the least advantaged segment.” Applying the difference principle, judges may consider that the protection of single color marks should function to provide benefits to the least advantaged citizens in terms of their incomes. Therefore, the social justice mandate would require Christian Louboutin to furnish evidence to prove that the protection of the red sole mark would benefit poor people.  The ethos of social justice is further carried forward in the Equal Protection Clause of the Fourteenth Amendment. Watershed constitutional decisions that have reshaped the political and social landscape of the country have relied upon the idea of social justice to apply the Equal Protection Clause in politically hostile social conditions. For example, in Brown v. Board of Education, the Supreme Court declared state laws establishing separate public schools for black and white students unconstitutional. In Loving v. Virginia, the Supreme Court invalidated laws prohibiting interracial marriage. By championing the cause of social justice, these cases denounced not only laws but also social attitudes that supported “the inferiority of the negro group” or white supremacy based on “invidious racial discrimination.” It is true that the protection of the red sole mark does not impose legal barriers preventing the poor from buying and owning red-soled shoes. After all, red-soled Louboutin shoes are circulated in the market and made available to whoever can afford them. The trademark protection of the red sole, therefore, does not “racially” discriminate against the poor who cannot afford Louboutin shoes. But one should note that what the Brown and Loving courts intended to eradicate were the social disorder that first determined people’s attitudes toward their perceived-inferior peers and then transformed their attitudes into racially discriminatory laws. Similarly, there is a social disorder underlying the protection of the red sole mark. The social disorder has encouraged people to privilege the rich “angels” who can afford Louboutin shoes in the fashion paradise and disprivilege the poor “devils” who only deserve to wear black-soled shoes in the non-fashion hell. The earlier discussion about the economic and status injustices (especially the conspicuous consumption point) caused by the red sole mark has evinced that simmering social disease. Hence, this social disorder should at least be morally blamed for establishing a new practice of social profiling based on personal wealth or the ability to buy luxury goods. Moreover, the freedom of expression protected by the First Amendment supports the social justice mandate. The First Amendment protects the equal liberty to have public spaces to perform free speeches. Central to the public forum doctrine is the notion that resources used for speech must be held as public property for the general welfare of the people at large. Public properties such as public squares, parks, beaches, and utility poles, are a “medium of communication [that] is particularly valuable.” Courts have highlighted the need to make public forums equally open to all to exercise the free speech right. According to courts, a public forum open for free speech “entails a relatively small expense in reaching a wide audience, allows flexibility in accommodating various formats, typographies, and graphics, and conveys . . . message[s] in a manner that is easily read and understood by [the] reader or viewer.” As a pillar of the American legal tradition, courts have protected intangible public forums for conducting speech activities and symbolic speech actions. For example, Rosenberger v. Rector of the University of Virginia found that a public university’s student activities fund was a “forum more in a metaphysical than in a spatial or geographic sense, but the same principles are applicable.” Moreover, courts have also protected symbolic speech activities that purposefully and discernibly convey a particular message or statement to those viewing them. Therefore, wearing black armbands overlaid with a white peace sign and waving an American flag with the words “America the red, white, and blue, we spit on you” were protected by the First Amendment as symbolic speech. Free speech protection raises two concerns as to whether all Americans deserve equal protection to use the red sole as a speech activity. First, shall we treat fashion as an intangible public forum where people can express their thoughts and comments about many political and social issues and even personal matters? Fashion designs or trends are all publicly displayed. Many fashion shows communicate political and cultural messages. As fashion largely deals with creative and artistic ideas, it can be deemed to be an intangible public forum for making aesthetic expressions. Against this backdrop, can we privatize the color red, a basic ingredient in fashion design, as a private property? From the free speech protection perspective, such a privatization affects the ability of fashion to serve as an intangible public forum. Second, a trickier question is whether we can treat wearing red-soled shoes as a symbolic speech action that conveys particular meanings and messages. Mr. Christian Louboutin has acknowledged that he selected red because it is “the color of passion.” What then if some Wall Street investment bank analysts and associates make red-soled shoes by themselves and wear them to wage a protest against their employers’ long-hours working policy that has sapped their passion and energy? Does this kind of symbolic speech action using the red sole violate trademark law? The color red also conveys anger as a human feeling. If non-Loubutin red-soled shoes were worn to express anger in similar protest scenarios, would this kind of symbolic speech action be penalized by trademark law? A larger and thornier question is related to the fact that many women and fashion designers have long seen the color red as a conveyor of messages about beauty and fashion itself. For example, the young Valentino was stricken by “an opera-goer in a red velvet dress” in Barcelona, which made him believe that “if [he was] ever going to become a designer, [he] would do lots of red.” Then how should the trademark protection of the red sole deal with this kind of symbolic speech routinely performed by women and fashion designers? All these questions carry highly sensitive free speech values. Judges should pay attention to the fact that symbolic speech cases mostly involve use of colors. With this hindsight, judges should realize that they should be vigilant in considering the potential free speech values in the free use of the red sole.  pink for fibrous glass insulation, and most recently purple for chocolates. Products labeled with these single color marks are marketed to the mass public. As household products, their prices are relatively low enough so that nearly every family can afford them. Unlike luxury products that are purposefully designed to cater to the rich, they are available to virtually everybody not in palace-like stores but in places such convenience stores and supermarkets. Being marketed with this “serving everybody” principle, these single color marks may not cause social injustice to the poor. Therefore, the social justice mandate would not permit undesirable judicial activism, invalidating single color trademarks all the time.  The luxury industry has long hailed intellectual property protection as key to the industry’s success. Representatives from the industry always argue that adequate protection of intellectual property functions to ensure that luxury companies can recoup their investments in the creation and dissemination of product design and marketing. But given the very weak copyright and patent protection, trademark protection has become core to the luxury industry. Anti-confusion protection empowers luxury brands to attempt to wipe out counterfeits. Anti-dilution protection serves to preserve and enhance the exclusivity and quality reputation that are vital to luxury goods. Therefore, two other practical concerns should be raised as to whether the social justice mandate would significantly weaken the luxury industry or even cause this industry’s demise in the marketplace. First, it seems that the mandate has created an exception only to luxury brands. Second, the mandate may enable fast fashion brands to obtain registration of single color marks and then use their popularity to eclipse luxury brands. As to the first concern, the social justice mandate is not intended to create an unfavorable exception applied only to luxury brands. Trademark law, as shown above, does protect single color marks. It also protects simple trademarks like the Adidas three-stripe and Nike swoosh marks that have appeared in various colors. Undoubtedly, all these marks have acquired sufficient distinctiveness. They are also used for marketing products to the mass public. As discussed above, these marks are far less likely to cause social injustices. However, luxury brands are different. They are used to market products or services to the rich. To a certain extent, they are used to accommodate unequal distribution of social wealth. Therefore, the status of luxury brands determines that they should be treated in a way different way. Moreover, even if luxury brands like the red sole mark are invalidated by the social justice mandate, luxury companies still have other powerful trademarks to use in merchandizing their products or services. Christian Louboutin still keeps the “Christian Louboutin” word mark, and as long it is used together with the red sole, it will signify passion and energy. Last but not least, it should be noted that the color red is a basic ingredient of fashion design. Therefore, the trademark protection of red marks including the red sole mark may cause more far-reaching impact on the development and dissemination of fashion design. By contrast, color combination marks such as the Louis Vuitton monogram can be trademarkable. A primary reason, in this context, is that they are no longer basic ingredients of fashion design. Second, the social justice mandate does not necessarily favor fast fashion brands by potentially enabling them to obtain registrations of single color marks. Indeed, fast fashion companies like H&M, Forever 21, and Zara have competed with luxury companies on various fronts. As fast fashion products are relatively cheap, they are affordable products for the mass public. If fast fashion companies apply for single color mark protection, they will not be subject to the social justice mandate and could obtain registrations of their marks after passing secondary meaning muster. Fast companies may then rely on their single color marks to prevent luxury companies from using those colors as Louboutin did against its luxury peer YSL and lower market competitor Zara. Therefore, the mandate might turn the luxury world upside-down by favoring fast fashion brands. However, that is an unnecessary concern. First, no fast fashion companies would be able to show the requisite secondary meaning of their single color marks. Fast fashion is a heavily competitive industry. Copying and being copied are the heart and soul of this industry. Once a design element by a fast fashion company is fashionable, or has the potential to become fashionable, it will be quickly copied and incorporated by other fast fashion companies. Moreover, fast fashion companies copy from luxury companies. Therefore, it will be exceedingly difficulty for a fast fashion company to prove that one of its design elements has created source-identifying secondary meaning informing consumers that it is the producer or designer of the design element. Moreover, the nature of fast fashion determines that no companies in this industry would strategize to fix a red sole–like design element to highlight their products. Fast fashion is defined by very rapid changes in trends. Being a trend-setter with constantly changing new designs is the rule of the game for most fast fashion companies. Without any permanent highlighting design elements, fast fashion companies will not be able to apply for single color mark protection. Lastly, it should be noted that luxury companies still preserve the core brands for their business. The 2012 Top 100 Brands ranking highlighted leading luxury brands, including Mercedes-Benz, BMW, Louis Vuitton, Gucci, Cartier, Tiffany & Co., Porsche, Burberry, Ralph Lauren, Prada, and Ferrari. The ranking shows that the value of these brands ranged from approximately $9 to $75 billion. What is central to luxury companies are word marks that directly advertise corporate identities to the public. Subject to the social justice mandate, Christian Louboutin would not receive protection of signs like the red sole mark, but it still would have full control of the “Christian Louboutin” word mark. Moreover, the social justice mandate also gives courts an option to protect the red sole mark together with the “Christian Louboutin” word mark. If courts opt for this combination mark approach, both marks would still be protected by trademark law.  a design feature merits trademark protection only if it can be shown to perform no significant function other than acting “as asymbol that distinguishes a firm’s goods and identifies their source.” In other words, certain design features may be so valuable for facilitating market competition, that it would significantly hinder competition if a single manufacturer were granted trademark monopoly over it. An example of aesthetic functionality would be the heart-shaped candy box. The heart shape is “an important factor in the appeal of the product” and such functionality is both independent from source-identificationand important to effective market competition. Thus, the heart-shaped box is aesthetically functional and, consequently, does not qualify for trademark protection. Aesthetic functionality doctrine is not designed to address social justice issues directly related to the poor. First, the doctrine does not intend to make a design feature relatively affordable. Instead, its primary function is to make design features available for producers of goods to compete in the market. The policy goal of the doctrine, as recognized by the Supreme Court in its Qualitex decision, is to protect and advance fair competition in the market by preventing any one entity from claiming exclusive ownership over design features that are competitively valuable. Indeed, competition is likely to improve quality, or lower the price, of goods or services. But it does not guarantee that it would drive the price of a particular product to make it relatively affordable for everybody to afford it. In some industries, competition would not necessarily bring down prices of products. For example, the luxury industry is a highly competitive industry but the overall prices of luxury goods remain very high. Because it is designed to promote competition, the aesthetic functionality doctrine primarily benefits companies that market goods or services. Second, it is difficult to apply the doctrine to fashion designs. As the Supreme Court noted in TrafFix Devices, Inc. v. Marketing Displays, Inc., where a feature is aesthetically functional, its exclusive use must threaten to put competitors at a “significant non-reputation-related disadvantage.” Therefore, under the doctrine the court must find that the anti-competitive consequences of granting trademark protection to aesthetically functional features would be significant. However, it is unclear what magnitude of aesthetic functionality would be considered as “significant.” The Louboutin case proves this difficulty. In applying the aesthetic functionality doctrine, the District Court found that the red sole served significant non-trademark functions by imbuing the shoes with “energy” and a certain sexiness and appeal. In other words, the red sole was found to be aesthetically appealing at some unquantifiable level sufficient to disqualify it from trademark protection. However, whether “red” may make a design sexy and appealing is more a matter of subjective taste rather than being objectively judged. On the other hand, it is also difficult to distinguish between reputation-related disadvantages and other competitive disadvantages. This is particularly true in the fashion industry, where creativity is difficult to distinguish from commercial success, and demand is also difficult to distinguish from reputation. Third, where design features are deemed to have acquired secondary meaning, it is difficult to prove that any aesthetic appeal they possess is not reputation-related in nature. For example, in the Ninth Circuit’s Au-Tomotive Gold decision, Audi’s logo of four interlocking rings was claimed to be functional because of an “aesthetic quality to the marks that purchasers are interested in having.” The court, however, determined that “the alleged aesthetic function is indistinguishable from and tied to the mark’s source-identifying nature.” Akin to the Audi case, the Second Circuit in Louboutin had difficulty sorting out the secondary meaning of a mark from its functional aspects. The court implied that the color red is functional for fashion design. However, it still ruled that the modified version of the red sole mark, namely the red sole contrasted with the upper part of a shoe, had acquired secondary meaning and therefore become trademarkable. This twist raises an important question: why did the Second Circuit uphold the validity of the modified red sole mark even after it determined red to be functional for fashion design? A possible answer is that the court may have had difficulty distinguishing between the functional and source-identifying aspects of the color mark.  In the contemporary world of fashion dominated by giant trademark owners, we should ask whether they have the monopoly power to control fast-evolving fashion symbols and then further exercise power over the freedom of women’s and even men’s lives. The same question, as this Article shows, looms large in the context of the Louboutin red sole trademark. When a fashion symbol evolves into a luxury brand shielded by the giant red trademarked faÁade, it completely segregates the fancy world of luxury from the suffering world of poverty. When the “Christian Louboutin” word mark is already protected as a luxury brand, is it necessary to increase this protection with the additional boost of the red sole trademark? As argued by the article, social justice should be considered in responding to this question. Yet, the Louboutin courts turned a blind eye to the social justice issues embedded in the red sole mark analysis. To correct the Louboutin court’s approach, this article proposes that a social justice mandate should be incorporated into the judiciary’s future application of the secondary meaning doctrine that assesses whether a descriptive symbol is ultimately trademarkable. The social justice mandate, by its nature, would prevent any trademark owner from monopolizing some elements that are basic ingredients for the fashion industry and other industries as well. It would permanently block the floodgate that was created by the red sole trademark to allow the registration of red collars, red cuffs, and red CNN website stripe as trademarks, if they are exclusively marketed by a luxury company to acquire requisite secondary meaning. This would protect the poor from being swept away from the ordinary fashion trends that they are entitled to participate in. Simple things like red soles, collars, and cuffs should belong to the people of both Wall Street and Main Street. Both designers of fashion products and the trademark system should embrace this principle for the betterment of society.
[a] trade-mark is a merchandising short-cut which induces a purchaser to select what he wants, or what he has been led to believe he wants. … Whatever the means employed, the aim is the same to convey through the mark, in the minds of potential customers, the desirability of the commodity upon which it appears. Once this is attained, the trade-mark owner has something of value. If another poaches upon the commercial magnetism of the symbol he has created, the owner can obtain legal redress.Mishawaka Rubber & Woolen Mfg. Co. v. S. S. Kresge Co., 316 U.S. 203, 205 (1942).
It contemplates that a word or phrase originally, and in that sense primarily, incapable of exclusive appropriation with reference to an article on the market, because geographically or otherwise descriptive, might nevertheless have been used so long and so exclusively by one producer with reference to his article that, in that trade and to that branch of the purchasing public, the word or phrase had come to mean that the article was his product; in other words, had come to be, to them, his trade-mark. So it was said that the word had come to have a secondary meaning, although this phrase, ‘secondary meaning,‘ seems not happily chosen, because, in the limited field, this new meaning is primary rather than secondary; that is to say, it is, in that field, the natural meaning.Id.
The symbols on the “General Lee” just as clearly have a secondary meaning in the eyes of the consumer of the toy car. There was ample evidence—indeed Gay Toys’ sales of its imitations are themselves proof—that the public did associate the “General Lee” with the “Dukes of Hazzard” television series. Its distinctive markings and color made it a “Dukes of Hazzard” car, or a toy depicting that car. It is because of that association, the identification of the toy car with its source, Warner’s television series, that the toy car is bought by the public. That is enough.724 F.2d at 334.
“My shoes are worn by many famous actresses, musicians and other celebrities including royalties. In the U.S., famous wearers of the CHRISTIAN LOUBOUTIN red-soled shoes include Madonna, Halley Berry, Salma Hayek, Kate Hudson, Jennifer Lopez, Sarah Jessica Parker, Mishca Barton, Jessica Simpson, Mary Kate Olsen, Carmeron Diaz, Gwyneth Paltrow, Kirsten Dunst, Angelina Jolie, Gwen Stefani, Destine’s Child, Tina Turner and Janet Jackson. Other celebrities who wear the red-soled CHRISTIAN LOUBOUTIN shoes include Diane von Furstenberg, Nicole Kidman, Catherine Deveuve, Cate Blanchett and Princess of Caroline of Monaco.”
“Being good in business is the most fascinating kind of art.”In recent years, a debate has reemerged  in Congress, in academia, and in the fashion industry over the extension of copyright-like protection to fashion design. The proponents of increased protection for fashion design argue that copying technology-particularly the speed with which images of designs from runway shows can be sent around the world via the internet-has changed so drastically in recent years that designers are suffering unprecedented harm that must be rectified by copyright-like protection. On the other hand, opponents argue that increased protection is unnecessary because the American fashion industry-a $340 billion industry-is thriving, and therefore, even if copying has increased in recent years, designers are not economically harmed by it. Supporters of “fashion copyright” have introduced two design protection bills into Congress: the Design Piracy Prohibition Act (“DPPA”) in 2006, which was revised as the Innovative Design Protection and Piracy Prevention Act (“IDPPPA”) in 2011 and re-introduced in September 2012 as the Innovative Design Protection Act of 2012 (“IDPA”). This bill would amend the Copyright Act to extend sui generis, copyright-like protection to fashion design. The primary proponents of increasing intellectual property protection for fashion design have (unsurprisingly) been fashion designers, represented by the Council of Fashion Designers of America (“CFDA”), with the assistance of a number of law professors. The greatest roadblock they have encountered in arguing for increased protection is convincing lawmakers that there is a reason to alter the status quo. American copyright law is generally seen as a means by which to incentivize investment in creative products by “securing for limited Times…the exclusive Right” to create and distribute copies of those creative products so that initial investments may be recouped before other copiers enter the market. In the absence of copyright, there would be a dearth of investment in the creative goods-a market failure that can be cured by copyright. Copyright protection currently excludes fashion design under the “useful articles” doctrine, which bars copyright for any object whose design features cannot be separated from its utilitarian aspects, either physically or conceptually. Although trademark laws protect brand names and some designs enjoy trade dress or design patent protection, the fashion industry generally operates under a low-IP regime. The low-IP regime has existed since the beginning of the American fashion industry and, as many opponents of design protection have pointed out, the industry has thrived both creatively and economically in the absence of copyright, rather than crumbled as economic theories might predict. Thus, there is little evidence of the type of market failure in the fashion industry that copyright seeks to remedy. Why then have so many members of the fashion industry continued to argue for increased intellectual property protection for fashion design? If copying does not financially harm designers, then there must be non-economic motivations behind their quest for increased design protection. During recent Congressional hearings on the DPPA and IDPPPA, advocates of design protection, while attempting to tailor their arguments to fit an economic theory of copyright, revealed that they have been strongly motivated by morals-based reasoning that builds upon the unique contemporary relationship between fashion and art. The proponents of increased design protection have been correct to recognize the striking similarities between fashion and art in contemporary culture. Not only do fashion designers and artists collaborate and inspire each other, the practices and business models of the fashion and contemporary art worlds are hardly distinguishable in modern society. Fashion designers are widely recognized and discussed as creative geniuses, their work is examined and analyzed in art-historical frameworks, and their designs are exhibited internationally in museums alongside prized art objects. Simultaneously, artists, particularly since the 1950s, have incorporated the mass-production, business-minded, and branding practices of the fashion industry into their work at least in part as a way to challenge the definition of art. It is not economic harm, but the sense that fashion is art and thus deserves intellectual property protection that has motivated modern proponents of increased design protection. They desire moral, not economic protection. However, U.S. copyright law generally rejects morals-based justifications in favor of economic, utilitarian ones. It makes little sense to extend an economic right to fashion designers predicated upon a desire for morals-based protection-especially without explicit recognition of these motivations. Visual art, unlike other copyrightable goods, does receive special morals-based protection under the Visual Artists Rights Act of 1990 (“VARA”) and various state moral rights laws. The moral rights granted under these statutes seek to protect the reputation of an artist by preventing others from modifying or misattributing his works. If proponents of increased design protection desire prevention of copying predicated on morals-based harms, that position and related arguments both for and against such protection should be discussed openly. Discussion of the extension of increased design protection in the fashion industry should be considered and discussed under a moral rights, not copyright, framework. In Part I, I analyze the shortcomings of the economic arguments for increased design protection. In Part II, I show that an examination of the legislative history of the DPPA and IDPPPA reveals that many of the proponents of increased rights are motivated by the belief that fashion is “art” and is thus deserving of intellectual property protection equal to that of art. Although it is highly contestable whether fashion merits the status of “art,” an understanding of this viewpoint is necessary to explore fully the arguments for increased design protection. In Part III, I argue that the contention that fashion should receive commensurate protection with art because of the similarities between the two creative fields draws more strongly on a morals- and personality-based theory of intellectual property than on the economic theories that underlie contemporary U.S. copyright doctrine. Thus, the debate over increased design protection should shift its focus to a discussion of reputational and moral intellectual property rights instead of straining to discuss fashion protection within the framework economically grounded American copyright law.
“Art produces ugly things which frequently become more beautiful with time. Fashion, on the other hand, produces beautiful things which always become ugly with time.”Under current U.S. law, fashion designs, unlike many other creative goods, can be freely copied. Although economic theories of copyright predict that in the absence of protection against copying, investments in creative goods will not be recouped and will result in a lack of incentive to create, the American fashion industry has continued to produce creative goods and to thrive financially in the absence of copyright protection. This “low-IP equilibrium” is explained by the economic model, under which there are certain circumstances that may facilitate market stability in creative industries that lack copyright. First, if the copying of creative works takes a significant amount of time, and demand for the work decreases over time, the original producer of the work will enjoy a period of market exclusivity until copied works are available. In some instances, this first-mover advantage provides enough economic compensation to incentivize creation in the absence of copyright. Second, if copies are not perfect, original creators will continue to enjoy economic success by selling their products to consumers who do not wish to buy low-quality substitutes.  arguing that in the past designers enjoyed a substantial first-mover advantage that has recently disintegrated due to technological change. That copying (or “piracy”) has existed in the fashion industry since the birth of “fashion” as we know it is indisputable. However, the advocates of design protection argue that the piracy game has now changed significantly due to the increased speed with which high-resolution photos from runway shows can be disseminated across the globe via the internet. Designer Lazaro Hernandez of Proenza Schouler summed up the problem for Congress in 2011:
[T]here [are] Web sites now where you get a runway show, and they can literally zoom in to the garment front and back, copy stitch for stitch, and pretty much print it and make it in a couple days flat and ship it before we ourselves can even take orders on the product. And I think that’s something that’s happened in the last 10 years that has changed the game 100 percent. The protection hasn’t caught up to the level of technology.Similarly, Professor Susan Scafidi told Congress five years earlier that “[c]reative fashion designers in earlier periods fought copyists by relying on strategic measures like speed and secrecy…Today, however, the same speed and accuracy of information transfer that affects the music and film industries is also having an impact on fashion.” This argument is not without intuitive appeal, and indeed many changes in copyright law have been motivated by changes in copying technology. However, the use of this narrative in the story of the fashion industry’s plight has been less successful than in other creative industries. It is not so clear in fashion that the speed with which pictures can be sent across the globe has really had such a drastic impact on the fashion industry as Napster had on the music industry, YouTube had on the film industry, or Google Books has threatened to have on the publishing industry. Unlike Napster, YouTube, and Google Books, copying in fashion is not completed merely through internet dissemination: physical copies must still be produced and those copies can never be perfect substitutes as Napster, YouTube, and Google Books copies usually are. After all, images of fashion designs have always been disseminated around the world. In the early days of fashion, designs originating in Paris were shown throughout Europe on traveling mannequins (that even travelled to America). Later, as photography and publication technologies developed, so did fashion magazines that spread images of new designs throughout Western culture. Now, as digital technology and the internet expand, fashion blogs and websites broadcast runway show photos throughout the world instantly. It is clear that the speed of image dissemination has increased with advances in technology, and it is no longer necessary for manufacturers to send designers to couture shows in Paris in order to sketch designs for copying as was necessary in the early-to-mid 20th century. Contemporary complaints about the speed of copying, however, seem hardly different from those of nearly 100 years ago. A designer in 1916 complained that “within forty-eight hours after [a design is] exhibited in a retail department store…at the corner of Twenty-third Street and Fifth Avenue, they are selling sketches of [as many of] my designs as can be secretly captured.” And the increased interest in fashion and style in the inter-war period only led to an increase in the amount and extent of piracy, leading it to be called in 1928: “one of the most outstanding evils of the apparel industry.” By 1932, dressmakers in New York felt that piracy had become so detrimental to the fashion industry that the major American design houses joined together to form the Fashion Originators’ Guild of America, which entered agreements with all of the major retailers that prevented them from selling pirated designs if they wished to sell the clothing of Guild members. By the 1980s, fax machines allowed images of designs to be sent around the world within hours of their debut on the runway. In fact, Professor Sprigman has argued that even if the speed of copying today is drastically faster than it was in the early 20th century, it has increased only negligibly since the advent of the fax machine. In the end, whether or not the speed of copying has increased in recent years, copying speed is meaningless in the debate over design protection unless we know two things. First, exactly how much lead-time is necessary for designers to receive sufficient compensation to maintain the low-IP equilibrium? And second, does the first-mover advantage actually affect the low-IP equilibrium in the fashion industry at all? It could certainly be the case that the speed with which design copies reach stores has no discernible economic effect on designers’ profits. Unfortunately, economic evidence that would answer these questions has yet to-and may never-emerge, leaving both advocates and opponents of design protection (and Congress) unsatisfied.  This natural limitation on economically harmful copies seems to make perfect sense in the fashion industry: Economics tells us that even if copies reach stores at the same time as originals, buyers of originals will not defect to copies that are of a significantly lower quality; the fashion industry tells us that there are often significant differences between “fast-fashion” copies and the originals that inspire them. For example, it is hard to imagine that a regular Chanel customer who, for instance, accompanied her teenage daughter on a shopping trip to Forever 21 would be so enticed by a $20 copy of a new $2,000 Chanel jacket that she would buy the former instead of the latter. The Forever 21 version is undoubtedly of a drastically lower quality than the Chanel original, and, importantly, it lacks the powerful cachet of the “Chanel” name. It seems that even if Forever 21 can produce and sell an exact look-alike Chanel jacket as quickly as Chanel can, Chanel probably loses very few customers to fast-fashion. Proponents of design protection usually counter this argument with anecdotes of the “personal tragedy” of individual designers who are driven out of business by design pirates. As Professor Sprigman has noted, however, an economic analysis of copyright law in a particular industry is generally premised on an examination of benefits and losses taken together, not on an individual basis. In any industry there are winners and losers, with or without copyright, and, as Professor Sprigman has advocated, “Before we go and change [a 217-year tradition denying copyright to fashion design], we should have more than a few anecdotes about harm. We should have some robust, formal, methodologically rigorous studies of this industry.” We no longer live in a world where Mr. Macy sends a designer to the Christian Dior show in Paris to hastily sketch designs and buy individual pieces to be brought back across the Atlantic and copied in Seventh Avenue garment shops. Copying is now quick and cheap, but simultaneously, the American fashion industry is thriving. Macy’s no longer has to send copyists to Paris, but can instead buy garments from an impressive assortment of original, innovative, and successful American designers. All of this economic growth and creative evolution has happened in the absence of copyright protection. If, as it seems, most participants in the fashion industry are economically successful and traditional economic arguments show lack of a need for fashion copyright, it remains to be seen why the debate over fashion copyright has continued to rage. In the end, the economic arguments both for and against design protection have proven unsuccessful.
“Art? Isn’t that a man’s name?”If copying in fashion design does not cause industry-wide economic harm at a level that would indicate a market failure necessitating correction through copyright protection, then a logical question arises: Why has the economically thriving fashion industry decided to wage this copyright war? I believe the answer can be found by stripping away the unconvincing economic arguments that disguise the thrust of the industry’s real argument-that fashion design is “an art form,” an extension of a designer’s creative soul, and thus deserves some form of protection. The problem with copyright law according to Women’s Wear Daily, the leading industry publication, is that its “protection does not cover apparel because articles of clothing are currently considered ‘useful articles’ as opposed to works of art”-an apparent “loophole in copyright law.” Implicit in this statement is the faulty assumption that copyright protects “works of art,” and that if fashion can make the leap from being considered a “useful article” to a “work of art,” it too can enjoy some sort of copyright protection. The assumption that fashion design should receive copyright protection if it can be seen as “art” is not only an idea popularized by the fashion media but is also one regularly invoked by supporters of fashion copyright, including in the congressional debates on the DPPA and IDPPPA. For example, when the IDPPPA was passed by the Senate Judiciary Committee in December 2010, the manager of government relations for the American Apparel and Footwear Association approvingly remarked:
The industry will finally have the ability to protect the truly original, artistic pieces of fashion that presently do not have any protection. This bill does a great job of drawing the line between what is useful and artistic. For those who do truly original art in fashion, they will have an opportunity to gain protection.Earlier, in the 2006 hearing on the DPPA, Congressman Issa argued to his peers that “dresses are clearly, let’s be honest, it’s art…[and thus] [c]learly there is a constitutional obligation for us to [protect] these creations.” In the 2008 DPPA hearing, designer Narciso Rodriguez argued that over the last century “fashion design has become an art form,” and Professor Scafidi maintained that one reason fashion deserves protection is because it is “now recognized as a form of creative expression,” and that French recognition of design protection indicates “[t]he formal recognition of fashion design as an art form” in France. One could easily dismiss this line of reasoning as unprincipled by pointing out that copyright law does not seek to protect “works of art” but instead protects economic incentives when necessary to generate investment in creative goods that benefit the public good. Sometimes this results in the protection of “works of art.” Although that may be correct as a matter of copyright jurisprudence, it has been unsuccessful in discouraging the proponents of design protection. The belief that fashion is art is deeply held, and has developed over decades of interaction between the fashion and art worlds. Beginning in the 1960s and increasing rapidly over the past twenty years, simultaneous changes in the art world and fashion industry have led to an increased sense among designers, members of the fashion community, and many members of the fashion-consuming public that fashion, if not “art” in itself, is so closely related to and intertwined with “art” that it should receive-and in fact deserves-the same types of legal protections as art. Discussions of increased design protection should not be ignorant of the contemporary relationship between fashion and art and the resulting sense that fashion designs should receive morals-based protections in a way similar to art. In the sections that follow, I describe the ways in which fashion is more art-like and art is more fashion-like than ever before, as I believe it would be naïve to ignore these developments in crafting appropriate intellectual property protection for fashion design.
“My primary concern has always been respect for my craft, which is not exactly an art, but which depends on an artist for its existence.” The concept of the fashion designer as a celebrated creative individual did not emerge until the late 19th century. Prior to this time, well-dressed ladies in the courts of Europe had personal seamstresses who created custom garments without receiving any recognition as a “designer.” Most women wanted their peers to believe that their clothing was the product of individual creativity and style and avoided accrediting it to any designer. Charles Frederick Worth is generally cited as being the first “designer” in the modern sense. Worth formed his fashion house in 1858 and, with his resolute vision, created the system of designer-led fashion that we now take for granted: “With great aplomb and a shrewd business head, Worth emphasized that his taste was the final word.” Worth and other early couturiers “were to crystallize the notion of the designer as the creator not just of handmade clothes, but also of the idea of what was fashionable at a particular time.” Gabrielle “Coco” Chanel added further meaning to the concept of the designer by putting her own personality center-stage in the marketing of her clothes. Her success is credited as founded upon “the magic of the self,” and she was lauded for her “ability to market an idealized vision of herself, and to embody her own perfect customer.” Although European couturiers have been recognized for their creative genius since the time of Worth, it is only since the second half of the 20th century that American fashion designers attained a similar status. Prior to the emergence of American designers like Bill Blass, Perry Ellis, and Calvin Klein-the first to transition from mere garmento to true designer-American designers were regarded as anonymous craftsmen who used their sartorial skills to copy Parisian designs for the American consumer. Not only are designers now recognized as the creators of the clothing they produce and sometimes as the face of their brands, in the modern fashion world they are often discussed as having a kind of creative genius previously reserved for great artists. The design houses themselves have played no small part in the celebration of their designers as innovators and artists. This exaltation of the designer as an artist has been pivotal in elevating fashion to be discussed “on a parallel footing to art” in the “larger system of visual culture and communication.” In turn, the admiration of the designer’s creative genius is fundamental to the argument that legal protection for fashion design might be based on a reputation-based theory of moral rights.  A year later Saint Laurent produced a pop art-inspired collection that featured “The Souper Dress,” a shift dress made of paper bearing Campbell’s soup can labels repeated in a geometric grid-a wearable Warhol. Saint Laurent, an avid art collector in his own right, revived this practice many times throughout his career with tributes to Van Gogh, Matisse, Picasso, Braque, and Cocteau, among others. In discussing this practice, Saint Laurent said that his “intention was not to compete with the Masters, but at the very most to get close to them and learn from their genius.” If Yves Saint Laurent appropriated the work of artistic “Masters” in order to feel close to their genius, other designers have taken this impulse further to work directly in collaboration with the artists they admire. Two of the most salient and successful contemporary examples of this practice are Takashi Murakami’s and Richard Prince’s collaborations with Louis Vuitton. The Murakami collaboration produced a number of incredibly popular handbags, most famously the “Monogram Multicolor” bags that made their way into the collection of perennially produced Vuitton classics. Richard Prince also designed a capsule collection of “Joke Monogram” handbags for Vuitton, inspired by the artist’s Jokes series of paintings; Prince’s famous Nurses works influenced the designs of the entire Vuitton Spring/Summer 2008 collection designed by Marc Jacobs. The bags were not only sold in traditional retail outlets but also in museums exhibiting the artists’ work-Murakami’s at the Los Angeles Museum of Contemporary Art in 2007 and the Brooklyn Museum of Art in 2008, and at a party for Prince’s Guggenheim retrospective in 2008-placing the objects in an intriguing place somewhere between commercial fashion and high art. Beyond appropriation and collaboration, the fashions of the past fifty years are often discussed as operating within and contributing to major artistic movements and theories, particularly minimalism and postmodernism. Often designers describe themselves as inspired by artists and designers who preceded them, assisting us in finding a place for their work among broader aesthetic movements. Like the minimalist artists of the 1960s who rejected the constraints of oppressive artistic categories such as painting and sculpture, designers of high fashion at this time began to rebel against the dictations of the human form, which had previously served to limit design choices. Designers’ rebellion against the constraints of the body can be seen as a sartorial answer to minimalist art’s abandonment of representation. Hubert de Givenchy anticipated this when he introduced the “sack dress” in the late 1950s. It was met with skepticism, reflected in a Time magazine caption that read: “Ou est la poitrine, ou sont les hanches, ou est la femme?“ or “Where is the chest, where are the hips, where is the woman?” To which M. Givenchy replied that the dress was “inspired by modern art, the experimental art that seeks new shapes and forms transgressing the limitations set by convention. With my new dress form I have discarded, among other things, the limitations set by the female form.” This practice reemerged in the 1990s with Japanese designers such as Rei Kawakubo (of Comme des Garcons), Issey Miyake, and Yohji Yamamoto, who “mined their own form of sartorial minimalism, heavily reliant on the abstraction and rejection of the traditional female body.”  The movement of fashion into the museum picked up speed in the 1990s as the Victoria and Albert Museum in London and the Musée des Arts Décoratifs in Paris curated increasing numbers of fashion exhibitions. Since then, the popularity of displaying fashion in museums has continued to soar, perhaps culminating in the 2011 Costume Institute retrospective of Alexander McQueen, which attracted over 650,000 viewers to the Metropolitan Museum of Art. Placing an object in a museum certainly does not irrefutably make it art, but the museum context invites a more serious and contemplative approach to fashion, not offered by the retail store, that has led many fashion fans to think of the museum-exhibited garments as art. Similarly, the fashion show has gone from being a private venue for the showing of designs to buyers and press to a platform for public spectacle. The modern fashion show is highly conceptualized and choreographed to reflect and aid in the creation of a thematic coherency for each season’s collection. Gianni Versace changed the nature of the runway show in the 1980s by shifting the focus from the selling of clothing to the celebration of celebrity, glamour, and excess that his famed Supermodels exemplified. Once liberated from its constraints, other designers were free to use the runway show as a vehicle for both outsized theatrics and more restrained, conceptual performance art. Karl Lagerfeld’s shows for Chanel, often transformed Paris’ Palais Royale into an otherworldly paradise, such as the underwater universe he created to frame the Spring 2012 collection epitomize the former, while the late Alexander McQueen’s strange shows have been compared approvingly to the latter. McQueen, who has been credited with “redefin[ing] the runway as a stage for high-concept theatrics,” in 1999 presented a show in which a model in a white dress was repeatedly pelted by a paint gun, and in 2004 staged a show choreographed by celebrated contemporary dancer and choreographer Michael Clark. During Issey Miyake’s Spring/Summer 1999 presentation, models cut apart the designer’s “A-POC” (“A Piece of Cloth”) garments while on the runway, in a show reminiscent of Yoko Ono’s “Cut Piece” performance art of 1964. Fashion shows themselves have even begun to occupy the museums and galleries once reserved for serious artists. After sponsoring a Leonardo da Vinci retrospective at the Louvre, Ferragamo was the first fashion house to present a collection inside the hallowed museum walls in June 2012. Moreover, in what is becoming a more common practice, many fashion companies held their Spring/Summer 2012 shows and presentations in New York galleries.
-Yves Saint Laurent
“[I]f artists were in hell in 1946, now they are in business.”For all the ways in which fashion has increasingly emulated art over the past fifty to sixty years, during the same period, artists have begun to incorporate into their work many practices that mimic those of the fashion industry. Many contemporary artists operate like fashion designers by having their work produced in factory-like settings by teams of assistants, celebrating the commerciality of their products, and embracing celebrity and popular culture. Andy Warhol exemplified this practice. He worked out of a space he called “the Factory,” idolized celebrities to an extreme, rarely had a hand in the physical production of his work, and unapologetically acknowledged the commerciality of his enterprise, famously remarking: “[b]eing good in business is the most fascinating kind of art.” The extreme commerciality of fashion historically sullied its reputation in the art world and removed it from consideration as a serious artistic medium. In the 1960s, however, artists began to test the boundaries of commerciality. While this practice was originally met with criticism, it is now so commonplace that commerciality in contemporary art has become “overt and intrinsic.” During a retrospective of the work of Japanese artist Takashi Murakami at the Los Angeles Museum of Contemporary Art in 2008, a Louis Vuitton boutique was installed within the museum to sell the handbags that the artist had helped create, signaling that Murakami was not only willing to sell his name to sell handbags, but also that the Vuitton venture was hardly separable from his “serious” art on view in the museum. Not only have artists such as Warhol and Murakami embraced the commerciality of their practice, but also market prices for contemporary art continue to soar, making it even more difficult to view art as a category of goods that transcend commerce. While couturiers of the past might physically have constructed the fashions they designed, it is accepted in the modern fashion industry that designers have little presence in the creation of their works beyond the stages of initial conception and final approval. Similarly, although it is easy to picture a great artist of high modernism such as Jackson Pollock physically creating his art-theatrically applying paint to canvas-contemporary artists today are rarely so involved in the creation of their works. Artists like Murakami, Jeff Koons, and Damien Hirst supervise the work of teams of assistants who create the actual works that the artist conceives. Hirst has said of his “spot” paintings, “[M]y spots I painted are shite…The best spot painting you can have by me is one painted by [my assistant] Rachel.” This practice of denying authorship is certainly indebted to Warhol, who once remarked to a reporter in 1966, “Why don’t you ask my assistant Gerry Malanga some questions? He did a lot of my paintings.” We might still deny fashion’s equivalence with art by requiring art to be “serious” in either subject matter or meaning. Fashion could rarely compete on this level because of its preoccupations with beauty and celebrity. However, contemporary art has similarly embraced these notions. Warhol’s obsession with celebrity culture perhaps permanently abolished the idea that high art could somehow be above the intrigue of celebrity. Legendary designer Gianni Versace has been described as “[l]ike Andy Warhol,…in thrall to the aura of celebrity…’unashamedly star-struck, so unashamedly that it became endearing.'” Finally, one could argue that fashion, unlike art, rarely has any meaning or purpose beyond the functional and aesthetic: it exists to provide body clothing and warmth in an attractive and sometimes sexually appealing way. But like most precepts of “art” that have been attacked since the postmodern period, many contemporary artists refuse to announce any grand meaning behind their art, merely describe their work as “cool” or “really great looking.” Warhol described his process of choosing source material in a 1964 interview as relying on whatever image “caught my eye,” rejecting any notion that his images were symbolic or meaningful. And while being deposed for a recent copyright infringement suit, artist Richard Prince, in describing a work at issue said he wanted only to create a “balls-out, great, unbelievably looking great painting.” Just as it is left to the wearer to breathe life into the raw materials of fashion, its left to the viewer to construct the meaning of much contemporary art. A recent collaboration between artist Gary Hume and fashion designer Stella McCartney perfectly illustrates this modern disavowal of artistic genius on the part of both the designer and artist. Hume said of his work, “I just make things to look at. It’s a picture. It’s not a manifesto,” describing his style as “unexpressionist,” while McCartney similarly proclaimed, “I don’t design with a theme in mind; it’s about my friends and what I get up to when I’m in London. I’m not trying to shock people.”  then even if fashion is art, the classification as such means little in the contemporary art world where both everything and nothing is art. If “art” is no longer a special category reserved for the products of artistic genius, should it mean anything that fashion has won entry into the category? The argument by the fashion community that their work is art may actually be counterproductive. The second conclusion is that fashion is not art. Even though a principled method for conceptually distinguishing fashion from art may no longer exist, the two categories remain distinct, and we can quickly identify fashion by its wearability. However, even if fashion is not art, by exposing the place of fashion in relation to contemporary art, it is easier to understand the arguments of those who desire increased intellectual property protection for fashion. Whereas the argument that fashion designers need economic incentives to create is unsatisfying, it is understandable that in a contemporary culture where it is no longer clear that a principled line exists between fashion and art, members of the fashion community find it increasingly difficult to accept that their work exists within a starkly different legal regime from that of art.
“Design piracy denigrates the integrity of the style.”Although the assertion that fashion is art may be misguided, or at least an incomplete solution to problem of design protection, it is undeniable that fashion and art today have a synergistic relationship. When viewed from this perspective, it is obvious why fashion designers have felt compelled to demand increased protection for their work: their beloved creations, which they think of as art, which they created with the love and devotion of an artist, which have been critically reviewed like art, and which have been displayed in museums like art, are treated in a radically different way under U.S. law than art. In an effort to receive commensurate treatment with art, designers have petitioned Congress for copyright protection, but are not in need of the economic-based protection that copyright provides. Instead, they feel a sense of personal harm when their “art” is cheaply and slavishly copied. Thus, what the proponents of fashion copyright really desire-and have essentially been arguing for-is a moral right to protect against the reputation-based harms that are felt when designs are copied. Moral rights laws are generally designed to protect artists’ reputational interests in their works and are often premised on a personhood theory of protection, which posits that works of art embody an artist’s “individual essence” and are part of her “very identity.” Therefore, in order to fully protect an artist’s interests, we should recognize rights that “preserve the bond between the artist and her work.” The U.S. grants moral rights under the Visual Artists Rights Act of 1990, which protects visual artists’ rights of attribution and integrity, and many states grant similar moral rights protection. This sense that the work of an artist is an extension of the artist himself and is deserving of special, non-economic protection can be seen clearly in the Congressional debate over the DPPA and IDPPPA. Designers have not been shy to share heart-wrenching stories of their sense of personal attack in arguing for increased protection. They convey a sense that their creative works-thought of as “represent[ing] a complete embodiment of the internal self”-should be protected against unauthorized use because that would amount to a personal assault on the designer himself. For example, Narciso Rodriguez, who had the great fortune of designing the bridal gown for Carolyn Bissette’s wedding to John F. Kennedy, Jr., described the design as follows: “I designed something with great love for the most important person in my life…You know, it was a very personal thing for me, that dress.” The dress was subsequently copied many times over for American women who wished to emulate the enviable Mrs. Kennedy’s style. Mr. Rodriguez provided this story to Congress as an example of the way he was harmed in the absence of increased protection for fashion design, but he went on to say, “I never looked at it like something was stolen from me because I would have made that dress anyway.” Mr. Rodriguez’s statement perfectly illustrates the tension of extending copyright-like protection to design under a utilitarian, economic theory of copyright. He loved the dress and he loved the woman for whom he designed it. He did not need an economic incentive to create it, but he still felt harmed when it was copied. It could be said that the design “embodie[d] an intrinsic dimension” where his “creative impulse…eminat[ed] from inner drives that exist in the human soul…[which] do not depend upon external reward or recognition but instead are motivated by…the creation of works with a particular meaning or significance.” The intrinsic dimension of Mr. Rodriguez’s creativity is perfectly illustrated by his description of copying as “theft” and that “to steal something…[is] to copy my DNA and diffuse it.” It is not just designers who have invoked this personality theory in their arguments for design protection. Professor Scafidi, the fashion industry’s staunchest supporter in legal academia, has argued that fashion is “creative expression” and should thus be protected because “creative expression” is “exactly what copyright is supposed to protect.” In other words, fashion design warrants protection not because protection incentivizes design, but because all creative expressions of an artistic soul deserve protection. Congresswoman Maxine Waters voiced her opinion that the copying of Diane von Furstenburg’s wrap dress in “cheap material” is “an insult to the work she has done” noting that “there is probably something called pride in your work” that shouldn’t be “undermined by those who [copy] poorly.” Congressman Waters clearly sensed the moral rights undercurrent of the congressional hearing and felt that Ms. von Furstenburg deserved some sort of reputation-based right to protect the valuable creative energies she has expended in creating the wrap dress that is synonymous with her name. It is evident that advocates for increased design protection have been motivated by the sense that fashion is art to argue-albeit deceptively-that it deserves morals-based protection equivalent with that of art. Arguments over design protection that focus on the economic aspects of copyright law are inappropriate in the contemporary fashion industry. Instead, the debate should center on the moral rights protections that designers seemingly desire. But the question remains as to whether moral and reputational considerations can adequately justify the extension of copyright-like protection to fashion design, or if not, whether some alternative scheme might be devised to protect personality and reputational interests of designers. Instead of attacking the argument that copyright is economically necessary for the fashion industry, opponents of design protection should rebuke the arguments that fashion should receive commensurate protection with art or that any consumer goods should receive morals-based protection.
It is a perfectly legitimate practice for American dress houses to send buyers to the Paris Openings, where they buy only one of each model they select. These are brought back and copied exactly in largish numbers for customers who are dying for a “French model.”…But there is no sin where none is felt; the French are aware that American shops buy their models for copying. That has become an accepted fact.
Chanel’s easily adaptable components are the sartorial counterparts of minimal art’s primary shapes: basic building blocks that appealed intrinsically to a larger audience than the one drawn to overly ornate designs…Of all Chanel’s innovations, her little back dress would emerge as a conceptual ready-made that conveyed discreet, refined chic no matter the price tag…The little black dress is a standard and an original, a design that can be reinterpreted by nearly any designer or manufacturer and still retain its inherent value as the champion of progressive fashionable dressing. With regard to the minimalist discourse, this ready-made speaks to the major criticism of minimalism itself: in its simplicity, accessibility, and translation to mass production, is the minimal object enough “art”?Id. at 54-55.
Or at least, to have come close to destroying it. Adorno wrote that “art revolts against its essential concepts while at the same time being inconceivable without them.” Has the contemporary revolt against the category of art been so successful that it has destroyed art’s “essential concepts”? Has contemporary art turned “art” into a category that is “inconceivable”?Id. at n.218 (internal citation omitted).
In [some fashion] designs and presentations, artistic methods are used to comment on the practice of fashion, but this does not necessarily turn their fashion into art…Like other design forms, such as architecture, fashion has its own particular concerns that prevent it from ever being purely art, craft, or industrial design… In fashion’s case, focus on body and cloth, and the fact that it is, usually, designed to be worn and sold, distinguishes it from fine art. However, this does not prevent fashion from being meaningful, and the art world’s continued fascination with fashion underlies its cultural significance.
[T]here are practical benefits to designing a legal system of authors’ rights that promote authorship morality….”[T]he law can have an important symbolic function if it accords with public views about what is fair, but it loses that power as the formal law diverges from public morality.”…In the context of intellectual property laws specifically, [people should] “believe that the rules established serve reasonable social purposes and are not simply efforts to create profits for special interest groups, such as large corporations.(quoting Tom R. Tyler, Compliance with Intellectual Property Laws: A Psychological Perspective, 29 N.Y.U. J. Int’l L. & Pol. 219, 225-26 (1997)).