Fashion

Tomato, Tamatie? Revising the Doctrine of Foreign Equivalents in American Trademark Law

Tomato, Tamatie? Revising the Doctrine of Foreign Equivalents in American Trademark Law
Download a pdf version of this article here. The growing specter of globalization impacts industries from communication to transportation, resulting in an unparalleled proliferation of cultural diffusion unmatched throughout history. Naturally, this cultural diffusion has familiarized American consumers with foreign brands and foreign languages despite the obvious English dominance domestically, resulting in a trademark quagmire. Under the current American doctrine of foreign equivalents, trademark examiners and courts translate non-English words into English to determine whether they meet the general United States Patent & Trademark Office (USPTO) registration requirements. However, by treating English and non-English words alike, the pool of source-identifying marks is unnecessarily restricted. This note argues that a clear rule-like form that relaxes restrictions of registering descriptive foreign language marks through offering ‘descriptive’ foreign-language a presumption of eligibility for protection would mitigate inconsistent application of the doctrine. Such a rule would also limit costs on consumers and producers that are caused by restricting the range of available marks and inhibiting creative and communicative branding.

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function

How Rings Fit into the Copyright Scheme: Assessing Their Intrinsic Utilitarian Function
By Adine Mitrani* Download a PDF version of this article here.  

Introduction

Jewelry is considered “one of the oldest art forms,”[1] dating further back than the history of painting and more vibrant than the history of sculpture.[2] Due to rampant imitation—or inspiration as some refer to it—in the fashion industry,[3] many jewelry designers seek to use the copyright system to protect their artistic designs.[4] In the past few years, retail stores such as Nasty Gal and Urban Outfitters have been “slapped with lawsuits by jewelry designers who are crying foul over their work being mimicked without any credit and sold at fast fashion prices.”[5] Under the Copyright Act of 1976, many courts consider rings ornamental sculptures entitled to copyright protection as a pictorial, graphic or sculptural (PGS) work. With the objective of protecting artistic works and excluding functional designs from protection, the Copyright Act explicitly distinguishes useful articles. Specifically if a PGS qualifies as a useful article—defined as “having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”[6]—then it is subject to a separability test. While courts have differed in their analysis in applying separability,[7] the test will essentially render the functional aspects of a PGS unprotectable. Fashion designs are considered useful articles mostly unprotectable by Copyright system; their purpose to clothe people is utilitarian and the designs do not meet the Copyright Act’s separability test.[8] Jewelry pieces are often lumped together with fashion articles and accessories, leading some to question their status as purely ornamental sculptures. This Note focuses exclusively on rings as they seemingly possess numerous functional purposes as compared to other pieces of jewelry. For example, rings have been used for mystical and talismanic reasons. They are still used today as portable bank accounts, as the nature of small-scale jewelry allows wealth to be hidden easily and safely, to display socially meaningful codes, such as class rings and engagements rings, and to adorn one’s hand.[9] Moreover, jewelry designers inevitably consider functional concerns when creating a ring; it is supposed to fit comfortably around one’s finger. This raises the question that if a design is created with functional concerns, does it possess an intrinsic utilitarian function? Furthermore, there are diverging opinions in the federal district courts as to whether rings are considered sculptural works subject to a separability test.[10] While most courts hold that rings are purely artistic works, this Note seeks to examine why there has been confusion as to whether the useful articles doctrine applies specifically to rings. Part I of this Note examines the history of jewelry in copyright, describing how courts have attempted to define intrinsic utilitarian function in light of the separability analysis. This section also compares case law that has expressly assessed rings in relation to the useful articles doctrine. Part II next considers rings as sculptural works not subject to a useful articles analysis. After briefly describing the evolution of jewelry in the 1960-80s, this section reinforces why rings qualify as ornamental sculpture for purposes of the Copyright Act. Part III considers rings as useful articles subject to a separability test, examining certain uses of rings as well as functional consideration in the design process. Lastly, this section analyzes critical reception in connection with rings, and explains how museum display is not a prerequisite for copyrightability. In the copyright spectrum with useful articles on one end and aesthetic objects on the other, this Note concludes that rings lie more on the artistic side. Rings do not possess an intrinsic utilitarian function for purposes of the Copyright Act, and therefore should not undergo a useful articles analysis.

I. Historical Background of Jewelry in the Copyright Act

Copyright law has included a variety of designs that are seemingly useful while simultaneously purporting to exclude any utilitarian products. Beginning in 1870, through a series of acts, Congress drew from piecemeal administrative and judicial formulations, in an attempt to reconcile the differences between protectable applied arts and unprotectable utilitarian designs. In 1949, Congress explicitly included “artistic jewelry” as within the scope of copyright protection. This section examines the history of jewelry in the copyright scheme, explains judicial attempts at defining intrinsic utilitarian function, and highlights district court cases that have expressly assessed rings in light of the useful articles doctrine.

A. Initial Encounters in Early Legislation and Case Law

Article 1, Section 8 of the Constitution authorizes federal legislation “[t]o promote the Progress of Science and useful Arts,”[11] but gives little guidance in defining the scope of the copyright system. The original Copyright Act of 1790 extended protection only to maps, charts, and books.[12] It was not until 1870 when Congress explicitly extended copyright protection to three-dimensional objects: “painting, drawing, chromo, statute, statutary, and of models or designs intended to be perfected as works of the fine arts.”[13] This statute purposefully used the term “fine art” in order to “maintain a respectable distance between copyright and useful articles.”[14] The Copyright Act of 1909 eliminated this distinction, and seemingly allowed copyright coverage to apply to the designs of useful articles.[15] Specifically, the 1909 Act broadened the category of “fine arts” to include “[w]orks of art; models or designs for works of art.”[16] One year later, however, the Copyright Office quickly corrected itself, amending the statute to expressly exclude “industrial arts utilitarian in purpose and character … even if artistically made or ornamented.”[17] With the advent of new useful articles in the early 20th century, such as television sets and new cosmetic products, it became harder to define the contours of industrial design. In 1917, the Copyright Act was reworded to cover “artistic drawings notwithstanding they may afterwards be utilized for articles of manufacture.”[18] The Copyright Office promulgated a regulation in 1949 to expand its coverage and explicitly included “artistic jewelry.”[19] Specifically, the regulation defined works of art as a class which “includes works of artistic craftsmanship, in so far as their form but not their mechanical or utilitarian aspects are concerned, such as artistic jewelry, enamels, glassware, and tapestries, as well as all works belonging to the fine arts, such as paintings, drawings and sculpture.”[20] Thus, Congress established copyrightable categories with protection only covering the artistic elements of the designs. In 1954, the Supreme Court decided Mazer v. Stein,[21] a seminal case for the useful articles doctrine, holding that copyright protection could be extended to sculptural figures that were used as bases for lamps.[22] Mazer attempted to distinguish artistic design, which qualifies for copyright protection, from ornamental features of useful articles, which belong to the design patent regime: “[t]he dichotomy of protection for the aesthetic is not beauty and utility but art for the copyright and the invention of original and ornamental design for design patents.”[23] Based on the 1949 Regulation promulgated by the Copyright Office, Mazer supported the idea that artistic elements in useful articles would be entitled to Copyright protection as long as they remain physically separable from the utilitarian components. Robert Denicola suggests that Rosenthal v. Stein[24] articulated a better approach to determine the Copyright Act’s scope at the time.[25] Specifically, the Ninth Circuit in Rosenthal stated, “[a] thing is a work of art if it appears to be within the historical and ordinary conception of the term art.”[26] Based on this definition, numerous cases upheld copyrights in jewelry, drawing on the historical conception of jewelry as a work of art.[27] Overall, before the Copyright Act of 1976, many courts considered artistic jewelry as a copyrightable category not subject to a separability test.

B. Further Defining Useful Articles

1. The Copyright Act of 1976
In § 102 of the Copyright Act of 1976, Congress approved these earlier precedents—specifically attempting to codify Mazer[28]—and enumerated eight categories of copyrightable subject matter. Section 102(a)(5) specifically included “pictorial, graphic and sculptural works” (PGS), thereby abandoning 1909’s Act “works of art” categorization. While the new Act did not include specific examples, such as “artistic jewelry” from the 1949 regulation, many courts have held that jewelry is still a copyrightable sculptural work.[29] Furthermore, one court explained, “the explicit congressional adoption of the Copyright Office’s definition indicates that jewelry remains within the scope of copyright protection.”[30] The 1976 Act also formulated the scope of useful articles: if a PGS meets the useful articles definition in § 101, “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information,”[31] that article qualifies as useful. The design is not copyrightable unless its particular aesthetic elements satisfy the separability test. Section 101 defines the separability test as whether “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.”[32] According to the legislative history, copyright protection for features of useful articles depended on whether the elements of the design are physically or conceptually separable from the utilitarian elements, such as the carving on the back of a chair or a floral relief design on silver flatware.[33] If the object is not separable, it does receive copyright protection. The following section identifies judicial attempts at defining intrinsic utilitarian function and determining a separability test. The last section examines how case law has treated rings in light of the useful articles doctrine.
2. Judicial Attempts at Defining “Intrinsic Utilitarian Function” and Separability
Many critics claim that the 1976 Act and its legislative history do not provide sufficient instructions to determine what the term “intrinsic utilitarian function” means.[34] While the House Report accompanying the 1976 Act identifies examples of “utilitarian articles such as textile fabrics, wallpaper, containers, and the like,” it fails to define what constitutes an “intrinsic utilitarian function.”[35] Courts have struggled to articulate an exact definition for intrinsic utilitarian function. Gay Toys, Inc. v. Buddy L Corp. attempted to distinguish the term from other useful purposes, which may not rise to an intrinsic utilitarian function.[36] Other courts, such as Brandir Int’l v. Cascade Pac. Lumber Co. and Poe v. Missing Persons,[37] identified factors to determine usefulness. Moreover, courts have conveyed different approaches for establishing separability in a useful articles analysis. The Second Circuit in Kieselstein-Cord v. Accessories by Pearl, Inc. employed a consumer-based approach, focusing how the consumer uses the object to determine conceptual separability.[38] Five years later, the Second Circuit in Carol Barnhart v. Economy Cover Corp. established an object-based approach, assessing whether the function of the object drives the form to determine separability.[39] And in Brandir, the Second Circuit laid out a process-based approach, examining whether the form and function merge during the creation process to determine separability.[40] Below is a detailed analysis of how each case defines intrinsic utilitarian function in light of a separability analysis, and a brief overview of academic definitions. In trying to determine whether belt buckles are copyrightable, Judge Oakes in Kieselstein-Cord did not delve into what, if any, intrinsic utilitarian function subsisted in the designs. Rather, he noted, “[t]he primary ornamental aspect of the [belt] buckles is conceptually separable from their subsidiary utilitarian function.”[41] Throughout the opinion though, Judge Oakes failed to elaborate on what “subsidiary utilitarian function” means.[42] Ultimately, he upheld copyright protection for the etched metal belt buckles because some people wore them as jewelry, which the court determined was copyrightable subject matter.[43] In Carol Barnhart, the Second Circuit looked at the function of the object to determine if four life-size polystyrene mannequins of human torsos were protectable sculptural works under the Copyright Act.[44] In fact, Judge Newman’s dissent expressly noted the “intrinsic” functional purpose of the mannequins: to “serv[e] as a means of displaying clothing and accessories to customers of retail stores.”[45] After evaluating the legislative history and prior case law, the court held that the mannequins were not copyrightable because their function drove their form; mannequin surfaces are inextricably intertwined with the utilitarian purpose of displaying clothes.[46] Therefore, the court ruled that the mannequins were unprotectable as useful articles.[47] Two years later, in Brandir, the Second Circuit looked at a number of different factors to determine whether the plaintiff’s bike rack was useful: the differences in design between the wire sculptural work and the ultimate bike rack, the utilitarian reasons in implementing the design changes, manufacturing concerns, advertising costs, and promotional or marketing objectives.[48] To determine separability, the court mainly looked at the design process.[49] It held that even though the bike rack is worthy of admiration for its aesthetic qualities alone, utilitarian concerns during the creation process significantly influenced the design.[50] Specifically, the plaintiff expanded the undulating “sine-curve” of an artistic sculpture in order to accommodate it for bikes; accordingly, the court could not establish separability for purposes of the Copyright Act.[51] In Gay Toys, the Sixth Circuit attempted to carve out a definitional difference between utilitarian function and intrinsic utilitarian function to determine whether toys, specifically model airplanes, are copyrightable.[52] Judge Brown stated that designs might have uses that go beyond portraying the appearance of the object or conveying information, but those uses do not necessarily constitute the intrinsic utilitarian function of the object.[53] He acknowledged that toys are designed for children to play with.[54] Yet in terms of the Copyright Act, between unprotectable useful articles and protectable paintings, “[t]he function of toys is much more similar to that of works of art than it is to the ‘intrinsic utilitarian function’ of industrial products.”[55] The court held that toys are copyrightable subject matter as a PGS, and are not subject to a useful articles analysis.[56] A year later, in Poe, the Ninth Circuit reinforced Gay Toys definitional difference between usefulness and intrinsic utilitarian function.[57] Specifically, Judge Alarcon acknowledged that the swimsuit in question might have uses that go beyond portraying its own appearance, and remanded the case to the district court to determine whether such uses constitute an intrinsic utilitarian function.[58] The Ninth Circuit identified four factors that are relevant to the usefulness inquiry:
(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.[59]
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.[60] 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.[61] Furthermore, Thomas Byron explains how one might affix a coiled extension cord to a wall or use a Van Gogh painting to swat flies.[62] 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.[63] Therefore, he concludes, while many objects “may serve both aesthetic and utilitarian ends, different objects intrinsically serve these ends in varying degrees.”[64] 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.

C. Cases Assessing Ring Design Against the Useful Articles Doctrine

Based on courts’ interpretations of the Copyright Act, it seems that rings are copyrightable subject matter as long as they meet requirements of authorship and originality, with the latter being the more difficult to prove.[65] 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.,[66] the Southern District of New York took the position that rings are useful articles and proceeded with a useful articles analysis.[67] The court explained how the rings’ configuration—marquis stones flanked in a trillion ring setting—did not exist independently of its utilitarian counterparts.[68] 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.[69] After briefly conducting a separability analysis, the court held that the plaintiff’s rings did not warrant copyright protection.[70] 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.”[71] 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).[72] 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.[73] 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.”[74] 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.”[75] 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.

II. Considering Rings as Sculptural Works Not Subject to a Useful Articles Analysis

This section examines how rings are considered works of art from jewelry designers’ perspective and subsequently not subject to a useful articles analysis. After delineating a brief history on jewelry, this section will bolster what it means to be an “ornamental sculpture” for purposes of the Copyright Act, looking at three relevant factors in ring designs: artistic creativity, how jewelry designers view themselves and their creations, and how rings differ from clothing, a useful article.

A. A Brief History on Jewelry: The Rise of Artistic Expression

Jewelry is an old tradition steeped in the artistic world,[76] predating the history of sculpture and even painting.[77] 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,[78] and are still used today as portable bank accounts and to display socially meaningful codes.[79] 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 ….”[80] 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.[81] One of the purposes of rings is to adorn,[82] 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.”[83] 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.[84] The late 1960s generated revolutionary jewelry students, especially potent in the art world, who challenged longstanding conventions and questioned the very notion of jewelry.[85] With the advent of new materials and metals, jewelry designers were tooled with new ways to create “individualistic art.”[86] 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.[87] 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.[88] These innovative changes in jewelry design resulted in an invigorating and challenging debate whether jewelry was still “Art with a capital A”[89],[90] Overall, jewelry has evolved to a forum for “conceptual exploration and personal expression.”[91]

B. Considering Rings as Works of Art

In terms of the 1976 Copyright Act, many courts have articulated that rings are not useful articles because they are ornamental sculptures with a sole purpose to convey appearance.[92] 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.[93] 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 ….”[94] 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.
1. Artistic Creativity: Discovery in the Process
The history of the Copyright Act illustrates Congress’s purpose in protecting artistic works. The Act has a rich history of explicitly including “fine art”[95] and “work[s] of art.”[96] 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 ….”[97] 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,”[98] thereby suggesting an incentive rationale to encourage innovative activity through a system that promotes exclusive rights for the tangible results of creative efforts.[99] 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.”[100] 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.[101] 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.[102] 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.[103] While jewelry is not considered a fine art in the strict sense, many jewelry designers see themselves as using artistic creativity in the process.[104] 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.[105] Additionally, Ruudt Peters conveys that alchemy is a process in jewelry design that transmutes “prosaic materials into a visual poetry.”[106] 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.”[107] Most jewelry artists do not rigidly follow a blueprint in the design process; they employ a number of different methodologies for their creations.[108] 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.”[109] When creating the ring template for 3D printing, she says that she designs, experiments with components, reacts, and then redesigns—like drawing through materials.[110] During the process new problems may arise and the artist is tempted to reframe that problem.[111] 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.[112] Once he removed the solidified ring from the mold, the ring melted a little and lost its form.[113] It created a dripping effect, calling attention to the malleable metal in relation to the sturdy mold.[114] 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.[115]
Mitrani Figure 1
Figure 1: Phillip Crangi’s Fine Jewelry Line[116]
  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.[117] 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.
2. Designers’ Perspectives
As the Brandir and Poe courts noted, one factor in determining usefulness is the designer’s intent in creating the object. Specifically, Professor Hick explains that the intrinsic utilitarian function is mainly derived from how the designer purposed the object.[118] 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.”[119] Many jewelry designers see themselves as artists.[120] In line with the 1976 Copyright Act’s objectives, jewelry designers have compared their work to that of a sculptor.[121] Similar to sculptural objects, rings “consist of a physical object that has its own discrete existence.”[122] In fact, Skubik views his rings in isolation from the body and sees them as art even when it is not worn.[123] 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.[124] For sales, she has to think formulaically, keeping track of her cash flow and inventory.[125] 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.”[126] 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.”[127] Additionally, Otto Künzli highlights social critique, frequently disparaging the pretentions of jewelry in his pieces.[128]
Mitrani Figure 2
Figure 2: Emmy van Leersum – Broken Lines Ring[129]
 
Mitrani Figure 3
Figure 3: Otto Künzli – Seal Ring[130]
  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.”[131]
Mitrani Figure 4
Figure 4: Irene Neuwirth – Gemstone Hexagonal Ring[132]
  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.
3. Adornment Purposes of Rings: Distinct from Clothing
While other useful articles certainly incorporate artistic styles in their designs,[133] rings are inherently different from other industrial designs. As mentioned, the copyright system treats fashion pieces as useful articles,[134] and most jewelry designs as sculptural ornamental pieces.[135] 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.[136] 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.[137] Additionally, clothing is used for modesty purposes in many cultures,[138] 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.”[139] Of course, fashion designs can accomplish the same objective, but the copyright system does not treat that as a primary objective of clothing.[140] Unlike clothing, which in most parts of the world you are legally required to wear, donning rings is a choice.[141] Many jewelry designers would submit that the primary purpose of rings is to decorate fingers and convey a specific style.[142] 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.[143] Many traditional artists are generally free from those “constraints of commerce,”[144] 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.[145] However, the Copyright Act still considers many sculptural works as works of art, even if they are mass-produced or marketed for commercial purposes.[146] 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.”[147] Furthermore, some designers see their rings as a more “intimate” art form between the creator and audience.[148] 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.”[149] Moreover, a ring, after being worn for years, “acquires a patina of age and even conforms itself to the shape of the finger.”[150] 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.

III. Considering Rings as Useful Articles Subject to a Separability Test

As mentioned, jewelry is considered a sculptural work under the Copyright Act. The Copyright Act of 1976 further distinguishes between sculptural works and sculptural works that are useful articles with an “intrinsic utilitarian function,” and affords protection to the latter as long as their artistic features “can be identified separately from, and are capable of existing independently of, the useful design.”[151] 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.[152] 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.

A. The Purposes of Rings: Examining Their Intrinsic Functionality

A ring can possess a number of functional purposes; it can be used as an amuletic power, a portable bank account, a signifier of status, and an allurement to one’s hands. After examining each of these uses, this section will conclude that some of these uses are more extrinsic functions, not rising to the level of intrinsic utilitarian function for purposes of the Copyright Act. Some people buy rings for the talismanic power of the gemstones. In line with popular culture, the American Gem Society designates a different gemstone that contains a unique mystic meaning to each calendar month. For instance, Garnet, the birthstone of January, is “known to promote romantic love, passion, sensuality, and intimacy.”[153] 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.”[154]
Mitrani Figure 5
Figure 5: Jewelry by December 1967 – Mozambique Garnet Ring[155]  Additionally, the Mystical Maven, another seller on Etsy, presents a Golden Garnet Ring, which she describes as a ring that will allure the opposite sex if the other person touches the ring while the owner is wearing it.[156]Moreover, certain cultures attach mystic powers to certain gemstones, such as the Chinese who consider the rich luster of jade to be very lucky.[157] In illustrating the talismanic forces of the jade stone, Melissa Chang conveys, “[w]hen [my dad] first started wearing [the jade ring], he told me that the deeper the green was, the more good luck it brought. He always wore it to Vegas and as far as I know, he did pretty well on the craps table.”[158] While these amuletic powers of rings can qualify as a function, it would be quite difficult to prove actual, intrinsic utilitarian function from anecdotes. The question also remains: to what extent should mystic powers qualify as utilitarian? Indeed, the Gay Toys court stated “[t]he intention of Congress was to exclude from copyright protection industrial products such as automobiles, food processors, and television sets.”[159] Mystical purposes do not seem to be in line with Copyright Act’s intention of excluding useful industrial objects.Rings are still used today as portable bank accounts because the nature of small-scale jewelry allows wealth to be hidden easily and safely.[160] While this may not be the traditional use, this use constitutes an extrinsic function of a ring, in the same manner as when a person uses a hammer as a paperweight.[161] Jewelry designers generally do not design a ring so that it can be quickly converted into cash. As mentioned in Part II.B.ii, jewelry designers see themselves as artists and incorporate many artistic elements into their designs. Moreover, various paintings could be said to serve as portable bank accounts in the form of investment art, yet, that feature does not prevent courts from categorizing paintings as purely aesthetic and entitled to copyright protection. Rings can also be used to display socially meaningful codes.[162] For the most part, though, rings have shifted from conveying class identity, to being more stylistic choices that can distinguish the wearer or merge the wearer with a particular style.[163] According to the Copyright Act’s definition of a useful article, though, social identity markers can be analyzed as merely conveying information, and therefore jewelry should not be considered useful in that sense. Moreover, a number of objects convey social status and identity, such as a handbag or a car, but that does not necessarily speak to their intrinsic utilitarian function; a handbag is known to hold items and a car is known as a method of transportation. Lastly, donning rings certainly draws attention to one’s hands, “appeal[ing] to potential mates.”[164] As Gay Toys alluded to, many purely aesthetic objects can have some uses.[165] Art pieces do not only serve informational or decorative purposes; they can also arouse passions, offer escape, and serve as a forum of dialogue and contemplation.[166] Drawing attention to one’s hands can serve as an aesthetic experience, heightening the artistic essence of the ring. Furthermore, that visual experience bolsters the idea that rings fall more on the aesthetic side of the copyright spectrum. After all, even though an art piece can have functional characteristics derived from emotive power or historical meaning, such characteristics do not make it a useful article under copyright law.[167] In light of the legislative history behind the Copyright Act and case law, these aforementioned uses do not rise to the level of intrinsic utilitarian function. The legal doctrine of functionality should not be broadened to include extrinsic functions or further aesthetic functions, as that can render even an art piece a useful article.

B. Functional Considerations Behind Ring Design

While jewelry designers take into account a number of considerations in designing a ring, they inevitably take function into account. Alice Sprintzen, a jewelry designer who wrote an instructive book on basic jewelry techniques, emphasized the importance in accounting for functional concerns in the design process.[168] Specifically, a designer should consider the weight of the item, flexibility of the material, any protrusions on a piece that might catch clothing, and external circumstances.[169] In the section about wax casting a ring, Sprintzen instructs designers to slightly enlarge wide band rings to allow for finger swelling in hotter seasons.[170] Danielle Frankel Nemiroff, one of the co-designers for Phillips House fine jewelry said, “functionality and comfort are not the leading concerns in the design process, but definitely are important” in the design process.[171] Nemiroff’s design philosophy is to create “pretty pieces” that one can wear comfortably; she mentioned that she will not create a ring with a sharp spike that can potentially hurt a young child or damage an evening gown.[172]
Mitrani Figure 6
Figure 6: Phillips House – No. 3 Hexagon Ring[173]  While Gruenberg sees herself as artist, she says she also takes ergonomics and negative space into account when designing a ring, especially for her King Crown Ring that goes above and below the knuckle.[174]
Mitrani Figure 7
Figure 7: Studio Grun – King Crown Ring[175]  Specifically, she tries to create lighter, more comfortable rings.[176] Additionally, Jennie Kwon, another jewelry designer, stated that she does not want women to be burdened in removing her pieces when washing their hands; rather she creates delicate designs that will not be cumbersome to the wearer.[177]
Mitrani Figure 8
Figure 8: Jennie Kwon – Black Diamond Mini Deco Point Rings[178]  Yet, does accounting for functional concerns during the design process bestow an intrinsic utilitarian function on the object? While the Brandir court analyzed the creation process as a main factor in determining separability,[179] it does not necessarily indicate that the object has an intrinsic utilitarian function. Due to the nature of the ribbon bike rack, which was derived from a wire sculpture, the Brandir court collapsed the useful article inquiry with the separability analysis in trying to establish copyrightable subject matter.[180] Thus, whether the design process was heavily influenced by utilitarian concerns should be more of a question for separability, especially when considering the primary purpose of the object. In essence, ring designers are creating for a finger, their canvas, and are naturally limited by that medium’s constraints. Rings are worn on the human finger, which imposes functional considerations of weight, height, and scale, but there still remains considerable room for creativity and expression.[181]

C. Critical Reception: Does It Matter?

Art collectors, art museums and critics in the art market do not typically think of jewelry as a fine art, such as a painting or a sculpture.[182] Specifically, English and Dormer maintain that the Museum of Modern Art or the Venice Biennale do not feature jewelry prominently in their collections, and it rarely appears in art periodicals such as Art Forum.[183] The Museum of Art and Design, however, recently presented a “stunning array of extravagant fashion jewelry” from June 2013–April 2014.[184] Additionally, from November 2013–March 2014, the Metropolitan Museum of Art had an exhibit titled Jewels by JAR (Joel A. Rosenthal) with bedazzled, vibrant jewelry pieces using the pavé technique.[185] It was the first retrospective at the Museum tailored to a contemporary artist of gems.[186] Yet, these examples perhaps highlight jewelry as more of a craft, rather than an art. Indeed, the Museum of Art and Design, formerly known as the Museum of Contemporary Crafts, has exhibits that feature other useful articles such as “Ralph Pucci: The Art of the Mannequin.”[187] Olaf Skoogfors, one of the main jewelry designers involved in the evolution of the abstractionist, formal approach, said, “I consider myself to be an artists as well as a craftsperson. The same efforts that go into painting or sculpture go into my jewelry. If this medium is a lesser art, than I am a lesser artist.”[188] Even though jewelry can be considered a craft, it still falls more on the aesthetic side of the copyright system, which is perhaps bolstered by a recent expanded notion of art in the museum world. Furthermore, whether jewelry is featured in a museum is not a primary concern for purposes of the Copyright Act. While the Kieselstein court noted that two of the belt buckles at issue in the case were placed on display in the Metropolitan Museum of Art in ruling that the buckles were protected by copyright,[189] museum placement merely serves as an additional argument for copyright protection rather than a prerequisite. Judge Rakoff in Weindling International commented that it was highly doubtful that the bridge ring in question would appear in the Met, but noted how “the law of copyright protects the modest creations of the humble versifier who churns out greeting cards as much as it does the thrilling inventions of a poet laureate.”[190] After all, the Supreme Court in Feist Publications v. Rural Telephone Co. defined the originality requirement as merely “some minimal degree of creativity…some creative spark, ‘no matter how crude, humble, or obvious’ it might be.”[191] Because mass-produced jewelry will inevitably be designed in non-original ways, it still may warrant copyright protection “if the creative spark behind a commercial jewelry design is more like a flickering match than a bolt a lightning.”[192] Therefore, originality remains a primary prerequisite for aesthetic works. In sum, rings should not be considered useful articles subject to a separability test. While rings certainly have uses, these uses do not qualify as an intrinsic utilitarian function in light of case law and the legislative history behind the Copyright Act. While jewelry designers generally account for functional considerations in the design process, these considerations serve more as a factor for determining separability. While the designer is inevitably going to run into practical issues by designing a ring for a finger, a great deal of artistic expression can exist within those confines. Lastly, museum placement is an added benefit in asserting copyrightability, and rings can still be an aesthetic work despite some historical notions that it served as a craft.

Conclusion

Ring design is an art in many senses: many jewelry designers use artistic creativity in making these ornamental sculptural pieces that leave an intimate relationship between the maker and bearer. At the same time, though, rings have been considered useful, especially when they were used as seals or to signify a class. Given the new wave of “individualistic art” during the height of the Arts and Craft Revolution, some of the old purposes of rings were diminished. As inventiveness has become a prominent objective in jewelry design, functionality is often neglected.[193] With the advent of new metals available during the 1960–80s, jewelry designers began to use a number of different materials and tools, employing new methods to create “individualistic art.”[194] Considering themselves as artists, jewelry designers seldom create “straight ‘social jewelry’” with familiar meanings such as class rings or wedding/engagement rings; “[s]tripped of familiar codes and functions, jewelry has become a vehicle for purely artistic issues”[195] in line with the Copyright Act’s objectives. After examining the purposes behind the Copyright Act and conversing at length with designers, I argue that jewelry rings lie more on the aesthetic side of the copyright spectrum. Since they do not possess an intrinsic utilitarian function, they should not be subject to a useful articles analysis. The process of designing rings certainly takes functional features into account,[196] and could seem confusing against the backdrop of the useful articles doctrine. Yet, courts have pointed out that the primary purpose of rings is to adorn. Designers employ artistic creativity in creating rings, which the Copyright Act is designed to protect. Also, designers see themselves and their creations as art, which further indicates that rings do not contain an intrinsic utilitarian function. Categorizing the functions of a ring as intrinsically utilitarian would unduly expand the functionality doctrine and could render works of art as useful articles. While jewelry designers consider how a ring fits comfortably around a finger, they incorporate artistic elements to convey a personal story through the details. In articulating a particular expression in a tangible form, jewelry designers should be entitled to robust copyright protection for their rings—specifically, as sculptural works not subject to a useful articles analysis.
* J.D. Candidate, New York University School of Law, 2016; B.A. International Relations, magna cum laude, University of Pennsylvania, 2012. The author would like to thank Professor Jeanne Fromer and the 2015-16 Editorial Board of the NYU Journal of Intellectual Property & Entertainment Law for their invaluable assistance throughout the editing process. The author would also like to acknowledge Courtney Crangi of Giles & Brother, Danielle Frankel Nemiroff of Phillips House, Tanya Gruenberg of Studio Grun, and Jeffry Aronsson of the Aronsson Group for speaking about their experiences with the jewelry design process and copyright protection.
[1] Norman Cherry, Jewelry Design and Development: From Concept to Object 6 (Susan James et al. eds., 2013).
[2] Bruce Metcalf, On the Nature of Jewelry, Jewelry Australia Now (1989), http://www.brucemetcalf.com/pages/essays/nature_jewelry.html.
[3] See generally Kal Raustiala & Christopher Jon Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1696-99, 1725–32 (2006).
[4] Interview with Courtney Crangi, CEO, Philip Crangi Jewelry and Giles & Brother, in New York City, N.Y. (Mar. 30, 2015) (explaining how she was quite upset when she saw a knockoff of a Giles & Brother signature necklace sold at a certain multinational retail store).
[5] Kathryn Dachille, Bling It On: Copyright & The Rise of Jewelry Infringement Lawsuits, Creative Arts Advocate (2014), http://creativeartsadvocate.com/bling-it-on-copyright-the-rise-of-jewelry-infringement-lawsuits.
[6] 17 U.S.C. § 101 (2006).
[7] See infra Part I.B.2.
[8] Fashion designs do not meet the conceptual separability test because it is hard to distinguish their expressive and functional components. Hemphill & Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147, 1185 (2009).
[9] Cherry, supra note 1 at 6. See also Metcalf, supra note 2.
[10] See infra Part I.C.
[11] U.S. Const. art. I, § 8, cl. 8.
[12] See Act of May 31, 1790, ch. 15, 1 Stat. 124.
[13] Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916).
[14] Robert C. Denicola, Applied Art and Industrial Design: A Suggested Approach to Copyright in Useful Articles, 67 Minn. L. Rev. 707, 711 (1983).
[15] See Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075. See also, Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 365 (1990).
[16] Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075.
[17] Copyright Off., Rules and Regulations for the Registration of Claims to Copyright, Bulletin No. 15, at 8 (1910).
[18] Mazer v. Stein, 347 U.S. 201, 212 n.24 (1954) (quoting 37 C.F.R. § 201.4(7) (1917)).
[19] Id. at 212-213 (quoting 37 C.F.R. § 202.10(a) (1949)).
[20] Id. (emphasis added).
[21] Id. at 201.
[22] Id. at 214.
[23] Id. at 218.
[24] 205 F.2d 633 (9th Cir. 1953).
[25] Denicola, supra note 14, at 17.
[26] 205 F.2d at 635.
[27] See generally Boucher v. Du Boyes, Inc., 253 F.2d 948 (2d Cir.), cert. denied, 357 U.S. 936 (1958); Dan Kasoff, Inc. v. Palmer Jewelry Mfg. Co., 171 F. Supp. 603, 606 (S.D.N.Y. 1959); Trifari, Krussman & Fishel, Inc. v. B. Steinberg-Kaslo Co., 144 F. Supp. 577 (S.D.N.Y. 1956); Trifari, Krussman & Fishel, Inc. v. Charel Co., 134 F. Supp. 551, 553 (S.D.N.Y. 1955).
[28] See H.R. Rep. No. 94-1476, at 54 [hereinafter House Report] (“In accordance with [Mazer] works of ‘applied art’ encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.”).
[29] “It is undisputed that jewelry is included within the sculptural works classification of Section 102(a)(5).” Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 266 (N.D. Ill. 1997).
[30] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 993 n.5 (2d Cir. 1980).
[31] 17 U.S.C. § 101 (2006).
[32] Id. (emphasis added).
[33] House Report, supra note 28, at 55 (1976).
[34] See, e.g., Stephen Langs, The Definitional Scope of an Intrinsic Utilitarian Function Under the 1976 Copyright Act: One Man’s Use Is Another Man’s Art, 20 W. New Eng. L. Rev. 143, 171-72 (1998).
[35] House Report, supra note 28 at 55 (1976).
[36] 703 F.2d 970, 973 (6th Cir. 1983) (noting that while a toy airplane may have other uses, its intrinsic purpose is to portray a real airplane).
[37] 834 F.2d 1142 (2d Cir. 1987) (examining the differences in design between the wire sculptural work and the ultimate bike rack, the utilitarian reasons in implementing the design changes, manufacturing concerns, advertising costs, and promotional or marketing objectives to determine whether the bike rack was a useful article); 745 F.2d 1238 (9th Cir. 1984) (looking at expert evidence, the designer’s intent, testimony regarding industry practice in the art world and clothing trade, and marketing data to assess whether the bathing suit was a useful article).
[38] 632 F.2d 989, 993–94 (2d Cir. 1980).
[39] 773 F.2d 411, 419 (2d Cir. 1985).
[40] 834 F.2d at 1148.
[41] 632 F.2d at 994.
[42] Stephen Langs, The Definitional Scope of an Intrinsic Utilitarian Function Under the 1976 Copyright Act: One Man’s Use Is Another Man’s Art, 20 W. New Eng. L. Rev. 143, 155-56 (1998)
[43] Kieselstein-Cord, 632 F.2d at 993–94.
[44] 773 F.2d at 412.
[45] Id. at 420. Ultimately, Judge Newman found the design features of the mannequins could constitute “conceptual separability.” Id. at 426.
[46] See id. at 419. See also Shira Perlmutter, Conceptual Separability and Copyright in the Designs of Useful Articles, 37 J. Copyright Soc’y U.S.A. 339, 365 (1990).
[47] 773 F.2d at 419.
[48] 834 F.2d 1142, 1146–48 (2d Cir. 1987).
[49] Id.
[50] Id.
[51] Id.
[52] 703 F.2d 970 (6th Cir. 1983).
[53] Id. at 973.
[54] Id.
[55] Id.
[56] Id. at 974.
[57] 745 F.2d 1238 (9th Cir. 1984).
[58] Id. at 1243.
[59] Id.
[60] Darren Hudson Hick, Conceptual Problems of Conceptual Separability and the Non-Usefulness of the Useful Articles Distinction, 57 J. Copyright Soc’y U.S.A. 37, 53 (2010).
[61] Id.
[62] Thomas M. Byron, As Long as There’s Another Way: Pivot Point v. Charlene Products as an Accidental Template for a Creativity-Driven Useful Articles Analysis, 49 IDEA: The Intell. Prop. L. Rev. 147, 181 (2008).
[63] Id.
[64] Id.
[65] Compare Weindling International, Corp. v. Kobi Katz, Inc., No. 00 Civ 2022, 2000 WL 1458788, *2 (S.D.N.Y. Sep. 29, 2000) (determining that combination of unoriginal elements in design of diamond “bridge” rings were original), and Diamond Direct, LLC v. Star Diamond Group, 116 F. Supp. 2d 525, 529 (S.D.N.Y. 2000) (considering the originality of diamond ring designs), with Vogue Ring Creations, Inc. v. Hardman, 410 F. Supp. 609, 611 (D.R.I. 1976) (holding that the ring design was “utterly devoid of any ‘original creativity’” and therefore not protectable).
[66] 768 F. Supp. 414 (S.D.N.Y. 1991).
[67] See id. at 416-417.
[68] Id. at 416.
[69] Id.
[70] See id. at 417.
[71] Weindling Int’l, Corp. v. Kobi Katz, Inc., No. 00 Civ. 2022, 2000 WL 1458788, at *4 (S.D.N.Y. Sep. 29, 2000).
[72] Id.
[73] 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[74] Id.
[75] Id.
[76] Cherry, supra note 1, at 6.
[77] Metcalf, supra note 2.
[78] Cherry, supra note 1, at 6.
[79] Metcalf, supra note 2.
[80] Paul Greenhalgh, The History of Craft, in The Design History Reader 329 (Grace Lees, Maffei & Rebecca Houze, eds., 2010).
[81] Id. at 333.
[82] Helen W. Drutt English & Peter Dormer, Jewelry of Our Time: Art, Ornament and Obsession 12 (1995).
[83] Cherry, supra note 1, at 9.
[84] English & Dormer, supra note 82, at 12.
[85] Cherry, supra note 1, at 9.
[86] English & Dormer, supra note 82, at 12.
[87] Cherry, supra note 1, at 9.
[88] Interview with Courtney Crangi, supra note 4.
[89] Andy Warhol and others challenged the notion of what is art, namely “Art with a capital A.” Many artists, philosophers, and writers began to take the view that art is how the viewer experienced the work, rather than the conventional rules prescribed to the creative piece: “if the artist offered a work of art and a viewer saw and understood it as art, then it must be art.” Cherry, supra note 1, at 10.
[90] Id.
[91] Metcalf, supra note 2.
[92] 17 U.S.C. § 101. See also Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000); Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[93] Cherry, supra note 1, at 121.
[94] Id.
[95] Act of July 8, 1870, ch. 230, § 86, 16 Stat. 198, 212 (repealed 1916).
[96] Act of March 4, 1909, 60th Cong., 2d Sess., 35 Stat. 1075 (repealed 1976).
[97] 17 U.S.C. § 101 (emphasis added).
[98] U.S. Const. art. I, § 8, cl. 8.
[99] Denicola, supra note 14, at 722. See Mazer v. Stein, 347 U.S. 201, 219 (1954) (“The economic philosophy behind the clause empowering Congress to grant patents and copyrights is the conviction that encouragement of individual effort by personal gain is the best way to advance public welfare through the talents of authors and inventors in ‘Science and useful Arts.”). See also Jeanne C. Fromer, A Psychology of Intellectual Property, 104 Nw. U. L. Rev. 1441, 1457-58 (2010).
[100] Fromer, supra note 99, at 1492.
[101] Id. at 1492, 1497.
[102] Id. at 1444. See also discussion infra Part II.B.2 (explaining how jewelry designers infuse of artistic concepts into their designs).
[103] Fromer, supra note 99, at 1444.
[104] See generally Cherry, supra note 1.
[105] Id. at 42.
[106] Id. at 92.
[107] Fromer, supra note 99, at 1467.
[108] Cherry, supra note 1, at 121.
[109] Interview with Tanya Gruenberg, Creative Director/Jewelry Designer, Studio Grun, in New York City, N.Y. (Mar. 3, 2015).
[110] Id.
[111] Cherry, supra note 1, at 16.
[112] Id. at 106.
[113] Id.
[114] Id.
[115] Interview with Courtney Crangi, supra note 4; see also Phillip Crangi Designs, http://www.philipcrangi.com/collections/womens-rings (last visited May 19, 2015).
[116] Phillip Crangi Designs, supra note 115.
[117] Fromer, supra note 99, at 1493.
[118] Hick, supra note 60, at 53.
[119] Cherry, supra note 1, at 10.
[120] Metcalf, supra note 2. See Cherry, supra note 1, at 13-17.
[121] See e.g., Designer Profile: Philip Crangi, Style Caster (2009) http://stylecaster.com/ designer-profile-philip-crangi/ (“I see jewelry as small sculptural piece, so really for me, this is a sculptural pursuit.”).
[122] Metcalf, supra note 2.
[123] Cherry, supra note 1, at 105.
[124] Interview with Tanya Gruenberg, supra note 109.
[125] Id.
[126] Id.
[127] Current Obsession, The Gijs + Emmy Show, http://current-obsession.com/THE-GIJS-EMMY-SHOW (last visited March 19, 2016).
[128] Domus, Otto Künzli Jewellery, http://www.domusweb.it/en/news/2014/08/18/otto_ kunzli_jewellery.html (last visited March 19, 2016).
[130] Pinterest, https://www.pinterest.com/pin/468655904947185241/ (last visited May 19, 2015).
[131] Irene Neuwirth Jewelry, http://ireneneuwirth.com/ (last visited May 19, 2015).
[133] See e.g., Minimalissimo Magazine, http://minimalissimo.com/2009/08/humidifier/ (last visited May 19, 2015) (a minimalist humidifier); Architecture, Art & Design, http://www.architectureartdesigns.com/27-cool-furniture-ideas-inspired-by-pop-art/ (last visited May 19, 2015) (pop art chairs).
[134] See United States Copyright Office, Rules and Regulations for the Registration of Claims to Copyright 12(g) (1917) (listing “garments” among works that should not be registered).
[135] See Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788, at *4 (S.D.N.Y. Sep. 29, 2000); Donald Bruce & Co. v. B. H. Multi Com Corp., 964 F. Supp. 265, 267 (N.D. Ill. 1997).
[136] Metcalf, supra note 2.
[137] Id.
[138] Art, Design & Visual Thinking: An Interactive Textbook, http://char.txa.cornell.edu/art/dress/dress.htm (last visited May 19, 2015).
[139] Metcalf, supra note 2.
[140] See Raustiala & Sprigman, supra note 3, at 1745–55.
[141] Id.
[142] English & Dormer, supra note 82, at 20 (“Ornament and decoration are still important objectives in jewelry design.”).
[143] Id. at 13.
[144] Id.
[145] Id. at 13-14.
[146] See House Report, supra note 28, at 54 (“In accordance with [Mazer] works of “applied art’ encompass all original pictorial, graphic, and sculptural works that are intended to be or have been embodied in useful articles, regardless of factors such as mass production, commercial exploitation, and the potential availability of design patent protection.”); see also Mazer v. Stein, 347 U.S. 201, 217-18 (1954) (We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.”).
[147] Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000).
[148] Metcalf, supra note 2.
[149] Id.
[150] Id.
[151] 17 U.S.C. § 101 (defining a “useful article” as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information”).
[152] See supra Part I.B.2.
[153] American Gem Society, The Healing Power of Gemstones, http://www.americangem society.org/healing-gemstones (last visited May 19, 2015).
[155] Id.
[157] Cultural China, A Brief Introduction of Chinese Jade-Culture, http://arts.cultural-china.com/en/32Arts4663.html (last visited May 19, 2015).
[158] Jade Gallery Hawaii, The Power of Jade, http://www.jadegalleryhawaii.com/power-of-jade.htm (last visited Feb. 3, 2016).
[159] Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970, 973 (6th Cir. 1983). These categories are subject to patent protection, which requires “novelty,” a more demanding standard. See generally Joseph Scott Miller, Hoisting Originality, 31 Cardozo L. Rev. 451, 465-67 (2009).
[160] Metcalf, supra note 2.
[161] See supra Part I.B.2.
[162] See Metcalf, supra note 2. See also Kristen Booker, What Happens When the World Doesn’t Understand Your Hair, Marie Claire (Mar. 4, 2015, 4:23 PM), http://www.marieclaire.com/beauty/news/a13591/what-happens-when-the-world-doesnt-understand-your-hair/ (commenting on the status of a David Yurman ring and how NY subway goers find it unlikely for an African-American woman with curly hair in a full twist out to own a real one).
[163] Possibly with the exception of engagement rings, which can still serve as class identifiers. See The History of Jewelry: Why do we Wear Jewelry?, Say Why Do I (Sept. 3, 2011), http://www.saywhydoi.com/the-history-of-jewelry-why-do-we-wear-jewelry/.
[164] See id.
[165] Gay Toys, Inc. v. Buddy L Corp, 703 F.2d 970, 973 (6th Cir. 1983).
[166] Hick, supra note 60, at 53. “Alternatively, several theorists have argued that the function of art is to bring about the ‘aesthetic experience,’ to produce ‘aesthetic contemplation,’ or to yield ‘aesthetic satisfaction.” Id.
[167] Melissa M. Mathis, Function, Nonfunction, and Monumental Works of Architecture: An Interpretive Lens in Copyright Law, 22 Cardozo L. Rev. 595, 621 (2001).
[168] See Alice Sprintzen, Jewelry, Basic Techniques and Design, 6 (1980).
[169] Id.
[170] Id. at 74.
[171] Interview with Danielle Frankel Nemiroff, Co-Designer, Phillips House, in N.Y.C., N.Y. (Apr. 2. 2015).
[172] Id.
[173] No. 3 Hexagon Large Ring, The Shop by Phillips House, http://shop.phillipshouse.com/ collections/rings/products/yg-am-no-3-large-hex-ring (last visited May 19, 2015).
[174] Interview with Tanya Gruenberg, supra note 109. Studio Grun cuffs, however, are designed heavier to signify luxury. Id.
[175] King Crown Ring, Studio Grun, http://www.studiogrin.com/shop/companion-ring-turquoise (last visited Feb. 18, 2016).
[176] Interview with Tanya Gruenberg, supra note 109.
[177] See Maia Adams, Fine Jeweller Jennie Kwon, Adorn Jewellery Blog (May 9, 2014), http://www.adorn-london.com/profile/jennie-kwon/.
[178] Black Diamond Mint Deco Point Ring, Jennie Kwon Designs, http://jenniekwondesigns.com/products/black-diamond-mini-deco-point-ring (last visited May 19, 2015).
[179] See Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142, 1148 (2d Cir. 1987).
[180] See id. at 1143, 1148.
[181] Metcalf, supra note 2.
[182] See English & Dormer, supra note 82, at 14.
[183] Id.
[184] Museum of Art & Design, Fashion Jewelry: The Collection of Barbara Berger, http://madmuseum.org/exhibition/fashion-jewelry (last visited May 19, 2015).
[185] The Metropolitan Museum of Art, Jewels by JAR, http://www.metmuseum.org/about-the-museum/press-room/exhibitions/2013/jewels-by-jar (last visited May 19, 2015).
[186] Id.
[187] Museum of Art & Design, Ralph Pucci, The Art of the Mannequin http://madmuseum.org/exhibition/ralph-pucci (last visited May 19, 2015); cf. Carol Barnhart v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (holding a mannequin as a useful article).
[188] English & Dormer, supra note 82, at 20.
[189] Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989, 991 (2d Cir. 1980).
[190] Weindling Int’l v. Kobi Katz Inc., No. 00 Civ. 2022, 2000 WL 1458788 at *4 (S.D.N.Y. Sep. 29, 2000) (probably referring to Roth Greeting Cards v. United Card Co., 429 F.2d 1106 (9th Cir. 1970), which granted Copyright protection to greeting card that paired a simple, trite drawing on the outside with the phrase “I love you” on the inside.)
[191] 499 U.S. 340, 345 (1991). Although the Court acknowledged that “the requisite level of creativity is extremely low” and that “even a small amount will suffice,” it concluded that white-page telephone directories fail to meet the Copyright Act’s originality requirement. See id.
[192] Weindling Int’l, Corp., 2000 WL 1458788, at *4.
[193] See Metcalf, supra note 2.
[194] English & Dormer, supra note 82, at 12.
[195] See Metcalf, supra note 2.
[196] Cf. Carol Barnhart v. Economy Cover Corp., 773 F.2d 411 (2d Cir. 1985) (deciding a mannequin was a useful article because the function was driving the form). See also Brandir Int’l v. Cascade Pac. Lumber Co., 834 F.2d 1142 (2d Cir. 1987) (holding a bike rack uncopyrightable because form and function merged during the design process).

Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress

Lost and Found: Intellectual Property of the Fragrance Industry; From Trade Secret to Trade Dress
By Charles Cronin* Download a PDF version of this article here.  

Introduction

The foundations of the modern fragrance industry can be traced to fragrance producers established in the south of France during the sixteenth century.[1] France’s Mediterranean coast offers excellent conditions for cultivating plants whose flowers, fruit, stems, and roots are used to produce fragrances.[2] For centuries fragrance manufacturers located themselves near growers in order to obtain and process the plant materials as soon as possible after their harvest.[3] By the nineteenth century many of the essences produced by these manufacturers were shipped to Paris to be purchased by hundreds of small perfume houses there that mixed them and sold the compounds in branded retail products like fine fragrances, soaps, and cosmetics.[4] Throughout the nineteenth century, the farms, essential oil producers, and manufacturers of branded fragrances, were family enterprises.[5] With small staffs, often comprised of related individuals who spent their entire careers with the same firm, it was relatively easy for these businesses to maintain proprietary information about distillation techniques, the composition of branded perfumes, and other elements of the production process. During the twentieth century, the fragrance industry underwent radical changes. Increasing real estate values in the area of Grasse, coupled with rising labor costs, prompted the sale of land once used to cultivate jasmine and other flowers for more profitable uses like condominium developments.[6] Today, most of the crops used in fragrance manufacture are grown and processed in countries like Algeria and India where land and labor are relatively inexpensive.[7] Most of the small perfumeries in Paris have disappeared or have been consolidated. By the end of the twentieth century, five fragrance and flavor companies – none of them French – had come to supply over half of the world fragrance market.[8] Whereas the perfumeries in Paris in the nineteenth century created their own branded proprietary blends, today most perfumes are developed and manufactured by a few large corporations with branches all over the world.[9] The inexorable consolidation in the fragrance manufacturing industry over the past century has made the remaining fragrance houses more vulnerable to misappropriation of their intellectual property, particularly of fragrance formulas that they develop at significant expense. Members of the close-knit cadres of the small fragrance houses of the nineteenth century worked in one location, and on behalf of one enterprise, their entire career. Today, perfumers, like professionals in other high technology industries, commonly change not only their locations, but also their employers. This itinerancy has engendered an element of unease among fragrance houses as to the security of their most valuable assets: formulas and other trade secrets that can now be readily obtained, copied, and shared by employees with access to the relevant information stored on the company’s servers.[10] Another late-twentieth-century development that has unnerved fragrance manufacturers is the improving accuracy of analytic technologies in revealing a fragrance’s chemical composition. Unlike digital technologies that have unsettled the media industry by enabling surreptitious copyright infringement, chemical analytic technologies do not enable the illegal acquisition or distribution of intellectual property. It is generally considered lawful to use these technologies, not only to obtain the fragrance formulas of competitors, but also to develop competing products.[11] The fragrance business is by no means the only industry that has had to cope with developing analytic and reproduction technologies, or increasingly itinerant employees. For centuries, many industries have struggled to maintain the confidentiality of proprietary business information, and the ongoing viability of these industries has depended in part on negotiating these challenges. Chartreuse liqueur, and Meissen porcelain manufacturers, for instance, effectively confronted such provocations, and may offer perspectives on how the fragrance industry might best come to terms with its weakened capacity to maintain proprietary knowledge. Since the early seventeenth century, monks of the Carthusian Order have produced Chartreuse.[12] In 1903 the French government appropriated the order’s monastery, exiling the monks to Tarragona, Spain, where they reestablished their eponymous liqueur manufactory.[13] The government sold the monks’ distillery in France, along with the Chartreuse trademark, to private investors who attempted to produce the monks’ cordial.[14] In a demonstration of divine justice, the “new” Chartreuse failed utterly in the market because its makers could not determine the complex formula; the Carthusians were careful to leave no trace of their secret recipe and methodology when they were expelled from France.[15] Today the Carthusians thrive in France once again, thanks, in part, to their effective maintenance of this centuries-old trade secret.[16] Their ability to do so stems from the order’s remarkable avoidance of verbal communication, and extremely limited transfer of proprietary information; each monk vows to a life of silence, and only two monks know the formula for Chartreuse at any time.[17] Messien porcelain provides another perspective for how the fragrance industry might face threats to its trade secrets. Early in the eighteenth century Johann Böttiger, an alchemist working for the Saxon king in Meissen, discovered how to make porcelain.[18] Soon thereafter, Böttiger relocated his workshop to Albrechtsberg Castle, atop a high hill, which protected his trade secrets from the predacious eyes of competitors prowling the streets of Meissen.[19] Despite Böttiger’s precautions, his secrets of the materials and manufacturing techniques for porcelain were appropriated, and widely disseminated, within decades of his breakthrough.[20] Böttiger’s motley crew of laborers, artists, and chemists, were notoriously disloyal, tempted by potential financial windfalls from disclosing his secrets, or by establishing competing enterprises implementing them.[21] Despite the loss of its most precious asset, Böttiger’s enterprise still survives as “Meissen Couture” a luxury products manufacturer and retailer that sells an enormous range of products ranging from porcelain to clothing to furniture.[22] This diversification was essential for the survival of the enterprise. It was made possible, however, only by associating thousands of unrelated products to the porcelain on which the company was founded, and for which it is renowned.[23] All Meissen products are branded with the logo of crossed swords with which the company has marked its porcelain since the 1720s.
  The fragrance industry now faces a dilemma similar to that confronting the Meissen porcelain business 250 years ago, when Böttiger’s trade secrets were lost through breaches of physical security measures, and collegial disloyalty. To stanch a similar loss of their proprietary information, fragrance manufacturers could attempt to replicate the Carthusians’ success with Chartreuse. They could adopt the monks’ code of secrecy and silence, and relocate their manufactories to remote locations where they also cultivate the crops used to create new proprietary blends.[24] This solution, however, would be practically, agriculturally, and legally infeasible. Unlike the small cadre of monks whose conduct is governed by regulations that transcend the secular world, the fragrance industry, employs hundreds of thousands of direct and indirect workers, making secrecy practically impossible.[25] Legally, such restrictions would be indefensible, due to the extraordinary constraints on employees’ speech and movement.[26] Therefore, Chartreuse does not offer an apposite potential new business model for the fragrance industry. Meissen porcelain, however, may provide the fragrance industry an encouraging example of the value of reorienting its intellectual property focus. Despite the loss of its greatest asset, the Meissen porcelain business survived, not only by diversifying its merchandise, but also by invigilating over another significant intellectual property asset it has never lost: the crossed swords mark with which it has always branded its goods.[27] Like the secrets of porcelain manufacture, those used to create fragrances have been revealed, or are increasingly vulnerable to discovery, through reverse engineering and disclosure regulation.[28] Meanwhile, fragrances are increasingly being used as a component of trade dress in branding goods and services.[29] It is the corporate customers of the fragrance industry, rather than the fragrance manufacturers themselves, who benefit financially from fragrance trade dress. However, the increasingly widespread application of fragrances in this manner has added value to an expanding number of goods and services, and the fragrance manufacturers should reasonably expect to share in profits generated thereby.[30] This article proposes that while trade secret protections for fragrances have lost much of their efficacy, trademark and unfair competition law may offer currently unrealized legal protection of the use of fragrances as trade dress. Part I chronicles how reverse engineering has undermined the fragrance industry’s reliance, from time immemorial, on secrecy to protect its intellectual property. Part II considers the limited efficacy of copyright and patent protection for fragrances. Part III canvasses the growing practice of using of fragrance as a component of multisensory trade dress, and the potential legal protection of such uses through trademark and unfair competition law. The article concludes by drawing an analogy between the dissemination of fragrances and the performance of musical works, to enhance commercial spaces. It suggests that the fragrance industry might temper the economic injury incurred from the loss of intellectual property protection it once enjoyed by seeking a portion of the economic dividends generated by these enhancements of public and commercial venues.

I. The Fragrance Industry and the Challenge of Reverse Engineering

A. Regulation of Reverse Engineering in the United States and the European Union

In the twenty-first century, trade secrets have become increasingly vulnerable to disclosure, not only because of the ease with which information can be shared, but also because of advances in analytic technologies enabling reverse engineering.[31] Legislatures in both the United States and European Union are aware of this increased vulnerability affecting a broad range of industries, as evidenced in recent legislative proposals.[32] To obtain legal protection as a trade secret, information must be commercially valuable, not generally known, and subject to reasonable efforts to maintain its secrecy.[33] While trade secrets in the United States are not broadly protected under federal statute, they are regarded as intellectual property alongside information protected by patents, copyrights, and trademarks.[34] The recently proposed European Union Trade Secrets Directive, on the other hand, suggests that trade secrets, while intellectual “assets”, should not be protected as “formal” intellectual property rights like patents, etc., but rather as a “complement” or “alternative” to these “classical IP rights.”[35] Unlike owners of patents, copyrights, and trademarks, who are provided the right to prohibit most unauthorized uses of their protected intellectual property,[36] owners of trade secrets, do not enjoy this privilege. While trade secret law may protect a trade secret indefinitely, if another individual or organization acquires the information in question, it is no longer secret, and its original owner cannot prevent others from using it. Moreover, another person may independently develop secret know-how or, more commonly, will learn it through reverse engineering, i.e., by analyzing the composition of an object implementing the trade secret.[37] A trade secret’s vulnerability to reverse engineering depends on both the complexity of the secret and the nature of the product it implements. A material object, like a fragrance, is more tractable to reverse engineering than an intangible product or service, because it provides palpable and otherwise perceptible information. While it may be easier to “crack” trade secrets used in the production of material goods than of immaterial services, it may be more difficult to implement the acquired information, because the value of physical products depends – to varying degrees – upon the materials used in their manufacture. For example, the secret formula for a fine fragrance is more valuable to a company with established ties to suppliers of top-tier natural raw materials than to a start-up sourcing from an unknown grower selling adulterated plant essences. It is generally legally permissible in the United States to acquire trade secrets through reverse engineering.[38] This permissibility is desirable because it forestalls the possibility that trade secret law would provide monopolist protection for innovations, a right under the exclusive purview of federal patent law.[39] Federal legislation has, nevertheless, restricted unauthorized use of information acquired through reverse engineering of certain products. Congress has effected these limitations on reverse engineering by amending the copyright statute to provide sui generis protection for certain products like semiconductor chips, digital content anti-circumvention technologies, and original boat hull designs.[40] These protections constitute legislative “carve outs” from the broad right to reverse engineer a product and use the information learned thereby. In providing these protections, Congress’ purpose was to avert potentially gross unfairness that may occasion market failure, resulting from the easy replication of a technological advancement that may have cost another years of work and hundreds of thousands of R&D dollars.[41] On the other hand, the European Union’s proposed Directive on trade secrets would establish a liberal policy toward the acquisition of trade secrets through reverse engineering, akin to that found under United States law.[42] This approach is somewhat paradoxical: while the fundamental objective of the Directive is to harmonize and strengthen the legal protection of trade secrets across all member states, its permissive approach to reverse engineering would likely weaken extant trade secret protection available under the domestic law of some European Union members, such as Italy.[43] For example, while some states, such as Italy, consider trade secret law as a distinct form of intellectual property, the Directive transforms it into a component of unfair competition law.[44] Furthermore, as argued in a critique from the Max Planck Institute, the Directive’s liberal stance on reverse engineering is particularly troublesome to industries that depend upon innovative products embodying intellectual investment that is not protected as intellectual property.[45] The Institute’s Comments identify fragrance manufacturing as a prime example of such an industry, and suggest that the Directive’s lax approach to the acquisition of trade secrets eventually could result in the evisceration of innovation in this industry and lead to the failure of this market.[46]

B. Challenges to the Fragrance Industry’s Traditional Reliance on Trade Secrets

The modern fragrance industry has a longstanding reputation for exceptional secrecy.[47] Its clandestine nature is an outgrowth of its origins in early medical and pharmaceutical endeavors in France, in which the creators of curative potions and elixirs carefully guarded their formulas.[48] By the nineteenth century, fragrance manufacturing had become largely independent of the pharmaceutical business.[49] Many enterprises had been established in the area of Grasse exclusively for the production of fragrances, particularly perfumes to be applied to the body.[50] Unlike most retail products incorporating materials produced by the fragrance industry today, these goods were considered luxuries to be enjoyed by a few affluent consumers, and produced in small quantities by family-owned enterprises.[51] It was relatively easy to keep manufacturing know-how and formulas secret among the small staffs of these enterprises.[52] Moreover, these teams were often comprised of related employees, most of whom who would spend their entire careers at the company.[53] While the industry still produces luxury products, like fine fragrances, today it is highly consolidated and creates scents used for innumerable consumer products like laundry detergent and hair gel.[54] The largest of these fragrance manufacturers have thousands of employees who commonly move among companies over the course of their careers.[55] The enormous expansion of both the fragrance industry’s now-itinerant workforce, as well as the number of consumer products it affects, has made it much more difficult for fragrance producers today to maintain their trade secrets.[56] This difficulty has been reflected in a flurry of trade secret misappropriation claims made by former employers of perfumers and flavorists who joined competing firms.[57] One of the most acrimonious of these disputes involves the ongoing prosecution by Givaudan, a large Swiss-based fragrance manufacturer, of a claim against its former perfumer James Krivda.[58] The circumstances surrounding this ongoing dispute illustrate both a company’s vulnerability to misappropriation of proprietary information given employees’ itinerancy, and the difficulty of establishing misappropriation without disclosing the secrets themselves. In 2008 Krivda left a vice-president position at Givaudan for a similar appointment at Mane USA, Inc., a direct competitor.[59] Givaudan asserts that in the days immediately prior to resigning, Krivda downloaded and printed from the company’s secure database over 600 proprietary formulas that he brought with him to Mane.[60] At trial Givaudan offered detailed evidence that Mane had capitalized on thirty-four of the formulas that it claimed Krivda misappropriated, by marketing fragrances identical to Givaudan’s under new names.[61] The trial court, however, granted in part the defendants’ motion for summary judgment based on a finding of insufficient disclosure by Givaudan of information about 600 of the additional formulas that Givaudan claimed the defendants had misappropriated.[62] Accordingly, testimony at trial was limited to a small fraction of the information Givaudan claimed Krivda misappropriated. In February 2014 a federal district court jury in New Jersey exonerated Krivda and Mane of all liability, and Givaudan is now seeking a new trial.[63] In prosecuting this claim Givaudan faced a commonplace dilemma of plaintiffs in trade secret litigation. To establish a meaningful claim of trade secret misappropriation, an owner must convey information about the secret both to the court and to the defendant. Once this information is voluntarily disclosed, however, it may no longer be protectable as a trade secret, because its secrecy has been unquestionably compromised.[64] What rattled Givaudan most about Krivda’s alleged theft was that Mane obtained the information without any cost. By purportedly absconding with hundreds of Givaudan’s formulas, Krivda provided its competitor a windfall of valuable information without the reverse engineering costs that would be incurred through legal acquisition. Krivda could have purchased hundreds of products incorporating Givaudan’s fragrances, and worked with Mane’s chemical analysts on the painstaking task of isolating and dissecting them. Given the brief life cycle of most fragrances, however, the market success of an innovative product depends significantly on the potentially dissuasive expense and time lag incurred in reverse engineering and developing a competing product. Therefore, if Krivda provided to Mane the trade secrets Givaudan claims he stole, Mane could not only avoid the temporal and financial cost of reverse engineering, but also produce, within the period of market viability, competing merchandise offered at a lower price. Moreover, because reverse engineering technologies cannot always provide exact and complete information about the chemical composition of a fragrance, a competitor can avoid any potential ambiguities by simply lifting the formula itself.

C. The Impact of Gas Chromatography-Mass Spectrometry (GC-MS) Technologies on the Fragrance Industry

In 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.[65] 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.[66] In fact, using contemporary GC-MS technologies, one can learn with remarkable accuracy the formula of any fragrance.[67] 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.[68] 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.[69] GC-MS technology has disconcerted fragrance houses because it enables practically anyone to obtain a fragrance’s formula swiftly and inexpensively.[70] 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.[71] 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.[72] Five multinational corporations, four of which originated in Western Europe, dominate the world fragrance market.[73] 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.[74] 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.[75] 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.[76] 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”.[77] Previously, they had obtained these supplies from Givaudan, Firmenich, and IFF, after these companies had developed the respective formulas.[78] 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.[79] LVMH’s actions were particularly distressing to fragrance houses because they involved the production of successful and well-established perfumes.[80] 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.[81] As the owner of fragrance brands like Givenchy and Dior, LVMH is one of the most significant players in the retail fragrance industry.[82] 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.[83] 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?

II. Patent and Copyright Protection for Fragrances

A. Patent

U.S. and E.U. law provides patent holders with a twenty-year monopoly on the manufacture, use, and sale of their inventions.[84] 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.[85] 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.[86] An invention must be useful to be patentable.[87] 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.[88] 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.[89] 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”.[90] However, most of these applications are for innovative means for extracting, manufacturing, or delivering fragrances.[91] 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.[92] Fragrance companies also rely upon patents to protect some of their most valuable assets: new fragrance molecules that they have developed, known as “captives”.[93] 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.[94] 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.[95] 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.[96]

B. Copyright

Copyright registration is easier to acquire than patent,[97] because the registering author must simply claim that his work is more than de minimus original expression.[98] 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.[99] Copyright owners enjoy a “bundle of rights” in a protected work, including those to reproduce and perform it, and to create derivative works.[100] 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.[101] 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.[102] 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.”[103] The United States Copyright Statute offers a similarly broad definition of copyrightable authorship, followed by an illustrative list of eight categories of copyrightable works.[104] 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.[105] 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.[106] 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.[107] Digital audio technologies can dissect the sounds of performances of even relatively complex musical works and render increasingly accurate scores in traditional music notation.[108] 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.[109] 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.[110] 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.[111] 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.[112] 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.[113] 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.[114] Although France is no longer a leading fragrance producer, it remains an influential force in the fragrance industry.[115] 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.[116] Even today many perfumers at major fragrance companies have trained, at least in part, in France.[117] Not surprisingly then, the most significant débat on whether fragrances are copyrightable expression occurred in France.[118]

C. France and the Netherlands: Odor in the Courts[119]

In the early 1970’s, the French fragrance manufacturer De Laire contracted with the couture house Rochas to create several new fragrances.[120] 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.[121] Moreover, because perfumes are not tractable to meaningful and consistent description by those who perceive them, they cannot be considered copyrightable “works of intellect”.[122] 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.[123] 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.[124] 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.[125] 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.[126] 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.[127] 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.[128] 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.[129] 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.[130] 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).[131] 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.[132] 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.[133] 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.[134] 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.[135] 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.[136] 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.[137] 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.[138] In 2006 Patrice Farque was prosecuted for selling counterfeit fragrances at a flea market outside Paris.[139] 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.[140] 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.[141] 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.[142] 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.[143] 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.

III. Fragrance and Trademark Protection

A. The Expanding Scope of Trademark Protection

Like the sphere of copyrightable expression in the United States, the range of commercial indicators protectable as trademarks increased dramatically in the latter half of the twentieth century. By the end of the century, trademark protection extended to sounds,[144] and even single colors.[145] 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.[146] 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.[147] 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.[148] 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.[149] 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.[150] A fundamental purpose of trademark protection is to protect consumers from deceptively labeled goods.[151] 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.[152] 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.[153] 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.[154] 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.[155] 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.[156] 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.[157] 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.”[158] 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.[159] 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.[160] 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.[161] In 2002 the European Court of Justice (ECJ) considered the question of what constitutes graphical representation of a scent mark.[162] The dispute involved an appeal from the ruling of a German court that upheld the national trademark office’s refusal to register a scent.[163] The applicant, Ralf Sieckmann, had submitted a fragrance claiming it as a mark denoting a range of professional services.[164] 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.”[165] The ECJ determined that none of these submissions, alone or combined, were an effective graphical representation of the scent as a trademark.[166] 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…”[167] 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.[168] 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.”[169] 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.”[170] Nevertheless, while there are many United States trademark registrations for sounds there are remarkably few for scents.[171] 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.[172] Since then, only fifteen additional fragrance marks have been registered, and only four are still “living”.[173] 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.[174] 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.[175] 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.

B. Growing Significance of Multisensory Trade Dress

Retail sales of consumer goods have always been driven in part by visual cues in the presentation of the merchandise, which comprise not only the distinctive packaging that we identify with specific products, but also the overall visual ambiance in which the products are displayed and sold. While one shops for apparel at Saks, the flattering lighting and carpeted dressing rooms promote lingering, and palliate sticker shock.[176] 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.[177] 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.[178] 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.[179] Some retailers, restaurants, and hotels still enhance their public spaces with live music performances.[180] However, with the development of recording and broadcasting technologies, this goal is now met mainly through recorded performances of musical works.[181] “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.[182] 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.[183] 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.[184] 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.[185] This ambient music affects the experience and behavior of customers in these retail spaces.[186] Retailers play music to entice customers to linger over merchandise by providing familiar and affirmative “sound tracks”.[187] They tailor the music to appeal to consumers based on factors like age, race, gender, and economic class.[188] 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.[189] 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.[190] 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.[191] 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.[192] 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.[193] 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.”[194] For example, the air in the lobbies of all Omni hotels is infused with the scent of lemongrass.[195] 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.[196] 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.[197] 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.[198] 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.”[199] 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.[200]

C. U.S. Trademark Protection for Trade Dress

Trade dress is the “total image and overall appearance” of a product, or the totality of elements that “may include features such as size, shape, color or color combinations, texture, graphics.”[201] 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.[202] 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.[203] Nevertheless, the trade dresses for most products and services have not been registered.[204] 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.[205] 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.[206] 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.[207] 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.[208] 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.[209] 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.[210] 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.”[211] 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.[212] 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.[213] 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.[214] 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.[215] The single color at issue was a bilious green/gold hue that Qualitex used on the dry cleaning pads they manufactured.[216] 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.[217] 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.[218] The Supreme Court overruled the Ninth Circuit and upheld the validity of Qualitex’s single-color trademark registration.[219] 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.[220] 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.[221] Qualitex’s trade dress gradually matured into a protectable trademark as it developed secondary meaning through ongoing use in the marketplace.[222] 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.[223] 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”.[224]

D. Fragrance as Trade Dress

Trademark, and specifically trade dress, might ultimately provide the only legally protectable intellectual property to fragrances and their manufacturers. The earlier discussion of patents and copyrights concluded that neither form of legal protection held much potential for safeguarding the fragrance industry’s intellectual property.[225] The term for a patent is only twenty years – shorter than the market lifespan of a successful perfume.[226] 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.[227] 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.[228] 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.[229] However, the legitimate use of another’s intellectual property might become part of the user’s legally protectable multisensory trade dress.[230] 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.[231] 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.[232] 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.[233] 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.[234] Because fragrance enjoys relatively limited intellectual property law protection, retailers are less legally constrained in their deployment of fragrance in their public sales spaces.[235] 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.[236] 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”.[237] 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.[238] 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.”[239] 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.[240] In contrast, humans become habituated to scent relatively swiftly.[241] 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.[242] 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.[243] 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.[244] 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.[245] 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.

Conclusion

Over the past twenty-five years advances in analytic technologies, and increasingly stringent government disclosure regulations, have challenged fragrance manufacturers’ efforts to maintain exclusive control over their most valuable assets: proprietary information relating to the creation and manufacture of fragrances.[246] 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.[247] Patents also are of limited efficacy to fragrance manufacturers, effectively protecting only newly discovered “captive” molecules.[248] 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.[249] 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.[250] 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.
* B.M. Oberlin; J.D. American Univ.; M.A., Ph.D. Stanford; M.I.M.S., Berkeley; Lecturer, USC Law School (ccronin@law.usc.edu). Un grand merci to Claire Guillemin, collègue hambourgeoise, for sustaining my interest in this curious industry.
[1] See Richard Stamelman, Perfume: Joy, Obsession Scandal Sin; A Cultural History of Fragrance from 1750 to the Present 94 (2006).
[2] Id.
[3] See Eugénie Briot, From Industry to Luxury: French Perfume in the Nineteenth Century, 85 Bus. Hist. Rev. 273, 277 (2011).
[4] Id.
[5] See id. at 277–79.
[6] See generally Sue Minter, Fragrant Plants, in The Cultural History of Plants ch. 13 (2005). The small city of Grasse is situated a few miles north of Cannes on the Ligurian sea.
[7] See id. See also Stamelman, supra note 1, at 95 (noting that the production of jasmine in Grasse peaked in the 1920s and 1930s but subsequently declined dramatically).
[8] See Leffingwell & Associates, 1999–2002 Flavor and Fragrance Industry Leaders, http://www.leffingwell.com/top_10_2.htm (last visited Jan. 12, 2016).
[9] See id.
[10] See infra text accompanying note 57.
[11] See infra text accompanying note 38.
[12] In the eleventh century , on a mountainside north of Grenoble, Saint Bruno of Cologne established the Carthusian monastic order. See John F. Fink, 100 Important Events in Catholic History: From Pope Peter to Pope Francis 43 (2013). The region’s harsh climate, however, accommodated the cultivation of little more than medicinal herbs. See La Vallée du Secret, VSD Magazine (Jun. 18, 2014). Faute de mieux, the Carthusians grew herbs that they eventually used in the manufacture of the “elixir” that in the eighteenth century they began to distribute beyond the monastery as “Chartreuse”. See id.
[13] Their expulsion appears to have been motivated by the French government’s resentment of the order’s financial prosperity. See France Banishes Carthusian Monks, N.Y. Times, Mar. 27, 1903, at 3.
[14] See History of the Chartreuse Liqueurs, Chartreuse.fr, http://www.chartreuse.fr/en/histoire/history-of-the-chartreuse-liqueurs/ (last visited Jan. 12, 2016).
[15] See id. Meanwhile, the Carthusians in Spain continued to produce the original liqueur that they then called “Tarragone” because the French government forbade their use of the trademark “Chartreuse” on products sold in France. Id. Accordingly, until 1929, when the trademark “Chartreuse” was restored to the Carthusians, those drinking Chartreuse in cafes and restaurants in France would order “a Tarragone”. Id.
[16] See generally, Into Great Silence (Zeitgeist Films 2005).
[17] See The Carthusian Order, Quick Presentation, http://www.chartreux.org/en/quick-presentation.php (last visited Jan. 11, 2016). Carthusian monks avow a life of silence, which is spent at one monastery. Many aspects of their life are hermetic, but the Carthusians are a coenobitic order in which all monks work for the communal good, with no ambition for personal financial gain. Id. Only two monks know the formula for Chartreuse at any time. See History of the Chartreuse Liqueurs, supra note 14. Like wine, Chartreuse is a volatile drink, the quality of which typically improves over time. Accordingly, even if one successfully reverse engineered the molecular composition of Chartreuse, one would need also to discover the techniques by which to nurse the liqueur to maturity over many years, to match the quality of that of the monks’. See id. Moreover, there are over 100 ingredients in Chartreuse, many of which grow only in Alpine locations like that of the Carthusians’ motherhouse. See Christina Rebuffet-Broadus, Chartreuse, France Today (Apr. 9, 2013), http://www.francetoday.com/articles/2013/04/09/chartreuse.html. Over time there have been a number of attempts to market counterfeit Chartreuse, the bottles of which are displayed at the museum of the Caves de la Chartreuse in Voiron, located near La Grande Chartreuse. WikiMedia Commons, File:Chartreuse-fake.jpg, https://commons.wikimedia.org/wiki/File:Chartreuse-fake.jpg (last visited Jan. 22, 2016).
[18] See Janet Gleeson, The Arcanum 56 (1998). After Vasco da Gama discovered a sea route between Europe and the Orient in the late-fifteenth century, Europeans began to collect Chinese porcelain. As porcelain became popular in Europe, huge quantities were obtained at great cost from China because Europeans did not possess the information needed to manufacture it. Id. at 45 (noting porcelain’s imperviousness to the water damage that threatened other luxuries like tea, silk, and spices shipped from the Orient).
[19] See text panels for exhibition: The Arnhold Collection of Meissen Porcelain, 1710 – 50 (Frick Collection, 2008) (copy on file with author). I am grateful to Frick curator Charlotte Vignon who provided me a copy of these text panels.
[20] See Gleeson, supra note 18, at 295 (noting how “the efforts of discontented employees and wandering arcanists had demolished its monopoly and spread the secret arcanum for porcelain far and wide”). Moreover, the manufacture of Böttiger’s porcelain depended upon a rare white clay called kaolin, available at the time from a sole provider in the Saxon town of Aue. When the Aue clay merchant realized that Böttiger no longer monopolized porcelain manufacture, he increased the price for clay that he charged Böttiger. He also began to sell his clay to Böttiger’s competitors, despite the fact that he was contractually bound to supply only Böttiger’s enterprise. See id. at 106.
[21] Id. In the eighteenth century the nation we now call Germany was comprised of many independent states like Saxony, Bavaria, and Württemberg. Each state had its own legal regime and there was little chance of being prosecuted for a malfeasance like trade secret misappropriation outside the jurisdiction of the owner of the trade secret. See James Sheehan, German History, 1770 – 1866 14 (1989) (noting that the “Reich came from a historical world in which nationality had no political meaning and states did not command total sovereignty.”).
[22] See Meissen Couture, Our Famous Brands, http://www.meissen.com/en/world-meissen-couture/maison-meissen-couture/our-famous-brand (last visited Jan. 11, 2016).
[23] Id. Martin Lindstrom refers to this association as the “Organizational Selling Proposition” in which not a physical product, but rather “the organization or corporation behind the brand in fact became the brand.” See Martin Lindstrom, Brand Sense: Build Powerful Brands Through Touch, Taste, Smell, Sight, and Sound 4 (2005).
[24] The quality of a fragrance, like a culinary dish, depends upon not only the formula or recipe, but also the particular ingredients used to instantiate it. If Chanel were to use jasmine from India rather than that from France to manufacture No. 5 the scent of this perfume would differ slightly from that of No. 5 – made from jasmine grown in the south of France – despite the fact that the same chemical formula would be used in creating it. Accordingly, even if one successfully reverse engineers the formula for a fragrance, one still may not be able to replicate exactly the original without access to the same source of ingredients used in the original. Cathy Newman offers a bird’s-eye view of fragrance manufacturing in her book Perfume: The Art and Science of Scent. (1998).
[25] See Int’l Fragrance Ass’n, The Socio-Economic Impact of Fragrance in Europe 7 (2012).
[26] The tension between employees’ rights of free expression and employment mobility, and employers’ right to control the dissemination of information they consider proprietary underlies most trade secret misappropriation claims today. See Roger Milgrim, Milgrim on Trade Secrets § 5.01 (1994) (noting that “as reliance on trade secret protection increases, controversies between former employers and ex-employees … will not only increase in number, they will be contested for significantly higher stakes”).
[27] See Meissen Couture, supra note 22.
[28] See infra Part I.B.
[29] See infra text accompanying note 189.
[30] Most fragrance manufacturers do not produce retail products but rather develop and produce proprietary blends that are sold to consumer goods producers like Unilever, Proctor & Gamble, and brands like Dior. See infra note 75 and accompanying discussion.
[31] See Tracy Lewis & Jerome Reichman, Using Liability Rules to Stimulate Local Innovation in Developing Countries: Application to Traditional Knowledge, in International Public Goods and Transfer of Technology Under a Globalized Intellectual Property Regime 342 (Keith Maskus & Jerome Reichman eds., 2005).
[32] See infra notes 44, 46 and accompanying text.
[33] See Unif. Trade Secrets Act (amended 1985), 14 U.L.A. 433 (1990). This Act has now been adopted by 47 of the United States. Unif. Law Comm., Legislative Fact Sheet – Trade Secrets Act, http://www.uniformlaws.org/LegislativeFactSheet.aspx?title=Trade%20Secrets%20Act. The same criteria define trade secrets in the pending European Union trade secret legislation. See Commission Proposal for a Directive of the European Parliament and of the Council on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against their Unlawful Acquisition, Use and Disclosure, COM (2013) 813 final (Nov. 28, 2013) [hereinafter Commission Proposal].
[34] The United States Economic Espionage Act criminalizes the misappropriation of trade secrets on behalf of a foreign government. See 18 U.S.C. §§ 1831–1839 (2012). In 2015, for the third time, United States legislators have introduced a bill that would create allow civil trade secret claims to be brought in federal court. See Defend Trade Secrets Act of 2015, S. 1890, 114th Cong. (2015). The United States Patent & Trademark Office identifies trade secrets as “a fourth type of intellectual property, in addition to patents, trademarks, and copyrights.” See USPTO, Trade Secrecy Policy, http://www.uspto.gov/patents-getting-started/international-protection/office-policy-and-external-affairs-patent-trade (last visited Jan. 12, 2016).
[35] “Although not protected as a classical IPR, trade secrets are nevertheless a key complementary instrument for the required appropriation of intellectual assets that are the drivers of the knowledge economy of the 21st century. The holder of a trade secret does not have exclusive rights over the information covered by the trade secret.” Commission Proposal, supra note 33, at 3.
[36] Under U.S. law the rights of copyright owners are limited by statutory provisions allowing for unauthorized uses of copyrighted information by journalists, educators, et al. See 17 U.S.C. §§ 107, 108 (2012).
[37] Many manufacturers anticipate and avert such losses through sales contract provisions that prohibit customers from reverse engineering products acquired from the manufacturer.
[38] See Kewanee Oil Co. v. Bicron Corp., 416 U.S. 470, 490–493 (1974) (distinguishing patent protection that operates “against the world” from trade secret protection that does not protect against independent creation or reverse engineering).
[39] See Chicago Lock Co. v. Fanberg, 676 F.2d 400, 405 (9th Cir. 1982) (finding that federal patent law would preempt any state-conferred monopoly through absolute protection of a trade secret).
[40] See Semiconductor Chip Protection Act of 1984, 17 U.S.C. §§ 901–914. (2012) (providing ten years protection for registered computer chip topographies); Digital Millennium Copyright Act, Pub. L. No. 105-304, 112 Stat. 2860 (codified in scattered sections of 5, 17, and 28 U.S.C.) (restricting the production and use of devices whose purpose is to circumvent digital rights management technologies). See Vessel Hull Design Protection Act, 17 U.S.C. §§ 1301–1332 (2012). The fashion industry has attempted, so far unsuccessfully, to obtain similar sui generis federal protection for apparel designs. See Innovative Design Protection and Piracy Prevention Act, H.R. 2511, 112th Cong. (2011).
[41] See J.H. Reichman, Legal Hybrids Between the Patent and Copyright Paradigms, 94 Colum. L. Rev. 2432, 2443 (1994) (discussing the economic and social underpinnings of sui generis intellectual property protection enacted in the United States and Europe “owing to the advent of new, information-based technologies, including computer science … whose industrial applications were costly to develop but vulnerable to rapid duplication.”).
[42] Article 4 of the Directive states: “The acquisition of trade secrets shall be considered lawful when obtained by any of the following means: (a) independent discovery or creation; (b) observation, study, disassembly or test of a product or object that has been made available to the public or that it is lawfully in the possession of the acquirer of the information; (c) exercise of the right of workers representatives to information and consultation in accordance with Union and national law and/or practices; (d) any other practice which, under the circumstances, is in conformity with honest commercial practices.” Commission Proposal, supra note 33. The underlying motivation for the proposed Directive was the lack of harmonization among the trade secret laws of the twenty-eight member states of the European Union. See Study on Trade Secrets and Confidential Business Information in the Internal Market, at 15-16 (Apr. 2013), http://ec.europa.eu/growth/tools-databases/newsroom/cf/itemdetail.cfm?item_id=8269. In June 2015 the EU Parliament approved the key features of the draft prepared by the EU Commission and EU Council. See Report on the Proposal for a Directive of the European Parliament and of the Council on the Protection of Undisclosed Know-How and Business Information (Trade Secrets) Against Their Unlawful Acquisition, Use and Disclosure, COM (2013) 813 final (Jun. 25, 2015), http://www.europarl.europa.eu/sides/getDoc.do?pubRef=-//EP//TEXT+REPORT+A8-2015-0199+0+DOC+XML+V0//EN&language=en – title1. The Directive is now being reviewed by the EU Council that will finalize a draft that will be become EU law and ultimately the basis of member states domestic legislation for trade secrets. See Mark P. Wine, One Step Closer: European Parliament Legal Affairs Committee Approves Trade Secret Directive, Orrick Trade Secrets Watch (Jun. 26, 2015), http://blogs.orrick.com/trade-secrets-watch/2015/06/26/one-step-closer-european-parliament-legal-affairs-committee-approves-trade-secret-directive/.
[43] See Roland Knaak, et al., Comments of the Max Planck Institute for Innovation and Competition On the Proposal of the European Commission for a Directive on the Protection of Undisclosed Know-how and Business Information (Trade Secrets) Against Their Unlawful Acquisition, Use and Disclosure of 28 November 2013, COM (2013) 813 Final, Max Plank Institute for Innovation and Competition Research Paper No. 14-11, 11 (2014) (noting that the Directive does not consider trade secret protection an exclusive right but rather one obtained under unfair competition law, whereas Italian law considers trade secrets to be an intellectual property right).
[44] Id.
[45] See id. ¶ 37.
[46] Id.
[47] “Perfumers work in the strictest secrecy, jealously guarding the mysteries of their art. Since the beginning of perfume, formulas have been kept hidden from prying eyes….” Elizabeth Barillé & Catherine Laroze, The Book of Perfume 45 (1995).
[48] The still-secret formula for the liqueur Chartreuse was originally used to create a more potent potable used as medicine. See History of the Chartreuse Liqueurs, supra note 14.
[49] Napoleon III, Emperor of France between 1852 and1870, was perhaps indirectly responsible for the separation of the fragrance and pharmaceutical industries by promulgating a regulation requiring makers of pharmaceuticals to disclose on the labels of their products the ingredients they contained. To preserve the secrecy of their formulas, perfume manufacturers disassociated themselves and their products with pharmacists and pharmaceuticals. See Stamelman, supra note 1, at 95.
[50] Id.
[51] “Hubigant legend … is that Marie Antoinette, in disguise on her flight to Varennes, was wearing a Houbigant fragrance, which caused her to be identified as royalty when her coach was stopped, because none but royalty would have possessed such a magnificent perfume!” Lightyears Collection: Houbigant, PerfumeProjects.com, http://www.perfumeprojects.com/museum/marketers/Houbigant.php (last visited Jan. 19, 2016).
[52] See Briot, supra note 3, at 276 (reporting that by the end of the nineteenth century there were over 300 perfume producers in France and around 2000 small perfume shops in Paris).
[53] See, e.g., Anna Chesters, A Brief History of Guerlain, The Guardian (Mar. 26, 2012), http://www.theguardian.com/fashion/fashion-blog/2012/mar/26/brief-history-guerlain (discussing the origins of Guerlain, long a family enterprise).
[54] Eighty percent of the fragrances sold today are incorporated into personal care and household care products. See Int’l Fragrance Ass’n, supra note 25, at 14-17.
[55] In 2013, Givaudan, the world’s largest producer of flavors and fragrances had 9,331 employees distributed throughout eighty-eight locations in five continents. Givaudan, Annual Report 3 (2013).
[56] The same factors have simultaneously challenged many other high technology industries that rely on trade secrets, resulting in an enormous increase in trade secret litigation in federal courts. See David Almeling, et al., A Statistical Analysis of Trade Secret Litigation in Federal Courts, 45 Gonz. L. Rev. 291, 293 (2009/10).
[57] One such example is IPRA Fragrances’ (France) claim in 2012 against employees who joined a competitor. See Mathilde Tranoy, Deux Salairiés Accusés d’avoir Vendu des Formules Aromatiques Secrètes, Nice Matin (Mar. 30, 2012, 7:37 AM), http://archives.nicematin.com/faits-divers/deux-salaries-accuses-d%E2%80%99avoir-vendu-des-formules-aromatiques-secretes-a-grasse.830888.html. Another example is Estée Lauder’s claim against ex-employee Shashi Batra for sharing its trade secrets with a direct competitor. See Estée Lauder Cos. Inc v. Batra, 430 F. Supp. 2d 158, 160 (S.D.N.Y. 2006). A third example is, Intarome Fragrance & Flavor’s prosecution of fired employee Michael Zarkades for sharing trade secrets with E.T. Horn, a flavor manufacturer. See Intarome Fragrance & Flavor Corp. v. Zarkades, No. 07-873, 2007 U.S. Dist. LEXIS 22780, *4 (D.N.J. Mar. 29, 2007).
[58] Givaudan Fragrances Corp. v. Krivda, No. 08-04409, 2013 U.S. Dist. LEXIS 153437, *1 (D.N.J. Oct. 25, 2013).
[59] See id.
[60] Id. at *4.
[61] Id. at *6.
[62] See id.
[63] See generally Motion for New Trial by Givaudan Fragrances Corporation, Givaudan Fragrances Corp. v. Krivda, No. 08-04409 (D.N.J. Mar. 7, 2014).
[64] Apparently Givaudan did not trust the efficacy of the court’s protective order that would have purportedly prevented the disclosure of over 600 Givaudan formulas through their inclusion in the docket for this litigation. Because Givaudan would not fully disclose these formulas to the defendant and the court, the court dismissed the case based on its determination that the plaintiff failed to provide defendant adequate notice of the allegedly misappropriated trade secrets. See id. at 7–8.
[65] See generally Patrick Süskind, Perfume: The Story of a Murderer (1985).
[66] See generally Tim Robbins, Jitterbug Perfume (1984).
[67] See Arian van Asten, The Importance of GC and GC-MS in Perfume Analysis, 21 Trends in Analytical Chemistry 698, 699 (2002) (noting that there is little discussion in the open literature about the work of analytic chemists in the fragrance industry because “that is usually not in the best interest of the companies operating in this highly competitive market.”).
[68] See John Daintith, A Dictionary of Chemistry (6th ed. 2008).
[69] See id.
[70] See Arian van Asten, supra note 67, at 701.
[71] See Int’l Fragrance Ass’n, supra note 25, at 22-23.
[72] For example, Pirate Parfum, the self-proclaimed producer of “[t]he greatest perfumes, at impertinent prices,” is a significant player in this industry. It does not sell counterfeits of well-known perfumes, but rather copies of them that are branded with different names, and sold in uniform and non-descript packaging with no resemblance to that of the original products. See Pirate Parfum: Master Perfumer, https://us.pirate-parfum.com (last visited Jan. 19, 2016).
[73] See Leffingwell & Associates, 2010–2014 Flavor and Fragrance Industry Leaders, http://www.leffingwell.com/top_10.htm (last visited Jan. 12, 2016). International Flavors & Fragrances (IFF) is headquartered in the United States, but originated in the Netherlands. See IFF, History Timeline, http://www.iff.com/company/history-timeline – /timeline (last visited Jan. 19, 2016).
[74] See Claire Guillemin, Law and Odeur: Fragrance Protection in the Fields of Perfumery and Cosmetics Part I, § 3 (forthcoming 2016) (discussing the origins of this understanding in the quasi-familial ethos of the fragrance industry through the early twentieth century).
[75] See Nicole Vulser, Le Groupe LVMH se Réapproprie la Fabrication de ses Parfums, Le Monde 16 (May 28, 2011) (noting that LVMH owns the Sephora chain, one of the largest retail outlets for perfume). See also, Fabien Pigalle, Grasse: Louis Vuitton se (Re)met au Parfum, Nice-Matin 36 (Apr. 13, 2012) (discussing LVMH’s plans to open in 2014 a workshop for fragrance development in Grasse).
[76] Vulser, supra note 75.
[77] Id.
[78] Id.
[79] Id.
[80] “We were presented with a fait accompli. Dior did not warn us that it would no longer market one of our flagship products,” said Frédéric Rivoire, CEO of Givaudan Fine Fragrances Europe. The shortfall for the company, even though it is working for other brands, amounts to several million euros of turnover.” Id.
[81] See Int’l Fragrance Ass’n, supra note 25, at 44.
[82] See LVMH, Perfumes & Cosmetics, http://www.lvmh.com/houses/perfumes-cosmetics/ (last visited Jan. 19, 2016).
[83] See, e.g., Commission Regulation 1367/2006 of Sept. 6, 2006, The Application of the Provisions of the Aarhus Convention on Access to Information, Public Participation in Decision-making and Access to Justice in Environmental Matters to Community Institutions and Bodies, 2006 O.J. (L 264) 13, 14 (granting a public right of access to information held by EU agencies relating to “emissions into the environment”).
[84] See 35 U.S.C. § 154 (2012); Convention on the Grant of European Patents, Oct. 5, 1973, 1065 U.N.T.S. 199.
[85] See 35 U.S.C. § 112 (2012).
[86] Within the fragrance industry “fine fragrances” refers to stand-alone perfumes that are worn on the body for aesthetic purposes.
[87] See 35 U.S.C. § 101 (2012).
[88] The appeal and economic value of a perfume are actually enhanced by its lack of utility. Lysol underscores the utility of its stolidly named aerosol Sanitizing Spray as an economical and effective product to control “bathroom, pet, garbage, and diaper odors,” whereas Patou fosters an attitude of hedonic and heedless extravagance in advertising Joy as “the costliest perfume in the world.” See Lysol, Lysol Neutra Air Sanitizing Spray, http://www.lysol.com/products/neutra-air/lysol-neutra-air-sanitizing-spray/ (last visited Jan. 22, 2016); Two Sides of Dear: Demystifying Patou’s Joy Perfume Promotion, Perfume Shrine (May 13, 2014), http://perfumeshrine.blogspot.com/2014/05/two-sides-of-dear-demystifying-patous.html. Economist Thorstein Veblen (1857-1929) pointed out the value associated with conspicuous wastefulness and lack of utility of certain products. “The superior gratification derived from the use and contemplation of costly and supposedly beautiful products is, commonly in great measure a gratification of our sense of costliness masquerading under the name of beauty.” Thorstein Veblin, The Theory of the Leisure Class 128 (Prometheus Books 1998) (1899).
[89] The prestige and prices of Chanel’s No. 5 and Patou’s Joy for instance, are bolstered by the fact that both products have endured since 1929 and 1921 respectively, in a market in which hundreds of new fragrances are launched (and typically fail) annually. On the other hand, most new seasonal or “celebrity” fragrances have such a limited shelf life that they need no IP protection whatever.
[90] See USPTO, USPC Index: Class 512 Perfume Compositions (2011), http://www.uspto.gov/web/patents/classification/uspc512/sched512.htm.
[91] Id. (providing an interactive index of applications).
[92] E.g., U.S. Patent No. 7,169,746 col 1 l. 6–7 (filed Mar. 26, 2002) (Shiseido’s patent for a “perfume for effecting mental control through psycho-sedation or psycho-stimulation.”). United States regulation of fragrances has been relatively sparing. The United States Fair Packaging and Labeling Act requires disclosure of ingredients used in consumer products unless such disclosure would reveal trade secrets. 15 U.S.C. § 1453 (2006). Because fragrance manufacturers assert that their compositions constitute trade secrets, their incorporation into a product is typically indicated not with a list of constituent chemicals but rather simply the term “fragrance”. The United States Food and Drug Administration (USFDA), however, classifies fragrances that are marketed for their aroma-therapeutic capacities as drugs that are subject to the Administration’s more stringent regulation. See USFDA, Aromatherapy (2015), http://www.fda.gov/Cosmetics/ProductsIngredients/Products/ucm127054.htm.
[93] See Erin McAvoy, Chemical Romance: How did Chemists Become the Greatest Force in Fragrance? The Independent (Dec. 10, 2010), http://www.independent.co.uk/life-style/fashion/features/chemical-romance-how-did-chemists-become-the-greatest-force-in-fragrance-2155817.html (noting that “synthetic raw materials, usually single molecules, enable perfumers to create entirely new smells….”).
[94] See id. See also Emma Davies, The Sweet Scent of Success, 2009 Chemistry World 40 (Feb. 2009) (discussing the deployment of several of the most significant proprietary perfume molecules in fragrances like Dior’s Poison and Donna Karan’s Be Delicious).
[95] See Leffingwell & Associates, supra note 73.
[96] See generally Wendy Wolfson, In the Fragrance Business, the Right Molecule Smells like Money, 12 Chemistry & Biology 857 (2005) (discussing Flexitrol’s attempt to become a clearinghouse for scent molecule licensing).
[97] A patent is costly and difficult to obtain because the claimant must establish that his invention effectuates new information for a useful purpose. See 35 U.S.C. §§ 101–103 (2012). Patent prosecution is costly in large part because it involves the work of highly trained examiners who investigate claims of novelty against the state of the art in a given class of goods. See MPEP § 2131 (9th ed. 2014).
[98] One must register an invention to obtain a patent for it; an author automatically obtains a copyright, however, simply by recording his original expression as text, sound, images or other copyrightable content. 17 U.S.C. § 102 (2012).
[99] In the timeworn words of Judge Learned Hand: “if by some magic a man who had never known it were to compose anew Keat’s Ode on a Grecian Urn, he would be an ‘author,’ and, if he copyrighted it, others might not copy the poem, though they might of course copy Keats’s.” Sheldon v. Metro-Goldwyn-Mayer Pictures Corp., 81 F.2d 49, 54 (2d Cir. 1936).
[100] See 17 U.S.C. § 106 (2012); WIPO, Summary of the Berne Convention for the Protection of Literary and Artistic Works (1866), http://www.wipo.int/treaties/en/ip/berne/summary_berne.html (last visited Jan. 19, 2016).
[101] See 17 U.S.C. §§ 107-110 (2012). Germany’s copyright law, for instance, has no general fair use provision, and specifies all limitations on authors’ rights under the statute. See Wencke Bäsler, Technological Protection Measures in the United States, the European Union and Germany: How Much Fair Use do We Need in the “Digital World”?, 8 Va. J.L. & Tech. 13, ¶ 4 (2003).
[102] 8 Anne, c. 19 (1710).
[103] Code de la Propriété Intellectuelle [Intellectual Property Code] Art. L. 112-1 (the last of the fourteen categories covers articles of haute couture).
[104] The House Report on the Copyright Act of 1976 states: “The bill does not intend either to freeze the scope of copyrightable subject matter at the present stage of communications technology or to allow unlimited expansion into areas completely outside the present congressional intent. Section 102 implies neither that the subject matter is unlimited nor that new forms of expression within that general area of subject matter would necessarily be unprotected.” H.R. Rep. No. 94-1476, at 51 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5664.
[105] Theoretically, another fragrance manufacturer could independently and legitimately re-create the copyrighted fragrance as long as this effort were done without access to the original fragrance. See discussion supra note 99.
[106] See 17 U.S.C. § 302 (2012).
[107] The most famous example of such a transcription from memory is Mozart’s of the score of Gregorio Allegri’s “Miserere” after hearing two performances of it at the Vatican in 1770. The Vatican owned the only score and parts to Allegri’s work that was performed only twice a year, during Holy Week, in the Sistine Chapel. Performers with access to the score and parts were threatened with excommunication if they were found to have copied or distributed the work outside the Vatican. “The Papacy, realising that it owned a composition of exceptional appeal, shrewdly heightened its reputation by refusing to allow any copy to leave the Sistine Chapel. This ban was supported by threats of severe punishment.” Peter Phillips, Brochure Notes to The Tallis Scholars Recording of Allegri’s Miserere (Gimell Records 1985).
[108] Makers of Sibelius music notation software, for instance, claim that their program can convert the sound of “up to 16 instruments or notes at a time into multiple staves, with up to four voices per staff.” AudioScore Ultimate 8, Sibelius, http://www.sibelius.com/products/audioscore/ultimate.html (last visited Jan. 13, 2016).
[109] See generally U.S. Copyright Office, Circular No. 50, Copyright Registration for Musical Compositions 1 (2012).
[110] See infra note 120 and accompanying text.
[111] This difficulty is nicely illustrated in one of the opening scenes of the film adaptation of Patrick Süskind’s novel Perfume: The Story of a Murderer, in which the hapless perfumer played by Dustin Hoffman struggles vainly to analyze a popular fragrance of one of his competitors. Perfume: The Story of a Murderer (Dreamworks Pictures 2006).
[112] The 1909 Copyright Act that was effective until 1978, provided an initial term of twenty-eight years, which could be renewed. Act of Mar. 4, 1909, Pub. L. No. 60-349, 35 Stat. 1035, as amended (formerly codified at 17 U.S.C. § 1 et seq.). When copyright (and patent) terms expire, the once-protected work enters the public domain and can be used by anyone.
[113] See Sid & Marty Krofft Television Productions, Inc. v. McDonald’s Corp., 562 F.2d 1157 (9th Cir. 1977) (finding that characters used in a McDonald’s television commercial copied not merely the plaintiffs’ idea of fanciful characters in action, but substantially also their specific means of conveying the idea); Apple Computer, Inc. v. Franklin Computer Corp., 714 F.2d 1240 (3d Cir. 1983) (finding that if “other programs can be written or created which perform the same function as an Apple’s operating system program, then that program is an expression of the idea and hence copyrightable”).
[114] See About Us, Editions de Parfums-Frédérick Malle, http://www.fredericmalle.com/about-us/frederic-malle (last visited Jan. 13, 2016).
[115] E.g., the American company International Flavors & Fragrances designated the French-educated Carlos Benaim as its first “master perfumer”. IFF Names Carlos Benaim Master Perfumer, Perfumer & Flavorist (Jan. 18, 2013), http://www.perfumerflavorist.com/networking/news/people/IFF-Names-Carlos-Benaim-Master-Perfumer-187443131.html.
[116] See, e.g., Perfumery School, Givaudan, https://www.givaudan.com/fragrances/perfumery-school (last visited Jan. 13, 2016); Perfumery School in Grasse, Grasse Inst. of Perfumery, http://www.grasse-perfumery.com/perfumery-school-in-grasse/ (last visited Jan. 13, 2016).
[117] See generally Perfumery School, supra note 116; Perfumery School in Grasse, supra note 116.
[118] See Guillemin, supra note 74, at Part IV (providing exhaustive coverage of French and Dutch copyright litigation involving fragrances).
[119] Olivia Su, Odor in the Courts! Extending Copyright Protection to Perfumes May Not Be so Nonscentsical: An Investigation of the Legal Bulwarks Available for Fine Fragrances Amid Advancing Reverse Engineering Technology, 23 S. Cal. Interdisc. L.J. 663 (2014).
[120] See Rochas v. de Laire, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch., July 3, 1975, Gaz. Pal. 1976.
[121] See id.
[122] “Oeuvres de l’esprit.” Id.
[123] Mugler v. Molinard, Tribunal de commerce [T. Com.] [court of commerce] Paris, 15e ch., Sept. 24, 1999, Gaz. Pal. 2001, 17-18.01, at 5. Quest International was subsequently acquired by Givaudan in 2006. See Sam Cage, Givaudan Buys Quest from ICI, Reuters Business News (Nov. 22, 2006), http://uk.reuters.com/article/2006/11/22/uk-chemicals-givaudan-idUKL2288827020061122.
[124] See Mugler v. Molinard, Gaz. Pal. 2001, 17-18.01, at 5. Historically, in civil law regimes, like that of France, courts pay less obeisance to case law precedence than their common law counterparts; see generally Vincy Fon & Francesco Parisi, Judicial Precedents in Civil Law Systems: A Dynamic Analysis, 26 Int’l Rev. L. & Econ. 519 (2006). Accordingly, the Mugler court evidently felt no compunction about rendering a decision incompatible with that of the earlier Rochas decision by a higher court.
[125] See Mugler v. Molinard, Gaz. Pal. 2001, 17-18.01.
[126] See Bellure v. L’Oréal, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch. A, Jan. 25, 2006, D. 2006, at 580, J. Daleau, aff’g Bellure v. L’Oréal, Tribunal de Grande Instance [TGI] [ordinary court of original jurisdiction] Paris, May 26, 2004, D. 2004, at 2641, note Galloux.
[127] See id.
[128] Id.
[129] HR 16 juni 2006, NJ 2006, 585 m.nt. JHS (Lancôme/Kecofa) (Neth.).
[130] See id.
[131] Id.
[132] See Beauté Prestige Int’l v. Senteur Mazal, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch., Feb. 14, 2007, D. 2007, at 735, J. Daleau.
[133] Id.
[134] Id.
[135] Id.
[136] See Bellure v. L’Oréal, Cour d’appel [CA] [regional court of appeal] Paris, 4e ch. A, Jan. 25, 2006, D. 2006, at 580, J. Daleau.
[137] See Charles Cronin, Genius in a Bottle: Perfume, Copyright, and Human Perception, 56 J. Copyright Soc’y U.S.A. 427 (2009) (discussing relative acuity of human senses and its relevance to intellectual property protection).
[138] The Cour de cassation is France’s highest appellate court that is separated into six subject-matter divisions, e.g., labor, criminal, civil, etc.
[139] Société Lancôme v. Patrice Farque, Cass. com., Dec. 10, 2013 [pourvoi n° 11-19872] available at http://www.cecoa.eu/images/cecoa/artdroit201312001.pdf.
[140] See id.
[141] Id.
[142] Jean-Michel Bruguière has argued that the court’s rationalizing its decision on the imperceptibility of the intellectual investment in the creation of a fragrance is flawed: “[t]he olfactory notes of Chanel No. 5 or Eau Sauvage are as reliably and accurately identifiable as musical notes – the harmony of the Beach Boy’s “Good Vibrations” or the melody of the Rolling Stones’ “Satisfaction”. Jean-Michel Bruguière, Chroniques: Droit d’Auteur et Droits Voisins [News Column: Copyright and Neighboring Rights], 50 Propriétés Intellectuelles 51, 52 (2014). He also suggests that some contemporary works of [classical] music are no more intelligible to the public than are fragrances. See id.
[143] The U.S. Copyright Office accepts registrations for works of: literature, visual arts, performing arts, sound recordings, and single serials. See eCO Frequently Asked Questions, U.S. Copyright Office, http://copyright.gov/eco/faq.html (last visited Jan. 14, 2016).
[144] See generally Trademark “Sound Mark” Examples, U.S, Patent & Trademark Office, http://www.uspto.gov/trademark/soundmarks/trademark-sound-mark-examples (last visited Jan. 14, 2016).
[145] See, e.g., Qualitex Co. v. Jacobson Products Co., 514 U.S. 159 (1995).
[146] See discussion infra Part III.C. “The ‘trade dress’ of a product is essentially its total image and overall appearance. It ‘involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques.’” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 765 n.1 (1992) (citing Blue Bell Bio Medical v. Cin Bad, Inc., 864 F.2d 1253 (5th Cir. 1989), and John H. Harland Co. v. Clarke Checks, Inc., 711 F.2d 966 (11th Cir. 1983)).
[147] See Daniel Zendel & Dennis Prahl, Making Sense of Trademarks: An International Survey of Non-Visual Marks, Trademark World, Issue 89 (1996), http://ladas.com/making-sense-trademarks-colors-sounds-scents/.
[148] See id. (noting that while the German Marks Act of 1995 accommodates color marks, the German Patent Office internal guidelines require these marks to be combined with other distinctive features to be registrable).
[149] See id. (noting the “visual perceptibility” requirement of both the Mexican Industrial Property Law and Brazilian Industrial Property Code).
[150] In 1949, for instance, in Campbell Soup Co. v. Armour & Co., the Third Circuit rejected plaintiff’s claim to the exclusive right to use the color combination of red and white on food products: “If they may thus monopolize red in all of its shades the next manufacturer may monopolize orange in all its shades and the next yellow in the same way. Obviously, the list of colors will soon run out.” Campbell Soup Co. v. Armour & Co., 175 F.2d 795, 798 (3d Cir. 1949). Over forty years later, in NutraSweet Co. v. Stadt Corp., the Seventh Circuit rejected the plaintiff’s claim to the exclusive right to use pastel blue on its sugar substitutes packaging: “if each of the competitors presently in the tabletop sweetener market were permitted to appropriate a particular color for its product, new entrants would be deterred from entering the market.” NutraSweet Co. v. Stadt Corp., 917 F.2d 1024, 1028 (7th Cir. 1990). Ultimately, in Qualitex, the Supreme Court “concluded that the color depletion issue would rarely arise and could be resolved, if necessary, by applying the functionality doctrine to prevent anticompetitive results.” 1-2 Gilson on Trademarks § 2.11.
[151] See William Landes & Richard Posner, Trademark Law: An Economic Perspective, 30 J. L. & Econ. 265, 269 (1987) (discussing this benefit as reducing “consumer search costs”).
[152] See NutraSweet, 917 F.2d at 1028.
[153] See Cronin, Genius in a Bottle, supra note 137.
[154] “Die Luft der Freiheit weht” and “Veritas” respectively. The greater the number of different colors in a mark the greater the likelihood of its distinctiveness. Nevertheless, the particular perception of color marks depends to a greater extent than that of word marks on geographical location. San Franciscans will associate a combination of the colors blue and gold with the University of California at Berkeley while residents in St. Paul will think of their city’s Bethel University. Residents of both cities will associate the combination of red, white, and blue with the United States; those of Paris and Lyon, on the other hand, will think of France (though they will reorder the colors to that of their tricolore: blue, white, and red).
[155] See 1-2 Gilson on Trademarks § 2.11 (discussing case law establishing that school colors, when used with “other indicia” of the school, can acquire secondary meaning to qualify for trademark protection).
[156] See Douglas Churovich, Intellectual Property: Policy Considerations from a Practitioner’s Perspective: Scents, Sense or Cents? Something Stinks in the Lanham Act: Scientific Obstacles to Scent Marks, 20 St. Louis U. Pub. L. Rev. 293, 293–94 (2001) (claiming that “the landmark In re Clarke decision was ill-advised since it was founded upon a poor, if not non-existent, understanding of osphresiology and the misguided application of legal principles that fail to apply to scents”); Bettina Elias, Do Scents Signify Source? An Argument Against Trademark Protection for Fragrances, 82 Trademark Rep. 475 (1992) (claiming that “fragrances only rarely, if ever, function as trademarks in the marketplace and, in those few cases in which fragrances do arguably indicate a product’s source, their trademark protection remains doctrinally problematic and potentially impossible to implement and enforce in a consistent fashion.”).
[157] Visually or verbally complex marks, however, may be weaker than simple marks because they demand more intellectual effort on the part of consumers to decipher and recall their association with a particular product or service.
[158] Most notorious is the wine industry’s attempts to suppress the fact of weak human perception of tastes and smells, with the humbuggery it uses to market its products. See David Derbyshire, Wine-Tasting: It’s Junk Science, Guardian (June 22, 2013, 7:01 PM), http://www.theguardian.com/lifeandstyle/2013/jun/23/wine-tasting-junk-science-analysis.
[159] On this question “[t]he door is firmly closed in … countries such as Brazil Japan, China and Taiwan, where scent marks are neither registrable and the courts do not appear to have considered the protection of unregistered scent marks under other legal theories.” See Zendel & Prahl, supra note 147.
[160] See First Council Directive to Approximate the Laws of the Member States Relating to Trade Marks, art. 2, O.J. L 40/1, at 2 (1989) (broadly defining trademarks as comprising “any sign capable of being represented graphically … provided that such signs are capable of distinguishing the goods or services of one undertaking from those of another undertaking”); Agreement on Trade Related Aspects of Intellectual Property Rights, Apr. 15, 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, Legal Instruments-Results of the Uruguay Round, 1869 U.N.T.S. 299, 33 I.L.M. 1197 (1994) (offering a similarly broad definition of trademarks, and the right of convention members to “require, as a condition of registration that signs be visually perceptible”).
[161] See Zendel & Prahl, supra note 147.
[162] Case C-273/00, Ralf Siekmann v. German Pat. & Tmk. Office , 2002 E.C. R. I- 11754.
[163] Id. at ¶14-15.
[164] Id. at ¶ 10-11.
[165] Id. at ¶11-13.
[166] Id. at ¶39, 45-48.
[167] Id. at 35.
[168] Id. at 54.
[169] Id. at 63.
[170] See TMEP § 807.09 (8th ed. Oct. 2014).
[171] See Trademark “Sound Mark” Examples, supra note 144.
[172] See In re Celia Clarke, 17 U.S.P.Q.2d 1238 (T.T.A.B. 1990) (finding that “the scent of a product may be registrable if it is used in a non-functional manner”).
[173] Sixteen records were obtained July 21, 2015 using the USPTO’s Trademark Electronic Search System searching the terms “for situations for which no drawing is possible, such as sound,” in the Mark Drawing Code field, and the term “fragrance” in the Description of Mark field. Trademark Electronic Search System (TESS), U.S. Patent & Trademark Office, http://tmsearch.uspto.gov (last visited Jan. 15, 2016).
[174] CITRUS FRAGRANCE, Registration No. 3,726,789 (issued 2009 for biofuel); the mark consists of a coconut scent or fragrance, Registration No. 4,113,191 (issued 2012 for retail sales); the mark consists of a high impact fragrance primarily consisting of musk, vanilla, rose, and lavender, Registration No. 4,057,947 (issued 2011 for cosmetics).
[175] The specific paper products they sought to protect were hanging file folders. See, e.g., APPLE CIDER SCENT, Registration No. 3,140,701 (cancelled in 2013).
[176] See generally, Martin Lindstrom, Buyology: truth and Lies About Why We Buy (2008) (discussing tactics by which retailers and consumer products companies sell products through the use of various sensory stimuli).
[177] See generally id.
[178] These prices were found on websites of these retailers on July 28, 2015. Target does not sell Joy in its physical stores, so its presentation costs for this product are minimal. Target, http://www.target.com/ (last visited July 28, 2015); Nordstrom, http://www.nordstrom.com/ (last visited July 28, 2015). Target’s decision not to sell Joy in stores may have been motivated by fears that the small but relatively expensive item would be attractive to shoplifters. It may also have contracted with Patou not to do so based on Patou’s concern about the pollution of its brand through association with Target. The existing arrangement benefits both companies because underlying it is a conspiratorial understanding between them and consumers who would be embarrassed by purchasing a high-end product at a brick-and-mortar Target bargain-counter. Eau de toilette is the most diluted version of a fine fragrance, and the only version of Joy sold by Target. Nordstrom also sells Eau de parfum that is less diluted, and more expensive, than the Eau de toilette. Nordstrom does not sell the parfum, a half ounce of which is sold only at top-tier shops like Neiman Marcus for about $350. Target, http://www.target.com/ (last visited July 28, 2015); Nordstrom, http://www.nordstrom.com (last visited July 28, 2015); Nieman Marcus, http://www.niemanmarcus.com/ (last visited July 28, 2015).
[179] See David Suisman, Selling Sounds: The Commercial Revolution in American Music 66 (2012).
[180] These venues include not only restaurants featuring the dreaded “strolling musicians” but also Nordstrom department stores where former U.S. Secretary of State Condoleezza Rice once anticipated making a living as a musician. See Elisabeth Bumiller, Condoleezza Rice: An American Life 56 (2007).
[181] See Suisman, supra note 179.
[182] “[M]usic, any music at all, is so welcome to the weak of mind and so readily supplied by their commercial manipulators that almost all the music you hear, at least all you hear inadvertently, is BAD.” Paul Fussell, Bad: Or, The Dumbing of America 126 (1991).
[183] See generally George Prochnik, In Pursuit of Silence: Listening for Meaning in a World of Noise (2010) (discussing soundscapes developed on behalf of Abercrombie & Fitch).
[184] See Lindstrom, Brand Sense, supra note 23, at 72 (observing that “while hearing involves receiving auditory information through the ears, listening relies on the capacity to filter, selectively focus, remember, and respond to sound”).
[185] Broadcasting music recordings has also been used effectively to alienate undesirables from commercial spaces. See Twilight of the Yobs: How Classical Music Helps Keep Order, Economist (Jan. 6, 2005), http://www.economist.com/node/3536150.
[186] See Lindstrom, Brand Sense, supra note 23, at 74 (noting that in Disney World “carefully choreographed sound is piped through the entire park. Even the bird sounds are controlled. It’s a whole environment designed to capture the hearts of children and waken the child within each adult.”).
[187] A Gap store in San Francisco enables customers to use smart phones to select the muzak they hear while shopping. See Gap Pilots In-Store DJ System, Lets Customers Pick and Play Music, VentureBeat (Nov. 21, 2011, 9:13 AM), http://venturebeat.com/2011/11/21/roqbot-gap/. It seems unlikely, however, that retailers would ever provide customers the wondrous capacity simply to turn off a soundtrack.
[188] See generally Prochnik, supra note 183.
[189] Marketing researchers have established that classical music played in a commercial setting increases the “quality sensation”. See Annabel Elliott, The Buy-ology of a Shopping Spree: How Stores like Apple and Victoria’s Secret Use Scent, Sound and Color to Make You Spend More Money, Daily Mail (Dec. 5, 2014), http://www.dailymail.co.uk/femail/article-2861386/The-Buy-ology-shopping-spree-stores-like-Apple-Victoria-s-Secret-use-scent-sound-color-make-spend-money.html. Accordingly, one is more likely to hear classical music in a high-end restaurant or art gallery catering to discerning customers than in a fast-food joint or sneaker shop targeting teenagers. See id.
[190] See id.
[191] In the 1930s, a Connecticut home insurance firm impregnated their advertising brochures with the scent of charred wood. See Marston Bogert, Your Nose Knows, 39 Sci. Monthly 345 (1934). Such uses of scents capitalize on their potential to conjure powerful memories instantaneously, a phenomenon known as the “Proustian effect”. See Sarah Dowdey, Does What You Smell Determine What You Buy?, How Stuff Works, http://money.howstuffworks.com/scent-marketing.htm (last visited Jan. 14, 2016). “When you first perceive a scent, you connect it to an event, person or thing. When you smell the scent again, it often triggers memory in the form of a conditioned response . . . smell can also activate the subconscious and influence your mood. Instead of reminding you of specific details from [a] vacation, [an] ocean scent might make you feel content or happy.” Id.
[192] See Roxie Hammill & Mike Hendricks, Scent Received, With a Tap of a Smartphone, N.Y. Times (July 8, 2015), http://www.nytimes.com/2015/07/09/technology/personaltech/scent-received-with-a-tap-of-a-smartphone.html (discussing “Scentee”, “oPhone Duo” and other mechanisms developed to generate specific scents in response to digitally communicated instructions).
[193] “The real action, however, lies in projecting olfactory character into indoor commercial spaces. This application has been fully embraced in one large business sector: the gaming industry. Las Vegas is the trend’s epicenter; half the major properties on the Strip have scent systems. The MGM Grand has deployed as many as nine scents simultaneously around its property and the Venetian features a corporate logoscent called ‘Seduction’.” Lindstrom, Brand Sense, supra note 193, at 171.
[194] Alexia Elejalde-Ruiz, For Branding, Many Places Adopt Signature Scents, L.A. Times (April 14, 2014, 7:05 PM), at http://www.latimes.com/business/la-fi-scent-branding-20140419-story.html – page=1. Even Goodwill Industries now infuse the air of their retail shops with a bespoke fragrance. See id. Goodwill’s motivations for doing so, however, differ from those of a retailer like Bloomingdales. Bloomingdales scents its air to promote an atmosphere of luxury and exclusivity; Goodwill uses fragrance to counter an atmosphere of frugality, if not penury, associated with the sale of used apparel of questionable cleanliness.
[195] See L. Aruna Dhir, Scent of a Hotel, 4 Hoteliers (Dec. 3, 2013), http://www.4hoteliers.com/features/article/8037.
[196] See Caroline Cerny, A New Scent at Park Hyatt Zurich, Hyatt (May 1, 2008), http://newsroom.hyatt.com/2008-05-01-A-New-Scent-At-Park-Hyatt-Zurich (discussing how parfumeur Blaise Mautin creates different scents for Hyatt depending upon the location of the hotel; Zurich’s commercial vibe is captured in an astringent scent).
[197] “Global Hyatt offers… more than 750 hotels in more than 45 countries.” Id.
[198] In one branding study, a teenager expressed confidence that the Abercrombie jeans she had been handed were authentic, and not a knockoff pair bought from a sidewalk vendor, because they were imbued with Abercrombie’s signature scent. See Lindstrom, Brand Sense, supra note 23, at 2.
[199] Fierce Cologne, Abercrombie & Fitch, http://www.abercrombie.com/shop/us/mens-cologne/fierce-cologne-5217072_01 (last visited Jan. 14, 2016). “Fierce” was created by Christophe Laudamiel, a gay parfumeur from France. See Serguey Borisov, Intervew with Christophe Laudamiel, Fragrantica (Apr. 13, 2014, 7:03 AM), http://www.fragrantica.com/news/Interview-with-Christophe-Laudamiel-5381.html.
[200] Abercrombie & Fitch is a “retailer of men’s and women’s casual clothing, such as t-shirts, outerwear, sweatshirts, woven shirts, sweaters, jeans, khakis, shorts, baseball caps, belts, socks, and other accessories . . . designed primarily to appeal to young men and women of college age.” Abercrombie & Fitch Stores, Inc. v. Am. Eagle Outfitters, Inc., 280 F.3d 619, 624 (6th Cir. 2002). See generally Prochnik, supra note 183, at 89 – 106 (2010) (documenting the marketing tactics of Abercrombie and similar retailers to attract young customers by creating alluringly risqué environments)
[201] Tmep, § 1202.02 (8th ed. Oct. 2014).
[202] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992) (finding that the overall décor of the respondent’s restaurant was inherently distinctive, and therefore protectable trade dress, even though respondent had not demonstrated that this décor had acquired secondary meaning).
[203] Marks that are not inherently distinctive, but otherwise meet registration requirements, may be registered on the Secondary Register. See Glynn S. Lunney, The Trade Dress Emperor’s New Clothes: Why Trade Dress Does Not Belong on the Principal Register, 51 Hastings L.J. 1131 (2000) (discussing significance of registration on the Principal rather than Supplemental Register).
[204] See 1-2 Gilson on Trademarks § 2A.01 (noting that “although there is no empirical evidence, it appears that most trade dress is not registered and may instead be judicially protected under Section 43(a) of the Lanham Act”).
[205] This was true, for example, of the trade dress at issue in Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995). Qualitex had been using the contested trade dress for about thirty years and only attempted to register it as a trademark when a competitor began using a similar trade dress.
[206] General Mills, History of Innovation: The History of Betty Crocker, www.generalmills.com/~/media/Files/history/hist_betty.pdf; History of the Morton Salt Girl, Morton Salt, http://www.mortonsalt.com/our-history/history-of-the-morton-salt-girl (last visited Jan. 14, 2016).
[207] See 1-2 Gilson on Trademarks § 2.11 (citing Martin Lindstrom’s Brand Sense: Build Powerful Brands Through Touch, Taste, Smell, Sight, and Sound, in which the author argues that given the overload of information in today’s marketplace, retailers must develop multisensory brands to reach consumers). Lindstrom, Brand Sense, supra note 23.
[208] See generally Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
[209] See Two Pesos, 505 U.S. at 767.
[210] See id. at 766.
[211] See id. at 764.
[212] See id. at 766. The plaintiff’s exhibits of images of the competing restaurants suggest that the district court jury was likely swayed in their verdict of infringement by the fact that the defendant not only copied the plaintiff’s colors, and architectural features, but also the size and arrangement of these features, down to the flower pots along an exterior wall. Photos of both restaurants are provided in the slides of Michael Atkins’ presentation Trade Dress Protection in the United States, given at the University of Washington School of Law. Michael Atkins, Trade Dress Protection in the United States, SlideShare, http://www.slideshare.net/mikeatkins/alicante-presentation-7504041 (last visited Jan. 14, 2016).
[213] See Two Pesos, 505 U.S. at 767.
[214] See id. at 766.
[215] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
[216] See id. The pads, sold to dry cleaning establishments, look like ironing board covers. See SunGlow Press Pads, Qualitex, http://www.qualitexco.com/http/pads.html (last visited Jan. 15, 2016).
[217] See Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297 (9th Cir. 1994).
[218] See Qualitex, 514 U.S. at 161.
[219] See id. at 174.
[220] See id. at 164.
[221] See Qualitex Co. v. Jacobson Prods. Co., 13 F.3d 1297, 1299 (9th Cir. 1994).
[222] See id.
[223] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 775 (1992).
[224] See, e.g., AmBrit, Inc. v. Kraft, Inc., 812 F.2d 1531, 1536 (11th Cir. 1986) (basing its finding that plaintiffs owned protectable trade dress in their packaging of Klondike ice cream bars on the fact that the images were not “a basic shape or common design [but] . . . [r]ather . . . a complex composite of size, color, texture and graphics . . . [creating] a distinctive visual impression”).
[225] See discussion supra Part I.
[226] See discussion supra Part I.
[227] See discussion supra Part I.
[228] See supra note 139 and accompanying text.
[229] See Copyright Act of 1976, 17 U.S.C. §106 (2012). “Mom & Pop” restaurants and retail establishments are exempt from this requirement. See id. at § 110. These royalties are managed by performing rights organizations, the largest of which is ASCAP. See Am. Soc’y of Composers, Authors & Publishers, http://www.ascap.com (last visited Jan. 14, 2016).
[230] See Kimberlianne Podlas, I Do Not Endorse This Message! Does a Political Campaign’s Unauthorized Use of a Song Infringe on the Rights of the Musical Performer?, 24 Fordham Intell. Prop. Media & Ent. L.J. 1 (2013) (arguing that performers of copyrighted musical works should not be able to prevent uses of their performances that are legitimate under copyright law, based on trademark claims).
[231] See id.
[232] Mr. Softee, Inc. could still assert copyright to control performances of their registered song, written by jingle composer Les Waas in 1958. See Daniel Neely, Ding, Ding!: The Commodity Aesthetic of Ice Cream Truck Music, in Mobile Music Studies, Vol. II 155 (2014). In fact, Les Waas’s melody is highly derivative of the English Folk tune, “How many miles to Babylon?”. See Eloise Hubbard Linscot, Folk Songs of Old New England 18 (1939) (providing words and music notation of the song).
[233] The same fate did not befall Coca Cola Company’s jingle “I’d Like to Buy the World a Coke” despite the fact that Coca Cola later authorized the use of its melody in the pop song “I’d Like to Teach the World to Sing,” recorded by The Hillside Singers. See The “Hilltop” Ad: The Story of a Commercial, Libr. of Congress, http://lcweb2.loc.gov/ammem/ccmphtml/colaadv.html (last visited Jan. 15, 2016). This is because whenever Coca-Cola advertised its products using the jingle, the words identifying Coca-Cola were always heard along with the melody.
[234] See Neely, supra note 232, at 146 (noting that the sound of ice cream truck music is not Pavlovian – i.e. stimulating a reflexive response to want ice cream – but rather plays on an “anamnesis” conditioned on the ability to recognize a specific product through sound).
[235] Health regulations rather than intellectual property rights are more likely to affect a retailer’s use of fragrances in commercial and public spaces. See Stuart Elliott, Joint Promotion Adds Stickers to Sweet Smell of Marketing, N.Y. Times (Apr. 2, 2007), http://www.nytimes.com/2007/04/02/business/media/02adcol.html (discussing the San Francisco’s Municipal Transportation Authority’s order to the California Milk Processor Board to remove chocolate-scented advertisements posted near public bus stops); Rachel Herz, The Scent of Desire: Discovering Our Enigmatic Sense of Smell 14 (2007) (noting that Halifax, Nova Scotia has enacted regulations making illegal the wearing of fragrances in public).
[236] See Copyright Act of 1976, 17 U.S.C. §106 (2012). The possibility of copyright protection for fragrances raises the question how moral rights of attribution, reputation, etc. would be applicable to them under copyright regimes like that of France, that provide such protection. See Code de la Propriété Intellectuelle [Intellectual Property Code] L. 121-1- L. 121-4 (1992).
[237] Lanham Act § 43(a), 15 U.S.C. § 1125 (2012) (prohibiting conduct “likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person. . . .”).
[238] See John Tagliabue, Why European Computer Makers Flop, N.Y. Times (Oct. 7, 1996), http://www.nytimes.com/1996/10/07/business/why-european-computer-makers-flop.html.
[239] Lanham Act § 43(a), 15 U.S.C. § 1125 (2012).
[240] Such efforts would involve wearing unwieldy headphones, blinders, or similar paraphernalia, the use of which may elicit ambivalence by spectators as to the mental stability of the wearer.
[241] See Jennifer Chen, Human Olfactory Perception: Mechanism, Characteristics, and Functions (May, 2013) (unpublished Ph.D. dissertation, Rice University) (on file with author); see also Avery Gilbert, What the Nose Knows: The Science of Scent in Everyday Life 85 (2008) (positing that “[t]he longer you are exposed to an odor, the more you adapt to it. Step into a garlic factory and the reek will overwhelm you. A few minutes later its intensity fades, and after an hour you might not be able to smell garlic at all, no matter how hard you try. Work there a few months and this adjustment will happen almost as soon as you step in the door”).
[242] See Gilbert, supra note 241, at 85. It is this habituation that prompts retailers of perfumes to keep at hand a saucer of coffee beans, the odor of which contrasts sharply with that of fine fragrances, thereby enabling customers to “reset” their olfaction, allowing them to perceive fragrances anew. Nevertheless, Gilbert notes that: “the bean meme is now a fixture in perfume retailing… The Jo Malone display in Saks had them [coffee beans] in an apothecary jar with a metal lid. It’s all good fun and marketing, but there is not a jot of science behind it. (There are twenty-seven aroma impact molecules in roasted Arabica coffee – how could smelling all these help clear the nose?)” Id. at 108.
[243] See Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763 (1992).
[244] Dior’s fragrances like Miss Dior and Diorissimo, for instance, were developed, and manufactured by Givaudan. See supra note 77 and accompanying text
[245] See Roberta Kwall, The Soul of Creativity: Forging a Moral Rights Law for the United States 91 (2009) (suggesting an inherent “degradation” of both attributed author and ghostwriter when the ghostwriter creates most of a literary work but without attribution).
[246] See, e.g., United Nations Economic Commission for Europe, Convention on Access to Information, Public Participation in Decision-Making and Access to Justice in Environmental Matters, June 25, 1998, 2161 U.H.T.S. 450 (granting the public right of access to any information held by European Union agencies relating to emissions into the environment); International Fragrance Association, North America, Federal Regulatory Chart, http://ifrana.org/advocacy/laws-and-regulations/federal/ (identifying seven federal agencies involved in regulating fragrance ingredients and manufacturing in the United States).
[247] See discussion supra Parts I & II.
[248] See discussion supra Part II.A.
[249] Givaudan, the largest fragrance manufacturer, dates its origins to 1786. See A Rich Heritage of Growth, Givaudan, https://www.givaudan.com/our-company/rich-heritage (last visited Jan. 14, 2016). IFF was established in 1889. See History Timeline, Int’l Flavors & Fragrances, Inc., http://www.iff.com/Company/IFF-History (last visited Jan. 14, 2016). Firmenich was established in 1895. See Company, Firmenich, http://www.firmenich.com/en_INT/company.html (last visited Jan. 14, 2016). Symrise merged Haarmaan & Reimer (1874) and Dragoco (1919). See History, Symrise, https://www.symrise.com/company/organization/history/ (last visited Jan. 14, 2016). Only Takasago was established in the twentieth century. See History of Taskago, Takasago, http://www.takasago.com/en/aboutus/history/1920.html (last visited Jan. 14, 2016).
[250] See generally, Podlas, supra note 230 and accompanying text.

The Distinctiveness of a Fashion Monopoly

The Distinctiveness of a Fashion Monopoly
Haochen Sun* A pdf version of this article may be downloaded here.  

Fashion is a form of imitation and so of social equalization . . . . It unites those of a social class and segregates them from others.

Georg Simmel[1]

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[2]

Introduction

Fashion is the embodiment of beauty and fantasy. Aesthetically, fashion represents the relentless human quest for creative combinations of color, shape, and material.[3] Infusing human creativity with aesthetic imagination, fashion design makes men and women look endlessly appealing with the constant emergence of new fashion trends.[4] 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.[5] 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.[6] With the increasingly rapid commercialization of fashion creativity, trademark law has been adapted to provide stronger protection for famous fashion brands.[7] This is particularly important for the fashion industry because intellectual property law generally does not protect fashion designs,[8] except for trademarks used to merchandize fashion designs.[9] 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,[10] which has not only overshadowed certain part of the fashion sector[11] but has also threatened free speech[12] and humanitarian[13] 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.[14] 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.[15] 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.[16] 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.[17] 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.[18] Indeed, the courts that decided the Louboutin cases focused heavily on the aesthetic functionality doctrine.[19] This focus, however, may have led both commentators and the courts to take for granted that the Louboutin red sole mark is adequately distinctive.[20] 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.[21] In Europe, Christian Louboutin launched similar legal actions against Zara[22] and Van Haren,[23] 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.[24] Moreover, there has been an increasing number of single color symbols registered as trademarks.[25] 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.[26] 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.[27] 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.[28] 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.[29] 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.[30] 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.[31] The statutory insertion of anti-dilution protection exemplifies this shift.[32] With worsening social inequalities nationally[33] and globally,[34] 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.[35] 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.

I. The Distinctiveness Doctrine and the Louboutin Litigation

A. The Roadmap of the Distinctiveness Doctrine

Trademarks are signs that are capable of indicating the sources of goods or services. They inform consumers as to who manufactured or provided a particular product or service. Therefore, trademark law only protects source-indicating signs.[36] The concept of distinctiveness serves as a threshold requirement in trademark law, filtering out signs that are not capable of indicating sources.[37] Conventionally, the distinctiveness of a mark is weighed by the Abercrombie test, which was set forth in Abercrombie & Fitch Co. v. Hunting World, Inc.[38] 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.[39] Marks falling into any of the first two categories are deemed inherently distinctive and capable of being registered as trademarks.[40] Descriptive marks that comprise the third category can be registered as trademarks only if they acquired distinctiveness through use.[41] Generic marks form the last category of marks.[42] They completely lack distinctivenessand thus cannot be registered as a trademark. For example, “apple” is a generic mark for apples, as would be “fruit.”[43] Therefore, the Abercrombietest identifies inherent and acquired distinctiveness as two kinds of source-indicating capability that would make signs initially eligible for trademark protection.
1. Inherent Distinctiveness
The strongest marks considered inherently distinctive are those that are fanciful or arbitrary. Fanciful marks are invented terms that have no commonplace or dictionary meaning at all.[44] For example, “Kodak”[45] for photographic equipment or “Exxon”[46] 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.[47] 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.”[48] 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.[49] 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.”[50] For example, the word “Citibank” is suggestive because it suggests “an urban or modern bank.” Likewise, “Goliath” suggests “a large size” pencil[51] and “Roach Motel” suggests insect traps.[52]
2. Acquired Distinctiveness
Descriptive marks specifically describe a quality, function, characteristic, or ingredient of a product or a service. For example, they include “After Tan” for post-tanning lotion and “5 Minute Glue” for fast-drying glue.[53] 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.”[54] 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.[55] 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.”[56] The most important factor is whether consumers are able to associate a mark with a producer of goods.[57] 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.,[58] 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.” [59]
3. The Significance of the Distinctiveness Doctrine
Under Landes and Posner’s utilitarian model, trademark protection is justified because a distinct mark can minimize the “search costs” that consumers incur in identifying a product.[60] 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.”[61] 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.”[62] 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.”[63] 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.

B. The Distinctiveness of the Louboutin Red Sole Mark

As noted in Section A,[64] 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.[65] 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.[66] Christian Louboutin appealed to the Second Circuit, which later overturned the District Court’s decision on the functionality of the red sole mark. [67]
1. Decision of the District Court
The District Court focused on whether the red sole mark merited trademark protection, a threshold issue in trademark litigation.[68] 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.[69] 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.”[70] 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.[71] 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.[72] 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.[73] 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”[74] and “energy.”[75] 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.[76] 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.[77] On these grounds, the District Court ruled that a single color can never serve as a trademark in the fashion industry,[78] rendering the red sole mark ineligible for trademark protection.
2. Decision of the Second Circuit
The Second Circuit, however, overturned the District Court’s decision on the functionality of the red sole mark. It argued that the District Court’s decision categorically excluding a single color from trademark protection for fashion designwas based on an incorrect understanding of the doctrine of aesthetic functionality.[79] 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.”[80] However, “distinctive and arbitrary arrangements of predominantly ornamental features”[81] that do not “significantly undermine competitors’ ability to compete in the relevant market”[82] 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.”[83] They can only be protected as trademarks if they have acquired secondary meaning.[84] 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.[85] The Second Circuit pointed to evidence submitted by Louboutin that included substantial advertising expenditures, widespread media coverage, and prominent sales success.[86] 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.[87] 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.[88] In particular, the court ruled that it had not done so “in an application of a red sole to a red shoe.”[89] 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.[90] 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.[91] 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.

II. Re-Examining the Distinctiveness of the Red Sole Mark

As discussed in Part I, the Second Circuit upheld the validity of the red sole mark, although it restricted protection to the red sole when contrasted with the upper parts of the shoe. However, both courts did not dispute that the red sole mark was distinctive enough to merit trademark protection, for it had acquired secondary meaning through use. But is it true that the red sole mark is distinctive enough to merit trademark protection? This Part will argue against the courts’ decisions on the distinctiveness of the red sole mark. It will first reveal that a showing of secondary meaning is a rigorous judicial inquiry combining facts and law. This Part will then demonstrate that neither the District Court nor the Second Circuit conducted rigorous inquiries into whether the red sole mark has acquired requisite secondary meaning. Therefore, a rigorous application of the distinctiveness requirement is a vital step to shape trademark law in a manner conducive to the promotion of social justice by filtering away any marks (single color marks included) not desirable for trademark protection.

A. The Tough Roadmap of the Secondary Meaning Doctrine

As noted in Part I,[92] 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.[93] Therefore, plaintiffs (senior mark users) must furnish evidence showing the acquisition of secondary meaning.[94] Although courts have applied slightly different standards of review,[95] they have taken the following two steps to examine the existence of secondary meaning.[96] 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.
1. The Scope of the Consuming Public
i. Who is “The Purchasing Public”?
In applying the doctrine of secondary meaning, courts often have to ascertain whether the purchasing public has associated the mark in question with a particular source through an acquired secondary meaning. Courts have decided that the successful acquisition of secondary meaning hinges on whether “in the minds of the public, the primary significance of a product feature . . . is to identify the source of the product . . . .”[97] 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.[98] 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.[99] 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.”[100] 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.,[101] 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.”[102]
ii. A Substantial Number of the Relevant Purchasing Public
The Restatement (Third) of Unfair Competition indicates that it is not necessary for a majority of the relevant purchasing public to associate the mark with a single source.[103] 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.[104] Case law has followed this guidance.[105] 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.”[106] 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.”[107] 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.[108] 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.”[109] In Norm Thompson Outfitters, Inc. v. General Motors Corp.,[110] 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.[111] 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.”[112]
2. Evidentiary Requirements for Proving Secondary Meaning
After determining the scope of the purchasing public, courts need to examine whether the promotional efforts made by the senior mark user were effective in establishing secondary meaning to identify the source of his products or services. Proof of secondary meaning entails meeting rigorous evidentiary requirements.[113] 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.[114] 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.”[115] The Ninth Circuit also deemed consumer surveys “the most persuasive evidence of secondary meaning.”[116] If a case is unclear, a survey is usually necessary to prove secondary meaning. However, survey evidence is “not a requirement for such proof,”[117] and the “absence of consumer surveys need not preclude a finding of acquired distinctiveness.”[118] 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.”[119] 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.[120] 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.[121] As the Federal Circuit put it, “[t]he test of secondary meaning is the effectiveness of the efforts to create it.”[122] 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.[123] 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].’”[124] 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.[125] 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.”[126] 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.”[127] 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.”[128] 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.”[129]

B. Questioning the Distinctiveness of the Red Sole

As shown in the preceding section, the application of the secondary meaning doctrine is a fact-laden process that requires courts to scrutinize whether secondary meaning has been established by senior mark users’ marketing and promotional efforts.[130] 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.
1. The Consuming Public
As the preceding section showed, a mark owner must acquire requisite secondary meaning for his mark among a substantial number of the relevant segment of the consuming public. Because the red sole is a mark applied to shoes, the relevant segment of the consuming public should be shoe consumers. One may argue that only the existing luxury shoe consumers—a much smaller group of people—should be counted as the relevant segment because Christian Louboutin markets luxury footwear with exclusive pricing, but the preceding section showed that the inquiry into secondary meaning should also include prospective consumers. That is, those who are likely to purchase goods after they can mentally associate the goods with the relevant marks. The prospective consumer requirement should not be limited to consumers of luxury shoes as that would preclude potential consumers who may buy such luxury shoes in the short- or medium-term future. Another concern is that the distinctiveness of a mark is a factor used by courts to determine the outcomes of likelihood-of-confusion infringement suits.[131] 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.”[132] 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.”[133] 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:
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].[134]
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.”[135] The Second Circuit agreed with the District Court’s line of reasoning in this regard.[136] 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.
2. Fulfilling the Evidentiary Burden
As the preceding section showed, plaintiffs (senior mark users) should bear the burden of proving that their promotional efforts were effective in creating secondary meaning of a mark in the mind of the consuming public. Therefore, plaintiffs should furnish direct evidence such as consumer testimonies and consumer surveys and/or circumstantial evidence that includes exclusivity, length and manner of use, amount and manner of advertising, and the amount of sales and number of customers. The District Court pointed out that the presumption of the validity of a registered trademark is rebuttable[137] and a showing of secondary meaning is required in weighing whether a single color mark can qualify for trademark protection.[138] 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.[139] 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.[140]
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.”[141] 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.[142] 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.[143] 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.[144] 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.[145] 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.[146] 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.”[147] 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.[148] 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.”[149] 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.[150] If it was, then Louboutin should have presented more evidence to prove that the red sole mark had acquired requisite secondary meaning.

III. Toward a Social Justice Mandate for Trademark Law

The preceding Part discussed why the Louboutin courts failed to properly apply the distinctiveness doctrine to decide whether the red sole mark was registrable as a trademark. Without such a crucial consideration, the red sole mark may have turned out to be just a mark that has some referential sensestyle but whose primary purpose is independent of its source-identifying character. Therefore, a rigorous application of the secondary meaning doctrine is crucial to guarantee the sensibility of trademark law toward the dynamics of social justice as a public policy. But what if Christian Louboutin furnished sufficient evidence showing the red sole mark has acquired requisite secondary meaning? This Part will argue that courts should apply a social justice mandate to override the showing of secondary meaning and refuse to uphold the registration of the red sole mark as claimed by Louboutin. The application of this mandate would help courts identify any social injustices that would be caused by the protection of single color trademarks. The Part will further discuss the theoretical and Constitutional basis on which the social justice mandate is founded. It will also address some practical concerns about the application of the social justice mandate.

A. Social Justice as a Policy Concern

This Section will first show that the registration of the red sole mark has run counter to the social justice ethos, causing economic and status injustices. Based on this finding, the courts may adopt a social justice mandate, and rule that the red sole mark should not be protected as a trademark even if it has acquired source-identifying secondary meaning.
1. Economic Injustice
It should be noted that what motivated Christian Louboutin to bring YSL to court was its plan to monopolize the red sole in the footwear industry. Once YSL’s use of the red sole is ruled out by the court, any third party’s use of the red sole in commerce may trigger the infringement of Christian Louboutin’s color mark rights. What makes this monopolization possible is trademark law, which entitles Christian Louboutin to prevent others from using the red sole in the commercial process of merchandizing shoes. The concept of trademark distinctiveness opened the door for that monopolization, because the red sole mark became trademarkable once its acquisition of requisite secondary meaning in the market was shown. Christian Louboutin is a luxury company that merchandizes its shoes at astronomically high prices, ranging from $495 to $6,000.[151] 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,[152] a pair of black boots $2,645,[153] and a pair of crystal-encrusted shoes $6,000.[154] 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.”[155] 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[156] or the trademark dilution doctrine.[157] 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[158] while the laws are being changed increasingly in favor of big companies like Christian Louboutin?[159] 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.”[160] 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.
2. Status Injustice
Apart from the economic injustice as discussed above, Louboutin’s monopolistic control of the red sole mark would also cause status injustice. When Christian Louboutin sued YSL, it bluntly asserted:
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.[161]
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.[162] 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.[163] 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.[164] 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.[165] Consumers have the propensity to associate a particular brand with the “type” of consumers who buys that brand.[166] 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.[167] 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,[168] 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,[169] London,[170] and Hong Kong[171] 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.[172] 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.[173] In the same year, around 15 million children died from hunger.[174] 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.[175]
3. The Application of the Social Justice Mandate
To address the economic and status injustices caused by the registration of the red-sole trademark, a social justice mandate should be incorporated into the judicial scrutiny of the distinctiveness of marks. Courts can apply it to override the acquired distinctiveness of a mark if the trademark protection of the mark would cause social injustice. The Second Circuit ruled that Christian Louboutin had acquired secondary meaning over the red-sole contrasted with “the remainder of the shoe.”[176] Therefore it could only have trademark protection over “the contrast between the sole and the upper [portion of the shoe].”[177] 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.”[178] 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.[179] 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.”[180] 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[181] and marketing.[182] 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.[183] 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.

B. The Legal Basis of the Social Justice Mandate

This Section will explore the legal basis for channeling the social justice mandate in the judiciary scrutiny of trademark distinctiveness. It will demonstrate that the application of this mandate not only fits with the traditional trademark practice but also with liberal justice theory and Constitutional mandates.
1. Taking Precedents Seriously
The precedents that the Louboutin courts followed, in fact, left room for courts to use the social justice mandate. The Louboutin courts heavily relied on Supreme Court’s Qualitex decision in determining whether a single color is protectable as a trademark. But the Louboutin court neglected to take advantage of a crucial opportunity that the Supreme Court noted in Qualitex. In that decision, the Supreme Court considered whether a green-gold color mark constituted a symbol, and whether it had acquired the requisite secondary meaning, if protecting the trademark prevented competitors from using a necessary functional aspect.[184] 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.”[185] 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.[186] 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.[187] 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.,[188] 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”[189] 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.[190] 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.”[191] 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.[192]
2. Taking the American Legal Tradition Seriously
The social justice mandate, as discussed above, is in line with Supreme Court trademark jurisprudence and practical rules adopted by lower courts. Meanwhile, the mandate also reflects the equality principle that undergirds the American legal system.
i. Social Justice as a Fundamental Value
It is widely recognized that all human beings are equal individuals with equal worth.[193] Nevertheless, disparities exist in all modern societies. For example, income inequality exists in many societies and continues to worsen.[194] 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.[195]
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.”[196] 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.[197] 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.”[198] 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.[199] An easy way, as he emphasizes, is to consider an individual’s “place in the distribution of income and wealth.”[200] 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.”[201] 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.
ii. Social Justice as a Constitutional Value
Moreover, the social justice mandate comports with the constitutional tradition in America. The Preamble of the Constitution highlights the need to establish social justice and promote public welfare: “[w]e the People of the United States, in Order to form a more perfect Union, establish Justice, insure domestic Tranquility, provide for the common defence, promote the general Welfare, and secure the Blessings of Liberty to ourselves and our Posterity . . . .”[202] 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[203] 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.[204] In Loving v. Virginia, the Supreme Court invalidated laws prohibiting interracial marriage.[205] 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”[206] or white supremacy based on “invidious racial discrimination.”[207] 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.[208] 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.[209] 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.[210] Public properties such as public squares, parks, beaches, and utility poles, are a “medium of communication [that] is particularly valuable.”[211] 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.”[212] As a pillar of the American legal tradition, courts have protected intangible public forums for conducting speech activities and symbolic speech actions.[213] For example, Rosenberger v. Rector of the University of Virginia[214] 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.”[215] 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[216] and waving an American flag with the words “America the red, white, and blue, we spit on you”[217] 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.[218] 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,[219] 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.”[220] 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.[221] 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.”[222] 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.[223] 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.

C. Practical Concerns about the Mandate

The preceding Section discussed the legal foundation of the social justice mandate. This Section will first tackle two practical concerns about whether the mandate would sound the death knell for single color marks and the luxury industry that heavily relies on trademark protection for business success. It will then further consider whether the aesthetic functionality doctrine can address the social justice concerns embedded in the mandate.
1. The Demise of Single Color Marks?
The social justice mandate would by no means kill single color trademarks. In fact, a normal single color mark would not necessarily cause social injustices. During the past decades, courts have approved the use of a single color as a trademark for industrial products. For example, green-gold for pads used on dry cleaning presses,[224] pink for fibrous glass insulation,[225] and most recently purple for chocolates.[226] 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.
2. The Demise of the Luxury Industry?
With its rapid development, the luxury industry has played an important role in many modern societies. Economically, it is estimated that global luxury goods sales in 2011 reached around $250 billion.[227] 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.[228] 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.[229] 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.[230] 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.[231] The ranking shows that the value of these brands ranged from approximately $9 to $75 billion.[232] 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.[233] If courts opt for this combination mark approach, both marks would still be protected by trademark law.
3. The Aesthetic Functionality Doctrine
The third practical concern is that the social justice mandate may not be necessary because the aesthetic functionality doctrine can address the policy concerns on its own. According to the aesthetic functionality doctrine,[234] 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.”[235] 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.[236] 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.[237] 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.[238] 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.”[239] 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.[240] 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.[241] 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.”[242] The court, however, determined that “the alleged aesthetic function is indistinguishable from and tied to the mark’s source-identifying nature.”[243] 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.[244] 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.[245] 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.

Conclusion

In her seminal book The Second Sex, Simone de Beauvoir points out that fashion binds female liberties. Women themselves are not able to define their freedom. Instead, it is determined by those who gain the power to design and judge fashion.[246] 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[247] and the trademark system should embrace this principle for the betterment of society.
* Assistant Professor of Law and Deputy Director of the Law & Technology Center, University of Hong Kong. I am grateful to Irene Caboli, Susan Scafidi, Madhavi Sunder, and Peter Yu for the helpful conversations.
[1] Georg Simmel, Fashion, 62 Am . J. Soc.541, 541 (1957).
[2] Ralph S. Brown, Advertising and the Public Interest: Legal Protection of Trade Symbols, 57 Yale L.J. 1165, 1206 (1948).
[3] See generally, Roland Barthes, The Fashion System (Matthew Ward & Richard Howard trans., University of California Press 1990) (discussing fashion as the embodiment of aesthetic signs); see also Alladi Venkatesh et al., The Aesthetics of Luxury Fashion, Body and Identify Formation, 20 J. Consumer Psychol. 459, 468 (2010) (discussing “aestheticization of everyday life through fashion and bodily adornment”).
[4] See Walter Benjamin, Selected Writings, Vol. 4, 1938-1940, at 179 (Howard Eiland & Michael W. Jennings eds., Edmund Jephcott et al. trans., 2003) (describing fashion as “the eternal recurrence of the new.”).
[5] See, e.g., Lars Svendsen, Fashion: A Philosophy 155 (John Irons trans., Reaktion Books 2006) (stating that the fashion sector “has done well as advertising, but only on rare occasions as art.”). Tom Ford recently commented that “[h]igh quality global journalism requires investment. Pure creativity, without the thought of commercial viability, is disappearing. There are many very creative designers, but the process is now vetted by what will actually sell. That is what is necessary to stay competitive in the market.” Wes Gordon, a raising fashion designer star, acknowledged that “[t]he days of being purely a creative area dead, but fashion as a business is bigger than ever.” Elizabeth Paton, Fashion Cents and Sensibility, Fin. Times, (August 19, 2013), www.ft.com/intl/cms/s/0/45867618-05e8-11e3-8ed5-00144feab7de.html#axzz2cUJmTGpo.
[6] See Nikoleta Panteva, Trends Outfitting the Fashion Retail Sector, IBISWorld (June 2012), www.ibisworld.com/Common/MediaCenter/Fashion retail special report.pdf ; see also, C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147, 1148 (2009) (“Fashion is one of the world’s most important creative industries. It is the major output of a global business with annual U.S. sales of more than $200 billion—larger than those of books, movies, and music combined.”).
[7] Kal Raustiala & Christopher Sprigman, The Knockoff Economy: How Imitation Sparks Innovation 5 (2012) (pointing out that “[f]ashion trademarks are fiercely policed”).
[8] See Hemphill & Suk, supra note 6, at 1150 (“Despite being the core of fashion and legally protected in Europe, fashion design lacks protection against copying under U.S. intellectual property law.”).
[9] See Susan Scafidi, Intellectual Property and Fashion Design, in 1 Intellectual Property And Information Wealth: Copyright And Related Rights 121 (Peter K. Yu ed., 2006) (pointing out that “[t]he most universally applicable and flexible mechanism for the protection of fashion design is trademark law” and thus trademark protection “ creates an interesting incentive for fashion houses….”); Jeannie Suk, Little Red (Litigious) Shoes, N.Y. Times, January 21, 2012, at SR14, available at http://www.nytimes.com/2012/01/22/opinion/sunday/louboutin-and-the-little-red-litigious-shoes.html?_r=0 (“The law does not protect fashion design, but it does recognize the rights inherent in branding.”).
[10] With a series of high-profile mergers and acquisitions, the luxury industry has three major global conglomerates: Kering, Louis Vuitton Mo”t Hennessy (LVMH), Compagnie Financi‘re RichemontSA (Richemont).
[11] For example, the French stock market regulator imposed an €8 million fine on LVMH for the “seriousness of the successive breaches of public disclosure requirements, which consisted in concealing each stage of LVMH’s stakebuilding in Herm‘s.” Scheherazade Daneshkhu, Luxury: Object of Desire, Fin. Times(July 8, 2013), available at www.ft.com/intl/cms/s/2/bc275cea-e7ae-11e2-9aad-00144feabdc0.html#axzz2csGDaKCb.
[12] See e.g., Louis Vuitton Malletier S.A. v. Haute Diggity Dog, 507 F.3d 252 (4th Cir. 2007); see also, Louis Vuitton Malletier S.A. v. Warner Bros. Entm’t Inc., 868 F. Supp. 2d 172 (S.D.N.Y. 2012).
[13] See, e.g., Benjamin Sutton, Artist Wins Copyright Case Brought By Louis Vuitton, L Mag. (May 6, 2011), www.thelmagazine.com/TheMeasure/archives/2011/05/06/artist-wins-copyright-case-brought-by-louis-vuitton; Parody or Trademark Infringement?: Louis Vuitton v. Penn Law, Trademarks & Brands (March 12, 2012), www.trademarksandbrands.com/2012/03/12/parody-or-trademark-infringement-louis-vuitton-v-penn-law/.
[14] Christian Louboutin S.A. v Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (S.D.N.Y. 2011) (Louboutin I); Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012) (Louboutin II); see also Ray A. Smith and Ashby Jones, Color Wars: Luxury Makers Battle Over Red-Soled Shoe, Wall St. J. (August 11, 2011), online.wsj.com/article/SB10001424053111904823804576500190678090656.html; Alison Frankel, Louboutin Red-Sole Trademark Case: Color War at the 2nd Circuit, Reuters(Jan. 6, 2012), blogs.reuters.com/alison-frankel/2012/01/06/louboutin-red-sole-trademark-case-color-war-at-the-2nd-circuit /.
[15] See Suk, supra note 9 (“Louboutin’s claim spotlights the pressure on fashion designers to frame their aesthetic choices as brand identifiers, and the legal contortions that result.”).
[16] See infra Part II.B.
[17] See infra Part III.A.
[18] See, e.g., Margot E. Parmenter, Louboutins and Legal Loopholes: Aesthetic Functionality and Fashion, 40 Pepp. L. Rev. 1039 (2013); Suk, supra note 9, (cautioning that “if the color is a useful feature in a product — green for farm equipment or yellow for banana-flavored gum — it can’t be a trademark, even if it is source-identifying, because excluding competitors from a useful feature would be anti-competitive”).
[19] See infra Part I.B.
[20] See infra Part II.B.
[21] See Sarah Tremont & Simon Frankel, Louboutin Launches New Wave of U.S. Trademark Litigation Over Red-Soled Shoes; Charles Jourdan and Alba are Louboutin’s Latest Targets, CovBrands (June 10, 2013), http://www.covbrands.com/2013/06/10/louboutin-launches-new-wave-of-u-s-trademark-litigation-over-red-soled-shoes/; Louboutin Files One of Its First Post-YSL Lawsuits, Fashion L. (May 28, 2013), www.fashion-law.org/2013/05/louboutin-files-one-of-its-first-post.html#.UfiwYftnSbV0.
[22] See Camille Pecnard, Supreme Court Invalidates Louboutin’s Red-sole Trademark, Int’l L. Off. (Nov. 12, 2012), http://www.internationallawoffice.com/newsletters/detail.aspx?g=e7f9ee16-36df-44b1-8108-2e6283f61fa7; Lucy Waterlow and Hannah Roberts, Louboutin Loses Case to Stop Zara Selling Eed-soled Shoes, Mail Online (June 11, 2012), http://www.dailymail.co.uk/femail/article-2157558/Christian-Louboutin-loses-case-stop-high-street-store-Zara-selling-red-soled-shoes.html.
[23] See Gino Van Roeyen, Dutch Company Van Haren Squashed Underneath the Red Sole of Louboutin, Marques(April 21, 2013), https://www.marques.org/Class46/Article.asp?D_A=20130421&XID=BHA3193.
[24] See Suk, supra note 9 (pointing out that Christina Louboutin “seemingly wants to trademark “red” rather than a particular shade of this color”).
[25] See Ann Bartow, The True Colors of Trademark. Law: Greenlighting a Red Tide of Anti Competition Blues, 97 Ky. L.J.263, 263 (2008) (“The elevation of color to stand–alone trademark status illustrates the unbounded nature of trademarks within the judicial consciousness.”).
[26] See Susan Neuberger Weller, When Can You Claim a Color as Your Trademark?, Lexology (Sept. 13, 2012), www.lexology.com/library/detail.aspx?g=c47ea3c8-ca3a-4f4c-b9e6-acadcac23784 (“Many companies have successfully obtained trademark protection for a single color . . . .”); Belinda J. Scrimenti, A Legal Kaleidoscope—Single Color Tradmarks from Pre-Owens-Corning Pink Insulation to Louboutin Red-Soled Shoes 17 (2012), available at http://www.pattishall.com/pdf/Single Color Marks from Owens Corning to Louboutin.PDF (“The USPTO register reflects a growing number of [single] color regirations . . . .”).
[27] Aleksi Tzatzev, 10 Colors That Might Get You Sued, Bus. Insider (Sept. 29, 2012), http://www.businessinsider.com/colors-that-are-trademarked-2012-9?op=1.
[28] See Barton Beebe, The Semiotic Analysis of Trademark Law, 51 UCLA L. Rev. 621, 624 (2004) (observing that the economic efficiency-based theory “has been adopted at the highest levels of American law. No alternative account of trademark doctrine currently exists.”) (citation omitted); Madhavi Sunder, From Goods to a Good Life: Intellectual Property and Global Justice 23 (2012) (pointing out that “intellectual property is understood almost exclusively as being about incentives.”) (emphasis in origin); Stacey L. Dogan & Mark A. Lemley, The Merchandising Right: Fragile Theory or Fait Accompli?, 54 Emory L.J. 461, 467 (2005) (“Trademark law . . . aims to promote more competitive markets by improving the quality of information in those markets.”); Mark P. McKenna, The Normative Foundations of Trademark Law, 82 Notre. Dame L. Rev. 1839, 1844 (2007) (concluding that the conventional wisdom about “the goal of trademark law is—and always has been—to improve the quality of information in the marketplace and thereby reduce consumer search costs”).
[29] See Beebe, supra note 28, at 623 (“The Chicago School asserts that trademarks serve two efficiency-enhancing functions: First, trademarks lessen consumer search costs by making products and producers easier to identify in the marketplace, and second, trademarks encourage producers to invest in quality by ensuring that they, and not their competitors, reap the reputation-related rewards of that investment.” (citation omitted)).
[30] See Haochen Sun, Can Louis Vuitton Dance with HiPhone? Rethinking the Idea of Social Justice in Intellectual Property Law, 15 U. Pa. J.L. & Soc. Change 389, 428 (2012) (pointing out that the utilitarianism-based intellectual property theory has inadequacy in “accommodating and promoting social justice”).
[31] Rochelle Cooper Dreyfuss, Expressive Genericity: Trademarks as Language in the Pepsi Generation, 65 Notre Dame L. Rev. 397, 397 (1990) (arguing that trademarks have begun to serve an additional purpose, of “becom[ing] products in their own right, valued as indicators of the status, preferences, and aspirations of those who use them.”); Barton Beebe, Intellectual Property Law and the Sumptuary Code, 123 Harv. L. Rev. 809, 884 (2010); Alex Kozinski, Trademarks Unplugged, 68 N.Y.U. L. Rev. 960, 961 (1993).
[32] See Beebe, supra note 31, at 884 (2010).
[33] See Emmanuel Saez, Striking it Richer: The Evolution of Top Incomes in the United States, Economometrics Laboratory Software Archive(Sept. 3, 2013), elsa.berkeley.edu/~saez/saez-UStopincomes-2012.pdf (“Top 1% incomes grew by 31.4% while bottom 99% incomes grew only by 0.4% from 2009 to 2012. Hence, the top 1% captured 95% of the income gains in the first three years of the recovery.”).
[34] Jason Hickel, The Truth about Extreme Global Inequality, Al Jazeera (Apr. 14, 2013), www.aljazeera.com/indepth/opinion/2013/04/201349124135226392.html (“Global inequality is growing in part because of the neoliberal economic policies imposed on developing countries.”).
[35] Fashion design protection through intellectual property law has been for years a subject of controversy among commentators and policy makers. Some have proposed that fashion design can be protected within the current intellectual property system. Others have advocated for sui generis statutory protection of fashion design. See generally Hemphill & Suk, supra note 6. Several legislative proposals have been considered several times by Congress, although not adopted. See, e.g., Design Piracy Prohibition Act, H.R.2033, 110th Cong. § 2(c) (2007); Design Piracy Prohibition Act, S.1957, 110th Cong. § 2(c) (2007). Other commentators have suggested that intellectual property protection of fashion design is not necessary for the fashion industry. See Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687, 1775–77 (2006).
[36] The Lanham Act protects any “word, name, symbol, or device, or any combination” that is used “to identify and distinguish” a producer’s goods from those manufactured or sold by others and to “indicate the source of the goods.” Specifically, under the Lanham Act, a person must use or intend to use a mark to “identify and distinguish [his or her goods]…from those manufactured or sold by others and to indicate the source [of the goods].” 15 U.S.C. § 1127 (2006).
[37] According to courts:
[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).
[38] 537 F.2d 4 (2d Cir. 1976).
[39] Id. at 9. The court also noted that “the lines [between these classifications of marks] are not always bright.” Id.
[40] Id. at 11 (“If a term is suggestive, it is entitled to registration without proof of secondary meaning. . . . [T]he decision of the Patent Office to register a mark without requiring proof of secondary meaning affords a rebuttable presumption that the mark is suggestive or arbitrary or fanciful rather than merely descriptive.”).
[41] Id. at 10; see also Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982).
[42] Abercrombie & Fitch, 537 F.2d at 9 (“A generic term is one that refers, or has come to be understood as referring, to the genus of which the particular product is a species.”).
[43] However, whether a term is generic necessarily depends on its use in context. For example, “ivory” would be generic as applied to a product made from elephant tusks, but arbitrary when applied to soap. Id. at 9 n. 6.
[44] Abercrombie & Fitch, 537 F.2d at 11 n.12 (defining “the term ‘fanciful’, as a classifying concept, is usually applied to words invented solely for their use as trademarks”).
[45] Kellogg Co. v Toucan Golf, Inc., 337 F.3d 616, 624 (6th Cir. 2003).
[46] Sara Lee Corp. v Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).
[47] Abercrombie & Fitch, 537 F.2d at 11 n.12 (holding that “when it is applied in an unfamiliar way, the use is called ‘arbitrary’”).
[48] Kellogg, 337 F.3d at 626.
[49] Abercrombie & Fitch, 537 F.2d at 11 (“A term is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of goods. A term is descriptive if it forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.”).
[50] Stix Prods., Inc. v United Merchs. & Mfrs., Inc., 295 F. Supp. 479, 488 (S.D.N.Y. 1968); see also Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 792 (5th Cir. 1983) (identifying four separate tests for distinguishing descriptive and suggestive marks).
[51] DeGidio v. W. Grp Corp., 355 F.3d 506, 510 (6th Cir. 2004).
[52] Am. Home Prods. Corp. v. Johnson Chem. Co., 589 F.2d 103, 106 (2d Cir. 1978).
[53] Sara Lee Corp. v. Kayser-Roth Corp., 81 F.3d 455, 464 (4th Cir. 1996).
[54] G. & C. Merriam Co. v. Saalfield, 198 F. 369, 373 (6th Cir. 1912). This court described the origin of secondary meaning as follows:
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.
[55] See 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 15:6 (4th ed. 2008); Thomas R. Lee et al., An Empirical and Consumer Psychology Analysis of Trademark Distinctiveness, 41 Ariz. St. L.J. 1033, 1052 (2009) (“Source-indicating meaning is ‘secondary’ in the sense that it is second in time. If a word has descriptive semantic meaning that relates to the product in question, its ‘primary’ meaning is the one that pre-dates its trademark use in commerce.”).
[56] Union Carbide Corp. v. Ever-Ready, Inc.,531 F.2d 366, 380 (7th Cir. 1976).
[57] Flynn v. AK Peters, Ltd., 377 F.3d 13, 19 (1st Cir. 2004); see Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 8 (2d. Cir. 1976) (the discrict court held that “Although ‘safari’ is a generic word, a genuine issue of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word ‘identifying the source’ and showing that ‘purchasers are moved to buy it because of its source.’”).
[58] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (1995).
[59] Id. at 166.
[60] William M. Landes & Richard A. Posner, The Economic Structure of Intellectual Property Law 167-68 (2003); see also New Kids on the Block v. News Am. Pub., 971 F.2d 302, 305-06 nn.2-3 (1992) (“In economic terms, trademarks reduce consumer search costs by informing people that trademarked products come from the same source. . . . Trademark protection, like other legal protections of property rights, guards against the overuse of resources while also providing incentives for the creation of new combinations of resources.”).
[61] William M. Landes & Richard A. Posner,Trademark Law: An Economic Perspective, 30 J.L. & Econ. 265, 269 (1987).
[62] Id. at 188.
[63] Id. at 189.
[64] See supra Part I.A.1.
[65] See Christian Louboutin S.A. v Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445, 447 (S.D.N.Y. 2011) (Louboutin I) (“Sometime around 1992 designer Christian Louboutin had a bright idea. He began coloring glossy vivid red the outsoles of his high fashion women’s shoes.”); Lauren Collins, Sole Mate: Christian Louboutin and the Psychology of Shoes, New Yorker(Mar. 28, 2011), http://www.newyorker.com/reporting/2011/03/28/110328fa_fact_collins?currentPage=1 (“The sole of each of his shoes is lacquered in a vivid, glossy red.”).
[66] Louboutin I, 778 F. Supp. 2d 445 (S.D.N.Y. 2011).
[67] Christian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206 (2d Cir. 2012) (Louboutin II).
[68] Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009); Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 115 (2d Cir. 2006).
[69] Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999).
[70] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995).
[71] Id. at 165.
[72] Id. at 166.
[73] Louis Vuitton Malletier, 454 F.3d at 116.
[74] Louboutin I, 778 F. Supp. 2d 445, 453-54 (S.D.N.Y. 2011)
[75] Id. at 453.
[76] Id. at 454.
[77] Id. (“Because the use of red outsoles serves nontrademark functions other than as a source identifier, and affects the cost and quality of the shoe, the Court must examine whether granting trademark rights for Louboutin’s use of the color red as a brand would ‘significantly hinder competition,’ that is, ‘permit one competitor (or a group) to interfere with legitimate (nontrademark-related) competition through actual or potential exclusive use of an important product ingredient.’”(quoting Qualitex Co. v Jacobson Prods. Co., 514 U.S. 159, 170 (1995))).
[78] Id. at 457.
[79] Louboutin II, 696 F.3d 206, 218-24 (2d Cir. 2012).
[80] Id. at 222 (quoting Forschner Grp., Inc. v. Arrow Trading Co., 124 F.3d 402, 409–10 (2d Cir.1997)).
[81] Id. at 222 (quoting Fabrication Enterprises., Inc., v. Hygenic Corp., 64 F.3d 53, 59 (2d Cir. 1995)).
[82] Id. at 222 (quoting Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1006 (2d Cir.1995)).
[83] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,162-63 (1995); Wal-Mart Stores, Inc. v. Samara Bros., Inc. 529 U.S. 205, 206 (2000).
[84] Qualitex, 514 U.S. at 163.
[85] Louboutin II, 696 F.3d at 225 (“Although a single color, standing alone, can almost never be inherently distinctive because it does not ‘almost automatically tell a customer that [it] refer[s] to a brand,’ a color as used here is certainly capable of acquiring secondary meaning.” (citation omitted) (quoting Qualitex, 514 U.S. at 162–63 (emphasis omitted); and Mana Prods., Inc. v. Columbia Cosmetics Mfg., Inc., 65 F.3d 1063, 1070 (2d Cir.1995))).
[86] Id. at 226-27.
[87] Genesee Brewing Co., v. Stroh Brewing Co., 124 F. 3d 137, 143 n.4 (2d Cir. 1997) (quoting Centaur Commc’ns, Ltd. v A/S/M Commc’ns, Inc., 830 F.2d 1217, 1222 (2d Cir. 1985)).
[88] Id. at 227 (“We further hold that the record fails to demonstrate that the secondary meaning of the Red Sole Mark extends to uses in which the sole does not contrast with the upper—in other words, when a red sole is used on a monochromatic red shoe.”).
[89] Id. at 228.
[90] Id.
[91] Id.
[92] See supra Part I.A.1.
[93] See Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 8 (2d Cir. 1976) (“Although ‘safari’ is a generic word, a genuine issue of fact exists as to whether the plaintiff has created a secondary meaning in its use of the word ‘identifying the source’ and showing that “purchasers are moved to buy it because of its source.” (quoting Abercrombie & Fitch Co. v. Hunting World, Inc., 327 F. Supp. 657, 662 (S.D.N.Y. 1971))); McCarthy, supra note 55, § 15:30 (“In one sense, the seller is attempting to get the buyer class to associate a new, secondary meaning with a common designation or shape—whether it is descriptive, geographically descriptive, a personal name, or any of the other types of symbols that require consumer recognition for protection. The trier of fact, like a lexicographer of modern slang, must attempt to find out what meaning the public now attaches to a designation that already has a primary meaning in the language.”).
[94] See, e.g., In re Owens-Corning Fiberglas Corp. 774 F.2d 1116, 1125 (Fed. Cir. 1985) (“An evidentiary showing of secondary meaning, adequate to show that a mark has acquired distinctiveness indicating the origin of the goods, includes evidence of the trademark owner’s method of using the mark, supplemented by evidence of the effectiveness of such use to cause the purchasing public to identify the mark with the source of the product.”); McCarthy, supra note 55, § 15:30.
[95] See Mary LaFrance, Understanding Trademark Law 57 (2d ed. 2009).
[96] McCarthy, supra note 55, § 15:30.(“The legal problems surrounding the issue of secondary meaning are mainly those of evidence. That is, how does one prove, in the adversary, litigious context, the state of mind of buyers? How does one prove, as a fact, that a substantial number of prospective buyers do associate the mark with only one seller of those goods?”).
[97] Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 851 n.11 (1982) (citing Kellogg Co. v. National Nat’l Biscuit Co., 305 U.S. 111, 118 (1938)). The courts look to the mental associations of consumers to determine whether secondary meaning has been established, often referencing the language in Inwood and Kellogg. See, e.g., Borinquen Biscuit Corp. v. M.V. Trading Corp., 443 F.3d 112, 116 (1st Cir. 2006) (quoting Inwood Labs., 456 U.S. at 851 n.11); Abraham Zion v. Lebow, 761 F.2d 93, 104 (2d Cir. 1985) (requiring an association “in the mind of the public”); Walt-West Enters. v. Gannett Co., 695 F.2d 1050, 1057 (7th Cir. 1982) (quoting Kellogg, 305 U.S. at 118); U.S. Search, LLC v. U.S. Search.com Inc., 300 F.3d 517, 523 (4th Cir. 2002) (protection of descriptive mark requires secondary meaning “in the minds of the public”).
[98] Thomas & Betts Corp. v. Panduit Corp., 138 F.3d 277, 295 (7th Cir. 1998) (“[W]hen . . . the relevant market includes both distributors and ultimate purchasers, the state of mind of dealers is important in determining if secondary meaning exists . . . .”).
[99] See Am. Luggage Works, Inc. v. U.S. Trunk Co., 158 F. Supp. 50, 52 (D. Mass. 1957) (considering whether the relevant buyer class, and not necessarily the whole public, associated the term with the plaintiff’s products).
[100] 778 F.2d 1352, 1354 (9th Cir. 1985).
[101] 830 F.2d 1217, 1222 (2d Cir. 1987).
[102] Courts have stated that the relevant segment includes “architects, designers, decorators and upscale sophisticated customers” for proving secondary meaning in the design of a particular desk lamp. See Lon Tai Shing Co. v. Koch + Lowy, No. 90 Civ. 4464(DNE), 1991 WL 170734, *9 (S.D.N.Y. Jun. 20, 1991). “[I]ndividuals broadly associated with other institutions of higher education in a given geographic area” sufficed as a relevant group among which the secondary meaning of a college’s name had been established. SeePresident & Trs. of Colby College v. Colby Coll.-N.H., 508 F.2d 804, 808 (1st Cir. 1975).
[103] See Restatement (Third) of Unfair Competition § 13, cmt. e (1995).
[104] See id.
[105] In cases where the defendant’s activities are confined to a limited geographical area, the plaintiff only needs to prove that secondary meaning exists among buyers within that area such that confusion is likely. See Shoppers Fair of Ark., Inc. v. Sanders Co., 328 F.2d 496, 501 (8th Cir. 1964); see alsoOakford Co. v. Kroger Co., 157 F. Supp. 453, 458 (S.D. Ill. 1957) (holding that both parties acquired secondary meaning for their respective trade names in different parts of the same state). However, in a case where the remedy was a nationwide importation exclusion order, the International Trade Commission required proof of secondary meaning throughout the United States. See In re Sneakers with Fabric Uppers & Rubber Soles, Inv. No. 337-TA-118, USITC Pub. 1366 (Mar. 9, 1983) (Final).
[106] 44 F. Supp. 429 (D. Mass. 1942) (quoting Harry D. Nims, Law of Unfair Competition and Trade-Marks296 (3d ed. 1929)).
[107] 154 Cal. Rptr. 794, 801 (Ct. App. 1979).
[108] See Roselux Chem. Co. v. Parsons Ammonia Co., 299 F.2d 855 (C.C.P.A. 1962).
[109] See Wembley, Inc. v. Diplomat Tie Co., 216 F. Supp. 565, 583 (D. Md. 1963).
[110] 448 F.2d 1293, 1297 (9th Cir. 1971).
[111] 299 F.2d 855, 862 (C.C.P.A. 1962).
[112] No. 07-11514, 2008 WL 1995104 (E.D. Mich. May 6, 2008), aff’d, 320 F. App’x 341 (6th Cir. 2009).
[113] See Boston Beer v. Slesar Bros. Brewing Co., 9 F.3d 175, 181 (1st Cir. 1993); Yankee Candle Co. v. Bridgewater Candle Co., 99 F. Supp. 2d 140, 156-57 (D. Mass. 2000).
[114] Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264, 1267 (7th Cir. 1989); see also Bristol-Myers Squibb Co. v. McNeil-P.P.C., Inc., 973 F.2d 1033, 1041 (2d Cir. 1992) (“Among the factors that we have found relevant to this inquiry in the past are advertising expenditures, consumer studies, sales success, unsolicited media coverage, attempts to plagiarize and length and exclusivity of use . . . . There are undoubtedly other types of evidence that would also be relevant to a claim of secondary meaning.”).
[115] Co-Rect Prods., Inc. v. Marvy! Adver. Photography, Inc., 780 F.2d 1324, 1333 n.9 (8th Cir. 1985).
[116] Vision Sports, Inc. v. Melville Corp., 888 F.2d 609, 615 (9th Cir. 1989).
[117] Comm. for Idaho’s High Desert v. Yost, 92 F.3d 814, 822 (9th Cir. 1996).
[118] Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1583 (Fed. Cir. 1988).
[119] Heartland Bank v. Heartland Home Fin., Inc., 335 F.3d 810, 820 (8th Cir. 2003).
[120] See American Scientific Chem., Inc. v. Am. Hosp. Supply Corp., 690 F.2d 791, 793 (9th Cir. 1982).
[121] See, e.g., Chas. D. Briddell, Inc. v. Alglobe Trading Corp., 194 F.2d 416, 418–19 (2d Cir. 1952) (An advertising expenditure “measures plaintiff’s efforts to establish a secondary meaning, but does not determine its success . . . . Large expenditures for advertising do not compel a conclusion that the task has been accomplished” (quoting Gen. Time Instruments Corp. v. U.S. Time Corp., 165 F.2d 853, 854–55 (2d Cir. 1948))).
[122] Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 827 (Fed. Cir. 1992) (quoting First Brands Corp. v. Fred Meyer, Inc., 809 F.2d 1378, 1383 (9th Cir. 1987)).
[123] 842 F.2d 643, 648 (2d Cir. 1988).
[124] 939 F. Supp. 340, 347 (D. N.J. 1996) (quoting FM 103.1, Inc. v. Universal Broad. of N.Y., Inc., 929 F. Supp. 187, 196 (D. N.J. 1996)).
[125] See Goodyear Tire & Rubber Co. v. Interco Tire Corp., No. 96,404, 1998 WL 998958, at *16 (T.T.A.B. Sept. 11, 1998) (stating “that the greater the degree of descriptiveness which a design possesses, the heavier is a party’s burden of proving that such a design has in fact become distinctive of the goods with which it is associated”).
[126] Supreme Wine Co. v. Am. Distilling Co., 310 F.2d 888, 889 (2d Cir. 1962).
[127] Commerce Nat’l. Ins. Servs., Inc. v. Commerce Ins. Agency, Inc., 214 F.3d 432, 440–41 (3d Cir. 2000).
[128] Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1581 (Fed. Cir. 1988).
[129] Restatement (Third) of Unfair Competition§ 13 cmt. e (1995).
[130] See, e.g., McCarthy, supra note 55, at § 15:29 (“Whether or not a designation has acquired secondary meaning is a question of fact, not an issue of law.”).
[131] The Trademark Dilution Revision Act also identifies a non-exhaustive list of six factors that courts “may consider” when determining whether a mark is likely to cause dilution by blurring. 15 U.S.C. § 1125(c)(2)(B) (2006). These six factors are: (1) “[t]he degree of similarity between the mark or trade name and the famous mark”; (2) “[t]he degree of inherent or acquired distinctiveness of the famous mark”; (3) “[t]he extent to which the owner of the famous mark is engaging in substantially exclusive use of the mark”; (4) “[t]he degree of recognition of the famous mark”; (5) “[w]hether the user of the mark or trade name intended to create an association with the famous mark”; and (6) “[a]ny actual association between the mark or trade name and the famous mark.” Id. § 1125(c)(2)(B)(i)-(vi).
[132] American Luggage Works, Inc. v. United States Trunk Co., 158 F. Supp. 50, 54 (D. Mass. 1957).
[133] Id. at 53.
[134] Louboutin I, 778 F. Supp. 2d 445, 448 (S.D.N.Y. 2011).
[135] Id.
[136] Louboutin II, 696 F.3d 206, 226–27 (2d Cir. 2012).
[137] Louboutin I, 778 F. Supp. 2d at 450 (“Louboutin’s certificate of registration of the Red Sole Mark gives rise to a statutory presumption that the mark is valid . . . . However, that presumption of validity may be rebutted.” (citations omitted)).
[138] Id. (“In short, color can meet the legal requirements for a trademark if it ‘act[s] as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.’” (quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995))).
[139] See supra Part I.B.1.
[140] Louboutin II, 696 F.3d at 226–27 (citations omitted).
[141] Id. at 226.
[142] Cf. Ann Bartow, Likelihood of Confusion, 41 San Diego L. Rev. 721, 723, 772 (2004) (pointing out that that trademark law has developed on the basis of “personal intuition and subjective, internalized stereotypes,” not on “specific and persuasive evidence about consumer behavior”).
[143] Warner Bros., Inc. v. Gay Toys, Inc.,724 F.2d 327 (2d Cir. 1983).
[144] Louboutin II, 696 F.3d at 226.
[145] It seems that the court in Warner Bros., Inc. v. Gay Toys, Inc. decided on whether secondary meaning had been acquired in unnecessary haste:
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.
[146] See generally, Lee et al., supra note 55, at 1037 (cautioning that courts should treat the examination of existence of secondary meaning seriously and arguing that “questions of distinctiveness are matters that can and should be informed by the theoretical and empirical tools employed by those who undertake a careful, scholarly study of such issues”).
[147] American Footwear Corp. v. General Footwear Co., 609 F.2d 655, 663 (2d Cir.1979).
[148] See supra Part II.A.2.
[149] ‘You didn’t invent red soles’: Yves Saint Laurent kicks back at Christian Louboutin, Daily Mail (May 23, 2011), http://www.dailymail.co.uk/femail/article-1390229/You-didnt-invent-red-soles-Yves-Saint-Laurent-kicks-Christian-Louboutin.html.
[150] For discussions on the descriptiveness of color marks, see Kevin M. Jordan & Lynn M. Jordan, The Unanswered Question: Can Color Ever Be Inherently Distinctive?85 Trademark Rep. 371 (1995); Michael B. Landau, Reconciling Qualitex with Two Pesos: Ambiguity and Inconsistency From the Supreme Court, 3 UCLA Ent. L. Rev. 219 (1996); James L. Vana, Color Trademarks, 7 Tex. Intell. Prop. L.J. 387 (The Registrability of Color Per Se as a Trademark After Qualitex Co. v. Jacobson Products Co., 40 St. Louis U. L.J. 611 (1996).
[151] See Sharyn Alfonsi & Nikki Battiste, Red Sole Man: Christian Louboutin’s Signature Shoe Has Made Him an Icon, ABC News (Nov. 18, 2011), abcnews.go.com/Business/red-sole-man-christian-louboutins-signature-shoe-made/story?id=14983446.
[152] See Eric Wilson, Going Toe-to-Toe in Stilettos, N.Y. Times, June 19, 2013, at E1. available at www.nytimes.com/2013/06/20/fashion/shoe-battles-going-toe-to-toe-in-stilettos.html?ref=style&_r=0.
[153] See Charlotte Cowles, Christian Louboutin on Why Shoes Are So Damn Expensive These Days, N.Y. Mag.(June 20, 2013), www.nymag.com/thecut/2013/06/louboutin-on-why-shoes-are-so-damn-expensive.html.
[154] See Alfonsi & Battiste, supra note 151.
[155] Wilson, supra note 152.
[156] This doctrine holds that even if consumers are not confused at the point of sale as to the true source of the goods, other consumers may be confused as to the source of those goods after the sale. In Landscape Forms, Inc. v. Columbia Cascade Co., the Court claimed that “[t]he likelihood of confusion test concerns not only potential purchasers but also the general public.” 113 F.3d 373, 382 (2d Cir. 1997). A brand’s reputation for exclusiveness is damaged by post-sale confusion—the damage to the original brand owner in such a case is that consumers could acquire the prestige value of the luxury product by buying and using counterfeits or knockoffs. Even though the knowledgeable buyer knew that he/she was getting an imitation third parties would be confused. Therefore, consumers may be discouraged from purchasing genuine luxury-branded goods, as the brands seem to be too commonplace and no longer possess the prestige and social status associated with them. In Ferrari S.P.A. Eservizio v Roberts, the court noted that “Ferrari intentionally limits production of its cars in order to create an image of exclusivity” and if there are many vehicles out in the market, they will no longer be unique. 944 F.2d 1235, 1237 (6th Cir. 1991).
[157] Anti-dilution is a form of trademark protection that guards against blurring the distinctiveness of brands and tarnishing the reputation of brands. 15 U.S.C. § 1125(c) (2006).
[158] See, e.g., G. William Domhoff, Wealth, Income, and Power, Who Rules America? (Feb. 2013), www2.ucsc.edu/whorulesamerica/power/wealth.html (“In the United States, wealth is highly concentrated in a relatively few hands. As of 2010, the top 1% of households (the upper class) owned 35.4% of all privately held wealth, and the next 19% (the managerial, professional, and small business stratum) had 53.5%, which means that just 20% of the people owned a remarkable 89%, leaving only 11% of the wealth for the bottom 80% (wage and salary workers)”).
[159] See, e.g., Jessica Litman, Breakfast with Batman: The Public Interest in the Advertising Age, 108 Yale L.J. 1717, 1727 (1999) (“There has been inexorable pressure to recognize as an axiom the principle that if something appears to have substantial value to some, the law must and should protect it as property.”).
[160] Wilson, supra note 152 (“The designer shoe industry, to some extent, relies on the willful suspension of rational thinking, the giving over to a more primal urge (to shop, that is) in order to move merchandise that common sense would suggest is patently, obscenely, even self-destructively overpriced.”).
[161] Plaintiffs’ Reply Memorandum Of Law In Support Of Application For A Preliminary Injunction at 9, Christian Louboutin S.A. v. Yves Saint Laurent Am., Inc., 778 F. Supp. 2d 445 (No. 11 Civ. 2381 (VM)), available at trademarkem.com/docs/2011-07-19-Louboudin-reply.pdf. As commentators point out, “Louboutin … argued that if an injunction is not issued the floodgates will open to competitors.  Presumably this will result in the non-rich and famous being able to purchase shoes with red soles.  Once this style is available to the common unkempt masses, Louboutin’s signature style will be forever tarnished.” Court Rules Louboutin’s Red Soles are Fashion, not a Trademark, Trademark ‘Em (Sept. 3, 2011), trademarkem.com/court-rules-louboutins-red-soles-are-fashion-not-a-trademark.
[162] Thorstein Veblen, The Theory Of The Leisure Class 63-64 (Oxford University Press 2007).
[163] See Richard T. Garfein, Cross-cultural Perspectives on the Dynamics of Prestige, 3 J. Services Marketing 17, 18 (1989).
[164] E.g., Young Jee Han, Joseph C. Nunes & Xavier Dr‘ze, Signaling Status with Luxury Goods: The Role of Brand Prominence, 74 J. Marketing 15 (2010), available at https://msbfile03.usc.edu/digitalmeasures/jnunes/intellcont/Brand Prominence 1-12-10-1.pdf.
[165] See, e.g., Birger Wernerfelt, Advertising Content When Brand Choice is a Signal, 63 J. Bus. 91, (Jan. 1990).
[166] Albert M. Muniz & Thomas C. O’Guinn, Brand Community, 27 J. Consumer Res.412 (March 2001).
[167] Declaration in Support of Acquired Distinctiveness Under Section 2(f) at 2, Louboutin I, 778 F. Supp. 2d 445 (S.D.N.Y. 2011) [hereinafter Louboutin Declaration], available at http://www.counterfeitchic.com/Images/Louboutin%202f%20statement%20in%20trademark%20application.pdf.
“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.”
[168] See Collins, supra note 65, at 1 (“Like Louis XIV’s red heels, they signal a sort of sumptuary code, promising a world of glamour and privilege.”).
[169] Same Roberts, Income Data Shows Widening Gap Between New York City’s Richest and Poorest, N.Y. Times, Sept. 20, 2012, at A22, available at, http://www.nytimes.com/2012/09/20/nyregion/rich-got-richer-and-poor-poorer-in-nyc-2011-data-shows.html?smid=tw-nytmetro&seid=auto&_r=0 (“The rich got richer and the poor got poorer in New York City [in 2011] as the poverty rate reached its highest point in more than a decade, and the income gap in Manhattan, already wider than almost anywhere else in the country, rivaled disparities in sub-Saharan Africa.”).
[170] See Carla Power, Great Divide: How the City of London Widened the Gap between Britain’s Rich and Poor, Time Mag. (May 14, 2012), http://www.time.com/time/magazine/article/0,9171,2113703,00.html#ixzz2PxwVA5W0 (“With 95% of the neighborhood’s children living in poverty, the area ranks among England’s poorest. Half a kilometer away is St. John’s Wood, home to bankers, football managers and former Beatle Paul McCartney. … With the top 10% of the population worth 273 times the bottom 10%, London ranks as one of the most unequal cities in the developed world, trumping even New York City, notes Danny Dorling, an expert in urban inequality at the University of Sheffield.”); Clara Ferreira-Marques & Kate Holton, Rich and Poor: London’s tale of two cities, Reuters (Apr. 12, 2010), http://www.reuters.com/article/2010/04/12/us-britain-election-poverty-idUSTRE63B57620100412 (“Residents of the decaying Robin Hood Gardens estate, where grimy windows punctuate concrete, prison-like corridors, say they feel no connection with those living a short walk away in the luxury Canary Riverside complex.”).
[171] See In Wealthy Hong Kong, the Poorest Residents Live in Metal Cages, N.Y. Daily News (Feb. 10, 2013), http://www.nydailynews.com/news/world/wealthy-hong-kong-poorest-live-metal-cages-article-1.1258661 (“For many of the richest people in Hong Kong, one of Asia’s wealthiest cities, home is a mansion with an expansive view from the heights of Victoria Peak. For some of the poorest, like Leung Cho-yin, home is a metal cage.”); Benjamin Gottlieb & Kristie Hang, Hong Kong’s poorest living in ‘coffin homes’, CNN (July 26, 2011), http://edition.cnn.com/2011/WORLD/asiapcf/07/25/hongkong.coffin.homes/index.html (“Through Mak’s eyes, there are two Hong Kongs: The one seen through his only window, personified by the glitz and glamour the city is famous for. And the one inside, that has allowed less fortunate citizens to fall through the cracks.”).
[172] Pierre Bourdieu divides consumption of goods with two kinds of tastes: “the tastes of luxury’ and “the tastes of necessity.” Pierre Bourdieu, Distinction: A Social Critique of the Judgement of Taste 175 (1984). Bourdieu also observes that the working-class lifestyle is characterized by both “the absence of luxury goods, whisky or paintings, champagne or concerts, cruises or art exhibitions, caviar or antiques” and by “the presence of numerous cheap substitutes for these rare goods . . . .” Id. at 386.
[173] Bain & Co., Luxury Goods Worldwide Market Study 3 (10th ed. 2011), available at www.slideshare.net/Ikusmer/luxury-goods-worldwide-market-study.
[174] World Hunger Statistics, Statistic Brain (May 7, 2013), www.statisticbrain.com/world-hunger-statistics/.
[175] Haochen Sun, Can Louis Vuitton Dance with HiPhone? Rethinking the Idea of Social Justice in Intellectual Property Law, 15 U. Pa. J.L. & Soc. Change 389, 432 (2012) (“Although social justice is a value central to humanity and civilization, we live in an unequal society polarized by the unfair distribution of resources. People still live in poverty and even die from the lack of food. Other people, however, are rich enough to shop happily in luxury stores without regard for those who die of hunger. This stark contrast questions whether luxury consumers are civilized enough to call ourselves human beings or instead lack the ability to sense the pain of our peers.”).
[176] Louboutin II, 696 F.3d 206,225 (2d Cir. 2012).
[177] Id. at 227.
[178] Id. at 228.
[179] See supra Part III.A.1-2.
[180] Beebe, supra note 28, at 672.
[181] Fashion houses often use “color stories” to offer new fashion designs. Color stories are the “selected colors that signal the personality of the collection.” Evelyn L. Brannon, Fashion Forecasting156 (2d ed. 2005).
[182] Research has revealed that color plays a defining role in the fashion industry. For instance, in the survey on consumer’s perception on color, consumers were interviewed for choosing colors that represent “high quality” of products. 43% of the consumers chose black and 20% chose blue. Thus, it shows that color has a close relationship with people’s cognitive perceptions of fashion products. See Faber Birren, Color Psychology and Color Therapy (Citadel 1978); see also Akiko Fukai, The Colors of a Period as the Embodiment of Dreams, in Fashion In Colors 12, 15 (Esther Kremer ed., 2005) (“When we choose the clothes that we wear, we are fully convinced that we are selecting the colors that we like. However, in examining the eternal theme of color, it is evident that our color choices are made within the restrictions of a certain period. That is to say, we are limited to the choices offered by the market at any given time; after all, the market itself is strictly controlled by the economics of fashion trends and the structure of the industry.”); Sunila Sreepada, The New Black: Trademark Protection for Color Marks in the Fashion Industry, 19 Fordham Intell. Prop. Media & Ent. L.J. 1131, 1145 (2009) (“Colors generate specific associations in the minds of consumers that can be harnessed by sellers to influence decision making in the marketplace.”).
[183] John Villasenor, Can a Company Trademark the Colors On Its Web Site?, Forbes (Sept. 15, 2012), www.forbes.com/sites/johnvillasenor/2012/09/15/can-a-company-trademark-the-colors-on-its-web-site/ (“Consider the thick, red, horizontal stripe at the top of CNN’s web site. A person seeing a computer from the other side of a room who might not be able to read the print on the screen would nonetheless be likely to recognize that it was displaying a page from the cnn.com domain. In the context of online news sites, CNN’s red stripe placed across the top of the screen plays an important role in brand identification.”).
[184] Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 166 (1995).
[185] Id.
[186] Id. at 167.
[187] Id. at 168-69.
[188] Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000).
[189] Id. at 215 (“To the extent there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. The very closeness will suggest the existence of relatively small utility in adopting an inherent-distinctiveness principle, and relatively great consumer benefit in requiring a demonstration of secondary meaning.”).
[190] Brown, supra note 2, at 1167 (“[W]hat appear to be private disputes among hucksters almost invariably touch the public welfare. We shall therefore be concerned to ask, when courts protect trade symbols, whether their decisions further public as well as private goals.”); Litman, supra note 159, at 1728 (“[T]he essence of [trademark law] is to divide . . . the valuable stuff that, precisely because of its importance, is reserved for public use.”).
[191] In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 1125, 1127 (Fed. Cir. 1985) (holding that section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f) and thus leaving the determination of the degree of proof necessary to demonstrate distinctiveness to the judgment of the Patent Office and the courts).
[192] ERBE ElektromedizinGmbH v. Canady Tech. LLC, 629 F.3d 1278, 1290-91 (Fed. Cir. 2010).
[193] E.g., Article 1 of the Universal Declaration on Human Rights states that, “[a]ll human beings are born free and equal in dignity and rights. They are endowed with reason and conscience and should act towards one another in a spirit of brotherhood.” Universal Declaration of Human Rights, G.A. Res. 217 (III) A, U.N. Doc. A/RES/217(III), at 72 (Dec. 10, 1948).
[194] See Ilyana Kuziemko & Stefanie Stantcheva, Our Feelings About Inequality: It’s Complicated, N.Y. Times (Apr. 21, 2013), opinionator.blogs.nytimes.com/2013/04/21/our-feelings-about-inequality-its-complicated/?ref=opinion (“Since the 1970s, income inequality in the United States has increased at a historic rate. In 1970, the richest 1 percent of Americans enjoyed 9 percent of total national pre-tax income. In 2011, by contrast, that share had risen to 19.8 percent.”).
[195] John Rawls, A Theory of Justice 3 (rev. ed. 1999).
[196] Id. at 53.
[197] Id. at 65 (stating that “the higher expectations of those better situated are just if and only if they work as part of a scheme which improves the expectations of the least advantaged members of society”). Rawls pointed out that “social order is not to establish and secure the more attractive prospects of those better off unless doing so is to the advantage of those less fortunate.” Id. Applying the principle to the “likely medical needs” of the least advantaged, Rawls stated that “[w]ithin the guidelines of the difference principle, provisions [of medicines] can be made for covering these needs up to the point where further provision would lower the expectations of the least advantaged.” John Rawls, Justice as Fairness: A Restatement 173 (Erin Kelly ed., 2001).
[198] Rawls, supra note 195, at 47.
[199] Id. at 82 (“I suppose, then, that for the most part each person holds two relevant positions: that of equal citizenship and that defined by his place in the distribution of income and wealth.”).
[200] Id.; see also Philippe Van Parijs, Difference Principles, in The Cambridge Companion to Rawls 200, 212(Samuel R. Freeman ed., 2003).
[201] Rawls, supra note 195, at 84.
[202] U.S. Const. pmbl.
[203] See U.S. Const. amend. XIV, § 1.
[204] Brown v. Bd. of Educ., 347 U.S. 483 (1954).
[205] Loving v. Virginia, 388 U.S. 1 (1967).
[206] Brown, 347 U.S. at 494 (“Segregation of white and colored children in public schools has a detrimental effect upon the colored children. The impact is greater when it has the sanction of the law; for the policy of separating the races is usually interpreted as denoting the inferiority of the negro group. A sense of inferiority affects the motivation of a child to learn. Segregation with the sanction of law, therefore, has a tendency to [retard] the educational and mental development of negro children and to deprive them of some of the benefits they would receive in a racial[ly] integrated school system.”(alteration in original) (citation omitted)).
[207] Loving, 388 U.S. at 11 (Stewart, J., concurring) (“There is patently no legitimate overriding purpose independent of invidious racial discrimination which justifies [the ban on inter-racial marriage]. The fact that Virginia prohibits only interracial marriages involving white persons demonstrates that the racial classifications must stand on their own justification, as measures designed to maintain White Supremacy.”).
[208] See supra Part III.A.1-2.
[209] Rebecca Tushnet, Domain and Forum: Public Space, Public Freedom, 30 Colum. J.L. & Arts 597, 600 (2007) (“Public forums allow speech supporting the ‘poorly financed causes of little people’ to be disseminated where it is likely to be heard, in public spaces where the public often goes.” (quoting Martin v. City of Struthers, 319 U.S. 141, 146 (1943)); see also, Philip M. Napoli & Sheena T. Sybblis, Access to Audiences as a First Amendment Right: Its Relevance and Implications for Electronic Media Policy, 12 Va. J.L. & Tech. 1, 5 (2007).
[210] Lyrissa Lidsky, Public Forum 2.0, 91 B.U. L. Rev. 1975, 2008 (2011) (“The government must hold open the traditional forums such as streets and parks for the benefit of speakers who would otherwise lack the resources to reach a mass audience.”).
[211] Members of City Council v. Taxpayers for Vincent, 466 U.S. 789, 819 (1984) (Brennan, J., dissenting).
[212] Id.
[213] Tushnet, supra note 209, at 599 (pointing out that “the Supreme Court recognized a ‘metaphysical’ or intangible public forum”).
[214] Rosenberger v. Rector & Visitors of Univ. of Va., 515 U.S. 819 (1995).
[215] Id. at 830.
[216] Tinker v. Des Moines Indep. Cmty. Sch. Dist., 393 U.S. 503 (1969).
[217] Texas v. Johnson, 491 U.S. 397, 399 (1989).
[218] James Kilner, New York Fashion Week Cancels Show By Uzbek President’s Daughter, The Telegraph (Sept. 11, 2011), www.telegraph.co.uk/news/worldnews/asia/uzbekistan/8755351/New-York-Fashion-Week-cancels-show-by-Uzbek-presidents-daughter.html (“Organisers of New York Fashion Week have cancelled a show by the daughter of Uzbek president Islam Karimov after pressure from newspapers and human rights groups who accuse him of torture”).
[219] See supra text accompanying notes 181 to 183.
[220] Louboutin Declaration, supra note 167.
[221] See Anita Bhagwandas, Beauty for Darker Skins: The Perfect Red Lipstick, The Guardian (June 24, 2013), www.theguardian.com/fashion/fashion-blog/2013/jun/24/beauty-darker-skins-red-lipstick (noting that red lipstick has been a beauty trend for centuries).
[222] Valentino, Voguepedia, www.vogue.com/voguepedia/Valentino (last visited Oct. 29, 2013).
[223] See, e.g., Tinker v. Des Moines Indep. Comty. Sch. Dist., 393 U.S. 503, 509 (1969) (noting, in a symbolic speech case, that “students at one of the high schools were heard to say they would wear arm bands of other colors if the black bands prevailed.”); see also Texas v. Johnson, 491 U.S. 397, 428 (1989) (Rehnquist, J., dissenting) (noting that most state statutes against burning the American flag, determined by this Court to be symbolic speech, explicitly mention color).
[224] Qualitex Co. v. Jacobsen Prods. Co., 514 U.S. 159, 160 (1995).
[225] In re Owens–Corning Fiberglas Corp., 774 F.2d 1116, 1123 (Fed. Cir. 1985).
[226] Société Des Produits Nestlé S.A. v. Cadbury UK Ltd., [2012] EWHC (Ch) 2637 (Ch) (Eng.)
[227] Han, Nunes & Drèze, supra note 173, at 27.
[228] See Sun, supra note 30, at 402-05.
[229] See id. at 422-34 (arguing that the “shanzhai” phenomenon, as it applies to brands like Adidas and Nike, can redistribute resources).
[230] See supra text accompanying notes 181 to 183.
[232] Id.
[233] See Sun, supra note 30, at 411. (suggesting that the social justice mandate allows companies to offer products with the same functions as their high-profile counterparts, as long as the trademark name (e.g., Apple or Nokia) is not also replicated).
[234] Aesthetic functionality is a subcategory of the functionality doctrine. According to the Restatement (Third) of Unfair Competition, “[w]hen aesthetic considerations play an important role in the purchasing decisions of prospective consumers, a design feature that substantially contributes to the aesthetic appeal of a product may qualify as ‘functional.’” Restatement (Third) of Unfair Competition § 17, cmt. c (1995).
[235] Qualitex Co. v. Jacobsen Prods. Co.,514 U.S. 159, 166 (1995). Before Qualitex, the Supreme Court ruled that a product’s feature is functional “if it is essential to the use or purpose of the article or if it affects the cost or quality of the article.” Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982).
[236] See Qualitex, 514 U.S. at 170 (noting that the policy goal of the Qualitex doctrine 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).
[237] Restatement (Third) Of Unfair Competition § 17, illus. 8 (1995).
[238] See Qualitex, 514 U.S. at 170.
[239] TrafFix Devices, Inc. v. Mktg. Displays, Inc. 532 U.S. 23, 23 (2001).
[240] Louboutin I, 778 F.Supp.2d 445, 453 (S.D.N.Y. 2011).
[241] See supra text accompanying notes 56.
[242] Au-Tomotive Gold, Inc. v. Volkswagen of Am., Inc., 457 F.3d 1062, 1066 (9th Cir. 2006).
[243] Id.at 1073–74.
[244] See Louboutin II, 696 F.3d 206, 225 (2d Cir. 2012). The decision did, however, clarify that in the Second Circuit—where New York City is located—fashion brands can successfully acquire distinctiveness in a color in some configurations and protect those designs.
[245] Id. at 227.
[246] Simone de Beauvoir, The Second Sex 682 (H.M. Parshley, ed., trans. 1989) (“Precisely because the concept of femininity is artificially shaped by custom and fashion, it is imposed upon each woman from without . . . The individual is still not free to do as she pleases in shaping the concept of femininity.”); see also Toril Moi, Simone de Beauvoir: The Making of an Intellectual Woman 210 (Oxford University Press, 2d ed. 2008) (1994) (pointing out that de Beauvoir discovered fact that “'[F]emininity becomes an external set of rules for how to dress, behave, etc. . . . . .”).
[247] Vogue magazine’s report on Valentino, a legendary fashion designer, exemplifies the use of red as a basic element in the fashion industry. The report notes that “[o]n a visit to Barcelona, an opera-goer in a red velvet dress makes a lasting impression. ‘She was unique, isolated, fiery—the perfect heroine,’ [Valentino] will later recall. ‘I told myself that if I were ever going to become a designer, I would do lots of red.’” Valentino, supra note 222.

The Most Fascinating Kind of Art: Fashion Design Protection as a Moral Right

The Most Fascinating Kind of Art: Fashion Design Protection as a Moral Right
By Katelyn N. Andrews* A pdf version of this article may be downloaded here.

Introduction

“Being good in business is the most fascinating kind of art.”

-Andy Warhol[1]

In recent years, a debate has reemerged [2] in Congress,[3] in academia,[4] and in the fashion industry[5] over the extension of copyright-like protection to fashion design.[6] 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.[7] On the other hand, opponents argue that increased protection is unnecessary because the American fashion industry-a $340 billion industry[8]-is thriving,[9] and therefore, even if copying has increased in recent years, designers are not economically harmed by it.[10] Supporters of “fashion copyright”[11] have introduced two design protection bills into Congress: the Design Piracy Prohibition Act (“DPPA”)[12] in 2006, which was revised as the Innovative Design Protection and Piracy Prevention Act (“IDPPPA”)[13] in 2011 and re-introduced in September 2012 as the Innovative Design Protection Act of 2012 (“IDPA”)[14]. This bill would amend the Copyright Act to extend sui generis, copyright-like protection to fashion design.[15] 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.[16] 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”[17] to create and distribute copies of those creative products so that initial investments may be recouped before other copiers enter the market.[18] 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.[19] 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.[20] Although trademark laws protect brand names[21] and some designs enjoy trade dress[22] or design patent[23] protection, the fashion industry generally operates under a low-IP regime.[24] 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.[25] 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.[26] The proponents of increased design protection have been correct to recognize the striking similarities between fashion and art in contemporary culture.[27] Not only do fashion designers and artists collaborate and inspire each other,[28] the practices and business models of the fashion and contemporary art worlds are hardly distinguishable in modern society.[29] Fashion designers are widely recognized and discussed as creative geniuses,[30] their work is examined and analyzed in art-historical frameworks,[31] and their designs are exhibited internationally in museums alongside prized art objects.[32] 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.[33] 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.[34] 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”)[35] and various state moral rights laws.[36] The moral rights granted under these statutes seek to protect the reputation of an artist by preventing others from modifying or misattributing his works.[37] 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.

I. Shortcomings of the Economic Analysis

“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.”

-Jean Cocteau[38]

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”[39] 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.[40] 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.[41]

A. The First-Mover Advantage

Proponents of “fashion copyright” have clung to the first-mover advantage exception in the economic theory,[42] arguing that in the past designers enjoyed a substantial first-mover advantage that has recently disintegrated due to technological change.[43] That copying (or “piracy”) has existed in the fashion industry since the birth of “fashion” as we know it is indisputable.[44] 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.[45] 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.[46]
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.”[47] This argument is not without intuitive appeal, and indeed many changes in copyright law have been motivated by changes in copying technology.[48] 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.[49] 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.[50] 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).[51] Later, as photography and publication technologies developed, so did fashion magazines that spread images of new designs throughout Western culture.[52] Now, as digital technology and the internet expand, fashion blogs and websites broadcast runway show photos throughout the world instantly.[53] 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.”[54] 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.”[55] 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.[56] 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.[57] 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,[58] leaving both advocates and opponents of design protection (and Congress) unsatisfied.

B. Imperfect Copies

Under an economic analysis of copyright law, a second practical consideration may lead to market stability in the absence of protection: in the world of quick copies, the quality of copies may be so low that they do not serve as an adequate market alternative for originals.[59] 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.[60] Proponents of design protection usually counter this argument with anecdotes of the “personal tragedy”[61] of individual designers who are driven out of business by design pirates.[62] 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.[63] 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.”[64] 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.[65] In the end, the economic arguments both for and against design protection have proven unsuccessful.

II. Fashion as Art

“Art? Isn’t that a man’s name?”

-Andy Warhol[66]

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,”[67] an extension of a designer’s creative soul, and thus deserves[68] 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”[69]-an apparent “loophole in copyright law.”[70] Implicit in this statement is the faulty assumption that copyright protects “works of art,”[71] 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.[72]
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.”[73] In the 2008 DPPA hearing, designer Narciso Rodriguez argued that over the last century “fashion design has become an art form,”[74] and Professor Scafidi maintained that one reason fashion deserves protection is because it is “now recognized as a form of creative expression,”[75] and that French recognition of design protection indicates “[t]he formal recognition of fashion design as an art form” in France.[76] 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[77] 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.

A. Fashion Imitating Art

“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.”

-Yves Saint Laurent[78]

1. The Fashion Designer as Artist

For the vast majority of human history, there was no such thing as “fashion” or the “fashion designer,” only clothing made at home or by seamstresses.[79] The concept of the fashion designer as a celebrated creative individual did not emerge until the late 19th century.[80] 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.”[81] 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.[82] 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.”[83] 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.”[84] 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,”[85] and she was lauded for her “ability to market an idealized vision of herself, and to embody her own perfect customer.”[86] 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.[87] 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.[88] 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.”[89] 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.[90]

2. Appropriation, Collaboration, and Inspiration

The many collaborations that have occurred and cross-inspirations that have been discussed between fashion and art in recent decades have furthered the notion that fashion is “art” (or at least art’s equally respectable cousin). Direct appropriation provides the most obvious example of fashion imitating art. Many times throughout his career, Yves Saint Laurent produced garments that looked as though they could have been made by stripping an artist’s canvas off of its frame and wrapping it around a body. Perhaps the most iconic of these was the “Mondrian” dress of 1965. Saint Laurent saw the simple planes of the popular shift dress as the perfect canvas for the geometric color blocks and lines of the Piet Mondrian’s paintings.[91] 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,[92] revived this practice many times throughout his career with tributes to Van Gogh, Matisse, Picasso, Braque, and Cocteau, among others.[93] 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.”[94] 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[95] and the Brooklyn Museum of Art in 2008,[96] and at a party for Prince’s Guggenheim retrospective in 2008[97]-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.[98] Like the minimalist artists of the 1960s who rejected the constraints of oppressive artistic categories such as painting and sculpture,[99] 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.[100] 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?[101] 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.”[102] 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.”[103]

3. Museums’ and Runway Shows’ Display of Fashion as Art

Further contributing to the conception that fashion might be considered art is the extreme popularity of museum fashion exhibitions. Museums have long exhibited clothing along with furniture, jewelry, and other decorative arts, generally as pieces of historic interest. There has been a shift, however, to the display, celebration, and contemplation of fashion for fashion’s sake, which owes much credit to Diana Vreeland, the former Vogue Editor-in-Chief who took the helm of the Costume Institute at the Metropolitan Museum of Art in 1971.[104] 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.[105] 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.[106] 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.[107] 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,[108] 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,”[109] 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,[110] in a show reminiscent of Yoko Ono’s “Cut Piece” performance art of 1964.[111] 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.[112] Moreover, in what is becoming a more common practice, many fashion companies held their Spring/Summer 2012 shows and presentations in New York galleries.[113]

B. Art Imitating Fashion

“[I]f artists were in hell in 1946, now they are in business.”

-Allan Kaprow[114]

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.”[115] The extreme commerciality[116] 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.[117] While this practice was originally met with criticism,[118] it is now so commonplace that commerciality in contemporary art has become “overt and intrinsic.”[119] 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.[120] 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.”[121] 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.”[122] 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.'”[123] 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.[124] 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.”[125] 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.”[126]

C. Is Fashion Art?

There are two possible conclusions to this story. The first is that fashion is art: contemporary art has been so successful in destroying the boundaries between “art” and everything else that consumer goods such as fashion articles have been allowed in. If this is the case, then should there be any consequence for fashion? If “the great achievement of contemporary art, has been to destroy the category of art as we know it,”[127] then even if fashion is art, the classification as such means little in the contemporary art world where both everything and nothing is art.[128] 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.[129] 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.

III Moral Rights in Fashion Design

“Design piracy denigrates the integrity of the style.”

-Nicole Miller[130]

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.[131] 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.[132] 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[133] and are often premised on a personhood theory of protection,[134] which posits that works of art embody an artist’s “individual essence”[135] and are part of her “very identity.”[136] Therefore, in order to fully protect an artist’s interests,[137] we should recognize rights that “preserve the bond between the artist and her work.”[138] The U.S. grants moral rights under the Visual Artists Rights Act of 1990,[139] which protects visual artists’ rights of attribution[140] and integrity,[141] and many states grant similar moral rights protection.[142] 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”[143]-should be protected against unauthorized use because that would amount to a personal assault on the designer himself.[144] 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.”[145] 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.”[146] 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.[147] 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.”[148] 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.”[149] 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.”[150] In other words, fashion design warrants protection not because protection incentivizes design, but because all creative expressions of an artistic soul deserve protection.[151] 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.”[152] 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.[153] 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,[154] 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.

Conclusion

In the end, the contemporary quest for copyright protection undertaken by fashion designers and other industry supporters is misguided. The American fashion industry as a whole has not suffered any detectable economic harm as a result of the lack of copyright protection, and modern technological changes have not improved copying techniques so drastically that there is reason to believe that the long-standing low-IP equilibrium has been upset. However, economically successful designers have continued to argue fervently for increased protection. Upon further examination of their arguments, it is clear that in attempting to curtail copying, they seek to redress a morals-based harm. Their sense of harm when their designs are copied is magnified by the synergistic relationship between fashion and art that has recently emerged in the U.S., which has led to a growing perception that fashion is art. When comparing their work to that of their peers and collaborators in the art world, fashion designers have been shocked to discover that U.S. law treats their precious work much differently than that of the artists. This has led designers to seek copyright protection in their work. However, their harm has little basis in economics and is instead predicated upon a sense of personal, morals-based harm that is felt when the integrity of their designs are compromised. The debate over fashion design protection should focus on moral and reputational considerations outright, instead of veiling them in economics-based arguments favored by copyright policy. If it is moral rights protection that the fashion industry really desires, then a morals-based regime should be on the Congressional docket instead of the pending quasi-copyright proposal that has failed to gain significant legislative support.
* Associate, Skadden, Arps, Slate, Meagher & Flom, LLP; J.D., 2012, New York University School of Law; B.A., 2009, The University of Georgia. The views and opinions expressed in this Note are mine alone and do not represent the views of Skadden, Arps, Slate, Meagher and Flom, LLP.
[1] Andy Warhol, The Philosophy of Andy Warhol 92 (1975).
[2] Discussion of protection for fashion design (often along with other useful articles) has arisen many times throughout the last 100 years. A sui generis design protection clause that was struck from the 1976 Copyright Act just before it was passed would have granted up to ten years of protection for useful articles that were not “staple or commonplace.” See S. 22, 94th Cong. (1975), reprinted in S. Rep. No. 94-473, at 162 (1975).
[3] See Innovative Design Protection Act of 2012, S. 3523, 112th Cong. (2012) [hereinafter IDPA]; Innovative Design Protection and Piracy Prevention Act, H.R. 2511, 112th Cong. (2011); S. 3728, 111th Cong. (2010) [hereinafter IDPPPA]; Design Piracy Prohibition Act, H.R. 2196, 111th Cong. (2009); H.R. 2033, 110th Cong. (2007); S. 1957, 110th Cong. (2007) [hereinafter DPPA]; H.R. 5055, 109th Cong. (2006).
[4] See, e.g., Jonathan M. Barnett, Shopping for Gucci on Canal Street: Reflections on Status Consumption, Intellectual Property, and the Incentive Thesis, 91 Va. L. Rev. 1381 (2005); C. Scott Hemphill & Jeannie Suk, Remix and Cultural Production, 61 Stan. L. Rev. 1227 (2009); C. Scott Hemphill & Jeannie Suk, The Law, Culture, and Economics of Fashion, 61 Stan. L. Rev. 1147 (2009) [hereinafter Hemphill & Suk, Fashion]; Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687 (2006) [hereinafter Raustiala & Sprigman, The Piracy Paradox]; Kal Raustiala & Christopher Sprigman, The Piracy Paradox Revisited, 61 Stan. L. Rev. 1201 (2009). There have also been numerous student notes written on the topic in recent years. See, e.g., Sara R. Ellis, Note, Copyrighting Couture: An Examination of Fashion Design Protection and Why the DPPA and IDPPPA are a Step Towards the Solution to Counterfeit Chic, 78 Tenn. L. Rev. 163 (2010); Shelley C. Sackel, Note, Art is in the Eye of the Beholder: A Recommendation for Tailoring Design Piracy Legislation to Protect Fashion Design and the Public Domain, 35 AIPLA Q. J. 473 (2007).
[5] See, e.g., CFDA, CFDA Design Manifesto, http://www.cfda.com/the-latest/cfda-design-manifesto-3 (last visited Aug. 16, 2012) (“All designers deserve the right to design protection and only the creator of an original design should profit from that design. Taking someone’s work and calling it your own is wrong and robs the designer of a rightful return on their investment.”) (quoting Stephen Kolb, CFDA CEO).
[6] A bill that has been circulating throughout Congress in different forms since 2006 would extend protection for three years from the “date of commencement of protection” to “the overall appearance of an article of apparel,” which includes “original elements” that “provide a unique, distinguishable, non-trivial and non-utilitarian variation over prior designs for similar types of articles” against infringing designs that are “substantially identical,” meaning “so similar in appearance as to be likely to be mistaken for the protected design, and contains only those differences in construction or design which are merely trivial.” See IDPA, supra note 3.
[7] See infra Part I.
[8] See Innovative Design Protection and Piracy Prevention Act: Hearing on H.R. 2511 Before the Subcomm. on Intellectual Property, Competition, and the Internet of the H. Comm. on the Judiciary, 112th Cong. 4 (2011) [hereinafter 2011 Hearing] (statement of Lazaro Hernandez, Designer and Co-Founder, Proenza Schouler).
[9] See, e.g., Design Law-Are Special Provisions Needed to Protect Unique Industries?: Hearing Before the Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 110th Cong. 20 (2008) [hereinafter 2008 Hearing] (statement of Hon. William D. Delahunt, Member, H. Comm. on the Judiciary) (“America has become the world leader in fashion design. This is not just an LA / NY phenomena, it’s happening across America. Fashion design businesses are proliferating and growing.”); id. at 24 (statement of Narciso Rodriguez on behalf of the CFDA) (“More and more young Americans are going into fashion, and America now leads the world in fashion design.”); A Bill to Provide Protection for Fashion Design: Hearing on H.R. 5055 Before Subcomm. on Courts, the Internet, and Intellectual Property of the H. Comm. on the Judiciary, 109th Cong. 85 (2006) [hereinafter 2006 Hearing] (statement of Christopher Sprigman, Associate Professor, University of Virginia School of Law) (“Now, the first thing I just want to remind you of is something that no one has disagreed with, which is that the fashion industry is thriving.”). American designer Michael Kors’s company recently went public with a valuation of $3.8 billion, making it the largest public offering of a U.S. fashion company, with shares that performed better than the average U.S. IPO in first day trading in 2011. See Kors shares open 25% higher, Financial Times, Dec. 14, 2011, http://www.ft.com/intl/cms/s/0/47e920f0-267d-11e1-9ed3-00144feabdc0.html#axzz1gj40NG00.
[10] Raustiala and Sprigman go further to argue that copying actually promotes innovation by rendering old, copied designs less valuable to consumers, thus providing an incentive for designers to create new fashions, and advancing the fashion cycle. Raustiala & Sprigman, The Piracy Paradox, supra note 4. A common retort to this argument is that protection should only extend to exact or “line-by-line” copies, preserving the ability of all designers to draw inspiration from each other, and that the term of protection should be short, allowing designers to easily revive old designs, even in “line-by-line” copies. See, e.g., Hemphill & Suk, Fashion, supra note 4.
[11] I will use the terms “fashion copyright” and “design protection” to refer both to the particular protection scheme proposed by the IDPA, see supra notes 3 & 6, and more generally to any copyright-like scheme for fashion protection that would extend protection to all designs without prior examination and would judge for infringement based on a “similarity” standard.
[12] H.R. 2196, 111th Cong. (2009); DPPA, supra note 3; H.R. 2033, 110th Cong. (2007); H.R. 5055, 109th Cong. (2006).
[13] IDPPPA, supra note 3.
[14] IDPA, supra note 3.
[15] See supra note 6.
[16] Professor Jeannie Suk of Harvard and Professor Susan Scafidi of Fordham have both testified before Congress in support of increased design protection. See 2011 Hearing, supra note 8, at 13; 2006 Hearing, supra note 9, at 77. Although not all fashion designers have expressed support for increased protection, I refer to fashion designers generally because the CFDA purports to represent designers as a group and has sent a number of designers to testify before Congress on its behalf in supporting the DPPA and the IDPPPA. Further, designer Jeffrey Banks testified that “there is a groundswell of support for this bill” among his colleagues. 2006 Hearing, supra note 9, at 189. It is certainly plausible that many designers oppose an increase in design protection, either because they fear that its benefits will only be available to large design houses with the resources to enforce their rights, perhaps to the detriment of some designers, or simply because they share the feelings of Gabrielle “Coco” Chanel who “saw the widespread copying of her couture originals as confirmation that they had gone beyond mere fashion to embody style itself.” Nancy J. Troy, Chanel’s Modernity, in Chanel 20 (Harold Koda & Andrew Bolton eds., 2005).
[17] U.S. Const. art. I, § 8, cl. 8.
[18] See William M. Landes and Richard A. Posner, An Economic Analysis of Copyright Law, 18 J. Legal Stud. 325, 328 (1989) (“In [copyright’s] absence anyone can buy a copy of the book when it first appears and make and sell copies of it. The market price of the book will eventually be bid down to the marginal cost of copying, with the unfortunate result that the book probably will not be produced in the first place, because the author and publisher will not be able to recover their costs of creating the work.”). This economic view serves as the primary justification for copyright under U.S. law. See, e.g., Sony Corp. of America v. Universal City Studios, Inc., 464 U.S. 417, 429 (1984) (“[T]he limited grant [of copyright privileges] is a means by which an important public purpose may be achieved. It is intended to motivate the creative activity of authors and inventors by the provision of a special reward, and to allow the public access to the products of their genius after the limited period of exclusive control has expired.”); Pamela Samuelson, Should Economics Play a Role in Copyright Law and Policy?, 1 U. Ottowa L. & Tech. J. 2, 3 (2003) (“The principal justification for intellectual property (IP) laws in the Anglo-American tradition is economic.”); Alfred C. Yen, The Interdisciplinary Future of Copyright Theory, 10 Cardozo Arts & Ent. L. J. 423, 425 (1992) (“The … theory states that copyright exists solely to provide necessary economic incentives for the production of creative work.”).
[19] See Landes & Posner, supra note 18, at 328.
[20] Copyright protection is afforded to “useful articles” only to the extent that their “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.” 17 U.S.C. § 101 (2006) (defining “pictorial, graphic, and sculptural works” as “works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned”). “Useful articles” include any object that has an intrinsic utilitarian function, even if it has other, non-utilitarian functions. See Melville B. Nimmer & David Nimmer, Nimmer on Copyright §2.08[B][3]. Thus clothing, which serves the utilitarian function of covering the body, is a useful article even though it may have other aesthetic or signifying purposes. The separability test applies to both physically and conceptually separable elements of an article of design such that “design elements that can be conceptualized as existing independently of their utilitarian function…are eligible for copyright protection.” Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324, 329 (2d Cir. 2005) (internal quotation marks omitted); see also Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980) (conceptual separability sufficient for copyright). However, designs printed on clothing fabrics are copyrightable, see Scarves by Vera, Inc. v. United Merchs. & Mfrs., 173 F. Supp. 625 (S.D.N.Y. 1959); Peter Pan Fabrics, Inc. v. Brenda Fabrics, Inc., 169 F. Supp. 142 (S.D.N.Y. 1959).
[21] Fashion products bearing logos and other source-identifying marks are protected under the Lanham Act against the sale of goods that bear confusingly similar marks, 15 U.S.C. § 1125(a) (2006), dilutive marks, § 1125(c), or counterfeit marks, § 1114. Counterfeit goods of the type seen on Canal Street, while an ongoing plague on the fashion industry, are not the subject of this Note.
[22] The shape of a product may be protectable as “trade dress” when it is so distinctive as to have “secondary meaning”-i.e. consumers associate the design of the product with its source and consider the design to be source identifying. See Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) (holding that product design trade dress can never be inherently distinctive and thus designs can only be protected upon a showing of secondary meaning). However, product designs that have aesthetic or utilitarian functionality generally are not protectable. See TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23, 29 (2001). Furthermore, in order to be protected against trade dress dilution, which is more expansive than confusion protection, trademarks and trade dress must be shown to be “famous.” See 15 U.S.C. § 1125(c)(1) (2006).
[23] Design patents are available for some novel fashion designs, but the high price and difficulty of achieving design patents for individual garments makes them generally impractical for the fashion industry. See, e.g., Sackel, supra note 4, at 493. Because it can take over a year to receive a design patent, they are most useful for items like handbags and shoes that are sold continually for many seasons.
[24] See Raustiala & Sprigman, The Piracy Paradox, supra note 4, at 1698-1704 (describing “fashion’s low-IP equilibrium” and reviewing reasons that copyright, trademark, and patent law exclude protection of fashion designs).
[25] See, e.g., 2006 Hearing, supra note 9, at 85 (statement of Professor Christopher Sprigman) (“[N]o one has disagreed…that the fashion industry is thriving…We have U.S. firms participating in an industry that is approaching $1 trillion around the world. Never in our 217-year history of copyright has Congress extended copyright or copyright-like protections to the fashion industry.”).
[26] The problem of defining “art,” especially for the purposes of legal analysis, has continually plagued courts and academics. I use the term “art” in this Note in two senses: to refer to both the popular conception of “works of art” or “forms of art” and in a more narrow way to the work that critics, museums, and galleries generally refer to as “art.” This dual use of the term is in my view an inescapable symptom of the ever-changing and indefinable nature of the term itself.
[27] See generally infra Part II.
[28] See infra notes 91-97 and accompanying text.
[29] See infra notes 115-122 and accompanying text.
[30] See infra notes 88-90 and accompanying text.
[31] See infra notes 98-103 and accompanying text.
[32] See infra notes 104-106 and accompanying text.
[33] See infra notes 114-126 and accompanying text.
[34] See supra note 18 and accompanying text.
[35] VARA, 17 U.S.C. 106A (2006).
[36] See, e.g., California Art Preservation Act, Cal. Civ. Code § 987 (West 2012); N.Y. Arts & Cult. Aff. Law § 14.03 (McKinney 2012).
[37] See 17 U.S.C. 106A(a) (preventing modification & misattribution that would be prejudicial to an artist’s honor or reputation); Cal. Civ. Code § 987(a) (finding that “physical alteration or destruction of fine art, which is an expression of the artist’s personality, is detrimental to the artist’s reputation”); N.Y. Arts & Cult. Aff. Law § 14.03(1) (preventing modification when damage to the artist’s reputation is reasonably likely). See also John Henry Merryman, The Refrigerator of Bernard Buffet, 27 Hastings L.J. 1023, 1025 (1976) (“Copyright…protects the artist’s pecuniary interest in the work of art. The moral right, on the contrary, is one of a small group of rights intended to recognize and protect the individual’s personality[, including the] right to one’s identity, to a name, to one’s reputation…”); Henry Hansmann & Marina Santilli, Authors’ and Artists’ Moral Rights: A Comparative Legal and Economic Analysis, 26 J. Legal Stud. 95, 104 (1997) (moral rights serve “in important part, to protect not just artists’ personal feelings about their creations but rather (or in addition) their reputational interests”).
[38] Joseph Abboud, Threads: My Life Behind the Seams in the High-Stakes World of Fashion 79 (2005).
[39] Raustiala & Sprigman, The Piracy Paradox, supra note 4 (describing the “low-IP equilibrium” and suggesting that copying might in fact lead to more innovation in the fashion industry since widespread copying often makes designs undesirable to early adopters who then demand new work from designers).
[40] Landes & Posner, supra note 18, at 330 (“[F]or works that are faddish-where demand is initially strong but falls sharply after a brief period-copyright protection may not be as necessary in order to give the creator of the work a fully compensatory return.”).
[41] Id. at 329 (“[I]n the case of works of art-such as a painting by a famous artist-a copy, however accurate, may be such a poor substitute in the market that it will have no negative effects on the price of the artist’s work.”).
[42] Their argument is drawn straight from Landes and Posner’s theory: “because modern technology has reduced the time it takes to make copies as well as enabled more perfect copies to be made at low cost, the need for copyright protection has increased over time.” Id. at 330. Generally, the quality of copies in fashion has not been as affected by technological changes as it has in other industries like music and film. I address the availability of “more perfect copies” in fashion in Part II.B infra.
[43] See, e.g., 2006 Hearing, supra note 9, at 13 (statement of Jeffery Banks, Fashion Designer, on Behalf of the CFDA) (“We can’t compete against piracy so the creativity and innovation that has put American fashion in a leadership position will dry up.”); id. at 79 (statement of Susan Scafidi, Professor, Fordham Law School) (acknowledging that fashion has historically not received much intellectual property protection but that there are now “changed circumstances that indicate a greater need for some protection today.”).
[44] See, e.g., Sara B. Marcketti and Jean L. Parsons, Design Piracy and Self-Regulation: The Fashion Originators’ Guild of America, 1932-1941, 24 Clothing & Textiles Research J. 214, 216 (2006) (noting that in the late-19th century, “styles were copied so quickly that any innovative style was available to all consumers virtually immediately, at successively lower price points”); Piracy on the High Fashions, Vogue, July 1933, at 28:
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.
[45] See, e.g., 2006 Hearing, supra note 9, at 12 (statement of Jeffery Banks) (“Copying, years ago, would take anywhere from three to four months to a year or more. But as I said, all that changed with new technology…a new and original design…can be stolen before the applause has faded thanks to digital imagery and the internet.”).
[46] 2011 Hearing, supra note 8, at 99 (statement of Lazaro Hernandez); see also 2006 Hearing, supra note 9, at 11 (statement of Jeffrey Banks) (“In the blink of an eye, perfect 360 degree images of the latest runway fashions can be sent around the world…And that…is the main reason I sit before you today.”).
[47] 2006 Hearing, supra note 9, at 81.
[48] See, e.g., Russ VerSteeg, The Roman Law Roots of Copyright, 59 Md. L. Rev. 522, 522 (2000) (“Modern technology-specifically the computer and its uses via the Internet-increasingly demands that we reconsider and rethink copyright law. This phenomenon is not new. Before computers made us reassess copyright law, other once-new forms of copying, communication, and information transmission did the same for the following: the satellite, the photocopier, the VCR, radio, sound recording, photography, the printing press, and various forms of television, including cable television.”).
[49] These technological advances is film, music, and publishing not only affected the speed with which copies could be made and disseminated, but also drastically improved the quality of those copies, particularly in music and film. I discuss the impact of the quality of copying in fashion in Part I.B infra. See also supra note 41 and accompanying text.
[50] Most of the arguments can also be made about visual art. The question of the necessity of copyright protection for art is beyond the scope of this Note, but it is worth noting that copyright in visual art is generally used to protect the market for licensing images of art works and for derivative goods like postcards, posters, and coffee mugs that are sold in museum gift shops. Such derivative markets do not generally exist in fashion and further, the ability of a photograph of a fashion design to infringe the copyright in the garment has not been proposed in the discussion of fashion copyright.
[51] In the late 18th century, Rose Bertin, the designer of choice for Marie Antoinette, grew to fame for her role of dressing the “grade Pandora” doll that traveled throughout Europe and the New World and was “one of the main ways to propagate fashions before the regular publication of fashion magazines.” Rebecca Arnold, Fashion: A Very Short Introduction 13 (2009).
[52] Id. at 15 (The 19th century saw “the growth of fashion media, photography, and by the end of the century, film, which disseminated imagery of fashion more widely than ever before, and fuelled women’s desire for more variety and quicker turnover of styles”).
[53] For fashion companies, a strong web presence and creative use of social media is generally praised as marker of good branding and public relations. See, e.g., Cate T. Corcoran, Everyone’s Doing It: Brands Take on Social Media, Women’s Wear Daily, Sep. 28, 2009, at 20, available at http://www.wwd.com/media-news/digital/everyones-doing-it-brands-take-on-social-media-2318508 (discussing the “Digital IQ” study by NYU professor Scott Galloway that ranked the digital competence of 109 brands, and pointing out that several bloggers “were given front-row seats at the D&G show…complete with desks and laptops for instant transmission, knocking…retail heavyweights to the second row”).
[54] Julius Henry Cohen, Law and Order in Industry: Five Years’ Experience 88 (1916).
[55] Paul Henry Nystrom, Economics of Fashion 425 (1928).
[56] The Guild was soon ordered to disband because of antitrust violations. Fashion Originators’ Guild of America v. FTC, 312 U.S. 457 (1941).
[57] 2011 Hearing, supra note 8, at 94 (statement of Christopher Sprigman) (“I think the speed of copying hasn’t really changed very much in 20 years…[T]he fax machine really changed the speed of copying.”).
[58] Professors Raustiala and Sprigman introduced new economic data on the fashion industry to Congress in the 2011 hearings on the IDPPPA, but they were not nuanced enough to answer these questions. 2011 Hearing, supra note 8, at 81.
[59] Landes & Posner, supra note 18, at 329. This is a consideration that the proponents of copyright-like protection for fashion have discussed less thoroughly than the first-mover advantage. This is probably because unlike in other creative industries like music and film, technological change has not had a drastic impact on the quality of fashion copies. The quality of fashion copies tends to decrease as the speed at which the copies reach the market increases, which is nearly unavoidable due to the physical (as opposed to digital) nature of the goods. Furthermore, an element of this exception to the economic theory of copyright is that “the [imperfect] copy may have a positive effect on [the] price [of the original] by serving as advertising for [a creator’s] works.” Landes & Posner, supra note 18, at 329. Fashion designers quickly rebuff this argument, it seems, to avoid surrendering to an argument that is equivalent to the old adage that “any press is good press.” For example, during the 2006 Congressional hearings on the DPPA, designer Jeffery Banks complained that copies of dresses worn on the red carpet at the Academy Awards appeared days later on morning shows and were on sale within a week. Congressman Berman suggested that this benefitted the designers by publicizing their brands and designs, to which Mr. Banks countered, “That sells your personality as a designer, but that doesn’t sell your dress.” Of course designers make most of their money by selling “their personality,” both directly through licensing deals and indirectly through the effect that branding and publicity have on the perceived value of their designs. In the end Mr. Banks argued that the harm to designers occurs when the dress is knocked-off so quickly that consumers who could afford to buy the original fashion are dissuaded from purchasing because the knockoffs have in a sense tarnished the appeal of the fashion to them. 2006 Hearings, supra note 9, at 183-84.
[60] There is, of course, the argument that the existence of cheap copies cheapens the value of the original design and dissuades consumers of the original from purchasing it once they know that the item can be purchased by less wealthy consumers at a significantly lower price. This class-based, sociological tarnishment of designs, however, is akin to the problem of brand tarnishment that trademark dilution law seeks to redress, further indicating that a legal regime focused on the protection of reputation and consumer perception is more suited for the fashion industry than copyright law. A second argument could be made that the two distinct classes of consumers described above are the result of an artificial inflation in prices for original designs because of the availability of knock-offs. That is, in a world without knock-offs, prices for originals may exist at some median price such that both classes of consumers could afford to buy originals. However, once copying begins, designers of originals start to lose revenue to knock-off manufacturers and then must increase prices to account for the losses to a point where the buyer of the knock-off can no longer afford to buy the original. It follows from this that design protection would lower costs and make original fashions more affordable to the public. A full economic analysis of these issues is beyond the scope of this Note, but it is worth considering that the basic cost of manufacturing original couture and ready-to-wear designer goods may be so high that members of the “general public” could never afford to buy designer originals, even at cost, and so no revenue could be lost to affordable knock-offs, meaning there would be no need to inflate prices of originals to account for losses to knock-offs.
[61] 2006 Hearing, supra note 9, at 187 (statement of Susan Scafidi).
[62] See id. at 83 (statement of Susan Scafidi) (“While it is difficult to quantify or even identify designers who give up their businesses, particularly for reasons of piracy, there is strong anecdotal evidence that design piracy is harmful to the U.S. fashion industry.”).
[63] Id. at 181.
[64] Id. at 85.
[65] Although little movement has been seen at the Congressional level since the 2011 hearing on the IDPPPA, the bill remains a widely discussed topic among fashion industry professionals and lawyers. The U.S. Chamber of Commerce did voice its support for the bill in October 2011 by sending a letter to the House Judiciary Committee calling for a full committee vote. See Kristi Ellis, Design Piracy Bill Picks Up Support, Women’s Wear Daily (Oct. 12, 2011), http://www.wwd.com/business-news/government-trade/design-piracy-bill-picks-up-support-5289381, but as of this writing, no vote has taken place.
[66] Arthur C. Danto, Encounters and Reflections 286-87 (1990).
[67] 2008 Hearing, supra note 9, at 27 (statement of Narciso Rodriguez).
[68] See, e.g., 2006 Hearing, supra note 9, at 78 (statement of Susan Scafidi).
[69] Kristi Ellis, Designers to Back Knock-off Bill, Women’s Wear Daily, July 15, 2011, at 2.
[70] Rosemary Feitelberg, Schumer Touts Plan to Fight Design Theft, Women’s Wear Daily, Aug. 9, 2007, at 12.
[71] The Copyright Act does not explicitly protect “works of art” but instead protects most visual art as a “pictorial, graphic, and sculptural works,” 17 U.S.C. § 102(a)(5), and extends further protection to “works of visual art” under VARA, 17 U.S.C. § 106A (2006).
[72] Kristi Ellis, Design Piracy Bill Advances to Senate, Women’s Wear Daily, Dec. 2, 2010, at 4 (quoting Kurt Courtney).
[73] 2006 Hearing, supra note 9, at 187.
[74] 2008 Hearing, supra note 9, at 27.
[75] 2006 Hearing, supra note 9, at 81.
[76] Id. at 84.
[77] It has been noted that the pop art craze of the early 1960s “caused the realms of art, fashion, and journalism to intersect as rarely before.” James Meyer, Minimalism: Art and Polemics in the Sixties 25 (2001). And in the 1960s, fashion magazines like Harper’s Bazaar and Vogue featured the work and writings of contemporary artists like Robert Morris, Dan Flavin, Donald Judd, Sol Lewitt, James Rosenquist, and Frank Stella alongside and interspersed with fashion description and photography. The inclusion of high art in glossy fashion magazines “equated the new art with fashion and vice versa …It brought the highbrow into congress with the middlebrow, blurring the distinction between those spheres; it lent the authority of fine art to design while conferring the glamour and publicity of fashion to fine art.” Id. at 29. This was perhaps more accurately a new beginning for the symbiosis of art and fashion, which had previously flourished in pre-war France with designers like Paul Poiret who were inspired by modern artists of the time. See Arnold, supra note 51, at 42.
[78] Yves Saint Laurent, Exhibition Brochure, Petit Palais, Musée des Beaux-Arts de la Ville de Paris, at 6 (2010), available at http://www.petitpalais.paris.fr/sites/default/files/DP_YSL_English_0.pdf.
[79] See Arnold, supra note 51, at 12.
[80] See, e.g., Amy de la Haye, The Cutting Edge: 50 Years of British Fashion 13 (1997) (“The high-fashion industry as we know it today, with seasonally presented, designer-led fashions was established in Second Empire Paris (1852-70).”).
[81] See Arnold, supra note 51, at 12.
[82] de la Haye, supra note 80, at 13 (“Worth conceived and imposed his own design ideas and in so doing created fashion unequivocally determined by the designer.”).
[83] Id.
[84] Arnold, supra note 51, at 6.
[85] Id. at 10 (quoting Ernestine Carter).
[86] Id. (“Chanel designed herself, and then sold this image to the world.”). This technique has been used with similar success by designers like Donna Karan, Donatella Versace, and more recently Margherita Missoni. But the image of the designer remains incredibly important even when he is not selling a vision of himself. For example Karl Lagerfeld who designs for Chanel today does not epitomize the Chanel customer but instead uses his personal style to “denote[] his status as a cultured aesthete” and remains involved in art and cultural projects which support the elite status of his couture. Id. at 11.
[87] Id. at 21.
[88] See, e.g., id. at 17 (“Fashion houses, partly to raise the status of the designer, and partly to provide a recognizable identity and personality to promote each label, asserted the idea of the couturier as an innovator and artist.”).
[89] Ingrid Sischy and Germano Celant, Editorial, Artforum, Feb. 1982, 34.
[90] See infra notes 134-141 and accompanying text.
[91] See Yves Saint Laurent: “Mondrian” day dress (C.I.69.23), Heilbrunn Timeline of Art History, The Metropolitan Museum of Art, http://www.metmuseum.org/toah/works-of-art/C.I.69.23 (last visited Aug. 16, 2012). It is interesting to note that the Metropolitan credits both Mondrian and Saint Laurent as being the “artist” of this piece in their index. Although Mondrian did not live to see Saint Laurent’s creation, one can imagine that he would have approved: “The essence of Mondrian’s ideas is that painting, composed of the most fundamental aspects of line and colour, must set an example to the other arts for achieving a society in which art as such has no place but belongs instead to the total realization of ‘beauty’.” Introduction, Piet Mondrian, The Collection, Museum of Modern Art, http://www.moma.org/collection/artist.php?artist_id=4057 (last visited Aug. 16, 2012).
[92] After Saint Laurent died, his partner Pierre Bergé put their art collection, which included works by Picasso, Matisse, Duchamp, Brancusi, Mondrian, and de Chirico up for auction at Christie’s in Paris. See Steven Erlanger, Saint Laurent Art Sale Brings In $264 Million, N.Y. Times, Feb. 24, 2009, at A8, available at http://www.nytimes.com/2009/02/24/arts/design/24auction.html.
[93] Yves Saint Laurent: “Mondrian” day dress, supra note 91. See also Barbara Pollack, All Dressed Up, ARTnews, Feb. 2012, at 88. As for art’s reclaiming of the designs, an Irving Penn photograph of one of the Braque inspired 1988 dresses recently sold at contemporary art auction house Phillips de Pury for $27,500, $9,500 over the high estimate. Lot 39, Irving Penn, Saint Laurent, Braque Inspired Fashion, Paris 1988, Photographs Auction, New York, April 9, 2011, http://www.phillipsdepury.com/auctions/lot-detail.aspx?sn=NY040111&search=&p=4&order=1&lotnum=39.
[94] Yves Saint Laurent, supra note 78, at 13.
[95] See Jack Bankowsky, © Murakami, Artforum, Dec. 2007, at 334.
[96] See Press Release, Brooklyn Museum, The Brooklyn Museum Announces the Inclusion of an Exclusive Louis Vuitton Store Within the Retrospective of Japanese Artist Takashi Murakami (Mar. 21, 2008), available at http://www.brooklynmuseum.org/press/uploads/ Louis%20Vuitton%20Press%20Release-PROD.pdf.
[97] See Fashion Scoops, Early to the Party, Women’s Wear Daily, Jan. 10, 2008, at 13.
[98] See, e.g., Francisco Costa, Foreword to Elyssa Dimant, Minimalism and Fashion: Reduction in the Postmodern Era, at 9 (2010) (“I often look to film, sculpture, photography, and architecture for inspiration and have found it in the unpretentious works of artists such as Brancusi, Madame Vionnet, Frank Stella, Man Ray, and John Pawson-my minimalist predecessors.”).
[99] Elyssa Dimant, Minimalism and Fashion: Reduction in the Postmodern Era 31 (2010) (discussing Donald Judd’s expositions on minimalism in “Specific Objects”).
[100] Id. at 32 (describing Balenciaga’s creation of “clothing that was neither bolstered by a corset infrastructure nor adherent to the human body’s natural shape”)
[101] Valerie Steele, Fifty Years of Fashion: New Look to Now 41 (1997).
[102] Id. at 41-42.
[103] Id. at 75. Dimant also singles out Chanel as a forerunner of minimalism:
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.
[104] See, e.g., Diana Vreeland at the Costume Institute, Diana Vreeland, http://dianavreeland.com/page/posts/op/read/id/73 (last visited Aug. 16, 2012).
[105] Diane Cardwell, Waiting Hours to See the McQueen Exhibit, in a Line Not Unlike a Runaway, N.Y. Times, Aug. 8, 2011, at A14, available at http://www.nytimes.com/2011/08/08/nyregion/alexander-mcqueen-exhibition-at-metropolitan-museum-of-art-draws-thousands.html.
[106] Arnold, supra note 51, at 5-6 (“Curatorial study of fashion has produced numerous important exhibitions and the vast number of visitors who attend such displays testify to the widespread interest in fashion. Importantly, exhibitions provide an easily accessible connection between curators’ specialist knowledge, current academic ideas and the central core of fashion, the garments themselves, and the images that help to create our ideas of what fashion is.”).
[107] Reka C.V. Buckley and Stephen Gundle, Flash Trash: Gianni Versace and the Theory and Practice of Glamour, in Fashion Cultures: Theories, Explorations and Analysis 331, 339 (Stella Bruzzi & Pamela Church Gibson, eds., 2000) (“[Runway shows] evolved from restricted events aimed at the fashion press, buyers and selected clients into show business events which captured newspaper headlines, generated magazine coverage and therefore impacted on popular culture. In every aspect they were conceived and choreographed to attract attention.”).
[108] See Jess Cartner-Morley, Chanel goes underwater to unveil latest collection, The Guardian, Oct. 4, 2011, at 26, available at http://www.guardian.co.uk/fashion/2011/oct/04/chanel-lagerfeld-pearl-collection.
[109] David Velasco, Alexander McQueen: Savage Beauty, Artforum, May 2011, at 134.
[110] Dimant, supra note 99, at 81.
[111] See, e.g., Michael Bracewell, Yoko Ono, Frieze, Nov.11, 2003, available at http://www.frieze.com/issue/review/yoko_ono1.
[112] Luisa Zargani, Salvatore Ferragamo to Sponsor Da Vinci Exhibit, Women’s Wear Daily, Feb. 28, 2012, 11. Other designers, including Marc Jacobs for Louis Vuitton, have held shows in the Louvre’s courtyard.
[113] See Ann Binlot, It’s a Model Invasion! Inside Fashion Week’s Full-Blown Takeover of NYC’s Galleries and Museums, ArtInfo (Sept. 7, 2011), http://www.artinfo.com/news/story/38530/its-a-model-invasion-inside-fashion-weeks-full-blown-takeover-of-nycs-galleries-and-museums/ (quoting Chelsea Art Museum special events manager Melissa Netecke: “I know that many of the galleries-both commercial and nonprofit-host fashion events because fashion, as an art form, falls along the lines of their mission or interests.”).
[114] Allan Kaprow, The Artist as a Man of the World (1964), reprinted in Essays on the Blurring of Art and Life 46, 47 (Jeff Kelley ed., 1993).
[115] Warhol, supra note 1, at 92; see also Amy M. Adler, Against Moral Rights, 97 Cal. L. Rev. 263, 297-98 (2009) (pointing out that in the recent collaborations between contemporary artists and fashion designers, “[o]f course, Warhol’s spirit reigns over this merger of retail and art.”).
[116] In describing the constraints of commerciality, Yves Saint Laurent noted, “I am bursting with the desire to go much further and revolutionize everything. Then I think: it would be perfect for the Saint-Germain-des-Pr’s boutique at, say, $100…but at couture prices will they accept it?” Steele, supra note 101, at 65. But one could easily argue that with a fashion industry today so reliant on brand licensing for profits, designers of couture and runway designs have freedom to create without worrying about the saleability of their designs.
[117] Dimant, supra note 99, at 57 (describing the work of Claes Oldenburg who sold painted plaster reliefs (many of shoes and other types of clothing) at his Lower East Side outpost “The Store,” and was criticized at the time for blurring distinctions between art and commerce.)
[118] Id.
[119] Samantha Vettese Forster, Connections Between Modern and Postmodern Art and Fashion, 12 Design J. 217, 228 (2009) (“The ‘sellability’ of a Postmodern art work can now be a factor in its inclusion in the elected ‘art timeline’ – what will be recorded in history as ‘good art’ or an important movement. Some Postmodern artists now produce works with definite commercial considerations and gear their work to particular buyers and segmented sections of society, as with fashion, and dealers and galleries often use equivalent artifices to fashion marketing.”). See also Adler, supra note 115, at 297 & n.204 (noting that “young artists seem to embrace commercialism in a casual way that previous generations would have considered heresy” and “the increasing absurdity of trying to separate art from commerce”).
[120] See Adler, supra note 115, at 298 (“As art increasingly functions like other luxury commodities, this shift undermines the notion that art is distinct from other products.”).
[121] Damien Hirst & Gordon Burn, On the Way to Work 90 (2001). This is not a particularly contemporary practice but continues a long tradition of the use of found and mass-produced objects going back to the early 20th century Dadaists. Marcel Duchamp began the practice of elevating the found object to the status of art with his “ready-mades,” and minimalist artists such as Donald Judd, Carl Andre, Sol le Witt and others had their sculptures manufactured by factories, a process imitated by Warhol in his “Factory.” Dan Flavin’s work using store-bought light bulbs and florescent tubes, though minimalist, also associated him with the “found object” and “junk” tradition associated with Robert Rauschenberg, Jasper Johns, and Claes Oldenburg among others. See Dimant, supra note 99, at 57.
[122] I’ll Be Your Mirror: The Selected Andy Warhol Interviews 99 (Kenneth Goldsmith, ed. 2004).
[123] Buckley & Gundle, supra note 107, at 341.
[124] Dimant, supra note 99, at 61-62.
[125] Brief for Plaintiff-Appellee at 20, Cariou v. Prince, No. 11-1197 (2d Cir. Jan. 25, 2012).
[126] Forster, supra note 119, at 234.
[127] Adler, supra note 115, at 299. Professor Adler does qualify this potentially sweeping statement by noting:
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).
[128] See id. at 298-99 (“I believe that art has been (almost) successful in destroying the line separating art from everything else. In an ultimate act of iconoclasm, the great achievement of contemporary art, has been to destroy the category of art as we know it.”).
[129] See, e.g., Arnold, supra note 51, at 33-34:
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.
[130] Kristi Ellis, Copyrighting a Dress: Congress Mulling Bill to Protect Designers, Women’s Wear Daily, Apr. 26, 2007, at 13.
[131] See, supra Part II. See also Forster, supra note 119, at 239: Art and fashion may have crossed over through coincidence but most often, throughout the 20th century, it has been because of mutual aesthetic and ideological affinities. These affinities may be because of an underlying similarity between the artist and designer or because of an actual collaboration that has occurred. Artists can appropriate the stereotypically held notions of business success and glamour from fashion and fashion has often taken the sentiments of profundity and innovation believed of art. They have both benefited from the alliance in some way.
[132] See supra Part I.
[133] The Paris Act of the Berne Convention, Article 6bis defines moral rights as existing “[i]ndependently of the author’s economic rights” and protecting against certain acts that “would be prejudicial to [the author’s] honor or reputation.” S. Treaty Doc. No. 27, 99th Cong., 2d Sess. 37 (1986). There is also often said to be a general public interest in protecting moral rights of artists. See, e.g., Merryman, supra note 37, at 1029 (a work should be “protected and kept as it emerged from the imagination of its author and later conveyed to posterity without damage”) (quoting Millet, Tribunal de la Seine, May 20, 1911, Amm. I. 271).
[134] See, e.g.,, Linda J. Lacey, Of Bread and Roses and Copyrights, 1989 Duke L. J. 1532, 1542 (1989).
[135] Id.
[136] Id. See also California Art Preservation Act, Cal. Civ. Code § 987(a) (West 2012) (“the physical alteration or destruction of fine art, which is an expression of the artist’s personality, is detrimental to the artist’s reputation”).
[137] See Roberta Rosenthal Kwall, The Soul of Creativity: Forging a Moral Rights Law for the United States 5 (2010) [hereinafter Kwall, Soul of Creativity]:
[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)).
[138] Lacey, supra note 134, at 1537. See also Kwall, Soul of Creativity, supra note 137, at xiii (“The act of creative authorship implicates the honor, dignity, and artistic spirit of the author in a fundamentally personal way, embodying the author’s intrinsic dimension of creativity.”).
[139] VARA, 17 U.S.C. § 106A (2006).
[140] Id. § 106A (a)(1)(A).
[141] Id. § 106A (a)(3)(A).
[142] See, e.g., California Art Preservation Act, Cal. Civ. Code § 987 (West 2012); N.Y. Arts & Cult. Aff. Law § 14.03 (McKinney 2012).
[143] Roberta Rosenthal Kwall, Inspiration and Innovation: The Intrinsic Dimension of the Artistic Soul, 81 Notre Dame L. Rev. 1945, 1976 (2006) [hereinafter Kwall, Inspiration] (citing Immanuel Kant, The Philosophy of Law 64 (W. Hastie trans., T. & T. Clark 1887)).
[144] See Lacey, supra note 134, at 1542 (stating that artistic works are “part of an artist’s very identity”).
[145] 2008 Hearing, supra note 9, at 22.
[146] Id. Mr. Rodriguez likely did not see this work as having been “stolen” because its value to him was emotional and not economic and thus could not be stolen.
[147] The observation that many artists, authors, and other creators are motivated largely by non-economic sources and would continue to create without any economic incentive has formed the basis of most scholarship advocating the adoption of more expansive moral rights laws in the U.S. See Kwall, Inspiration, supra note 143; Kwall, Soul of Creativity, supra note 137; Lacey, supra note 134.
[148] Kwall, Soul of Creativity, supra note 137, at xiii.
[149] 2008 Hearing, supra note 9, at 54.
[150] 2006 Hearing, supra note 9, at 79 (statement of Susan Scafidi).
[151] See, e.g., Kwall, Soul of Creativity, supra note 137.
[152] 2006 Hearing, supra note 9, at 189.
[153] Another common argument advanced by proponents of increased protection is that the U.S. should attempt to conform to the design protection regimes of Europe in order to successfully compete in the global marketplace. See, e.g., 2006 Hearing, supra note 9, at 84 (statement of Susan Scafidi) (arguing that the French recognition of intellectual property rights in fashion design has “helped maintain the preeminence of the French fashion industry” also that the French see fashion as art). A detailed analysis of that argument is beyond the scope of this Note, but it is worth noting that many European design protections flow from Franco-German personality-based theories of intellectual property. See Kwall, Inspiration, supra note 143, at 1976.
[154] Many legal scholars have argued that natural law and personhood theories that are offered to justify moral rights laws should be incorporated into copyright law, but as it stands, most academics and courts continue to endorse the economic view. See, e.g., Kwall, Inspiration, supra note 143, at 1947 (“[T]he law can, and should, be shaped in response to all relevant forces motivating creativity, not just those concerned with economic reward.”).

Elite Knockoffs and Nascent Designers

By David H. Faux* A pdf version of this article may be downloaded here. I.    Introduction The current debate over increased protection for fashion design is largely focused on a dichotomy: whether additional protection is necessary or if it is actually counter-productive for the industry. This dichotomy is false. The proper contrast is between protection of authorship versus protection of reputation. In short, while elite design houses enjoy some tools for protecting their reputations, beginning designers need legislation that will enable them to enforce rights based on notions of authorship. Underlying this article is the assumption that fashion designs deserve copyright protection. Each design has a unique “character,” [FN1] and expresses a point of view. [FN2] Combine these original expressions with the fact that clothing is a tangible form, and it seems obvious that fashion designs are copyrightable material. II.    The Current Debate The current debate over design protection revolves around two main writings: the Design Piracy Prohibition Act (the “DPPA” or the “Act”) and “The Piracy Paradox: Innovation and Intellectual Property in Fashion Design.” While the detailed pros and cons of each document are beyond the scope of this article, it is important to give a brief overview of their positions and terms, since they define so much of the current debate. A. The DPPA The DPPA is currently in committee. If passed, it will give copyright protection to designs for three years after first made public. [FN3] This is long enough to conceive, develop, produce, market, and sell a design, perhaps with time left over for brief subsidiary licensing. [FN4] The Act also allows for substantial damages. Recovery for finally adjudicated infringement would amount to “$250,000 or $5 per copy,” giving fashion designers a significant prospect for the lawyer who accepts cases on contingency. [FN5] While each part of the DPPA has its share of controversy, probably the most universal concern is over the definitions of “fashion design” and “apparel.” “Fashion design” is defined as “the appearance as a whole of an article of apparel, including its ornamentation.” [FN6] “Apparel” is defined as “(A) an article of men’s, women’s, or children’s clothing, including undergarments, outerwear, gloves, footwear, and headgear; (B) handbags, purses, and tote bags; (C) belts; and (D) eyeglass frames.” [FN7] B. The Piracy Paradox “The Piracy Paradox” is a 2006 article essentially arguing that “free appropriation” in fashion does not stifle innovation, but “may actually promote innovation and benefit originators.” [FN8] This is accomplished through “induced obsolescence” and “anchoring.” “Induced obsolescence” is where “free appropriation speeds diffusion and induces more rapid obsolescence of fashion designs,” causing a need for more frequent innovation. [FN9] “Anchoring” refers to a process whereby rampant copying within a season helps to define that season’s trends. Consumers follow the trends until another innovation occurs. At this point, rampant copying takes place and a new trend is born. [FN10] Like the DPPA, “The Piracy Paradox” has been quite controversial.  In her article, “The Double-Edged Scissor: Legal Protection for Fashion Design,” Emily S. Day sets forth what have become the major critiques of the Piracy Paradox.[FN11] Namely, she states that Raustiala and Sprigman assume incorrectly that “all fashion designs are ‘status goods’ whose brand name is commonly recognized.” [FN12] Second, they also make the false assumption that “the designers themselves could not generate the same economic benefits through intellectual property protection and their own production of ‘copies’ through the use of lower-priced bridge lines.” [FN13] Third, they do not address the problems created when the counterfeits and knockoffs supposedly benefitting the economy are actually “counterfeits and knockoffs of clearly inferior quality.” [FN14] These critiques should be expanded to include another: proponents of the Piracy Paradox assume inferior quality knockoffs of elite-house designs to be qualitatively the same as the design theft by more established, “legitimate” corporations against beginning designers. The significance of this assumption is that if they are not qualitatively the same, then these different offenses likely require different responses. That is to say, elite design houses have established reputations and, thus, can fend for themselves under existing intellectual property law. They already have the resources (relative to what start-up houses have) to pursue those claims. Of course, established houses will not be precluded from the benefit of any legislation that bolsters protection for fashion design. In contrast, the beginning designers require more; they require protection not based exclusively on reputation. This implies a focus wherein fashion design protection should not rest on cheap knockoffs of established brands. Like in the DPPA, protection should address quality knockoffs of designs stolen from the anonymous hopefuls, the nascent designers. III.      Different Infringements A. The Policy Against Reputation Infringement The policy against knockoffs is predominantly trademark-based. Trademarks “foster competition and the maintenance of quality by securing to the producer the benefits of good reputation.” [FN15] They help “assure a producer that it (and not an imitating competitor) will reap the financial reputation-related rewards associated with a desirable product.”[FN16] At its most basic level, the significance of a positive commercial reputation is that it makes a market more efficient.[FN17] To wit, consumers need not take too much time shopping for, e.g., tissue paper if they know they will purchase decent quality from Kleenex®. Similarly, when an elite fashion house discovers inferior quality knockoffs of its brands, its main concern is about damage to its good will with the consumers. This reputation-based protection does not address situations where the design is stolen from one prior to establishing her reputation as a nascent designer. Of course, established designers still have whatever copyright, patent, or other laws at their disposals. And because they are established, they not only have reputations, but cash flows superior to nascent designers. In other words, these elite houses are already better situated within existing law to address the infringements that concern them the most. Probably one the most famous court cases of fashion infringement is fifteen years old and took place in France. In Société Yves Saint Laurent Couture S.A. v. Société Louis Dreyfus Retail Mgmt. S.A., Yves Saint Laurent successfully sued Ralph Lauren for infringement of its tuxedo dress. [FN18] But even in the States, the larger names are able to choose their moments to engage civil actions. For instance, Diane von Furstenberg, LP and Ann Sui Corp. have both sued Forever 21, Inc. for various replications of their designs. [FN19] B. The Policy Against Authorship Infringement A nascent designer, by definition, has no reputation. Therefore, the policy behind such protection must arise from a different perspective. The most common foundations for protecting copyrightable work are the “incentive theory” and “natural rights” theories. The “incentive theory,” which, while “the immediate effect . . . is to secure a fair return for an author’s creative labor,” has the ultimate aim of “by this incentive, to stimulate artistic creativity for the general public good.” [FN20] More explicitly, the purpose of copyright law, then, is not to reward the individual artist for her contribution, “not to reward the labor of authors, but ‘to promote the Progress of Science and useful arts.’” [FN21] As such, one significant component of copyright protection is that it lends itself to public benefit rather than market efficiency. The “natural rights” theories have the ultimate aim of fairness towards an originating innovator, in this case the artist. This notion of connecting copyright to an individual’s innovation upon nature comes from John Locke’s Two Treatises of Government[FN22] Specifically, it is rooted in the notion that when someone applies personal labor to a thing in nature, that thing becomes her property. [FN23] In this way, the Lockean component infuses copyright law with natural rights and fairness, rather than market efficiency. C. The Specific Problem of Authorship Infringement As stated above, the elite fashion houses have recourse against pirates by protecting their reputations through trademark litigation, making their situations remarkably different from the plight of nascent designers. Yet, this difference appears to have been lost on proponents of the Piracy Paradox: they only consider the elite designer’s perspective.  Indeed, proponents describe the fashion industry as “a school of fish moving first this way and then that, [wherein] fashion designers follow the lead of other designers in a process that, while bewildering at times, results in the emergence of particular themes.” [FN24] Specifically, though, these proponents state that piracy drives the elite fashion houses towards evermore innovation.[FN25] Supposedly, a trend only “trickles down” from the elite houses to the “less expensive retailers.” [FN26] This belief is flushed out by these proponents’ examples. They quote Miucci Prada as stating, “We let others copy us.  And when they do, we drop it.” [FN27] They point out that the Chanel label, though unable to stop other firms from copying its designs, is doing fine as a business. [FN28] Established houses, though, often find innovation among nascent designers. [FN29] It is these designers that need protection through additional legislation. Certainly such instances are well-documented. [FN30] For example, designer Narcisco Rodriguez designed a dress for Carolyn Kennedy that was famously copied before he could make copies of the original designs for himself. [FN31] Day also recounts the story of Ananas, a handbag label whose design by “a young wife and mother working from home, was knocked off. An identical design was offered at a lower price on the Internet. As a direct result, a buyer cancelled his wholesale order and an independent customer bought the cheaper counterfeit version online instead.” [FN32] Clearly, the elite houses and nascent designers have different concerns. IV.    Different Reactions Without increased protection for nascent designers, protection will be available only to those who can prove they have purposefully built reputations: trademark holders with the resources available to support a civil suit. This means only established houses currently enjoy protection, at times to the exclusion of their younger competitors. By allowing the established houses the advantages of “free appropriation” while allowing them to defend claims based on reputation, the current law prioritizes an efficient economy over innovation and fairness. Not only does this stunt industry advancements, but it also leads to a facile monopoly. The general consensus states that monopolies, while efficient, [FN33] are outweighed by their imperfections. [FN34] For example, certain industries such as oil, steel, and the railroads, can be best run by monopoly due to the limited nature of the involved resources. Even President Theodore Roosevelt—the grand trust-buster himself—had distinguished between “bad trusts, which gouged consumers, and good trusts, which offered fair prices and good service.” [FN35] Nevertheless, the United States specifically chose a sense of fair competition over efficiency through the Sherman and Clayton Acts, even in the face of finite resources. [FN36] With an industry like fashion design, where the main resource—creativity—is unbounded, it makes even less sense to allow a monopoly, actual or facile. Efficiency aside, a worse economy results when established houses hoard innovation, allowing their influences to trickle down upon the anonymous designers from whom they may have stolen these copyrightable expressions in the first place. Others argue that increased protection via legislation like the DPPA will not have any positive effect on the fashion industry. For example, some say that where better protection exists, such as in the European Union, the fashion designers do not use it. [FN37] One scholar goes further to state that “there is no indication that such protections successfully hinder design piracy.” [FN38]However, any copyright lawyer can relay story after anecdote about clients learning the hard lesson that having rights and enforcing them are two entirely different animals. [FN39] [FN40] If frequency of use were a criterion for enacting a law, the entire Copyright Act would be jeopardized. V.    Conclusion Ideally, there would be easier ways to protect fashion designs from piracy. For example, the Copyright Office could have a registry of fashion designs with imagery and a similar keyword/search structure to that used by the Trademark and Patent Office. Perhaps we could determine the exact statutory rewards that would perfectly balance against the risks and upfront costs of litigation. Maybe the correct minimum statutory damages awarded would maintain a low number of weak actions, while allowing the maximum number of bona fide disputes. Whatever the solution, it must involve better access to the courts for nascent designers. In that way, the DPPA is a step in the right direction. Placing increased protection for designs in the realm of copyright opens recourse to those with little to no assets in terms of reputation or finance. Adjusting the typical $150,000 of statutory damages per infringement to $250,000 or $5 per copy may balance the rewards and risks of litigation enough to bring forward bona fide disputes. Thus, both “inferior” and “elite” pirates will be on notice that there is more to success in a good economy than having and using an innovative piece of intellectual property—that property must also be owned by them through authorship or a proper license. *** *David  H. Faux practices Intellectual Property, Entertainment, Art, and Business/Commercial Law.  His past and present clients include individuals and organizations involved in the fashion, sports & fitness, fine arts, photography, and graphic design industries.  In addition to his private practice, he serves as Director of Business Affairs at the Dramatists Guild of America, Inc. Prior to becoming an attorney, Dave spent several years as a music journalist and, then, a publicist in the Northwest. He holds both a Master of Science and Master of Arts degree. He also spent a year in South Korea as a Fulbright Scholar.  He is the co-chair of the Fashion Law Committee for the New York State Bar Association’s Entertainment, Arts, and Sports Law Committee. [FN1] See Shelley C. Sacker, Art Is In the Eye of the Beholder: A Recommendation for Tailoring Design Piracy Legislation to Protect Fashion Design and the Public Domain, 35 AIPLA Q.J. 473, 474 (2007) (confirming that it is “well understood that the chief value of  a ‘quality’ of dress lies not so much in the quality of the materials as in the smartness and originality of design”). [FN2] MARY GEHLHAR, THE FASHION DESIGNER SURVIVAL GUIDE, 60, Kaplan Publishing (2008), (instructing that a “designer needs a signature point of view to differentiate his line from others and make it special”). [FN3] H.R. 2196, 111th Cong. § 2(d) (2009). [FN4] GEHLHAR, at 36 (stating that a designer should, in October of 2008, “[b]egin designing and ordering fabrics for Fall 2009”); Labels for Less, N.Y. POST, Sept. 2, 2006, at 10 (suggesting designers require eighteen to twenty-four months to express their ideas in sketches and move them to final manufacture). [FN5] H.R. 2196, at § 2(g). [FN6] Id., at § 2(a). [FN7] Id. [FN8] Kal Raustiala & Christopher Sprigman, The Piracy Paradox: Innovation and Intellectual Property in Fashion Design, 92 Va. L. Rev. 1687, 1691 (2006). [FN9] Id., at 1722. [FN10] Id., at 1729. [FN11] Emily S. Day, Double-Edged Scissor: Legal Protection for Fashion Design, 86 N.C.L. Rev. 237 (2007). [FN12] Id., at 260. [FN13] Id. [FN14] Id. [FN15] Park ‘N Fly, Inc. v. Dollar Park and Fly, Inc., 469 U.S. 189, 198 (1985). [FN16] Qualitex Co. v. Jacobson Products Co., Inc., 514 U.S. 159, 164 (1995). [FN17] William M. Landes & Richard A. Posner, Trademark Law: An Economic Perspective, 30 J.L. ECON. 265, 275 (1987). [FN18] Société Yves Saint Laurent Couture S.A. v. Société Louis Dreyfus Retail Mgmt. S.A., [1994] E.C.C. 512, 514 (Trib. Comm.) (Paris). [FN19] Complaint of Plaintiff, Diane von Furstenberg v. Forever 21, No. 07-CV-2413 (SDNY Mar. 23, 2007); Anna Sui v. Forever 21, 2009 U.S. Dist. LEXIS 33044 (SDNY 2009). [FN20] Twentieth Century Music Corp. v. Aiken, 422 U.S. 151, 156 (1975). [FN21] Feist Publications, Inc. v. Rural Telephone Service Co., 499 U.S. 340, 349 (1991) (quoting U.S. Const. art. 1, § 8, cl. 8). [FN22] Nimmer, on Copyright, §2.02 The Subject Matter of Common Law Copyright. [FN23] JOHN LOCKE, TWO TREATISES OF GOVERNMENT (1690), Chapter V. (Of Property), §27, stating, “Whatsoever then he removes out of the state that nature hath provided and left it in, he hath mixed his labour with, and joined to it something that is his own, and thereby makes it his property.” [FN24] Raustiala & Sprigman, at 1721. [FN25] Anya Jenkins Ferris, Real Art Calls for Real Legislation: An Argument Against Adoption of the Design Piracy Prohibition Act, 26 CARDOZO ARTS & ENT. L.J. 559, 579 (2008); Trademark Law: An Economic Perspective, 30 J.L. ECON. 265, 275 (1987) (asserting that “the fashion industry overall continues to profit and to produce new original lines of apparel”) (emphasis added). [FN26] Laura C. Marshall, Catwalk Copycats: Why Congress Should Adopt a Modified Version of the Design Piracy Prohibition Act, 14 J. INTELL. PROP. L. 305, 313 (2007). [FN27] Raustiala & Sprigman, at 1722 (quoting “The Look of Prada,” IN STYLE MAGAZINE, Sept 2003 at 213). [FN28] Raustiala & Sprigman, at 1723. [FN29] Susan Scafidi, Design Piracy Prohibition Act: Historical Regression, http://www.counterfeitchic.com/2008/03/design_piracy_prohibtion_act_h.php (affirming, “Some big companies have grown wealthy by copying small-scale creative designers, and they don’t particularly want to stop”). [FN30] See Marshall at 306 (stating that “designers at all levels of renown have seen their designs replicated by large companies before the originals even make it onto the retail market” (emphasis added). [FN31] Rosemary Feitelberg, “Schumer Tours Plan to Fight Design Theft,” WOMEN’S WEAR DAILY, Aug. 9 2007, at 12. [FN32] Day, at 2; Marshall, at 313. [FN33] See Mark Cooper, Ph.D., Perspectives on Antitrust Law: Anti trust as Consumer Protection in the New Economy: Lessons from the Microsoft Case, 52 Hastings L.J. 813, 822 (2001) (discussing the theory that monopoly “does not lead inevitably to a bad economic outcome for society.  Sometimes an industry develops in such a way that monopoly is not only a likely outcome but a desirable one”); F.M. SCHERER & DAVID ROSS, INDUSTRIAL MARKET STRUCTURE AND ECONOMIC PERFORMANCE, 4, Chicago, Rand McNally (1990) (arguing that “firms need protection from competition before they will bear the risks and costs of invention and innovation, and a monopoly affords an ideal platform for shooting at the rapidly and jerkily moving targets of new technology”). [FN34] See Sidney A. Shapiro and Joseph Tomain, Realizing the Promise of Electricity Deregulation: Article: Rethinking Reform of Electricity Markets, 40 Wake Forest L.Rev. 497, 507-08 (2005) (discussing the problems of utility monopolies as requiring government intervention despite their benefits). [FN35] RON CHERNOW, TITAN: THE LIFE OF JOHN D. ROCKEFELLER, SR. 433 (Vintage Books 1999) (1998); see BRUCE BRINGHURST, ANTITRUST AND THE OIL MONOPOLY: THE STANDARD OIL CASES, 1890-1911 121 (Greenwood Press 1979). [FN36] SHERMAN ACT § 1 et seq. (1890); CLAYTON ACT § 1 ET SEQ. (1914). [FN37] Day at 12-13; Raustiala & Sprigman, at 1740. [FN38] Sacker, at 480. [FN39] E.g., Kimball Tyson, The Illegal Art Exhibit: Art of Exploitation? A Look at the Fair Use Doctrine in Relation to Corporate Degenerate Art, 9 Comp. L. Rev. & Tech. J. 425, 453 (2009) (describing how even corporate lawyers “agree that lawsuits against” potential infringers are rare); Emily Cunningham, Protecting Cuisine Under the Rubric of Intellectual Property Law: Should the Law Play a Bigger Role in the Kitchen?, 9 J. High Tech. L. 21, 41 (2009) (characterizing as rare suits among authors of cookbooks even “in instances in which professional cooks publish recipes that are blatant copies”). [FN40] Julie P. Tsai, Fashioning Protection: A Note on the Protection of Fashion Designs in the United States, 9 LEWIS & CLARK L. REV. 447, 449 (2005).