Posted by Christina Ilinkovski
The United States District Court in the Southern District of New York recently handed down its decision that denied famous fashion shoe designer, Christian Louboutin S.A., Christian Louboutin, L.L.C. and Christian Louboutin's (together Louboutin) motion for a preliminary injunction against the fashion house Yves Saint Laurent (YSL).
In 2008, Louboutin obtained registration of a lacquered red sole as a trade mark in relation to 'women's high fashion designer footwear' in the United States (Red Sole Mark). Louboutin accused YSL of marketing and selling shoe models in YSL's Cruise 2011 collection that used 'the same or a confusingly similar shade of red as that protected by the Red Sole Mark'. Specifically, Louboutin took issue over four shoe designs that featured in the collection: the Tribute, Tribtoo, Palais and Woodstock models, which all had red soles similar to Louboutin's Red Sole Mark.
As YSL refused to withdraw the challenged models from the market, Louboutin commenced proceedings claiming trade mark infringement, counterfeiting, trade mark dilution and unfair competition. YSL filed a counter-claim seeking cancellation of the Red Sole Mark on grounds that it is not distinctive and that it is merely ornamental or functional.
At the outset, Judge Victor Marrero recognised that Louboutin diverted from industry custom when he came up with the idea in around 1992 to colour the outsoles of his high fashion women's shoes in a glossy red nail lacquer. Louboutin himself stated that he chose the colour red because he regarded it as 'engaging, flirtatious, memorable and the colour of passion'. Judge Victor Marrero further acknowledged that Louboutin's shoes have become so famous worldwide that the fashion savvy can immediately identify a pair of shoes as the Louboutin brand simply from the red outsole. He described it as 'a product visually so eccentric and striking that it is easily perceived and remembered'.
The dispute between the two fashion leaders centred on whether Louboutin should be granted the exclusive right to red soles on shoes. Under US law, to succeed on a claim of trade mark infringement, Louboutin must establish that (1) its Red Sole Mark merits protection and (2) YSL's use of the same or a sufficiently similar mark was likely to cause consumer confusion as to the origin or sponsorship of YSL's shoes.
Judge Victor Marrero noted that colour alone may sometimes be capable of trade mark protection where 'it acts as a symbol that distinguishes a firm's goods and identifies their source, without serving any other significant function'. Where colour is used in a 'functional' sense, meaning it is essential for the use or purpose of the product or where it affects the cost or quality of the product, it is not protectable. Specifically, in the American fashion industry, the use of colour in a trade mark has only been upheld where it resides in distinct patterns or combinations of shades so as to manifest a conscious effort to portray a uniquely identifiable mark embedded in the fashion item (e.g. the widely recognised Louis Vuitton monogram using 33 bright colours, or the Burberry check pattern).
In discussing the role that colour plays in the fashion industry, his Honour discussed the uncertainties created in the fashion industry by the registration of a trade mark for a single colour, particularly as 'in fashion markets colour serves not solely to identify sponsorship or source, but is used in designs primarily to advance expressive, ornamental and aesthetic purposes'. In that respect, he stated that colour performs a creative function, including 'to attract', 'to beautify' and 'to stand out', which are non-trade mark functions. As a result, relying on the 'functionality doctrine', the Court stated that the granting of a trade mark for a product's features (such as colour) should be prohibited where competitors will be placed at a significant disadvantage, because the feature is essential to the use or purpose of the item or affects its cost or quality.
YSL argued that a fashion brand should not be granted a monopoly over a single colour as it would stifle competition and diminish the ability to be creative with designs.
Judge Victor Marrero expressed his view that the Red Sole Mark, without any limitation, was too broad and that awarding one participant in the designer shoe market a monopoly on the colour red would impermissibly hinder competition. He concluded 'because in the fashion industry colour serves ornamental and aesthetic functions vital to robust competition, the Court finds that Louboutin is unlikely to be able to prove that its red outsole brand is entitled to trade mark protection, even if it has gained enough public recognition in the market to have acquired secondary meaning'. The Court therefore concluded that Louboutin failed to demonstrate a sufficient likelihood that its Red Sole Mark merits protection.
The decision has important implications for the fashion industry as a whole. In a narrow sense, YSL and other designers can continue to produce red soled shoes, or soles of any colour for that matter. However, the decision suggests that in the United States at least, fashion designers will struggle to attain registration of single colour trade marks in relation to fashion items.
Under Australian law, similar issues have been raised in cases concerning colour trade marks. While Australian Courts have not refused the possibility of trade mark registrations for a colour, there is also a strong emphasis on the applicant having to demonstrate how that colour is used to identify or distinguish a particular brand. However, the Courts appear to be more readily in favour of trade mark applications for colour combinations.
Partner: Charles Alexander
27 October 2011
18 October 2011
Attorney General announces ALRC inquiry into copyright
Posted by Nicholas Stewart
In his keynote address to the 15th Biennial Copyright Symposium, the Attorney General, the Hon. Robert McClelland MP, announced the intended focus of the terms of reference he intends to provide to the Australian Law Reform Commission (ALRC) in respect of an ALRC inquiry into copyright.
Mr McClelland said:
Mr McClelland said his department is consulting with the ALRC and intends to release the proposed terms for comment before the end of the year.
The issue of fair dealing has long been a matter for debate and was the subject of a 1998 review by the Copyright Law Review Committee which recommended a move to a more flexible system while retaining the current exceptions. However, the proposal never gained enough traction to result in legislative change. Technological changes since then have underlined the need to revisit this area again and the announcement of the review is to be welcomed.
Partner: Charles Alexander
In his keynote address to the 15th Biennial Copyright Symposium, the Attorney General, the Hon. Robert McClelland MP, announced the intended focus of the terms of reference he intends to provide to the Australian Law Reform Commission (ALRC) in respect of an ALRC inquiry into copyright.
Mr McClelland said:
The inquiry will seek a review of whether the exceptions in the Copyright Act are adequate and appropriate in the digital environment. Currently the Copyright Act has general exceptions to the rules regarding infringement of copyright. These include: fair dealing, the 10 per cent rule and private copying when format-shifting, time-shifting or for special purposes.There are also specific exceptions such as allowing the making of a copy of a computer program resulting from the process of normal use of the program or for back-up purposes. However, in a fast changing, technologically driven world it is vital for us to see whether [the] existing statute is appropriate and whether it can be improved.
Mr McClelland said his department is consulting with the ALRC and intends to release the proposed terms for comment before the end of the year.
The issue of fair dealing has long been a matter for debate and was the subject of a 1998 review by the Copyright Law Review Committee which recommended a move to a more flexible system while retaining the current exceptions. However, the proposal never gained enough traction to result in legislative change. Technological changes since then have underlined the need to revisit this area again and the announcement of the review is to be welcomed.
Partner: Charles Alexander
Broader scope for the copyright safe harbour scheme
Posted by Nicholas Stewart
On 12 October 2011 the Hon. Robert McClelland MP, Commonwealth Attorney General, launched a public consultation paper proposing amendments to Part V Division 2AA of the Copyright Act 1968 (Cth)to extend the application of the safe harbour scheme to include entities providing network access and online services. Mr McClelland announced the proposal at the biennial Copyright Law & Practice Symposium.
The proposed changes
The Attorney General proposes to broaden the scope of the safe harbour scheme in the Copyright Act to cover service providers such as educational institutions, workplaces, or online services such as search engines.
The term 'carriage service provider', originally defined in the Telecommunications Act 1997 (Cth) and adopted in the Copyright Act, would be replaced with the term 'service provider' which has been defined for consultation purposes as:
A brief history of the safe harbour scheme
The safe harbour scheme came about in 2006 in response to the Australia-United States Free Trade Agreement. The Copyright Actwas amended to offer legal incentives for Carriage Service Providers (CSPs) to cooperate with copyright owners in deterring copyright infringement on their networks. The safe harbour scheme effectively limits the remedies available against CSPs for copyright infringements that take place on their networks that they do not control, initiate or direct.
Defined in the Telecommunications Act 1997 (Cth), a CSP is required to operate primarily as a provider of network access to the public. The definition was adopted in the Copyright Act but its application is limited considering the pace of technological change.
Under the Copyright Act a CSP must satisfy certain conditions to take advantage of the limited remedies available against it for copyright infringement. The limitations are automatic if a carriage service provider complies with the relevant conditions.
Digital industry calls for change
The Consultation Paper highlights the fact that many organisations provide internet access to customers, students and other users, but not to 'the public'. These organisations cannot benefit from the safe harbour scheme as it currently stands.
Online search engines such as Google and Bing are also excluded from the current definition of a CSP because they do not provide 'network access'. The Consultation Paper points out that search engines face similar problems to CSPs in that they cannot control the actions of their users. As a consequence, they face legal risks under the Copyright Act when copyright is infringed through their services.
The Consultation Paper also states that the Australian definition of a CSP 'gives the Australian scheme a more restricted scope than equivalent safe harbour schemes in the United States, Singapore and Korea'. For example, United States courts have held the term 'service provider' to mean an ISP acting as a conduit for peer-to-peer file sharing programs, organisations providing instant messaging services, ISPs who provide their subscribers with news groups and online vendors.
Many organisations have lobbied the Australian Government for change. For example, the Yahoo! Group Australia & New Zealand's submission on the Digital Economy Future Directions Paper can be seen here. Google's submission on the same paper can be found here.
Call for submissions
Written submissions on the proposed definition must be sent by 22 November 2011 to the Business Law Branch, Attorney General's Department, 3-5 National Circuit, Barton ACT 2600.
Partner: Charles Alexander
On 12 October 2011 the Hon. Robert McClelland MP, Commonwealth Attorney General, launched a public consultation paper proposing amendments to Part V Division 2AA of the Copyright Act 1968 (Cth)to extend the application of the safe harbour scheme to include entities providing network access and online services. Mr McClelland announced the proposal at the biennial Copyright Law & Practice Symposium.
The proposed changes
The Attorney General proposes to broaden the scope of the safe harbour scheme in the Copyright Act to cover service providers such as educational institutions, workplaces, or online services such as search engines.
The term 'carriage service provider', originally defined in the Telecommunications Act 1997 (Cth) and adopted in the Copyright Act, would be replaced with the term 'service provider' which has been defined for consultation purposes as:
A person who provides services relating to, or provides connections for, the transmission or routing of data; or operates facilities for, online services or network access, but does not include such person or class of persons as the Minister may prescribe in the Regulations.While the proposed definition is different to the two-tiered definition of 'service provider' under the Australia-United States Free Trade Agreement, the Attorney-General noted that the new term would be consistent with the Australia-United States Free Trade Agreement and comparable international approaches.
A brief history of the safe harbour scheme
The safe harbour scheme came about in 2006 in response to the Australia-United States Free Trade Agreement. The Copyright Actwas amended to offer legal incentives for Carriage Service Providers (CSPs) to cooperate with copyright owners in deterring copyright infringement on their networks. The safe harbour scheme effectively limits the remedies available against CSPs for copyright infringements that take place on their networks that they do not control, initiate or direct.
Defined in the Telecommunications Act 1997 (Cth), a CSP is required to operate primarily as a provider of network access to the public. The definition was adopted in the Copyright Act but its application is limited considering the pace of technological change.
Under the Copyright Act a CSP must satisfy certain conditions to take advantage of the limited remedies available against it for copyright infringement. The limitations are automatic if a carriage service provider complies with the relevant conditions.
Digital industry calls for change
The Consultation Paper highlights the fact that many organisations provide internet access to customers, students and other users, but not to 'the public'. These organisations cannot benefit from the safe harbour scheme as it currently stands.
Online search engines such as Google and Bing are also excluded from the current definition of a CSP because they do not provide 'network access'. The Consultation Paper points out that search engines face similar problems to CSPs in that they cannot control the actions of their users. As a consequence, they face legal risks under the Copyright Act when copyright is infringed through their services.
The Consultation Paper also states that the Australian definition of a CSP 'gives the Australian scheme a more restricted scope than equivalent safe harbour schemes in the United States, Singapore and Korea'. For example, United States courts have held the term 'service provider' to mean an ISP acting as a conduit for peer-to-peer file sharing programs, organisations providing instant messaging services, ISPs who provide their subscribers with news groups and online vendors.
Many organisations have lobbied the Australian Government for change. For example, the Yahoo! Group Australia & New Zealand's submission on the Digital Economy Future Directions Paper can be seen here. Google's submission on the same paper can be found here.
Call for submissions
Written submissions on the proposed definition must be sent by 22 November 2011 to the Business Law Branch, Attorney General's Department, 3-5 National Circuit, Barton ACT 2600.
Partner: Charles Alexander
11 October 2011
Apple, ‘app store’ and trade mark infringement
 |
| Photograph by Cristiano Betta |
The U.S. District Court recently refused Apple's application for a preliminary injunction to stop Amazon from using the word 'appstore' in relation to its online portal through which consumers can purchase mobile applications (called the 'Amazon Appstore'). The application was part of the trade mark proceedings filed by Apple in March this year against Amazon.
In light of this, it is timely to reflect on the American decision and consider how it could play out in the Australian context.
Subscribe to:
Posts (Atom)