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<p class="metadata"> <span class="article-type"> Opinion </span> <span
class="divider">|</span> <span class="date"> September 15, 2012</span>
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<h1 class="title"> Can a Company Trademark the Colors On Its
Website? </h1>
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<p>Earlier this month, a federal appeals court <a
href="http://www.ca2.uscourts.gov/decisions/isysquery/b9e3c53f-643d-48b5-bd00-ef7bcb9ae9f2/1/doc/11-3303_opn.pdf">ruled</a>
[PDF] that the contrasting red soles on shoes from designer
Christian Louboutin are sufficiently distinctive to warrant
trademark protection. The ruling adds an important chapter to
the history of color trademarks, and has broad implications
that go well beyond the fashion industry. To what extent, for
example, might colors on web sites be eligible for trademark
protection?</p>
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<p>A trademark is “a word, phrase, symbol, and/or design that
identifies and distinguishes the source of the goods of one
party from those of others.” Examples of famous trademarks
include the Nike swoosh symbol, the McDonald’s Golden Arches,
and the phrase “Intel Inside.” In the landmark 1995 <em>Qualitex</em> ruling
involving the color of dry cleaning equipment, the Supreme
Court <a
href="http://supreme.justia.com/cases/federal/us/514/159/case.html">held</a>
that U.S. trademark law as established under the 1940s-era
Lanham Act “permits the registration of a trademark that
consists, purely and simply, of a color.” Color alone, wrote the
Court, can at least sometimes “meet the basic legal requirements
for use as a trademark. It can act as a symbol that
distinguishes a firm’s goods and identifies their source,
without serving any other significant function.”</p>
<p>Mr. Louboutin started coloring shoe outsoles in the early
1990s, choosing red because he considered it “<a
href="http://www.leagle.com/xmlResult.aspx?xmldoc=In%20FDCO%2020110810000T.xml">engaging,
flirtatious, memorable and the color of passion</a>.” Over the
subsequent years, the red soles became a widely recognized
identifier of the Louboutin brand. “When it comes to women’s
shoes made for style rather than walking,” Reuters <a
href="http://uk.reuters.com/article/2007/09/05/life-shoes-luxury-dc-idUKN0522082920070905">wrote</a>
in 2007, “Christian Louboutin footwear with their distinctive
red soles lead the pack, according to a survey of wealthy
American consumers.”</p>
<p>In 2008, the U.S. Patent and Trademark Office granted Louboutin
a <a
href="http://iplegalfreebies.files.wordpress.com/2012/07/louboutin-uspto-reg-no-3361597.pdf">trademark</a>
[PDF] for a “lacquered red sole on footwear,” and in 2011, when
the company learned that Yves Saint Laurent was selling shoes
with both a red sole and a monochrome red “upper,” it filed a
trademark infringement claim in a New York federal district
court. After the court refused to grant an injunction against
Yves Saint Laurent, Louboutin appealed.</p>
<p>In a September 5 ruling that both Louboutin and Yves Saint
Laurent <a
href="http://abcnews.go.com/Business/louboutin-entitled-protect-signature-red-sole-court-rules/story?id=17163269">described</a>
as a victory, the United States Court of Appeals for the Second
Circuit <a
href="http://www.ca2.uscourts.gov/decisions/isysquery/b9e3c53f-643d-48b5-bd00-ef7bcb9ae9f2/1/doc/11-3303_opn.pdf">held</a>
[PDF] that Louboutin’s lacquered red outsole is “a distinctive
symbol that qualifies for trademark protection,” but only when
contrasted with a different color used for the other visible
portions of the shoe. In other words, Yves Saint Laurent’s
monochrome red shoes walk free, and Louboutin’s trademark
survives, though with a narrower scope.</p>
<p>What does this mean for the ability to trademark colors on web
sites? Consider the thick, red, horizontal stripe at the top of
<a href="http://www.cnn.com/">CNN’s web site</a>. 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.</p>
<p>But does it establish trademark rights? The answer turns, among
other things, on whether the stripe’s color and placement are
distinctive (most likely, yes), whether its use by competitors
would create customer confusion (quite possibly), and whether it
steers clear of being functional (maybe).</p>
<p>A product feature cannot serve as a trademark “<a
href="http://supreme.justia.com/cases/federal/us/532/23/case.html">if
it is essential to the use or purpose of the article or if it
affects the cost or quality of the article</a>.” This
functionality doctrine is intended to avoid granting trademarks
that would give a single company control over a useful feature,
and thus impede competition. Under some circumstances color can
have an important functional role – for instance, if it is used
to identify the <a
href="http://supreme.justia.com/cases/federal/us/456/844/case.html">type
of medication</a> contained in a gelatin capsule. Preventing a
generic drug maker from choosing the same capsule color as the
brand name manufacturer could create confusion for both
pharmacists and patients.</p>
<p>More subtly and controversially, some courts – including the
Second Circuit that issued the Louboutin ruling – have viewed
product features that are “aesthetically functional” as
ineligible for trademark protection. Even a feature that is not
functional in the traditional sense can be aesthetically
functional if allowing it to be trademarked “<a
href="http://www.ca2.uscourts.gov/decisions/isysquery/b9e3c53f-643d-48b5-bd00-ef7bcb9ae9f2/1/doc/11-3303_opn.pdf"><em>significantly</em>
undermines competitors’ ability to compete in the relevant
market</a>” [PDF].</p>
<p>It could be argued that CNN’s red stripe is not functional in
either the traditional utilitarian sense or aesthetically. After
all, a competing news site barred from using it could choose to
use a green stripe, or no stripe at all. But there is also a
case to be made in favor of functionality: Unlike the sole of a
shoe, which has a function tied to its non-color attributes,
color in a web site can help visitors navigate the site.</p>
<p>Another issue is the limited number of basic colors to choose
from when designing a web site, and the limited number of basic
shapes they can be used to fill. What would happen if there were
no more colors left to trademark? In the 1995 <em>Qualitex</em>
<a
href="http://supreme.justia.com/cases/federal/us/514/159/case.html">ruling</a>,
the Supreme Court considered and rejected depletion as an
argument against granting trademark protection for colors. At
some point, the Court reasoned, color choices become functional
and thus ineligible for protection. And, the Court wrote, when
“a color serves as a mark, normally alternative colors will
likely be available for similar use by others.”</p>
<p>That may have been true for <a
href="http://supreme.justia.com/cases/federal/us/514/159/case.html">dry
cleaning equipment</a> manufacturers in 1995, and for makers
of <a
href="http://law.justia.com/cases/federal/appellate-courts/F2/774/1116/10307/">fiberglass
insulation</a> in 1985 and <a
href="http://law.justia.com/cases/federal/appellate-courts/F3/35/1527/605173/">outboard
motor</a> companies in 1994. But is it well matched to an era
when almost every company has a web site, and in some
industries, such as online news, or, for that matter, high end
shoes and <a
href="http://blogs.findlaw.com/second_circuit/2011/10/tiffany-files-amicus-brief-in-louboutin-ysl-trademark-dispute.html">jewelry</a>,
there can be dozens or hundreds of competing companies? In this
context, the assumptions of the <em>Qualitex</em> Court
regarding depletion may warrant reexamination.</p>
<p>Lynne Beresford, who served as Commissioner for Trademarks at
the U.S. Patent and Trademark Office from 2005 to 2010, thinks
that the use of color on web sites might, under some
circumstances, be eligible for trademark protection. However,
she notes, she has “not seen any successful trademark
applications for color-only marks where the company hasn’t made
a significant effort to alert the public about the trademark.”
In other words, merely using a distinctive green border on a web
site almost certainly wouldn’t be sufficient to obtain
registration.</p>
<p>A closely related additional issue concerns copyright. William
& Mary law professor <a
href="http://law2.wm.edu/faculty/bios/fulltime/heymann-920.php?svr=law">Laura
Heymann</a> has <a
href="http://papers.ssrn.com/sol3/papers.cfm?abstract_id=956217">written</a>
that the line between trademark and copyright is “considerably
blurrier” than at the other intellectual property law
interfaces. She also observes that the importance of overlapping
rights – i.e., the possibility that a piece of creative content
could have both copyright and trademark protection, is often
underappreciated.</p>
<p>Web sites and other online content (such as virtual worlds)
will test the overlap between trademark and copyright in new and
complex ways. The design of a company’s web site, including the
layout, colors, choice of fonts, and navigation among pages, is
protected by copyright. The company’s name and logo on that
website are protected by trademark. The extent to which the use
of color on the site can also fall within the scope of trademark
protection is an issue likely to end up before the courts in the
coming years.</p>
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