Seeing Red: The Reemergence of Aesthetic Functionality

Although some will see new threats to trademark owners and the licensing industry and others will see new opportunities, trademark owners using creative designs will surely take notice of two decisions this summer: Fleischer Studios Inc. v. A.V.E.L.A. Inc., 97 USPQ2d 1833 (9th Cir. 2011) and Christian Louboutin SA v Yves Saint Laurent America, Inc., 11-cv-02381-VM 2011 WL 3505350 (S.D.N.Y. Aug. 10, 2011). The Aug. 19 decision in Fleischer modified an earlier decision, Fleischer Studios Inc. v. A.V.E.L.A Inc., 636 F.3d 1115 (9th Cir. 2010), which had found the unauthorized use of images of the Betty Boop character aesthetically functional, and hence not capable of infringing plaintiff's claimed trademark rights in the character. The withdrawal of the court's earlier opinion makes it difficult to assess the lasting significance of either decision to the uneven jurisprudence on aesthetic functionality. However, in Louboutin the district court held that the red sole of plaintiff's designer shoes, which the court repeatedly acknowledged was highly distinctive and widely recognized, was nonetheless unprotectable under the same oft-criticized theory. Although the district court ruling denying a preliminary injunction has already been appealed, pending further word from the Second Circuit, the court's reasoning echoes some of the questions so recently highlighted by Fleischer.