Dahlgard is the winner of last week's Miami Law Facebook Legal Challenge, which posed a question that pitted the fashion houses of Christian Louboutin and YSL over the signature red soles of Louboutin. "Writing about how trademark law applies to shoes saved me some wear and tear on my own shoes," said Dahlgard. "I won a great parking spot!"
Dahlgard grew up in Miami but worked as an engineer and designer in San Francisco before returning for law school. She plans on practicing intellectual property law and doesn't own a pair of the fashionable footwear.
This week's challenge concerns the sad case surrounding the suicide of Rutgers University freshman Tyler Clementi. His former roommate, Dharun Ravi, 20, is being tried in New Brunswick, N.J., on multiple counts of bias intimidation as a hate crime, invasion of privacy and hindering apprehension. Prosecutors say that Ravi spied on Clementi and another man in their dorm room using a remote web camera. The encounter became public on the Internet, and an evidently distraught Clementi later jumped off the George Washington Bridge.
For Miami Law's legal sleuths, the question this week is whether Ravi showed intentional bias intimidation when he surreptitiously videotaped the intimate encounter. Professor Mary Anne Franks will judge the arguments posted on the law school's Facebook page.
The challenge posts every Monday at 9 a.m. during the semester and closes at 5 p.m. on Fridays. Law professors in the field of query will judge winners. In the case of similar correct answers, the first poster will be deemed the victor.
First prize is a coveted parking space in the exclusive lot adjoining the School of Law on the Wednesday of the following week. Second and third prizes are the joy of a hand well played.
Be sure to LIKE Miami Law's Facebook page and may the best barrister win.
Here is last week's posting from Julie Dahlgard: "While the Louboutin sole is distinctive in modern culture to anyone watching 'Keeping Up with rhe Kardashians,' color is an inherent and important principle of fashion design. For trademarks in fashion, the functionality question should be: Is there an additional benefit beyond the expression of a trademark gained in using the claimed mark on clothing and fashion? If yes, that benefit should be deemed aesthetically functionality, and the mark will be unprotectable.
Color is a principle of design that all designers use. Color defines the design just as the materials and cut do. It may be wrong to say color is a functional aspect of clothing, but color is indispensible to clothing and fashion. In this way, the indispensability is equivalent to functionality. Because trademarks for clothing are usually limited to tags and design logos, protecting the color of a piece of clothing would greatly expand what could be protected as a trademark.
Color can be a trademark if the color has achieved secondary meaning and is non-functional, like the blue color of Tiffany's jewelry packaging, pink home insulation, and green-gold ironing boards. Black for outboard motors cannot be trademarked because the black matched the color of many boats and made the motor appear smaller in size.
Tiffany blue, Owens Corning pink, and Qualitex green-gold merely identify the source and nothing more. There is little chance a consumer has a logical reason for the color to be a deciding factor for a consumer purchasing these goods beyond the quality of the brand. A choice to purchase a black boat motor, however, could be made because of the source identifying color, or because the color matches the boat or makes the motor look smaller. The black boat motor color affects the aesthetics and therefore affects the purchaser's decision. The black color is aesthetically functional and is afforded no protection.
Like the black boat motor, the red on the bottom of the Louboutin shoe conveys more than the source, it conveys a style and an aesthetic benefit. For example, in the case of a popular combination of red sole on a black shoe, the black shoe with a flash of red as the woman walks could convey the visual of a black widow spider. The red sole adds sex appeal on top of the source identifier. This color on the shoe moves the red sole out of the realm of trademark and into aesthetic functionality. The court should not have to make an aesthetic judgment of what the mark conveys; it is enough to say that because color is a principle of design, one color alone sends a message beyond the trademark and should be disallowed.
Although it was more likely during the monochrome style of the 80's, a person may want to purchase shoes with red soles independent of the Christian Louboutin name. Even if this desire is remote, it is not the court's place to make aesthetic judgments to what will and will not be popular. It is enough to say a single color, used on an item of clothing, sends a message other than the message of source identification and the mark cannot be protected.
YSL should prevail.
Winner of Weekly Legal Challenge: Third Year student Julie Dahlgard
University of Miami
Coral Gables, FL 33124
305-284-2211