Art Law Meets Trademark Law in Christian Louboutin v Yves Saint Laurent

Christian Louboutin's Distinctive Red Outersoles

In Christian Louboutin SA v. Yves Saint Laurent America, Inc. 11 Civ. 2381 (August 10, 2011), Judge Victor Marrero of the Southern District of New York has revealed an artistic and poetic streak rare among those sitting on the federal bench. The decision (link below)invokes Walt Whitman's Leaves of Grass, and sets up a hypothetical in which Picasso tries to stop Monet from painting water lilies in a distinctive color of indigo that Picasso had used during his blue period.

The blue analogy was used to refuse a request for a preliminary injunction from Christian Louboutin who has developed the expensive and distinctive red-soled shoes that have captured the fashion and celebrity world's imagination. Louboutin has a TM registration in the color red on the outersole of a woman's shoe.

Following Judge Marrero's decision, it looks like Louboutin's TM will not survive, in part over a TM claim to the color red where Louboutin only uses a particular shade of red.

Judge Marrero distinguished the fashion industry from industries, like in the Owens-Corning fiberglass case that protected the color pink, where the color is not part of the product. As Judge Marrero observed, fashion is all about color and color choices, unlike a product like fiberglass.

Additionally, quotes from Louboutin were introduced in which he ascribed a function to the color red, further endangering his ultimate claims.


Christian Louboutin v Yves Saint Laurent

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ACTA Anti-Counterfeiting Trade Agreement: Final Version is Out, Lobbying Starts

Anti-Counterfeiting Trade Agreement educational video above.

More on ACTA here.

EFF's take on ACTA here.

ACTA final draft here.

The European Commission is apparently pushing the European Parliament to drop its skepticism, Techdirt story here.

More on why ACTA's secretive nature is problematic here.

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Copyright Law: Removing Copyright Management Information from Photographs May Violate DMCA and Lanham Act

 Selfmadephoto.com

In Cable v. Agence France Presse, 2010 WL 2902074 (N.D. Ill. July 20, 2010), a photographer sued Agence France Presse for violations of the Digital Millenium Copyright Act 17 USC 1202 and the Lanham Act.  The violation alleged was that AFP removed the photographer's name, copyright notice and a "hotlink" to his website that were embedded in the photographs, then resold or reused the photographs.

AFP moved to dismiss, claiming that the photographer's name, copyright notice and hotlink were not "copyright management information" as intended by the DMCA.  AFP argued that "copyright management information" referred to copyright management performed by technological systems.

The court rejected AFP's argument and declined to dismiss the claim based on a DMCA violation.   The court also upheld a Lanham Act claim based on the same facts, finding that a claim for "reverse passing off" had been alleged, relying on the Supreme Court's Dastar case.

The DMCA - 17 USC 1202 - provides in relevant part:

§ 1202. Integrity of copyright management information3



(a) False Copyright Management Information. — No person shall knowingly and with the intent to induce, enable, facilitate, or conceal infringement —

(1) provide copyright management information that is false, or
(2) distribute or import for distribution copyright management information that is false.


(b) Removal or Alteration of Copyright Management Information. — No person shall, without the authority of the copyright owner or the law —
(1) intentionally remove or alter any copyright management information,
(2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or
(3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law, knowing, or, with respect to civil remedies under section 1203, having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right under this title.

(c) Definition. — As used in this section, the term “copyright management information” means any of the following information conveyed in connection with copies or phonorecords of a work or performances or displays of a work, including in digital form, except that such term does not include any personally identifying information about a user of a work or of a copy, phonorecord, performance, or display of a work:
(1) The title and other information identifying the work, including the information set forth on a notice of copyright.
(2) The name of, and other identifying information about, the author of a work.
(3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright.
(4) With the exception of public performances of works by radio and television broadcast stations, the name of, and other identifying information about, a performer whose performance is fixed in a work other than an audiovisual work.
(5) With the exception of public performances of works by radio and television broadcast stations, in the case of an audiovisual work, the name of, and other identifying information about, a writer, performer, or director who is credited in the audiovisual work.
(6) Terms and conditions for use of the work.
(7) Identifying numbers or symbols referring to such information or links to such information.
(8) Such other information as the Register of Copyrights may prescribe by regulation, except that the Register of Copyrights may not require the provision of any information concerning the user of a copyrighted work.
More on the DMCA here and here.

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Hot News Misappropriation and Copyright Law

In Associated Press v. All Headline News Corp., 2009 WL 382690 (S.D.N.Y. Feb. 17, 2009), Judge Castel considered a Rule 12(b)(6) motion to dismiss AP's complaint alleging (1) violations of the Copyright Act 17 U.S.C. 106 (2) violations of the DMCA 17 U.S.C. 1202, the Lanham Act Sections 1114 and 1125(a) and New York common law.

AHN, found here was sued by AP, found here. It was alleged that poorly-paid Florida employees took AP content, removed copyright notices, reworked it and republished it as their own.

The court denied the bulk of the motion to dismiss, finding that AP's claims for misappropriation and unfair competition under New York law are not preempted by the Copyright Act. The court dismissed the Lanham Act claims, finding that AHN did not infringe AP's trademark by wrongfully deleting its trademark from its news reports.

The decision finds the "hot news" misappropriation theory under New York law still viable. Along the way, the court performs a nice conflict of laws analysis between Florida and New York law. Quoting NBA v. Motorola, Inc., 105 F.3d 841 (2d Cir. 1997) the court found:

under New York law, a valid, non-preempted claim for misappropriation arises when:
(i) a plaintiff generates or gathers information at a cost; (ii) the information is time-sensitive; (iii) a defendant's use of the information constitutes free riding on the plaintiff's efforts; (iv) the defendant is in direct competition with a product or service offered by the plaintiffs; and (v) the ability of other parties to free-ride on the efforts of the plaintiff or others would so reduce the incentive to produce the product or service that its existence or quality would be substantially threatened.

The court applied New York - the law of the "place of injury" - that is, the place where the plaintiff suffered economic loss because of the misappropriation of its ideas.

The court also permitted the DMCA claim to proceed - holding that removing copyright notices from published articles violates the statute's clear language and rejecting the defendants' arguments that DMCA violations are limited to removing encryption and other digital coding.

This is a case that is likely to be cited for its conflict of laws analysis.

Right of Publicity in a Famous Voice: Copyright and False Endorsment Claims from the Grave

In Facenda v. N.F.L. Films, Inc., 542 F.3d. 1007 (3d Cir. Sept. 9, 2008), the Third Circuit tackles a major league set of questions. First, if a copyright owner in a video recording uses portions of the copyrighted sound recording containing a famous voice in promoting a video game, does the long dead famous football announcer's estate have claims for false endorsement under the Lanham Act? The answer is yes.

Second, if a copyright owner has the exclusive right to prepare a derivative work, doesn't this preempt any state-law right of publicity statute?

The answer is sometimes yes, sometimes no.

The NFL produced a 22-minute "documercial" (if you really want to know the difference between a documercial and an infomercial, you will have to read the 26-page decision). The documercial promoted the Madden '06 video game and used modified sound recordings of the legendary football announcer John Facenda's voice. Though he is long dead, Facenda's voice is still remembered, see his page on Wikipedia. Thanks, Wikipedia for the Madden 'O7 image accompanying this text. Madden '08 here.

Was the documercial "commercial speech"? Was it a product endorsement as Facenda's estate urged or was it a documentary? The court found that the video was an advertisement. Facenda had given the NFL a release shortly before his death that permitted the NFL the right to use his voice and image as long as it was not used to promote a product. The NFL's use was found to be a false endorsement in violation of section 43(a)(1)(a) of the Lanham Act, 15 U.S.C. Section 1125(a)(1). The court's discussion of the First Amendment's limitations on the Lanham Act is an interesting one.

Section 301(a) of the Copyright Act preempts legal and equitable rights that are "equivalent to" the exclusive rights protected by the Copyright Act. The court considered the cases that treat a person's "persona" as something independent of copyright's subject matter.

Essentially, in an excellent overview of the case law treating the extent to which a person who participate in the creation of a copyrighted work has surrendered their persona for promotional purposes, the court held that where the copyrighted work is excerpted to promote that expressive copyrighted work, such uses are preempted by the Copyright Act. But where a person's image, or in this case - their voice - is taken from one copyrighted work to promote another product, under certain circumscribed circumstances, which the court found in the Facenda case, such uses may violate that person's right of publicity.