I can hardly think of Christain Louboutin’s (“Louboutin”) “red soled shoe” case without hearing Elvis Costello’s Red Shoes in my head.

Angel in Red Shoes

…Oh I used to be disgusted 
and now I try to be amused. 
But since their wings have got rusted, 
you know, the angels wanna wear my red shoes. 
Red shoes, the angels wanna wear my red shoes…

For awhile, at least in the Second Circuit, we were wondering who could sell red shoes and/or whether angels might have to go barefoot for awhile…  But now we seem to have some clarity on the issue.

To review, Louboutin has been fighting since 2011 to stop Yves St. Laurent (“YSL”) from copying his trademark red-soled shoes.  In what had been a somewhat surprising opinion, the Southern District of New York had denied Louboutin’s request for an injunction against YSL’s monochrome red shoes (that included a red sole) last August, on the grounds that color was per se functional as applied to fashion items.  We’ve been waiting for months for Louboutin’s appeal to reach a decision, which finally came down on September 5, 2012  from the Second Circuit Court of Appeals.

My earlier ruminations on … Keep reading

Should Colors Be Protected as Trademarks? If Not, Should Letters? How Shoe Soles and Mobile Apps Might Be Related


One of the pleasures of practicing law, perhaps especially in the technology space –is in observing how technology trends and legal theories n Qualitex v. Jacobson, determined that single colors could be protected as trademarks—as long as the color, as applied to the relevant products, was not merely functional. Previously, some feared that granting trademark protection to single color (even if the color was non-functional) would be anti-competitive because colors were in short supply. Hence, no one should own one color exclusively. The Qualitex ruling seemed to provide closure on the issue by focusing the analysis on the functionality of the color shade rather than the potential for that color to be removed from the designer’s pallet.

But recently, as the trademark community knows, the Second Circuit Court of Appeals took up the appeal in Louboutin v. Yves Saint Laurent, a case that revisits the protectability of color, this time as used to identify a brand of shoes. The District Court opined that the use of red on a shoe sole (or on any fashion item) was “functional” by its very nature and that granting a monopoly to color on a fashion item was outside the bounds … Keep reading


Settlement

As of July 2, 2012, the World Trademark Review and its blogger, Helen Sloan, are reporting that Apple has agreed to pay $60 million to Proview Technologies for the IPAD mark in China.  As I previously summarized in an earlier post, Apple thought it had already acquired all the rights to the IPAD mark, but it learned after a transaction with Proview’s sister company that it had not (allegedly) obtained a complete assignment in China from the record owner of the rights there.  Apple’s proffered settlement is quite a bit larger than the $16 million it was rumored to be offering, but given the popularity of the Apple device and the potential market in China, the sum is a worthy investment.

Lessons from Apple’s experience include:

1)  Diligence needs to be thorough.  Mixed ownership of assets in related, sister and subsidiary names is not uncommon.  Making sure the papers are signed by the right entity is critical to finalizing a deal and getting genuine closure on the acquisition of any intellectual property right.

2) Negotiating through an acquisition subsidiary can be perilous.  Apple used a separate corporation to purchase rights to the IPAD mark in various countries … Keep reading


Nora Ephron

Last night, Nora Ephron passed.   Already the internet andblogosphere are filled with this news and discussion of the loss of an incredibly prolific, comical and impactful artist.  While she is associated with a broader feminist agenda, her real contributions were in giving comic and touching voice to life experiences that happened to be shared primarily by women.   Her clarion call to women, especially younger women, to “…be the heroine of your life, not the victim,” might have been her most poignant gift.

But what, you may well ask, has Ephron’s passing to do with intellectual property or the law of information?  Well everything and nothing at once…  I was once asked to opine upon the intersection of intellectual property protection and gender.  I was flummoxed by this question at first, feeling that certainly there was gender blindness when it comes to IP rights and their exploitation.  But if you scratch beneath the surface — as Ephron always did — the story is much more complicated.It’s breathtaking to remember that women were still considered chattel until several hundred years ago.  Then, having thrown off that burden, we still could not own property for another huge block of … Keep reading


Why or what or who is Lex Indicium?  Roughly translated, and with apologies to the classical scholars who may happen upon this blog, Lex Indicium means “law of information,” or “law of data” in Latin.  In a broad sense, the “law” that applies to data, and/or rights in data or information is what this blog seeks to explore.  In my law practice, I might say that I am an “intellectual property lawyer, who specializes in trademarks, copyrights, and information law.”  But my passion and interest have been drawn to this craft by fundamental questions  – “who owns or should own information—any information, be it text, raw factual data, art, etc?  Should it be free or should it be exploitable and monopolized and monetized?  And which answers lead to the greatest good for society?”
Since I began practicing law almost 20 years ago these questions really have been asked repeatedly in the context of one burgeoning cultural phenomenon known as digital technology—which technology has had one primary (and largely freely available) medium– the internet.  But the questions themselves and the issues that flow from them are ancient, stretching back to ancient times.  This, combined with my own background in … Keep reading


WonderThe absolute best part of my job is problem solving.  It’s especially fun because hardly a day goes by that I don’t encounter a person saying something like “oh, I have a quick question about…,” or “I wonder if its ok if I use this photo/text…”  In very limited cases is the answer really quick and easy.  If it were, I’d be out of work and so would a lot of other lawyers.  So in this corner, we will try to address questions we’ve encountered or questions our blog readers pose about what they can and can’t do with the work/content of others  (or any other random related question that may arise).

Here is this week’s question:

I am taking photos of a friend with various artworks she would like sell.  Do we need permission from the artist who created the works to photograph and post the photos on the web? 

The answer is – (sorry), it depends.  First I need to make assumptions about the works that I hope apply.  I am going to assume that the works were created in the U.S. by a U.S. citizen.  I am also going to assume that thePalette works were created … Keep reading