{"id":2092,"date":"2016-03-21T23:08:52","date_gmt":"2016-03-21T23:08:52","guid":{"rendered":"https:\/\/live-journal-of-law-and-public-policy.pantheonsite.io\/?p=2092"},"modified":"2016-03-21T23:08:52","modified_gmt":"2016-03-21T23:08:52","slug":"the-converse-shoe-case-why-we-should-chuck-the-aesthetic-functionality-doctrine","status":"publish","type":"post","link":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/2016\/03\/21\/the-converse-shoe-case-why-we-should-chuck-the-aesthetic-functionality-doctrine\/","title":{"rendered":"The Converse Shoe Case: Why We Should “Chuck” the Aesthetic Functionality Doctrine"},"content":{"rendered":"By Max Scharf\n\nConverse is currently in the midst of litigation which seems to completely depend on the status of the aesthetic functionality doctrine. When consumers think of Converse, they often think of their Converse All Star sneakers (as seen below), also known as \u201cChuck Taylors.\u201d\n\nIn October 2014, Converse filed suit against Wal-Mart (and dozens of other companies) claiming these companies were selling knock-off Chuck Taylors. For the sake of brevity, this post will mainly focus on Converse\u2019s claims against Wal-Mart. Converse is claiming trade dress infringement on the grounds that Wal-Mart\u2019s \u201cStinson Oxford\u201d shoes are likely to cause consumer confusion.\n\n \n\n\"Shoes\"\n\n \n\nConverse claims Wal-Mart is unlawfully reproducing its \u201cmidsole trademark\u201d which consists of a particular design, including stripes, a toe cap, and a toe bumper. Indeed, in 2013, Converse registered<\/a> this design with the Patent and Trademark Office.\n\n \n\n\"stripe\"\n\nBackground on Trade Dress Protection<\/span><\/strong>\n\nIn Two Pesos<\/em><\/a>, <\/em>the Supreme Court held that the Lanham Act protects trade dress, which includes the \u201cshape, color or color combinations, texture, [and] graphics\u201d of a product. Trade dress, in the form of a product design, can only be registered and protected, under the Lanham Act, if it acquires secondary meaning. Secondary meaning is acquired where \u201cthe primary significance<\/a> of the [product design] in the minds of the consuming public\u201d is its producer, not merely the product.\n\nSection 32<\/a> of the Lanham Act prohibits any person from using a design which is confusingly similar to registered trade dress, for use in commerce without the registrant\u2019s consent. One of the primary goals of trade dress protection is to prevent unscrupulous producers from selling \u201cknock-off\u201d products, thereby free-riding on the good reputation of another producer.\n\nHowever, the Supreme Court has indicated that trade dress cannot be protected if it is aesthetically functional. In Qualitex<\/em><\/a>, the Court noted that a feature is aesthetically functional if granting one producer the exclusive right to use it would put competitors at a significant, non-reputation based disadvantage<\/span>. For example, the Qualitex <\/em>Court commented that the plaintiff\u2019s green-gold color on its dry cleaning pads did not significantly disadvantage competitors because there were many other colors available as alternatives.\n\n \n\nGetting to Know \u201cChucks\u201d: Applying Trade Dress Law<\/span><\/strong>\n\nThere is not much question that \u201cthe primary significance of the [design] in the minds of the consuming public\u201d is its producer, Converse. Converse has sold shoes with these features for over 80 years<\/a>. Converse \u201csells more than 270,000 pairs of Chuck Taylors a day<\/a>[,]<\/a>\u201d which totals \u201croughly 100 million pairs a year.\u201d Converse\u2019s complaint<\/a> estimates that at least 60% of all Americans owned at least one pair of \u201cChucks\u201d in their lifetime. When consumers see this design, they associate it with Converse.\n\nLikewise, it is not difficult to conclude that Wal-Mart\u2019s \u201cStinson Oxford\u201d shoes cause consumer confusion. Generally, to determine the existence of consumer confusion, courts apply a multi-factored<\/a> test (including similarity of the marks, evidence of actual confusion, and the defendant\u2019s intent in selecting the trade dress)\u2014but there is no need to jump through such legal hoops, here\u2014just look<\/em> at the shoes. On the Stinson Oxford\u2019s page<\/a> on Wal-Mart\u2019s website, consumers state \u201c[t]hey look like the real Converse sneakers,\u201d \u201cpeople can’t tell there not chucks,\u201d and \u201c[t]hese shoes look and feel just like Chuck Taylor’s.\u201d Plus, potential consumers of Converse who pass by someone wearing Stinson Oxford shoes, particularly from a distance, seem quite likely to mistake Stinson Oxfords for Chuck Taylors (and thus become more or less likely to buy from Converse depending on how they perceive the quality of Wal-Mart\u2019s shoe).\n\nBut wait\u2014despite the existence of secondary meaning and consumer confusion, could Converse\u2019s trade dress nonetheless lack protection on the grounds that it is aesthetically functional? A recent ruling by the Internal Trade Commission (also known as the ITC) suggests the answer is no. However, the ITC\u2019s ruling is not the end of this litigation. That ruling \u201cwill now be reviewed by the full ITC; if upheld, Wal-Mart\u2026can appeal to the Federal Circuit.\u201d<\/a>\n\nAcknowledging the Flaws in the Aesthetic Functionality Doctrine<\/span><\/strong>\n\nThe purpose of this post is to advocate for the disposal of the aesthetic functionality doctrine. At first, this seems like a strange position to take–the Supreme Court has explicitly acknowledged the doctrine\u2019s existence on multiple occasions. However, this post contends that, for three main reasons, public policy would be best served by disregarding the discussions of the Supreme Court and casting this doctrine aside.\n\nFirstly, the doctrine punishes success. Producers make pleasing designs in order to gain revenue and reputation\u2014but, \u201cif a design is pleasing to the public, then it will not simply serve<\/a>\u201d non-reputation based advantages. Consumers prefer to purchase such a product because of its pleasing look, and (just as they had hoped) producers reap advantages from their appealing design. When courts strip these producers of trade dress protection because of non-reputation based advantages derived from a pleasing design, they simultaneously punish the ingenuity taken to develop such designs (and seemingly provide a perverse incentive to develop unappealing designs, because producers can be certain they will be protected).\n\nCourts should notice that: (1) Converse\u2019s shoes are unlikely to be protected by copyright law because \u201ccopyright protection for the designs of useful articles is extremely limited,\u201d and generally does not apply to \u201cworks of industrial design<\/a>,\u201d and (2) even if they could acquire patent protection, this would not give Converse the protection they seek, as design patents only last for 14 years<\/a>.\n\nSecond, there is plenty of support for the view that the Supreme Court\u2019s commentary on the aesthetic functionality doctrine is non-binding dictum. Thomas McCarthy, the leading treatise writer on trademark law, characterized Qualitex<\/em>\u2019s discussion of aesthetic functionality as \u201cpassing comments<\/a>,\u201d and both the 5th<\/sup> and 6th<\/sup> Circuits concluded that this discussion was mere \u201cdicta.\u201d Moreover, the 5th<\/sup> Circuit<\/a> completely rejected the doctrine, while the 6th<\/sup> Circuit<\/a> commented that they had \u201cnot yet plainly stated\u201d whether they \u201chave even adopted [the] aesthetic functionality doctrine at all.\u201d\n\nThird, for good reason, various Circuit Courts have applied this doctrine in confusing fashion. The 2nd<\/sup> Circuit, in a case involving Louboutin\u2019s red-soled shoes<\/a>, accepted the doctrine of aesthetic functionality\u2014but called the doctrine counterintuitive, they asked \u201chow can the purely aesthetic be deemed functional[,]\u201d and decided the case on other grounds.\n\nThe 7th<\/sup> Circuit seemed confused as to how many consumers need to \u201cprefer the appearance\u201d of the design before it constitutes a significant, non-reputation based advantage. In Honeywell<\/em><\/a>, the 7th<\/sup> Circuit concluded that more than \u201csome consumers\u201d must prefer the design\u2019s look before it loses protection under the aesthetic functionality doctrine, because \u201c[i]t would always be possible to show that some<\/em> consumers like the item’s appearance.\u201d For the lower courts of the 7th<\/sup> Circuit, the current legal standard (if more than some<\/em> consumers prefer the design it may lose protection, but if less than some<\/em> consumers prefer the design it does not lose protection) provides essentially zero guidance.\n\nIn short, the aesthetic functionality doctrine causes a protection gap. The fashion industry, in litigation like the Converse shoe case, often cannot rely on copyright or patent protection\u2014so trade dress protection becomes Converse\u2019s last line of defense. Converse\u2019s \u201cmidsole trademark\u201d intuitively feels like it should be protected: it is fairly unique, certainly unique enough to be well-known nationwide, and Converse spent hundreds of millions<\/a> promoting this design. But\u2014merely because many consumers think Converse developed such an appealing design–courts may rely on the aesthetic functionality doctrine to allow knock-off producers to copy the design without having to pay Converse a dime. The 2nd<\/sup> Circuit\u2019s impression of this doctrine was right: it\u2019s extremely counterintuitive.\n\n ","protected":false},"excerpt":{"rendered":"

By Max Scharf Converse is currently in the midst of litigation which seems to completely depend on the status of the aesthetic functionality doctrine. When consumers think of Converse, they often think of their Converse All Star sneakers (as seen below), also known as \u201cChuck Taylors.\u201d In October 2014, Converse filed suit against Wal-Mart (and…<\/p>\n","protected":false},"author":1,"featured_media":2093,"comment_status":"open","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"_acf_changed":false,"footnotes":""},"categories":[14,15,16,17,18,19,21,27,28],"tags":[99,383,384,1394,1653],"class_list":["post-2092","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-archives","category-authors","category-blog-news","category-certified-review","category-feature","category-feature-img","category-spotters","category-recent-stories","category-student-blogs","tag-aesthetic-functionality-doctrine","tag-converse","tag-converse-chucks","tag-shoes","tag-wal-mart"],"acf":[],"_links":{"self":[{"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/posts\/2092","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/comments?post=2092"}],"version-history":[{"count":0,"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/posts\/2092\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/media\/2093"}],"wp:attachment":[{"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/media?parent=2092"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/categories?post=2092"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/publications.lawschool.cornell.edu\/jlpp\/wp-json\/wp\/v2\/tags?post=2092"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}