Recently, the WSJ reported in Color Wars: Luxury Makers Battle Over Red-Soled Shoe that the Southern District of New York denied a preliminary injunction that fashion house Christian Louboutin (“CL”) sought against Yves Saint Laurent (“YSL”) for making high heeled shoes with a red sole. CL has a trademark over a “lacquered red sole” on “women’s high fashion designer footwear.” The Court ruled that the color in this context served a functional purpose and was therefore not protectable subject matter. At first blush, the Court’s decision may seem far reaching. It is not.
Color is generally not something you can trademark. There is an exception to this rule. I could trademark the pantone process blue used by my firm so long as I show that consumers associate the particular shade of blue with my firm, and as long as the color is not “functional.” Camouflage, for example, serves such a functional purpose by concealing the person from view. Black, as another example, by conveys a feeling of melancholy and formality, among other things, when used for a suit.
Surprisingly, the Court ruled in CL v. YSL that CL’s red bottomed trademark could not be protected even if CL were able to show secondary meaning: that consumers associated the red with CL’s brand, and not just as some fad in the fashion industry. In so proclaiming, the Court seemingly fan afoul of well established trademark principles.
However, the Court was right to rule the way it did given: (1) CL’s trademark application didn’t claim a particular shade of red, bur red in general; (2) the application also sought to protect the red sole not only for high heels, but for “high fashion footwear,” which covers a broad spectrum of shoes, including flats; and (3) color, especially red, plays a big role in the fashion industry, unlike in other industries. There is no arguable functional purpose to the color pink in the fiberglass industry, and so courts have allowed a fiberglass company to trademark the color for fiberglass. There is, however, such a purpose in the case of black for Jake and Elwood’s bluesy suits. The same is true of red soled sexy heels.
Doth not a rose by any other name smell as sweet? Of course it does. The same is true of an isolated gene. It may have different uses and molecular characteristics once separated from the human genome. However, the genetic code within the gene remains the same. Because such code is found in nature, the isolated gene should not be patentable subject matter. And yet the United States Court of Appeals for the Federal Circuit recently ruled in The Assoc. for Molecular Pathology, et. al. v. Myriad Genetics, Inc. (“Myriad”) that such a gene is patentable. In so holding, the Court went too far.
Myriad filed a patent over BRCA, which is an isolated gene from the human genome. Think of the BRCA as a link from a chain link fence. The company then used BRCA for various purposes, including the treatment for breast cancer. Indeed, the company filed a patent for such uses and applications. This patent was not the subject of the dispute.
Instead, the dispute centers on whether Myriad has the right to a government sanctioned monopoly over BRCA. A majority of the Federal Circuit held that it did. The majority’s reasoning: while the genetic code that underlies the BRCA is the same as the genetic code found in the human genome, the molecular nature of the BRCA changes once isolated from its chain. This is akin to saying that a link from a chain link fence can be heated and bent into forms that would not be possible if the link were still in the chain link fence.
However, the fact remains that the link still is made of the metal from which it came, just as the BRCA has the same generic code. Of course, Myriad should be — and was — rewarded with a patent for new and non-obvious applications or uses of the BRCA for the treatment of breast cancer. And the Court rightly upheld Myriad’s patent over a genetically modified gene that the company constructed in the laboratory and which did not naturally occur in nature.
In the end, allowing Myriad to monopolize the BRCA gene with a patent precludes others from experimenting with the gene in order to find new commercial and non-commercial applications that benefit society. In so doing, the Federal Circuit has placed too much undeserved power over a naturally occurring item in the hands of one company.