The
Huffington Post is reporting that there is a run on a
particular pantone of red paint in the United Kingdom.
Why red
paint?
Faced
with the high price of genuine Christian Louboutin designer pumps, some cash-strapped
British wannabe fashionistas are painting the soles of their high heel shoes a
specific shade of red, in a deliberate imitation of the designer's federally registered trademark.
In
response to the Huffington Post article, I was asked the obvious question by
many people: "Is that practice legal in the United States?"
I had to
pause to make sure that I was absolutely convinced that the following statement
was really true:
"Yes.
This practice is absolutely legal in the United States."
Intentionally
applying a counterfeit, imitation trademark to a product for one's own personal
use, assuming that there is ZERO chance that the item will ever be sold or
offered for sale to anyone -- is perfectly legal under current U.S. trademark
laws. It is perfectly legal to own, wear and proudly display a
counterfeit product on one's own person.
The Lanham Act, codified at 15 U.S.C. § 1051 et seq., is the primary federal statute
of trademark law in the United States. The
Lanham Act prohibits a number of activities, including trademark
infringement, trademark dilution, false
advertising and false designation of origin.
If
someone were to offer a product for sale that infringes upon, dilutes or causes
confusion with a protectable trademark or design, that person would be civilly
(and possibly even criminally) liable under the Lanham Act for monetary damages and an
injunction (a court order) against their continued conduct. The goods can also be confiscated and destroyed.
"Such
a practice [of selling knockoffs] does harm the public, however, by creating post-sale confusion, not
just among high-end consumers, but among the general public, which may believe
that the knockoff is actually the genuine article. In fact, high-end
consumers may be less confused than the general public in the post-sale context
because many of them will be aware of the existence of copies. In either
case, a loss occurs when a sophisticated buyer purchases a knockoff and passes
it off to the public as the genuine article, thereby confusing the viewing
public and achieving the status of owning the genuine article at a knockoff
price." Hermes Int'l et al. v. Lederer de Paris Fifth Avenue,
Inc., et al., 219 F.3d 104, 106 (2d Cir. 2000).
But in
each of its relevant prohibitions against knockoffs, the Lanham Act
deliberately utilizes a key word -- commerce.
Absent
some form of actual, intended or apparent "use in commerce," the
imitation shoes that a person makes solely for their own personal use and display cannot be accused in a federal
court as being an infringement, dilution or false advertising.
Indeed, that result is
true even if the copycat shoes are admittedly designed to cause the third-party, "post-sale" consumer confusion that the Court of Appeals said is harmful.
Cheap knockoff shoes can also "dilute" the
fame and power of a well-known brand (especially if the imitation shoes are
lousy quality, which would "tarnish" the fame of the red-sole
Louboutin trademark).
But the
manufacture and use of personal copycat red soled shoes, assuming no use in commerce other than the mere act of a private person wearing them, is simply not illegal under current U.S. federal law.
That
perverse outcome means that even if an ill-intentioned person were to
manufacture many pairs of such shoes, for no commercial purpose other
than to deceive their friends and onlookers into believing that they are
fashionable enough to own a hundred pair, there is nothing the trademark owner
can legally do to stop that person.
