Moon Boot: Iconic or Distinctive? Zooming In on the Latest European Fashion-IP Controversy
Inspired by the boots of the astronauts of the Apollo 11 mission, Italian artist Giancarlo Zanatta created the Moon Boot in 1969.[1] While it has become an iconic object of pop culture, exhibited at the Louvre in 2000[2] and at New York’s Museum of Modern Art in 2018,[3] the Moon Boot recently found itself at the heart of some intellectual property disputes.[4]
The legal issue? The distinctiveness of a three-dimensional trademark[5] representing the famous après-ski boots and filed by the company Tecnica Group in 2011 as a European trademark.[6] Distinctiveness is the key criterion of Trademark protection and is defined as the ability for the consumer to identify and distinguish a good from others and attribute it to a brand.[7]
The dispute arose when Swiss company Zeitneu GmbH contested the validity of the 3D Moon Boots trademark before an Italian lower court (the “Venice Tribunal”).[8] An action was then brought to the European General Court, in which the European Union Intellectual Property Office (“EUIPO”) joined the losing plaintiff.[9]
The EU Court however ruled contrary to the Italian judges. According to the Court, the fact that the contested mark “had a reputation” cannot “constitute precise, unconditional and consistent assurances that that mark could not be annulled” in the context of invalidity proceedings.[10]
The EU court acknowledged that only a three-dimensional mark, “consisting of the appearance of the product itself, which departs significantly from the norm or customs of the sector and thereby fulfil[l]s its essential function of indicating origin” is not devoid of any distinctive character.[11]
In order to ascertain whether the three-dimensional mark departs significantly from the customs or norms of the sector, “it is not necessary to show that there are other goods on the market which reproduce all the features of the contested mark.”[12] Indeed, “the presence on the market of shapes which are potential counterfeit copies is irrelevant to the assessment of the inherent distinctiveness of the contested mark with regard to its perception by the relevant public.”[13]
Based on the above, the EU Court found that the three-dimensional mark lacked distinctiveness. Accordingly, the EUIPO was able to conclude that in 2011, at the time of filing the trademark, the sign was devoid of distinctive character. Indeed, the EU Court reasoned that the commercial nature of après-ski “L” shape boots for more than 70 years is “common” among other forms of winter boots “which are generally made of a high shaft, often in a light synthetic material, with soles and laces.”[14]
While its shape is not protected by trademark, the Moon Boot is protected by copyright law, at least in Europe. Indeed, a year before the EU court case, the Milan Court of First Instance ruled that influencer Chiara Ferragni’s marketed snow boots infringed the Moon Boots’ copyright. The Milan court notably recognized the Moon Boot’s “artistic value.”[15]
However, the European Moon Boot copyright found by the Milan court only applies in Italy, and any special artistic merit of the pop-culture boots is irrelevant under U.S law. Because of the intrinsic utilitarian nature of après-ski footwear, the boots, just like fashion garments, are excluded from the scope of U.S. copyright protection.[16] Applying the separability test developed by the U.S. Supreme Court in Star Athletica,[17] it is likely that no protectable designs that qualify as “pictorial, graphic, and sculptural works”[18] which are separable from the Moon Boot itself.
Even though copyright law may not apply in the U.S., fashion goods and other shapes of products (like the Birkin bag or the Converse shoes) may receive trademark protection. Under trademark law’s doctrine of trade dress, products with iconic designs that speak to a consumer as both for the product and the brand itself may be protected. [19] For the moment, no U.S judge has pronounced herself on whether the relevant consumers sees the Moon Boot brand behind a “L” shape winter boot.
The conclusion to be drawn from this case is that distinctiveness of three-dimensional trademarks is a delicate test in which the examination of the product’s “iconic” character has no proper relevance.
Footnotes
