If the Shoe Fits: What Footwear Cases Teach Us about IP Protection & Enforcement (CLE) - 10:15 AM - 11:15 AM - The American Bar Association Young ...
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The American Bar Association
Young Lawyers Division
2018 Annual Meeting
Chicago, IL
If the Shoe Fits: What Footwear
Cases Teach Us about IP
Protection & Enforcement (CLE)
August 3, 2018
10:15 AM - 11:15 AMIf the Shoe Fits: What Footwear Cases Teach Us
About IP Protection & Enforcement
American Bar Association Annual Meeting
August 3, 2018
Presented By:
• Kim Ray, Senior Vice President, Global Program Management and Legal Counsel
for CAA-GBG
• Briana Rizzo, Associate, Venable
• Tracy Stitt, Partner, Jones Day
• Alexis Douglas, Associate, K&L Gates – Moderator
1Introduction
The relationship between intellectual property law and the fashion industry has proven historically
complex. The fashion world intersects art, invention, and brand recognition, sometimes all within
a single garment or accessory, and as a result often requires intellectual property principles to grow
and develop alongside the industry itself. In recent years this complex relationship is arguably
most obvious in the realm of footwear.
When it comes to protecting the intellectual property inherent in footwear, people most often think
of patent law. This is not particularly surprising, as many notable characteristics of shoes (think
zippers, hook and loop fasteners, strap designs, or knitted shoe tops) are covered by a range of
utility or design patents. Some may also think of copyright protection, especially after the Supreme
Court’s ruling, in Star Athletica, LLC v. Varsity Brands, Inc., that creative elements that are
“separable” from functional items can be protected under copyright law. 1 However, recent years
have seen designers, and thus courts, shift their focus to trademark law, illuminating various ways
this type of protection can be essential to footwear.
Generally speaking, a trademark is a word or symbol used, in commerce, to indicate the source of
certain goods or services for the benefit of consumers. Typically, protection of these words or
symbols only lies where the mark in question is either inherently distinctive (instantaneously
indicating the source to the consumer) or has secondary meaning (acquired distinctiveness over
time). 2 While trademarks do not necessarily need to be registered to be enforced, they do need to
be used consistently in commerce to warrant common law protection.
While trademarks have long been used by the fashion industry to protect logos, designers have,
over time, begun to rely more heavily on the registration of product design elements themselves,
either through “trade dress” or design patents. While trade dress protection can prove incredibly
valuable for designers who wish to protect the look and feel of their product design and not simply
a logo printed on the same, it can only exist where the trade dress in question is nonfunctional and
possesses “acquired distinctiveness.” 3 The way courts have evaluated and applied these
requirements in recent years paints an interesting picture for designers and legal practitioners alike.
We explore some of these developments, as well as what they may mean for industry members,
through the lens of cases brought by Adidas, Converse Inc. and Christian Louboutin.
Design patents cover the ornamental appearance of utilitarian articles. In other words, they
protect a product’s look, not its function. Shoe designs are eligible for this type of protection,
and design patents can be a valuable addition to a product’s intellectual property portfolio. The
high profile smartphone wars between Apple and Samsung may have sparked a renewed interest
in design patents, but shoes have long been the subject of design patent battles. Indeed, cases
involving shoe designs, like the case brought by Crocs discussed herein, have helped shape some
of the most important doctrines in design patent law, including claim construction.
1
Star Athletica, LLC v. Varsity Brands, Inc., 580 U.S. ____ (2017).
2
See GILSON ON TRADEMARKS § 2.06; Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 769 (1992).
3
See, e.g., 15 U.S.C. §§1051, 1052, 1127.
2Adidas: Trade Dress Protection
It’s game, set, match for Adidas when it comes to the protectable trade dress in its iconic Stan
Smith tennis shoe. In a dispute between Adidas and Skechers over the “Skecherizing” of the Stan
Smith shoe, the District Court for the District of Oregon denied Skechers’ motion for summary
judgment finding that Adidas could show it has protectable trade dress in its well-known shoe
design because the design was recognizable to consumers and not functional. 4
The Stan Smith shoe became famous in 1972 when its namesake, Stan Smith, won Wimbledon
while wearing the shoes. Adidas sold approximately 40 million pairs of the Stan Smith shoe
worldwide since then, and in 2013, Adidas removed the Stan Smith shoe from the market to
increase demand. The Stan Smith shoe relaunched in 2014. In June 2014, Skechers, which is
well known for “Skecherizing” other brands’ shoes, began designing its Onix shoe. Both shoes
had a white upper, white sole and a green raised mustache-shaped colored heel patch, although
the Onix shoe featured a patch of perforations in place of the Stan Smith shoe’s three rows of
perforations.
To state a trade dress infringement claim under Section 43(a) of the Lanham Act “a plaintiff
must meet three basic elements: (1) distinctiveness, (2) nonfunctionality, and (3) likelihood of
confusion.” 5 Given the shoes’ similar appearances, Skechers did not dispute that there was a
likelihood of confusion. Instead, the decision turned on whether the Stan Smith shoe design was
distinctive and nonfunctional.
The Court considered the overall combination of trade dress elements and found that highly
specific descriptions of the trade dress elements were sufficiently definite to warrant trade dress
protection. Although evidence was introduced that occasional “special edition” shoes had
different characteristics or details, the Court found that because Adidas did not claim those other
designs under the Stan Smith trade dress in this case, it preserved its protection in the original
design.
The Court also found that the Stan Smith shoes signified Adidas in the minds of consumers and
had therefore acquired distinctiveness. The Court rejected Skechers’s argument that the overall
design was generic and functional due to third-party use of certain design elements, noting that
the key question in determining trade dress is the overall visual impression. Moreover, Skechers
argued because it had done a survey of consumers which concluded that the shoe had not
acquired distinctiveness— and that Adidas itself had performed no such survey—no genuine
4
Adidas America Inc. et al. v. Skechers USA Inc., 2017 WL 3319190, Case No. No. 3:15-cv-01741-HZ (D. Roe.
Aug. 3, 2017) (order granting in part and denying in part motion for summary judgment).
5
Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042, 1047 (9th Cir. 1998).
3issue of material fact existed. But the Court had already ruled earlier in the proceedings that
Adidas provided adequate evidence of acquired distinctiveness without a survey.
On the issue of functionality, the Court found that functional elements could become non-
functional over time when viewed with the rest of the trade dress as a whole. Although the Stan
Smith shoe was considered a performance tennis shoe at one point, the trade dress as a whole has
become nonfunctional. The Court took note of prior cases in which Adidas’s trade dress had
become nonfunctional despite evidence that it was once functional. Additionally, numerous
alternative designs were available but Skechers chose to deliberately clone the Adidas shoe.
Further, Adidas’s advertising focused on the shoe’s iconic style rather than any utilitarian
advantages. On the whole, the Court found the Stan Smith shoe trade dress was not functional.
The decision also addressed Skechers’ use of Adidas’ Three-Stripe Mark on other shoes finding
a genuine issue of material fact as to the likelihood of confusion and dilution of Adidas’ trade
dress, among other issues.
For brand owners looking to enforce their rights in iconic brands, this decision provides the
following takeaways:
• Clearly and concisely characterizing the protectable elements of trade dress is key, along
with emphasizing the importance of reviewing the overall trade dress as a whole. Photos
and diagrams are particularly helpful in reviewing the visual similarities.
• Consumer surveys may not be required if the brand owner shows other ample and
convincing circumstantial evidence of acquired distinctiveness.
• Enforcement strategies should be consistent across cases related to a brand and courts may
take judicial notice of strong evidence submitted in prior cases on the same brand.
Converse: Limits of Product Design Registration
In 2014, Converse Inc. filed a complaint with the International Trade Commission (“ITC”) alleging
infringement of various registered trademarks covering the product design of its “Chuck Taylor
All Star” shoe, including one mark for the midsole design (two stripes on the midsole, the design
of the toe cap, and the design of the toe bumper) and two marks for the outsole (the three-
dimensional diamond tread) by a number of competitors in the footwear industry. 6
Midsole mark `103 Outsole mark `960 Outsole mark
6
Certain Footwear Products, Inv. No. 337-TA-936, USITC pub. vers. at 3-4, 7-9 (July 6, 2016).
4While an ITC administrative law judge (“ALJ”) initially held that both the midsole and outsole
marks owned by Converse were valid, and thus that infringement of all alleged trademarks had
occurred, this decision was partly overturned in 2016. 7 Though, on review, the ITC agreed that the
outsole mark was valid, it found the midsole trademark to be invalid due to lack of a secondary
meaning, or acquired distinctiveness, and thus that there had been no infringement of the mark.
The ITC listed seven factors to consider in assessing whether a mark has acquired secondary
meaning: (1) the degree and manner of use; (2) the exclusivity of use; (3) the length of use; (4) the
degree and manner of sales, advertising, and promotional activities; (5) the effectiveness of the
effort to create secondary meaning; (6) deliberate copying; and (7) association of the mark with a
particular source by actual purchasers (typically measured by consumer surveys). 8
The ITC based its decision largely on two of the foregoing factors. 9 First, the ITC focused on the
existence of exclusivity. The ITC found that many of Converse’s competitors had simultaneously
used the midsole design for the last eighty years and promoted those goods to the same consumer
class, making the design non-exclusive. 10 Second, the ITC relied upon survey evidence showing
that at least a significant percentage of average consumers associated the midsole design with
multiple sources aside from Converse. 11 The ITC found these factors weighed against the
distinctiveness of the midsole mark, and thus issued an order solely preventing the importation of
products infringing the Converse outsole mark. 12 Converse has appealed this decision to the
Federal Circuit, which heard oral arguments in February 2018. 13
Thus far, the ITC’s ruling here underscores the difficulty a brand can face in establishing acquired
distinctiveness when the brand does not enforce its product design trademark in a consistent
manner over time. The court mentioned numerous examples spanning eighty years showing
significant third-party use of the midsole design, some examples tellingly within the same
advertisements as the Chuck Taylor design. 14 When the market becomes saturated with similar
designs, consumers do not have the chance to associate the mark with only one source and acquired
distinctiveness becomes all but impossible to prove. As such, while it is certainly the case the
product design, or trade dress, trademarks offer broader and more valuable protection to certain
brands, they are difficult to obtain and can be even harder to maintain over time.
Louboutin Cases: Trademark Protection of Color
It is no secret that the Christian Louboutin fashion house (“Louboutin”) has fought to protect its
red-soled high heels throughout the world. Louboutin first registered its product design trademark
for a red heeled shoe sole with the United States Patent and Trademark Office in 2008 (the “Red
Sole Mark”). 15 This mark included a drawing of the sole placement and color, along with a
7
Id. at 4.
8
Id. at 14.
9
Id. at 19–20.
10
Id. at 26.
11
Id. at 20.
12
Id. at 28.
13
As of the time of this publication’s submission, the court has yet to rule.
14
Id. at 20.
15
U.S. Registration No. 3,361,597.
5description of the “red lacquered outsole on footwear that contrasts with the color of the adjoining
(“upper”) portion of the shoe.” 16 The description claimed the color red as a feature of the mark. 17
`789 Red Sole Mark
In 2011, Louboutin sought a preliminary injunction against competing fashion house Yves Saint
Laurent (“YSL”) to prevent YSL from selling entirely-red shoes where both the upper and outsole
were red. 18 Louboutin asserted that YSL’s use of a “confusingly similar shade of red as that
protected by the Red Sole Mark” infringed its registered marks, and YSL counterclaimed seeking
cancellation of the Red Sole Mark on the grounds it was not sufficiently distinctive to warrant
protect as a trade dress, or product design, trademark. 19 The District Court for the Southern District
of New York denied the motion for injunction, citing the functionality doctrine which forbids the
use of a product’s feature as a trademark when the feature is “essential to the use or purpose of the
article.” 20 The court leaned heavily on a distinction from Qualitex Co. v. Jacobson Prods. Co., a
Supreme Court case which held color alone can be protectable by trademark if it has attained a
secondary meaning, but not when it is purely functional. 21
The Second Circuit Court of Appeals overturned the District Court’s ruling that a single color
could never be protected by trademark in the fashion industry. 22 Instead, the Second Circuit held
that the Red Sole Mark had in fact acquired secondary meaning, but should be limited to uses in
which the red outsole contrasts with the remainder of the shoe. 23 The case was then remanded for
evaluation of YSL’s counterclaims, and was shortly thereafter dismissed. 24
Mere months after resolution of this U.S. litigation Louboutin continued its fight on the other side
of the Atlantic, suing Dutch footwear company Van Haren in District Court of the Hague. In this
suit Louboutin alleges that certain products from a recent Van Haren shoe line infringe upon its
Red Sole Mark. 25 An appealed injunction ruling brought the case before Europe’s highest court,
the Court of Justice of the European Union (“CJEU”). In a nonbinding opinion, Advocate General
Szpunar of the CJEU classified the Red Sole Mark as a “shape mark” (i.e., signs which consist
exclusively of a “shape which gives substantial value to the goods”) rather than a “colour mark”
16
USPTO Registration No. 3,361,597.
17
Id.
18
Christian Louboutin S.A. v. Yves St. Laurent Am. Holding, Inc., 778 F. Supp. 2d 445, 449 (S.D.N.Y. 2011).
19
Id.
20
Id. at 453 (citing Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 169 (1995)).
21
Id.; see Qualitex, 514 U.S. at 168–69.
22
Christian Louboutin S.A. v. Yves St. Laurent Am. Holding, Inc., 696 F.3d 206, 212 (2d Cir. 2012).
23
Id.
24
Id. at 229; Order of Dismissal, Christian Louboutin S.A. v. Yves St. Laurent Am. Holding, Inc., 11-cv2381 (Dec.
27, 2012).
25
Case C-163/16, Christian Louboutin v. Van Haren Shoenen BV, 2017 E.C.R. 495.
6based on a finding that its source-identifying power stems from the color’s positioning on a
particular shape or location on the shoe. 26 Because EU trademark law does not protect shape
marks, Szpunar thus held the Red Sole Mark was not valid. 27
However, Louboutin earned a win just a few months later when Advocate General Szpunar’s
opinion was reviewed and reversed by the CJEU panel. Indeed on June 12, 2018, the CJEU ruled
that a mark consisting of a color applied to the sole of a shoe is not covered by the prohibition of
the registration of shapes because the mark does not consist “exclusively of a shape.” 28 The court
clarified the differences between non-protectable “shape marks” and protectable “color marks” by
saying that a shape is usually understood as a “set of lines or countours that outline the product
concerned,” while the color mark at issue did not “form part of the mark and [was] intended purely
to show the position of the red colour covered by the registration.” 29 After making this
determination, the CJEU then referred the case back to the District Court for the Hague to rule on
the initial allegation of trademark infringement. 30
The CJEU’s distinction between shape and color marks brings the court’s precedent more in line
with U.S. trademark law. Indeed, U.S. courts historically have not premised the protectability of
colors on an analysis of the shape(s) on which they appear. Rather, U.S. courts have consistently
evaluated the distinctiveness and functionality of color and shape separately, as source-identifying
colors are often necessarily intertwined with functional aspects of the products on which they
appear. 31 While the CJEU’s current position on the registration of “color marks” is certainly a step
forward for many industry members, its significance should not be overstated. Designers and
attorneys alike should remain aware of the importance of building and maintaining acquired
distinctiveness for marks of this type, both for purposes of registration and protection down the
line.
Crocs: Design Patents
Is a picture really worth a thousand words? Because the claims are defined by figures, courts
often wrestle with how to perform the legal task of claim construction for design patents. One
case that is often cited for its discussion of design patent claim construction is Crocs, Inc. v. Int’l
Trade Comm’n, 598 F.3d 1294 (Fed. Cir. 2010), a case involving breathable foam footwear
designs. In Crocs, the Federal Circuit cautioned against using a verbal construction as a
“checklist” for design patent infringement, reiterating that the ordinary observer test requires a
comparison of the patented and accused designs as a whole.
In the spring of 2006, Crocs, Inc. (“Crocs”) filed a petition with the U.S. International Trade
Commission (“ITC” or “Commission”) against eleven respondents for unfair competition in
violation of 19 U.S.C. § 1337, alleging that they had imported foam footwear that infringed both
its utility and design patents—specifically, U.S. Patent No. 6,993,858 (the “’858 patent”) and
26
Christian Louboutin v. Van Haren Shoenen BV, 2017 E.C.R. 495, at Paragraph 22.
27
Id. at Paragraph 5 (citing Council Directive 2008/95, art. 3, 2008 O.J. (L 299) 25 (EC)).
28
Case C-163/15, Christian Louboutin v. Van Haren Shoenen BV, 2018 E.C.R. 423, at Paragraph 28.
29
Id. at Paragraphs 24–25.
30
As of the time of this article’s submission this ruling has yet to be released.
31
Qualitex Co.., 514 U.S. at 162-63.
7U.S. Patent No. D517,789 (the “’789 patent”). The ’789 patent is titled “Footwear,” and claims
an ornamental footwear design as depicted in the following figures:
On April 11, 2008, after an evidentiary hearing, the administrative law judge issued an Initial
Determination finding no violation of section 1337 with respect to the ’789 patent, because (1)
Crocs failed to meet the technical prong of the domestic industry requirement, and (2)
8respondents did not infringe. 32 In reaching that conclusion, the administrative judge provided
the following detailed verbal claim construction for the patented design:
In summary, when the ’789 patent is considered as a whole, the visual impression
created by the claimed design includes: footwear having a foot opening with a
strap that may or may not include any patterning, is attached to the body of the
footwear by two round connectors, is of uniform width between the two round
connectors, has a wrench-head like shape at the point of attachment, and extends
to the heel of the shoe; with round holes on the roof of the upper placed in a
systematic pattern; with trapezoid-shaped holes evenly spaced around the sidewall
of the upper including the front portion; with a relatively flat sole (except for
upward curvature in the toe and heel) that may or may not contain tread on the
upper and lower portions of the sole, but if tread exists, does not cover the entire
sole, and scalloped indentations that extend from the side of the sole in the middle
portion that curve toward each other. 33
Crocs petitioned for review, and the Commission affirmed both findings on July 25, 2008. 34 The
Commission effectively based its opinion on a comparison of the accused designs to the detailed
verbal claim construction, finding that those designs lacked certain elements described by the
administrative judge. Crocs appealed, and the Federal Circuit reversed, stating that it “has
cautioned, and continues to caution, trial courts about excessive reliance on a detailed verbal
description in a design infringement case.” 35
The Federal Circuit reiterated that the ordinary observer test for design patent infringement
requires a showing that “an ordinary observer, familiar with the prior art designs, would be
deceived into believing that the accused product is the same as the patented design.” 36 “If the
claimed design is close to the prior art designs, small differences between the accused design and
the claimed design assume more importance to the eye of the hypothetical ordinary observer,”
but that observer “will likely attach importance to those differences depending on the overall
effect of those differences on the design.” 37 Importantly, this test applies to the design in its
entirety, and “the deception that arises is a result of the similarities in the overall design, not of
similarities in ornamental features in isolation.” Thus, minor differences between the two
designs cannot defeat infringement. 38
According to the Federal Circuit, the administrative law judge and Commission relied too
heavily on a detailed verbal description as a “checklist” for deciding infringement—and an
inaccurate one at that. The error in the Commission’s ways was evidenced by its “explicit
32
Crocs, 598 F.3d at 1301. To meet the technical prong of the domestic industry requirement under section 1337, a
complainant must establish the existence of domestic products that embody the asserted patent. Thus, the test for
the technical prong “is essentially the same as that for infringement, i.e., a comparison of domestic products to the
asserted claims.” Id. at 1306-07 (citing Alloc, Inc. v. Int’l Trade Comm’n, 342 F.3d 1361, 1375 (Fed. Cir. 2003)).
33
Id. at 1301.
34
Id. at 1302.
35
Id. (citing Eqyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed. Cir. 2008) (en banc)).
36
Id. at 1303.
37
Id.
38
The Crocs court cited to another shoe design case—Payless Shoesource, Inc. v. Reebok Intern. Ltd., 998 F.2d 985,
991 (Fed. Cir. 1993)—for this proposition.
9reference to two details required by the written claim construction but not by the ’789 drawings:
(1) a strap of uniform width, and (2) holes evenly spaced around the sidewall of the upper.” 39
The Federal Circuit held that what the Commission should have done to apply the ordinary
observer test in this case was a side-to-side comparison of the figures of the ’789 patent and the
accused designs, such as the one depicted below: 40
Based on these comparisons, the Federal Circuit held that “the accused products embody the
overall effect of the ’789 design in sufficient detail and clarity to cause market confusion,” and
found infringement. 41 Using a similar side-by-side comparison to Crocs’ own products, the
Federal Circuit also held that the technical prong of the domestic industry requirement had been
met. On remand, the Commission found a violation of section 1337 and issued general exclusion
and cease and desist orders. 42
As the Crocs case demonstrates, there is often a battle between the parties to a design patent case
about whether a detailed verbal construction is necessary. Parties that want to focus the
factfinder on particular elements of a claimed design will often advocate for a detailed verbal
description, but they should do so with caution. Any verbal description should aid a visual
39
Id. at 1303.
40
Id. at 1304-06.
41
Id. at 1306.
42
The battle over these colorful plastic shoe designs did not end here, and the Crocs case shows that design patent
battles can be fought on multiple fronts. In 2012, one of the respondents in the ITC investigation filed for inter
partes reexamination of the ’789 patent. And in 2017, the USPTO invalidated that patent. The respondents then
sought modification of the ITC’s orders, but that request was denied and the orders remained in effect.
10comparison between the patented and accused designs as a whole, not distract from it. Whether
you love them or hate them, Crocs shoes certainly left their mark on design patent law.
Conclusion
The Adidas, Converse, Louboutin, and Crocs cases provide helpful illustrations of certain
protection that trademark and design patent law can offer the shoe industry. These cases seem to
indicate a willingness by courts—both at home and abroad—to examine trade dress, or product
design, trademarks within preexisting legal frameworks and to maintain a focus on consumer
understanding to determine warranted protection. These recent rulings have confirmed courts’
inclination to protect product design marks (including the design or color of a shoe sole) so long
as they have acquired secondary meaning and are not merely functional. The rulings have also,
however, made it abundantly clear how easily brands can lose these otherwise-distinctive marks if
they fail to consistently monitor and object to competitors’ infringing product designs. Given the
high risk, high reward nature of this protection it is likely that, as with their designs themselves,
designers will continue to push the boundaries of the protection available to their creations.
Stay tuned for next season.
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