Fashion Designs

Fashion Design Bill Approved for Consideration by U.S. Senate

December 6, 2010

New protections for fashion designs may be on the horizon, as the Judiciary Committee has approved a modified version of the Innovative Design Protection and Piracy Prevention Act (the IDPPPA) for consideration by the Senate. The IDPPPA would amend § 1301 et sec. of the copyright statute (Title 17) to include provisions expressly protecting fashion designs. Presently, Title 17 is limited to protecting the design of a vessel hull, which is defined as the frame or body of a vessel, including the deck.

The IDPPPA is being advocated as necessary to address the problem of piracy in the fashion design world. Several well-known fashion designers, the Council of Fashion Designers of America, and the American Apparel and Footwear Association have thrown their weight behind the IDPPPA, with the Council of Fashion Designers hosting a website called www.stopfashionpiracy.com to promote and track its progress.

Polo Ralph Lauren is on the Table

May 19, 2011

Brandon Judkins filed a complaint May 16, 2011, case number 1:11-cv-00661, in the U.S. District Court for the Southern District of Indiana, alleging Polo Ralph Lauren Corporation has infringed U.S. D591,090.

The following images are reproduced from pages 4-5 of the complaint, where line drawings from U.S. D591,090 are shown on the left, and the top image and the right images are photos personally taken by Mr. Judkins at stores in Indianapolis, Indiana.

Déjà vu - Crocs sues Skechers for Design Infringement

May 24, 2011

In December of 2008, Crocs Inc. and Skechers Inc. agreed to settle patent litigation (case number 1:08-cv-01450, in the U.S. District Court for the District of Colorado) concerning U.S. D517,789, U.S. D564,208 and U.S. D564,207. That patent litigation concerned a line of slip-on foam clogs made by Skechers, which Crocs alleged infringed the patents.

On May 20, 2011, Crocs filed a complaint and initiated a new suit against Skechers, case number 1:11-cv-01330, in the U.S. District Court for the District of Colorado. Crocs alleges the Swifts line introduced in the summer of 2010 by Skechers is an “obvious imitation” of Crocs’ original shoe design for the CROCBAND^TMmodel footwear, which is protected by U.S. D610,784. Crocs also alleges Skechers breached a settlement agreement of September 23, 2010, stemming from Crocs’ contact with Skechers’ around the time the Swifts line was introduced.

H.R. 2511 - IDPPPA Hearing - July 15, 2011

July 15, 2011

As we previously posted, the Subcommittee on Intellectual Property, Competition and the Internet held a Hearing on H.R. 2511 on July 15, 2011, concerning the Innovative Design Protection and Privacy Prevention Act.

The Hearing started just after 10:00 AM, and the following witnesses provided brief testimonies:

Vibram asserts minimalist footwear patents

July 20, 2011

Vibram has filed a complaint against Fila USA Inc. in the District of Massachusetts alleging infringement of Design Patent Nos. D579,181 ("the '181 patent") and D582,134 ("the '134 patent), and U.S. Utility Patent No. 7,805,860. According to the complaint, Vibram markets the popular FiveFingers footwear products, which fill the need for "footwear... which allows independent intrinsic movement of the feet, and particularly the toes... and yet which still provides coverage and protection to the toes... ."

Vibram alleges Fila's skele-toes products infringe the '181 and '134 patents. A copy of the comparison provided on page 7 of the complaint is reproduced below.

Crocs, Inc. files complaint against Walgreen Co. alleging footwear design infringement

November 18, 2011

Crocs, Inc. filed a complaint against Walgreen Co. in the U.S. District Court for the District of Colorado on November 11, 2011. The complaint alleges that Walgreen “manufactures, uses, offers for sale, sells, and/or imports molded footwear throughout the United States” that infringe a design patent (U.S. Patent No. D610,784, hereinafter “the ‘784 patent”) and a utility patent (U.S. Patent No. 6,993,858 B2) assigned to Crocs. In particular, the complaint alleges that the “Caribbean Cartel” footwear sold by Walgreen are “obvious imitations of well-known and successful Crocs styles.” Although the specific designs of the alleged infringing footwear are unknown, images of Caribbean Cartel The Lost Pirates footwear, taken from eBay.com (last visited Nov. 16, 2011), are shown below. Figure 1 from U.S. D610,784 is shown to the right.

Skechers files a complaint alleging footwear design infringement

February 7, 2012

Skechers U.S.A., Inc. filed a complaint against The Children’s Place Retail Stores, Inc., on February 2, 2012 (case number 2:2012-cv-00928 in the U.S. District Court for the Central District of California) alleging that Children’s Place manufactures, imports, sells, and offers to sell a line of footwear that “embodies and infringes the patented invention” disclosed in Skechers’s U.S. Design Patent D571,095.

The design patent at issue claims the ornamental design for a “crystal-covered show toe cap,” shown below.

OAKLEY FILES SUIT AGAINST UVEX OVER SUNGLASSES PATENTS

February 10, 2012

Oakley, Inc. (“Oakley”) filed suit against Uvex Sports, Inc. (“Uvex”) on February 3, 2012, in the in the U.S. District Court for the Central District of California. Oakley alleges that certain Uvex products infringe U.S. patent no. 5,638,145 (“the ‘145 patent”), D557,325 (“the D325 patent”), or D556,818 (“the D818 patent”).

Specifically, the Complaint lists Uvex’s Rage product as infringing the D325 patent. One of the commercially available Uvex Rage glasses is shown below to the left, with Fig. 1 of the D325 patent to the right.

NIKE files a complaint alleging footwear design infringement

February 10, 2012

NIKE, Inc. filed a complaintagainst QiLoo International Limited, a Chinese company, on February 6, 2012 (case number 2:2012-cv-00191 in the U.S. District Court for the District of Nevada), alleging infringement of 23 U.S. design patents, listed below.

D361,884 D500,585 D546,541 D578,294

Oakley drops utility patent claims and proceeds with design claim following Markman hearing; court declines to construe the design claim

March 12, 2012

On March 5, 2012, Oakley entered into a Covenant Not to Sue either Predator Outdoor Products or Hunter Specialties under U.S. utility patent 5,387,949 (“the ‘949 patent”). The covenant not to sue was executed on the same day as the Markman hearing in the matter of Oakley v. Predator Outdoor Products et al. (case no. 8:2011-cv-00456, in the U.S. District Court for the Central District of California).

As we previously reported, Oakley originally alleged infringement of both the ‘949 patent and the U.S. design patent D523,461 (“the D461 patent”). However, as a result of the covenant not to sue under the utility patent, the D461 patent is currently the only remaining patent at issue in this case.

Fashion Design Bill - Innovative Design Protection Act of 2012

September 26, 2012

The Senate Judiciary Committee has approved S. 3523. The companion bill in the House, HR 2511, which was the subject of our prior post concerning the Innovative Design Protection and Piracy Prevention Act, is pending and has been referred to the Subcommittee on Intellectual Property, Competition and the Internet.

Ugg! Deckers' Design Patent Infringement Claim Is Not Kicked to the Curb

September 15, 2014

On September 8, 2014, Judge Otis D. Wright, II, U.S. Dist. Ct., C.D. Calif., issued an Order keeping alive a claim for design patent infringement while booting other asserted claims in a Motion to Dismiss under F.R.C.P. 12(b)(6). See Deckers Outdoor Corp. v. J.C. Penney Co., Inc., C.D. Cal., Case No. 2:14-cv-02565-ODW(MANx) (“Order Granting in Part Motion to Dismiss with Partial Leave to Amend,” Doc. 30, Sept. 8, 2014).

Deckers Outdoor Corporation (“Deckers”) is known for its famous UGG® sheepskin and suede boots, among other products, sold online and at retail stores throughout the U.S. According to Deckers, its UGG® line of boots began a metaphorical ascent into the stratosphere after being featured on Oprah Winfrey’s television show in 2000, when Oprah supposedly “emphatically declared … how much she ‘LOOOOOVES her UGG boots.’” See First Amended Complaint, Doc. 18, ¶ 12. This ascent continued, as many well-heeled celebrities embraced the boots and were photographed wearing them. With such a stamp of fashion approval, one can easily understand that Deckers would do whatever it could to protect its valuable image, brand, and products from harm by imitators seeking to capitalize on Deckers’ success.

Oakley v. 7-Eleven

July 13, 2015

Oakley, Inc. (“Oakley”) filed suit against 7-Eleven, Inc. (7-Eleven) on June 25, 2015 in the District Court for the Southern District of California. In its Complaint, Oakley alleges that certain products sold and/or offered for sale at 7-Eleven stores infringe the following design patents:

Nike Files Suit Against Skechers Alleging Infringement of Eight Design Patents

February 1, 2016

NIKE, Inc. (“Nike”) filed suit against Skechers U.S.A., Inc. (“Skechers”) on January 4, 2016 in the United States District Court for the District of Oregon, Portland Division, seeking to recover damages and costs from Skechers. In the complaint, Nike alleges Skechers infringes eight Nike design patents issued between January 7, 2014 and March 31, 2015 pertaining to shoe “uppers” and shoe soles (see Table 1 below from the complaint).

Nike Files Suit Against Fujiann Bestwinn Alleging Design Patent Infringement

March 11, 2016

NIKE, Inc. (“Nike”) filed suit against Fujiann Bestwinn (China) Industry Co., Ltd. (“Bestwinn”) on February 17, 2016 in the United States District Court for the District of Nevada, alleging infringement of a number of Nike’s design patents for various aspects of athletic shoes.

In the complaint, Nike alleges Bestwinn infringes its design patents by attending the WSA trade show in Las Vegas, Nevada at least twice yearly and promoting and selling the infringing shoes.

The patents detailed in the suit include eighteen Nike design patents issued between April 26, 2011 and December 29, 2015 pertaining to Nike's shoe designs (see Table 1 below from the complaint).

Ugg! Deckers Doesn’t Want Anyone To “Muk” Around With Their Design Patent

February 16, 2018

A few years ago, I wrote an article (available here) about Deckers’ mixed success in a 2014 lawsuit against retailers JC Penney, Wal-Mart, Sears, and Dreams Footwear, for design patent infringement, trade dress infringement, and unfair competition, among other asserted causes of action, in the U.S. District Court, Central District of California. Since then, Deckers has tangled its laces with many other defendants over similar issues—the majority of which were before the same court.

Well, Deckers hiked back to court on Valentine’s Day to profess that there is no love for those who might tread on their design patents. Deckers laced up another five pronged Complaint—this time against Reliable Knitting Works, Wal-Mart Stores, Inc., and 10 other unnamed defendants—and filed suit in the Central District of California. See Deckers Outdoor Corp. v. Reliable Knitting Works and Wal-Mart Stores, Inc., C.D. Cal., Case No. 2:18-cv-01217 (Feb. 14, 2018).

I burn, burn like a wicker chair; chalk white and oh-so frail…

September 16, 2019

The title above refers to a lyric from a 1998 song by Eve 6, although they used the word “cabinet” instead of “chair.” While this simple substitution of a word on my part is designed to evoke an image, the choice of words and the image evoked* can mean so much more in the world of design patents.

Yesterday, in Curver Luxembourg v. Home Expressions (Fed. Cir. Appeal No. 18-2214), the U.S. Court of Appeals for the Federal Circuit affirmed a District Court of New Jersey decision against plaintiff-appellant Curver Luxembourg. Curver sued Home Expressions for infringement of U.S. Design Patent No. D677,946, asserting that Home “makes and sells a basket that is identical to Curver’s basket in every way, including incorporating the patented overlapping “Y” design.” Home countered that its baskets could not possibly infringe Curver’s design patent, because the patent claim was limited to a chair. The district court agreed and dismissed the case, reasoning that Curver’s “original application was for a design on furniture. And what Curver got, as opposed to what it asked for, was a patent that protects against infringement for a particular “Y” design on chairs only.” Here, “in a case of first impression,” the Federal Circuit also agreed, holding that the scope of Curver’s U.S. design patent was limited to “an ornamental design for a pattern for a chair,” such that it did not read on Home’s baskets.