New Year, Same Lawsuits

As tempting as it is to say “new year, new lawsuits,” that’s only partially true.

Because while a slew of new suits will surely be filed in 2018, there are still plenty of pending cases that are worth watching even though they have yet to be decided.

One big theme in a number of pending cases is fashion. From shoes to jewels, there’s a suit, countersuit, or appeal coming up that could have big implications for other players in the fashion industry. And it’s no wonder: something so visually driven invites all kinds of trademark and design issues.

Here are a few cases we’re keeping an eye on this year.

  • Adidas sues Skechers… again.

Skechers is no stranger to lawsuits. In its 25 years of existence, the company has been taken to court more than once by both Nike and Adidas for knocking off their designs.

Chalk it up to Skechers’ “fast fashion” approach to doing business. Rather than spending a lot of money researching and developing innovations for their sneakers, Skechers takes a different tack. The company waits for the bigger shoemakers to test new shoe designs out first. Skechers then manufactures its own version of the shoes that are successful in the marketplace.

In spite of the numerous suits the company has had to defend against, the business model seems to be working for Skechers. The company surpassed Adidas to become the number-two selling athletic shoe company in the US in 2015.

Having entered into several settlement agreements since 1995, it seems that another could be on the horizon for these two parties. At the center of the dispute is Adidas’ “Springblade” technology which is intended to help propel runners forward.

The distinctive design was introduced in 2013. Skechers began offering its own modified version before Adidas received patents for the Springblade concept in 2016. Because of the timing, the court last summer found no willful infringement on behalf of Skechers and turned down Adidas’ request for a preliminary injunction.

The case was put on hold late last summer so the U.S. Patent and Trial Appeal Board could decide other issues related to the case. The trial is expected to move forward in April 2018 – unless, of course, the parties settle (again).

  • Converse is trying to regain its rights in its trade dress.

For many shoppers, the Converse brand’s iconic shoe designs with a toe cap, bumper, striped midsole, and diamond-patterned soles have been around for more than their entire lives. The question is, when you see these elements on an athletic shoe, do you automatically think of Converse?

The company says yes, you probably do. With that in mind, Converse filed an infringement suit a few years ago against 31 entities including the likes of Walmart, New Balance, and other household names.

During the proceedings, the International Trade Commission (“ITC”) found that, aside from the patterned soles, the other elements at the heart of the suit weren’t protectable as trade dress. (Trade dress is a product’s overall appearance. Just as someone can have legal rights in a trademark, they can also have rights in trade dress.) This was a major victory for the defendants.

But Converse isn’t going away quietly. The Nike subsidiary is battling the ITC to have its design features recognized as protectable trade dress. Arguments are scheduled to be heard by the Federal Circuit appellate court in February.

Christian Louboutin (whose red-soled shoes enjoy legal protection) and Tiffany & Co. (whose “Tiffany blue” boxes are also protected) have filed amicus briefs for the court to consider. These are briefs submitted by nonparties who have an interest in the subject matter and want to provide additional, relevant information.

These companies argue that the ITC’s decision, if allowed to stand, sets a dangerous precedent that could upend trademark and trade dress law as we know it.

  • Speaking of Tiffany & Co., Costco is appealing the court’s verdict in favor of the jeweler.

Sound familiar? These parties have been embroiled in litigation for five years (though you wouldn’t be alone if you think it feels much longer).

Tiffany sued over Costco’s sale of what the retailer described as “Tiffany” diamond rings. Costco argued that the “Tiffany setting” is a generic description for a type of ring setting. While the argument has some validity, Costco’s display cases said “Tiffany” as a standalone term, which could be misleading as to the origin of the rings.

Tiffany prevailed, and the court last fall ordered Costco to pay $19.4 million. But the case isn’t closed because Costco appealed. The parties are due to meet in court again later this year. If Costco is successful in its appeal, the decision could loosen the rules regarding how you can describe your product.

But more than just the Tiffany suit, all three cases have the potential to have a big impact. We’re looking forward to seeing how they play out, and we’ll be sure to keep you posted about their outcomes could affect you.

Do you have any questions about a trademark, patent, or copyright matter? Our firm, located in Boca Raton, Florida, focuses on intellectual property and entertainment law and would be happy to discuss it with you. Call or contact us via website inquiry form to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

Original article posted on our dedicated blog on January 16, 2018