Puma v. Forever 21

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In March 2017, Puma filed a lawsuit against Forever 21 in the District Court of California, US,
claiming that the brand Forever 21 infringed on Puma’s plan patent, exchange dress, and
copyright by duplicating its Fenty shoe range. Since Puma’s Creeper Sneaker, Fur Slide, and
Bow Slide were designed by renowned Barbadian vocalist Robyn Rihanna Fenty, these
sneakers and slip-on shoes have been dubbed “Fenty shoes.”

Facts of the case

• Rihanna, the world-renowned music artist, had served as the Women’s Creative Director
  for Puma clothing and footwear since December 2014. Rihanna has served as a brand
  ambassador for Puma’s “Fenty” label in this capacity. As the Fenty products were luxury items,
  Puma kept the volume small and the sales limited in order to create desirability not only for the
  Fenty products but also for the Puma brand.
• Puma created and released the Puma by Rihanna ‘Creeper’ Sneaker in 2015 as part of
  this footwear line. The overall design of the shoe, which includes suede uppers and a thick
  rubber outer sole with ridged tooling and a grainy texture, distinguishes the “Creeper” from other
  footwear on the market.
• Puma released the “Fur Slide” sandal in April 2016, following the success of the
  “Creeper.” In March 2017, the “Fur Slide” was followed by the “Bow Slide.” Puma’s “Creeper”
  sneaker, “Fur Slide” and “Bow Slide” sandals (collectively known as the “Fenty Shoes”) have
  achieved significant and notable success.
• The Fenty Shoes have also received significant uninvited media attention, including
  coverage in Vanity Fair, W Magazine, Allure, Vogue, and Harper’s Bazaar.
• Puma’s Fenty Shoes are protected by a variety of intellectual property rights. To protect
  its intellectual property in Fenty Shoes, Puma has a robust international enforcement
  programme.
• Puma recently obtained an injunction against the German retailer Top Shop, preventing
  it from selling knock-offs of the Fenty Shoes. Forever 21 blatantly copied (or “knocked-off”) each
  of these shoes in order to capitalise on the substantial goodwill of Puma, Rihanna, and the
  Fenty Shoes.Forever 21 had released a variety of shoes under its image name.
• Later in March 2017, Puma filed a lawsuit against Forever 21 in a District Court in
  California, the United States, claiming that the designs of the shoes produced by Forever 21
  were similar to those of Puma’s Creeper Sneaker, Fur Slide, and Bow Slide under the Fenty
  assortment. As a result, they had infringed on Puma’s plan patent.

The causes of action were as follows:

• Design patent infringement;
• Federal Trade dress infringement;
• Copyright infringement;
• Federal false designation of origin; and
• State unfair competition.

Issue:
Should Forever 21’s motion to dismiss be granted?

Judgement:

• The Court upheld Puma's claims of infringement of its design patent in the 'Creeper Sneakers'
  as it was of the view that the dissimilarities between the contending sneakers, as pointed out by
  Forever 21, were too less for any ordinary observer to differentiate between the designs.
• For a claim of trade dress, the design should have an aesthetic value over and above, or
  irrespective of its utility (usefulness)/ function. Puma's claim for trade dress was contested by
  Forever 21 stating that the elements claimed as part of the trade dress do not have any 'source
  identifying distinctive qualities' as a lot of other brands sold similar footwear. The Court
  dismissed Puma's claim of trade dress as it could not sufficiently prove the non-functionality.
• Lastly, Puma has also alleged copyright infringement of the Fenty shoes which were the subject
  of 3 copyright applications. Parties alleging copyright infringement must possess, inter alia, a
  valid copyright ownership. Forever 21 had also tried to bring the singer Rihanna into the
  litigation stating that Rihanna has been advertised as the designer of said products but has not
  been named in the copyright applications.
• It has been reported in November 2018 that, after 2 years of tedious litigation and each side
  winning and losing its fair share, the parties have agreed to settle the dispute. The high-end
  fashion industry has kept Forever 21 in news with numerous infringement suits such as those by
  Adidas, Gucci, Foley etc. to name a few, for copying designer garments and selling their
  cheaper versions at retail.