United States: Athletic Shoe Lawsuits Are Off And Running

Sneakers have been around for a very long time – at least since the late 1800's. The first patent for a rubber heel for shoes was granted in 18991, and the first patent for "athletic shoes" issued in 19212, although it related to spikes on the sole of the shoe, rather than the rubber sole that we now associate with sneakers. In 1917 Keds became the first mass-marketed shoe called a "sneaker." The Converse "All Star," which became the Chuck Taylor, was introduced in the same year, but as a basketball shoe.

Athletic shoes have come a long way since then. And with their gains in popularity, so have the money associated with them, and the lawsuits related to them.

Converse Lawsuits

Converse, which has been owned by Nike since 2003, introduced the newly designed classic Chuck Taylor, the black fabric shoe with the star, the white rubber toe, and black stripes, in 1949. More than 800,000,000 pairs have been sold since then, making them the best-selling basketball shoe of all time.

With that kind of popularity, it's not surprising that other companies eventually included familiar elements of the Chuck Taylor shoe in their own shoes.

On October 14, 2014, Converse filed 22 lawsuits in the United States District Court for the Eastern District of New York, alleging trademark infringement against 31 companies3 – some large and well known, and others from Asia with little name-recognition. The trademarks relate to the brand's midsole and outsole, as well as common-law trademark rights obtained by long-term use. While the suits seek money damages, Converse also filed a separate complaint with the International Trade Commission (ITC). While the ITC cannot award damages, it can stop the importation of any shoes found to be counterfeit.

Just because a sneaker looks similar to another, however, is not enough to show trademark infringement. Companies cannot protect the functional aspects of their designs, and must prove that consumers associate the design with the source of that design. Essentially, Converse must prove that the Chuck Taylor has almost reached iconic status.

In January of 2015, Ralph Lauren reached an out-of-court settlement with Converse, and several more settlements followed. Some other lawsuits were voluntarily dismissed. Other suits remain pending.

In November, 2015, the ITC judge agreed that Converse had an intellectual property right in the Chuck Taylor shoes, and some footwear brands violated its trademark. The ITC judge issued a recommendation of a general exclusion order to prevent that footwear from entering the U.S.

New Balance Athletic Shoe Inc., the owner of PF Flyers, filed a lawsuit against Converse seeking a declaratory judgment that "Converse does not have the exclusive right to use a toe bumper, toe cap and striped midsole in connection footwear," and that New Balance can continue selling PF Flyers with those characteristics. The suit, filed in 2014, also asks for cancelation of Converse's federal trademark registration for the toe bumper, toe cap and striped midsole4 "because the claimed features are either ornamental or functional and cannot serve as a source identifier."

Nike Lawsuits

Flyknit (Adidas) – 2012

Nike introduced its Flyknit Sneakers in February of 2012 after years of development. Adidas Primeknits were introduced in July of 2012, also after years of development. The knit shoes are lighter than previous shoes, and are claimed to provide a precision fit, creating a feeling of a second skin. Additionally, the shoe manufacturer is able to keep costs down as the one-piece upper can be knit in a way that leaves little or no waste. Claiming that its patent was a "game changer," Nike accused Adidas of patent infringement. Nike's patent was for an "Article of footwear having a textile upper.5 The claims recite a knitted textile shoe upper with various seams.

After Nike lost a related patent infringement case in Germany, Adidas filed a petition for inter partes review with the U.S. Patent Trial and Appeal Board (PTAB) on the Nike Patent. On May 17, 2013, The PTAB authorized the IPR to be instituted. The final decision of the PTAB granted Nike's motion to cancel its claims, and denied Nike's motion to amend, determining that Nike failed to meet its burden of establishing patentability of the proposed substitute claims. Nike appealed the PTAB decision to the Federal Circuit, and the that decision issued on February 11, 2016. The Federal Circuit affirmed the PTAB final decision that Nike had the burden to establish patentability over the prior art of Nike's proposed substitute claims, and remanded for a consideration of Nike's evidence of long-felt need, noting that the PTAB's final written decision did not discuss or even acknowledge secondary considerations of nonobviousness. Additionally, the case was remanded for a determination of whether or not two proposed substitute claims, both proposed to replace a single claim, were patentably distinct from each other, and if so whether each was independently patentable, and whether the two proposed claims were a reasonable number for the originally issued single claim. In other words, Nike obtained a second chance to convince the PTAB that some of its patent should survive.

Whether or not Adidas is ultimately able to beat Nike in Federal Court, it is losing in the court of public opinion. In a recent survey, Nike's most successful Flyknit style was the 17th most popular running shoe with men, and 20th most popular with women. Adidas Primeknit was not even on the list of the top 250.

Trade Secrets – 2014

In September of 2014, Adidas announced that it hired three senior designers away from Nike. The three were considered among Nike's best, having led the development of the global soccer footwear program, the creation of the Flyknit Magista, signature sneakers for LeBron James, Kevin Durant and Kobe Bryant, and other shoes.

Two months later, in December of 2014, Nike filed a lawsuit against the designers accusing them of violating the non-compete agreements they signed at Nike, and taking trade secrets such as unreleased product designs and marketing plans. The day after filing suit, Nike won a temporary restraining order against the designers. The designers counterclaimed, accusing Nike of breach of privacy. The lawsuit settled in mid-2015, and prevented the three from working for Adidas until their non-compete agreements expired.

Jumpman – 2015

In addition to the iconic "swoosh," Nike's Jordan Brand sneakers and clothing can also be recognized by the "Jumpman" logo, based on the silhouetted image of Michael Jordan jumping with a basketball in his hand.

The Jumpman logo has been used by Nike since 1987. In 2015, almost 30 years later, and after billions of dollars in Nike sales, a photographer named Jacobus Rentmeester filed suit against Nike, claiming that the Jumpman logo was based on his 1984 photograph for Life magazine. Nike had licensed Rentmeester's photo for $15,000 for "slide presentation only, no layouts or any other duplication." The invoice for the $15,000 payment indicated that the photo was to be used "for North America only" for two years, with all other rights reserved by Rentmeester. Nike quickly responded to Rentmeester's lawsuit with a motion to dismiss the lawsuit stating "Rentmeester does not have a monopoly on Mr. Jordan, his appearance, his athletic prowess, or images of him dunking a basketball." Of course, the question is whether or not the image used by Nike was based on Rentmeester's copyrighted work.

A silhouette of Rentmeester's image is on the left. The Nike Jumpman logo is on the right.

Rentmeester, the photographer, lost at the District Court, and the case is now before the 9th Circuit Court of Appeals.

Flyknit (Sketchers) – 2016

In January, 2016, Nike filed a lawsuit accusing Sketchers of infringing eight design patents used in Nike Flyknit shoes, and requesting a permanent injunction. Three of the design patents relate to the shoe upper, and five relate to the shoe sole.

In its lawsuit, Nike claims Sketchers is selling shoes that infringe eight Nike design patents issued to the company in the last two years.

The "overall appearance of the designs of the Nike patents and the corresponding designs of Sketchers' infringing shoes are substantially the same," Nike said in the lawsuit, which was filed in federal court in Portland.

The complaint shows the patent figures and the allegedly infringing shoes:

Nike wants a judge to order Sketchers to stop selling the allegedly infringing products. It also seeks additional remedies, including the profits from sales of the products.

Vibram USA

Even the smaller players are finding themselves in shoe IP lawsuits. In 2015, Vibram, the manufacturer of "Bikila" FiveFinger running shoes, designed to make the runner feel barefoot, was sued by the family of Ethiopian Olympic marathon champion, Abebe Bikila. Bikila shot into fame after winning the Olympic marathon, barefoot, in 1960. He won the gold medal in the marathon in 1964, as well, but wore shoes that time.

The lawsuit claimed that Vibram used the Bikila name without permission and violated a personality rights statute, Bikila's family requested a permanent injunction and also that Vibram be prevented from completing any pending trademark applications using the name, and transfer Vibram's trademark "Bikila."

Also of note, Vibram settled a class action lawsuit against its FiveFingers running shoes in 2014. The settlement required Vibram to place $3.75 million in an escrow account for distribution to class members, and to discontinue making claims that FiveFingers shoes are effective in strengthening muscles or reducing injury.

The Future

The athletic shoe market is growing, and everyone from athletes, to those of us who toil at a desk all day, wants to own a pair of shoes that will make us "run faster and jump higher6." As long as the market remains hot, so will litigation between the market members.

Footnotes

1 U.S. Pat. No. 618,127 issued to Humphrey O'Sullivan, January 24, 1899.

2 U.S. Pat. No. 1,392,704 issued to Spalding & Bros. of New York, October 4, 1921.

3 Including Skechers, Kmart, Ralph Lauren, Tory Burch, Zulily, Aldo Group, Fila, H&M and assorted others

4 U.S. Reg. No. 4,398,753

5 U.S. Pat. No. 7,347,011 B2

6 The slogan of BF Goodrich's PF Flyers, one of the most popular shoes in America in the 1960's.

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