On the heels of reports that Forever 21 is offering lookalike versions of footwear from Rihanna’s Fenty line for Puma, the German sportswear giant has slapped the copycat retailer with a design patent, trade dress, and copyright infringement lawsuit. According to Puma’s suit, which was filed late last week in the U.S. District Court for the Central District of California, the Los Angeles-based fast fashion brand has copied three of the most prominent footwear designs from Rihanna’s collection for Puma in attempts to “trade on the substantial goodwill of Puma, Rihanna, and the Fenty shoes.”
Puma alleges in its suit that in light of the “immense popularity and acclaim” of its Rihanna line of footwear, Forever 21 – a notorious copycat – has taken to copying its designs, namely, the Creeper, Fur Slide and Bow Slide styles. In connection with the aforementioned designs, Puma asserts claims of trade dress and copyright infringement. Additionally, the sportswear giant claims that Forever 21’s copies of the Creeper give rise to a design patent infringement claim, as well, in connection with U.S. Patent No. D774,288.
As set forth in Puma’s complaint: “Puma’s ‘Creeper’ sneaker and ‘Fur Slide’ and ‘Bow Slide’ sandals have enjoyed substantial and noteworthy success, and are currently being sold in both brick-and-mortar stores and online retailers, such as Neiman Marcus, Nordstrom’s, Urban Outfitters, and Bloomingdales, among others.” Per Puma, "The demand for the Fenty Shoes is so great that the Puma website has been overwhelmed with traffic on days that the shoes launch and, in fact, crashed the day the 'Fur Slide' was first offered for sale." The Creeper style, in particular, "routinely sells out within minutes of the launch of each new version due to overwhelming demand."
The sportswear brand continues on to note: “Seeking to trade on the substantial goodwill of Puma, Rihanna, and the Fenty Shoes, [Forever 21] has blatantly copied each of these shoes. Indeed, although the Bow Slide was only released this month, [Forever 21] is already offering copies of it on its website.”
Trade Dress Infringement
Puma claims: “In an attempt to ride the coattails of Puma’s substantial investment in and success with the Fenty Shoes, [Forever 21] is using the Fenty Trade Dress to offer for sale, distribute, market, and/or sell competing shoes that are confusingly similar to the Fenty Shoes. As reflected in side-by-side comparisons, [Forever 21’s] infringing shoes are confusingly similar to the Fenty Trade Dress.”
For the uninitiated, trade dress is a type of trademark that covers a product configuration’s, including the design and shape of the product itself. For the “Fur Slide,”Puma claims the “trade dress consists of, at least, a thick sandal base with a wide plush fur strap extending to the base of the sandal, and a satin foam backing, and shares the deep bowl for the foot (albeit in a sandal).” For the “Bow Slide,” it is “a thick sandal base decorated by a wide, casually knotted satin bow with pointed endings atop the side strap in addition to satin foam backing, and the same deep bowl for the foot.”
Puma is also claiming rights in the pale pink and olive green colors in connection with its Bow Slide designs.
Additionally, Puma claims copyright in all three of the shoes, citing the recent Supreme Court decision, Star Athletica v. Varsity Brands, stating: “The Fenty Copyrights (1) can be perceived as a two- or three- dimensional works of art separate from the Fenty Shoes and (2) would qualify as protectable pictorial, graphic, or sculptural works—either on their own or fixed in some other tangible medium of expression.”
In particular, Puma cites the following as the copyright-protected elements of its footwear: The “ridged vertical tooling and grainy texture encompassing the thick rubber outer sole” for the Creeper; the “wide plush fur strap extending to the base of the sandal” for the Fur Slide; and the “casually knotted fabric bow with pointed endings atop a lined side strap that extends to the base of the sandal” for the Bow Slide.
With the foregoing in mind, Puma claims that the similarities are not lost on the industry. It claims that Forever 21’s “use of strikingly similar shoes has not gone unnoticed. The media and consumers alike have commented on the substantial similarities between Puma’s Fenty Copyrights and Defendant’s shoe designs.”
And in case that is not enough, Puma goes on to state that Forever 21’s “business model is based on trading-off of the established goodwill of reputable, name-brand companies, such as Puma” and cites a decision from the U.S. District Court for the Southern District of New York, holding “the extraordinary litigating history of [Forever 21], which raises the most serious question as to whether it is a business that is predicated in large measure on the systematic infringement of competitors’ intellectual property.”
As a result, Puma is seeking preliminary and permanent injunctive relief, and all profits and damages derived by Forever 21’s “wrongful acts,” among other relief as deemed necessary by the court.
Counsel for Forever 21 and Puma were not immediately available for comment.
Puma v. Topshop
In related news, Puma has landed a preliminary victory in its battle against British fast fashion chain Topshop in connection with a number of the Fenty footwear designs. As noted in the Forever 21 lawsuit, Puma recently "obtained an injunction against a retailer, Top Shop, in Germany preventing it from selling knock-offs of the Fenty Shoes."
Puma confirmed in a statement that, like Forever 21, Topshop, "immediately reacted to the knock-offs that are being offered by Topshop in their shops and online and has successfully applied for a preliminary injunction which orders Topshop to not sell anymore their knock-offs of the Puma by Rihanna models creeper, fur slide and bow slide. The injunction has been granted by the High Court of Düsseldorf which has substantiated its decision with the fact that the Topshop copies infringe both Puma’s design rights and also have to be considered as unfair competition/passing off."
* The case is Puma SE v. Forever 21, Inc., 2:17-cv-02523 (C.D. Cal).