Few fashion-centric sportswear collaborations were more in demand in 2015 than the one that bore Rihanna’s name for Puma. Sure, Nike maintains a roster of big-name partners, and routinely drops sneakers to high velocity fanfare, and at the same time, adidas was still in the midst of the full-fledged frenzy that was Yeezy, but Puma was undeniably holding its own thanks to a hot-selling collab with now-31-year old Rihanna, namely consisting of chunky-heeled Creeper sneakers, faux fur slides, and plays on one of its classic running sneakers by way of a purple satin bow-adorned model (pictured above).
Not long after its release in 2015, Rihanna x Puma’s Bow sneaker – a lavender-hued, bow-emblazoned play on Puma’s longstanding Trinomic silhouette – made its way onto the feet of Rihanna, one of the runway presentations for the mega-star’s collaboration with Puma, and the Instagram accounts of many a die-hard Rihanna fan.
More recently, the shoe has found itself in court, at the center of a new lawsuit, one that Puma is not a party to.
Following a court battle between footwear brands Eliya and Skechers over Eliya’s copy of Skechers’ “popular Skech-Air product line” started in 2016 and settled the following spring, the two parties are embroiled in a new legal fight … this time over their respective bow-adorned sneakers.
According to Eliya’s complaint, which was filed in a New York federal court late last month, it received a cease and desist letter from the “multi-billion-dollar company” Skechers early this year, alleging that Eliya was infringing its design patent-protected bow sneaker by way of its own “Bow Shoe” sneaker.
Eliya has since responded to Skechers’ letter with a lawsuit. Seeking a declaration from the court that its sneaker is not infringing Skechers’ design patent, New York-based Eliya argues that its sneaker “design does not embody the overall effects of the [Skechers bow shoe design],” and therefore, does not infringe Skechers’ sneaker. Beyond that, Eliya claims that Skechers’ shoe is not eligible for patent protection in the first place and that the footwear giant’s design patent should be invalidated altogether.
In order for a design to be protected by way of a design patent, it must be novel and non-functional, among other requirements. Eliya claims that neither of those elements are met when it comes to Skechers’ bow sneaker. For one thing, the bow element of the Skechers shoe is functional, per Eliya. As Brian M.Z. Reece and Jeff Van Hoosear of Knobbe Martens note, “If the shoe can be tightened or loosened around the foot by tightening or loosening the bow, for instance, then the bow is performing a functional task,” thereby, “arguably” making it ineligible for design patent protection.
Not only is the bow aspect of Skechers’ shoe functional, though, Eliya declares that it is hardly a new creation. To be exact, Eliya claims that while “Skechers’ patent application was filed on February 13, 2018,” more than two years earlier in September 2015, “Puma began selling a shoe with a bow design.” The shoe that Eliya references is a sneaker from Puma’s hot-selling collaboration with Rihanna, which features a prominently placed bow design.
Puma’s prior inclusion of a bow design on a sneakers makes it so that Skechers’ own use is not novel, and thus, does not qualify for patent protection, Eliya argues, asking the court to invalidate Skechers’ patent, a move that would ultimately enable Eliya to avoid at least part of Skechers’ infringement assertions.
In addition to seeking monetary damages, as well as “costs, attorney fees, and expenses,” Eliya has asked the court for “a declaration that [Skechers’ patent] is invalid or unenforceable and void for failure to comply with one or more sections” of the U.S. federal code that governs patents.
*The case is Eliya, Inc. v. Skechers USA, Inc., and Skechers USA, Inc II, 1:19-cv-00861 (SDNY)