THE FASHION LAW EXCLUSIVE – Adidas has been handed a victory this week in a multi-million dollar trademark and patent infringement lawsuit in connection with its Springblade running shoes. Robert M. Lyden, an Oregon-based athlete and inventor, who has been on a bit of a suing spree with the market’s largest sportswear makers, filed suit against adidas in October 2014, alleging that the German sportswear giant infringed a number of his federally protected intellectual property rights, including two trademarks and three patents for an original running shoe design. The shoes at issue: a so-called Springshoe.
Lyden alleged in his complaint that adidas copied a number of elements implicit in his Springshoe design (pictured below, top), which he claims he told adidas about and manufactured in 2002 in a very limited run with Nike before adidas began selling its allegedly infringing styles. Adidas responded to the suit by challenging the validity of Lyden’s existing intellectual property rights.
As of this week, Judge Michael Mosman of the U.S. District Court for the District of Oregon, a federal court in Portland, held that Lyden’s trade dress registrations are in fact, invalid, and that his design patents have not been infringed by adidas in connection with its Springblade shoe.
As you may know, trade dress is a sect of trademark law that protects the overall commercial image of a product that indicates or identifies the source of the product and distinguishes it from those of others. It may include the design of a product, itself, as long as the design is not based on functionality. As Judge Mosman aptly stated: “The physical details and design of a product may be protected under the trademark laws only if they are nonfunctional.” In its answer to Lyden’s complaint, adidas claimed that Lyden’s trade dress protection is invalid, as the trade dress registrations (one for a “heel counter” and the other for a “spring element”) are centered upon functional elements. Therefore, the court was forced to determine the functionality – or lack there of – of Lyden’s Springshoe designs.
In order to determine if the “heel counter” and “spring element” of Lyden’s design are, in fact, functional, and thus, prevented from trade dress protection, Mosman looked to the following factors, as set forth by the court in Disc Golf Assn’n, Inc. v. Champion Discs, Inc., 158 F.3d 1002, 1006 (9th Cir. 1998):
(1) Whether the design yields a utilitarian advantage, (2) whether alternative designs are available, (3) whether advertising touts the utilitarian advantages of the design, and (4) whether theparticular design results from a comparatively simple or inexpensive method of manufacture.
Mosman ultimately found that the trade dress-protected elements of Lyden’s shoes are functional and thus, cannot be protected by trademark law, letting adidas off the hook, so to speak, in terms of infringement claims. As for the patent concerns, Mosman held that while Lyden’s design patents are valid, they have not been infringed by adidas’ Springblade shoes due to a number of differences in the design elements themselves. As a result, Mosman “granted adidas’ motion for Summary Judgment on Lyden’s Trademark Claims and granted adidas’ Motion for Partial Summary Judgment on Lyden’s Patent Claims.”
Still making its way through the courts, the patent infringement lawsuit that Lyden, who worked for Nike between 1990 and 1998, filed against Nike in October 2014. That case is currently on appeal.