THE FASHION LAW EXCLUSIVE – Adidas has been hard at work fighting copyists of Kanye West’s designs, according to our sources. Small-time footwear brands and fast fashion retailers, such as Forever 21, alike, have been on the receiving end of strongly-worded cease and desist letters from adidas for manufacturing and/or selling sneakers that the German sportswear giant deems to be too similar to the rapper’s creations, namely, the mid-top Yeezy Boost 750s. Modern Vice, the New York-based footwear brand, for instance, took on the Boosts – replacing the suede uppers with an exotic python look – and received a note from adidas threatening to sue.
WHAT RIGHTS DOES ADIDAS HAVE?
Since adidas lacks design patent protection for the Boost style and copyright law provides little protection in this instance (since shoes are useful and copyright law does not protect useful articles in their entirety), we can only assume that adidas is relying on trade dress (note: unregistered trade dress) to make such legal threats. And if we really consider the trade dress at issue, it seems adidas has very weak, if any, rights to claim here.
Trade dress is a type of trademark protection. However, unlike the most basic form of trademark protection, in which a logo, brand name or design is protected, trade dress allows for the protection of the design and appearance of a product that serves to identify the product to the consumer. So, essentially, a design (even without the original company’s name or logo) that is likely to confuse the public about who made or sponsored the product may give rise to a claim for trade dress infringement.
The Yeezy Boost 750 trade dress (pictured below) likely consists of some variation of the following elements: The configuration of a mid-top sneaker consisting of five rows of lacing up the front of the shoe with vertical looped eyelets, a perforated toe box, the placement of a horizontal strap where the lacing meets the vamp, a curved vertical seam on both sides in the rear quarter, a vertically ribbed midsole, and a vertical zipper at the heel counter.
Absent a federal trade dress registration, in order to actually prevail in any of the lawsuits that adidas is threatening, it would have to establish that: 1) its Yeezy Boost 750 serves as an identifier of source (aka the appearance of the Yeezy Boost alone signifies to consumers that it is an adidas shoe) and 2) that such alleged copies are likely to cause confusion amongst consumers (aka that consumers will either think that the copies are authentic adidas sneakers or that the German sportswear brand has endorsed or is otherwise associated with the copies in some way).
In order to establish that a design is an identifier of source – meaning that consumers associate the design with the brand that makes it – the party asserting trade dress rights must show that the design has achieved secondary meaning in the minds of consumers. (Note: this means the average consumer, not Kanye West super-fans or obsessed sneaker heads).
An array of courts, including New York’s Second Circuit, look to the following factors to gauge secondary meaning: Advertising expenditures; Consumer studies linking the mark to the source; Unsolicited media coverage of the products; Sales success; Attempts to plagiarize the mark; and Length and exclusivity of the mark’s use.
While a number of these factors very well may weigh in adidas’ favor, it seems as though this might still be a difficult case for them to make, primarily because there is an argument that the average person does not know what a Yeezy Boost is. If this is the case, adidas would have a very hard time showing that people associate the Yeezy Boosts with adidas.
Brendan Dunne, an editor at Complex’s Sole Collector, echoed this notion, as he had the following to say about the Yeezy-specific Boost designs: “I don’t expect that a lay person would immediately associate the sole (the most recognizable piece of the Yeezy design) with adidas. I think that the Yeezy lacks real ubiquity since it’s a (relatively) limited shoe, so it feels to me like there haven’t been enough in-person instances of people making that connection, if that makes sense.”
He suggests that the case is even less strong for the Yeezy 350 Boost, which is probably why the brand is not fighting copies of this style quite as vigilantly as it with the 750s. Of the 350s, Dunne says: “I think the shoe looks too much like a Roshe for there to be a deep adidas connection for those who aren’t really into sneakers yet. The shape of the sole, save for the ridges, is still very reminiscent of the Nike Roshe Run, a shoe that’s been everywhere since its launch in 2012. If Yeezy had released first and was available on that level, I think that connection would be there.”
As for the Boost design itself (minus any Yeezy alterations), which has been in the adidas lineup since 2013, the sportswear giant has a much stronger claim of secondary meaning, per Dunne. He says: “I think lay people are familiar with Adidas Boost now.” As for how adidas will parlay that recognizability into claims in connection with the Yeezy Boost is yet to be seen, as it has not filed suit in connection with any of the copies. But stay tuned …