In something of an uncommon move for a young fashion company, luxury American footwear brand Buscemi, founded in 2013, has filed a patent infringement lawsuit against Hong Kong-based J/Slides and its American counterpart, J/Slides NY (collectively, “J/Slides”). Filed in the United States District Court for the Southern District of New York, Buscemi’s complaint alleges “deliberate, willful, wanton and intentional” infringement of its 40MM Bow Design shoe.
The move is uncommon because as you may know, the process of obtaining a design patent is not only expensive, but can also take as long as two years. Given that most brands do not continue a single style across numerous seasons, usually only long-established brands invest the time and money to pursue design patents, and do so for their signature designs.
The 40MM Bow design was first introduced in the spring of 2016, and Buscemi – which was launched by designer Jon Buscemi (best known for his earlier footwear venture Gourmet) – filed an application for a design patent in June of that year. The style is sold in stores such as Neiman Marcus, Barneys, and Harrods, among others, and retails for upwards of $600. The “substantially” similar Beauty style sold by J/Slides, by comparison, is sold for under $200 at stores such as Nordstrom, Dillard’s, and Saks Off 5th, among others.
Buscemi first put J/Slides on notice of intellectual property infringement in March of 2017, by way of a cease and desist letter, Counsel for J/Slides responded, indicating “that [J/Slides] would not comply with Buscemi’s demands…including among other things, the cessation of all offering for sale and/or sales of the Accused Products.” Buscemi contacted J/Sides again in May following the issuance of the design patent.
Buscemi is now asserting that, “unless enjoined, [J/Slides] will continue to cause irreparable harm” and is seeking damages “including, but not limited to, [Buscemi’s] lost profits, a reasonable royalty, disgorgement of profits received by Defendants, treble damages pursuant to 35 U.S.C. § 284, costs, pre and post judgment interest at the maximum allowable rate, attorneys’ fees” as well as injunctive relief.
This particular lawsuit is also interesting, as we certainly thought Buscemi would be the one on the receiving end of a lawsuit in recent years thanks to its manufacture and sale of sneakers and bags that have more than a passing resemblance to the oft-heralded Birkin bag – one of Paris-based brand Hermès’s most coveted items.
Nicole Malick is a student at the University of Pennsylvania Law School.