Image: Converse

Steve Madden “sells sneakers, but instead of innovating its own designs, it often copies others,” Converse asserts in a newly-filed complaint. The Nike-owned brand, which filed suit against Steve Madden in a federal court in Boston late last month, claims that Madden is on the hook for infringing two design patents that cover ornamental elements of its statement-making Run Star Hike platform sneaker.

According to its complaint, Converse claims that it “has produced several iconic sneaker designs over the past century,” with “one of its more recent designs [being] the Run Star Hike,” which it debuted on the runway in London during J.W. Anderson’s Spring/Summer 2019 runway show in September 2018, and began offering up for sale in the U.S. in February 2019 to “instant interest and success because of its unique design.”

Seeking to lay legal claim to the design of the shoe, which is a mash-up of a platform sneaker and Converse’s All Star high tops, Converse says that it has “taken steps to protect the Run Star Hike design, including by filing and obtaining design patents” – while likely also laying the ground work to claim trade dress rights in the design, as well – and as of early this year, was awarded two design patents for elements of the shoe, namely, the sole. 

Fast forward to March 2020, just over a year after Converse began selling its Run Star Hike, and the company claims that Steve Madden began offering up “an infringing sneaker, [which] it calls the Madden Girl Winnona Flatform High-Top sneaker.” Counsel for Converse swiftly sent a cease and desist letter to Madden, informing the brand of its rights in the protected elements of the sneaker and “demanding that Steve Madden immediately stop infringing,” only to have the brand allegedly fail to respond and continue to offer up the “infringing” sneaker. 

Converse claims that it sent a second letter a month later, and while Madden’s legal team did, in fact, respond to that letter, “before it responded, Steve Madden began selling an additional infringing sneaker style, [called] the Shark sneaker,” which – much like the Winnona Flatform – “bears a design that, in the eye of an ordinary observer, is substantially the same as the design claimed in Converse’s patents.”  

“On April 24, 2020, after it launched its infringing Shark sneaker, Steven Madden finally responded to Converse, [and] refused to stop selling its infringing Winnona Flatform High-Top sneaker,” Converse claims. Since Madden did not mention the Shark sneaker in the letter, Converse followed up with yet another letter on May 7, demanding that Steve Madden “immediately stop infringing” its patents.

But “Steve Madden did not stop infringing,” according to Converse. Instead, it did the exact opposite: “On about May 11, Steve Madden released an additional colorway of its infringing Shark sneaker,” a model that has proven to be popular, as at least one of the colorways sold out shortly after it was introduced. 

With the foregoing in mind, Converse is seeking a “judgment and order that Steve Madden has infringed [its] Run Star Hike Patents by making, using, offering to sell, selling, and/or importing infringing sneakers into the U.S.,” and an order prohibiting Madden from further infringing [its] Run Star Hike patents. Converse also, of course, wants monetary damages, including any/all “supplemental damages or profits for any continuing post-verdict infringement up until entry of the final judgment, with an accounting.” 

Not merely the latest lawsuit in the ever-growing list of cases to be filed against Madden, this one is interesting, according to Lando & Anastasi counsel Thomas P. McNulty, who says that it clearly “demonstrates the importance of claiming many different aspects of a product design.” In connection with the patents at hand, “by disclaiming [rights in anything but the] sole portions of the shoe,” Converse enjoys a “broad scope [of protection] that covers sneakers having uppers that differ from Converse’s actual product” but that make use of similar sole elements.

*The case is Converse Inc. v. Steven Madden, Ltd., 1:20-cv-11032 (D. Mass.).