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Image: Puma

The lawsuit that Puma filed against Forever 21 for copying a number of Fenty footwear designs is heating up. After the fast fashion giant argued early this year that “Puma misrepresented material facts to the U.S. Patent and Trademark Office (“USPTO”) and the Copyright Office” in connection with its filings for some of the footwear, “thereby committing fraud,” Forever 21 is seeking to have Puma’s design patent claim dismissed, alleging that the design – which covers the Fenty Puma Creeper sneaker – is not new to Puma, and in fact, dates “back decades to the mid-twentieth century.”

According to Forever 21’s 96-page motion to dismiss, Puma’s Creeper design patent is “the narrowest of its kind,” given the “crowded field” of prior art at issue; the limitation of protection exclusively to “the very specific ornamental choices that [Puma] made” and the construed in the patent drawing submitted to the USPTO; and patent law’s general unwillingness to protect “the functional aspects of the object in which the design is embodied.”

Speaking to the prior art (i.e., any evidence that an invention was already known prior to the filing of a patent application, including, but not limited to, existing products), Forever 21 asserts that there is a long history of Creeper-like shoes – some that date back to at least the 1940’s, and ones that have been sold, more recently, by the likes Nike and adidas.

Forever 21 states, “Puma’s decision to call this [sneaker] design the ‘Creeper’ is not an accident, and does not show any spark of originality because the name was chosen by Puma to reference a well-known shoe style dating back decades to the mid-twentieth century.”

Some of the Creeper prior art

It continues, “The prior art submitted by Puma to the USPTO during prosecution reveals that so-called ‘Brothel Creeper’ shoes were a well-known shoe type originating after World War II and being popular from time to time thereafter. Prior art submitted by Puma to the USPTO [includes’ one shoe that appears to be a Puma shoe and is strikingly similar to the shoe depicted in [Puma’s Creeper patent].”

Moreover, Forever 21 claims that Puma’s sneaker maintains “many functional elements,” such as “having a sole, an upper, an opening near the rear portion, and a closure mechanism (in this case, laces),” all of which enable the shoe to operate as a shoe and “do not constitute ornamental design choices that are protectable by design patent.”

The only protectable elements are explicitly creative ones that are unnecessary to the function of the shoe. This means that the “number, shape, size, and [specific] placement of [the ventilation] holes” that appear on Puma’s Creeper may be protected, along with the “chosen thickness and specific contours of the vertical ridging.”

The fast fashion giant claims that even if the rights offered by way of Puma’s design patent were broad, there are “readily apparent” differences between the “aesthetic choices” of the two companies shoe designs. According to Forever 21, these include differences in “the stitching around the entire foot opening of the shoe [or the lack thereof on the Puma shoe], the number and placement of the ventilation holes, and the relative height of the shoes’ uppers.” Because the ornamental aspects of these two designs are “’plainly dissimilar,’ Puma’s design patent claim fails as a matter of law.”

* The case is Puma SE v. Forever 21, Inc., 2:17-cv-02523 (C.D. Cal).