Image: Birdies

No stranger to litigation, Rothy’s initiated a footwear-centric lawsuit last month, this time accusing fellow ballet flat-maker Birdies of foregoing “independent product development,” and instead, “choosing to copy Rothy’s innovative and distinctive product designs in violation of Rothy’s valuable intellectual property rights,” a claim that mirrors one that Rothy’s previously waged against Steve Madden. Rothy’s sets the stage in the complaint that it filed in a federal court in Northern California last month, asserting that it has developed a “ravenous following” for its “unique, novel, sustainable, comfortable, and stylish shoes” that are made from recycled materials and are “instantly recognizable” to the consuming public. 

With the foregoing in mind and regardless of the fact that its “creative achievements have resulted in broad intellectual property protection for its innovations, including design patents,” San Francisco-based Rothy’s claims that its “innovations have been the subject of frequent copying by those attempting capitalize on its success by illegally imitating [its] protected product designs.” Among those imitators? Birdies, which Rothy’s alleges has “blatantly copied nearly every aspect of [its] valuable designs through willful patent infringement” after allegedly purchasing “numerous pairs of [its] footwear products for the purpose of copying,” and having them “shipped to Birdies’ corporate address in San Francisco.” 

Specifically, 6-year-old Rothy’s claims that by way of the “Blackbird” style shoe – “a pointed-toe slipper cut ballerina flat [with] a knitted upper” – that Birdies began selling “in or about February 2021,” its fellow footwear startup (and fellow Meghan Markle-popularized brand) has infringed a number of its design patents that protect the unique appearance of its Loafer and The Point styles. “Birdies intended to and did copy the claimed designs of the Rothy’s asserted design patents by creating the same or similar overall impression as Rothy’s designs,” Rothy’s asserts, claiming that “an ordinary observer will perceive the overall appearance of” its design patent-protected footwear and “the corresponding design of [Birdies’ Blackbird shoe] to be substantially the same.” 

Such marked similarity is allegedly evidenced by comments from social media users, “who have immediately associated Birdies’ newly-launched, infringing shoe with Rothy’s.” Rothy’s points to “just a few examples of the many posts made on Birdies’ own Instagram account,” presumably in connection with images of its Blackbird shoe, including comments “such as, ‘These remind me of @rothys,’ ‘Looks like Rothy’s style knit!,’ ‘I was really hoping for a new design, not ripped off Rothy’s,’ and ‘These look like Rothys.'”

Rothy’s continues on to assert that Birdies’ “bad faith intent in their copying of Rothy’s designs is underscored by their propensity to draw liberal ‘inspiration’ from Rothy’s products, leading up to the release of the infringing [Blackbird shoe].” For example, Rothy’s claims that “in or around July 2020, Birdies released a colorway pattern of its shoe model ‘The Swan,’ that appears to have been derived from a colorway pattern offered for Rothy’s ‘Marta Ferri x Rothy’s’ The Flat shoes, which had been released in October 2019.” Doubling-down on its color argument, Rothy’s claims that Birdies’ Blackbird shoes “not only infringe [its] asserted design patents,” but its rival is also offering up the “lookalike” shoe in “multiple colorways that are indistinguishable from colorways Rothy’s currently offers for [its] Loafer” style – albeit Birdies’ similarly-colored orange-red hue comes with an eggplant-colored trim, and its beige pairs include navy blue accents.

And still yet, Rothy’s takes issue with Birdies’ manufacturing processes, claiming that “unfortunately, although Birdies has blatantly copied Rothy’s protected product designs, it chose not to emulate Rothy’s commitment to environmental sustainability.” Specifically, Rothy’s argues that “Birdies manufactures its infringing shoe using non-eco-friendly materials and processes.”

Prior to filing suit, and “in an effort to avoid litigation,” Rothy’s asserts that on March 9, 2021, it “sent, via FedEx and E-mail, correspondence notifying Birdies of its infringement of Rothy’s asserted design patents, requesting that Birdies permanently discontinue all advertising, promotion, or sale of the infringing product, [and also] request[ing] that the parties enter into a dialogue” about the alleged infringement. Birdies responded in a letter dated March 19, 2021, in which it “flatly rejected Rothy’s requests.” 

Given that it “has not granted a license or any other form of permission to Birdies with respect to any of its design patents or other intellectual property,” Rothy’s claims that Birdies’ allegedly “willful, deliberate, [and] malicious” infringement has caused “irreparable damage and harm to Rothy’s.” As a result, the footwear brand sets forth four claims of patent infringement, and is seeking, “among other things, permanent injunctive relief to stop Birdies from infringing its design patents; damages and/or restitution of Birdies’ profits from their infringing activities; prejudgment interest; costs and attorneys’ fees; and all other relief the Court deems just and proper.” 

As for Rothy’s likelihood of cuccess in the case, at least some are skeptical. Design patent expert and University of Oklahoma College of Law professor Sarah Burstein, for instance, stated that Rothy’s claim that Birdies infringed its design patent (D885,017) for the shape of its “The Point” style (as pictured above) “is probably Rothy’s best infringement claim,” but even that “is not a home run,” noting that “in footwear, things that might seem quantitatively small (e.g., precise vamp location) can make a big qualitative difference.” Burstein is also not persuaded by Rothy’s color-centric arguments, asserting that color is not actually “claimed as an element of any of [Rothy’s] asserted designs,” and thus, its “color arguments are not legally relevant to the design patent infringement claims.” And even if they were, she suggests that to “an ordinary observer of shoes,” the taupe and blue combination that can be found in Birdies’ shoes may not be “indistinguishable from” Rothy’s single-colored taupe offerings.

The suit at hand comes on the heels of a number of copycats-specific cases involving Rothy’s – from the declaratory judgment case that Steve Madden filed in 2019 after receiving a cease-and-desist letter from Rothy’s to the suit that Rothy’s filed against OESH Shoes for allegedly infringing a handful of design patents and the valuable trade dress – which includes the total image and overall appearance of a product, including the size, shape, color, or color combinations, texture, and graphics – of its “distinctive” ballet flat.

A rep for Birdies was not immediately available for comment.

The case is Rothy’s, Inc. v. Birdies, Inc., 5:21-cv-02438 (N.D.Cal.)