Crocs has been handed yet another loss in its fight to protect the design of its plastic clog footwear. The European Union General Court has dismissed Crocs’ appeal against the European Union Intellectual Property Office (“EUIPO”) to cancel legal protection of its shoe design. In doing so, the court has upheld a 2016 decision from the EUIPO that declared that Crocs’ design registration is invalid because the footwear lacks the requisite level of novelty.

The case got its start back in 2013 when French footwear company Gifi Diffusion filed a formal opposition with the EUIPO contesting Crocs’ EU design registration, arguing that EU law states that a design cannot be made public more than one year before filing. According to Gifi, Crocs first showed the design at issue in 2002 — two years before filing its design mark in the United States, and thereby, ruining its chances of filing for protections after 2003.

In a decision in 2014, the EUIPO’s Invalidity Division dismissed Gifi Diffusion’s request, asserting that the company had failed to present sufficient proof that Crocs had released the designs prior to the one-year time period. Responding to the EUIPO’s pushback, Gifi Diffusion ultimately provided more evidence, and in 2016, the Crocs design was ruled invalid by the EU’s trademark body, prompting Crocs to lodge an appeal.

Fast forward to this month and the EU General Court has sided with Gifi on the basis that Crocs’ footwear lacks the requisite level of novelty. In a statement responding to the ruling, a rep for Crocs stated, “The decisions are not final and Crocs is considering further appeal options where appropriate. One decision relates to the decision-making procedures of the EUIPO and does not call into question the Registered Community Design at issue. The second decision relates to validity challenges against a legacy Registered Community Design which have been ongoing for the last ten years.”

“Crocs’ business has not been significantly impacted by this ongoing issue during that period and it is not expected that the latest decision will have any immediate material adverse consequences for Crocs,” the spokesman asserted, also noting that Crocs’ Registered Community Designs are valid and enforceable during the appeals process.

In other Crocs-related intellectual property news, in its largest anti-counterfeiting effort ever, the Ecuadorian IP Office recently seized nearly 40,000 imitation Crocs items, including shoes and packaging. The action followed Crocs’ filing of an administrative infringement action in Ecuador, which sought and won an injunction against infringement of its registered marks there.

Nike is not mincing words in the new patent infringement lawsuit it has filed against Puma. The Oregon-based sportswear giant asserts that its mission is to “bring inspiration and innovation to every athlete in the world,” and it does so “by investing heavily in research, design, and development.” Puma, on the other hand, argues Nike, “has forgone independent innovation and is instead using Nike’s technologies without permission.”

According to its complaint, which was filed in federal court in Massachusetts on Thursday, Nike asserts that it spends “years of research, design, and development” to create its various design staples, including its Flyknit, Air, and cleat technologies only to have Puma “willfully, intentionally, and deliberately infringe” those technologies for its own financial gain. 

Introduced in 2012 and regarded as a “quantum leap” in the industry, Nike’s $1 billion-plus grossing Flyknit technology uses yarn and fabric variations to engineer “a featherweight, formfitting and virtually seamless upper.” Another staple: Nike’s similarly lucrative Air technology, which it introduced in 1987 and has “continued to innovate over the following three decades,” is, according to Nike, “an important component of its strategy and it is integral to Nike’s success.”

Due to the novelty of the Flyknit and Air technologies, Nike “has taken steps to protect its technology” including “filing and obtaining patents around the world.” In fact, Nike asserts that it “owns more than 300 issued utility patents directed to its Flyknit technology,” and “800 utility patents directed to its Air technology.”

While such patent protections have enabled Nike to cut down on others’ unauthorized use of the technology that underlies some of its best-selling footwear styles, it has not stopped Puma from “using the Flyknit and Air technology without Nike’s permission.”

For instance, Nike claims that Puma introduced its first knitted footwear, the Ignite Proknit, in October 2015, three years after Nike first debuted its own groundbreaking knit technology. “Puma has promoted the IGNITE Proknit as having a “fully knit upper” that “gives it lightweight breathability, an incredibly comfortable fit, and fresh style,” not unlike Nike’s own Flyknit footwear.

The German sportswear brand has since released additional styles that incorporate a knitted upper and that make “use [of] Nike’s Flyknit technology and practice the inventions covered by one or more claims of Nike’s Flyknit patents.”

 Nike Flyknit sneaker (left) & Puma's knitted sneaker (right)

Nike Flyknit sneaker (left) & Puma’s knitted sneaker (right)

While Nike states that industry commentators have pointed out the similarity between Puma’s IGNITE Proknit and Nike’s Flyknit, it is worth noting that Nike is asserting utility patent (not design patent) infringement claims, meaning that the appearance of the Puma footwear is not what is at issue here. Instead, it is the underlying process that goes into creating the knitted upper that Nike claims Puma has replicated. 

As for the Air technology – which consists of air-bag cushioning benefits (including a lighter-weight shoe “without reducing performance” and reduced impact to wearers’ “muscles, joints and tendons” – Nike argues that “thirty years after Nike Air revolutionized the footwear industry, Puma began using Nike Air technology without Nike’s permission.”

Still yet, Nike states that Puma began copying the “strategically placed cleats, support bars, and sections of varying stiffness to improve flexibility, foot control, balance, and propulsion” of its soccer cleats when it introduced its evoSPEED SL FG in 2015. That release came almost 50 years after Nike introduced its first molded rubber cleat.

 Nike Air sneaker (left) & Puma's air sneaker (right)

Nike Air sneaker (left) & Puma’s air sneaker (right)

Nike claims that “Puma knew or should have known that making, using, offering to sell, selling, and/or importing [its allegedly infringing footwear] would directly infringe [Nike’s] patents; yet Puma infringed and continues to infringe the patents.” Moreover, while Nike claims that it has “asked Puma to stop infringing its [seven] patents” – numbers 6,973,746; 7,401,420; 7,637,032; 8,266,749; 9,078,488; 9,314,065; 9,375,046 – “Puma refuses to do so,” As a result, Nike “has suffered irreparable harm and damages.”

Nike has asked the court to order Puma, as well as “its affiliates, officers, agents, employees, attorneys, and all other persons acting in concert with Puma” to immediately and permanently cease all allegedly infringing use of the patents at issue. Additionally, Nike is seeking monetary damages, including “an award of damages adequate to compensate Nike for Puma’s infringements of the Nike Patents that have occurred, together with prejudgment and post-judgment interest and costs,” enhanced damages due to the “willful” nature of Puma infringement, and attorneys’ fees and costs.

Puma was not immediately available for comment. 

UPDATED (January 13, 2020): Counsel for Nike filed a joint stipulation of dismissal on January 10, seemingly suggesting that the parties have settled their differences out of court. The case was formally dismissed on January 13.

The case is Nike, Inc. v. Puma North America, Inc., 1:18-cv-10876 (D. Mass.).

At the onset of the new millennium, Nike set out to craft a shoe that would simultaneously deliver peak performance for athletes and enable it to reduce the large amount of waste that comes with the manufacturing of multi-part sneakers in the process. Inside Nike’s ultra-secretive Beaverton, Oregon headquarters, which require the signing of an iron-clad non-disclosure form to get past certain doors, the technology driving this shoe was the result of intensive research and development, and gave rise to expenses that CEO Mark Parker thought the $86 billion sportswear giant might never recoup. Yet, after nearly two decades, in February 2012, Nike debuted what was deemed to be the most momentous innovation in the fiercely competitive, and multibillion-dollar-earning sneaker market in years: the Flyknit.

The technology embodies in the shoe uses yarn and fabric variations to engineer “a featherweight, formfitting and virtually seamless upper.” In addition to “a precision fit,” the woven upper of Flyknit footwear – the first sneakers to bear an upper that consists of a single piece of material, as opposed to one derived from different pieces stitched together – results in little to no waste in the manufacturing process.

With roots at Nike that date back to at least 2000, when the Oregon-based sportswear giant made its very first prototype in working to create a sneaker with a woven-fabric upper, the technology represents “the right direction for Nike, from both a bottom-line and an environmental perspective,” Parker told the Wall Street Journal in 2015. And it has performed. In the first five years after its initial release, sneakers that bear the Flyknit technology brought in upwards of $1 billion in sales for Nike.

In reality, what Nike created was more than a consistently hot-selling sneakers; it also created a war, one that would cost hundreds of thousands – if not several millions – of dollars in attorneys fee and other legal costs, one that would stretch over years and continents, as within five months of the debut of the Nike Flyknit came another striking development: adidas unveiled knitted footwear of its own, Primeknit. Hailing the product as “a first-of-its-kind running shoe,” adidas’ Primeknit was born from a method that involves digitally knitting a single piece of fused yarn to create a single-thread upper and reduce material waste.

While James Carnes, adidas’ head of sport performance design, said at the time that the Primeknit had been in development for three years, and while adidas executives had, for some time, “been quietly telling a select number of footwear industry figures” about their own Primeknit technology, no one was prepared for what was to come … except maybe Nike.

“Adidas told me they were working on a similar technology to Flyknit,” trusted footwear analyst Matt Powell, told OregonLive, “but I had no idea it was this similar.” The likeness of the adidas’ shoe to that of its American rival’s Flyknit was unmistakable.

Adidas called its Primeknit shoe “one of [its] most exciting and sustainable products ever.” Nike called it a copy.

Battle of the Titans

“I am not surprised at the admiration – and the imitation – [the Flyknit] has generated,” Mark Parker told a crowd of shareholders at Nike’s annual meeting in 2012. In the wings, the sneaker juggernaut’s sizable legal team was readying for battle: adidas would soon be on the receiving end of a swift and strongly-worded lawsuit, not terribly unlike the 2006 suit that Nike filed against its archrival, claiming that it was making footwear using elements of patent-protected SHOX technology. The world’s largest sportswear company wanted adidas’ Primeknit footwear shut down and it wanted it done now.

Yes, almost immediately following the debut of adidas’ knitted footwear came a patent infringement lawsuit, filed in a District Court in Nuremberg, Germany, in which Nike sought to prohibit adidas from making and selling the Primeknit in Germany immediately, for the duration of the litigation and depending on the outcome of the case, permanently thereafter.

“Nike has a strong heritage of innovation and leadership in footwear design and development,” the company asserted in an official statement in conjunction with its lawsuit filing. “Our patents are the foundation of that leadership and we protect them vigorously.”

As for the choice of venue, Nike spokeswoman Mary Remuzzi said the case was filed in (and was limited in jurisdiction to) Germany because that was the only place where adidas was actually distributing the Primeknit at the time. Adidas had not yet begun distributing its new Primeknit-bearing footwear in the U.S. or other international markets, and if Nike was to have its way, it never would.

In August 2012, just days after the closing ceremony of the London Olympics – where both brands’ knitted footwear was on display – the District Court in Nuremberg granted Nike’s request for a temporary injunction, ordering adidas to immediately halt the production, marketing, and sale of its allegedly infringing knitted sneaker.

While it appeared that the case might be a home run for the American giant (given the court’s willingness to side with Nike initially), that win was short-lived. Adidas retaliated: It argued before the court that the construction technique that underlies both its footwear and that of its rival had been used since 1940s, and thus, was not proprietary to Nike.

In doing so, adidas’ legal team not only challenged the merit of Nike’s allegations, but more importantly, it called foul on the validity of Nike’s European patent (no. EP 1 571 938 B1), and it was victorious. Shortly thereafter, upon closer examination, the court declared that it would set aside the injunction, and ultimately, agreed with adidas’ assertion regarding the novelty of the knitting process.

As a result, the court invalidated Nike’s patent, holding that its design process failed to meet the novelty element required for patentability, thereby stripping Nike of the right to continue to pursue adidas for patent infringement. The ruling also meant that adidas could legally manufacture its own shoes bearing knitted elements in Germany.

But the battle of the titans was far from over.

No End in Sight

By the end of 2012, both Nike and adidas had begun selling their respective knitted footwear in the U.S. Almost certainly expecting Nike to inevitably file a similar patent infringement lawsuit in the U.S. (where its Flyknit-related patents were still valid and in effect) to prevent it from continuing to sell its knitted shoes stateside, adidas decided to take legal action of its own.

Looking to hit Nike where it would hurt the most, adidas sought to invalidate a number of Nike’s Flyknit-related patents, asking the U.S. Patent Trial and Appeal Board (“PTAB”) to review at least four of Nike’s U.S. patents for the Flyknit design and technology.

In one such matter, which is still currently pending in light of a back-and-forth legal battle, adidas argued that one of Nike’s U.S. patents for the Flyknit design (patent no. 7,347,011) is invalid, as similar methods have been set forth in others’ patents, including one that was filed in 1991 for a process to create uppers that are cut from a web of textile material and then shaped and connected to a sole.

After suffering a loss before the PTAB, Nike filed a 118-page appeal before the U.S. Court of Appeals for the Federal Circuit in 2014, arguing that it, in fact, “invented” the “novel” knitted technology, that the knit is recognized as a “quantum leap in the field.”  (Note: The Federal Circuit Court would end up sending the matter back to the PTAB to determine whether the Flyknit would be considered patentable; siding with Nike in October 2017, the PTAB upheld its patent. Unsatisfied, adidas has since filed an appeal of its own with the Federal Court of Appeals).

Just as Nike was preparing to file its appeal in 2014, another striking battle erupted between the two giants, one that offered a remarkably telling peek into the true depth of the rivalry between Nike and adidas.

Meanwhile, An Inside Job

In December 2014, Nike filed an explosive $10 million-plus lawsuit against three of its former top design directors, claiming that, together, they conspired to steal millions of dollars’ worth of confidential information from Nike after being lured to adidas, where they would help create a brand-new Brooklyn-based design studio to truly rival Nike’s top-secret Innovation Kitchen.

In its 50-page complaint, Nike alleged that Denis Dekovic, Marc Dolce and Mark Miner had jumped ship to adidas in violation of their explicit non-compete agreements, taking with them a “treasure trove” of Nike’s “most important and highly confidential” information, which was procured, in part, to the defendants allegedly faking a broken Nike-owned laptop, from which all of the contents were copied. To seal the deal, Dekovic, Dolce, and Miner allegedly scrubbed their e-mails and text messages which, Nike’s counsel argued, served to obstruct the availability of “evidence of their betrayals.”

Nike further contended that Dekovic, Dolce, and Miner began plotting their departure in April 2014, pitching their studio plan (one that Nike claimed was merely a knockoff of its existing design studio) to Adidas and subsequently bringing Adidas information about Nike’s plans for the next several years in connection with its running, sportswear and soccer lines. In return, adidas reportedly – in an attempt to overthrow the giant – offered them lucrative employment contracts to jump ship from Nike.

Adidas also, according to Nike’s complaint, agreed to provide Dekovic, Dolce, and Miner with legal support and cover the legal fees “if ever Nike discovered their disloyalty and deception.”

In response to Nike’s downright damning allegations, the three designers filed counterclaims against Nike, accusing the company of creating a “culture of distrust and intimidation,” which caused them to seek employment elsewhere; hacking their phones, emails and social media accounts, and filing this “meritless” lawsuit purely as a “publicity stunt.” 

That notably ugly suit was resolved easily enough by June 2015 – six months after its initiation – “through a confidential settlement” on the eve of the scheduled deposition of Nike CEO Mark Parker. Dekovic, Dolce, and Miner have since begun work at adidas, which opened its Brooklyn Creator Farm in the summer of 2017.

It is here, in what Highsnobiety’s Jonathan Sawyer called “a fairly secret warehouse location in Greenpoint,” that “you will find a relatively small conglomerate of designers from all across the globe, whose job is to ‘create culture,’ according to Dolce, [who is now] a VP and creative director at adidas.”

A Larger Fight

This legal battle was, nonetheless, a significant one. Considered in connection with the oft-ongoing patent battles between Nike and adidas, it provided a rare look at the profundity of the contention between the titans of the world’s $250 billion-plus sportswear industry.

It was also a noteworthy reminder that each separate Nike v. adidas legal battle (or vice versa) is merely an individual part of a much larger power play, one that plainly establishes that if there is a modern-day rivalry of the greatest proportions, Nike vs. adidas is certainly in the running for a top spot – one “stolen” employee and/or “copied” knitted shoe at a time.

Under Armour made headlines on Monday for reportedly tapping rapper A$AP Rocky for an impending collaboration – but also for being slapped with a trade dress and design patent infringement lawsuit courtesy of Lululemon. According to the suit, which was filed late last week in the U.S. District Court for the District of Delaware, Under Armour has made use of two of Lululemon’s legally-protected bra designs and Lululemon isn’t having it.

Vancouver-based Lululemon – which sued Calvin Klein in 2012 for design patent infringement – alleges that Under Armour’s Eclipse Low Impact, Shape Low Impact, On the Move and Printed Strappy style bras infringe its Free to Be, and Energy styles, among others. The self-described yoga-inspired athletic apparel company and a designer and retailer of technical athletic apparel has held federal design patent protection for the “ornamental design for [the] bra[s]” since 2014, namely the interwoven segments of fabric that adorn the back of the bras.

 Lululemon's bra (left) & Under Armour's bra (right) Lululemon’s bra (left) & Under Armour’s bra (right)

“An ordinary observer will perceive the overall appearance of the designs of the infringing products to be substantially the same as the overall appearance of the designs of the patent-in-suit, per Lululemon’s complaint.

In addition to claiming design patent protection, Lululemon cites trade dress protection for the bra tops. A type of trademark law, trade dress protection extends to the configuration (design and shape) of a product itself, including “the total image of a product,” and it “features such as size, shape, color or color combinations, texture, graphics or even particular sales techniques.” In its complaint, Lululemon claims, “The infringing products are so similar in design to the trade dress that they are likely to cause confusion, mistake, and deception as to the source of origin of the infringing goods among consumers.”

 One of Lululemon's patent drawings One of Lululemon’s patent drawings

Lululemon is seeking injunctive relief, which would force Under Armour to immediately and permanently cease all sales of the allegedly infringing bras. It also wants an array of damages, including profits that Under Armour gained from selling the bras at issue.

As for Rocky, the rapper is most likely to provide creative input on its Under Armour’s Under Armour Sportswear (a.k.a. UAS) line – for which Tim Coppens is the creative director – and additional lifestyle products. While the news is currently unconfirmed by Under Armour, a number of its high level employees have retweeted reports of the collab.

UPDATED (10/26/2017): Lululemon and Under Armour have filed a stipulation of dismissal with prejudice with the court, after reaching a confidential settlement agreement. Each party has agreed to bear its own costs and attorneys’ fees.

* The case is Lululemon Athletica Canada et al v. Under Armour,Inc., 1:17-cv-00915 (D. Del.).

Apple has added a new design patent to its portfolio of intellectual property-protected designs. Joining designs patents covering the “display screen or portion thereof with graphical user interface,” “protective cover with an audio listening system,” “ornamental design for a wearable device,” and “backplate for electronic device” is a shopping bag. A team of twenty, including Apple’s the Chief Design Officer, is credited for “inventing” the ornamental design of the bag for which Apple received design patent protection (No. D785,463) on May 2.

For the uninitiated, in order to receive a design patent – which protects the ornamental appearance of a product for 15 years – the design at issue must be “useful,” “novel,” and “non-obvious”). So, how exactly did Apple receive a patent for a plain white shopping bag, you ask?

Design patent expert and University of Oklahoma College of Law law professor Sarah Burstein says, “It is difficult to see how this design is novel, not obvious, or ornamental in any meaningful way, yet it easily satisfies the Federal Circuit’s eroded standards of design patentability.”

While the shopping bag patent might seem like an easy one for others to infringe – inadvertently or not, and thereby, a potential litigation spree waiting to happen –  there is a bright side. “Courts have (quite correctly) maintained that a high degree of visual similarity is required for infringement,” according to Burstein. “And the similarity required is even greater when there is a lot of close prior art [all of the information that is publicly available before a given date that might be relevant to a patent’s originality], which is what I expect the case is here.” With that in mind, “if Apple ever asserted this in litigation, it could be really difficult to win on infringement.”

The patent is far from useless, though. Burstein notes, “It could have value to Apple as an addition to a defensive design patent arsenal or for extra-judicial enforcement efforts.” Still yet, “it might be used as a basis to claim priority in foreign applications in jurisdictions where the infringement standard is looser.”

Apple’s Existing Portfolio

Seeking design patent protection for a bag is not completely outlandish if we consider some of Apple’s existing design patents and its legal strategy to date. As Burstein told tech site GigaOm back in 2012, around the outset of the most infamous Apple v. Samsung case, design patents were traditionally limited to fields, such as furniture and lighting.

That is, until Apple began obtaining them for elements of consumer electronics. The company’s design chief Jony Ive, alone, is among those listed on nearly 2,000 Apple patents – from tables and “credenzas” to a “display screen or portion thereof with icon” and a “music user interface.”

The Cupertino-based company has expanded its arsenal of design patents far beyond the ornamental aspects of its phones and computers. In fact, Apple currently holds design patents for the ornamental design of a number of other shopping bags, tables, drawers, planters, “combined doors with room,” lighting fixtures, chairs, staircases, display structures and stands, a room, at least two buildings, and an architectural structure. That is a short list and is in addition to the vast array (think: 15,000 or so) utility patents for the actual computers and iPhones, etc.

Intellectual property lawyer Peter Toren of Weisbrod, Matteis & Copley told GigaOm, “Apple is very much a believer in using a coordinated, comprehensive intellectual property protection scheme.” This means that not only can you not legally copy the layout of the iPhone or the design of the AirPods, you also cannot legally recreate the layout of an Apple store or the design of its chairs, either. So, competitors, stay far away and be sure to design your own bags.