Shoe manufacturers go toe to toe over design patent infringement. SKETCHERS v. ELIYA

A patent is a set of exclusive rights granted to the inventor of a new invention. To be granted a patent in the United States an inventor must file a patent application with the United States patent and trademark Office. Patents can be granted to inventions that fall into two major categories, utility patents and design patents. A utility patent is a patent that covers an invention that relates to a new or improved product, process or machine. A design patent allows an inventor to protect the original shape or surface ornamentation of a useful manufactured article. Both types of patents grant the owner of the patent the exclusive right to make, use, sell and import the invention in the United States. If someone other than the owner of the patent attempts to exercise one of these exclusive rights that can be considered patent infringement.

Fashion and articles of clothing present a unique challenge to intellectual property law. Fashion is considered functional so it generally cannot be protected by copyright law, because copyright law does not protect the functional aspects of an object. Also, fashion is inventive enough to be protected by a utility patent; shirts, pants and shoes have been around for centuries so it would be next to impossible to demonstrate that one of those objects qualifies for a utility patent. However, it is possible for an inventor to get a design patents on a new article of manufacture that is an article of clothing.

While utility patents and design patents are similar in the rights they grant, the protections granted by each type of patent are substantially different. A utility patent can cover the functional aspects of a machine or process and claim many different aspects of the invention. A design patent has only one claim which covers the shape, surface ornamentation or a combination of the two, of an article of manufacture. Surface ornamentation is a pattern or picture applied to a product. A design patent protects only the appearance of the article and not structural or utilitarian features. If an aspect of a design is functional, it cannot be protected by a design patent, unless there are a variety of ways to perform the same function a design may still be considered ornamental. Despite these limitations, a properly drafted design patent gives the owner of the patent a significant amount of protection.

A case which features a dispute over a design patent related to fashion is ELIYA, INC. v. SKETCHERS U.S.A, 1:19-cv-00861 (S.D.NY 2019). The plaintiff in this case is Eliya, a company in the business of creating original shoe designs, manufacturing, promoting and selling such shoes domestically and internationally. One of plaintiff’s designs features a large bow over the tongue of the shoe, a picture of the shoe is reproduced above. The defendant in this case is Sketchers, a company that also designs, manufactures and sells shoes. The defendant has a number of design patents on its shoe designs. One of those patents is for a shoe with a bow on it which is reproduced in the picture above.

In January 2019 the defendant sent the plaintiff a cease and desist letter claiming that the bow design infringed on the defendant’s design patent. The plaintiff responded with a lawsuit requesting that the court issue a declaratory judgement of non-infringement. The plaintiff claims that the court should grant this request because the plaintiff’s design patents cover functional aspects of a shoe and that the design is not novel because other shoe manufactures produced designs which feature a bow, before the defendant. While the plaintiff give examples of shoes with bows as evidence the defendant’s design is not novel, it does not elaborate on how the bow design is functional.

The plaintiff makes a strong argument that the design patent is invalid, however the defendant will be given a chance to rebut these arguments in its answer.

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