Once again, Skechers is taking issue with designer Steve Madden over a pair of sneakers. The two brands previously went toe-to-toe over patent infringement in 2011, and that case settled out of court. The current complaint alleges the Steven by Steve Madden “Setta” shoe design infringes seven design patents owned by Skechers related to its “Go Walk” line. There are definitely similarities between the shoe designs. However, in order to decide if patent infringement occurred, the jury would have to decide whether an ordinary observer would believe the Steve Madden design is substantially the same as Skechers’ patented design. So who has the edge this time around?

(This isn’t Skechers’ only active intellectual property lawsuit. Learn why flip-flop mompreneur Terri Kelly decided to take on Skechers in a war over words here.)

Prior Art Will Factor Heavily If the Case Goes to Trial

At a high level, the Steve Madden shoes look very similar to the designs in the Skechers patents. Nevertheless, a judge or jury must decide whether two designs are substantially the same by comparing the designs in light of other designs that were available before the patent applications were filed.

In the realm of intellectual property, we refer to these designs that were available prior to the patent applications being filed as prior art. If Steve Madden can show that the key features contained in Skechers’ design patents were in the prior art, this could narrow Skechers’ protection and affect what Skechers would have to show to prove infringement.

Prior art is also relevant to defenses to patent infringement that Steve Madden may assert. For example, even if the designs may be considered substantially the same, Steve Madden could try to invalidate Skechers’ design patents by arguing that similar designs were available before Skechers filed its patent applications. Consequently, Steve Madden would argue that Skechers is not entitled to patent protection on these designs because it was not the first to come up with the designs.

Steve Madden would have to meet a high burden (under the clear and convincing evidence standard) to invalidate Skechers’ design patents. In order to do so, Steve Madden would have to identify prior art and match it to the drawings in Skechers’ design patents to present a convincing case to the judge (and possibly the jury). It is a possibility – but it’s not easy to invalidate a patent.

Having Seven Design Patents on Its Design May Work in Skechers’ Favor

What Skechers did do, which may very well help its case, is secure multiple design patents for different aspects of its Go Walk shoe design. For example, the first patent, U.S. Design Patent No. 725,896, focuses on the pattern or woven aspect you see on the back and side of the shoe. The other design patents cover features such as the insole, the outsole, the toe box, and even the tread pattern.

If Skechers had only obtained a single design patent to claim all of the features of its shoe design, then it might be easier for a potential infringer to avoid infringement, such as by designing around the patent. The potential infringer could identify one feature of the claimed shoe design and choose not to include it in their product (or eliminate that feature from a shoe design accused of infringement).

In Skechers’ case, where there are multiple design patents covering different features of a design, this may provide a stronger “wall of protection” around the design. This approach can make it more difficult for potential infringers to avoid infringement, because so many different aspects of the shoes are protected. Accordingly, even if a potential infringer may be able to design around one design patent, it may be harder to design around multiple design patents.

Design Patents Can Offer Many Benefits to Fashion Brands

The other nice thing about design patents is they are typically much easier to obtain than utility patents. Generally speaking, in most cases you can obtain design patents in about a year from the date filed, or sometimes even quicker.

In my experience, the average time to obtain utility patents is much longer, at least 2 to 3 years. I’ve had some clients wait as long as 6 to 8 years to get a utility patent issued, because there can be a lot of back and forth between the Patent Office and the applicant in examining each patent claim with respect to the prior art, and we do not see as much back and forth with design patents.

Fashion Brands Should Watch This Case Closely

This case is a great example for anyone in the fashion industry who wants to maximize the protection of designs. When you’re dealing with products in the fashion niche, that can succeed or fail based on design, many people don’t realize design patent protection is available, but it can be.

Design patents offer an affordable way to seek exclusivity in the marketplace for a design in a relatively short period of time. This can be a much better strategy than not having any protection at all or solely relying on trade dress or trademark protection.

Skechers Is Seeking Damages, and They Have Options

If this case doesn’t settle before trial, it’s hard to predict how a judge or jury will decide the case, particularly what types of damages Skecher may be awarded if successful. If Skechers is able to prove patent infringement and the design patents are found to be valid, the company generally has two options available to them in terms of money damages: (1) reasonable royalty based on Steve Madden’s sales of the infringing shoe design; or (2) lost profits. It can sometimes be easier to seek a reasonable royalty because it can be hard to show a loss of profits as a result of the infringer’s designs being sold.

However, there is an additional remedy available – recovery of an infringer’s total profits related to the sale of the infringing design; this remedy is not available to the owner of a utility patent. However, if Skechers seeks to recover Steve Madden’s total profits, it may not be eligible to receive enhanced damages.

Skechers Also May Try to Stop Steve Madden From Selling Its Shoes

Skechers may also ask for injunctive relief to try to actually get the Steve Madden shoes off the market. Steve Madden could try to negotiate a patent license to continue selling the products, but I would be surprised if this happened. Typically, when you’re talking about competitor cases, the plaintiff usually won’t be excited to give a competitor a license to compete with them.

Photo Source: Skechers complaint against Steve Madden. (Top: Image of a Skechers’ Go Walk design patent. Bottom: Image of Steve Madden Setta show.)

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