On October 11, 2013, Skechers U.S.A. Inc (Skechers) filed a Complaint against Shoe Confession LLC, Perry Ellis International, Inc. and PEI Licensing, Inc. (Perry) in the U.S. District Court for the Central District of California (Skechers U.S.A. Inc. et al. v. Shoe Confession LLC et al. 2:13-cv-07573).
The Complaint alleges willful and intentional infringement of Skechers’ D651,788, D652,613, D652,614, and D650,980 design patents, trade dress infringement, and unfair competition, as related to Skechers’ GO RUN® shoe and the Defendants’ Pro Player Phaze 2M shoe.
The ’788, ’613, ’614 and ’980 patents relate to an ornamental nub pattern on a sole bottom and outsole periphery, as shown in the Figures below from the Complaint.
Skechers ‘788 patent – Shoe Bottom
Skechers ‘613 patent –Shoe Bottom
Skechers ‘614 patent – Shoe Bottom
Skechers ‘980 patent – Shoe outsole and peripehry
In the Complaint, Skechers identified the distinctive ornamental features of the trade dress as 1) a pattern of large nubs forming an X, as shown by red arrows in the figures below, 2) mid-size and smaller sized numbs surrounding the X-pattern, indicated by blue arrows below and 3) a repeating pattern of cleats and nubs on the periphery, indicated by yellow and green arrows below.
Reproduced below are the sole bottom and outsole periphery of the Skechers GO RUN® and of the Pro Player Phaze 2M, as shown in the Complaint.
The Complaint listed four causes of action in view of the alleged design patent infringement. Skechers stated that the Pro Player Phaze 2M so closely resembled the invention claimed by each of the four patents that an ordinary observer would be deceived into purchasing the Pro Player in the mistaken belief that the Pro Player includes the inventions disclosed in these patents.
Skechers argued in the Complaint that it “has suffered, is suffering, and will continue to suffer irreparable injury with no adequate remedy at law,” and requested a permanent injunction against further infringing conduct by the Defendants. Skechers further claimed that it was “damaged and losing profit’ by the Defendants” alleged willful infringement, and entitled to recover damages and total profit derived from the alleged infringement.
The Complaint further listed fifth and sixth causes of action in view of Federal unfair competition and trade dress infringement. Skechers claimed that by allegedly using its sole bottom trade dress and outsole periphery trade dress, the Defendants deceived typical consumers in the mistaken belief that the Pro Player Phaze 2M emanated from a single source, with the acquired distinctiveness owned exclusively by Sketchers.
Skechers argued in the Complaint that the Defendants’ conduct allegedly constituted a “false designation of origin and false and misleading representation of fact likely to cause confusion, and to deceive by wrongly suggesting an affiliation connection or association with Skechers.” Skechers claimed that it was “damaged and losing profit” due to the alleged infringement and alleged unfair competition, and as such was entitled to recover damages and profits due to the Defendants’ alleged violations of the Lanham Act.
The Complaint listed a seventh cause of action in view of common law unfair competition. Skechers claimed that the Defendants are “willfully, fraudulently, oppressively, maliciously, and unlawfully attempting to pass off and passing off infringing footwear” as those approved by Skechers.
In the Complaint, Skechers requested a judgment directing destruction of all infringing goods and all instrumentalities used in the production, including tools, machines and equipment, within 10 days of the judgment. Skechers further requested that the judgment award damages, lost profits, reasonable royalties and other monetary amounts. In particular, Skechers requested damages as a result of infringement, total profit from the sales of the allegedly infringing footwear, and damages as a result of the alleged unfair competition and of the lost business opportunities, with all damages being trebled. Skechers further requested punitive damages, restitution, attorneys’ fees, pre-judgment interest at the maximum rate, and costs of the suit. A jury trial was requested.