Puma is still fighting to halt Forever 21’s sales of shoes allegedly copying the designs of Fenty by Rihanna collection, even after the chain has so far succeeded in beating back a number of infringement-related claims.
The athleticwear brand on Monday told a California federal court that it’s asking the U.S. Court of Appeals for the Federal Circuit to reconsider a June decision allowing Forever 21 to continue selling a suede Creeper sneaker, a slide sandal with fur and a slide sandal with a knotted satin bow that Puma claims are copies of designs created as part of the Fenty by Rihanna line.
Although the Ninth Circuit would typically be the court to handle appeal from a California federal court, the Federal Circuit has national jurisdiction over trademark matters.
Puma’s decision to appeal comes shortly after Judge Philip Gutierrez largely sided with Forever 21 in the ongoing infringement litigation, dismissing all but one of Puma’s claims against the chain, while giving it an opportunity to strengthen its initial complaint.
Representatives for Puma and Forever 21 could not be reached for comment. Plaintiffs typically get about three weeks to amend a complaint.
Specifically, the judge nixed Puma’s accusations of trade dress infringement, copyright infringement and unfair competition, while leaving its claim of design patent infringement intact, after Forever 21 in May argued that the designs at issue are not original enough to maintain design or copyright protection.
While Judge Gutierrez declined to rule on whether or not the Puma designs at issue are worthy of copyright protection, he noted in dismissing the copyright infringement claim that the brand hadn’t yet provided enough proof of its related copyrights.
As for the trade dress infringement claim, the judge found that Puma had not proven any features of the three shoes were more than functional aspects of the designs, which is needed to show a design has a secondary meaning that essentially works as a brand signal to the public.
“Although the court agrees with Puma that functionality is a question fact that is generally not suitable for resolution on a motion to dismiss, Puma is not relieved of its obligation to adequately plead non-functionality in order to state a claim for trade dress infringement,” Judge Gutierrez said in his order.
But Puma did manage to hang on to the important claim of design patent infringement for its popular Creeper sneaker.
While Forever 21 argued that the claim had to be rejected because of some differences between its and Puma’s designs, that wasn’t enough for Judge Gutierrez.
“Minor dissimilarities will not defeat a design patent infringement claim if, in consideration of the whole design, an ordinary observer views them as substantially the same,” he said. “Here, Puma has sufficiently alleged that its Creeper sneaker and Forever 21’s Yoki sneaker bear a substantial degree of similarity when considering the overall design.”
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