On September 30, 2019, Nike filed a patent infringement lawsuit in the U.S District Court for the Central District of California against Skechers. Nike is claiming that Skechers is copying their patented designs for the Nike Air Max 270 and the Nike VaporMax. Nike is seeking damages in multiple areas, including those adequate to compensate for the alleged patent infringements, the total profit realized by Skechers, supplemental damages, and profits for any continuing post-verdict infringement until final judgement. Nike is also asking for treble damages, that is, increased damages up to three times the amount found or assessed. Finally, Nike seeks prejudgment and post-judgement interest on any damages or profits awarded, along with attorneys’ fees.
A design patent protects the ornamental design of a product. While the product may be functional, design patents do not protect the functionality of the patent. Rather, to protect the functionality of a product, a utility patent is needed. To demonstrate design patent infringement, the plaintiff must prove that an ordinary observer would be unable to distinguish between the patented design and the accused product when they are side by side. This is referred to as the “ordinary observer” test. More specifically, this test, as most recently set forth by the Federal Circuit, provides that, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”
Notably, this has been modified to include the importance of prior art. Prior art includes any and all information that tends to show that a claimed invention was already known or would have been obvious at the time the patent application was filed. In the context of design patent infringement, the ordinary observer compares the patented design to the prior art. If the ordinary observer determines that the patented design is close to the prior art, smaller differences between the accused product and the patented design will be more important to the ordinary observer in determining whether infringement has occurred.
In the complaint, Nike asserts that Skechers previously admitted to taking inspiration from other sneaker companies and calling it “Skecherizing.” Nike believes that Skechers’ CEO, Robert Greenberg is to blame due to a Skechers corporate witness who previously testified that Mr. Greenberg “gives orders to knock-off competitors’ products.” There is a difference between inspiration and infringement. One can be inspired by a product and use that inspiration to either build upon what already exists, including ideas which are already patented. However, admiring a product so much that you simply recreate and distribute under your brand for your own profit constitutes infringement. As discussed above, Nike must prove that Skechers copied their patented designs by marketing and selling a design that is “substantially similar” to their patented. design. Further, to receive the treble damages it seeks, Nike also must prove that Skechers intentionally infringed its design.
This lawsuit is not the first between Nike and Skechers. In particular, Nike and its subsidiary, Converse, have filed previous lawsuits against Skechers for infringement. In the present complaint, Nike cites two pending lawsuits against Skechers. One is for the alleged infringement of the Converse high top design and the other is for the patented Nike Free and Flyknit designs. In the present complaint, Nike included side by side comparison photos for the two previusly pending lawsuits as well as the current dispute. Nike also mentioned a YouTube video review of the Skech-Air Atlas shoe, where the commentator describes the Skech-Air shoe as a “blatant Nike VaporMax knockoff” where they “remove all the things that make VaporMax good and replace them with BS.”
Nike asserts that, as a business, they invest heavily in research and design which lead to “innovative footwear designs and technologies.” As such, they take their designs and ideas seriously and continually take steps to protect their intellectual property. Skechers, however, has a completely different view of its infringement litigation with Nike. According to a recent post by Skechers on Twitter, Nike has been notifying Skechers’ retail partners that Skechers is infringing on Nike’s patents. In response, Skechers asserts that Nike is bullying them and that this is Nike’s way of avoiding competing with Skechers. The court of public opinion apparently disagrees with Skechers. Numerous individuals have responded to Skechers’ Twitter with comments such as, “you even put AIR in the name,” “their creative department is an embarrassment,” and “Nike isn’t bullying you, they’re just standing up for themselves.”