Puma and Forever 21 settle Fenty footwear suit
The IP brawl between fashion retailer Forever 21 and sportswear company Puma has come to an end, after the parties agreed to settle.
On Wednesday, November 7, Puma and Forever 21 filed a stipulation of dismissal at the US District Court for the Central District of California, noting that they had reached a settlement agreement.
In March last year, Puma took Forever 21 to court over the retailer’s Yoki Sneakers.
Singer Rihanna, who has acted as the women’s creative director for Puma clothing and footwear, served as ambassador for the company’s Fenty label, according to the original lawsuit.
In 2015, Puma launched the Creeper trainer, under the brand name Fenty Puma by Rihanna.
Over the next two years, Puma launched the Fur Slide sandal and the Bow Slide sandal.
Forever 21’s Yoki Sneakers allegedly “blatantly copied” these shoes, according to Puma.
The Creeper is protected by US design patent number D774,288 and all the shoes are protected by trade dress, the claim said. The Fenty shoes are also protected by copyright, the elements of which include “the ridged vertical tooling and grainy texture encompassing the thick rubber outer sole”, according to the suit.
In June 2017, Puma failed to obtain an injunction against Forever 21, after US District Judge Philip Gutierrez found Puma had failed to carry its burden in demonstrating that a preliminary injunction should be warranted.
Then, in January this year, Forever 21 attempted to bring Rihanna into the fight.
Forever 21 had asked for an extension to the deadline to add parties to the lawsuit and to amend pleadings in late December, a move that was unopposed by Puma.
The retailer claimed that the pleadings in the case and Puma’s public statements led to the conclusion that Rihanna may be a “necessary and indispensable party” to the litigation.
Forever 21 claimed: “Although Puma publicly advertises that Rihanna herself designed the shoes at-issue in this litigation, Rihanna is not named as an author on Puma’s copyright applications or as an inventor on Puma’s design patent.”
The retailer accused Puma of misrepresentation, claiming that there were only two logical conclusions to draw: either that Puma misrepresented material facts to the US Patent and Trademark Office and the US Copyright Office, or Puma misrepresented to consumers that Rihanna designed the shoes.
The settlement follows Forever 21’s submission of a motion for partial summary judgment, filed in October this year.
In the motion, Forever 21 said it would move for summary judgment of non-infringement on the design patent claim.
The court has not yet ordered the dismissal of the dispute.
Despite the settlement in this clash, Puma and Rihanna’s fashion company is still embroiled in another IP suit.
In October, American fashion brand Freedom United accused the two parties of trademark infringement. Freedom United owns a figurative trademark (4,663,180) featuring the abbreviation ‘FU’ above the words ‘Freedom United’, in international class 25 for hats, sandals, and t-shirts.
Rihanna, in collaboration with Puma, is allegedly using a confusingly similar trademark to the ‘FU’ ones in relation to her Fenty brand.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories like this sent straight to your inbox.
Today’s top stories
IP attorney sues Walmart over flashlight design patent
Miss World fails to fight off pageant TM at UKIPO
