Like many other people, I received a ton of emails on Black Friday last year from different stores offering sales on regular-priced items. One of the emails that caught my eye was from Payless, an American discount footwear retailer. They were offering 50% off the entire store and being the bargain-lover that I am my interest was piqued. I looked through the website and stumbled on a pair of sneakers that looked to me to be exactly like another pair of sneakers by American designer, Steve Madden.
Looking at the sneakers on both websites, I noticed only two differences. The first difference is that the Payless version was listed on their website as Brash Drea Lace-Up Sneaker with the Brash logo inside the sneakers while Steve Madden’s was listed on their website as Lancer with the Steve Madden logo inside the sneakers. The second difference is that the Payless version was on sale for about $50 less than Steve Madden’s. I was interested to see if there were any more brands that sold similar-looking sneakers so I ran a google search. I came across a blog post by Leah of Elle Mae blog where she shared photos of an identical pair of sneakers from Target, an American discount store retailer called the Kressi Sneaker and pictured below:
At the time of writing this post, the sneakers were no longer available on Target’s website so I could not see more pictures and was unable to compare its price to the Payless or Steve Madden versions. However, it is fair to assume that since Target is also a discount retailer, its sneakers likely cost less than Steve Madden’s. In the fashion and beauty industry, a dupe refers to the cheaper version of a high end item. Therefore in this scenario, the Payless and Target sneakers can be described as dupes of Steve Madden’s Lancer sneaker.
This begs the following questions: what are the legal implications in this scenario and can any of these three brands validly claim that it has legal rights that are being infringed? Since these three brands are American, the applicable law to look to in answering these questions is the American Intellectual Property Law. The first step in the analysis would be to determine which brand released their own version of the sneakers first. I was unable to find any information on this so let us assume that Steve Madden’s were released first. This creates a presumption in the average mind that Payless and Target copied Steve Madden but this does not conclude the matter. The next step in the analysis would be to consider whether Steve Madden’s sneakers have any protectable trade dress – which refers to the overall appearance of the sneakers that a consumer would immediately attribute to the Steve Madden brand. An example of this is the signature red-colored sole that is attributed to Christian Louboutin shoes and has been held by the United States Court of Appeals to be a “distinctive symbol” entitled to trademark protection. The next thing to consider is whether Steve Madden used any registered design or utility patents on the sneakers. A design patent protects the ornamental features of the sneakers while a utility patent protects any technological advances used in creating the sneakers. Another thing to consider is whether the fabric used in making the sneakers has original patterns, prints or designs that are protected by copyright law. Additionally, there is the issue of whether there is evidence of actual consumer confusion or even a likelihood of consumer confusion – which refers to the chance that a consumer buying the Payless or Target sneakers would think that they are actually buying Steve Madden‘s. To this point, Payless and Target can argue that because each pair of sneakers is sold at different stores, on different websites and bears different brand names, there is no likelihood of consumer confusion as any consumer who buys a pair of the sneakers in-store or online from any one of these three brands will be very clear on where they are shopping and what brand of sneakers they are buying.
In the fashion industry, issues of infringement are not always cut and dry. A consideration of various factors is sometimes required as just because all three sneakers look similar does not mean that the first brand to release their own version has the automatic right to sue for infringement. There are facts that need to be established for a brand to have the legal right to prevent others from creating infringing materials and to even recover the profits made by the infringers.
Therefore, the takeaway for designers and brand owners is to strive as much as possible to create original designs or incorporate their own original elements into the existing designs that they rely on for inspiration as well as to conduct extensive legal and creative research when reviewing their designs prior to a launch. Doing this significantly prevents the chances of being involved in an intellectual property dispute which can have significant financial implications. An example of this is the $305 million Payless was initially ordered to pay to Adidas in 2008 for selling shoes that were confusingly similar to Adidas’s three-stripe trademark. The judgment was eventually reduced to $64 million but the impact was nonetheless severe.