Puma, Forever 21 file stipulation of dismissal at US District Court

On November 7, Puma (a German multinational company which is the third largest sportswear manufacturer in the world) and Forever 21 (an American fast fashion retailer) reported that they had reached a settlement agreement in terms of the design patent, trade dress, and copyright infringement lawsuit which was filed by the former against the latter in April 2017 at the U.S. District Court for the Central District of California.

Puma and Forever 21 filed a stipulation of dismissal at the Court, which states that “all claims and defenses in this action shall be dismissed with prejudice,” implying that Puma cannot refile the case on the same grounds at a later date, and that “all parties [will] bear their own fees and costs.”

Puma had filed the lawsuit against Forever 21 in March 2017 over the American retailer’s Yoki Sneakers.

The lawsuit mentioned that Robyn Rihanna Fenty (a Barbadian singer, businesswoman, diplomat, actress, and songwriter), who acted as the women’s creative director for Puma clothing and footwear, served as ambassador for the company’s Fenty label.

Puma stated that Forever 21’s Yoki Sneakers allegedly “blatantly copied” the Creeper trainer—which was launched by Puma in 2015 under the brand name Fenty Puma by Rihanna—as well as the Fur Slide and Bow Slide styles. Puma thus asserted claims of trade dress and copyright infringement.

According to the lawsuit, the Creeper trainer is protected by US design patent; all other shoes are protected by trade dress; and the Fenty shoes are protected by copyright.

Puma had initially filed suit against Forever 21 in June 2017, claiming that Forever 21 replicated and sold three of the most prominent footwear designs from Rihanna’s sold-out collection for Puma in an attempt to “trade on the substantial goodwill of Puma, Rihanna, and the Fenty shoes.” However, Judge Philip Gutierrez, US District Judge of the US District Court for the Central District of California, had observed that Puma had failed to carry its burden in demonstrating that a preliminary injunction should be warranted, and therefore, Puma had failed to obtain an injunction against Forever 21.

Thereafter, in 2018, Forever 21 stated 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 stated that Puma should be taken to task for “misrepresenting material facts”, including who, exactly, designed the shoes, “to the U.S. Patent and Trademark Office and the Copyright Office” with its filings for some of the footwear at issue in the case, “thereby committing fraud.”

In response, Judge Gutierrez observed, “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.”

Therefore, Judge Gutierrez said, “There are only two logical conclusions to draw. Either: “Puma misrepresented material facts to the Patent Office and the Copyright Office, thereby committing fraud on those offices; or Puma has misrepresented to the consuming public that Rihanna designed the shoes at-issue in this case, thereby misrepresenting to this court that her involvement impacts the goodwill it contends is associated with the asserted trade dress.”

Subsequently, in October 2018, Forever 21 submitted a motion for partial summary judgment stating that it would move for summary judgment of non-infringement on the design patent claim, thus leading to the settlement of the issue.