Like Run-DMC, me and My Adidas do the illest things.
You know, slaying all suckers who perpetrate,
laying down law from state to state.  And when I
travel on gravel, dirt road or street,
I wear my Adidas when I rock the beat.

etai 1

Etai LA: Get in line, bro

I’m guessing most of my KI2Y homies wear sneakers, too, at least some of the time. Maybe you go for that James Dean retro-style upstairs.  Maybe you sport those weird individually-toed “barefoot” sneaks, so you can feel the earth move under your feet, or whatever.  Maybe, if you know the right people, you get your kicks custom made by Etai Drori here in fashion forward LA.  But whatever your preference, you might want to buy a back-up pair.  That’s because the IP lawsuits are coming fast and furious and some models may be off the shelf faster than you can say Christian Louboutin red python Rantus Orlato Flats!

It’s like so.  Consumers are presented with options like these:

Can you see the real me?

Can you see the real me?

Which is which?  That would be Converse, Fila, and Skechers, going left to right on your screen.  Next up is the venerable Stan Smith, on the market since 1963 and standard issue for every mallrat and prepster circa 1975 (myself included).  Here it is side by side with the Skechers’ Onix sneaker. See if you can spot any similarities:

Stan the Man...or not

Stan the Man…or not

Right.  Is it legal to rip-off someone else’s shoe design?  Adidas thinks not, vowing that it ”will not stand silently while Skechers copies the iconic Stan Smith shoe” and diverts customers looking for its authentic tennies. Adidas sued the unoriginal upstart for trademark infringement last month.  Likewise, Converse filed its own trademark suit against 31 different companies that sell variations of their classic all-star.  For good measure, it filed a separate complaint with the International Trade Commission to try to stem the tide of counterfeit Chucks flooding in from overseas.

"That was my skull!"

“That was my skull!”

The examples above seem like pretty straightforward knock-offs, no?  But trademark infringement in the fashion world is anything but simple.  Why? Because trademark law doesn’t protect aspects of a product that are purely functional.  The white stitching, rubber toe and close-set eyelets of the traditional Converse low-tops are functional parts of the shoe. These features do not, standing alone, constitute intellectual property. To be protected, a trademark owner must prove that consumers associate a particular design with its source.  In other words, you see Jeff Spicoli and you know he’s sporting Vans checkerboards.  The popularity or uniqueness of the design is irrelevant; for trademark protection the buyer needs to know where the product came from.  It’s not enough that different merch looks the same unless the buyer is confused about who made it.  That’s probably why Adidas didn’t sue Nike for this foot fault, the “Racquette”:


Stan Swoosh?

What if you’re a mega-popular, hall of fame legend with your own fly logo and dope sneaker line that people kill for?  Any bonus IP protection for your biz?  Not if you’re Michael Jordan and the market is China. “Qiaodan” is the Mandarin translation for “Jordan” and Qiaodon Sports is the company that is hawking sneakers bearing a strikingly similar silhouette to MJ’s ubiquitous “Jumpman” logo.

Jordan loses

afp-michael-jordan-loses-china-trademark-suit-reportJordan sued Qiaodan for trademark infringement in Beijing.  He told the press: ”Qiaodan Sports has built a business off my Chinese name…I think Chinese consumers deserve to be protected from being misled, and they should know exactly what they are buying. I am taking this action to preserve the ownership of my name and my brand. No one should lose control of their own name, and the acceptance of my case shows that China recognises that this is true for everyone. After all, what’s more personal than your name?” But, in an astonishing and unprecedented turn of events, the Beijing Higher People’s Court found no infringement!  It ruled that Qiaodan’s logo displayed no facial features, so it would be difficult for consumers to identify it as Jordan.  Okay.

GucciHow’s the footwear trademark scene looking over in Europe?  About as kooky and unpredictable as the US and China. Gucci and Guess are embroiled in a long-running war that resulted in lawsuits in New York, Milan and, most recently, Paris.  Earlier this year, a French court determined that Guess’s wack bowling shoes didn’t infringe Gucci’s. Its reasoning? “[C]ourts have uniformly restricted trademark counterfeiting claims to those situations where entire products have been copied stitch-for-stitch.” That means Guess’s wholesale rip-off of Gucci’s color scheme, logo, and all its other design elements just diluted Gucci’s brand, but didn’t actually counterfeit it.  This contradicts the earlier rulings, of course, ensuring the battle will go on indefinitely.  I’d elaborate on this blasÁ© decision, but I can’t justify spending any more digital ink on ces monstruositÁ©s.

What’s the moral of the story?  For starters, don’t expect any IP protection from China, even if you’re The Greatest Basketball Player Of All Time.  In Europe, you can diminish and devalue the strength of someone else’s trademarked garment, unless you replicate it “stitch-for-stitch.”  And here in the USA, you may have rights in your logo but not every article of clothing you slap it on.  When the trademarked merchandise is something you wear, infringement is the sincerest form of flattery.


About the Author

Jonny Balfus

I was supposed to be a rock star but, through no fault of my own, ended up an intellectual property lawyer in Los Angeles. I'm not saying that's your fault, but I'm not not saying it, if you know what I mean.

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