Protecting Design Patents on Shoes

Nike v. Wal-Mart (N.D. Ill. 2008)

Nike has sued Wal-Mart for design patent infringement asserting infringement of Pat Nos. D498,914 and D499,248. As with many design patent lawsuits, the patentee here (Nike) also makes a product covered by the design. Design patents have become more important to Nike as the company’s trademark ‘swoosh’ has been less prominent in recent shoe designs. Every year during the past decade, Nike has ranked in the top ten owners of newly issued design patents. 

Damages for design patent infringement may be calculated a few different ways. Section 284 calls for compensatory damages with a base of a “reasonable royalty.” Section 289 looks to disgorge profits from the infringer.

In the late 1990’s, Nike won another shoe design patent case against Wal-Mart. In a damages appeal, the Federal Circuit found that Nike had not properly marked its products — holding that to take advantage of the marking statute, a patentee must prove “that substantially all of the products being distributed were marked, and that the marking was substantially consistent and continuous.” Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998) (Newman).

Notes:

  • The top image is a portion of the infringement claim chart from the complaint. The second (pink) image is a Nike shoe.
  • First seen on Patent Hawk
  • Nike Complaint

19 thoughts on “Protecting Design Patents on Shoes

  1. I’m not even sure what constitutes infringement of a design patent, but if the standard is “confusingly ugly” then Nike’s shoes meet the standard.

  2. Well, that’s a blast of trenchant comment Mr Saidman. How about the USA also joining the Strasbourg Convention on Matters of Substantive Patent Law? Unlike the EPC, it’s open to non-European countries to sign up. I still think that the solid work done in Europe in the 1960’s, to reconcile German (read JP and China) with English (read UK Empire) patent law produced a patent law model fit for the whole world to sign up to. Subsequent events have proved the model to be just that, and resilient to all attacks. Nowadays, the substantive law point isn’t an issue. Instead, it is how to deal with patent disputes, because validity issues are so abstruse, and infringement issues involve such high monetary values. That’s where the national problems still remain, and where USA (with English common law and equity and a reformed Patent Statute) could get back to a position of leading the world.

  3. Japan has design patents.
    But at the same time I quite agree with MaxIII that the better model is design registrations, a la copyright, as is done in Europe and all the countries which have had an opportunity to compare design patents to registrations (e.g, Brazil). There are many reasons a design registration system is better, the main ones being design patents take too long to get, and cost too much. A new company can ill afford to obtain 50 design patents on its new products, every product season, especially when it may turn out that none of them are knocked-off. A registration system makes more sense, because it is quick and cheap; if there’s a knock-off problem, let the parties then spend the money to slug out the validity and infringement issues. The Design Registration League (www.protectdesigns.org) is advocating just such a system for the US. Now that the smoke has cleared from Egyptian Goddess, and once a new administration takes over in January, and once the patent reform bill is passed (ha ha ha), then maybe Congress will have some attention to pay to protecting designs with a 21st century approach, so the US can catch up to the rest of the world.

  4. Mr Bloom you are of course entirely correct. Europe does have protection for designs. It has its “unregistered design right” that is like copyright. Independent conception is a defence. Then it has its 25 year design registration system, in which independent conception is not a defence. But ROW design registration law doesn’t have “claims” and doesn’t have a “specification” and doesn’t have a “utility” “sufficiency” or “obviousness” provision so it is difficult to see it as creating any kind of “patent”, even though it does protect functional designs.

  5. So, Mr Fox, to repeat: why patents. You’re calling for a right against copying aren’t you? In your vision, independent conception would excuse the perpetrator, but is no defence to a charge of (design) patent infringement.

  6. “2) no other country in the world has design patents”

    Maybe, but don’t many of them have protection for “industrial designs”? Including our European friends, with Community Design registration?

  7. Design patents have many benefits. One example is that many consumer products have a short life cycle and a design patent can be procured quickly. As to anti-competitive, I would submit that is VERY hard to infringe a design patent when a person such as a true industrial designer uses their own creativity when designing a product. Only a problem when a person attempts to create a non-infringing design using a design doing well in the marketplace as a template. Thats not ant-competitive: thats preventing knock-offs. So, how about getting rid of knock-offs as opposed to getting rid of design patents.

  8. But Mooney raises a serious question “What are design patents for”? Every patent is an impediment on free competition, so there has to be a good enough public policy reason to justify the impediment. Is there any other country in the world that has design patents? Plenty that have design registrations of course, but design “patents”? Maybe it is no coincidence that 1) US design patent law is in a mess 2) no other country in the world has design patents and 3) US science and US artistic endeavour is world-beating but US product design is not. It’s easy to make the public policy argument in favour of 1) copyright and 2) utility patents in all fields of technology, but “design patents” and “patents for new financial products”. I think not.

  9. You don’t do the vast majority of Americans any good, Mooney, so I fervently hope you get shut down. Why don’t you go back to your own website with your garbage ideas. Oh wait, nobody reads your website.

  10. Mooney your lines about design patents are sooooo old and tired. Who exactly are you shilling for? Who cares WHY companies want design patents, the can get them and they DO get them. And they get trademarks too. Who cares? Why don’t you just STFU? You beat on us relentlessly with your crappy little comments – so, for g-d’s sake, let the design patentees do their thing.

    You don’t know anything about business; you’re just a very annoying person with a keyboard, waaaay too many opinions, and waaaaaaaaay too much time on your hands.

  11. “The issue seems to be how do you compare design.”

    Not only “how” but also “why”. These are trademarks that are being protected but frickin “ornaments.” Who gives a crxp, except for big corporations that want tools to beat on other corporations?

    Get rid of design patents. Will people stop designing?

    Nope.

    Will designs get worse?

    Nope.

    There’s no point. It’s just a playground for businesses with money to burn. I’d like to believe that playground is on its way to being shut down in the United States. It hasn’t done the vast majority of Americans any good.

  12. The issue seems to be how do you compare design. Specifically, is there a standard or an acceptable way to compare objects such as shoe. In the absence of a single or several yard sticks, comparison is downright arbitrary.

  13. FWIW, I think the infringement claim for D499,248 is better than for D498,914 (which is the one shown above). Still, though, the peripheral shape of the “springs” in the Wal-Mart shoe are almost the inverse shape of what’s shown in the two Nike patents.

  14. MM, I’ll bite on this one:

    “Yes, those big silver coils on the top part of the Walmart shoe are quite distinct from the design drawing, which emphasizes the middle coil.

    Seems like an easy summary dismissal is in order.”

    No one says they’re infringing dotted-line portions of the Design Patents. I’ve always been under the impression that it’s the solid lines that matter in Designs which is what made these two issuable in light of the cited USD344398 (Brian L’s contribution above). Of course, I also know that Court standards seem to change on a monthly basis these days, so we’ll let the judge/jury decide rather than a straw poll of clever PatentlyO posters.

  15. Yes, those big silver coils on the top part of the Walmart shoe are quite distinct from the design drawing, which emphasizes the middle coil.

    Seems like an easy summary dismissal is in order.

    Oh but wait Nike will have some expert to testify.

    Oh but wait it’s all about the ordinary observer so experts aren’t needed. I guess Nike will take a poll of people and ask them questions that Nike thinks are relevant to design patent law which is a complete mess.

    We should be thankful we have the opportunity to buy these wonderful shoes in America. We need these shoes, especially now.

  16. It certainly looks like the spring portion of the Wal-Mart shoe is a lot closer to another one of Nike’s patents USD344398 than the patents cited in the complaint.

  17. Well, Walmart’s shoe looks sort of the same, but it’s certainly not identical to Nike’s shoe.

    On the other hand, I’m sure Nike’s shoe went through a rigorous examination process and doesn’t remotely resemble any other shoe that was ever drawn before throughout all of recorded history.

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