by Dennis Crouch
Kanye West and Yeezy v. Walmart (California State Court 2021)
West helped to design the YZY Runners — a shoe that I would never have imagined possible. Walmart’s version are clearly knock-offs and West has sued. [WestvsWalmartYeezyComplaint]
The problem for West is that there is no underlying design patent, utility patent, or copyright registration. So, the lawsuit alleges Unfair Competition and Quantum Meruit both based on California law.
Defendants sold an imitation version of the popular and distinctive YEEZY FOAMRUNNER, notwithstanding comments by consumers that were or should have been sufficient to alert Walmart to the presence of imitation goods on its website. Further, Walmart traded off of the popularity and goodwill of West and the YEEZY brand in marketing, selling, and profiting from the sale of the Imitation Shoe. . . . [Walmart’s conduct] was immoral, unethical, oppressive, and/or unscrupulous in that it was designed to confuse consumers and profit off of the YEEZY brand.
Complaint.
It appears that the shoes are no longer available either from Yeezy or Walmart. The timing of the lawsuit appears to coincide with a new Yeezy model being released now:
A knock-off design in the Fashion Industry?
This reminds me of that scene in Casablanca between Rick and Captain Renault:
Rick: How can you close me up? On what grounds?
Captain Renault: I’m shocked, shocked to find that gambling is going on in here!
[a croupier hands Renault a pile of money]
Croupier: Your winnings, sir.
Captain Renault: [sotto voce] Oh, thank you very much.
[aloud]
Captain Renault: Everybody out at once!
Yes, Captain Renault would be shocked to find that knock-offs are going on in the Fashion Industry. In hindsight, many are asking why Yeezy didn’t file a design patent. I’ve filed fashion-related design applications for a number of clients. Knock-offs are expected in the fashion world. While design patents are relatively cheap and easy to obtain, the filing of a design application for a particular product. including various embodiments which can later be spun out into divisional applications, is still a business decision that must be made before one even knows if the product will be a commercial success. In general, no one wastes money trying to knock-off a commercially unsuccessful product.
Personally, the foam runner shoe looks more like the cardboard shoe-inserts they put inside new shoes to help them hold their shape.
Nobody likes a ripoff artist, but the case seems specious as state claims of this nature are preempted by federal law. I’d suggest the plaintiff’s lawyers take a look at Compco Corp. v. Day-Brite Lighting, Inc., 376 U.S. 234 (1964), “[w]hen an article is unprotected by a patent or a copyright, state law may not forbid others to copy that article,” because to allow otherwise would to interfere with federal policy “of allowing free access to copy whatever the federal patent and copyright laws leave in the public domain.” That case is old, but it’s still good law and the underlying principle has been reaffirmed numerous times.
The better option for the plaintiff would have been to bring a Lanham Act (oh, sorry Dennis, Trademark Act) claim in federal court under Section 43(a) based on infringement of an unregistered trade dress. That claim would be an uphill battle substantively (plaintiff would have to show secondary meaning, non-functionality, and overcome judicial hostility of using trade dress law to protect product design), but such a claim would at least get beyond a motion to dismiss. This Complaint here makes a brief mention of Section 43(a) but doesn’t adequately plead a trademark/trade dress claim, so as written it is susceptible to removal to federal court and then dismissed based on complete preemption.
Trade dress (packaging that indicates source) is not an evident path on the facts provided (nor is it sufficiently spelled out in the complaint).
Nice add on the notions of ‘copying is an acceptable policy.’
A bit “off the wall” perhaps but given that imitation is the most sincere form of flattery, perhaps Walmart’s copying, and the complaining that followed, and the publicity that followed that, was all part of the YZY business plan, calculated to implant in the minds of consumers that the Plaintiff is innovative, a style leader, and makes products of higher quality than anybody else.Dennis, you write of a “problem” for YZY, but maybe it isn’t a “problem” at all?
Perhaps too a win-win for both sides. If the imitation is a look-alike which, to discrning viewers is easily distinguishable, but a fraction of the price, then this dispute reinforces in the minds of both YZY and Walmart customers that they did indeed make the correct and intentional purchasing decision?
After all, complaining when you have no IPR to enforce must be a heck of a lot cheaper than pursuing an IPR case all the way to a full trial of the action. And, there’s no such thing as bad publicity, is there?
I do chuckle at MaxDrei’s missive, as the actual complaint does read like an advertising ploy.
Inadvertent humor is one of the richest sources of irony
Here, MaxDrei muses “And, there’s no such thing as bad publicity, is there?”
And is the epitome of “bad publicity for his own tired and trite unwillingness to learn and repetitious “throw C R P against the wall to see what sticks.”
Separately, Perry’s reply of section 43(a) (codified at 15 USC 1125, iirc), is certainly an interesting point to consider.
I did take a moment to peruse the actual complaint (calling out California law).
Some observations:
Point 4 of the preliminary statement of the complaint: “Consumers are purchasing the imitation YEEZY FOAM RUNNER footwear from Walmart on the mistaken belief that the shoes are associated with West and the YEEZY brand, as evidenced by comments on the Walmart website and on social media.” appears to be actually contradicted by the consumer quote in this article (Cynthia), as the consumer appears to know full well that the cheaper version at Walmart is just not the real McCoy.
I am not certain the reasoning behind the tactic of “Does 1-10” (points 9-11).
Statement of Fact point 20 ties “YEEZY” as a source-identifying trademark.
There is an abundance of “facts” masquerading as puffery and self-sensationalistic, if not bombastic “advertising.”
Point 37 misses the mark with its “consumers likely would have purchased [genuine] were it not for the cheaper knock-off Imitation Shoe.” This is pure fantasy, as there is zero evidence that anyone would have otherwise ponied up the difference. Would some have? Perhaps. But the assertion simply asserts as fact something that would need to be actually shown.
Point 38 is also off. There can be no doubt that Walmart is aware of what it sells, and the consumer comments thus provide no “alert.”
Point 40 also explicitly notes the difference between knock off and “the real ones.”
Finally getting to the Cause of Action…
Seeing a lot of ‘feelings’ being asserted… but no actual mapping to the California Code to establish the cause.
Point 47 mentions (in passing) the Lanham Act.
Touching on the California UCL, it appears that the suit barely scratches the surface, and certainly does not actually address any actual actions by the defendant (by way of the defendant’s advertising). The ‘facts’ of the complaint are entirely heresay third party consumer statements (which as noted, at times contradict the plaintiff’s assertions).
The crux of the matter here comes down to: can someone sell knock-offs that otherwise do not violate any law? Mr. West appears to be indignant at the mere selling of knock-offs, but if that act – alone and of itself – is legal (for example, if one does not actually make the case that another protective IP law has actually been violated), then ALL that one has is whining.
Butt ugly shoes make bad law
“[Walmart’s conduct] was immoral, unethical, oppressive, and/or unscrupulous”
. . . and big companies started caring about such things when?
Money over morals.
Especially when it comes to IP.
Especially.
There are direct avenues available to provide the protection (along more than one set of Constitutionally sanctioned avenues); one avenue of which expressly deals with customer confusion.
Shame on West for not availing himself of this protection, but his “they copied me” whine should be dismissed with prejudice.
Yes. I wonder if the lawyers have ever read the Supreme Court’s Bonito Boats decision. Then again, that is an ancient case (1989).
“in many instances there is no prohibition against copying goods and products. In general, unless an intellectual property right such as a patent or copyright protects an item, it will be subject to copying. As the Court has explained, copying is not always discouraged or disfavored by the laws which preserve our competitive economy. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 160 (1989). Allowing competitors to copy will have salutary effects in many instances. “Reverse engineering of chemical and mechanical articles in the public domain often leads to significant advances in technology.” Ibid.”
TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 US 23, 29 (2001)
Section 43(a) of the Lanham Act, to be precise. Doesn’t require registration…
Please see above as well…
Not altogether unsurprising…
But Google does NOT yield a meaningful search result for the business entity of “Daeful,” the entity associated with the advertising of the product BY Walmart.
Instead, searching the USPTO does provide a single hit: word mark, SN 90364912 (filed 12/7/2020; first use claim of 11/01/2020); applicant is a Chinese LLC.
Yes, but you have to show secondary meaning, which was the holding in Walmart v. Samara Bros. That’s hard to show, especially for a new design.
It is also possible for Yeezy to obtain/apply for a copyright registration on its design (no comment on whether the current design is copyrightable). In fact, the company was successful in doing so in the past for other shoe designs, so it’s curious that it didn’t pursue this now. (see Copyright Office Review Board decision to reverse the Copyright Examiner – Second Request for Reconsideration for Refusal to Register Yeezy Boost 350 Version 1, Yeezy Boost 350 Version 2; Correspondence ID: 1-390ELT5; SR #s 1-4601414311, 1-4600937107 (2019)).
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