Boston shoe manufacturer Converse accuses Steve Madden Ltd. of infringing two design patents covering soles of sneakers. Converse’s two patents, D873,547 and D874,106, cover portions of the sole of Converse’s Run Star Hike sneaker.
The ‘106 patent covers the rear portion of the sole (the black portion of the Converse sneaker at right), while the ‘547 patent covers the sole from about the mid-point of the front, tan section to the midpoint of the rearm black portion. The remainder of the sneaker was disclaimed in both patents.
Converse asserts that Madden’s Madden Girl Winnona Flatform Hi-Top infringes the ‘106 patent. Converse sent Madden a cease and desist letter shortly after the Madden Girl Winnona Flatform Hi-Top became available in March. Not only did Madden continue selling the accused sneaker, Madden introduced a second model, the Shark sneaker, that Converse says infringes both design patents because it copies the two-part sole of the Converse sneaker.
This case demonstrates the importance of claiming many different aspects of a product design. Here, by disclaiming the non-sole portions of the shoe, Converse enabled a broad scope that would cover sneakers having uppers that differed from Converse’s actual product. Further, by having the front of the rear part of the sole in broken lines in the ‘106 patent, the patent potentially covers both Madden sneakers.
UPDATE – many thanks to The Fashion Law for quoting me in their report on this case. You can read their analysis of this case here, and check out the rest of their insights into fashion law, both intellectual property and otherwise, at www.thefashionlaw.com.