The old saying "If the shoe fits..." suggests that if a remark or allegation applies to you, you should accept it. In a recent footwear dispute, one prominent fashion designer must hope that the shoe (or allegations) do not indeed fit ... and that a court does not find him liable for being sneaky.
In a suit filed in New York, New Balance Athletic Shoe, Inc. sued renowned fashion designer Karl Lagerfeld for selling shoes through a U.S. distributor with a block capital "K" design that New Balance alleges are confusingly similar to New Balance's well-known block "N" mark and sneaker design (never mind the $200 price difference between the shoes). New Balance asserts various claims, including willful trademark and trade dress infringement, and dilution. (New Balance Athletic Shoe, Inc. v. Lagerfeld, No. 14-3943 (S.D.N.Y. filed June 3, 2014)).
In its 38-page complaint, New Balance principally argues that three of its trademarks were infringed upon and diluted: the block capital letter "N" used on New Balance's shoes, the placing and angle of the "N" on the shoes and the block capital letter "N" with a "saddle device." Interestingly, New Balance also argues that Mr. Lagerfeld, due to his "leading position in luxury goods," creates products that routinely are counterfeited. Thus, according to New Balance, Mr. Lagerfeld "has a correspondingly unique ability to damage New Balance in the marketplace" by creating a product that many consumers will confuse as New Balance shoes. New Balance seeks an award of profits and/or compensatory damages, the destruction of the infringing goods and an order recalling all of the infringing Lagerfeld footwear.
If you are wondering what a "saddle device" is, you are not a lonely soul. New Balance describes the saddle device as the piece of leather that the block capital letter "N" sits on. The company says it has exclusively used the "Block N" with the saddle device mark (together, the "Block N Mark") for over thirty years and have sold hundreds of millions of pairs of shoes bearing the Block N mark. To boot, New Balance notes that these marks are "famous" and "embody an enormous amount of goodwill, which is a valuable asset of the company."
We're usually not inclined to say a picture is worth a thousand words, but in this case it may be illustrative.
Many readers may be wondering what an athletic shoemaker and a world famous fashion designer of high-end goods have in common. New Balance, as most know, is hardly a sole proprietorship: it is one of the largest athletic shoe companies in the world, with over $2 billion in sales worldwide in 2013. Despite its success in a competitive industry, however, for a long time New Balance shoes were hardly considered fashionable.
In the complaint, New Balance admits as much, saying it refused to follow the growing trend of making fashionable athletic footwear in the 1980's, and instead kept its focus on "technical fit and authenticity." While the company claims it has long valued "substance over fashion," New Balance notes that many consumers changed their view of them with the introduction of the 576 shoe. Famous fashion designers featured the shoe on runways and it landed on the cover of the French edition of fashion magazine Elle.
The shoe's success spurred New Balance to sell more casual shoes catering to the "athletic-minded, but less technically demanding consumer" to take advantage of the rise of popularity of the "fashion sneaker." Over the years, celebrities including Rihanna,Pharrell, Seth Rogen and Will Ferrell have been seen wearing New Balance shoes.
Lagerfeld's shoe design quickly caught the attention of fashion bloggers, many of whom thought they looked quite similar to New Balance sneakers. In their complaint, New Balance lists several internet sources that take note of the similarities between the two shoes. Despite New Balance's contention that its shoes have become trendy, some bloggers don't agree.
Will all this tongue wagging over sneaker design lead to some settlement or licensing deal? Apparently so. On September 2nd, New Balance filed a Notice of Dismissal with the court, voluntarily dropping its claims. While we could not find any press release or statement on the web regarding the resolution of the lawsuit, the online listing for the disputed Lagerfeld "K" sneaker on one luxury fashion retailer was telling: "This item has sold out and is not expected to become available again."