Skechers is back in court again, this time playing the defendant, as the New Jersey organization behind Bernie Mev footwear, Eliya, seeks to defend the legality of its designs in a new lawsuit filed in the Southern District of New York late last month.
Eliya alleges that Skechers sent the company a cease-and-desist letter regarding one of its shoe designs, the “Eliya Bow Shoe.”
“In or about the beginning of January 2019, Eliya received a letter dated January 2, 2019 from Skechers’ attorneys accusing Eliya of infringing the ‘724 Patent’ and ‘412 Patent’ by selling the Eliya Bow Shoe,” read Eliya’s legal complaint, filed on Jan. 31.
The crux of Skechers’ claim was that its design is “novel” and protected by patent law, as it is non-functional and therefore qualifies for a design patent. If true, any shoe that can be proven too close to this design could be liable for legal action if Skechers chose to pursue it.
However, Eliya lawyers argued in the company’s complaint that Skechers’ claim was unjust and that it filed the lawsuit to counter this allegation and pursue “declaratory relief” from the court—leading to the possibility of a major backfire for Skechers. Eliya’s case is that its shoes do not offend Skechers’ patent because it is an invalid patent at its heart.
To prove this, Eliya’s legal team included images in its complaint, showing the Skechers’ patent compared to a Fenty Puma design released in 2015.
Eliya brought forth the evidence to show how other sneaker designs have already been created that could have been considered in violation of the patent but that ultimately didn’t merit a lawsuit or infringement claim from Skechers. If Skechers had failed to defend its patent in that situation, it would be difficult for a jury to award damages to the company in a more recent case, the plaintiff argued.
Eliya’s lawyers also claimed that the design is, in fact, a functional part of the shoe and therefore not protected by design patent law.
Notably, Puma has, itself, been named in lawsuits with apparel companies like Forever 21, Freedom United and Adidas in the last couple of years for its shoe designs. The Fenty shoes in question are part of the collection that led Forever 21 to subpoena Puma for information regarding Rihanna’s role in designing Fenty Puma apparel.
This lawsuit isn’t the first between Eliya and Skechers either. In 2016, Skechers filed a case against Eliya alleging that the brand had copied its Skech-air soles in styles produced by the Bernie Mev brand.
Eliya is seeking the aforementioned declaratory relief along with costs, attorney fees and expenses under the assumption that the brand will be “irreparably harmed” by Skechers’ allegations of infringement for either patent.
Skechers is currently on the other side of a similar case concerning footwear rival, Adidas. In early February, Skechers pulled the same move, filing a preemptive lawsuit against Adidas after receiving a written complaint from the German footwear brand that alleged Skechers sold footwear that infringed on Adidas-held patents.