Shoe company Bernardo’s parent company, JPT Group LLC, has sued Gap Inc. and its subsidiary, Old Navy LLC, for patent infringement in federal court in Texas. JPT is alleging that Old Navy has copies two of its women’s sandal styles, for which the company has a valid patent.
JPT is arguing that Old Navy “have and continue to purposefully place infringing products into the stream of commerce” and that the retailer was aware of the patents for the Bernardo sandals but continued to produce and sell the sandals anyway.
In September 2004 and August 2005, JPT was issued Design Patents No. D495,855 and D508,305, respectively, associated with the design of women’s sandals. JPT is arguing that Old Navy copied the design of these two sandals. The complaint filed by JPT states, “Rather than undertaking their own independent development, the Old Navy defendants slavishly copied Bernardo’s innovative designs, violating JPT’s valuable intellectual property rights embodied by Bernardo branded products.”
JPT claims that Bernardo is “an iconic American brand” and that it’s “sandal designs are among the most distinctive and well-known in the footwear industry.” The complaint goes on to state that Old Navy contracted with suppliers in China to manufacture large volumes of the infringing sandals to be sold in the United States, and that Old Navy imported said sandals from China to sell within its U.S. stores.
JPT also claims that Old Navy prominently displayed the sandals in their stores and marketed them on www.oldnavygap.com. They also claim that a significant amount of the sandals have been sold within the United States.
Under patent law, a design patent protects the ornamental appearance of an object, but not the structure or utilitarian features. In essence, the design patent protects the look and appearance of an object. So, here, JPT gained protection over the design of each sandal.
The test to determine whether patent infringement has occurred regarding a design patent is stated in the 2008 opinion for Egyptian Goddess, Inc. v. Swisa, Inc., where one must merely determine whether the infringing product would appear “substantially the same” as the patented design fromt he point of view of an ordinary observer.
By using essentially the same ornamental elements from each design patent and adding or subtracting no other design elements, JPT is arguing that Old Navy infringed on their patents and thus violated its intellectual property rights.
The complaint argues that JPT “has been damaged and will continue to be damaged by the Old Navy defendants’ infringing acts.” JPT asks for an injunction as well as damages.
Old Navy has not responded to the complaint yet.
source: “Sandal Maker Says Old Navy Rips Off Designs,” Law360.com