No stranger to litigation, Rothy’s launched a shoe-centric lawsuit last month, this time accusing fellow ballet set maker Birdies of forgoing “independent product development” and, instead, “choosing to copy Rothy’s innovative and distinctive product designs in violation of intellectual property rights, ”a claim that mirrors the one Rothy’s previously made against Steve Madden. Rothy’s leads the way in the lawsuit it filed in northern California federal court last month, saying it has developed a “voracious following” for its “unique, innovative, durable, comfortable and stylish footwear.” made from recycled materials. materials and are “instantly recognizable” to the consuming public.
In view of the above and regardless of whether “his creative achievements have resulted in broad intellectual property protection for his innovations, including design patents,” San Francisco-based Rothy says his “innovations have is frequently copied by them. attempt to capitalize on its success by illegally imitating [its] protected product designs. Among these imitators? Birdies, who claims Rothy “blatantly copied almost every aspect of [its] valuable designs through willful patent infringement “after allegedly purchasing” numerous pairs of [its] shoes for copying ”and have them“ ship to Birdies Company’s address in San Francisco ”.
Specifically, Rothy’s, 6, claims that through the ‘Blackbird’ style shoe – “a pointy toe flat ballerina [with] a knitted upper ”- which Birdies began selling“ in or around February 2021, ”her shoe start-up colleague (and colleague in the brand popularized by Meghan Markle) infringed several of her design patents that protect the unique appearance of its Loafer and The Point styles. “Birdies intended to copy and had the claimed designs copied from the design patents claimed by Rothy creating the same or similar overall impression as Rothy’s designs,” says Rothy, claiming that “an ordinary observer will perceive the general appearance of “its patent-protected footwear design and” the corresponding design of [Birdies’ Blackbird shoe] be much the same. ”
Such a marked similarity would be evidenced by comments from social media users, “who immediately associated the newly launched and counterfeit Birdies shoe with Rothy.” Rothy mentions “just a few examples of the many posts posted on Birdies’ own Instagram account,” presumably in connection with images of her Blackbird shoe, including comments “such as,” Reminds me of @rothys, “looks like Rothy. knit style !, ” I was really hoping for a new design, not ripped off Rothy’s, ‘and’ These look like Rothys. ”
Rothy’s continues to assert that “the Birdies’ bad faith intention in their copying of Rothy’s creations is underscored by their propensity to take inspiration from Rothy’s products, which has led to the publication of the infringement. [Blackbird shoe]. For example, Rothy claims that “In or around July 2020, Birdies released a color pattern of their ‘The Swan’ shoe model, which appears to have been derived from a proposed color pattern for The Flat shoes. Rothy’s’ Marta Ferri x Rothy ‘, which was released in October 2019. “Doubling down on her color argument, Rothy claims Birdies’ Blackbird shoes” not only violate [its] claimed design patents ”, but his rival also offers the“ lookalike ”shoe in“ several colourways that are indistinguishable from the colourways that Rothy currently offers for [its] ‘Loafer’ style – although Birdies’ same-color red-orange hue comes with an eggplant-colored trim, and its beige pairs include navy accents.
And yet, Rothy’s takes issue with Birdies’ manufacturing processes, claiming that “unfortunately, although Birdies has blatantly copied Rothy’s copyrighted product designs, it has chosen not to emulate Rothy’s commitment to sustainability. environmental. Specifically, Rothy’s claims that “Birdies manufactures its counterfeit shoes using non-environmentally friendly materials and processes.”
Prior to bringing an action and “in an effort to avoid litigation,” Rothy’s claims that on March 9, 2021, it “sent, via FedEx and email, correspondence notifying Birdies of its violation of design patents claimed by Rothy, asking Birdies to permanently stop all advertising, promotion or sale of the infringing product, [and also] request[ing] that the parties engage in a dialogue ”on the alleged infringement. Birdies responded in a letter dated March 19, 2021, in which he “categorically rejected Rothy’s requests.”
Since he “has not granted any license or any other form of authorization to Birdies with respect to any of its design patents or other intellectual property”, Rothy asserts that Birdies would have “willfully, willfully , [and] “Malicious counterfeiting” has caused “irreparable damage and injury to Rothy’s.” As a result, the shoe brand brings forward four claims of patent infringement and seeks, “among other things, a permanent injunction to prevent Birdies from infringing its design patents; damages and / or restitution of Birdies profits from their counterfeiting activities; pre-judgment interest; legal fees and expenses; and all other remedies that the Court considers just and appropriate. ”
As for the likelihood of Rothy’s accident in the case, at least some are skeptical. Design Patent Expert and Professor of Law at the University of Oklahoma College of Law Sarah Burstein, for example, said that Rothy’s claim that Birdies violated his design patent (D885,017) which extends to the shape of his ‘The Point’ style (as pictured above) “is probably the best claim for Rothy’s counterfeit ”, but even that“ is not a home run, ”Noting that“ in shoes, things that may seem quantitatively small (eg, the precise location of the vamp) can make a big difference. qualitative difference. ”
The ongoing lawsuit follows a number of specific impersonator cases involving Rothy – from the declaratory judgment case Steve Madden filed in 2019 after receiving a cease and desist letter from Rothy’s in the lawsuit that Rothy sued OESH Shoes for allegedly infringing a handful of valuable design patents and trade dress – which include the total image and overall appearance of a product, including size, shape, color or the combinations of colors, texture and graphics – from its “distinctive” flat ballet.
A representative from Birdies was not immediately available for comment.
The case is Rothy’s, Inc. v. Birdies, Inc., 5: 21-cv-02438 (NDCal.)