Puma vs Forever 21

Puma vs Forever 21

This Article is submitted by –

Shalu Shravan Singhthird year law student pursuing LL.B at CMR School of Legal Studies

District Court of California, US 
Inc. 2017 U.S. Dist. CD CAL
Forever 21   


‘Intellectual’ property refers to any creation which is the result of applying one’s mind. It can be anything like- symbols, names, images, music etc. The person who actually creates it shall have intellectual rights on it in order to refrain others from copying his work and for him to take financial or any other benefits out of his creation. These rights are like any other property rights. So the interest of the creator is saved.

It includes the creators to have a copyright, patent or trademark their work and benefit out of it.

Facts of the case-

Forever 21 (an American fast fashion retailer brand) had launched a range of shoes under its brand name. Later in March 2017, Puma (a German MNC that manufactures footwear, apparel and accessories) had filed a suit against Forever 21, in a District Court of California, US alleging that the designs of the shoes manufactured by Forever 21 were similar to those of Creeper Sneaker, Fur slide and Bow slide that were manufactured by Puma under the Fenty collection (designed by a famous singer Rihanna Fenty). And so they had infringed Puma’s design patent.

The causes of action include-

1- Design patent infringement

2- Federal trade dress

3- Copyright infringement

4- Federal false designation of origin

5- State unfair competition

However, forever 21 sought a partial dismissal of the case  that the designs were not ‘new’ to puma, in fact it comes from mid-twentieth century.

Issue of the case-

Should the court grant the motion of Forever 21 to dismiss?


The case was heard by Judge Phillip Gutierrez who stated that- “Although Puma publically advertises that Rihanna herself designed the shoes at-issue in this litigation, Rihanna is not named as an author on Puma’s copyright applications or as an investor on Puma’s design patent.”

So he derived two possible conclusions from that, firstly, either Puma misrepresented material facts to the Patent & Copyright office and so committing fraud there or secondly, they misrepresented public that Rihanna designed the shoes, and so misrepresenting the courts that her involvement impacts the goodwill associated with the trade. 

For the first cause of action- 

Puma has attached patent which claims the design of the shoe in question. It needs to prove-

(1) allege ownership of the patent, 

(2) name each defendant,

(3) cite the patent, 

(4) state the means by which 6 defendant allegedly infringes, and 

(5) point to the sections of the patent law invoked.

And Puma satisfies every requirement and pleads the ownership and claims Forever 21 to have copied their design. 

For second cause of action-

Puma also claimed its second cause of action for trade dress infringement for all the aforementioned shoes. Trade dress basically includes the entire image and how a thing looks. In a case of a product or apparel, it could include shape, size, color etc.

Forever 21 in this manner, claims that Puma inadequately proves that the trade dress is functional, so the court dismisses the claim.

For third cause of action-

In order to claim for the copyright infringement, Puma needs to prove-

1- ownership of valid copyright,

2- copying of the basic elements of the original work

Forever 21 claims to dismiss this cause because of reasons-

(a) The copyright applications aren’t adequate of Puma,

(b) The shoe designs are not ones to be copyrighted since the design was not their original creation.

For fourth cause of action-

The fourth cause of action by Puma included false designation of origin in violation of Lanham Act.

For fifth cause of action-

This cause included unfair competition under Cal.Bus. & Prof. Code.

Forever 21 dismisses both the cause of action for reasons for trade dress infringement but fails.


The motion given by Forever 21 was granted in part and denied in part-

  • Puma’s first cause of action for trade dress infringement, was DENIED.
  • Puma’s second cause of action for trade dress infringement was GRANTED with leave to amend.
  • Third cause of action for copyright infringement was GRANTED, with leave to amend.
  • Fourth cause of action for false designation of origin and unfair competition under Langan Act, with leave to amend.
  • Fifth cause of action for violation of UCL, was GRANTED.

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