DCT
2:08-cv-01894
Nike Inc v. Not for Noth'N LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Nike, Inc. (Oregon)
- Defendant: NOT FOR NOTH’N LLC, aka GOURMET (California)
- Plaintiff’s Counsel: Howrey LLP
- Case Identification: 2:08-cv-01894, C.D. Cal., 04/03/2008
- Venue Allegations: Venue is based on Defendant allegedly maintaining an office in the district, committing acts of infringement within the district, and a substantial part of the events giving rise to the claims occurring in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Gourmet" line of footwear infringes four of Nike's design patents and associated trade dress for its iconic Air Jordan shoe models.
- Technical Context: The dispute centers on the ornamental design of high-end athletic footwear, a market where distinctive aesthetics contribute significantly to brand identity and commercial value.
- Key Procedural History: This filing is a First Amended Complaint. The complaint notes that a related design patent for the Air Jordan VII model, U.S. Patent No. Des. 325,291, expired in 2006 and is not asserted in this action.
Case Timeline
| Date | Event |
|---|---|
| 1994-12-02 | ’898 Patent Priority Date |
| 1996-05-31 | ’082 Patent Priority Date |
| 1996-07-23 | ’898 Patent Issue Date |
| 1997-02-11 | ’591 Patent Priority Date |
| 1997-02-11 | ’850 Patent Priority Date |
| 1997-06-24 | ’082 Patent Issue Date |
| 1997-12-16 | ’591 Patent Issue Date |
| 1997-12-16 | ’850 Patent Issue Date |
| 2008-04-01 | Defendant's "Santo" and "Diablo" shoes allegedly released |
| 2008-04-03 | First Amended Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. 371,898 - "Shoe Upper", issued July 23, 1996
The Invention Explained
- Problem Addressed: Design patents protect new, original, and ornamental designs for articles of manufacture. The commercial context provided by the complaint is the creation of a distinctive athletic shoe, the Air Jordan XI, intended to bring a "formal look" to the basketball court (Compl. ¶9).
- The Patented Solution: The patent claims the overall ornamental design for a shoe upper. The design's key visual features, illustrated in the patent's figures, include prominent webbing straps that form loops for the laces, a distinct, wavy line separating a lower mudguard portion from the rest of the upper, and a specific collar and heel shape ('898 Patent, Figs. 1-5). The complaint highlights the "six angled lines formed out of raised materials" for the laces and a "crescent shaped heel overlay" as key elements (Compl. ¶9).
- Technical Importance: The complaint alleges that the shoe embodying this design was the "first athletic shoe to feature webbing on the exterior of the shoe upper" and that over 1.7 million pairs were sold in the United States (Compl. ¶9).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for a shoe upper, as shown and described." ('898 Patent, Claim).
U.S. Design Patent No. 380,082 - "Side Element of a Shoe Upper", issued June 24, 1997
The Invention Explained
- Problem Addressed: The patent addresses the need for a new, original, and ornamental design for a component of a shoe upper, specifically the side element. The complaint situates this design in the context of the Air Jordan XII model (Compl. ¶10).
- The Patented Solution: The patent claims the design for a "side element," not the entire shoe. The figures show this element includes a stitched pattern radiating from the midfoot, described in the complaint as a "sunburst-like pattern" ('082 Patent, Fig. 1; Compl. ¶10). This pattern is overlaid on an asymmetrical piece of material that covers the lower side of the shoe. The remainder of the shoe is shown in broken lines, indicating it is not part of the claimed design ('082 Patent, Fig. 1).
- Technical Importance: The complaint alleges this design was featured on the Air Jordan XII shoe, which sold over 1.9 million pairs and was worn by Michael Jordan during a famous 1997 playoff game (Compl. ¶10).
Key Claims at a Glance
- The single asserted claim is: "The ornamental design for a side element of a shoe upper, as shown and described." ('082 Patent, Claim).
Multi-Patent Capsule
*U.S. Design Patent No. 387,591, "Side Element of a Shoe Upper", issued December 16, 1997*
- Technology Synopsis: This patent claims the ornamental design for a side element of a shoe upper, associated with the Air Jordan XIII model (Compl. ¶11). The design features a distinctive, non-functional quilted or pitted pattern on a large side panel, along with an "iconic cut-out on the heel portion" ('591 Patent, Figs. 1, 4; Compl. ¶11).
- Asserted Claims: The single claim is for "The ornamental design for a side element of a shoe upper, as shown and described" ('591 Patent, Claim).
- Accused Features: The Defendant's "Diablo" shoe model is accused of infringing this patent (Compl. ¶31).
*U.S. Design Patent No. 387,850, "Side Element of a Shoe Upper", issued December 16, 1997*
- Technology Synopsis: This patent, also associated with the Air Jordan XIII, claims an ornamental design for a side element of a shoe upper (Compl. ¶12). The drawings depict a similar design to the '591 Patent from different perspectives, featuring the same pitted pattern on a side panel that extends from the midfoot towards the heel ('850 Patent, Fig. 1). The complaint does not distinguish the technical features of this patent from the '591 Patent.
- Asserted Claims: The single claim is for "The ornamental design for a side element of a shoe upper, as shown and described" ('850 Patent, Claim).
- Accused Features: The Defendant's "Diablo" shoe model is accused of infringing this patent (Compl. ¶35).
III. The Accused Instrumentality
Product Identification
- The accused instrumentalities are four models of footwear from Defendant’s "Gourmet" line: "Cease 7," "Desisto 11," "Santo," and "Diablo" (Compl. ¶¶14-16).
Functionality and Market Context
- The complaint alleges that the accused shoes are "wholesale imitations" and "copycat shoes" that "explicitly appropriate" Nike's patented designs (Compl. ¶¶1, 13). The complaint alleges the product names are a "clear reference" to the corresponding Air Jordan models (e.g., "Desisto 11" allegedly copies the Air Jordan XI) (Compl. ¶15). The complaint includes a side-by-side photographic comparison showing Nike's "Air Jordan® XI" next to NFN's "Desisto 11" to illustrate the alleged copying (Compl. p. 9). Plaintiff alleges Defendant is a "small independent company" that has sought to build its brand by appropriating Nike's designs and goodwill (Compl. ¶13).
IV. Analysis of Infringement Allegations
'898 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe upper, as shown and described. | The Defendant's "Desisto" shoe model allegedly copies the overall design of the shoe upper, including the "iconic lacing with exterior webbing on the shoe upper" that is characteristic of the patented design. The complaint provides a side-by-side image comparison of the accused shoe and Nike's Air Jordan XI. | ¶¶14, 23, p. 9 | '898 Patent, Figs. 1-5 |
'082 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a side element of a shoe upper, as shown and described. | The Defendant's "Santo" shoe model allegedly copies the claimed side element, including the "sunburst design on the inside and outside of the shoe upper" that is characteristic of the patented design. The complaint provides a side-by-side image comparison of the accused shoe and Nike's Air Jordan XII. | ¶¶14, 27, p. 9 | '082 Patent, Figs. 1-4 |
Identified Points of Contention
- Scope Questions: A central issue for the '082, '591, and '850 patents is the scope of the claims, which are limited to a "side element of a shoe upper," not the entire shoe. The patent figures use broken lines to disclaim the remainder of the shoe. This raises the question of whether the infringement analysis can be properly limited to the claimed elements, or if an ordinary observer's perception would be influenced by similarities in the unclaimed portions of the shoe, which the complaint also references (e.g., alleging copying of the "entire 'upper'") (Compl. ¶13).
- Technical Questions: The ultimate question is factual: would an ordinary observer, familiar with prior shoe designs, be deceived into thinking Defendant's shoe is the same as Nike's patented design? The side-by-side comparisons provided in the complaint will be key evidence (Compl. pp. 8-9). The complaint's image of the "Air Jordan® XII" next to the "NFN's 'Santo'" highlights the similarity of the radiating stitch pattern on the side of the upper (Compl. p. 9). The defense may focus on any minor differences in proportion, stitch count, or curvature to argue against a finding of "substantial similarity."
V. Key Claim Terms for Construction
- The Term: "Side element of a shoe upper"
- Context and Importance: This term appears in three of the four asserted patents ('082, '591, '850). Its construction is critical because it defines the boundaries of the claimed design. Practitioners may focus on this term because the infringement analysis must be limited to the "side element" depicted in solid lines in the patent drawings, excluding any similarities in the unclaimed portions shown in broken lines.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party could argue that the "side element" constitutes the principal and most distinctive visual feature of the entire shoe design. The complaint supports this by singling out features like the "sunburst design" as the appropriated element, suggesting this element dominates the shoe's appearance (Compl. ¶14).
- Evidence for a Narrower Interpretation: The patent drawings themselves provide the strongest evidence for a narrow interpretation. The explicit use of broken lines to illustrate the rest of the shoe (e.g., the sole, tongue, and portions of the collar) serves as a disclaimer of those features from the scope of the claimed design ('082 Patent, Fig. 1). The title itself limits the claim to a "side element," distinguishing it from the '898 Patent, which claims the entire "shoe upper."
VI. Other Allegations
- Indirect Infringement: The complaint does not plead a specific cause of action for indirect patent infringement (inducement or contributory infringement) under 35 U.S.C. § 271.
- Willful Infringement: The complaint alleges that Defendant's infringement of all four patents has been willful (Compl. ¶¶24, 28, 32, 36). The allegations are based on "information and belief" and supported by claims that Defendant's copying was "defiant" and that its product names (e.g., "Desisto 11," "Cease 7") are "clear reference[s]" to the specific Nike Air Jordan models being copied, which may suggest pre-suit knowledge and intent (Compl. ¶15).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of claim scope versus overall impression: For the three patents claiming only a "side element," can Plaintiff prove infringement by showing the side elements are substantially similar, or will the analysis be improperly colored by similarities in the unclaimed portions of the shoes, which are not protected by those specific patents?
- A key evidentiary question will be the application of the ordinary observer test: Do the accused Gourmet shoes, when viewed as a whole, appear "substantially the same" as Nike's patented designs to an ordinary observer? The side-by-side visual comparisons in the complaint present a compelling narrative of copying that will be central to this factual determination.
- Finally, a central question will relate to intent: Do the allegations of "defiant" copying and the use of referential product names provide sufficient evidence to establish not only direct infringement but also willful conduct, a finding that could expose the Defendant to enhanced damages?