By Bill Donahue
Law360, New York (June 5, 2017) -- A California federal judge on Friday refused to issue a preliminary injunction barring retailer Forever 21 Inc. from selling shoes that Puma SE claims are knockoffs of a line made in collaboration with pop star Rihanna, saying that the German sneaker giant fell short of proving the kind of harm required for such an order.
In a ruling on Friday, U.S. District Judge Philip S. Gutierrez said that Puma’s efforts to prove it was being “irreparably harmed” by Forever 21’s products — a “mere two and a half pages” of its briefing and a single declaration — were not nearly enough to win the “extraordinary and drastic remedy” of a preliminary injunction.
“While [the declaration] claims that the presence of knockoff products on the market ‘diminishes the brand value for Puma’s consumers,’ and that ‘the prestige of the Puma brand is diminished,’ these statements are not tied to actual evidence, and constitute little more than ‘pronouncements that are grounded in platitudes rather than evidence," Gutierrez wrote.
The judge said he hadn’t seen “any evidence that consumers’ perception of its brand has been weakened or that Puma has experienced a decline in its reputation on account of Forever 21’s infringing products.
“In order to show harm to its brand under Ninth Circuit precedent, Puma must do more than simply submit a declaration insisting that its brand image and prestige have or will be harmed,” the judge wrote.
In statement to Law360 on Monday, Puma said it was "disappointed" and "frustrated" by the court's decision.
"Intellectual property holders should be able to rely on U.S. courts to enforce their rights immediately when there has been harm and clear infringement," the company wrote. "This is especially necessary in the fashion industry where trends are most valuable in the short term and infringers take advantage of this time frame."
Puma sued in late March, claiming that Forever 21 was offering near identical copies of three different shoes from the Fenty line, which is made in collaboration with pop star Rihanna. The suit included a trifecta of intellectual property violations: infringement of design patents, copyrights and protected trade dress.
The ruling is a big win for Forever 21, which would have been forced to pull the allegedly infringing shoes from shelves if Puma's request had been granted. It is also not unusual for trademark cases to turn more on preliminary injunction proceedings than actual full merits litigation.
Friday’s order is the second by Gutierrez against Puma. Back in April, he similarly refused to issue a temporary restraining order, saying that Puma had waited too long to bring the suit to get that even rarer remedy.
Forever 21's lead counsel, Kent E. Baldauf Jr. of The Webb Law Firm, praised Gutierrez for rejecting "rhetoric" from Puma that was "not only untrue but also in very poor taste."
“We are pleased that the court has now seen through Puma’s attempts to monopolize the marketplace through overstated and inaccurate intellectual property claims twice," Baldauf said, referring to the earlier temporary restraining order.
Puma is represented by Tamany Vinson, Justin E. Pierce and Kimberly Culp Cloyd of Venable LLP.
Forever 21 is represented by Kent E. Baldauf Jr., Cecilia R. Dickson, and Christian D. Ehret of The Webb Law Firm, and Laura L. Chapman, Seong Hwan Kim and Toni Qiu of Sheppard Mullin Richter & Hampton LLP.
The case is Puma SE v. Forever 21 Inc., case number 2:17-cv-02523, in the U.S. District Court for the Central District of California.
--Editing by Stephen Berg.
Update: This article has been updated with a statement from Puma.