Adidas-Salomon AG v. Target Corp.
2002 WL 31256158, 2002 U.S. Dist. LEXIS 25141, 228 F. Supp. 2d 1192 (2002)
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Rule of Law:
A product's trade dress is protectable if the overall combination of its elements is nonfunctional and has acquired secondary meaning, even if some individual elements of the trade dress are functional. A claim for trade dress infringement requires the plaintiff to prove that the claimed dress is nonfunctional, has acquired secondary meaning, and that the defendant's product creates a likelihood of consumer confusion.
Facts:
- Since 1969, adidas has manufactured and sold the 'Original Superstar' shoe model.
- The Original Superstar shoe features a specific combination of four design elements: a trademarked three-stripe mark, a rubber toe with a shell design, a flat sole, and a colored heel patch.
- Over time, the Original Superstar shoe, and particularly its 'shell toe' feature, gained significant popularity and cultural recognition, notably after being featured in the song 'My adidas' by the rap group Run DMC in 1986.
- Defendants B.U.M. International, Inc. and Target Corporation began manufacturing and selling a shoe model named the 'Jonah.'
- The B.U.M. 'Jonah' shoe incorporated features similar to the adidas Superstar, including a flat sole, a rubber shell toe, a heel patch, and four diagonal stripes on the side.
- The Jonah shoe was sold at Target retail stores at a significantly lower price point than the adidas Original Superstar shoe.
Procedural Posture:
- adidas-Salomon AG and adidas America, Inc. filed suit against Target Corporation and B.U.M. International, Inc. in the U.S. District Court for the District of Oregon.
- The complaint alleged federal trademark infringement, trade dress infringement, dilution, and related state law claims.
- Defendants filed a motion to dismiss the claims.
- The trial court converted the defendants' motion to dismiss into a motion for summary judgment.
- Magistrate Judge Stewart reviewed the motion and issued Findings and Recommendations that the defendants' motion for summary judgment be denied.
- Defendants filed objections to the Magistrate Judge's recommendation, bringing the matter before the District Judge for a de novo review.
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Issue:
Does a shoe's trade dress, consisting of a combination of elements including a flat sole, a rubber 'shell toe,' a heel patch, and a multi-stripe mark, create a triable issue of fact for trade dress infringement when some individual elements are allegedly functional but the overall combination is claimed to be nonfunctional and to have acquired secondary meaning?
Opinions:
Majority - Redden, District Judge
Yes, a shoe's trade dress consisting of a combination of elements creates a triable issue of fact for infringement. To sustain a claim for trade dress infringement, a plaintiff must prove that the claimed dress is nonfunctional, has acquired secondary meaning, and that the defendant’s product creates a likelihood of consumer confusion. The court rejected the defendants' argument that the trade dress was functional by analyzing its individual components, holding that functional elements can be protected together as part of a trade dress. The court must view the trade dress as a 'composite tapestry of visual effects.' Adidas presented sufficient evidence that the overall combination was nonfunctional, as the shell toe was ornamental and the flat sole was no longer optimal for performance. On the issue of secondary meaning, the court found adidas presented sufficient evidence of long-term use, extensive advertising, unsolicited media attention, and pop culture significance to create a triable issue. Finally, regarding likelihood of confusion, the court applied the Sleekcraft factors and found the defendant's shoe to be 'strikingly similar' to the Superstar. The court determined that theories of post-sale confusion and initial-interest confusion were relevant and that adidas's survey evidence was sufficient to create a triable issue of fact, thereby defeating the summary judgment motion.
Analysis:
This case solidifies the holistic approach to trade dress analysis, affirming that the 'total image and overall appearance' of a product is the proper subject of protection, not its dissected individual parts. It serves as a significant precedent for protecting iconic product designs against knock-offs that mimic the overall look while making minor changes, such as altering the number of stripes. The court's application of 'post-sale' and 'initial-interest' confusion theories broadens the scope of protection, acknowledging that consumer confusion can occur beyond the point of sale and can harm a brand's reputation. For future litigants, this decision provides a clear roadmap on the types of evidence, including cultural impact and consumer surveys, that are effective in establishing the nonfunctionality and secondary meaning required to protect a product's trade dress.
