Rothy’s Wins Consent Judgment in Birdies Patent Infringement Lawsuit

The judgement, which originally came in a California federal court on Aug. 25, permanently enjoins Birdies from selling its infringing knit Blackbird shoes.

Rothy’s announced on Monday that it has entered into a consent judgment in its patent infringement lawsuit against Birdies.

The judgement, which originally came in a Northern District of California federal court on Aug. 25, permanently enjoins and restrains Birdies from selling its infringing knit Blackbird shoes and any other products that infringe on the Rothy’s design patents asserted in the litigation.

Under the consent judgment, Birdies acknowledges the validity of the design patents Rothy’s asserted and that Birdies’ knit Blackbird infringes on one or more of Rothy’s patents. Subject to the terms of the consent judgment, Birdies has agreed to immediately cease making, using, offering for sale, selling or importing into the United States its knit Blackbird shoes and any other product that is not more than colorably different from one or more of Rothy’s asserted design patents.

According to court documents, in the event Birdies violates the consent judgment and injunction, Rothy’s may seek injunctive relief and damages for such violations and may also seek other remedies or sanctions including attorney’s fees and costs incurred as a result.

“With over 200 design patents granted or pending, we care deeply about protecting the intellectual property Rothy’s works so hard to create,” Marie Satterfield, chief legal officer at Rothy’s, said in a statement. “This court order underscores the strength and staying power of Rothy’s robust IP portfolio. We will continue to vigorously enforce Rothy’s rights and hold accountable those who infringe our designs.”

Rothy’s filed its initial complaint against Birdies on April 5, 2021, alleging Birdies’ knit Blackbird infringed on five of its U.S. design patents. In its original complaint, Rothy’s alleged that Birdies, or someone acting on its behalf, purchased numerous pairs of Rothy’s footwear products for the purpose of copying.

“The Rothy’s products were shipped to Birdies’ corporate address in San Francisco and, on information and belief, paid for by an officer or director of Birdies,” the lawsuit said. “On information and belief, with Rothy’s products in hand, Birdies began reviewing, researching and copying the designs claimed by the Rothy’s asserted design patents.”

Rothy’s further stated that on or about February 2021, Birdies began marketing, manufacturing, offering for sale and/or importing into the U.S. a shoe named “The Blackbird” — a pointed-toe slipper-cut ballerina flat with a knitted upper. “On information and belief, Birdies intended to and did copy the claimed designs of the Rothy’s asserted design patents by creating the same or similar overall impression as Rothy’s designs,” the complaint added.

Ultimately, Rothy’s sought judgment requiring Birdies to pay Rothy’s damages, attorney’s fees, supplemental damages or profits for any continuing post-verdict infringement up until entry of final judgement, and any pre-judgment and post-judgment interest on any damages or profits awarded. It’s unclear, based on the consent judgement, if Birdies made any payment to Rothy’s upon coming to the agreement.

FN has reached out to Birdies for comment. Rothy’s had no further comment.

This consent judgment against Birdies comes on the heels of other recent intellectual property suits filed by Rothy’s. In January 2021, the Intellectual Property Enterprise Court (IPEC) in the United Kingdom ruled that Austrian shoe manufacturer Giesswein’s Pointy Flat shoe infringed on Rothy’s registered “The Pointed Loafer” Community Design and ordered Giesswein to cease all sales of the infringing shoes.

In September 2019, Rothy’s resolved a patent and trade dress infringement lawsuit against OESH Shoes. The court in the Western District of Virginia entered a consent decree enjoining OESH from manufacturing, marketing and selling the accused shoes and whereby OESH acknowledged the validity of Rothy’s “The Flat” trade dress and asserted design patents.