You know those iconic “Puma Creepers” sneakers with their distinctive soles? Puma’s fashion rights got a big bang thanks to a remarkable Instagram post by none other than Rihanna! Rihanna celebrated her appointment as Puma’s creative director, but the party was soon overshadowed. It all started with an Instagram post by the singer in December 2014 – almost two years before the model registered in 2016 – on which she wore the signature white sneakers with thick black soles. Her post on social media was subsequently picked up by several news outlets. The Instagram post served as evidence that the model of the shoe was sufficiently well known prior to the filing of the design registration, which dealt a death blow to Puma’s design rights.
Model right, what?
Design law protects the external appearance of a product or part of a product. These can be 2D or 3D products. Just think of graphic symbols, fonts, packaging, but also therefore the shape of bottles, lamps, tables, shoes, clothing, carpets, etc….
To obtain a design right on the appearance of a product, two essential conditions must be met: novelty and individual character.
The individuality requirement means that the overall impression created by the model should not evoke a sense of déjà vu with previous models. If it does, this condition cannot be met.
The novelty requirement means that no identical (or quasi-identical) drawings or designs must have been disclosed to the public prior to the design application. Also, disclosure by design of the model itself, may harm novelty! As a designer, by way of exception, you do get a period of twelve months after disclosure to still validly register your design
In this case, a 2014 Instagram post by Rihanna showing the “Puma Creepers” meant that the novelty requirement could not be met at the time of the 2016 design application. Indeed, even if Rihina could be considered a design or assignee, the design was disclosed more than 12 months prior to the application.
The legal battle
In July 2016, Puma submitted the model as a community model to the EUIPO. In July 2019, the registration was challenged by a Dutch shoe wholesaler. Their argument? Rihanna’s Instagram post from 2014, which the model previously showed to the public.
The EUIPO (European Union Intellectual Property Office) followed this reasoning and declared the design invalid on Aug. 11, 2022.
German Puma appealed to the General Court of the Court of Justice of the European Union, but now loses. Indeed, the Court follows EUIPO’s earlier argument. According to the Tribunal, Rihanna’s Instagram post allows for the “identification, by the naked eye or by enlarging the photos, of all the essential characteristics of the model or the previous model.”
Key take-aways
Two important lessons can be drawn from this case:
- Take care when using social media: social media is a major source of income for celebrities these days. Through platforms such as Instagram, Facebook or TikTok, they can easily reach a large audience, increasing both their awareness and revenue. This wide reach is of interest not only to the celebrities themselves, but also to companies that are looking for a large audience for advertising purposes and are willing to pay significant sums. At first glance, it seems like a win-win situation. However, as the collaboration between Rihanna and Puma shows, one misplaced photo can have far-reaching consequences for intellectual property rights. This highlights the importance of caution when using social media and the need to be aware of potential legal implications, even in seemingly innocuous situations.
- Be careful when disclosing a new design developed by you: if you yourself are a designer or design study, keep in mind that the disclosure by you yourself of the design, also has design protection implications. From the moment you make the design public, you only have twelve months to legally file your design.
Do you have questions about design law? Don’t hesitate to get in touch, we are happy to help!
