In our Summer 2021 issue, we reported on the trademark infringement lawsuit filed by artist Christophe Roberts against Puma North America, Inc., in which the artist claimed that the athletic retailer wrongfully made use of his distinctive “Roar Mark” in “large national ad campaigns targeting its products to National Basketball League consumers.” Roberts v. Puma North America, Inc., Case No. 21-cv-2559 (S.D.N.Y. Filed March 25, 2021.)

Roberts is known for a series of sculptures that he created using recycled Nike shoeboxes, renowned among “sneakerheads” (individuals who collect and trade sneakers as a hobby). Puma incorporated arguably similar “teeth designs” into one of its apparel lines.

At the time of publication of our previous issue, Roberts had sought a temporary restraining order and preliminary injunction to prohibit Puma’s continued use of its allegedly infringing designs on apparel and in marketing and advertising. Puma had opposed Roberts’ motion, and the court had heard arguments on the motion but had not yet issued a ruling. This story now has a conclusion.

On May 12, the court denied Roberts’ request for a temporary restraining order and a preliminary injunction. It found that Roberts failed to demonstrate a likelihood of succeeding on the merits of his claims because Puma’s use of its own teeth designs was unlikely to confuse consumers into believing that Puma’s designs were produced by or affiliated with Roberts.

Following the court’s ruling, Puma filed an answer and a counterclaim to Roberts’ complaint. But shortly thereafter, the parties negotiated a confidential settlement agreement and stipulated to the dismissal of Roberts’ action. Without knowing the terms of settlement, it is difficult to assess how positive the outcome was for Puma. Nevertheless, the lawsuit is a reminder to all businesses that incorporating contemporary imagery into their fashions and advertising campaigns comes with risks, which they should have experienced counsel assess before proceeding.