Gavrieli sued Soto Massini in March 2018, alleging patent infringement, trade dress infringement, false advertising, and unjust enrichment resulting from a Kickstarter campaign Soto Massini launched to produce shoes that would compete with Gavrieli’s well-known Tieks ballet flats. Tieks’ flats have a blue split-“outsole” that can be seen without lifting the wearer’s foot and permits the owner to fold the shoe in half for easy storage and travel. Tieks enjoys a large social media presence with a devoted fan base and has attracted the attention of Oprah Winfrey and other celebrities.

In its complaint, Gavrieli brought claims of trade dress and patent infringement based on Tieks’ trade dress as well as four patents covering ornamental designs for the shoe. Gavrieli alleged that Soto Massini’s infringement was all the more egregious because Soto Massini’s Kickstarter campaign not only used advertisements and product packaging that were strikingly similar to Tieks’ advertisements, but also because Soto Massini directly advertised to Gavrieli’s primary customer base through use of the Tieks Facebook fan page. Gavrieli’s theory, of course, was that Soto Massini’s direct targeting of Tieks’ fans on Facebook showed that it was intentionally seeking to create a Tieks’ look-alike and divert sales dollars from Gavrieli to itself.

An eight-member jury agreed. After a five-day trial, the jury found that (i) Gavrieli’s patents were valid and Soto Massini willfully infringed upon them, (ii) Soto Massini willfully infringed upon Gavrieli’s trade dress, (iii) Soto Massini intentionally engaged in false advertising, and (iv) Soto Massini was unjustly enriched.

The jury then awarded Gavrieli $1,282,000 for loss of goodwill and $790,000 for corrective advertising. The jury also awarded $880,658 for Soto Massini’s unjustly enriched profits. Despite the finding of willful trade dress infringement and willful false advertising, the jury did not award punitive damages.

We think this case stands for a few important propositions with respect to social media usage by consumer-facing brands. First, we note that Gavrieli cited its consistent advertising and promotional efforts on social media to show that the Tieks trade dress has acquired secondary meaning in the minds of consumers. In particular, Gavrieli noted that its online advertisements encourage consumers to post pictures of the blue outsole design of their shoes and that its website has a page dedicated to displaying Instagram and Facebook posts that use the hashtag #Tieks and #Blueprints to denote the trade dress of the shoes. These facts, we think, were indeed helpful in terms of demonstrating secondary meaning for the Tieks’ trade dress. Further, the defendant’s social media usage was cited as evidence of the infringement, with Gavrieli claiming that Soto Massini infiltrated the Tieks’ Facebook page and directly advertised to the brand’s followers.

Gavrieli’s extensive use of social media, and Soto Massini’s direct advertising to Gavrieli’s customers via social media — show that social media advertising is both a powerful tool to reach new customers and a potential liability.

The case is Gavrieli Brands LLC v. Soto Massini (USA) Corp., No. 18-cv-00462 (D. Del. Jury Verdict May 3, 2019)

Authored by Meryl Bernstein and Brendan Quinn