Behind a couple of the year’s hottest shoes is an escalating legal battle. According to the complaint that Steve Madden filed with a New York federal court this summer, Ganni has been “harassing” it and retailers that stock its products in an effort to get them to stop selling Steve Madden shoes that mirror Ganni’s Buckle Ballerina flats and Two-Strap Sandals. While Ganni has been threatening legal action – and in at least a couple of cases, has filed lawsuits – against it and its distribution partners, Steve Madden claims that Ganni’s claims are actually baseless, as it does not have any rights in the shoe designs “whatsoever in the United States.”
Setting the stage in the complaint that it filed in July, Steve Madden argues that “Ganni did not invent the ballet flat or the sling-back flat; Ganni did not invent the timeless pointed toe or the combined use of belted straps and metal eyelets on shoe designs; and Ganni certainly did not invent the use of two-adjustable buckle straps on an open-toe sandal.” In fact, Steve Madden maintains that Ganni’s hot-selling Buckle Ballerina or Two-Strap Sandals and its own GRAYA and SANDRIA shoe styles consist of “common functional elements like buckles, slingback straps, and grommets, and common design aesthetics that incorporate studs, eyelets and leather styles.” And as a result, they fall outside of the scope of protectable designs.
As such, Ganni, the Danish “affordable luxury” brand that is backed by private equity titan L Catterton, “owns no intellectual property rights in its [Buckle Ballerina or Two-Strap Sandal] shoe designs in the U.S.,” per Steve Madden. And thus, “its claims of ‘worldwide’ [copyright] rights” – and “unregistered design” rights – are “patently false.”
In the U.S., in particular, Madden argues that Ganni does not own “any registered or common law intellectual property rights” in its Buckle Ballerina or Two-Strap Sandal, namely, because “there is nothing new or original about a patent-leather pointed toe slingback-flat or two-strap sandal that uses straps, eyelets and buckles.” In fact, Madden says that it has identified “almost 100 similar versions of the Buckle Ballerina and Two-Strap Sandal presently or previously available for sale in the U.S.,” thereby, removing any novelty and source-identifying function – and both patent and trade dress protections – from the equation.
At the same time, copyright protection is not an option for Ganni either, according to Steve Madden, as neither the Buckle Ballerina or Two-Strap Sandal are “sufficiently expressive or original.”
Nevertheless, New York-headquartered Steve Madden claims that since February, Ganni has been “harassing and threatening” it on the basis of its sale of the allegedly infringing GRAYA and SANDRIA styles by way of “a rapid series of cease-and-desist letters.” And not only targeting Steve Madden, the footwear company claims that Ganni is “attempting to strong-arm Steve Madden [wholesale] customers to destroy rightful Steve Madden designs and harm [its] relationships with its customers … despite Ganni’s knowledge that it has no design rights in the U.S.”
A Timeline of Legal Actions
> On May 17, 2024, Ganni sent a letter to Dillard’s, a U.S. retailer and Steve Madden customer, claiming that Madden’s GRAYA flat, which Dillard’s was selling, “violates Ganni’s ‘worldwide copyright protections’ and unregistered designs in the Buckle Ballerina,” and demanding that it cease and desist all marketing and sale of the GRAYA Flat, and destroy all inventory of the shoe in its possession.
> On June 6, 2024, Ganni sent a similarly-worded letter to “longtime Steve Madden customer” Nordstrom, which, in turn, “canceled hundreds of customer orders for GRAYA shoes based on Ganni’s misrepresentations,” per Madden.
> Still yet, Ganni sued a small e-commerce California retail site, Lulu’s Fashion Lounge, in Denmark, demanding that it cease all sales of the Steve Madden shoes and destroy its inventory.
“Unmerited Claims”
Despite its alleged lack of rights in the Buckle Ballerina or Two-Strap Sandal designs and in line with Ganni’s has “pattern of claiming rights of infringement it cannot support,” Steve Madden asserts that Ganni has “unambiguously stated that it will continue to contact and pursue legal action against Steve Madden’s U.S. customers if the GRAYA Flat continues to be manufactured, marketed, and sold.”
Ganni’s “tortious and improper attempts to use foreign litigation and other harassment tactics to stop the lawful manufacturing, marketing, and selling of Steve Madden’s shoes in the U.S. is interfering with Steve Madden’s legitimate business and its contractual relationships with its customers,” the company contends. Moreover, Steve Madden argues that “Ganni’s statements to Steve Madden customers are false and defamatory in nature, improperly leading Steve Madden’s longtime customers to believe that Steve Madden is infringing on design rights in the United States that Ganni does not have.”
As a result of Ganni’s “course of conduct and continued threats,” Steve Madden says that it and its wholesale customers “fear further improper prosecution by Ganni” and that Ganni’s actions “have caused reasonable trepidation about the continued sales of Steve Madden’s lawful designs in the U.S.”
With the foregoing in mind, Steve Madden set out claims of tortious interference with business relations and libel, as well as a slew of declaratory judgment causes of action, seeking declarations from the court that its GRAYA Flat and SANDRIA shoes do not infringe any copyright, trade dress, or patent rights of Ganni’s, and that it is not engaging in unfair competition by selling the aforementioned footwear. In addition to monetary damages, Madden is angling for a permanent injunction to bar Ganni and “all those in active concert or participation with Ganni” from tortiously interfering with its business relationships.
Steve Madden v. Ganni: A Global Battle
Not limited to proceedings in the U.S., the clash between Steve Madden and Ganni sees the parties facing off in Denmark, as well, where Ganni filed an action for an injunction against Steve Madden and its European corporate counterpart, Steve Madden Europe, in May. In that case, Ganni sought to enjoin the Steve Madden entities from offering, marketing, selling, exporting and importing Steve Madden Europe’s “Grand Ave” shoe.
In a decision in August, the Maritime and Commercial Court sided with Ganni and issued an injunction barring Madden from offering, marketing, and selling the Grand Ave shoe in Denmark. Siding with Ganni, the Danish court found that its Buckle Ballerina shoe is an original work of applied art and eligible for copyright protection and that Steve Madden’s Grand Ave shoe bore too many similarities to the protected Ganni product.
At the same time, the court found that Ganni’s Buckle Ballerina shoe has had “extensive exposure in several international fashion magazines, as well as on social media and via third party mentions,” according to Mason Hayes & Curran LLP’s Gerard Kelly and John Milligan. “Considering this and taking into account the reported turnover of more than DKK 13 million ($1.9 million), the shoe was found to have distinctive character, commercial distinctiveness and sufficient market position to be protected by the Danish Marketing Practices Act,” they noted.
That case is likely far from over, as the court’s decision deals only with Ganni’s interim injunction application.
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