Steve Madden has filed an amended complaint in its case against Ganni, reiterating its claims that the Danish fashion brand is engaging in “anticompetitive efforts to monopolize common design features in the fashion industry.” The new complaint, in which Steve Madden sets out claims of tortious interference with business relations and libel, follows from an interesting turn of events in the burgeoning legal battle. In a filing last month, Ganni admitted that despite its previous claims, it does not have any rights in the design of its Buckle Ballerina flat and Feminine Buckle Two-Strap sandal in the U.S. and will not wage legal action over Steve Madden’s lookalike shoes.
In a covenant not to sue that it lodged with the U.S. District Court for the Eastern District of New York on December 6, Ganni warranted that it will not initiate any infringement actions against Steve Madden over the latter’s GRAYA and SANDRIA shoes. Against that background, Ganni urged Steve Madden to drop the declaratory judgment claims in its complaint in furtherance of which the New York-headquartered footwear company sought a declaration from the court that it is not infringing Ganni’s alleged rights in the Buckle Ballerina flat and Feminine Buckle Two-Strap sandal by way of its GRAYA and SANDRIA shoes.
While Steve Madden has, in fact, dropped the declaratory judgment claims from its amended complaint, the case is far from resolved, with Madden arguing that “Ganni’s conduct,” including its bad faith efforts to “stifle legitimate competition … should be enjoined, and [it] should be made whole for the harm it has suffered.”
Ganni’s covenant not to sue “comes too late,” counsel for Steve Madden argues, asserting that Ganni’s “course of conduct and persistent threats have already damaged Steve Madden’s reputation, its relationship with its customers, and have caused financial losses in the form of lost sales and additional expenses.” Moreover, Steve Madden claims that its wholesale customers “continue to fear further improper interference and threats by Ganni and have caused reasonable trepidation about the continued sales of Steve Madden’s lawful designs in the United States.”
And speaking of Steve Madden’s customers, the footwear-maker maintains that Ganni is “aggressively and intentionally targeting” its wholesale partners in the U.S. and abroad “based on non-existent rights.” According to Madden’s filing, Ganni has initiated legal actions and/or threatened to file actions against retailers like Huset Torre, Ellos, ASOS, Tiffany, Aboutyou, Zalando, and Boozt in Europe – and the likes of Nordstrom and Dillard’s in the U.S. – “all in an effort to intentionally harm Steve Madden.”
In fact, Madden maintains that “Ganni’s foreign counsel has admitted that it is ‘go[ing] after’ Steve Madden, and further admitted that its claims have nothing to do with consumer confusion—the proper legal standard by which infringement claims are adjudicated.” Instead, Ganni has “set out on a war path to punish and stifle legitimate competition, without regard to its lack of legitimate rights.”
> With regard to the international aspect here, Steve Madden states, in part, that Ganni has “surrendered its claimed design rights in the Buckle Ballerina in Europe, due in part to invalidity proceedings (see EUIPO, Reg. No. 015030614-0001), and at least one court in Denmark has concluded that the Buckle Ballerina is not protected under the Danish Copyright Act.”
In light of Ganni’s lack of rights in the shoe designs at issue, which Madden says consist of “common functional elements like buckles, slingback straps, and grommets, and common design aesthetics” that are not protectable, Steve Madden maintains that Ganni’s allegations of infringement are “false and defamatory in nature,” hence, its libel claim. Steve Madden also argues that Ganni is on the hook for its “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., [which] is interfering with Steve Madden’s legitimate business and its contractual relationships with its customers,” thereby, giving rise to Madden’s tortious interference claim.
With the foregoing in mind, Steve Madden is seeking injunctive relief to bar Ganni from tortiously interfering with its business relationships, as well as monetary damages.
The case is Steve Madden, Ltd. v. Ganni A/S, 1:24-cv-04946 (E.D. NY).
