Steve Madden and Ganni keep up the dance over their ballet flats.
The New York-based brand initially filed a lawsuit against the Danish brand in July, alleging illegal business interference and libel. The complaint also asked that the judge hand down declaratory judgments stating that Steve Madden had not infringed on Ganni’s copyrights, patents or trade dress.
That’s because, it alleged, Ganni had interfered with its business by sending cease-and-desist orders to its retail partners, like Nordstrom and Dillard’s, over its Graya flat and Sandria sandal, which resemble Ganni’s Feminine Buckle Ballerina and Feminine Buckle Two-Strap Sandal styles.
Over the past several months, drama has ensued as the companies duke it out over their respective shoe game. Last month, Ganni filed a response to Steve Madden’s complaint, which focused primarily on defending the brand against the libel and business interference claims while glossing over the request for declaratory judgment on the other claims.
A few days after it filed that response, Ganni wrote a letter to the presiding judge, Brian Cogan, noting that it would file a motion to dismiss the claims Steve Madden sought declaratory judgment on. It said that was because, given the evidence, the court didn’t have jurisdiction to rule on such a claim, primarily because it had not secured a copyright registration or patent for the styles in question in the United States.
That Ganni could not prove it had any legal ownership over the two styles also served as the basis of many of Steve Madden’s arguments in the initial complaint; the company repeatedly asserted that Ganni lacked legal rights to interfere with its business because it didn’t have any intellectual property rights applicable to the products Steve Madden sold to its merchants and to consumers.
In the letter to Cogan, Ganni also noted that it had already—and would again attempt to—present Steve Madden’s counsel with a Covenant Not to Sue. Effectively, that document stated that Ganni could not pursue legal action against Steve Madden in the U.S. over its Graya flat, Sandria sandal or other similar designs. Ganni noted that though it had extended several versions of that covenant to Steve Madden, the company had not signed it as of last month.
That has since changed; legal records show the two companies agreed to the covenant, which also effectively nullifies Steve Madden’s requests for declaratory judgment on the copyright, trade dress and patent issues.
As such, Steve Madden needed to file an updated version of its complaint, striking those claims.
It did so on Dec. 6, though it did not change its stance on the libel and business interference claims. In fact, the company only sought to bolster its claims with Ganni’s admission that it does not own intellectual property rights on its ballet flat styles in the U.S., noting that Ganni “has set out on a war path to punish and stifle legitimate competition, without regard to its lack of legitimate rights.”
“Ganni’s actions threatening Steve Madden’s customers in the United States, for selling designs in the United States over which Ganni has now admitted it has no rights, is intentional, in bad faith and with malice,” Steve Madden wrote. “Ganni is aggressively and intentionally targeting Steve Madden’s customers abroad as well, based on non-existent rights. It has filed actions and/or threatened to file actions against retailers like Huset Torre, Ellos, Asos, Tiffany, AboutYou, Zalando and Boozt in Europe, all in an effort to intentionally harm Steve Madden.”
The two companies have parallel legal action pending on Ganni’s turf in Denmark.
“Ganni and Steve Madden are simultaneously in active litigation in Denmark…regarding the production of a similar but different shoe by Steve Madden’s corporate counterpart—Steve Madden Europe,” the company wrote in its new complaint.
Ganni is expected to file its response to Steve Madden’s new U.S. complaint by early January.
