22 August 2018

Steve Madden sues YSL as IP relations break down

Fashion brand Steve Madden has filed a strongly-worded lawsuit against competitor Yves Saint Laurent (YSL) in a pre-emptive strike against the French company.

Filed on Monday, August 20, the lawsuit claimed YSL has threatened to sue Madden and at least 13 customer stores for design patent infringement and trade dress violations.

But Madden said the allegations are “absurd” because of the clear differences between YSL’s design patent (US number D607,187)—which covers a high-heeled shoe—and Madden’s targeted ‘Sicily’ sandal, ie, a flat shoe.

Madden filed the suit at the US District Court for the Southern District of New York, asking for a judgment that the sandal does not infringe any of the asserted IP rights.

The US fashion company claimed that YSL’s actions have damaged its business and caused retailers to stop selling Madden’s products.

According to the suit, in addition to claims of design patent infringement, YSL has alleged breaches of its trade dress rights in its ‘Tribute’ sandal.

However, Madden said YSL has no federal trade dress registration in the ‘Tribute’ product, nor can it establish any such rights.

“Defendants claim trade dress rights in the flat sandal sole, a clearly functional element present in all flat sandals, as well as the straps that cover the toe bed,” the suit said.

The lawsuit also claimed there are obvious differences between the companies’ sandals and they are sold at different prices, with Madden’s being targeted at “a much lower price point consumer than the luxury market that defendants target”.

“If this were not enough”, the lawsuit said, YSL is also alleging that Madden’s discontinued high-heeled shoe called the ‘Kananda’ infringes its IP rights. The company said that, as part of a deal signed with YSL in 2017, it agreed to stop selling this product in return for the French brand not asserting its IP rights against the shoe.

YSL’s alleged claim against the ‘Kananda’ is a “blatant breach of the parties’ prior agreement”, the suit said. It noted that Madden designed the ‘Sicily’ sandal after discontinuing the ‘Kananda’ high-heeled shoe.

Madden concluded that YSL’s “intimidation of Madden’s customers was the last straw” and it cannot stand “idly by and allow defendants to strong-arm its customers with baseless threats”.

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More on this story

19 September 2017   Fashion company Steve Madden has been accused of copying patented designs on a range of sandals, “rather than undertaking its own independent development”.
1 March 2017   AirWair, a subsidiary of footwear brand Dr Martens, has kicked out at a rival in a trade dress infringement lawsuit, filed yesterday.