image: Cult Gaia
Cult Gaia has responded to the lawsuit that Steven Madden filed against it in March with some strong allegations of its own. In its formal response, Cult Gaia founder Jasmin Larian’s Jasmin Larian, LLC (“Larian”) alleges that the New York-based accessories giant’s lawsuit is little more than the act of “a big corporation that’s looking to cash in on [Cult Gaia’s] hard-earned rights and dupe consumers into believing the knock-off bags are genuine,” and in reality, Madden is running afoul of the law and should be forced to pay over $15 million in damages as a result.
Larian claims, as first reported by WWD, that despite Madden’s allegations to the contrary, it maintains exclusive legal rights in the design of the Ark bag, which Cult Gaia – “a small start-up company” – has “spent years introducing to the world and making a signature of the brand.” The $4.5 million in revenue that Cult Gaia recorded last year in direct connection with sales of the Ark bag, alone, is proof of its “hard-earned trade dress rights,” the answer asserts.
Aside from attempting to fend off Madden’s claims in the routine filing, Larian sets forth counterclaims against Madden, alleging that, among other things, the Steve Madden brand has infringed its trade dress rights in the Ark bag by selling a lookalike version – Madden’s bamboo Shipper style. In addition to seeking over $15 million in damages, Larian has asked the court to immediately and permanently bar Steve Madden from selling bags that make use of the trade dress of its Ark bag, namely, the three-dimensional configuration of the handbag
Madden’s Shipper bag (left) & Cult Gaia’s Ark bag (right)
Madden initiated a legal battle with Cult Gaia after Larian sent Madden a cease and desist letter in February demanding that Madden “[i]mmediately and permanently cease and desist from any further sale, distribution, promotion, and/or advertisement of any item that infringes upon the Ark trade dress.”
Instead of ceasing all sales, Madden opted to file a strongly-worded lawsuit, against Larian in New York federal court, accusing the brand of attempting to claim rights on a bag that was “slavishly copied” from the design of a “traditional Japanese bamboo picnic bag.”
According to Madden’s complaint, not only are Larian and Cult Gaia passing off the bag as its own original creation, the brand is in the process of seeking exclusive legal rights in the design with the U.S. Patent and Trademark Office, which amounts to an “attempt to appropriate the Traditional Japanese Design for itself.”
With that in mind, Madden is asking the court – as part of its declaratory judgment action – to declare that Larian’s design is not subject to trade dress protection because the design, itself, is “functional,” “generic,” and “ubiquitous” (all of which serve as bars to registrability) and thus, that its own bag, the BShipper, does not infringe Larian’s rights.
In short: Madden wants to ensure that Larian’s trade dress application is denied (once and for all) and as a result, she be officially stripped of any grounds to sue the Steve Madden brand.
It is worth noting that trade dress protection, which is what Larian is asserting in connection with its Ark bag, applies to the configuration (i.e., the design and shape) of a product itself. In much the same way as trademark holders need not be the first to ever use a mark (others were using the word “apple” before the tech giant, for instance), the key inquiry in terms of trade dress considerations is whether the average consumer associates the trade dress (the Ark bag in our case) with the brand that makes it. That is Cult Gaia here.
So, while it is not an automatic loss for Larian that the Ark bag looks a whole lot like a traditional Japanese design, it will, nonetheless, likely be tough to make the case that the average consumer associates the bag design with a single source, in large part because of its traditional roots, as well as the fact that so many others, including countless Amazon sellers and vintage Japanese brands, have been using the design for years.
More to come …
* The case is Steve Madden, Ltd., vs. Jasmin Larian, LLC, 1:18-cv-02043 (SDNY).
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