Ganni has walked way back in the lawsuit waged against it by Steve Madden, telling a New York federal court that 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 warranting that it will not initiate any infringement-centric actions against Steve Madden over its lookalike footwear. The latest filings from the Danish fashion brand come just days after it lodged a slew of affirmative defenses in response to the lawsuit that Steve Madden has been waging against it for allegedly “attempting to strong-arm” Madden and its wholesale customers into ceasing their sale of Madden’s GRAYA and SANDRIA styles, which mirror Ganni’s hot-selling shoes.
In furtherance of the complaint that it filed against Ganni in July in the U.S. District Court for the Eastern District of New York, Steve Madden claimed that Ganni is on the hook for tortious interference and libel for telling Madden’s wholesale customers, including Nordstrom and Dillard’s, that the GRAYA and SANDRIA shoes infringe its copyright and unregistered design rights.
Beyond that, Steve Madden stated that it has “a reasonable apprehension that Ganni will assert or has threatened to assert its rights” in the Buckle Ballerina flat and Feminine Buckle Two-Strap sandal designs against it in connection with its manufacture and sale of the GRAYA and SANDRIA shoe styles. As such, Madden asked the court to issue declarations that its GRAYA 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 pushing back against Ganni’s “unmerited” infringement claims, counsel for Madden argued (in a nutshell) that in the U.S., in particular, 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.”
Dismissal Bid & Covenant Not to Sue
Now, on the heels of Ganni defending itself in an answer and counterclaims that largely focused on Madden’s tortious interference and libel claims, the company told the court that it “intends to move to dismiss the third (declaratory judgment of no copyright infringement), fourth (declaratory judgment of no patent infringement), fifth (declaratory judgment of no trade dress infringement), and sixth (declaratory judgment of no unfair competition) claims asserted in Steve Madden, Ltd.’s complaint.” The basis for its dismissal bid: its admitted lack of U.S. rights in the Buckle Ballerina flat and Feminine Buckle Two-Strap sandal.
> In short: Ganni admits that it “does not own or control any U.S. registered copyrights, trademarks, or trade dress in the relevant designs, nor does it own a patent covering the design,” thereby, doing away with the need for a court to issue a declaration saying so.
At the same time, Ganni has alerted the court that as a result of its lack of U.S. rights and “to avoid effort and expense,” it advised Madden that it would proffer a Covenant Not to Sue in the U.S. and has since delivered a signed version of the covenant to Madden’s counsel. In the “broad and irrevocable” covenant, Ganni warrants that it will not assert “U.S. copyright, U.S. patent, U.S. design patent, U.S. trademark, and/or U.S. trade dress rights in the Ganni designs against the Steve Madden shoes,” namely, GRAYA and SANDRIA shoes, and any similar styles.
As such, to the extent that its alleged conduct has created a reasonable apprehension of suit on the part of Steve Madden, Ganni contends that the covenant “extinguishes that apprehension,” and therefore, Madden’s declaratory judgment claims should be dismissed as moot and/or for lack of subject matter jurisdiction. In furtherance of its mootness argument, counsel for Ganni points to Already, LLC v. Nike, Inc., in which both the Second Circuit and Supreme Court affirmed a lower court’s determination that a covenant extinguished a trademark infringement and dilution controversy between Nike and Already.
What’s Left?
As for what remains in the lawsuit, assuming that the court dismisses Madden’s declaratory judgment claims, Ganni is still facing Madden’s tortious interference and libel causes of action
The case is Steve Madden, Ltd. v. Ganni A/S, 1:24-cv-04946 (E.D. NY).
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