Steve Madden has found itself on the losing end of a copyright battle in Denmark after the Maritime and Commercial Court sided with Ganni A/S in a case over “copycat” footwear. In its decision, the Danish court issued an injunction barring the American footwear brand from offering, marketing, and selling its Grand Ave shoe in Denmark. In its recently-issued decision, the Commercial Court found Steve Madden’s buckle-design shoe to be nearly identical to – and an infringement of – Ganni’s hot-selling Buckle Ballerina shoe.
In the Ganni-initiated case, which was decided on August 9, the court focused on whether New York-headquartered Steve Madden infringed Ganni’s Danish and European Union copyright-protected shoe design by way of its lookalike Grand Ave shoe. Seeking a prohibition order to protect the design in May, Copenhagen-headquartered Ganni highlighted the distinctiveness of the Buckle Ballerina design – a shoe known for its pointed toe, low heel, and prominent metal buckles. The company, which is backed by private equity titan L Catterton, argued that these design elements are creative rather than purely functional, thereby, opening the door to copyright protection and its infringement claim against Steve Madden.
Siding with Ganni, the Danish court found that its Buckle Ballerina shoe is an original work of applied art and eligible for copyright protection – a relatively uncommon opinion in the U.S. but increasingly less so in Europe, especially after the Court of Justice of the European Union (“CJEU”)’s Cofemel decision shifted industry legal thinking in regard to copyright and fashion. Beyond considering Cofemel, the court also looked at a few other different factors in its decision, including originality of design and the fact that the shoe was the result of the designer’s free and creative choices, as well as market position and distinctiveness of the design.
Furthermore, in relying on expert testimony from design specialists and others, the court determined that Steve Madden’s Grand Ave shoe bore too many similarities to Ganni’s product. Experts reinforced Ganni’s claim that the shoe was more than merely a functional item; it was an original creative work deserving of copyright protection and that the overall impression of the two designs were so similar that Madden’s shoe would potentially confuse consumers, the court said.
Meanwhile, Steve Madden argued that the Grand Ave shoe is derived from general trends in the fashion industry and that it had not relied on Ganni’s product as a source of inspiration. The design elements that Ganni was trying to protect (namely, the buckles and the straps) are common in the industry and do not warrant copyright protection, Steve Madden argued, echoing similar assertions it has made in cases waged against in the U.S.
The ruling prevents Steve Madden from selling or distributing the Grand Ave shoe in Denmark – a big win for Ganni. Not only is the Buckle Ballerina shoe popular there, according to court documents, the company, itself, is very well known domestically, although its international presence is not as strong as Steve Madden’s.
> U.S. Connection: The Buckle Ballerina/Grand Ave shoe dispute is not playing out exclusively in Denmark. In July, the fashion companies’ disagreement spilled over into the U.S. District Court for the Eastern District of New York, as well, when Steve Madden sued Ganni for “harassing” retailers by telling them to stop selling the leather sandal shoe design in question, according to court documents that cited emails the Danish company sent to stores in the U.S.
In that ongoing case, Steve Madden, which is also suing Ganni for libel and tortious interference with business relations, is taking a similar tack in that case to the recently-decided suit in Denmark. After Ganni contacted retailers and sent cease-and-desist letters to Steve Madden, in which it instructed the company to stop all manufacturing, distributing, and sales of its GRAYA Flat shoe – the American version of the Grand Ave model – the company argued that similar leather sandal designs are popular in the fashion industry and not limited to Ganni’s shoe.
THE BIGGER PICTURE: While the Danish decision primarily impacts Steve Madden sales in Denmark for now, it may send a broader message to the fashion industry in Europe overall, where the protection of applied art and fashion designs has increasingly come into focus, especially in light of the 2021 Cofemel judgment. In that decision, the CJEU extended the idea of “originality criterion” to the world of works of applied art, potentially opening a door for copyright protection of fashion designs in the EU.
This comes in sharp contrast to the United States, where copyright claims in the fashion context have been relatively complicated to make, due to the utilitarian nature of garments and accessories and the corresponding lack of copyright protections for these types of goods in their entirety.
The case is Ganni A/S v. Steve Madden Ltd., et al.,BS-25562/2024-SHR (Maritime and Commercial High Court of Denmark)
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