Steve Madden and Saint Laurent are putting their footwear fight to bed. On the heels of Judge Valerie Caproni of New York’s Southern District Court tossing out two of YSL’s counterclaims against Steve Madden early this month, the New York-based footwear and accessories brand and the Paris-based luxury goods company have jointly filed to voluntarily dismiss the case, with prejudice, signaling that they have managed to confidentially resolve their differences out of court.
According to the trade dress and design patent infringement suit that Steve Madden filed against Saint Laurent in Auagist 2018, YSL engaged in “a bad faith attempt to stifle legitimate competition in the footwear industry” by sending the footwear manufacturer and “at least 13 of [its] customers who sell [the Steve Madden] flat Sicily sandal” a number of cease and desist letters, claiming that Madden’s “Sicily” flats look a bit too much like its Tribute design. YSL – which has a design patent for its high-heeled platform Tribute sandal – also claims that it maintains trade dress protection for a flat version of its Tribute sandal.
Saint Laurent responded to Madden’s suit with claims of its own, asserting that at least five Steve Madden shoe styles infringe its design patent for its high-heel Tribute sandal design, as well as its unregistered trade dress rights, which extend to a flat version.
In a decision early this month, Judge Caproni tossed out two of YSL’s counterclaims, leaving the rest to be determined at a trial that we now know will not come to pass.
The high fashion versus mass market fashion suit is the latest in a long list of cases filed against Madden, which has built a multi-billion dollar business by offering up footwear and accessories, often inspired by more expensive, designer products. The brand’s lookalike wares have landed it on the receiving end of lawsuits from Balenciaga (which has actually sued Madden not just one time… but on two different occasions), Dr. Martens, Alexander McQueen, Valentino, buzzy startup Allbirds, and Stella McCartney, among others, all of which have settled out of court ahead of trial.
Currently still under way in New York federal court: the very strongly-worded case that Madden filed against Cult Gaiain response to a cease and desist letter from the Ark bag-marker, threatening to file suit. As of late, Madden has not been willing to back down in response to such threats of litigation, and instead, has opted to take the matter to court, thereby, calling his competitors’ (potential) bluffs and seeking a declaration from the court that his products are not infringing.
* The case is Steve Madden, Ltd., v. Yves Saint Laurent, 1:18-cv-07592 (SDNY).
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