image: W
Notorious footwear copycat Steve Madden is not going down without a fight in the lawsuit that AirWair International, a subsidiary of Dr. Martens footwear, filed against it earlier this year. In March, AirWair slapped New York-based Steve Madden with a trade dress infringement suit, claiming that Madden “knowingly and intentionally” copied one of its best-selling shoe designs, the Dr. Martens’ 1460 Boot.
United Kingdom–based Dr. Martens’ initial complaint alleged that the similarity between its shoes and Madden’s is no coincidence, and that this “exceptional case” of infringement by the notorious copycat “knowingly and intentionally copied Dr. Martens’ trade dress.” The complaint additionally stated that Steve Madden “acted with knowledge of the fame and reputation of the Dr. Martens trade dress with the purpose to … willfully and intentionally confuse, mislead, and deceive member of the public.” Such actions have already caused some consumer confusion, according to Dr. Martens.
Steve Madden has since answered these allegations, and is rejecting any such notion that its shoe styles are too similar to the 1460 Boot. It claims that the problematic design issues are “generic elements of a functional item,” which “[have] not acquired distinctiveness, secondary meaning or served as a source identifier.” (The latter elements are required in order to claim trade dress protection, as Dr. Martens has).
In addition to refuting the allegations, Steve Madden went even further in asserting that the four trade dress registrations that Dr. Martens has obtained over the years in regards to its shoe and sole designs are in fact invalid and should be cancelled. According to WWD, Madden alleges that “the use of a sole edge with longitudinal ribbing and a dark color band over a light color, welt stitching and a tab at the top back heel of any style of footwear is generic, commonly used by third parties, and has never functioned, or has been abandoned, as a source identifier for [Dr. Martens].”
Dr. Martens originally sought preliminary and permanent injunctive relief, the removal of all advertisements of said infringing products, damages, attorney’s fees and any other relief the court may reward. Steve Madden’s answer is not only asking that the original action be dismissed, but additionally for the United States Patent and Trademark office to cancel the trade dress registrations it deems to be “invalid.”
Steve Madden’s response is hardly surprising. In 2013, Madden, himself, reflected on the many lawsuits that have been filed against his eponymous label, telling the New York Times: “I am not embarrassed by [the lawsuits] whatsoever. I mean, George Harrison was sued for ‘My Sweet Lord,’ right? And John Lennon was sued over ‘Come Together.’” Of the lawsuit that Balenciaga filed against his company in 2011, in particular, Madden has gone on the record to state: “It was silly. They did a multicolored shoe and we did it. It was stupid.”
Madden has since been embroiled in litigation with Stella McCartney over her Falabella bag and Balenciaga – again – more recently for allegedly copying its trade dress-protected Motorcycle bag, among other brands.
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