The footwear retailer and the French fashion house are settling their dispute out of court, jointly filing yesterday in the U.S. District Court for the Southern District of New York to voluntarily dismiss the case that alleged the former’s Sicily flats design had infringed on the latter’s high-heeled Tribute sandal.
In a complaint filed in August with the U.S. District Court for the Southern District of New York, Steve Madden accused the Parisian luxury label of attempting “to stifle legitimate competition in the footwear industry” through tortious interference and unfair trade practices, among other illegal methods.
The products in question were the New York-based brand’s Kananda heels and Sicily flats, which YSL claimed had infringed on both the design patent it holds to its Tribute platforms and alleged trade dress rights to its shoes.
According to the complaint, YSL had sent cease-and-desist letters to at least 13 Steve Madden vendors, including Dillard’s, DSW, Walmart and Zappos — some of whom have pulled the sandal and asked the company to reclaim their unsold inventory.
In the complaint, Steve Madden called the issue “absurd and frivolous, as no ordinary observer could ever mistake” its style for the Tribute. It also argued that its sandals were markedly different in appearance, describing the features of the YSL shoe as merely functional — which would disqualify its trade dress protection — and as such, the public would be unlikely to confuse one for the other due to differences in price and target consumers.
Although it stopped selling the Kananda in early 2017, Steve Madden continues to retail its Sicily sandal. It had sought declaratory judgment of design patent and trade dress noninfringement.
“Steve Madden takes intellectual property claims very seriously and respects the legitimate rights of others,” a representative said in a statement to FN at the time. “But when it and especially its customers are faced with a baseless accusation that includes a clearly inapplicable patent, Steve Madden will not hesitate to defend itself and its customers to the fullest extent of the law.” (YSL did not respond to a request for comment at the time.)
The decision to settle came less than two weeks after U.S. District Judge Valerie Caproni tossed out two of YSL’s counterclaims against the retailer.
It’s not the first time Steve Madden has been embroiled in a legal dispute involving infringement. A decade ago, British fashion house Alexander McQueen filed a trade dress suit against the company, alleging that the latter’s Seryna boots were a clear copy of its Faithful boots. (The two also settled out of court.) That same year, French maison Balenciaga brought a complaint against the brand over its lookalike Lego-inspired sandals, successfully receiving payment of an undisclosed sum from the U.S. footwear powerhouse.
Steve Madden is also battling with Los Angeles-based brand Cult Gaia on whether its signature bamboo Ark bag is protected by trade dress.
FN has reached out to Steve Madden and YSL for further comment.
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