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Image: Steve Madden

“Despite having plentiful resources to create original artwork and designs for its products,” Steve Madden is on the hook – again – for copying, except this time the plaintiff is not a high fashion brand, like Valentino or Balenciaga, the latter of which has sued Steve Madden twice over the past several years. It is an independent artist. According to a newly-filed lawsuit, the billion dollar footwear and accessories brand copied one of Lucky Horse’s most popular designs, its “Far Out” patch, and prominently featured the original artwork on its “Black B-Galaxy Backpack.”

According to Lucky Horse’s complaint, which was filed this month in a New York federal court, Steve Madden began selling a backpack featuring Lucky Horse’s design “in or around 2017” and “on March 29, 2018, soon after discovering the infringement, Lucky Horse sent [the company] a cease-and-desist letter, notifying Steve Madden of the infringement and requesting basic sales data … in furtherance of an amicable resolution.”

But such a amicable out-of-court settlement was not in the cards. Lucky Horse – which got its start in 2012 and now boasts a list of stockists that includes “hundreds of retailers throughout the world” – claims that in May 2018, Steve Madden’s counsel responded to the cease and desist demand with a letter of its own: “aa terse, four-sentence letter consisting entirely of a conclusory denial that it had ‘committed any act of copyright infringement’ and an assertion that it ‘now consider[ed] this matter closed.’”

At no point, per Lucky Horse, “did Steve Madden show any interest in cooperating with Lucky Horse, providing any of the requested sales data, or even discussing an amicable resolution, despite its flagrant infringement of Lucky Horse’s copyrighted work.”

 Lucky Horse’s patch (left) & Steve Madden’s bag (right) Lucky Horse’s patch (left) & Steve Madden’s bag (right)

Accordingly, the complaint asserts that, “Having attempted to resolve this matter amicably only to be stonewalled and rebuffed, Lucky Horse [has] been forced to bring this action.”

Lucky Horse notes that Madden’s use of the lookalike design is either intentional copying or the result of a total lack of due diligence, as “a cursory Google search for ‘far out patch’ immediately reveals multiple websites that sell the Far Out Patch, all of which identify Lucky Horse as the source of the patch.” With that in mind, Steve Madden either knew of its infringement and did not care, or it failed to take even the most basic measure to prevent infringement.”

The brand further points to Steve Madden’s “plentiful resources,” including “$28.7 million in net profit and a 42% increase in quarterly net income” as reported by Steve Madden in [the first fiscal quarter] of 2018, as evidence of Steve Madden’s “reckless disregard for the rights of Lucky Horse [as the rightful copyright holder],” as the profitable fashion brand could have easily created original artwork and designs for its products.

As a result of Steve Madden’s use of Lucky Horse’s design, the company seeks to impound Steve Madden of the infringing products, recover damages in the form of $150,000 for willful infringement and $25,000 per violation, and an injunction ordering Steve Madden to cease all production of the infringing goods.

* The case is LUCKY HORSE PRESS LLC v. STEVEN MADDEN, LTD and CENTURY 21 DEPARTMENT STORES LLC, 1:19-cv-00545 (S.D.N.Y.).