Image: aljamila

In something of a role reversal, notorious copycat Steve Madden is calling foul on Yves Saint Laurent. Madden, which is currently embroiled in a legal battle with Cult Gaia, alleges in a new lawsuit that YSL has threatened to sue in connection with its patent and trade dress-protected Tribute shoe, a move that Madden is calling “a bad faith attempt to stifle legitimate competition in the footwear industry.” As a result, Madden filed suit on Monday, asking a New York federal court to declare that it is not infringing YSL’s high heeled Tribute shoe and to establish that YSL lacks rights in the design of its Tribute flat sandal.

According to the complaint, YSL has threatened to sue Steve Madden and “at least 13 of Madden’s customers who sell Madden’s flat Sicily sandal” by way of 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.

In response to YSL’s cease and desist letters, Madden claims that the Paris-based brand’s allegations are “absurd and frivolous, as no ordinary observer could ever mistake the Sicily flat sandal for [YSL’s] high-heeled platform Tribute design” because the Sicily design consists of a flat sandal and “lacks, high heels, a platform sole, ankle straps, and buckles,” which are elements of YSL’s Tribute patent.

YSL’s Tribute patent drawing (left) & Madden’s Sicily (right)

Speaking of YSL’s alleged trade dress rights, ones that extend to the configuration (design and shape) of the shoe itself, Madden claims that not only does YSL not have a federal trade dress registration, it does not have a valid trade dress infringement claim because its Sicily sandal is not confusingly similar to YSL’s Tribute sandal. (Note: Likelihood of confusion is the central inquiry in trademark/trade dress cases).

Madden points to “the clear dissimilarities between the shapes and contours of the toe bed straps used in Madden’s Sicily sandal and [YSL’s] Tribute Flat Sandal, and (2) the markedly different marketplace conditions under which Madden’s and [YSL’s] shoes are sold, e.g., Madden’s Sicily sandal is targeted at a much lower price point consumer than the luxury market that [YSL] target with their very expensive Tribute Flat Sandal.”

YSL’s Tribute flat (top) & Madden’s Sicily flat (bottom)

With this in mind, Madden has asked the court to declare that YSL lacks any protectable trade dress rights in its flat sandal and to hold that Madden’s Sicily sandal is not confusingly similar to, and thus, does not infringe, any of YSL’s purported trade dress rights.

Madden also wants the court to establish that it is not running afoul of YSL’s design patent primarily because “Madden’s Sicily flat sandal design is so distinct from the high-heeled platform shoe design claimed in the [Tribute] patent such that no ordinary observer, even unaware of prior high-heeled platform shoe designs, could possibly be deceived into thinking that the Sicily flat sandal design was the same as the high- heeled platform shoe design in [YSL’s] patent.”

And Steve Madden does not stop there. The company claims that in case YSL’s threats of litigation over Madden’s Sicily sandal are not enough, YSL is “also accusing Madden’s long-discontinued high-heeled Kananda platform shoe of infringing [the same] patent and [YSL’s] trade dress rights” in its Tribute shoe.

“This assertion,” according to Madden, “is a blatant breach of the parties’ prior agreement in 2017, in which, [YSL] promised that they would not assert these intellectual property rights against the Kananda shoe in exchange for Madden’s promise, for business reasons, to discontinue the Kananda shoe design.”

YSL’s Tribute shoe (left) & Madden’s Kananda (right)

Madden claims that YSL’s “motives for breaching the agreement and asserting frivolous design patent and trade dress claims are readily apparent.” In particularly, Madden claims that YSL is “unhappy with the existence of Madden’s completely different Sicily sandal, and have resorted to the aforementioned desperate measures to thwart Madden’s sales, namely by improperly attempting to equate the clearly different flat Sicily sandal with the high-heeled shoe claimed in [YSL’s patent], the discontinued high-heeled platform Kananda shoe and their Tribute sandal.”

In reality, YSL is “using this frivolous assertion as a springboard for threatening to sue Madden with respect to the Kananda shoe, despite [YSL’s] promises that they would never do so,” according to Madden, which sets forth claims of tortious interference with contract, breach of contract, intentional interference with prospective economic advantage, and deceptive and unfair trade practices, in addition to its request for a declaratory judgment.

While Madden says that it tried to handle the matter with YSL privately, the well-known fashion brand’s “intimidation of Madden’s customers was the last straw” and the footwear giant says that it cannot stand “idly by and allow defendants to strong-arm its customers with baseless threats.”

A representative for YSL was not immediately available for comment.

* The case is Steve Madden, Ltd., v. Yves Saint Laurent, 1:18-cv-07592 (SDNY).