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Fashion Law Blog An Interactive Discussion on the Business of Fashion

Balenciaga puts its foot down and sues Steve Madden

Posted in Fashion Intellectual Property, The Business of Fashion

In April 2008, several fashion bloggers noted that Steve Madden "knocked-off" French Couture House Balenciaga’s "Lego" shoes, which were part of its Fall 2007 collection.

Last Monday, December 15, 2009, perhaps inspired by Alexander McQueen’s recent suit against Steve Madden for similar copying, Balenciaga filed suit against Steve Madden for Copyright Infringement, False Designation of Origin, Unfair Competition and Deceptive Business Practices in New York federal court.

Interestingly, the complaint barely mentions Trade Dress, and does not include it as a cause of action, maybe because secondary meaning is so difficult to prove. 

Or maybe Balenciaga’s complaint is just poorly drafted.  In the copyright infringement claim, Balenciaga fails to allege that it holds a federal copyright registration, a prerequisite for bringing a copyright action in federal court.  In the Deceptive Trade Practices claim, the company alleges that Madden is "in direct competition with Balenciaga," which at the prices listed above, seems very hard to believe.

Under existing US laws, it is permissible to copy shoes and clothing because those items are useful articles.  But, I think Balenciaga has a leg to stand on.  Here’s why:

Balenciaga argues that Steve Madden is engaged in a pattern of willful and deliberate copying, constantly stealing the most successful styles from other shoe designers, thus profiting from their research, development, and successful track record. 

By not having to spend money for design and development, and focusing only best-sellers of others, Steve Madden skips the risky part of the fashion business. 

So, Balenciaga just might have colorable argument that Steve Madden is engaged in unfair competition by copying its colorful shoes.

Photo credit: City File

p.s. While I like crazy shoes, thank goodness these Legos are not under our tree.

  • JC

    I agree that Balenciaga is going to have a tough time given that the shoes are useful articles (though how useful are these ugly Lego shoes really?!). You make a great point w/r/t Steve Madden’s willful and deliberate copying though–definitely seems like unfair competition.

    On another note, perhaps Lego (the toy maker) has some interest in this matter. After all, Balenciaga’s shoes likely receive some attention solely because of their use of the “Lego” trademark in its name.

  • http://www.likelihoodofconfusion.com Ron Coleman

    Well, isn’t a trade dress claim barred by the functionality rule of TrafFix?

  • Tal Benschar

    I don’t get your theory of unfair competition. It is a fundamenatl principal of IP law that anything not protected is free to be copied. Each type of IP has its own rules of what is protectible, but if your creativity does not qualify (or if you missed the boat because you failed to file something on time) then it’s tough luck. Even if the copyist is getting a free ride off your hard work. No IP — copying is permitted.

    That is the basis of the Sears-Compco rule. Also the Supreme Court’s rejection of the “sweat of the brow” doctrine in Feist.

    So I really don’t see what this free-floating unfair competition case is about?

    (BTW, useful articles is a copyright doctrine. The shoe design could have qualified for a design patent. Now, however, the on-sale bar has kicked in. Why should Balenciaga be allowed a common law unfair comeptiton claim when they could have filed for a design patent?)

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