Balenciaga, The French Fashion House, Sues Designer Steven Madden over Copycat Bag.

Balenciaga, the former Haute Couture, Paris-based fashion house has filed a law suit (May 20^th 2014) against the footwear company Steven Madden Ltd in the Southern District of New York, alleging that the footwear brand has manufactured, advertised, offered for sale and sold bags which replicate and violate the trade dress of its recognised Motorcycle bag shown below.  

Designed by Nicolas Ghesquière, (the now current creative director of LMVH), Balenciaga has been selling the iconic classic bag since 2000. According to the lawsuit, Balenciaga has accused the Madden brand of copying “the shapes and design elements of Balenciaga’s Classic Bag, and producing a bag featuring identical or nearly identical shapes and design elements but sold at a significantly lower price.” Unlike in the UK, the US does not have design protection, which protects design right the three-dimensional shape of a design. Therefore in the US, the motorcycle bag is protected by what is called trade dress – a subset of trademark law, which can be used to protect the overall appearance of an item. This extends to features such as size, shape, colour or colour combinations of a product or anything that creates the overall look and feel of a brand in the marketplace. 

In order to be successful in a trade dress lawsuit it is essential that the consumer believes that the trade dress is a source indicator of distinguishing the goods and services of one from those of others. The trade dress issue here relates to the front design of the Motorcycle bag which was federally registered in 2007. Importantly the features which make up the trade dress in question must not serve a utility or function outside of creating recognition in the consumer's mind. Looking at the design below, the Goss-IPgirl wonders whether this is merely functional or actually a recognisable indicator of source?

Balenciaga’s registered Classic Bag Trade Dress drawing

Balenciaga argue that the Classic Bag Trade Dress depicted above originate exclusively with them. And that the Balenciaga Classic Bag Trade Dress is unique, inherently distinctive and non-functional. Interestingly, this is not the first time that Balenciaga the Parisian fashion house has filed has a lawsuit against the Steve Madden, Ltd, the founder of the NYC footwear company that bears his name. In late 2009, Balenciaga filed a lawsuit against Steve Madden for allegedly copying the label's multicolor Lego heels from the fall 2007 collection. 

Also in 2009, Alexander McQueen also filed (and subsequently settled) a lawsuit against Madden for copying its black Faithful bootie. 

The case also draws attention to the NYC based footwear company’s reputation for producing knock-off designs. Balenciaga argue that the Steve Madden brand has operated “a pattern of misappropriation of Balenciaga’s designs, most recently with the copying of the Balenciaga’s CREEPER shoe design.” 

Balenciaga [Left] Steve Madden [Right]

What this shows is that contrary to the belief that luxury fashion houses are not concerned about fast fashion companies imitating their design, luxury and other higher-end companies are willing to protect their designs & revenues against companies down the lower end of the food chain.

Balenciaga has asked the New York federal court to prevent Steve Madden from producing the “studied copy” of its Motorcycle bag. In the lawsuit, it is alleged that such sales “can confuse customers, create a false impression that Steven Madden's products are Balenciaga's, and hurt the French company's goodwill, reputation and sales.” 

The case is Balenciaga v. Steven Madden Ltd et al, U.S. District Court, Southern District of New York, No. 14-03627.