1) The Steve Madden phenomenon - Copyright and Trademark violations
Am I the only one that wonders how and why Steve Madden is still doing business? I’m not saying it shouldn’t - that’s unsaid. I’m just baffled at the amount of trademark and copyright violations the brand has faced and dodged over time. This month’s Steve Madden violation involves Ganni. Two styles of shoes, two more headaches. The Graya and Sandria styles are the chosen shoes to copy this time, and Ganni is backing them up by pressuring retailers to stop selling them, claiming Madden is infringing on its Buckle Ballerinas and Two-Strap Sandal designs. Now Madden’s argument is that Ganni holds no intellectual property rights for these designs in the U.S. and maintains that the elements in question (I’m still talking about buckle and straps) are common in footwear and not protectable. If you have the right to remain silent, please do if you’re going to say something silly like that… Now one point for Madden though, is that they have a solid defense team (one they need) that was able to identify a whole lot of similar shoes in the market, which, of course, diminished Ganni’s claims of originality.
Now the conflict went overseas, to Denmark, where Ganni was successful in obtaining an injunction against Steve Madden for a different shoe style, the Grand Ave, citing copyright protection for its Buckle Ballerinas design. The Danish court ruled that Ganni's shoe had sufficient market presence and originality for protection, which made the whole thing that much more complicated. Madden’s response? Seeking a court declaration affirming that its designs do not infringe on Ganni’s rights and pursuing damages for Ganni’s alleged “interference” with its business. Steve, I’d agree with you, but then we’d both be wrong.
2) Warby Parker v. 1-800 Contacts - Advertising
Looks like Warby Parker just applied a classic case of keyword manipulation to outsmart 1-800 Contacts; I could have seen that coming without my glasses. On October 8, the 2nd U.S. Circuit Court of Appeals kept a lower court’s decision favoring Warby Parker in yet another trademark dispute between Warby Parker and 1-800 Contacts. Essentially, Warby Parker is playing smarter not harder by using 1-800 Contacts’ name in keyword advertising to redirect search engine users to its online contact lens store. And the court is playing fair by saying it did not violate U.S. trademark law, since 1-800 Contacts failed to demonstrate that this practice would confuse and or mislead any potential customers.
This case goes way back to a 2021 lawsuit by 1-800 Contacts, where it accused Warby Parker of unfair competition by purchasing search engine keywords associated with its brand (there’s a first to everything). That lawsuit was dismissed in 2022, simply because the judge found no likelihood of customer confusion. There’s a difference between a visionary and a delusional, and that difference has been shown and paraded in this one of many trademark disputes!
3) MyTheresa acquiring YNAP from Richemont - Acquisitions and market consolidation
There’s high maintenance, and there’s Yoox Net-a-Porter (YNAP). Kidding (almost)! But congrats to Richemont for selling or starting the process of selling YNAP to the German luxury e-commerce platform Mytheresa. I mean, it was struggling, and when it comes to blows, it's often best to divest. After years of trying to polish YNAP into something resembling a diamond since acquiring it in 2018, Richemont has realized it’s time to let the poor thing go. There was debt, there were losses, but Richemont, classy like it is, will invest between €800 million and €1 billion into YNAP to cover its losses while retaining a 33% equity stake in Mytheresa. It’s that or a complete shutdown of YNAP and potential layoffs. So to Mytheresa it goes!
And for Mytheresa it’s also a boost to its position as a leading multi-brand luxury e-commerce platform in a time and age where market consolidation is more common than micro-trends. My question is though, how financially viable is it? If you look at the numbers, YNAP generates a way bigger number than Mytheresa, so integrating that will be about as hard as choosing which shade of black to pick. The CEO, Michael Kliger, is not sharing my question, though, and sees the acquisition as an opportunity to expand distribution and customer base. There’s people doubting it, there’s people vouching for it, but at the end of the day, whether this deal crashes or cashes in depends on if these two can actually play nice together.
4) Nike v. Lontex Corporation - Trademark dispute
Would you pay $5 million in attorney fees? Depends? Typical. What if it was in attorney’s fees to Lontex in their trademark dispute over the “Cool Compression” trademark? I plead the fifth. Meanwhile, on October 9th, Nike argued that the case did not meet the “exceptionality” threshold defined in the Lanham Act, disputing Special Master Hon. Jane Greenspan’s assertion that the situation warranted such a hefty fee. That’s one way to do it… I have to say, when you win your trial, including winning on counterfeiting claims and a rejection of a demand for over $100 million in damages, who wouldn’t react the same way? So then who wouldn’t say that the interpretation of “exceptional” is overly broad and lacks legal grounding? I would even emphasize that the findings were premised on factual errors (something Nike did as well, I’m not all that original…).
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