Just days after filing a counterclaim in a lawsuit brought against it by Steve Madden, Danish fashion player Ganni has changed its course.
On Nov. 11, the company filed a response to Steve Madden’s original complaint, which alleged that Ganni had interfered with its business and committed libel because of its purported actions relating to two styles, the Graya flat and the Sandria sandal.
In the counterclaim, Ganni used a variety of affirmative defenses to disprove what Steve Madden’s counsel alleged on the libel and business interference fronts, while largely overlooking the namesake brand’s declaratory judgment claims, which asked the judge to issue an order stating that Steve Madden has not infringed on Ganni’s trademarks, patents, copyrights or other intellectual property by manufacturing and selling the Graya and Sandria styles.
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Two days later, on Nov. 13, the Copenhagen-headquartered company filed another document with the court, this time a letter to the presiding judge, Brian Cogan, stating its intention to fie a motion to dismiss each of the declaratory judgment claims brought forth by Steve Madden. The company asserts that’s primarily because the “claims, as pleaded, have a thin jurisdictional basis, at best. As indicated, Ganni has secured neither a U.S. copyright registration nor a U.S. patent, each a requirement to commence suit.”
Effectively, Ganni is set to argue that those claims from the original case should be dismissed because it doesn’t have any certification that shows the designs in question—its Feminine Buckle Ballerina and Feminine Buckle Two-Strap Sandal—legally belong to it.
In tandem with this statement, Ganni notified the court that it had extended a Covenant Not to Sue to Steve Madden. The covenant would prevent Ganni from pursuing or participating in legal action against Steve Madden in the U.S. over the Graya flat, the Sandria sandal or any other similar designs Steve Madden might manufacture in the future.
The company notes that on Oct. 25, it alerted Steve Madden that it intended to put forth the covenant, then shared a draft on Oct. 28 and an updated version on Nov. 1. According to Ganni, its opponent in the case “neither commented on nor proposed any revisions to the covenant.” In the letter, Ganni states that on the same day it filed an answer to Steve Madden’s complaint — Nov. 11 — it gave counsel for Steve Madden a signed version of the covenant. To date, the plaintiff has not co-signed the covenant.
If Steve Madden were to sign the covenant, it would be protected from any U.S.-based legal action over intellectual property over the Sandria sandal and the Graya flat.
“Ganni hereby irrevocably covenants that at no time will it directly or indirectly cause, authorize or otherwise participate in the commencement, maintenance or prosecution of any action or proceeding of any kind, including, without limitation, any suit, complaint, claim or cause of action, in any federal or state court, asserting U.S. intellectual property rights in the Ganni designs against the Steve Madden shoes in the United States,” the covenant reads.
In the letter, Ganni notes that a different case, Already LLC v. Nike, sets legal precedence for the dismissal of the declaratory judgment claims if both parties sign a covenant similar to the one Ganni has put forth. In that case, the Supreme Court ruled that the case was moot because it removed the injury Already said it faced from Nike. Ganni hopes Cogan will rule the same way should Steve Madden sign the covenant.
Even if Steve Madden goes through with signing the document and Cogan dismisses the declaratory judgment claims, Ganni may still have to face the libel and tortious interference claims brought by Steve Madden.
