GANNI® VS. STEVE MADDEN®: THE DANISH MAISON WHO STEPPED ON THE AMERICAN GIANT’S TOES.

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I. Two Giants Face Off

Steve Madden^®, the renowned New York-based fashion brand, can no longer market, export, or import its “Grand Ave” shoe model in Denmark.

This was the essence of the decision rendered on August 9, 2024, by the Danish Commercial High Court, marking the first time copyright laws were applied to a specific shoe design in Denmark.

The dispute originated from legal action initiated by the Danish maison GANNI^® before the Commercial Lower Court regarding its “Buckle Ballerina” shoe model, which bore a striking resemblance to the American giant’s design.

GANNI^® argued that the shape and other distinctive features of the “Buckle Ballerina” model were faithfully copied by Steve Madden^® for its “Grand Ave” model, claiming a violation of domestic and EU copyright laws.

Interestingly, with this ruling, the Danish Court of Appeal also overturned two previous decisions issued by the same lower court. These earlier rulings concerned copyright infringements committed by two other competitors of GANNI^® related to the same “Buckle Ballerina” model, in which the first-instance court had ruled that the shoe design did not qualify for copyright protection.

II. Similar, But Not Identical

The defense attorneys for GANNI^® focused on the similarities between the “Buckle Ballerina” model and the American competitor’s “Grand Ave” model.

Both shoes, they argued, featured a pointed toe and flat edge, a wider sole in a color contrasting with the rest of the shoe, two straps—one near the toes and the other over the instep—with a metallic buckle and eyelets joined by visible stitching, a strap over the heel, a beige insole with contrasting trim, and a glossy leather surface. Both brands also offered their shoes in the same colors.

However, GANNI^®’s legal team emphasized that many of the aesthetic details of the “Buckle Ballerina” model were poorly replicated by the American brand, which essentially created and marketed a “cheap imitation” of the original.

III. An Expansive Interpretation of Copyright Law: The Decision of the Danish Higher Commercial Court

Before examining the Danish Court of Appeal’s decision, it is necessary to clarify what copyright is and the framework protecting it within the European Union.

In simple terms, copyright is a legal right that protects intellectual creations, granting their authors exclusive control over reproduction, distribution, public communication, and economic exploitation. It safeguards original works across various fields, including literature, art, music, design, software, and other creative domains.

Copyright protects not only the final product (e.g., a book or painting) but also the unique creative structure that defines its originality.

For copyright protection to be granted, two main criteria must be met:

The work must be the intellectual creation of its author.
The work must express originality.

At the European level, copyright is governed primarily by Directives 93/98/EEC, 2001/29/EC, and 2019/790/EU, which establish common rules to harmonize the rights of authors and rightsholders across EU member states.

In line with the general definition outlined above, these EU directives provide the following copyright protections:

Protection of original works: Copyright applies only to works representing the intellectual creation of their authors.
Duration of protection: Copyright lasts for the author’s lifetime and 70 years after their death.
Exclusive rights: Authors have exclusive rights to authorize or prohibit reproduction, distribution, public communication (including online availability), and other uses of their works.
Exceptions and limitations: The law provides exceptions to copyright, such as for educational or research purposes, parody, and citation (Art. 5 of Directive 2001/29/EC).

Given this expansive interpretation of copyright—protecting the creative processes and structures underlying original works—the Danish Higher Commercial Court ruled on GANNI^®’s appeal as follows:

“… The High Court finds on this basis and after the presentation of evidence, including the considerable photographic material of previous shoe models, that the recognizable design elements in the Buckle Ballerina are composed in such a new and creative way that the shoe must be considered to be an expression of the designer’s own intellectual creation and thus subject to protection as a work pursuant to the Copyright Act. …”

Moreover, the court observed that since its market launch, the “Buckle Ballerina” model had been widely promoted in fashion magazines and on social media, generating over 13 million DKK in revenue for GANNI^®.

The court had no doubt that the shoe possessed distinctive character, commercial identity, and market position warranting protection under the Danish Marketing Practices Act.

In light of these findings, the court ruled that since the “Grand Ave” model copied the design of the “Buckle Ballerina”, the two could create consumer confusion about the product’s origin and originality.

IV. The ECJ’s Precedent: The Cofemel Case

This ruling aligns with the European Court of Justice (ECJ) decision in the Cofemel v. G-Star Raw case (C-683/17, 2019).

The ECJ held that industrial designs, such as clothing items, are protected under copyright law as long as they meet the originality requirement, regardless of whether they possess exceptional artistic value.

The ECJ specifically stated:

“… Article 2(a) of Directive 2001/29/EC of the European Parliament and of the Council of May 22, 2001, on the harmonization of certain aspects of copyright and related rights in the information society, as interpreted by the Court, precludes industrial designs from being protected by copyright only if they display particularly intense artistic character that exceeds what is normally required for other categories of works…”

V. Conclusion.

The Danish High Court’s decision represents a significant victory for the creative sector, demonstrating the flexibility of copyright law in providing extensive protection to original works, regardless of their strict artistic value.

If this is true – distorting poor Seneca’s words – NOT EVERYTHING of value created by others can be made our own.