Steven Madden Ltd. v. Yves Saint Laurent - Complaint

Case 1:18-cv-07592 Document 1 Filed 08/20/18 Page 1 of 29
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
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STEVEN MADDEN, LTD., :
:
Plaintiff, : COMPLAINT FOR
: DECLARATORY JUDGMENT
vs. :
:
:
YVES SAINT LAURENT and LUXURY GOODS :
INTERNATIONAL (LGI) S.A., :
:
Defendants. :
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Plaintiff Steven Madden, Ltd. (“Madden” or “Plaintiff”), by and through its counsel
Amster, Rothstein & Ebenstein, LLP, for its Complaint against Defendants Yves Saint Laurent
(“YSL”) and Luxury Goods International (LGI) S.A., (collectively, “Defendants”), alleges as
follows:
NATURE OF THE ACTION
1. This is a declaratory judgment action arising under the Declaratory Judgment Act,
28 U.S.C. §§ 2201 et. seq., the Patent Act, 35 U.S.C. §§ 1, et seq., the Trademark Act, 15 U.S.C.
§§ 1051 et seq., and for substantial and related claims of tortious interference with contract,
intentional interference with prospective economic advantage, deceptive and unfair trade
practices, breach of contract, promissory estoppel, and equitable estoppel, under the statutory and
common laws of the State of New York.
2. As discussed herein, this action arises out of a substantial, immediate and real
controversy between the parties based on threats that Defendants have made against Madden and
its customers regarding Defendants’ alleged patent, trademark and state common law rights
relative to certain Madden footwear.
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3. In a bad faith attempt to stifle legitimate competition in the footwear industry,
Defendants have threatened to sue Madden and its customers for infringement of U.S. Design
Patent No. D607,187 (“the ’187 Patent”) directed toward a specific high-heeled platform shoe, as
well as alleged trade dress rights in Defendants’ shoes. A true and correct copy of the ’187
Patent is attached hereto as Exhibit A. Defendants’ threats have already caused significant harm
to Madden, causing certain Madden customers to cease selling Madden products. This
declaratory judgment action is required because Defendants’ assertions are baseless, and
Defendants’ reckless assertion of their intellectual property rights against Madden and its
customers must be immediately stopped.
4. Defendants have alleged that Madden’s and its customer’s sale of its “Sicily” flat
sandal infringes the ’187 Patent, which is directed to a high-heeled platform sandal. This
allegation is absurd and frivolous, as no ordinary observer could ever mistake the Sicily flat
sandal for the high-heeled platform design of the ’187 Patent:
U.S. D607,187 Madden Sicily

Fig. 2
5. As is readily apparent, unlike the shoe claimed in the design patent, the Sicily
sandal is a flat sandal and lacks, inter alia, high heels, a platform sole, ankle straps, and buckles.
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6. Notwithstanding these differences, Defendants have sent cease and desist letters
to Madden and at least 13 of Madden’s customers who sell the flat Sicily sandal, threatening to
sue for infringement of the ’187 Patent. This has caused some Madden customers to pull the
Sicily sandal from their shelves and return the sandals to Madden. As such, Madden seeks a
declaration that the flat Sicily sandal does not infringe this clearly inapplicable patent.
7. Defendants also assert infringement of purported trade dress rights in the flat
version of their “Tribute” sandal (the “Alleged Flat Tribute trade dress”). Defendants have no
federal trade dress registration, nor can they establish that they have any trade dress rights in
their Tribute flat sandal (“the Tribute Flat Sandal”). Defendants claim trade dress rights in the
flat sandal sole, a clearly functional element present in all flat sandals, as well as the straps that
cover the toe bed (the “toe bed straps”). But these design features are functional and Defendants
have not shown, and cannot show, that the toe bed straps are inherently distinctive. Additionally,
there can be no likelihood of confusion between Defendants’ Alleged Flat Tribute trade dress
and Madden’s Sicily sandals given, inter alia, (1) the clear dissimilarities between the shapes and
contours of the toe bed straps used in Madden’s Sicily sandal and Defendants’ Tribute Flat
Sandal, and (2) the markedly different marketplace conditions under which Madden’s and
Defendants’ shoes are sold, e.g., Madden’s Sicily sandal is targeted at a much lower price point
consumer than the luxury market that Defendants target with their very expensive Tribute Flat
Sandal.
8. As such, Madden seeks declarations that Defendants lack any protectable trade
dress rights in their flat sandal and that Madden’s Sicily sandal is not confusingly similar to, and
does not infringe, any of Defendants’ purported trade dress rights.
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9. If this were not enough, Defendants are also accusing Madden’s long-
discontinued high-heeled Kananda platform shoe of infringing the ’187 Patent and Defendants’
trade dress rights. This assertion is a blatant breach of the parties’ prior agreement in 2017, in
which, Defendants promised that they would not assert these intellectual property rights against
the Kananda shoe in exchange for Madden’s promise, for business reasons, to discontinue the
Kananda shoe design.
10. Madden has kept its end of the bargain, as it has not sold the Kananda shoe since
early 2017 when the parties settled their dispute. Defendants, by contrast, have breached the
agreement, and now threaten to sue Madden for infringement of the ’187 Patent and their trade
dress rights (in the high-heeled, platform Tribute sandal) with respect to the still discontinued
Kananda shoe.
11. After discontinuing the high-heeled, platform Kananda shoe, Madden designed
the Sicily sandal, which has a completely different design from the Kananda shoe. As shown
below, the Sicily sandal is a completely different flat sandal and lacks, inter alia, high heels, a
platform sole, ankle straps, and buckles, which are all part of the Kananda shoe:
Madden Kananda Madden Sicily
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12. Defendants’ motives for breaching the agreement and asserting frivolous design
patent and trade dress claims are readily apparent. On information and belief, Defendants are
unhappy with the existence of Madden’s completely different Sicily sandal, and have resorted to
the aforementioned desperate measures to thwart Madden’s sales, namely by improperly
attempting to equate the clearly different flat Sicily sandal with the high-heeled shoe claimed in
the ’187 Patent, the discontinued high-heeled platform Kananda shoe and their Tribute sandal.
13. While Madden attempted to amicably resolve its differences with Defendants
concerning the Sicily sandal, Defendants’ intimidation of Madden’s customers was the last
straw. Madden cannot stand idly by and allow Defendants to strong-arm its customers with
baseless threats.
14. Defendants’ actions have all been done with bad faith, seeking to stifle legitimate
competition in the footwear industry. As such, and as set forth herein, Madden seeks a
declaratory judgment against Defendants that the flat Sicily sandal does not infringe any of
Defendants’ intellectual property rights, including the ’187 Patent and the Alleged Flat Tribute
trade dress; and enjoining all of their improper acts with respect to the Sicily sandal, as well as
the discontinued Kananda shoe, including the renewed assertion of the ’187 Patent against the
Kananda shoe.
THE PARTIES
15. Plaintiff Madden is a business entity organized under the laws of the State of
Delaware having a principal place of business at 52-16 Barnett Avenue, Long Island City, New
York, 11104.
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16. Upon information and belief, Defendant YSL is a corporation organized and
existing under the laws of France, with a principal place of business at 7, Avenue George V,
75008 Paris, France.
17. Upon information and belief, YSL regularly does and/or transacts business within
this judicial District, including at its two retail stores in this district, located at 3 East 57th Street,
New York, New York, 10022, and at 80 Greene Street, New York, New York, 10012.
18. Upon information and belief, Defendant LGI is a corporation organized and
existing under the laws of Switzerland, with a principal place of business at Via Industria 19
6814, Cadempino, Switzerland.
19. Upon information and belief, Defendant LGI regularly does and/or transacts
business within this judicial District, through providing distribution and logistical support to
Defendant Yves Saint Laurent at its two retail stores in this district, located at 3 East 57th Street,
New York, New York, 10022, and at 80 Greene Street, New York, New York, 10012.
JURISDICTION AND VENUE
20. This action arises under the Trademark and Patent Laws of the United States, 15
U.S.C. §§ 1051 et seq. and 35 U.S.C. §§ 1 et seq., and seeks a specific remedy based upon the
laws authorizing actions for declaratory judgment in the courts of the United States, 28 U.S.C. §§
2201 and 2202. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
§ 2201, 28 U.S.C. §§ 1331 and 1338(a). This Court has supplemental jurisdiction over the state
law claims pursuant to 28 U.S.C. § 1367(a).
21. The Court has personal jurisdiction over all Defendants, because they each
distribute, promote and/or sell women’s footwear that is the subject of this action in retail stores
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located within this District and via one or more interactive websites that are accessible and sell
directly to consumers within this District.
22. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(1) and (2)
because Plaintiff resides in this judicial district and/or because a substantial part of the events or
acts giving rise to Plaintiff’s claims occurred in this judicial district.
23. Venue is also proper in this judicial district pursuant to 28 U.S.C. § 1391(c)(3)
because Defendants are not resident in the United States.
FACTS
24. Madden provides on-trend footwear, handbags and accessories to women and
men. Madden products are sold worldwide in over 80 countries. Madden was founded in 1990
by its founder Steve Madden and prides itself as a company with vision that is on the cutting
edge of trends. This continued vision has led Madden to become a true lifestyle and destination
brand for footwear, handbags and accessories.
Defendants’ Design Patent
25. Upon information and belief, Defendant YSL is the owner of the ’187 Patent,
filed on September 26, 2008 and issued on January 5, 2010.
26. The ’187 Patent claims protection over “the ornamental design for a shoe, as
shown and described” in the ’187 Patent.
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27. The claim in the ’187 Patent is limited to the precise figures drawn in the patent,
as shown in solid black in the patent and replicated below:
Fig. 7
Fig. I Fig. 2
Fig. 3 Fig.4 Fig. 6

Fig. 5
28. As shown in the above drawings, the ’187 Patent is directed toward high-heeled
platform shoes.
The New Patent Dispute Over Madden’s Flat Sicily Sandal
29. Madden began selling the flat Sicily sandal in the Spring of 2018:
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30. In contrast to the claimed design of the ’187 Patent, the Sicily sandal does not
have a platform sole, high heel, T-strap, ankle straps, or a buckle.
31. On information and belief, Defendants took notice of the existence of the Sicily
sandal in the marketplace. Defendants then launched an illegitimate campaign to thwart
Madden’s sales of this product by threatening to sue Madden and at least 13 of its customers for
infringement of the ’187 Patent.
32. Specifically, on July 27, 2018, counsel for Defendants sent a notice letter (the
“Notice Letter”) to Madden, claiming that the flat Sicily sandal infringes the ’187 Patent (as well
as Defendants’ trade dress rights, as discussed below). A true and correct copy of the Notice
Letter is attached as Exhibit B.
33. The Notice Letter attached a draft Complaint which counsel threatened to file if
Madden does not, inter alia, immediately cease its sales of the Sicily sandal. A true and correct
copy of the draft Complaint is attached to the Notice Letter in Exhibit B.
34. The draft Complaint asserted design patent infringement of the Sicily sandal in
view of the ’187 Patent.
35. Defendants’ assertion of the ’187 Patent against the Sicily sandal is frivolous and
made in bad faith. There is simply no way that an “an ordinary observer, familiar with the prior
art, would be deceived into thinking that the accused design was the same as the patented
design.” Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008). Only a
cursory look reveals the significant differences between the high-heeled platform shoe design of
the ’187 Patent and the flat sandal design of Madden’s Sicily sandal:
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Fig. 2
36. After receiving the Notice Letter, Madden engaged in good faith discussions in an
attempt to settle this dispute with Defendants, but the parties have not resolved their differences.
Madden subsequently learned that Defendants’ counsel had also written notice letters to at least
13 Madden customers, threatening to sue them for infringing the ’187 Patent if they do not
immediately cease their sales of the Sicily sandal. Specifically, upon information and belief,
Defendants sent notice letters to at least the following Madden customers who sell the Sicily
shoes: Dillard’s, DNA Footwear, DSW, Express, Jet, Shoes.com, Walmart, Lori’s Shoes, HG
Boutique, Shoebacca, Von Maur, and Zappos. A true and correct copy of one of these thirteen
letters is attached as Exhibit C.
37. Defendants’ threats against Madden’s customers have caused damage to Madden.
For example, some customers have ceased their sales of the Sicily sandal and have asked
Madden to take back their unsold inventory, presumably out of fear of being sued by Defendants.
38. Madden cannot tolerate Defendants’ intimidation of Madden’s customers, nor will
Madden allow Defendants to unfairly inhibit its success in the marketplace. Defendants’
baseless patent assertions have disrupted Madden’s sales of its Sicily sandal and its relationship
with its customers, necessitating the filing of this lawsuit.
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Defendants Also Asserted Trade Dress Infringement Against the Sicily Sandal
39. Seemingly recognizing that their assertion of the ’187 Patent against the flat Sicily
sandal would not withstand legal scrutiny, Defendants have also trumped up a baseless trade
dress infringement claim against Madden’s Sicily sandal. While Defendants’ letters to Madden’s
customers focused on the design patent, the letters did not include any specific allegations
regarding trade dress infringement.
40. The draft Complaint asserts that the Sicily sandal infringes the Alleged Flat
Tribute trade dress. The draft Complaint sent to Madden, however, did not come close to
defining a legally protectable trade dress.
41. The Tribute Flat Sandal has a toe bed strap design which includes an elliptical
central element (traced in red). The toe bed straps (traced in blue) are elliptical as well, with no
straight edges. The circular foot straps are held closely together by the circular central element
(red) and an additional strap crossing the toe bed.
42. Paragraph 31 of the draft Complaint defines the Alleged Flat Tribute trade dress
as follows:
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The TRIBUTE Flats trade dress is comprised of a substantially flat

sole containing a toe strap that contains the following elements,
namely:
• two U shaped pieces each attached to one side of the shoe so that the
rounded end is facing in towards the middle of the toe bed;
• a strap that bisects the U shaped straps and crosses the toe bed; and
• a circular strap element, either emanating from a t-strap or as a standalone
element, with the U-shaped pieces and the bisecting strap woven together
with the bisecting middle strap going under the circular strap element and
then over the ends of the two U-shaped pieces in the center of the circular
strap element to create an intricate pattern over the toe bed. (Hereinafter
the “TRIBUTE Flats Trade Dress”).
43. The draft Complaint does not define a legally protectable trade dress because, for
example, it failed to allege specific facts as to why the Alleged Flat Tribute trade dress is non-
functional, how the alleged trade dress has acquired distinctiveness through secondary meaning
and how there could be likelihood of confusion between the alleged trade dress and the design of
the Sicily sandal. A complaint lacking these elements would fail to survive a motion to dismiss.
See, e.g., Eliya, Inc. v. Steven Madden, Ltd., No. 15-1272, 2018 U.S. Dist. LEXIS 28726, at *6-
10 (E.D.N.Y. Feb. 22, 2018) (granting motion to dismiss where the complaint failed to plead
“specific facts” to support an argument of non-functionality; and contained no written
description as to how there could be a likelihood of confusion).
44. With respect to functionality, for example, the straps in the toe bed that comprise
the Alleged Flat Tribute trade dress serve a critical function, namely holding the foot in place
when the Tribute sandal is worn.
45. With respect to secondary meaning, as a product configuration, Defendants’
Alleged Flat Tribute trade dress cannot be inherently distinctive and Defendants have the burden
to show that their trade dress has acquired distinctiveness through secondary meaning—that in
the minds of the public, the primary significance of the trade dress is to identify the source of the
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product rather than the product itself. For example, Paragraph 37 of the draft Complaint includes
statements that “the TRIBUTE Sandals are among the world’s most famous and widely
recognized” and that “[c]onsumers, potential consumers and other members of the public and
fashion industry recognize that products bearing the TRIBUTE Heels Trade Dress and the
TRIBUTE Flats Trade Dress originate exclusively with Plaintiffs.” (Draft Compl. ¶ 37.) These
statements are no more than ipse dixit and fail to meet Defendants’ burden to establish inherent
distinctiveness.
46. With respect to likelihood of confusion, the draft Complaint fails to allege
specific facts as to how there could be likelihood of confusion between the Alleged Flat Tribute
trade dress and Madden’s Sicily sandal. And, Madden is unaware of any such facts.
47. A comparison of the Tribute Flat Sandal to the Sicily sandal illustrates why there
would be no likelihood of confusion. The Sicily sandal has a toe bed design with an angled
design, as opposed to the rounded design of the Tribute Flat Sandal:
48. In contrast to the Tribute Flat Sandal which has rounded edges and an elliptical
central element, the toe bed straps of the Sicily sandal consist of interwoven straps that have
straight, squared off edges. For example, the toe bed straps include a distinctive square-shaped
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central element (outlined with red dashes). The toe bed straps have substantially parallel,
straight edges (partially traced in blue) that extend in the longitudinal direction along the center
of the toe bed, as well as straight edges (traced in green) that are angled away from the parallel
edges so as to extend towards the sides of the toe bed. The toe bed straps are held together by
the square-shaped element (red) and an additional loop strap, leaving a substantial gap between
the parallel edges (blue). As a result, the straps of the Sicily shoes have an overall appearance as
being loosely woven together.
49. In contrast to the Sicily shoe, there is no gap between the edges of the elliptical
toe bed straps (blue). As a result, the straps of the Tribute sandal have an overall appearance of
being tightly knit together.
50. Like its assertion of the ’187 Patent, Defendants’ trade dress assertion is also
without merit.
The Prior Dispute Over Madden’s High Heeled Kananda Shoe
51. This is not the first time the parties have had a dispute regarding intellectual
property rights and footwear.
52. In 2016, Madden was selling a high-heeled platform shoe, the Kananda shoe. The
Kananda shoe is represented below:
53. On June 17, 2016, Defendants sent a letter to Madden, alleging that Madden’s
Kananda shoe infringed the ’187 Patent.
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54. On information and belief, Defendants manufacture and sell a high-heeled
platform sandal, the “Tribute Sandal”, which embodies the design of the ’187 Patent:
55. Defendants’ letters to Madden also accused Madden’s Kananda shoe of infringing
trademark rights to this high-heeled Tribute Sandal.
56. In letters sent over the course of 2016, Defendants demanded that Madden
discontinue the Kananda shoe.
57. Madden, pursuant to a business decision, agreed to discontinue the Kananda shoe
and Defendants agreed to drop their assertions against the Kananda shoe.
58. Thereafter, pursuant to the parties’ agreement, Madden ceased selling the
Kananda shoe, and Defendants dropped their assertions against the Kananda shoe.
Defendants Have Threatened to Sue Madden Over the Kananda Shoe,

In Breach of the Parties’ Prior Agreement
59. In the draft Complaint, Defendants have accused the discontinued Kananda shoe
of infringing the ’187 Patent and its alleged trade dress rights.
60. Strangely, the draft Complaint includes a reference to their June 17, 2016 notice
letter to Madden regarding the alleged infringement of the Kananda shoe (Draft Compl. ¶ 73),
but Defendants completely ignore the agreement between the parties that resulted from
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discussions that followed. This is because Defendants have no explanation for their breach of
the parties’ agreement for the Kananda shoe.
61. Defendants’ renewed assertion of the ’187 Patent and their alleged trade dress
rights against the Kananda shoe is a bad faith, blatant violation of the parties’ prior agreement.
Madden has not sold the Kananda shoe since early 2017, just as it promised Defendants. This
promise was made in exchange for Defendants’ promise that they would not assert the ’187
Patent and their trade dress rights against the Kananda shoe.
62. Defendants are attempting to shoehorn the ’187 Patent into the Sicily sandal since
it does not have any patents that match the design of this flat sandal. In this regard, Defendants
are attempting to equate the flat Sicily shoe design with the high-heeled platform shoe design
claimed in the ’187 Patent. Defendants are thus using this frivolous assertion as a springboard
for threatening to sue Madden with respect to the Kananda shoe, despite Defendants’ promises
that they would never do so.
63. The flat Sicily sandal and the high-heeled Kananda shoe are so different that
Madden’s subsequent sale of the Sicily sandal cannot by any reasonable measure constitute a
breach of the parties’ prior agreement and consequently, cannot justify Defendants’ renewed
allegations against the Kananda shoe. Thus, as discussed in Count VII, Defendants are in blatant
breach of the parties’ prior settlement of their dispute over the Kananda shoe.
64. Finally, the draft Complaint makes design patent and trade dress allegations
against an “Infringing Sneaker.” However, to date, both Defendants and Madden have been
unable to identify any sales of this sneaker in the United States. Madden has requested
additional information from Defendants’ counsel to assist it in identifying this sandal, but to date,
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Defendants have not provided this information. As such, to the extent that there may be a
dispute over the so-called “Infringing Sneaker”, such dispute is not yet ripe for adjudication.
65. Defendants’ allegations of patent and trademark infringement against Madden and
Madden’s customers, which Madden denies, have created a substantial, immediate and real
controversy between the parties as to the enforceability of Defendants’ claimed intellectual
property rights and non-infringement of the ’187 Patent and Defendants’ Alleged Flat Tribute
trade dress. A valid and justiciable case or controversy thus has arisen and exists between
Madden and Defendants within the meaning of 28 U.S.C. § 2201. A judicial determination is
necessary to determine Defendants’ patent and trade dress rights and the issue of non-
infringement. A judgment would serve a useful purpose in settling the legal issues, and a
judgment would resolve the controversy and offer relief from uncertainty.
COUNT I
(Declaration That Madden Does Not Infringe the ’187 Patent)
66. Plaintiff incorporates by reference as if fully set forth herein the averments
contained within the preceding paragraphs 1 through 65, inclusive.
67. To establish design patent infringement, Defendants have the burden to prove that
“an ordinary observer, familiar with the prior art, would be deceived into thinking that the
accused design was the same as the patented design.” Egyptian Goddess, Inc. v. Swisa, Inc., 543
F.3d 665, 672 (Fed. Cir. 2008).
68. As shown in the below side-by-side comparison, Madden’s Sicily flat sandal
design is so distinct from the high-heeled platform shoe design claimed in the ’187 Patent such
that no ordinary observer, even unaware of prior high-heeled platform shoe designs, could
possibly be deceived into thinking that the Sicily flat sandal design was the same as the high-
heeled platform shoe design in the ’187 Patent:
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Fig. 2
69. In view of the foregoing, Madden seeks a declaratory judgment that the Madden
Sicily sandal does not infringe the ’187 Patent.
COUNT II
(Declaration That Defendants Lacks Protectable, Valid Trade Dress
Rights In the Tribute Flat Sandal Design)
71. Defendants allege in their Notice Letter that Defendants have trade dress rights in
the Tribute Flat Sandal.
72. Defendants do not have a federal trademark registration for their claimed trade
dress. Defendants have the burden: (1) to identify their unregistered trade dress with the
requisite particularity; (2) to show that their unregistered trade dress is distinctive, in that it is
recognized by consumers as indicating the source of Defendants’ products; and (3) to show that
their unregistered trade dress is non-functional. Defendants cannot meet their burden to show a
protectable trade dress.
73. First, as a product configuration, Defendants’ Alleged Flat Tribute trade dress
cannot be inherently distinctive. Defendants have the burden to show that their trade dress has
acquired distinctiveness through secondary meaning—that in the minds of the public, the
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primary significance of the trade dress is to identify the source of the product rather than the
product itself. Defendants’ statements in the draft Complaint that “the TRIBUTE Sandals are
among the world’s most famous and widely recognized” and that “[c]onsumers, potential
consumers and other members of the public and fashion industry recognize that products bearing
the TRIBUTE Heels Trade Dress and the TRIBUTE Flats Trade Dress originate exclusively with
Plaintiffs” do not meet their burden. (Draft Compl. ¶ 37.) Defendants have failed to provide any
proof beyond ipse dixit to prove inherent distinctiveness.
74. Second, Defendants cannot show that its Alleged Flat Tribute trade dress is non-
functional, nor have Defendants ever even attempted to make this critical showing. The
requirement of non-functionality “prevents trademark law, which seeks to promote competition
by protecting a firm’s reputation, from instead inhibiting legitimate competition by allowing a
producer to control a useful product feature.” Qualitex Co. v. Jacobson Prods. Co., Inc., 514
U.S. 159, 164 (1995). Defendants’ alleged trade dress is functional because (1) it is essential to
the use or purpose of the product; (2) it affects the cost or quality of the product; and (3) it would
put competitors at a significant, non-reputation-related disadvantage. For example, (1) the
substantially flat sole serves the utilitarian purpose of protecting the foot from the ground; and
(2) the toe strap serves the utilitarian purpose of keeping the sandal secured on the foot.
Moreover, protecting these basic features, including substantially flat soles as well as toe bed
straps for sandals, would put Madden and third parties in the footwear industry at a significant,
non-reputation-related design disadvantage.
75. In view of the foregoing, Madden seeks a declaratory judgment that Defendants
lacks trade dress rights in the design of their flat sandals because their claimed trade dress lacks
specificity, is not distinctive and/or is functional.
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COUNT III
(Declaration that Madden Does Not Infringe
Defendants’ Purported Trade Dress Rights in the Tribute Flat Sandal Design)
77. To establish trade dress infringement, Defendants have the burden to prove: (1)
the existence of valid trade dress; and (2) that consumers are likely to be confused, mistaken or
deceived that Madden’s products originate from or are sponsored or endorsed by Defendants. 15
U.S.C. § 1125(a).
78. For the reasons discussed above, Defendants have no protectable or valid trade
dress rights.
79. Nor can there be any likelihood of consumer confusion between Defendants’
Tribute Flat Sandal and Madden’s Sicily sandals. Of the four elements of Defendants’ Alleged
Flat Tribute trade dress, two elements, namely the “substantially flat sole containing a toe strap”
and the “strap that bisects the U shaped straps and crosses the toe bed” are present in every flat
sandal in the marketplace and a consumer will not be confused as to the source of the sandals
based on these elements alone.
80. The Sicily sandal does not include the other two elements attributable to the
Alleged Flat Tribute trade dress. The third element of the alleged Tribute Flat Sandal trade dress
includes “two U shaped pieces each attached to one side of the shoe so that the rounded end is
facing towards the middle of the bed.” In other words, the Tribute Flat Sandal has elliptical toe
bed straps (traced in blue below) facing each other. In contrast, the Madden sandal has toe bed
straps with parallel straight edges (traced in blue) that extend in the longitudinal direction as seen
below that make angled turns (traced in green) toward the side of the toe bed:
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Defendants TRIBUTE Toe Bed Madden Sicily Toe Bed
81. A consumer viewing the elliptical toe bed straps, versus the parallel straight edges
with angled edges turning towards the sides of the toe bed, and taking into account the gap in the
parallel straight edges of the Sicily shoe which are lacking in the design of the Tribute Flat
Sandal would understand the shoes as coming from different sources.
82. The fourth and last element of the alleged Tribute Flat Sandal trade dress includes
a “circular strap element”. The Sicily shoe has a square element, not a circular element:
Defendants TRIBUTE Toe Bed Madden Sicily Toe Bed
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83. A consumer viewing the different shaped element in the center of the toe bed
would understand the shoes with a square element as coming from a different source than those
with a circular element. A consumer would also readily recognize that the sandals originate from
a different source by (1) the nature of the shape of each foot bed, with the Sicily sandal foot bed
being more rectangular in nature than the more curved foot bed of the Tribute Flat Sandal; and
(2) the clear labelling on each foot bed indicating the sandals come from a different source:
- ~...
,~•"l_
•• r=•-•=-
•·• -
84. Further, Madden and Defendants cater to very different markets. While
Defendants are a high-end, expensive, luxury brand, Steve Madden is a mid-level, much more
affordable brand. Consequently, to the extent the consumer groups overlap, the consumers
would be sophisticated enough to recognize the products are coming from different sources
based on the price point of the goods.
85. Accordingly, there can be no likelihood of confusion.
86. The Court thus should declare that Madden has not infringed Defendants’ alleged
trade dress rights because Defendants lacks trade dress rights and there is no likelihood of
consumer confusion.
COUNT IV
(Tortious Interference With Contract)
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88. Madden has entered into a contractual relationship with its customers, including
Dillard’s, DNA Footwear, DSW, Express, Jet, Shoes.com, Walmart, Lori’s Shoes, HG Boutique,
Shoebacca, Von Maur, and Zappos to sell the Madden Sicily sandal to consumers.
89. Defendants are and were aware of Madden’s contractual relationship with its
customers and Madden’s expectation of continued performance under that agreement.
90. Defendants have unjustifiably, and with malice, interfered with Madden’s
relationship with its customers who sell the Sicily sandal by, among other things, sending notice
letters to the customers with a frivolous charge of alleged design infringement of Madden’s flat
Sicily sandal in view of the ’187 Patent directed towards a high-heeled platform shoe.
91. These letters have caused at least some of Madden’s customers to immediately
stop the sale of the Madden Sicily sandals and demand that Madden take back the inventory. As
a result of Defendants’ wrongful conduct, Madden has been damaged.
92. The actions of Defendants are willful and malicious and without regard to
Madden’s rights.
COUNT V
(Intentional Interference with Prospective Economic Advantage)
94. As stated above, Madden has entered business relationships with its customers,
including Dillard’s, DNA Footwear, DSW, Express, Jet, Shoes.com, Walmart, Lori’s Shoes, HG
Boutique, Shoebacca, Von Maur, and Zappos to sell the Madden Sicily sandal to consumers.
95. Defendants sent notice letters to these customers with a frivolous charge of
alleged design infringement of Madden’s flat Sicily sandal in view of the ’187 Patent directed
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towards a high-heeled platform shoe. By including this allegation in the notice letter, Defendants
unfairly represented the content and scope of the ’187 Patent.
96. The unfair representations were made by Defendants for the sole purpose of
harming Madden’s relationship with these customers and to discourage those customers from
selling Madden’s Sicily sandal. Further, these customers may be more hesitant in the future to
sell Madden’s shoes in view of having received these notice letters.
97. The unfair representations interfered with the business relationship between
Madden and its customers and injured Madden’s relationship with those customers, including
customers pulling the Sicily sandal from their shelves and returning remaining inventory to
Madden.
COUNT VI
(Deceptive and Unfair Trade Practices)
99. Madden alleges that Defendants have and are currently engaged in deceptive and
unfair trade practices under § 349 of the N.Y. General Business Law.
100. As described above, Defendants have engaged in unfair trade practices by falsely
alleging to Madden’s customers design patent infringement of the Madden Sicily sandal in view
of the ’187 Patent. These allegations were made in order to intentionally interfere with
Madden’s sales of the Sicily sandal.
101. Defendants have engaged in false and misleading representations and omissions
of material fact (including that the design patent is directed toward a high-heeled platform shoe
and not a flat-soled sandal) to Madden’s customers and have engaged in deceptive conduct
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designed to intentionally interfere with Madden’s market with its customers and sales of at least
its Sicily sandal.
102. Defendants’ false and misleading representations and deceptive conduct are
material in that they have caused and are likely to cause prospective consumers of Madden’s
sandals to be forced to purchase Defendants’ sandals based on the absence of Madden’s sandals
being available for sale at the Madden customers that have removed the Madden Sicily sandal
from sale.
103. Defendants have disparaged the goods and services and business reputation of
Madden through false and misleading representations of material fact by falsely claiming design
patent infringement of the ’187 Patent in violation of New York’s Deceptive and Unfair Trade
Practices Act, Sections § 349 of the N.Y. General Business Law.
104. This materially deceptive conduct affected the consumer’s choice of available
sandals in the market, taking a lesser priced sandal out of the market in comparison to
Defendants’ higher-priced sandal.
105. Defendants’ acts are both willful and malicious.
106. As a direct and proximate result of such misleading and deceptive conduct,
Madden as well as consumers, have sustained and are likely to continue to sustain damages in
terms of loss of reputation, customers, and sales in an amount not yet subject to determination.
COUNT VII
(Breach of Contract)
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684953.1
108. In 2017, Madden and Defendants reached an agreement whereby in exchange for
Defendants dropping their assertions against the Madden Kananda shoe, Madden agreed to
discontinue the Kananda shoe.
109. In accordance with that promise, Madden discontinued the Kananda shoe in 2017.
110. Defendants’ have failed to perform on their portion of the agreement. Defendants
have threatened to sue Madden for infringement of the ’187 Patent and their alleged trade dress
rights with respect to the discontinued Kananda shoe.
111. Defendants’ failure to perform their part of the agreement constitutes a breach of
a contract.
112. Madden has been damaged by this failure to perform in the nature of sales it could
have made of the Kananda shoe had it not discontinued the shoe in response to Defendants’
allegations against the Kananda shoe in 2016.
COUNT VIII
(Promissory Estoppel)
114. In exchange for Defendants dropping their assertions against the Madden
Kananda shoe, Madden made a clear and unambiguous promise to discontinue the Kananda
shoe.
115. In accordance with that promise, Madden ceased manufacture and sale of the
Kananda shoe in 2017.
116. Defendants have broken their promise. They have threatened to sue Madden for
infringement of the ’187 Patent and their alleged trade dress rights with respect to the
discontinued Kananda shoes.
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684953.1
117. Madden has been injured by the sales it could have made of the Kananda shoe had
it not discontinued the shoe in view of Defendants’ allegations against the Kananda shoe in 2016.
118. Defendants received the benefit of the bargain of this agreement, namely, Madden
ceased its manufacture and sale of the Kananda shoe long ago. Defendants must be estopped
from breaking their promise by, inter alia, asserting patent and trade dress infringement claims
against the discontinued Kananda shoe.
COUNT IX
(Equitable Estoppel)
120. Defendants told Madden they would drop their assertions with respect to the
Kananda shoe if Madden would agree to discontinue the shoe. Defendants made this proposal
with the intent that Madden would act upon it and discontinue the Kananda shoe.
121. In reliance on Defendants’ representation, Madden discontinued the Kananda
shoe in 2017.
122. Defendants’ conduct amounted to a false representation because unbeknownst to
Madden, Defendants knew that they would renew their assertion against the Kananda shoe, even
though that shoe is no longer sold.
123. By threatening to sue Madden for infringement of the ’187 Patent and their
alleged trade dress rights with respect to the discontinued Kananda shoes, Madden has been
prejudiced by this change in its position.
124. Madden has been injured by the sales it could have made of the Kananda shoe had
it not discontinued the shoe in view of Defendants’ allegations against the Kananda shoe in 2016.
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684953.1
Further Madden must now defend itself against an allegation that it thought had been put to rest
with its agreement to discontinue the Kananda shoe.
125. Defendants must be estopped from making patent and trade dress infringement
claims against the discontinued Kananda shoe in view of their conduct described above.
WHEREFORE, Plaintiff Madden respectfully requests that this Court enter judgment in
favor of Plaintiff Madden and against Defendants, and issue an Order:
A. Declaring that Madden has been injured by Defendants’ allegations in their
Notice Letter and draft Complaint against the Kananda shoe, despite Defendants’ promise to
drop their assertion;
B. Declaring that the Sicily sandal does not infringed the ’187 Patent;
C. Declaring that Defendants lacks trade dress rights in the design of its Tribute Flat
Sandal;
D. Declaring that Madden has not infringed any alleged trade dress rights Defendants
claim in the design of its Tribute Flat Sandal;
E. A permanent injunction enjoining Defendants from asserting to Madden and its
customers that Madden’s sales of the Sicily sandal constitute infringement of Defendants’ patent
rights, including the ’187 Patent;
F. A permanent injunction enjoining Defendants from pursuing patent and trade
dress infringement claims against Madden’s discontinued Kananda sandal;
G. Defendants be required to pay Madden Defendants’ profits and any costs of this
action and any damages which Madden sustained as a result of Defendants’ breach of its
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684953.1
promise, breach of contract, willful deceptive acts and unfair trade practices, tortious interference
with contract and intentional interference with prospective economic advantage; and
H. Plaintiff be granted such other and further relief as the Court may deem just and
proper.
Plaintiff demands a jury trial.
Dated: New York, NY Respectfully submitted,

August 20, 2018
AMSTER, ROTHSTEIN & EBENSTEIN LLP
Attorneys for Plaintiff
90 Park Avenue
New York, NY 10016
(212) 336-8000 (main)
(212) 336-8001 (facsimile)
By /s/Douglas A. Miro
Douglas A. Miro
Brian A. Comack
Benjamin Charkow
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684953.1
Case 1:18-cv-07592 Document 1-1 Filed 08/20/18 Page 1 of 6
Exhibit A
I 1111111111111111
111111111111111
IIIII1111111111
11111
11111
111111111111111111
US00D607187S
c12) United States Design Patent (10) Patent No.: US D607,187 S

Hermann (45) Date of Patent: ** Jan.5,2010
(54) SHOE D92,238 S * 5/1934 Elkin .......................... D2/933
(75) Inventor: Valerie Hermann, Neuilly sur Seine * cited by examiner

(FR) Primary Examiner-Dominic Simone
(74) Attorney, Agent, or Firm----Collen IP; Donald J Ranft
(73) Assignee: Yves Saint Laurent, Paris (FR)
(57) CLAIM
(**) Term: 14 Years
The ornamental design for a shoe, as shown and described.
(21) Appl. No.: 29/325,173
DESCRIPTION
(22) Filed: Sep.26,2008
FIG. 1 is a right side view of my new, original and ornamental
( 51) LOC (9) Cl. . ... ... ... ... .. ... ... ... ... ... .. ... ... ... ... .. ... . 02-99 design for a shoe;
(52) U.S. Cl. ........................... D2/930; D21933; D21925 FIG. 2 is a left side view thereof;
( 58) Field of Classification Search . ... ... ... ... .. ... D2/896, FIG. 3 is a top view thereof;
D2/916-918, 925-942, 946,969,971; 36/1,
36/83, 8.3, 45-58 FIG. 4 is a bottom view thereof;
See application file for complete search history. FIG. 5 is a front view thereof;
(56) References Cited FIG. 6 is a rear view thereof; and,

FIG. 7 is a left front perspective view thereof.
U.S. PATENT DOCUMENTS
D91,894 S * 4/1934 Miller ......................... D2/933 1 Claim, 4 Drawing Sheets
U.S. Patent Jan.5,2010 Sheet 1 of 4 US D607,187 S
Fig. 1
Fig. 2
Fig. 3
Fig. 4
Fig. 5
Fig. 6
Fig. 7
Exhibit B
COLLEN
INTELLECTUAL PROPERTY LAW
July 27, 2018

BY FEDERAL EXPRESS
Steve Madden, Ltd.
52-16 Barnett Avenue
Long Island City, New York 11104
Attention: Mr. Michael Paradise, EVP and General Counsel
Re: Intellectual Property Infringement of SAINT LAURENT

TRIBUTE and STAR footwear designs by Steve Madden
Patent No.: D607,187
D762,359
Our Ref No.: X705
Dear Mr. Paradise:
This firm is intellectual property counsel to Luxury Goods International ("LGI") and
Yves Saint Laurent ("YSL"). LGI and YSL are the holders of all U.S. title and interest in
intellectual property rights held by the Yves Saint Laurent Fashion House.
Our clients are the owners of all right, title and interest in various styles of the
SAINT LAURENT TRIBUTE Sandal and the SAINT LAURENT STAR Sneaker. Steve
Madden is certainly quite familiar with the TRIBUTE Sandal, as YSL has had multiple
disputes with Steve Madden concerning this design - the last of which, involving your
company's Wild Pair KISME Sandal and Steve Madden KAN ANDA Sandal, culminated
last year with the assurances of your attorney, Doug Miro, that Steve Madden was
discontinuing the infringing products in question.
Alarmingly, we have seen that Steve Madden is offering for sale yet another shoe
(hereinafter, the "Infringing Flat Sandal") which replicates our clients' SAINT LAURENT
TRIBUTE Sandal.
PAPEACUT
~ PROTO COL.:."
,on119Al.. , .. ,~ , n , .v ... 11'1• 1 H• CU<•
Collen IP Intellectual Property Law, P.C., The Holyoke- Manhattan Building

80 South Highland Avenue, Ossining-on-Hudson, Westchester County, New York 10562, U.S.A.
Tel 914-941 - 5668 Fax 914-941-6091 www .collenip.com
Mr. Michael Paradise, EVP and General Counsel
Steve Madden, Ltd.
July 27, 2018
Page 2 of 4 - X705
The Infringing Footwear, identified as the "Sicily" sandal, is a virtually identical

replica of the TRIBUTE flat sandal and therefore misappropriates the original designs
created by our clients. A side-by-side comparison of these two designs is reflected below:
TRIBUTE Flat Sandal Infringing Flat Sandal:
Given Steve Madden's prior knowledge of our clients' rights in the TRIBUTE Sandal
and the parties' prior disputes relevant to the TRIBUTE Sandal design, Steve Madden's sale
of the Infringing Flat Sandal is unquestionably an intentional and willful violation of our
clients' patent and trademark rights in this design. The repeated copying of this famous
and protected design, despite Madden's prior notice and knowledge of our clients' rights,
evidences willful infringement.
Furthermore, it has come to our attention that Steve Madden is offering for sale a
sneaker (hereinafter, the "Infringing Sneaker") which replicates our clients' SAINT
Steve Madden, Ltd.
July 27, 2018
Page 3 of 4 - X705
LAURENT STAR Sneaker. The STAR Sneakers are a commercial embodiment of U.S.
Design Patent No. D762,359 (the "359 Patent") and is also a distinctive, non-functional trade
dress and serves to distinguish our clients' goods from those of other manufacturers.
A side-by-side comparison of the STAR Sneaker and the Infringing Sneaker is

reproduced below for your reference:
STAR Sneaker Infringing Sneaker:
/'
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1--.
....
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l-
-J..
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.
..... ....... .
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Steve Madden's advertising, sale and offering for sale of the Infringing Flat Sandal
and the Infringing Sneaker violates our clients' rights under the Lanham Act, the Patent Act
and under state and common law.
To promptly and fully dispose of this matter and to avoid further damage to our
clients' valuable intellectual property, we demand that Madden immediately cease and
desist producing, selling or offering for sale the infringing products identified above, or any
other shoes which infringe upon the design of our clients' TRIBUTE Sandal or STAR
Sneaker.
Steve Madden, Ltd.
July 27, 2018
Page 4 of 4 - X705
Further, we demand that your company:
• provide us with a full accounting, at wholesale and retail, of its sales of the
Wild Pair KISME Sandal, Steve Madden KANANDA Sandal, Steve Madden
SICILY Sandal, and of the Infringing Sneaker; and
• agree to be permanently enjoined from producing, selling or offering for sale
the infringing products identified above, or any other shoes which infringe
upon the design of our client's TRIBUTE Sandal or STAR Sneaker; and
• provide us with a list of all of your retail customers which have sold or are
selling these infringing products; and
• issue an immediate recall of the infringing products with all of your retail
customers.
Thereafter, we can determine whatever other remedies are appropriate to remedy

and compensate for these infringements. Our clients are fully determined to fully enforce
and protect all of their rights, and will no longer accept the continued blatant infringement
of their intellectual property rights by Steve Madden.
Unless we receive appropriate responses to all of the above assurances from you by
the close of business on August 3, 2018, our client has authorized us to immediately file the
enclosed complaint with the Southern District of New York.
Our client reserves all rights.
Very truly yours,

COLLEN
JMC/MN:pm
Enclosure: Complaint
p:\X\X7\X705_WORD ltr to Steve Madden as senl_ 180n7 .docx
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
YVES SAINT LAURENT and LUXURY

GOODS INTERNATIONAL
(LGI) S.A.,
CIVIL ACTION NO.
Plaintiff, JUDGE(S):
V.
STEVEN MADDEN, LTD. and

STEVEN MADDEN RETAIL, INC.,
Defendants.
COMPLAINT
Plaintiffs, Yves Saint Laurent S.A.S. and Luxury Goods International (LGI) S.A. allege
for their Complaint against Defendants Steve Madden, Ltd. and Steven Madden Retail, Inc.
(hereinafter "Defendants" or "Steve Madden") the following:
I. PARTIES
1. Plaintiff Yves Saint Laurent (hereinafter "Yves Saint Laurent") is a corporation
duly organized and existing by virtue of the laws of France and maintains its principal place of
business at 7, Avenue George V, 75008 Paris, France.
2. Plaintiff Luxury Goods International (LGI) S.A. (hereinafter, "LGI") is a
corporation duly organized and existing by virtue of the laws of Switzerland and maintains its
principal place of business at Via Industria 19 6814, Cadempino, Switzerland.
1
3. Upon information and belief, Defendant Steve Madden, Ltd. is a corporation duly
organized and existing by virtue of the laws of Delaware and maintains its principal place of
business at 52-16 Barnett Avenue, Long Island City, New York, 11104.
4. Defendant Steven Madden Retail Inc. is a corporation duly organized and existing
by virtue of the laws of New York. Defendant Steve Madden Retail Inc. maintains its principal
place of business at 52-16 Barnett Avenue, Long Island City, New York 11104, and owns and/or
operates retail store locations within this judicial district.
5. Upon information and belief, Defendants transact business in the United States
and within this Judicial District through Steve Madden shoe stores and through the Internet
website www.stevemadden.com.
6. Defendants transact substantial and not isolated business activities within and
throughout the State of New York, including the infringements alleged in this Complaint
II. JURISDICTION AND VENUE
7. Upon information and belief, Defendants have committed and are committing acts
of Trademark Infringement, Trademark Counterfeiting, Patent Infringement, False Designation
of Origin, and Unfair Competition, as hereinafter alleged, in this District, through manufacturing,
displaying, selling, importing, distributing, advertising and using Plaintiffs' trade dress and
patented materials.
8. This action is for Trademark Infringement, Trademark Counterfeiting, False
Designation of Origin and Unfair Competition arising under the Trademark Act of 1946, as
amended (15 U.S.C. § 1051 et seq.); Patent Infringement, arising under the Patent Act (35 U.S.C.
§§ 271, 281, and 283); Deceptive Trade Practices and Injury to Business Reputation, arising
2
under N.Y. General Business Law §§ 349 and 360-1; and unfair competition arising under the
Common Law of the State ofNew York.
9. This Court has original jurisdiction over the Trademark Infringement, Trademark
Counterfeiting, False Designation of Origin, Unfair Competition and Patent Infringement claims
pursuant to 28 U.S.C. §§ 1331, 1337 and 1338(a); 1338(b); 15 U.S.C. § 1125; and 35 U.S.C. §§
271, 281, and 23 8. This Court has supplemental jurisdiction over the state law claims pursuant to
28 U.S.C. § 1367(a).
10. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(l) and (2)
because Defendants reside in this Judicial District and/or because a substantial part of the events
or acts giving rise to Plaintiffs' claims occurred in this Judicial District.
III. FACTS COMMON TO ALL CLAIMS
A. Plaintiffs' Iconic TRIBUTE Sandals
11. Plaintiff Yves Saint Laurent operates the Yves Saint Laurent ("YSL") fashion
house.
12. The YSL fashion house and YSL brand were founded in 1961 by designer Yves
Saint Laurent and his patron Pierre Berge. The YSL fashion house is a luxury fashion house
known for designing men's and women's ready-to-wear clothing and shoes, as well as
accessories such as handbags, jewelry, and eyewear, among other goods and services.
13. The YSL fashion house is one of the world's leading fashion houses and is known
throughout the world for innovative and trend-setting ready-to-wear clothing, shoes and fashion
accessories. The YSL fashion house's designs are among the most sought-after in the fashion
industry. For over fifty years, the YSL fashion house has pioneered fashion with groundbreaking
3
and iconic designs, which are routinely showcased by top celebrities and style icons. This
tradition continues strongly into the present day with the YSL fashion house's association with
celebrities such as Kate Moss, Zoe Kravitz, Charlotte Gainsbourg, Travis Scott, Timothee
Chalamet, and many others.
14. Plaintiff LGI is the owner of the entire right, title and interest in numerous U.S.
federally registered trademarks for the marks YSL, YVES SAINT LAURENT, SAINT
LAURENT, SAINT LAURENT PARIS, and RIVE GAUCHE, all of which are famous, valid,
subsisting, incontestable and un-cancelled trademark registrations. These marks are collectively
referred to as the "YSL Marks".
15. Plaintiffs apply the YSL Marks to their products offered for sale in the U.S. and
use the YSL Marks in relation to services offered in the U.S.
16. All products bearing YSL Marks are identified and recognized as being
exclusively from Plaintiffs by virtue of the use of these marks.
17. The YSL Marks are featured prominently in advertisements that regularly appear
in nationally-circulating magazines and seen by hundreds of millions of people.
18. In addition to Plaintiffs' own advertising bearing the YSL Marks, the YSL Marks
have garnered and continue to reap significant unsolicited media coverage in the United States.
Products bearing the YSL Marks have been featured in various U.S. publications, including
Vogue, Vanity Fair, Elle, Women's Wear Daily, GQ Magazine, the New York Times, T
Magazine, WSJ Magazine, Interview, New York Magazine, Harper's BAZAAR, V, V Man, and
W Magazine, among others.
19. Clothing designs bearing the YSL Marks are featured in fashion editorials and are
often credited with forecasting the upcoming seasons for women's ready-to-wear apparel. One of
4
the well-known designs of the YSL brand is a shoe design used in connection with its iconic
TRIBUTE Sandals.
20. The TRIBUTE Sandals became an instant sensation, drawing wide acclaim
among fashion editors, celebrities and consumers.
21. Since their debut, the TRIBUTE Sandals have been offered for sale in various
different heel and platform heights, materials and colors, however, the unique design of the
TRIBUTE Sandals remains consistent throughout these variations. The TRIBUTE Sandals are
offered in a number of styles, including but not limited to high-heeled sandals (the "TRIBUTE
Heels") and flat sandals (the "TRIBUTE Flats"). These styles all share significant design
similarities with one another, and in fact are highly related designs. Images of some of these
various iterations of the TRIBUTE Sandals are attached hereto as Exhibit A.
22. LGI first began selling the TRIBUTE Sandals in the United States in October
2007.
23. Since October 2007, LGI has continuously sold the TRIBUTE Sandals in the
Unites States. The TRIBUTE Sandals are available for purchase throughout the U.S. in
authorized retailers, in SAINT LAURENT boutiques, in Yves Saint Laurent outlets and on the
Internet through YSL's own website, www.ysl.com.
24. The TRIBUTE Sandals are a commercial embodiment of U.S. Design Patent No.
D607,187 (the "187 Patent") a copy of which is attached as Exhibit B, which covers a new,
original and ornamental design for a shoe. Yves Saint Laurent owns all right, title and interest in
and to the '187 Patent.
25. In addition, the design of the TRIBUTE Sandals serves to distinguish Plaintiffs'
goods from those of other manufacturers, identifying a distinctive, non-functional trade dress.
5
26. The TRIBUTE Sandals, as a result of their distinctive design are easily
recognized by consumers as originating from Plaintiffs.
27. The TRIBUTE Heels trade dress is comprised of the combination of various
elements, including:
• a platform sole at the toe which is beveled underneath the toe bed and slopes inward at an
angle until meeting the sole which extends outward at an alternate angle;
• a stiletto heel;
• a toe strap comprised of two U shaped pieces each attached to one side of the shoe so that
the rounded end is facing in towards the middle of the toe bed;
• a strap that bisects the U shaped straps and crosses the toe bed;
• a t-strap that extends from the ankle to the toe bed, and ends in a circular shape; and
• the circular shape which emanates from the t-strap, the U-shaped pieces and the bisecting
strap are all woven together with the bisecting middle strap going under the circular
shape and then over the ends of the two U-shaped pieces in the center of the circular
shape to create an intricate pattern over the toe bed; and
• the ankle strap is formed by two straps which are intertwined at both sides of the ankle
and then diverge, one to towards the heel and the other around the front of the ankle and
which connects to the T-strap (hereinafter "TRIBUTE Heels Trade Dress").
28. The combination, arrangement and articulation of the ornamental elements of the
TRIBUTE Heels Trade Dress make the TRIBUTE Heels Trade Dress distinctive and
immediately identifiable to consumers.
6
29. LGI is the owner of the entire right, title, and interest in the TRIBUTE Heels
Trade Dress.
30. In addition, the TRIBUTE Flats trade dress is a distinctive, non-functional trade
dress that identifies Plaintiffs as the source of any footwear bearing this distinctive design and
serves to distinguish Plaintiffs' goods from those of other manufacturers.
31. The TRIBUTE Flats are distinctively designed and easily recognized by
consumers as originating from Plaintiffs. The TRIBUTE Flats trade dress is comprised of a
substantially flat sole containing a toe strap that contains the following elements, namely:
• two U shaped pieces each attached to one side of the shoe so that the rounded end is
facing in towards the middle of the toe bed;
• a circular strap element, either emanating from a t-strap or as a standalone element, with
the U-shaped pieces and the bisecting strap woven together with the bisecting middle
strap going under the circular strap element and then over the ends of the two U-shaped
pieces in the center of the circular strap element to create an intricate pattern over the toe
bed. (Hereinafter the "TRIBUTE Flats Trade Dress")
32. The combination, arrangement and articulation of the ornamental elements of the
TRIBUTE Flats Trade Dress make the TRIBUTE Flats Trade Dress distinctive and immediately
identifiable to consumers.
33. The TRIBUTE Flats Trade Dress and the TRIBUTE Heels Trade Dress are highly
related designs; with only a difference in heel type and the inclusion of the t-strap that extends
from the ankle to the toe bed in the TRIBUTE Heels Trade Dress differentiating the two designs.
7
34. LGI is the owner of the entire right, title, and interest in the TRIBUTE Flats Trade
Dress.
35. The TRIBUTE Sandal design, in its many iterations and embodiments, has
received press coverage since at least as early as October 2007, including over the Internet and
through various press media.
36. The TRIBUTE Heels Trade Dress and the TRIBUTE Flats Trade Dress are
famous in the U.S.
37. The TRIBUTE Sandals, in their various iterations and embodiments, have been
promoted, both in the United States and throughout the world, and the TRIBUTE Sandals are
among the world's most famous and widely recognized. Consumers, potential consumers and
other members of the public and fashion industry recognize that products bearing the TRIBUTE
Heels Trade Dress and the TRIBUTE Flats Trade Dress originate exclusively with Plaintiffs.
38. The TRIBUTE Sandals have received and continue to attract press coverage in the
United States. The TRIBUTE Sandals have been featured in various publications, including the
New York Times, Vogue magazine, Women's Wear Daily and the Washington Post.
39. The TRIBUTE Sandals have been widely photographed and referenced in popular
media, appearing in publications when carried by front page celebrities including Demi Lovato,
Olivia Palermo, Elizabeth Banks, Julia Roberts, Kelly Ripa, Jennifer Lopez, Juliana Moore and
many others.
40. The TRIBUTE Sandals are renowned for their high quality and are identified and
recognized as being exclusively from Plaintiffs by virtue of its use of the marks .
8
B. Plaintiff's Iconic California Sneakers
41. Plaintiff is also well known for their CALIFORNIA Sneakers.
42. LGI first began selling their CALIFORNIA Sneakers in the United States in
October 2014.
43. The Iconic CALIFORNIA Sneakers became an instant sensation, drawing wide
acclaim among fashion editors, celebrities and consumers.
44. Since their debut, the CALIFORNIA Sneakers have been offered for sale in
various different materials and colors; however, the unique design of the CALIFORNIA
Sneakers remains consistent throughout these variations. Images of some of these various
iterations of the CALIFORNIA Sneakers are attached hereto as Exhibit C.
45. Since October 2014, LGI has continuously sold the CALIFORNIA Sneakers in
the Unites States. The CALIFORNIA Sneakers are available for purchase throughout the U.S. in
authorized retailers, in SAINT LAURENT boutiques, in Yves Saint Laurent outlets and on the
Internet through YSL's own website, www.ysl.com.
46. The CALIFORNIA Sneakers are a commercial embodiment of U.S. Design
Patent No. D762,359 (the "359 Patent") a copy of which is attached as Exhibit D, which covers a
new, original and ornamental design for a shoe. Yves Saint Laurent owns all right, title and
interest in and to the '359 Patent.
4 7. In addition, the design of the CALIFORNIA Sneakers is a distinctive, non-
functional trade dress that identifies Plaintiffs as the source of the CALIFORNIA Sneakers and
serves to distinguish Plaintiffs' goods from those of other manufacturers.
48. The CALIFORNIA Sneakers are distinctively designed and easily recognized by
consumers as originating from Plaintiffs.
9
49. The CALIFORNIA Sneaker trade dress (the "CALIFORNIA Sneaker Trade
Dress") is comprised of the combination of various elements, including:
• a tennis-shoe profile; and
• a generally monochromatic shoe body and shoe sole; and
• A plurality of multiple five-pointed stars, positioned on the right and left side of the
shoe body.
50. It is the combination, arrangement and articulation of these ornamental elements
of the CALIFORNIA Sneaker Trade Dress, which make the CALIFORNIA Sneaker Trade Dress
distinctive and immediately identifiable to consumers.
51. LGI is the owner of the entire right, title, and interest in the CALIFORNIA
Sneaker Trade Dress.
52. The CALIFORNIA Sneaker design has received press coverage since at least as
early as February 2015, including over the Internet and through various press media.
53. The CALIFORNIA Sneaker Trade Dress is famous in the U.S.
54. The CALIFORNIA Sneaker has been promoted, both in the United States and
throughout the world, and is among the world's most famous and widely recognized. Consumers,
potential consumers and other members of the public and fashion industry recognize that
products bearing the CALIFORNIA Sneaker Trade Dress originate exclusively with Plaintiffs.
55. The CALIFORNIA Sneakers have received and continue to attract press coverage
in the United States. The CALIFORNIA Sneakers have been featured in various publications,
including Vogue, Harper's Bazaar, Women's Wear Daily, the Wall Street Journal, and the New
York Times.
10
56. The CALIFORNIA Sneakers have been widely photographed and referenced in
popular media, appearing in publications when carried by front page celebrities including Taylor
Swift, Reese Witherspoon, Heidi Klum, Lewis Hamilton and many others.
57. The CALIFORNIA Sneakers are renowned for their high quality and are
identified and recognized as being exclusively from Plaintiffs by virtue of its use of the marks.
C. Defendant's Infringing Conduct
58. Upon information and belief, without permission or authorization from Plaintiffs,
Defendants have manufactured, advertised and sold footwear (the "Infringing High-Heel
Sandal") in the United States and abroad, including in the United Arab Emirates, whose features
infringe the '187 Patent and infringe the distinctive TRIBUTE Heels Trade Dress.
59. Upon information and belief, Defendants have sold their Infringing High-Heel
Sandal under the STEVE MADDEN and WILD PAIR brands, as depicted below:
Plaintiffs' TRIBUTE Defendant's Infringing High- Defendant's Infringing

Sandals Heel Sandal: STEVE High-Heel Sandal:
MADDEN "Kananda" Sandal WILD PAIR "Kissme"
Sandal
11
60. Defendants' Infringing High-Heel Sandal is comprised of the following features:
• a platform sole at the toe which is beveled underneath the toe bed and slops inward at
an angle until meeting the sole which extends outward at an alternate angle;
• a stiletto heels;
• a toe strap comprised of two U shaped pieces each attached to one side of the shoe so
that the rounded end is facing in towards the middle of the toe bed;
• a strap that bisects the U shaped straps and crosses the toe bed;
• a rounded piece over the toe bed that that weaves together the bisecting middle strap
going under the circular shape and then over the ends of the two U-shaped pieces in
the center of the circular shape to create an intricate pattern over the toe bed; and
• an ankle strap formed by two straps which are intertwined at both sides of the ankle
and then diverge, one to towards the heel and the other around the front of the ankle.
61. Defendants' Infringing High-Heel Sandal is a studied copy of the TRIBUTE
Heels design features that are protected by the '187 Patent and the TRIBUTE Heels Trade Dress.
62. Defendants' Infringing High-Heel Sandal is made of lesser quality materials than
those of the TRIBUTE Heels.
63. Upon information and belief, Defendants intentionally copied or caused to be
copied the ornamental design elements of TRIBUTE Heels for the specific purpose of infringing
on Plaintiffs' '187 Patent and TRIBUTE Heels Trade Dress.
64. Defendants' Infringing High-Heel Sandal feature shapes and design elements that
are identical or virtually identical to the shapes and design elements featured in TRIBUTE Heels.
12
65. Defendants' Infringing High-Heel Sandal constitutes an identical or virtually
identical arrangement to that of the original features and elements which constitute Plaintiffs'
TRIBUTE Heels.
66. Even Defendants' own customers have remarked that the Infringing High-Heel
Sandal replicates the TRIBUTE Heels. Copies of customer reviews from Defendants' website
www.stevemadden.com and from third party retailers selling the Infringing Footwear are
attached hereto as Exhibit E.
67. Defendants' reputation for producing knock-offs of designer fashion articles
further corroborates Defendants' deliberate pattern of willful infringement and unfair
competition.
68. Defendants were sued in October 2009 in this Court by the British design house
Alexander McQueen for trade dress infringement of an Alexander McQueen shoe design. See
Autumnpaper Limited, trading as Alexander McQueen v. Steven Madden, Ltd. and Steven
Madden Retail, Inc., Southern District ofNew York Case No. 09-CV-08332.
69. The French fashion house Balenciaga also twice initiated suit against the
Defendants for infringement of its distinctive designs. See Balenciaga v. Steve Madden Ltd.,
Eastern District of New York Case No. 09-CV-05458 and Balenciaga v. Steven Madden, Ltd.
and Steven Madden Retail, Inc., Southern District ofNew York Case No. 14-CV-3627.
70. In recent years, the Defendants have also been sued for trade dress and/or patent
infringement by brands including STELLA MCCARTNEY (Stella McCartney Limited v. Steven
Madden Ltd., Southern District of New York Case No. 15-CV-07906), SKECHERS (Skechers
US.A., Inc. v. Steven Madden, Ltd., Central District of California Case No. 15-CV-05123) and
13
DR. MARTENS (AirWair International Ltd. v. Steven Madden, Ltd., Northern District of
California Case No. 17-CV-01024).
71. Defendants are well aware of the TRIBUTE Heels, and are aware of Plaintiffs'
rights in the TRIBUTE Heels. Defendants had knowledge of Plaintiffs' '187 Patent and
TRIBUTE Heels Trade Dress since at least as early as January 22, 2013, when Plaintiffs notified
Defendants that their AILEENN footwear, depicted below, infringed upon Plaintiffs' rights in
the TRIBUTE Heels.
Plaintiffs' TRIBUTE Sandal Defendants' Infringing Footwear AILEEN
72. Defendants continue their pattern of misappropriation with their renewed
infringement of the TRIBUTE Heels.
73. Notwithstanding the parties' prior dispute related to the TRIBUTE Heels and the
Defendants' infringing AILEEN footwear, Plaintiffs' provided Defendants with further notice of
their infringing conduct on June 17, 2016. A true and correct copy of Plaintiffs' June 17, 2016
letter is attached hereto as Exhibit F.
74. Upon information and belief, Defendants continued to offer for sale and sell the
Infringing High-Heel Sandal even after Plaintiffs provided notice of the infringement.
14
75. Upon information and belief, without permission or authorization from Plaintiffs,
and despite receiving the notice of infringement enumerated above, Defendants also
manufactured, advertised and sold flat sandals (the "Infringing Flat Sandal") whose features
infringe the '187 Patent and infringe the distinctive TRIBUTE Flats Trade Dress.
76. Upon information and belief, Defendants have sold their Infringing Flat Sandal
under the STEVE MADDEN brand, as depicted below:
Plaintiffs' TRIBUTE Flat Sandal Defendant's Infringing Flat

Sandal: STEVE MADDEN
"Sicily" Sandal
15
Defendants' Infringing Flat Sandal is a flat sandal with a toe strap comprised of the following
features:
• two U shaped pieces each attached to one side of the shoe so that the rounded end is
facing in towards the middle of the toe bed;
• a circular strap element, either emanating from a t-strap or as a standalone element, with
the U-shaped pieces and the bisecting strap woven together with the bisecting middle
strap going under the circular strap element and then over the ends of the two U-shaped
pieces in the center of the circular strap element to create an intricate pattern over the toe
bed.
77. Defendants' Infringing Flat Sandal is a studied copy of the TRIBUTE Flats design
features that are protected by the '187 Patent and the TRIBUTE Flats Trade Dress.
78. Defendants' Infringing Flat Sandal is made of lesser quality materials than those
of the TRIBUTE Flats.
copied the ornamental design elements of TRIBUTE Flats for the specific purpose of infringing
on Plaintiffs' '187 Patent and TRIBUTE Flats Trade Dress.
80. Defendants' Infringing Flat Sandal feature shapes and design elements that are
identical or virtually identical to the shapes and design elements featured in TRIBUTE Flats.
81. Defendants' Infringing Flat Sandal constitutes an identical or virtually identical
arrangement to that of the original features and elements which constitute Plaintiffs' TRIBUTE
Flats.
16
82. On information and belief, Defendants continue to advertise, offer for sale, and
sell the Infringing Flat Sandal through their own online and brick-and-mortar retail stores, as
well as through a number of online and brick-and-mortar retailers. See, e.g., Exhibit G.
83. Further, upon information and belief, without permission or authorization from
Plaintiffs, Defendants also manufactured, advertised and sold sneakers (the "Infringing
Sneakers") whose features infringe the '359 Patent and infringe the distinctive CALIFORNIA
Sneaker Trade Dress.
84. Upon information and belief, Defendants have sold their Infringing Sneaker under
the STEVE MADDEN brand, as depicted below:
Plaintiffs' CALIFORNIA Sneaker Defendant's Infringing Sneaker:
t •
I I
1.
jt •
I 1;
I ,r
* .._,
17
85. Defendants' Infringing Sneaker is a studied copy of the CALIFORNIA Sneaker
design features that are protected by the '359 Patent and the CALIFORNIA Sneaker Trade
Dress.
86. Defendants' Infringing Sneaker is made of lesser quality materials than those of
the CALIFORNIA Sneaker.
copied the ornamental design elements of CALIFORNIA Sneaker for the specific purpose of
infringing on Plaintiffs' '359 Patent and CALIFORNIA Sneaker Trade Dress.
88. Defendants' Sneaker feature shapes and design elements that are identical or
virtually identical to the shapes and design elements featured in CALIFORNIA Sneaker.
89. Defendants' Infringing Sneaker constitutes an identical or virtually identical
arrangement to that of the original features and elements which constitute Plaintiffs'
CALIFORNIA Sneaker.
90. The acts of the Defendants are calculated to confuse and to deceive the public and
are performed with full knowledge of Plaintiffs' rights.
91. Defendants have engaged in a pattern of deliberate and willful infringement
designed to misappropriate Plaintiffs' patents and trade dress, confuse consumers as to the source
of Defendants' products and trade upon the valuable good will and reputation of Plaintiffs and
Plaintiffs' intellectual property.
92. Plaintiffs have lost substantial revenue and incurred damage as a result of
Defendants' wrongful and infringing conduct.
93. As a direct and proximate result of the acts of the Defendants alleged above,
Plaintiffs have already suffered irreparable damages and lost revenues.
18
COUNTI
PATENT INFRINGEMENT OF THE '187 PATENT (35 U.S.C. §§ 271 et seq.)
94. Plaintiffs restate and reaver each and every allegation contained in paragraphs 1
through 93, inclusive, and the acts of the Defendants asserted therein, as if fully recited in this
paragraph.
95. Plaintiff Yves Saint Laurent holds the '187 Patent.
96. The ornamental design of the '187 Patent is embodied in the successful TRIBUTE
Sandals sold by Plaintiffs in the U.S. and throughout the world.
97. On information and belief, Defendants had notice of the '187 Patent upon receipt
of written notice at least as early as January 22, 2013 and upon subsequent written notices
provided in June 2016, and/or upon the filing of this lawsuit.
98. Upon information and belief, Defendants have applied Plaintiffs' ornamental
design as articulated in the '187 Patent, or a colorable imitation thereof, to the Infringing High-
Heel Sandal and the Infringing Flat Sandal for the purpose of sale and or selling or exposing for
sale these infringing goods.
99. By virtue of the manufacture, offer for sale and sale of the Infringing High-Heel
Sandal and the Infringing Flat Sandal or alternatively by contributing and inducing others to sell
or offer for sale the Infringing High-Heel Sandal and the Infringing Flat Sandal, the Defendants
have infringed the '187 Patent, literally and/or under the doctrine of equivalents.
100. On information and belief, Defendants will continue to infringe the claims of the
'187 Patent unless enjoined by this Court.
19
101. Defendants' acts, as alleged herein, constitute patent infringement in violation of
35 U.S.C. §§ 271 et seq. and have damaged Plaintiffs in an amount not yet subject to
determination.
COUNT II
PATENT INFRINGEMENT OF THE '359 PATENT (35 U.S.C. §§ 271 et seq.)
paragraph.
103. Plaintiff Yves Saint Laurent holds the '359 Patent.
104. The ornamental design of the '359 Patent is embodied in the successful
CALIFORNIA Sneaker sold by Plaintiffs in the U.S. and throughout the world.
105. On information and belief, Defendants had actual and or constructive notice of the
'359 Patent at or before the time that they began selling the Infringing Sneakers.
106. Upon information and belief, Defendants have applied Plaintiffs' ornamental
design as articulated in the '359 Patent, or a colorable imitation thereof, to the Infringing
Sneakers for the purpose of sale and or selling or exposing for sale these infringing goods.
107. By virtue of the manufacture, offer for sale and sale of the Infringing Sneakers or
alternatively by contributing and inducing others to sell or offer for sale the Infringing Sneakers,
the Defendants have infringed the '359 Patent, literally and/or under the doctrine of equivalents.
108. On information and belief, Defendants will continue to infringe the claims of the
'359 Patent unless enjoined by this Court.
20
109. Defendants' acts, as alleged herein, constitute patent infringement in violation of
35 U.S.C. §§ 271 et seq. and have damaged Plaintiffs in an amount not yet subject to
determination.
COUNTIII
TRADEMARK INFRINGEMENT OF THE TRIBUTE HEELS TRADE DRESS
(15 u.s.c.§ 1125)
paragraph.
111. Upon information and belief, long after Plaintiffs' adoption and use of the
TRIBUTE Heels Trade Dress on its products, and well after the TRIBUTE Heels Trade Dress
acquired secondary meaning, Defendants began selling, offering for sale, distributing, promoting
and advertising footwear in interstate commerce incorporating counterfeit and infringing copies
of the TRIBUTE Heels Trade Dress.
112. The spurious designs used by Defendants in interstate commerce are identical to,
or substantially indistinguishable from, the TRIBUTE Heels Trade Dress.
113. Defendants' use of the TRIBUTE Heels Trade Dress m conjunction with
advertising, promotion, offer for sale, distribution and sale of Defendants' Infringing High-Heel
Sandal was and is without the consent of Plaintiffs.
114. Defendants' unauthorized use of the TRIBUTE Heels Trade Dress on and in
connection with Defendants' advertisement, promotion, sale, offering for sale and distribution of
21
the Infringing High-Heel Sandal through Steve Madden retail stores and on the Internet
constitute Defendants' use of the TRIBUTE Heels Trade Dress in commerce.
115. Defendants' unauthorized use of the TRIBUTE Heels Trade Dress, as set forth
above, is likely to cause confusion, mistake and deception.
above, is likely to cause the public to believe that Defendants' Infringing High-Heel Sandals are
the same as Plaintiffs' TRIBUTE Heels or that Defendants are authorized, sponsored or
approved by Plaintiffs or that Defendants are affiliated, connected or associated with or in some
way related to Plaintiffs.
117. Upon information and belief, Defendants are attempting to pass off their
Infringing High-Heel Sandals as Plaintiffs' product in a manner calculated to deceive Plaintiffs'
customers and members of the general public in that Defendants have copied or caused to be
copied Plaintiffs' protected TRIBUTE Heels, in an effort to make Defendants' Infringing High-
Heel Sandals confusingly similar to Plaintiffs' TRIBUTE Heels and/or pass off Defendants'
Infringing High-Heel Sandals as Plaintiffs' own TRIBUTE Heels.
118. By replicating the TRIBUTE Heels Trade Dress on Defendants' goods,
Defendants are trading on the Plaintiffs' goodwill and reputation and creating the false
impression that Defendants' goods are Plaintiffs' legitimate products.
119. Defendants' use of the TRIBUTE Heels Trade Dress or copies thereof on
Defendants' products is likely to cause consumers, the public and the trade to believe
erroneously that the goods sold by Defendants emanate or originate from Plaintiffs, or that said
items are authorized, sponsored, or approved by Plaintiffs, even though they are not.
22
120. This confusion causes irreparable harm to Plaintiffs and weakens the distinctive
quality of the TRIBUTE Heels Trade Dress.
121. Upon information and belief, the Defendants have engaged in a pattern of
deliberate and willful infringement designed to confuse and deceive consumers as to the source
and origin of Defendants' products and trade upon Plaintiffs' valuable intellectual property, good
will and reputation.
above, is likely to result in Defendants unfairly benefiting from Plaintiffs' advertising and
promotion and profiting from the reputation of Plaintiffs and the TRIBUTE Heels Trade Dress
all to the substantial and irreparable injury of the public, of the Plaintiff and of the TRIBUTE
Heels Trade Dress and the substantial goodwill represented thereby.
123. Defendants' acts, as alleged herein, constitute willful and malicious trademark
infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. §1125 and have damaged
Plaintiffs in an amount not yet subject to determination.
COUNTIV
TRADEMARK INFRINGEMENT OF THE TRIBUTE FLATS TRADE DRESS
(15 u.s.c.§ 1125)

paragraph.
TRIBUTE Flats Trade Dress on its products, and well after the TRIBUTE Flats Trade Dress
23
acquired secondary meaning, Defendants began selling, offering for sale, distributing, promoting
and advertising footwear in interstate commerce incorporating counterfeit and infringing copies
of the TRIBUTE Flats Trade Dress.
or substantially indistinguishable from, the TRIBUTE Flats Trade Dress.
127. Defendants' use of the TRIBUTE Flats Trade Dress m conjunction with
advertising, promotion, offer for sale, distribution and sale of Defendants' Infringing Flat Sandal
was and is without the consent of Plaintiffs.
128. Defendants' unauthorized use of the TRIBUTE Flats Trade Dress on and in
connection with Defendants' advertisement, promotion, sale, offering for sale and distribution of
the Infringing Flat Sandal through Steve Madden retail stores and on the Internet constitute
Defendants' use of the TRIBUTE Flats Trade Dress in commerce.
129. Defendants' unauthorized use of the TRIBUTE Flats Trade Dress, as set forth
above, is likely to cause confusion, mistake and deception.
above, is likely to cause the public to believe that Defendants' Infringing Flat Sandals are the
same as Plaintiffs' TRIBUTE Flats or that Defendants are authorized, sponsored or approved by
Plaintiffs or that Defendants are affiliated, connected or associated with or in some way related
to Plaintiffs.
Infringing Flat Sandals off as Plaintiffs' product in a manner calculated to deceive Plaintiffs'
copied Plaintiffs' protected TRIBUTE Flats in an effort to make Defendants' Infringing Flats
24
Sandals confusingly similar to Plaintiffs' TRIBUTE Flats and/or pass off Defendants' Infringing
Flat Sandals as Plaintiffs' own TRIBUTE Flats.
132. By replicating the TRIBUTE Flats Trade Dress on Defendants' goods,
133. Defendants' use of the TRIBUTE Flats Trade Dress or copies thereof on
quality of the TRIBUTE Flats Trade Dress.
above, is likely to result in Defendants unfairly benefiting from Plaintiffs' advertising and
promotion and profiting from the reputation of Plaintiffs and the TRIBUTE Flats Trade Dress all
to the substantial and irreparable injury of the public, of the Plaintiff and of the TRIBUTE Flats
Trade Dress and the substantial goodwill represented thereby.
infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1125 and have damaged
25
COUNTY
TRADEMARK INFRINGEMENT OF THE CALIFORNIA SNEAKER TRADE DRESS
(15 u.s.c.§ 1125)

paragraph.
CALIFORNIA Sneaker Trade Dress on its products, and well after the CALIFORNIA Sneaker
Trade Dress acquired secondary meaning, Defendants began selling, offering for sale,
distributing, promoting and advertising footwear in interstate commerce incorporating
counterfeit and infringing copies of the CALIFORNIA Sneaker Trade Dress.
or substantially indistinguishable from, the CALIFORNIA Sneaker Trade Dress.
141. Defendants' use of the CALIFORNIA Sneaker Trade Dress in conjunction with
advertising, promotion, offer for sale, distribution and sale of Defendants' Infringing Sneakers
was and is without the consent of Plaintiffs.
142. Defendants' unauthorized use of the CALIFORNIA Sneaker Trade Dress on and
in connection with Defendants' advertisement, promotion, sale, offering for sale and distribution
of the Infringing Sneakers through Steve Madden retail stores and on the Internet constitute
Defendants' use of the CALIFORNIA Sneaker Trade Dress in commerce.
143. Defendants' unauthorized use of the CALIFORNIA Sneaker Trade Dress, as set
forth above, is likely to cause confusion, mistake and deception.
26
forth above, is likely to cause the public to believe that Defendants' Infringing Sneakers are the
same as Plaintiffs' CALIFORNIA Sneakers or that Defendants are authorized, sponsored or
approved by Plaintiffs or that Defendants are affiliated, connected or associated with or in some
way related to Plaintiffs.
Infringing Sneakers off as Plaintiffs' product in a manner calculated to deceive Plaintiffs'
copied Plaintiffs' protected CALIFORNIA Sneaker in an effort to make Defendants' Infringing
Sneakers confusingly similar to Plaintiffs' CALIFORNIA Sneakers and/or pass off Defendants'
Infringing Sneakers as Plaintiffs' own CALIFORNIA Sneakers.
146. By replicating the CALIFORNIA Sneaker Trade Dress on Defendants' goods,
147. Defendants' use of the CALIFORNIA Sneaker Trade Dress or copies thereof on
quality of the CALIFORNIA Sneaker Trade Dress.
27
forth above, is likely to result in Defendants unfairly benefiting from Plaintiffs' advertising and
promotion and profiting from the reputation of Plaintiffs and the CALIFORNIA Sneaker Trade
Dress all to the substantial and irreparable injury of the public, of the Plaintiff and of the
CALIFORNIA Sneaker Trade Dress and the substantial goodwill represented thereby.
infringement in violation of Section 32 of the Lanham Act, 15 U.S.C. §1125 and have damaged
COUNT VI
UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN OR
SPONSORSHIP {15 U.S.C. § 1125{a))
through 151, inclusive, and the acts of Defendants asserted therein, as if fully recited in this
paragraph.
153. Defendants are not now, nor have they ever been, associated, affiliated or
connected with, or endorsed or sanctioned by Plaintiffs.
154. The Infringing High-Heel Sandal, Infringing Flat Sandal, and the Infringing
Sneaker (collectively, the "Infringing Footwear") sold by the Defendants copy the Plaintiffs'
protected trade dress and constitute false designation of origin of goods sold by the Defendants
28
and false representations that Defendants' goods are sponsored, endorsed, licensed or authorized
by, or affiliated or connected with the Plaintiffs.
155. Defendants, without the consent or authorization of Plaintiffs, have adopted and
utilized the Plaintiffs' protected trade dress in Defendants' Infringing Footwear.
156. Defendants' misappropriation of the Plaintiffs' protected trade dress is likely to
cause and to have caused purchasers in interstate commerce to be confused, misled or deceived
between Plaintiffs' goods and Defendants' Infringing Footwear.
157. Upon information and belief, Defendant knowingly adopted and used copies,
variations, simulations or colorable imitations of the Plaintiffs' protected trade dress with full
knowledge of Plaintiffs' intellectual property rights in the same.
158. Defendants have engaged in a systematic pattern of copying of the Plaintiffs'
protected trade dress, in an attempt to benefit unfairly from Plaintiffs' creativity and good will.
159. Defendants have unfairly benefited and profited from Plaintiffs' outstanding
reputation for high quality products and Plaintiffs' advertising and promotion of their TRIBUTE
Heels, TRIBUTE Flats, and CALIFORNIA Sneakers.
160. Plaintiffs have no control over the nature and quality of the products sold by
Defendants bearing the counterfeit trade dress.
161. Among other things, Defendants' distribution, sale, offers of sale, promotion and
advertisement of its Infringing Footwear has reflected adversely on Plaintiffs as the believed
source of origin thereof, hampered continuing efforts by Plaintiffs to protect their outstanding
reputation for high quality, originality and distinctive goods, and tarnished the goodwill and
demand for genuine TRIBUTE Heels, TRIBUTE Flats, and CALIFORNIA PATTERN Sneakers
29
and other products and, upon information and belief, will continue to do so unless enjoined by
this Court.
162. Defendants' wrongful conduct has deprived Plaintiffs of opportunities for
expanding good will.
163. Defendants' acts are both willful and malicious.
164. Defendants' activities, as alleged herein, constitute Unfair Competition and False
Designations of Origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and
have damaged Plaintiff in an amount not yet subject to determination.
165. Plaintiffs have no adequate remedy at law.
COUNT VII
UNFAIR COMPETITION UNDER THE
COMMON LAW OF THE STATE OF NEW YORK
paragraph.
167. By reason of the foregoing, Defendants' activities, as alleged herein, constitute
unfair competition with Plaintiffs and have damaged Plaintiffs in an amount not yet subject to
determination.
30
COUNT VIII
DECEPTIVE TRADE PRACTICES {N.Y. General Business Law§ 349)
paragraph.
169. Defendants' misappropriation of the TRIBUTE Heels Trade Dress, the TRIBUTE
Flats Trade Dress, and the CALIFORNIA PATTERN Sneaker Trade Dress is in direct
competition with the Plaintiffs' TRIBUTE Heels, TRIBUTE Flats, and CALIFORNIA
PATTERN Sneakers, respectively, and other of Plaintiffs' products.
170. Defendants' wholesale copying of the TRIBUTE Heels Trade Dress, the
TRIBUTE Flats Trade Dress, and the CALIFORNIA Sneaker Trade Dress is likely to deceive
consumers into believing that the Infringing Footwear originates from Plaintiffs, or is associated
with or authorized by Plaintiffs, when it is, in fact, not.
171. Defendants' copying of the TRIBUTE Heels Trade Dress, the TRIBUTE Flats
Trade Dress, and the CALIFORNIA Sneaker Trade Dress is illustrative of Defendants'
established pattern of unlawful copying Plaintiffs' unique designs, as well as the designs of
others.
172. By reason of the acts and practices as alleged herein, Defendants have engaged in
deceptive trade practices or misleading activities in the conduct of business, trade or commerce,
or furnishing of goods and/or services, in violation of§ 349 of the New York General Business
Law.
173. The public is likely to be damaged as a result of those deceptive trade practices or
activities.
31
175. Defendants' activities, as alleged herein, constitute deceptive trade practice
pursuant to New York General Business Law § 349 and have damaged Plaintiffs in an amount
not yet subject to determination.
COUNT IX
INJURY TO BUSINESS REPUTATION (N.Y. General Business Law § 360-1)
paragraph.
177. Defendants' Infringing Footwear unlawfully copies the TRIBUTE Heels Trade
Dress, the TRIBUTE Flats Trade Dress, and/or the CALIFORNIA Sneaker Trade Dress.
178. By applying an imitation of the TRIBUTE Heels Trade Dress, the TRIBUTE
Flats Trade Dress, and/or the CALIFORNIA Sneaker Trade Dress to Defendants' Infringing
Footwear, which are of a lesser quality and workmanship than those of Plaintiffs, Defendants
have injured and will continue to injure Plaintiffs' business reputation, have tarnished the
distinctive quality of Plaintiffs' famous TRIBUTE Heels Trade Dress, the TRIBUTE Flats Trade
Dress, and the CALIFORNIA Sneaker Trade Dress, and have lessened the capacity of Plaintiffs'
famous TRIBUTE Heels Trade Dress, the TRIBUTE Flats Trade Dress, and the CALIFORNIA
Sneaker Trade Dress to identify and distinguish Plaintiffs' goods, in violation of N.Y. General
Business Law§ 360-1.
32
179. Defendants are likely to continue their pattern of copying Plaintiffs' unique and
distinctive designs, thereby continuing the injury to Plaintiffs' business reputation, unless
enjoined by this Court.
181. Defendants' activities, as alleged herein, constitute injury to business reputation
and dilution pursuant to New York General Business Law § 360-1 and have damaged Plaintiffs in
an amount not yet subject to determination.
DEMAND FOR JURY TRIAL
Pursuant to Federal Rule of Civil Procedure 38, Plaintiff hereby demands a trial by a jury
on all issues triable by right of jury.
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray:
(1) That the Defendants be required to account for and pay over all gains, profits, and
advantages derived by the Defendants and any damages sustained by Plaintiffs as a result of the
Defendant's activities constituting Patent Infringement, as enumerated herein.
advantages derived by the Defendants and any damages sustained by Plaintiffs as a result of its
infringement of Plaintiffs' TRIBUTE Heels Trade Dress, TRIBUTE Flats Trade Dress, and
CALIFORNIA Sneaker Trade Dress, as enumerated herein.
33
Defendants' activities constituting Unfair Competition, as enumerated herein.
Defendants' activities constituting Common Law Unfair Competition, as enumerated herein.
Defendants' activities constituting Deceptive Trade Practices, as enumerated herein.
(6) That pursuant to 35 U.S.C. § 283, 15 U.S.C. § 1116, N.Y. General Business Law§
360-1 and the equity jurisdiction of this court, the Defendants, their agents, employees, or
representatives, and all persons in privity therewith be permanently enjoined and restrained from
using on or in connection with the sale, offering for sale, distribution, exhibition, display or
advertising of its goods through the Internet or otherwise, Plaintiffs' '187 Patent, '359 Patent,
TRIBUTE Heels Trade Dress, TRIBUTE Flats Trade Dress, and CALIFORNIA Sneaker Trade
Dress or any article confusingly or deceptively similar to or colorable imitation of the same, and
from publishing, selling, marketing, or otherwise disposing of any copies of Defendants'
material which have been derived in any manner by infringement of Plaintiffs' '187 Patent, '359
Patent, TRIBUTE Heels Trade Dress, TRIBUTE Flats Trade Dress, and CALIFORNIA Sneaker
Trade Dress.
(7) That pursuant to 35 U.S .C. § 283, 15 U.S.C. §1116 and the equity jurisdiction of
this court, the Defendants, their agents, employees, or representatives, and all persons in privity
therewith be permanently enjoined and restrained from using on or in connection with the sale,
34
offering for sale, distribution, exhibition, display or advertising of its goods through the Internet
or otherwise, Plaintiffs' '187 Patent, '359 Patent, TRIBUTE Heels Trade Dress, TRIBUTE Flats
Trade Dress, and CALIFORNIA Sneaker Trade Dress, or any article confusingly or deceptively
similar to or colorable imitative of Plaintiffs' TRIBUTE Heels, TRIBUTE Flats, or
CALIFORNIA Sneakers.
(8) That the Defendants and their officers, agents, employees, or representatives, and
all persons in privity with the Defendants deliver up to this Court, pursuant to 15 U.S.C. § 1118,
any products in their possession bearing the Plaintiffs' TRIBUTE Heels Trade Dress, TRIBUTE
Flats Trade Dress, and CALIFORNIA Sneaker Trade Dress or any colorable imitation, for the
purpose of destruction thereof.
(9) That, because of the willful nature of the infringements, the amounts of actual
damages be trebled as provided for in 35 U.S.C. § 284 and 15 U.S.C. § 1117.
(10) That, because of the willful nature of the infringements, the Court find that this
case is an exceptional case pursuant to 35 U.S.C. § 285 and 15 U.S.C. § 1117 and thus require
Defendants to pay to Plaintiffs the costs of this action, including attorneys' fees and
disbursements incurred
(11) Any such other and further relief as this Court deems just and equitable
Respectfully submitted for Plaintiff,
By:
Jess M. Collen (JC 2875)

Jeffrey A. Lindenbaum (JL 5211)
35
Michael Nesheiwat (MN 0453)

COLLEN
The Holyoke-Manhattan Building
80 South Highland A venue
Town of Ossining
Westchester County, New York 10562
jcollen@collenip.com
mnesheiwat@collenip.com
(914) 941-5668
(914) 941-6091 (facsimile)
Dated: July_, 2018
36
:. ',
EXHIBIT A
EXHIBITB
IIIIIIIIIIIIII
IllIIIIIIIIIII
IIIIIIIII
1111111111
11111
11111
111111111111111111
US00D607l 87S
c12) United States Design Patent (IO) Patent No.: US D607,187 S

(54) SHOE D92,238 S * 5/1934 Elkin ...... ........ ........... . D2/933
(75) Inventor: Valerie Hermann, Neuilly sur Seine * cited by examiner

(74) Attorney, Agent, or Firm-Collen IP; Donald J Ranft
(73) Assignee: Yves Saint Laurent, Paris (FR)
(57) CLAIM
(*"') Term: 14 Years
The ornamental design for a shoe, as shown and described.
(21) Appl. No.: 29/325,173
DESCRIPTION
(22) Filed: Sep.26,2008
FIG. l is aright side view ofmy new, original and ornamental
(51) LOC (9) Cl. ............... .......... ........ ................. 02-99 design for a shoe;
(52) U.S. Cl. .................. ......... D2/930; D2/933; D21925 FIG. 2 is a left side view thereof;
(58) Field of Classification Search .................. D2/896, FIG. 3 is a top view thereof;
D2/916-918, 925-942, 946, 969, 971; 36/1,
36/83, 8.3, 45-58 FIG. 4 is a bottom view thereof;
See application file for complete search history. FIG. 5 is a front view thereof;
(56) References Cited FIG. 6 is a rear view thereof; and,

FIG. 7 is a left front perspective view thereof.
U.S. PATENT DOCUMENTS
D91,894 S • 4/1934 Miller ......................... D2/933 1 Claim, 4 Drawing Sheets
Fig. 1
Fig. 2
Fig. 3
Fig. 4
Fig. 5
Fig. 6
Fig. 7
EXHIBITC
EXHIBITD
I1111111111111111 IIIIIIIIII
111111111111111 IIIII
US0OD762359S
IIIIIII
IIII
11111111111111111

Slimane (45) Date of Patent: ** Aug. 2, 2016
(54) SHOE D139,334 S • 11/1944 Balboni ......................... D2/939

Dl66,090 S ,. 3/1952 Maling .......................... D21939
(71) Applicant: YVES SAINT LAURENT, Paris (FR) Dl72,096 S • 5/1954 Katz .............................. D2/940
D308,286 S • 6/1990 Austin ........................... D2/960
D478,412 S • 8/2003 Adams ........................... D2/960
(72) Inventor: Hedi Slimane, Los Angeles, CA (US) D534,341 S • 1/2007 Choi .............................. D2/971
D655,074 S • 3/2012 LaRusso ........................ D21946
(73) Assignee: YVES SAINT LAURENT, Paris (FR) D665,562 S • 8/2012 Di Nucci ....................... D21969
D714,534 S • 10/2014 Spring ........................... D2/960
(**) Term: 14 Years
• cited by examiner
(21) Appl. No.: 29/521,339
Primary Examiner - Dominic Simone
(22) Filed: Mar. 23, 2015 (74) Attorney, Agent, or Firm - Donald J. Ranft; Kristen A.
Mogavero; Collen IP
(51) LOC (10) Cl. ............................ .................... 02-04
(52) U.S. Cl. (57) CLAIM
USPC ............................... D21935; D2/925; D2/944 The ornamental design for a shoe, as shown.
(58) Field of Classification Search
USPC .......... D2/902, 906-908, 925-944, 960, 969, DESCRIPTION
D2/971-974
CPC .. A438 13/181; A438 13/141; A43B 13/186; FIG. 1 is a top right perspective view of a shoe showing my
A43B 13/188; A438 23/00; A43B 23/02; new design;
A438 5/00; A43B 23/26; A438 1/04; A438 FIG. 2 is a top left perspective view thereof;
11/14; A438 7/00; A43C 1/00; A43C 11/00 FIG. 3 is a bottom left perspective view thereof;
See application file for complete search history. FIG. 4 is a bottom right perspective view thereof;
FIG. 5 is a top view thereof;
(56) References Cited FIG. 6 is a bottom view thereof;
FIG . 7 is a left side view thereof;
U.S. PATENT DOCUMENTS FIG. 8 is a right side view thereof;
FIG . 9 is a front view thereof; and,
D57,110 S " 2/1921 Brown ........................... D2/902
D83,854 S + 4/1931 Funketal .................... .. D2/902 FIG. 10 is a rear view thereof.
D88,881 S " 1/1933 L'Hollier ....................... D2/960
Dl28,519 S • 7/1941 Hard .............................. D2/902 1 Claim, 10 Drawing Sheets
U.S. Patent Aug. 2, 2016 Sheet 1 of 10 US D762,359 S


I
I
U.S. Patent
Aug. 2, 2016
Sheet 3 of 10
US D762,359 S
--··

FIG. 5
U.S. Patent
Aug. 2, 2016
Sheet 6 of 10
VS D762,359 S
FIG. 6

00
FIG. 9
FIG. 10
EXHIBITE
KANANDA: STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 28 of 37
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.KANANIJA STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 30 of 37
REVIEWS
RATINGSNAPSHOT AVERAGE
CUSTOMER
RATINGS
SD 5 Overall 5.0
40 0 •••••
30 0
Sizing ID
20 0 Too Small Too Big
10 0 Width
Too narrow
•Too wide
1-4 of 5 Reviews
DD DD D • · 5daysago
SUPERSEXY,SUPERCOMFY!
Spent all day shopping for a comfy neutral heel for a wedding. Finally found
Sizing
these! So comfortable, and so sexy. Only problem was I wanted to buy
more . Have a feeling these heels and I are going to best friends this I •
summer! LOL
Width
•
# Date Night/Night Out, Special Occasions
http://www .stevemadden .com/product/TRENDS/WOMENS/Nudes/KAN ANDNpc/4157 /c/2 l 63/sc/3809/239145. uts?selectedColor=BL USH -LEA THER[ 6/13/2016 3:31 :25 PM]
.KA.NANDA:STEVE MADDENCase 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 31 of 37
# Cute, Quality, Stylish, Comfortable
Yes, I recommend this product .
Helpful? .__
_ !l.___ _,II
___. Report
D [I [] [l [l LJ · 2 monthsago
COMFORTABLE
ANDSEXY
I bought this shoe for my wedding. Wanted something neutral that I could
Sizing
wear again after the event. This shoe was really comfortable and easy to
walk in. Great dupe for the YSL but a forth of the price. Highly recommend. I •
Width
•
# Date Night/Night Out
# Stylish, Value, Quality, Comfortable
Yes, I recommend this product.
Helpful? ,___ _ _..II

_ _.!I
... Report
http://www.stevemadden.com/product/TRENDS/WOMENS/Nudes/KANANDNpc/4157
/c/2163/sc/3809/239145.uts?selectedColor=BLUSH-LEATHER[6/13/2016 3:31:25 PM]
.KANAN]')A: STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 32 of 37
[ID DD D D · 2monthsago
GORGEOUS
SHOE
I have been eyeing the iconic tribute sandal for months, but still have a
hard time dropping that much on something I'm not going to use that often. Sizing
So, I was elated when I found this shoe. I ordered the black leather and I •
they are so gorgeous. Nice leather, and surprisingly comfortable and not
awkward to walk in. Seriously a beautiful shoe. Will be ordering in the Width
leather blush! Sizing was spot on .
•
# Date Night/Night Out, Special Occasions
# Stylish, Value, Quality, Cute, Comfortable
Helpful? ~ -~ 11, I
__ __.I Ropon
0 0 [I [I D !.______.I
·2 monthsago
GREATBUY
These remind me of the YSL shoes but for only a fraction fo the cost. They
are pretty comfortable despite the high heel. I wore them to a wedding and Sizing
was able to dance in them comfortably. • I
Width
•
# Wear To Work, Date Night/Night Out, Special Occasions
# Stylish, Quality, Cute
http://www.stevemadden.com/product/TRENDS/WOMENS/Nudes/KANANDA/pc/4157/c/2163/sc/3809/239145 .uts?selectedColor=BLUSH-LEA THER[6/13/2016 3:31 :25 PM]

,KANAN!'JA: STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 33 of 37
Helpful? ~-_.I._I_ __.j I Report
1-4 of 5 Reviews
I .J I
CUSTOMER ABOUTTHE SITE

TERMS GIFTCARDS EMAIL
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UP
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GET A GIFT GET10%OFFWHENYOUSIGNUPFOR
TERMSOF USE CARD EMAILS
FAQ ABOUTSTEVE
MADDEN TERMSOF SALE
MY ACCOUNT
ORDERTRACKING CAREERS PRIVACYPOLICY
SHOEGLOSSARY
9 STORE
LOCATOR
INVESTOR
•
RETURNPOLICY
RELATIONS PROMOTIONAL
SHIPPINGPOLICY
RULES Steven Madden, Ltd requires that our customers comply with
SHOE SIZE CHART The Children's Online Privacy Protection Act which prohibits
the collection of any information from children under the age
CLEANING& CARE of 13.
CONTACTUS
IIIJ LIVE
CHAT INFO@STEVEMADDENDIRECT.COM
1-888-SMADDEN
1-888- 00@800
SMADDENA FREE
http://www .stevem adden .com/product/TRENDS/WOMENS/Nude s/KANANDA/pc/4157/c/2 ! 63/sc/3809/239145 .uts?selectedColor=BLUSH-LEA THER[6/l 3/2016 3:31 :25 PM]
mm
.KANAN1'A: STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 34 of 37
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TRENDS/ WOMEN'S/ NUDES/ KANANDA
KANANDA COLOR:
BLUSHLEATHER-
•••
$109.95-$129
.95
(tl
$109.95-$129
.95
•
5.0 (5)
• vi~
SIZE:
Select
QTY:
Write a review I
~ LQ.\LEJilI FIND
INASTORE
fr\ .I If
DETAILS
The stylish KANANDA.. , Adorable, and simply
the perfect addition to your outfit!
• Patent leather upper material

• Man-made lining
• Man-made sole
• 5 inch heel height
• 1.25 inch platform
http://www.stevemadden .com/product/TRENDS/WOMENS/Nudes/KANANDA/pc/4157 /c/2163/sc/3 809/239145 .uts?selectedCol or=BL USH-LEA THER[6/I 3/2016 3: 36:20 PM]
• KANAN b A STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 35 of 37
FREE
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$50
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$39.98 $99.95 $79.95
- .. -=- -- =---=----
:
1..-.-.·
•
• II
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)..1;
.. ~,
I"" I
http://www .stevemadde n.com/productfrRENDS/WOMENS/Nudes/KANANDA/pc/4 157/c/2 163/sc/3809/239 145.uts?se lectedCo lor=BL USH-LEA THER [6/ 13/20 l 6 3 :36:20 PM]
,KANANDA: STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 36 of 37
REVIEWS
RATINGSNAPSHOT AVERAGE
CUSTOMER
RATINGS
s• 5 Overall 5.0
40 0 •••••
30 0
Sizing 111
2• 0 Too Small Too Big
1• 0 Width
Too narrow
• Too wide
5 of 5 Reviews
DD [l DD LJ · 3monthsago
LOVELOVETHESESHOES.
YOUWON'TBEDISAPPOINTED!
True to size. Great to dress up or down. Even though the heel is high,
Sizing
they're actually very comfortable. I wear them all the time. Had to buy
another color! I •
Width
•
# Wear To Work, Date Night/Night Out, Casual Wear, Special Occasions
http://www .stevemadden .com/product/TRENDS/WOMENS/Nudes/KANANDA/pc/4157 /c/2163/sc/3 809/239145 . uts?selectedColor=BL USH-LEA THER[6/ l 3/2016 3: 36 :20 PM]
,KANANDA: STEVE MADDEN Case 1:18-cv-07592 Document 1-4 Filed 08/20/18 Page 37 of 37
# Stylish, Value, Quality, Cute, Comfortable
Helpful? --~l~I -~ II Repm
5 of 5 Reviews
CUSTOMER ABOUTTHE SITE

TERMS GIFTCARDS EMAIL
SIGNUP
SERVICE COMPANY SITE MAP 1111
GET A GIFT GET10%OFFWHENYOUSIGNUPFOR
FAQ ABOUTSTEVE
TERMSOF USE CARD EMAILS
MADDEN TERMSOF SALE
MY ACCOUNT
ORDERTRACKING CAREERS PRIVACYPOLICY
SHOEGLOSSARY
9 STORE
LOCATOR
INVESTOR
•
RETURNPOLICY
RELATIONS PROMOTIONAL
SHIPPINGPOLICY
RULES Steven Madden, Ltd requires that our customers comply with
SHOESIZE CHART The Children's Online Privacy Protection Act which prohibits
the collection of any information from children under the age
CLEANING& CARE of 13.
CONTACTUS
" LIVECHAT
INFO@STEVEMADDENDIRECT
1-888-SMADDEN
SMADDENA
1-888-
FREE
.COM
oo@eo•
http ://www .stevemadden .com/product/TRENDS/WOMENS/Nudes/KANANDA/pc/4157 /c/2163/sc/3 809/239145 .uts?selectedColor=BL USH-LEA THER[6/ 13/2016 3: 36:20 PM]
Exhibit C
'. Case 1:18-cv-07592 Document 1-5 Filed 08/20/18 Page 2 of 11
COLLEN
INTELLECTUAL PROPERTY LAW
August 7, 2018
BY FEDERALEXPRESS
Shoebacca, Ltd.
520 N WILDWOOD DR.
IRVING, TX 75061-8800
Attn: Mr. Ryan Schlachter, President
Re: U.S. Intellectual Property Infringement of SAINT

LAURENT TRIBUTE footwear design by Shoebacca
Patent No.: D607,187
Our Ref.: X705
Dear Mr. Schlachter:
This firm is intellectual property counsel to Luxury Goods International ("LGI") and the
Saint Laurent Fashion House ("SL"). LGI holds title to all United States trademark and trade
dress rights of Saint Laurent and SL holds title to all United States patents held by Saint Laurent.
Together LOI and SL own all intellectual property rights in the United States to the creative
output of Saint Laurent, including the unique, popular and immediately recognizable branded
SAINT LAURENT TRIBUTE Sandal. Please see attached Exhibit A, which are images of the
SAINT LAURENT TRIBUTE Sandal (hereinafter, the "TRIBUTE Sandal").
Since its debut in 2007, the TRIBUTE Sandal has garnered significant press coverage and
has been offered for sale in various different colors and materials. The original core design
elements that comprise the TRIBUTE Sandal have remained consistent since 2007. As a result
of favorable media attention and marketing efforts by LGI, the TRIBUTE Sandal, regardless of
color or material, is easily recognized by consumers and potential consumers as originating from
the Saint Laurent. The design of the TRIBUTE Sandal is protected by U.S. Patent No.
D607, 187, a copy which is provided for your reference marked as Exhibit B.
It has come to our clients' attention that Shoebacca is offering for sale shoes (the
"Infringing Footwear") which copy the TRIBUTE Sandal in exacting detail. The Infringing
Footwear is sold under the name STEVE MADDEN SICILY and is virtually identical in design
to the TRIBUTE Sandal. Please see attached Exhibit C, which is a recent printout of the
Infringing Footwear offered for sale on your website shoebaccacom.
Collen IP Intellectual Property Law, P.C., The Holyoke-Manhattan Building

So South Highland Avenue, Ossining-on -Hudson, Westchester County, New York 10562, U.S.A.
Tel 914-941-5668 Fax 914-941-6091 www.collenip.com
.. Case 1:18-cv-07592 Document 1-5 Filed 08/20/18 Page 3 of 11
Mr. Ryan Schlachter, President

Shoebacca, Ltd.
August 7, 2018
Page 2 of 3 - X705
Below is a side-by-side comparison of our clients' protected design and the infringing
footwear being sold by your company:
TRIBUTE Sandal STEVE MADDEN "Sicily" Sandal
Shoebacca's advertising, sale and offering for sale of the Infringing Footwear violates
LGI's and SL's rights under the Lanham Act, the Patent Act and under state law. As you are no
doubt aware, U.S. Federal and state laws provide substantial penalties should a Court find
infringement to have occurred. Therefore, we want to extend to you the opportunity to rectify
this situation immediately and put this matter to rest.
To promptly and fully resolve this matter and to avoid further damage to LOI and SL's
valuable intellectual property, we demand that Shoebacca immediately cease and desist selling or
offering for sale the Infringing Footwear identified above. Further still, we demand that
Shoebacca disclose to us the number of articles utilizing these designs which are in Shoebacca's
..
Mr. Ryan Schlachter, President
Shoebacca , Ltd.
August 7, 2018
Page 3 of 3 - X705
inventory , and further, advise us of the number of articles which have been sold by Shoebacca to
date . This information will allow us to ascertain the appropriate means to conclude this matter.
Our client is determined to fully enforce and protect all of the rights provided to it under
the Patent and Trademark Laws of the United States, and this letter is being sent without
prejudice to any such rights. If you wish to resolve this matter amicably, please provide us with
your assurances by August 15, 2018 that Shoebacca will comply with the above stated terms .
We thank you in advance for your anticipated cooperation .
JMC/MN
Enclosure: Exhibit A (Printout from YSL.COM)
Exhibit B (U.S. Patent Reg. No . 0607,187)
Exhibit C (Printout from shoebacca .com)
EXHIBIT A
1111111111111111
lllll111111111111
1111111111111111111111/I
IIIIH1111
US00D607187S

(54) SHOE 092,238 S • .Sll 934 Elkin ............... ....... .... D2l933
(75) Inventor: Valerie Hermann, Neuilly sur Seine • cited by examiner

(74) Artornl!)\Agenr, or Finn-Collen IP; Donald J Ranft
(73) Assignee: Yves Saint Laurent, Paris {FR)
..
( ) Term: 14YHn
(57) CLAIM
The omamentaldesign for a shoe, as shownanddescribed.

(21) Appl. No.: 29/325,173
DESCRIPTION
(22) Filed: Sep. 26, 2008
FlG. 1 is a right side viewof my new, origloalandornamental
(51) LOC(9)CI ..................................... .............. 02-99 design for a shoe;
(52) U.S. Cl. ........................... D21930;02/933; 02/925 FJG.2 is a left side view thereof;
(58) Field ofClasslftcatfonSearch .................. D2/896, FIG. 3 is a top view thereof;
02/916-918, 925-942, 946,969,971; 36/1,
36/83, 8.3, 45-58 FJG.4 is a bonom viewthereof.;
See applicationfile for completesearchhistory. FIG. 5 is a front view thereof;
(56) ReferencesCited FlG. 6 is a rear view thereof; and,
FIG. 7 is a left ftont perspectiveview thereo.f:
U.S. PATENTDOCUMENTS
091,894 S • 4/1934 Miller ......................... D21933 l Claim, 4 Drawing Sheets
Fig. 3
Fig. 4
U.S. Patent Jan.5,2010 Sheet4 of 4 US D607,187 S
Fig. 7
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Steven Madden Ltd. v. Yves Saint Laurent - Complaint

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Steven Madden Ltd. v. Yves Saint Laurent - Complaint

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Case 1:18-cv-07592 Document 1 Filed 08/20/18 Page 1 of 29

UNITED STATES DISTRICT COURT

NATURE OF THE ACTION

common laws of the State of New York.

relative to certain Madden footwear.

3. In a bad faith attempt to stifle legitimate competition in the footwear industry,

customers must be immediately stopped.

sandal for the high-heeled platform design of the ’187 Patent:

U.S. D607,187 Madden Sicily

does not infringe, any of Defendants’ purported trade dress rights.

Kananda shoe design.

Madden Kananda Madden Sicily

the aforementioned desperate measures to thwart Madden’s sales, namely by improperly

75008 Paris, France.

6814, Cadempino, Switzerland.

JURISDICTION AND VENUE

law claims pursuant to 28 U.S.C. § 1367(a).

directly to consumers within this District.

acts giving rise to Plaintiff’s claims occurred in this judicial district.

because Defendants are not resident in the United States.

brand for footwear, handbags and accessories.

Defendants’ Design Patent

filed on September 26, 2008 and issued on January 5, 2010.

shown and described” in the ’187 Patent.

as shown in solid black in the patent and replicated below:

Fig. 3 Fig.4 Fig. 6

The New Patent Dispute Over Madden’s Flat Sicily Sandal

have a platform sole, high heel, T-strap, ankle straps, or a buckle.

sandal in the marketplace. Defendants then launched an illegitimate campaign to thwart

infringement of the ’187 Patent.

Letter is attached as Exhibit B.

copy of the draft Complaint is attached to the Notice Letter in Exhibit B.

view of the ’187 Patent.

U.S. D607,187 Madden Sicily

letters is attached as Exhibit C.

with its customers, necessitating the filing of this lawsuit.

regarding trade dress infringement.

defining a legally protectable trade dress.

(red) and an additional strap crossing the toe bed.

The TRIBUTE Flats trade dress is comprised of a substantially flat

“specific facts” to support an argument of non-functionality; and contained no written

description as to how there could be a likelihood of confusion).

when the Tribute sandal is worn.

45. With respect to secondary meaning, as a product configuration, Defendants’

design, as opposed to the rounded design of the Tribute Flat Sandal:

being loosely woven together.

being tightly knit together.

The Prior Dispute Over Madden’s High Heeled Kananda Shoe

property rights and footwear.

Kananda shoe is represented below:

Kananda shoe infringed the ’187 Patent.

54. On information and belief, Defendants manufacture and sell a high-heeled

trademark rights to this high-heeled Tribute Sandal.

discontinue the Kananda shoe.

Defendants Have Threatened to Sue Madden Over the Kananda Shoe,

the parties’ agreement for the Kananda shoe.

that they would never do so.

controversy between the parties as to the enforceability of Defendants’ claimed intellectual

contained within the preceding paragraphs 1 through 65, inclusive.

F.3d 665, 672 (Fed. Cir. 2008).

heeled platform shoe design in the ’187 Patent:

U.S. D607,187 Madden Sicily

Sicily sandal does not infringe the ’187 Patent.

contained within the preceding paragraphs 1 through 69, inclusive.