Shoes are now capable of copyright protection, according to a Court in Denmark. This provides another possible avenue of protection for fashion brands, who can also rely on trade marks and designs to fend off copycats. Our Intellectual Property team considers the Danish Court ruling which found in favour of the famous Danish fashion brand, GANNI, in a copyright infringement case.
Further to our previous article reporting on the role of IP in the fashion industry, a recent ruling by the Danish Maritime and Commercial Court has held that the design of GANNI’s Buckle Ballerina shoe is capable of copyright protection. The Court held that Steve Madden’s GRAND AVE shoe infringed that copyright, as well as being in breach of Danish marketing law. Steve Madden is now prohibited from marketing, selling, exporting or importing its infringing shoe range in Denmark. We consider the decision and its impact for brand owners in the fashion sector.
Background
GANNI’s Buckle Ballerina shoe first went on sale in November 2021. It was designed by a former employee, Emmelie Karlström. At the time of the Danish Court judgment in August 2024, it had generated sales of more than DKK 13 million in Denmark. GANNI registered the design of the shoe in the EU in August 2023, as depicted below.
Copyright infringement
Steve Madden launched its GRAND AVE shoe in summer 2023, depicted below. GANNI applied to the Danish Courts for an injunction restraining Steve Madden from continuing to sell this shoe.
GANNI relied on the following similarities between the shoes in claiming copyright infringement against Steve Madden:
- An angular outsole with a pointed toe but finished with a flat edge
- An outsole that stands out from the rest of the shoe by being wider than the rest of the shoe and in a different colour than the rest of the shoe
- Two straps with a metal buckle on each strap – one strap near the toes and one above the instep
- Metal eyelets on each strap, connected by visible stitching
- A sling back strap over the heel
- A beige inner sole surrounded by a border in a different colour
- A shiny leather surface, the shoes are also available in the same colours
GANNI further claimed that the Steve Madden shoe is a slavish imitation of its Buckle Ballerina shoe. For example, metal eyelets are used on both shoes, and these have no function because the metal buckle is not attached to them. Rather, they served a purely design purpose, which was to create the same overall impression as GANNI’s Buckle Ballerina shoe.
Decision
The Danish Maritime and Commercial Court was satisfied that the individual design elements of GANNI’s shoe were put together in a way that had not been seen before. The design amounted to an expression of the designer’s own intellectual creation. In particular, the contrast between the delicate, feminine shape of the ballerina shoe with its pointed toe and slingback strap on the one hand, and the hardness of the characteristic angularity of the outsole and heel together with the punk-inspired buckles and rivets of the straps on the other, reflects the designer’s vision of “coolness.” In addition, the Court held that the designer had a considerable degree of freedom in the design and decoration of the shoe, including regarding the design and shape of its individual components. For these reasons, GANNI’s Buckle Ballerina shoe was protected by copyright under Danish law. The shoe had extensive exposure in several international fashion magazines as well as on social media and via third party mentions. Considering this and taking into account the reported turnover of more than DKK 13 million, the shoe was found to have distinctive character, commercial distinctiveness and sufficient market position to be protected by the Danish Marketing Practices Act. Regarding the copyright infringement claim, the Court concluded that the Steve Madden shoe had essentially the same design expression as the Buckle Ballerina shoe and that Steve Madden’s version will immediately give the consumer the same overall impression. GANNI therefore had successfully established copyright infringement and was entitled to an injunction and its legal costs from Steve Madden.
Comment
The decision represents a further extension at a national level of the CJEU decision in Cofomel which held that clothing could be protected as a copyright work in the EU. It will therefore be welcomed by brand owners in the fashion sector who have concerns about lookalike products or copycats encroaching on their market share. The Danish Court finding of copyright infringement is also interesting because:
- GANNI had been unable to document that Steve Madden’s design team was primarily inspired by GANNI’s shoe design, and
- There were differences between the products including the Court’s acceptance that the competing products were not in the same price range
Given that this decision dealt with the interim injunction application only, it is unlikely to be the end of the matter.
For more information and expert advice, contact a member of our Intellectual Property team.
The content of this article is provided for information purposes only and does not constitute legal or other advice.
Share this:
