The creator of Meghan Markle’s favorite recycled plastic flats, Rothy’s, is the latest up-and-coming brand to come after Steve Madden for allegedly copying its signature products.
On Wednesday, Rothy’s legal team unveiled its response to the preemptive lawsuit filed by the footwear empire in August, defending patent rights related to its signature pointed-toe ballet flat designs and requesting Madden be forced to cease production of infringing products and to repay all profits stemming from illegal sales.
The legal battle began over the summer when Steve Madden Inc. filed the suit against Rothy’s after receiving a cease-and-desist letter on Aug. 2 that Madden later referred to as a “threat” from the direct-to-consumer shoe brand.
“Rothy’s demands and the underlying assertions of patent and trademark infringement threaten injury to Steve Madden, have created a reasonable apprehension of litigation, and have placed a cloud over Steve Madden’s rights to continue producing and selling its ballet flats,” Steve Madden Inc.’s legal counsel wrote in its initial complaint.
In that complaint, Steve Madden also alleged that Rothy’s complaints were not based on valid patent law and that the patents evoked in the cease-and-desist letter were not properly awarded. Additionally, Madden said that Rothy’s has exhibited a pattern of litigious behavior, suing companies like OESH and Giesswein for similar infringements.
Rothy’s initial letter centered on the production and distribution of a Steve Madden design called the “Rosy Flat,” which Rothy’s said was a near-direct copy of its popular “The Point” ballet-style flat. The brand said that Steve Madden infringed upon its patent, a familiar move from “one of the more notorious copyists,” according to the countersuing party’s legal counsel.
“Instead of pursuing independent product development, Madden has chosen to slavishly copy Rothy’s product design in violation of Rothy’s valuable intellectual property rights,” Rothy’s answer to Steve Madden’s complaint read. “…in an effort to unlawfully leverage the valuable goodwill Rothy’s has developed through its innovation and significant investment, Madden blatantly copied the distinct, and protected, style and appearance of Rothy’s footwear through willful patent and trade dress infringement, and unfairly competitive acts.”
Rothy’s also disagreed with the characterization of its letters as “threats” although it acknowledged it had previously brought litigation against other brands from infringing on these patents.
As a result of Steve Madden’s countersuit and confusion surrounding the validity of certain Rothy’s patents, the digitally native brand has requested a jury trial to seek permanent injunctive relief for any future infringement along with the restitution of profits earned from existing infringing products.
Steve Madden Inc. is no stranger to patent litigation. In 2017, Allbirds sued the brand for essentially the same cause when its wool sneakers were growing in popularity—the two brands later settled the dispute out of court. Before Allbirds, Skechers also sued Steve Madden in 2015 for patent infringement related to its “Go Walk” collection. Skechers also chose to settle privately.