Cult Gaia's pop-up shop at Platform.

Steve Madden and Cult Gaia are wading into the legal trenches over an eternal question in the design wars: Is there an actual intellectual property right at stake?  

The subject is Cult Gaia’s Ark bag, a basket bag with a semicircle base and a skeletal frame of bamboo radiating like spokes on a wheel. Steve Madden sued Cult Gaia last year, trying to get the court to hold that the style is not protected by trade dress and is free for anyone to use. Los Angeles-based Cult Gaia fired back that the brand’s celebrity clientele helped launch the bag into a coveted trend now decidedly associated with its name. It argued Steve Madden’s similar-looking BShipper bag is an imitation, more importantly, one that infringes on its trade dress.

The bags’ similarity might seem obvious, but that’s where the issue getting tricky. Designers seldom agree in court on what actually qualifies as protectable trade dress — and it could be almost anything, including design, configuration, size, shape and even the color of product. Steve Madden isn’t arguing that the bags aren’t similar — to the contrary, he concedes they sell an “identical style of bag,” but argues that Cult Gaia nonetheless cannot invoke any trade-dress protection because numerous other vendors also sell the same style of bag, and the design itself is simply derived from a traditional Japanese picnic bag.  

Steve Madden and Cult Gaia spent last week trading blows over which of Steve Madden’s design and branding employees Cult Gaia can depose in the case. Cult Gaia argued on Friday that it should be allowed to interview a graphic designer and branding coordinator from Steve Madden about the bags and how it promoted them.

Meanwhile, Steve Madden has been trying to persuade the court to rule that the bag is too generic, merely part of a trend, to have trade-dress protection.

“That any one person or entity can own what amounts to a fashion trend strikes at the life blood of fair competition and impedes the consumer’s ability to purchase a commodity for a fair price,” Steve Madden argued in its summary judgment motion in February.  

A representative for Cult Gaia could not immediately be reached for comment.  

To convince the court, Steve Madden would have to show that the bag’s shape isn’t a unique Cult Gaia design that trademark law would protect. To that end, Steve Madden so far has submitted evidence of what it argues are more than 400 vendors selling bags with that same design. It has also brought up the U.S. Patent and Trademark office’s own past rejection of Cult Gaia’s effort to register the Ark bag’s design, which could also sway the court’s thinking, attorneys said.

“A PTO rejection is not helpful when a court first considers the issue,” said Michael Goldberg, coleader of Pryor Cashman LLP’s fashion group.

If the court doesn’t grant Steve Madden’s motion, the case will proceed, either to settlement or trial, and Cult Gaia could face the prospect of having to show that the design has acquired a so-called “secondary meaning,” that is, that consumers associate that design with its brand.

The fight is expected to stretch out well into the summer, as both sides battle it out on the true meaning of trade dress.