Gianni Versace, S.p.A. et al v. Versace 19.69 Abbigliamento Sportivo SRL et al

Filing 275

PERMANENT INJUNCTION. Signed by Judge Haywood S. Gilliam, Jr. on 1/2/2019. (ndrS, COURT STAFF) (Filed on 1/2/2019)

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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GIANNI VERSACE, S.P.A., et al.,
Plaintiffs,

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PERMANENT INJUNCTION

v.

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Case No. 16-cv-03617-HSG

VERSACE 19.69 ABBIGLIAMENTO
SPORTIVO SRL, et al.,

United States District Court
Northern District of California

Defendants.
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WHEREAS, for the purpose of this Permanent Injunction, the following definitions shall

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apply:

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a)

“Plaintiffs” shall mean Gianni Versace, S.p.A. and Versace USA, Inc.

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b)

“Defendants” shall mean Versace 19.69 Abbigliamento Sportivo S.R.L, and

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Theofanis Papadas.

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c)

“Parties” shall mean, collectively, Plaintiffs and Defendants.

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d)

“Versace Marks” shall mean the trademarks “Versace” and “Gianni

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Versace,” including without limitation the following federal trademark registrations:

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MARK

REG. NO.

REG. DATE

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VERSACE

2,121,984

Dec. 16, 1997

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VERSACE

2,190,233

Sept. 22, 1998

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VERSACE

2,440,541

Apr. 3, 2001

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VERSACE

3,976,544

June 14, 2011

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VERSACE

4,398,385

Sept. 10, 2013

11, 14, 27, 35

GIANNI VERSACE

1,123,748

Aug. 7, 1979

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CLASS

e)

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“Infringing Marks” shall mean any word or phrase that uses, in whole or in

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part, the Versace Marks, including without limitation “Versace,” “Versace 19.69,” “Versace

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Sportivo,” “Versace 19.69 Abbigliamento Sportivo,” “Versace 19.69 Abbigliamento Sportivo

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S.R.L. Milano Italia,” and/or “Versace 19.69 Abbigliamento Sportivo S.R.L.”

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WHEREAS, on June 27, 2016, Plaintiffs initiated the above-captioned action against

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Defendants, alleging claims for federal trademark infringement, federal false designation of origin,

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federal trademark dilution, common law trademark infringement, and violations of California

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Business & Professions Code §§ 14330 et seq. and 17200 et seq. [ECF Nos. 1, 123].
WHEREAS, on February 1, 2018, the Parties submitted motions for summary judgment or

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partial summary judgment [ECF Nos. 218, 221], on February 15, 2018, the Parties submitted

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United States District Court
Northern District of California

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oppositions to these motions for summary judgment [ECF Nos. 238, 240], on February 22, 2018,

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the Parties submitted replies to these oppositions [ECF Nos. 246, 248], and, on March 29, 2018,

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the Court held a hearing on the Parties’ motions for summary judgment.
WHEREAS, on July 24, 2018, the Court issued an Order resolving the Parties’ cross-

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motions for summary judgment, and concluding that “a permanent injunction is warranted” [ECF

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No. 261], and, on August 27, 2018, the Court issued an Order requiring the Parties “to meet and

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confer regarding” the terms of a “proposed permanent injunction” and “submit briefing to the

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Court” on “any dispute[s] regarding specific provisions of the permanent injunction” [ECF No.

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267].

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1.

NOW THEREFORE, IT IS HEREBY ORDERED, upon consideration of the

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Parties’ briefing submitted pursuant to the Court’s August 27, 2018 Order, and for the reasons

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given in the Court’s Memorandum Opinion and Order dated July 24, 2018, and good cause

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appearing, that Defendants and all of their officers, agents, servants, employees, and attorneys, and

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all those in active concert or participation with any of them, are PERMANENTLY RESTRAINED

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AND ENJOINED from:

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a)

Manufacturing, importing, exporting, advertising, marketing, promoting,

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displaying, supplying, distributing, delivering, drop-shipping, offering for sale, selling, or

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transferring any goods or services which bear any Infringing Marks in the United States;
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b)

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Licensing or otherwise inducing any person to use any Infringing Marks in

the United States; and
c)

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Committing any other act which represents or which has the effect of

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representing that goods or services offered or licensed by Defendants are licensed by, authorized

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by, offered by, produced by, sponsored by, or in any other way associated with Plaintiffs.
2.

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IT IS FURTHER ORDERED that Defendants and all of their officers, agents,

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servants, employees, and attorneys, and all those in active concert or participation with any of

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them shall:
a)

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destroy all remaining inventory of all goods located in the United States

subject to this Permanent Injunction, if any, including without limitation all advertising,

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United States District Court
Northern District of California

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promotional, and marketing materials related to those goods, including without limitation store

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signs, catalogues, and any other items that bear, contain, or incorporate any Infringing Marks; or
b)

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for products that bear the Infringing Marks exclusively on a removable tag,

if any, remove and destroy such removable tag.
3.

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IT IS FURTHER ORDERED that Defendants and all of their officers, agents,

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servants, employees, and attorneys, and all those in active concert or participation with any of

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them shall remove from any websites under their control that are displayed to consumers in the

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United States, including without limitation www.v1969italia.com, any reference to any Infringing

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Marks.

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4.

IT IS FURTHER ORDERED that Defendants, within five (5) business days after

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entry of this Permanent Injunction, shall provide a copy of this Permanent Injunction and the

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Court’s Memorandum Opinion and Order dated July 24, 2018, by overnight courier or such other

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means reasonably likely to ensure receipt to all persons with whom Defendants (including all of

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Defendants’ officers, agents, servants, employees, and attorneys, and all those in active concert or

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participation with any of them) have entered into agreements to license, manufacture, import,

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export, advertise, market, promote, display, supply, distribute, deliver, drop-ship, offer for sale, or

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sell any goods or services in the United States bearing any Infringing Marks, or whom have sold

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products bearing the Infringing Marks, including without limitation each of the following persons:
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PJB Brands, Inc.; Susan Valero; Valero Enterprises, Inc.; AHQ LLC; FHQ LLC;

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Aidisas/European Fashions; B&H Apparel; Best Brands Consumer Products, Inc.; BMG Imports,

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Inc; Brilliance New York LLC; SASCO Trading Corp.; Decorware, Inc.; Delmare Manufacturing;

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EMD Group, Inc.; EZ Apparel LLC; Silhouette LLC; Five Star Accessories of New York, Inc.; H

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Best Ltd./More Time; iApparel LLC; Jezra Operating Group LLC; K&M Associates L.P.;

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Legware USA, Inc./Central Carolina Hosiery; Minx NY/Vintage Home, Inc.; Neftali, Inc.; Pem-

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America, Inc.; SaraMax Apparel Group, Inc.; Sun fashions, Inc,; V1969 BH; Versa Group LLC;

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Wiesner Products, Inc.; Yoki Group, Inc.; In Moda S.R.L.; TJX Companies; T.J. Maxx;

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Marshalls; Ross Dress for Less; Burlington Coat Factory; Steinmart; Bon-Ton; Shoe Show;
Century 21; Castle Merchandising; Duty Free Americas, Inc.; Bealls; Belks; Boskovs;

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United States District Court
Northern District of California

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Nordstrom/Nordstrom Rack; Haute Look; Bloomingdales/Bloomingdales Outlet; Macy’s

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Backstage; Lord & Taylor; Hudson Bay; Off Fifth/Saks; Amazon; Fox’s; Winners; Dr. Jay’s;

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AEFES/Army Exchange; Hudson News; Sears; BNY Handbags; Staples; Gilt; Groupon;

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Overstock; eBay; Bluefly; Last Call/Neiman Marcus; Von Maur; Zulily; and Gordmans.

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5.

IT IS FURTHER ORDERED that Defendants shall file with the Court and serve

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upon Plaintiffs within thirty (30) days after the entry of this Permanent Injunction a report in

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writing and under oath setting forth in detail the manner in which Defendants have complied with

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this Permanent Injunction.

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IT IS FURTHER ORDERED that this Permanent Injunction shall be without

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prejudice to Plaintiffs’ right to seek any other form of relief from Defendants, including without

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limitation disgorgement of Defendants’ profits, costs pursuant to Federal Rule of Civil Procedure

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54(d)(1), 28 U.S.C. § 1920, and 15 U.S.C. § 1117(a), and reasonable attorneys’ fees pursuant to 15

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U.S.C. § 1117(a).

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7.

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AND IT IS FURTHER ORDERED that this Court shall retain continuing

jurisdiction over the Parties and the above-entitled action for purposes of:

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a)

Enforcing this Permanent Injunction;

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b)

Issuing any judgment with respect to any other relief requested by

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Plaintiffs, including without limitation disgorgement of Defendants’ profits, costs pursuant to
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Federal Rule of Civil Procedure 54(d)(1), 28 U.S.C. § 1920, and 15 U.S.C. § 1117(a), and/or

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reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a); and/or
c)

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IT IS SO ORDERED.

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Modifying this Permanent Injunction as appropriate.

Dated:
______________________________________
HAYWOOD S. GILLIAM, JR.
United States District Judge

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United States District Court
Northern District of California

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