Gianni Versace, S.p.A. et al v. Versace 19.69 Abbigliamento Sportivo SRL et al
Filing
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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
3, 18, 25
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VERSACE
2,190,233
Sept. 22, 1998
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VERSACE
2,440,541
Apr. 3, 2001
8, 19, 20, 21, 24
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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6.
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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