Versace and Fashion Nova settle the case a few days before the start of the trial on Copycat products
Days before the trial began, Versace and Fashion Nova settled the copyright and trademark infringement lawsuit that the high-fashion brand brought against its fast-fashion counterpart. In a July 15 order, Judge Rozella Oliver of the United States District Court for the Central District of California says the parties “have agreed to a tentative settlement and will finalize the outstanding issues before the pre-trial conference scheduled for July 16. 2021, with the district judge. The parties’ trial was due to start on Monday.
The settlement ends a year-and-a-half-year case Versace brought against notorious impersonator Fashion Nova for allegedly selling “copies and deliberate imitations of [its] most famous and recognizable designs, marks, symbols and other copyrighted material “for the purpose of” exploiting the popularity and reputation of the signature designs of Versace, and to trade in [its] goodwill and a valuable business reputation in order to generate profit and sales to line the pockets of Fashion Nova.
In the lawsuit it filed in California federal court in November 2019, Versace claimed it retains the rights to various prints and patterns it has used over the years. “In blatant disregard for [its] rights ”, the Milan-based fashion house alleged that Fashion Nova“ manufactures, markets and sells garments using the same or substantially similar copyrighted designs and trademarks and confusing trade dress ”without its authorization, thus giving rise to a likelihood that consumers could be mistaken into believing that Fashion Nova’s products were “manufactured or authorized by, or in any way associated with, Versace”, whereas this was not. By violating its copyright and trademark rights, Versace argued that the California-based fast fashion company was inflicting significant damage on it, both financially and in terms of illustrious image.
As for the designs that Versace claims to have stolen by Fashion Nova, these range from Versace’s famous black and gold Barocco print – and copyrighted – and its “Pop Hearts” print to its various “Greca” link marks. “and of course, the” Jungle Print Dress that Jennifer Lopez made famous in 2000, a configuration that consists of a “pattern of green tropical leaves and bamboo, plunging neckline extending to the navel, scalloped slit on the leg, circular brooch where the plunging neckline meets the high-cut leg, slit and long, flowing sleeves. Versace claimed that consumers immediately associate the dress design with a single source, resulting in commercial dress protections for the “distinctive combination.”
Fashion Nova responded to Versace’s complaint in January 2020, denying most of Versace’s heavily formulated claims and exposing a number of defenses. From a copyright perspective, Fashion Nova argued that even though Versace does, in fact, maintain the copyright registrations “for certain models at issue in this case”, those registrations should be invalidated because “the Versace copyright [prints] … Lack originality ”,“ are standard geometric figures and patterns ”,“ are in the public domain ”and“ are widely used in the fashion / clothing industry ”.
Regarding the trademark / trade dress infringement causes of action that Versace set out in its complaint, Fashion Nova’s attorney said these should also be barred for a number of different reasons. On the one hand, Fashion Nova argued that there is “no likelihood of confusion between [its] allegedly counterfeit products and alleged Versace brands and / or trade dress. And while there was confusion, Fashion Nova claimed that Versace’s claims are prohibited because the marks at issue – from the “Medusa Head” and “Greca” designs to the “J.Lo dress” – are functional and , therefore, are not really. protected since trademark law extends only to decorative elements, nonfunctional features.
And yet Fashion Nova claimed that even though Versace has valid trademark rights and functionality is not an issue, it should still be off the hook because it didn’t use the branded graphics and the dresses covered. of commercial clothing in a brand. capacity. Instead, he used them for decorative purposes (not source identification), and therefore infringement is not a proper claim.
The settlement, which was first reported by Bloomberg, comes nearly a year after Versace won a discovery dispute over whether Donatella Versace, the brand’s creative director and sister of its late founder Gianni Versace, is expected to testify in connection with the case. The central question in the exchanges resolved since was whether Ms Versace had relevant and unique information that Antonio Masciariello, Versace’s senior director for heritage and special projects, had not provided in a recent testimony. Fashion Nova argued that despite Masciariello’s testimony in August 2020, there was information relating to the case at issue that she was unable to obtain, which forced Ms Versace to testify.
In response to Fashion Nova’s request for the court to compel Ms Versace to testify, the fashion brand argued in its own letter that, among other things, Fashion Nova’s attempt to compel Ms Versace to testify was not a an exercise in discovering legitimate facts, but rather a leverage tactic “- presumably to pressure Versace to agree to settle the lawsuit -” and harassment “.
Siding with Versace in her August 13 order, Judge Oliver ruled that “on the general issue of the dismissal of creators or designers of commercial dresses, the Court finds convincing [Versace’s] assertion that [Fashion Nova] did not cite any case law to support the assertion that the depositions of these creators or designers are common in intellectual property litigation for the purpose of supporting a disability defense.
* The case is Gianni Versace Srl v. Fashion Nova, Inc., 2: 2019-cv-10074 (CDCal.).