NEW YORK — Score another win for the House of Versace.
A Manhattan federal court has granted Gianni Versace SpA’s request to bar Alfredo Versace from using the famed family name in connection to goods or services because of repeated violations of an existing preliminary injunction.
The latest legal round is part of an ongoing dispute dating back to 1996. Four years ago, Gianni Versace SpA, based in Milan, obtained a preliminary injunction barring Alfredo Versace, a New York designer, from using the marks of the Milan-based design house. Alfredo, however, was allowed use of his name, but with certain restrictions.
In March 2000, he was held in contempt for violating the terms of the preliminary injunction. Alfredo was alleged to be in contempt of the injunction through continuing infringing activity in watches, jeans, a new men’s wear business venture and even “Versace” branded cigarettes sold in Russia and Macau. Court documents said some items were either sold in the U.S., or marketed overseas and then shipped here, all in violation of the injunction.
In a decision by District Court Judge Peter Leisure, the court determined that Alfredo “has been involved in a clothing venture with L’Abbligiamento [Paolo Vista Ltd.] using infringing marks and failing to use the disclaimer. The record shows that this enterprise includes signs, catalogs and clothing that violate the preliminary injunction.”
Alfredo was ordered to produce to Gianni Versace and to the court a detailed statement of all net profits he derived from licensing and sales throughout the world from Feb. 4, 1998.
Furthermore, the court said it “finds that Alfredo Versace’s violations were willful, because Alfredo Versace should have had cause to doubt the legality of his actions, especially in light of this court’s earlier contempt citation for many of the same activities.”
A spokesman for Versace said: “We are very pleased with the court’s decision.”
The spokesman added that the design house will continue to monitor alleged infringing activities and take appropriate action. One concern made clear in court papers is customer confusion. Exhibits submitted to the court show, either on Web sites selling the offending merchandise or on receipts of goods sold, instances in which an Alfredo product is referred to as just “Versace.”
The design house and Alfredo have also been battling over the latter’s claim that there is a family connection between the two. In an interview with WWD four years ago when the legal brouhaha arose, Alfredo said he and Gianni were cousins but couldn’t specify the familial connection. He noted they were both born in Como, Italy.
Brian Holzberg, Alfredo’s counsel, declined comment because he hasn’t yet seen the decision. Holzberg is Alfredo’s fifth legal counsel in the case.