A New York-based artist has named Ermenegildo Zegna in a new lawsuit, accusing the famed Italian design house of copyright infringement. According to Adam Frank Incorporated's suit, which was filed this past week in the Southern District of New York court, Zegna violated federal copyright law by “reproducing, distributing, displaying, and otherwise using, unauthorized reproductions” that infringe Adam Frank's copyright protected work, entitled, Pine, which Frank created in 2005 and registered with the U.S. Copyright Office in 2006.
According to the complaint, Frank is known largely for his work in high-end decorative lighting products, which “are available for purchase online and in brick-and-mortar retail stores throughout North America, Europe, Asia, and Australia, including the MOMA store and other design retailers around the world.” Such works include the Lumen brand series of decorative oil lamps, which, when lit, “case a shadow of Adam Frank’s original design on the wall.” Zegna, on the other hand, is the Italian men’s fashion house founded in 1910 and currently under the creative direction of Stefano Pilati, who was Hedi Slimane’s predecessor at Yves Saint Laurent (and who, according to whispers in Paris, is being considered for the designer job at Lanvin, a post left vacant when Alber Elbaz was fired in October).
Frank’s complaint alleges, “Zegna Italy created holiday-themed decorations [above, right] that reproduced the Pine design [above, left] to display in the storefronts of Zegna’s many retail locations. Zegna Italy shipped the infringing decorations to Zegna U.S. and instructed Zegna U.S. to display or otherwise use the infringing decorations in Zegna’s stores in the United States.” Frank further alleges that “Zegna U.S. uses three distinct infringing decorations in the United States.” The lawsuit alleges that such uses include:
Window displays [that] are decorative metal sheets cut to reproduce the original shape of Pine;
Window and door decals cut in the original shape of Pine on the doors and windows of its U.S. retail locations; and
Decorative ribbon bearing the original Pine design [which Zegna uses] in its retail locations in the United States.
Per Adam Frank Incorporated, “The Infringing Zegna Works are exact copies of the original, decorative portion of Pine,” and as a result, “Zegna Italy benefitted commercially from Zegna U.S.’s unauthorized uses of Pine.”
COPYRIGHT INFRINGEMENT CLAIMS
With the aforementioned in mind, Frank alleges that both Zegna Italy and Zegna U.S. are on the hook for copyright infringement. Additionally, Frank charges Zegna Italy with contributory copyright infringement, a form of secondary liability, allowing a party to be held liable for infringement even though he or she did not actually engage in the infringing activities. For instance, one who knowingly induces, causes or materially contributes to copyright infringement, by another but who has not committed or participated in the infringing acts him or herself, may be held liable as a contributory infringer if he or she had knowledge, or reason to know, of the infringement. (See, e.g., Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005); Sony Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984)).
Frank alleges that Zegna Italy “knew or should have known that Zegna U.S.’s creation of the Infringing Works was an infringement of Adam Frank’s copyright in Pine; knew or should have known that Zegna U.S.’s reproduction, display, and all other uses of the Infringing Zegna Works were infringements of Adam Frank’s copyright in Pine; caused, enabled, encouraged, facilitated, and induced Zegna U.S. to violate Adam Frank’s copyrights in Pine; and benefitted commercially from Zegna U.S.’s unauthorized uses of Pine.” As a result, “Zegna Italy’s conduct constitutes contributory infringement of Adam Frank’s copyright in Pine.”
In sum, Frank claims in its complaint that it “has been damaged and continues to be damaged by Zegna’s unauthorized uses of Pine,” and that such “unauthorized use constitutes an infringement of Adam Frank’s copyright in Pine for which it is entitled to damages [which statutory damages amounting to no less than $150,000] and injunctive relief.”