Image: Bulgar

Kenneth Jay Lane made his name as the “undisputed king of costume jewelry.” The late jewelry designer had a knack for turning faux baubles into bona fide statement pieces, and in doing so, found fans in former First Ladies Jackie Kennedy and Nancy Reagan, iconic film stars Elizabeth Taylor and Audrey Hepburn, and royalty, such as Princess Diana. While Lane’s work was once viewed as little more than glorified copying, it has since been elevated to an art all its own: costume jewelry. But that does not mean that his eponymous label is immune from legal scuffles with the brands from which it takes “inspiration.”

According to a newly-filed design patent infringement and unfair competition lawsuit, at least one jewelry company is none too pleased with Kenneth Jay Lane’s designs. Famed Italian jeweler Bulgari filed suit against Kenneth Jay Lane, Inc. (“KJL”) in a New York federal court this week, alleging that the well-known costume jewelry brand is running afoul of the law by making a copycat version of its design patent-protected Serpenti ring, one that bears a price tag of more than $15,000.

This is not just a straightforward copying case, though. LVMH Moët Hennessy Louis Vuitton-owned Bulgari claims that by making the lookalike ring, KJL is in direct violation of a settlement agreement that they entered into after Bulgari sued KJL several years ago. It turns out, 135-year old Bulgari filed suit against KJL in August 2012, when it first began making and selling an allegedly infringing Serpenti bracelet, accusing the company of copyright infringement, design patent infringement and unfair competition.

Bulgari and KJL managed to settle their differences out of court within two weeks of the initiation of Bulgari’s suit, entering into a settlement agreement, dated August 30, 2012.

In accordance with their legally binding deal, Bulgari claims that KJL “agree[d] to cease and desist from designing, selling, promoting, advertising, marketing, and/or commercially exploiting … anywhere in the world, any products” that are “substantially the same in appearance” to the Serpenti design patent. KJL further agreed that it would “not use, or direct any third party to use any Bulgari products, whether they be physical products or images thereof, in the process of designing or sourcing any KJL products, without Bulgari’s express written authorization.”

In the wake of their settlement agreement, the two brands managed to co-exist in peace until June 2019 when Bulgari became aware that KJL was selling a ring that is “substantially the same as [its] design patent-protected [Serpenti]” design.

Bulgari’s Serpenti design patent (left) & KJL’s right (right)

According to its newly-filed lawsuit, Bulgari claims that after discovering that KJL was selling a ring that looked a bit too much like its legally-protected design, it provided KJL with written notice of the alleged infringement in accordance with the terms of their 2012 settlement. In response, Bulgari alleges that “KJL’s President, rather than complying with the cure provisions of the settlement agreement, initially advised that he did not know who put out the infringing product, and that ‘it appears that [they] are putting our name on something that is not being sold by us.’”

Thereafter, “KJL’s President further advised that ‘the ring in question has been found to be offered by our licensee, CZ by Kenneth Jay Lane,’” a license that KJL has maintained with jewelry-maker Rouge Jardin since 2009, in furtherance of which Rouge Jardin may use the KJL name to make and market jewelry in exchange for a fee and royalties paid to KJL.

In light of KJL’s claim that it “had absolutely no knowledge that the ring was being offered” and that  Rouge Jardin is “an independent company only affiliated with [KJL] through the license,” Bulgari has called foul. Bulgari argues the license agreement between KJL and Rouge Jardin includes a requirement that “KJL reviews and approves all jewelry products sold under the CZ by Kenneth Jay Lane.” More than that, Bulgari points to promotional materials for the CZ collection, which state that that “CZ by Kenneth Jay Lane products are designed ‘under the watchful eye of Kenneth Jay Lane’” and created a result of the “collaborative talents of these two industry icons [referring to KJL and Rouge Jardin].”

As such, Bulgari claims that both KJL and its licensee are liable for design patent infringement and unfair competition, while KJL, alone, is on the hook for an additional breach of contract claim in connection with its alleged breach of the parties’ 2012 settlement agreement.

Bulgari is seeking relief in the form of preliminary and permanent injunctions, barring it “infringing on Bulgari’s [Serpenti] design patent and unfairly competing with Bulgari in any manner.” The famed brand is also seeking “an accounting for all gains, profits and advantages derived from [the defendants’] wrongful acts,” and payment to Bulgari of any damages sustained as a result of such acts.

*The case is Bulgari S.p.A. et al v. Kenneth Jay Lane, Inc. et al, 1:19-cv-06878 (S.D.N.Y.)