Bulgari v. Kenneth Jay Lane - Complaint

Case 1:19-cv-06878 Document 1 Filed 07/24/19 Page 1 of 12
Louis S. Ederer
louis.ederer@arnoldporter.com
Matthew T. Salzmann
matthew.salzmann@arnoldporter.com
ARNOLD & PORTER KAYE SCHOLER LLP
250 West 55th Street
New York, New York 10019
Phone (212) 836-8000
Attorneys for Plaintiffs Bulgari S.p.A. and

Bulgari Corporation of America
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
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:
BULGARI S.P.A. and BULGARI : Civil Action No. ______________
CORPORATION OF AMERICA, :
:
Plaintiffs, : COMPLAINT
:
- against - :
:
KENNETH JAY LANE, INC. and ROUGE :
JARDIN JEWELRY, LLC d/b/a CZ BY :
KENNETH JAY LANE, :
:
Defendants. :
:
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Plaintiffs, by and through their undersigned attorneys, complain of Kenneth Jay Lane,
Inc. (“KJL”) and Rouge Jardin Jewelry, LLC d/b/a CZ by Kenneth Jay Lane (“Rouge Jardin”)
(collectively “Defendants”), and allege as follows:
NATURE OF THE ACTION
1. Plaintiffs seek injunctive relief and damages for KJL’s acts of breach of contract
and Defendants’ acts of design patent infringement and unfair competition, in violation of the
laws of the United States and the State of New York.

JURISDICTION AND VENUE
2. This Court has original jurisdiction over the subject matter of this action pursuant
to 28 U.S.C. §§ 1331 and 1338, and has supplemental jurisdiction pursuant to 28 U.S.C. § 1367.
Plaintiffs’ claims are predicated upon the U.S. Patent Laws, as amended, 35 U.S.C. § 271 et seq.,
and substantial and related claims under the common law of the State of New York.
3. Personal jurisdiction may be exercised over Defendants under New York CPLR §
301, on the basis that both KJL and Rouge Jardin regularly conduct business in the State of New
York, in that each is organized under the laws of the State of New York and maintains its
principal place of business in New York, New York.
4. Venue is properly founded in this District pursuant to 28 U.S.C. §§ 1391(b)(1),
1400(a) and (b), because a substantial part of the events giving rise to these claims occurred
within this District and/or because Defendants reside in this District.
THE PARTIES
5. Plaintiff Bulgari S.p.A. is an Italian corporation with its principal place of
business at Lungotevere Marzio, 11, Rome, Italy. Bulgari S.p.A. owns all design patent and
other intellectual property rights and registrations in connection with the business of selling
world famous BVLGARI brand products.
6. Plaintiff Bulgari Corporation of America is a corporation duly organized and
existing under the laws of the State of New York, and maintains its principal place of business at
625 Madison Avenue, New York, New York 10022. Bulgari Corporation of America is in the
business of distributing jewelry, watches, accessories, fragrances and other high-quality products
bearing, and/or sold under, the world famous BVLGARI brand name in the United States and
other territories. For purposes of this Complaint, except where specified, Plaintiffs Bulgari
S.p.A. and Bulgari Corporation of America are hereinafter referred to collectively as “Bulgari.”
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7. Upon information and belief, KJL is a corporation organized and existing under
the laws of the State of New York, having its principal place of business at 20 West 37th Street,
New York, New York 10018.
8. Upon information and belief, Rouge Jardin is a limited liability company
organized and existing under the laws of the State of New York, having its principal place of
business at 20 West 37th Street, New York, New York 10018.
THE BULGARI BRAND AND BUSINESS
9. Bulgari was founded by Sotirio Bulgari in 1884. In 1905, Sotirio Bulgari, along
with his sons Costantino and Giorgio, opened a shop in via Condotti in Rome, Italy, where the
Bulgari flagship store is located today.
10. From its modest beginnings, Bulgari has grown to become one of the world’s
largest and most revered jewelers. New York City was Bulgari’s first international retail
location. Today, Bulgari stores in New York City are located at exclusive locations at 730 Fifth
Avenue and 783 Madison Avenue.
11. Bulgari’s jewelry items consist of distinctive and original designs, including
design elements and features that have become synonymous with Bulgari in the eyes of the
public, consumers and the luxury goods industry.
12. Bulgari’s products are marketed to fashion-conscious consumers and are sold only
in Bulgari-owned stores, at authorized specialty retail stores, in authorized high-end department
stores, and through Bulgari’s own website.
13. Bulgari’s jewelry is world-renowned and regarded as a global symbol of fashion,
luxury and prosperity. The BVLGARI brand is highly successful and well known throughout the
United States and the world.
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14. Among Bulgari’s most important assets is the intellectual property associated with
the BVLGARI brand. In addition to its brand name — BULGARI and BVLGARI — and other
registered trademarks, Bulgari owns numerous design patents covering certain of its unique
jewelry designs.
THE 2012 ACTION AND PERMANENT INJUCTION ON CONSENT
15. On August 13, 2012, Bulgari filed an action against KJL in the United States
District Court for the Southern District of New York, captioned Bulgari S.p.A., et al. v. Kenneth
Jay Lane, Inc., 12 cv 6194 (AKH), seeking injunctive relief and damages for acts of copyright
infringement, design patent infringement and unfair competition (the “2012 Action”).
16. Among the claims Bulgari asserted against KJL in the 2012 Action was a claim
for infringement of U.S. Design Patent No. D606,894, issued on December 29, 2009, for a
unique and innovative bracelet design (the “Bulgari Design Patent”). A drawing of the Bulgari
Design Patent appears below and a true and correct copy of U.S. Design Patent No. D606,894 is
attached hereto as Exhibit A:
17. Specifically, in the 2012 Action Bulgari alleged that the following KJL bracelet
design infringed the Bulgari Design Patent (the “Accused Product”):
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18. Thereafter, Bulgari and KJL entered into a settlement agreement, dated as of
August 30, 2012, resolving the 2012 Action (the “2012 Settlement Agreement”). A true and
correct copy of the 2012 Settlement Agreement is attached as Exhibit B.
19. Pursuant to Paragraph 2 of the 2012 Settlement Agreement, KJL:
agree[d] to cease and desist from designing, creating, manufacturing,

importing, sourcing, exporting, distributing, supplying, purchasing,
offering for sale, selling, promoting, advertising, marketing, commercially
exploiting and/or trafficking in, anywhere in the world, any products
constituting or bearing: (i) the Accused Products; (ii) any design …
substantially the same in appearance to the Bulgari Design Patent.
Exhibit B at ¶ 2(a).
20. KJL further “agree[d] that it will 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.”
Exhibit B at ¶ 2(b).
21. As part of the 2012 Settlement Agreement, KJL also agreed to the Court’s entry
of a Permanent Injunction on Consent, which the Court entered on September 28, 2012. A true
and correct copy of the Permanent Injunction on Consent is attached as Exhibit C.
22. Among other things, the Permanent Injunction on Consent provides that:
1. KJL and its divisions, subsidiaries and related companies, as well

as its agents, servants, employees, attorneys and all natural or legal
persons acting on its behalf, or in concert with any of them, shall be
PERMANENTLY ENJOINED and RESTRAINED, from the date of this
judgment forward from attempting to do or causing to be done, directly or
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indirectly, by any means, method, or device whatsoever, or by any persons

whomsoever, the following acts:
…
b. Importing, manufacturing, purchasing, selling, offering for

sale, advertising, promoting and/or distributing goods, products and/or
other merchandise that contain or consist of designs that are substantially
the same as the design protected by [] Bulgari’s U.S. Design Patent No.
D606,894[], as depicted below:
including without limitation the following product sold by KJL:
Exhibit C at ¶ 1(b).
KJL’S BREACH OF THE 2012 SETTLEMENT AGREEMENT AND VIOLATION OF

THE PERMANENT INJUCNTION ON CONSENT AND DEFENDANTS’ ACTS OF
INFRINGEMENT AND UNFAIR COMPETITION
23. Notwithstanding the 2012 Settlement Agreement and Permanent Injunction on
Consent, in or around June 2019, Bulgari became aware of the ring style depicted below, which
is comprised of a design that is substantially the same as the Bulgari Design Patent, being sold
under the “CZ by Kenneth Jay Lane” brand name (the “Infringing Product”):
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24. Accordingly, and as required under Paragraph 6(a)(i) of the 2012 Settlement
Agreement, by letter dated June 12, 2019, Bulgari provided KJL with written notice of (a) its
infringement of the Bulgari Design Patent, and (b) contempt of the Permanent Injunction on
Consent.
25. In response, KJL’s President, rather than complying with the cure provisions of
the 2012 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 “[t]he ring in question has been found to
be offered by our licensee, CZ by Kenneth Jay Lane. They are an independent company only
affiliated with us through the license.” KJL’s President also stated “I / Kenneth Jay Lane, Inc.
had absolutely no knowledge that the said ring was being offered. I suggest you find the
infringing party [referring to Rouge Jardin]”.
26. Upon information and belief, KJL first granted Rouge Jardin an exclusive license
to manufacture and sell jewelry under the “CZ by Kenneth Jay Lane” brand name in or around
2009, approximately three years prior to the 2012 Settlement Agreement.
27. Upon information and belief, the terms of KJL’s license agreement with Rouge
Jardin obligate KJL to review and approve all jewelry products sold under the “CZ by Kenneth
Jay Lane” brand name including, without limitation, the Infringing Product.
28. In marketing and promoting “CZ by Kenneth Jay Lane” brand jewelry products,
Rouge Jardin’s promotional materials state that it “joined forces” with KJL in 2009, that “CZ by
Kenneth Jay Lane” products are designed “under the watchful eye of Kenneth Jay Lane”, and
that the “collaborative talents of these two industry icons [referring to KJL and Rouge Jardin]
resulted in a fabulous nouveaux CZ jewelry collection that is being offered internationally.”
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FIRST CLAIM FOR RELIEF

BREACH OF THE 2012 SETTLEMENT AGREEMENT
(KJL)
29. The allegations set forth in paragraphs 1 through 28 hereof are adopted and
incorporated by reference as if fully set forth herein.
30. The 2012 Settlement Agreement, entered into to resolve the 2012 Action, is a
valid contract, supported by good and valuable consideration.
31. A material term of the 2012 Settlement Agreement was KJL’s undertaking to
“cease and desist from designing, creating, manufacturing, importing, sourcing, exporting,
distributing, supplying, purchasing, offering for sale, selling, promoting, advertising, marketing,
commercially exploiting and/or trafficking in, anywhere in the world, any products constituting
or bearing: (i) the Accused Products; (ii) any design … substantially the same in appearance to
the Bulgari Design Patent.”
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32. By continuing to approve or otherwise authorize and commercially exploit
jewelry products bearing designs that are substantially the same in appearance as the Bulgari
Design Patent, KJL has materially breached the terms of the 2012 Settlement Agreement.
33. Upon information and belief, by its conduct, KJL intends to continue to breach
the terms of the 2012 Settlement Agreement by allowing Rouge Jardin to design and distribute
jewelry products under the “CZ by Kenneth Jay Lane” brand name that infringe Bulgari’s rights
in the Bulgari Design Patent.
34. Upon information and belief, by its conduct, KJL has made and will continue to
make profits and gains to which it is not in law or equity entitled.
35. KJL’s acts have irreparably damaged and, unless enjoined, will continue to
irreparably damage Bulgari, and Bulgari has no adequate remedy at law.
SECOND CLAIM FOR RELIEF

DESIGN PATENT INFRINGEMENT
(KJL & Rouge Jardin)
37. Bulgari is the lawful owner of the Bulgari Design Patent (U.S. Design Patent No.
D606,894).
38. Defendants, without authorization from Bulgari, have designed, manufactured,
distributed, advertised, promoted, sold and offered for sale jewelry products that are colorable
imitations of the Bulgari Design Patent.
39. Upon information and belief, Defendants had actual or constructive knowledge of
the Bulgari Design Patent, and have willfully manufactured, distributed, advertised, promoted,
sold and offered for sale jewelry products embodying designs that are substantially the same as
the design protected by U.S. Design Patent No. D606,894.
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40. Upon information and belief, by their acts, Defendants have made and will make
substantial profits and gains to which they are not in law or in equity entitled.
41. Upon information and belief, Defendants intend to continue their willfully
infringing acts unless restrained by this Court.
42. Defendants’ acts have irreparably damaged and, unless enjoined, will continue to
THIRD CLAIM FOR RELIEF

COMMON LAW UNFAIR COMPETITION
(KJL & Rouge Jardin)
44. Defendants’ aforesaid conduct constitutes unfair competition with Bulgari under
the common law of the State of New York.
45. Defendants’ acts have irreparably damaged and, unless enjoined, will continue to
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs demand judgment against Defendants as follows:
1. Finding that, (a) as to Count 1, KJL willfully breached the 2012 Settlement
Agreement; (b) as to Count 2, Defendants engaged in willful infringement of the Bulgari Design
Patent, and (c) as to Count 3, Defendants engaged in willful unfair competition under the
common law of the State of New York.
2. That Defendants and all those acting in concert with them, including their
subsidiaries, affiliates, divisions, officers, directors, principals, agents, servants, employees,
successors and assigns, and all of those on notice of this action, be preliminarily and permanently
enjoined from:
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(a) designing, manufacturing, importing, distributing, supplying, promoting,
marketing, advertising, offering for sale and/or selling the Infringing Product and other goods
that contain or consist of designs that are substantially the same as the design protected by
Bulgari’s U.S. Design Patent No. D606,894; and
(b) unfairly competing with Bulgari in any manner.
3. That Defendants be required to recall all infringing items and advertising and
promotional materials, and thereafter to deliver up for destruction all infringing designs, artwork,
packaging, advertising and promotional materials, and any means of making such infringing
items.
4. That Defendants be directed to file with the Court and serve upon Bulgari, within
thirty (30) days after service of a judgment or order upon Defendants, a written report under oath
setting forth in detail the manner in which Defendants have complied with the requirements set
forth above in paragraphs 1 through 3.
5. That Defendants be directed to account to Bulgari for all gains, profits and
advantages derived from Defendants’ wrongful acts.
6. That Defendants pay to Bulgari any damages sustained by Bulgari by reason of
the their wrongful acts, together with interest thereon.
7. That Bulgari be awarded reasonable attorneys’ fees under 35 U.S.C. § 285.
8. That Bulgari be awarded Rouge Jardin’s total profit on the sale of colorable
imitations of the Bulgari Design Patent under 35 U.S.C. § 289.
9. That Bulgari be awarded liquidated damages in the amount of $25,000.00 as
against KJL, pursuant to the terms of the 2012 Settlement Agreement.
10. That KJL pay to Bulgari the costs and disbursements of this action, pursuant to
the terms of the 2012 Settlement Agreement.
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11. That Bulgari be awarded pre-judgment interest on any monetary award issued to
Bulgari hereunder.
12. That Bulgari be awarded such additional and further relief as the Court deems just
and proper.
Dated: New York, New York ARNOLD & PORTER

July 24, 2019 KAYE SCHOLER LLP
By: /s/ Louis S. Ederer o

Louis S. Ederer
louis.ederer@arnoldporter.com
Matthew T. Salzmann
matthew.salzmann@arnoldporter.com
250 West 55th Street
Phone (212) 836-8000
Attorneys for Plaintiffs Bulgari S.p.A. and

Bulgari Corporation of America
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Case 1:19-cv-06878 Document 1-1 Filed 07/24/19 Page 1 of 5
EXHIBIT A
EXHIBIT B
SETTLEMENT AGREEMENT
THIS AGREEMENT is made and entered into by and among Bulgari S.p.A, a
corporation duly organized and existing under the laws of Italy, having its principal place of
business in Rome, Italy, and Bulgari Corporation of America, a corporation duly organized and
existing under the laws of the State of New York, having its principal place of business at 625
Madison Avenue, New York, New York (collectively, “Bulgari”), on the one hand, and Kenneth
Jay Lane, Inc. (“KJL”), a corporation duly organized and existing under the laws of the State of
New York, having its principal place of business at 20 West 37th Street, New York, New York,
on the other hand. Bulgari and KJL may sometimes be referred to herein individually as a
“Party” and collectively as the “Parties.”
WITNESSETH
WHEREAS, Bulgari is the owner of U.S. Copyright Registration No. VA-1-727-917,
issued on July 19, 2010, for PAOLO BULGARI CROSS PRODUCTS CATALOGUE 2010 (the
“Registration).
WHEREAS, the Registration covers, among other jewelry designs, the following
distinctive ring design (the “Bulgari Copyrighted Ring Design”):
WHEREAS, KJL manufactured, imported, advertised, promoted, distributed, sold and/or

offered for sale, and/or is causing to be manufactured, imported, advertised, promoted,
distributed, sold and/or offered for sale, without authorization or license, the following article of
jewelry that, Bulgari asserts, is an imitation of the Bulgari Copyrighted Ring Design (the
“Accused Ring Product”):
Kenneth Jay Lane Accused Ring Product
WHEREAS, Bulgari owns a U.S. design patent (U.S. Design Patent No. D606,894),
issued on December 29, 2009, for the following distinctive bracelet design (the “Bulgari Design
Patent”):
Bulgari Design Patent Actual Bulgari Bracelet
WHEREAS, KJL manufactured, imported, advertised, promoted, distributed, sold and/or
offered for sale, and/or is causing to be manufactured, imported, advertised, promoted,
distributed, sold and/or offered for sale, without authorization or license, the following article of
jewelry that, Bulgari asserts, is an imitation of the Bulgari Design Patent (the “Accused Bracelet
Product”):
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Kenneth Jay Lane Accused Bracelet Product
WHEREAS, the Accused Ring Product and the Accused Bracelet Product are hereinafter
referred to collectively as the “Accused Products.”
WHEREAS, on August 13, 2012, Bulgari filed an action against KJL with respect to the
Accused Products in the United States District Court for the Southern District of New York,
captioned Bulgari S.p.A., et al. v. Kenneth Jay Lane, Inc., 12 cv 6194 (AKH), seeking injunctive
relief and damages for KJL’s alleged acts of copyright infringement, design patent infringement
and unfair competition (the “SDNY Action”);
WHEREAS, in consideration of the promises, releases, payments and undertakings
hereinafter set forth, the Parties now desire to fully and finally settle all claims, causes of actions,
disputes and controversies arising out of or relating to the transactions, occurrences and
allegations set forth above, pursuant to the terms set forth below.
NOW, THEREFORE, for good and valuable consideration, including but not limited to
the mutual respective covenants, releases and undertakings of the Parties herein contained, the
Parties hereto agree as follows:
1. Representations and Warranties
KJL represents and warrants that:
(a) It has previously provided to Bulgari’s counsel, by emails dated July 25, 2012,
August 3, 2012, and August 14, 2012, complete and accurate information with respect to the
Accused Ring Product, including (i) the total number of units of the Accused Ring Product
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purchased by KJL (246); (ii) the total number of units of the Accused Ring Product sold by KJL
(240); (iii) the total number of units of the Accused Ring Product that remain in KJL’s inventory
(6); and (iv) the party from which KJL purchased the Accused Bracelet Product (Gem-Craft,
Inc., 1420 Elmwood Avenue, Cranston, Rhode Island).
(b) It has previously provided to Bulgari’s counsel, by letters dated December 13,
2011 and January 20, 2012, complete and accurate information with respect to the Accused
Bracelet Product, including (i) the total number of units of the Accused Bracelet Product
purchased by KJL (70); (ii) the total number of units of the Accused Bracelet Product sold by
KJL (61); (iii) the total number of units of the Accused Bracelet Product that remain in KJL’s
inventory (0 — 40 units of the Accused Bracelet Product having been destroyed in or around
February 2012, and 9 units of the Accused Bracelet Product having been returned to KJL’s
supplier, Design By Nova); and (iv) the party from which KJL purchased the Accused Bracelet
Design (Design By Nova, 1000 6th Avenue, New York, New York).
(c) It has not used, or directed any third party to use any Bulgari products, whether
they be physical products or images thereof, in the process of designing or sourcing any jewelry
products in KJL’s current product selection.
2. Cessation of Sale of the Accused Products
(a) KJL agrees to cease and desist from designing, creating, manufacturing,
importing, sourcing, exporting, distributing, supplying, purchasing, offering for sale, selling,
promoting, advertising, marketing, commercially exploiting and/or trafficking in, anywhere in
the world, any products constituting or bearing:
(i) the Accused Products;
(ii) any design substantially similar in overall appearance to the Bulgari
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Copyrighted Ring Design and/or substantially the same in appearance to the Bulgari Design
Patent;
(iii) any design substantially similar in overall appearance to any Bulgari
design that is the subject of copyright protection, whether such design has been registered by
Bulgari or not;
(iv) any design substantially the same in appearance to any Bulgari design that
is the subject of a subsisting U.S. design patent owned by Bulgari; and/or
(v) any design confusingly similar to any Bulgari design that is the subject of
trademark or trade dress protection.
(b) KJL agrees that it will 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.
3. Settlement Payment
Upon the execution of this Agreement by all Parties, KJL shall make a settlement
payment to Bulgari in the form of a check in the amount of $25,000.00 (the “Settlement
Payment”) made payable to Bulgari S.p.A.
4. Disposition of Inventory
Within three (3) business days following the execution of this Agreement, KJL shall turn
over to Bulgari’s counsel for destruction all remaining inventory of the Accused Products.
5. Released Claims
It is acknowledged and agreed that Bulgari is relying on the accuracy of the
representations and warranties set forth in Paragraph 1 above. Based on the accuracy of those
representations and warranties, and in consideration of the full and faithful performance of all of
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the terms and conditions of this Agreement:
(a) Bulgari, for itself and its legal successors and assigns, hereby releases and forever
discharges KJL, its shareholders, officers, directors, employees, parent companies, subsidiaries,
affiliates, legal successors and assigns, from any and all claims, including attorney fees,
demands, liabilities, causes of action, or any debts, obligations, or other costs of any kind or
nature arising from or related to the sale of the Accused Products, but only as to the number of
units of the Accused Products it has reported that it purchased and/or sold, as set forth in
Paragraph 1 of this Agreement.
(b) KJL, for itself and its legal successors and assigns, hereby releases and forever
discharges Bulgari, its shareholders, officers, directors, employees, subsidiaries, affiliates, legal
successors and assigns, from any and all claims, demands, liabilities, causes of action, or any
debts, obligations or other costs of any kind or nature arising out of or in connection with any
claims that could have been asserted by KJL against Bulgari, arising from or related to its
purchase and sale of the Accused Products.
6. Future Use of Bulgari’s Intellectual Property
(a) In the event that Bulgari discovers that KJL is importing, purchasing,
manufacturing, selling, offering for sale, advertising, promoting, marketing and/or distributing
product anywhere in the world that, according to Bulgari, infringes any of Bulgari’s intellectual
property (trademarks, trade dress, copyrights, and/or design patents):
(i) Bulgari shall provide KJL with a written notice of the claimed infringing
conduct (the “Notice of Infringement”);
(ii) No later than five (5) days from the date the Notice of Infringement is
received, KJL may cure the claimed infringement by:
(A) providing written confirmation to Bulgari that the claimed
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infringing products have been removed from sale;
(B) disclosing the quantity of the claimed infringing products
produced, shipped, sold and remaining in inventory;
(C) agreeing to the destruction of all of the claimed infringing products
that are in inventory or that remain unsold; and
(D) paying to Bulgari three (3) times the gross profit on the wholesale
price of the claimed infringing products within thirty (30) days from the date the Notice of
Infringement is received.
(b) In the event KJL fails to cure in accordance with the foregoing provisions, Bulgari
may bring an action against KJL and seek any relief available to it with respect to the claimed
infringement(s) and/or for breach of this Agreement. If on a motion for preliminary injunction in
any such action Bulgari demonstrates that it is likely to succeed on the merits of its claim for
breach of KJL’s material obligations under this Agreement and/or for trademark infringement,
trade dress infringement, copyright infringement, or design patent infringement, then KJL shall
not contest the issuance of such injunctive relief on the grounds that Bulgari has not shown
irreparable harm, or that the balance of hardships tips in KJL’s favor. In addition, should Bulgari
prevail in such action, it shall be entitled to:
(i) recover three (3) times the gross profit on the wholesale price of each
infringing product, calculated as KJL’s wholesale sales price minus KJL’s cost of goods, plus
any pre-judgment interest on such amount, or at Bulgari’s election, liquidated damages in the
amount of $25,000.00 per infringement;
(ii) recover the court costs and reasonable attorney’s fees it has incurred in
litigating the action; and
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(iii) any injunction to which Bulgari may be entitled, whether preliminary or
permanent, shall include a provision requiring KJL to segregate all remaining inventory of the
infringing products for destruction.
7. Breach of this Agreement
The released matters referred to in Paragraph 5 above shall not encompass any claim for
breach of this Agreement and/or any claim for contempt of the Permanent Injunction On Consent
referred to in Paragraph 9 below. Any suit for breach of this Agreement shall be brought in the
United States District Court for the Southern District of New York, and may be referred to the
Hon. Alvin K. Hellerstein as a related action to the SDNY Action. With respect to any such suit,
the Parties waive any objection that they might have now or hereafter to the jurisdiction and/or
venue of any such suit, and hereby waive any claim or defense of lack of jurisdiction and/or
inconvenient forum. The prevailing party in any such suit shall recover its costs and reasonable
attorney’s fees from the other party.
8. Governing Law
This agreement shall be interpreted under the laws of the State of New York.
9. Permanent Injunction
Concurrently with the full execution and delivery of this Agreement, the Parties shall
conclude the SDNY Action by executing and submitting a Permanent Injunction On Consent, in
the form annexed hereto as Schedule A, to the Chambers of the Hon. Alvin K. Hellerstein, with a
request that it be “So Ordered.”
10. No Coercion, Entire Agreement
The undersigned further represent that no promise, inducement or agreement not
contained or referred to in this Agreement has been made to them, and that this Agreement
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represents the entire agreement between the Parties and cannot be varied or amended except by a
written document signed by the Parties. No unexecuted, preliminary or interim drafts of this
Agreement can be referred to and/or relied upon by any party in any subsequent proceedings
between the Parties in any suit for breach of this Agreement.
11. Binding Effect
All undertakings herein by any Party shall be binding upon that Party’s successors,
assigns, affiliates, parent companies, related companies, subsidiaries, officers, directors, agents,
shareholders, representatives, and principals.
12. Facsimile Execution
A facsimile signature shall be as valid as an original signature for all purposes hereunder.
13. Counterparts
This Agreement may be executed in two or more counterparts, each of which shall be
deemed an original, but all of which together shall constitute one and the same document.
13. Notices
All notices and other communications hereunder shall be in writing (including telecopy
or similar writing) and shall be sent, delivered, or mailed, addressed or telecopied to:
(a) If to Bulgari:
Laurence Morel-Chevillet, Esq.

IP Senior Counsel
Bulgari S.p.A.
Lungotevere Marzio 11
00186 Roma
Fax. +39 06 688 10 552
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with a copy to:
Louis S. Ederer, Esq.

Arnold & Porter LLP
399 Park Avenue
Fax: 212.715.1399
(b) If to KJL:
Chris Sheppard
Executive Vice President
Kenneth Jay Lane, Inc.
20 West 37 Street, 9th Floor
Fax: 212.629.5238
14. Authority to Execute
The undersigned represent that they have authority to execute this Agreement on behalf
of the respective Parties and to carry out all obligations imposed hereunder. All corporate
authorizations or approvals have been undertaken to enter into this Agreement, and the execution
of this Agreement will not violate any articles, by-laws, contracts, statutes, laws or other duties
or obligations.
* * *
10
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Bulgari v. Kenneth Jay Lane - Complaint

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Case 1:19-cv-06878 Document 1 Filed 07/24/19 Page 1 of 12

Attorneys for Plaintiffs Bulgari S.p.A. and

UNITED STATES DISTRICT COURT

(collectively “Defendants”), and allege as follows:

NATURE OF THE ACTION

laws of the United States and the State of New York.

JURISDICTION AND VENUE

principal place of business in New York, New York.

4. Venue is properly founded in this District pursuant to 28 U.S.C. §§ 1391(b)(1),

within this District and/or because Defendants reside in this District.

5. Plaintiff Bulgari S.p.A. is an Italian corporation with its principal place of

world famous BVLGARI brand products.

6. Plaintiff Bulgari Corporation of America is a corporation duly organized and

New York, New York 10018.

8. Upon information and belief, Rouge Jardin is a limited liability company

business at 20 West 37th Street, New York, New York 10018.

THE BULGARI BRAND AND BUSINESS

Bulgari flagship store is located today.

Avenue and 783 Madison Avenue.

public, consumers and the luxury goods industry.

in Bulgari-owned stores, at authorized specialty retail stores, in authorized high-end department

stores, and through Bulgari’s own website.

13. Bulgari’s jewelry is world-renowned and regarded as a global symbol of fashion,

United States and the world.

THE 2012 ACTION AND PERMANENT INJUCTION ON CONSENT

attached hereto as Exhibit A:

design infringed the Bulgari Design Patent (the “Accused Product”):

correct copy of the 2012 Settlement Agreement is attached as Exhibit B.

19. Pursuant to Paragraph 2 of the 2012 Settlement Agreement, KJL:

agree[d] to cease and desist from designing, creating, manufacturing,

and correct copy of the Permanent Injunction on Consent is attached as Exhibit C.

1. KJL and its divisions, subsidiaries and related companies, as well

indirectly, by any means, method, or device whatsoever, or by any persons

b. Importing, manufacturing, purchasing, selling, offering for

including without limitation the following product sold by KJL:

KJL’S BREACH OF THE 2012 SETTLEMENT AGREEMENT AND VIOLATION OF

23. Notwithstanding the 2012 Settlement Agreement and Permanent Injunction on

infringing party [referring to Rouge Jardin]”.

2009, approximately three years prior to the 2012 Settlement Agreement.

resulted in a fabulous nouveaux CZ jewelry collection that is being offered internationally.”

FIRST CLAIM FOR RELIEF

incorporated by reference as if fully set forth herein.

valid contract, supported by good and valuable consideration.

the Bulgari Design Patent.”

32. By continuing to approve or otherwise authorize and commercially exploit

in the Bulgari Design Patent.

make profits and gains to which it is not in law or equity entitled.

irreparably damage Bulgari, and Bulgari has no adequate remedy at law.

SECOND CLAIM FOR RELIEF

incorporated by reference as if fully set forth herein.

38. Defendants, without authorization from Bulgari, have designed, manufactured,

imitations of the Bulgari Design Patent.

the design protected by U.S. Design Patent No. D606,894.

infringing acts unless restrained by this Court.

irreparably damage Bulgari, and Bulgari has no adequate remedy at law.

THIRD CLAIM FOR RELIEF

incorporated by reference as if fully set forth herein.

the common law of the State of New York.

irreparably damage Bulgari, and Bulgari has no adequate remedy at law.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs demand judgment against Defendants as follows:

common law of the State of New York.

subsidiaries, affiliates, divisions, officers, directors, principals, agents, servants, employees,

(a) designing, manufacturing, importing, distributing, supplying, promoting,