Case 1:16-cv-00649-JGK Document 10 Filed 01/29/16 Page 1 of 13

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
ADAM FRANK INCORPORATED,

Civil Action No. 16-cv-0649

Plaintiff,
v.
ERMENEGILDO ZEGNA CORPORATION and
ERMENEGILDO ZEGNA HOLDITALIA S.P.A.,
Defendants.

COMPLAINT AND DEMAND FOR JURY

TRIAL
ECF Case

Plaintiff Adam Frank Incorporated, by its attorneys Saunders & Silverstein LLP, brings this
action against the defendants Ermenegildo Zegna Corporation and Ermenegildo Zegna Holditalia
S.p.A. (individually, and collectively, Defendants or Zegna). As grounds for this complaint,
Adam Frank Incorporated alleges the following, upon actual knowledge with respect to itself and its
own acts, and upon information and belief as to other matters:
Parties
1.

Plaintiff Adam Frank Incorporated (Adam Frank) is a corporation duly organized

under the laws of the State of New York with its principal place of business at 203 Columbia Street,
Brooklyn, New York 11231.
2.

Defendant Ermenegildo Zegna Corporation (Zegna U.S.) is a corporation duly

organized under the laws of the State of New York with its principal place of business at 100 West
Forest Avenue, Unit A, Englewood, New Jersey 07631.
3.

Defendant Ermenegildo Zegna Holditalia S.p.A. (Zegna Italy) is a Societ per

azioni duly organized under the laws of Italy with its principal place of business at Via Roma 99/100,
13835 Trivero (BI) Italy.
Nature of the Complaint
4.

This is an action for copyright infringement. Defendants violated the copyright laws,

17 U.S.C. 101 et seq., by reproducing, distributing, displaying, and otherwise using, unauthorized

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reproductions infringing on Adam Franks original copyrighted design without its consent. Adam
Frank seeks damages and appropriate injunctive relief, and recovery of its costs and attorneys fees.
Jurisdiction and Venue
5.

This Court has jurisdiction over the subject matter of this Complaint under 28

U.S.C. 1331 and 1338(a).

6.

This Court has personal jurisdiction over Zegna U.S. because Zegna U.S. is

organized under the laws of the State of New York.

7.

This Court has personal jurisdiction over Zegna Italy pursuant to N.Y. C.P.L.R. 302

because Zegna Italy regularly conducts business in New York and has reproduced, distributed,
displayed, and otherwise used, unauthorized reproductions infringing on Adam Franks original
copyrighted design within the State, causing tortious injury throughout the State of New York.
8.

Venue is appropriate under 28 U.S.C. 1391(b) and 1400(a).

Facts

9.

Adam Frank designs, manufactures, and sells high-end decorative lighting products,

including the Lumen brand series of decorative oil lamps.

10.

Each product in the highly popular Lumen series consists of an oil or LED lamp

flanking an acid-etched stainless steel image. When lit, the Lumen lamp casts a soft shadow of the
image on the wall.
11.

Adam Franks products are available for purchase in online and brick-and-mortar

retail stores throughout North America, Europe, Asia, and Australia, including the MOMA store and
other design retailers around the world.
12.

In or around 2005, Adam Frank created the Lumen lamp entitled Pine. When lit, the

Pine lamp cases a shadow of Adam Franks original design on the wall. Images of Pine appear below:

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13.

Adam Frank has registered its copyright to Pine with the United States Copyright

Office. Pine has an effective registration date of May 3, 2006, and was assigned registration number
VA 1-370-426. A true and correct copy of the Certificate of Registration and the deposit material
submitted with the application for registration is attached hereto as Exhibit A.
14.

Zegna is a luxury mens fashion brand with retail locations worldwide, including at

least 39 retail locations in the United States.

15.

Upon information and belief, Zegna Italy created holiday-themed decorations that

reproduced the Pine design to display in the storefronts of Zegnas many retail locations.
16.

Upon information and belief, Zegna Italy shipped the infringing decorations to

Zegna U.S. and instructed Zegna U.S. to display or otherwise use the infringing decorations in
Zegnas stores in the United States.
17.

Since at least as early as November 2015, Zegna U.S. has used unauthorized copies

of Pine in the form of decorations furnished by Zegna Italy, in order to promote Defendants
products and retail services, and to draw customers into Defendants many retail locations in the
United States.
18.

Zegna U.S. uses three distinct infringing decorations in the United States. The

window displays are decorative metal sheets cut to reproduce the original shape of Pine (the Zegna
Displays). The Zegna Displays are mounted to a lamp and illuminated, causing a soft shadow of the
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infringing design to be cast.

19.

Zegna U.S. also uses window and door decals cut in the original shape of Pine on the

doors and windows of its U.S. retail locations (the Zegna Decals).
20.

Finally, Zegna U.S. uses decorative ribbon bearing the original Pine design in its

retail locations in the United States (the Zegna Ribbon).

21.

The Zegna Displays, Zegna Decals, and Zegna Ribbon are collectively referred to as

the Infringing Zegna Works.

22.

The Infringing Zegna Works are exact copies of the original, decorative portion of

23.

Below are representative examples of the Infringing Zegna Works.

Pine.

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24.

Adam Frank has suffered and continues to suffer damages and irreparable injury as

a result of Defendants infringement of its copyrights.

Count I
Copyright Infringement
(Against Both Defendants)
25.

Adam Frank incorporates by reference paragraphs 124 of this Complaint, inclusive,

as if the same were fully set forth herein.

26.

Adam Frank is the owner of all right, title, and interest in and to the copyright of

27.

Adam Frank has never authorized, licensed, or otherwise permitted Defendants to

Pine.

reproduce, display, or otherwise use Pine or any copies thereof.

28.

Without Adam Franks authorization, Defendants have reproduced, displayed, and

otherwise used Pine. Such unauthorized use constitutes an infringement of Adam Franks copyright

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for which it is entitled to damages and injunctive relief.

29.

Adam Frank has been damaged and continues to be damaged by Defendants

infringement of its copyright in Pine. Such unauthorized use constitutes an infringement of Adam
Franks copyright in Pine for which it is entitled to damages and injunctive relief.
Count II
Contributory Copyright Infringement
(Against Zegna Italy)
30.

Adam Frank incorporates by reference paragraphs 129 of this Complaint, inclusive,

as if the same were fully set forth herein.

31.

Zegna Italy knew or should have known that Zegna U.S.s creation of the Infringing

Zegna Works was an infringement of Adam Franks copyright in Pine.

32.

Zegna Italy 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 Franks copyright in
Pine.
33.

Zegna Italy caused, enabled, encouraged, facilitated, and induced Zegna U.S. to

violate Adam Franks copyrights in Pine.

34.

Zegna Italy benefitted commercially from Zegna U.S.s unauthorized uses of Pine.

35.

Zegna Italys conduct constitutes contributory infringement of Adam Franks

copyright in Pine.
36.

Adam Frank has been damaged and continues to be damaged by Zegna Italys

contributory infringement of its copyright in Pine. Such contributory infringement constitutes an

infringement of Adam Franks copyright for which it is entitled to damages and injunctive relief.
Prayer for Relief
WHEREFORE, Adam Frank prays that this Court:
1.

Issue a preliminary order enjoining Zegna U.S. from all further use of Pine during
the pendency of this litigation;

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2.

Issue a preliminary order enjoining Zegna Italy from all further use of Pine during
the pendency of this litigation;

3.

Issue an order that Zegna U.S. and its officers, agents, servants, employees,
successors, assigns, affiliates, attorneys and all others acting in concert and privity
with any of them be required to deliver up for impoundment all Infringing Zegna
Works and all other infringing copies and/or derivatives of Pine, in all forms
whatsoever, which are in Zegna U.S.s possession or under its control;

4.

Issue an order that Zegna Italy and its officers, agents, servants, employees,
successors, assigns, affiliates, attorneys and all others acting in concert and privity
with any of them be required to deliver up for impoundment all Infringing Zegna
Works and all other infringing copies and/or derivatives of Pine, in all forms
whatsoever, which are in Zegna Italys possession or under its control;

5.

Issue a permanent injunction requiring Zegna U.S., its agents, servants, employees,
officers, successors, licensees, and assigns and all persons acting in concert or
participation with each or any of them, or for them, to cease and desist from
infringing Pine, in any manner;

6.

Issue a permanent injunction requiring Zegna Italy, its agents, servants, employees,
officers, successors, licensees, and assigns and all persons acting in concert or
participation with each or any of them, or for them, to cease and desist from
infringing Pine, in any manner;

7.

Award Adam Frank all of its direct and consequential damages arising from Zegna
U.S.s infringement of Adam Franks copyright;

8.

Award Adam Frank all of its direct and consequential damages arising from Zegna
Italys infringement of Adam Franks copyright;

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9.

Award Adam Frank all of its actual damages as well as all of profits earned by Zegna
U.S. from the infringement of Adam Franks copyright in accordance with 504(b)
of the Copyright Act;

10.

Award Adam Frank all of its actual damages as well as all of profits earned by Zegna
Italy from the infringement of Adam Franks copyright in accordance with 504(b)
of the Copyright Act;

11.

Issue an order that Zegna U.S. be required to pay Adam Frank such statutory
damages within the provisions of the Copyright Act in a sum not less than $750.00,
nor more than $30,000.00, or if the Court finds that the infringement was
committed willfully, such statutory damages within the provisions of the Copyright
Act in a sum up to and including $150,000.00;

12.

Issue an order that Zegna Italy be required to pay Adam Frank such statutory
damages within the provisions of the Copyright Act in a sum not less than $750.00,
nor more than $30,000.00, or if the Court finds that the infringement was
committed willfully, such statutory damages within the provisions of the Copyright
Act in a sum up to and including $150,000.00;

13.

Award Adam Frank its reasonable award of attorneys fees, costs of suit, and
interest; and

14.

Award Adam Frank such other and further relief as the Court deems just and
proper.

PLAINTIFF DEMANDS A TRIAL BY JURY ON ALL COUNTS.

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Respectfully submitted,
SAUNDERS & SILVERSTEIN LLP
Dated: January 28, 2016

/s/Aaron Y. Silverstein
Aaron Y. Silverstein
(SDNY Bar No. AS-2323)
Saunders & Silverstein LLP
14 Cedar Street, Suite 224
Amesbury, MA 01913
+1.978.463.9130
asilverstein@massiplaw.com
Attorneys for Plaintiff
Adam Frank Incorporated

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DEMAND FOR JURY TRIAL

Pursuant to Fed. R. Civ. P. 38(b), Plaintiff Adam Frank Incorporated hereby demands a jury
trial on all triable issues raised by this Complaint.
SAUNDERS & SILVERSTEIN LLP
Dated: January 28, 2016

/s/Aaron Y. Silverstein
Aaron Y. Silverstein
(SDNY Bar No. AS-2323)
Saunders & Silverstein LLP
14 Cedar Street, Suite 224
Amesbury, MA 01913
+1.978.463.9130
asilverstein@massiplaw.com
Attorneys for Plaintiff
Adam Frank Incorporated

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