Aquazzura Italia v. Trump - Amended Complaint

Case 1:16-cv-04782-KBF Document 42 Filed 01/18/17 Page 1 of 22
John P. Margiotta (jmargiotta@frosszelnick.com)

Jennifer Insley-Pruitt (jinsley-pruitt@frosszelnick.com)
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
866 United Nations Plaza
New York, NY 10017
Tel: (212) 813-5900
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
AQUAZZURA ITALIA SRL,
Plaintiff,
v. No. 16 Civ. 4782-KBF
IV ANKA TRUMP, IT COLLECTION LLC, FIRST AMENDED COMPLAINT

and MARC FISHER HOLDINGS LLC,
Jury Demand
Defendants.
IT COLLECTION LLC and MARC FISHER

HOLDINGS LLC,
Counterclaim Plaintiffs,
v.
AQUAZZURA ITALIA SRL,
Counterclaim Defendant.
Plaintiff Aquazzura Italia SRL ("Aquazzura" or "Plaintiff'), by its undersigned attorneys,
Fross Zelnick Lehrman & Zissu, P.C., for its Complaint against Ivanka Trump, IT Collection
LLC ("IT Collection"), and Marc Fisher Holdings LLC ("Marc Fisher") (each "Defendant," and
collectively, "Defendants"), alleges as follows:
(F2!447J7.2 I
NATURE OF T HE ACTiO AND RELIEF SOUGHT
I. This is an action for trade dress infringement, unfair competition, deceptive trade
practices, and design patent infringement arising out of Defendants' infringement of Plaintiff
Aquazzura's distinctive shoe designs. Following its launch in 2011, Aquazzura skyrocketed to
fame in the fashion world. Its shoes are coveted by fashionistas and celebrities alike, and are
regularly photographed and written about in high profile publications such as Vogue , Harper 's
Bazaar, Elle, and the New York Times, as well as in myriad fashion blogs. As described in Elle,
founder of Aquazzura "Edgardo Osorio hit the footwear scene with Aquazzura and quickly
joined rank with the biggest players in the shoe game." Aquazzura markets and sells footwear
throughout the United States and worldwide under the AQUAZZURA mark.
2. One of Plaintiffs best-known and best-selling models is the Wild Thing, which is
shown below:
Aquazzura Wild Thing Shoe
1F2 144737 2) -2-

3. Fashion blog Fashion Cognoscente wrote of the Wild Thing sandal, "While
everyone is vying for anything Aquazzura that laces up, these suede tassel fringe heels ... have
become wildly popular, surpassing Aquazzura's previously famed coveted designs." A Harper's
Bazaar writer raved, "Fringed, fabulous, and fiercely fashion forward, the Italian-crafted suede
footwear has been parading the red carpet (on the likes of Olivia Palermo and Solange Knowles),
styling on the streets, and garnering many Instagram likes." Indeed, the Wild Thing was featured
on Lyst's most coveted items of2015 list, as it was one of the site's most popular sellers of the
year. As set forth more fully below, due to Aquazzura's commercial success, unsolicited
publicity, and resulting widespread consumer recognition of its distinctive design, Plaintiff has
common law trade dress rights in the configuration of the Wild Thing (the "Wild Thing Shoe").
4. Upon information and belief, Defendants Ivanka Trump and her company IT
partnered with Marc Fisher in or around 20 I 0 to launch her eponymous footwear brand. Seeking
the same success Aquazzura experienced but without having to put in the hard creative work,
Defendants resorted to knocking off Plaintiffs popular designs. Defendants' virtually identical
copy of the sought-after Wild Thing Shoe, marketed as the Hettie (the "Infringing Shoe"), is
shown below:
(F2l447J7 2) -3-
Trump Hettie Shoe
Defendants have copied nearly every detail of Plaintiff's well-known and coveted Wild Thing
Shoe, from the shape and silhouette to the fringe covering the toes, to the tassel on the heel.
Upon information and belief, Defendants even offer their Infringing Shoe in a nearly identical
color palette.
5. This is not the first time that Defendants have copied from Aquazzura.
Aquazzura complained to Defendants about their copies of Aquazzura's well-known Belgravia
and Forever Marilyn shoes as well, which are shown below:
Trump Teagin Pointy Toe Pump with Tassel Aquazzura Forever Marilyn Shoe
{F21447J7 2} -4-
Trump Necila Aquazzura Belgravia
6. Upon information and belief, Defendants ceased their sale of the Trump Necila as
a result of Aquazzura's complaint to them regarding the same. M.B. Fisher LLC, previously a
defendant in this action, filed suit against Aquazzura for a declaration of non-infringement
regarding the Trump Teagin Pointy Toe Pump with Tassel.
7. Defendants' flagrant copying of Plaintiffs well-known Wild Thing Shoe design is
likely to cause consumers to falsely believe that Defendants' products come from or otherwise
are associated with Plaintiff and to harm Plaintiff and the substantial goodwill it has developed in
its proprietary Wild Thing Shoe design and trade dress. Such consumer confusion and harm to
Plaintiff will continue as long as Defendants persist in using infringing designs for their own
goods. Moreover, upon information and belief, Defendants have engaged in said conduct in a
bad faith attempt to improperly siphon away Plaintiffs customers and potential customers.
8. To prevent Defendants from causing further harm to Plaintiff and its customers,
Plaintiff brings this action for trade dress infringement and unfair competition under Section
43(a) of the Lanham Act, design patent infringement under Section 271 of the U.S. Patent Act,
and related claims under New York State law. Plaintiff seeks an injunction, an accounting of
{F214473V} -5-
Defendants' profits flowing from their use of infringing designs, damages, attorneys' fees, and
such other relief as the Court deems just and proper.
THE PARTIES
9. Plaintiff is a limited liability company organized and existing under the laws of
Italy with a principal place of business at Viale Mazzini 40, 50132 Florence, Italy. As set forth
in greater detail below, Aquazzura owns all rights in and to the Wild Thing Shoe.
10. Upon information and belief, Defendant Ivanka Trump is a principal of Defendant
IT Collection LLC, with an office at 725 5th Avenue, New York, New York 10022. Upon
information and belief, Ivanka Trump exercises control over IT Collection and over the design
process for shoes made in conjunction with her licensee Marc Fisher Holdings LLC. Upon
information and belief, Ivanka Trump participated in and directed the design ofthe Infringing
Shoe.
11. Upon information and belief, Defendant IT Collection LLC is a limited liability
company organized and existing under the laws of Delaware, with a principal place of business
at 725 5th A venue, New York, New York 10022.
12. Upon information and belief, Defendant Marc Fisher Holdings LLC is a privately
held company located at 777 West Putnam Avenue #10, Greenwich, Connecticut 06830.
JURISDICTION AND VENUE
13. This Court has subject matter jurisdiction over this controversy under 28 U .S.C.
1331 and 13 3 8(a)-(b) because this action arises under the Lanham Act, 15 U .S.C. 1051, et
seq.
14. The Court has supplemental jurisdiction over Plaintiffs state law claims under
Section 1367(a) ofthe United States Judicial Code, 28 U.S.C. 1367(a).
{F2!44737 2) -6-
15. This Court has personal jurisdiction over Defendants under Sections 30 I and/or
302 of the New York Civil Practice Laws and Rules because Defendants maintain an office in
this district, and/or continuously and systematically conduct, transact, and solicit business in this
district, because Defendants ship and sell infringing products in and to this district, and because
the events giving rise to this Complaint occurred in this state and/or had effects in this state.
16. Venue is proper in this district pursuant to Sections 1391 (b) and (c) of the Judicial
Code, 28 U.S.C. 1391(b) and (c), because Defendants are subject to personal jurisdiction in this
district due to their voluntary transacting of business herein, including offering products to
consumers in this district, shipping and selling products in and to this district, and because a
substantial portion of the events at issue have arisen and will arise in this judicial district.
FACTS COMMON TO ALL CLAIMS FOR RELIEF
A. Plaintiff and Its Well-Known Luxury Footwear
17. Plaintiff Aquazzura is a renowned manufacturer and seller of luxury fashion
footwear. Aquazzura was founded in 2011 by Edgardo Osorio, who previously studied at the
London College of Fashion, and worked for Salvatore Ferragamo and Roberto Cavalli, among
others. From the moment the brand launched, Aquazzura designs became the "must-have" shoes
of every season. Within days of Barney's ordering Aquazzura's debut Spring/Summer 2012
collection, the shoes had sold out. Aquazzura's popularity has only grown since that point, and
today it does millions of dollars of business worldwide.
18. The Wild Thing Shoe is one of Plaintiffs most popular and well-known designs.
It took the fashion world by storm. Fashion blog The Souls of My Shoes dubbed the Wild Thing
Shoe the "Shoe of the Moment," calling it a "jaw dropping and foot stomping heel that will turn
heads." The blog Complete Fashion wrote that of all the shoes it previously featured, the most
{F2144737 2) -7-
popular was the Wild Thing Shoe, which it described as the 'it' summer sandal that "everyone is
going fashion crazy" for. Fashion bloggers everywhere raved about the Aquazzura Wild Thing,
while celebrities and "it" girls such as Jamie Chung, So lange Knowles, and Kendall Jenner were
featured wearing it. Who What Wear called the Wild Thing Shoe the "feed-flooding Wild Thing
sandals," noting that the popular red color had sold out mere months after being released.
19. Plaintiffs Wild Thing Shoe is sold throughout the United States, through a wide
variety of channels, including but not limited to:
Department stores, such as Barney's, Bergdorf Goodman, Neiman Marcus,
and Saks Fifth Avenue;
Shoe boutiques, including the Aquazzura boutique in Manhattan;
Web sites, including but not limited to those of the department stores listed
above, as well as polyvore.com, shopbop.com, and net-a-porter. com; and
E-commerce sites such asfmfetch.com.
20. Defendants' Infringing Shoe is available through these same channels of trade,
including department stores, shoe boutiques, and websites such as polyvore.com.
21. Due to Plaintiff's phenomenal commercial success and the unsolicited media
coverage that has followed, the Wild Thing Shoe has become well-known in the fashion industry
and among consumers, who have come to associate its distinctive design exclusively with
Aquazzura. In addition, the Wild Thing Shoe has its own distinctive trade dress, which has
become extremely well-known, in part as a result of the tremendous press coverage the Wild
Thing Shoe has received in New York, nationally, and internationally.
22. As shown in the photographs in this complaint, the overall appearance and
particular combination of elements of the Wild Thing Shoe make it distinctive, those individual
{F2J447l7 2) -8-
elements consisting of the overall shape of the shoe, including the angle and slope of the sole of
the shoe, the stiletto heel combined with an open toe, the distinctive fringed vamp (the band .
covering the toe) and the ankle-wrap closure made of tasseled string (the "Wild Thing Trade
Dress").
23. The striking and distinctive nature of the Wild Thing Trade Dress ensures that,
even from far away, consumers will recognize and be drawn to Plaintiffs footwear.
24. The combination of elements that make up the Wild Thing Trade Dress is not
functional for purposes of Section 43(a)(3) of the Lanham Act, 15 U.S.C. 1125(a)(3), as it is
not essential to the use or purpose of the shoe, does not affect the cost or quality of the shoe, and,
when used exclusively by Plaintiff, does not put Plaintiffs competitors at a significant non-
reputation-related disadvantage.
25. As a result of Plaintiffs substantial effort and investment in its Wild Thing Shoe,
and its commercial success, the Wild Thing Trade Dress has acquired "secondary meaning" in
that it has become distinctive and instantly recognizable to the public as exclusively denoting
Plaintiff and signaling the high quality of its product. The Wild Thing Trade Dress achieved this
status long before Defendants first began their infringing activities, which are described below.
26. The Wild Thing Trade Dress represents enormous goodwill of Plaintiff and is a
tremendously valuable asset of Plaintiff.
27. Based on Plaintiffs extensive use, marketing and promotion of its Wild Thing Shoe
bearing the Wild Thing Trade Dress, Plaintiff owns common law rights in the Wild Thing Trade
Dress in connection with its Wild Thing Shoe.
{F2144737 2} -9-
28. Plaintiff also is the owner of U.S. Patent No. 0776,409, which claims a shoe design
that covers Plaintiff's Wild Thing shoe design. A copy of U.S. Patent No. 0776,409 is attached as
Exhibit A.
B. Defendants' Infringing Activities
29. Upon information and belief, Defendant Ivanka Trump and her company,
Defendant IT Collection, partnered with Defendant Marc Fisher in or around 20 I 0 to launch a
footwear brand. Upon information and belief, as a result of this collaboration, Defendants are
involved in and responsible for the manufacture, importation, distribution, and sale oflVANKA
TRUMP branded shoes, including the Infringing Shoe that is the subject of this complaint. In an
interview with Footwear News, Ms. Trump stated that "[t]here is not a shoe [she is] not
intimately involved in designing." On information and belief, her intimate involvement
included involvement in designing the Infringing Shoe.
30. Upon information and belief, well after Plaintiff obtained exclusive rights in the
Wild Thing Trade Dress, Defendants- in a blatant attempt to trade off the renown ofthe Wild
Thing Shoe and to confuse consumers - began manufacturing and marketing the Infringing Shoe
that knocked off the design of the Wild Thing Shoe.
31. A visual comparison of Defendants' Infringing Shoe shows that it is virtually an
exact copy of Aquazzura's Wild Thing, as shown below:
{F2144737 2) -10-
Aquazzura Wild Thing Shoe Trump Hettie Shoe
32. Defendants' Infringing Shoe mimics every key element of the trade dress and
patented design of Aquazzura's well-known and distinctive Wild Thing Shoe.
33. Upon information and belief, Defendants' use ofPlaintiffs Wild Thing Trade Dress
and patented design is intended to mislead consumers into believing that Defendants' Infringing
Shoe and Plaintiff's Wild Thing Shoe are one and the same, or that the Infringing Shoe is made,
approved, sponsored or endorsed by Plaintiff, or that the two companies are somehow connected.
Defendants' Infringing Shoe is also created with the specific intent to create post-sale confusion as
to the source of Defendants' footwear, creating an imitation of Plaintiff's Wild Thing Shoe that
cannot be distinguished post-sale.
34. Indeed, numerous articles suggest that post-sale, the shoes look indistinguishable.
For instance, one article describes the Infringing Shoe as an "incredible look-alike" of the coveted
Wild Thing Shoe "with an incredible price point." Another calls Defendants' Infringing Shoe an
"Aquazzura Wild Thing Dupe."
{F2144737 2) -11-
35. The below images illustrate that on wearers' feet, the Wild Thing Shoe and
Defendants' Infringing Shoe are virtually indistinguishable:
Aquazzura Wild Thing Sandal Trump Hettie Sandal
36. Upon information and belief, Defendants have imported, advertised, offered for
sale, and sold the Infringing Shoe in the United States, including in New York State and this
judicial district.
37. Upon information and belief, Defendants are intentionally targeting and seeking
to sell the Infringing Shoe to Plaintiffs customers and potential customers who are familiar with
the well-known trade dress and patented design of Plaintiffs Wild Thing Shoe.
38. None of Defendants has never been associated or affiliated with or licensed by
Plaintiff in any way, and the Infringing Shoe is not made by, affiliated with, sponsored by, or
endorsed by Plaintiff.
39. Upon information and belief, Defendants are using an infringing design to pass
off their Infringing Shoe and allow others to pass off their Infringing Shoe post-sale as
Plaintiffs, and otherwise to benefit from the recognition and goodwill of Plaintiffs well-known
Wild Thing Shoe and associated Wild Thing Trade Dress and patented design. Upon
information and belief, Defendants are capitalizing on the goodwill and cache associated with
Plaintiffs luxury footwear and the well-known trade dress in the Wild Thing Shoe to create and
{F21447372 I -12-
sell less expensive imitations designed to give the appearance post-sale of having the prestige
and exclusivity associated with the Aquazzura brand. Upon information and belief, Defendants'
conduct is calculated to confuse and mislead consumers, create a false impression as to the
source and sponsorship of Defendants' Infringing Shoe, divert business from Plaintiff, pass off
the Infringing Shoe as being authorized and endorsed by Plaintiff, and otherwise falsely
misrepresent the nature and quality of Defendants' Infringing Shoe and misappropriate the
goodwill associated with Plaintiff and its Wild Thing Trade Dress.
40. Upon information and belief, Defendants began using and are using the trade
dress of the Infringing Shoe (the "Infringing Trade Dress") with full knowledge of Plaintiffs
prior exclusive rights, with knowledge of the reputation and goodwill of the Wild Thing Trade
Dress, and with knowledge that these identifiers are associated exclusively with Plaintiff and
Plaintiffs Wild Thing Shoe.
41. By letter dated March 31, 2016, counsel for Aquazzura wrote to counsel for
Defendants placing Defendants on notice of Aquazzura's claims regarding the Wild Thing Shoe
design, and demanding that Defendants cease sales ofthe Infringing Shoe. A true and correct
copy ofthat letter is attached hereto as Exhibit B.
42. Further, at least as early as August 18, 2016, counsel for Aquazzura wrote to
counsel for Defendants placing Defendants on notice that Aquazzzura had applied for patent
protection for the design of the Wild Thing.
43. On information and belief, despite these warnings, Defendants have continued to
sell the Infringing Shoe.
[F21447312} -13-
44. Upon information and belief, Defendants engaged and continue to engage in the
above activities willfully, including with the knowledge that the design ofthe Infringing Shoe is
substantially the same as the designs depicted in U.S. Patent No. D776,409.
45. The goodwill that Plaintiff has built up in the Wild Thing Trade Dress is put at
risk by Defendants' appropriation and use of the Wild Thing Trade Dress in connection with
their business and Infringing Shoe. Defendants' continued use of designs nearly identical to that
of the Wild Thing Trade Dress and substantially similar to that depicted in U.S. Patent No.
D776,409 in connection with a competing business is likely to continue to cause confusion in the
marketplace, because purchasers and potential purchasers will assume that the goods sold by
Defendants emanate from or are authorized by, licensed by, endorsed by, associated with, or
otherwise connected with Plaintiff and/or Plaintiff's goods. By virtue of Defendants' use of an
essentially identical design, potential purchasers will assume, incorrectly, that the Infringing
Shoe is Plaintiff's.
46. Defendants' use of trade dress that so closely resembles Plaintiff's Aquazzura
Trade Dress unfairly and unlawfully wrests from Plaintiff control over its reputation.
4 7. Defendants' unauthorized acts as described herein have caused and will continue
to cause irreparable damage to Plaintiff's business and goodwill unless restrained by this Court.
48. Plaintiff has no adequate remedy at law.
FIRST CLAIM FOR RELIEF -FEDERAL

TRADE DRESS INFRINGEMENT OF THE WILD THING SHOE (15 U.S.C. 1125(a))
49. Plaintiff repeats and realleges the allegations set forth in the paragraphs above as if
fully set forth herein.
50. The Wild Thing Trade Dress is used in commerce, is not functional, and has
acquired secondary meaning in the marketplace.
{F2144737 2} -14-
51. Defendants' Infringing Shoe, which upon information and belief is being used in
commerce, features trade dress that is confusingly similar to the Wild Thing Trade Dress and is
being marketed in a manner designed to confuse consumers.
52. Defendants' manufacture, distribution, sale and promotion of the Infringing Shoe
is likely to cause confusion and mistake and to deceive consumers as to the source, origin or
sponsorship of the parties' products.
53. Upon information and belief, Defendants chose to use their Infringing Trade
Dress with actual knowledge of Plaintiffs prior use of and rights in the well-known and
distinctive Wild Thing Trade Dress. Upon information and belief, Defendants used the
Infringing Trade Dress in commerce with the intent to cause confusion, to cause mistake, or to
deceive.
54. Defendants' actions constitute willful trade dress infringement in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
55. Defendants' conduct has caused and is causing immediate and irreparable injury
to Plaintiff.
SECOND CLAIM FOR RELIEF -FEDERAL

UNFAIR COMPETITION (15 U.S.C. 1125(a))
56. Plaintiff repeats and realleges the allegations set forth in the paragraphs above as
if fully set forth herein.
57. Defendants' use of the Infringing Trade Dress in connection with its Infringing
Shoe constitutes a false designation of origin and a false representation as to the origin of
Defendants' Infringing Shoe, is likely to cause confusion, mistake, or deception as to the source
of Defendants' Infringing Shoe, and is likely to create the false impression that Defendants'
Infringing Shoe is authorized, sponsored, endorsed, licensed by, or affiliated with Plaintiff.
[F2144737 2) -15-
58. Upon information and belief, Defendants chose to use the Infringing Trade Dress
with actual knowledge of Plaintiffs prior use of and rights in the Wild Thing Trade Dress. Upon
information and belief, Defendants used the Infringing Trade Dress in commerce with the intent
to cause confusion, to cause mistake, or to deceive.
59. Defendants' actions constitute unfair competition in violation of Section 43(a) of
the Lanham Act, 15 U.S.C. 1 125(a).
THIRD CLAIM FOR RELIEF

UNFAIR COMPETITION UNDER NEW YORK COMMON LAW
61. Defendants' conduct complained of herein is likely to confuse the public as to the
origin, source or sponsorship of Defendants' Infringing Shoe, or to cause mistake or to deceive
the public into believing that Defendants' Infringing Shoe is authorized, sponsored, endorsed,
licensed by, or affiliated with Plaintiff, in violation of Plaintiffs rights in the Wild Thing Trade
Dress under New York State common law.
62. Upon information and belief, Defendants chose to use the Infringing Trade Dress
with constructive and/or actual knowledge of Plaintiffs prior use of and rights in the Wild Thing
Trade Dress. By adopting and using a colorable imitation of the valuable and distinctive Wild
Thing Trade Dress, Defendants have been unjustly enriched and Plaintiff has been damaged.
63. By misappropriating and trading upon the goodwill and business reputation
represented by the Wild Thing Trade Dress, Defendants have been and, unless enjoined by this
Court, will continue to be unjustly enriched at Plaintiffs expense.
64. Defendants' use of the Infringing Trade Dress, which is nearly identical to the Wild
Thing Trade Dress, constitutes unfair competition under New York common law.
[F2144737 2) -16-
65. Defendants' conduct has caused and is causing immediate and irreparable injury to
Plaintiff and will continue to both damage Plaintiff and deceive the public unless enjoined by this
Court. Plaintiff has no adequate remedy at law.
FOURTH CLAIM FOR RELIEF

VIOLATION OF THE NEW YORK DECEPTIVE
AND UNFAIR TRADE PRACTICES ACT
(N.Y. General Business Law 349)
67. Defendants' use of the Infringing Trade Dress in connection with its Infringing
Shoe is consumer-oriented, has the capacity to deceive, and is deceiving the public as to the
source or sponsorship of Defendants' Infringing Shoe. As a result, the public will be damaged.
68. Defendants' conduct is willful and in knowing disregard of Plaintiff's rights.
69. Defendants have been and are engaged in deceptive acts or practices in the
conduct of a business, trade or commerce in violation of Section 349 of the New York General
Business Law.
to Plaintiff and will continue to both damage Plaintiff and deceive the public unless enjoined by this
Court. Plaintiff has no adequate remedy at law.
FIFTH CLAIM FOR RELIEF

FEDERAL DESIGN PATENT INFRINGEMENT
OF U.S. DESIGN PATENT NO. D776,409
(35 u.s.c. 271)
71. Plaintiff owns U.S. Patent No. D776,409, which issued on January 17, 2017.
72. U.S. Patent No. D776,409 is valid and subsisting.
[F2144737 2) -17-
73. Defendants have been on notice of Plaintiffs pending design patent at least since
August 18, 2016.
74. Upon information and belief, Defendants, without authorization from Plaintiff,
have manufactured, imported, distributed, advertised, promoted, offered for sale and/or sold an
Infringing Shoe, namely, the Hettie, the designs of which is substantially the same as the design
set forth in U.S. Patent No. D776,409 and which embodies the design protected by such patent.
75. Defendants' knock-offlnfringing Shoe appropriates the novel ornamental features
set forth in U.S. Patent No. D776,409 such that an ordinary observer, giving such attention as a
purchaser usually gives, would find Plaintiffs and Defendants' designs to be substantially the
same and would be deceived into believing that Defendants' Infringing Shoe is the same as
Plaintiffs patented design.
76. By the foregoing acts, Defendants have directly infringed, infringed under the
doctrine of equivalents, contributorily infringed, and/or induced infringement of, and continues to so
infringe, U.S. Patent No. D776,409.
77. On information and belief, the foregoing acts of infringement by Defendants have
been willful, intentional, and in bad faith, and with knowledge of Plaintiffs exclusive patent rights.
78. Defendants' acts constitute violations of Section 271 of the Patent Act, 35 U.S. C.
271.
to Plaintiff and will continue to damage Plaintiff unless enjoined by this Court. Plaintiff has no
adequate remedy at law.
WHEREFORE, Plaintiff respectfully demands judgment as follows:
[F2J447J7 2) -18-
(1) That an injunction be issued enjoining Defendants, their officers, agents,
directors, shareholders, principals, licensees, distributors, attorneys, servants, employees,
affiliates, subsidiaries and assigns, and all those persons in concert or participation with any of
them from:
a. manufacturing, distributing, shipping, advertising, marketing, promoting,
selling or otherwise offering for sale the Infringing Shoe or any product bearing
the Infringing Trade Dress or any other trade dress that is confusingly similar to
the Wild Thing Trade Dress;
b. infringing or inducing infringement of U.S. Patent No. D776,409;
c. conducting any activities in the United States that relate to, refer to or
concern the advertising, promotion, manufacture, production, importation,
distribution, displaying, sale or offering for sale of shoes or any related goods and
services, in any media or format, using the Infringing Trade Dress, or any other
trade dress that is a simulation, reproduction, copy, colorable imitation or
confusingly similar variation of the protected Wild Thing Trade Dress;
d. using any false designation of origin or false description (including,
without limitation, any letters or symbols), or performing any act, which can, or is
likely to, lead members of the trade or public to believe that any goods
manufactured, imported, advertised, promoted, distributed, displayed, produced,
sold or offered for sale by Defendants, or any services advertised, promoted, sold
or offered for sale by Defendants, are in any manner associated or connected with
Plaintiff, or are authorized, licensed, sponsored or otherwise approved by
Plaintiff;
{F2!44737 2) -19-
e. engaging in any other activity constituting unfair competition with
Plaintiff, or constituting an infringement of the Wild Thing Trade Dress; ..

f. applying to register or registering in the United States Patent and
Trademark Office or in any state trademark registry the Infringing Trade Dress, or
any other mark or trade dress consisting in whole or in part of any simulation,
reproduction, copy or colorable imitation of any of the Wild Thing Trade Dress,
for shoes or any goods or services related to the foregoing;
g. assisting, aiding or abetting any other person or business entity in
engaging in or performing any of the activities referred to in subparagraphs (a)
through (f) above;
(2) That Defendants and those acting in concert or participation with them (including,
but not limited to, their officers, directors, agents, servants, employees, representatives,
attorneys, subsidiaries, related companies, successors, and assigns) take affirmative steps to
dispel such false impressions that heretofore have been created by their use of the Infringing
Trade Dress in connection with the Infringing Shoe, including, but not limited to, delivering up
to Plaintiffs attorneys for destruction all goods, labels, tags, signs, stationery, prints, packages,
promotional and marketing materials, advertisements and other materials (a) currently in
Defendants' possession, custody, or control, or (b) recalled by Defendants pursuant to any order
of the Court or otherwise, incorporating, featuring or bearing the Infringing Trade Dress or any
other simulation, reproduction, copy or colorable imitation of the Wild Thing Trade Dress or
infringing U.S. Patent No. 0776,409;
(3) Directing Defendants to deliver up to Plaintiffs attorneys an accounting of all
profits earned on the Infringing Shoe;
{F2!44737 2} -20-
(4) Directing such other relief as the Court may deem appropriate to prevent the
public from deriving the erroneous impression that any product manufactured, imported,
advertised, promoted, distributed, displayed, produced, sold or offered for sale, or any service
advertised, promoted, sold or offered for sale by Defendants is in any manner authorized by
Plaintiff or related in any way to Plaintiff;
(5) Directing Defendants to file with the Court and serve upon Plaintiffs counsel
within thirty (30) days after entry of judgment a report in writing under oath, setting forth in
detail the manner and form in which it has complied with the above;
(6) Awarding Plaintiff such damages it has sustained or will sustain by reason of
Defendants' acts of trade dress and patent infringement and unfair competition and that such
sums be trebled pursuant to I 5 U.S.C. I 1 I 7 and 35 U.S.C. 284;
(7) Awarding Plaintiff all gains, profits, property and advantages derived by
Defendants from Defendants' unlawful conduct and that such profits be enhanced pursuant to I 7
U.S.C. I 11 7;
(8) Awarding to Plaintiff exemplary and punitive damages to deter any further willful
infringement as the Court finds appropriate;
(9) Awarding to Plaintiff its costs and disbursements incurred in this action, including
reasonable attorneys' fees pursuant to IS U.S.C. I I I 7(a) and 35 U.S.C. 285;
(I 0) Awarding to Plaintiff interest, including pre-judgment interest, on the foregoing
sums; and
(I 1) Awarding to Plaintiff such other and further relief as the Court may deem just and
proper.
{F2J44737 2} -21-
DEMAND FOR JURY TRIAL
Plaintiff Aquazzura Italia SRL hereby demands trial by jury in this action.
Dated: January 18, 2017 FROSS ZELNICK LEHRMAN & ZISSU, P.C.
New York, New York /}
By: Clc1 L -~- ;.--v-- -eo~,.;:____
.J{)fm P. Margiotta
Jennifer Insley-Pruitt
866 United Nations Plaza
New York, New York 10017
Tel: (212) 813-5900
Attorneys for Plaintiff
{F2144737.1 ) -22- .
Case 1:16-cv-04782-KBF Document 42-1 Filed 01/18/17 Page 1 of 14
EXHIBIT A
111111 1111111111111111111111111111111111111111111111111111111111111
USOOD776409S
c12) United States Design Patent c1o) Patent No.: US D776,409 S

Osorio (45) Date of Patent: ** Jan.17,2017
(54) FOOTWEAR D102,346 S 12/1936 Stein

D106,176 S 9/1937 Berman
(71) Applicant: Aquazzura Italia S.R.L., Firenze (IT) D113,973 S 3/1939 Levin
D126,201 S 4/1941 Elkin
D131,840 S 3/1942 Keyes
(72) Inventor: Edgardo Osorio, Monaco (MC) D158,330 S 4/1950 Sandler
D158,470 S 5/1950 Koomruian
(73) Assignee: Aquazzura Italia S.R.L., Firenze (IT) D172,976 S 9/1954 Langdon et a!.
D253,498 S * 1111979 Katz .............................. D2/930
(**) Term: 15 Years D296,951 S * 8/1988 Brickwood .................... D2/916
D354,019 s * 111995 Young ............................. 428/10
D513,845 S 112006 Choi
(21) Appl. No.: 29/552,716
(Continued)
(22) Filed: Jan. 25, 2016
OTHER PUBLICATIONS
(30) Foreign Application Priority Data
Katherine Callaghan "Aquazzura's Resort 2016 Shoes are Not to Be
Jul. 31, 2015 (EM) ......................... 002746990-0001 Missed". Talkshoes Blog. Oct. 22, 2015. <http://www.talkshoes.
com/>. Mar. 29, 2016.*
(51) LOC (10) Cl. ............................................... 02-04
(52) U.S. Cl. (Continued)
USPC ............................... D2/946; D2/930; D2/928
Primary Examiner- Celia Murphy
(58) Field of Classification Search
Assistant Examiner- Clare Ann Gannon
USPC ........ D2/916, 919, 921, 925, 929, 930, 932,
D2/936, 941, 943, 944, 946, 969, 971 (74) Attorney, Agent, or Firm- Fross Zelnick
CPC ........... A43B 3/001; A43B 3/12; A43B 3/122; Lehrman & Zissu, P.C.; Lawrence E. Apolzon, Esq.
A43B 3/124; A43B 3/126; A43B 3/0042;
(57) CLAIM
A43B 5/06; A43B 13/37; A43B 23/02
See application file for complete search history. The ornamental design for footwear, as shown and
described.
(56) References Cited
DESCRIPTION
U.S. PATENT DOCUMENTS
FIG. 1 is a front perspective view of the footwear showing
847,752 A * 3/1907 Finkensieper ........... D04D 5/00
my new design;
241715.5
D73,809 s * 1111927 Veran ............................. D2/926 FIG. 2 is a right side view thereof;
D87,052 S * 5/1932 Gibbons ........................ D2/978 FIG. 3 is a front view thereof; and,
D94,034 S 12/1934 Koomruian FIG. 4 is a rear view thereof.
D94,348 S 111935 Heilbrunn The broken lines showing the heel, portions of the upper,
D94,638 S 2/1935 Stritter
D95,204 S * 4/1935 Haflin ............................ D2/931
and portions of the straps in the drawings show parts of the
D95,629 S 5/1935 Bressler footwear that form no part of the claimed design.
D95,887 S 6/1935 Wood
D98,673 S 2/1936 Hyde 1 Claim, 4 Drawing Sheets
US D776,409 S
Page 2
(56) References Cited Aquazzura Italia SRL, v. Steve Madden Limited, United States
District Court Southern District of New York, Notice of Appearance
U.S. PATENT DOCUMENTS of Alan Federbush, Case 1:16-cv-04905, Filed Aug. 19, 2016.
Aquazzura Italia SRL, v. Steve Madden Limited, United States
D514,284 S * 2/2006 Sussman D2/917 District Court Southern District of New York, Notice of Appearance
D523,617 S * 6/2006 Choi D2/971
of Ariel S. Peikes, Case 1:16-cv-04905, Filed Aug. 19, 2016.
D527,880 S * 9/2006 Choi D2/917
D530,064 S 10/2006 Choi Aquazzura Italia SRL, v. Steve Madden Limited, United States
D530,890 S 10/2006 Choi District Court Southern District of New York, Notice of Appearance
D530,901 S * 10/2006 Choi D2/971 of Douglas A. Miro, Case 1: 16-cv-04905, Filed Aug. 19, 2016.
D534,713 S * 112007 Weitzman Dl/929 Aquazzura Italia SRL, v. Steve Madden Limited, United States
D535,466 S * 112007 Choi D2/971 District Court Southern District of New York, Notice of Motion,
D537,241 S * 2/2007 Choi D2/971 Case 1:16-cv-04905, Filed Aug. 19, 2016.
D540,023 S * 4/2007 Kelsey D2/971
D541,035 S * 4/2007 Kelsey D2/971 Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
D572,895 S * 7/2008 Lawler. D2/971 Fisher Holdings LLC, and M.B. Fisher LLC, United States District
D594,220 S 6/2009 McDaniel Court Southern District of New York, Complaint, Case 1:16-cv-
D699,024 S * 2/2014 Guers-N eyraud D2/930 04782, Filed Jun. 21, 2016.
D706,023 s 6/2014 Holloway et a!. Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
D709,686 s 7/2014 LaRusso Fisher Holdings LLC, and M.B. Fisher LLC, United States District
D710,076 s 8/2014 LaRusso
Court Southern District of New York, Defendant IT collection
D725,361 S 3/2015 Osorio
D743,675 s * 1112015 Yehudah D2/917 LLC's Answer and Affirmative Defenses and Counterclaim, Case
1:16-cv-04782, Filed Aug. 19, 2016.
Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
OTHER PUBLICATIONS Fisher Holdings LLC, and M.B. Fisher LLC, United States District
Eryzle, "Jamie Chung Attends 'Avengers: Age of Ultron' Screening Court Southern District ofNew York, Rule 7.1 Corporate Disclosure
in Aquazzura Wild Thing" Heels. Your Next Shoes. May 1, 2015. Statement of Defendant IT Collection LLC, Case 1:16-cv-04782,
<http://www.yournextshoes.com/>. Mar. 29, 2016.* Filed Aug. 19, 2016.
Steve Madden Women's Sassey Dress Sandal. Amazon.com. Jan. Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
12, 2016. <http://www.amazon.com/>. Mar. 24, 2016.* Fisher Holdings LLC, and M.B. Fisher LLC, United States District
Amourplato Women's Wildly Thing Fringe Suede Sandals High Court Southern District of New York, Defendant Ivanka Trump's
Heel AnkleWrap Shoes with Tassel Trim. Amazon.com. Dec. 9, Answer and Affirmative Defenses, Case 1:16-cv-04782, Filed Aug.
2015. <http://www.amazon.com/>. Mar. 24, 2016.* 19, 2016.
Chase & Chloe Edward-21 Women's Wild Porn Fringe Band Ankle Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
Wrap Tassel Heels. Amazon.com. Oct. 13, 2015. <http://www. Fisher Holdings LLC, and M.B. Fisher LLC, United States District
amazon.corn/>. Mar. 24, 2016.* Court Southern District ofNew York, Rule 7.1 Corporate Disclosure
Fashion Thirsty Womens Lace Up High Heel Sandals. Amazon. Statement of Defendant M.B. Fisher LLC, Case 1:16-cv-04782,
com. Sep. 16, 2015. <http://www.amazon.com/>. Mar. 24, 2016.* Filed Aug. 19, 2016.
Ivanka Trump Women's Hettie Dress Sandal. Amazon.com. Mar. 1, Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
2016. <http://www.amazon.com/>. Mar. 24, 2016.* Fisher Holdings LLC, and M.B. Fisher LLC, United States District
Sam Edelman Women's Aisha Dress Sandal. Amazon.com. Feb. 23, Court Southern District of New York, Defendant M.B. Fisher LLC's
2016. <http://www.amazon.com/>. Mar. 24, 2016.*
Answer and Affirmative Defenses, Case 1:16-cv-04782, Filed Aug.
Schutz Women's Maggie Dress Sandal. Amazon.com. Nov. 6, 2015.
19, 2016.
<http://www.amazon.com/>. Mar. 29, 2016.*
Photographs of Aquazzura Wild Thing design publicly disclosed on Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
Aug. 7, 2014. Fisher Holdings LLC, and M.B. Fisher LLC, United States District
Aquazzura Italia SRL, v. Steve Madden Limited, United States Court Southern District ofNew York, Rule 7.1 Corporate Disclosure
District Court Southern District of New York, Complaint, Case Statement of Defendant Marc Fisher Holdings LLC, Case 1:16-cv-
1:16-cv-04905, Filed Jun. 23, 2016. 04782, Filed Aug. 19, 2016.
Aquazzura Italia SRL, v. Steve Madden Limited, United States Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
District Court Southern District of New York, Corporate Disclosure Fisher Holdings LLC, and M.B. Fisher LLC, United States District
Statement, Case 1:16-cv-04905, Filed Aug. 19, 2016. Court Southern District of New York, Defendant Marc Fisher
Aquazzura Italia SRL, v. Steve Madden Limited, United States Holdings LLC's Answer and Affirmative Defenses and Counter-
District Court Southern District of New York, Declaration of Alan claim, Case 1:16-cv-04782, Filed Aug. 18, 2016.
Federbush in Support of Defendant's Motion to Dismiss the com- Aquazzura Italia SRL, v. Ivanka Trump, IT Collection LLC, Marc
plaint, Case 1:16-cv-04905, Filed Aug. 19, 2016. Fisher Holdings LLC, and M.B. Fisher LLC, United States District
Aquazzura Italia SRL, v. Steve Madden Limited, United States Court Southern District of New York, Notice of Appearance, Case
District Court Southern District of New York, Memorandum of Law 1:16-cv-04782, Filed Aug. 19, 2016.
in Support of Defendant Steven Madden, Ltd.'S, Case 1:16;v-
04905, Filed Aug. 19, 2016. * cited by examiner
U.S. Patent Jan.17,2017 Sheet 1 of 4 US D776,409 S
I I
II
II
II
I I
I I
I I
I I
I I
I I
I I
I I
I I
I I
I I
I I
I I
I I
I _I_ I
'-
\------ .. -- .. ----- .. ---------
----------~----- ---------
FIG. 1
--
~ ..--~~~'":::::__~::__- -.._
1 '
'
I
I '
'
I '
'<- I
........... ', .... --1
I
""" "-.... I
I -...J '-,..1
I I J
( I I
I I
( J
I
I
! ..-~..,..
/ / ...
/--~~------ '1 I
I
I
I
~~-:._..;_,.."" I I
"/ // I
I
I
I
I
'
I
I I
I I
I I
I I
I I
I I
I I
I I
I I
I
I
I
I
I
'
I
I
I
'
1... .
1
,__ ,
I I
FIG. 2
FIG. 3
'\""I''
I
\,-,J
II I I
II \I
,,
If
--------- ~ ... ''
\ \
I l; _..
l/
'<
i ' \
I
I
/ ' 'J
/; / '.'
I
,.
II
I I
I \ I,... .... ' '
/
'', \
I
I
I
\ I
I
I
I
I !
1-- I
~- - - - - - - J- _,_ - - - - -- - - -
FIG. 4
EXHIBIT B
FROSS ZELNICK LEHRMAN & ZISSU, P.C.
Partners
Ronald J. Lehrman
Stephen Bigger
Roger L. Zissu March 31, 2016
Richard Z. Lehv
David Ehrlich BY EMAIL
Susan Upton Douglass
Peter J. Silverman
Darren W. Saunders, Esq.
Lawrence Eli Apolzon
Manatt, Phelps & Phillips, LLP
Barbara A. Solomon
7 Times Square
Mark D. Engelmann
Nadine H. Jacobson
New York, NY 10036
Andrew N. Fredbeck
Craig S. Mende Re: Infringement of Intellectual Property and Trade Dress Rights of
Allison Strickland Ricketts Aquazzura Italia SRL (Our Ref: AQUZ 1602071)
John P. Margiotta
Lydia T. Gobena Dear Mr. Saunders:
Carlos Cucurella
James D. Weinberger We are intellectual property counsel to Aquazzura Italia SRL ("Aquazzura"). As you
David Donahue
know from correspondence with prior counsel for Aquazzura, it is a leader in the luxury
Nancy E. Sabarra
footwear industry. Given that Aquazzura previously contacted IT Collection LLC and
Charles T. J. Weigelllll
Laura Popp-Rosenberg
Marc Fisher Holdings LLC (collectively, "Trump") to object to the copying of the
Cara A. Boyle
distinctive "Belgravia" shoe, our client was extremely troubled to discover yet additional
Karen Lim infringements of its proprietary trade dress, namely, Trump's sale of the "Hettie" sandal
and "Teagin Pointy Toe Pump With Tassel" (the "Infringing Shoes"), which are flagrant
Senior Counsel
knockoffs of our client's popular "Wild Thing" and "Forever Marilyn" shoes,
Janet L. Hoffman
respectively.
Counsel
James D. Silberstein As is apparent from the photographs shown below, the Aquazzura "Wild Thing" sandal
Joyce M. Ferraro and "Forever Marilyn" shoe have a distinctive look and appearance. Furthermore, our
Robert A. Becker client's well known and commercially coveted shoes have been featured in numerous
Tamar Niv Bessinger national and international publications, as well as online, and has been touted by myriad
Nancy C. DiConza
influential fashion blogs. Such publications include Harper's Bazaar, New York
Associates Magazine, Glamour, Shape, Sincerely Jules, and Fashion Cognoscente, among others.
Jason Jones As Fashion Cognoscente wrote of the "Wild Thing" sandal, "While everyone is vying
Leo Kittay for anything Aquazzura that laces up, these suede tassel fringe heels ... have become
Todd Martin wildly popular, surpassing Aquazzura's previously famed coveted designs." A Harper's
Robin N. Baydurcan Bazaar writer raved, "Fringed, fabulous, and fiercely fashion forward, the Italian-crafted
Sherri N. Duitz
suede footwear has been parading the red carpet (on the likes of Olivia Palermo and
Amanda B. Agati
Solange Knowles), styling on the streets, and garnering many Instagram likes." Indeed,
Jennifer Insley-Pruitt
the "Wild Thing" was featured on Lyst's most coveted items of2015 list, as it was one
Emily Weiss
Ashford Tucker
of the site's most popular sellers of the year. As a result of its commercial and media
Erica Gould
success, the public has come to associate the distinctive look of the Aquazzura "Wild
Matthew Frisbee Thing" shoe exclusively with our client. Accordingly, as described in greater detail
Celadon Whitehurst below, Aquazzura owns trade dress rights in this design. Furthermore, Aquazzura also
Stacy L. Wu owns a pending design patent application that covers both its "Wild Thing" and "Forever
Hindy Dym Marilyn" designs.
Katherine Lyon Dayton
Maritza C. Schaeffer
Felicity Kahn
{F1902661 2}
866 United Nations Plaza at First Avenue & 48th Street I New York, New York 10017
Phone 212.813.5900 I Fax 212.813.5901 I www.frosszelnick.com
March 31 , 2016
Page 2
Despite Aquazzura' s clear rights in its "Wild Thing" sandal and "Forever Marilyn" shoe,
Trump is selling virtually identical copies of Aquazzura's well-known designs:
Wild Thing 105

Sandal
Heel: l05nun
Pomponlllld toml mtbelliohod locod up oandol in PopJly Rod ou<d<
I vanka Trump
lvanka Trump Women's Hettie
Dress Sandal
,, , 1 customer rev iew
Price: $145.00 & FREE Retums. Details

Size:
Select " Size Chart
Col or: Medium Red Suede
As is apparent from the above images, Trump' s "Hettie" sandal is a virtually identical
knock-off of Aquazzura's well-known "Wild Thing" shoe. The silhouettes are
indistinguishable. Both shoes have a tall heel, an open toe featuring fringe across the
top, a thin strap around the back of the ankle, and laces that wrap around the ankle,
finished with fringed tassels on the ends.
March 31, 2016
Page 3
Trump "Teagin Pointy Toe Pump with Tassel" Aquazzura "Forever Marilyn" Shoe
Similarly, the "Teagin Pointy Toe Pump with Tassel" mimics the distinctive features of
the "Forever Marilyn" shoe, namely, the symmetrical teardrop shaped cutouts on either
side of the heel and the decorative tassel suspended from the top of the heel.
The above makes clear that the near identity of Trump's "Infringing Shoes" to our
client's "Wild Thing" and "Forever Marilyn" designs cannot result from mere
coincidence, but rather results from deliberate and intentional copying. Furthermore,
given Trump's prior copying of Aquazzura shoes, your clients were clearly aware of
Aquazzura and its product line. This pattern of misappropriation clearly indicates that
Trump's copying was willful and done in order to trade off of our client's stellar
reputation in the fashion industry.
Based on Aquazzura's prior dealings with your client's company, and on the obvious
and purposeful copying of our client's shoe, we anticipate that you will challenge
Aquazzura's rights in its designs, maintaining that the designs lack secondary meaning,
and that your client is therefore free to knock them off with impunity. That is not only
futile on the facts, but our client is also prepared to pursue claims under the New York
rule, which obviates the need to prove secondary meaning in the event of
egregious copying, such as this.
Aquazzura meets all the criteria for a trade dress claim against the Infringing Shoes,
namely, its designs are non-functional and have acquired secondary meaning through
extensive and exclusive use over the past year. See Power Balance LLC v. Power Force
LLC, No. SACV 10-1726 AG MLGX, 2010 WL 5174957, at *3 (C.D. Cal. Dec. 14,
2010) (finding secondary meaning where product had been on the market less than one
year, but was extremely popular and enjoyed great commercial success and visibility).
A finding of secondary meaning is further supported by the near-exact duplication of the

products by your company. See id. (granting preliminary injunction against defendant
based on its copying of plaintiffs trade dress, and finding secondary meaning based in
part on "evidence of intentional copying by the [d]efendant because the product image
March 31, 2016
Page 4
on [d]efendant's website is nearly identical to the product image on [p]laintiffs

website"); Cartier, Inc. v. Four Star Jewelry Creations, Inc., 34 AF. Supp. 2d 217, 243
(S.D.N.Y. 2004) ("Secondary meaning may be supported by intentional copying
particularly when the purpose is 'to benefit from the goodwill of the prior user through
confusion."'). In addition, the widespread media coverage of our client's "Wild Thing"
sandal described above also constitutes incontrovertible evidence of the secondary
meaning acquired by our client's design. See Harlequin Enters. Ltd. v. Gulf & W Corp.,
644 F.2d 946, 950 (2d Cir. 1981) (granting preliminary injunction and noting that
plaintiffs book covers had obtained secondary meaning in part due to "extensive,
unsolicited media coverage"); Thomas McCarthy, McCarthy on Trademarks & Unfair
Competition, 15:30 (4th ed. 2006).
Moreover, as mentioned above, we are also prepared to bring a claim based on New
York common law. See McCarthy 15:12-19. Federal courts in New York have
established a doctrine called the "New York Rule," according to which, under the
common law, a trade dress owner may prevail on a suit without proving secondary
meaning if "the second comer has indulged in one of the proscribed practices which
equity will enjoin," id. at 15:15, which practices include deliberate copying. See
Harlequin Enters. Ltd., 644 F.2d at 950 (Finding that "[a]lthough secondary meaning
usually is a prerequisite to trademark protection, New York law shields trade dress from
deliberate copying even if it has not acquired a secondary meaning," and that even
without secondary meaning, "Harlequin would be entitled to an injunction against Simon
& Schuster's deliberate imitation of its cover"); Medism Ltd. v. BestMed LLC, 910
F.Supp.2d 591, 615 (S.D.N.Y. 2012) ("The lack of evidence of secondary meaning is not
fatal to Medism's common law trade dress claim."); Kraft Gen. Foods, Inc. v. Allied Old
English, Inc., 831 F. Supp. 123, 135 (S.D.N.Y. 1993) (granting plaintiff a preliminary
injunction and noting that "[t]o succeed under an unfair competition claim, ... unlike the
federal law claims, proof of secondary meaning need not be shown"); McCarthy 15: 19.
Therefore, your clients' use of the distinctive elements and look of our client's trade
dress, as described above, violates our client's intellectual property rights and constitutes
trade dress infringement and unfair competition under Section 43(a) of the Lanham Act,
15 U.S.C. 1125, as well as under the state and common law ofNew York. Remedies
for your clients' infringement include an immediate injunction preventing the sale of the
Infringing Shoe or any other products that copy our client's designs, an accounting of
and payment to our client of all of Trump's profits from the sales of the Infringing Shoe,
payment of our client's damages, and payment of our client's attorneys' fees.
In addition, once the design patent applications covering the "Wild Thing" and "Forever
Marilyn" designs issue, Trump's continued offering for sale and display of the Infringing
Shoes, or any other shoes embodying similar features, will constitute willful patent
infringement in violation of35 U.S.C. 271 subjecting your company to injunctive
relief, payment of our client's attorney's fees and payment of all profits from the sale of
any garments bearing the features of our client's protected shoe.
March 31, 2016
Page 5
To avoid litigation, on behalf of Aquazzura, we hereby demand the following:
1. Trump shall immediately remove from the Internet - including all

websites (third-party or otherwise), catalogues, and any social media web pages- all
reference to the Infringing Shoes, shall cease offering the Infringing Shoes for sale, shall
cease filling orders for the Infringing Shoes, and shall cease manufacturing, causing to
be manufactured, shipping, ordering, importing, selling, advertising, displaying or
promoting the Infringing Shoes. This shall apply equally to any other shoe that bears a
similar design to any of the Aquazzura Designs.
2. Trump shall immediately recall all advertisements and promotional

materials relating to the Infringing Shoes and shall immediately recall all inventory of
the Infringing Shoes from all stores.
3. After the recall is complete, Trump shall immediately destroy all the
existing pairs of the Infringing Shoes and shall provide a sworn statement verifying this
destruction to counsel for Aquazzura.
4. Trump shall identify all other shoes it has sold that include or bear a
design similar to the "Wild Thing" or the "Forever Marilyn."
5. Trump shall agree in writing under oath not to offer for sale any knock-
off of the "Wild Thing" or the "Forever Marilyn," or any designs similar thereto,
regardless of color or fabric used.
6. Trump shall disclose the manufacturer or source of the Infringing Shoes,

if other than either IT Collection LLC or Marc Fisher Holdings LLC.
7. Trump shall provide to Aquazzura an accounting setting forth the total

number of pairs of the Infringing Shoes that were manufactured, sold, and in inventory
and the profit from those shoes.
8. Trump shall pay over to Aquazzura all of the profits from the sales of the
Infringing Shoes and all of Aquazzura's attorneys' fees.
In light of Trump's prior conduct, we believe that the proposal set forth above is more
than fair.
Please confirm by no later than April6, 2016, as to whether Trump is willing to take the
actions noted above. If not, our client will take all actions it deems necessary and
appropriate to address Trump's willful violation of Aquazzura's intellectual property
rights and will seek all available remedies at law or in equity.
This letter is written without waiver of our client's rights or remedies all of which are
expressly reserved.
March 31,2016
Page 6
J!Zom~
John P. Margiotta
cc: Felicity Kohn, Esq.

Aquazzura Italia v. Trump - Amended Complaint

Uploaded by

Document Information

Copyright

Available Formats

Share this document

Share or Embed Document

Sharing Options

Did you find this document useful?

Is this content inappropriate?

Copyright:

Available Formats

Aquazzura Italia v. Trump - Amended Complaint

Uploaded by

Copyright:

Available Formats

Case 1:16-cv-04782-KBF Document 42 Filed 01/18/17 Page 1 of 22

John P. Margiotta (jmargiotta@frosszelnick.com)

Attorneys for Plaintiff

UNITED STATES DISTRICT COURT

AQUAZZURA ITALIA SRL,

v. No. 16 Civ. 4782-KBF

IV ANKA TRUMP, IT COLLECTION LLC, FIRST AMENDED COMPLAINT

IT COLLECTION LLC and MARC FISHER

AQUAZZURA ITALIA SRL,

Plaintiff Aquazzura Italia SRL ("Aquazzura" or "Plaintiff'), by its undersigned attorneys,

collectively, "Defendants"), alleges as follows:

NATURE OF T HE ACTiO AND RELIEF SOUGHT

Aquazzura Wild Thing Shoe

1F2 144737 2) -2-

Trump Hettie Shoe

Aquazzura complained to Defendants about their copies of Aquazzura's well-known Belgravia

and Forever Marilyn shoes as well, which are shown below:

Trump Necila Aquazzura Belgravia

regarding the Trump Teagin Pointy Toe Pump with Tassel.

7. Defendants' flagrant copying of Plaintiffs well-known Wild Thing Shoe design is

such other relief as the Court deems just and proper.

at 725 5th A venue, New York, New York 10022.

JURISDICTION AND VENUE

Section 1367(a) ofthe United States Judicial Code, 28 U.S.C. 1367(a).

FACTS COMMON TO ALL CLAIMS FOR RELIEF

A. Plaintiff and Its Well-Known Luxury Footwear

17. Plaintiff Aquazzura is a renowned manufacturer and seller of luxury fashion

today it does millions of dollars of business worldwide.

variety of channels, including but not limited to:

Department stores, such as Barney's, Bergdorf Goodman, Neiman Marcus,

and Saks Fifth Avenue;

Shoe boutiques, including the Aquazzura boutique in Manhattan;

above, as well as polyvore.com, shopbop.com, and net-a-porter. com; and

E-commerce sites such asfmfetch.com.

including department stores, shoe boutiques, and websites such as polyvore.com.

Thing Shoe has received in New York, nationally, and internationally.

tremendously valuable asset of Plaintiff.

Dress in connection with its Wild Thing Shoe.

B. Defendants' Infringing Activities

Defendant IT Collection, partnered with Defendant Marc Fisher in or around 20 I 0 to launch a

intimately involved in designing." On information and belief, her intimate involvement

included involvement in designing the Infringing Shoe.

that knocked off the design of the Wild Thing Shoe.

31. A visual comparison of Defendants' Infringing Shoe shows that it is virtually an

exact copy of Aquazzura's Wild Thing, as shown below:

Aquazzura Wild Thing Shoe Trump Hettie Shoe

patented design of Aquazzura's well-known and distinctive Wild Thing Shoe.

cannot be distinguished post-sale.

"Aquazzura Wild Thing Dupe."

Defendants' Infringing Shoe are virtually indistinguishable:

Aquazzura Wild Thing Sandal Trump Hettie Sandal

Plaintiffs Wild Thing Shoe.

copy ofthat letter is attached hereto as Exhibit B.

protection for the design of the Wild Thing.

sell the Infringing Shoe.

48. Plaintiff has no adequate remedy at law.

FIRST CLAIM FOR RELIEF -FEDERAL

fully set forth herein.

acquired secondary meaning in the marketplace.

being marketed in a manner designed to confuse consumers.

sponsorship of the parties' products.

54. Defendants' actions constitute willful trade dress infringement in violation of

Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

SECOND CLAIM FOR RELIEF -FEDERAL