(Laura buccellati handbag website)
Laura Buccellati started a company marketing high-end leather and exotic animal skin handbags for the socialite crowd.
Yet, the upstart Miami designer soon found out she did not own the rights to her own name when it comes to business.
She was sued for trademark infringement by a Milan-based jewelry and watch maker founded by her grandfather, Buccellati Holding Italia SpA and Buccellati Inc. The companies have been sold to a private equity firm, and grandson Andrea Buccellati serves as president.
Laura Buccellati is a fixture on the South Florida fashion scene. She turned to crowd-sourcing to fund her legal bills and picketed the New York store bearing her family name in February along with business partner Lillian Azel with signs that read: “Shame on you. Leave us alone.”
But after a seven-day trial before Chief U.S. District Judge K. Michael Moore, an eight-member jury decided handbag maker Laura Buccellati LLC caused confusion among consumers.
The jury did not find the infringement was willful or that the Miami designer engaged in false advertising. It recommended no damages for the jewelry company.
Both sides are awaiting a decision from Moore on an injunction request.
Buccellati Inc., the jewelry company, filed a blistering motion for attorney fees last month and invoked a recent U.S. Supreme Court decision on patent trolls to support its case.
“I never anticipated that selling handbags using my own name would bring me a legal nightmare,” Buccellati said on her crowd-funding site, which ended up collecting only $15,000 of her $100,000 goal, according to trial testimony.
At the very nut of the case is whether people have the right to use their names in a business that could be seen as competing with an established enterprise.
“Just because you are fortunate enough to have been born with a famous last name does not give you the right to use that name as a trademark if it will cause consumer confusion,” said attorney Jami A. Gekas, a Chicago partner at Foley & Lardner who was lead trial attorney for the jewelry company. Andrea I. Gonzalez, a Miami associate, also represented the jeweler.
Gekas said an injunction, rather than damages, is often the point of trademark litigation and the jury’s finding of consumer confusion gave Moore a sound basis to issue one.
“Once you have confusion, an injunction is the order of the day,” she said.
Laura Buccellati and Azel testified emotionally, sometimes tearfully, at trial. They said their business had yet to turn a profit and also had a cavalcade of their South Florida socialite friends testify on their behalf.
“Even where a jury or court has determined there is a likelihood of confusion, such a finding does not mandate the entry of a permanent injunction prohibiting future use of the name,” Miami attorney Albert Bordas wrote for the two women in a post-trial brief.
Laura Buccellati was represented at trial by New York litigator David T. Azrin, a partner at Gallet Dryer & Berkey.
“Laura was following in the footsteps of many other members of the extended Buccellati family who have operated their own businesses in jewelry and fashion design using their own full names,” Azrin said.
He noted a cousin’s wife promoted her own fashion designs with her full name.
Laura Buccellati’s defense was accused of putting on a case that contradicted its previous defenses and sworn testimony and drove up litigation costs.
The jeweler’s motion for fees claims the Supreme Court decision in Octane Fitness v. Icon Health and Fitness addressed abuses in patent and trademark cases, clarifying that a winning party can recover attorney fees for unreasonable litigation conduct.
“They needlessly complicated what should have been a very straightforward likelihood-of-confusion case between two parties using highly similar marks on highly related goods,” Gonzalez wrote in the motion.
Her lawyers filed a response to the request for attorney fees, arguing a fee award is warranted only in exceptional trademark cases and there is nothing exceptional about an extended family member asserting the right to use her own full name.
Laura Buccellati asked in her crowd-funding statement why she was being sued. She answered, “I have to believe it is because I am a woman that has dared to be entrepreneurial independent of the family.”
The jewelry line got its start in 1919 when Mario Buccellati established stores in Milan, Rome and Florence. Other stores opened on Fifth Avenue in New York in 1956 and Worth Avenue in Palm Beach in 1958. Buccellati Inc. is scheduled to open in Bal Harbour this fall.
His five sons ran the company following his death. In 1971, Laura’s uncle, Gianmaria Buccellati, took control of the business and in 2011 reorganized it to form Buccellati Holding Italia.
The holding company and Buccellati Inc. filed the trademark suit against Laura Buccellati in April 2013, noting it still sold high-end, custom-made bags. It also said it used LAURA trademark for its popular flatware.
The complaint said Laura Buccellati sold her interest in the family company in 1989 but tried to cash in on the cache of her family’s high-end retail name with her handbags.
Laura Buccellati, in one of her many statements about the lawsuit, noted the Milan-based private equity firm, Clessidra SGR, announced plans to buy a 70 percent stake in Buccellati Holdings Italia for a reported $103 million the month before the complaint was filed against her.
In his order granting the jeweler’s motion for partial summary judgment in March, Moore recited Laura Buccellati’s assertion that the family gave her permission to start her company in 2008 unencumbered. However, Moore noted Gianmaria Buccellati emailed her with a proposed licensing agreement in June 2009, requiring a one percent royalty, to “quickly dash” such a notion.
“No reasonable juror could find … that these two women really believed that they had the green light to proceed with their business plan,” Moore wrote in his order.
The company also offered Buccellati a chance to rebrand her business by identifying herself only as the designer, but Laura Buccellati declined that offer.
Laura Buccellati said after the trial that the larger company’s business now is almost exclusively jewelry and flatware.
“My family’s heritage will always be a part of me, and I cannot divorce myself from them,” she said. “My grandfather Mario Buccellati will always be my grandfather, and my uncles and my cousins will always be my family. I will always have my name and my own personal identity.”