Legal issues related to the counterfeiting of Voodoo / The Ex
For 12 long years, from 2006 to 2018, the designer Raffaele Iannello was forced to spend a large part of his time and his money in heated legal disputes which, as also partially reported by various media including the Corriere della Sera newspaper and the weekly Gente, almost bankrupted him. Paradoxically, all of this has only resulted from the overwhelming success of his brainchild products (and from the fact that dishonest people have tried to take advantage of them).
Here are the highlights of the various events, in chronological order:
Presented by the designer as a prototype in 2003, the Voodoo / The Ex knife set was launched on the market in 2005 by the Italian company Edizioni Design Spa (owner of the Viceversa brand) and its Hong Kong branch (Viceversa International Ltd).
Conversely, it immediately achieved great commercial success with this product designed by Raffaele Iannello, so much so that it even used it as a representative image on the cover of the official catalog of all its products and also depicted it on the t-shirts of the hostesses at the various fairs in which it attended with its own stand.
The problems exploded in 2006, when the designer, after a year of waiting and reminders, demanded that he be paid all the back royalties which, by agreement, should have been paid every 3 months and which up to that moment had not been paid never been paid. To enforce the agreements he was forced to sue the company.
In June 2007, the Court of Florence condemned both Edizioni Design Spa and Viceversa International Ltd, recognizing the violation of Raffaele Iannello’s copyright. The Court ordered the two companies to immediately stop marketing the product and the bailiffs to seize all specimens still in their possession as they were considered counterfeits (sentence).
As reported by the Top Legal magazine, this provision also provided for the “cross border” injunction, ie also effective abroad. This cross-border injunction even created a precedent in Italian legislation since, among the very first times in Italy, the copyright discipline was applied to a design product until then applied only to art.
The day after the publication of the sentence, the company declared bankruptcy (read more) and therefore never paid the designer the substantial compensation imposed by the judge.
In July 2007 Raffaele Iannello granted the license for the worldwide use of his products to the American company CSB Commodities Inc., which until then had only had it from Viceversa for North America. Sales of the designer’s products took off, reaching peaks of 50,000 pieces a year and receiving praise from the media around the world.
However, this company also did not prove to be very honest, paying only a part of the agreed royalties. After a few years, exhausted by the constant postponements of payments, Raffaele asked his lawyers again to try to unblock the matter. At that point, the owners of CSB Commodities, to avoid being forced by a court to pay all due, closed the company and opened another one with which they continued the work of the previous one. After months of nerve-wracking negotiations, the designer was forced under blackmail (“either you accept the promise that in the future we will pay you and you will let us continue or we will give you nothing and it will be impossible for you to stop us”) to enter into a new licensing agreement with the their new company.
Thus, in September 2011, Raffaele Iannello granted the license for the exploitation of his products to TKS Int’l LLC. As was easily foreseeable (a leopard can’t change its spots, as they say) the payments continued to arrive in a partial way and even the promised arrears were never been welded completely. After 2 years of very tense relationships, the designer came to the awareness that it was impossible for him to continue working in that way. In December 2013 he thus decided to interrupt all relations with the company and to interface with her only through his lawyers. Since they too failed to reach an agreement with the counterparty, in April 2014 they notified her of the termination of the license relationship following the continuation of the numerous violations of the contract found. Since the company continued to operate illegally, the arbitration proceedings envisaged by the license agreement began shortly thereafter in the event of a dispute between the parties.
In November 2015, the first company (CSB Commodities Inc.) was convicted in the first instance in an International Arbitration Award held at the Court of Rome (sentence).
In March 2016, the second company (TKS Int’l LLC) was also sentenced in the first instance in another International Arbitration Award also held at the Court of Rome (sentence).
In December 2016, TKS Int’l LLC, which had appealed the first instance sentence, was also condemned by the Court of Rome also on appeal (sentence).
In July 2018 the Italian sentences against TKS Int’l LLC were recognized in the USA by the Eastern District Court of New York (sentence).
Result of the sentences
All these judgments confirmed that on April 18, 2014 all license agreements between the parties officially terminated and that consequently all products that have been sold by CSB/TKS after that date are to be considered illegal counterfeits.
Furthermore, according to the verdicts of the various Courts, TKS should have paid a very high amount as compensation. Unfortunately, not a cent was ever paid. In addition to obviously having to pay his lawyers, paradoxically the designer was also forced to pay the costs due to the counterparty because the absurd Italian law requires that the costs of the proceedings and registration fees must always be paid “jointly”, namely if the party ordered to pay them is insolvent or unreachable then it is the other party that must pay them in his place.
Since counterfeiting is often a criminal offense, various complaints have been filed with the competent authorities of various countries, including against the owners of those shops who, despite the warnings, persisted in selling the counterfeit copies. Some of these proceedings are still pending.
In addition to the battles with the various dishonest licensees, the efforts of Raffaele and his international lawyers have also focused in recent years on the fight against counterfeits produced in Asia by anonymous companies that have flooded the Western market with ultra-cheap copies, often very dangerous for users because they are made with poor quality and non-compliant materials. Over the years, thousands of reports and warnings (the so-called Cease and Desist Letters) have been sent to the various Alibaba, Amazon, eBay and dozens of other international platforms that sold the products designed by Raffaele Iannello online without any authorization.
Other legal issues
There were also other legal issues, fortunately all now concluded, which concerned the attempted lawsuits initiated by a few (but very noisy) consumers who felt offended by the innovative and provocative shape of the product designed by Raffaele Iannello.
Several hundred thousand Euros have been spent so far by the designer to protect the Intellectual Property relating to his products and in particular to his most copied product, namely the Voodoo / The Ex knife set. Unfortunately, despite the various judgments they have always recognized huge compensations, for various reasons it was never possible to obtain them. However, despite all the difficulties encountered along the way, Raffaele Iannello has never lost his passion for his work and his trust in customers who appreciate his products and who support him by purchasing original ones.