The so-called "legal fakes" are not a new phenomenon in countries such as Italy, but maybe things will change after a London court sentenced to jail a father and son, Michele and Marcello Di Pierro, who are behind the Supreme copycat scheme.
But first of all, let's look at some background notes: a legal fake is essentially the copy of a popular trademark, registered by someone in a country where the original trademark hasn't been launched yet and operating in that country, selling products that are similar to the ones produced by the original brand, at times with a slightly modified logo.
So, essentially, a legal fake is not a mere copy of an item, like a fake luxury bag or a bootlegged item, but it means establishing a business entity that lives and prospers in a country, on the fame of the authentic brand (based in another country). In this way the parasitic brand producing legal fake products also by exploiting the marketing strategies of the authentic brand, misleads unaware consumers and hijacks the sales of the original company. Some legal fakes schemes have actually been so elaborate that the illegal legal products of the parasitic brand even ended up being presented at official trade shows and fairs.
In Italy there have been quite a few legal fake cases such as the ones regarding Boy London and Supreme Italia. The Boy London brand, originally founded by Stephane Raynor in the UK in 1976, had for quite a few years a popular Italian twin, registered as "Boy London Italia" by the Dream Project Spa, a company located in Barletta, in the Puglia region. The Italian company slightly modified the logo: the original Boy London eagle faced right and was supposed to be inspired by Roman symbols; the Boy Made in Barletta faced left and was scarily reminiscent of the emblem of Nazi Germany.
Boy London Italia doesn't seem to exist anymore, as the Dream Project has now replaced it with more trendy legal fakes, such as Comme des Fuckdown (an irreverent parody line of Comme des Garçons originally launched by skate brand SSUR) and GAëLLE Paris (reminiscent of the brand Pigalle Paris, but selling remixed clothes copied from a variety of brands and fashion houses, especially Chanel and Saint Laurent). Both brands are registered at the EUIPO as owned by another Barletta-based company Brand House Srl.
The Supreme case is more complex: Supreme, founded by James Jebbia in 1994, rose to cult streetwear brand thanks to its limited edition products sold in brand-owned and operated stores becoming iconic and its drop model (selling limited edition products on a weekly basis) turning into a successful marketing strategy adopted by many other companies and fashion brands all over the world.
After spotting Supreme in the U.S., Michele Di Pierro, a garment industry entrepreneur from Bisceglie (again in the Puglia region, Italy), realising its potential and seeing that it was still virtually unknown in Italy, decided to seize the opportunity and register it in Italy and San Marino with the name of a holding company with legal offices in the UK, International Brand Firm Ltd. (IBF). IBF then gave the brand in licence to Italian company Trade Direct Srl, based (like Dream Project and Brand House) in Barletta.
The application was filed in November 2015 at the UIBM (Ufficio Italiano Brevetti e Marchi; Italian Patent and Trademark Office) and the company started producing and selling its streetwear designs (cheaper than their American original counterparts) changing little of the original box logo that looked slightly bigger and without adding any other distinctive nor creative elements.
At the time, the original Supreme had already registered itself in Italy in October of the same year, but it still sold its product in limited editions in its own stores in New York, Los Angeles, London, Paris and Tokyo. The products of the legal fake company were well distributed in Italy and they became rather popular, so popular in fact that the brand also exhibited at the 89th edition of Pitti Uomo.
Realising they were the victims of a trademark infringement case, in 2016 Supreme New York brought the company to court. The case went on throughout 2017 and in January 2018 the court stated that there had been unfair competition from Trade Direct Srl in accordance with Art. 2598 of the Italian Civil Code (that provides that anyone who engages in acts of unfair competition, "Uses names or distinctive signs capable of producing confusion with names or distinctive signs legitimately used by others, or slavishly imitates a competitor’s product, or fulfills by any other means acts likely to cause confusion with the products and the activities of a competitor; Broadcasts information and evaluation about the products and the activities of a competitor, which may determine its disrepute, or steals the merits of the products or the company of a competitor; Directly or indirectly uses any other mean not comply with the principles of professional fairness and able to damage other people’s company").
As a consequence, in 2018 around 120,000 Supreme Italia items were withdrawn from the market and the company had to pay €5,500.00 to Supreme NY for fees and legal expenses.
Yet, as the years passed Di Pierro had expanded ammassing trademark registrations in over 70 countries including Indonesia, Singapore, and Spain, among others, and opened stores in various cities in Europe such as Madrid and Barcelona and even in China where his brand opened 40 stores, the most famous ones in Shanghai (opened in 2019 and closed in May 2020).
In other countries the decision of the court went in favour of Di Pierro: in Spain a court stated that the American brand was unknown and that the word "supreme" can be registered by anybody, as the European Union Intellectual Property Office (EUIPO) rejected in April 2018 the registration application for a trademark presented by Chapter 4 Corp., owner of Supreme, explaining that the term was just synonimous with "high quality" and therefore missed any distinctive character.
In June 2021, though, things changed for Di Pierro: as reported by Bloomberg, a London court found indeed Michele Di Pierro, 53, and his son Marcello, 24, guilty of two counts of fraud. Sentences were issued on June 25 with the father ordered to serve eight years and the son three years.
Circuit Judge Martin Beddoe stated that the Di Pierros "hijacked every facet of the company's identity and plagiarized it." "Like ticks, they jumped from one company to another and one jurisdiction to another," the judged added. "The brazenness of the offending is as remarkable as the dishonesty,” Judge Beddoe concluded.
The court ordered therefore IBF to pay monetary damages of 7.5 million pounds ($10.4 million) to the original Supreme in connection with the sophisticated trademark scheme.
Basically the whole case happened because there are jurisdictional variations in trademark law in different countries. There are indeed countries where the first-to-file trademark system prevails, something that favours trademark squatters. In these cases the first party to simply file an application (rather than the first party to actually use the mark in commerce) becomes the owner of that trademark. While legal fakes technically do not exist in trademark law textbooks, the Supreme Italia / Supreme NY case means that there should be at least one chapter about this fascinating topic that is actually rather complicated as it implies the knowledge of intellectual property and trademark registration laws in different countries.
Things seem to have finally settled as Supreme has managed to invalidate registrations previously held by IBF in countries such as Singapore, China and Israel; in December last year US-based apparel and footwear company VF Corporation bought Supreme for $2.1bn, and now the Di Pierros got their sentences in the UK. But is this long chapter really over?
Well, because of Brexit, if the Di Pierros are in Italy, it may be difficult to extradite them and force them to serve their sentences because there are new extradition arrangements that replace the previous ones, besides quite a few European Union states claimed in April they will refuse to guarantee that suspected criminals citizens of their country can be extradited to the UK. Will this happen also for the Di Pierros in case they are in Italy?
Besides, this story is definitely not over, but needs a deeper investigation: all the companies that have been playing the legal fake game are based in the Puglia region, quite often in Barletta. So it would be worth maybe investigating the issue further as there may be more behind this story than just clothes, including money laundering and criminal organisations. In a nutshell, Supreme Vs Supreme Italia shouldn't maybe be a chapter in a legal textbook or a documentary, but an intriguing film. A crime film, you say? You know, it may even have a comical twist about it.
Throughout the years Supreme has become a super cool and super hip brand, collaborating with Disney, Vans, The North Face, Timberland, Louis Vuitton, Emilio Pucci and even Oreo. But when it started Supreme was the underdog of the situation and, in 2000, Vuitton sent Supreme a cease-and-desist letter as the streetwear brand used its logo on skateboards. It wasn't the only one, though, as Supreme also used other logos (NHL, NCAA) on its products.
Besides, Supreme's own logo is actually "inspired" by the art of Barbara Kruger, who used the same font and red background for her anti-capitalist, anti-authoritarian slogans overimposed on 1950s advertising-style black-and-white photographs (Kruger produced them in the '80s, so before Supreme was born).
Yet, when Leah McSweeney of Married to the MOB started selling parody items stating "Supreme Bitch" and eventually tried to trademark the two words, Supreme sued it for $10 million for stealing the logo.
Asked to comment about the incident by an editor, Kruger replied with a document stating "what a ridiculous clusterfuck of totally uncool jokers," which is probably the definition that best describes the complex and never-ending "Supreme v. Supreme Italia/Spain, etc" feud that doesn't even take into account the fact that, without Kruger's works, there would be no Supreme and no Supreme Legal Fake.
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