For the past year, Philipp Plein and Ferrari have been feuding behind the scenes over the German fashion designer’s use of the Italian automaker’s cars (and thus, its trademarks) as the backdrop to promote his wares. In a letter that counsel for Ferrari sent to Plein in July 2019, the car company accused Plein of using its wildly famous trademarks “for promotional purposes of [his] brand and products,” thereby, “unlawfully appropriating the goodwill attached to them.” According to Ferrari, the problem stems from Plein’s repeated use of images of his Ferraris with products from his 15-year old eponymous label.
By positioning his products alongside his various Ferraris and displaying them on Instagram, which is precisely what Plein did when he posted a photo of a limited edition pair of his $800-plus PHANTOM KICK$ sneakers sitting atop of his $350,000-plus green Ferrari 812 Superfast, with Ferrari’s word mark and legally-protected prancing horse logo front and center, Ferrari argued that Plein is potentially confusing consumers into believing that there is an affiliation between the two companies when there absolutely is not. More than that, the designer is “tarnishing the reputation of Ferrari’s brands and causing Ferrari material damage,” the company’s lawyer claimed.
Counsel for Ferrari, Fabrizio Sanna of Orsingher Ortu Avvocati Associati, asserted in the letter – and in subsequent legal proceedings – that Plein is actively associating Ferrari “with a lifestyle [that is] totally inconsistent with [its] brand perception” by using “Ferrari’s cars as props in a manner which is per se distasteful.”
“The undesired connection between Ferrari’s trademarks on the one hand, and Philipp Plein’s line of shoes and the questionable manner in which they are promoted, on the other hand, is interfering negatively with the rights enjoyed by Ferrari’s selected licensees, which are exclusively entitled to sue Ferrari’s trademarks to produce and promote [footwear] that is Ferrari branded,” Sanna further asserted, and “formally asked” Plein to remove the images at issue “no later than 48 hours from the receipt of this letter” in order to avoid Ferrari bringing such “unlawful, unfair and harmful behavior to the attention of the Courts.”
While the two parties’ trademark-specific fight (the merit of which we dove into here) has been relatively quiet since it initially made headlines, the parties have been going back and further in Italian court, and as Plein recently revealed, Ferrari allegedly demanded $2 million from him in connection with the aforementioned infringement and dilution – a sum that Plein says that he has “negotiated” down to $200,000.
However, now, in lieu of paying that sum to the Maranello, Italy-based auto company, Plein has another idea: in an Instagram post on Friday, Plein stated, “After such a long time, I am exhausted and tired of fighting [with Ferrari] especially in this particular moment [when] it is completely inappropriate to fight over such unimportant issues!!!!” Ultimately, Plein claims that neither he nor Ferrari “really need this money,” and so, “instead of continuing to fight,” Plein proposes settling the ongoing trademark dispute and donating the $200,000 to a race-based charity of Ferrari’s choosing.
In a letter to Ferrari’s CEO Louis Camilleri dated June 5, Plein’s counsel proposed that the parties “settle once and forever all the pending legal disputes and waive all claims and appeals in exchange for the commitment of Mr. Plein to donate in the name of Ferrari Group and Plein Group the sum of $200,000.” It seems unlikely that Ferrari would agree to drop all of its current claims against Plein, as well as its ability to appeal any further decisions. A representative for the brand was not immediately available for comment.
Nonetheless, counsel for Plein says that the designer is asking Ferrari “to choose solidarity and responsibility over discord in such tragic and divisive moments for our society,” and Plein, himself, says that he will make a donation either way, albeit $20,000 – as opposed to $200,000 – if Ferrari does not agree to the sweeping settlement. Either way, it is difficult not to see how this instance appears to amount to an effort by the brand to use the recent race-based violence in the U.S. to put an end to its enduring legal battle with Ferrari, one that it has not been able to successfully escape in court.
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