by Laura Spagnoli and Elena Martini

With decision no. 11374/2019, the Court of Milan recently marked a victory in favour of the famous former Napoli’s footballer Diego Armando Maradona, in the proceedings brought by the latter against Dolce&Gabbana S.r.l.

The facts date back to 2016, when, in the context of a tribute parade to celebrate the symbols of the city of Naples, to which important and institutional clients of the well-known fashion house were invited, one of Dolce&Gabbana’s models had walked the catwalk wearing a blue shirt (like the ones worn by the Napoli  players) with, on the back, the Maradona name and the number 10, traditionally associated with the former champion.

Also in view of the fact that the abovementioned shirt was displayed on Dolce&Gabbana’s website, the former footballer sent a warning letter to the fashion house claiming that he had not issued any authorisation to use his name. In that context, Dolce&Gabbana was also requested by Maradona to refrain from marketing the products; which indeed did not ultimately happen.

Maradona later sued the fashion house to obtain compensation for damages resulting from the illicit use of his name. In fact, according to the footballer, by exploiting his name and the relevant trademark without authorisation in the context of a commercial and promotional activity, the defendant had led the public to mistakenly assume the existence of a commercial partnership with the plaintiff, or at least a connection between the two.

By granting the plaintiff’s claims, in the decision commented upon here, the Judge found the use of Maradona’s name to be unlawful, since the use “in Dolce&Gabbana’s collection was explicitly aimed at taking advantage of precisely those attractive characteristics associated with the prestigious sporting history of the legendary footballer”. This commercial exploitation, in fact, would have required the prior consent of the former footballer, whose name still conveys “certain emotions of historical charm and football excellence”.

The Court also specified that “the failure to market the product, following the plaintiff’s warning, affects the extent of the counterfeiting conduct and the related compensation claim, but does not affect the existence of the illicit advertising communication forbidden under Articles 20-21 of the Intellectual Property Code”.

Dolce&Gabbana was therefore sentenced to pay 70,000 euros by way of compensatory damages. The amount, much lower than that requested by the plaintiff (due to the fact that the product had finally not been marketed), was quantified on the basis of the so-called “price of consent” criterion, i.e. the price that would have been agreed between the parties if Maradona would have granted the right to use its name. In addition, the defendant was ordered to pay another 14,000 euros by way of reimbursement of the legal costs incurred by Maradona.