• Abstract and Figures
• Public Full-text

Case 2:19-cv-05159 Document 1 Filed 06/13/19 Page 1 of 18 Page ID #:1 1 DANIEL M. HAYES (SBN 240250) [email protected] 2 ELIYAHU NESS (SBN 311054) [email protected] 3 MITCHELL SILBERBERG & KNUPP LLP 2049 Century Park East, 18th Floor 4 Los Angeles, CA 90067-3120 Telephone: (310) 312-2000 5 Facsimile: (310) 312-3100 6 Attorneys for Plaintiff Fun Lab IP Co Pty Ltd. 7 8 UNITED STATES DISTRICT COURT 9 CENTRAL DISTRICT OF CALIFORNIA – WESTERN DIVISION 10 11 FUN LAB IP CO PTY LTD., an CASE NO. 2:19-cv-5159 Australian proprietary limited company, 12 COMPLAINT FOR Plaintiff, (1) TRADEMARK 13 INFRINGEMENT v. (2) FALSE DESIGNATION OF 14 ORIGIN EUREKA PRODUCTIONS LLC, a 15 Delaware limited liability company, and DEMAND FOR JURY TRIAL UNANIMOUS MEDIA, LLC, a 16 California limited liability company, 17 Defendants. 18 19 Plaintiff Fun Lab IP Co Pty Ltd. (“Funlab”) alleges as follows: 20 PRELIMINARY STATEMENT 21 1. Funlab owns U.S. Trademark Registration No. 5,614,092 for the 22 HOLEY MOLEY word mark, which is attached hereto as Exhibit A. Funlab also 23 owns U.S. Trademark Registration No. 5,614,098 for the below HOLEY MOLEY 24 design mark, which is attached hereto as Exhibit B. 25 26 27 Mitchell 28 Silberberg & Knupp LLP COMPLAINT FOR TRADEMARK INFRINGEMENT Case 2:19-cv-05159 Document 1 Filed 06/13/19 Page 2 of 18 Page ID #:2 1 2. Despite having actual and constructive knowledge of Funlab’s 2 ownership of the HOLEY MOLEY marks, Defendant Eureka Productions LLC 3 (“Eureka”) filed a trademark application with the U.S. Patent and Trademark 4 Office (“USPTO”) seeking to register the exact same word mark in the exact same 5 classes in which Funlab’s marks are registered, including the class for 6 entertainment services. On January 14, 2019, the USPTO issued a non-final office 7 action stating that Eureka’s application will be denied. The USPTO cited Funlab’s 8 registrations and the likelihood that consumers would confuse Funlab’s marks with 9 Eureka’s proposed mark as bases for the likely denial. The office action stated: 10 “The overriding concern is not only to prevent buyer confusion as to the source of 11 the goods and/or services, but to protect the registrant from adverse commercial 12 impact due to use of a similar mark by a newcomer.” The USPTO office action is 13 attached hereto as Exhibit C. 14 3. Funlab uses the HOLEY MOLEY marks in connection with venues 15 where miniature golf is played, including miniature golf competitions. Eureka 16 nevertheless chose to adopt, along with its partner Defendant Unanimous Media, 17 LLC (“Unanimous”), the HOLEY MOLEY name for their own miniature golf 18 course and competitions, which will be televised in a forthcoming network series. 19 The likelihood of confusion is unmistakable. 20 4. Funlab’s transactional counsel contacted counsel for Eureka to 21 attempt to resolve the matter, and to insist that Eureka change the name of its 22 series. To this date, Eureka has not agreed to do so. Indeed, it continues to market 23 its series using the HOLEY MOLEY mark. Accordingly, Eureka left Funlab with 24 no choice but to commence this action to recover damages, including treble 25 damages and attorneys’ fees, for Defendants’ brazen infringement. 26 THE PARTIES 27 5. Funlab is a privately held, Australian limited liability company whose Mitchell 28 brands include Holey Moley Golf Club, Strike Bowling, Sky Zone Australia, Silberberg & Knupp LLP 2 COMPLAINT FOR TRADEMARK INFRINGEMENT Case 2:19-cv-05159 Document 1 Filed 06/13/19 Page 3 of 18 Page ID #:3 1 Archie Brothers Cirque Electriq, Jukes Karaoke Bar, Red Herring Escape Rooms, 2 and B. Lucky & Sons. Funlab is a leader in out-of-home entertainment. Its 3 mission is to create “wow” spaces and strive to deliver next level fun to every 4 guest that walks through any of its venues across Australia, New Zealand & 5 Singapore. Funlab has a company website, https://www.fun-lab.com/, and several 6 social media accounts, through which it markets its brands to a worldwide 7 audience. Funlab also owns a website for its HOLEY MOLEY brand, 8 https://www.holeymoley.com.au/. 9 6. Funlab is informed and believes that Eureka is a Delaware limited 10 liability company with a principal place of business at 11766 Wilshire Blvd., Suite 11 460, Los Angeles, CA 90025. Eureka is the production company responsible for 12 creating and marketing the forthcoming television series “Holey Moley,” and is 13 liable for willful infringement of Funlab’s registered marks. Eureka has a website, 14 http://www.eurekagroup.tv/, where it promotes the “Holey Moley” television 15 series, http://www.eurekagroup.tv/press. 16 7. Funlab is informed and believes that Unanimous is a California 17 limited liability company with a principal place of business at 3373 South 18 Robertson Boulevard, Los Angeles, California 90034. Unanimous produced the 19 “Holey Moley” television series with Eureka. 20 JURISDICTION AND VENUE 21 8. This is a civil action seeking damages, injunctive relief, and other 22 equitable relief under the Lanham Act, 15 U.S.C. §§ 1051 et seq. 23 9. This Court has subject matter jurisdiction over Funlab’s claims 24 pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338(a). Additionally, 25 this Court has subject matter jurisdiction under 28 U.S.C. § 1332 because the 26 amount in controversy is more than $75,000 and the action is between a California 27 citizen and a citizen of a foreign jurisdiction. Mitchell 28 Silberberg & Knupp LLP 3 COMPLAINT FOR TRADEMARK INFRINGEMENT Case 2:19-cv-05159 Document 1 Filed 06/13/19 Page 4 of 18 Page ID #:4 1 10. This Court has personal jurisdiction over the Defendants because they 2 have purposefully availed themselves of the benefits of doing business in 3 California and have established a continuing presence in California. Defendant 4 Unanimous is a California entity with a California principal place of business and 5 Defendant Eureka has its principal place of business in California. Defendants 6 have also committed the torts complained of herein within California. 7 11. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) 8 because this is a judicial district in which a substantial part of the events giving rise 9 to the claims occurred, and the Defendants reside here. 10 FACTS APPLICABLE TO ALL CLAIMS 11 Funlab and its Intellectual Property Rights 12 12. Funlab is well known for designing and operating creative venues 13 within which patrons enjoy a variety of activities, including bowling, arcade 14 games, listening to live DJs, trampoline parks, karaoke, and miniature golf. Each 15 venue offers food, beer, and cocktails as well. Funlab’s brands have been a 16 smashing, commercial success. 17 13. Funlab launched its famous brand, HOLEY MOLEY, in 2016. The 18 brand quickly took hold in Australia, grabbing consumers’ attention and goodwill 19 through innovative miniature golf course designs and lively, enjoyable 20 atmospheres. Patrons, including families, friends, and companies, throw parties at 21 Holey Moley venues, where they compete against one another at miniature golf. 22 14. In 2018, Funlab hosted a “Holey Moley Masters” nationwide 23 competition. The event was Australia’s biggest competition for miniature golf and 24 offered a $10,000 final prize. That same year Funlab opened Holey Moley venues 25 in New Zealand and Singapore. 26 15. The totality of the circumstances demonstrate Funlab’s use of 27 HOLEY MOLEY in commerce. For example, consumers, including in the United Mitchell 28 States, encounter the HOLEY MOLEY brand through Funlab’s popular social Silberberg & Knupp LLP 4 COMPLAINT FOR TRADEMARK INFRINGEMENT Case 2:19-cv-05159 Document 1 Filed 06/13/19 Page 5 of 18 Page ID #:5 1 media accounts on Facebook (https://www.facebook.com/holeymoleygolf/), 2 Instagram (https://www.instagram.com/holeymoleygolf/), and YouTube, 3 (https://www.youtube.com/channel/UCmMzkJxVWEpeh8kJZ0EugEw). Reviews 4 on websites like Yelp and Trip Advisor demonstrate that U.S. consumers have 5 visited Holey Moley venues and informed other U.S. consumers of their 6 experiences. 7 16. Consumers, including consumers in the United States, may book 8 miniature golf events and parties at Holey Moley venues through its website, 9 https://www.holeymoley.com.au/booking/function. Consumers, including 10 consumers in the United States, may also purchase gift cards through the Holey 11 Moley website, https://www.holeymoley.com.au/gift-card. 12 17. Funlab applied for its HOLEY MOLEY service mark in Australia on 13 August 26, 2016. The registration issued on June 11, 2017. 14 18. Funlab then applied for a United States HOLEY MOLEY word mark 15 registration pursuant to the Madrid Protocol on November 6, 2017. The 16 application was published for opposition on September 11, 2018. The USPTO 17 granted the service mark on November 27, 2018. Funlab also applied for a United 18 States HOLEY MOLEY design mark on November 6, 2017. The USPTO 19 published the mark for opposition on September 11, 2018. The USPTO granted 20 the registration on November 27, 2018. 21 19. Both of Funlab’s HOLEY MOLEY marks are registered in Classes 41 22 and 43, including for use with “[e]ntertainment [services], namely, night club 23 entertainment; musical entertainment services, namely, presenting live musical 24 performances; night club services; party planning; providing information, 25 including online, about entertainment, sporting and cultural activities; provision of 26 entertainment facilities, namely, karaoke facilities, facilities and equipment for 27 playing golf, sports and laser tag

Load more

  18

Copy Link