Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 1 of 14 Page ID #:1

1 HODGSON LEGAL CHERYL L. HODGSON (CSB# 141275) 2 [email protected] 401 Wilshire Blvd., 12th Floor 3 Santa Monica, CA 90401 4 Telephone: (310) 623-3515 Attorneys for Plaintiff 5 DORISIMO, LIMITED

6 7 UNITED STATES DISTRICT COURT

8 CENTRAL DISTRICT OF CALIFORNIA 9 DORISIMO LIMITED, a U.K. Limited 10 Liability Company COMPLAINT FOR:

11 Plaintiff 1) WILFULL TRADEMARK AND SERVICE MARK INFRINGEMENT 12 vs. 13 2) TRADEMARK DILUTION Co., a 14 Delaware corporation, and DOES 1 3) UNFAIR COMPETITION BY FALSE through 10, inclusive DESIGNATION OF ORIGIN 15 Defendants. 4) UNFAIR COMPETITION BY FALSE 16 AND MISLEADING STATEMENTS OF FACT 17 5) PETITION TO CANCEL FEDERAL 18 TRADEMARK

19 6) INFRINGEMENT OF MARK TO ENHANCE COMMERCIAL VALUE OF 20 DEFENDANT'S GOODS

21 7) UNFAIR COMPETITION (Cal. B&P 22 Code § 17200 et seq.

23 DEMAND FOR JURY TRIAL

24 25 Plaintiff DORISIMO LIMITED for its Complaint against defendant and DOES 1-10, 26 hereby complain and allege as follows: 27 JURISDICTION AND VENUE 28

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1 1. This Court has Federal subject matter jurisdiction over this matter pursuant to

2 Lanham Act, Act of July 5, 1946, 60 Stat. 427, U.S.C., and Title 15, §§ 1051-1127. 3 2. This is a civil action seeking damages and injunctive relief for trademark 4 infringement. 5 3. This Court has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a) 6 and 1338(a)(b). 7 8 4. This Court has personal jurisdiction over defendants because, among other

9 things, defendants are doing business in the State of California and in this judicial district,

10 the acts of infringement complained of herein occurred in the State of California and in this 11 judicial district, and defendants have caused injury to the plaintiff and their intellectual 12 property within the State of California and in this judicial district. 13 5. Venue is proper in this district pursuant to 28 U.S.C. §§ 1391(b) and (c), 14 15 and/or § 1392. 16 PARTIES

17 6. Plaintiff DORISIMO LIMITED (“Dorisimo” or “Plaintiff”), a United Kingdom

18 Limited Liability Company is the owner of rights in and to the trademark and service mark 19 THE CLASH (“Clash” or “the Mark”), made famous by the London rock group THE CLASH, 20 which was formed in 1976. For most of THE CLASH’s recording career, the members 21 consisted of John Mellor, Mick Jones, Paul Simonon and Topper Header (“the Group 22 23 members”). 24 7. The true names and capacities, whether individual, corporate, associate, or

25 otherwise, of defendants sued herein as Does 1 through 10, are unknown to plaintiff, who 26 therefore sues said defendants by such fictitious names (the “Doe Defendants”). Plaintiff 27 will seek leave of Court to amend this complaint to state their true names and capacities 28 when they have been ascertained. Plaintiff is informed and believes, and this basis - 2 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 3 of 14 Page ID #:3

1 avers that the Doe Defendants are liable to Plaintiff as a result of their participation in all or

2 some of the acts hereinafter set forth. Defendants are referred to collectively herein as 3 “defendants.” 4 8. Plaintiff is informed and believes, and on that basis avers that at all times 5 mentioned in this complaint, each of the defendants was the agent and/or alter ego of each 6 of the other defendants and, in during the times alleged in this complaint, was acting within 7 8 the course and scope of such agency.

9 GENERAL ALLEGATIONS

10 9. The Clash is known around the world as the most iconic rock band of the late 11 1970’s and 1980’s. The group became the vanguard of the British punk era, with 12 journalists and critics having dubbed The Clash as “The Only Band that Matters.” The 13 group was inducted into the U.S. Rock and Roll Hall of Fame in 2003, and Rolling Stone 14 15 ranked the Clash as the 28th most important musical group of all time. 16 10. The Clash recorded and released three single albums, their famed 1979

17 double album London Calling, as well as a triple album, Sandinista! Rolling Stone voted

18 London Calling the top album of the decade of the 1980’s. In 2003, the magazine voted 19 London Calling as No. 8 on its list of the top 500 music albums of all times. Others have 20 listed London Calling as the greatest album of all time. The album features such songs as 21 “Train in Vain” and “Revolution Rock.” The title track “London Calling” is considered one of 22 23 the best guitar tracks in recorded music history. 24 11. In honor of the 40th anniversary of the release of London Calling, The Clash

25 will be honored with an exhibition at the London Museum beginning the Fall 2019. 26 12. The Mark and the music originallysignified by the Mark is one of the most 27 iconic in the entire music industry. THE CLASH and its music has become well-known in 28 the sports industry as a result of licensing of Class copyrighted music to advertise, market, - 3 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 4 of 14 Page ID #:4

1 and broadcast sporting events, including professional events including inter alia the

2 famed Wimbledon Tennis Tournament. 3 13. Plaintiff is the owner of U.S. Registration No. 3963968 for THE CLASH, 4 registered on May 4, 2011 for DVDs featuring live performances of a musical band; 5 Downloadable musical sound recordings; Sound recordings featuring music in Class 009; 6 Wrist bands; Short-sleeved or long-sleeved t-shirts; Neckties; Sweatbands in Class 025 7 8 and Entertainment in the nature of live performances by a musical band in Class 41. A

9 copy of the Registration No. 3963968 is attached as Exhibit A.

10 14. Plaintiff is also the owner of Application Serial No. 88590493 filed on August 11 23, 2019 for tennis in Class 25. 12 15. Plaintiff is the exclusive owner of the rights to use the Mark on for DVDs 13 featuring live performances of a musical band; Downloadable musical sound recordings; 14 15 Sound recordings featuring music; Wrist bands; Short-sleeved or long-sleeved t-shirts; 16 Neckties; Sweatbands and Entertainment in the nature of live performances by a musical

17 band and other merchandise bearing the Mark.

18 16. Plaintiff is also the owner of the EU Registration No. 012184991 issued 19 February 02, 2014, registered in Classes 9, 14, 15, 16, 18, 21, 25, 26, 27, 28, 32, 33 and 20 41 (“the EU Registration”). The EU Registration includes registration in Class 18 for inter 21 alia rucksacks, backpacks and courier bags and registration in Class 25 for inter alia 22 23 . A copy of the UK Registration is attached as Exhibit B. 24 17. Plaintiff is also the owner of UK Registration No. 2488111 issued May 20,

25 2008, registered in Classes 9, 14, 16, 25, 26, and 41 (“the UK Registration”). The UK 26 Registration includes registration in Class 25 for inter alia footwear. A copy of the UK 27 Registration is attached as Exhibit C. 28 18. As early as 2010 Plaintiff has marketed and sold , tennis shoes and - 4 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 5 of 14 Page ID #:5

1 globe skate shoes containing the Mark THE CLASH, among them its current collaboration

2 with to produce a special edition footwear bearing the plaintiff’s trademark and 3 band name, THE CLASH. 4 COUNT I 5 Willful Trademark and Service Mark Infringement 6 (15 U.S.C. § 1114) 7 8 19. Plaintiff re-alleges each and every allegation contained within paragraphs 1

9 through 18 hereof as though fully set forth herein.

10 20. Beginning on or about February 15, 2019, Defendants began manufacturing 11 and selling tennis rackets containing the Mark THE CLASH and variations thereof, in 12 violation of the Plaintiff’s exclusive rights in the Mark. 13 21. Sneakers and tennis shoes are legally related goods since tennis shoes are 14 15 used together with tennis rackets in playing the game of tennis. 16 22. Defendants have promoted, advertised, and continue to promote, advertise

17 and sell tennis rackets containing the mark THE CLASH and variations thereof, in the

18 United States and elsewhere, with willful intent to capitalize upon the good will of THE 19 CLASH trademark and service mark. 20 23. Wilson’s use the designation THE CLASH in Social Media on the defendants 21 “wilsontennis” Instagram account and on promotional and advertising materials for their 22 23 services and merchandise. 24 24. Wilson’s use of the mark THE CLASH and variations thereof, is likely to

25 cause confusion, mistake, or deception among consumers as to the source, quality, and 26 nature of defendants' tennis rackets. Further, in light of Plaintiff’s long standing 27 collaboration with Converse (whose parent company is NIKE), in connection with the sale 28 of sneakers, aka tennis shoes, the public is likely to assume that Plaintiff is in collaboration - 5 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 6 of 14 Page ID #:6

1 with Wilson, or has authorized and endorsed use of THE CLASH for Defendant’s rackets.

2 25. Plaintiff is informed and believes, and thereon alleges, that as a proximate 3 result of advantage accruing to defendants' business from plaintiff’s nationwide 4 advertising, sales, and fan recognition, and as a proximate result of confusion, deception 5 or mistake caused by defendants' wrongful advertising and sale of their goods and 6 services, as hereinabove alleged, bearing the Mark or variations thereof, defendants have 7 8 made substantial sales and profits in an amount to be determined at trial.

9 26. As a proximate result of advantage accruing to defendants' business from

10 plaintiff’s worldwide advertising, sales, and consumer recognition, and as a proximate 11 result of confusion, deception or mistake caused by defendants' wrongful advertising and 12 sale of their goods and services, as alleged above, bearing the Mark or variations thereof, 13 the plaintiff has been deprived of the value of its trademark as a commercial asset, in an 14 15 amount to be determined at trial. 16 27. Plaintiff is informed and believes and thereon alleges that, unless restrained

17 by this Court, defendants will continue to infringe the Mark, thus engendering a multiplicity

18 of judicial proceedings, and pecuniary compensation will not afford plaintiff adequate relief 19 for the damage to the Mark in the public perception. 20 28. These wrongful acts have proximately caused and will continue to cause 21 plaintiff substantial injury, including loss of customers, dilution of its goodwill, confusion of 22 23 existing and potential customers, injury to its reputation and diminution of the value of its 24 products. The harm these wrongful acts will cause to plaintiff is both imminent and

25 irreparable, and the amount of damage sustained by plaintiff will be difficult to ascertain if 26 these acts continue. Plaintiff has no adequate remedy at law. 27 29. Plaintiff is entitled to an injunction restraining defendants, their officers, 28 agents and employees, and all persons acting in concert with them, from engaging in - 6 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 7 of 14 Page ID #:7

1 further such unlawful conduct.

2 COUNT II 3 Trademark Dilution 4 (15 U.S.C. § 1125(c)) 5 30. Plaintiff re alleges each and every allegation set forth in Paragraphs 1 6 through 18 and 20 through 29 inclusive, and incorporates them herein by this reference. 7 8 31. The Mark THE CLASH is famous, having acquired this status by virtue of

9 widespread recognition and use both as an entertainment service mark as well as the

10 extensive licensing and widespread consumer recognition and use of the Mark as a 11 trademark on numerous goods bearing the Mark. 12 32. Defendant’s use of Plaintiff’s famous mark THE CLASH for tennis rackets is 13 a dilution of Plaintiff’s right in its distinctive mark. 14 15 33. The mark CLASH adopted and in use by Defendants is identical to Plaintiff’s 16 famous mark.

17 34. The use by defendants of the trademark THE CLASH, and any variation

18 thereof, in connection with tennis rackets is likely to harm the reputation of Plaintiff’s Mark 19 THE CLASH, and impair its distinctiveness in violation of 15 USC § 1125(c), thereby 20 tarnishing Plaintiff’s famous mark and blurring the distinctive and famous association of 21 THE CLASH trademark. 22 23 COUNT III 24 Unfair Competition by False Designation of Origin

25 (15 U.S.C. § 1125(a)) 26 35. Plaintiff re alleges each and every allegation set forth in Paragraphs 1 27 through 18 and 20 through 29 inclusive, 31 through 34 and incorporates them herein 28

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1 36. The use by defendants of the mark THE CLASH, or any variation thereof, in

2 connection with tennis rackets is a knowing use of a false designation of origin and a false 3 description or representation that wrongly and falsely designates and describes the goods 4 of the defendants as originating from or connected with plaintiff and constitutes utilizing 5 false descriptions or representations in commerce. 6 37. The use by defendants of the Mark, and any variation thereof, on or in 7 8 connection with its tennis rackets is a knowing use of a false designation of origin and a

9 false description or representation that wrongly and falsely designates the products

10 distributed, offered for sale, and sold by defendants as originating from or connected with 11 plaintiff and constitutes utilizing false descriptions or representations in commerce. 12 38. This imitation, copying and unauthorized use of the Mark and any variations 13 thereof, causes irreparable injury to plaintiff, including injury to its business reputation and 14 15 dilution of the distinctive quality of the plaintiff’s Mark. 16 39. By reason of the foregoing, defendants have violated and are continuing to

17 violate 15 U.S.C. § 1125.

18 40. Plaintiff is entitled to an injunction restraining defendants, their officers, 19 agents and employees, and all persons acting in concert with them, from engaging in any 20 further acts in violation of 15 U.S.C. § 1125. 21 41. Plaintiff is further entitled to recover from defendants the damages, including 22 23 attorneys' fees, they have sustained and will sustain, and any gains, profits and 24 advantages obtained by defendants as a result of defendants' acts of infringement alleged

25 above. At present, the amount of such damages, gains, profits and advantages cannot be 26 fully ascertained by plaintiff. 27 COUNT IV 28 Unfair Competition by False & Misleading Statements of Fact - 8 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 9 of 14 Page ID #:9

1 (15 U.S.C. § 1125 et seq). 2 42. Plaintiff re-alleges each and every allegation set forth in Plaintiff re-alleges 3 each and every allegation set forth in Paragraphs 1 through 18, 20 through 29, 31 through 4 34 and 36 through 41 inclusive, and incorporates them herein by this reference. 5 43. Defendants have willfully, without justification and without privilege 6 advertised, published, communicated, and caused to be advertised, published and 7 communicated, to other persons and to the public at large various false and misleading 8 statements of fact stating that defendants are the original owners and users of the Mark 9 THE CLASH and variations thereof. 10 44. These communications are false and misleading statements of fact in that 11 they falsely indicate that the plaintiff has been, and are, attempting to deceive the public 12 and unfairly profit from defendants' reputation in the trade. The true facts are: a) that 13 defendants have been, and are, attempting to deceive the public and unfairly profit from 14 the plaintiff’s reputation in the trade; b) that plaintiff is the original owner and user of the 15 Mark THE CLASH and variations thereof; and c) that defendants are the infringers of 16 plaintiff’s rights therein. 17 45. Defendants' advertising, publishing and communicating these false and 18 misleading statements of fact regarding plaintiffs causes irreparable injury to the plaintiff, 19 including injury to their business reputation and dilution of the distinctive quality of the Mark 20 THE CLASH. 21 46. By reason of the foregoing, defendants have violated and are continuing to 22 violate 15 U.S.C. § 1125. 23 47. Plaintiff is entitled to an injunction restraining defendants, their officers, 24 agents and employees, and all persons acting in concert with them, from engaging in any 25 further acts in violation of 15 U.S.C. § 1125. 26 48. Plaintiff is further entitled to recover from defendants the damages, including 27 attorneys' fees, it has sustained and will sustain, and any gains, profits and advantages 28 obtained by defendants as a result of defendants' acts of infringement alleged above. At - 9 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 10 of 14 Page ID #:10

1 present, the amount of such damages, gains, profits and advantages cannot be fully 2 ascertained by the plaintiff. 3

4 COUNT V

5 Petition to Cancel Federal Trademark Registration Based Upon Prior Use 6 (15 U.S.C. § 1119 and 1120) 7 8 49. Plaintiff re-alleges each and every allegation set forth in Paragraphs 1 9 through 18, 20 through 29, 31 through 34, 36 through 41, and 43 through 48 inclusive and

10 incorporates them herein by this reference. 11 50. Wilson is the owner of US Registration No. 5,836,146 for “CLASH” issued for 12 use on “Bags specially adapted for ; Tennis racket covers; Tennis 13 rackets.” 14 51. Wilson has also filed for international trademark registrations based upon 15 Registration 5,936,146 in Australia, China, Korea, Mexico, Norway, Switzerland and all of 16 the European Union countries, indicating its intent to usurp rights to Plaintiff’s CLASH

17 trademark around the world. 18 52. U.S. Reg. No. 5,836,146 for CLASH for tennis rackets should be cancelled 19 on grounds of likelihood of confusion between plaintiff’s prior rights in related goods, tennis

20 shoes and sneakers. 21 53. At the time the defendants submitted U.S. Application No. 88066478, they 22 knew that the plaintiff is the true lawful owner of the Mark, and that plaintiff has been and 23 continue to use the Mark THE CLASH. Plaintiffs have been injured by the issuance of U.S. 24 Reg. No. 5, 836,146 to the defendants and, pursuant to 15 U.S.C. § 1119 the Court 25 should declare invalid and cancel the defendants’ registration, pursuant to 28 U.S.C. § § 26 2201 and 2202 and 15 U.S.C. § § 1119 and 1064(3).

27 COUNT VI 28

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1 Infringement of Mark to Enhance Commercial Value of Defendant's Goods

2 54. Plaintiff re-alleges each and every allegation set forth in Paragraphs 1 3 through 19, 21 through 26, 30 through 35, 43 through 48, and 50 through 52 inclusive and 4 incorporates them herein by this reference. 5 55. Defendants’ use, as alleged above, of the Mark THE CLASH and colorable 6 imitations thereof for the goods claimed in their registration, specifically, “Bags specially 7 8 adapted for sports equipment; Tennis racket covers; Tennis rackets”, are likely to cause

9 injury to the business reputation of plaintiff.

10 56. Defendants’ use of the Mark and colorable imitations thereof for “Bags 11 specially adapted for sports equipment; Tennis racket covers; Tennis rackets” is without 12 plaintiff’s prior consent. 13 57. Defendants' use, as alleged above, of the Mark, and any colorable imitations 14 15 thereof for “Bags specially adapted for sports equipment; Tennis racket covers; Tennis 16 rackets”, is done for the purpose of enhancing the commercial value of their products.

17 58. Plaintiff is entitled to damages and injunctive relief due to defendants’ acts,

18 which have harmed plaintiff. 19 COUNT VII 20 Unfair Competition 21 (California Business Professions Code § 17200 et seq) 22 23 59. Plaintiff re-alleges each and every allegation set forth in Paragraphs 1 24 through 18, 20 through 29, 34 through 36, 37 through 42, 44 through 46, and 48 through

25 51 inclusive and incorporates them herein by this reference. Defendants' conduct above 26 constitutes unlawful, unfair, or fraudulent business practices in violation of California 27 Business and Professions Code Sections 17200 et seq. that have occurred and continue 28 to occur in commerce in this state and elsewhere, and which have caused and proximately - 11 - COMPLAINT Case 2:19-cv-08155 Document 1 Filed 09/20/19 Page 12 of 14 Page ID #:12

1 caused, and continue to cause and proximately cause, injury to plaintiff. Such activities of

2 the defendants have been of a willful or wanton nature, and are in bad faith, and/or have 3 been committed with a reckless disregard of the plaintiff’s rights. 4 60. These wrongful acts have proximately caused and will continue to cause 5 plaintiff substantial injury, including loss of customers, dilution of his goodwill, confusion of 6 existing and potential customers, injury to their reputation and diminution of the value of his 7 8 products. The harm these wrongful acts will cause to plaintiff is both imminent and

9 irreparable, and the amount of damage sustained by plaintiff will be difficult to ascertain if

10 these acts continue. Plaintiff has no adequate remedy at law. 11 PRAYER FOR RELIEF 12 WHEREFORE, Plaintiff prays: 13 1. For an order requiring defendants to show cause, if they have any, why they 14 15 should not be enjoined as set forth below; 16 2. For a permanent injunction enjoining defendants, and each of them, and their

17 agents, servants, and employees, and all persons acting under, in concert with, or for them

18 from: 19 (a) Using the Mark CLASH and any colorable imitation thereof, in the United 20 States and throughout the World, in connection with the goods claimed in the registration 21 “Bags specially adapted for sports equipment; Tennis racket covers; Tennis rackets” as 22 23 well as any related goods and/services; and 24 (b) Otherwise infringing plaintiff’s service mark and trademark; and

25 (c) Causing likelihood of confusion, deception, or mistake as to the source, 26 nature, or quality of defendants’ goods, “Bags specially adapted for sports equipment; 27 Tennis racket covers; Tennis rackets”; 28

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1 3. For an order directing defendants, and each of them, to file with this Court

2 and serve on plaintiff within 30 days after service of an injunction, a report in writing under 3 oath, setting forth in detail the manner and form in which defendants have complied with 4 the injunction; 5 4. For an order requiring defendants, and each of them, to deliver up and 6 destroy all inventory of “Bags specially adapted for sports equipment; Tennis racket 7 8 covers; Tennis rackets”;

9 5. For all of defendants’ profits derived from its infringement of plaintiff’s

10 trademarks and service marks; 11 6. For three times the amount of plaintiff’s actual damages caused by 12 defendants’ infringement of plaintiff’s service marks, but in any event not less than $ 3 13 million; 14 15 7. For plaintiff’s reasonable attorney fees expended in this action; 16 8 For punitive damages as the court may deem proper;

17 9. For costs of suit incurred herein; and

18 10. For such other and further relief as the Court may deem proper. 19

20 Dated: September 19, 2019 HODGSON LEGAL 21

22 By: 23 CHERYL L. HODGSON 24 Attorney for Plaintiff DORISIMO LIMITED 25

26 DEMAND FOR JURY TRIAL 27 Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby 28

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1 demands a trial by jury of all issues so triable. 2 3 Dated: September 20, 2019 HODGSON LEGAL

4

5 By: CHERYL L. HODGSON 6 Attorney for Plaintiff 7 DORISIMO LIMITED

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