Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 1 of 25 Page ID #:1
1 EPSTEIN DRANGEL LLP Peter J. Farnese (SBN 251204) 2 [email protected] 3 11601 Wilshire Blvd., Suite 500 Los Angeles, California 90025 4 Telephone: 310-356-4668 Facsimile: 310-388-1232, 5 Jason M. Drangel, Pro Hac Vice Application Forthcoming 6 [email protected] 7 Ashly E. Sands, Pro Hac Vice Application Forthcoming [email protected] 8 William C. Wright, Pro Hac Vice Application Forthcoming [email protected] 9 60 East 42nd Street, Suite 2520 10 New York, NY 10165 Telephone: 212-292-5390 11 Facsimile: 212-292-5391 12 Attorneys for Plaintiff Caryn Mandabach Productions Limited 13 UNITED STATES DISTRICT COURT 14 FOR THE CENTRAL DISTRICT OF CALIFORNIA 15 CARYN MANDABACH PRODUCTIONS CASE NO.: 2:20-cv-10220 LIMITED, 16 COMPLAINT FOR: 17 Plaintiff, (1) FEDERAL UNFAIR 18 v. COMPETITION, PASSING OFF, FALSE ADVERTISING AND 19 SADLERS BREWHOUSE LIMITED; FALSE DESIGNATION OF 20 HALEWOOD WINES & SPIRITS, INC.; ORIGIN; and THE WINEBOW GROUP, LLC, 21 (2) UNFAIR COMPETITION UNDER Defendants. CALIFORNIA’S BUSINESS AND 22 PROFESSIONS CODE § 17200; 23 (3) FALSE ADVERTISING UNDER 24 CALIFORNIA’S BUSINESS AND PROFESSIONS CODE § 17500; 25 AND 26 (4) CANCELLATION OF U.S. TRADEMARK REGISTRATION 27 NO. 5,573,011 28 DEMAND FOR JURY TRIAL
COMPLAINT Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 2 of 25 Page ID #:2
1 Caryn Mandabach Productions Limited (hereinafter, “Plaintiff” or “CMPL”), by
2 and through its undersigned counsel, files this Original Complaint against Defendants
3 Sadlers Brewhouse Limited (hereinafter “Sadlers”), Halewood Wines & Spirits, Inc.
4 (hereinafter, “Halewood”) and The Winebow Group, LLC (hereinafter, “Winebow”)
5 (Defendant Sadlers, Defendant Halewood and Defendant Winebow are hereinafter
6 collectively referred to as “Defendants”), and respectfully alleges as follows:
7 NATURE OF THE ACTION 8 1. This case involves claims for unfair competition in violation of Section
9 43(a) of the Trademark Act of 1946, as amended (15 U.S.C. § 1125(a)); and related
10 state and common law claims, arising out of Defendants’ infringement of Plaintiff’s
11 PEAKY BLINDERS Marks (as defined infra), including, without limitation, by
12 manufacturing, advertising, marketing, promoting, distributing, displaying, offering for
13 sale, and/or selling products that infringe one or more of the PEAKY BLINDERS
14 Marks (as defined infra) (collectively, the “Infringing Products”) (the “Action”).
15 JURISDICTION AND VENUE 16 2. This Court has federal subject matter jurisdiction over the claims asserted
17 in this Action pursuant to 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121, as
18 claims that arise under the Lanham Act. This Court has supplemental jurisdiction
19 pursuant to 28 U.S.C. § 1367(a).
20 3. Personal jurisdiction exists over Defendants because, upon information and
21 belief, Defendants have regularly conducted business in California and in this judicial
22 district, and continue to conduct business in California and in this judicial district;
23 and/or are causing tortious injury by an act in California; and/or are causing tortious
24 injury in California by an act outside California where they regularly do and/or solicit
25 business; and/or engage in other systematic courses of conduct and/or derive substantial
26 revenue from goods used or consumed, or services rendered, in California; and/or
27 otherwise avail themselves of the privileges and protections of the laws of the State of 28
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Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 3 of 25 Page ID #:3
1 California, such that this Court’s assertion of jurisdiction over Defendants does not
2 offend traditional notions of fair play and due process.
3 4. Defendants have sufficient minimum contacts with this State, through at
4 least the importation, marketing, distribution, offer, supply, and/or sale of Infringing
5 Products within the State of California. Upon information and belief Halewood and
6 Winebow are offering for sale and/or selling the Infringing Products in California.
7 5. Alternatively, upon information and belief, Sadlers is not subject to
8 jurisdiction in any state’s court of general jurisdiction and the claims outlined herein
9 primarily arise under federal law. In addition to the actions complained of herein, inter
10 alia, Sadlers has sufficient contacts with the United States as a whole and personal
11 jurisdiction will be established over Sadlers upon service pursuant to Fed. R. Civ. P.
12 4(k)(2):
13 a. Sadlers arranged for the Infringing Products to be imported, distributed,
14 offered, supplied and/or sold in the United States through, inter alia, U.S.
15 importers, distributors, retailers and/or the Internet, including but not
16 limited to Halewood and Winebow.
17 6. Venue for this action is proper in the United States District Court for the
18 Central District of California, inter alia, pursuant to 28 U.S.C. § 1391 because, upon
19 information and belief, a substantial part of the events or omissions giving rise to the
20 asserted counts occurred in this judicial district, and harm to Plaintiff has occurred in
21 this district. Alternatively, as noted supra, this Court has personal jurisdiction over
22 Defendants.
23 THE PARTIES 24 7. Plaintiff is a private limited company, organized and existing under the
25 laws of the United Kingdom with an address of 39a Berwick Street, London, England,
26 W1F 8RU.
27 8. Upon information and belief, Defendant Sadlers is a private limited 28 company, organized and existing under the laws of the United Kingdom and located and
-2- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 4 of 25 Page ID #:4
1 doing business at 15-17 Church Street, Stourbridge, West Midlands, United Kingdom
2 DY8 1LU.
3 9. Upon information and belief, Defendant Halewood is a corporation,
4 organized and existing under the laws of the State of Florida and is located and doing
5 business at 777 Brickell Avenue, Suite 500, Miami, Florida 33131.
6 10. Upon information and belief, Defendant Winebow is a limited liability
7 company, organized and existing under the laws of the State of Virginia and is located
8 and doing business at 4800 Cox Road, Suite 300, Glen Allen, VA, 23060.
9 GENERAL ALLEGATIONS 10 Plaintiff and its Award-Winning PEAKY BLINDERS SHOW and PEAKY 11 BLINDERS Marks
12 11. Caryn Mandabach is a multi-award-winning television producer whose
13 ground-breaking hits include NURSE JACKIE, ROSEANNE, THIRD ROCK FROM
14 THE SUN and THAT 70S SHOW.
15 12. In 2005, Caryn Mandabach founded CMPL, an internationally renowned
16 production company.
17 13. CMPL produces the multi-award-winning television series, PEAKY
18 BLINDERS, which premiered in the United Kingdom on BBC One in September 2013,
19 and on Netflix in the United States in September 2014 (the “PEAKY BLINDERS
20 SHOW”).
21 14. The PEAKY BLINDERS SHOW is a crime drama primarily set in
22 Birmingham, England in the aftermath of World War I, beginning in 1919. The PEAKY
23 BLINDERS SHOW follows the exploits of the fictional Shelby family, who run the
24 powerful PEAKY BLINDERS gang which is loosely based on a little-known historical
25 gang in Birmingham, UK that was in operation from about the 1890s to before World
26 War I and was known as “the Peaky Blinders” (the “Historical Gang”).
27 15. The gang featured in the PEAKY BLINDERS SHOW differs from the 28 Historical Gang in numerous respects, including, inter alia, that the PEAKY
-3- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 5 of 25 Page ID #:5
1 BLINDERS SHOW is set from 1919 onwards, after World War I, while the Historical
2 Gang was in operation from around 1890 through 1910, before World War I; the gang
3 depicted in the PEAKY BLINDERS SHOW uses safety razor blades tucked into the
4 brim of their flat caps as weapons, and it is debatable whether this was a tactic of the
5 Historical Gang, as such razors were considered luxury items only available toward the
6 end of the Historical Gang’s operation; and while the gang run by the Shelby family in
7 the PEAKY BLINDERS SHOW evolves into a highly organized operation with legal
8 business aims, the Historical Gang was nothing more than common street criminals
9 committing low-level offenses.
10 16. In the PEAKY BLINDERS SHOW, the fictional Shelby family owns a
11 business called “SHELBY COMPANY LIMITED”, which initially started as a race
12 betting company. Throughout the five series, the business of the SHELBY COMPANY
13 LIMITED was expanded to several different areas – for example, the business
14 purchased a pub and began selling spirits, such as whiskey and gin. During the episodes,
15 extensive reference was made to the business exploits of the Shelby family and the
16 PEAKY BLINDERS gang, including its ownership of a pub and its sale of alcohol.
17 Members of the PEAKY BLINDERS gang often meet at a pub called THE
18 GARRISON, and the pub plays a central role in the series, as it serves as a common
19 meeting place for the main characters.
20 17. Five (5) series of the PEAKY BLINDERS SHOW have now been aired on
21 the BBC in the UK and Netflix in the U.S. between 2013 and 2019, and a sixth series
22 has been commissioned as of the date of filing this Action.
23 18. The PEAKY BLINDERS SHOW has become wildly successful and
24 popular worldwide, and particularly in the United States. Since the PEAKY BLINDERS
25 SHOW premiered in 2013, it has attracted millions of viewers, won multiple awards,
26 gained critical acclaim and developed a widespread and a significant fanbase,
27 particularly on social media. 28
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Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 6 of 25 Page ID #:6
1 19. The PEAKY BLINDERS SHOW has received widespread press, media,
2 and social media coverage for the past eight (8) years. News stories, reports, reviews,
3 features, press releases and blog and social media posts have appeared in worldwide
4 print and online publications such as: The New York Times, The Wall Street Journal,
5 LA Times, Rolling Stone, Variety, Vox, Mashable, among many others.
6 20. CMPL is the owner of all trademarks and other intellectual property rights in
7 and to the PEAKY BLINDERS SHOW, including, without limitation, the PEAKY
8 BLINDERS Marks, defined infra, and rights in and to specific quotations, sayings and/or
9 excerpts of dialogue from the PEAKY BLINDERS SHOW (e.g., without limitation,
10 “Who's gonna stop us? Nobody!”, and “By Order of the Peaky Blinders”) (collectively,
11 “PEAKY BLINDERS IP”).
12 21. CMPL, through its authorized licensees, manufactures, imports, exports,
13 advertises, markets, promotes, distributes, offers for sale and/or sells various
14 enormously popular consumer products featuring the PEAKY BLINDERS IP (“PEAKY
15 BLINDERS Products”), such as a PlayStation game, art works, clothing, accessories,
16 bags, hats, whiskey tumblers, pint glasses, glass steins and coffee mugs, among many
17 others.
18 22. CMPL has gained significant common law trademark and other rights in its
19 PEAKY BLINDERS IP dating back to a first use in commerce as early as 2013,
20 including, without limitation its PEAKY BLINDERS Marks (as defined infra), PEAKY
21 BLINDERS SHOW and PEAKY BLINDERS Products through its use, advertising, and
22 promotion of the same.
23 23. CMPL has also protected its valuable rights in the PEAKY BLINDERS IP
24 by filing for and obtaining U.S. Trademark Reg. No. 6,031,949 for PEAKY BLINDERS
25 for a variety of goods in class 34 (hereinafter, “PEAKY BLINDERS Registration”).
26 24. Additionally, CMPL has also protected its valuable rights in its PEAKY
27 BLINDERS IP by filing a number of pending federal trademark applications, including, 28 but not limited to:
-5- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 7 of 25 Page ID #:7
1 Mark Status Ser. No. Class(es) Covered PEAKY Pending 88563829 25, 32, 33 2 BLINDERS 3 PEAKY Pending 87982169 8, 9, 16, 21, 24, 28, BLINDERS 41 4 PEAKY Pending 87979474 3, 29, 30, 43, 44 5 BLINDERS PEAKY Pending 87824824 14, 18 6 BLINDERS 7 (hereinafter, “PEAKY BLINDERS Applications”). The PEAKY BLINDERS 8 Registration, the PEAKY BLINDERS Applications, and common law rights in and to 9 the mark PEAKY BLINDERS are collectively referred to as “PEAKY BLINDERS 10 Marks”. 11 25. CMPL and its distribution partners, such as Netflix, have spent substantial 12 time, money, and effort in building up and developing consumer recognition, awareness, 13 and goodwill in the PEAKY BLINDERS SHOW, PEAKY BLINDERS Products, and 14 PEAKY BLINDERS IP. 15 26. As a result of CMPL and its distribution partners’ marketing and 16 merchandising efforts, the success of the PEAKY BLINDERS SHOW and quality of its 17 PEAKY BLINDERS Products, its promotions, extensive press and media (including 18 social media) coverage, and word-of mouth-buzz, the PEAKY BLINDERS SHOW, 19 PEAKY BLINDERS Products and PEAKY BLINDERS IP, including the PEAKY 20 BLINDERS Marks, have become famous and prominently placed in the minds of the 21 public. Members of the public have become familiar with the PEAKY BLINDERS 22 SHOW, PEAKY BLINDERS Products, and PEAKY BLINDERS IP, including the 23 PEAKY BLINDERS Marks, and have come to recognize the PEAKY BLINDERS 24 Products and PEAKY BLINDERS IP and associate them exclusively with CMPL. 25 27. CMPL and its PEAKY BLINDERS IP, including the PEAKY BLINDERS 26 Marks have acquired a valuable reputation and goodwill among the public as a result of 27 such associations. 28
-6- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 8 of 25 Page ID #:8
1 28. CMPL has gone to great lengths to protect its interests in and to the
2 PEAKY BLINDERS IP, including the PEAKY BLINDERS Marks. No one other than
3 CMPL is authorized to manufacture, import, export, advertise, offer for sale, or sell any
4 goods utilizing the PEAKY BLINDERS IP without the express written permission of
5 CMPL.
6 Defendants’ Wrongful and Infringing Conduct 7 29. Upon information and belief, Defendant Halewood is the United States
8 branch of the UK-based wine, spirits, and beer producer and distributor Halewood Wine
9 and Spirits PLC based in Liverpool, England.
10 30. Upon information and belief, Defendant Sadlers, a company owned or
11 controlled by Halewood Wine and Spirits PLC is a brewing and distilling company,
12 brewhouse and bar in Stourbridge, West Midlands, England.
13 31. Upon information and belief, in 2014, following the airing of series 1 of the
14 PEAKY BLINDERS SHOW to critical acclaim in the United Kingdom, Defendant
15 Sadlers began to offer for sale and sold beer under the name “Peaky Blinder” (“Peaky
16 Blinder Beer”), in the United Kingdom.
17 32. On or around September 2014, and again in 2016, Defendant Sadlers
18 contacted CMPL and offered to supply CMPL with the Peaky Blinder Beer for the
19 limited purpose of the UK launch party for that season of the PEAKY BLINDERS
20 SHOW, and CMPL accepted.
21 33. On or around October 20, 2016, CMPL sent a cease and desist letter to
22 Sadlers advising Sadlers that it had become aware of certain UK trademark applications
23 filed by Sadlers for PEAKY BLINDER in a variety of classes, requesting that Sadlers
24 provide certain information regarding its intentions, and advising Sadlers that CMPL
25 may take certain actions based on Sadlers’ response (“Initial Warning Letter”).
26 34. On or around November 2017, Sadlers began to advertise, market and
27 promote the release of three liquors under the name “Peaky Blinder” namely, a whiskey, 28 a gin and a rum (“Infringing Whiskey,” “Infringing Gin,” and “Infringing Rum”
-7- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 9 of 25 Page ID #:9
1 respectively) in the United Kingdom (the “Infringing Whiskey,” “Infringing Gin,” and
2 “Infringing Rum” are collectively referred to as “Infringing Products”). True and correct
3 images of the Infringing Products appear directly below:
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16 35. Notably, the design featured on the Infringing Whiskey bottle shown above
17 bears a striking resemblance to Arthur Shelby, a fictional character from the PEAKY
18 BLINDERS SHOW known for his proclivity for drinking whiskey. In particular, the
19 design featured on the Infringing Whiskey bottle is similar to the image of Arthur
20 Shelby from the PEAKY BLINDERS SHOW shown directly below.
21 Design on Infringing Whiskey bottle Image from the PEAKY BLINDERS SHOW
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-8- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 10 of 25 Page ID #:10
1 36. Additionally, as shown below, the bottles of the Infringing Whiskey,
2 Infringing Gin, and Infringing Rum each bear the phrase “By Order of Sadler’s Peaky
3 Blinder,” a play on the phrase (“By order of the Peaky Blinders!”) made famous by the
4 fictional Shelby family and their gang in the PEAKY BLINDERS SHOW when
5 engaging in their criminal activities.
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9 37. In further attempt to capitalize on the PEAKY BLINDERS SHOW,
10 Defendants marketed the Infringing Whiskey, Infringing Gin, and Infringing Rum by
11 using the phrase “Who’s gonna stop us? Nobody!” as shown in the images below. Upon
12 information and belief, the phrase is derived from a climactic scene in the PEAKY
13 BLINDERS SHOW in which Arthur Shelby, freshly returned from a successful day of
14 criminality, raises a rousing toast and shouts “Who’s gonna to stop us? Nobody!”
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-9- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 11 of 25 Page ID #:11
1 38. The design seen inside the “P” in the word PEAKY in the advertisement
2 above, and shown in detail directly below, is a reference to the design found on a razor
3 blade and it is debatable whether this would have been used by the Historical Gang, but
4 is, in fact, used by the gang throughout the PEAKY BLINDER SHOW.
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10 39. The font in which Defendants present the words PEAKY BLINDER in 11 connection with the Infringing Products is highly similar to the font in which the title of 12 the PEAKY BLINDERS SHOW is presented, as shown below. 13 Design used by Defendants Design used for the PEAKY 14 BLINDERS SHOW 15
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22 40. Various media outlets reporting on the release of the Infringing Products 23 were confused into believing that the Infringing Products were sourced from, licensed 24 by, sponsored or endorsed by, or otherwise associated with CMPL. For example, 25 Digital Spy noted that, 26
27 …[F]ans of the gritty BBC drama can now enjoy a taste of the show, with a new range of spirits as uncompromising as Tommy Shelby 28 himself. Yep, by order of the Peaky Blinders, there's a a new range of
-10- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 12 of 25 Page ID #:12
1 gin, rum and whiskey, which promises to "give a a [sic] true taste of the 1920s. 1 2
3 41. Bar Magazine indicated that, “[a] range of spirits has been launched by
4 Midlands brewer Sadler’s to tie in with the success of TV series Peaky Blinders,”2 and
5 Potstilled stated that the Infringing Whiskey, “…is tied to the immensely popular,
6 period drama, Peaky Blinders” and “was produced as a licen[s]ed product of the
7 show.”3
8 42. On or about May 9, 2017, Defendant Sadlers, through its predecessor,
9 applied for PEAKY BLINDER for a variety of goods in classes 32 and 33 in the United
10 States, resulting on U.S. Registration No. 5,573,011 (“Sadlers Registration”) 4.
11 43. On or around April 9, 2018, CMPL’s licensee, Endemol Shine Group
12 (“ESG”) sent a “First Letter before Action” to Sadlers regarding Sadlers’ infringement
13 of the PEAKY BLINDERS IP (“Second Warning Letter”).
14 44. Upon learning of the Sadlers Registration, CMPL filed Cancellation
15 Proceeding No. 92071971 in the United States Patent and Trademark Office
16 (“USPTO”) on August 26, 20195.
17 45. On or around March 2020, Sadlers, through Halewood and Winebow,
18 began to manufacture, import, advertise, market, promote, distribute, display, offer for
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20 1 See https://www.digitalspy.com/tv/a845116/peaky-blinders-whisky-rum-gin-range- 21 drink-like-a-shelby/
22 2 http://barmagazine.co.uk/midlands-brewer-launches-spirits-inspired-peaky-blinders/ 3 23 https://potstilled.com/2018/12/02/advent-8-sadlers-peaky-blinders/ 4 The Sadlers Registration was originally applied for by Sadlers’ predecessor, Windsor 24 Castle Brewery Limited, on May 9, 2017, and was ultimately assigned to Sadlers on 25 June 27, 2018. 5 On October 21, 2020, Sadlers filed an opposition to CMPL’s PEAKY BLINDERS 26 Registration , Opposition Proceeding No. 91265541. Simultaneously with the filing of 27 this Action, CMPL is filing to suspend Cancellation Proceeding No. 92071971 and Opposition Proceeding No. 91265541 pending the disposition of this Action. 28
-11- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 13 of 25 Page ID #:13
1 sale, and/or sell Infringing Products in the United States, including in this judicial
2 district.
3 46. In unquestionable bad faith, Defendants have used and continue to use,
4 inter alia, the term PEAKY BLINDER in connection with the marketing, distribution
5 and sale of spirits, including its Infringing Products, in the United States, causing U.S.
6 media outlets and consumers to mistakenly believe that the Infringing Products were
7 sourced from, licensed by, sponsored or endorsed by, or otherwise associated with
8 CMPL and/or the PEAKY BLINDERS SHOW.
9 47. For example, Defendant Sadlers’ official Instagram account for the United
10 States is using references to suggest a connection with the PEAKY BLINDERS
11 SHOW. In the post shown below, the bottle features the portrait image based on the
12 image of Arthur Shelby; the words PEAKY BLINDER appear in a style and font
13 similar to the style and font the title of the PEAKY BLINDERS SHOW is presented;
14 and the post features a pocket watch, which the hero of the PEAKY BLINDERS
15 SHOW, Tommy Shelby, is famous for carrying6, but which is not known as a calling
16 card of the Historical Gang.
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26 6 27 In fact, there is reason to believe that Tommy Shelby’s use of a pocket watch led to a shortage. See, https://www.birminghammail.co.uk/whats-on/shopping/peaky-blinders- 28 leads-shortage-pocket-12793887
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12 48. Due to the marketing activities of Defendants and the similarity of the
13 name and imagery used on the Infringing Products to the PEAKY BLINDERS IP,
14 Retailers are also promoting the Infringing Products in a manner that is likely to cause
15 confusion amongst consumers into thinking that the Infringing Products are sourced
16 from, licensed by, sponsored or endorsed by, or otherwise associated with CMPL and/or
17 the PEAKY BLINDERS SHOW.
18 49. For example, a liquor store in New York7 is using a picture from the
19 PEAKY BLIDERS SHOW to promote the Infringing Products:
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27 7 https://www.winfieldflynn.com/spirits/Sadler-s-Peaky-Blinder-Blended-Irish- Whiskey-w4245548ot 28
-13- COMPLAINT
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17 50. Further, a liquor store in Homdel, New Jersey is promoting the Infringing
18 Products on its Instagram account8 as being related to the PEAKY BLINDERS SHOW
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27 9 Notably, if a user is to click on #peakyblinders and #peakyblindersnetflix the user would be directed exclusively to references to the PEAKY BLINDERS SHOW. 28
-14- COMPLAINT
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11 51. Another liquor store10, which has locations throughout the United States,
12 and at least twenty-eight (28) stores in California where the Infringing Whisky is
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14 52. Despite having been repeatedly placed on notice of its infringing activities,
15 Defendants continued, and still continue, to manufacture, import, export, advertise,
16 market, promote, distribute, display, offer for sale, and/or sell Infringing Products and
17 use the PEAKY BLINDERS IP, and/or designs and/or marks that are substantially or
18 confusingly similar thereto, on or in connection with the sale of such Infringing
19 Products.
20 53. Defendants have advertised and promoted the Infringing Products in a
21 manner that is likely to confuse, deceive and cause consumers to falsely and mistakenly
22 believe that CMPL is the source and/or that Defendants and/or the Infringing Products
23 are sponsored by, endorsed by and/or otherwise affiliated with Plaintiff.
24 54. Specifically, Defendants have advertised and promoted the Infringing
25 Products in connection with a name, labeling, packaging and other marketing materials,
26 which clearly suggest an association with CMPL and its PEAKY BLINDERS SHOW.
27 CMPL has no relationship with Defendants and has not authorized this activity. 28
-16- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 18 of 25 Page ID #:18
1 FIRST CAUSE OF ACTION
2 (False Designation of Origin, Passing Off, False Advertising & Unfair Competition) 3 [15 U.S.C. § 1125(a)/Lanham Act § 43(a)])
4 55. Plaintiff repleads and incorporates by reference each and every allegation 5 set forth in the preceding paragraphs as if fully set forth herein. 6 56. CMPL, as the owner of all right, title and interest in and to the PEAKY 7 BLINDERS Marks, has standing to maintain an action for false designation of origin 8 and unfair competition under the Lanham Act § 43(a) (15 U.S.C. § 1125). 9 57. The PEAKY BLINDERS Marks are inherently distinctive and/or have 10 acquired distinctiveness. 11 58. Defendants knowingly and willfully used in commerce products, and 12 advertising, marketing and promotional materials, utilizing the PEAKY BLINDERS 13 Marks and/or marks confusingly similar thereto, and affixed, applied and used false 14 designations of origin and false and misleading descriptions and representations on or in 15 connection with the manufacture, advertisement, marketing, promotion, distribution, 16 display, offering for sale and/or sale of Infringing Products with the intent to cause 17 confusion, to cause mistake and to deceive the purchasing public into believing, in error, 18 that Defendants’ substandard Infringing Products are PEAKY BLINDERS Products 19 and/or products related to the PEAKY BLINDERS SHOW, and/or that Defendants’ 20 Infringing Products are authorized, sponsored, approved, endorsed or licensed by CMPL 21 and/or that Defendants are affiliated, connected or associated with CMPL, thereby 22 creating a likelihood of confusion by consumers as to the source of such Infringing 23 Products, allowing Defendants to capitalize on the goodwill associated with, and the 24 consumer recognition of, the PEAKY BLINDERS Marks, to Defendants’ substantial 25 profit in blatant disregard of CMPL’s rights. 26 59. By manufacturing, advertising, marketing, promoting, distributing, 27 displaying, offering for sale, selling and/or otherwise dealing in the Infringing Products 28
-17- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 19 of 25 Page ID #:19
1 using marks that are identical and/or confusingly similar to the PEAKY BLINDERS
2 Marks, Defendants have traded off the extensive goodwill of CMPL and the PEAKY
3 BLINDERS SHOW and did in fact induce, and intends to, and will continue to induce
4 customers to purchase Defendants’ Infringing Products, thereby directly and unfairly
5 competing with CMPL. Such conduct has permitted and will continue to permit
6 Defendants to make substantial sales and profits based on the goodwill and reputation of
7 CMPL and the PEAKY BLINDERS Marks, which CMPL has amassed through its
8 nationwide marketing, advertising, sales and consumer recognition.
9 60. Defendants knew, or by the exercise of reasonable care should have
10 known, that their adoption and commencement of and continuing use in commerce of
11 the PEAKY BLINDERS Marks and/or marks confusingly similar thereto would cause
12 confusion, mistake or deception among purchasers, users and the public.
13 61. Upon information and belief, Defendants’ aforementioned wrongful actions
14 have been knowing, deliberate, willful, intended to cause confusion, to cause mistake
15 and to deceive the purchasing public and with the intent to trade on the goodwill and
16 reputation CMPL.
17 62. As a direct and proximate result of Defendant’s aforementioned actions,
18 Defendant has caused irreparable injury to CMPL by depriving CMPL of the value of
19 its PEAKY BLINDERS Marks as commercial assets in an amount as yet unknown, but
20 to be determined at trial, for which it has no adequate remedy at law, and unless
21 immediately restrained, Defendants will continue to cause substantial and irreparable
22 injury to CMPL and the goodwill and reputation associated with the value of PEAKY
23 BLINDERS Marks.
24 63. Based on Defendants’ wrongful conduct, CMPL is entitled to injunctive
25 relief as well as monetary damages and other remedies as provided by the Lanham Act,
26 including damages that CMPL has sustained and will sustain as a result of Defendants’
27 illegal and infringing actions as alleged herein, and all gains, profits and advantages 28
-18- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 20 of 25 Page ID #:20
1 obtained by Defendants as a result thereof, enhanced discretionary damages and
2 reasonable attorneys’ fees and costs.
3 SECOND CAUSE OF ACTION 4 (California Unfair Competition) et seq. 5 [Cal. Bus. & Prof. Code Sections 17200 ] 64. Plaintiff repleads and incorporates by reference each and every allegation 6 set forth in the preceding paragraphs as if fully set forth herein. 7 65. California Business and Professions Code § 17200, et seq., states that 8 unfair competition shall mean and include any “unlawful, unfair or fraudulent business 9 act or practice.” 10 66. Defendants’ unlawful and improper actions, as set forth above, are likely to 11 cause confusion, mistake, and/or deception as to the source, origin, and/or sponsorship 12 of Defendants’ Infringing Products, and to falsely mislead consumers into believing that 13 the Infringing Products themselves, are those of, affiliated with, and/or approved by 14 CMPL 15 67. Accordingly, Defendants’ unauthorized use of the and/or marks 16 confusingly similar thereto constitutes unfair competition in violation of California 17 Business and Professionals Code § 17200, et seq. 18 68. Defendants’ acts of unfair competition have caused CMPL to sustain 19 monetary damage, loss, and injury, in an amount to be determined at trial. 20 69. In light of the foregoing, CMPL is entitled to an injunction under 21 California Business and Professions Code § 17200 et seq. restraining Defendants from 22 engaging in further such unlawful conduct, as well as to restitution of those amounts 23 unlawfully obtained by Defendants through its wrongful conduct. 24
25 THIRD CAUSE OF ACTION
26 (California False Advertising) [Cal. Bus. & Prof. Code Sections 17500 et seq.] 27 70. Plaintiff repleads and incorporates by reference each and every allegation 28
-19- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 21 of 25 Page ID #:21
1 set forth in the preceding paragraphs as if fully set forth herein.
2 71. Pursuant to Cal. Bus. & Prof. Code §§ 17500 et seq., it is unlawful to make
3 or disseminate any advertising “which is untrue or misleading, and which is known, or
4 which by the exercise of reasonable care should be known, to be untrue or
5 misleading….”
6 72. Defendants’ acts described above constitute false advertising in violation of
7 California Business and Professions Code §§ 17500 et seq.
8 73. Defendants have intentionally made and disseminated advertisements and
9 promotions for their Infringing Products that are untrue or misleading.
10 74. In particular, Defendants have advertised and promoted the Infringing
11 Products in connection with source indicia of CMPL and/or the PEAKY BLINDERS
12 SHOW without the permission of CMPL thereby creating a false and misleading
13 association with CMPL and/or the PEAKY BLINDERS SHOW when Defendants knew
14 or should have known that such advertising, promotion and/or sale of the Infringing
15 Products were likely to deceive the consuming public.
16 75. Defendants’ acts of false advertising have caused and will continue to
17 cause CMPL irreparable harm including to its business reputation and goodwill.
18 76. Defendants’ acts of unfair competition have caused CMPL to sustain
19 monetary damage, loss, and injury, in an amount to be determined at trial.
20 77. In light of the foregoing, CMPL is entitled to an injunction under
21 California Business and Professions Code §§ 17500 et seq. restraining Defendants from
22 engaging in further such unlawful conduct, as well as to restitution of those amounts
23 unlawfully obtained by Defendants through its wrongful conduct.
24 FOURTH CAUSE OF ACTION 25 (Cancellation of U.S. Trademark Registration No. 5,573,011)
26 [15 U.S.C. §§ 1052(a) and 1119] 78. Plaintiff repleads and incorporates by reference each and every allegation 27 set forth in the preceding paragraphs as if fully set forth herein. 28
-20- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 22 of 25 Page ID #:22
1 79. Pursuant to 15 U.S.C. §§ 1052(a), “[n]o trademark by which the goods of
2 the applicant may be distinguished from the goods of others shall be refused registration
3 on the principal register on account of its nature unless it consists of or comprises
4 immoral, deceptive, or scandalous matter….”
5 80. The mark that is the subject of the Sadler Registration consists of or
6 comprises deceptive matter that is falsely suggests a connection to CMPL and its
7 PEAKY BLINDERS SHOW and is likely to cause mistake, or to deceive consumers by,
8 for example, falsely suggesting that Defendants have an affiliation, connection, or
9 association with CMPL and its PEAKY BLINDERS SHOW, and therefore, the Sadler
10 Registration should be cancelled pursuant to 15 U.S.C. §§ 1052(a) and 1119.
11 81. Pursuant to the Lanham Act, this Court has jurisdiction to order the
12 USPTO to make appropriate entries on the Federal Register with respect to the Sadler
13 Registration, and may cancel the registration for Sadlers’ failure to meet the
14 requirements to maintain the registration.
15 PRAYER FOR RELIEF 16 WHEREFORE, by reason of the foregoing, Plaintiff respectfully requests that
17 this Court enter judgment against Defendants as follows:
18 A. For an award of Defendants’ profits and CMPL’s damages pursuant to 15 U.S.C.
19 § 1117(a) in an amount to be proven at trial and such other compensatory
20 damages as the Court determines to be fair and appropriate pursuant to 15
21 U.S.C. § 1117(a) for false designation of origin, passing off false advertising
22 and unfair competition under 15 U.S.C. §1125(a);
23 B. For restitution of those amounts unlawfully obtained by Defendants through their
24 illegal and infringing conduct, as alleged herein, pursuant to California
25 Business and Professionals Code § 17200;
26 C. For restitution of those amounts unlawfully obtained by Defendants through their
27 illegal and infringing conduct, as alleged herein, pursuant to California 28 Business and Professionals Code § 17500;
-21- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 23 of 25 Page ID #:23
1 D. For an order by this Court directing the USPTO to cancel Sadlers’ U.S.
2 Trademark Reg. No. 5,573,011 for the mark PEAKY BLINDER pursuant to 15
3 U.S.C. §1052(a) and any other applicable statute;
4 E. For a preliminary and permanent injunction by this Court enjoining and
5 prohibiting Defendants, or any of their agents, and any employees, agents,
6 servants, officers, representatives, directors, attorneys, successors, affiliates,
7 assigns, and entities owned or controlled by Defendants, and all those in active
8 concert or participation with Defendants, and each of them who receives notice
9 directly or otherwise of such injunction from:
10 (i) manufacturing, importing, exporting, advertising, marketing,
11 promoting, distributing, displaying, offering for sale, selling
12 and/or otherwise dealing in Infringing Products;
13 (ii) directly or indirectly infringing in any manner any of the
14 PEAKY BLINDERS Marks;
15 (iii) using any reproduction, counterfeit, copy or colorable
16 imitation of the PEAKY BLINDERS Marks, to identify any
17 goods or services not authorized by CMPL;
18 (iv) using any of CMPL’s trademarks, including, without
19 limitation, the PEAKY BLINDERS Marks, or any other marks
20 that are confusingly similar to the PEAKY BLINDERS Marks,
21 on or in connection with Defendants’ manufacture,
22 advertisement, marketing, promotion, distribution, display,
23 offering for sale, sale, and/or otherwise dealing in Infringing
24 Products;
25 (v) using any false designation of origin or false description, or
26 engaging in any action that is likely to cause confusion, cause
27 mistake, and/or to deceive members of the trade and/or the 28 public as to the affiliation, connection, origin or association of
-22- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 24 of 25 Page ID #:24
1 any product manufactured, advertised, marketed, promoted,
2 distributed, displayed, offered for sale, or sold by Defendants
3 with CMPL and/or the PEAKY BLINDERS SHOW and/or as to
4 the sponsorship or approval of any product manufactured,
5 advertised, marketed, promoted, distributed, displayed, offered
6 for sale, or sold by Defendants and Defendants’ commercial
7 activities by CMPL;
8 (vi) engaging in the unlawful, unfair, or fraudulent business acts or
9 practices, including, without limitation, the actions described
10 herein, including the use of the PEAKY BLINDERS IP and the
11 advertising of and/or dealing in any Infringing Products;
12 (vii) engaging in any other actions that constitute unfair
13 competition with CMPL;
14 (viii) engaging in any other act in derogation of CMPL’s rights;
15 (ix) secreting, destroying, altering, removing, or otherwise dealing
16 with the Infringing Products or any books or records that
17 contain any information relating to the manufacture,
18 advertisement, marketing, promotion, distribution, display,
19 offering for sale, and/or sale of Infringing Products;
20 (x) effecting assignments or transfers, forming new entities or
21 associations, or utilizing any other device for the purpose of
22 circumventing or otherwise avoiding the prohibitions set forth in
23 any Final Judgment or Order in this action; and
24 (xi) instructing, assisting, aiding or abetting any other person or
25 entity in engaging in or performing any of the activities referred
26 to in subparagraphs (i) through (x) above; and
27 F. For an order of the Court requiring that Defendants deliver up to CMPL for 28 destruction any and all Infringing Products and any and all advertising and
-23- COMPLAINT
Case 2:20-cv-10220 Document 1 Filed 11/06/20 Page 25 of 25 Page ID #:25
1 promotional materials in the possession, custody or control of Defendants that
2 infringe the PEAKY BLINDERS Marks or infringe the PEAKY BLINDERS
3 IP;
4 G. For an order from the Court requiring that Defendants provide complete
5 accountings for any and all monies, profits, gains and advantages derived by
6 Defendants from their manufacture, advertisement, marketing, promotion,
7 distribution, display, offering for sale, sale and/or otherwise dealing in the
8 Infringing Products as described herein, including prejudgment interest;
9 H. For an order from the Court that an asset freeze or constructive trust be imposed
10 over any and all monies, profits, gains and advantages in Defendants’
11 possession which rightfully belong to CMPL;
12 I. For an award of exemplary or punitive damages in an amount to be determined by
13 the Court;
14 J. For CMPL’s reasonable attorneys’ fees;
15 K. For all costs of suit; and
16 L. For such other and further relief as the Court may deem just and equitable.
17 DEMAND FOR JURY TRIAL
18 Plaintiff hereby demands a jury trial on all issues and claims so triable.
19 DATED: November 6, 2020 EPSTEIN DRANGEL LLP
20 By: s/ Peter J. Farnese
21 Peter J. Farnese (SBN 251204)
22 Jason M. Drangel, Pro Hac Vice Forthcoming [email protected] 23 Ashly E. Sands, Pro Hac Vice Forthcoming [email protected] 24 William C. Wright, Pro Hac Vice Forthcoming
25 [email protected] 60 East 42nd Street, Suite 2520 26 New York, NY 10165 Telephone: 212-292-5390 27 Facsimile: 212-292-5391
28 Attorneys for Plaintiff, Caryn Mandabach Productions Limited -24- COMPLAINT