Case: 1:21-cv-04741 Document #: 1 Filed: 09/07/21 Page 1 of 17 PageID #:1 IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ILLINOIS EASTERN DIVISION SAMIEL ASGHEDOM, individually and as administrator for THE ESTATE OF ERMIAS Case No. 21-cv-04741 ASGHEDOM p/k/a “NIPSEY HUSSLE”, Plaintiff, v. THE PARTNERSHIPS and UNINCORPORATED ASSOCIATIONS IDENTIFIED ON SCHEDULE “A,” Defendants. COMPLAINT Plaintiff Samiel Asghedom, individually and as administrator for the Estate of Ermias Asghedom p/k/a “Nipsey Hussle” (“Nipsey Hussle” or “Plaintiff”) hereby brings the present action against the Partnerships and Unincorporated Associations identified on Schedule A attached hereto (collectively, “Defendants”) and alleges as follows: I. JURISDICTION AND VENUE 1. This Court has original subject matter jurisdiction over the claims in this action pursuant to the provisions of the Lanham Act, 15 U.S.C. § 1051, et seq., 28 U.S.C. § 1338(a)-(b) and 28 U.S.C. § 1331. 2. Venue is proper in this Court pursuant to 28 U.S.C. § 1391, and this Court may properly exercise personal jurisdiction over Defendants since each of the Defendants directly targets business activities toward consumers in the United States, including Illinois, through at Case: 1:21-cv-04741 Document #: 1 Filed: 09/07/21 Page 2 of 17 PageID #:2 least the fully interactive e-commerce stores1 operating under the seller aliases identified in Schedule A attached hereto (the “Seller Aliases”). Specifically, Defendants have targeted sales to Illinois residents by setting up and operating e-commerce stores that target United States consumers using one or more Seller Aliases, offer shipping to the United States, including Illinois, accept payment in U.S. dollars and, on information and belief, have sold products using infringing and counterfeit versions of Plaintiff’s federally registered trademarks to residents of Illinois. Each of the Defendants is committing tortious acts in Illinois, is engaging in interstate commerce, and has wrongfully caused Plaintiff substantial injury in the State of Illinois. II. INTRODUCTION 3. This action has been filed by Plaintiff to combat e-commerce store operators who trade upon Plaintiff’s reputation and goodwill by offering for sale and/or selling unauthorized and unlicensed products, including apparel and other merchandise, using infringing and counterfeit versions of Plaintiff’s federally registered trademarks (the “Counterfeit Products”). Defendants create e-commerce stores operating under one or more Seller Aliases that are advertising, offering for sale and selling Counterfeit Products to unknowing consumers. E- commerce stores operating under the Seller Aliases share unique identifiers establishing a logical relationship between them and that Defendants’ counterfeiting operation arises out of the same transaction, occurrence, or series of transactions or occurrences. Defendants attempt to avoid and mitigate liability by operating under one or more Seller Aliases to conceal both their identities and the full scope and interworking of their counterfeiting operation. Plaintiff is forced to file this action to combat Defendants’ counterfeiting of its registered trademarks, as well as to protect unknowing consumers from purchasing Counterfeit Products over the Internet. Plaintiff 1 The e-commerce store URLs are listed on Schedule A hereto under the Online Marketplaces and Domain Names. 2 Case: 1:21-cv-04741 Document #: 1 Filed: 09/07/21 Page 3 of 17 PageID #:3 has been and continues to be irreparably damaged through consumer confusion, dilution, and tarnishment of its valuable trademarks as a result of Defendants’ actions and seeks injunctive and monetary relief. III. THE PARTIES Plaintiff 4. Plaintiff Samiel Asghedom is a resident of California currently residing in Los Angeles, California. Samiel Asghedom is the brother of the late Grammy-nominated rapper and community leader Ermias Asghedom, professionally known as “Nipsey Hussle”. Samiel Asghedom is also the representative for the Estate of Ermias Asghedom p/k/a “Nipsey Hussle”. 5. The late Nipsey Hussle is a musical icon, whose meteoric rise from the poor streets of South Los Angeles to the height of the entertainment and hip-hop world cemented his place in music history and stardom. Nipsey Hussle was also a beloved community leader, whose talents transcended music and entertainment, as he fought for economic and educational opportunities for the residents of communities stricken with urban blight. 6. Nipsey Hussle has earned numerous accolades for his music, including Grammys for Best Rap Performance and Best Rap/Sung Performance, as well as being nominated for Best Rap Album. Moreover, Nipsey Hussle’s debut album Victory Lap reached number 2 on the Billboard 200, with numerous hits on the Billboard Hot 100. 7. Despite Nipsey Hussle’s untimely murder in 2019, his popularity and fame have only continued to grow. His legacy includes tributes ranging from local government to entertainment stars and athletes, such as renaming the intersection of Slauson Avenue and Crenshaw Boulevard near Hussle’s store Marathon Clothing to “Nipsey Hussle Square”. There 3 Case: 1:21-cv-04741 Document #: 1 Filed: 09/07/21 Page 4 of 17 PageID #:4 have also been several tribute songs dedicated to Nipsey Hussle, including Nipsey Blue, by Snoop Dogg, and Deep Reverence, by Big Sean. 8. Following the success of his mixtapes The Marathon and The Marathon Continues, these phrases became synonymous with the Nipsey Hussle brand. Nipsey Hussle developed this into a clothing and accessories line called “The Marathon (Clothing)”, eventually opening the Marathon Clothing store. Products sold under the Nipsey Hussle brand include clothing, headwear, and accessories. 9. Nipsey Hussle branded products are distributed and sold to consumers throughout the United States, including in Illinois, through various affiliates and through the themarathonclothing.com webstore. 10. Plaintiff incorporates a variety of distinctive marks in the design of its various Nipsey Hussle products. As a result of its long-standing use, Plaintiff owns common law trademark rights in its trademarks. Plaintiff has also registered its trademarks with the United States Patent and Trademark Office. Nipsey Hussle products often include at least one of Plaintiff’s registered trademarks. Often several of Plaintiff’s marks are displayed on a single Nipsey Hussle product. Plaintiff uses its trademarks in connection with the marketing of the Nipsey Hussle products, including the following marks which are collectively referred to as the “NIPSEY HUSSLE Trademarks.” REGISTRATION REGISTERED INTERNATIONAL NUMBER TRADEMARK CLASSES For: Shirts, t-shirts, sweaters, beanies, hats, sweatsuits, varsity 4,917,142 THE MARATHON (CLOTHING) jackets, pants, socks in class 025. 4 Case: 1:21-cv-04741 Document #: 1 Filed: 09/07/21 Page 5 of 17 PageID #:5 For: Shirts, t-shirts, sweaters, beanies, hats, shorts, pants in 4,588,483 class 025. For: Hats, hoodies, jackets, shirts and short-sleeved shirts, sweatshirts, athletic shirts, baseball caps and hats, gift packages sold as a unit SOUTH CENTRAL STATE OF 6,211,634 consisting primarily of a MIND sweatshirt and also including a photo frame, a coffee mug, and a tote bag, sports shirts, sweat jackets, tee-shirts in class 025. For: Audio and video recordings featuring music and artistic performances; Downloadable musical sound recordings; Musical sound recordings in 4,494,798 NIPSEY HUSSLE class 009. For: Entertainment services in the nature of live musical performances in class 041. For: Pre-recorded audio tapes, discs and cassettes, video tapes, digital audio and audio video tapes and discs, CDs, and phonograph records featuring music and entertainment in the nature of music videos; musical sound and video recordings; 4,912,192 sound and video recordings featuring recorded theatrical productions; downloadable videos featuring music and entertainment in the nature of music videos; downloadable ring tones, music, mp3s featuring music, graphics, and 5 Case: 1:21-cv-04741 Document #: 1 Filed: 09/07/21 Page 6 of 17 PageID #:6 photographs for wireless communication devices in class 009. For: Production of music; distribution of musical sound recordings; fan clubs; audio recording production; record production; videotape production; entertainment services, namely, providing a web site featuring musical performances, musical videos, related film clips, photographs, and other multimedia musical entertainment materials; entertainment services, namely, providing on-line reviews of music, musical artists and music videos; entertainment services, namely, providing prerecorded music, information in the field of music, and commentary and articles about music, all on-line via a global computer network in class 041. 11. The above U.S. registrations for the NIPSEY HUSSLE Trademarks are valid, subsisting, in full force and effect, and many are incontestable pursuant to 15 U.S.C. § 1065. The NIPSEY HUSSLE Trademarks have been used exclusively and continuously by Plaintiff for many years and have never been abandoned. The registrations for the NIPSEY HUSSLE Trademarks constitute prima facie evidence of their validity and of Plaintiff’s exclusive right to use the NIPSEY HUSSLE Trademarks pursuant to 15 U.S.C. § 1057(b). Attached hereto as Exhibit 1 are true and correct copies of the United States Registration Certificates for the NIPSEY HUSSLE Trademarks included in the above table. 12. The NIPSEY HUSSLE Trademarks are exclusive to Plaintiff and are