4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 1 of … · Shoshana E. Bannett (State Bar No. 241977) [email protected] LISA BORODKIN, ATTORNEY AT LAW 3414 Rowena Avenue

4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 1 of 22 Page ID #:45

Lisa J. Borodkin (State Bar No. 196412) [email protected]

Shoshana E. Bannett (State Bar No. 241977) [email protected]

LISA BORODKIN, ATTORNEY AT LAW 3414 Rowena Avenue Los Angeles, California 90027 Phone: (323) 337-7933

Attorney for Plaintiffs Linda Elaine Good, Laura Elizabeth Good, and The Laura Good and Linda Good Partnership

UNITED STATES DISTRICT COURT

FOR THE CENTRAL DISTRICT OF CALIFORNIA

LINDA ELAINE GOOD, et al., Plaintiffs,

vs.

TAHLIAH BARNETT, et al.,

Defendants.

CASE NO.: 2:14-cv-2668 SVW (JCG)

The Honorable Stephen V. Wilson

PLAINTIFFS' EX PARTE APPLICATION FOR ISSUANCE OF A TEMPORARY RESTRAINING ORDER AND ORDER TO SHOW CAUSE RE: PRELIMINARY INJUNCTION

MEMORANDUM OF POINTS AND AUTHORITIES

[Declarations of Linda Elaine Good, Victor Sapphire, Esq. and Lisa J. Borodkin, Esq. Filed concurrently herewith]

[[Proposed] Order lodged concurrently herewith]

PLAINTIFFS' APPLICATION FOR TRO AND OSC RE: PRELIMINARY INJUNCTION

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Case 4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 2 of 22 Page ID #:46

EX PARTE APPLICATION:

2 TO THE COURT AND ALL PARTIES AND THEIR ATTORNEYS OF

3 RECORD:

4 PLEASE TAKE NOTICE THAT pursuant to Fed. R. Civ. P. 65 and Local

5 Rule 7-19, Plaintiffs Linda Elaine Good, Laura Elizabeth Good and The Laura

6 Good and Linda Good Partnership (collectively, "Plaintiffs") hereby apply ex

7 parte for an order from the Honorable Stephen V. Wilson, in Courtroom 6 of the

8 above-entitled Court, located at 312 North Spring Street, Los Angeles, California

9 90012, issuing a temporary restraining order and order to show cause re:

10 preliminary injunction against Defendants Tahliah Barnett ("Barnett"), Beggars

11 Group Holdings (USA), Inc. ("Beggars Group"), Beggars Banquet Recordings

12 (USA), Inc. ("Beggars Banquet"), XL Recordings (USA), Inc. ("XL"), Young

13 Turks Limited ("Young Turks"), and Does 1-10 (collectively, "Defendants").

14 Specifically, Plaintiffs seek an order restraining and enjoining Defendants,

15 their officers, agents, servants, representatives, employees, attorneys,

16 subsidiaries, affiliates, related companies, partners, successors, predecessors,

17 assigns and all persons acting for, with, by, through, or under them, and each of

18 them from infringing upon Plaintiffs' registered United States service mark "The

19 Twigs" (the "The Twigs' Mark") in International Class 041 for "entertainment

20 in the nature of a musical band," which Plaintiffs have owned and used

21 exclusively since 1996, by performing, promoting or selling Barnett's music

22 using the name "Twigs," "FKA Twigs" or any other name infringing upon the

23 "The Twigs" Mark.

24 Good cause exists to grant this Application. As discussed in the

25 accompanying papers, Plaintiffs are likely to succeed on the merits of their claim

26 that Defendants are likely to and have been infringing Plaintiffs' "The Twigs"

27 Mark in violation of 15 U.S.C. 1114(a), including by using the names "Twigs",

28 2



and "FICA Twigs" and by using images of Barnett wearing a necklace spelling

out "Twigs" to promote Barnett's music and music performances.

Plaintiffs are likely to suffer irreparable harm absent immediate injunctive

relief, as Barnett's first-ever concerts in the United States have been announced

to commence on April 10, 2014 at 8:00 p.m. at the Masonic Lodge at the

Hollywood Forever Cemetery, 6000 Santa Monica Boulevard, Los Angeles,

California 90038, and once the concerts begin, press and coverage is likely to

spread virally through news and digital media, photos, websites, blogs,

promotional materials, and social media such as Twitter, Facebook and

Instagram, and all concert merchandise or material for sale or distribution at

Barnett's concerts will enter the stream of commerce for the first time in the

United States; after which time it will be vastly more difficult, if not impossible,

to quantify or compensate with money damages, or determine the harm to the

intangible goodwill of Plaintiffs in and to the "The Twigs" Mark.

Pursuant to 15 U.S.C. § 1116, the Court also should order Defendants to

report back to the Court within thirty days of the issuance of the injunction

regarding their compliance efforts.

The balance of equities tips sharply in Plaintiffs' favor, as Barnett is just

embarking on her musical career in the United Kingdom and is entering the

United States live music market for the first time, whereas Plaintiffs have been in

the music business in the United States for over 20 years and built up good will

through touring and recording continuously in the United States and abroad;

Defendant Barnett affirmatively led Plaintiffs to believe that she would cease and

desist using the name "Twigs" by writing on Plaintiffs or about June 2, 2013, yet

continued to do so nonetheless; and Defendant Barnett's United Kingdom

counsel affirmatively stated to Plaintiffs in writing on April 3, 2014 that

"[Barnett] has retained U.S. attorneys to advise her in connection with this

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matter, which attorneys will be in contact with you directly very shortly," yet did

2 nothing to communicate until this lawsuit was filed.

The public interest would be served by granting this Application, in that it

4 would prevent public confusion between Plaintiffs and Barnett as to their source

5 of their respective music.

6 This ex parte Application is based on the attached Memorandum of Points

7 and Authorities; the concurrently filed Declarations of Linda Elaine Good,

8 Victor Sapphire, Esq. and Lisa J. Borodkin, Esq., and such further argument and

9 evidence as may be presented at or before any hearing on this Application. A

10 proposed order is respectfully submitted herewith.

11 Pursuant to Federal Rule of Civil Procedure 65 and Local Rule 7-19,

12 Plaintiffs have made the efforts to give notice to Defendants and their counsel

13 that this Application would be files as set forth in the Declaration of Lisa J.

14 Borodkin Esq. by telephone and email.

5 Ms. Lepera, an attorney in the process of being retained by Barnett,

6 informed Plaintiffs that Barnett intends to oppose this application.

17

Respectfully submitted,

LISA J. BORODKIN, ATTORNEY AT LAW

By: /s/ Lisa J Borodkin Lisa J. Borodkin (SBN 196412) Shoshana E. Bannett (SBN 241977) Attorneys for Plaintiffs, Linda Good, Laura Good and the Linda and Laura Good Partnership

4



MEMORANDUM OF POINTS AND AUTHORITIES

I. Statement of Facts

A. The Plaintiffs' "The Twigs" Service Mark for Musical Performance

Plaintiffs Linda Good ("Linda") and Laura Good ("Laura") are twin sisters

who have been supporting themselves as professional musicians and music

performers for over twenty years, and are professionally known as "The Twigs"

or "Twigs." See Declaration of Linda Good ("Good Decl.") at r12-10, Ex. 3.

Since 1993, Linda and Laura have continuously performed music as "The

Twigs" and "Twigs" and maintained a website for their music at twigs.com and

thetwigs.com . See Good Decl. 1117. Plaintiffs spent $500 to register twigs.com

and thetwigs.com, $100 per year to maintain the registrations, and $480 per year

in hosting fees to keep the website and emails active. See Good Dec. ¶17-19.

In 1996, Linda and Laura spent approximately $5,000 with a lawyer to register

a federal registration to the Service Mark "THE TWIGS" in International Class

041 for entertainment in the form of musical performances. See id 1120.

Linda and Laura have used the "THE TWIGS" Mark ever since, paying

approximately $1,500 to obtaining a renewal of the "The Twigs" service mark in

2006. See Id. At 1121. Plaintiffs have released three full-length albums over the

years and one EP, licensed to film and television, and receive royalty statements

on a regular basis from sources including SESAC, ASCAP and Sound Exchange

for use of their music they performed as "The Twigs." See Good Dec1.1110, Ex. 3.

B. Defendants' Infringing Use of "Twigs" and "FICA Twigs"

Plaintiffs learned in or around June 2013 that Defendant Barnett was

selling and promoting music in the United States under the name "Twigs." See

Good Decl. at ¶29. Barnett thereafter offered to pay Plaintiffs $15,000 to co-exist,

with Barnett using "Twigs" and Plaintiffs using "The Twigs." See Good Decl.

1124 at Ex. 4. Plaintiffs believed the two names were too close and formally asked

Barnett to cease and desist performing and selling music as "Twigs." See Good


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4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 6 of 22 Page ID #:50 Case

Dee!. at ¶29-32, Ex. 6. Barnett stated that she "had no intention of using the name

2 Twigs if we can come to an agreement." See Good Dec. At ¶33 and Ex. 6.

3 Thereafter, Barnett added "FKA" to "Twigs" and continued to perform and

4 sell music under "FKA Twigs" which Barnett explained in the press stood for

5 "formerly known as Twigs." See Good Decl. Ex. . The press referred to Barnett

6 as "Twigs" and Barnett's record company promoted her music with a photo of her

7 wearing a necklace spelling out "Twigs" and no other text. See Good Decl.

8 C. Plaintiffs' Continual Requests to Cease Infringement

9 Further to Plaintiffs' written demands of June 28, 2013 to cease and desist

10 using "Twigs," Plaintiffs trademark attorney, Victor Sapphire, Esq., send cease

1 and desist correspondents to Defendants including on August 30, 2013. See

12 Declaration of Victor Sapphire, Esq. ("Sapphire Decl.") at 114 and Ex. A.

3 Sapphire sent further cease and desist demands to Defendants Beggars

4 Group Limited, Beggars Banquet Recordings, XL Recordings, and Young Turks

15 (Barnett's record label and distributor) on September 10, 2013 demanding that

6 Defendants cease using the name "FKA Twigs" and citing extensive case law

17 supporting Plaintiffs position. See id. At ¶6, Ex. B.

18 On February 19, 2014, Sapphire spoke to an attorney for Barnett, who

19 conceded that Plaintiff's position on their trademark rights was "unimpeachable"

20 and that Barnett intended to release a full-length album in the United States in

21 2014 and was "keen" to get Plaintiffs' consent to use the name "FKA Twigs." See

22 Sapphire Decl. at 117.

23 On or about April 1, 2014, Plaintiffs learned that Barnett had announced

24 her first North American show to take place at the Hollywood Forever cemetery

25 in Los Angeles, California under the name "FKA Twigs." See Sapphire Dec. 1f8.

26 On April 3, 3014, Sapphire sent another cease and desist correspondence to

27 Barnett's record labels in the United States. See Sapphire Dec. ¶8 and Ex. D.

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Case 4-cv-02668-SVIN-JCG Document 8 Filed 04/09/14 Page 7 of 22 Page ID #:51

On or about April 3, 2014, Sapphire received correspondence indicating

2 that Barnett's record label was "urgently discussing the contents of [his] email

3 with our artist's representatives and hope[d] to be in a position to come back to

4 [Sapphire] substantively very soon." See Sapphire Dec19, Ex. E. On April 3,

5 2014, Sapphire received an email stating that Barnett had retained U.S. lawyers to

6 advise her and these laws would be in touch "very shortly." See Sapphire Dec.

7 ¶10, Ex. F. No such communication came. See Sapphire Dec. At ¶10.

8 D. Ex Parte Notice.

9 The Complaint in this Action was filed on April 7, 2014, 4 days after Mr.

10 Jay's email of April 3, 2014 advised that Ms. Barnett's attorney would contact

11 Plaintiffs imminently. See Sapphire Decl. 1110, Ex. F. Plaintiffs then gave notice

12 of the Complaint and summons to all known participants on the email discussions

13 between Plaintiffs and Defendants' representatives and made best efforts to give

14 ex parte notice of this Application on April 8, 2014. See Declaration of Lisa J.

15 Borodkin.

6 II. ARGUMENT

17 A. Legal Standard for TRO and Preliminary Injunction

18 Temporary restraining orders are governed by the same standard applicable to

19 preliminary injunctions. See Randazza v. Cox, 2012 U.S. Dist. LEXIS 178048, at

20 *5-6 (D. Nev. Dec. 14, 2012). A party seeking a preliminary injunction must

21 demonstrate: (1) a likelihood of success on the merits; (2) that he is likely to

22 suffer irreparable harm in the absence of preliminary relief; (3) that the balance of

23 equities tips in his favor; and (4) that an injunction is in the public interest. See

24 Meyer v. Portfolio Recovery Assocs., LLC, 696 F.3d 943, 949 (9th Cir. 2012).

25 Ai.ternvy. the Nii.-111 C ircuit hi iidd an injunction may issue if the first two

26 el emeins are met andW n nestions going to the merits" and there is

27 "a hardship balance that tips sharply toward the plaintiff." See Alliance for the

28 Wild Rockies v. Cottrell, 632 F.3d 1127, 1132 (9th Cir. 2011). If the district 3


Case :14-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 8 of 22 Page ID #:52

court "identified and applied the correct legal rule to the relief requested," the

2 Court of Appeals will reverse only if the court's decision "resulted from a factual

finding that was illogical, implausible, or without support in inferences that may

4 be drawn from the facts in the record." See Herb Reed Enters., LLC v. Fla. Entm't

5 Mgmt, 736 F.3d 1239, 1247 (9th Cir. 2013).

6 Due to the urgency of obtaining a preliminary injunction at a point when

7 there has been limited factual development, the rules of evidence do not apply

8 strictly to preliminary injunction proceedings. See Herb Reed, 736 F.3d at 1250

9 fn.5 (citing Republic of the Philippines v. Marcos, 862 F.2d 1355, 1363 (9th Cir.

10 1988) ("It was within the discretion of the district court to accept . . . hearsay for

11 purposes of deciding whether to issue the preliminary injunction.")).

12 B. Plaintiffs Are Likely To Succeed on the Merits of Their Claims

13 under the Eight Skekcraft Factors.

14 This action alleges a single cause of action for trademark infringement.

15 The elements of a cause of action for trademark infringement are: To prevail on

16 its trAJcini.irkft 1!Lmcmchii. nti f must prove "(1) it has a protecl;ble

17 ownership inicrest in [ai maH nd (2) that ftc dJendant's use of the

18 lket2, to cause consumer con tbsion, thereby infringing upon the [plaintiffs] rights

19 to the mark." See Department of Parks & Recreation v. Bazaar Del Mundo

20 Inc., 448 F.3d 1118, 1124 (9th Cir. 2006).

21 On the first element, it is beyond dispute that Plaintiffs have a valid,

22 incontestable registration for the federal service mark "The Twigs" in

23 International Class 041 for entertainment in the form of live music. See Good

24 Decl. at Exs. 1-2.

25 On the second element, it is well-established that "[1]ikelihood of confusion

26 exists when consumers viewing the mark would probably assume that the goods it

27 represents are associated with the source of a different product identified by a

28 similar mark." See KP Permanent Make-UP, Inc. v. Lasting Impression I, Inc., 4



408, F.3d 596, 608 (9th Cir. 2005). The Ninth Circuit employs an eight-factor

test in determining whether a likelihood of confusion exists. See AMF, Inc. v.

Sleek -craft Boats, 599 F.2d 341, 348-49 (9th Cir. 1979). These factors are: (1) the

strength of the mark; (2) the proximity or relatedness of the goods; (3) the

similarity of the mark; (4) evidence of actual confusion; (5) the marketing

channels used; (6) the degree of care customers are likely to exercise in

purchasing the goods; (7) the defendant's intent in selecting the mark; and (8) the

likelihood of expansion into other markets. See id. The three 1cror th coun ,;

fowid 10NJ• the vil(w.. ;r1 ,:pcm:ant, especio11:, 7.33 the conte ot

sim of die ma, t -c11xiness of the goods, and use o iparkciing

See GoTo.com , Inc. v. Walt Disney Co., 202 F.3d 1199, 1205 (9th Cir.

12 2000) . Brookfield Communs. v. W. Coast Entm't Corp., 174 F.3d 1036, 1054 (9th

3 Cir. 1999).

14 Applying these factors, it is clear that Barnett's use of the name Twigs and

15 FKA Twigs in connection with her music is likely to cause significant customer

6 confusion for fans looking to buy Linda and Laura Good's music performed

7 under the mark "The Twigs."

8 1. Strength of Mark

19 The strength of a mark is evaluated in terms of its conceptual strength and

20 its commercial strength. See GoTo.com , Inc., 202 F.3d at 1207. Marks may be

21 classified as generic, descriptive, suggestive, arbitrary or fanciful. See Two Pesos

22 v. Taco Cabana, 505 US. 763, 768 (1992). The strongest marks—that is, those

23 which receive the maximum trademark protection—are 'arbitrary' or `fanciful'."

24 Sleekcraft, 599 F.3d at 349. Arbitrary words are "actual words with no

25 connection to the product." Fortune Dynamic, Inc. v. Victoria's Secret Stores

26 Brand Mgmt., Inc., 618 F.3d 1025, 1033 (9th Cir. 2010).

27 Here, "The Twigs" Mark comprises an arbitrary word. In ordinary life,

28 twigs are slender branches. It is not a descriptive word because twigs do not 5


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Case 2 4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 10 of 22 Page ID #:54

describe any type or genre of music. Plaintiffs simply chose the name "The

2 Twigs" for their band as a way of embracing their childhood nickname. See

3 Good Dec1.112. As an arbitrary word "The Twigs" is a strong mark.

4 2. Proximity or Relatedness of the Goods

5 Marks are related when they are used to offer similar products to a similar

6 group of consumers. See Brookfield Communs.,174 F.3d at1056. "[Me danger

7 presented is that the public will mistakenly assume there is an association

8 between the producers of the related goods, though no such association exists."

9 Sleekcraft, 599 F.2d at 350. The proximity of the goods is measured by whether

10 the products are (1) complementary; (2) sold to the same class of purchasers; and

11 3) similar in use and function. Id. For example, in Sleekcraft, the Ninth Circuit

12 concluded that the goods were related when both companies marketed

13 recreational boats, even though the target audience was different Id. at 348.

14 Here, both Linda and Laura Good and Barnett are selling female-driven popular

5 music. Both the Goods and Barnett feature attractive female lead singers who

6 were former models nicknamed "Twigs." They perform at similar types of

7 venues. They are competing for an overlapping audience — the ever-shrinking

18 pool of consumers who will buy recorded music and attend live shows.

19 3. Similarity of Mark

20 The greater the similarity between the two marks at issue, the greater the

21 likelihood of confusion. See GoTo.com , 202 F.3d at 1206. There are three

22 axioms for considering similarity: (1) marks should be considered in their entirety

23 and as they appear in the marketplace; (2) similarity is best judged by appearance,

24 sound and meaning; and (3) similarities weigh more heavily than differences. Id.

25 Here, Defendant Barnett's use of the name FICA Twigs is confusingly

26 similar to Laura and Linda Good's mark, "The Twigs." That is in part because in

27 the marketplace, Barnett is frequently referred to as just "Twigs," despite the fact

28 that she has added the FICA appendage. Billboard.com referred to Barnett as 6



simply Twigs throughout their January 2014 article highlighting Barnett's music.

See Good Decl. Ex. 9. In August 2013, Barnett was interviewed by Pitchfork

magazine. See id., Ex. 8. The writer frequently refers to Barnett simply as

Twigs. See id. In fact, the article even starts that way: "Twigs is someone who

grew up with a lot of quiet. . .." Although Pitchfork noted that Barnett changed

her name to FKA Twigs from Twigs, the writer chose to shorthand her stage

name to Twigs over and over again. It seems likely that the media will continue

to refer to Barnett as Twigs even if her official stage name is now FKA Twigs.

This is not a substantive change to her name — it is nothing more than an

abbreviation affixed to the front. As the media has already demonstrated, Twigs

is a more natural shorthand than FKA. As long as Barnett continues to perform

as FKA Twigs, the media will continue drop the FKA and shorthand Barnett's

stage name as Twigs.

Moreover, Barnett continues to promote herself using imagery that makes

it appear as though her stage name is just "Twigs." Her album E.P was released

in September 2013 — well after she told the Goods that she would not use the

name Twigs without their consent. See Good Decl. 135 and Ex. 6. The cover

of the EP featured a close-up image of Barnett wearing a nameplate necklace.

See Good Decl. ¶35. The necklace clearly reads "Twigs". Id. There is no other

text on the album cover at all. Id. In short, if a customer looked at Barnett's EP

at a record store, it would look like an EP from a female artist named "Twigs".

Not all that different from a female duo named "The Twigs." Barnett has also

promoted her concerts using the same image. See Good Decl. ¶36.

No one could seriously contend that that there is any material difference

between "Twigs" and the Goods' mark "The Twigs." After all, many consumers

are unlikely to know whether bands have a "the" in their name. Is it "The Red

Hot Chili Peppers" or "Red Hot Chili Peppers"? "The Avett Brothers" or just

"Avett Brothers?" Is it "The Dave Matthews Band" or "Dave Matthews Band"? 7


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Unsurprisingly, Linda and Laura Good have been referred to as just "Twigs"

numerous times during the course of their career. See Good Decl. '111111 and 12.

But even if there was a magical way to get the media to stop short-handing

Barnett's new stage moniker to "Twigs," and refer to her only as FKA Twigs—

and of course there is not—that would not lessen confusion in the marketplace.

FKA stands for formerly known as and it implies a non-existent association with

Linda and Laura Good's band "The Twigs."

4. Actual Confusion

Evidence of actual confusion is persuasive evidence that future confusion is

likely. See Sleekcraft, 599 F.2d at 352. Actual confusion evidence is often

difficult to obtain and its absence is often given little weight as a result. Cohn v.

Petsmart, Inc., 281 F.3d 837, 842-3 (9th Cir. 2003). Here, Barnett has been

promoting her music in the United States for a relatively short period of time.

However, Plaintiffs have submitted substantial evidence of actual customer

confusion from Laura's niece (see Good Decl. 1144); music critic Kevin Bronson

confusion (see Good Decl. 1146); last FM users (see Good Dec1.111150, 51, Ex. 14);

iTunes search (see Good Decl. 1141, Ex. 11); and Youtube search results (see

Good Decl. 1142, Ex. 12).

5. Marketing Channels

The likelihood of confusion is exacerbated when the parties promote their

products through the same marketing channels. See Brookfield, 174 F.3d at 1057.

Specifically, the use by both parties of the Internet to market their music is "a

factor that courts have consistently recognized as exacerbating the likelihood of

confusion." See GoTo.com , 202 F.3d at 1208.

Here both Barnett and "The Twigs" sell their music through intemet-based

services such as iTunes and Amazon.com . They stream their music on Internet

services such as Bandcamp. They both seek radio play. They promote their

music videos on websites like Youtube and Vimeo. They promote their concerts 8


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Case 2: 4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 13 of 22 Page ID #:57

1 on websites like Bands-in-Town and through social media sites like Twitter and

2 Facebook. In this case, it is not just that both parties are selling and promoting

3 their product on the Internet, it is that they are using nearly all of the same

4 websites to do so. Morever, the rise of the Internet has especially impacted this

5 case because of the way that people search for music.

6 The parties also use the same offline sources for commerce. They promote

7 through the same local media, such as LA Weekly. They both perform at music

8 festivals, and play small music clubs in major markets like New York and Los

9 Angeles. They are both working within subgenres of the indie scene and

10 therefore there is near identity of marketing channels. See Good Decl. passim.

11 6. Degree of Care

12 The degree of care refers to the amount of thought consumers put into the

13 purchase of the goods or services in question. "When goods are expensive, it is

14 assumed that buyers will exercise greater care in their purchases." See E. & J.

1 5 Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1293 (9th Cir. 1992). On the

16 other hand, when dealing with inexpensive products, customers are likely to

17 exercise less care, thus making confusion more likely. See Brookfield, 174 F.3d

18 at 1060.

19 Here, the products in question are extremely cheap. Individual songs are

20 sold on iTunes for $.99 to $1.29. See Good Dec. '1141, Ex. 11. Albums are sold for

21 as little as $4.99 Indie concerts are also inexpensive. Ticket's to Bamett's sold-

22 out show at the Masonic Lodge on April 10 were only $20. See Good Decl. Ex. 7.

23 And these days, even more websites stream music for free. Customers do not act

24 with a lot of care with respect to such matters. This factor also compels a finding

25 that there is a likelihood of confusion.

26 7. Intent

27 When a mark is adopted with "the intent to deceive the public," courts may

28 presume that the use of the mark will cause confusion." See Brookfield, 174 F.3d 9


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at 1059. This factor favors the Plaintiffs where—as here—the alleged infringer

"adopted his mark with knowledge, actual or constructive, that is was another's

trademark." See id.

Barnett has given interviews in which she states that, like the Goods, she

too selected the name based on an old nickname. See Good Decl. Ex. 8. But

when Barnett and her record labels selected the equally infringing name "FKA

Twigs" Barnett did it with full knowledge that the Goods owned the mark "The

Twigs." Indeed, Barnett had already reached out to the Goods and noted that she

"they've "been releasing music and performing as The Twigs a lot longer than I

have been Twigs. . .." See Good Decl. ¶31 and Ex. 6.

When the Goods informed Barnett that "The Twigs" was their registered mark

and ordered her to cease and desist from using the name Twigs in the United

States, Barnett stated that she had "no intention of using the name Twigs if we

can't come to an agreement." See Good Dee!. ¶1132, 33 and Exh. 6. Shortly

thereafter, however, Barnett changed her name to "FKA Twigs" a name that is

potentially even more confusing since it indicates either that Barnett was formerly

a member of "The Twigs" or that the band "The Twigs" has dissolved.

laleed, even in cases where a former association with a band actually

exists, Courts have found that references to a f;lrmer -ssoci:.tiori cannot be the

focus of the LAivertising. Any such references mut. be less prominent then the

name of the current act, and serve merely as an accurate descriptor of the

individual's career. For k2.N.Imple, in Kassbaum v. Steppenwolf Productions,

Inc., 263 F.3d 487 (9th Cir. 2000), the Court only permitted the music group

Seppelm.olfs former base Hn er to use rele•..:ce ,; such as "formeri -

Stcppenwc.)117 when performing with his new band .oecause those references were

much less prominent tiLitn those to formerly of Steppenwolf." If the references

to the former et were of equal or greater prominence than the currently

perfoniiin hp, custonler not know which performer they NA ere going to


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o see or which album they would be ptiFehasing. The standard is whether use of

"formerly known as" or FKA" type reference would be lilecly to conid;.,e the

customer. See Brother Records v. Jardine. 318 F.3d 900 (9111 ('ir. 2003) (former

Beach Boy Al Jardine's use of the "Beach Boys" rnar!\ was inn - it 7 112. because it

used in such a way cUstomers were not - e wee gon , - to see the

sanctioned -13e,tch 1loys" group at Jardine's perform:ulces.) Here,

Barnett does not hake ,1 new li,1111c. The focus of the name FKA Twigs is on

"Twigs," as recognized by media groups such as Pitchfork and Billboard who

have continued to s,;impiycu Barnett

"FKA" also falsely implies that "Twigs" no longer exists. See Two Men &

a Truck/International v. Two Men & a Truck/Kalamazoo, 1995 U.S. Dist. LEXIS

11295 (W.D. Mich. July 24, 1995), at *19 (noting that "formerly known as"

connotes that prior entity has ceased to exist).

Even though the Goods' attorney promptly informed Barnett's record label

that the FKA Twigs name continued to infringe upon the "The Twigs" mark,

Barnett and the Record Label Defendants have continued to use the name FKA

Twigs in connection with Barnett's music. See Sapphire Dec1.1'10.

8. Likelihood of Expansion

Because m Tadelllark- owner is afforded a greater protection aihst

competing goods. a 'strong possibilit}i that either party may expand his business

to compete with the other will weigh in favor of findiH ,4 that a present use is

infringing." See Sleekcrafi, 599 F.2c1 at 354. -When goods are closei ■ related,

any expansion is to r u direC: cornpeiition."

Here. F3irneti has been iTinidiv e ennding her music business in ihe United

St;:us. She r,+ensed her first F.P. in 1-tt.c 2013. See Good Deel. pw -n2rapil. 35.

Barlett also plans to releose her first lull-length album later this year. See

,_app!tire Decl. 7. :\ncl she piurnue, ci playing several concerts in the United

Staies ihis year, for the first time. See Good Decl. Ex. 7. F3Jniett's hurgeonino 11


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4-cv-02668-SVVV-JCG Document 8 Filed 04/09/14 Page 16 of 22 Page ID #:60

career makes it likely that her music will continue to pop up in searches on

nternet music stores, Youtube and other places, causing great confusion to r

of the Goods' band, "The Twigs."

B. Plaintiffs Are Likely to Suffer Irreparable Harm If Injunctive

Relief Is Not Granted.

In Herb Reed Enters., LLC v. Fla. Entm't Mgrnt., 736 F.3d 1239, 1249 (9th

Cir. 2013), the Ninth Circuit reversed decades of case law holding that held that

irreparable injury may be presumed in trademark infringement cases where a

likelihood of success on the merits has been shown. See

id ("We now join other circuits in holding that the eBay principle—that a

plaintiff must establish irreparable harm—applies to a preliminary injunction in a

trademark infringement case.") Now, a plaintiff seeking a TRO or preliminary

injunction must show a likelihood – not a mere possibility – of irreparable harm

supported by evidence. See id., 736 F.3d at 1250.

Nonetheless, Plaintiffs have submitted significant evidence that meets the

new standard for finding that they will suffer irreparable harm if a TRO and

preliminary injunction are not issued. "Evidence of threatened loss of customers

or goodwill" is sufficient for the court to find that irreparable harm will likely

result in the absence of preliminary injunctive relief. See American Rena Intern.

Corp. V. Sis-JOyce Intern. CO. Ltd:,-534 Fed. Appx. 633, 636 (9th Cir. 2013)

(evidence of damage to ongoing recruitment efforts and goodwill supported

finding of irreparable harm and affirmance of injunction). "Evidence of loss of

control over business reputation and damage to goodwill could constitute

irreparable harm." See, e.g., Stuhlbarg Int'l Sales Co., Inc. v. John D. Brush and

Co., Inc., 240 F.3d 832, 841 (9th Cir. 2001).

Evidence of measures taken to protect good will and reputation associated

with the mark can support a finding of irreparable harm through infringement. See

Titaness Light Shop v. Sunlight Supply, Inc., 2014 U.S. Dist. LEXIS 12326 (D. 12


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7 it L\ of The iv,' v)t.',;toil and

8 gooc 3 at 48 ft iio 0! . H!,- ;.c. Kevin

9 Bron-,on :‹tai Laura ,,,nd ala

10 likelihood 0 a their corinion

11 biographiLai c aeu. aa( 'rood Dec1. as a childhood

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i .mtation. potential or good. See (“)( -)C Dce. 12 1 1L -If` I -10% Cal

NUM lule! -Ls; ,notr -1 and their niece round Yotrube videos from Barl]c,,,

sear wigs- o'Thn ada 1 ar,(.1f1i -Aurbilv,

d\ C ited .`:4: oar evidence of :.letual confusion. See Good

Dee!, 1 i Icrc-L- o scarcC-- in iTunes store for - the T;;igs -

retu:7,Lng resal!.s Mod Dee. N. 14 at 49 (screenshots of

ast.im resuiL: l I showina N bands under name

7*l aintiff and ood 50-53 (discua a ior . inner

r Plaintiffs for being taN and skin\ (ho

models).

Plaintiffs have submitie , cvidence

Case 2' 4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 17 of 22 Page ID #:61

Nev. Jan. 31, 2014) at *5-*6 (evidence of irreparable harm to good will because

2 the defendant holders of the mark "TITAN CONTROLS," an indoor light used

3 for indoor gardening had taken pains to ensure that their lights were not

4 associated with illegal marijuana farming, whereas the accused infringer used its

5 "TITANESS" mark to sell to an internet-based seller associated with illegal

6 -narijuana farming).

23 a and ' ) , :e 0 ff ri:.. a atae Haare are ot:Icr :,1,1sN a las name

24 1: \ , lent impairs Llifla LL - .J\ ,L) , , its

25 product:, w :C tre e bein',.;aacee'i. tile point of si6e and in

26 commerce c! - an ,2::; la P(.11‘, liHnging me: .\(,?e Good Dec. "--11, 42, 43,

27 44, 50. 51, 53-5a,FL'x. 11.

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!--1„\ strnitted C time. MOTIC ■. (1.

protecting the ili.aAgibi

c

8. Ex. 5 at 22 (Jere 6. 2W ien ood to I co:=2-11;)1\c3 .

o:tutesting to cease anti des..., play

cSC L\ , this e eicc qtiTices to

1C1J1"1 0: oirlers. ene u vill. intanr,I.HL.‘

ii ic goodwill assocL6.e6 vvii'ft the

Mark — in

trreparab: ,—

C. Equities

eie\ 515 requires courts 1.0 N% ei',43 the

, •v and considec the e.'e - 1. on pLu-ty of the 'i;ranting

or v the ,equested relict." See Amoco Prod. Co. v. Village of

Gambell, AK, 480 U.S. 531, 542, 107 S. Ct. 1396, 94 L. Ed. 2d 542 (1987). In

this case, Defendants will suffer only minimal harm as a result of the TRO.

Issuance of this TRO will 1 ieeii the status quo. "[T]tle status quo is the

last uncontested status which preceded the pending controversy." Tanner Motor

Livery, Ltd. v. Avis, Inc., 316 F.2d 804, 809 (9th Cir. 1963); Randazza v. Cox,

2012 U.S. Dist. LEXIS 178048 (D. Nev. Dec. 14, 2012). Barnett has never played

a United States music concert under "FKA Twigs" or any other name, whereas

Plaintiffs have played concerts extensively in the United States for twenty years.

See Good Decl. Il[11-15. It would harm Barnett little to change her live music

performance name to one that is not confused with the "The Twigs" Mark.

Indeed, Defendants have shown they can blur out the word "Twigs" from

Barnett's album art. See Borodkin Decl. 118. Nearly all the US uses of "FKA

Twigs" in Defendants' control over the Internet could be addressed this way.

Thus, there is little harm to Defendants.

In considering the balance of harm, the Defendants' use of "FKA Twigs"

hams Plaintiffs. A previous court considering a similar preliminary injunction

request in a Lanham Act dispute between the plaintiff "Two Guys and a Truck"

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and the defendants working as "Formerly Known As Two Guys and a Truck"

found that the defendants' use of FKA implied that:

co! . rectly potuis nu I it permitting ULJCP(tJits to tell th the% \\ ere "101 -mert\ know il as Iwo Men and a Truck"

-reno loiv,er any Ho Men and a Truck. Therefore, cH',..•( not be perm Hcci to d - 'V ■N nov1/4:1 \\ \len and a Truck" except ft )rmer customers Ch`

See Two Men & a Truck/International v. Two Men & a Truck/Kalamazoo, 1995

U.S. Dist. LEXIS 11295, at *19 (W.D. Mich. July 24, 1995) (enjoining the

defendants from using the "formerly known as" with plaintiffs business name.)

D. Public Interest

An injunction that prevents consumer confusion in trademark cases, as this

injunction does, serves the public interest. See Internet Specialties W, Inc. v.

Milon-DiGiorgio Enters., Inc., 559 F.3d 985, 993 (9th Cir. 2009); Am. Rena Int?

Corp. v. Sis-Joyce Co., 534 F. App'x 633, 636 (9th Cir. 2013). Thus the

injunction serves the interests of both the audiences for Plaintiffs and for Barnett.

III. An Ex Parte Temporary Restraining Order Is Appropriate Until the

Court Fully Considers Plaintiffs' Request For a Preliminary Injunction

A temporary restraining order may be issued on an ex parte basis if doing

so is necessary to "prevent immediate and irreparable injury to [the moving party]

before the hearing on the order to show cause." See Sony Computer Entm't Am. v.

Zoomba, 2010 U.S. Dist. LEXIS 113223, 3 (N.D. Cal. Oct. 5, 2010).

Doing so in this case would not be inequitable. Plaintiffs have been in

constant contact with Defendants since Barnett's first United States concert dates

were announced since April 1, 2014, and made extraordinary efforts to

communicate, including on April 3, 2014, April 8, 2014, and April 9, 2014,

whereas Defendants have not been responsive.

The timing of Barnett's April 10, 2014 concert is imminent. Defendants

should not be heard to complain if the TRO is issued ex parte, as they told

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Plaintiffs that Barnett had had a U.S. attorney since April 3, 2014 but have failed

to identify such attorney to Plaintiffs. See Sapphire Dec1.1110, Ex. F.

V. CONCLUSION

It can come as no surprise to Barnett and her multinational, United

Kingdom-based record company that Plaintiffs would assert their rights to

protect the mark they have nurtured for over twenty years as indie-pop, twin

sister musicians. Although, it would no doubt be annoying to change physical

packaging and artwork, that is a risk the Defendants undertook knowingly. For

the foregoing reasons, Plaintiffs respectfully request that this Application be

granted and that the Court enter the proposed temporary restraining order and

order to show cause submitted herewith.


LISA J. BORODKIN, ATTORNEY AT LAW

Dated: April 9, 2014 By: /s/ Lisa I Borodkin Lisa J. Borodkin (SBN 196412) Shoshana E. Bannett (SBN 241977) Attorneys for Plaintiffs, Linda Good, Laura Good and the Linda and Laura Good Partnership

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DECLARATION OF LISA J. BORODKIN

2 I, Lisa J. Borodkin, declare:

3 1. I have first-hand, personal knowledge of the facts set forth below

4 and, if called as a witness, would and could testify competently thereto.

5 2. I am an attorney licensed to practice in California since 1998 and am

6 counsel for Plaintiffs in this action.

7 3. Pursuant to Federal Rule of Civil Procedure 65 and Local Rule 7-19,

8 I have made the following efforts to give notice to Defendants and their counsel

9 that this Application would be filed: By email on April 9, 2014 at 12:07 a.m. p.s.t.

0 to Defendant Barnett at the email address she has previously used to

communicate with Plaintiffs, [email protected] and through her attorneys,

2 Kiernan Jay and Mark Stafford of Lee and Thompson LLP, 4 Gee's Court, St.

3 Christopher's Place, London, WIU, IJD, United Kingdom, Telephone: +44 (0)20

14 30737600, email: [email protected] and at or around 3:30 p.m.

15 p.s.t. on April 9, 2014, by telephone to Christine Lepera, Esq. and Jeffrey M.

6 Movit, Esq. of Mitchell, Silberberg & Knupp, 12 East 49 th Street, 30 th Floor, New

7 York, New York 10017, telephone (212) 509-3900, who have informed me that

18 they are in the process of being retained by Barnett.

19 4. Ms. Lepera informed me that Barnett intends to oppose this

20 application.

21 5. I gave notice of this application to Defendants Beggars Group,

22 Beggars Banquet, XL and Young Turks Limited by email on April 9, 2014 at

23 12:07 a.m. p.s.t. to Rupert Skellet, Beggars Group, 17-19 Alma Road, London,

24 SW18 IAA, United Kingdom, telephone: +44 (0) 20 8870 9912, email:

25 [email protected] and Albert Harmon, email: [email protected]

26 and by telephone at or around 11:25 a.m. p.s.t. on April 9, 2014, to Paul H.

27 Duvall, Esq. and Andrew Coffman, Esq., of King & Ballow Law Offices, 6540

28 Lusk Boulevard, Suite 250, San Diego, California 92121, telephone (858) 597- 17



6000, email [email protected] and [email protected] , who have

informed me that they are in the process of likely being retained by Beggars

Group, Beggars Banquet, XL and Young Turks Limited.

6. I requested Mr. Duvall and Ms. Lepera to tell me it they were

authorized to accept service of process on the Defendants that they are in the

process of being engaged by. They both confirmed that as of April 9, 2014 at 5

p.m. they had not been authorized to accept service of process. I have hired a

process server to serve process on the authorized agents for the corporate

defendants and will do so for Ms. Barnett.

7. I will serve this Application by email to the above parties

contemporaneously with the filing on this Application.

8. One the eve of filing of this application, I noticed that some

instances of the image of Barnett used as artwork for EP 2(attached to the

Complaint as Exhibit "4,") appeared with the word "Twigs" on Barnett's

nameplate necklace blurred out. Since Defendants have the ability to blur out

such infringing uses of the word "Twigs" as it appears on the Internet, it would

not harm Defendants to be ordered to do so.

I declare under penalty of perjury under the laws of the United States and

California that the foregoing is true and correct.

Executed this 9th day of April, 2014 at Los Angeles, California.

/s/ Lisa J Borodkin Lisa J. Borodkin

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CHRISTINE LEPERA (pro hac vice forthcoming) [email protected] JEFFREY M. MOVIT (pro hac vice forthcoming) [email protected] ANNIE RIAN (SBN 260960) [email protected] MITCHELL SILBERBERG & KNUPP LLP 12 E. 49th Street, 30th Floor New York, NY 10017 Telephone: (212) 509-3900

7 ROBERT ROTSTEIN (SBN 72452) [email protected]

8 MITCHELL SILBERBERG & KNUPP LLP 11377 West Olympic Boulevard

9 Los Angeles, California 90064-1683 Telephone: (310) 312-2000

10 Facsimile: (310) 312-3100

Attorneys for Defendant TAHLIAH BARNETT

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13 UNITED STATES DISTRICT COURT

14 CENTRAL DISTRICT OF CALIFORNIA

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LINDA ELAINE GOOD, an individual; 16 LAURA ELIZABETH GOOD, an individual;

and THE LAURA GOOD AND LINDA 17 GOOD PARTNERSHIP, a partnership,

Plaintiffs,

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20 TAHLIAH BARNETT, an individual, BEGGARS GROUP HOLDINGS (USA),

21 INC., a New York corporation; BEGGARS BANQUET RECORDINGS (USA), INC., a

22 New York corporation; XL RECORDINGS (USA), INC., a California corporation; and

23 YOUNG TURKS.

Case No. SACV05-511 AHS (ANx)

The Honorable Stephen V. Wilson

OPPOSITION OF DEFENDANT TALIAH BARNETT TO EX PARTE APPLICATION OF PLAINTIFFS FOR A TEMPORARY RESTRAINING ORDER AND/OR ORDER TO SHOW CAUSE RE: PRELIMINARY INJUNCTION

Date: TBD Time: TBD Crtrm: 6 - 2nd Floor

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V.

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26 Defendant Tahliah Barnett ("Defendant" or "Barnett") submits the following Opposition to

27 the Application of Plaintiffs Linda Elaine Good, Laura Elizabeth Good and The Laura Good and

28 Linda Good Partnership ("Plaintiffs") for a Temporary Restraining Order ("TRO").

Mitchell Silberberg &

Knupp LLP

.0535092.DOC OPP. OF DEF. TAHLIAH BARNETT TO PLAINTIFI5' EX PARTE APPL. FOR TR06029728.1/97123-00000

Defendants.


1 PRELIMINARY STATEMENT'

2

Plaintiffs purport to be the members of a 1990's American pop-rock musical group called

"The Twigs". 2 Defendant Barnett is a contemporary vocalist and songwriter from the United

Kingdom who performs and records cutting-edge electronic/R&B music under the name "FKA

twigs"' and has developed a remarkable following based upon the strength of her work Movit

Decl., Ex. 5 (reflecting that Barnett's Twitter account for "FKA twigs" has 15,300 followers).

Barnett's co-defendants are record companies that release her sound recordings.

Seizing upon the fact that the Plaintiffs' band name and Bamett's stage name both contain

the word "twigs", Plaintiffs commenced this lawsuit two days ago, asserting a claim for trademark

infringement against the defendants. In an effort to derail Barnett's career, Plaintiffs have trumped

up a claim of consumer confusion and purported loss of goodwill — with zero evidence of either.

Plaintiffs' and Barnett's marks, image, music and markets are sharply different. Plaintiffs simply

are not able to meet the standard required in this Circuit to entitle them to any injunctive or other

relief— let alone the extraordinary relief of a TRO.

After delaying the filing of this suit for nine months, Plaintiffs now ask the Court for an

emergency, extraordinary, broad-reaching mandatory and prohibitory injunction. Specifically,

Plaintiffs seek a mandatory injunction that, inter alia, would force Defendants to attempt to locate

and take down every posting on the Internet, every sound recording, and every promotional poster

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21 'For a more complete statement of the relevant facts, Barnett respectfully refers the Court to the accompanying declarations of Jeffrey M. Movit dated April 10, 2014 (the "Movit Decl."); the declaration of Tahliah Barnett dated April 10, 2014 (the "Barnett Decl."); the declaration of Annie Rian dated April 10, 2014 (the "Rian Decl.") and the declaration of Kieran Jay dated April 10, 2014.

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24 2 Although Plaintiffs claim in their papers to have a substantial career and following in music, they have provided the Court with no reliable evidence of same, and public documents reflect the opposite. See Movit Decl. Ex. 4 (reflecting that the Plaintiffs' Twitter account for "The Twigs" has a mere ten (10) followers)).

'Barnett is also a dancer, and acquired the nickname "Twigs" as a child, based upon the way her bones pop and crack. Barnett Decl., ¶ 3.

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Mitchell Silberherg & Knupp LLP

.0535092.DOC OPP. OF DEF, TAHLIAN BARNETT TO PLAINTIFES' EX PARTE APPL. FOR TR06029728.1/97123-00000

Case 2 14-cv-02668-SVIN-JCG Document 12 Filed 04/10/14 Page 3 of 16 Page ID #:156

containing the name "FKA twigs" and to prohibit Barnett from performing or promoting herself as

"FKA twigs". Proposed Order at 3.

Plaintiffs admit they have known about Barnett's use of a professional name including

the word "twigs" for nine months. However, Plaintiffs waited to file and transmit their TRO

application to the defendants until shortly before midnight last nigh? — less than twenty-four

(24) hours before Barnett's sold-out American concert debut. For this reason alone, their TRO

application should be denied.

Plaintiffs' claim that they are suffering from emergency, irreparable harm is spurious.

While Plaintiffs laid in wait for nine months, Barnett continued to promote her music under the

name "FKA twigs", her music continued to be released in physical and digital folinats under that

name, and she contracted with promoters to perform live in the United States under that name.

Barnett Decl., passim. A restraining order issued now would destroy defendants' carefully laid

pans for Barnett, implemented over a period of months, and financially injure her. The relief

Plaintiffs seek would substantially impair Barnett's career from further blossoming.

In sum, Plaintiffs' request for a TRO should be denied. Given the meritless and wholly

disingenuous nature of the Plaintiffs' application, the Court should also deny their request for the

issuance of an order to show cause why a preliminary injunction should not entered, and sanction

Plaintiffs and their counsel for misuse of the ex parte procedure. See this Court's Rule 5

("sanctions may be imposed for misuse of ex parte applications").

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25 4 Early in the day yesterday, Plaintiffs has represented in writing to defendants that their MO application would be filed by noon. Movit Decl., Ex. 2. However, Plaintiff did not file and transmit their application to the defendants until 11:30 p.m. Pacific last night. Barnett can only conclude that the purpose of this delay was to provide the defendants with as little time as possible to oppose the TRO Application.

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Knepp LLP

.0535092.DOC OPP. OF DEF. TAHLIAH BARNETT TO PLAINTIF8S' EX PARTE APPL. FOR TR06029728.1/97123-00000

Case 4-cv-02668-SVW-JCG Document 12 Filed 04/10/14 Page 4 of 16 Page ID #157

ARGUMENT 1

2

3 STANDARD OF REVIEW

4

A temporary restraining order is an "extraordinary and far-reaching remedy." Coffee

Dan's, Inc. v. Coffee Don's Charcoal Broiler, 305 F. Supp. 1210, 1212 (N.D. Cal. 1969). Since

"our entire jurisprudence runs counter to the notion of court action taken before reasonable notice

and an opportunity to be heard has been granted both sides of a dispute," Granny Goose Foods,

Inc. v. Brotherhood of Teamsters '& Auto Truck Drivers Local No. 70,415 U.S. 423, 439 (1974), a

court may only issue such relief in circumstances where it is proven that "immediate and

irreparable injury, loss, or damage will result to the applicant before the adverse party or that

party's attorney can be heard in opposition." Fed. R. Civ. P. 65(b). The burden on a plaintiff

seeking such relief is even heavier where the issuance of a restraining order or preliminary

injunction would, in effect, provide the plaintiff with a substantial part of the relief to which it

would be entitled if it were successful after trial on the merits. Schneider, Hill & Spangler, Inc. v.

Cudmore, 325 F. Supp. 173, 176-77 (D. Conn. 1971). See also Litton Systems, Inc. v. Sundstrand

Corp., 750 F.2d 952, 961 (Fed. Cir. 1984).

Once the moving party establishes its need for such imminent, emergency relief (which

Plaintiffs here cannot do), it then must satisfy the basic requirements for injunctive relief: (1) it is

likely to succeed on the merits; (2) it is likely to suffer irreparable harm in the absence of

preliminary relief; (3) the balance of equities tip in its favor; and (4) a injunction is in the public

interest. Herb Reed Enters., 1 LC v. Florida Ent'mt Mgm't, Inc., 736 F.3d 1239, 1247 (9th Cir.

2013) (citation omitted). Here, Plaintiffs cannot be a single one of these four requirements.

II. PLAINTIFFS CANNOT ESTABLISH IRREPARABLE HARM, AS CONFIRMED BY THEIR DILATORY CONDUCT

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26 As Plaintiffs concede on page 12 of their Application, under current Ninth Circuit

27 authority, irreparable harm may not be presumed in the context of an injunction application in a

28 trademark infringement action, even if the plaintiff can establish a likelihood of success on the

Mitchell Silherherg

Knupp LLP

.0535092.DOC OPP. OF DEF. TAHLIAH BARNETT TO PLAINTIFEIS' EX PARTE APPL. FOR TR06029728.1/97123-00000

Case .14-cv-02668-SVW-JCG Document 12 Filed 04/10/14 Page 5 of 16 Page ID #158

merits. Herb Reed Enters., LLC v, 736 F.3d at 1249. Moreover, evidence of "consumer

confusion" does not demonstrate irreparable harm. Id. Rather the movant must "establish that

remedies available at law, such as monetary damages, are inadequate to compensate' for the

alleged infringement. Id at 1250 (citations omitted). More specifically, to establish irreparable

harm, "a plaintiff must present evidence that directly ties consumer demand for the infringing

product to the infringing feature" — i.e., that "infringement is . . . driving sales of [defendant's]

products" or "damaging the goodwill associated with [plaintiff's'] mark. Active Sports Lifestyle

USA, LLC v. Old Navy LLC, Case No. 12-572 JVS (Ex), 2014 U.S. Dist. LEXIS 45575, at *8

(C.D. Cal. March 21, 2014).

Here, Plaintiffs cannot establish irreparable harm because they have failed to provide the

Court with any evidence whatsoever that defendants have earned a single dollar attributable to

their use allegedly infringing name "FKA twigs" or of any actual loss of goodwill that Plaintiffs

have suffered due to Barnett's use of that name. Rather, the Plaintiffs merely: (1) argue that they

have purportedly established likelihood of confusion, and (2) claim that their niece was

purportedly watched one of Barnett's music videos "of an adult and disturbing nature" when

searching for the Plaintiffs' videos. Appl. at 13. (There is no evidence in the record of any

inappropriate content in Barnett's music videos, and Barnett disputes that accusation.) 5 However,

it is undisputed that establishing likelihood of confusion does not demonstrate irreparable harm.

Moreover, as explained infra, Plaintiffs' evidence is insufficient to establish likelihood of

confusion in any event.) Further, Plaintiffs anecdotal, hearsay "evidence" regarding their niece's

Internet search is plainly insufficient to demonstrate actual loss of goodwill.

Additionally, in analyzing the factor of irreparable harm, "courts should take into account

whether a movant 'proceeded as quickly as it could have' in seeking a 11(0." Berjikian v.

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'Plaintiffs rely on a case entitled Two Men and a Truck/International, Inc. v. Two Men and a Truck/Kalamazoo, Inc., Case No. 5:94-CV-162, 1995 U.S. Dist. I EXIS 11295 (VV.D. Mich. July 24, 1995) to attempt to establish irreparable injury. However, this case is completely inapposite because it was adjudicated based upon a different standard for review than that applicable here, and was a dispute between a franchisor and franchisee, and thus plaintiff had a lesser burden of proof. Id. at *15.

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Franchise Tax Board, No. 13-6301 DDP (JCGx), 2013 U.S. Dist. I EXIS 124745, at *4 (C.D. Cal.

Aug. 30, 2013) (denying TRO because plaintiffs waited three months to seek it) (citation omitted).

In other words, an "assertion of pending irreparable harm" by a plaintiff seeking a TRO is

"undermine[d]" by "undue delay." Id at *5.

Here, the absence of any irreparable harm to Plaintiffs is further underscored by their

inexcusable delay as they sat by and watched Barnett and her co-defendants expend tremendous

resources developing a following for Barnett as "FICA twigs" and waited to file their TRO

application until less than 24 hours before Barnett's debut performance in the United States. It is

well-established that a movant's delay in seeking injunctive relief (even if not amounting to

laches, which is, in fact, established here based on the prejudice to Barnett and her co-defendants)

still precludes injunctive relief. Berjilcian, supra, at *5 (denying 11(0 because plaintiffs waited

three months to seek it) See also Lydo Enterprises, Inc. v. City of Las Vegas, 745 F.2d 1211,

1213-14 (9th Cir. 1984) (six-month delay from time plaintiff learned that it was in violation of an

allegedly invalid zoning ordinance to the time it sought injunctive relief undercut its ability to seek

injunctive relief); Richard Feiner & Co. v. Turner Entertainment Co., 98 F.3d 33, 35 (2d Cir.

1996) (no injunctive relief available in copyright infringement claim where plaintiff delayed in

seeking relief, because "such a delay.. .is suggestive of a lack of irreparable harm.").

Plaintiffs' inexcusable (and tactical) delay — during which Barnett contracted with

promoters to perform in concerts (which are now sold out), promoted those concerts and her sound

recordings under the name "FICA twigs", and developed a substantial fan following under the

name "FICA twigs" — is sufficient grounds to deny Plaintiffs' requested TRO and preliminary

injunction. See, e.g., Trust Co. Bank v. Putnam Pub. Group, Inc., 5 U.S.P.Q. 2d (BNA) 1874;

1988 U.S. Dist. LEXIS 4963, at *20-21 (C.D. Cal. Jan. 6, 1988) ("[E]ven if the Court were to

assume that [plaintiffs] did not have knowledge of [the alleged infringement] until April 1986...,

Plaintiffs did not sue while defendant Stuart promoted and published the American hardcover

edition of The Blue Bicycle in May or June 1986.... Plaintiffs' delay has prejudiced defendants

and bars preliminary injunctive relief."); Broadcom Corp. v. Qualcomm, Inc., 2005 U.S. Dist.

LEXIS 45830, at *1849 (C.D. Cal. Oct. 19, 2005) (plaintiff aware of alleged infringement in

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1 March, sued in May, and sought a preliminary injunction in August; its "request for a preliminary

injunction is barred by the doctrine of laches"); Ines v. Countrywide Home Loans, Inc., 2008 U.S.

Dist. LEXIS 55245, at *7-8 (S.D. Cal. July 18, 2008) (denying TRO because of delay from April

to July); Smith v. Schlesinger, 371 F. Supp. 559, 561 (C.D. Cal. 1974) (laches where suit filed

seven months after work on project at issue had begun); Richardson v. Robison, 2008 U.S. Dist

LEXIS 44454, at *11-12 (S.D. Cal., June 5, 2008) (plaintiffs on notice since February 2008 but

did not seek relief until June).

H. THE BALANCE OF HARDSHIPS TIPS SHARPLY IN FAVOR OF BARNETT

AND HER CO-DEFENDANTS

If the balance of hardships tilts in favor of the defendants, preliminary relief will be denied.

See Arco Fuel Oil Co. v. Atlantic Richfield Co., 427 F.2d 517, 519 (2d Cir. 1970) (despite claim

by plaintiff that defendant's use of mark would destroy plaintiffs identity, no injunction granted

where injunction would affect national advertising campaign of defendant); U.S. Shoe Corp. v.

Brown Group, Inc., 740 F. Supp. 196, 200-01 (S.D.N.Y.) (preliminary injunction denied where

balance of hardships favor defendant who, if the injunction were granted, would be forced to incur

the expense of developing substantial advertising in a short span of time), aff'd. w/o op., 923 F.2d

844 (2d Cir. 1990).

Plaintiffs' TRO Application carefully omits any serious discussion of the hardships that

would incurred by defendants in the event Plaintiffs' request for a TRO (or preliminary injunction)

were granted, relegating the issue a conclusory and disingenuous assertion that any such hardship

would be, at most, "annoying". Appl. at 16.

Such monetary harm and harm to Barnett's marketing and advertising strategy are

precisely the type of harms that justify the denial of a TRO. See John Lemmon Films, Inc. v.

Atlantic Releasing Corp., 617 F. Supp. 992, 997 (W.D. N.C. 1985) (where grant of preliminary

injunction would cause defendant to lose contracts, and require defendant to change its film prints

and to develop a new advertising campaign, Court held it would be inequitable to cause defendant

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to lose its investment and goodwill before final decision on the merits); Tsiolis v. Interscope

Records, Inc., 946 F. Supp. 1344, 1357 (N.D. Ill. 1996) ("[T]he harm to the Defendants in

delaying the sale of the Album until after trial far outweighs the potential harm to

Tsiolis...Defendants have already spent over one million dollars recording, producing and

marketing the Album.").

By contrast, Plaintiffs have not presented any evidence that they will suffer any actual

injury if their Application is denied. Rather, Plaintiffs make a false assertion that, if the injunction

is not entered, goods bearing the "FKA twigs" name "will enter the stream of commerce for the

first time in the United States". Appl. at 3. However, as Plaintiffs themselves admit, that name

has been used by Defendants in connection with the sale of sound recordings in the United States

since September 2013.

Further, the hardship that defendants would suffer as a result of the issuance of a '11(0 is

largely the direct result of Plaintiffs' own bad-faith conduct in delaying the filing of their

application until the literal eleventh hour. Although Plaintiffs attempt to blame that delay on their

purported attempts to communicate with Defendants in April 2014, Appl. at 14, their excuses do

not bear scrutiny, given that, by Plaintiffs' own admission, they have been on notice of an album

released by defendants under the name "FKA twigs" since September 2013.

The balance of hardships clearly favor defendants, and the denial of this Application.

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20 IV. THERE IS NO LIKELIHOOD OF SUBSTANTIAL CONSUMER CONFUSION

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"Likelihood of confusion" is the basic touchstone of trademark infringement and common

law unfair competition. 3 McCarthy on Trademarks § 23:1. "Likelihood of confusion requires

that confusion be probable, not simply a possibility." Rodeo Collection, Ltd. v. West Seventh,

812 F.2d 1215, 1217 (9th Cir. 1987) (emphasis added). The plaintiff must demonstrate that an

appreciable number of ordinarily prudent purchasers are likely to be misled or confused as to the

source of the goods in question. Hormel Foods Corp. v. Jim Henson Productions, Inc., 73 F.3d

497, 502 (2d Cir. 1996). The likelihood of confusion test also applies in cases of reverse

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confusion (such as Plaintiffs allege here). Pignons S.A. de Mecanique v. Polaroid Corp., 657 F.2d

482, 492 n.4 (1st Cir. 1981) (summary judgment for defendant where multifactor test not

satisfied); McGraw-Edison Co. v. Walt Disney Productions, 225 U.S.P.Q. 512 (N.D. 111. 1984)

(same).

The traditional multifactor likelihood of confusion test of AMF, Inc. v. Sleekcraft Boats,

599 F.2d 341, 348 (9th Cir. 1979) -- while simply providing "helpful guidelines," not a "rigid

formula" or "requirements or hoops that a district court need jump through to make the

determination," Eclipse Associates, Ltd. v. Data General Corp., 894 F.2d 1114, 1118 (9th Cir.

1990) -- also overwhelmingly favors defendants here and precludes injunctive (or any) relief.

1. Strength Of The Mark. Plaintiffs overstate the extent to which the strength of a

mark is dependent upon whether it is descriptive of the goods in question or "arbitrary." Appl. at

5. "Ultimately, the strength of the mark turns on its 'origin-indicating' quality, in the eyes of the

purchasing public, so that in a given case whether the mark has acquired 'secondary meaning' is a

matter which may be relevant and probative and hence useful in determining the likelihood of

confusion." Lang v. Retirement Living Publishing Co., 949 F.2d 576, 581 (2d Cir. 1991).

Plaintiffs have provided the Court with no evidence of the number of records they have

sold, the amounts of royalties they have earned, or the number and size of the audiences before

whom they have performed. Tellingly, and without first obtaining Court permission, Plaintiffs

redacted all dollar amounts from the alleged royalty statements annexed to the Good Declaration.

Given that the Twitter account for Plaintiffs' band has a mere ten (10) followers (Movit Decl. Ex.

4), the only reasonable conclusion is that their sales are de minimis, and their mark extremely

weak. Sunenblick v. Harrell, 895 F. Supp. 616, 627 (S.D.N.Y. 1995) (plaintiffs' mark "Uptown"

for record label is "a very weak one" because "with infrequent releases, anemic advertising and

25 poor sales, [plaintiffs] catalogue is virtually invisible in the jazz marketplace, and in the market

26 for music generally."), aff'd, 101 F.3d 684 (2d Cir. 1996); Smith v. Ames Department Stores, Inc.,

27 988 F. Supp. 827, 840 (D. N.J. 1997) (summary judgment for defendant where, "even assuming

28 [plaintiff's] mark is inherently distinctive, plaintiff's absolute lack of market penetration at the


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time defendants adopted their use, renders it inconceivable that consumers would confuse

plaintiff's and defendant's products."); S Industries, Inc. v. Stone Age Equipment, Inc., 12 F.

Supp. 2d 796, 817 (N.D. Ill. 1998) (summary judgment for defendant where, "[g]iven the apparent

lack of use and public identification, we find that [plaintiffs] is a weak mark.").

The weakness of Plaintiffs' "The Twigs" mark also is evidenced by its use by other

persons or entities — including by numerous other musical acts. Good Decl., Ex. 14. "In a

crowded field of similar marks, each member of the crowd is relatively weak in its ability to

prevent use by others in the crowd. Simply put, a mark which is hemmed in on all sides by similar

marks on similar goods cannot be very distinctive. . . . In such a crowd, customers will not likely

be confused between any two of the crowd and may have learned to carefully pick out one from

the other." Miss World (UK) Ltd. v. Mrs. America Pageants, Inc., 856 F.2d 1445, 1449 (9th Cir.

1988) (citation omitted).

2. Proximity Of The Goods and Services. Plaintiffs incorrectly claims their goods

and services and those of Defendant are "similar." Appl. at 6. However, music is not a fungible

commodity like pencils or paper towels. It is art, and every musical artist has a different sound,

style, and appeal. As the videos contained on the CD which is annexed to the Rian Decl. as Ex. 1

make clear, Plaintiffs' pop-rock style and Bamett's electronic R&B sound could not be more

different. Moreover, the Plaintiffs' and Defendants' images are obviously quite different, as the

Plaintiffs current play children's music while Barnett's music is targeted at an older audience. No

one viewing the videos annexed as Ex. 1 could possibly mistake Defendants' music for Plaintiffs'

music. See, e.g., Pignons, 657 F.2d at 487 ("Both the products in this case are single lens reflex

cameras; otherwise they have little in common. Their appearances are strikingly different so much

so that one could not be mistaken for the other."); Brocicmeyer v. Hearst Corp., 248 F. Supp. 2d

281, 296-97 (S.D.N.Y. 2003) (no congruence though both products were magazines); Harlem

Wizards Entertainment Basketball, Inc. v. NBA Properties, Inc., 952 F. Supp. 1084, 1095 (D. N.J.

1997) (no likelihood of confusion between basketball teams, based on different playing styles).

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3. Similarity Of The Marks. "[M]arks are not 'similar' for purposes of assessing

likelihood of confusion simply because they contain an identical or nearly identical word." Mejia

& Assoc. v. International Business Machines Corp., 920 F. Supp. 540, 547 (S.D.N.Y. 1996).

Contrary to the suggestion in the Plaintiffs' motion papers, the Plaintiffs and Defendants do not

use an identical mark. In assessing the similarity of the parties' marks, those marks must be

considered in their entirety and as they appear in the marketplace. Nutri/System, Inc. v. Con-Stain

Industries, Inc., 809 F.2d 601, 605-06 (9th Cir. 1987). While Plaintiffs purport to use the mark

"The Twigs", Barnett performs and records under the name "FICA twigs". There are substantial

differences between these marks, including the presence of the phrase "FICA" in Barnett's name,

and the fact that Barnett does not capitalize the word "twigs" in her name. 6

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4. Evidence Of Actual Confusion. Plaintiffs' only claimed evidence of "actual"

confusion are a few Internet messages and an anecdote regarding the Plaintiffs' niece. Good

Decl., IR 44-46, Ex. 13-14. But these constitute inadmissible hearsay and should not be

considered. See S Industries, Inc. v. JL Audio, Inc., 29 F. Supp. 2d 878, 893 (N.D. Ill. 1998)

(statements concerning unknown numbers of customers who allegedly called or wrote to Plaintiffs

related company STR inquiring about [defendant's product] were inadmissible hearsay);

Transamerica Financial Corporation v. Trans-American Collections, Inc., 197 U.S.P.Q. 43, 51

(T.T.A.B. 1977) (declining to consider correspondence offered to show consumer confusion

because "inasmuch as the writers of a number of the letters . .. were not called as witnesses for

examination and cross-examination as to the reasons for their mistaken beliefs, the correspondence

itself introduced for any inference that may be drawn therefrom constitutes hearsay."); Victory

Pipe Craftsmen, Inc. v. Faberge Inc., 582 F.Supp. 551, 558 (N.D.I11. 1984) ("hearsay reports with

respect to the likelihood of confusion . . . are incompetent as evidence.").

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6 Plaintiffs cite to a third-party article regarding Barnett on the Pitchfork.com website as evidence that the marks are "similar". Appl. at 7. However, Plaintiffs concede that the article makes clear that Barnett is now professionally known as "FKA twigs". Id. Contrary, to Plaintiffs' assertion, articles discussing Barnett's life and career have every right to truthfully recognize that "Twigs" is Barnett's longtime personal nickname.

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In any event, the handful of anecdotal materials collected by Plaintiffs is de minimis and

cannot support a finding that substantial likelihood of confusion exists among potential

consumers. See Universal Money Centers, Inc. v. AT&T Co., 22 F.3d 1527, 1535 (10th Cir.

1994) ("De minimis evidence of actual confusion does not establish existence of genuine issue of

material fact regarding likelihood of confusion"); Scott Paper Company v. Scott's Liquid Gold,

Inc., 589 F.2d 1225, 1231 (3d Cir. 1978) (evidence of 19 misdirected letters was "extremely

minimal"); Victory Pipe, 582 F. Supp. at 558 (N.D. 111. 1984) ("isolated or minor instances of

actual confusion do not support a finding of likelihood of confusion). Notably, Plaintiff have not

— and cannot — provide any evidence that any consumers have purchased Barnett's music out of

confusion or mistake. Where "no evidence links the confusion to any potential or actual effect on

consumers' purchasing decisions," purported evidence of actual confusion is insufficient as a

matter of law. Lang, 949 F.2d at 583.

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14 5. Marketing Channels Used. Plaintiffs argue that the Plaintiffs and defendants

15 purportedly sell their music through the same marketing channels because both sell music on the

16 Internet. However, the Internet cannot be considered a single "marketing channel," because

17 virtually every product and service in every sector of the world economy is available for purchase

18 over the Internet. Strange Music, Inc. v. Strange Music, Inc., 326 F. Supp. 2d 481, 495 (S.D.N.Y.

19 2004) (consumers "shoppring] on the Internet, who seek to purchase either party's products, are

20 relatively sophisticated and will not suffer confusion when they search for these products on the

21 web. The consumer is not shopping for a fungible good — 6-inch round, laser discs. Typically, he

22 or she is searching for an artist's composition or performance.").

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24 6. Degree Of Care Likely To Be Exercised By The Purchaser. Consumers buy

25 records featuring music they like, based upon hearing it on the radio or television or through

26 friends, and generally know what they want to buy when they visit a record store. Accordingly,

27 numerous courts expressly have recognized that "buyers of musical recordings are relatively

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a particular artist or composition . . . " Sunenblick v. Harrell, 895 F. Supp. 616, 634 (S.D.N.Y.

1995); see also Hutchinson v. Essence Communications, Inc., 769 F. Supp. 541, 568 (S.D.N.Y.

1991) ("the sophistication of consumers of rap music, who are relatively young and of all racial

groups, is high in respect of the purchasing choices they make"); Tsiolis, 946 F. Supp. at 1356

(music consumers are "necessarily discriminating" between musical genres and "reasonable

consumers will exercise care to insure that the concert or recording features the artist they seek");

WSM, Inc. v. Hilton, 724 F.2d 1320, 1330 (8th Cir. 1984) ("the country music audience is a

sophisticated one").

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7. Defendants' Intent In Selecting The Mark. Plaintiffs' burden on this issue is to

show that Defendants "intended to profit by confusing consumers." Newton, 22 F.3d at 1463.

This burden is heavy; a court will not "make speculative assumptions that are not warranted on the

evidence." Metro Publishing, 861 F. Supp. at 879. Here, it is preposterous even to speculate that

Barnett attempted to trade off of Plaintiffs' mark; she had nothing to gain by doing so. Tsiolis,

946 F. Supp. at 1354 (contention that defendant intended to trade off of plaintiff's band name,

given "the limited recognition" of plaintiff, is "unreasonable" and "irrational"). To the contrary,

Barnett originally recorded under the professional name "Twigs" because it was her childhood

nickname, and changed her professional name to "FICA twigs" as an act of courtesy and respect to

the Plaintiffs. Barnett Decl., passim. There simply is no bad faith here. See Lang v. Retirement

Living Pub. Co., Inc., 949 F. 2d 576, 583-84 (2d Cir. 1991) ("Retirement Living's prior knowledge

of Lang's trade name does not give rise to a necessary inference of bad faith, because adoption of a

trademark with actual knowledge of another's prior registration of a very similar mark may be

consistent with good faith.").

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8. Likelihood Of Expansion Of The Product Lines. Plaintiffs has submitted to

admissible evidence of any commercial activities of consequence, and there is no evidence that

they intends to expand into electronic/R&B music or otherwise directly compete with Barnett.

While Plaintiffs may still hope for a "big break" that will jumpstart their career (this lawsuit may

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itself be an effort in that regard), such aspirations are "in the future wishes stage, with no concrete

plans in place. Consequently, this factor favors defendants." Newport Pacific Corp. v. Moe's

Southwest Grill, LLC, 2006 WL 2811905, *16 (D. Or. 2006).

V. THE TRO IS NOT IN THE PUBLIC INTEREST.

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In exercising their sound discretion, courts of equity "pay particular regard for the public

consequences in employing the extraordinary remedy of injunction." Winter v. Natural

Resources Defense Council, Inc., 129 S. Ct. 365, 376-77 (2008). Here, Plaintiffs' claims are

personal to them and do not implicate any public interest, except in the following sense. As

discussed above, Plaintiffs' own actions (and inactions) have made it transparent that Plaintiffs are

abusing the TRO process in an attempt to do incalculable harm to defendants. Indeed, it seems it

is precisely because the remedy sought would do incalculable harm to defendants that Plaintiffs

and their attorneys have decided to seek it. The public has an interest in the integrity of the civil

justice system. The denial of Plaintiffs' Application would serve this interest.

VI. THE BOND

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bond. Fed. R. Civ. P. 65(c) ("The court may issue. . . a temporary restraining order only if the

movant gives security in the amount that the court considers proper to pay the costs and damages

sustained by any party found to have been wrongfully enjoined."). "[T]he instances in which a

bond may not be required are so rare that the requirement is almost mandatory." Frank's GMC

Truck Center, v. Gen. Motors., 847 F.2d 100, 103 (3d Cir. 1988) (absent circumstances where

there is no risk of monetary loss to the defendant, the failure of a district court to require a

successful applicant to post a bond constitutes reversible error); see Continum Corn, v. Incepts,

873 F.2d 801, 803-04 (5th Cir. 1989).

Trademark suits "often are characterized by firms' desire to heap costs on their rivals,

imposing marketplace losses out of proportion to the legal merits." Mead Johnson & Co. v.

Abbott Laboratories, 201 F.3d 883, 888 (7th Cir. 2000). Accordingly, "[w]hen setting the amount

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of security, district courts should err on the high side.... An error in setting the bond too high ... is

not serious.... Unfortunately, an error in the other direction produces irreparable injury, because

the damages for an erroneous preliminary injunction cannot exceed the amount of the bond....

That's why bonds must reflect full costs." Id. Here, a preliminary injunction would not only

destroy the goodwill Barnett has built up in her name, and the value of much of defendants'

investment in that name, but would cost defendants substantially more to even attempt to re-brand

Barnett under a new name. Though no bond would completely protect defendants from the

intangible losses an injunction would cause, a bond of at least $3 million is the only way to protect

defendants' ability to recover at least some losses in the event it is determined the injunction was

erroneously granted. "When setting the amount of security, district courts should err on the high

side." Mead Johnson v. Abbott Labs., 201 F.3d 883, 888 (7th Cir. 2000); see, e.g., Nintendo v.

Lewis Galoob Toys, 16 F.3d 1032, 1033 (9th Cir. 1994) ($15 million bond); RIAA. v. Diamond

Multimedia Sys., 29 F. Supp. 2d 624, 626 (C.D. Cal. 1998) ($500,000 TRO bond).

VII. PLAINTIFFS SHOULD BE SANCTIONED FOR HAVING FILED THIS MERITLESS APPLICATION IN VIOLATION OF THE COURT'S RULES

Plaintiffs' TRO Application is not only without merit; it has been filed in bad faith, and in

violation of this Court' requirements for seeking ex parte relief. Accordingly, Barnett respectfully

submits that Plaintiffs and their counsel should be sanctioned under this Court's inherent

authority.

This Court's Rule 5 states in relevant part:

.... Counsel are advised to file and serve their ex parte applications as soon as they realize that extraordinary relief is necessary. Counsel are advised that this Court allows ex parte applications solely for extraordinary relief - sanctions may be imposed for misuse of ex parte applications. See In Re: Intermagnetics America, Inc., 101 Bankr. 191 (C.D. Cal. 1989) ... (emphasis added)

The Plaintiffs' TRO Application plainly constitute an abuse of the Central District of California's

ex parte procedure for improper tactical purposes. Although Plaintiffs have admittedly been

aware of Barnett's use of the word "twigs" in connection with her music for seven months, and

Barnett's use of the name "fka TWIGS" on sound recordings since September 2013, they did not

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commence their action until April 8, 2014. Given this enormous delay, Plaintiffs know, or should

known, that their 1'1(0 application is entirely without merit, and certainly does not merit

"extraordinary relief'.

Even more outrageously, Plaintiffs did not file their TRO Application until less than

twenty-four hours before Barnett's sold-out debut US concert (which concert Plaintiffs concede

they have known about for more than a week), misrepresented to the defendants when they would

be filing that application, and filed it at the very last moment in order to minimize the amount of

time which defendants would have to oppose it. Such an egregious misuse of the Court's ex parte

procedures plainly merits the imposition of sanctions under Rule 5.

CONCLUSION

For the foregoing reasons, Plaintiffs' Application for a '11(0 and OSC re: preliminary

injunction should be denied.

DATED: April 10, 2014 CHRISTINE LEPERA ROBERT ROTS TEEN JEFFREY M. MOVIT ANNIE RIAN MITCHELL SILBERBERG & KNUPP LLP

By: /s/ Annie Rian Annie Rian Attorneys for Defendant

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[Filed Concurrently With Cross-Complaint]

Complaint filed: May 24, 2013

GRADSTEIN & MARZANO, P.C. HENRY GRADSTEIN (State Bar No. 89747) hgradsteingradstein.com MARYANN R. MARZANO (State Bar No, 96867) frunarzanoa,gradstein.com ROBERT E. ALLEN (State Bar No. 166589) [email protected] 6310 San Vicente Blvd., Suite 510 Los Angeles, California 90048 Telephone: 323-776-3100 Facsimile: 323-931-4990

Attorneys for Defendant and Cross-Complainant SCOTT WEILAND

SUPERIOR COURT OF THE STATE OF CALIFORNIA

COUNTY OF LOS ANGELES, CENTRAL DISTRICT

STONE TEMPLE PILOTS, a California Case No.: BC510040 partnership.

[Assigned for All Purposes to: Hon. Mary Strobel, Dept. 32]

ANSWER TO COMPLAINT

SCOTT WEILAND, an individual, and DOES 1 through 30, inclusive.

Defendants.

SCOTT WEILAND, an individual,

Cross-Complainant v.

STONE TEMPLE PILOTS, a California partnership; DEAN DeLEO, an individual; ROBERT DeLEO, an individual; ERIC KRETZ, an individual; and ROES 1 through 30, inclusive.

Cross-Defendants.

Plaintiff,

V.

FILED LOS ANGELES WERRA COURT

MAY 3 1 Z013

BY MARY F RES. DEP

JOhiv KE, CLEK R

1 ANSWER TO COMPLAINT

Defendant and Cross-Complainant SCOFF WEILAND ("Weiland") hereby responds to

the unverified Complaint filed against him by Plaintiff and Cross-Defendant STONE TEMPLE

PILOTS ("SIP") as follows:

GENERAL DENIAL

1. Pursuant to the provisions of California Code of Civil Procedure Section 431.30(d),

Weiland denies, generally and specifically, each and every allegation (including each and every

cause of action) contained in the Complaint and specifically denies that STP is entitled to any of

the relief sought in the Complaint. Weiland further denies, generally and specifically, that SIP has

been damaged in any sum or at all, by reason of any act or omission by him, and that SIP is

entitled to any relief whatsoever.

AFFIRMATIVE DEFENSES

As and for a separate and distinct affirmative defenses to each and every cause of action

asserted in the Complaint, without conceding that he bears the burden of proof as to any of them,

and without in any way admitting any of the allegations of the Complaint, Weiland hereby alleges

as follows:

FIRST AFFIRMATIVE DEFENSE

(Failure to State Any Cause of Action)

2, The Complaint, and each and every purported cause of action, fails to state facts

sufficient to constitute any claim or cause of action against Weiland.

SECOND AFFIRMATIVE DEFENSE

(Breach of Contract)

3. The Complaint, and each and every purported cause of action therein, is barred by

STP's own breaches of the SIP Partnership Agreement, and such breaches bar enforcement of the

contract against Weiland, as is more fully alleged in the Cross-Complaint filed by Weiland

concurrent with this Answer, the allegations of which are incorporated herein by this reference.

/ /

/ / /

/ /


THIRD AFFIRMATIVE DEFENSE

(Failure to State a Cause of Action for Breach of Fiduciary Duty)

4. The Second Cause of Action in the Complaint does not state facts sufficient to

constitute a cause of action for breach of fiduciary duty against Weiland.

FOURTH AFFIRMATIVE DEFENSE

(Novation)

5. The Complaint, and each and every purported cause of action therein, is barred by

STP's own conduct, because the acts and communications of the members of STP other than

Weiland and their agents effected a novation and/or a modification of the obligations of Weiland

under the STP Partnership Agreement, if any, and STP is therefore not entitled to any of the relief

sought therein.

FIFTH AFIRMATIVE DEFENSE

(Excuse of Performance)

6. Weiland's alleged actions and/or alleged failures to act, as set forth in the Complaint,

were excused, in whole or in part, by the acts and omissions of STP and/or third parties.

SIXTH AFFIRMATIVE DEFENSE

(Prevention of Performance)

7. STP is barred, in whole or in part, from asserting the claims set forth in the

Complaint, and from obtaining any of the relief set forth therein, because the acts, omissions and

conduct of STP and/or third parties prevented, impeded, delayed and/or otherwise impaired

Weland's performance of the STP Partnership Agreement.

SEVENTH AFFIRMATIVE DEFENSE

(Equitable Estoppel)

8. The Complaint, and each and every purported cause of action alleged therein, is

barred by STP's own conduct, actions and inactions and/or that of third parties. Therefore, STP is

equitably estopped from seeking any of the relief sought against Weiland.

/ / /

/ / /


•

1 EIGHTH AFFIRMATIVE DEFENSE

2 (Consent or Authorization)

3 9. By its actions, STP consented to and/or authorized, either expressly or impliedly,

4 Weiland's acts of which STP complains in the Complaint, and each purported cause of action

5 alleged therein.

6 NINTH AFFIRMATIVE DEFENSE

7 (Unclean Hands)

8 10. The Complaint, and each and every purported cause of action alleged therein, is

9 barred by STP's own conduct, actions and inactions under the doctrine of unclean hands.

10 TENTH AFFIRMATIVE DEFENSE

11 (Unjust Enrichment)

12 11. STP is precluded from recovering damages, if any were suffered, which Weiland

13 expressly denies, because the relief requested by STP's purported causes of action would unjustly

14 enrich STP and its members other than Weiland, at the expense of Weiland.

15 ELEVENTH AFFIRMATIVE DEFENSE

16 (Failure to Mitigate)

17 12. STP has failed to act reasonably to mitigate its claimed damages, if any, and has

18 failed to act reasonably to avoid the consequences of the claimed wrongs. STP is therefore

19 precluded from recovering the amount of its claimed damages, if any, that it could reasonably

20 have avoided, and STP's damages, if any, must be reduced to the extent that it failed to mitigate its

21 alleged damages.

22 TWELFTH AFFIRMATIVE DEFENSE

23 (Setoff)

24 13, Weiland incorporates by reference all allegations of his Cross-Complaint filed

25 concurrently herewith. As a result of the allegations contained in the Cross-Complaint, STP is not

26 entitled to any recovery against Weiland and/or any recovery to which STP may be found to be

27 entitled must be reduced by the sums owed by STP to Weiland.

28 III


•

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THIRTEENTH AFFIRMATIVE DEFENSE

(No Proximate Cause)

14. No act or omission by Weiland caused any damage, loss or injury to STP as alleged

in the Complaint, or otherwise.

FOURTEENTH AFFIRMATIVE DEFENSE

(Bad Faith)

15. SIP is barred from obtaining any relief from the purported causes of action

contained in the Complaint because STP brought the Complaint in bad faith and for an improper

purpose.

FIFTEENTH AFFIRMATIVE DEFENSE

(Failure to State a Cause of Action for Violation of the Lanham Act)

16. The Third Cause of Action in the Complaint does not state facts sufficient to

constitute a cause of action for a violation of the Lanham Act as against Weiland.

SIXTEENTH AFFIRMATIVE DEFENSE

(Lack of Damages)

17. STP is barred from asserting, in whole or in part, the claims set forth in its

Complaint, and from obtaining any of the relief described therein, because STP has not suffered

any recognizable damage or injury by reason of an act or omission by Weiland.

SEVENTEENTH AFFIRMATIVE DEFENSE

(Uncertainty of Pleading)

18. The Complaint, and each and every purported cause of action herein, is vague and

uncertain.

EIGHTEENTH AFFIRMATIVE DEFENSE

(Ratification)

19. To the extent that Weiland allegedly committed any act which caused STP any harm

or damage, which Weiland expressly denies, all such conduct of Weiland and any consequences

thereof, or resulting therefrom, were ratified and accepted by STP.

/ / /

5

ANSWER TO COMPLAINT

1 NINETEENTH AFFIRMATIVE DEFENSE

2 (No Basis for Punitive Damages)

3 20. STP is not entitled to recover punitive or exemplary damages because it has failed to

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9 malice, spite, or conscious, reckless, or negligent disregard of anyone's rights, if any, and without

10 improper purpose or motive, maliciousness or ill will of any kind.

11 TWENTY-FIRST AFFIRMATIVE DEFENSE

12 (Reservation of Rights to Assert Additional Defenses)

13 22. Weiland currently has insufficient knowledge or information on which to form a

14 belief as to whether he may have additional, as yet unstated, affirmative defenses available.

15 Weiland therefore reserves the right to amend this Answer and assert additional affirmative

16 defenses as the facts and circumstances relating to STP's claims are more fully disclosed in the

17 course of this litigation.

18 PRAYER

19 WHEREFORE, Defendant and Cross-Complainant Scott Weiland prays for relief as

20 follows:

21 1. That judgment be entered in favor of Weiland and against STP on all of STP's

22 causes of action asserted in the Complaint:

23 2. For costs of suit;

24 / / /

25 / / /

26 / / /

27 III

28 / / /

6

allege, and cannot establish, facts to state a claim for such damages and to show that Weiland is

guilty of oppression, fraud or malice within the meaning of California Civil Code Section 3294.

TWENTIETH AFFIRMATIVE DEFENSE

(Justification)

21. Weiland's conduct was justified, privileged and performed in good faith, without

ANSWER TO COMPLAINT

enry Gradstell/-7- Attorneys for Defendant and Cross-Complainant SCOTT WEILAND

By:

• 3. For reasonable attorney's fees to the full extent recoverable under applicable law;

and

4. For such other and further relief as the Court deems just and proper.

DATED: May 31, 2013

CS a: Cf$M8 Z 5es'g

§ -j

(13:11' gE CD °)

GRADSTEIN & MARZANO, P.C. Henry Gradstein Maryann R. Marzano Robert E. Allen


se 2:14-cv-02668-SVW-JCG Document 21 Filed 04/10/14 Page 1 of 4 Page ID #:217

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

LINDA ELAINE GOOD, et al., Case No. CV 14-2668 SVW

Plaintiffs, ORDER DENYING

v. PLAINTIFFS' EX PARTE APPLICATION FOR ISSUANCE

TAHLIAH BARNETT, et al., OF A TEMPORARY RESTRAINING ORDER

Defendants.

On April 8, 2014, plaintiffs Linda and Laura Good filed a complaint against

defendants alleging trademark infringement. Plaintiffs claim they have long used

the mark "The Twigs" in interstate commerce "in connection with the promotion

and sale of their goods and services, including playing musical concerts and selling

recordings of their original songs and performances, increasingly over the

Internet." (Compl. 47.) They claim that around June 2013, they learned that a

musical artist named Tahliah Barnett from London has been performing as

"Twigs" or "FKA Twigs" and selling her CD on the internet. (Id. ¶J 26, 32.)

Plaintiffs also assert that defendants "are on the brink of selling and promoting the

live musical performance of Barnett for the first time ever in the United States with

the concert advertised to take place at the Hollywood Forever cemetery on April

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se 2:14-cv-02668-SWV-JCG Document 21 Filed 04/10/14 Page 2 of 4 Page ID #:218

10, 2014." (Id. 41148 .)

On April 9, 2014, at 10:52 p.m. Pacific Daylight Time, plaintiffs filed the

instant ex parte application for a temporary restraining order (TRO) seeking to

enjoin defendants from using their Twigs mark at a sold-out concert that is

scheduled to begin tonight (April 10, 2014) at 8:00 p.m. in Hollywood. (See

Comp1.1[44 & Dkt. 10 (Good Dec!.) Ex. 7.)

At 2:42 p.m. today, defendant Barnett filed an opposition to the application

for a TRO. At 3:43 p.m. PDT today, defendants Beggars Group Holdings (USA)

Inc., Beggars Banquet Recordings (USA) Inc. and XL Recordings (USA) Inc. filed

a separate opposition to the application.'

At 4:22 p.m. today, plaintiffs filed a reply.

The Court has read the papers submitted in support of and in opposition to

the application for a TRO, and on that basis now DENIES the application.

A party seeking a TRO must establish the following elements: (1) a

likelihood of success on the merits; (2) a likelihood of irreparable harm to plaintiffs

in the absence of preliminary relief; (3) the balance of equities tips in plaintiffs'

favor; and (4) an injunction is in the public interest. Winter v. Natural Resources

Defense Council, Inc., 555 U .S. 7, 20 (2008). Because injunctive relief is an

"extraordinary remedy," it may only be awarded "upon a clear showing that the

plaintiff is entitled to such relief." Winter, 555 U.S. at 22. This traditional

four-factor test employed by the courts of equity, including the requirement that

the plaintiff must establish irreparable injury to obtain a TRO, applies equally to

trademark infringement actions. Herb Reed Enterprises v. Florida Entertainment

Management, 736 F.3d 1239, 1249 (9th Cir. 2013) (citing Winter, 555 U .S. 7, and

eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006)). There is no presumption

of irreparable harm simply because a plaintiff establishes a likelihood of success on

The Court experienced technical difficulties with the CM/ECF filing system during this afternoon, which may have somewhat delayed some of these filings.

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se 2:14-cv-02668-SVW-JCG Document 21 Filed 04/10/14 Page 3 of 4 Page ID #:219

the merits of the trademark infringement claim. Id. Instead, a plaintiff seeking a

TRO must "demonstrate that irreparable injury is likely in the absence of an

injunction." Id. (citation and internal quotation marks omitted). Requiring only a

showing of a "possibility" of irreparable harm is "a standard that is too lenient."

Id. (citation and internal quotation marks omitted).

Even assuming that plaintiffs will prevail on the merits of their underlying

trademark dispute, they have not established a likelihood of irreparable injury if

tonight's concert proceeds with defendant Barnett continuing to use the mark "fka

Twigs." First, plaintiffs have not established that "remedies available at law, such

as monetary damages, are inadequate to compensate for the injury arising from

[Barnett's] continuing allegedly infringing use of the mark." Herb Reed

Enterprises, 736 F.3d at 1249-50 (citation and internal quotation marks omitted).

Second, plaintiffs have failed to explain why they waited until just twenty-one

hours before the scheduled time of the allegedly infringing concert to file the

instant application. Plaintiffs say they first became aware of defendant's plans for

the concert on April 1, 2013. (Compl. 1141.) Even this date is eight days prior to

the instant emergency application. Moreover, plaintiffs have been aware of

defendants' actions in selling music under the disputed mark within the United

States since September 2013. (Compl. (ij 32.) In considering whether plaintiffs

have established irreparable harm here, the Court takes into account whether they

"proceeded as quickly as [they] could have" in seeking a TRO. See Apple, Inc. v.

Samsung Electronics Co., Ltd., 678 F.3d 1314, 1325 (Fed. Cir. 2012). Here,

plaintiffs' unexplained delay in seeking emergency relief undermines their claim of

irreparable injury. Plaintiff has also failed to show the balance of equities favors

an immediate restraining order affecting the manner in which defendant Barnett

represents herself at tonight's concert. (See Barnett Opp'n at 6-7.)

Plaintiffs have failed to carry their burden of making a "clear showing" that

they are entitled to the "extraordinary remedy" of immediate injunctive relief.

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se 2:14 -cv-02668-SVW-JCG Document 21 Filed 04/10/14 Page 4 of 4 Page ID #:220

Winter, 555 U.S. at 22.

The application for a temporary restraining order is DENIED.

IT IS SO ORDERED.

STEPHEN V. WILSON United States District Judge

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Dated: April 10, 2014

4

Case 1:08-cv-05475-RJS Document 5 Filed 09/09/08 Page 1 of 25

THE LUSTIGMAN FIRM, P.C. 149 Madison Avenue, Suite 805 New York, New York 10016 Phone: (212) 683-9180 Fax: (212) 683-9181 Attorneys for Plaintiff

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

SANTO RIGATUSO a/k/a SANTO GOLD, Civil Action No. 08-cv-05475-RJS

- against - AMENDED COMPLAINT AND JURY DEMAND

SANTI WHITE a/k/a SANTOGOLD, DOWNTOWN MUSIC, L.L.C., MAD DECENT RECORDS, WESLEY PENTZ a/k/a DIPLO, LIZARD KING RECORDS, INC., and LIZARD KING RECORDS, LTD.,

Defendants.

Plaintiff Santo Rigatuso a/kJa Santo Gold (hereinafter "Plaintiff), by and through the

undersigned attorneys, The Lustigman Firm, P.C., as and for his Complaint alleges as follows,

based upon knowledge with respect to his own actions and upon information and belief with

respect to all other matters:

NATURE OF THE ACTION

1. On her new hit song "Creator", Defendant Santi White adopts the stage name

SANTOGOLD and sings, "The rules I break got me a place / Up on the radar / Me, I'm a Taker /

Know what the stakes are / Can't roll it back, it's understood." True to her lyrics, White has indeed

broken the rules by intentionally stealing the SANTO GOLD trade name and performing identity

away from Plaintiff Santo Rigatuso, whom she well knows has appeared as SANTO GOLD for


decades as a singer and actor, on television and in movies. Defendant White's published and

recorded interviews confirm her full awareness of Plaintiffs prior use of the SANTO GOLD mark.

Defendant White has further revealed her intent to deliberately confuse the public with her

involvement in and/or association with the unauthorized use of Plaintiffs recorded voice on her

latest commercial recording, titled "Top Ranking SantoGold" in such a way that makes it appear that

SANTO GOLD (Plaintiff) is introducing SANTOGOLD (Defendant White).

2. Performing under the name and mark SANTO GOLD since 1983, Plaintiff Santo

Rigatuso has earned a cult following for his unique, and sometimes bizarre songs, movies and

infomercial appearances. After appearing for several years in the music industry under her own

name with mixed success, Defendant White reinvented her professional identity by switching

musical genres and deliberately misappropriating Plaintiffs SANTO GOLD mark and name and

using it in the very same industry in which Plaintiff operates.

3. Defendant White has hijacked Plaintiff's SANTO GOLD Mark, identity and

voice without written consent and has otherwise impermissibly traded on Plaintiffs name

recognition. She has accomplished this with the help of defendants Downtown Music, L.L.C.,

Lizard King Records, Inc., Lizard King Records Ltd. (jointly referred to as "Lizard King") and

Mad Decent Records (collectively "the Record Label Defendants") Eaid,Wesley Pentz a/k/a Diplo

(p te).

4. Defendants White, Lizard King and Downtown all received notice of Plaintiffs rights

before releasing and distributing 'White's first compact disc ("CD"), but rather than simply stopping

the infringement and identifying Defendant White by her given name (or any non-infringing name

for that matter), Defendants expanded their use of SANTOGOLD as White's identity by releasing

- 2 -


two CDs in 2008 and by appearing in and scheduling a worldwide concert tour, including

appearances as the opening act for the popular group Coldplay, and also on her own tour.

5. The true nature of Defendant's bad faith and malicious intent to confuse the public

and injure Plaintiffs career was confirmed on or about July 7, 2008 when, after this lawsuit was

commenced, Defendants Pentz and White, purloined a sampled recording of Plaintiff uttering the

words, "Now ladies and gentlemen, we proudly present in person SANTO GOLD!" and, without

Plaintiff's permission, used his voice as the introduction to Defendant White's second CD thus

making it appear that Plaintiff is enthusiastically endorsing Defendant White. In reality, Plaintiff was

talking about himself, but any listener would assume he intended to introduce Santi White to the

public.

6. Defendant White has advertised and performed in public as SANTOGOLD,

registered several SANTOGOLD Internet domain names (save for santogold.com which already

belonged to Plaintiff); and licensed the SA/VTOGOLD name and her music to commercials for

national products such as Bud Light Beer and Converse sneakers. Defendant White furthered her

scheme to steal the SANTO GOLD name from Plaintiff by submitting false statements to the United

States Patent and Trademark Office in hopes of registering Plaintiffs name as a trademark. With

Defendant Pentz producing her music, and the_Record Label-Defendants orchestrating -an

international publicity campaign on Defendant White's behalf, Defendants have confused consumers

and industry critics and are in the process of crushing Plaintiff's hopes of continuing under the

identity he has used for years. Defendants must be stopped.

7. Accordingly, Plaintiff brings this action seeking, inter alia, the Court's determination,

order and judgment that Defendants have: violated Plaintiff's rights under federal unfair competition

law codified at § 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); violated Plaintiff's rights under the

- 3 -


anti-cybersquatting provisions the Lanham Act, 15 U.S.C. § 1125(d); infringed Plaintiffs trademark

rights under the common law of New York; violated Plaintiff's rights under the unfair competition

law of New York; used Plaintiffs mark with the intent to deceive in violation of New York General

Business Law §133; used Plaintiff's voice and name in violation of his right of privacy under New

York Civil Rights Law Sections 50, 51; and violated Plaintiff's rights under New York General

Business Law § 360-1.

8. Defendants' tortious acts have caused and continue to cause irreparable damage and

injury to Plaintiff for which there is no adequate remedy at law. Accordingly, Plaintiff seeks the

following relief: an injunction barring Defendants use of the SANTO GOLD mark or anything

substantially similar (including SANTOGOLD); refusal of Defendant White's pending application

for SANTOGOLD with the USPTO; recall and destruction of all Defendants' items in commerce

that either infringe on the SANTO GOLD Mark or impermissibly use Plaintiff's voice;

compensatory damages; Defendants' profits, treble damages, attorneys' fees and other appropriate

relief as set forth more fully below.

PARTIES, JURISDICTION AND VENUE

9. Plaintiff Santo Rigatuso is a resident of the State of Florida. For decades, he has

performed as a singer and actor gpearing on television, in_movies_and has recorded-music-using the

stage name SANTO GOLD. Since the early 1980s, Plaintiff has continually used in commerce the

distinctive name and trademark SANTO GOLD ("Plaintiff's Mark" or "SANTO GOLD Mark").

Since 2004, Plaintiff has operated the website www.santogold.com where products and services

utilizing the SANTO GOLD Mark are offered.

10. Defendant Santi White is a resident of Brooklyn, New York. She performs

concerts in New York, New York and elsewhere recently as SANTOGOLD and she otherwise

- 4 -


relies on SANTOGOLD to further her career. She is subject to personal jurisdiction in New

York by virtue of her residence here, and also by virtue of her professional appearances in this

district as SANTOGOLD. In April 2008, Defendant White released her first CD under the

name SANTOGOLD. In July 2008, also under the name SANTOGOLD, Defendant Pentz and

Mad Decent released the second CD, with the title "Top Ranldng SantoGold" displayed in large

bold letters on the cover. "Top Ranking SantoGold is a "mixtape" that features her own work

along with those of other artists.

11. Upon information and belief, Defendant Downtown Records, L.L.C. maintains an

office at 485 Broadway, New York, New York.

12. Upon information and belief, Defendant Lizard King Records, Inc. is a Delaware

corporation with its principal place of business in New York, New York.

13. Upon information and belief, Defendant Lizard King Records Ltd. is incorporated

in the United Kingdom, but does business in this country and in this district through its

subsidiary, defendant Lizard King Records, Inc.

14. Upon information and belief, Mad Decent Records ("Mad Decent") is located at

531 N. 12th Street in Philadelphia, PA.

15. Upon information and belief, Defendant Wesley Pentz a/k/a Diplo-("Pentz"-) lives-in

Philadelphia, Pennsylvania and is an executive and the driving creative force behind Mad Decent.

16. Upon information and belief, Defendant Pentz is subject to personal jurisdiction

in New York by virtue of his frequent performances in New York, his derivation of significant

revenues from sales of his recorded music to residents of New York, and also by the acts of Mad

Decent.

- 5 -


17. Upon information and belief, Defendant Pentz is an owner or part owner of

Defendant Mad Decent Records and has committed and/or is responsible for the acts of

Defendant Mad Decent Records as described herein. Upon information and belief; Defendant

Mad Decent is subject to personal jurisdiction in New York by virtue of its derivation of

significant revenues from sales of recorded music to residents of New York.

18. Upon information and belief, Defendant Record Labels regularly do and transact

business in this district, by, inter alia, advertising, promoting and selling music, including

Defendant White's music, in this district, and to residents of this district including through

Internet downloads, in the case of Lizard King, Inc. and Downtown Records, by maintaining

offices in this district, and in the case of Lizard King Ltd., by acting through its subsidiary.

19. Upon information and belief; Defendants have committed tortious acts within this

district, including but not limited to: infringing on the SANTO GOLD Mark and competing

unfairly with Plaintiff in this district by advertising, promoting and selling Defendant White's

product and services, through White's performances, interviews and public performances and

appearances using the infringing name SANTOGOLD and by selling CDs here containing

Plaintiff's voice and trade name without authorization to do so.

20. Upon information and belief; Defendants derive s revenue from

interstate and international commerce.

21. This Court has subject matter jurisdiction pursuant to 15 U.S.C. §1121,28 U.S.C.

§ 1331, 28 U.S.C. § 1338(a), 28 U.S.C. § 1338(b) and 28 U.S.C. § 1367. This Court may grant

Plaintiff's requested relief pursuant to the Lanham Act, 15 U.S.C. § 1051 et seq., and pursuant to

the relevant common law and the general laws of the State of New York.

- 6 -


22, This Court has supplemental jurisdiction over the remaining causes of action,

which arise from a common nucleus of operative facts that provide federal jurisdiction.

23. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) because, inter

alia, (i) Defendants reside in this district pursuant to 28 U.S.C. § 1391(c); and (ii) a substantial

part of the events giving rise to Plaintiffs claims occurred in this district.

FACTUAL BACKGROUND

Plaintiff's Prior Use Of SANTO GOLD

24. Plaintiff Santo Rigatuso a/k/a Santo Gold is a singer, songwriter and performer

who, under the SANTO GOLD Mark, has performed on television and in motion pictures for his

musical creations and has recorded music for over twenty five years. His products are available

at the website under his domain name www.santogold.com, which he has operated since 2004.

25. At least as far back as 1983, Plaintiff appeared in national television and cable

commercials using the SANTO GOLD Mark. Through Plaintiff's continuous and extensive use

of the SANTO GOLD Mark in interstate commerce, he has acquired common law rights to that

name and mark.

26. For example, in 1984, Santo Rigatuso wrote and recorded a song entitled "The

Santo Gold Song" and released "The Santo Gold Song", a record on which he performed in

SANTO GOLD persona.

27. Over the next two decades and continuing to this day, as highlighted below,

Plaintiff appeared and performed live singing "The Santo Gold Song" and has offered for sale

songs utilizing the SANTO GOLD Mark.

-7-


28. In 1985, Plaintiff produced and appeared in the motion picture "Blood Circus." In

this motion picture, Plaintiff appeared under the persona and name SANTO GOLD and

performed "The Santo Gold Song."

29. In 1985, Plaintiff also created a thirty-minute infomercial in which he perfonned

"The Santo Gold Song" and showed scenes from his movie, "Blood Circus". Plaintiff created

the infomercial to sell jewelry and to promote both the movie and his musical career.

30. Related videos entitled "Behind the Scenes of Blood Circus" and "The Making of

Blood Circus" were later produced which also featured SANTO GOLD singing and performing.

31. Additionally, Plaintiff and his family launched a national television shopping

network titled "Auction on the Air Network," which ran on cable television and which featured

Santo Rigatuso hosting, singing and performing using his SANTO GOLD persona.

32. In 1986, Santo Rigatuso attended the Cannes Film Festival in his SANTO GOLD

character and also was requested to perform live on national television and in a major

professional wrestling event as SANTO GOLD.

33. In 1987, Plaintiff produced a follow-up movie, using actual footage from "Blood

Circus", entitled "Blood Slam", which again featured himself as SANTO GOLD singing and

performing. "Blood Circus" was shown in New York and Baltimore theatres and also was

presented and screened by major motion picture studios in California.

34. For several years, Plaintiff continued to appear as SANTO GOLD through th e

broadcast of the SANTO GOLD infomercial on television.

35. Plaintiff has continued his use of the SANTO GOLD Mark in interstate commerce

since 1999. The URL, or Internet address, for Plaintiff's website, www.santogold.com, was

- 8 -

Case 1:08-ov-05475-RJS Document 5 Filed 09/09/08 Page 9 of 25

purchased in 2001. Plaintiff has utilized this website since it was launched in 2004 to promote

his SANTO GOLD persona and to distribute his music and other products nationwide.

36. Many websites have posted information and reference to Plaintiff's performances,

all of which have been under the name SANTO GOLD.

37. In 2004, Plaintiff, under the name SANTO GOLD, recorded the song "Your

Fired" and offered it for sale on the Internet.

38. Since 2004 Plaintiff has received and responded to commercial inquiries on his

website, w-ww.santogold.com .

39. Since 2004, portions of Plaintiff's SANTO GOLD films have been broadcast on

the Internet. Videos of Plaintiff performing as SANTO GOLD have been posted on the popular

Internet site www.youtube.com since at least 2006.

40. In 2005 Plaintiff offered for sale his movie, "The Making of Blood Circus Part 1",

which features SANTO GOLD singing "The Santo Gold Song", on the www.santogold.com

website.

41. The foregoing activities have resulted in the SANTO GOLD Mark becoming

associated with Plaintiff Santo Rigatuso's goods, services and persona.

Defendants' Willful Infringement Actions and Unfair Competition

42. The fundamental purpose of both Plaintiff's SANTO GOLD and Defendants'

SANTOGOLD ventures is to provide music and performance-related entertainment.

43. Some time in the 1980s or 1990s, as evidenced by her own admissions, Defendant

White became aware of Plaintiff, his SANTO GOLD Mark, and his SANTO GOLD persona.

44. In a video interview available for Internet viewing, Defendant White was asked

why she adopted the SANTO GOLD name:

- 9 -


Interviewer: Santogold, what is that?

Defendant White: It's actually a nickname that I had since I was a kid. There's this cheap infomercial for like this cheap gold jewelry. You ever seen that? It was in the eighties and it was like, "Santo Gold Santo Gold" [singing the Santo Gold song] and it was like he was selling this weird wrestling movie, he was selling these gold earrings and he had one song. It was one infomercial.

See http://stylecartel .wordpress.com/2008/07/01/dj-enuff-of-hot-97-santo gold-interview/.

45. Also, in an interview published on wvvw.trashmanagerie.com , Defendant White

was asked about Plaintiff and she admitted she adopted the SANTOGOLD name because she

like to wear jewelry similar to the jewelry Plaintiff wore on his television appearances.

46. On or about November 15,2006, without giving any notice to Plaintiff, Defendant

White filed (or caused to be filed) with the USPTO an application regarding her intent to use

Plaintiff's SANTO GOLD Mark.

47. In the USPTO application documents, Defendant White's attorney, Scott Mason,

signed a declaration attesting that "to the best of his/her belief no other person, firm,

corporation, or association has the right to use the mark in commerce, either in the identical form

thereof or in such near resemblance thereto as to likely, when used on or in connection with the

goods/services of such other person, to cause confusion, or to cause mistake, or to deceive, and

that all statements made of his/her own knowledge are tnie„.._.7

48. Upon information and belief; Mason's sworn representations, made on behalf of

and as an authorized agent for Defendant White to the USPTO, were knowingly false.

49. According to Defendant White's Statement Of Use filed with the USPTO, the

first use of the SANTOGOLD name was made on April 22,2007.

50. In late Fall 2007, Plaintiff learned of Defendant White's trademark application,

but only after it was too late to file an objection with the USPTO.

- 10-


51. Upon learning of White's trademark application, Plaintiff contacted White's

attorney, a man named Mason, concerning the application and notified him of his objection to

Defendants' use of the SANTO GOLD Mark, that confusion was virtually certain to result from

Defendants' use such mark. Plaintiff requested that White cease and desist from any and all uses

of the SANTO GOLD Mark. These concerns and cease and desist requests were set forth in two

pro se letters to Attorney Mason, dated November 23 and November 28, 2007, respectively.

52. Plaintiff's pro se efforts were ignored and Defendant White continued with the

trademark application process.

53. Plaintiff then retained counsel and, by his counsel, sent another letter to Attorney

Mason, on April 1, 2008, requesting that White cease and desist from infringing on the SANTO

GOLD Mark.

54. Despite having been fully informed about Plaintiff's objection to Defendant

White's infringement on the SANTO GOLD Mark, Defendant White did not inform the USPTO

of Mr. Rigatuso's prior use of the SANTO GOLD Mark.

55. On April 29,2008, after Defendant White was notified that her use of

SANTOGOLD infringed on the SANTO GOLD Mark, she publicly appeared and performed, on

national television, billing herself as SANTOGOLD.

56. Despite having been notified of their infringement, in April 2008, Defendant

White and the Record Label Defendants (except for Defendant Mad Decent Records) released

the "Santogold" CD.

57. When Plaintiff learned that the Santogold CD had been released, he again wrote

to White on May 1, 2008, with copies sent to the Record Label Defendants, demanding that she

cease and desist her infringing use of Plaintiff's Mark.


58. Although White's attorney admitted his client's prior knowledge of Plaintiff's

SANTO GOLD mark, and that he advised and discussed same with her, she rejected Plaintiffs

demands to cease utilization of the SANTO GOLD Mark.

59. Defendants' use of Plaintiffs SANTO GOLD Mark has continued to grow.

Defendants have dramatically intensified their promotional efforts for the "Santogold" CD and

Defendant White's public appearances as SANTOGOLD have increased.

60. On or about September 3, 2008, Defendant White announced her own United

States tour, in which she headlines as SANTOGOLD.

61. Defendants have unlawfully profited from the use of Defendant White's music in

television commercials for Bud Light beer, Converse sneakers, and Ford Motor, utilizing the

SANTOGOLD name in connection therewith.

62. Defendants' infringement continues unabated. Defendants continue to sell her

CDs in major chain stores and on Internet websites, make her music available for purchase via

Internet downloads, ringtones and profit from the licensing of her music for commercials and

through live performances as "SANTOGOLD."

63. Defendants' adoption and use of the name and SANTO GOLD Mark were

commenced with the bad faith intent to trade upon the public persona of Plaintiff and his

SANTO GOLD Mark and to falsely and deceptively suggest a connection to or affiliation with

the Plaintiff.

64. Proof of Defendants' bad faith lies in their activities since the commencement of

this action.

65. Defendants continue to progressively encroach on SANTO GOLD's market

territory by creating and airing after this lawsuit was commenced television and Internet

- 12 -


commercials for a non-existent "SANTOGOLD THE MOVIE" and causing them to be broadcast

on national cable television and on the Internet. See www.mtv.com/overdrive/?vid=251890.

66. On or about July 7, 2008, again after this lawsuit was commenced, Defendants

White and Pentz incorporated Plaintiff's voice as the first selection on Defendant White's second

CD "Top Ranking Santo Gold."

67. Without any authorization, Defendant Pentz obtained and used on White's second

CD a recording of Plaintiffs voice uttering the words "Now ladies and gentlemen, we proudly

present in person SANTO GOLD!" Upon information and belief, Defendant Pentz obtained the

recording from a website on which he left a message identifying himself under his stage name,

Diplo. Upon information and belief; Defendants fibenefit from the commercial use and sales of

the Top Ranking Santo Gold CD.

68. Without any authorization, Defendant Pentz and Mad Decent used the recording

of Plaintiffs voice in a manner that intentionally confuses the public by making it appear that

Plaintiff is introducing and endorsing Defendant White, when in reality Plaintiff was talking

about himself.

69. Defendants Mad Decent Records and Pentz began selling and distributing the

"Top Ranking Santo Gold" CD, with the uncredited, unauthorized appearance of Plaintiff on or

about July 7, 2008.

70. The SANTOGOLD name being used by Defendants and the SANTO GOLD

Mark being used by Plaintiff are confusingly similar, and are identical, save for the removal of

the space between the names Santo and Gold. Plaintiff also uses his SANTO GOLD mark as one

word on occasion, such as in connection with the domain name on his website. Additionally,

- 13 -


websites referencing Defendant White have interchangeably used the SANTO GOLD Mark with

and without the space between Santo and Gold.

Plaintiff Is Being Irreparably Harmed

71. The public is likely to be confused and, in fact, has already been confused as to

the source of the entertainment offered in connection with the name and mark SANTO GOLD.

72. Such confusion and mistake irreparably harm Plaintiff and his ability to continue

his career using the SANTO GOLD persona. As a result of the initial interest confusion and

mistake engendered by Defendants, potential purchasers and interested consumers are either

diverted from Plaintiff to Defendant White or are led to believe that Plaintiff is infringing on

Defendant White's success as SANTOGOLD.

73. Actual confusion already has resulted from Defendants' use of the SANTO

GOLD Mark, including Plaintiff's receipt of requests for interviews of Defendant White and to

license the use her songs.

74. Defendants harmed Plaintiff by intentionally confusing the public through the

phony ads for a motion picture under the banner "SANTOGOLD THE MOVIE" and also by the

unauthorized use of Plaintiffs voice in a manner that suggests Plaintiffs endorsement of

Defendant White's infringement

75. Plaintiff has been preparing to re-release his original "Blood Circus" movie, as

"Santo Gold's, Blood Circus," on pay-per-view, video and DVD, featuring SANTO GOLD

singing and performing.

76. Before Defendant White began using Plaintiffs SANTO GOLD Mark, a search

for SANTO GOLD on the popular intemet search engine Google, returned numerous results

relating to Plaintiff and his SANTOGOLD products and performances. Since White has

- 14 -


commenced her unauthorized use of Plaintiffs name, his presence on the Internet has become

hopelessly entangled and confused with Defendant White..

77. Plaintiff will continue to be irreparably harmed as long as Defendants continue to

use the name, mark or Internet domain featuring SANTOGOLD in connection with music and

video entertainment.

Count I - False Designation of Origin (against all defendants)

(Violation of § 43(a) of the Lanham Act, 15 U.S.C. 1125(a))

78. Plaintiff re-alleges all prior paragraphs as though set forth in full herein.

79. Defendants' use of SANTOGOLD constitutes false designation of origin in

interstate commerce.

80. Such use has caused and will continue to cause confusion, mistake and/or

deception as to the affiliation, connection, or association of Defendants and/or their services with

Plaintiff and/or his services.

81. As a result of Defendants' use of SANTOGOLD, the public is likely to falsely

believe that Defendant White and her services and commercial activities, including those offered

by the Record Label Defendants originate with or are sponsored, approved, endorsed or licensed

by, or are in some other way associated or connected with Plaintiff or his activities conducted

under his SANTO GOLD Mark when in fact they are not.

82. Defendants' use of SANTOGOLD is likely to confuse the public as to the true

source of Plaintiffs and Defendants' competing goods.

83. Defendants' acts complained of herein constitute a violation of Section 43(a) of

the Lanham Act, 15 U.S.C. §1125(a).

-15-


84. By taking an uncredited sound recording of Plaintiff's voice introducing "Santo

Gold" and placing it on the "Top Ranking Santogold" CD in a manner that makes it appear that

Plaintiff is introducing Defendant White to the public, Defendants White, Pentz and Mad Decent

Records have palmed off Plaintiff's performances as that of Defendant White's.

85. Defendants' acts complained of herein, which upon information and belief have

been done willfully and with the intention to cause confusion, mistake and deception, have

caused and will continue to cause irreparable injury and damage to Plaintiff's ability to sell his

music and movies and his public persona in the future. As a result of this confusion and mistake,

potential purchasers or users are diverted from Plaintiff to Defendants.

86. Plaintiff is entitled to an injunction barring Defendants from continuing to utilize

the name or mark SANTO GOLD, and any version thereof.

87. Unless enjoined, Defendants will continue to cause irreparable injury and damage

to Plaintiff for which Plaintiff has no adequate remedy at law.

88. This is an exceptional case within the meaning of 15 U.S.C. § 1117(a), because

Defendants' conduct has been outrageous and their violation of Plaintiff's rights has been willful.

89. Upon information and belief, by the acts complained of herein, Defendant has

derived substantial revenues and/or profits to which in equity they are not entitled to retain.

90. As a result of the Defendants' acts, Plaintiff is entitled to damages in an amount to

be proven at trial, which amount should be trebled in accordance with 15 U.S.C. § 1117(a).

91. The foregoing acts of Defendants also warrant an award of attorneys' fees.

Count II— Cybersauatting (against Defendant White)

(Violation of § 43(d) of the Lanham Act, 15 U.S.C. § 1125(d))


- 16 -


93. Defendant White, with full knowledge of Plaintiffs SANTO GOLD mark and

intent to capitalize thereupon, registered, trafficked in and/or used the domain names

wvvw.santogold.net, www.santogold.info and www.santogold.us, and possibly other infringing

domain names.

94. Upon information and belief, at the time Defendant White registered this trio of

websites, she viewed or attempted to reserve www.santogold.com and saw Plaintiffs SANTO

GOLD website but proceeded to register similar domain names with full knowledge that it would

result in confusion of the public.

95. Plaintiff's domain name registrations were done in bad faith in order to diminish

Plaintiffs association with the SANTO GOLD Mark.

96. Upon information and belief, Defendant White has a bad faith intent to profit

from the use of Plaintiff's Mark, and has registered, trafficked in, and/or used the domain names,

www.santogold.net, www.santogold.us and www.santogold.info, which are confusingly similar

to Plaintiffs Mark, including his website www.santogold.com .

97. Plaintiffs Mark is distinctive and was distinctive at the time of the registration,

trafficking and/or use of www.santogold.net, www.santogold.us and www.santogold.info.

Defendant White has no valid trademark or other intellectual property or other rights to any

name or mark featuring SANTO GOLD.

98. Upon information and belief, the use of the domain names wwvv.santogold.net,

www.santogold.us and www.santogold.info was and is done with the intent to benefit from

confusion with Plaintiff and Plaintiff's Mark.

99. The acts set forth above constitute cybersquatting in violation of Section 43(d) of

the Lanham Act, 15 U.S.C. § 1125(d).

- 17 -


100. The acts of cybersquatting complained of herein, which upon information and

belief have been done willfully and with the intention to cause confusion, deception and mistake,

have caused and will continue to cause irreparable injury and damage to Plaintiff, and unless

enjoined will continue to cause irreparable injury and damage for which Plaintiff has no adequate

remedy at law.

101. For this violation of Section 43(a) of the Lanham Act, Plaintiff is entitled to

injunctive, monetary and other relief pursuant to Sections 34, 35 and 43(d) of the Lanham Act,

15 U.S.C. §§ 1116, 1117 and 1125(d), including the forfeiture, cancellation or transfer to

Plaintiff of any Santogold-related domain names held, registered or used by Defendant White or

her licensees or assigns as well as treble damages and attorneys' fees.

Count III- Common Law Trademark Infrimement (against all Defendants)

(Violation of New York Trademark Infringement Law)


103. Defendants' use of the name and mark SANTOGOLD in the State of New York,

capitalizes upon and is intended to capitalize upon the recognition and name value of Plaintiff's

SANTO GOLD persona and mark.

104. As a result of Defendants' use of the name and mark SANTOGOLD, actual

consumer and trade confusion is likely between Plaintiff and Defendant and their respective

services.

105. Thus, Defendants' use of the name and mark SANTOGOLD constitutes

trademark infringement under the common law of the State of New York.

106. Defendants' acts of trademark infringement complained of herein, which upon

information and belief have been done willfully and with the intention to cause confusion,

- 18-


mistake and deception, have caused and will continue to cause irreparable injury to Plaintiff and

damage to his ability to sell his music and movies and his public persona in the future.



108. Plaintiff is entitled to injunctive, monetary and other relief pursuant to the

common law of New York.

Count IV - Common Law Unfair Competition (against all Defendants)

(Violation of New York Unfair Competition Law)


110. Defendants have misappropriated Plaintiff's distinctive SANTO GOLD mark.

111. Defendants' bad faith use of the name and mark SANTOGOLD capitalizes upon

and is intended to capitalize upon the goodwill and reputation of Plaintiff and Plaintiffs Mark,

including his labor and expenditures in connection therewith.

112. Defendants' use of the name and mark SANTOGOLD complained of above

usurps, dilutes and otherwise injures and prejudices Plaintiff by exploiting, without

authorization, the recognition and name value associated with Plaintiffs Mark, thus constituting

unfair competition under the common law of the State of New York.

113. Defendants' acts of unfair competition complained of herein, which upon

information and belief have been done willfi.illy, have caused and will continue to cause

irreparable injury and damage to Plaintiff and his ability to sell his music and movies and his

public persona in the future.



-19-


115. Plaintiff is entitled to injunctive, monetary and other relief pursuant to the

common law of New York.

Count V - Use of Name With Intent to Deceive (against all Defendants)

(Violation of Section 133 of the General Business Laws of New York)


117. As described above, Defendants are using, for purposes of advertising, trade and

commercial advantage the name and designation SANTOGOLD, which will deceive and mislead

the public as to Defendant White's identity and as to Defendants' lack of any connection to

Plaintiff.

118. Defendants' use of the name and designation SANTOGOLD is a violation of

Section 133 of the New York General Business Law and such use has caused and will continue

to cause irreparable injury and damage to Plaintiff and his ability to sell his music and movies

and his public persona in the future.


for which Plaintiff has no adequate remedy at law.

120. The use and continued use by Defendants of any name or mark featuring SANTO

GOLD or SANTOGOLD, or any similar mark, is deceptive, misleading and illegal and is

without the authority or consent of Plaintiff.

121. Plaintiff is entitled to injunctive relief prohibiting further violation of Section 133

of General Business Law of New York, as well as monetary relief in an amount to be

determined at trial.

Count VI— Right of Privacy/Publicity (against all Defendants)

(Violation of New York Civil Rights Law Sections SO, 51)

-20 -



123. Defendants' use of the name SANTOGOLD, including the Record Label

Defendants' use of such name on the cover over Defendant White's two CDs, constitutes the use

of Plaintiff's name for advertising purposes and/or for the purposes of trade without Plaintiffs

prior written consent in violation of N.Y. Civil Rights Law §§ 50 and 51.

124. By reason of Defendants' actions, Plaintiff has sustained and will continue to

sustain injury, loss and damage, including to his ability to sell his music and movies and his

public persona in the future.

125. Unless Defendants are restrained from continuing such conduct, Plaintiff will

suffer irreparable injury. Plaintiff has no adequate remedy at law for these injuries. Moreover,

unless Defendants are restrained by this Court from continuing to use the SANTOGOLD name

in connection with Defendant White's album sales and performances, these injuries will continue

to occur.

126. Defendants' violation of N.Y. Civil Rights Law §§ 50 and 51 entitles Plaintiff to

injunctive relief, as well as damages in an amount to be proven at trial.

127. Such use by Defendants of Plaintiffs name was done knowingly, justifying an

additional award of exemplary damages a nst Defendants.

Count VII — Right of Privacy/Publicity (against 11)1 Defendants Pentz and Mad Decent)

(Violation of New York Civil Rights Law Sections 50,51)


129. The unauthorized use by Defendants Pentz and Mad Decent of Plaintiff's voice

on the "Top Ranking Santo Gold" CD for the purposes of trade is a violation of N.Y. Civil

Rights Law §§ 50 and 51.

-21 -


130. The unauthorized use of Plaintiff's voice is confusing the public into believing

that Plaintiff endorses or is somehow affiliated with Defendant White and her music.

131. Defendants' violation of N.Y. Civil Rights Law §§ 50 and 51 entitles Plaintiff to

injunctive relief, including recall, destruction and a ban on all sales by Defendants of any

recordings of Plaintiffs voice or music, as well as damages in an amount to be proven at trial.

132. Such use by Defendants of Plaintiff's name was done knowingly, justifying an

additional award of exemplary damages against Defendants.

Count VIII- (Violation of N.Y. General Business Law 4 3604) (against all Defendants)


134. Plaintiff is the owner of the distinctive SANTO GOLD name and mark.

135. SANTO GOLD functions as a business name or mark by which Plaintiff and his

film, music and television work are well-known.

136. Defendants' use of the name SANTOGOLD in connection with the sale of music

her performances and her ad campaign for a non-existent "SANTOGOLD THE MOVIE"

misappropriates Plaintiffs name and is injuring to his ability to market his music, movies and his

public persona in the future in violation of N.Y. General Business Law §360-/.

137. By reason of Defendants' actions, Plaintiff is entitled to injunctive relief and such

other relief permitted by law.

WHEREFORE, Plaintiff requests the Court for judgment and an Order as follows:

A. Enjoining Defendants and their officers, agents, servants, employees, and

attorneys, and all others acting in active concert or participation therewith who receive actual

notice, from using as or as part of any trademark, service mark, trade name, company name,

corporate name, domain name or other indicia of origin the names SANTO GOLD,

- 22 -


SANTOGOLD or any other trademark, service mark, trade name, company name, corporate

name, domain name or other indicia of origin that includes the terms SANTO GOLD,

SANTOGOLD or is confusingly similar thereto;

B. Directing Defendants to provide an accounting of all revenues and profits derived

from its activity under the name or mark SANTOGOLD or any other name, mark or domain

name that includes the words SANTO GOLD;

C. Directing the forfeiture, cancellation or transfer to Plaintiff of any

SANTOGOLD-related domain names held, registered or used by Defendants or their licensees or

assigns;

D. Directing the USPTO to refuse of Defendant White's pending trademark

application for the Santogold name;

E. Directing the recall, destruction and ordering a ban on all sales by Defendants of

any unauthorized recordings containing Plaintiffs voice or music;

F. Awarding Plaintiff: (i) Defendants' profits arising from Defendants'

aforementioned infringing or otherwise improper activities; (ii) the damages sustained by

Plaintiff as a result of these infringing, unfair, deceptive or other activities in violation of federal

or state law, which damages should be trebled by reason of Defendants' willfulness; and (iii) the

costs in association with this action, as this Court may determine to be fair and appropriate

pursuant to Section 35(a) of the Lanham Act, 15 U.S.C. § 1117(a);

G. Declaring that Defendants' willful acts of infringement, unfair competition and

deception, make this an exceptional case within the meaning of Section 35(a) of the Lanham Act,

15 U.S.C. § 1117(a) and awarding to Plaintiff treble damages and its reasonable attorneys' fees;

H. Awarding Plaintiff exemplary damages in an amount to be determined at trial; and

-23 -

L-8209)


I. Awarding to Plaintiff such other and further relief as the Court deems just and

proper.

Dated: New York, New York September 5, 2008


THE LUSTIGMAN FIRM, P.C.

Andrew B. Lustigm Scott Shaffer (SS-6560) Jill L. Abitbol (JA-9112)

By: eZtt

149 Madison Avenue, Suite 805 New York, New York 10016 Tel: (212) 683-9180 Fax: (212) 683.9181

Attorneys for Plaintiff

-24-


JURY TRIAL DEMANDED

Plaintiff hereby demands a trial by jury on all claims so triable.



THE LUSTIGMAN FIRM, P.C.

By: SCR Andrew B. Lusti (AL-8209) Scott Shaffer (SS-6560) Jill L. Abitbol (JA-9112)

149 Madison Avenue, Suite 805 New York, New York 10016 Tel: (212) 683-9180 Fax: (212) 683.9181

Attorneys for Plaintiff

-25-


UNITED STAIES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

SANTO RIGATUSO a/kla SANTO GOLD, Civil Action No. 08 Civ. 5475

Plaintiff, ANSWER OF SANTI WHITE TO

-against- AMENDED COMPLAINT OF SANTO RIGATUSO a/k/a SANTO GOLD

SANTI WHITE a/k/a SANTOGOLD, DOWNTOWN MUSIC, L.L.C., MAD DECENT RECORDS, WESLEY PENTZ aAcJa DIPLO, LIZARD KING RECORDS, INC., and LIZARD KING RECORDS, LTD.,

Defendants.

Defendant Santi White ("White"), by her undersigned attorneys, answers the Amended

Complaint (the "Complaint") of Santo Rigatuso, a/k/a Santo Gold ("Plaintiff") as follows:

I. Denies the allegations set forth in paragraph 1 of the Complaint, except admits

that White has performed as Santogold and that White's vocal performance is embodied in the

musical composition entitled "Creator" and avers that the lyrics speak for themselves.

2. Denies the allegations set forth in paragraph 2 of the Complaint, except denies

knowledge or information sufficient to form a belief as to the truth of the allegations set forth in

the first sentence of paragraph 2 of the Complaint.

3. Denies the allegations set forth in paragraph 3 of the Complaint.

4. Denies the allegations set forth in paragraph 4 of the Complaint, except admits

that correspondence was sent by Plaintiff or on Plaintiffs behalf to White's attorney prior to the

commercial release of the compact disc entitled "Santogold."

5. Denies knowledge or information sufficient to form a belief as to the truth of the

allegations set forth in paragraph 5 of the Complaint insofar as those allegations refer or relate to

1976019.1


other defendants. Insofar as the allegations in paragraph 5 of the Complaint refer or relate to

White, the allegations in paragraph 5 are denied and White denies that the public has been

confused, and denies that Plaintiff's career has been injured.

6. Denies the allegations set forth in paragraph 6 of the Complaint except admits that

White has registered the domain name santogold.net . and that Downtown has licensed certain

music from the "Santogold" compact disc for product advertisements and that White has

performed in public as Santogold.


Plaintiff has filed the instant action and that Plaintiff pm -ports to seek relief set forth in the

Complaint.


Plaintiff purports to seek the relief set forth in the Complaint.


allegations set forth in paragraph 9 of the Complaint.

10. To the extent that paragraph 10 of the Complaint sets forth legal conclusions,

those allegations do not require a response. To the extent that paragraph 10 of the Complaint

sets forth any factual allegations, White denies those allegations except admits that White is a

resident of Brooklyn, New York, that she has performed music in New York and elsewhere as

Santogold and that she performed on a compact disc entitled "Santogold" released by Downtown

Music, LLC in April of 2008.



2

1976019.1










16. States that paragraph 16 of the Complaint sets forth legal conclusions that do not

require a response.


allegations set forth in paragraph 17 of the Complaint and, to the extent that paragraph 17 of the

Complaint sets forth legal conclusions, those allegations do not require a response.


allegations set forth in paragraph 18 of the Complaint to the extent that those allegations refer or

relate to defendants other than White, and to the extent that paragraph 18 of the Complaint sets

forth legal conclusions, those allegations do not require a response.




relate to defendants other than White, and to the extent that paragraph 20 of the Complaint sets

forth legal conclusions, those allegations do not require a response.

3

1976019.1



require a response, except admits that Plaintiff alleges that the Court has subject matter

jurisdiction.


require a response, except admits that Plaintiff alleges that the Court has subject matter

jurisdiction.


require a response, except admits that Plaintiff alleges that venue in this Court is proper.




allegations set forth in paragraph 25 of the Complaint, except denies that Plaintiff has common

law rights to the name and mark SANTO GOLD.









4

1976019.1
















37. Denies knowledge or infounation sufficient to form a belief as to the truth of the








5

1976019.1





relate to Plaintiff or defendants other than White. White denies the remaining allegations set

forth in paragraph 42 of the Complaint, except admits that she has performed on the

commercially released compact disc of musical recordings entitled "Santogold" and that she is a

musical recording artist and performer.


that a friend made her aware of an infomercial in or about the 1980s that used the name Santo

Gold in connection with the sale of cheap gold jewelry.

44. Admits the allegations set forth in paragraph 44 of the Complaint to the extent

that she conducted the interview alleged therein and avers that the content of the interview,

which is available for Internet viewing, speaks for itself.


allegations set forth in paragraph 45 of the Complaint as to the location and availability of the

interview and denies the remaining allegations of paragraph 45 except admits that White stated

that a friend of hers made up the name Santogold that her friend got from an infomercial for

cheap gold.

46. Admits the allegations set forth in paragraph 46 of the Complaint except denies

that giving notice to Plaintiff was necessary.

47. Admits that White's attorney filed a trademark application on her behalf for the

trademark SANTOGOLD and avers the document is a writing and that it speaks for itself.

6

1976019.1



49. Denies the allegations set forth in paragraph 49 of the Complaint except admits

that the trademark application for SANTOGOLD lists the date of first as April 22,2007 in

connection with entertainment services, namely live performances by a musical recording artist.


allegations set forth in paragraph 50 of the Complaint, except that to the extent that the

allegations in paragraph 50 set forth legal conclusions, those allegations do not require a

response.


allegations set forth in paragraph 51 of the Complaint, except admits that White's attorney, Scott

Mason, received correspondence from Plaintiff requesting that White cease and desist all uses of

the name Santogold and denies that Plaintiff has any rights in the SANTO GOLD mark.



allegations set forth in paragraph 53 of the Complaint, except admits that correspondence was

sent by Plaintiff or on Plaintiffs behalf to Scott Mason dated April 1, 2008 purporting to request

that White stop using the name Santogold.


that White did not contact the USPTO to advise of the correspondence sent by Plaintiff or on his

behalf and White denies that Plaintiff has any rights in the SANTO GOLD mark.


that White publicly appeared and performed on television as Santogold on or about April 28,

7

1976019.1


2008 after her attorney received cOrrespondence from Plaintiff and denies that Plaintiff has any

rights in the SANTO GOLD mark and denies that White's use of the name Santogold infringes

any purported rights of Plaintiff.


that Downtown Music, LLC released the "Santogold" compact disc in April of 2008, and admits

that the release of the compact disc occurred after White's attorney received correspondence

from Plaintiff and denies that use of the name Santogold by White infringes any purported rights

of Plaintiff.



relate to Plaintiff or defendants other than White, except admits that correspondence was sent to

Scott Mason and Damien Granderson by Plaintiff or on Plaintiff's behalf dated May 1, 2008

purporting to request that White stop using the name Santogold, except denies that such use

infringes any purported rights of Plaintiff.


that White has rejected Plaintiff's demands to cease utilization of the name Santogold and denies

that Plaintiff has any tights in the SANTO GOLD mark.


allegations set forth in paragraph 59 of the Complaint, except admits that White continues to

appear in public as Santogold.

60. Admits the allegations set forth in paragraph 60 of the Complaint


8

19.76919.1



the compact disc entitled "Santogold" is available for sale commercially and that White's music

can be heard in connection with live performances and product advertisements.





allegations set forth in paragraph 66 of the Complaint insofar as those allegations refer or relate

to other defendants. Insofar as the allegations in paragraph 66 relate to White, she denies those

allegations.


allegations set forth in paragraph 67 of the Complaint insofar as those allegations refer or relate

to other defendants, except denies that White benefits from any commercial use and sales of the

Top Ranking Santo Gold CD.






require a response. To the extent that paragraph 70 sets forth any factual allegations, White

denies those allegations, except denies knowledge or information sufficient to form a belief as to

9

1976019.1

•

Case 1:08 -cv-05475 -RJS Document 12 Filed 09/29/08 Page 10 of 22

the truth of the allegations set forth in paragraph 70 of the Complaint to the extent that those

allegations relate or refer to Plaintiff.



71 Denies the allegations set forth in paragraph 73 of the Complaint.





allegations set forth in paragraph 76 of the Complaint, except denies that Plaintiff has rights in

the SANTO GOLD mark, denies that White's use of the name Santogold requires Plaintiffs

authorization and denies that Plaintiffs "presence on the Internet has become hopelessly

entangled and confused with Defendant White."


78. In response to paragraph 78 of the Complaint, repeats and realleges her responses

to all prior paragraphs as if fully set forth herein.



denies those allegations.




10

1976019,1








require a response. To the extent that paragraph 84 of the Complaint sets forth any factual

allegations, White denies knowledge or information sufficient to form a belief as to the truth of

the allegations set forth in paragraph 84 of the Complaint insofar as those allegations relate to

other defendants. To the extent that the allegations in paragraph 84 of the Complaint refer or

relate to White, those allegations are denied.









denies those allegations and specifically denies that Plaintiff has suffered any injury or damage

as a result of White's actions.

11

1976019.1














92. In response to paragraph 92 of the Complaint, repeats and realleges her responses

to all prior paragraphs as if fully set forth herein.

93. White denies the allegations set forth in paragraph 93 of the Complaint, except

admits that she has registered the domain names ww santogold.net ,

www.ibelieveinsantogold.com and admits that Lizard King Records, Ltd. has registered the

domain names www.santogold.info, www.santogold.us , vvww.santogold.eu and

www.santogold.co.uk and denies that the domain names are infringing and denies that Plaintiff

has trademark rights in SANTO GOLD.



12

19760191



that she has registered the domain names vvww.santogold.net , www.ibelieveinsantogold.com and

admits that Lizard King Records, Ltd. has registered the domain names www.santogold.info,

www.santogold.us , www.santogold.eu and www.santogold.co.uk and denies that these domain

names are confusingly similar to Plaintiffs Mark or to his website vvvv -w.santogold.com and

denies that Plaintiff has trademark rights in SANTO GOLD.














102. In response to paragraph 102 of the Complaint, repeats and realleges her

responses to all prior paragraphs as if fully set forth herein.


13

1976019.1






















14

1976019.1














that defendants lack any connection to Plaintiff.










15

1976019.1









denies those allegations and specifically denies any affiliation with a second Santi White

compact disc.













16

1976019.1




129. No response is required on the part of White to the allegations set forth in

paragraph 129 of the Complaint inasmuch as this paragraph is not alleged against it. To the

extent that any response is required by virtue of the incorporation by reference of this paragraph

in subsequent allegations or causes of action set forth in the Complaint, White states that

paragraph 129 of the Complaint sets forth legal conclusions that do not require a response. To

the extent that paragraph 129 sets forth any factual allegations, White denies knowledge or

information sufficient to form a belief as to the truth of the allegations set forth in paragraph 129

of the Complaint.




in subsequent allegations or causes of action set forth in the Complaint, White denies the


131. No response is required on the part of White to the allegations set forth


extent that any response is required by virtue of the incorporation by reference of this pare iaph



the extent that paragraph 131 sets forth any factual allegations, White denies those allegations.

17

1976019J







the extent that paragraph 132 sets forth any factual allegations, White denies those allegations.








137. States that par: i aph 137 of the Complaint sets forth legal conclusions that do not



YE AND 01 HER DEFENSES

FIRST DEFENSE

138. The Complaint, in whole or in part, fails to state a claim upon which relief can be

granted.

18

1976019.1


SECOND DEFENSE

139. The Complaint, in whole or in part, is barred, precluded, and /or limited by the

statute of limitations.

THIRD DEFENSE

140. The Complaint, in whole or in part, is barred, precluded and/or limited by the

doctrines of laches, waiver and estoppel.

FOURTH DEFENSE

141. The Complaint, in whole or in part, is barred by the doctrine of unclean hands.

FIFTH DEFENSE

142. The Complaint fails, in whole or in part, because Plaintiff seeks relief based upon

a fictitious character.

SIXTH DEFENSE

143. The Complaint fails, in whole or in part, because there is no likelihood of

consumer confusion.

SEVENTH DEFENSE

144. The Complaint fails, in whole or in part, because there is no actual consumer

confusion.

EIGHTH DEFENSE

145. The Complaint fails, in whole or in part, because the Plaintiff has abandoned any

rights or claims in any alleged trademark.

19

1976019.1


NINTH DEFENSE

146_ The Complaint fails, in whole or in part, because the Plaintiffs alleged trademark

lacks secondary meaning.

TENTH DEFENSE

147. The Complaint fails, in whole or in part, because Plaintiff does not have priority

of use of the alleged trademark SANTO GOLD.

ELEVENTH DEFENSE

148. The Complaint fails, in whole or in part, because Plaintiff has no trademark rights

in the name SANTO GOLD.

TWELFTH DEFENSE

149. The Complaint fails, in whole or in part, because Plaintiffs alleged trademark is

not famous or distinctive.

THIRTEENTH DEFENSE

150. The Complaint fails, in whole or in part, because the allegedly infringed mark is

not being used as a trademark.

FOURTEENTH DEFENSE

151. Plaintiff has failed to mitigate his damages, if any, as required by law.

WHEREFORE, Defendant White prays for judgment against Plaintiff as follows:

That the Complaint and each and every purported claim therein be dismissed with

prejudice;

20

1976019i


2. That the Court award White her reasonable attorneys' fees and costs incurred in

connection herewith; and

That the Court grant White such other and further relief as the Court may deem

just and proper.


MITCHELL SILBERBERG & KNUPP LLP

By:

Christ e Lepera Howard H. Weller 12 East 49th Street, 30th Floor New York, New York 10017-1028 Telephone: (917)546-7707 Facsimile: (917) 546-7677

Attorneys for Defendants Santi White a/lea Santo gold, Downtown Music, LLC, Lizard King Records, Inc. and Lizard King Records. Ltd

21

1976019.1

NOTARY PUBLIC

Case 1:08-cv-05475-RJS Document 12 Filed 09/29/08 Page 22 of 22 AFFIDAVIT OF SERVICE

STATE OF NEW YORK SS.:

COUNTY OF NEW YORK

Diane Collins, being duly sworn, deposes and says:

1. I am not a party to this action, am over the age of 18 and reside at 3122 Town

Court South, Lawrenceville, NJ 08648.

2. On September 26, 2008,1 served a copy of an Answer of Downtown Music, LLC

to Amended Complaint of Santo Rigatuso a/lea Santo Gold; a copy of an Answer of Lizard King

Records, Inc. and Lizard King Records, Ltd. To Amended Complaint of Santo Rigatuso a/k/a

Santo Gold; and a copy of an Answer of Santi White to Amended Complaint of Santo Rigatuso

a/k/a SantoGold by e-mail upon:

Jill L. Abitbol, Of Counsel for Plaintiff The Lustigman Firm, P.C. 149 Madison Avenue, Suite 805 New York, NY 10016 email: [email protected]

Scott Shaffer, Attorney for Plaintiff The Lustigman Firm, P.C. 149 Madison Avenue, Suite 805 New York, NY 10016 email: [email protected]

Andrew B. Lustigman, Attorney for Plaintiff The Lustigman Firm, P.C. 149 Madison Avenue, Suite 805 New York, NY 10016 email: [email protected]

an to before me this -"Nlay of September, 2008.

ALESSANDRA LOVREN NOTARY PUESUC, STATE OF NEW YORK NO. 31-4981830 QUALIFIED IN NEW YORK COUNTY I I COMMISSION EXPIRES MAY 20, 20 a!

Case 1:12-cv-05483-JMF Document 1 Filed 07/17/12 Page 1 of 16

JUDGE FURMAN UNITED STATES ES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

ACTION FRONT UNLIMITED, INC.,

Plaintiff;

-against-

12 cIT 5483 Civi Ac ion No.

EDWARD KOWALCZYK, : Jury T

Defendant.

Plaintiff Action Front Unlimited, Inc. ("Plaintiff'), by and throu

attorneys, as and for its Complaint against Defendant Edward Kowalczyk ("Kowalczyk" or

"Defendant"), alleges with personal knowledge as to its own acts and upon information and

belief as to the acts of others, as follows:

STATEMENT OF THE CASE

Plaintiff is a corporation which furnishes the services of the popular and highly

successful rock band named "LIVE." Plaintiff owns numerous federally registered trademarks in

the name "LIVE" (hereafter, the "LIVE Marks"). Since 1991, tens of millions of albums,

hundreds of thousands of concert tickets, and related merchandise such as T-shirts and posters

have all been promoted and sold under the LIVE Marks pursuant to Plaintiffs license and

authorization.

2. Plaintiff brings this action to seek redress for the continuing willful infringements

of the LIVE Marks by the former lead singer of LIVE, Defendant Kowalczyk. Plaintiff seeks a

permanent injunction, damages, and attorney's fees from Kowalczyk for his improper efforts to

confuse consumers and wrongfully profit from Plaintiffs goodwill in the LIVE Marks.

4732459.2/42993-00001


3. Specifically, Kowalczyk is advertising and otherwise promoting his musical

performances at venues nationwide under the infringing name and mark "ED KOWALCZYK

OF LIVE" (and/or similar names and marks). By virtue of this conduct, Defendant seeks to

mislead both concert promoters and the general public into wrongly believing that his musical

performances are affiliated with, or indeed feature, the band LIVE.

4. Pointedly, the web site of Kowalczyk's booking agent, the Paradigm Talent

Agency, sets forth Kowalczyk's name on its "Artist Roster" as "ED KOWALCZYK OF LIVE."

The word "LIVE" is displayed in Defendant's infringing name and mark on the Paradigm

website and in other promotional materials for Defendant's performances in the same font size,

typeface and color as the words "ED KOWALCZYK". Importantly, these promotional materials

do not contain any disclaimer language that would make clear to consumers that Defendant is no

longer a member of LIVE and no longer has any affiliation with that band.

5. Kowalczyk's unlawful use of the infringing name and mark "ED KOWALCZYK

OF LIVE" has caused and is causing consumers to be deceived into believing that Plaintiff is

associated with Defendant's solo musical performances, and that these performances derive from

the same source or sponsor as Plaintiff or are otherwise endorsed by the Plaintiff. Unless these

acts of infringement are enjoined, they will continue to cause irreparable harm to the hard-earned

and invaluable reputation and goodwill of Plaintiff and the LIVE Marks.

PARTIES

6. Plaintiff Action Front Unlimited, Inc. is a corporation organized and existing

under the laws of Maryland. Action Front Unlimited, Inc. furnishes the services of the

enormously successful rock band known as "LIVE".

2 4732459.2142993-00001


7. Defendant Edward Kowalczyk ("Kowalczyk") is a professional musician and

songwriter, and a citizen of the State of California.

JURISDICTION AND VENUE

8. This Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and 1338(a)

and 15 U.S.C. § 1121(a) as this action arises under the United States trademark laws, and under

28 U.S.C. § 1367 with respect to the pendant state law claims.

9. This Court has personal jurisdiction over Defendant pursuant to New York Civil

Practice Law and Rules §§ 301 and 302 because he is doing business in the State of New York,

has engaged in acts in violation of Plaintiff's rights in the State of New York, and has been and is

causing injury to Plaintiff in the State of New York.

10. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2)

because a substantial part of the events giving rise to the claims herein occurred in this judicial

district.

STATEMENT OF FACTS

A. Plaintiff's Development of the LIVE Marks

11. Nonparties Patrick Dahlheimer ("Dahlheimer"), Chad Gracey ("Gracey"),

Chad Taylor ("Taylor") and Defendant Kowalczyk (hereafter collectively, the "Band Members")

grew up together in the small town of York, Pennsylvania in the 1980s. While they were still in

school, these four friends began playing together as a rock group under the name "Public

Affection." In the late 1980s, the Band Members obtained a devoted fan base throughout the

East Coast thanks to their well-attended live performances and popular, self-distributed

recordings.

12. In or about 1989, the Band Members formed a company, Plaintiff Action

Front Unlimited, Inc., to furnish their services as a rock band. At all times since its

3 4732459.2/42993-00001


incorporation, each of the four Band Members has been a 25% shareholder and director of the

Plaintiff Taylor has served as the president of Plaintiff at all times.

13. In or about October of 1989, each of the four Band Members, including

Kowalczyk, signed his own Employment Agreement with the Plaintiff. Pursuant to the terms of

these Employment Agreements, each of the Band Members, including Kowalczyk, weed to

render to Plaintiff "all services. . . usually and customarily rendered by and required of persons

in . . . fields of the entertainment industry" and granted to Plaintiff all intellectual property rights

in all "results and proceeds" of that Band Member's services under the Employment Agreement,

including but not limited to trademark rights.

14. In or about 1991, the Band Members changed the name of their band from

"Public Affection" to "LIVE," and under the terms of their Employment Agreements thereby

assigned all trademark rights in the name "LIVE" to the Plaintiff. At all material times,

Kowalczyk has known that these trademark rights in the name "LIVE" are solely owned by the

Plaintiff, and that Kowalczyk personally does not hold any trademark rights in that name.

15. In 1991, the Plaintiff signed a recording agreement with Radioactive

Records, pursuant to which the Plaintiff furnished the Band Members' services to that label.

Between the years 1991 and 2006, seven highly successful albums were released (six on

Radioactive Records and one on Epic Records) that featured recordings of the Band Members

performing together under the Plaintiff's name and mark "LIVE." These seven albums have sold

many millions of copies worldwide, and featured numerous smash hit singles, including

"Lakini's Juice", "Lightning Crashes", "Selling The Drama", and "All Over You".

16. Throughout the past two decades, the Band Members have successfully

toured the United States as well as the rest of the world, regularly giving musical performances

4 4732459.2/42993-00001


to large audiences at stadiums, arenas and other major venues under the name and mark "LIVE"

pursuant to license granted by the Plaintiff.

17. Throughout the past two decades, the Plaintiff has also authorized the sale

oft-shirts and other apparel bearing the LIVE brand and name, as well as LIVE posters and other

LIVE branded merchandise. This merchandise has been sold and distributed at LIVE musical

performances and elsewhere.

18. Additionally, Plaintiff has endeavored over the years to ensure that the

LIVE brand has an active presence on the Internet. In the mid-1990s, Plaintiff acquired the

<friendsoflive.com> domain name and has operated a website at this Internet address since at

least as early as 1998. Plaintiff also currently operates a website at the Internet address

<freaks4live.com>. The LIVE brand is prominently featured on these websites and has been so

featured at all points in time.

19. Plaintiff uses its <friendsoflive.com > and <frealcs4live.com > websites to

advertise and promote LIVE CDs and DVDs. These websites also permits consumers to

purchase LIVE branded merchandise such as t-shirts, caps, necklaces, stickers, posters and other

related items.

B. Plaintiff's Registration of the LIVE Marks

20, Plaintiff owns the following United States trademark registrations issued on the

Principal Register (collectively, the "LIVE Marks"):

Mark Reg. No. Reg. Date Goods and Services

LIVE 2,246,963 5/25/1995 Paper goods and printed matter, namely, posters, decals, bumper stickers, and trading cards.

LIVE 2,119,640 12/9/1997 Entertainment services, namely live performances by a musical group.

5 4732459.2/42993-00001


LIVE 2,116,106 11/25/1997 Clothing, namely T-shirts, sweatshirts, caps, hats, tank tops and jackets.

LIVE 2,119,639 12/9/1997 Phonograph records, compact discs, pre-recorded videotapes containing musical performances, and pre-recorded audiotapes and cassettes containing musical performances.

21. In accordance with Sections 7(b), 22 and 33(a) of the Lanham Trademark Act,

Plaintiffs above-cited registrations constitute prima facie evidence of the validity of such

registered marks and of the registrations thereof, Plaintiff's ownership of the marks shown in

said registrations, and Plaintiffs exclusive right to use the marks in commerce in connection

with the goods and services named therein, without condition or limitation. The foregoing

registrations have each achieved incontestable status pursuant to 15 U.S.C. § 1065.

22. As set forth above, Plaintiff has devoted, and continues to devote, significant

resources toward ensuring the high quality of Plaintiffs products and services displaying the

LIVE Marks.

23. Through its efforts over the past two decades, Plaintiff has established a strong

consumer base and is known throughout its market as a provider of high quality entertainment

goods, and services. By virtue of the quality of its products and services, and as a result of its

expenditure of considerable sums of money on advertising and promotion, Plaintiff has built up

valuable goodwill in the LIVE Marks. These LIVE Marks are of immeasurable value to

Plaintiff.

C. Defendant's Infringing Use of the LIVE Marks

24. In late 2009, Dahlheimer, Gracey and Taylor — who collectively hold 75% of the

shares of Plaintiff— elected to remove Kowalczyk from the band LIVE as a result of certain

disagreements between him and the other Band Members.

6 4732459.2/42993-00001


25. After his departure from the band LIVE, Kowalczyk embarked on a nationwide

musical tour of concert venues.

26. Despite his knowledge of Plaintiff's exclusive rights in the LIVE Marks,

Defendant has elected to tour and perform throughout the United States and abroad under the

infringing name and mark "ED KOWALCZYK OF LIVE" (and/or similar names and marks).

Indeed, the Defendant's name is listed in the "Artist Roster" on the website of his booking agent,

the Paradigm Talent Agency, as "ED KOWALCZYK OF LIVE."

27. In Defendant's infringing mark, the word "LIVE" is displayed with equal

prominence — i.e., in the same font size, typeface and color — as the words "ED KOWALCZYK".

28. Kowalczyk utilizes this infringing name and mark extensively throughout his

promotional materials for his musical performances, and has encouraged concert promoters to

advertise his shows with this same infringing name and mark.

29. The promotional materials for Defendant's concert performances do not inform

consumers that Kowalczyk is no longer a member of LIVE. Nor do these materials contain any

other language of disclaimer that would inform consumers that Defendant's musical

performances are in no way sponsored by or affiliated with the band LIVE.

D. Effect of Defendant's Unlawful Use of Plaintiff's Trademarks

30. Through his unlawful use of the LIVE Marks, Kowalczyk seeks to cause, has

caused, and is causing consumers, including booking agents, theaters, arenas and the press, in

addition to the general public, to be deceived into believing that Defendant's musical

performances either originate with Plaintiff as the source, or are otherwise sponsored or endorsed

by Plaintiff.

7 4732459.2/42993-00001


31. Defendant's musical performances are sold to the same market of consumers that

is the target population of Plaintiff's musical performances and are offered through the same

channels of trade.

32. Plaintiff has no control over the quality of the Defendant's musical performances.

As a consequence, the favorable reputation and goodwill that Plaintiff has developed in its

valuable LIVE Marks is in jeopardy as a result of Defendant's use of those marks.

33. Defendant's use of the LIVE Marks has resulted in actual confusion and will

certainly continue to result in widespread consumer confusion as to the source, affiliation,

connection or association of Defendant's musical performances with Plaintiff.

34. Plaintiff has suffered and will continue to suffer irreparable harm to its invaluable

LIVE Marks as a result of Defendant's use of them in connection with his musical performances.

COUNT Trademark Infringement Of Federal

Trademarks Pursuant to 15 U.S.C. § 1114(1)

35.. Plaintiff restates and incorporates by reference the allegations continued in

paragraphs 1 through 34 as if fully stated herein.

36. Plaintiff holds valid federal trademark registrations for the mark LIVE on the

Principal Register for paper goods and printed matter, entertainment services, clothing,

phonograph records, compact discs, pre-recorded videotapes containing musical performances,

and pre-recorded audiotapes and cassettes containing musical performances (collectively,

Plaintiff's "LIVE Marks").

37. Defendant is using the LIVE Marks in connection with the promotion of

Defendant's musical performances.

38. Plaintiff has never authorized Defendant to use the LIVE Marks in connection

with Defendant's musical performances or otherwise.

8 4732459.2/42993-00001


39. Plaintiff has priority over Defendant by virtue of its use of the LIVE Marks prior

to Defendant's date of first use of them.

40. Defendant is using the LIVE Marks to promote the same or similar goods and

services offered by Plaintiff in connection with the LIVE Marks.

41. Consumers are likely to see Defendant's use of the LIVE Marks in connection

with Defendant's musical performances as related to, affiliated with, or sponsored by Plaintiff.

42. Plaintiff has no control over the quality of the services that Defendant provides

under the LIVE Marks. As a consequence, the favorable goodwill that Plaintiff has developed in

its valuable LIVE Marks is at risk as a result of Defendant's use of the LIVE Marks to promote

Defendant's musical performances.

43. Defendant advertises his services to the same consumers and sells his services

through the same channels of trade as Plaintiff.

44. Defendant's use of the LIVE Marks has caused actual confusion and is likely to

continue to cause confusion, or to cause mistake or to deceive the relevant consuming public as

to the source, affiliation, connection or association of Defendant's musical performances with

Plaintiff.

45. Defendant's infringement of Plaintiff's LIVE Marks to cause confusion, mistake

and deception has been knowing, willful, intentional and deliberate.

46. Plaintiff has suffered and will continue to suffer irreparable harm, as a result of

Defendant's use of the LIVE Marks for his musical performances. Unless enjoined by the Court,

Defendant will continue to infringe Plaintiff's LIVE Marks and to cause confusion, mistake, and

deception, thereby causing immediate and irreparable injury to Plaintiff.

47. Plaintiff has no adequate remedy at law.

9 4732459.2/42993-00001


48. Plaintiff is entitled to an injunction restraining Defendant, his agents and

employees, and all persons acting in concert with any one or more of them, from engaging in any

of the foregoing acts or any further or different acts in violation of Plaintiff's LIVE Marks under

Section 32 of the Lanham Act, 15 U.S.C. § 1114, pursuant to Section 34 of the Act, 15 U.S.C. §

1116.

49. Plaintiff is entitled to recover statutory damages under Section 35(c) of the

Lanham Act, 15 U.S.C. § 1117(c), based upon Defendant's unauthorized use of Plaintiff's LIVE

Marks.

50. Plaintiff has suffered damages as a proximate result of Defendant's infringing acts

and is entitled to recover Defendant's profits attributable to his acts of infringement, along with

treble damages, statutory damages, costs and reasonable attorneys' fees, pursuant to 15 U.S.C. §

1117(a).

51. Plaintiff is entitled to an order requiring the seizure and destruction of all

infringing labels, signs, packages, advertisements, negatives or other materials that violate

Plaintiff's rights under Section 32 of the Lanham Act, 15 U.S.C. § 1115, pursuant to 15 U.S.C. §

1118.

COUNT II False Designation of Origin

Pursuant to 15 U.S.C. § 1125(a)

52. Plaintiff restates and incorporates by reference the allegations continued in

paragraphs 1 through 51 as if fully stated herein.

53. Defendant has used Plaintiff's LIVE Marks without authorization in connection

with the advertising of Defendant's musical performances.

54. The services that Defendant is promoting with the LIVE Marks are identical or

related to Plaintiff's goods and services offered under those marks.

10 4732459.2/42993-00001


55. Plaintiff has no control over the quality of the services that Defendant provides in

connection with the Plaintiff's LIVE Marks. As a consequence, the favorable goodwill that

Plaintiff has developed in its valuable LIVE Marks is at risk as a result of Defendant's use of the

LIVE Marks.

56. Defendant advertise his services to the same consumers and sells his services

through the same channels of trade as Plaintiff.

57. Defendant's actions constitute false designation of origin which are likely to

cause confusion, mistake or deception among consumers as to Defendant's musical

performances' supposed affiliation, connection or association with Plaintiff, and to give the false

or misleading impression as to the origin, sponsorship or approval of Defendant's musical

performances, in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a)(1).

58. Defendant's violations of Section 43(a) of the Lanham Act have been and are

knowing, willful, intentional and deliberate.

59. Unless enjoined by the Court, Defendant will continue to violate Plaintiff's rights

and to cause confusion, mistake and deception, thereby causing immediate and irreparable injury

to Plaintiff.




of the foregoing acts pursuant to Section 34 of the Act, 15 U.S.C. § 1116.



damages, costs and reasonable attorneys' fees, pursuant to 15 U.S.C. § 1117(a).

11 4732459.2/42993-00001





1118.

COUNT III (Federal Trademark Dilution Pursuant to Trademark Dilution Revision Act of 2006

15 U.S.C. 1125(c)) Dilution by Tarnishment

64. Plaintiff restates and incorporates by reference the allegations contained in

paragraphs 1 through 63 above as if fully stated herein.

65. As a result of among other things, Plaintiffs continuous and substantial use, and

extensive advertising, promotion and publicity of Plaintiffs LIVE Marks, such Marks have

become distinctive and famous, long prior to the unlawful acts of Defendant complained of

herein.

66. Defendant's unauthorized use of Plaintiffs LIVE Marks have or threaten to

tarnish Plaintiffs LIVE Marks.

67. Defendant's violations of Section 43(c) of the Lanham Act have been and are


68. Defendant's acts of trademark dilution as set forth above, have caused, and unless

restrained and enjoined by this Court, will continue to cause irreparable injury and damage to

Plaintiff.

69. Defendant will continue such acts unless enjoined by this Court.




12 4732459.2/42993-00001








1118.

COUNT IV (Federal Trademark Dilution Pursuant to Trademark Dilution Revision Act of 2006

15 U.S.C. § 1125(c)) Dilution by Blurring

73, Plaintiff restates and incorporates by reference the allegations contained in


74. This claim is for trademark dilution under 15 U.S.C. § 1125(c).

75. As a result of among other things, Plaintiff's continuous and substantial use, and

extensive advertising, promotion and publicity of Plaintiff's LIVE Marks, such Marks have


herein.

76. Defendant's unauthorized use of the Plaintiffs LIVE Marks in connection with

Defendant's musical performances has blurred the distinctive quality of the Plaintiff's LIVE

Marks, and will continue to blur and impair the distinctive quality of Plaintiffs LIVE Marks.

77. Defendant's violations of Section 43(c) of the Lanham Act have been and are


13 4732459.2/42993-00001




Plaintiff.

79. Defendant will continue such acts unless enjoined by this Court.










1118.

COUNT V (State Trademark Dilution

Pursuant to N.Y. General Business Law 4 360-1)

83. Plaintiff restates and incorporates by reference the allegations contained in


84. As a result of among other things, Plaintiffs continuous and substantial use, and

extensive advertising, promotion and publicity of Plaintiff's LIVE Marks, such Marks have


herein.

85. Defendant's unauthorized use of the LIVE Marks in connection with Defendant's

musical performances has blurred the distinctive quality of the LIVE Marks and has tarnished the

14 4732459.2/42993-00001


reputation of the LIVE Marks, and will continue to blur, tarnish and impair the distinctive quality

of Plaintiff's LIVE Marks and injure Plaintiffs goodwill and business reputation.



Plaintiff. Defendant will continue such acts unless enjoined by this Court.




of the foregoing acts or any further or different acts in violation of New York General Business

Law § 360-1.

WHEREFORE, Plaintiff prays that the Court grant it relief as follows:

1. That Defendant, his respective agents, servants, employees, officers, directors,

successors and assigns, and all those in active concert or participation with him, be permanently

enjoined from:

(a) using in any form or manner the name or mark LIVE; or any other name, trade

name, trademark or service mark consisting, in whole or in part, of the term

LIVE, or any confusingly similar name, trade name, trademark, or service mark,

on or in connection with any musical performance, group or stage show or filming

or recording thereof;

(b) expressly or impliedly representing himself or his goods or services as being

affiliated in any manner with Plaintiff or as authorized, sponsored, or endorsed by

or otherwise connected with Plaintiff;

15 4732459.2/42993-00001


(c) engaging in any conduct which will cause or is likely to cause confusion, mistake

or misunderstanding as to the source, affiliation, connection, or association of

Defendant or his products or services with Plaintiff or its products or services;

(d) otherwise infringing upon the trademark rights of Plaintiff or unfairly competing

with Plaintiff in any manner whatsoever.

2. That the Court enter an order requiring Defendant to engage in corrective

advertising to dispel any confusion that may have been created by Defendant's use of the

trademark LIVE.

3. That the Court find that Defendant's acts complained of herein were done

willfully and with knowledge of Plaintiff's rights and award Plaintiff compensatory damages,

treble damages, prejudgment interest, postjudgment interest, costs, and attorneys' fees.

4. That the Court award Plaintiff the maximum statutory damages of $2,000,000

pursuant to 15 U.S.C. § 1117(c).

5. That the Court award Plaintiff such other relief as this Court deems proper.

DEMAND FOR JURY TRIAL

Plaintiff demands trial by jury of all claims so triable.

DA I LD:New York, New York

MITCHELL SILBERBERG & KNUPP LLP July 17, 2012

By: Christine Lepera

ctl@msk corn Jeffrey M. Movit

jrnm@msk. corn 12 East 49th Street, 30th Floor New York, New York 10017-1028 Telephone: (212) 509-3900 Facsimile: (212) 509-7239 Attorneys for Plaintiff'

16 4732459.2/42993-00001


UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF NEW YORK

ACTION FRONT UNLIMITED, INC., : Civil Action

Plaintiff, : No. :12-cv-05483-.IMF

-against-

EDWARD KOWALCZYK,

Defendant.

DEFENDANT EDWARD KOWALCZYK'S ANSWER, COUNTERCLAIM THIRD-PARTY COMPLAINT AND DEMAND FOR JURY TRIAL

Defendant. plaintiff-in-counterclaim and third-party plaintiff Edward Kowalczyk, by and

through his undersigned attorneys, hereby answers the correspondingly numbered paragraphs of

the Complaint of plaintiff Action Front Unlimited, Inc. ('plaintir), and thereafter asserts

Counterclaims against plaintiff and a Third-Party Complaint against third-party defendants

Patrick Dahlheimer, Chad Gracey and Chad Taylor for their breaches of fiduciary duty, conflicts

of interest. self-dealing and other defalcations.

ANSWER

1. Defendant is without knowledge or information sufficient to form a belief as to

the truth of the allep4ions set forth in this paragraph of the Complaint, as he was wrongfully

removed as a director of plaintiff corporation and has not been kept informed of the activities of

the corporation despite his status as a twenty-five percent (25%) owner thereof, although in so

answering defendant denies that plaintiffs purported license and authorization of third-party

defendants to use the LIVE trademarks (the "LIVE Marks") is valid, proper or legitimate.

2. The allegations set forth in this paragraph of the Complaint state legal conclusions

to which no response is required in this Answer, although in so answering defendant denies that

Case 1 :12-cv-05483-JMF Document 10 Filed 09/04112 Page 2 of 38

he has infringed the LIVE Marks or engaged in any other unlawful or improper conduct, or that

plaintiff is entitled to any relief against him, whether monetary, injunctive or otherwise,

3. Denied.

4. The allegations set forth in this paragraph of the Complaint attempt to

characterize written materials which, in their entirety. speak for themselves. To the extent that

said allegations misstate or mischaracterize the content, substance or import of said materials, or

cite to the same out of context or in a misleading fashion, they are denied. Further answering,

defendant denies that he has utilized any infringing name or mark and that he no longer has any

affiliation with the group professionally known as "LIVE" (the "Group").

5. Denied.


the truth of the allegations set forth in this paragraph of the Complaint, as he was wrongfully

removed as a director of plaintiff corporation and has not been kept informed of the activities of

the corporation despite his status as a twenty-tive percent (25%) owner thereof, although in so

answering, defendant denies that the Group presently is enormously successful.

7. Defendant admits that he is a professional musician and songwriter and that, as of

the date on which the Complaint was filed, he resided in California, and denies any remaining

allegations set forth in this paragraph of the Complaint.


to which no response is required in this Answer.

9. Denied.

10. Denied.

1 I. Admitted.


12. Defendant admits the allegations set forth in this paragraph of the Complaint,

although he denies that he currently is a director of plaintiff corporation as plaintiff and the third-

party defendants wrongfully and unlawfully removed him from that position, and is without

knowledge or information sufficient to form a belief as to the truth of the allegations set forth in

said paragraph as to Taylor's alleged current role as president of Plaintiff.

13. Dekndant is without knowledge or information sufficient to form a belief as to

the truth of the allegations set forth in this paragraph of the Complaint, which in any event

attempt to characterize documents which, in their entirety, speak for themselves. To the extent

that said allegations misstate or mischaracterize the content. substance or import of said

documents. or cite to the same out of context or in a misleading fashion, they are denied.

14. Defendant admits that in or about 1991, he and the third-party defendants began

using the name "LIVE" as the professional appellation of the Group. Defendant denies the

allegations set forth in said paragraph as to his alleged knowledge. Defendant is without

knowledge or information sufficient to form a belief as to the truth of the remaining allegations

set forth in this paragraph of the Complaint, which in any event attempt to characterize

documents which, in their entirety, speak for themselves. To the extent that said allegations

misstate or mischaracterize the content, substance or import of said documents. or cite to the

same out of conlext or in a misleading fashion, they are denied. Further answering, defendant

avers that the allegations set forth in the second sentence of said paragraph also state legal

conclusions to which no response is required in this Answer.

15. The allegations set forth in the first sentence of this paragraph of the Complaint

attempt to Characterize a document which, in its entirety, speaks for itself. To the extent that said

allegations misstate or mischaracterize the content, substance or import of said document, or cite

3


to the same out of context or in a misleading fashion, they are denied. Defendant admits the

allegations set forth in the second and third sentences of this paragraph of the Complaint,

although he is without knowledge or information sufficient to form a belief as to the truth of the

hyperbolic allegations set forth therein concerning the alleged level of success achieved by the

albums released by the Group and that certain recordings on those albums were "smash hit

singles."

16. Defendant admits that, over the past two decades, until in or about 2009, he and

the third-party defendants toured the United States and other parts of the world and appeared at

live performance events and did so under the name of the Group, "LIVE." Defendant denies the

remaining allegations set forth in this paragraph of the Complaint.

17. Defendant denies the allegations set forth in the first sentence of this paragraph of

the Complaint and admits the allegations set forth in the second sentence thereof.

18. Defendant denies the allegations set forth in the first sentence of this paragraph of

the Complaint. Defendant is without knowledge or information sufficient to form a belief as to

the truth of the allegations set forth in the second and third sentences of said paragraph as to the

alleged actions of plaintiff. The remaining allegations set forth in said paragraph attempt to

characterize certain written materials which, in their entirety, speak for themselves. To the

extent that said allegations misstate or mischaracterize the content, substance or import of said

materials, or cite to the same out of context or in a misleading fashion, they are denied.


the truth of the allegations set forth in the first sentence of this paragraph of the Complaint as to

the alleged actions of plaintiff as he was wrongfully removed as a director of plaintiff

corporation and has not been kept informed of the activities of the corporation despite his status

4


as a twenty-five percent (25%) owner thereof. The remaining allegations set forth in said

paragraph attempt to characterize certain written materials which, in their entirety, speak for

themselves. To the extent that said allegations misstate or mischaracterize the content, substance

or import of said materials, or cite to the same out of context or in a misleading fashion, they are

denied.

20. The allegations set forth in this paragraph of the Complaint attempt to

characterize certain documents which, in their entirety, speak for themselves. To the extent that

said allegations misstate or mischaracterize the content, substance or import of said documents,

or cite to the same out of context or in a misleading fashion, they are denied. Further answering

defendant avers that the allegations set forth in the first sentence of this paragraph of the

Complaint state a legal conclusion to which no response is required in this Answer.



22. Denied.

23. Denied.

24. Denied.

25. Denied.

26. Defendant denies that plaintiff controls exclusive rights in the LIVE Marks to

defendant's exclusion or detriment and that he has utilized any infringing name or mark. The

remaining allegations set forth in this paragraph of the Complaint attempt to characterize certain

documents which. in their entirety, speak for themselves. To the extent that said allegations

misstate or mischaracterize the content, substance or import of said documents, or cite to the

same out olcontext or in a misleading fashion, they are denied,

Case 1:12-cv-05483-JMF Document 10 Filed 09/04112 Page 6 of 38

27. Defendant denies that he has utilized any infringing mark. The remaining

allegations set forth in this paragraph of the Complaint attempt to characterize certain documents

which, in their entirety, speak for themselves. To the extent that said allegations misstate or

mischaracterize the content, substance or import of said documents, or cite to the same out of

context or in a misleading fashion, they are denied.

28. Denied.

29, The allegations set forth in this paragraph of the Complaint attempt to

characterize certain documents which. in their entirety. speak for themselves. To the extent that

said allegations misstate or inischaracterize the content, substance or import of said document's,

or cite to the same out of context or in a misleading fashion, they are denied. Further answering,

defendant denies that he has no affiliation with the Group.

30. Denied.

31. Denied.

32, Defendant admits the allegations set forth in the first sentence of this paragraph of

the Complaint, and denies the allegations set forth in the second sentence thereof.

33. Denied.

34. Denied.

35. Defendant incorporates herein by reference, in their entirety, the preceding

paragraphs ofthis Answer.


to which no response is required in this Answer. In addition, said allegations attempt to

characterize certain documents which, in their entirety, speak for themselves. To the extent that

6


said allegations misstate or mischaracterize the content, substance or import of said documents,

or cite to the same out of context or in a misleading fashion. they are denied.


to which no response is required in this Answer. In addition, said alltgations attempt to

characterize certain documents which, in their entirety. speak for themselves. To the extent that

said allegations misstate or mischaracterin the content, substance or import of said documents,

or cite to the same out of context or in a misleading fashion, they are denied. In so answering,

defendant denies that he has utilized any infringing name or mark.

38. Defendant admits that plaintiff has not authorized defendant to use the LIVE

Marks in connection with defendant's musical performances, and denies that he was required to

obtain such authorization.



40. Denied.

41. Denied.

42. Defendant Admits the allegations set forth in the first sentence of this paragraph of


43. Denied.

44. Denied.

45. Denied.

46, Denied.

47. Denied.

48. Denied.


49. Denied.

50, Denied.

51. Denied.


paragraphs of this Answer.

53. Defendant admits that plaintiff has not authorized defendant to use the LIVE

Marks in connection with defendant's musical performances. and denies that he was required to

obtain such authorization.

54. Denied.

55. Defendant admits the allegations set forth in the first sentence of this paragraph of


56. Denied.

57. Denied.

58. Denied.

59. Denied.

60. Denied.

61. Denied.

62. Denied.

63. Denied.

Defendant incorporates herein by reference. in their entirety, the preceding


65. Denied.

66. Denied.


67. Denied.

68. Denied.

69. Defendant denies that he engaged in any unlawful or improper conduct and, as

such, denies that there is any basis to enjoin him from continuing to engage in the conduct

alleged in the Complaint.

70. Denied.

71. Denied.

71. Denied.

73, Defendant incorporates herein by reference, in their entirety, the preceding


74. The allegations set forth in this paragraph of the Complaint state a legal

conclusion to which no response is required in this Answer.

75. Denied.

76. Denied.

77, Denied.

78. Denied.

79. Defendant denies that he engaged in any unlawful or improper conduct and, as

such, denies that there is any basis to enjoin him from continuing to engage in the conduct

alleged in the Complaint.

80. Denied.

81. Denied.

82. Denied.

9




84. Denied.

85. Denied.

86. Denied,

87. Denied,

88. Denied.

AFFIRMATIVE DEFENSES

FIRST AFFIRMATIVE DEFENSE

The Complaint fails to state a claim upon which relief can be granted.

SECOND AFFIRMATIVE DEFENSE

This Court does not possess personal jurisdiction over defendant.

THIRD AFFIRMATIVE DEFENSE

This Court is not the proper venue for the resolution of the claims asserted by plaintiff in

this action.

FOURTH AFFIRMATIVE DEFENSE

Plaintiffs claims are barred by the doctrine of 'aches.

FIFTH AFFIRMATIVE DEFENSE

Plaintiff waived the claims asserted in the Complaint.

SIXTH AFFIRMATIVE DEFENSE

Plaintiff is estopped from pursuing the claims asserted in the Complaint.

SEVENTH AFFIRMATIVE DEFENSE

Plaintiff's claims are barred by the applicable statutes of limitation.

10


EIGHTH AFFIRMATIVE DEFENSE

Plaintiff's claims are barred by the doctrine of "unclean hands."

NINTH AFFIRMATIVE DEFENSE

Defendant has not willfully infringed any trademark or other right allegedly possessed by

plainti IT.

TENTH AFFIRMATIVE DEFENSE

Defendant acted in good faith and without any intention of injuring plaintiff.

ELEVENTH AFFIRMATIVE DEFENSE

Plaintiff's claims are barred as defendant's alleged use of the LIVE Marks is not likely to

cause confusion among consumers

TWELFTH AFFIRMATIVE DEFENSE

Defendant incorporates herein as an affirmative defense the allegations and claims set

forth below in his Counterclaim and Third-Party Complaint.

THIRTEENTH AFFIRMATIVE DEFENSE

Defendant reserves the right to assert additional affirmative defenses, including upon the

discovery of new or previously unknown information.

WHEREFORE, based on the foregoing averments, defendant Edward Kowalczyk

respectfully requests that this Court dismiss the Complaint and all claims asserted therein against

him or, in the alternative, enter judgment thereon in his favor and against plaintiff; award him the

costs and attorneys' fees he incurs in connection with this action; and enter such other and

further relielas may be just and appropriate in the circumstances.

11


COUNTERCLAIM AND THIRD-PARTY COMPLAINT

INTRODUCTION

Defendant. plaintiff-in-counterclaim and third-party plaintiff Edward Kowalczyk

( -Kowalczyk"), both in his individual capacity and derivatively. hereby asserts a Counterclaim

against Action Front Unlimited, Inc. ("Action Front") and brings a Third-Party Complaint

against Patrick Dahlheimer (''Dahlheimer"), Chad Gracey ("Gracey") and Chad Taylor

("Taylor") (collectively, the "third-party defendants") for, inter alio, their egregious breaches of

fiduciary duty. manifest self-dealing and conflicts of interest; their misuse of the trademarks in

the name -LIVE." the appellation of the musical group in which Kowalczyk and the third-party

defendants performed and recorded (the "Group"); and their unauthorized use of Kowalczyk's

likeness on merchandise that they use to promote the Group and offer for sale, and their

concomitant failure to account to or pay Kowalczyk his allocable share of the revenues generated

thereby.

7. As will be further explicated below, after Kowalczyk and the third-party

defendants agreed in 2009 to a hiatus from the Group, Kowalczyk pursued a successful career as

a solo artist, while the careers of his erstwhile bandmates languished. To punish Kowalczyk for

his success, the third-party defendants commenced groundless legal proceedings against him;

purported to remove him as an officer and director of Action Front, the Group's furnishing

company, and then granted to themselves a supposed perpetual free license from Action Front to

use the LIVE trademarks to Kowalczyk's exclusion; misused those marks in promoting a failed

group that they attempted to establish; refused, despite repeated demand, to provide Kowalczyk

with critical tax and other financial documentation concerning Action Front and certain other

LIVE-related entities. despite the fact that Kowalczyk remains a 25% owner of those entities;

12


continued, without authorization. to use Kowalczyk's likeness to promote the Group and to sell

merchandise related thereto while failing to compensate Kowalczyk therefor; and engaged in

further unlawful and vindictive conduct against Kowalczyk fueled by petty animus and jealousy.

3. As a result of the misconduct and defalcations of the third-party defendants and

Action Front, Kowalczyk seeks injunctive relief and an award of substantial monetary dam: :c

In further support of his claims herein, Kowalczyk alleges and avers as follows:

PARTIES, JURISDICTION AND VENUE

4. Kowalczyk is an individual who, at the time that Action Front commenced the

present action, resided in the State of California, and currently resides in the State of

Connecticut.

5. Action Front is a corporation organized under the laws of the State of Maryland.

Upon information and belief, Action Front maintains a place of businessin Pennsylvania.

6. Upon information and belief, Dahlheimer is a citizen and resident of the State of

Pennsylvania.

7. Upon information and belief. Crracey is a citizen and resident of the State of

California.

$. Upon information and belief, Taylor is a citizen and resident of the State of

Pennsylvania.

9. This Court has subject matter jurisdiction over Kowalczyk's claims arising under

the Lanham Act pursuant tO 28 U.S.C. §§ 1331 and 1338(a) and 15 U.S.C. § 1121(a). This Court

has subject matter jurisdiction over Kowalczyk's state law claims pursuant to 28 U.S.C. *1332,

as this action is between citizens of different states and the matter in controversy exceeds the

13


sum or value of $75,000, exclusive of interest and costs; and pursuant to 28 U.S.C. § 1367,

which provides for supplemental jurisdiction over those claims.

10. This Court has personal jurisdiction over Action Front as it commenced the

present 4c1ion and thereby submitted to the jurisdiction of this Court.

11. This Court has personal jurisdiction over the third-party defendants pursuant to,

inter alio, N.Y. C.P.L.R. § 302, because they have conducted business in the State of New York;

have engaged in acts in violation of Kowalczyk's rights in the State of New York; and

commenced related litigation against Kowalczyk (still pending) in the Supreme Court of New

York County in 2010. and thereby purposefully availed themselves of the laws, benefits and

privileges of this State.

1 7 . Venue is proper in this judicial district as Action Front, directed by the third-party

defendants, chose this venue as the forum to assert related claims against Kowalczyk in the

present action.

FACTUAL BACKGROUND

13. Kowalczyk and the third-party defendants first met in or about the early 1980s,

when they were attending junior high school in York, Pennsylvania, the town in which each of

them was born and raised.

14. In or about 1985, Kowalczyk and the third-party defendants began to perforM

together as a music group using the name "Public Affection."

15. From the very inception of the band until the Group went on hiatus in 2009,

Kowalczyk was the Group's lead singer and composed virtually all of the Group's compositions.

14


16. In or about 1989. Kowalczyk and the third-party defendants formed Action Front

which, as alleged earlier herein, is a corporation duly organized under the laws of the State of

Maryland.

17. At or about the same time, i.e., 1989, Kowalczyk and the third-party defendants

formed a separate company, Black Coffee Publishing Inc. ("Black Coffee") to handle publishing

and related matters on behalf of the group.

18. At all times since the incorporation of Action Front, Black Coffee and certain

other related entities. Kowalczyk and the third-party defendants each has been a twenty-five

percent (25%) shareholder of each corporation.

19. At the time that it was incorporated, and continuing until the time of the events of

July 2011 described below, Kowalczyk, GracOy and Taylor were elected and served as directors

of Action Front. In addition, Taylor VMS President of the corporation; Kowalczyk was its Vice-

President; Dahlheirner was its Treasurer; and Gracey was its Secretary.

20, In the early I 990s, the Group changed its name from "Public Affection" to

"LIVE," a name that Kowalczyk conceptualized and proposed.

21. In or about 1991, Kowalczyk and the third-party defendants entered into a

recording agreement with Radioactive Records ("Radioactive) (a label that was affiliated with

Universal Music Group ("LNG)). which contemplated Radioactive's release and exploitation

of the Group's recordings,

22. Between 1991 and 2003, the Group recorded, and Radioactive released, six

albums by the Group.

15


23. Kowalczyk was the lead singer of the Group on each of those albums, performing

lead vocals on all of the recorded performances of the Group embodied thereon. In addition.

Kowalczyk composed virtually all of the compositions that the Group recorded on thOse albums.

24. Among the six albums that the Group recorded for Radioactive was the Group's

1994 album Throwing Copper. That album sold approximately 8,000,000 units in the United

States and included a number of singles that generated substantial radio airplay. Kowalczyk was

the lead singer on all of the compositions recorded on the Throwing copper album, and he

authored virtually all of those compositions.

25. In or about 2005, the Group left Radioactive, and Kowalczyk and the third-party

defendants entered into an agreement with Epic Records, a division of Sony Music ("Sony"). As

is reflected by that agreement. Epic was not only interested in releasing and exploiting the

Group's recorded performances, but it had a particular interest in developing Kowalczyk's career

as a solo EiTiiiSt in recognition of the fact that, as alleged above, he was the Group's lead vocalist

and the author of virtually all of the Group's compositions.

26. In 2006. Epic released the Group's seventh album. entitled Songs From Black

Mountain.

27. From the 1980s (when Kowalczyk and the third-party defendants formed their

first group) through in or about 2009, the Group performed at venues, throughout this country and

abroad. During these live performance events, Kowalczyk was featured as the Group's lead

singer and the Group. performed compositions from the albums they had recorded, virtually all of

which were authored by Kowalczyk.

28. As a result of the Group's activities - - spearheaded by Kowalczyk, the Group s

lead singer and composer - - the Group developed a substantial fan base in this country and

16


abroad. Upon information and belief, the large majority, if not virtually all of the Group's fans

closely affiliate Kowalczyk with the Group to this day, and view him as the Group's primary and

moving three. Upon information and belief, LIVE's fan base is far more familiar with

Kowalczyk's work and identity than they are with the work and identity of the third-party

defendants.

29. In or about 2009. the Group agreed to take a hiatus. which they conteMplated

would last approximately two years. As the third-party defendants were fully aware at the time,

during the hiatus. Kowalczyk intended to pursue a career as a solo artist.

30. Since 2009. Kowalczyk has released a solo album and toured and performed

extensively at live performance venues in this country and abroad.

31. In contrast, since the Group began its hiatus, the careers of the third-party

defendants have languished and they have been unable to find any significant measure of success

- financial. critical, or otherwise - - in Kowalczyk's absence.

32. Kowalczyk's first album as a solo artist was released in or about May o12010.

Virtually immediately fbllowing the release of that album. Kowalczyk began to tour in support

of the album, both in this country and abroad.

33. The third-party defendants were and remain resentful of Kowalczyk's successful

pursuit of a career as a solo artist.

34. Motivated by this resentment and animus, and in the hope that they might impede

Kowalczyk's solo career, in or about June of 2010, nearly simultaneously with the release of

Kovvalczyk's solo album, the third-party defendants filed an action against Kowalczyk (and

certain other parties) in the Supreme Court of the State of New York, New York County (the

"State Court Action").

17


35. In the State Court Action, the third-party defendants purported to challenge

certain publishing and related agreements that they and Kowalczyk had entered into

approximately five (5) years earlier. The claims asserted by the third-party defendants in the

State Court Action are without merit and were interposed in an act of retribution intended to

punish Kowalczyk for pursuing a successful solo career, just as his. solo album was being

released,

36. Not content with tiling a baseless lawsuit against Kowalczyk, the third-party

defendants and Action Front took further steps tofrustrate and impede Kowalczyk's professional

activities,

37. In that regard, in or about the Fall of 2010, Kowalczyk's representatives requested

that the third-party defendants correct certain mistakes that had been made on Black Coffee's

most recent tax return, which had been prepared without Kowalczyk's knowledge or

involvement; questioned certain items (including supposed but unidentified loans to the third-

party defendants) that were reflected thereon; and requested certain back-up, accounting and

financial records from the third-party defendants.

38. The third-party defendants refused to comply with these requests for information.

Kowalczyk's representatives made further and repeated demand for this information, which the

third-party defendants continued to ignore.

39. In late 2010, Kowalczyk's representatives requested that the third-party

defendants and Action Front sign certain documentation requested by UMG in respect of the

Group's albums that had been released by Radioactive, to ensure that Mr. Kowalczyk received

proper royalty payments and accountings from UMG in respect of sales of those albums.

18


Despite Kowalczyk's repeated requests, Action Front and the third-party defendants have refused

to sign the documentation required by UMG.

40. In or about March of 2011, Kowalczyk's representatives once again requested

accounting and tax information from Action Front, Black Coffee, certain other LIVE-related

entities and the third-party defendants, including monthly cash flow statements, quarterly general

ledgers. trial balances, and record royalty statements from UMG and Sony. As a concomitant

thereto. Mr. Kowalczyk's representatives also requested the opportunity to review the current tax

returns of Action Front, Black Coffee and the other LIVE-related entities - - of which Mr.

Kowalezyk remains a twenty-five percent (25%) owner - - before they were filed, in order to

avoid the types of en -ors that were manifest in the entities' prior tax returns, which had been

prepared without the input of Kowalczyk or his representatives.

41. The third-party defendants once again failed and refused to comply with

Kowalczyk's demands.

49. In or about 2010, the third-party defendants formed a group with the former lead

singer of the group professionally known as ''Candlebox," and they named this project "The

Gracious Few." The third-party defendants promoted their live performance appearances as part

of this group in a manner that suggested that the phrase "The Gracious Few" was descriptive of

performances that featured the separate appearances of both the Group, i.e., LIVE, and

Candlcbox. In this regard, promotional materials prepared and/or authorized by the third-party

defendants for those purposes informed the public of performances featuring "LIVE/Candlebox."

In acting in this fashion. the third-party defendants infringed upon the LIVE Marks and

otherwise acted in derogation thereof.

19


43. The third-party defendants' efforts to revive their careers through the Gracious

Few endeavor were an abject failure.

44. As a result, and growing increasingly resentful of KowalczYk's continued success

as a solo artist, the third-party defendants took yet further actions to punish Kowalczyk.

45. In that regard, in July of 2011 - - upon information and belief, without providing

proper or effective notice to Kowalczyk - - the third-party defendants purported to convene

shareholders and/or directors meetings of Action Front and Black Coffee. At the time.

Kowalczyk was a twenty-five percent (25%) shareholder of Action Front and Black Coffee; a

director of both companies; and the Vice-President of Action Front and the President of Black

Coffee.

46. At these meetings, the third-party defendants, in their capacities as shareholders

and/or directors of' Action Front and Black Coffee, purported to remove Kowalczyk as a director

and officer of those companies. Upon information and belief, the third-party defendants then

purported to appoint Gracey as Action Front's Vice-President, and Taylor as Black Coffee's

President.

47. Immediately following the purported removal of Kowalczyk as an officer and

director of Action Front, the third-party defendants convened a special meeting of Action Front's

supposed then current Board of Directors, which now, ostensibly, consisted of Taylor,

Dahlheimer and Gracey.

48. During this purported special meeting, Taylor made a motion "to approve the

issuance of a license to use the intellectual property of the Company [i.e., Action Front] to Mr.

Taylor, Mr. Dahlheimer and Mr. Gracey." Gracey apparently seconded the motion, and the

minutes of this supposed Board of Directors meeting recite that it was 'determined to be in the

20

Case 1:12-cv-05483-JMF Document 10 Filed 09104112 Page 21 of 38

best interest of the Company to grant a license in the Company's intellectual property to Mr.

Taylor, Mr. Dahlheimer and Mr. Gracry [sic]." The minutes of the Board of Directors meetings

indicate that the supposed motion was approved by a vote of 3-0.

49. By and through this supposed motion, Dahlheimer, Taylor and Grapey, officers,

directors and majority shareholders of Action Front, purported to cause Action Front - - of which

Kowalczyk remains a twenty-five percent shareholder - - to grant a perpetual free license of

Action Front's intellectual property, including all of the LIVE-related trademarks that are the

subject of Action Front's present Complaint (the "LIVE Marks") - - to themselves.

50. Upon information and belief there is no written agreement between Action Front

and the third-party defendants memorializing this supposed license.

51. Kowalczyk's representatives promptly challenged these transactions, as they

plainly constitute self-dealing, conflicts of interest and breaches of fiduciary duty; requested that

Action Front and the third-party defendants provide Kowalczyk with any written agreement

between Action Front and the third-party defendants memorializing the supposed license; and

demanded that the third-party defendants disclose the terms of the supposed license, including

the consideration, if any, that the third-party defendants were paying to Action Front for the

license of what Action Front in its present Complaint alleges is extremely valuable intellectual

property.

52. Action Front and the third-party defendants failed and refused to respond to

Kowalczyk's aforesaid requests.

53. Kowalczyk and the third-party defendants, through counsel, subsequently

attempted to resolve the parties' ongoing and escalating dispute. These efforts were

unsuccessful.

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54. As a result, and in yet further bad-faith conduct intended to punish Kowalczyk for

successfully pursuing his solo career, Action Front commenced the present action, in which it

alleges Kowalczyk has engaged in trademark infringement and related wrongs as a result of his

accurate reference to his affiliation with the Group in promoting his live performances as a solo

artist.

55. Action Front's present Complaint is without basis - - indeed the misleading

promotional materials used by the third-party defendants to promote their endeavor, the

"Gracious Few," constitute far more egregious misuse of the LIVE Marks than that alleged by

Action Front in its present Complaint.

56. Despite Action Front's allegations in its Complaint in this action that the third-

party defendants purportedly removed Kowalczyk as a member of the Group in 2009, Action

Front and the third-party defendants have continued since that time. through the present date, to

sell merchandise of the Group that prominently features Kowalczyk's likeness. Despite their

sale of this merchandise, Action Front and the third-party defendants have failed to account or

pay to Kowalczyk his allocable share of the revenues generated from such sales.

57. In addition to the.foregoing, and confirmatory of the vindictive nature of their

conduct and their intent to punish Kowalczyk for his successful pursuit of a career as a solo

artist, the third-party defendants have "rewritten" the biography of the Group that appears in

Wikipedia so as to ignore, virtually in its entirety, Kowalczyk's substantial and undisputed role in

the formation and development of the Group during the entire period of its success.

COUNT I (Breach of Fiduciary Duty - - Third-Party Defendants)

58. Kowalczyk incorporates herein by reference in their entirety the allegations set

forth at paragraphs 1 - 57 above, as if set forth fully herein.


59. As officers and directors of Action Front, the third-party defendants owed a

fiduciary duty to the corporation.

60. In addition, as majority shareholders of Action Front, a closely held corporation,

the third-party defendants owed a fiduciary duty to Kowalczyk, as a minority shareholder,

61. The third-party defendants purported to cause Action Front to grant a perpetual

free license of what Action Front in this action has described as extremely valuable rights in the

LIVE Marks to Dahlheimer, Gracey and Taylor, officers, directors and majority shareholders of

the company.

62. The third-party defendants acted in this fashion to -further their own interest, to the

detriment of Action Front and Kowalczyk.

63. Upon information and belief, there is no written agreement or other written

embodiment of the terms and conditions of the supposed license of the LIVE Marks from Action

Front to the third-party defendants.

64. In addition, upon information and belief, the third-party defendants obtained this

supposed license in the LIVE Marks without any corresponding obligation to pay any license fee

or other consideration to Action Front therefor, thus depriving both Action Front and

Kowalczyk, a twenty-five percent owner of the company, of significant financial value.

65. The conduct of the third-party defendants, undertaken in their capacities as

officers, directors and majority shareholders of Action Front, in causing the company to issue a

perpetual free license to themselves in the valuable LIVE Marks constitutes a blatant conflict of

interest and self-dealing.

66. In addition to the foregoing, the third-party defendants and Action Front have

failed and refused to provide Kowalczyk with tax, accounting and financial records of Action

Case 1:12-cv-05483-1MF Document 10 Filed 09/04/12 Page 24 of 38

Front, Black Coffee and the other LIVE-related entities, despite his repeated demand therefor

and lawful entitlement thereto; and they have failed to sign the documentation requested by

UMG that is required to ensure that Kowalczyk receives proper payments and accountings of

record royalties from UMG.

67. As a result of the foregoing, the third-party defendants, as majority shareholders

of Action Front, breached their fiduciary duty to Kowalczyk, as minority shareholder.

68. In addition, by acceding to the aforesaid license arrangement and refining to

provide Kowalczyk with the requested information and documentation. Action Front breached its

fiduciary duty to Kowalczyk, a shareholder of the company.

69. Kowalcyzk has been damaged by the aforesaid breaches of fiduciary duty of the

third-party defendants and Action Front in an amount to be determined at trial.

COUNT II (Breach of Fiduciary Duty - Derivative)


forth at paragraphs I - 69 above, as if set forth fully herein.

71. In addition to the breaches by Action Front and the third-party defendants of their

fiduciary duties to Kowalczyk, as alleged earlier herein, the third-party defendants, through their

aforesaid conduct, breached their fiduciary duty to Action Front.

72. In addition to the foregoing, and as is alleged in further detail below, in further

breach of their fiduciary duty to Action Front, the third-party defendants infringed the LIVE

Marks in promoting an endeavor that is engaged in the same business as is Action Front.

73. Action Front has both the right and obligation to assert a claim against the third-

party defendants Thr their breaches of fiduciary duty, self-dealing and conflict of interest,

including their issuance to their own benefit of a free, perpetual license in the valuable LIVE

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Marks and their misuse of' those Marks, which, Action Front alleges in its Complaint in this

action, are exclusively owned by Action Front.

74. As contemplated by Fed. R. Civ. P. 23.1, Kowalczyk hereby confirms that. at the

time of the.transactions complained of herein, he was a shareholder of Action Front and that his

assertion of the within derivative claim (and those that follow) is not a collusive act to confer

jurisdiction that the Court would otherwise lack.

75. As further contemplated by said Rule 23.1, Kowalczyk confirms that he did not

make demand on Action Front to pursue these claims, as the corporation is governed solely and

exclusively by its supposed officers and directors, the third-party defendants, who are also the

majority shareholders of the corporation, and that, as such, and recognizing that each of the third-

party defendants was involved in, approved and directly benelitted from the transactions at issue,

any such demand would have been futile.

76. As a result of the foregoing, Kowalczyk, derivatively on behalf of Action Front.

hereby asserts a claim of breach of fiduciary duty against the third-party defendants for their

conduct undertaken in their role as officers and directors of the company.

77. Action Front has been damaged by the aforesaid breaches of the third-party

delendants of their fiduciary duties in an amount to be determined at trial.

COUNT I11 (Dissolution)



79. As a result of the conduct of the third-party defendants as alleged earlier herein.

including by acting in their capacity as majority shareholders of Action Front in furtherance of

their own personal interest separate from the interest of the corporation, and their pursuit of

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actions oppressive to the rights of Kowalczyk, a minority shareholder. Kowalczyk hereby

petitions this Court for dissolution of Action Front pursuant to Maryland Corporation and

Association Code § 3-413(b)(4

COUNT IV (Trademark Infringement - Derivative)

80, Kowalczyk incorporates herein by reference in their entirety the allegations set


81. Without conceding the truth of the allegations set forth in Action Front's

Complaint at paragraphs 20 - 23 thereof; but accepting the same as true for purposes of this

Counterclaim and Third-Party Complaint, Kowalczyk hereby incorporates herein by reference

those paragraphs of Action Front's Complaint insofar as they pertain to the alleged ownership,

protection and value of the LIVE Marks, as that term is defined in the Complaint,

82. Based on the averments set forth earlier in this pleading, Kowalczyk brings the

claims asserted in this Count IV and in Counts V - VII that follow, derivatively on behalf of

Action Front.

83. As alleged earlier herein, the third-party defendants used the LIVE Marks in

connection with the promotion of their live performances of the "Gracious Few."

84. As alleged earlier herein, in forming the —Gracious Few," the third-party

defendants enlisted the services of the former lead singer of the group known as "Candlebox."

85. In promoting the appearances of their "Gracious Few" endeavor, the third-party

defendants advertised those appearances as "LIVE/Candlebox," i.e., in a manner that suggested

that the Group LIVE and the group Candlebox were each separately appearing at concert

performances, a suggestion that was false and misleading.

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86, These activities were undertaken, in whole or in part, prior to the alleged, albeit

fraudulent license in the LIVE Marks purportedly granted by Action Front to the third-party

defendants.

87. Upon information and belief, Action Front did not authorize the third-party

defendants to use the LIVE Marks in connection with their promotion of the live performances

of the -Gracious Few. - In the alternative, if Action Front did grant such authorization, it was

done collusively and through the third-party defendants' further breaches of their fiduciary duty

and as a conflict of interest and manifest selPdealing.

88. The third-party defendants used the LIVE Marks to promote the same or similar

goods and services as those engaged in by the Group.

89. Consumers were likely to see the third-party defendants' use of the LIVE Marks

in connection with their live performance appearances with the "Gracious Few" as related to,

affiliated with. or sponsored by the Group.

90. The good will that has been developed in the LIVE Marks - - including through

the decades of input and involvement of Kowalczyk - - are at risk as a result of third-party

defendants' misuse of the LIVE Marks to promote their musical performances in connection

with the -Gracious Few,"

91. The third-party defendants advertised their services as the "Gracious Few" to the

same or similar consumers of and sold those services to the same or similar channels of trade as

those employed by, the Group.

92, Upon information and belief, the third-party defendants misuse of the LIVE

Marks has caused actual confusion and is likely to continue to cause confusion, or to cause

mistake or to deceive the relevant consuming public as to the source, affiliation, connection or

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association of the third-party defendants' musical performances as part of the "Gracious Few"

endeavor with the Group "LIVE."

93. The third-party defendants' infringement of the LIVE Marks was knowing,

willful, intentional and deliberate.

94. Action Front has suffered both monetary damages and irreparable harm as a result

of the third-party defendants' misuse of the LIVE Marks.

95. Action Front has no adequate remedy at law for the foregoing defalcations of the

third-party defendants.

96. Action Front is entitled to an injunction restraining the third-party defendants, and

their agents and employees, and all persons acting in concert with any one or more of them, from

engaging in any of the foregoing acts or any further or different acts in violation of Action

Front's alleged rights in its LIVE Marks.

97. In addition, Action Front is entitled to statutory damages from the third-party

defendants under Section 35(c) of the Lanham Act, 15 U.S.C. § 1117(c) based upon the third-

party defendants' unauthorized use of the LIVE Marks.

98. Action Front has suffered damages as a result of the third-party defendants'

infringing acts and is entitled to recover the third-party defendants' profits attributable to their

acts of infringement, along with treble damages, statutory damages, costs and reasonable

attomeys' lees, pursuant to 15 U.S.C. § I117(a).

99. Action Front is entitled to an order of the Court requiring the seizure and

destruction of all infringing labels, signs, packages, advertisements, negatives or other materials

that violate Action Front's rights as aforesaid.


COUNT V (False Designation of Origin - Derivative)



101. The third-party defendants" aforesaid actions constitute false designation of

origin, and are likely to cause confusion, mistake or deception among consumers as to the

supposed affiliation, connection or association of the third-party defendants' musical

performances as part of the "Gracious Few" endeavor with those of the Group, and to give the

false or misleading impression as to the origin, sponsorship or approval of the third-party

defendants' musical performances as part of the "Gracious. Few" endeavor, in violation of

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(01).

102. The third-party defendants' violations of Section 43 of the Lanham Act have been

and are knowing, willful, intentional and deliberate.

103. Unless the Court enters injunctive relief, the.third-party defendants will continue

to violate Action Front's rights in the LIVE Marks and to cause confusion, mistake and

deception and thereby cause further immediate and irreparable injury to Action Front.

104. Action Front has no adequate remedy at law.

105. Action-Front-is-entitled to-an injunction restraining the third-party defendants; -and---- --


engaging in any of the foregoing acts.

106. Action Front has suffered damages as the proximate result of the third-party

defendants' infringing acts and is entitled to recover the third-party defendants' profits

attributable to their acts of infringement, together with damages, costs and reasonable attorneys'

fees.

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107. Action Front is entitled to an order requiring the seizure and destruction of all

infringing labels, signs, packages, advertisements, negatives and other materials that violate

Action Front's rights as aforesaid.

COUNT VI (Federal Trademark Dilution - Derivative) .


forth at paragraphs I — 107 above, as if set forth fully herein.

109, Upon information and belief, the LIVE Marks have become distinctive and

famous. long prior to the unlawful acts of the third-party defendants complained of herein,

110. The third-party defendants' unauthorized use of the LIVE Marks has tarnished or

threatens to tarnish the LIVE Marks.

111. The third-party defendants' violations of Section 43(c) of the Lanham Act have

been and are knowing, willful, intentional and deliberate.

112. The third-party defendants' acts of trademark dilution as alleged earlier herein,

have caused, and unless this Court enters injunctive relief restraining the same. will continue to

cause irreparable harm to Action Front.

113. The third-party defendants will continue to act in derogation of Action Front's

rights as aforesaid unless this Court enters appropriate injunctive relief against them.

114. Action Front is entitled to the entry of an injunction restraining the third-party

defendants, their agents and employees, and all persons acting in concert with any one or ore of

them, from engaging in any of the foregoing acts.

1 I S. Action Front has suffered damages as the proximate result of the third-party

defendants' infringing acts and is entitled to recover the third-party defendants' profits

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attributable to their acts of infringement, along with damages, costs and reasonable attorneys'

lees.


infringing labels, signs, packages advertisements, negatives or other materials that violate


COUNT VII (Dilution by Blurring- Derivative)



118. The third-party defendants' unauthorized use of the LIVE Marks in connection

with the third-party deICndants musical performances as part of the -Gracious Few" endeavor

has blurred the distinctive quality of the LIVE Marks, and will continue to blur and impair the

distinctive quality of the LIVE Marks.

119. The third-party defendants' violations of Section 43(c) of the Lanham Act were

and are knowing, intentional, deliberate and willful.

120. The third-party defendants' acts of trademark dilution as alleged earlier herein

have caused and unless this Court enters appropriate injunctive relief, will continue to cause

Action Front irreparable harm.

121. The third-party defendants will continue such acts unless this Court enters

injunctive relief against them,

122. Action Front is entitled to an injunction restraining the third-party defendants.


engaging in any of the foregoing acts.

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Case 1:12-ov-05483-M1F Document 10 Filed 09/04/12 Page 32 of 38

123. Action Front has suffered damages as the proximate result of the third-party

defendants infringing acts and is entitled to recover the third-party defendants' profits

attributable to their acts of infringement, along with damages, cosl.s and reasonable attorneys'

fees.




COUNT VIII (False Designation of Origini



126. Although Action Front alleges in its Complaint that the third-party defendants

terminated Kowalczyk's relationship with the Group in 2009. and that he has not retained any

affiliation therewith since that time, Action Front and the third-party defendants have sold and

continue to offer for sale merchandise relating to the Group that prominently features

Kowalczyk's likeness.

127. Since his departure from the Group, whether on hiatus as he alleges or as a result

of his termination as Action Front alleges, Kowalczyk has not authorized the third-party

defendants or Action Front to use his likeness in connection with the promotion of the Group's

activities or the sale of merchandise related thereto. The use by the third-party defendants and

Action Front of Kowalczyk's likeness in promoting the activities of the Group and on

merchandise that they sell has, upon information and belief. caused actual confusion and is likely

to continue to cause confusion, or to cause mistake or to deceive the relevant consuming public

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as to the source. affiliation. connection or association of Kowalczyk with the Group and the

third-party defendants.

128. The aforesaid actions of the third-party defendants and Action Front constitute

false designation of origin and are likely to cause a misleading impression as to the origin,

sponsorship or approval by Kowalczyk of the use by the third-party defendants and Action Front

of his likeness in ccinnection with the promotion of the Group and the sale of merchandise related

thereto.

129. The aforesaid conduct of the third-party defendants and Action Front violates

Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),

130. The aforesaid violations of the Lanham Act by the third-party defendants and

Action Front have been and are ongoing, willful, intentional and deliberate.

131. Kowalczyk has suffered both monetary damages and irreparable harm as a result

of the misuse by the third-party defendants and Action Front of his likeness, as alleged earlier

heroin.

132. Kowalczyk has no adequate remedy at law for the foregoing defalcations of the

third-party defendants and Action Front.

133. Kowalczyk is entitled to an injunction restraining the third-pan)' defendants and

Action Front, and their agents and employees, and all persons acting in concert with any one or

more of them. from engaging in any of the foregoing acts or any further or different acts in

violation of Kowalczyk's rights in his name and likeness.

134. Kowalczyk has suffered damages as a result of the third infringing acts of Action

Front and the third-party defendants and is entitled to recover their profits attributable to their

acts of infringement, along with damages, costs and reasonable attorneys' tbes.

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135. Plaintiff is entitled to an order requiring the seizure and destruction of all labels,

signs, packages, advertisements, negatives, merchandise and other materials that use

Kowalczyk's likeness or that otherwise violate his rights under the Lanham Act.

COUNT IX (Corporate Records)



137. As alleged earlier herein, Kowalczyk has made repeated demand on Action Front

and the third-party defendants for various financial, tax and accounting records related to the

business of, inter- cilia. Action Front, Black Coffee and the other LIVE-related entities.

138, The third-party defendants and Action Front have failed and refused to produce to

Kowalczyk the documentation and information he has requested.

139. Pursuant to Maryland Corporations and Associations Code Ann. § 2-513.

Kowalczyk. as a shareholder of Action Front, Black Coffee and the other LIVE-related entities.

is entitled to access to the books of account of Action Front, Black Coffee and the other LIVE-

related entities.

140. Kowalczyk hereby demands that the third-party defendants and Action Front

produce to him the documentation regarding Action Front, Black Coffee and the other LIVE-

related entities that he has requested.

PRAYERS FOR RELIEF

WHEREFORE, based on the foregoing allegations and averments, defendant, plaintiff-in-

counterclaim and third-party plaintiff Edward Kowalczyk respectfully requests that this Court

enter the Ibllowing relief on his Counterclaims and Third-Party Complaint:

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A. That this Court enter judgment in Kowalczyk's favor and against the third-party

defendants on Count I in an amount to be determined at trial, together with interest thereon and

costs and attorneys' fees.

B. That this Court enter judgment in favor of Kowalczyk, derivatively on behalf of

Action Front. and against the third-party defendants on Count II in an amount to be determined

at trial, together with interest thereon and costs and attorneys' fees.

C. That this Court enter an order dissolving Action Front Unlimited. Inc. as

requested in Count III in accordance with Maryland Corporations and Associations Code Ann.

3-413(b)(2).

D. That this Court enter judgment in favor of Kowalczyk, derivatively on behalf of

Action Front, and against the third-party defendants on Count IV in an amount to be determined

at trial, together with interest thereon and costs and attorneys' fees., and that, as a concomitant

thereto. the Court enjoin the thirt4arty defendants from further infringing the LIVE Marks, as

alleged earlier herein or otherwise, and require the third-party defendants to destroy any

infringing labels, signs, packages. advertisements, negatives or other materials that infringe said

marks.

E. That this Court enter judgment in favor of Kowalczyk,.derivatively on behalf of

Action Front, and against the third-party defendants on Count V in an amount to be determined

at trial, together with interest thereon and costs and attorneys' fees, and that, as a concomitant

thereto. the Court enjoin the third-party defendants from further engaging in false designation of

origin, as alleged earlier herein or otherwise, and require the third-party defendants to destroy

any labels. signs, packages, advertisements, negatives or other materials that are not in

conformance with the foregoing.

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F. That this Court enter judgment in favor of Kowalczyk, derivatively on behalf of

Action Front, and against the third-party defendants on Count VI in an amount to be determined

at trial, together with interest thereon and costs and attorneys' fees, and that, as a concomitant

thereto, the Court enjoin the third-party defendants from further diluting the LIVE Marks, as

alleged earlier herein or otherwise, and require the third-party defendants to destroy any labels,

signs, packages. advertisements, negatives or other materials that are not in conformance with

the foregoing.

G. That this Court enter judgment in favor of Kowalczyk. derivatively on behalf of

Action Front. and against the third-party defendants on Count VII in an amount to be determined

at trial, together with interest thereon and costs and attorneys' fees. and that. as a concomitant

thereto, the Court enjoin the third-party defendants from further diluting the LIVE Marks, as

alleged earlier herein or otherwise, and require the third-party defendants to destroy any labels,

signs, packages. advertisements, negatives or other materials that are not in conformance with

the foregoing.

H. That this Court enter judgment in favor of Kowalczyk and against the third-party

defendants and Action Front on Count VIII in an amount to be determined at trial, together with

interest thereon and costs and attorneys' fees and that, as a concomitant thereto, the Court enjoin

the third-party defendants and Action Front from further infringing on Kowalczyk's rights in his

likeness, as alleged earlier herein or otherwise, and require the third-party defendants and Action

Front to destroy any labels, signs, packages, advertisements, negatives, merchandise or other

materials that infringe Kowalczyk's rights in his name or likeness.

I. That this Court enter judgment in Kowalczyk's favor and against Action Front

and the third-party defendants on Count IX and, as a concomitant thereto, direct the third-party

36


defendants and Action Front to provide to Kowalczyk the financial, tax, accounting and business

records of Action Front, Black Coffee and the other LIVE-related entities that he has requested,

as alleged earlier herein.

1. That this Court enter such other and further relief as it may deem just and

appropriate in the circumstances.

JURY DEMAND

Edward Kowalczyk, individually and derivatively on behalf of Action Front Unlimited,

Inc., as applicable, hereby demands a trial by jury on all claims asserted in the Complaint and in

his Counterclaims and Third-Party Complaint that are so triable.

Dated: September 4, 2012 New York, New York

ROSENBERG & GIGER P.C.

By: L. Joh6 J Rosenb g (JR 5292) Brett T. Perala (BP 0913) 488 Madison Avenue 10th Floor New York, NY 10022 Telephone: (212) 705-4824 Facsimile: (212) 593-9175

Attorneys for Defendant

37


VERIFICATION

STATE OF CONNECTICUT) ss:

COUNTY OF FAIRFIELD )

1, EDWARD KOWALCZYK., hereby verify as follows pursuant to 28 U.S.C. § 1746:

I am the defendant, plaintiff-in-counterclaim and third-party plaintiff in this action. I have read the foregoing Counterclaim and Third-Party Complaint and know the contents thereof to be true to my own knowledge, except as to those matters stated to be upon information and belief, and as to those matters I believe them to be true. I verify under penalty of perjury under the laws of the United States of America that the foregoing is true and correct.

Executed on September 4, 2012.

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Case 2* -cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 1 of 20 Page ID #:6

KINSELLA WEITZMAN ISER KLTMP & ALDISERT LLP JENNIFER J. McGRATH (SBN 211388)

m [email protected] 8d a 8 Wilshire Boulevard, 3" Floor Santa Monica, California 90401 Telephone: 310.566.9800 Facsimile: 310.566.9850

Attorneys for Plaintiff ELVH, INC.

UNI1 ED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION

Pni COMPLAINT FOR:

1. INFRINGEMENT OF REGISTERED TRADEMARK (SECTION 32(0 OF THE LANHAM ACT);

. TRADEMARK DILUTION (SECTION 43(C) OF THE LANHAM ACT)

3. FALSE DESIGNATION (SECTION 43(A) OF THE LANHAM ACT);

4. COMMON LAW TRADEMARK INFRINGEMENT;

5. UNFAIR COMPETITION (CAL. BUS. & PROF. CODE § 17200);

6. COMMON LAW UNFAIR COMPETITION;

7. CALIFORNIA STATE TRADEMARK DILUTION (CAL. BUS. & PROF. CODE § 14247);

8. DECLARATORY ACTION

DEMAND FOR TRIAL BY JURY

ciq - ELVH, INC., a California corporation, a e N7 524

vs.

KELLY VAN HALEN, an individual,

Defendant.

99911.00009/190851.1

COMPLAINT

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-cv-07524- MWF - PJW Document 1 Filed 10/10/13 Page 2 of 20 Page ID #:7

COMPLAINT

ELVH, Inc. (hereinafter "Plaintiff), by and through its undersigned counsel,

for its Complaint against Kelly Van Halen (hereinafter "Defendant") states the

following allegations made on belief that the same are likely to be proven after

further investigation and discovery.

NATURE OF THE ACTION

This is an action for trademark infringement, trademark dilution, false

designation of origin and unfair competition arising out of Defendant's unauthorized

and confusingly similar use of Plaintiff's federally registered VAN HALEN

trademarks and service marks as part of Defendant's "Kelly Van Halen" mark.

Plaintiff also seeks a declaratory judgment that Defendant's eventual use of Kelly

Van Haien for construction services and interior desiii services would be an

infringing use and therefore subject to injunctive relief Plaintiff seeks in this case.

JURISDICTION AND VENUE

1. Jurisdiction of the Court is invoked under 28 USC §1121 and §1338(a)

as an action arising under Acts of Congress relating to trademarks, namely, the

Lanham Act, 15 USC §1051 et seq. This Court has pendent jurisdiction over claims

arising under state law pursuant to 28 USC §1338(b) and 28 §USC 1367(a).

2. Venue is proper in this district pursuant to 28 USC § 1391(b) and (c),

because this is the judicial district in which the Defendant resides and a substantial

part of the events giving rise to Plaintiffs claims have occurred and are continuing

to occur in the District.

THE PARTIES

3. Plaintiff is a corporation organized and doing business under the laws

99911.00009/190851.1 • 2 COMPLAINT

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El

3-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 3 of 20 Page ID #:8

of the State of California.

4. Defendant, Kelly Van Halen, is an individual who resides in the County

of Los Angeles, State of California.

FACTS

5. Plaintiff is the intellectual property holding company of the world

famous rock band Van Halen and enforces the band's intellectual property rights

worldwide.

6. Since 1978, Van Haien has continuously used the trademark and

service mark VAN HALEN in interstate commerce for a wide variety of

entertainment related services and a wide variety of goods.

7. Warner Bros. Records released Van Halen's eponymous debut record

in 1978. Since that time, the record Van Halen has sold over ten million copies in

the United States and been awarded the Diamond certification by the Recording

Industry Association of America (RIAA). The RIAA awards certification based on

the number of albums and singles sold through retail and other ancillary markets—

diamond is the RIAA's highest award.

8. Van Halen's album 1984 has also achieved sales of over ten million

copies and has been awarded the Diamond certification by the RIAA.

9. According to the RUA, Van Halen is the nineteenth best-selling artist

of all-time with sales of over 56 million albums in the United States alone.

10. Van Halen was inducted into the Rock & Roll Hall of Fame in 2007.

11. Plaintiff is the owner of the following four (4) federal trademark and

service mark registrations ("Marks"):

a. VAN HALEN for "printed matter for publicity and promotional

material, namely, posters; fold-out poster books; postcards; mounted and unmounted

photographs and photographic prints; newsletters; stickers; calendars; decals and

temporary tattoos; printed concert tickets; printed backstage passes; trading cards;

99911.00009/190851.1 3 COMPLAINT

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Case 2:13-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 4 of 20 Page ID #:9

books, trivia books, tour books, encyclopedias, comic books, picture books,

magazines, all in the field of music and entertainment; tablature books; sheet music

books; book covers" in Intl Class 16. Fed. Reg. No. 2853393 registered on the

Principal Register on June 15, 2004, with dates of use since February 3 Td 1978, and

b. VAN HALEN for "clothing namely, shorts; caps; hats; jerseys;

blouses; shirts; tank-tops; T-shirts, namely long sleeve and short sleeve T-shirts;

polo shirts; woven and knit shirts; thermal shirts; sweaters; jogging and warm-up

suits; sweat shirts; sweat pants; sweat bands; headbands; bandanas; jeans; pants;

ties; jackets; gloves; scarves; neckwear" in Intl Class 25. Fed. Reg. No. 2866540

registered on the Principal Register on July 27, 2004 with dates of use since March

3 rd 1978, and

c. VAN HALEN & Design for "musical sound recordings, musical

video recordings" in Intl Class 9 with dates of use since March 1, 1978; "musical

instruments, musical instruments accessories, namely, guitar picks" in Int'l Class 15

with dates of use since June 1, 2007; "stickers; tablature books; sheet music books"

in Intl Class 16 with dates of use since May 30, 2005; "clothing, namely caps, hats,

t-shirts" in Intl Class 25 with dates of use since July 7, 2007; "entertainment

services, namely, live performances and appearances by a vocal and instrumental

group, and live performances and appearances featuring prerecorded music by a

vocal and instrumental group; fan club services; providing a website featuring

entertainment information, namely, reviews, articles, interviews, music videos,

music charts, personal biographies, diaries, information on music instruments, tour

dates, games, trivia, access to memorabilia, photographs, video clips, and audio

clips, all available via a global computer network" in Intl Class 41 Fed. Reg. No

3701926 with dates of use since June 30, 2007, and

d. VAN HALEN for "entertainment services, namely live

performances and appearances, and live performances and appearances featuring

prerecorded music by a vocal and instrumental group; fan club services; providing a

99911.00009/190851.1 4 COMPLAINT

Case 2 3-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 5 of 20 Page ID #:10

1 website featuring entertainment information, namely reviews, articles, interviews,

2 music videos, music charts, personal biographies, diaries, information on music

3 instruments, tour dates, games, trivia, access to memorabilia, photographs, video

4 clips, and audio clips, all available via a global computer network" in Intl Class 41

5 Fed. Reg. No. 2868311 with dates of use since March 3, 1978.

6 e. Copies of all four registrations are attached as exhibits to this

7 complaint.

8 12. As a result of the widespread use in interstate commerce by Plaintiff

9 and its licensees of the Marks in connection with a wide variety of goods and

10 services, the Marks have acquired extensive goodwill, have developed a high degree

11 of distinctiveness, are recognized throughout the United States as well known and

12 famous and recognized as identifying high quality goods and services which have

13 their origin with or have been authorized by Plaintiff.

14 13. On January 25, 2010, Defendant filed in the United States Patent &

15 Trademark Office ("PTO") two separate multi-class intent-to-use trademark

16 applications for the mark KELLY VAN HALEN for:

17 a. Armoires; Chairs; Dining tables; End tables; Entertainment

18 centers; Pillows; Sofas; Tables; Upholstered furniture in Int'l Class 20.

19 b. Bed blankets; Blanket throws_; Children's bianicets;Lapiilanke ts

20 'n Intl Class 24.

21 c. Bathing suits; Blouses; Coats; Coverups; Dresses; Hats; Jackets;

22 Jeans; Leggings; Lounge pants; Pajamas; Pants; Ponchos; Robes; Scarves; Shirts;

23 Sweaters; Vests in Intl class 25.

24 d. Building construction; Construction management; Construction

25 of environmentally responsible residential real property; Custom construction and

26 building renovation; Housing services, namely, repair, improvement, and

27 construction of residential real property; Installation and maintenance of solar

28 thermal installations; Residential and building construction consulting in Intl Class

99911.00009/190851.1 5 COMPLAINT

-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 6 of 20 Page ID #:11

7 (herein "construction services").

e. Design of specialty interior and exterior environment settings;

Interior design services; Interior design services including space planning, furniture

selection, material and surface selection in Int'l Class 42 (herein "interior design

services").

14. Plaintiff filed with the PTO's Trademark Trial and Appeal Board an

opposition (Opposition No. 91195961) against both KELLY VAN HALEN

applications but not against Defendant's KVH mark for Int'l Class 24 and Class 25

items, which has since registered.

15. The basis of the opposition is the same arguments found in this

Complaint and the Opposition proceeding is currently pending before the Trademark

Trial and Appeal Board.

16. Defendant's mark KELLY VAN HALEN is confusingly similar to

Plaintiffs VAN HALEN Marks in sound, appearance and commercial impression.

17. Defendant's goods are apparel, blankets and other fashion accessories.

They are either identical or closely related to the goods sold by Plaintiff or represent

a natural zone of expansion for Plaintiff and such goods would travel and be

promoted through the same channels of trade for sale to, and use by, the same class

of purchasers.

18. Defendant's use of the mark KELLY VAN HALEN in connection with

her goods is likely to cause confusion, mistake or deception as to the source of

origin of Defendant's goods in that the public, the trade and others are likely to

believe that Plaintiff's goods are: (a) the same as Plaintiff's; or (b) provided by,

sponsored by, approved by, licensed by, affiliated with or in some other way

legitimately connected to Plaintiff.

99911 00009/190851.1 6

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COMPLAINT

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3 -cv-07524- MWF-PJW Document 1 Filed 10/10/13 Page 7 of 20 Page ID #:12

FIRST CAUSE OF ACTION

(Infringement of a Registered Trademark)

Section 32(1) of the Lanham Act, 15 U.S.C. §1114(1)

19. Plaintiff repeats and realleges each and every allegation in the

foregoing paragraphs as fully set forth herein.

20. Without authorization from Plaintiff, Defendant is using in interstate

commerce infringing imitations of Plaintiff's Marks in connection with the

promotion and sale of apparel, blankets and fashion accessories.

21. Defendant's conduct is likely to have caused and will continue to cause

confusion and mistake among consumers and others as to the source, origin, or

sponsorship of Defendant's products.

22. Defendant's conduct is willful and an intentional violation of Plaintiffs

ghts.

23. Defendant's conduct constitutes trademark infringement under Section

32(1) of the Lanham Act, 15 U.S.C. §1114.

SECOND CAUSE OF ACTION

(Trademark Dilution)

43(c) of the Lanham Act, 15 U.S.C. §1125(c)



25. Plaintiff's VAN HALEN word marks are famous, as the term is used in

15 U.S.C. §1125(c), and were famous before Defendant's first use of KELLY VAN

HALEN as a trademark or service mark based on the extensive nationwide use,

advertising and promotion.

26. Defendant's actions, as described above, are likely to continue to dilute

the distinctive quality of Plaintiffs VAN HALEN word marks by blurring in

violation of Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c).

99911.00009/190851.1 7 COMPLAINT


1 THIRD CAUSE OF ACTION

2 (False Designation)

3 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1)(A)

4 27. Plaintiff repeats and realleges each and every allegation in the

5 foregoing paragraphs as fully set forth herein.

6 28. Defendant's actions, as described above, are likely and will continue to

7 cause confusion or mistake or to deceive as to the origin, sponsorship, or approval of

8 Defendant, her products, services and commercial activities by or with Plaintiff, and

9 thus constitute trademark infringement, false designation of origin, passing off, and

10 unfair competition in violation of Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. 0 to co 11 §1125(a)(1)(A).

cc'

12 FOURTH CAUSE OF ACTION

13 (Common Law Trademark Infringement)

14 29. Plaintiff repeats and realleges each and every allegation in the (.) • 0 0 w -

9 2 ccg

cc z cp o

15 foregoing paragraphs as fully set forth herein.

16 30. By reason of Plaintiffs continuous use and promotion of Plaintiffs § 141 fi z 0 6 co 17 VAN HALEN Marks, as well as the distinctiveness of those marks, consumers

18 associate and recognize the marks as representing a single source or sponsor of

19 goods, and therefore Plaintiff's trademarks are protectable at common law.

20 31. Plaintiff owns and enjoys common law trademark rights in the VAN

21 HALEN Marks, which rights are superior to any rights that Defendant may claim in

22 and to those trademarks with respect to Defendant's products. Plaintiffs trademarks

23 are inherently distinctive and have acquired secondary meaning with the trade and

24 consuming public, and/or have become distinctive in the minds of customers, in that

25 Plaintiff's trademarks are associated with Plaintiff.

26 32. Defendant's use of Plaintiffs trademarks in connection with the

27 advertising, distribution, marketing, promotion, offer for sale, and/or sale of

28 Defendant's products is likely to cause confusion and, upon information and belief,

99911.00009/190851.1 8 COMPLAINT

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Case 2 -cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 9 of 20 Page ID #:14

has caused confusion as to the source of Defendant's products, in that customers will

be likely to associate or have associated such products as originating with Plaintiff,

all to the detriment of Plaintiff.

33. By reason of Defendant's actions alleged herein, Plaintiff has suffered,

and will continue to suffer, irreparable injury to its rights, and has suffered, and will

continue to suffer, substantial loss of goodwill and loss in the value of Plaintiff's

trademarks, unless and until Defendant is enjoined from continuing her wrongful

acts.

34. By reason of Defendant's actions alleged herein, Plaintiff has been

damaged in an amount not presently ascertained, and such damage will continue and

increase unless and until Defendant is enjoined from continuing her wrongful acts.

FIFTH CAUSE OF ACTION

(Unfair Competition)

Cal. Bus. & Prof. Code § 17200, et seq.



36. Defendant's actions complained of herein are unlawful and/or

fraudulent business acts or practices, constituting unfair competition in violation of

California Business and Professions Code § 17200, et seq.

37. As a direct, proximate, and foreseeable result of Defendant's wrongful

conduct as alleged above, Plaintiff has suffered injury and is entitled to relief,

including disgorgement of all revenues, earnings, profits, compensation, and

benefits obtained by Defendant as a result of her unlawful and/or fraudulent

business acts or practices.

38. Defendant's unlawful and/or fraudulent business acts or practices

described above are a serious and continuing threat to Plaintiff, and if Defendant is

allowed to continue her wrongful conduct, Plaintiff will suffer further immediate

and irreparable injury, loss, and damage. In the absence of preliminary and

99911.00009/190851.1 9 COMPLAINT

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Case 2: 1 3-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 10 of 20 Page ID #:15

permanent injunctions, Defendant will continue to engage in the wrongful conduct

described above.

SIXTH CAUSE OF ACTION

(Common Law Unfair Competition)



40. Defendant's actions in connection with Defendant's products are likely

to cause confusion, to cause misrepresentation, to cause mistake, and/or to deceive

the public as to the affiliation, approval, sponsorship, or connection between

Defendant and Plaintiff, and constitute unfair competition at common law.

41. By reason of Defendant's actions in connection with Defendant's

products, Plaintiff has suffered, and will continue to suffer, irreparable injury to its

rights, and has suffered, and will continue to suffer, substantial loss of goodwill and

loss in the value of its trademark, unless and until Defendant is enjoined from

continuing her wrongful acts.

42. By reason of Defendant's actions in connection with Defendant's

products, Plaintiff has been damaged in an amount not presently ascertained, and

such damage will continue and increase unless and until Defendant is enjoined from

continuing her wrongful acts.

SEVENTH CAUSE OF ACTION

(California Trademark Dilution)

Cal. Bus. & Prof. Code § 14247



44. Plaintiffs VAN HALEN Marks are distinctive and famous.

45. Defendant began using Plaintiffs VAN HALEN Marks in connection

with Defendant's products after these trademarks became famous.

46. Defendant's advertising, distribution, marketing, promotion, offer for

99911.00009/190851.1 i f) COMPLAINT

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3-cv-07524-MWF-PJVV Document 1 Filed 10/10/13 Page 11 of 20 Page ID #:16

sale, and/or sale of Defendant's products using Plaintiffs trademarks has injured the

business reputation of Plaintiff and dilutes and/or is likely to dilute the distinctive

value of Plaintiffs VAN HALEN Marks in violation of Section 14247 of the

California Business and Professions Code.

47. Plaintiff has no adequate remedy at law. Injury to Plaintiff and dilution

of Plaintiff's trademarks will continue, all to Plaintiff's irreparable harm, unless

Defendant is enjoined by this Court.

EIGHTH CAUSE OF ACTION

(Declaratory Action)

28 U.S.C. §2201



49. There currently exists between Plaintiff and Defendant an actual,

present, and justiciable controversy based on Defendant's filing of a service mark

application for the mark KELLY VAN HALEN for construction services and

interior design services.

50. Defendant is not currently using KELLY VAN HALEN as a service

mark for the foregoing but has a bona fide intent to do so. Plaintiff requests that the

court declare that such intended usage or eventual usage to be a violation of

Plaintiff's trademark and service mark rights because it infringes and/or dilutes

based on blurring pursuant to Sections 32 and 43(a) of the Lanham Act.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff requests that the Court grant it the following relief:

1. That Defendant be permanently enjoined from continued use of the

infringing mark KELLY VAN HALEN or a confusingly similar variant of

Plaintiff's Marks;

2. That the Court order the impoundment and destruction of all infringing

goods;

99911.00009/190851.1 1 1 COMPLAINT

By: Je er J. Gra Attorneys for Plaintiff INC.


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3. That Defendant be required to abandon with prejudice her currently

pending federal trademark applications for the mark KELLY VAN HALEN.

4. For a final judgment against Defendant for all profits derived from

Defendant's unlawful conduct, all actual damages suffered by Plaintiff (such

amount to be trebled), and Plaintiff's reasonable attorneys' fees and the costs of this

action.

5. For a judgment declaring that Defendant's use of the mark KELLY

VAN HALEN for construction services and interior design services infringes upon

or dilutes by blurring Plaintiff's famous VAN HALEN word marks.

6. That Plaintiff is granted such further relief as the Court deems just.

DATED: October 10 , 2013 KINSELLA WEITZMAN ISER KUMP & ALDISERT LLP

99911.00009/190851.1 12 COMPLAINT

DEMAND FOR TRIAL BY JURY

Plaintiffs hereby demand trial by jury on all issues and causes of action triable

by jury.

DATED: October 10 , 2013 KINSELLA WEITZMAN ISER KUMP & ALDISERT LLP

BY: r■ rvV4l g Jnhifer J.WcGrath Attorneys for Plaintiff ELVH, INC.

99911.00009/190851.1 13

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Case 2: 3-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 13 of 20 Page ID #:18

COMPLAINT


Int. CL: 16

Prior U.S. Cis.: 2, 5, 22, 23, 29, 37, 38 and 50

United States Patent and Trademark Office Reg. No. 2,853,393

Registered June 15, 2004

TRADEMARK PRINCIPAL REGISTER

VAN HALEN

E.L.V.H., INC. (CALIFORNIA CORPORATION) 3500W. OLIVE AVENUE, SUITE 300 BURBANK, CA 91505

FOR PRINTED MATTER FOR PUBLICITY AND PROMOTIONAL MATERIAL, NAMELY, POSTERS; FOLD-OUT POSTER BOOKS; POSTCARDS; MOUN-TED AND UNMOUNTED PHOTOGRAPHS AND PHOTOGRAPHIC PRINTS; NEWSLETTERS; STICK-ERS; CALENDARS DECALS AND TEMPORARY TATTOOS; PRENTED CONCERT TICKETS; PRIN-TED BACKSTAGE PASSES; TRADING CARDS; BOOKS, TRIVIA BOOKS, TOUR BOOKS, ENCYCLO-

PEDIAS, COMIC BOOKS, PICTURE BOOKS, MAGA-ZINLS, ALL IN THE FIELD OF MUSIC AND ENTERTAINMENT; TABLATURE BOOKS; SHEET MUSIC BOOKS; BOOK COVERS, IN CLASS 16 (U.S. CLS. 2, 5, 22, 23, 29, 37, 38 AND 50).

FIRST USE 2-3-1978; IN COMMERCE 2-3-1978.

SER. NO. 78-145,392, FILED 7-18-2002.

JANICE L. MCMORROW, EXAMINING ATTOR-NEY

EXHIBIT A


Int. Cl.: 25

Prior U.S. as.: 22 and 39 Reg. No. 2,866,540

United States Patent and Trademark Office Registered July 27, 2004

TRADEMARK PRINCIPAL REGISTER

VAN HALEN

E.L.V.H., INC. (CALIFORNIA CORPORATION) 3500W. OLIVE AVENUE, SUITE 300 BURBANK, CA 91505

FOR: CLOTHING NAMELY, SHORTS; CAPS; HATS; JERSEYS; BLOUSES; SHIRTS; TANK-TOPS; T-SHIRTS, NAMELY LONG SLEEVE AND SHORT SLEEVE T-SHIRTS; POLO SHIRTS; WOVEN AND KNIT SHIRTS; THERMAL SHIRTS; SWEATERS; JOGGING AND WARM-UP SUITS; SWEAT SHIRTS;

SWEAT PANTS; SWEAT BANDS; HEADBANDS; BANDANAS; JEANS; PANTS; TIES; JACKETS; GLOVES; SCARVES; NECKWEAR, IN CLASS 25 (U.S. CLS. 22 AND 39).


SER. NO. 78-145,326, FILED 7-18-2002.

GLENN CLARK, EXAMINING ATTORNEY

EXHIBIT B

Case 2:13-cv-07524-MWF-PJW Document 1 Filed 10/10/13 Page 16 of 20 Page ID ':21

Int. 41

Prior U.S. Cls.: 100, 101 and 107 Reg. No. 2,868,311

United States Patent and Trademark Office Reps' tered Aug. 3, 2004

SERVICE MARK PRINCIPAL REGISTER

VAN HALEN

E.L.V.H., INC. (CALIFORNIA CORPORATION) 3500W. OLIVE AVENUE SUITE 300 BURBANK, CA 91505

FOR ENTERTAINMENT SERVICES, NAMELY LIVE PERFORMANCES AND APPEARANCES, AND LIVE PERFORMANCES AND APPEARANCES FEA-TURING PRERECORDED MUSIC BY A VOCAL AND INSTRUMENTAL GROUP; FAN CLUB SER-VICES; PROVIDING A WEBSITE FEATURING EN-TERTAINMENT INFORMATION, NAMELY REVIEWS, ARTICLES, INTERVIEWS, MUSIC VI-DEOS, MUSIC CHARTS, PERSONAL BIOGRA-

PHIES. DIARIES, INFORMATION ON MUSIC INSTRUMENTS, TOUR. DATES, GAMES, TRIVIA, ACCESS TO MEMORABILIA, PHOTOGRAPHS, VI-DEO CLIPS, AND AUDIO CLIPS, ALL AVAILABLE VIA A GLOBAL COMPUTER NETWORK, IN CLASS 41 (U.S. CLS. 100, 101 AND 107).


SER. NO, 76-344,683, FILED 12-4-2001.

JANICE L MCMORROW, EXAMINING ATTOR-NEY

EXHIBIT C

tette of Zliniteb etato Vatent anb Zrabemarb Office


Reg. No. 3,701,926 Registered Oct. 27,2009

Int. Cls.: 9, 15, 16, 25, and 41

EL.V.H., INC. (CALIFORNIA CORPORATION) 10100 SANTA MONICA BLVD. C/O NIGRO KARLIN, sunE 1300 LOS ANGELES, CA 90067

FOR: MUSICAL SOUND RECORDINGS, MUSICAL VIDEO RECORDINGS IN CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).

TRADEMARK FIRST USE 3-1-1978; IN COMMERCE 3-1-1078, SERVICE MARK

PRINCIPAL REGISTER FOR MUSICAL INSTRUMENTS, MUSICAL INSTRUMENTS ACCESSORIES, NAMELY, GUITAR PICKS, IN CLASS 15 (U.S. CLS. 2,21 AND 36),

FIRST USE 6-1-2007; IN COMMERCE 6.1-2007.

FOR: STICKERS; TABLATURE BOOKS; SHEET MUSIC BOOKS, TN CLASS 16 (U.S. CLS. 2, 5, 22,23, 29, 37, 38 AND 50).


FOR: CLOTHING, NAMELY, CAPS; HATS; T-SHIRTS, IN CLASS 25 (U.S. CLS. 22 AND 39).


FOR: ENTERTAINMENT SERVICES, NAMELY, LIVE PERFORMANCES AND APPEAR-ANCES BY A VOCAL ANT) INSTRUMENTAL GROUP, AND LIVE PERFORMANCES AND APPEARANCES FEATURING PRERECORDED MUSIC 13 YA VOCAL A NI) INSTRUMENTAL GROUP; PAN CLUB SERVICES; PEOVIDThIC A WEBSITE FEATURING ENTER'IAINMENT INFORMATION, NAMELY, REVIEWS, ARTICLBE INTERVIEWS, MUSIC VIDEOS, MUSIC CHA R LS, PERSONAL BIOGRAPHIES, DIARIES:, LNIOWATION ON MUSIC INSTRUMENTS, 'JOUR DATES, GAMES, TRIVIA, ACCESS 10 MEMORABILIA, PHOTOGRAPHS, VIDEO CLIPS, AND AUDIO CLIPS, ALL AVAILABLE VIA A GLOBAL COMPUTER NETWORK, IN CLASS 41 (U.S. CLS. 100, 101 AND 107).

FIRST USE 6-30-2007; IN COMMERCE 6-30-2007,

OWNER OF U.S. REG, NOS, 2,853,393, 2,868,311, AND OTHERS.

SN 77-020,189, FILED 10-12-2006.

!Arnim ,,( d,, Uriaed l'aerd and rrAgnark Office

EXHIBIT D


Reg. No. 3,701,926 TINA BROWN, EXAMINING ATTORNEY

Page: 2 / RN # 3,701,926

I (a) PLAINTIFFS (Check box if you are representing yoursel I 1

ELVH, Inc.

DEFENDANTS

Kelly Van Halen

(b) Attorneys (Firm Name, Address and Telephone Number. If you are representin g yourself, provide same.)

Jennifer J. McGrath (SBN 211388) KINSELLA WEITZMAN ISER KUMP & ALDISE 808 Wilshire Blvd., 3rd Floor Santa Monica, CA 90401

(310) 566-9808

Attorneys Kno

CITIZENSHIP OF PRINCIPAL PARTIES - For Diversity Cases Only (Place an X in one box for plaintiff and one for defendant.)

PTF DEF PTF DEF Citizen of This State CI 1 El I Incorporated or Principal Place El 4 4

of Business in this State

Citizen of Another State El 2 Ej 2 Incorporated and Principal Place I 1 5 1 I 5 of Business in Another State

Citizen or Subject of a 111 3 = 3 Forei gn Nation Forei gn Country

II. BASIS OF JURISDICTION (Place an X in one box onl y.)

1-1 I U.S. Government Plaintiff DC 3 Federal Question (U.S. Government Not a Party)

El 2 U.S. Government Defendant [134 Diversity (Indicate Citizen of Parties in Item III)

.1)

1-7 6 Uó


UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA CIVIL COVER SHEET

2 Removed from Fri 3 Remanded from P 4 Reinstated or = 5 Transferred from another district 1--) 6 Multi- P 7 Appeal to District State Court Appellate Court Reopened (specify): District Judge from

Liti gation Magistrate Judge

V. REQUESTED IN COMPLAINT: JURY DEMAND: El Yes ED No (Check 'Yes' onl y if demanded in complaint.)

CLASS ACTION under F.R.C.P. 23: n Yes E4 No

El MONEY DEMANDED IN COMPLAINT: S

VI. CAUSE OF ALI ION (Cite the U.S. Civil Statute under which you are filing and write a brief statement of cause. Do not cite jurisdictional statutes unless diversit y .)

This is an action for trademark infringement, trademark dilution, false designation and unfair competition pursuant to the Lanham Act and related California Statutes.

VII. NATURE OF (Place in N. ;n one box only.)

HER'S fATUTS '77,-. 1. W ' co:a cr - -:-, TaRT 11,-, TC.E.."1- S -`1- T .11 ?RISC t; i7.: -:". -1..ABORA4 - .1

ON Ei

[13 I

U

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[13

=130

=153

L__1160

n195

110 Insurance 120 Marine '

Miller Act 140 Negotiable Instrument'

1150 Recovery of Overpayment & Enforcement of Judgment

1 1 Medicare Act 152 Recovery of Defaulted

Student Loan (Excl. Veterans) Recovery of Overpayment of Veteran's Benefits Stockholders' Suits

190 Other Contract Contract Product Liability

796 Franchise , ,

PERSONAL INJURY ' ONAL, RoPEKT Yet

" '7 PETIIJONS .11 , 1 710 Fair Labor Standards Act

720 LeboWgmt. ' Relations 1 730 Labor/Mgmt.

Reportin g & Disclosure Act

740 Railway Labor Ac

' 1 790 Other Labor Utigation

=400 State Reapportionment = 410 Antitrust E-1430 Banks and Bankin g P450 Commerce./ICC

Rates/etc. 110460 Deportation =470 Racketeer Influenced

and Corrupt Organizations

E:1480 Consumer Credit [13 490 Cable/Sat TV Elio Selective Service I-1sso Securities/Commodities/

Exchange P875 Customer Challenge 12

USC 3410 890 Other Statutory Actions

P891 Agricultural A ct 1 1892 Economic Stabilization

Act 1 1893 Environmental Matters n894 Energy Allocatiai Act E13895 Freedom of Info. Act n1900 Appeal of Fee Determi-

nation Under Equal Access to Justice

=950 Constitutionality of State Statutes

0 Airplane 5 Airplane Product

Liability E-1320 Assault, Libel &

Slander El 330 Fed. Employers'

Liability [1 )340 Marine =345 Marine Product

Liability I-1 350 Motor Vehicle r-1355 Motor Vehicle

Product Liability El 360 Other Personal

Injury [13 362 Personal Injury-

Med Malpractice =365 Personal Injury-

Product Liability I 1368 Asbestos Personal

Injury Product Liability

L_i 510 Motiong to Vac.. .e Sente:-......t Habeas Corpus

P 530 General [1 )535 Death Penalty El 540 Mandamus/

Other

J 550 Civil Rights 555 Prison Conditicr

1-3370 Other Fraud H371 Truth in Lend ag 380 Other Personal

Property Damage 1 1385 Property Darn,„,.

Product Liability

422 Appeal 25 11SC 158

ED 423 Withdrawal 25 IJSC 157

FORFEITU - PENALTY11

1.. . _ ri

' PROPERTY

S_OCIAD

791 Ernpl. Rel. Inc. Securit y Act

RIGHT.0 820 Copyrights 530 Patent 840 Trademark

SECURITY I

1 610 Agriculture ... CLVILBICHTS I -7' I

. 141 Voting 1442 Employment 0443 Housing/Acco-

mmodations I 1444 Welfare 1 1445 American with

Disabilities- Employment

1 I 446 American with Disabilities - Other

[11440 Other Civil Rights

LI 620 Other Food cvz Drug

CI 625 Drug Related Seizure of Property 21 U C 881

f___11 630 Liquor Laws 640 R.R. & Truck ED 650 Airline Reg s I._i 660 Occupational

Safety/Health El 690 Other

in , /

ED :13

-7

P D

861 FIFA (139510 862 Black Lun g (923) 863 DIWC/DIWW

(405( g)) 864 SSID Title XVI 865 RSI (405(0)

, REAL PROPERTY-7;A I

NO 113210

E1230 1 1240 E:1245 [13290

Land Condemnation 220 Foreclosure

Rent Lease & Ejectment Torts to Lend Tort Product Liability All Other Real Property

1=15174ailt KC= EJ 462 Naturalization

- Application El 463 Habeas Corpus-

Alien Detainee 465 Other Immi gration

Actions

FEDERAL TAX SUFT in 870 Taxes (U.S.

Plaintiff or Defendant)

111872 IRS - Third Party 26 USC 7609

FOR OFFICrUSE ONLY: Case Number: AFTER COMPLETING THE FRONT SIDE OF FORM CV-7I, COMPLETE THE INFORMATION REQUESTED BELOW.

CV-7I (05/08)

CIVIL COVER SHEET

Page 1 of 2 CCD-JS44

IV. ORIGIN (Place an X in one box only.)

[XI 1 Original Proceedin g

I I


UNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIA CIVIL COVER SHEET

VIII(a). IDENTICAL CASES: Has this action been previously filed in this court and dismissed, remanded or closed? I X I No I 1 Yes

If yes, list case number(s):

VIII(b). RELATED CASES: Have any cases been previously filed in this court that are related to the present case? .)ri No I I Yes

If yes, list case number(s):

Civil Cases are deemed related If a previously filed case and the present case:

(Check all boxes that apply) L j A. Arise from the same or closely related transactions, happenings, or events; or

B. Call for determination of the same or substantially related or similar questions of law and fact; or

n C. For other reasons would entail substantial duplication of labor if heard by different judges; or

I

D. Invoke the same patent, trademark or copyright, and one of the factors identified above in a, bore also is present.

IX. VENUE: (When completing the following inkirmation, use an additional sheet if necessary.)

(a) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named plaintiff resides.

Check here if the government, its agencies or employers is a named plaintiff. If this box is checked, go to item (b).

County in this District:* California County outside of this District; State, if other than California; or Foreign Coun ty

Los Angeles .

(b) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named defendant resides.

Check here if the government, its agencies or employees is a named defendant. If this box is checked, go to item (c).

County in this District:* California County outside of this District; State, if other than California; or Foreign Country

Los Angel es

(c) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH claim arose.

Note: In land condemnation cases, use the location of the tract of land Involved.

County in this District:* California County outside of this District; State, if other than California. or Foreign Coung

Los Angeles .

* Los Angeles, Orange, San Bernardino, Riverside, Ventura, Santa Barbara, or San Luis Obispo Counties

Note: In land condemnation cases, use the location of the tract of land involved

X. SIGNATURE OF ATTORNEY (OR PRO PER): _LA*

Mr

Date October 10, 2013

Jennifer J. McGrath

Notice to Counsel/Parties: The CV-71 (.1S-44) Civil Cover Sheet and the information contained herein neither replace nor supplement the filing and service of pleadings

or other papers as required by law. This form, approved by the Judicial Conference ofthe United States in September 1974, is required pursuant to Local Rule 3-1 is not filed

but is used by the Clerk of the Court for the purpose of statistics, venue and initiating the civil docket sheet. (For more detailed instructions, see separate instructions sheet.)

Key to Statistical codes relating to Social Security Cases:

Nature of Suit Code Abbreviation Substantive Statement of Cause of Action

861 H1A All claims for health insurance benefits (Medicare) under Title 18, Part A, of the Social Security Act, as amended.

Also, include claims by hospitals, skilled nursing facilities, etc., for certification as providers of services under the

program. (42 U.S.C. 1935FF(b))

862 BL All claims for "Black Lung" benefits under Title 4, Part B, of the Federal Coal Mine Health and Safety Act of 1969.

(30 U.S.C. 923)

863 D1WC All claims filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, as

amended; plus all claims filed for child's insurance benefits based on disability. (42 U.S.C. 405(g))

863 DIWW All claims filed for widows or widowers insurance benefits based on disability under Title 2 of the Social Security

Act, as amended. (42 U.S.C. 405(g))

864 SSD All claims for supplemental security income payments based upon disability filed under Title 16 of the Social Security

Act, as amended.

865 RSI All claims for retirement (old age) and survivors benefits under Title 2 of the Social Security Act, as amended. (42

U.S.C. (g))

CV-71 (05/08) CIVIL COVER SHEET Page 2 of 2

Case 2

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i 3-cv-07524-MWF-PJW

LEWIS BRISBOIS BISGAARD DANIEL C. DECARLO,

E-Mail: [email protected] ROBERT M. COLLINS,-SB#

221 North Figueroa Street, Los Angeles, California Telephone: 213.250.1800 Facsimile: 213.250.7900

Attorneys for Defendant HALEN

CENTRAL DISTRICT

E VH, INC., a California

Plaintiff,

vs.

KELLY VAN HALEN,

Defendant.

Document 29 Filed 12/30/13 Page 1 of 9 Page ID #:127

DISTRICT COURT

WESTERN DIVISION

CASE NO. 13-CV7524 MWF-PJW The Hon. Michael W Fitzgerald

DEFENDANT KELLY VAN HALEN'S ANSWER TO COMPLAINT


OF CALIFORNIA,

E-Mail: Robert.Collins©lewisbrisbois.com

UNI1ED

& SMITH LLP SB# 160307

254915

Suite 1200 90012

KELLY VAN

STATES

corporation,

an individual,

Trial Date: None Set 17

18

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26

27

LEWIS 28 BRISBOIS BISGAARD 4849-3774-1847.1 &MEI LIP ATTOPNEIS AT LAW ANSWER

Case 13-cv-07524-MWF-PJW Document 29 Filed 12/30/13 Page 2 of 9 Page ID #:128

LEWIS BRISBOIS BISGAARD &SIVIIH LIP AITOMENS AT LAW

1 Defendant Kelly Van Haien ("Defendant") hereby answers the Complaint (of

2 Plaintiff ELVH, Inc. ("Plaintiff').

3 NATURE OF THE ACTION

4 The allegations in this portion of the Complaint do not call for any admissions

5 or denials.

6 JURISDICTION AND VENUE

7 1. Defendant denies any and all liability in this case, but admits that

8 Plaintiff's Complaint does appear to make allegations arising under the Lanham Act,

9 15 U.S.C. §1502 et seq., the Declaratory Judgment Act, 28 U.S.C. §2201(a), and

10 several California state law claims.

11 2. Defendant denies any and all liability in this case, but admits that venue

12 is proper as alleged by Plaintiff in paragraph 2 of the Complaint.

13 THE PARTIES

14 3. Defendant is without knowledge or information sufficient to form a

15 belief as to the truth of the allegations set forth under Paragraph 3 of the Complaint

16 and thus, denies same.

17 4. Defendant admits that she resides in the County of Los Angeles,

18 California.

19 FACTS










4849-37741847.1

2

ANSWER

Case


LEWIS BRISBOIS BISGAARD & SMIH UP 'MOW?! N lAIV







7 10. Defendant admits the truth of the allegations set forth under Paragraph

8 10 of the Complaint.


10 belief as to the truth of the allegations set forth under Paragraph 11, and

11 subparagraphs lla., 11b., 11c., 11d. and lie., of the Complaint and thus, denies

12 same.




16 13. Defendant admits the facts set forth under Paragraph 13, and

17 subparagraphs 13a., 13b. 13c., 13d. and 13e. of the Complaint.

18 14. Defendant admits the allegations set forth under Paragraph 14 of the

19 Complaint.

20 15. Defendant admits the allegations set forth under Paragraph 15 of the

21 Complaint.

22 16. Defendant denies the allegations set forth under Paragraph 16 of the

23 Complaint.

24 17. Defendant admits that she markets and sells apparel, blankets and other

25 fashion accessories. Defendant denies the remaining allegations set forth under

26 Paragraph 17 of the Complaint.


28 Complaint.

4849-3774-1847.1

3 ANSWER

Case


LEWIS BRISBOIS BISGAARD &SMIH LIP ATTORNE11 A1 LAN

FIRST CAUSE OF ACTION

2 (Infringement of a Registered Trademark)

3 Section 32(1) of the Lanham Act, 15 U.S.C. §1114(1)

4 19. In response to paragraph 19 of the Complaint, Defendant repeats,

5 realleges, and reincorporates herein by reference as though fully set forth her

6 response to the allegations in paragraphs 1 through 18 of the Complaint.


8 Complaint.

9 21. Defendant denies the allegations set forth under Paragraph 21of the

10 Complaint.


12 Complaint.


14 Complaint.

15 SECOND CAUSE OF ACTION

16 (Trademark Dilution)

17 Section 43(c) of the Lanham Act, 15 U.S.C. §1125(c)



20 response to the allegations in. paragraphs 1 through 23 of the Complaint.


22 Complaint.


24 Complaint.

25 THIRD CAUSE OF ACTION

26 (False Designation)

27 Section 43(a) of the Lanham Act, 15 U.S.C. §1125(a)(1)(A)


4 9-3774-1847.1

4 ANSWER


LEWIS BRISBOIS BISGAARD & avIIH 11.13 ARCONFIS Al VW




4 Complaint.

5 FOURTH CAUSE OF ACTION

6 (Common Law Trademark Infringement)









15 and thus, denies same except that Defendant denies that she has made any claim to

16 Plaintiff's trademarks. Defendant has adopted trademarks that are different that

17 Plaintiff's alleged trademarks.


19 Complaint.


21 Complaint.


23 Complaint.

24 FIFTH CAUSE OF ACTION

25 (Unfair Competition)

26 Cal. Bus. & Prof. Code §17200 et seq.



4849-3774-1847,1

5

ANSWER


LEWIS BRISBOIS BISGAARD & SMTH LIP ATFORNR6 AT AV



3 Complaint.


5 Complaint.


7 Complaint.

8 SIXTH CAUSE OF ACTION

9 (Common Law Unfair Competition)


realleges, and reincorporates herein by reference as though fully set forth her



14 Complaint.


16 Complaint.


18 Complaint.

19

20

21

22

23

24

25

26

27

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6 ANSWER

SEVENTH CAUSE OF ACTION

(California Trademark Dilution)

Cal. Bus. & Prof. Code § 14247

43. In response to paragraph 43 of the Complaint, Defendant repeats,

realleges, and reincorporates herein by reference as though fully set forth her

response to the allegations in paragraphs 1 through 42 of the Complaint.

44. Defendant denies the allegations set forth under Paragraph 44 of the

Complaint

45. Defendant denies the allegations set forth under Paragraph 45 of the

Complaint.

4849-3774-1847A

Case 2 i 3-cv-07524-MWF-PJW Document 29 Filed 12/30/13 Page 7 of 9 Page ID #:133


2 Complaint.


4 Complaint.

5 EIGHTH CAUSE OF ACTION

6 (Declaratory Action)

7 28 U.S.C. § 2201





12 Complaint.


14 Complaint.

15 AFFIRMATIVE DEFENSES

16 FIRST AFFIRMATIVE DEFENSE

17 (Failure to State a Claim)

18 1. The FAC and each and every claim for relief therein, fail to allege facts

19 sufficient to state a claim for relief against Defendants.

20 SECOND AFFIRMATIVE DEFENSE

21 (Laches)

22 2. Plaintiffs claims are barred by the doctrine of laches.

23 THIRD AFFIRMATIVE DEFENSE

24 (Release, Waiver, and Estoppel)

25 3, Plaintiff's claims are barred by the doctrines of release, waiver, and

26 estoppel.

27 FOURTH AFFIRMATIVE DEFENSE

LEWIS 28 (Privilege) BRISBOIS BISGAARD 4849-3774-1847.1 7 & SMIH LIP AllORNE4 AT LAW ANSWER

Case 2 i 3-cv-07524-MWF-PJW Document 29 Filed 12/30/13 Page 8 of 9 Page ID #:134

LEWIS BRISBOIS BISGAARD & vI1H LIP AITORKEYS AT LAW

4. Plaintiffs' claims are barred, in whole or in part, because Defendants'

2 activities were privileged or otherwise justified, as such activities were proper, fair,

3 legitimate business activities and/or due to business-related reasons which were

4 neither arbitrary, capricious nor unlawful.

5

6

7 FIFTH AFFIRMATIVE DEFENSE

8 (Lack of Irreparable Harm)

9 5. Plaintiff's claims for injunctive relief are barred because Plaintiff

10 cannot show that it will suffer any irreparable harm from Defendant's actions.

11 SIXTH AFFIRMATIVE DEFENSE

12 (First Amendment)

13 6. The claims made in the Complaint are barred, in whole or in part, by

14 the First Amendment to the Constitution of the United States.

15 SEVENTH AFFIRMATIVE DEFENSE

16 (Right to Assert Additional Defenses)

17 7. Defendant reserves the right to allege additional affirmative defenses as

18 they may become known, or as they evolve during the litigation, and to amend this

19 Answer accordingly.

20 PRAYER

21 WHEREFORE, Defendant prays for judgment as follows:

22 1. That Plaintiff takes nothing by way of its Complaint;

23 2. That the Complaint, and each and every purported claim for relief

24 therein, be dismissed with prejudice;

25 3. That Defendant be awarded her costs of suit incurred herein, including

26 attorneys' fees and expenses; and

27 4. For such other and further relief as the Court deems just and proper.

28

4849-3774-1 847. I 8 ANSWER


Defendant hereby demands a jury trial on all issues which can be heard by a

jury.

DATED: December 30, 2013

DANIEL C. DECARLO ROBERT M. COLLINS Loins BRISBOIS BISGAARD & SMITH LLP

By: Daniel C. De Carlo Attorneys for Defendant KELLY VAN HALEN

/ i 41 -

Daniel C. DeCarlo Attorneys for Defendant KELLY VAN HALEN

By:


DATED: December 30, 2013 DANIEL C. DECARLO ROBERT M. COLLINS LEWIS BRISBOIS BISGAARD SMITH LLP

LEWIS BRISBOIS BISGMRD & SVEN Lip AROONEYS AT lAW

480-1774-18471

ANSWER 9

Case 2

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to 8 RI arm • ,

MAY 2,4.2013

JOHNC J KE,CLEffi(

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COMPLAINT •

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152369.3

LOUIS R. MILLER (State Bar No. 54141) [email protected] MIRA ASI-IMALL (State Bar No. 216842) [email protected] AlviNON Z. SIEGEL (State Bar No. 234981) [email protected] MILLER BARONDESS, LLP 1999 Avenue of the Stars, Suite 1000 Los Angeles, California 90067 Telephone: (310) 552-4400 Facsimile: (310) 552-8400

Attorneys for Plaintiff Stone Temple Pilots, a California partnership

V.

SUPERIOR COURT OF THE STATE OF CALIFORNIA

FOR THE COUNTY OF LOS ANGELES, STANLEY MOSK COURTHOUSE

STONE TEMPLE PILOTS, a California partnership,

B C 51 0 0 4 CASE NO.

COMPLAINT FOR

(I) BREACH OF CONTRACT;

SCOTT WEILAND, an individual, and DOES 1 (2) BREACH OF FIDUCIARY DUTY; through 30, inclusive,

(3) VIOLATION OF THE LANHAM ACT Defendants. (15 U.S.C. § 1125(a)); AND

(4) DECLARATORY AND INJUNCTIVE RELIEF


Plaintiff Stone Temple Pilots, a California partnership, ("Plaintiff' or "SIP") alleges for its

Complaint against Defendants Scott Weiland and DOES 1 through 30, inclusive ("Defendants"),

follows:

PRELIM:OVARY STATEMENT

The Stone Temple Pilots ("STP" or the "Band") is one of America's most popular

rock bands. The Band has sold nearly 40 million records and had numerous Top 10 hits. Since

1 992, the Band built a following of loyal fans and sold out arenas and stadiums worldwide. Their

music shaped a generation, and earned them a Grammy Award, American Music Awards and many

9 other accolades, The Band turned alternative rock into stadium rock,

10 2. Under the STP Partnership Agreement, the Band owns and controls the rights to the

I SIP name and trademarks, copyrights, logos, artwork and marks created and used by the Band,

• 12 These rights are unique and very valuable, and they are integral and highly important to the Band.

13 3. This case is about STP's former lead singer, Defendant Scott Weiland ("Weiland"), • 6 Lid 3 14 violating his duties to the Band and misappropriating the Band's name and assets to further his solo

• - 15 j career. The Band has been—and is continuing to be--damaged by Weiland's actions.

d 16 4. STP was one a the most successful bands of the 1990s. In 2011, the Band discussed

• 17 commemorating the upcoming 20' h anniversary of Core, the Band's seminal and multi-platinum

IS selling first album. The Band planned an extended reissue of Core including previously unreleased

19 live recordings, a tour, limited edition fan collectables and other Band products. The planned tour

20 was a once in a lifetime opportunity to celebrate the history of the Band and the album that

21 catapulted them to stardom. Very few rock bands reach a 20-year milestone.

22 5. In 2012, the Band performed a limited number of tour dates but deliberately did not

023 launch the planned Core commemorative tow. During the 2012 tour, Weiland's behavior began to

"1124 seriously harm the Band. Weiland was repeatedly one to two hours late for live performances;

Q2,5 sometimes he caused them to be canceled altogether, He missed promotional appearances and

426 disrupted other band activities. Weiland's behavior escalated to the point that he even refused to

'327 have any direct communication with his fellow band members.

:28

COMPLA INT 152369,3

• 6. Weiland also refused to commit to a tour schedule that the Band agreed to involving

dates in late 2012, as well as dates in the summer of 2013. Weiland breached his obligation to Make

Band his "first priority commitment." Weiland caused STP to lose lucrative business

4 opportunities for live performances and other appearances, which cost the Band millions.

7. At the time, Weiland and his team of managers and lawyers gave a myriad of excuses

Hand's repudiation of his duties to the Band. It was all a smokescreen.

8. It later became clear that Weiland wanted to hijack the Band's 201h anniversary tour

for himself. Weiland used STP's name and assets to launch a solo tour at the Band's expense.

Weiland began publicizing tour dates by using the Band's name, stating that he would perform all

10 the songs from Core, and using both Core and Purple (the Band's highly successful second album)

to promote his performances. Weiland also used the Band's name, albums, compositions and

recordings in print, on-line and other tour advertising.

9. Weiland deliberately usurped an important band opportunity to launch the

14 Core/Purple 20th anniversary commemorative tour. Weiland's exploitation and misappropriation of

15 STP assets was egregious.

6 10. By February 2013, the Band had had enough of Weiland's repeated wrongdoing. The

17 Band decided to put Weiland's disruptive conduct behind them. They could no longer be held

hostage18 by a band member who continually puts his personal interests above those of the Band, and

19 makes fans suffer as a result. Pursuant to the STP Partnership Agreement, STP fired Weiland and

20 expelled him from the Band.

2 11. After he was fired, Weiland's conduct got worse. Weiland continued to steal STP's

22 intellectual property to promote his solo career, using STP's name, images, artwork and the names of

fn23 STP's two most famous albums, Core and Purple, in promotions and advertising. Weiland has no

j/24 right to use the STP name or any of the Band's assets. That name, as well as the Band's trademarks,

Q25 copyrights, logos, artwork arid marks, are owned by the SIP Partnership.

26 12. STP is moving forward with a new lead singer, Chester Bennington ("Bennington")

of 'n Park fame. On May 18, 2013, the Band performed at the 2013 KROQ "Weenie Roast"

28

2 COMPLAINT

I 52369.3

ic festival to rave reviews. The Band's new single, "Out of Time," is a hit. The Band plans to

e ord a seventh studio album, its first with Bennington.

13, It was not enough for Weiland to usurp the Band's 20 th anniversary tour and exploit

the Band's assets to his sole benefit, depriving the Band of millions of dollars in performance fees.

Now, he wants to stop his former band members from making a living. After refusing to tour with

STP and promoting his solo tour at the Band's expense, Weiland has turned around and threatened to

7 prevent the Band from performing without him.

14. On May 21, 2013, Weiland took his threats further and blatantly interfered with

9 airplay of the Band's new single and a national promotional campaign by falsely claiming that the

10 Band is somehow infringing Weiland's rights. Weiland's claims are btseless, and his attempts to

7e.

i interfere with the Band's relationships are improper. Weiland's conduct must come to an end.

2 15. By this action, STP seeks monetary damages and declaratory and injunctive relief, to

13 stop Weiland's disruptive conduct and to prevent him from profiting at the Band's expense.

4 PARTI1S AND JURISDICTION

16. Plaintiff Stone Temple Pilots ("STF"' or the "Band") is now, and at all times

16 mentioned herein was, a partnership organized under the laws of the State of California.

17 17_ Plaintiff is informed and believes, and thereon alleges, that Defendant Scott Weiland

IS ("Weiland") is an individual who resides in the County of Los Angeles in the State of California.

19 1 18. Plaintiff is informed and believes, and thereon alleges, that Defendants DOES I

20 through 30, inclusive, are individually and/or jointly liable to Plaintiff for the conduct alleged herein.

21 The true names and capacities, whether individual, corporate, associate or otherwise, of Defendants

22 DOES 1 through 30, inclusive, are unknown to Plaintiff at this time. Accordingly, Plaintiff sues

Defendants DOES 1 through 30, inclusive, by fictitious names and will amend this Complaint to

124 allege their true names and capacities after they are ascertained.

25 19. Plaintiff is informed and believes, and thereon alleges, that except as otherwise

1426 alleged herein, each of the Defendants is, and at all times relevant to this Complaint was, the

',27 employee, agent, employer, partner, joint venturer, affiliate, and/or co-conspirator of the Defendants

28 and, in doing the acts alleged herein, was acting within the course and scope of such positions at the

COMPLAINT 15230,3

19

20

2

22

• direction of, and/or with the permission, knowledge, consent and/or ratification of the other

Defendants. In the alternative, Plaintiff is informed and believes, and thereon alleges, that each

Defendant, through its acts and omissions, is responsible for the wrongdoing alleged herein and for

the damages suffered by Plaintiff.

20. At all times relevant to this Complaint, the conduct giving rise to these claims

ed, in part, in the County of Los Angeles.

FACTUAL BACNW 11.39.JID

ne Temple Pilots

2

4

5

14

21. STP is a hugely-popular American rock band. STP's first album, Core, propelled

hem to the top of the charts. Core sold more than 8 million copies and 'spawned the radio hits "Sex

Type Thing," "Plush" and "Creep." The Band released five more studio albums, including the

hugely successful Purple. Upon Its release in 1994, Purple debuted at number one in the United

States. By October, just four months after its release, Purple had sold three million copies. The

d's many accolades include 16 top ten singles on the Billboard rock charts and winning a

my Award for Best Hard Rock Performance.

22. After separating in 2003, STP reconvened in 2008 for a reunion tour and released a

'tied album in 2010.

23. Until February 2013, when the Band fired Weiland, the Band retained its original

lineup: Weiland — lead singer, Dean DeLeo — lead guitar ("D. DeLeo"), Robert DeLeo — bass guitar

and vocals ("R. DeLeo"), and Eric Kretz — drums ("Kieft").

24. In May 2013, the Band chose Bennington to become its lead singer.

The STP Partnership Agreements

25. The STP Partnership was formed in 1992 and confirmed in written agreements in

96 and 2010.

26. In 1996, the Band entered into a written partnership agreement (the "1996 Partnership

Agreement"). Pursuant to Section 10 of the 1996 Partnership Agreement, the management, conduct

and all decisions of STP are determined by a majority of the Partners.

27, After 1996, the Band had its ups and downs, as well as several hiatuses.

7

4 COMPLAINT

152369.3

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112369,3

28. After successfully reuniting in 2008, the Band entered into another written agreement

in 2010 (the "2010 Partnership Agreement"). The 2010 Partnership Agreement reaffirmed the 1996

Partnership Agreement in full, modifying a few of its provisions. The 1996 and 2010 Partnership

Agreements are referred to together herein as the "STP Partnership Agreement."

29. In Paragraph 14 of the STP Partnership Agreement, the partners agreed that each

d member must make the Band his "first priority commitment" over any of their other activities.

30. In Paragraph 16 of the STP Partnership Agreement, the partners also agreed that a

partner may be involuntarily expelled with good cause for, among other things, "grossly negligent

performance or failure of performance of material duties, repeated late or non -appearances at

concerts, death or disability, and similar serious misfeasance, malfeasance and failure of

performance." The partners also agreed that fraudulent conduct and intentional misrepresentation o f

assets of the SIT Partnership would be grounds for expulsion.

31. Under the STP Partnership Agreement, the name "Stone Temple Pilots" is the

xclusive property of the Partnership, not any of the individual members. The Band agreed that

brmer band members cannot use the name STP or refer to themselves as former members of STP.

Weiland Bletandy Viohites His Duties To The Band

32. The Band has had serious problems with Weiland. Weiland regularly struggled with

diction. He had stints in rehabilitation facilities as well as criminal arrests. That trouble has

been well-publicized, including in Weiland's memoir, titled Not Dead and Not For Sale, which was

published in 2011.

33. Throughout the years, Weiland showed up late, or sometimes not at all, for concerts.

He slurred or forgot the words to songs that he wrote the lyrics for. He also forced the cancellation

of many tour dates. The Band endured much strife and lost significant opportunities because of

Weiland.

• 34. In 2011, the Band started discussing how they would celebrate the 20 m anniversary

their seminal 1992 record, Core, as well as their successful 1994 record, Purple. The Band

discussed various options for a tour or several tours that would celebrate these events, but one thing

was sure—the Band intended to tour to commemorate these albums.

5

6

COMPLAINT

35. D. Dace and Weiland had a two-hour phone conversation during which they

2 discussed the look and feel of the commemorative tour, including potential venues, stage look and

recording two new songs for the tour and to be included on the planned reissue of Core. In addition,

D. DeLeo, R. DeLeo and Kretz went to Weiland's house in January 2012 to discuss the anniversary

tours,of the Core and Purple record releases. It was an exciting time for the Band as they developed

6 the concept for their 20 th anniversary tour.

7 36. In the summer of 2012, the Band went on tour but deliberately did not do anything to

commemorate the release of Core. That remained to be done. Unfortunately, the Band was again

embroiled in strife because of Weiland's bad behavior during the tour, He was late for virtually

10 every concert and the reviews of his performance were harsh.

ii 37. At a show just outside Vancouver, British Columbia, Weiland was late, causing the

2 Band to take the stage nearly two hours after their scheduled time. Fans were booing and left the

13 concert early. The following day, Weiland's delinquency caused a tour date in Alberta to be

14 canceled altogether. STP had successfully toured Canada many times in the past and the Band has a

16 strong fan base there. Weiland's conduct significantly harmed STP in Canada'.

16 38. Weiland refused to communicate directly with his band mates. After more than 20

17 years together, the other band members could not even get him on the phone. They had to go

IS through managers and attorneys to transact any business with Weiland. Many simple questions were

19 left unanswered. The other band members were unsure about what was happening with the Band or

20 where Weiland's commitments stood,

39. In January 2013, the rest of the Band asked Weiland for a written assurance that he

22 would show up on time to future tour dates. The Band felt they owed it to their fans to be sure that

17) 23 their live performances did not disappoint. Weiland not only rejected that request, but he also asked

11 24 he Band to give him a bigger share of the touring receipts. The Band refused to do this.

s.)25 40. Shortly thereafter, Weiland announced a solo tour with his band named the

1: 26 "Wildabouts." He began misusing band assets for his own benefit. Weiland prominently displayed

\...1 27 the STP name on his tour advertisements, and he named his tour Purple at the Core, in a blatant

228 attempt to usurp the Band's plan to tour and commemorate those iconic albums. He told the press

6 COMPLAINT

152369.3

aa

that he would be performing the two STP records in their entirety. Announcements for his concerts

2 listed STP more prominently than Weiland's own name, and there was no mention of his

"Wildabouts" band. Weiland was passing off STP as his own to confuse the public and gamer

4 attention for his solo career. Some fans actually believed that the Band would be present for

Weiland's shows because he sometimes referred to the shows as "Scott Weiland and Stone Temple

Pilots." Weiland was also using "WeilandSTP" as his Twitter account, and promoted his solo show

via that medium.

41. To make matters worse, Weiland used STP master recordings for a 60-second radio

9 spot to promote his solo show. Weiland was also using Interstate Love Song, one of the Band's

10 biggest hits to promote his solo tour.

11 42. There was consumer confusion over Weiland's Purple at the Core tour, Some fans

i thought Weiland was going to perform the Core and Purple records in their entirety; others believed

13 that they were buying tickets to a SIT' show and/or a show that includes STP material. Weiland's

o s 14 intent is clear: he is promoting himself by misappropriating STP's name, goodwill and assets.

.2 15 43. STP protested Weiland's use of their band assets. Weiland refused to stop.

16 44. Because of Weiland, STP missed its opportunity to conduct a 20th anniversary Core

P- 17 commemorative tour. Weiland stole that opportunity for himself to the detriment of the Band and in a 1-

1 direct violation of his partnership agreement with his band mates. -•

19 The Band Fires Weiland

20 45. In February 2013, the Band terminated Weiland as a member of Stone Temple Pilots

21 and expelled him from the STP partnerships in accordance with the SIP Partnership Agreement, the

22 Band gave Weiland notice of his breaches and demanded that he cease all advertising for any non-

23 SIP shows that use STP Partnership assets or refer to STP. Weiland refused.

24 Weiland Continues To Steal STP's Assets And Attempts To Sabotage The Baud

j2 46. Under the terms of the Si'? Partnership Agreement, no former band members can use

- '26 the STP name or refer to themselves as former members of STP. Despite that, Weiland continued to

027 perform his Purple at the Core tour and continued to misuse the SIP name. Weiland's erratic

728 behavior on stage and the negative reviews of his performances in 2013 are causing serious damage

7 . COMPLAINT

152369,3

to the STP brand because Weiland is falsely billing himself as "a member of the Stone Temple

Pilots."

47. Weiland also threatened to sabotage the Band's ability to perform without him. In

4 early May 2013, STP announced its plans to perform at a Musicares charity event on May 30, 2013,

h is honoring Bennington and others, Weiland, through his lawyer Gary Stiffelman

"Stiffelman"), continued to assert that Weiland had net been fired by the Band, and that the Band

could not record or perform without Weiland. These claims are baseless, and Weiland knows it.

48. On May 18, 2013, STP performed at the 2013 KROQ "Weenie Roast" music festival

ith new lead singer Bennington. STP played a new song written by Bennington, the DeLeo

10 brothers, and Kretz, and they also played several hit SIP songs. STP's official website reflects the

new reality that the Band will continue to perform, but now with new lead singer Bennington.

12 49. On May 21, 2013, Weiland blatantly interfered with airplay and the related download c_

A 13 promotion of the Band's new single, "Out of Time." Weiland's lawyer, Stiffelman, contacted 5 a

8

1.4 $ 14 KROQ, L.A.'s biggest modern rock radio station, in an effort to disrupt radio play of "Out of Time." S S 7 %.

; 15 Stiffelman falsely claimed that the Band is somehow infringing Weiland's rights and advised

16 KROQ',s head of programming to "back off" the station's support of the new song,

17 50. Enough is enough. Without relief from the Court, Weiland will continue violating

STP's rights, misappropriating SIP assets and interfering with the Band's livelihood.

19 ETELST CAUSE OF ACTION

20 (Breach of Contract against Ati Defendants)

21 51. Plaintiff repeats and realleges each and every foregoing and subsequent allegation

22 contained in the Complaint, as though said paragraphs were set forth in full herein_

7t. 23 f 52. The STP Partnership Agreement, a valid and enforceable contract, existed among the ,A

24

original Band members—Weiland, D. DeLeo, R, DeLeo and Kretz.

53. STP and the remaining partners performed as promised in the SIP Partnership

A eement, and to the utmost extent possible, fulfilled each and every term of the contract.

\.)27 54. However, as described herein, Weiland breached the contract by refusing to make "a

8 fi rst priority commitment to perform commitments" made by the Band as required in Paragraph 14

COMPLAINT 152)69:3

1

of the STP Partnership Agreement. Instead of agreeing to tour dates that had been approved by a

2 majority vote of the Band, Weiland shirked his obligations to the STP Partnership and sought instead

to pursue solo business opportunities at the Band's expense. He wrongfully misappropriated the

4 Band's opportunity to do a 20 th anniversary tour and colluded with his attorney, management and

5 others, in order to keep those performance revenues for himself. Weiland also unreasonably refused

6 lucrative performance opportunities, causing the Band to lose millions.

55, Weiland also breached the contract, and violated his obligations to the SIP

Partnership, by failing to perform his duties, engaging in grossly negligent conduct,

misappropriating STP assets and engaging in other acts of malfeasance and unlawful conduct.

10 56. After Weiland was expelled from the STP Partnership pursuant to Paragraph 16 of the

11 SIP Partnership Agreement, he further breached the contract in connection with his wrongful use of

12 tb.,7 Band's name, goodwill and other assets, S g -3 13 57. As a proximate result of Defendants' conduct, Plaintiff has suffered damages believed

14 to be in excess of $2 million, with the exact amount to be proven at trial. z

r. a 8 IS SECOND CAUSE OF ACTION z

1 (Breach of Fiduciary Duty against All Defendants) J 4:3

17 .58. Plaintiff repeats and realleges each and every foregoing and subsequent allegation

:c 15 contained in the Complaint, as though said paragraphs were set forth in full herein.

19 59. Weiland owes SIP fiduciary duties of the highest character. SIP is owed special

20 duties, including the duties of loyalty, honesty, care, and good faith and fair dealing. STP relied on

21 Weiland to discharge his duties and obligatiops in a manner that would cause no detriment to STP's

22 rights in connection with the Band's affairs.

60. SIP reposed trust and confidence in,Weiland in this regard, which w:g voluntarily

- 1 24 assumed and accepted. Weiland was obligated to diligently perform all services and responsibilities

25 under the STP Partnership Agreement with the utmost due care and good faith,

26 61, Weiland breached his fiduciary duties to STP by, among other things, failing to

27 comply with his obligation to give STP business his "first priority commitment," failing to disclose

28 the true basis for his refusal to comply with his duties to STP, rnisappropriating STP's opportunity to

9 COMPLAINT

I 52369.3

conduct a 20th anniversary tour, making false or misleading representations regarding STP assets,

and refusing to disclose all material information in connection with partnership assets and other

partnership business, which has caused damage to STP's interests. Such conduct amounts to a

4 breach of the special duties of care, loyalty and competence.

62. As a direct and proximate result of Weiland's breaches of his duties, STP has suffered

damages in an amount to be proven at trial, but believed to be in excess of $2 million.

63. Plaintiff believes Defendants' conduct was intentionally deceitful and done with the

intent of depriving Plaintiff of its property and legal rights and to cause it injury. Defendants'

9 actions subjected Plaintiff to unjust hardship and undue injury. Defendants' conduct was malicious,

10 fraudulent and/or oppressive, and was committed with a conscious disregard of the rights of

1

Plaintiff, Accordingly, Plaintiff is entitled to an award of punitive or exemplary damages in an

12 amount sufficient to punish Defendants and make an example of them.

1

THIRD CAUSE OF ACTION

14

(Violation of the Lanham Act (15 U.S.C. § 1125(a)) against All Defendants)

1

64. Plaintiff repeats and real leges each and every foregoing and subsequent allegation

6 ontained in the Complaint, as though said paragraphs were set forth in full herein.

7

65. Stone Temple Pilot's name and associated trademarks, trade names, trade dress, and

slogans, have been extensively advertised and promoted throughout the world since the early 1990s

19 connection with music and entertainment, and other related services and products. As a result of

20 s advertising and promotion, the STP name and associated trademarks, trade name, trade dress,

21 and slogans are identified by the purchasing public with Plaintiff. Plaintiff's trademark to "Stone

22 Temple Pilots" and associated trademarks, trade name, trade dress, and slogans are famous and

fr.s23

distinctive within the meaning of U.S. trademark law, including 15 U.S.C. § 1125.

/124

66. Defendants' use in interstate commerce of the name and mark "Stone Temple Pilots"

and associated trademarks, trade name, trade dress, and slogans in connection with the advertising,

marketing, and promotion of Weiland and his products and services constitutes a violation of 15

U.S.C. §1125(a), in that it creates . a false designation of origin as to the goods and services

advertised, distributed, offered for sale; and sold by Defendants, which is likely to confuse, mislead,

1 0 COMPLAINT

152369.3

2

6

7

10

11

12

13

14

1

16

17

Is

19

21

22

7,23

-r1 24

25

26

27

• 0 deceive the consuming public and trade by creating the false impression that Weiland and his

products and services were approved, sponsored, endorsed, guaranteed by, and/or are in some way

affiliated with STP.

67. Defendants' use in interstate commerce of the name and mark "Stone Temple Pilots"

and associated trademarks, trade name, trade dress, and slogans in connection with the advertising,

marketing and promotion of Weiland and his products and services also constitutes a false or

misleading description or representation in interstate commerce, in violation of 15 U.S.C. §1125(a

68. As a direct and proximate result of the conduct of Defendants, Plaintiff is entitled,

pursuant to 15 U.S.C. § 1117(a), to the recovery of: (1) Defendants' profits; (2) any damages

sustained by Plaintiff as a result of Defendants' conduct, the precise amount of which shall be

established by Plaintiff at trial; and (3) Plaintiff's costs of suit.

69. As a direct and proximate result of the conduct of Defendants, Plaintiff is entitled,

pursuant to 15 U.S.C. § 1117(c), to the recovery of statutory damages for each non-willful use, per

mark, per type of goods or services sold, offered for sale, or distributed.

70. Plaintiff is informed and believes, and based thereon alleges, that Defendants

committed the acts alleged abov with knowledge of Plaintiff's prior right to and use of Plaintiff's

trademarks, and with the willful intent to trade on STP's goodwill and reputation. As such, this case

is exceptional under 15 U.S.C. §1117(a)(3), thereby entitling Plaintiff to the recovery of its

attorneys' fees and the recovery of treble damages pursuant to 15 U.S.C. §1117(b); and also

statutory damages of One Million Dollars ($1,000,000) for each willful use, per mark, per type of

goods or services sold, offered for sale, or distributed. '

71. Defendants' wrongful acts will continue unless enjoined by this Court. Plaintiff has

no adequate remedy at law and is suffering irreparable harm and damage as a result of the aforesaid

acts of Defendants. Accordingly, Plaintiff is entitled to preliminary and permanent injunctive relief

prohibiting Weiland and his agents, employees, attorneys, and all persons or entities acting in

concert or participation with him, from:

i.

Using directly or indirectly the name "Stone Temple Pilots" or "STP" (or any

name confusingly similar thereto) and associated trademarks and/or trade names;

11 COMPLAINT

152369.3

LA.'r

• ii. Stating or implying that Weiland is a current or former member of the Stone

Temple Pilots;

iii. Using directly or indirectly any tour names that reference STP songs or album

titles (such as Weiland's current tour, Purple at the Core);

iv, Using directly or indirectly the Band's album titles, compositions, recordings,

albums, artwork, marks, photography, individual or collective images, and other

assets in connection with advertising and promoting Weiland's artistic endeavors,

including without limitation performances or appearances;

v. Directly or indirectly interfering with or disrupting the Band's business

operations; and

vi. Using "Stone Temple Pilots" or "STP" (or any names confusingly similar

thereto), in whole or in part, to in any way identify Weiland in connection with

any digital or non-digital platforms, including without limitation youtube,

faceboolc, twitter, instagram, google+ or other social media outlets, in order to

stop creating public confusion.

72. As act forth hereih, Weiland is currently touring and the Band is suffering irreparable

harm due to his misappropriation of the Band's assets and his misleading advertising and promotion

of his solo performances.

FOURTH CAUSE OF ACTION

, (Declaratory and Injunctive Relief against All Defendants)

73, Plaintiff repeats and realleges each and every foregoing and subsequent allegation

22 contained in the Complaint, as though said paragraphs were set forth in full herein.

23 74. As alleged herein, an actual controversy has arisen and now exists between Plaintiff

and Weiland concerning their respective rights, duties and interests regarding STP and the SIP

Partnership Agreement,

75. Plaintiff contends that in February 2013, pursuant to Paragraph 16 of the STP

Partnership Agreement, Si? had grounds to and did in fact expel Weiland from the Band for grossly

negligent performance, failure to perform material duties, repeated late or non-appearances at

12 COMPLAINT

152369.3

• I concerts, malfeasance and/orintentional misappropriation oISTP assets, Weiland disputes that STP

fired him.

76. Plaintiff further contends that under Paragraph 16 of the STP Partnership Agreement,

Weiland is an expelled former partner who has no right, title or interest in the "Stone Temple Pilots"

or "STP" name (or any name confusingly similar thereto), is prohibited from using or permitting

' 6 other's" to use the "Stone Temple Pilots" or "STP" name (or any name confusingly similar thereto) in

7 his artistic endeavors, and may not refer to himself as "formerly a member of' the Band (or any

8 similar phrase) in connection with such artistic endeavors. Plaintiff is informed and believes that

Weiland disputes that contention.

0 77. The Court must resolve these actual controversies between the parties.

1 78, Plaintiff also seeks a judicial determination that Weiland must comply with all of his

12 contractual duties and fiduciary obligations to STP in connection with Weiland's obligations as a 11 3 1 13 former partner of the STP Partnership, Plaintiff further seeks a judicial determination that SIP has 14, :1:11 .4 • 14 exclusive rights to the STP name and trademarks, copyrights, logos, artwork and marks created and z t „ 0 r

s IS used by the Band. •

,1.4 16 79, • Plaintiff requests prelitninary and permanent injunctive relief. As set forth herein,

- A a 17 Weiland should be prohibited from using the Band's name SIP, as well as confusingly similar

8 names, the Band's album names, its compositions and recordings, its trademarks, copyrights, logos, a •

.19 artwork and marks created and used y the Band.

20 80. A judicial declaration is necessary and appropriate so the parties may ascertain their

21 respective rights, duties and obligations.

22 fRAYER JECIR. RELIEF .

23 WITE14..E.FORE, Plaintiff respectfully prays for the following relief: • • ,S -14 As to the First Cause of Action:

1. For general, incidental and consequential damages in excess of the jurisdictional limit

126 of Court;

2. For pre- and postjudgment interest:

For costs of suit.

COMPLAINT 523693

a

As to the Second of Action:

1. For general, incidental and consequential damages in excess of the jurisdictional it

of this Court;

2. For punitive and/or exemplary damages in an amount sufficient to punish, deter and

pie of Defendant Scott Weiland;

3. For imposition of a constructive trust on any ill-gotten gains or other misappropriated

partnership assets;

8 4. For pre- and post-judgment interest;

. For costs of suit.

As to the Third Cause_o_f A9tion:

For general, incidental and consequential damages in excess of the jurisdictional limit

2. For treble darriages;

3. For statutory damages in the maximum amount available by law

4., For disgorgement of the revenues and profits received by Defendant as a result of his

authorized use—and infringement of—STP's name and assets;

5. For preliminary and permanent injunctive relief as set forth herein;

is 6. For pre- and post-judgment interest;

19 7. For attorneys' fees;

20 8. For costs of suit.

21 As t the Fourth Cause of Action:

1. For injunctive and declaratory relief as set forth herein.

'v27

DATED: May 24, 2013 MILLE •NDESS, LLP

IA

X. LLER A rneysfor Plaintiff STONE TEMPLE PILOTS

MILLER B S NDESS, LLP

By: Ls S R, L R A ' cys for Plaintiff STONE TEMPLE PILOTS •

15 COMPLAINT

DATED: Ivlay 24, 2013

As to All Causes of Action:

1. For such other and further relief as the Court may deem just and proper.

3

9

1.1

12

1

14

1

17

18

19

20

•

2

23

REMAND FOR JURY TRIAL

, Plaintiff hereby demands a jury trial.

152369.3

4EY

ems 1-6 below must be completed s

Ira o pag_e 2). 1. Check one box b r he case type that

Auto Tort

FR Auto (22) Uninsured motorist (46) Other PI/PD/WD (Personal Injury/Property Dama ge/Wrongful Death) Tort •

I I Asbestos (04)

El Product liability (24)

Medical malpractice (45)

Other PUPDNVD (23)

Non-PIIPDNVD (Other) Tort

Business tort/unfair business practice (07)

r—i Civil rights (08)

FT Defamation (13)

Fraud (16)

ri Intellectual property (19)

Professional ne gligence (25)

Other non-Pl/PDNVD tort (35)

Employment i Wrongful termination (36)

ED Other employment (15)

best describes this Case:

Contract 3.740 collections (09) ri I Breach of contract/warranty (06)

fl Rule

nOther collections (09)

H Insurance coverage (18) Other contract (37)

Real Property

Eminent domain/Inverse condemnation (14)

1 -1 Wrongful eviction (33)

LJ Other real property (26)

Unlawful Detainer

F7 Commercial (31)

[Li Residential (32)

LIII Drugs (39)

Judicial Review

P1 Assetforfeiture (05)

Petition re: arbitration award (11)

1-1 Writ of mandate (02) • ni Other judicial review (39)

Provisionall y Complex Civil Liti gation (Cal. Rules of Court, rules 3.400-3.403)

FT Antitrust/Trade regulation (03)

Fl Construction defect (10)

Mass tort (40)

Securities litigation (28)

71 Environmental/Toxic tort (30) I I Insurance coverage claims arisin g from the

above listed provisionally complex case types (41)

Enforcement of Jud gment

Enforcement of judgment (20) Miscellaneous Civil Complaint

Fl RICO (27)

Other complaint (not specified above) (42)

Miscellaneous Civil Petition

Partnership and corporate governance (21)

E] Other petition (not specified above) (43)

4.0 CM-010

ATTORNEY OR PARTY WITHOUT ATTORNEY (Nam• Stale ear number. end address):

—Louis R. Miller (SBN 54141) Mira Hashmall (SBN 216842) MILLER BARONDESS, LLP 1999 Avenue of the Stars, Suite 1000 Los Angeles, CA 90067

TELEPHONE NO.: (310) 552-4400 FAX 140.: (310) 552-8400

Kremer Foe pg•mti; Stone Temple Pilots

FOR COURT USE ONLY

FILED LOS ANGELO SUPERIOR COIllift

. Mg 2 4. 20 '13

Jure .-KE, CLERK f

BY MARY F • Pt S.DE• 0

SUPERIOR COURT OF CAUFORNIA, COUNTY OF Los AngelesSTREET itooREss: 111 North Hill Street MAILING ADDRESS: •

CTTY ANIO ZIP CODE: Los Angeles 90012 BRANCH rime:Stanley osk Courthouse

CASE NAME: STONE TEMPLE PILOTS v. scorr WELLAND

CIVIL CASE COVER SHEET Complex Case Designation CASE NUMBER:

1131 Unlimited Fl Limited I I Counter ri Joinder (Amount (Amount

demanded is demanded demanded

exceeds $25,000) $25,000 or less)

with first appearance by defendant (Cal. Rules of Court, rule 3.402)

MOE B c 5 1 0 0 4 0 DEPT.

2, This casq El is Iii Is not complex under rule 3.400 of the California R of Court. If the case is complex, mark the factors rdqulring exceptional judicial management a I 1 Large number of separately represented parties d. 1-1 Large number of witnesses b F7 Extensive motion practice raising difficult or novel e. I 1 Coordination with related actions pending in one or more courts

issues that will be time-consuming to resolve In other counties, states, or countries, or in a federal court c. ri Substantial amount of documentary evidence f. E7 Substantial postjudgment judicial supervision

3. Remedies sought (check all that apply): a. [Ti monetary b. nonmonetary; declaratory or injunctive relief c. [Ti punitive

4. Number of causes of action (specify): Four 5. case I is lxi is not a class action suit.

6. there are any known related cases, file and serve a notice of related ca Date: May 24, 2013 Mira Hastimall

TYPE OR PRiNT

(Yot.; may Use form CM-015.)

NOTICE • •Plaintiff must file this cover sheet with the first paper filed in the action or proceeding (except small claims cases or cases filed

Under the Probate Code, Family Code, or Welfaze and Institutions Code). (Cal. Rules of Court, rule 3.220.) Failure to file may result sanctions.

• ..F,ile this cover sheet in addition to any cover sheet required by local court rule. ▪ this case is complex under rule 3.400 et seq. of tne California Rules of Court, you must serve a copy of this cover sheet on an ,other parties to the action or proceeding.

• Vnless this is a collections case under rule 3.740 or a complex case, this cover sheet will be used for statistical purposes only.. 2

key Use 01 E.sigren'e

0 ...Lil y 1, 20071 CIVIL CASE COVER SHEET .403, 3.740;

rake, sick 3.10 So.0

INSTOTIONS ON HOW TO COMPLETE THE 11/ER SHEET CM-010

To Plaintiffs and Others Filing First Papers. If you are filing a first paper (for example, a complaint) in a civil case, you must

complete and file, along with your first paper, the Civil Case Cover Sheet contained on page 1. This information will be used to compile statistics about the types and numbers of cases filed. You must complete items 1 through 6 on the sheet. In item 1, you must check

one box for the case type that best describes the case. If the case fits both a general and a more specific type of case listed in item 1, check the more specific one. If the case has multiple causes of action, check the box that best indicates the primary cause of action. To assist you in completing the sheet, examples of the cases that belong under each case type in item 1 are provided below. A cover sheet must be filed only with your initial : paper. Failure to tile a cover sheet with the first paper filed In a civil case may subject a party, its counsel, or both to sanctions under rules 2.30 and 3.220 of the California Rules of Court.

To Parties in Rule 3.740 Collections Cases. A "collections case" under rule 3.740 is defined as an action for recovery of money owed in a sum stated to be certain that is not more than $25,000, exclusive of interest and attorney's fees, arising from a transaction in which property, seivices, or money was acquired on credit. A collections case does not include an action seeking the following: (1) tort damages, (2) punitive damages, (3) recovery of real property, (4) recovery of personal property, or (5) a prejudgment writ of attachment. The Identification of a case as a rule 3.740 collections case on this form means that it WI be exempt from the general time-for-service requirements and case management rules, unless a defendant files a responsive pleading. A rule 3.740 collections case will be subject to the requirements for service and obtaining a judgment in rule 3.740. To Parties in Complex Cases. In complex cases only, parties must also use the Civil Case Cover Sheet to designate whether the case is complex. If a plaintiff believes the case is complex under rule 3.400 of the California Rules of Court, this must be indicated by completing the appropriate boxes in items 1 and 2. If a plaintiff designates a case as complex, the cover sheet must be served with the complaint on all -parties to the action. A defendant may file and serve no later than the time of Its first appearance a joinder in the plaintiffs designation, a counter-designation that the case is not complex, or, if the plaintiff has made no designation, a designation that the case is complex. CASE TYPES AND EXAMPLES

Provisionally Complex Civil Litigation (Cal. Rules of Court Rules 3.400-3.403)

Antitrust/Trade Regulation (03) Construction'Defect (10) Claims Involving Mass Tort (40) Securities Litigation (28) Envlronmental/Toxic Tort (30) Insurance Coverage Claims

(arising from provisionally complex case type listed above) (41)

Enforcement of Judgment Enforcement of Judgment (20)

Abstract of Judgment (Out of County)

Confession of Judgment (non. domesticrelations)

Sister State Judgment Administrative Agency Award

(not unpaid taxes) Petition/Certification of Entry of

Judgment on Unpaid Taxes Other Enforcement of Judgment

Case Miscellaneous Civil Complaint

RICO(27) Other Complaint (not specified

above) (42) Declaratory Relief Only Injunctive Relief Only (non-

harassment) Mechanics Uen Other Commercial Complaint

Case (non-tort/non-complex) Other Civil Complaint

(non-tort/non-complex)

Miscellaneous Civil Petition Partnership and Corporate

Governance (21) Other Petition (not specified

above) (43) Civil Harassment Workplace Violence Elder/Dependent Adult

Abuse Election Contest Petition for Name Change

Petition for Relief from Late Claim

Other Civil Petition

Auto Tort Auto (22)—Personal Injury/Property

DamageJWrongful Death Uninsured Motorist (46) Of the

case iMiohies an uninsured motorist claim subject to arbitration, check this item instead of Auto)

Other PI/PD/WD (Personal Injury/ Property Damage/Wrongful Death) Tort

Asbestos (04) Asbestos Property Damage Asbestos Personal Injury/

Wrongful Death Product Liability (not asbestos or

toxic/environmental) (24) Medical Malpractice (45)

Medical Malpractice- Physicians & Surgeons

Other Professional Health Care Malpractice

Other PI/PD/WO (23) Premises Liability (e.g., sltp

and fall) Intentional Bodily Irjury/PDAND

(e.g„ assault, vandalism) Intentional Infliction of

Emotional Distress Negligent Infliction of

Emoticnal Distress Other PI/PD/VVD

Non-PI/PDAND (Other) Tort Business TfrUUnfair Business

Practice (07) Ciyi! Rights (e.g., discrimination.

false arrest) (not civil -, harassment) (08)

D ef amation (e.g., slander, libel) (13)

uri (16) Intellectual Property (19) 'Professional Negligence (25)

Legal Malpractice Other Professional Malpractice

(no( mod(cal or legal)

Other Non-Pl/PDAND Tort (35) Employment

yV,rongful Temilnation (36) Other Employment (15)

Contract Breach of Contract/Warranty (06)

Breach of Rental/Lease Contract (not unlawful detainer

or wrongful eviction) Contract/Warranty Breach—Seller

Plaintiff (not fraud or negligence) Negligent Breach of Contract/

Warranty Other Breach of ContractANarranty

Collections (e.g., money owed, open book accounts) (09) Collection Case—Seller Plaintiff Other Promissory Note/Collections

Case Insurance Coverage (not provisionally

complex) (18) Auto Subrogation Other, Coverage

Other Coreract (37) Contractual Fraud Other Contract Dispute

Real Property Eminent Domain/Inverse

Condemnation (14) Wrongful Eviction (33) °the, Rea! Property (e.g., quiet title) (26)

Writ of Possession of Real Property Mortgage Foreclosure Quiet Title Other Real Properly (not eminent domain, landlord/tenant, or foreclosure)

Unlawful Detainer Commercial (31) Residential (32) Drugs (38) (if the case involves illegal

drugs, check this item; otherwise, report as Commercial or Residential)

Judicial Review Assel Forfeiture (05) Petition Re: Arbitratioe Award (11) Writ of Mandate (02)

Writ-Administrative Mandamus Writ-Mandamus on Limited Court

Case Matter Writ-Other Limited Court Case

Rev;ew Other Judicial Review (39)

Review of Health Officer Order Notice of Appeal-Labor

Commissioner Appeals

CM-010 (Rev. July 1, 2007) CIVIL. CASE COVER SHEET Pape 2 crl 2

CASE NUMBEia C •

slow TITLE: STONE TEMPLE PILOTS v. SCOTT WEILAND

CIVIL CASE COVER SHEET ADDENDUM AND STATEMENT OF LOCATION

(CERTIFICATE OF GROUNDS FOR ASSIGNMENT TO COURTHOUSE LOCATION)

This form is required pursuant to Local Rule 2.0 In all new civil case filings in the Los Angeles Superior Court.

Item I. Check the types of hearing and fill in the estimated length of hearing expe ,.-;ted for this case:

JURY TRIAL? al YES CLASS ACTION? LIII YES LIMITED CASE? 1 .1 YES TIME ESTIMATED FOR TRIAL 7 El HouRsd71DAYs

Item II. Indicate the correct district and courthouse location (4 steps — If you checked ''Limited Case", skip to Rem III, Pg. 4):

Step 1: After first completing the Civil Case Cover Sheet form, find the main Civil Case Cover Sheet heading for your case in the left margin below, and, to the right in Column A , the Civil Case Cover Sheet case type you selected.

Step 2: Check Eng Superior Court type of action in Column B below which best describes the nature of this case.

Step 3: In Column C, circle the reason for the court location choice that apples to the type of action you have checked. For any exception to the court location, see Local Rule 2.0.

Applicable Reasons for Choosing Courthouse Location (see Column C below)

1. Class tions must be Ned in the Stanley Mink Courthouse, central district. 2. May be filed in central (other county, or no bodily iniury/prooely-damage). 3. Location where cause of action arose. 4. Location where bodily injury, death or damage occurred. 5. Location where performance required or defendant resides.

6. Location at property or permanently garaged vehicle. 7. Location where petitioner resides. 8. Location wherein defendant/respondent functions wholly. 9. Location where one or more of the parties reside.

10. Location of Labor Commissioner Office

Step 4: Fill in the information requested on page 4 in Item III; complete Item IV. Sign the declaration.

*; Gov h el '•

' '.,iiiegory: c T

' • .f.Checi(F,orAy:i.one ..:i , A ii•..5h. :,•7-.,9 ,-,sc•- • !5..

4..'ep::::tO;''.

Auto (22) r---i A7100 Motor Vehicle - Personal Injury/Property Damage/Wrongful Death 1., 2., 4.

Uninsured Motorist (46) .... 1.,2.,4,__ _t__ i A7110 Personal Iniury/Property0amage/Wrongful De?:th —Uninsuredfvfotorist

Asbestos (04) r—I A6070 Asbestos Property Damage 2.

2. I A7221 Asbestos - Personal InfuryNVrongful Death

Product Liability (24) 1., 2., 3., 4., 8. I I A7260 Product Liability (not asbestos or toxic/environmental)

Medical Malpractice (45) 71 A7210 Medical Malpractice - Physicians & Surgeons ,

1., 4.

1., 4. - I A7240 Other Professional Health Care Malpractice

t Other

Personal Injury Property Damage Wrongful Death

(23)

1,4.

1., 4.

1., 3.

1., 4. .

A7250 Premises Liability (e.g.. slip and fall) .

r'n A7230 Intentional Bocily Injury/Property Damage/Wrongful Death (e.g.. assault, vandalism, etc.)

F-1 A7270 Intentional lnfliction of Emotional Distress

I—I A7220 Other Persnnal injury/Property Damage/Wrongful Death .

LACIV 109 (Rev. 03/11)

LASC Aribroved 03-04 CIVIL CASE COVER SHEET ADDENDUM

AND STATEMENT OF LOCATION Local Rule 2.0

Page 1 of 4 LA-CV/ 09

•

Tin : STONE TE E PILOTS v. SCOTT WEILAND CASE NUM9ER

: • .,ct s e . .1,- S • - ,.;-.4, Gite9.

-

t 1 pa otActiL. ..„.„ , ' Chlec - '

*Zie-

Business Tort (07) t J A6029 Other Commercial/Business Tort not fraud/breach of contract)

Civil Rights (08) 1., 2., 3. J A6005 Civil Rights/Discrimination

Defamation (13) 1., 2„ 3. A6010 Defamation (stander/libel) '

Fraud (16) 1., 2„ 3. A6013 Fraud (no contract)

Professional Negligence (25) A6011 Legal Malpractice

A8050 Other Professional Malpractice (not medi cal

Other (35) EJ A6025 Other Non-Personal Injury/Property Darnage tort . 2.,3.

Wrongful Termination (36) A6037 Wrongful Termination

. Other Employment (15) 10.

A6024 Other Employment Complaint Case

A6109 Labor Commissioner Appeals

Breach of Contract/ Warranty (06)

(not insurance)

-

ri A6004 Breach of Rental/Lease Contract (not unlawful detainer or wrongful eviction)

n A6008 Contract/Warranty Breech -Seller Plaintiff (no fraud/negligence)

I-I A6019 Negligent Breach of Contract/Warranty (no fraud)

1-5r1 A6028 Other Breach of Contract/Warranty (not fraud or negligence)

2., 5.

2., 5.

., 2

CoNections (09) r

= A6002 Collections Case-Seller Plaintiff 2., S., 6.

2., 5. I I A6012 Other Promissory Note/Collections Case

Insurance Coverage (18) El A6015 Insurance Coverage (not complex) 1., 2.: S., B.

Other Contract (37)

ni A6009 Contractual Fraud

[.- A6031 TorbOus Interference

1-1 A6027 Other Cont--9c1 Dispute(not breach/insurance/fraud/negligence)

1., 2.. 3., 5,

1., 2., 3., 5.

1.. 2., 3., 8,

Eminent Domain/Inverse Condemnation (14) I A7300 Eminett Domain/Condemnation Number of parcels 2.

Wrongful Eviction (33) . L 1 A6D23 Wrongkil Eviction Case 2., 6.

Other Real Property (26)

FT A6018 Mortgage Foreclosure

i 1 A6032 Quiet Title

2., 6.

2,, 6.

2., 6. El A6060 OtherRealProperty(no emi d n,t dlord/lanant, foreclosure)

Unlawful Detainer-Commerci (31)

2„ 6. i A6021 Unlawful Detainer-Commercial (not drugs or wrongful eviction)

Unlawful Detainer-Residential (32) IITJ A6020 Unlawful Detainer-Residential (not drugs or wrongful eviction) 2., 6.

Unlawful Post-Foreclosure (34)

Detainer- El A6023F Uniawri.,1 Detainer-Post-Foreclosure 2., 6.

Unlawful Detainer-Drugs (38) 2., 6. A6022 Uniawiiii Dctainer-Drugs

LACIV-109 (Rev. 03111)

LASDkppro ■..ed 03-04

CIVIL CASE COVER SHEET ADDENDUM AND STATEMENT OF LOCATION

Lc cal Rule 2.0 Page 2 of 4

6-

t; 8

re S

E

AT TITLE: STONE TEMPLE OTS v. SCOTT WEILAND

A CivilCover Sheet

Category Na.

B Type of Action

(Check only one)

C Applicable Reasons -

See Step 3 Above

Asset Forfeiture (05) A6108 Asset Forfeiture Case 2., 6.

Petition re Arbitration (11) 2.. 5. A6115 Petition to Compel/ConfirmNecate Arbitration

F-1 A6151 Writ- Administrative Mandamus 2., B.

Writ of Mandate (02) F-1 A6152 Writ - Mandamus on Limited Court Case Matter 2.

A6153 Writ - Other LimiteU Court Case Review 2. (

..... Other Judicial Review (39) A6150 Other Writ /judicial Review 2., B.

Antitrust/Trade Regulation (03) 1., 2., 8, A6003 Antitrust/Trade Regulation

Construction Defect (10) 1., 2., 3. A6007 Construction Defect

Claims Involving Mass Toil r--1 I I A6006 Claims Involving Mass Tort 1., 2., B.

(40)

Securities Litigation (28) 1-1 A6035 Securities Litigation Case 1., 2., 8.

Toxic Tort A6036 Toxic Tort/Environmental Environmental (30)

Insurance Coverage Claims from Complex Case (41) 1., 2., 5., 8. A6014 Insurance Coverage/Subrogation (complex case only)

2., 9. 141 Sister State Judgment

El A8180 ' Abstract of Judgment 2., 6.

Enforcement I 1 A6107 Confession of Judgment (non-domestic relations) 2., 9.

of Judgment (20) F--; A6140 Administrative Agency Award (not unpaid taxes) 2., B.

2., 8. A6114 Petition/Certificate for Entry of Judgment on Unpaid Tax

2., 8., 9. I ! A6112 Other Enforcement of Judgment Case

RICO (27) r-1 A6033 Racketeering (RICO) Case 1., 2., B.

., 2., 8. _A6030 Declaratory Relief Only

Other Complaints Iniur.ctive Rei:ef Only (not domestic/harassment) 2., 8.

Ti A6011 Other Commercial Complaint Case (non-ton/non-complex) (Not Specified Above) (42) 1., 2., 8.

I- 1 A8000 Other Civti Complaint (non-tort/non-complex) 1., 2., 8.

Partnei'ship Corporation 1-1 A6113 Partnership and Corporate Governance Case 2-, 8. Governance (21)

2., 3,9. _ 1 A6121 Civil Harassment

Other Petitions

I 1 A6123 Workplace Harassment 2., 3., 9. r- i_____; A6124 Eder/Dependent Adult Abuse Case

(Not Specified Above) ' F-I A6190 Election Contest 2. (43)

r i A6110 Petition for Change of Name 2., 7.

1-1 A6170 Petition for Relief from Late Claim Law 2., 3., 4.. 8.

E-1 A6100 Other Civil Petition 2., 9.

LACIV :409 (Rev. 03/11)

LASC Approved 03-04 CIVIL CASE COVER SHEET ADDENDUM


Page 3 of 4

A

REASON: Check the appropriate boxes for the numbers shown under Column C for the type of action that you have selected for this ease.

El 1 . 4.505A-76,E. .1.1:33.L39.010.

120 N. Topanga Canyon Blvd. Suite 111

CITY:

Topanga

STATE,

CA

ZIP CODE:

90290

f- (sioNA ArrorlIi esrxrco5-pAnry) - tfl Dated: May 24, 2013

SHORT TITLE: STONE TEMPLE PILOTS V. SC'OTT WEILAND

NUMBER

Item III. Statement of Location: Enter the address of the accident, party's residence or place of business, performance, or other circumstance indicated in Item II., Step 3 on Page 1, as the proper reason for filing in the court location you selected.

Item IV. Declaration of Assignment: I declare under penalty of periuty under the laws of the State of California that the foregoing is true

and correct and that the above-entitled matter is properly filed for 3ssignment to the Stanley Mosk courthouse in the

Central District of the Superior Court of California, County of Los Angeles [Code Civ. Proc., g 392 et seq., and Local

Rule 2.0, subds. (b), (c) and (d)).

Mir hashmall

PLEASE HAVE THE FOLLOWING ITEMS COMPLETED AND READY TO BE FILED IN ORDER TO PROPERLY COMMENCE YOUR NEW COURT CASE:

1. Original Complaint or Petition.

2. If filing a Complaint, a completed Summons form for issuance by the Clerk.

3. Civil Case Cover Sheet, Judicial Council form CM-010.

4. Civil Case Cover Sheet Addendum and Statement of Location form, LACIV 109, LASC Approved 03-04 (Rev. 03/11).

5. Payment in full of the filing fee, unless fees have been waived,

e. A signed order appointing the Guardian ad !item, Judicial Council form C1V-010, it the plaintiff or petitioner is a minor under 18 years of age will be required by Court in order to issue a summons.

7. Additional copies of documents to be conformed by the Clerk. Copies of the cover sheet and this addendum must be served along with the summons and complaint, or other initiating pleading in the case.

LAM lop (Rev. 03/11)

LASC Approved 03-04 CIVIL CASE COVER SHEET ADDENDUM


Page 4 of 4

Documents

4-cv-02668-SVW-JCG Document 8 Filed 04/09/14 Page 1 of … · Shoshana E. Bannett (State Bar No. 241977) [email protected] LISA BORODKIN, ATTORNEY AT LAW 3414 Rowena Avenue