JAT v. Spec-1 - Complaint

8/12/2019 JAT v. Spec-1 - Complaint

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1 Yang Wang, P.C.

Tommy SF Wang SBN: 272409

2 Andrew J. Wei SBN: 293787

3 355 S. Grand Ave., Ste. #2450

Los Angeles, CA 90071

Telephone: (888) 827-8880

Fax: (888) 827-8880

ALE }a e u.s. D"3m'CT (:O'JRT

~ - - ' - - '1~ 2 4 2014 I

Email: [email protected];[email protected]

Attorneys for PlaintiffJAT Wheels, Inc.

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UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OJ CALIFORNIA. _

10 JAT Wheels, Inc., a California C a s e ~ o V 4 4 j 9 7 t G It l-J{11 Corporation d/b/a STR Racing,

Plaintiff,12

vs.13

SPEC-l RACING WHEELS INC, a )14 Florida Corporation; and DOES 1-10,

collectively,Defendant.5

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COMPLAINT FOR:1 FEDERAL TRADEMARK

INFRINGEMENT ANDTRADEMARKCOUNTERFEITING;

2. FALSE DESIGNATION OFORIGIN [15 U.S.C.§1125(a)/Lanham Act §43(a)].

3. FEDERAL TRADEMARKDILUTION [15 U.S.C. §1125(c)];

4 FEDERAL COPYRIGRTINFRINGEMENT [17 U.S.C.I06];

5. PATENT INFRINGEMENT [35U.S.C.271];

6 FEDERAL UNFAIRCOMPETITION [15 U.S.C.§1125(a)];

7. CALIFORNIA COMMON LAWUNFAIR COMPETITION; and

8. CALIFORNIA UNFAIR

COMPETITION CALIFORNIABUSINESS PROFESSIONSCODES §17200, t seq.]

DEMAND FOR JURY TRIAL. ~

JAT WHEELS INC.'S COMPLAINT



1 Plaintiff, JA T WHEELS, Inc. a California Corporation, dba STR Racing

2 (hereinafter Plaintiff'), hereby files this Complaint against Defendant JNC

3 WHEEL COLLECTION (hereinafter Defendant ), and DOES 1 to 10 and alleges

4 as follows:

6 1 Plaintiff files this action to combat the willful sale of unlicensed and

7 counterfeit products (hereinafter Infringing Products ) bearing the

8 Plaintiff's exclusive Trademark and utilizing the Plaintiffs exclusive

9 design patents, and unauthorized use of Plaintiffs copyrighted

1° photographs. The Defendant is a corporation specializing in the research,

11 manufacture and sales of aftermarket automobile wheels.

12 2. Plaintiff seeks a Permanent Injunction, damages, costs, and attorneys' fees

13 as authorized by the Lanham Act, the patent laws of the United States,

14 Title 35, United States Code, California's common law, and California

15 Business Professions Code.

17 3. This Court has subject matter jurisdiction under 28 U.S.C. § 1331 (federal

18 question) and 28 U.S.C. § 1338(a) (action arising under an Act of

19 Congress relating to patents or trademarks).

20 4. On information and belief, Defendants are subject to personal jurisdiction

21 in the Central District of California (the District ), consistent with the

22 principles of due process and the California Long Arm Statute, because

23 Defendants offer their products for sale in this District, have transacted

24 business in this District, have committed and/or induced acts of patent

25 infringement in this District, and/or have placed infringing products into

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JAT WHEELS INC. S COMPLAINT

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1 the stream of commerce through established distribution channels with the

2 expectation that such products will be purchased by residents of this

3 District.

4 5 Further, this Court has jurisdiction over laintiffs California state

5 statutory and common law claims pursuant to 28 U.S.C. § 1367.

6 6 Supplemental jurisdiction exists over Defendant because on information

7 and belief, Defendant conducts business in California and in this judicial

8 district, has purposefully availed itself to California and in this judicial

9 district, or has otherwise availed itself of the privileges and protections of

10 the law of the State of California, such that this Court's assertion of

11 jurisdiction over Defendant does not offend traditional notions of fair play

12 and due process.

13 7 Venue is proper within the Central District of California pursuant to 28

14 U.S.C. §§ 1391(b) and 1400(a) because on information and belief, a

15 substantial part of the events or omissions giving rise to the claim

16 occurred in this judicial district, and has caused damages to Plaintiff in

17 this district.

18 THE P RTIES

19 8 Plaintiff, JAT WHEELS, INC., dba STR Racing, is a California

20 corporation duly organized and existing under the laws of the State of

21 California, and whose office is located at address 2107-D W

22 Commonwealth Ave. #392, Alhambra, California 91803.

23 9 Upon information and belief, Defendant, SPEC-l RACING WHEELS,

24 INC (hereinafter Defendant ), is, and at all times mentioned herein was,

25 a corporation organized and existing under the laws of the State of

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1 Florida, having its principal place o business at 8419 Sunstate St.,

2 Tampa, FL 33634.

3 10.The true names and capacities, whether individual, corporate, associate or

4 otherwise, o Defendants herein named DOES 1-10, inclusive are

5 unknown to Plaintiff. Plaintiff therefore sues said Defendants by such

6 fictitious names. When the true names and capacities o said Defendants

7 have been ascertained, Plaintiff will amend this pleading accordingly.

8 11 Plaintiff further alleges that Defendant and DOES 1-10, inclusive sued

9 herein by fictitious names are jointly, severally and concurrently liable

10 and responsible with the named Defendant upon the causes o action

11 hereinafter set forth.

12 12 Plaintiff is informed and believes and thereon alleges that at all times

13 mentioned herein Defendant, and DOES 1-10, inclusive, and each o

14 them, were the agents, servants, and employees o every other Defendant

15 and the acts o each Defendant, as alleged herein, were performed within

16 the course and scope o that agency, service or employment.

17 F CTS

18 13 Plaintiff owns the exclusive rights to numerous patents, copyrighted and

19 trademarked properties.

20 14 Plaintiff owns and holds the exclusive rights, title, and interest to market

21 and sell merchandise bearing the STR Trademark (the STR Trademark

22 or Trademark ). Plaintiff registered its trademark on April 18,2014 with

23 the United States Patent and Trademark Office. The STR Trademark

24 registration number is 86256705.

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1 15.Plaintiffis the owner of all right, title and interest in the following U.S.

2 Design Patents: 1) Application No. 29,492,155 (the '' '155 patent ); 2)

3 Application No. 29,492,156 (the , 156 patent ); 3) Application No.

4 29,492,157 (the '157 patent ); 4) Application No. 29,492,158 (the '''158

5 patent ); and 5) Application No. 29,492,159 (the ' 159 patent ),

6 (collectively, the Design Patents ).

7 16 As a result ofDefendant's unlawful infringement of the Plaint iffs

8 Design Patents, Plaintiff has suffered and will continue to suffer damages.

9 Plaintiff is entitled to recover from Defendant the damages suffered as a

10 result ofDefendant's unlawful acts.

11 17.In or around May 2014, Plaintiff discovered that Defendant was

12 manufacturing and selling automobile parts on the Internet that infringed

13 on Plaintiffs Design Patents. Some of these parts also bore Plaintiffs

14 STR Trademark.

15 18 Defendant uses the STR Trademark in connection with its aftermarket

16 automobile parts that are in direct competition with Plaintiffs aftermarket

17 automobile parts. Defendant has used Plaintiff s trademark in its

18 advertising for such products and services, thereby competing unfairly

19 with Plaintiff, infringing upon Plaintiff s trademark rights, and improperly

20 trading on the goodwill established by Plaintiff.

21 I9.In or around May 2014, Plaintiff published photographs to its website

22 displaying its aftermarket automobile parts. Plaintiff owns the copyrights

23 and ownership rights to these photographs.

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JAT WHEELS INC. 'S COMPLAINT

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1 20.Without Plaintiff s consent, Defendant sporadically, but consistently, used

2 Plaintiff s copyrighted images to promote and sell the Infringing Products

3 on Defendant s website.

4 21.Defendant s infringing activities have caused damages to Plaintiff by

5 causing customer confusion as to the source of the STR Trademark. In

6 addition, Defendant s use of the aforementioned Design Patent and STR

Trademark has and continues to dilute Plaintiff s goodwill in its products

8 and business that it has invested significant time and resources.

9 22.0n information and belief, Defendant s infringement of one or more of

1 the Plaintiff s Patents is willful and deliberate, therefore entitling Plaintiff

11 to enhanced damages and reasonable attorney fees and costs.

12 23.0n information and belief, Defendant intends to continue their unlawful

13 infringing activity, and Plaintiff continues to and will continue to suffer

14 irreparable harm-for which there is no adequate remedy at law-unless

15 Defendant is enjoined by this Court.

16 {;OUNT FEI)ERAL TRAQEMAJlK I ~ F R I N Q E M F N T AND

7 IRADEMAR:KCO 1NTEJlFEITING

18 24. Plaintiff repeats and re-alleges, as set forth herein, the allegations

9 contained in paragraphs 1 through 23, and brings the following claim for

20 trademark infringement pursuant to 15 U.S.C. § 1114 against the

21 Defendant.

22 25. Plaintiff owns or is licensee of the exclusive rights to the STR

23 Trademark. The trademark registration is in full force and effect and is

24 owned by the Plaintiff or Plaintiff s licensors.

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1 26. Plaintiff, and/or those under its authority, manufactures, sells, and

2 distributes all o its advertising and products in conformity with the

3 provisions o the United States Trademark law.

4 27. Despite having actual and constructive notice o the Plaintiff and/or its

5 licensors federal registration rights, prior common law and statutory

6 rights to the STR Trademark, Defendant has adopted and used the STR

7 Trademark in conjunction with the sale o merchandise in the State o

8 California and interstate commerce, including, by way o example and not

9 limitation, the SP-4 wheel, attached as Exhibit J

10 28. Defendant has distributed, sold, or offered for sale merchandise

11 displaying Plaintiff s Trademark without Plaintiff s authorization.

12 Defendant s distribution, sale, or offer for sale o merchandise bearing

13 Plaintiffs Trademark in California and interstate commerce has and will

14 cause the likelihood o confusion, deception, and mistake in that

15 consumers will conclude that the products sold by the Defendant are

16 authorized, sponsored, approved, or associated with the Plaintiff.

17 29. Defendant s use in commerce o Plaintiffs Trademark in conjunction

18 with the sale o merchandise is an infringement o Plaintiff s registered

19 STR Trademark in violation o 15 U.S.C. § 1114(1).

20 30.Defendant committed the acts alleged herein intentionally, fraudulently,

21 maliciously, willfully, wantonly, and oppressively with the intent to injure

22 the Plaintiff and its business.

23 31. The Plaintiff has suffered damages as a result o the Defendant s acts.

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1 32. The Infringing Products bearing the Plaintiffs Trademark that the

2 Defendant s manufactured, sold, distributed, or offered for sale constitutes

3 a counterfeit product pursuant to 5 U.S.C. § 1116(d).

4 33. Pursuant to 5 U.S.C. § 1117, Plaintiff is entitled to recovery of 1)

5 Defendant s profits; (2) Plaintiffs damages, including lost profits; and (3)

6 costs of the action. Plaintiff is further entitled to trebled damages above

7 the amount of actual damages in a sum of not more than three times the

8 amount of actual damages. Defendant s intentional and deceitful actions

9 make this a case in which the Plaintiff is entitled to an award of attorneys

10 fees.

34. By reason of the aforementioned acts by Defendant, Plaintiffhas suffered

2 and will continue to suffer irreparable damage, in an amount to be

3 determined, and damages will continue unless and until enjoined by Order

4 of this Court.

5 CQJJNT I I A L S E ~ : , S I ( i ~ A I I Q ~ J ) F Q R I G I ~ 1 1 S l J S C ~6 U12S a)/Lllnham Act §43(a)]


8 contained in paragraphs 1 through 34 and brings the following claim for

9 false designation of origin pursuant to 5 U.S.C. § 1125(a) and the

20 Lanham Act § 43(a) against the Defendant.

2 36. Defendant has used Plaintiffs registered STR Trademark in commerce in

22 connection with its own goods, where use is likely to cause confusion, or

23 to cause mistake, or to deceive as to the origin, sponsorship, association or

24 approval of such goods.

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1 37. By utilizing the Plaintiff s Trademark in its advertising for, and in

2 connection with its products, Defendant has misrepresented and falsely

3 described to the general public the origin and the source of the products

4 offered for sale. Further, it creates a likelihood of confusion, mistake or

5 deception to the ultimate purchaser as to the source of the products.

6 38. For example, Defendant markets, conducts business, and publicly

7 represents that the STR Trademark is associated or connected to the

8 Defendant s business thereby creating a false designation of origin of

9 Plaintiff s brand of goods and services.

1 39. The confusion, mistake, or deception referred to herein arises out of the

11 aforementioned acts of Defendant and the acts of the Defendant constitute

12 false designation of origin and unfair competition in violation of 15

13 U.S.C. § 1125(a) and Section 43(a) of the Lanham Act.

14 40. Upon information and belief, the aforesaid acts of the Defendant were

15 undertaken willfully with the intention of causing confusion, mistake or

16 deception. Plaintiff is entitled, pursuant to 15 U.S.C. § 1117, to recovery

17 of: (1) Defendant s profits; (2) Plaintiff s damages, including lost profits;

18 and (3) costs of the action. Plaintiff is further entitled to treble damages

19 above the amount of actual damages in a sum not more than three times

20 the amount of actual damages. Defendant s intentional and deceitful

21 actions make this a case in which the Plaintiff is entitled to an award of

22 attorneys fees.

23 41. By reason of the aforementioned acts by Defendant, Plaintiffhas suffered

24 and will continue to suffer irreparable damage, in an amount to be

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JAT WHEELS INC. s COMPLAINT

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determined, which damage will continue unless and until enjoined by

Order o this Court.

5 CQ JNT HJ FEDERAL t R A D E M ~ R I D J L l J T I Q N 1 1 ~ J L S ~ ~ § J J 2 ~ ~ 16 42. Plaintiff repeats and re-alleges, as i set forth herein, the allegations

7 contained in paragraphs 1 through 41 and brings the following claim for

8 trademark dilution pursuant to 15 U.S.C. § 1125(c) against the Defendant

9 43. Plaintiff's registered Trademark is distinctive, well known and famous.

10 44. Defendant is diluting the distinctiveness o Plaintiff's Trademark by

11 marketing and selling inferior goods bearing marks virtually identical or

12 confusingly similar to Plaintiff's registered Trademark. Upon information

13 and belief, Defendant has engaged in the conduct alleged in these claims,

14 willfully intending to trade on Plaintiff's reputation and/or to cause

15 dilution o the reputable and distinctive Trademark owned by Plaintiff.

16 45. Defendant markets, conducts business, and publicly represents that the

17 Trademark is associated or connected to the Defendant's business thereby

18 creating a false designation o origin o Plaintiff's' brand o goods and

19 services. Thus, Defendant's acts violate 15 U.S.C. §1125(c).

20 46. As a direct and proximate result o Defendant's trademark dilution,

21 Plaintiff has and will continue to suffer damages to its business, reputation

22 and good will, and the loss o royalties and profits that Plaintiff would

23 have made but for Defendant's acts. Upon information and belief,

24 Defendant's acts o infringement have also resulted in substantial profits

25 for the Defendant. The amount o these damages will be proven at trial.

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2 OUNT I V F E D E ~ ~ ~ C O J l Y R I ~ H T ] N F R I N G J ~ : M E N T3 47. Plaintiff repeats and re-alleges, as set forth herein, the allegations

4 contained in paragraphs 1 through 46.

5 48. Plaintiffs were and are the exclusive holder o all rights, title and interest

6 in their photographs, as separate and distinct works.

7 49. Defendant has infringed and is infringing the copyrighted photographs by

8 unlawfully reproducing and using such photographs in violation o the

9 United States Copyright Act, 17 U.S.C. 106.

1 50. Defendant s infringement was and is willful, in bad faith, and executed

11 with full knowledge o Plaintiffs copyright, and in conscious disregard

12 for Plaintiffs exclusive rights in the protected work.

13 51. Defendant s deliberate infringement o Plaintiff s copyrights has greatly

14 and irreparably damaged Plaintiff.

15 52. Defendant s production o infringing products and copyrighted material,

16 and Defendant s wrongful conduct, have deprived and continue to deprive

17 the Plaintiffo their opportunity o expanding their goodwill. Plaintiff is

18 entitled to an injunction restraining Defendant, its officers, agents, and

19 employees, and all persons acting in concert with it, from engaging in any

20 further acts in violation o the copyright laws.

21 53.Plaintiff is further entitled to recover the damages, including attorneys

22 fees, they have sustained and will sustain, and any gains, profits, and

23 advantages obtained by Defendant as a result o Defendant s acts o

24 infringement alleged above. At present, the amount o such damages,

25 gains, profits, are in an amount to be determined.

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2 54. Plaintiff repeats and re-alleges, as if set forth herein, the allegations


4 55. Plaintiff is the owner of all right, title, and interest in the 155 patent,

5 titled STR513 Wheel Design duly and properly issued by the U.S.

6 Patent and Trademark Office on May 29, 2014. A copy of the '155 patent

7 is attached as Exhibit A.

8 56. Defendants have been and/or are directly infringing and/or inducing

9 infringement of and/or contributory infringing the 155 patent by, among

1 other things, making, using, offering to sell or selling in the United States,

11 or importing into the United States, products that are covered by the

12 design patent, including, by way of example and not limitation, the SPT-2

13 wheel, attached as Exhibit B.

14 57. Plaintiff is informed and believes, and on that basis alleges, that

15 Defendant's infringement of the 155 patent has been and continues to be

16 intentional, willful, and without regard to Plaintiffs rights. Plaintiff is

17 informed and believes, and on that basis alleges, that Defendant's

18 infringement of the 155 patent is and has been intentional, deliberate, and

19 willful at least because it had knowledge of the 155 patent through direct

2 or indirect communications with Plaintiff and/or as a result of its

21 participation in the aftermarket automobile parts industry.


23 Defendant has gained profits by virtue of its infringement of the 155

24 Patent.

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3 Patent.

4 65. Plaintiff has sustained damages as a direct and proximate result of

5 Defendant's infringement of the '156 Patent.



9 67. Plaintiff is the owner of all right, title, and interest in the '157 patent,


11 Patent and Trademark Office on May 29, 2014. A copy of the '157 patent

12 is attached as Exhibit E.

13 68.Defendants have been and/or are directly infringing and/or inducing




17 design patent, including, by way of example and not limitation, the SPT-8

18 wheel, attached as Exhibit F

19 69 .Plaintiff is informed and believes, and on that basis alleges, that

20 Defendant's infringement of the '157 patent has been and continues to be

21 intentional, willful, and without regard to Plaintiff s rights. Plaintiff is



24 willful at least because it had knowledge of the '157 patent through direct

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1 or indirect communications with Plaintiff and/or as a result of its

2 participation in the aftermarket automobile parts industry.

3 70 Plaintiff is informed and believes, and on that basis alleges, that


5 Patent.

6 71 Plaintiff has sustained damages as a direct and proximate result of

7 Defendant's infringement of the '157 Patent.



11 73. Plaintiff is the owner of all right, title, and interest in the 158 patent,


13 Patent and Trademark Office on May 29,2014. A copy of the '158 patent

14 is attached as Exhibit G

15 74. Defendants have been and/or are directly infringing and/or inducing




19 design patent, including, by way of example and not limitation, the SP-8

20 wheel, attached as Exhibit H21 75 . Plaintiff is informed and believes, and on that basis alleges, that

22 Defendant's infringement of the 158 patent has been and continues to be

23 intentional, willful, and without regard to Plaintiff s rights. Plaintiff is



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JAT v. Spec-1 - Complaint