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Case 1:14-cv-23055-KMW Document 15 Entered on FLSD Docket 11/17/2014 Page 1 of 22

UNITED STATES DISTRICT COURT


SOUTHERN DISTRICT OF FLORIDA
MIAMI DIVISION
Case No. 14-23055-CV-WILLIAMS/SIMONTON

MARCO RODRIGUEZ-DIAZ P/K/A


DJ INFAMOUS,
Plaintiff,
v.
CALVIN DONALD, and ENTERTAINMENT
ONE U.S. LP,
Defendants.
______________________________________/
FIRST AMENDED COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES
Plaintiff, Marco Rodriguez-Diaz p/k/a DJ Infamous (DJ Infamous or Plaintiff),
hereby files his First Amended Complaint as against Defendants Calvin Donald (Donald) and
Entertainment One U.S. LP (eOne) (collectively Defendants), and in support thereof alleges
as follows:
NATURE OF ACTION
1.

This is an action to remedy acts of, inter alia, federal and state trademark

infringement, false designation of origin and misrepresentation in commerce, false advertising,


unfair competition, dilution, and misappropriation, all caused by, inter alia, the Defendants
infringement of Plaintiffs valuable trademark DJ INFAMOUS.
PARTIES
2.

Plaintiff DJ Infamous is an individual residing in Miami-Dade County, Florida

and is over the age of eighteen and is otherwise sui juris.

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3.

Upon information and belief, Defendant Donald is an individual residing in

Clayton County, Georgia and is over the age of eighteen and is otherwise sui juris.
4.

Upon information and belief, Defendant eOne is a Delaware Limited Partnership,

with its principal place of business in New York County, New York.
JURISDICTION AND VENUE
5.

This action arises under the Federal Trademark Act, 15 U.S.C. 1051, et seq. and

under related statutory and common laws of the State of Florida.


6.

This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.

1131 and 1338(a) and 15 U.S.C. 1114 and 1125 as, among other things, Plaintiffs cause of
action arises under the Federal Trademark Act (The Lanham Act of 1946), 15 U.S.C. 1051 et
seq.

Further, this Court has jurisdiction over Plaintiffs Florida state common law claims

pursuant to 28 U.S.C. 1367.


7.

This Court has personal jurisdiction over both Defendants because Defendants

have continuous, systematic, and substantial presences within this Judicial District including
marketing, promoting, selling and distributing Defendants goods and services in this Judicial
District.
8.

In addition, this Court has personal jurisdiction over Defendant Donald and

Defendant eOne pursuant to 48.193(2), Fla. Stat., because both Defendants are engaged in
substantial and not isolated activity within this State and Judicial District, including particularly
through the sale, distribution, marketing and promotion of phonorecords and music videos in the
State of Florida and this Judicial District.
9.

Defendants are also subject to the personal jurisdiction of this Court pursuant to

48.193(1)(a), Fla. Stat., because they conduct, engage in, and carry out substantial business

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activities in this State, and because they have committed the tortious acts of trademark
infringement and unfair competition more particularly described below in this State and Judicial
State, because they have sold the infringing goods and/or provided services in this State, and
such causes of action arose from the foregoing acts.
10.

In addition, Defendants are also subject to the personal jurisdiction of this Court

pursuant to 48.193(1)(a)(2) and 48.193(1)(a)(6), Fla. Stat., because Defendants have


committed tortious acts or omissions with this State and have caused injury to persons within this
State arising out of acts or omissions, and Defendants regularly do and/or solicit business within
this State and Judicial District, and products, materials and services produced by Defendants
were and are used and consumed within this State and Judicial District in the ordinary course of
commerce, trade or use, and the Defendants engage in other persistent courses of conduct,
including deriving substantial revenue from goods used or consumed and services rendered in
this State and Judicial District.
11.

Both Defendants have systematically directed their business activities into this

State and Judicial District.


12.

Venue is proper in this Judicial District pursuant to 28 U.S.C. 1391(b)(1), 28

U.S.C. 1391(c), and pursuant to 28 U.S.C. 1391(b)(2) as a substantial part of the events or
omissions giving rise to the claims asserted in this action occurred in this Judicial District and
Defendants conduct ongoing and continuous business activities in this State and District.
FACTUAL BACKGROUND
13.

Plaintiff DJ Infamous is a world-renowned, multi-platinum and Grammy award-

winning music producer and disc jockey (DJ) who is in the business of providing professional
DJ entertainment services and, in addition, has produced singles promoted in connection with

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numerous platinum-selling artists.


14.

Plaintiff DJ Infamous is the owner of the U.S. Trademark Application, Ser. No.

86301703, as set forth on the Principal Register of the United States Patent and Trademark
Office (the USPTO) on June 5, 2014 to Marco Rodriguez-Diaz p/k/a DJ Infamous for the
trademark DJ INFAMOUS for Entertainment services by a musical artist and producer,
namely, musical composition for others and production of musical sound recordings;
Entertainment services in the nature of live musical performances, namely, personal appearances
by a disc jockey (the Mark).
15.

Plaintiff has continuously used his Mark in commerce in connection with the

provision of his DJ and production services since at least as early as 1996 when Plaintiff and
Plaintiffs DJ services were exhibited in association with the Mark in connection with a disc
jockey battle at a record store known as Dark , located in Broward County, Florida. A video
of the event was thereafter released for sale and additionally distributed through public access
television.
16.

In 1997, Plaintiff DJ Infamous established a DJ group for purposes of competing

in the DMC World DJ Championships, as first launched in 1985.


17.

The DJ group was known as The-Allies, and, in addition to DJ Infamous,

included other fellow world-champion DJs; DJ Atrak, DJ Craze and DJ Develop.


18.

In 1998, Plaintiff was awarded the title of the International Turntablist Federation

(ITF) USA DJ Champion, in addition to receiving the second place prize in the DJ World
Finals as held in Amsterdam, Netherlands.
19.

In 1999, Plaintiff won a world championship DJ title and toured as a headliner

across five continents, at all times prominently displaying and using the Mark in connection with

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the promotion and performance of his professional DJ services.


20.

Thereafter, from 1999 to 2001, Plaintiff personally won a second and third world

championship DJ title in connection with his professional DJ performances.


21.

In 2001, The Allies, including Plaintiff DJ Infamous, were inducted into the DMC

World DJ Championship Hall of Fame.


22.

Amid Plaintiffs success in, among other things, the DJ competitions, Plaintiff

received numerous sponsorship deals and was displayed on several printed advertisements
relating to DJ products, clothing, and hip-hop music.
23.

In 2001, Plaintiff started an internationally-circulated magazine called Tablist,

which was dedicated to covering turntablism, referring to the art of DJ performances through
vinyl record turntables.

Plaintiff was the editor-in-chief of Tablist Magazine and was

consistently credited as DJ Infamous.


24.

Plaintiff DJ Infamous has also appeared in multiple DJ instructional videos, which

have been sold at big-box music stores such as Guitar Center and Sam Ash, and Plaintiff was
featured in the awarding-winning feature-length documentary film, Scratch.
25.

In addition, as early as 1999, Plaintiff was depicted and referenced as DJ

Infamous on a nationally televised broadcast giving a DJ performance wherein one celebrity


guest on the program, Joseph Saddler p/k/a Grandmaster Flash, considered to be a pioneer of
turntabilism and hip-hop music generally, compliments Plaintiff on his DJ skills following his
performance.
26.

In addition to his world-renowned DJ skills, Plaintiff DJ Infamous is an

established music producer and composer who, among other things, creates, composes, writes,
arranges, programs, mixes, remixes, routes and processes sound recordings and underlying

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compositions for various musical recording artists and record companies (hereinafter referred to
as Production Services).
27.

In or around 2005, Plaintiff began expanding his Production Services, producing

hit singles for top-selling Rap and R&B artists. The albums on which Plaintiff is featured have,
to date, sold over 15 million copies.
28.

In or around 2008, Plaintiff was nominated for a Grammy award in connection

with work as a producer on Dwayne Michael Carter, Jr. p/k/a Lil Waynes album entitled Tha
Carter III.
29.

In total, Plaintiff DJ Infamous has produced singles on no less than thirty (30)

albums by and through his Mark.


30.

Currently, Plaintiff is signed with Universal Music Group.

31.

Apart from his national recognition, DJ Infamous remains an extremely

prominent local music figure in South Florida in his capacity as both a DJ and music producer,
and has also performed several DJ exhibitions in Miami, Florida throughout the past two years.
32.

Recently, Plaintiff collaborated with the Miami Heat basketball organization on a

short film entitled Heat Nation, released around October 2014, for which he composed the
films score.
33.

In further collaboration with the Miami Heat basketball organization, Plaintiff DJ

Infamous produced the 2014-2015 introduction music which is used as the entrance theme for
the Miami Heat players.
34.

Plaintiff DJ Infamous, at all times in connection and association with his Mark,

continues to produce hip-hop and R&B singles, as well as tour and perform his live professional
DJ services across the country.

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Defendants Infringing Activities


35.

Plaintiff recently became aware that Defendant Donald was infringing Plaintiffs

Mark, and that Defendant Donald was offering disc jockey and producer services of a
substantially similar and competitive nature to those offered by DJ Infamous, under the identical
name and Mark of DJ Infamous.
36.

Specifically, Plaintiff DJ Infamous was informed by consumers, customers,

potential customers, and others, who performed internet searches using Google, Yahoo, and
other search engines, while seeking the services of DJ Infamous, that they were instead directed
to

various

websites

related

http://instagram.com/DJInfamous

to

Defendant
(the

Donald,

Donald

including,
Instagram

without

limitation,

Account)

and

https://twitter.com/djinfamousatl (the Donald Twitter Account).


37.

Defendant Donald, by and through, among other avenues, his Donald Instagram

Account and Donald Twitter Account, uses the Mark to promote disc jockey entertainment and
production services directly competitive to those of DJ Infamous.
38.

Consumers, customers, potential customers, and others have expressed confusion

to Plaintiff as a result of having been directed to and/or discovering, among other websites, the
Donald Instagram Account and Donald Twitter Account, when seeking the services of Plaintiff.
39.

In fact, reflecting the severe and pervasive consumer confusion emanating from,

among other things, Defendant Donalds willful and unlawful use and exploitation of Plaintiff DJ
Infamous Mark, several prominent music websites mistakenly attribute photographs of
Defendant Donald to Plaintiff DJ Infamous biographical information.

Additionally, other

prominent music websites mistakenly attribute Plaintiffs biographical information to Defendant


Donald and music released by Defendants and/or otherwise conflate DJ Infamous background

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with that of Defendant Donald. (See Composite Exhibit A).


40.

On the Donald Twitter Account, Defendant Donald prominently features a

clickable html link to a website entitled djinfamous.com, which is currently registered under
and hosted by internet domain registrar and web hosting company Go Daddy.
41.

The music label to which Defendant Donald is current signed, Defendant eOne, is

regarded as the largest independent music label in North America.


42.

According to eOnes official website, the music label engages in distribution,

artist promotion, and licensing throughout North America.


43.

Defendant eOne systematically and continuously markets to and distributes its

vast catalog of music, including that of Defendant Donalds, in, among other states, Florida.
44.

Defendant eOne also actively promotes Defendant Donald and his infringing use

of the Plaintiffs DJ Infamous Mark on its official website, as a member of its active hip-hop
artist roster. (See Exhibit B).
45.

Further exacerbating the confusion caused by Defendant eOnes promotion and

distribution of Defendant Donald, his music, and his infringing use of the DJ Infamous Mark,
is the fact that Plaintiff DJ Infamous has actually produced multiple songs for several artists
displayed on eOnes catalog, including, among others, rappers Fat Joe and Noreaga.
46.

As such, eOne is concurrently marketing, promoting, distributing and displaying

Defendant Donald and his infringing DJ Infamous Mark while, at the same time, Plaintiff DJ
Infamous is featured and credited as the producer for several artists likewise displayed on eOnes
catalog.
47.

In addition to both Defendants generally marketing, promoting, selling and

distributing Defendant Donalds services and goods in Florida, Defendant Donald has performed

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his disc jockey services using Plaintiffs name and the DJ Infamous Mark at nightclubs and
venues throughout the country, including performances in nightclubs in Miami Beach, Florida.
48.

Defendant Donalds disc jockey performances in Miami Beach, Florida using the

DJ Infamous name were especially confusing to Miami-Dade County residents because


Plaintiff DJ Infamous is a prominent local figure in Miami-Dade County, Florida.
49.

More recently, on or around November 11, 2013, Defendant Donald, by and

through Defendant eOne, released a sound recording single entitled Double Cup under the
name DJ Infamous.
50.

Double Cup was distributed by Defendant eOne on iTunes for sale as a digital

recording download, and was purchased by consumers nationwide, including by numerous


consumers in Florida and in this District. Double Cup was also published online by Defendant
eOne

on

the

official

eOne

Music

SoundCloud

profile

page

located

at

https://soundcloud.com/eone-music/dj-infamous-double-cup, wherein consumers can either


listen to the recording for free or purchase the recording through a link to iTunes.
51.

Subsequently, on or around May 24, 2014, Defendant Donald performed at a

party in Miami Beach, Florida to promote the release of his new single entitled Double Cup
(Remix), all while continuing his infringing use of the DJ Infamous Mark (the Miami Beach
Release Party).
52.

The Miami Beach Release Party, billed as Famous & Infamous: Double Cup

Remix Release Party, was promoted to South Florida residents via, among other places, online,
and tickets were sold online on various ticket vendor websites. (See Composite Exhibit C).
53.

In connection with both Double Cup and Double Cup (Remix) (collectively

the Donald Singles), Defendants have identified the artist to be DJ Infamous, and have

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promoted and distributed the singles as featuring the performance of DJ Infamous.


54.

Subsequently, on or around June 25, 2014, Defendants released a music video for

the Double Cup (Remix) single, which was hosted by several websites and distributed
throughout the internet (the Donald Music Video).
55.

The Donald Music Video, which features Defendant Donald, was filmed in and

took place in, at least partially, Miami Beach, Florida and/or other parts of Miami-Dade County,
Florida. (See Composite Exhibit D).
56.

In an early scene of the Donald Music Video, Defendant Donald is shown

standing in front of a large home with a Miami Beach ocean skyline in the background. During
this scene, Donald holds out toward the camera the pendant of his gold necklace which reads
We the Best Music Group.
57.

We the Best Music Group (WTB) is a Miami-based hip-hop imprint record

label. WTB is known in the hip-hop community for its Miami-based founder DJ Khaled and its
consistent promotion of the city of Miami in its music.
58.

Defendant Donald has promoted ties to Miami-based WTB and DJ Khaled since

around May of 2010.


59.

To date, as reflected by the widespread confusion caused by Defendants

infringing use of Plaintiffs Mark, websites of music industry-leading media outlets, including, in
particular, MTV and Billboard, have mistakenly attributed recordings by Defendant Donald to
Plaintiff DJ Infamous in their biographies of Plaintiff. (See Composite Exhibit A).
Notice of Infringement
60.

On or around June 11, 2014, Plaintiff caused to have delivered to Defendants a

cease and desist letter highlighting Plaintiffs longstanding and extensive use of the Mark as well

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as the nature of Defendants infringement of Plaintiffs Mark, demanding that Defendants cease
and desist any future use of the Mark (Plaintiffs Cease and Desist Letter).
61.

In Plaintiffs Cease and Desist Letter, Plaintiff explicitly informed Defendants

that Plaintiff maintained a valid, active registration application of the Mark on the Principal
Register in the United States Patent and Trademark Office.
62.

Notably, Plaintiffs Cease and Desist Letter explained that Plaintiff DJ Infamous

had been actively using the Mark in commerce since, at the latest, 1998, the year in which
Plaintiff was named the ITF USA DJ Champion.
63.

In response, on or around July 7, 2014, counsel for Defendant Donald sent an

electronic mail message to counsel for Plaintiff acknowledging the receipt of Plaintiffs Cease
and Desist Letter.
64.

Thereafter, on or around August 4, 2014, having been put on notice of Defendant

Donalds infringing use of the Mark, and having acknowledged Plaintiffs Cease and Desist
Letter, Defendant Donald, in bad faith, reflexively proceeded to disingenuously register
Plaintiffs DJ Infamous Mark under Defendant Donalds name with the USPTO.
65.

The DJ Infamous mark fraudulently registered by Defendant Donald was a

service mark described as serving largely the same goods and services as Plaintiffs Mark,
including, among others disc jockey services and musical compositions and sound recordings.
66.

Defendant only sought to register Plaintiffs Mark with the USPTO after

Plaintiff sent Plaintiffs Cease and Desist Letter, despite being fully aware that Plaintiff had
already registered this exact same Mark.
67.

Notwithstanding Defendant Donalds express knowledge that Plaintiff DJ

Infamous maintained an active registration in the Mark, Defendant Donald, or his representative,

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signed a declaration in his Trademark/Service Mark Application, Principal Register which


reads:
The signatory believes that to the best of the signatory's knowledge and belief, no
other person has the right to use the mark in commerce, either in the identical
form or in such near resemblance as to be likely, when used on or in connection
with the goods/services of such other person, to cause confusion or mistake, or to
deceive. The signatory being warned that willful false statements and the like are
punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and
that such willful false statements and the like may jeopardize the validity of the
application or any registration resulting therefrom, declares that all statements
made of his/her own knowledge are true and all statements made on information
and belief are believed to be true.
68.

Additionally, ostensibly reacting to the fact that Plaintiff DJ Infamous has been

using the Mark since 1996 and in commerce since 1998, Defendant Donalds subsequently-filed
fabricated registration conveniently states that Defendant Donald first used the name DJ
Infamous in commerce in 1994.
69.

However, in a 2012 interview with Prime Time Radio with J-Rod, Defendant

Donald explained his beginnings as a radio disc jockey, wherein he claimed he began in 1998
at age 17. If true, this means that Defendant Donald represented to the USPTO that he has
been using the using the DJ Infamous mark in commerce since approximately age 13.
70.

To date, Defendants continue to willfully and unlawfully exploit Plaintiffs Mark

in commerce against the express requests by Plaintiff to cease and desist such use.
71.

Specifically, among other willful bad faith acts, subsequent to the receipt of

Plaintiffs Cease and Desist Letter, Defendant Donald has brazenly developed a Soundcloud
profile as located at https://soundcloud.com/dj-infamous-1-1, entitled THE REAL DJ
INFAMOUS (the Donald Soundcloud Account) (collectively with the Donald Instagram
Account and Donald Twitter Account, the Donald Online Accounts).
72.

By and through, among other avenues, the Donald Soundcloud Account,

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Defendants have since released additional sound recording singles, including Something Right
and another entitled Dikembe which exploit the Mark in its general promotion and distribution
without the consent of Plaintiff DJ Infamous.
73.

Defendants use in commerce of Plaintiff DJ Infamous Mark, which is not only

substantially similar, but identical to Plaintiff DJ Infamous Mark, is clearly confusing and has
caused, and is likely to continue to cause, significant confusion among potential purchasers and
consumers of the parties respective goods and services, and has further caused and will continue
to cause significant confusion amount consumers based in the State of Florida and this District.
74.

Defendant Donald did not begin use of his infringing DJ Infamous mark in

connection with the provision of his goods and services until after Plaintiff began use of the
Mark.
75.

Defendants wrongful and willful actions in the infringement of Plaintiffs

proprietary rights in the Mark have caused substantial injury to Plaintiff.


76.

All conditions precedent to the institution of this action have been satisfied,

discharged, excused, and/or waived.


COUNT I
FEDERAL TRADEMARK INFRINGEMENT IN VIOLATION OF 15 USC 1114
(As Against All Defendants)
77.

Plaintiff hereby incorporates by reference and realleges each and every allegation

of paragraphs 1 through 76 above.


78.

The use in commerce by Defendants Donald and eOne of the Mark DJ

INFAMOUS has been without the consent of Plaintiff, the registrant of U.S. Trademark
Application, Ser. No. 86301703, in violation of 15 U.S.C. 1114.
79.

The use in commerce of, among other things, the Donald Instagram Account,

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Donald Twitter Account and the Donald Singles are also confusingly similar to Plaintiffs Mark,
and such use has been without the consent of Plaintiff.
80.

Defendants release of, among other things, the Donald Singles, in connection

with the Mark has been without the consent of Plaintiff.


81.

The aforesaid uses in commerce of Plaintiffs Mark, which are colorable

imitations, counterfeits, copies, or confusingly similar to Plaintiffs Mark, by Defendants are


likely to cause confusion, or to cause mistake, or to deceive, in violation of 15 U.S.C. 1114,
and they have caused such confusion.
82.

The aforesaid uses in commerce of Plaintiffs Mark by Defendants have caused

substantial confusion and mistake, and have deceived customers of Plaintiff, potential customers
of Plaintiff, and others seeking services from Plaintiff, nationwide, and particularly in Florida, in
violation of 15 U.S.C. 1114.
83.

Plaintiff placed Defendant Donald on formal notice of Plaintiffs ownership of the

foregoing Mark as early as June 11, 2014, by letter, which letter was confirmed as received.
Nevertheless, Defendants have continued to offer the good and services of Defendant Donald in
commerce using the Mark.
84.

By and through the aforementioned formal notice, Defendants were afforded the

opportunity to purge themselves of the actions which they have conducted.

Nevertheless,

Defendants responded by stating that they would not take the actions reasonably requested by
Plaintiff to end such willful infringement.
85.

Also, as a result of the Defendants infringing use of Plaintiffs Mark, web

searches for DJ Infamous result in links to the Donald Online Accounts or the Donald Singles,
wherein Plaintiffs Mark, and in several instances Plaintiffs biographical information, is

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prominently displayed.
86.

In view of the foregoing,

Defendants

have been jointly, severally,

conspiratorially, and willfully infringing Plaintiffs Mark, whereby Plaintiff is entitled to


damages, including Defendants profits, other damages sustained by Plaintiff, the costs of this
action, and reasonable attorneys fees, as set forth in 15 U.S.C. 1117.
87.

Defendants wrongful acts threaten to continue to irreparably injure Plaintiff,

unless and until said acts are enjoined by this Court, pursuant to 15 U.S.C. 1116.
COUNT II
VIOLATION OF SECTION 43 OF THE LANHAM ACT, 15 USC 1125
(As Against All Defendants)
88.

Plaintiff hereby incorporates by reference and realleges each and every allegation

of paragraphs 1 through 87 above.


89.

Defendants use in commerce of Plaintiff Infamous exact Mark in connection

with the provision of Defendant Donalds DJ and production goods and services has caused
substantial confusion and is likely to continue to cause confusion and mistake, and to deceive,
and to make consumers mistakenly believe that such goods and services are Plaintiffs goods, or
that such goods and services are sponsored by, approved by or somehow connected with
Plaintiff, with consequent injury to Plaintiff and to consumers of Plaintiffs goods and services.
90.

The aforesaid infringements of Plaintiffs Mark by Defendants have caused

readily identifiable confusion nationwide, including particularly in Florida, and are likely to
continue to cause confusion or mistake, or to deceive as to the affiliation, connection, or
association of Defendants with Plaintiff DJ Infamous, or as to the origin, sponsorship, or
approval of the goods, services, or commercial activities of Defendants by Plaintiff, in violation
of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).

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91.

The aforesaid acts of Defendants were undertaken with knowledge of Plaintiffs

prior trademark rights in the Mark.


92.

Plaintiff has been and, absent injunctive relief, will continue to be irreparably

harmed by Defendants aforementioned acts, and has further suffered monetary damages in an
amount to be determined at trial.
93.

Defendants wrongful acts entitle Plaintiff to damages and injunctive relief

pursuant to 15 U.S.C. 1116 and 1117.


94.

Plaintiff has no adequate remedy at law.


COUNT III
COMMON LAW TRADEMARK INFRINGEMENT
AND UNFAIR COMPETITION
(As Against All Defendants)

95.

Plaintiff hereby incorporates by reference and realleges each and every allegation

of paragraphs 1 through 94 above.


96.

The use of the Mark by Defendants has caused substantial confusion and is likely

to continue to cause confusion between Defendant Donald and/or his activities and Plaintiff DJ
Infamous and his activities nationwide, and particularly in Florida, and such use by Defendants
infringes the valuable common law rights of Plaintiff in his DJ INFAMOUS trademark.
97.

The Defendants aforesaid activities also constitute unfair competition with

Plaintiff by creating confusion as to the source or sponsorship of the good and services of
Defendants and misappropriates the fine reputation and goodwill of Plaintiff in his DJ
INFAMOUS Mark, thereby injuring that reputation and goodwill, and diverting from Plaintiff
the benefits and good will arising therefrom.
98.

The Defendants wrongful acts have damaged Plaintiff in an amount to be

determined at time of trial.

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99.

Defendants have been on actual notice of Plaintiffs marks and registrations and

have acted willfully in infringing, and continue to infringe, Plaintiffs Mark, thereby entitling
Plaintiff to actual and punitive damages, in an amount to be proven at trial.
100.

The Defendants wrongful acts have irreparably injured Plaintiff, and threaten to

continue to irreparably injure Plaintiff, unless and until said acts are enjoined by this Court, as
Plaintiff has no adequate remedy at law.
COUNT IV
TRADEMARK INFRINGEMENT BASED ON REVERSE CONFUSION AND
REVERSE PALMING OFF
(As Against All Defendants)
101.

Plaintiff hereby incorporates by reference and realleges each and every allegation

of paragraphs 1 through 100 above.


102.

Defendant Donald has adopted an identical mark as Plaintiff DJ Infamous Mark.

103.

Consumers are likely to mistakenly associate Plaintiffs DJ services and

Production Services with Defendant Donalds and are likely to mistakenly believe that the goods
and services of Plaintiff are actually goods and services of Defendant Donald.
104.

Defendants have saturated the national market with advertising and promotions

using Plaintiffs Mark and such advertising and promotions have caused Plaintiff to lose the
value of his Mark and brand and product identity, and, perhaps most significantly, to lose control
over the goodwill and reputation associated with Plaintiffs Mark and brand, and the ability to
enter into new markets.
105.

The reverse passing-off by the Defendant Donalds unauthorized and designated

use of the Mark has diminished Plaintiffs Mark, created a danger that Plaintiffs Mark could
become generic and, further, diffused the publics and potential consumers and customers
immediate association of Plaintiffs Mark with Plaintiff as the secondary source.

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106.

Upon information and belief, Defendants use of Plaintiffs intellectual property

rights established in the Mark is likely to have injured the business and reputation of Plaintiff and
likewise cause irreparable injury to Plaintiff, by, among other things, causing confusion, mistake
or deception to the public as to the source, origin, sponsorship or licensing of the goods and
services created by Defendant Donald and further likely to have rendered Plaintiffs valuable
Mark devoid of independent value.
107.

As a result of Defendants actions, Plaintiff has been severely damaged and is

entitled to monetary damages, including Defendants profits together with the damages of
Plaintiff, including Plaintiffs lost profits, and costs and attorney's fees.
108.

Plaintiff will continue to suffer irreparable injury unless Defendants are

permanently enjoined by this Court.


JURY DEMAND
Plaintiff Marco Rodriguez-Diaz p/k/a DJ Infamous demands a trial by jury on all issues
so triable in this action.
REQUEST FOR RELIEF
WHEREFORE, Plaintiff Marco Rodriguez-Diaz p/k/a DJ Infamous respectfully
requests that this Court enter a final judgment in his favor and as against Defendants Calvin
Donald and Entertainment One U.S. LP, jointly and severally, as follows:
1.

That Defendants use of Plaintiffs Mark constitute:


a.

trademark infringement in violation of 15 U.S.C. 1114;

b.

false designation of original and unfair competition in violation of 15


U.S.C. 1125;

c.

trademark infringement and unfair competition in violation of the common

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law of the State of Florida; and


d.

trademark infringement based upon reverse confusion and reverse palming


off.

2.

The Defendants, and each of them, their respective officers, employees, agents,

suppliers, and all those acting in concert with them be permanently restrained and enjoined from
using the Marks DJ INFAMOUS or any colorable imitation thereof, with respect to any
entertainment or similar services;
3.

The Defendants, and anyone associated with them, their respective officers,

employees, agents, suppliers, and all those acting in concert with them be permanently restrained
and enjoined from infringing Plaintiffs DJ INFAMOUS Mark;
4.

A judgment in favor of Plaintiff and against Defendants for the full value of all

Defendants profits derived from Defendants' unlawful acts set forth herein, together with the
damages of Plaintiff, including lost profits, in an amount to be determined;
5.

The amount of any judgment be trebled pursuant to 15 U.S.C. 1117, due to the

willful infringement of Plaintiffs DJ INFAMOUS Mark by Defendants;


6.

The costs of this action and Plaintiffs reasonable attorneys fees, to be taxed

against the Defendants, in accordance with 15 U.S.C. 1117;


7.

All advertising materials, brochures, handouts, or any other materials containing

the DJ INFAMOUS Mark, or any colorable imitation thereof, or any other similar mark be
accounted for, and delivered to the attorney for Plaintiff for such disposal and/or destruction as
Plaintiff may exercise pursuant to 15 U.S.C. 1118.;
8.

For a permanent injunction, pursuant to 15 U.S.C. 1116, against Defendants and

anyone associated with either of the Defendants, as well as each of their officers, agents,

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Case 1:14-cv-23055-KMW Document 15 Entered on FLSD Docket 11/17/2014 Page 20 of 22

servants, employees, and attorneys, and those persons in active concert or participation with
them who receive actual notice of the order by personal service or otherwise from:
a.

Using the DJ INFAMOUS Mark (however spelled, whether capitalized,


abbreviated, singular or plural, printed or stylized, whether used alone or
in combination with any word or words, and whether used in caption, text,
orally or otherwise); or any reproduction, counterfeit, copy, colorable
imitation or confusingly similar variation of the DJ INFAMOUS Mark
as a trade name, trademark or service mark, or in any other manner which
suggests in any way that Defendants and/or their activities originate from,
are affiliated with, or are sponsored, authorized, approved or sanctioned
by Plaintiff, or that Plaintiff and/or his activities are affiliated in any way
with the Defendants;

b.

Infringing Plaintiffs DJ INFAMOUS Mark or any colorable imitation


thereof;

c.

Using in connection with their activities any false or deceptive


designation, representation, or description of Plaintiff or his Mark,
whether by symbols or words or statements, which would damage or
injure Plaintiff or give Defendants an unfair competitive advantage in the
marketplace;

d.

Using any internet web site or domain name or metatag or online account
which includes the DJ INFAMOUS Mark or any similar marks;

e.

Purchasing or using any searchable key words which include the DJ


INFAMOUS Mark;

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Case 1:14-cv-23055-KMW Document 15 Entered on FLSD Docket 11/17/2014 Page 21 of 22

f.

Engaging in acts of state or common law trade name infringement,


trademark infringement, service mark infringement, unfair competition or
misappropriation which would damage or injure Plaintiff;

g.

Diluting the trade name and trademarks of Plaintiff;

h.

Inducing, encouraging, aiding, abetting or contributing to any of the


aforesaid acts.

9.

For an award of treble damages pursuant to 15 U.S.C. 1117;

10.

For an award of punitive damages, in an amount to be proven at trial;

11.

That each of the Defendants is liable, jointly and severally, for all damages due to

the collective nature of their actions, activities and tortious conduct, and
12.

That the Court grant such other and further relief as this Court deems just, proper,

and equitable under the circumstances.


Dated: November 17, 2014

Respectfully submitted,

/s/ Michael A. Trauben


Michael A. Trauben (Florida Bar No. 816841)
mtrauben@SinghTraubenLaw.com
Singh, Singh & Trauben, LLP
400 S. Beverly Drive, Suite 400
Beverly Hills, CA 90212
Telephone: (310) 856-9705
Facsimile: (888) 734-3555
Attorneys for Plaintiff
MARCO RODRIGUEZ-DIAZ P/K/A
DJ INFAMOUS

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Case 1:14-cv-23055-KMW Document 15 Entered on FLSD Docket 11/17/2014 Page 22 of 22

CERTIFICATE OF SERVICE
WE HEREBY CERTIFY that a true and correct copy of the foregoing was served via
CM/ECF on this 17th day of November, 2014, on all counsel or parties of record on the Service
List below.

/s/ Michael A. Trauben

SERVICE LIST
Jeff Barnes, Esq.
W.J. Barnes, P.A.
1515 North Federal Highway
Suite 300
Boca Raton, Florida 33432
Phone: (561) 864-1067
Fax: (310) 275-5157
jeff@wjbarneslaw.com
Attorneys for Defendant
CALVIN DONALD

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