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Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 1 of 34

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF GEORGIA
Fender Musical Instruments Corporation,
Plaintiff,
v.
Richard Mariner and Haywire Custom
Guitars, Inc.,
Defendants.

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Civil Action No. ________________

COMPLAINT
Plaintiff Fender Musical Instruments Corporation (Fender) states the following for its Complaint against Richard Mariner and Haywire Custom Guitars,
Inc. (collectively, Mariner).
SUBSTANCE OF THE ACTION
1.

This is an action at law and in equity for trademark and trade dress in-

fringement, trademark counterfeiting and trademark dilution, unfair competition,


false designation of origin and false or misleading representations of fact, injury to
business reputation, and deceptive trade practices arising under Sections 32 and 43
of the Federal Trademark Act of 1946, 15 U.S.C. 1051 et seq. (2012) (the Lanham Act); the Georgia Dilution Statute, O.C.G.A. 10-1-451(b); the Georgia Deceptive Trade Practices Act, O.C.G.A. 10-1-370 et seq.; and Georgia common
law.
2.

On information and belief, Richard Mariner is the principal of a South

Carolina corporation named Haywire Custom Guitars, Inc. operating in or near


Conway, South Carolina. Mariner and his business also promote and sell merchandise through websites, including the website operating under the domain name

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http://www.haywirecustomguitars.com/. Through these and other channels of distribution, Mariner produces, promotes, sells, and offers for sale electric guitars,
which he has promoted through by using the terms Stratocaster, Telecaster,
Tele, Stratotelia, P-Bass, P J Bass, and Jazz Bass. Mariner has sold and
is selling unlicensed and unauthorized electric guitars that incorporate or are promoted with imitations of word marks, design marks, trade dress, and other sourceidentifying indicia associated with or confusingly similar to word marks, trade
dress, and design marks owned by Fender. Mariner is using such sourceidentifying indicia in combination with other phrases, designs, terminology, and
information in a way calculated to create the misimpression that these electric guitars are those of Fender, or are licensed or sponsored by or otherwise affiliated
with Fender.
3.

Fender brings this action to stop Mariner from continuing to pass off

his unlicensed merchandise as that of Fender and to prevent Mariner from trading
on the enormous goodwill associated with authentic Fender electric guitars. Mariners misconduct is likely to cause confusion and to deceive consumers and the
public (including in a post-sale context), it is likely to dilute and tarnish the distinctive quality of Fenders trademarks, and it will continue to do so absent relief from
this Court.
JURISDICTION AND VENUE
4.

This Court has subject-matter jurisdiction under Section 39 of the

Lanham Act, 15 U.S.C. 1121, and under 28 U.S.C. 1331 and 1338. This Court
has jurisdiction over Fenders related state and common-law claims pursuant to 28
U.S.C. 1338 and 1367.
5.
wire

This Court has personal jurisdiction over Richard Mariner and Hay-

Custom

Guitars,

Inc.,

because

testimonials

on

Mariners

http://www.haywirecustomguitars.com/ website establish that he has sold goods


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bearing unlawful copies of Fenders registered trademarks in this District and because he continues to offer for sale goods bearing unlawful copies of Fenders
trademarks within this State and this District, and/or has otherwise made or established contacts with this State and this District sufficient to permit the exercise of
personal jurisdiction.
6.

This District is a proper venue pursuant to 28 U.S.C. 1391(b)(2) be-

cause a substantial part of the events or omissions giving rise to Fenders claims
occurred in this District.
THE PARTIES
7.

Plaintiff Fender Musical Instruments Corporation is a Delaware cor-

poration with its principal place of business at 17600 N. Perimeter Drive, Suite
100, Scottsdale, Arizona 85255-5435.
8.

On information and belief, Richard Mariner is an individual resident

of the state of South Carolina. On information and belief, Mariner is, and at all
times relevant to this Complaint was, the principal defendant Haywire Custom
Guitars, Inc., a custom-order business with its principal place of business at 2007
Lees Landing Circle, Conway, South Carolina 29526, and is subject to service at
that address. Further, on information and belief, Mariner personally directed, controlled, participated in, engaged in, performed, authorized, approved, ratified, actively and knowingly caused, and was the moving, active, conscious force behind
the acts of Haywire Custom Guitars, Inc. forming the basis of this Complaint.
FACTS COMMON TO ALL CLAIMS FOR RELIEF
Fender and Its Trademark Rights
9.

Fender is the worlds leading manufacturer of guitars, basses, amplifi-

ers, and related equipment. With an illustrious history dating back to 1946, Fender
has touched and transformed music worldwide and in nearly every genre: rock n
roll, country and western, jazz, rhythm and blues, and many others. A wide range
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of musicians, from beginners and hobbyists to the worlds most acclaimed artists
and performers, have used Fender instruments. Fender was founded in Fullerton,
California by legendary inventor Clarence Leo Fender, an electronics innovator,
who realized that he could improve on the amplified hollow-body instruments of
the day by using an innovative solid-body electric guitar design. He further realized that he could streamline the process of building them.
10.

In 1951, Leo Fender introduced a prototype solid-body instrument that

would eventually be called the Telecaster guitar. The Tele guitar, as it was and
is often called, was the first solid-body Spanish-style electric guitar to be commercially mass-produced. The Telecaster guitar, widely used and renowned today
among country and western players, in particular, as well as blues, rock, and jazz
musicians, is truly iconic among musical instruments and has become one of the
most popular electric guitars in history.
11.

Fender first introduced its Stratocaster guitar in 1954, incorporating

design innovations based on feedback from professional musicians. No one could


have foreseen then how the Strat guitar, as it was and is often called, would go on
to revolutionize popular music. In 1957, Buddy Holly appeared on the Ed Sullivan Show playing his maple-neck Strat guitar, and the guitar (like Holly) became a music sensation. Just a few years later, John Lennon and George Harrison
of the Beatles used their Fender Stratocaster guitars while recording some of the
most popular music of the 1960s. The immensely popular guitar received yet another enormous profile (and sales) boost when Jimi Hendrix gained renown as a
loyal Strat guitar player. Indeed, in 1990, the Stratocaster guitar used by Hendrix at the Woodstock Music Festival in 1969 sold at auction by Sothebys for
$270,000a record price. Essentially unchanged since its 1954 debut, the Stratocaster guitar is quite simply the most popular and influential electric guitar ever
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made, and players at all levels and in all genres continue to rely on its sound, playability, and versatility to this day.
12.

The legendary Fender Telecaster and Stratocaster guitars are uni-

versally acclaimed as design classics. Together with the revolutionary Fender Precision Bass guitar, these historic instruments laid the foundation for a new kind
of musical group and a revolution in popular musicwhat we know today as the
modern rock band. As opposed to the big bands of an earlier era, the Telecaster
and Stratocaster guitars made it possible for smaller groups of musicians to get
together and be heard.
13.

Even a partial roster of Fender Telecaster and Stratocaster guitar-

ists includes the names of many of the most famous musicians of the past sixty
years: Eric Clapton, Jeff Beck, Jimi Hendrix, Dick Dale, Buddy Guy, Merle Haggard, Stevie Ray Vaughan, Jimmy Page, John Lennon, George Harrison, Yngwie
Malmsteen, Robert Cray, Bruce Springsteen, Buddy Holly, Mark Knopfler, David
Gilmour, Bonnie Raitt, James Burton, Chrissie Hynde, The Beach Boys, Bob Dylan, Buck Owens, Brad Paisley, Vince Gill, The Edge, Keith Richards, Joe Strummer, Pete Townshend, John Mayer, Marty Stuart, Keith Urban, Muddy Waters,
Johnny Marr, and Kurt Cobain.
14.

Fender and its predecessors in interest have long used a variety of

trademarks (either standing alone or in combination with design elements) in connection with Fenders electric guitars to better identify the source and quality of
those guitars. To protect the goodwill associated with those products, Fender owns
and uses in connection with the sale of its products in interstate and foreign commerce, inter alia, the trademarks FENDER, STRATOCASTER, STRAT,
TELECASTER, TELE, JAZZ BASS, and P BASS, as well as the distinctive and nonfunctional trade dress of the headstocks on its electric guitar products
(including the headstocks shape and the configuration of the tuning knobs and
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other components and indicia), in which Fender has unregistered common-law


trade dress rights for use in connection with electric guitars, including the Stratocaster and Telecaster guitars:

Fender Stratocaster Guitar

Fender Telecaster Guitar Head-

Headstock

stock

15.

The headstock is the key source-identifying feature of the modern

electric guitar. In particular, the shape of the headstock (which, in the types of guitars at issue here, is part of a single piece of wood that also includes the guitar
neck) is nonfunctional and primarily serves to identify the brand and model of the
guitar. Fender also owns trademark rights and federal registrations for the shapes
of its headstock designs. These marks are instantly recognizable to generations of
musicians and music fans as indicators of the source of Fenders products and of
the immense history and goodwill associated with Fender.
16.

More specifically, in addition to Fenders extensive common-law

rights, and given the importance of and value to Fender of its trademarks and
goodwill, Fender owns, inter alia, the following trademark registrations issued by
the United States Patent and Trademark Office (USPTO):

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Trademark

Reg. No.

Reg. Date

Goods

Date of
First Use
in Commerce

STRATOCASTER
TELECASTER
STRAT
TELE
JAZZ BASS
P BASS

0839997

12/5/1967

Electric guitars

1954

0871794
1058385
1058386
0882884
1062732
1148869

6/24/1969
2/8/1977
2/8/1977
12/23/1969
4/5/1977
3/24/1981

Guitars
Electric guitars
Electric guitars
Bass guitars
Electric bass guitars
Electric guitars

1949
4/16/1976
4/16/1976
1957
4/16/1976

1148870

3/24/1981

Electric guitars

2163733

6/9/1998

Electric guitars and


electric bass guitars,
and necks for electric
guitars and electric
bass guitars

1955

1951

1955

Copies of the trademark registration certificates for each of these registrations are
attached as Exhibit A.
17.

Each of the foregoing trademark registrations is incontestable pursu-

ant to Section 15 of the Lanham Act, 15 U.S.C. 1065, and serves as conclusive
evidence of Fenders ownership of the respective marks and of its exclusive rights
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to use the respective marks in commerce on or in connection with the goods identified in those registrations under Section 33(b) of the Lanham Act, 15 U.S.C.
1115(b). Affidavits have been filed pursuant to Sections 8 and 15 of the Lanham
Act, 15 U.S.C. 1058 and 1065, with regard to each registration.
18.

Fenders registered and common-law trademarks and trade dress as

referenced in Paragraphs 14 through 17 are collectively referred to as the FENDER Marks.


19.

Since Fenders first use in commerce of each of the FENDER Marks,

the products sold under the FENDER Marks have been continuously sold throughout the United States and internationally. Fender developed rights in each of the
FENDER Marks long before the activities at issue in this Complaint, and the
FENDER Marks serve as a powerful indicator of the source of goods and services
provided by or otherwise affiliated with Fender.
20.

Fender has invested and is currently investing significant time, effort,

and money in advertising, marketing, and promoting the FENDER Marks and the
goods provided under the FENDER Marks in many forms of media, including
print, television, radio, and online. The FENDER Marks are widely recognized for
quality electric guitars and in connection with related goods and services as provided by Fender and through its authorized licensees.
21.

Fender and its authorized licensees have sold many millions of dol-

lars worth of products using the FENDER Marks in the United States and internationally. As a result of the longstanding, continuous, and exclusive use, promotion
of, and sales under the FENDER Marks by Fender and its licensees, the FENDER
Marks enjoy wide public acceptance and association with Fender, and Fender has
built up and now owns the tremendously valuable goodwill that is symbolized by
the FENDER Marks.
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22.

The purchasing public has come to associate the FENDER Marks as

identifying goods created, distributed, authorized, or licensed exclusively by Fender. The FENDER Marks are distinctive and each achieved significant secondary
meaning and fame well before the complained-of conduct of Mariner.
Mariners Unlawful Activities
23.

Mariner has been and is promoting and selling electric guitars that are

designed, manufactured, and sold as colorable imitations of Fender electric guitars.


Mariner has designed his guitars in an intentional and specific effort to create virtually identical copies of vintage Fender electric guitars. In connection with his
guitars, Mariner has in the past and is currently making unauthorized use of the
FENDER Marks and unauthorized imitations of those marks on guitars that compete directly with Fenders own guitars. Mariners electric guitar products, and the
promotional materials marketing those products, incorporate features such as headstock designs and logos, and/or use some or all of the FENDER Marks and imitations of some or all of the FENDER Marks identified above, without Fenders authorization and in a manner that is likely to confuse the consuming public and/or
that seeks to associate Mariners products falsely with those of Fender.
24.

Examples of this unauthorized use have been and are accessible at, in-

ter alia, Mariners own website, at http://www.haywirecustomguitars.com/, the salient pages of which are reproduced as Exhibit B. That site reflects the following
representative (but not exhaustive) examples of Mariners use of Stratocaster,
Telecaster, Tele, Stratotelia, P-Bass, and Jazz Bass to promote guitars
and guitar headstocks of his own production:

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25.

As shown in the above examples, and as is clear from multiple other

photographs on Mariners website, Mariners guitars use not only body shapes and
other components that appear virtually identical to those of Fenders Telecaster
and Stratocaster guitars, but also headstock shapes that are imitations of, but virtually identical to, Fenders common-law headstock trade dress and the following
of Fenders federally registered headstock designs:

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The following screenshots captures Mariners unauthorized use of these


FENDER Marks or colorable imitations of the marks:

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26.

Mariners promotion and marketing of guitars featuring wholly unau-

thorized uses of the FENDER Marks and imitations of the FENDER Marks is also
accomplished via testimonials and promotional videos on Mariners website that
misuse Fenders marks. The following are testimonials from Georgia residents featuring such misuses:

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27.

Mariner also has misused the FENDER Marks and imitations of the

FENDER Marks on the Facebook page for Haywire Custom Guitars, Inc., which is
reprinted as Exhibit C. That page reflects the following representative (but not exhaustive) examples of those misuses:

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28.

As reflected in Exhibit D, Mariner also has promoted goods of his

own production on Google+, examples of which can be accessed at


https://plus.google.com/u/0/+HaywirecustomguitarsUSA/posts, through unauthorized uses and misuses of the FENDER Marks. The following are representative
(but not exhaustive) examples of those uses:

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As reflected in the last graphic immediately above, Mariner has used FENDER
Marks to promote guitars that admittedly are comprised of substantive components
produced by Fenders competitors, such as the Gibson SG body referenced in the
graphic.
29.

The following components of the modern electric guitar, including

those sold by Fender and Mariner, play key roles in the guitars performance:
a.

the magnetic pickups, which are the electrical transducers that


convert the vibration of the guitars strings into an electrical
signal for amplification, and which significantly affect the guitars sustain and tone;

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b.

the guitars other electrical components, including switches,


volume and tone controls, wiring, and jacks, which affect the
guitars tone, usability, and durability;

c.

the guitar body, the material, shape, size, finish, and internal
routing of which affect the guitars tone, sustain, and playability;

d.

the bridge, which supports the guitars strings and anchors them
to the body of the guitar, contributing to the guitars tone and
sustain and providing for adjustability of intonation (consistent
tuning along the length of the neck);

e.

the neck, fretboard, and frets, the material, quality, shape, and
finish of which affect the guitars playability, tone, sustain, intonation, and adjustability; and

f.

the nut and saddles (the primary contact points where the
strings rest at either end of the guitar), which affect the guitars
tone, adjustability, and playability.

Mariners website represents that his guitar bodies are Completely Wired To
Fender

Specs,

http://www.haywirecustomguitars.com/guitarbodies.html,

but

Fender has no control over the components used by Mariner in the production of
his goods.
30.

If Mariner is using altered genuine or licensed Fender necks and head-

stocks, such alterations void the warranties associated with genuine or licensed
Fender necks and violate the explicit limitations under which such necks are sold
for use only in connection with genuine Fender products.
31.

To the extent that Mariner has affixed genuine or licensed Fender

necks with headstocks comprising Fenders common-law headstock trade dress


and registered headstock marks to guitar bodies of his own manufacture, the result- 21 -

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ing composite guitars differ in so many material respects from genuine Fender guitars that the composite guitars cannot fairly be described as Fender products or be
marketed in association with Fenders common-law headstock trade dress or registered headstock marks without confusion. Specifically, any composite guitars produced by Mariner may feature the following components that differ entirely from
those used in genuine Fender guitars:
a.

magnetic pickups;

b.

electrical components and wiring;

c.

guitar bodies;

d.

bridges; and

e.

nuts and saddles.

Because consumers encountering any composite guitars that may be produced by


Mariner will mistakenly believe that Fender is responsible for the composition of
those guitars, no amount of disclosure will cure the deception, likely confusion,
and harm to the Fender brand arising from Mariners conduct.
32.

To the extent that Mariner has affixed genuine or licensed Fender

necks with headstocks comprising Fenders common-law headstock trade dress


and registered headstock marks to guitar bodies of his own production, Mariner has
promoted the resulting composite guitars through independent acts of active or
purposeful deception, false suggestion, and misrepresentations designed or likely
to cause confusion about the origin of those guitars.
33.

To the extent that Mariner has affixed genuine or licensed Fender

necks with headstocks comprising Fenders common-law headstock trade dress


and registered headstock marks to guitar bodies of his own production, the lawfulness of Mariners promotion of those guitars cannot be evaluated in a vacuum independent of Mariners past misconduct. On the contrary, Mariners prior use of
counterfeit imitations of Fenders marks on guitars of his own manufacture and in
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his advertising have created a cloud of deception that surrounds and permeates any
use he may now be making of genuine Fender headstocks. Specifically, having
been exposed to Mariners misleading association of his guitars with the FENDER
Marks other than Fenders common-law headstock trade dress and registered headstock marks, the public and the trade will inevitably but mistakenly assume that
any use Mariner may now be making of genuine Fender headstocks, even in the
absence of any other continuing infringing use of the FENDER Marks, is approved, sponsored, or licensed by Fender.
34.

On August 20, 2012, Fenders Associate General Counsel sent a

cease-and-desist letter to Mariner via overnight mail and email, together with examples of evidence of Mariners infringing activity. The Fender letter requested a
response by September 12, 2012. A copy of this letter (with attachments) is attached as Exhibit E.
35.

On August 21, 2012, and as reflected in Exhibit F, Fender received a

response from Mariner, in which Mariner committed, inter alia, to [r]emove any
reference to Fender guitars in titles and [r]emove any photos with Fender headstocks. Nevertheless, as set forth above and despite numerous follow-up communications from Fender, Mariner has not fulfilled these commitments.
36.

Mariners uses of imitations of the FENDER Marks are not nomina-

tive fair uses of those marks. As the numerous graphics in this Complaint and in
the exhibits to this Complaint demonstrate, Mariner does not use imitations of the
FENDER Marks to refer to Fender or to Fenders goods. Rather, Mariner uses
those imitations to refer to his goods.
37.

The goods marketed, sold, and offered for sale by Mariner are not

produced by Fender, nor is Mariner associated or connected with Fender, or licensed, authorized, sponsored, endorsed, or approved by Fender in any way.
Moreover, the goods sold by Mariner are similar to and compete with goods sold,
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distributed or licensed by Fender, and are sold through overlapping channels of


trade.
38.

On information and belief, at the time Mariner first commenced use of

the FENDER Marks or confusingly similar imitations thereof, Mariner was fully
aware of Fenders extensive and continuous use of the FENDER Marks and of
Fenders preexisting and senior rights in those marks.
39.

Mariners use of the FENDER Marks or confusingly similar imita-

tions of the FENDER Marks is likely to deceive, confuse, and mislead purchasers
and prospective purchasers into believing that electric guitars sold by Mariner are
manufactured by, authorized by, or in some manner associated with Fender, which
they are not.
40.

The likelihood of confusion, mistake, and deception engendered by

Mariners misappropriation and imitation of the FENDER Marks is causing irreparable harm to the goodwill symbolized by the FENDER Marks and the reputation
for quality that they embody.
41.

Mariners activities are likely to cause confusion before, during, and

after the time of purchase because purchasers, prospective purchasers, and others
viewing Mariners electric guitars at the point of sale or during a subsequent musical performance are likelydue to Mariners use of confusingly similar imitations
of the FENDER Marksto mistakenly attribute the product to Fender. This is particularly damaging in light of the potentially inferior quality of Mariners guitars.
By causing such a likelihood of confusion, mistake, and deception, Mariner is inflicting irreparable harm to the goodwill symbolized by the FENDER Marks and
the reputation for quality that they embody.
42.

Upon information and belief, Mariner continues to use confusingly

similar imitations of the FENDER Marks in connection with the sale of products
that are directly competitive to those offered by Fender but are of inferior quality.
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Mariner began selling these imitations well after Fender established protectable
rights to the FENDER Marks, and well after those respective marks became famous.
43.

On information and belief, Mariner knowingly, willfully, intentional-

ly, and maliciously adopted and used confusingly similar imitations of the FENDER Marks. Mariners unlicensed and unauthorized products are calculated to trade
on the valuable goodwill and commercial magnetism of Fenders reputation and
identity among guitarists, musicians, the trade, and the consuming public in this
District and elsewhere. Mariner is attempting to pass off his merchandise as that of
Fender.
COUNT ONE
FEDERAL TRADEMARK INFRINGEMENT
44.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-43 as if fully set forth here.


45.

Mariners conduct is causing immediate and irreparable injury to Fender

and will continue to damage Fender and to deceive the public unless enjoined by this
Court.
46.

Mariners use of the FENDER Marks or confusingly similar imita-

tions of the FENDER Marks is likely to cause confusion, deception, and mistake
by creating the false and misleading impression that Mariners goods are manufactured or distributed by Fender, or associated or connected with Fender, or have the
sponsorship, endorsement, or approval of Fender.
47.

Mariner has used and continues to use marks confusingly similar to

Fenders federally registered FENDER Marks in violation of 15 U.S.C. 1114, and


Mariners activities have caused and, unless enjoined by this Court, will continue
to cause, a likelihood of confusion and deception of members of the trade and public and, additionally, injury to Fenders goodwill and reputation as symbolized by
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the federally registered FENDER Marks, for which Fender has no adequate remedy
at law.
48.

Mariners actions demonstrate an intentional, willful, and malicious

intent to trade on the goodwill associated with Fenders federally registered


FENDER Marks, to Fenders great and irreparable injury.
49.

Mariner has caused, and is likely to continue causing, substantial inju-

ry to the public and to Fender, and Fender is entitled to injunctive relief and impoundment and destruction of Mariners infringing products, and to recover Fenders actual damages, Mariners profits, enhanced profits and damages, costs, and
reasonable attorneys fees under 15 U.S.C. 1114, 1116, 1117, and 1118.
COUNT TWO
FEDERAL TRADEMARK COUNTERFEITING
50.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-49 as if fully set forth here.


51.

Mariner has used previously spurious designations that are identical

to, or substantially indistinguishable from, the FENDER Marks on goods covered


by registrations of the FENDER Marks.
52.

Mariner has intentionally used these spurious designations, knowing

they are counterfeit, in connection with the advertisement, promotion, sale, offering for sale, and distribution of his goods.
53.

Mariners use of the FENDER Marks to advertise, promote, offer for

sale, distribute, and sell guitars bearing counterfeit marks was and is without the
consent of Fender.
54.

Mariners unauthorized use of the FENDER Marks on and in connec-

tion with his advertisement, promotion, sale, offering for sale, and distribution of
guitars on the internet constitute Mariners use of the FENDER Marks in commerce.
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55.

Mariners unauthorized use of the FENDER Marks as set forth above

is likely to:
a.

cause confusion, mistake, and deception;

b.

cause the public to believe that Mariners guitars are the same
as Fenders guitars and/or that Mariner is authorized, sponsored
or approved by Fender or that Mariner is affiliated, connected
or associated with or in some way related to Fender; and

c.

result in Mariner unfairly benefiting from Fenders advertising


and promotion and profiting from the reputation of Fender, its
authentic guitars, and its FENDER Marks all to the substantial
and irreparable injury of the public, Fender and the FENDER
Marks and the substantial goodwill represented thereby.

56.

Mariners acts constitute willful trademark counterfeiting in violation

of Section 32 of the Lanham Act, 15 U.S.C. 1114, and within the meaning of Section 34(d)(1) of that Act, id. 1116(d)(1).
57.

Because of Mariners unlawful actions, Fender has suffered and con-

tinues to suffer irreparable harm, including, but not limited to, detriment to and
diminution in value of its marks, for which there is no adequate remedy at law. Accordingly, Fender is entitled to an injunction against Mariner, pursuant to 15
U.S.C. 1116.
58.

By reason of the foregoing, Mariner is liable to Fender for: (a) statuto-

ry damages in the amount of up to $2,000,000 for each mark counterfeited as provided by 15 U.S.C. 1117(c) of the Lanham Act, or, at Fenders election, an
amount representing three (3) times Fenders damages and/or Mariners illicit profits; and (b) reasonable attorneys fees, investigative fees, and pre-judgment interest
pursuant to 15 U.S.C. 1117(b).
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COUNT THREE
FEDERAL TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION
59.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-58 as if fully set forth here.


60.

Mariners unlicensed and unauthorized goods have caused and are

likely to cause confusion, deception, and mistake by creating the false and misleading impression that Mariners goods are manufactured or distributed by Fender or
are associated or connected with Fender, or have the sponsorship, endorsement, or
approval of Fender.
61.

Mariner has made false representations, false descriptions, and false

designations of origin in violation of 15 U.S.C. 1125(a), including, but not limited to, Mariners commercial and merchandising use of the FENDER Marks
and/or confusingly similar imitations of the FENDER Marks, including Fenders
nonfunctional headstock trade dress. Mariners activities have caused and, unless
enjoined by this Court, will continue to cause a likelihood of confusion and deception among members of the trade and the public and, additionally, injury to Fenders goodwill and reputation, for which Fender has no adequate remedy at law.
62.

Particularly in light of the inferior quality of his goods, Mariners ac-

tions demonstrate an intentional, willful, and malicious intent to trade on the


goodwill associated with Fender to the great and irreparable injury of Fender.
63.

Mariners conduct has caused, and is likely to continue causing, sub-

stantial injury to the public and to Fender, and Fender is entitled to injunctive relief
and impoundment and destruction of Mariners infringing products and to recover
Mariners profits, enhanced profits and damages, costs, and reasonable attorneys
fees under 15 U.S.C. 1125(a), 1116, and 1117.
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Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 29 of 34

COUNT FOUR
FEDERAL TRADEMARK DILUTION
64.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-63 as if fully set forth here.


65.

Separately and collectively, the FENDER Marks are famous trade-

marks under 15 U.S.C. 1125(c)(2)(A), in that each is widely recognized by the


general consuming public of the United States as a designation of the source of
Fenders electric guitars. The FENDER Marks became famous long prior to Mariners unlawful use of those marks, or confusingly similar imitations of the marks.
66.

Mariners use of the FENDER Marks, or confusingly similar imita-

tions thereof, in connection with Mariners advertising, promotion, and offering for
sale of his inferior-quality goods is likely to dilute Fenders famous FENDER
Marks, in violation of 43(c) of the Lanham Act, 15 U.S.C. 1125(c), by lessening their capacity to identify and distinguish Fender exclusively as the source of
goods in the United States bearing or provided under the famous FENDER Marks.
Mariners conduct is likely to blur the publics exclusive identification of these
marks with Fender and is likely to tarnish and degrade the positive associations and
prestigious connotations of the FENDER Marks.
67.

Mariners unauthorized use of the FENDER Marks in connection with

Mariners advertising, promotion, and offering for sale of his inferior-quality guitars is intended to and has the effect of trading on Fenders reputation and causing
dilution of the famous FENDER Marks.
68.

Mariner cannot assert any rights in the FENDER Marks that are prior

to Fenders first use, actual or constructive, of the FENDER Marks.


69.

Mariners likely trademark dilution has injured and will continue to

injure Fender in that Fender has suffered and will continue to suffer damage to its
reputation and customer goodwill as a direct and proximate result of Mariners il- 29 -

Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 30 of 34

legal conduct, unless such unlawful conduct is enjoined by this Court. In addition,
Mariner has been unjustly enriched by reason of his acts of trademark dilution in
that he has achieved sales and profits, and the opportunity to earn future sales and
profits, as a direct and proximate result of his illegal conduct.
70.

Fender is entitled to recover all damages sustained by Mariners ac-

tions, all profits realized by Mariner through the unlawful use of marks that dilute
the FENDER Marks, and the costs of this action.
71.

Mariners actions have been willful and deliberate, entitling Fender to

recover treble damages and/or profits and an award of reasonable attorneys fees
against Mariner.
COUNT FIVE
STATE TRADEMARK DILUTION
UNDER O.C.G.A. 10-1-451(b)
72.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-71 as if fully set forth here.


73.

Mariners conduct constitutes likely trademark dilution in violation of

O.C.G.A. 10-1-451(b).
74.

The FENDER Marks are strong and distinctive marks that have been

in use for decades and that have achieved widespread public recognition.
75.

By virtue of long and continuous use in commerce, including within

the State of Georgia, the FENDER Marks have become and continue to be famous
and distinctive.
76.

Mariners unauthorized use of the FENDER Marks, or confusingly

similar imitations thereof, in connection with Mariners advertising, promotion,


and offering for sale of his inferior-quality electric guitars is diluting the distinctive
quality of the FENDER Marks, is lessening the capacity of the FENDER Marks to
identify and distinguish Fenders services, and is causing a likelihood of harm to
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Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 31 of 34

Fenders business reputation. Mariners conduct is likely to blur the publics exclusive identification of these marks with Fender and is likely to tarnish and degrade
the positive associations and prestigious connotations of the FENDER Marks.
77.

On information and belief, Mariner intends to continue his dilutive

conduct unless restrained by this Court.


78.

Mariners conduct is causing, and is likely to continue to cause, injury

to the public and to Fender, and Fender is entitled to injunctive relief.


79.

Mariners actions have been willful, intentional and deliberate, with

an intent to trade on Fenders reputation, entitling Fender to recover all damages


sustained by Fender, an accounting of all profits realized by Mariner through the
unlawful use of marks that dilute the FENDER Marks, and the costs of this action.
COUNT SIX
COMMON-LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
80.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-79 as if fully set forth here.


81.

Mariners conduct as alleged above constitutes trademark infringe-

ment and unfair competition in violation of the common law of the State of Georgia.
82.

Particularly in light of the inferior quality of Mariners goods, Mari-

ners trademark infringement and unfair competition as alleged above have injured
Fender in that Fender has suffered damage to its reputation and customer goodwill
as a direct and proximate result of Mariners illegal conduct. In addition, Mariner
has been unjustly enriched by reason of his trademark infringement and unfair
competition in that Mariner has achieved sales and profits, and the opportunity to
earn future sales and profits, as a direct and proximate result of his illegal conduct.
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Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 32 of 34

83.

Unless enjoined by this Court, Mariners trademark infringement and

unfair competition will continue to cause irreparable and inherently unquantifiable


injury and harm to Fenders business, reputation, and goodwill.
84.

Mariners wrongful conduct as above alleged was accompanied by

circumstances of willfulness and deliberate indifference to the rights of Fender,


warranting the assessment of punitive damages.
COUNT SEVEN
STATE DECEPTIVE TRADE PRACTICES UNDER O.C.G.A. 10-1-370
ET SEQ.
85.

Fender repeats and incorporates by reference the allegations in para-

graphs 1-84 as if fully set forth here.


86.

Mariner has been and is passing off his inferior-quality goods as those

of Fender, causing a likelihood of confusion or of misunderstanding as to the


source, sponsorship, or approval of Mariners goods, causing a likelihood of confusion as to Mariners affiliation, connection, or association with another, and otherwise damaging the public. Mariners conduct constitutes unfair and deceptive
acts or practices in the course of a business, trade or commerce in violation of the
fair business practices under the Georgia Deceptive Trade Practices Act, O.C.G.A.
10-1-370 et seq., in that the deceptive acts and practices have been undertaken
in connection with the sale and advertising of merchandise, namely, electric guitars.
87.

Mariners wrongful conduct and unauthorized use of the FENDER

Mark and confusingly similar imitations of the FENDER Marks has been accompanied by circumstances of willfulness and wanton and reckless conduct, showing
spite and ill-will, as well as deliberate indifference to the rights of Fender, warranting the assessment of punitive damages and all other damages, costs, and fees
available under the Georgia Deceptive Trade Practices Act.
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Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 33 of 34

PRAYER FOR RELIEF


Fender therefore prays that a judgment be entered:
1.

Permanently enjoining Mariner and all affiliated or related entities,

agents, officers, employees, representatives, successors, assigns, attorneys, and all


other persons acting for, with, by, through, or under authority from Mariner, or in
concert or participation with Mariner and each of them, pursuant to the powers
granted to this Court by 15 U.S.C. 1116 and relevant state statutes, from:
a. using the FENDER Marks and/or confusingly similar imitations of the
FENDER Marks, in connection with Mariners business or goods or
services, including but not limited to the advertising of those goods or
services; and
b. using any trademark, trade dress, service mark, name, logo, or source
designation of any kind that is a copy, reproduction, colorable imitation, or simulation of or confusingly similar to, or in any way similar
to, the trademarks, service marks, or logos, of Fender, or is likely to
cause confusion, mistake, deception, or public misunderstanding that
Mariners business or services are the business or services of Fender,
or are sponsored by or in any way related to Fender.
2.

Awarding Fender compensatory and punitive damages; an accounting

of all profits received by Mariners unauthorized use of Fenders FENDER Marks,


or confusingly similar imitations thereof; the costs of this action; reasonable attorneys fees under 15 U.S.C. 1117; and a trebling of damages and profits as authorized by law.
3.

Requiring Mariner to account to the Fender for all profits resulting

from Mariners sale of counterfeit merchandise bearing the FENDER Marks and
that the award to Fender be trebled as provided for under 15 U.S.C. 1117; alter- 33 -

Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 34 of 34

natively, that Fender be awarded statutory damages under 15 U.S.C. 1117(c) of


up to $2,000,000 for each mark Mariner has willfully counterfeited.
4.

Ordering Mariner to deliver up for impoundment and for destruction

all electric guitars or other merchandise, parts, templates, boxes, labels, tags, packages, receptacles, advertising, promotional material, or other materials in the possession, custody, or under the control of Mariner that are found to infringe any of
Fenders FENDER Marks or that otherwise unfairly compete with Fender and its
products and services;
5.

Requiring Mariner to pay prejudgment and post judgment interest on

any monetary award; and


6.

Granting Fender such other and further relief as the Court may deem

just and proper.


JURY TRIAL DEMAND
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Fender respectfully demands a trial by jury on all claims and issues so triable.
Respectfully submitted,
Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street
Suite 2800
Atlanta, Georgia 30309-4528
404-815-6500

s/Theodore H. Davis Jr.


Theodore H. Davis Jr.
Ga. Bar No. 212913
Jared S. Welsh
Ga. Bar No. 940433
Attorneys for Plaintiff Fender Musical
Instruments Corporation

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