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v.
LIPSTICK QUEEN, LLC and DOES 1
through 10, inclusive
Defendants.
Case No.
COMPLAINT FOR DAMAGES
AND INJUNCTIVE RELIEF
(1) FEDERAL TRADEMARK
INFRINGEMENT;
(2) FEDERAL UNFAIR
COMPETITION AND FALSE
DESIGNATION OF ORIGIN;
(3) FEDERAL TRADEMARK
DILUTION;
(4) FEDERAL FALSE
ADVERTISING;
(5) COMMON LAW
TRADEMARK
INFRINGEMENT;
(6) COMMON LAW UNFAIR
COMPETITION;
(7) STATE FALSE
ADVERTISING
24
25
26
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28
1
2
INTRODUCTION
1.
3 commercial use and merchandising rights, publicity rights and related rights
4 associated with the well-known motion picture THE ENDLESS SUMMER.
5
2.
Defendants are trading off the good will associated with THE
3.
11 and compensatory, statutory and treble damages to compensate them for the harm
12 Defendants have done.
13
14
PARTIES
4.
5.
6.
Defendants Doe 1 through Doe 10, inclusive, are sued herein under
21 fictitious names. Their true names and capacities are unknown to Plaintiff. When
22 their true names and capacities are ascertained, Plaintiff will amend this Complaint
23 by inserting their true names and capacities herein. Plaintiff is informed and
24 believes, and thereon alleges, that each of the fictitiously named defendants is
25 responsible in some manner for the occurrences herein alleged, and that Plaintiffs
26 damages as herein alleged were proximately caused by those defendants. Each
27 reference in this Complaint to Defendant or Defendants refers also to all
28 Defendants, including LQ and all Defendants sued under fictitious names.
!2
Complaint
7.
2 times herein mentioned each of the Defendants, including all Defendants sued under
3 fictitious names, was the agent, employee, or representative of each of the remaining
4 Defendants, and in doing the things hereinafter alleged, was at times acting within
5 the course and scope of this agency or employment, and at other times, acting in his
6 own individual capacity. In the alternative, each of the individually named
7 Defendants, as alleged herein below, acted in concert and in furtherance of their
8 fraudulent plan and scheme and each actively participated in the wrongful acts
9 alleged herein below.
10
11
This Court has subject matter jurisdiction over this Complaint pursuant
12 to 28 U.S.C. 1331 and 1338, because the action arises under the Lanham
13 Trademark Act of 1946, 15 U.S.C. 1051 et seq., and pursuant to the supplemental
14 jurisdiction provisions contained in 28 U.S.C. 1367.
15
9.
16 information and belief, Defendants regularly conduct and have conducted business
17 in California and this District by, among other things, selling products throughout
18 the state of California. Specifically, on information and belief, LQ sells cosmetic
19 products including lipstick within the state of California and in this District.
20 Additionally, Defendants conduct, which constitutes trademark infringement and
21 contributory trademark infringement occurred in this District, and has caused and
22 continues to cause Plaintiff to suffer harm in this District.
23
10.
24 inter alia, a substantial portion of the acts giving rise to this case occurred within this
25 district, and pursuant to 28 U.S.C. 1400, in that Plaintiffs and these Defendants, or
26 their agents, conduct business, reside or may be found within this district.
27
28
!3
Complaint
1
2
12.
Mr. Browns 1966 motion picture, The Endless Summer, which follows
7 two surfers on their trip around the world in search of the perfect wave is considered
8 to be one of the most influential films to depict surfing and the surfing lifestyle. The
9 title of the film, coined by Mr. Brown, refers to the idea that one could surf
10 throughout the year if they were able to follow the summer season by traveling
11 around the world, thereby making the summer endless.
12
13.
The Endless Summer film has been hailed as the most important and
14.
In addition, the movie poster form The Endless Summer film, is also
17 considered iconic and world famous. The posters composition featuring three
18 surfers silhouette against a blazing background of orange, magenta, and yellow has
19 been called, the most recognizable piece of Pop Art this side of Warhol, and was
20 featured in a nine-page Vanity Fair article in 2014 which exclaimed, The Endless
21 Summer poster is 50 years old, and it hasnt aged a minute. In 2015, the Endless
22 Summer film and film poster were inducted into the Smithsonian Institute.
23
15.
24 and movie poster and the substantial time, money and effort that has been expended
25 to promote them, merchandise based on The Endless Summer film and poster image
26 has been widely sold and distributed in the United States and elsewhere. Such
27 merchandise has been identified in various ways, including through the use of the
28 words Endless Summer, the slogans In Search of the Perfect Wave, and Search
!4
Complaint
1 for the Perfect Wave (collectively the Slogans), various images and
2 compositional elements from the film and emblematic of the film poster, and
3 combinations of the words Endless Summer, the Slogans and images and elements
4 from the film and film poster.
5
16.
17.
9 registrations (the Trademarks), for the brand name ENDLESS SUMMER, THE
10 ENDLESS SUMMER, SEARCH FOR THE PERFECT WAVE, and the Endless
11 Summer design mark, true and correct copies of which are attached hereto at Exhibit
12 A, for a wide variety of merchandise and services, as follows:
13
Mark
Reg. Date
Reg. or Serial
Number
Classes
1703373
25
Endless Summer
3298604
19
Endless Summer
3369887
25; 28
20
(Design mark)
3369888
25; 28
21
Endless Summer
3894999
39; 43
22
Endless Summer
4232348
35
23
Endless Summer
4276188
35; 42; 43
24
Endless Summer
4403128
25
25
3903054
25
Endless Summer
pending
86692676
33
Endless summer
pending
86692718
30; 32
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18
26
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!5
Complaint
18.
2 merchandise for at least 33 years, and Plaintiff has granted licensing rights to
3 Endless Summer copyrights, merchandise rights, publicity rights and the
4 Trademarks for use on and in merchandise, goods and services.
5
19.
20.
12 become and are well known to the American public, and products based on Endless
13 Summer have generated wide consumer appeal.
14
21.
15 as well as images from and emblematic of the Endless Summer film and poster
16 possess valuable goodwill and are well known to the public as identifying products
17 and services which are authorized by Plaintiff, and which originate from Plaintiff.
18 For this reason, Plaintiff possesses common law trademark rights in the names
19 Endless Summer and in images from and emblematic of the Endless Summer film
20 and film poster, in addition to the registered Trademarks.
21
22.
Plaintiffs Trademarks are all valid, extant and in full force and effect.
22 The Trademarks are all exclusively owned by Plaintiff. Plaintiff has continuously
23 used each of the Trademarks from the registration date, or earlier, until the present
24 time and at all times relevant to the claims alleged in this Complaint.
25
23.
Complaint
24.
The revenue from goods and services sold in the United States which
2 use the Trademarks is substantial. The appearance and other features of the
3 Trademarks are inherently distinctive and serve to identify Plaintiff, and its licensees
4 as the source of products bearing the Trademarks.
5
25.
6 and is permanently intertwined with the motion picture The Endless Summer, and as
7 such, Endless Summer and the images emblematic of the Endless Summer film
8 poster have become famous and distinctive brands.
9
26.
10 intellectual property.
11
12
13 selling lipstick.
14
28.
15 brand name Endless Summer without authorization from Plaintiff within the last
16 year (the Infringing Merchandise). A depiction of Defendants infringing use is
17 attached hereto at Exhibit B.
18
29.
30.
21 associated with the Trademarks and the Endless Summer film, including Hang
22 Ten, Stoked, and Perfect Wave.
23
31.
32.
Complaint
33.
34.
Plaintiff has demanded that Defendants cease and desist from further
7 infringing activity. However, Defendants have failed and refused to cease or desist
8 and continue to sell Infringing Merchandise in violation of Plaintiffs trademark
9 rights.
10
COUNT ONE
11
12
13
35.
14 Complaint.
15
36.
16 Trademarks, including the Endless Summer brand, and has used them extensively
17 and continuously in interstate commerce throughout the United States.
18
37.
The Endless Summer marks are arbitrary and fanciful and have attained
38.
23 Summer names and marks and other indicia identifying Plaintiff on and/ or in
24 connection with its goods, the public has been and/or is likely to be confused and
25 deceived as to the origin or source of Defendants goods, and/ or to falsely believe
26 that there is an association between Plaintiff on the one hand, and Defendants
27 goods, on the other.
28
!8
Complaint
39.
41.
42.
16 connection with its Infringing Merchandise, Defendants sales of its line of Endless
17 Summer and other Infringing Merchandise to the public has had and will have an
18 adverse effect upon Plaintiffs and its licensees' business in this District, the State of
19 California and throughout the United States.
20
43.
21 Merchandise under and/or in connection with the Endless Summer names and marks
22 will cause the Trademarks to lose their distinctive qualities and will erode Plaintiffs
23 selling power.
24
44.
25 not only continued to use the Trademarks without authorization, but have escalated
26 their impermissible use by expanding the use, offering an even wider variety of
27 merchandise under the Trademarks. Such actions are intentional and willful.
28
!9
Complaint
45.
2 goods, Defendants infringing activities have had and will have an adverse effect on
3 Plaintiffs business and reputation in this District, the State of California and
4 throughout the United States.
5 injury to the Plaintiff if the Defendants are not restrained by the Court from further
6 violation of the Plaintiffs' rights as the Plaintiffs have no adequate remedy at law.
7
46.
8 Plaintiff has suffered and will continue to suffer damages in an amount presently
9 unknown and to be determined at time of trial.
10
COUNT TWO
11
12
47.
13 Complaint.
14
48.
15 U.S.C. 1125(a), for false designation of origin and false descriptions and
16 representations in interstate commerce.
17
49.
As stated above, Plaintiff is the owner of all rights in and to the Endless
50.
20 Marks on and in connection with a wide variety items and merchandise, including
21 but not limited to consumer goods, t-shirts and other clothing, novelty items, as
22 well as in Plaintiffs promotional and marketing efforts of the Endless Summer film,
23 in interstate commerce throughout the United States and indeed, worldwide.
24
51.
Complaint
52.
Defendants have used and continues to use the Endless Summer mark
2 and other Endless Summer-related themes and marks on and/or in connection with
3 the Infringing Merchandise.
4
53.
5 is targeted to the same consumers as Plaintiff and its licensees target their Endless
6 Summer related merchandise in interstate commerce throughout the United States.
7
54.
Defendants sales of its Infringing Merchandise have had and will have
8 an adverse effect upon Plaintiffs business in this District, the State of California and
9 throughout the United States.
10
55.
56.
15 likely to be confused and has been confused as to the origin and source of the
16 Infringing Merchandise and/or to believe that Defendants are licensed, sponsored, or
17 otherwise authorized by Plaintiff to offer the Infringing Merchandise.
18
57.
58.
22 entitled to injunctive relief enjoining and restraining Defendants from use of the
23 Trademarks and other Endless Summer marks throughout the United States.
24
59.
25 goods, Defendants infringing activities have had and will have an adverse effect on
26 Plaintiffs business and reputation in this District, the State of California and
27 throughout the United States, and Plaintiff has no adequate remedy at law.
28
!11
Complaint
60.
61.
4 injured and will continue to suffer monetary damages in this District, the State of
5 California and throughout the United States in an amount presently unknown and to
6 be determined at trial.
7
COUNT THREE
62.
10 Complaint.
11
63.
12 U.S.C. 1125(c).
13
64.
65.
17 marks began after Plaintiffs Endless Summer Marks had become famous.
18
66.
19 Plaintiffs famous Endless Summer Marks in that they are likely to lessen the
20 capacity of the aforesaid Marks to identify and distinguish Plaintiffs or its licensees'
21 goods and services as defined in 15 U.S.C. 1127.
22
67.
23 injunctive relief enjoining and restraining Defendants from use of the Trademarks,
24 and other Endless Summer Marks throughout the United States.
25
68.
26
27
28
!12
Complaint
COUNT FOUR
69.
4 Complaint.
5
70.
71.
72.
16 the false association and/or connection and further enhance the false implication that
17 the Infringing Merchandise is authorized, endorsed, or sponsored by Plaintiff.
18
73.
74.
21
75.
22 Infringing Merchandise are likely to deceive, and have deceived, consumers and
23 have caused and are likely to cause harm to Plaintiff.
24
76.
25 statements, Plaintiff has suffered and will continue to suffer irreparable injury in this
26 District, the State of California and throughout the United States, providing no
27 adequate remedy at law.
28
!13
Complaint
77.
2 statements, Plaintiff has been injured and will continue to suffer damages in this
3 District, the State of California and throughout the United States in an amount
4 presently unknown and to be determined at trial.
5
COUNT FIVE
78.
8 Complaint.
9
79.
10 trademark infringement.
11
80.
12 Summer Marks, in connection with the sale and offering for sale of the Infringing
13 Merchandise is in violation of Plaintiffs common law rights to the exclusive use of
14 its Endless Summer Marks throughout California and the United States.
15
81.
82.
20 Plaintiff has suffered and will continue to suffer lost profits and damage to its
21 business reputation and goodwill in this District, the State of California and
22 throughout the United States, providing no adequate remedy at law.
23
83.
24 Plaintiff has been injured and will continue to suffer damages in this District, the
25 State of California and throughout the United States in an amount presently
26 unknown and to be determined at trial.
27
28
!14
Complaint
COUNT SIX
84.
4 Complaint.
5
85.
86.
8 existence and fame of the Trademarks, including the Endless Summer Marks,
9 Defendants have attempted to trade upon the goodwill and fame of the Trademarks,
10 and have misled and will mislead the public into assuming a connection or
11 association between Defendants and Plaintiff.
12
87.
13 damage to Plaintiff in this District, the State of California and throughout the United
14 States by tarnishing the valuable reputation and goodwill Plaintiff has established in
15 the Trademarks and diluting the distinctiveness of the Trademarks.
16
88.
17 with Plaintiff, in tarnishing the reputation of Plaintiff and its products, and in
18 diluting the distinctive nature of Plaintiffs Endless Summer Marks constitute acts of
19 unfair competition in violation of Cal. Bus. & Prof. Code 17200 and the common
20 law.
21
89.
22 Plaintiff is entitled to injunctive relief enjoining and restraining Defendants from use
23 of the Trademarks, and other Endless Summer Marks throughout the United States.
24
90.
25 Defendants, Plaintiff has been and will continue to be irreparably injured in this
26 District, the State of California and throughout the United States with no adequate
27 remedy at law.
28
!15
Complaint
COUNT SEVEN
91.
4 Complaint.
5
92.
93.
94.
10 injunctive relief enjoining and restraining Defendants from use of the Endless
11 Summer marks throughout the United States.
12
95.
13
1.
That the Court enter a judgment against each Defendant that each
16 Defendant has willfully infringed Plaintiffs rights in the common law and federally
17 registered Trademarks.
18
2.
3.
Complaint
4.
5.
9 Plaintiff all gain, profits and advantages derived by Defendant from its acts of
10 infringement, unfair competition and dilution of the Trademarks and false
11 advertising, pursuant to 15 U.S.C. 1117(a) and the common law.
12
6.
That the Court order each Defendant to pay Plaintiff both the costs of
13 this suit and the reasonable attorneys fees incurred by Plaintiff in investigating and
14 prosecuting this action.
15
7.
That the Court award Plaintiff on his state law claims compensatory
8.
9.
20
10.
That the Court grants to Plaintiff such other and additional relief as is
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!17
Complaint
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!18
Complaint