Beruflich Dokumente
Kultur Dokumente
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Plaintiffs,
: Case No.:
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vs.
: 1:16-cv-00642-SCJ
:
TIGER PAW DISTRIBUTORS, LLC, a
:
California Limited Liability Company;
:
SANTA PAULA DISTRIBUTORS, INC.,
:
SAVANNAH DISTRIBUTING CO., a
:
Georgia Corporation; JOE WALLACE and :
LEON HENDRIX, individuals,
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Defendants.
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_______________________________________ :
PLAINTIFFS FIRST AMENDED COMPLAINT
COME NOW Plaintiffs Experience Hendrix L.L.C. and Authentic Hendrix,
LLC, by their attorneys Crain Law Group, LLC and Shukat Arrow Hafer Weber &
Herbsman, LLP, and pursuant to Fed.R.Civ.P. 15(a)(1)(B) file Plaintiffs First
Amended Complaint. Upon knowledge and belief as to their own acts and upon
information and belief as to the acts of all others, Plaintiffs allege the following:
THE PARTIES
1.
liability company established under the laws of the State of Washington. Plaintiff
Experience is the assignee of and sole owner of the copyrights and trademark
rights owned by Jimi Hendrix and is the proprietor of the intellectual property
rights relating to a vast catalog of musical compositions and sound recordings
created by the late Jimi Hendrix.
2.
Limited Liability Company whose members reside outside the State of Georgia.
Plaintiff Authentic is the worldwide licensing arm of Experience Hendrix.
3.
California.
4.
Limited Liability Company with its principal place of business at 18653 Ventura
Blvd., Tarzana, California 91356.
5.
information and belief, a California corporation with its principal place of business
at 30221 Romero Canyon Road, Castaic, California 91384 and/or 2300 Walnut
Avenue, Suite E, Signal Hill, California 90755.
6.
infringing product is at issue in this litigation in the State of Georgia that, has sold
the infringing product at issue in this litigation within the jurisdiction of this Court
and throughout the State of Georgia, and, upon information and belief, is a Georgia
Corporation with its principal place of business located at 2425 West Gwinnett
Street, Savannah, Georgia 31415.
7.
Defendant Tiger Paw and controls the infringing activity of the corporation. On
information and belief, Defendant Wallace is a citizen and resident of the State of
California.
8.
with its principal place of business located at 16730 E. 2nd Avenue, Aurora,
Colorado 80011 was the manufacturer of the Infringing Product. On April 14,
2016, Plaintiffs dismissed without prejudice its claims against Private Label
Distillery, LLC in this litigation.
JURISDICTION AND VENUE
9.
Plaintiffs bring this suit against all Defendants seeking damages and
This Court has subject matter jurisdiction of this action under the
provisions of 15 U.S.C. 1121; 28 U.S.C. 1338(a) and (b); 28 U.S.C. 1332. This
Court also has jurisdiction based upon the diversity of the parties pursuant to 28
U.S.C. 1332, as this is a civil action between citizens of different states in which
the amount in controversy exceeds the sum of $75,000, exclusive of interest and
costs.
11.
This Court has personal jurisdiction over each and every one of the
Defendants, on information and believe, have maintained systemic contact with the
State of Georgia, have transacted business within the State of Georgia (e.g.,
advertised, marketed, sold and/or shipped its products, including but not limited to
the infringing products discussed below, to Georgia residents, including but not
limited to those within the venue of this Court) and/or have committed acts that
have caused tortious injury to Plaintiffs in this Judicial District pursuant to
Georgias long-arm statute, O.C.G.A. 9-10-91.
12.
celebrity. Jimi died in 1970. Al Hendrix was Jimis father and sole heir. In 1995,
Al Hendrix founded Experience Hendrix L.L.C. and Authentic Hendrix, LLC
(collectively the Hendrix Family Companies). Al Hendrix transferred all of his
rights in Jimis estate to the Hendrix Family Companies. Al handpicked Janie
Hendrix, Jimis cousin Bob Hendrix and certain other family members he wanted
to manage those companies. For good reasons, Al didnt select Leon Hendrix or
his family for that management team.
14.
continuously operated the Hendrix Family Companies since 1995. Al and his close
family members and their companies have been singularly committed to preserving
Jimi Hendrixs musical, cultural and artistic legacy.
Companies have owned, managed, licensed and tastefully marketed Jimis music,
recordings, artistic properties and related merchandise throughout the world. As a
5
result of Jimis unique talents, and the Hendrix family companies continued
stewardship and promotion, Jimi Hendrix and his works, name and image are
famous, and enjoy continuing celebrity status.
15.
federally registered and common law trademarks, service marks, trade names and
logos to sell Jimi Hendrix related promotional merchandise and services to the
general consuming public through catalog sales, Internet websites, retail stores, and
licensee sales. The types of goods sold under the various marks and under the
authority of the Hendrix family companies are wide-ranging. The marks owned
and used by the Hendrix Family Companies include JIMI HENDRIX, THE
JIMI HENDRIX EXPERIENCE, HENDRIX, EXPERIENCE HENDRIX,
AUTHENTIC HENDRIX, and the design marks of the signature of Jimi
Hendrix, and an image (head or bust) of Jimi Hendrix, such as the following:
16.
Washington company called Electric Hendrix, LLC for the primary purpose of
selling, bottling and marketing distilled spirits as HENDRIX ELECTRIC, JIMI
HENDRIX ELECTRIC, or JIMI HENDRIX ELECTRIC VODKA. In 2006,
Electric Hendrix, LLC began marketing its vodka and merchandise, and promoting
its goods and services using a Jimi Hendrix signature mark, and Jimi Hendrix
headshot mark.
20.
and Tiger Paw in another tasteless campaign to do the same thing that he and Craig
Dieffenbach were enjoined from doing in 2008:
Enjoined Product
22.
Infringing Product
Defendant Leon Hendrix and Defendant Santa Paula have proceeded with their
infringing activities and have sold and/or distributed the Infringing Product into
and throughout the state of Georgia.
10
24.
stylized PH2 and the words Purple Haze have created a likelihood of confusion
with Plaintiffs Hendrix Marks (Hendrix Marks are defined below in Paragraph
47 of this Complaint), including Plaintiffs registered stylized graphical mark of
Jimi Hendrixs signature, Plaintiffs headshot logo, and the combination of the
Hendrix Marks used by Plaintiffs. Defendants use of Plaintiffs marks, song and
album titles, along with other elements, to advertise and sell their products are
1
Tiger Paw Beverage Company Announces the Release of Purple Haze. April 22,
2015. http://www.businesswire.com/news/home/20150422005256/en/Tiger-PawBeverage-Company-Announces-Release-Purple
2
intended to deceive and defraud the public and to pass off and palm off their
liqueur and other merchandise as authorized by the Hendrix Family Companies
and Jimi Hendrixs heirs.
26.
musicians of the 20th century, Jimi Hendrix pioneered the explosive possibilities
of the electric guitar. Hendrixs innovative style created a new musical form. Are
12
You Experienced has remained one of the most popular rock albums of all time,
featuring tracks like Purple Haze, The Wind Cries Mary, Foxy Lady, Fire,
and Are You Experienced?. In 1968, Hendrix recorded one of his seminal
works, Voodoo Child (Slight Return), and his performance of the song in 1969
in Woodstock was one of the most memorable songs performed. Jimi Hendrixs
meteoric rise in the music industry took place in just four short years, prior to his
tragic death at the age of 27.
29.
His music
Hendrix continues to find new audiences and remains one of the most
popular and influential figures in the history of rock music and an influence on
every generation of musicians since his untimely death in 1970.
31.
Church which chronicles the legendary Atlanta Pop concert in 1970. Hailed as
the Southern Woodstock, Byron, Georgia hosted the Second Atlanta International
Pop Festival, where in July, 1970, Jimi Hendrix played to the largest American
audience of his career. Standout performances include such Hendrix classics as
Hey Joe, Voodoo, and Purple Haze.
13
wrote the original musical composition entitled Purple Haze, which consists
wholly of original material and was and is copyrightable matter under the law of
the United States. A claim of copyright in the musical composition Purple Haze
was registered and recorded with the United States Copyright Office Registration
Nos. RE 669-243 and RE 693-837.
33.
Experience has complied in all respects with the Copyright Act of 1976 and all
other laws governing copyright with respect to the above-referenced copyright.
the original musical composition entitled Voodoo Child (Slight Return), which
consists wholly of original material and was and is copyrightable matter under the
law of the United States. A claim of copyright in Voodoo Child (Slight Return)
14
was registered and recorded with the United States Copyright Office- Registration
Nos. RE735-885 and RE 736-563.
36.
the sound recording Voodoo Child was registered by Plaintiff Experience and
recorded in the United States Copyright Office - Registration No. SR 298-418.
37.
Experience has complied in all respects with the Copyright Act of 1976 and all
other laws governing copyright with respect to the above-referenced copyrights.
authorized, and wrote the original musical composition entitled If Six Was Nine,
which consists wholly of original material and was and is copyrightable matter
under the law of the United States.
composition If Six Was Nine was registered and recorded with the United States
Copyright Office Registration No. RE 735-895.
15
40.
Experience has complied in all respects with the Copyright Act of 1976 and all
other laws governing copyright with respect to the above-referenced copyrights.
Stathakis sold all right title and interest (including copyright) in the
with the United States Copyright Office Registration No. VAu 1-170-197.
45.
Plaintiff Authentic has complied in all respects with the Copyright Act of 1976 and
all other laws governing copyright with respect to the above-referenced copyrights.
16
services under the Hendrix Family Companies marks for over a decade, the
Hendrix Family Companies have been the recognized source of Jimi Hendrixrelated goods and services. By their sponsorship and promotion of charitable and
educational events and private touring music, art, and multimedia events
emphasizing the cultural and artistic legacy of Jimi Hendrix the Hendrix Family
Companies marks are well-known by consumers throughout the United States and
elsewhere.
PLAINTIFFS TRADEMARK RIGHTS
47.
are registered on the Principal Register of the United States Patent and Trademark
Office (hereinafter, USPTO), and are incontestable pursuant to 15 U.S.C. 1065,
including for purposes of the allegations herein: U.S. Registration Nos. 2,322,761
(JIMI HENDRIX in Class 25); 2,245,408 (AUTHENTIC HENDRIX in Class
35);
2,245,409
(EXPERIENCE
HENDRIX
in
Class
16);
2,250,912
17
(MISCELLANEOUS
DESIGN
DESIGN
in
Class
in
35);
3,312,206
Class
9);
3,312,071
Class
5);
3,302,117
25);
3,297,742
(AUTHENTIC
HENDRIX
AND
(AUTHENTIC
HENDRIX
AND
DESIGN
in
(AUTHENTIC
HENDRIX
AND
DESIGN
in
(AUTHENTIC
HENDRIX
AND
DESIGN
in
Class
6);
3,297,740
(AUTHENTIC
HENDRIX
AND
DESIGN
in
Class
3);
3,334,862
(AUTHENTIC
HENDRIX
AND
DESIGN
in
Class
16);
3,399,951
(AUTHENTIC
HENDRIX
AND
DESIGN
in
Class
20):
3,865,983
(AUTHENTIC
HENDRIX
AND
DESIGN
in
Class
26);
3,409,133
Class
18
Since at least as early as 1996, Plaintiffs have used the color purple in
substantial and vigorous use and promotion of the Hendrix Marks in the
marketplace. Through substantial sales and promotion of goods and services under
19
the Hendrix Marks, Plaintiffs are the recognized source of Jimi Hendrix-related
goods and services, and the Hendrix Marks are valuable and recognized symbols of
Plaintiffs goodwill. Plaintiffs Hendrix Marks are famous and well-known by
consumers throughout the United States, indeed the world.
52.
from unauthorized recordings, merchandise, public domain, and other products and
services, by engaging in a significant effort to enforce their rights and remove
unauthorized goods and merchandise from the marketplace, and by associating the
Hendrix Marks with Plaintiffs authorized products and services.
53.
educational events, such as the Jimi Hendrix Electric Guitar Competition, private
touring music, art, and multimedia events regarding the musical legacy of Jimi
Hendrix, and through their emphasis on the cultural and artistic legacy of Jimi
Hendrix, Plaintiffs have intentionally associated the Hendrix Marks with Jimi
Hendrixs innovative spirit and musical and artistic talent in the marketplace.
54.
untimely death, and because Jimi Hendrix fans, and Plaintiffs customers, include a
large number of young people, Plaintiffs decided early in their operation not to
20
license the Hendrix Marks, or Jimi Hendrix music, for use in connection with
alcohol or drug related products.
alcoholic beverage that is specifically associated with Jimi Hendrix and the
Hendrix Marks.
56.
United States Patent and Trademark Office application for the mark JH PURPLE
HAZE LIQUEUR (Serial No. 86507590), in International Class 33, for distilled
spirits, spirits, spirits and liqueurs.
57.
pursuant to section 1(b) of the Lanham Act (15 U.S.C. section 1051), on the basis
of Wallaces intent to use the mark.
58.
United States Patent and Trademark Office application for the mark PURPLE
HAZE LIQUEUR (Serial No. 86507583), in International Class 33, for distilled
spirits, spirits, spirits and liqueurs.
59.
to section 1(b) of the Lanham Act (15 U.S.C. section 1051), on the basis of
Wallaces intent to use the mark.
60.
United States Patent and Trademark Office application for the mark Purple Haze
LIQUEUR (Serial No. 86236392) in International Class 33 for distilled spirits,
spirits, spirits and liqueurs.
61.
section 1(b) of the Lanham Act (15 U.S.C. section 1051), on the basis of Wallaces
intent to use the mark. This application was refused and ultimately abandoned on
February 2, 2015.
62.
Purple Haze LIQUEUR (Serial No. 86507590).3 In refusing the applications, the
United States Patent and Trademark Office stated:
While there are other Purple Haze trademarks on the market (and cited by the
USPTO is their refusal), none capitalize on the Jimi Hendrix indicia or reproduce
any Jimi Hendrix material in connection with their products. Moreover, the use of
the song title Purple Haze, with Hendrix trademarks, has acquired secondary
meaning. As noted by the examiner, Jimi Hendrix is so famous, that use of it
presumptively creates consumer confusion.
22
The applicant also adds a design element of Jimi Hendrix and smoke
designs that form the letters JH. For a composite mark containing
both words and a design, the word portion may be more likely to be
impressed upon a purchasers memory and to be used when requesting
the goods and/or services. Joel Gott Wines, LLC v. Rehoboth Von
Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re
Dakins Miniatures, Inc. , 59 USPQ2d 1593, 1596 (TTAB 1999));
TMEP 1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362,
101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v.
Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir
1983)). Thus, although such marks must be compared in their
entireties, the word portion is often considered the dominant feature
and is accorded greater weight in determining whether marks are
confusingly similar, even where the word portion has been
disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911
(Fed. Cir. 2012) (citing Giant Food, Inc. v. Nations Foodservice,
Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir.
1983)).
23
The fact that applicant did not intend to adopt the name of, or trade
upon the goodwill of, the named person or institution does not obviate
a false connection refusal. Trademark Act Section 2(a) does not
require such intent. TMEP 1203.03(c)(i); see, e.g., S & L Acquisition
Co. v. Helene Arpels, Inc., 9 USPQ2d 1221, 1224 (TTAB 1987);
Consol. Natural Gas v. CNG Fuel Sys., Ltd., 228 USPQ 752, 754
(TTAB 1985). However, evidence of such intent is highly probative
that the public will make the intended false connection. Univ. of Notre
Dame du Lac v. J.C. Gourmet Food Imps. Co., 703 F.2d 1372, 1377,
217 USPQ 505, 509 (Fed. Cir. 1983); TMEP 1203.03(c)(i).
For the aforementioned reasons, registration is refused pursuant to
Trademark Act Section 2(a).
If applicant responds to the refusals, applicant must also respond to
the requirements set forth below.
Thereafter Defendant Wallace abandoned the trademark application.
64.
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and on December 7, 2015 Defendant Wallace abandoned both applications for the
mark JH PURPLE HAZE LIQUEUR (Serial No. 86507590) and Purple Haze
LIQUEUR (Serial No. 86507583), respectively.
66.
intend to use, and to license the marks described in the Wallace Applications and
the marks shown in the Wallace Applications, for products and services sold and
marketed in interstate commerce, and contrary to the right of Plaintiffs.
67.
materials, and labeled their Purple Haze Liquor alcohol product, spirits and other
products in such a way that has caused confusion, and is likely to continue to cause
confusion, in the marketplace as to the source, sponsorship, affiliation, and
27
b.
28
c.
The page
d.
29
Day Radio, DJ talks music, Purple Haze Liqueur, Gang Banging &
More.
69.
throughout, the front page of the Infringing Website features one of the protected
Hendrix Photograph images together with protected song lyrics of Jimi Hendrix
from his song If Six Was Nine. At least one additional page of the Infringing
Website contains an unauthorized use of the lyrics from Plaintiffs copyrighted
song composition as well:
//
//
//
//
//
30
31
71.
copyrighted lyrics from If Six Was Nine in connection with their Infringing
Product on their social media pages as well including, but not limited to, Twitter
(twitter.com/jimipurplehaze) and Instagram (@jimipurplehaze).
72.
the photograph and the musical composition from which the quote was stripped
If Six Was Nine are the property of Plaintiffs. Defendants never sought nor
obtained permission to use Plaintiffs intellectual property and as have ignored
Plaintiffs requests to remove the same from their Infringing Website.
clothing and
accessories, musical recordings (e.g., CDs) and videos (e.g., DVDs), printed matter
(books, postcards, posters, etc.), and online (website) and entertainment services.
32
Such Registered Marks are well-known, and they have been used continuously
since long prior to Defendants use of the marks Defendant Wallace applied for in
the Wallace Applications (hereinafter collectively referred to as the Wallace
Marks).
75.
exclusive rights in and ownership of the marks shown therein throughout the
United States, and the validity and the registrations of such marks.
The
Defendants uses of the Wallace Marks, and other marks and indicia
of origin which are confusingly similar to the Hendrix Marks are not authorized by
Plaintiffs, are likely to cause confusion, to cause mistake, and to deceive
consumers as to the source of the goods and services offered by Defendants, in that
consumers will likely associate, and have actually associated, Defendants products
and services with Plaintiffs, to the detriment of Plaintiffs.
77.
and designed to mislead, deceive, and confuse the consuming public, and to
capitalize on the goodwill associated with Plaintiffs Hendrix Marks and the
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registrations and rights, but Defendants have refused to cease their infringing acts.
By virtue of their unauthorized uses of the Wallace Marks and other marks similar
to the Hendrix Marks in interstate commerce, and the likelihood of such uses to
cause confusion, to cause mistake, or to deceive, Defendants have violated, and
continue to violate, the rights of Plaintiffs under the U.S. Trademark Act, giving
rise to a cause of action under 15 U.S.C. 1114(1).
79.
precluding Defendants from further acts of infringement and from any further use,
reference to or association with the Hendrix Marks. Plaintiffs seek such other
injunctive relief as may be reasonable and appropriate to protect further
infringement of their rights in and to the Hendrix Marks. Plaintiffs seek such other
injunctive way as may be reasonable and appropriate and to protect further
infringement of their rights in and to the Hendrix Marks.
34
80.
Destruction of
trademarks PURPLE HAZE, the headshot logo, and the Jimi Hendrix
signature, and combinations of such marks, as well as other unregistered Hendrix
Marks. The acts of Defendants alleged herein constitute unfair competition and an
infringement of Plaintiffs common law rights in the Hendrix Marks.
83.
Plaintiffs rights are superior to any rights that Defendants may claim
in and to the same of similar marks, in that the marks are distinctive, or have
achieved secondary meaning in the marketplace, and have been used continuously
by Plaintiffs to identify Plaintiffs goods and to distinguish them from others. Said
35
Hendrix Marks have come to indicate to purchasers that the goods in question are
authorized and produced, sponsored, or endorsed by the Jimi Hendrix family
companies established by the sole heir of Jimi Hendrixs rights and progenies.
84.
Hendrix headshot logo, and Jimi Hendrix signature, the slogans, and
Experiences song titles, to advertise and sell products and services in Georgia and
elsewhere throughout the United States, is intentional and designed to deceive the
public into believing that the goods sold by Defendants are made by, approved by,
sponsored by, or affiliated with Plaintiffs. Defendants acts, as alleged herein,
were committed with the intent to deceive and defraud the public and to pass off
and palm off Defendants goods and services, including vodka, merchandise,
apparel, and licensing rights, as authorized by Plaintiffs and Jimi Hendrixs heirs.
85.
unless enjoined by this Court. Plaintiffs therefore seek equitable relief in the form
of an injunction precluding Defendants from further acts of infringement and from
any further use, and reference to or association with Plaintiffs and their marks.
Plaintiffs further seek an injunction ordering that the past infringements be
corrected in writing and that all profits from Defendants infringing acts be held in
constructive trust for Plaintiffs. Plaintiffs further seek destruction of infringing
36
articles and such other injunctive relief as may be reasonable and appropriate to
protect further infringement of its rights in and to the Hendrix Marks.
86.
suffer damage to their business, reputation, and good will and the other damages.
Plaintiffs seek damages in an amount to be determined at trial.
THIRD CLAIM
(Federal Unfair Competition, 15 U.S.C. 1125(a))
87.
unauthorized and infringing goods and services through use of the Hendrix Marks,
and confusingly similar marks and references. Defendants actions are intentional
and designed to capitalize on the goodwill, recognition, and fame associated with
the Hendrix Marks owned by Plaintiffs. Defendants actions together create a false
representation and likelihood of confusion as to the origin, source, sponsorship,
endorsement, affiliation, and authenticity of the infringing products and services
they are advertising and offering for sale. Defendants know that their actions are
creating confusion among the consuming public and by their actions intend to
confuse, defraud, and deceive the consuming public into believing that Plaintiffs
produce, sponsor, or endorse Defendants products and services, when they do not.
37
89.
1125(a). Unless enjoined and restrained by this Court, Defendants will continue
to engage in such unlawful conduct. Plaintiffs have no adequate remedy at law in
that Defendants will continue their infringing conduct. Plaintiffs therefore seek
injunctive relief precluding Defendants from further acts of infringement and from
any further use and reference to or association with Plaintiffs and their marks.
Plaintiffs further seek an injunction ordering that the past and misleading
representations by Defendants be corrected in writing and that all profits made
while engaging in infringing conduct be held in constructive trust for Plaintiffs.
Plaintiffs further seek destruction of infringing articles as authorized by 15 U.S.C.
1118. Plaintiffs seek such other injunctive relief as may be reasonable and
appropriate to protect further infringement of its rights in and to the Hendrix
Marks.
90.
38
FOURTH CLAIM
(Trademark Dilution by Blurring, 15 U.S.C. 1125(c))
91.
States.
93.
and those confusingly similar to them, in the marketing of their products and
services, which Defendants have used and transported in United Slates interstate
commerce. Defendants use began after Plaintiffs Hendrix Marks had become
famous.
94.
or famous Hendrix Marks to identify and distinguish the goods and services of
Plaintiffs. Defendants acts have blurred and diluted the unique association which
as heretofore existed between Plaintiffs well-known or famous marks and the
goods and services made, licensed, advertised, or sponsored by Plaintiffs, to the
detriment of Plaintiffs. Defendants committed these acts willfully and with the
intent to trade on the reputation and goodwill of Plaintiffs and to dilute Plaintiffs
famous marks by blurring their association with Plaintiffs as the authorized source
of Jimi Hendrix music, goods, and services.
39
95.
Plaintiffs seek
suffer damage to their business, reputation, and goodwill and the loss of sales and
profits Plaintiffs would have made but for Defendants acts.
Plaintiffs seek
damages and attorney fees, as authorized under 15 U.S.C. 1125(c)(2) and 1117.
FIFTH CLAIM
(Trademark Dilution by Tarnishment 15 U.S.C. 1125(c))
97.
marks by associating Plaintiffs (and their otherwise authorized goods and services)
with the commercial sale of alcohol and other unauthorized goods and services.
99.
tarnish, and further dilute Plaintiffs Hendrix Marks, in that any defect, objection,
40
or fault found with Defendants products, services, and marketing efforts will
necessarily reflect upon, and seriously injure, the business reputation of Plaintiffs
and tarnish the Hendrix Marks, and therefore damage Plaintiffs in violation of
Section 2(c) of the Trademark Act, 15 U.S.C. 1052(c), to the detriment of
Plaintiffs. Defendants committed these acts willfully and with the intent to trade
on the reputation and good will of Plaintiffs and to cause dilution of Plaintiffs
famous marks by tarnishing those marks, and Plaintiffs, by association with them.
100.
unless enjoined in this Court. Plaintiffs remedy at law is not adequate to fully
compensate Plaintiffs for their injuries. Plaintiffs therefore seek injunctive relief
precluding Defendants from further acts of infringement and from any further use
and reference to or association with Plaintiffs and their marks. Plaintiffs seek
destruction of infringing articles, as authorized by 15 U.S.C. 1118, and an
injunction against further infringement.
101.
suffer damage to their business, reputation, and good will and the loss of sales and
profits Plaintiffs would have made but for Defendants acts.
Plaintiffs seek
damages and attorney fees, as authorized under 15 U.S.C. 1125(c)(2) and 1117.
41
SIXTH CLAIM
(Copyright Infringement 17 U.S.C. 501 et seq.)
Against Defendants Wallace, Tiger Paw and Leon Hendrix
102.
At all relevant times, Plaintiffs are and have been the rightful owners
As set forth hereinabove, Plaintiff Authentic has filed with the United
States Copyright Office the deposit, application, and fee required for registration of
the Hendrix Photographs pursuant to 17 U.S.C. 408 and 409 and Copyright
Registration No. VAu 1-170-197 was issued on April 18, 2013.
105.
interest to the United States Copyright registration No. RE 735-895 filed pursuant
to 17 U.S.C. 408 and 409 for the musical composition If Six Was Nine issued
on September 17, 1996. The musical composition was originally registered on
January 9, 1968 and bears registration number Eu 31442.
106.
42
107.
Plaintiffs' copyrights in the musical composition If Six Was Nine and the Hendrix
Photographs, in violation of the Copyright Act, 17 U.S.C. 501 and 106, by
copying, publishing, and distributing copies thereof without permission of
Plaintiffs.
108.
U.S.C. 504.
109.
exploitations of the musical composition If Six Was Nine and the Hendrix
Photographs on their Infringing Website is in derogation of and injurious to
Plaintiffs' exclusive rights as the owner and/or administrator of the copyrights on
the musical composition and the Hendrix Photographs, all to the Plaintiffs'
substantial damage.
110.
43
111.
Hendrix Marks by Defendant Tiger Paw has been directed by, and under the
control or authority of, Defendants Wallace and Hendrix.
114.
Wallace of Plaintiffs rights in its Hendrix Marks will irreparably harm Plaintiffs,
have been willful, and will continue unless enjoined by this Court. Damages and
attorney fees are authorized by 15 U.S.C. 1117. Destruction of infringing articles
is authorized by 15 U.S.C. 1118.
EIGHTH CLAIM
(Unjust Enrichment)
115.
contained in the preceding paragraphs as though fully set forth verbatim herein.
44
116.
wrongfully received money from third parties that they should not in equity and
good conscience retain, on account of their federal and common law trademark
infringements, false designations of origin, unfair competition, trademark dilution,
and related acts.
117.
45
122.
receipts from their product sales and revenues to the extent attributable to the
Infringing Products and therefore attributable to the infringement of Plaintiff's
trademark rights therein. Defendants hold such moneys and funds on behalf of and
subject to a first and prior lien against all others and in favor of Plaintiff. On
information and belief, Defendants hold this illegally received money and profits
in the form of bank account, real property, and personal property that can be
located and traced.
123.
In addition to the
46
126.
Tiger Paw that Tiger Paw had no separate will of its own.
127.
Defendant Wallace used his dominion and control over Tiger Paw to
the name and celebrity identity of Jimi Hendrix and other intellectual property
within Georgia, Defendants have cause the likelihood of confusion or of
misunderstanding as to the source, sponsorship, approval, or certification of goods
or services with Jimi Hendrix and/or Plaintiff.
131.
the name and celebrity identity of Jimi Hendrix and other intellectual property
within Georgia, Defendants have caused the likelihood of confusion or of
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the name and celebrity identity of Jimi Hendrix and other intellectual property
within Georgia, Defendants have misrepresented that its goods have the
sponsorship and/or approval of Jimi Hendrix and/or Plaintiffs.
133.
Plaintiffs are informed and believe, and based thereon allege, that
Defendants actions, as stated herein, were willful and engaged in such deceptive
practices knowing them to be deceptive.
134.
370, et seq., including but not limited to O.C.G.A. 10-1-372, Plaintiffs have
suffered damages and will continue to do so until such conduct is permanently
stopped. As such, Plaintiffs are entitled to injunctive relief.
135.
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137.
Defendants in order to punish Defendants and deter the same or similar conduct in
the future. O.C.G.A. 51-12-5.1. Punitive damages are especially appropriate
given Defendants repeating history of intentionally engaging in deceptive trade
practices.
TWELFTH CLAIM
(Violation of Georgias Law Against Unfair Competition
O.C.G.A. 23-2-55)
138.
by the use of Plaintiffs trademarks, names, or devices, within the State of Georgia
with the intention of deceiving and misleading the public and pass off Defendants
good as those affiliated with or endorsed by Jimi Hendrix and/or Plaintiffs.
140.
without paying the license fees customarily paid licensees rightfully entitled to use
Jimi Hendrixs name, likeness, image and/or celebrity identity to enhance their
business ventures and mislead the consuming public to believe that Defendants
goods as those affiliated with or endorsed by Jimi Hendrix and/or Plaintiffs.
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141.
Defendants in order to punish Defendants and deter the same or similar conduct in
the future. O.C.G.A. 51-12-5.1. Punitive damages are especially appropriate
given Defendants repeating history of intentionally engaging in unfair competitive
conduct trade and as Defendants' actions showed willful misconduct, malice,
fraud, wantonness, oppression, or that entire want of care which would raise the
presumption of conscious indifference to consequences.
JURY DEMAND
144.
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145.
Eleventh, and Twelfth Claims of this Complaint an award of equitable relief and
monetary relief, jointly and severally, against Defendants as follows:
a. That Defendants, their agents, servants, employees, attorneys,
representatives, successors and assigns and all persons, firms, or
corporations in active concert or participation with Defendant be
enjoined and restrained permanently from:
i. directly or indirectly infringing the Hendrix Marks in any
manner, including, but not limited to distributing,
advertising, selling, or offering for sale any goods or
services (inclusive of the Infringing Product at issue in this
suit) which are confusingly similar to the Hendrix Marks;
ii. using any mark, trade name, logo or design that tends
falsely to represent, or is likely to confuse, mislead, or
deceive purchasers, customers, or members of the public,
that goods and services offered by Defendants originate
from Plaintiff, or that said goods or services have been
sponsored, approved, or licensed by or associated with
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147.
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CERTIFICATE OF SERVICE
The Undersigned counsel herby certifies that a true and correct copy of the
foregoing PLAINTIFFS FIRST AMENDED COMPLAINT was electronically filed
with the Clerk of Court using the CM/ECF system which will automatically send
email notification of such filing to the attorneys of record in this case:
Amanda Hyland, Esq.
Taylor English Duma LLP
1600 Parkwood Circle, Suite 400
Atlanta, GA 30339
(678) 336-7247
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