Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 1 of 7 Page ID #:1
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`Cara R. Burns, Esq. (State Bar No. 137557)
`cburns@hmkblawyers.com
`HICKS, MIMS, KAPLAN & BURNS
`2800 28th Street, Ste 383
`Santa Monica, California 90405
`Telephone: (310) 314-1721
`Facsimile: (310) 314-1725
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`Attorneys for Plaintiff,
`Live Nation Merchandise, Inc.
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`UNITED STATES DISTRICT COURT
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`CENTRAL DISTRICT OF CALIFORNIA
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`Plaintiff Live Nation Merchandise, Inc. ("Plaintiff"), by its attorneys, files this
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`complaint against defendants, alleging as follows:
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`JURISDICTION AND VENUE
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`1.
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`This action arises under the Lanham Trademark Act 15 U.S.C. §§ 1051
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`et seq. (the "Lanham Act"). Accordingly, this Court has federal question jurisdiction over
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`the subject matter of this action pursuant to 15 U.S.C. § 1221 and 28 U.S.C. §§ 1338(a),
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`(b). Venue in this district is proper under 28 U.S.C. § 1391(b).
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`Complaint
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`LIVE NATION MERCHANDISE, INC.,
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`Plaintiff,
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`v.
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`JOHN DOES 1-5, JANE DOES 1-4 AND
`XYZ COMPANY,
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`Defendants.
`____________________________________
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`Case No. 2:19-cv-4479
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`COMPLAINT FOR:
`TRADEMARK
`INFRINGEMENT;
`VIOLATIONS OF THE
`LANHAM ACT; VIOLATION
`OF CALIFORNIA CIVIL
`CODE 3344(a); AND
`VIOLATION OF RIGHT TO
`PRIVACY
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`Hicks, Mims,
`Kaplan, and Burns
`Attorneys at Law
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`Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 2 of 7 Page ID #:2
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`PARTIES
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`2.
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`Plaintiff Live Nation Merchandise, Inc. ("Plaintiff") is a Delaware limited
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`liability corporation with its principal place of business in San Francisco, California.
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`3.
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`Defendants John Does 1-5, Jane Does 1-4 and XYZ Company are sued
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`herein under fictitious names because their true names and capacities are unknown at this
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`time. This complaint will be amended when their true names and capacities are
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`ascertained.
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`4.
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`The individual defendants and defendant XYZ Company will be present in
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`and about the Central District of California in connection with the claims asserted below
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`and are or will be subject to the jurisdiction of this Court.
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`5.
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`Defendants, and each of them, are individuals and business entities who,
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`upon information and belief, are acting in concert and active participation with each other
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`in committing the wrongful acts alleged herein. Defendants John Does 1-5, Jane Does 1-
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`4, and XYZ Company are hereinafter referred to collectively as "Defendants."
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`THE BACKGROUND OF THE ACTION
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`6.
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`Plaintiff is engaged in the manufacture, distribution and sale of various types
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`of merchandise sold and distributed at concerts and at retail stores of musical performers,
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`including, but not limited to tour books, T-shirts, jerseys, sweatshirts, hats, buttons and
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`posters (collectively "Tour Merchandise") which embody the trademarks, service marks,
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`likenesses, logos and other indicia of musical performers.
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` 7. The performers known as “Dead & Company” (the “Group”) is the
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`trademark used by them in connection with the Group’s performing, merchandising and
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`other related goods in all aspects of the entertainment industry and to distinguish the
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`Group’s services from all other such artists. The Group is comprised of certain members
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`of the group the “Grateful Dead” which has used their trademarks in connection with
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`recording and performing services for approximately 50 years and Dead & Company has
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`used their mark for approximately 4 years.
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`Hicks, Mims,
`Kaplan & Burns
`Attorneys at Law
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`Complaint
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`Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 3 of 7 Page ID #:3
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` 8. Dead & Company and the Grateful Dead’s trademarks, service marks, likeness,
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`logos, designs, and other indicia are hereinafter collectively referred to as the “GD
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`Trademarks.” Many of the GD Trademarks are federally registered and many of these
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`marks are incontestable See Exhibit A hereto.
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` 9.
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`Pursuant
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`to an agreement between
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`the Group and Plaintiff (the
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`"Agreement"), Plaintiff possesses the exclusive right to utilize all of the GD Trademarks
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`(namely of “Dead & Company” and the “Grateful Dead”) on and in connection with Tour
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`Merchandise ("Authorized Tour Merchandise”) sold and offered for sale in the vicinity
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`of the Group’s present United States tour (the "Tour").
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`10. The Plaintiff has used the GD Trademarks to identify officially authorized
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`goods and services in interstate commerce and to distinguish their marks from those of
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`others by, among other things, prominently displaying the GD Trademarks on recording
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`covers and merchandise, including T-shirts and other apparel.
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`11. The Group has a decidedly strong and loyal following among those who
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`attend popular music concerts and record buyers. The Group has appeared in concerts at
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`major arenas and stadiums in the United States, and throughout the world and has been
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`seen and heard in concert by millions of popular music enthusiasts. The previous tours
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`by the Group were attended by hundreds of thousands of people.
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`12. As a result of the foregoing, each of the GD Trademarks has developed and
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`now possesses secondary and distinctive meaning to purchasers of merchandise bearing
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`any or all of the GD Trademarks. Plaintiff and the Group annually realize substantial
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`income from the sale of the Authorized Tour Merchandise bearing the GD Trademarks.
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`13. On Monday, June 3, 2019 and Tuesday, June 4, 2019 at the Hollywood Bowl
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`in Los Angeles, California, the Group will perform (the "Concerts"). Authorized Tour
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`Merchandise bearing any or all of the GD Trademarks will be sold throughout the United
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`States before and after all concerts on the Tour.
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`Hicks, Mims,
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`Attorneys at Law
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`Complaint
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`Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 4 of 7 Page ID #:4
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`DEFENDANTS' UNLAWFUL CONDUCT
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`14. Defendants, also known as “Bootleggers” will sell and distribute
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`unauthorized, infringing T-shirts, jerseys, caps and/or other merchandise bearing any or
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`all of the GD Trademarks (the "Infringing Merchandise" or “Bootleg Merchandise”) in
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`the vicinity of the Concerts, before, during and after their performances, and at
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`subsequent concerts during the Tour.
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`15. The Infringing Merchandise is of the same general appearance as Plaintiff's
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`Merchandise and is likely to cause confusion among prospective purchasers. Defendants'
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`Infringing Merchandise is not authorized by the Group or Plaintiff. Further, the
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`Infringing Merchandise sold and to be sold by Defendants is generally of inferior quality.
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`The sale of such merchandise has injured and is likely to injure the reputation of the
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`Group which has developed by virtue of their public performances and the reputation for
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`high quality associated with Plaintiff and Authorized Tour Merchandise.
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`16. The aforesaid acts by Defendants and others are likely to cause the
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`purchasing public to believe that the sale of such Infringing Merchandise is authorized,
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`sponsored or approved by the Group and/or Plaintiff and that such Infringing
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`Merchandise is subject to the same quality control and regulation required by the Group
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`and/or Plaintiff, despite the fact that this is not true. It also injures Group and Plaintiff in
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`that Defendants do not pay any royalty for these unlawful sales.
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`17. The aforesaid manufacture, distribution and sale of Infringing Merchandise
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`bearing trademarks, service marks, likenesses, logos and other indicia of the Group
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`constitutes a false designation of the source of origin of such goods and falsely describes
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`and represents such merchandise. The use by Defendants of the Group’s Trademark also
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`constitutes an attempt to palm off and appropriate to themselves the Group’s and
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`Plaintiff's exclusive rights therein.
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`Hicks, Mims,
`Kaplan & Burns
`Attorneys at Law
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`Complaint
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`Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 5 of 7 Page ID #:5
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`18. Upon information and belief, Defendants will continue to engage in such
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`infringing activities in this state and elsewhere in interstate commerce and are likely to
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`continue such activities throughout the Tour, to the great injury of Plaintiff and the Group.
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`19. Plaintiff has no adequate remedy at law and will suffer irreparable harm and
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`damage as a result of the aforesaid acts, in an amount presently incalculable.
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`FIRST CLAIM FOR RELIEF
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`(Infringement of Registered Trademark)
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`20. Plaintiff realleges each allegation set forth in the paragraphs above.
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`21. By reason of the foregoing, Plaintiff hereby asserts a claim against
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`Defendants for injunctive and monetary relief pursuant to 15 U.S.C. § 1114(b) with
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`respect to Defendants' infringement of the registered mark.
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`SECOND CLAIM FOR RELIEF
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`(Violation of the Lanham Act)
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`22. Plaintiff realleges each allegation set forth in the paragraphs above.
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`23. By reason of the foregoing, Plaintiff hereby asserts a claim against
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`Defendants for injunctive and monetary relief pursuant to Section 43(a) of the Lanham
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`Act, 15 U.S.C. § 1125(a), with regards to the false designation of origin and false
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`descriptions and representations in commerce of Defendants’ Infringing Merchandise.
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`THIRD CLAIM FOR RELIEF
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`(Violation of California Civil Code § 3344(a))
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`24. Plaintiff realleges each allegation set forth in paragraphs above.
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`25. Upon information and belief, the aforesaid acts by Defendants and others
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`will involve the knowing use of the Group’s name and likeness without consent, in
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`violation of California Civil Code § 3344(a).
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`26. By reason of the foregoing, Plaintiff hereby asserts a claim against
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`Defendants for injunctive and monetary relief pursuant to California Civil Code § 3344
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`with respect to Defendants' unlawful use of the Group’s names and likenesses.
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`Complaint
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`Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 6 of 7 Page ID #:6
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`FOURTH CLAIM FOR RELIEF
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`(Violation of Common Law Right to Privacy)
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`27. Plaintiff realleges each allegation set forth in paragraphs above.
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`28. By virtue of the expenditures of time, efforts and talent by the Group and
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`Plaintiff in advertising, publicizing and promoting the accomplishments of the Group and
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`through extensive commercial exploitation of their public persona, the Group and
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`Plaintiff have created rights of publicity in the Group’s names and likenesses which has
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`been licensed and conveyed to Plaintiff.
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`29. The aforesaid uses of the GD Trademarks by Defendants constitute
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`infringements of such rights of privacy.
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`30. By reason of the foregoing, Plaintiff hereby asserts a claim against
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`Defendants for injunctive and monetary relief under the Common Law Right to Privacy
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`with respect to Defendants' unauthorized use of Group’s names and likenesses.
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`WHEREFORE, plaintiff, Live Nation Merchandise, Inc. seeks relief against
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`PRAYER FOR RELIEF
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`Defendants as follows:
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`A. As to All Claims For Relief, that Defendants, their agents, servants,
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`employees, officers, attorneys, successors and assigns, and all persons acting in concert
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`with them, be enjoined in this and all other districts in the United States, preliminarily
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`during the course of this litigation and permanently from: 1) manufacturing, distributing,
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`selling, offering for sale, holding for sale or advertising any products, merchandise or
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`goods bearing the federally registered trademarks, service marks, likenesses, logos and
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`other indicia of the Group or any colorable variation or imitation thereof; and 2)
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`representing that any products, merchandise or goods manufactured, distributed, sold,
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`held for sale or advertised by them is sponsored or authorized by Plaintiff in this district
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`or in any other district in which Plaintiff seeks to enforce this Court's injunction order.
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`Complaint
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`Case 2:19-cv-04479-JFW-AFM Document 1 Filed 05/23/19 Page 7 of 7 Page ID #:7
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`B. As to All Claims For Relief, that this Court order the United States Marshal,
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`the local and state police or sheriff, off duty officers of the same, authorized agents of
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`Plaintiff, and/or any persons acting under their supervision to seize and impound any and
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`all Infringing Merchandise which the Defendants attempt to sell or distribute within or in
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`the vicinity of the Group’s concerts on the Tour, including whether this occurs before,
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`during or after the concerts.
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`C.
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`That Defendants deliver up for destruction any and all Infringing
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`Merchandise.
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`D. As to All Claims For Relief, that Defendants pay to Plaintiff damages in an
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`amount to be determined.
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`E.
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`As to All Claims For Relief, that Plaintiff be awarded its costs, attorney’s
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`fees and such other and further relief as the Court deems to be just and proper.
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`Dated: May 23, 2019
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` Respectfully Submitted,
`Live Nation Merchandise, Inc.
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`By Its Attorneys
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`/s/ Cara R. Burns___________________
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`Cara R. Burns, Esq. (Cal. Bar # 137557)
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` cburns@hmkblawyers.com
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`Hicks, Mims, Kaplan & Burns
`2800 28th Street, Ste 383
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`Santa Monica, California 90405
`Telephone: (310) 314-1721
`Facsimile: (310) 314-1725
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`Hicks, Mims,
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`Complaint
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