Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 1 of 18 Page ID #:1
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`CLEMENT AND HO,
`A Professional Law Corporation
`RANDALL J. CLEMENT, Cal. Bar No. 193443
`201 W. Whiting Avenue
`Fullerton, California 92832
`Telephone: (714) 882-5794
`Facsimile: (714) 882-5795
`randy@clementandholaw.com
`
`
`Attorneys for Plaintiff JUUL Labs, Inc.
`
`
`
`
`UNITED STATES DISTRICT COURT
`CENTRAL DISTRICT OF CALIFORNIA
`
`JUUL LABS, INC., a Delaware
`corporation,
`
`
`Plaintiff,
`
`
`
`v.
`
`
`REDMILL TOBACCO, INC., a
`Delaware corporation,
`
`Defendant.
`
`
`
`
`
` Case No. 2:21-cv-8228
`
`
`
`
`
`
`
`
`PLAINTIFFS' COMPLAINT FOR:
`(1) BREACH OF CONTRACT;
`(2) TRADEMARK
`INFRINGEMENT –
`COUNTERFEIT GOODS (15
`U.S.C §1114);
`(3) FALSE DESIGNATION OF
`ORIGIN – COUNTERFEIT
`GOODS (15 U.S.C. §1125(a));
`(4) UNFAIR COMPETITION –
`COUNTERFEIT GOODS (15
`U.S.C. §1125(a));
`(5) UNFAIR BUSINESS
`PRACTICES (CAL. BUS. &
`PROF. CODE § 17200, et
`seq.)
`
`
`
`
`
`
`-1-
`COMPLAINT
`
`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 2 of 18 Page ID #:2
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`Plaintiff JUUL Labs, Inc. ("JLI"), by and through its undersigned attorneys,
`files this Complaint against defendant Redmill Tobacco, Inc., a Delaware
`corporation ("Defendant"), as follows:
`NATURE OF THE ACTION
`JLI is the designer, manufacturer, and distributor of JUUL-branded
`1.
`electronic nicotine delivery systems ("ENDS") and other related products
`(collectively, "the JUUL Products").
`The JUUL Products have become targets for individuals and entities
`2.
`who wish to take a "free ride" on the commercial success of the JUUL brand that
`JLI has spent considerable effort and resources to build.
`Specifically, wrongdoers have counterfeited JUUL Products by
`3.
`illegally manufacturing, selling, and distributing fake, copied, and non-genuine
`versions of JUUL Products and related packaging.
`Through this action, JLI combats the sale and distribution of these
`4.
`unlawful counterfeit products.
`
`PARTIES
`JLI is a corporation organized and existing under the laws of the State
`5.
`of Delaware.
`Defendant Redmill Tobacco, Inc. is a corporation organized and
`6.
`existing under the laws of the State of Delaware and having its principal place of
`business at 13 Red Mill Road, Newark, Delaware 19711. Defendant owns and
`operates the Red Mill Tobacco retail business at that location.
`JURISDICTION AND VENUE
`This Court has subject matter jurisdiction over this case pursuant to 15
`7.
`U.S.C. § 1121 and 28 U.S.C. §§ 1331, 1338(a), and 1338(b) because (i) a claim
`herein arises out of federal trademark laws as codified in 15 U.S.C. § 1114
`(trademark infringement); and (ii) the unfair business practices claim herein is
`brought with and is related to the substantial claim based on trademark laws. This
`
`-2-
`COMPLAINT
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`

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`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 3 of 18 Page ID #:3
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`Court also has supplemental jurisdiction over JLI's claims arising under common
`law or state law pursuant to 28 U.S.C. § 1367(a) because the claims are so related to
`JLI's federal law claims that they form part of the same case or controversy and
`derive from a common nucleus of operative facts.
`Pursuant to a contractual agreement between the parties, this Court has
`8.
`personal jurisdiction over Defendant and this Court is the proper venue for this
`matter. In 2019, after JLI's investigation into Defendant's sales activities, JLI and
`Defendant entered into a Settlement Agreement (the "Settlement Agreement")
`which resolved, prior to litigation, JLI's allegations of Defendant's counterfeit sales
`activities relating to JUUL Products that occurred prior to the October 31, 2019
`effective date of the Settlement Agreement. Paragraphs 9 and 10 of the Settlement
`Agreement provide, in their entirety, as follows:
`9. Governing Law. This Agreement shall be deemed
`to be made under, construed in accordance with, and
`governed by the laws of the State of California.
`10. Disputes Regarding This Agreement. The Parties
`agree that any dispute between the Parties regarding this
`Agreement shall be subject to the exclusive jurisdiction of
`a court of competent jurisdiction in Orange County,
`California. The Parties hereby waive the right to have any
`dispute or claim arising hereunder tried, adjudicated, or
`brought elsewhere. The Parties agree that in any litigation
`to enforce the provisions of this Agreement, the prevailing
`party shall be entitled to, in addition to costs and other
`relief of the court, its reasonable attorneys' fees.
`FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS
`JUUL Trademarks and Products
`JLI is the exclusive owner of federally-registered, registration-pending,
`9.
`and common law trademarks. For example, JLI owns the following United States
`Trademark Registrations:
`
`
`
`
`
`-3-
`COMPLAINT
`
`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 4 of 18 Page ID #:4
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`
`
`Depiction of Trademark
`
`JUUL®
`
`®
`JUULpods®
`
`Registration
`No. and Date
`4,818,664
`(09-22-2015)
`4,898,257
`(02-09-2016)
`5,918,490
`(11-26-2019)
`
`(1) First Use
`(2) In Commerce
`(1) 06-01-2015
`(2) 06-01-2015
`(1) 06-01-2015
`(2) 06-01-2015
`(1) 06-30-2015
`(2) 06-30-2015
`
`10. True and correct copies of the Registration Certificates for the above-
`listed trademarks are attached hereto as Exhibit A. Hereinafter, JLI may sometimes
`utilize the phrase "the JUUL Marks" to refer to, collectively, JLI's federally-
`registered, registration-pending, and common law trademarks.
`JLI designs, manufactures, distributes, markets, and sells JUUL
`11.
`Products, including the JUUL system comprised of: (i) a device containing a
`rechargeable battery, control circuitry and a receptacle for a cartridge or pod, (ii) a
`disposable cartridge or pod ("JUULpod") that can be inserted into the device, has a
`heating chamber and is prefilled with a proprietary nicotine e-liquid formulation,
`and (iii) a charger for charging the device ("JUUL USB Charging Dock"), and
`related accessories.
`12. The JUUL Marks appear clearly on JUUL Products, as well as the
`packaging and marketing materials related to such products.
`13. The JUUL Marks, as well as the goodwill arising from such
`trademarks, have never been abandoned.
`JLI continues to preserve and maintain its rights with respect to the
`14.
`JUUL Marks, including those registered with the United States Patent and
`Trademark Office.
`15. Due in large part to the substantial commercial success of the JUUL
`Products, the JUUL brand is well-known to consumers and has garnered extensive
`coverage by the media.
`
`
`
`
`
`-4-
`COMPLAINT
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`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 5 of 18 Page ID #:5
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`16. Through the extensive use of the JUUL Marks, JLI has spent
`substantial time, money, and effort in developing consumer recognition and
`awareness of its brand. JLI markets JUUL Products nationwide to current adult
`smokers, including through its website, and sells its products through its nationwide
`authorized network. JLI also markets and sells its products internationally. JLI has
`built up and developed significant customer goodwill in its entire product line and
`the JUUL Products are immediately identified by the JUUL Marks.
`Sales of Counterfeit Goods
`17. Beginning on a date that is currently unknown to JLI, Defendant,
`without the consent of JLI, has offered to sell and sold, and/or facilitated the offer
`and sale of, JUULpods that were neither made by JLI nor by a manufacturer
`authorized by JLI, all by using reproductions, counterfeits, copies and/or colorable
`imitations of genuine JUULpods and the JUUL Marks ("Counterfeit JUULpods").
`18. Beginning on a date that is currently unknown to JLI, Defendant,
`without the consent of JLI, has offered to sell and sold, and/or facilitated the offer
`and sale of, JUUL USB Charging Docks that were neither made by JLI nor by a
`manufacturer authorized by JLI, all by using reproductions, counterfeits, copies
`and/or colorable imitations of genuine JUUL USB Charging Docks and the JUUL
`Marks ("Counterfeit JUUL USB Charging Docks").
`JLI has not authorized any third party, including Defendant, to make or
`19.
`sell ENDS or other types of products in connection with the JUUL Marks. The
`Counterfeit JUULpods and Counterfeit JUUL USB Charging Docks sold by
`Defendant are therefore not manufactured in accordance with JLI's own stringent
`quality controls but are instead manufactured outside of JLI's knowledge and
`control, using unknown substances and materials, in unknown locations and with
`unknown manufacturing requirements/controls.
`
`
`
`
`
`-5-
`COMPLAINT
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`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 6 of 18 Page ID #:6
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`20. The Counterfeit JUULpods and Counterfeit JUUL USB Charging
`Docks sold by Defendant bear counterfeit and confusingly similar imitations of the
`JUUL Marks in a manner likely to be confused with genuine JUUL Products.
`21. Beginning on a date that is currently unknown to JLI, Defendant,
`without the consent of JLI, has offered to sell and sold, and/or facilitated the offer
`and sale of, loose JUULpods ("Counterfeit Loose JUULpods").1 While authentic
`JUULpods are always sold in two layers of packaging (an inner blister pack and an
`outer cardboard box with all required product information for consumers),
`Counterfeit Loose JUULpods are sold without any cardboard packaging and in a
`blister pack that has been cut into individual units for resale. Additionally,
`Defendants advertised the sale of Counterfeit Loose JUULpods with homemade
`point-of-sale signage displaying the JUUL Marks, without authorization from JLI.
`22. Defendant's sales activities unlawfully pass off the Counterfeit Loose
`JUULpods as genuine JUUL Products. The Counterfeit Loose JUULpods sold
`without any labeling or packaging are non-genuine JUUL Products that are
`materially different from genuine JUUL Products for numerous reasons, including
`the failure of such products to: (i) comply with the regulations of the U.S. Food and
`Drug Administration; (ii) provide consumer warnings required by the federal
`government and the State of California; (iii) provide product lot codes and bar codes
`which are quality control mechanisms that enhance JLI's ability to detect and
`prevent the sale of counterfeits and to investigate, correct, and/or recall defective
`products; (iv) inform the consumer of the percentage strength of the active
`ingredient; and (v) provide manufacturer contact information to the consumer.
`
`
`1 Hereinafter, Counterfeit JUULpods, Counterfeit JUUL USB Charging Docks, and
`Counterfeit Loose JUULpods may sometimes be collectively referred to as
`"Counterfeit Goods."
`
`
`
`
`
`-6-
`COMPLAINT
`
`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 7 of 18 Page ID #:7
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`23. The Counterfeit Loose JUULpods diminish the value of the JUUL
`Marks by interfering with JLI's legitimate steps to control the quality of JUUL
`Products.
`24. The Counterfeit Loose JUULpods injure the reputation of the JUUL
`Marks. Sold without adherence to government regulations or to JLI’s quality
`standards, consumers may associate Counterfeit Loose JUULpods with the JUUL
`Marks and mistakenly infer that the JUUL brand is untrustworthy and inferior.
`25. For example, on September 21, 2019, a representative of JLI made an
`in-person purchase of a Counterfeit JUULpod and Counterfeit Loose JUULpods for
`sale at the Red Mill Tobacco retail business owned and operated by Defendant
`located at 13 Red Mill Road, Newark, Delaware 19711 (the "Red Mill Tobacco
`Business"). True and correct images of the products purchased on September 21,
`2019 are attached hereto as Exhibit B. JLI subsequently inspected the products
`purchased on September 21, 2019 and confirmed that the purchased products are in
`fact a Counterfeit JUULpod and Counterfeit Loose JUULpods.
`Cease-and-Desist Correspondence to Defendant
`26. On October 9, 2019, JLI's counsel mailed a cease-and-desist
`correspondence to Defendant. A true and correct copy of this correspondence is
`attached hereto as Exhibit C. The cease-and-desist correspondence provided
`specific notice of the following, among other items: (i) JLI's confirmation that goods
`sold by Defendant are in fact counterfeit goods; (ii) JLI's demand that Defendant
`cease the sale, manufacture, marketing, and importation of Counterfeit Goods and
`all other unauthorized use of JLI's intellectual property; (iii) JLI's ownership of the
`JUUL Marks; (iv) the statutory prohibition of the sale of Counterfeit Goods and all
`other unauthorized use of JLI's intellectual property, and JLI's right to seek
`monetary judgments against infringers; and (v) Defendant's willful infringement
`under federal law would be established by any further sales of Counterfeit Goods or
`any other unauthorized use of JLI's intellectual property.
`
`-7-
`COMPLAINT
`
`
`
`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 8 of 18 Page ID #:8
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`27. The October 9, 2019 cease-and-desist correspondence requested that
`Defendant contact JLI's counsel to discuss pre-litigation resolution of the legal
`issues arising from the sale of the Counterfeit Goods and all other unauthorized use
`of JLI's intellectual property.
`The Settlement Agreement
`28. The parties entered into the Settlement Agreement after Defendant
`responded to the October 9, 2019 cease-and-desist correspondence. The Settlement
`Agreement resolved, prior to litigation, JLI's allegations of Defendant's sales of
`counterfeit goods that occurred prior to the October 31, 2019 effective date of the
`Settlement Agreement. The Settlement Agreement contains a confidentiality
`provision.
`29. Paragraph 6 of the Settlement Agreement provides, in relevant part, as
`follows:
`
`No Sales . . . [Defendant] and all businesses and
`6.
`entities owned or managed by Settling Party agree not to
`make, import, distribute, or sell any product that, without
`authority or license from [JLI], use or incorporate the
`JUUL trade name, any JUUL Mark, or any imitations of
`such trade name or trademarks, and to refrain from
`offering or advertising to do so, and not to in any way aid,
`abet, induce, or contribute to the infringement of such
`trade name and trademarks.
`
`Continued Sales of Counterfeit Goods
`30. On December 9, 2019, a representative of JLI made an in-person
`purchase of Counterfeit Loose JUULpods for sale at the Red Mill Tobacco
`Business. True and correct images of the products purchased on December 9, 2019
`are attached hereto as Exhibit D. JLI subsequently inspected the products purchased
`on December 9, 2019 and confirmed that the purchased products are in fact
`Counterfeit Loose JUULpods
`
`
`
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`
`-8-
`COMPLAINT
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`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 9 of 18 Page ID #:9
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`31. Further, on July 16, 2020, representatives of JLI supported law
`enforcement, i.e., an agent from the State of Delaware Division of Alcohol and
`Tobacco Enforcement, concerning Defendant's sale of Counterfeit JUUL USB
`Charging Docks at the Red Mill Tobacco Business. Law enforcement inspected
`Defendant's retail business premises, seized approximately twenty-seven (27) units
`of Counterfeit JUUL USB Charging Docks, and filed criminal charges against
`Defendant. True and correct images of the products seized at the Red Mill Tobacco
`Business on July 16, 2020 are attached hereto as Exhibit E. JLI inspected these
`images and confirmed that the seized products are in fact Counterfeit JUUL USB
`Charging Docks.
`32. Shortly after the July 16, 2020 seizure, JLI's counsel contacted
`Defendant's counsel to discuss pre-litigation resolution of the legal issues arising
`from the continuing sale of counterfeit goods in violation of JLI's trademark rights
`and in breach of the Settlement Agreement. Such communications, however, did
`not result in resolution of JLI's claims.
`33. Defendant is not authorized and never has been authorized by JLI to
`produce, manufacture, distribute, market, offer for sale, and/or sell merchandise
`bearing the JUUL Marks, or any variations thereof. JLI has no control over the
`nature, quality, or pricing of Defendant's products or marketing, or any other aspect
`of the business conduct of Defendant.
`images, designs, and names
`34. Defendant uses words, symbols,
`confusingly similar or identical to the JUUL Marks to confuse consumers and aid in
`the promotion and sales of the Counterfeit Goods.
`35. Defendant's counterfeit sales outlined above are likely to deceive,
`confuse, and mislead purchasers and prospective purchasers into believing that the
`products are authorized by JLI. Purchasers and prospective purchasers using or
`simply viewing Defendant's Counterfeit Goods and who perceive a defect, lack of
`
`
`
`
`
`-9-
`COMPLAINT
`
`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 10 of 18 Page ID #:10
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`quality, or any other irregularity are likely to mistakenly attribute the issue to JLI, to
`the detriment of JLI's business and the JUUL brand.
`36. The likelihood of confusion, mistake, and deception brought about by
`Defendant's misappropriation of the JUUL Marks is causing irreparable harm to the
`goodwill symbolized by the JUUL Marks and the reputation for quality that said
`marks embody.
`37. Defendant's unauthorized use of the JUUL Marks occurred after JLI
`legally established the existence and significant value of such trademarks, including
`after JLI's adoption and use of the JUUL Marks and after JLI obtained the trademark
`registrations described above.
`38. Defendant's infusion of the Counterfeit Goods into the marketplace
`reflects adversely on JLI, results in economic loss to JLI including loss of sales of
`genuine JUUL Products, damages the goodwill of the JUUL brand, and thwarts
`JLI's honest efforts and considerable expenditures to promote its genuine JUUL
`Products using the JUUL Marks.
`FIRST CAUSE OF ACTION
`(Breach of Contract)
`JLI re-alleges and incorporates by this reference each and every
`39.
`allegation in paragraphs 1 through 38 as though set forth fully herein.
`40. The Settlement Agreement was duly entered between JLI and
`Defendant in order to resolve, prior to litigation, JLI's allegations of Defendant's
`sales of counterfeit goods that occurred prior to the October 31, 2019 effective date
`of the Settlement Agreement.
`41. The Settlement Agreement included Defendant's agreement to cease
`and desist from any further sales of any products that, without authority or license
`from JLI, use or incorporate the JUUL trade name, any JUUL Mark, or any
`imitations of such trade name or trademarks, and not to in any way aid, abet, induce,
`or contribute to the infringement of such trade name and trademarks. The
`
`-10-
`COMPLAINT
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`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 11 of 18 Page ID #:11
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`Settlement Agreement also included Defendant's agreement to destroy any such
`products in its possession.
`JLI fulfilled all of its obligations under the Settlement Agreement.
`42.
`43. Defendant breached the Settlement Agreement with every instance of
`sale after the effective date of the Settlement Agreement of any Counterfeit Good.
`JLI has been damaged as a direct and proximate result of Defendant's
`44.
`breach of the Settlement Agreement. JLI alleges, on information and belief, that
`Defendant's sales of Counterfeit Goods have resulted in economic loss to JLI and
`have injured the general reputation of JLI, all to JLI's damage in an amount not yet
`ascertainable, but will be determined during this action.
`45. The Settlement Agreement entitles the prevailing party to its costs and
`reasonable attorneys' fees associated with this litigation. JLI has incurred, and will
`continue to incur, attorneys' fees in connection with this dispute in a total amount
`that cannot yet be determined.
`SECOND CAUSE OF ACTION
`(Trademark Infringement – Counterfeit Goods (15 U.S.C. § 1114))
`JLI re-alleges and incorporates by this reference each and every
`46.
`allegation in paragraphs 1 through 45 as though set forth fully herein.
`47. The JUUL Marks, as well as the goodwill arising from such
`trademarks, have never been abandoned. The JUUL Marks appear clearly on JUUL
`Products, as well as the packaging and marketing related to such products. JLI
`continues to preserve and maintain its rights with respect to the JUUL Marks.
`48. Defendant's intentional and/or willful actions to sell and distribute the
`Counterfeit Goods through use of spurious designations that are identical to, or
`substantially indistinguishable from, the JUUL Marks as described herein are
`intended to cause, have caused, and are likely to continue to cause confusion or
`mistake, or to deceive consumers, the public, and the trade into believing that the
`Counterfeit Goods are genuine or authorized JUUL Products.
`
`-11-
`COMPLAINT
`
`
`
`

`

`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 12 of 18 Page ID #:12
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`49. The foregoing acts of Defendant constitute direct, contributory, and/or
`vicarious trademark infringement in violation of 15 U.S.C. § 1114.
`JLI has been damaged as a result of Defendant's infringement of the
`50.
`JUUL Marks. JLI alleges, on information and belief, that Defendant's sale and
`distribution of the Counterfeit Goods have resulted in lost sales to JLI, have reduced
`the business and profits of JLI, and have injured the general reputation of JLI, all to
`JLI's damage in an amount not yet ascertainable, but will be determined during this
`action or considered in relation to a request for statutory damages.
`JLI alleges, on information and belief, that Defendant has derived,
`51.
`received, and will continue to derive and receive from the aforesaid acts of
`infringement, gains, profits, and advantages in an amount not yet ascertainable, but
`will be determined during this action or considered in relation to a request for
`statutory damages.
`52. On information and belief, Defendant acted intentionally and/or
`willfully in infringing upon the JUUL Marks through sale and distribution of the
`Counterfeit Goods, knowing that the JUUL Marks belonged to JLI, that the
`Counterfeit Goods were in fact infringing, and that Defendant was not authorized to
`infringe upon the JUUL Marks through sale and distribution of the Counterfeit
`Goods.
`53. Defendant's spurious designation of its products also constitutes the
`knowing use by Defendant of at least one "counterfeit mark" as defined in 15 U.S.C.
`§ 1116(d)(1)(B). Therefore, JLI is entitled to recovery of treble damages and to an
`award of reasonable attorneys' fees pursuant to 15 U.S.C. §§ 1117(a) and 1117(b).
`54. Because Defendant's actions also constitute the use by Defendant of at
`least one "counterfeit mark" as defined in 15 U.S.C. § 1116(d)(1)(B), JLI reserves
`the right to elect, at any time before final judgment is entered in this case, an award
`of statutory damages pursuant to 15 U.S.C. § 1117(c)(1) or (2). JLI alleges, on
`information and belief, that Defendant has knowingly and willfully engaged in the
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`-12-
`COMPLAINT
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`

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`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 13 of 18 Page ID #:13
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`acts complained of with oppression, fraud, malice, and in conscious disregard of the
`rights of JLI. JLI is, therefore, entitled to the maximum statutory damages
`allowable.
`trademark
`55. The acts of direct, contributory, and/or vicarious
`infringement committed by Defendant have caused, and will continue to cause, JLI
`irreparable harm unless they are enjoined by this Court. On information and belief,
`Defendant's actions were committed in bad faith and with the intent to cause
`confusion and mistake, and to deceive the consuming public as to the source,
`sponsorship, and/or affiliation of Defendant and/or the Counterfeit Goods.
`THIRD CAUSE OF ACTION
`(False Designation of Origin – Counterfeit Goods (15 U.S.C. § 1125(a))
`JLI re-alleges and incorporates by this reference each and every
`56.
`allegation in paragraphs 1 through 55 as though set forth fully herein.
`57. Defendant's unauthorized use of the JUUL Marks, brand names, and
`the other distinctive words, symbols, slogans, color schemes, images, and designs
`through which Defendant presents its Counterfeit Goods to the market constitutes a
`wrongful and false representation to the consuming public that the Counterfeit
`Goods sold by Defendant originated from JLI or somehow are authorized by or
`affiliated with JLI.
`58. Defendant's actions as described herein constitute violation of 15
`U.S.C. § 1125(a)(1)(A), as such actions are likely to cause confusion, or to cause
`mistake, or to deceive as to the affiliation, connection, or association of Defendant
`with JLI and/or as to the origin, sponsorship, and/or approval of the Counterfeit
`Goods by JLI. These acts amount to false designations of origin.
`JLI has been damaged as a result of Defendant's actions described
`59.
`herein. JLI alleges, on information and belief, that Defendant's sale of the
`Counterfeit Goods has resulted in lost sales to JLI, has reduced the business and
`profits of JLI, and has greatly injured the general reputation and goodwill of JLI, all
`
`-13-
`COMPLAINT
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`

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`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 14 of 18 Page ID #:14
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`to JLI's damage in an amount not yet ascertainable, but will be determined during
`this action or to be considered in relation to a request for statutory damages.
`JLI alleges, on information and belief, that Defendant has derived,
`60.
`received, and will continue to derive and receive from the aforesaid acts of
`infringement, gains, profits, and advantages in an amount not yet ascertainable, but
`will be determined during this action or to be considered in relation to a request for
`statutory damages.
`61. On information and belief, Defendant acted intentionally and/or
`willfully in using the JUUL Marks on the Counterfeit Goods, knowing that the
`JUUL Marks belonged to JLI, that the Counterfeit Goods were in fact counterfeit,
`and that Defendant was not authorized to use the JUUL Marks on the Counterfeit
`Goods.
`62. Defendant's acts of violating 15 U.S.C. §1125(a), directly and/or in
`contributory or vicarious manner, have caused, and will continue to cause, JLI
`irreparable harm unless they are enjoined by this Court. On information and belief,
`Defendant's actions were committed in bad faith and with the intent to cause
`confusion and mistake, and to deceive the consuming public as to the source,
`sponsorship, and/or affiliation of Defendant and/or the Counterfeit Goods.
`FOURTH CAUSE OF ACTION
`(Unfair Competition – Counterfeit Goods (15 U.S.C. §1125(a))
`JLI re-alleges and incorporates by this reference each and every
`63.
`allegation in paragraphs 1 through 62 as though set forth fully herein.
`64. An express purpose of the Lanham Act is to protect commercial parties
`against unfair competition.
`65. Defendant's unauthorized use of the JUUL Marks, brand names, and
`the other distinctive words, symbols, color schemes, and designs through which JLI
`presents its products to the market constitutes wrongful and unfair business practices
`and marketplace bad faith, resulting in inaccurate representations to the consuming
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`-14-
`COMPLAINT
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`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 15 of 18 Page ID #:15
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`public that the Counterfeit Goods sold by Defendant originated from or somehow
`are authorized by or affiliated with JLI. Defendant so acted for its own financial
`benefit in disregard to the harm being caused to JLI.
`66. Defendant's actions as described herein constitute violation of 15
`U.S.C. § 1125(a)(1)(A), as such actions are likely to cause confusion, or to cause
`mistake, or to deceive as to the affiliation, connection, or association of Defendant
`with JLI and/or as to the origin, sponsorship, and/or approval of the Counterfeit
`Goods by JLI. These acts amount to false representations to compete unfairly with
`JLI.
`
`JLI has been damaged as a result of Defendant's actions described
`67.
`herein. JLI alleges, on information and belief, that Defendant's sale of the
`Counterfeit Goods has resulted in lost sales to JLI, has reduced the business and
`profits of JLI, and has greatly injured the general reputation and goodwill of JLI, all
`to JLI's damage in an amount not yet ascertainable, but will be determined during
`this action or to be considered in relation to a request for statutory damages.
`JLI alleges, on information and belief, that Defendant has derived,
`68.
`received, and will continue to derive and receive from the aforesaid acts of
`infringement, gains, profits, and advantages in an amount not yet ascertainable, but
`will be determined during this action or to be considered in relation to a request for
`statutory damages.
`69. On information and belief, Defendant acted intentionally and/or
`willfully in using the JUUL Marks on the Counterfeit Goods, knowing that the
`JUUL Marks belonged to JLI, that the Counterfeit Goods were in fact counterfeit,
`and that Defendant was not authorized to use the JUUL Marks on the Counterfeit
`Goods.
`70. Defendant's acts of violating 15 U.S.C. § 1125(a), directly and/or in
`contributory or vicarious manner, have caused, and will continue to cause, JLI
`irreparable harm unless they are enjoined by this Court. On information and belief,
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`-15-
`COMPLAINT
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`

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`Case 2:21-cv-08228-RSWL-SK Document 1 Filed 10/18/21 Page 16 of 18 Page ID #:16
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`Defendant's actions were committed in bad faith and with the intent to cause
`confusion and mistake, and to deceive the consuming public as to the source,
`sponsorship, and/or affiliation of Defendant and/or the Counterfeit Goods.
`FIFTH CAUSE OF ACTION
` (Unfair Business Practices (Cal. Bus. & Prof. Code §17200, et seq.))
`JLI re-alleges and incorporates by this reference each and every
`71.
`allegation in paragraphs 1 through 70 as though set forth fully herein.
`72. Defendant's actions described herein constitute unlawful, unfair, and/or
`fraudulent business acts or practices. Defendant's actions thus constitute "unfair
`competition" pursuant to California Business & Professionals Code §17200, et seq.
`JLI has suffered an injury in fact, including without limitation, an
`73.
`amount to be proven at trial and diminution in the value of its trademarks and
`goodwill, as a proximate result of Defendant's unfair competition.
`JLI requests that the Court order Defendant to disgorge all profits
`74.
`wrongfully obtained as a result of Defendant's unfair competition, and order
`Defendant to pay restitution to JLI in an amount to be proven at trial.
`75. Defendant's actions have caused, and will continue to cause JLI to
`suffer irreparable harm unless enjoine