Case 3:21-cv-00626-CAB-BGS Document 1 Filed 04/12/21 PageID.1 Page 1 of 19
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`MINTZ LEVIN COHN FERRIS
`GLOVSKY AND POPEO, P.C.
`Andrew D. Skale (211096)
`Randy K. Jones (141711)
`Courtney Rockett (pro hac vice forthcoming)
`Kara M. Cormier (pro hac vice forthcoming)
`3580 Carmel Mountain Road, Suite 300
`San Diego, CA 92130
`Telephone: (858) 314-1500
`Facsimile: (858) 314-1501
`
`Attorneys for Plaintiff
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF CALIFORNIA
`Case No. ______________
`COMPLAINT FOR:
`
`))
`
`STITCH EDITING LTD.,
`
`Plaintiff Stitch Editing Ltd. (“Stitch”), by its attorneys, for its Complaint against defendants
`TikTok Inc., TikTok LLC, TikTok Ltd., and ByteDance Ltd. (collectively, “TikTok” or
`“Defendants”), alleges as follows:
`
`NATURE OF THE ACTION
`All claims asserted herein arise out of, and are based on, Defendants’ willful
`1.
`infringement of Stitch’s rights in its registered and incontestable STITCH EDITING trademark and
`its common law trademark rights in STITCH EDITING and STITCH (collectively, the “STITCH
`Mark”).
`
`Plaintiff,
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`v.
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`Defendants.
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`)
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`TIKTOK, INC., TIKTOK LLC, TIKTOK LTD., and )
`BYTEDANCE LTD.,
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`)
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`1) TRADEMARK INFRINGEMENT;
`2) FALSE DESIGNATION OF
`ORIGIN AND UNFAIR
`COMPETITION UNDER THE
`LANHAM ACT;
`3) UNFAIR COMPETITION UNDER
`CAL. BUS. & PROF. CODE § 17200;
`and
`4) COMMON LAW FALSE
`DESIGNATION OF ORIGIN AND
`UNFAIR COMPETITION
`JURY DEMANDED
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`'21
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`CV626
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`BGS
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`CAB
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`Case 3:21-cv-00626-CAB-BGS Document 1 Filed 04/12/21 PageID.2 Page 2 of 19
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`Stitch is a critically acclaimed video-editing house that provides editing services for
`2.
`commercials and music videos out of its office in London and out of its licensee’s office in Los
`Angeles, CA.
`3.
`Its commercial brand customers include: ESPN, Louis Vuitton, Jägermeister, BMW,
`Heineken, Pizza Hut, Lego, and many others.
`4.
`Its music video customers include heavy hitters such as: The Rolling Stones, Lady Gaga,
`Beyoncé, Ariana Grande, Powfu, Dua Lipa, Naughty Boy, and many others.
`5.
`Stitch owns an incontestable federal trademark registration issued by the United States
`Patent and Trademark Office for its STITCH EDITING mark for, among other things, the editing of
`videos.
`Stitch also has common law rights in its STITCH EDITING and STITCH marks for,
`6.
`among other things, the editing of videos.
`7.
`TikTok is a technology company that develops, provides and supports a mobile software
`application called “TikTok,” which allows users to create and share short-form videos.
`8.
`In September 2020, TikTok released an editing feature that it branded “STITCH,” with
`no regard for Stitch’s longstanding prior rights and hard-earned goodwill in the STITCH Mark in the
`video-editing industry.
`9.
`TikTok has continued to use the mark STITCH for its video-editing services,
`notwithstanding the facts that Stitch’s federal trademark registration specifically covers “editing of . .
`. internet videos,” among other services, and Stitch’s common law trademark rights cover the same
`services.
`From the date of its release, there have been approximately 235.9 billion views of
`10.
`infringing Stitch videos. That view count is increasing at a rate of approximately 900 million views
`per day.
`TikTok refused to cease its infringement despite its receipt of a first notice to cease and
`11.
`desist on December 28, 2020, and a second notice to cease and desist on January 27, 2021.
`12.
`Stitch continued to seek a fair and reasonable resolution from the date of those notices
`until the date of the filing of this action.
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`Case 3:21-cv-00626-CAB-BGS Document 1 Filed 04/12/21 PageID.3 Page 3 of 19
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`Since no resolution was forthcoming, and to protect its valuable STITCH Mark, Stitch
`13.
`was forced to file this action for trademark infringement and unfair competition under the Lanham
`Act, 15 U.S.C. § 1051, et seq.; unfair competition under California Business & Prof. Code, § 17200
`et seq.; and false designation of origin and unfair competition under California common law. It seeks
`both equitable relief and damages.
`
`THE PARTIES
`Plaintiff Stitch is a UK entity founded in 2010. Its principal place of business is in
`14.
`London, it is registered to do business in California, and it operates out of the offices of its licensee in
`Los Angeles for US-based projects.
`15.
`Defendant TikTok Inc. is a California corporation having its principal place of business
`at 5800 Bristol Parkway, Culver City, CA 90230.
`16.
`Upon information and belief, Defendant TikTok LLC is a Delaware limited liability
`company.
`Upon information and belief, Defendant TikTok Ltd. is a Cayman Islands company.
`17.
`Defendant ByteDance Ltd. was founded by Zhang Yiming in 2012 as a Cayman Islands
`18.
`company. It is headquartered in Beijing and has offices in the United States.
`19.
`Upon information and belief, TikTok Inc. is wholly owned by TikTok LLC, which, in
`turn, is wholly owned by TikTok Ltd., which, in turn, is wholly owned by ByteDance Ltd.
`JURISDICTION AND VENUE
`This Court has original jurisdiction over Plaintiff’s federal claims pursuant to Section
`20.
`39(a) of the Lanham Act, 15 U.S.C. § 1121(a), and Sections 1331 and 1338(a) of the Judicial Code,
`28 U.S.C. §§ 1331 and 1338(a). This Court has supplemental jurisdiction over Plaintiff’s claims
`arising under the laws of the State of California pursuant to 28 U.S.C. §§ 1338(b) and 1367.
`21.
`This Court has personal jurisdiction over TikTok Inc. because it is a California
`corporation with headquarters in Culver City, CA. This Court also has personal jurisdiction over the
`other Defendants because, upon information and belief, these parent organizations are mere alter egos
`of TikTok Inc., having such a unity of interest and ownership that the separate personalities of the
`entities no longer exist. In such circumstances, the failure to disregard their separate identities would
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`Case 3:21-cv-00626-CAB-BGS Document 1 Filed 04/12/21 PageID.4 Page 4 of 19
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`result in fraud or injustice. Moreover, TikTok Ltd., TikTok LLC and ByteDance Ltd. have purposely
`directed their infringing content at citizens of this forum via the TikTok app and have therefore
`purposefully availed themselves of the privilege of conducting activities in this forum, thereby
`invoking the benefits and protections of its laws. As a result, the exercise of jurisdiction over these
`Defendants is reasonable and comports with fair play and substantial justice.
`22.
`Venue is proper under 28 U.S.C. § 1391(b)(2) & (3) because TikTok Inc. is a California
`corporation and Defendants engage in business and promote their services under their infringing mark
`in this District. Thus, a substantial part of the events or omissions giving rise to these claims occurred
`in or are directed at this District.
`STITCH EDITING’S BRAND AND TRADEMARKS
`Stitch works with creative directors, advertising agencies, production companies, brand
`23.
`executives, video directors, music label executives, artists, and others to provide editing for
`commercials, music videos, and short videos that are viewed by hundreds of millions of people.
`24.
`It operates from its office in London and from the office of its licensee in Los Angeles
`for clients around the globe and its work is critically acclaimed.1
`25.
`Indeed, as of the date of this Complaint, it was ranked the top editing house in the UK
`by David Reviews, the leading industry publication. See Exhibit A.
`26.
`As a result of Stitch’s renown in the industry, it has been approached twice to perform
`editing work on commercial advertisements for TikTok itself. First, in early November 2020, TikTok
`– through a production company – sought to employ Stitch for commercial editing services. Then,
`Stitch was approached again – via a production company – to bid on commercial work for TikTok in
`March 2021.2
`
`1 See, e.g., Sharks 2020 Short Film Awards, awarding Stitch the award for Best Editing for the
`film Double Tap: https://www.shots.net/news/view/sharks-short-film-awards-announce-2020-
`winners; Sharks 2021 Music Video Awards, awarding Stitch the award for Best Editing for the video
`Criss Cross for The Rolling Stones:
`https://kinsalesharks.awardsengine.com/?action=ows:entries.details&e=57387&project_year=2020;
`Sharks 2020 Short List for Dua Lipa “Physical” Music Video:
`https://kinsalesharks.awardsengine.com/?action=ows:entries.details&e=57259&project_year=2020.
`2 Stitch did not provide the requested services on either occasion.
`4
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`Case 3:21-cv-00626-CAB-BGS Document 1 Filed 04/12/21 PageID.5 Page 5 of 19
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`Some of Stitch’s recent commercials for well-known brands include: ESPN (“This is
`27.
`Sportscenter: The Manny”), Louis Vuitton (“Journey Home for the Holidays”), Jägermeister (“Be The
`Meister”), BMW (X2 commercial), Babybell Cheese (“Join the Goodness”), Heineken (“The Split”),
`Pizza Hut (“Now That’s Delivery”), LG (“Got Your Laundry”), Payday (“Hammer”), Bumble (“When
`Dating Met 2020”), QuickBooks (“We Mean Business for Your Business”), Diesel (“Francesca”),
`Google (“A Feeling Called Home”), Lego (“Rebuild the Holidays”), Doritos (“Jukebox”), Nike (“Play
`Pinoy,” “Flyknit” featuring Kobe Bryant and others, “T90 Laser: The Put it Where You Want it Tour,”
`“Find Your Greatness”), Oppo (“Fantastic Bus”), KFC (“The Colonel”), Natwest (“Pennies”),
`Samsung (“Milk Music”), Mini, Rexona (post-production), and many others.
`28.
`Some of the recent music videos that Stitch edited include those for the following hit
`songs: Death Bed, Coffee for Your Head (by Powfu), Physical (by Dua Lipa), Rain on Me (by Lady
`Gaga ft. Ariana Grande), Criss Cross (by The Rolling Stones), Runnin’ (by Naughty Boy ft. Beyoncé),
`and many others.
`29.
`Stitch has invested substantial time and resources building its goodwill in the STITCH
`Mark and protecting its valuable brand.
`30.
`Stitch uses both the STITCH and STITCH EDITING marks to identify its services. For
`example, its LinkedIn, Instagram, Twitter, and Facebook pages and its website at www.stitchediting.tv
`all prominently display both marks, the sign on Stitch’s London headquarters reads “STITCH,” and
`the company is often credited for its work as simply “Stitch.” As such, to consumers, STITCH
`identifies a single source when used in connection with video-editing services: the Plaintiff Stitch.
`31.
`In addition to its common law rights in the STITCH EDITING and STITCH marks,
`Stitch has an international portfolio of trademark rights including incontestable trademark rights in the
`United States pursuant to US Reg. No 4,742,447 for its STITCH EDITING mark. A true copy of the
`registration from the United States Patent and Trademark Office is attached as Exhibit B.
`32.
`The registration, which is incontestable, valid, subsisting, and in full effect, covers
`“editing of . . . internet videos,” among other services.
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`STITCH EDITING’S MARKET PRESENCE
`Stitch has achieved a significant amount of commercial success, as is plainly evident
`33.
`from the brands and musicians with which it works and the accolades it consistently receives in the
`industry.
`It has spent a substantial amount on promoting its brand, and it has generated tens of
`34.
`millions of dollars in revenue.
`35.
`Its market exposure is vast and includes: companies and brands looking to create
`commercial advertisements, advertising agencies, production companies, directors, musicians, music
`labels, and others.
`36.
`Stitch’s market exposure also includes all the end-consumers who view the
`advertisements, film shorts, short videos, and music videos that credit Stitch for the work it has done.
`37.
`The public has access to, and views, the videos that Stitch has edited on dozens of
`media: including on television, Stitch’s website, video streaming services, such as YouTube, and
`social media platforms, such as TikTok.
`38.
`As just one recent example, the Death Bed (Coffee for your Head) video that Stitch
`edited has appeared on TikTok.
`39.
`In many cases, the videos explicitly credit Stitch as the editor (often as just “Stitch”),
`such as the music video for a song by Naughty Boy featuring Beyoncé, which has nearly 400 million
`views on YouTube alone.3
`40.
`Even if a streaming link or video source does not directly credit Stitch, countless other
`sources publicize the association between Stitch and the commercial advertisements, film shorts, short
`videos, and music videos that it edits.4
`
`3 See https://www.youtube.com/watch?v=eJSik6ejkr0 (“VIDEO CREDITS” section lists “Leo King
`@ Stitch” as editor).
`4 See, e.g., https://www.sohonet.com/our-resources/blogs/stitch-editing-finds-bullet-proof-
`supervised-finishing-solution/ (crediting Stitch for LG “Got Your Laundry” commercial and
`Moschino Spring Summer 2021 Collection commercial);
`https://kinsalesharks.awardsengine.com/?action=ows:entries.details&e=52008&project_year=2020
`(crediting Stitch for Jägermeister commercial); https://www.campaignlive.co.uk/article/pizza-hut-
`now-thats-delivering-iris/1696311 (crediting Stitch for Pizza Hut commercial);
`https://www.lbbonline.com/work/49483 (crediting Stitch for Bumble commercial);
`https://www.campaignlive.com/article/intuit-quickbooks-we-mean-business-business-wieden-
`kennedy-london/1703348 (crediting Stitch for Quickbooks commercial); https://www.lego.com/en-
`6
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`DEFENDANTS’ MARKET PRESENCE
`Defendants’ TikTok app is a wildly popular video-sharing, social-networking app on
`41.
`which users make and share their own short-form videos having a duration of between 3 and 60
`seconds, and in some cases up to 3 minutes.
`42.
`The TikTok app is available in more than 200 countries.
`43.
`As of September 2020, the TikTok app had over 100 million US monthly active users
`and approximately 50 million daily active users in the United States. Upon information and belief,
`that number has increased.
`44.
`As of July 2020, the TikTok app had nearly 690 million global monthly active users.
`Upon information and belief, that number has increased.
`45.
`By August 2020, the TikTok app surpassed two billion global downloads. Upon
`information and belief, that number has increased.
`46.
`TikTok has also been trying to expand its market by moving beyond a mobile app to
`an app that is available on other platforms.
`47.
`For example, upon information and belief, TikTok has partnered with Samsung – one
`of the world’s largest suppliers of smart TVs – to roll out a TikTok TV app.
`TikTok also has an app available on Google’s Android TV platform5 and an app called
`48.
`“More on TikTok” on Amazon Fire TV.6
`49.
`Upon information and belief, millions of end users who use the TikTok app have also
`viewed one or more of the videos that Stitch has edited, many of which expressly credited Stitch for
`its work.
`
`gb/aboutus/news/2020/november/rebuild-the-holidays/ (crediting Stitch for Lego commercial);
`https://clios.com/awards/winner/film-technique/nike/play-pinoy-76 (crediting Stitch for Nike “Play
`Pinoy” commercial); https://www.lbbonline.com/news/light-strong-nike-flyknit (crediting Stitch for
`Nike “Flyknit” commercial); https://www.campaignlive.co.uk/article/natwest-we-do-partnership-
`london/1672876 (crediting Stitch with Natwest commercial).
`5 See https://www.theverge.com/2021/2/3/22264642/tiktok-android-tv-launch-not-working-google.
`6 See https://www.theverge.com/2020/8/6/21357300/tiktok-amazon-fire-tv-app-launch-free-tv-
`mobile.
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`But TikTok markets itself to more than just end users; it aggressively markets itself to
`50.
`brands and businesses as an advertising platform and has been increasing its push into the advertising
`market.7
`TikTok offers a variety of advertising formats ranging from airing short 3-5 second ads
`51.
`that show up in people’s feeds, to buying in-feed 60-second ads, to creating influencer-led campaigns.8
`52.
`TikTok markets its advertising services with slogans like: “Don’t Make Ads. Make
`TikToks,” “Discover a world full of people waiting to discover your brand,” and “Maximize ROI by
`ensuring your most important audiences see your ads and track your performance in real-time.”9
`53.
`In fact, on February 1, 2021, TikTok partnered with WPP, the world’s largest
`advertising company (as of 2019), to provide WPP’s clients “unique access and capabilities on the
`TikTok platform.” In its press release announcing the collaboration, TikTok states:10
`
`Recognizing the significant opportunities for brands that both short-form video and digital
`content continue to present, WPP will have early access to advertising products in
`development, ensuring WPP and its clients remain at the forefront of innovation
`as TikTok further develops its suite of products for brands.
`***
`WPP will be the Lead Agency Development Partner to new creator-focused APIs, which will
`incorporate WPP’s market leading brand safety methodology while leveraging unique brand
`and marketer data signals.
`54.
`TikTok’s Vice President of Global Business Solutions was quoted in that release as
`stating:
`
`Creative and media agencies play a major role in fueling [] creative campaigns, and we’re
`excited to partner with a global innovator like WPP as we build for the future. We both share
`a common goal: to drive amazing campaigns for our clients that resonate with our growing
`audience . . ..11
`
`In or about October 2020, TikTok even partnered with the Shopify e-commerce
`55.
`platform, which will allow its “more than 1 million merchants to create and connect their TikTok For
`
`7 See https://www.tiktok.com/business/en-US.
`8 See https://www.tiktok.com/business/en-US/apps/tiktok#4.
`9 Id.
`10 See https://newsroom.tiktok.com/en-us/tiktok-wpp-news.
`11 Id.
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`Business account to deploy In-Feed shoppable video ads directly within Shopify.”12
`56.
`TikTok lists many well-known brands that have achieved advertising success on the
`platform, including BMW, Clean and Clear, Doritos, Natwest, Universal Pictures, NYX, Kool-Aid,
`Mucinex, Chipotle, Bumble, Fendi, KFC, Oppo, Rexona, and Samsung.13
`57.
`Out of those companies, Stitch has performed editing services for at least BMW,
`Doritos, Natwest, Bumble, Oppo, Rexona, Mini and Samsung.
`58.
`In addition to its efforts to expand into the commercial advertising world, TikTok has
`also been working to expand into the music industry.
`59.
`TikTok touts that its app “became America’s go-to platform for music discovery, as
`well as a launching pad for smash hits by artists of all genres.” 14
`TikTok also touts that Powfu broke out on TikTok’s platform.15
`60.
`61.
`Stitch edited the music video for Powfu’s hit song, Death Bed, Coffee for Your Head,
`which has become a TikTok phenomenon.
`62.
`The music video itself, or excerpts therefrom, appear in several TikTok posts as of the
`date of this Complaint.
`TikTok has also entered into licensing deals with Warner Music Group,16 ICE,17 and
`63.
`Sony Music,18 and at least the Sony deal allows Sony “to use TikTok’s platform . . . to promote its
`artists.”19
`64.
`
`TikTok is thus working with the same music labels with which Stitch works.
`
`12 See https://www.zdnet.com/article/shopify-inks-commerce-partnership-with-tiktok/.
`13 See https://www.tiktok.com/business/en-US/inspiration?country=US.
`14 See https://newsroom.tiktok.com/en-us/year-on-tiktok-music-2020.
`15 Id.
`16 See https://www.musicbusinessworldwide.com/warner-music-group-inks-licensing-deal-with-
`tiktok/.
`17 See https://www.musicbusinessworldwide.com/tiktok-inks-multi-year-licensing-deal-with-ice/.
`18 See https://finance.yahoo.com/news/tiktok-signs-deal-sony-music-
`170116348.html?guccounter=1&guce_referrer=aHR0cHM6Ly9lbi53aWtpcGVkaWEub3JnLw&guc
`e_referrer_sig=AQAAAJooWnNXFPz_44gHjCUovo0cmMM_cMC8u5xfFWD1QV2Jowm4EpQ8l
`2AdndzmieDr0JRuRgutwAKYLHDrE4-WND4-
`ZAwYxqusQxlHWfKblfQT62bxNZFSJ98QkGBbEKeuRXWJzk7DTPDXLkNIuOG0VAdbC2PdFu
`xkCKheegxGnMmk.
`19 Id.
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`TikTok advertises itself to, solicits business from, and works with, the same client-
`65.
`brands, advertising agencies, production companies, directors, music labels, and artists (among others)
`as Stitch.
`66.
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`TikTok thus reaches millions (if not more) of the same end users that Stitch reaches.
`DEFENDANTS’ UNLAWFUL ACTS
`On September 3, 2020, TikTok released an editing feature branded as “Stitch” (the
`67.
`“Infringing Mark”), stating in a press release:
`Today, we’re excited to announce the launch of a new editing feature called
`Stitch, which introduces yet another way for users to engage with the world
`of content that’s made and shared every day by the ever-creative TikTok
`community.
`Stitch allows users the ability to clip and integrate scenes from another
`user’s video into their own. Like Duet, Stitch is a way to reinterpret and add
`to another user’s content, building on their stories, tutorials, recipes, math
`lessons, and more.
`. . . Every video made with Stitch attributes the original creator in the new
`video’s caption, and the caption attribution links directly to the original,
`clipped video.20
`
`The press release goes on to instruct users how to edit videos using the new STITCH
`68.
`editing feature.
`69.
`TikTok’s use of the term “Stitch” is capitalized and in the form of a trademark.
`70.
`The post by the official @tiktok account announcing the feature makes clear that
`“Stitch” is a brand, by capitalizing its use and pronouncing: “Now introducing STITCH! Make the
`ultimate collab with your fav creators.”
`71.
`The post displays “Stitch” in a blocky, sans-serif, white, font that mimics the same way
`the STITCH Mark is used in the marketplace:
`
`20 https://newsroom.tiktok.com/en-us/new-on-tiktok-introducing-stitch
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`TikTok’s Infringing Use
`
` Stitch’s Mark
`
`And once posted, each resulting video edited with TikTok’s “STITCH” editing feature
`72.
`has a caption that includes the hashtag “#stitch.”
`73.
`As of the date of this Complaint, there have been approximately 235.9 billion views of
`TikTok videos created using its STITCH editing feature.
`
`Upon information and belief, TikTok derives revenue from each and every one of these
`
`74.
`views.
`Upon information and belief, TikTok’s STITCH editing feature is available in all
`75.
`countries in which the TikTok app is available.
`76.
`Defendants are not associated or affiliated with Stitch and have never been authorized
`or otherwise licensed to use the Infringing Mark in connection with any products or services.
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`Thus, on December 28, 2020, Stitch served a cease-and-desist letter on TikTok.
`77.
`TikTok responded by rejecting the claims of infringement and refusing to cease use of
`78.
`the Infringing Mark.
`79.
`Stitch served a second cease-and-desist letter on January 27, 2021, explaining why
`TikTok’s denial of the alleged infringement was misguided.
`80.
`Although Stitch sought to reach a fair and reasonable resolution that involved TikTok
`ceasing its use of the Infringing Mark plus compensation for the significant amounts of past
`infringement, it was unable to do so.
`
`INJURY TO STITCH
`TikTok’s use of the Infringing Mark is likely to confuse, mislead, or deceive consumers
`81.
`into believing that TikTok’s STITCH editing feature originates from, or is associated with, sponsored
`by, or affiliated with Stitch, when it is not (e.g., forward confusion), or conversely, that Stitch’s
`services originate from, or are associated with, sponsored by, or affiliated with TikTok, when they are
`not (e.g., reverse confusion).
`82.
`The goodwill that Stitch has amassed in the STITCH Mark is put at risk by TikTok’s
`appropriation and use of the Infringing Mark. TikTok’s unauthorized acts unfairly and unlawfully
`wrest from Stitch control of its STITCH Mark and its reputation, particularly as Stitch has no control
`over the quality of TikTok’s services offered under the Infringing Mark. As a result, Stitch’s valuable
`reputation is being irreparably damaged. If TikTok’s conduct is not enjoined, it will continue to injure
`the value of Stitch’s STITCH Mark and the ability of those marks to indicate service emanating from
`a single source, namely, Stitch.
`83.
`Stitch has no adequate remedy at law to forestall TikTok’s ongoing infringement.
`84.
`Stitch is being, and will continue to be, irreparably injured and harmed by TikTok’s
`unlawful conduct.
`85.
`In addition, Stitch has been damaged by TikTok’s past infringement.
`86.
`Stitch is also faced with the momentous task of correcting the misimpressions resulting
`from TikTok’s infringement.
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`Case 3:21-cv-00626-CAB-BGS Document 1 Filed 04/12/21 PageID.13 Page 13 of 19
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`In the short period of time that TikTok has been utilizing the Infringing Mark, there
`87.
`have been in excess of 235.9 billion views of content that displays the Infringing Mark on the TikTok
`platform.
`Literature provides that it takes at least three impressions to correct each
`88.
`misimpression.21
`89.
`Therefore, the amount of impressions that will be necessary to reverse the effect of
`TikTok’s infringement is nearly half a trillion. The cost of such an endeavor is astronomical.
`FIRST CLAIM FOR RELIEF
`TRADEMARK INFRINGEMENT (15 U.S.C. § 1114)
`
`Stitch hereby repeats and realleges each of the allegations set forth in this Complaint.
`90.
`Defendants have used the Infringing Mark in commerce in connection with the sale,
`91.
`offering for sale, distribution, and advertising of Defendants’ goods and services.
`92.
`Defendants’ actions are likely to cause confusion, mistake, and deception as to the
`origin, sponsorship, or approval of the Defendants’ products or commercial activities, and thus
`constitute infringement of the registered STITCH Mark in violation of Section 32 of the Lanham Act,
`15 U.S.C. § 1114.
`93.
`Defendants had actual knowledge of the registered STITCH Mark at least after the
`December 28, 2020 cease-and-desist letter.
`94.
`By virtue of Stitch’s federal registration, Defendants were on constructive notice of
`Stitch’s ownership of the STITCH Mark pursuant to Section 22 of the Lanham Act, 15 U.S.C. § 1072.
`Moreover, Defendants knew or should have known about the registered STITCH Mark because even
`a cursory search of US trademark filings would have shown that Stitch already had rights in it.
`95.
`Nevertheless, Defendants have persisted in their forward and reverse infringing
`conduct, rendering such conduct knowing and willful.
`96.
`This Court and the Lanham Act have extraterritorial jurisdiction over Defendants’
`trademark infringement abroad as well because (1) the foreign infringement affects United States
`
`21 See, e.g., PODS Enters., LLC v. U-Haul Int’l, Inc., 126 F. Supp. 3d 1263, 1283-85 (M.D. Fl.
`2015) (discussing several experts’ review of literature); Corrective Advertising Guidelines,
`Compliance: Business Issues Information, Commerce Commission, New Zealand, Issue #20, July
`2000.
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`commerce in a manner that is sufficiently great to be a cognizable injury to Stitch under the Lanham
`Act and (2) the interests of and links to United States commerce are sufficiently strong in relation to
`those of any other nation to justify, in terms of comity, an extraterritorial application of the Lanham
`Act.
`
`First, infringing STITCH videos posted abroad can be and are viewed by users located
`97.
`in the United States.
`98.
`In addition, infringing STITCH videos posted in the United States can be and are
`viewed by users abroad.
`99.
`As such, Defendants’ infringement abroad not only affects United States commerce,
`but also is inextricably intertwined with the domestic infringement and therefore infringes upon
`Stitch’s US trademark rights.
`100.
`Second, the interests of American commerce and the links thereto are sufficiently
`strong in relation to the interests of other nations because:
`a.
`Protection against Defendants’ trademark infringement under US law for conduct
`affecting US commerce does not conflict with the laws or policies of other countries
`because there are no ongoing trademark disputes or proceedings in any other country
`among the parties to this action.
`
`b.
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`c.
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`d.
`
`e.
`
`Stitch works out of the offices of its licensee in Los Angeles, is registered to do business
`in California, and edits commercials and music videos for many well-known US
`companies for distribution in the US. In addition, TikTok Inc. is a California
`corporation, TikTok LLC is a Delaware company and Defendants have principal US
`offices in both states and operate within the American commerce streams.
`
`The United States and this Court have a superior ability to achieve compliance with
`United States’ trademark laws as compared with courts in any foreign jurisdiction
`because Defendants have purposefully subjected themselves to compliance with the
`laws of this country by organizing themselves under the laws of Delaware and
`California and they orchestrated their infringing activities from the United States.
`Moreover, there is nothing to suggest that this Court would have difficulty enforcing a
`damages award against Defendants.
`
`The relative effects of Defendants’ infringement in the United States exceed the effects
`in other countries given that the number of TikTok users in the US is 300% more than
`the next highest number from any other country (as of August 2020).
`
`Defendants’ infringement has been intentional and in willful disregard of the notice
`provided in the cease and desist letters, which conduct demonstrates an explicit purpose
`to harm American commerce.
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`f.
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`g.
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`Defendants’ intentional infringement also renders the negative effect of infringement
`foreseeable as a matter of law. The harm and effect on U.S. commerce was also
`foreseeable to Defendants in light of the massive market presence that the TikTok app
`has in the United States. Defendants knew or should have known that given their
`market reach, their infringement of a U.S. trademark would render significant harm to
`the trademark owner.
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`Defendants’ conduct in the United States is more important to the Lanham Act
`violations than their conduct abroad because the amount of infringement in the US
`exceeds the amount of infringement abroad and Defendants are using American
`commerce streams to accomplish their infringement.
`
`101. As a direct and proximate result of Defendants’ willful actions, conduct, and practices,
`Stitch has been damaged and will continue to suffer irreparable harm.
`SECOND CLAIM FOR RELIEF
`FALSE DESIGNATION OF ORIGIN
`AND UNFAIR COMPETITION (15 U.S.C. § 1125(A))
`Stitch repeats and realleges each of the allegations set forth in this Complaint.
`102.
`103. Defendants’ actions are likely to cause confusion, mistake, and deception as to the
`origin, sponsorship or approval of Defendants’ products, services, or commercial activities, and thus
`constitute false designation of origin, passing off, and unfair competition with res