1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 COMPLAINT Case No. 2:15-cv-9779 - 1 - KILPATRICK TOWNSEND & STOCKTON LLP GREGORY S. GILCHRIST (State Bar No. 111536) RYAN BRICKER (State Bar No. 269100) Eighth Floor, Two Embarcadero Center San Francisco, California 94111 Telephone: (415) 576-0200 Facsimile: (415) 576-0300 Email: [email protected][email protected]Attorneys for Plaintiff PATAGONIA, INC. UNITED STATES DISTRICT COURT FOR THE CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION – LOS ANGELES PATAGONIA, INC., Plaintiff, v. NOLAN SMITH, ALEX TOMASZEWSKI, DOE DEFENDANT NO. 1, Defendants. Case No. 2:15-cv-9779 COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND DILUTION JURY TRIAL DEMAND This lawsuit seeks to stop Nolan Smith, Alex Tomaszewski, and Doe Defendant No. 1 (collectively, “Defendants”) from infringing, misusing, and trading on Patagonia, Inc.’s (“Patagonia”) trademarks, copyrights, brand name, reputation, and goodwill. Defendants are manufacturing, selling, and offering apparel products that bear “Patagucci” logos and designations that mimic Patagonia’s famous trade- mark and logo and copy artwork that belongs to Patagonia, including through the patagucci.clothing website. To stop this conduct, Patagonia alleges as follows: PARTIES, JURISDICTION, AND VENUE 1. Patagonia is a California corporation headquartered at 259 West Santa Clara Street, Ventura, California 93001. Patagonia has been designing, developing, and marketing clothing for more than forty years. Today, Patagonia and the Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 1 of 21 Page ID #:1
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COMPLAINT Case No. 2:15-cv-9779 - 1 -
KILPATRICK TOWNSEND & STOCKTON LLP GREGORY S. GILCHRIST (State Bar No. 111536) RYAN BRICKER (State Bar No. 269100) Eighth Floor, Two Embarcadero Center San Francisco, California 94111 Telephone: (415) 576-0200 Facsimile: (415) 576-0300 Email: [email protected][email protected] Attorneys for Plaintiff PATAGONIA, INC.
UNITED STATES DISTRICT COURT
FOR THE CENTRAL DISTRICT OF CALIFORNIA
WESTERN DIVISION – LOS ANGELES PATAGONIA, INC.,
Plaintiff,
v. NOLAN SMITH, ALEX TOMASZEWSKI, DOE DEFENDANT NO. 1,
Defendants.
Case No. 2:15-cv-9779 COMPLAINT FOR TRADEMARK INFRINGEMENT, UNFAIR COMPETITION, AND DILUTION JURY TRIAL DEMAND
This lawsuit seeks to stop Nolan Smith, Alex Tomaszewski, and Doe
Defendant No. 1 (collectively, “Defendants”) from infringing, misusing, and trading
on Patagonia, Inc.’s (“Patagonia”) trademarks, copyrights, brand name, reputation,
and goodwill. Defendants are manufacturing, selling, and offering apparel products
that bear “Patagucci” logos and designations that mimic Patagonia’s famous trade-
mark and logo and copy artwork that belongs to Patagonia, including through the
patagucci.clothing website. To stop this conduct, Patagonia alleges as follows:
PARTIES, JURISDICTION, AND VENUE
1. Patagonia is a California corporation headquartered at 259 West Santa
Clara Street, Ventura, California 93001. Patagonia has been designing, developing,
and marketing clothing for more than forty years. Today, Patagonia and the
Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 1 of 21 Page ID #:1
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COMPLAINT Case No. 2:15-cv-9779 - 2 -
PATAGONIA brand are famous around the world for innovative apparel designs,
quality products, and environmental and corporate responsibility.
2. Nolan Smith is an individual who, on information and belief, resides
at 74 Yosemite Court, Ventura, California 93003.
3. Alex Tomaszewski is an individual who, on information and belief,
resides at 212 Grandville Avenue SW, Apt. 502, Grand Rapids, Michigan 49503.
4. Doe Defendant No. 1 (“Doe Screenprinter”) is a screen printing com-
pany that, on information and belief, is headquartered at 4848 Colt Street, #12,
Ventura, California 93003. It is applying the PATAGUCCI designation and related
designs on apparel products, and selling said products to Mr. Smith and
Mr. Tomaszewski.
5. Patagonia’s trademark claims arise under the Trademark Act of 1946
(the Lanham Act), as amended by the Trademark Dilution Revision Act of 2006
(15 U.S.C. §§ 1051, et seq.). Patagonia’s claims for copyright infringement arise
from Defendants’ infringement of Patagonia’s exclusive rights under the United
States Copyright Act (17 U.S.C. §§ 101, et seq.). This Court has jurisdiction over
such claims pursuant to 28 U.S.C. §§ 1338(a) and 1338(b) (trademark and unfair
6. This Court has personal jurisdiction over Defendants because
Defendants have purposefully availed themselves of the privilege of doing business
in this district. Doe Screenprinter is located in and does business in this district,
including with Mr. Smith and Mr. Tomaszewski. Patagonia is informed and
believes that Mr. Smith resides and does business in this district, and that Mr. Smith
and Mr. Tomaszewski own and operate an interactive website that is accessible by
Internet users in this district and offers their services and products to residents of
California and this judicial district. The infringing products that Doe Screenprinter
manufactures and sells to Mr. Smith and Mr. Tomaszewski, and which Mr. Smith
Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 2 of 21 Page ID #:2
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and Mr. Tomaszewski advertise and offer to purchasers through their website, are
capable of being ordered by and shipped to purchasers in California and, Patagonia
is informed and believes, Defendants have produced products and made sales in
California and this judicial district, and have delivered their products here.
7. Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(a)
because Defendants transact business in this district, infringe Patagonia’s intellec-
tual property in this district, and a substantial part of the events giving rise to the
claims asserted arose in this district.
FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS
The History of Patagonia
8. Yvon Chouinard started Patagonia in the late 1960s to design and sell
climbing clothes and other active sportswear. He adopted “PATAGONIA” to dif-
ferentiate the business from another family business that designed and manufactured
climbing gear and tools. Patagonia was chosen as the trademark to call to mind
romantic visions of glaciers tumbling into fjords, jagged windswept peaks, gauchos,
and condors. Since at least 1973, the PATAGONIA brand has appeared on a multi-
colored label inspired by a silhouette of the jagged peaks of Mt. Fitz Roy skyline
framed by a stormy sky.
9. In the more than forty years since Patagonia’s business started,
PATAGONIA has become one of the most identifiable brands in the world. Its
products sold under the PATAGONIA brand now include a range of active sport-
swear, including products designed for climbing, skiing and snowboarding, surfing,
fly fishing, and trail running, which are sold around the world. It also sells
PATAGONIA gear and backpacks, as well as food products.
10. Over the years, Patagonia has earned accolades for every aspect of its
business. Its products have won numerous awards for their technical merit, includ-
ing, most recently, Outside Magazine’s Gear of the Year in 2014 and 2015; the
National Geographic Adventure Blog “Gear of the Year” award in 2010, 2013,
Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 3 of 21 Page ID #:3
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and 2014; and the Editor’s Choice and Top Pick awards from OutdoorGearLab.
In 2015, Yvon Chouinard, Patagonia’s founder, was inducted into the American
Marketing Association Marketing Hall of Fame.
11. Patagonia also has won numerous awards and certifications for its
business initiatives, including receiving the Sustainable Business Council’s first
“Lifetime Achievement Award.” In 1996, with an increased awareness of the
dangers of pesticide use and synthetic fertilizers used in conventional cotton grow-
ing, Patagonia began exclusively using organically grown cotton and has continued
that use for nearly twenty years. It was a founding member of the Fair Labor
Association, which is an independent multi-stakeholder verification and training
organization that audits apparel factories. Additionally, since 1985 Patagonia has
pledged one percent of sales to grassroots environmental groups to preserve and
restore our natural environment, donating more than $70 million. In 2002,
Patagonia’s founder Yvon Chouinard, along with others, created a non-profit called
1% For the Planet to encourage other businesses to do the same. Today, more than
1,200 member companies have donated more than $100 million to more than 3,300
nonprofits through 1% For the Planet. In 2012, Patagonia became one of
California’s first B Corporations, ensuring Patagonia could codify into its corporate
charter consideration of its workers, community, and the environment.
The PATAGONIA Trademark
12. Patagonia owns numerous registrations for the PATAGONIA trade-
mark, and for its distinctive multi-colored logo depicting the Mt. Fitz Roy skyline
(the “Fitz Roy Design”), for a wide ranging assortment of products. Among these
are the following U.S. trademark registrations: / / / / / / / / / / / /
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Trademark Reg. No. / Reg. Date Goods
Date of First Use
PATAGONIA
1189402/ February 9, 1982
Men’s and Women’s Clothing-Namely, Sweaters, Rugby Shirts, Walking Shorts, Trousers, Jackets, Mittens, Hoods and Rainwear.
08/1974
1294523/ September 11, 1984
Men’s, Women’s and Children’s Clothing-Namely, Jackets, Pants, Vests, Gloves, Pullovers, Cardigans, Socks, Sweaters, Underwear, Shirts, Shorts, Skirts and Belts
08/1974-1981
1775623/ June 8, 1993
Luggage back packs, and all-purpose sports bags
08/1988
PATAGONIA
1811334/ December 14, 1993
Luggage, back packs, fanny packs and all-purpose sport bags, foot-wear, ski bags and ski gloves
08/1990
PATAGONIA
2260188/ July 13, 1999
Computerized on-line ordering activities in the field of clothing and acces-sories; Providing informa-tion in the field of technical clothing and accessories for use in recreational, sporting and leisure active-ties; providing information in the field of existing and evolving environmental issues
10/1995
PATAGONIA.COM
2392685/ October 10, 2000
On-line retail store and mail order services featur-ing technical clothing, footwear, and accessories; Computer services in the nature of on-line informa-tion related to the environ-ment and clothing
10/1995
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Trademark Reg. No. / Reg. Date Goods
Date of First Use
PATAGONIA
2662619/ December 17, 2002
Retail store services featur-ing clothing, footwear, luggage and a wide variety of sporting goods and accessories
06/1986
These registrations and applications for the PATAGONIA mark and logos are in full
force and effect. The registrations have become incontestable under 15 U.S.C.
§ 1065. A color image of the Fitz Roy Design follows:
In addition Patagonia owns common law marks, including a logo that uses waves in
place of the Fitz Roy skyline on a multi-colored background (the “Wave Design”):
Collectively, these marks, Patagonia’s other registered trademarks, and its common
law marks are referred to as the “PATAGONIA trademarks.” Patagonia also owns
a registered copyright (Reg. No. VA 1-801-788) for the Fitz Roy Design, and has
/ / /
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applied for a copyright registration of its copyright for the artwork used in the Wave
Design (Application No. 1-2540423641).
13. The PATAGONIA trademarks are distinctive, arbitrary, and fanciful,
entitled to the broadest scope of protection, and certain of the PATAGONIA trade-
marks are registered in ninety countries.
14. For many years prior to the events giving rise to this Complaint and
continuing to the present, Patagonia annually has spent enormous amounts of time,
money, and effort advertising and promoting the products on which its
PATAGONIA trademarks are used. PATAGONIA brand products are advertised in
print and on the Internet. In addition to advertising by Patagonia, the PATAGONIA
trademarks are also advertised and promoted and presented at point of sale by
numerous retailers. Consumers, accordingly, are exposed to the PATAGONIA
trademarks in a variety of shopping and post-sale contexts.
15. Patagonia has sold its PATAGONIA brand products all over the world,
including throughout the United States and in California. Through its promotion
and investment in its brand and extensive sales, publicity, awards, and leadership in
sustainable sourcing practices, Patagonia has acquired enormous goodwill in its
PATAGONIA trademarks. The PATAGONIA trademarks have long been famous
within the meaning of the Trademark Dilution Revision Act; the PATAGONIA
trademarks enjoy strong consumer recognition, and are recognized around the world
and throughout the United States by consumers as signifying high quality products
made by a responsible company.
Defendants’ Infringement of Patagonia’s Trademark Rights
16. Patagonia is informed and believes that, in 2013, long after the
PATAGONIA trademark became famous, Defendants started and continue to
market and sell a line of products under the brand name PATAGUCCI and to
identify their retail services with the PATAGUCCI designation. Making it clear that
the brand designation is intended to refer to Patagonia, Defendants have copied the
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font in the PATAGONIA trademark, as well as the artwork in the Fitz Roy and
Wave logo designs, and used them as part of their own logo. On information and
belief, Doe Screenprinter manufactures the products at the direction of Defendants
Mr. Smith and Mr. Tomaszewski, and the two individuals sell PATAGUCCI
products through their website, www.patagucci.clothing, and offer to deliver their
products throughout the United States. Defendants Mr. Smith and
Mr. Tomaszewski advertise and market their products through, without limitation,
an Instagram account located at instagram.com/shoppatagucci and a Twitter account
located at twitter.com/shoppatagucci. Despite their obvious copying and intent to
appropriate Patagonia’s goodwill, Defendants assert a proprietary interest in the
PATAGUCCI designations and logos by, without limitation, (a) noting in the care
label of their garments that they are “authentic” PATAGUCCI products, and
(b) alleging that other products bearing the PATAGUCCI LOGO are fake.
Examples of these claims follow.
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