Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 1 of 26 Page ID #:1
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MARTIN D. SINGER (BAR NO. 78166)
mdsinger@lavelysinger.com
DAVID B. JONELIS (BAR NO. 265235)
lmolnar@lavelysinger.com
LINDSAY D. MOLNAR (BAR NO. 275156)
lmolnar@lavelysinger.com
LAVELY & SINGER
PROFESSIONAL CORPORATION
2049 Century Park East, Suite 2400
Los Angeles, California 90067-2906
Telephone: (310) 556-3501
Facsimile: (310) 556-3615
Attorneys for Plaintiff GRUMPY CAT LIMITED
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA, SOUTHERN DIVISION
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GRUMPY CAT LIMITED, an Ohio )
Limited Liability Entity,
)
)
Plaintiff,
)
v.
)
)
GRENADE BEVERAGE LLC, a
)
California Limited Liability
)
Company; PAUL SANDFORD, an )
individual; NICK SANDFORD, an )
individual; and DOES 1-50,
)
)
Defendants.
)
)
)
)
)
)
)
)
)
______________________________ )
Case No.:
COMPLAINT FOR:
1. COPYRIGHT INFRINGEMENT;
2. TRADEMARK INFRINGEMENT
(15 U.S.C. 1114);
3. TRADEMARK INFRINGEMENT,
FALSE DESIGNATION OF
ORIGIN (15 U.S.C. 1125(A));
4. TRADEMARK DILUTION (15
U.S.C. 1125(C));
5. CYBERSQUATTING (15 U.S.C.
1125(D))
6. BREACH OF CONTRACT; AND
7. ACCOUNTING
DEMAND FOR JURY TRIAL
____________________________________________________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 2 of 26 Page ID #:2
Plaintiff GRUMPY CAT LIMITED (Plaintiff), by and through its undersigned
counsel, alleges as follows against Defendants GRENADE BEVERAGE LLC, PAUL
SANDFORD and NICK SANDFORD (collectively, Defendants):
NATURE OF THE ACTION
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1.
Ironically, while the world-famous feline Grumpy Cat and her valuable
brand are most often invoked in a tongue-and-cheek fashion, Defendants despicable
misconduct here has actually given Grumpy Cat and her owners something to be
grumpy about.
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In particular, this case arises out of the unlawful and inexplicable conduct
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of Defendants, who induced Plaintiff (the lawful and exclusive owner of the copyrights
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and trademarks in and to the valuable Grumpy Cat brand) to grant them limited
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rights to the Grumpy Cat brand, only to repeatedly abuse and infringe those rights by
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creating and exploiting unauthorized Grumpy Cat branded products and further
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failing to account to Plaintiff for the sale of the only product that was actually
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authorized to be sold by Defendants.
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3.
Through this action, Plaintiff seeks to recover the substantial
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compensatory and statutory damages to which it is entitled as a result of Defendants
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misconduct, as well as to permanently enjoin any further misconduct by Defendants.
JURISDICTION AND VENUE
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4.
This action arises under the the Lanham Act, 15 U.S.C. 1051, et seq.,
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and the United States Copyright Act, 17 U.S.C. 101, et seq. This Court has
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exclusive federal question jurisdiction over this matter pursuant to 28 U.S.C. 1331
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and 1338.
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5.
This Court has supplemental jurisdiction over Plaintiffs claims arising
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under the laws of California pursuant to 28 U.S.C. 1367(a) because these claims are
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so related to Plaintiffs claims under federal law that they form part of the same case or
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controversy and derive from a common nucleus of operative fact.
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 3 of 26 Page ID #:3
6.
Venue is proper in this District pursuant to 28 U.S.C. 1391 (b)(2)-(c)
because Defendants, and each of them, are subject to personal jurisdiction in this
District and a substantial part of the events, acts and/or omissions giving rise to the
claims herein occurred in this District.
THE PARTIES
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Plaintiff is an Ohio limited liability entity, with its principal place of
business in the County of Morrow, State of Ohio, and conducting business in the
County of Los Angeles, State of California.
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Plaintiff is informed and believes and based thereon alleges that defendant
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GRENADE BEVERAGE LLC (Grenade) is a California limited liability company,
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with its principal place of business in the County of Orange, State of California, and
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conducting business in the County of Los Angeles, State of California.
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Plaintiff is informed and believes and based thereon alleges that defendant
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PAUL SANDFORD is an individual residing in the County of Orange, State of
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California, and conducting business in the County of Los Angeles, State of California.
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Plaintiff is informed and believes and based thereon alleges that defendant
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NICK SANDFORD is an individual residing in the County of Orange, State of
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California, and conducting business in the County of Los Angeles, State of California.
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Plaintiff is informed and believes and based thereon alleges that the
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fictitiously named defendants sued herein as Does 1 through 50, inclusive, and each of
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them, were in some manner responsible or legally liable for the events, actions,
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transactions, and circumstances alleged herein. The true names and capacities of said
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fictitiously named defendants, whether individual, corporate, associate, or otherwise,
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are presently unknown to Plaintiff, and Plaintiff will seek leave of this Court to amend
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this Complaint to assert the true names and capacities of said fictitiously named
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defendants when same have become known to Plaintiff. Hereinafter all defendants,
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 4 of 26 Page ID #:4
including the Doe Defendants, will sometimes be referred to collectively as
Defendants.
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Plaintiff is informed and believes and based thereon alleges that
Defendants, and each of them, were the agents, employees, partners, joint-venturers,
co-conspirators, owners, principals and employers of the remaining Defendants, and
each of them, and are, and at all times herein mentioned were, acting within the course
and scope of that agency, partnership, employment, conspiracy, ownership or joint
venture. Plaintiff is further informed and believes and based thereon alleges that the
acts and conduct herein alleged of each such Defendant were known to, authorized by,
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and/or ratified by the other Defendants, and each of them.
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FACTS COMMON TO ALL CLAIMS
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Plaintiffs Exclusive Intellectual Property Rights In The Grumpy Cat Brand
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Grumpy Cat (a/k/a Tardar Sauce) is one of the most famous and
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recognizable felines in the world due to her perpetually grumpy expression. After a
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picture of Grumpy Cat was posted to the internet in 2012, her name and likeness
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spread like wildfire across the globe garnering worldwide media attention. Grumpy
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Cat has since appeared in numerous major television shows (including Today, Good
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Morning America, American Idol, and The Bachelorette), been featured on the front
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page of major periodicals such as The Wall Street Journal and New York Magazine,
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starred in advertisements for Cheerios and McDonalds, starred in her own Lifetime
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Television Christmas movie, authored three (3) books that debuted on the New York
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Times bestsellers list, and even has her own animatronic waxwork at Madame
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Tussauds in San Francisco. Accordingly, there is substantial consumer recognition,
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good will and monetary value in the famous Grumpy Cat brand.
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Plaintiff is the sole and exclusive owner of all relevant intellectual
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property rights in and to Grumpy Cats name, image, and likeness, specifically
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including the copyrights and trademarks forming the basis of this action. As a result of
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 5 of 26 Page ID #:5
Plaintiffs calculated handling of the Grumpy Cat brand alongside professional brand
management, over the past few years, Plaintiff and its authorized licensees have
realized millions of dollars in sales of a wide range of goods and services incorporating
the Grumpy Cat brand, including without limitation t-shirts, calendars, and plush
toys.
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Plaintiff is the sole and exclusive owner of the copyrights in and to certain
photographs and an illustration of Grumpy Cat, which are protected by U.S. Copyright
Reg. Nos. VA0001849042, VA0001849043, VA0001849044, and VA0001901628
(the Grumpy Cat Copyrights), issued by the United States Copyright Office on
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December 4, 2012 and December 18, 2013. These copyrights include the following
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photograph and illustration:
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Copyright Reg. No.
VA0001849042
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Copyright Reg. No.
VA0001901628
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Plaintiff is also the sole and exclusive owner of all federal and common
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law rights in and to the word mark GRUMPY CAT as used and registered in, inter
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alia, International Class 030 (Coffee and tea) (protected by U. S. Trademark Reg. No.
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4,527,097 issued by the United States Patent and Trademark Office (the USPTO) on
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May 6, 2014), and International Classes 021 (Coffee and Tea cups/mugs), 025
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 6 of 26 Page ID #:6
(Clothing, namely, t-shirts, shirts, long-sleeved shirts, polo shirts, sweatshirts,
hoodies), and 041 (website services) (protected by U. S. Trademark Reg. No. 4,417,
549 issued by the USPTO on October 15, 2013) (collectively, the Federal Word
Marks). Plaintiff is also the sole and exclusive owner of all federal and common law
rights in and to the image mark
as used and registered in, inter alia, International Classes 021 (Coffee and Tea
cups/mugs) and 025 (Clothing, namely, t-shirts, shirts, long-sleeved shirts, polo shirts,
sweatshirts, hoodies) (protected by U. S. Trademark Reg. Nos. 4,820,434, issued by
the the USPTO on September 29, 2015) (collectively, the Federal Design Marks).
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for the above-depicted photograph of Grumpy Cat,
Plaintiff is also the sole and exclusive owner of any and all common law
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trademark rights in and to the word mark GRUMPY CAT and the design mark
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for the above-depicted photograph of Grumpy Cat, in connection with a variety of
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products and services, including for the purpose of this action, on coffee drinks and
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non-alcoholic beverages, and t-shirts (collectively, the Common Law Grumpy Cat
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Trademarks and, along with the Federal Word Marks and the Federal Design Marks,
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referred to herein as the Grumpy Cat Trademarks).
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international trademark registrations for the Grumpy Cat brand.
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Plaintiff also has numerous
The Grumpy Cat Trademarks are distinctive, have been been continually
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used throughout the United States, as well as worldwide, and are well known to the
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trade and members of the purchasing public.
The License Agreement Between Plaintiff and Grenade
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Defendant Grenade, which on Plaintiffs information and belief is owned
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and operated solely by Defendants Nick and Paul Sandford, is a beverage
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development, manufacturing, marketing, and distribution company. Notably, while
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Grenade held itself out to Plaintiff as an upstanding and law-abiding company in order
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to induce Plaintiff to enter into the below-described license agreement, Plaintiff has
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since learned that Grenade was sued for trademark infringement by E & J Gallo
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 7 of 26 Page ID #:7
Winery for engaging in misconduct remarkably similar to that giving rise to this action
namely, the unauthorized use and exploitation of E & J Gallo Winerys valuable
intellectual property. Plaintiff is informed and believes that E & J Gallo Winery
recently obtained a judgment and permanent injunction against Grenade in that
lawsuit.
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On or around May 31, 2013, Plaintiff entered into a license agreement
with Grenade (the License Agreement), pursuant to which Plaintiff granted Grenade
certain limited rights to use Grumpy Cats copyrighted and trademarked name and
image (the Licensed Properties) in connection with the advertisement, distribution,
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offering for sale, and sale of a line of Grumpy Cat-branded coffee products. In
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exchange for the foregoing limited grant of rights, Grenade agreed to pay Plaintiff
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royalties from Grenades sale and exploitation of the Licensed Properties, as well as a
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monetary advance against those royalties.
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The mutually understood intent of the License Agreement was to allow
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Grenade to produce and distribute a line of Grumpy Cat branded iced-coffee
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beverages called Grumpy Cat Grumppuccino. The parties further understood and
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agreed, as clearly memorialized in the language of the License Agreement, that any
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additional product offerings would require further negotations and approval from
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Plaintiff.
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Of relevance here are the following material provisions from the License
Agreement:
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Pursuant to Section 4(a), all uses of the Licensed Properties
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(including any visual depictions, interpretation or adaptations thereof)
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by Grenade are subject to Plaintiffs prior approval.
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Pursuant to Section 4(b), All right, title and interest in and to all
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copyrights and trademarks in and to the Licensed Properties remain
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the exclusive property of Plaintiff. Moreover, Plaintiff is deemed to be
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 8 of 26 Page ID #:8
the exclusive owner of any and all copyright and trademark rights in
and to any derivative works created by Grenade in connection with its
use of the Licensed Properties. In other words, if Grenade creates its
own graphical and/or otherwise derivative depictions of Grumpy Cat,
Plaintiff is the owner of all copyrights and trademarks in and to those
depictions pursuant to Section 4(b).
Pursuant to Section 6(d), Grenade was required to form a California
Limited Liability Company called Grumpy Beverage LLC, which
would maintain and manage Grenades rights in and to the Licensed
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Properties, and in which Plaintiff would be granted a 10% equity
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interest.
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Pursuant to Section 6(d), Grenade and Plaintiff were required to
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negotiate in good faith the terms of [Grumpy Beverage LLC]s
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Operating Agreement, which terms shall not conflict with the terms [of
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the License Agreement].
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Pursuant to Section 7(a), Grenade was required to provide detailed
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monthly accountings to Plaintiff reflecting Grenades sale of the
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Product and/or exploitation of the Licensed Properties.
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Defendants Wrongful Conduct
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In late 2015, Plaintiff learned of Defendants intent to create and exploit a
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line of Grumpy Cat branded roasted coffee ground products, which would be
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separate and apart from the Grumpy Cat Grumppuccino product line contemplated
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by the License Agreement.
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Although, as required by the License Agreement, Defendants sought
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Plaintiffs approval of use of the Licensed Properties in connection with the proposed
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roasted coffee ground product, Plaintiff never approved such use. Rather, Defendants
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were repeatedly told by Plaintiff (both in writing and verbally) that the Licensed
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 9 of 26 Page ID #:9
Properties could not be used in connection with a roasted coffee ground product,
including on the following occasions:
By email exchange on October 21, 2015, in which Paul Sandford was
told: Approval is still required. Hold off until you hear back from
us.
Verbally, during a November 2, 2015 conference call between Paul
Sandford, on the one hand, and two of Plaintiffs attorneys and
Plaintiffs brand manager, on the other hand.
By email exchange on November 2, 2015, in which Paul Sandford was
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told: Per our conversation of today, our client does not approve
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this. Do not proceed.
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By email exchange on November 24, 2015, in which Paul Sandford
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was told You are not authorized to proceed with the ground coffee
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product, and your posting of these products for sale will constitute a
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clear breach of the subject licensing agreementDo NOT proceed
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with the posting of the ground coffee products.
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By email exchange on November 24, 2015, in which Paul Sandford
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was told: You are not authorized to proceed with a Grumpy Line
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line of ground coffee products.
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Despite Plaintiffs repeated and clear refusal to allow and approve
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Defendants use of the Licensed Properties in connection with the proposed roasted
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coffee ground product, Defendants have nevertheless proceeded to advertise, publicly
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disseminate, offer for sale and sell an unauthorized line of Grumpy Cat roasted coffee
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ground products, marketed as Grumpy Cat Roasted Coffee (the Infringing
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Product).
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Not only was the Infringing Product never approved by Plaintiff under the
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License Agreement, but the packaging and marketing materials for the Infringing
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COMPLAINT
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Product, as depicted in the example below, primarily and exclusively incorporate
Plaintiffs exclusive intellectual property, including the Grumpy Cat Copyrights and
the Grumpy Cat Trademarks a use which Plaintiff has never approved.
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Without authorization, Defendants (both Nick Sandford and Paul
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Sandford in their individual capacity as well as on behalf of Grenade) have extensively
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and repeatedly exploited the Grumpy Cat Copyrights and the Grumpy Cat Trademarks,
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including confusingly similar derivative depictions thereof, in connection with the sale
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and advertisement of the Infringing Product, including without limitation on widely
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popular social media websites such as Twitter, Facebook, and Instagram. For instance,
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Plaintiff is informed and believes that Nick Sandford and Paul Sandford caused the
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following unauthorized advertisement to be posted on Instagram on or around
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December 4, 2015:
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COMPLAINT
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The www.drinkgrumpycat.com website, which Plaintiff is informed and
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believes is owned and operated by Defendants, and through which Defendants are
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currently selling and distributing the Infringing Product direct to consumers, is also
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replete with unauthorized uses of the Grumpy Cat Copyrights and Grumpy Cat
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Trademarks.
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continue to sell Grumppuccinno t-shirts which blatantly infringe on the Grumpy Cat
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Copyrights and Grumpy Cat Trademarks
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Among other unauthorized uses, Defendants have been selling and
Without Plaintiffs authorization, Defendants have also obtained the rights
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and ownership to the internet domain www.grumpycat.com (the Infringing Website),
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and have been operating the Infringing Website for the purpose of furthering their
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unauthorized use and exploitation of the Grumpy Cat Copyrights and Grumpy Cat
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Trademarks. Despite repeated demands from Plaintiff to transfer and turn over the
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rights to the Infringing Website, Defendants have refused.
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 12 of 26 Page ID #:12
30.
Separate
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apart
from
Defendants
unauthorized
use
and
misappropriation of the Grumpy Cat Copyrights and Grumpy Cat Trademarks, in
connection with the Infringing Product (which also constitutes a breach by Grenade of
the express approval requirements set forth in the License Agreement), Grenade has
also breached its contractual obligations to Plaintiff under the License Agreement by,
inter alia:
a.
Failing to provide Plaintiff with detailed monthly accountings,
much less any accountings, despite repeated requests from Plaintiff.
Even after Plaintiff demanded a formal audit (as allowed by the
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License Agreement), Grenade only provided an incomplete and
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questionable set of purported sales documents.
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b.
Failing to pay Plaintiff the royalty payments to which Plaintiff is
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informed and believes it is entitled based upon existing sales of the
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Grumpy Cat Grumppuccino product line.
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c.
Selling Grumppuccinno t-shirts that exceed the limited scope of
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the iced-coffee product line authorized by the License Agreement,
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and then failing to account to Plaintiff for these sales.
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d.
Failing to form a California limited liability company called
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Grumpy Beverage LLC pursuant to Section 6(d) of the License
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Agreement, and instead forming a Texas limited liability company
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with the same name.
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e.
Failing to negotiate in good faith the terms of the Operating
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Agreement for Grumpy Beverage LLC with Plaintiff, as required
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by Section 6(d) of the License Agreement. In fact, despite repeated
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requests, Plaintiff has not even been provided with a copy of the
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Operating Agreement. As a result, Plaintiff has been kept
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completely in the dark regarding the operations of the very
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 13 of 26 Page ID #:13
company that was purportedly formed to maintain and manage
Grenades use of the Licensed Property, and in which Plaintiff is
purportedly a 10% owner.
31.
As a result of Defendants willful and intentional disregard of Plaintiffs
intellectual property and contractual rights, Plaintiff has, inter alia, (1) been deprived
of substantial monies to which it would otherwise be entitled in connection with
Defendants commercial use of the Grumpy Cat copyrights and trademarks, (2) been
denied and deprived of the exclusive and valuable right to control and approve the use
and exploitation of the Grumpy Cat copyrights and trademarks.
Accordingly,
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because Plaintiffs repeated attempts to notify Defendants of their misconduct and
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obtain an amicable resolution have been unsuccessful, Plaintiff has now been forced to
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seek legal recourse through this action.
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FIRST CLAIM FOR RELIEF
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(Copyright Infringement, 17 U.S.C. 101 et seq.)
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(Against All Defendants)
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32.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth herein.
33.
As alleged, Plaintiff is the exclusive owner of the Grumpy Cat
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Copyrights, and has registered its copyright interests therein with the United States
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Copyright Office.
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34.
By engaging in the conduct described herein, including by reproducing,
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and/or otherwise exploiting the Grumpy Cat Copyrights in connection with the
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Infringing Product and by advertising, distributing, and/or selling the Infringing
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Product to unwary consumers both in the State of California and throughout the United
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States, Defendants have infringed Plaintiffs exclusive rights under the Copyright Act
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in and to the Grumpy Cat Copyrights.
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 14 of 26 Page ID #:14
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35.
At no time has Plaintiff authorized or consented to Defendants infringing
conduct described herein.
36.
Defendants infringement of Plaintiffs rights in and to the Grumpy Cat
Copyrights has been and continues to be intentional, willful, and with full knowledge
of Plaintiffs rights.
37.
Each reproduction, advertisement, distribution, dissemination, and/or
other unauthorized exploitation of the Grumpy Cat Copyrights by Defendants
constitutes a separate and distinct and continuing act of infringement.
38.
As a direct and proximate result of Defendants infringement of Plaintiffs
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copyrights and exclusive rights under the Copyright Act, Plaintiff is entitled to
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damages as well as Defendants profits pursuant to 17 U.S.C. 504(b) for each
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infringement. Alternatively, Plaintiff is entitled to the maximum statutory damages,
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pursuant to 17 U.S.C. 504(c), in the amount of One Hundred Fifty Thousand Dollars
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($150,000) for each of the individual infringements forming the basis of this action, or
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for such other amount as may be proper pursuant to 17 U.S.C. 504(c).
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39.
Plaintiff is further entitled to its attorneys fees and full costs pursuant to
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17 U.S.C. 505.
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40.
Defendants conduct threatens to cause, is causing, and unless enjoined
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and restrained by this Court will continue to cause Plaintiff great and irreparable injury
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that cannot fully be compensated for or measured in monetary damages alone.
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Plaintiff has no adequate remedy at law. Pursuant to 17 U.S.C. 502, Plaintiff is
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entitled to preliminary and permanent injunction prohibiting further infringements of
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its exclusive copyrights.
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 15 of 26 Page ID #:15
SECOND CLAIM FOR RELIEF
(Trademark Infringement, 15 U.S.C. 1114)
(Against All Defendants)
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41.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth herein.
42.
As alleged, Plaintiff is the exclusive owner of the Federal Word Marks
and the Federal Design Marks, which marks are registered with the USPTO.
43.
Through their above-described actions, Defendants have used and
continue to use in commerce a reproduction or copy of the Federal Word Marks and
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Federal Design Marks and/or colorable imitations thereof that are confusingly similar
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to those marks in connection with the sale, offering for sale, distribution, or advertising
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of goods, including the Infringing Product and the Grumppuccinno t-shirts, which
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use is likely to cause consumer confusion, or to cause mistake, or to deceive.
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44.
The aforesaid conduct of Defendants is without the consent or permission
of Plaintiff.
45.
As a result of Defendants infringement, Plaintiff has suffered and
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continues to suffer monetary damages, and Defendants have unlawfully profited, in an
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amount which cannot be accurately computed at this time but will be proven at trial.
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46.
Plaintiff is also entitled to the disgorgement of Defendants profits under
15 U.S.C. 1117(a).
47.
Plaintiff is further entitled to recover treble damages pursuant to 15
U.S.C. 1117(a).
48.
Plaintiff is further entitled to injunctive relief because the conduct of
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Defendants has caused and will continue to cause Plaintiff irreparable harm for which
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there is no adequate remedy at law.
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49.
This case qualifies as an exceptional case within the meaning of 15
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U.S.C. 1117(a) in that Defendants actions have been malicious, fraudulent,
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COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 16 of 26 Page ID #:16
deliberate, willful, and taken in bad faith with full knowledge and in conscious
disregard of Plaintiffs rights. As such, Plaintiff is entitled to recover its attorneys
fees pursuant to 15 U.S.C. 1117(a).
THIRD CLAIM FOR RELIEF
(Trademark Infringement and False Designation of Origin, 15 U.S.C. 1125(a))
(Against All Defendants)
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50.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth herein.
51.
Plaintiffs Grumpy Cat Trademarks have tremendous good will, are
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distinctive, have been used throughout the United States and worldwide, and are well
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known to the trade and members of the purchasing public. The public associates and
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identifies the Grumpy Cat Trademarks with Plaintiff.
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52.
Without Plaintiffs authorization or consent, Defendants have used the
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Grumpy Cat Trademarks to advertise and sell, without limitation, the Infringing
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Product.
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53.
Defendants distribution, advertisement, sale, offer for sale, and/or other
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sale of the Infringing Product bearing Plaintiffs Grumpy Cat Trademarks constitutes
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false designation of origin or sponsorship of said product and tends falsely to represent
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that the product originates from Plaintiff or has been sponsored, approved, or licensed
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by Plaintiff or is in some way affiliated or connected with Plaintiff. Such conduct of
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Defendants is likely to confuse, mislead, and deceive Defendants customers,
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purchasers, and members of the public as to the origin of the the Infringing Product or
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cause said persons to believe that the Infringing Product and/or Defendants infringing
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conduct have been sponsored, approved, authorized, or licensed by Plaintiff or are in
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some way affiliated or connected with Plaintiff, all in violation of 15 U.S.C. 1125(a).
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_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 17 of 26 Page ID #:17
54.
Defendants actions were done willfully with full knowledge of the falsity
of such designations of origin and false descriptions or representations, and with the
express intent to cause confusion, and to mislead and deceive the purchasing public.
55.
This case qualifies as an exceptional case within the meaning of 15
U.S.C. 1117(a) in that Defendants actions have been malicious, fraudulent,
deliberate, willful, and taken in bad faith with full knowledge and in conscious
disregard of Plaintiffs rights. As such, Plaintiff is entitled to recover its attorneys fees
pursuant to 15 U.S.C. 1117(a).
9
10
11
12
13
56.
Plaintiff is also entitled to the disgorgement of Defendants profits
pursuant to 15 U.S.C. 1117(a).
57.
Plaintiff is further entitled to recover treble damages pursuant to 15
U.S.C. 1117(a).
58.
Plaintiff has no adequate remedy at law. Plaintiff is entitled to injunctive
14
relief because the conduct of Defendants described above, has caused and, if not
15
enjoined, will continue to cause irreparable damage to the rights of Plaintiff in its
16
trademarks, and to the business, reputation, and goodwill of Plaintiff.
17
18
59.
Plaintiff has been damaged by, and Defendants have profited from,
Defendants wrongful conduct in an amount to be proven at trial.
19
FOURTH CLAIM FOR RELIEF
20
(Trademark Dilution, 15 U.S.C. 1125(c))
21
(Against All Defendants)
22
23
24
60.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth herein.
61.
The Grumpy Cat Trademarks are each distinctive and famous within the
25
meaning of Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c), and were
26
distinctive and famous prior to the date of Defendants conduct alleged herein.
27
28
16
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 18 of 26 Page ID #:18
62.
Defendants conduct in connection with the Infringing Product is likely to
dilute and is diluting the distinctive quality of the famous Grumpy Cat Trademarks, in
that Defendants conduct is likely to create and has created an association between the
Infringing Product and the Grumpy Cat Trademarks, which impairs the distinctiveness
of those famous marks and lessens the capacity of those famous marks to identify and
distinguish products marketed and sold by Plaintiff and/or its authorized licensees
under those marks.
63.
On information and belief, Defendants acts of trademark dilution have
been done willfully and deliberately and Defendants have profited and been unjustly
10
enriched by sales that Defendants would not otherwise have made but for their
11
unlawful conduct. As such, Plaintiff is entitled to the disgorgement of Defendants
12
profits under 15 U.S.C. 1117(a).
13
14
15
64.
Plaintiff is further entitled to recover treble damages pursuant to 15
U.S.C. 1117(a).
65.
Plaintiff has no adequate remedy at law. Plaintiff is entitled to injunctive
16
relief because the conduct of Defendants described above has caused and, if not
17
enjoined, will continue to cause irreparable damage to the rights of Plaintiff in its
18
trademarks, and to the business, reputation, and goodwill of Plaintiff.
19
20
21
66.
Plaintiff has been damaged by, and Defendants have profited from,
Defendants wrongful conduct in an amount to be proven at trial.
67.
This case qualifies as an exceptional case within the meaning of 15
22
U.S.C. 1117(a) in that Defendants actions have been malicious, fraudulent,
23
deliberate, willful, and taken in bad faith with full knowledge and in conscious
24
disregard of Plaintiffs rights. As such, Plaintiff is entitled to recover its attorneys fees
25
pursuant to 15 U.S.C. 1117(a).
26
27
28
17
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 19 of 26 Page ID #:19
FIFTH CLAIM FOR RELIEF
(Cybersquatting, 15 U.S.C. 1125(d))
(Against All Defendants)
4
5
6
68.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth
69.
As owners, registrants, and/or operators of the Infringing Website, which
has a domain name - www.grumpycat.com (the Domain Name) - comprised entirely
of the Grumpy Cat Trademarks, Defendants have engaged in a false designation of
origin and/or had a bad-faith intent to profit and obtain other benefits from the
10
registration, trafficking and/or use of the Domain Name, pursuant to the Anti-
11
Cybersquatting Consumer Protection Act of 1999, 15 U.S.C. 1125(d) (hereinafter the
12
Anti-Cybersquatting Act).
13
70.
The Grumpy Cat Trademarks are and have been continuously used in
14
commerce to identify Plaintiffs unique brand, business and products associated with
15
the mark.
16
71.
The Grumpy Cat Trademarks, as used and incorporated by Defendants in
17
the Domain Name, were distinctive and famous, and were used by Plaintiff in
18
commerce prior to and at the time the Domain Name was registered and/or otherwise
19
obtained by Defendants, and at all other times relevant hereto.
20
72.
The Defendants bad-faith intent is to use the Domain Name to direct and
21
divert consumers to the Infringing Website, thus confusing consumers into believing
22
that Plaintiff authorizes, sponsors or somehow is affiliated with Defendants
23
unauthorized use of the Grumpy Cat Trademarks, which is not the case. Plaintiff is
24
informed and believes and based thereon alleges that Defendants, and each of them,
25
are trading on Plaintiffs good reputation and recognizable trademarks for a
26
commercial purpose via the Infringing Website and Domain Name, thus converting the
27
potential economic value in the Grumpy Cat Trademarks to their own commercial
28
18
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 20 of 26 Page ID #:20
advantage or in an effort to harm Plaintiff. Defendants registration and use of the
Infringing Website and Domain Name also dilutes the distinctiveness of the Grumpy
Cat Trademarks.
73.
Plaintiff is informed and believes and based thereon alleges that
Defendants, and each of them, have had, and continue to have, a bad faith intent to
profit from the Domain Name. Specifically, Defendants registered and/or purchased
the Domain Name without the prior knowledge, permission or consent of Plaintiff, and
have undertaken efforts to obtain a profit and other benefits from exploitation and use
of the Domain Name and Infringing Website, even after Plaintiff demanded that
10
Defendants discontinue the use of the Domain Name incorporating Plaintiffs Grumpy
11
Cat Trademarks. Such actions constitute a violation of the Anti-Cybersquatting Act.
12
74.
Plaintiff is therefore entitled to a judgment from this Court compelling
13
Defendants, and each of them, to transfer all ownership in the Domain Name to
14
Plaintiff pursuant to 15 U.S.C. 1125(d)(1)(c).
15
75.
Plaintiff is further entitled to a Preliminary and Permanent Injunction
16
enjoining Defendants, and each of them, and their agents and employees and
17
representative, from any use of the Domain Name, or any other variations thereof,
18
pursuant to 15 U.S.C. 1116(a).
19
76.
Plaintiff is further entitled to a judgment from this Court awarding
20
Plaintiff all actual damages proximately caused by Defendants, and each of them, or,
21
in the alternative, statutory damages in the amount of $100,000, pursuant to 15 U.S.C.
22
1117 (a) and (d).
23
77.
Plaintiff is further entitled to a judgment from this Court awarding it
24
recovery of all costs of the action, including an award of reimbursement of reasonable
25
attorneys fees, pursuant to 15 U.S.C. 1117 (a)(3).
26
27
28
19
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 21 of 26 Page ID #:21
SIXTH CLAIM FOR RELIEF
(Breach of Contract)
(Against Grenade)
4
5
6
7
8
78.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth herein.
79.
As alleged, Plaintiff and Grenade entered into the written License
Agreement.
80.
In addition to the express provisions of the License Agreement set forth
above, an implied covenant of good faith and fair dealing also existed which precluded
10
Grenade from doing anything that would injure Plaintiffs right to receive the benefits
11
of the License Agreement.
12
81.
Plaintiff has performed the obligations, promises and covenants required
13
of it under the License Agreement, except to the extent that such performance has been
14
prevented or excused by the acts or omissions of Grenade.
15
16
17
82.
Grenade has breached his obligations under the License Agreement by the
conduct set forth in Paragraphs 21-30.
83.
To the extent any of Grenades above-described conduct did not constitute
18
a breach of the express provisions of the License Agreement, it nevertheless
19
constituted a breach of the implied covenant of good faith and fair dealing.
20
84.
As an actual and proximate result of Grenades express and/or implied
21
breaches of the License Agreement, Plaintiff has suffered and incurred, and will
22
continue to suffer and incur, substantial damages, monetary harm and injury in an
23
amount to be proven at trial.
24
25
85.
Pursuant to Section 14(b) of the License Agreement, Plaintiff is also
entitled to the recovery of its attorneys fees and costs.
26
27
28
20
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 22 of 26 Page ID #:22
SEVENTH CLAIM FOR RELIEF
(Accounting)
(Against All Defendants)
4
5
6
86.
Plaintiff incorporates by reference each and every allegation contained in
Paragraphs 1 through 31, inclusive, of this Complaint as if fully set forth herein.
87.
As alleged, there are substantial monies due and owing to Plaintiff under
the License Agreement, and Plaintiff is further owed monies stemming from
Defendants unauthorized use and exploitation of the Grumpy Cat Copyrights and
Grumpy Cat Trademarks.
10
88.
Defendants are exclusively in control over the financial information
11
necessary to ascertain the exact amounts owed to Plaintiff, and Defendants have
12
refused to account to Plaintiff for these amounts.
13
89.
Accordingly, to fully ascertain the complete sum that is currently owed to
14
Plaintiff by Defendants, Plaintiff demands the right to conduct a full and accurate
15
accounting of Defendants relevant books and records.
16
PRAYER FOR RELIEF
17
18
19
20
WHEREFORE, Plaintiff demands relief and judgment against Defendants,
jointly and severally, as follows:
1.
That Defendants, their agents, servants, employees, representatives,
21
successors, and assigns, and all persons, firms, or corporations in active concert or
22
participation with Defendants, be preliminarily and permanently enjoined from:
23
24
a. distributing, advertising, offering for sale, or selling the Infringing
Product;
25
b. directly or indirectly infringing and/or contributing to the infringement
26
of any of the Grumpy Cat Copyrights and the Grumpy Cat Trademarks
27
in any manner, including generally, but not limited to manufacturing,
28
21
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 23 of 26 Page ID #:23
distributing, advertising, selling, and/or offering for sale any
merchandise, including the Infringing Product, which infringe the
Grumpy Cat Copyrights and Grumpy Cat Trademarks, and
specifically:
i. manufacturing, advertising, distributing, selling, and/or offering
for sale said products or any other unauthorized items, which
picture, reproduce, or utilize the likenesses of or which copy or
bear a substantial similarity to the Grumpy Cat Copyrights and
Grumpy Cat Trademarks; or
10
ii. manufacturing, advertising, distributing, selling, or offering for
11
sale or in connection thereto any unauthorized promotional
12
materials, which picture, reproduce, or utilize the likenesses of, or
13
which bear substantial similarity to Grumpy Cat Copyrights and
14
Grumpy Cat Trademarks; or
15
iii. engaging in any conduct and/or contributing to any conduct that
16
tends falsely to represent that, or is likely to confuse, mislead, or
17
deceive purchasers, Defendants customers, and/or members of
18
the public to believe that the actions of Defendants, the products
19
sold by Defendants, or Defendants themselves are connected with
20
Plaintiff, are sponsored, approved, or licensed by Plaintiff, or are
21
in some way connected or affiliated with Plaintiff (other than as
22
authorized by the License Agreement);
23
iv. affixing, applying, annexing and using in connection with the
24
manufacture, distribution, advertisement, sale, and/or offer for
25
sale or other use of any goods or services, a false description or
26
representation, including words or other symbols, tending to
27
28
22
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 24 of 26 Page ID #:24
falsely describe or represent such goods as being those of
Plaintiff; and
c. otherwise competing unfairly with Plaintiff in any manner;
3
4
2.
That Plaintiff be awarded damages
for
Defendants copyright
infringement in the amount of: (i) Defendants profits derived from their unlawful
infringement of the Grumpy Cat Copyrights; or (ii) statutory damages for each act of
infringement in an amount provided by law, as set forth in 17 U.S.C. 504, at
Plaintiffs election before the entry of a final judgment;
3.
That Plaintiff be awarded damages and Defendants be ordered to account
10
for and pay over to Plaintiff all profits realized by Defendants by reason of
11
Defendants unlawful acts herein alleged, and that these damages and profits be
12
increased as provided by law;
13
4.
That this case be deemed an exceptional case pursuant to 15 U.S.C.
14
1117, because of the willful and deliberate nature of Defendants act of trademark and
15
infringement, trademark dilution, and false designation of origin;
16
5.
17
U.S.C. 505;
18
6.
19
That Plaintiff recover reasonable attorneys fees in accordance with 17
That Plaintiff recover reasonable attorneys fees and costs in accordance
with 15 U.S.C. 1117;
20
7.
That Plaintiff recover treble damages pursuant to 15 U.S.C. 1117(a);
21
8.
That Defendants be ordered to transfer all ownership in the Domain Name
22
23
to Plaintiff, pursuant to the Anti-Cybersquatting Act, 15 U.S.C. 1125(d)(1)(C);
9.
That Defendants, their agents, servants, employees, representatives,
24
successors, and assigns, and all persons, firms, or corporations in active concert or
25
participation with Defendants, be immediately and permanently enjoined from any
26
use of the Domain Name and any other variations thereof, pursuant to the Anti-
27
Cybersquatting Act, 15 U.S.C. 1116(a);
28
23
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 25 of 26 Page ID #:25
10.
That Plaintiff recovers its actual damages proximately caused by the
Defendants unlawful use of the Domain Name, or, in the alternative, statutory
damages of $100,000, pursuant to the Anti-Cybersquatting Act, 15 U.S.C. 1117 (a)
and (d);
11.
That Plaintiff recover its costs of the action, including an award of
reimbursement of reasonable attorneys fees, pursuant to the Anti-Cybersquatting Act,
15 U.S.C. 1117 (a)(3).
8
9
10
11
12
12.
That Plaintiff be awarded damages stemming from Grenades breach of
the License Agreement in an amount subject to proof at trial;
13.
That Plaintiff recover attorneys fees and costs pursuant to Section 14(b)
of the License Agreement;
14.
That Plaintiff be granted the right to conduct a full and accurate
13
accounting of Defendants relevant books and records in order to determine the full
14
sum owed by Defendants to Plaintiff on account of Defendants misconduct;
15
15.
That Defendants, within thirty days after the service of the judgment
16
herein, be required to file with this Court and serve upon Plaintiffs attorneys, a
17
written report under oath setting forth in detail the manner in which they have
18
complied with the judgment;
19
16.
That Plaintiff be awarded pre-judgment and post-judgment interest; and
20
17.
That the Court grant Plaintiff such other and further relief as it deems just
21
22
23
24
25
26
27
28
and equitable to make Plaintiff whole for the damage caused by Defendants.
Dated: December 11, 2015
LAVELY & SINGER
PROFESSIONAL CORPORATION
MARTIN D. SINGER
DAVID B. JONELIS
LINDSAY D. MOLNAR
By: ___/s/ David B. Jonelis_____
DAVID B. JONELIS
Attorneys for Plaintiff GRUMPY CAT
LIMITED
24
_____________________________________________________________________
COMPLAINT
Case 8:15-cv-02063 Document 1 Filed 12/11/15 Page 26 of 26 Page ID #:26
JURY DEMAND
Plaintiff GRUMPY CAT LIMITED respectfully requests a jury trial on all
triable issues set forth in this Complaint.
Dated: December 11, 2015
5
6
LAVELY & SINGER
PROFESSIONAL CORPORATION
MARTIN D. SINGER
DAVID B. JONELIS
LINDSAY D. MOLNAR
7
8
9
10
By: ___/s/ David B. Jonelis_____
DAVID B. JONELIS
Attorneys for Plaintiff GRUMPY CAT
LIMITED
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
25
_____________________________________________________________________
COMPLAINT
