Hells Angels Motorcycle Corporation v. Shipman

Filing 1

COMPLAINT for Trademark Infringement and Dilution against Dale Shipman by Hells Angels Motorcycle Corporation. Attorney Clapp, Fritz added. (Attachments: # 1 Exhibit A - F)(Clapp, Fritz)

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FRITZ CLAPP, ESQ. (Cal. Bar No. 99197)
544 Pawali Street
Kihei, Maui, HI 95673
Telephone: [phone]
Facsimile: [phone]
E-mail:
<[e-mail]>
Attorney for Plaintiff
HELLS ANGELS MOTORCYCLE
CORPORATION

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UNITED STATES DISTRICT COURT

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EASTERN DISTRICT OF CALIFORNIA

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SACRAMENTO DIVISION

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HELLS ANGELS MOTORCYCLE
CORPORATION, a Nevada corporation,
Plaintiff,

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CASE NO. _______________________

COMPLAINT FOR TRADEMARK
INFRINGEMENT AND DILUTION;
JURY DEMAND

v.
DALE SHIPMAN, an individual engaged in
business as A-1Americanflags.com,
Defendant.

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Plaintiff, HELLS ANGELS MOTORCYCLE CORPORATION, by and through its
undersigned attorney, complains as follows:

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JURISDICTION AND VENUE
1.

This action arises under the trademark laws of the United States, 15 U.S.C.

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§1151 et seq. (Lanham Act). This court has federal question jurisdiction pursuant to 15

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U.S.C. §1121(a) and 28 U.S.C. §§1331, 1338(a).

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2.

Venue is proper in this District pursuant to 28 U.S.C. §1391 because a

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substantial part of the events or omissions giving rise to the claims herein occurred in this

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District, and because the Defendant conducts business within this District. On or about
COMPLAINT FOR TRADEMARK INFRINGEMENT AND DILUTION; JURY DEMAND

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October 26, 2006, Defendant delivered to a customer located within the Sacramento

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Division of this District the goods claimed herein to be infringing of Plaintiff’s Mark.
PARTIES

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3.

Plaintiff HELLS ANGELS MOTORCYCLE CORPORATION (“HAMC”)

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is now, and at all relevant times was, a non-profit corporation organized and existing under

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the laws of the State of Nevada. Plaintiff HAMC is the owner of the trademark described

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herein by assignment from its predecessor, a California corporation of the same name.

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4.

Defendant DALE SHIPMAN (“SHIPMAN”) is now, and at all times

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mentioned was, an individual engaged in business under the fictitious name

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“A1AmericanFlags.com” located at 4512 - 13th Ave. S.E., Lacey, Washington 98503.

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Defendant SHIPMAN’s business consists of online direct sales of leather jackets, vests,

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hats and embroidered patches.
PLAINTIFF’S MARK

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5.

For over half a century, members of the Hell's Angels Motorcycle Club have

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continuously employed a design mark depicting the front view of a helmeted, horned and

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feathered skull (“the Mark”) as a collective membership mark. The Mark is used on

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patches and jewelry for the exclusive purpose of indicating active membership in the elite

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organization of motorcycle enthusiasts, and is referred to as the “front view death head.”

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6.

Plaintiff HAMC is the owner of Reg. No. 1,243,951 dated June 28, 1983 in

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the United States Patent and Trademark Office for the Mark. A recent certificate of title to

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this registration is attached hereto as Exhibit A.

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7.

Through continuous and conspicuous usage, the Mark is famous. Plaintiff

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HAMC and its predecessors in interest have exercised legitimate control over the uses of

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the Mark by the duly authorized affiliates and licensees, and have been diligent and

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generally successful in abating the use of the Mark by unauthorized third parties.

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8.

One instance in which unauthorized usage of the Mark was not immediately

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abated arose in the motion picture “The Warriors (1983)” wherein the costume vests for a

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group of characters featured a design confusingly similar to the front view death head.
COMPLAINT FOR TRADEMARK INFRINGEMENT AND DILUTION; JURY DEMAND

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HAMC was unaware of this infringing use prior to the theatrical release of the motion

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picture and was therefore unable to avoid repeated displays of the infringing costume

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design element, but it did put the producer and distributor of the motion picture

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(Paramount) on notice of its infringement claim. Within the past few years, anticipating a

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remake of the 1983 motion picture, Paramount and its parent Viacom have revised the

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infringing design element (changing the feathered skull design to a flaming serpent design)

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for the videogame adaptation of The Warriors, for action figures based on the characters of

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The Warriors, and they grant no licenses for use of the original design for any purpose.
DEFENDANT’S UNAUTHORIZED USAGE OF THE MARK

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9.

Defendant SHIPMAN fabricates and sells patches and vests bearing patches

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through his online store at the web address <a-1americanflags.com>. Among Defendant

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SHIPMAN’s goods are certain designs offered in different sizes and called by Defendant

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SHIPMAN “Warriors Patches” as shown in Exhibits B and C. Defendant SHIPMAN’s

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Warriors Patches are confusingly similar to Plaintiff HAMC’s front view death head mark.

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10.

Plaintiff HAMC has never approved of Defendant SHIPMAN’s use of the

Mark, and Defendant SHIPMAN has never sought permission for use of the Mark.
11.

Defendant SHIPMAN has expressly denied and disclaimed that he has been

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granted any right to use the design from Paramount or Viacom, by posting the following

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disclaimer on his web store:

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A-1Americanflags.com is in no way affiliated with, representing,
associated, sponsored or endorsed by ,"Paramount", "Paramount Pictures
Coorporation" or Paramount Pictures Coorporation's movie "The Warriors"
and or Trademarks, service marks, logos, and/or domain names of
"Paramount", Paramount Pictures Coorporation or Paramount Pictures
Coorporation's "The Warriors" movie. [sic]

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Contrary to this disclaimer, Defendant SHIPMAN advertises his goods as “Warriors

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Vests,” “Warriors Badges,” and “Warriors Patches” as shown on Exhibit C.

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12.

Plaintiff HAMC has demanded that Defendant SHIPMAN cease his

calculated efforts to exploit the Mark, but Defendant SHIPMAN has refused to do so.
13.

Defendant SHIPMAN was notified in writing of Plaintiff HAMC’s

COMPLAINT FOR TRADEMARK INFRINGEMENT AND DILUTION; JURY DEMAND

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objections to his fabrication and sale of patches with the design infringing the Mark, on or

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about July 17, 2006, a copy of which is attached as Exhibit D. Defendant SHIPMAN

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temporarily and partially complied, but resumed sales within a short time.

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14.

On or about September 22, 2006, Plaintiff HAMC made a further and

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specific written demand that Defendant SHIPMAN cease his infringement of the Mark

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under peril of litigation, a copy of which is attached as Exhibit E.

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15.

Defendant SHIPMAN continues to wilfully defy Plaintiff HAMC’s notices

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and warnings, by selling and delivering the infringing patches which infringe and dilute the

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Mark. On or about October 25, 2006, Defendant SHIPMAN sold and delivered to this

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District a patch as shown by the receipt attached as Exhibit F.
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Unless restrained and enjoined, Defendant SHIPMAN will continue the acts

complained of herein.

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FIRST CAUSE OF ACTION

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(Lanham Act §43(a) – 15 U.S.C. §1125(a) – Trademark Infringement)

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17.

Plaintiff incorporates by reference paragraphs 1 through 16 above.

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18.

Defendant SHIPMAN’s use of the Mark and similar designs is likely to

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cause confusion, mistake, or deception at common law and within the meaning of 15

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U.S.C. §1114, thereby infringing the Mark to Plaintiff's immediate and irreparable

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damage. The conduct of Defendant SHIPMAN continues to damage Plaintiff and unless

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enjoined will further impair the value of Plaintiff's Mark and the goodwill which Plaintiff

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has acquired in the Mark.

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SECOND CAUSE OF ACTION

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(Lanham Act §43(c) – 15 U.S.C. §1125(c) – Trademark Dilution)

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19.

Plaintiff incorporates by reference paragraphs 1 through 16 above.

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20.

Defendant SHIPMAN’s commercial use of Plaintiff's Mark has and will

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cause dilution of the Mark by “blurring.”

By his acts as herein alleged, Defendant

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SHIPMAN willfully intended to trade on Plaintiff’s reputation and to cause dilution of

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Plaintiff's famous Mark. As a consequence of Defendant SHIPMAN’s violations, Plaintiff
COMPLAINT FOR TRADEMARK INFRINGEMENT AND DILUTION; JURY DEMAND

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HAMC is entitled to injunctive and other relief as prayed.
PRAYER FOR RELIEF

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WHEREFORE, Plaintiff HAMC prays for judgment that:
A.

Defendant SHIPMAN be preliminarily and permanently enjoined from

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directly or indirectly using Plaintiff HAMC's Mark, or any design similar

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thereto, pursuant to 15 U.S.C. §1116(a);

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B.

All articles bearing Plaintiff HAMC's Mark, or any mark similar thereto, in

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Defendant SHIPMAN’s possession be seized and destroyed as the Court may

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direct;

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C.

all revenues derived from the use of Plaintiff HAMC's Mark;

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Defendant SHIPMAN be required to account to Plaintiff HAMC for any and

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Defendant SHIPMAN be required to pay to Plaintiff HAMC damages and
profits under 15 U.S.C. §1117(a);

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E.

Plaintiff HAMC be awarded treble damages pursuant to 15 U.S.C. §1117(b);

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F.

Plaintiff HAMC be awarded its reasonable attorney's fees pursuant to 15
U.S.C. §1117(a);

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G.

The costs of this action be awarded to Plaintiff HAMC; and that

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H.

Such other and further relief be granted as the court shall deem just.

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Dated: September 7, 2007
________________________________
FRITZ CLAPP
Attorney for Plaintiff HELLS ANGELS
MOTORCYCLE CORPORATION

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JURY DEMAND
Plaintiff hereby demands trial by jury of all issues triable herein.
Dated: September 7, 2007
________________________________
FRITZ CLAPP
Attorney for Plaintiff HELLS ANGELS
MOTORCYCLE CORPORATION
COMPLAINT FOR TRADEMARK INFRINGEMENT AND DILUTION; JURY DEMAND

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