ViaSat, Inc. v. Pearl Networks, Inc. et al

Filing 1

COMPLAINT for Service Mark Infringement; False Designation of Origin; Unfair Competition and False Advertising against All Defendants by ViaSat, Inc.. Attorney Fitzgerald, Kenneth M. added. (Attachments: # 1 Civil Cover Sheet, # 2 Exhibit A, # 3 Exhibit B, # 4 Exhibit C)(Fitzgerald, Kenneth)

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CHAPIN FITZGERALD SULLIVAN & BOTTINI LLP
Kenneth M. Fitzgerald, Esq. (Bar No. 142505)
[e-mail]
Jill M. Sullivan, Esq. (Bar No: 185757)
[e-mail]
Jennifer M. Chapman, Esq. (Bar No. 253065)
[e-mail]
550 West C Street, Suite 2000
San Diego, California 92101
Telephone: [phone]
Facsimile: [phone]
Attorneys for Plaintiff
VIASAT, INC.

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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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VIASAT, INC.,

Case No.

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Plaintiff,

COMPLAINT FOR SERVICE
MARK INFRINGEMENT; FALSE
DESIGNATION OF ORIGIN;
UNFAIR COMPETITION AND
FALSE ADVERTISING

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v.

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PEARL NETWORKS, INC., YONDER
WIRELESS OF CALIFORNIA, LLC,
20 YONDER BROADBAND OF
21 CALIFORNIA – YUBA, LLC,
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Defendants.

(JURY TRIAL DEMANDED)

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Plaintiff ViaSat, Inc., for its complaint against defendants, alleges as follows:
JURISDICTION AND VENUE

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This Court has subject matter jurisdiction over plaintiff’s claims by

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virtue of 15 U.S.C. § 1121(a) and 28 U.S.C § 1338, in that plaintiff’s first, second,

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and third claims for relief arise under federal law, specifically the Lanham Act, 15

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U.S.C. §§ 1114 and 1125. Count 4 is substantial and related claims arising from

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the same transaction and occurrence complained of in counts 1 through 3, which

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involve a common nucleus of operative facts, thereby giving this Court

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supplemental jurisdiction over this California law claim under 28 U.S.C. §§

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1338(b) and 1367(a).
2.

This Court has personal jurisdiction over defendant Pearl Networks,

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Inc., (“Pearl Networks”) because it is registered to conduct business in California,

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and because it presently, and at all times relevant to this action, has conducted

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substantial continuous commercial activities in California.

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3.

This Court has personal jurisdiction over defendants Yonder Wireless

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of California, LLC, and Yonder Broadband of California—Yuba, LLC, because

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they are registered to conduct business in California, and because they presently,

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and at all times relevant to this action, have conducted substantial continuous

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commercial activities in California.

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4.

Venue in this district is proper under 28 U.S.C. § 1391 and 28 U.S.C.

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§ 1400(a), in that a substantial part of the events giving rise to this action occurred

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in this district and in this division, and confusion of purchasers is likely to occur in

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this district, and in this division, because defendants market and sell infringing

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services in this district and in this division. Moreover, on information and belief,

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defendants own fixed assets in this district and division that they use to sell and

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distribute infringing services in this district and division.

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NATURE OF THE ACTION

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This is an action arising under the Lanham Act, 15 U.S.C. § 1051, et

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seq., as amended, for service mark infringement, false designation of origin, and

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related claims of unfair competition and false advertising.
PARTIES

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Plaintiff ViaSat, Inc. (“ViaSat”) is a California corporation with its

principal place of business in Carlsbad, California.
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Defendant Pearl Networks, Inc. is a Nevada corporation that is

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registered to do business in California. On information and belief, Pearl Networks

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conducts business in the Eastern District of California, including but not limited to

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rural areas in the vicinity of Roseville, California and Yuba, California. On

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information and belief, Pearl Networks provides broadband and wireless internet

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services in rural California, through its direct conduct and through the conduct of

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its two operating companies, which are registered to do business in California:

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Yonder Wireless of California, LLC, and Yonder Broadband of California—Yuba,

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LLC.

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Yonder Wireless of California, LLC (“Yonder Wireless”) purports to

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be a Nevada limited liability company, and is registered to do business in

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California. Even though Yonder Wireless purports to be a Nevada limited liability

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company, the entity name did not appear in the results of an online search of

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Nevada’s Business Entity Search (http://nvsos.gov/sosentitysearch/) conducted on

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November 14, 2011. On information and belief, Yonder Wireless is an operating

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company of Pearl Networks.

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On information and belief, Yonder Broadband of California—Yuba,

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LLC (“Yonder Broadband”) purports to be an Arizona limited liability company

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that is registered to do business in California. Even though Yonder Broadband

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purports to be an Arizona limited liability company, the entity name did not appear

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in the results of an online search of Arizona’s Corporation List
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(http://starpas.azcc.gov/scripts/cgiip.exe/WService=wsbroker1/connect.p?app=nam

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es-report.p) conducted on November 14, 2011. On information and belief, Yonder

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Broadband is an operating company of Pearl Networks.
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Plaintiff is informed and believes, and on that basis alleges, that in

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doing the acts alleged herein, defendants were acting as the agents, servants,

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representatives, and/or employees of each other, and that defendants were acting

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within the scope of their authority as such agents, servants, and/or employees with

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the permission, knowledge, consent, and ratification of their principals.
FACTS

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A.

ViaSat’s YONDER® mobile high-speed internet service
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Plaintiff ViaSat is a leader in developing and providing innovative

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satellite and other communications services. One of ViaSat’s services is its

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YONDER® mobile high-speed internet service, a wireless broadband internet

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subscription service, which enables wireless internet access on business aircraft,

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commercial airliners, trains, helicopters and maritime vessels.

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Since 2008, ViaSat has continuously used YONDER® as a service

mark for its mobile high-speed internet service.
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In addition to its common law service mark rights, ViaSat owns two

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federally registered service marks, registered in the United States Trademark

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Office on the Principal Register (U.S. Registration Nos. 3,739,881 and 3,978,158)

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for the YONDER and stylized YONDER service marks. Registration No.

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3,739,881, for the YONDER service mark, was issued on January 19, 2010, the

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application filing date was June 19, 2009, and notes the first use and first use in

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commerce as October 3, 2008. Registration No. 3,978,158, for the YONDER with

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a stylized design and stylized “O” and “E” was issued on June 14, 2011, the

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application filing date was November 12, 2010, and the service-marked content

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was first in use and first in use in commerce on October 3, 2008. Copies of the

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certificates of registration are attached hereto as Exhibit A, and are hereby

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incorporated by reference.
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ViaSat also owns various foreign registrations for the YONDER

service marks.
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ViaSat has spent considerable time, effort, and money promoting its

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YONDER mobile broadband service through its service marks, and in its

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developing customer recognition and goodwill in the service marks worldwide.
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Plaintiff has exclusively used the YONDER® service marks described

above to identify its mobile high-speed wireless internet service since October

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2008. As the exclusive owner of the service marks described above, plaintiff has

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the right to enforce its exclusive rights in these marks, and to sue others for

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infringing these marks.
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Plaintiff has expended substantial money and effort advertising and

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promoting its YONDER® brand name through the YONDER® word mark, and the

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stylized YONDER® word mark. As a result of these promotional and advertising

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efforts, the public has come to associate the YONDER® word mark and the

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stylized YONDER® word mark with the high quality high-speed mobile broadband

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service offered by ViaSat.

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Defendants’ Unlawful Conduct
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Plaintiff is informed and believes that defendants are advertising and

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operating businesses called Yonder Media, Yonder Wireless, and Yonder

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Broadband—names that infringe on plaintiff’s service marks. In July 2009, Pearl

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Networks changed its name to Yonder Media, and began using the YONDER

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MEDIA, YONDER WIRELESS, and YONDER BROADBAND service marks in

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connection with wireless and broadband services it offers in California and other

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states.

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Plaintiff is informed and believes that defendants are advertising and

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operating a business called Yonder Wireless of California, LLC, a name that

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infringes on plaintiff’s service marks.

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Plaintiff is informed and believes that defendants are operating a

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business called Yonder Broadband of California—Yuba, LLC, a name that

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infringes on plaintiff’s service marks.

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Defendants are each involved in the advertising, marketing,

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distribution, and sale of internet services under the names “Yonder Wireless” and

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“Yonder Media.”

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The services displayed, distributed, and sold by defendants are not

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genuine YONDER® internet services. The internet services advertised, displayed,

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distributed, and sold by defendants are not offered by plaintiff.

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The internet services advertised, marketed, distributed, and sold by

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defendants are similar enough to genuine YONDER® internet services to lead to

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likely confusion as to the source of these services. Attached as Exhibit B is

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ViaSat’s landing page for its genuine “Yonder Mobile High-Speed Internet

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Service.” Attached as Exhibit C is defendants’ landing page for their “Yonder

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wireless broadband services.” Both services emphasize that their Yonder internet

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services are distinctive because their services reach remote areas.

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Plaintiff is informed and believes, and on that basis alleges, that

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defendants have advertised and sold their Yonder internet services in this and other

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states, thereby constituting a part of and affecting interstate commerce.

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After plaintiff’s adoption and use of its marks on YONDER® high-

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speed internet services, and after plaintiff obtained the service mark registrations

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alleged above, defendants adopted and used substantially identical likeness of

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plaintiff’s marks on their Yonder internet services, without plaintiff’s consent, by

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displaying, distributing, and selling their Yonder internet services.

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Plaintiff is informed and believes, and on that basis alleges, that

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defendants know or are willfully blind to the fact that their use of the word

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“Yonder” is infringing. ViaSat put defendants on notice of ViaSat’s service marks

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in a July 11, 2011 letter from its counsel, followed by a telephone call on August 2,

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2011. Defendants failed to respond to the letter or telephone call, and also failed to

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respond to a reminder letter sent on August 15, 2011, as well as follow up

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telephone calls left soon thereafter. Defendants also failed to respond to a cease

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and desist letter sent by ViaSat’s counsel on October 21, 2011.

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By engaging in this conduct, defendants have acted in willful

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disregard of laws protecting plaintiff’s goodwill, and they have intentionally

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confused and deceived, or threaten to confuse and deceive, the consuming public

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concerning the source, affiliation, connection, or sponsorship of their Yonder

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internet services. By their wrongful conduct, defendants have traded upon and

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diminished plaintiff’s reputation and goodwill, and in a manner likely to cause

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confusion over the source, affiliation, connection, or sponsorship of plaintiff’s and

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defendants’ services.

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FIRST CLAIM FOR RELIEF

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(Service Mark Infringement)

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Plaintiff hereby incorporates all of the preceding paragraphs, as

though fully set forth herein.
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Plaintiff holds valid registered service marks for the YONDER® and

stylized YONDER® word mark.
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In connection with the advertising and offering for sale of the Yonder

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media, Yonder wireless, and Yonder broadband internet services, defendants have

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used in commerce a reproduction, copy, or colorable imitation of plaintiff’s

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registered YONDER® word mark and plaintiff’s stylized YONDER® word mark,

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without the consent of plaintiff in violation of 15 U.S.C. § 1114(1)(a) and have
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applied such marks to advertisements intended to be used in commerce without the

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consent of plaintiff in violation of section 32 of the Lanham Act, 15 U.S.C. §

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1114(1)(b).

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31.

Defendants’ use of the word “Yonder” is likely to cause confusion, to

cause mistake, and/or to deceive.
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Defendants’ violation of 15 U.S.C. § 1114 entitles plaintiff to

injunctive relief pursuant to 15 U.S.C. § 1116(a).
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Plaintiff is informed and believes, and on that basis alleges, that as a

result of defendants’ willful infringement of plaintiff’s service marks through the

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unauthorized use of the word “Yonder,” defendants have profited and will profit in

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the future from the sale of Yonder internet services that use reproductions, copies,

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or colorable imitations of YONDER® word marks, thereby entitling plaintiff to an

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award of defendants’ profits, damages to plaintiff in an amount to be proved at

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trial, enhanced damages, attorneys’ fees and the costs of this action, pursuant to 15

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U.S.C. § 1117(a).

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34.

Defendants’ acts have caused, and unless enjoined will continue to

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cause, irreparable injury to plaintiff. Ascertainment of damages caused by

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defendants’ conduct would be difficult, leaving plaintiff with an inadequate

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remedy at law.

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SECOND CLAIM FOR RELIEF

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(False Designation of Origin)

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Plaintiff hereby incorporates all of the preceding paragraphs, as

though fully set forth herein.
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By advertising, and offering for sale their Yonder internet services,

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infringing the YONDER® service marks, and by representing that their Yonder

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internet services are genuine services, defendants have engaged in false

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designation of origin and have made false descriptions and representations in

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connection with services sold in interstate commerce.
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37.

Defendants’ false designation of origin and false descriptions and

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representations regarding their Yonder internet services have caused and are likely

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to cause confusion, mistake, or deception as to (1) the affiliation, connection, or

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association of plaintiff with the Yonder internet services and (2) the origin,

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sponsorship, or approval by plaintiff of the Yonder internet services.

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Defendants are violating section 43(a) of the Lanham Act, 15 U.S.C. §

1125(a).
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As a proximate result of defendants’ acts, plaintiff has suffered, and

will continue to suffer, substantial damage to its reputation and goodwill, as well as

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diversion of trade and loss of revenues and other damages in an amount yet to be

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ascertained.

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40.

Plaintiff is informed and believes, and on that basis alleges, that as a

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result of defendants’ false designation of the origin of their Yonder internet

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services, defendants have profited and will profit in the future from the sale of

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Yonder internet services, thereby entitling plaintiff to an award of defendants’

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profits, damages to plaintiff in an amount to be proved at trial, and the cost of this

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action, pursuant to 15 U.S.C. § 1117(a).

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41.

Defendants’ violation of 15 U.S.C. § 1125(a) entitles plaintiff to

injunctive relief pursuant to 15 U.S.C. § 1116(a).
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Defendants’ acts have caused, and unless enjoined will continue to

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cause, irreparable injury to plaintiff. Ascertainment of damages caused by

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defendants’ conduct would be difficult, leaving plaintiff with an inadequate

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remedy at law.

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THIRD CLAIM FOR RELIEF

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(Unfair Competition and False Advertising – 15 U.S.C. §
1125)

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43.

Plaintiff hereby incorporates all of the preceding paragraphs, as

though fully set forth herein.
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44.

Defendants have used false or misleading descriptions of fact or

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representations of fact in commercial advertising or promotion, and in connection

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with goods or services in commercial advertising or promotion. The false

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descriptions or representations have misrepresented the nature, qualities, or

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geographic origin of defendants’ services, or commercial activities, or the services,

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or commercial activities of another person, in violation of section 43(a) of the

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Lanham Act, 15 U.S.C. § 1125(a).

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45.

Defendants’ acts and conduct, as alleged herein, are business practices

likely to deceive or confuse the purchasing public and trade upon plaintiff’s

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reputation, both as to the source, origin, sponsorship, and approval of the goods

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and services provided, and as to the affiliation, connection, or association of

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defendants with plaintiff. These acts constitute acts of unfair competition, false

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designation of origin, and false representation of affiliation, all in violation of 15

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U.S.C. § 1125(a). Plaintiff is informed and believes, and upon that basis alleges,

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that each of defendants’ respective acts of reputation appropriation and unfair

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competition was willful.

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46.

Defendants’ acts constitute unfair competition and false advertising in

violation of section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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As a proximate result of defendants’ acts, plaintiff has suffered, and

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will continue to suffer, substantial damage to its reputation and goodwill, as well as

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diversion of trade and loss of revenues in an amount not yet ascertained.

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Defendants’ acts have caused, and unless enjoined will continue to

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cause, irreparable injury to plaintiff. Ascertainment of damages caused by

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defendants’ conduct would be difficult, leaving plaintiff with an inadequate

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remedy at law.

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49.

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By reason of the foregoing, plaintiff has incurred and will continue to

incur attorneys’ fees and other costs in connection with the prosecution of its

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claims herein, which attorneys’ fees and costs plaintiff is entitled to recover from

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defendants, and each of them, pursuant to 15 U.S.C. § 1117.

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FOURTH CLAIM FOR RELIEF

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(Unfair Competition, False Advertising, and Deceptive

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Acts And Practices – Cal. Bus & Prof. Code §§ 17200,

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17500)

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50.

Plaintiff hereby incorporates all of the preceding paragraphs, as

though fully set forth herein.
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By reason of the aforesaid acts, defendants have intentionally caused a

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likelihood of confusion among plaintiff’s customers and the public regarding the

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origin of the Yonder internet services, and have diverted sales from plaintiff, all of

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which constitutes unfair competition against plaintiff in violation of California

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Business and Professions Code, section 17200.

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52.

Defendants are engaged in a pattern of unfair competition and unfair

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business practices, in violation of California Business and Professions Code,

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section 17200. The acts of defendants that are unlawful and unfair include:

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a. Infringing plaintiff’s YONDER® service marks; and

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b. Falsely implying to retail customers that defendants are
authorized YONDER® internet service providers.

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53.

These acts of defendants also constitute false advertising and

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deceptive acts and practices in the conduct of defendants’ businesses, in violation

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of sections 17200 and 17500 of the California Business and Professions Code.

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54.

By these actions, defendants have irreparably injured the consumer

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recognition and goodwill associated with plaintiff’s services. Such injury will

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continue unless enjoined by this Court.

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Defendants’ acts have caused, and unless enjoined will continue to

cause, irreparable injury to plaintiff. Ascertainment of damages caused by

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defendants’ conduct would be difficult, leaving plaintiff with an inadequate

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remedy at law.

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By defendants’ unfair competition they have illegally profited in an

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amount not yet ascertained. Plaintiffs are entitled to restitution from defendants

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and an order directing disgorgement of defendants’ illicit profits.
PRAYER FOR RELIEF

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WHEREFORE, Plaintiff prays for judgment against defendants, and each of
them, as follows:
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For a temporary restraining order, a preliminary injunction, and a

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permanent injunction restraining defendants from any further advertising,

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marketing, distribution, or sale of their internet services using the words “Yonder,”

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“Yonder Media,” “Yonder Broadband,” or any other word or phrase that is

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confusingly similar to plaintiff’s YONDER® service marks;

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2.

For an order of seizure, pursuant to 15 U.S.C. §§ 1116(a),

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compelling defendants to surrender all labels, advertisements, marketing materials,

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stationary, and other materials bearing the word “Yonder,” and any records

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documenting the advertisement, marketing, distribution or sale, including but not

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limited to electronic media reflecting the use of services using the word “Yonder”

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in connection with such activities;

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3.

For an accounting of all profits earned by defendants on the sale of

internet services using the word “Yonder”;
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For a constructive trust on all said profits derived from defendants’

infringing activities;
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For compensatory damages according to proof totaling three times

the amount found as profits or statutory damages, whichever is greater;

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For prejudgment interest;

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For attorneys’ fees and costs and;

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For any further relief that the Court deems just and proper.
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DATED: November 28, 2011

CHAPIN FITZGERALD SULLIVAN & BOTTINI LLP

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By: s/ Kenneth M. Fitzgerald
Kenneth M. Fitzgerald, Esq.
Jill M. Sullivan, Esq.
Jennifer M. Chapman, Esq.
Attorneys for Plaintiff
VIASAT, INC.

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DEMAND FOR JURY TRIAL

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Plaintiff hereby demands a trial by jury.

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DATED: November 28, 2011

CHAPIN FITZGERALD SULLIVAN & BOTTINI LLP

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By: s/ Kenneth M. Fitzgerald
Kenneth M. Fitzgerald, Esq.
Jill M. Sullivan, Esq.
Jennifer M. Chapman, Esq.
Attorneys for Plaintiff
VIASAT, INC.

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