OBAMA FOR AMERICA v. DEMSTORE.COM et al

Filing 1

COMPLAINT against DEMSTORE.COM, WASHINGTON PROMOTIONS & PRINTING, INC. ( Filing fee $ 350 receipt number 0090-2955966) filed by OBAMA FOR AMERICA. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Civil Cover Sheet, # 4 Summons Demstore.com, # 5 Summons Washington Promotions)(Reingold, Barry)

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLUMBIA
OBAMA FOR AMERICA
Plaintiff,

Civil Action No.
v.
Jury Trial Demanded

DEMSTORE.COM and WASHINGTON
PROMOTIONS & PRINTING, INC.,
Defendants.

COMPLAINT
Plaintiff OBAMA FOR AMERICA (“OFA”) states the following for its complaint
against Defendants Demstore.com (“Demstore”) and Washington Promotions & Printing, Inc.
(“Washington Promotions”) (collectively “Defendants”):
SUBSTANCE OF THE ACTION
1.

OFA was the principal campaign committee of Barack Obama in 2008 and is

currently the principal campaign committee of President Barack Obama as he seeks re-election
in 2012 ( the "Campaign,"). As part of its campaign efforts, OFA has designed logos, including
the distinctive and famous Rising Sun and 2012 Rising Sun logos, which are and have been used
to symbolize OFA on campaign signs, posters, merchandise, and a variety of other promotional
items. These logos, depicted below, are recognized around the world and are closely associated
with the Campaign.

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2.

OFA is the owner of federal trademark Registration No. 3,541,038 for the Rising

Sun logo, and federal trademark application No. 85/302,710 for the 2012 logo incorporating the
Rising Sun design (collectively the “Rising Sun Trademarks”).
3.

In an effort to trade on the enormous popularity of the Rising Sun logos and

Trademarks, Defendants operate a website, Demstore.com, at which merchandise bearing the
Rising Sun logos and Trademarks is sold or offered for sale in an unauthorized manner. In so
doing, Defendants are willfully violating OFA’s intellectual property rights in a deliberate effort
to trade on OFA’s hard-earned reputation and goodwill. Defendants’ are thus creating consumer
confusion, competing unfairly with OFA, and infringing OFA’s trademark rights.
4.

OFA therefore brings this action for trademark infringement under Section 32(1)

of the Federal Trademark (Lanham) Act, 15 U.S.C. § 1114(1); unfair competition and false
designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a); common law
trademark infringement; and common law unfair competition. OFA seeks preliminary and
permanent injunctive relief; an accounting and award of Defendants’ profits; compensatory,
treble, and/or statutory damages; an award of costs and attorneys’ fees; and such other and
further relief as the Court deems just and proper.
JURISDICTION AND VENUE
5.

This Court has subject matter jurisdiction under 15 U.S.C. § 1121, 28 U.S.C. §§

1331 and 1338(a), and under 28 U.S.C. § 1332, as there is diversity between the parties and the
matter in controversy exceeds, exclusive of interest and costs, the sum of seventy-five thousand
dollars.
6.

This Court has personal jurisdiction over Defendants because Defendants’

principal place of business is within this District, Defendants have imported, distributed, offered

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for sale, sold, or shipped merchandise to persons within this District, Defendants regularly
transact and conduct business within this District, and Defendants otherwise have made or
established contacts within this District sufficient to permit the exercise of personal jurisdiction.
7.

Venue is proper pursuant to 28 U.S.C. § 1391(a), (b), and (c), because a substantial

part of the acts or omissions giving rise to OFA’s claims occurred in this District, and
Defendants have sufficient connection with the District of the District of Columbia to make
venue proper in this District.
PARTIES
8.

Plaintiff Obama For America is an Illinois non-profit corporation with a principal

place of business at One Prudential Plaza, 130 East Randolph St., Chicago, Illinois 60601.
9.

Upon information and belief, Defendant Demstore.com is a Washington, D.C.

entity with a principal place of business at 3402 Connecticut Avenue NW, #2, Washington, D.C.,
20008. Defendant Demstore operates a website located at www.demstore.com.
10.

Defendant Washington Promotions & Printing, Inc. is a Maryland corporation

with a principal place of business at 3402 Connecticut Avenue NW, #2, Washington, D.C.,
20008.
11.

Upon information and belief, Defendant Washington Promotions & Printing is the

parent company of Demstore.com.
FACTS SUPPORTING OFA’S REQUESTED RELIEF
12.

As part of its campaign operations and management, OFA has designed, marketed,

and sold, and designs, markets, and sells, a broad range of products using the Rising Sun
Trademarks. Among the products OFA currently offers using the Rising Sun Trademarks are
clothing, signs, posters, buttons, and other merchandise related to the Obama reelection

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campaign. Controlling the message associated with the Rising Sun Trademarks is of vital
importance to OFA.
13.

OFA has been using the 2008 Rising Sun Trademark since 2007, and the 2012

Rising Sun Trademark since 2011.
14.

OFA sells its campaign merchandise on its website, www.barackobama.com.

15.

OFA’s campaign merchandise and other campaign materials prominently feature

the Rising Sun Trademarks.
16.

OFA has spent significant sums promoting its merchandise bearing the Rising Sun

Trademarks, and the popularity of the Rising Sun Trademarks has contributed greatly to OFA’s
branding and fundraising efforts.
17.

OFA relies entirely on contributions from supporters to run its operations. These

contributions are subject to legal restrictions on both the source of income and the amount that
each donor can give. For example, OFA cannot receive any contributions from incorporated
entities, and contributions from individuals are limited to $2,500 per election from a single
individual during the 2012 cycle. The purchase price of any item of OFA merchandise is treated
as a contribution, subject to these limits. Thus, the sale of merchandise featuring the Rising Sun
Trademarks makes up a significant portion of OFA’s revenue.
18.

The sale of Campaign merchandise is crucial to OFA’s efforts to interact with

voters, because each time a supporter makes a relatively small purchase on the website, OFA
obtains that individual’s contact information, which OFA can then use to reach out to that
individual repeatedly to seek further donations and further opportunities to promote the
Campaign.

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19.

OFA’s campaign strategy relies largely on promoting a certain message, and

consequently OFA emphasizes the authenticity of merchandise bearing the Rising Sun
Trademarks and exercises strict control over the consumers’ experience on its website and at
other marketplaces where supporters can purchase authorized OFA merchandise.

THE RISING SUN TRADEMARKS
20.

Due to OFA’s long and continuous use of the Rising Sun Trademarks in

connection with its merchandise, the Rising Sun Trademarks are widely recognized by the public
as indicators of the source of OFA’s merchandise.
21.

As a result of OFA’s extensive use of its Rising Sun Trademarks, OFA has built

and now owns enormously valuable goodwill symbolized by the Rising Sun Trademarks.
22.

OFA has developed common law rights in the Rising Sun Trademarks through its

extensive use thereof. OFA has also secured a federal trademark registration and filed a pending
trademark application to protect the Rising Sun Trademarks.
23.

OFA owns federal trademark Registration No. 3,541,038 issued by the U.S. Patent

and Trademark Office on December 2, 2008, for the Rising Sun logo. OFA is the owner of
federal trademark application No. 85/302,710 for the 2012 logo incorporating the Rising Sun
logo, filed in the U.S. Patent and Trademark Office on April 22, 2011. True and correct copies
of the registration and application are attached as Exhibit A. These trademarks are referred to
collectively as the Rising Sun Trademarks.
24.

All of the foregoing registrations and pending applications are valid, subsisting,

and in full force and effect.

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DEFENDANTS’ UNLAWFUL ACTIVITIES
25.

Upon information and belief, since 2004, Defendants have operated their website

located at www.demstore.com, at which they now sell election and campaign merchandise
bearing the Rising Sun Trademarks.
26.

In or about June 2007, OFA became aware that Defendants were operating the

Demstore website at which they were selling, and still sell, merchandise bearing the 2008 Rising
Sun Trademark.
27.

In or about April 2011, OFA became aware that Defendants were selling

merchandise bearing the 2012 Rising Sun Trademark, and were continuing to sell merchandise
bearing the 2008 Rising Sun Trademark. Defendants are not authorized, and never have been
authorized, by OFA to use any of the Rising Sun Trademarks.
28.

Defendants’ use of the Rising Sun Trademarks on campaign merchandise is likely

to create confusion as to the source of merchandise bearing the Rising Sun Trademarks.
Consumers are likely to believe that Defendants’ Demstore.com website and products are
associated with OFA, when in fact they are not. Such confusion is likely to damage OFA’s
ability to interact with potential supporters and gain revenue through the sale of merchandise
bearing the Rising Sun Trademarks and, consequently, greatly reduce OFA’s ability to perform
its fundraising and campaign functions.
29.

On or around April 22, 2011, counsel for OFA sent a demand letter to Defendants,

requesting inter alia that they “immediately cease and desist from any further commercial use of
the Rising Sun Trademarks in connection with advertising, promotion, offer or sale of any goods
or services.”

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30.

After communicating by telephone and email with representatives and counsel for

Demstore, OFA sent a follow up demand letter to Defendants, renewing OFA’s cease and desist
request, on or around July 29, 2011. True and correct copies of these letters are attached as
Exhibit B.
31.

To date, Defendants have not complied with or indicated a willingness to comply

with OFA’s demand letters. Defendants continue to promote, distribute, offer for sale, and sell
merchandise bearing the Rising Sun Trademarks even after they were put on actual notice, and
consequently, continue to engage in trademark infringement and unfair competition.
32.

Upon information and belief, Defendants are using the Rising Sun Trademarks on

merchandise in a deliberate and willful attempt to draw on the goodwill and commercial
magnetism of the Rising Sun Trademarks and the Obama Campaigns.
33.

Defendants’ aforesaid conduct is causing immediate and irreparable injury to OFA

and to its goodwill, reputation, and ability to perform fundraising functions, and will continue
both to damage OFA and to deceive the public unless enjoined by this Court. OFA has no
adequate remedy at law.
COUNT I
FEDERAL TRADEMARK INFRINGEMENT
(15 U.S.C. § 1114)
34.

OFA repeats and re-alleges each and every allegation contained in the preceding

paragraphs in this Complaint, and incorporates them herein by reference.
35.

Defendants’ distribution, marketing, promotion, offering for sale, and sale of

goods that bear the 2008 Rising Sun Trademark is likely to cause confusion, mistake, or
deception as to the source, affiliation, sponsorship, or authenticity of Defendants’ goods. As a
result of Defendants’ unauthorized use of trademarks that are identical to and/or confusingly

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similar to OFA’s federally registered mark, the public is likely to believe that Defendants’ goods
have been manufactured, approved by, or are affiliated with OFA. Consequently, OFA’s ability
to gain revenue through the sale of merchandise bearing the 2008 Rising Sun Trademark is
limited.
36.

Defendants’ unauthorized use of the 2008 Rising Sun Trademark falsely represents

Defendants’ website and products as emanating from or being authorized by OFA and places
beyond OFA’s control the quality of products bearing the 2008 Rising Sun Trademark, and the
overall message associated with the 2008 Rising Sun Trademark and products bearing the 2008
Rising Sun Trademark.
37.

Defendants’ infringement of OFA’s trademark is willful, intended to reap the

benefit of the goodwill of OFA, and violates Section 32(1) of the Lanham Act, 15 U.S.C. §
1114(1).
38.

As a result of Defendants’ wrongful conduct, OFA has suffered, and will continue

to suffer, substantial damages. Under 15 U.S.C. § 1117(a) OFA is entitled to recover damages,
which include any and all profits Defendants have made as a result of their wrongful conduct.
39.

In addition, because Defendants’ infringement of OFA’s trademark was willful

within the meaning of the Lanham Act, the award of actual damages and profits should be
trebled pursuant to 15 U.S.C. § 1117(b). In the alternative, OFA is entitled to statutory damages
for each counterfeit mark, under 15 U.S.C. § 1117(c).
40.

OFA is also entitled to injunctive relief pursuant to 15 U.S.C. § 1116(a). OFA has

no adequate remedy at law for Defendants’ wrongful conduct because, among other things, (a)
OFA’s trademark is unique and valuable property which has no readily determinable market
value, (b) Defendants’ infringement constitutes harm to OFA such that OFA could not be made

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whole by any monetary award, (c) if Defendants’ wrongful conduct is allowed to continue, the
public is likely to become further confused, mistaken, or deceived as to the source, origin, or
authenticity of the infringing materials, and (d) Defendants’ wrongful conduct, and the resulting
damage to OFA, is continuing.
41.

OFA is also entitled to an order compelling the impounding of all infringing

materials being used, offered, marketed, or distributed by Defendants, and to trebled damages,
because Defendants’ violations consist of the use of counterfeit trademarks pursuant to 15 U.S.C.
§ 1116(d).
42.

OFA is also entitled to recover its attorneys’ fees and costs of suit pursuant to 15

U.S.C. § 1117.
COUNT II
FEDERAL UNFAIR COMPETITION
(15 U.S.C. § 1125(a))
43.

OFA repeats and re-alleges each and every allegation contained in the preceding

paragraphs of this Complaint, and incorporates them herein by reference.
44.

Defendants’ distribution, marketing, promotion, offering for sale, and sale of

goods bearing the Rising Sun Trademarks constitute false designations of origin and false
descriptions or representations that Defendants’ website and retail products originate from or are
authorized by OFA, when in fact they are not. Such conduct limits OFA’s ability to interact with
potential supporters and gain contributions through the sale of merchandise bearing the Rising
Sun Trademarks.
45.

As a result of Defendants’ unauthorized use of the Rising Sun Trademarks and/or

marks that are confusingly similar to the Rising Sun Trademarks, the public is likely to be misled

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and confused as to the source, sponsorship, or affiliation of Defendants’ website and retail
products.
46.

Defendants’ conduct is willful, intended to reap the benefit of OFA’s goodwill,

and violates Section 43(a)(1)(A) of the Lanham Act, 15 U.S.C. § 1125(a)(1)(A).
47.

Defendants’ wrongful conduct is likely to continue unless restrained and enjoined.

48.

As a result of Defendants’ wrongful conduct, OFA has suffered and will continue

to suffer damages. OFA is entitled to injunctive relief and to an order compelling the
impounding of all imitation trademarks being used, offered, advertised, marketed, installed, or
distributed by Defendants. OFA has no adequate remedy at law for Defendants’ wrongful
conduct because, among other things, (a) OFA’s trademarks are unique and valuable property
which have no readily determinable market value, (b) Defendants’ infringement constitutes harm
to OFA such that OFA could not be made whole by any monetary award, (c) if Defendants’
wrongful conduct is allowed to continue, the public is likely to become further confused,
mistaken, or deceived as to the source, origin, or authenticity of the infringing materials, and (d)
Defendants’ wrongful conduct, and the resulting damage to OFA, is continuing.
COUNT III
COMMON LAW TRADEMARK INFRINGEMENT
49.

OFA repeats and re-alleges each and every allegation contained in the preceding

paragraphs of this Complaint, and incorporates them herein by reference.
50.

OFA has common law rights in the Rising Sun Trademarks based on its

continuous use of the Rising Sun Trademarks in the District of Columbia in connection with the
Campaigns and merchandise it sells and distributes in support of the Campaign.

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51.

Defendants’ unauthorized use of OFA’s Rising Sun Trademarks to promote,

advertise, market, and/or sell their goods is likely to cause confusion, mistake, and deception of
the public as to the identity and origin of Defendants’ goods, or as to a connection or affiliation
with OFA, or permission from OFA, that does not exist, causing irreparable harm to OFA for
which there is no adequate remedy at law. Defendants’ conduct thus constitutes common law
trademark infringement.
52.

Despite their actual and constructive knowledge of OFA’s ownership and prior use

of the Rising Sun Trademarks, Defendants have continued to use the Rising Sun Trademarks
without OFA’s authorization or consent. Defendants’ actions are deliberate and willful and have
been done with the intention of trading upon the valuable goodwill built up by OFA in their
Rising Sun Trademarks.
53.

OFA has sustained injury, damage, and loss based on Defendants’ actions.
COUNT IV
COMMON LAW UNFAIR COMPETITION

54.

OFA repeats and re-alleges each and every allegation contained in the preceding

paragraphs of this Complaint, and incorporates them herein by reference.
55.

Defendants’ distribution, marketing, promotion, offering for sale, and sale of

goods bearing the Rising Sun Trademarks constitute false designations of origin and false
descriptions or representations that Defendants’ products originate from, or are offered,
sponsored, authorized, licensed by, or otherwise somehow connected with OFA, when in fact
they are not. As a result of Defendants’ conduct, the public is likely to believe that Defendants’
goods or services have originated from and/or have been approved by OFA.

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56.

Defendants’ unauthorized use of the Rising Sun Trademarks falsely represents that

Defendants’ goods emanate from or are authorized by OFA and places beyond OFA’s control the
quality of such products, and the message that is associated with such products.
57.

Defendants’ conduct is willful, intended to reap the benefit of the goodwill

associated with the Rising Sun Trademarks, has caused and continues to cause damage and
injury to OFA, and constitutes common law unfair competition.

WHEREFORE, OFA respectfully requests judgment against Defendants as follows:
1.

That a preliminary and permanent injunction be issued enjoining

Defendants, and any employees, agents, servants, officers, representatives, directors,
attorneys, successors, affiliates, assigns, and entities owned or controlled by Defendants,
and all those in active concert or participation with Defendants, and each of them who
receives notice directly or otherwise of such injunction from:
a) using the Rising Sun and 2012 Rising Sun Trademark, or any other
trademarks that are confusingly similar to the Rising Sun Trademarks, for
retail products, or making any other unlawful use of the Rising Sun
Trademarks or any other trademarks owned by OFA;
b) using any false designation of origin or false description, or performing any
act which is likely to lead members of the trade or public to believe that any
product manufactured, imported, distributed, offered for sale, or sold by
Defendants is in any manner associated or connected with OFA, or is licensed,
sponsored, approved, or authorized by OFA;

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c) engaging in any other activity constituting unfair competition with OFA, or
constituting infringement of the Rising Sun Trademarks;
d) taking any action, including the unauthorized use of the Rising Sun
Trademarks, that dilutes the unique association between the Rising Sun
Trademarks and OFA, or that tarnishes the reputation or image of OFA;
e) disposing of, destroying, altering, moving, removing, concealing, tampering
with, or in any manner secreting any business records (including computer
records) of any kind, including invoices, correspondence, books of account,
receipts or other documentation relating or referring in any manner to any
retail services offered in connection with the Rising Sun Trademarks, or any
mark or designation that is confusingly similar to any of the Rising Sun
Trademarks;
f) instructing, assisting, aiding or abetting any other person or entity in engaging
in or performing any of the activities referred to in subparagraphs (a) through
(e) above.
2.

That the Court enter an order pursuant to 15 U.S.C. § 1116(a)(d)(1)(A)

impounding all counterfeit and infringing merchandise and materials bearing any of
OFA’s trademarks, including the Rising Sun Trademarks.
3.

Awarding Plaintiff its actual damages, trebled pursuant to 15 U.S.C. §

1117(a) & (b), arising out of Defendants’ acts of willful trademark infringement.
4.

Awarding Plaintiff its actual damages, trebled pursuant to 15 U.S.C. §

1116(d), arising out of Defendants’ use of counterfeit trademarks.

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5.

Awarding Plaintiff its actual damages, trebled pursuant to 15 U.S.C. §

1117(a), arising out of Defendants’ acts of willful unfair competition.
6.

Awarding to Plaintiff interest, including pre-judgment interest, on the

foregoing sums.
7.

Awarding Plaintiff its costs in this civil action, including reasonable

attorneys’ fees and expenses, pursuant to 15 U.S.C. § 1117(a) and (b).
8.

Awarding Plaintiff exemplary and punitive damages to deter any future

willful infringement as the Court finds appropriate.
9.

Directing such other action as the Court may deem appropriate to prevent

the trade and public from deriving the erroneous impression that any goods offered,
advertised, or promoted by or on behalf of Defendants are authorized by OFA or related
in any way to OFA’s products or services.
10.

Directing that Defendants file with the Court and serve upon Plaintiff’s

counsel within thirty (30) days after entry of judgment a report in writing under oath
setting forth in detail the manner and form in which Defendants have complied with the
above.
11.

Awarding Plaintiff such other and further relief as the Court may deem

just and proper.

Dated: June 1, 2012

By:

/s/ Barry J. Reingold

Barry J. Reingold (D.C. Bar No. 942086)
Elisabeth C. Frost (pro hac vice pending)
PERKINS COIE LLP
700 Thirteenth Street N.W.

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Washington, D.C. 2005-3960
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
William C. Rava (pro hac vice pending)
PERKINS COIE LLP
1201 Third Avenue, Suite 4800
Seattle, Washington 98101-3099
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
Jeremy L. Buxbaum (pro hac vice pending)
PERKINS COIE LLP
131 South Dearborn Street, Suite 1700
Chicago, Illinois 60603-5559
Telephone: [phone]
Facsimile: [phone]
E-mail: [e-mail]
Attorneys for Plaintiff Obama for America

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