F.E.A., Inc. v. John Does 1-100 et al

Filing 1

COMPLAINT against Jane Does 1-100, John Does 1-100, XYZ Company. (Filing Fee $ 350.00, Receipt Number 465401030379)Document filed by F.E.A., Inc..(rdz) (rdz).

selling and distributing unauthorized goods at Madison Square Garden on February 28,
and March 1, 2012.
PARTIES
2.

F.E.A., Inc. ("Plaintiff") is a New Jersey corporation with its principal

place of business in Englewood, New Jersey.
3.

Defendants John Does 1-100, Jane Does 1-100 and XYZ Company who

are sued herein under fictitious names because their true names and capacities are
unknown at this time. This complaint will be amended when their true names and
capacities are ascertained.
4.

Upon information and belief, the individual defendants will be present in

and about the Southern District of New York in connection with the claims asserted
below and are or will be subject to the jurisdiction of this Court.
5.

On information and belief, defendant XYZ Company through its agents,

servants and employees, is or will be present in and about the Southern District of New
York and is or will be subject to the jurisdiction of this Court.
6.

Defendants, and each of them, are individuals and business entities who,

upon information and belief, are acting in concert and active participation with each other
in committing the wrongful acts alleged herein. Defendants John Does 1-100, Jane Does
1-100, and XYZ Company are hereinafter referred to collectively as "Defendants."
THE BACKGROUND OF THE ACTION
7.

Plaintiff is engaged in the manufacture, distribution and sale of various

types of merchandise sold and distributed at concerts and at retail stores of musical
performing artists and groups, including, but not limited to T-shirts, jerseys, sweatshirts,

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hats, buttons, tour program books, and posters (collectively "Merchandise") which
embody the trademarks, servicemarks, likenesses, logos, and other indicia of musical
performers and groups.
8.

The group known as “VAN HALEN” (the "Group"), is the trademark

used by the Group in connection with recording, merchandising and other goods and
services in all aspects of the entertainment industry and to distinguish their services from
all other such artists. The Group’s trademark has been used in connection with their
services for over 30 years.
9.

The Group has obtained for their “VAN HALEN” trademark US Federal

Trademark Registrations, many incontestable, including: Federal Registration No.
2866540, IC 025 for use in connection with clothing; Registration No. 2868311, IC 41
for use in connection with entertainment services; Registration No. 2853393, IC 016 for
use in connection with printed matter and Federal Registration No. 3701926 (design
mark): IC 025 for use in connection with clothing, IC 009 for use in connection with
musical sound recordings and musical video recordings; IC 015 for use in connection
with musical instruments and accessories, IC 016 for use in connection with paper
products; and IC 041 for use in connection with entertainment services. The marks
2866540, 2868311, and 2853393 are incontestable.
10.

Pursuant to an agreement between the Group and the Plaintiff (the

"Agreement"), Plaintiff possesses the exclusive right to utilize and to market all federally
registered trademarks, servicemarks, likenesses, logos and other indicia of the Group
(collectively, the "Group’s Trademarks") on and in connection with Merchandise ("Tour

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Merchandise") sold and offered for sale at or near their performances on their present
North American concert tour (the “Tour”).
11.

The Group has achieved wide renown in the entertainment industry. The

Group has used their trademarks to identify officially authorized goods and services and
to distinguish their services and goods from others by, among other things, prominently
displaying the Group’s Trademarks in advertising and on Tour Merchandise.
12.

The Group has a decidedly strong and loyal following among those who

attend popular music concerts and record buyers. The Group has previously appeared in
concerts at major arenas and stadiums in the United States and has been seen and heard in
concerts by millions of popular music enthusiasts. Previous Tours by the Group were
attended by hundreds of thousands of people. Because of the Group’s popularity and this
Tour being the Group’s highly anticipated reunion tour, the Group’s performances are
sold out or nearly sold out.
13.

As a result of the foregoing, each of the Group’s Trademarks has

developed and now possesses secondary and distinctive meaning to purchasers of the
Tour Merchandise bearing any or all of the Group’s Trademarks.
14.

Plaintiff and the Group annually realize substantial income from the sale

of Tour Merchandise bearing the Group’s Trademarks, and hundreds of thousands of
such items have been sold throughout the United States.
15.

On February 28 and March 1, 2012 at Madison Square Garden in New

York, New York, the Group will perform (the "Concerts").

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The authorized Tour

Merchandise bearing any or all of the Group’s Trademarks will be distributed at the
Concerts and throughout the United States in connection with the Tour.
DEFENDANTS' UNLAWFUL CONDUCT
16.

On information and belief, Defendants will sell and distribute

unauthorized T-shirts, jerseys, caps and/or other merchandise bearing any or all of the
Group’s Trademarks (the "Unauthorized Merchandise") in the vicinity of the Concerts
before, during and after their performance and at subsequent performances on the Tour.
17.

The Unauthorized Merchandise is of the same general appearance as

Plaintiff's Merchandise and is likely to cause confusion among prospective purchasers.
Defendants' Unauthorized Merchandise is not authorized by the Group or Plaintiff.
18.

The Unauthorized Merchandise sold and to be sold by Defendants is

generally of inferior quality. The sale of such merchandise has injured and is likely to
injure the reputation of the Group which has developed by virtue of their public
performances and the reputation for high quality associated with Plaintiff and the Tour
Merchandise.
19.

The aforesaid acts by Defendants and others are likely to cause the

purchasing public to believe that the sale of such Unauthorized Merchandise is
authorized, sponsored or approved by the Group and/or Plaintiff and that such
Unauthorized Merchandise is subject to the same quality control and regulation required
by the Group and/or Plaintiff, despite the fact that this is not true. It also injures the
Group and Plaintiff in that Defendants do not pay any royalty for these unlawful sales.
20.

The aforesaid manufacture, distribution and sale of Unauthorized

Merchandise bearing the trademarks, servicemarks, likenesses, logos, and other indicia of

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the Group constitutes a false designation of the source of origin of such goods and falsely
describes and represents such merchandise. The use by Defendants of the Group’s
Trademarks also constitutes an attempt to palm off and appropriate to themselves the
Group’s and Plaintiff's exclusive rights therein.
21.

Upon information and belief, Defendants and others have and will

continue to engage in such unauthorized activities in this state and elsewhere in interstate
commerce and will continue such activities throughout the Tour, to the great injury of
Plaintiff and the Group.
22.

Plaintiff has no adequate remedy at law and will suffer irreparable harm

and damage as a result of the aforesaid acts, in an amount presently incalculable.
FIRST CLAIM FOR RELIEF
(Violation of the Trademark Act)
25.

Plaintiff realleges each allegation set forth in the paragraphs above.

26.

By reason of the foregoing, Plaintiff hereby asserts a claim against

Defendants for injunctive and monetary relief pursuant to 15 U.S.C. § 1114(b) with
respect to Defendants' infringement of the registered marks.
SECOND CLAIM FOR RELIEF
(Violation of the Lanham Act)
23.

Plaintiff realleges each allegation set forth in the paragraphs above.

24.

By reason of the foregoing, Plaintiff hereby asserts a claim against

Defendants for injunctive and monetary relief pursuant to Section 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a), with regards to the false designation of origin and false
descriptions and representations in commerce of Defendants’ Unauthorized Merchandise.

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PRAYER FOR RELIEF
WHEREFORE, Plaintiff seeks relief against Defendants as follows:
A.

As to All Claims For Relief, that Defendants, their agents, servants,

employees, officers, attorneys, successors and assigns, and all persons acting in concert
with them, be enjoined in this and all other judicial districts in the United States,
preliminarily during the course of this litigation and permanently from: 1) manufacturing,
distributing, selling, offering for sale, holding for sale or advertising any products,
merchandise or goods bearing the name, trademark, or likeness of the Group or any
colorable variation or imitation thereof; and 2) representing that any products,
merchandise or goods manufactured, distributed, sold, held for sale or advertised by them
is sponsored or authorized by Plaintiff in this district or in any other district in which
Plaintiff seeks to enforce this Court's injunction order.
B.

As to All Claims For Relief, that this Court order the United States

Marshal, the local and state police or sheriff, off duty officers of the same, authorized
agents of Plaintiff, and/or any persons acting under their supervision to seize and
impound any and all Unauthorized Merchandise which the Defendants attempt to sell,
distribute or hold for sale at, within or in the vicinity of the arenas at which the Group is
performing, whether this occurs before, during or after the concerts on the Tour.
C.

That Defendants deliver up for destruction any and all Unauthorized

Merchandise.

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D.

As to All Claims for Relief, that Defendants pay to Plaintiff damages in an

amount to be determined.
E.

As to All Clain1s For Relief, that Plaintiff be awarded its costs, attonleys

fees and such other and further relief as the Court de

Dated: February 22,2012
By --H--+--j'-f-++--~---,~
M r Bra or
MARK B
DFORD, PC
299 12th Street
Brooklyn, New York 11215-4903
Telephone: [phone]
[e-mail]
Cara R. Burns (CB 1071) (pl" hac vice
O
requested)
HICKS, l\1IMS, KAPLAN & BURNS
3250 Ocean Park Blvd, Ste 350
Santa Monica, California 90405
Telephone: [phone]
Facsimile: [phone]
[e-mail]
Attorneys for Plaintiff

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