Run-DMC Brand, LLC v. Amazon.Com, Inc. et al

Filing 1

COMPLAINT against Amazon.Com, Inc., Infinity Fashion, Inc., Jet.com, Inc., SW Global Corp., Vision World, Inc, Wal-Mart Stores Inc.. (Filing Fee $ 400.00, Receipt Number 0208-13145879)Document filed by RUN-DMC BRAND LLC.(Brown, Christopher)

Case 1:16-cv-10011-JPO Document 1 Filed 12/29/16 Page 1 of 24

UNITED STATES SOUTHERN DISTRICT COURT
OF NEW YORK
________________________________________________
RUN-DMC BRAND, LLC
) Civil Action No.
Plaintiff
)
)
v.
)
)
AMAZON.COM, INC., WAL-MART STORES, INC.,
) COMPLAINT
JET.COM INC., VISION WORLD INC.,
)
INFINITY FASHION, INC.,
)
SW GLOBAL CORP. And JOHN DOES 1-20
)
Defendants
)
)
_______________________________________________ )
1.
RUN-DMC BRAND LLC (“RUN-DMC”) is a New York Company with a business address of
1410 Broadway, Suite 1202, New York, NY 10018.
2.
Darryl McDaniels (“McDaniels”), is the owner of RUN-DMC and has a business address
at 1410 Broadway, Suite 1202, New York, NY 10018.
3.
Amazon.com, Inc. owns and operates amazon.com (“Amazon”) and is a Washington
company located at 2021 7th Avenue, Seattle, WA 98121.
4.
Wal-Mart Stores, Inc. owns and operates Walmart.com (“Walmart”). Walmart has a
business address located at 850 Cherry Ave., San Bruno, CA 94066.
5.
Jet.com, Inc. (“Jet”) is a New Jersey entity that owns and operates jet.com and maintains
a business address at 221 River Street, Hoboken, NJ 07030.
6.
Vision World, Inc. (“Vision”) is a California company number C3413363. Vision has a
physical address at 3352 Charlotte Ave, Rosemead, CA 91770 and a mailing address at 2446 N.
San Gabriel Blvd, #C, Rosemead, CA 91770. Vision is a business partner of Amazon.
7.
Infinity Fashion, Inc. (“Infinity”) is a California company No. C3240497, with a business
address at 3680 Tyler Ave., El. Monte, CA 91731. Vision is a business partner of Amazon.
8.
SW Global Corp., (“SW”) is a California company No. C3324549. SW has three (3)
addresses. Address No 1.-18351 Colima Road No. 190, City of Industry, CA 91748. Address
No. 2- 5333 Hyde St. Unit, 2 Los Angeles, CA 90032 c/o Wilbert Huang and Address No. 3- c/o
Victoria Lai 656 Wickford Ave, La Puente, CA 91744. SW operates MLC Eyewear and
mlceyewear.com pursuant to its U.S. Trademark Registration 4367905 for MLC Eyewear. SW is
a business partner of Amazon.

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9.
John Does 1-20 are various companies that advertise and list their products for sale on
Amazon and split revenue with Amazon while infringing on the RUN-DMC trademark.

JURISDICTION
10.
Jurisdiction is predicated on federal question and the New York Long Arm Statute.
Defendants have violated federal trademark law. Defendants purposefully availed itself of the
privilege of conducting activities in the state of New York and has established minimum contacts
sufficient to confer jurisdiction over said Defendants. The assumption of jurisdiction will not
offend traditional notions of fair play and substantial justice and is consistent with the
constitutional requirements of due process. Plaintiff is also a New York entity and the wrongful
acts alleged caused harm in the State of New York. The amount in controversy exceeds Fifty
Million Dollars ($50,000,000.00).
FACTS
11.
RUN-DMC is the most well-known group in the history of hip hop/rap music, originating
in Hollis, Queens, New York. Historically, the group achieved a number of notable firsts in hip
hop music and are credited with being the act most responsible for pushing hip hop into mainstream
popular music, initiating its musical and artistic evolution and enabling its growth as a global
phenomenon. Run-D.M.C. is the first rap act to have reached a number of major accomplishments:
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A No. 1 R&B charting rap album
The second rap act to appear on American Bandstand (the Sugar Hill Gang appeared first
on the program in 1981)
The first rap act to chart in the Top 40 of the Billboard Hot 100 more than once
The first rap artist with a Top 10 pop charting rap album
One of the first rap artists with gold, platinum, and multi-platinum albums
The first rap act to appear on the cover of Rolling Stone magazine
One of the first rap acts to receive a Grammy Award nomination
The first rap act to make a video appearance on MTV
The first rap act to perform at a major arena
Signed to a major product endorsement deal (Adidas)
The second rap act to be inducted into the Rock and Roll Hall of Fame
https://en.wikipedia.org/wiki/Run%E2%80%93D.M.C.

12.
RUN-DMC has a registered trademark with the United States Patent and Trademark
Office (“USPTO”). See Exhibit “A”. The RUN-DMC brand has produced revenue in excess of
One Hundred Million Dollars ($100,000,000.00) from the intellectual property associated with
the trademark “RUN-DMC” since its inception in the 1980s. This includes the sale of music,
music publishing, concerts, merchandising and endorsement deals.
13.
The Defendants are advertising, selling, manufacturing, promoting and distributing
multiple products claiming to be RUN-DMC styled products. Other products directly infringe
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and utilize the RUN-DMC trademark. See Exhibit “B”. The products include glasses, hats, tshirts, patches, wallets and other items.
14.
The products sold by the Defendants confuse the public as to the source of the products
and suggests that RUN-DMC endorses the products. The Defendants are trading on the goodwill
of Plaintiff.
15.
The Defendants are advertising, manufacturing, selling and distributing multiple products
with the RUN-DMC trademark without the permission of RUN-DMC.
16.
The marks used by RUN-DMC and the Defendants are substantially similar. Upon
information and belief, the Defendants have used the trademarks of the Plaintiff for at least three
(3) years in the advertising, marketing, selling, manufacturing and distributing of Defendants
products.
17.
Defendants Amazon, Jet and Walmart sell and advertise products that infringes on the
trademark and goodwill of RUN-DMC.
18.
Defendants Amazon, Jet and Walmart all partner with the same identified entities
(Vision, Infinity and SW) and JOHN DOE entities that sell infringing RUN-DMC product on
amazon.com, jet.com and Walmart.com and trade on the goodwill of RUN-DMC.
19.
Defendant Amazon sells and advertises many of the products directly or fulfills the
orders for the infringing products for Vison and Infinity. Amazon, Vision and Infinity split the
proceeds from the selling of various products that directly infringe on the Plaintiff’s trademark
and/or trades on the goodwill of Plaintiff’s trademark.
20.
Defendant Vision advertises product that confuse the public as to the source of origin and
endorsement of its products. Vision does this through a business arrangement with Amazon.
21.
Defendant Infinity advertises product that confuse the public as to the source of origin
and endorsement of its products. Infinity does this through a business arrangement with Amazon.
22.

The actions of Defendants infringes on the mark of RUN-DMC.

23.

The actions of Defendants are diluting the mark of RUN-DMC.

24.
The action of Defendants have confused the public and has engaged in unfair competition
in the use of RUN-DMC’s trademark.
25.
The number of infringing materials sold by Amazon, Jet and Walmart are too numerous
to properly list. Exhibit “B” is a small representation of the infringement of Plaintiffs trademark
by the Defendants. The actions of the Defendants has harmed RUN-DMC in its business.

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COUNT I- TRADEMARK INFRINGEMENTLANHAM TRADEMARK ACT
26.

Plaintiff repeats paragraphs 1-25 above.

27.
Defendants actions are in violation of Lanham Trademark Act, section 1 et seq. 21 (a) 34,
15 U.S.C.A. section 1051-1127.
28.
RUN-DMC is the legal and equitable order of a mark registered with the USPTO
utilizing the word/term RUN-DMC.
29.
Defendants are utilizing the word RUN-DMC in the production, sale, advertising,
manufacturing, promotion and distribution of hats, shirts, glasses associated with RUN-DMC.
30.
The Defendants are infringing on the mark of RUN-DMC and harming RUN-DMC in its
business.
31.
The Defendants have caused confusion in the marketplace with its infringing activities
and unfair business actions.
32.

The Defendants have harmed the Plaintiff in its business.

COUNT II- TRADEMARK DILUTIONVIOLATION OF THE FEDERAL TRADEMARK DILUTION ACT
33.

Plaintiff repeats paragraphs 1-32 above.

34.
The Federal Trademark Dilution Act (“FTDA”) protects trademarks from unauthorized
users who attempt to trade upon goodwill of existing marks. ICEE Distributors, Inc. v. J&J
Snack Foods Corp., 325 F.3d 586 (5th Cir. 2003); Emporesa Cubana del Tabaca v. Culbro Corp.,
2004 WL 602295 (S.D. N.Y. 2004); Best Cellars, Inc. v. Wine Made Simple, Inc., 2003 WL
1212815 (S.D. N.Y. 2003).
35.
The FTDA provides for injunctions and monetary remedies for the dilution of
trademarks. In order for trademark dilution to occur, the FTDA states that the original trademark
must be distinctive. The FTDA further defines dilution as a use that adversely affects the ability
of the trademark to be associated with a particular good or service, regardless of whether
competition between the parties exists, or if there is a “likelihood of confusion, mistake, or
deception,” between the two trademarks. Moseley v. V Secret Catalogue, Inc., 537 U.S. 418
(2003).
36.

Defendants are attempting to trade upon the goodwill of RUN-DMC.

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37.
The RUN-DMC trademark is distinctive and is one of the most recognizable marks in all
of the hip-hop industry.
38.
RUN-DMC has entered several licensing agreements for use of the trademark RUNDMC, including a deal with Adidas for One Million Six Hundred Thousand Dollars
($1,600,000.00) to endorse a brand of sneakers. The brand is extremely valuable.
39.
The actions of the Defendants have diluted the mark of RUN-DMC and has caused harm
to RUN-DMC.

COUNT III- ACCOUNTING
40.

Plaintiff realleges paragraphs 1-39 above.

41.
The Defendants have illegally and in violation of trademark law, utilized RUN-DMC in
the manufacturing, advertising, distributing, marketing and selling of its products.
42.
The Defendants have earned substantial revenue due to their unlawful use of Plaintiff’s
trademark.
43.
RUN-DMC hereby demands an accounting of all sales of the Defendants products that
were advertised as being related to RUN-DMC and/or directly use the trademark RUN-DMC.

COUNT IV- PERMANENT INJUNCTION
44.

Plaintiff realleges paragraphs 1-43 above.

45.

Plaintiff is entitled to an injunction against the Defendants.

46.

Grounds.

Plaintiff will suffer immediate and irreparable injury, loss, or damage if Defendants'
conduct described above is not enjoined for these reasons: (1) the Defendants are infringing on
the trademark of RUN-DMC (2) the Defendants are causing confusion in the marketplace (3) the
Defendants are aware of the RUN-DMC trademark yet it continues to utilize the mark in bad
faith.
47.
Plaintiff does not have an adequate remedy at law because the Defendants continue to
dilute and use Plaintiff’s trademark. Plaintiff has exercised due diligence in prosecuting this
claim. The injury to Plaintiff if the Defendants continue the conduct described above would
outweigh any injury the restraining order and injunction might cause Defendants. An issuance of
the restraining order and injunction would not disserve the public interest.

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48.

Plaintiff has a likelihood of success on the merits.

49.
Plaintiff seeks a temporary restraining order restraining Defendants its officers, agents,
servants, and employees from directly or indirectly promoting, advertising, conducting,
participating in and receiving or making any payments for any “RUN-DMC” product being sold
by the Defendants.

COUNT VTRADEMARK INFRINGEMENT-COMMON LAW
50.

Plaintiff realleges paragraphs 1-49 above.

51.
Beginning in the 1980’s Darryl McDaniels, an original member of the hip-hop group
RUN-DMC began creating, marketing, advertising and promoting RUN-DMC.
52.
Over the last thirty (30) years, McDaniels and RUN-DMC have executed thousands of
concert contracts, promotional contracts, endorsements contracts and merchandising contracts
utilizing the name and mark “RUN-DMC”.
53.
The Defendants are infringing on the common law mark utilized by the Plaintiff and has
harmed Plaintiff’s business.
COUNT VI- UNFAIR COMPETITIONLANHAM TRADEMARK ACT
54.

Plaintiff repeats paragraphs 1-53 above.

55.

Defendants actions are in violation of Lanham Trademark Act.

56.
RUN-DMC is the legal and equitable order of a mark registered with the USPTO
utilizing the word “RUN-DMC”.
57.
Defendants are utilizing the word “RUN-DMC” in the production, advertising,
promotion, marketing, sale and distribution of various products including glasses, t-shirts and
patches.
58.
The Defendants are infringing on the mark of RUN-DMC and harming RUN-DMC in its
business.
59.
The Defendants are engaging in unfair competition by utilizing the mark of the
Plaintiff and causing injury to the Plaintiff.

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COUNT VII- NEW YORK ANTI-DILUTION VIOLATIONSTATUTORY AND COMMON LAW
60.

Plaintiff repeats paragraphs 1-59 above.

61.
New York recognizes a common law dilution cause of action with essentially the same
standards as the Lanham Act (see Twentieth Century Fox Film Corp v. Marvel Enters., 220 F.
Supp. 2d 289, 297-98 (S.D.N.Y. 2002) and Kensington Publ’g Corp. v. Gutierrez, No. 05 Civ.
10529 (LTS) (AJP), 2009 WL 4277080, at *7 (S.D.N.Y. Nov. 10, 2009)).
62.
RUN-DMC is an extremely famous mark, however, the Second Circuit has held that
fame is not required for a mark to be protected under the New York anti-dilution law (see, for
example, Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F. 3d 97, 114 (2d Cir. 2009)).
63.
The actions of the Defendants have diluted the mark “RUN-DMC” and has harmed
RUN-DMC in its business.
64.
The Defendants have harmed RUN-DMC’s ability to utilize, market, promote and sell
products with its registered trademark.
COUNT VIII- NEW YORK UNFAIR COMPETITIONCOMMON LAW
65.

Plaintiff repeats paragraphs 1-64 above.

66.
New York recognizes common law unfair competition claims applicable to trademarks.
See ITC Ltd. v. Punchgini, Inc., 9 NY.3d 467, 476-77 (2007).
67.
The Second Circuit has held that to prevail on a common law unfair competition claim
under New York law a Plaintiff with a protectable mark must show (1) Actual confusion, in an
action for damages; (2) Likelihood of confusion, in an action for injunctive relief. (3) Bad faith
or intent. See Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.3d 27, 35 (2d Cir. 1995).
68.
New York federal courts applying the New York law have held that Consumer confusion
is analyzed under the common law in the same manner as under the Lanham Act (see, for
example, US Polo Ass’n v. PRL USA Holdings, Inc., 800 F. Supp. 2d 515, 538 (S.D.N.Y. 2011).
69.
The Defendants are in violation of New York law and have usurped the “RUN-DMC”
mark.

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70.
The Defendants have violated the rights of RUN-DMC and has harmed RUN-DMC in its
business.

PLAINTIFF HEREBY DEMANDS TRIAL BY JURY
The Plaintiff demands,
1.
Judgment on all counts;
2.
Interest;
3.
The sum of Fifty Million Dollars ($50,000,000.00).
4.
Attorneys Fees;
5.
An injunction retraining the Defendants from utilizing “RUN-DMC” in the sale,
promotion, advertising, manufacturing, distribution and marketing; and,
6.
Any other relief this Court deems just and equitable.

RUN-DMC LLC

December 29, 2016

___________________________
Christopher L. Brown
NYS Bar No. 2953891
Brown & Rosen LLC
Attorneys At Law
100 State Street, Suite 900
Boston, MA 02109
617-728-9111 (T)
617-695-3202 (F)
[e-mail]

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EXHIBIT A
Word Mark
Goods and
Services

RUN--DMC
IC 009. US 021 023 026 036 038. G & S: series of musical, sound and video recordings.
FIRST USE: 19830403. FIRST USE IN COMMERCE: 19830403
IC 025. US 022 039. G & S: clothing, namely T-shirts, hats, jackets and shoes. FIRST USE:
19830403. FIRST USE IN COMMERCE: 19830403
IC 041. US 100 101 107. G & S: entertainment in the nature of live musical performances.
FIRST USE: 19830403. FIRST USE IN COMMERCE: 19830403

Mark Drawing
Code
Design Search
Code
Trademark
Search Facility
Classification
Code
Serial Number
Filing Date
Current Basis
Original Filing
Basis
Published for
Opposition
Registration
Number
Registration
Date

(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
26.09.12 - Squares with bars, bands and lines
26.09.21 - Squares that are completely or partially shaded
LETTER-3-OR-MORE DMC Combination of three or more letters as part of the mark
SHAPES-GEOMETRIC Geometric figures and solids including squares, rectangles,
quadrilaterals and polygons
76624074
December 13, 2004
1A
NO FILING BASIS
July 10, 2007
3310249
October 16, 2007

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Owner

(REGISTRANT) MCDANIELS, DARRYL INDIVIDUAL NEW JERSEY c/o The McMillan Firm
156 West 56th Street, 10th Floor New York NEW YORK 10019
(LAST LISTED OWNER) RUN-DMC BRAND, LLC LIMITED LIABILITY COMPANY NEW
YORK 1410 BROADWAY, SUITE 1202 NEW YORK NEW YORK 10018

Assignment
Recorded
Attorney of
Record
Disclaimer
Description of
Mark
Type of Mark
Register
Affidavit Text
Live/Dead
Indicator

ASSIGNMENT RECORDED
L. Londell McMillan
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "RUN" APART FROM THE
MARK AS SHOWN
Color is not claimed as a feature of the mark.
TRADEMARK. SERVICE MARK
PRINCIPAL
SECT 15. SECT 8 (6-YR).
LIVE

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EXHIBIT B

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