JAT v. Spec-1 - Complaint

1 Yang & Wang, P.C.
Tommy SF Wang SBN: 272409

2 Andrew J. Wei SBN: 293787
3 355 S. Grand Ave., Ste. #2450
Los Angeles, CA 90071
Telephone: (888) 827-8880
Fax: (888) 827-8880
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a..e u.s. D"3m'CT (:O'JRT
'1
2 4 2014 I
Email: twang@yangwanglaw.com;awei@yangwanglaw.com
Attorneys for Plaintiff
JAT Wheels, Inc.
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UNITED STATES DISTRICT COURT
CENTRAL DISTRICT OJ CALIFORNIA. _
10 JAT Wheels, Inc., a California 14 - 4 (j 9 7 t) ff G It( il-J{,Ii
11 Corporation d/b/a! STR Racing,
Plaintiff,
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vs.
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SPEC-l RACING WHEELS INC, a )
14 Florida Corporation; and DOES 1-10,
collectively,
Defendant.
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COMPLAINT FOR:
1. FEDERAL TRADEMARK
INFRINGEMENT AND
TRADEMARK
COUNTERFEITING;
2. FALSE DESIGNATION OF
ORIGIN [15 U.S.C.
1125(a)/Lanham Act 43(a)].
3. FEDERAL TRADEMARK
DILUTION [15 U.S.C. 1125(c)];
4. FEDERAL COPYRIGRT
INFRINGEMENT [17 U.S.C.I06];
5. PATENT INFRINGEMENT [35
U.S.C.271];
6. FEDERAL UNFAIR
COMPETITION [15 U.S.C.
1125(a)];
7. CALIFORNIA COMMON LAW
UNFAIR COMPETITION; and
8. CALIFORNIA UNFAIR
COMPETITION (CALIFORNIA
BUSINESS & PROFESSIONS
CODES 17200, et seq.]
DEMAND FOR JURY TRIAL
_... . ..
JAT WHEELS INC.'S COMPLAINT
1 Plaintiff, JA T WHEELS, Inc. a California Corporation, dba STR Racing
2 (hereinafter "Plaintiff'), hereby files this Complaint against Defendant JNC
3 WHEEL COLLECTION (hereinafter "Defendant"), and DOES 1 to 10, and alleges
4 as follows:
6 1. Plaintiff files this action to combat the willful sale of unlicensed and
7 counterfeit products (hereinafter "Infringing Products") bearing the
8 Plaintiff's exclusive Trademark and utilizing the Plaintiffs exclusive
9 design patents, and unauthorized use of Plaintiffs copyrighted
1 photographs. The Defendant is a corporation specializing in the research,
11 manufacture and sales of aftermarket automobile wheels.
12 2. Plaintiff seeks a Permanent Injunction, damages, costs, and attorneys' fees
13 as authorized by the Lanham Act, the patent laws of the United States,
14 Title 35, United States Code, California's common law, and California
15 Business & Professions Code.
17 3. This Court has subject matter jurisdiction under 28 U.S.C. 1331 (federal
18 question) and 28 U.S.C. 1338(a) (action arising under an Act of
19 Congress relating to patents or trademarks).
20 4. On information and belief, Defendants are subject to personal jurisdiction
21 in the Central District of California (the "District"), consistent with the
22 principles of due process and the California Long Arm Statute, because
23 Defendants offer their products for sale in this District, have transacted
24 business in this District, have committed and/or induced acts of patent
25 infringement in this District, and/or have placed infringing products into
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1 the stream of commerce through established distribution channels with the
2 expectation that such products will be purchased by residents of this
3 District.
4 5. Further, this Court has jurisdiction over Plaintiffs California state
5 statutory and common law claims pursuant to 28 U.S.C. 1367.
6 6. Supplemental jurisdiction exists over Defendant because on information
7 and belief, Defendant conducts business in California and in this judicial
8 district, has purposefully availed itself to California and in this judicial
9 district, or has otherwise availed itself of the privileges and protections of
10 the law of the State of California, such that this Court's assertion of
11 jurisdiction over Defendant does not offend traditional notions of fair play
12 and due process.
13 7. Venue is proper within the Central District of California pursuant to 28
14 U.S.C. 1391(b) and 1400(a) because on information and belief, a
15 substantial part of the events or omissions giving rise to the claim
16 occurred in this judicial district, and has caused damages to Plaintiff in
17 this district.
18 THE PARTIES
19 8. Plaintiff, JAT WHEELS, INC., dba STR Racing, is a California
20 corporation duly organized and existing under the laws of the State of
21 California, and whose office is located at address 2107-D W.
22 Commonwealth Ave. #392, Alhambra, California 91803.
23 9. Upon information and belief, Defendant, SPEC-l RACING WHEELS,
24 INC (hereinafter "Defendant"), is, and at all times mentioned herein was,
25 a corporation organized and existing under the laws of the State of
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1 Florida, having its principal place of business at 8419 Sunstate St.,
2 Tampa, FL 33634.
3 10.The true names and capacities, whether individual, corporate, associate or
4 otherwise, of Defendants herein named DOES 1-10, inclusive are
5 unknown to Plaintiff. Plaintiff therefore sues said Defendants by such
6 fictitious names. When the true names and capacities of said Defendants
7 have been ascertained, Plaintiff will amend this pleading accordingly.
8 11. Plaintiff further alleges that Defendant and DOES 1-10, inclusive sued
9 herein by fictitious names are jointly, severally and concurrently liable
10 and responsible with the named Defendant upon the causes of action
11 hereinafter set forth.
12 12. Plaintiff is informed and believes and thereon alleges that at all times
13 mentioned herein Defendant, and DOES 1-10, inclusive, and each of
14 them, were the agents, servants, and employees of every other Defendant
15 and the acts of each Defendant, as alleged herein, were performed within
16 the course and scope of that agency, service or employment.
17 FACTS
18 13. Plaintiff owns the exclusive rights to numerous patents, copyrighted and
19 trademarked properties.
20 14. Plaintiff owns and holds the exclusive rights, title, and interest to market
21 and sell merchandise bearing the STR Trademark (the "STR Trademark"
22 or "Trademark"). Plaintiff registered its trademark on April 18,2014 with
23 the United States Patent and Trademark Office. The STR Trademark
24 registration number is 86256705.
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1 15.Plaintiffis the owner of all right, title and interest in the following U.S.
2 Design Patents: 1) Application No. 29,492,155 (the '''155 patent"); 2)
3 Application No. 29,492,156 (the ", 156 patent"); 3) Application No.
4 29,492,157 (the "'157 patent"); 4) Application No. 29,492,158 (the '''158
5 patent"); and 5) Application No. 29,492,159 (the '" 159 patent"),
6 (collectively, the "Design Patents").
7 16. As a result of Defendant's unlawful infringement of the Plaintiffs
8 Design Patents, Plaintiff has suffered and will continue to suffer damages.
9 Plaintiff is entitled to recover from Defendant the damages suffered as a
1 0 result of Defendant's unlawful acts.
11 17.In or around May 2014, Plaintiff discovered that Defendant was
12 manufacturing and selling automobile parts on the Internet that infringed
13 on Plaintiffs Design Patents. Some of these parts also bore Plaintiffs
14 STR Trademark.
15 1 8. Defendant uses the STR Trademark in connection with its aftermarket
16 automobile parts that are in direct competition with Plaintiffs aftermarket
17 automobile parts. Defendant has used Plaintiff s trademark in its
18 advertising for such products and services, thereby competing unfairly
19 with Plaintiff, infringing upon Plaintiff s trademark rights, and improperly
20 trading on the goodwill established by Plaintiff.
21 I9.In or around May 2014, Plaintiff published photographs to its website
22 displaying its aftermarket automobile parts. Plaintiff owns the copyrights
23 and ownership rights to these photographs.
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JAT WHEELS INC. 'S COMPLAINT
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1 20.Without Plaintiff's consent, Defendant sporadically, but consistently, used
2 Plaintiff's copyrighted images to promote and sell the Infringing Products
3 on Defendant's website.
4 21.Defendant's infringing activities have caused damages to Plaintiff by
5 causing customer confusion as to the source of the STR Trademark. In
6 addition, Defendant's use of the aforementioned Design Patent and STR
7 Trademark has and continues to dilute Plaintiff's goodwill in its products
8 and business that it has invested significant time and resources.
9 22.0n information and belief, Defendant's infringement of one or more of
10 the Plaintiff's Patents is willful and deliberate, therefore entitling Plaintiff
11 to enhanced damages and reasonable attorney fees and costs.
12 23.0n information and belief, Defendant intends to continue their unlawful
13 infringing activity, and Plaintiff continues to and will continue to suffer
14 irreparable harm-for which there is no adequate remedy at law-unless
15 Defendant is enjoined by this Court.
16 {;OUNT 1- FEI)ERAL TRAQEMAJlK AND
17 IRADEMAR:KCO!1NTEJlFEITING
18 24. Plaintiff repeats and re-alleges, as set forth herein, the allegations
19 contained in paragraphs 1 through 23, and brings the following claim for
20 trademark infringement pursuant to 15 U.S.C. 1114 against the
21 Defendant.
22 25. Plaintiff owns or is licensee of the exclusive rights to the STR
23 Trademark. The trademark registration is in full force and effect and is
24 owned by the Plaintiff or Plaintiff's licensors.
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1 26. Plaintiff, and/or those under its authority, manufactures, sells, and
2 distributes all of its advertising and products in conformity with the
3 provisions of the United States Trademark law.
4 27. Despite having actual and constructive notice of the Plaintiff and/or its
5 licensors' federal registration rights, prior common law and statutory
6 rights to the STR Trademark, Defendant has adopted and used the STR
7 Trademark in conjunction with the sale of merchandise in the State of
8 California and interstate commerce, including, by way of example and not
9 limitation, the SP-4 wheel, attached as Exhibit J.
10 28. Defendant has distributed, sold, or offered for sale merchandise
11 displaying Plaintiff s Trademark without Plaintiff s authorization.
12 Defendant's distribution, sale, or offer for sale of merchandise bearing
13 Plaintiffs Trademark in California and interstate commerce has and will
14 cause the likelihood of confusion, deception, and mistake in that
15 consumers will conclude that the products sold by the Defendant are
16 authorized, sponsored, approved, or associated with the Plaintiff.
17 29. Defendant's use in commerce of Plaintiffs Trademark in conjunction
18 with the sale of merchandise is an infringement of Plaintiff s registered
19 STR Trademark in violation of 15 U.S.C. 1114(1).
20 30.Defendant committed the acts alleged herein intentionally, fraudulently,
21 maliciously, willfully, wantonly, and oppressively with the intent to injure
22 the Plaintiff and its business.
23 31. The Plaintiff has suffered damages as a result of the Defendant's acts.
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1 32. The Infringing Products bearing the Plaintiffs Trademark that the
2 Defendant's manufactured, sold, distributed, or offered for sale constitutes
3 a counterfeit product pursuant to 15 U.S.C. 1116(d).
4 33. Pursuant to 15 U.S.C. 1117, Plaintiff is entitled to recovery of(1)
5 Defendant's profits; (2) Plaintiffs damages, including lost profits; and (3)
6 costs of the action. Plaintiff is further entitled to trebled damages above
7 the amount of actual damages in a sum of not more than three times the
8 amount of actual damages. Defendant's intentional and deceitful actions
9 make this a case in which the Plaintiff is entitled to an award of attorneys'
10 fees.
11 34. By reason of the aforementioned acts by Defendant, Plaintiffhas suffered
12 and will continue to suffer irreparable damage, in an amount to be
13 determined, and damages will continue unless and until enjoined by Order
14 of this Court.
15 CQJJNT I1 ..
16 U12S(a)/Lllnham Act 43(a)]
18 contained in paragraphs 1 through 34 and brings the following claim for
19 false designation of origin pursuant to 15 U.S.C. 1125(a) and the
20 Lanham Act 43(a) against the Defendant.
21 36. Defendant has used Plaintiffs registered STR Trademark in commerce in
22 connection with its own goods, where use is likely to cause confusion, or
23 to cause mistake, or to deceive as to the origin, sponsorship, association or
24 approval of such goods.
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1 37. By utilizing the Plaintiff's Trademark in its advertising for, and in
2 connection with its products, Defendant has misrepresented and falsely
3 described to the general public the origin and the source of the products
4 offered for sale. Further, it creates a likelihood of confusion, mistake or
5 deception to the ultimate purchaser as to the source of the products.
6 38. For example, Defendant markets, conducts business, and publicly
7 represents that the STR Trademark is associated or connected to the
8 Defendant's business thereby creating a false designation of origin of
9 Plaintiff's brand of goods and services.
10 39. The confusion, mistake, or deception referred to herein arises out of the
11 aforementioned acts of Defendant and the acts of the Defendant constitute
12 false designation of origin and unfair competition in violation of 15
13 U.S.C. 1125(a) and Section 43(a) of the Lanham Act.
14 40. Upon information and belief, the aforesaid acts of the Defendant were
15 undertaken willfully with the intention of causing confusion, mistake or
16 deception. Plaintiff is entitled, pursuant to 15 U.S.C. 1117, to recovery
17 of: (1) Defendant's profits; (2) Plaintiff's damages, including lost profits;
18 and (3) costs of the action. Plaintiff is further entitled to treble damages
19 above the amount of actual damages in a sum not more than three times
20 the amount of actual damages. Defendant's intentional and deceitful
21 actions make this a case in which the Plaintiff is entitled to an award of
22 attorneys' fees.
23 41. By reason of the aforementioned acts by Defendant, Plaintiffhas suffered
24 and will continue to suffer irreparable damage, in an amount to be
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JAT WHEELS INC.'s COMPLAINT
9
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determined, which damage will continue unless and until enjoined by
Order of this Court.
5 CQ!JNT HJ- FEDERAL
6 42. Plaintiff repeats and re-alleges, as if set forth herein, the allegations
7 contained in paragraphs 1 through 41 and brings the following claim for
8 trademark dilution pursuant to 15 U.S.C. 1125(c) against the Defendant
9 43. Plaintiff's registered Trademark is distinctive, well known and famous.
10 44. Defendant is diluting the distinctiveness of Plaintiff's Trademark by
11 marketing and selling inferior goods bearing marks virtually identical or
12 confusingly similar to Plaintiff's registered Trademark. Upon information
13 and belief, Defendant has engaged in the conduct alleged in these claims,
14 willfully intending to trade on Plaintiff's reputation and/or to cause
15 dilution of the reputable and distinctive Trademark owned by Plaintiff.
16 45. Defendant markets, conducts business, and publicly represents that the
17 Trademark is associated or connected to the Defendant's business thereby
18 creating a false designation of origin of Plaintiff's' brand of goods and
19 services. Thus, Defendant's acts violate 15 U.S.C. 1125(c).
20 46. As a direct and proximate result of Defendant's trademark dilution,
21 Plaintiff has and will continue to suffer damages to its business, reputation
22 and good will, and the loss of royalties and profits that Plaintiff would
23 have made but for Defendant's acts. Upon information and belief,
24 Defendant's acts of infringement have also resulted in substantial profits
25 for the Defendant. The amount of these damages will be proven at trial.
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1
2 COUNT
4 contained in paragraphs 1 through 46.
5 48. Plaintiffs were and are the exclusive holder of all rights, title and interest
6 in their photographs, as separate and distinct works.
7 49. Defendant has infringed and is infringing the copyrighted photographs by
8 unlawfully reproducing and using such photographs in violation of the
9 United States Copyright Act, 17 U.S.C. 106.
10 50. Defendant's infringement was and is willful, in bad faith, and executed
11 with full knowledge of Plaintiffs copyright, and in conscious disregard
12 for Plaintiffs exclusive rights in the protected work.
13 51. Defendant's deliberate infringement of Plaintiff s copyrights has greatly
14 and irreparably damaged Plaintiff.
15 52. Defendant's production of infringing products and copyrighted material,
16 and Defendant's wrongful conduct, have deprived and continue to deprive
17 the Plaintiff of their opportunity of expanding their goodwill. Plaintiff is
18 entitled to an injunction restraining Defendant, its officers, agents, and
19 employees, and all persons acting in concert with it, from engaging in any
20 further acts in violation of the copyright laws.
21 53.Plaintiff is further entitled to recover the damages, including attorneys'
22 fees, they have sustained and will sustain, and any gains, profits, and
23 advantages obtained by Defendant as a result of Defendant's acts of
24 infringement alleged above. At present, the amount of such damages,
25 gains, profits, are in an amount to be determined.
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JA T WHEELS INC.'S COMPLAINT
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2 54. Plaintiff repeats and re-alleges, as if set forth herein, the allegations
4 55. Plaintiff is the owner of all right, title, and interest in the' 155 patent,
5 titled "STR513 Wheel Design" duly and properly issued by the U.S.
6 Patent and Trademark Office on May 29, 2014. A copy of the '155 patent
7 is attached as Exhibit A.
8 56. Defendants have been and/or are directly infringing and/or inducing
9 infringement of and/or contributory infringing the' 155 patent by, among
10 other things, making, using, offering to sell or selling in the United States,
11 or importing into the United States, products that are covered by the
12 design patent, including, by way of example and not limitation, the SPT-2
13 wheel, attached as Exhibit B.
14 57. Plaintiff is informed and believes, and on that basis alleges, that
15 Defendant's infringement of the' 155 patent has been and continues to be
16 intentional, willful, and without regard to Plaintiffs rights. Plaintiff is
17 informed and believes, and on that basis alleges, that Defendant's
18 infringement of the' 155 patent is and has been intentional, deliberate, and
19 willful at least because it had knowledge of the' 155 patent through direct
20 or indirect communications with Plaintiff and/or as a result of its
21 participation in the aftermarket automobile parts industry.
23 Defendant has gained profits by virtue of its infringement of the' 155
24 Patent.
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1 59. Plaintiff has sustained damages as a direct and proximate result of
2 Defendant's infringement of the '155 Patent.
3
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5 COUNT VI- INFRINGEMENT OF TilE '156 PATENT
11 is attached as Exhibit C.
16 design patent, including, by way of example and not limitation, the SP-6
17 wheel, attached as Exhibit D.
19 Defendant's infringement of the '156 patent has been and continues to be
20 intentional, willful, and without regard to Plaintiff s rights. Plaintiff is
23 willful at least because it had knowledge of the '156 patent through direct
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3 Patent.
9 67. Plaintiff is the owner of all right, title, and interest in the '157 patent,
12 is attached as Exhibit E.
13 68.Defendants have been and/or are directly infringing and/or inducing
17 design patent, including, by way of example and not limitation, the SPT-8
18 wheel, attached as Exhibit F.
19 69 .Plaintiff is informed and believes, and on that basis alleges, that
20 Defendant's infringement of the '157 patent has been and continues to be
24 willful at least because it had knowledge of the '157 patent through direct
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5 Patent.
13 Patent and Trademark Office on May 29,2014. A copy of the '158 patent
14 is attached as Exhibit G.
19 design patent, including, by way of example and not limitation, the SP-8
20 wheel, attached as Exhibit H.
21 75 . Plaintiff is informed and believes, and on that basis alleges, that
22 Defendant's infringement of the' 158 patent has been and continues to be
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1 Yang & Wang, P.C.

Tommy SF Wang SBN: 272409

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