Brian Lichtenberg v. Alex & Chloe - TRO Oppn

Case 2:13-cv-06837-DDP-PJW Document 35 Filed 10/21/13 Page 1 of 31 Page ID #:1155
1 William R. Bailey, State Bar No. 245920

william@williamRbailey.com
2
Kathleen L. T. Tubania, State Bar No. 245856
3
kathleen@williamRbailey.com
BAILEY LAw CoRPORATION
4 4000 MacArthur Blvd., Suite 600
5
Newport Beach, CA 92660
Telephone: 714.881.5160
6 Facsimile: 888.737.8702
7 Attorneys for Defendants Alex & Chloe, Inc.,
8
'Christopher Walter Lichtenberg, Marked Showroom, LLC,
Jaqueline Yi, Tu Tran, Kyle Mockett, and Kaytee Enright
9
10
UNITED STATES DisTRICT CouRT
11
CENTRAL DISTRICT OF CALIFORNIA- WESTERN DIVISION
12
13
Brian Lichtenberg, LLC, a California
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limited liability company; and Brian
Lichtenberg, an individual,
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16
Plaintiffs,
17 v.
18 Alex & Chloe, Inc., a California
corporation, Christopher Walter
19
Lichtenberg, an individual; Marked
20 Showroom, LLC, a California limited
liability company; Jacqueline Yi, an
21 individual; Kyle Mockett, an individual;
22
Kaytee Enright, an individual,
23
Defendants.
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26
1 1 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - ~
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Case No. 2:13-CV-6837-DDP (PJWx)
OPPOSITION To PLAINTIFFS' Ex PARTE
APPLICATION FOR TEMPORARY RESTRAINING
ORDER
[FILED CoNCURRENTLY WITH DEFENDANTS'
EviDENTIARY OBJECTIONS TO THE PLAINTIFFS'
DECLARATIONS, DECLARATION OF WILLIAM
R. BAILEY, AND REQUEST FOR JUDICIAL
NoTICE]
Hon. Dean D. Pregerson
Date: None Set
Time: None Set
Place: Courtroom 3, 2nd Floor
Discovery Cut-Off: None Set
None Set Pre-Trial Conference:
Trial Date:
Action Filed:
None Set
September 17, 2013
OPPOSITION ro PLAINTIFFS' Ex P.<UITE APPLICATION FOR TEMPORARY REsTRAINING ORDER PAGE 1 OF 27
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1 Defendants Alex & Chloe, Inc. (herein "AC") and Christopher Walter Lichtenberg
2
(herein "CL") Gointly referred to as "ACCL"), Marked Showroom, LLC, Jaqueline Yi,
3
Tu Tran, Kyle Mockett, and Kaytee Enright (hereinafter "Defendants"), hereby oppose
4
5
Plaintiffs Brian Lichtenberg and Brian Lichtenberg, LLC's (hereinafter "Plaintiffs") Ex
6 Parte Application for Temporary Restraining Order and Order to Show Cause RE
7 Preliminary Injunction on the grounds set forth in the following Memorandum of Points
8
and Authorities.
9
Additionally, due to time constraints and page limitations, for which there is not
10
11
opportunity to request modifications, it is not possible to fully brief this matter.
12 Additional time and pages are requested to fully brief Defendants' Opposition to
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Plaintiffs' Ex Parte Application for TRO, which was previously DENIED THREE
14
TIMES by the state court.
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OPPOSITION ro PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY REsTRAINlNG ORDER PAGE 2 OF27
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1
TABLE oF CoNTENTS
2
PAGE
3
I. Introduction and Factual Background ...................................................................... 3
I
4
II. Plaintiffs Have Materially Changed their Facts ..................................................... .4
5
Ill. Plaintiffs are Forum-Shopping After 7 Months of Extensive and Costly State
6
Court Litigation ........................................................................................................ 6
7
8
IV. This Court Should Decline to Exercise Supplemental Jurisdiction and Stay
9
Plaintiffs' Lanham Act Claim ................................................................................... 7
10
V. The State Court Has Already Decided the Exact Same Ex Parte Issues in a
11
Previous OSC RE Preliminary Injunction Hearing .................................................. 8
12
VI. Plaintiffs Still Have Not Met Their Burden for a TRO ................................ ll
13
14
A) Plaintiffs Have No Urgent Matter that Justifies Ex Parte Relief and Plaintiffs'
15 Application for TROis Barred by Laches Due to Delay .................................. l2
16
B) Plaintiffs Still Cannot Establish a Likelihood of Success on the Merits ........... l3
17
1. There is NO Violation of Section 43(a) of the Lanham Act- Unfair
18
19
Competition ................................................................................................... l3
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a) The Facts Show that Plaintiffs Began Selling Their "Ballin Paris"
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Design After Defendants and Any Claim by Plaintiff for Unfair
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Competition Must Necessarily Fail ....................................................... 13
23
b) Plaintiffs have No Viable Lanham Act Claim ......................................... l4
24
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i) Plaintiffs' Trade Dress Does Not Identify the Source of the Plaintiffs'
26 Product ................................................................................................ 16
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TABLE oF CoNTENTs AND AuTHoRITIEs
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PAGE i ofii
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2
3
4
5
6
7
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ii) The Plaintiffs' Trade Dress is Not Distinctive and Does Not
Distinguish Plaintiffs' Goods From Those Manufactured or Sold by
Others Selling "Parody" or "Spoof'' Shirts ....................................... .18
iii) The Plaintiffs' Products Do Not Deserve Trademark Protection
Because Any Similar Trade Dress is "Functional" ............................ 22
iv) Defendants' Garment Labels Do Not Create a Likelihood of
Consumer Confusion ......................................................................... 23
2. Because Plaintiffs Cannot Conclusively Show Ownership in "Ballin Paris",
Plaintiffs' Claims in Their Other Causes of Action Must Also Fail to
Warrant Injunctive Relief ............................................................................. 24
C) Plaintiffs Cannot Establish a Likelihood of Irreparable Harm .......................... 24
D) The Balance of Equities Dictates that Defendants' NOT Be Enjoined ............. 25
E) Public Interest is Best Served by NOT Allowing Defendants to be
17
Enjoined .............................................................................................................. 26
18 VII. Expedited Discovery is Not Warranted ........................................................ 26
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PAGE ii ofii
1
TABLE OF AuTHORITIES
2
3 FEDERAL CASES
4 !Bradley v. Chiron Corp., 136 F. 3d 1317 (Fed. Cir. 1998) ................................................. 6
5
Christian Laboutin SA. v. Yves Saint Laurent Am. Holding, Inc.,
6
696 F. 3d 206 (2nd Cir., 2012) ................................................................................ 20
7
8
Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F. 3d 1252 (9
1
h Cir., 2001) ........................ 15
9 Herman Miller, Inc. v. Palazzetti Imports and Exports,
10
270 F. 3d 298 (6
1
h Cir., 2001) .................................................................................. 18
11
Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc.,
12
13
182 F. 3d 598 (8th Cir., 1999) ................................................................................. 12
14
Int'lJensen, Inc. v. Metrosound U.S.A., Inc.,
15 4 F. 3d 819 (9th Cir., 1993) ...................................................................................... 15
16 d
Knitwaves v. Lolly-togs Ltd. (Inc.), 71 F. 3d 996 (2n Cir. 1995) ...................................... 16
17
Miller v. California Pac. Med. Ctr., 991 F.2d 536 (9th Cir. 1993) .................................... 12
18
19
Mullis v. United States Bank. Ct., 828 F.2d 1385 (9th Cir. 1987) ........................................ 6
20 Nishimatsu Canst. Co. Ltd. v. Houston Nat'l Bank, 515 F. 2d 1200 (5th Cir. 1975) ............ 6
21 Polymer Technologies, Inc. v. Bridwell103 F. 3d 970 (Fed Cir. 1996) ............................ 12
22
Qualitex Co v. Jacobson Prods. Co., Inc.,
23
514 U.S. 159, 115 S. Ct. 1300 (1995) ..................................................................... 22
24
25
Samara Bros., Inc. v. Judy-Philippine, Inc. 969 F. Supp. 895 (S.D.N.Y., 1997) ............. 16
26 Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821 (9th Cir. 1997) ...................... 18
27
AND
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PAGE i ofii
1
2
3
4
TABLE OF AUTHORITIES
(CoNTINUED)
Tom Doherty Assoc., Inc v. Saban Entertainment, Inc., 60 F. 3d 27 (2nd Cir. 1995) ........ 121
Two Pesos, Inc. v. Taco Cabana, Inc.,
5
6 505 U.S. 763, 112 S. Ct. 2753 (1992) ..................................................................... 15
7 Walmart Stores, Inc. v. Samara Brothers, Inc.,
8
529 U.S. 205, 120 S. Ct. 1339 (2000) .................................................................... 14
9
10
West Coast, Inc. v. Snohomish County,
11
33 F. Supp. 2D 924 (W.D. Wash., 1999) .................................................................. 7
12 Winter v. Natural Resources Defense Council, Inc.,
13
555 U.S. 7, 129 S. Ct. 366 (2008) .......................................................................... 12
14
15
STATUTES
16
17 :15 u.s.c. 1127 ................................................................................................................ 14
18 28 u.s.c. 1367 .................................................................................................................. 7
19
Cal. Civ. Code 3426.1 .................................................................................................... 10
20 I
21
22
23
24
25
26
27
TABLE OF CoNTENTS AND AuTHORITIES
28 I
I
PAGE ii of ii
1 MEMORANDUM OF PmNTs AND AuTHORITIES
2
I. INTRODUCTION AND FACTUAL BACKGROUND
3
Plaintiffs filed this lawsuit on September 17, 2013 after dismissing a heavily
4
5
litigated and virtually identical verified complaint they filed on March 22, 2013 in the
6 Superior Court of California, County of Los Angeles, excepting the new perjurious
7 factual changes Plaintiffs inserted into their federal pleadings, because the state court
8
judge refused to grant a preliminary injunction.
1
After 7 months of intensive discovery,
9
motion practice, and on the eve of Defendants
1
demurrer and motion to strike hearings,
10
11
Plaintiffs dismissed their state court case on September 12, 2013. See Brian Lichtenberg
12 LLC, et al. v. Alex & Chloe, Inc., Los Angeles Superior Court, Case Number BC503835
13
(hereinafter "State Case"). However, the State Case is still pending before the state
14
court on the IDENTICAL issues because Defendants filed a Cross-Complaint against
15
Plaintiffs which was not dismissed.
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17
Importantly, this exact issue which is before this Court today is the exact same
18 issue which was DENIED by the state court on three separate occasions.
19
The heart of Plaintiffs
1
complaint in state court was that Plaintiff believed
20
Defendants stole the "Ballin Paris" design and used Plaintiffs' contacts to sell the
21
merchandise. Defendants/Cross-Complainants ACCL
1
s state court allegations are
22
23 essentially the opposite of Plaintiffs. Plaintiffs stole ACCL's "Ballin Paris" design,
24
which was publicly release for sale by ACCL on January 27, 2013, and Plaintiff's also
25 11---------
1 Plaintiffs asserted the following COA: (1) Breach of Contract, (2) Conversion, (3) Unfair Competition, ( 4) Breach of
26
Fiduciary Duty and Duty of Loyalty; (5) Intentional Interference with Prospective Economic Relations; (6) Negligent
Interference with Prospective Economic Relations, (7) Misappropriation of Trade Secrets; (8) Defamation, Libel, and
Slander; (9) Intentional Infliction of Emotional Distress; (10) Negligent Infliction of Emotional Distress; (11) Declaratory
27 Relief; and (12) Common Count.
OPPOSITION ro PLAINTIFFS' Ex PARTEAPPUCATION FOR TEMPORARY RESTRAINING ORDER PAGE 3 OF 27
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1 Ilbreached their contracts with Defendant CL related to other designs.
2
2
II. PLAINTIFFS HAVE MATERIALLY CHANGED THEIR FACTS
3
Plaintiffs filed their first application for TRO on March 28, 2013, which was
4
II
IIsummarily granted by the state court, however, on April 19, 2013 at the OSC for
6 IIPreliminary Injunction, the state court reversed it's position and dissolved the TRO. The
7 court then went to great lengths in a nine (9) page order discussing why a TRO and
8 Preliminary Injunction should not issue for Plaintiffs. See Exhibit J to Defendant's
9
Request for Judicial Notice, Department 86 April 19, 2013 Minute Order.
11
Of particular importance, the state court indicated that the facts provided by both
12 IIparties was "inconclusive" as to the dispositive issue of who created the Ballin Paris
13 IIdesign first. Id. at page 4 of 9. The court cited to the following facts:
14
1) Plaintiff conceived the Ballin Paris design in September 2012,
2) CL's employment with Plaintiff began in January 2013,
3) at some unspecified time Plaintiff's shared the Ballin Paris idea with CL,
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4) CL's infringing acts took place DURING his employment by Plaintiff's.
17
In opposition to Plaintiffs' claims, the court noted
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1) CL began working on a Balmain parody in June 2012, but the exhibit does
not support that conclusion,
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2) CL arrived at his Ballin Paris design on October 21,2012,
3) AC had sweatshirts printed with the Ballin design by January 21, 2013.
21
Surprisingly, despite having filed an original Verified Complaint, upon which the
22 "foregoing order was based, and having filed a Verified First Amended Complaint on
23
April 23, 2013 which also conformed to the above facts, on May 23, 2013, in Brian
24
11-------
2 Defendants asserted the following CGA: (1) False Advertising, (2) Breach of Contract (Partnership), (3) Breach of
26 II Contract (Employment), (4) Intentional Interference with Contractual Relations, (5) Intentional Interference with
Prospective Economic Advantage, (6) Negligent Interference with Prospective Economic Advantage, (7) Trade Libel, (8)
II Libel, (9) Slander, (10) Fraud and Intentional Deceit, (11) Declaratory Relief, (12) Accounting, and (13) Breach of
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Confidence.
OPPOSITION TO PLAINTIFFS I Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 4 OF 27
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1 Lichtenberg's Declaration in Support of Plaintiff's Ex Parte Application for a TRO (2
nd
2 Attempt), Brian changes his position and now claims to have conceived the idea for the
3
Ballin Paris design on January 29, 2012 as a result of an email exchange with Kanye
4
West.
6 Not surprisingly, this email with Kanye West has nothing to do with Balmain or a
7 parody thereof, the word "ballin" in the email was used only once as a verb in the
8 subject line (as oppose to a noun), and Brian now has a sketch from his day-planner
9
showing a completed sketch on January 29, 2012. See Exhibit N to Defendant's Request
11 for Judicial Notice, Brian Lichtenberg's May 28, 2013 Declaration at 1f25.
12 These new and contradictory facts are also found in the instant federal complaint
13 at 1f1f 45,46, and Exhibit B, only they have been massaged a little more AND these new
14
and contradictory facts can also be found in the current moving papers. See Brian
Lichtenberg's Declaration in Support Plaintiff's Ex Parte Application for a TRO dated
16
17 October 14, 2013 at 1f32.
18 Additionally, other new "facts" seem to have emerged in Brian's current
19 declaration, including that he supposedly shared his idea with Reda Bouaissa, a cross-
defendant in the State Case, AND began sketching the design on January 30, 2012, AND
21 II
22 Brian apparently shared the design with CL in March 2012. [d. at 1f1f34-37.
23 These new factual revelations are not coincidental. I would hope the timing of
24 these revelations are not lost on the court. Only after the state court identified Plaintiff's
legal hurdles, but incidentally not before Plaintiffs filed a First Amended Complaint, did
26
the Plaintiff's miraculously discover new and contradictory supporting facts that
27 "
OPPOSITION TO PLAINTIFFS' Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 5 OF 27
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1 miraculously cure some defects identified by the state court. See Exhibits A-DD of
2 Defendants Request for Judicial Notice.
3
The Court is not obligated to accept contradictory facts from earlier pleadings,
4
II
"exhibits attached to the complaint, or facts that can be judicially noticed even in the most
6 IIfavorable context of a 12(b)(6) review, so the Court clearly is not required to accept them
7 in the instant ex parte application and should NOT do so now. Bradley v. Chiron Corp.
8 136 F3d 1317,1324 (Fed. Cir. 1998) (the court may strike the changed allegations as
9
"false and sham"); Nishimatsu Const. Co. Ltd. v. Houston Nat'l Bank 515 F2d 1200,1206
11 1I(5
th
Cir. 1975); Mullis v. United States Bank. Ct. 828 F2d 1385,1388 (9
th
Cir. 1987).
12 II III. PLAINTIFFS ARE FORUM-SHOPPING AFTER 7 MONTHS OF EXTENSIVE AND COSTLY STATE
13
COURT LITIGATION
14
Plaintiffs' State Case was instigated by Plaintiffs in March of 2013. Defendants
IIACCL immediately filed their complaint as cross-complaint in response. Since that
16 "time, numerous motions have been heard by the state court, including three ex parte
II
17
TROs by Plaintiff, which were denied, an ex parte motion to compel by Plaintiff, which
18
19 "was denied, an ex parte protective order by Defendants, which was granted, voluminous
JJdiscovery has been conducted, and case management hearings have been held.
21 Although, not inconsequentially, Defendants most important pleadings, their
22 demurrers and motions to strike, have not been heard by the court due to Plaintiffs
23
dismissal, notwithstanding, the state court has made several important and telling
24
I/findings regarding ultimate viability of Plaintiffs' claims in it's order denying Plaintiffs'
26 IIrequest for a Preliminary Injunction.
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1 II Furthermore, the parties have spent tens of thousands of dollars intensely litigating
2 "this case in the state court and the state court has had the pleasure of spending it's limited
3
judicial resources overseeing this matter and it's heavy motion practice.
4
Finally, even a cursory review of Plaintiffs' unregistered trademark infringement
6 IIcause of action reveals that this cause of action is not only meritless, but also state law
7 claims predominate this lawsuit. Plaintiffs' federal claim is a red-herring inserted for the
8 sale purpose of changing forums. The same facts and circumstances have been and
9
continue to be at issue in the ongoing State Case.
IV. THIS COURT SHOULD DECLINE TO EXERCISE SUPPLEMENTAL JURISDICTION AND STAY
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PLAINTIFFS' LANHAM ACT CLAIM.
12
Defendants respectfully request that this Court decline to exercise its supplemental
13
1411jurisdiction in this case for two reasons: (1) state law claims predominate over the ONE
IIfacially unsupportable federal claim asserted under the Lanham Act and (2) failing to
16 II decline will result in "duplicative litigation, wasted judicial resources, needless
17
expenditures for both parties, conflicting case schedules, a potential race to judgment,
18
19 II and/or the possibility of inconsistent verdicts". See 28 USC 1367(c)(2);West Coast,
Vnc. v. Snohomish County, 33 F. Supp. 2D 924, 925 (W.D. Wash. 1999).
21
In this case, Plaintiffs' entire complaint rests on who owns the "Ballin Paris"
22
design, which is the same issue currently pending in the state court. Plaintiffs' one and
23
24 Iionly federal cause of action under the Lanham Act is their claimed trademark rights in
lithe phrases "Ballin" and "Ballin Paris" and in the "fabrics, stitching, and label location"
26 ~ o n their products. See Plaintiffs Complaint at ~ ~ 4 2 , 61, 67, 95, 103, 110, 111, and 114.
27
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1 However, Plaintiffs have utterly failed to identify how a phrase not related to
2 Plaintiffs' name indicates the source of goods printed with that phrase. Plaintiffs have
3
also failed to show how the "fabric, stitching, and label location" on their products
4
II
lIindicate the source of the goods. Nowhere do Plaintiffs claim to have created a new
6 IIfabric for its garment labels, nor have they claimed they developed a new form or style
7 of stitching and virtually every manufacturer places a label on the inside rear collar of
8 their shirts and sweatshirts. There is nothing about the fabric, stitching, and garment
9
label location or any combination thereof that is unique to Plaintiffs.
11
Plaintiffs' Lanham Act claim is unsupportable on its face and should be dismissed
12 Iland, even if it could survive, it is still outweighed by the state law claims currently
13 "pending in the state court.
14
v. THE STATE COURT HAS ALREADY DECIDED THE EXACT SAME Ex PARTE ISSUES IN A
PREVIOUS OSC RE PRELIMINARY INJUNCTION HEARING
16
Even a cursory comparison of Plaintiffs' federal complaint and state complaint
17
reveals that Plaintiffs dismissed their complaint in the state court on September 17, 2013
18
only to file the exact same complaint, excepting Plaintiff's NEW AND
19
CONTRADICTORY FACTS and a cause of action under the Lanham Act, to get a
21 IIsecond bite of the apple.
22
Plaintiffs previously applied THREE TIMES for an ex parte TRO in the state
23
court, each time making the same exact arguments. When Plaintiffs filed for their first
24
IITRO, they summarily received a their order, but it was short lived. Once the Court was
26 liable to review the parties' massive amount of moving papers the preliminary injunction
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1 Ilwas denied and the TRO dissolved. When Plaintiffs filed their second ex parte TRO, it
2 "too was denied because the did not meet their burden of showing irreparable injury. The
II
3
Court then ordered Plaintiffs to refrain from bringing any further ex parte TROs.
4
II
nHowever, Plaintiffs ignored the court's order and when they filed a third ex parte TRO,
6 lithe court threatened them with sanctions if they did not immediately withdraw it.
7 In determining whether or not to issue a preliminary injunction in the state court
8 case, the Honorable Joanne O'Donell of the Los Angeles Superior Court made clear that
9
Plaintiffs' Application for TRO, and their entire Complaint, rests on
11
three principle claims as unfair business practices: that
Defendant Lichtenberg is (1) misappropriating, marketing and
12 selling his [Plaintiff's] designs; (2) misappropriating his
[Plaintiff's] contacts to assist in his marketing and selling of the
13
"Ballin" concept; and (3) running a "smear campaign" against
Plaintiff on social media.
14
IISee page 3 of 9 of Exhibit J to Defendants Request for Judicial Notice. Each of
16 IIPlaintiffs' successive TROs were based on the same three claims, and Plaintiffs' instant
17
federal complaint is again based on the same three claims. The state court made clear
18
that PlaintiffFAILED to make an evidentiary showing that they will likely prevail on
19
these claims.
21 First, the State Court found that Plaintiff HAD NOT and CANNOT prove that any
22 misappropriation occurred. The facts considered by the court tend to show that Plaintiffs
23
were NOT the first in time to market or create the "Ballin Paris" design. The court made
24
!!clear that "if Plaintiff is seeking to enjoin the use without his consent of a design he
26 IIcreated, he would be making a copyright claim...As a result, an attempt to bring a
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1 Iistatutory business practices action would fail, as federal copyright law preempts state
2 IIl aw." [d. at pages 4-5.
3
II
3
Moreover, the court went on to state that because the facts tend to show that
4
IIDefendants were first in time to market the "Ballin Paris" design, no "palming off' or
6 lIunfair competition claim can survive. [d. at page 5. This is because, the state law unfair
7 competition claim necessarily requires "that the defendant be trying to exploit a
8 competitor's reputation", which is impossible for Defendants to have done because their
9
Ballin Paris design was first to the market and bearing Defendant AC's name. Regarding
11 I/Plaintiffs' state unfair competition claims, the court stated that "Plaintiff fails to
12 Iidemonstrate the likelihood that he will prevail on the only viable claim that can be
13 IIbrought in state court on this basis." [d. at page 5. Plaintiffs have again included a
14
California unfair competition act claim, despite the court's previous finding that no such
claim was viable. Thus, Plaintiffs did not meet evidentiary requirements for obtaining a
16
17 TRO or preliminary injunction on the basis that Defendants had allegedly stolen
181lPlaintiffs' "Ballin Paris" design.
19
Second, regarding Plaintiffs' claims that Defendants had misappropriated
Plaintiffs' vendor lists the court found that such did not warrant a TRO or preliminary
21
II
22 lI injunction because California's Uniform Trade Secret Act requires that a trade secret be
23 Iisubject to reasonable protective measures to ensure its secrecy and Plaintiff plead no
24 "such facts. Civil Code 3426.1(d)(2)."4
II
3 It is important to note that Plaintiffs have NOT included a copyright infringement claim in this case.
26 "4Plaintiffs now seem to claim that the misappropriated trade secrets are NOT the vendor/ customer lists they previously
claimed in the state court. Now, Plaintiffs claim that the misappropriated trade secrets are the "Ballin Paris" design itself and
27 II the specific details of its garments, such as fabrics, size, color, etc., which are publicly available!
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1 II The court went on to point out that "it appears that the 'confidential information'
2 "involved solicitation of clothing boutiques, such as Kitson and Revolve Clothing. These
II
3
entities are not difficult to find and their need to purchase clothing to sell in their retail
4
II
1J0utlets is not a secret which requires time and money to discovery. Moreover, it appears
6 Iithat the parties both realize publicity from having their clothes on sale in these stores,
7 suggesting that the information is not particularly confidential." Id. at pages 6-7. In
8 addition, these clothing boutiques routinely list on their websites the names of ALL
9
designers they carry, which would give ANY lay person knowledge that Plaintiffs do in
11 Ilfact sell clothing to the certain boutique.
12 II Third, any claims that Defendants are engaging in a "smear campaign" against
13 IIPlaintiffs cannot stand because, and most importantly, "the sole specific support for this
14
claim is not actionable if Plaintiff has not demonstrated by the preponderance of the
evidence that he created the "Ballin" concept." Id. at page 7.
16
17 Clearly, these claims are rooted in state law. The fact that Plaintiffs have now
18 II asserted the same claims in federal court should not now render a different result. 5
19
VI. PLAINTIFFS STILL HAVE NOT MET THEIR BURDEN FOR A TRO
Plaintiffs seeking a ex parte TRO and/or preliminary injunction must establish:
21
(A) that ex parte relief is warranted; (B) a likelihood of success on the merits; (C) a
22
likelihood of irreparable harm to Plaintiffs in the absence of preliminary relief; (D) the
23
24 balance of equities tips in Plaintiffs' favor; and (E) an injunction is in the public interest.
115 Federal courts ruling on state law claims must apply the same statutes and case law as the state court would (or did in this
case), which ultimately ensures that "the outcome of the litigation in the federal court should be substantially the same, so
26 II far as legal rules determine the outcome ofa litigation, as it would be if tried in a State court." See Guaranty Trust Co. of
New York v. York (1945) 326 U.S. 99, 109; "The Erie rule is rooted in part in a realization that it would be unfair for the
II character or result ofa litigation materially to to differ because the suit had been brought in a federal court." Hanna v.
27 Plumer (1965) 380 U.S. 460,467.
28
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1 II Winter v. Natural Resources Defense Council, Inc. 555 U.S. 7, 129 S. Ct. 366 (2008).
2
A) PLAINTIFFS HAVE NO URGENT MATTER THAT JUSTIFIES Ex PARTE RELIEF AND_
PLAINTIFFS' APPLICATION FOR TRO IS BARRED BY LACHES DUE TO DELAY
3
4
Plaintiffs filed this lawsuit on September 17, 2013 and waited an entire month
"until October 17, 2013,just three (3) days before Defendants' answers are due, to file
6
an ex parte application for a TRO. See Central District of California Civility and
7
8 "Professionalism Guidelines (B)(2) & (3). This is the same application for TRO that
9 "Plaintiffs filed three times before in state court and refused to file via noticed motion on
lithe date they reserved with the state court, October 3, 2013.
11
The defense of laches is available to Defendants where the Defendant can show
12
both delay and prejudice resulting from the delay. Tom Doherty Assoc., Inc v. Saban
13
14 Entertainment, Inc. (2
nd
Cir. 1995) 60 F, 3d 27, 39. Moreover, since laches is a defense
lito trademark infringement, it should also be considered by the courts in evaluating the
16 II likelihood of success ofa trademark infringement claim. See Hubbard Feeds, Inc. v.
17
IAnimal Feed Supplement, Inc. (8
th
Cir. 1999) 182 F, 3d 598,601-02. Most importantly,
18
any delay in seeking injunctive relief may defeat a Plaintiff's claim ofirreparable
19
injury. Miller v. California Pac. Med. Ctr. (9
th
Cir. 1993) 991 F,2d 536, 544; Polymer
21 IITechnologies, Inc. v. Bridwell (Fed Cir. 1996) 103 F. 3d 970, 976.
22
Plaintiffs have asserted the exact same claims in the state court and have been
23
aggressively litigating that case for the past 7 months. Plaintiffs applied three times for
24
!Ian ex parte TRO in state court and they were denied. Both sides have already spent tens
26 Ilof thousands of dollars arguing the same issues now before this Court, which are also
27
28
5
10
15
20
25
1 Ilconcurrently before the state court.
2
During last 7 months, Plaintiffs NEVER claimed to have any trademark rights in
3
their product design or trade dress, as they do now. The entire time, Plaintiffs have
4
IIclaimed that the "Ballin Paris" design belonged to Plaintiffs under a work for hire
6 lIagreement. Realizing that their argument fails because Defendant AC clearly had begun
7 manufacturing garments bearing the design no later than January 17, 2013 well before
8 CCL began working for Plaintiffs on January 21, 2013, Plaintiffs began to assert claims
9
of unfair competition. After seven months of not being able to obtain a TRO and
11 IIreceiving denials from the state court after each successive application for TRO (3 in
12 Iitotal), Plaintiffs are now attempting to get a second bite of the apple in federal court.
13
B) PLAINTIFFS STILL CANNOT ESTABLISH A LIKELIHOOD OF SUCCESS ON THE MERITS
14
The Honorable Joanne O'Donell went to great lengths in issuing a 9 page order
denying Plaintiffs' previous application for preliminary injunction explaining why
16
17 Plaintiffs have not and cannot establish a likelihood of success on the merits. Even after
18 filing the instant federal complaint with their new and contradictory "facts", it is readily
19 apparent that Plaintiffs still cannot establish a likelihood of success on the merits.
As mentioned, supra, the Court should NOT consider Plaintiff's contradictory
21
II
22 Jacts, or at a minimum, attribute little creditability to them as false and a sham.
23 Ill) There is NO Violation of Section 43(a) of the Lanham Act Unfair Competition
24
a) The Facts Show that Plaintiffs Began Selling Their "Ballin Paris" Design
AFTER Defendants and Any Claim by Plaintiff for Unfair Competition
Must Necessarily Fail.
26
The state court made clear that any unfair competition or "palming off' claims by
27
OPPOSITION TO PLAINTIFFS' Ex PARTE ApPLICATlON FOR TEMPORARY RESTRAINING ORDER PAGE 13 OF 27
28
II
II
5
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1 "Plaintiffs were NOT sustainable because the facts tend to show that Defendants were
2 "first in time to sell the product in the marketplace. Any unfair competition claim
3
necessarily requires "that the defendant be trying to exploit a competitor's reputation",
4
IIwhich is impossible for Defendants to have done because their Ballin Paris design was
6 II first to the market. Plaintiffs readily admit that Defendants' "Ballin Paris" design was
7 first to market. Any confusion in the public market was brought on by Plaintiffs copying
8 Defendants. See Plaintiff's Ex Parte Application for Temporary Restraining Order
9
(hereinafter "Plaintiffs' TRO") at page 8 lines 11-14).
bl Plaintiffs have NO Viable Lanham Act Claim
11
12 The Lanham Act is not a blanket protection mechanism for product designs and in
13 fact states that only certain aspects of a product are able to be protected by trademark for
14
the purpose of identifying and distinguishing the source of the goods.
6
See Walmart
Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000).
16
17 Nevertheless, Plaintiffs' argument as to Defendants' alleged violation of the
18 Lanham Act is misplaced, and Plaintiffs rely on inapposite case law. The relief Plaintiffs
19 seek would be more appropriate in a copyright infringement case, which they cannot and
have not done - despite previous direction by the State Court.?
21
Instead, Plaintiffs go to great lengths to claim that EVERYTHING, including the
22
23 II"Ballin Paris" text creates a protectable trademark by stating that the "combination of
24 "cut, color, style, fabric, stitching, label sizes, text, logo placement, font and packaging of
116 [t]he Lanham Act provides for the registration of trademarks, which it defines in 45 to include "any word, name,
symbol, or device, or any combination thereof [used or intended to be used] to identify AND distinguish [a producer's]
goods... from those manufactured or sold by others AND to indicate the source of the goods..." 15 U.S.C. 1127.
26 FThe Supreme Court has stated that "the producer can ordinarily obtain protection for a design that is inherently source
identifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright
27
for the design." Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 214 (2000)
28
5
10
15
20
25
1 IIPlaintiffs' products have come to uniquely identify the products as being those of
2 IIBRIAN LICHTENBERG in the minds of the consuming public." (See Plaintiffs' TRO at
II
3
14: 5-7). Interestingly, the complaint does not go this far, but Plaintiffs argument
4
FAILS for many reasons.
6 First, Plaintiffs are essentially claiming that the DESIGN of their product warrants
7 trademark protection, which the courts have referred to as a "trade dress," and "courts
8 have assumed, often without discussion, that dress constitutes a "symbol" or "device."
9
Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000). Many courts
11 I, have held that "[t]rade dress refers generally to the total image, design, and appearance
12 II ofa product and 'may include features such as size, shape, color, color combinations,
13 texture or graphics. '" Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F. 3d 1252, 1257 (9
th
14
Cir. 2001), citing Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4F3d 819, 822 (9
th
Cir.
1993). As a result, although
16 "
[n]othing in 43(a) explicitly requires a producer to show that
17
its trade dress is distinctive, ...courts have universally imposed
18
that requirement, since without distinctiveness the trade dress
would not "cause confusion... as to the origin, sponsorship, or
19
approval of [the] goods," ... Distinctiveness is, moreover, an
explicit prerequisite for registration of trade dress under 2 of
the Lanham Act and "the general principles qualifying a mark
21
for registration under 2 of the Lanham Act are for the most
part applicable in determining whether an unregistered mark is
22
entitled to protection under 43(a).
23
Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210, 120 S. Ct. 1339, citing
24
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753 (1992).
26 (Emphasis Added).
27
OPPOSITION TO PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 15 OF 27
28
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1
2
i) Plaintiffs' Thade Dress Does NOT Identify the Source of the Plaintiffs'
Product
3 II The first and foremost requirement that Plaintiffs fail to meet is the requirement
4 that their products identify or distinguish the source. In Knitwaves v. Lolly-togs Ltd.
(Inc.), 71 F. 3d 996 (2
nd
Cir. 1995), the court made clear that the "primary purpose of
II
6
Knitwaves' sweater designs is aesthetic rather than source-identifying." In Knitwaves,
7
8 ~ t h e Plaintiff created a clothing line for girls containing sweaters and matching skirts and
9 IIpaints with a "fall motif' such as "leaves, acorns, squirrels" and the sweaters "employed
what Knitwaves designers describe as innovative color schemes, using "fall" colors such
11 as mustards and browns, rather than the usually brighter children's tones." Ibid. at 1000
12
01. Courts have held that whether a 'design was likely to be understood as an indicator
13
14 of the product's source" requires the courts to consider several factors which
include the manufacturer's subjective intentions, whether the
design was a common basic shape or design, whether it was
16
unique or unusual in particular field, whether it was a mere
refinement of a commonly adopted and well-known form of
17
ornamentation for a particular class of goods, and the similarity
18
of the product to others on the market.
19 "Samara Bros., Inc. v. Judy-Philippine, Inc. 969 F. Supp. 895, 898 (S.D.N.Y. 1997).
In this case, Plaintiffs claim that Defendants have copied the"combination of
21
II
22 II cut, color, style, fabric, stitching, label sizes, text, logo placement, font and packaging of
23 IIPlaintiffs' products" is essentially Plaintiff claiming that Defendants copied their
24 designs, which are purely aesthetic and have NO bearing as to the SOURCE of the
products. This is because Plaintiffs do not allege that any particular word or name is
26
being used to identify or distinguish their goods, nor are Plaintiffs claiming that any
27 "
28
5
10
15
20
25
1 liparticular word, name, or symbol is being used to indicate the source of their goods.
8
2 "Rather, Plaintiffs assert that the design of having a plain cotton t-shirt with a catchy
II
3
phrase on the front of the shirt in bold contrasting color is what they seek to have
4
Ilprotected by trademark law.
Courts have also held that
6
7
[a]s a practical matter, .. .it is less common for consumers to
recognize the design of a product or product feature [as
8
opposed to packaging features] as an indication of source.
9
Product designs are more likely to be seen as merely
utilitarian or ornamental aspects ofthe goods. In addition, the
competitive interest in copying product designs is more
11
substantial than in the case of packaging, containers, labels, and
related subject matter. Product designs are therefore not
12 ordinarily considered inherently distinctive and are thus
normally protected only upon proofof secondary meaning.
13
14 IIKnitwaves v. Lolly-togs Ltd. (Inc.), 71 F. 3d 996, 1008 (2
nd
Cir. 1995). Thus, the cut,
lIcolor, style, fabric, stitching, label sizes, text, logo placement, and font of the Plaintiffs'
16 "goods are deemed the design of the Plaintiffs' products and those clearly do NOT
II
17
identify the source of the product.
18
The only part of Plaintiffs' claims which indicates the source of the product is the
19
/lpackaging, which consists of the garment label and tag. Plaintiffs provides no
21 supporting evidence that Defendants copied their label or tag and the evidence that is
22 provided by Plaintiff's actually shows that Defendant's garment label and tag is
23
materially different from Plaintiffs'. See Exhibit 47 of Brian Lichtenberg Declaration in
24
II Support of Plaintiff's Ex Parte TRO.
26[[8 Plaintiffs spend a significant amount of time in their moving papers claiming that various words,not names, are used by
them in the design of their goods, which Plaintiffs claim are mainly parodies rooted in the names of famous designers or
27
vernacular. See Plaintiffs' TRO at 2:17-23, 3:1-6.
28
5
10
15
20
25
1
in Plaintiffs' Trade Dress is NOT Distinctive and Does NOT Distinguish
2
Plaintiffs' Goods From Those Manufactured or Sold By Others Sellin&:
"Parody" or "Spoof' Shirts.
3
Because Plaintiffs' trade dress does NOT identify the source, the court need not
4
"consider whether or not the trade dress distinctive. This is because
6
the elements making up the alleged trade dress must have been
used in such a manner as to denote product source. Thus, a
7
product feature whose ONLY impact is decorative and
aesthetic, with no source-identifying role, cannot be given
8
exclusive rights under trade dress law.
9
Stephen w: Boney, Inc. v. Boney Servs., Inc., 127 F,3d 821, 828 (9
th
Cir. 1997).
11 IINevertheless, the facts are clear that Plaintiffs' trade dress is not distinctive in any way.
12 II To determine whether or not goods are distinctive, the courts have held that goods
13\\may be deemed distinctive in one of two ways:
14
First, a mark is inherently distinctive if '[its] intrinsic nature
serves to identify a particular source'....Second, a mark has
acquired distinctiveness, even if it is not inherently
16
distinctive, if it has developed secondary meaning, which
occurs when, 'in the minds of the public, the primary
17
significance of a [mark] is to identify the source of the product
18
rather than the product itself.
19 "Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210-11 (2000).
Here, the first test has been deemed to not apply in product design cases. Herman
21
II
22 Miller v. Palazetti Imports and Exports, 270 F, 3d 298, 309 (6
th
Cir. 2001).9
23 Additionally, there is nothing inherently distinctive about the Plaintiffs' goods.
24 /I - - - = ~ = ~ ~
9The Supreme Court noted several reasons why the inherently distinctive test should not be applied in trade dress cases
Ilbased on product design. The Court noted the fact that product design "almost invariably serves purposes other than source
identification," such as making products more useful or appealing... the Court also stated that application of the inherently
26 II distinctive test in product design cases could deprive consumers of 'the benefits of competition with regard to the utilitarian
and esthetic purposes that product design ordinarily serves... "Herman Miller v. Palazetti Imports and Exports, 270 F. 3d
11298, 309 (6
th
Cir. 200 I). Moreover, "to the extent that difficult cases exist, ...courts should err on the side of caution and
27 classify ambiguous trade dress as product design, thereby requiring secondary meaning." Ibid at 310.
28
5
10
15
20
25
1 IIWhat Plaintiffs introduce into the market are t-shirts, tanks, sweatshirts and beanies that
2 "Plaintiffs purchase in bulk from a third party manufacturer. Plaintiffs then have them
3
printed or embroidered with a design including popular vernacular or parodies of famous
411
phrases or names. Plaintiffs do not create the fabric, nor do they dictate the cut of the
6 fabric or the stitching. Plaintiffs merely select from the offering of their third-party
7 manufacturer with Plaintiffs being one of many customers that the third-party
8 manufacturer provides a completed garment ready for customization.
9
Furthermore, Plaintiffs' trade dress/design is NOT unique to the market. For
11 example, Kitson, a boutique which sells pieces from Brian LichtenbergAND various
12 other designers, also carries similar t-shirts and tanks with catchy phrases or parodies of
13 famous phrases and names such as: (1) "Aint Laurent Without Yves" designed by What
14
About Yves (black shirt printed with gold foil, which parodies fashion designer Yves
Saint Laurent), (2) YSL by Paislee (black tee with gold logo, which also parodies Yves
16
17 Saint Luarent), (3) Celfie (black shirt with white writing or white shirt with black
18 writing, which parodies fashion designer Celine). See Exhibit A to Declaration of
19 William Bailey in Support of Defendants Opposition to Plaintiffs TRO.
The reality is that a catchy phrase or parody of a famous name or designer is a
21
22 trendy thing to do and everyone is doing it. The fact that Plaintiffs' design consists of a
23 cotton t-shirt, tank top, sweatshirt, etc. that contains a bold phrase or parody on the
24 middle of the shirt is not distinctive nor does it indicate that the goods were created by
Pl'
amtI
'ff
s.
26
Moreover, the Plaintiffs' designs have NOT developed a secondary meaning.
27
28
5
10
15
20
25
1 Plaintiffs ONLY argument under secondary meaning is based on a misapplication of the
2 Clicks Billiards
lO
case and they misstate the rule for secondary meaning by claiming that
II
3
"evidence of deliberate copying alone suffices to show secondary meaning." Rather, the
4
II
court in Clicks Billiards actually stated that "in appropriate circumstances, deliberate
6 copying may suffice to support an inference of secondary meaning." Clicks Billiards at
7 1264. However, the courts have also held that 11
8
the crucial question in a case involving secondary meaning
9
always is whether the public is moved in any degree to buy an
article because of its source... Factors that are relevant in
determining secondary meaning include (1) advertising
11
expenditures, (2) consumer studies linking the mark to a source,
(3) unsolicited media coverage of the product, (4) sales success,
12 (5) attempts to plagiarize the mark, and (6) length and
exclusivity of the mark's use.
13
14 II Christian Laboutin v. Yves Saint Laurent America, 696 F. 3d 206 (2
nd
Cir. 2012). Even in
cases where secondary meaning MAY be found, the courts have narrowly tailored any
16 secondary meaning. Ibid.
17
In Christian Laboutin, the court found that "the secondary meaning of the mark
18
held by Laboutin extends only to the use of lacquered red outsole [of Laboutin's shoes]
19
that contrasts with the adjoining portion of the shoe." Ibid. To justify its narrowly
21 tailored finding, the court found "that Laboutin originated this particular commercial use
22 of the lacquered red color over twenty years ago....Laboutin invested substantial amounts
23
of capital building a reputation and good will, as well as promoting and protecting
24
1110 The Plaintiffs' reliance on Clicks Billiards, Inc. is not applicable in this case because the court in Clicks Billiards, Inc.
only found that a trade dress FOR A BILLIARDS HALL can be inherently distinctive. The trade dress at issue here is a
26 II product-design trade dress. See Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 214-215 ("the decor ofa
restaurant [or even a billiards hall], seems to us not to constitute product design. It [decor of a restaurant] was either product
IIpackaging- which, as we have discussed, normally is taken by the consumer to indicate origin-or else some tertium quid that
27 is akin to product packaging and has no bearing on the present case.")
28
5
10
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20
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1 Laboutin's claim to exclusive ownership of the mark as its signature in women's high
2 fashion footwear." Ibid.
3
In this case, Plaintiffs claim to have been creating various t-shirts, tank tops,
4
sweatshirts, and beanies for approximately 5 years in various colors with various catchy
6 phrases or various parodies of famous designers. Plaintiffs' claim that ANY of their
7 products have obtained a secondary meaning is without merit: (1) Plaintiffs do not have
8 exorbitant advertising expenditures. Plaintiffs themselves admit that they have conducted
9
email campaigns with the apparently free help of Defendant CL.; (2) There are NO
11 consumer studies to show that ANY of Plaintiffs' parody t-shirts link them to Plaintiffs,
12 (this is especially enlightening considering that Plaintiff's own vendors, such as Kitson,
13 also carry similarly designed parody garments by competing designers) See Exhibit A to
14
Declaration of William Bailey in Support of Defendants Opposition to Plaintiffs TRO;
(3) compared to Christian Laboutin, Plaintiff's unsolicited media coverage of the
16
17 occasional celebrity wearing his t-shirts simply pales in comparison; (4) Plaintiffs do not
18 have international sale success, and namely sell their clothing through their largest
19 distributor Kitson, a Southern California boutique with a handful of stores; (5) Plaintiffs
do not have people attempting to plagiarize any particular mark, rather Plaintiff claims
21 II
22 that it is the act of using a plain shirt and placing a catchy phrase in bold letters that is
23 infringing on their rights; (6) Plaintiffs admit that they have only been creating parody t
24 shirts for 5 years and that the "Ballin Paris" design was only placed into the stream of
commerce this year (with Defendants ACCL being first in time).
26
Most importantly, Plaintiffs are not asking for the court to protect any particular
27
OPPOSITION TO PLAINTIFFS I Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 21 OF 27
28
5
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1 lI"mark" or "trade dress" that is prominent and internationally recognized, like the red
2 "sole shoes of Christian Laboutin. Rather, Plaintiffs are asking the court to protect their
3
right (and give them a monopoly) in buying pre-manufactured garments and printing
4
II
catchy phrases on them with bold letters. This is certainly NOT the type of trademark
6 that has attained secondary meaning, nor is it the type of narrowly tailored secondary
7 II meaning courts have chosen to protect in any prior cases.
8
iii) THE PLAINTIFFS' PRODUCTS Do NOT DESERVE TRADEMARK PROTECTION
9
BECAUSE ANY SIMILAR TRADE DRESS IS "FUNCTIONAL".
Plaintiffs' claim that Defendants copied the"combination of cut, color, style,
11
"fabric, stitching, label sizes, text, logo placement, font and packaging of Plaintiffs'
12
products" is essentially Plaintiffs claiming that Defendants should be restrained from
13
14 selling plain single-colored cotton t-shirts with printing on the front and a label affixed to
lithe inside back of the shirt. EVERY aspect which Plaintiffs complain of is functional
16 Iland cannot be protected through trademark protection.
17
The U.S. Supreme Court has expressly stated that
18
[a] product feature is functional and cannot serve as a
19
trademark if the product feature is essential to the use or
purpose of the article or if it affects the cost or quality of the
article, that is, if exclusive of the feature would put competitors
21
at a significant non-reputation-related disadvantage.
22 "Qualitex Co v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165, 115 S. Ct. 1300 (1995). In
23
particular,
24
the functionality doctrine, the Supreme Court recently
explained, 'prevents trademark law, which seeks to promote
26 competition by protecting a firm's reputation, from instead
inhibiting legitimate competition by allowing a producer to
27
OPPOSITION TO PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 22 OF 27
28
I
1
control a useful product feature...Protection of functional
2
product features is the province of patent law, not trademark
law.
3
Knitwaves v. Lolly-togs Ltd. (Inc.), 71 F. 3d 996, 1006 (2
nd
Cir. 1995)
4
The cut, color, fabric, and stitching of the Plaintiffs' product is functional. The
5
6 II style of a t-shirt, tank, or sweater is again functional. There are only so many ways a
7 garment can be cut and stitched together. The fabric of the product, which is a cotton
8 blend, that is pre-manufactured by a third-party and sold to numerous wholesale buyers,
9
Plaintiffs being one of the many, is again functional and not subject to protection.
10
11
iv) DEFENDANTS' GARMENT LABELS DO NOT CREATE A LIKELIHOOD OF
CONSUMER CONFUSION
12
As mentioned, supra, the state court was quick to point out that there can be no
13
14 II unfair competition claim by Plaintiffs in this case because Defendants were first in time
15 lito release the Ballin Paris design. As such, any consumer confusion is a direct result of
16 II Plaintiffs, decision to release the design second in time instead of filing a lawsuit.
17
Additionally, Plaintiff's claim that a consumer seeing AC's label on a garment,
18
IIwhich clearly says "Alex & Chloe", could somehow confuse a consumer into thinking it
19
20 Ilwas actually Brian Lichtenberg garment is nonsensical. Even if the garment label is
21 placed in the same location (inside back collar), made of the same fabric, stitched in the
22 same way, and even if the colors choices and font were identical. The fact is that one
23
clearly says "Alex & Chloe" and the other clearly says "BLTEE Brian Lichtenberg".
24
2511see Exhibit 47 to Brian Lichtenberg's Declaration in Support of Plaintiff's TRO.
26 II No rational person can be confused by garment label bearing different names.
27
OPPOSITION TO PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER PAoe 23 0' 27
28
1
5
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1 112) BECAUSE PLAINTIFFS CANNOT CONCLUSIVELY SHOW OWNERSHIP IN "BALLIN PARIS",
PLAINTIFFS CLAIMS IN THEIR OTHER CAUSES OF ACTION MUST ALSO FAIL TO WARRANT
2 II
INJUNCTIVE RELIEF.
3
Plaintiffs have not provided evidence to conclusively show that they were first to
4
/I
create the "Ballin Paris" design. Instead, both parties claim to have created the design.
6 The only fact that is true, and which the state court was quick to point out and Plaintiffs
7 openly admit, is that Defendants did in fact release the design first AND that Plaintiffs,
8 without the help of Defendants, chose to manufacture and distribute the same exact
9
design AFTER Defendants had begun selling it.
11
Moreover, Defendants made clear and the state court acknowledged that AC had
12 Iisweatshirts manufactured with the "Ballin Paris" before CL ever began working for
13 IIPlaintiffs on January 21, 2013.
14
C) PLAINTIFFS CANNOT ESTABLISH A LIKELIHOOD OF IRREPARABLE HARM
In this case, any irreparable harm Plaintiffs may be asserting occurred in the past,
16
17 Ilpresumably during the past seven months during which the state court lawsuit has been
18 1I0ngoing. Incidentally, it is also the same irreparable harm that AC is suffering.
19
From this point forward, any irreparable harm that would be inflicted on Plaintiffs
is again also the same irreparable harm currently being inflicted on the Defendants.
21
II
22 II Granting a TRO would only result in increasing the amount of irreparable damages
23 lIimposed on Defendants.
24
Plaintiffs still cannot show conclusively that they own the "Ballin Paris"
"trademark and preventing Defendants from using a design that they were first to design
26
and first to put out in the stream of commerce would be akin to punishing Defendants for
27 "
28
5
10
15
20
25
1 Plaintiffs' intentional decision to copy Defendants' design, choose to sell a design exactly
2 like Defendants, and then Plaintiffs' calculated decision to seek damages for their
3
inability to sell a design that they chose to copy and market following AC.
4
Additionally, any claim that there is confusion in the marketplace because the
6 II Lichtenberg brothers share the last name is absurd. The ONLY reason CL's name is even
7 associated with Alex & Chloe, Inc is because of Plaintiffs' lawsuit and continuous
8 attempts to bring wildly untrue personal attacks against CL in the moving papers.
9
Plaintiffs are adding flames to their own fire. CL is a private individual and has chosen
11 to operate under the brand name Alex & Chloe. He continues to operate, advertise, and
12 package his products under the name Alex & Chloe. In fact, the crux of Plaintiffs'
13 argument is that CL is getting an awful lot of recognition for the Ballin Paris design
14
which Brian Lichtenberg was unable to steal. CL did not want any recognition for the
design. All of the advertising and marketing for "Ballin Paris" show Alex & Chloe as
16
17 the creator. There is no confusion between the two brothers other then that created by
18\\Plaintiffs.
19
Finally, Plaintiffs' ability to lay claim to any irreparable harm necessarily requires
Plaintiffs to be able to show that they were the owner and creator of the design in the
21 II
22 IIfirst place. Otherwise, all Plaintiff is really doing is seeking determination of their rights
23 IIBEFORE trial.
24
D) THE BALANCE OF EQUITIES DICTATES THAT DEFENDANTS' NOT BE ENJOINED
For seven months now, Plaintiffs have NEVER claimed trademark infringement
26
in the state court case and they have been denied an injunction or three separate
27 "
28
5
10
15
20
25
1 occasions by the state court. Now, after realizing that the state court is not going to give
2 them an injunction, they have chosen to forum-shop, change their facts, and move their
3
claims to the federal court despite the fact that the Defendants' Cross-Complaint against
411
Plaintiffs alleging the exact opposite of Plaintiffs' Federal Complaint is still ongoing.
6 Moreover, Defendants were first to create and first to release to the public the
7 "Ballin Paris" design. Plaintiffs were well aware that Defendants had already begun
8 selling the product. Yet, Plaintiffs chose to create a design EXACTLY as Defendants and
9
begin selling the product as well. Plaintiff's could have chosen to simply file a lawsuit,
11 but they didn't. Plaintiffs' actions were intentional and a calculated attack on CL and
12 should not be rewarded peremptorily.
13
E) PUBLIC INTEREST Is BEST SERVED By NOT ALLOWING DEFENDANTS TO BE ENJOINED
14
In this case, it is very apparent that the only confusion by the public is to the issue
of WHO actually owns the design. The public is not confused when they buy a AC
16
17 garment thinking it is a BLTEE garment or vise versa. Each garment by both designers
18 are clearly labeled respectively. More importantly, all confusion by the public is a direct
19 result of Plaintiffs' choice to copy Defendants' design and to place the exact same design
in the stream of commerce AFTER Defendants had already been selling the design. The
21 II
22 public interest is not served by enjoining Defendants. Rather, the public interest would
23 be served by enjoining Plaintiffs as the architects of any purported public confusion.
24
VI. EXPEDITED DISCOVERY IS NOT WARRANTED
There is nothing special about this case that warrants expedited discovery. On
26
May 14, 2013 Plaintiffs filed an ex parte application in the State Case to expedite
27 "
28
5
10
15
20
25
1 IIdiscovery; it was DENIED. Plaintiffs are now once again seeking to expedite discovery
2 II' h' +
m t IS J.orum.
3
In short, Plaintiffs claim irreparable harm is occurring so they are entitled to ex
411
parte hearing for this TRO and they absolutely need expedited discovery because of this
6 irreparable harm, yet, Plaintiffs openly admit that they willfully dismissed their state
7 II court case which has been bitterly fought since March 2013.
8
If Plaintiffs are incurring irreparable harm and discovery is so urgent, why did
9
Plaintiffs not file a regularly noticed motion for a protective order and continue to
11 conduct discovery in the State Case? Why have they chosen to RE-START the process
12 Iiall over again in a totally different forum, add NEW AND CONTRADICTORY FACTS,
13 and add a gratuitous cause of action under the Lanham Act for an alleged unregistered
14
trademark which is duplicative of their unfair competition and misappropriation claims
they already had asserted in the state court? The simple answer: Plaintiffs are forum
16
17 shopping AND hoping that this Court won't read their prior sworn pleadings.
18 Defendants respectfully request that Plaintiffs be denied expedited discovery, a
19 TRO, and a Preliminary Injunction.
DATED: OCTOBER 21, 2013 BAILEY LAW CORPORATION
21
/S/ WILLIAM R, BAILEY
22
23
WILLIAM R. BAILEY, ArrORNEYS FOR DEFENDANTS
24
26
27
28
5
10
15
20
25
1 IIWilliam R. Bailey, State Bar No. 245920
william@williamRbailey.com
2 llKathleen L. T. Tubania, State Bar No. 245856
3 Ilkathleen@williamRbailey.com
BAILEY LAW CORPORATION
4 114000 MacArthur Blvd., Suite 600
liNewport Beach, CA 92660
Telephone: 714.881.5160
6 IIFacsimile: 888.737.8702
7 "Attorneys for Defendants Alex & Chloe, Inc.,
8 II Christopher Walter Lichtenberg, Marked Showroom, LLC,
Jaqueline Yi, Tu Tran, Kyle Mockett, and Kaytee Enright
9
UNITED STATES DISTRICT COURT
11
CENTRAL DISTRICT OF CALIFORNIA-WESTERN DIVISION
12
Brian Lichtenberg, LLC, a California
13 II limited liability company; and Brian
14 IILichtenberg, an individual,
Plaintiffs,
16
v.
17
Alex & Chloe, Inc., a California
18 II corporation, Christopher Walter
Lichtenberg, an individual; Marked
19 II Showroom, LLC, a California limited
IIliability company; Jacqueline Yi, an
individual; Kyle Mockett, an individual;
21 II Kaytee Enright, an individual,
22
Defendants.
23
24
Case No. 2:13-CV-6837-DDP (PJWx)
DECLARATION OF WILLIAM R. BAILEY IN
SUPPORT OF DEFENDANT'S OPPOSITION TO
PLAINTIFFS Ex PARTE APPLICATION FOR A
TEMPORARY RESTRAINING ORDER
[FILED CONCURRENTLY WITH DEFENDANTS'
OPPOSITION, EVIDENTIARY OBJECTIONS
PLAINTIFFS' DECLARATIONS, AND REQUEST
FOR JUDICIAL NOTICE]
Hon. Dean D. Pregerson
Date: None Set
Time: None Set
Place: Courtroom 3, 2
nd
Floor
Discovery Cut-Off: None Set
Pre-Trial Conference: None Set
Trial Date: None Set
Action Filed: September 17, 2013
26 11-----------------
DECLARATION OF WILLIAM R. BAILEY IN SUPPORT OF DEFENDANT'S OPPOSITION TO PLAINTIFFS Ex PARTE PAGE 1 OF 2
ApPLICATION FOR A TEMPORARY RESTRAINING ORDER
27
28
Case 2:13-cv-06837-DDP-PJW Document 35-1 Filed 10/21/13 Page 1 of 10 Page ID
#:1186
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//1, William R. Bailey, hereby declare as follows:
1. I am an attorney duly licensed to practice law in the State of California and before
this Court and I am the principal attorney of the Bailey Law Corporation and we
shall be the attorneys of record for Defendants Alex & Chloe, Inc., Christopher
Lichtenberg, Jacqueline Yi, Marked Showroom LLC, Kyle Mockett, and Kaytee
Enright.
2. I have personal knowledge of the foregoing facts and could and would testify
competently thereto if called upon to do so.
3. I make this declaration in support of Defendants Opposition to Plaintiffs Ex Parte
Application for a Temporary Restraining Order.
4. On October 21, 2013, I searched the internet and www.shopkitson.com and found
few examples of competing designers with similar stylistic designs to those
designs currently being sold by Brian Lichtenberg at Kitson and other retailers.
See Exhibit A attached hereto.
DATED: OCTOBER 21, 2013 BAILEY LAW CORPORATION
/S/ WILLIAM R. BAILEY
WILLIAM R. BAILEY, ArrORNEYS FOR DEFENDANTS
DECLARATION OF WILLIAM R. BAILEY IN SUPPORT OF DEFENDANT'S OPPOSITION TO PLAINTIFFS Ex PARTE PAGE 2 OF 2
ApPLICATION FOR A TEMPORARY RESTRAINING ORDER
#:1187
#:1188
ShopKitson.com - The Online Store For The Famous Kitson Boutique 10/21/13 12:24 PM
WHAT'S NEW WOMEN
SEARCH RESULTS
Displaying results for yves
(20 products found)
MEN KIDS & BABIES

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BEAUTY & FRAGRANCE BOOKS

FREE GROUND SHIPPING ON ORDERS OVER $100
MY ACCOUNT MY BAG (0) yves
GIFTS & NOVELTIES KITSON MERCHANDISE SALE
SIGN UP FOR EMAIlB
Ain't Laurent Tee
What About Yves
$48.00
Girls Ain't Laurent Tee
What About Yves
$48.00
Women's Black Alnt Laurent Sw...
"U,,"
What About Yves
$85.00
FIllY ...
Jet Setter
$95.00
Men's BlackIGold Laurent Pullover
What About Yves
$85.00
Women's BlackfGold Laurent Pu...
What About Yves
$85.00
Men's BlackIGold Laurent Tank
What About Yves
$58.00
Men's BlackIGold Laurent Tee
What About Yves
$58.00
Women's Black/Gold Laurent Tank Women's Black/Gold Laurent Tee Ain't Laurent Without Yves Hat Ain't Laurent Without Yves Hat
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http://www.shopkitson.com/index.php?page=search&keywords=yves&x=O&y=O Page 1 of 2
4-
#:1189
ShopKitson.com - The Online Store For The Famous Kitson Boutique 10/21/13 12:24 PM
$58.00 $58.00 $48.00 $48.00
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Mens White Aint Laurent Tee
What About Yves
$58.00
Womens White Aint Laurent Tee
What About Yves
$58.00
Mens Black Ain't Laurent Tee
What About Yves
$58.00
Womens Black Aln1 Laurent Tee
What About Yves
$58.00
AlN't'LAORENI'

Mens White Ain't Laurent Tank
What About Yves
$58.00
Women. White Aln1 Laurent rank

What About Yves
$58.00
Mens Black Ain't Laurent Tank
What About Yves
$58.00
Warnens Black Ain't Laurent Tank
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What About Yves
$58.00
ABOUT CUSTOMER SERVICE STORE LOCATIONS
,fl''''
PRIVACY POLICY CAREERS 0i 2013 KITSON Al.l. RIGHTS RESERVED.
STAY IN TOUCrO (iF}
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http://www.shopkitson.com/index.php?page=search&keywords=yves&x=O&y=O Page 2 of 2
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#:1190
You Seem Lost Cut Off T by Kill Brand - ShopKitson.com 10/21/13 12:33 PM
MY ACCOUNT MY BAG (0) search keyword or item #
WHAT'S NEW WOMEN MEN KIDS & BABIES BEAUTY & FRAGRANCE BOOKS GIFTS & NOVELTIES KITSON MERCHANDISE SALE
SIGN UP FOR
HOME I MEN I TEES & TANKS I YOU SEEM LOST CUT OFF T
Kill Brand - You Seem Lost Cut Off T
$38.00
SKU: 065869
SIZE
QUANTITY
ADD TO CART
Share This On Twllter Share This on Facebook
DESIGNER CONTACT US
DETAILS
Basic cutoff T shirt.
100% colton.
Made In USA.
Roil Over For Close Up
i
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ABOUT CUSTOMER SEflVlCE STORE LOCATIONS PRIVACY POLICY CAREERS 2013 KITSON ALL RIGHTS RESERVED.
STAY IN TOUCHt)
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http://www.shopkitson.com/index.php?page=product&id=17085 Page 1 of 1
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#:1191
Passion Elle A Pullover by Sol Angeles - ShopKitson. com 10/21/13 12:29 PM
MY ACCOUNT MY BAG (0) search keyword or item #
SIGN UP FOR EMAllB
HOME I WOMEN I SWEATERS I PASSION ELLE A PULLOVER
COMPLETE THE LOOK
Sol Angeles - Passion Elle A Pullover
$98.00
SKU: 064780
SIZE
QUANTITY
Britt Careless Denim Shorts
JU)O10 Ct\IH
Share This On Twitter Share This on Faeebook
DESIGNER CONTACT US
DETAILS
Add a 1I"le twist to the classic LA.
Cute and comly
Crew-neck
Printed
48"10 rayon/48% polyester/4% spandex
Roll Over For Close Up
YOU MAY ALSO LIKE
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ABOUT CUSTOMER SERVICE STORE LOCATIONS PRIVACY POLICY CAREERS 2013 KITSON ALL RIGHTS RESERVED.
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#:1192
Women's YSL Tee by Paislee - ShopKitson.com 10/21/13 12:26 PM
MY ACCOUNT MY SAG (0) search keyword or item # (?
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Paislee - Women's YSL Tee
$58.00
SKU: 055465
SIZE

QUANTITY
ADD TO CAHT
Share This On Twitter Share This on Facebook
DESIGNER CONTACT US
DETAILS
Black tee with gold YSL logo on front.
Conceived and Produced in Chicago,
100% Cotton
Roll Over For Close Up
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#:1193
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PRODUCTS ABOUT RETURNS & EXCHANGES CONTACT CART
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#:1194
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Home Products About Returns & Exchanges FAQ's Wholesale Contact Cart Twitter
Copyright 2013 Sincerely Jules
BACK TO SITE
http://sincerelyjules.bigcartel.com/
Page 2 of 2
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#:1195

Brian Lichtenberg v. Alex & Chloe - TRO Oppn

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Brian Lichtenberg v. Alex & Chloe - TRO Oppn

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Case 2:13-cv-06837-DDP-PJW Document 35 Filed 10/21/13 Page 1 of 31 Page ID #:1155

1 William R. Bailey, State Bar No. 245920

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Brian Lichtenberg v. Alex &amp; Chloe - TRO Oppn

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Brian Lichtenberg v. Alex &amp; Chloe - TRO Oppn

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Case 2:13-cv-06837-DDP-PJW Document 35 Filed 10/21/13 Page 1 of 31 Page ID #:1155

1 William R. Bailey, State Bar No. 245920

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Brian Lichtenberg v. Alex & Chloe - TRO Oppn

Brian Lichtenberg v. Alex & Chloe - TRO Oppn