Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 1 of 21 Page ID #:1

1
2
3
4
5
6
7

KILPATRICK TOWNSEND & STOCKTON LLP
GREGORY S. GILCHRIST (State Bar No. 111536)
RYAN BRICKER (State Bar No. 269100)
Eighth Floor, Two Embarcadero Center
San Francisco, California 94111
Telephone: (415) 576-0200
Facsimile: (415) 576-0300
Email:
gilchrist@kilpatricktownsend.com
rbricker@kilpatricktownsend.com
Attorneys for Plaintiff
PATAGONIA, INC.

8

UNITED STATES DISTRICT COURT

9

FOR THE CENTRAL DISTRICT OF CALIFORNIA

10

WESTERN DIVISION – LOS ANGELES

11

PATAGONIA, INC.,
Plaintiff,

12
13
14
15

v.
NOLAN SMITH, ALEX
TOMASZEWSKI, DOE
DEFENDANT NO. 1,

Case No. 2:15-cv-9779
COMPLAINT FOR TRADEMARK
INFRINGEMENT, UNFAIR
COMPETITION, AND DILUTION

JURY TRIAL DEMAND

Defendants.

16
17
18

This lawsuit seeks to stop Nolan Smith, Alex Tomaszewski, and Doe

19

Defendant No. 1 (collectively, “Defendants”) from infringing, misusing, and trading

20

on Patagonia, Inc.’s (“Patagonia”) trademarks, copyrights, brand name, reputation,

21

and goodwill. Defendants are manufacturing, selling, and offering apparel products

22

that bear “Patagucci” logos and designations that mimic Patagonia’s famous trade-

23

mark and logo and copy artwork that belongs to Patagonia, including through the

24

patagucci.clothing website. To stop this conduct, Patagonia alleges as follows:
PARTIES, JURISDICTION, AND VENUE

25
26

1.

Patagonia is a California corporation headquartered at 259 West Santa

27

Clara Street, Ventura, California 93001. Patagonia has been designing, developing,

28

and marketing clothing for more than forty years. Today, Patagonia and the
COMPLAINT
Case No. 2:15-cv-9779

-1-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 2 of 21 Page ID #:2

1

PATAGONIA brand are famous around the world for innovative apparel designs,

2

quality products, and environmental and corporate responsibility.

3
4
5
6
7

2.

Nolan Smith is an individual who, on information and belief, resides

at 74 Yosemite Court, Ventura, California 93003.
3.

Alex Tomaszewski is an individual who, on information and belief,

resides at 212 Grandville Avenue SW, Apt. 502, Grand Rapids, Michigan 49503.
4.

Doe Defendant No. 1 (“Doe Screenprinter”) is a screen printing com-

8

pany that, on information and belief, is headquartered at 4848 Colt Street, #12,

9

Ventura, California 93003. It is applying the PATAGUCCI designation and related

10

designs on apparel products, and selling said products to Mr. Smith and

11

Mr. Tomaszewski.

12

5.

Patagonia’s trademark claims arise under the Trademark Act of 1946

13

(the Lanham Act), as amended by the Trademark Dilution Revision Act of 2006

14

(15 U.S.C. §§ 1051, et seq.). Patagonia’s claims for copyright infringement arise

15

from Defendants’ infringement of Patagonia’s exclusive rights under the United

16

States Copyright Act (17 U.S.C. §§ 101, et seq.). This Court has jurisdiction over

17

such claims pursuant to 28 U.S.C. §§ 1338(a) and 1338(b) (trademark and unfair

18

competition), 17 U.S.C. § 501 (copyright), 28 U.S.C. § 1331 (federal question),

19

and 15 U.S.C. § 1121 (Lanham Act).

20

6.

This Court has personal jurisdiction over Defendants because

21

Defendants have purposefully availed themselves of the privilege of doing business

22

in this district. Doe Screenprinter is located in and does business in this district,

23

including with Mr. Smith and Mr. Tomaszewski. Patagonia is informed and

24

believes that Mr. Smith resides and does business in this district, and that Mr. Smith

25

and Mr. Tomaszewski own and operate an interactive website that is accessible by

26

Internet users in this district and offers their services and products to residents of

27

California and this judicial district. The infringing products that Doe Screenprinter

28

manufactures and sells to Mr. Smith and Mr. Tomaszewski, and which Mr. Smith
COMPLAINT
Case No. 2:15-cv-9779

-2-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 3 of 21 Page ID #:3

1

and Mr. Tomaszewski advertise and offer to purchasers through their website, are

2

capable of being ordered by and shipped to purchasers in California and, Patagonia

3

is informed and believes, Defendants have produced products and made sales in

4

California and this judicial district, and have delivered their products here.

5

7.

Venue is proper in this Court under 28 U.S.C. §§ 1391 and 1400(a)

6

because Defendants transact business in this district, infringe Patagonia’s intellec-

7

tual property in this district, and a substantial part of the events giving rise to the

8

claims asserted arose in this district.
FACTUAL ALLEGATIONS COMMON TO ALL CLAIMS

9
10
11

The History of Patagonia
8.

Yvon Chouinard started Patagonia in the late 1960s to design and sell

12

climbing clothes and other active sportswear. He adopted “PATAGONIA” to dif-

13

ferentiate the business from another family business that designed and manufactured

14

climbing gear and tools. Patagonia was chosen as the trademark to call to mind

15

romantic visions of glaciers tumbling into fjords, jagged windswept peaks, gauchos,

16

and condors. Since at least 1973, the PATAGONIA brand has appeared on a multi-

17

colored label inspired by a silhouette of the jagged peaks of Mt. Fitz Roy skyline

18

framed by a stormy sky.

19

9.

In the more than forty years since Patagonia’s business started,

20

PATAGONIA has become one of the most identifiable brands in the world. Its

21

products sold under the PATAGONIA brand now include a range of active sport-

22

swear, including products designed for climbing, skiing and snowboarding, surfing,

23

fly fishing, and trail running, which are sold around the world. It also sells

24

PATAGONIA gear and backpacks, as well as food products.

25

10.

Over the years, Patagonia has earned accolades for every aspect of its

26

business. Its products have won numerous awards for their technical merit, includ-

27

ing, most recently, Outside Magazine’s Gear of the Year in 2014 and 2015; the

28

National Geographic Adventure Blog “Gear of the Year” award in 2010, 2013,
COMPLAINT
Case No. 2:15-cv-9779

-3-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 4 of 21 Page ID #:4

1

and 2014; and the Editor’s Choice and Top Pick awards from OutdoorGearLab.

2

In 2015, Yvon Chouinard, Patagonia’s founder, was inducted into the American

3

Marketing Association Marketing Hall of Fame.
11.

4

Patagonia also has won numerous awards and certifications for its

5

business initiatives, including receiving the Sustainable Business Council’s first

6

“Lifetime Achievement Award.” In 1996, with an increased awareness of the

7

dangers of pesticide use and synthetic fertilizers used in conventional cotton grow-

8

ing, Patagonia began exclusively using organically grown cotton and has continued

9

that use for nearly twenty years. It was a founding member of the Fair Labor

10

Association, which is an independent multi-stakeholder verification and training

11

organization that audits apparel factories. Additionally, since 1985 Patagonia has

12

pledged one percent of sales to grassroots environmental groups to preserve and

13

restore our natural environment, donating more than $70 million. In 2002,

14

Patagonia’s founder Yvon Chouinard, along with others, created a non-profit called

15

1% For the Planet to encourage other businesses to do the same. Today, more than

16

1,200 member companies have donated more than $100 million to more than 3,300

17

nonprofits through 1% For the Planet. In 2012, Patagonia became one of

18

California’s first B Corporations, ensuring Patagonia could codify into its corporate

19

charter consideration of its workers, community, and the environment.

20

The PATAGONIA Trademark
12.

21

Patagonia owns numerous registrations for the PATAGONIA trade-

22

mark, and for its distinctive multi-colored logo depicting the Mt. Fitz Roy skyline

23

(the “Fitz Roy Design”), for a wide ranging assortment of products. Among these

24

are the following U.S. trademark registrations:

25

/ / /

26

/ / /

27

/ / /

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

-4-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 5 of 21 Page ID #:5

1
2

Trademark

3
4
5

PATAGONIA

Reg. No. /
Reg. Date
1189402/
February 9,
1982

Men’s and Women’s
Clothing-Namely,
Sweaters, Rugby Shirts,
Walking Shorts, Trousers,
Jackets, Mittens, Hoods
and Rainwear.

08/1974

1294523/
September
11, 1984

Men’s, Women’s and
Children’s ClothingNamely, Jackets, Pants,
Vests, Gloves, Pullovers,
Cardigans, Socks,
Sweaters, Underwear,
Shirts, Shorts, Skirts and
Belts

08/19741981

1775623/
June 8, 1993

Luggage back packs, and
all-purpose sports bags

08/1988

1811334/
December 14,
1993

Luggage, back packs,
fanny packs and allpurpose sport bags, footwear, ski bags and ski
gloves

08/1990

2260188/
July 13, 1999

Computerized on-line
10/1995
ordering activities in the
field of clothing and accessories; Providing information in the field of technical
clothing and accessories
for use in recreational,
sporting and leisure activeties; providing information
in the field of existing and
evolving environmental
issues

2392685/
October 10,
2000

On-line retail store and
mail order services featuring technical clothing,
footwear, and accessories;
Computer services in the
nature of on-line information related to the environment and clothing

6
7
8
9
10
11
12

Goods

Date of
First Use

13
14
15
16

PATAGONIA

17
18
19
20
21

PATAGONIA

22
23
24
25
26

PATAGONIA.COM

27
28
COMPLAINT
Case No. 2:15-cv-9779

10/1995

-5-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 6 of 21 Page ID #:6

1
2

Trademark

3
4

PATAGONIA

5

Reg. No. /
Reg. Date
2662619/
December 17,
2002

Goods

Date of
First Use

Retail store services featur- 06/1986
ing clothing, footwear,
luggage and a wide variety
of sporting goods and
accessories

6
7

These registrations and applications for the PATAGONIA mark and logos are in full

8

force and effect. The registrations have become incontestable under 15 U.S.C.

9

§ 1065. A color image of the Fitz Roy Design follows:

10
11
12
13
14
15
16

In addition Patagonia owns common law marks, including a logo that uses waves in

17

place of the Fitz Roy skyline on a multi-colored background (the “Wave Design”):

18
19
20
21
22
23
24
25

Collectively, these marks, Patagonia’s other registered trademarks, and its common

26

law marks are referred to as the “PATAGONIA trademarks.” Patagonia also owns

27

a registered copyright (Reg. No. VA 1-801-788) for the Fitz Roy Design, and has

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

-6-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 7 of 21 Page ID #:7

1

applied for a copyright registration of its copyright for the artwork used in the Wave

2

Design (Application No. 1-2540423641).

3

13.

The PATAGONIA trademarks are distinctive, arbitrary, and fanciful,

4

entitled to the broadest scope of protection, and certain of the PATAGONIA trade-

5

marks are registered in ninety countries.

6

14.

For many years prior to the events giving rise to this Complaint and

7

continuing to the present, Patagonia annually has spent enormous amounts of time,

8

money, and effort advertising and promoting the products on which its

9

PATAGONIA trademarks are used. PATAGONIA brand products are advertised in

10

print and on the Internet. In addition to advertising by Patagonia, the PATAGONIA

11

trademarks are also advertised and promoted and presented at point of sale by

12

numerous retailers. Consumers, accordingly, are exposed to the PATAGONIA

13

trademarks in a variety of shopping and post-sale contexts.

14

15.

Patagonia has sold its PATAGONIA brand products all over the world,

15

including throughout the United States and in California. Through its promotion

16

and investment in its brand and extensive sales, publicity, awards, and leadership in

17

sustainable sourcing practices, Patagonia has acquired enormous goodwill in its

18

PATAGONIA trademarks. The PATAGONIA trademarks have long been famous

19

within the meaning of the Trademark Dilution Revision Act; the PATAGONIA

20

trademarks enjoy strong consumer recognition, and are recognized around the world

21

and throughout the United States by consumers as signifying high quality products

22

made by a responsible company.

23

Defendants’ Infringement of Patagonia’s Trademark Rights

24

16.

Patagonia is informed and believes that, in 2013, long after the

25

PATAGONIA trademark became famous, Defendants started and continue to

26

market and sell a line of products under the brand name PATAGUCCI and to

27

identify their retail services with the PATAGUCCI designation. Making it clear that

28

the brand designation is intended to refer to Patagonia, Defendants have copied the
COMPLAINT
Case No. 2:15-cv-9779

-7-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 8 of 21 Page ID #:8

1

font in the PATAGONIA trademark, as well as the artwork in the Fitz Roy and

2

Wave logo designs, and used them as part of their own logo. On information and

3

belief, Doe Screenprinter manufactures the products at the direction of Defendants

4

Mr. Smith and Mr. Tomaszewski, and the two individuals sell PATAGUCCI

5

products through their website, www.patagucci.clothing, and offer to deliver their

6

products throughout the United States. Defendants Mr. Smith and

7

Mr. Tomaszewski advertise and market their products through, without limitation,

8

an Instagram account located at instagram.com/shoppatagucci and a Twitter account

9

located at twitter.com/shoppatagucci. Despite their obvious copying and intent to

10

appropriate Patagonia’s goodwill, Defendants assert a proprietary interest in the

11

PATAGUCCI designations and logos by, without limitation, (a) noting in the care

12

label of their garments that they are “authentic” PATAGUCCI products, and

13

(b) alleging that other products bearing the PATAGUCCI LOGO are fake.

14

Examples of these claims follow.

15

/ / /

16

/ / /

17

/ / /

18

/ / /

19

/ / /

20

/ / /

21

/ / /

22

/ / /

23

/ / /

24

/ / /

25

/ / /

26

/ / /

27

/ / /

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

-8-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 9 of 21 Page ID #:9

1

Defendants’ Claims Regarding PATAGUCCI Designation

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21

/ / /

22

/ / /

23

/ / /

24

/ / /

25

/ / /

26

/ / /

27

/ / /

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

-9-

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 10 of 21 Page ID #:10

1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
17.

20

The patagucci.clothing e-commerce site is registered to

21

Mr. Tomaszewski but, on information and belief, belongs to Defendants Mr. Smith

22

and Mr. Tomaszewski jointly. The site advertises the following products which

23

were the object of a test purchase by Patagonia to confirm its information and belief

24

that these Defendants sell their products within the jurisdiction:

25

/ / /

26

/ / /

27

/ / /

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

- 10 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 11 of 21 Page ID #:11

1

Infringing Product Photos

2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

/ / /

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

- 11 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 12 of 21 Page ID #:12

1
2
3
4
5
6
7
8
9
10
11
12
13
14

18.

Defendants also manufacture and sell other items bearing the

PATAGUCCI designation and facsimiles of the PATAGONIA logos:

15
16
17
18
19
20
21
22
23
24

19.

Defendants’ copying of Patagonia’s logo artwork and use of the

25

PATAGUCCI designation and logos have caused or will cause a likelihood of

26

confusion among consumers regarding the source of PATAGUCCI products

27

and whether Patagonia has sponsored, authorized, or is somehow affiliated with

28

Defendants. Patagonia, consequently, has no alternative but to protect its goodwill
COMPLAINT
Case No. 2:15-cv-9779

- 12 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 13 of 21 Page ID #:13

1

and famous trademarks by obtaining an injunction against Defendants’ further use

2

of the PATAGUCCI designation and logos.

3

20.

Defendants’ use of the PATAGUCCI designation also has caused or

4

is likely to cause dilution of the famous PATAGONIA mark. The PATAGONIA

5

mark became famous within the meaning of the Trademark Dilution Revision Act

6

well before Defendants first engaged in their infringing conduct. Defendants’

7

PATAGUCCI designation has caused or is likely to cause dilution of the

8

PATAGONIA mark by blurring and impairing the distinctiveness of the

9

PATAGONIA mark.

10

21.

Further, Defendants’ PATAGUCCI designation has caused or is likely

11

to cause dilution of the PATAGONIA mark by tarnishment. PATAGUCCI com-

12

bines the PATAGONIA trademark with the GUCCI trademark. Given, however,

13

that Defendants have faithfully reproduced Patagonia’s Fitz Roy and Wave logo

14

designs in connection with using the PATAGUCCI designation, it makes it more

15

likely that consumers will believe that the PATAGUCCI products originate from

16

Patagonia rather than Gucci. Unless consumers believe that Gucci has authorized

17

this use of its mark, consumers are likely to believe that Patagonia has misappropri-

18

ated the GUCCI mark and its associated goodwill. The famous Patagonia trademark

19

will be diminished in the eyes of consumers who form a belief that Patagonia has

20

engaged in such intellectual property theft.

21

22.

Patagonia is informed and believes that Defendants have manufactured,

22

marketed, and sold substantial quantities of products bearing the PATAGUCCI

23

designations, and have obtained and continue to profit from such sales.

24

23.

Defendants’ actions have caused and will cause Patagonia irreparable

25

harm for which money damages and other remedies are inadequate. Unless

26

Defendants are restrained by this Court, they will continue and/or expand their

27

illegal activities and otherwise continue to cause irreparable damage and injury to

28

Patagonia by, among other things:
COMPLAINT
Case No. 2:15-cv-9779

- 13 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 14 of 21 Page ID #:14

a.

1
2

use of its trademarks and copyrights;
b.

3
4

Creating a likelihood of confusion, mistake, and deception

among consumers and the trade as to the source of the infringing products;
c.

5
6

Depriving Patagonia of its statutory rights to use and control

Causing the public falsely to associate Patagonia with

Defendants and/or their PATAGUCCI products, or vice versa;
d.

7

Causing incalculable and irreparable damage to Patagonia’s

8

goodwill, diluting the capacity of its famous PATAGONIA trademark to differen-

9

tiate its products from those of its competitors, and tarnishing the PATAGONIA

10

trademark; and

11

e.

12

products.

13

24.

14

Causing Patagonia to lose sales of its genuine PATAGONIA

Accordingly, in addition to other relief, Patagonia is entitled to

injunctive relief against Defendants and all persons acting in concert with them.

15

FIRST CLAIM

16

FEDERAL TRADEMARK INFRINGEMENT

17

(15 U.S.C. §§ 1114-1117)
25.

18
19

Patagonia realleges and incorporates by reference each of the allega-

tions contained in paragraphs 1 through 24 of this Complaint.
26.

20

Defendants have used, in connection with the sale, offering for sale,

21

distribution, or advertising of their PATAGUCCI products and services, words and

22

symbols that infringe upon Patagonia’s PATAGONIA trademark.
27.

23

These acts of trademark infringement have been committed with the

24

intent to cause confusion, mistake, or deception, and are in violation of 15 U.S.C.

25

§ 1114.
28.

26

As a direct and proximate result of Defendants’ conduct, Patagonia is

27

entitled to recover Defendants’ unlawful profits and Patagonia’s damages, and treble

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

- 14 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 15 of 21 Page ID #:15

1

the amount of its damages and Defendants’ profits, and to an award of attorneys’

2

fees under 15 U.S.C. § 1117(a).

3

29.

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

4

that requires Defendants to stop use of the PATAGUCCI designation and the use

5

and ownership of the patagucci.clothing domain name and website.

6

SECOND CLAIM

7

FEDERAL UNFAIR COMPETITION

8

(False Designation of Origin and False Description – 15 U.S.C. § 1125(a))

9
10
11

30.

Patagonia realleges and incorporates by reference each of the allega-

tions contained in paragraphs 1 through 29 of this Complaint.
31.

Defendants’ conduct as alleged in this Complaint constitutes the use

12

of symbols or devices tending falsely to describe the infringing products, within the

13

meaning of 15 U.S.C. § 1125(a)(1). Defendants’ conduct is likely to cause confu-

14

sion, mistake, or deception by or in the public as to the affiliation, connection, asso-

15

ciation, origin, sponsorship, or approval of the infringing products to the detriment

16

of Patagonia and in violation of 15 U.S.C. § 1125(a)(1).

17

32.

As a direct and proximate result of Defendants’ conduct, Patagonia is

18

entitled to recover Defendants’ unlawful profits and Patagonia’s damages, and treble

19

the amount of its damages and Defendants’ profits, and to an award of attorneys’

20

fees under 15 U.S.C. § 1117(a).

21

33.

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

22

that requires Defendants to stop use of the PATAGUCCI designation and the use

23

and ownership of the patagucci.clothing domain name and website.

24

THIRD CLAIM

25

FEDERAL DILUTION OF FAMOUS MARK

26

(Trademark Dilution Revision Act of 2006 – 15 U.S.C. § 1125(c))

27
28

34.

Patagonia realleges and incorporates by reference each of the allega-

tions contained in paragraphs 1 through 33 of this Complaint.
COMPLAINT
Case No. 2:15-cv-9779

- 15 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 16 of 21 Page ID #:16

35.

1

Patagonia’s PATAGONIA trademark is distinctive and famous within

2

the meaning of the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c),

3

and was famous prior to Defendants adoption of and initial uses of the

4

PATAGUCCI designation.
36.

5

Defendants’ conduct is likely to cause dilution of Patagonia’s

6

PATAGONIA trademark by blurring, i.e., by diminishing its distinctiveness in

7

violation of the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c).
37.

8

Defendants’ conduct is likely to cause dilution of Patagonia’s

9

PATAGONIA trademark by tarnishment, i.e., by harming the reputation of the

10

PATAGONIA trademark by causing consumers to associate it with the spurious

11

PATAGUCCI designation in violation of the Trademark Dilution Revision Act of

12

2006, 15 U.S.C. § 1125(c).
38.

13

As a direct and proximate result of Defendants’ conduct, Patagonia is

14

entitled to recover Defendants’ unlawful profits and Patagonia’s damages, and treble

15

the amount of its damages and Defendants’ profits, and to an award of attorneys’

16

fees under 15 U.S.C. §§ 1116(a), 1117(a), and 1125(c).
39.

17

Patagonia is entitled to injunctive relief pursuant to 15 U.S.C.

18

§§ 1116(a) and 1125(c) that requires Defendants to stop use of the PATAGUCCI

19

designation and the use and ownership of the patagucci.clothing domain name and

20

website.

21

FOURTH CLAIM

22

FEDERAL COPYRIGHT INFRINGEMENT

23

(17 U.S.C. §§ 101, et seq., and 17 U.S.C. §§ 501, et seq.)
40.

24
25

Patagonia realleges and incorporates by reference each of the allega-

tions contained in paragraphs 1 through 39 of this Complaint.
41.

26

Patagonia owns the copyrights for its Fitz Roy Design and Wave

27

Design, each of which is or will be federally registered.

28

/ / /
COMPLAINT
Case No. 2:15-cv-9779

- 16 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 17 of 21 Page ID #:17

1

42.

Defendants have copied, advertised, offered for sale, and/or sold copies

2

of the Fitz Roy Design and Wave Design without Patagonia’s authorization or per-

3

mission and in violation of Patagonia’s exclusive rights in its copyrights.

4

43.

Defendants’ unlawful reproduction, advertisement, distribution,

5

and/or sale of Patagonia’s proprietary designs constitutes copyright infringement.

6

Patagonia alleges that Defendants acted intentionally, willfully, and in bad faith

7

when they reproduced, advertised, distributed, displayed, and/or sold the infringing

8

designs.

9

44.

Defendants’ infringement alleged herein has caused and, if not

10

enjoined, will continue to cause Patagonia to suffer irreparable harm for which

11

there is no adequate remedy at law, and has also caused damage to Patagonia in an

12

amount which cannot be accurately computed at this time but will be proven at trial.

13

45.

As a direct and proximate result of Defendants’ conduct, Patagonia is

14

entitled to injunctive relief, as well as actual damages and any profits earned by

15

Defendants as a result of their infringement, or statutory damages of up to $150,000

16

for each work infringed, at Patagonia’s election. 17 U.S.C. § 504.

17

PRAYER FOR JUDGMENT

18

WHEREFORE, Patagonia prays that this Court grant it the following relief:

19

1.

20
21
22
23

Adjudge that Patagonia’s trademark has been infringed by Defendants

in violation of Patagonia’s rights under 15 U.S.C. § 1114;
2.

Adjudge that Defendants have competed unfairly with Patagonia in

violation of Patagonia’s rights under 15 U.S.C. § 1125(a);
3.

Adjudge that Defendants’ activities are likely to dilute Patagonia’s

24

famous PATAGONIA trademark in violation of Patagonia’s rights under 15 U.S.C.

25

§ 1125(c);

26

4.

Adjudge that Defendants and their agents, employees, attorneys,

27

successors, assigns, affiliates, and joint ventures, and any person(s) in active concert

28

or participation with them, and/or any person(s) acting for, with, by, through, or
COMPLAINT
Case No. 2:15-cv-9779

- 17 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 18 of 21 Page ID #:18

1

under them, be enjoined and restrained at first during the pendency of this action

2

and thereafter permanently from:
a.

3

Manufacturing, producing, sourcing, importing, selling, offering

4

for sale, distributing, advertising, or promoting any goods or services that display

5

any words or symbols that so resemble Patagonia’s PATAGONIA trademark as to

6

be likely to cause confusion, mistake, or deception, on or in connection with any

7

product that is not authorized by or for Patagonia, including, without limitation,

8

any product or service that bears the PATAGUCCI designation or any other

9

approximation of Patagonia’s trademark;
b.

10

Using any word, term, name, symbol, device, or combination

11

thereof, including PATAGUCCI or patagucci.clothing, that causes or is likely to

12

cause confusion, mistake, or deception as to the affiliation or association of

13

Defendants or their products with Patagonia or as to the origin of Defendants’

14

goods, or any false designation of origin, false or misleading description or repre-

15

sentation of fact, or any false or misleading advertising, or likely dilution of the

16

PATAGONIA trademark;

17

c.

Further infringing the rights of Patagonia in and to its

18

PATAGONIA trademark, or otherwise damaging Patagonia’s goodwill or business

19

reputation;

20

d.

Further diluting the famous PATAGONIA trademark;

21

e.

Otherwise competing unfairly with Patagonia in any manner; and

22

f.

Continuing to perform in any manner whatsoever any of the

23
24
25
26

other acts complained of in this Complaint;
5.

Order that patagucci.clothing, the @Shoppatagucci Instagram handle,

and the @Shoppatagucci Twitter handle shall be transferred to Patagonia;
6.

Adjudge that Defendants and their agents, employees, attorneys,

27

successors, assigns, affiliates, and joint ventures, and any person(s) in active concert

28

or participation with them, and/or any person(s) acting for, with, by, through, or
COMPLAINT
Case No. 2:15-cv-9779

- 18 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 19 of 21 Page ID #:19

1

under them, be enjoined and restrained at first during the pendency of this action

2

and thereafter permanently from:
a.

3

Distributing, reproducing, or otherwise disseminating

4

Patagonia’s copyrighted Fitz Roy Design and Wave Design, including, without

5

limitation, on apparel products;
b.

6

Preparing any derivative works that are based on or incorporate

7

the Fitz Roy Design and Wave Design or any other copyrighted materials owned by

8

Patagonia; and

9

c.

10
11

Otherwise infringing any of Patagonia’s rights under the

Copyright Act and any other source of federal or state law.
7.

Adjudge that Defendants, within thirty (30) days after service of the

12

Court’s judgment, be required to file with this Court and serve upon Patagonia’s

13

counsel a written report under oath setting forth in detail the manner in which they

14

have complied with the judgment;

15

8.

Adjudge that Patagonia recover from Defendants’ its damages and lost

16

profits, and Defendants’ profits, in an amount to be proven at trial (and, with respect

17

to Patagonia’s copyright infringement claims, pursuant to Patagonia’s election at

18

any time before final judgment is rendered, award Patagonia statutory damages of

19

up to $150,000 for each work infringed);

20

9.

Adjudge that Defendants be required to account for any profits that

21

are attributable to their illegal acts, and that Patagonia be awarded (1) Defendants’

22

profits and (2) all damages sustained by Patagonia, under 15 U.S.C. § 1117, plus

23

prejudgment interest;

24
25
26

10.

Adjudge that the amounts awarded to Patagonia pursuant to 15 U.S.C.

§ 1117 shall be trebled;
11.

Adjudge that Patagonia be awarded its costs and disbursements

27

incurred in connection with this action, including Patagonia’s reasonable attorneys’

28

fees and investigative expenses; and
COMPLAINT
Case No. 2:15-cv-9779

- 19 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 20 of 21 Page ID #:20

1
2

12.

Adjudge that all such other relief be awarded to Patagonia as this Court

deems just and proper.

3
4

DATED: December 21, 2015

5

Respectfully submitted,
KILPATRICK TOWNSEND & STOCKTON LLP

6
7

By: /s/ Gregory S. Gilchrist
GREGORY S. GILCHRIST
RYAN BRICKER

8
9

Attorneys for Plaintiff
PATAGONIA, INC.

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
COMPLAINT
Case No. 2:15-cv-9779

- 20 -

Case 2:15-cv-09779-BRO-AFM Document 1 Filed 12/21/15 Page 21 of 21 Page ID #:21

DEMAND FOR JURY TRIAL

1
2

Patagonia, Inc. demands that this action be tried to a jury.

3
4

DATED: December 21, 2015

5

Respectfully submitted,
KILPATRICK TOWNSEND & STOCKTON LLP

6
7

By: /s/ Gregory S. Gilchrist
GREGORY S. GILCHRIST
RYAN BRICKER

8
9

Attorneys for Plaintiff
PATAGONIA, INC.

10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
68010204V.1

COMPLAINT
Case No. 2:15-cv-9779

- 21 -