complaint skull candy

8/3/2019 Complaint Skull Candy

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CHARLES L. ROBERTS (5137; [email protected])MATTHEW A. BARLOW (9596; [email protected])DAVID P. JOHNSON (13260, [email protected])WORKMAN | NYDEGGER

1000 Eagle Gate Tower60 East South TempleSalt Lake City, Utah 84111Telephone: (801) 533-9800Facsimile: (801) 328-1707

Attorneys for PlaintiffSKULLCANDY,INC.

IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF UTAH

CENTRAL DIVISION

SKULLCANDY, INC., a Delaware Corporation,

Plaintiff,v.

SKELANIMALS, LLC, a California LimitedLiability Company, and JAZWARES, INC., aFlorida Corporation,

Defendants.

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Civil Action No.: 2:11-cv-01039-DN

COMPLAINT

(JURY TRIAL DEMANDED)

Magistrate Judge David Nuffer

Skullcandy, Inc. (Skullcandy) complains against defendants Skelanimals, LLC

(Skelanimals) and Jazwares, Inc. (Jazwares) (Skelanimals and Jazwares are collectively referred

to herein as Defendants), and for good cause alleges as follows:

THE PARTIES

1. Skullcandy is a corporation organized under the laws of the State of Delaware with itsprincipal place of business in Park City, Utah.

Case 2:11-cv-01039-DN Document 2 Filed 11/14/11 Page 1 of 16


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2. On information and belief, Skelanimals is a limited liability company organized underthe laws of the State of California, with a principal place of business located at 23586 Calabasas

Road #210, Calabasas, California 91302, and is doing business in this judicial district.

3. On information and belief, Skelanimals may be served through Alison Kenney, itsdesignated agent for service of process, at 23586 Calabasas Road #210, Calabasas, California 91302.

4. On information and belief, Jazwares is a Florida corporation with a principal place ofbusiness located at 1067 Shotgun Road, Sunrise, Florida 33326, and is doing business in this judicial

district.

5. On information and belief, Skelanimals may be served through Laura Zebersky, itsdesignated agent for service of process, at 1067 Shotgun Road, Sunrise, Florida 33326.

JURISDICTION AND VENUE

6. This is an action for trademark infringement arising under the provisions of theTrademark Laws of the United States of America, Title 15 of the United States Code.

7. Subject matter jurisdiction over Skullcandys claims is conferred upon this Court by28 U.S.C. 1331, 1332, and 1338(a).

8. On information and belief, Defendants have solicited business in the State of Utah,transacted business within the State of Utah and attempted to derive financial benefit from residents

of the State of Utah, including benefits directly related to the instant trademark infringement cause

of action set forth herein.

9. On information and belief, Defendants have placed their infringing products into thestream of commerce throughout the United States, which products have been offered for sale, sold

and/or used in the State of Utah and/or in the District of Utah.



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10. Defendants, directly or through their subsidiaries, divisions, groups or distributors,have committed acts of infringement in this judicial district, are subject to personal jurisdiction in

this judicial district, and/or are doing business in this judicial district.

11. Venue is proper in this judicial district under 28 U.S.C. 1391(c).GENERAL ALLEGATIONS

12. Since at least as early as 2003, Skullcandy has developed and continuously used alogo in the shape of a skull on or in connection with various goods, including headsets, headphones,

ear buds, earphones, backpacks, book bags, sports bags, handbags, t-shirts, sweatshirts, and hats, in

interstate commerce throughout the United States and throughout the world (the Skullcandy

Logo).

13. Skullcandy is the owner of the following federal trademark registrations on theSkullcandy Logo that have been granted by the United States Patent and Trademark Office

(collectively, the Skullcandy Logo Registrations):

REG. NO. MARK GOODS AND SERVICES

3,168,754 Devices for hands-free use of mobilephones; Digital audio players; Digitalphones; Earphones; Headphones; MP3players; Portable listening devices, namely,MP3 players; Portable media players;Protective helmets; Protective helmets forsports; Sports helmets (in InternationalClass 009)

3,381,053 Clothing and headwear, namely t-shirts,sweatshirts, and hats (in International Class

025)

3,794,944 Bags, namely, backpacks, book bags,sports bags, handbags (in InternationalClass 018)



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3,871,064 Wallets (in International Class 018)

14. As a result of Skullcandys continuous use of the Skullcandy Logo Registrations,the Skullcandy Logo has become an asset of substantial value to Skullcandy as a distinctive

indicator of the origin and quality of Skullcandys products.

15. By using the Skullcandy Logo, Skullcandy has developed significant and valuablegoodwill in eyes of the consuming public.

FIRST CLAIM FOR RELIEF

Infringement of the Skullcandy Logo Registered in the 754 Registration15 U.S.C. 1114

16. Skullcandy realleges the foregoing allegations as though set forth herein.17. On November 7, 2006, U.S. Trademark Registration No. 3,168,754 (the 754

Registration), depicting an image of a skull, a copy of which is attached hereto as Exhibit A, was

duly and legally issued to Skullcandy. Skullcandy is the owner of all right, title and interest in and

to the 754 Registration, including the right to sue for and recover all past, present and future

damages for infringement of the rights conferred by the 754 Registration.

18. Upon information and belief, Defendants have used and continue to use in commercevarious skull logos in association with at least headphones, earphones, mp3 players, portable media

players, digital audio players, and protective helmets.

19. The skull logos used by Defendants on the aforementioned products are colorableimitations of Skullcandys registered logo, and Defendants use of such logos in association with the

aforementioned products is likely to cause confusion, to cause mistake, or to deceive the consuming

public.



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20. Upon information and belief, Defendants use of the skull logos on theaforementioned products was and is committed with the purpose of exploiting and trading on the

substantial goodwill and reputation of Skullcandy as symbolized by and associated with the

Skullcandy skull logo as registered in the 754 Registration.

21. Defendants conduct described herein constitutes Federal trademark infringement inviolation of Section 32 of the Lanham Act, 15 U.S.C. 1114.

22. Skullcandy has been and continues to be damaged by Defendants actions in anamount to be established at trial, including Defendants profits and Skullcandys lost profits, plus the

costs of this action.

23. Upon information and belief, Defendants had actual knowledge of Skullcandysexclusive rights in the 754 Registration and willfully and deliberately infringed and continue to

infringe Skullcandys skull logo as registered in the 754 Registration.

24. Pursuant to Section 35 of the Lanham Act, 15 U.S.C. 1117, Skullcandy is entitled toa judgment for damages not to exceed three times the amount of its actual damages, together with

interest thereon, in an amount to be determined at trial.

25. Skullcandy has no adequate remedy at law for the damage to its reputation andgoodwill and will continue to be irreparably damaged unless Defendants are permanently enjoined

from their infringing and illegal conduct, pursuant to Section 34 of the Lanham Act, 15 U.S.C.

1116.

SECOND CLAIM FOR RELIEFInfringement of the Skullcandy Logo Registered in the 053 Registration

15 U.S.C. 1114

26. Skullcandy realleges the foregoing allegations as though set forth herein.27. On February 12, 2008, U.S. Trademark Registration No. 3,381,053 (the 053



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Registration), depicting an image of a skull, a copy of which is attached hereto as Exhibit B, was




28. Upon information and belief, Defendants have used and continue to use in commercevarious skull logos in association with clothing, including at least t-shirts, sweatshirts, and hats.



public.











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1116.

THIRD CLAIM FOR RELIEF

Infringement of the Skullcandy Logo Registered in the 944 Registration

15 U.S.C. 1114

36. Skullcandy realleges the foregoing allegations as though set forth herein.37. On May 25, 2010, U.S. Trademark Registration No. 3,794,944 (the 944

Registration), depicting an image of a skull, a copy of which is attached hereto as Exhibit C, was




38. Upon information and belief, Defendants have used and continue to use in commercevarious skull logos in association with bags, including at least backpacks, book bags, sports bags,

and handbags.



public.



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1116.

FOURTH CLAIM FOR RELIEFInfringement of the Skullcandy Logo Registered in the 064 Registration

15 U.S.C. 1114

46. Skullcandy realleges the foregoing allegations as though set forth herein.47. On November 2, 2010, U.S. Trademark Registration No. 3,871,064 (the 064



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Registration), depicting an image of a skull, a copy of which is attached hereto as Exhibit D, was




48. Upon information and belief, Defendants have used and continue to use in commercevarious skull logos in association with bags, including at least wallets.



public.











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1116.

FIFTH CLAIM FOR RELIEF

Federal Unfair Competition/False Designation of Origin

15 U.S.C. 1125(a)

56. Skullcandy realleges the foregoing allegations as though set forth herein.57. Defendants use of the skull logos on the aforementioned products, alone or in

combination with other words or designs on its labeling, advertising, marketing, and selling of

headphones is likely to cause confusion or mistake, or to deceive as to the affiliation, connection,

or association of Defendants with Skullcandy, or as to the origin, sponsorship, or approval of

Defendants goods, services, or commercial activities by Skullcandy, and thus constitutes unfair

competition and false designation of origin in violation of Section 43(a) of the Lanham Act, 15

U.S.C. 1125(a).

58. Upon information and belief, Defendants were aware of the 754, 052, 944, and064 Registrations when Defendants committed their acts of infringement in willful and flagrant

disregard of Skullcandys lawful rights.

59. Upon information and belief, Defendants intend to cause confusion and mistakeand intend to deceive the buyers of products offered or sold under the infringing marks into



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believing that they are buying products produced by, marketed by, sponsored by, approved of or

licensed by Skullcandy.

60. Upon information and belief, Defendants will, if not enjoined by this Court,continue in their acts of unfair competition by the use of the false designations and false

representations set forth above. Such improper acts by Defendants have caused, and will

continue to cause, Skullcandy immediate and irreparable harm.

61. As a result of Defendants acts of unfair competition as set forth above,Skullcandy has suffered damages, the exact amount of which will be proven at trial.

62. Pursuant to Section 35 of the Lanham Act, 15 U.S.C. 1117, Skullcandy isentitled to a judgment for damages not to exceed three times the amount of its actual damages,

together with interest thereon, in an amount to be determined at trial.

63. Skullcandy has no adequate remedy at law for the damage to its reputation andgoodwill and will continue to be irreparably damaged unless Defendants are permanently

enjoined from their infringing and illegal conduct, pursuant to Section 34 of the Lanham Act, 15

U.S.C. 1116.

SIXTH CLAIM FOR RELIEF

Federal Trademark Dilution

15 U.S.C. 1125(c)

64. Skullcandy realleges the foregoing allegations as though set forth herein.65. The Skullcandy Logo has become famous and distinctive throughout the U.S. and

worldwide through Skullcandys continuous and exclusive use of it in connection with Skullcandys

products and services.



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66. Because Skullcandy products and services have gained a reputation for superiorquality and performance, the Skullcandy Logo (which is always used in connection with Skullcandy

products and services) has gained substantial renown.

67. After the Skullcandy Logo became famous, Defendants adopted their skull logo andhave infringed and continue to infringe the Skullcandy Logo in connection with the advertisement,

promotion, and sale of Defendants products and services.

68. Defendants use their skull logo in commerce in a manner that is likely to causedilution by blurring or dilution by tarnishment of the Skullcandy Logo, in violation of Skullcandys

rights under 15 U.S.C. 1125(c).

69. Thus, Defendants wrongful infringement of the Skullcandy Logo dilutes, blurs,tarnishes, and whittles away at the distinctiveness of the Skullcandy Logo.

70. As a direct and proximate result of Defendants conduct, the valuable SkullcandyLogo will continue to be irreparably harmed, tarnished, and diluted. Skullcandy has no adequate

remedy at law that will compensate for the continued and irreparable harm it will suffer if

Defendants actions are allowed to continue.

71. Defendants have used and continue to use colorable imitations of the SkullcandyLogo willfully and with the intent to dilute the Skullcandy Logo, and with the intent to trade on the

reputation and goodwill of Skullcandy and the Skullcandy Logo. Accordingly, this is an exceptional

case within the meaning of 15 U.S.C. 1117(a).

72. As a direct and proximate result of Defendants conduct, the value of the SkullcandyLogo has been damaged, and Skullcandy has also suffered other damages in an amount to be proved

at trial.



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SEVENTH CLAIM FOR RELIEF

Utah Statutory Unfair Competition

Utah Code Ann. 13-5(A)-101, et seq.

73. Skullcandy realleges the foregoing allegations as though set forth herein.74. Defendants actions complained of herein constitute an intentional business act that is

unlawful, unfair, and fraudulent, and has led to the material diminution in value of Skullcandys

intellectual property.

75. Defendants use of the image of a skull displayed on headphones, earphones, mp3players, portable media players, digital audio players, protective helmets, t-shirts, sweatshirts, hats,

backpacks, book bags, sports bags, handbags, and wallets, as complained of herein constitutes an

infringement of Skullcandys trademark rights in the Skullcandy Logo.

76. As such, Defendants actions are in violation of the Utah Unfair Competition Act,Utah Code Ann. 13-5-102(4)(a).

77. Pursuant to Utah Code Ann. 13-5a-103, Skullcandy is entitled to actual damages,costs, attorney fees, and punitive damages.

78. Skullcandy has no adequate remedy at law for the damage to its reputation andgoodwill and will continue to be irreparably damaged unless Defendants are first preliminarily and

then permanently enjoined from their infringing and illegal conduct.

EIGHTH CLAIM FOR RELIEF

State Law Deceptive Trade Practices

Utah Code Ann. 13-11a-1, et seq.

79. Skullcandy realleges the foregoing allegations as though set forth herein.80. Skullcandy has continuously used and extensively advertised its various merchandise

using the Skullcandy Logo for at least eight (8) years throughout the United States and, through such



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use and advertisement, has obtained common law rights in the Skullcandy Logo throughout the

United States.

81. Skullcandy is the owner of the Skullcandy Logo, and the consuming publicrecognizes it as being distinctive and as identifying the high quality goods and services associated

with Skullcandy.

82. Defendants, by their actions as set forth hereinabove, have caused, cause, and willcontinue to cause a likelihood of confusion or of misunderstanding as to the source, sponsorship,

approval, or certification of their products; have caused, cause, and will continue to cause a

likelihood of confusion or misunderstanding as to the affiliation, connection, association with, or

certification by another of their products; have represented, represent, and will continue to represent

that goods or services have sponsorship, approval, characteristics, ingredients, uses, benefits, or

qualities that they do not have, and have thereby engaged in deceptive trade practices, pursuant to,

inter alia, Utah Code Ann. 13-11a-3(1)(a), (b), and (e).

83. Defendants conduct as set forth hereinabove gives rise to a cause of action fordeceptive trade practices and related wrongs under the statutory and common law of the State of

Utah and other states, including at least Utah Code Ann. 13-11a-1, et seq.

84. On information and belief, Defendants have engaged in deceptive trade practicesagainst Skullcandy in willful and deliberate disregard of the rights of Skullcandy and the consuming

public.

85. By reason of Defendants acts of deceptive trade practices, Skullcandy has suffereddamages and irreparable harm.



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86. By reason of the foregoing, Skullcandy is entitled to preliminary and permanentinjunctive and monetary relief against Defendants, along with its attorneys fees and costs, pursuant

to at least Utah Code Ann. 13-11a-4(2)(a), (b), and (c), as more fully set forth herein below.

PRAYER FOR RELIEF

Wherefore, Skullcandy prays for the following relief:

A. Judgment that Defendants have infringed the marks registered in the 754, 052,944, and 064 Registrations;

B. Entry of a permanent injunction pursuant to 15 U.S.C. 1114 and/or 1125(c)(1)enjoining Defendants, their officers, agents, servants, employees and those persons in active

concert or participation with them from further acts of trademark infringement, unfair

competition, deceptive trade practices, or trademark dilution;

C. An award of Defendants profits;D. An award of Skullcandys damages;E. An order that Skullcandy be granted pre-judgment and post-judgment interest on

the damages caused to it by reason of Defendants trademark infringement;

F. A declaration by the Court that this an exceptional case and that Skullcandy begranted its reasonable attorneys fees in accordance with 15 U.S.C. 1117;

G. An order, pursuant to Utah Code Ann. 13-5a-103(1)(b), granting Skullcandy itsactual damages, costs and attorneys fees, and punitive damages in an amount to be determined at

trial for Defendants acts of unfair competition in violation of Utah state law;



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H. An award, pursuant to Utah Code Ann. 13-11a-4, granting Skullcandy injunctiverelief, the greater of its actual damages or $2,000, costs, and attorneys fees for Defendants

deceptive trade practices in violation of Utah state law; and

I. Any other relief that the Court may deem just and proper under the circumstances.DEMAND FOR JURY TRIAL

Skullcandy demands trial by jury on all claims and issues so triable.

Dated: November 14, 2011 WORKMAN | NYDEGGER

By: /s/ Matthew A. Barlow

Charles L. RobertsMatthew A. BarlowDavid P. Johnson

Attorneys for PlaintiffSKULLCANDY,INC.


complaint skull candy

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