laika v. honestech

8/3/2019 Laika v. Honestech

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David S. Aman, OSB No. 962106Direct Dial: 503.802.2053Fax: 503.972.3753E-Mail: [email protected] Eric C. Beach, OSB No.1 05783Direct Dial: 503.802.2182Fax: 503.972.3882E-Mail: [email protected] TORP LLP1600 Pioneer Tower888 S. W. Fifth AvenuePortland, OR 97204

Attorneys for Plaintif f Laika, Inc.

UNITED STATES DISTRlCT COURTDISTRlCT OF OREGON

LAIKA, INC. G'Ian- 111 3 'I HU IPlaintiff, COMPLAINT(Dilution; Trademark Infringement;

v. Unfair Competition)HONESTECH, INC., AND HONESTTECHNOLOGY CO., LTD., mRY TRIAL DEMANDED

Defendants.

Plaintiff Laika, Inc. ("Plaintiff' or "Laika") alleges as follows:PARTIES

1. Plainti ff Laika is a corporation duly organized and existing under the lawsof the State of Oregon, with its corporate offices and principal place of business in Hillsboro,Oregon.

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Case 3:11-cv-01434-HU Document 1 Filed 11/28/11 Page 1 of 9 Page ID#: 1
mailto:[email protected]:[email protected]:[email protected]:[email protected]


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2. Defendant Honestech, Inc., aka Honest Technology, is a corporation duly

authorized and existing under the laws of the State ofDelaware.3. Defendant Honest Technology Co., Ltd. is, on information and belief, a

corporation duly authorized and existing under the laws of the Republic ofKorea.JURISDICTION AND VENUE

4. This Court has jurisdiction under 28 U.S.C. 1331 and 1338(a) and (b)because it involves claims arising under the Lanham Act of1946, 15 U.S.C. 1051 et seq. ThisCourt has supplemental jurisdiction over this action pursuant to 28 U.S.C. 1367.

5. Venue is proper in this judicial district under 28 U.S.c . 1391.NATURE OF THE CASE

6. This is an action for trademark dilution, trademark infringement and unfaircompetition under state and federal law. Laika has actively promoted and sold, for at least 30years and throughout the world, digital video disks and other media featuring Laika's animationcontent, as well as Laika's full-service animation services. Through its use of theCLAYMATION mark, Laika has established valuable trademark rights and goodwill in itstrademarks throughout the world.

7. Laika is the owner of numerous trademark and service mark registrationsin the United States and throughout the world for CLA YMATION. Defendants are using thename "CLA YMA TION STUDIO" to promote stop-motion animation software and related mediain violation of Plaintiffs rights in the CLA YMATION mark. Plaintiff brings this action toenjoin Defendants from using the name "CLA YMATION," "CLA YMAnON STUDIO," or anyother name that is confusingly similar to the CLA YMAnON mark. Plaintiff also seeks damagesand attorney fees for Defendants acts of dilution, infringement, and unfair competition.

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COMMON FACTUAL ALLEGATIONS

8. Since approximately 1978, Laika and its predecessor-in-interest have

continuously used the CLA YMA TION mark to promote Laika's full service animation services.Since no later than 1987, Laika and its predecessor-in-interest have continuously used theCLAYMATION mark to promote media featuring Laika's animation content, as well as Laika'sfull-service animation services, throughout the United States and internationally. Laika currentlyholds the following United States and international trademark and service mark registrations forCLAYMATION:

MarkCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATIONCLAYMATION

CountrYUnited StatesAustraliaAustriaBeneluxBrazilCanadaFranceGermanyHong KongIndonesiaItalyJapanMexicoSingaporeSouth KoreaSpainS wi tzerlandUnited Kingdom

Regi$trgtiQ,n NoM1780261; 1824170; 1160358457990116471432951813429714;813429730TMA3428491484225111520519891270AJ\; 199705721150125; 1501267600743004962408809;395670T87/00034G; T87100031B;S/T94/01074C153188; 149937;79371175931; 1175933; 1175934;11759353524351297920

The registrations in the United States for CLAYMA TION listed above (the "U.S.Registrations") have become incontestable pursuant to Sections 15 and 33(b) ofthe Lanham Act,15 U.S.C. 1065 and 1115(b).

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9. Laika has sold and continues to sell its products and services under the

CLA YMA TION mark throughout the United States and has promoted, and continues to promote,the CLA YMA TION mark through the advertising and sale of its products and services.

10. As a result of Laika's significant use and promotion of theCLAYMATION mark, the mark has acquired a distinctiveness and secondary meaning amongconsumers in the United States and internationally. Laika now owns valuable goodwill in theCLA YMA TION mark, and the mark has become famous among the consuming public.

11. Defendants have been marketing and selling their products in interstatecommerce, including using the name "CLAYMATION."

12. By virtue of the U.S. Registrations, Defendants were put on constructivenotice of Laika's rights in the CLAYMATION mark prior to Defendants' use of the"CLA YMATION" name. Defendants also had actual notice of Laika's use of theCLAYMATION mark prior to adopting the "CLAYMATION" name to market and sell theirproducts.

13. Defendants have refused to cease using the name "CLA YMATION"despite Laika's demands that they do so.

CLAIMS FOR RELIEF FIRST CLAIM FOR RELIEF

(Federal Trademark Dilution-15 U.S.C. 1125(C 14. Plaintiff realleges all of the preceding paragraphs.15. Plaintiffs CLA YMA TION mark is distinctive and famous.16. Defendants are using the "CLAYMATION" name in commerce.

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17. Defendants' use of the "CLA YMATION" name began long after Plaintiffs

use of the CLAYMATION mark.18. Defendants' use of the "CLA YMATION" name is likely to cause dilution

by blurring or tamishment.19. Plaintiff is entitled to a preliminary and permanent injunction against

Defendants' use of the "CLA YMA TION" name.20. Plaintiff is further entitled to recover all damages it has sustained, all

damages it continues to sustain, and any benefit or profit that Defendants have derived from theirinfringement. Alternatively, Plaintiff is entitled to recover a reasonable royalty on any and allinfringing sales.

21. Because Defendants' acts of infringement are willful, Plaintiff is entitled toan award of treble damages.

22. Plaintiff is entitled to recover its attorney fees because this is anexceptional case pursuant to 15 U.S.C. 1117(a).

SECOND CLAIM FOR RELIEF (Violation of the Lanham Act-IS U.S.c. 1114(1

23. Plaintiff realleges all of the preceding paragraphs.24. Defendants' use of the name "CLA YMA TION" is likely to cause

confusion, mistake, or deception in that persons are likely to believe that the products Defendantsmarket and sell are in some way connected with, sponsored by, approved by, or endorsed byPlaintiff. Defendants' use of the name "CLA YMATION" violates 15 U.S.c. 1114(1).

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25. Plaintiff has been and will continue to be irreparably harmed by

Defendants' acts of infringement. Plaintiff is entitled to a preliminary and permanent injunctionprohibiting Defendants from further acts of infringement.

26. Plaintiff is entitled to recover all damages it has sustained, all damages itcontinues to sustain, and any benefit or profit that Defendants have derived from theirinfringement. Alternatively, Plaintiff is entitled to recover a reasonable royalty on any and allinfringing sales.



THIRD CLAIM FOR RELIEF (Violation ofthe Lanham Act- 15 U.S.c. 1125(a)

29. Plaintiff realleges all preceding paragraphs.30. As a result of Plaintiffs use and promotion of the CLAYMAnON mark,

the mark has enjoyed considerable goodwill and secondary meaning as associated with Plaintiff.31. Defendants' use of the "CLA YMAnON" name tends to falsely represent

that Defendants are connected with Plaintiff. It is also likely to cause confusion, mistake, ordeception as to the affiliation, sponsorship, or approval ofDefendants' business by Plaintiff.Defendants' use of the name "CLA YMATION" violates 15 U.S.c. 1125(a)(I).

32. Plaintiff has been and will continue to be irreparably harmed byDefendants' wrongful use of the "CLA YMATION" name. Plaintiff is entitled to a preliminary

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and permanent injunction prohibiting Defendants from any further use of the "CLAYMAnON"name.

33. Plaintiff is entitled to recover all damages it has sustained, all d a ~ a g e s itcontinues to sustain, and any benefit or profit that Defendants have derived from theirinfringement. Alternatively, Plaintiff is entitled to recover a reasonable royalty on any and allinfringing sales.



FOURTH CLAIM FOR RELIEF(Common Law Trademark Infringement)

36. Plaintiff realleges all preceding paragraphs.37. Defendants have infringed the CLA YMATION mark in violation of

Plaintiffs common law trademark rights.38. Plaintiff has been and will continue to be irreparably harmed by

Defendants' wrongful use of the "CLAYMAnON" name. Plaintiff is entitled to a preliminaryand permanent injunction prohibiting Defendants from any further use of the "CLA YMAnON"name.

39. Plaintiff is entitled to recover all damages it has sustained, all damages itcontinues to sustain, and any benefit or profit that Defendants have derived from theirinfringement. Alternatively, Plaintiff is entitled to recover a reasonable royalty on any and allinfringing sales.

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FIFTH CLAIM FOR RELIEF

(Common Law Unfair Competition)40. Plaint iffreal leges all preceding paragraphs.41. Defendants' conduct constitutes common law unfair competition.42. Plaintiff has been and will continue to be irreparably harmed by

Defendants' wrongful use of the name "CLAYMATION." Plaint iff is entitled to a preliminaryand permanent injunction prohibiting Defendants from any further use of the "CLAYMATION"name.

43. Plaint iff is entitled to recover all damages it has sustained, all damages itcontinues to sustain, and any benefit or profit that Defendants have derived from theirinfringement. Alternatively, Plaintif f is entitled to recover a reasonable royalty on any and allinfringing sales.

WHEREFORE, Plaintif f prays for judgment in its favor and against Defendants asfollows:

A. Permanently and preliminarily enjoining Defendants and all others inactive concert or participation with Defendants from:

(i) selling, offering for sale, advertising, or promoting for sale any ofproducts using the name "CLA YMATION," "CLAYMATION STUDIO," or any other name thatis confusingly similar to the CLAYMATION mark;

(ii) filing or prosecuting any applications for state or federaltrademark, service mark, or trade name registration for any mark or trade name for"CLAYMATION," or "CLAYMATION STUDIO," or for any other mark or trade name that isconfusingly similar to the CLAYMATION mark;

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(iii) doing any other act or thing that is likely to induce the belief that

Defendants' products are in some way connected with Plaintiff or that is likely to diminish thedistinctiveness of the CLA YMATION mark.

B. Ordering Defendants to destroy all advertising, brochures, and other materialin their possession or under their control which contains the term "CLA YMATION."

C. Ordering Defendants to account for and pay over to Plaintiff all profitsderived from Defendants' use of the name "CLAYMATION";

D. Awarding Plaintiff actual damages caused by Defendants' infringement,along with treble damages pursuant to 15 U.S.C. 1117;

E. Awarding Plaintiff the costs and disbursements incurred in this action,along with reasonable attorney fees;

F. A warding Plaintiff prejudgment interest on any damages awarded; and,G. Granting such other and further relief as the Court deems is just and

equitable.DEMAND FOR JURY TRIAL

Plaintiff demands trial by jury on all issues set forth in this Complaint.DATED this z l ~ y ofNovember, 2011.

B y = - ~ ~ ~ __ ~ ~ ~ ~ ~ ~ ____________David S. Arnao, OSB # 96210Direct Dial: 503.802 .2053Eric C. Beach, OSB No. 105783Direct Dial: 503.802.2182Attorneys for Plaintiff Laika, Inc.

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laika v. honestech

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