Documenti di Didattica
Documenti di Professioni
Documenti di Cultura
1
2
3
4
5
6
7
8
9
10
11
12
13
14
15
16
Plaintiff,
17
18
19
20
21
22
23
24
25
v.
GLOBAL HOOKAH DISTRIBUTORS,
INC., a North Carolina corporation, d/b/a
SOUTH SMOKE; SHISHA
WHOLESALERS, INC., an Illinois
corporation; and DOES 1-10, inclusive,
Defendants.
Case No.
COMPLAINT FOR:
(1) TRADEMARK INFRINGEMENT
(2) TRADEMARK COUNTERFEITING
(3) FALSE DESIGNATION OF ORIGIN
(4) UNFAIR COMPETITION (CAL.
BUS. & PROF. CODE 17200 ET
SEQ.)
(5) COMMON LAW UNFAIR
COMPETITION
(6) STATE COUNTERFEITING
(7) COPYRIGHT INFRINGEMENT
DEMAND FOR JURY TRIAL
26
27
28
COMPLAINT
Plaintiff Kaloud, Inc., by and through its attorneys of record, complains against
Defendants Global Hookah Distributor, Inc., d/b/a South Smoke (hereinafter referred to as
Global), Shisha Wholesalers, Inc. (hereinafter referred to as SW) and DOES 1 through
5
6
1.
trademark counterfeiting, false designation of origin and unfair competition under the
Lanham Act, 15 U.S.C. 1051 et seq., unfair competition under California law, Cal. Bus.
& Prof. 17200 et seq., unfair competition under common law, state counterfeiting and
10
11
This court has subject matter jurisdiction under the Lanham Act, 15 U.S.C.
12
1051 et seq., the Copyright act, 17 U.S.C. 101 et seq., 28 U.S.C. 1331, 28 U.S.C.
13
1338(a)-(b), and supplemental jurisdiction over the remaining claims pursuant to 28 U.S.C.
14
1367.
15
3.
16
1400(a), in that the claims arise in this Judicial District and the injury suffered by Plaintiff
17
took place in this Judicial District. Defendants are subject to the general and specific
18
personal jurisdiction of this Court because of its contacts with the State of California.
19
4.
This Court has personal jurisdiction over Defendants. Among other things,
20
21
22
judicial district. Further, Defendants have engaged in continuous and systematic business in
23
California, and upon information and belief, derive substantial revenues from commercial
24
25
designed, manufactured, sourced, imported, offered for sale, sold, distributed, or shipped
26
infringing and counterfeit merchandise to persons within this State in the ordinary course of
27
trade; (2) engaged in acts or omissions outside of this State causing injury within the State;
28
and (3) otherwise made or established contacts with this State sufficient to permit exercise
1
COMPLAINT
availed themselves to California when they purchased authentic Kaloud Lotuses from
Kaloud in the past to re-sell to customers. Further, they sold shoddy counterfeit Kaloud
Lotuses that were purportedly sold under Kalouds warranty. Moreover, on information and
belief, Defendants attract customer interest from all over the world, including California,
by their social media accounts and websites that advertise their goods for sale.
PARTIES
7
8
9
10
11
5.
under the laws of California, with its principal place of business at 8391 Beverly Blvd.,
Suite 441, Los Angeles, California 90048.
6.
12
corporation doing business as South Smoke and is located at 3035 Horseshoe Lane, Suite
13
14
retail and wholesale sales of counterfeit Kaloud products, including at least the Kaloud
15
Lotus, through its storefront located at 3035 Horseshoe Lane, Suite B, Charlotte, NC 28208
16
17
7.
18
19
20
sales of counterfeit Kaloud products, including at least the Kaloud Lotus, through its
21
storefront located at 75 Eisenhower Lane, South Lombard, IL 60148 and its website
22
www.shishadistributors.com.
23
8.
DOES 1 through 10, inclusive, are unknown to Plaintiff, who therefore sues
24
said Defendants by such fictitious names. Plaintiff will ask leave of Court to amend this
25
Complaint and insert the true names and capacities of said Defendants when the same have
26
been ascertained. Plaintiff is informed and believes and, upon such, alleges that each of the
27
Defendants designated here as a DOE is legally responsible in some manner for the
28
2
COMPLAINT
events and happenings herein alleged and that Plaintiffs damages as alleged herein were
3
4
9.
Kaloud, Inc., designs and develops innovative hookah products that converge
traditional hookah-quality with contemporary designs and novel technologies that seek to
significantly reduce the harmful effects of smoking. Kalouds mission is to connect people
through the ritual of sharing hookah, and indeed, Kaloud does just that. Kaloud has sold its
hookah products, the Kaloud Lotus, Kaloud Samsaris, and Kaloud Kouture to customers
throughout the world. Kaloud is immediately recognizable for its high quality and sleek
10
11
aesthetics.
10.
12
that was designed and engineered to regulate the transfer of heat from charcoal to the
13
tobacco, and which is manufactured in the United States using high-quality non-toxic
14
materials. The design reduces ash and ultra-fine particles, which results in a smoother,
15
cleaner and more flavorful Hookah session. Aside from function, the Kaloud Lotus
16
aesthetics incorporate an abstract lotus-blossom that adds to its intrigue. Photographs of the
17
Kaloud Lotus, its packaging, and its marketing insert (Marketing Insert) is attached as
18
Exhibit A.
19
11.
Kaloud filed for copyright registration for the Kaloud Lotus design and owns
20
all rights, including the copyright, to the Kaloud Lotus. The application number is 1-
21
2071608084. Further, Kaloud filed for copyright registration for the Kaloud Lotus
22
Marketing Insert and owns all rights, including the copyright, to the insert. The application
23
number is 1-2389831079.
24
12.
Kaloud has spent substantial time, money, and effort in developing consumer
25
recognition and awareness of its trademarks. Through the extensive use of its marks,
26
Kaloud has built and developed significant goodwill in its products. Kalouds marks
27
include:
28
3
COMPLAINT
a.
KALOUD (design mark) for Hookah parts, namely, containers for housing
charcoal separate from bowls while permitting heat transfer to tobacco placed
for housing hookah charcoal separate from hookah bowls while permitting
b.
KALOUD (text) for Hookah parts, namely, containers for housing charcoal
separate from bowls while permitting heat transfer to tobacco placed in the
housing hookah charcoal separate from hookah bowls while permitting heat
transfer to tobacco placed in the bowls. Registration number 4758255.
10
11
c.
number 4703537.
12
13
d.
KALOUD (text mark) for flavoring for hookah base water. Registration
number 4703536.
14
15
KALOUD (design mark) for flavoring for hookah base water. Registration
e.
KALOUD LOTUS (text) for Hookah parts, namely, containers for housing
16
charcoal separate from bowls while permitting heat transfer to tobacco placed
17
in the bowls; smokers articles, namely, containers for housing hookah charcoal
18
separate from hookah bowls while permitting heat transfer to tobacco placed
19
in the bowls.
20
f.
The Kaloud Lotus Trade Dress for Hookah parts, namely, containers for
21
22
23
namely, containers for housing hookah charcoal separate from hookah bowls
24
25
26
g.
27
(Collectively Marks.) KALOUD (design mark) for hookah parts (registration number
28
4762735) and for flavoring for hookah base water (registration number 4703537), and,
4
COMPLAINT
KALOUD (text mark) for hookah parts (registration number 4758255) and for flavoring
for hookah base water (registration number 4703536), are referred to herein as the
Registered Marks. A true and correct copy of the Marks is attached as Exhibit B.
13.
Kalouds instantly recognizable products and Marks makes Kaloud the target
affixing Kalouds marks to unauthentic, and potentially harmful products, leading them to
illegitimate profits. Consumers are misled when they purchase these inferior products while
under the belief the products are authentic Kaloud products. In addition, many of the
counterfeit products use materials that may be toxic when used to smoke.
DEFENDANTS UNLAWFUL ACTIVITIES
10
11
14.
12
the present, Defendants have, without the consent of Plaintiff, offered to sell and sold
13
within the United States, goods that were neither made by nor authorized by Kaloud using
14
reproductions, counterfeits, copies and imitations of the Kaloud Marks and products.
15
15.
Thus, Kaloud is informed and believes, and upon such, alleges that in order to
16
receive higher profit margins, Defendants have held themselves outthrough the
17
counterfeit and nearly identical products they carry to be sponsored by, affiliated with,
18
and otherwise connected with Kaloud. Specifically, Defendants have advertised, offered for
19
sale, sold, distributed, displayed, and have affixed the Kaloud Lotus Marks to hookah
20
21
16.
On or around June 10, 2015, Kaloud, through a third party, ordered three
22
Kaloud Lotuses from Global. Defendant Global sent three counterfeit Lotuses to Kaloud.
23
Upon receipt, all three items were inspected and were confirmed as counterfeits.
24
17.
On or about July 4, 2015, Kaloud, through a third party, ordered ten Kaloud
25
Lotuses from Global. As true and correct copy of the email receipt for the July 4, 2015
26
order is attached as Exhibit C. Defendant Global sent ten counterfeit Lotuses to Kaloud.
27
Upon receipt, all ten (10) items were inspected and were confirmed as counterfeits.
28
5
COMPLAINT
18.
On or about July 17, 2015, Kaloud, through a third party, ordered 80 Kaloud
Lotuses from Global. As true and correct copy of the email receipt for the July 17, 2015
order is attached as Exhibit D. Unlike the other orders, this order was not fulfilled by
Global. SW fulfilled the order on Globals behalf by sending 80 counterfeit Lotuses to one
of Kalouds agents. A true and correct copy of the shipping label is attached as Exhibit E.
19.
The counterfeit Lotuses appear identical to the Kaloud Lotus in all material
respects. The products, including the Marks are identical, as well as the packaging, which
even used the identification of TM next to the Kaloud Marks. Moreover, the counterfeit
Lotus even included the Marketing Insert that has been registered with the Copyright
10
11
12
13
Office. True and correct copies of photographs of the counterfeits are attached as Exhibit F.
20.
14
further confuse and deceive, the consuming public concerning the source and sponsorship
15
16
Defendant. By its wrongful conduct, Defendants have traded upon and diminished the
17
goodwill of the Kaloud Marks. Further, the sale and distribution of counterfeit goods by
18
19
22.
20
import counterfeit goods in this manner, are causing and are likely to cause further
21
confusion or mistake or deceive consumers who purchase the unauthorized and counterfeit
22
goods.
23
23.
24
import for purpose of resale within the United States counterfeit goods consisting of
25
reproductions and/or copies of the products baring the Kaloud Marks. Defendants use of
26
27
28
6
COMPLAINT
3
4
5
6
7
24.
1 through 23 above.
25.
Kaloud is the legal owner of the federally registered Kaloud marks as set forth
The Registered Marks are valid, protectable and distinctive trademarks that
Kaloud continuously used to promote its goods since the date of first use as designated in
10
27.
11
12
the Registered Marks is likely to cause confusion, deception, and mistake by creating the
13
false and misleading impression that Defendants products are manufactured, produced,
14
15
informed and believes and thereon alleges that Defendants utilized the Registered Marks in
16
order to create consumer confusion and has in fact created consumer confusion including
17
but not limited to initial interest confusion and confusion as to affiliation or association
18
19
20
21
28.
22
malicious with a deliberate intent to trade on the goodwill associated with the Registered
23
Marks.
24
30.
Plaintiff is informed and believes and thereon alleges that as a proximate result
25
26
Kalouds advertising, sales, and consumer recognition, Defendants have made substantial
27
28
7
COMPLAINT
31.
recognition, Kaloud has been damaged and deprived of substantial sales and has been
according to proof.
32.
Plaintiff is informed and believes, and thereon alleges that, unless restrained
by the Court, Defendants will continue to infringe Kalouds Registered Marks, thus
not afford Plaintiff adequate relief for the damage to its trademark in the public perception.
10
Further, Plaintiff is informed and believes and thereon alleges that in the absence of
11
injunctive relief, customers are likely to continue to be mistaken or deceived as to the true
12
13
33.
Plaintiff is informed and believes and thereon alleges that Defendants acts
14
were committed, and continue to be committed, with actual notice of Kalouds exclusive
15
rights and with an intent to cause confusion, to cause mistake, and/or to deceive, and cause
16
injury to the reputation and goodwill associated with Kaloud and Kalouds products. At a
17
18
whichever is greater, together with Plaintiffs attorneys fees pursuant to 15 U.S.C. 1117.
19
20
21
22
23
24
25
26
34.
Plaintiff
through 33 above.
35.
27
28
36.
37.
3
4
that they have distributed has caused and is causing consumer confusion about the source
7
8
9
10
11
12
13
39.
to the goodwill of Kaloud and diminished the brand recognition of the Registered Marks.
40.
Plaintiff reserves the right to elect, at any time before final judgment is entered
in this case, an award of statutory damages pursuant to 15 U.S.C. 1117(c)(1) and/or (2).
42.
14
15
1117(c)(2).
16
43.
17
and to recover Defendants profits, actual damages, enhanced profits, and treble damages,
18
19
44.
20
had actual knowledge of the business activities of the respective defendant, such as the
21
importation of counterfeit goods, or were willfully blind to the same. The Defendants
22
corporate officers and directors directed and materially profited from the activities of their
23
companies counterfeiting, in the form of increased salaries, benefits, and share price. As
24
such, the corporate officers and directors are further jointly and severally liable for the
25
counterfeiting.
26
45.
27
Defendants have caused and will continue to cause, Plaintiff irreparable harm unless
28
1
2
4
5
6
46.
1 through 45 above.
47.
Kaloud is informed and believes and thereon alleges that unregistered Kaloud
Marks have become associated in the minds of consumers with Kaloud and its respective
goods.
9
10
11
48.
Defendants marketed through use of marks that are likely to cause confusion to the Marks.
49.
12
of origin, which is likely to cause confusion and mistake and to deceive consumers as to the
13
14
50.
Kaloud is informed and believes and thereon alleges that as a proximate result
15
of Defendants false designation of origin, Defendants stand to make substantial sales and
16
17
51.
Kaloud is informed and believes and thereon alleges that unless restrained by
18
this Court, Defendants will continue to designate falsely the origin of their goods, causing
19
20
compensation will not afford Kaloud adequate relief for its resulting damages. Further,
21
Plaintiff is informed and believes and thereon alleges that in the absence of injunctive
22
relief, customers are likely to continue being mistaken or deceived as to the true source,
23
24
52.
Kaloud is informed and believes and thereon alleges that Defendants acts
25
were committed, and continue to be committed, with actual notice of Kalouds Marks and
26
with an intent to cause confusion, to cause mistake, and to deceive, and to cause injury to
27
the reputation and goodwill associated with Kaloud and Kalouds genuine products.
28
10
COMPLAINT
3
4
5
53.
practices in the course of a business, trade, or in commerce, in violation of Cal. Bus. &
8
9
55.
Plaintiff is informed and believes and thereon alleges that as a direct and
10
gained property and revenues properly belonging to Kaloud. Kaloud therefore seeks
11
restitution of these amounts. Kaloud also seeks injunctive relief restraining Defendants,
12
their officers, agents, and employees, and all persons acting in concert with them, from
13
further engaging in acts of unfair competition and/or fraudulent business acts against
14
15
16
17
18
19
20
21
22
23
24
56.
Upon information and belief, Defendants will continue to infringe the Kaloud
Marks.
58.
25
complained of herein, Kaloud has been damaged in an amount not yet ascertainable. When
26
Kaloud has ascertained the full amount of damages, it will seek leave of court to amend this
27
Complaint accordingly.
28
11
COMPLAINT
60.
Plaintiff in informed and believes, and based thereon alleges, that Defendants,
in doing the things herein alleged, acted willfully, maliciously, and oppressively, with full
knowledge of the adverse effect of their actions on Kaloud, and with willful and deliberate
5
6
8
9
10
11
12
61.
Marks.
63.
13
and trebled profits, destruction of all products bearing counterfeit marks, destruction of all
14
equipment used to make counterfeit products, punitive damages, and attorneys fees given
15
16
17
18
19
20
21
64.
22
23
original material and is copyrightable under the laws of the United States. Kaloud has
24
complied in all respects with the Copyright Act and all of the laws of the United States
25
governing copyrights.
26
27
66.
28
12
COMPLAINT
distributing, and utilizing the Copyright for purposes of trade in violation of 17 U.S.C.
501 et seq.
67.
because, inter alia, the Defendants are sophisticated sellers of products and knew that the
Indeed, Defendants knew that the design and marketing insert on the counterfeit products
were exact replicas of the plaintiffs Copyright. Thus, the copyright infringement was an
exact replica and other non-copyrightable elements were also copied lock, stock and barrel
10
11
12
13
unauthorized display and distribution of the Copyright in the Kaloud product for purposes
14
15
brand.
16
17
18
70.
The wrongful acts of Defendants has caused, and is causing, great injury to
19
Plaintiff, of which damages cannot be accurately computed, and unless this Court restrains
20
Defendants from further commission of said acts, Kaloud will suffer irreparable injury, for
21
22
that Defendants are infringing Kalouds copyrights and an order under 17 U.S.C. 502
23
24
72.
As a result of the acts of Defendants alleged herein, Kaloud has suffered and is
25
suffering substantial damage to its business in the form of diversion of trade, loss of profits,
26
injury to goodwill and reputation, and the dilution of the value of its rights, all of which are
27
28
13
COMPLAINT
1
2
3
73.
4
5
7
8
10
11
b.
12
c.
Attorneys fees;
13
d.
Costs of suit;
14
e.
Joint and several liability for landlords, officers, and directors for the
15
16
Defendants;
f.
17
18
19
20
2.
21
a.
22
b.
23
24
c.
Attorneys fees;
25
d.
Costs of suit;
26
e.
Joint and several liability for landlords, officers, and directors for the
27
28
Defendants
14
COMPLAINT
f.
4
5
a.
b.
c.
d.
Attorneys fees;
10
e.
Costs of suit;
4.
11
12
illegal business practices under California Business & Professions Code 17200;
5.
13
14
15
companies, and all persons acting in concert or participation with them and each of them
16
from:
17
18
19
20
21
22
23
6.
24
and serve on Kaloud within thirty (30) days after issuance of an injunction, a report in
25
writing and under oath setting forth in detail the manner and form in which Defendants
26
27
28
7.
For an order from the Court requiring that Defendants provide complete
accountings and for equitable relief including that Defendants disgorge and return or pay
15
COMPLAINT
their ill-gotten gains obtained from the illegal transactions entered into and pay restitution,
including the amount of monies that should have been paid if Defendants have complied
Pursuant to 15 U.S.C. 1118, requiring that Defendants and all others acting
under Defendants authority, at their cost, be required to deliver to Plaintiff for destruction
advertisements, and other material in their possession, custody or control baring any of the
Kaloud Marks.
9.
10
10.
11
by the Court;
11.
12
13
that:
a.
14
15
16
17
18
19
& (b).
b.
20
Requiring Defendants to account for and pay over to Plaintiff all profits
21
22
23
24
25
26
d.
Attorneys fees;
27
e.
Costs of suit;
28
12.
13.
14.
For such other and further relief as the Court may deem just and equitable.
3
4
ONE LLP
5
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
17
COMPLAINT
Plaintiff Kaloud Inc. hereby demands trial by jury of all issues so triable under the
2
3
law.
4
5
ONE LLP
6
7
8
9
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
18
COMPLAINT