This is an action to remedy acts of, inter alia, federal and state trademark
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3.
Clayton County, Georgia and is over the age of eighteen and is otherwise sui juris.
4.
with its principal place of business in New York County, New York.
JURISDICTION AND VENUE
5.
This action arises under the Federal Trademark Act, 15 U.S.C. 1051, et seq. and
This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.
1131 and 1338(a) and 15 U.S.C. 1114 and 1125 as, among other things, Plaintiffs cause of
action arises under the Federal Trademark Act (The Lanham Act of 1946), 15 U.S.C. 1051 et
seq.
Further, this Court has jurisdiction over Plaintiffs Florida state common law claims
This Court has personal jurisdiction over both Defendants because Defendants
have continuous, systematic, and substantial presences within this Judicial District including
marketing, promoting, selling and distributing Defendants goods and services in this Judicial
District.
8.
In addition, this Court has personal jurisdiction over Defendant Donald and
Defendant eOne pursuant to 48.193(2), Fla. Stat., because both Defendants are engaged in
substantial and not isolated activity within this State and Judicial District, including particularly
through the sale, distribution, marketing and promotion of phonorecords and music videos in the
State of Florida and this Judicial District.
9.
Defendants are also subject to the personal jurisdiction of this Court pursuant to
48.193(1)(a), Fla. Stat., because they conduct, engage in, and carry out substantial business
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activities in this State, and because they have committed the tortious acts of trademark
infringement and unfair competition more particularly described below in this State and Judicial
State, because they have sold the infringing goods and/or provided services in this State, and
such causes of action arose from the foregoing acts.
10.
In addition, Defendants are also subject to the personal jurisdiction of this Court
Both Defendants have systematically directed their business activities into this
U.S.C. 1391(c), and pursuant to 28 U.S.C. 1391(b)(2) as a substantial part of the events or
omissions giving rise to the claims asserted in this action occurred in this Judicial District and
Defendants conduct ongoing and continuous business activities in this State and District.
FACTUAL BACKGROUND
13.
winning music producer and disc jockey (DJ) who is in the business of providing professional
DJ entertainment services and, in addition, has produced singles promoted in connection with
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Plaintiff DJ Infamous is the owner of the U.S. Trademark Application, Ser. No.
86301703, as set forth on the Principal Register of the United States Patent and Trademark
Office (the USPTO) on June 5, 2014 to Marco Rodriguez-Diaz p/k/a DJ Infamous for the
trademark DJ INFAMOUS for Entertainment services by a musical artist and producer,
namely, musical composition for others and production of musical sound recordings;
Entertainment services in the nature of live musical performances, namely, personal appearances
by a disc jockey (the Mark).
15.
Plaintiff has continuously used his Mark in commerce in connection with the
provision of his DJ and production services since at least as early as 1996 when Plaintiff and
Plaintiffs DJ services were exhibited in association with the Mark in connection with a disc
jockey battle at a record store known as Dark , located in Broward County, Florida. A video
of the event was thereafter released for sale and additionally distributed through public access
television.
16.
In 1998, Plaintiff was awarded the title of the International Turntablist Federation
(ITF) USA DJ Champion, in addition to receiving the second place prize in the DJ World
Finals as held in Amsterdam, Netherlands.
19.
across five continents, at all times prominently displaying and using the Mark in connection with
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Thereafter, from 1999 to 2001, Plaintiff personally won a second and third world
In 2001, The Allies, including Plaintiff DJ Infamous, were inducted into the DMC
Amid Plaintiffs success in, among other things, the DJ competitions, Plaintiff
received numerous sponsorship deals and was displayed on several printed advertisements
relating to DJ products, clothing, and hip-hop music.
23.
which was dedicated to covering turntablism, referring to the art of DJ performances through
vinyl record turntables.
have been sold at big-box music stores such as Guitar Center and Sam Ash, and Plaintiff was
featured in the awarding-winning feature-length documentary film, Scratch.
25.
established music producer and composer who, among other things, creates, composes, writes,
arranges, programs, mixes, remixes, routes and processes sound recordings and underlying
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compositions for various musical recording artists and record companies (hereinafter referred to
as Production Services).
27.
hit singles for top-selling Rap and R&B artists. The albums on which Plaintiff is featured have,
to date, sold over 15 million copies.
28.
with work as a producer on Dwayne Michael Carter, Jr. p/k/a Lil Waynes album entitled Tha
Carter III.
29.
In total, Plaintiff DJ Infamous has produced singles on no less than thirty (30)
31.
prominent local music figure in South Florida in his capacity as both a DJ and music producer,
and has also performed several DJ exhibitions in Miami, Florida throughout the past two years.
32.
short film entitled Heat Nation, released around October 2014, for which he composed the
films score.
33.
Infamous produced the 2014-2015 introduction music which is used as the entrance theme for
the Miami Heat players.
34.
Plaintiff DJ Infamous, at all times in connection and association with his Mark,
continues to produce hip-hop and R&B singles, as well as tour and perform his live professional
DJ services across the country.
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Plaintiff recently became aware that Defendant Donald was infringing Plaintiffs
Mark, and that Defendant Donald was offering disc jockey and producer services of a
substantially similar and competitive nature to those offered by DJ Infamous, under the identical
name and Mark of DJ Infamous.
36.
potential customers, and others, who performed internet searches using Google, Yahoo, and
other search engines, while seeking the services of DJ Infamous, that they were instead directed
to
various
websites
related
http://instagram.com/DJInfamous
to
Defendant
(the
Donald,
Donald
including,
Instagram
without
limitation,
Account)
and
Defendant Donald, by and through, among other avenues, his Donald Instagram
Account and Donald Twitter Account, uses the Mark to promote disc jockey entertainment and
production services directly competitive to those of DJ Infamous.
38.
to Plaintiff as a result of having been directed to and/or discovering, among other websites, the
Donald Instagram Account and Donald Twitter Account, when seeking the services of Plaintiff.
39.
In fact, reflecting the severe and pervasive consumer confusion emanating from,
among other things, Defendant Donalds willful and unlawful use and exploitation of Plaintiff DJ
Infamous Mark, several prominent music websites mistakenly attribute photographs of
Defendant Donald to Plaintiff DJ Infamous biographical information.
Additionally, other
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clickable html link to a website entitled djinfamous.com, which is currently registered under
and hosted by internet domain registrar and web hosting company Go Daddy.
41.
The music label to which Defendant Donald is current signed, Defendant eOne, is
vast catalog of music, including that of Defendant Donalds, in, among other states, Florida.
44.
Defendant eOne also actively promotes Defendant Donald and his infringing use
of the Plaintiffs DJ Infamous Mark on its official website, as a member of its active hip-hop
artist roster. (See Exhibit B).
45.
distribution of Defendant Donald, his music, and his infringing use of the DJ Infamous Mark,
is the fact that Plaintiff DJ Infamous has actually produced multiple songs for several artists
displayed on eOnes catalog, including, among others, rappers Fat Joe and Noreaga.
46.
Defendant Donald and his infringing DJ Infamous Mark while, at the same time, Plaintiff DJ
Infamous is featured and credited as the producer for several artists likewise displayed on eOnes
catalog.
47.
distributing Defendant Donalds services and goods in Florida, Defendant Donald has performed
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his disc jockey services using Plaintiffs name and the DJ Infamous Mark at nightclubs and
venues throughout the country, including performances in nightclubs in Miami Beach, Florida.
48.
Defendant Donalds disc jockey performances in Miami Beach, Florida using the
through Defendant eOne, released a sound recording single entitled Double Cup under the
name DJ Infamous.
50.
Double Cup was distributed by Defendant eOne on iTunes for sale as a digital
on
the
official
eOne
Music
SoundCloud
profile
page
located
at
party in Miami Beach, Florida to promote the release of his new single entitled Double Cup
(Remix), all while continuing his infringing use of the DJ Infamous Mark (the Miami Beach
Release Party).
52.
The Miami Beach Release Party, billed as Famous & Infamous: Double Cup
Remix Release Party, was promoted to South Florida residents via, among other places, online,
and tickets were sold online on various ticket vendor websites. (See Composite Exhibit C).
53.
In connection with both Double Cup and Double Cup (Remix) (collectively
the Donald Singles), Defendants have identified the artist to be DJ Infamous, and have
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Subsequently, on or around June 25, 2014, Defendants released a music video for
the Double Cup (Remix) single, which was hosted by several websites and distributed
throughout the internet (the Donald Music Video).
55.
The Donald Music Video, which features Defendant Donald, was filmed in and
took place in, at least partially, Miami Beach, Florida and/or other parts of Miami-Dade County,
Florida. (See Composite Exhibit D).
56.
standing in front of a large home with a Miami Beach ocean skyline in the background. During
this scene, Donald holds out toward the camera the pendant of his gold necklace which reads
We the Best Music Group.
57.
label. WTB is known in the hip-hop community for its Miami-based founder DJ Khaled and its
consistent promotion of the city of Miami in its music.
58.
Defendant Donald has promoted ties to Miami-based WTB and DJ Khaled since
infringing use of Plaintiffs Mark, websites of music industry-leading media outlets, including, in
particular, MTV and Billboard, have mistakenly attributed recordings by Defendant Donald to
Plaintiff DJ Infamous in their biographies of Plaintiff. (See Composite Exhibit A).
Notice of Infringement
60.
cease and desist letter highlighting Plaintiffs longstanding and extensive use of the Mark as well
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as the nature of Defendants infringement of Plaintiffs Mark, demanding that Defendants cease
and desist any future use of the Mark (Plaintiffs Cease and Desist Letter).
61.
that Plaintiff maintained a valid, active registration application of the Mark on the Principal
Register in the United States Patent and Trademark Office.
62.
Notably, Plaintiffs Cease and Desist Letter explained that Plaintiff DJ Infamous
had been actively using the Mark in commerce since, at the latest, 1998, the year in which
Plaintiff was named the ITF USA DJ Champion.
63.
electronic mail message to counsel for Plaintiff acknowledging the receipt of Plaintiffs Cease
and Desist Letter.
64.
Donalds infringing use of the Mark, and having acknowledged Plaintiffs Cease and Desist
Letter, Defendant Donald, in bad faith, reflexively proceeded to disingenuously register
Plaintiffs DJ Infamous Mark under Defendant Donalds name with the USPTO.
65.
service mark described as serving largely the same goods and services as Plaintiffs Mark,
including, among others disc jockey services and musical compositions and sound recordings.
66.
Defendant only sought to register Plaintiffs Mark with the USPTO after
Plaintiff sent Plaintiffs Cease and Desist Letter, despite being fully aware that Plaintiff had
already registered this exact same Mark.
67.
Infamous maintained an active registration in the Mark, Defendant Donald, or his representative,
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Additionally, ostensibly reacting to the fact that Plaintiff DJ Infamous has been
using the Mark since 1996 and in commerce since 1998, Defendant Donalds subsequently-filed
fabricated registration conveniently states that Defendant Donald first used the name DJ
Infamous in commerce in 1994.
69.
However, in a 2012 interview with Prime Time Radio with J-Rod, Defendant
Donald explained his beginnings as a radio disc jockey, wherein he claimed he began in 1998
at age 17. If true, this means that Defendant Donald represented to the USPTO that he has
been using the using the DJ Infamous mark in commerce since approximately age 13.
70.
in commerce against the express requests by Plaintiff to cease and desist such use.
71.
Specifically, among other willful bad faith acts, subsequent to the receipt of
Plaintiffs Cease and Desist Letter, Defendant Donald has brazenly developed a Soundcloud
profile as located at https://soundcloud.com/dj-infamous-1-1, entitled THE REAL DJ
INFAMOUS (the Donald Soundcloud Account) (collectively with the Donald Instagram
Account and Donald Twitter Account, the Donald Online Accounts).
72.
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Defendants have since released additional sound recording singles, including Something Right
and another entitled Dikembe which exploit the Mark in its general promotion and distribution
without the consent of Plaintiff DJ Infamous.
73.
substantially similar, but identical to Plaintiff DJ Infamous Mark, is clearly confusing and has
caused, and is likely to continue to cause, significant confusion among potential purchasers and
consumers of the parties respective goods and services, and has further caused and will continue
to cause significant confusion amount consumers based in the State of Florida and this District.
74.
Defendant Donald did not begin use of his infringing DJ Infamous mark in
connection with the provision of his goods and services until after Plaintiff began use of the
Mark.
75.
All conditions precedent to the institution of this action have been satisfied,
Plaintiff hereby incorporates by reference and realleges each and every allegation
INFAMOUS has been without the consent of Plaintiff, the registrant of U.S. Trademark
Application, Ser. No. 86301703, in violation of 15 U.S.C. 1114.
79.
The use in commerce of, among other things, the Donald Instagram Account,
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Donald Twitter Account and the Donald Singles are also confusingly similar to Plaintiffs Mark,
and such use has been without the consent of Plaintiff.
80.
Defendants release of, among other things, the Donald Singles, in connection
substantial confusion and mistake, and have deceived customers of Plaintiff, potential customers
of Plaintiff, and others seeking services from Plaintiff, nationwide, and particularly in Florida, in
violation of 15 U.S.C. 1114.
83.
foregoing Mark as early as June 11, 2014, by letter, which letter was confirmed as received.
Nevertheless, Defendants have continued to offer the good and services of Defendant Donald in
commerce using the Mark.
84.
By and through the aforementioned formal notice, Defendants were afforded the
Nevertheless,
Defendants responded by stating that they would not take the actions reasonably requested by
Plaintiff to end such willful infringement.
85.
searches for DJ Infamous result in links to the Donald Online Accounts or the Donald Singles,
wherein Plaintiffs Mark, and in several instances Plaintiffs biographical information, is
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prominently displayed.
86.
Defendants
unless and until said acts are enjoined by this Court, pursuant to 15 U.S.C. 1116.
COUNT II
VIOLATION OF SECTION 43 OF THE LANHAM ACT, 15 USC 1125
(As Against All Defendants)
88.
Plaintiff hereby incorporates by reference and realleges each and every allegation
with the provision of Defendant Donalds DJ and production goods and services has caused
substantial confusion and is likely to continue to cause confusion and mistake, and to deceive,
and to make consumers mistakenly believe that such goods and services are Plaintiffs goods, or
that such goods and services are sponsored by, approved by or somehow connected with
Plaintiff, with consequent injury to Plaintiff and to consumers of Plaintiffs goods and services.
90.
readily identifiable confusion nationwide, including particularly in Florida, and are likely to
continue to cause confusion or mistake, or to deceive as to the affiliation, connection, or
association of Defendants with Plaintiff DJ Infamous, or as to the origin, sponsorship, or
approval of the goods, services, or commercial activities of Defendants by Plaintiff, in violation
of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).
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91.
Plaintiff has been and, absent injunctive relief, will continue to be irreparably
harmed by Defendants aforementioned acts, and has further suffered monetary damages in an
amount to be determined at trial.
93.
95.
Plaintiff hereby incorporates by reference and realleges each and every allegation
The use of the Mark by Defendants has caused substantial confusion and is likely
to continue to cause confusion between Defendant Donald and/or his activities and Plaintiff DJ
Infamous and his activities nationwide, and particularly in Florida, and such use by Defendants
infringes the valuable common law rights of Plaintiff in his DJ INFAMOUS trademark.
97.
Plaintiff by creating confusion as to the source or sponsorship of the good and services of
Defendants and misappropriates the fine reputation and goodwill of Plaintiff in his DJ
INFAMOUS Mark, thereby injuring that reputation and goodwill, and diverting from Plaintiff
the benefits and good will arising therefrom.
98.
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99.
Defendants have been on actual notice of Plaintiffs marks and registrations and
have acted willfully in infringing, and continue to infringe, Plaintiffs Mark, thereby entitling
Plaintiff to actual and punitive damages, in an amount to be proven at trial.
100.
The Defendants wrongful acts have irreparably injured Plaintiff, and threaten to
continue to irreparably injure Plaintiff, unless and until said acts are enjoined by this Court, as
Plaintiff has no adequate remedy at law.
COUNT IV
TRADEMARK INFRINGEMENT BASED ON REVERSE CONFUSION AND
REVERSE PALMING OFF
(As Against All Defendants)
101.
Plaintiff hereby incorporates by reference and realleges each and every allegation
103.
Production Services with Defendant Donalds and are likely to mistakenly believe that the goods
and services of Plaintiff are actually goods and services of Defendant Donald.
104.
Defendants have saturated the national market with advertising and promotions
using Plaintiffs Mark and such advertising and promotions have caused Plaintiff to lose the
value of his Mark and brand and product identity, and, perhaps most significantly, to lose control
over the goodwill and reputation associated with Plaintiffs Mark and brand, and the ability to
enter into new markets.
105.
use of the Mark has diminished Plaintiffs Mark, created a danger that Plaintiffs Mark could
become generic and, further, diffused the publics and potential consumers and customers
immediate association of Plaintiffs Mark with Plaintiff as the secondary source.
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106.
rights established in the Mark is likely to have injured the business and reputation of Plaintiff and
likewise cause irreparable injury to Plaintiff, by, among other things, causing confusion, mistake
or deception to the public as to the source, origin, sponsorship or licensing of the goods and
services created by Defendant Donald and further likely to have rendered Plaintiffs valuable
Mark devoid of independent value.
107.
entitled to monetary damages, including Defendants profits together with the damages of
Plaintiff, including Plaintiffs lost profits, and costs and attorney's fees.
108.
b.
c.
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2.
The Defendants, and each of them, their respective officers, employees, agents,
suppliers, and all those acting in concert with them be permanently restrained and enjoined from
using the Marks DJ INFAMOUS or any colorable imitation thereof, with respect to any
entertainment or similar services;
3.
The Defendants, and anyone associated with them, their respective officers,
employees, agents, suppliers, and all those acting in concert with them be permanently restrained
and enjoined from infringing Plaintiffs DJ INFAMOUS Mark;
4.
A judgment in favor of Plaintiff and against Defendants for the full value of all
Defendants profits derived from Defendants' unlawful acts set forth herein, together with the
damages of Plaintiff, including lost profits, in an amount to be determined;
5.
The amount of any judgment be trebled pursuant to 15 U.S.C. 1117, due to the
The costs of this action and Plaintiffs reasonable attorneys fees, to be taxed
the DJ INFAMOUS Mark, or any colorable imitation thereof, or any other similar mark be
accounted for, and delivered to the attorney for Plaintiff for such disposal and/or destruction as
Plaintiff may exercise pursuant to 15 U.S.C. 1118.;
8.
anyone associated with either of the Defendants, as well as each of their officers, agents,
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servants, employees, and attorneys, and those persons in active concert or participation with
them who receive actual notice of the order by personal service or otherwise from:
a.
b.
c.
d.
Using any internet web site or domain name or metatag or online account
which includes the DJ INFAMOUS Mark or any similar marks;
e.
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f.
g.
h.
9.
10.
11.
That each of the Defendants is liable, jointly and severally, for all damages due to
the collective nature of their actions, activities and tortious conduct, and
12.
That the Court grant such other and further relief as this Court deems just, proper,
Respectfully submitted,
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CERTIFICATE OF SERVICE
WE HEREBY CERTIFY that a true and correct copy of the foregoing was served via
CM/ECF on this 17th day of November, 2014, on all counsel or parties of record on the Service
List below.
SERVICE LIST
Jeff Barnes, Esq.
W.J. Barnes, P.A.
1515 North Federal Highway
Suite 300
Boca Raton, Florida 33432
Phone: (561) 864-1067
Fax: (310) 275-5157
jeff@wjbarneslaw.com
Attorneys for Defendant
CALVIN DONALD
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