Gordon v. Thread Pit - Thread Pit Answer and Counterclaim PDF

Case 2:14-cv-08996-GW-PLA Document 9 Filed 12/12/14 Page 1 of 13 Page ID #:49
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ALONZO WICKERS IV (Bar No. 169454)

DAVIS WRIGHT TREMAINE LLP
865 South Figueroa Street, Suite 2400
Los Angeles, CA 90017-2566
Telephone: (213) 633-6800
Facsimile: (213) 633-6899
alonzowickers@dwt.com
LISA MOORE
(pro hac vice application to be submitted)
ANDREW PEQUIGNOT
THE MOORE FIRM, LLC
887 West Marietta Street NW
Atlanta, GA 30318
Telephone: (404) 748-9596
Facsimile: (404) 565-2941
Attorneys for Thread Pit, Inc.
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA
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WESTERN DIVISION
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CHRISTOPHER GORDON,
Plaintiff / CounterclaimDefendant,
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v.
THREAD PIT, INC.,
Defendant / CounterclaimPlaintiff.
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Case No. 2:14-cv-08996-GW-PLA

DEFENDANT THREAD PIT, INC.S
ANSWER AND COUNTERCLAIMS
Defendant Thread Pit, Inc. (Thread Pit), by and through its undersigned
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counsel, responds to the Complaint of Plaintiff Christopher Gordon (Gordon) as
follows:
INTRODUCTION
Thread Pit admits that it sold t-shirts bearing the phrase Honey Badger Dont
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Care. Thread Pit denies that its actions infringe any purported rights held by Gordon.
Thread Pit is without knowledge or information sufficient to form a belief as to the
remaining allegations in the Introduction section of the Complaint, and therefore
such allegations are denied.

JURISDICTION AND VENUE
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1.
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Thread Pit admits that this civil action purports to be brought under
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federal trademark and copyright laws. Thread Pit further admits that this Court has
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subject matter jurisdiction.

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Thread Pit admits that this Court has supplemental jurisdiction over
Gordons state-law claims.

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Thread Pit admits that venue is proper in this District. Thread Pit further
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admits that it sold t-shirts and sweatshirts bearing the phrase Honey Badger Dont
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Care in this District and that Thread Pit has sold other products in this District.
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Thread Pit denies that it has caused Gordon any tortious injury and otherwise denies
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the remaining allegations in Paragraph 3.

THE PARTIES
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4.
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Thread Pit is without knowledge or information sufficient to form a
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belief as to the truth of the allegations in Paragraph 4, and therefore such allegations
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are denied.
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5.
Thread Pit admits the allegations in Paragraph 5.
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6.
Thread Pit denies the allegations in Paragraph 6.
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-1Case No. 2:14-cv-08996-GW-PLA
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are denied.
SUBSTANTIVE ALLEGATIONS
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are denied.
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are denied.
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are denied.
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11.
The Certificate of Registration from the United States Copyright Office
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speaks for itself. Thread Pit otherwise is without knowledge or information sufficient
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to form a belief as to the truth of the allegations in Paragraph 11, and therefore such
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allegations are denied.
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12.
The Certificates of Registration from the United States Patent and
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Trademark Office speak for themselves. Thread Pit denies that Gordon has a valid
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trademark in the phrase Honey Badger Dont Care. Thread Pit otherwise is without
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knowledge or information sufficient to form a belief as to the truth of the allegations
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in Paragraph 12, and therefore such allegations are denied.
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13.
Thread Pit admits that it sold t-shirts and sweatshirts bearing the phrase
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Honey Badger Dont Care after January 18, 2011, when Gordon claims to have
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first published the video that purportedly is subject to Copyright Registration No. PA
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1-750-515. Thread Pit denies that Gordon has a valid trademark in the phrase Honey
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Badger Dont Care. Thread Pit denies that it is continuing to sell such t-shirts and
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sweatshirts and otherwise denies the remaining allegations in Paragraph 13.

14.
Thread Pit denies that Gordon has a valid trademark in the phrase
Honey Badger Dont Care. Thread Pit is without knowledge or information
sufficient to form a belief as to the truth of the remaining allegations in Paragraph 14,
and therefore such allegations are denied.

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Thread Pit admits that it sells t-shirts on the Internet. Thread Pit is
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without knowledge or information sufficient to form a belief as to the truth of the
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remaining allegations in Paragraph 18, and therefore such allegations are denied.
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Honey Badger Dont Care in California and elsewhere in the United States through
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the website www.6dollarshirts.com. Thread Pit denies that Gordon has a valid
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trademark in the phrase Honey Badger Dont Care and otherwise denies the
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remaining allegations in Paragraph 19.
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20.
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23.
Thread Pit admits that Gordons counsel of record in this action sent
Thread Pit a demand letter dated July 25, 2014. Thread Pit denies the remaining
allegations in Paragraph 23.
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FIRST CLAIM
(Trademark Infringement Under 15 U.S.C. 1114)
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Thread Pit incorporates by reference, as if fully set forth herein, its
above responses.
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SECOND CLAIM
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(Trademark Infringement Under California Business and Professions Code
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14245 and California Common Law)
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above responses.
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THIRD CLAIM
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(Trademark Dilution Under 15 U.S.C. 1125(c))
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37.
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above responses.
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38.

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FOURTH CLAIM
(Federal Unfair Competition and False Designation of Origin Under 1125(a))
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above responses.
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FIFTH CLAIM
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(Unfair Competition)
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53.
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above responses.
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SIXTH CLAIM
(Copyright Infringement)
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above responses.
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belief as to whether Thread Pit had access to the particular work that Gordon
alleges was infringed, and therefore such allegations are denied.

61.
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Honey Badger Dont Care. Thread Pit denies that its actions infringe any purported
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rights held by Gordon. Thread Pit is without knowledge or information sufficient to
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form a belief as to the remaining allegations in Paragraph 61, and therefore such
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allegations are denied.

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Honey Badger Dont Care through the website www.6dollarshirts.com. Thread Pit
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denies the remaining allegations in Paragraph 62.
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PRAYER FOR RELIEF
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Thread Pit denies any remaining allegations not specifically admitted are
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denied. Thread Pit further denies that Gordon is entitled to the relief requested in the
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Complaint or any other relief.
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AFFIRMATIVE DEFENSES
FIRST DEFENSE
(Failure to State a Claim)

The Complaint fails to state a claim upon which relief can be granted.
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SECOND DEFENSE
(Ornamentation)
Gordon does not have trademark rights in the phrase Honey Badger Dont
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Care because his use of the phrase on various goods is merely ornamental and does
not function as a trademark.
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THIRD DEFENSE
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(Statute of Limitations)
Gordons claims are barred, in whole or in part, by the applicable statutes of
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limitations.
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FOURTH DEFENSE
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(Laches)
Gordons claims are barred, in whole or in part, by the doctrine of laches as a
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result of Gordons unreasonable delay in raising his claims.
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FIFTH DEFENSE
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(Abandonment)
Gordons trademark claims are barred, in whole or in part, by the doctrine of
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abandonment because Gordon has failed to enforce his alleged mark.
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SIXTH DEFENSE
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(No Likelihood of Confusion)

Gordons trademark claims are barred, in whole or in part, because there is no
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likelihood of confusion.
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SEVENTH DEFENSE
(Mark Not Famous)

Gordons dilution claims are barred, in whole or in part, because the alleged
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mark is not famous.
EIGHTH DEFENSE
(Lack of Originality)
Gordons alleged copyrights lack originality and thus are not entitled to
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copyright protection. Short phrases are not entitled to copyright protection. See 37
C.F.R. 202.1.
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NINTH DEFENSE
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(Fair Use)
Gordons copyright claim is barred, in whole or in part, by the doctrine of fair
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use.
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TENTH DEFENSE
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(Copyright Misuse)
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Gordons copyright claim is barred, in whole or in part, by the doctrine of
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copyright misuse because he is asserting rights in the allegedly infringed video
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beyond those protected by copyright in order to prevent competition.
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ELEVENTH DEFENSE
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(Unclean Hands)
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Gordons claims are barred, in whole or in part, by the doctrine of unclean
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hands.
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TWELFTH DEFENSE
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(Misrepresentations to the Copyright Office)
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Gordons copyright claim is barred as a result of a negligent or intentional non-
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disclosure or misrepresentation of material fact to the Copyright Office, including
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that Gordon does not own rights in the National Geographic video that was used to
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create the registered video.

THIRTEENTH DEFENSE
(Infringing Derivative Work)
Gordon does not own any copyright rights in the allegedly infringed video
under 17 U.S.C. 103(a) because the video is an infringing derivative work.
FOURTEENTH DEFENSE
(Lack of Valid Copyright Registration)

Gordon lacks a valid copyright registration, which is a prerequisite for filing a
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copyright infringement claim under 17 U.S.C. 411.
FIFTEENTH DEFENSE
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(Lack of Timely Copyright Registration)

Gordons requests for statutory damages and attorneys fees under the
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Copyright Act are barred, in whole or in part, under 17 U.S.C. 412 because the
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alleged infringement commenced before the effective date of Gordons copyright
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registration (which also is not within three months of Gordons claimed date of first
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publication).
ADDITIONAL DEFENSES
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Thread Pit reserves the right to assert additional affirmative defenses as may be
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disclosed during the course of additional investigation and discovery.

THREAD PITS PRAYER FOR RELIEF
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WHEREFORE, Thread Pit respectfully requests that this Court rule or
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otherwise enter judgment against Gordon:
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A.
Dismissing the claims in the Complaint with prejudice;
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B.
Requiring Gordon to pay for the costs of this action and reimburse
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Thread Pit for its attorneys fees and expenses associated with this litigation; and
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proper.
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Granting such other and further relief as this Court deems just and
COUNTERCLAIMS
Thread Pit, Inc. (Thread Pit) brings the following counterclaims against
Christopher Gordon (Gordon).

PARTIES
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1.
Thread Pit is a corporation organized and existing under the laws of the
State of Florida, with its principal place of business at 2708 Northeast Waldo Road,
Gainsville, Florida 32609.

2.
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Upon information and belief, Gordon is an individual residing in Los
Angeles, California.
JURISDICTION AND VENUE
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3.
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Gordon is domiciled and transacts business in California.

4.
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Gordon is subject to the personal jurisdiction of this Court because
This Court has subject matter jurisdiction over Thread Pits claims
pursuant to 28 U.S.C. 1331 and 1338.

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Venue is proper in this Court under 28 U.S.C. 1391.

FACTUAL BACKGROUND
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Thread Pit operates a website at 6dollarshirts.com that sells printed t-
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Thread Pit, before it received a demand letter from Gordon, sold t-shirts
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and sweatshirts bearing the phrase Honey Badger Dont Care.

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Gordon is a comedian who published a video on YouTube that featured
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preexisting video footage from National Geographic of a honey badger along with a
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voiceover from Gordon (the YouTube Video).
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The YouTube Video went viral, and Gordon sought to capitalize on its
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popularity by offering various goods on his website featuring the phrase Honey
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Badger Dont Care.
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Gordon purports to own trademark rights in the phrase Honey Badger
Dont Care, even though the phrase as used on goods offered by Gordon is merely
ornamental and does not function as a trademark.
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Gordon purports to own copyright rights in the YouTube Video, but the
YouTube Video is an infringing derivative work that is not entitled to copyright
protection under 17 U.S.C. 103(a). The phrase Honey Badger Dont Care also
lacks sufficient originality to be entitled to copyright protection. Short phrases are not
entitled to copyright protection. See 37 C.F.R. 202.1.
FIRST COUNTERCLAIM
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(Declaration of Non-Infringement)
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Thread Pit repeats and incorporates by reference the allegations in the
preceding paragraphs.
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In the Complaint, Gordon alleges that Thread Pit has infringed his
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purported trademark and copyright in the phrase Honey Badger Dont Care by
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incorporating the phrase into a clothing design. Gordon, however, does not own any
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intellectual property rights in the phrase Honey Badger Dont Care.
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There is an actual and justiciable controversy between Thread Pit and
Gordon use of the phrase Honey Badger Dont Care on clothing.

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Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. 2201 et
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seq., Thread Pit requests that this Court enter a judgment that Thread Pits use of the
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phrase Honey Badger Dont Care on clothing designs does not infringe any rights
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held by Gordon.
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SECOND COUNTERCLAIM
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(Cancellation of Trademark Registrations)
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Thread Pit repeats and incorporates by reference the allegations in the
preceding paragraphs.
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This Court may order the cancelation of registrations, in whole or in
part pursuant to 15 U.S.C. 1119.

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Gordons uses of the phrase Honey Badger Dont Care on the various
goods identified in the federal trademark registrations secured by Gordon,
Registration Nos. 4,505,781; 4,419,079; 4,419,081; and 4,281,472, are merely
ornamental. The phrase does not serve a trademark function.
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These registrations should, therefore, be cancelled.

PRAYER FOR RELIEF
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WHEREFORE, Thread Pit respectfully requests that this Court rule or

otherwise enter judgment against Gordon:
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Declaring that Thread Pits use of the phrase Honey Badger Dont
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Care on clothing does not infringe any trademark or copyright rights held by
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Gordon.
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B.
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Cancelling Federal Trademark Registration Nos. 4,505,781; 4,419,079;
4,419,081; and 4,281,472.
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C.
Awarding Thread Pit its costs in this action, including attorneys fees.
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D.
Granting such other and further relief as this Court deems just and
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proper.
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DATED: December 12, 2014
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/s/ Alonzo Wickers IV

ALONZO WICKERS IV (Bar No. 169454)
DAVIS WRIGHT TREMAINE LLP
865 South Figueroa Street, Suite 2400
Los Angeles, CA 90017-2566
Telephone: (213) 633-6800
Facsimile: (213) 633-6899
alonzowickers@dwt.com
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LISA MOORE
ANDREW PEQUIGNOT
THE MOORE FIRM, LLC
887 West Marietta Street NW
Atlanta, GA 30318
Telephone: (404) 748-9596
Facsimile: (404) 565-2941
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Attorneys for Thread Pit, Inc.
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- 12 Case No. 2:14-cv-08996-GW-PLA

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Case 2:14-cv-08996-GW-PLA Document 9 Filed 12/12/14 Page 1 of 13 Page ID #:49

ALONZO WICKERS IV (Bar No. 169454)

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

Case No. 2:14-cv-08996-GW-PLA

Case 2:14-cv-08996-GW-PLA Document 9 Filed 12/12/14 Page 2 of 13 Page ID #:50

counsel, responds to the Complaint of Plaintiff Christopher Gordon (Gordon) as

Thread Pit is without knowledge or information sufficient to form a belief as to the

remaining allegations in the Introduction section of the Complaint, and therefore

such allegations are denied.

subject matter jurisdiction.

Gordons state-law claims.

the remaining allegations in Paragraph 3.

Thread Pit is without knowledge or information sufficient to form a

Thread Pit admits the allegations in Paragraph 5.

Thread Pit denies the allegations in Paragraph 6.

Case 2:14-cv-08996-GW-PLA Document 9 Filed 12/12/14 Page 3 of 13 Page ID #:51

Thread Pit is without knowledge or information sufficient to form a

Thread Pit is without knowledge or information sufficient to form a

Thread Pit is without knowledge or information sufficient to form a

Thread Pit is without knowledge or information sufficient to form a

The Certificate of Registration from the United States Copyright Office

allegations are denied.

The Certificates of Registration from the United States Patent and

knowledge or information sufficient to form a belief as to the truth of the allegations

in Paragraph 12, and therefore such allegations are denied.

sweatshirts and otherwise denies the remaining allegations in Paragraph 13.

Case 2:14-cv-08996-GW-PLA Document 9 Filed 12/12/14 Page 4 of 13 Page ID #:52

Honey Badger Dont Care. Thread Pit is without knowledge or information

and therefore such allegations are denied.

Honey Badger Dont Care. Thread Pit is without knowledge or information

and therefore such allegations are denied.

Honey Badger Dont Care. Thread Pit is without knowledge or information

and therefore such allegations are denied.

Honey Badger Dont Care. Thread Pit is without knowledge or information

and therefore such allegations are denied.

without knowledge or information sufficient to form a belief as to the truth of the

remaining allegations in Paragraph 19.

Thread Pit denies the allegations in Paragraph 20.

Thread Pit denies the allegations in Paragraph 21.

Thread Pit denies the allegations in Paragraph 22.

Case 2:14-cv-08996-GW-PLA Document 9 Filed 12/12/14 Page 5 of 13 Page ID #:53

allegations in Paragraph 23.

Thread Pit denies the allegations in Paragraph 24.

Thread Pit denies the allegations in Paragraph 25.

(Trademark Infringement Under 15 U.S.C. 1114)

Thread Pit incorporates by reference, as if fully set forth herein, its

Thread Pit denies the allegations in Paragraph 27.

Thread Pit denies the allegations in Paragraph 28.

Thread Pit denies the allegations in Paragraph 29.

Thread Pit denies the allegations in Paragraph 30.

Thread Pit denies the allegations in Paragraph 31.

Thread Pit denies the allegations in Paragraph 32.

(Trademark Infringement Under California Business and Professions Code

14245 and California Common Law)

Thread Pit incorporates by reference, as if fully set forth herein, its

Thread Pit denies the allegations in Paragraph 34.

Thread Pit denies the allegations in Paragraph 35.

Thread Pit denies the allegations in Paragraph 36.

(Trademark Dilution Under 15 U.S.C. 1125(c))

Thread Pit incorporates by reference, as if fully set forth herein, its

Thread Pit denies the allegations in Paragraph 38.