Case 8:15-cv-01294-JCG Document 15 Filed 01/25/16 Page 1 of 7 Page ID #:36

1 Randall S. Leff (SBN 77148)

rleff@ecjlaw.com
2 Russell M. Selmont (SBN 252522)
rselmont@ecjlaw.com
3 ERVIN COHEN & JESSUP LLP
9401 Wilshire Boulevard, Ninth Floor
4 Beverly Hills, California 90212-2974
Telephone (310) 273-6333
5 Facsimile (310) 859-2325
6 Attorneys for SCHWARTZMAN PICTURES, INC., a California corporation
7
8

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

10
11 SCHWARTZMAN PICTURES, INC.,
Plaintiff,

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13

Case No. 8:15-cv-01294-JCG

FIRST AMENDED COMPLAINT
FOR:

v.

14 VANS, INC., a Delaware corporation;

and DOES 1 through 10,
15
Defendants.
16

1) COMMON LAW TRADEMARK

INFRINGEMENT, and
2) UNFAIR COMPETITION
JURY TRIAL DEMANDED

17
18

Plaintiff SCHWARTZMAN PICTURES, INC., a California corporation,

19 complains of Defendant VANS, INC. as follows:

20

1.

Plaintiff SCHWARTZMAN PICTURES, INC. (SPI) is a corporation

21 organized and existing pursuant to the laws of the State of California, with its
22 principal place of business located in the County of Los Angeles, State of
23 California.
24

2.

Plaintiff is informed and believes and thereon alleges that Defendant

25 Vans, Inc., (Vans) is a corporation organized and existing pursuant to the laws of
26 the State of Delaware, with its principal place of business located in the City of
27 Cypress, State of California.
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3.
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Plaintiff is informed and believes and thereon alleges that the

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1 individuals and/or entities designated herein as DOES 1 through 10 are the agents
2 and/or representatives of the named Defendant herein, and each of them, and in
3 doing the acts complained of herein, acted in their capacities as agents,
4 representatives and or co-conspirators of the named Defendants, thereby making
5 them a part of this action. As soon as the specific names and capacities of the DOE
6 Defendants are ascertained, this Complaint will be amended to reflect same.
7

JURISDICTION AND VENUE

4.

The Court has personal jurisdiction over the Defendants by virtue of the

9 fact that the Defendants are located and transact business within the Central District
10 of California.
5.

11

The Court has subject matter jurisdiction over this action pursuant to 28

12 U.S.C. 1331 (Federal Question), 15 U.S.C. 1125(a) (the Lanham Act of 1946 as
13 amended) and supplemental jurisdiction over the state law claims pursuant to 28
14 U.S.C. 1367. This Court also has subject matter jurisdiction over the federal
15 questions presented pursuant to 15 U.S.C. 1121(a) and 28 U.S.C. 1131 and
16 1138.
17

6.

Venue is proper in this District pursuant to 28 U.S.C. 1391(b)-(d),

18 and 18 U.S.C. 1965.

19
20

STATEMENT OF FACTS
7.

Plaintiff is informed and believes and thereon alleges that Defendant

21 Vans is a shoe and apparel company that manufactures and sells shoes, apparel and
22 accessories for those who participate in extreme sports, such as BMX dirt bike
23 racing and skateboarding.
24

8.

In the year 1986, a motion picture entitled Rad was produced and

25 released. Rad was the story of a young man named Cru Jones who had the
26 intensity and desire to win a BMX race called Helltrack. Rad involved scenes and
27 images of BMX bike racing and racing stunts. Since 1986, SPI and its predecessor
28 in interest have been the interest holders in the copyrights and trademarks associated
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1 with film Rad, including the use of the trademark which is a stylized version of
2 the word Rad with an underline (hereinafter the Mark), which was used on film
3 posters, advertisements and on screen. Plaintiff has been using the Mark since at
4 least February of 1987.
5

9.

On or about August 14, 2012, Plaintiff learned that Vans had been

6 selling shoes containing the Mark when someone familiar with Plaintiffs ownership
7 of the Mark actually saw a pair of Vans shoes displaying the Mark. Plaintiff
8 subsequently searched the internet for Vans shoes containing the Rad Mark, and
9 on information and belief, learned that Vans had been selling shoes displaying
10 Plaintiffs Mark since at least 2007.
11

10.

Plaintiff reached out to Vans in August 2012 to discuss a potential

12 licensing deal of the Mark for use on Vans apparel but no deal was ever reached.
13 Still, on information and belief, Vans continued and continues to sell shoes and
14 apparel displaying the Mark without a license from Plaintiff.
15

11.

Within the three (3) years last past, Plaintiff has learned that Defendant

16 was using the Rad Mark on shoes, apparel and accessories sold by Vans in its
17 stores and to other retailers. Unless enjoined and restrained, Defendants conduct
18 threatens to further infringe Plaintiffs trademark interests.
19

FIRST CLAIM

20

(Violation of 15 United States Code 1125(a) et seq Common Law

Trademark Infringement Against All Defendants)

21
22

12.

Plaintiff hereby incorporates the allegations contained in paragraphs 1

23 through 11, inclusive, as though set forth in full.

24

13.

The Rad Mark as described above, has been extensively used and

25 promoted through the United States in connection with SPIs licensing activities.
26

14.

SPI's Common Law Mark is inherently distinctive. As a result of SPI's

27 prior use and promotion of SPI's Common Law Mark, the trademark has become
28 well and favorably known throughout the United States. SPI's Common Law
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1 Trademark has developed exceedingly valuable goodwill.

15.

Defendants have knowingly, willfully and intentionally created,

3 advertised, promoted, displayed, offered for sale and/or sold shoes, apparel and
4 accessories bearing identical, nearly identical and/or confusingly similar copies of
5 the Rad Mark.
16.

Defendant's use of the Rad Mark on the infringing products,

7 advertisements and websites has caused confusion in the market and is likely to
8 cause further confusion amongst members of the relevant public and trade, i.e., to
9 believe that Defendants' products are provided by, or in affiliation with, or under the
10 sponsorship or approval of SPI.
17.

11

Defendants, and each of them, willfully selected, adopted and/or used

12 the Rad Mark on the infringing shoes, apparel and accessories with knowledge of
13 SPIs valuable goodwill and business reputation associated therewith, and with
14 intent to confuse, mislead and deceive the public into believing the infringing
15 clothing products and accessories are associated with, manufactured by, sold
16 approved, sponsored or endorsed by SPI.
18.

17

The confusion, mistake or deception referred to above arises out of acts

18 alleged above which constitute common law trademark infringement and false
19 designation of origin as that phrase is used in 15 U.S.C 1125 (a).
19.

20

Unless restrained by this Court, Defendants will continue to infringe

21 SPIs Common Law Trademark by their use on the infringing products,

22 advertisements and websites.
20.

23

By its wrongful acts, Defendants, unless restrained by this Court, will

24 cause serious and irreparable harm to SPI.

25

21.

SPI has no adequate remedy at law.

26

22.

By reason of Defendants wrongful acts, SPI has been injured in an

27 amount to be determined at trial.

28 / / /
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SECOND CLAIM

(California Common Law Unfair Competition Against All Defendants)

23.

Plaintiff hereby incorporates the allegations contained in paragraphs 1

4 through 22, inclusive, as though set forth in full.

24.

The acts and conduct of Defendants as alleged above in this Complaint

6 constitute unfair competition pursuant to the common law of California.

25.

Defendants conduct as alleged above has damaged and will continue

8 to damage SPIs goodwill and reputation and has resulted in losses to SPI and an
9 illicit gain of profit to Defendants in an amount unknown at the present time.
10

PRAYER FOR RELIEF

11

WHEREFORE, Plaintiff requests judgment against Defendants as follows:

12

1.

The Defendants, their officers, agents, servants, employees,

13 representatives, and attorneys, and all person in active concert or participation with
14 them, be permanently enjoined from designing, copying, reproducing, displaying,
15 promoting, advertising, distributing, or selling, or any other form of dealing or
16 transaction in, any and all shoes, clothing, apparel, accessories, advertising and
17 promotional materials, print media, signs, Internet websites, or any other media,
18 either now known or hereafter devised, bearing any design or mark which infringe,
19 contributory infringe, or vicariously infringe upon the Rad Mark.
2.

20

Defendants be held liable to Plaintiff for damages pursuant to 15

21 U.S.C. 1117 in an amount to be proven at trial. For Plaintiff's actual damages

22 along with the Defendants' gains, profits, and advantages attributable to their
23 unlawful conduct of false designation of origin, unfair competition, and common
24 law trademark infringement according to proof to be proved at trial, and that such
25 liability be decreed jointly and severally against all Defendants.
4.

26

For injunctive relief ordering Defendants to cease any and all further

27 acts of infringement under the Lanham Act and/or unfair competition.

28 / / /
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5.

For Plaintiffs attorneys' fees and costs of this action.

6.

For treble damages.

7.

For any such other and further relief as the Court may deem just and

4 appropriate, including pre-and post-judgment interest.

5
6 DATED: January 25, 2016
7

ERVIN COHEN & JESSUP LLP

Randall Leff
Russell M. Selmont

8
9
By: /s/ Randall S. Leff
Randall S. Leff
Attorneys for SCHWARTZMAN
PICTURES, INC., a California corporation

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11
12
13
14

DEMAND FOR JURY TRIAL

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16

Plaintiff hereby demands a jury trial for each and every cause of action set

17 forth in the Complaint.

DATED: January 25, 2016
18

ERVIN COHEN & JESSUP LLP

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20
21

By: /s/ Randall S. Leff

Randall S. Leff
Attorneys for SCHWARTZMAN
PICTURES, INC., a California corporation

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1
CERTIFICATE OF SERVICE

CENTRAL DISTRICT OF CALIFORNIA

Schwartzman Pictures, Inc. v. Vans, Inc., et al.

Case No.: 8:15-cv-01294-JCG

5
6

The undersigned certifies that on January 25, 2016, the following documents
7 and all related attachments (Documents) were filed with the Court using the
CM/ECF system.
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FIRST AMENDED COMPLAINT FOR:
9
1) COMMON LAW TRADEMARK INFRINGEMENT, and
10
2) UNFAIR COMPETITION
11
JURY TRIAL DEMANDED
12
Pursuant to L.R. 5-3.2, all parties to the above case and/or each attorneys of
13 record herein who are registered users are being served with a copy of these
Documents via the Courts CM/ECF system. Any other parties and/or attorneys of
14 record who are not registered users from the following list are being served by first
class mail.
15
By:
/s/ Randall S. Leff
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Randall S. Leff
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