1 BAHRAM NIKNIA (SBN 256181)

NIKNIA LAW FIRM


2 1875 Century Park East, Suite 1240

Los Angeles, CA 90067

3 Telephone: (310) 601-8025

Facsimile: (310) 909-7179
4 bniknia@niknialaw.com

5 Attorneys for Plaintiff
Bruce Brown Films, LLC
6
7 UNITED STATES DISTRICT COURT
8 CENTRAL DISTRICT OF CALIFORNIA
9 BRUCE BROWN FILMS, LLC Case No.
10 Plaintiff, COMPLAINT FOR DAMAGES
AND INJUNCTIVE RELIEF
11 v.
(1) FEDERAL TRADEMARK
12 HUDSON BAY COMPANY, and DOES INFRINGEMENT;
1 through 10, inclusive
13 (2) FEDERAL COPYRIGHT
Defendants.
 INFRINGEMENT;
14
(3) FEDERAL TRADE DRESS
15 INFRINGEMENT;
16 (4) FEDERAL UNFAIR
COMPETITION AND FALSE
17 DESIGNATION OF ORIGIN
(5) FEDERAL TRADE DRESS
18 DILUTION;
19 (6) CALIFORNIA RIGHT OF
PUBLICITY
20
(7) MISAPPROPRIATION OF
21 COMMON LAW RIGHT OF
PUBLICITY
22 (8) COMMON LAW
23 TRADEMARK
INFRINGEMENT;
24 (9) COMMON LAW UNFAIR
COMPETITION
25
26
JURY TRIAL DEMANDED
27
28
 1 INTRODUCTION
2 1. Plaintiff is the legal and/or beneficial owners of all trademarks, trade
3 dress, copyrights, commercial use and merchandising rights, publicity rights and
4 related rights associated with the well-known motion picture “The Endless Summer”
5 and its equally well-known film poster (collectively, the “Endless Summer Brand”).
6 2. This action arises out of Defendant’s willful and intentional acts of
7 trademark, trade dress and copyright infringement.
8 3. Defendant Hudson Bay Company owns and operates the Saks Fifth
9 Avenue high-end retail shops throughout the United States.
10 4. In or about May 2019, the Saks Fifth Avenue store in Beverly Hills,
11 California decorated its store with Plaintiff’s trademarks, trade dress and
12 copyrighted Endless Summer film poster.
13 5. A concurrent online search revealed that Saks Fifth Avenue was also
14 using the words “Endless Summer” in connection with online sales.
15 6. Defendants have created confusion and traded off the good will
16 associated with The Endless Summer by using the Endless Summer Brand in
17 connection with sales and offers to sell clothing and other goods in a manner that is
18 likely to confuse consumers as to Plaintiff’s sponsorship, association with or
19 endorsement of Defendants retail stores and in direct competition with Plaintiff.
20 7. Defendants have copied, without authorization, protected elements of
21 Plaintiff’s copyrighted image of the well-known Endless Summer poster and
22 displayed it publicly.
23 PARTIES
24 8. Plaintiff Bruce Brown Films, LLC (“Plaintiff”) is a California limited
25 liability company with a principle place of business in Los Angeles, California.
26 9. Plaintiff is informed and believes that Hudson Bay Company (“HBC”),
27 is a Canadian corporation with a place of business in New York. Plaintiff is
28
2
Complaint
 1 informed and believes that HBC operates Saks Fifth Avenue retail stores throughout
2 the United States including California.
3 10. Defendants Doe 1 through Doe 10, inclusive, are sued herein under
4 fictitious names. Their true names and capacities are unknown to Plaintiff. When
5 their true names and capacities are ascertained, Plaintiff will amend this Complaint
6 by inserting their true names and capacities herein. Plaintiff is informed and
7 believes, and thereon alleges, that each of the fictitiously named defendants is
8 responsible in some manner for the occurrences herein alleged, and that Plaintiff’s
9 damages as herein alleged were proximately caused by those defendants. Each
10 reference in this Complaint to “Defendant” or “Defendants” refers also to all
11 Defendants, including Hudson Bay Company, Saks Fifth Avenue and all Defendants
12 sued under fictitious names.
13 11. Plaintiff is informed and believes, and on thereon alleges, that at all
14 times herein mentioned each of the Defendants, including all Defendants sued under
15 fictitious names, was the agent, employee, or representative of each of the remaining
16 Defendants, and in doing the things hereinafter alleged, was at times acting within
17 the course and scope of this agency or employment, and at other times, acting in his
18 own individual capacity. In the alternative, each of the individually named
19 Defendants, as alleged herein below, acted in concert and in furtherance of their
20 fraudulent plan and scheme and each actively participated in the wrongful acts
21 alleged herein below.
22 JURISDICTION AND VENUE
23 12. This Court has subject matter jurisdiction over this Complaint pursuant
24 to 28 U.S.C. §§ 1331 and 1338, because the action arises under the Lanham
25 Trademark Act of 1946, 15 U.S.C. § 1051 et seq., and the Copyright Act, 17 U.S. C.
26 § 501 et seq., and pursuant to the supplemental jurisdiction provisions contained in
27 28 U.S.C. § 1367.
28
3
Complaint
 1 13. This Court has personal jurisdiction over Defendants because, on
2 information and belief, Defendants regularly conduct and have conducted business
3 in California and this District by, among other things, selling products throughout
4 the state of California and in this District. Specifically, on information and belief,
5 HBC engaged in the infringing conduct alleged herein at the Beverly Hills,
6 California Saks Fifth Avenue store. Additionally, Defendants’ conduct occurred in
7 this District and has caused, and continues to cause Plaintiff to suffer harm in this
8 District.
9 14. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) in that,
10 inter alia, a substantial portion of the acts giving rise to this case occurred within this
11 district, and pursuant to 28 U.S.C. § 1400, in that Plaintiffs and these Defendants, or
12 their agents, conduct business, reside or may be found within this district.
13 PLAINTIFF’S BUSINESS AND INTELLECTUAL PROPERTY
14 15. Plaintiff’s founder, Bruce Brown, was an internationally recognized
15 pioneer in the field of films and documentaries depicting the sport of surfing and has
16 been dubbed “the [Ingmar] Bergman of the [surf]boards” by Time magazine.
17 16. Mr. Brown’s 1966 motion picture, The Endless Summer, which follows
18 two surfers on their trip around the world in search of the perfect wave is considered
19 to be one of the most influential films to depict surfing and the surfing lifestyle. The
20 title of the film, coined by Mr. Brown, refers to the idea that one could surf
21 throughout the year if they were able to follow the summer season by traveling
22 around the world, thereby making the summer endless.
23 17. The Endless Summer film has been hailed as “the most important and
24 influential statement on surfing” by the Washington Post, “perfectly expressing the
25 surfing spirit,” by the New Yorker magazine, and “The greatest surf film ever
26 made,” by Surfer Magazine.
27 18. In addition, the movie poster form The Endless Summer film, is also
28 considered iconic and world famous. The poster’s composition featuring three
4
Complaint
 1 surfers silhouette against a blazing background of orange, magenta, and yellow half-
2 sun has been called, “the most recognizable piece of Pop Art this side of Warhol,”
3 and was featured in a nine-page Vanity Fair article in 2014 which exclaimed, “The
4 Endless Summer poster is 50 years old, and it hasn’t aged a minute.” In 2015, the
5 Endless Summer film and film poster were inducted into the Smithsonian Institute.
6 19. As a result of the success and popularity of The Endless Summer film
7 and movie poster and the substantial time, money and effort that has been expended
8 to promote them, goods and services based on The Endless Summer film and poster
9 image has been widely sold and distributed in the United States and elsewhere. Such
10 goods and services have been identified and distinguished in various ways,
11 including through the use of the words “Endless Summer,” the slogans “In Search
12 of the Perfect Wave,” and “Search for the Perfect Wave” (collectively the
13 “Slogans”), various images and compositional elements from the film and
14 emblematic of the film poster, and combinations of the words “Endless” and/or
15 “Summer,” plus the Slogans and images and elements from the film and film poster.
16 20. Plaintiff, Bruce Brown Films, LLC, was organized to manage the
17 merchandising and licensing of distinctive trademarks and copyrights associated
18 with the success and renown of the Endless Summer film and poster.
19 21. Plaintiff is the legal and beneficial owner of multiple federal trademark
20 registrations (the “Trademarks”), for the brand name ENDLESS SUMMER, THE
21 ENDLESS SUMMER, and the Endless Summer design mark, true and correct
22 copies of which are attached hereto at Exhibit A, for a wide variety of merchandise
23 and services, as follows:
24
25
26
27
28
5
Complaint
 Mark Reg. Date Reg. or Serial Classes
1 Number

2 The Endless Summer July 28, 1992 1703373 25

3 Endless Summer Sept. 25, 2007 3298604 6; 9; 11; 14; 16; 18;
21; 24; 25; 28; 32
4
Endless Summer Jan. 15, 2008 3369887 25; 28
5
(Design mark) Jan. 15, 2008 3369888 25; 28
6
Endless Summer Dec. 21, 2010 3894999 39; 43
7
Endless Summer Oct. 30, 2012 4232348 35
8
Endless Summer Jan. 15, 2013 4276188 35; 42; 43
9
Endless Summer Sept. 17, 2013 4403128 25
10
(Design mark) March 8, 2016 4913762 33
11
Endless summer Dec. 19, 2017 5358587 33
12
Endless summer March 5, 2019 5690612 6
13
Endless Summer May 21, 2019 5754259 41
14
Endless Summer June 18, 2019 5780572 9
15
22. Plaintiff holds trade dress protection in the distinctive design of the
16
elements of the Endless Summer film poster. The elements of the Endless Summer
17
film poster that comprise Plaintiff’s trade dress include: the combination of a
18
magenta sky and orange foreground bisected by a hyper-saturated yellow half-sun,
19
overlaid with silhouetted figures (the “Trade Dress”).
20
23. The Trade Dress is found on numerous goods and services offered by
21
Plaintiff and its licensees as an indicator of source. The Trade Dress occasionally
22
includes modifications of the silhouetted figures in a manner approved by Plaintiff
23
that maintain the distinctive appearance of the Trade Dress and its source identifying
24
role.
25
24. As a result of Plaintiff’s extensive licensing activities and over fifty
26
years of world-renowned recognition of the Endless Summer film poster, consumers
27
28
6
Complaint
 1 recognize the Trade Dress as an indicator of source for Plaintiff’s, and Plaintiff’s
2 licensees, goods and services.
3 25. Plaintiff is the legal owner of federal copyright registration number
4 VA0000423302 for the Endless Summer film poster (the “Copyright”). A true and
5 correct copy of the Copyright, is attached hereto at Exhibit B.
6 26. The Copyright is for an original and creative design.
7 27. The Endless Summer Brand has been the subject of authorized,
8 licensed use for various goods and services for at least 35 years, and Plaintiff has
9 granted licensing rights to the Trademarks, Trade Dress and Copyright for use on,
10 and in, merchandise, goods and services.
11 28. The Endless Summer Brand continues to be a highly profitable
12 property for purposes of licensing goods and services. Under applicable licensing
13 agreements, many different products featuring Endless Summer Brand are available
14 to the public, including, without limitation, apparel, accessories, stationery, mugs,
15 posters, signs, collectibles, jewelry, alcohol, beer, wine and numerous other
16 products. These products are manufactured under strict quality control and style
17 approval.
18 29. Plaintiff has also licensed the use of the Endless Summer brands in
19 connection with promotional and media uses, including retail services and media
20 promotion rights.
21 30. The products and services licensed by authority of Plaintiff have
22 become, and are, well known to the American public, and products based on Endless
23 Summer have generated wide consumer appeal.
24 31. As a result of the above-described actions, the Endless Summer
25 Trademarks and Trade Dress as well as images from and emblematic of the Endless
26 Summer film and poster possess valuable goodwill and are well known to the public
27 as identifying products and services which are authorized by Plaintiff, and which
28 originate from Plaintiff. For this reason, Plaintiff possesses common law trademark
7
Complaint
 1 rights in the names Endless Summer, the Trade Dress and in images from and
2 emblematic of the Endless Summer film and film poster, in addition to the registered
3 Trademarks.
4 32. Plaintiff’s Trademarks are all valid, extant and in full force and effect.
5 The Trademarks, Trade Dress and Copyright are all exclusively owned by Plaintiff.
6 Plaintiff has continuously used each of the Trademarks and Trade Dress from the
7 registration date, or earlier, until the present time and at all times relevant to the
8 claims alleged in this Complaint.
9 33. As a result of advertising and sales, together with longstanding
10 consumer acceptance, the Trademarks and Trade Dress identify Plaintiff’s products
11 and services, and the authorized sales of these products and services. The
12 Trademarks and Trade Dress have each acquired secondary meaning in the minds of
13 consumers throughout the United States and the world.
14 34. The revenue from goods and services sold in the United States which
15 use the Trademarks, Trade Dress and Copyright is substantial. The appearance and
16 other features of the Trademarks and Trade Dress are inherently distinctive and
17 serve to identify Plaintiff, and its licensees as the source of products bearing the
18 Trademarks.
19 35. Plaintiff’s Intellectual Property is well known to the American public,
20 and is permanently intertwined with the motion picture The Endless Summer, and as
21 such, Endless Summer and the images emblematic of the Endless Summer film
22 poster have become famous and distinctive brands.
23 Defendants’ Infringing Acts
24 36. On information and belief, Defendants are engaged in the business of
25 selling merchandise, including clothing and headwear, through their Saks Fifth
26 Avenue stores (“SAKS”).
27 37. On information and belief, Defendants decorated the walls of the
28 Beverly Hills Saks Fifth Avenue store with a copy of the Copyright, Trademark and
8
Complaint
 1 Trade Dress (“Infringing Image”). A depiction of the Infringing Image is attached
2 hereto at Exhibit B.
3 38. On information and belief, Defendants were selling and offering to sell
4 merchandise, including clothing and headwear in connection with the Infringing
5 Image.
6 39. On information and belief, Defendants were using the words “Endless
7 Summer” concurrently with the Infringing Image in connection with an online
8 marketing campaign (“Infringing Advertising”). A depiction of the Infringing
9 Advertising is attached hereto at Exhibit C.
10 40. Defendant’s unauthorized use of the Copyright, Trade Dress, and
11 Trademarks creates confusion as to Plaintiff’s authorization, association with or
12 endorsement of Defendants’ goods.
13 41. Defendants knowingly intended to impermissibly trade on the fame and
14 goodwill associated with Plaintiff’s intellectual property in its unauthorized use of
15 Plaintiff’s Intellectual Property.
16 COUNT ONE
17 Trademark Infringement, 15 U.S.C. §1114 et seq.
18 Against All Defendants and Does 1-20 (Collectively “Defendants”)
19 42. Plaintiff realleges and incorporates by reference, the full text of all of
20 the foregoing paragraphs and exhibits as though fully set forth herein.
21 43. Plaintiff holds valid and subsisting trademark registrations for the
22 Trademarks and has used them extensively and continuously in interstate commerce
23 throughout the United States.
24 44. The Endless Summer marks are arbitrary and fanciful and have attained
25 secondary meaning. Registration numbers 1703373, 3298604, 3369887, and
26 3369888 have all been deemed incontestable, pursuant to the filing of affidavits
27 under 15 USC §§ 1058 and 1065.
28
9
Complaint
 1 45. Plaintiff’s trademark Registration numbers 3369888 and 4913762 are
2 for a designs based on the image in the Copyright.
3 46. As a direct and proximate result of Defendants’ use of the Trademarks
4 and Trade Dress and other indicia identifying Plaintiff on and/ or in connection with
5 the Infringing Image and Infringing Advertising, the public has been and/or is likely
6 to be confused, deceived and/ or to falsely believe that there is an association
7 between Plaintiff on the one hand, and Defendants’ Saks Fifth Avenue stores, on the
8 other.
9 47. Defendants' distribution, sale and offer of sale of goods in connection
10 with Plaintiffs' Trademarks and Trade Dress in California and interstate commerce
11 has, and will, cause the likelihood of confusion, deception, and mistake in that the
12 public will conclude that the goods sold, offered or distributed by the Defendants are
13 authorized, sponsored, approved, or associated with the Plaintiffs.
14 48. As a direct and proximate result of Defendants’ actions as above-
15 described, the public is likely to be confused as to the origin or source of Plaintiff’s
16 goods and services, i.e., the public is likely to believe that Defendants’ Saks Fifth
17 Avenue store, merchandise or goods are associated with Plaintiff’s and/or its
18 licensees' goods and services bearing the Endless Summer Marks, when in truth and
19 in fact they are not.
20 49. Plaintiff is informed and believes that Defendants currently
21 manufactures, distributes, offers to sell and/or sells its merchandise throughout the
22 United States in interstate commerce.
23 50. Because of Defendants’ use of the Trademarks and Trade Dress in
24 connection with its Saks Fifth Avenue stores and merchandise, Defendants’ sales
25 have had and will have an adverse effect upon Plaintiff’s and its licensees' business
26 in this District, the State of California and throughout the United States.
27 51. In addition, the continued distribution of Defendants’ merchandise
28 under and/or in connection with the Trademarks and Trade Dress will cause the
10
Complaint
 1 Trademarks and Trade Dress to lose their distinctive qualities and will erode
2 Plaintiff’s selling power.
3 52. Because Plaintiff cannot control the nature and quality of Defendants’ s
4 Saks Fifth Avenue stores or merchandise, Defendants’ infringing activities have had
5 and will have an adverse effect on Plaintiff’s business and reputation in this District,
6 the State of California and throughout the United States. Said acts of infringement
7 will cause irreparable injury to the Plaintiff if the Defendants are not restrained by
8 the Court from further violation of the Plaintiffs' rights as the Plaintiffs have no
9 adequate remedy at law.
10 53. As a direct and proximate result of Defendants’ intentional actions,
11 Plaintiff has suffered and will continue to suffer damages in an amount presently
12 unknown and to be determined at time of trial.
13 54. As Defendant’s actions have been willfully committed with intent to
14 damage Plaintiff and to confuse and deceive the public, Plaintiff is entitled to
15 Defendant’s profits, treble Plaintiff’s actual damages, an award of costs, and this
16 being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C. §
17 1117(a).
18 COUNT TWO
19 Federal Copyright Infringement
20 55. Plaintiff realleges and incorporates by reference, the full text of all of
21 the foregoing paragraphs and exhibits as though fully set forth herein.
22 56. Plaintiff is the owner of valid copyright registrations issued by the
23 United States Copyright Office with respect to the Copyright, as alleged herein.
24 57. Defendants had access to the Copyright because, among other things,
25 the Copyright is famous throughout the world and has appeared on posters, video
26 and DVD covers, magazines and a multitude of merchandise for over fifty years.
27 58. The Infringing Image contains designs that are substantially similar, if
28 not identical, to protected elements of the Copyright.
11
Complaint
 1 59. Defendants have infringed on the Copyright by reproducing and
2 publicly displaying the Infringing Image at the Beverly Hills Saks Fifth Avenue
3 store, and perhaps others, without authority or permission from Plaintiff.
4 60. Defendants copyright infringement has been willful, intentional, and
5 purposeful, and in reckless disregard of Plaintiff’s rights.
6 61. As a direct and proximate result of its unlawful conduct, Defendants
7 are liable to Plaintiff for copyright infringement. Plaintiff has suffered, and will
8 continue to suffer, substantial losses including, without limitation, lost profits and
9 damage to its business reputation and goodwill. Plaintiff is entitled to recover its
10 losses, plus all profits Defendants have made as a result of their wrongful conduct,
11 pursuant to 17 U.S.C. § 504(b).
12 62. As an alternative to actual damages plus Defendants’ profits, Plaintiff is
13 entitled to the maximum statutory damages, pursuant to 17 U.S.C. § 504(c), in the
14 amount of $150,000 for each infringement, or other such amounts as may be proper
15 pursuant to 17 U.S.C. § 504(c).
16 63. Plaintiff is entitled to its attorneys’ fees and costs pursuant to 17 U.S.C.
17 § 505.
18 64. Defendants’ conduct is causing and, unless enjoined and restrained by
19 this Court, will continue to cause Plaintiff great and irreparable injury that cannot
20 fully be compensated or measured in money. Plaintiff has no adequate remedy at
21 law. Pursuant to 17 U.S.C. § 502, Plaintiff is entitled to preliminary and permanent
22 injunctions prohibiting further infringements of Plaintiff’s copyright
23 COUNT THREE
24 Federal Trade Dress Infringement
25 58. Plaintiff realleges and incorporates by reference, the full text of all of
26 the foregoing paragraphs and exhibits as though fully set forth herein.
27 59. Plaintiff is the owner of all right and title to the distinctive Endless
28 Summer Trade Dress as alleged herein. The Trade Dress is not merely functional.
12
Complaint
 1 60. Defendants’ Infringing Image use infringes Plaintiff’s Trade Dress.
2 61. The designs and decorations used by Defendants in the Beverly Hills
3 Saks Fifth Avenue store in 2019 contains design features that copy elements of
4 Plaintiff’s Trade Dress in a manner that is likely to cause confusion, cause mistake
5 or deceive consumers and visitors to that store, as to the affiliation, connection, or
6 association of Defendants with Plaintiff, or as to the origin, sponsorship or approval
7 by Plaintiff of Defendant’s Saks Fifth Avenue store.
8 62. Defendant’s sale or offer of sale of goods displayed in a Saks Fifth
9 Avenue store adorned with Plaintiff’s Trade Dress enables Defendants to benefit
10 unfairly from Plaintiff’s reputation and notoriety, thereby giving Defendant’s goods
11 and merchandise a commercial benefit that they would not otherwise enjoy.
12 63. Defendants were aware of Plaintiff’s Trademarks, Trade Dress and the
13 Copyright as a result of the popularity of Plaintiff’s Endless Summer films and
14 licensed merchandise, including clothing and related items, sold throughout the
15 United States. Accordingly, Defendants use of Plaintiff’s Trade Dress was
16 intentional, willful and without regard to Plaintiff’s rights in its Trade Dress.
17 64. Plaintiff has sustained damages as a direct and proximate result of
18 Defendant’s infringement of Plaintiff’s Trade Dress in an amount to be determined
19 at trial.
20 65. Plaintiff will suffer and is suffering irreparable harm from Defendants’
21 infringement of Plaintiff’s Trade Dress insofar as Plaintiff’s invaluable goodwill is
22 being eroded by Defendant’s continuing infringement. Plaintiff has no adequate
23 remedy at law to compensate it for the loss of business reputation, customers,
24 market position, and goodwill and confusion of potential customers flowing from
25 Defendants infringing activities.
26 66. Pursuant to 15 U.S.C. § 1116, Plaintiff is entitled to an injunction
27 against Defendant’s continuing infringement of Plaintiff’s Trade Dress. Unless
28 enjoined, Defendant’s will continue its infringing conduct.
13
Complaint
 1 67. As Defendant’s actions have been willfully committed with intent to
2 damage Plaintiff and to confuse and deceive the public, Plaintiff is entitled to
3 Defendant’s profits, treble Plaintiff’s actual damages, an award of costs, and this
4 being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C. §
5 1117(a).
6 COUNT FOUR
7 Federal Unfair Competition and False Designation of Origin
8 68. Plaintiff realleges and incorporates by reference, the full text of all of
9 the foregoing paragraphs and exhibits as though fully set forth herein.
10 69. Plaintiff's claim arises under Section 43(a) of the Lanham Act, 15
11 U.S.C. § 1125(a), for false designation of origin and false descriptions and
12 representations in interstate commerce.
13 70. As stated above, Plaintiff is the owner of all rights in and to the Endless
14 Summer Trademarks and Trade Dress which are inherently distinctive and are not
15 merely functional.
16 71. Plaintiff has used its Trademarks and Trade Dress on and in connection
17 with a wide variety of goods and services, including but not limited to consumer
18 goods, films, promotions, media, retail businesses, entertainment, advertising and
19 events, in interstate commerce throughout the United States and indeed, worldwide.
20 72. Through Plaintiff’s extensive advertising and promotional activities and
21 merchandising and licensing activities, the Trademarks and Trade Dress have
22 acquired secondary meaning and are famous marks. Plaintiff has established
23 extensive goodwill in the Trademarks and Trade Dress, and they are uniquely
24 associated with Plaintiff in the minds of the general public.
25 73. Defendants have used the Endless Summer Trademarks and Trade
26 Dress on and/or in connection with the sale and offering to sell merchandise and
27 clothing items throughout the United States.
28
14
Complaint
 1 74. As the Infringing Advertising was conducted over the Internet,
2 Defendants sale of, and offering to sell, merchandise is targeted to the same
3 consumers as Plaintiff and its licensees target their Endless Summer related
4 merchandise in interstate commerce throughout the United States.
5 75. Defendant’s sales, and offers to sell, merchandise in Saks Fifth Avenue
6 stores adorned with Plaintiff’s Trademark and Trade Dress is likely to cause
7 confusion, cause mistake, or deceive consumers as to the affiliation, connection, or
8 association of Defendants with Plaintiff, or as to the origin, sponsorship, or approval
9 by Plaintiff of Defendant’s commercial activities.
10 76. Defendant’s sales, and offers to sell, merchandise in Saks Fifth Avenue
11 stores adorned with Plaintiff’s Trademark and Trade Dress enables Defendants to
12 benefit unfairly from Plaintiff’s reputation and success, thereby giving Defendants
13 merchandise commercial value they would not otherwise enjoy.
14 77. Prior to Defendant’s infringing use of Plaintiff’s Trademarks and Trade
15 Dress in connection with the Infringing Image and Infringing Advertising,
16 Defendants were aware of Plaintiff’s business, Trademarks, Trade Dress and the
17 Copyright as a result of the popularity of Plaintiff’s Endless Summer films and
18 licensed merchandise, including clothing and related items, sold throughout the
19 United States. Accordingly, Defendants use of Plaintiff’s Trademarks and Trade
20 Dress was intentional, willful and without regard to Plaintiff’s rights in its
21 Trademarks and Trade Dress.
22 78. Defendants’ sales, and offers to sell, merchandise online through the
23 Infringing Advertising and in its Saks Fifth Avenue stores with the Infringing Image,
24 is intentionally designed to deceive and has deceived viewers and prospective
25 advertising customers into believing that the Infringing Image and Infringing
26 Advertising were authorized, licensed or otherwise approved by Plaintiff.
27 79. As a direct and proximate result of Defendants’ actions, the public is
28 likely to be confused and has been confused as to believe that Defendants’ Saks
15
Complaint
 1 Fifth Avenue store, merchandise or goods are associated with Plaintiff’s and/or its
2 licensees' goods and services bearing the Endless Summer Marks, when in truth and
3 in fact they are not
4 80. As a direct and proximate result of Defendants’ actions, Plaintiff is
5 entitled to injunctive relief enjoining and restraining Defendants’ from use of the
6 Trademarks and Trade Dress throughout the United States.
7 81. Because Plaintiff cannot control the nature and quality of Defendants’
8 goods, Defendants’ infringing activities have had and will have an adverse effect on
9 Plaintiff’s business and reputation in this District, the State of California and
10 throughout the United States, and Plaintiff has no adequate remedy at law.
11 82. The Defendants have obtained gains, profits and advantages as a result
12 of their unlawful acts.
13 83. As a direct and proximate result of Defendants’ acts, Plaintiff has been
14 injured and will continue to suffer monetary damages in this District, the State of
15 California and throughout the United States in an amount presently unknown and to
16 be determined at trial.
17 84. As Defendant’s actions have been willfully committed with intent to
18 damage Plaintiff and to confuse and deceive the public, Plaintiff is entitled to
19 Defendant’s profits, treble Plaintiff’s actual damages, an award of costs, and this
20 being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C. §
21 1117(a).
22 COUNT FIVE
23 Federal Trademark and Trade Dress Dilution
24 85. Plaintiff realleges and incorporates by reference, the full text of all of
25 the foregoing paragraphs and exhibits as though fully set forth herein.
26 86. Plaintiff's claim arises under Section 43(c) of the Lanham Act, 15
27 U.S.C. § 1125(c).
28
16
Complaint
 1 87. As stated above, Plaintiff is the owner of all rights in and to the Endless
2 Summer Trademarks and Trade Dress which are inherently distinctive and are not
3 merely functional.
4 88. Plaintiff has used its Trademarks and Trade Dress on and in connection
5 with a wide variety of goods and services, including but not limited to consumer
6 goods, films, promotions, media, entertainment, retail business, advertising and
7 events, in interstate commerce throughout the United States and indeed, worldwide.
8 89. Through Plaintiff’s extensive advertising and promotional activities and
9 merchandising and licensing activities, the Trademarks and Trade Dress have
10 acquired secondary meaning and are famous marks. Plaintiff has established
11 extensive goodwill in the Trademarks and Trade Dress, and they are uniquely
12 associated with Plaintiff in the minds of the general public.
13 90. Defendants’ above-described infringing uses of the Endless Summer
14 Trademarks and Trade Dress began after Plaintiff’s Endless Summer Trademarks
15 and Trade Dress had become famous.
16 91. Defendants’ above-described infringing uses cause actual dilution of
17 Plaintiff’s famous Endless Summer Trademarks and Trade Dress in that they are
18 likely to lessen the capacity of the aforesaid trademarks and trade dress to identify
19 and distinguish Plaintiff’s or its licensees' goods and services as defined in 15
20 U.S.C. § 1127.
21 92. As a direct and proximate result thereof, Plaintiff is entitled to
22 injunctive relief enjoining and restraining Defendants from use of the Trademarks,
23 and other Endless Summer Marks throughout the United States.
24 93. As Defendant’s actions have been willfully committed with intent to
25 damage Plaintiff and to confuse and deceive the public, Plaintiff is entitled to
26 Defendant’s profits, treble Plaintiff’s actual damages, an award of costs, and this
27 being an exceptional case, reasonable attorneys’ fees pursuant to 15 U.S.C. §
28 1117(a).
17
Complaint
 1 COUNT SIX
2 California Right Of Publicity Civ. Code § 3344
3 94. Plaintiff realleges and incorporates by reference, the full text of all of
4 the foregoing paragraphs and exhibits as though fully set forth herein.
5 95. Plaintiff is the owner of valid copyright registrations issued by the
6 United States Copyright Office for the copyrights to the Copyright, as alleged
7 herein.
8 96. The Copyright contains the likeness of Bruce Brown in the form of the
9 foremost silhouetted surfer in the illustration (the “Surfer Image”). It is well known
10 that the surfer image contains the likeness of Bruce Brown due to numerous articles
11 that have been written about the Copyright as well as the licensing activities of
12 Plaintiff.
13 97. Defendants knowingly, and without Plaintiff’s prior consent or
14 permission, used the Surfer Image to promote and solicit sales of Defendants
15 products. There is a direct connection between Defendant’s unauthorized use of the
16 Surfer Image and Defendant’s commercial purpose in promoting sales of clothing
17 and merchandise.
18 98. Plaintiff has been damaged and will continue to be damaged by
19 Defendants’ unauthorized use of the Surfer Image, in an amount according to proof
20 at trial, which includes the economic value of the use of the Surfer Image and
21 Plaintiff’s lost licensing revenues in connection with the use of the Surfer Image.
22 99. Further, pursuant to Civil Code § 3344, Plaintiff is entitled to recover
23 from Defendants the profits Defendants have made from the unauthorized use of her
24 photograph, in an amount according to proof at trial.
25 100. Plaintiff is entitled to an award of punitive and exemplary damages in
26 amount according to proof at trial, pursuant to Civil Code § 3344.
27 101. Plaintiff is also entitled to recover its attorneys’ fees and costs, pursuant
28 to Civil Code § 3344
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Complaint
 1 COUNT SEVEN
2 Misappropriation of Common Law Right of Publicity
3 102. Plaintiff realleges and incorporates by reference, the full text of all of
4 the foregoing paragraphs and exhibits as though fully set forth herein.
5 103. Defendants’ commercial and unauthorized use of the Surfer Image in
6 their store advertisement, without Plaintiff’s prior consent or permission, constitutes
7 a violation of Plaintiff’s common law rights of publicity.
8 104. Plaintiff has been damaged and will continue to be damaged by
9 Defendants’ unauthorized use of the Surfer Image, in an amount according to proof
10 at trial, which includes the economic value of the use of the Surfer Image and
11 Plaintiff’s lost licensing revenues in connection with the use of the Surfer Image
12 105. Plaintiff seeks a preliminary and permanent injunction in order to stop
13 any further violations of her right of publicity.
14 106. In engaging in the foregoing wrongful conduct, Defendants have acted
15 with oppression, fraud, or malice, within the meaning of Civil Code § 3294 and,
16 therefore, Plaintiff is entitled to an award of punitive and exemplary damages
17 according to proof at trial
18 COUNT EIGHT
19 Common Law Trademark Infringement
20 107. Plaintiff realleges and incorporates by reference, the full text of all of
21 the foregoing paragraphs and exhibits as though fully set forth herein.
22 108. Plaintiff's claim arises under the common law of California for
23 trademark and trade dress infringement.
24 109. The use by Defendants of the Trademarks and Trade Dress in
25 connection with the Infringing Image and Infringing Advertising is in violation of
26 Plaintiff’s common law rights to the exclusive use of its Endless Summer
27 Trademarks and Trade Dress throughout California and the United States.
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Complaint
 1 110. As a direct and proximate result of Defendants’ infringing conduct,
2 Plaintiff is entitled to injunctive relief enjoining and restraining Defendants’ from
3 use of the Trademarks and Trade Dress throughout the United States.
4 111. As a direct and proximate result of Defendants’ infringing conduct,
5 Plaintiff has suffered and will continue to suffer lost licensing profits and damage to
6 its business reputation and goodwill in this District, the State of California and
7 throughout the United States, providing no adequate remedy at law.
8 112. As a direct and proximate result of Defendants’ infringing conduct,
9 Plaintiff has been injured and will continue to suffer damages in this District, the
10 State of California and throughout the United States in an amount presently
11 unknown and to be determined at trial.
12 COUNT NINE
13 Common Law Unfair Competition
14 113. Plaintiff realleges and incorporates by reference, the full text of all of
15 the foregoing paragraphs and exhibits as though fully set forth herein.
16 114. Plaintiff's claim arises under California Business & Professions Code
17 § 17200 for unfair competition.
18 115. Plaintiff is informed and believes that with full knowledge of the
19 existence and fame of the Trademarks and Trade Dress, Defendants have attempted
20 to trade upon the goodwill and fame of the Trademarks and Trade Dress, and have
21 misled and will mislead the public into assuming a connection or association
22 between Defendants and Plaintiff.
23 116. Defendants’ use of the Trademarks and Trade Dress has caused and/or
24 is likely to cause damage to Plaintiff in this District, the State of California and
25 throughout the United States by tarnishing the valuable reputation and goodwill
26 Plaintiff has established in the Trademarks and Trade Dress and diluting the
27 distinctiveness of the Trademarks and Trade Dress.
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Complaint
 1 117. The aforesaid acts by Defendants in falsely suggesting a connection
2 with Plaintiff, in tarnishing the reputation of Plaintiff and its products, and in
3 diluting the distinctive nature of Plaintiff’s Endless Summer Trademarks and Trade
4 Dress constitute acts of unfair competition in violation of Cal. Bus. & Prof. Code §
5 17200 and the common law.
6 118. As a direct and proximate result of Defendants’ infringing conduct,
7 Plaintiff is entitled to injunctive relief enjoining and restraining Defendants from use
8 of the Trademarks and Trade Dress throughout the United States.
9 119. As a direct and proximate result of the willful and wanton acts of
10 Defendants, Plaintiff has been and will continue to be irreparably injured in this
11 District, the State of California and throughout the United States with no adequate
12 remedy at law.
13
14 WHEREFORE, Plaintiff respectfully prays for Judgment to be entered
15 against Defendants as follows:
16 1. That the Court enter a judgment against each Defendant that each
17 Defendant has willfully infringed Plaintiff’s rights in the common law and federally
18 registered Trademarks, Trade Dress and Copyright referenced herein.
19 2. That the Court issue temporary, preliminary and permanent injunctive
20 relief against each Defendant, their officers, agents, representatives, servants,
21 employees, attorneys, successors and assigns, and all others in active concert and/or
22 participating with Defendants, so that all such persons be enjoined and restrained
23 from using Plaintiff’s Copyright, Trademarks, Trade Dress, and any colorable
24 imitations of Plaintiff’s Trademarks and Trade Dress, on and in connection with the
25 distribution, and or sale of any goods or services.
26 3. Directing that the Defendants deliver for destruction all Infringing
27 Merchandise including goods, labels, signs, prints, packages, dyes, wrappers,
28 receptacles, and advertisements in their possession or under their control bearing
21
Complaint
 1 any of Plaintiff’s Trademarks, Trade Dress, Copyright or any simulation,
2 reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds,
3 heat transfers, screens, matrices, and other means of making the same.
4 4. For an award of actual damages Plaintiff sustained as a result of
5 Defendants’ acts of infringement, unfair competition and dilution of the Trademarks
6 and Trade Dress, pursuant to 15 U.S.C. § 1117(a) and the common law, and a
7 trebling of such damages.
8 5. For an order requiring Defendants to account for and pay over to
9 Plaintiff all gain, profits and advantages derived by Defendant from its acts of
10 infringement, unfair competition and dilution of the Trademarks and Trade Dress,
11 pursuant to 15 U.S.C. § 1117(a) and the common law.
12 6. That the Court order each Defendant to pay Plaintiff’s damages and
13 each Defendant’s profits pursuant to 17 U.S.C. § 504(b), or, alternatively, enhanced
14 statutory damages pursuant to 17 U.S.C. § 504(c) and 17 U.S.C. § 504(c)(2), for
15 each Defendant’s willful infringement of Plaintiff’s copyrights.
16 7. For an award of damages Plaintiff sustained as a result of Defendant’s
17 wrongful misappropriation of the likeness of Bruce Brown under California Civil
18 Code Section § 3344 and common law rights of publicity.
19 8. That the Court order each Defendant to pay Plaintiff both the costs of
20 this suit and the reasonable attorneys fees incurred by Plaintiff in investigating and
21 prosecuting this action.
22 9. That the Court award Plaintiff on his state law claims compensatory
23 damages in an amount to be determined at trial.
24 10. That the Court award Plaintiff punitive damages in such amounts as
25 may be determined at trial.
26 11. That the Court award Plaintiff prejudgment interest according to law.
27 12. That the Court grants to Plaintiff such other and additional relief as is
28 just and proper.
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Complaint
 1 DEMAND FOR JURY TRIAL
2 Plaintiff demands a trial by jury on all issues so triable.
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DATED: January 7, 2019 NIKNIA LAW FIRM
5 BAHRAM NIKNIA



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By: _/s/ Bahram Niknia
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BAHRAM NIKNIA

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Attorneys for Plaintiff
9 Bruce Brown Films, LLC
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Complaint