Case 4:08-cv-00219-SEB-WGH Document 1 Filed 12/30/2008 Page 1 of 13

FI L E8
lJ.~, t:tii':; TRIe T COUR T
H ~: 'd /\ L 1-3 ," l"~ 'f L I ViS I() N
IN THE UNITED STATES DISTRICT CO~t . 3'f't.IEII-
FOR THE SOUTHERN DISTRICT OF INDIA~iC 30 PM 2· 3 :8Tl'
NEW ALBANY DIVISION ,t~('jTHERN DISTHlc:r
GF !i~WIAIiA
l A LJ H1'. A, 8,;1l GGS
HARRAH'S LICENSE COMPANY, LLC, ) Clr~\(
)
Plaintiff, )
)
)
v. ) Civil Action No. - - - - -
)
JOHN MATTINGLYd/b/a II HORSESHOES
GENTLEMAN'S CLUB
)
)
4 : 08 -cv- 219 SEB·WGH
)
Defendant. )

COMPLAINT

Plaintiff Harrah's License Company, LLC ("Harrah's") files this Complaint against

Defendant John Mattingly d/b/a II Horseshoes Gentleman's Club ("Defendant") and in support

thereof alleges as follows:

NATURE AND BASIS OF ACTION

1. This is a civil action for trademark infringement, trademark dilution, false

designations of origin, and unfair competition arising under the Lanham Act and the common

law and statutory law of the State of Indiana. Plaintiff seeks injunctive relief, damages, and

recovery of its reasonable costs and attorneys' fees.

THE PARTIES

2. Plaintiff Harrah's is a limited liability company organized and existing under the

laws of the State of Nevada with its principal place of business at One Caesars Palace Drive, Las

Vegas, Nevada 89109.

3. Defendant John Mattingly is an individual who, upon information and belief,

owns and operates a strip club that does business under the name "II Horseshoes Gentleman's

SCANNED
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Club," located at 1720 Old River Road, New Albany, Indiana 47150. Upon information and

belief, Mr. Mattingly may be served at 1702 Old River Road, New Albany, Indiana 47150.

JURISDICTION AND VENUE

4. This Court has original jurisdiction over the subject matter of this action pursuant

to 15 U.S.C. § 1121 (Lanham Act) and 28 U.S.c. §§ 1331 (federal question) and 1338

(trademark and unfair competition) because this case arises under the Trademark Act of 1946, 15

U.S.C. §§ 1051, et seq.

5. This Court has supplemental jurisdiction over Plaintiffs state statutory and

common law claims pursuant to 28 U.S.C. § 1367.

6. This Court has personal jurisdiction over Defendant because, upon information and

belief, Defendant is a citizen of Indiana and because this action arises from the transaction of

business within this judicial district.

7. Venue is proper in this District pursuant to 28 U.S.C. § 1391 because a substantial

part of the events or omissions giving rise to the claims occurred in this district, and because the

Defendant is subject to personal jurisdiction within this judicial district.

FACTUAL BACKGROUND

Harrah's and its Famous HORSESHOE Mark

8. Harrah's is a wholly-owned subsidiary of Harrah's Operating Company, Inc.

("HOC"). Directly or through licensed subsidiaries, HOC owns or manages 38 casinos in three

countries, making it the largest provider of branded casino entertainment in the world. (HOC and

Plaintiff are hereinafter referred to collectively as "Harrah's").

9. For more than fifty years, Harrah's and its predecessors-in-interest have

continuously used the distinctive trademark HORSESHOE in interstate commerce to identify

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casino entertainment services, hotel, restaurant and bar services, and a host of related goods and

services.

10. Founded in Las Vegas in 1955, the HORSESHOE casino achieved worldwide fame

as the host of the world famous World Series of Poker tournament.

11. Though licensed affiliates, Harrah's currently operates five casinos under the

HORSESHOE mark, including two in Indiana: Elizabeth, Indiana and Hammond, Indiana.

12. The United States Patent and Trademark Office (the "USPTO") has issued Harrah's

the following trademark registrations for the HORSESHOE mark:

Mark Reg. No. Reg. Date Goods/Services

HORSESHOE 1,839,688 6/14/1994 Casino services (in Class 41)

HORSESHOE 1,839,764 6/14/1994 Hotel, restaurant and bar services (in Class 42)

HORSESHOE 2,370,824 7/25/2000 Information services in the fields of gambling,

casinos and entertainment (in Class 41)

13. The foregoing registrations are valid and subsisting in law, were dilly and legally

issued, are prima facie evidence of the validity of the marks registered, and constitute constructive

notice of the ownership of these marks by Harrah's in accordance with Sections 7(b) and 22 of the

Trademark Act of 1946, 15 U.S.c. §§ 1115(a), 1057(b) and 1072.

14. The registrations set forth in Paragraph 12 above are incontestable pursuant to

Section 15 of the Trademark Act of 1946, 15 U.S.c. § 1065, and, pursuant to Section 33(b) of the

Act, 15 U.S.c. § 1115(b), constitute conclusive evidence of Harrah's exclusive right to use the

HORSESHOE mark identified in the registrations in commerce in the United States.

15. In addition to the foregoing marks, Harrah's has since well prior to the acts

complained of herein used its HORSESHOE mark in design forms that include distinctive

stylized lettering and a gold horseshoe (the "HORSESHOE Logo"), including the following:

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,,;\
(~
HOaSESHDE
16. Harrah's owns valid and enforceable trademark rights in the HORSESHOE Logo in

connection with casino entertainment services, hotel, restaurant and bar services, and related goods

and services. (The HORSESHOE marks, the HORSESHOE Logo, and the registrations therefor

are hereinafter referred to collectively as the "HORSESHOE Mark").

17. Harrah's has invested substantial sums over the years promoting and marketing its

goods and services under the HORSESHOE Mark. Consequently, the HORSESHOE Mark is

famous throughout the United States, and goods and services sold under the HORSESHOE Mark

are recognized by the consuming public as being associated with Harrah's alone.

18. Through widespread and favorable public acceptance and recognition, the

HORSESHOE Mark has become an asset of substantial value to Harrah's.

Defendant and His Wrongful Conduct

19. Upon information and belieC Defendant has for years owned and operated a night

club named the "Rustic Frog" at 1720 Old River Road, New Albany, Indiana 47150.

20. Upon information and belief, in or about November 2008, Defendant changed the

business to a strip club and began operating the club under the new name and mark II

HORSESHOES GENTLEMAN'S CLUB, which Defendant shortens to II HORSESHOES.

21. Defendant has adopted the following design version of his mark that mimics the

distinctive lettering of the HORSESHOE Logo and, like the HORSESHOE Logo, includes a gold

horseshoe:

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22. IklCndant's II Horseshoe's venue is only eight (8) miles away from Ilarrah's

Ilorseshoe Casino in Uizabeth, Indiana and on the primary highway that leads li'om New Albany

to the casi no.

Upon information and belieL DeICndant adopted and began using thc II

IIORSI~SIIOI~S mark despite actual knowledge of Ilarrah's prior rights in the IIORSESIIO[·: Mark

and IIORSIIOE Logo and despite actual knowledge of Ilarrah's Horseshoe casino in 1~lizabeth.

24. DelCndanrs use of the II IIORSESlJOI:S mark is substantially likely to mislead

consumers into believing that Defendant and/or his goods and services originate from, are

artiliated or associated with, or are sponsored or endorsed by, Ilarrah's, and such confusion has

already occurred.

25. Harrah's has demanded that DelCndant cease use of his inlringing mark, but

DeICndant has refused to do so. IIarrah's is therd()re left with no option but to lile this lawsuit to

protect its valuable trademark rights.

COUNT I

Federal Trademark and Service Mark Infringement

26. Ilarrah' s incorporates by reference the allegations contained it1 paragraphs 1 - 25 or

this Complaint as if fully set forth hercin.

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27. The HORSESHOE Mark serves to identifY to the public goods and services that are

offered by Harrah's alone, and the goods and services offered in connection with the

HORSESHOE Mark are regarded by the public as being offered by, sponsored by, approved by,

authorized by, associated with, or affiliated with Harrah's alone.

28. Defendant has used a colorable imitation of Harrah's federally registered

HORSESHOE Mark in interstate commerce without Harrah's authorization or consent in

connection with the sale and offering for sale of goods and services in a manner that is likely to

cause confusion, mistake, or deception as to whether the goods and services originate from

Harrah's, or are sponsored or endorsed by, or associated or affiliated with, Harrah's.

29. Defendant's conduct will enable Defendant to earn profits to which Defendant is

not in law, equity or good conscience entitled, and has unjustly enriched Defendant, all to

Defendant's profit.

30. Defendant's conduct constitutes intentional trademark and service mark

infringement in violation of Section 32(1) of the Trademark Act of 1946, 15 U.S.C. § 1114(1).

31. As a direct and proximate result of Defendant's conduct in violation of 15 U.S.C. §

1114(1), Harrah's has suffered actual and irreparable injury for which no adequate remedy exists at

law.

32. Defendant's wrongful conduct will continue to cause such injury unless enjoined by

this Court.

COUNT II

Federal False Designations of Origin & Unfair Competition

33. Harrah's incorporates by reference the allegations contained in paragraphs 1 - 32 of

this Complaint, as if fully set forth herein.

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34. Defendant has intentionally used colorable imitations of the HORSESHOE Mark

without authorization or consent from Harrah's in interstate commerce in connection with the sale,

offering for sale, distribution, and advertising of goods and services in a manner that is likely to

cause confusion, mistake, or deception as to the true source or sponsorship of Defendant's goods

and services.

35. Defendant's conduct has enabled Defendant to earn profits to which Defendant is

not in law, equity or good conscience entitled, and has unjustly enriched Defendant, all to

Defendant's profit and to Harrah's damage and detriment.

36. Defendant's conduct constitutes false designations of origin and unfair competition

in violation of Section 43(a)(I)(A) of the Federal Lanham Act, 15 U.S.C. §§ 1125(a)(1)(A).

37. As a direct and proximate result of Defendant's conduct in violation of Section

43(a)(I)(A), Harrah's has suffered actual and irreparable injury for which no adequate remedy

exists at law, and Defendant's conduct will continue to cause such injury unless enjoined by this

Court.

COUNT III

Federal Trademark Dilution

38. Harrah's incorporates by reference the allegations contained in paragraphs 1-37 of

this Complaint, as if fully set forth herein.

39. By virtue of years of widespread and prominent use in connection with casino

entertainment and related goods and services, Harrah's HORSESHOE Mark has become famous

and an asset of substantial value to Harrah's.

40. Defendant's use of his II HORSESHOES marks in connection with the advertising,

promotion and offering of his services in interstate commerce in the United States is likely to

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dilute and tarnish the distinctive quality of the HORSESHOE Mark in violation of the federal

Trademark Dilution Revision Act, 15 U.S.C. § 1125(c).

41. Defendant's conduct in violation of the Act has caused Harrah's to suffer actual and

irreparable injury for which no adequate remedy exists at law, and will continue to cause such

injury unless enjoined by this Court.

COUNT IV

Indiana Common Law Trademark Infringement

42. Harrah's incorporates by reference the allegations contained in paragraphs 1 - 41 of

this Complaint, as if fully set forth herein.

43. Harrah's, by virtue of its prior adoption and use ofthe HORSESHOE Mark in

interstate commerce, has acquired, established and owns valuable common law rights in the

HORSESHOE Mark which serve to identify goods and services offered by Harrah's alone.

44. Defendant has used a colorable imitation of Harrah's HORSESHOE Mark without

authorization in commerce in connection with the sale and offering for sale of goods and services

in a manner that is likely to cause confusion, mistake, or deception as to whether the goods and

services originate from Harrah's, or are sponsored or endorsed by, or associated or affiliated with,

Harrah's.

45. Defendant's conduct constitutes trademark and service mark infringement in

violation of the common laws of the State of Indiana.

46. As a direct and proximate result of Defendant's trademark and service mark

infringement, Harrah's has suffered actual and irreparable injury for which no adequate remedy

exists at law, and Defendant's conduct will continue to cause such injury unless enjoined by this

Court.

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COUNT V

Indiana Common Law Unfair Competition

47. Harrah's incorporates by reference the allegations contained in paragraphs 1 - 46 of

this Complaint, as if fully set forth herein.

48. Defendant has intentionally copied and used the HORSESHOE Mark without

authorization or consent from Harrah's in commerce in connection with the sale, offering for sale,

distribution, and advertising of goods and services in a manner that is likely to cause confusion,

mistake, or deception as to the true source or sponsorship of Defendant's goods and services.

49. Defendant's conduct has enabled Defendant to earn profits to which Defendant is

not in law, equity or good conscience entitled, and has unjustly enriched Defendant, all to

Defendant's profit and to Harrah's damage and detriment.

50. Defendant's wrongful activities of unauthorized use of the HORSESHOE Mark is

calculated to deceive consumers and is likely to cause, and is actually causing, confusion, mistake,

and deception as to the association and affiliation of Defendant's services with Harrah's and its

HORSESHOE branded goods and services.

51. Defendant's conduct constitutes unfair competition in violation of the common laws

of the State ofIndiana.

52. As a direct and proximate result of Defendant's conduct, Harrah's has suffered

actual and irreparable injury for which no adequate remedy exists at law, and Defendant's conduct

will continue to cause such injury unless enjoined by this Court.

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COUNT VI

Trademark Dilution Under Ind. Code § 24-2-1-13.5

53. Harrah's incorporates by reference the allegations contained in paragraphs 1 - 52 of

this Complaint, as if fully set forth herein.

54. Harrah's HORSESHOE Mark is fanciful and acquired fame in the State ofIndiana

well prior to the acts of Defendant complained of herein.

55. Defendant's commercial use of his II HORSESHOES mark dilutes and tarnishes the

distinctive quality of Harrah's HORSESHOE Mark in violation ofInd. Code § 24-2-1-13.5.

56. Defendant is willfully trading on the reputation of Harrah's and its HORSESHOE

Mark and causing dilution of the HORSESHOE Mark.

57. As a direct and proximate result of Defendant's conduct, Harrah's has suffered

actual and irreparable injury for which no adequate remedy exists at law, and Defendant's conduct

will continue to cause such injury unless enjoined by this Court.

JURY DEMAND

Harrah's hereby demands trial by jury of all issues raised in this Complaint.

PRAYER FOR RELIEF

WHEREFORE, by virtue of Defendant's unlawful conduct as alleged in Counts I through

VI above, Harrah's respectfully prays that:

1. The Court enter judgment that Harrah's owns valid and enforceable rights in the

HORSESHOE Mark, and that Defendant, as a direct and proximate result of his unlawful and

unauthorized use of the HORSESHOE Mark, has:

(a) infringed Harrah's rights in the HORSESHOE Mark in violation of the

Federal Lanham Act, 15 U.S.C. § 1114(1);

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(b) diluted the HORSESHOE Mark in violation of the Federal Trademark

Dilution Act, 15 U.S.C. § 1125(c);

(c) unfairly competed with Harrah's in violation of the Federal Lanham Act,

15 U.S.C. § 1125(a)(1)(A);

(d) infringed Harrah's rights in the HORSESHOE mark in violation of the

common law of the State ofIndiana;

(e) engaged in acts of unfair competition in violation of the common law of

the State of Indiana; and

(f) diluted the HORSESHOE Mark in violation ofInd. Code § 24-2-1-13.5.

2. The Court enter temporary, preliminary and thereafter permanent injunctions

restraining and enjoining Defendant and each of his agents, servants, employees and all those

persons in concert or participation with any of them, from:

(a) using the II HORSESHOES name and mark, any other name or mark that

includes the term "Horseshoe," and any other confusingly similar name or

mark of any kind or nature, including domain names and trade names, in

connection with the promotion, advertisement, or offering of any goods or

services in the United States;

(b) otherwise diluting or tarnishing the distinctive quality of the

HORSESHOE Mark;

(c) otherwise unfairly competing with, injuring the business or reputation of,

or damaging the good will of Harrah's in any manner;

(d) otherwise falsely representing himself as being connected with, sponsored

by, or associated with Harrah's; and

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(e) otherwise engaging in deceptive trade practices or unfair competition

which in any way injures Harrah's.

3. Pursuant to Section 36 of the Trademark Act of 1946, 15 U.S.C. § 1118,

Defendant be directed to deliver up to Harrah's for destruction all advertising and promotional

materials, signs, business cards and all other materials which bear the infringing II

HORSESHOE Mark in any form, and all plates, molds, matrices and other means of making or

duplicating the same;

4. An accounting be had and judgment be rendered against Defendant for the profits,

gains and advantages he has derived from his wrongful actions and the damages sustained by

Harrah's as a result of Defendant's actions, with such amounts to be trebled as provided by law

because of the willful and deliberate nature of Defendant' s actions;

5. Defendant be required to pay Harrah's actual damages, enhanced damages, and

punitive damages in light of the willful, intentional and predatory nature of his actions;

6. Defendant be required to pay Harrah's both the costs of this action and the

reasonable attorneys' fees Harrah's has incurred in connection with this action; and

7. Harrah's be granted such other and further relief as the Court deems just and

proper.

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Respectfully submitted, this ;zL-%ay of December, 2008. /~

SF
ABARNO. _
BO , STOPHER & GRAVES
400 Pearl St., Ste. 204
New Albany, IN 47150
Tel 812-948-5053
Fax 812-948-9233
jhansford@bsg-in.com

OF COUNSEL:

DAVID J. STEWART
JESSICA E. JACOB
ALSTON & BIRD, LLP
1201 W. Peachtree Street
Atlanta, Georgia 30309
(404) 881-7000 (telephone)
(404) 881-7777 (facsimile)

Counsel for Plaintiff

HARRAH'S LICENSE COMPANY, LLC.

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