Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
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`ESTTA802789
`
`Filing date:
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`02/21/2017
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91232148
`
`Party
`
`Correspondence
`Address
`
`Defendant
`Amusement Art, LLC
`
`MICHAELANGELO LOGGIA
`1110 SEWARD STREET
`LOS ANGELES, CA 90038
`
`Submission
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`Filer's Name
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`Filer's e-mail
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`Signature
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`Date
`
`Attachments
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`amusementart@gmail.com;michael@iawworld.com
`
`Motion to Suspend for Civil Action
`
`Michaelangelo Loggia
`
`michael@iawworld.com
`
`/Michaelangelo Loggia/
`
`02/21/2017
`
`91232148.pdf(1717976 bytes )
`Exhibit A.pdf(523063 bytes )
`Exhibit B.pdf(526332 bytes )
`Exhibit C.pdf(1273958 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`
`TRADEMARK TRIAL AND APPEAL BOARD
`
`LIFE IS BEAUTIFUL, LLC,
`Opposer,
`
`V.
`
`Opposition No.: 9] 232MB
`
`Mark: LIFE IS BEAUTIFUL
`Serial No.: 86947862
`
`Filing Date: January 9, 2017
`
`AMUSEMENT ART, LLC,
`
`Applicant.
`
`
`
`APPLICANT’S
`MOTION TO SUSPEND
`OPPOSITION PROCEEDING
`
`Opposer with respect to the mark, LIFE IS BEAUTIFUL.
`
`Applicant respectfully moves the Trademark Trial and Appeal Board (“T.T.A.B.”) to suspend
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`all proceedings in the above-captioned Opposition proceeding, pending the final outcome of a
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`pending litigation between the parties in the United States District Court for the Central District of
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`California, Western Division,
`
`involving virtually identical subject matter,
`
`facts, and evidence,
`
`between the same parties.
`
`FACTUAL BACKGROUND
`
`Applicant and Opposer are currently involved in a dispute in the United States District Court
`
`for the Central District of California, Western Division, captioned Amusement Art, LLC 12. Life is
`
`Beamith LLC, er all, Case No. 2—l4-cv—08290-DDP-JPR (the “Civil Action”). Attached hereto as
`
`Exhibit A, are true and correct copies ofthe First Amended Complaint filed by Applicant in the Civil
`
`Action, and Opposer’s Answer and Counterclaims to Applicant’s First Amended Complaint in the
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`Civil Action.
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`As evident from the face of the pleadings themselves, the Civil Action raises the issue of
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`whether the Opposer and a related company are infringing upon Applicant’s trademark, LIFE IS
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`BEAUTIFUL, the same trademark that
`
`is the subject of the Opposition proceeding brought by
`
`Opposer. The Civil Action also relates to the legal and equitable rights of both Applicant and
`
`

`

`Among other claims, in the Civil Action, Applicant accused Opposer ofinfringing certain of
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`Applicant’s federal and common law trademark rights in the mark “LIFE IS BEAUTIFUL”.
`
`In
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`response, Opposer asserted a defense of unclean hands and counterclaimed to cancel eight (8) federal
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`trademark registrations owned by Applicant
`
`for the mark, LIFE IS BEAUTIFUL (the “Eight
`
`Registrations”), alieging that the Eight Registrations were obtained by Applicant through fraud on the
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`Trademark Office.
`
`The Eight Registrations were filed by Patrick Guetta and Debora Guetta on behalf of the
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`Applicant. Patrick Guetta and Debora Guetta are not attorneys, they are not from the United States,
`
`and English is not their native language. It recently came to the attention of the Applicant that the
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`Eight Registrations contained inadvertent errors — attributable to the honest mistakes of such lay
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`applicants — at which point
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`the Applicant acted in good faith by promptly and voluntarily
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`surrendering the Eight Registrations.
`
`the LIFE IS BEAUTIFUL mark for other goods.
`
`2 Attached hereto as Exhibit C is a true and correct copy of Applicant’s Notice of Appeal To The United States
`Court oprpeals For The Ninth Circuit.
`3 On the same day as Opposer filed the instant opposition, Opposer also filed opposition proceedings against
`Application Nos. 86912677, 86969619, 86947862, 86952674, 86917366, and 86947827, which seek to register
`
`On November 29, 2016,
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`the district court
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`issued an Order Re Motions For Summary
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`Judgement in which the court granted summary judgement in favor of Opposer on all of Applicant’s
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`claims and also granted Opposer’s motion for summary judgment of cancellation of Applicant’s Eight
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`Registrations (“November 29 Order”).' Subsequently, on December 14, 2016, the coutt entered
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`judgment against Applicant (“Final Judgment”). Because Applicant believes that the district court
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`erred in granting Opposer’s summary judgment motions, Applicant
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`timely appealed the district
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`court’s entry of Final Judgment, which appeal is currently pending.2
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`The TTAB has previously stayed Cancellation Proceeding No. 92064019 involving the same
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`parties and LIFE IS BEAUTIFUL mark as is at issue in the present opposition proceeding. Now, on
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`January 9, 2017, Opposer filed the instant opposition proceeding.3 As reflected by Opposer’s Notice
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`of Opposition, Opposer relies heavily on the district court’s November 29 Order and attaches a copy
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`' Attached hereto as Exhibit B is a true and correct copy ofthe district court’s November 29 Order in the Civil
`Action.
`
`

`

`of it as Exhibit B to the Notice of Opposition. The issues raised in the Notice of Opposition are also
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`closely intertwined with many of the issues that are now on appeal to the Ninth Circuit.
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`indeed, in
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`Count 4 of the Notice, Opposer raises Claim and Issue Preclusion based on issues that the district
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`court decided in the November 29 Order.
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`LEGAL ARGUMENT
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`Because the final outcome of the Civil Action and Applicant’s appeal therefrom will yield a
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`construction of both the Opposer’s and the Applicant’s rights that would undoubtedly affect the
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`present Opposition proceeding, or obviate the need for the Opposition proceeding, to conserve both
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`public and private resources litigating duplicative matters in different fora, the Applicant respectfully
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`requests suspension of the present Opposition proceeding pending a final, nonwappealable resolution
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`ofthe pending Civil Action between the Applicant and the Opposer.
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`The Trademark Trial and Appeal Board Manual of Procedure (“T.B.M.P.”), June 2016,
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`expressly provides in Section 510.02(a), 37 C.F.R. Section 2.117(a):
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`3
`
`
`inc. v. Burger King Corp, 171 U.S.P.Q. 805, 805 (T.T.A.B. 1971); see also General Motors Corp. v.
`
`Whenever it shall come to the attention of the Trademark Trial and Appeal Board that a
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`party or parties to a pending case are engaged in a civil action or another Board
`
`proceeding which may have a bearing on the case, proceedings before the Board may be
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`suspended until termination ofthe civil action or other Board proceeding.
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`it is worth noting that decisions of federal district courts are binding on the T.T.A.B., but not
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`vice-versa. 15 U.S.C.
`
`§
`
`1
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`I 19. Thus,
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`the Board itself has frequently noted that suspension of
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`administrative inter partes proceedings in the T.T.A.B. makes perfect sense when a related civil
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`action is pending because “[a] decision by the district court may be binding on the Board whereas a
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`determination by the Board as to a defendant’s right to obtain or retain a registration would not be
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`binding or resjtrdicam in respect to the proceeding pending before the court.” New Orleans Louisiana
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`Saints LLC v. Who Dat? lnc., 99 U.S.P.Q.2d 1550, 1552 (T.T.A.B. 2011), citing WhopJLBurgeL
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`Cadillac Club Fashions lnc., 22 U.S.P.Q.2d 1933, 1936-37 (T.T.A.B. 1992) (Motion to suspend
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`Board proceedings granted because “[a] decision by the district court will be dispositive of the issues
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`before the Board”); Toro Co. v. Hardigg Industries, lnc., 187 U.S.P.Q. 689, 692 (T.T.A.B. 1975),
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`

`

`rev’d on other grounds, 549 F.2d 785 (C.C.P.A. 1977) (noting Board’s suspension of proceedings
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`pending outcome of pending infringement action in district court); Other Telephone Co. v.
`
`Connecticut National Telephone Co., 181 U.S.P.Q. 125, 126-27 (T.T.A.B. 1974); petition denied, 181
`
`U.S.P.Q. 779 (Comm’r I974); Tokaido v. Honda Associates Inc., 179 U.S.P.Q. 861, 862 (T.T.A.B.
`
`1973).
`
`suspended, pending the final, non—appealable outcome of the Civil Action and Applicant’s Appeal
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`rights to the mark, LIFE IS BEAUTIFUL. Further, count 4 of the Notice raises claim and issue
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`Because the Civil Action and the Opposition raise overlapping factual and legal
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`issues
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`between the exact same parties, the above—captioned Opposition proceeding should be suspended.
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`In any event, the issues presented in the Civil Action between the parties in the District Court
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`need not be identical, but only have a “bearing” on the outcome of the T.T.A.B. proceeding to justify
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`suspension. See, eg, Other Telephone Co. v. Connecticut National Telephone Co., 181 U.S.P.Q.
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`125, 126-27 (T.T.A.B. 1974) (decision in civil action for infringement and unfair competition would
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`have bearing on outcome of Trademark Act § 2(d) claim before Board), pet. denied, 181 U.S.P.Q. 779
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`(Comm’r 1974); see also New Orleans Louisiana Saints LLC v. Who Dat? Inc., 99 U.S.P.Q.2d 1550,
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`1552 (T.T.A.B. 2011) (civil action need not be dispositive of Board proceeding, but only needs to
`
`have a bearing on issues before the Board); General Motors Corp v. Cadillac Club Fashions, Inc., 22
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`U.S.P.Q.2d 1933, 1936-37 (T.T.A.B. 1992) (relief sought in federal district court included an order
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`directing Office to cancel registration involved in Cancellation proceeding); see alfl Tokaido v.
`
`Honda Associates Inc., 179 U.S.P.Q. 861, 862 (T.T.A.B. 1973); Wh_opp_er—Burger, Inc. v. Burggr
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`King Corp, 171 U.S.P.Q. 805, 806-07 (T.T.A.B. 1971); Martin Beverage Co. Colita Beverage Corp.,
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`169 U.S.P.Q. 568, 570 (T.T.A.B. 1971).
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`Disposition of the Civil Action will determine whether Applicant or Opposer holds superior
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`preclusion based on the Court’s November 29 Order. Thus, the issues presented in the Civil Action,
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`and which are now on appeal, are likely to have a direct bearing on the Opposition proceeding filed
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`by Opposer.
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`Therefore, Applicant respectfully moves that the above-captioned Opposition proceeding be
`
`

`

`therefrom.
`
`February 21, 2017
`
`Respectfully submitted,
`
`AMUSEMENT ART, LLC
`
`
`
`Michaelangfiggia, Esq.
`
`l 110 Seward Street
`
`Attorneys for Applicant
`
`Los Angeles, CA 90038
`Telephone: 323-465-2626 x101
`Email: michael@iawworld.com
`
`CERTIFICATE OF SERVICE
`
`

`

`OPPOSER ~ PTO ADDRESS:
`
`Life is Beautiful, LLC
`302 E. Carson Avenue, Second Floor
`Las Vegas, NV 98101
`
`OPPOSER’S COUNSEL:
`
`Dated: February 21,2017 M
`
`I certify that a true and accurate copy ofthe foregoing APPLICANT’S MOTION TO SUSPEND
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`OPPOSITION PROCEEDING was served by email, on this let day of February, 2017, upon Opposer and
`
`Opposer’s counsel at the following addresses of record as identified:
`
`Lori N. Boatright
`Blaker Sokoloff Taylor & Zafman LLP
`12400 Wilshire Boulevard, 7th Floor
`Los Angeles, CA 90025
`
`Michaelangelo G. Loggia
`
`

`

`
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 1 of 21 Page ID #:263
`
`
`
`FARHAD NOVIAN (SBN 118129)
`Farhad@NovianLaw.com
`JOSEPH A. LOPEZ (SBN 268511)
`Joseph@NovianLaw.com
`SHARON RAMINFARD (SBN 278548)
`Sharon@NovianLaw.com
`NOVIAN & NOVIAN, LLP
`1801 Century Park East, Suite 1201
`Los Angeles, California 90067
`Telephone: (310) 553-1222
`Facsimile: (310) 553-0222
`
`Attorney for Plaintiff AMUSEMENT ART, LLC
`
`
`
`UNITED STATES DISTRICT COURT
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`AMUSEMENT ART, LLC,
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`Plaintiff,
`
`
`
`v.
`
`
`
`
`
`
`LIFE IS BEAUTIFUL, LLC;
`DOWNTOWN LAS VEGAS
`MANAGEMENT LLC; LIVE NATION
`ENTERTAINMENT, INC.;
`TICKETMASTER, L.L.C.; and DOES 1-
`10, inclusive,
`
`FOR THE CENTRAL DISTRICT OF CALIFORNIA
`
` CASE NO.: 2:14-cv-08290-DDP-JPR
`
`[Assigned for all purposes to the
`Honorable Dean D. Pregerson, Judge
`Presiding]
`
`FIRST AMENDED COMPLAINT FOR:
`1. Trademark Infringement Under §32(1)
`of the Lanham Act;
`2. Unfair Competition, False Designation
`Of Origin, Passing Off And False
`Advertising Under Lanham Act § 43(a);
`3. Copyright Infringement;
`4. Unfair Competition in Violation of Bus.
`& Prof. Code § 17200, et seq.;
`5. Common Law Trademark Infringement
`and Unfair Competition; and
`6. Declaratory Relief
`
`JURY TRIAL DEMANDED
`
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`1
`FIRST AMENDED COMPLAINT
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`Defendants.
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`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 2 of 21 Page ID #:264
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`JURISDICTION AND VENUE
`1. The Court has original subject matter jurisdiction over plaintiff’s federal
`claims pursuant to 28 U.S.C. §§ 1331, 1337(a), and 1338(a) since the complaint
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`involves issues arising under a federal statute, the Lanham Act. The Court has
`original subject matter jurisdiction over Plaintiff’s federal claims arising under the
`Copyright Act of 1976, Title 17 U.S.C., § 101 et seq. under 28 U.S.C. § 1331(m),
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`1338 (a) and (b). The Court also has original subject matter jurisdiction over
`plaintiff’s federal claims pursuant to 28 U.S.C. § 1332(a)(1) because this action is
`between citizens of different states and the amount in controversy exceeds $75,000.
`The Court also has supplemental subject matter jurisdiction over plaintiff’s state law
`claims under principles of pendent jurisdiction and pursuant to 28 U.S.C. § 1367(a).
`2. This Court has personal jurisdiction over the defendants because the
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`13
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`events or omissions giving rise to the claim occurred, the tortious acts occurred, and a
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`substantial part of the injury took place and continues to take place, in this judicial
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`district.
`3. Venue is proper in the United States District Court for the Central District
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`of California pursuant to 28 U.S.C §§ 1391(b), 1391(c), and 1400(a) as this is a
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`judicial district in which a substantial part of the events giving rise to the claims
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`occurred the tortious acts occurred, and a substantial part of the injury took place and
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`continues to take place.
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`PARTIES
`Plaintiff Amusement Art, LLC (“Plaintiff”) is, and at all times relevant
`hereto was, a limited liability company organized and existing under the laws of the
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`4.
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`State of California and at all times relevant herein was and is doing business in this
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`judicial district.
`5. Upon information and belief, defendant Life Is Beautiful, LLC (“LIB”) is,
`and at all times relevant hereto was, a limited liability company organized and
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`existing under the laws of the State of Nevada and at all times relevant herein was and
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` 2
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`
`FIRST AMENDED COMPLAINT
`
`
`
`

`

`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 3 of 21 Page ID #:265
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`is doing business in this judicial district.
`6. Upon information and belief, defendant Downtown Las Vegas
`Management LLC (“Management”) is, and at all times relevant hereto was, a limited
`liability company organized and existing under the laws of the State of Nevada and at
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`all times relevant herein was and is doing business in this judicial district. Upon
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`information and belief, Management is the manager of LIB.
`7. Upon information and belief, defendant Live Nation Entertainment, Inc.
`(“Live Nation”) is, and at all times relevant hereto was, a Delaware corporation with
`its principal place of business in Beverly Hills, California, and at all times relevant
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`herein was and is doing business in this judicial district.
`8. Upon information and belief, defendant Ticketmaster, L.L.C.
`(“Ticketmaster”) is, and at all times relevant hereto was, a Virginia limited liability
`company with its principal place of business in Beverly Hills, California, and at all
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`times relevant herein was and is doing business in this judicial district.
`9.
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`Plaintiff is presently unaware of the true names and identities of Does 1-
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`10 and will seek leave to amend this complaint when their true names become known
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`to Plaintiff.
`10. Plaintiff is informed and believes and based thereon alleges that in
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`committing the acts complained of herein, defendants LIB, Management, Live Nation,
`Ticketmaster, and the Doe defendants (collectively, “Defendants”), and each of them,
`acted in concert and conspiracy with each other.
`11. Plaintiff is informed and believes and based thereon alleges, that
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`Defendants are the alter egos of each other, are characterized by a unity of interest in
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`ownership and control among themselves such that any individuality and separateness
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`between them have ceased; that each is, and at all relevant times was, a mere shell
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`instrumentality and conduit through which the other defendants carried on their
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`business; and that these Defendants completely controlled, dominated, managed, and
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`operated each other's business to such an extent that any individuality or separateness
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` 3
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`
`FIRST AMENDED COMPLAINT
`
`
`
`

`

`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 4 of 21 Page ID #:266
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`of the defendants does not and did not exist, and that defendants intermingled the
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`assets of each to suit the convenience of themselves in order to evade payment of
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`obligations and legal liability.
`12. Plaintiff is informed and believes, and on such information and belief
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`alleges, that adherence to the fiction of separate existence of these Defendants as
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`entities distinct and separate from one another would promote injustice in that some of
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`these Defendants are inadequately capitalized, have used the other Defendants as a
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`mere shell, simply to transfer the earnings of one another while attempting to avoid
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`legal liability. As such, Plaintiff is informed and believes, and on such information
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`and belief alleges, that the Defendants are the alter egos of each other and are
`responsible in damages to Plaintiff, to the full extent of all other Defendants’ liability.
`BACKGROUND
`13. Thierry Guetta aka Mr. Brainwash (“Mr. Guetta”) is a prominent artist
`whose work has received significant press in numerous publications around the world.
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`As a result of his innovative artwork and efforts, Mr. Guetta has received many
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`awards and has gained recognition as an industry leader in developing and exhibiting
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`creative artwork that has gained widespread popularity and demand among
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`consumers.
`14. Mr. Guetta has an ownership interest in Plaintiff and Plaintiff is the
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`15.
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`registered owner of various trademarks and copyrights created by Mr. Guetta.
`The “Life Is Beautiful” Trademark
`Its A Wonderful World, Inc. (“Wonderful World”) is a California
`corporation in which Mr. Guetta has an ownership interest.
`16.
`In June 2008, Wonderful World held an art show in Los Angeles,
`California that was called and known among the public as “LIFE IS BEAUTIFUL”, in
`which artwork that Mr. Guetta had created was prominently showcased. The event
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`was highly advertised and received a great amount of unsolicited media attention
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`throughout the United States.
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` 4
`
`
`FIRST AMENDED COMPLAINT
`
`
`
`

`

`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 5 of 21 Page ID #:267
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`17. Based upon this use in commerce, Wonderful World filed USPTO
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`Trademark Application, bearing Serial No. 86405252 in International Class 41 for
`“Arranging, organizing, conducting, and hosting social entertainment events; Art
`exhibition services; Art exhibitions; Audio production services, namely, creating and
`
`producing ambient soundscapes, and sound stories for museums, galleries, attractions,
`
`podcasts, broadcasts, websites and games; Audio recording and production;
`
`Augmented reality video production; Book publishing; Organizing community
`
`festivals featuring primarily Art exhibitions and also providing film, fashion shows
`and exhibitions” on a 1A basis alleging a date of first use in 2008 (the “Application”).
`18. Wonderful World has assigned any and all right, title and interest,
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`including all rights to sue and recover for and the right to profits or damages in
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`connection therewith, in the Application to Plaintiff.
`19. Plaintiff is also the owner of numerous trademarks for the name “LIFE IS
`BEAUTIFUL” including, without limitation, the United States Patent and Trademark
`Office (“USPTO”) Registration Nos. 4230609, 4222551, 4230601, 4230603,
`4230604, 4230605, 4568728, and 4400693 (the “Registrations”) (collectively, the
`Application and the Registrations shall be referred to herein as the “Marks”).
`
`The Heart Designs
`20. Plaintiff is also the owner of certain trademarks and copyrights for various
`images of splashed paint heart designs (the “Heart Designs”).
`21. As early as 2009, Plaintiff and/or Mr. Guetta began using and continue to
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`use the Heart Designs in commerce in connection with his art work and art shows in
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`addition to various products, including but not limited to clothing such as T-shirts,
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`kitchenware such as plates, and cell phone covers.
`22. Plaintiff owns copyrighted images of the Heart Designs including, without
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`limitation, the 2009 United States Copyright Office Registration No. VAu 1-000-397
`(the “Copyright Registration”).
`///
`
` 5
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`
`FIRST AMENDED COMPLAINT
`
`
`
`

`

`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 6 of 21 Page ID #:268
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`23. To the extent that any of Plaintiff’s alleged right, title, or interest in any of
`the Heart Designs was previously owned by Mr. Guetta, any and all right, title and
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`interest therein, including all rights to sue and recover for and the right to profits or
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`damages in connection therewith, has been assigned to Plaintiff.
`Defendants’ Infringement
`In or around late 2012, Defendants began using the name “LIFE IS
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`BEAUTIFUL” and a splashed paint heart design in commerce in connection with their
`own art and entertainment shows (the “Infringing Marks”). Such use includes, without
`limitation, use of the marks on the websites, www.lifeisbeautiful.com,
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`www.livenation.com, www.ticketmaster.com, social media sites such as Facebook,
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`Instagram, and Twitter, advertisements, signage and merchandise including, but not
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`limited to, posters and clothing.
`25. Defendants sold tickets to each of their shows to patrons throughout the
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`whom Defendants knew would sell its tickets within this district.
`26. Upon information and belief, Defendants have gained access to Plaintiff’s
`Marks and have used the identical name LIFE IS BEAUTFUL in connection with
`Defendants’ art and entertainment shows. Upon information and belief, Defendants
`have similarly gained access to Plaintiff’s Heart Designs and have used a substantially
`and confusingly similar splashed paint heart design in connection with Defendants’ art
`and entertainment shows.
`27. The Infringing Marks directly infringe Plaintiff’s Marks by using the
`exact term “LIFE IS BEAUTIFUL” as the entirety and/or part of the Infringing
`Marks. The Infringing Marks similarly infringe upon Plaintiff’s Heart Designs by
`incorporating a splashed paint heart design in the Infringing Marks that is
`substantially and confusingly similar to Plaintiff’s Heart Designs.
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`FIRST AMENDED COMPLAINT
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`In or about May 2013, Defendants contacted Plaintiff regarding Plaintiff’s
`rights in the name LIFE IS BEAUTIFUL and the use by Defendants of the same name
`for their art and entertainment show. Plaintiff informed Defendants that Defendants’
`use of the name LIFE IS BEAUTIFUL infringed upon Plaintiff’s Mark and that
`Defendants’ use of the splashed paint heart designs infringed upon Plaintiff’s Heart
`Designs, and that Plaintiff did not consent to such use.
`29. Despite a series of correspondence and meetings between Plaintiff and
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`Defendant between May 2013 and September 2014, Plaintiff never agreed to
`Defendants’ use of the Marks or Heart Designs.
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`In mid-September 2014, Plaintiff learned, to its great surprise, that
`Defendants, without Plaintiff’s consent or knowledge, filed four (4) USPTO
`Trademark Applications bearing Serial Nos. 86367025, 86367058, 86366989, and
`86366959 for the Infringing Marks in International Class 41 for “Organizing
`community festivals featuring primarily music performances and exhibitions and also
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`providing art exhibitions, film, fashion shows and exhibitions, food and wine tastings,
`wine festivals, and live entertainment shows in the nature of speaking performances”
`with filing dates of August 14, 2014 (the “Infringing Applications”).
`31. Plaintiff’s use of the Marks and the creation and use of the Heart Designs
`precedes Defendants use of said marks or any marks confusingly or substantially
`similar thereto. Defendants’ Infringing Applications list dates of first use in late 2012,
`approximately four (4) years after the date of first use in Plaintiff’s Application and
`approximately three (3) years after the date of Plaintiff’s Copyright Registration.
`32. Upon learning about the Infringing Applications, it became apparent to
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`Plaintiff that Defendants intended to use the Infringing Marks at their upcoming art
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`and entertainment show, planned for October 24 through 26, 2014, even without
`Plaintiff’s consent.
`33. Even after filing the Infringing Applications, Defendants continued to
`contact Plaintiff in a purported effort to acquire Plaintiff’s consent to use the
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`FIRST AMENDED COMPLAINT
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`Infringing Marks. Defendants, however, at no time mentioned to Plaintiff that they
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`have filed the Infringing Applications.
`34.
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`In or about late September 2014, Defendants sent Plaintiff a written
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`proposal whereby Defendants would make a payment to Plaintiff in return for the
`rights to use the name LIFE IS BEAUTIFUL in connection with Defendants’ art and
`entertainment shows as well as various merchandise. However, no payment amount
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`was proposed.
`35. Plaintiff did not accept Defendants’ written proposal and no agreement of
`any sort was ever reached.
`36. On or about October 21, 2014, Plaintiff once again informed Defendants,
`in writing, that it does not consent to Defendants’ use of the Infringing Marks in
`connection with Defendants’ upcoming festival.
`37. However, Defendants still held their show on October 24, 2014 and made
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`use of the Infringing Marks in connection therewith. Upon information and belief,
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`Defendants will similarly hold its show as planned on October 25 and 26, 2014 and
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`will continue to make use of the Infringing Marks in such manner.
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`Live Nation and Ticketmaster
`38. Upon information and belief, defendant Live Nation is the largest live
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`entertainment company. Among other things, Live Nation and Ticketmaster operate
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`everything from concert promotions, venue operations, sponsorship, and ticketing.
`39. Upon information and belief, from in or about 2012, Live Nation and
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`Ticketmaster sponsored, promoted, advertised, organized, produced, facilitated and/or
`sold tickets in connection with Defendants’ infringing art and entertainment shows,
`and continues to do so to date. In connection with such actions, Live Nation and
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`Ticketmaster directly made substantial and material use of the Infringing Marks.
`40. Upon information and belief, on or about May 27, 2013 and on or about
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`June 12, 2014, Ticketmaster and LIB entered into User Agreements whereby
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`Ticketmaster agreed to and did provide various services to Defendants, including but
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`FIRST AMENDED COMPLAINT
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`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 9 of 21 Page ID #:271
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`not limited to ticketing services for Defendants’ infringing shows.
`41. Upon information and belief, Defendants Live Nation and Ticketmaster
`have displayed and, to date, continue to display the Infringing Marks (both the “Life
`Is Beautiful” mark and the splashed paint heart design) in connection with
`Defendants’ infringing art and entertainment shows on their websites,
`www.livenation.com and www.ticketmaster.com, which, among other things, provide
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`the public with detailed information about, reviews of, and/or photos of the shows.
`42. Upon information and belief, Live Nation and Ticketmaster have also
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`displayed, and, to date, continue to display the Infringing Marks in connection with
`Defendants’ infringing shows on printed matter including, without limitation, printed
`tickets and advertisements.
`43. Upon information and belief, at all times relevant herein, Live Nation and
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`Ticketmaster made use of the Infringing Marks with knowledge and/or constructive
`knowledge of Plaintiff’s rights in the Marks and Heart Designs.
`44. Defendants have engaged in such infringing and tortious conduct in an
`illicit effort to unfairly exploit the popularity and fame of Plaintiff’s Marks and Heart
`Designs by causing confusion among consumers as to the source of its products and
`shows and to cause false association or approval by Plaintiff of Defendants’ products
`and shows. Although Plaintiff has repeatedly notified Defendants of their infringing
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`and tortious conduct, Defendants continue to engage in such willful infringing and
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`tortious acts.
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`FIRST CAUSE OF ACTION
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`(Trademark Infringement Under §32(1) of the Lanham Act - Against All
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`Defendants)
`45. Plaintiff repeats, reiterates and re-alleges each and every allegation
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`contained in paragraphs designated 1 through 44, inclusive, of this Complaint, as if
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`fully set forth herein at length. Plaintiff owns the trademark rights in the Registrations
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`which have acquired federal registration with the USPTO.
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`FIRST AMENDED COMPLAINT
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`Case 2:14-cv-08290-DDP-JPR Document 44 Filed 11/20/15 Page 10 of 21 Page ID #:272
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`46. Defendants have used, and intend to continue to use the Infringing Marks,
`which are confusingly similar to the Registrations to capitalize on Plaintiff’s goodwill
`associated therewith in order to attract customers.
`47. Defendants' use of the Infringing Marks, or other confusingly similar
`imitations of Plaintiff’s Registrations, is willful and deliberate and with an intent to
`reap the benefit of Plaintiff’s goodwill.
`48. Defendants' use of the Infringing Marks, or other confusingly similar
`imitations of Plaintiff’s Registrations, is likely to continue to cause, confusion among
`the public about whether Plaintiff has authorized or endorsed the Defendants’ goods
`and services, and about whether Plaintiff is affiliated with the Defendants’ goods and
`services.
`49. Defendants' use of the Infringing Marks, or other confusingly similar
`imitations of Plaintiff’s Registrations, in connection with goods and services
`unconnected to that of Plaintiff and without the authorization of Plaintiff infringes
`Plaintiff’s exclusive rights in its trademark in violation of § 32(1) of the Lanham Act,
`15 U. S.C. § 1114(1), in that the public is likely to be confused, deceived or mistaken
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`regarding the source or sponsorship of Defendants' goods and services, or to
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`erroneously believe that Defendants' goods and services emanate from or are
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`authorized by Plaintiff, or to believe that Plaintiff is the creator of, or has otherwise
`affiliated with the Defendants’ goods and services.
`50. Defendants’ actions, as alleged herein, constitute direct, contributory,
`and/or vicarious trademark infringement.
`51. Defendants' acts of trademark infringement have caused and are causing
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`great and irreparable injury to Plaintiff and to the Registrations and to the business
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`and goodwill represented thereby, in an amount that cannot be ascertained at this time
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`and, unless