The complaint - Tor Ekeland PC

JUDGE COTE
JS 44C/SDNY
REV. 7/2012
cI^er^IV 4054
JUN 1 3 2013
The JS-44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of
pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the
Judicial Conference of the UnitedStates in September 1974, is required for use of the Clerk of Court for the purpose of
initiating the civil docket sheet.
PLAINTIFFS
DEFENDANTS
BLACKHEART RECORDS GROUP, INC.
HOT TOPIC, INC. and BLACKHEART CLOTHING COMPANY, LLC,
ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER
ATTORNEYS (IF KNOWN)
Oren Warshavsky
BAKER & HOSTETLER, 45 Rockefeller Plaza, New York, New York 10111
(212)589-4624
CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OF CAUSE)
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
15 USC 1114, 1125; federal trademark infringement and unfair competition; state law trademark and unfair competition
Has this ora similar case been previously filed in SDNY at anytime? No
[X] Yes [~J Judge Previously Assigned
If yes, wasthis case Vol. [~J Invol. [7J Dismissed. No [~J Yes [~J If yes, give date
IS THIS AN INTERNATIONAL ARBITRATION CASE?
No $Q
(PLACEAN [x] IN ONE BOX ONLY)
& Case No.
YeS [~j
NATURE OF SUIT
ACTIONS UNDER STATUTES
CONTRACT
I
(
[
[
1110
]120
J 130
1110
[1150
[ ]151
I 1152
PERSONAL INJURY
PERSONAL INJURY
FORFEFTURE/PENALTY
INSURANCE
MARINE
MILLER ACT
[ 1310 AIRPLANE
[ 1315 AIRPLANE PRODUCT
[ ] 362
PERSONAL INJURY MED MALPRACTICE
PERSONAL INJURY
[ 1610
[ ]620
NEGOTIABLE
[ J320 ASSAULT, LIBEL &
PRODUCT LIABILITY
1 1625
INSTRUMENT
RECOVERY OF
OVERPAYMENT &
ENFORCEMENT
OF JUDGMENT
MEDICARE ACT
LIABILITY
[ J 330
RECOVERY OF
ASBESTOS PERSONAL
INJURY PRODUCT
LIABILITY
LIABILITY
[ I 340 MARINE
[ I 345 MARINE
[ I 350
[ ]355
(EXCL VETERANS)
[ ]153
[ ]368
EMPLOYERS'
RECOVERY OF
DEFAULTED
STUDENT LOANS
SLANDER
FEDERAL
[ ] 365
[ ]360
OVERPAYMENT
PERSONAL PROPERTY
PRODUCT
LIABILITY
MOTOR VEHICLE
MOTOR VEHICLE
PRODUCT LIABILITY
OTHER PERSONAL
[ I 370
[ ]371
( )380
OTHER FRAUD
TRUTH IN LENDING
OTHER PERSONAL
PROPERTY DAMAGE
[ ]385
PROPERTY DAMAGE
INJURY
PRODUCT LIABILITY
[
[
[
[
]630
]640
]650
]660
( )690
BANKRUPTCY
OTHER STATUTES
AGRICULTURE
OTHER FOOD &
[ ] 422 APPEAL
[ I 400 STATE
DRUG
[ ]423 WITHDRAWAL
DRUG RELATED
SEIZURE OF
PROPERTY
PROPERTY RIGHTS
RR & TRUCK
[ J 820 COPYRIGHTS
[ ] 830 PATENT
K]840 TRADEMARK
AIRLINE REGS
OCCUPATIONAL
SAFETY/HEALTH
[ 1190
I 1195
MOTIONS TO
VACATE SENTENCE
20 USC 2255
[ J 530
( ]535
[ ]540
HABEAS CORPUS
ACTIONS UNDER STATUTES
LIABILITY
[ 1196
FRANCHISE
REAL PROPERTY
CIVIL RIGHTS
[J 441
[I 442
[ ]443
VOTING
EMPLOYMENT
HOUSING/
I 1210
LAND
CONDEMNATION
[1240
[ 1245
FORECLOSURE
RENT LEASE &
EJECTMENT
TORTS TO LAND
TORT PRODUCT
LIABILITY
[ J290
[ I 730
LABOR/MGMT
[]740
( J790
REPORTING S
FEDERAL TAX SUITS
DISCLOSURE ACT
RAILWAY LABOR ACT [ ]870 TAXES (U.S. Plaintiff
OTHER LABOR
Defendant)
( J791
EMPL RET INC
[ J 444 WELFARE
[ I 445 AMERICANS WITH
[ ]446
DISABILITIES EMPLOYMENT
AMERICANS WITH
LITIGATION
IMMIGRATION
]480
I 490
1810
I 850
DEPORTATION
RACKETEER INFLU
ENCED & CORRUPT
CONSUMER CREDIT
CABLE/SATELLITE TV
SELECTIVE SERVICE
SECURITIES/
COMMODITIES/
EXCHANGE
CHALLENGE
12 USC 3410
[ I 890 OTHER STATUTORY
ACTIONS
[ ] 871
IRS-THIRD PARTY
[ 1891 AGRICULTURAL ACTS
[ ]892 ECONOMIC
STABILIZATION ACT
or
[ ]893 ENVIRONMENTAL
MATTERS
[ 1894
26 USC 7609
[ ]895
[ )900
ENERGY
ALLOCATION ACT
FREEDOM OF
INFORMATION ACT
APPEAL OF FEE
DETERMINATION
[J 462
NATURALIZATION
UNDER EQUAL
ACCESS TO JUSTICE
APPLICATION
I 1463
[ 1465
OTHER CIVIL RIGHTS
ANTITRUST
BANKS & BANKING
COMMERCE
[ I 875 CUSTOMER
PRISONER CIVIL RIGHTS
[ I 550 CIVIL RIGHTS
[ J555 PRISON CONDITION
DISABILITIES -OTHER
[ ]440
[
[
[
[
RELATIONS
SECURITY ACT
ACCOMMODATIONS
[ 1220
[ 1230
FAIR LABOR
STANDARDS ACT
LABOR/MGMT
DEATH PENALTY
MANDAMUS & OTHER
HIA(1395ff)
BLACK LUNG (923)
DIWC/DIWW (405(g))
SSID TITLE XVI
RSI (405(g))
[ I 720
PRISONER PETITIONS
[ 1510
]861
] 862
J 863
] 864
I 865
1410
I 430
]450
J 460
I 470
(RICO)
SOCIAL SECURITY
[
[
[
[
[
[
I
[
[
(
ORGANIZATION ACT
OTHER
LABOR
[ 1710
BENEFITS
STOCKHOLDERS
SUITS
OTHER
CONTRACT
CONTRACT
PRODUCT
REAPPORTIONMENT
28 USC 157
21 USC 881
LIQUOR LAWS
OF VETERAN'S
I 1160
28 USC 158
HABEAS CORPUSALIEN DETAINEE
OTHER IMMIGRATION
ACTIONS
[ 1950 CONSTITUTIONALITY
OF STATE STATUTES
(Non-Prisoner)
ALL OTHER
REAL PROPERTY
Check if demanded in complaint:
CHECK IF THIS IS A CLASS ACTION
DO YOU CLAIM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
UNDERF.R.C.P. 23
IF SO, STATE:
DEMAND $
OTHER
JUDGE
DOCKET NUMBER
Check YES only if demanded in complaint
JURY DEMAND: E YES • NO
NOTE:
Please submit at the time of filing an explanation of why cases are deemed related.
(PLACE AN x INONE BOX ONL Y)
I2<l 1 Original
ORIGIN
|~J 2 Removed from
Proceeding
L~] 3 Remanded LJ 4 Reinstated or
state Court
from
I-! a.
a all
xii n»rti„«
|_|
parties r»„r»«„t„H
represented
LJ 5 Transferred from L"] 6 Multidistrict
Reopened
(Specify District)
[~J 7 Appeal to District
Litigation
Judge from
Appellate
^^
Magistrate Judge
Judgment
| | b. At least one
party is pro se.
(PLACE AN x IN ONE BOX ONLY)
• 1 U.S. PLAINTIFF
BASIS OF JURISDICTION
• 2 U.S. DEFENDANT [X] 3 FEDERAL QUESTION
IF DIVERSITY, INDICATE
Q4 DIVERSITY
CITIZENSHIP BELOW.
(U.S. NOT A PARTY)
(28 USC 1332, 1441)
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)
(Place an [X] in one box for Plaintiff and one box for Defendant)
PTF
DEF
CITIZEN OF THIS STATE
[ ]1
[ ]1
CITIZENOR SUBJECT OF A
PTF DEF
CITIZEN OF ANOTHER STATE
[]2
[]2
INCORPORATED or PRINCIPAL PLACE
[ ]3 [ ]3
FOREIGN COUNTRY
INCORPORATED afld PRINCIPAL PLACE
PTF
DEF
[ ]5
[ ]5
[]6
[]6
OF BUSINESS IN ANOTHER STATE
[]4[]4
FOREIGN NATION
OF BUSINESS IN THIS STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)
BLACKHEART RECORDS GROUP, INC., 636 Broadway, Suite1218, New York, New York 10022
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)
BLACKHEART CLOTHING COMPANY, LLC, PO Box 7059, Thousand Oaks, California 91359
HOT TOPIC, INC., 18305 E. San Jose Ave., City of Industry, California, 91748
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE
RESIDENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Checkone:
THIS ACTION SHOULD BE ASSIGNED TO:
Q WHITE PLAINS
|X| MANHATTAN
(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTS COMPLAINT.)
DATE 06/13/2013 SIGNATUREJ2f^rl^EYja£#ECORD
ADMITTED TO PRACTICE IN THIS DISTRICT
[ ] NO
M YES (DATE ADMITTED Mo. 03
RECEIPT #
2&^^ ^—
Attorney BarCode # OW-9469
Magistrate Judge is to be designated by the Clerk of the CouA />
.jon&BlS
Magistrate Judge
Ruby J. Krajick, Clerk of Court by
is so Designated.
Deputy Clerk, DATED
UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
.
Yr. 1998
13 CIV 4054
JUDGE COTE
Baker & Hostetler LLP
45 Rockefeller Plaza
New York, New York 10111
Telephone: (212) 589-4200
Facsimile: (212) 589-4201
Oren J. Warshavsky
Donna A. Tobin
Jessie A. Kuhn
CO
Attorneysfor PlaintiffBlackheart
Records Group, Inc.
cr
co
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
CD
BLACKHEART RECORDS GROUP, INC.
Civil Action No.
Plaintiff
- against HOT TOPIC, INC. AND BLACKHEART CLOTHING
COMPANY, LLC,
Defendants.
COMPLAINT AND JURY DEMAND
Plaintiff BLACKHEART RECORDS GROUP, INC. ("Blackheart"), through its
undersigned attorneys, Baker Hostetler, LLP, complain of defendants Hot Topic, Inc. ("Hot
Topic") and Blackheart Clothing Company, LLC ("BCCL"), as follows:
Nature of the Action
1.
This is a straightforward action for trademark infringement, dilution, unfair competition
and false advertising, all in violation of the laws of the United States and the State of New York.
Defendant Hot Topic, who previouslypurchased and distributed products—including clothing—
602303245
made by Blackheart and featuring Blackheart's famous owner, Rock N' Roll legend Joan Jett,
willfully and knowingly sought to co-optthe Blackheart name and trademark intending to profit
from consumer confusion, Blackheart's well-known brand and Jett's well-known persona.
Jurisdiction and Venue
2.
Blackheart's claims are predicated on the Trademark Act of 1946, as amended, 15 U.S.C.
§§ 1051-1141, and under the statutory and commonlaw of the State of New York. Subject
matterjurisdiction over this action is conferredupon this Court by 15 U.S.C. §1121 and 28
U.S.C. §§ 1331 and 1338 (a) and (b). This Court also has diversity jurisdiction under 28 U.S.C.
§ 1332 because Blackheartis a citizen of New York and Defendants are citizens of California
and Delaware and the amount of controversy exceeds $75,000, exclusive of interest and costs.
Additionally, the Court has supplemental jurisdiction over Blackheart's state-law claims under
28 U.S.C. § 1367.
3.
Venue in this District is proper under 28 U.S.C. § 1391 (b) and (c).
4.
This Court has personal jurisdiction over Defendants under New York Civil Practice Law
and Rules 301 and 302(a) because Defendants do business and solicit business in this District,
regularly solicit business in New York, offer goods under the infringing trademark to customers
in this District, Defendant Hot Topic is registered to do business in this District, and Blackheart
is being harmed in this District.
Parties
5.
Plaintiff Blackheart Records Group, Inc. ("Blackheart") is a corporation organized and
existing under the laws of the state of New York, with a principal place of business in the State
of New York. For all purposes herein, Blackheart is the successor in interest to Blackheart
Records, Inc. ("BRI"), and as used herein the term "Blackheart" shall be deemed to include BRI.
6.
Upon information and belief, Defendant Hot Topic, Inc. ("Hot Topic") is a corporation
organized and existing under the laws of California and is registered to do business in New York.
7.
Upon information and belief, Defendant Blackheart Clothing Company, LLC ("BCCL")
is a limited liabilitycompany organized and existing under the laws of Delaware.
Joan Jett, Kenneth Laguna and the Creation of Blackheart
8.
In 1973, at the age of 15, Joan Jett formed an all-female punk rock band called The
Runaways, whichalso featured well known musicians Cherie Currie and Lita Ford. The
Runaways roseto prominence as a punkrock band in the 1970s. The Runaways have beenthe
subject of a variety of books and movies, most recently a film called "The Runaways" featuring
Kristen Stewart as Jett and Dakota Fanning as Currie. Jett and Kenneth Laguna were executive
producers of that film.
9.
When The Runaways broke up, Jett worked and recorded with punk rock group The
Germs and members of The Sex Pistols.
10.
In the late 1970s, while working on a movie based on The Runaways, Jett met Kenneth
Laguna. Laguna, who was a performer or writer for over 50 Top-40 hits by 1972, worked with
and wrote music for recording artists such as Greg Kihn, Darlene Love, Bill Medley, and others.
Lagunaalso wrote music for and/or was a member of bands such as Tommy James & The
Shondelles and The Ohio Express.
11.
Joan Jett and Kenneth Laguna formed the musical group "Joan Jett and the Blackhearts."
The name Blackhearts was coined by Jett and Laguna for its meaning—"Blackheart" means
"loner" in Jamaican nautical lingo—and also for its symbol. The black heart was used to
symbolize Jett's heart, along with the black color most closely associated with her brand.
12.
Because of Jett's notoriety as a punk rock artist with The Runaways, every major record
label refused to sign or release the music of Joan Jett and the Blackhearts. After receiving
dozens ofrejections, Jett and Laguna started their own recording company and called it
"Blackheart Records."
13.
In 1984, Blackheart applied to register "Blackheart Records" with the United States
Patent and Trademark Office (the "USPTO"). The USPTO granted that application and issued
Registration No. 1,319,119 for "Blackheart Records," which has remained a federally registered
trademark since 1985. Registration No. 1,319,119 covers recorded music.
14.
In 2005, Blackheart applied to register "Blackheart Records Group" with the the USPTO.
The USPTO granted that application and issued Registration No. 3,210,496 (together with
Registration No. 1,319,119, the "Blackheart Registered Marks") for "Blackheart Records
Group," which has been a federally registered trademark since 2005. Registration No. 3,210,496
covers recorded music.
15.
Blackheart's first album—which was Jett's first album—had a picture of a black heart
next to Jett:
16.
Since the release of this album, the terms "Blackheart," "Blackhearts," "Blackheart
Records" and "Joan Jett and the Blackhearts," as well as the design element of a blackhearthas
continued to be used with products and services associated with Jett and Blackheart.
Continued Growth of Blackheart
17.
Joan Jettand the Blackhearts quickly became a partof the national consciousness, as they
had a string ofhits including Bad Reputation, I Love RockN' Roll, Crimson and Clover, I Hate
Myselffor Loving You, Do You Want to Touch Me, Light ofDay, Love Is All Around, and Little
Liar.
18.
Jett, often referred to as the "Queen of Rock N' Roll," is one of only two women
guitarists named on Rolling Stone's list ofthe top 100 guitarists ofall time.
19.
The Joan Jett and the Blackheart's recording of / Love Rock N' Roll was ranked by
Billboard Magazine as the 56th most popular song ofall time, and Bad Reputation was ranked the
29th besthard rock song of all time by VH1.
20.
Songs by Joan Jett and the Blackhearts have been featured inmajor motion pictures since
the 1980s, including films such as Light ofDay (inwhich Jett co-starred with Michael J. Fox),
Days ofThunder (featuring Tom Cruise), Flashdance, Charlie's Angels, Wayne's World 2,
Monster, Dazed &Confused, Striptease, Tank Girl, 10 Things I Hate About You, Shrek and more
recently, Bad Teacher, Easy A, Kick-Ass and Baby Mama.
21.
Songs by Joan Jett and the Blackhearts are featured as theme songs for television shows
and specials, including Freaks &Geeks, American Chopper, and Miami Ink. Their cover of
Love isAll Around (the theme song from The Mary Tyler Moore Show) became thetheme song
of the NCAA women's basketball tournament. Since 2006, the composition / Hate Myselffor
Loving You has been the theme song for NBC's Sunday Night Football.
22.
In 2000, Jett performed on Broadway in The Rocky Horror Show.
23.
Since 1980, all of the recordings by JoanJett and the Blackhearts have beenon the
Blackheart's label, Blackheart Records. After the first album, the commercial recordings were
released under the performing name "Joan Jett and the Blackhearts," with the following album
covers being demonstrative:
24.
Likewise, the "Blackheart Records" name and design were used on the recordings
featuring Joan Jett and the Blackhearts. This included instances even where the recordings were
distributed by larger companies, such as EPIC, CBS, and Warner Brothers:
25.
Since the 1980s, Blackheart has continuously and prominently used the name and
trademark "Blackheart" as a trademark in connection with music performances, and distributing
music and audiovisual works, such as vinyl records, cassette tapes, CDs and DVDs.
26.
Since the 1980s, Blackheart has used the name and trademark "Blackheart" in connection
with merchandise surrounding its artists, including tee shirts and other materials.
27.
Blackheart continues to use the Blackheart Registered Marks and the term "Blackheart"
and images of a black heart shape in a variety of ways and does so with long term and short term
projects, such as "Blackheart Records," "Blackheart Records Group," "Joan Jett and the
Blackhearts," "The Blackhearts," "Blackheart Clothing," "Blackheart Production," "Blackheart
Music," "Blackheart Distribution Group" (a corporation from 1992-1997), and "Blackheart
Jeans" (collectively, the "Blackheart Family of Marks"). The Blackheart Family of Marks also
includes stylized marks, including certain design elements—notably a heart, which is either solid
black, black with a white outline, or white with a black outline, such as those below:
•
I I and thejjy
nheaii
RECORDS
28.
Although Joan Jett and the Blackhearts has always been the best-known artist working
with Blackheart, in the 1990s, Blackheart produced, promoted and distributed the music of other
artists. The list of musicians that Blackheart produced, promoted and distributed music for
includes The Chemical Brothers, Metal Church, Big Daddy Kane, Professor Griff, The
8
Eyeliners, Girl in a Coma, The Vacancies, The Dollyrots and The Cute Leppers. Blackheart's
name and logo has been included on the products and promotional material for these bands.
29.
Besides the musical products, Blackheart's Family of Marks has been used in connection
with the promotion and distribution of related merchandise, including apparel,jewelry and
accessories. These are the natural outgrowth of the music industry. Further, Blackheart's
Familyof Marks has been featured on those products. Blackheart's Family of Marks also has
been used in connection with other projects with which it is affiliated, including the
aforementioned recent movie "The Runaways."
30.
For instance, Blackheart promotes and offers for sale clothing and accessories which both
feature the artists and projects with which it is affiliated, such as:
ura
31.
Blackheart also sells apparel that features the Blackheart Family of Marks including:
%
,»
"V;
V
i\?""T/
10
*V
loan'Jetji
Blackhearts
I
1
- *•. &L:" 4.J.- V..!.- C'SjS
'• f^v-;:-i:j
32.
In the eyes of the public, in connection with music and ancillary goods and services, the
word and trademark "Blackheart" has become inextricably intertwined with Blackheart, Joan Jett
and the Blackhearts, and Jett herself.
33.
Because of the extensive sales, unsolicited media coverage, advertising and promotion in
connection with a variety of goods and services of the Blackheart Family of Marks, and the
consistent use of the term "Blackheart," the Blackheart Family of Marks continues to be
associated with Blackheart, Jett, and Joan Jett and the Blackhearts. Third-party products include
11
apparel, promotional materials, books and even toys, such as a Hot Wheels tour bus, a Joan Jett
doll by Mattel (which has the Blackheart design on the doll's shirt), a tee shirt (which includes
the Blackheart design around the band name), and buttons:
12
34.
Due to the public's connection between Jett, Joan Jett and the Blackhearts, Blackheart,
and the Blackheart Family of Marks, Blackheart is continually approached with licensing
opportunities for the term "Blackheart." Lucky Brand, Junk Food Clothing, Worn Free, Trunk
Limited, Hysteric Glamour and others have contracted with Blackheart Records to produce and
distribute apparel, accessories, and jewelry featuring the Blackheart Family of Marks.
35.
The aforementioned apparel, accessories, and jewelry, use the design and word elements
present in the Blackheart Family of Marks, such as the example below:
36.
When Lucky Brand created charm bracelets using the Blackheart Family of Marks, the
bracelets included charms with Jett's picture, a black heart charm, and a charm etched with
"Blackhearts," such as the examples below:
13
Hot Topic's Purchases and Business Discussions with Blackheart
37.
Upon information and belief, Hot Topic has been involved in the retail business since the
1990s.
38.
Upon information and belief, one of Hot Topic's main businesses has been retail sales of
music and music related apparel, such as concert tee shirts.
39.
From time to time throughout the 1990s, Hot Topic distributed music and music related
apparel that it purchased from Blackheart and/or Blackheart's business partners. These products
included certain of Blackheart's Joan Jett and the Blackhearts albums shown above. These
products also included clothing, such as concert and band tee shirts, which had the Joan Jett and
the Blackhearts name and the Blackheart Family of Marks.
40.
On or around January 2010, Hot Topic contracted with one of Blackheart's licensees,
Junk Food Clothing, to sell a version of the vintage tee shirt featured below:
14
41.
On or around February2010, Hot Topic approached Blackheartto design and distribute
merchandise featuring the Blackheart Family of Marks.
42.
Hot Topic subsequently contracted with Lagunatic Music & Filmworks, Inc.
("Lagunatic"), a licensee of Blackheart also owned by Jett and Laguna, for the production and
distribution of Blackheart merchandise, including three orders of Blackheart's tee shirts.
43.
Notably, when deciding on whichof the Blackheart Familyof Marks to use for this
merchandise, a representative of Hot Topic wrote, "Exclusivity is so important to us and our
business, so we have to make sure that we are only placing things that we can have true
ownership on." Hot Topic knew of the images proposed by Blackheart on a tee shirt in Urban
Outfitters and wanted to differentiate its Jett-inspired apparel from the competition.
44.
As of April 2013, Hot Topic continued to feature at least two Jett-inspired tee shirts on
their website:
HOT TOPIC
LOG IN/JOIN
Cash In! Spend your HotCash and get $15off your $30 purchase! Details
NEW ARRIVALS
T-SHIRTS DENIM ACCESSORIES SHOES MUSIC POP CULTURE SALE
FEATURES BLACKHEART
HOME > CLOTHING
Share This Product: R $*< + fc<k
JOAN JETT GUITAR T-SHIRT
Wasl^l^JJp Now: $6.98
This T-shirt features Joan Jett rockin' her Gibson Melody Maker mid-air!
Full front screen has a halftone image that is accented with hints of red
on lips, wrist, and feet.
• 100% cotton
• Wash warm, dry low
• Imported
• Listed in men's sizes
•
SKU: 901745
SWEATSHIRTS
UNDIES/BRAS
ONLINE EXCLUSIVE
NEW ARRIVALS
You Might Also Lil
15
HOT TOPIC
LOG IN I JOIN
Cath In! Spend toim HoiCmtt and gat $IS oH»ow $» pwchaae! Ofjulh
NEW ARRIVALS
T-SHIRTS
DENIM ACCESSORIES SHOES MUSIC POP CULTURE
SALE
FEATURES BLACKHEART
Siwami Product: G ' ?a*t*«-
:wsv Alt, HUSK
WORN FREE JOAN JETT BORN TO
BE BAD GIRLS T-SHIRT
WaOSOOJP Now: »30.98
Jam J#tt was bom to b# b»S Ttfej repfccaof a T-$M *M wo?»<n
1ST! by Worn Ftw » mada oSth* t«8*« Dr»w($h«d and Jlnun*
t4<i*ycotton fo* J tawfeng M and wntaoa *mI Inefcidtf photo tticfe«K
t09% cotton Wath caW Oty to* MadamUSA
Ustaa1 « j*»ofs' *««*
OUTERWEAR
SOLD OUT
UNDIES BRAS
ROCKABILLY
STFAMPUUK
NEW ARRr.'ALS
45.
Upon information and belief, Hot Topic previously sold tee shirts that appearedas
follows:
HOTTOPIC
16
46.
Likewise, Hot Topic still advertises (out of stock) vinyl copies of the Greatest Hits of
Joan Jett and the Blackhearts, which features the Blackheart Family of Marks:
Defendants' Infringement
47.
After experimenting with legitimate and illegitimate items that use and/or are sold under
the Blackheart Family of Marks, Defendants commenced their own line of clothing under their
own new "Blackheart" brand (the "Infringing Brand").
17
48.
Upon information and belief, Defendants' actions were geared towards trading off on the
substantial goodwill associated with Blackheart, using the tag-line "Lingerie for Girls Who Rock
& Roll." Thus, not only do Defendants utilize the "Blackheart" name in the Infringing Brand,
they do so while invoking the image and persona of Joan Jett, who, as stated above, is referred to
as "The Queen of Rock N' Roll" and whose best known recording is "I Love Rock N' Roll."
49.
Upon information and belief, Defendants continue to advertise the Infringing Brand in
connection with clothing featuring musicians—the same way Blackheart does. Upon
information and belief, Defendants have used internet advertisements similar to the one below:
BLACKHE^RJ
LINGERIE FOR GIRIS WHO ROCK ft ROLL
SHOP tUCKHEAW
MEW MORES NOW OPEN
CopyrightHotTopic©2013 AllRights Reserved
50.
The Defendants knew of Blackheart Records' ownership of the Blackheart Family of
Marks based on their prior business dealings with Blackheart.
51.
Upon information and belief, Defendants intentionally named, designed and promoted the
Infringing Brand to trade off on the goodwill established by Blackheart in connection with the
Blackheart Family of Marks and Jett's iconic female rock star image.
18
Confusion Created by the Infringing Brand
52.
Even before the Infringing Brand was officially launched, the public confused the
Infringing Brand as being associated with and/or sponsored by Jett and the Blackheart Family of
Marks.
53.
On November 3, 2012, the website "ohnotheydidn't.com" featured an article on the soon-
to-launch Infringing Brand. One of the website's registered users commented: "When I read
'Blackheart,' I got excited for a Joan Jett and the Blackhearts."
54.
Blackheart's existing and potential customers know that Blackheart uses the Blackheart
Family of Marks in connection with clothing and accessories.
55.
Various individuals have contacted Blackheart to ask whether Blackheart and/or Jett is
affiliated with and/or sponsoring the Infringing Brand.
56.
Upon information and belief, members of the public are likely to be confused that the
Infringing Brand is associated with, and/or sponsored by Blackheart.
57.
The public and professional confusion between Blackheart's Family of Marks and the
Infringing Brand was foreseeable and is understandable. Both use the same name: "Blackheart."
Both associate the same logo with their name: a black heart. Both sell merchandise, including
clothing, jewelry, and accessories featuring the formative "Blackheart" and the black heart logo.
Both are associated with music—and rock n' roll in particular—as well as a female rocker
image. Jett is the "Queen of Rock n' Roll," and the Infringing Brand is marketed to "Girls who
Rock & Roll," targeting the youth market.
58.
Defendants promote and sell the goods in connection with the Infringing Brand to
customers familiar with, and that are actual purchasers of, the goods and services sold and
promoted by Blackheart in connection with the Blackheart Family of Marks.
19
COUNTI
Federal Trademark Infringement
59.
To the extent applicable, Blackheart incorporates the allegations hereinabove as though
fully set forth herein.
60.
Defendants' offer to sell, sale, distribution, and advertisement of products under the
Infringing Brand violates Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
61.
The Blackheart Registered Marks are federally registered, and are entitled to
protection under both federal and common law.
62.
Defendants' unauthorized use of the Infringing Brand is likely to cause confusion, to
cause mistake, and to deceive customers and potential customers as to the source or origin of
Defendants' goods, and to cause them to mistakenly believe that Defendants' goods are
Blackheart's goods, or are otherwise affiliated, connected, or associated with Blackheart in
violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
63.
Defendants' unauthorized use of the Infringing Brand has caused, and unless
enjoined, will continue to cause substantial and irreparable harm to Blackheart, including
without limitation, substantial and irreparable harm to the goodwill and reputation associated
with the Blackheart Registered Marks.
64.
Upon information and belief, Defendants' infringement of the Blackheart Registered
Marks is willful and reflects Defendants' intent to trade on the goodwill and strong brand
recognition associated with the Blackheart Registered Marks.
65.
Blackheart is entitled to injunctive relief, and also entitled to recover its costs, reasonable
attorneys' fees, and Defendants' profits under 15 U.S.C. §§ 1114, 1116, 1117.
20
countn
False Designation of Origin and Unfair Competition
66.
To the extent applicable, Blackheart incorporates the allegations hereinabove as though
fully set forth herein.
67.
Defendants' offer to sell, sale, distribution, and advertisement of goods under the
Infringing Brand constitutes unfair competition and false designation of origin in violation of
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
68.
The Blackheart Family of Marks, including the Blackheart Registered Marks, are
entitled to protection under both federal and common law.
69.
Defendants' unauthorized use of the Infringing Brand constitutes unfair
competition and the use of a false designation of origin that is likely to cause confusion and
deceive consumers as to the impression that Defendants' products are manufactured by,
authorized by, or otherwise associated or affiliated with Blackheart in violation of Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
70.
Defendants' unauthorized use of the Blackheart Family of Marks has caused, and
unless enjoined, will continue to cause substantial and irreparable injury to Blackheart,
including without limitation, substantial and irreparable injury to the goodwill and reputation
associated with the Blackheart Family of Marks.
71.
Upon information and belief, Defendants' conduct complained of herein is willful and
reflects Defendants' intent to trade on the goodwill and strong brand recognition
associated with the Blackheart Family of Marks.
21
countm
Violation of New York General Business Law Article 24 § 360
72.
To the extent applicable, Blackheart incorporates the allegations hereinabove as though
fully set forth herein.
73.
Without Blackheart's authorization or consent, and having knowledge of Blackheart's
well-known, prior rights in the Blackheart Family of Marks, Defendants manufactured,
distributed, promoted, offered for sale and sold to the public goods under the Infringing Brand.
74.
Defendants' unauthorized offer to sell, sale, distribution, and advertisement of
goods bearing the Blackheart name violates Section 360-L of the New York General
Business Law.
75.
The Blackheart Family of Marks is entitled to protection under both federal and
New York common law.
76.
Defendants' unauthorized use of the Infringing Brand is likely to confuse and deceive
consumers as to Blackheart's sponsorship or approval of Defendants' goods by creating the
false and misleading impression that the Infringing Brand is authorized, licensed or otherwise
associated with Blackheart.
77.
Defendants' unauthorized use of the Blackheart Family of Marks, unless enjoined, will
cause substantial and irreparable injury to Blackheart for which Blackheart has no adequate
remedy at law, including at least substantial and irreparable injury to the goodwill and
reputation associated with the Blackheart Family of Marks.
78.
Defendants' unauthorized use of the Infringing Brand has diluted and damaged the
distinctiveness of Blackheart's famous Family of Marks and has caused, and unless enjoined,
will continue to cause substantial and irreparable injury to Blackheart for which it has no
22
adequate remedy at law, including substantial and irreparable injury to the goodwill and
reputation associated with the Blackheart Family of Marks.
COUNT IV
Trademark Infringement in Violation of New York Common Law
79.
To the extent applicable, Blackheart incorporates the allegations hereinabove as though
fully set forth herein.
80.
Defendants' offer to sell, sale, distribution, and advertisement of goods under the
Infringing Brand constitutes common law trademark infringement.
81.
The Blackheart Family of Marks includes federally registered trademarks as well as
unregistered marks, and is used in New York and elsewhere extensively, and is entitled to
protection under both federal law and New York common law.
82.
Defendants' unauthorized use of the Infringing Brand is likely to cause confusion and
deceive consumers as to the origin, sponsorship, or approval of Defendants' products by
creating the false and misleading impression that Defendants' products are manufactured
by, authorized by, or otherwise associated with Blackheart.
83.
Defendants' unauthorized use of the Infringing Brand has caused, and unless
enjoined, will continue to cause substantial and irreparable injury to Blackheart for which
it has no adequate remedy at law, including substantial and irreparable injury to the goodwill
and reputation associated with the Blackheart Family of Marks.
84.
Upon information and belief, Defendants' infringement of the Blackheart Family of
Marks is willful and reflects Defendants' intent to trade on the goodwill and strong
brand recognition associated with the Blackheart Family of Marks.
23
85.
Upon information and belief, Defendants' infringement of the Blackheart Family of
Marks has been deliberate and calculated, having previously distributed, advertised, and
promoted Blackheart's products and unauthorized versions of Blackheart's products,
resulting in confusion and deception among consumers as to the origin, sponsorship, or
approval of Defendants' products, and resulting in damage to Blackheart.
86.
Defendants' acts constitute trademark infringement in violation of the common law
of the State of New York.
COUNT V
Unfair Competition in Violation of New York Common Law
87.
To the extent applicable, Blackheart incorporates the allegations hereinabove as though
fully set forth herein.
88.
With knowledge of the fame and distinctiveness of the Blackheart Family of Marks,
Defendants intended to and did trade on the goodwill and strong brand recognition
associated with the Blackheart Family of Marks by manufacturing, distributing, promoting
and selling products using the Blackheart name under the Infringing Brand.
89.
Defendants' acts as alleged herein are likely to cause confusion, mistake, and
deception to consumers as to the affiliation, connection, or association of Defendants with
Blackheart, and as to the origin, sponsorship, or approval of Defendants' products under the
Infringing Brand, all to the detriment and damage of Blackheart and to the unjust enrichment
of Defendants.
90.
Defendants' unauthorized use of the Infringing Brand, unless enjoined, will cause
substantial and irreparable injury to Blackheart for which it has no adequate remedy at law,
24
including at least substantial and irreparable injury to the goodwill and reputation associated
with the Blackheart Family of Marks.
PRAYER FOR RELIEF
WHEREFORE, Blackheart prays for relief, and respectfully request that the Court:
a)
enjoin Defendants, their agents, servants, employees, and affiliates from engaging in
trademark infringement, unfair competition, and passing off in each state in which the
Defendants do business;
b)
require Defendants, their agents, servants, employees, affiliates, licensees, and assignees
to account for all sums collected because of manufacturing, distributing, selling and/or otherwise
exploiting the trademarks at issue herein;
c)
award Blackheart its attorneys' fees, taxable costs and disbursements of this action,
under, in light of Defendants' willful conduct; and
d)
award Blackheart any further relief as justice may require, or as this Court deems
necessary.
25
DEMAND FOR JURY TRIAL
Plaintiff Blackheart Records Group, Inc., requests a jury trial for all claims.
Respectfully submitted,
BAKER HOSTETLER, LLP
Dated:
June 12,2013
New York, New York
Oren J. Warshavsky
Email: [email protected]
Donna A. Tobin
Email: [email protected]
Jessie A. Kuhn
Email: [email protected]
45 Rockefeller Plaza
New York, New York 10111
Telephone: (212) 589-4624
Facsimile: (212) 589-4201
Attorneysfor Plaintiff
26
Blackheart Records Group, Inc. v. Hot Topic, Inc. et al, Docket No. 1:13-cv-04054 (S.D.N.Y. Jun 13, 2013), Court Docket
General Information
Case Name
Blackheart Records Group, Inc. v. Hot Topic, Inc. et al
Docket Number
1:13-cv-04054
Court
United States District Court for the Southern District of New
York
Primary Date
2013-06-13 00:00:00
Nature of Suit
Property Rights: Trademark
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