alibaba trademark case

111 Pages·2015·8.62 MB·English

1
Brent H. Blakely (SBN 157292)
2 Michael Marchand (SBN 281080)
BLAKELY LAW GROUP
3
1334 Parkview Avenue, Suite 280
Manhattan Beach, California 90266
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Telephone: [phone]
5 Facsimile: [phone]

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Attorneys for Plaintiff Spy Optic Inc .
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8 UNITED STATES DISTRICT COURT
9 SOUTHERN DISTRICT OF CALIFORNIA
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SPY OPTIC INC., a California Case No. 3:14-cv-4527 EMC
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corporation,
12 PLAINTIFF'S COMPLAINT FOR
Plaintiff DAMAGES AND EQUITABLE RELIEF
13

14 vs.
1. DIRECT AND CONTRIBUTORY

15 FEDERAL TRADEMARK
ALIBABA.COM, INC., a Delaware
COUNTERFEITING AND
16 Corporation; ALIBABA.COM HONG
INFRINGEMENT
KONG LIMITED, a Hong Kong
17
Corporation; ALI BABA GROUP
2. FALSE ADVERTISING
18 HOLDING LIMITED, a Chinese

Corporation, and DOES 1 through 100,
19 3. FEDERAL UNFAIR COMPETITION
inclusive

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4. COMMON LAW TRADEMARK
Defendants
21 INFRINGEMENT

22
5. CALIFORNIA UNFAIR
23 COMPETITION
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Plaintiff, Spy Optic Inc., alleges and states as follows:
25
COMPLAINT
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1. Plaintiff, Spy Optic Inc. (hereinafter “Plaintiff”) is incorporated under the
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laws of the state of California with its principal place of business at 2070 Las Palmas
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Drive, Carlsbad, California 92011.
1
COMPLAINT FOR DAMAGES
1 2. Upon information and belief, Defendant Alibaba.com, Inc. (hereinafter
2 “AI”) is a Delaware Corporation with its principle place of business located at 3945
3 Freedom Circle # 600, Santa Clara, CA 95054.
4 3. Upon information and belief, Defendant Alibaba.com Hong Kong Limited
5 (hereinafter “AHKL”) is a Hong Kong corporation with its principal place of business
6 at Room 2403-5, 25/F Jubilee Centre, 18 Fenwick Street, Wanchai, Hong Kong.
7 4. Upon information and belief, Defendant Alibaba Group Holding Limited
8 (hereinafter, "AGHL") is a Chinese corporation with its principal place of business at
9 969 West Wen Yi Road Yu Hang District Hangzhou, 311121, China. AI, AHKL and
10 AGHL are hereinafter collectively referred to as “Alibaba.”
11 5. Upon information and belief, Alibaba owns, controls and/or operates a
12 well-known network of Internet websites, including, but not limited to, an international
13 e-commerce business to business website connecting sellers to buyers located at
14 www.alibaba.com; an e-commerce marketplace designed for buyers seeking smaller
15 quantities of goods located at www.aliexpress.com; a Chinese e-commerce
16 marketplace for domestic trade in China located at www.1688.com; a Japanese e-
17 commerce marketplace for trade to and from Japan located at www.alibaba.co.jp, and
18 an online retail website in China located at www.taobao.com.
19 6. Upon information and belief, the website www.alibaba.com (the “Alibaba
20 Website”) is an English-language business-to-business marketplace designed to
21 connect buyers and sellers of a wide variety of products throughout the world.
22 7. Upon information and belief, the website located at www.aliexpress.com
23 (the “AliExpress Website”) connects wholesale and other buyers to sellers in a wide
24 variety of consumer products for express fulfillment and shipment.
25 8. The true names and capacities, whether individual, corporate, associate, or
26 otherwise of DOES 1-100, inclusive, are unknown to Plaintiff, who therefore sues said
27 DOES 1-100 by such fictitious names. Plaintiff will seek leave of this Court to amend
28 this Complaint to include their proper names and capacities when the same has been
2
COMPLAINT FOR DAMAGES
1 ascertained (Defendants AI, AHKL and the DOE Defendants are hereinafter
2 collectively referred to as the “Defendants”).
3 9. Plaintiff is informed and believes, and on that basis alleges, that
4 Defendants and each fictitiously named Defendant participated in and is in some
5 manner responsible for the acts described in this Complaint and the damage resulting
6 therefrom.
7 10. Plaintiff is informed and believes, and on that basis alleges, that the
8 Defendants have acted in concert and participation with each other concerning each of
9 the claims in this Complaint.
10 11. Defendants’ concerted actions and participation concerning these claims
11 constitutes a conspiracy to unfairly compete with Plaintiff and to violate Plaintiff’s
12 rights as alleged herein.
13 12. Plaintiff is informed and believes, and on that basis alleges, that the
14 Defendants empowered to act as the agent, servant and/or employee of each of the
15 other Defendants, and that all of the acts alleged to have been done by each of them
16 were authorized, approved and/or ratified by each of the other Defendants.
17 JURISDICTION AND VENUE
18 13. This Court has subject matter jurisdiction over Plaintiff’s claims for
19 direct and contributory trademark infringement, direct and contributory trademark
20 counterfeiting, false advertising, unfair competition and false designation of origin
21 pursuant to 28 U.S.C. §§ 1331 and 1338(a) as a case arising under the Lanham Act, 15
22 U.S.C. §§ 1051 et seq., and supplemental jurisdiction over the claims for state law
23 trademark infringement and unfair competition and unjust enrichment pursuant to 28
24 U.S.C. §§ 1338(b) and 1367(a) because those claims are joined with substantially
25 related federal claims.
26 14. Upon information and belief, Alibaba does business throughout the world,
27 including within this judicial district.
28 15. Upon information and belief, Alibaba markets and directs its many
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COMPLAINT FOR DAMAGES
1 websites to the United States and upon information and belief is expanding its presence
2 in the United States, including within this judicial district.
3 16. Upon information and belief, individual(s) and entity(ies) throughout the
4 United States, including within this judicial district, have used and will continue to use
5 the Alibaba Website and the AliExpress Website to buy and sell goods.
6 17. Any user of the Internet, including those located within this judicial
7 district, can access the Alibaba Website and the AliExpress Website in order to browse
8 for goods, purchase goods and contact suppliers of goods.
9 18. Upon information and belief the Alibaba Website and the AliExpress
10 Website allow users to purchase goods from suppliers that are located within this
11 judicial district.
12 19. Upon information and belief, at all relevant times, the Alibaba Website
13 and the AliExpress Website allow buyers and sellers throughout the United States,
14 including those located within this judicial district, to create personalized accounts for
15 use on the Alibaba Website and the AliExpress Website.
16 20. Alibaba's actions in this judicial district, as set forth herein, have harmed
17 and will undoubtedly do further harm to Plaintiff, a California corporation doing
18 business within this judicial district.
19 21. This Court has personal jurisdiction over Alibaba by virtue of its doing
20 business and substantial contacts within this judicial district, along with its commission
21 of tortious and/or infringing acts inside and outside of this judicial district, that have an
22 effect within this judicial district.
23 22. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391.
24 BACKGROUND OF THE CONTROVERSY
25 A. Plaintiff’s Business and Trademarks
26 23. Plaintiff is and has for many years been engaged in the extensive
27 development, advertising, and marketing of sunglasses, sunglass products, wearing
28 apparel and sporting goods in intrastate and interstate commerce. In connection
4
COMPLAINT FOR DAMAGES
1 therewith, Plaintiff uses and has previously used in interstate commerce and in the
2 State of California the trademarks SPY, SPY OPTIC and a cross logo, among others,
3 in connection with its goods and/or services and Plaintiff is the owner of such marks.
4 24. The United States Patent and Trademark Office on June 18, 1996 granted
5 a federal trademark registration to Plaintiff for the trademark “SPY” for glasses and
6 sunglasses as Registration No. 1,981,513. A copy of this trademark registration is
7 attached as Exhibit "1." Plaintiff is the owner of the mark and registration, and this
8 registration is incontestable pursuant to 15 U.S.C. § 1065.
9 25. The United States Patent and Trademark Office on October 27, 2009
10 granted a federal trademark registration to Plaintiff for the trademark “SPY” for bags,
11 namely, backpacks and sports bags as Registration No. 3,700,605. A copy of this
12 trademark registration is attached as Exhibit “2”. Plaintiff is the owner of the mark
13 and registration.
14 26. The United States Patent and Trademark Office on March 13, 2007
15 granted a federal trademark registration to Plaintiff for the trademark “SPYOPTIC” for
16 wearing apparel, namely t-shirts, shirts, sweatshirts, pants, shorts, jackets, hats, visors,
17 caps, belts and shoes as Registration No. 3,218,701. A copy of this trademark
18 registration is attached as Exhibit “3”. Plaintiff is the owner of the mark and the
19 registration, and the registration is incontestable pursuant to 15 U.S.C. § 1065.
20 27. The United States Patent and Trademark Office on February 16, 2010
21 granted a federal trademark registration to Plaintiff for the trademark “SPY” for retail
22 store services and on-line retail store services featuring sunglasses, sports goggles, and
23 wearing apparel as Registration No. 3,750,166. A copy of this trademark registration
24 is attached as Exhibit “4”. Plaintiff is the owner of the mark and registration.
25 28. The United States Patent and Trademark Office on June 30, 2009 granted
26 a federal trademark registration to Plaintiff for the trademark “SPYOPTIC” for
27 sunglasses and sports goggles as Registration No. 3,648,121. A copy of this trademark
28 registration is attached as Exhibit “5”. Plaintiff is the owner of the mark and
5
COMPLAINT FOR DAMAGES
1 registration.
2 29. The United States Patent and Trademark Office on July 15, 2008 granted
3 a federal trademark registration to Plaintiff as Registration No. 3,468,936 for the cross
4 logo, shown below:
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7
8
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for bags, namely backpacks and sports bags, and for wearing apparel, namely t-shirts,
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shirts, sweatshirts, pants, shorts, jackets, hats, visors, caps, belts and shoes. A copy of
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this trademark registration is attached as Exhibit “6”. Plaintiff is the owner of the
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mark and the registration, and the registration is incontestable pursuant to 15 U.S.C. §
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1065.
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30. The United States Patent and Trademark Office on May 12, 1998
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granted a federal trademark registration to Plaintiff as Registration No. 2,157,268 for
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the cross logo shown below:
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19

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for sunglasses. A copy of such trademark registration is attached as Exhibit “7”.
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Plaintiff is the owner of the mark and the registration, and the registration is
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incontestable pursuant to 15 U.S.C. § 1065. (The trademarks as shown in Exhibits 1-7
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are hereinafter collectively referred to as the “SPY Trademarks”).
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31. Plaintiff owns and has used and continues to use the SPY Trademarks in
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connection with its extensive development, advertising, and marketing of sunglasses,
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sunglass products, wearing apparel and sporting goods since at least as early as the
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dates specified in the registrations of the Spy Trademarks. Plaintiff’s SPY Trademarks
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6
COMPLAINT FOR DAMAGES
1 and its right to utilize the SPY Trademarks in connection with its extensive
2 development, advertising, and marketing of sunglasses, sunglass products, wearing
3 apparel and sporting goods have become incontestable with respect to registration Nos.
4 1,986,513 (Exhibit 1), 3,218,701 (Exhibit 3), 3,468,936 (Exhibit 6) and 2,157,268
5 (Exhibit 7).
6 32. Plaintiff has expended substantial sums of money in advertising and
7 promoting its goods under the SPY Trademarks using Plaintiff’s website,
8 www.spyoptic.com (hereinafter “Plaintiff’s Website”). A printout from a portion of
9 Plaintiff’s Website is attached hereto as Exhibit "8".
10 33. Plaintiff packages its sunglasses, sunglass products, wearing apparel and
11 sporting goods under the SPY Trademarks with distinctive labels and graphics
12 (hereinafter “the Spy packaging”) used to further market and promote Plaintiff’s
13 products, as well as stickers available for purchase and/or included with the point of
14 sale of these products (hereinafter “the Spy stickers”). Photographs of examples of
15 packaging for Plaintiff’s products sold under the SPY Trademarks are attached hereto
16 as Exhibit “9.”
17 34. In addition to the Spy Trademarks, Plaintiff has sold numerous products
18 with distinctive product names including, but not limited to, Helm, Flynn, Touring,
19 Fold Blok, Murena, Discord, Honey and Farrah (hereinafter referred to as “Spy
20 Styles”).
21 35. As a consequence of Plaintiff’s advertising and use of the SPY
22 Trademarks, Spy Packaging and Spy Styles, these marks, packaging and product styles
23 have become source identifiers and/or have developed secondary meaning identifying
24 the business operated by Plaintiff.
25 B. The Alibaba and AliExpress Websites and Alibaba's Infringing Acts
26 36. Defendants use the Spy Trademark, Spy Packaging, Spy Styles and
27 product depictions on its websites in a manner which falsely indicates that the
28 suppliers on the Alibaba and other websites are authorized sellers of genuine Spy
7
COMPLAINT FOR DAMAGES
1 products or that Plaintiff has in some manner endorsed the sale of these products.
2 37. On The Alibaba Website, users are presented with a search box for
3 searching for products. Upon entering, for example, the term “Spy Optic,” a series of
4 listings appear which, in many instances, include unauthorized uses of the Spy
5 Trademarks suggesting that the products are authorized by Spy. Many of these listings
6 are for counterfeit Spy merchandise. An example of one such listing includes a screen
7 capture of a webpage attached hereto as “Exhibit 10” showing counterfeit
8 merchandise, where the Spy Trademarks are shown on the product with the product
9 details with a reference to “Spy Optic Sunglasses”, amongst others.
10 38. At the bottom of the webpage as shown in Exhibit 10, in addition to the
11 offending listing, content is generated that utilizes the Spy Trademarks, which upon
12 information and belief is generated by Alibaba’s website. For example, under the
13 heading “Related Searches”, there are references to “spy optic sunglasses” and “spy
14 snow goggles.”
15 39. In addition, a separate heading titled “You may also be interested in:,”
16 includes references to “spy sunglasses”, “spy sunglasses mirror” and “sunglasses 2013
17 spy”. Included therein is a drop down menu for “View more”, which links to
18 additional Alibaba website generated content as shown, for example, at a different
19 location on the Alibaba Website as shown in Exhibit 11, which is attached hereto. The
20 Spy Trademarks appear in a category listing “spy optic sunglasses Manufactures:”
21 which include links for “spy sunglasses Manufacturers”, “spy sunglasses mirror
22 Manufacturers”, and “sunglasses 2013 spy Manufactures.” Other category listings
23 include “China Spy optic sunglasses,” “spy optic sunglasses Promotion,” and “spy
24 optic sunglasses wholesalers.” The link “spy sunglasses Manufacturers” directs the
25 user to an Alibaba generated listing page referencing thousands of products and
26 numerous suppliers. Attached hereto as Exhibit 12 is a screen download of the first
27 page of suppliers, most of which, if not all, appear to be listed with “Qualification
28 Proof” as verified “Gold Suppliers.” Upon information and belief, the information
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COMPLAINT FOR DAMAGES
1 page describing verification on the Alibaba.com Website states “The verification of
2 suppliers on Alibaba.com serves to safeguard buyers by ensuring suppliers are genuine
3 and legitimate companies… A&V Checked suppliers are Gold Suppliers who have
4 passed authentication and verification inspection by Alibaba.com… .” Attached hereto
5 as Exhibit 13 is the information page describing verification on Alibaba.com. As
6 such, Alibaba is leading users to believe that Alibaba has vetted certain suppliers, and
7 that this vetting process ensures that vetted suppliers provide authentic and genuine
8 products, when in fact, upon information and belief, many of the identified “Gold
9 Suppliers” are providing counterfeit merchandise that include Plaintiff’s Spy
10 Trademarks. In addition, upon information and belief, Defendants’ verification of the
11 “Gold Suppliers” places Defendants in the position of a principal over the Gold
12 Suppliers as their agents, and therefor ratify the tortious activities of the Gold
13 Suppliers by virtue of their knowledge of the infringing activity of the Gold Suppliers
14 while retaining the benefits of their membership of the Gold Suppliers.
15 40. As a further example, attached is a website printout at “Exhibit 14A” for
16 the Alibaba.com generated link http://www.alibaba.com/corporations/spy_ken_
17 block.html that directs the users to a listing of suppliers, of which most, if not all, are
18 listed as “Gold Suppliers”. Upon information and belief, many of the listings offer
19 counterfeit goods, or are otherwise using the Spy Trademarks in an unauthorized
20 manner. As such, Alibaba is leading users to believe that Alibaba has vetted the listed
21 suppliers and that such suppliers provide authentic and genuine products authorized by
22 Plaintiff, when in fact, upon information and belief, many of the identified “Gold
23 Suppliers” are providing counterfeit merchandise that include Plaintiff’s Spy
24 Trademarks. In addition, attached as “Exhibit 14B” is a printout of the first page of
25 the “viewsource” code of the website showing the use of keywords “Spy Ken Block,
26 Spy Ken Block Manufacturers, Spy Ken Block Suppliers, Spy Ken Block Suppliers
27 Directory.” As such, Alibaba is using the Spy Trademarks and the name “Ken Block”
28 to direct search engines to this listing of suppliers that are not authorized to use the Spy
9
COMPLAINT FOR DAMAGES
1 Trademarks, many of which are selling counterfeit products. In addition, attached as
2 “Exhibit 14C” is a product listing for one of the suppliers listed in Exhibit 14A
3 demonstrating what appears to be a listing of counterfeit merchandise, unauthorized
4 use of the Spy Trademarks, copying of graphics of Plaintiff, and the use of the name
5 and likeness of Ken Block, all of which together falsely suggest that the products are
6 authorized products, or are otherwise endorsed when they are not.
7 41. In reference to the listings of Exhibit 11, the link “spy sunglasses
8 Manufacturers” may also direct the user to an Alibaba generated listing page at the
9 website subdirectory http://www.alibaba.com/spy-sunglasses-manufacturers.html. The
10 “view page source” content on the webpage of Exhibit 12, upon information and
11 belief, includes html code that contains the Spy Trademarks in the keywords and meta
12 tags of the website, including but not limited to “Spy Sunglasses, Spy Sunglasses
13 Manufacturers, Spy Sunglasses Suppliers, Spy Sunglasses Exporters, Spy Sunglasses
14 Manufacturing Companies, Spy Sunglasses Traders, Spy Sunglasses Wholesalers and
15 Spy Sunglasses Producers." See “Exhibit 15” for a printout of the first page of the
16 “view page source” content which, upon information and belief, is associated with the
17 listing of Exhibit 12. As such, Alibaba appears to be purposefully directing search
18 engines to the http://www.alibaba.com/spy-sunglasses-manufacturers.html landing
19 page using the Spy Trademarks, falsely suggesting that the listed manufacturers are
20 selling authorized Spy Optic merchandise of Plaintiff. This webpage promotes
21 counterfeit Spy Sunglasses offered by “Gold Suppliers” which claim to have been
22 vetted by Alibaba, whose endorsement suggests to prospective consumers that the
23 sunglasses offered by these suppliers are genuine and authentic Spy products. Upon
24 information and belief, Alibaba also uses the Spy Trademarks in the meta data of other
25 landing pages on The Alibaba Website, which include, but are not limited to, a
26 “showroom” at www.alibaba.com/showroom/spy-sunglasses.html; “products” at
27 www.alibaba.com/products/spy_sunglasses.html; and “corporations” at
28 http://www.alibaba.com/corporations/spy_sunglasses.html. Upon information and
10
COMPLAINT FOR DAMAGES