Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc. et al, No. 5:2007cv03952 - Document 64 (N.D. Cal. 2008)

Court Description: MOTION for Leave to File a First Amended Complaint; Declaration in Support filed by Louis Vuitton Malletier, S.A.. Motion Hearing set for 9/8/2008 09:00 AM in Courtroom 8, 4th Floor, San Jose. (Attachments: # 1 PROPOSED ORDER GRANTING PLAINTIFF LEAVE TO FILE A FIRST AMENDED COMPLAINT, # 2 FIRST AMENDED COMPLAINT FOR: CONTRIBUTORY AND VICARIOUS TRADEMARK INFRINGEMENT; CONTRIBUTORY AND VICARIOUS COPYRIGHT INFRINGEMENT)(Coombs, J.) (Filed on 7/15/2008)
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1 2 3 4 5 6 7 J. Andrew Coombs (SBN 123881) Annie S. Wang (SBN 243027) J. Andrew Coombs, A Prof. Corp. 517 E. Wilson Ave., Suite 202 Glendale, California 91206 Telephone: (818) 500-3200 Facsimile: (818) 500-3201 andy@coombspc.com annie@coombspc.com Attorneys for Plaintiff Louis Vuitton Malletier, S.A. 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA (SAN JOSE) 10 11 Louis Vuitton Malletier, S.A., Plaintiff, 12 13 14 v. Akanoc Solutions, Inc., et al. Defendants. 15 ) ) ) ) ) ) ) ) ) ) ) Case No. C 07 3952 JW PLAINTIFF’S MOTION FOR LEAVE TO FILE A FIRST AMENDED COMPLAINT; DECLARATION IN SUPPORT Date: September 8, 2008 Time: 9:00 a.m. Court: Hon. James Ware 16 TO THE COURT AND TO THE DEFENDANTS: 17 18 PLEASE TAKE NOTICE that on September 8, 2008 at 9:00 a.m., or as soon thereafter as 19 the matter may be heard in the Courtroom of the Hon. James Ware, United States District Judge, 20 located at Courtroom 8, 4th Floor of the United States District Courthouse, 280 South 1st Street, San 21 Jose, California 95113, Plaintiff Louis Vuitton Malletier, S.A. (“Plaintiff” or “Louis Vuitton”) will 22 and hereby does move the Court for leave to file a First Amended Complaint a redline version of 23 which is attached hereto as Exhibit A. 24 25 26 27 This motion is based on this Notice of Motion, Motion for Leave to File a First Amended Complaint and accompanying Memorandum of Points and Authorities, the Declarations and exhibits attached thereto, the exhibits and evidence to be presented at the hearing hereon, the 28 Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -i- 1 2 pleadings, records and papers on file herein and such other matters and evidence as may be presented at or before the hearing. 3 4 Dated: July 15, 2008 5 J. Andrew Coombs, A Professional Corp. ____/s/ J. Andrew Coombs___________________ By: J. Andrew Coombs Annie S. Wang Attorneys for Plaintiff Louis Vuitton Malletier, S.A. 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint - ii - 1 2 INTRODUCTION Plaintiff Louis Vuitton Malletier, S.A. (“Louis Vuitton” or “Plaintiff”) brings this motion 3 for leave to file its First Amended Complaint, the purpose of which is to specify the names of some 4 5 of the websites at issue. An amendment will address Defendants Akanoc Solutions, Inc., Managed 6 Solutions Group, Inc. and Steven Chen’s (collectively “Defendants”) concern that websites relating 7 to this matter be listed in the Complaint, though Plaintiff does not waive its position that these 8 specifically named websites were already at issue under the original complaint. In view of the 9 nature of the amendment and the absence of any prejudice or delay in granting the requested leave, 10 Plaintiff submits leave be freely granted as contemplated by the applicable rules. 11 STATEMENT OF FACTS 12 13 Louis Vuitton alleges claims for infringement of valuable intellectual property rights arising 14 out of systematic and extensive online sales of pirated goods through websites hosted by 15 Defendants despite notice of such infringement. 16 17 18 Plaintiff independently identified the websites listed in the amendment as Defendants have never produced any data from any webpage hosted by them, stating the lack of information was partly due to a “crash” which occurred in or around June of 2007. Declaration of J. Andrew 19 Coombs (“Coombs Decl.”) at ¶ 4. Plaintiff is also awaiting the order on its motion to compel or, in 20 21 the alternative, inspect electronic records due to a continued default in the discovery process by 22 Defendants. Id. Defendants have been notified since as early as November of 2007, of these 23 specified websites, most of which were the subject of discovery requests to and from Defendants 24 and deposition questions by Defendants. Id. at ¶ 3. No website in the amendment has not been 25 previously brought to Defendants’ attention through counsel. Id. 26 Recently, Defendants claimed that only five (5) websites were at issue despite the 27 28 notification letters, discovery history, and clear language of the Complaint which states, “The Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -1- 1 2 websites hosted by servers maintained by the ISP Defendants include but are not limited to…” Compl. p. 10, ¶ 31; Coombs Decl. at ¶¶ 3-5. As the amendment does not require any change to any 3 preliminary pre-trial date set by the Court pursuant to the Scheduling Order, is requested due to the 4 5 6 position taken by Defendants, and does not prejudice the Defendants, Plaintiff respectfully requests that the Court grant this motion for leave to file a First Amended Complaint. ARGUMENT 7 8 Fed. R. Civ. P. 15(a) provides that “leave [to amend the pleadings] shall be freely given 9 when justice so requires” and lies “within the sound discretion of the trial court.” DCD Programs, 10 Ltd. V. Leighton, 833 F.2d 183, 185 (9th Cir. 1987) (quoting United States v. Webb, 655 F.2d 977, 11 979 (9th Cir. 1981). 12 In exercising its discretion, “leave to amend should be granted unless amendment would 13 14 cause undue prejudice to the opposing party, is sought in bad faith, is futile, or creates undue 15 delay.” Martinez v. Newport Beach City, 125 F.3d 777, 785 (9th Cir. 1997); see also Foman v. 16 Davis, 371 U.S. 178, 182 (1962). In making this determination, “a court must be guided by the 17 18 underlying purpose of Rule 15, -- to facilitate decision on the merits rather than on the pleadings or technicalities.” DCD Programs, 833 F.2d at 186 (quoting Webb, 655 F.2d at 979). “In adhering to 19 Rule 15’s policy favoring amendment, the court should apply that policy with ‘extreme liberality.’” 20 21 Id.; Imax Corporation, et al v. In-Three, Inc., 2005 U.S. Dist. Court 24198, at *3-4 (C.D. Cal. July 22 8, 2005). 23 I. Plaintiff’s Motion Merely Identifies the Minimum Websites at Issue in Response to Defendants’ Concerns of the Scope of the Original Complaint. 24 25 The proposed First Amended Complaint merely specifies websites which have been the 26 subject of numerous cease and desist letters on behalf of Plaintiff to Defendants. Coombs Decl. at 27 ¶ 3. The specifically listed websites have been identified by Plaintiff as selling counterfeit Louis 28 Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -2- 1 2 Vuitton branded goods while hosted by Defendants. No claims are added or changed as to Defendants. 3 II. Factors Against Granting Leave to Amend are Absent in this Case. 4 5 Defendants are not prejudiced by the proposed amendment because the underlying claims 6 remain unchanged and Defendants have been notified of the names of the specified websites post- 7 filing of the Complaint through letters from Plaintiff dated as early as November of 2007. Coombs 8 Decl. at ¶ 3. Defendants have conducted discovery as to most of the websites listed in the 9 amendment and in any event, have claimed they lack associated data which was the subject of 10 Plaintiff’s motion to compel. Id. at ¶ 4. The proposed amendment will make the Complaint more 11 clear given Defendants’ position on the websites at issue. Id. at ¶ 5. Only after Defendants stated 12 13 14 15 16 17 18 that they did would not change their position on this issue and that they would not stipulate to the proposed leave, did Plaintiff file the present motion. Second, Plaintiff’s proposed amendment is not made in bad faith as Plaintiff merely attempts to clarify the scope of the claim in response to Defendants’ concerns and the websites were identified as quickly as possible without the aid of Defendants. Defendants have not provided any webpage data of any websites they host despite repeated requests which prompted Plaintiff’s 19 Motion to Compel. Id. at ¶ 4. 20 21 Third, Plaintiff’s proposed amendment would not be futile as it would more correctly 22 clarify the websites at issue. The amendment better states the scope of Plaintiff’s claims and 23 facilitates a more complete resolution of the action. 24 25 Lastly, Plaintiff’s proposed amendment does not create undue delay as it comes before the court far in advance of the preliminary pre-trial conference which is set for September 8, 2008. 26 The hearing for the present motion will occur concurrently with the currently set preliminary pre27 28 trial conference in this matter. Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -3- 1 2 CONCLUSION For the foregoing reasons, Plaintiff respectfully requests that the Court grant its motion for 3 leave to file a first amended complaint, a copy of which is attached hereto as Exhibit B and 4 5 6 separately lodged. Dated: July 15, 2008 J. Andrew Coombs, A Professional Corp. 7 ___/s/ J. Andrew Coombs_____________________ By: J. Andrew Coombs Annie Wang Attorneys for Plaintiff Louis Vuitton Malletier, S.A. 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -4- 1 2 DECLARATION OF J. ANDREW COOMBS I, J. Andrew Coombs, declare as follows: 3 1. I am an attorney at law duly admitted to practice before the Courts of the State of 4 5 California and the United States District Court for the Northern District of California. I am counsel 6 of record for Plaintiff Louis Vuitton Malletier, S.A. (“Plaintiff” or “Louis Vuitton”) in an action 7 styled Louis Vuitton Malletier, S.A. v. Akanoc Solutions, Inc., et al., Case No. C 07 3952 JW. I 8 submit this declaration in support of Plaintiff’s motion for leave to file a First Amended Complaint 9 in this matter. Except as otherwise stated to the contrary, I have personal knowledge of the 10 following facts and, if called as a witness, I could and would competently testify as follows. 11 2. A redlined copy of the proposed First Amended Complaint is attached hereto as 12 13 Exhibit A, and a clean copy is attached hereto as Exhibit B. Like the initial Complaint filed in this 14 matter, the First Amended Complaint pleads causes of action for contributory and vicarious 15 infringement of valuable intellectual properties owned by Plaintiff. The First Amended Complaint 16 expressly identifies websites hosted by Defendants which were selling counterfeit Louis Vuitton 17 18 branded goods. 3. Starting on or about November 26, 2007, my office began sending letters to 19 Defendants’ counsel identifying more specifically websites which were hosted by Defendants and 20 21 selling counterfeit Louis Vuitton merchandise. Most of the websites identified in the amendment 22 were the subject of discovery requests to and from Defendants and were touched upon in 23 deposition questions by Defendants. Letters of notice of infringements continued to be sent to 24 Defendants in March, April, and June and I am informed and believe notification on one occasion 25 was completed by telephone. The specified websites in the amendment are all those which 26 Defendants have been previously notified as infringing. 27 28 Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -5- 1 2 4. I am informed and believe Defendants have provided no webpage data concerning any websites hosted by them due to a “crash” of their equipment they contend occurred in or about 3 June of 2007. This lack of discovery as to the websites, in part, prompted Plaintiff’s filing of its 4 5 Motion For an Order Compelling Production, or in the Alternative, Inspection of Electronic 6 Records. 7 5. I am informed and believe that beginning in or about the end of April 2008, 8 Defendants suggested that the only websites at issue were the five (5) websites listed in the 9 Complaint. As of June 6, 2008, Defendants made clear that this was going to be their position in 10 the litigation. 11 I declare under penalty of perjury under the laws of the United States that the foregoing is 12 13 14 true and correct. Executed this 15th day of July, 2008, at Glendale, California. 15 ________/s/ J. Andrew Coombs__________ J. ANDREW COOMBS 16 17 18 19 20 21 22 23 24 25 26 27 28 Louis Vuitton v. Akanoc, et al.: Motion for Leave to File First Amended Complaint -6- EXHIBIT A 1 2 3 4 5 6 7 J. Andrew Coombs (SBN 123881) Annie S. Wang (SBN 243027) J. Andrew Coombs, A Prof. Corp. 517 East Wilson Avenue, Suite 202 Glendale, California 91206 Telephone: (818) 500-3200 Facsimile: (818) 500-3201 Deleted: 450 North Brand Blvd., Suite 600¶ Deleted: 91203-2349¶ Deleted: 291-6444¶ Deleted: 291-6446 andy@coombspc.com annie@coombspc.com Attorneys for Plaintiff Louis Vuitton Malletier, S.A. 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA (SAN JOSE) 10 11 12 13 14 15 16 17 18 19 ) ) ) Plaintiff, ) ) v. ) ) Akanoc Solutions, Inc., Managed Solutions ) Group, Inc., Steven Chen and Does 1 through 10, ) inclusive, ) ) Defendants. ) Louis Vuitton Malletier, S.A., Case No.: CV07-3952 JW First Amended Complaint For: Contributory and Vicarious Trademark Infringement; Contributory and Vicarious Copyright Infringement Plaintiff Louis Vuitton Malletier, S.A. (“Louis Vuitton” or “Plaintiff”) for its first amended complaint alleges as follows: I. Jurisdiction and Venue 20 1. The claims alleged herein arise under the Trademark Act, 15 U.S.C. § 1051, et seq., 21 22 and under the Copyright Act of 1976, 17 U.S.C. § 101, et seq., for (i) contributory and vicarious 23 liability for trademark infringement; and (iii) contributory and vicarious liability for copyright 24 infringement. 25 26 2. This Court has original jurisdiction over the subject matter of this action pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§ 1331, 1332 and 1338. 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -1- EXHIBIT A PAGE 7 1 2 3. This Court has personal jurisdiction over the Defendants because they do business and/or reside in the State of California and, as to the entities, do business, are incorporated, and/or 3 are authorized to do business in the State of California. 4 5 6 7 4. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391. II. Introduction 5. The substantial profits to be reaped from piracy and counterfeiting have led to the 8 creation, development and proliferation of business models, the object of which is to capitalize on 9 world famous trademarks and copyrights owned by others, including those owned by Plaintiff. The 10 opportunities created by the Internet have led to a dramatic increase in the opportunities to profit 11 from such activity. These opportunities rely upon the active participation and contribution of third 12 13 14 parties which make such illegal activities possible. 6. In particular, the promotion of infringing product and the offer of product for sale 15 occurs through communications published on the Internet. These promotions, advertisements and 16 offers are often published on websites which can be accessed by entering Internet addresses or 17 18 through hypertext links which direct Internet users to websites containing such offers. Communications designed to complete sales of such infringing merchandise are transmitted over 19 servers which host these same websites. 20 21 7. Defendants Akanoc Solutions Inc. (“Akanoc”) and Managed Solutions Group, Inc. 22 (“MSGI”) operate servers hosting websites. Louis Vuitton is informed and believes that Defendant 23 Steven Chen is an individual with responsibility for the operation and management of Akanoc and 24 MSGI and that Akanoc and MSGI are under common control and ownership. Louis Vuitton is 25 further informed and believes that Akanoc and MSGI were formed for and exist primarily to 26 facilitate the promotion and advertisement of offers for counterfeit and infringing merchandise. 27 28 Akanoc and MSGI aid and abet the distribution and sale of counterfeit and infringing merchandise Louis Vuitton v Akanoc, et al.: First Amended Complaint -2- EXHIBIT A PAGE 8 1 2 through the provision of Internet hosting services and they do so knowingly and despite having been provided with full notice of such conduct. Louis Vuitton is informed and believes that 3 Akanoc, MSGI and Chen benefit financially from the services they render hosting website which 4 5 6 7 8 9 10 offer counterfeit Louis Vuitton merchandise and through which sales of such merchandise are consummated. III. The Parties: Plaintiff 8. Plaintiff is organized and existing under the laws of the Republic of France, with its principal place of business in Paris, France. Plaintiff owns the trademarks and trade names “LOUIS VUITTON”, “VUITTON” and “LV” (hereinafter collectively referred to as “Plaintiff’s 11 Trademarks”). Plaintiff has engaged in services using Plaintiff’s Trademarks and Plaintiff is the 12 13 exclusive distributor in the United States of handbags, luggage and accessories, all of which bear 14 one or more of Plaintiff’s Trademarks. Plaintiff distributes authentic product online through 15 www.eluxury.com. 16 17 18 9. Plaintiff is the sole and exclusive distributor in the United States of leather goods bearing Plaintiff’s Trademarks, which are exclusively manufactured in France, Spain and San Dimas, California. Plaintiff is engaged in the manufacture, sale and distribution in interstate and 19 foreign commerce of prestigious high-quality, luxury merchandise, including a wide variety of 20 21 luggage, handbags, trunks, garment bags, wallets, small leather goods, apparel and other similar 22 items sold throughout the United States in Louis Vuitton boutiques, and high quality retail stores 23 such as Saks Fifth Avenue, Neiman Marcus and Bloomingdale’s that contain departments operated 24 by Plaintiff and staffed by Plaintiff’s personnel. 25 10. Plaintiff is responsible for assembling, finishing, marketing and selling in interstate 26 commerce high quality handbags, luggage, accessories and related products and/or services for 27 28 men and women. Plaintiff has acquired an outstanding reputation because of the uniform high Louis Vuitton v Akanoc, et al.: First Amended Complaint -3- EXHIBIT A PAGE 9 1 2 quality of its handbags, luggage and accessories and the boutiques through which Plaintiff sells these products. 3 11. As a result of the Louis Vuitton boutiques, extensive advertising of Louis Vuitton in 4 5 connection with Plaintiff’s intellectual properties, the widespread sale of Louis Vuitton 6 merchandise and the celebrity that Plaintiff and Plaintiff’s intellectual properties have achieved, 7 Louis Vuitton boutiques, handbags, luggage and accessories, all utilizing and/or bearing one or 8 more of Plaintiff’s intellectual properties have been and are now recognized by the public and the 9 trade as originating from Plaintiff. 10 12. Commencing at least as early as 1932, Plaintiff adopted one or more of Plaintiff’s 11 Trademarks for handbags, luggage, accessories and related products and caused said trademarks to 12 13 14 15 16 be registered in the United States Patent and Trademark Office. 13. Plaintiff is the owner of all rights in and to numerous trademarks including, but not limited to, Plaintiff’s Trademarks that are the subject of the following trademark registrations: TRADEMARK REGISTRATION TRADEMARK PICTURE NUMBER CLASS OF GOODS Louis Vuitton (Interlocked Letters) in a Circle Design Louis Vuitton (Interlocked Letters) and Monogram Canvas Design 286,345 18 297,594 18 17 18 19 20 21 22 23 24 25 LOUIS VUITTON 1,045,932 LOUIS VUITTON 18 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -4- EXHIBIT A PAGE 10 1 TRADEMARK REGISTRATION TRADEMARK PICTURE NUMBER CLASS OF GOODS Louis Vuitton (Interlocked Letters) Design 1,519,828 18 LOUIS VUITTON MALLETIER A PARIS in Rectangle Louis Vuitton (Interlocked Letters) on Epi Leather Design 1,615,681 16, 18 2 3 4 5 6 7 8 9 10 11 12 18 1,655,564 13 14 15 16 17 18 19 Louis Vuitton (Interlocked Letters) and Monogram Canvas Pattern Design Louis Vuitton (Interlocked Letters) Design 25 1,770,131 16, 25 1,794,905 20 21 22 23 24 Louis Vuitton (Interlocked Letters) and Monogram Canvas Design 16 1,875,198 25 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -5- EXHIBIT A PAGE 11 1 TRADEMARK REGISTRATION TRADEMARK PICTURE NUMBER Louis Vuitton (Interlocked Letters) 1,938,808 2 3 4 CLASS OF GOODS 14, 24 5 6 7 8 9 10 LOUIS VUITTON World Mark Louis Vuitton (Interlocked Letters) Design 1,990,760 LOUIS VUITTON 16, 18, 24, 25 34 2,291,907 11 12 13 14 15 16 LOUIS VUITTON Louis Vuitton (Interlocked Letters) Design 2,303,212 LOUIS VUITTON 34 25 2,361,695 17 18 19 20 21 22 LOUIS VUITTON PARIS and Damier (pattern design) 18 2,378,388 23 24 25 14. Plaintiff’s Trademarks are in full force and effect, and are used and have never been 26 abandoned. Plaintiff intends to continue to preserve and maintain its rights with respect to 27 Plaintiff’s Trademarks. 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -6- EXHIBIT A PAGE 12 1 2 15. Plaintiff’s products utilizing and/or bearing one or more of Plaintiff’s Trademarks, by reason of their style, distinctive designs and quality have come to be known by the purchasing 3 public throughout the United States as being of the highest quality. As a result thereof, Plaintiff’s 4 5 6 Trademarks and the goodwill associated therewith are of inestimable value to Plaintiff. 16. Based on the Louis Vuitton boutiques and the extensive sales of Plaintiff’s products 7 and their wide popularity, Plaintiff’s Trademarks have developed a secondary meaning and 8 significance in the minds of the purchasing public, and the services and products utilizing and/or 9 bearing such marks and names are immediately identified by the purchasing public with Plaintiff. 10 17. Those trademarks are vital to Plaintiff, and Plaintiff will suffer irreparable harm if 11 any third parties, including Defendants herein, are allowed to continue engaging in services and 12 13 14 selling infringing goods utilizing and/or bearing identical or substantially similar trademarks. 18. Louis Vuitton has also registered its copyrights in the United States Copyright 15 Office and uses those copyrights in connection with its sale of luxury products. A significant 16 aspect of Louis Vuitton’s business is the merchandising of product incorporating the distinctive 17 18 elements associated with its luxury goods. 19. The revenue from products that bear Louis Vuitton designs and are sold in the 19 United States is substantial. The appearance and other features of the Louis Vuitton designs are 20 21 inherently distinctive. The design, configuration, and distinctive features of the Louis Vuitton 22 copyrighted works, and of works related thereto (hereinafter collectively, the “Louis Vuitton 23 Copyrighted Designs”), are wholly original with Louis Vuitton and, as fixed in various tangible 24 media, including merchandise, are copyrightable subject matter under the United States Copyright 25 Act, 17 U.S.C., Sections 101 et seq. Louis Vuitton is the owner of the Louis Vuitton Copyrighted 26 Designs, which, as featured in connection with various merchandise, are copyrightable subject 27 28 matter under the Copyright Act of 1976, 17 U.S.C. § 101, et seq. (The Plaintiff’s Trademarks and Louis Vuitton v Akanoc, et al.: First Amended Complaint -7- EXHIBIT A PAGE 13 1 2 the Louis Vuitton Copyrighted Designs are hereinafter collectively referred to as the “Louis Vuitton Intellectual Properties”). 3 20. Louis Vuitton has complied in all respects with the laws governing copyright and 4 5 has secured the exclusive rights and privileges in and to the copyrights to Louis Vuitton 6 Copyrighted Designs. Louis Vuitton owns certificates of registration for works in which the Louis 7 Vuitton Copyrighted Designs appear. Copyright registrations secured by Louis Vuitton for the 8 Louis Vuitton Copyrighted Designs include: 9 Copyright Reg. No. Date Published 10 11 Date Registered Multicolor Monogram – Black Print VA 1-250-121 12/18/02 06/24/04 Multicolor Monogram – White Print VA 1-250-120 12/18/02 06/24/04 12 13 14 15 21. Products featuring the Louis Vuitton Copyrighted Designs that are manufactured, 16 17 sold, and distributed by Louis Vuitton or under its authority have been manufactured, sold, and 18 distributed in conformity with the provisions of the copyright laws. Louis Vuitton and those acting 19 under its authority have complied with their obligations under the copyright laws and Louis 20 Vuitton, in its own right or as successor-in-interest, has at all times been the sole proprietor or 21 22 otherwise authorized to enforce all right, title, and interest in and to the copyrights in the Louis Vuitton Copyrighted Designs. 23 22. Louis Vuitton maintains strict quality control standards for all its products. All 24 25 genuine Louis Vuitton products are inspected and approved by Louis Vuitton prior to distribution 26 and sale and are sold only through Louis Vuitton stores and Louis Vuitton boutiques within 27 department stores such as Saks Fifth Avenue, Neiman Marcus, and Bloomingdales, and 28 ELuxury.com. No Louis Vuitton product is sold by anyone other than Louis Vuitton. By Louis Vuitton v Akanoc, et al.: First Amended Complaint -8- EXHIBIT A PAGE 14 1 2 definition, any new (i.e. unused) product bearing any of the Louis Vuitton Intellectual Properties that is sold anywhere other than at a Louis Vuitton store (or ELuxury.com) is not a genuine Louis 3 Vuitton product but rather a counterfeit product. Plaintiff does not sell its high-end products 4 5 through licensees or franchisees and Plaintiff has not authorized independent retail vendors to 6 engage in services and advertising utilizing and/or displaying the Louis Vuitton Intellectual 7 Properties 8 23. 9 10 At great expense, Louis Vuitton has created, developed, manufactured, advertised, and marketed its products in such a way that they convey and are associated with luxury products that meet the highest standards and are used by celebrities and dignitaries around the world. 11 24. Louis Vuitton’s goods, so marked, continue to be recognized by the fashion industry 12 13 14 and public as those of Louis Vuitton. 25. The Louis Vuitton Intellectual Properties and the goodwill of Louis Vuitton’s 15 business in connection with its trademarks and copyrights are continuously used and have never 16 been abandoned. 17 18 IV. The Parties: Defendants 26. Louis Vuitton is informed and believes that Akanoc is a California corporation with 19 its principal office in Fremont, California. Akanoc is an internet service provider which, among 20 21 22 other things, hosts commercial websites. 27. Louis Vuitton is informed and believes that MSGI is a California corporation with 23 its principal office in Fremont, California. MSGI is an internet service provider which, among 24 other things, hosts commercial websites. Akanoc and MSGI are collectively referred to herein as 25 the “ISP Defendants”. 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -9- EXHIBIT A PAGE 15 1 2 28. Louis Vuitton is informed and believes that Steve Chen is an individual resident in the City of Fremont and State of California. Louis Vuitton is further informed and believes that 3 Steve Chen is an officer, owner and/or managing employee of Akanoc and MSGI. 4 5 29. Plaintiff is informed and believes, and upon that basis alleges, that at all relevant 6 times each of the defendants Does 1 through 10, inclusive, are unknown to Plaintiff, who therefore 7 sues such Doe defendants as individuals and/or business entities, agents, partners, and/or 8 employees of the named Defendants, which, in taking the actions alleged in this Complaint, were 9 acting within the scope of such agency, partnership, and/or employment. 10 V. The Infringing Activities 11 30. The ISP Defendants host websites (the “Counterfeiting Websites”) and facilitate 12 13 communications between the sellers of counterfeit product who operate the Counterfeiting 14 Websites and their customers. The Counterfeiting Websites offer, promote, advertise and facilitate 15 the offer and sale of counterfeit merchandise which infringes the intellectual property rights of 16 Louis Vuitton, among others. The Counterfeiting Websites publish unauthorized reproductions of 17 18 the Louis Vuitton Copyrighted Designs to promote the sale of counterfeit merchandise. Louis Vuitton is informed and believes that the servers upon which the Counterfeiting Websites are 19 hosted are also used to transmit communications by and between the operators of the 20 21 22 Counterfeiting Websites and their customers. 31. The websites hosted by servers maintained by the ISP Defendants include but are Deleted: atozbrand 23 not limited to the following: 315EC.com, Ape168.com, Atozbrand.com, At88.com, Bag1881.net, 24 Bag4Sell.com, Bag925.com, BigWorldShoes.com, Bizyao.com, BrandFashioner.com, 25 Deleted: bag925 Deleted: ape168 Brandstreets.com.cn, BrandStyleSales.com, Brandtrading.net, BuyMyShoes.net, Cn-nike.us, Deleted: wendy929 Deleted: and eshoes99.com. 26 DreamyShoes.com, Eastarbiz.com, Eastarbiz.net, EBuyNike.com, ECshoes.com, EGoToBuy.com, 27 28 EMSYou.com, EShoes99.com, Eshoes99.net, Famous-Shop.com, Fansjersey.com, Louis Vuitton v Akanoc, et al.: First Amended Complaint - 10 - EXHIBIT A PAGE 16 1 2 GucciFendi.com, GZ-Free.com, HandBagSell.com, Imitation-Gold.com, InNike.com, Lkkfashion2006.com, Ilouisvuitton.com, LongTimeGroup.com, Louis-vuitton-bags.org, 3 Louisvuittonbagz.com, LoverNike.com, LuxeLike.com, Luxury2Us.com, LVBagz.com, lv4 5 handbag.com, lv-nike.com, MailGoods.com, Myshoes99.com, Nike558.com, Nikeexp.com, 6 NikeShoesOffer.com, NikeWTO.com, NonStopBeauty.com, PFCStation.com, PickHipHop.com, 7 PickYourGoods.com, PickYourOrder.com, Pro-Jordan.com, Queen-bag.com, Replica-ebags.com, 8 Replicabc.com, RRGNL.com, Shoes-Order.com, SoApparel.com, Soapparel.net, Sportsvendor.biz, 9 Sunny7Shoes.com, Super925.com, Swisshours.biz, Top-handbag.com, Tytrade88.com, 10 Watchesnreplica.com, WatchesReplica.net, WatchNReplica.net, WearOnline.net, Wendy929.com, 11 Wendy929.net, Wendyluxury.com, WorldKeyTrade.com, YeahEBay.com, Yseenet.net. Louis 12 13 Vuitton is further informed and believes that most, if not all, of the websites hosted by the ISP 14 Defendants are engaged in the trafficking of counterfeit merchandise, specifically including 15 merchandise infringing the Louis Vuitton Intellectual Properties. 16 17 18 32. Defendants have been repeatedly placed on notice of the counterfeit activity which occurs using the hosting services offered by the ISP Defendants. Louis Vuitton has not granted any of the Defendants license to use, exploit any of the Louis Vuitton Intellectual Properties. The 19 ISP Defendants have taken no steps to limit, curtail, disable, stop or otherwise discontinue the 20 21 services they provide which make such infringing activity possible. Louis Vuitton is informed and 22 believes that the ISP Defendants generate revenue and profit from the Internet traffic and 23 counterfeit sales which occur as a result of their hosting activity. 24 25 33. Plaintiff has no adequate remedy at law and is suffering irreparable harm and damages as a result of the acts of Defendants as aforesaid in an amount thus far not determined. 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 11 - EXHIBIT A PAGE 17 1 FIRST CLAIM FOR RELIEF 2 (For Contributory Trademark Infringement) 3 34. Plaintiff repeats and re-alleges all of the allegations contained in paragraphs 1 4 5 6 through 33, inclusive, as though fully set forth herein. 35. The Counterfeiting Websites are engaging in illegal conduct including but not 7 necessarily limited to the promotion, advertisement, offer for sale, sale and distribution of 8 counterfeit goods in violation of the Lanham Act, as amended. 9 10 36. Defendants have actual knowledge of the Counterfeiting Websites’ illegal activities from, among other things, written notification by counsel and agents for Plaintiff. 11 37. Defendants have deliberately disregarded these notifications and have otherwise 12 13 14 15 16 17 18 consciously avoided learning about the full extent of illegal counterfeiting and infringing activities that are continuing at the Counterfeiting Websites. 38. Defendants have materially encouraged, enabled, and contributed to the infringing conduct at the Counterfeiting Websites by providing, among other things, hosting the Counterfeiting Websites, displaying offers for counterfeit products, facilitating communications by and between the sellers of counterfeit goods over the Counterfeiting Websites and their 19 distributors, consumers and vendors. 20 21 39. Defendants therefore bear contributory liability for the Counterfeiting Websites’ 22 counterfeiting of the Plaintiff’s Trademarks in violation of 15 U.S.C. § 1051, et seq. and the 23 common law. 24 25 40. Plaintiff has no adequate remedy at law and has suffered irreparable harm and damage as a result of the contributory counterfeiting conduct of the Defendants. 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 12 - EXHIBIT A PAGE 18 1 2 41. Plaintiff has sustained damages as a result of the Defendants’ wrongful contributory conduct in an amount to be ascertained at trial but in no event less than One Million Dollars 3 ($1,000,000) per trademark per counterfeit. 4 SECOND CLAIM FOR RELIEF 5 (For Vicarious Trademark Counterfeiting) 6 7 42. Plaintiff repeats and re-alleges all of the allegations contained in paragraphs 1 Deleted: 40 8 9 10 through 41, inclusive, as though fully set forth herein. 43. The illegal sales of products that infringe on the Plaintiff’s Trademarks have generated enormous sums of monies for the Counterfeiting Websites. 11 44. Despite the Defendants’ duty and right to control the Counterfeiting Websites, they 12 13 14 15 16 17 18 have taken no steps to stop or otherwise prevent the ongoing counterfeiting at the websites operated by the Counterfeiting Websites or to disconnect links directing its users to such websites. 45. Defendants are therefore vicariously liable for the damages caused to Plaintiff as a result of the illegal promotion, advertisement, offer for sale and/or sale of counterfeit merchandise at the Counterfeiting Websites in violation of 15 U.S.C. § 1051, et seq. and the common law. 46. Plaintiff has sustained damages as a result of the Defendants’ wrongful vicarious 19 conduct in an amount to be determined at trial but in no event less than One Million Dollars 20 21 ($1,000,000) per trademark per counterfeited. 22 THIRD CLAIM FOR RELIEF 23 (Contributory and Vicarious Copyright Piracy) 24 25 47. Plaintiff repeats and re-alleges all of the allegations contained in paragraphs 1 Deleted: 45 through 33, inclusive, as though fully set forth herein. 26 48. Louis Vuitton is informed and believes that Defendants earn revenues for hosting 27 28 the Counterfeiting Websites for each Internet user directed to websites operated by the Louis Vuitton v Akanoc, et al.: First Amended Complaint - 13 - EXHIBIT A PAGE 19 1 2 Counterfeiting Websites. The ISP Defendants do so pursuant to terms of use which permit them to discontinue links through websites offering product infringing the rights of third parties. 3 49. Defendants have actual knowledge of the illegal acts of the Counterfeiting Websites 4 5 from, among other things, written notification from Louis Vuitton. Defendants have therefore 6 deliberately disregarded and otherwise consciously avoided learning about the full extent of illegal 7 counterfeiting and infringing activities that are continuing at the websites operated by the 8 Counterfeiting Websites. 9 10 50. Defendants have knowingly and willfully permitted and continue to permit the Counterfeiting Websites to sell and offer for sale unauthorized copies of products bearing the Louis 11 Vuitton Intellectual Properties at the Counterfeiting Websites. 12 13 14 15 16 17 18 51. Defendants have therefore materially encouraged, enabled, and contributed to the infringing conduct at the websites operated by the Counterfeiting Websites. 52. Plaintiff has sustained, and will continue to sustain, substantial injuries, loss, and damage to its exclusive rights in the Louis Vuitton Copyrights, and Plaintiff has sustained and will continue to sustain damages from the loss of value of the exclusive rights thereunder as a result of the Defendants’ wrongful conduct in an amount to be determined at trial but in no event less than 19 One Hundred and Fifty Thousand Dollars ($150,000) per copyright infringed. 20 PRAYER FOR RELIEF 21 WHEREFORE, Plaintiff demands: 22 23 24 25 1) That Defendants and their officers, agents, servants, employees, representatives, successors, and assigns; and all other persons, firms, or corporations in active concert or participation with them who receive actual notice of this Order, be temporarily, preliminarily and 26 permanently enjoined and restrained from: 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 14 - EXHIBIT A PAGE 20 1 a) 2 directly or indirectly infringing Plaintiff’s Trademarks or any marks similar thereto, in any manner, including generally, but not limited to engaging in 3 services and manufacturing, importing, distributing, advertising, selling, 4 and/or offering for sale any merchandise which infringes said Trademarks 5 6 and specifically: 7 i) advertising, selling, and/or offering for sale any other 8 unauthorized merchandise, which pictures, reproduces, or 9 utilizes the likenesses of or which copy or are likely to cause 10 consumer confusion with any of Plaintiff’s Trademarks; 11 ii) hosting websites which offer product purporting to be 12 Plaintiff’s product or any imitation or replica thereof; 13 14 b) indirectly infringing the Louis Vuitton Copyrights and Designs, in any 15 manner, including generally, but not limited to engaging in services and 16 manufacturing, importing, distributing, advertising, selling, and/or offering 17 for sale any merchandise which infringes said Copyrights and specifically: 18 i) advertising, selling, and/or offering for sale any other 19 unauthorized merchandise, which pictures, reproduces, or 20 utilizes the likenesses of or which copy or are substantially 21 similar to any of the Louis Vuitton Copyrights and Designs; 22 ii) 23 24 25 hosting websites which offer product purporting to be Plaintiff’s product or any imitation or replica thereof; c) effecting assignments or transfers, forming new entities or associations or 26 utilizing any other device for the purpose of circumventing or otherwise 27 28 avoiding the prohibitions set forth in subparagraphs A and B. Louis Vuitton v Akanoc, et al.: First Amended Complaint - 15 - EXHIBIT A PAGE 21 1 2 2) That Defendants be required to account to Plaintiff for all profits and damages resulting from Defendants’ infringing activities and that the award to Plaintiff be increased as 3 provided for under 15 U.S.C. §1117; 4 5 6 7 8 9 10 3) That Defendants pay over to Plaintiff in the alternative statutory damages pursuant to 15 U.S.C. § 1117(c); 4) That Plaintiff have a recovery from Defendants of the costs of this action and Plaintiff’s reasonable attorneys’ fees pursuant to 15 U.S.C. §1117(b); 5) That Defendants be required to account to Plaintiff for all profits and damages resulting from Defendants’ respective infringing activities as provided for under 17 U.S.C. §504; 11 6) That Defendants pay over to Plaintiff in the alternative statutory damages pursuant 12 13 14 15 16 17 18 to 15 U.S.C. § 504; 7) That Plaintiff have a recovery from Defendants of the costs of this action and Plaintiff’s reasonable attorneys’ fees pursuant to 17 U.S.C. §505; 8) That Plaintiff has all other and further relief as the Court may deem just and proper Deleted: //¶ //¶ under the circumstances. Dated: July 15, 2008 19 J. ANDREW COOMBS, A Professional Corporation Deleted: 30, 2007 _/s/ J. Andrew Coombs__________________ By: J. Andrew Coombs Attorneys for Plaintiff Louis Vuitton Malletier, S.A. Deleted: 20 21 22 _____________ 23 24 25 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 16 - EXHIBIT A PAGE 22 EXHIBIT B 1 2 3 4 5 6 7 J. Andrew Coombs (SBN 123881) Annie S. Wang (SBN 243027) J. Andrew Coombs, A Prof. Corp. 517 East Wilson Avenue, Suite 202 Glendale, California 91206 Telephone: (818) 500-3200 Facsimile: (818) 500-3201 andy@coombspc.com annie@coombspc.com Attorneys for Plaintiff Louis Vuitton Malletier, S.A. 8 UNITED STATES DISTRICT COURT 9 NORTHERN DISTRICT OF CALIFORNIA (SAN JOSE) 10 11 12 13 14 15 16 17 18 19 ) ) ) Plaintiff, ) ) v. ) ) Akanoc Solutions, Inc., Managed Solutions ) Group, Inc., Steven Chen and Does 1 through 10,) inclusive, ) ) Defendants. ) Louis Vuitton Malletier, S.A., Case No.: CV07-3952 JW First Amended Complaint For: Contributory and Vicarious Trademark Infringement; Contributory and Vicarious Copyright Infringement Plaintiff Louis Vuitton Malletier, S.A. (“Louis Vuitton” or “Plaintiff”) for its first amended complaint alleges as follows: I. Jurisdiction and Venue 20 1. The claims alleged herein arise under the Trademark Act, 15 U.S.C. § 1051, et seq., 21 22 and under the Copyright Act of 1976, 17 U.S.C. § 101, et seq., for (i) contributory and vicarious 23 liability for trademark infringement; and (iii) contributory and vicarious liability for copyright 24 infringement. 25 26 2. This Court has original jurisdiction over the subject matter of this action pursuant to 15 U.S.C. § 1121, 28 U.S.C. §§ 1331, 1332 and 1338. 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -1- EXHIBIT B PAGE 23 1 2 3. This Court has personal jurisdiction over the Defendants because they do business and/or reside in the State of California and, as to the entities, do business, are incorporated, and/or 3 are authorized to do business in the State of California. 4 5 6 7 4. Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391. II. Introduction 5. The substantial profits to be reaped from piracy and counterfeiting have led to the 8 creation, development and proliferation of business models, the object of which is to capitalize on 9 world famous trademarks and copyrights owned by others, including those owned by Plaintiff. The 10 opportunities created by the Internet have led to a dramatic increase in the opportunities to profit 11 from such activity. These opportunities rely upon the active participation and contribution of third 12 13 14 parties which make such illegal activities possible. 6. In particular, the promotion of infringing product and the offer of product for sale 15 occurs through communications published on the Internet. These promotions, advertisements and 16 offers are often published on websites which can be accessed by entering Internet addresses or 17 18 through hypertext links which direct Internet users to websites containing such offers. Communications designed to complete sales of such infringing merchandise are transmitted over 19 servers which host these same websites. 20 21 7. Defendants Akanoc Solutions Inc. (“Akanoc”) and Managed Solutions Group, Inc. 22 (“MSGI”) operate servers hosting websites. Louis Vuitton is informed and believes that Defendant 23 Steven Chen is an individual with responsibility for the operation and management of Akanoc and 24 MSGI and that Akanoc and MSGI are under common control and ownership. Louis Vuitton is 25 further informed and believes that Akanoc and MSGI were formed for and exist primarily to 26 facilitate the promotion and advertisement of offers for counterfeit and infringing merchandise. 27 28 Akanoc and MSGI aid and abet the distribution and sale of counterfeit and infringing merchandise Louis Vuitton v Akanoc, et al.: First Amended Complaint -2- EXHIBIT B PAGE 24 1 2 through the provision of Internet hosting services and they do so knowingly and despite having been provided with full notice of such conduct. Louis Vuitton is informed and believes that 3 Akanoc, MSGI and Chen benefit financially from the services they render hosting website which 4 5 6 7 8 9 10 offer counterfeit Louis Vuitton merchandise and through which sales of such merchandise are consummated. III. The Parties: Plaintiff 8. Plaintiff is organized and existing under the laws of the Republic of France, with its principal place of business in Paris, France. Plaintiff owns the trademarks and trade names “LOUIS VUITTON”, “VUITTON” and “LV” (hereinafter collectively referred to as “Plaintiff’s 11 Trademarks”). Plaintiff has engaged in services using Plaintiff’s Trademarks and Plaintiff is the 12 13 exclusive distributor in the United States of handbags, luggage and accessories, all of which bear 14 one or more of Plaintiff’s Trademarks. Plaintiff distributes authentic product online through 15 www.eluxury.com. 16 17 18 9. Plaintiff is the sole and exclusive distributor in the United States of leather goods bearing Plaintiff’s Trademarks, which are exclusively manufactured in France, Spain and San Dimas, California. Plaintiff is engaged in the manufacture, sale and distribution in interstate and 19 foreign commerce of prestigious high-quality, luxury merchandise, including a wide variety of 20 21 luggage, handbags, trunks, garment bags, wallets, small leather goods, apparel and other similar 22 items sold throughout the United States in Louis Vuitton boutiques, and high quality retail stores 23 such as Saks Fifth Avenue, Neiman Marcus and Bloomingdale’s that contain departments operated 24 by Plaintiff and staffed by Plaintiff’s personnel. 25 10. Plaintiff is responsible for assembling, finishing, marketing and selling in interstate 26 commerce high quality handbags, luggage, accessories and related products and/or services for 27 28 men and women. Plaintiff has acquired an outstanding reputation because of the uniform high Louis Vuitton v Akanoc, et al.: First Amended Complaint -3- EXHIBIT B PAGE 25 1 2 quality of its handbags, luggage and accessories and the boutiques through which Plaintiff sells these products. 3 11. As a result of the Louis Vuitton boutiques, extensive advertising of Louis Vuitton in 4 5 connection with Plaintiff’s intellectual properties, the widespread sale of Louis Vuitton 6 merchandise and the celebrity that Plaintiff and Plaintiff’s intellectual properties have achieved, 7 Louis Vuitton boutiques, handbags, luggage and accessories, all utilizing and/or bearing one or 8 more of Plaintiff’s intellectual properties have been and are now recognized by the public and the 9 trade as originating from Plaintiff. 10 12. Commencing at least as early as 1932, Plaintiff adopted one or more of Plaintiff’s 11 Trademarks for handbags, luggage, accessories and related products and caused said trademarks to 12 13 14 15 16 be registered in the United States Patent and Trademark Office. 13. Plaintiff is the owner of all rights in and to numerous trademarks including, but not limited to, Plaintiff’s Trademarks that are the subject of the following trademark registrations: TRADEMARK REGISTRATION TRADEMARK PICTURE NUMBER CLASS OF GOODS Louis Vuitton (Interlocked Letters) in a Circle Design Louis Vuitton (Interlocked Letters) and Monogram Canvas Design 286,345 18 297,594 18 17 18 19 20 21 22 23 24 25 LOUIS VUITTON 1,045,932 LOUIS VUITTON 18 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -4- EXHIBIT B PAGE 26 1 TRADEMARK REGISTRATION TRADEMARK PICTURE NUMBER CLASS OF GOODS Louis Vuitton (Interlocked Letters) Design 1,519,828 18 1,615,681 16, 18 2 3 4 5 6 7 8 9 10 11 12 LOUIS VUITTON MALLETIER A PARIS in Rectangle Louis Vuitton (Interlocked Letters) on Epi Leather Design 18 1,655,564 13 14 15 16 17 18 19 Louis Vuitton (Interlocked Letters) and Monogram Canvas Pattern Design 25 1,770,131 Louis Vuitton (Interlocked Letters) Design 1,794,905 16, 25 Louis Vuitton (Interlocked Letters) and Monogram Canvas Design 1,875,198 16 20 21 22 23 24 25 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -5- EXHIBIT B PAGE 27 1 TRADEMARK REGISTRATION TRADEMARK PICTURE NUMBER Louis Vuitton (Interlocked Letters) 1,938,808 LOUIS VUITTON World Mark Louis Vuitton (Interlocked Letters) Design 1,990,760 2 3 4 CLASS OF GOODS 14, 24 5 6 7 8 9 10 LOUIS VUITTON 16, 18, 24, 25 34 2,291,907 11 12 13 14 15 16 LOUIS VUITTON Louis Vuitton (Interlocked Letters) Design 2,303,212 LOUIS VUITTON 34 25 2,361,695 17 18 19 20 21 22 LOUIS VUITTON PARIS and Damier (pattern design) 18 2,378,388 23 24 25 14. Plaintiff’s Trademarks are in full force and effect, and are used and have never been 26 abandoned. Plaintiff intends to continue to preserve and maintain its rights with respect to 27 Plaintiff’s Trademarks. 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -6- EXHIBIT B PAGE 28 1 2 15. Plaintiff’s products utilizing and/or bearing one or more of Plaintiff’s Trademarks, by reason of their style, distinctive designs and quality have come to be known by the purchasing 3 public throughout the United States as being of the highest quality. As a result thereof, Plaintiff’s 4 5 6 Trademarks and the goodwill associated therewith are of inestimable value to Plaintiff. 16. Based on the Louis Vuitton boutiques and the extensive sales of Plaintiff’s products 7 and their wide popularity, Plaintiff’s Trademarks have developed a secondary meaning and 8 significance in the minds of the purchasing public, and the services and products utilizing and/or 9 bearing such marks and names are immediately identified by the purchasing public with Plaintiff. 10 17. Those trademarks are vital to Plaintiff, and Plaintiff will suffer irreparable harm if 11 any third parties, including Defendants herein, are allowed to continue engaging in services and 12 13 14 selling infringing goods utilizing and/or bearing identical or substantially similar trademarks. 18. Louis Vuitton has also registered its copyrights in the United States Copyright 15 Office and uses those copyrights in connection with its sale of luxury products. A significant 16 aspect of Louis Vuitton’s business is the merchandising of product incorporating the distinctive 17 18 elements associated with its luxury goods. 19. The revenue from products that bear Louis Vuitton designs and are sold in the 19 United States is substantial. The appearance and other features of the Louis Vuitton designs are 20 21 inherently distinctive. The design, configuration, and distinctive features of the Louis Vuitton 22 copyrighted works, and of works related thereto (hereinafter collectively, the “Louis Vuitton 23 Copyrighted Designs”), are wholly original with Louis Vuitton and, as fixed in various tangible 24 media, including merchandise, are copyrightable subject matter under the United States Copyright 25 Act, 17 U.S.C., Sections 101 et seq. Louis Vuitton is the owner of the Louis Vuitton Copyrighted 26 Designs, which, as featured in connection with various merchandise, are copyrightable subject 27 28 matter under the Copyright Act of 1976, 17 U.S.C. § 101, et seq. (The Plaintiff’s Trademarks and Louis Vuitton v Akanoc, et al.: First Amended Complaint -7- EXHIBIT B PAGE 29 1 2 the Louis Vuitton Copyrighted Designs are hereinafter collectively referred to as the “Louis Vuitton Intellectual Properties”). 3 20. Louis Vuitton has complied in all respects with the laws governing copyright and 4 5 has secured the exclusive rights and privileges in and to the copyrights to Louis Vuitton 6 Copyrighted Designs. Louis Vuitton owns certificates of registration for works in which the Louis 7 Vuitton Copyrighted Designs appear. Copyright registrations secured by Louis Vuitton for the 8 Louis Vuitton Copyrighted Designs include: 9 Copyright Reg. No. Date Published 10 11 Date Registered Multicolor Monogram – Black Print VA 1-250-121 12/18/02 06/24/04 Multicolor Monogram – White Print VA 1-250-120 12/18/02 06/24/04 12 13 14 15 21. Products featuring the Louis Vuitton Copyrighted Designs that are manufactured, 16 17 sold, and distributed by Louis Vuitton or under its authority have been manufactured, sold, and 18 distributed in conformity with the provisions of the copyright laws. Louis Vuitton and those acting 19 under its authority have complied with their obligations under the copyright laws and Louis 20 Vuitton, in its own right or as successor-in-interest, has at all times been the sole proprietor or 21 22 otherwise authorized to enforce all right, title, and interest in and to the copyrights in the Louis Vuitton Copyrighted Designs. 23 22. Louis Vuitton maintains strict quality control standards for all its products. All 24 25 genuine Louis Vuitton products are inspected and approved by Louis Vuitton prior to distribution 26 and sale and are sold only through Louis Vuitton stores and Louis Vuitton boutiques within 27 department stores such as Saks Fifth Avenue, Neiman Marcus, and Bloomingdales, and 28 ELuxury.com. No Louis Vuitton product is sold by anyone other than Louis Vuitton. By Louis Vuitton v Akanoc, et al.: First Amended Complaint -8- EXHIBIT B PAGE 30 1 2 definition, any new (i.e. unused) product bearing any of the Louis Vuitton Intellectual Properties that is sold anywhere other than at a Louis Vuitton store (or ELuxury.com) is not a genuine Louis 3 Vuitton product but rather a counterfeit product. Plaintiff does not sell its high-end products 4 5 through licensees or franchisees and Plaintiff has not authorized independent retail vendors to 6 engage in services and advertising utilizing and/or displaying the Louis Vuitton Intellectual 7 Properties 8 23. 9 10 At great expense, Louis Vuitton has created, developed, manufactured, advertised, and marketed its products in such a way that they convey and are associated with luxury products that meet the highest standards and are used by celebrities and dignitaries around the world. 11 24. Louis Vuitton’s goods, so marked, continue to be recognized by the fashion industry 12 13 14 and public as those of Louis Vuitton. 25. The Louis Vuitton Intellectual Properties and the goodwill of Louis Vuitton’s 15 business in connection with its trademarks and copyrights are continuously used and have never 16 been abandoned. 17 18 IV. The Parties: Defendants 26. Louis Vuitton is informed and believes that Akanoc is a California corporation with 19 its principal office in Fremont, California. Akanoc is an internet service provider which, among 20 21 22 other things, hosts commercial websites. 27. Louis Vuitton is informed and believes that MSGI is a California corporation with 23 its principal office in Fremont, California. MSGI is an internet service provider which, among 24 other things, hosts commercial websites. Akanoc and MSGI are collectively referred to herein as 25 the “ISP Defendants”. 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint -9- EXHIBIT B PAGE 31 1 2 28. Louis Vuitton is informed and believes that Steve Chen is an individual resident in the City of Fremont and State of California. Louis Vuitton is further informed and believes that 3 Steve Chen is an officer, owner and/or managing employee of Akanoc and MSGI. 4 5 29. Plaintiff is informed and believes, and upon that basis alleges, that at all relevant 6 times each of the defendants Does 1 through 10, inclusive, are unknown to Plaintiff, who therefore 7 sues such Doe defendants as individuals and/or business entities, agents, partners, and/or 8 employees of the named Defendants, which, in taking the actions alleged in this Complaint, were 9 acting within the scope of such agency, partnership, and/or employment. 10 V. The Infringing Activities 11 30. The ISP Defendants host websites (the “Counterfeiting Websites”) and facilitate 12 13 communications between the sellers of counterfeit product who operate the Counterfeiting 14 Websites and their customers. The Counterfeiting Websites offer, promote, advertise and facilitate 15 the offer and sale of counterfeit merchandise which infringes the intellectual property rights of 16 Louis Vuitton, among others. The Counterfeiting Websites publish unauthorized reproductions of 17 18 the Louis Vuitton Copyrighted Designs to promote the sale of counterfeit merchandise. Louis Vuitton is informed and believes that the servers upon which the Counterfeiting Websites are 19 hosted are also used to transmit communications by and between the operators of the 20 21 22 Counterfeiting Websites and their customers. 31. The websites hosted by servers maintained by the ISP Defendants include but are 23 not limited to the following: 315EC.com, Ape168.com, Atozbrand.com, At88.com, Bag1881.net, 24 Bag4Sell.com, Bag925.com, BigWorldShoes.com, Bizyao.com, BrandFashioner.com, 25 Brandstreets.com.cn, BrandStyleSales.com, Brandtrading.net, BuyMyShoes.net, Cn-nike.us, 26 DreamyShoes.com, Eastarbiz.com, Eastarbiz.net, EBuyNike.com, ECshoes.com, EGoToBuy.com, 27 28 EMSYou.com, EShoes99.com, Eshoes99.net, Famous-Shop.com, Fansjersey.com, Louis Vuitton v Akanoc, et al.: First Amended Complaint - 10 - EXHIBIT B PAGE 32 1 2 GucciFendi.com, GZ-Free.com, HandBagSell.com, Imitation-Gold.com, InNike.com, Lkkfashion2006.com, Ilouisvuitton.com, LongTimeGroup.com, Louis-vuitton-bags.org, 3 Louisvuittonbagz.com, LoverNike.com, LuxeLike.com, Luxury2Us.com, LVBagz.com, lv4 5 handbag.com, lv-nike.com, MailGoods.com, Myshoes99.com, Nike558.com, Nikeexp.com, 6 NikeShoesOffer.com, NikeWTO.com, NonStopBeauty.com, PFCStation.com, PickHipHop.com, 7 PickYourGoods.com, PickYourOrder.com, Pro-Jordan.com, Queen-bag.com, Replica-ebags.com, 8 Replicabc.com, RRGNL.com, Shoes-Order.com, SoApparel.com, Soapparel.net, Sportsvendor.biz, 9 Sunny7Shoes.com, Super925.com, Swisshours.biz, Top-handbag.com, Tytrade88.com, 10 Watchesnreplica.com, WatchesReplica.net, WatchNReplica.net, WearOnline.net, Wendy929.com, 11 Wendy929.net, Wendyluxury.com, WorldKeyTrade.com, YeahEBay.com, Yseenet.net. Louis 12 13 Vuitton is further informed and believes that most, if not all, of the websites hosted by the ISP 14 Defendants are engaged in the trafficking of counterfeit merchandise, specifically including 15 merchandise infringing the Louis Vuitton Intellectual Properties. 16 17 18 32. Defendants have been repeatedly placed on notice of the counterfeit activity which occurs using the hosting services offered by the ISP Defendants. Louis Vuitton has not granted any of the Defendants license to use, exploit any of the Louis Vuitton Intellectual Properties. The 19 ISP Defendants have taken no steps to limit, curtail, disable, stop or otherwise discontinue the 20 21 services they provide which make such infringing activity possible. Louis Vuitton is informed and 22 believes that the ISP Defendants generate revenue and profit from the Internet traffic and 23 counterfeit sales which occur as a result of their hosting activity. 24 25 33. Plaintiff has no adequate remedy at law and is suffering irreparable harm and damages as a result of the acts of Defendants as aforesaid in an amount thus far not determined. 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 11 - EXHIBIT B PAGE 33 1 FIRST CLAIM FOR RELIEF 2 (For Contributory Trademark Infringement) 3 34. Plaintiff repeats and re-alleges all of the allegations contained in paragraphs 1 4 5 6 through 33, inclusive, as though fully set forth herein. 35. The Counterfeiting Websites are engaging in illegal conduct including but not 7 necessarily limited to the promotion, advertisement, offer for sale, sale and distribution of 8 counterfeit goods in violation of the Lanham Act, as amended. 9 10 36. Defendants have actual knowledge of the Counterfeiting Websites’ illegal activities from, among other things, written notification by counsel and agents for Plaintiff. 11 37. Defendants have deliberately disregarded these notifications and have otherwise 12 13 14 15 16 17 18 consciously avoided learning about the full extent of illegal counterfeiting and infringing activities that are continuing at the Counterfeiting Websites. 38. Defendants have materially encouraged, enabled, and contributed to the infringing conduct at the Counterfeiting Websites by providing, among other things, hosting the Counterfeiting Websites, displaying offers for counterfeit products, facilitating communications by and between the sellers of counterfeit goods over the Counterfeiting Websites and their 19 distributors, consumers and vendors. 20 21 39. Defendants therefore bear contributory liability for the Counterfeiting Websites’ 22 counterfeiting of the Plaintiff’s Trademarks in violation of 15 U.S.C. § 1051, et seq. and the 23 common law. 24 25 40. Plaintiff has no adequate remedy at law and has suffered irreparable harm and damage as a result of the contributory counterfeiting conduct of the Defendants. 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 12 - EXHIBIT B PAGE 34 1 2 41. Plaintiff has sustained damages as a result of the Defendants’ wrongful contributory conduct in an amount to be ascertained at trial but in no event less than One Million Dollars 3 ($1,000,000) per trademark per counterfeit. 4 SECOND CLAIM FOR RELIEF 5 (For Vicarious Trademark Counterfeiting) 6 7 8 9 10 42. Plaintiff repeats and re-alleges all of the allegations contained in paragraphs 1 through 41, inclusive, as though fully set forth herein. 43. The illegal sales of products that infringe on the Plaintiff’s Trademarks have generated enormous sums of monies for the Counterfeiting Websites. 11 44. Despite the Defendants’ duty and right to control the Counterfeiting Websites, they 12 13 14 15 16 17 18 have taken no steps to stop or otherwise prevent the ongoing counterfeiting at the websites operated by the Counterfeiting Websites or to disconnect links directing its users to such websites. 45. Defendants are therefore vicariously liable for the damages caused to Plaintiff as a result of the illegal promotion, advertisement, offer for sale and/or sale of counterfeit merchandise at the Counterfeiting Websites in violation of 15 U.S.C. § 1051, et seq. and the common law. 46. Plaintiff has sustained damages as a result of the Defendants’ wrongful vicarious 19 conduct in an amount to be determined at trial but in no event less than One Million Dollars 20 21 ($1,000,000) per trademark per counterfeited. 22 THIRD CLAIM FOR RELIEF 23 (Contributory and Vicarious Copyright Piracy) 24 25 47. Plaintiff repeats and re-alleges all of the allegations contained in paragraphs 1 through 33, inclusive, as though fully set forth herein. 26 48. Louis Vuitton is informed and believes that Defendants earn revenues for hosting 27 28 the Counterfeiting Websites for each Internet user directed to websites operated by the Louis Vuitton v Akanoc, et al.: First Amended Complaint - 13 - EXHIBIT B PAGE 35 1 2 Counterfeiting Websites. The ISP Defendants do so pursuant to terms of use which permit them to discontinue links through websites offering product infringing the rights of third parties. 3 49. Defendants have actual knowledge of the illegal acts of the Counterfeiting Websites 4 5 from, among other things, written notification from Louis Vuitton. Defendants have therefore 6 deliberately disregarded and otherwise consciously avoided learning about the full extent of illegal 7 counterfeiting and infringing activities that are continuing at the websites operated by the 8 Counterfeiting Websites. 9 10 50. Defendants have knowingly and willfully permitted and continue to permit the Counterfeiting Websites to sell and offer for sale unauthorized copies of products bearing the Louis 11 Vuitton Intellectual Properties at the Counterfeiting Websites. 12 13 14 15 16 17 18 51. Defendants have therefore materially encouraged, enabled, and contributed to the infringing conduct at the websites operated by the Counterfeiting Websites. 52. Plaintiff has sustained, and will continue to sustain, substantial injuries, loss, and damage to its exclusive rights in the Louis Vuitton Copyrights, and Plaintiff has sustained and will continue to sustain damages from the loss of value of the exclusive rights thereunder as a result of the Defendants’ wrongful conduct in an amount to be determined at trial but in no event less than 19 One Hundred and Fifty Thousand Dollars ($150,000) per copyright infringed. 20 PRAYER FOR RELIEF 21 WHEREFORE, Plaintiff demands: 22 23 24 25 1) That Defendants and their officers, agents, servants, employees, representatives, successors, and assigns; and all other persons, firms, or corporations in active concert or participation with them who receive actual notice of this Order, be temporarily, preliminarily and 26 permanently enjoined and restrained from: 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 14 - EXHIBIT B PAGE 36 1 a) 2 directly or indirectly infringing Plaintiff’s Trademarks or any marks similar thereto, in any manner, including generally, but not limited to engaging in 3 services and manufacturing, importing, distributing, advertising, selling, 4 and/or offering for sale any merchandise which infringes said Trademarks 5 6 and specifically: 7 i) advertising, selling, and/or offering for sale any other 8 unauthorized merchandise, which pictures, reproduces, or 9 utilizes the likenesses of or which copy or are likely to cause 10 consumer confusion with any of Plaintiff’s Trademarks; 11 ii) hosting websites which offer product purporting to be 12 Plaintiff’s product or any imitation or replica thereof; 13 14 b) indirectly infringing the Louis Vuitton Copyrights and Designs, in any 15 manner, including generally, but not limited to engaging in services and 16 manufacturing, importing, distributing, advertising, selling, and/or offering 17 for sale any merchandise which infringes said Copyrights and specifically: 18 i) advertising, selling, and/or offering for sale any other 19 unauthorized merchandise, which pictures, reproduces, or 20 utilizes the likenesses of or which copy or are substantially 21 similar to any of the Louis Vuitton Copyrights and Designs; 22 ii) 23 24 25 hosting websites which offer product purporting to be Plaintiff’s product or any imitation or replica thereof; c) effecting assignments or transfers, forming new entities or associations or 26 utilizing any other device for the purpose of circumventing or otherwise 27 28 avoiding the prohibitions set forth in subparagraphs A and B. Louis Vuitton v Akanoc, et al.: First Amended Complaint - 15 - EXHIBIT B PAGE 37 1 2 2) That Defendants be required to account to Plaintiff for all profits and damages resulting from Defendants’ infringing activities and that the award to Plaintiff be increased as 3 provided for under 15 U.S.C. §1117; 4 5 6 7 8 9 10 3) That Defendants pay over to Plaintiff in the alternative statutory damages pursuant to 15 U.S.C. § 1117(c); 4) That Plaintiff have a recovery from Defendants of the costs of this action and Plaintiff’s reasonable attorneys’ fees pursuant to 15 U.S.C. §1117(b); 5) That Defendants be required to account to Plaintiff for all profits and damages resulting from Defendants’ respective infringing activities as provided for under 17 U.S.C. §504; 11 6) That Defendants pay over to Plaintiff in the alternative statutory damages pursuant 12 13 14 15 16 17 18 to 15 U.S.C. § 504; 7) That Plaintiff have a recovery from Defendants of the costs of this action and Plaintiff’s reasonable attorneys’ fees pursuant to 17 U.S.C. §505; 8) That Plaintiff has all other and further relief as the Court may deem just and proper under the circumstances. Dated: July 15, 2008 J. ANDREW COOMBS, A Professional Corporation 19 20 _/s/ J. Andrew Coombs__________________ By: J. Andrew Coombs Attorneys for Plaintiff Louis Vuitton Malletier, S.A. 21 22 23 24 25 26 27 28 Louis Vuitton v Akanoc, et al.: First Amended Complaint - 16 - EXHIBIT B PAGE 38