Professional Documents
Culture Documents
3:18-cv-02106
(N.D. Cal. Apr 06, 2018), Court Docket
Printed By: CCANAHAI on Monday, April 9, 2018 - 11:38 AM
Levi Strauss & Co. v. Kenzo Paris USA LLC et al, Docket No. 3:18-cv-02106 (N.D. Cal. Apr 06, 2018), Court Docket
Multiple Documents
Part Description
1 11 pages
2 Exhibit A
3 Exhibit B
4 Exhibit C
5 Exhibit D
6 Civil Cover Sheet
© 2018 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Service
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Case 3:18-cv-02106-LB Document 1 Filed 04/06/18 Page 1 of 11
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23 1. Plaintiff LS&Co.’s first, second and third claims arise under the Trademark Act of
24 1946 (the Lanham Act), as amended by the Trademark Dilution Revision Act of 2006 (15 U.S.C.
25 §§ 1051, et seq.). This Court has jurisdiction over such claims pursuant to 28 U.S.C. §§ 1338(a) and
26 1338(b) (trademark and unfair competition), 28 U.S.C. § 1331 (federal question) and 15 U.S.C. § 1121
27 (Lanham Act). This Court has supplemental jurisdiction over the remaining state law claims under
28 28 U.S.C. § 1367.
1 2. LS&Co. is informed and believes that venue is proper in this Court under 28 U.S.C.
2 § 1391(b) because Kenzo transacts affairs in this district and because a substantial part of the events
3 giving rise to the claims asserted arose in this district.
4 3. Intra-district assignment to any division of the Northern District is proper under Local
5 Rule 3-2(c) and the Assignment Plan of this Court as an “Intellectual Property Action.”
6 PARTIES
7 4. LS&Co. is a Delaware corporation with its principal place of business at Levi’s Plaza,
8 1155 Battery Street, San Francisco, California 94111. Operating since approximately the 1850s,
9 LS&Co. is one of the oldest and best known apparel companies in the world. It manufactures, markets
10 and sells a variety of apparel, including its traditional LEVI’S® brand products.
11 5. LS&Co. is informed and believes that defendant Kenzo Paris USA LLC is a Delaware
12 limited liability company with its principal place of business at 80 State Street, Albany, New York
13 12207.
14 6. LS&Co. is informed and believes that defendant Kenzo S.A. is a French Société
15 Anonyme with its principal place of business at 18 Rue Vivienne, Paris F75002, France.
16 7. LS&Co. is informed and believes that Kenzo manufactures, distributes and/or sells, or
17 has manufactured, distributed and/or sold, jeans and other apparel under the brand name Kenzo which
18 are offered for sale and sold throughout the United States, including in this judicial district. LS&Co.
19 is further informed and believes that Kenzo has authorized, directed, and/or actively participated in the
20 wrongful conduct alleged herein
21 FACTS AND ALLEGATIONS COMMON TO ALL CLAIMS
22 LS&Co.’s Tab Trademark
23 8. LS&Co. marks its LEVI’S® brand products with a set of trademarks that are famous
24 around the world. For many years prior to the events giving rise to this Complaint and continuing to
25 the present, LS&Co. annually has spent great amounts of time, money, and effort advertising and pro-
26 moting the products on which its trademarks are used and has sold many millions of these products all
27 over the world, including throughout the United States and in California. Through these investments
28 and large sales, LS&Co. has created considerable goodwill and a reputation for quality products.
1 LS&Co. continuously has used these trademarks, some for well over a century, to distinguish its
2 products.
3 9. Most of LS&Co.’s trademarks are federally registered; all are in full force and effect,
4 valid and protectable, and exclusively owned by LS&Co. LS&Co. continuously has used each of its
5 trademarks, from the registration date or earlier, until the present and during all time periods relevant
6 to LS&Co.’s claims.
7 10. Among its marks, LS&Co. owns the famous Tab Device Trademark (the “Tab trade-
8 mark”), which consists of a textile marker or other material sewn into one of the regular structural
9 seams of the garment. LS&Co. uses the Tab trademark on LEVI’S® jeans and a variety of other
10 clothing products.
11 11. LS&Co. began to display the Tab trademark on the rear pocket of its pants in 1936
12 when its then National Sales Manager, Leo Christopher Lucier, proposed placing a folded cloth ribbon
13 in the structural seams of the rear pocket. The purpose of this “tab” was to provide “sight identifica-
14 tion” of LS&Co.’s products. Given the distinctiveness of the Tab trademark, Mr. Lucier asserted that
15 “no other maker of overalls can have any other purpose in putting a colored tab on an outside patch
16 pocket, unless for the express and sole purpose of copying our mark, and confusing the customer.”
17 12. LS&Co. owns, among others, the following United States Registrations for its Tab
18 trademark, attached as Exhibit A. These registrations have become incontestable under the provisions
19 of 15 U.S.C. § 1065.
20 a. Registration No. 516,561 (first used as early as September 1, 1936;
21 registered October 18, 1949);
22 b. Registration No. 1,157,769 (first used as early as September 1, 1936;
23 registered June 16, 1981).
24 c. Registration No. 2,791,156 (first used as early as September 1, 1936;
25 registered December 9, 2003).
26 d. Registration No. 356,701 (first used as early as September 1, 1936;
27 registered May 10, 1938);
28 / / /
1 counsel responded the same day, reiterating LS&Co.’s concern about the infringement and noting,
2 “The tab Kenzo is using is nearly identical to LS&Co.’s trademark, and remains online and for sale
3 worldwide to our client’s detriment. There is urgency on LS&Co.’s side to receive prompt confirma-
4 tion that Kenzo has ceased selling these designs.” On March 14, 2018, following a further inquiry
5 from LS&Co.’s, Kenzo’s counsel responded that the matter was still “under review.” To date, Kenzo
6 still has not provided any substantive response to LS&Co.’s cease and desist correspondence.
7 19. On or about March 20, 2018, Kenzo introduced a new collection headlined “Kenzo
8 presents Britney Spears - La Collection Memento N°2” (hereinafter the “Kenzo Britney Spears
9 Collection”). The Kenzo Britney Spears Collection featured new products bearing the infringing
10 Kenzo Tabs. Images of garments from the Kenzo Britney Spears Collection bearing the Kenzo Tabs
11 are attached to this Complaint as Exhibit D.
12 20. LS&Co. is informed and believes that Kenzo has manufactured, marketed and sold
13 substantial quantities of products bearing the Kenzo Tabs, and has obtained and continues to obtain
14 substantial profits from these sales. LS&Co. is further informed and believes that Kenzo continues to
15 sell garments bearing pocket tab devices that are highly similar to LS&Co.’s Tab trademark and that
16 violate LS&Co.’s rights in its Tab trademark.
17 21. Kenzo’s actions have caused and will cause LS&Co. irreparable harm for which money
18 damages and other remedies are inadequate. Unless Kenzo is restrained by this Court, it will continue
19 and/or expand its illegal activities and otherwise continue to cause great and irreparable damage and
20 injury to LS&Co. by, among other things:
21 a. Depriving LS&Co. of its statutory rights to use and control use of its
22 trademark;
23 b. Creating a likelihood of confusion, mistake and deception among
24 consumers and the trade as to the source of the infringing products;
25 c. Causing the public falsely to associate LS&Co. with Kenzo and/or
26 its products, or vice versa;
27 / / /
28 / / /
1 in the public as to the affiliation, connection, association, origin, sponsorship or approval of Kenzo’s
2 products to the detriment of LS&Co. and in violation of 15 U.S.C. § 1125(a)(1).
3 31. As a direct and proximate result of Kenzo’s infringing activities, LS&Co. is entitled
4 to recover Kenzo’s unlawful profits and LS&Co.’s substantial damages under 15 U.S.C. § 1117(a).
5 32. Kenzo’s infringement of LS&Co.’s Tab trademark is an exceptional case and was
6 intentional, entitling LS&Co. to treble the amount of its damages and Kenzo’s profits, and to an award
7 of attorneys’ fees under 15 U.S.C. § 1117(a).
8 33. LS&Co. is entitled to injunctive relief pursuant to 15 U.S.C. § 1116(a).
9
THIRD CLAIM
10 FEDERAL DILUTION OF FAMOUS MARKS
(Trademark Dilution Revision Act of 2006)
11 (15 U.S.C. § 1125(c); Lanham Act § 43(c))
12 34. LS&Co. realleges and incorporates by reference each of the allegations contained in
13 paragraphs 1 through 33 of this Complaint.
14 35. LS&Co.’s Tab trademark is distinctive and famous within the meaning of the
15 Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c), and were distinctive and famous
16 prior to Kenzo’s conduct as alleged in this Complaint.
17 36. Kenzo’s conduct is likely to cause dilution of LS&Co.’s Tab trademark by diminishing
18 its distinctiveness in violation of the Trademark Dilution Revision Act of 2006, 15 U.S.C. § 1125(c).
19 37. LS&Co. is entitled to injunctive relief pursuant to 15 U.S.C. §§ 1116(a) and 1125(c).
20 FOURTH CLAIM
CALIFORNIA TRADEMARK INFRINGEMENT AND DILUTION
21 (Cal. Bus. & Prof. Code §§ 14245, 14247, 14250)
22 38. LS&Co. realleges and incorporates by reference each of the allegations contained in
23 paragraphs 1 through 37 of this Complaint.
24 39. Kenzo’s infringement of LS&Co.’s Tab trademark is likely to cause consumer
25 confusion and dilution of LS&Co.’s marks in violation of California Business & Professions Code
26 Sections 14245 and 14247.
27 40. Kenzo infringed and diluted LS&Co.’s Tab trademark with knowledge and intent to
28 cause confusion, mistake or deception.
1 41. Kenzo conduct is aggravated by that kind of willfulness, wantonness, malice and
2 conscious indifference to the rights and welfare of LS&Co. for which California law allows the
3 imposition of exemplary damages.
4 42. Pursuant to California Business & Professions Code §§ 14247 and 14250, LS&Co. is
5 entitled to injunctive relief and damages in the amount of three times Kenzo’s profits and three times
6 all damages suffered by LS&Co. by reason of Kenzo’s manufacture, use, display or sale of infringing
7 goods.
8 FIFTH CLAIM
CALIFORNIA UNFAIR COMPETITION
9 (Cal. Bus. & Prof. Code § 17200)
10 43. LS&Co. realleges and incorporates by reference each of the allegations contained in
11 paragraphs 1 through 42 of this Complaint.
12 44. Kenzo’s conduct as alleged in this Complaint constitutes “unlawful, unfair or fraudu-
13 lent business act[s] or practice[s] and unfair, deceptive, untrue or misleading advertising” within the
14 meaning of California Business & Professions Code Section 17200.
15 45. As a consequence of Kenzo’s actions, LS&Co. is entitled to injunctive relief preventing
16 the conduct alleged in this Complaint.
17 PRAYER FOR JUDGMENT
18 WHEREFORE, LS&Co. prays that this Court grant it the following relief:
19 1. Adjudge that LS&Co.’s Tab trademark has been infringed by Kenzo in violation of
20 LS&Co.’s rights under common law, 15 U.S.C. § 1114, and/or California law;
21 2. Adjudge that Kenzo has competed unfairly with LS&Co. in violation of LS&Co.’s
22 rights under common law, 15 U.S.C. § 1125(a), and/or California law;
23 3. Adjudge that Kenzo’s activities are likely to dilute LS&Co.’s famous Tab trademark
24 in violation of LS&Co.’s rights under common law, 15 U.S.C. § 1125(c), and/or California law;
25 4. Adjudge that Kenzo and its agents, employees, attorneys, successors, assigns, affiliates,
26 and joint venturers and any person(s) in active concert or participation with it, and/or any person(s)
27 acting for, with, by, through or under it, be enjoined and restrained at first during the pendency of this
28 action and thereafter permanently from:
1 material for producing or printing such items, that are in its possession or subject to its control and
2 that infringe LS&Co.’s trademarks as alleged in this Complaint;
3 7. Adjudge that Kenzo, within thirty (30) days after service of the judgment demanded
4 herein, be required to file with this Court and serve upon LS&Co.’s counsel a written report under
5 oath setting forth in detail the manner in which it has complied with the judgment;
6 8. Adjudge that LS&Co. recover from Kenzo its damages and lost profits, and Kenzo’s
7 profits, in an amount to be proven at trial, as well as punitive damages under California law;
8 9. Adjudge that Kenzo be required to account for any profits that are attributable to its
9 illegal acts, and that LS&Co. be awarded (1) Kenzo’s profits and (2) all damages sustained by
10 LS&Co., under 15 U.S.C. § 1117, plus prejudgment interest;
11 10. Adjudge that the amounts awarded to LS&Co. pursuant to 15 U.S.C. § 1117 shall
12 be trebled;
13 11. Order an accounting of and impose a constructive trust on all of Kenzo’s funds and
14 assets that arise out of its infringing activities;
15 12. Adjudge that LS&Co. be awarded its costs and disbursements incurred in connection
16 with this action, including LS&Co.’s reasonable attorneys’ fees and investigative expenses; and
17 13. Adjudge that all such other relief be awarded to LS&Co. as this Court deems just and
18 proper.
19
20 Dated: April 6, 2018 Respectfully submitted,
21 KILPATRICK TOWNSEND & STOCKTON LLP
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EXHIBIT A
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EXHIBIT B
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Exhibit B‐1
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Exhibit B‐2
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Exhibit B‐3
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Exhibit B‐4
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Exhibit B‐5
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Exhibit B‐6
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Exhibit B‐7
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Exhibit B‐8
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Exhibit B‐9
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Exhibit B‐10
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Exhibit B‐11
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Exhibit B‐12
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Exhibit B‐13
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Exhibit B‐14
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EXHIBIT C
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EXHIBIT D
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CIVIL COVER SHEET
JS-CAND 44 (Rev. 06/17)
The JS-CAND 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 in its original form by the Judicial Conference of the United States in September 1974, is required for the Clerk of
Court to initiate the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
Levi Strauss & Co. Kenzo Paris USA LLC and Kenzo S.A.
(b) County of Residence of First Listed Plaintiff San Francisco, California County of Residence of First Listed Defendant
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Gregory S. Gilchrist (SB #11536) | Gia L. Cincone (SB #141668) | Ryan T. Bricker (SB #269100) | Cala E. Yee (SB #306652)
KILPATRICK TOWNSEND & STOCKTON LLP
Two Embarcadero Center, Suite 1900, San Francisco, California 94111 | Telephone: (415) 576-0200
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
PTF DEF PTF DEF
1 U.S. Government Plaintiff 3 Federal Question Citizen of This State 1 1 Incorporated or Principal Place 4 4
(U.S. Government Not a Party)
of Business In This State
Citizen of Another State 2 2 Incorporated and Principal Place 5 5
2 U.S. Government Defendant 4 Diversity of Business In Another State
(Indicate Citizenship of Parties in Item III)
Citizen or Subject of a 3 3 Foreign Nation 6 6
Foreign Country
VI. CAUSE OF Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):
15 U.S.C. §§ 1051 et seq.
ACTION
Brief description of cause:
Trademark infringement, unfair competition, and dilution.
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, Fed. R. Civ. P. JURY DEMAND: Yes No
Authority For Civil Cover Sheet. The JS-CAND 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and
service of pleading or other papers as required by law, except as provided by local rules of court. This form, approved in its original form by the Judicial
Conference of the United States in September 1974, is required for the Clerk of Court to initiate the civil docket sheet. Consequently, a civil cover sheet is
submitted to the Clerk of Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I. a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides at the
time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
condemnation cases, the county of residence of the “defendant” is the location of the tract of land involved.)
c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section “(see attachment).”
II. Jurisdiction. The basis of jurisdiction is set forth under Federal Rule of Civil Procedure 8(a), which requires that jurisdictions be shown in
pleadings. Place an “X” in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
(1) United States plaintiff. Jurisdiction based on 28 USC §§ 1345 and 1348. Suits by agencies and officers of the United States are included here.
(2) United States defendant. When the plaintiff is suing the United States, its officers or agencies, place an “X” in this box.
(3) Federal question. This refers to suits under 28 USC § 1331, where jurisdiction arises under the Constitution of the United States, an amendment
to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code
takes precedence, and box 1 or 2 should be marked.
(4) Diversity of citizenship. This refers to suits under 28 USC § 1332, where parties are citizens of different states. When Box 4 is checked, the
citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
cases.)
III. Residence (citizenship) of Principal Parties. This section of the JS-CAND 44 is to be completed if diversity of citizenship was indicated above.
Mark this section for each principal party.
IV. Nature of Suit. Place an “X” in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI below, is
sufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits more than
one nature of suit, select the most definitive.
V. Origin. Place an “X” in one of the six boxes.
(1) Original Proceedings. Cases originating in the United States district courts.
(2) Removed from State Court. Proceedings initiated in state courts may be removed to the district courts under Title 28 USC § 1441. When the
petition for removal is granted, check this box.
(3) Remanded from Appellate Court. Check this box for cases remanded to the district court for further action. Use the date of remand as the filing
date.
(4) Reinstated or Reopened. Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.
(5) Transferred from Another District. For cases transferred under Title 28 USC § 1404(a). Do not use this for within district transfers or
multidistrict litigation transfers.
(6) Multidistrict Litigation Transfer. Check this box when a multidistrict case is transferred into the district under authority of Title 28 USC
§ 1407. When this box is checked, do not check (5) above.
(8) Multidistrict Litigation Direct File. Check this box when a multidistrict litigation case is filed in the same district as the Master MDL docket.
Please note that there is no Origin Code 7. Origin Code 7 was used for historical records and is no longer relevant due to changes in statute.
VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
statutes unless diversity. Example: U.S. Civil Statute: 47 USC § 553. Brief Description: Unauthorized reception of cable service.
VII. Requested in Complaint. Class Action. Place an “X” in this box if you are filing a class action under Federal Rule of Civil Procedure 23.
Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.
VIII. Related Cases. This section of the JS-CAND 44 is used to identify related pending cases, if any. If there are related pending cases, insert the docket
numbers and the corresponding judge names for such cases.
IX. Divisional Assignment. If the Nature of Suit is under Property Rights or Prisoner Petitions or the matter is a Securities Class Action, leave this
section blank. For all other cases, identify the divisional venue according to Civil Local Rule 3-2: “the county in which a substantial part of the
events or omissions which give rise to the claim occurred or in which a substantial part of the property that is the subject of the action is situated.”
Date and Attorney Signature. Date and sign the civil cover sheet.
Levi Strauss & Co. v. Kenzo Paris USA LLC et al, Docket No. 3:18-cv-02106 (N.D. Cal. Apr 06, 2018), Court Docket
General Information
© 2018 The Bureau of National Affairs, Inc. All Rights Reserved. Terms of Service
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