dj infamous v. entertainment one - dj infamous trademark complaint.pdf

8/10/2019 DJ Infamous v. Entertainment One - DJ Infamous trademark complaint.pdf

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3. Upon information and belief, Defendant Donald is an individual residing in

Clayton County, Georgia and is over the age of eighteen and is otherwise sui juris .

4. Upon information and belief, Defendant eOne is a Delaware Limited Partnership,

with its principal place of business in New York County, New York.

JURISDICTION AND VENUE

5. This action arises under the Federal Trademark Act, 15 U.S.C. 1051, et seq . and

under related statutory and common laws of the State of Florida.

6. This Court has subject matter jurisdiction over this action pursuant to 28 U.S.C.

1131 and 1338(a) and 15 U.S.C. 1114 and 1125 as, among other things, Plaintiffs cause ofaction arises under the Federal Trademark Act (The Lanham Act of 1946), 15 U.S.C. 1051 et

seq . Further, this Court has jurisdiction over Plaintiff s Florida state common law claims

pursuant to 28 U.S.C. 1367.

7. This Court has personal jurisdiction over both Defendants because Defendants

have continuous, systematic, and substantial presences within this Judicial District including

marketing, promoting, selling and distributing Defendants good s and services in this Judicial

District.

8. In addition, this Court has personal jurisdiction over Defendant Donald and

Defendant eOne pursuant to 48.193(2), Fla. Stat., because both Defendants are engaged in

substantial and not isolated activity within this State and Judicial District, including particularly

through the sale, distribution, marketing and promotion of phonorecords and music videos in the

State of Florida and this Judicial District.

9. Defendants are also subject to the personal jurisdiction of this Court pursuant to

48.193(1)(a), Fla. Stat., because they conduct, engage in, and carry out substantial business

Case 1:14-cv-23055-KMW Document 15 Entered on FLSD Docket 11/17/2014 Page 2 of 22


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activities in this State, and because they have committed the tortious acts of trademark

infringement and unfair competition more particularly described below in this State and Judicial

State, because they have sold the infringing goods and/or provided services in this State, and

such causes of action arose from the foregoing acts.

10. In addition, Defendants are also subject to the personal jurisdiction of this Court

pursuant to 48.193(1)(a)(2) and 48.193(1)(a)(6), Fla. Stat., because Defendants have

committed tortious acts or omissions with this State and have caused injury to persons within this

State arising out of acts or omissions, and Defendants regularly do and/or solicit business within

this State and Judicial District, and products, materials and services produced by Defendantswere and are used and consumed within this State and Judicial District in the ordinary course of

commerce, trade or use, and the Defendants engage in other persistent courses of conduct,

including deriving substantial revenue from goods used or consumed and services rendered in

this State and Judicial District.

11. Both Defendants have systematically directed their business activities into this

State and Judicial District.

12. Venue is proper in this Judicial District pursuant to 28 U.S.C. 1391(b)(1), 28

U.S.C. 1391(c), and pursuant to 28 U.S.C. 1391(b)(2) as a substantial part of the events or

omissions giving rise to the claims asserted in this action occurred in this Judicial District and

Defendants conduct ongoing and continuous business activities in this State and District.

FACTUAL BACKGROUND

13. Plaintiff DJ Infamous is a world-renowned, multi-platinum and Grammy award-

winning music producer and disc jockey (DJ) who is in the business of providing professional

DJ entertainment services and, in addition, has produced singles promoted in connection with



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numerous platinum-selling artists.

14. Plaintiff DJ Infamous is the owner of the U.S. Trademark Application, Ser. No.

86301703, as set forth on the Principal Register of the United States Patent and Trademark

Office (the USPTO) on June 5, 2014 to Marco Rodriguez- Diaz p/k/a DJ Infamous for the

trademark DJ INFAMOUS for Entertainment services by a musical artist and producer,

namely, musical composition for others and production of musical sound recordings;

Entertainment services in the nature of live musical performances, namely, personal appearances

by a disc jockey (the Mark) .

15.

Plaintiff has continuously used his Mark in commerce in connection with the provision of his DJ and production services since at least as early as 1996 when Plaintiff and

Plaintiffs DJ services were exhibited in association with the Mark in connection with a disc

jockey battle at a record store known as Dark , located in Broward County, Florida. A video

of the event was thereafter released for sale and additionally distributed through public access

television.

16. In 1997, Plaintiff DJ Infamous established a DJ group for purposes of competing

in the DMC World DJ Championships, as first launched in 1985.

17. The DJ group was known as The -Allies , and, in addition to DJ Infamous,

included other fellow world- champion DJs ; DJ Atrak, DJ Craze and DJ Develop.

18. In 1998, Plaintiff was awarded the title of the International Turntablist Federation

(ITF) USA DJ Champion, in addition to receiving the second place prize in the DJ World

Finals as held in Amsterdam, Netherlands.

19. In 1999, Plaintiff won a world championship DJ title and toured as a headliner

across five continents, at all times prominently displaying and using the Mark in connection with



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the promotion and performance of his professional DJ services.

20. Thereafter, from 1999 to 2001, Plaintiff personally won a second and third world

championship DJ title in connection with his professional DJ performances.

21. In 2001, The Allies, including Plaintiff DJ Infamous, were inducted into the DMC

World DJ Championship Hall of Fame.

22. Amid Plainti ffs success in, among other things, the DJ competitions, Plaintiff

received numerous sponsorship deals and was displayed on several printed advertisements

relating to DJ products, clothing, and hip-hop music.

23.

In 2001, Plaintiff started an internationally- circulated magazine called Tablist ,which was dedicated to covering turntablism, referring to the art of DJ performances through

vinyl record turntables. Plaintiff was the editor-in-chief of Tablist Magazine and was

consistently credit ed as DJ Infamous.

24. Plaintiff DJ Infamous has also appeared in multiple DJ instructional videos, which

have been sold at big-box music stores such as Guitar Center and Sam Ash, and Plaintiff was

featured in the awarding-winning feature-length documentary film, Scratch.

25. In addition, as early as 1999, Plaintiff was depicted and referenced as DJ

Infamous on a nationally televised broadcast giving a DJ performance wherein one celebrity

guest on the program, Joseph Saddler p/k/a Grandmaster Flash, considered to be a pioneer of

turntabilism and hip-hop music generally, compliments Plaintiff on his DJ skills following his

performance.

26. In addition to his world-renowned DJ skills, Plaintiff DJ Infamous is an

established music producer and composer who, among other things, creates, composes, writes,

arranges, programs, mixes, remixes, routes and processes sound recordings and underlying



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compositions for various musical recording artists and record companies (hereinafter referred to

as Production Services).

27. In or around 2005, Plaintiff began expanding his Production Services, producing

hit singles for top-selling Rap and R&B artists. The albums on which Plaintiff is featured have,

to date, sold over 15 million copies.

28. In or around 2008, Plaintiff was nominated for a Grammy award in connection

with work as a producer on Dwayne Michael Carter, Jr. p/k/a Lil Waynes album entitled Tha

Carter III.

29.

In total, Plaintiff DJ Infamous has produced singles on no less than thirty (30)albums by and through his Mark.

30. Currently, Plaintiff is signed with Universal Music Group.

31. Apart from his national recognition, DJ Infamous remains an extremely

prominent local music figure in South Florida in his capacity as both a DJ and music producer,

and has also performed several DJ exhibitions in Miami, Florida throughout the past two years.

32. Recently, Plaintiff collaborated with the Miami Heat basketball organization on a

short film entitled Heat Nation, released around October 2014, for which he composed the

films score.

33. In further collaboration with the Miami Heat basketball organization, Plaintiff DJ

Infamous produced the 2014-2015 introduction music which is used as the entrance theme for

the Miami Heat players.

34. Plaintiff DJ Infamous, at all times in connection and association with his Mark,

continues to produce hip-hop and R&B singles, as well as tour and perform his live professional

DJ services across the country.



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Defenda nts Infringing Activities

35. Plaintiff recently became aware that Defendant Donald was infringing Plaintiffs

Mark, and that Defendant Donald was offering disc jockey and producer services of a

substantially similar and competitive nature to those offered by DJ Infamous, under the identical

name and Mark of DJ Infamous.

36. Specifically, Plaintiff DJ Infamous was informed by consumers, customers,

potential customers, and others, who performed internet searches using Google, Yahoo, and

other search engines, while seeking the services of DJ Infamous, that they were instead directed

to various websites related to Defendant Donald, including, without limitation,http://instagram.com/DJInfamous (the Donald Instagram Account ) and

https://twitter.com/djinfamousatl (the Donald Twitter Account) .

37. Defendant Donald, by and through, among other avenues, his Donald Instagram

Account and Donald Twitter Account, uses the Mark to promote disc jockey entertainment and

production services directly competitive to those of DJ Infamous.

38. Consumers, customers, potential customers, and others have expressed confusion

to Plaintiff as a result of having been directed to and/or discovering, among other websites, the

Donald Instagram Account and Donald Twitter Account, when seeking the services of Plaintiff.

39. In fact, reflecting the severe and pervasive consumer confusion emanating from,

among other things, Defendant Donalds willful and unlawful use and exploitation of Plaintiff DJ

Infamous Mark, several prominent music websites mistakenly attribute photographs of

Defendant Donald to Plaintiff DJ Infamous biographical information . Additionally, other

prominent music websites mistakenly attribute Plaintiff s biographical information to Defendant

Donald and music released by Defendants and/ or otherwise conflate DJ Infamous background



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with that of Defendant Donald. (See Composite Exhibit A).

40. On the Donald Twitter Account, Defendant Donald prominently features a

clickable html link to a website entitled djinfamous.com, which is currently registered under

and hosted by internet domain registrar and web hosting company Go Daddy.

41. The music label to which Defendant Donald is current signed, Defendant eOne, is

regarded as the largest independent music label in North America.

42. According to eOne s official website, the music label engages in distribution,

artist promotion, and licensing throughout North America.

43.

Defendant eOne systematically and continuously markets to and distributes itsvast catalog of music, including that of Defendant Donalds , in, among other states, Florida.

44. Defendant eOne also actively promotes Defendant Donald and his infringing use

of the Plaintiffs D J Infamous Mark on its official website, as a member of its active hip-hop

artist roster. (See Exhibit B ).

45. Further exacerbating the confusion caused by Defendant eOnes promotion and

distribution of Defendant Donald, his music, and his infringing use of the DJ Infamous Mark,

is the fact that Plaintiff DJ Infamous has actually produced multiple songs for several artists

displayed on eOnes cat alog, including, among others, rappers Fat Joe and Noreaga.

46. As such, eOne is concurrently marketing, promoting, distributing and displaying

Defendant Donald and his infringing DJ Infamous Mark while, at the same time, Plaintiff DJ

Infamous is featured and credited as the producer for several artists likewise displayed on eOne s

catalog.

47. In addition to both Defendants generally marketing, promoting, selling and

distributing Defendant Donalds services and goods in Florida, Defendant Donald has performed



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his disc jockey services using Plaintiffs name and the DJ Infamous Mark at nightclubs and

venues throughout the country, including performances in nightclubs in Miami Beach, Florida.

48. Defendant Donalds disc jockey performances in Miami Beach, Florida using the

DJ Infamous name were especially confusing to Miami-Dade County residents because

Plaintiff DJ Infamous is a prominent local figure in Miami-Dade County, Florida.

49. More recently, on or around November 11, 2013, Defendant Donald, by and

through Defendant eOne, released a sound recording single entitled Double Cup under the

name DJ Infamous .

50.

Double Cup was distributed by Defendant eOne on iTunes for sale as a digitalrecording download, and was purchased by consumers nationwide, including by numerous

consumers in Florida and in this District. Double Cup was also published online by Defendant

eOne on the official eOne Music SoundCloud profile page located at

https://soundcloud.com/eone-music/dj-infamous-double-cup, wherein consumers can either

listen to the recording for free or purchase the recording through a link to iTunes.

51. Subsequently, on or around May 24, 2014, Defendant Donald performed at a

party in Miami Beach, Florida to promote the release of his new single entitled Double Cup

(Remix) , all while continuing his infringing use o f the DJ Infamous Mark (the Miami Beach

Release Party).

52. The Miami Beach Release Party, billed as Famous & Infamous: Double Cup

Remix Release Party , was promoted to South Florida residents via, among other places, online,

and tickets were sold online on various ticket vendor websites. (See Composite Exhibit C ).

53. In connection with both Double Cup and Double Cup (Remix) (collectively

the Donald Singles), Defendants have identified the artist to be DJ Infamous, and have



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promoted and distributed the singles as featuring the performance of DJ Infamous.

54. Subsequently, on or around June 25, 2014, Defendants released a music video for

the Double Cup (Remix) single, which was hosted by several websites and distributed

throughout the internet (the Donald Music Video) .

55. The Donald Music Video, which features Defendant Donald, was filmed in and

took place in, at least partially, Miami Beach, Florida and/or other parts of Miami-Dade County,

Florida. (See Composite Exhibit D).

56. In an early scene of the Donald Music Video, Defendant Donald is shown

standing in front of a large home with a Miami Beach ocean skyline in the background. Duringthis scene, Donald holds out toward the camera the pendant of his gold necklace which reads

We the Best Music Group .

57. We the Best Music Group (WTB) is a Miami-based hip-hop imprint record

label. WTB is known in the hip-hop community for its Miami-based founder DJ Khaled and its

consistent promotion of the city of Miami in its music.

58. Defendant Donald has promoted ties to Miami-based WTB and DJ Khaled since

around May of 2010.

59. To date, as reflected by the widespread confusion caused by Defendants

infringing use of Plaintiffs Mark, websites of music industry -leading media outlets, including, in

particular, MTV and Billboard, have mistakenly attributed recordings by Defendant Donald to

Plaintiff DJ Infamous in their biographies of Plaintiff. (See Composite Exhibit A).

Notice of Infringement

60. On or around June 11, 2014, Plaintiff caused to have delivered to Defendants a

cease and desist letter highlighting Plaintiffs longstanding and extensive use of the Mark as well



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as the nature of Defendants infringement of Plaintiffs Mark , demanding that Defendants cease

and desist any future use of the Mark (Plaintiffs Ce ase and Desist Letter) .

61. In Plaintiffs Cease and Desist Letter, Plaintiff explicitly informed Defendants

that Plaintiff maintained a valid, active registration application of the Mark on the Principal

Register in the United States Patent and Trademark Office.

62. Notably, Plaintiffs Cease and Desist Letter explained that Plaintiff DJ Infamous

had been actively using the Mark in commerce since, at the latest, 1998, the year in which

Plaintiff was named the ITF USA DJ Champion.

63.

In response, on or around July 7, 2014, counsel for Defendant Donald sent anelectronic mail message to counsel for Plaintiff acknowledging th e receipt of Plaintiffs Cease

and Desist Letter.

64. Thereafter, on or around August 4, 2014, having been put on notice of Defendant

Donalds infringing use of the Mark, and having acknowledged Plain tiffs Cease and Desist

Letter, Defendant Donald, in bad faith, reflexively proceeded to disingenuously register

Plaintiffs DJ Infamous Mark under Defendant Donald s name w ith the USPTO.

65. The DJ Infamous mark fraudulently registered by Defendant Donald was a

service mark described as serving largely the same goods and services as Plaintiffs Mark,

including, among others disc jockey services and musical compositions and sound recordings.

66. Defendant only sought to register Plaintiffs Mark with the USPTO after

Plaintiff sent Plaintiff s Cease and Desist Letter, despite being fully aware that Plaintiff had

already registered this exact same Mark.

67. Notwithstanding Defendant Donalds express knowledge that Plaintiff DJ

Infamous maintained an active registration in the Mark, Defendant Donald, or his representative,



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signed a declaration in his Trademark/Service Mark Application, Principal Register whi ch

reads:

The signatory believes that to the best of the signatory's knowledge and belief, no

other person has the right to use the mark in commerce, either in the identicalform or in such near resemblance as to be likely, when used on or in connectionwith the goods/services of such other person, to cause confusion or mistake, or todeceive. The signatory being warned that willful false statements and the like are

punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, andthat such willful false statements and the like may jeopardize the validity of theapplication or any registration resulting therefrom, declares that all statementsmade of his/her own knowledge are true and all statements made on informationand belief are believed to be true.

68. Additionally, ostensibly reacting to the fact that Plaintiff DJ Infamous has been

using the Mark since 1996 and in commerce since 1998 , Defendant Donalds subsequently-filed

fabricated registration conveniently states that Defendant Donald first used the name DJ

Infamous in commerce in 1994.

69. However, in a 2012 interview with Prime Time Radio with J -Rod, Defendant

Donald explained his beginnings as a radio disc jockey, wherein he claimed he began in 1998

at age 17. If true, this means that Defendant Donald represented to the USPTO that he has

been using the using the DJ Infamous mark in commerce since approximately age 13.

70. To date, Defendants continue to willfully and unlawfully exploit Plaintiffs Mark

in commerce against the express requests by Plaintiff to cease and desist such use.

71. Specifically, among other willful bad faith acts, subsequent to the receipt of

Plaintiffs Cease and Desist Letter, Defendant Donald has brazenly developed a Soundcloud

profile as located at https://soundcloud.com/dj-infamous-1-1, entitled THE REAL DJ

INFAMOUS (the Donald Soundcloud Account) (collectively with the Donald Instagram

Account and Donald Twitter Account, the Donald Online Accounts) .

72. By and through, among other avenues, the Donald Soundcloud Account,



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Defendants have since released additional sound recording single s, including Something Right

and another entitled Dikembe which exploit the Mark in its general promotion and distribution

without the consent of Plaintiff DJ Infamous.

73. Defendants use in commerce of Plaintiff DJ Infamous Mark, which is not only

substantially similar, but identical to Plaintiff DJ Infamous Mark , is clearly confusing and has

caused, and is likely to continue to cause, significant confusion among potential purchasers and

consumers of the p arties respective goods and services, and has further caused and will continue

to cause significant confusion amount consumers based in the State of Florida and this District.

74.

Defendant Donald did not begin use of his infringing DJ Infamous mark inconnection with the provision of his goods and services until after Plaintiff began use of the

Mark.

75. Defendants wrongful and willful actions in the infringement of Plaintiffs

proprietary rights in the Mark have caused substantial injury to Plaintiff.

76. All conditions precedent to the institution of this action have been satisfied,

discharged, excused, and/or waived.

COUNT IFEDERAL TRADEMARK INFRINGEMENT IN VIOLATION OF 15 USC 1114

( As Against All Defendants )

77. Plaintiff hereby incorporates by reference and realleges each and every allegation

of paragraphs 1 through 76 above.

78. The use in commerce by Defendants Donald and eOne of the Mark DJ

INFAMOUS has been without the consent of Plaintiff, the registrant of U.S. Trademark

Application, Ser. No. 86301703, in violation of 15 U.S.C. 1114.

79. The use in commerce of, among other things, the Donald Instagram Account,



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Donald Twitter Account and the Donald Singles are also confusingly similar to Plaintiffs Mark,

and such use has been without the consent of Plaintiff.

80. Defendants release of, among other things, the Donald Singles, in connection

with the Mark has been without the consent of Plaintiff.

81. The aforesaid uses in commerce of Plaintiffs Mark, which are colora ble

imitations, counterfeits, copies, or confusingly similar to Plaintiffs Mark, by Defendants are

likely to cause confusion, or to cause mistake, or to deceive, in violation of 15 U.S.C. 1114,

and they have caused such confusion.

82.

The aforesaid uses in commerce of Plaintiffs Mark b y Defendants have causedsubstantial confusion and mistake, and have deceived customers of Plaintiff, potential customers

of Plaintiff, and others seeking services from Plaintiff, nationwide, and particularly in Florida, in

violation of 15 U.S.C. 1114.

83. Plaintiff placed Defendant Donald on formal notice of Plaintiffs ownership of the

foregoing Mark as early as June 11, 2014, by letter, which letter was confirmed as received.

Nevertheless, Defendants have continued to offer the good and services of Defendant Donald in

commerce using the Mark.

84. By and through the aforementioned formal notice, Defendants were afforded the

opportunity to purge themselves of the actions which they have conducted. Nevertheless,

Defendants responded by stating that they would not take the actions reasonably requested by

Plaintiff to end such willful infringement.

85. Also, as a result of the Defendants infringing use of Plaintiffs Mark , web

searches for DJ Infamous result in links to the Donald Online Accounts or the Donald Singles,

wherein Plaintiffs Mark, and in several instances Plaintiffs biographical information, is



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prominently displayed.

86. In view of the foregoing, Defendants have been jointly, severally,

conspiratorially, and willfully infringing Plaintiffs Mark , whereby Plaintiff is entitled to

damages, including Defendants profits, other damages sustained by Plaintiff, the costs of this

action, and reasonable attorneys fees, as set forth in 15 U.S.C. 1117.

87. Defendants wrongful acts threaten to continue to irreparably injure Plaintiff,

unless and until said acts are enjoined by this Court, pursuant to 15 U.S.C. 1116.

COUNT IIVIOLATION OF SECTION 43 OF THE LANHAM ACT, 15 USC 1125

( As Against All Defendants )88. Plaintiff hereby incorporates by reference and realleges each and every allegation


89. Def endants use in commerce of Plaintiff Infamous exact Mark in connection

with the provision of Defendant Donalds DJ and p roduction goods and services has caused

substantial confusion and is likely to continue to cause confusion and mistake, and to deceive,

and to make consumers mistakenly believe that such goods and services are Plaintiffs goods, or

that such goods and services are sponsored by, approved by or somehow connected with

Plaintiff, with consequent injury to Plaintiff and to consumers of Plaintiffs goods and services.

90. The aforesaid infringements of Plaintiffs Mark by Defendants have caused

readily identifiable confusion nationwide, including particularly in Florida, and are likely to

continue to cause confusion or mistake, or to deceive as to the affiliation, connection, or

association of Defendants with Plaintiff DJ Infamous, or as to the origin, sponsorship, or

approval of the goods, services, or commercial activities of Defendants by Plaintiff, in violation

of Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a).



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91. The aforesaid acts of Defendants were undertaken with knowledge of Plaintiffs

prior trademark rights in the Mark.

92. Plaintiff has been and, absent injunctive relief, will continue to be irreparably

harmed by Defendants aforementioned acts, and has further suffered monetary damages in an

amount to be determined at trial.

93. Defendants wrongful acts entitle Plaintiff to damages and injunctive relief

pursuant to 15 U.S.C. 1116 and 1117.

94. Plaintiff has no adequate remedy at law.

COUNT IIICOMMON LAW TRADEMARK INFRINGEMENTAND UNFAIR COMPETITION

( As Against All Defendants )



96. The use of the Mark by Defendants has caused substantial confusion and is likely

to continue to cause confusion between Defendant Donald and/or his activities and Plaintiff DJ

Infamous and his activities nationwide, and particularly in Florida, and such use by Defendants

infringes the valuable common law rights of Plaintiff in his DJ INFAMOUS trademark.

97. The Defendants aforesaid activities also constitute unfair competition with

Plaintiff by creating confusion as to the source or sponsorship of the good and services of

Defendants and misappropriates the fine reputation and goodwill of Plaintiff in his DJ

INFAMOUS Mark, thereby injuring that reputation and goodwill, and diverting from Plaintiff

the benefits and good will arising therefrom.

98. The Defendants wrongful acts have damaged Plaintiff in an amount to be

determined at time of trial.



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99. Defendants have been on actual notice of Plaintiffs marks and registrations and

have acted willfully in infringing, and continue to infringe, Plaintiffs Mark , thereby entitling

Plaintiff to actual and punitive damages, in an amount to be proven at trial.

100. The Defendants wrongful acts have irreparably injured Plaintiff, and threaten to

continue to irreparably injure Plaintiff, unless and until said acts are enjoined by this Court, as

Plaintiff has no adequate remedy at law.

COUNT IVTRADEMARK INFRINGEMENT BASED ON REVERSE CONFUSION AND

REVERSE PALMING OFF( As Against All Defendants )



102. Defendant Donald has adopted an identical mark as Plaintiff DJ Infamous Mark.

103. Consumers are likely to mistakenly associate Plaintiffs DJ services and

Production Services with Defendant Donalds and are likely to mistakenly believe that the goods

and services of Plaintiff are actually goods and services of Defendant Donald.

104. Defendants have saturated the national market with advertising and promotions

using Plaintiffs Mark and such advertising and promotions have caused Plaintiff to lose the

value of his Mark and brand and product identity, and, perhaps most significantly, to lose control

over the goodwill and reputation associated with Plaintiffs Mark and brand, and the ability to

enter into new markets.

105. The reverse passing-off by the Defendant Donalds unauthorized and designated

use of the Mark has diminished Plaintiffs Mark, created a danger that Plaintiffs Mark could

become generic and, further, diffused the publics and potential consumers and customer s

immediate association of Plaintiffs Mark with Plaintiff as the secondary source.



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law of the State of Florida; and

d. trademark infringement based upon reverse confusion and reverse palming

off.

2. The Defendants, and each of them, their respective officers, employees, agents,

suppliers, and all those acting in concert with them be permanently restrained and enjoined from

using the M arks DJ INFAMOUS or any colorable imitation thereof, with respect to any

entertainment or similar services;

3. The Defendants, and anyone associated with them, their respective officers,

employees, agents, suppliers, and all those acting in concert with them be permanently restrainedand enjoined from infringing Plaintiffs DJ INFAMOUS Mark;

4. A judgment in favor of Plaintiff and against Defendants for the full value of all

Defendants profits derived from Defendants' unlawful acts set forth herein, together with the

damages of Plaintiff, including lost profits, in an amount to be determined;

5. The amount of any judgment be trebled pursuant to 15 U.S.C. 1117, due to the

willful infringement of Plaintiffs DJ INFAMOUS Mark by Defendants;

6. The costs of this action and Plainti ffs reasonable attorneys fees, to be taxed

against the Defendants, in accordance with 15 U.S.C. 1117;

7. All advertising materials, brochures, handouts, or any other materials containing

the DJ INFAMOUS Mark, or any colorable imitation thereof, or any other similar mark be

accounted for, and delivered to the attorney for Plaintiff for such disposal and/or destruction as

Plaintiff may exercise pursuant to 15 U.S.C. 1118.;

8. For a permanent injunction, pursuant to 15 U.S.C. 1116, against Defendants and

anyone associated with either of the Defendants, as well as each of their officers, agents,



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servants, employees, and attorneys, and those persons in active concert or participation with

them who receive actual notice of the order by personal service or otherwise from:

a. Using the DJ INFAMOUS Mark (however spelled, whether capitalized,

abbreviated, singular or plural, printed or stylized, whether used alone or

in combination with any word or words, and whether used in caption, text,

orally or otherwise); or any reproduction, counterfeit, copy, colorable

imitation or confusingly similar variation of the DJ INFAMOUS Mark

as a trade name, trademark or service mark, or in any other manner which

suggests in any way that Defendants and/or their activities originate from,are affiliated with, or are sponsored, authorized, approved or sanctioned

by Plaintiff, or that Plaintiff and/or his activities are affiliated in any way

with the Defendants;

b. Infringing Plaintiffs DJ INFAMOUS Mark or any colorable imitation

thereof;

c. Using in connection with their activities any false or deceptive

designation, representation, or description of Plaintiff or his Mark,

whether by symbols or words or statements, which would damage or

injure Plaintiff or give Defendants an unfair competitive advantage in the

marketplace;

d. Using any internet web site or domain name or metatag or online account

which includes the DJ INFAMOUS Mark or any similar marks;

e. Purchasing or using any searchable key words which include the DJ

INFAMOUS Mark ;



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f. Engaging in acts of state or common law trade name infringement,

trademark infringement, service mark infringement, unfair competition or

misappropriation which would damage or injure Plaintiff;

g. Diluting the trade name and trademarks of Plaintiff;

h. Inducing, encouraging, aiding, abetting or contributing to any of the

aforesaid acts.

9. For an award of treble damages pursuant to 15 U.S.C. 1117;

10. For an award of punitive damages, in an amount to be proven at trial;

11.

That each of the Defendants is liable, jointly and severally, for all damages due tothe collective nature of their actions, activities and tortious conduct, and

12. That the Court grant such other and further relief as this Court deems just, proper,

and equitable under the circumstances.

Dated: November 17, 2014 Respectfully submitted,

/s/ Michael A. TraubenMichael A. Trauben (Florida Bar No. 816841)[email protected], Singh & Trauben, LLP400 S. Beverly Drive, Suite 400Beverly Hills, CA 90212Telephone: (310) 856-9705Facsimile: (888) 734-3555

Attorn eys for Plain tif fMARCO RODRIGUEZ-DIAZ P/K/ADJ INFAMOUS



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CERTIFICATE OF SERVICE

WE HEREBY CERTIFY that a true and correct copy of the foregoing was served viaCM/ECF on this 17th day of November, 2014, on all counsel or parties of record on the ServiceList below.

/s/ Michael A. Trauben

SERVICE LIST

Jeff Barnes, Esq.W.J. Barnes, P.A.1515 North Federal HighwaySuite 300Boca Raton, Florida 33432Phone: (561) 864-1067Fax: (310) 275-5157

[email protected]

Attorn eys for DefendantCALVIN DONALD


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