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Trademark Infringement Case: Ronica vs. West Coast Vape

This document is a complaint filed by Ronica Holdings Limited against West Coast Vape Supply, Inc. and its principals for trademark infringement. Ronica owns the trademarks "deadmau5", which are used by electronic dance music artist Joel Zimmerman who performs under the stage name "deadmau5". The complaint alleges that West Coast Vape is manufacturing and distributing vaping products using the infringing mark "deadmodz", which is causing confusion and harming Ronica's business. Ronica is seeking damages and injunctive relief to stop the infringing activities.

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Mark Jaffe

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0% found this document useful (0 votes)

832 views51 pages

Trademark Infringement Case: Ronica vs. West Coast Vape

Uploaded by

Mark Jaffe

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Download as PDF, TXT or read online on Scribd

You are on page 1/ 51

Case 8:16-cv-00597-BRO-E Document 1 Filed 03/31/16 Page 1 of 51 Page ID #:1

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RUSS AUGUST & KABAT

Irene Y. Lee, State Bar No. 213625
Email: [email protected]
Jean Y. Rhee, State Bar No. 234916
Email: [email protected]
Twelfth Floor
12424 Wilshire Boulevard
Los Angeles, California 90025
Telephone: 310.826.7474
Facsimile: 310.826.6991
Attorneys for Plaintiff
Ronica Holdings Limited

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

RUSS, AUGUST & KABAT

SOUTHERN DIVISION

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RONICA HOLDINGS LIMITED, a

British Virgin Islands corporation,
Plaintiff,

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v.
WEST COAST VAPE SUPPLY, INC.,
a California corporation; ALHAM
BENYAMEEN, an individual; and
ANDY MICHAEL IBRAHIM, an
individual,

Defendants.

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Case No.
COMPLAINT FOR INJUNCTIVE
RELIEF AND DAMAGES BASED
UPON:
1. FEDERAL TRADEMARK
INFRINGEMENT IN
VIOLATION OF SECTION 32
OF THE LANHAM ACT
2. FALSE ASSOCIATION IN
VIOLATION OF SECTION 43(a)
OF THE LANHAM ACT
3. TRADEMARK INFRINGEMENT
IN VIOLATION OF
CALIFORNIA COMMON LAW

JURY TRIAL DEMANDED

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3537-3 160330 Complaint.docx

____________________________________________________________________________
COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES

Case 8:16-cv-00597-BRO-E Document 1 Filed 03/31/16 Page 2 of 51 Page ID #:2

Plaintiff Ronica Holdings Limited (Ronica) alleges the following as and

for its complaint against Defendants West Coast Vape Supply, Inc. (West Coast

Vape), Alham Benyameen (Benyameen), and Andy Michael Ibrahim

(Ibrahim) (collectively, Defendants):

This case arises out of Defendants blatant attempts to exploit for their

own commercial benefits the iconic deadmau5 (pronounced dead mouse)

brand developed and cultivated by Ronicas principal, the internationally-

renowned and respected electronic dance music (EDM) artist and producer, Joel

Zimmerman, who uses deadmau5 as both his stage name and a trademark.

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RUSS, AUGUST & KABAT

As detailed below, over the course of his storied career, which spans

more than a decade, deadmau5 has released scores of critically acclaimed and

chart-topping albums and singles, garnered millions of fans, won multiple

prestigious music industry awards, and given record-breaking performances at

some of the worlds most legendary venues, festivals, and award ceremonies.

deadmau5 has invested years and significant resources in developing,

designing, promoting, and protecting his products, services, business, and brand

throughout the United States, all under the deadmau5 marks.

In addition to using his formative deadmau5 marks in connection

with entertainment services and numerous recorded works, deadmau5 has, through

Ronica, licensed the use of his deadmau5 marks on a wide range of consumer

goods. As a result of this widespread and continuous use of the deadmau5 marks

and extensive promotional efforts, public exposure, and commercial success,

deadmau5 and Ronica have built valuable goodwill in the deadmau5 marks.

Defendants infringement of the deadmau5 marks is causing actual

confusion in the marketplace, chilling Ronicas licensing program, and depriving

Ronica of the ability to control the use of its valuable intellectual property.

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Despite Ronicas repeated cease and desist requests, Defendants

refuse to stop their infringing activities, thereby necessitating this action. Because
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Ronica has been harmed and will continue to be harmed unless Defendants are

enjoined from their infringing activities, Ronica brings this Complaint, seeking,

among other things, actual damages, punitive damages, and injunctive relief.

PARTIES

Plaintiff Ronica is a British Virgin Islands corporation, with an

address at 16000 Ventura Boulevard, Suite 600, Encino, California 91436. Ronica

is the owner of the subject deadmau5 marks, which it licenses for use on or in

connection with all manner of consumer goods throughout the United States and

the world.

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RUSS, AUGUST & KABAT

Defendant West Coast Vape is a California corporation having a

principal place of business at 5445 Oceanus Drive, Suite No. 102, Huntington

Beach, California 92649, with a registered agent for service of process at 16541

Gothard Street, Suite No. 201, Huntington Beach, California 92647. Ronica is

informed and believes that West Coast Vape is manufacturing, marketing and

distributing products under the mark deadmodz, which infringes upon Ronicas

deadmau5 marks (the Infringing Mark).

On information and belief, Defendant Benyameen is one of the two

principals of West Coast Vape and actively directed, participated in, and ratified

the acts complained of herein. Ronica is further informed and believes, and based

thereon alleges that Benyameen is a resident of the State of California with a

residence in this judicial district.

10.

On information and belief, Defendant Ibrahim is the other of the two

principals of West Coast Vape and actively directed, participated, and ratified the

acts complained of herein. Ronica is further informed and believes, and based

thereon alleges that Ibrahim is a resident of the State of California with a residence

in this judicial district.

JURISDICTION AND VENUE

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11.

This is an action for trademark infringement, false association and

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false advertising under the Trademark Act of 1946, as amended, 15 U.S.C. 1051

et seq. (the Lanham Act), and for trademark infringement under the common law

of the State of California.

12.

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U.S.C. 1121 and 28 U.S.C. 1331 and 1338. Supplemental jurisdiction exists

over the California common law claim pursuant to 28 U.S.C. 1367(a).

13.

Venue lies in this district under 28 U.S.C. 1391(b) and (c) because

the parties are located in and/or transact their affairs in this judicial district, and/or

a substantial part of the events or omissions giving rise to the claim occurred in this

judicial district, and all the parties are subject to this Courts personal jurisdiction.
ALLEGATIONS COMMON TO ALL CLAIMS FOR RELIEF

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RUSS, AUGUST & KABAT

This Court has jurisdiction over the Lanham Act claims pursuant to 15

deadmau5s Valuable Intellectual Property

The Origin of deadmau5 and the deadmau5 Marks

14.

As noted by well-known publications such as USA Today and Your

EDM magazine, over the past 14 years, deadmau5 has dominate[d] the EDM

scene, in large part due to his efforts to painstakingly curat[e] and develop[] an

iconic, recognizable brand. Attached as Exhibit 1 are true and correct copies of

the aforementioned USA Today and Your EDM articles.

15.

The deadmau5 brand was born in or around early 2002, when Mr.

Zimmerman took his computer apart to make repairs, and found a dead mouse

inside. After he posted this story on an Internet Relay Chat (IRC) channel that he

frequented, other users began referring to him as dead mouse guy. At that point,

Mr. Zimmerman tried to change his IRC username to deadmouse, but because

the IRC protocol only allowed for usernames that were eight characters long, he

trimmed it down to deadmau5 using the leet1 spelling. Mr. Zimmerman also

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Leet, which is short for leet-speak, has been around since the 1980s and is a
coded spelling system and language used in very informal communications on the
Internet, featuring letters combined with numbers or special characters in place of
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adopted his IRC username as his stage name and has openly, continuously, and

extensively used it in connection with the provision of entertainment services and

consumer products since.

16.

In or around 2006, deadmau5 began stylizing his deadmau5 word

marks using what is now widely recognized as his signature font a variation of

Arial Black in lowercase and with condensed character spacing that he uses both

with and without outlining, as follows:

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RUSS, AUGUST & KABAT

17.

Indeed, this particular font style has become so closely associated

with deadmau5 in the public mind that there are dozens of articles and blog

postings, and even a third-party YouTube video, specifically discussing this

particular font as a deadmau5 style font, the deadmau5 font or the font

deadmau5 uses. Attached as Exhibit 2 are true and correct copies of a sampling

of these articles and blog postings and a screen capture of the YouTube video

about deadmau5s distinctive font style.

18.

In 2007, deadmau5 founded his own record label, mau5trap,

pronounced mousetrap. Since its inception, mau5trap has released albums,

singles, and EPs for deadmau5 and various other acclaimed EDM artists, including

Skrillex, Sofia Toufa a.k.a. SOFI, Sydney Blu, Feed Me, Excision, Tommy Lee &

DJ Aero, Foreign Beggars, and Noisia.

19.

The mau5trap logo is also stylized using deadmau5s signature font:

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letters that they may resemble, and including inventive misspellings, jargon, and
slang. Dictionary.com Unabridged. Random House, Inc., available at
http://dictionary.reference.com/browse/leet.
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20.

At the famed Coachella music festival in 2010, deadmau5 debuted his

signature Cube stage, which consists of a three-dimensional partial or fractured

W-shaped cube covered in LED panels that deadmau5 used to display images

during his EDM performances. The Cubes debut at Coachella 2010 is pictured

below and can be seen at https://i.ytimg.com/vi/RiD7rxQVQeY/hqdefault.jpg:

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RUSS, AUGUST & KABAT

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21.

The Cube, which has been touted as revolutionary and by far the

most visually stunning stage installation at the time, quickly became iconic in its

own right. In 2014, Time Out Magazine, which has a monthly audience of 95

million, named deadmau5s stage show revolving around his jaw-dropping Cube

setup the third of the greatest live productions in electronic music. Attached as

Exhibit 3 are true and correct copies of a sampling of news articles and blog

postings specifically discussing deadmau5s Cube, including the aforementioned

Time Out Magazine article. See also Exhibit 1 at pp. 4-8.

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22.

deadmau5 has been diligent in protecting his family of deadmau5

marks by, among other things, applying to register them with the United States

Patent and Trademark Office (USPTO). As is pertinent for purposes of this

action, deadmau5 currently owns through Ronica inter alia, the following valid

and subsisting registrations and applications covering a wide range of goods and

services on the USPTOs Principal Register for word marks in both standard

characters and stylized in his signature font (collectively, the marks and goods and

services set forth in Paragraphs 1 through 4, 15 through 21 above, this Paragraph,

and Paragraphs 25 through 61 below are referred to as deadmau5 Marks and

deadmau5s Goods and Services, respectively):

RUSS, AUGUST & KABAT

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Mark

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DEADMAU5

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21

Ser. No.
Filing
Date/
Reg. No.
Reg. Date
First Use/
Priority
Date
Ser. No.
77704283
Filing Date:
Apr. 1,
2009
Reg. No.
3836647
Reg. Date:
Aug. 24,
2010

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25

First Use/
Priority
Date:
Nov. 7,
2008

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Goods/Services

IC 9 - Music sound recordings; music video

recordings; audio tapes, audio cassettes,
compact discs, motion picture films, video
cassettes and CD ROMs featuring music;
digital audio tape and video recorders;
computer game software for use with personal
computers, home video game consoles used
with televisions, and for arcade-based video
game consoles; video cameras; cameras;
photographic and cinematographic cameras;
apparatus
for
recording,
transmission,
reproduction of sound or images; photographic
transparencies, exposed photographic films;
batteries;
encoded
magnetic
cards,
magnetically-encoded credit cards or debit
cards; spectacles, spectacle cases, sunglasses;
electronic arcade-type games adapted for use

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Mark

Goods/Services

First Use/
Priority
Date

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with television receivers; video game software;

mouse pads; computer screen savers software;
downloadable electronic publications in the
nature of magazines in the field of music

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IC 16 - Printed matter, namely, newspapers,

periodical publications, magazines, books in
the field of music; photographs, pictures,
prints; posters; greeting cards; postcards;
notepads; address books; scrapbooks; folders;
catalogues in the field of music; printed tickets;
calendars; photographs albums; diaries;
postage stamps; protective covers for postage
stamps; stamp albums; stickers; car stickers;
decalcomanias; blank cards; cardboard articles,
namely, boxes; stationery, pens, pencils,
erasers, pencil sharpeners, pencil cases,
drawing rulers, boxes for pens, book markers;
drawing materials for blackboards, artists'
materials, namely, brushes, pastels, pencils and
pens; printed instructional and teaching
materials in the field of music; paper gift bags,
paper carrier bags; envelopes; blackboards;
printed height charts

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RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

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15
16
17
18
19
20
21
22
23

IC 25 - Articles of outer clothing, namely,

coats and jackets; articles of underclothing,
namely, undershirts, panties, shorts and briefs;
footwear; headwear; scarves; dressing gowns;
boxer shorts; socks; t-shirts, hats and caps,
jackets,
pajamas,
slippers;
wristbands,
headbands, ties, articles of clothing for babies

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26
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28

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Mark

and toddlers, namely, shirts and shorts;

footwear and headwear for babies and toddlers

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Goods/Services

First Use/
Priority
Date

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14
15
16
17
18
19
20
21
22
23

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

DEADMAU5

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IC 41 - Entertainment services, namely, sound

recording studios; entertainment services,
namely, providing video podcasts in the field
of music; entertainment in the nature of live
stage performances in the nature of musical
performances and concerts by an individual;
entertainment services, namely, providing an
on-going radio program in the field of music
and performing artists; entertainment services,
namely, cabarets; entertainment, namely,
production of stage shows; production of video
and/or
sound
recordings;
presentation,
production and performance of musical shows,
concerts, radio and television programs;
production of video and multimedia videos;
audio or video recording services; publishing
of books, magazines; music publishing; film
distribution; arranging and conducting of
educational seminars, conferences and
exhibitions; publication of books, magazines
and other texts
IC 12 - Bmx bikes

Ser. No.
77894003
Filing Date: IC 18 - Trunks and travelling bags; suitcases;
Dec. 15,
schoolbags; tote bags; backpacks; day packs;
2009
handbags; shoulder bags; duffel bags;
messenger bags; purses; wallets; leather
Reg. No.
shoulder belts; credit card holders; umbrellas,
3930481
parasols and walking sticks

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4

Mark

First Use/
Priority
Date
Reg. Date:
Mar. 15,
2011

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9

First Use/
Priority
Date:
Sep. 18,
2009

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RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

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14
15
16
17

Goods/Services

IC 28 - Plush toys, dolls, stuffed toy animals,

modeled plastic toy figurines, hand held
computer game units other than those adapted
for use with an external display screen or
monitor; hand held electronic game units other
than in conjunction with a television or
computer; puzzles; board games; balls for
games; shin pads and elbow pads for athletic
use; golf club head covers; skateboards;
musical toys; playing cards; collectable toy
figures; automatic, coin operated amusement
game machines; Christmas tree decorations;
paper or plastic party hats and caps not being
clothing
IC 30 - Coffee, coffee essences, coffee
extracts; mixtures of coffee and chicory;
mixtures of coffee and chicory, chicory and
chicory mixtures, all for use as substitutes for
coffee; tea, tea extracts; cocoa; cocoa based
beverages; chocolate; chocolate candies,
chocolate bars; sugar, sugar substitutes,
namely, maltose, rice, tapioca, sago, couscous;
confectionery made of sugar and candy,
breakfast cereals; pastry; pizza, pasta and pasta
sauce; bread; biscuits; cookies; cakes; ice, ice
cream, water ices, frozen confections; mixes
for making ice cream and/or water ices and/or
frozen confections; honey; preparations
consisting wholly or substantially wholly of
sugar, for use as substitutes for honey; maple

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23
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25
26
27
28

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Mark

Goods/Services

First Use/
Priority
Date

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syrup, treacle, molasses; ketchup; sauces and

preparations for making sauces, namely sauce
mixes; custard powder; prepared meals
consisting primarily of pasta or rice; dessert
mousses; bakery desserts; puddings; yeast,
baking powder; salt, pepper, mustard; vinegar;
chutney; spices and seasonings; infusions other
than for medicinal use, namely herbal
infusions; meat pies; mayonnaise; meat
tenderizers for household purposes; royal jelly
for human consumption other than for
medicinal purposes; natural sweeteners; salad
dressings

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Ser. No.
Filing
Date/
Reg. No.
Reg. Date

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16

IC 32 - Beers; mineral and aerated and

effervescing waters and carbonated nonalcoholic drinks; fruit juices; syrups for making
beverages; isotonic beverages; vegetable
drinks, vegetable juices
Ser. No.
IC 9 - Apparatus and instruments for recording,
86132639
receiving,
processing,
reproducing
or
Filing Date: transmitting sound or visual information or
Dec. 2,
recordings; turntables, anti-slipmats, namely,
2013
elastomeric appliques for placement onto
electronic devices to prevent slipping
Reg. No.
headphones;
audio
speakers;
radio
4887529
broadcasting receiving and transmitting
Reg. Date: apparatus;
telephone
apparatus
and
Jan. 19,
instruments; telephones, mobile telephones and
2016
telephone handsets; power supply adapters for
use with telephones; battery chargers for use
First Use/
with telephones; cases adapted for mobile

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21
22
23
24
25
26
27
28

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2
3
4

Mark

First Use/
Priority
Date
Priority
Date:
Nov. 8,
2013

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6
7
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9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

Goods/Services

telephones; sunglasses; spectacles, spectacle

frames and cases; sound and visual recordings
featuring music or videos featuring music,
music videos, concerts, interviews and
entertainment news; interactive sound or visual
recordings featuring music or videos featuring
music, music videos, concerts, interviews and
entertainment news; blank electric sound or
visual recording storage media; juke boxes;
video games software and programs; computer
game programs; computer game software;
computer software for music playback, music
download, gaming or database management;
computers; data processing equipment; USB
sticks; mouse pads; mice for computers;
computer screen saver software; downloadable
publications provided on-line from databases
from the Internet or from any other
communications network, namely, a magazine
featuring entertainment news; compact discs
featuring music; DVDs featuring music and
videos that contain music, music videos,
concerts, interviews and entertainment news;
carrying cases adapted for compact discs;
carrying cases adapted for DVDs; video
cameras;
cameras;
photographic
and
cinematographic apparatus and instruments,
namely, cameras; photographic transparencies,
namely,
exposed
photographic
films;
downloadable digital music. MP3 players;
personal digital assistants and other hand held
electronic devices in the nature of smartphones

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2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

or portable electronic devices with Internet

connectivity;
metronomes;
downloadable
telephone ring tones; electronically encoded
magnetic cards, namely, credit cards,
identification cards, debit cards and key cards;
electronically encoded cards bearing machine
readable information, namely, credit and debit
cards, access cards, electronic club cards, and
key cards; magnetically encoded blank bank
cards for issuance by a financial institution,
namely, debit cards; magnetically encoded
credit cards; magnetically encoded cheque
cards; magnetically encoded cash cards in the
nature of debit cards; blank electronic smart
cards; automatic vending machines and
mechanisms for coin operated apparatus;
batteries; digital holographic images; digital
holographic
cards;
digital
holograms,
magnetically encoded credit cards with
holograms

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8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20

IC 16 - Paper, cardboard and goods made from

those materials, namely, posters and stickers;
printed matter, namely, printed publications in
the nature of books and magazines in the field
of entertainment; printed matter, namely,
brochures, not being advertising brochures,
sheet music, tickets, paper labels and greeting
cards; greeting cards, post cards; picture cards;
photographs,
pictures,
prints,
posters,
stationery, pens, pencils, erasers, pencil
sharpeners, pencil cases, staplers, staple

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22
23
24
25
26
27
28

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2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

removers, drafting and ungraduated rulers,

boxes for pens, book markers, notepads;
address books; diaries; booklets in the field of
entertainment; scrapbooks; photo albums,
folders; catalogues in the field of
entertainment; stickers, printed certificates in
the nature of gift vouchers; gift bags;
calendars; artists' materials in the nature of
molds for modeling clay, plasters and canvas;
paint brushes; decalcomanias; instructional and
teaching materials not being apparatus, in the
field of entertainment; plastic materials for
packaging, namely, bags, bubble packs and
plastic film roll stock; bank checks and
travelers checks; banking cards not being
encoded or magnetic; credit cards not being
encoded or magnetic; festive decorations,
namely, paper party decorations

7
8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19

IC 18 - Leather and imitations of leather and

goods made of these materials, namely, totes,
satchels and all-purpose carrying bags; trunks
and traveling bags; suitcases; all-purpose
carrying bags; schoolbags; tote bags;
backpacks; day packs in the nature of luggage;
handbags; shoulder bags; duffel bags;
messenger bags; purses; wallets; credit card
holders; umbrellas, parasols and walking
sticks; animal carrier bags

20
21
22
23
24
25
26

IC 25 - Clothing for men, women and children,

namely, t-shirts, tank tops, sweat shirts,

27
28

14
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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

sweaters, jackets, hats, caps, visors, head

bands, scarves, shorts, pants, sweat pants,
socks and casual footwear

7
8
9

IC 28 - Toys, games and playthings, namely,

board games and puzzles; board games;
sporting articles and equipment, namely,
articles and equipment used in baseball,
basketball,
football,
tennis,
soccer,
snowboarding, skiing and skateboarding;
musical playthings, namely, toy pianos, toy
percussion instruments and toy wind
instruments; playing cards; novelty plastic toy
figurines; slot machines; Automatic, coin
operated or counter operated amusement
apparatus, namely, video game machines;
festive decorations, namely, Christmas tree
ornaments and decorations; carnival hats and
caps in the nature of party favor hats; games
adapted for use with television receivers; Coin
operated and counter operated game machines,
namely, video games; arcade apparatus and
games, namely, arcade game machines;
computer games adapted for use with
television receivers only; coin or counter
operated video games; arcade apparatus and
games

10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25

IC 30 - Coffee, coffee essences, coffee

extracts; mixtures of coffee and chicory;
mixtures of coffee and chicory all for use as
substitutes for coffee; chicory and chicory

26
27
28

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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

mixtures, all for use as substitutes for coffee;

tea, tea extracts; cocoa; preparations made
principally of cocoa, namely, prepared cocoa
and cocoa-based beverages; chocolate;
chocolate products, namely, candy; sugar,
maltose for food, rice, tapioca, sago, couscous;
flour; preparations made from flour, namely,
mixes for making cupcakes, cakes, cookies and
bread; nut paste; chocolate confections; candy;
breakfast cereals; pastry; pizza; pasta and pasta
products in the nature of pasta salad; bread;
biscuits; cookies; cakes; ice cream, water ices
and frozen confections; preparations for
making ice cream; preparations for making
water ices; preparations for making frozen
confections; honey; preparations consisting
wholly or substantially wholly of sugar, for use
as substitutes for honey; table syrup; molasses;
ketchup; sauces and preparations for making
sauces; custard powder for making custard
desserts; prepared meals consisting primarily
of pasta or rice; mousses; bakery desserts;
dessert puddings; yeast, baking powder; salt,
pepper, mustard; vinegar; chutney; spices and
seasonings; meat pies; mayonnaise; meat
tenderizers for household purposes; royal jelly
for food purposes and not for dietetic or
medical purposes; natural sweeteners; agave
syrups; salad dressings

7
8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

IC 32 - Beers; mineral waters; aerated waters;

effervescing drinking waters; non-alcoholic

27
28

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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

drinks, namely, soft drinks in the nature of

sodas and fruit drinks; fruit juices; syrups,
essences and extracts all for making beverages;
isotonic beverages; preparations for use as
drinks, namely, fruit drinks

7
8
9
10

IC 41 - Entertainment in the nature of live

audio and visual performances by musical
artists; entertainment in the nature of live audio
and visual performances by disc jockeys;
entertainment services, namely, arranging and
conducting live performances, personal
appearances by musical artists; entertainment
services, namely, arranging and conducting
live television and radio performances by
musical artists; entertainment services, namely,
production of live theatrical shows, live
musical shows, concerts, prerecorded events in
the nature of music entertainment, multimedia
entertainment events in the nature of
interactive crowd participation, videos,
multimedia videos, motion picture films, and
radio and television programs; entertainment
services, namely, providing non-downloadable
recorded music, musical videos, video clips,
photographs, user posts, music concert tour
information and event information in the nature
of a blog or social media postings, all via an
Internet website or smartphone application via
a global computer network or wireless
networks; entertainment services, namely,
theatrical shows, musical shows, concerts,

11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

17
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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

multimedia entertainment events and radio and

television program, all of the aforementioned
being live, featuring an interactive smartphone
application that operates concurrently with the
live presentation; educational services, namely,
music and disc jockey instruction; production
and distribution services in the field of sound
and/or visual recordings and entertainment
programs, namely, motion pictures, radio
programs or videos in the field of music; music
library services; music publishing services;
recording studio services; disk jockey services;
information services relating to music,
entertainment, games and educational events
provided on-line from a computer database,
from the Internet or any other communications
network;
provision
of
digital
nondownloadable music from the Internet;
provision of digital non-downloadable music
from MP3 websites; production, preparation,
presentation and distribution of television and
radio programs and films, animated films and
sound and visual recordings; rental of prerecorded television and radio programs, films,
animated films, and sound and visual
recordings; production of live entertainment
features in the nature of music concerts;
organization, production and presentation of
exhibitions for educational and entertainment
purposes, sporting events, shows in the nature
of music performances, road shows in the
nature of musical performance, staged events

7
8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

18
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1
2
3
4

Mark

6
7
8
9
10
11
RUSS, AUGUST & KABAT

Goods/Services

First Use/
Priority
Date

12
13
14
15
16

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

MAU5TRAP

17
18
19
20
21
22
23
24
25
26
27
28

in the nature of musical performance, live

theatrical
performances,
concerts,
live
performances in the nature of musical
performances, and audience participation in
such events; educational services, namely,
presentation of quizzes in the nature
administering quizzes; provision of on-line
electronic non-downloadable publications,
namely, a magazine in the field of music;
electronic gaming services provided from a
computer database, the Internet or any other
communications network; advisory and
consultancy
services
related
to
the
aforementioned services
Ser. No.
IC 9 - Reproductions of sound and video in
86458073
electronic and digital form, namely, musical
Filing Date: sound recordings, musical video recordings,
Nov. 18,
concerts, live musical performances, band
2014
interviews, motion picture films featuring
music documentaries, live musical concerts,
First Use/
and musician interviews downloadable from
Priority
remote computers, on-line databases, facilities
Date:
provided on the Internet and websites; Music,
Jan. 2007
sounds images, text and information, all
for IC 9, 35, relating to music, entertainers, performers,
41; Nov.
entertainment products, entertainment services
18, 2014 for and music-related products, namely, musical
IC 25
sound recordings, musical video recordings,
digital music downloadable from the Internet,
concerts, live musical performances, band
interviews, motion picture films featuring
music documentaries, live musical concerts

19
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1
2
3
4

Mark

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First Use/
Priority
Date

5
6

and musician interviews downloadable from

telecommunications
networks,
wireless
networks, by online delivery and by way of the
Internet and the world wide web; Pre-recorded
electronic sound, image and data storage media
featuring music, musical sound recordings,
musical video recordings, concerts, live
musical performances, band interviews, motion
picture films featuring music documentaries,
live musical concerts and musician interviews;
MP3s, high resolution digital and similar
digital formats featuring music, musical sound
recordings, musical video recordings, concerts,
live musical performances and band interviews
downloadable from Internet web sites;
Computer software for playing music,
recording music and music production;
Computer programs for playing music,
recording music and music production;
Multimedia software, namely, CDs, CDROMS, digital disks, digital video discs and
DVD-ROMS for playing music, recording
music and music production; Digital media,
namely, CDs, digital disks, digital video discs,
downloadable audio files and downloadable
video files featuring music, musical sound
recordings, musical video recordings, concerts,
live musical performances, band interviews,
motion picture films featuring music
documentaries, live musical concerts and
musician interviews; Computer software for
securing digital content; Computer programs

7
8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

20
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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

for managing communications and data

exchange relating to music, audio and visual
data; Multimedia software for downloading
music, audio and visual data; CDs and digital
video discs featuring music, musical sound
recordings, musical video recordings, concerts,
live musical performances, band interviews,
motion picture films featuring music
documentaries, live musical concerts and
musician interviews; Audio tapes and booklets
sold as a unit featuring music, musical sound
recordings, musical video recordings, concerts,
live musical performances and band
interviews; Pre-recorded vinyl phonograph
records featuring music, musical sound
recordings,
concerts,
live
musical
performances and band interviews; Sound and
video recordings on corresponding recording
carriers, namely, musical sound recordings and
musical video recordings featuring music,
concerts, live musical performances, band
interviews, motion picture films featuring
music documentaries, live musical concerts,
and musician interviews; Audio and video
cassettes featuring music, musical sound
recordings, musical video recordings, concerts,
live musical performances, band interviews,
motion picture films featuring music
documentaries, live musical concerts and
musician interviews

7
8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27

IC 25 - Clothing for men, women and children,

21
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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

namely, t-shirts, tank tops, sweat shirts,

sweaters, jackets, hats, visors, head bands,
scarves, shorts, pants, socks and casual
footwear

7
8
9
10

IC 35 - Distributorship in the field of musical

and non-musical sound recordings and video
recordings; advertising and promotion services
and related consulting services; Computerized
online ordering featuring general merchandise
and general consumer goods; Computerized
online ordering services in the field of music
and entertainment; computerized online retail
store services in the field of music and
entertainment; Online retail store services
featuring downloadable pre-recorded music
and audio-visual content and general
merchandise; Preparing audio-visual displays
in the field of music; Preparing audio visual
presentations for use in advertising; Promoting
the concerts of others; Promoting the goods of
others by preparing and placing advertisements
in an electronic magazine accessed through a
global computer network; Advertising,
including promotion of products and services
of
third
parties
through
sponsoring
arrangements and license agreements relating
to music events

11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

namely, t-shirts, tank tops, sweat shirts,
sweaters, jackets, hats, visors, head bands,
scarves shorts, pants, socks and casual
footwear

7
8
9
10

IC 35 - Distributorship in the field of musical

11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26

IC 41 - Entertainment services, namely, live

musical performances and live music concerts;

27
28

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1
2
3
4

Mark

Goods/Services

First Use/
Priority
Date

5
6

Music entertainment services, namely,

providing non-downloadable pre-recorded
music and musical based entertainment via the
global computer network on a subscription
basis; Providing a website over a global
computer network featuring entertainment
information on musical recordings and on
musical artists and their recordings and
providing links to the websites of others
featuring prerecorded music, musical based
entertainment, musical artists and their
recordings; Entertainment services, namely,
providing information, news and commentary
in the field of entertainment; Organizing of
concerts, namely, arranging and conducting of
concerts and live musical performances;
Production and distribution in the field of
entertainment, namely, production of sound
recordings and visual recordings and
production of concerts, live musical shows and
radio programs; Providing non-downloadable
pre-recorded
music,
providing
nondownloadable pre-recorded music videos,
providing information in the field of music,
and commentary and articles about music, all
online via a global computer network, for the
benefit of membership of an entertainment
club; Providing an Internet website portal in
the field of music; Providing podcasts in the
field of music; Providing information in the
field of entertainment, namely, music, music
concerts, musical performances and live

7
8
9
10
11
RUSS, AUGUST & KABAT

Ser. No.
Filing
Date/
Reg. No.
Reg. Date

12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

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Ser. No.
Filing
Date/
Reg. No.
Reg. Date

1
2
3
4

Mark

First Use/
Priority
Date

5
6

concerts; Music services, namely, providing

online entertainment, namely, providing nondownloadable
prerecorded
sound
and
audiovisual recordings in the field of music
and musical based entertainment; Providing an
Internet website portal in the field of music
featuring non-downloadable music, musical
sound recordings, musical video recordings,
concerts, live musical performances, band
interviews, live musical concerts and musician
interviews;
Providing
non-downloadable
digital music via MP3, high resolution digital
and similar digital formats websites on the
Internet and wireless networks; Providing nondownloadable digital music via the Internet and
wireless networks

7
8
9
10
RUSS, AUGUST & KABAT

11
12
13
14
15
16
17
18

Goods/Services

23.

Attached as Exhibit 4 are true and correct copies of TSDR printouts,

including assignment records, showing the current status and title for all of the

above-mentioned deadmau5 Marks. The foregoing registrations and applications

are valid and subsisting and constitute prima facie evidence of the deadmau5

Marks validity and Ronicas ownership of and exclusive right to use the

deadmau5 Marks in commerce, and provide constructive notice of ownership

thereof by Ronica.

deadmau5 Marks in Commerce.

26
27
28

The Meteoric Rise of deadmau5 and Pervasive Use of the

24.

deadmau5s prolific career as an artist, composer, performer, and

producer has been both ground- and record-breaking. Today, deadmau5 is

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universally recognized as one of the most dominant figures in the EDM movement

that has swept the United States and the globe over the past decade and a half. The

deadmau5 Marks have become cultural icons as a result of deadmau5s success

and deadmau5 and Ronicas widespread and continuous use thereof.

5
6

Since 2002, deadmau5 has released almost 100 solo and collaborative

albums, EPs, and singles, and had his works featured in dozens more compilation

albums. Attached as Exhibit 5 are printouts from www.discogs.com and iTunes

listing deadmau5s works.

10
RUSS, AUGUST & KABAT

25.

deadmau5s works

26.

Virtually all of deadmau5s several dozen albums, EPs, and singles

prominently feature at least one of the deadmau5 Marks on their covers. For

example, as shown immediately below, deadmau5s seven full-length studio

albums, Get Scraped, Random Album Title, For Lack of A Better Name, 4x4=12, >

album title goes here <, and while(1<2), and his retrospective double album

entitled 5 Years of mau5, all of which were released between 2005 and present,

each feature the deadmau5 Marks:

17
18
19
20
21
22
23
24
25
26
27
28
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RUSS, AUGUST & KABAT

27.

while(1<2) debuted atop Billboards Dance/Electronic Albums chart

in the summer of 2014, as deadmau5s second consecutive No. 1 following

>album title goes here <. while(1<2) also rose to number 9 in the top 20 of

Billboards Top 200 and number 4 on Billboards Digital Albums chart, and was

nominated for a GRAMMY award in the Best Dance/Electronic Album

category. deadmau5s 2010 album, 4x4=12, spent more than 100 weeks on

Billboards album chart and was certified gold for selling over 500,000 units in

the United States alone. The deadmau5 single, Ghosts n Stuff, has sold nearly

1.3 million copies in the United States alone, and been streamed nearly 50 million

times on the Spotify digital music service. Attached as Exhibit 6 are true and

correct copies of the covers for a larger sampling of deadmau5s albums, EPs, and

singles bearing the deadmau5 Marks.

28.

In addition to audio works, deadmau5 has released for sale DVDs of

two of his more momentous concerts to date deadmau5 live @ earls court and

Meowingtons Hax 2k11 TORONTO.

29.

The first DVD deadmau5 live @ earls court memorializes

deadmau5s groundbreaking 2010 performance as the first electronic music artist

to headline the legendary 19,000-person venue at Earls Court in London, following

in the footsteps of the likes of Madonna, Oasis, and Pink Floyd. deadmau5 used the

Cube during this performance and the DVD cover prominently features one of the

deadmau5 Marks. Attached as Exhibit 7 are true and correct copies of the cover

of the deadmau5 live @ earls court DVD bearing the MAU5 Marks, a printout

of the iTunes product page for the DVD, a Billboard article regarding the DVD,

and photographs from the BBCs website of deadmau5 performing on the Cube at

the concert, respectively.

30.

The second DVD Meowingtons Hax 2k11 TORONTO contains

footage filmed during the final stop of deadmau5s record-setting Meowingtons

Hax North American tour, which launched on August 5, 2011 at Lollapalooza in

31
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Chicago and concluded with a sold out show at Torontos Rogers Centre on

November 5, 2011. During this tour, deadmau5 not only became the first electronic

music artist to headline the Lollapalooza music festival, he was also both the first

electronic music artist to headline the stadium-sized Rogers Centre (formerly

known as the SkyDome). Again, deadmau5 used his Cube for this performance,

and the cover for the Meowingtons Hax 2k11 TORONTO DVD prominently

features a deadmau5 Mark. Attached as Exhibit 8 are true and correct copies of

the cover of the Meowingtons Hax 2k11 TORONTO DVD, a printout of the iTunes

product page for the DVD, and articles from the Toronto Star and Examiner.com

reviewing the Rogers Centre concert and depicting deadmau5 performing with the

Cube, respectively.

12
13

31.

The works released by deadmau5s record label, mau5trap, likewise

prominently feature the deadmau5 Marks, as shown immediately below:

14
15
16
17
18
19

ii.

20
21

32.

Notable live performances

Over the course of his career, deadmau5 has performed at prestigious

venues and festivals all over the world, from North and South America to Europe,

Asia, Africa, and Australia.

33.

Internationally, deadmau5 has headlined the Sonar festival in

Barcelona and the Creamfields festival in the UK. In 2010, deadmau5 played at the

Winter Olympics in Vancouver. In 2010, he was the first electronic music artist to

headline and sell out Earls Court in London. In 2011, he was the first electronic

music artist to headline and sell out Rogers Centre in Toronto. In September 2014,
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deadmau5 played the iTunes Festival in London, which was live-streamed to fans

in the United States and the rest of the world via iTunes and Apple TV. In July

2016, deadmau5 is slated to headline the sold-out Tomorrowland festival in

Belgium, which is expected to draw some 180,000 attendees.

Within the United States, deadmau5 has headlined Outside Lands,

Virgin Mobile FreeFest, Coachella, Ultra Music Festival and, in 2011, was the first

electronic act to headline Lollapalooza. He has headlined and sold out PETCO

Park in San Diego, as well as multiple consecutive nights at legendary venues like

the Roseland Ballroom in NYC and the Palladium in Los Angeles.

10
11
RUSS, AUGUST & KABAT

34.

35.

In 2010, deadmau5 was chosen to be the House Artist for the MTV

Video Music Awards.

36.

In February 2012, he performed at the 54th annual GRAMMY

Awards as part of the award shows first-ever telecast highlighting electronic

music.

37.

In June 2015, deadmau5 headlined the Governors Ball music festival

in New York with the likes of Bjork and the Bonnaroo music festival in Tennessee

along with the likes of Billy Joel. He also performed at the Summer Set Festival in

Wisconsin in August 2015, the Allentown Fair in Pennsylvania in September 2015,

the Austin City Limits and Treasure Island festivals in Texas and California,

respectively, in October 2015, and the Voodoo Music & Arts Festival in Louisiana

in November 2015.

38.

deadmau5 has also held residencies at several high-end day and night

clubs in Las Vegas, including XS, Encore Beach Club, Wet Republic, and

Hakkasan.

39.

deadmau5s performances and appearances are consistently and

extensively promoted using the deadmau5 Marks. Attached as Exhibit 9 are true

and correct copies of a sampling of advertisements for deadmau5s domestic

performances, all of which prominently feature the deadmau5 Marks.

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40.

at his live performances. Attached as Exhibit 10 are true and correct copies of

photographs from a handful of deadmau5s notable domestic live performances

featuring the Cube.

iii.

5
6

RUSS, AUGUST & KABAT

Moreover, between its debut in 2010 and 2015, he also used the Cube

41.

Awards and accolades

Between 2009 and present, deadmau5 has received numerous Juno

Award nominations and won 3 times once for Artist of the Year in 2013, and

twice for Dance Recording of the Year in 2009 and 2010. During the same

timeframe, he has also received 6 GRAMMY nominations, 3 Billboard Music

Awards nominations, 2 World Music Awards nominations, and 2 Teen Choice

Awards nominations.

42.

In 2008, deadmau5 won #1 Electro House Artist, #1 Progressive

House Artist, and #1 Beatport Single at the Beatport Music Awards. He would go

on to win #1 Electro House Artist and #1 Progressive House Artist in 2009 as well.

In 2010, he won #1 Electro House Artist for the third consecutive year.

43.

In 2010, deadmau5 won 3 International Dance Music Awards

(IDMAs) for Best Artist (Solo), Best Electro Track, and Best American DJ. In

2011, he again won IDMAs for Best Artist (Solo) and Best American DJ, in

addition to winning one for Best Dubstep/DnB/Jungle Track.

44.

Las Vegas mayor Carolyn Goodman officially proclaimed January 2,

2012, deadmau5 Day, to commemorate the launch of deadmau5s residency at

the Wynn Hotel in Las Vegas. Attached hereto as Exhibit 11 is a true and correct

copy of the deadmau5 Day proclamation issued by Mrs. Goodman.

45.

On July 1, 2014, deadmau5 served as Grand Marshal in the Canada

Day parade put on by his hometown of Niagara Falls, Ontario, and was given the

key to the city.

iv.

46.

Ronicas robust licensing program

Through Ronica, deadmau5 has sought to exploit the reach of his

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brand through a highly successful and profitable licensing and merchandising

program using his music and the deadmau5 Marks, in or on a wide range of

goods. Attached as Exhibit 12 are dozens of examples of deadmau5 merchandise

bearing the deadmau5 Marks, including garments for men, women, and children,

headphones, speakers, jewellery and accessories, ornaments, buttons, stickers,

posters, toys, novelty figurines, hats, caps, and bags.

Ronica is very selective in the choice of its licensees and carefully

controls and monitors the quality of the licensed products and services produced by

these licensees as they are a reflection on Ronica and deadmau5.

10
RUSS, AUGUST & KABAT

47.

48.

Goods bearing the deadmau5 Marks have been offered through

nationwide chains such as Target, Forever 21, Party City, Tillys and Torrid, as well

as through music merchandising companies that specialize in selling artists

merchandise to fans and novelty stores. For example, major music merchandiser,

LiveNation, and its subsidiaries operate deadmau5s official online store, handle

merchandise sales at deadmau5s concerts, and are the largest sellers of deadmau5

merchandise through other outlets.

49.

Apart from physical merchandise and music recordings, deadmau5

has released a number of apps for the iOS and Android platforms, including

deadmau5, Deadmau5 Mix and Deadmau5 Remix, which are apps that enable fans

to remix some of his songs on their devices. Attached as Exhibit 13 are true and

correct copies of articles, webpages, and photographs relating to these apps.

50.

deadmau5s music and the deadmau5 Marks have also been

featured in many popular video games, including, among others, Grand Theft

Auto: Chinatown Wars, Grand Theft Auto IV, GoldenEye 007, Sims 3, Sound

Shapes and Project Cars. DJ Hero 2 not only features a number of deadmau5

tracks, it features deadmau5 in his full mau5head regalia as a playable avatar.

Likewise, the iPhone game, Shred Neffland: featuring deadmau5, showcases a

deadmau5 audio track and a deadmau5 cartoon as the main character. Attached as
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Exhibit 14 are true and correct copies of articles, webpages, and photographs

relating to some of these games featuring deadmau5s music and/or likeness and

the deadmau5 Marks.

RUSS, AUGUST & KABAT

51.

Extensive efforts to promote the deadmau5 brand

As part of his continuous efforts to promote and advertise his goods

and services under the deadmau5 Marks, deadmau5 uses a professional public

relations firm to issue press releases highlighting his album releases and major live

performances. He also advertises his album releases on billboards in major cities in

the United States and around the world. Attached as Exhibit 15 are true and

correct copies of a sampling of press releases issued by deadmau5s public

relations firm featuring the deadmau5 Marks. Also attached as Exhibit 16 are

true and correct copies of images of billboards and other advertisements featuring

the deadmau5 Marks, which were used in the United States to advertise

deadmau5s albums and live performances.

15
16
17

52.

deadmau5s continuous and widespread use of the deadmau5 Marks

have also extended to the web and social media.

53.

deadmau5

registered

his

original

official

website,

www.deadmau5.com, by no later than November 2002. www.deadmau5.com

prominently featured the deadmau5 Marks and boasted more than 18 million

visits and 32.5 million page views between November 2002 and the fall of 2014. In

2015, deadmau5 merged www.deadmau5.com with the subscription-based site that

he had launched at www.live.deadmau5.com in December 2013. Fans without

subscriptions can get access to certain public content via www.live.deadmau5.com,

such as tour dates, official deadmau5 music videos, and the latest news stories,

while fans with subscriptions can log in and get exclusive access to premium

content and intimate experiences with deadmau5, including the opportunity to live

chat with deadmau5, view extra live streams, and download full-length tracks.

www.live.deadmau5.com had around 1.3 million visits and 2.6 million page views
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in 2015. Attached as Exhibit 17 is a true and correct copy of a screenshot of the

www.live.deadmau5.com homepage, prominently featuring the deadmau5

Marks.

In 2006, deadmau5 joined YouTube, where he uploads videos of his

own works, as well as works of other artists produced by mau5trap, and candid

video clips. deadmau5 has 925,560 subscribers and boasts 114,789,148 views since

joining YouTube. deadmau5s record label, mau5strap, joined YouTube in 2008,

and has 117,278 subscribers and 26,654,755 views. Attached as Exhibit 18 are

true and correct copies of printouts from deadmau5s YouTube page and

10
11
RUSS, AUGUST & KABAT

54.

mau5traps YouTube page.

55.

Since 2008, deadmau5 has also promoted his musical works and

performances featuring the deadmau5 Marks through Facebook, where he has

over 9.1 million likes. Similarly, since 2009, deadmau5 has been promoting his

musical works and performances featuring the deadmau5 Marks through Twitter,

where he has approximately 3.5 million followers. deadmau5 is also active on

Instagram where he has 1.6 million followers and the revamped music site,

www.myspace.com where he streams his music to hundreds of thousands of fans.

deadmau5 has also maintained a tumblr blog entitled united we fail deadmau5

since 2011. Attached as Exhibit 19 are true and correct copies of printouts from

deadmau5s Facebook, Instagram, MySpace, tumblr and Twitter pages, all

prominently featuring the deadmau5 Marks.

vi.

22
23

56.

Unsolicited media and fan coverage

Unsolicited media coverage and consumer blog postings about

deadmau5 are further evidence of the widespread fame enjoyed by deadmau5 and

the deadmau5 Marks.

57.

deadmau5 has been featured in literally hundreds of articles and blogs

published by everyone from Vanity Fair to his diehard fans who have dedicated at

least one blog i.e., www.mau5itup.blogspot.com exclusively to him. Attached

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as Exhibit 20 are true and correct copies of a small sample of articles about

deadmau5.

58.

magazines, including VIBE and Rolling Stone. Indeed, when deadmau5 appeared

on Rolling Stones cover in his cheese head mau5head in July 2012, this marked

the first time in history that an electronic music artist had been given this honor.

Attached as Exhibit 21 are true and correct copies of various magazine covers

showcasing deadmau5, including the July 2012 Rolling Stone cover.

vii.

9
10
RUSS, AUGUST & KABAT

deadmau5 has also graced the cover of a number of illustrious

59.

Brand partnerships

In addition to licensing his deadmau5 Marks and music for use in or

on various types of goods, deadmau5 has collaborated to promote high profile

brands like Sonos and Sea-Doo using the deadmau5 brand.

60.

In 2012, deadmau5 participated in Sonos Listening is Back

campaign, which featured artists using Sonos in their homes whilst going about

their daily routines. Sonos created a video of deadmau5 going through a morning

of music with a fitting playlist, some toast, video games, and his cat, Professor

Meowingtons,

https://www.youtube.com/watch?v=Mz8sQSEUGn4. Sonos also ran print, online,

and outdoor advertisements of deadmau5 in his mau5head seated in front of a plate

of cheese and a Sonos wireless speaker all over the world, including in the United

States. Attached as Exhibit 22 are true and correct copies of a Sonos blog posting

about the campaign, a screenshot of the above-described video from YouTube, and

images of Sonos deadmau5 advertisements.

61.

all

while

wearing

his

mau5head.

See

In 2014, deadmau5 collaborated with BRP to launch its latest product,

the 2014 Sea-Doo Spark personal watercraft, with a free Spark Some Fun Miami

deadmau5 concert event. Attached as Exhibit 23 are true and correct copies of a

BRP press release, advertisement, and blog posting relating to the campaign, as

well as photographs taken during the campaign, including a photograph of

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deadmau5 performing at the concert in a customized mau5head decorated with the

colors that the Spark comes in.

II.

62.

On information and belief, Defendants began manufacturing,

marketing, and distributing electronic cigarette or vape products under the mark

deadmodz (Infringing Mark) in the fall of 2014.

RUSS, AUGUST & KABAT

Defendants Willful Infringement of the deadmau5 Marks

63.

The Infringing Mark is confusingly similar in appearance, sound and

commercial impression to the deadmau5 Marks because it starts with the same

first syllable i.e., dead and the second syllable begins with m, and because

it copies deadmau5s signature font style, as shown immediately below. The

following is a side-by-side comparison of the Infringing Mark (below right) and

deadmau5s word mark in his signature font (below left):

13
14
15

On information and belief, Defendants intentionally chose to use a mark that

closely imitates the deadmau5 Marks so that they could trade on and profit from

the goodwill that deadmau5 and Ronica have expended more than a decade and

significant effort and resources to build up in the deadmau5 Marks.

19
20

64.

A representative sampling of Defendants products bearing the

Infringing Mark is shown below:

21
22
23
24
25
26
27
28
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1
2
3
4
5
6
7

RUSS, AUGUST & KABAT

8
9

Together with the additional goods identified in Paragraph 67 below, these goods

are the Infringing Goods. Defendants Infringing Goods overlap with, are closely

related to deadmau5s Goods and Services and/or represent a natural zone of

expansion for deadmau5, and such goods are or would be marketed and sold to the

same types of consumers through the same channels of trade.

65.

On information and belief, Defendants market and sell these

Infringing Goods via tradeshows, a showroom located at 5445 Oceanus Drive,

Suite

www.deadmodz.com,

http://westcoastvapesupply.blogspot.com/,

www.instagram.com/deadmodz,

https://plus.google.com/+WestcoastvapesupplyOC/posts, third-party distributors,

and EDM events.

No.

66.

102,

Huntington

Beach,

California

92649,

the

websites

www.westcoastvapesupply.com/?search=Deadmodz,
www.facebook.com/Deadmodz,

https://twitter.com/deadmodz,

information

and

belief,

Defendants

launched

and

the

www.deadmodz.com website in around September 2014 in order to market and sell

the Infringing Goods. At its inception, the website homepage bore the Infringing

Mark, and depicted a concert featuring deadmau5s signature W-shaped Cube

stage. The following is a side-by-side comparison of a screen capture of

Defendants

https://web.archive.org/web/20140929065939/http://www.deadmodz.com/ (below

website

September

29,

2014,

available

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left), and an image from the debut of the Cube at Coachella in 2010, available at

https://i.ytimg.com/vi/RiD7rxQVQeY/hqdefault.jpg (below right)

3
4
5
6
7
8
9

RUSS, AUGUST & KABAT

10
11

Defendants use of the Cube in combination with the confusingly similar

Infringing Mark further falsely associates Defendants Infringing Goods with

deadmau5 and evidences an intent on Defendants part to trade on deadmau5 and

Ronicas goodwill by creating consumer confusion. Attached as Exhibit 24 are

true and correct copies of larger versions of both of these images. Attached as

Exhibit 25 are true and correct copies of additional screen captures of

www.deadmodz.com from February 2016, showing Defendants continued use of

the Infringing Mark to promote and sell their Infringing Goods.

67.

Also in September 2014, Defendants filed U.S. Trademark

Application Serial No. 86/754,645 for the standard character mark DEADMODZ

under Section 1(a), 15 U.S.C. 1051(a), covering [o]n-line retail store services

featuring smoking products, electronics [sic] cigarettes, atomizers for e-liquid,

batteries, cases for electronic cigarettes, battery chargers, cartridges for electronic

cigarettes, cartomizers, lanyards, t-shirts, hats, cups, key chains, atomizers; Retail

store services featuring smoking products, electronics [sic] cigarettes, flavoring

additives for use with electronic cigarettes, batteries, cases for electronic cigarettes,

battery chargers, cartridges for electronic cigarettes, cartomizers, lanyards, t-shirts,

hats, cups, key chains in International Class 35. The specimen that Defendants
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submitted

with

this

application

screen

capture

www.westcoastvapesupply.com using the Infringing Mark to market and sell

Defendants Infringing Goods, as shown:

4
5
6
7
8
9
10
RUSS, AUGUST & KABAT

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28

A true and correct copy of U.S. Trademark Application Serial No. 86/754,645,
including this specimen, is attached as Exhibit 26. Attached as Exhibit 27 are true
and correct copies of additional screen captures www.westcoastvapesupply.com
from February 2016, showing Defendants continued use of the Infringing Mark to
sell their Infringing Goods.
68.

Also on information and belief, Defendants have routinely used the

Infringing Mark to market and sell the Infringing Goods at trade shows and via
blogs and social media channels such as Instagram, Facebook, Google+, and
Twitter. For example, the following screen capture taken of an Instagram posting
made by Defendants shows their use of the Infringing Mark together with a
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rendering of deadmau5s signature Cube stage to market and sell the Infringing

Goods at the ECC Expo, which is a trade show for vapor products:

3
4
5
6
7
8
9
10
RUSS, AUGUST & KABAT

11
12
13
14
15
16

The same screen capture shows Defendants use of the Infringing Mark as their

Instagram profile picture and efforts to target an EDM audience using the hashtags

#EDM and #rave. Attached as Exhibit 28 are additional screen captures from

Defendants Instagram feed showing their use of the Infringing Mark to market

and sell the Infringing Goods. Attached as Exhibit 29 are screen captures and

printouts from Defendants Facebook, Google+, and Twitter accounts and the West

Coast

http://westcoastvapesupply.blogspot.com, all showing Defendants use of the

Infringing Mark to market and sell the Infringing Goods.

Vape

69.

Supply,

Inc.

blog,

available

Defendants use of the Infringing Mark in the manner described above

is likely to cause confusion, mistake, and/or to deceive as to the origin,

sponsorship, or approval of the Infringing Goods, Defendants services and

commercial activities in that the public, the trade, and others are likely to believe
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that Defendants Infringing Goods are provided, sponsored, approved, licensed,

authorized or endorsed by, or affiliated with, or in some other way legitimately

connected to deadmau5s Goods and Services that are promoted, offered, and/or

sold in connection with the deadmau5 Marks.

Indeed, there is evidence that consumers and potential licensees have

actually confused the Infringing Goods as having originated with deadmau5 and

Ronica.

8
9
10
11
RUSS, AUGUST & KABAT

70.

71.

For example, one consumer directed an Instagram photograph of one

of Defendants vape devices covered in the Infringing Mark at deadmau5, with the
message, Cant wait to take this when I go see @deadmau5.
72.

Similarly, at a trade show on February 3, 2016, a potential licensee

that had approached Ronica about using the deadmau5 Marks in connection with

vape products photographed Defendants deadmodz display bearing the

Infringing Mark and showcasing a variety of Infringing Goods, and sent it to

Ronica, asking whether Ronica had decided to go with a different licensee in this

area. Attached as Exhibit 30 are true and correct copies of this consumer

Instagram posting and the trade show photograph.

18
19
20

73.

Defendants use of the Infringing Mark falsely designates the origin of

their Infringing Goods and services.

74.

Defendants use of the Infringing Mark in the manner described above

prevents deadmau5 and Ronica from controlling the nature and quality of goods

and services provided thereunder and places the valuable reputation and goodwill

of deadmau5 and Ronica in the hands of Defendants, over whom deadmau5 and

Ronica have no control.

75.

On information and belief, Defendants actions were willful from the

outset and reflect an intent to confuse consumers and profit from the goodwill

associated with the deadmau5 Marks.

28
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In a good faith effort to resolve this dispute without litigation, Ronica

sent letters to Defendants on or about February 5, 2016 and February 19, 2016

asserting deadmau5 and Ronicas valuable trademark rights and requesting that

Defendants cease and desist use of the Infringing Mark, remove the Infringing

Goods from channels of distribution, withdraw U.S. Trademark Application Serial

No. 86/754,645, and account for their sales of the Infringing Goods. Attached as

Exhibit 31 are true and correct copies of Ronicas cease and desists letters.

RUSS, AUGUST & KABAT

76.

77.

Defendants responded to Ronicas cease and desist letters by baldly

denying that there are any similarities between the Infringing Mark and the

deadmau5 Marks and that any infringement had ever occurred, and by refusing

to acquiesce to Ronicas requests. Attached as Exhibit 32 is a true and correct

copy of Defendants response.

78.

As of the date of this Complaint, Defendants continue to use the

Infringing Mark both in deadmau5s signature font style and in other styles to

market and sell Infringing Goods on their own websites and through third party

distributors such as Vape Society Supply and Vapor Room 909. See Exhibits 29

and 33 (screen captures dated March 31, 2016). Defendants bad faith denial and

refusal to comply with Ronicas demands further underscores that their

infringement of the deadmau5 Marks was willful.

20
21

79.

Defendants actions as alleged herein constitute blatant and willful

trademark infringement and false association in violation of federal and state law.

COUNT I

Federal trademark infringement under Section 32 of the Lanham Act

(Against all Defendants)

25
26
27
28

80.

Ronica repeats and re-alleges each and every allegation of Paragraphs

1 through 79 as though fully set forth herein.

81.

Defendants Infringing Mark is confusingly similar to the deadmau5

Marks and its use is likely to cause confusion, mistake or deception as to the
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source or origin, sponsorship or approval of the Infringing Goods, Defendants

services and commercial activities, in that consumers, potential licensees and

others are likely to believe that Defendants are associated with or related to

deadmau5 and Ronica or that deadmau5 and Ronica authorized and control the sale

of Defendants Infringing Goods and their services and commercial activities in the

United States.

Defendants wrongful use of the Infringing Mark has caused actual

confusion, mistake or deception as to the source or origin, sponsorship or approval

of the Infringing Goods and Defendants services and commercial activities.

10
RUSS, AUGUST & KABAT

82.

83.

Defendants actions, as alleged, constitute infringement of Ronicas

valid and subsisting federally registered deadmau5 Marks in violation of Section

32 of the Lanham Act, 15 U.S.C. 1114.

84.

On information and belief, Defendants actions have chilled Ronicas

licensing program and injured deadmau5 and Ronicas reputation and goodwill

with consumers and potential licensees by creating confusion about the Infringing

Goods and their association or affiliation with deadmau5 and Ronica.

85.

Defendants have been unjustly enriched as a direct and proximate

result of the actions alleged herein, which have also greatly and irreparably

damaged Ronica.

86.

Accordingly, pursuant to 15 U.S.C. 1117(a), Ronica is entitled to,

and should be awarded Defendants profits, any damages sustained by Ronica, and

the costs of this action, in amounts to be determined at trial. Further, on

information and belief and as evidenced by Defendants bad faith denial of

infringement and failure and refusal to cease and desist, Defendants actions

alleged herein were undertaken willfully and with the intention of causing

confusion, mistake or deception, making this an exceptional case within the

meaning of 15 U.S.C. 1117(a).

87.

Defendants actions have greatly and irreparably damaged Ronica and

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will continue to so damage Ronica unless restrained by this Court; wherefore,

Ronica is without an adequate remedy at law. Accordingly, Ronica is entitled to an

order preliminarily and permanently enjoining and restraining Defendants from

using the Infringing Mark in the manufacture, marketing and distribution of their

products and services.

COUNT II

False association under Section 43(a) of the Lanham Act

(Against all Defendants)

9
10
RUSS, AUGUST & KABAT

88.

Ronica repeats and re-alleges each and every allegation of Paragraphs

1 through 87 as though fully set forth herein.

89.

Defendants use of the Infringing Mark both alone and in combination

with the Cube is likely to cause confusion, mistake or deception as to the

affiliation, connection, or association of Defendants with deadmau5 and Ronica,

and as to the origin, sponsorship or approval of the Infringing Goods by deadmau5

and Ronica, in that consumers, potential licensees and others are likely to believe

that Defendants are associated with or related to deadmau5 and Ronica or that

deadmau5 and Ronica authorized and control the sale of Defendants Infringing

Goods in the United States.

19
20
21

90.

Defendants actions, as alleged, constitute false association in

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

91.

On information and belief, Defendants actions have chilled Ronicas

licensing program and injured deadmau5 and Ronicas reputation and goodwill

with consumers and potential licensees by creating confusion about the Infringing

Goods and their association or affiliation with deadmau5 and Ronica.

92.

Defendants have been unjustly enriched as a direct and proximate

result of the actions alleged herein, which have also greatly and irreparably

damaged Ronica. Accordingly, pursuant to 15 U.S.C. 1117(a), Ronica is entitled

28
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to, and should be awarded Defendants profits, any damages sustained by Ronica,

and the costs of this action, in amounts to be determined at trial.

Further, on information and belief and as evidenced by Defendants

bad faith denial of infringement and failure and refusal to cease and desist,

Defendants actions alleged herein were undertaken willfully and with the

intention of causing confusion, mistake or deception, making this an exceptional

case within the meaning of 15 U.S.C. 1117(a).

RUSS, AUGUST & KABAT

93.

94.

Defendants actions have greatly and irreparably damaged Ronica and

will continue to so damage Ronica unless restrained by this Court; wherefore,

Ronica is without an adequate remedy at law. Accordingly, Ronica is entitled to an

order preliminarily and permanently enjoining and restraining Defendants from

using the Infringing Mark in the manufacture, marketing and distribution of their

products.

COUNT III

California common law trademark infringement

16
17
18

95.

Ronica repeats and re-alleges each and every allegation of Paragraphs

1 through 94 as though fully set forth herein.

96.

deadmau5 and Ronica commenced continuous use of the deadmau5

Marks in commerce well before any and all use of the confusingly similar

Infringing Mark by Defendants.

97.

Defendants subsequent use of the Infringing Mark in the manner

described above is likely to cause confusion in that consumers, potential licensees

and others are likely to believe that Defendants business is the same as or

affiliated with deadmau5 and Ronica.

98.

Defendants actions, as alleged, constitute trademark infringement in

violation of California common law, all to the substantial and irreparable injury of

the public and of Ronicas business reputation and goodwill.

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99.

RUSS, AUGUST & KABAT

Defendants have been unjustly enriched as a direct and proximate

result of the actions alleged herein, which have also greatly and irreparably

damaged Ronica. Accordingly, Ronica is entitled to, and should be awarded,

damages, including but not limited to restitution, actual, and punitive damages.

100. Further, on information and belief and as evidenced by Defendants

bad faith denial of infringement and failure and refusal to cease and desist,

Defendants actions alleged herein were carried out with a willful and conscious

disregard of Ronicas rights and intent to trade on the goodwill embodied in the

deadmau5 Marks. As such, Defendants actions amount to oppression, fraud and

malice and are subject to punitive damages pursuant to California Civil Code

section 3294.

101. Defendants actions have greatly and irreparably damaged Ronica and

will continue to so damage Ronica unless restrained by this Court; wherefore,

Ronica is without an adequate remedy at law. Accordingly, Ronica is entitled to an

order preliminarily and permanently enjoining and restraining Defendants from

using the Infringing Mark in the manufacture, marketing and distribution of their

products.

18
19

WHEREFORE, Ronica prays for judgment against Defendants as follows:

For a temporary and permanent injunction prohibiting Defendants

from:
a.

using the Infringing Mark i.e., deadmodz whether alone or

in combination with other words or elements, or any other mark confusingly

similar to the deadmau5 Marks in the manufacture, marketing and distribution of

any of their products or to otherwise create a false association with deadmau5 or

Ronica; and

27
28

registering, attempting to register, or maintaining any trademark

registration, trademark, trade name, domain name, trade designation, or other

49
___________________________________________________________________________
COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES

3537-3 160330 Complaint.docx

Case 8:16-cv-00597-BRO-E Document 1 Filed 03/31/16 Page 50 of 51 Page ID #:50

indicia of origin or source containing the Infringing Mark i.e., deadmodz

whether alone or in combination with other words or elements, or any other mark

confusingly similar to the deadmau5 Marks, including through the pursuit of

U.S. Trademark Application Serial No. 86/754,645;

5
6
7

For an accounting to be directed to determine Defendants profits

from the actions complained of;

For an award against Defendants and in favor of Ronica of all

damages sustained by Ronica and all profits realized by Defendants by reason of

Defendants infringement of the Infringing Mark or false association, and all costs

10
11
RUSS, AUGUST & KABAT

of this action as provided by 15 U.S.C. 1117;

For a trebling or enhancement of the damages awarded to the

maximum amount allowed by law and reasonable attorneys fees as provided by 15

U.S.C. 1117 and applicable California and common law;

14
15

For an award of punitive damages to Ronica and against Defendants

pursuant to California Civil Code 3294;

For prejudgment and post-judgment interest; and

For such other and further relief as the Court may deem just and

equitable.

DATED: March 31, 2016

Respectfully submitted,
RUSS, AUGUST & KABAT

21
22

By:

23
24

Irene Y. Lee
Attorneys for Plaintiff
Ronica Holdings Limited

25
26
27
28

50
___________________________________________________________________________
COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES

3537-3 160330 Complaint.docx

Case 8:16-cv-00597-BRO-E Document 1 Filed 03/31/16 Page 51 of 51 Page ID #:51

DEMAND FOR JURY TRIAL

1
2
3

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiff

Ronica Holdings Limited hereby demands trial by jury on all issues so triable.

4
5

DATED: March 31, 2016

Respectfully submitted,
RUSS, AUGUST & KABAT

By:

8
9

Irene Y. Lee
Attorneys for Plaintiff
Ronica Holdings Limited

10
RUSS, AUGUST & KABAT

11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
51
___________________________________________________________________________
COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES

3537-3 160330 Complaint.docx

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