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Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 1 of 12 Page ID #:1

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CHRISTOPHER S. RUHLAND (SBN 175054)


Email: christopher.ruhland@ dechert.com
MICHELLE M. RUTHERFORD (SBN 268669)
Email: michelle.rutherford@ dechert.com
DECHERT LLP
US Bank Tower
633 West 5th Street
37th Floor
Los Angeles, CA 90071-2013
Telephone: +1 213 808 5700
Facsimile: +1 213 808 5760
Attorneys for Plaintiff
Victorias Secret Stores Brand Management, Inc.
UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

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Victorias Secret Stores Brand


Management, Inc.,
Plaintiff,

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v.

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Michael Ray McGhie individually and


d/b/a A Michael Ray Proj
ect, Michael
Ray Films, Michael Ray TV, London
Philms, and Hugh Tubbe

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Defendants.

Case No. 2:15-CV- 7502


COMPLAINT FOR:
(1)FEDERAL REGISTERED
TRADEMARK INFRINGEMENT
(15 U.S.C. 1114);
(2)FEDERAL REGISTERED
TRADEMARK DILUTION (15
U.S.C. 1125(C));
(3)FEDERAL UNFAIR
COMPETITION (15 U.S.C. 1125
(A);

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(4)CALIFORNIA REGISTERED
TRADEMARK INFRINGEMENT;

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(5)CALIFORNIA REGISTERED
TRADEMARK DILUTION;

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(6)COMMON LAW UNFAIR


COMPETITION;AND

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(7)COMMON LAW TRADEMARK


INFRINGEMENT

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DEMAND FOR JURY TRIAL

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D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 2 of 12 Page ID #:2

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Plaintiff Victorias Secret Stores Brand Management, Inc. (Victorias


Secret) alleges as follows:

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JURISDICTION
1.

This is a civil action for trademark infringement, dilution, and unfair

competition under the Lanham 15 U.S.C. 1051 et seq., California Business and

Professions Code 14200 et seq., and California common law. The Court has

subj
ect matter j
urisdiction over the trademark claims pursuant to 28 U.S.C. 1331

and 1338 and supplemental j


urisdiction over the remaining claims pursuant to 28

U.S.C. 1367.

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2.

Venue is proper in this Court under 28 U.S.C. 1391(b) and (c).

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PARTIES
3.

Victorias Secret is a corporation organized and existing under the

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laws of the State of Delaware with its principal place of business at Three Limited

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Parkway, Columbus, Ohio 43230.

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4.

Victorias Secret owns numerous federally registered trademarks,

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including the famous VICTORIAS SECRETand VStrademarks, used in

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connection with womens apparel, including intimate apparel, casual and

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sport/athletic apparel, beauty products and a variety of other products and services.

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5.

Victorias Secret uses these trademarks in connection with the well-

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known Victorias Secret catalogue, the website www.victoriassecret.com, and the

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acclaimed Victorias Secret Fashion Show, a televised event featuring the

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Victorias Secret Angelsupermodels, which has become an annual highlight of

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the fashion industry.

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6.

Upon information and belief, Defendant Michael Ray McGhie a/k/a

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Michael Ray is an individual residing in Inglewood, California. On information

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and belief, Michael Ray operates businesses and maintains internet identities under

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the names A Michael Ray Proj


ect, Michael Ray Films, Michael Ray TV, London

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Philms, and Hugh Tubbe.

D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 3 of 12 Page ID #:3

7.

Defendant conducts his businesses and advertises his goods and

services as a filmmaker, producer, and director through the online website,

www.amichaelrayproj
ect.com, as well as numerous internet and social media sites

such as Twitter, Facebook, IMDb, Vimeo, YouTube, Google+, and Slated.

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DEFENDANTS UNLAW FUL CONDUCT


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Defendant has repeatedly represented himself as the director of

Victorias Secret commercials and is using both the VICTORIAS SECRETand

VStrademarks, along with Victorias Secrets goodwill, to prop up these false

representations and market and sell his goods and services.

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9.

Defendant has never been employed by Victorias Secret for any

purpose and has never directed any commercial for Victorias Secret.
10.

Defendant has uploaded videos to his website and YouTube claiming

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they are commercials he directed for Victorias Secret. In connection with these

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videos he has used the Victorias Secret name and well-known VICTORIAS

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SECRETand VSmarks without permission or authorization.

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11.

On information and belief, Defendant has also uploaded videos to

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YouTube under the user names LondonPhilms and Hugh Tubbe. These videos also

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utilize the VICTORIAS SECRETand VStrademarks and claim to be audition

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reels and/or footage from auditions he hosted to produce and direct Victorias

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Secret commercials. One of these posted by LondonPhilms contains a splash screen

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at the beginning of the video that reads Michael Ray TVand then Victorias

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Secret Auditions (2015).

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12.

On information and belief, Defendant wrongfully has used the

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Victorias Secret name and marks to solicit aspiring actresses and models to

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auditionfor him. As his YouTube and website videos demonstrate, Mr.

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McGhies conduct during these auditionsis outrageous and completely

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inconsistent with the manner in which Victorias Secret treats models.

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D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 4 of 12 Page ID #:4

13.

Among the misrepresentations Defendant writes in the bio on his

website are that [he]has directed TV spots for Budweiser, Coors (sic) Lite,

Lamborghini, Cadillac, Victoria's Secret, Reebok, McDonald'


s, Motorola, Audi,

Mercedes Benz, Ikea, 5 Gum, Nike, Adidas, and Samsung.

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Defendants unlicensed use of the VICTORIAS SECRETand VS

trademarks in his advertising, marketing, distribution, and sale of his goods and

services violates Victorias Secrets trademark rights.

FIRST CLAIM FOR RELIEF

[TrademarkInfringement 15 U.S.C. 1114]

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15.

Victorias Secret realleeges and incorporates by reference the

allegations set forth in paragraphs 1-13 above.


16.

Victorias Secret is the owner of numerous federal trademark

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registrations for the VICTORIAS SECRETand VStrademarks, including

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United States trademark registration numbers 1146199, 1908042, 2455260,

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3480533, 4029090, 4118910, 4649331, 4648929, 4649269, 4238168.

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17.

Defendant is using in commerce, both within California and interstate,

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reproductions, counterfeits, copies, or colorable imitations of one or more of

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Victorias Secrets federally registered trademarks in connection with his

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advertisement, display, promotion, marketing, distribution, sale and/or offer for sale

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of his goods and services.

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18.

Victorias Secret has not authorized Defendants use of its trademarks.

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19.

Defendants unauthorized use of any one of the Victorias Secret

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trademarks is likely to cause confusion, or to cause mistake, or to deceive, in

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violation of 15 U.S.C. 1114(1).

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20.

Defendant acted willfully, with the intent to harm Victorias Secret,

and to trade on its reputation and goodwill.


21.

On information and belief, Defendant has profited from his infringing

conduct.

D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 5 of 12 Page ID #:5

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22.

Victorias Secret has suffered damages resulting from Defendants

infringing conduct.
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By reason of Defendants infringing conduct, Victorias Secret has

suffered, is suffering, and will continue to suffer irreparable harm and, unless

Defendant is enj
oined, the harm will continue. Victorias Secret has no adequate

remedy at law.

SECOND CLAIM FOR RELIEF

[Dilution of Famous Mark15 U.S.C. 1125(c)]

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24.

Victorias Secret realleeges and incorporates by reference the

allegations set forth in paragraphs 1-22 above.


25.

As a result of Victorias Secret continuous promotion of its goods and

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services in conj
unction with the VICTORIAS SECRETand VStrademarks

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and the substantial investment in building the strength and recognition of them, the

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trademarks have become famous.

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26.

Defendants use in commerce of the VICTORIAS SECRETand

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VStrademarks began after they became famous and his conduct has caused

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dilution of the distinctive quality of the marks, in violation of 15 U.S.C. 1125(c).

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27.

Defendants acts of dilution are blurring the distinctiveness of the

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VICTORIAS SECRETand VStrademarks and tarnishing the reputation and

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goodwill of them.

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This dilution is a direct result of Defendants use of the trademarks to

market and sell his goods and services.


29.

On information and belief, Defendant intended to trade on Victorias

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Secrets reputation and/or to cause dilution of the famous VICTORIAS

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SECRETand VStrademarks.

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30.

Victorias Secret has suffered damages resulting from Defendants

unlawful and willful dilution of Victorias Secrets federally registered trademarks.

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D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

-4-

COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 6 of 12 Page ID #:6

31.

By reason of Defendants infringing conduct, Victorias Secret has

suffered, is suffering, and will continue to suffer irreparable harm and, unless

Defendant is enj
oined, the harm will continue. Victorias Secret has no adequate

remedy at law.

THIRD CLAIM FOR RELIEF

[Unfair Competition 15 U.S.C. 1125(a)]

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32.

Victorias Secret realleeges and incorporates by reference the

allegations set forth in paragraphs 1-30 above.


33.

Victorias Secrets use of the VICTORIAS SECRETand VS

trademarks in the United States predates any use by Defendant.

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34.

Victorias Secret has not authorized Defendants use of its trademarks.

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35.

Defendants unauthorized use of any one of the Victorias Secret

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trademarks is likely to cause confusion, or to cause mistake, or to deceive, in

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violation of 15 U.S.C. 1125(a).

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36.

On information and belief, Defendant has misappropriated Victorias

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Secrets substantial rights in and to the VICTORIAS SECRETand VS

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trademarks as well as the goodwill associated with them. Unless restrained and

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enj
oined by this Court, the Defendants conduct will permit him to gain an unfair

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competitive advantage, enj


oy the selling power and reputation of the Victorias

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Secret trademarks, and allow Defendant to claim his work has been sponsored or

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authorized by Victorias Secret.

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37.

Victorias Secret has suffered damages resulting from Defendants

infringing conduct and unfair competition.


38.

On information and belief, the acts of Defendant described in this

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complaint have been committed with the intention of deceiving and misleading the

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public and with the intention of causing harm to Victorias Secret.

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39.

By reason of Defendants infringing conduct, Victorias Secret has

suffered, is suffering, and will continue to suffer irreparable harm and, unless

D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

-5-

COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 7 of 12 Page ID #:7

Defendant is enj
oined, the harm will continue. Victorias Secret has no adequate

remedy at law.

FOURTH CLAIM FOR RELIEF

[TrademarkInfringement California Business and Professions Code 14245]

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40.

Victorias Secret realleeges and incorporates by reference the

allegations set forth in paragraphs 1-38 above.


41.

Defendant is using in commerce reproductions, counterfeits, copies, or

colorable imitations of one or more of Victorias Secrets federally registered

trademarks in connection with his advertisement, display, promotion, marketing,

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distribution, sale and/or offer for sale of his goods and services.

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42.

Victorias Secret has not authorized Defendants use of its trademarks.

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43.

Defendants unauthorized use of any one of the Victorias Secret

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trademarks is likely to cause confusion, or to cause mistake, or to deceive, in

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violation of California Business and Professions Code 14245.

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44.

Defendant acted willfully, with the intent to harm Victorias Secret,

and to trade on Victorias Secrets reputation and goodwill.


45.

On information and belief, Defendant profited from his infringing

conduct.
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Victorias Secret has suffered damages resulting from Defendants

infringing conduct.
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By reason of Defendants infringing conduct, Victorias Secret has

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suffered, is suffering, and will continue to suffer irreparable harm and, unless

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Defendant is enj
oined, the harm will continue. Victorias Secret has no adequate

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remedy at law.

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FIFTH CLAIM FOR RELIEF

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[TrademarkDilution California Business and Professions Code 14247]

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48.

Victorias Secret realleeges and incorporates by reference the

allegations set forth in paragraphs 1-46 above.

D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

-6-

COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 8 of 12 Page ID #:8

49.

As a result of Victorias Secret continuous promotion of its goods and

services in conj
unction with the VICTORIAS SECRETand VStrademarks

and the substantial investment in building the strength and recognition of them, the

trademarks have become famous.

50.

Defendants use in commerce of the trademarks began after they

became famous and has caused dilution of the distinctive quality of the marks, in

violation of California Business and Professions Code 14247.

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51.

Defendants acts of dilution are blurring the distinctiveness of the

VICTORIAS SECRETand VStrademarks and tarnishing the reputation and


goodwill of them.
52.

This dilution is a direct result of Defendants use of the trademarks to

market and sell his goods and services.


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On information and belief, Defendant intended to trade on Victorias

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Secrets reputation and/or to cause dilution of the famous VICTORIAS

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SECRETand VStrademarks.

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54.

Victorias Secret has suffered and will continue to suffer damages as a

result of Defendants infringing conduct.


55.

By reason of Defendants infringing conduct, Victorias Secret has

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suffered, is suffering, and will continue to suffer irreparable harm and, unless

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Defendant is enj
oined, the harm will continue. Victorias Secret has no adequate

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remedy at law.

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SIXTH CLAIM FOR RELIEF

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[Common Law Unfair Competition]

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56.

Victorias Secret realleges and incorporates herein by reference the

allegations in paragraphs 1 through 54.


57.

Defendant, by virtue of his acts as alleged above, has willfully,

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knowingly, and intentionally engaged in acts of unfair competition under the

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common law of the State of California.

D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 9 of 12 Page ID #:9

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58.

As a direct and proximate cause of Defendants conduct, Victorias

Secret has sustained damages and Defendant has received wrongful gains.
59.

By reason of Defendants conduct, Victorias Secret has suffered, is

suffering, and will continue to suffer irreparable harm and, unless Defendant is

enj
oined, the irreparable harm will continue. Victorias Secret has no adequate

remedy at law.

SEVENTH CLAIM FOR RELIEF

[Common Law TrademarkInfringement]

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60.

Victorias Secret realleges and incorporates herein by reference the

allegations in paragraphs 1 through 58.


61.

By reason of Victorias Secrets continuous use and promotion of the

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VICTORIAS SECRETand VStrademarks, as well as the distinctiveness of

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the marks, consumers associate and recognize the marks as representing a single

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source or sponsor of goods and, therefore, the trademarks are protectable

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trademarks at common law.

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62.

Victorias Secrets common law trademark rights are superior to any

rights that Defendant may claim in and to said marks.

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63.

Victorias Secret has not authorized Defendants use of its trademarks.

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64.

Defendants unauthorized use of any VICTORIAS SECRETand

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VStrademarks is likely to cause confusion, or to cause mistake, or to deceive, in

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violation of the common law.

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65.

Defendant acted willfully, with the intent to harm Victorias Secret,

and to trade on Victorias Secrets reputation and goodwill.


66.

On information and belief, Defendant profited from his infringing

conduct.
67.

Victorias Secret has suffered damages resulting from Defendants

infringing conduct.

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D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 10 of 12 Page ID #:10

68.

By reason of Defendants infringing conduct, Victorias Secret has

suffered, is suffering, and will continue to suffer irreparable harm and, unless

Defendant is enj
oined, the harm will continue. Victorias Secret has no adequate

remedy at law

69.

Defendants infringing conduct is willful, wanton, malicious,

oppressive, and in conscious disregard of Victorias Secrets rights in its trademarks

and j
ustifies imposition of punitive and exemplary damages under California Civil

Code 3294.

PRAYER FOR RELIEF

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Wherefore, Victorias Secret prays for relief as follows:

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1.

That Defendant, his agents, servants, employees, attorneys, and any

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other persons in active concert or participation with Defendant be temporarily,

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preliminarily, and permanently enj


oined from directly or indirectly infringing

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Victorias Secrets intellectual property rights in any manner, including, but not

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limited to using any of Victorias Secrets federally registered trademarks in

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connection with Defendants advertisement, display, promotion, marketing,

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distribution, sale and/or offer for sale of his goods and services, or otherwise

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making any unauthorized use of any of Victorias Secrets trademarks;

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2.

That Defendant be directed to deliver to Victorias Secret all materials

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bearing any simulation, reproduction, counterfeit, copy, or colorable imitation of

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the Victorias Secret trademarks, as well as:

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a.

any labels, packages, wrappers, containers or any other

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unauthorized promotion or advertising material item which reproduces, copies,

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counterfeits, imitates or bears any of the Victorias Secret trademarks;

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b.

any devices or elements used for making or manufacturing

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videos or other internet promotions incorporating the Victorias Secret trademarks;

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and

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c.

all business records believed to concern the use of Victorias

D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 11 of 12 Page ID #:11

Secrets trademarks in connection with Defendants advertisement, display,

promotion, marketing, distribution, sale and/or offer for sale of his goods and

services;

3.

That Defendant be directed to file with the Court and serve upon

counsel for Victorias Secret, within thirty days after entry of j


udgment, a report in

writing under oath setting forth in detail the manner and form in which Defendant

has complied with the requirements of the inj


unction;

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For damages according to proof;

5.

For damages as authorized by the relevant statutes;

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6.

For disgorgement of any money, property, or the value of any other

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economic benefit that Defendant has received as a result of its conduct;

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For punitive damages;

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For interest as allowed by law;

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For costs of suit, including attorneysfees;and

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10.

For such other relief available under law that the Court deems just and

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proper.

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Dated:

September 24, 2015

DECHERT LLP

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By: /s/ Michelle M. Rutherford


Michelle M. Rutherford
Christopher S. Ruhland

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Attorneys for Plaintiff


VICTORIAS SECRET STORES
BRAND MANAGEMENT, INC.

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D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

Case 2:15-cv-07502 Document 1 Filed 09/24/15 Page 12 of 12 Page ID #:12

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DEMAND FOR JURY TRIAL


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

Secret Stores Brand Management, Inc. hereby demands a trial by j


ury.

Dated:

September 24, 2015

DECHERT LLP

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By: /s/ Michelle M. Rutherford


Michelle M. Rutherford
Christopher S. Ruhland

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Attorneys for Plaintiff


VICTORIAS SECRET STORES
BRAND MANAGEMENT, INC.

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15732838.1

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D ECHERT LLP
ATTO RNEY S AT LAW
LOS A NG EL ES

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COMPLAINT

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