brian lichtenberg v. alex & chloe - tro oppn

7/27/2019 Brian Lichtenberg v. Alex & Chloe - TRO Oppn

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Case 2:13-cv-06837-DDP-PJW Document 35 Filed 10/21/13 Page 1 of 31 Page ID #:1155

1 William R. Bailey, State Bar No. [email protected] Kathleen L. T. Tubania, State Bar No. 2458563 [email protected]

BAILEY LAw CoRPORATION4 4000 MacArthur Blvd., Suite 6005 Newport Beach, CA 92660Telephone: 714.881.51606 Facsimile: 888.737.87027 Attorneys for Defendants Alex & Chloe, Inc.,8 'Christopher Walter Lichtenberg, Marked Showroom, LLC,Jaqueline Yi, Tu Tran, Kyle Mockett, and Kaytee Enright9

10 UNITED STATES DisTRICT CouRT11 CENTRAL DISTRICT OF CALIFORNIA- WESTERN DIVISION1213 Brian Lichtenberg, LLC, a California14 limited liability company; and BrianLichtenberg, an individual,1516 Plaintiffs,17 v.18 Alex & Chloe, Inc., a Californiacorporation, Christopher Walter19 Lichtenberg, an individual; Marked20 Showroom, LLC, a California limitedliability company; Jacqueline Yi, an21 individual; Kyle Mockett, an individual;22 Kaytee Enright, an individual,23 Defendants.242526 1 1 - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - ~27

Case No. 2:13-CV-6837-DDP (PJWx)OPPOSITION To PLAINTIFFS' Ex PARTEAPPLICATION FOR TEMPORARY RESTRAININGORDER

[FILED CoNCURRENTLY WITH DEFENDANTS'EviDENTIARY OBJECTIONS TO THE PLAINTIFFSDECLARATIONS, DECLARATION OF WILLIAMR . BAILEY, AND REQUEST FOR JUDICIALNoTICE]

Hon. Dean D. PregersonDate: None SetTime: None SetPlace: Courtroom 3, 2nd FloorDiscovery Cut-Off: None SetNone Setre-Trial Conference:Trial Date:Action Filed:

None SetSeptember 17, 2013

OPPOSITION ro PLAINTIFFS' Ex P.


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1 Defendants Alex & Chloe, Inc. (herein "AC") and Christopher Walter Lichtenberg2 (herein "CL") Gointly referred to as "ACCL"), Marked Showroom, LLC, Jaqueline Yi,3 Tu Tran, Kyle Mockett, and Kaytee Enright (hereinafter "Defendants"), hereby oppose45

Plaintiffs Brian Lichtenberg and Brian Lichtenberg, LLC's (hereinafter "Plaintiffs") Ex6 Parte Application for Temporary Restraining Order and Order to Show Cause RE7 Preliminary Injunction on the grounds set forth in the following Memorandum of Points8 and Authorities.9 Additionally, due to time constraints and page limitations, for which there is not10

11 opportunity to request modifications, it is not possible to fully brief this matter.12 Additional time and pages are requested to fully brief Defendants' Opposition to13 Plaintiffs' Ex Parte Application for TRO, which was previously DENIED THREE14 TIMES by the state court.1516

1718192021222324252627

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1 TABLE oF CoNTENTS2 PAG3 I. Introduction and Factual Background ..................................................................... 34 II. Plaintiffs Have Materially Changed their Facts ..................................................... .45 Ill. Plaintiffs are Forum-Shopping After 7 Months of Extensive and Costly State6

Court Litigation ........................................................................................................ 678 IV. This Court Should Decline to Exercise Supplemental Jurisdiction and Stay9 Plaintiffs' Lanham Act Claim .................................................................................. 7

10 V. The State Court Has Already Decided the Exact Same Ex Parte Issues in a11 Previous OSC RE Preliminary Injunction Hearing ................................................. 812 VI. Plaintiffs Still Have Not Met Their Burden for a TRO ................................ l l1314 A) Plaintiffs Have No Urgent Matter that Justifies Ex Parte Relief and Plaintiffs'15 Application for TROis Barred by Laches Due to Delay .................................l216 B) Plaintiffs Still Cannot Establish a Likelihood of Success on the Merits ........... l317 1. There is NO Violation of Section 43(a) of the Lanham Act- Unfair1819 Competition ................................................................................................... l320 a) The Facts Show that Plaintiffs Began Selling Their "Ballin Paris"21 Design After Defendants and Any Claim by Plaintiff for Unfair22

Competition Must Necessarily Fail ....................................................... 123 b) Plaintiffs have No Viable Lanham Act Claim ........................................ l424

25 i) Plaintiffs' Trade Dress Does Not Identify the Source of the Plaintiffs'26 Product................................................................................................ 127

TABLE oF CoNTENTs AND AuTHoRITIEs28 PAGE i of


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ii) The Plaintiffs' Trade Dress is Not Distinctive and Does NotDistinguish Plaintiffs' Goods From Those Manufactured or Sold byOthers Selling "Parody" or "Spoof'' Shirts ...................................... .18

iii) The Plaintiffs' Products Do Not Deserve Trademark ProtectionBecause Any Similar Trade Dress is "Functional" ........................... 22

iv) Defendants' Garment Labels Do Not Create a Likelihood ofConsumer Confusion ........................................................................ 23

2. Because Plaintiffs Cannot Conclusively Show Ownership in "Ballin Paris",Plaintiffs' Claims in Their Other Causes of Action Must Also Fail toWarrant Injunctive Relief ............................................................................ 24

C) Plaintiffs Cannot Establish a Likelihood of Irreparable Harm ......................... 24D) The Balance of Equities Dictates that Defendants' NOT Be Enjoined ............. 25E) Public Interest is Best Served by NOT Allowing Defendants to be

17 Enjoined .............................................................................................................. 2618 VII. Expedited Discovery is Not Warranted ........................................................ 2619202122232425262728 PAGE ii ofi


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1 TABLE OF AuTHORITIES23 FEDERAL CASES4 !Bradley v. Chiron Corp., 136 F. 3d 1317 (Fed. Cir. 1998) ................................................ 65 Christian Laboutin SA. v. Yves Saint Laurent Am. Holding, Inc.,6

696 F. 3d 206 (2nd Cir., 2012) ...............................................................................2078 Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F. 3d 1252 (91h Cir., 2001) ....................... 159 Herman Miller, Inc. v. Palazzetti Imports and Exports,

10 270 F. 3d 298 (61h Cir., 2001) .................................................................................1811 Hubbard Feeds, Inc. v. Animal Feed Supplement, Inc.,1213

182 F. 3d 598 (8th Cir., 1999) .................................................................................114 Int'lJensen, Inc. v. Metrosound U.S.A., Inc.,15 4 F. 3d 819 (9th Cir., 1993) ..................................................................................... 116 dKnitwaves v. Lolly-togs Ltd. (Inc.), 71 F. 3d 996 (2n Cir. 1995) .....................................1617 Miller v. California Pac. Med. Ctr., 991 F.2d 536 (9th Cir. 1993) ...................................11819 Mullis v. United States Bank. Ct., 828 F.2d 1385 (9th Cir. 1987) ....................................... 620 Nishimatsu Canst. Co. Ltd. v. Houston Nat'l Bank, 515 F. 2d 1200 (5th Cir. 1975) ...........21 Polymer Technologies, Inc. v. Bridwell103 F. 3d 970 (Fed Cir. 1996) ...........................1222

Qualitex Co v. Jacobson Prods. Co., Inc.,23514 U.S. 159, 115 S. Ct. 1300 (1995) ....................................................................224

25 Samara Bros., Inc. v. Judy-Philippine, Inc. 969 F. Supp. 895 (S.D.N.Y., 1997) ............1626 Stephen W. Boney, Inc. v. Boney Servs., Inc., 127 F.3d 821 (9th Cir. 1997) ..................... 1827

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TABLE OF AUTHORITIES(CoNTINUED)

Tom Doherty Assoc., Inc v. Saban Entertainment, Inc., 60 F. 3d 27 (2nd Cir. 1995) .......12Two Pesos, Inc. v. Taco Cabana, Inc.,

56 505 U.S. 763, 112 S. Ct. 2753 (1992) ..................................................................... 17 Walmart Stores, Inc. v. Samara Brothers, Inc.,8 529 U.S. 205, 120 S. Ct. 1339 (2000) .................................................................... 149

10 West Coast, Inc. v. Snohomish County,11 33 F. Supp. 2D 924 (W.D. Wash., 1999) ................................................................. 712 Winter v. Natural Resources Defense Council, Inc.,13 555 U.S. 7, 129 S. Ct. 366 (2008) .......................................................................... 121415

STATUTES1617 :15 u.s.c. 1127 ................................................................................................................ 1418 28 u.s.c. 1367 ................................................................................................................. 719 Cal. Civ. Code 3426.1 .................................................................................................... 1020 I21222324252627

TABLE OF CoNTENTS AND AuTHORITIES28 II

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1 MEMORANDUM OF PmNTs AND AuTHORITIES2 I . INTRODUCTION AND FACTUAL BACKGROUND3 Plaintiffs filed this lawsuit on September 17, 2013 after dismissing a heavily45

litigated and virtually identical verified complaint they filed on March 22, 2013 in the6 Superior Court of California, County of Los Angeles, excepting the new perjurious7 factual changes Plaintiffs inserted into their federal pleadings, because the state court8 judge refused to grant a preliminary injunction.1 After 7 months of intensive discovery,9 motion practice, and on the eve of Defendants demurrer and motion to strike hearings,1011 Plaintiffs dismissed their state court case on September 12, 2013. See Brian Lichtenberg12 LLC, et al. v. Alex& Chloe, Inc., Los Angeles Superior Court, Case Number BC50383513 (hereinafter "State Case"). However, the State Case is still pending before the state14 court on the IDENTICAL issues because Defendants filed a Cross-Complaint against15 Plaintiffs which was not dismissed.1617 Importantly, this exact issue which is before this Court today is the exact same18 issue which was DENIED by the state court on three separate occasions.19 The heart of Plaintiffs complaint in state court was that Plaintiff believed20 Defendants stole the "Ballin Paris" design and used Plaintiffs' contacts to sell the21

merchandise. Defendants/Cross-Complainants ACCL 1s state court allegations are2223 essentially the opposite ofPlaintiffs. Plaintiffs stole ACCL's "Ballin Paris" design,24 which was publicly release for sale by ACCL on January 27, 2013, and Plaintiff's also25 11---------1 Plaintiffs asserted the following COA: (1) Breach of Contract, (2) Conversion, (3) Unfair Competition, ( 4) Breach of26 Fiduciary Duty and Duty of Loyalty; (5) Intentional Interference with Prospective Economic Relations; (6) NegligentInterference with Prospective Economic Relations, (7) Misappropriation of Trade Secrets; (8) Defamation, Libel, and

Slander; (9) Intentional Infliction of Emotional Distress; (10) Negligent Infliction of Emotional Distress; (11) Declaratory27 Relief; and (12) Common Count.OPPOSITION ro PLAINTIFFS' Ex PARTEAPPUCATION FOR TEMPORARY RESTRAINING ORDER PAGE 3 OF 2

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1 Ilbreached their contracts with Defendant CL related to other designs.22 II. PLAINTIFFS HAVE MATERIALLY CHANGED THEIR FACTS3 Plaintiffs filed their first application for TRO on March 28, 2013, which was4

IIIIsummarily granted by the state court, however, on April 19, 2013 at the OSC for6 IIPreliminary Injunction, the state court reversed it's position and dissolved the TRO. The7 court then went to great lengths in a nine (9) page order discussing why a TRO and8 Preliminary Injunction should not issue for Plaintiffs. See Exhibit J to Defendant's9 Request for Judicial Notice, Department 86 April 19, 2013 Minute Order.11 Of particular importance, the state court indicated that the facts provided by both12 IIparties was "inconclusive" as to the dispositive issue ofwho created the Ballin Paris13 IIdesign first. Id. at page 4 of 9. The court cited to the following facts:14 1) Plaintiff conceived the Ballin Paris design in September 2012,

2) CL's employment with Plaintiff began in January 2013,3) at some unspecified time Plaintiff's shared the Ballin Paris idea with CL,16 4) CL's infringing acts took place DURING his employment by Plaintiff's.17 In opposition to Plaintiffs' claims, the court noted18 1) CL began working on a Balmain parody in June 2012, but the exhibit doesnot support that conclusion,19 2) CL arrived at his Ballin Paris design on October 21,2012,3) AC had sweatshirts printed with the Ballin design by January 21, 2013.21 Surprisingly, despite having filed an original Verified Complaint, upon which the22 "foregoing order was based, and having filed a Verified First Amended Complaint on23 April 23, 2013 which also conformed to the above facts, on May 23, 2013, in Brian2411-------2 Defendants asserted the following CGA: (1) False Advertising, (2) Breach of Contract (Partnership), (3) Breach of26 II Contract (Employment), (4) Intentional Interference with Contractual Relations, (5) Intentional Interference withProspective Economic Advantage, (6) Negligent Interference with Prospective Economic Advantage, (7) Trade Libel, (8)

II Libel, (9) Slander, (10) Fraud and Intentional Deceit, (11) Declaratory Relief, (12) Accounting, and (13) Breach of27

28Confidence.

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1 Lichtenberg's Declaration in Support of Plaintiff's Ex Parte Application for a TRO (2nd2 Attempt), Brian changes his position and now claims to have conceived the idea for the3 Ballin Paris design on January 29, 2012 as a result of an email exchange with Kanye4

West.6 Not surprisingly, this email with Kanye West has nothing to do with Balmain or a7 parody thereof, the word "ballin" in the email was used only once as a verb in the8 subject line (as oppose to a noun), and Brian now has a sketch from his day-planner9 showing a completed sketch on January 29, 2012. See Exhibit N to Defendant's Request

11 for Judicial Notice, Brian Lichtenberg's May 28, 2013 Declaration at 1f25.12 These new and contradictory facts are also found in the instant federal complaint13 at 1f1f 45,46, and Exhibit B, only they have been massaged a little more AND these new14 and contradictory facts can also be found in the current moving papers. See Brian

Lichtenberg's Declaration in Support Plaintiff's Ex Parte Application for a TRO dated1617 October 14, 2013 at 1f32.18 Additionally, other new "facts" seem to have emerged in Brian's current19 declaration, including that he supposedly shared his idea with Reda Bouaissa, a cross-

defendant in the State Case, AND began sketching the design on January 30, 2012, AND21 II22 Brian apparently shared the design with CL in March 2012. [d. at 1f1f34-37.23 These new factual revelations are not coincidental. I would hope the timing of24 these revelations are not lost on the court. Only after the state court identified Plaintiff's

legal hurdles, but incidentally not before Plaintiffs filed a First Amended Complaint, did26 the Plaintiff's miraculously discover new and contradictory supporting facts that27 "

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1 miraculously cure some defects identified by the state court. See Exhibits A-DD of2 Defendants Request for Judicial Notice.3 The Court is not obligated to accept contradictory facts from earlier pleadings,4 II"exhibits attached to the complaint, or facts that can be judicially noticed even in the mos6 IIfavorable context of a 12(b)(6) review, so the Court clearly is not required to accept them7 in the instant ex parte application and should NOT do so now. Bradley v. Chiron Corp.8 136 F3d 1317,1324 (Fed. Cir. 1998) (the court may strike the changed allegations as9 "false and sham"); Nishimatsu Const. Co. Ltd. v. Houston Nat'l Bank 515 F2d 1200,120

11 1I(5th Cir. 1975); Mullis v. United States Bank. Ct. 828 F2d 1385,1388 (9 th Cir. 1987).

12 II III. PLAINTIFFS ARE FORUM-SHOPPING AFTER 7 MONTHS OF EXTENSIVE AND COSTLY STATE13 COURT LITIGATION

14 Plaintiffs' State Case was instigated by Plaintiffs in March of 2013. DefendantsIIACCL immediately filed their complaint as cross-complaint in response. Since that

16 "time, numerous motions have been heard by the state court, including three ex parteII17 TROs by Plaintiff, which were denied, an ex parte motion to compel by Plaintiff, which

1819 "was denied, an ex parte protective order by Defendants, which was granted, voluminou

JJdiscovery has been conducted, and case management hearings have been held.21 Although, not inconsequentially, Defendants most important pleadings, their

22 demurrers and motions to strike, have not been heard by the court due to Plaintiffs23 dismissal, notwithstanding, the state court has made several important and telling24I/findings regarding ultimate viability of Plaintiffs' claims in it's order denying Plaintiffs'

26 IIrequest for a Preliminary Injunction.27

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1 II Furthermore, the parties have spent tens of thousands of dollars intensely litigating2 "this case in the state court and the state court has had the pleasure of spending it's limited3 judicial resources overseeing this matter and it's heavy motion practice.4

Finally, even a cursory review of Plaintiffs' unregistered trademark infringement6 IIcause of action reveals that this cause of action is not only meritless, but also state law7 claims predominate this lawsuit. Plaintiffs' federal claim is a red-herring inserted for the8 sale purpose of changing forums. The same facts and circumstances have been and9 continue to be at issue in the ongoing State Case.

IV. THIS COURT SHOULD DECLINE TO EXERCISE SUPPLEMENTAL JURISDICTION AND STAY11 PLAINTIFFS' LANHAM ACT CLAIM.12 Defendants respectfully request that this Court decline to exercise its supplementa131411jurisdiction in this case for two reasons: (1) state law claims predominate over the ONE

IIfacially unsupportable federal claim asserted under the Lanham Act and (2) failing to16 II decline will result in "duplicative litigation, wasted judicial resources, needless17 expenditures for both parties, conflicting case schedules, a potential race to judgment,1819 II and/or the possibility of inconsistent verdicts". See 28 USC 1367(c)(2);West Coast,

Vnc. v. Snohomish County, 33 F. Supp. 2D 924, 925 (W.D. Wash. 1999).21 In this case, Plaintiffs' entire complaint rests on who owns the "Ballin Paris"22

design, which is the same issue currently pending in the state court. Plaintiffs' one and2324 Iionly federal cause of action under the Lanham Act is their claimed trademark rights in

lithe phrases "Ballin" and "Ballin Paris" and in the "fabrics, stitching, and label location"26 their products. See Plaintiffs Complaint at ~ ~ 4 2 , 61, 67, 95, 103, 110, 111, and 114.27




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1 However, Plaintiffs have utterly failed to identify how a phrase not related to2 Plaintiffs' name indicates the source of goods printed with that phrase. Plaintiffs have3 also failed to show how the "fabric, stitching, and label location" on their products4

IIlIindicate the source of the goods. Nowhere do Plaintiffs claim to have created a new6 IIfabric for its garment labels, nor have they claimed they developed a new form or style7 of stitching and virtually every manufacturer places a label on the inside rear collar of8 their shirts and sweatshirts. There is nothing about the fabric, stitching, and garment9 label location or any combination thereof that is unique to Plaintiffs.

11 Plaintiffs' Lanham Act claim is unsupportable on its face and should be dismissed12 Iland, even if it could survive, it is still outweighed by the state law claims currently13 "pending in the state court.14 v. THE STATE COURT HAS ALREADY DECIDED THE EXACT SAME Ex PARTE ISSUES IN A

PREVIOUS OSC RE PRELIMINARY INJUNCTION HEARING16 Even a cursory comparison of Plaintiffs' federal complaint and state complaint17 reveals that Plaintiffs dismissed their complaint in the state court on September 17, 201318

only to file the exact same complaint, excepting Plaintiff's NEW AND19CONTRADICTORY FACTS and a cause of action under the Lanham Act, to get a

21 IIsecond bite of the apple.22

Plaintiffs previously applied THREE TIMES for an ex parte TRO in the state23 court, each time making the same exact arguments. When Plaintiffs filed for their first24IITRO, they summarily received a their order, but it was short lived. Once the Court was

26 liable to review the parties' massive amount ofmoving papers the preliminary injunction


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1 Ilwas denied and the TRO dissolved. When Plaintiffs filed their second ex parte TRO, it2 "too was denied because the did not meet their burden of showing irreparable injury. The

II3 Court then ordered Plaintiffs to refrain from bringing any further ex parte TROs.4

IInHowever, Plaintiffs ignored the court's order and when they filed a third ex parte TRO,6 lithe court threatened them with sanctions if they did not immediately withdraw it.7 In determining whether or not to issue a preliminary injunction in the state court8 case, the Honorable Joanne O'Donell of the Los Angeles Superior Court made clear that9 Plaintiffs' Application for TRO, and their entire Complaint, rests on

11 three principle claims as unfair business practices: thatDefendant Lichtenberg is (1) misappropriating, marketing and12 selling his [Plaintiff's] designs; (2) misappropriating his[Plaintiff's] contacts to assist in his marketing and selling of the13 "Ballin" concept; and (3) running a "smear campaign" againstPlaintiff on social media.14

IISee page 3 of 9 of Exhibit J to Defendants Request for Judicial Notice. Each of16 IIPlaintiffs' successive TROs were based on the same three claims, and Plaintiffs' instant17 federal complaint is again based on the same three claims. The state court made clear18

thatPlaintiffFAILED to make an evidentiary showing that they will likely prevail on19these claims.

21 First, the State Court found that Plaintiff HAD NOT and CANNOT prove that any22 misappropriation occurred. The facts considered by the court tend to show that Plaintiffs23 were NOT the first in time to market or create the "Ballin Paris" design. The court mad24

!!clear that "ifPlaintiff is seeking to enjoin the use without his consent of a design he26 IIcreated, he would be making a copyright claim...As a result, an attempt to bring a27




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1 Iistatutory business practices action would fail, as federal copyright law preempts state2 IIlaw." [d. at pages 4-5.3

II3 Moreover, the court went on to state that because the facts tend to show that4

IIDefendants were first in time to market the "Ballin Paris" design, no "palming off' or6 lIunfair competition claim can survive. [d. at page 5. This is because, the state law unfair7 competition claim necessarily requires "that the defendant be trying to exploit a8 competitor's reputation", which is impossible for Defendants to have done because their9 Ballin Paris design was first to the market and bearing Defendant AC's name. Regarding

11 I/Plaintiffs' state unfair competition claims, the court stated that "Plaintiff fails to12 Iidemonstrate the likelihood that he will prevail on the only viable claim that can be13 IIbrought in state court on this basis." [d. at page 5. Plaintiffs have again included a14 California unfair competition act claim, despite the court's previous finding that no such

claim was viable. Thus, Plaintiffs did not meet evidentiary requirements for obtaining a1617 TRO or preliminary injunction on the basis that Defendants had allegedly stolen181lPlaintiffs' "Ballin Paris" design.19 Second, regarding Plaintiffs' claims that Defendants had misappropriated

Plaintiffs' vendor lists the court found that such did not warrant a TRO or preliminary21

II22 lI injunction because California's Uniform Trade Secret Act requires that a trade secret be23 Iisubject to reasonable protective measures to ensure its secrecy and Plaintiff plead no24 "such facts. Civil Code 3426.1(d)(2)."4

II 3 It is important to note that Plaintiffs have NOT included a copyright infringement claim in this case.26 "4Plaintiffs now seem to claim that the misappropriated trade secrets are NOT the vendor/ customer lists they previouslyclaimed in the state court. Now, Plaintiffs claim that the misappropriated trade secrets are the "Ballin Paris" design itself and27 I the specific details of its garments, such as fabrics, size, color, etc., which are publicly available!




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1 II The court went on to point out that "it appears that the 'confidential information'2 "involved solicitation of clothing boutiques, such as Kitson and Revolve Clothing. These

II3 entities are not difficult to find and their need to purchase clothing to sell in their retail4 II1J0utlets is not a secret which requires time and money to discovery. Moreover, it appears6 Iithat the parties both realize publicity from having their clothes on sale in these stores,7 suggesting that the information is not particularly confidential." Id. at pages 6-7. In8 addition, these clothing boutiques routinely list on their websites the names of ALL9 designers they carry, which would give ANY lay person knowledge that Plaintiffs do in

11 Ilfact sell clothing to the certain boutique.12 II Third, any claims that Defendants are engaging in a "smear campaign" against13 IIPlaintiffs cannot stand because, and most importantly, "the sole specific support for this14 claim is not actionable if Plaintiff has not demonstrated by the preponderance of the

evidence that he created the "Ballin" concept." Id. at page 7.1617 Clearly, these claims are rooted in state law. The fact that Plaintiffs have now18 II asserted the same claims in federal court should not now render a different result. 519 VI. PLAINTIFFS STILL HAVE NOT MET THEIR BURDEN FOR A TRO

Plaintiffs seeking a ex parte TRO and/or preliminary injunction must establish:21 (A) that ex parte relief is warranted; (B) a likelihood of success on the merits; (C) a22

likelihood of irreparable harm to Plaintiffs in the absence of preliminary relief; (D) the2324 balance of equities tips in Plaintiffs' favor; and (E) an injunction is in the public interest.

115 Federal courts ruling on state law claims must apply the same statutes and case law as the state court would (or did in thiscase), which ultimately ensures that "the outcome of the litigation in the federal court should be substantially the same, so26 II far as legal rules determine the outcome ofa litigation, as it would be if tried in a State court." See Guaranty Trust Co. of

New York v. York (1945) 326 U.S. 99, 109; "The Erie rule is rooted in part in a realization that it would be unfair for theII character or result ofa litigation materially to to differ because the suit had been brought in a federal court." Hanna v.

27 Plumer (1965) 380 U.S. 460,467.OPPOSITION TO PLAINTIFFS' Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 11 OF 2

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1 II Winter v. Natural Resources Defense Council, Inc. 555 U.S. 7, 129 S. Ct. 366 (2008).2 A ) PLAINTIFFS HAVE NO URGENT MATTER THAT JUSTIFIES Ex PARTE RELIEFAND_

PLAINTIFFS' APPLICATION FOR TRO IS BARRED BY LACHES DUE TO DELAY34 Plaintiffs filed this lawsuit on September 17, 2013 and waited an entire month

"until October 17, 2013,just three (3) days before Defendants' answers are due, to file6 an ex parte application for a TRO. See Central District of California Civility and78 "Professionalism Guidelines (B)(2) & (3). This is the same application for TRO that9 "Plaintiffs filed three times before in state court and refused to file via noticed motion on

lithe date they reserved with the state court, October 3, 2013.11 The defense of laches is available to Defendants where the Defendant can show12 both delay and prejudice resulting from the delay. Tom Doherty Assoc., Inc v. Saban1314 Entertainment, Inc. (2nd Cir. 1995) 60 F, 3d 27, 39. Moreover, since laches is a defense

lito trademark infringement, it should also be considered by the courts in evaluating the16 II likelihood of success ofa trademark infringement claim. See Hubbard Feeds, Inc. v.17 IAnimal Feed Supplement, Inc. (8th Cir. 1999) 182 F, 3d 598,601-02. Most importantly,18

any delay in seeking injunctive rel ief may defeat a Plaintiff's claim of irreparable19injury. Miller v. California Pac. Med. Ctr. (9th Cir. 1993) 991 F,2d 536, 544; Polymer

21 IITechnologies, Inc. v. Bridwell (Fed Cir. 1996) 103 F. 3d 970, 976.22

Plaintiffs have asserted the exact same claims in the state court and have been23 aggressively litigating that case for the past 7 months. Plaintiffs applied three times for24!Ian ex parte TRO in state court and they were denied. Both sides have already spent tens

26 Ilof thousands of dollars arguing the same issues now before this Court, which are also


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1 Ilconcurrently before the state court.2 During last 7 months, Plaintiffs NEVER claimed to have any trademark rights in3 their product design or trade dress, as they do now. The entire time, Plaintiffs have4

IIclaimed that the "Ballin Paris" design belonged to Plaintiffs under a work for hire6 lIagreement. Realizing that their argument fails because Defendant AC clearly had begun7 manufacturing garments bearing the design no later than January 17, 2013 well before8 CCL began working for Plaintiffs on January 21, 2013, Plaintiffs began to assert claims9

of unfair competition. After seven months of not being able to obtain a TRO and11 IIreceiving denials from the state court after each successive application for TRO (3 in12 Iitotal), Plaintiffs are now attempting to get a second bite of the apple in federal court.13 B) PLAINTIFFS S T I L L C A N N O T ESTABLISH A LIKELIHOOD OF SUCCESS ON THE MERITS14 The Honorable Joanne O'Donell went to great lengths in issuing a 9 page order

denying Plaintiffs' previous application for preliminary injunction explaining why1617 Plaintiffs have not and cannot establish a likelihood of success on the merits. Even after18 filing the instant federal complaint with their new and contradictory "facts", it is readily19 apparent that Plaintiffs still cannot establish a likelihood of success on the merits.

As mentioned, supra, the Court should NOT consider Plaintiff's contradictory21II22 Jacts, or at a minimum, attribute little creditability to them as false and a sham.

23 Ill) There is NO Violation of Section 43(a) of the Lanham Act Unfair Competition24 a) The Facts Show that Plaintiffs Began Selling Their "Ballin Par is" Design

AFTER Defendants and Any Claim by Plaintiff for Unfair CompetitionMust Necessarily Fail.26 The state court made clear that any unfair competition or "palming off' claims by27

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1 "Plaintiffs were NOT sustainable because the facts tend to show that Defendants were2 "first in time to sell the product in the marketplace. Any unfair competition claim3 necessarily requires "that the defendant be trying to exploit a competitor's reputation",4

IIwhich is impossible for Defendants to have done because their Ballin Paris design was6 II first to the market. Plaintiffs readily admit that Defendants' "Ballin Paris" design was7 first to market. Any confusion in the public market was brought on by Plaintiffs copying8 Defendants. See Plaintiff's Ex Parte Application for Temporary Restraining Order9 (hereinafter "Plaintiffs' TRO") at page 8 lines 11-14).

bl Plaintiffs have NO Viable Lanham Act Claim1112 The Lanham Act is not a blanket protection mechanism for product designs and in13 fact states that only certain aspects of a product are able to be protected by trademark for14 the purpose of identifying and distinguishing the source of the goods.6 See Walmart

Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000).1617 Nevertheless, Plaintiffs' argument as to Defendants' alleged violation of the18 Lanham Act is misplaced, and Plaintiffs rely on inapposite case law. The relief Plaintiffs19 seek would be more appropriate in a copyright infringement case, which they cannot and

have not done - despite previous direction by the State Court.?21

Instead, Plaintiffs go to great lengths to claim that EVERYTHING, including the2223 II"Ballin Paris" text creates a protectable trademark by stating that the "combination of24 "cut, color, style, fabric, stitching, label sizes, text, logo placement, font and packaging of

116 [t]he Lanham Act provides for the registration of trademarks, which it defines in 45 to include "any word, name,symbol, or device, or any combination thereof [used or intended to be used] to identify AND distinguish [a producer's]goods... from those manufactured or sold by othersAND to indicate the source of the goods..." 15 U.S.C. 1127.26 FThe Supreme Court has stated that "the producer can ordinarily obtain protection for a design that is inherently sourceidentifying (if any such exists), but that does not yet have secondary meaning, by securing a design patent or a copyright27 for the design." Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 214 (2000)OPPOSITION TO PLAINTIFFS' Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 14 OF 228



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1 IIPlaintiffs' products have come to uniquely identify the products as being those of2 IIBRIAN LICHTENBERG in the minds of the consuming public." (See Plaintiffs' TRO at

II3 14: 5-7). Interestingly, the complaint does not go this far, but Plaintiffs argument4

FAILS for many reasons.6 First, Plaintiffs are essentially claiming that the DESIGN of their product warrants7 trademark protection, which the courts have referred to as a "trade dress," and "courts8 have assumed, often without discussion, that dress constitutes a "symbol" or "device."9 Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 209 (2000). Many courts11 I have held that "[t]rade dress refers generally to the total image, design, and appearance12 IIofa product and 'may include features such as size, shape, color, color combinations,13 texture or graphics. " Clicks Billiards, Inc. v. Sixshooters, Inc., 251 F. 3d 1252, 1257 (9 th14 Cir. 2001), citing Int'l Jensen, Inc. v. Metrosound U.S.A., Inc., 4F3d 819, 822 (9 th Cir.

1993). As a result, although16 "[n]othing in 43(a) explicitly requires a producer to show that17 its trade dress is distinctive, ...courts have universally imposed

18 that requirement, since without distinctiveness the trade dresswould not "cause confusion ... as to the origin, sponsorship, or19 approval of [the] goods," ... Distinctiveness is, moreover, anexplicit prerequisite for registration of trade dress under 2 ofthe Lanham Act and "the general principles qualifying a mark21 for registration under 2 of the Lanham Act are for the mostpart applicable in determining whether an unregistered mark is22 entitled to protection under 43(a).23 Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210, 120 S. Ct. 1339, citing24

Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768, 112 S. Ct. 2753 (1992).26 (Emphasis Added).27

OPPOSITION TO PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 15 OF 2728



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1

2

i) Plaintiffs' Thade Dress Does NOT Identify the Source of the PlaintiffsProduct

3 II The first and foremost requirement that Plaintiffs fail to meet is the requirement4 that their products identify or distinguish the source. In Knitwaves v. Lolly-togs Ltd.

(Inc.), 71 F. 3d 996 (2nd Cir. 1995), the court made clear that the "primary purpose ofII6 Knitwaves' sweater designs is aesthetic rather than source-identifying." In Knitwaves,7

8 ~ t h e Plaintiff created a clothing line for girls containing sweaters and matching skirts and9 IIpaints with a "fall motif' such as "leaves, acorns, squirrels" and the sweaters "employed

what Knitwaves designers describe as innovative color schemes, using "fall" colors such11 as mustards and browns, rather than the usually brighter children's tones." Ibid. at 100012 01. Courts have held that whether a 'design was likely to be understood as an indicator1314 of the product's source" requires the courts to consider several factors which

include the manufacturer's subjective intentions, whether thedesign was a common basic shape or design, whether it was16 unique or unusual in particular field, whether it was a mererefinement of a commonly adopted and well-known form of17 ornamentation for a particular class of goods, and the similarity

18 of the product to others on the market.19 "Samara Bros., Inc. v. Judy-Philippine, Inc. 969 F. Supp. 895, 898 (S.D.N.Y. 1997).

In this case, Plaintiffs claim that Defendants have copied the"combination of21II

22 II cut, color, style, fabric, stitching, label sizes, text, logo placement, font and packaging o23 IIPlaintiffs' products" is essentially Plaintiff claiming that Defendants copied their24 designs, which are purely aesthetic and have NO bearing as to the SOURCE of the

products. This is because Plaintiffs do not allege that any particular word or name is26 being used to identify or distinguish their goods, nor are Plaintiffs claiming that any27 "




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1 liparticular word, name, or symbol is being used to indicate the source of their goods.82 "Rather, Plaintiffs assert that the design of having a plain cotton t-shirt with a catchy

II3 phrase on the front of the shirt in bold contrasting color is what they seek to have4

Ilprotected by trademark law.Courts have also held that

7 [a]s a practical matter, .. .it is less common for consumers torecognize the design of a product or product feature [as8 opposed to packaging features] as an indication of source.

9 Product designs are more likely to be seen as merelyutilitarian or ornamental aspects of the goods. In addition, thecompetitive interest in copying product designs is more11 substantial than in the case of packaging, containers, labels, andrelated subject matter. Product designs are therefore not12 ordinarily considered inherently distinctive and are thusnormally protected only upon proofof secondary meaning.1314 IIKnitwaves v. Lolly-togs Ltd. (Inc.), 71 F. 3d 996, 1008 (2nd Cir. 1995). Thus, the cut,

lIcolor, style, fabric, stitching, label sizes, text, logo placement, and font of the Plaintiffs'16 "goods are deemed the design of the Plaintiffs' products and those clearly do NOT

II17 identify the source of the product.18

The only part of Plaintiffs' claims which indicates the source of the product is the19/lpackaging, which consists of the garment label and tag. Plaintiffs provides no

21 supporting evidence that Defendants copied their label or tag and the evidence that is

22 provided by Plaintiff's actually shows that Defendant's garment label and tag is23 materially different from Plaintiffs'. See Exhibit 47 of Brian Lichtenberg Declaration in24II Support of Plaintiff's Ex Parte TRO.

26[[8 Plaintiffs spend a significant amount of time in their moving papers claiming that various words,not names, are used bythem in the design of their goods, which Plaintiffs claim are mainly parodies rooted in the names of famous designers or27 ~ u l a r / t r e n d y vernacular. See Plaintiffs' TRO at 2:17-23, 3:1-6.




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1 in Plaintiffs' Trade Dress is NOT Distinctive and Does NOT Distinguish2 Plaintiffs' Goods From Those Manufactured or Sold By Others Sellin&:"Parody" or "Spoof' Shirts.3 Because Plaintiffs' trade dress does NOT identify the source, the court need not4

"consider whether or not the trade dress distinctive. This is because6 the elements making up the alleged trade dress must have beenused in such a manner as to denote product source. Thus, a7 product feature whose ONLY impact is decorative and

aesthetic, with no source-identifying role, cannot be given8 exclusive rights under trade dress law.9 Stephen w: Boney, Inc. v. Boney Servs., Inc., 127 F,3d 821, 828 (9 th Cir. 1997).

11 IINevertheless, the facts are clear that Plaintiffs' trade dress is not distinctive in any way.12 II To determine whether or not goods are distinctive, the courts have held that goods13\\may be deemed distinctive in one of two ways:14 First, a mark is inherently distinctive if '[its] intrinsic natureserves to identify a particular source'....Second, a mark has

acquired distinctiveness, even if it is not inherently16 distinctive, if it has developed secondary meaning, whichoccurs when, 'in the minds of the public, the primary17 significance of a [mark] is to identify the source of the product

18 rather than the product itself.19 "Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 210-11 (2000).

Here, the first test has been deemed to not apply in product design cases. Herman21 II22 Miller v. Palazetti Imports and Exports, 270 F, 3d 298, 309 (6 th Cir. 2001).923 Additionally, there is nothing inherently distinctive about the Plaintiffs' goods.24 /I - - - = ~ = ~ ~ 9The Supreme Court noted several reasons why the inherently distinctive test should not be applied in trade dress cases

Ilbased on product design. The Court noted the fact that product design "almost invariably serves purposes other than sourceidentification," such as making products more useful or appealing ... the Court also stated that application of the inherently26 II distinctive test in product design cases could deprive consumers of 'the benefits of competition with regard to the utilitarianand esthetic purposes that product design ordinarily serves ... "Herman Miller v. Palazetti Imports and Exports, 270 F. 3d

11298, 309 (6th Cir. 200 I). Moreover, "to the extent that difficult cases exist, ...courts should err on the side of caution and27 classify ambiguous trade dress as product design, thereby requiring secondary meaning." Ibid at 310.




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1 IIWhat Plaintiffs introduce into the market are t-shirts, tanks, sweatshirts and beanies that2 "Plaintiffs purchase in bulk from a third party manufacturer. Plaintiffs then have them3 printed or embroidered with a design including popular vernacular or parodies of famous411phrases or names. Plaintiffs do not create the fabric, nor do they dictate the cut of the6 fabric or the stitching. Plaintiffs merely select from the offering of their third-party7 manufacturer with Plaintiffs being one of many customers that the third-party8 manufacturer provides a completed garment ready for customization.9 Furthermore, Plaintiffs' trade dress/design is NOT unique to the market. For

11 example, Kitson, a boutique which sells pieces from Brian LichtenbergAND various12 other designers, also carries similar t-shirts and tanks with catchy phrases or parodies of13 famous phrases and names such as: (1) "Aint Laurent Without Yves" designed by What14 About Yves (black shirt printed with gold foil,which parodies fashion designer Yves

Saint Laurent), (2) YSL by Paislee (black tee with gold logo, which also parodies Yves1617 Saint Luarent), (3) Celfie (black shirt with white writing or white shirt with black18 writing, which parodies fashion designer Celine). See Exhibit A to Declaration of19 William Bailey in Support of Defendants Opposition to Plaintiffs TRO.

The reality is that a catchy phrase or parody of a famous name or designer is a2122 trendy thing to do and everyone is doing it. The fact that Plaintiffs' design consists of a23 cotton t-shirt, tank top, sweatshirt, etc. that contains a bold phrase or parody on the24 middle of the shirt is not distinctive nor does it indicate that the goods were created by

P l 'amtIffs.26 Moreover, the Plaintiffs' designs have NOT developed a secondary meaning.




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1 Plaintiffs ONLY argument under secondary meaning is based on a misapplication of the2 Clicks BilliardslO case and they misstate the rule for secondary meaning by claiming that

II3 "evidence of deliberate copying alone suffices to show secondary meaning." Rather, the4

II court in Clicks Billiards actually stated that "in appropriate circumstances, deliberate6 copying may suffice to support an inference of secondary meaning." Clicks Billiards at7 1264. However, the courts have also held that18 the crucial question in a case involving secondary meaning9 always is whether the public is moved in any degree to buy anarticle because of its source... Factors that are relevant indetermining secondary meaning include (1) advertising

11 expenditures, (2) consumer studies linking the mark to a source,(3) unsolicited media coverage of the product, (4) sales success,12 (5) attempts to plagiarize the mark, and (6) length andexclusivity of the mark's use.1314 II Christian Laboutin v. Yves Saint Laurent America, 696 F. 3d 206 (2nd Cir. 2012). Even in

cases where secondary meaning MAY be found, the courts have narrowly tailored any16 secondary meaning. Ibid.17 In Christian Laboutin, the court found that "the secondary meaning of the mark18

held by Laboutin extends only to the use of lacquered red outsole [of Laboutin's shoes]19that contrasts with the adjoining portion of the shoe." Ibid. To justify its narrowly

21 tailored finding, the court found "that Laboutin originated this particular commercial use22 of the lacquered red color over twenty years ago....Laboutin invested substantial amounts23

of capital building a reputation and good will, as well as promoting and protecting24

1110 The Plaintiffs' reliance on Clicks Billiards, Inc. is not applicable in this case because the court in Clicks Billiards, Inc.only found that a trade dress FOR A BILLIARDS HALL can be inherently distinctive. The trade dress at issue here is a26 II product-design trade dress. See Walmart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 214-215 ("the decor ofa

restaurant [or even a billiards hall], seems to us not to constitute product design. It [decor of a restaurant] was either productIIpackaging- which, as we have discussed, normally is taken by the consumer to indicate origin-or else some tertium quid that

27 is akin to product packaging and has no bearing on the present case.")OPPOSITION TO PLAINTIFFS' Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 20 OF 27

28



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1 Laboutin's claim to exclusive ownership of the mark as its signature in women's high2 fashion footwear." Ibid.3 In this case, Plaintiffs claim to have been creating various t-shirts, tank tops,4

sweatshirts, and beanies for approximately 5 years in various colors with various catchy6 phrases or various parodies of famous designers. Plaintiffs' claim that ANY of their7 products have obtained a secondary meaning is without merit: (1) Plaintiffs do not have8 exorbitant advertising expenditures. Plaintiffs themselves admit that they have conducted9 email campaigns with the apparently free help of Defendant CL.; (2) There are NO11 consumer studies to show that ANY of Plaintiffs' parody t-shirts link them to Plaintiffs,12 (this is especially enlightening considering that Plaintiff's own vendors, such as Kitson,13 also carry similarly designed parody garments by competing designers) See Exhibit A to14 Declaration ofWilliam Bailey in Support of Defendants Opposition to Plaintiffs TRO;

(3) compared to Christian Laboutin, Plaintiff's unsolicited media coverage of the1617 occasional celebrity wearing his t-shirts simply pales in comparison; (4) Plaintiffs do not18 have international sale success, and namely sell their clothing through their largest19 distributor Kitson, a Southern California boutique with a handful of stores; (5) Plaintiffs

do not have people attempting to plagiarize any particular mark, rather Plaintiff claims21 II22 that it is the act of using a plain shirt and placing a catchy phrase in bold letters that is23 infringing on their rights; (6) Plaintiffs admit that they have only been creating parody t24 shirts for 5 years and that the "Ballin Paris" design was only placed into the stream of

commerce this year (with Defendants ACCL being first in time).26 Most importantly, Plaintiffs are not asking for the court to protect any particular27

OPPOSITION TO PLAINTIFFS Ex PARTE ApPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 21 OF 228



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1 lI"mark" or "trade dress" that is prominent and internationally recognized, like the red2 "sole shoes of Christian Laboutin. Rather, Plaintiffs are asking the court to protect their3 right (and give them a monopoly) in buying pre-manufactured garments and printing4

II catchy phrases on them with bold letters. This is certainly NOT the type of trademark6 that has attained secondary meaning, nor is it the type of narrowly tailored secondary7 II meaning courts have chosen to protect in any prior cases.8 iii) THE PLAINTIFFS' PRODUCTS Do NOT DESERVE TRADEMARK PROTECTION9 BECAUSEANY SIMILAR TRADE DRESS IS "FUNCTIONAL".

Plaintiffs' claim that Defendants copied the"combination of cut, color, style,11 "fabric, stitching, label sizes, text, logo placement, font and packaging of Plaintiffs'12 products" is essentially Plaintiffs claiming that Defendants should be restrained from1314 selling plain single-colored cotton t-shirts with printing on the front and a label affixed t

lithe inside back of the shirt. EVERY aspect which Plaintiffs complain of is functional16 Iland cannot be protected through trademark protection.17 The U.S. Supreme Court has expressly stated that18

[a] product feature is functional and cannot serve as a19 trademark if the product feature is essential to the use orpurpose of the article or if it affects the cost or quality of thearticle, that is, if exclusive of the feature would put competitors

21 at a significant non-reputation-related disadvantage.22 "Qualitex Co v. Jacobson Prods. Co., Inc., 514 U.S. 159, 165, 115 S. Ct. 1300 (1995). In23 particular,24

the functionality doctrine, the Supreme Court recentlyexplained, 'prevents trademark law, which seeks to promote

26 competition by protecting a firm's reputation, from insteadinhibiting legitimate competition by allowing a producer to27OPPOSITION TO PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER PAGE 22 OF 2

28 I



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1 control a useful product feature...Protection of functional2 product features is the province of patent law, not trademarklaw.3 Knitwaves v. Lolly-togs Ltd. (Inc.), 71 F. 3d 996, 1006 (2nd Cir. 1995)4

The cut, color, fabric, and stitching of the Plaintiffs' product is functional. The56 II style of a t-shirt, tank, or sweater is again functional. There are only so many ways a7 garment can be cut and stitched together. The fabric of the product, which is a cotton8 blend, that is pre-manufactured by a third-party and sold to numerous wholesale buyers,9 Plaintiffs being one of the many, is again functional and not subject to protection.10

11 iv) DEFENDANTS' GARMENT LABELS DO NOT CREATE A LIKELIHOOD OFCONSUMER CONFUSION

12As mentioned, supra, the state court was quick to point out that there can be no13

14 II unfair competition claim by Plaintiffs in this case because Defendants were first in time15 lito release the Ballin Paris design. As such, any consumer confusion is a direct result of16 II Plaintiffs, decision to release the design second in time instead of filing a lawsuit.17 Additionally, Plaintiff's claim that a consumer seeing AC's label on a garment,18

IIwhich clearly says "Alex & Chloe", could somehow confuse a consumer into thinking it1920 Ilwas actually Brian Lichtenberg garment is nonsensical. Even if the garment label is21 placed in the same location (inside back collar), made of the same fabric, stitched in the22 same way, and even if the colors choices and font were identical. The fact is that one23 clearly says "Alex & Chloe" and the other clearly says "BLTEE Brian Lichtenberg".242511see Exhibit 47 to Brian Lichtenberg's Declaration in Support of Plaintiff's TRO.26 II No rational person can be confused by garment label bearing different names.27

OPPOSITION TO PLAINTIFFS' Ex PARTE APPLICATION FOR TEMPORARY RESTRAINING ORDER PAoe 23 0 ' 228



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1 112) BECAUSE PLAINTIFFS CANNOT CONCLUSIVELY SHOW OWNERSHIP IN "BALLIN PARIS",PLAINTIFFS CLAIMS IN THEIR OTHER CAUSES OF ACTION MUST ALSO FAIL TO WARRANT2 II INJUNCTIVE RELIEF.

3 Plaintiffs have not provided evidence to conclusively show that they were first to4

/I create the "Ballin Paris" design. Instead, both parties claim to have created the design.6 The only fact that is true, and which the state court was quick to point out and Plaintiffs7 openly admit, is that Defendants did in fact release the design first AND that Plaintiffs,8 without the help of Defendants, chose to manufacture and distribute the same exact9 design AFTER Defendants had begun selling it.11 Moreover, Defendants made clear and the state court acknowledged that AC had12 Iisweatshirts manufactured with the "Ballin Paris" before CL ever began working for13 IIPlaintiffs on January 21, 2013.14

C) PLAINTIFFS CANNOT ESTABLISH A LIKELIHOOD OF IRREPARABLE HARM

In this case, any irreparable harm Plaintiffs may be asserting occurred in the past,1617 Ilpresumably during the past seven months during which the state court lawsuit has been18 1I0ngoing. Incidentally, it is also the same irreparable harm that AC is suffering.19 From this point forward, any irreparable harm that would be inflicted on Plaintiffs

is again also the same irreparable harm currently being inflicted on the Defendants.21

II22 II Granting a TRO would only result in increasing the amount of irreparable damages23 lIimposed on Defendants.24 Plaintiffs still cannot show conclusively that they own the "Ballin Paris"

"trademark and preventing Defendants from using a design that they were first to design26 and first to put out in the stream of commerce would be akin to punishing Defendants for27 "




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1 Plaintiffs' intentional decision to copy Defendants' design, choose to sell a design exactly2 like Defendants, and then Plaintiffs' calculated decision to seek damages for their3 inability to sell a design that they chose to copy and market following AC.4

Additionally, any claim that there is confusion in the marketplace because the6 II Lichtenberg brothers share the last name is absurd. The ONLY reason CL's name is even7 associated with Alex & Chloe, Inc is because of Plaintiffs' lawsuit and continuous8 attempts to bring wildly untrue personal attacks against CL in the moving papers.9 Plaintiffs are adding flames to their own fire. CL is a private individual and has chosen11 to operate under the brand name Alex & Chloe. He continues to operate, advertise, and12 package his products under the name Alex & Chloe. In fact, the crux of Plaintiffs'13 argument is that CL is getting an awful lot of recognition for the Ballin Paris design14 which Brian Lichtenberg was unable to steal. CL did not want any recognition for the

design. All of the advertising and marketing for "Ballin Paris" show Alex & Chloe as1617 the creator. There is no confusion between the two brothers other then that created by18\\Plaintiffs.19 Finally, Plaintiffs' ability to lay claim to any irreparable harm necessarily requires

Plaintiffs to be able to show that they were the owner and creator of the design in the21 II22 IIfirst place. Otherwise, all Plaintiff is really doing is seeking determination of their rights23 IIBEFORE trial.24 D) THE BALANCE OF EQUITIES DICTATES THAT DEFENDANTS' NOT BE ENJOINED

For seven months now, Plaintiffs have NEVER claimed trademark infringement26 in the state court case and they have been denied an injunction or three separate27 "




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1 occasions by the state court. Now, after realizing that the state court is not going to give2 them an injunction, they have chosen to forum-shop, change their facts, and move their3 claims to the federal court despite the fact that the Defendants' Cross-Complaint against411 Plaintiffs alleging the exact opposite of Plaintiffs' Federal Complaint is still ongoing.6 Moreover, Defendants were first to create and first to release to the public the7 "Ballin Paris" design. Plaintiffs were well aware that Defendants had already begun8 selling the product. Yet, Plaintiffs chose to create a design EXACTLY as Defendants and9 begin selling the product as well. Plaintiff's could have chosen to simply file a lawsuit,11 but they didn't. Plaintiffs' actions were intentional and a calculated attack on CL and12 should not be rewarded peremptorily.13 E ) PUBLIC INTEREST I s BEST SERVED By NOT ALLOWING DEFENDANTS TO BE ENJOINED14 In this case, it is very apparent that the only confusion by the public is to the issue

of WHO actually owns the design. The public is not confused when they buy a AC1617 garment thinking it is a BLTEE garment or vise versa. Each garment by both designers18 are clearly labeled respectively. More importantly, all confusion by the public is a direc19 result of Plaintiffs' choice to copy Defendants' design and to place the exact same design

in the stream of commerce AFTER Defendants had already been selling the design. The21 II22 public interest is not served by enjoining Defendants. Rather, the public interest would23 be served by enjoining Plaintiffs as the architects of any purported public confusion.24 V I. EXPEDITED DISCOVERY IS NOT WARRANTED

There is nothing special about this case that warrants expedited discovery. On26 May 14, 2013 Plaintiffs filed an ex parte application in the State Case to expedite27 "




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1 IIdiscovery; it was DENIED. Plaintiffs are now once again seeking to expedite discovery2 II ' h' +m t IS J.orum.3 In short, Plaintiffs claim irreparable harm is occurring so they are entitled to ex411parte hearing for this TRO and they absolutely need expedited discovery because of this6 irreparable harm, yet, Plaintiffs openly admit that they willfully dismissed their state7 II court case which has been bitterly fought since March 2013.8 I f Plaintiffs are incurring irreparable harm and discovery is so urgent, why did9 Plaintiffs not file a regularly noticed motion for a protective order and continue to11 conduct discovery in the State Case? Why have they chosen to RE-START the process12 Iiall over again in a totally different forum, add NEW AND CONTRADICTORY FACTS,13 and add a gratuitous cause of action under the Lanham Act for an alleged unregistered14 trademark which is duplicative of their unfair competition and misappropriation claims

they already had asserted in the state court? The simple answer: Plaintiffs are forum1617 shopping AND hoping that this Court won't read their prior sworn pleadings.18 Defendants respectfully request that Plaintiffs be denied expedited discovery, a19 TRO, and a Preliminary Injunction.

DATED: OCTOBER 21, 2013 BAILEY LAW CORPORATION21/S/ WILLIAM R, BAILEY22

23 WILLIAM R. BAILEY, ArrORNEYS FOR DEFENDANTS24

2627




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1 IIWilliam R. Bailey, State Bar No. [email protected]

2 llKathleen L. T. Tubania, State Bar No. 2458563 [email protected]

BAILEY LAW CORPORATION4 114000 MacArthur Blvd., Suite 600

liNewport Beach, CA 92660Telephone: 714.881.51606 IIFacsimile: 888.737.87027 "Attorneys for Defendants Alex & Chloe, Inc.,8 II Christopher Walter Lichtenberg, Marked Showroom, LLC,Jaqueline Yi, Tu Tran, Kyle Mockett, and Kaytee Enright9

UNITED STATES DISTRICT COURT11 CENTRAL DISTRICT OF CALIFORNIA-WESTERN DIVISION12

Brian Lichtenberg, LLC, a California13 II limited liability company; and Brian14 IILichtenberg, an individual,

Plaintiffs,16 v.17 Alex & Chloe, Inc., a California18 II corporation, Christopher Walter

Lichtenberg, an individual; Marked19 II Showroom, LLC, a California limited

IIliability company; Jacqueline Yi, anindividual; Kyle Mockett, an individual;

21 II Kaytee Enright, an individual,22

Defendants.2324

Case No. 2:13-CV-6837-DDP (PJWx)DECLARATION OF WILLIAM R. BAILEY INSUPPORT OF DEFENDANT'S OPPOSITION TOPLAINTIFFS Ex PARTE APPLICATION FOR ATEMPORARY RESTRAINING ORDER

[FILED CONCURRENTLY WITH DEFENDANTS'OPPOSITION, EVIDENTIARY OBJECTIONSPLAINTIFFS' DECLARATIONS, AND REQUESTFOR JUDICIAL NOTICE]Hon. Dean D. PregersonDate: None SetTime: None SetPlace: Courtroom 3, 2nd FloorDiscovery Cut-Off: None SetPre-Trial Conference: None SetTrial Date: None SetAction Filed: September 17, 2013

26 11----------------

DECLARATION OF WILLIAM R. BAILEY IN SUPPORT OF DEFENDANT'S OPPOSITION TO PLAINTIFFS Ex PARTE PAGE 1 OFApPLICATION FOR A TEMPORARY RESTRAINING ORDER

2728

Case 2:13-cv-06837-DDP-PJW Document 35-1 Filed 10/21/13 Page 1 of 10 Page ID#:1186


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//1, William R. Bailey, hereby declare as follows:1. I am an attorney duly licensed to practice law in the State of California and before

this Court and I am the principal attorney of the Bailey Law Corporation and weshall be the attorneys of record for Defendants Alex & Chloe, Inc., ChristopherLichtenberg, Jacqueline Yi, Marked Showroom LLC, Kyle Mockett, and KayteeEnright.

2. I have personal knowledge of the foregoing facts and could and would testifycompetently thereto if called upon to do so.

3. I make this declaration in support of Defendants Opposition to Plaintiffs Ex ParteApplication for a Temporary Restraining Order.

4. On October 21, 2013, I searched the internet and www.shopkitson.com and foundfew examples of competing designers with similar stylistic designs to thosedesigns currently being sold by Brian Lichtenberg at Kitson and other retailers.See Exhibit A attached hereto.

DATED: OCTOBER 21, 2013 BAILEY LAW CORPORATION/S / WILLIAM R. BAILEYWILLIAM R. BAILEY, ArrORNEYS FOR DEFENDANTS

DECLARATION OF WILLIAM R. BAILEY IN SUPPORT OF DEFENDANT'S OPPOSITION TO PLAINTIFFS Ex PARTE PAGE 2 OFApPLICATION FOR A TEMPORARY RESTRAINING ORDER



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You Seem Lost Cut Of f T by Kill Brand - ShopKitson.com 10/21/13 12:33

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WHAT'S NEW WOMEN MEN KIDS & BABIES BEAUTY & FRAGRANCE BOOKS GIFTS & NOVELTIES KITSON MERCHANDISE SALE

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Kill Brand - You Seem Lost Cut Off T$38.00SKU: 065869

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Basic cutoff T shirt.100% colton.Made In USA.

Roil Over For Close Up

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Passion Elle A Pullover by Sol Angeles - ShopKitson.co m 10/21/13 12:29

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COMPLETE THE LOOKSol Angeles - Passion Elle A Pullover$98.00SKU: 064780

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Add a 1I"le twist to the classic LA.Cute and comlyCrew-neckPrinted48"10 rayon/48% polyester/4% spandexRoll Over For Close Up

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Women's YSL Tee by Paislee - ShopKitson.com 10/21/13 12:26

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Paislee - Women's YSL Tee$58.00SKU: 055465

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Black tee with gold YSL logo on front.Conceived and Produced in Chicago,100% Cotton

Roll Over For Close Up

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Home 1 Sincerely Jules 10/21113 12:28

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Home I Sincerely Jules 10/21/13 12:28

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