fender v. haywire complaint.pdf

7/23/2019 Fender v. Haywire complaint.pdf

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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF GEORGIA

Fender Musical Instruments Corpora-

tion,Plaintiff,

))

)))) Civil Action No. ________________

v. )

Richard Mariner and Haywire CustomGuitars, Inc.,

Defendants.

)))))

COMPLAINT

Plaintiff Fender Musical Instruments Corporation (Fender) states the fol-

lowing for its Complaint against Richard Mariner and Haywire Custom Guitars,

Inc. (collectively, Mariner).

SUBSTANCE OF THE ACTION

1. This is an action at law and in equity for trademark and trade dress in-

fringement, trademark counterfeiting and trademark dilution, unfair competition,

false designation of origin and false or misleading representations of fact, injury to

business reputation, and deceptive trade practices arising under Sections 32 and 43

of the Federal Trademark Act of 1946, 15 U.S.C. 1051 et seq.(2012) (the Lan-

ham Act); the Georgia Dilution Statute, O.C.G.A. 10-1-451(b); the Georgia De-

ceptive Trade Practices Act, O.C.G.A. 10-1-370 et seq.; and Georgia common

law.

2. On information and belief, Richard Mariner is the principal of a South

Carolina corporation named Haywire Custom Guitars, Inc. operating in or near

Conway, South Carolina. Mariner and his business also promote and sell merchan-

dise through websites, including the website operating under the domain name

Case 1:15-cv-03605-WSD Document 1 Filed 10/09/15 Page 1 of 34


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http://www.haywirecustomguitars.com/. Through these and other channels of dis-

tribution, Mariner produces, promotes, sells, and offers for sale electric guitars,

which he has promoted through by using the terms Stratocaster, Telecaster,

Tele, Stratotelia, P-Bass, P J Bass, and Jazz Bass. Mariner has sold and

is selling unlicensed and unauthorized electric guitars that incorporate or are pro-

moted with imitations of word marks, design marks, trade dress, and other source-

identifying indicia associated with or confusingly similar to word marks, trade

dress, and design marks owned by Fender. Mariner is using such source-

identifying indicia in combination with other phrases, designs, terminology, and

information in a way calculated to create the misimpression that these electric gui-

tars are those of Fender, or are licensed or sponsored by or otherwise affiliated

with Fender.

3. Fender brings this action to stop Mariner from continuing to pass off

his unlicensed merchandise as that of Fender and to prevent Mariner from trading

on the enormous goodwill associated with authentic Fender electric guitars. Mari-

ners misconduct is likely to cause confusion and to deceive consumers and the

public (including in a post-sale context), it is likely to dilute and tarnish the distinc-

tive quality of Fenders trademarks, and it will continue to do so absent relief from

this Court.

JURISDICTION AND VENUE

4. This Court has subject-matter jurisdiction under Section 39 of the

Lanham Act, 15 U.S.C. 1121, and under 28 U.S.C. 1331 and 1338. This Court

has jurisdiction over Fenders related state and common-law claims pursuant to 28

U.S.C. 1338 and 1367.

5. This Court has personal jurisdiction over Richard Mariner and Hay-

wire Custom Guitars, Inc., because testimonials on Mariners

http://www.haywirecustomguitars.com/ website establish that he has sold goods



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bearing unlawful copies of Fenders registered trademarks in this District and be-

cause he continues to offer for sale goods bearing unlawful copies of Fenders

trademarks within this State and this District, and/or has otherwise made or estab-

lished contacts with this State and this District sufficient to permit the exercise of

personal jurisdiction.

6. This District is a proper venue pursuant to 28 U.S.C. 1391(b)(2) be-

cause a substantial part of the events or omissions giving rise to Fenders claims

occurred in this District.

THE PARTIES

7.

Plaintiff Fender Musical Instruments Corporation is a Delaware cor-

poration with its principal place of business at 17600 N. Perimeter Drive, Suite

100, Scottsdale, Arizona 85255-5435.

8. On information and belief, Richard Mariner is an individual resident

of the state of South Carolina. On information and belief, Mariner is, and at all

times relevant to this Complaint was, the principal defendant Haywire Custom

Guitars, Inc., a custom-order business with its principal place of business at 2007

Lees Landing Circle, Conway, South Carolina 29526, and is subject to service at

that address. Further, on information and belief, Mariner personally directed, con-

trolled, participated in, engaged in, performed, authorized, approved, ratified, ac-

tively and knowingly caused, and was the moving, active, conscious force behind

the acts of Haywire Custom Guitars, Inc. forming the basis of this Complaint.

FACTS COMMON TO ALL CLAIMS FOR RELIEF

Fender and Its Trademark Rights

9. Fender is the worlds leading manufacturer of guitars, basses, amplifi-

ers, and related equipment. With an illustrious history dating back to 1946, Fender

has touched and transformed music worldwide and in nearly every genre: rock n

roll, country and western, jazz, rhythm and blues, and many others. A wide range



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of musicians, from beginners and hobbyists to the worlds most acclaimed artists

and performers, have used Fender instruments. Fender was founded in Fullerton,

California by legendary inventor Clarence Leo Fender, an electronics innovator,

who realized that he could improve on the amplified hollow-body instruments of

the day by using an innovative solid-body electric guitar design. He further real-

ized that he could streamline the process of building them.

10. In 1951, Leo Fender introduced a prototype solid-body instrument that

would eventually be called the Telecaster guitar. The Tele guitar, as it was and

is often called, was the first solid-body Spanish-style electric guitar to be commer-

cially mass-produced. The Telecaster guitar, widely used and renowned today

among country and western players, in particular, as well as blues, rock, and jazz

musicians, is truly iconic among musical instruments and has become one of the

most popular electric guitars in history.

11. Fender first introduced its Stratocaster guitar in 1954, incorporating

design innovations based on feedback from professional musicians. No one could

have foreseen then how the Strat guitar, as it was and is often called, would go on

to revolutionize popular music. In 1957, Buddy Holly appeared on the Ed Sulli-

van Show playing his maple-neck Strat guitar, and the guitar (like Holly) be-

came a music sensation. Just a few years later, John Lennon and George Harrison

of the Beatles used their Fender Stratocaster guitars while recording some of the

most popular music of the 1960s. The immensely popular guitar received yet an-

other enormous profile (and sales) boost when Jimi Hendrix gained renown as a

loyal Strat guitar player. Indeed, in 1990, the Stratocaster guitar used by Hen-

drix at the Woodstock Music Festival in 1969 sold at auction by Sothebys for

$270,000a record price. Essentially unchanged since its 1954 debut, the Strato-

caster guitar is quite simply the most popular and influential electric guitar ever



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made, and players at all levels and in all genres continue to rely on its sound, play-

ability, and versatility to this day.

12. The legendary Fender Telecaster and Stratocaster guitars are uni-

versally acclaimed as design classics. Together with the revolutionary Fender Pre-

cision Bass guitar, these historic instruments laid the foundation for a new kind

of musical group and a revolution in popular musicwhat we know today as the

modern rock band. As opposed to the big bands of an earlier era, the Telecaster

and Stratocaster guitars made it possible for smaller groups of musicians to get

together and be heard.

13.

Even apartialroster of Fender Telecaster and Stratocaster guitar-

ists includes the names of many of the most famous musicians of the past sixty

years: Eric Clapton, Jeff Beck, Jimi Hendrix, Dick Dale, Buddy Guy, Merle Hag-

gard, Stevie Ray Vaughan, Jimmy Page, John Lennon, George Harrison, Yngwie

Malmsteen, Robert Cray, Bruce Springsteen, Buddy Holly, Mark Knopfler, David

Gilmour, Bonnie Raitt, James Burton, Chrissie Hynde, The Beach Boys, Bob Dyl-

an, Buck Owens, Brad Paisley, Vince Gill, The Edge, Keith Richards, Joe Strum-

mer, Pete Townshend, John Mayer, Marty Stuart, Keith Urban, Muddy Waters,

Johnny Marr, and Kurt Cobain.

14. Fender and its predecessors in interest have long used a variety of

trademarks (either standing alone or in combination with design elements) in con-

nection with Fenders electric guitars to better identify the source and quality of

those guitars. To protect the goodwill associated with those products, Fender owns

and uses in connection with the sale of its products in interstate and foreign com-

merce, inter alia, the trademarks FENDER, STRATOCASTER, STRAT,

TELECASTER, TELE, JAZZ BASS, and P BASS, as well as the distinc-

tive and nonfunctional trade dress of the headstocks on its electric guitar products

(including the headstocks shape and the configuration of the tuning knobs and



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other components and indicia), in which Fender has unregistered common-law

trade dress rights for use in connection with electric guitars, including the Strato-

caster and Telecaster guitars:

Fender Stratocaster Guitar

Headstock

Fender Telecaster Guitar Head-

stock15. The headstock is the key source-identifying feature of the modern

electric guitar. In particular, the shape of the headstock (which, in the types of gui-

tars at issue here, is part of a single piece of wood that also includes the guitar

neck) is nonfunctional and primarily serves to identify the brand and model of the

guitar. Fender also owns trademark rights and federal registrations for the shapes

of its headstock designs. These marks are instantly recognizable to generations of

musicians and music fans as indicators of the source of Fenders products and of

the immense history and goodwill associated with Fender.

16. More specifically, in addition to Fenders extensive common-law

rights, and given the importance of and value to Fender of its trademarks and

goodwill, Fender owns, inter alia, the following trademark registrations issued by

the United States Patent and Trademark Office (USPTO):



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Trademark Reg. No. Reg. Date Goods

Date of

First Use

in Com-

merce

STRATO-CASTER

0839997 12/5/1967 Electric guitars 1954

TELECASTER 0871794 6/24/1969 Guitars 1949

STRAT 1058385 2/8/1977 Electric guitars 4/16/1976

TELE 1058386 2/8/1977 Electric guitars 4/16/1976

JAZZ BASS 0882884 12/23/1969 Bass guitars 1957

P BASS 1062732 4/5/1977 Electric bass guitars 4/16/1976

1148869 3/24/1981 Electric guitars1955

1148870 3/24/1981 Electric guitars1951

2163733 6/9/1998 Electric guitars andelectric bass guitars,and necks for electricguitars and electric

bass guitars

1955

Copies of the trademark registration certificates for each of these registrations are

attached as Exhibit A.

17. Each of the foregoing trademark registrations is incontestable pursu-

ant to Section 15 of the Lanham Act, 15 U.S.C. 1065, and serves as conclusive

evidence of Fenders ownership of the respective marks and of its exclusive rights



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to use the respective marks in commerce on or in connection with the goods identi-

fied in those registrations under Section 33(b) of the Lanham Act, 15 U.S.C.

1115(b). Affidavits have been filed pursuant to Sections 8 and 15 of the Lanham

Act, 15 U.S.C. 1058 and 1065, with regard to each registration.

18. Fenders registered and common-law trademarks and trade dress as

referenced in Paragraphs 14 through 17 are collectively referred to as the FEND-

ER Marks.

19. Since Fenders first use in commerce of each of the FENDER Marks,

the products sold under the FENDER Marks have been continuously sold through-

out the United States and internationally. Fender developed rights in each of the

FENDER Marks long before the activities at issue in this Complaint, and the

FENDER Marks serve as a powerful indicator of the source of goods and services

provided by or otherwise affiliated with Fender.

20. Fender has invested and is currently investing significant time, effort,

and money in advertising, marketing, and promoting the FENDER Marks and the

goods provided under the FENDER Marks in many forms of media, including

print, television, radio, and online. The FENDER Marks are widely recognized for

quality electric guitars and in connection with related goods and services as pro-

vided by Fender and through its authorized licensees.

21. Fender and its authorized licensees have sold many millions of dol-

lars worth of products using the FENDER Marks in the United States and interna-

tionally. As a result of the longstanding, continuous, and exclusive use, promotion

of, and sales under the FENDER Marks by Fender and its licensees, the FENDER

Marks enjoy wide public acceptance and association with Fender, and Fender has

built up and now owns the tremendously valuable goodwill that is symbolized by

the FENDER Marks.



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22. The purchasing public has come to associate the FENDER Marks as

identifying goods created, distributed, authorized, or licensed exclusively by Fend-

er. The FENDER Marks are distinctive and each achieved significant secondary

meaning and fame well before the complained-of conduct of Mariner.

Mariners Unlawful Activities

23. Mariner has been and is promoting and selling electric guitars that are

designed, manufactured, and sold as colorable imitations of Fender electric guitars.

Mariner has designed his guitars in an intentional and specific effort to create vir-

tually identical copies of vintage Fender electric guitars. In connection with his

guitars, Mariner has in the past and is currently making unauthorized use of the

FENDER Marks and unauthorized imitations of those marks on guitars that com-

pete directly with Fenders own guitars. Mariners electric guitar products, and the

promotional materials marketing those products, incorporate features such as head-

stock designs and logos, and/or use some or all of the FENDER Marks and imita-

tions of some or all of the FENDER Marks identified above, without Fenders au-

thorization and in a manner that is likely to confuse the consuming public and/or

that seeks to associate Mariners products falsely with those of Fender.

24. Examples of this unauthorized use have been and are accessible at, in-

ter alia, Mariners own website, at http://www.haywirecustomguitars.com/, the sa-

lient pages of which are reproduced as Exhibit B. That site reflects the following

representative (but not exhaustive) examples of Mariners use of Stratocaster,

Telecaster, Tele, Stratotelia, P-Bass, and Jazz Bass to promote guitars

and guitar headstocks of his own production:



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25. As shown in the above examples, and as is clear from multiple other

photographs on Mariners website, Mariners guitars use not only body shapes and

other components that appear virtually identical to those of Fenders Telecaster

and Stratocaster guitars, but also headstock shapes that are imitations of, but vir-

tually identical to, Fenders common-law headstock trade dress and the following

of Fenders federally registered headstock designs:



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The following screenshots captures Mariners unauthorized use of these

FENDER Marks or colorable imitations of the marks:



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26. Mariners promotion and marketing of guitars featuring wholly unau-

thorized uses of the FENDER Marks and imitations of the FENDER Marks is also

accomplished via testimonials and promotional videos on Mariners website that

misuse Fenders marks. The following are testimonials from Georgia residents fea-

turing such misuses:



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27. Mariner also has misused the FENDER Marks and imitations of the

FENDER Marks on the Facebook page for Haywire Custom Guitars, Inc., which is

reprinted as Exhibit C. That page reflects the following representative (but not ex-

haustive) examples of those misuses:



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28. As reflected in Exhibit D, Mariner also has promoted goods of his

own production on Google+, examples of which can be accessed at

https://plus.google.com/u/0/+HaywirecustomguitarsUSA/posts, through unauthor-

ized uses and misuses of the FENDER Marks. The following are representative

(but not exhaustive) examples of those uses:



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As reflected in the last graphic immediately above, Mariner has used FENDERMarks to promote guitars that admittedly are comprised of substantive components

produced by Fenders competitors, such as the Gibson SG body referenced in the

graphic.

29. The following components of the modern electric guitar, including

those sold by Fender and Mariner, play key roles in the guitars performance:

a. the magnetic pickups, which are the electrical transducers that

convert the vibration of the guitars strings into an electrical

signal for amplification, and which significantly affect the gui-

tars sustain and tone;



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b. the guitars other electrical components, including switches,

volume and tone controls, wiring, and jacks, which affect the

guitars tone, usability, and durability;

c.

the guitar body, the material, shape, size, finish, and internal

routing of which affect the guitars tone, sustain, and playabil-

ity;

d. the bridge, which supports the guitars strings and anchors them

to the body of the guitar, contributing to the guitars tone and

sustain and providing for adjustability of intonation (consistent

tuning along the length of the neck);

e. the neck, fretboard, and frets, the material, quality, shape, and

finish of which affect the guitars playability, tone, sustain, in-

tonation, and adjustability; and

f. the nut and saddles (the primary contact points where the

strings rest at either end of the guitar), which affect the guitars

tone, adjustability, and playability.

Mariners website represents that his guitar bodies are Completely Wired To

Fender Specs, http://www.haywirecustomguitars.com/guitarbodies.html, but

Fender has no control over the components used by Mariner in the production of

his goods.

30. If Mariner is using altered genuine or licensed Fender necks and head-

stocks, such alterations void the warranties associated with genuine or licensed

Fender necks and violate the explicit limitations under which such necks are sold

for use only in connection with genuine Fender products.

31. To the extent that Mariner has affixed genuine or licensed Fender

necks with headstocks comprising Fenders common-law headstock trade dress

and registered headstock marks to guitar bodies of his own manufacture, the result-



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ing composite guitars differ in so many material respects from genuine Fender gui-

tars that the composite guitars cannot fairly be described as Fender products or be

marketed in association with Fenders common-law headstock trade dress or regis-

tered headstock marks without confusion. Specifically, any composite guitars pro-

duced by Mariner may feature the following components that differ entirely from

those used in genuine Fender guitars:

a. magnetic pickups;

b. electrical components and wiring;

c. guitar bodies;

d.

bridges; and

e. nuts and saddles.

Because consumers encountering any composite guitars that may be produced by

Mariner will mistakenly believe that Fender is responsible for the composition of

those guitars, no amount of disclosure will cure the deception, likely confusion,

and harm to the Fender brand arising from Mariners conduct.



and registered headstock marks to guitar bodies of his own production, Mariner has

promoted the resulting composite guitars through independent acts of active or

purposeful deception, false suggestion, and misrepresentations designed or likely

to cause confusion about the origin of those guitars.



and registered headstock marks to guitar bodies of his own production, the lawful-

ness of Mariners promotion of those guitars cannot be evaluated in a vacuum in-

dependent of Mariners past misconduct. On the contrary, Mariners prior use of

counterfeit imitations of Fenders marks on guitars of his own manufacture and in



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his advertising have created a cloud of deception that surrounds and permeates any

use he may now be making of genuine Fender headstocks. Specifically, having

been exposed to Mariners misleading association of his guitars with the FENDER

Marks other than Fenders common-law headstock trade dress and registered head-

stock marks, the public and the trade will inevitably but mistakenly assume that

any use Mariner may now be making of genuine Fender headstocks, even in the

absence of any other continuing infringing use of the FENDER Marks, is ap-

proved, sponsored, or licensed by Fender.

34. On August 20, 2012, Fenders Associate General Counsel sent a

cease-and-desist letter to Mariner via overnight mail and email, together with ex-

amples of evidence of Mariners infringing activity. The Fender letter requested a

response by September 12, 2012. A copy of this letter (with attachments) is at-

tached as Exhibit E.

35. On August 21, 2012, and as reflected in Exhibit F, Fender received a

response from Mariner, in which Mariner committed, inter alia, to [r]emove any

reference to Fender guitars in titles and [r]emove any photos with Fender head-

stocks. Nevertheless, as set forth above and despite numerous follow-up commu-

nications from Fender, Mariner has not fulfilled these commitments.

36. Mariners uses of imitations of the FENDER Marks are not nomina-

tive fair uses of those marks. As the numerous graphics in this Complaint and in

the exhibits to this Complaint demonstrate, Mariner does not use imitations of the

FENDER Marks to refer to Fender or to Fenders goods. Rather, Mariner uses

those imitations to refer to his goods.

37. The goods marketed, sold, and offered for sale by Mariner are not

produced by Fender, nor is Mariner associated or connected with Fender, or li-

censed, authorized, sponsored, endorsed, or approved by Fender in any way.

Moreover, the goods sold by Mariner are similar to and compete with goods sold,



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distributed or licensed by Fender, and are sold through overlapping channels of

trade.

38. On information and belief, at the time Mariner first commenced use of

the FENDER Marks or confusingly similar imitations thereof, Mariner was fully

aware of Fenders extensive and continuous use of the FENDER Marks and of

Fenders preexisting and senior rights in those marks.

39. Mariners use of the FENDER Marks or confusingly similar imita-

tions of the FENDER Marks is likely to deceive, confuse, and mislead purchasers

and prospective purchasers into believing that electric guitars sold by Mariner are

manufactured by, authorized by, or in some manner associated with Fender, which

they are not.

40. The likelihood of confusion, mistake, and deception engendered by

Mariners misappropriation and imitation of the FENDER Marks is causing irrepa-

rable harm to the goodwill symbolized by the FENDER Marks and the reputation

for quality that they embody.

41. Mariners activities are likely to cause confusion before, during, and

after the time of purchase because purchasers, prospective purchasers, and others

viewing Mariners electric guitars at the point of sale or during a subsequent musi-

cal performance are likelydue to Mariners use of confusingly similar imitations

of the FENDER Marksto mistakenly attribute the product to Fender. This is par-

ticularly damaging in light of the potentially inferior quality of Mariners guitars.

By causing such a likelihood of confusion, mistake, and deception, Mariner is in-

flicting irreparable harm to the goodwill symbolized by the FENDER Marks and

the reputation for quality that they embody.

42. Upon information and belief, Mariner continues to use confusingly

similar imitations of the FENDER Marks in connection with the sale of products

that are directly competitive to those offered by Fender but are of inferior quality.



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Mariner began selling these imitations well after Fender established protectable

rights to the FENDER Marks, and well after those respective marks became fa-

mous.

43.

On information and belief, Mariner knowingly, willfully, intentional-

ly, and maliciously adopted and used confusingly similar imitations of the FEND-

ER Marks. Mariners unlicensed and unauthorized products are calculated to trade

on the valuable goodwill and commercial magnetism of Fenders reputation and

identity among guitarists, musicians, the trade, and the consuming public in this

District and elsewhere. Mariner is attempting to pass off his merchandise as that of

Fender.

COUNT ONE

FEDERAL TRADEMARK INFRINGEMENT

44. Fender repeats and incorporates by reference the allegations in para-

graphs 1-43 as if fully set forth here.

45. Mariners conduct is causing immediate and irreparable injury to Fender

and will continue to damage Fender and to deceive the public unless enjoined by this

Court.

46. Mariners use of the FENDER Marks or confusingly similar imita-

tions of the FENDER Marks is likely to cause confusion, deception, and mistake

by creating the false and misleading impression that Mariners goods are manufac-

tured or distributed by Fender, or associated or connected with Fender, or have the

sponsorship, endorsement, or approval of Fender.

47.

Mariner has used and continues to use marks confusingly similar to

Fenders federally registered FENDER Marks in violation of 15 U.S.C. 1114, and

Mariners activities have caused and, unless enjoined by this Court, will continue

to cause, a likelihood of confusion and deception of members of the trade and pub-

lic and, additionally, injury to Fenders goodwill and reputation as symbolized by



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the federally registered FENDER Marks, for which Fender has no adequate remedy

at law.

48. Mariners actions demonstrate an intentional, willful, and malicious

intent to trade on the goodwill associated with Fenders federally registered

FENDER Marks, to Fenders great and irreparable injury.

49. Mariner has caused, and is likely to continue causing, substantial inju-

ry to the public and to Fender, and Fender is entitled to injunctive relief and im-

poundment and destruction of Mariners infringing products, and to recover Fend-

ers actual damages, Mariners profits, enhanced profits and damages, costs, and

reasonable attorneys fees under 15 U.S.C. 1114, 1116, 1117, and 1118.

COUNT TWO

FEDERAL TRADEMARK COUNTERFEITING



51. Mariner has used previously spurious designations that are identical

to, or substantially indistinguishable from, the FENDER Marks on goods covered

by registrations of the FENDER Marks.

52. Mariner has intentionally used these spurious designations, knowing

they are counterfeit, in connection with the advertisement, promotion, sale, offer-

ing for sale, and distribution of his goods.

53. Mariners use of the FENDER Marks to advertise, promote, offer for

sale, distribute, and sell guitars bearing counterfeit marks was and is without the

consent of Fender.

54. Mariners unauthorized use of the FENDER Marks on and in connec-

tion with his advertisement, promotion, sale, offering for sale, and distribution of

guitars on the internet constitute Mariners use of the FENDER Marks in com-

merce.



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55. Mariners unauthorized use of the FENDER Marks as set forth above

is likely to:

a. cause confusion, mistake, and deception;

b.

cause the public to believe that Mariners guitars are the same

as Fenders guitars and/or that Mariner is authorized, sponsored

or approved by Fender or that Mariner is affiliated, connected

or associated with or in some way related to Fender; and

c. result in Mariner unfairly benefiting from Fenders advertising

and promotion and profiting from the reputation of Fender, its

authentic guitars, and its FENDER Marks all to the substantial

and irreparable injury of the public, Fender and the FENDER

Marks and the substantial goodwill represented thereby.

56. Mariners acts constitute willful trademark counterfeiting in violation

of Section 32 of the Lanham Act, 15 U.S.C. 1114, and within the meaning of Sec-

tion 34(d)(1) of that Act, id. 1116(d)(1).

57. Because of Mariners unlawful actions, Fender has suffered and con-

tinues to suffer irreparable harm, including, but not limited to, detriment to and

diminution in value of its marks, for which there is no adequate remedy at law. Ac-

cordingly, Fender is entitled to an injunction against Mariner, pursuant to 15

U.S.C. 1116.

58. By reason of the foregoing, Mariner is liable to Fender for: (a) statuto-

ry damages in the amount of up to $2,000,000 for each mark counterfeited as pro-

vided by 15 U.S.C. 1117(c) of the Lanham Act, or, at Fenders election, an

amount representing three (3) times Fenders damages and/or Mariners illicit prof-

its; and (b) reasonable attorneys fees, investigative fees, and pre-judgment interest

pursuant to 15 U.S.C. 1117(b).



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COUNT THREE

FEDERAL TRADE DRESS INFRINGEMENT AND UNFAIR COMPETI-

TION

59.

Fender repeats and incorporates by reference the allegations in para-


60. Mariners unlicensed and unauthorized goods have caused and are

likely to cause confusion, deception, and mistake by creating the false and mislead-

ing impression that Mariners goods are manufactured or distributed by Fender or

are associated or connected with Fender, or have the sponsorship, endorsement, or

approval of Fender.

61. Mariner has made false representations, false descriptions, and false

designations of origin in violation of 15 U.S.C. 1125(a), including, but not lim-

ited to, Mariners commercial and merchandising use of the FENDER Marks

and/or confusingly similar imitations of the FENDER Marks, including Fenders

nonfunctional headstock trade dress. Mariners activities have caused and, unless

enjoined by this Court, will continue to cause a likelihood of confusion and decep-

tion among members of the trade and the public and, additionally, injury to Fend-

ers goodwill and reputation, for which Fender has no adequate remedy at law.

62. Particularly in light of the inferior quality of his goods, Mariners ac-

tions demonstrate an intentional, willful, and malicious intent to trade on the

goodwill associated with Fender to the great and irreparable injury of Fender.

63. Mariners conduct has caused, and is likely to continue causing, sub-

stantial injury to the public and to Fender, and Fender is entitled to injunctive relief

and impoundment and destruction of Mariners infringing products and to recover

Mariners profits, enhanced profits and damages, costs, and reasonable attorneys

fees under 15 U.S.C. 1125(a), 1116, and 1117.



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COUNT FOUR

FEDERAL TRADEMARK DILUTION



65. Separately and collectively, the FENDER Marks are famous trade-

marks under 15 U.S.C. 1125(c)(2)(A), in that each is widely recognized by the

general consuming public of the United States as a designation of the source of

Fenders electric guitars. The FENDER Marks became famous long prior to Mari-

ners unlawful use of those marks, or confusingly similar imitations of the marks.

66.

Mariners use of the FENDER Marks, or confusingly similar imita-

tions thereof, in connection with Mariners advertising, promotion, and offering for

sale of his inferior-quality goods is likely to dilute Fenders famous FENDER

Marks, in violation of 43(c) of the Lanham Act, 15 U.S.C. 1125(c), by lessen-

ing their capacity to identify and distinguish Fender exclusively as the source of

goods in the United States bearing or provided under the famous FENDER Marks.

Mariners conduct is likely to blur the publics exclusive identification of these

marks with Fender and is likely to tarnish and degrade the positive associations and

prestigious connotations of the FENDER Marks.

67. Mariners unauthorized use of the FENDER Marks in connection with

Mariners advertising, promotion, and offering for sale of his inferior-quality gui-

tars is intended to and has the effect of trading on Fenders reputation and causing

dilution of the famous FENDER Marks.

68.

Mariner cannot assert any rights in the FENDER Marks that are prior

to Fenders first use, actual or constructive, of the FENDER Marks.

69. Mariners likely trademark dilution has injured and will continue to

injure Fender in that Fender has suffered and will continue to suffer damage to its

reputation and customer goodwill as a direct and proximate result of Mariners il-



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legal conduct, unless such unlawful conduct is enjoined by this Court. In addition,

Mariner has been unjustly enriched by reason of his acts of trademark dilution in

that he has achieved sales and profits, and the opportunity to earn future sales and

profits, as a direct and proximate result of his illegal conduct.

70. Fender is entitled to recover all damages sustained by Mariners ac-

tions, all profits realized by Mariner through the unlawful use of marks that dilute

the FENDER Marks, and the costs of this action.

71. Mariners actions have been willful and deliberate, entitling Fender to

recover treble damages and/or profits and an award of reasonable attorneys fees

against Mariner.

COUNT FIVE

STATE TRADEMARK DILUTION

UNDER O.C.G.A. 10-1-451(b)



73. Mariners conduct constitutes likely trademark dilution in violation of

O.C.G.A. 10-1-451(b).

74. The FENDER Marks are strong and distinctive marks that have been

in use for decades and that have achieved widespread public recognition.

75. By virtue of long and continuous use in commerce, including within

the State of Georgia, the FENDER Marks have become and continue to be famous

and distinctive.

76.

Mariners unauthorized use of the FENDER Marks, or confusingly

similar imitations thereof, in connection with Mariners advertising, promotion,

and offering for sale of his inferior-quality electric guitars is diluting the distinctive

quality of the FENDER Marks, is lessening the capacity of the FENDER Marks to

identify and distinguish Fenders services, and is causing a likelihood of harm to



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Fenders business reputation. Mariners conduct is likely to blur the publics exclu-

sive identification of these marks with Fender and is likely to tarnish and degrade

the positive associations and prestigious connotations of the FENDER Marks.

77.

On information and belief, Mariner intends to continue his dilutive

conduct unless restrained by this Court.

78. Mariners conduct is causing, and is likely to continue to cause, injury

to the public and to Fender, and Fender is entitled to injunctive relief.

79. Mariners actions have been willful, intentional and deliberate, with

an intent to trade on Fenders reputation, entitling Fender to recover all damages

sustained by Fender, an accounting of all profits realized by Mariner through the

unlawful use of marks that dilute the FENDER Marks, and the costs of this action.

COUNT SIX

COMMON-LAW TRADEMARK INFRINGEMENT AND UNFAIR COM-

PETITION



81. Mariners conduct as alleged above constitutes trademark infringe-

ment and unfair competition in violation of the common law of the State of Geor-

gia.

82. Particularly in light of the inferior quality of Mariners goods, Mari-

ners trademark infringement and unfair competition as alleged above have injured

Fender in that Fender has suffered damage to its reputation and customer goodwill

as a direct and proximate result of Mariners illegal conduct. In addition, Mariner

has been unjustly enriched by reason of his trademark infringement and unfair

competition in that Mariner has achieved sales and profits, and the opportunity to

earn future sales and profits, as a direct and proximate result of his illegal conduct.



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83. Unless enjoined by this Court, Mariners trademark infringement and

unfair competition will continue to cause irreparable and inherently unquantifiable

injury and harm to Fenders business, reputation, and goodwill.

84.

Mariners wrongful conduct as above alleged was accompanied by

circumstances of willfulness and deliberate indifference to the rights of Fender,

warranting the assessment of punitive damages.

COUNT SEVEN

STATE DECEPTIVE TRADE PRACTICES UNDER O.C.G.A. 10-1-370

ET SEQ.

85.

Fender repeats and incorporates by reference the allegations in para-


86. Mariner has been and is passing off his inferior-quality goods as those

of Fender, causing a likelihood of confusion or of misunderstanding as to the

source, sponsorship, or approval of Mariners goods, causing a likelihood of con-

fusion as to Mariners affiliation, connection, or association with another, and oth-

erwise damaging the public. Mariners conduct constitutes unfair and deceptive

acts or practices in the course of a business, trade or commerce in violation of the

fair business practices under the Georgia Deceptive Trade Practices Act, O.C.G.A.

10-1-370 et seq., in that the deceptive acts and practices have been undertaken

in connection with the sale and advertising of merchandise, namely, electric gui-

tars.

87. Mariners wrongful conduct and unauthorized use of the FENDER

Mark and confusingly similar imitations of the FENDER Marks has been accom-

panied by circumstances of willfulness and wanton and reckless conduct, showing

spite and ill-will, as well as deliberate indifference to the rights of Fender, warrant-

ing the assessment of punitive damages and all other damages, costs, and fees

available under the Georgia Deceptive Trade Practices Act.



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PRAYER FOR RELIEF

Fender therefore prays that a judgment be entered:

1. Permanently enjoining Mariner and all affiliated or related entities,

agents, officers, employees, representatives, successors, assigns, attorneys, and all

other persons acting for, with, by, through, or under authority from Mariner, or in

concert or participation with Mariner and each of them, pursuant to the powers

granted to this Court by 15 U.S.C. 1116 and relevant state statutes, from:

a. using the FENDER Marks and/or confusingly similar imitations of the

FENDER Marks, in connection with Mariners business or goods or

services, including but not limited to the advertising of those goods or

services; and

b. using any trademark, trade dress, service mark, name, logo, or source

designation of any kind that is a copy, reproduction, colorable imita-

tion, or simulation of or confusingly similar to, or in any way similar

to, the trademarks, service marks, or logos, of Fender, or is likely to

cause confusion, mistake, deception, or public misunderstanding that

Mariners business or services are the business or services of Fender,

or are sponsored by or in any way related to Fender.

2. Awarding Fender compensatory and punitive damages; an accounting

of all profits received by Mariners unauthorized use of Fenders FENDER Marks,

or confusingly similar imitations thereof; the costs of this action; reasonable attor-

neys fees under 15 U.S.C. 1117; and a trebling of damages and profits as author-

ized by law.

3. Requiring Mariner to account to the Fender for all profits resulting

from Mariners sale of counterfeit merchandise bearing the FENDER Marks and

that the award to Fender be trebled as provided for under 15 U.S.C. 1117; alter-



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natively, that Fender be awarded statutory damages under 15 U.S.C. 1117(c) of

up to $2,000,000 for each mark Mariner has willfully counterfeited.

4. Ordering Mariner to deliver up for impoundment and for destruction

all electric guitars or other merchandise, parts, templates, boxes, labels, tags, pack-

ages, receptacles, advertising, promotional material, or other materials in the pos-

session, custody, or under the control of Mariner that are found to infringe any of

Fenders FENDER Marks or that otherwise unfairly compete with Fender and its

products and services;

5. Requiring Mariner to pay prejudgment and post judgment interest on

any monetary award; and

6. Granting Fender such other and further relief as the Court may deem

just and proper.

JURY TRIAL DEMAND

Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Fender re-

spectfully demands a trial by jury on all claims and issues so triable.

Respectfully submitted,

s/Theodore H. Davis Jr.Kilpatrick Townsend & Stockton LLP1100 Peachtree StreetSuite 2800Atlanta, Georgia 30309-4528404-815-6500

Theodore H. Davis Jr.Ga. Bar No. 212913Jared S. WelshGa. Bar No. 940433

Attorneys for Plaintiff Fender Musical

Instruments Corporation


fender v. haywire complaint.pdf

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