ORIGINAL Glendon W. Miskel esq. (State Bar #069794) JOHNSON & MISKEL 2330 Marinship Way Suite 230 Sausalito CA Tel.: 415 332-0222 Fax: 415 332-1192 Attorney for Plaintiff JEFFERSON AIRPLANE, INC. FILED JUN 22, 2000 UNITED STATES DISTRICT NORTHERN DISTRICT OF CALIFORNIA JEFFERSON AIRPLANE, INC., CASE NO C 002235 Plaintiff, COMPLAINT FOR FEDERAL V. TRADEMARK INFRINGEMENT, FEDERAL TRADEMARK DILUTION, PAUL KANTNER individually and d/b/a FEDERAL UNFAIR COMPETITION JEFFERSON AlkKANE "VOLUNTEERS" AND FALSE DESIGNATION OF MICHAEL GAIMAN, individually and d/b/a' ORIGIN, COMMON LAW TRADE MISSION CONTROL, NAME INFRINGEMENT, UNFAIR COMPETITION, TRADEMARK Defendants. DILUTION AND RIGHT OF PUBLICITY UNDER CALIFORNIA LAW, DAMAGES AND INJUNCTIVE RELIEF Plaintiff, JEFFERSON AIRPLANE, INC. ("Plaintiff or "JEFFERSON AIRPLANE"), as and for it's complaint, hereby alleges as follows: Jurisdiction and Venue 11. This is an action for trademark infringement, unfair competition, false designation of origin and dilution arising under the Trademark Act of 1946,15 USC  105 1, el seq., as amended (the "Lanham Act"); and for unfair competition and trademark dilution and right of publicity under the laws of the State of California. 2. This Court has original jurisdiction over this action under 28 USC  133 1, 1338(a), 1338(b), and the principles of pendant.jurisdiction. The matter in controversy exceeds, exclusive of interest and costs, the sum of Seventy Five Thousand ($75,000.00) Dollars. Page I 3. This Court has personal jurisdiction over Defendants in that each of the Defendants transacts and/or regularly does business in this District. 4. Venue is proper in this Court pursuant to 28 USC   1391 (b) and (c) and 1400(a) in that this is the District in which a substantial part of the events giving rise to the claims hereinafter set forth occurred. The Parties 5. Plaintiff, JEFFERSON AIRPLANE, INC., is a corporation organized and existing under the laws of the State of Delaware having its principal place of business at 2051 Third Street, San Francisco, California. 6. Upon information and belief, Defendant, MISSION CONTROL, is a proprietorship transacting business throughout this District and throughout the United States with an office and/or principal place of business 15030 Ventura Boulevard, Suite 541, Sherman Oaks, California 91403. 7. Upon infbrmation and belief, Defendant, MICHAEL GAIMAN, is an individual transacting business in this District and throughout the United States with an office and/or principal place of business at 15030 Ventura Boulevard, Suite 541, Sherman Oaks, California 91403. Is. Upon information and belief, Defendant, PAUL KANTNER, is an individual transacting business in this District and throughout the United States with an office and/or principal place of business at 5421 Anza Street, San Francisco, California. 9. Upon information and belief, Defendant, JEFFERSON AIRPLANE "VOLUNTEERS", is a proprietorship, transacting business throughout this District and throughout the United States with an office and/or principal place of business at 5421 Anza Street, San Francisco, California. Background Facts 10. Jefferson Airplane is the owner of the entire right, title and interest in and to, inter alia, the following trademarks: a. United States Registration No. 874,472, issued August 5, 1969, for JEFFERSON AIRPLANE, for "entertainment service, including personal appearance performances, recordings, radio and television performances" in the nature of a musical group. b. United States Registration No. 874,472, renewed on August 5, 1989 to August 5, 2009. 11. Copies of the trademark registrations listed in paragraphs IO.a. through IO.b. are annexed hereto, collectively, as Exhibit A. 12. Plaintiff, Jefferson Airplane, Inc. also is the owner of the trade name "Jefferson Airplane" which it has used to identify itself as a popular music group, as well as to identify its products, in the United States for over 35 years. Hereinafter, the trademarks and trade name owned and/or controlled by Plaintiff are referred to collectively as "Plaintiff's Trademarks." 13. Plaintiff s Trademarks and the goodwill of the business associated therewith in the United States and throughout the world are of great and incalculable value to Plaintiff, are highly distinctive and arbitrary, and have become universally associated in the public mind with the products and services of the very highest quality and reputation finding their source in. Plaintiff. 14. Plaintiff has expended considerable sums of monies in creating and promoting its music, musical performances and associated merchandise and has succeeded in making Plaintiffs Trademarks and the "Jefferson Airplane" trade name synonymous with musical compositions, recordings, live performances and products of the highest quality in the minds of consumers. The consuming public has come to recognize Plaintiff's Trademarks and the "Jefferson Airplane" trade name and indicia of the source of the music and merchandise emanating from or otherwise being affiliated with or sponsored by Plaintiff. I5. Since at least as early as 1965, Plaintiff, through the participation of all of the members of the musical group Jefferson Airplane, has been in business, inter alia, of creating, writing, performing and/or producing musical compositions. As an integral part of Plaintiff's business, in order to promote Jefferson Airplane and satisfy the demands of its fans, Plaintiff Page 3 produces, advertises and sells a variety of merchandise bearing one or more of Plaintiffs Trademdrks and/or the likenesses of Plaintiff's individual members. 16. On, or about, March 21, 1985, defendant Paul Kantner entered into a written agreement with parties which included two of the shareholders of Plaintiff. Said agreement is annexed hereto as Exhibit B. Pursuant to Paragraph 4 of that agreement, Defendant Paul Kantner agreed that in consideration for payment in the sum of $80,000.00, he "shall not have the right to use the words 'Jefferson' or 'Airplane' either alone or in conjunction with any other word(s) without the express written consent of Grace Stick." Such permission has not been given with respect to the performances complained of herein. 17. Upon information and belief, Defendants are now in the business of, inter alia, performing as the band, "Jefferson Airplane Volunteers" and beginning on, or around, April 2, 2000, advertising themselves using unauthorized reproductions of Plaintiff s Trademarks. 18. Upon information and belief, Defendants have knowingly and willfully copied, for the specific purposes of infringing, the trademarks and trade name owned by Plaintiff in order to promote and advertise Defendants' live performances. 19. Defendants have performed the aforementioned acts during the months of April, May and June, 2000, without permission or authority from Plaintiff and without any legitimate license to perform using the Jefferson Airplane name. 20. Defendants Mission Control and Michael Gaiman participate in the promotion and employment of the other Defendants by acting as the booking agents of Jefferson Airplane "Volunteers" and by advertising themselves as such in POLLSTAR, an important music industry publication. A copy of the Mission Control/Michael Gairrian advertisement from POLLSTAR is annexed hereto as Exhibit C. 21. Defendants performances have resulted in public advertising and reviews of performances which falsely identify Defendants as the Jefferson Airplane. Copies of some of the advertisements and reviews are annexed hereto, collectively, as Exhibit D. 22. Upon information and belief, unless enjoined by this Court, Defendants intend to continue their course of conduct and to wrongfully advertise their performances and to perform Page 4 using the Jefferson Airplane name. As a direct an@ proximate result of the acts of Defendants alleged above, Plaintiff has suffered irreparable darnage and sustained lost profits. Plaintiff has no adequate remedy at law to redress the injuries Defendants have caused and will cause by their conduct. Plaintiff will continue to suffer irreparable damage and sustain lost profits unless Defendants' actions are enjoined by this Court. COUNT I FEDERAL TRADEMARK INFRINGEMENT ((15 USC 1116) 23. Plaintiff repeats and realleges the allegations of paragraphs I through 22 of this Complaint as if fully set forth herein. 24. Upon information and belief, without Jefferson Airplane's authorization or consent, and having knowledge of Jefferson Airplane's well-known and prior rights in Plaintiff's Trademarks, Defendants have engaged and continue to engage in the advertising and promotion of live performances using the name Jefferson Airplane. 25. Defendants' use of copies or simulations of Plaintiffs Trademarks is likely to cause and is causing confusion, mistake and deception among Plaintiff's fans and is likely to, deceive Plaintiff s fans and the public into believing that Defendants' performances are those of Plaintiff Jefferson Airplane, all to the damage and detriment of Jefferson Airplane's reputation, goodwill and sales. 26. Defendants' use of one or more of Plaintiffs Trademarks constitutes willful and deliberate infringement of Plaintiff's Trademarks, without Jefferson Airplane's authorization or consent, in violation of Section 32 of the Lanham Act, 15 U.S.C.  1116. 27. Defendants' acts of willful trademark infringement have caused and will continue to cause Plaintiff irreparable harm and injury to its goodwill and reputation unless such conduct is preliminarily and permanently enjoined by this Court. Plaintiff' has no adequate remedy at law. COUNT 11 FEDERAL TRADEMARK DILUTION 15 USC 51143(c) 28. Plaintiff repeats and realleges the allegations of paragraphs I through 27 of this Complaint as if fully set forth herein. 29. Plaintiff's Trademarks are "famous marks" within the meaning of 43(c) of the Lanham Act, 15 U.S.C.  1125(c)(1) and have been famous marks prior to Defendants' conduct as alleged herein. 30. Defendants' unauthorized live performances and the associated false advertising and promotion connected with those performances, has created and continues to create a likelihood of injury to the public image and business reputation of Plaintiff and has caused and will continue to cause the dilution of the distinctive quality of Plaintiff's Trademarks, and was done with the willful intent to trade upon Plaintiff's reputation and/or to cause dilution of Plaintiff s Trademarks. 31. Defendants' unauthorized use of Plaintiff s Trademarks on, or in connection with, the advertising and promotion of live performances was done with notice and full knowledge that such advertising, promotion, and live performance, was not authorized or licensed by Plaintiff. 32. Defendants' aforesaid acts are in knowing and willful violation of Plaintiffs rights under section 43(c) of the Lanham Act, 15 U.S.C.  I 125(c). 33. Plaintiff has no adequate remedy at law and, if Defendants' activities are not enjoined, will continue to suffer irreparable harm and injury to their goodwill and reputation. 34. As a result of Defendants' activities, Plaintiff has been damaged in an amount to be ascertained. COUNT III UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN (15 U.S.C. 1125(a)) 35. Plaintiff repeats and realleges the allegations of paragraphs I through 34 of this Complaint as if fully set forth herein. 36. Defendants have without Plaintiff s permission advertised, promoted and performed as a live performing band using Plaintiff s Trademarks. 37. By deliberating and willfully advertising, promoting and performing as a band using Plaintiff s Trademarks, Defendants have consciously and deliberately sought to capitalize upon the distinctive quality and fame of Plaintiff s Trademarks and have intended to capitalize upon and profit by the consu mer confusion they have created. 38. Defendants' unlawful, unauthorized and unlicensed performances as a musical group creates the express and implied misrepresentations that the musical performances originate from, are associated with or are otherwise authorized or endorsed by Plaintiff, all to the damage and detriment of Plaintiff s reputation, goodwill and sales. 39. Defendants' conduct as alleged is deliberate and willful, is likely to cause confusion, will injure Plaintiff s reputation unless preliminarily and permanently enjoined, and constitutes a false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C.  I 125(a). 40. Defendants' acts have caused and will continue to cause Plaintiff's irreparable harm and injury to their goodwill and reputation unless restrained by this Court. Plaintiff has no adequate, remedy at law. COUNT IV COMMON LAW TRADE NAME INFRINGEMENT 41. Plaintiff repeats and realleges the allegations of paragraphs] through 40 of this Complaint as if fully set forth herein. 42. Plaintiff has built up valuable goodwill in the "Jefferson Airplane" trade name. 43. With full knowledge of the fame of the "Jefferson Airplane" trade name, Defendants trade upon the goodwill associated with the trade name and mislead the public into assuming a connection between the Counterfeit musical performances and Plaintiff. 44. Defendants' unauthorized use of the "Jefferson Airplane" trade name is likely to, and does, permit Defendants to pass off their musical performances and goods to the general Page 7 public for those of Plaintiff, all to the detriment of Plaintiff and the unjust enrichment of defendants. 45. Defendants' acts of trade name infringement cause confusion, mislead and deceive the public as to the identities of the musicians performing as "Jefferson Airplane Volunteers" and permits Defendants to pass off their performances as Plaintiffs and falsely suggests a connection between Defendants and Plaintiff, and will continue to do so, in violation of the common law of the State of California. 46. As a result of Defendants' acts, Plaintiff has been damaged in an amount not yet determined or currently ascertainable, but, upon information and belief, in excess of $75,000.00, 47. Defendants' acts of trade name infringement have caused and will continue to cause Plaintiff irreparable harm unless restrained by this Court. Plaintiff has no adequate remedy at law. COUNT V UNFAIR COMPETITION UNDER CALIFORNIA LAW 48. Plaintiff repeats and realleges the allegations of paragraphs I through 47 of Chis Complaint as if fully set forth herein. 49. Plaintiff has built up valuable goodwill in Plaintiffs Trademarks and the distinctive sound created by the members of the "real" Jefferson Airplane band. 50. Defendants' use of Plaintiff s Trademarks is likely to, and does, permit Defendants to palm off their performances as those of Plaintiff, all to the detriment of Plaintiff and the unjust enrichment of Defendants. 51. Defendants, upon information and belief, with full knowledge of the fame of Plaintiff s Trademarks, intended to and did trade on the goodwill associated with Plaintiff's Trademarks and have misled and will continue to mislead the public into assuming a connection between Plaintiff and Defendants' musical performances and goods. 52. Defendants' unauthorized use of Plaintiff's Trademarks has caused and is likely to continue to cause Plaintiff damage by tarnishing the valuable reputation and image associated with Plaintiff and its musical performances. Page 8 53 The acts of Defendants, which permit and accomplish confusion, mislead and deceive the public as to the identities of the individuals performing as "Jefferson Airplane Volunteers," permit and accomplish palming off of Defendants' musical performances and goods as those of Plaintiff, and falsely suggest a connection with Plaintiff, constitute acts of unfair competition with Plaintiff in violation of California law. These acts have caused and will continue to cause Plaintiff irreparable harm unless enjoined by this Court. Plaintiff has no adequate remedy at law. COUNT VI CALIFORNIA TRADEMARK DILUTION 54. Plaintiff repeats, reiterates and realleges paragraphs I through 53 of this complaint as if fully set forth herein. 55. Defendants' acts have caused damage to Plaintiff by tarnishing Plaintiff's valuable reputation and diluting the distinctiveness of Plaintiff s famous Trademarks in violation of California law and will continue to tarnish and destroy the value of Plaintiff s Trademarks unless enjoined by this Court. Plaintiff has no adequate remedy at law. COUNT VII CALIFORNIA RIGHT OF PUBLICITY 56. Plaintiff repeats and realleges the allegations of paragraphs 1 through 55 of thi complaint as if fully set forth herein. 57. Defendants have used and continue to use the names and likenesses of Plaintiff's individual members for purposes of trade in this State. 58. Defendants' acts are without the consent of the individuals who are legitimately known as members of "Jefferson Airplane" with the exception of Paul Kantner and Marty Balin who participate in Defendant's activities as described herein. 59. Defendants' acts have caused damage to Plaintiff and will continue to damage plaintiff unless enjoined by this Court. Plaintiff has no adequate remedy at law. WHEREFORE, Plaintiff respectfully prays that this Court grant the following relief as to each of the above causes of action: a. Preliminarily and permanently enjoining Defendants, their agents, officers, employees and those acting in concert with them from performing and/or recording using the name "Jefferson Airplane Volunteers", Jefferson Airplane," or the words "Jefferson" or "Airplane" either alone or in conjunction with any other word(s) and from making, distributing selling Unauthorized "Jefferson Airplane Volunteers" posters or any other merchandise bearing counterfeits of Plaintiff s Trademarks or the likenesses of its individual members; and b. Preliminarily and permanently enjoining Defendants, their agents, officers, employees and those acting in concert with them for falsely implying or creating the false impression that Plaintiff has authorized or endorsed the Unauthorized Jefferson Airplane Volunteers performances or that Plaintiff approves of the Unauthorized Jefferson Airplane Volunteers performances being offered to the public or that Plaintiff is associated in any way with Defendants; and C. An order that all Unauthorized Jefferson Airplane Volunteers posters, packaging, signs, catalogs or other accessories, goods or printed matter bearing Plaintiff's trademarks and the names or likenesses of its members, all machinery or other material for producing, printing, copying or distributing such items in the possession of Defendants be delivered up, for destruction or other disposition at Plaintiff's sole discretion; and d. An order that Defendants notify their custorners that the Unauthorized Jefferson Airplane posters or other merchandise sold by Defendants were in no way connected with Plaintiff but were unauthorized, that such customers should return all Unauthorized Jefferson Airplane posters or other merchandise to Defendants for cash refunds and that defendants will give such cash refunds, and that the returned Unauthorized Jefferson Airplane posters or other merchandise shall be delivered up to Plaintiff for destruction or other disposition at Plaintiffs sole discretion; and e. An order impounding, during the pendency of this action, all copies of posters or other merchandise claimed to have been made or used in violation of Plaintiff's exclusive rights, and of all masters or other articles by means of which such copies may be produced;and Page 10 I Grant Plaintiff an equitable accounting of Defendants' profits and award 2 Plaintiff judgment for its damages arising from Defendants' trademark infringement for either (1) 3 Plaintiff's actual damages and any additional profits of Defendants; or (2) statutory damages; or 4 Defendants' profits, whichever are greater, arising from Defendants' trademark infringement., 5 false designation of origin, unfair competition and trademark dilution, such damages to be trebled 6 pursuant to IS U.S.C.  1 1 17 and otherwise by reason of the willfulness of Defendants' acts in 7 duplicating Plaintiffs Trademarks and the "Jefferson Airplane" trade name and/or selling the 8 Unauthorized Jefferson Airplane Posters with the express or implied representation through the 9 use of Plaintiff's Trademarks or the Jefferson Airplane trade nai-ne that Defendants' products 0 emanate from or are associated with Plaintiff, and I h. This Court award Plaintiff damages for Defendants' unauthorized use of 2 Plaintiff s likeness; 3 i. This Court award Plaintiff costs and attorneys' fees, as provided by 15 4 U.S.C.  II 17; and 5 This Court award Plaintiff exemplary or punitive damages due to 6 Defendants' intentional acts in violation of Plaintiff's rights and Defendants' false 7 representations to, and deception of, the public to foster the belief that the Unauthorized 8 Jefferson Airplane Posters are that of Plaintiff; and 9 k. This Court grant Plaintiff such other and further relief as the Court deems 0 to be reasonable, necessary and just. 2 3 Johnson & Miskel .4 15 Dated: June 21, 2000 Glendon Miskel .6 Attorney for Plaintiff AIRPLANE, INC. COMPLAINT Page II Page 2