Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 1 of 17 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF MICHIGAN SOUTHERN DIVISION Moza, Inc., a Michigan corporation, d/b/a Mr. Song Millinery, and Wook Song, a/k/a Luke Song, an individual, vs. Plaintiffs, Case No. Hon. Brasseur, Inc., d/b/a Donna Vinci, a California corporation, King Ting Millinery Co., Ltd., a foreign corporation, and S&S Hat Company, Inc., a Pennsylvania corporation, Defendants. The Weintraub Group, P.L.C. Arnold S. Weintraub (P22127) David L. Oppenhuizen (P70219) Attorneys for Plaintiff 28580 Orchard Lake Road, Suite 140 Farmington Hills, Michigan 48334 Telephone: (248) 865-9430 Facsimile: (248) 865-9436 / / VERIFIED COMPLAINT The Plaintiffs, Moza, Inc. and Wook Song ( Moza ), by and through their attorneys, The Weintraub Group PLC., hereby files their Complaint against the Defendants, Brasseur, Inc., d/b/a Donna Vinci, King Ting Millinery Co., Ltd., and S&S Hat Company, Inc. (collectively hereinafter as Defendants ). In support of their Complaint, Plaintiffs state as follows:
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 2 of 17 JURISDICTION AND VENUE 1. This action arises under Federal Law, and in particular 15 U.S.C. 1125(a), and the common law of the State of Michigan. 2. This court has original jurisdiction based on 15 U.S.C. 1121 and 28 U.S.C. 1331, 1332, and 1338. The matter in controversy exceeds, exclusive of interest and costs, the sum of One Hundred Thousand ($100,000.00) Dollars. Jurisdiction over any state-based matters is proper pursuant to 28 U.S.C. 1367. 2. Plaintiffs are seeking, inter alia, injunctive relief for which this Court has subject matter jurisdiction pursuant to MSA 27A.601; MCL 600.601. 3. The Plaintiff Moza is a corporation organized and existing under the laws of the State of Michigan. Moza provides design and wholesale manufacturing of millinery and garments, and private labeling services of such articles, to customers throughout the United States, including southeastern Michigan, servicing inter alia, the counties of Macomb, Oakland, St. Clair, and Wayne. Its principal place of business is located at 29890 Southfield Road, Southfield, Michigan 48076 in the County of Oakland, and operates under the assumed name Mr. Song Millinery. 4. The Plaintiff Wook Song, a/k/a Luke Song, is an individual residing in Michigan, a principal of Moza, Inc. and a proprietor of Mr. Song Millinery. 5. Upon information and belief, the Defendant Brasseur, Inc., d/b/a Donna Vinci (hereinafter Donna Vinci ), advertises and promotes its business throughout the United States including the State of Michigan, and in interstate commerce at its website located at www.donnavinci.com. Defendant Brasseur, Inc. s principal place of business is located at 1206 S. Maple Avenue, Suite 400, Los Angeles, CA 90015. (Exh. A) 2
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 3 of 17 6. Upon information and belief, the Defendant King Ting Millinery Co., Ltd. (hereinafter King Ting Millinery or King Ting ) advertises and promotes its business throughout the United States including the State of Michigan, and in interstate commerce through its website located at www.millinery.cn. Upon information and belief Defendant King Ting Millinery Co., Ltd. ships its goods directly to Defendant Donna Vinci. Defendant King Ting Millinery Co., Ltd. s principal place of business is located at 3 rd floor A-11 Block Bashe Industry Garden, Longhu Shijing Town Baiyun District, Guangzhou City, China 510450. (Exh. B) 7. Upon information and belief, the Defendant S&S Hat Company, Inc. (hereinafter S&S Hat Company ) advertises and promotes its business throughout the United States, including the State of Michigan, and in interstate commerce through its website located at www.sshatco.com. Defendant S&S Hat Company, Inc. s principal place of business is its factory at 2251 Fraley Street, Philadelphia, Pennsylvania 19137. (Exh. C) 8. Upon information and belief, S&S Hat Company, Inc. sells its hats through its showrooms in New York and Dallas, as well as through a network of third party retailers throughout the United States, including at least one location in Detroit at Biz-R Shoe Collection, which is located at 3031 West Grand Boulevard, Detroit, Michigan 48202. 9. Beginning in approximately 2003 or 2004, Moza and the Defendants Donna Vinci and King Ting Millinery engaged in a cooperative working relationship in which the Plaintiff Luke Song designed high-end, ornate, stylish hats for women. The Defendant King Ting Millinery supplied the raw materials, such as fabrics and bows, to 3
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 4 of 17 Moza. Moza then manufactured the hats designed by Luke Song using those materials according to Moza s strict quality standards. The hats were then sold by Defendant Donna Vinci under Donna Vinci s private label through Donna Vinci s website, catalog, etc. In this regard, Moza was responsible for the design and quality of the goods being sold under Donna Vinci s private label. 10. As a consequence of this relationship, the purchasing public has come to understand and expect that a hat sold by Donna Vinci having a Donna Vinci label is actually a hat designed by Luke Song and manufactured by Moza according to the quality standards set by Moza. In this regard, Moza controlled the quality of the goods that it manufactured and which were sold under Donna Vinci s private label. 11. This working arrangement between the parties lasted until approximately March 2009 when the Defendant King Ting Millinery could no longer keep up with Moza s production demands and King Ting began shipping non-conforming materials. 12. Since the 1980 s, the renowned artist Aretha Franklin has been a regular customer of Moza and she has, and continues to, purchase hats designed by Luke Song. Because of the quality and artistry of Moza s hats, Aretha Franklin approached Luke Song to design a custom hat for her to wear for her performance during the inauguration of President Barack Obama. 13. Moza s hat worn by Aretha Franklin (hereinafter the Original Inaugural Hat ) gained instantaneous fame and notoriety, attracting much more media attention than even Aretha Franklin s performance itself. The Original Inaugural Hat has generated, and continues to generate, worldwide attention. In fact, following President Obama s inauguration, Luke Song and Moza were featured in prominent newspapers, 4
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 5 of 17 such as The New York Times, The Wall Street Journal, and Los Angeles Times. (Exh. D) The Original Inaugural Hat had immediately become such a cultural icon that it was soon parodied by entertainers such as Ellen DeGeneres because of its lavish and ornate design was so distinctive. (Exh. E) 14. The impact of the Inaugural Hat was so lasting that the actual Original Inaugural Hat custom made for and worn by Aretha Franklin has since been loaned to the Smithsonian Institution. Upon completion of President Obama s presidential library, the hat will then be permanently exhibited there. 15. In addition, Moza has supplied the Rock and Roll Hall of Fame and Museum with an exact replica of the Original Inaugural Hat which will be on permanent display at its Aretha Franklin exhibit. 16. Since the Original Inaugural Hat was custom designed solely for Aretha Franklin, Moza does not offer that exact hat for sale. However, since January 2009 Moza has continuously produced and sold commercial-version replicas (hereinafter the Inaugural Hat ) of the Original Inaugural Hat through its millinery and garment business under the name Mr. Song Millinery. 17. Because of the Inaugural Hat s lavish design and the media attention accordingly given to it, customer demand for the Inaugural Hat quickly outpaced the Defendant King Ting Millinery s ability to supply Moza with the raw materials to manufacture the hat. 18. Since January 2009, Moza has expended substantial resources in advertising and promoting the Inaugural Hat in connection with its millinery business, including advertising through its website at www.mrsongmillinery.com. (Exh. F) 5
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 6 of 17 19. As a consequence of Moza s long, continuous and exclusive sale of the Inaugural Hat, the Inaugural Hat has come to be associated in the minds of the purchasing public with the Plaintiffs. 20. Plaintiffs Inaugural Hat has achieved the requisite degree of celebrity to have obtained secondary meaning within the minds of the purchasing public. 21. Following the explosion of demand for the Inaugural Hat, as well as the spillover demand to Moza s other hats, the Defendant King Ting could not meet the supply demands of Plaintiff Moza to complete orders. In addition, the materials that Defendant King Ting supplied to Plaintiff Moza were of poor quality, not labeled according to Customs requirements, and not consistent with the quality standards that the purchasing public had come to expect from Moza. This resulted in Moza suffering damages resulting from both lost sales, brokerage fees, and warehousing fees for the poor quality materials from King Ting. 22. Because of Luke Song s and the Inaugural Hat s acquired fame and notoriety in January 2009, the Defendants Donna Vinci, King Ting Millinery, and S&S Hat Company began, and have continued, to manufacture and/or sell virtually identical versions of Plaintiffs Inaugural Hat and/or other hat designs of Plaintiffs. 23. Beginning around the summer of 2009, Moza stopped supplying Donna Vinci with its hats for private label sale under Donna Vinci s label. 24. Upon information and belief, at that same time King Ting Millinery began using the same raw materials it had previously supplied to Moza to manufacture an entire Fall 2009 line of knock-off hats which replicate and palm off Moza s hats. King Ting Millinery s line of knock-off hats include identical replicas of Moza s hats, as well as 6
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 7 of 17 hats which comprise signature design elements used by Moza. King Ting Millinery then supplied the copied hats to the Defendant Donna Vinci for resale. A list of the infringing hats is compiled in Exhibit G. 25. Upon information and belief, Donna Vinci sells an identical version of the Inaugural Hat to customers throughout the United States, including the State of Michigan. As such, the Defendant Donna Vinci competes directly with the Plaintiffs by providing identical products to many of the same customers serviced by the Plaintiff. 26. Upon information and belief, the Defendant Donna Vinci sells identical versions of Plaintiffs other hat designs to customers throughout the United States, including the State of Michigan. As such, the Defendant Donna Vinci competes directly with the Plaintiffs by providing identical products to many of the same customers serviced by the Plaintiffs. 27. Upon information and belief, the Defendant King Ting Millinery manufactures and sells identical versions of Plaintiffs hat designs to the Defendant Donna Vinci. As such, Defendant King Ting Millinery competes directly with the Plaintiffs by providing identical products to many of the same customers serviced by the Plaintiffs. 28. Upon information and belief, the Defendant S&S Hat Company manufactures and sells an identical version of Plaintiffs Inaugural Hat to the Defendant Donna Vinci. As such, the Defendant S&S Hat Company competes directly with the Plaintiffs by providing identical products to many of the same customers serviced by the Plaintiffs. 7
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 8 of 17 29. Plaintiffs sent letters to the Defendants Donna Vinci and King Ting Millinery requesting they immediately cease and desist from advertising and promoting for sale goods duplicating the Inaugural Hat in connection with providing millinery goods. Defendants have not responded and have continued to infringe upon Plaintiffs rights in its common law mark necessitating the filing of the instant action. in full herein. COUNT I VIOLATION OF 15 U.S.C. 1125(a)(1)(A) (against all Defendants) 30. Plaintiffs hereby re-adopt and re-allege Paragraphs 1-29 as is if set forth 31. Plaintiffs Inaugural Hat has become uniquely associated with the Plaintiffs in the minds of the purchasing public and hence identifies the Plaintiffs as being the source of the Inaugural Hat. 32. The Plaintiffs other unique hat designs have become uniquely associated with the Plaintiffs in the minds of the purchasing public and hence identify the Plaintiffs as being the source of those unique hats. 33. The Defendants manufacture and unauthorized sale of goods identical to the Inaugural Hat and Plaintiffs other unique hat designs have so simulated the distinctive features thereof as to create a false designation as is likely to cause confusion, or to cause mistake, or to deceive the public as to the affiliation, connection, or association of Defendants with Plaintiffs. 34. The Defendants have, by copying the Inaugural Hat and Plaintiffs other unique hat designs, created a false designation of the origin of their unauthorized copies of the Plaintiffs hats, which are likely to cause confusion, or to cause mistake, or to 8
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 9 of 17 deceive as to the affiliation, connection, or association of Defendants with Plaintiffs and/or the Plaintiffs' original designs, or as to the origin, sponsorship, or approval of Defendants' goods, services, or commercial activities by Plaintiff. 35. Upon information and belief, Defendants have, in the conduct of commerce, made false and/or misleading descriptions of fact likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with Plaintiff and/or the Plaintiffs' original designs, or as to the origin, sponsorship, or approval of Defendants' goods, services, or commercial activities by Plaintiffs. 36. Upon information and belief, Defendants have, in the conduct of commerce, made false and/or misleading representations of fact likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of Defendants with Plaintiff and/or the Plaintiffs' original designs, or as to the origin, sponsorship, or approval of Defendants goods, services, or commercial activities by Plaintiff. 37. All of the above-referenced acts of Defendants were deliberate and made in blatant disregard of Plaintiffs business property rights. 38. All of the above-referenced acts of Defendants have proximately resulted in, and will continue to result in, irreparable harm and damage to the Plaintiffs which cannot be adequately compensated by an award of monetary damages, alone. 39. By reason of the foregoing Plaintiffs have been injured in an amount not yet ascertained. 9
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 10 of 17 in full herein. COUNT II VIOLATION OF 15 U.S.C. 1125(a)(1)(B) (against all Defendants) 40. Plaintiffs hereby re-adopt and re-allege Paragraphs 1-39 as is if set forth 41. Since being introduced to the market, the Inaugural Hat and Plaintiffs other unique hats have enjoyed success and has been recognized by the purchasing public as having been provided to the market by the Plaintiffs and have been publicized by Plaintiff with television ads and other forms of advertising. 42. Upon information and belief, Defendants have, in the conduct of commerce, including but not limited to various trade shows and internet activity, displayed, advertised and promoted hats which so resemble Plaintiffs hats as to misrepresent the nature, characteristics, and qualities, of Defendants products. 43. Defendants have, in commercial advertising or promotion in the conduct of commerce, by false designation of origin, in regard to the source of its hats, misrepresented the characteristics and qualities of Defendants products, services, and/or commercial activities. 44. Upon information and belief, Defendants have, advertised and promoted its hats in such a manner that they have misrepresented the nature, characteristics and qualities of Defendants products. 45. Upon information and belief, Defendants have, in advertising and promoting its hats, misrepresented the characteristics and qualities of their products. 46. All of the above-referenced acts of Defendants, including false designations, false or misleading descriptions of fact, and false or misleading 10
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 11 of 17 representations of fact, were deliberate and made in blatant disregard of Plaintiffs business and intellectual property rights. 47. All of the above-referenced acts of Defendants have proximately resulted in, and will continue to result in, irreparable harm and damage to the Plaintiffs which cannot be adequately compensated by an award of monetary damages, alone. 48. By reason of the foregoing Plaintiffs have been injured in an amount not yet ascertained. COUNT III COMMON LAW UNFAIR COMPETITION (against all Defendants) 49. Plaintiffs hereby re-adopt and re-allege Paragraphs 1-48, above as though set forth in full herein. 50. Defendants manufacture and sale of hats identical to the Inaugural Hat and/or Plaintiffs other hat designs is likely to cause confusion, or to cause mistake, or to deceive the public as to the affiliation, connection, or association of the Defendants and/or their business with the Plaintiffs, or that the goods of the Defendants and/or their business originates from the Plaintiffs or has the sponsorship or approval of the Plaintiffs. 51. Upon information and belief, Defendants unauthorized manufacture and sale of a hat identical to the Inaugural Hat and/or Plaintiffs other hat designs is likely to cause confusion in the minds of the public regarding the origin of Defendants hats was done willfully and wantonly and in derogation of the rights of Plaintiffs. The natural and probable result of the Defendants actions being that the public will continue to be deceived as to the source of Defendants goods. 11
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 12 of 17 52. Defendants manufacture and sale of hats that are confusingly similar to that of the Plaintiffs has caused and is causing serious irreparable harm to Plaintiffs that cannot be adequately compensated in monies. Furthermore, the continued unauthorized manufacture and sale by Defendants of confusingly similar hats has likely caused, and will likely continue to cause confusion and deception of the public as to the source or sponsorship of Defendants hats. Unless enjoined, Defendants conduct will continue to harm Plaintiffs. Plaintiffs accordingly have no adequate remedy at law. 53. Defendants actions create a deceptive designation of origin and a false representation in violation of Michigan s common law regarding unfair competition. COUNT IV BREACH OF WARRANTY (against Defendant King Ting Millinery) 54. Plaintiffs re-adopt and re-allege Paragraphs 1-53 above, as though set forth in full herein. 55. The materials supplied to Plaintiffs by King Ting Millinery are goods within the meaning of Uniform Commercial Code Article 2. 56. Defendant King Ting Millinery s conduct as described herein constitutes breach of an implied warranty of merchantability. In particular, the materials sold by Defendant King Ting Millinery were not merchantable at the time of sale under UCC 2-314 due to King Ting Millinery s misbranding, concealment, and non-disclosure. 57. As a proximate result of the aforementioned wrongful conduct and breach, Plaintiffs have suffered economic loss in an amount to be proven at trial. Defendant King Ting Millinery had actual or constructive notice of such damages. 12
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 13 of 17 COUNT V TRADE DRESS INFRINGEMENT (against all Defendants) 58. Plaintiffs re-adopt and re-allege Paragraphs 1-57 above, as though set forth in full herein. 59. Plaintiffs created and reserve all ownership rights in their hat designs. 60. Plaintiffs hat designs are inherently distinctive because of their many unique design features and combinations thereof, or to the extent that the Plaintiffs hat designs have acquired secondary meaning in the mind of the purchasing public because of the long, continuous and exclusive usage of the unique design features and/or intentional copying of Plaintiffs hat designs by Defendants. 61. Plaintiffs Inaugural Hat, in particular, has acquired secondary meaning in the mind of the purchasing public as a result of the fame attributed to both it and to the Plaintiffs Luke Song and Moza. 62. Defendants, in manufacturing and/or selling hats, have so simulated the distinctive features of Plaintiffs hat designs so as to create a false designation of origin likely to cause confusion, or to cause mistake, or to deceive the public as to the affiliation, connection, or association of Defendants with Plaintiffs. 63. Defendants, in manufacturing and/or selling hats, have so simulated the distinctive features of Plaintiffs hat designs so as to create a false or misleading description of fact likely to cause confusion, or to cause mistake, or to deceive the public as to the affiliation, connection, or association of Defendants with Plaintiffs. 64. Defendants, in manufacturing and/or selling hats, have so simulated the distinctive features of Plaintiffs hat designs so as to create a false or misleading 13
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 14 of 17 representation of fact likely to cause confusion, or to cause mistake, or to deceive the public as to the affiliation, connection, or association of Defendants with Plaintiffs. 65. Plaintiffs hats have non-functional elements which are subject to trade dress protection under Federal Law. Plaintiffs trade dress is the overall appearance of their products designs, which include, but are not limited to the following specific elements and the overall various combinations of each as specifically shown and described in Exhibit H. 66. All of the above-referenced acts of the Defendants have proximately resulted in, and will continue to result in, irreparable harm and damages to the Plaintiffs which cannot be adequately compensated by an award of monetary damages alone. PRAYER FOR RELIEF WHEREFORE, Plaintiffs Moza, Inc. and Wook Song respectfully request that the Court provide the following relief: (A) That the Plaintiffs common law mark for the Inaugural Hat be found to be valid and subsisting; (B) That the Plaintiffs common law mark for its other hat designs be found to be valid and subsisting; (C) That Defendants duplication be found to be an infringement of Plaintiffs rights in its common law mark; (D) That Defendants, their employees, servants, agents and all others acting in concert with them, be enjoined, both preliminarily during the pendency of this litigation, as well as permanently thereafter, from manufacturing or selling the Inaugural Hat and/or Plaintiffs other hat designs, or any other article which is a 14
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 15 of 17 colorable imitation thereof, in such a manner that there is a likelihood of confusion as to the source of goods which the public associates with the Plaintiffs; (E) That Defendants, their employees, servants, agents, and all others acting in concert with them, be enjoined from otherwise competing unfairly with the Plaintiffs through manufacture or sale of the Inaugural Hat and/or Plaintiffs other hat designs, or any other colorable imitation thereof, which are likely to cause a false designation or false association between Defendants goods and those of the Plaintiffs, or otherwise unfairly competing with the Plaintiffs; (F) That Defendants be directed to file with this Court and serve on Plaintiffs within thirty (30) days after service of an order enjoining the Defendants, as described above, a report in writing and under oath setting forth in detail the manner and form in which the Defendants have complied with the injunction; (G) That Defendants be ordered to account for and pay over to Plaintiffs all profits, gains and advantages wrongfully realized by Defendants in association with those acts and which constitute infringement of Plaintiffs rights as described above; (H) That Defendants be required to deliver up for impoundment or destruction, all inventory and materials in their possession or under their control which are similar to the Inaugural Hat and Plaintiffs other hat designs, and which are likely to cause confusion or false designation of origin with the mark owned by the Plaintiffs, and the services associated therewith; (I) That Defendants shall immediately cease all advertising and promotions, regardless of the medium, that bear, display, or otherwise utilize the 15
Case 2:10-cv-11865-AJT-RSW Document 1 Filed 05/07/10 Page 16 of 17 Inaugural Hat and/or Plaintiffs other hat designs, and which are likely to cause confusion or false designation of origin with the mark owned by the Plaintiffs; (J) That Defendants immediately cause to be removed from the internet, whether in a website, as a metatag, or as part of a search engine, any reference to marks containing the Inaugural Hat and/or Plaintiffs other hat designs; (K) That Defendants immediately cease any and all use of marks containing the Inaugural Hat and/or Plaintiffs other hat designs in any internet search engine; (L) (M) (N) (O) For economic, compensatory, and general damages; For punitive damages, as applicable; Finding that Plaintiffs hat designs are a protectable trade dress; Finding that Plaintiffs hat designs are inherently distinctive or have acquired distinctiveness through secondary meaning; (P) Finding that Defendants hats create a likelihood of confusion as to source, or as to sponsorship, affiliation or connection; (Q) (R) Finding that Defendants have infringed Plaintiffs trade dress; and That Plaintiffs be awarded such other and further relief as the Court deems proper and just under the circumstances. VERIFICATION All assertions made above on personal knowledge are true and all allegations made on information and belief, I believe to be true. 16
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