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					                 Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 1 of 8




 1   Rick N. Bryson/Bar No. 010568
     Benjamin K. Erlick/Bar No. 027176
 2   SANDERS & PARKS, P.C.
     1300 SCF Tower
 3   3030 North Third Street
     Phoenix, AZ 85012-3099
 4
     Rick N. Bryson
 5    Direct Phone: (602) 532-5710
      Direct Fax: (602) 230-5014
 6    E-Mail: Rick.Bryson@SandersParks.com
 7   Attorneys for Plaintiff Shirtail, Inc.
 8
 9
10                           IN THE UNITED STATES DISTRICT COURT
                                   FOR THE DISTRICT OF ARIZONA
11
12 SHIRTAIL INC., an Arizona corporation,         Case No.:
13                  Plaintiff,
14 v.                                             COMPLAINT
15 NBA PROPERTIES, INC., a New York               (Jury Trial Demanded)
                    NATIONAL
16 Corporation; andASSOCIATION, INC., a
   BASKETBALL
17 New York Corporation; NEW ORLEANS
   HORNETS NBA LIMITED
18 PARTNERSHIP, a North Carolina
   Partnership; and HORNETS GP, LLC, a
19 Delaware limited liability company.
20                     Defendants.

21
                                        DESCRIPTION OF ACTION
22
            1.      This is an action by Shirtail Inc., against NBA Properties, Inc., National
23
     Basketball Association, Inc., New Orleans Hornets NBA Limited Partnership, and Hornets GP,
24
     LLC, for trademark infringement and unfair competition. Shirtail seeks injunctive relief and
25
26
                 Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 2 of 8




1    damages for trademark infringement under the Lanham Act, 15 U.S.C. §1114, for unfair
2    competition under 15 U.S.C. § 1125(a).
3                                               THE PARTIES
4
            2.      Plaintiff Shirtail Inc. is an Arizona Corporation. It is incorporated in Arizona, has
5
     its principal place of business in Arizona.      It is referred to throughout this Complaint as
6
     “Shirtail.”
7
            3.      Upon information and belief, defendant NBA Properties, Inc. is incorporated in
8
     New York and has its principal place of business in New York.
9
10          4.      Upon information and belief, defendant National Basketball Association, Inc. is

11   incorporated in New York and has its principal place of business in New York.

12          5.      Upon information and belief, defendant New Orleans Hornets NBA Limited
13   Partnership is registered is North Carolina has its principal place of business in Louisiana.
14          6.      Upon information and belief, defendant Hornets GP, LLC is incorporated in
15   Delaware and has its principal place of business in New York.
16          7.      NBA Properties, Inc., National Basketball Association, Inc., New Orleans Hornets
17
     NBA Limited Partnership, and Hornets GP, LLC shall collectively be referred to as
18
     “Defendants.”
19
                                        JURISDICTION AND VENUE
20
            8.      This Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 and 28
21
     U.S.C. §§ 1331, 1338.        This case primarily involves a federal question.      This Court has
22
23   jurisdiction over Plaintiff’s state law claims pursuant to 28 U.S.C. § 1367 and the doctrine of

24   supplemental jurisdiction.

25          9.      Defendants are subject to general and specific personal jurisdiction of this Court
26   by virtue of their substantial contacts with Arizona, including, but not limited to, conducting



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               Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 3 of 8




1    substantial and continuous business in Arizona, directing substantial actions towards Arizona,
2    and marketing its products to consumers in Arizona.
3           10.    Hornets GP, LLC is subject to jurisdiction and liability for actions that may
4
     otherwise be attributed to New Orleans Hornets NBA Limited Partnership because New Orleans
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     Hornets NBA Limited Partnership is the alter ego and agent of Hornets GP, LLC.
6
            11.    Upon information and belief, there is a unity and intertwining of interests and
7
     ownership between Hornets GP, LLC and New Orleans Hornets NBA Limited Partnership such
8
     that the two companies do not exist as separate entities.
9
10          12.    Venue in this judicial district is appropriate pursuant to 28 U.S.C. § 1391 because,

11   among other reasons, Defendants are subject to personal jurisdiction in this District.

12                                      COMMON ALLEGATIONS
13          13.    Shirtail is in the business of marketing and selling clothing, accessories, and
14   promotional products, including tee shirts, polo shirts, and hats.
15          14.    In 1994 Shirtail launched a brand of clothing, sports apparel, and outerwear under
16   the name “I’M IN.”
17
            15.    Shirtail sold its goods marked with the I’M IN® trademark before Defendants
18
     engaged in the improper acts described below.
19
            16.    Since 1994, Shirtail has continuously used the I’M IN® mark in connection with
20
     its I’M IN® line of products in various advertising and promotional materials.
21
            17.    Shirtail owns a federal trademark registration for “I’M IN,” No. 3,138,299.
22
23          18.    Shirtail owns a federal trademark registration for “I’M IN,” No. 4,167,336.

24          19.    Shirtail has spent significant sums of money and expended significant efforts to

25   promote its I’M IN® line of products and I’M IN® mark. Shirtail’s promotional efforts include
26



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               Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 4 of 8




1    internet advertising. The I’M IN® mark is prominently featured in advertisements and
2    promotions for I’M IN® products.
3           20.    As a result of Shirtail’s substantial use and promotion of the I’M IN® mark,
4
     Shirtail has acquired great value as an identifier of Shirtail’s products, which serve to distinguish
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     Shirtail’s I’M IN® line of products from those of its competitors. Customers in this Judicial
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     District and elsewhere recognize Shirtail’s I’M IN® mark as a distinctive designation of the
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     origin of Shirtail’s I’M IN® line of products. The I’M IN® mark is an asset of significant value
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     as a symbol of Shirtail and its quality products and goodwill.
9
10          21.    Without permission or authority from Shirtail, Defendants have infringed upon

11   Shirtail’s I’M IN® mark in interstate commerce by making, using, promoting, advertising,

12   distributing, selling, and offering goods, including shirts, using the I’M IN® mark.
13          22.    The unauthorized use of the I’M IN® mark by Defendants trades upon the
14   goodwill and substantial recognition associated with Shirtail’s I’M IN® line of products.
15          23.    The unauthorized use of the I’M IN® mark by Defendants has or will result in
16   confusion and mistake between Shirtail’s I’M IN® products and Defendants products marked
17
     with the I’M IN mark.
18
            24.    By virtue of the acts outlined herein, Defendants have created a likelihood of
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     injury to Shirtail’s business reputation, caused by both actual confusion and the strong
20
     likelihood of consumer confusion as to the source of origin and of the relationship of Shirtail’s
21
     and Defendant’s goods, and has otherwise competed unfairly with Shirtail.
22
23          25.    Upon information and belief, Defendant’s acts outlined herein are willful and

24   deliberate.

25   //
26   //



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                 Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 5 of 8




1              26.   Defendant’s acts outlined herein have caused damage to Shirtail in an amount to
2    be determined at trial, and such damages will continue to increase unless and until Defendants
3    are enjoined from its wrongful conduct.
4
               27.   Shirtail will suffer a substantial loss of goodwill and reputation unless and until
5
     Defendants are preliminarily and permanently enjoined from the wrongful actions outlined
6
     herein.
7                                         First Cause of Action
                         (Trademark Infringement and False Designation of Origin)
8                                          (15 .S.C. § 1125(a))
9              28.   Shirtail realleges and incorporates by reference the above paragraphs of this
10
     Complaint as though fully set forth herein.
11
               29.   This is an action for trademark infringement and false designation of origin arising
12
     under 15 U.S.C. § 1125(a).
13
               30.   Defendants created a false designation of origin by using in commerce, without
14
     Shirtail’s permission, marks identical to or confusingly similar to Shirtail’s I’M IN® mark in
15
     connection with the advertisement, offering for sale, and sale of Defendants’ goods.
16
17             31.   Shirtail’s I’M IN® mark is non-functional and inherently distinctive.

18             32.   Defendants’ infringing marks are confusingly similar to Shirtail’s I’M IN® line of

19   products. Defendants have infringed upon Shirtail’s I’M IN® mark and created a false
20   designation of origin by manufacturing, distributing, selling, and promoting in commerce,
21   without Shirtail’s permission, its products using the I’M IN® mark.
22             33.   Defendants’ aforementioned acts have irreparably injured Shirtail and damaged
23
     Shirtail in an amount to be determined at trial. Such irreparable injury will continue unless and
24
     until Defendants are preliminarily and permanently enjoined by this Court from further violation
25
     of Shirtail’s rights, for which Shirtail has no adequate remedy at law.
26



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                 Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 6 of 8




1                                       Second Cause of Action
                            (Unfair Competition under Arizona Common Law)
2
            34.     Shirtail realleges and incorporates by reference the above paragraphs of this
3
     Complaint as though fully set forth herein.
4
5           35.     This is an action for common law unfair competition arising under the common

6    law of the State of Arizona.

7           36.     By virtue of the acts outlined herein, Defendants have intentionally caused a
8    likelihood of confusion among the public and has unfairly competed with Shirtail in violation of
9    the common law of the State of Arizona.
10          37.     Defendants’ willful acts of unfair competition have caused damage and irreparable
11
     injury to Shirtail in an amount to be determined at trial.
12
            38.     Defendants’ willful acts of unfair competition under Arizona common law
13
     constitute fraud, oppression, and malice. Accordingly, Shirtail is entitled to exemplary damages.
14
                                                Prayer for Relief
15
        WHEREFORE, Shirtail prays for judgment against Defendants as follows:
16
            A.      That the Court enter judgment in favor of Shirtail and against Defendants on all
17
18   causes of action alleged herein;

19          B.      That the Court enter judgment that Defendants have willfully violated the

20   provisions of 15 U.S.C. §1125 by infringing upon Shirtail’s I’M IN® mark through the
21   marketing, sale, and promotion of Defendants’ goods using the Infringing Marks;
22          C.      That Defendants be adjudged to have willfully violated the provisions of 15
23   U.S.C. § 1125 by using false designation of origin, false description, or false representation in
24
     connection with its products;
25
            D.      That Defendants be adjudged to have unfairly competed with Shirtail under the
26
     common law of the State of Arizona


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                    Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 7 of 8




1              E.      That Defendants, its agents, servants, employees, attorneys, successors, and
2    assigns, and all other persons in active concert or participation with any of them who receive
3    actual notice of the injunction by personal service or otherwise, be forthwith preliminarily and
4
     permanently enjoined from:
5
                    1. Using the Infringing Marks in connection with Defendants’ goods; using the
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                       Infringing Marks in advertising or promoting Defendants’ goods; and/or using
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                       confusingly similar variations of Shirtail’s I’M IN® mark in any manner that is
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                       likely to create the impression that Defendants’ goods originate from Shirtail, are
9
10                     endorsed by Shirtail, or are in any way connected to Shirtail;

11                  2. Otherwise infringing upon the I’M IN® mark;

12                  3. Unfairly competing with Shirtail in any manner whatsoever; and
13                  4. Causing a likelihood of confusion or injury to Shirtail’s business reputation;
14             F.      That Defendants be directed to file with this Court and serve upon Shirtail within
15   thirty (30) days after the service of the injunction, a report, in writing, under oath, and setting
16   forth in detail the manner and form in which Defendants have complied with the injunction
17
     pursuant to 15 U.S.C. § 1116;
18
               G.      That Defendants be required to account to Shirtail for any and all profits derived
19
     by Defendants and all damages sustained by Shirtail by virtue of Defendants’ acts outlined
20
     herein;
21
               H.      That Defendants be ordered to pay over to Shirtail all damages which Shirtail has
22
23   sustained as a consequence of the acts outlined herein subject to proof at trial;

24             I.      That Shirtail be awarded treble damages pursuant to 15 U.S.C. § 1117;

25             J.      That Shirtail be awarded exemplary damages from Defendants;
26



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                 Case 2:12-cv-01603-FJM Document 1 Filed 07/25/12 Page 8 of 8




1           K.      That an award of reasonable costs, expenses, and attorneys’ fees be awarded to
2    Shirtail;
3           L.      That Shirtail be awarded interest at the highest allowable rate under the law from
4
     the date of judgment until paid in full;
5
            M.      That Defendants be required to deliver and destroy all devices, literature,
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     advertising, goods, and other materials bearing the Infringing Marks pursuant to 15 U.S.C. §
7
     1118; and
8
            N.       That Shirtail be awarded such other and further relief as this Court may deem just.
9
10                                          Jury Trial Demand

11          Shirtail demands a jury trial on all claims that support such a demand.

12
            RESPECTFULLY SUBMITTED this 25th day of July, 2012.
13
                                                SANDERS & PARKS, P.C.
14
15
                                                By      /s/ Benjamin K. Erlick
16                                                   Rick N. Bryson
                                                     Benjamin K. Erlick
17                                                   1300 SCF Tower
                                                     3030 North Third Street
18                                                   Phoenix, Arizona 85012-3099
                                                     Attorneys for Plaintiff Shirtail, Inc.
19
20                                    CERTIFICATE OF SERVICE
21
            I hereby certify that on July 25th, 2012, I electronically transmitted this document to the
22   Clerk’s Office using the CM/ECF system for filing.
23
                                                                /s/ Zina B. Seyferth
24
25
26



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