Case 2:12-cv-09893-ABC-PJW Document 56

Filed 12/28/12 Page 1 of 9 Page ID #:1033

1 GREENBERG TRAURIG, LLP GREENBERG TRAURIG, SUSAN HELLER (SBN susAN L. FTELLER (SBN 160s39) ) E-Mail: HellerS@gtlaw.com160539) 2 E-Mail: HellerS@gtlaw.com 3 WENDY M. MANTELL (SBN 22ss44) MANTELL 225544) J E-Mail: MantellW@gtlaw.com E_Mail: Mantell[t@gtlaw.com 4 NINA BOYAJIAN 246415) 4 NrNA D. BOYAJTAN (SBN 2464rs) E-Mail: BoyajianN@gtlaw.com E-Mail: BoyajianN@gtlaw.com 5 1900 5 1840 Century Park East, Suite 1900 Angeles, 90067-2121 Los Angeles, CA 90067-2121 6 Tel: 3 10-586-7700; Fax: 3 10-586-7800 6 310-586-7700; 310-586-7800
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7 GORDON SILVER 7 GORDON SILVER

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JENNIFER Hac Vice) JENNIFER KO CRAFT (Pro Hc Vice) lver.com E-Mail: JCrafi@gordonsilver.com ANDREW Hac ANDREW D. SEDLOCK (Pro Hac Vice) CK ASedlock@gordonsilver.com ilver.com E-Mail: ASedloc Howard Hughes Parkway, 9th Floor Parkway, 3960 Howard H NY 89169-5978 Las Vegas, NV8 t69-s978 Tel: 702-796-5555; 702-369-2666 Tel 702-79 6-5555 ; Fax: 702-369-2666

t2 Attorneys for Defendants BOLDFACE GROUP, INIC., 12 Attorneys BOLDFACE GROUP, INC., 13 BOLDFACE Licensing + Branding BOLDFACE Licensing + Branding 13
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UNITED STATES DISTRICT UNITED STATES DISTRTCT COURT DISTRICT CALIFORNIA -- WESTERN DIVISION CENTRAL DISTRICT OF CALIFORIIIA.. WESTERN DIVISION
CASE NO. CV 12-09893 ABC (PJWx)

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17 CHROMA MAKEUP STUDIO LLC, CHROMA MAKEUP LLC,

18 18 19 vs. I9 VS

Plaintiff,

COMPLAINT ANSWER TO COMPLAINT

BOLDFACE GROUP, 20 BOLDFACE GROUP, INC., and BOLDF ACE LICENSING + BOLDFACE LICENSING + 2T BRANDING, 21 BRANDING,
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Date Filed: Dat Filed:

Judge: Judse:

Audrey Hon. Audrev B. Collins November 19,2012 November 19,2012

Defendants. Defendants.

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ANSWER TO COMPLAINT

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Defendants BOLDFACE, BOLDFACE LICENSING + BRANDING Defendants BOLDFACE, INC. and BOLDFACE LICENSING + BRANDING

(collectively, "Boldface" "Defendants"), hereby Complaint of Plaintiff 2 (collectively, "Boldface" or "Defendants"), hereby answer the Complaint of Plaintiff 3 J
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CHROMA MAKEUP LLC, ("Plaintiff'), as CHROMA MAKEUP STUDIO LLC, ("Plaintiff'), rs follows: PARTIES THE PARTIES 1. 1. Answering paragraph 1, Defendants sufficient information Answeringparugraph 1, Defendants lack sufficient information to form a

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therefore, 6 of allegations paragraph 6 belief as to the truth of the allegations of paragraph 1, and therefore, deny those 7 7 allegations. 8 8 2. 2. Answering paragraph 2, Defendants Answeringparagraph2,Defendants admit and allege that Boldface Group,

9 Inc. and its subsidiary Boldface Licensing subsidiary Licensing 10 10 11 11 12 t2 13 13 3. 3.

* Branding are Nevada + Branding

corporations corporations having

their principle places of business in Santa Monica, California. principle Monica, California. JURISDICTION AND VENUE JURISDICTIO AI\[D VENUE Answering paragraph Defendants purported Answeringparagraph 3, Defendants admit that Plaintiff has purported to

trademark infringement trademark allege claims of trademark infringement and unfair competition under the trademark laws

14 United States, 1114 California Business I4 of the United States, 15 U.S.C. $ 1114 et seq., under the California Business & 15 Professions Code common 15 Professions Code $ 17200 et seq., and under the common 16 Plaintiff allegations t6 Plaintiff s allegations state a claim. 17 t7 4. 4. Answering paragraph Defendants has jurisdiction Answeringparagraph 4, Defendants admit that this Court has jurisdiction U.S.C. 1338(a)-(b) and 1367. Defendants U.S.C. $$ 1338(u)-(b) and 1367. Defendants also admit that venue is proper in law. Defendants law. Defendants deny that

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FACTS
5. 5. 6. 6. 7. 7. 8. 8. Defendants information Defendants lack sufficient information to form a belief as to the truth of the

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allegations paragraph therefore 22 allegations of paragraph 5, and therefore deny the same. 23 23 Defendants information of Defendants lack sufficient information to form a belief as to the truth of the

24 allegations of paragraph6, and therefore deny the same. allegations of paragraph 6, therefore 25 Defendants sufficient information Defendants lack sufficient information to form a belief as to the truth of the

26 allegations of paragraphT, and therefore deny the same. allegations paragraph 7, therefore 27 Defendants information Defendants lack sufficient information to form a belief as to the truth of the
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28 allegations of paragraph 8, and therefore deny the same. allegations of paragraph therefore
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ANSWER COMPLAINT ANSWER TO COMPLAINT

Case 2:12-cv-09893-ABC-PJW Document 56

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9. 9. 10. 10. 11. 11.

Defendants sufficient information of Defendants lack sufficient information to form a belief as to the truth of the

2 allegations of paragraph9, and therefore deny the same. allegations paragraph 9, therefore

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Defendants sufficient information Defendants lack sufficient information to form a belief as to the truth of the

allegations paragraph therefore 4 allegations of paragraph 10, and therefore deny the same. 5 5 Defendants common trademark ownership Defendants deny that Plaintiff has common law trademark ownership rights

6 nationwide Plaintiffs marks in 6 that extend nationwide or that Plaintiffls alleged marks are strong and well-known in the 7 Angeles area. Defendants sufficient information 7 Los Angeles area. Defendants lack sufficient information to form a belief as to the truth 8 8 9 of remaining allegations paragraph therefore of the remaining allegations of paragraph 10, and therefore deny the same. 12. 12. Defendants prominence in Defendants deny that Plaintiff has achieved prominence in the Los Angeles

10 beauty services. Defendants sufficient information 10 area for its expertise in beauty services. Defendants lack sufficient information to form a 11 11 belief as to the truth of the remaining allegations of paragraph t2, and therefore deny the remaining allegations paragraph 12, therefore 13. 13. 14. 14. 15. 15.

12 same. I2 same 13 13 Defendants information Defendants lack sufficient information to form a belief as to the truth of the

14 allegations paragraph therefore t4 allegations of paragraph 13, and therefore deny the same. 15 15 Defendants sufficient information Defendants lack sufficient information to form a belief as to the truth of the

16 allegations of paragraph 14, therefore t6 allegations of paragraph14, and therefore deny the same. 17 I7 18 18 19 T9
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+ Defendants Inc. Defendants admit that Boldface Group, Inc, and Boldface Licensing *

Branding companies participate industry. Except Branding are companies that participate in the beauty industry. Except as expressly admitted, Defendants allegations paragraph 15. admitted, Defendants deny the remaining allegations of paragraph 15. 16. 16. Defendants Boldface Defendants admit that on June 6, 2012, Boldface issued a press release,

21 available website located www.boldfacegroup.com. 2I which is available on its website located at www.boldfacegroup.com. The press release Defendants allegations 22 is a document that speaks for itself and Defendants deny any allegations inconsistent with 23 Defendants remainder of allegations paragraph 16. 23 it. Defendants deny the remainder of the allegations of paragraph 16. 24 17. 17. 18. 18. Defendants information Defendants lack sufficient information to form a belief as to the truth of the

allegations paragraph therefore 25 allegations of paragraph 17, and therefore deny the same. 26 Defendants 26,2012, Nicole Defendants admit that on August 26,z\Iz,Nicole Ostoya, the CEO and co-

Keeping Up 27 founder of Boldface Licensing + Branding, appeared on Keeping Up with the Licensing + 28 Kardashiqns and discussed the launch of the KHROMA BEAUTY BY KOURTNEY Kardashians launch BEAUTY KOURTNEY
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ANSWER COMPLAINT ANSWER TO COMPLAINT

Case 2:12-cv-09893-ABC-PJW Document 56

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1 KIM AND KHLOE. Defendants admit fhat a copy of a clip from the August 26,2012 KHLOE. Defendants that 26, 2012

episode of Keeping Up Kardashians available website 2 episode of Keeping Up with the Kardashans is available on its website located at 3 www.boldfacegroup.com. J www.boldfacegroup.com, and state that the video remainder allegations paragraph 18. 4 the remainder of the allegations of paragraph 18. 5 5 19. 19. Defendants sufficient information Defendants lack sufficient information to form a belief as to the truth of the
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itself. clip speaks for itself. Defendants deny

6 allegation in 26,2012 episode Keeping Up 6 allegation that, in the weeks that followed the August 26,2012 episode of Keeping Up 7 Kardashians, Lisa 7 with the Kardashians,Lisa Casino and Michael Rey 8 I

III began to receive concerned and III began concerned

worried communications from their clients, employees, and potential licensing partners in communications employees,

9 regard to the launch of the KHROMA BEAUTY products, and therefore deny that launch of KHROMA products, therefore 10 allegation. Defendants remaining allegations paragraph 19. 10 allegation. Defendants deny the remaining allegations of paragraph 19. 11 11 20. Defendants lack sufficient information to form a belief as to the truth of the sufficient information 20. Defendants 21. Defendants lack sufficient information to form a belief as to the truth of the information 21. Defendants 22. 22. 23. 23.

12 allegations paragraph 20, therefore t2 allegations of paragrcph2\, and therefore deny the same. 13 13

14 allegations paragraph 21, therefore I4 allegations of paragraph2I, and therefore deny the same. 15 15 Defendants sufficient information Defendants lack sufficient information to form a belief as to the truth of the

16 allegations of paragraph 22, therefore t6 allegations of paragraph2L, and therefore deny the same. 17 I7 Defendants website, Defendants admit that Plaintiff posted a letter on its website, and state that itself. information as for itself. Defendants lack sufficient information to form a belief as

18 document 18 the document speaks 24. 24.

19 of allegations paragraph 23, therefore I9 to the truth of the allegations of paragraph23, and therefore deny the same.
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Defendants Defendants admit that Plaintiff sent a cease and desist letter, and state that itself. Defendants and aII allegations for itself. Defendants deny any and all allegations inconsistent with the

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22 letter.

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25. Defendants admit that counsel for Boldface responded to Plaintiffs letter and responded 25. Defendants

24 that a telephone conversation followed on November 6,2012. Defendants deny all other November 6,2012. Defendants that atelephone conversation 25 allegations paragraph 25. 25 allegations of paragruph 25 . 26 26. Defendants admit that a response was sent to the cease and desist letter, that 26. Defendants admit that aresponse

27 a telephone conversation occurred on or about November 6,2012, and that the telephone telephone conversation occurred November 6,2012, telephone
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ANSWER COMPLAINT ANSWER TO COMPLAINT

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1 call did not resolve the parties' dispute. Defendants deny the remaining allegations of parties' dispute. remaining allegations 27. 27.

2 paragraph 26. paragraph

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Defendants conversations throughout Defendants admit that the parties held several conversations throughout

November resolution dispute. Defendants 4 November about a potential resolution to this dispute. Defendants deny the remaining
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allegations paragraph 27. allegations of paragraph 27 . 28. Defendants admit that as of November 14,2012, customers had purchased November 14,2012, customers purchased 28. Defendants

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7 KHROMA BEAUTY products California, including 7 KHROMA BEAUTY products in Ulta stores in Southern California, including the Los 8 8 Angeles products mascaras, Angeles area, and that those products could include false eyelashes, mascaras, overall

9 face palette eyeliners, sets. Defendants admit that these KHROMA 9 facepalette kits, eyeliners, and lip sets. Defendants also admitthatthese KHROMA 10 BEAUTY products are www.uIta.com, www.sears.com, 10 BEAUTY products are available online though www.ulta.com, www.sears.com, and 11 11 www.amazon.com. Defendants sufficient information www.amazon.com. Defendants lack sufficient information to form a belief as to the truth 29. 29.

12 remaining allegations paragraph 28, therefore t2 of the remaining allegations of paragraph2S, and therefore deny the same. 13 13 Defendants unresponsive Plaintiff s Defendants deny that Boldface has been unresponsive to Plaintiff s

14 communications. Defendants requested stemming t4 communications. Defendants admit that Plaintiff has requested relief stemming from 15 allegations 15 allegations 30. 30. infringement of infringement and unfair business practices, but denies that those allegations

16 merit. Defendants allegations paragraph 29. r6 have merit. Defendants deny the remaining allegations of paragraphL9. 17 t7 allegations paragraph response. The allegations of paragraph 30 do not require a response. To the extent a foregoing answers foregoing answers into each count

18 response required, Defendant 18 response is required, Defendant incorporates the 19 l9 below.

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COUNT COUNT ONE

Trademark Infringement Trademark Infrinsement 31. 31. 32. 32. 33. 33. Answering paragraph Defendants incorporate reference Answeringparagraph 31, Defendants incorporate by reference all of the

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answers preceding paragraphs 23 answers in the preceding paragraphs as though fully set forth herein.
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Defendants allegations of paragraph 32. Defendants deny the allegations of paragraph32. Defendants BEAUTY Defendants admit that the KHROMA BEAUTY mark has already attracted

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26 global attention. Except as expressly admitted herein, Defendants deny the remaining attention. Except admitted herein, Defendants 27 allegations of paragraph 33. allegations paragraph 28 34. 34. Defendants allegations of paragraph 34. Defendants deny the allegations of paragraph34.
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COMPLAINT ANSWER TO COMPLAINT

Case 2:12-cv-09893-ABC-PJW Document 56

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35. 35. 36. 36. 37. 37.

Defendants allegations paragraph 35. Defendants deny the allegations of paragraph 35. Defendants allegations paragraph 36. Defendants deny the allegations of paragraph36. Defendants sufficient information of Defendants lack sufficient information to form a belief as to the truth of the

allegations Plaintiff exercise 4 allegations that Plaintiff s clients exercise a high degree of care in choosing their beauty 5 5 products, Plaintiff employees products, and that Plaintiff s employees exercise a high degree of care in assisting clients

6 choosing products, therefore same. Defendants 6 in choosing beauty products, and therefore deny the same. Defendants deny the 7 allegations paragraph 37. 7 remaining allegations of paragraph 37 . 8 8 38. 38. Defendants sufficient information Defendants lack sufficient information and belief to answer the allegation

9 that Plaintiff has been planning a major expansion effort for its products, and therefore planning amajor expansion its products, 10 same. Defendants remaining allegations of paragraph 10 deny the same. Defendants deny the remaining allegations of paragraph 38. 11 11 12 t2 13 13 14 t4 15 15 39. 39. 40. 40. Defendants allegations of paragraph 39. Defendants deny the allegations of paragraph39. Defendants allegations of paragraph 40. Defendants deny the allegations of paragraph 40. COUNT TWO COUNT TWO Competition Unfair Competition under California Law 41. Answering paragraph 41, Defendants incorporate by reference all of the 4I. Answering paragraph4l, Defendants incorporate reference 42. 42. 43. 43. 44. 44. 45. 45. 46. 46. 47. 47.

16 preceding paragraphs though t6 answers in the preceding paragraphs as though fully set forth herein. 17 t7 18 18 19 I9
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Defendants allegations paragraph Defendants admit the allegations of paragraph 42. Defendants allegations paragraph Defendants admit the allegations of paragraph 43. Defendants allegations paragraph Defendants deny the allegations of paragraph 44. Defendants allegations paragraph Defendants deny the allegations of paragraph 45. Defendants allegations paragraph Defendants deny the allegations of paragraph 46. allegation paragraph Plaintiff request a jury The allegation in paragraph 47 is Plaintiff s request for a jury trial and does

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23 response. required, Defendant 23 not require a response. To the extent a response is required, Defendant denies that 24 Plaintiff is entitled to the relief requested therein. therein.
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ANSWER COMPLAINT ANSWER TO COMPLAINT

Case 2:12-cv-09893-ABC-PJW Document 56

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AFFIRMATIVE DEFENSES AFFIRMATIVE DEFENSES FIRST FIRST AFFIRMATIVE

1. 1.
DEF'ENSE DEFENSE

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(Failure State Claim Relief) (Failure to State a Claim for Relief)

Plaintiff Complaint, alleged, Plaintiff s Complaint, and each claim for relief alleged, fails to state facts

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sufficient constitute Defendants. sufficient to constitute a claim for relief against Defendants.

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SECOND AFFIRMATIVE DEFENSE SECOND AFFIRMATIVE DEF'ENSE

(No Protectable Mark) Protectable Mark) Plaintiff s because "Chroma" Plaintiffls claims are barred, in whole or part, because the term "Chtoma" is

9 generic secondary meaning acquired 9 generic or, at most descriptive with no secondary meaning and has not acquired atmost descriptive 10 10 distinctiveness. Therefore, "Chroma" protectable distinctiveness. Therefore, the term "Chroma" is not a protectable mark under the Lanham common Lanham Act or common law.

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THIRD AFFIRMATIVE DEFENSE THIRD AF'FIRMATIVE DEFENSE

(Abandonment) (Abandonment)
3. 3. Plaintiff s whole Plaintiffls claims are barred, in whole or part, by the doctrine of

abandonment. abandonment.

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ATIVE DEFENSE FOURTH FOURTH AFFIRMATIVE DEF'ENSE

(Waiver) (Waiver)
Plaintiffs Plaintiff s claims are barred, in whole or part, by the doctrine of waiver.

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FIFTH AFFIRMATIVE DEFENSE FIFTH AFFIRMATIVE DEFENSE

(Estoppel) (Estoppel)

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Plaintiff Plaintiff s claims are barred, in whole or part, by the doctrine of estoppel.

SIXTH AFFIRMATIVE DEFENSE SIXTH AFFIRMATIVE DEFENSE

(Acquiescence) (Acquiescence)

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6. 6.

Plaintiffs Plaintifs claims are barred, in whole or part, by the doctrine of

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SEVENTH AFFIRMATIVE DEFENSE SEVENTH AFFIRMATIVE DEFENSE (Laches) (Laches)

7. 7 Plaintiff laches. Plaintiff s claims are barred, in whole or part, by the doctrine of laches
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ANSWER TO COMPLAINT COMPLAINT

Case 2:12-cv-09893-ABC-PJW Document 56

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AFFIRMATIVE DEFENSE EIGHTH AFFIRMATIVE DEFENSE

(Fair Use)
8. 8. Plaintiffs because Plaintiff s claims are barred, in whole or part, because Defendants use of

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"khroma" otherwise permissible 4 the term "khroma" is a fair use, or otherwise constitutes permissible and good faith use 5 5
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other than as a trademark.

AFFIRMATIVE DEFENSE NINTH AFFIRMATIVE DEFENSE Causation (No Causation of Injury)

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Plaintiffs whole because Boldface's Plaintiff s claims are barred, in whole or part, because Boldface's alleged

9 conduct is not the cause of any injuries or damages allegedly suffered by Plaintiff. conduct injuries suffered Plaintiff. 10 10
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ELEVENTH AFFIRMATIVE DEFENSE ELEVENTH AFFIRMATIVE DEF'ENSE Mitigation Damages) (No Mitigation of Damages) 10. 10.
parI, because it Plaintiff whole Plaintiff s claims are barred, in whole or part, because it has failed to

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mitigate mitigate any alleged damages. RESERVATION RIGHTS DEFENSES RESERVATION OF RIGHTS AND DEF'ENSES 11. 11. it becomes Boldface reserves the right to raise additional defenses as it becomes aware

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BOLDFACE'S PRAYER FOR RE RELIEF WHEREFORE, prays WHEREFORE, Boldface prays for relief as follows: 1. 1. 2. 2. 3. 3. nothing Complaint That Plaintiff take nothing by way of the Complaint and the Court dismiss

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20 this action with prejudice;

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judgment Defendant prevailing That the Court enter judgment that Defendant Boldface is the prevailing

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That the Court award Boldface all costs, expenses, and attorneys' fees that it Boldface expenses, attorneys'

under applicable 24 is entitled to under applicable law; and 25 III 25 ilt 26 III 26 ilt 27 III 27 ilt
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ANSWER TO COMPLAINT ANSWER TO COMPLAINT

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That the Court award and other relief which Boldface may That the Court award any and all other relief to which Boldface may be

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DATED: December 4 DATED: December 28, 2012 5 5

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28,2012

GREENBERG TRAURIG, LLP GREENBERG TRAURIG, LLP

By:

lsi Wendy M Mantell /s/ Wendv M. Mantell Susan Heller Susan L. Heller 'Wendy Wendy M. Mantell Mantell

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Nina Boyajian Nina D. Boyajian Attorneys for BOLDFACE GROUP, fNC., BOLDFACE GROUP, INC., Attorneys BOLDF ACE Licensing + Branding BOLDFACE Licensing * Branding

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ANSWER TO COMPLAINT ANSWER TO COMPLAINT