Case3:15-cv-03227-JCS Document1 Filed07/10/15 Page1 of 9

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J. CURTIS EDMONDSON (CA SBN 236105)

LAW OFFICES OF J. CURTIS EDMONDSON
VENTURE COMMERCE CENTER
3699 NW John Olsen PL.
Hillsboro, OR 97124
Ph:(503) 336-3749
Fax: (503) 428-7418
Email: jcednondson@edmolaw.com

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UNITED STATES DISTRICT COURT

NORTHERN DISTRICT OF CALIFORNIA

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Case No.:

PRECISION GLASSWORKS, INC., an

Oregon Corporation,
Plaintiff,
v.
BIG ALS aka BIG ALS SMOKE AND
GIFT SHOP dba ZAHAVA GIFT SHOP, an
unknown California business entity; ALI
GHANNAM, an individual; and, SAM
GHANNAM, an individual.
Defendants

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COMPLAINT
Trademark Infringement
(15 U.S.C. 1051 et seq.);
Copyright Infringement
(17 USC 101 et seq);
False Advertisement
(Cal Bus & Prof Code 17500 et seq)
Unfair Competition
(Cal Bus & Prof Code 17200 et seq)
Counterfeiting
(Cal Bus & Prof Code 14245 et seq)
DEMAND FOR JURY TRIAL

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PARTIES
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1. Plaintiff Precision Glassworks, Inc., (PRECISION), an Oregon Corporation with all of

its operations centered in the County of Multnomah, State of Oregon, United States.
2. Defendant, an unknown California business entity doing business as BIG ALS which

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operates both an online retail website, and brick and mortar stores located in Berkeley, California
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COMPLAINT - 1

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which is within this district. The Alameda County Recorder reports no entries for Big Als in
its database. Moreover, the business name is not registered with the city of Berkeley.

3. Ali Ghannam and Sam Ghannam, was at all times pertinent to this complaint, the owners
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and operators of BIG ALS and directed the intentional and tortious conduct of their business

entities, including, but not limited to, the infringement at issue.

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JURISDICTION AND VENUE

4. Plaintiff brings this action under the Lanham Act, 15 U.S.C. 1051, et seq. and the

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Copyright Act 17 U.S.C. 101 et seq.

5. This court has jurisdiction pursuant to the following statutes:
a. 28 U.S.C. 1331, which gives district courts original jurisdiction over civil

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actions arising under the Constitution, laws or treaties of the United States;

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b. 28 U.S.C. 1367, which gives the district courts supplemental jurisdiction over
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state law claims.

6. Venue is proper under 28 U.S.C. 1391 (b) and (c) because substantial part of the
events giving rise to the claims occurred in this district. Further, defendants have physical
business presence in this jurisdiction.

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INTRODUCTION

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7. PRECISION is an Oregon Corporation which manufactures and sells high-quality

glassware.

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8. Precisions Owner, David Goldstein (Goldstein), is known throughout the industry for
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his state of the art designs for high-end premium glassware that assists smoking or vaporizing
tobacco, medical marijuana, and other legal inhalants.

COMPLAINT - 2

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9. In four states: Colorado, Washington, Oregon, and Alaska, recreational use of marijuana
is permitted. More importantly, in many other states, including California, medical marijuana is

an increasingly viable treatment for many chronic conditions. As a result, the demand for high4
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quality glassware to deliver medically active ingredients ingredient has grown significantly.

10. Goldsteins interest in fritted disc technology drove him to develop a process for creating

the ideal fritted disc. After achieving promising results, Goldstein began integrating fritted discs

into his product, becoming the first in the industry to employ such technology. Goldstein has

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been awarded a United States Patent 8,973,585 in connection with technology for devices needed

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to ingest the active ingredients of medical marijuana, as well as other tobacco, and clove

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products.

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11. The embodiment of this technology has been marketed, and is well known throughout the

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industry as the Rooster style pipe (Rooster).

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12. As a result of Goldsteins innovation, Precision was the first in the industry to employ

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such technology, and is now one of the most well-known suppliers of high-end fritted disc

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glassware used in the consumption of tobacco, clove, and traditional middle-eastern flavored

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tobaccos. Moreover, Precision is well known in the industry as the only manufacturer and

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supplier of the Rooster.

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13. Precision has been manufacturing the Rooster and other contemporary smoking and

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vaporizing accessories since 2011. Goldstein is the owner of Precision and invented the

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technique used to manufacture the Rooster.

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14. The Rooster image was created for and assigned to Goldstein at Precision. This image
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has been used exclusively on fritted Precision product and trade materials since associated
therewith since 2011, and associated trade materials since 2000.

COMPLAINT - 3

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15. Pursuant to 15 U.S.C. 1051 et seq. Goldstein registered the Rooster mark with the
U.S. Patent and Trademark Office on August 14, 2012. U.S. Trademark Serial Number

85,597,566 (the 566 mark). Subsequently, all rights of use of the Rooster mark were assigned
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to Precision. The mark has been in continuous use since the date it was registered on various

Precision products.

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16. PRECISIONs primary marketing method consists of direct manufacturer to retailer sales
at various tradeshows, most notably, the Champs Counter Culture tradeshows (CHAMPS) in

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Atlantic City, NJ, Denver, CO, and Las Vegas, NV and the American Glass Exposition(AGE)

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in Las Vegas, NV, Denver, CO, and Baltimore, MD. The two CHAMPS shows and AGE

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account for the majority of Precisions sales throughout the year. The remaining sales are made

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up at various direct manufacturer to consumer trade shows, other trade publications, and

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reputational sales.
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17. Rooster has considerable brand recognition to the consuming public.

18. Except for limited use in promotional materials, Precision has never licensed the use of
its copyrighted Rooster image to any third party for their private sale, distribution, or
manufacturing purposes.

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19. Except for limited use in promotional materials, Precision has never licensed the use of
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its the Rooster mark to any party for their private sale or distribution.

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20. Sometime on or around September 2013, defendant, Big Als, began to offer for sale,

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glass product with a similar design, style, and overall appearance of Precisions Rooster products

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in violation of 15 U.S.C. 1051 et seq.

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21. The distribution and sale of counterfeit Rooster product for a significantly reduced price
has limited Precisions market share. Furthermore, Big Als has profited from its distribution and

COMPLAINT - 4

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sale of counterfeit Rooster product. Finally, Precision has been required to pay for the costs of
this litigation.

22. On or around February, 2015 Goldstein received notice from an industry source, Rajinesh
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Padarath (Padarath), informing him that Roosters were being sold at Big Als.

23. Goldstein had not sold the product in question to Big Als in over two years. Moreover,

other source identifiers suggested the product was counterfeit. Goldstein verified through photo

evidence that Precision did not manufacture the product.

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24. Goldstein requested that Padarath purchase the product. Pradarath purchased the product

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on April 1, 2015, and mailed it directly to Goldstein. Pradarath provided a purchase receipt, and

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photographic evidence of his purchase from Big Als. The receipt shows a purchase price of

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$300.00 plus an additional $27.00 of state sales tax.

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25. Based on the physical evidence, Goldstein determined that Precision had not
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manufactured the product bearing the Rooster image and mark purchased at Big Als.
COUNT I
TRADEMARK INFRINGEMENT

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26. Precision repeats and realleges each of the allegations set forth in paragraphs 1 through
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27. Precision is the owner of U.S. Trademark Serial Number 85/507,566 Rooster Mark.
28. Precision has placed the Rooster Mark on its water-cooled pipes in such a manner that the

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consuming public has come to associate the Rooster image with the high quality fritted disk

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water-cooled pipe. The Rooster Mark is prominently displayed on the water-cooled pipe and on

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Precisions advertising materials.

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COMPLAINT - 5

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29. Defendants distributed, offered for sale, and sold products bearing the Rooster Mark
without authorization which were not purchased from Precision the only licensed wholesaler of

Rooster product in violation of Precisions right to exclusive use of the Rooster mark.
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30. Defendants acted willfully to distribute, offer for sale, and sell product bearing the 566
mark, and as such, their actions cause a likelihood of confusion.
31. By reason of the foregoing, Plaintiff has been infringed in an amount as yet to be
determined and is entitled to the remedies as provided for in 15 U.S.C. 1051 et seq.

COUNT II
COPYRIGHT INFRINGEMENT

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32. Precision repeats and realleges each of the allegations set forth in paragraphs 1 through
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33, and the same incorporated herein by reference.

33. Precision is the owner of the Rooster Image and has placed this image on its water-cooled
pipes which are distributed throughout the United States. The Rooster Image is copyrightable
subject matter that

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34. Defendants distributed, offered for sale, and sold products bearing the a replica of the
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Rooster Image; Precision has not licensed the Rooster Image to Defendants nor has authorized

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35. Defendants acted willfully to distribute, offer for sale, and sold product bearing the

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copyright protected Rooster Image which were not purchased from a licensed source.
36. By reason of the foregoing, Plaintiff has been infringed in an amount as yet to be

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determined and is entitled to the remedies provided for by 17 U.S.C. 101 et seq.

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COMPLAINT - 6

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COUNT III
UNFAIR COMPETITION

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37. Precision repeats and realleges each of the allegations set forth in paragraphs 1 through
38, and the same incorporated herein by reference.
38. Defendants distributed, sold, and/or offered for sale Rooster product at a price that is

below cost by selling inauthentic Rooster product.

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39. Defendants purpose was to injure competitors or destroy competition for competitors
selling legitimate goods.
40. As a result of Defendants below cost sales, Precision was harmed in an as yet to be

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determined amount and is entitled to the remedies permitted under Cal. Civ. Code 17200 et seq.
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41. By reason of the foregoing, Defendants conduct was a substantial factor which caused
Plaintiffs harm.

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COUNT IV
FALSE ADVERTISING

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42. Precision repeats and realleges each of the allegations set forth in paragraphs 1 through
43, and the same incorporated herein by reference,
43. Defendants displayed, sold, stated, and held out to consumers that the unlicensed product

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it distributed, offered for sale, and/or sold was authentic Rooster product.
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44. Defendants displays, sales, statements, and holding out to consumers that the unlicensed

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product it distributed, offered for sale, and/or sold was authentic Rooster product was material to

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its business and intended to deceive consumers.

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45. As a result of Defendants displays, sales, statements, and holding out to consumers that
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the unlicensed product was authentic Rooster product, Precision was harmed in an as yet to be
determined amount and is entitled to the remedies permitted under Cal. Civ. Code 17500 et seq.

COMPLAINT - 7

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COUNT IV
COUNTERFEITING

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46. Precision repeats and realleges each of the allegations set forth in paragraphs 1 through
45, and the same incorporated herein by reference,
47. Defendants displayed, sold, stated, and held out to consumers that the unlicensed product

it distributed, offered for sale, and/or sold was authentic Rooster product.
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48. Defendants displays, sales, statements, and holding out to consumers that the unlicensed

product it distributed, offered for sale, and/or sold was authentic Rooster product was material to

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its business and intended to deceive consumers.

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49. As a result of Defendants displays, sales, statements, and holding out to consumers that
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the unlicensed product was authentic Rooster product, Precision was harmed in an as yet to be
determined amount and is entitled to the remedies permitted under Cal. Civ. Code 14245 et seq.

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PRAYER FOR RELIEF

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WHEREFORE, Plaintiff requests that this Court enter judgment in favor of Goldstein and
against Defendants providing the following relief:

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ON ALL COUNTS

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(a) Compensatory damages in the amount of one-hundred twenty-six thousand dollars

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($126,000.00), or whatever amount deemed reasonable by this court, exclusive of costs and

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interest, that Plaintiff is found to be entitled;

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(b) Punitive damages against Defendants in whatever amount, exclusive of costs and interest,

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that the Plaintiff is found to be entitled;

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(c) Triple the amount of damages as determined by this Court in paragraphs (a) and (b), that
the Plaintiff is entitled to under 15 U.S.C. 1117;

COMPLAINT - 8

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(d) An order permanently enjoining the Defendant from further acts of manufacturing,
selling, importing, and/or distributing of counterfeit Rooster and/or PGI goods;

(e) An order requiring the Defendant permanently destroy all counterfeit Rooster and/or PGI
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goods in defendants possession;

(f) An order requiring Defendant to immediately remove all Rooster and/or PGI goods
displayed on its website, Instagram, Facebook, and any other form of social media or internet
forum that Defendant controls, monitors, mediates, or hosts.

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(g) An award of interest, costs, and reasonable attorneys fees;

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(h) Any and all other remedies provided pursuant to 15 U.S.C. 1117.

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(i) Any and all other appropriate nondiscriminatory measures to overcome the above

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described violations;

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(j) Such other and further relief as the Court deems appropriate
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Submitted this 10th day of July, 2015.

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LAW OFFICES OF J. CURTIS EDMONDSON

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/x/ J. Curtis Edmondson

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________________________________
J. Curtis Edmondson, P.E. attorney for
Plaintiff Precision Glassworks, Inc.

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COMPLAINT - 9