Warm v. Innermost - Complaint

Case 2:21-cv-04402-MWF-SHK Document 82 Filed 03/26/22 Page 1 of 40 Page ID #:1796
ERIKSON LAW GROUP

1 David Alden Erikson (SBN 189838)
Antoinette Waller (SBN 152895)
2 S. Ryan Patterson (SBN 279474)
200 North Larchmont Boulevard
3 Los Angeles, California 90004
Telephone: 323.465.3100
4 Facsimile: 323.465.3177
5 Attorneys for Plaintiffs Corinna Warm and

Studio Warm LLC
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UNITED STATES DISTRICT COURT
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CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION
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CORINNA WARM, an individual; and Case No. 2:21-cv-04402 MWF (SHKx)
11 STUDIO WARM LLC, a California
limited liability company. Hon. Michael W. Fitzgerald
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Plaintiffs, FIRST AMENDED COMPLAINT
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v. DEMAND FOR JURY TRIAL
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INNERMOST LIMITED;
15 LIGHTFORM CANADA INC.; IM
DESIGN CONCEPTS LLC, a Florida
16 limited liability company; Archetype
Lighting Sales, LLC, a California
17 limited liability company; Light Build
Design, Inc., a California corporation;
18 and DOES 1-8, inclusive,
19 Defendants.
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Plaintiffs Corinna Warm (“Ms. Warm”), and Studio Warm LLC, (“Studio
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Warm” and with Ms. Warm, collectively, “Warm” or “Plaintiffs”) bring this action
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against Defendants Innermost Limited (“Innermost”), IM Design Concepts LLC
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(“IMDC”), LightForm Canada Inc. (“LightForm”), Archetype Lighting Sales, LLC
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(“Archetype”), Light Build Design, Inc. (“LBD”) and Does 1-8 (Innermost, IMDC,
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LightForm, Archetype, LBD, and Does 1-8, collectively, “Defendants”).
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FIRST AMENDED COMPLAINT

1 INTRODUCTION
2 1. This action arises from Defendants’ intentional, willful, and continuing
3 creation and exploitation of unauthorized replicas and reproductions of Plaintiffs’
4 original designs and intellectual property, and Defendants’ usurpation and misuse of
5 Ms. Warm’s name and persona in passing off Defendants’ goods as Plaintiffs’ work.
6 By this action, Plaintiffs seek preliminary and permanent injunctive relief,
7 compensatory damages in an amount to be determined at trial, treble damages, and
8 attorneys’ fees for Defendants’ copyright and trademark violations and Defendants’
9 misappropriation and unauthorized use of Ms. Warm’s name and likeness, together
10 with remedies for related common law and statutory claims for deceptive practices
11 and unfair competition.
12 JURISDICTION AND VENUE

13 2. Plaintiffs bring this action for copyright infringement (17 U.S.C. Section
14 101, et seq.), violation of the Lanham Act (15 U.S.C. Section 1051, et seq.), unfair
15 competition, violations of the right of publicity under California law, and common
16 law claims.
17 3. This Court has original subject matter jurisdiction over this action and
18 the claims asserted herein, pursuant to 28 U.S.C. Section 1331 (“federal question
19 jurisdiction”) and 1338(a)-(b) (“patent, copyright, trademark and unfair competition
20 jurisdiction”) in that this action arises under the laws of the United States and, more
21 specifically, Acts of Congress relating to patents, copyrights, trademarks, and unfair
22 competition. This Court has subject matter jurisdiction over the state law claims
23 pursuant to 28 U.S.C. Section 1367(a) in that they are so related to the federal law
24 intellectual property claims in the action that they form part of the same case or
25 controversy under Article III of the United States Constitution.
26 4. Venue is proper in this District pursuant to 28 U.S.C. Section 1391(b)(1)-

27 (3) because a substantial part of the events or omissions giving rise to the claims
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28 occurred in this District in that, inter alia, Defendants offer the designs in question for
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2 FIRST AMENDED COMPLAINT
1 sale in this District. Defendants also transact business in this District, including, inter
2 alia, by selling and marketing their products in this District and throughout California.
3 5. Each of the Defendants is subject to the personal jurisdiction of the Court

4 because they do or transact business in, have agents in, or are otherwise found in and
5 have purposely availed themselves of the privilege of doing business in California and
6 in this District, and because the alleged misconduct was directed to California and this
7 district.
8 THE PARTIES
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6. Plaintiff Corinna Warm is an individual residing in Los Angeles,
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California.
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7. Plaintiff Studio Warm LLC is a California limited liability company,
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with its principal place of business located in Santa Monica, California. Plaintiff
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Studio Warm was originally founded in London and operates out of London and Los
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Angeles.
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8. Defendant Innermost Limited is a company registered in the United
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Kingdom and Wales. Plaintiffs are informed and believe and thereon allege that
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Innermost’s parent company is Innermost Holdings PTY Ltd., a company registered
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in Hong Kong. According to its United States website, www.innermost.us, Innermost
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is “a British design brand, founded by Steve Jones and Russell Cameron in London,
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and working with designers from all over the world.” Innermost states (and Plaintiffs
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allege) that it operates in the United States, “[w]orking closely with our first-class US
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representatives, IM Design Concepts.” Innermost sells its products throughout the
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United States and in California and offers the infringing designs for sale in California.
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In addition, Innermost consciously and purposefully directs its marketing activity to
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exploit the California market.
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9. Defendant IM Design Concepts LLC (“IMDC”) is a Florida limited
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liability company, with its principal place of business located in Tampa, Florida.
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1 Plaintiffs are informed and believe and thereon allege that IMDC was originally
2 formed as a Connecticut limited liability company and later converted in or about
3 January 2020 into a Florida limited liability company. IMDC sells its products
4 throughout the United States and in California and offers the infringing designs for
5 sale in California. In addition, IMDC consciously and purposefully directs its
6 marketing activity to exploit the California market.
7 10. Defendant LightForm Canada Inc. (“LightForm”) is a company of

8 unknown organization, headquartered in Canada. LightForm sells its products
9 throughout the United States and in California and offers the infringing designs for
10 sale in California. In addition, LightForm consciously and purposefully directs its
11 marketing activity to exploit the California market.
12 11. Defendant Archetype Lighting Sales, LLC (“Archetype”) is a California

13 limited liability company. Upon information and belief Archetype sells its products in
14 California and offers the infringing designs for sale in California, including on its
15 website, archetypelighting.com.
16 12. Defendant Light Build Design, Inc. (“LBD”) is a California corporation.

17 Upon information and belief LBD sells its products in California and offers the
18 infringing designs for sale in California, including on its website,
19 lightbuilddesign.com.
20 13. Plaintiffs are ignorant of the true names and capacities of the Defendants
21 sued herein as Does 1-8, inclusive, and therefore sues said Defendants by such
22 fictitious names. Plaintiffs will amend this Complaint to allege the true names and
23 capacities when the same has been ascertained. On information and belief, each
24 fictitiously named Defendant is responsible in some manner for the occurrences
25 herein alleged, and that Plaintiffs’ damages as herein alleged were proximately caused
26 by their conduct.
27 14. Each of the Defendants acted as an agent for each of the other
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28 Defendants in doing the acts alleged, and each Defendant ratified and otherwise
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1 adopted the acts and statements performed, made, or carried out by the other
2 Defendants to make them directly and vicariously liable to Plaintiffs for the conduct
3 complained of herein.
4 GENERAL ALLEGATIONS
5 A. Studio Warm’s founder, Corinna Warm, is an acclaimed artisan and
6 designer.
7 15. Studio Warm’s founder and creative director, Corinna Warm, is the
8 designer and manufacturer of distinctive high-end furniture and decorative objects.
9 Ms. Warm is renowned for her works of timeless elegance, often balanced with a
10 sculptural aesthetic. Her work has been presented in exhibitions in New York, Hong
11 Kong, Stockholm, Paris, Milan, and Los Angeles, and has been lauded in the national
12 and international press. Ms. Warm started her studio in 2007—and it has since grown
13 into a boutique design practice working on a diverse mix of projects across disciplines
14 and continues to design and distribute its own collection.
15 16. A graduate of London’s prestigious Central Saint Martins College of Art

16 and Design, Ms. Warm worked with the “Who’s Who” in avant-garde design in Milan
17 and London before spending three years designing for royal cabinet maker David
18 Linley, where she was exposed to the fundamentals of traditional cabinet making and
19 classical furniture design and production—a turning point in her career that
20 fundamentally changed her focus and design sensibility, instilling a love of natural
21 materials and well crafted, long-lasting design.
22 17. Ms. Warm previously worked as an interior design consultant on luxury

23 developments across London, and later moved into high-end retail design, working
24 with some of London’s most creative retail and branding agencies. She founded her
25 studio in 2008, following the successful launch of her brand Warm during the London
26 Design Festival in 2007. Ms. Warm’s collection of contemporary furniture,
27 traditionally crafted to the highest standard, was launched at a time when the designer
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1 maker/crafts movement was still in its infancy and was lauded by industry experts for
2 its high quality and “contemporary-classic” design.
3 18. Warm’s designs have launched at the most important annual trade shows,
4 including Maison & Objet in Paris, Furniture & Light Fair in Stockholm, Euroluce at
5 Salone del Mobile in Milan and ICFF in New York. Ms. Warm’s designs, including
6 the Circus collection of pendant and wall lights and the Glaze lighting line have
7 gained global popularity.
8 19. Ms. Warm previously had a licensing relationship with Defendant

9 Innermost. That relationship has ended and Innermost has no right to produce,
10 advertise, sell, market, promote, or otherwise distribute any of Ms. Warm’s designs or
11 to associate itself in any way with Ms. Warm or Studio Warm.
12 20. Ms. Warm’s Circus and Glaze lighting designs gained immense
13 popularity and have been highly sought after for projects across the globe. These
14 lighting fixtures, examples of which are shown below, are creative works of art.
15 Corinna Warm
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26 Circus Pendant Glaze Pendant

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1 B. Innermost, IMDC, and LightForm, embarked on a bold and ongoing

2 infringement campaign of Warm’s designs.
3 21. Innermost boasts that it respects intellectual property rights—including
4 by warning customers about knockoffs on its website. Innermost’s co-founder, Russell
5 Cameron, even serves on the advisory council of the organization of Anti Copying in
6 Design. And yet Innermost has viciously and willfully copied and infringed Plaintiffs’
7 designs.
8 22. During the parties’ licensing relationship, Ms. Warm’s “Circus” and
9 “Glaze” designs were among Innermost’s most popular products.
10 23. As part of the license agreements between Innermost and Warm,

11 Innermost agreed “to respect Corinna Warm’s rights as the designer to be associated
12 with the work,” and that “All intellectual property rights, copyright and design right
13 shall remain with Corinna Warm.” In addition, Innermost agreed “that it nor of its
14 subsidiary companies will copy or imitate the designs… Or any distinctive feature of
15 the designs or authorize others to do so.”
16 24. Since terminating the contractual relationship with Innermost in 2017,

17 Warm has undertaken to manufacture and sell the Circus and Glaze lines of lighting
18 products on its own and invested significantly in this endeavor.
19 25. Despite having no rights with respect to Warm’s products, Innermost

20 inexplicably sells such products in the United States—and indeed arrogantly and
21 willfully continues to do so to this day despite Warm’s repeated objections. To make
22 matters far worse, Innermost markets its unauthorized products under the same name
23 “Circus” as does Warm (with respect to both pendants and wall lamps). This of course
24 amounts to nothing less than counterfeiting. For example, the marketing materials
25 below appear on Innermost’s website.
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3 26. Innermost has also improperly and similarly continued to exploit Warm’s
4 Glaze designs, as shown in the below images currently displayed on its website.
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12 27. In addition to pendant lights, Innermost has also improperly and similarly
13 continued to exploit Warm’s Circus Wall light design. Innermost’s 2020 brochure
14 features a replica of Warm’s Circus Wall light with a minimal variation to its arm, all
15 other components being identical.
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26 Studio Warm’s Circus Single Wall Innermost’s Circus Wall

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1 28. Despite Warm’s continuing and vociferous protests and objections to

2 these infringing activities, Innermost refuses to cease its wrongful conduct and instead
3 has continued its infringement unabated.
4 29. Ms. Warm’s Circus and Glaze collections are some of Plaintiffs’ most
5 recognized works. Indeed, and as explained in more detail below, the design world
6 and sophisticated buyers and dealers have come to recognize each of the works as
7 originating with Plaintiffs.
8 30. Despite knowing Innermost has no right to market, sell, promote, or

9 distribute Ms. Warm’s designs, and despite knowing of Warm’s objections to
10 marketing, sale, promotion, or distribution of any unauthorized replicas or copies of
11 Warm’s designs, IMDC and LightForm, working both in conjunction with Innermost
12 and on their own, continue to market, sell, and distribute infringing designs, including
13 on their websites, www.imdesignconcepts.com (IMDC) and www.lightformshop.com
14 (LightForm). Defendants have also improperly displayed, marketed, advertised, and
15 sold infringing designs as Ms. Warm’s products, including by LightForm, at the
16 following link: https://www.lightformshop.com/designer-corinna-warm.
17 31. Despite being on notice of Plaintiffs’ protests and objections, Innermost,

18 IMDC, and LightForm continue to exploit Ms. Warm’s designs and persona, and
19 continue to market, promote, sell, and distribute infringing goods. This constitutes
20 willful infringement.
21 C. In May 2018, Defendant IMDC acknowledged that unauthorized replicas

22 of Plaintiffs’ works were IMDC’s best-selling products.
23 32. In May 2018, Frank Fitzgerald, IMDC’s CEO-Manager, attended the HD
24 Expo in Las Vegas, presenting products on behalf of IMDC and Innermost. At the
25 opening of the show Ms. Warm approached Mr. Fitzgerald and told him that the
26 goods IMDC was showing as Corinna Warm designs were not Ms. Warm’s licensed
27 products. In fact, the products purporting to be Corinna Warm licensed designs were
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28 unlicensed and unauthorized knockoffs and counterfeits. Ms. Warm advised Mr.
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1 Fitzgerald that Innermost was not licensed or allowed to show, advertise, or sell
2 Plaintiffs’ products and that the infringing products would have to be immediately
3 taken down.
4 33. Mr. Fitzgerald expressed devastation that he could not show Plaintiffs’
5 Circus or Glaze designs and stated that Circus was his bestselling product. It was
6 apparent that Mr. Fitzgerald had not been informed by Innermost that Innermost was
7 not authorized to sell Plaintiffs’ designs. Mr. Fitzgerald confirmed to Ms. Warm that
8 Mr. Fitzgerald would tell anyone inquiring about Circus or Glaze that the product was
9 designed by Corinna Warm and available from Studio Warm rather than Innermost.
10 Mr. Fitzgerald also confirmed that he would share any contacts seeking Ms. Warm’s
11 designs with Ms. Warm after the show, and he would supply Ms. Warm with a
12 statement of any current stock levels of products attributed to Ms. Warm. The reason
13 Mr. Fitzgerald offered to share leads and provide information was because he had
14 proposed to purchase the product from Studio Warm instead of Innermost as Mr.
15 Fitzgerald did not want to lose his bestselling product. Despite these promises,
16 Plaintiffs never received the information from Mr. Fitzgerald, and IMDC has
17 continued selling the knockoffs as Ms. Warm’s designs.
18 34. Despite being on notice of Plaintiffs’ protests and objections, Innermost

19 and IMDC have continued to exploit Ms. Warm’s designs and persona and have
20 continued to import, sell, promote, and distribute infringing goods in the United
21 States. This constitutes willful infringement.
22 D. After being spurned by Ms. Warm, Defendants produced and sold

23 knockoffs of her signature works.
24 35. As a result of Plaintiffs’ declining to form a continuing partnership with
25 them, Defendants have produced, offered, sold, distributed, and marketed goods that
26 are unauthorized reproductions of two of Plaintiff’s most recognized collections,
27 Circus and Glaze. These knockoffs, examples of which are pictured above, are
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28 currently offered for sale by Defendants.
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1 36. Innermost has been manufacturing and selling replicas/counterfeits of

2 Circus and Glaze designs. Innermost, IMDC, and LightForm have worked together to
3 market, advertise, sell, promote, and distribute such works to third parties and to
4 consumers around the world and in the United States.
5 37. On information and belief, Defendants Innermost, IMDC, Archetype,

6 LBD, and LightForm collaboratively made the decision to produce and sell the
7 knockoffs and arrived at a financial arrangement to divvy up the resulting ill-gotten
8 gains.
9 38. To further intensify the injury to Plaintiffs, the knockoffs in question

10 have been presented and showcased on Innermost, IMDC, and LightForm’s websites
11 alongside photographs of Ms. Warm and proclaiming Ms. Warm as the designer.
12 39. In addition, Innermost, IMDC, and LightForm (and on information and

13 belief the other Defendants) have used the knockoffs for promotional and
14 merchandising purposes.
15 E. Innermost, IMDC, and LightForm continue to willfully infringe, even after

16 Plaintiffs demanded that they cease and desist.
17 40. Although Innermost, IMDC, and LightForm have been put on notice of
18 Plaintiffs’ claims and have acknowledged Ms. Warm’s ownership of the Circus and
19 Glaze designs including as described above, Innermost, IMDC, and LightForm
20 continue to flout Plaintiffs’ claims and sell the infringing designs internationally and
21 in the United States.
22 41. Defendant Innermost promotes and sells the infringing pieces mentioned
23 above online via its U.S. website, www.innermost.us, through IMDC, and LightForm;
24 and through other retail shops and partners working in the United States and
25 California. Innermost oversaw the design, distribution, and sale of such pieces,
26 knowingly copying Plaintiffs’ works; directly benefitted financially from their sale;
27 and had the right and practical ability to supervise and approve the misconduct alleged
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28 herein.
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1 42. The wrongful acts of Defendants constitute intentional wrongful conduct,

2 with the intention on the part of Defendants of thereby depriving Plaintiffs of property
3 and legal rights, or otherwise causing injury; and is despicable conduct that has
4 subjected Plaintiffs to significant hardship in conscious disregard of Plaintiffs’ rights,
5 justifying an award of exemplary and punitive damages.
6 43. Plaintiffs have sustained and will continue to sustain serious and
7 irreparable injury to their business and reputation as a direct and proximate result of
8 Defendants’ conduct (as described above). Unless Defendants are enjoined by this
9 Court, there is a substantial possibility that they will continue to engage in such
10 unlawful, unfair, and deceptive business practices, for which Plaintiffs are without an
11 adequate remedy at law. Accordingly, Plaintiffs are entitled to a preliminary
12 injunction and permanent injunction against Defendants and their officers, directors,
13 employees, agents, representatives, affiliates, subsidiaries, distributors, and all persons
14 acting in concert with them, prohibiting them from engaging in further misconduct.
15 First Claim For Relief For Copyright Infringement (re Circus Pendant)
16 (Against All Defendants)
17 44. Plaintiffs incorporate by this reference all other paragraphs in this
18 pleading, as if fully set forth in full in this claim.
19 45. In 2010, Ms. Warm, on behalf of Studio Warm, created an original

20 sculptural work, entitled Circus Pendant (as pictured above). The work was first
21 shown at the SaloneSatellite trade fair in Italy. The work is creative and original,
22 constituting copyrightable subject matter under United States law. Since its creation,
23 Plaintiffs have been and still are the sole proprietor of all rights, title, and interest in
24 and to the copyright in Circus Pendant.
25 46. The work is sculptural and can be perceived as a three-dimensional work

26 of art physically and conceptually separable from its function as a light. The work,
27 which is incorporated in the lighting fixture can be identified and perceived as a three-
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28 dimensional work of art separate from the useful article, and would qualify as a
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1 protectable pictorial, graphic, or sculptural work—either on its own or fixed in some
2 other tangible medium of expression—if it were imagined separately from the useful
3 article into which it is incorporated. Put another way, the work would have been
4 eligible for copyright protection as a pictorial, graphic or sculptural work had it
5 originally been fixed in some tangible medium other than a useful article.
6 47. Circus Pendant is physically and conceptually separable from any useful
7 object of furniture or lighting in that the work can be identified separately from, and is
8 capable of existing independently of, the utilitarian aspects of any useful object. The
9 lighting element in the Circus Pendant is contained inside a housing, to which the
10 individual elements are affixed. The lighting element could be removed from (or
11 never inserted into) this work, leaving a purely sculptural work. Further, one could
12 easily imagine this work as separate from the housing and light, in that one could
13 conceivably remove the housing and leave the original protected work unchanged.
14 48. The essential creative elements of Circus Pendant are non-functional.

15 There is nothing about such elements that improves the functioning of the piece as a
16 light or yields any utilitarian or functional advantage. These essential creative
17 elements do not make the light provided by a Circus Pendant light better in any way,
18 or more interesting; nor are they essential to the use, purpose, cost, or quality of the
19 lights.
20 49. Plaintiffs have complied in all respects with the Copyright Act and all
21 other laws governing copyright. Circus Pendant is exempt from the registration
22 requirement under 17 U.S.C. § 411 because Circus Pendant is not a “United States
23 work,” as that term is defined under 17 U.S.C. § 101. In addition to the Circus
24 Pendant copyright referred to above, Plaintiffs are the owners and proprietors of all
25 right, title and interest to the copyrights in various iterations, embodiments,
26 derivatives, and further editions of Circus Pendant which are either unpublished or
27 not United States works.
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1 50. Defendants had access to Plaintiff’s Circus Pendant design including,

2 without limitation, through access to Plaintiffs’ goods sold and displayed in the
3 marketplace and, for Innermost, through working with Ms. Warm. At all times
4 relevant, Defendants were aware of Plaintiffs’ designs.
5 51. Defendants, with full knowledge of Plaintiffs’ rights, infringed Plaintiffs’

6 copyrights by producing, manufacturing, promoting, and/or selling their “Circus
7 Pendant” (pictured above), which is a pendant light copied from and substantially
8 similar to Plaintiff’s Circus Pendant design, including through Innermost’s and
9 IMDC’s distribution channels (including in stores, on the Innermost and IMDC
10 websites, through other distributors, and through interior design channels). Defendants
11 clearly copied the separable artistic elements of Plaintiff’s work. A side-by-side
12 comparison of Circus Pendant with Defendants’ infringing lighting reveals that
13 Defendants slavishly copied the protectable elements of Circus Pendant; and that the
14 works are substantially similar, indeed strikingly like Plaintiffs’. The infringing pieces
15 are knockoffs and counterfeits of Plaintiffs’ designs intended to and inducing
16 customers to believe they are purchasing Plaintiffs’ designs.
17 52. To make the infringement and intellectual property theft even more
18 damaging, Defendants market and sell the Circus Pendant knockoffs under the same
19 name as Warm’s design – Circus Pendant and attribute the works as Warm products.
20 53. All Defendants are liable for the infringement. On information and belief,
21 all the Defendants worked together to conceive of, copy, produce, and sell
22 unauthorized copies of Plaintiff’s Circus Pendant, which were marketed and offered
23 for sale by all Defendants in the United States including California, and by Innermost
24 and LightForm in the rest of the world. All Defendants directly profited from the
25 infringement and had the practical right to approve or veto the scheme.
26 54. All such acts were performed by Defendants without the permission,
27 license, or consent of Plaintiffs. Plaintiffs have notified Defendants in writing of the
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28 infringements. As described above, all Defendants have continued to produce,
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1 manufacture, promote, and sell the infringing products even after receiving Plaintiffs’
2 protests and demands that such infringement cease.
3 55. Defendants continue to infringe and sell the infringing works in violation
4 of Plaintiffs’ copyright, and further have engaged in unfair trade practices and unfair
5 competition in connection with their publication and sale of the infringing works, thus
6 causing irreparable damage.
7 56. By reason of Defendants’ acts of copyright infringement, Plaintiffs have

8 suffered, and will continue to suffer substantial damages to their business in the form
9 of diversion of trade, loss of profits, and a dilution in the value of Plaintiffs’ rights and
10 reputation, all in amounts that are not yet ascertainable, but not less than the
11 jurisdictional minimum of this Court.
12 57. By reason of Defendants’ infringement of Plaintiffs’ copyright,

13 Defendants are liable to Plaintiffs for the actual damages incurred by Plaintiffs due to
14 the infringement, and for any profits of Defendants directly or indirectly attributable
15 to such infringement.
16 Second Claim For Relief For Copyright Infringement (re Circus Wall)

21 sculptural work, entitled Circus Wall (as pictured above). The work was first available
22 commercially in August 2015 outside the United States. The work is creative and
23 original, constituting copyrightable subject matter under United States law. Since its
24 creation, Plaintiffs have been and still are the sole proprietor of all rights, title, and
25 interest in and to the copyright in Circus Wall.

27 of art physically and conceptually separable from its function as a light. The work,
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28 which is incorporated in the lighting fixture can be identified and perceived as a three-
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7 61. Circus Wall is physically and conceptually separable from any useful
8 object of furniture or lighting in that the work can be identified separately from, and is
9 capable of existing independently of, the utilitarian aspects of any useful object. The
10 lighting element in the Circus Wall lamp is contained inside a housing, to which the
11 individual elements are affixed. The lighting element could be removed from (or
12 never inserted into) this work, leaving a purely sculptural work. Further, one could
13 easily imagine this work as separate from the housing and light, in that one could
14 conceivably remove the housing and leave the original protected work unchanged.
15 62. The essential creative elements of Circus Wall lamp are non-functional.
18 elements do not make the light provided by a Circus Wall lamp better in any way, or
19 more interesting; nor are they essential to the use, purpose, cost, or quality of the
20 lights.
22 other laws governing copyright. Circus Wall is exempt from the registration
23 requirement under 17 U.S.C. § 411 because Circus Wall is not a “United States
24 work,” as that term is defined under 17 U.S.C. § 101.
25 64. Defendants had access to Plaintiff’s Circus Wall lamp design including,
26 without limitation, through access to Plaintiffs’ goods sold and displayed in the
27 marketplace and, for Innermost, through working with Ms. Warm. At all times
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28 relevant, Defendants were aware of Plaintiffs’ designs.
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1 65. Defendants, with full knowledge of Plaintiffs’ rights, infringed Plaintiffs’

2 copyrights by producing, manufacturing, promoting, and/or selling its own goods,
3 including the “Circus Wall” lamp (pictured above), which is a pendant light copied
4 from and substantially similar to Plaintiff’s Circus Wall design, including through
5 Defendants’ distribution channels (including in stores, on the Innermost, IMDC, and
6 LightForm websites, through other distributors, and through interior design channels).
7 Defendants clearly copied the separable artistic elements of Plaintiff’s work. A side-
8 by-side comparison of Circus Wall with Defendants’ infringing lighting reveals that
9 Defendants slavishly copied the protectable elements of Circus Wall; and that the
10 works are substantially similar, indeed strikingly like Plaintiffs’. The infringing pieces
11 are knockoffs and counterfeits of Plaintiffs’ designs intended to and inducing
12 customers to believe they are purchasing Plaintiffs’ designs.
13 66. All Defendants are liable for the infringement. On information and belief,
14 all the Defendants worked together to conceive of, copy, produce, and sell
15 unauthorized copies of Plaintiff’s Circus Wall lamp, which were marketed and offered
16 for sale by all Defendants in the United States including California, and by Innermost
17 and LightForm in the rest of the world. All Defendants directly profited from the
18 infringement and had the practical right to approve or veto the scheme.
19 67. All such acts were performed by Defendants without the permission,
20 license, or consent of Plaintiffs. Plaintiffs have notified Defendants in writing of the
21 infringements. As described above, all Defendants have continued to produce,
22 promote, distribute, and sell the infringing products even after receiving Plaintiffs’
24 68. Defendants continue to infringe and sell the infringing works in violation
25 of Plaintiffs’ copyright, and further have engaged in unfair trade practices and unfair
26 competition in connection with their publication and sale of the infringing works, thus
27 causing irreparable damage.
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1 69. By reason of Defendants’ acts of copyright infringement, Plaintiffs have

2 suffered, and will continue to suffer substantial damages to their business in the form
3 of diversion of trade, loss of profits, and a dilution in the value of Plaintiffs’ rights and
4 reputation, all in amounts that are not yet ascertainable, but not less than the
6 70. By reason of Defendants’ infringement of Plaintiffs’ copyright,

7 Defendants are liable to Plaintiffs for the actual damages incurred by Plaintiffs due to
8 the infringement, and for any profits of Defendants directly or indirectly attributable
9 to such infringement.
10 Third Claim for Relief for Copyright Infringement (re Glaze Pendant)
11 (Against Innermost, IMDC, and LightForm)

15 sculptural work, entitled Glaze Pendant (as pictured above). The work is creative and
16 original, constituting copyrightable subject matter under United States law. Since its
17 creation, Plaintiffs have been and still are the sole proprietors of all rights, title, and
18 interest in and to the copyright in Glaze Pendant.

20 of art physically and conceptually separable from its function as a hanging light. The
21 work gives the impression that precious metals have been merged seemingly invisibly
22 with a fine layer of porcelain. The pendant lamps explore the application of
23 contrasting finishes complemented by hand-spun (rather than the typically industrially
24 spun) manufacturing process and hand applied finish. The matte shine of the copper or
25 graphite anodized aluminum is complemented by a high gloss finish. The work, which
26 is incorporated in the lighting fixture can be identified and perceived as a three-
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LAW GROUP
ATTORNEYS
LOS ANGELES CA
5 74. The Glaze Pendant is physically and conceptually separable from any
6 useful object of furniture or lighting in that the piece can be identified separately
7 from, and is capable of existing independently of, the utilitarian aspects of any useful
8 object. The lighting element could be removed from (or never inserted into) this work,
9 leaving a purely sculptural work. Further, one could easily imagine this work as
10 separate from the housing and light, in that one could conceivably remove the housing
11 and leave the original protected work unchanged.
12 75. The essential creative elements of Glaze Pendant are non-functional.

15 elements do not make the light provided by a Glaze Pendant better in any way, or
16 more interesting; nor are they essential to the use, purpose, cost, or quality of the
17 lights.
19 other laws governing copyright. Glaze Pendant is exempt from the registration
20 requirement under 17 U.S.C. § 411 because it is not a “United States work,” as that
21 term is defined under 17 U.S.C. § 101. In addition to the Glaze Pendant copyright
22 referred to above, Plaintiffs are the owners and proprietors of all right, title and
23 interest to the copyrights in various iterations, embodiments, derivatives, and further
24 editions of Glaze Pendant which are either unpublished or not United States works.
25 77. Defendants Innermost, IMDC, and LightForm had access to Plaintiffs’

26 Glaze Pendant design including, without limitation, through access to Plaintiffs’
27 goods sold and displayed in the marketplace, and, for Innermost, through its prior
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28 licensing deals with Ms. Warm.
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 78. Defendants Innermost, IMDC, and LightForm, with full knowledge of

2 Plaintiffs’ rights, infringed Plaintiffs’ copyrights by producing, manufacturing,
3 promoting, and/or selling its own goods, including the “Glaze Pendant” (pictured
4 above), which is copied from and substantially similar to Plaintiff’s Glaze Pendant
5 design, including through Innermost’s, IMDC’s, and LightForm’s distribution
6 channels (including in stores, on those defendants’ websites and through catalogs and
7 interior design channels). Defendants Innermost, IMDC, and LightForm clearly
8 copied the separable artistic elements of Plaintiff’s work. A side-by-side comparison
9 of Glaze Pendant with those defendants’ infringing products reveals that Defendants
10 Innermost, IMDC, and LightForm slavishly copied the protectable elements of Glaze
11 Pendant; and that the works are knockoffs and counterfeits of Plaintiffs’ design.
12 79. To make the infringement and intellectual property theft even more
13 damaging, Defendants Innermost, IMDC, and LightForm market and sell the Glaze
14 Pendant knockoffs under the same name as Warm’s design—i.e. Glaze Pendant—and
15 attribute the infringing works as Warm products.
16 80. Defendants Innermost, IMDC, and LightForm are liable for the
17 infringement. On information and belief, each of those defendants worked together to
18 conceive of, copy, produce and sell unauthorized copies of Plaintiffs’ Glaze Pendant,
19 which were marketed and offered for sale by Defendants Innermost, IMDC, and
20 LightForm in the United States including California, and by Innermost and LightForm
21 in the rest of the world. Defendants Innermost, IMDC, and LightForm directly
22 profited from the infringement and had the practical right to approve or veto the
23 scheme.
24 81. All such acts were performed by Defendants Innermost, IMDC, and
25 LightForm without the permission, license, or consent of Plaintiffs. Plaintiffs have
26 notified those defendants in writing of the infringements. As described above,
27 Defendants Innermost, IMDC, and LightForm have continued to produce,
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28
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1 manufacture, promote, and sell the infringing products even after receiving Plaintiffs’
3 82. Defendants Innermost, IMDC, and LightForm continue to infringe and

4 sell the infringing works in violation of Plaintiffs’ copyright, and further have
5 engaged in unfair trade practices and unfair competition in connection with their
6 publication and sale of the infringing works, thus causing irreparable damage.
7 83. By reason of these defendants’ acts of copyright infringement, Plaintiffs

8 have suffered, and will continue to suffer substantial damages to their business in the
9 form of diversion of trade, loss of profits, and a dilution in the value of Plaintiffs’
10 rights and reputation, all in amounts that are not yet ascertainable, but not less than the
12 84. By reason of Defendants Innermost, IMDC, and LightForm’s

13 infringement of Plaintiffs’ copyright, they are liable to Plaintiffs for the actual
14 damages incurred by Plaintiffs due to the infringement, and for any profits of these
15 defendants’ directly or indirectly attributable to such infringement.
16 Fourth Claim for Relief for Trade Dress Infringement (Circus Pendant Trade
17 Dress) in Violation of The Lanham Act 15 U.S.C. §1125(a)
18 (Against all Defendants)
20 pleading, as if fully set forth in full in this cause of action.
21 86. Defendants violated the Lanham Act through their advertising,

22 promotion, distribution, sale, importation and offering for sale infringing products
23 bearing the signature and recognizable elements of Plaintiffs’ trademarks and trade
24 dress. The public has come to recognize certain signature features as indicating
25 Plaintiffs as the source of those goods. These features are referred to as the “Circus
26 Pendant Trade Dress.”
27 87. Plaintiffs’ pieces incorporating the Circus Pendant Trade Dress have
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28 enjoyed substantial and noteworthy success. The public has come to recognize the
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 Circus Pendant Trade Dress as indicating Plaintiffs as the source of objects
2 incorporating them.
3 88. Plaintiffs have invested a substantial amount of time, money, and other
4 resources in establishing the Circus Pendant Trade Dress in the minds of consumers as
5 a source of high quality, stylish, lighting. As a result of Plaintiffs’ substantial use and
6 promotion of the Circus Pendant Trade Dress in connection with lighting, the Circus
7 Pendant Trade Dress has acquired great value as a specific identifier of Plaintiffs’
8 products and serves to distinguish Plaintiffs’ products from those of others. Customers
9 in this Judicial District and elsewhere readily recognize the Circus Pendant Trade
10 Dress as distinctive designations of origin of Plaintiffs’ products. The Circus Pendant
11 Trade Dress is of great value as a symbol of Plaintiffs’ quality products and goodwill.
12 89. Attempting to ride the coattails of Plaintiffs’ substantial investment and

13 success, Defendants are using Plaintiffs’ trade dress to offer for sale, distribute,
14 market, and/or sell competing works (i.e., lighting) that bear the Circus Pendant Trade
15 Dress. As a result, customers (especially sophisticated consumers and dealers) are
16 likely led to mistakenly believe that Defendants’ pieces are associated with Plaintiffs.
17 90. The Circus Pendant Trade Dress is depicted in the images of Circus
18 Pendant above.
19 91. The trade dress described above serves a branding function. Customers,
20 including dealers and sophisticated buyers, have come to recognize pieces
21 incorporating the Circus Pendant Trade Dress as having Plaintiffs as their source.
22 Plaintiffs intended to, and continue to intend to, produce this secondary meaning,
23 which is extremely valuable to Plaintiffs. Plaintiffs’ branding efforts included
24 showing and marketing the pieces as broadly as possible, including by exhibiting the
25 work in galleries and stores, and on the internet—and by attending high-profile design
26 fairs to present Ms. Warm’s work to the industry.
27 92. The Circus Pendant Trade Dress is non-functional. There is nothing
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28 about the elements of the Circus Pendant Trade Dress that improve the functioning of
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 a piece as a light or yield any utilitarian or functional advantage. The Circus Pendant
2 Trade Dress does not make the light provided by a Circus Pendant better in any way,
3 or more interesting—especially given the almost unlimited number of design
4 alternatives that would process and diffuse a raw light source in the same way. None
5 of the elements of the Circus Pendant Trade Dress are essential to the use, purpose,
6 cost, or quality of the lights. Plaintiffs’ exclusive use of their trade dress would not put
7 competitors at any non-reputation-related disadvantage.
8 93. Defendants’ actions, as set forth above, constitute a violation of the

9 Lanham Act and other applicable law, insofar as Defendants are knowingly using
10 Plaintiffs’ trade dress, thereby falsely designating the source of the origin of
11 Defendants’ goods, and raising a likelihood of confusion among the public as to the
12 source of Defendants’ goods. More specifically, given the broad awareness of Ms.
13 Warm and her work, there is a substantial likelihood that buyers could look at
14 Defendants’ Circus Pendant and mistakenly believe it was the work of Ms. Warm. For
15 clarity, Plaintiffs allege via this claim that Defendants are passing off their products as
16 being associated with or produced by Plaintiffs—not that Defendants are taking credit
17 for Plaintiffs’ creativity. The latter misconduct is alleged by way of Plaintiffs’
18 copyright claims.
19 94. Defendants sell their infringing goods for a fraction of Plaintiffs’ prices.
20 95. Plaintiffs notified Defendants that their use of signature elements and
21 Plaintiffs’ trade dress infringes Plaintiffs’ exclusive rights.
22 96. At all relevant times Defendants have had full knowledge of Plaintiffs’
23 ownership of and exclusive rights in and to the Circus Pendant Trade Dress.
24 97. As a direct and proximate result of Defendants’ unlawful actions,

25 Plaintiffs have suffered and will continue to suffer irreparable injury.
26 98. Defendants knew, or by the exercise of reasonable care should have

27 known, that their adoption, commencement of use in commerce, and continuing use of
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28 the Circus Pendant Trade Dress in connection with their lighting and furniture designs
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 would cause confusion, mistake, or deception among purchasers, users, and the
2 public. Defendants knew of Plaintiffs’ prior use of the Circus Pendant Trade Dress,
3 and by adopting, commencing to use in commerce, and continuing to use the Circus
4 Pendant Trade Dress, Defendants intended to and did induce, and intend to and will
5 induce consumers to purchase its products by trading off the extensive goodwill built
6 up by Plaintiffs in the Circus Pendant Trade Dress.
7 99. Defendants’ actions constitute infringement of the Circus Pendant Trade

8 Dress in violation of Plaintiffs’ rights under §32 of the Lanham Act, 15 U.S.C.
9 §1125(a).
10 100. Plaintiffs have been damaged by Defendants’ infringement of the Circus

11 Pendant Trade Dress by reason of the likelihood that potential customers have been
12 confused as to the source of Defendants’ goods and the relationship of those goods to
13 Plaintiffs.
14 101. Defendants have profited from their infringing use of the Circus Pendant
15 Trade Dress.
16 102. By reason of Defendants’ actions alleged herein, Plaintiffs have suffered

17 damage to their goodwill and the loss of sales and profits that they would have
18 received but for Defendants’ wrongful use of the Circus Pendant Trade Dress.
19 103. The foregoing conduct by Defendants has been knowing, deliberate,

20 willful, intended to cause confusion, or to cause mistake or to deceive, in disregard of
21 Plaintiffs’ rights.
22 Fifth Claim for Relief for Trade Dress Infringement (Circus Wall Trade Dress) in
23 Violation of The Lanham Act 15 U.S.C. §1125(a)
24 (Against all Defendants)
27 105. Defendants violated the Lanham Act through their advertising,
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28 promotion, distribution, sale, importation and offering for sale infringing lighting
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 bearing the signature and recognizable elements of Plaintiffs’ trademarks and trade
2 dress. The public has come to recognize certain signature features as indicating
3 Plaintiffs as the source of those goods. These features are referred to as the “Circus
4 Wall Trade Dress.”
5 106. Plaintiffs’ pieces incorporating the Circus Wall Trade Dress have
6 enjoyed substantial and noteworthy success. The public has come to recognize the
7 Circus Wall Trade Dress as indicating Plaintiffs as the source of objects incorporating
8 them.
10 resources in establishing the Circus Wall Trade Dress in the minds of consumers as a
11 source of high quality, stylish, lighting. As a result of Plaintiffs’ substantial use and
12 promotion of the Circus Wall Trade Dress in connection with lighting, the Circus
13 Wall Trade Dress has acquired great value as a specific identifier of Plaintiffs’
14 products and serves to distinguish Plaintiffs’ products from those of others. Customers
15 in this Judicial District and elsewhere readily recognize the Circus Wall Trade Dress
16 as distinctive designations of origin of Plaintiffs’ products. The Circus Wall Trade
17 Dress is of great value as a symbol of Plaintiffs’ quality products and goodwill.

19 success, Defendants are using Plaintiffs’ trade dress to offer for sale, distribute,
20 market, and/or sell competing works (i.e., lighting) that bear the Circus Wall Trade
21 Dress. As a result, customers (especially sophisticated consumers and dealers) are
22 likely led to mistakenly believe that Defendants’ pieces are associated with Plaintiffs.
23 109. The Circus Wall Trade Dress is depicted in the images of Plaintiffs’
24 Circus Wall above.
27 incorporating the Circus Wall Trade Dress as having Plaintiffs as their source.
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28 Plaintiffs intended to, and continue to intend to, produce this secondary meaning,
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 which is extremely valuable to Plaintiffs. Plaintiffs’ branding efforts included
2 showing and marketing the pieces as broadly as possible, including by exhibiting the
3 work in galleries and stores, and on the internet—and by attending high-profile design
4 fairs to present Ms. Warm’s work to the industry.
5 111. The Circus Wall Trade Dress is non-functional. There is nothing about
6 the elements of the Circus Wall Trade Dress that improve the functioning of a piece as
7 a light or yield any utilitarian or functional advantage. The Circus Wall Trade Dress
8 does not make the light provided by a Circus Wall lamp better in any way, or more
9 interesting—especially given the almost unlimited number of design alternatives that
10 would process and diffuse a raw light source in the same way. None of the elements
11 of the Circus Wall Trade Dress are essential to the use, purpose, cost, or quality of the
12 lights. Plaintiffs’ exclusive use of their trade dress would not put competitors at any
13 non-reputation-related disadvantage.
14 112. Defendants’ actions, as set forth above, constitute a violation of the

15 Lanham Act and other applicable law, insofar as Defendants are knowingly using
16 Plaintiffs’ trade dress, thereby falsely designating the source of the origin of
17 Defendants’ goods, and raising a likelihood of confusion among the public as to the
18 source of Defendants’ goods. More specifically, given the broad awareness of Ms.
19 Warm and her work, there is a substantial likelihood that buyers could look at
20 Defendants’ Circus Wall lamp and mistakenly believe it was the work of Ms. Warm.
21 For clarity, Plaintiffs allege via this cause of action that Defendants are passing off
22 their products as being associated with or produced by Plaintiffs—not that Defendants
23 are taking credit for Plaintiffs’ creativity. The latter misconduct is alleged by way of
24 Plaintiffs’ copyright claims.
25 113. Defendants sell their infringing goods for a fraction of Plaintiffs’ prices.
26 114. Plaintiffs notified Defendants that their use of signature elements and
27 Plaintiffs’ trade dress infringes Plaintiffs’ exclusive rights.
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28
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1 115. At all relevant times Defendants have had full knowledge of Plaintiffs’
2 ownership of and exclusive rights in and to the Circus Wall Trade Dress.
3 116. As a direct and proximate result of Defendants’ unlawful actions,

4 Plaintiffs have suffered and will continue to suffer irreparable injury.
5 117. Defendants knew, or by the exercise of reasonable care should have

6 known, that their adoption, commencement of use in commerce, and continuing use of
7 the Circus Wall Trade Dress in connection with their lighting and furniture designs
8 would cause confusion, mistake, or deception among purchasers, users, and the
9 public. Defendants knew of Plaintiffs’ prior use of the Circus Wall Trade Dress, and
10 by adopting, commencing to use in commerce, and continuing to use the Circus Wall
11 Trade Dress, Defendants intended to and did induce, and intend to and will induce
12 consumers to purchase its products by trading off the extensive goodwill built up by
13 Plaintiffs in the Circus Wall Trade Dress.
14 118. Defendants’ actions constitute infringement of the Circus Wall Trade

15 Dress in violation of Plaintiffs’ rights under §32 of the Lanham Act, 15 U.S.C.
16 §1125(a).
17 119. Plaintiffs have been damaged by Defendants’ infringement of the Circus

18 Wall Trade Dress by reason of the likelihood that potential customers have been
19 confused as to the source of Defendants’ goods and the relationship of those goods to
20 Plaintiffs.
21 120. Defendants have profited from their infringing use of the Circus Wall
22 Trade Dress.
23 121. By reason of Defendants’ actions alleged herein, Plaintiffs have suffered

24 damage to their goodwill and the loss of sales and profits that they would have
25 received but for Defendants’ wrongful use of the Circus Wall Trade Dress.
26 122. The foregoing conduct by Defendants has been knowing, deliberate,

27 willful, intended to cause confusion, or to cause mistake or to deceive, in disregard of
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28 Plaintiffs’ rights.
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 Sixth Claim for Relief for Trade Dress Infringement (Glaze Trade Dress) in
2 Violation of The Lanham Act 15 U.S.C. §1125(a)
3 (Against Innermost, IMDC, and LightForm)
6 124. Defendants Innermost, IMDC, and LightForm violated the Lanham Act
7 through their advertising, promotion, distribution, sale, importation and offering for
8 sale infringing lighting bearing the signature and recognizable elements of Plaintiffs’
9 trademarks and trade dress. The public has come to recognize certain signature
10 features as indicating Plaintiffs as the source of those goods. These features are
11 referred to as the “Glaze Trade Dress.”
12 125. Plaintiffs’ pieces incorporating the Glaze Trade Dress have enjoyed
13 substantial and noteworthy success. The public has come to recognize the Glaze Trade
14 Dress as indicating Plaintiffs as the source of objects incorporating them.
16 resources in establishing the Glaze Trade Dress in the minds of consumers as a source
17 of high quality, stylish, lighting. As a result of Plaintiffs’ substantial use and
18 promotion of the Glaze Trade Dress in connection with lighting, the Glaze Trade
19 Dress has acquired great value as a specific identifier of Plaintiffs’ products and
20 serves to distinguish Plaintiffs’ products from those of others. Customers in this
21 Judicial District and elsewhere readily recognize the Glaze Trade Dress as distinctive
22 designations of origin of Plaintiffs’ products. The Glaze Trade Dress is of great value
23 as a symbol of Plaintiffs’ quality products and goodwill.

25 success, Defendants Innermost, IMDC, and LightForm are using Plaintiffs’ trade
26 dress to offer for sale, distribute, market, and/or sell competing works (i.e., lighting)
27 that bear the Glaze Trade Dress. As a result, customers (especially sophisticated
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28
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1 consumers and dealers) are likely led to mistakenly believe that Defendants’ pieces
2 are associated with Plaintiffs.
3 128. The Glaze Trade Dress is depicted in the images of Glaze Pendant above.
6 incorporating the Glaze Trade Dress as having Plaintiffs as their source. Plaintiffs
7 intended to, and continue to intend to, produce this secondary meaning, which is
8 extremely valuable to Plaintiffs. Plaintiffs’ branding efforts included showing and
9 marketing the pieces as broadly as possible, including by exhibiting the work in
10 galleries and stores, and on the internet—and by attending high-profile design fairs to
11 present Ms. Warm’s work to the industry.
12 130. The Glaze Trade Dress is non-functional. There is nothing about the
13 elements of the Glaze Trade Dress that improve the functioning of a piece as a light or
14 yield any utilitarian or functional advantage. The Glaze Trade Dress does not make
15 the light provided by a Glaze Pendant better in any way, or more interesting—
16 especially given the almost unlimited number of design alternatives that would
17 process and diffuse a raw light source in the same way. None of the elements of the
18 Glaze Trade Dress are essential to the use, purpose, cost, or quality of the lights.
19 Plaintiffs’ exclusive use of their trade dress would not put competitors at any non-
20 reputation-related disadvantage.
21 131. Defendants Innermost, IMDC, and LightForm’s actions, as set forth

22 above, constitute a violation of the Lanham Act and other applicable law, insofar as
23 these defendants are knowingly using Plaintiffs’ trade dress, thereby falsely
24 designating the source of the origin of these defendants’ goods, and raising a
25 likelihood of confusion among the public as to the source of these defendants’ goods.
26 More specifically, given the broad awareness of Ms. Warm and her work, there is a
27 substantial likelihood that buyers could look at these defendants’ Glaze Pendant, and
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28 mistakenly believe it was the work of Ms. Warm. For clarity, Plaintiffs allege via this
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 cause of action that Defendants Innermost, IMDC, and LightForm are passing off
2 their products as being associated with or produced by Plaintiffs—not that these
3 defendants are taking credit for Plaintiffs’ creativity. The latter misconduct is alleged
4 by way of Plaintiffs’ copyright claims.
5 132. Defendants Innermost, IMDC, and LightForm sell their infringing goods
6 for a fraction of Plaintiffs’ prices.
7 133. Plaintiffs notified Defendants Innermost, IMDC, and LightForm that

8 their use of signature elements and Plaintiffs’ trade dress infringes Plaintiffs’
9 exclusive rights.
10 134. At all relevant times Defendants Innermost, IMDC, and LightForm have
11 had full knowledge of Plaintiffs’ ownership of and exclusive rights in and to the Glaze
12 Trade Dress.
13 135. As a direct and proximate result of Defendants Innermost, IMDC, and

14 LightForm’s unlawful actions, Plaintiffs have suffered and will continue to suffer
15 irreparable injury.
16 136. Defendants Innermost, IMDC, and LightForm knew, or by the exercise

17 of reasonable care should have known, that their adoption, commencement of use in
18 commerce, and continuing use of the Glaze Trade Dress in connection with their
19 lighting and furniture designs would cause confusion, mistake, or deception among
20 purchasers, users, and the public. Defendants Innermost, IMDC, and LightForm knew
21 of Plaintiffs’ prior use of the Glaze Trade Dress, and by adopting, commencing to use
22 in commerce, and continuing to use the Glaze Trade Dress, Defendants Innermost,
23 IMDC, and LightForm intended to and did induce, and intend to and will induce
24 consumers to purchase its products by trading off the extensive goodwill built up by
25 Plaintiffs in the Glaze Trade Dress.
26 137. Defendants Innermost, IMDC, and LightForm’s actions constitute

27 infringement of the Glaze Trade Dress in violation of Plaintiffs’ rights under §32 of
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28 the Lanham Act, 15 U.S.C. §1125(a).
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 138. Plaintiffs have been damaged by Defendants Innermost, IMDC, and

2 LightForm’s infringement of the Glaze Trade Dress by reason of the likelihood that
3 potential customers have been confused as to the source of these defendants’ goods
4 and the relationship of those goods to Plaintiffs.
5 139. Defendants Innermost, IMDC, and LightForm have profited from their
6 infringing use of the Glaze Trade Dress.
7 140. By reason of Defendants Innermost, IMDC, and LightForm’s actions

8 alleged herein, Plaintiffs have suffered damage to Studio Warm’s goodwill and the
9 loss of sales and profits that it would have received but for these defendants’ wrongful
10 use of the Glaze Trade Dress.
11 141. The foregoing conduct by Defendants Innermost, IMDC, and LightForm

12 has been knowing, deliberate, willful, intended to cause confusion, or to cause mistake
13 or to deceive, in disregard of Plaintiffs’ rights.
14 Seventh Claim for Relief for False Endorsement in Violation of The Lanham Act
15 15 U.S.C. §1125(a)
16 (By Corinna Warm Against all Defendants)
17 142. Plaintiffs incorporate by this reference all other paragraphs of this
18 pleading as if set forth in full in this cause of action.
19 143. Ms. Warm’s name has secondary meaning, as that term is understood in
20 trademark law. Members of the public have come to recognize Ms. Warm’s name as
21 belonging to her. As described above, Defendants have falsely used Ms. Warm’s
22 name in connection with Defendants’ infringing products, creating the false
23 impression that Ms. Warm endorses Defendants. This was done to promote and attract
24 customers to Defendants’ websites and businesses, and thereby generate revenue for
25 Defendants. Thus, this was done in furtherance of Defendants’ commercial benefit.
26 Ms. Warm is in the business of commercializing her identity and selling her designs to
27 the public for profit. By virtue of Ms. Warm’s use of her name and identity to build
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28 her brand, her name has acquired a distinctiveness through secondary meaning.
LAW GROUP
ATTORNEYS
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1 144. The goodwill and reputation associated with Ms. Warm’s name has
2 continuously grown among the general public. Ms. Warm’s name is now known
3 throughout the United States, the State of California, and the world, as a source of
4 origin for her design services and endorsements.
5 145. Defendants’ use of Ms. Warm’s name and identity is designed to create
6 and does create the false and deceptive commercial impression that Defendants and
7 their products are associated with and/or endorsed by Ms. Warm. The use by
8 Defendants of Ms. Warm’s name is likely to cause confusion, mistake, or deception of
9 purchasers as to Ms. Warm’s endorsement of the goods.
10 146. Customers and potential purchasers are likely to be attracted to

11 Defendants’ infringing products, creating an initial interest in the goods upon seeing
12 them and creating a lasting appreciation, believing them to be endorsed by or
13 otherwise associated with Ms. Warm, thereby resulting in consumer confusion.
14 Defendants’ conduct will damage Ms. Warm’s ability to enjoy, maintain and exploit
15 her hard-won recognition—and indeed, threatens to disrupt her contractual
16 relationships with her clients.
17 147. By Defendants’ conduct alleged here, Defendants have wrongfully

18 appropriated for themselves business and goodwill value that properly belongs to Ms.
19 Warm and that Ms. Warm has invested time, money, and energy in developing.
20 148. By reason of Defendants’ acts of unfair competition as alleged herein,

21 Ms. Warm has suffered and will continue to suffer substantial damage to her business
22 in the form of diversion of trade, loss of profits, and a dilution in the value of her
23 rights and reputation, all in amounts which are not yet ascertainable, but which are
24 estimated to be not less than the jurisdictional minimum of this court.
25 149. By virtue of Defendants’ acts hereinabove described, Defendants have

26 committed, and are continuing to commit, unlawful, unfair, and fraudulent business
27 acts in violation of, inter alia, 15 U.S.C. § 1125(a).
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28 150. Defendants’ acts of unfair competition in violation of 15 U.S.C. §
LAW GROUP
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1 1125(a) have caused, and will continue to cause, damage and irreparable harm to Ms.
2 Warm (as described above) and are likely to continue unabated, thereby causing
3 further damage and irreparable harm to Ms. Warm, and to the goodwill associated
4 with Ms. Warm’s valuable and well-known name; and Ms. Warm’s business
5 relationships, unless preliminarily and permanently enjoined and restrained by the
6 Court.
7 151. Ms. Warm has no adequate remedy at law and will suffer irreparable
8 injury if Defendants are allowed to continue to engage in the wrongful conduct herein
9 described.
10 152. In committing these acts of unfair competition, Defendants acted

11 willfully, wantonly, and recklessly, and with conscious disregard for Ms. Warm’s
12 rights. Ms. Warm is therefore entitled to punitive damages.
13 Eighth Claim for Relief for Trademark Infringement - Violation of The Lanham
14 Act 15 U.S.C. §1125(a)
15 (By Studio Warm Against all Defendants)
18 154. Defendants’ actions, as set forth above, constitute infringement of a

19 trademark in violation of the Lanham Act and other applicable law, insofar as
20 Defendants have knowingly used the “Circus” and “Glaze” names (the “Warm
21 Trademarks”) in promoting and selling goods that are similar in nature to Plaintiffs’,
22 thereby falsely designating the source of the origin of such goods and raising a
23 likelihood of confusion among the public as to the source of Defendants’ goods.
24 155. Studio Warm has been damaged by Defendants’ infringement of Warm’s

25 Trademarks by reason of the likelihood that potential customers have been confused
26 as to the source of Defendants’ goods and the relationship of those goods to Studio
27 Warm.
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28
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1 156. Defendants have profited from their infringing use of the Warm
2 Trademarks.
3 157. By reason of Defendants’ actions alleged herein, Studio Warm has

4 suffered damage to its goodwill and the loss of sales and profits that it would have
5 received but for Defendants’ wrongful use of the Warm Trademarks.
6 158. On information and belief, Defendant’s infringing use of the Warm

7 Trademarks is willful and done without regard to Studio Warm’s established
8 trademark rights.
9 Ninth Claim for Relief for Statutory Unfair Competition under California Law
10 (Cal. Bus. & Prof. Code §§17200 et seq.)
12 159. Plaintiffs incorporate herein by this reference all other paragraphs in this
13 pleading as if set forth in full in this cause of action.
14 160. Defendants’ wrongful acts as described herein constitute unlawful,

15 unfair, and/or fraudulent business practices in violation of Section 17200 et seq. of the
16 California Business and Professions Code. These acts and practices undertaken by
17 Defendants violate California Business & Professions Code §17200 in that they are––
18 as described above––unfair, fraudulent, and/or unlawful.
19 161. Further, without limiting the generality of the foregoing, the harm to
20 Plaintiffs and to members of the general public far outweighs the utility of
21 Defendants’ practices and, consequently, Defendants’ practices constitute an unfair
22 business act or practice within the meaning of Cal. Bus. & Prof. Code §17200.
23 162. Further, without limiting the generality of the foregoing, such acts by
24 Defendants are unlawful in that they violate, inter alia, the Lanham Act.
25 163. As a direct result of Defendants’ unlawful, unfair, fraudulent, and

26 deceptive business practices, Defendants have received and continue to receive
27 income and profits that they would not have earned but for their unlawful, unfair, and
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28
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1 deceptive conduct and Plaintiffs are entitled to disgorgement of such wrongfully
2 obtained funds.
3 164. By reason of Defendants’ acts of unfair competition, Plaintiffs have

4 suffered and will continue to suffer substantial damage to their business in the form of
5 diversion of trade, loss of profits, and a dilution in the value of their rights, all in
6 amounts which are not yet ascertainable, but which are estimated to be not less than
7 the jurisdictional minimum of this court.
8 Tenth Claim for Relief for Unfair Competition under California Common Law
12 166. The above-described conduct of Defendants constitutes unfair

13 competition under the common law of the State of California.
14 167. As a result of Defendants’ actions, Plaintiffs have been damaged in an

15 amount to be proven at trial. Plaintiffs are entitled to punitive damages, with respect to
16 this cause of action.
17 Eleventh Claim For Relief For Contributory and

18 Vicarious Copyright Infringement
22 169. Each Defendant is contributorily liable for the infringement alleged

23 herein because it knowingly induced, participated in, aided and abetted, and profited
24 from the illegal reproduction and/or subsequent sales of the infringing goods.
25 170. Each Defendant is vicariously liable for the infringement alleged herein
26 because it had the right and ability to supervise the infringing conduct, including the
27 practical ability to do so, and because it had a direct financial interest in the infringing
ERIKSON
28 conduct.
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 Twelfth Claim for Relief for Violation of California Civil Code § 3344
2 (By Ms. Warm against Innermost, IMDC, and LightForm)
3 171. Plaintiffs incorporate by this reference all paragraphs of this Complaint
4 as if set forth in full in this cause of action.
5 172. California Civil Code § 3344(a) provides:

6 “Any person who knowingly uses another’s name, voice, signature,
photograph, or likeness, in any manner on or in products, merchandise, or
7 goods, or for purposes of advertising or selling, or soliciting purchases of
products, merchandise, goods or services, without such person’s prior
8 consent, or, in the case of a minor, the prior consent of his parent or legal
guardian, shall be liable for any damages sustained by the person or
9 persons injured as a result thereof. In addition, in any action brought
under this section, the person who violated the section shall be liable to
10 the injured party or parties in an amount equal to the greater of seven
hundred fifty dollars ($750) or the actual damages suffered by him or her
11 as a result of the unauthorized use, and any profits from the unauthorized
use that are attributable to the use and are not taken into account in
12 computing the actual damages. In establishing such profits, the injured
party or parties are required to prove his or her deductible expenses.
13 Punitive damages may also be awarded to the injured party or parties.
The prevailing party in any action under this section shall also be entitled
14 to attorney’s fees and costs.”
15 173. Defendants Innermost, IMDC, and LightForm’s conduct alleged above,
16 constitutes a violation of Section 3344 of the California Civil Code, because
17 Innermost, IMDC, and LightForm knowingly used Ms. Warm’s name and likeness for
18 commercial purposes without authorization.
19 174. Each such use was unequivocally and directly for purposes of advertising
20 or selling, or soliciting purchases of products, merchandise, goods, or services by
21 Innermost, IMDC, and LightForm, such that prior consent was required.
22 175. As a direct and proximate result of Innermost’s, IMDC’s, and

23 LightForm’s wrongful acts, Ms. Warm has been damaged in an amount that is not yet
24 fully ascertainable, but which exceeds the jurisdictional minimum of this court.
25 176. Ms. Warm is informed and believes and based thereon alleges that
26 Innermost, IMDC, and LightForm in committing the above-described actions, acted
27 willfully, maliciously, and oppressively, and with full knowledge of the adverse
ERIKSON
28 effects of their actions on Ms. Warm, and with willful and deliberate disregard for the
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 consequences to Ms. Warm. By reason thereof, Ms. Warm is entitled to recover
2 punitive and exemplary damages from Innermost, IMDC and LightForm in an amount
3 to be determined at the time of trial.
4 177. Ms. Warm also seeks a preliminary and permanent injunction to prohibit
5 Defendants from any further use of Ms. Warm’s name or likeness for Defendants’
6 advantage.
7 Thirteenth Claim for Relief for Misappropriation of Name Likeness under

8 California Common Law
9 (By Ms. Warm, against Innermost, IMDC, and LightForm)
10 178. Plaintiffs incorporate by this reference all paragraphs of this Complaint
11 as if set forth in full in this cause of action.
12 179. Defendants’ conduct alleged above, constitutes a violation of Ms.

13 Warm’s common law rights of publicity and privacy, because Defendants knowingly
14 used Ms. Warm’s name and likeness for their advantage and without authorization.
15 180. Ms. Warm is informed and believes and based thereon alleges that
16 Defendants in committing the above-described actions, acted willfully, maliciously,
17 and oppressively, and with full knowledge of the adverse effects of their actions on
18 Ms. Warm, and with willful and deliberate disregard for the consequences to Ms.
19 Warm. By reason thereof, Ms. Warm is entitled to recover punitive and exemplary
20 damages from Defendants in an amount to be determined at the time of trial.
21 181. Ms. Warm also seeks a preliminary and permanent injunction to prohibit
22 Defendants from any further use of her name and likeness for Defendants’ advantage.
23
24 PRAYER
25 WHEREFORE, Plaintiffs pray judgment against Defendants as follows:
26 1. That Plaintiffs are awarded all damages, including future damages, that
27 Plaintiffs have sustained, or will sustain, as a result of the acts complained of herein,
ERIKSON
28 subject to proof at trial;
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 2. That Plaintiffs are awarded their costs, attorneys’ fees and expenses in
2 this action;
3 3. That Plaintiffs are awarded pre-judgment interest;

4 4. For an order permanently enjoining Defendants and their employees,
5 agents, servants, attorneys, representatives, successors, and assigns, and any and all
6 persons in active concert or participation with any of them, from engaging in the
7 misconduct referenced herein;
8 5. That Defendants be ordered to immediately recall and sequester

9 inventories of the infringing products, and to supply accountings to Plaintiffs’
10 counsel;
11 6. That Defendants be ordered to deliver their entire inventories of

12 infringing products to a mutually selected third party for supervised destruction;
13 7. That Defendants be ordered to file with this Court and serve upon
14 Plaintiffs’ counsel within thirty (30) days after service of the judgment demanded
15 herein, a written report submitted under oath setting forth in detail the manner in
16 which they have complied with the judgment;
17 8. For disgorgement of all proceeds, and restitution of all monies received

18 by Defendants as the result of their wrongful conduct;
19 9. For punitive damages in an amount sufficient to deter Defendants from

20 their wrongful conduct; and
21 10. Such other Damages and further relief as the Court may deem
22 appropriate.
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ERIKSON
28
LAW GROUP
ATTORNEYS
LOS ANGELES CA
DATED: January 13, 2022 ERIKSON LAW GROUP

1
2
By: /s/David Erikson______
3 DAVID ERIKSON
4
Attorneys for Plaintiffs
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ERIKSON
28
LAW GROUP
ATTORNEYS
LOS ANGELES CA
1 DEMAND FOR JURY TRIAL

2 Plaintiff hereby demands a jury trial on its claims on all issues triable by a jury.
3
DATED: January 13, 2022 ERIKSON LAW GROUP
4
5
By: /s/David Erikson .
6 DAVID ERIKSON
7
Attorneys for Plaintiffs
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ERIKSON
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LAW GROUP
ATTORNEYS
LOS ANGELES CA

Warm v. Innermost - Complaint

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Warm v. Innermost - Complaint

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Case 2:21-cv-04402-MWF-SHK Document 82 Filed 03/26/22 Page 1 of 40 Page ID #:1796

ERIKSON LAW GROUP

5 Attorneys for Plaintiffs Corinna Warm and

FIRST AMENDED COMPLAINT

6 By this action, Plaintiffs seek preliminary and permanent injunctive relief,

7 compensatory damages in an amount to be determined at trial, treble damages, and

11 and unfair competition.

12 JURISDICTION AND VENUE

19 jurisdiction”) and 1338(a)-(b) (“patent, copyright, trademark and unfair competition

21 specifically, Acts of Congress relating to patents, copyrights, trademarks, and unfair

25 controversy under Article III of the United States Constitution.

26 4. Venue is proper in this District pursuant to 28 U.S.C. Section 1391(b)(1)-

3 5. Each of the Defendants is subject to the personal jurisdiction of the Court

2 formed as a Connecticut limited liability company and later converted in or about

5 sale in California. In addition, IMDC consciously and purposefully directs its

6 marketing activity to exploit the California market.

7 10. Defendant LightForm Canada Inc. (“LightForm”) is a company of

10 sale in California. In addition, LightForm consciously and purposefully directs its

11 marketing activity to exploit the California market.

12 11. Defendant Archetype Lighting Sales, LLC (“Archetype”) is a California

16 12. Defendant Light Build Design, Inc. (“LBD”) is a California corporation.

18 infringing designs for sale in California, including on its website,

24 fictitiously named Defendant is responsible in some manner for the occurrences

14 and continues to design and distribute its own collection.

15 16. A graduate of London’s prestigious Central Saint Martins College of Art

21 materials and well crafted, long-lasting design.

22 17. Ms. Warm previously worked as an interior design consultant on luxury

26 Design Festival in 2007. Ms. Warm’s collection of contemporary furniture,

2 its high quality and “contemporary-classic” design.

7 gained global popularity.

8 19. Ms. Warm previously had a licensing relationship with Defendant

11 to associate itself in any way with Ms. Warm or Studio Warm.

26 Circus Pendant Glaze Pendant

1 B. Innermost, IMDC, and LightForm, embarked on a bold and ongoing

10 23. As part of the license agreements between Innermost and Warm,

15 the designs or authorize others to do so.”

16 24. Since terminating the contractual relationship with Innermost in 2017,

18 products on its own and invested significantly in this endeavor.

19 25. Despite having no rights with respect to Warm’s products, Innermost

21 willfully continues to do so to this day despite Warm’s repeated objections. To make

25 below appear on Innermost’s website.

15 other components being identical.

26 Studio Warm’s Circus Single Wall Innermost’s Circus Wall

1 28. Despite Warm’s continuing and vociferous protests and objections to

3 has continued its infringement unabated.

7 originating with Plaintiffs.

8 30. Despite knowing Innermost has no right to market, sell, promote, or

10 marketing, sale, promotion, or distribution of any unauthorized replicas or copies of

13 on their websites, www.imdesignconcepts.com (IMDC) and www.lightformshop.com

14 (LightForm). Defendants have also improperly displayed, marketed, advertised, and

15 sold infringing designs as Ms. Warm’s products, including by LightForm, at the

16 following link: https://www.lightformshop.com/designer-corinna-warm.

17 31. Despite being on notice of Plaintiffs’ protests and objections, Innermost,

21 C. In May 2018, Defendant IMDC acknowledged that unauthorized replicas

17 continued selling the knockoffs as Ms. Warm’s designs.

18 34. Despite being on notice of Plaintiffs’ protests and objections, Innermost

21 States. This constitutes willful infringement.

22 D. After being spurned by Ms. Warm, Defendants produced and sold

26 are unauthorized reproductions of two of Plaintiff’s most recognized collections,

1 36. Innermost has been manufacturing and selling replicas/counterfeits of

4 consumers around the world and in the United States.

5 37. On information and belief, Defendants Innermost, IMDC, Archetype,

7 knockoffs and arrived at a financial arrangement to divvy up the resulting ill-gotten