Case 1:17-cv-03223-RDB Document 1 Filed 11/01/17 Page 1 of 6 UNDER ARMOUR, INC. Plaintiff, IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MARYLAND v. BATTLE FASHIONS, INC. and KELSEY BATTLE, Case No. DEMAND FOR JURY TRIAL Defendants. COMPLAINT FOR DECLARATORY JUDGEMENT OF NON-INFRINGEMENT Plaintiff Under Armour, Inc. ( Plaintiff or Under Armour ), for its Complaint against Battle Fashions, Inc. and Kelsey Battle (collectively, the Defendants ), alleges as follows upon actual knowledge with respect to Under Armour and its own acts, and upon information and belief as to all other matters: NATURE OF THE ACTION 1. Under Armour brings this action for a judgment declaring that its use of the trademarks I CAN DO ALL THINGS and I CAN. I WILL. in connection with its clothing and footwear business does not infringe any trademark rights of Defendants. This action arises out of express allegations by the Defendants that Under Armour infringes Defendants single word grouping of the four letter ICAN trademark and Defendants repeated threats to take legal action and seek injunctive relief against Under Armour. A declaratory ruling is necessary to clarify Under Armour s rights in the phrases I CAN DO ALL THINGS and I CAN. I WILL. trademarks going forward.
Case 1:17-cv-03223-RDB Document 1 Filed 11/01/17 Page 2 of 6 THE PARTIES 2. Under Armour is a Maryland corporation headquartered at 1020 Hull Street, Baltimore, Maryland 21230. 3. Upon information and belief, Defendant Battle Fashions, Inc. is a corporation organized and existing under the laws of the State of North Carolina with a principal place of business located at 6112 Louise Street, Fayetteville, North Carolina 28314-2719. 4. Upon information and belief, Defendant Kelsey Battle is an individual residing in Fayetteville, North Carolina, is the owner of U.S. Trademark Reg. No. 3,081,141, and does business as Battle Fashions and ICAN Clothing. JURISDICTION AND VENUE 5. This action arises and is brought under the Declaratory Judgment Act, 28 U.S.C. 2201-2202, and the Trademark Act of July 5, 1946, as amended, commonly known as the Lanham Act, 15 U.S.C. 1051, et seq. This Court has subject matter jurisdiction pursuant to 15 U.S.C. 1116, 1121, and 1125 and 28 U.S.C. 1331, 1338, and 2201-2202, and has supplemental jurisdiction over any state law claims under 28 U.S.C. 1367. 6. Defendants have affirmatively represented that they have expended and continue to expend considerable time, effort, and money to promote their company, promote and sell products, and promote and use the ICAN mark, throughout the United States, including within this judicial district. This includes active internet and social media marketing by Defendants and their affiliates. 7. Defendants have written and called Under Armour demanding that it cease all use of the phrases I CAN DO ALL THINGS and I CAN. I WILL. Defendants have also written to third parties engaged in business with Under Armour, including at least professional 2
Case 1:17-cv-03223-RDB Document 1 Filed 11/01/17 Page 3 of 6 basketball player Mr. Stephen ( Steph ) Curry, his agent Octagon and Under Armour s advertising agency Droga5, asserting that Under Armour is infringing Defendants ICAN trademark, asserting a likelihood of litigation, and demanding these third parties take action to preserve evidence and cease routine document destruction policies because of their relationship with Under Armour. These third party letters were intended to and had an immediate impact on Under Armour in Maryland. 8. Defendants have established minimum contacts with the forum, including by purposefully availing themselves of the forum, and the exercise of jurisdiction over Defendants would not offend traditional notions of fair play and substantial justice. 9. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b). FACTUAL BACKGROUND 10. Under Armour is a Maryland based company, founded in 1996 by former University of Maryland football player, Kevin Plank, and now one of the world s most successful, popular, and well-known athletic brands. Through Under Armour s innovative use of advanced engineering and technology, Under Armour has revolutionized the performanceproduct industry. 11. Under Armour has used the phrases I Can Do All Things and I Can. I Will. in association with, and promotion of, its products. 12. More specifically, Under Armour uses the phrase I Can Do All Things in connection with a line of products associated with professional basketball player Mr. Stephen Curry. Mr. Curry is known for writing his favorite Bible verse, Philippians 4:13, on his shoes ( I can do all things through Christ who strengthens me. ) 3
Case 1:17-cv-03223-RDB Document 1 Filed 11/01/17 Page 4 of 6 13. Under Armour has also used the phrase I Can. I Will. in connection with its products, including t-shirts bearing this well-known and commonly used inspirational phrase. 14. On January 10, 2017, Defendants, through their counsel at the time, Santucci Priore, P.L., sent a letter to Under Armour, accusing Under Armour of infringing Defendants alleged rights in the single word trademark ICAN. Defendants demanded that Under Armour [c]ease and desist use of the trademarks ICAN, I CAN DO ALL THINGS, and I CAN. I WILL and anything confusingly similar thereto, in any way whatsoever. 15. Under Armour responded to Defendants explaining, among other things, that it was using I Can as part of formative and descriptive phrases, such as I Can Do All Things, that the use was a fair use, that numerous third parties use similar descriptive phrases that begin with I Can, and that confusion was unlikely. Defendants then counsel and Under Armour also had a telephone conversation and follow on correspondence. 16. On October 4, 2017, Defendants, through new counsel, Irell & Manella LLP, sent a letter to Under Armour, again accusing Under Armour of infringing Defendants alleged rights in the single word trademark ICAN, again focusing on Under Armour products bearing the phrase I Can Do All Things. 17. Under Armour has again responded to these allegations, explaining its position that there is no trademark infringement, that it is using the words I Can as part of formative and descriptive phrases, that the use is a fair use, that numerous third parties use similar descriptive phrases that begin with and/or where the focus is on the words I Can, and that confusion is unlikely. To date, however, Defendants have not conceded any of Under Armour s points and Defendants continue to allege infringement. 4
Case 1:17-cv-03223-RDB Document 1 Filed 11/01/17 Page 5 of 6 18. There presently exists a justiciable controversy regarding Under Armour s right to use I Can as part of phrases including I Can Do All Things and I Can. I Will. in association with, and promotion of, its products, free of any allegation by Defendants that such conduct constitutes infringement of any trademark rights allegedly owned by Defendants. FIRST CLAIM FOR RELIEF (Declaratory Relief) 19. Under Armour alleges and incorporates herein the allegations of the preceding paragraphs of this Complaint as if fully set forth herein. 20. As a result of the dispute between the parties, an actual and justiciable controversy exists in that Defendants assert and Under Armour denies that it infringes Defendants ICAN trademark through use of the words I Can in phrases in promotion of, and in connection with, Under Armour s products, including the phrases I Can Do All Things and I Can. I Will. 21. Without a prompt determination of whether Under Armour s use of the phrases I Can Do All Things and I Can. I Will. infringes Defendants ICAN trademark, Under Armour cannot know with certainty whether it is exposing itself to liability. 22. Under Armour is entitled to declaratory judgment that it is not infringing, has not infringed, and is not liable for infringing any allegedly enforceable trademark rights owned by Defendants, pursuant to 15 U.S.C. 1114 and 1125 and any state trademark or unfair competition laws that Defendants assert. 23. A declaratory judgment in this case would serve a useful purpose in clarifying and settling the respective legal rights and obligations of the parties, and it will terminate and afford relief from the uncertainty, insecurity, and controversy giving rise to this proceeding. 5
Case 1:17-cv-03223-RDB Document 1 Filed 11/01/17 Page 6 of 6 PRAYER FOR RELIEF WHEREFORE, Under Armour prays for the following relief: A. A declaration that Under Armour is not infringing, has not infringed, and is not liable for infringing any allegedly enforceable trademark rights owned by Defendants, pursuant to 15 U.S.C. 1114 and 1125 and any state trademark or unfair competition laws that Defendants assert; B. An order awarding attorneys fees, costs, and expenses incurred in connection with this action, to Under Armour, pursuant to 15 U.S.C. 1117(a); and C. An order awarding such other and further relief as this Court deems just and proper. DEMAND FOR A JURY TRIAL Pursuant to Rule 38, Fed. R. Civ. P., Under Armour demands a trial by jury of all issues so triable. Dated: November 1, 2017 VENABLE LLP By: /s/ Roger A. Colaizzi Roger A. Colaizzi (MD Bar No. 11338) Frank C. Cimino, Jr. (Pro Hac Vice to Be filed) Meaghan H. Kent (Pro Hac Vice to Be filed) Claire M. Wheeler (Pro Hac Vice to Be filed) 600 Massachusetts Avenue, NW Washington, DC 20001 Telephone: (202) 344-4000 Facsimile: (202) 344-8300 Attorneys for Plaintiff Under Armour, Inc. 6