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OUI A
SUPERIOR COURT OF CALIFORNIA
COUNTY OF SAN FRANCISCO
Document Scanning Lead Sheet
Aug-24-2012 3:17 pm
Case Number: CGC-10-501168
Filing Date: Aug-24-2012 3:15
Filed by: ANNIE PASCUAL
Juke Box: 001 Image: 03738826
REPLY
JOHNA PECOT et al VS. SAN FRANCISCO DEPUTY SHERIFF'S ASSOCIATION
Aetal
001003738826
Instructions:
Please place this sheet on top of the document to be scanned.Harry S. Stern, SBN 176854
Lara Cullinane-Smith, SBN 268671
RAINS LUCIA STERN, PC
2300 Contra Costa Boulevard, Suite 500
Pleasant Hill, CA 94523
Telephone: 925.609.1699
Facsimile: 925.609.1690
Email: laracsmith@gmail.com
Attorneys for Defendant
ED
ty Suverior Court
AUG 2 4 2012
ee i COURT
SY: Deputy Clerk
San Francisca Count
SAN FRANCISCO DEPUTY SHERIFFS’ ASSOCIATION
SUPERIOR COURT OF THE STATE OF CALIFORNIA
COUNTY OF SAN FRANCISCO
JOHNA PECOT, THOMAS ARATA,
RICH OWYANG, STEPHEN
TILTON, JOSEPH LEAKE, and
OSCAR TAYLOR, Individually and
on behalf of all other similarly
situated,
Plaintiffs,
Vv.
SAN FRANCISCO DEPUTY
SHERIFFS’ ASSOCIATION, a
California Nonprofit Corporation,
SAN FRANCISCO DEPUTY
SHERIFFS' FOUNDATION, a
California Nonprofit Corporation,
DAVID WONG, an individual,
MICHAEL ZEHNER, an individual,
BRIAN SAVAGE, an individual,
SHEDRICK McDANIELS, an
individual, and DOES 1-100,
Defendants.
L
Case # CGC-10-501168
DEFENDANTS SAN FRANCISCO DEPUTY
SHERIFFS’ ASSOCIATION'S REPLY TO
OPPOSITION TO MOTION TO DISQUALIFY
COUNSEL
Date: September 7, 2012
Time: 8:308.m. X 5,
Dept: ore &
INTRODUCTION
The San Francisco Deputy Sheriff's Association respectfully requests that this court
disregard the Opposition of David Wong to the SFDSA’s Motion to Disqualify counsel for the
Foundation, as Wong individually is a separate party represented by separate counsel who does
not have standing to object to this motion. Further, Wong’s motion disregards entirely the real
basis for the motion and the law regarding it. The Court should not be confused by Wong’s
1
DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO
DISQUALIFY COUNSELoem rd DH A FF BN |
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tactics, and should disqualify the firm of OBL in this matter.
Il. ARGUMENT
Wong, individually, does not have standing to oppose this motion, but must do it
through the Foundation. Even if he did, however, the arguments asserted do no show that the
motion is remotely frivolous, and Wong’s arguments fail.
A. WONG INDIVIDUALLY LACKS STANDING TO RAISE THIS ARGUMENT
Wong, through his individually representative counsel, does not have standing to object
to this motion. The motion is against the counsel for the Foundation, not against Larry Murray.
Wong’s personal representation by Murray is not challenged at this time. The conflict arises
out of the representation of the SFDSA and the Foundation. Were Wong individually no longer
an officer of the Foundation, the objection would still stand. Therefore, Wong, individually,
does not have standing to object to this motion.' Instead, the objection must be brought through
counsel for the Foundation.
Further, Wong attempts to get two bites at the apple by objecting individually, yet
requesting a stipulation for time to answer through the Foundation counsel which was initially
approved, but withdrawn after the filing of this motion. This leads to a manifest injustice of
having the SFDSA required to litigate this issue twice, and having initially agreed to a
stipulation on grounds that were clearly false.
Because Wong individually does not have standing to object, and because to allow him
to do so is a manifest injustice, the SFDSA respectfully requests that the Court disregard all
pleadings submitted by Wong individually on this matter, and disallow oral argument by
Wong’s individual counsel, Larry Murray, regarding this motion.
B. REGARDLESS, THE ARGUMENTS RAISED BY WONG INDIVIDUALLY MUST FAIL
Wong’s arguments are based on two points. First, there cannot be a conflict because the
1 During the pendency of this motion, OBL filed an answer in a separate pending lawsuit in Federal court
representing both the Foundation and Wong. Regardless, this motion affects only the representation of the
Foundation by OBL here, and the federal filing does not confer standing on Wong to object in this matter. A copy
of the answer in that case is attached hereto as Exhibit 1. The SFDSA respectfully requests that the Court take
judicial notice of that filing.
2
DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO
DISQUALIFY COUNSELNn
position taken by the foundation against the SFDSA because the SFDSA lost the motion, and
second, that Wong is entitled to possession of the documents requested to be returned and
therefore there is no conflict. This entirely misunderstands the nature of a conflict — the issue is
not who is correct on the substantive issues (and the SFDSA entirely disagrees with Wong’s
legal contentions), but whether the Foundation’s counsel has taken a position adverse to that of
its former client, the SFDSA. Here, it is clear that OBL indeed took such an adverse position,
in both claiming that the Foundation did not have documents when it appears it does, and in
directly opposing a motion filed by its former client in related litigation.
Wong’s motion ignores the law on this subject - the SFDSA merely has to show that a
conflict has arisen in the current and former representation. As noted previously, “A lawyer has
a duty not to ‘do anything which will injuriously affect his former client.”” Knight v. Ferguson,
149 Cal. App. 4th 1207, 1215-16 (2007), citing People ex. rel. Deukmejian v. Brown 29 Cal.3d
150, 156, (1981). Additionally,
The prophylactic approach of 7.C. Theatre does not require the
former client to prove the former attorney possesses confidences
which could be used to the former client's disadvantage. Instead, it
proscribes the subsequent representation solely on the ground that
subsequent representation, because of its substantial relationship to
the former, places the attorney in a situation where he or she could
breach the duty of confidentiality to the former client.
H. F. Ahmanson, 229 Cal. App. 3d at 1452. See also Flatt v. Superior Court, 9 Cal 4" 275, 283
(1994) (“Where the requisite substantial relationship between the subjects of the prior and the
current representations can be demonstrated, access to confidential information by the attorney
in the course of the first representation (relevant, by definition, to the second representation) is
presumed and disqualification of the attorney’s representation of the second client is
mandatory; indeed, the disqualification extends vicariously to the entire firm.”)
Here, it is unarguable that there is a substantial relationship between the prior litigation
and the current one. Wong’s MPA in Opposition does not argue otherwise. OBL has taken a
position adverse to its former client in the current, related litigation. The SFDSA has not
granted a waiver to OBL allowing it to do so. (Exhibit 6, Wilson Decl. ¥ 5). Because the
3
DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO
DISQUALIFY COUNSELCo Oo YN DA WA PF WN
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positions taken by the Foundation in this litigation are contrary to the positions and best
interests of the SEDSA, under well-established case law and the California Rules of
Professional Conduct, because a conflict of interests exists, OBL must be disqualified from
representing the Foundation in this matter.
Ill. CONCLUSION
David Wong individually lack standing to object to this Motion. Further, because there
is a substantial relationship between the prior matter in which OBL represented the SFDSA,
and this matter, in which there is a conflict of interest, the SFDSA respectfully requests that
OBL and its attorneys, including David Ongaro, be disqualified from further representation of
the Foundation.
Dated: August 24, 2012
Respectfully submitted,
RAINS LUCIA STERN, PC
“pe
BY> Hlinane-Smith
Attorneys for San Francisco Deputy Sheriffs’
Association
4
DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO
DISQUALIFY COUNSELEXHIBIT 1Case4:12-cv-03823-DMR Document8 Filed08/15/12 Pagel of 15
DAVID R. ONGARO, State Bar No. 154698
dongaro@obllaw.com
AMELIA D. WINCHESTER, State Bar No. 257928
awinchester@obllaw.com.
ONGARO BURTT & LOUDERBACK LLP
650 California Street, Fifth Floor
San Francisco, CA 94108
Telephone: (415) 433-3900
Facsimile: (415) 433-3950
Attorney for Defendants
SAN FRANCISCO DEPUTY SHERIFFS’
FOUNDATION, INC. and DAVID WONG
UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF CALIFORNIA
SAN FRANCISCO DIVISION
Deputy Sheriff's Association of the City and Case No. CV-12-3823
County of San Francisco, d/b/a San Francisco
Deputy Sheriffs’ Association, a California
corporation, DEFENDANTS SAN FRANCISCO DEPUTY
SHERIFFS’ FOUNDATION, INC. AND
Plaintiffs, DAVID WONG’S ANSWER TO
v. COMPLAINT
SAN FRANCISCO DEPUTY SHERIFFS’
FOUNDATION, INC., d/b/a San Francisco
Deputy Sheriffs’ Association Foundation, Jury Trial Demanded
California corporation; DAVID WONG.
Defendants.
Answer to Complaint, Case No. CV-12-3823 Page 1Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page2 of 15
Defendants SAN FRANCISCO DEPUTY SHERIFFS’ FOUNDATION, INC. (“SFDSF”) and
DAVID WONG (collectively Defendants”) hereby respond to the Complaint as follows:
Defendants admit that Plaintiff Deputy Sheriff's Association of the City and County of San
Francisco (“SFDSA”), by its undersigned counsel, Mastagni, Holstedt, Amick, Miller & Johnsen, are
suing Defendants San Francisco Deputy Sheriffs’ Foundation and David Wong for injunctive,
declaratory, and monetary relief.
THE PARTIES
1. Defendants admit that the SFDSA is a non-profit mutual benefit association with its
principal place of business located at 444 Sixth Street, San Francisco, California. Except as expressly
admitted above, Defendants deny the remaining allegations in Paragraph 1.
2. Defendants admit the allegations in Paragraph 2.
3. Defendants admit the allegations in Paragraph 3
JURISDICTION AND VENUE
4, Defendants admit that this is an action for trademark infringement, unfair competition,
false designation of origin, trademark dissolution and cybersquatting arising under section 43 of the
Lanham Act, 15. U.S.C. section 1125, common law trademark infringement, unfair competition, breach
of fiduciary duty under California law, and unfair competition under California Business and Profession:
Code § 17200, et seq. Defendants are without knowledge or information sufficient to form a belief as to
the remaining allegations in Paragraph 4, and therefore deny them.
5. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 5, and therefore deny them.
6. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 6, and therefore deny them.
7. Defendants admit that Wong and SFDSF reside in Northern California. Defendants are
without knowledge or information sufficient to form a belief as to the remaining allegations in Paragrap!
7, and therefore deny them.
Answer to Complaint, Case No. CV-12-3823 Page 2Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page3 of 15
FACTS
8. Defendants admit that Plaintiff was incorporated in 1952. Defendants are without
knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 8, and
therefore deny them.
9. Defendants admit that Plaintiff represents members in employment and labor matters,
participates in law enforcement-related associations and programs, and that between late 2001 and early
2002 encouraged activities that provide community services. Defendants are without knowledge or
information sufficient to form a belief as to the remaining allegations in Paragraph 9, and therefore deny
them
10. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 10, and therefore deny them.
: 11. Defendants admit that Plaintiff operates internet sites www.sfdsa.org and .
www.sfdsa.com. Defendants are without knowledge or information sufficient to form a belief as to the
remaining allegations in Paragraph 11, and therefore deny them.
12. . Defendants deny that the SFDSA has a long history of marketing its services in a variety
of media. Defendants are without knowledge or information sufficient to form a belief as to the
remaining allegations in Paragraph 12, and therefore deny them.
13. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 13, and therefore deny them.
14. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 14, and therefore deny them.
15. Defendants admit that Plaintiff has used a picture of a gold badge, inlaid drawing of a
bridge and buildings with the words San Francisco Deputy Sheriffs’ Association. Defendants admit that
Plaintiff has used a black and white picture with a badge with the words San Francisco Deputy Sheriffs’
Association on it. Defendants admit that exhibits A and B appear to be pictures used by Plaintiff.
Defendants are without knowledge or information sufficient to form a belief as to the remaining
allegations in Paragraph 15, and therefore deny them. |
Answer to Complaint, Case No. CV-12-3823 Page 3Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page4 of 15
16. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 16, and therefore deny them.
17. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 17, and therefore deny them.
18. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 18, and therefore deny them.
19. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 19, and therefore deny them.
20. Defendants admit that the SFDSF was incorporated in 2004. Defendants admit that at the}
time the SFDSF was incorporated, Wong was president. Defendants admit that Wong incorporated the
SFDSF. Defendants deny the remaining allegations in Paragraph 20.
21. Defendants admit the allegations in Paragraph 21.
22. Defendants deny that the SFSDA funds were used for the SFDSF’s costs and
administrative expenses through 2009. Defendants admit that SFDSA’s funds, with the approval of the
SFDSA, were used for the SFDSF’s administrative costs between 2004 and 2007. Defendants admit that
the SFDSA’s project fund paid for the SFDSF’s incorporation costs. Defendants are without knowledge
or information sufficient to form a belief as to the remaining allegations in Paragraph 22, and therefore
deny them.
23. Defendants admit that between 2004 and 2007, the SFDSF conducted charitable activities|
for the SFDSA. Defendants admit that the following described charitable events took place: “Shop with
a Deputy Sheriff,” school adoptions, and charitable events throughout the community. Defendants deny
the remaining allegations in Paragraph 23.
24. Defendants admit that from 2004 to late 2007, SFDSA money, with the approval of the
SFDSA, was used for SFDSF expenses. Defendants deny that the SFDSA was led to believe that it had
control over SFDSF finances and activities. Defendants are without knowledge or information sufficient
to form a belief as to the remaining allegations in Paragraph 24, and therefore deny them.
Answer to Complaint, Case No. CV-12-3823 Page 4”
N
Case4:12-cv-03823-DMR Document8 Filed08/15/12 PageS of 15
25. Defendants admit that in 2009, Wong lost his bid for reelection to the office of SFDSA
President. Defendants deny the remaining allegations in Paragraph 25.
26. Defendants admit that the SFDSF has operated under the name San Francisco Deputy
Sheriffs’ Foundation and the San Francisco Deputy Sheriffs’ Association Foundation. Defendants admit
that the SFDSF became a separate entity from the SFDSA when it obtained a new entity number from
the IRS. Defendants deny that the SFDSF has used the names San Francisco Deputy Sheriff's
Foundation and San Francisco Sheriff's Deputy Foundation. Defendants are without knowledge or
information sufficient to form a belief as to the remaining allegations in Paragraph 26, and therefore
deny them.
"27. — Defendants admit that the SFDSF has used the name San Francisco Deputy Sheriffs’
Foundation in connection with its advertisement and charity activities, and has issued press releases,
spoken to the media, solicited donations, conducted charitable activities, and conducted business using
the SFDSF name. Defendants admit that Exhibit C appears to contain a document issued by the SFDSF
and images of the SFDSF’s website.
28. Defendants deny the allegations in Paragraph 28.
29. Defendants admit that the SFDSF has used the name San Francisco Deputy Sheriffs’
Association Foundation in connection with their advertisement and charitable activities, has solicited
donations, and conducted business. Defendants admit that Exhibit D appears to be documents
demonstrating the use of the San Francisco Deputy Sheriffs’ Association Foundation name. Defendants
are without knowledge or information sufficient to form a belief as to the remaining allegations in
Paragraph 29 and therefore deny them.
30. Defendants admit that the SFDSF owns and operates the website
www.deputysheriffsfoundation.org, which contains information about the SFDSF. Defendant admits
that there is a “donate” portion of the website. Defendant admits that some of the website’s users likely
reside in Northern California. Defendants admit that Exhibit E appears to be a copy of the SFDSF’s
homepage. Defendants are without knowledge or information sufficient to form a belief as to the
remaining allegations in Paragraph 30, and therefore deny them.
Answer to Complaint, Case No. CV-12-3823 Page 5»
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Case4:12-cv-03823-DMR Documents Filed08/15/12 Page6 of 15
31. Defendants admit that the SFDSF registered the domain name www.sfdsa-foundation.org,
Defendants admit that Exhibit F appears to be a print out of the registration details for the www.sfdsa-
foundation.org domain name. Defendants are without knowledge or information sufficient to form a
belief as to the remaining allegations in Paragraph 31, and therefore deny them.
32. Defendants deny the allegations in Paragraph No. 32.
33. Defendants deny the allegations in Paragraph No. 33.
34. Defendants deny the allegations in Paragraph No. 34.
35. Defendants deny that the SFDSF has used a logo in connection with its services that is
confusingly similar to Plaintiff's logo marks. Defendants admit that Exhibit G appears to be a picture
used by the SFDSF. Defendants are without knowledge or information sufficient to form a belief as to
the remaining allegations in Paragraph 35, and therefore deny them.
36. Defendants deny the allegations in Paragraph No. 36.
37. Defendants deny the allegations in Paragraph No. 37.
38. Defendants deny the allegations in Paragraph No. 38.
39. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 39, and therefore deny them.
40. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 40, and therefore deny them.
41. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 41, and therefore deny them.
42. Defendants admit that Plaintiff has no control over the services promoted, provided, or
advertised by the SFDSF.
43. Defendants admit that the SFDSF is not currently associated, affiliated, or connected with
Plaintiff SFDSA. Defendants are without knowledge or information sufficient to form a belief as to the
remaining allegations in Paragraph 43, and therefore deny them.
Answer to Complaint, Case No. CV-12-3823 Page 6Case4:12-cv-03823-DMR Documents Filed08/15/12 Page? of 15
44. Defendants admit that Wong is the president of the SFDSF. Defendants admit that Wong,
is not employed as a San Francisco Deputy Sheriff. Defendants deny the remaining allegations in
Paragraph 44.
45. Defendants admit that the SFDSA has no authority or consent over the actions of the
SFDSF. Defendants deny the remaining allegations in Paragraph 45.
46. Defendants deny the allegations in Paragraph 46.
47. Defendants deny the allegations in Paragraph 47.
48. Defendants deny that there has been confusingly similar use of the SFDSF logo and
infringing names by Defendants. Defendants are without knowledge or information sufficient to form a
belief as to the remaining allegations in Paragraph 48, and therefore deny them.
49. Defendants deny the allegations in Paragraph 49.
50. Defendants deny the allegations in Paragraph 50.
51. Defendants admit that Plaintiff's counsel sent a letter in October 2011 regarding alleged
trademark infringement by the SFDSF and that counsel for the SFDSF issued a response. Defendants
deny the remaining allegations in Paragraph 51.
52. Defendants admit that Plaintiff's counsel sent a letter in May 2012 regarding alleged
trademark infringement by the SFDSF and counsel for the SFDSF issued a response. Defendants deny
the remaining allegations in Paragraph 52.
53. Defendants deny the allegations in Paragraph 53.
54. Defendants deny the allegations in Paragraph 54.
55. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 55, and therefore deny them.
56. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 56, and therefore deny them.
57. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 57, and therefore deny them.
Answer to Complaint, Case No. CV-12-3823 Page 7»
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Case4:12-cv-03823-DMR Documents Filed08/15/12 Pages of 15
58. Defendants are without knowledge or information sufficient to form a belief as to the
allegations in Paragraph 58, and therefore deny them.
59. Defendants deny the allegations in Paragraph 59.
FIRST CAUSE OF ACTION
(Trademark Infringement, False Designation of Origin, and Unfair Competition, in Violation of
Section 43(a) of the Lanham Act)
(Against All Defendants)
60. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs 1 through 59 as though fully set forth herein.
61. Defendants deny the allegations in Paragraph 61.
62. Defendants deny the allegations in Paragraph 62.
63. Defendants deny the allegations in Paragraph 63.
64. Defendants deny the allegations in Paragraph 64.
65. Defendants deny the allegations in Paragraph 65.
SECOND CAUSE OF ACTION
(Trademark Dilution, in Violation of Section 43(c) of the Lanham Act)
(Against All Defendants)
66. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs 1 through 65 as though fully set forth herein
67. Defendants deny the allegations in Paragraph 67.
68. Defendants deny the allegations in Paragraph 68.
69. Defendants deny the allegations in Paragraph 69.
70. Defendants deny the allegations in Paragraph 70.
. THIRD CAUSE OF ACTION
(Cybersquatting, in Violation of Section 43(d) of the Lanham Act)
(Against All Defendants)
Answer to Complaint, Case No. CV-12-3823 Page 8Case4:12-cv-03823-DMR Documents Filed08/15/12 Page9 of 15
71. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs 1 through 70 as though fully set forth herein.
72. Defendants admit that the SFDSF has registered and/or used the domain names of
www.sfdsa-foundation.org and www.sfdsa-foundation.com. Defendants deny the remaining allegations
in Paragraph 72. :
73. Defendants deny the allegations in Paragraph 73.
74. Defendants deny the allegations in Paragraph 74.
75. ° Defendants admit that the SFDSF has registered and/or used the domain names of
www.sfdsa-foundation.org and www.sfdsa-foundation.com. Defendants deny the remaining allegations
in Paragraph 75.
76. Defendants deny the allegations in Paragraph 76.
77. Defendants deny the allegations in Paragraph 77.
78. Defendants deny the allegations in Paragraph 78.
FOURTH CAUSE OF ACTION
(Common Law Trade Infringement)
(Against All Defendants)
79. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs 1 through 78 as though fully set forth herein.
80. Defendants deny the allegations in Paragraph 80.
81. Defendants deny the allegations in Paragraph 81.
FIFTH CAUSE OF ACTION
(Common Law Unfair Competition)
(Against Defendant SFDSF)
82. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs | through 81 as though fully set forth herein. :
83. Defendants deny the allegations in Paragraph 83.
Answer to Complaint, Case No. CV-12-3823 Page 9Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page10 of 15
84. Defendants deny the allegations in Paragraph 84.
85. Defendants deny the allegations in Paragraph 85.
86. Defendants deny the allegations in Paragraph 86.
SIXTH CAUSE OF ACTION
(Declaratory Judgment)
(Against all Defendants)
87. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs | through 86 as though fully set forth herein.
88. Defendants deny the allegations in Paragraph 88.
89. Defendants deny the allegations in Paragraph 89.
90. Defendants deny the allegations in Paragraph 90.
91. Defendants deny the allegations in Paragraph 91.
92. Defendants deny the allegations in Paragraph 92.
SEVENTH CAUSE OF ACTION
(Breach of Fiduciary Duty)
(Against Defendant Wong)
93. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs 1 through 92 as though fully set forth herein.
94. Defendants admit that while serving as the SFDSA President, he owed a fiduciary duty
the SFDSA.
95. Defendants deny the allegations in Paragraph 95.
96. Defendants deny the allegations in Paragraph 96.
EIGHTH CAUSE OF ACTION
(Unfair Business Practices in Violation of Cal. Bus. & Prof. Code §§ 17200, et seq.)
(Against Defendant SFDSF)
97. Defendants incorporate by reference their responses to the allegations set forth in
Paragraphs | through 96 as though fully set forth herein.
Answer to Complaint, Case No. CV-12-3823 Page 10”
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98. Defendants deny the allegations in Paragraph 98.
99. Defendants deny the allegations in Paragraph 99.
100. Defendants deny the allegations in Paragraph 100.
101. Defendants deny the allegations in Paragraph 101.
102. Defendants deny the allegations in Paragraph 102.
PRAYER FOR RELIEF
Defendants deny that Plaintiff is entitled to any relief, damages, or court judgment. Defendants
deny the allegations in Paragraphs A-N.
JURY TRIAL
Defendants admit that Plaintiff demands a trial by jury on all causes of action.
AFFIRMATIVE DEFENSES
As and for their affirmative defenses, Defendants allege as follows:
FIRST AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff has failed to state a cause of action upon which
relief can be granted and therefore the Complaint should be denied.
‘SECOND AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff's alleged trade dress is not distinctive.
THIRD AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff has not suffered any damages from the alleged
conduct of Defendants.
FOURTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff will be unjustly enriched if allowed to recover
any part of the damages it has allegedly suffered or any other remedy it seeks from the alleged conduct o!
Defendants.
FIFTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Defendant is the lawful owner of, and has a lawful right
to use, the marks of Defendant that Plaintiff describes in the complaint.
Answer to Complaint, Case No. CV-12-3823 Page 11Case4:12-cv-03823-DMR Documents Filed08/15/12 Page12 of 15
SIXTH AFFIRMATIVE DEFENSE
These answering Defendants allege that the claims made in the Complaint and the relief sought
therein are barred by laches, in that Plaintiff has unreasonably delayed efforts to enforce its rights, if any,
despite its full awareness of Defendants’ conduct since Defendant’s inception.
SEVENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that the claims made in the Complaint and the relief sought
therein are barred by the doctrines of waiver, estoppel, and acquiescence in that Plaintiff has
unreasonably delayed efforts to enforce its rights, if any, despite its full awareness of Defendants’
conduct since Defendant’s inception.
EIGHTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff is barred under the doctrine of unclean hands.
Specifically, any false perceptions about Defendants have been caused, in whole or in part, or
perpetuated, by Plaintiff itself, or its agents or representatives, acting individually or collectively.
NINTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff’s claims are barred because Defendant’s
representations do not constitute commercial advertising or promotion under the Lanham Act.
TENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff's claims are barred because it failed to mitigate
damages, if any.
ELEVENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff's claims are barred because they violate
Defendants’ rights under the First Amendment to the Constitution of the United States, which protects
the rights to freedom of speech.
TWELFTH AFFIRMATIVE DEFENSE.
These answering Defendants allege that Defendants acted in good faith.
THIRTEENTH AFFIRMATIVE DEFENSE
Answer to Complaint, Case No. CV-12-3823 Page 12Case4:12-cv-03823-DMR Document’ Filed08/15/12 Page13 of 15
These answering Defendants allege that Plaintiff has no trademark(s), trade names, or trade dress
because Plaintiff's word mark “SAN FRANCISCO DEPUTY SHERIFF’S ASSOCIATION” is primaril
geographically descriptive of the identified goods and services. In the alternative, these answering
Defendants allege that any rights Plaintiff may have in its alleged trademark(s), trade names, or trade
dress are at most entitled to an extremely narrow scope of protection for only the exact words or images.
FOURTEENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that if any trademarks are being used, it is with the
permission or acquiescence of Plaintiff.
FIFTEENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that they possess superior equities in and about the subject
matter of the Complaint and are therefore entitled to judgment in their favor.
SIXTEETH AFFIRMATIVE DEFENSE
These answering Defendants allege that their trademarks, trade names, and trade dress, and
logos, if any, when considered in their entireties, are not confusingly similar to any trademarks, trade
names, and trade dress, and logos, if any, of Plaintiff when considered in their entireties.
SEVENTEENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that the names, marks and logos of Plaintiff, if any, are
invalid, functional, descriptive, of geographical origin and/or generic because Plaintiff's word mark
“SAN FRANCISCO DEPUTY SHERIFF’S ASSOCIATION?” is primarily geographically descriptive of
the identified goods and services, and because the elements of its logo: a seven-point star, a name within
a banner, and composite picture of the Golden Gate Bridge and the San Francisco skyline, are generic,
commonly used and incapable of being distinctive. In the alternative, these answering Defendants allege|
that any rights Plaintiff may have in its alleged names, marks, and logos are at most entitled to an
extremely narrow scope for protection for only the exact words or images.
Answer to Complaint, Case No. CV-12-3823 Page 13Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page14 of 15
EIGHTEENTH AFFIRMATIVE DEFENSE
These answering Defendants allege that Plaintiff is not entitled to any equitable or injunctive
relief as prayed for in the Complaint because Plaintiff has suffered no irreparable injury based upon any
alleged conduct of Defendants, and Plaintiff has an adequate remedy at law for any such conduct.
NINETEETH AFFIRMATIVE DEFENSE
These answering Defendants allege that any claims are barred by the applicable statutes of
limitations. :
TWENTIETH AFFIRMATIVE DEFENSE’
Without admitting the allegations of the Complaint, Defendants allege that Plaintiff's claims are
barred in that the alleged practices did not occur and are not unfair in any event, the public would not
likely be deceived by the alleged practices, Defendants would gain no competitive advantage by such
alleged practices, and the benefits of the alleged practices outweigh any harm or other impact they may
cause. In addition, Plaintiff's claims are barred, in whole or in part, because Defendants’ business
practices are and were not “unlawful.” Defendants’ actions were for legitimate business reasons and
were not based upon a violation of public policy or other factors protected by law.
TWENTY-FIRST AFFIRMATIVE DEFENSE
These answering Defendants allege that any names or marks of Defendant, if any, were never
used or abandoned by Plaintiff.
TWENTY-SECOND AFFIRMATIVE DEFENSE
These answering Defendants allege that the claims of Plaintiff are barred by noncommercial or
fair use.
TWENTY-THIRD AFFIRMATIVE DEFENSE
Wong alleges that the claims of Plaintiff are barred by the business judgment rule, and that his
alleged actions, if any, took place at the approval of Plaintiff.
TWENTY-FOURTH AFFIRMATIVE DEFENSE
Wong alleges that he owes no fiduciary duty to Plaintiff, and that any alleged acts took place
following the time in which he was President of the SFDSA.
Answer to Complaint, Case No. CV-12-3823 Page 14Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page15 of 15
TWENTY-FIFTH AFFIRMATIVE DEFENSE
Wong alleges that he performed all of the duties and obligations he had to Plaintiff, and did not
breach any of his obligations to Plaintiff.
TWENTY-SIXTH AFFIRMATIVE DEFENSE
These answering Defendants allege that because Defendants do not have sufficient information
as to whether they have additional, as yet unstated affirmative defenses, Defendants reserve their rights
to assert other defenses in the event that discovery indicates the defense is appropriate.
JURY TRIAL
Defendants demand a jury trial.
PRAYER FOR RELIEF
WHEREFORE, Defendants request judgment in their favor and against Plaintiff on its Complaint
as follows:
A. Dismissing Plaintiff's complaint with prejudice;
B. Declaring that Plaintiff takes nothing by its Complaint;
C. That no injunction issue or other command to Defendants.as a result of this litigation;
D. Awarding Defendants their reasonable costs and attorneys’ fees to the extent permitted by law;
and
E. Granting such other and further relief as the Court deems just and proper.
* Respectfully submitted,
ONGARO BURTT & LOUDERBACK LLP
DATED: August 15, 2012 /s/ David R. Ongaro
David R. Ongaro
Attorneys for Defendants
SAN FRANCISCO DEPUTY SHERIFFS’
FOUNDATION, INC. and DAVID WONG
Answer to Complaint, Case No. CV-12-3823 Page 15
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OUI A SUPERIOR COURT OF CALIFORNIA COUNTY OF SAN FRANCISCO Document Scanning Lead Sheet Aug-24-2012 3:17 pm Case Number: CGC-10-501168 Filing Date: Aug-24-2012 3:15 Filed by: ANNIE PASCUAL Juke Box: 001 Image: 03738826 REPLY JOHNA PECOT et al VS. SAN FRANCISCO DEPUTY SHERIFF'S ASSOCIATION Aetal 001003738826 Instructions: Please place this sheet on top of the document to be scanned.Harry S. Stern, SBN 176854 Lara Cullinane-Smith, SBN 268671 RAINS LUCIA STERN, PC 2300 Contra Costa Boulevard, Suite 500 Pleasant Hill, CA 94523 Telephone: 925.609.1699 Facsimile: 925.609.1690 Email: laracsmith@gmail.com Attorneys for Defendant ED ty Suverior Court AUG 2 4 2012 ee i COURT SY: Deputy Clerk San Francisca Count SAN FRANCISCO DEPUTY SHERIFFS’ ASSOCIATION SUPERIOR COURT OF THE STATE OF CALIFORNIA COUNTY OF SAN FRANCISCO JOHNA PECOT, THOMAS ARATA, RICH OWYANG, STEPHEN TILTON, JOSEPH LEAKE, and OSCAR TAYLOR, Individually and on behalf of all other similarly situated, Plaintiffs, Vv. SAN FRANCISCO DEPUTY SHERIFFS’ ASSOCIATION, a California Nonprofit Corporation, SAN FRANCISCO DEPUTY SHERIFFS' FOUNDATION, a California Nonprofit Corporation, DAVID WONG, an individual, MICHAEL ZEHNER, an individual, BRIAN SAVAGE, an individual, SHEDRICK McDANIELS, an individual, and DOES 1-100, Defendants. L Case # CGC-10-501168 DEFENDANTS SAN FRANCISCO DEPUTY SHERIFFS’ ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO DISQUALIFY COUNSEL Date: September 7, 2012 Time: 8:308.m. X 5, Dept: ore & INTRODUCTION The San Francisco Deputy Sheriff's Association respectfully requests that this court disregard the Opposition of David Wong to the SFDSA’s Motion to Disqualify counsel for the Foundation, as Wong individually is a separate party represented by separate counsel who does not have standing to object to this motion. Further, Wong’s motion disregards entirely the real basis for the motion and the law regarding it. The Court should not be confused by Wong’s 1 DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO DISQUALIFY COUNSELoem rd DH A FF BN | YPN YN YN N KN DD we ee et = eo a BF FS FF Ge RAARBHRES tactics, and should disqualify the firm of OBL in this matter. Il. ARGUMENT Wong, individually, does not have standing to oppose this motion, but must do it through the Foundation. Even if he did, however, the arguments asserted do no show that the motion is remotely frivolous, and Wong’s arguments fail. A. WONG INDIVIDUALLY LACKS STANDING TO RAISE THIS ARGUMENT Wong, through his individually representative counsel, does not have standing to object to this motion. The motion is against the counsel for the Foundation, not against Larry Murray. Wong’s personal representation by Murray is not challenged at this time. The conflict arises out of the representation of the SFDSA and the Foundation. Were Wong individually no longer an officer of the Foundation, the objection would still stand. Therefore, Wong, individually, does not have standing to object to this motion.' Instead, the objection must be brought through counsel for the Foundation. Further, Wong attempts to get two bites at the apple by objecting individually, yet requesting a stipulation for time to answer through the Foundation counsel which was initially approved, but withdrawn after the filing of this motion. This leads to a manifest injustice of having the SFDSA required to litigate this issue twice, and having initially agreed to a stipulation on grounds that were clearly false. Because Wong individually does not have standing to object, and because to allow him to do so is a manifest injustice, the SFDSA respectfully requests that the Court disregard all pleadings submitted by Wong individually on this matter, and disallow oral argument by Wong’s individual counsel, Larry Murray, regarding this motion. B. REGARDLESS, THE ARGUMENTS RAISED BY WONG INDIVIDUALLY MUST FAIL Wong’s arguments are based on two points. First, there cannot be a conflict because the 1 During the pendency of this motion, OBL filed an answer in a separate pending lawsuit in Federal court representing both the Foundation and Wong. Regardless, this motion affects only the representation of the Foundation by OBL here, and the federal filing does not confer standing on Wong to object in this matter. A copy of the answer in that case is attached hereto as Exhibit 1. The SFDSA respectfully requests that the Court take judicial notice of that filing. 2 DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO DISQUALIFY COUNSELNn position taken by the foundation against the SFDSA because the SFDSA lost the motion, and second, that Wong is entitled to possession of the documents requested to be returned and therefore there is no conflict. This entirely misunderstands the nature of a conflict — the issue is not who is correct on the substantive issues (and the SFDSA entirely disagrees with Wong’s legal contentions), but whether the Foundation’s counsel has taken a position adverse to that of its former client, the SFDSA. Here, it is clear that OBL indeed took such an adverse position, in both claiming that the Foundation did not have documents when it appears it does, and in directly opposing a motion filed by its former client in related litigation. Wong’s motion ignores the law on this subject - the SFDSA merely has to show that a conflict has arisen in the current and former representation. As noted previously, “A lawyer has a duty not to ‘do anything which will injuriously affect his former client.”” Knight v. Ferguson, 149 Cal. App. 4th 1207, 1215-16 (2007), citing People ex. rel. Deukmejian v. Brown 29 Cal.3d 150, 156, (1981). Additionally, The prophylactic approach of 7.C. Theatre does not require the former client to prove the former attorney possesses confidences which could be used to the former client's disadvantage. Instead, it proscribes the subsequent representation solely on the ground that subsequent representation, because of its substantial relationship to the former, places the attorney in a situation where he or she could breach the duty of confidentiality to the former client. H. F. Ahmanson, 229 Cal. App. 3d at 1452. See also Flatt v. Superior Court, 9 Cal 4" 275, 283 (1994) (“Where the requisite substantial relationship between the subjects of the prior and the current representations can be demonstrated, access to confidential information by the attorney in the course of the first representation (relevant, by definition, to the second representation) is presumed and disqualification of the attorney’s representation of the second client is mandatory; indeed, the disqualification extends vicariously to the entire firm.”) Here, it is unarguable that there is a substantial relationship between the prior litigation and the current one. Wong’s MPA in Opposition does not argue otherwise. OBL has taken a position adverse to its former client in the current, related litigation. The SFDSA has not granted a waiver to OBL allowing it to do so. (Exhibit 6, Wilson Decl. ¥ 5). Because the 3 DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO DISQUALIFY COUNSELCo Oo YN DA WA PF WN N NY NO NY NY NY NY VN NY —-— | KF | KF — &® Yaauk FSX sF CeWU_ AF DREBHKREAS positions taken by the Foundation in this litigation are contrary to the positions and best interests of the SEDSA, under well-established case law and the California Rules of Professional Conduct, because a conflict of interests exists, OBL must be disqualified from representing the Foundation in this matter. Ill. CONCLUSION David Wong individually lack standing to object to this Motion. Further, because there is a substantial relationship between the prior matter in which OBL represented the SFDSA, and this matter, in which there is a conflict of interest, the SFDSA respectfully requests that OBL and its attorneys, including David Ongaro, be disqualified from further representation of the Foundation. Dated: August 24, 2012 Respectfully submitted, RAINS LUCIA STERN, PC “pe BY> Hlinane-Smith Attorneys for San Francisco Deputy Sheriffs’ Association 4 DEFENDANT SAN FRANCISCO DEPUTY SHERIFFS' ASSOCIATION'S REPLY TO OPPOSITION TO MOTION TO DISQUALIFY COUNSELEXHIBIT 1Case4:12-cv-03823-DMR Document8 Filed08/15/12 Pagel of 15 DAVID R. ONGARO, State Bar No. 154698 dongaro@obllaw.com AMELIA D. WINCHESTER, State Bar No. 257928 awinchester@obllaw.com. ONGARO BURTT & LOUDERBACK LLP 650 California Street, Fifth Floor San Francisco, CA 94108 Telephone: (415) 433-3900 Facsimile: (415) 433-3950 Attorney for Defendants SAN FRANCISCO DEPUTY SHERIFFS’ FOUNDATION, INC. and DAVID WONG UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF CALIFORNIA SAN FRANCISCO DIVISION Deputy Sheriff's Association of the City and Case No. CV-12-3823 County of San Francisco, d/b/a San Francisco Deputy Sheriffs’ Association, a California corporation, DEFENDANTS SAN FRANCISCO DEPUTY SHERIFFS’ FOUNDATION, INC. AND Plaintiffs, DAVID WONG’S ANSWER TO v. COMPLAINT SAN FRANCISCO DEPUTY SHERIFFS’ FOUNDATION, INC., d/b/a San Francisco Deputy Sheriffs’ Association Foundation, Jury Trial Demanded California corporation; DAVID WONG. Defendants. Answer to Complaint, Case No. CV-12-3823 Page 1Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page2 of 15 Defendants SAN FRANCISCO DEPUTY SHERIFFS’ FOUNDATION, INC. (“SFDSF”) and DAVID WONG (collectively Defendants”) hereby respond to the Complaint as follows: Defendants admit that Plaintiff Deputy Sheriff's Association of the City and County of San Francisco (“SFDSA”), by its undersigned counsel, Mastagni, Holstedt, Amick, Miller & Johnsen, are suing Defendants San Francisco Deputy Sheriffs’ Foundation and David Wong for injunctive, declaratory, and monetary relief. THE PARTIES 1. Defendants admit that the SFDSA is a non-profit mutual benefit association with its principal place of business located at 444 Sixth Street, San Francisco, California. Except as expressly admitted above, Defendants deny the remaining allegations in Paragraph 1. 2. Defendants admit the allegations in Paragraph 2. 3. Defendants admit the allegations in Paragraph 3 JURISDICTION AND VENUE 4, Defendants admit that this is an action for trademark infringement, unfair competition, false designation of origin, trademark dissolution and cybersquatting arising under section 43 of the Lanham Act, 15. U.S.C. section 1125, common law trademark infringement, unfair competition, breach of fiduciary duty under California law, and unfair competition under California Business and Profession: Code § 17200, et seq. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 4, and therefore deny them. 5. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 5, and therefore deny them. 6. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 6, and therefore deny them. 7. Defendants admit that Wong and SFDSF reside in Northern California. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragrap! 7, and therefore deny them. Answer to Complaint, Case No. CV-12-3823 Page 2Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page3 of 15 FACTS 8. Defendants admit that Plaintiff was incorporated in 1952. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 8, and therefore deny them. 9. Defendants admit that Plaintiff represents members in employment and labor matters, participates in law enforcement-related associations and programs, and that between late 2001 and early 2002 encouraged activities that provide community services. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 9, and therefore deny them 10. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 10, and therefore deny them. : 11. Defendants admit that Plaintiff operates internet sites www.sfdsa.org and . www.sfdsa.com. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 11, and therefore deny them. 12. . Defendants deny that the SFDSA has a long history of marketing its services in a variety of media. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 12, and therefore deny them. 13. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 13, and therefore deny them. 14. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 14, and therefore deny them. 15. Defendants admit that Plaintiff has used a picture of a gold badge, inlaid drawing of a bridge and buildings with the words San Francisco Deputy Sheriffs’ Association. Defendants admit that Plaintiff has used a black and white picture with a badge with the words San Francisco Deputy Sheriffs’ Association on it. Defendants admit that exhibits A and B appear to be pictures used by Plaintiff. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 15, and therefore deny them. | Answer to Complaint, Case No. CV-12-3823 Page 3Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page4 of 15 16. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 16, and therefore deny them. 17. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 17, and therefore deny them. 18. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 18, and therefore deny them. 19. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 19, and therefore deny them. 20. Defendants admit that the SFDSF was incorporated in 2004. Defendants admit that at the} time the SFDSF was incorporated, Wong was president. Defendants admit that Wong incorporated the SFDSF. Defendants deny the remaining allegations in Paragraph 20. 21. Defendants admit the allegations in Paragraph 21. 22. Defendants deny that the SFSDA funds were used for the SFDSF’s costs and administrative expenses through 2009. Defendants admit that SFDSA’s funds, with the approval of the SFDSA, were used for the SFDSF’s administrative costs between 2004 and 2007. Defendants admit that the SFDSA’s project fund paid for the SFDSF’s incorporation costs. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 22, and therefore deny them. 23. Defendants admit that between 2004 and 2007, the SFDSF conducted charitable activities| for the SFDSA. Defendants admit that the following described charitable events took place: “Shop with a Deputy Sheriff,” school adoptions, and charitable events throughout the community. Defendants deny the remaining allegations in Paragraph 23. 24. Defendants admit that from 2004 to late 2007, SFDSA money, with the approval of the SFDSA, was used for SFDSF expenses. Defendants deny that the SFDSA was led to believe that it had control over SFDSF finances and activities. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 24, and therefore deny them. Answer to Complaint, Case No. CV-12-3823 Page 4” N Case4:12-cv-03823-DMR Document8 Filed08/15/12 PageS of 15 25. Defendants admit that in 2009, Wong lost his bid for reelection to the office of SFDSA President. Defendants deny the remaining allegations in Paragraph 25. 26. Defendants admit that the SFDSF has operated under the name San Francisco Deputy Sheriffs’ Foundation and the San Francisco Deputy Sheriffs’ Association Foundation. Defendants admit that the SFDSF became a separate entity from the SFDSA when it obtained a new entity number from the IRS. Defendants deny that the SFDSF has used the names San Francisco Deputy Sheriff's Foundation and San Francisco Sheriff's Deputy Foundation. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 26, and therefore deny them. "27. — Defendants admit that the SFDSF has used the name San Francisco Deputy Sheriffs’ Foundation in connection with its advertisement and charity activities, and has issued press releases, spoken to the media, solicited donations, conducted charitable activities, and conducted business using the SFDSF name. Defendants admit that Exhibit C appears to contain a document issued by the SFDSF and images of the SFDSF’s website. 28. Defendants deny the allegations in Paragraph 28. 29. Defendants admit that the SFDSF has used the name San Francisco Deputy Sheriffs’ Association Foundation in connection with their advertisement and charitable activities, has solicited donations, and conducted business. Defendants admit that Exhibit D appears to be documents demonstrating the use of the San Francisco Deputy Sheriffs’ Association Foundation name. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 29 and therefore deny them. 30. Defendants admit that the SFDSF owns and operates the website www.deputysheriffsfoundation.org, which contains information about the SFDSF. Defendant admits that there is a “donate” portion of the website. Defendant admits that some of the website’s users likely reside in Northern California. Defendants admit that Exhibit E appears to be a copy of the SFDSF’s homepage. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 30, and therefore deny them. Answer to Complaint, Case No. CV-12-3823 Page 5» N Case4:12-cv-03823-DMR Documents Filed08/15/12 Page6 of 15 31. Defendants admit that the SFDSF registered the domain name www.sfdsa-foundation.org, Defendants admit that Exhibit F appears to be a print out of the registration details for the www.sfdsa- foundation.org domain name. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 31, and therefore deny them. 32. Defendants deny the allegations in Paragraph No. 32. 33. Defendants deny the allegations in Paragraph No. 33. 34. Defendants deny the allegations in Paragraph No. 34. 35. Defendants deny that the SFDSF has used a logo in connection with its services that is confusingly similar to Plaintiff's logo marks. Defendants admit that Exhibit G appears to be a picture used by the SFDSF. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 35, and therefore deny them. 36. Defendants deny the allegations in Paragraph No. 36. 37. Defendants deny the allegations in Paragraph No. 37. 38. Defendants deny the allegations in Paragraph No. 38. 39. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 39, and therefore deny them. 40. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 40, and therefore deny them. 41. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 41, and therefore deny them. 42. Defendants admit that Plaintiff has no control over the services promoted, provided, or advertised by the SFDSF. 43. Defendants admit that the SFDSF is not currently associated, affiliated, or connected with Plaintiff SFDSA. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 43, and therefore deny them. Answer to Complaint, Case No. CV-12-3823 Page 6Case4:12-cv-03823-DMR Documents Filed08/15/12 Page? of 15 44. Defendants admit that Wong is the president of the SFDSF. Defendants admit that Wong, is not employed as a San Francisco Deputy Sheriff. Defendants deny the remaining allegations in Paragraph 44. 45. Defendants admit that the SFDSA has no authority or consent over the actions of the SFDSF. Defendants deny the remaining allegations in Paragraph 45. 46. Defendants deny the allegations in Paragraph 46. 47. Defendants deny the allegations in Paragraph 47. 48. Defendants deny that there has been confusingly similar use of the SFDSF logo and infringing names by Defendants. Defendants are without knowledge or information sufficient to form a belief as to the remaining allegations in Paragraph 48, and therefore deny them. 49. Defendants deny the allegations in Paragraph 49. 50. Defendants deny the allegations in Paragraph 50. 51. Defendants admit that Plaintiff's counsel sent a letter in October 2011 regarding alleged trademark infringement by the SFDSF and that counsel for the SFDSF issued a response. Defendants deny the remaining allegations in Paragraph 51. 52. Defendants admit that Plaintiff's counsel sent a letter in May 2012 regarding alleged trademark infringement by the SFDSF and counsel for the SFDSF issued a response. Defendants deny the remaining allegations in Paragraph 52. 53. Defendants deny the allegations in Paragraph 53. 54. Defendants deny the allegations in Paragraph 54. 55. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 55, and therefore deny them. 56. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 56, and therefore deny them. 57. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 57, and therefore deny them. Answer to Complaint, Case No. CV-12-3823 Page 7» w Case4:12-cv-03823-DMR Documents Filed08/15/12 Pages of 15 58. Defendants are without knowledge or information sufficient to form a belief as to the allegations in Paragraph 58, and therefore deny them. 59. Defendants deny the allegations in Paragraph 59. FIRST CAUSE OF ACTION (Trademark Infringement, False Designation of Origin, and Unfair Competition, in Violation of Section 43(a) of the Lanham Act) (Against All Defendants) 60. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs 1 through 59 as though fully set forth herein. 61. Defendants deny the allegations in Paragraph 61. 62. Defendants deny the allegations in Paragraph 62. 63. Defendants deny the allegations in Paragraph 63. 64. Defendants deny the allegations in Paragraph 64. 65. Defendants deny the allegations in Paragraph 65. SECOND CAUSE OF ACTION (Trademark Dilution, in Violation of Section 43(c) of the Lanham Act) (Against All Defendants) 66. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs 1 through 65 as though fully set forth herein 67. Defendants deny the allegations in Paragraph 67. 68. Defendants deny the allegations in Paragraph 68. 69. Defendants deny the allegations in Paragraph 69. 70. Defendants deny the allegations in Paragraph 70. . THIRD CAUSE OF ACTION (Cybersquatting, in Violation of Section 43(d) of the Lanham Act) (Against All Defendants) Answer to Complaint, Case No. CV-12-3823 Page 8Case4:12-cv-03823-DMR Documents Filed08/15/12 Page9 of 15 71. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs 1 through 70 as though fully set forth herein. 72. Defendants admit that the SFDSF has registered and/or used the domain names of www.sfdsa-foundation.org and www.sfdsa-foundation.com. Defendants deny the remaining allegations in Paragraph 72. : 73. Defendants deny the allegations in Paragraph 73. 74. Defendants deny the allegations in Paragraph 74. 75. ° Defendants admit that the SFDSF has registered and/or used the domain names of www.sfdsa-foundation.org and www.sfdsa-foundation.com. Defendants deny the remaining allegations in Paragraph 75. 76. Defendants deny the allegations in Paragraph 76. 77. Defendants deny the allegations in Paragraph 77. 78. Defendants deny the allegations in Paragraph 78. FOURTH CAUSE OF ACTION (Common Law Trade Infringement) (Against All Defendants) 79. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs 1 through 78 as though fully set forth herein. 80. Defendants deny the allegations in Paragraph 80. 81. Defendants deny the allegations in Paragraph 81. FIFTH CAUSE OF ACTION (Common Law Unfair Competition) (Against Defendant SFDSF) 82. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs | through 81 as though fully set forth herein. : 83. Defendants deny the allegations in Paragraph 83. Answer to Complaint, Case No. CV-12-3823 Page 9Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page10 of 15 84. Defendants deny the allegations in Paragraph 84. 85. Defendants deny the allegations in Paragraph 85. 86. Defendants deny the allegations in Paragraph 86. SIXTH CAUSE OF ACTION (Declaratory Judgment) (Against all Defendants) 87. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs | through 86 as though fully set forth herein. 88. Defendants deny the allegations in Paragraph 88. 89. Defendants deny the allegations in Paragraph 89. 90. Defendants deny the allegations in Paragraph 90. 91. Defendants deny the allegations in Paragraph 91. 92. Defendants deny the allegations in Paragraph 92. SEVENTH CAUSE OF ACTION (Breach of Fiduciary Duty) (Against Defendant Wong) 93. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs 1 through 92 as though fully set forth herein. 94. Defendants admit that while serving as the SFDSA President, he owed a fiduciary duty the SFDSA. 95. Defendants deny the allegations in Paragraph 95. 96. Defendants deny the allegations in Paragraph 96. EIGHTH CAUSE OF ACTION (Unfair Business Practices in Violation of Cal. Bus. & Prof. Code §§ 17200, et seq.) (Against Defendant SFDSF) 97. Defendants incorporate by reference their responses to the allegations set forth in Paragraphs | through 96 as though fully set forth herein. Answer to Complaint, Case No. CV-12-3823 Page 10” y Case4:12-cv-03823-DMR Documents Filed08/15/12 Page11 of 15 98. Defendants deny the allegations in Paragraph 98. 99. Defendants deny the allegations in Paragraph 99. 100. Defendants deny the allegations in Paragraph 100. 101. Defendants deny the allegations in Paragraph 101. 102. Defendants deny the allegations in Paragraph 102. PRAYER FOR RELIEF Defendants deny that Plaintiff is entitled to any relief, damages, or court judgment. Defendants deny the allegations in Paragraphs A-N. JURY TRIAL Defendants admit that Plaintiff demands a trial by jury on all causes of action. AFFIRMATIVE DEFENSES As and for their affirmative defenses, Defendants allege as follows: FIRST AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff has failed to state a cause of action upon which relief can be granted and therefore the Complaint should be denied. ‘SECOND AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff's alleged trade dress is not distinctive. THIRD AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff has not suffered any damages from the alleged conduct of Defendants. FOURTH AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff will be unjustly enriched if allowed to recover any part of the damages it has allegedly suffered or any other remedy it seeks from the alleged conduct o! Defendants. FIFTH AFFIRMATIVE DEFENSE These answering Defendants allege that Defendant is the lawful owner of, and has a lawful right to use, the marks of Defendant that Plaintiff describes in the complaint. Answer to Complaint, Case No. CV-12-3823 Page 11Case4:12-cv-03823-DMR Documents Filed08/15/12 Page12 of 15 SIXTH AFFIRMATIVE DEFENSE These answering Defendants allege that the claims made in the Complaint and the relief sought therein are barred by laches, in that Plaintiff has unreasonably delayed efforts to enforce its rights, if any, despite its full awareness of Defendants’ conduct since Defendant’s inception. SEVENTH AFFIRMATIVE DEFENSE These answering Defendants allege that the claims made in the Complaint and the relief sought therein are barred by the doctrines of waiver, estoppel, and acquiescence in that Plaintiff has unreasonably delayed efforts to enforce its rights, if any, despite its full awareness of Defendants’ conduct since Defendant’s inception. EIGHTH AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff is barred under the doctrine of unclean hands. Specifically, any false perceptions about Defendants have been caused, in whole or in part, or perpetuated, by Plaintiff itself, or its agents or representatives, acting individually or collectively. NINTH AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff’s claims are barred because Defendant’s representations do not constitute commercial advertising or promotion under the Lanham Act. TENTH AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff's claims are barred because it failed to mitigate damages, if any. ELEVENTH AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff's claims are barred because they violate Defendants’ rights under the First Amendment to the Constitution of the United States, which protects the rights to freedom of speech. TWELFTH AFFIRMATIVE DEFENSE. These answering Defendants allege that Defendants acted in good faith. THIRTEENTH AFFIRMATIVE DEFENSE Answer to Complaint, Case No. CV-12-3823 Page 12Case4:12-cv-03823-DMR Document’ Filed08/15/12 Page13 of 15 These answering Defendants allege that Plaintiff has no trademark(s), trade names, or trade dress because Plaintiff's word mark “SAN FRANCISCO DEPUTY SHERIFF’S ASSOCIATION” is primaril geographically descriptive of the identified goods and services. In the alternative, these answering Defendants allege that any rights Plaintiff may have in its alleged trademark(s), trade names, or trade dress are at most entitled to an extremely narrow scope of protection for only the exact words or images. FOURTEENTH AFFIRMATIVE DEFENSE These answering Defendants allege that if any trademarks are being used, it is with the permission or acquiescence of Plaintiff. FIFTEENTH AFFIRMATIVE DEFENSE These answering Defendants allege that they possess superior equities in and about the subject matter of the Complaint and are therefore entitled to judgment in their favor. SIXTEETH AFFIRMATIVE DEFENSE These answering Defendants allege that their trademarks, trade names, and trade dress, and logos, if any, when considered in their entireties, are not confusingly similar to any trademarks, trade names, and trade dress, and logos, if any, of Plaintiff when considered in their entireties. SEVENTEENTH AFFIRMATIVE DEFENSE These answering Defendants allege that the names, marks and logos of Plaintiff, if any, are invalid, functional, descriptive, of geographical origin and/or generic because Plaintiff's word mark “SAN FRANCISCO DEPUTY SHERIFF’S ASSOCIATION?” is primarily geographically descriptive of the identified goods and services, and because the elements of its logo: a seven-point star, a name within a banner, and composite picture of the Golden Gate Bridge and the San Francisco skyline, are generic, commonly used and incapable of being distinctive. In the alternative, these answering Defendants allege| that any rights Plaintiff may have in its alleged names, marks, and logos are at most entitled to an extremely narrow scope for protection for only the exact words or images. Answer to Complaint, Case No. CV-12-3823 Page 13Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page14 of 15 EIGHTEENTH AFFIRMATIVE DEFENSE These answering Defendants allege that Plaintiff is not entitled to any equitable or injunctive relief as prayed for in the Complaint because Plaintiff has suffered no irreparable injury based upon any alleged conduct of Defendants, and Plaintiff has an adequate remedy at law for any such conduct. NINETEETH AFFIRMATIVE DEFENSE These answering Defendants allege that any claims are barred by the applicable statutes of limitations. : TWENTIETH AFFIRMATIVE DEFENSE’ Without admitting the allegations of the Complaint, Defendants allege that Plaintiff's claims are barred in that the alleged practices did not occur and are not unfair in any event, the public would not likely be deceived by the alleged practices, Defendants would gain no competitive advantage by such alleged practices, and the benefits of the alleged practices outweigh any harm or other impact they may cause. In addition, Plaintiff's claims are barred, in whole or in part, because Defendants’ business practices are and were not “unlawful.” Defendants’ actions were for legitimate business reasons and were not based upon a violation of public policy or other factors protected by law. TWENTY-FIRST AFFIRMATIVE DEFENSE These answering Defendants allege that any names or marks of Defendant, if any, were never used or abandoned by Plaintiff. TWENTY-SECOND AFFIRMATIVE DEFENSE These answering Defendants allege that the claims of Plaintiff are barred by noncommercial or fair use. TWENTY-THIRD AFFIRMATIVE DEFENSE Wong alleges that the claims of Plaintiff are barred by the business judgment rule, and that his alleged actions, if any, took place at the approval of Plaintiff. TWENTY-FOURTH AFFIRMATIVE DEFENSE Wong alleges that he owes no fiduciary duty to Plaintiff, and that any alleged acts took place following the time in which he was President of the SFDSA. Answer to Complaint, Case No. CV-12-3823 Page 14Case4:12-cv-03823-DMR Document8 Filed08/15/12 Page15 of 15 TWENTY-FIFTH AFFIRMATIVE DEFENSE Wong alleges that he performed all of the duties and obligations he had to Plaintiff, and did not breach any of his obligations to Plaintiff. TWENTY-SIXTH AFFIRMATIVE DEFENSE These answering Defendants allege that because Defendants do not have sufficient information as to whether they have additional, as yet unstated affirmative defenses, Defendants reserve their rights to assert other defenses in the event that discovery indicates the defense is appropriate. JURY TRIAL Defendants demand a jury trial. PRAYER FOR RELIEF WHEREFORE, Defendants request judgment in their favor and against Plaintiff on its Complaint as follows: A. Dismissing Plaintiff's complaint with prejudice; B. Declaring that Plaintiff takes nothing by its Complaint; C. That no injunction issue or other command to Defendants.as a result of this litigation; D. Awarding Defendants their reasonable costs and attorneys’ fees to the extent permitted by law; and E. Granting such other and further relief as the Court deems just and proper. * Respectfully submitted, ONGARO BURTT & LOUDERBACK LLP DATED: August 15, 2012 /s/ David R. Ongaro David R. Ongaro Attorneys for Defendants SAN FRANCISCO DEPUTY SHERIFFS’ FOUNDATION, INC. and DAVID WONG Answer to Complaint, Case No. CV-12-3823 Page 15