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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
John N. Iurino (SBN 006574) [email protected] LEWIS ROCA ROTHBERGER, LLP One South Church Avenue, Suite 700 Tucson, Arizona 85701-1611 Tel: (520) 629-4432 Fax: (520) 879-4711 Kirk M. Hallam (Pro Hac Vice application forthcoming) [email protected] Nicholas J. Hoffman (Pro Hac Vice application forthcoming) [email protected] HALLAM & HOFFMAN, Attorneys at Law 201 Santa Monica Boulevard, Suite 300 Santa Monica, California 90401 Tel: (310) 393-4006 Fax: (310) 564-7623 Attorneys for Plaintiff Lisa Frank, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF ARIZONA Lisa Frank, Inc., an Arizona corporation, Plaintiff, vs. The Orb Factory Limited, a Canadian corporation, Defendant.
Case No. VERIFIED COMPLAINT AND DEMAND FOR JURY TRIAL
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 1 of 25
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1 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
Plaintiff, Lisa Frank, Inc. alleges:
Nature of the Action
1. Lisa Frank, Inc. ("LFI") has, since 1979, produced and distributed, and
licensed others to produce and distribute, unique items of stationery, school supplies,
toys, activity sets and other products designed principally for girls and young women,
bearing the distinctive artwork of LFI's President and CEO, Lisa Frank. Over the last
37 years the Lisa Frank brand has attained iconic status and a dedicated following
within its target market because of the unique look and quality of LFI's product line.
Sales have been sustained over the life of the brand. LFI products are currently sold
in retail stores nationwide and on-line.
2. Defendant, The Orb Factory Limited ("Orb Factory" or "Defendant"),
offers for sale and sells online at http://www.orbfactory.com and through various
retailers including Wal-Mart and Amazon.com, among other things, products that
utilize packaging and product design that imitate LFI packaging and products by
appropriating the distinctive look and feel of Lisa Frank's packaging and products as
they are presented to consumers, and that infringe LFI's trade dress rights and
copyrights. Defendant's actions are likely to cause confusion as to the origin of
Defendant's infringing products and as to the connection or association of Defendant
with LFI, when there is none. LFI is compelled to bring this action to ensure
Defendant ceases offering for sale and selling infringing packaging and products and
to seek damages and other relief as prescribed by law for Defendant's infringements
of LFI's intellectual property rights.
3. By this action LFI seeks permanent injunctive relief, money damages,
and attorneys' fees arising from Defendant's (i) infringement of LFI's trade dress and
unregistered trademarks and unfair competition in violation of §43 of the Lanham
Trademark Act of 1946 as amended ("Lanham Act"), 15 U.S.C. §1125(a); (ii) unfair
competition in violation of Arizona common law; and (iii) infringement of LFI's
copyrights in violation of the Copyright Act of 1976, 17 U.S.C. §101 et seq.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 2 of 25
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2 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
Jurisdiction and Venue
4. This Court has original federal question jurisdiction and supplemental
jurisdiction over this action pursuant to 15 U.S.C. §1121 and 28 U.S.C. §1331,
§1332, §1338 and §1367(a), as this case arises under the Lanham Act and the U.S.
Copyright Act.
5. Venue is proper in this District under 28 U.S.C. §1391(b) and (c)
because a substantial part of the events or omissions giving rise to the claim occurred
and continue to occur in this District and because Defendant is doing business in this
District.
6. Upon information and belief, Defendant is subject to general and
specific jurisdiction of this Court by virtue of its substantial contacts with Arizona,
including, but not limited to, doing business in Arizona, marketing its products to
consumers in Arizona, and operating an active website through which consumers in
Arizona can purchase Defendant's infringing products. Defendant has had and
continues to have significant contact with the state of Arizona and has purposefully
availed itself of Arizona's laws.
The Parties
7. Plaintiff, LFI, is an Arizona corporation with its principal place of
business at 6760 S. Lisa Frank Avenue, Tucson, Arizona, in this District. LFI
licenses its original art work and intellectual property for use on a wide range of
products nationwide designed primarily for the young female and young adult female
markets. LFI owns (a) registered copyrights for artwork used on its licensed products
and packaging; (b) registered and unregistered trademarks used in connection with its
licensed products and packaging; and (c) trade dress rights in the distinctive look and
feel of its licensed products and packaging.
8. Orb Factory is, on information and belief, a Canadian corporation with
its principal place of business at 225 Herring Cove Road, Halifax, Nova Scotia, B3P
1L3, Canada. Orb Factory offers for sale and sells toys and children's' activity
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 3 of 25
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3 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
products and competes directly with LFI's licensees and indirectly with LFI in the
U.S. market. Upon information and belief, Orb Factory offers for sale and sells
products that appropriate LFI's trade dress such that they are confusingly similar to
LFI's products, and that reproduce LFI's copyrighted works or that utilize derivative
works based upon LFI's copyrighted works.
The Lisa Frank Story
9. In 1979 Lisa Frank founded LFI to design, make and sell products and
packaging bearing her distinctive original artwork, especially for girls between the
ages of 6 and 14. That same year LFI received its first million-dollar order for
stickers from U.S. national retailer Spencer Gifts. From stickers LFI expanded its
product range to include back-to-school supplies, stationery, toys and activity sets, all
bearing Lisa Frank's distinctive artwork.
10. Over the last 37 years LFI has enjoyed significant commercial success.
LFI transitioned from a manufacturing and distribution company to a licensing
company in 2010. LFI receives a large number of licensing requests for its
intellectual property from companies desirous of using it to target girls and young
women for their products. LFI licenses a wide range of product lines featuring Lisa
Frank artwork and LFI intellectual property including school supplies, stationery,
backpacks, crafts, cosmetics, electronic goods, clothing, shoes, jewelry, bedding, toys
and fashion accessories. LFI licensed products are packaged, marketed and sold
using LFI's distinctive trade dress, trademarks and copyrighted designs on the outside
of the products and their packaging which serve to identify them to consumers at the
purchase point as Lisa Frank branded products. LFI's products are sold in retail
locations throughout the United States and online.
11. LFI's current business is licensing its copyrighted artwork and
proprietary trademarks and trade dress. The value of that business is thus directly
correlative to the actual and perceived exclusivity and quality, and the effective
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 4 of 25
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4 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
protection from unauthorized use, of that copyrighted artwork, trademarks and trade
dress.
12. Through contract obligations and inspection and approval mechanisms
incorporated into its license agreements, LFI exerts rigorous quality controls over the
use of its copyrighted artwork, trademarks and trade dress, and all products
incorporating any elements of the same.
13. Over the course of its business, LFI has incurred significant expenditure
in advertising and promoting the Lisa Frank brand, initially through print
advertisements, direct mailings, in-store signs, displays and other point-of-purchase
materials and latterly additionally through social media, including Facebook and the
internet.
14. LFI's advertising and promotion utilizes and has the look and feel of
LFI's artwork and trade dress, including its unique color combinations, and
distinctive fanciful designs and characters.
Plaintiff's Distinctive Trade Dress
15. LFI's use, combination and choice of colors, trademarks, graphics and
designs is based upon its founder Lisa Frank's beliefs about the communicative
power of color, market research and feedback from LFI's enthusiastic fan base. Lisa
Frank herself remains personally involved in the creation and development of LFI's
art and designs. The resulting unique and distinctive look and feel of LFI products
has been and remains consistent over time and throughout LFI's product lines.
16. LFI's trade dress is a protectable asset of substantial value to LFI.
Licensees are willing to pay significant royalties for the right to use LFI trade dress
with their products and on their packaging so as to identify them as Lisa Frank
products for consumers and meet consumer demand for Lisa Frank products.
17. LFI's trade dress displays bold and highly detailed graphics and designs,
intense, extraordinary color combinations with a high degree of detail, and crisp,
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 5 of 25
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5 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
precise, bold and vibrant colors, including use of rainbow colors that gradually fade
into one another along the package or product. Each LFI product is crafted, designed
and packaged with an emphasis on color, design and attention to detail to achieve the
distinctively recognizable look and feel that is associated with the Lisa Frank brand
and products.
18. LFI's trade dress is comprised of the combination of some or all of the
following elements, depending upon the product and its packaging, that create a
unique overall image and distinct visual impression, and are protectable as a whole:
(1) brightly colored bold graphics of distinctive animal characters depicted
individually or grouped with one or more other such characters, with rainbow colored
features, large eyes, and happy, friendly expressions; (2) use of brilliant, often
rainbow sequenced, colors, graduated color sequences, and rainbow colors that fade
into one another, including the use of the distinctively bright "Lisa Frank shades of
pink" (using a customized ink formula that is a LFI trade secret); (3) package, cover
and product surface designs featuring, in addition to the distinctive animal characters,
combinations of rainbows, flowers, ice cream cones, butterflies, birds, rabbits, fish,
cupcakes, bubbles, peace symbols, random words, hearts, happy faces, and stars,
often in groups including colorful backgrounds employing rainbow colors, color
fades and Lisa frank pink, props and landscape features such as trees, pools, and
snow; and (4) product packaging incorporating the look and feel of the products.
19. Market and retail experts recognize that LFI's distinctive styles and color
schemes on the exterior or, if present, packaging, of the products make LFI Products
stand out on store shelves and retail displays.
Plaintiff's Valuable Copyrights
20. LFI's own as well as its licensed products and packaging include
material wholly original to LFI that is copyrightable subject matter under the laws of
the United States, in particular 17 U.S.C. §102.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 6 of 25
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6 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
21. The U.S. Registrar of Copyrights has issued over 400 certificates of
registration to LFI for its collection of graphics and designs used on or with LFI
products. LFI now owns and at all relevant times has owned the copyrights for many
of the graphics and designs used on LFI's own and licensed products and packaging.
LFI's production, distribution and licensing of LFI products is and has at all times
been in strict compliance with the Copyright Act of 1976 and all other laws
governing copyright.
22. LFI's copyrights are protectable assets of substantial value to LFI.
Licensees are willing to pay significant royalties for the right to use LFI's copyright
works with their products and packaging so as to meet consumer demand for Lisa
Frank products.
23. LFI's copyright registrations cover, inter alia, some of the designs
contained in LFI's distinctive trade dress.
Defendant's Imitative Products Unfairly Trade on
Lisa Frank's Goodwill and Success
24. Defendant offers for sale and sells products that appropriate LFI trade
dress and that are substantially and confusingly similar to LFI products.
25. Defendant's products and packaging misappropriate the look and feel of
LFI's trade dress in such a manner as to confuse consumers and lead them to believe
that Defendant's products originate with or are approved by LFI and/or that
Defendant has some affiliation or connection with LFI, when such is not the case.
26. Defendant's products and product packaging listed below use in
commerce images and designs that are similar enough to images and designs
comprised in LFI trade dress that their use individually or together is likely to cause
confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
association of Defendant with LFI, or as to the origin, sponsorship, or approval of
Defendant's goods, or commercial activities by LFI. The use of these images in this
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 7 of 25
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7 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
way imparts to Defendant's products as presented to the consumer an overall visual
impression and look and feel of a genuine authorized and licensed LFI product.
27. Defendant's products referred to in the preceding paragraph include
Defendant's product lines "PlushCraft" pillow products, "Sticky Mosaics,"
"Stickeez," and "Plusheez," and products related thereto, as pictured below: PlushCraft:
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 8 of 25
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8 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
Sticky Mosaics: Stickeez:
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 9 of 25
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9 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
Plusheez:
28. Defendant has appropriated LFI's trade dress so as to capitalize on LFI's
good will and commercial success, and is passing off its products to consumers as
originating from LFI or authorized by LFI, to LFI's substantial detriment.
Defendant's Products Copy Plaintiff's Copyrighted Works
29. Defendant's products and packaging copy and infringe at least the
following LFI copyrighted works identified here by their U.S. Copyright registration
numbers: VA0001892013 (Mischief {the unicorn}), VA0001373728 (Forrest {the
tiger}), VA0001005200 (Surfing Dolphins), VAu000707146 (Dancing Dolphins).
LFI's registered copyrighted work(s) and Orb Factory's infringing products and
packaging are pictured below on the left and right, respectively):
VA001892013
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 10 of 25
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10 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
VA0001373728
VAu000707146 VA0001005200
30. LFI is the owner of the U.S. copyright in all rights, titles, and interests to
the works listed above, all of which are properly registered with the United States
Copyright Office.
31. The designs and graphics on Defendant's products are so similar to LFI's
copyrighted works as particularized above as to preclude the possibility of
independent creation.
32. Defendant had access to LFI's copyrighted works and the designs and
graphics on Defendant's products are substantially similar to those works.
Defendant's Infringement is Willful
33. Defendant was, or should have been, aware of LFI's rights in its trade
dress and copyrights since Defendant first employed the former art director of LFI,
Laura Binder, sometime in 2012 or 2013. Defendant has been aware of LFI's legal
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 11 of 25
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11 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
objections to Defendant's infringement of its trade dress since at least July, 2015,
when it received a letter notifying it of Plaintiff's legal objections.
34. In willful disregard of LFI's rights, Defendant commenced offering for
sale and sold its infringing products and is continuing to do so.
35. In willful disregard of LFI's rights, Defendant has appropriated LFI's
trade dress, without license or authority from LFI, for its own commercial benefit.
36. Defendant is not licensed or otherwise authorized by LFI to reproduce or
use its trade dress or copyrights.
37. Accordingly, Defendant's actions complained of herein are willful.
Resulting Harm to Plaintiff
38. Defendant's wrongful and unlawful conduct has deprived, and will
continue to deprive, LFI of the full benefits of licensing its intellectual property, is
detrimental to the Lisa Frank brand and to LFI's goodwill, and is injurious to LFI's
relationship with present and potential licensees.
39. LFI has lost and will continue to lose revenues from the sale of
Defendant's infringing products.
40. Defendant's infringing products are likely to cause consumers to be
confused, mistaken and/or deceived as to their origin or as to their sponsorship or
approval by LFI, when there is none.
41. Defendant's infringing products are likely to cause consumers to be
confused, mistaken and/or deceived as to the existence of any affiliation, connection,
or association of Defendant with LFI, when there is none.
42. Defendant's acts threaten to irreparably harm LFI's valuable intellectual
property used in its licensing business, and LFI's reputation and goodwill, which it
has established over its 37 years in business.
43. Defendant's acts compromise LFI's control over the use of its valuable
trade dress and LFI's control over the quality and nature of the products offered under
LFI's distinctive and valuable brand and using LFI's intellectual property.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 12 of 25
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12 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
44. Unless enjoined Defendant will continue to willfully infringe and violate
LFI's intellectual property rights causing damage to LFI's good will and business
reputation. Defendant's acts have caused, and unless enjoined will continue to cause,
irreparable harm to LFI for which there is no adequate remedy at law.
COUNT I
(Federal Trade Dress Infringement and Unfair
Competition under Lanham Act §43,
15 U.S.C. §1125(a))
45. LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.
46. The foregoing use in commerce by Defendant of LFI's trade dress and
unregistered trademarks has caused and/or is likely to cause confusion, or mistake, or
to deceive consumers as to the affiliation, connection, or association of Defendant
with LFI, or as to the origin, sponsorship, or approval of Defendant's goods, or
commercial activities by LFI.
47. Defendant's acts constitute trade dress infringement and unfair
competition in violation of 15 U.S.C. §1125(a)(1)(A).
48. Defendant's acts are willful.
49. By reason of the foregoing LFI has sustained, and unless Defendant is
enjoined will continue to sustain, injury and damage.
50. Defendant has unlawfully and wrongfully derived income and profits
and has been unjustly enriched by the foregoing acts. Defendant's acts have caused,
and unless enjoined will continue to cause, irreparable harm to LFI for which there is
no adequate remedy at law.
COUNT II
(Unfair Competition under Arizona Common Law)
51. LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 13 of 25
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13 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
52. By virtue of Defendant's foregoing acts Defendant has intentionally
caused a likelihood of confusion among the public and has unfairly competed with
LFI in violation of the common law of the State of Arizona.
53. This is an action for common law unfair competition arising under the
common law of the State of Arizona law.
54. Defendant's acts are willful.
55. By reason of the foregoing LFI has sustained, and unless Defendant is
enjoined will continue to sustain, injury and damage.
56. Defendant has unlawfully and wrongfully derived income and profits
and has been unjustly enriched by the foregoing acts. Defendant's acts have caused,
and unless enjoined will continue to cause, irreparable harm to LFI for which there is
no adequate remedy at law.
COUNT III
(Direct, Contributory, and Vicarious
Copyright Infringement of U.S. Copyright no. VA0001892013)
57. LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.
58. The foregoing acts by Defendant constitute the unauthorized
reproduction, distribution, display, sale, and creation of derivative works of LFI's
copyrighted work, U.S. registration no. VA0001892013 (pictured below), which
infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. §101 et
seq.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 14 of 25
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14 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
59. Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VA0001892013.
60. Defendant's conduct has at all times been knowing, willful, and with
complete disregard to LFI's rights.
61. As a proximate cause of Orb Factory's wrongful conduct, LFI has been
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
62. Orb Factory's infringing works copy quantitatively and qualitatively
distinct, important, and recognizable portions of LFI's copyrighted work, U.S.
registration no. VA0001892013.
63. The inclusion of the signature elements of LFI's copyrighted work, U.S.
registration no. VA0001892013, greatly enhances the financial value of Orb Factory's
infringing products.
64. LFI is entitled to its actual damages and profits, alternatively statutory
damages, pursuant to 17 U.S.C. §504.
65. From the date of the creation of Orb Factory's infringing works, the
Defendant has infringed LFI's copyright interests in U.S. registration no.
VA0001892013, including: (a) by authorizing the reproduction, distribution and sale
of the infringing works through the execution of licenses, and/or actually selling,
manufacturing and/or distributing Orb Factory's infringing works through various
sources; (b) by substantially copying and displaying the infringing works in related
marketing and promotional materials for the sale of the infringing works; and (c) by
participating in and furthering the aforementioned infringing acts, and/or sharing in
the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
VA0001892013.
66. With knowledge of the infringement, Defendant has induced, caused or
materially contributed to the infringing conduct of others, such that it should be found
to be contributorily liable.
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15 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
67. Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
should be found to be vicariously liable.
68. The infringement is continuing as the infringing products continue to be
promoted and sold.
69. As a direct and proximate result of the conduct of Defendant, LFI has
suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
70. Defendant's conduct is causing and, unless enjoined by this Court, will
continue to cause LFI irreparably injury that cannot be fully compensated or
measured in monetary terms. LFI has no adequate remedy at law.
COUNT IV
(Direct, Contributory, and Vicarious
Copyright Infringement of U.S. Copyright no. VA0001373728)
71. LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.
72. The foregoing acts by Defendant constitute the unauthorized
reproduction, distribution, display, sale, and creation of derivative works of LFI's
copyrighted work, U.S. registration no. VA0001373728 (pictured below), which
infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. §101 et
seq.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 16 of 25
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16 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
73. Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VA0001373728.
74. Defendant's conduct has at all times been knowing, willful, and with
complete disregard to LFI's rights.
75. As a proximate cause of Orb Factory's wrongful conduct, LFI has been
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
76. Orb Factory's infringing works copy quantitatively and qualitatively
distinct, important, and recognizable portions of LFI's copyrighted work, U.S.
registration no. VA0001373728.
77. The inclusion of the signature elements of LFI's copyrighted work, U.S.
registration no. VA0001373728, greatly enhances the financial value of Orb Factory's
infringing products.
78. LFI is entitled to its actual damages and profits, alternatively statutory
damages, pursuant to 17 U.S.C. §504.
79. From the date of the creation of Orb Factory's infringing works, the
Defendant has infringed LFI's copyright interests in U.S. registration no.
VA0001373728, including: (a) by authorizing the reproduction, distribution and sale
of the infringing works through the execution of licenses, and/or actually selling,
manufacturing and/or distributing Orb Factory's infringing works through various
sources; (b) by substantially copying and displaying the infringing works in related
marketing and promotional materials for the sale of the infringing works; and (c) by
participating in and furthering the aforementioned infringing acts, and/or sharing in
the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
VA0001373728.
80. With knowledge of the infringement, Defendant has induced, caused or
materially contributed to the infringing conduct of others, such that it also should be
found to be contributorily liable.
Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 17 of 25
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81. Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
should be found to be vicariously liable.
82. The infringement is continuing as the infringing products continue to be
promoted and sold.
83. As a direct and proximate result of the conduct of Defendant, LFI has
suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
84. Defendant's conduct is causing and, unless enjoined by this Court, will
continue to cause to LFI irreparably injury that cannot fully be compensated or
measured in monetary terms. Thus, LFI has no adequate remedy at law.
COUNT V
(Direct, Contributory, and Vicarious
Copyright Infringement of U.S. Copyright no. VA0001005200)
85. LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.
86. The foregoing acts by Defendant constitute the unauthorized
reproduction, distribution, display, sale, and creation of derivative works of LFI's
copyrighted work, U.S. registration no. VA0001005200 (pictured below), which
infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. §101.
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18 VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
87. Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VA0001005200.
88. Defendant's conduct has at all times been knowing, willful, and with
complete disregard to LFI's rights.
89. As a proximate cause of Orb Factory's wrongful conduct, LFI has been
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
90. Orb Factory's infringing works copy quantitatively and qualitatively the
distinct, important, and recognizable portions of LFI's copyrighted work, U.S.
registration no. VA0001005200.
91. The inclusion of the signature elements of LFI's copyrighted work, U.S.
registration no. VA0001005200, greatly enhances the financial value of Orb Factory's
infringing products.
92. LFI is entitled to its actual damages and profits, alternatively statutory
damages, pursuant to 17 U.S.C. §504.
93. From the date of the creation of Orb Factory's infringing works, the
Defendant has infringed LFI's copyright interests in U.S. registration no.
VA0001005200, including: (a) by authorizing the reproduction, distribution and sale
of the infringing works through the execution of licenses, and/or actually selling,
manufacturing and/or distributing Orb Factory's infringing works through various
sources; (b) by substantially copying and displaying the infringing works in related
marketing and promotional materials for the sale of the infringing works; and (c) by
participating in and furthering the aforementioned infringing acts, and/or sharing in
the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
VA0001005200.
94. With knowledge of the infringement, Defendant has induced, caused or
materially contributed to the infringing conduct of others, such that it should be found
to be contributorily liable.
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95. Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant should
be found to be vicariously liable.
96. The infringement is continuing as the infringing products continue to be
promoted and sold.
97. As a direct and proximate result of the conduct of Defendant, LFI has
suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
98. Defendant's conduct is causing and, unless enjoined by this Court, will
continue to cause LFI irreparably injury that cannot fully be compensated or
measured in monetary terms. Thus, LFI has no adequate remedy at law.
COUNT VI
(Direct, Contributory, and Vicarious
Copyright Infringement of U.S. Copyright no. VAu000707146)
99. LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.
100. The foregoing acts by Defendant constitute the unauthorized
reproduction, distribution, display, sale, and creation of derivative works of LFI's
copyrighted work, U.S. registration no. VAu000707146 (pictured below), which
infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. §101 et
seq.
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101. Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VAu000707146.
102. Defendant's conduct has at all times been knowing, willful, and with
complete disregard to LFI's rights.
103. As a proximate cause of Orb Factory's wrongful conduct, LFI has been
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
104. Orb Factory's infringing works copy quantitatively and qualitatively
distinct, important, and recognizable portions of LFI's copyrighted work, U.S.
registration no. VAu000707146.
105. The inclusion of the signature elements of LFI's copyrighted work, U.S.
registration no. VAu000707146, greatly enhances the financial value of Orb Factory's
infringing products.
106. LFI is entitled to its actual damages and profits, alternatively statutory
damages, pursuant to 17 U.S.C. §504.
107. From the date of the creation of Orb Factory's infringing works, the
Defendant has infringed LFI's copyright interests in U.S. registration no.
VAu000707146, including: (a) by authorizing the reproduction, distribution and sale
of the infringing works through the execution of licenses, and/or actually selling,
manufacturing and/or distributing Orb Factory's infringing works through various
sources; (b) by substantially copying and displaying the infringing works in related
marketing and promotional materials for the sale of the infringing works; and (c) by
participating in and furthering the aforementioned infringing acts, and/or sharing in
the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
VAu000707146.
108. With knowledge of the infringement, Defendant has induced, caused or
materially contributed to the infringing conduct of others, such that it also should be
found to be contributorily liable.
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109. Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
should be found to be vicariously liable.
110. The infringement is continuing as the infringing products continue to be
promoted and sold.
111. As a direct and proximate result of the conduct of Defendant, LFI has
suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
112. Defendant's conduct is causing and, unless enjoined by this Court, will
continue to cause LFI irreparably injury that cannot be fully compensated or
measured in monetary terms. LFI has no adequate remedy at law.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff, Lisa Frank, Inc. respectfully prays for judgment in its
favor and against Defendant ordering:
1. A preliminary and permanent injunction enjoining Defendant, its
officers, employees, agents, successors and assigns, and all others in active concert or
participation with Defendant pursuant to 15 U.S.C. §1116(a), 17 U.S.C. §502, or
otherwise, from directly or indirectly:
(a) imitating, copying, counterfeiting or making unauthorized use of
Plaintiff's trade dress and/or copyrights;
(b) manufacturing, producing, distributing, circulating, selling,
offering for sale, moving, or otherwise disposing of, advertising, promoting or
displaying any product bearing any simulation, reproduction, counterfeit, copy or
colorable imitation of Plaintiff's trade dress and/or copyrights;
(c) using any simulation, reproduction, counterfeit, copy, or colorable
imitation of Plaintiff's trade dress and/or copyrights, in connection with the
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promotion, advertisement, display, sale, offering for sale, manufacture, production,
circulation or distribution of Defendant's products;
(d) selling, distributing, offering for sale, advertising, promoting or
displaying those products listed in Paragraphs 27 and 29;
(e) assisting, aiding, or abetting any other person or business entity in
engaging in or performing any of the activities referred to in subparagraphs (a)-(d)
above;
(f) engaging in any other activity constituting an infringement of
Plaintiff's trade dress and/or copyrights, or of Plaintiff's rights in its trade dress and/or
copyrights, or to use or to exploit its trade dress and/or copyrights;
2. An accounting by Defendant of all gross revenues derived from the sale
of Defendant's infringing products;
3. Defendant to file with this Court and serve on Plaintiff within thirty (30)
days from the date of entry of any restraining order and/or injunction, a report in
writing, under oath, setting forth in detail the manner and form in which Defendant
has complied with the terms of the injunction in accordance with 15 U.S.C. §1116
and otherwise;
4. Defendant to pay Plaintiff:
(a) all profits, gains and advantages derived by Defendant from
Defendant's unlawful conduct, as provided under 15 U.S.C. §1117(a)(1), 17 U.S.C.
§504(a)(1), and otherwise;
(b) monetary damages for injury, loss and damage incurred by
Plaintiff as a result of Defendant's unlawful conduct, including lost profits and costs
of corrective advertising, as provided under 15 U.S.C. §1117(a)(2), 17 U.S.C.
§504(a)(1), and otherwise;
(c) as an alternative to damages under 17 U.S.C. §504(a)(1), statutory
damages in an amount to be determined at trial based on the number of Plaintiff's
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registered copyrights infringed and willfully infringed by Defendant, as provided
under 17 U.S.C. §504(a)(2) and (c);
(d) Plaintiff's costs and disbursements of this action and reasonable
attorneys' fees, under 15 U.S.C. §1117(a)(3), 17 U.S.C. §505, and otherwise;
5. Defendant's actions having been willful, payment of enhanced damages
under 15 U.S.C. §1117(a)(3), 17 U.S.C. §504(c), and otherwise;
6. Payment of interest;
7. Payment of Court costs; and
8. Such other and further relief as this court shall deem just and equitable.
DATED: September 16, 2015 LEWIS ROCA ROTHBERGER, LLP HALLAM & HOFFMAN By: s/John N. Iurino John N. Iurino Attorneys for Plaintiff Lisa Frank, Inc.
DEMAND FOR JURY TRIAL
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a jury
trial.
DATED: September 16, 2015 LEWIS ROCA ROTHBERGER, LLP HALLAM & HOFFMAN By: s/John N. Iurino John N. Iurino
Attorneys for Plaintiff Lisa Frank, Inc.
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