Playdots v. Icemochi - DOTS App Trademark Lawsuit

8/13/2019 Playdots v. Icemochi - DOTS App Trademark Lawsuit

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JS 4 4 C / S D N Y

R E V . 1 / 2 0 1 4

P LA IN TIF F S

PLAYDOTS, INC.

1 4 CV 1100I VI L C O VI

The JS-44 civilcover sheet and the information contained herein neither replace nor supplement the filingand service ofpleadings orother papers as required bylaw, except as provided by local rules ofcourt. This form, approved bythe f~p p <\ 4 }f\4Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of j llt5 i. > tUinitiating the civildocket sheet.

D E F E N D A N T S

I C E M O C H I LL C

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER

D E W E Y P E G N O & K R A M A RS K Y L L P

77 7 Third A v en u e, N e w York, Ne w York 10017

212)943-9000

ATTORNEYS (IF KNOWN)

CAUSEOF ACTION CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OFCAUSE

(DO NOTCITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

Trademark and UnfairCompetition. §§ 32(1), 43(a) Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), NYstatutory &common law.

Hasthisora similar case been previously filed inSDNY at anytime?No [x] Yes Q Judge Previously Assigned

If yes, wasthis case Vol. []] Invol. Q Dismissed. No Q Yes fj] If yes, give date & Cas e No .

IS THIS AN INTERNATIONAL ARBITRATION CASE? N o Yes D

PLACEAN[x] INONEBOXONLY N A T U R E OF S U I T

A C T I O N S U N D E R S T A T U T E S

C O N T R A C T P E R S O N A L I N JU R Y P E R S O N A L I N J U R Y F O R F E I TU R E / P E N A LTY B A N K R U P T C Y O T H E R S T A T U T E S

[ ] 1 1 0 I N S U R A N C E [ ]310 A I R P L A N E [ ]362 P E R S O N A L I N J U R Y - [ ] 610 A G R I C U L T U R E [ ] 42 2 APPEAL [ ]400 S T A T E

[ ]120 M A R I N E [ ] 3 1 5 A I R P L A N E PRODUCT ME D M A L P R A C T I C E [ ]620 O T H ER F O OD & 2 8 U SC 15 8 R E A P P O R T I O N M E N T

[ ]130 M ILLER AC T L IA B IL IT Y [ )365 P E R S O N A L I N J U R Y D R U G [ ]423 WITHDRAWAL [ ]410 A N T I T R U S T

[ 1140 N E G O T I A B L E [ ] 320 ASSAULT, LIBEL & P R O D U C T LIABILITY [ 1625 DRUG R E L A T E D 2 8 U SC 15 7 ( ]430 B A N K S & BANKING

I N S T R U M E N T S L A N D E R [ ]368 A S B E S T O S P E R S O N A L SEIZURE OF [ ]450 COMMERCE

[ ]150 R E C O V E R Y OF [ ] 330 F E D E R A L I N J U R Y P R O D U C T P R O P E R T Y [ ]460 D E P O R T A T I O N

O V E R P A Y M E N T & E M P L O Y E R S L IA B IL IT Y 21 US C 88 1 P R O P E R T Y R I G H TS [ ] 470 R A C K E T E E R I NF L U

ENFORCEMENT L IA B IL IT Y [ ]6 3 0 L I QU O R L A W S E N C E D & C O R R U P T

OF J U D G M E N T [ ] 340 M A R I N E P E R S O N A L P R O P E R TY [ ]6 4 0 RR TRUCK [ ] 82 0 COPYRIGHTS O R G A N I Z A T I O N AC T

[ ] 1 51 M E D I C A R E AC T I ] 345 M ARINE P R O D U C T [ ]6 5 0 A I R L I N E REGS [ ]830 PATENT (RICO)[ ]152 R E C O V E R Y OF L IA B IL IT Y [ ]370 O T H E R F R A U D [ ]6 6 0 O C C U P A T I O N A L KI840 TRADEMARK [ ] 480 C O N S U M E R C R E DI T

D E F A U L T E D [ ]350 M O T O R V E H I C L E [ ]371 T R U T H IN L E N D IN G S A F E T Y /H E A L T H [ ]490 C A B L E / S A T E L L I T E TV

STUDENT L O A N S [ ]355 M O T O R V E H I C L E [ ]380 O T H E R P E R S O N A L [ ] 690 O T H E R []810 S E L E C T I V E S E R V I C E

(EXCL VETERANS) PRODUCT L IA B IL IT Y P R O P E R T Y D A M A G E S O C I A L S E C U R I T Y [ ]850 S E C U R I T I E S /

[ ]153 R E C O V ER Y O F [ ] 360 O T H E R P E R SO N A L [ ]385 P R O P E R T Y DAMAGE C O M M O D I T I E S /

O V E R P A Y M E N T I N J U R Y PRODUCT LIABILITY L A B O R [ ]861 HIA 1395ff) E X C H A N G E

OF V E T E R A N S [ ] 86 2 BLACK LUNG 923) [J 875 C U S T O M E R

B E N E F I T S [ ] 710 F A IR L A B O R [ ] 86 3 DIWC/DIWW 405 g)) C H A L L E N G E

[ ]160 S T O C K H O L D E R S S T A N D AR D S A C T [ ] 86 4 SSID TITLE XVI 12 USC 341 0

S U I T S [ ]720 L A B O R / M G M T [ ] 865 RSI (405(g)) [ ]890 OTHER S T A T U T O R Y

[ 1190 O T H E R P R I S O N E R P E T IT I ON S R E L A T I O N S A C T I O N S

C O N T R A C T [ ] 730 L A B O R / M G M T [ ]891 A G R I C U L T U R A L A C T S

[ ]195 C O N T R A C T [ ]510 M O T IO N S T O R E P O R T I N G & F E D E R A L T AX S U I T S [ ] 892 E C O N O M I C

PRODUCT A C T I O N S U N D E R S T A T U T E S V A C A T E S E N T E N C E D I S C L O SU R E A C T STABILIZATION AC T

L IA B IL IT Y 2 8 U SC 2255 [ I 74 0 R A I LW A Y L A B O R A CT [ ] 87 0 TAXES (U.S. Plaintiffor [ ] 893 E N V I R O N M E N T A L

[ ]196 F R A N C H I S E CIVIL R I G H TS [ ]530 H A B E A S CORPUS [ ]790 O T H E R L A B O R Defendant) M A T T E R S

[ ] 535 D E A T H P E N A L T Y LITIGATION [ ] 871 IRS-THIRD PARTY I I 89 4 E N E R G Y

[ ]441 VOTI NG [ ]540 M A N D A M U S & O T H E R [ ]791 E M P L RE T IN C 26 US C 7609 A L L O CA T I ON A C T

[ J 442 E M P L O Y M E N T S E C U R IT Y A C T [ J 895 FR EEDOM O F

R E A L P R O P ER T Y [ ]443 H O U S I N G / I N F O RM A T I ON A C T

A C C O M M O D A T I O N S IM M IG R A T IO N [ ]900 A P P E A L O F F EE

[ ]210 L AND [ ] 444 WELFARE P R I S O N E R CIVIL R I G H TS D E T E R M I N A T I O N

C O N D E M N A T I O N [ ]445 A M E R I C AN S W I T H [ ]462 N A T U R A L I Z A T I O N UNDER EQUAL

[ ]220 F O R E C L O S U R E DISABILITIES - [ ]550 C I VI L RIGHTS A P P L I C A T I O N ACCESS TO J U S T I C E

[ ]230 R E N T L E A S E &

E J E C T M E N T [ ] 446

E M P L O Y M E N T

A M E R I C A N S W I T H

[ ]555 P R I S O N C O N D I T I O N 1)463 H A B E A S CORPUS-

AL I E N D E T A I N E E

[ ] 950 C O N S T I T U T I O N A L I T Y

OF S T A T E S T A T U T ES

[ ] 240 T O RT S T O L AND DISABILITIES - O T H E R [ ]465 O T H E R IM M IGRATION

[ ]245 T O R T P R O D UC T

L IA B IL IT Y

[ ] 440 O T H E R CIVIL R I G H T S

Non-Prisoner)

A C T I O N S

[ ] 290 ALL O T H E R

R E A L PROPERTY

heckif em n e in complaint

•CH E CK IF THIS IS A C L A S S A C T I O N

U N D E R F .R.C.P . 23

DEMAND $_ O T H E R

Check YES only ifdemanded in complaint

JURY DEMAND: S YES • NO

DO YO U CLAIM THIS CA SE IS RE LA T ED T O A CIVIL CA SE N O W P EN D IN G IN S.D.N.Y.?

IF SO , STATE:

J U D G E D O C K ET N U M BE R

NOTE:Youmust also submit at the time of filing the Statement of Relatedness form (Form IH-3



PLACEAN x INONEBOXONLY

I ] 1 OriginalProceeding

ORIGIN

• 2 Removed from • 3 Remanded D 4 Reinstated or D 5 Transferred from • 6 MultidistrictStateCourt from Reopened Specify District Litigation

I | a. all parties represented Appellate

I I b. At leastoneparty is pr o se .

I I 7 Appeal toDistricJudge from

Magistrate Judge

Judgment

PLACE AN x INONEBOXONLY B A S I S OF JURISDICTION

• 1 U.S. PLAINTIFF • 2 U.S. DEFENDANT [X] 3 FEDERAL QUESTION D 4 DIVERSITY(U.S. NOT A PARTY)

IF DIVERSITY INDICATE

CITIZENSHIP BELOW

28 USC 1332, 1441)

CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)

Place an [X]in on e box for Plaintiff an d on e box for Defendant)

PT F D EF

CITIZEN OF THIS STATE [ ] 1 [ ] 1

CITIZENOF ANOTHER STATE [ ] 2 [ ] 2

CITIZEN O R S U B JE C T O F A

F O R E IG N C O U N T R Y

PT F DEF

[ ]3 [ ]3

PTF D EF

INCORPORATED an d PRINCIPAL PLACE [ ] 5 [ ] 5

O F B U SI N ES S IN A N O T HE R S T A T E

INCORPORATED or PRINCIPAL PLACE [ ] 4 [ ] 4

OF BUS INESS IN T H I S STATE

PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)

PLAYDOTS, INC.4 16 W. 13th, Suite 2 03

Ne w York, N EW Y O RK 10014

C O R P O R A T I O N o f D E L A W A R E

DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)

I C E M O C H I LLC

1000 Bridge Parkway

Redwood City

C A 94065

F O RE I G N NATION ]6

DEFENDANT(S) ADDRESS UNKNOWNREPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE

R E S I D E N C E A D D R E SS E S O F TH E F O L L O W IN G D E F E N D A N T S :

Checkone: THIS ACTION SHOULD BE ASSIGNED TO: • WHITE PLAINS |X| MANHATTAN(DO NOTcheck either box ifthis a PRISONER PETITION/PRISONER CIVIL RIGHTS COMPLAINT.)

DATE 2.21.14 SIGNATURE OF ATTORNEY.OF-REQ0RD

RECEIPT

A D M I T T E D TO P R A C T I C E IN T H I S D I S T R IC T[ ] NOM YES DATE ADMITTED Mo. Ql Yr. ffi^l )Attorney Bar Code TS^-^lfl?

Magistrate Judge is to be designated y the Clerk o the ourflftfTSU wI vS fjS X

Magistrate Judge is so Designated.

Ruby J. Krajick, Clerk of Court by Deputy Clerk, DATED

UNITED STATES DISTRICTCOURT (NEW YORK SOUTHERN)



JUDGE SWAN

U N IT E D S TA T ES D I ST R IC T COURT

S O U T H E R N D I S T R I C T O F N E W Y O RK

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PLAYDOTS, INC.,

Plaintiff,

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J U R Y T R I A L R E Q U E S T E D

C O M P L A I N T

Playdots, Inc. ( Playdots or Plaintiff), for its Complaint against the Icemochi, LLC

( Icemochi or Defendant ), alleges and states:

P A RT IE S A N D J U R I S D I C T I O N

1. Playdots is a Delaware corporation with its principal place of business in New

York, New York.

2. Upon information and belief, Icemochi is a California limited liability company

with a place of business in Redwood City, California.

3. This Court has personaljurisdiction over Icemochi because it has engaged in acts

or omissions causing injury within this State sufficient to permit the exercise of personal

jurisdiction over Icemochi. Additionally, the Court has personal jurisdiction over Icemochi

pursuant to at least New York CPLR 302 because, at all relevant times hereto, Icemochi has

advertised, offered and/or supplied goods to persons located within this State and elsewhere,

including through interactive online platforms such as the Apple iTunes App Store and other

various online platforms.



4. This a c ti o n a ri se s under th e t r ad e m ar k l a ws o f t he U ni te d States and t he l aw s o f

unfair competition. It is brought pursuant to, inter alia, Sections 32(1) and 43(a) of the Lanham

Act, 15U.S.C. §§ 1114(1) and 1125(a), and New York statutory and common law.

5. This Court has jurisdiction over the subject matter of this case pursuant to at least

15 U.S.C. § 1121, and 28 U.S.C. §§ 1331, 1338(b), and 1367.

6. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b)(2) and § 1391(c)

because a substantial part of the events or omissions giving rise to the claims arose within this

judicial district and because Icemochi resides in this jurisdiction by virtue of the fact that

Icemochi is subject to personal jurisdiction in this district.

A LL EG A TI ON S C O MM O N T O A L L C O U N T S

The Business, Trademarks, and Copyrights o f Playdots

7. Playdots is a well-known creator, developer, and provider of the successful

DOTS™ mobile game application (the DOTS Game ). Users of the DOTS™ mobile game

applicationare tasked with connecting as many same-colored adjacent circles as possible in sixty

(60) seconds. Once the user connects same-colored circles, those circles are removed from th e

game display and replaced with other various colored circles and the user is again tasked with

connecting adjacent circles. The user is scored on how many connections the user can make

within the sixty (60) seconds.

8. The DOTS Game has enjoyed significant success in the U.S. and throughout the

world (including this Judicial District). The DOTS Game has been downloaded more than

fifteen (15) million times since its initial release to the public. It has been featured in numerous

international publications; was recently the 1 iTunes game in twenty-two (22) countries around

the world; and was recently one of the Top 5 Free iPhone Apps in thirty-four (34) countries

a ro u nd t he w o rl d.

2



9. Playdots has extensively marketed and provided to the public its DOTS Game

under the marks DOTS™ and DOTS & Color Design® (collectively, the DOTS Marks ) at all

t im e s r e le v an t h e r e i n .

10. Playdots has continuously used the DOTS Marks in interstate commerce in

connection with the DOTS Game, including through the present day.

11. Playdots is the owner of U.S. Trademark Reg. No. 4469611 for the mark DOTS &

Design used in connection with computer game software and computer game software for use on

mobile devices. The application to register this mark was filed May 15, 2013, published for

opposition on November 5, 2013, and the trademark registration issued on the Principal Register

on January 21, 2014.

12. The DOTS Marks are at least suggestive as they are used in commerce by

Playdots, including as they are used in connection with the provision of computer game software

and computer game software for use on mobile devices and is inherently distinctive.

13. In addition to its trademark, Playdots has adopted a unique and inherently

distinctive trade dress in connection with its mobile game application (the DOTS Trade Dress ).

The DOTS Trade Dress includes, but is not limited to, the combination of the following

elements: the display of small, light blue, yellow, red, green, and lavender circles displayed

centrally on a white background.

14. The DOTS Trade Dress further includes, but is not limited to, the following non

functional attributes of game play: (1) when touched by the user, each circle emanates a

temporary expanding, transparent halo of light displayed same color as the circle touched by the

user; (2) by pressing on the circle, the user may then slide her finger to another circle thereby



drawing a thin line between any two adjacent circles of the same color; and (3) various

arbitrary icons to represent game features.

15. Playdots has promoted and used its DOTS Trade Dress in interstate commerce

since at least April 30, 2013 in connection with it mobile application game.

16. In total, the DOTS Game has been downloaded more than fif teen (15) mil lions

times. Accordingly, the public associates the DOTS Marks and the DOTS Trade Dress

exclusively with Playdots.

17. Through the extensive and continuous use and promotion of the DOTS Marks and

DOTS Trade Dress, Playdots has developed substantial goodwill in them, and the DOTS Marks

and DOTS Trade Dress have acquired secondary meaning in that they have become associated

with Playdots and the high quality and successful DOTS Game.

18. As a result of popularity of DOTS Game, as well as the use significant goodwill

established in th e DOTS M ark s a nd DOTS Trade D re ss , t he D OTS M ar ks an d DOTS Trade

Dress and the goodwill of the business associated therewith are of inestimable value to Playdots.

19. Playdots is also the owner of all right, title, and interest in connection with several

copyrights relating to the DOTS Game, including the copyright on the computer software code

and creative design elements of the DOTS Game. Playdots registered its copyright as U.S.

Copyright Reg. No. TX 7-786-772 covering, inter alia, the mobile game application's computer

software code and computer screen displays.

I cem o ch i s Infringem ents

20. Upon information and belief, on or about September 25, 2013, Icemochi began

offering to the public its own mobile game application (the Infringing Game ) under the

MATCH THE DOTS trademark (the Infringing Mark ).



21. The Infringing Game and Infringing Mark are each imitations and knock-offs of

th e DOTS G am e, t he DOTS Marks an d DOTS Trade Dress.

22. Users of the Infringing Game are tasked with connecting as many same-colored

adjacent circles as possible in sixty (60) seconds. Once the user connects same-colored circles,

those circles are removed from the game display and replaced with other various colored circles

and the user is again tasked with connecting adjacent circles. The user is scored on how many

connections the user can make within the sixty (60) seconds.

23. Icemochi has adopted a confusingly similar and near identical trade dress to the

DOTS Trade Dress used in connection with the Infringing Game (the Infringing Trade Dress ).

For example, Icemochi uses the following confusingly-similar display for its MATCH THE

DOTS game: The Infringing Game displays small, light blue, yellow, red, green, and pink circles

displayed centrally on a white background.

24. Moreover, Icemochi has appropriated multiple other elements of the DOTS Trade

Dress. For example, when touched by the user, each circle in the Infringing Game emanates a

temporary expanding, transparent halo of light displayed same color as the circle touched by the

user. By pressing on the circle, the user may then slide his or her finger to another circle thereby

drawing a thin black line between any two adjacent circles of the same color. Additionally, the

InfringingGame displays at least one of the same arbitrary icons used by Playdots to represent a

same game feature.

25. The Infringing Mark and the Infringing Trade Dress is likely to cause confusion

in the minds of consumers as to the source of the Infringing Game.



26. Upon information and belief, Icemochi was aware of, familiar with, accessed,

played, and otherwise had knowledge of Playdots' mobile application game prior to creating the

Infringing Game, the Infringing Mark and the Infringing Trade Dress.

27. Playdots' goods and Icemochi's goods are marketed and delivered through the

same channels of marketing and trade and to the same consumers.

2 8. I c e m o c h i s act i vi t i es a re in interstate c o m m e r c e .

29. Icemochi's use of the confusingly similar Infringing Mark and Infringing Trade

Dress are likely to cause a substantial number of ordinarily prudent consumers to be mistaken,

confused or deceived into thinking that Icemochi's Infringing Game is or may be endorsed by,

affiliated with, or sponsored by or otherwise authorized by Playdots.

30. Icemochi s infringing activity has caused actual confusion.

31. The false impression created by Icemochi violates both statutory and common

law, and constitutes, among other things, trademark and trade dress infringement and unfair

competition.

32. Icemochi has no association or affiliation whatever with Playdots, nor does it

have the consent of Playdots to use in its business or advertising the DOTS Marks or DOTS

T r ad e D re ss .

33. The goods and services offered by Icemochi are not Playdots' goods and services,

and Icemochi does not have the sponsorship, consent, approval, or certification of Playdots to act

a s it h a s .

34. Icemochi's unfair competition and infringement demonstrate intentional, willful,

and bad faith attempts to deceive or to create mistake or confusion in the minds of Playdots'

customers and potential customers and of the public, to trade on Playdots' goodwill, to palm off



Icemochi's goods and services as those of Playdots, and to create the false impression of a

connection, affiliation, association, sponsorship, or approval of or between Playdots and

Icemochi, all causing irreparable injury to Playdots.

35. Icemochi has reproduced, distributed, publicly performed and displayed, and

created derivatives of the copyrighted creative elements of the DOTS Game.

36. Playdots has no adequate remedy at law.

C O U N T I

T R A D E M A R K I N F R IN G E M E N T . U N F A I R C O M P E T I T I O N

A ND F A LS E D E S I G N A T I O N O F O R I G I N 15 U.S.C. § 1125 a))

37. Playdots repeats and realleges the allegations set-forth above in Paragraphs 1

through 36.

38. Icemochi's use in commerce of the confusingly similar Infringing Mark and

Infringing Trade Dress in connection with providing a mobile game application constitutes a use

in interstate commerce that is l ikely to cause confusion and mistake and to deceive consumers as

to the source or origin of Icemochi's goods such that consumers may believe that the Infringing

Game is sponsored by, endorsed by, approved by, licensed by, authorized by, or affiliated or

connected with Playdots.

39. Icemochi's false designation of origin, false description, and false representation

that Icemochi and its services are sponsored by, authorized by, or affiliated with Playdots are in

violation of 15 U.S.C. § 1125(a).

40. Upon information and belief, Icemochi has intentionally, knowingly and willfully

adopted and used a name, mark, trade dress or false designation of origin likely to cause

confusion in the marketplace as to the source, origin or sponsorship of the goods and services

being offered by Icemochi.



41. As a result of these wrongful acts, Playdots is entitled to recover all damages and

other sums provided by law, including but not limited to actual and treble damages, a

disgorgement and accounting of Icemochi's profits, reasonable attorneys' fees, and the costs of

this l itigation pursuant to 15 U.S.C. § 1117.

42. In addition, Icemochi's acts are causing and continue to cause Playdots

irreparable harm in the nature of lost sales and revenue, marketplace confusion, loss of control

over its reputation and loss of substantial consumer goodwill. This irreparable harm to Playdots

will continue, without any adequate remedy at law, unless and unti l Icemochi s unlawful conduct

is enjoined by this Court.

C O U N T II

T R A D E M A R K I N F R I N G E M E N T 15 U.S.C. § 1114)


through 42.

44. Icemochi's use of the mark Infringing Mark in connection with the Infringing

Game is likely to cause confusion with Playdots' federally-registered mark DOTS & Design®

t r a d e m a r k .

45. Upon information and belief, Icemochi intentionally and willfully adopted the

InfringingMark with knowledge of Playdots' federally-registered DOTS & Design® trademark.

Icemochi's unauthorized use of its Infringing Mark is intended to cause confusion, mistake and

deception between the products and services of Playdots and the products and services of

I c e m o c h i .

46. Icemochi continues to use the Infringing Mark with knowledge of Playdots'

federally-registered DOTS & Design® trademark. Icemochi's continued unauthorized use of its

Infringing Mark is intentional and willful, and is intended to cause confusion, mistake and

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deception between the products and services of Playdots and the products and services of

I c e m o c h i .

47. Icemochi's acts constitute willful and deliberate infringement and are in willful

and wanton disregard of Playdots' established and superior rights, in violation of 15 U.S.C.

§1114 1).

48. As a result of Icemochi's unlawful actions, Playdots has suffered commercial

h a r m .

49. Playdots has also been, and continues to be, harmed irreparably by Icemochi's

unlawful actions and has no adequate remedy at law.


other sums provided by law, including but not limited to actual and treble damages, reasonable

attorneys' fees, and the costs of this litigation pursuant to 15 U.S.C. § 1117.


irreparable harm in the nature of lost sales and revenue, marketplace confusion, loss of control

over its reputation and loss of substantial consumer goodwill. This irreparable harm to Playdots

will continue, without any adequate remedy at law, unless and until Icemochi's unlawful conduct

is enjoined by this Court.

C O U N T I I I

C O M M O N L A W T R A D E M A R K I N F R I N G E M E N T


through 51.

53. The DOTS Marks are inherently distinctive.

54. In addition, Playdots established secondary meaning in the DOTS Marks in

connection with its goods before Icemochi's first use of the Infringing Mark.

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55. Icemochi's use of the confusingly similar Infringing Mark in commerce in

connection with the sale and distribution of goods identical in nature to the goods offered by

Playdots in a manner is likely to cause confusion, mistake, or deception and constitutes an

infringement of Playdots' common law rights to the DOTS Marks.

56. Playdots has been harmed by Icemochi's wrongful acts and Icemochi has received

improper and unjust profits and other monies from its wrongful acts, each in an amount to be

d e te rm i n ed a t tr ial .


other sums provided by law.


irreparable harm in the nature of lost sales and revenue, loss of control over its reputation and

loss of substantial consumer goodwill. This irreparable harm to Playdots will continue, without

any adequate remedy at law, unless and until Icemochi's unlawful conduct is enjoined by this

Court .

C O U N T IV

T R A D E D R E SS I N FR IN G E M E NT . U N F A IR C O M P E T I T I O N

A N D F A LS E D E SI GN A TI ON O F O R I G I N 15 U.S.C. § 1125 a))


through 58.

60. The DOTS Trade Dress is inherently distinctive.

61. In addition, Playdots established secondary meaning in the DOTS Trade Dress in

connection with its goods before Icemochi's first use of the Infringing Mark.

62. Icemochi's use in commerce of trade dress confusingly similar to the DOTS

Trade Dress in connection with the Infringing Game constitutes a use in interstate commerce that

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68. There is substantial goodwill in the DOTS Marks and DOTS Trade Dress.

Playdots has expended considerable resources promoting its brand andmobile game application.

69. Icemochi has actual knowledge of Playdots' rights in the DOTS Marks and DOTS

Trade Dress, and has known or should have known of the goodwill associated with the DOTS

Marks and DOTS Trade Dress. By continuing to infringe the DOTS Marks and DOTS Trade

Dress, Icemochi has willfully and intentionally traded on the reputation and goodwill of

Playdots, causing irreparable injury to Playdots.

70. Upon information and belief, Icemochi has realized unjust profits, gains and

advantages as a proximate result of its infringing conduct.

71. Icemochi's uses of the Infringing Mark and the Infringing Trade Dress, in

connection with goods offered in commerce, are uses in a manner likely to confuse or deceive

consumers, or to cause consumers to be mistaken, as to th e affiliation, c on ne ct io n a nd

association of Icemochi with Playdots, or as to the origin, sponsorship, or approval of Icemochi's

goods and commercial activities by Playdots, in violation of New York General Business Law

§349.

72. Icemochi's unauthorized and confusingly similar uses are likely to cause harm to

the public, and as a result of Icemochi's actions, Playdots has suffereddamages and irreparable

harm, including injury to its goodwill and business reputation, and Playdots and the public will

continue to suffer unless Icemochi is enjoined by the Court. Playdots is entitled to injunctive

relief and to recover Icemochi's profits, actual damages, enhanced profits and damages, costs,

and reasonable attorneys' fees.

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C O U N T V I I

C O P Y R I G H T I N FR IN G E M E N T


through 76.

78. Playdots is the owner of the copyright registered with the United States Copyright

Office - Registration No. TX 7-786-772 covering the creative elements of Playdots computer

software code and computer screen displays.

79. The United States Copyright Office has duly registered the copyright of said

c r ea t iv e w o r ks .

80. Icemochi, without the consent of Playdots, reproduced, distributed, publicly

performed and displayed, and created derivatives of Playdots' copyrighted works that have been

duly registered.

81. Upon information and belief Icemochi has had access to, and knowledge of,

Playdots' copyrighted works as alleged herein.

82. Icemochi has infringed Paydots' copyrighted works. Among other things, at least

a substantial similarity, as determined by an ordinary observer, exists between Icemochi 's

Infringing Game and Playdot's DOTS Game as alleged herein.

83. Upon information and belief, Icemochi's unlawful infringement has been

undertaken with express and/or constructive knowledge; or with reckless disregard, that it

violated Playdots' rights, title and interest. Icemochi's copyright infringement is thereby

i n te n t io n a l a n d / o r wi l l f ul .

84. By reason of the foregoing acts of copyright infringement, Playdots has been

monetarily injured in an amount to be proven and Playdots is entitled to recover all damages,

penalties, and other amounts provided under the Copyright laws of the United States.

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P R A Y E R ; F O R R E L I E F

WHEREFORE, Playdots requests the Court to award the following relief:

a) A preliminary and permanent injunction enjoining and restraining Icemochi, its

associates, agents, servants, employees, officers, directors, representatives, successors, assigns,

attorneys and all persons in active concert or participation with it who learn of the injunction

through personal service or otherwise: (a) from using the Infringing Mark or any marks

confusingly similar to the DOTS Marks; (b) from using the word DOTS or any other terms of

designs confusingly similar to the DOTS Marks displayed prominently in connection with the

provision, distribution, or marketing of the Infringing Game; (c) from using the DOTS Trade

Dress or any trade dress confusingly similar to the DOTS Trade Dress; (d) from representing by

words or conduct that Icemochi or its products and services are authorized, sponsored, endorsed,

or otherwise connected with Playdots; (e) from reproducing, distributing, publicly performing or

displaying, and creating derivatives of Playdots' copyrighted works; and (f) engaging in any

other conduct which causes, or is likely to cause, confusion, mistake, deception, or

misunderstanding as to the source, affiliation, connection or association of Icemochi, its

products, and Playdots;

b) Monetary relief, including but not limited to all of Icemochi's profits, gains, and

advantages derived from its infringement of Playdots' intellectual property rights, and that such

sums be trebled; all damages sustained by Playdots as a result of Icemochi's wrongful acts, and

that such damages be trebled; actual damages; disgorgement of three times Icemochi's wrongful

profits,; reimbursement for the costs of this action, including, but not limited to attorneys' fees;

and all other sums as may be provided by law, including statutory and civil penalties;

c) The imposition of a constructive trust freezing all ill-gotten gains derived from

Icemochi's illegal use of Playdots' intellectual property;

1 5



d) An accounting and disgorgement of all profits derived from or in connection with

Icemochi's illegal use of Playdots' intellectual property;

e) Further enhancement of damages to a sum not exceeding three (3) times the

profits earned by Icemochi as a result of its improper use of marks confusingly similar to the

marks of Playdots;

f) Pursuant to 15 U.S.C. § 1118, the destruction and removal of all business cards,

invoices, forms, advertisements, packaging, webpages, websites, promotional materials or any

other materials bearing the Infringing Mark, any other mark confusingly similar to the DOTS

Marks, the Infringing Trade Dress, any other mark confusingly similar trade dress similar to the

Infringing Trade Dress, the modification of all websites and online platforms to remove and

disable access to the Infringing Mark, any other mark confusingly similar to the DOTS Marks,

the Infringing Trade Dress, any other mark confusingly similar trade dress similar to, the

Infringing Trade Dress;

g) Prejudgment interest;

h) Punitive damages;

i) Attorney's fees and all other litigation-related expenses (including expert

expenses) to the extent that they are recoverable under the law;

j) Costs; and

k) All other relief as the Court may deem just and proper.

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DATED: February 21, 2014.

O f c o u n s e l :

Jeff M . B a r r o n

David A. W. Wong

Thomas M. Landrigan

BARNES & THORNBURG LLP

11 South Mer idian S t r e e t

Indianapolis, Indiana 46204

Telephone: (317) 236-1313

Respectfully submitted,

David S. Pegno

D E W E Y P EG N O & K R AM A R SK Y L L P

7 77 T hi rd A v en ue

New York, New York 10017

212)943-9000

[email protected]

Attorneys for Plaintiff, Playdots, Inc.

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Playdots v. Icemochi - DOTS App Trademark Lawsuit

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