Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 1 of 10 PageID #:299
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`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
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`BERTHOLD L.L.C. and
`BERTHOLD DIRECT CORP.,
`
`Plaintiffs,
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`v.
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`TARGET CORPORATION,
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`
`
`Defendant.
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`
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`Civil Action No.: 1:17-cv-07180
`
`Honorable Robert M. Dow, Jr.
`Magistrate Judge Michael T. Mason
`
`
`
`SECOND AMENDED COMPLAINT
`
`Plaintiffs, BERTHOLD L.L.C. and BERTHOLD DIRECT CORP., through their
`
`attorneys, complain against Defendant, TARGET CORPORATION, as follows:
`
`Nature of the Action
`
`1.
`
`This is a civil action for copyright infringement and breach of license agreement
`
`for unauthorized use of Plaintiffs’ copyrighted font software programs and refusal to document
`
`all uses of Plaintiffs’ font software programs as required by the parties’ license agreement.
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`Jurisdiction and Venue
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`2.
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`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
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`1388(a) because (i) this is a civil action arising under the Copyright Act of 1976, 17 U.S.C § 101
`
`et seq. This Court has supplemental jurisdiction over Plaintiffs’ related state law claims pursuant
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`to 28 U.S.C. § 1367.
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`3.
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`Venue is proper in this district pursuant to the forum selection clause in the
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`parties’ license agreement which provides that all disputes involving the license will be resolved
`
`in this forum.
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`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`
`
`
`
`BERTHOLD L.L.C. and
`BERTHOLD DIRECT CORP.,
`
`Plaintiffs,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`TARGET CORPORATION,
`
`
`
`
`
`
`
`
`
`
`Defendant.
`
`
`
`
`
`
`
`
`
`
`Civil Action No.: 1:17-cv-07180
`
`Honorable Robert M. Dow, Jr.
`Magistrate Judge Michael T. Mason
`
`
`
`SECOND AMENDED COMPLAINT
`
`Plaintiffs, BERTHOLD L.L.C. and BERTHOLD DIRECT CORP., through their
`
`attorneys, complain against Defendant, TARGET CORPORATION, as follows:
`
`Nature of the Action
`
`1.
`
`This is a civil action for copyright infringement and breach of license agreement
`
`for unauthorized use of Plaintiffs’ copyrighted font software programs and refusal to document
`
`all uses of Plaintiffs’ font software programs as required by the parties’ license agreement.
`
`Jurisdiction and Venue
`
`2.
`
`This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1388(a) because (i) this is a civil action arising under the Copyright Act of 1976, 17 U.S.C § 101
`
`et seq. This Court has supplemental jurisdiction over Plaintiffs’ related state law claims pursuant
`
`to 28 U.S.C. § 1367.
`
`3.
`
`Venue is proper in this district pursuant to the forum selection clause in the
`
`parties’ license agreement which provides that all disputes involving the license will be resolved
`
`in this forum.
`
`
`
`
`
`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 2 of 10 PageID #:300
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`The Parties
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`4.
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`Plaintiff Berthold L.L.C. (“Berthold LLC”), is an Illinois limited liability
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`company with its principal place of business in Chicago, Illinois. Berthold LLC owns the
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`copyrights in the font software at issue.
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`5.
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`Plaintiff Berthold Direct Corporation (“Berthold Direct”) is an Illinois corporation
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`with its principal place of business in Chicago, Illinois. At all times relevant, Berthold Direct had
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`been granted the exclusive right to license the copyrighted font software at issue. Berthold LLC
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`and Berthold Direct are affiliated companies and may be referred to herein collectively as
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`“Berthold.”
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`6.
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`Defendant Target Corporation (“Target”) is a Minnesota corporation with its
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`principal place of business in Minneapolis, Minnesota.
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`Factual Background
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`7.
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`8.
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`Plaintiffs and their affiliates comprise a leading, independent type foundry.
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`Since 1858, Plaintiffs have been in the business of marketing typefaces. H.
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`Berthold AG, the original Berthold type foundry founded in Berlin, Germany, was known
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`worldwide as an expert producer of high quality typefaces.
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`9.
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`Under the guidance of former artistic director and master typographer Günter
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`Gerhard Lange, the Berthold foundry has developed one of today’s leading type libraries in the
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`world: the Berthold “Exklusiv” Collection.
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`10.
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`Plaintiffs offer, market, license, and distribute typeface font computer software
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`programs through their website www.bertholdtypes.com and through their authorized resellers.
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`11.
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`Akzidenz-Grotesk is Plaintiffs’ most popular and successful typeface and
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`represents valuable goodwill owned by Plaintiffs.
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`2
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 3 of 10 PageID #:301
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`12.
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`Plaintiff Berthold LLC owns the U.S. Copyright Registrations for certain
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`Akzidenz-Grotesk typeface font software programs in OpenType format first published in 2006
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`with Registration Numbers (collectively the “Akzidenz-Grotesk Pro Condensed Font Software”),
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`Exhibit A:
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`a. Akzidenz-Grotesk Pro Light Condensed, TX 6-380-812
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`b. Akzidenz-Grotesk Pro Light Condensed Italic, TX 6-380-805
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`c. Akzidenz-Grotesk Pro Regular Condensed, TX 6-380-806
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`d. Akzidenz-Grotesk Pro Condensed Italic, TX 6-380-807
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`e. Akzidenz-Grotesk Pro Medium Condensed, TX 6-380-808
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`f. Akzidenz-Grotesk Pro Medium Condensed Italic, TX 6-380-809
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`g. Akzidenz-Grotesk Pro Bold Condensed, TX 6-380-824
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`h. Akzidenz-Grotesk Pro Bold Condensed Italic, TX 6-380-825
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`i. Akzidenz-Grotesk Pro Extra Bold Condensed, TX 6-380-804
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`j. Akzidenz-Grotesk Pro Extra Bold Condensed Italic, TX 6-380-801
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`k. Akzidenz-Grotesk Pro Extra Bold, TX 6-380-803
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`l. Akzidenz-Grotesk Pro Extra Bold Italic, TX 6-380-802
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`13.
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`Plaintiffs’ copyrights are valid and subsisting.
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`14.
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`Berthold licenses the use of the Berthold font software programs to end users, and
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`controls such licensing by way of individually negotiated licenses agreements.
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`15.
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`Berthold offers a limited, traditional desktop license that permits the end user to use
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`the font software programs for internal business purposes only and allowed installation of the font
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`software programs on up to 5 licensed computers at a single location (“Traditional Desktop
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`Licenses”).
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`3
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 4 of 10 PageID #:302
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`16. With the advent of new technologies over the past decade, Berthold began offering
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`an enterprise license which provided more licensing options that incorporate these latest
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`technologies, such as web fonts, digital publishing, e-books, web video publishing, smart
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`phone/tablet apps, etc.
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`17.
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`Berthold’s enterprise licenses allow a licensee to use and embed the font software
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`programs to create and distribute printed and digital materials for commercial or non-commercial
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`purposes.
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`18.
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`On August 22, 2013, Target purchased a Traditional Desktop License to use
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`Plaintiffs’ Akzidenz-Grotesk Condensed BE OpenType font software (a total of 12 font software
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`programs), subject to a license agreement which only allowed Target to use the font software on
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`10 computers for internal business purposes with limited embedding rights. Exhibit B.
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`19.
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`Plaintiffs’ Akzidenz-Grotesk Condensed BE OpenType font software is comprised
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`entirely of copyrighted software code from Plaintiffs’ Akzidenz-Grotesk Pro Condensed Regular
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`font software.
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`20.
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`In or around June 2017, Plaintiffs came across a video posted online created by
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`Calango, a design firm retained by Target to produce certain advertising and branding materials
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`using Plaintiffs’ Akzidenz-Grotesk Font Software. Subsequent to filing this lawsuit, the video has
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`been removed from the Vimeo website where it was posted.
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`21.
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`The video’s description states that “Target asked Calango to produce an animated
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`version of Akzidenz Grotesk, one of the main typefaces in their branding.” As seen in the online
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`video, Calango did as Target requested and used Plaintiffs’ Akzidenz-Grotesk Pro Condensed Font
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`Software to create certain advertising and branding material.
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`22.
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`Target, without knowledge or authorization from Plaintiffs, created and sent
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`4
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 5 of 10 PageID #:303
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`Calango copies of Plaintiffs’ Akzidenz-Grotesk BE Light Condensed and Akzidenz-Grotesk BE
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`Bold Condensed font software programs, which amounted to creating and sending copies of
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`Plaintiffs’ copyrighted Akzidenz-Grotesk Pro Light Condensed and Akzidenz-Grotesk Pro
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`Condensed Bold font software programs.
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`23.
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`Target sent the copies of these two font software programs to Calango so that
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`Calango could create animated versions of each of the font software programs (“Animated Font
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`Software Programs”) and a video that embedded the Animated Font Software (“Animated Font
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`Software Video”).
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`24.
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`Calango then delivered the Animated Font Software Programs and Animated Font
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`Software Video to Target. Target then created one or more copies of the and Animated Font
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`Software Programs and Animated Font Software Video by downloading, storing, and loading the
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`files onto its computers or servers. Target also broadcast the Animated Font Software Video and
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`Animated Font Software Programs at one of its sales meetings.
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`25.
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`According to Calango’s statements next to the Animated Font Software Video
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`posting on the internet, Target uses Akzidenz-Grotesk as one if its main typefaces in its branding
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`which entails using Plaintiffs’ Akzidenz-Grotesk font software to create advertising and branding
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`materials.
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`26.
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`Target also has embedded Plaintiffs’ Akzidenz-Grotesk BE Regular font software
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`into portable document files that have been disseminated to third parties and made available for
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`access and download online. See Exhibit C attached hereto. The Akzidenz-Grotesk BE Regular
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`font software is comprised entirely of copyrighted software code from Plaintiffs’ Akzidenz-
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`Grotesk Pro Regular font software for which Plaintiff Berthold LLC owns the U.S. Copyright
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`Registration (TX 6-380-794). Exhibit D.
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`5
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 6 of 10 PageID #:304
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`27.
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`Target did not and does not have an enterprise license agreement with Plaintiffs to
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`use any of Plaintiffs’ Akzidenz-Grotesk font software programs to create portable document files
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`externally distributed or other advertising and branding materials.
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`28.
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`On or about August 4, 2017, Plaintiffs made a written request that Target document
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`its uses of Plaintiffs’ font software and certify that such uses conform with the license.
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`29.
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`Plaintiffs’ request was made in accordance with the “Compliance” term of the
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`parties’ license agreement which provides:
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`8. Compliance. You agree that, within thirty (30) days of receipt of a
`written request from Berthold, you will fully document and certify that
`use of any and all Berthold font software in your possession at the time
`of the request conforms with your license(s) from Berthold.
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`Contrary to its requirements under the license agreement, Target has refused to
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`30.
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`document its uses of Plaintiffs’ font software. Instead, Target provided only a terse response to
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`Plaintiffs’ written request that: “We have investigated the matter, and can confirm that Target is
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`in fact in conformance.”
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`31.
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`Upon information and belief, Target has created additional documents and
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`materials using Plaintiffs’ Akzidenz-Grotesk font software that have been disseminated to third
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`parties or been made available for access and download online. The extent of Target’s infringing
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`and unauthorized use of Plaintiffs’ Akzidenz-Grotesk font software is uniquely known to Target
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`and will be determined in the course of discovery.
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`COUNT I
`(Copyright Infringement)
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`32.
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`33.
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`Plaintiffs repeat and reallege all prior paragraphs of this Complaint herein.
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`The Copyright Act of 1976 grants copyright owners certain exclusive rights
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`including the rights to copy the work and prepare derivative works based on the copyrighted
`
`
`
`6
`
`
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 7 of 10 PageID #:305
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`work. 17 U.S.C. § 106.
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`34.
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`Plaintiffs are the owner and holder of the exclusive right to license the
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`copyrighted Akzidenz-Grotesk font software programs.
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`35.
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`Target has infringed on Plaintiffs’ copyrights by making unauthorized
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`reproductions of at least two of Plaintiffs’ font software programs as described herein.
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`36.
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`The Animated Font Software is an unauthorized derivative work of Plaintiffs’
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`Akzidenz-Grotesk font software.
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`37.
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`By copying and sending Calango two of Plaintiffs’ Akzidenz-Grotesk font
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`software programs without Plaintiffs’ authorization, Target infringed on Plaintiffs’ reproduction
`
`and distribution rights in the copyrighted font software programs.
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`38.
`
`By downloading, storing, and loading the Animated Font Software Video and
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`Animated Font Software Programs without Plaintiffs authorization as alleged herein, Target
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`infringed on Plaintiffs’ exclusive rights to reproduce and prepare derivative works of the
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`copyrighted font software programs.
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`39.
`
`By creating documents such as those alleged in Paragraphs 28 and 33 above using
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`and embedding Plaintiffs’ Akzidenz-Grotesk font software without Plaintiffs’ authorization,
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`Target infringed on Plaintiffs’ exclusive rights to reproduce the copyrighted font software
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`programs.
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`40.
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`By distributing infringing materials to third parties and making the materials
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`available for download online, Target has infringed on Plaintiffs’ exclusive right to distribute
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`copies of the copyrighted font software.
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`41.
`
`Target’s acts of infringement are willful, intentional, and purposeful, in disregard
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`of and with indifference to Plaintiffs’ rights.
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`7
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 8 of 10 PageID #:306
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`42.
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`Plaintiffs are entitled to recover the damages they have and will sustain, together
`
`with any gains, profits, and advantages obtained by Target as a result of its infringement, or to
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`statutory damages of $150,000 per infringement whichever is greater.
`
`43.
`
`Plaintiffs are also entitled to preliminary and permanent injunctive relief to
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`restrain and enjoin Target’s continuing infringement and to require Target to destroy all
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`infringing materials in its custody or control.
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`44.
`
`Plaintiffs are further entitled to their attorney’s fees and costs pursuant to 17
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`U.S.C. § 505.
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`45.
`
`46.
`
`COUNT II
`(Contributory and Vicarious Copyright Infringement)
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`Plaintiffs repeat and reallege all prior paragraphs of this Complaint herein.
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`Target’s conduct as described herein additionally constitutes contributory and
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`vicarious infringement of Plaintiffs’ copyrights.
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`47.
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`Target knowingly encouraged, facilitated, and induced Calango’s unauthorized
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`use of Plaintiffs’ copyrighted font software and have derived substantial benefit therefrom.
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`48.
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`Target had the right and ability to supervise the infringing activity complained of
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`herein and had a direct financial interest in such activity.
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`49.
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`Plaintiffs are entitled to recover the damages they have and will sustain, together
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`with any gains, profits, and advantages obtained by Target as a result of the infringement alleged
`
`herein.
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`50.
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`Plaintiffs are further entitled to their attorney’s fees and costs pursuant to 17
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`U.S.C. § 505.
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`8
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 9 of 10 PageID #:307
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`COUNT III
`(Breach of License Agreement)
`
`51.
`
`52.
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`Plaintiffs repeat and reallege all prior paragraphs of this Complaint herein.
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`To the extent Target purchased a license to use certain of Plaintiffs’ font software
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`programs, the uses complained of herein are not authorized and represent a material breach of
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`that license.
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`53.
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`Target’s refusal to document its uses of Plaintiffs’ font software programs further
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`constitutes a material breach of the license.
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`54.
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`The “Termination” term of the parties’ license agreement provides:
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`9. Termination. The license rights granted under this Agreement are
`perpetual. Notwithstanding, the license rights under this Agreement will
`immediately and automatically terminate without notice if you fail to
`comply with any term or condition of this Agreement, or upon your
`bankruptcy. Upon termination, you must destroy all copies of the Font
`Software. The balance of the Agreement shall survive any such
`termination of license rights.
`
`To the extent that Target has not destroyed or continues to use Plaintiffs’ font
`
`55.
`
`software programs, such conduct constitutes a material breach of the license agreement which
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`automatically terminated upon Target’s refusal to comply with the “Compliance” term.
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`56.
`
`Plaintiffs, having fully performed under the license agreement, are entitled to all
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`damages sustained as a result of Target’s material breaches of the license agreement.
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`Prayer for Relief
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`WHEREFORE, Plaintiffs pray that the Court enter judgment in their favor and against
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`Defendant as follows:
`
`A.
`
`Preliminarily and permanently enjoin Defendant from making unauthorized use of
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`Plaintiffs’ Akzidenz-Grotesk font software and creating, producing, manufacturing, or displaying
`
`anything created through unauthorized use of Plaintiffs’ Akzidenz-Grotesk font software;
`
`
`
`9
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`
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`Case: 1:17-cv-07180 Document #: 45 Filed: 05/01/18 Page 10 of 10 PageID #:308
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`B.
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`Direct that Defendant provide an accounting of any and all uses of Plaintiffs’ font
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`software programs;
`
`C.
`
`Direct that Defendant delivers for destruction at its expense, inter alia, all
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`materials created through unauthorized use of Plaintiffs’ Akzidenz-Grotesk font software,
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`together with any and all computer files, hard drives, computer programs, CDs, DVDs, or any
`
`other data storage devices bearing unauthorized and infringing copies of Plaintiffs’ Akzidenz-
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`Grotesk font software or derivative works created therefrom;
`
`D.
`
`Direct Defendant to pay Plaintiffs’ actual damages, together with any gains,
`
`profits, and advantages obtained by Defendant as a result of its infringement, or statutory
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`damages of $150,000 per infringement whichever is greater;
`
`E.
`
`Direct Defendant to pay Plaintiffs’ actual damages sustained as a result of their
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`breaches of the license agreement;
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`F.
`
`G.
`
`H.
`
`Find the license agreement to be terminated;
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`Award Plaintiffs their costs and attorneys’ fees; and
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`Grant such further relief as this Court deems just and necessary.
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`
`
`Peter S. Lubin
`Andrew C. Murphy
`DiTommaso Lubin Austermuehle, P.C.
`17W220 22nd St., Suite 410
`Oakbrook Terrace, IL 60181
`(630) 333-0000
`psl@ditommasolaw.com
`
`
`
`
`
`BERTHOLD L.L.C., et al.
`
`
`By: /s/ Peter S. Lubin
`
`One of their Attorneys
`
`
`
`
`
`Melissa M. Hunt
`Vice President & General Counsel
`Berthold Types Limited
`47 West Polk Street, Suite 100-340
`Chicago, IL 60605
`(312) 493-2517
`Melissa_Hunt@bertholdtypes.com
`
`10
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