CERTIFICATE OF EXPRESS MAILING
`
`I hereby certify that this document is being deposited with the United States
`Postal Service as "EXPRESS MAIL POST OFFICE TO ADDRESSEE"
`Service in an envelope addressed to the Commissioner for Trademarks, Box
`TTAB, 2900 Crystal Drive, Arlington VA 22202-35 I4
`
`belNo. EL9875S0706 J
`
`
`
`
`Date: October 24 20
`
`
`Express Mail
`
`Signature:
`Name: Marie Sinkfield
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`TRADEMARK
`
`In the Matter of Application Serial No. 76/401734
`Published in the Official Gazette on October 29, 2002
`
`Opposition No.
`
`Mark: ADE
`
`ACTION SOFTWARE INC.,
`
`Opposer,
`
`vs.
`
`RIGHT ASCENSION, INC.,
`
`Applicant.
`
`\.J\./\—/%/\&'H—/£\—/\_/
`
`OPPOSER ACTION SOFTWARE INC.’S MOTION TO SUSPEND PROCEEDINGS
`PENDING OUTCOME OF CIVIL ACTION
`
`Commissioner for Trademarks
`Box TTAB
`
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Attention: Trademark Trial and Appeal Board
`
`Action Software Inc. (“Opposer”) respectfully moves this Trademark Trial and Appeal
`
`Board (the “Board”) to suspend the registration proceedings for the mark shown in the
`
`application of Right Ascension, Inc. (“Applicant”), Serial No. 76/401734, because Opposer and
`
`

`
`
`
`Applicant are involved in a prior related civil action that will likely be dispositive of the issues
`
`before this Board.
`
`Applicant seeks to register ADE as a service mark for “computerized on-line retail
`
`services in the field of audio and audio-visual recordings, audio and audio-visual DVDS, audio-
`
`visual CD-ROMs, VHS recordings, electronic games, and novelties” in International Class 35
`
`(the “Disputed Mark”).
`
`Shortly after seeking to register the Disputed Mark, on or about April 12, 2001, Applicant
`
`filed Civil Action No. 01-CV-0666 (the “Prior Related Action”) in the United States District
`
`Court for the Western District of Pennsylvania against Opposer and other defendants. The Prior
`
`Related Action is an action for alleged copyright infringement, unfair competition and other
`
`torts, including without limitation, alleged false designation of origin and trademark dilution
`
`respecting the Disputed Mark.
`
`Applicant has alleged in the Prior Related Action that the Disputed Mark is inherently
`
`distinctive and has come to be closely and uniquely associated with Applicant’s products and
`
`services offered for sale on App1icant’s web site. See Paragraph 37 of Applicant’s Amended and
`
`Supplemental Complaint which was filed in the Prior Related Action (for purposes of this
`
`Motion, the “Prior Related Complaint”), a true and correct copy of which (without exhibits) is
`
`attached hereto and made a part hereof as Exhibit 1.
`
`On or about November 27, 2002, Opposer filed its Notice of Opposition opposing the
`
`registration of the Disputed Mark on various grounds. Approximately ten months later, on
`
`September 29, 2003, Opposer and other parties filed a dispositive motion in the Prior Related
`
`Action. That motion is currently pending before the federal court in the Western District of
`
`Pennsylvania and concerns the same issues before this Board. Opposer now respectfully
`
`2
`
`

`
`
`
`requests that this Board suspend the within proceedings until final determination of the Prior
`
`Related Action.
`
`A true and correct copy of Opposer’s motion for summary judgment
`
`in the Prior
`
`Related Action (for purposes of this Motion, the “Prior Related Dispositive Motion”) is attached
`
`hereto and made a part hereof as Exhibit 2. Among the issues to be resolved in the Prior Related
`
`Action and the Prior Related Dispositive Motion are whether (i) Applicant has used and is using
`
`the Disputed Mark in a manner that would be readily perceived as identifying the services recited
`
`in Applicant’s service mark application,
`
`(ii) consumers regard the Disputed Mark as a
`
`designation of source of the services recited in Applicant’s service mark application, and (iii) the
`
`Disputed Mark even meets the requirements for a service mark. See Exhibit 2, at pp. 16-19.
`
`Similarly, the issues before this Board are whether (i) the Disputed Mark has been used
`
`and is currently being used in a marmer that would be readily perceived as identifying the
`
`services recited in Applicant’s service mark application, (ii) consumers regard the Disputed
`
`Mark as a designation of source of the services recited in Applicant’s service mark application,
`
`and (iii) the Disputed Mark even meets the requirements for a service mark. See Opposer’s
`
`Notice of Opposition, at 111] 4,5.
`
`Since the issues before the federal district court in the Prior Related Action and before the
`
`Board in the within proceedings are exactly the same, the district cou1t’s disposition of them in
`
`the Prior Related Action is binding upon the Board. See, e.g. Goya Foods, Inc. v. Tropicana
`
`Products, Inc., 846 F.2d 848, 6 USPQ 2d 1950 (2d Cir. 1988); American Bakeries Co. v. Pan-0-
`
`Gold Baking Co., 650 F.Supp. 563, 2 USPQ 2d 1208 (D. Minn. 1986). Whenever it comes to the
`
`attention of the Board that the parties to a case pending before it are involved in a civil action
`
`which may be dispositive of the Board case, proceedings before the Board may be suspended
`
`3
`
`

`
`
`
`until final determination of the civil action. See, e.g., 37 CFR 2.1 l7(a); General Motors Corp. v.
`
`Cadillac Club Fashions Inc., 22 USPQ2d 1933 (TTAB 1992); Toro Co. v. Hardigg Industries,
`
`Inc., 187 USPQ 689 (TTAB 1975), rev’d on other grounds, 549 F.2d 785, 193 USPQ 149
`
`(CCPA 1977); Other Telephone Co. v. Connecticut Nat 'l Telephone Co., 181 USPQ 125 (TTAB
`
`1974), petition denied, 181 USPQ 779 (Comm’r 1974); Tokaido v. Honda Associates Inc., 179
`
`USPQ 861 (TTAB 1973); Whopper-Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB
`
`1971); Squirrel Brand Co. v. Barnard Nut Co., 101 USPQ 340 (Comm’r 1954); Townley
`
`Clothes, Inc. v. Goldring, Inc., 100 USPQ 57 (Comm’r 1953).
`
`isuspension of a Board proceeding pending the final determination of another proceeding
`
`is solely within the discretion of the Board. See Opticians Ass 'n of America v. Independent
`
`Opticians of America Inc., 734 F.Supp. 1171, 14 USPQ2d 2021 (D.N.J. 1990). However,
`
`ordinarily the Board will suspend proceedings in the case before it if the final determination of
`
`the other proceeding will have a bearing on the issues before the Board.
`
`See, e.g., Other
`
`Telephone Co. v. Connecticut Nat'l Telephone C0,, 181 USPQ 125 (TTAB 1974), petition
`
`denied, 181 USPQ 779 (Comm’r 1974); Tokaido v. Honda Associates Inc., 179 USPQ 861
`
`(TTAB 1973); Whopper—Burger, Inc. v. Burger King Corp., 171 USPQ 805 (TTAB 1971);
`
`Martin Beverage Co. v. Colita Beverage Corp., 169 USPQ 568 (TTAB 1971).
`
`When a motion to suspend pending the outcome of a civil action is filed, the Board
`
`normally will require that a copy of the pleadings from the civil action be submitted, so that the
`
`Board can ascertain whether the final determination of the civil action will have a bearing on the
`
`issues before the Board. See SCOA Indus. Inc. v. Kennedy & Cohen, Inc., 188 USPQ 411
`
`(TTAB 1975). Accordingly, in addition to the Prior Related Complaint and the Prior Related
`
`Dispositive Motion, a true and correct copy of Opposer’s Answer, Affirrnative Defenses, and
`
`4
`
`

`
`
`
`Counterclaims with Jury Demand fiom the Prior Related Action is attached hereto and made a
`
`part hereof as Exhibit 3 so that the Board has all the relevant pleadings from the Prior Related
`
`Action in its possession.
`
`Here, those papers and the papers filed in connection with the within proceedings clearly
`
`demonstrate that all of the issues currently pending before this Board will be decided in the Prior
`
`Related Action.
`
`WI-IEREFORE,
`
`for
`
`the reasons and legal precedents
`
`set
`
`forth herein, Opposer
`
`respectfully requests that the Board exercise its discretion and suspend the within proceedings
`
`pending the Pennsylvania court’s final determination of the Prior Related Action.
`
`DATED: October 24, 2003
`
`Respectfully submitted,
`
`4%
`
`
`
`Steve M. Auvil
`Mark . Avsec
`
`BENESCH, FRIEDLANDER,
`COPLAN & ARONOFF LLP
`2300 BP Tower
`
`200 Public Square
`Cleveland, Ohio 44114-2378
`(216) 363-4500
`
`Attorneys for Opposer
`ACTION SOFTWARE INC.
`
`

`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a true and correct copy of the foregoing was served
`
`upon the following counsel of record by United States Mail, first class service, this 24th day of
`
`October, 2003.
`
`Roy E. Leonard
`Stonecipher, Cunningham, Beard & Schmitt, P.C.
`125 First Avenue
`
`Pittsburgh, PA 15222
`
`CounselforApplicantRightAscension,Inc.
`
`[2/
`
`
`Meirk E. Avsec, Esq.
`\,
`
`Doc M27552 Ver I
`
`

`
`
`
`BENESCH
`
`Friedlander Coplan
`ISL Ar0r1_0__ff LLP
`ATTO_R-NEYS at Law" "
`
`Mark E. Avsec
`
`Writer’s Direct Dial (216)363-4151
`
`October 24, 2003
`Commissioner for Trademarks
`Box TTAB
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`egwg
`
`//I//////ll/
`
`U-slpa
`
`70294.20
`“W %,%°3
`“‘°”~q,,,,t 5»
`
`-
`
`Re:
`
`Application of Right Ascension, Inc.
`For the Mark — ADE
`
`Serial No. 76/401,734
`Opposition No. 91 154431
`
`To Whom It May Concern:
`
`Enclosed for filing in the captioned matter is the following:
`
`1. Opposer Action Software Inc.’s Motion to Suspend Proceedings
`Pending Outcome of Civil Action;
`2. Exhibits to same; and
`3. Return Receipt Post Card.
`
`Thank you for your attention to this matter.
`
`Sincerely,
`
`NESCH, FRIEDLANDER,
`PLAN & ARONOFF LLP
`
`
`
`Mark Avsec
`
`MEA:mas
`
`Enclosures
`
`cc:
`
`Roy Leonard (W/enclosures)
`Steven Auvil (w/o enclosures)
`Docket
`
`Cleveland: 2300 BP Tower
`
`'I- 200 Public Square
`
`Cleveland, Ohio 44ll4—Z378 |- Phone: (216) 363-4500 F Fax: (216) 363-4538
`
`Columbus: 88 East Broad Street
`
`I‘ Suite 900 9- Coltimbus, Ohio 43215-3506 b Phone: (614) 223-9300 > Fax: (614) 223-9330
`
`"- "- "1 -"'1'
`
`'-W‘-1
`
`Doc 1162651 Ver 1
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`

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`

`
`
`
`IN THE UNITED STATES DISTRICT COURT
`
`FOR THE WESTERN DISTRICT OF PENNSYLVANIA
`
`RIGHT ASCENSION, INC.,
`t/d/b/a DVDEMPIRECOM,
`
`Civil Action No. 01-CV-0666
`
`Plaintiff,
`
`Judge William L. Standish
`
`CQPV
`
`ACTION-DVD.COM, INC., ACTION
`SOFTWARE, INC., WEBIMAGE2000, INC.,
`ALEXANDER BELFER, and OLEG MINKO,
`
`Defendants.
`
`AMENDED AND SUPPLEMENTAL COMPLAINT
`
`NOW COMES Plaintiff, Right Ascension, Inc., tldfb/a DVDEmpire.com ("Plaintiff”), by
`
`and through its undersigned counsel, and for its Amended and Supplemental Complaint against
`
`Defendants Action-DVD.com, Inc., Action Software, Inc., WebImage2000, Inc., Alexander
`
`Belfer and Oleg Minko (hereinafier collectively referred to as “Defendants”), sets forth the
`
`following claims and averments, to wit:
`
`THE PARTIES
`
`1.
`
`Plaintiff Right Ascension, Inc., t/d/b/a DVDEmpire.com ("Plaintiff”), is a
`
`Pennsylvania corporation with its principal place of business at 2140 Woodland Road,
`
`Warrendale, Allegheny County, Pennsylvania 15086.
`
`

`
`
`
`2.
`
`Upon information and belief, Defendant Action-DVD.com, Inc. (“Action-DVD”)
`
`is an Ohio corporation with its principal place of business at 34574 Lake Shore Blvd., Eastlake,
`
`Ohio 44095.
`
`3.
`
`Upon information and belief, Defendant Action Software, Inc. (“Action
`
`Software") is an Ohio corporation with its principal place of business at 345 74 Lake Shore Blvd.,
`
`Eastlake, Ohio 44095.
`
`4.
`
`Upon information and belief, Defendant WebImage2000, Inc. (“weblmage”) is a
`
`Florida corporation with its principal place of business at 6801 Lake Worth Road, #126, Lake
`
`Worth, Florida 33467.
`
`5.
`
`Upon information and belief, Defendant Alexander Belfer (“Mr. Belfer”) is an
`
`adult individual and maintains an address at 74233 Essex Drive, Mentor, Ohio 44060. Upon
`
`further information and belief, Mr. Belfer directly controls the operation of Action-DVD, Action
`
`Software, and Weblmage.
`
`6.
`
`Upon information and belief, Defendant Oleg Minko (“Mr. Minko”) is an adult
`
`individual and maintains an address at 34574 Lake Shore Blvd., Eastlake, Ohio 44095. Upon
`
`finther information and belief, Mr. Minko directly controls the operation of Action-DVD, Action
`
`Software, and Weblmage in combination with Mr. Belfer.
`
`JURISDICTION AND VENUE
`
`7.
`
`This Court has subject matter jurisdiction of this dispute, including pendent state
`
`law claims, as it contains more than one federal question and arises between citizens of different
`
`states. The numerous bases for jurisdiction include 28 U.S.C. §§ 1331, 1332, 1338, and 1367, as
`
`well as 15 U.S.C. § ll21(a) based on activities implicating the United States trademark laws.
`
`

`
`
`
`8.
`
`The amount in controversy in this action is in excess of $75,000.00 exclusive of
`
`interest and costs.
`
`9-
`
`Venue of the within dispute is proper in this judicial district pursuant to 28 U.S.C.
`
`§§ 1391(b) and (c), as well as pursuant to 28 U.S.C. § l400(a) based on activities implicating the
`
`United States copyright laws.
`
`10.
`
`This Court has personal jurisdiction over each defendant pursuant to Pa. Stat.
`
`Ann. Tit. 42, § 5301, Pa. Stat. Ann. Tit. 42, § 5322, andlor Fed.R.Civ.P. 4(k).
`
`FACTS COMMON TO ALL COUNTS
`
`1].
`
`This is an action for copyright infringement, unfair competition and other torts,
`
`which arises from Defendants’ regular and systematic theft of copyrighted works from Plaintiff’ 3
`
`Internet web site to augment the content of Defendants’ web site. Defendants have stolen dozens
`
`if not hundreds of copyrighted works and placed them on their Internet web site, without
`
`authorization from Plaintiff, for the express purpose of selling motion pictures and other
`
`audiovisual works on Digital Video Discs (“DVDS”).
`
`12.
`
`Since approximately November 1997, Plaintiff has been selling motion pictures
`
`and other audio and audiovisual works on DVDs to the public directly and exclusively through
`
`its Internet web sites at www.dvdempire.com (hereinafter the “dvdempirecom” site) and
`
`www.adultdvdempire.com (hereinafter the “adultdvdempire.com” site). The
`
`adultdvdempirecom web site is a site through which Plaintiff sells DVDS of adult entertainment
`
`motion pictures. As a result of the popularity of DVD motion pictures and Plaintiff's web sites,
`
`Plaintiff has become one of the leading on-line retailers of motion picture DVDs both in this
`
`country and internationally.
`
`

`
`
`
`13.
`
`Defendants, all of which have engaged directly and/or indirectly in infringements
`
`of Plaintiff’ s U.S. copyrights in Pennsylvania and throughout the United States, operate a web
`
`site located at www.action-dvd.com (hereinafter the “action-dvd.com” site). Defendants market
`
`and sell DVDs of adult entertainment motion pictures to the public directly through the action-
`
`dvd.com web site. Defendant Action Sofiware owns the action-dvd.com domain name.
`
`14.
`
`The profitability and success of the adultdvdempire.com web site is based, in part,
`
`on the unique and original images, screenshots, photographs and other pictorial and textual
`
`works, including movie synopses, personal and biographical information of the motion picture
`
`actors, that Plaintiff has created, developed, collected, selected, organized, framed and/or
`
`fonnatted, and displays on the adu1tdvdempire.com web site (the “copyrighted works”).
`
`Through the use of its copyrighted works, Plaintiff has developed a brand identity and global
`
`reputation that has resulted in it being a leading on-line retailer of adult entertainment motion
`
`picture DVDS.
`
`15.
`
`Plaintiff is the copyright owner, or the legal or beneficial owner of exclusive
`
`rights under the Copyright Act, of the copyrighted works on the dvdempire.com and
`
`adultdvdempire.com web sites. Plaintiff has secured the exclusive rights to the copyrighted
`
`works on both the dvdempire.com and adultdvdempire.com web sites and has received, from the
`
`Register of Copyrights, Certificates of Registration dated and identified as: Registration No.
`
`VAI-059-874 (dvdempire.com) and Registration No. VA]-059-873 (adultdvdempirecom).
`
`(Copies of these Certificates of Registration are attached collectively hereto as Exhibit “l ”).
`
`16.
`
`Plaintiff subsequently published and registered the contents of its web sites as an
`
`automated group database. Once that registration has been processed fully by the Register of
`
`Copyrights, Plaintiff will receive a new'Certif1cate of Registration dated October 2, 2001.
`
`

`
`
`
`17.
`
`At all relevant times herein, a valid copyright notice appeared at the bottom of
`
`every page of Plaintiff’ s web sites.
`
`18.
`
`Moreover, at all relevant times herein, Plaintiff notified users of the
`
`adultdvdempire.com web site of its exclusive rights in the copyrighted works by posting “Terms
`
`of Use” that provide, in pertinent part:
`
`. all information, images, text, messages, illustrations, graphics, logos, designs, icons,
`.
`“ .
`photographs, programs, data, software, music, sound, video, or other materials that are
`part of this Website (collectively, the “Content”) are protected by copyrights, trademarks,
`service marks, publicity rights, or other proprietary rights and laws owned, controlled or
`licensed by DVD Empire or by third parties (the “Third Party Providers”) who have
`provided materials to DVD Empire, and these rights are valid and protected in all forms,
`media and technologies, existing now or hereinafter developed. All Content is
`copyrighted as a collective work under the U.S. Copyright laws, and DVD Empire owns
`a copyright in the selection, coordination, arrangement, and enhancement of such
`Content. .
`.
`.
`
`“Except as set forth herein, none of the Content may be copied, reproduced, framed,
`modified, removed, sold, distributed, republished, downloaded, displayed, posted,
`.
`.
`transmitted, or otherwise exploited, in whole or in part, in any form or by any means .
`without the express written permission of DVD Empire or the Third Party Provider. No
`part of this Website may be reproduced or retransmitted in any way, or by any means,
`without the express written permission of DVD Empire. .
`. .”
`
`19.
`
`Attached hereto as Exhibit “2” are examples of works, infringed by Defendants,
`
`in which Plaintiff owns a copyright, or in which Plaintiff was a legal or beneficial owner of
`
`exclusive rights under the Copyright Act at the time Defendants used and displayed the
`
`copyrighted works on the action—dvd.com web site. Each such work is an original pictorial,
`
`graphic or textual work fixed in a tangible medium of expression. Each such work is
`
`copyrightable subject matter within the meaning of the Copyright Act, 17 U.S.C. § 102, and each
`
`has been registered with the United States Copyright Office.
`
`20.
`
`The Copyright Act grants to owners the exclusive right to determine whether to
`
`license their works for public display through any medium, to whom they will grant such
`
`

`
`
`
`licenses, and the terms on which they are willing to grant such licenses. Plaintiff has not granted
`
`any license, permission, or authorization of any kind whatsoever to Defendants with respect to
`
`any of Plaintiff’ s copyrighted works (or works in which Plaintiff was, at all relevant times, a
`
`legal or beneficial owner of exclusive rights under the Copyright act), much less granted
`
`Defendants permission to publicly display the copyrighted works on the Internet.
`
`21.
`
`Plaintiff wrote to Defendants to demand that they cease violating, among other
`
`things, Plaintiff’ s U.S. copyrights. Defendants rejected Plaintiffs request. Upon information
`
`and belief, however, as of the date of this Amended Complaint, it appears that various
`
`copyrighted works belonging to Plaintiff have been removed by the Defendants from the action-
`
`dvd.com site.
`
`22.
`
`Beginning at a time unknown by Plaintiff, but believed to be shortly before the
`
`effective date of initial registration of the works on Plaintiffs web sites (January 18, 2001) and
`
`prior to the registration of Plaintiff’ s automated group database (October 2, 2001), Defendants
`
`infringed Plaintiff’ s exclusive rights under 17 U.S.C. § 106 in dozens if not hundreds of
`
`copyrighted works. Among other things, Defendants, without authorization, published Plaintiff’ s
`
`copyrighted works on the action-dvd.com web site and, further, created unauthorized derivative
`
`works by, among other things, deleting Plaintiff's “ADE” (Adult DVD Empire) mark, selecting,
`
`arranging, and editing copied portions of the copyrighted works, which Defendants then posted
`
`on the action-dvd.com web site. For example, a sampling of the images, cover art, photographs,
`
`screenshots and text that Defendants copied wholesale and posted to the action-dvd.com web site
`
`appear on Exhibit “2” along with the very same works that originated on Plaintiff’ s
`
`adultdvdempire.com web site.
`
`

`
`
`
`23.
`
`The Copyright Act grants this Court the authority to issue both preliminary and
`
`permanent injunctive relief to halt infringements such as those committed by Defendants. 17
`
`U.S.C. § 502. The Act also provides for awards of statutory damages of up to $150,000 per
`
`work for willful infringements such as those committed by Defendants, for awards of attorneys’
`
`fees to the prevailing party, and for other relief.
`
`24.
`
`Defendants’ piracy of the copyrighted works from the adultdvdempire.com web
`
`site was driven by Defendants’ desire to increase profits from the sale of DVDs via Defendants’
`
`action-dvd.com web site.
`
`25.
`
`By reproducing, copying, publishing, displaying, distributing and otherwise
`
`placing the copyrighted works on the action-dvd.com web site, Defendants have willfully and
`
`deliberately sought to benefit from and trade upon, and have, in fact, benefited from and traded
`
`upon, the good works, name and reputation of Plaintiff, all to Plaintiffs damage and detriment.
`
`26.
`
`Defendants’ reproduction and publication of the copyrighted works falsely and
`
`misleadingly implied to the general public that the copyrighted works on the action-dvd.com web
`
`site were sponsored by, afliliated with or otherwise authorized by Plaintiff. Increasing the
`
`likelihood of public confusion is the fact that many of the works which were copied from
`
`Plaintiff‘ s web site, and which subsequently appeared on Defendants’ web site, continued to
`
`display Plaintiff’s “ADE” mark. Through their unauthorized use of Plaintiffs marks and
`
`copyrighted works, Defendants violated federal and state trademark laws.
`
`27.
`
`Plaintiff has been irreparably injured by all of the violations described herein, and
`
`has no adequate remedy at law. Unless Defendants are restrained by this Court, Defendants will
`
`be free to continue to irreparably harm Plaintiff through their unlawful actions.
`
`

`
`
`
`COUNT I
`
`COPYRIGHT INFRINGEMENT
`
`(17 U.S.C. § 101 e_tg{.)
`
`28.
`
`Plaintiff incorporates each and every averment contained in paragraphs 1 through
`
`27, above, as though fully rewritten herein.
`
`29.
`
`Plaintiff is the copyright owner of, or the legal or beneficial owner of exclusive
`
`rights in, the copyrighted works contained in Exhibit “2”, as well as many other copyrighted
`
`works that appear on the adultdvdempire.com web site. (See Exhibit “2” attached hereto).
`
`30.
`
`Plaintiff has not authorized Defendants to make any use whatsoever of Plaintiffs
`
`copyrighted works or to make unauthorized derivative works based on them by, among other
`
`things, deleting Plaintiffs “ADE” mark, selecting, arranging and editing copied portions of the
`
`copyrighted works, and incorporating Plaintiffs original works — including those which still
`
`display Plaintiff‘ s “ADE” mark — into the action-dvd.com web site. (See Exhibit “2” attached
`
`hereto.)
`
`31.
`
`Defendants have violated the exclusive rights of Plaintiff under 17 U.S.C. § 106.
`
`Among other things, and without limitation, Defendants have (a) reproduced Plaintiff’ s
`
`copyrighted works on the Internet without Plaintiffs consent, (b) created unauthorized derivative
`
`works based on Plaintiffs copyrighted works, and (c) publicly displayed Plaintiff’ s copyrighted
`
`works on the Internet without Plaintiffs consent.
`
`32.
`
`By their course of conduct, Defendants have demonstrated a willingness and an
`
`intention to continue, without authorization, to reproduce Plaintiffs copyrighted works on the
`
`lntemet, to create derivative works based on Plaintiffs copyrighted works, to publicly display
`
`unauthorized copies and derivative works, and otherwise to infringe Plaintiff’ s copyrights, all of
`
`which would result in additional irreparable harm to Plaintiff, while profiting Defendants.
`
`

`
`
`
`33.
`
`The acts of Defendants, as described above, were willful.
`
`COUNT II
`
`FALSE DESIGNATION or ORIGIN
`
`(15 U.S.C. § ll25(a))
`
`34.
`
`Plaintiff incorporates each and every averment contained in paragraphs 1 through
`
`33, above, as though fully rewritten herein.
`
`35.
`
`Through the acts described above and the false and misleading representations
`
`made by Defendants as presented on the action-dvd.com web site, Defendants have publicly
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`conveyed the false and misleading representation that Defendants and Plaintiff are somehow
`
`affiliated, connected or associated with each other, when in fact they are not.
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`36.
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`Plaintiff owns the “ADE” (AduItDVDEmpire) mark which it places on many of
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`the works that appear on its adultdvdempirecom web site.
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`37.
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`The “ADE” mark is inherently distinctive and has come to be closely and
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`uniquely associated with Plaintiffs products and services offered for sale to the public on the
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`adu1tdvdempire.com web site. Plaintiff has expended time, effort and money developing and
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`promoting the “ADE” mark as a symbol of its products and services worldwide.
`
`38.
`
`Plaintiff began using its “ADE” mark in commerce, not only in Pennsylvania but
`
`throughout the United States and worldwide, in October 2000, which is prior to the time when
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`Defendants began to misuse the “ADE” mark. Plaintiff is therefore the senior user of the mark.
`
`39.
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`As of October 2000, Plaintiff enjoyed exclusive use of the “ADE” mark to sell
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`DVD products and services on the Internet. Plaintiff’ s use of the “ADE” mark in Internet
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`commerce remained continuous and, for a period of time, unchallenged.
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`

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`
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`40.
`
`Subsequently, Defendants began copying works off the adultdvdempirecom web
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`site and placing these works on Defendants’ web site, leaving the “ADE” mark displayed on
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`these works. These copyrighted works included original images, screenshots, photographs and
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`other pictorial and textual works, and text, including movie synopses, personal and biographical
`
`information of the motion picture actors, used by Plaintiff— and subsequently also used by
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`Defendants — to advertise and sell DVD products and services to the general public.
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`41.
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`Because Plaintiff and Defendants are in direct competition to sell DVD products
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`and services on the Internet, Defendants’ displaying of Plaintiff’ 5 mark in connection with the
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`sale of DVDs on Defendants’ web site has created a likelihood of consumer confusion as to the
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`origin of the DVD products and services appearing on Defendants’ web site.
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`42.
`
`The acts of Defendants, as described above, were willful.
`
`43.
`
`Defendants’ actions were contrary to honest commercial practices and were likely
`
`to deceive customers in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(3).
`
`44.
`
`As a result of Defendants’ false, misleading and deceptive practices, Plaintiff has
`
`been irreparably harmed and is without an adequate remedy at law. The harms suffered by
`
`Plaintiff include, but are not limited to, injury to Plaintiff’ s reputation and goodwill, and to the
`
`reputation of its products and services, injury to the uniqueness and effectiveness of Plaintiffs
`
`marks, and damage to Plaintiffs commercial and business interests.
`
`I0
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`

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`
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`COUNT III
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`TRADE DRESS INFRINGEMENT
`
`(15 U.S.C. § 1125(3))
`
`45.
`
`Plaintiff incorporates each and every averment contained in paragraphs 1 through
`
`44, above, as though fully rewritten herein.
`
`46.
`
`In violation of the Copyright Act, Defendants have falsely represented to
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`consumers that Defendants owned Plaintiff’ s copyrighted works that appeared on the action-
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`dvd.com web site, when in fact Defendants had no such ownership interest or other rights in such
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`materials.
`
`In violation of the Lanham Act, 15 U.S.C. § l125(a), Defendants have falsely
`
`represented to consumers that Defendants and Plaintiff are somehow affiliated, connected or
`
`associated with each other, when in fact they are not.
`
`47.
`
`Defendants’ unlawful actions were not limited to the unauthorized copying of
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`Plaintiff’ s copyrighted works and protected marks, but also included mimicking the styles,
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`colors, and designs found on Plaintiff’ s web site, as well as the format that Plaintiff uses to
`
`display its unique and original images, screenshots, photographs and other pictorial and textual
`
`works, and text, including movie synopses, personal and biographical information of motion
`
`picture actors.
`
`48.
`
`The foregoing violations, taken together, demonstrate that Defendants displayed
`
`on their web site, without authorization, subject matter amounting to trade dress which is
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`inherently distinctive and uniquely indicative of Plaintiffs web site, advertisements, products,
`
`and services.
`
`49.
`
`Defendants’ misappropriation of Plaintiffs trade dress — including, but not
`
`limited to, Plaintiff’ s advertising materials, displays, photographs, marks, and other on-line sales
`
`presentation materials —- for use on Defendants’ web site, most likely has confused both
`
`ll
`
`

`
`
`
`customers and the general public, who erroneously may have believed they were viewing
`
`products and services being offered and/or endorsed by Plaintiff. Ultimately, Defendants’
`
`misappropriation of Plaintiff s trade dress also tended to mislead customers into believing they
`
`were purchasing products or services that were being sold and/or endorsed by Plaintiff, when in
`
`fact it was Defendants who were profiting from their misappropriation of Plaintiff s trade dress.
`
`50.
`
`Defendants’ actions, as described above, are a fiirther violation of Section 43(a) of
`
`the Lanham Act, 15 U.S.C. § ll25(a).
`
`51.
`
`52.
`
`Defendants’ actions, as described above, were willful.
`
`Defendants’ infringement of Plaintiffs trade dress has resulted in irreparable
`
`harm to Plaintiff, while profiting Defendants.
`
`COUNT IV
`
`TRADEMARK DILUTION
`
`(15 U.S.C. § ll25(c))
`
`53.
`
`Plaintiff incorporates each and every avennent contained in paragraphs 1 through
`
`52, above, as though fully rewritten herein.
`
`54.
`
`Defendants’ unauthorized and intentional misappropriation of Plaintiffs “ADE”
`
`mark to promote and sell Defendants’ DVD products and services on Defendants’ web site has
`
`diluted the distinctive, favorable, and unique quality of Plaintiffs “ADE” mark, in violation of
`
`_ the Lanham Act, 15 U.S.C. § 1125(0).
`
`55.
`
`Given the direct competition between Plaintiff and Defendants to sell the same
`
`types of products and services on the Internet, Defendants’ actions are accurately characterized
`
`as predatory in nature.
`
`I2
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`

`
`
`
`56.
`
`The blurring effect caused by Defendants’ misuse of Plaintiffs “ADE” mark has
`
`been harmful to Plaintiff’ s ability to market its own products and services using its mark. Unless
`
`the Defendants are enjoined from further misuse, public and customer confusion ultimately will
`
`render Plaintiffs “ADE” mark useless as a unique and distinctive identifier of Plaintiffs
`
`adultdvdempirecom web site and the products and services offered for sale on that web site.
`
`57.
`
`Defendants’ actions, as described above, are a further violation of the Lanham
`
`Act, 15 U.S.C. § ll25(c).
`
`58.
`
`59.
`
`Defendants’ actions, as described above, were both willful and predatory.
`
`Defendants’ dilution of Plaintiffs trademark has resulted in irreparable harm to
`
`Plaintiff, while profiting Defendants.
`
`COUNT V
`
`COMMON LAW TRADEMARK INFRINGEMENT
`(54 Pa. Cons. Stat. § 1126; Pennsylvania Common Law)
`
`60.
`
`Plaintiff incorporates each and every averment contained in paragraphs 1 through
`
`59, above, as though fully rewritten herein.
`
`61.
`
`By engaging in the conduct described above, Defendants infringed Plaintiffs
`
`“ADE” mark in violation of Plaintiffs common law rights and good faith interest in that mark.
`
`62.
`
`Plaintiff has used its “ADE” mark in commerce, not only in Pennsylvania but
`
`throughout the United States and worldwide, since October 2000. The “ADE” mark has
`
`acquired a secondary meaning associated exclusively with Plaintiffs products and services.
`
`63.
`
`Unless Defendants are enjoined from further unauthorized actions, public and
`
`customer confusion ultimately will render Plaintiffs “ADE” mark useless as a unique and
`
`I3
`
`

`
`
`
`distinctive identifier of Plaintiff's adultdvdempire.com web site and the products and services
`
`offered for sale on that web site.
`
`64.
`
`Plaintiff has been irreparably harmed by Defendants’ conduct and is without an
`
`adequate remedy at law.
`
`65.
`
`Unless the relief requested herein by Plaintiff is granted, Plaintiff may suffer
`
`further serious and irreparable harm.
`
`COUNT VI
`
`INJURY TO BUSINESS OR REPUTATION; DILUTION
`(54 Pa. Cons. Stat. § 1124)
`
`66.
`
`Plaintiff incorporates each and every averment contained in paragraphs 1 through
`
`65, a