Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA402529
`ESTTA Tracking number:
`04/07/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91197499
`Defendant
`Heartland Home Infusions, Inc.
`LAURIE A. HAYNIE
`HUSCH BLACKWELL SANDERS LLP WELSH & KATZ
`120 S RIVERSIDE PLZ FL 22
`CHICAGO, IL 60606-3912
`UNITED STATES
`gtsdocket@welshkatz.com
`Motion to Suspend for Civil Action
`Laurie A. Haynie
`lahdocket@welshkatz.com
`/lah/
`04/07/2011
`Healix - suspend motion.PDF ( 27 pages )(334519 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`HEALIX INFUSION THERAPY, rNc., )
`)
`Opposer, (cid:9)
`)
`)
`
`)
`HEARTLAND HOME INFUSIONS, INC. )
`) (cid:9)
`Applicant. (cid:9)
`) (cid:9)
`) (cid:9)
`
`Application Serial Nos 85/042,982
`85/042,998
`Opposition No. 91197499
`
`Published October 26, 2010
`
`Marks: SIMPLIFY INFUSION PROCESS
`and SIMPLIFY THE
`INFUSION PROCESS
`
`APPICANT'S MOTION TO SUSPEND PENDING OUTCOME OF CWIL ACTION
`
`Applicant, Heartland Home Infusions, Inc. ("HHI"), by and through its undersigned
`
`counsel, hereby moves, pursuant to 37 C.F.R. § 2.117(a), to suspend the above-captioned
`
`proceeding pending the outcome of a civil action involving the marks at issue in this Opposition
`
`and which civil action may have a bearing on this case. This motion is based on the following:
`
`On November 22, 2010, Opposer Healix Infusion Therapy, Inc. ("Healix") filed a Notice
`
`of Opposition in connection with HHI's marks SIMPLIFY THE INFUSION PROCESS
`
`(Application No. 85/042998) and SIMPLIFY INFUSION PROCESS (Application No.
`
`85/042982). In its Opposition, Healix contends that the applied-for marks would cause a
`
`likelihood of confusion with Healix's claimed prior marks.
`
`2. Applicant filed its answer on December 13, 2010.
`
`3. Thereafter, on March 18, 2011, in a matter pending between the parties in the U.S.
`
`District Court for the Northern District of Illinois, titled Healix Infusion Therapy, Inc. v. HHI
`
`Infusion Services, Inc., Case No. 10-CV-3772 ("Illinois Action"), HHI filed an Answer and
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`Counterclaim for a declaratory judgment of noninfringement in connection with the two marks at
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`issue in this Opposition—SIMPLIFY THE INFUSION PROCESS and SIMPLIFY INFUSION
`
`

`
`PROCESS. A copy of HHI"s Answer and Counterclaim in the Illinois Action (without exhibits)
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`is attached as Exhibit A.
`
`4. Consequently, the Court in the Illinois Action will be rendering a decision on issues of
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`fact that are relevant to (and indeed control) various matters at issue in this Opposition, including
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`but not limited to priority of use, any likelihood of confusion, etc.
`
`5. Under 37 C.F.R. § 2.117, whenever parties to a pending case "are engaged in a civil
`
`action . . . which may have a bearing on the case, proceedings before the Board may be
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`suspended until termination of the civil action . . ..'"
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`6. Because the pending Illinois Action involves the same issues that are before the
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`Trademark Trial and Appeal board in this proceeding„ HFII respectfully requests that this matter
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`be suspended pending the outcome of the Illinois Action.
`
`April 7, 2011 (cid:9)
`
`Respectfully submitted,
`
`HEARTLAND HOME INFUSIONS, INC.
`
`By: (cid:9)
`
`s/ Laurie A. Haynie
`Laurie A. Haynie
`Gerald T. Shekleton
`Husch Blackwell Sanders
`Welsh & Katz
`120 South Riverside Plaza, 22" Floor
`Chicago, IL 60606
`(312) 655-1500
`
`

`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing MOTION TO SUSPEND
`PENDING OUTCOME OF CIVIL ACTION was served on Opposer's counsel via the ECF
`system and via First Class Mail on this 7th day of April, 2011 upon:
`
`Scott Weiss
`Healix Infusion Therapy, Inc.
`14140 Southwest Freeway, Ste. 400
`Sugar Land, Texas 77478
`
`Andrew James Purcell
`Tressler, Soderstrom, Maloney & Priess, LLP
`233 South Wacker, 22nd Floor
`Chicago, IL 60602
`
`/s/ Laurie A. Haynie
`Laurie A. Haynie
`Gerald T. Shekleton
`Husch Blackwell Sanders
`Welsh & Katz
`120 South Riverside Plaza, 22 nd Floor
`Chicago, IL 60606
`(312) 655-1500
`
`3
`
`

`
`EXHIBIT A
`EXHIBIT A
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 1 of 23 PagelD #:1696
`
`UNITED STATES DISTRICT COURT
`NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`HEALIX INFUSION THERAPY, INC.,
`
`Plaintiff;
`
`VS.
`
`HETI INFUSION SERVICES, INC., METRO
`INFECTIOUS DISEASE CONSULTANTS,
`INNOVATIVE VENTURES, LLC,
`EYE CREATE, INC. AND
`WILLIAM D. FERGUSON,
`
`Defendants.
`
`Civil Action No. 10-CV-03772
`
`Judge James B. Zagel
`
`ANSWER AND COUNTERCLAIM IN RESPONSE TO PLAINTIFF
`HEALIX INFUSION THERAPY, INC.'S THIRD AMENDED COMPLAINT
`
`Defendants Heartland Home Infusions, Inc., a/k/a HIII Infusion Services, Metro
`
`Infectious Disease Consultants, Innovative Ventures, LLC (collectively "MIT Defendants"), Eye
`
`Create, Inc. and William D. Ferguson (all collectively "Defendants") answer Plaintiff Healix
`
`Infusion Therapy, Inc.'s Third Amended Complaint as follows:
`
`INTRODUCTION
`
`This action is premised upon a series of intentional acts which not only resulted in
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`the infringement of Plaintiff Healix Infusion Therapy, Inc.'s federally registered copyright and
`
`trademarks, but interfered with its contractual relations, all of which were designed to cause
`
`economic harm.'
`
`In an attempt to offset this action, Defendant HHI Infusion Services filed Case No. 2010-L-006825;
`Heartland Home Infusion v. Healix Infusion Therapy, Inc. and Quarles & Brady, LLP, Cook County,
`Illinois on June 11, 2010. The lawsuit is without merit and both Defendants have filed their respective
`motions to dismiss.
`
`(cid:9)
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 2 of 23 PagelD #:1697
`
`ANSWER:
`
`Denied. In addition, the allegations set forth in Plaintiff's footnote 1 are denied, and
`
`footnote 1 should be stricken, as it is irrelevant and baseless. Further answering, Defendants
`
`state that the Court's Order dismissing various portions of Plaintiff's claims in this case (Court
`
`Docket No. 148 dated 1/27/2011) forecloses aspects of Plaintiff's claims.
`
`2.
`
`Plaintiff Healix Infusion Therapy, Inc. ("Healix") is a Texas corporation with its
`
`PARTIES
`
`principal place of business in Sugar Land, Texas.
`
`ANSWER:
`
`Defendants lack knowledge or information sufficient to form a belief about the truth of
`
`the allegations in this paragraph and therefore DENY the same.
`
`3.
`
`Defendant (cid:9)
`
`Infusion Services, Inc. ("HEI") is an Illinois corporation with its
`
`principle place of business in Hinsdale, Illinois.
`
`ANSWER:
`
`Defendants admit that Defendant, Heartland Home Infusions, Inc., is an Illinois
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`corporation with its principal place of business in Burr Ridge, Illinois, and operates using the
`
`assumed name HHI Infusion Services. Except as expressly stated herein, the allegations of this
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`paragraph are DENIED.
`
`4.
`
`Defendant Metro Infectious Disease Consultants ("Metro") is an Illinois
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`corporation with its principle place of business in Hinsdale, Illinois.
`
`ANSWER:
`
`Defendants admit that Defendant, Metro Infectious Disease Consultants ("Metro"), is an
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`Illinois limited liability corporation with its principal place of business in Hinsdale, Illinois.
`
`Except as expressly stated herein, the allegations of this paragraph are DENIED.
`
`2
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 3 of 23 PagelD #:1698
`
`5.
`
`Defendant Innovative Ventures, LLC ("Innovative Ventures") is an Illinois
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`corporation with its principle place of business in Hinsdale, Illinois.
`
`ANSWER:
`
`Defendants admit that Defendant, Innovative Ventures, LLC ("Innovative Ventures"), is
`
`an Illinois limited liability corporation with its principal place of business in Burr Ridge, Illinois.
`
`Except as expressly stated herein, the allegations of this paragraph are DENIED.
`
`6.
`
`Defendant Eye Create, Inc. ("Eye Create") is an Illinois corporation with its
`
`principle place of business in Plainfield, Illinois.
`
`ANSWER:
`
`Defendants admit that Defendant, Eye Create, Inc. ("Eye Create"), is an Illinois
`
`corporation with its principal place of business in Plainfield, Illinois. Except as expressly stated
`
`herein, the allegations of this paragraph are DENIED.
`
`7.
`
`Defendant William D. Ferguson ("Ferguson") is a resident of the State of Illinois.
`
`ANSWER:
`
`Admitted.
`
`JURISDICTION AND VENUE
`
`8.
`
`The Court has original jurisdiction over the federal claims alleged herein pursuant
`
`to 17 U.S.C.A. § 101, et seq., 28 U.S.C. §§ 1331, 1338 and 15 U.S.C. § 1121(a), as they arise
`
`under the Copyright Act and the Lanham Act. Jurisdiction is also proper as to the state claims
`
`under 28 U.S.C. § 1332 because the parties are diverse and the amount in controversy exceeds
`
`$75,000.00. The Court has personal jurisdiction over all Defendants because they are
`
`incorporated and/or residence of the state and have their principal places of business within the
`
`District. Venue is proper in the District pursuant to 28 U.S.C. §§ 1391(b) and (c) and 1400(b)
`
`3
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 4 of 23 PagelD #:1699
`
`because a substantial part of the events giving rise to the claims in this action occurred within
`
`this District.
`
`ANSWER:
`
`Defendants admit that the Court has subject matter jurisdiction over the claims remaining
`
`in this case. Defendants further admit that personal jurisdiction over Defendants exists in this
`
`case and venue is proper in this Court. Further answering, Defendants state that the Court's
`
`Order dismissing various portions of Plaintiff's claims in this case (Court Docket No. 148 dated
`
`1/27/2011) forecloses aspects of Plaintiff's claims. Except as expressly stated herein, the
`
`allegations of this paragraph are DENIED.
`
`FACTUAL BACKGROUND
`
`9. (cid:9)
`
`Since 1989, Healix has conducted business in the healthcare industry across the
`
`United States providing infusion therapy services, durable medical equipment and pharmacy
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`services to physicians and their respective practices. Healix's core business model consists of
`
`establishing business relationships with specialty physician groups who utilize infusion therapy
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`treatment within their respective practices. In turn, Healix will develop its Office Infusion
`
`Center within the practice where the patients receive their treatment. Depending on the
`
`requirements of the jurisdiction, Healix will typically staff the site with a pharmacist and/or
`
`registered nurse, sell the practice the drugs for the site, handle practice management matters
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`while also coordinating and overseeing investigational drug studies involving pharmaceutical
`
`companies and principal investigators.
`
`ANSWER:
`
`Defendants lack knowledge or information sufficient to form a belief about the truth of
`
`the allegations in this paragraph and therefore DENY same.
`
`4
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 5 of 23 PagelD #:1700
`
`10. Healix has spent considerable time, effort, and expense in promoting, marketing,
`
`and distinguishing itself from it competitors and others offering infusion therapy services. In
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`doing so, it has gained a considerable amount of goodwill through its website at www.healix.net,
`
`as well as through the use of marketing brochures, direct mail efforts, industry tradeshows and
`
`other promotional efforts. As a result, the healthcare industry has come to rely upon and
`
`recognize Healix as the indicator of high-quality healthcare services with an unmatched level of
`
`professionalism and fair-dealing.
`
`ANSWER:
`
`Denied.
`
`A.
`
`HEALIX'S INTELLECTUAL PROPERTY
`
`11.
`
`To protect its interests, Healix owns United States Copyright Registration
`
`Number TX 6-962-837 entitled "Benefits Page and Others" on file with the United States
`
`Copyright Office for the text and other substantive information appearing on its website located
`
`at www.healix.net. The website provides information about Healix's services, the benefits
`
`offered to healthcare practioners (sic) and others within the healthcare industry and is used for
`
`marketing purposes. Each page of the website displays proper copyright notices and symbols.
`
`See Exhibit "A".
`
`ANSWER:
`
`Defendants lack knowledge or information sufficient to form a belief about the truth of
`
`the allegations in this paragraph and therefore DENY same. Further answering, Defendants state
`
`that the Court's Order dismissing various portions of Plaintiff's claims in this case (Court Docket
`
`No. 148 dated 1/27/2011) forecloses aspects of Plaintiff's claims.
`
`12. Additionally, Healix owns numerous trademarks and service marks on file with
`
`the United States Patent and Trademark Office, including the HEALIX PRACTICE
`
`5
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 6 of 23 PageD #:1701
`
`SIMPLICITY®, PRACTICE SIMPLICITY® and CORIS® marks as reflected by United States
`
`Federal Registration Nos. 3697483, 3112938 and 3248177 all of which are used within the
`
`healthcare industry. These marks have been used in the healthcare industry since 2004 and are
`
`not only distinctive, but are valid, subsisting, and in full force and effect. All marks display the
`
`registration symbol. See Exhibit "B".
`
`ANSWER:
`
`Defendants state that the documents attached to the Third Amended Complaint as Exhibit
`
`"B" speak for themselves. Defendants lack knowledge or information sufficient to form a belief
`
`about the truth of the remaining allegations in this paragraph and therefore DENY same. Except
`
`as expressly stated herein, the allegations of this paragraph are DENIED.
`
`B.
`
`DEFENDANTS' ACTS OF INFRINGEMENT
`
`13. (cid:9)
`
`In late 2009, Healix learned that the protected work on its website consisting of
`
`original text for which it owns United States Copyright Registration Number TX 6-962-837 had
`
`been copied and placed on www.hhiinfusionservices.com by the HHI Defendants thereby
`
`suggesting that it was their intellectual property. 2 The HHI Defendants provide infusion services
`
`within the healthcare industry and are direct competitors of Healix. They market their infusion
`
`services through their respective websites located at www.hhiinfusionservices.com and
`
`www.metroinfusioncenter.com , as well as through the use of marketing brochures, industry
`
`tradeshows, sales calls and other promotional efforts. Similar to Healix, the HHI Defendant
`
`protects its own marks through the federal registration process and is therefore aware of the
`
`purpose of doing so. 3 See Exhibit "C".
`
`2 Defendant HI-II is the registrant and owner of www.hhiinfusionservices.com .
`3 While Defendants are considered competitors of Healix, their business model is distinctly different.
`
`6
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 7 of 23 PagelD #1702
`
`ANSWER:
`
`Defendants state that the document attached as Exhibit "C" speaks for itself. Defendants
`
`admit that the HHI Defendants provide infusion services. Defendants further admit that
`
`Heartland Home Infusions, Inc. operates an internet web site at www.hhiinfusionservices.com.
`
`Defendants further admit that Metro Infectious Disease Consultants operates an internet web site
`
`at www.metroinfusioncenter.com . Defendants admit that the HI-ll Defendants market their
`
`respective services, and protect their own marks through the federal registration process. Further
`
`answering, Defendants state that the Court's Order dismissing various portions of Plaintiff's
`
`claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses aspects of Plaintiff's
`
`claims. Except as expressly stated herein, the allegations of this paragraph are DENIED.
`
`14. In response to Healix's claims, the HHI Defendants admitted that a vendor they
`
`retained "improperly copied certain portions of Healix's website" [Docket Entry #33-1; page 2],
`
`but declared under oath that "at no time until Healix specifically brought the material to
`
`Defendants' attention were any of Defendants' employee aware that the retained vendor may
`
`have taken text and style directly from Healix's website" [Docket Entry #33-2; ¶ 13]. Despite
`
`their admission, the HHI Defendants failed to disclose the identity of their vendor in their initial
`
`disclosures filed on Apri115, 2010. Later, the failure to disclose was brought to the RHI
`
`Defendants attention on two separate occasions, yet it was never made.
`
`ANSWER:
`
`Defendants state that the filing dated 3/8/2010 and reflected in the Court's ECF docket as
`
`docket number 33 speaks for itself. Further answering, Defendants state that the Court's Order
`
`dismissing various portions of Plaintiff's claims in this case (Court Docket No. 148 dated
`
`7
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 8 of 23 PagelD #:1703
`
`1/27/2011) forecloses aspects of Plaintiff's claims. Except as expressly stated herein, the
`
`allegations of this paragraph are DENIED.
`
`15.
`
`Contrary to their assertion that they were unaware of the infringement until it was
`
`brought to their attention, Healix obtained communications between the MI Defendants
`
`discussing their plans with their vendor, Defendant Eye Create, to market their new website and
`
`promotional materials, which included statements referencing Healix's copyrighted text. 4 Given
`
`the preliminary stages of the discussions with Defendant Eye Create, the HHI Defendants were
`
`aware at all times that the copyrighted text was owned by Healix prior to them being informed of
`
`the same.5 See Exhibit "D".
`
`ANSWER:
`
`Defendants state that Exhibit "D" to the Third Amended Complaint speaks for itself.
`
`Defendants lack knowledge or information sufficient to form a belief about the allegations in
`
`footnotes 4 and 5, and therefore, DENY same. Further answering, Defendants state that the
`
`Court's Order dismissing various portions of Plaintiff's claims in this case (Court Docket No.
`
`148 dated 1/27/2011) forecloses aspects of Plaintiff's claims. Except as expressly stated herein,
`
`the allegations of this paragraph are DENIED.
`
`16. Also included in the aforementioned communications were the HHI Defendants'
`
`marketing materials that not only incorporated Healix's federally-registered HEALIX
`
`PRACTICE SIMPLICITY®, PRACTICE SIMPLICITY@ and CORIS® marks, but also
`
`incorporated Healix's clients' names suggesting that they did business with them as well.
`
`4 All communications with Defendant Eye Create were by and through its president, Defendant Bill
`Ferguson.
`5 Additionally, Healix maintains web logs that track all visitors to www.healix.net by date and IP
`address. In turn, Healix can enter the IP address into any number of commercially-available programs
`that notify it of source and/or location of the visitor. From October 26, 2007 through October 17, 2009,
`Healix's records reflect that Defendants accessed its website numerous times.
`
`8
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 9 of 23 PagelD #:1704
`
`ANSWER:
`
`Defendants state Exhibit "D" to the Third Amended Complaint speaks for itself. Except
`
`as expressly stated herein, the allegations of this paragraph are DENIED.
`
`17.
`
`By copying, displaying and marketing Healix's copyrighted work and registered
`
`marks to the public, the HHI Defendants received a financial benefit from the direct infringement
`
`for purposes of appealing to a larger client base in hopes of obtaining their business, drawing
`
`more traffic to their website, capitalizing on Healix's reputation to its detriment, as well as
`
`preventing the expenditure of unknown costs typically associated with creating original
`
`marketing materials and substantive text for a website.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`18. Moreover, by supervising Defendant Eye Create, the Hifi Defendants had the
`
`right and ability to prevent the acts of infringement against Healix, but failed to do so. Rather, by
`
`their own admissions in previous filings and as part of their own communications, the HIRI
`
`Defendants have shown that they retained Defendant Eye Create, maintained control over what
`
`was approved for marketing purposes and even recognized the infringement of Healix's
`
`intellectual property.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`9
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 10 of 23 PagelD #1705
`
`19. With the assistance of Defendant Eye Create, the Hifi Defendants
`
`misappropriated Healix's intellectual property for their own financial gain and have deceived,
`
`misled, and confused third parties with respect to the same. Defendants' acts of infringement
`
`were not only willful, but intentional.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`C.
`
`THE HUI DEFENDANTS' TORTIOUS INTERFERENCE WITH ITS
`PHYSICIAN CONTRACT
`
`20.
`
`In addition to infringing upon its intellectual property, the HEII Defendants have
`
`also caused economic harm to Healix by tortiously interfering with one of its physician contracts
`
`and are believed to have interfered with others as well.
`
`ANSWER:
`
`Denied.
`
`21.
`
`Specifically, Healix spent time, money and effort forming a business relationship
`
`with 3 Tree ID Clinic in Burien, Washington. In June of 2007, the business relationship came to
`
`fruition when Healix and 3 Tree ID Clinic entered into a valid and enforceable five-year contract
`
`for pharmacy services. After entering into the contract, but prior to 3 Tree ID Clinic opening up
`
`its in-office pharmacy, Healix expended hundreds of thousands of dollars for travel between
`
`Sugar Land, Texas and Burien, Washington, hiring candidates, salaries, training costs,
`
`architectural plans and other itemized expenses.
`
`10
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 11 of 23 PagelD #:1706
`
`ANSWER:
`
`Defendants lack knowledge or information sufficient to form a belief about the truth of
`
`the allegations in this paragraph and therefore DENY same.
`
`22.
`
`In November of 2007, 3 Tree ID Clinic terminated its business relationship with
`
`Healix citing building space issues and other concerns. In doing so, Healix was not able to
`
`recoup the expended revenue and lost a financial opportunity in excess of $1.5 million over the
`
`five-year term.
`
`ANSWER:
`
`Defendants lack knowledge or information sufficient to form a belief about the truth of
`
`the allegations in this paragraph and therefore DENY same.
`
`23.
`
`By way of affidavit provided to Healix by 3 Tree ID Clinic, it was recently
`
`discovered that the HHI Defendants were in contact with 3 Tree ID Clinic in late October of
`
`2007. The HHI Defendants were fully aware of the contractual relationship between Healix and
`
`3 Tree ID Clinic at the time they were first in contact with the practice and their actions induced
`
`and/or hindered performance on the contract. See Exhibit "E".
`
`ANSWER:
`
`Defendants state that Exhibit "E" speaks for itself. Except as expressly stated herein, the
`
`allegations of this paragraph are DENIED.
`
`COUNT ONE
`
`COPYRIGHT INFRINGEMENT IN VIOLATION OF § 501 OF THE COPYRIGHT
`ACT OF 1976 AS AMENDED, 17 U.S.C. § 101 ET SEQ.
`
`24.
`
`Defendants are liable for copyright infringement because Healix is the owner of a
`
`valid copyright and the aforesaid acts of Defendants in copying substantial portions of the
`
`protected text on Healix's website without authorization and in turn, placing it on the HER
`
`11
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03118/11 Page 12 of 23 PagelD #:1707
`
`Defendants' website, constitutes an infringement of Healix's copyright in the Copyrighted Work
`
`in violation of § 501 of the Copyright Act of 1976 as amended, 17 U.S.C. § 101 et seq.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`25.
`
`Because of the nature of the relationship between the HHI Defendants and
`
`Defendant Eye Create, the level of control, the failure to stop or prevent the infringement and the
`
`financial benefit derived as a result of the direct infringement, vicarious liability applies and all
`
`Defendants are jointly and severally liable.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`26.
`
`The actions of Defendants have been willful and deliberate and justify an award
`
`of statutory damages in the amount of $150,000.00 under 17 U.S.C. § 504, attorneys' fees and
`
`costs to Healix pursuant to 17 U.S.C. § 505.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) impacts
`
`Plaintiff's copyright claims and precludes Plaintiff from recovering, inter alia, any statutory
`
`damages, actual damages, or attorneys' fees relating to allegations of copyright infringement in
`
`this case.
`
`12
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 13 of 23 PagelD #:1708
`
`COUNT TWO
`
`CONTRIBUTORY COPYRIGHT INFRINGEMENT IN VIOLATION OF § 501 OF THE
`COPYRIGHT ACT OF 1976 AS AMENDED, 17 U.S.C. § 101 ET SEQ.
`
`27.
`
`Defendant Bill Ferguson is liable for contributory copyright infringement because
`
`as the owner of Defendant Eye Create performing the work himself, he had knowledge of the
`
`infringing activity and directly participated in it. Further, he had the ability to stop or prevent the
`
`infringement, but failed to do so. Defendant Bill Ferguson also derived a financial benefit from
`
`the infringement as a result of performing services in exchange for payment or with the hope of
`
`obtaining future business from the HHI Defendants.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`28.
`
`The HHI Defendants are liable for contributory copyright infringement because
`
`they materially contributing [sic] to the infringing activity, including the removal of Healix's
`
`copyright symbol and replacing it with their own.
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) forecloses
`
`aspects of Plaintiff's claims.
`
`29.
`
`The actions of Defendants have been willful and deliberate and justify an award
`
`of statutory damages in the amount of $150,000.00 under 17 U.S.C. § 504, attorneys' fees and
`
`costs to Healix pursuant to 17 U.S.C. § 505.
`
`13
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 14 of 23 PagelD #1709
`
`ANSWER:
`
`Denied. Further answering, Defendants state that the Court's Order dismissing various
`
`portions of Plaintiff's claims in this case (Court Docket No. 148 dated 1/27/2011) impacts
`
`Plaintiff's copyright claims and precludes Plaintiff from recovering, inter alia, any statutory
`
`damages, actual damages, or attorneys' fees relating to allegations of copyright infringement in
`
`this case.
`
`COUNT THREE
`
`INFRINGEMENT OF FEDERALLY-REGISTERED TRADEMARK/SERVICE MARK
`PURSUANT TO 15 U.S.C. § 1114 AND § 1125
`
`30.
`
`Defendants are liable for trademark infringement because they have, with actual
`
`and constructive notice of Healix's federal registration rights in the HEALIX PRACTICE
`
`SIMPLICITY®, PRACTICE SIMPLICITY® and CORIS® marks, copied them without
`
`permission in an effort to sell, market and offer their services and goods to the consuming public.
`
`ANSWER:
`
`Denied.
`
`31. By copying Healix's federally-registered marks in conjunction with
`
`misappropriating its client base, namely suggesting that Barry Baker, M.D. conducts business
`
`with them, they have created the likelihood of confusion, deception and mistake that they are
`
`affiliated with Healix or their use of its marks has been authorized, sponsored or approved.
`
`ANSWER:
`
`Denied.
`
`32.
`
`Because of the nature of the relationship between the HEI Defendants and
`
`Defendant Eye Create, the level of control, the failure to stop or prevent the infringement and the
`
`14
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 15 of 23 PagelD #1710
`
`financial benefit derived as a result of the direct infringement, vicarious liability applies and all
`
`Defendants are jointly and severally liable.
`
`ANSWER:
`
`Denied.
`
`33.
`
`The actions of Defendants have been and continues to be intentional, willful and
`
`in bad faith which, in turn, makes this an exceptional case and entitles Healix to damages under
`
`15 U.S.C.A. § 1117 (fees). Healix also seeks to recover Defendants' profits, actual damages,
`
`enhanced profits and damages and costs and treble damages.
`
`ANSWER:
`
`Denied.
`
`COUNT FOUR
`
`CONTRIBUTORY INFRINGEMENT OF FEDERALLY-REGISTERED
`TRADEMARK/SERVICE MARK PURSUANT TO 15 U.S.C. § 1114 AND § 1125
`
`34. Defendant Bill Ferguson is liable for contributory trademark infringement
`
`because as the owner of Defendant Eye Create performing the work himself, he had knowledge
`
`of the infringing activity and directly participated in it. In essence, he was the moving, active
`
`and conscious force behind the Defendant Eye Create's infringement of Healix's marks. Further,
`
`he had the ability to stop or prevent the infringement, but failed to do so. Defendant Bill
`
`Ferguson also derived a financial benefit from the infringement as a result of performing services
`
`in exchange for payment or with the hope of obtaining future business from the EMI Defendants.
`
`ANSWER:
`
`Denied.
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 16 of 23 Pagel() #:1711
`
`35.
`
`The HHI Defendants are liable for contributory trademark infringement because
`
`they materially contributing [sic] to the infringing activity, including the use of Healix's marks
`
`as their own.
`
`ANSWER:
`
`Denied.
`
`36.
`
`The actions of Defendants has been willful and deliberate and justify an award of
`
`statutory damages in the amount of $150,000.00 under 17 U.S.C. § 504, attorneys' fees and costs
`
`to Healix pursuant to 17 U.S.C. § 505.
`
`ANSWER:
`
`Denied. Further answering, Defendants deny that Healix can obtain an award of damages
`
`under the Copyright Act (including 17 U.S.C. § 504) for all allegations of trademark
`
`infringement contained in Count Four of the Third Amended Complaint. Further answering,
`
`Defendants state that the Court's Order dismissing various portions of Plaintiff's claims in this
`
`case (Court Docket No. 148 dated 1/27/2011) forecloses aspects of Plaintiff's claims.
`
`COUNT FIVE
`
`TORTIOUS INTERFERENCE
`
`37.
`
`The HHI Defendants are liable for tortiously interfering with Healix's contractual
`
`relationship with 3 Tree ID Clinic. Healix entered into a contractual relationship with 3 Tree ID
`
`Clinic that formed the basis for a fixed expectation of economic gain. In turn, the HHI
`
`Defendants intentionally and maliciously interfered with the contract which hindered
`
`performance and ultimately damaged Healix.
`
`ANSWER:
`
`Denied.
`
`16
`
`

`
`Case: 1:10-cv-03772 Document #: 160 Filed: 03/18/11 Page 17 of 23 PagelD #:1712
`
`38. (cid:9)
`
`As a direct result of the above-identified acts of tortious interference, the actions
`
`of the HHI Defendants have been willful and deliberate and have caused substantial injury to
`
`Healix in excess of $1,500,000.00. Healix seeks to recover damages, including, if appropriate,
`
`enhanced damages, reasonable attorneys' fees and costs.
`
`ANSWER:
`
`Denied.
`
`AFFIRMATIVE DEFENSES
`
`FIRST AFFIRMATIVE DEFENSE
`
`The doctrine of unclean hands bars, in whole or in part, the relief sought by Plaintiff here.
`
`A reasonable opportunity for further investigation and discovery is likely to provide evidentiary
`
`support that Plaintiff has itself engaged in activities directed at Defendants that have an
`
`immediate and necessary relation to the subject matter