Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA970414
`
`Filing date:
`
`04/30/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91242516
`
`Party
`
`Correspondence
`Address
`
`Defendant
`James Lewis
`
`ANTHONY M VERNA III
`80 THEODORE FREMD AVENUE
`RYE, NY 10580
`UNITED STATES
`anthony@vernalaw.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Anthony M. Verna III
`
`anthony@vernalaw.com
`
`/s Anthony M. Verna III s/
`
`04/30/2019
`
`Motion to Suspend 1.pdf(4177598 bytes )
`Motion to Suspend 2a.pdf(3314059 bytes )
`Motion to Suspend 2b.pdf(4651823 bytes )
`
`
`
`ESTTA Tracking number:
`
`ESTTA970414
`
`Filing date:
`
`04/30/2019
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91242516
`
`Party
`
`Correspondence
`Address
`
`Defendant
`James Lewis
`
`ANTHONY M VERNA III
`80 THEODORE FREMD AVENUE
`RYE, NY 10580
`UNITED STATES
`anthony@vernalaw.com
`no phone number provided
`
`Submission
`
`Filer's Name
`
`Filer's email
`
`Signature
`
`Date
`
`Attachments
`
`Other Motions/Papers
`
`Anthony M. Verna III
`
`anthony@vernalaw.com
`
`/s Anthony M. Verna III s/
`
`04/30/2019
`
`Motion to Suspend 1.pdf(4177598 bytes )
`Motion to Suspend 2a.pdf(3314059 bytes )
`Motion to Suspend 2b.pdf(4651823 bytes )
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91242516
`
`) ) ) ) ) ) ) ) ) ) )
`
`Mark L. Eldridge
`
`Plaintiff,
`
`vs.
`
`James Lewis
`
`Defendant
`
`MOTION TO SUSPEND PENDING CIVIL ACTION
`
`James Lewis (“Defendant” or “Applicant”), through his attorney, Anthony M. Verna III,
`
`hereby files this Motion to Suspend pending the disposition of a civil action between the parties
`
`pursuant to Trademark Rule 2.117(a), 37 C.F.R § 2.117(a).
`
`On February 20, 2019, Plaintiff/Opposer Mark L. Eldridge filed a complaint in the
`
`Northern District of New York against James Lewis, the Defendant/Applicant in this proceeding.
`
`This complaint was not served until April 15, 2019. The complaint contains averments of
`
`copyright infringement, trademark infringement (with the marks that are at issue in this
`
`proceeding), false designation of origin, false advertising, and a New York State claim of
`
`deceptive business practices. See EXHIBIT A for the complaint.
`
`The pending civil action accordingly involves issues which are involved in this
`
`proceeding, namely whether the Plaintiff in this proceeding has been harmed by Applicant’s use
`
`and application of the OBVIOUS AUTHORITY trademark contains a legitimate basis to support
`
`a finding of non-infringement. The determination of these issues by the District Court will likely
`
`be dispositive of the issues involved in this proceeding. Applicant, therefore, respectfully
`
`1
`
`Motion to Suspend (cid:8211) Lewis
`
`
`
`requests suspension of these proceedings pending determination of the civil action pursuant to
`
`Trademark Rule 2.l 17(a), 37 C.F.R. § 2.l l 7(a). Whopper-Burger, Inc. v. Burger King Corp.,
`
`171 U.S.P.Q. 805, 807 (T.T.A.B. 1971) (suspending Cancellation proceeding in light of pending
`
`federal litigation because “the outcome of the civil action will have a direct bearing on the
`
`question of the rights of the parties herein and may in fact completely resolve all the issues.”).
`
`Dated: April 30, 2019
`
`/s Anthony M. Verna III
`Anthony M. Verna III, Esq.
`Verna Law, P.C.
`80 Theodore Fremd Ave.
`Rye, NY 10580
`
`2
`
`Motion to Suspend (cid:8211) Lewis
`
`
`
`Anthony M. Verna III, Esq.
`Verna Law, P.C.
`80 Theodore Fremd Ave.
`Rye, NY 10580
`
`IN THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.: 91242516
`
`) ) ) ) ) ) ) ) ) ) )
`
`Mark L. Eldridge
`
`Plaintiff,
`
`vs.
`
`James Lewis
`
`Defendant
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that on this 30th day of April 2019, a copy of the foregoing
`Motion was served via e-mail on the following:
`
`Mark L. Eldridge
`711 Chaucer Circle
`Fort Mill, SC 29708
`eldridge2m@gmail.com, eeconsults@gmail.com
`
`Respectfully submitted,
`
`Dated this April 30, 2019
`
`/s Anthony M. Verna III
`Anthony M. Verna III, Esq.
`Verna Law, P.C.
`80 Theodore Fremd Ave.
`Rye, NY 10580
`
`3
`
`Motion to Suspend (cid:8211) Lewis
`
`
`
`EXHIBIT A
`
`4
`
`Motion to Suspend (cid:8211) Lewis
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 1 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 1 of 29
`
`Mark L. Eldridge, Pm 5e
`5 Shfll't Road
`
`Hafiland, UT flfiflclll
`(954) 952—3391
`
`
`
`fl‘CLflEK_
`AT
`JI'Jl'N"I H Bahama, [ierk . Emery
`
`
`UNITED STATES DISTRICT CUURT
`
`[1.5. FIE-EMF it‘ll?"
`I‘Il..'.‘-. OF riff.
`F I L E D
`
`fi
`.
`[EB 1'" {mg
`
`
`
`NURTHERN DISTRICT 0F NEW YDRK
`
`MARK INELDRIDGE
`VS.
`
`Plaintiff.
`
`JAMES LEWIS,
`aflu‘a J irn Lewis.
`
`(tibia www.meubviousauthurity.cam
`(L’hfa www.cmhvinusauthoritycnm
`dflm’a mwziifl'lllfi'wiSIHI
`AZTEC DESIGN STUDIO, LLC
`dfha'a wwazlecdesignstudimcom
`AZTEC DIGITAL SULIITIGNS, LLC
`df'br’fl WW.aztecdigilalsnlutiunsmm
`
`Deihndanls.
`
`HH—F’H—UH—FH—FN—FH—FVH—F’H—WH—FH—FH—FHVH—FH—JH—FH—P
`
`{saga-Mn. (3: IQ'CV' 237-
`[mml/DE?)
`
`DEMAND FUR JURY TRIAL
`
`EQB lilfll IIIEIEIS DE‘IHEI EDI“!!! IIIII CD21 :EIGIII lCIlT
`
`COWS NEW, PIAINTIFF MARK L. HLDRIDGE. (“Plaintiff"l and camplains
`
`{If anti alleges the following:
`
`NATURE BF CASE
`
`|Elit.‘1n".r[;:«Iainl Page 1 of 29
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 2 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 2 of 29
`
`1. This is a clear liability,t wholesale copyright infringement ease and this action
`
`arises out ol'Delendant, James i..ewis’ willful and blatant violation ot'Plaintiff’s
`
`respective intellectual propertyr rights in Plaintiff’s book (published Mareb 2W4) How to
`
`Position lburseifos THE OB VIOUS EXPERT in 91'} Boys or Less Without .S'penrz’ingA
`
`Fortune On Advertising l(“The IIlb‘ttious Expert book”) in 1violation of the Copyright Act,
`
`the Lanham Act, and New York state law. Defendant. being Tull}.r aware oi'PlaintiH"s
`
`rights in and to The Obvious Expert book, seeks to misappropriate those rights by
`
`publishing a book {published September 2617} entitled How to Position Yow'setjf'os THE
`
`GBVIUUS AUTHGRITF in Less Titan 9!? Days Without Spending A Fortune (“Infringing
`
`Book") whieh, upon information and belief, is comprised of widespread misappropriation
`
`of Plaintiff’s intellectual property.
`
`in addition, the Infringing Book is misleading to
`
`consumers and will likely cause eonfiJsion.
`
`2. Defendant's tnain excuse for his blatant conduct is to argue that he didn’t
`
`believe Plaintiff was marketing The Obvious Expert book. Defendant claims to be an
`
`Amazon best selling author and authority consultant on marketing hooks predominantly
`
`on Amazon, but allegedly didn’t verify that the Plaintiff‘s book was in fact available on
`
`Amazon.
`
`3. Defendant has admitted that he was familiar with The Obvious Expert book
`
`prior to writing and publishing his Intringing Book and upon knowledge and belief prior
`
`to Defendant creating and using his Mark THE OHVIUUS AUTHORITY.
`
`JURISDICTION AND VENUE
`
`4. This Court has jurisdiction over this action under 23 llflfl. § 1331(i'ederal
`
`question] and 28 USE. § 1333(a) and (b) {copyright} and 15 USE. § 112] (trademark)
`
`for claims brought under the [.anham Act,
`
`|5 LLB. Code § l 1 i4, 1 125. This lCourt also
`
`Gomplaint Page 2 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 3 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 3 of 29
`
`has subject matterjurisdiction ever Plaintiffs state law claims pursuant to the principles
`
`of pen dent jurisdiction.
`
`5. This is a civil action for copyright infringement under the Cepvright I‘te‘t ef
`
`191'6, I? U.S.C § lfll ct seq., federal trademark infringement under Lanham islet= 15
`
`USE. §l 1 l4, unfair competition. false designation and false advertising under the
`
`Lanham Act, 15 U.S.C. §l 125, deceptive trade practices under New York General
`
`Business Lawr § 349. seeking damages, preliminary and permanent injunctive relief,
`
`impoundment and destructien‘ an accounting, as well as damages and other relief based
`
`upon other claims related to the misappropriation efPlaintiff’s intellectual property.
`
`a. Venue in the Federal Court for Northern District of New York is proper under 23
`
`11.31:. {5; 1391(h} and (c) and MUD {a} in that this is thejudicial district in which a
`
`substantial part of the acts and emissions giving rise to the claims occurred. The claims
`
`asserted herein arose in this judicial district and Defendants do husiness in thisjudicial
`
`district.
`
`THE PARTIES
`
`7". Plaintiff Mark L. Eldridge is an individual who resides in Hartland, Vermont.
`
`Flaintiffis the ee-auther and copyright owner of The thieus Expert hook and owner of
`
`the trademark THE UBVIDUS EXPERT.
`
`8. Defendant James Lewis, also known as Jim Lewis is an individual doing
`
`business as www.theehvieusautheritycem and www.jirttlewis.tv who resides in
`
`Kirkweedj New York. Defendant is the author of the infringing Beck and trademark
`
`applicant of'fl-lls' DBVIUUS AUTHDRJTY.
`
`9. Defendant Aztec Design Studio, LLC, is a Limited Liability Company
`
`organized and under the laws of the State of New York and is doing business as
`
`Complaint Page 3 of 29
`
`——J
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 4 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 4 of 29
`
`www.azteedesignstudiocoin with a principal place of business in Kirkwood. NY. Upon
`
`information and heliefthis entity is owned by Defendant James Lewis. is a website
`
`design company that created and marketed the wwwohviousanrthoritvcom.
`
`Wit-Witteobviousauthoritvcorn and waswjimlewisjv websites involved in this complaint
`
`and has gained financially fi'om the violations of the Lanhain and Copyright Acts.
`
`Ill. Defendant Digital Solutions, LLC. is a Limited Liability lilompan}.r organized
`
`and under the laws of the State of New York and is doing business as
`
`www.azteedigitalsoiutionscoin with a principal place of business in Kirkwood. NY.
`
`Upon in formation and belief this entity is owned by Defendant james Lewis. is a
`
`marketing companf,r that created and implemented The IDbl-ions Authority social media
`
`and internet marketing strategy involved in this complaint and has gained financially
`
`from violations of the Lanharn and lIi'.‘.o]:i1vright Acts.
`
`FA CTUAL EA EKG RUUNI}
`
`A. THE DEVIDUS EXPERTFE
`
`i l
`
`. In March 2flfl4 Plaintiff eo-authored with his father. Elsom Eldridge, Jr. and
`
`published The {lhvious Expert book after laboring on its creation. writing and
`
`development for over two long years. Which Plainti fl“ provided copy of book to
`
`Defendants counsel.
`
`12. Since March 2flfl4 Plaintiff has remained the owner of the copyright The
`
`Obvious Expert book.
`
`13. Plaintiff co-authorcd with his brother Elsom Eldridge Ill and Linda Parker
`
`another book titled How to Use Social Media to Broad Forgsetjfos THE DBVIDUS
`
`EXPERT in Ellllfl which Flaintill'has provided copy ofhook to Defendants counsel.
`
`Complaint Page 4 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 5 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 5 of 29
`
`M. Plaintiff has not entered into any limited license agreement for the
`
`aforementioned books except exclusively with the co-authors of the books. The co-
`
`authors have not entered into any limited license agreements with any third parties.
`
`15. Since the book was originally published in Hill-El The Uhvinus Expert book has
`
`been continuously available at seminars and iii various online bookstores. including
`
`Amazon where it has maintained a continuous high sales ranking for the past 15 years.
`
`16. Plaintiff and his err—author have invested over 15 years of elfort in building a
`
`reputation of quality in the selllpublishing industry. which both consumers and industry
`
`peers associate with Plaintiff and his trademark. Plaintiffand his co-author invest
`
`significant resources annually traveling the country promoting The l[levious Expert book.
`
`Plaintiff’s Mark and the goodwill of the business associated with them in the United
`
`States are of tremendous value and have become associated in the public mind with
`
`Plaintiffis reputation of quality infonnation products.
`
`17. Plaintiffs trademark TllF. GEVIDUS EXPERT was registered June l 5, fit] it}
`
`Reg No 3.8131328. Plaintiffs” Mark is now ineontcstablc under Section 15 of the Lanitam
`
`Act, 15 LLSLL § ltlfifi.
`
`B. THE UBVIUUS AUTHURITY
`
`18. In September 2!] 1? Defendant published the lnttingitig Book.
`
`l9. Plaintiff first learned of Defendant’s book when a friend was searching
`
`Amazon for The Obvious Expert book and the defendant‘s book appeared in the search
`
`results. A little further research discovered that Delcndant had also recently tiled a
`
`trademark application for Ti "-1 UIWIEHJS All'l'l tflRl'l'Y. Defendant claims to have a
`
`propriety system going from concept to best seller in 3 days to manipulate Amazon. Upon
`
`information and belief by infringing on Plaintiff’s intellectual property and creating a
`
`Complaint Page 5 of 29
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 6 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 6 of 29
`
`book with both very similar title and content, Defendant has manipulated Amazon so his
`
`product the Infringing Book appears when consumers search for Plaintiff's The Obvious
`
`Expert hook.
`
`Amazoneom Search ~ The Obvious Ex ert vs. The Obvious Authon‘
`
`Confusion marketplace: Amazonoom search The Obvious Expert and search results also
`show The Obvious Aulhoritv.
`
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`Complaint Page 5 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 7 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 7 of 29
`
`2b. In the Infringing Book Defendant states on page 2?: “The book you are
`
`reading went from concept to #1 best seller on Amazon (in 3 categories} in 3 Days,
`
`despite the hundreds of new books that were launched during that time. 1 can help you
`
`achieve the same results."
`
`21. Delendant boasts on his websites www.obviousanthorityeoln.
`
`www.theobvitiusaulhtirit}-'.com and www.jirnlewis.lv that he went from “Published.
`
`Promoted and Reached #1 Bestseller in 48 Hours” June 14. 2111?. Amazon views authors
`
`and publishers using this type ol‘proprietv system as an unfair and deceptive scheme.
`
`Jim Lewis
`Published. Promoted and Reached #1
`Bestseller in 43 Hours!
`
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`22. 1}efendant has repeated multiple times in the past year his propriety system
`
`“from concept to #1 Best Seller in 3 days process" on several other cheek titles and is
`
`consulting clients to take advantage of Amazon’s cbook self publishing platform. lie has
`
`printed his book imprint UBVIUUS AU'l'HtJRI'I‘Y HOOKS and THE UBWUUS
`
`AUTHORITY PRESS on these other published eboolts. Defendant is being deceptive to
`
`the public when he promotes that he is a 5 time best-selling author all in less than a year.
`
`Last year Amazon started cracking down on such unfair and deceptive acts done by other
`
`authors and publishers. in Amazons arbitration Iiled bv Attomejv John A. Goldmark with
`
`Complaint Page T of 29
`
`L—
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 8 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 8 of 29
`
`tha American Arbitration Aaanciatinn against other pcrpctramrs. it States: "a scheme to
`
`manipulate and abuse Amazon‘s; sarvicaa in reap illicit financial gain while harming
`
`Amazan and thase wan nae its services.“
`
`
`
`
`
`
`JIM LEWIS
`E'TIHE #1 Baa": SaLme. AMI-ion,
`E33. . PU_B__L_LfiJ-;IER an a
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`BECOME A BEST-SELLING AUTHOR!
`
`THE
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`
`Complaint Page 8 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 9 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 9 of 29
`
`B. Similarities between The Obvious Expert book and Infringing Book
`
`23. Plaintitl‘is due diligence while preparing for discovery conference call with
`
`Defendant's Attorney obtained a copy of Defendantis book on November 18$ EDI-E.
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`Plaintiff was shocked and dismayed when he went through Defendant’s Infringing Book
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`to see the various similarities. The similarities between the chapters and structure of the
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`book were so similar that independent creation was obviously impossible. Plaintiff filed a
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`copyright application on the day of discovering Defendant’s copyright infringement,
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`received by the U.S. Copyright Office on November 18. 26-13 case number
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`1314833425].
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`24. Defendant admitted that he was familiar with The Obvious Expert book mid
`
`Hill which was prior to writing and publishing his infringing Book in September 2t] 1 i'.
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`25. A cease and desist letter was sent to Defendant on December 26+. 2313. After
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`3t} days of not hearing any response from Defendant. Petitioner was advised he should
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`proceed with legal litigation to protect Plaintiff’s intellectual property rights.
`
`26. Exhibit A attached is a list of the similarities between The Obvious Expert
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`book written 13 years prior to the Infringing Hook. Exhibit It clearly illustrates wholesale
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`copyright infringement occurred or outright piracy and that any claim of original work by
`
`Defendant would be folly of any argument that the two works were created
`
`independently.
`
`O. Trademark
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`2?. Plaintiff's books bear the Plaintiff‘s Marl; TllE OEVIOUS EXPERT? Upon
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`knowledge and belief Defendant knowingly and willfully disregarded Plaintiff’s Mark
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`when creating his Mark and submitting his trademark application for THE OBVIOUS
`
`AUTHORITY.
`
`Complaint Page 9 of 29
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`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 10 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 10 of 29
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`23. Plaintifi'disputed Defendants trademark application on July 19. 2i] i 8.
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`Defendant was using the Mark for more than just consulting services. he 1was using his
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`Mark on his book products. selling the hoot-ts in the same channel as Plaintiff on Amazon.
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`29. Defendant applied [hr the trademark Till": OBVIUI iS AUTHORITY on
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`January 2. Efll 8. serial nutnhcr 8T74fl3'i'2. Class [1'41 “Providing consulting services to
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`those who are looking to publish their creative work.“ Defendant submitted with his
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`application. specimen from his website of himself signing his book product. the
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`infringing Book. Defendant claims that he only has consulting services. that he has no
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`products, which is misleading to the United Stated Patent and Trademark Board. in fact
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`his main business this past year has been selling hook products using THE UBVIDUS
`
`FLUTE [URITY Mark in several different hooks he authored as well those oi‘setv'eral
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`clients hoot-ts where the Mark THE UBVIOUS AUTI-iURIT‘t’ is listed as the Publisher or
`
`the imprint. Specimen below clearly shows Defendant‘s book products with THE
`
`OBVlUUS AUTHDRITY Mark. This is the specimen Defendant submitted on his
`
`trademark application.
`
`
`
`BiCILI't‘L .1. BE bl SELL'N‘E .l.I.= H-IDR'
`
`Inn-u aI-n-u-q -.-~- - I-u ova-ht
`ur- fan-91" 1L.- hall a.-. n. ..u. .. a... a,
`”4......” .
`"Wm-w. luff-1|]
`but u.- use -.: -
`
`Lento-It! U1 F'fll'm
`
`Complaint Page 10 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 11 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 11 of 29
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`3t]. Defendant used the trademark registered symbol in all his marketing, banners,
`
`throughout his websites; seminars. etc. when he knew his Mari»: was not legitimately
`
`registered. The Defendant denied to the Trademark Trial and Appeal Board that he was
`
`using the trademark registered symbol. This specimen shows Defendant iisted as
`
`FUUNDER AND (IF-fl. THF. DBWDUS AUTHORITY'E prior to Defendant scrubbing it
`
`from his websites. lt's hnth deceptive using the Mark improperly and Defendant also now
`
`claitnittg THE UBVIDUS ALl'l'i'lURl'l'Y isn't a separate entity.
`
`-.'-
`n gnan-LWL'EI-
`E 'I in ii I 0 #
`
`
`llllll lEWlS iiii'ffi'ags'rfsé‘ifla
`
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`
`sine-E arena“
`
`tar-9F when u
`
`
`
`3 1. Prior to Defendant denying to the Trademark Trial and Appeal Board that he
`
`had been using the registered trademark symbol. he scrubbed all the Marks ti'ont all the
`
`pages on his websites. l'Iowes-'er he missed this one page shnwn in this specimen. Alter
`
`presenting the evidence to Defendant's counselj the story changed to it wasjust an honest
`
`mistake that Defendant didn't realize he wasn‘t supposed to be using the registered Mark
`
`symbol. Upon knowledge and belief this shows a pattern ef the Defendant being
`
`deceptive and even being tintrnthfnl to the Court of Law.
`
`Complaint Page 11 of 29
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 12 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 12 of 29
`._.
`4: ”'Ifi a E c- e
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`a
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`UUNT UNE - COPYRIGHT INFRINGEMENT UNDER 1'." USE.
`lfll ET SE .
`
`32. Plaintiff repeats. reiterates and reaileges each and every allegation contained in
`
`paragraphs marked 1-3 I . inclusive with the same force and efiect as if fully set forth
`
`herein at length.
`
`33. The Obvious Expert book is an original u-‘ork of authorship. copyrightablc. and
`
`copyrighted subject matter under the laws of the United States.
`
`34. At all time reiet-ant hereto. the Plaintiff has been and still is the owner of all
`
`copyrights in and to The Obvious Expert hook. and has net-‘er assigned. licensed. or
`
`otherwise transferred his copyright rights to the Delendant. nor to any third~party except
`
`his father the col-author.
`
`35. Defendant had access to Piaintiff~s work The |flbt’ious Expert book since 2mm.
`
`36. flu or about September 2111? Defendant published and began distributing the
`
`Infringing Book at seminars and online bookstores including amazon.
`
`Complaint Page 12 of 29
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 13 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 13 of 29
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`3?. The Infringing Book is filled with substantial similarities to The Obvious
`
`Expert book.
`
`33. Defendant never sought or obtained Plaintiff’s permission to copy, duplicate.
`
`exploit or otherwise use Plaintiff’s copyrighted work.
`
`39. Defendant‘s copying, duplication and exploitation of The Obvious Expert book
`
`constitutes wholesale direct infringement of the Plaintiff‘s copyright.
`
`4!]. Defendant‘s infringing acts are willfill, deliberate, and committed with prior
`
`notice and knowledge of Plaintiff’5 copyright. Defendant acted negligently and recklessly
`
`in regards to Plaintiff copyright.
`
`4] . In engaging in the acts complained of herein, Defendant atnong other things
`
`also failed to properly credit the Plaintiff as the author auditor copyright holder.
`
`42. Upon information and belief Defendant and his entities Aztec Design Studio,
`
`LLC and Aztec Digital Solutions, LLC collectively received thousands ofdollars, and
`
`other valuable benefits and consideration, from his blatant copying of The Obvious
`
`Expert book.
`
`43. Defendant‘s acts of copyright infringement and acts of affimtative and
`
`widespread selfspromotion of the Defendants books directed to the public at large, have
`
`caused Plaintiffto suffer, and continue to soflier, substantial damage to its business in the
`
`form ofdiversion of trade, loss of income and profits, and a dilution of the value of its
`
`rights,
`
`44. Further, as a direct result of the acts of copyright infringement and acts of
`
`afiirmative and widespread self-promotion of the Defendant’s books directed to the
`
`public at large alleged above, Defendants have obtained direct and indirect profits they
`
`Complaint Page 13 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 14 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 14 of 29
`
`would not otherwise have realized but for their infringement ofPlaintifl's copyrighted
`
`book.
`
`45. B}: reason of Defendants’ infi‘ingement. the Plaintiff has sustained and will
`
`continue to sustain substantial injury, loss and damage to his ownership rights in the
`
`copyright protected The Obvious Expert hook. Defendants‘ infringement of the Plaintiff‘s
`
`copyright has caused and will continue to cause the Plaintiff significant monetary
`
`damages.
`
`46. PlaintitTis entitled to a temporary injunction and permanent injunction
`
`restraining Defendant from engaging in any further such acts in violation of the
`
`Copyright Act.
`
`4?. The PlaintitT is entitled to recover from the Defendants the gains, profits and
`
`advantages the},r have obtained and will obtain in the future as a result of their acts of
`
`copyright infringement. At present, the amount of such damages, gainsj profits and
`
`advantages cannot be fully ascertained by Plaintiff, but will be established according to
`
`proof at trial.
`
`
`CDUNT TWU - TRADEMARK INFRINGEMENT UNDER 15 U.S.C.
`
`
`
`43. Plaintiff repeats. reiterates and realleges each and every allegation contained in
`
`paragraphs marked 1-41 inclusive with the same force and effect as it‘ Fully set forth
`
`herein at length.
`
`49. Dr] information and beliefl Defendants’ without the consent of Plaintifl‘ used in
`
`commerce a similar confusing Marl-t.
`
`Sit. On information and belief. Defendants’ acts were committed with knowledge
`
`that their imitation was intended to be used to cause confusion, or to cause mistake, or to
`
`deceive.
`
`Complaint Page 14 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 15 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 15 of 29
`
`51. On information and belief. l.)efendant ltad actual knowledge of Plaintiff
`
`trademark registration.
`
`52. Defendants’ aets above have caused. and if not enjoined will continue to cause.
`
`irreparable and continuing harm to Plaintiff trademark. business. reputation. and
`
`goodwill. Plaintiffhas no adequate remedy at law as monetary damages are inadequate to
`
`eompensate Plaintiff for injuries caused by Defendants.
`
`53. Defendants’ infringement of Plaintiff’s Mark is deliberate. willful. fraudulent
`
`and without any extenuating eireumstanees. and constitutes a knowing use of the Mark an
`
`exeeptional ease within the meaning of 15 USL‘. § 11 life).
`
`54. Plaintiff is entitled to inj unetise relief and to reeover Defendants‘ profile.
`
`aetual damages. enhaneed profits and damages. costs. and reasonahle attorneys” fees
`
`under 15 LLSJC. §§ 1114. 116. and lllT.
`
`CUUNT THREE - UNFAIR CUMPETITIDN AND FA LSE DESIGNATION UF
`
`QBIQIE flflflflfl l§ U.§.C. § 11251311 ! 11$]
`
`55. Plaintiff repeats. reiterates and realleges eaeh and every allegation contained in
`
`paragraphs marked 1—54. ittelusive with the same foree and effect as if hill}r set forth
`
`herein at length.
`
`56. Through the use of the misleading eover. content and strueture of the
`
`Infringing Book. Defendant is knowingly and intentionally misrepresenting and falsely.r
`
`designating to the general public the affiliation. eonneetion. association. origin.
`
`sponsorship and approval of the infringing Book. so as to create a likelihood of eonfiJsion
`
`by [he puhiie.
`
`5?. The aforesaid aets of Defendant eenstitute false designation or origin and
`
`unfair eornpetilion in violation of 15 LLSL‘. § 1125[a}[l}[A).
`
`Complaint Page15 of 29
`
`'
`
`|
`
`:
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`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 16 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 16 of 29
`
`58. As a direct and proximate result of the foregoing acts of Defendant, Plaintiff
`
`has been damaged and has suffered and will continue to suffer immediate and irreparable
`
`harm.
`
`
`- UNT FflUR-F‘ALSE ADVERTI ING NDER 15 U.S.C.
`112 a I
`
`59. Plaintiff repeats. reiterates and realleges each and ever}; allegation contained in
`
`paragraphs marlred 1-53. inclusive with the same force and effect as if fully set forth
`
`herein at length.
`
`so. Through the use of the misleading cover. design. structure and marketing of
`
`the Infringing Book. Defendant is knowingly and intentionally misrepresenting the nature
`
`and qualities of the Infringing Eioolr= so as to create a likelihood of confusion h}; the
`
`public as the nature characteristics and qualities of the [I1 fringing Book.
`
`fil . The aforesaid acts of Defendant constitute false advertising in 1violation of l5
`
`use. § 1125l_a}[l}(B)_
`
`CUUNT FIVE — I} EFF
`
`
`R .T] ES NEW YORK GENERAL
`
`62. Plaintiff repeats. reiterates and realleges each and etrerjt-r allegation contained in
`
`paragraphs marked l-ol . inclusive with the same force and effect as if fully set forth
`
`herein at length.
`
`63. The aforesaid acts of Defendant's wholesale copyright infringement, claiming
`
`to he a 5 time Best Selling Author without being the original author of the work.
`
`Defendant repeating his "#1 Best Seller in 3 day's process” multiple times on other books
`
`and consulting clients showing them how the}.r take advantage ofmnazon‘s ehook self
`
`publishing platform. has deceived. misled and confused the general public and 1trill
`
`Complaint Page 16 of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 17 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 17 of 29
`
`continue to do so, and constitute deceptive trade practices in violation of the New York
`
`Deceptive Trade Practices Act, § 349 of the General Business Law.
`
`64. As a direct and proximate result of the foregoing acts, Defendant unlawfully
`
`and wrongful Iv has derived and will continue to derive, income, profits and ever-
`
`increasing goodwill from his activities, and Plaintiff has been damaged and has suffered
`
`and will continue to sutfer immediate and irreparable iniury for which he has no adequate
`
`remedy at law.
`
`W
`
`WHEREFORE, the Plaintiff, Mark 1.. Eldridge prays that this Court:
`
`1. That the Court find that Defendants’ have infringed Plaintiff s copyrights in The
`
`lvaious Espert book,
`
`2. That the Court find that Defendants’ have infringed Plaintilf’s trademark;
`
`3. That the Court find that Defendantsi has used misleading marketing and false
`
`designation the origin of the Infringing Book, falsely advertise the infringing Book, and
`
`unfairly compete with Plaintiff;
`
`4. That the Court fund that Defendants‘ have engaged in deceptive trade practices
`
`and unfair competition;
`
`5. That the Court find a substantial likelihood that Defendants? will continue to
`
`infringe Plaintiff‘s intellectual properlyr unless permanently enjoined fi‘otn doing so;
`
`6. A permanent injunction restraining Defendants‘. from directly or indirectly
`
`infringing Plaintifiis copyrights and trademark. including but not limited to continuing
`
`distribute, market, advertise, promote, solicit or accept orders for, sell or offer for sale the
`
`Complaint Page 1? of 29
`
`
`
`
`
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 18 of 29
`Case 3:19-cv-00237-MAD-DEP Document 1 Filed 02/20/19 Page 18 of 29
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`Infringing Book or any works derived or copied from Plaintiff‘s copyrighted works and
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`flora participating or asaisting any such activity-
`
`T. on order instructing Defendant, its agents, attorneys. successors and assigns,
`
`and all person, firms and co
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