Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA1296541
`
`Filing date:
`
`07/11/2023
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding no.
`
`91285309
`
`Party
`
`Correspondence
`address
`
`Defendant
`Je'Caryous Johnson Entertainment, LLC
`
`ALY Z. DOSSA
`CHAMBERLAIN HRDLICKA
`1200 SMITH STREET
`SUITE 14000
`HOUSTON, TX 77002
`UNITED STATES
`Primary email: aly.dossa@chamberlainlaw.com
`Secondary email(s): dossa.ip@chamberlainlaw.com, trade-
`marks@chamberlainlaw.com
`713-654-9672
`
`Submission
`
`Filer's name
`
`Filer's email
`
`Signature
`
`Date
`
`Answer
`
`Aly Z. Dossa
`
`aly.dossa@chamberlainlaw.com
`
`/Aly Z. Dossa/
`
`07/11/2023
`
`Attachments
`
`Applicant_s Answer - 210065-000005US.pdf(1955557 bytes )
`
`

`

`BMN ENTERTAINMENT, LLC,
`
`
`
`v.
`
`JE’CARYOUS JOHNSON
`ENTERTAINMENT LLC,
`
`
`
`
`
` Opposition No.: 91285309
` Serial No.: 97489534
` Mark: NO CAP COMEDY TOUR
`
`
`
`
`
`
`
`
`Opposer,
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE
`TRADEMARK TRIAL AND APPEAL BOARD
`
`§
`§
`§
`§
`§
`§
`§
`§
`§
`
`Applicant.
`
`
`APPLICANT’S ANSWER
`
`On June 1, 2023, BMN Entertainment, LLC (“Opposer”) filed a Notice of Opposition
`
`
`
`(“Opposition”) against Je’Caryous Johnson Entertainment LLC’s (“Applicant”) Application Serial
`
`No. 97/489,534 for the NO CAP COMEDY TOUR mark alleging that the NO CAP COMEDY
`
`TOUR mark is likely to cause confusion with the Opposer’s intended use of the NO CAP
`
`COMEDY TOUR mark and that Applicant committed fraud in filing the NO CAP COMEDY
`
`TOUR mark.
`
`
`
`With respect to the allegations in the Opposition, Applicant respectfully responds as
`
`follows:
`
`1.
`
`2.
`
`3.
`
`No response required.
`
`Applicant admits Paragraph 2 of the Opposition.
`
`Applicant denies Paragraph 3 of the Opposition as a conclusion of law for which
`
`no response is required.
`
`4.
`
`5.
`
`6.
`
`
`
`Applicant denies each and every allegation of Paragraph 4 of the Opposition.
`
`Applicant admits Paragraph 5 of the Opposition.
`
`Applicant lacks sufficient knowledge or information to form a belief about the truth
`
`
`
`

`

`of the allegations in Paragraph 6 of the Opposition.
`
`7.
`
`With regard to Paragraph 7 of the Opposition, Applicant admits that the parties had
`
`discussions about co-promoting a comedy tour in March 2021. Applicant denies the remaining
`
`allegations in Paragraph 7 of the Opposition.
`
`8.
`
`With regard to Paragraph 8 of the Opposition, Applicant admits that the parties had
`
`discussions regarding a multi-city comedy tour. Applicant denies the remaining allegations in
`
`Paragraph 8 of the Opposition.
`
`9.
`
`With regard to Paragraph 9 of the Opposition, Applicant admits that the parties
`
`agreed they would both help with the tour. Applicant denies the remaining allegations in Paragraph
`
`9 of the Opposition.
`
`10. With regard to Paragraph 10 of the Opposition, Applicant admits that the only
`
`comedy tour the parties jointly promoted was the No Cap Comedy Tour that occurred between
`
`February and May 2022. Applicant denies the remaining allegations in Paragraph 10 of the
`
`Opposition.
`
`11. With regard to Paragraph 11 of the Opposition, Applicant admits that merchandise
`
`was sold in connection with the No Cap Comedy Tour. Applicant denies the remaining allegations
`
`in Paragraph 11 of the Opposition.
`
`12. With regard to Paragraph 12 of the Opposition, the ‘534 application speaks for its
`
`self with regard to the content and requires no admission or denial.
`
`13. With regard to Paragraph 13 of the Opposition, the ‘534 application speaks for its
`
`self with regard to the content and requires no admission or denial.
`
`14.
`
`No response required.
`
`
`
`
`
`

`

`15. With regard to Paragraph 15 of the Opposition, Applicant admits that the NO CAP
`
`COMEDY TOUR mark was used in connection with promotion of the No Cap Comedy Tour.
`
`Applicant denies the remaining allegations in Paragraph 15 of the Opposition.
`
`16.
`
`Applicant need not admit or deny the conclusory statements in Paragraph 16 of the
`
`Opposition. To the extent necessary, Applicant denies the allegations in Paragraph 16 of the
`
`Opposition.
`
`17.
`
`Applicant denies the allegations in Paragraph 17 of the Opposition.
`
`18.
`
`Applicant admits the allegations in Paragraph 18 of the Opposition.
`
`19. With regard to Paragraph 19 of the Opposition, Applicant admits that Opposer filed
`
`suit against it claiming ownership of the NO CAP COMEDY TOUR mark. Applicant admits that
`
`the parties were both making preparations for their own independent comedy tours with the
`
`intention of promoting their respective tours using the name, No Cap Comedy Tour. Applicant
`
`denies the remaining allegations in Paragraph 19 of the Opposition.
`
`20. With regard to Paragraph 20 of the Opposition, Applicant admits that the lawsuit
`
`styled Cause No. 4:22-cv-3143, BMN Entertainment, LLC v. Je’Caryous Johnson Entertainment,
`
`LLC, In the United States District Court for the Southern District of Texas, Houston Division is
`
`currently pending. The pleadings in that lawsuit speak for themselves.
`
`21.
`
`Applicant denies Paragraph 21 of the Opposition as stating a state of mind of the
`
`Opposer.
`
`22.
`
`Applicant denies each and every allegation of Paragraph 22 of the Opposition as
`
`stating a conclusion without support.
`
`23.
`
`Applicant denies each and every allegation of Paragraph 23 of the Opposition as
`
`stating a conclusion without support.
`
`
`
`
`
`

`

`24.
`
`Applicant denies each and every allegation of Paragraph 24 of the Opposition as
`
`stating a conclusion without support.
`
`25.
`
`Applicant admits Paragraph 25 of the Opposition.
`
`26.
`
`Applicant admits Paragraph 26 of the Opposition.
`
`27.
`
`Applicant denies Paragraph 27 of the Opposition as stating a state of mind of the
`
`Opposer.
`
`28.
`
`Applicant denies Paragraph 28 of the Opposition as stating a state of mind of the
`
`Opposer.
`
`29.
`
`Applicant denies each and every allegation of Paragraph 29 of the Opposition.
`
`30.
`
`Applicant denies each and every allegation of Paragraph 30 of the Opposition.
`
`31.
`
`Applicant denies each and every allegation of Paragraph 31 of the Opposition.
`
`32.
`
`Applicant denies each and every allegation of Paragraph 32 of the Opposition.
`
`33.
`
`Applicant denies each and every allegation of Paragraph 33 of the Opposition.
`
`34.
`
`No response required.
`
`35.
`
`Applicant denies each and every allegation of Paragraph 35 of the Opposition.
`
`36.
`
`Applicant denies each and every allegation of Paragraph 36 of the Opposition.
`
`37.
`
`Applicant denies each and every allegation of Paragraph 37 of the Opposition.
`
`38.
`
`Applicant denies each and every allegation of Paragraph 38 of the Opposition.
`
`39.
`
`Applicant denies each and every allegation of Paragraph 39 of the Opposition.
`
`40.
`
`Applicant denies each and every allegation of Paragraph 40 of the Opposition.
`
`
`
`FIRST AFFIRMATIVE DEFENSE
`
`41.
`
`Opposer’s claims are barred by the doctrine of unclean hands.
`
`
`
`
`
`
`

`

`SECOND AFFIRMATIVE DEFENSE
`
`42.
`
`Opposer’s claims are barred by fraud.
`
`
`THIRD AFFIRMATIVE DEFENSE
`
`43.
`
`Opposer’s claims fail, in whole or in part, to the extent they are premised on
`
`ownership of the NO CAP COMEDY TOUR mark because Opposer cannot establish first use of
`
`the mark in commerce.
`
`
`
`FOURTH AFFIRMATIVE DEFENSE
`
`44.
`
`Opposer’s claims fail, in whole or in part, to the extent Opposer lacks standing to
`
`assert claims based upon exclusive ownership of the NO CAP COMEDY TOUR mark.
`
`
`
`FIFTH AFFIRMATIVE DEFENSE
`
`45.
`
`Opposer’s claims fail, in whole or in part, because Applicant’s acts were privileged
`
`or legally justified to the extent they were exercising their own legal rights in good faith.
`
`
`
`
`
`
`
`
`
`
`
`

`

`CONCLUSION
`
`WHEREFORE, Applicant respectfully requests that the Board: (i) dismiss the Opposition
`
`with prejudice; (ii) allow Application Serial No. 97/489,534 to proceed to registration; and (iii)
`
`grant any and all further relief to Applicant that the Board finds justified in the circumstances.
`
`
`Respectfully submitted,
`
`
`/Aly Z. Dossa/__
`Aly Z. Dossa
`Chamberlain, Hrdlicka, White,
`Williams, & Aughtry
`1200 Smith Street, 14th Floor
`Houston, Texas 77002
`(713) 658-1818
`(713) 658-2553 (Fax)
`Counsel for Applicant
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`I hereby certify that on July 11, 2023, I caused a true and correct copy of the foregoing
`
`document to be served on Theodore J. Chiacchio of Nyman IP LLC via email.
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`/Aly Z. Dossa/__
`
`
`
`
`
`
`
`
`
`
`
`
`
`Aly Z. Dossa
`Chamberlain, Hrdlicka, White,
`Williams, & Aughtry
`1200 Smith Street, 14th Floor
`Houston, Texas 77002
`(713) 658-1818
`(713) 658-2553 (Fax)
`Counsel for Applicant
`
`
`
`
`
`

`

`EXHIBIT 1
`EXHIBIT 1
`
`
`
`
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 1 of 25
`
`UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
`
`
`BMN ENTERTAINMENT, LLC,
`
`Plaintiff,
`
`v.
`
`
`JE’CARYOUS JOHNSON
`ENTERTAINMENT LLC AND
`JE’CARYOUS JOHNSON,
`
` Defendants.
`
`
`
`
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`)
`
`
`Civil Action No. 4:22-cv-3143
`
`
`
`
`JURY TRIAL DEMANDED
`
`
`
`
`
`COMPLAINT
`
`Plaintiff BMN Entertainment, LLC (“BMN” or “Plaintiff”), by and through its undersigned
`
`counsel, hereby files this Complaint against Je’Caryous Johnson Entertainment LLC (“JJE”) and
`
`Je’Caryous Johnson (“Mr. Johnson”).1 In support thereof, BMN states as follows:
`
`PARTIES
`
`1.
`
`Plaintiff BMN is a limited liability company organized and existing under the laws
`
`of the State of Illinois and having a place of business located at 4020 S Drexel Blvd Chicago, IL
`
`60653.
`
`2.
`
`Upon information and belief, defendant JJE is a limited liability company organized
`
`and existing under the laws of the State of Texas with a principal place of business located at 12335
`
`Glenleigh Drive, Houston, Texas 70014.
`
`3.
`
`Upon information and belief, defendant Mr. Johnson is domiciled in, and is a citizen
`
`of, the State of Texas.
`
`
`1 JJE and Mr. Johnson are referred to herein collectively at times as “Defendants.”
`
`
`
`1
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 2 of 25
`
`JURISDICTION AND VENUE
`
`4.
`
`Personal jurisdiction exists in Texas over each Defendant. More specifically, each
`
`of JJE and Mr. Johnson are subject to general jurisdiction in Texas.
`
`5.
`
`6.
`
`7.
`
`JJE is a citizen of the State of Texas.
`
`Mr. Johnson is a citizen of the State of Texas and is domiciled in Texas.
`
`Venue is proper in this Judicial District because both Defendants reside in this
`
`Judicial District.
`
`8.
`
`Venue is proper in this Judicial District because “a substantial part of the events or
`
`omissions giving rise to [BMN’s] claim[s] occurred” in this Judicial District. 28 U.S.C. § 1391(b).
`
`9.
`
`This Court has original subject matter jurisdiction over the claims in this action
`
`pursuant to the provisions of the Copyright Act (17 U.S.C. § 101 et seq.), the Lanham Act (15
`
`U.S.C. § 1051 et seq.), 28 U.S.C. § 2201, 28 U.S.C. § 1338(a)-(b), and 28 U.S.C. § 1331. This
`
`Court has jurisdiction over the claims in this action that arise under the laws of the State of Texas
`
`pursuant to 28 U.S.C. § 1367(a), because the state law claims are so related to the federal claims
`
`that they form part of the same case or controversy and derive from a common nucleus of operative
`
`facts.
`
`10.
`
`Subject matter jurisdiction exists over this action also based on diversity
`
`jurisdiction under 28 U.S.C. § 1332(a)(1) because BMN on the one hand, and each of JJE and Mr.
`
`Johnson on the other hand, are citizens of different states. BMN is a citizen of the State of Illinois.
`
`Each of JJE and Mr. Johnson are citizens of the State of Texas. The amount in controversy exceeds
`
`$75,000.
`
`
`
`
`
`
`
`2
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 3 of 25
`
`FACTUAL BACKGROUND
`
`11.
`
`BMN and Defendants began exploring potential partnerships in or around January,
`
`2021. These discussions began when Mr. Johnson, owner of JJE, contacted Blake Craft, co-owner
`
`of BMN, and proposed that the Parties collaborate. JJE’s business involved predominantly
`
`planning, promoting, and booking talent for theatrical events, while BMN’s business involved
`
`predominantly planning, promoting, and booking talent for comedy events.
`
`12.
`
`BMN and Defendants subsequently spoke over the phone and agreed to partner in
`
`connection with the planning, routing, booking, and promotion of a comedy tour.
`
`13.
`
`The Parties had agreed during their call that each would be entitled to a 50% share
`
`of profits earned by the partnership. The Parties further impliedly agreed that each would share a
`
`portion of the losses incurred by partnership.
`
`14.
`
`The Parties agreed that Defendants would handle the routing for the tour, BMN
`
`would book the comedic talent that would perform on the tour, and the Parties would both help
`
`with promoting the tour.
`
`15.
`
`The first comedy tour that the Parties booked and promoted jointly through their
`
`partnership occurred between February and May, 2022, and was promoted as the NO CAP
`
`COMEDY TOUR (the “Tour”).
`
`16.
`
`BMN alone created the NO CAP COMEDY TOUR trademark.
`
`17.
`
`In advance of the Tour, in October, 2021, BMN retained Maximus Graphics, a
`
`graphic design firm, to create logos and other promotional materials for the Tour. BMN has utilized
`
`Maximus Graphics’ services for approximately the past three years.
`
`
`
`3
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 4 of 25
`
`18.
`
`BMN alone owns the copyrights in the promotional material created by Maximus
`
`Graphics for the No Cap Comedy Tour pursuant to a written assignment of the copyrights. This
`
`Copyright Assignment is attached hereto as Exhibit 1.
`
`19.
`
`BMN holds valid and subsisting U.S. copyright registrations for the works of visual
`
`art depicted below (the “Copyrighted Works”) (see Exs. 2, 3), which works are encompassed by
`
`the above-referenced Copyright Assignment.
`
`
`
`
`
`20.
`
`In May, 2022, BMN began extensive discussions with talent agencies in an effort
`
`to enlist comedic talent to perform on a 22-city comedy tour that BMN has booked for September
`
`through December, 2022 (the “BMN Tour”). BMN has elected not to involve Defendants in this
`
`venture.
`
`21.
`
`BMN had intended to promote the BMN Tour to prospective attendees under the
`
`NO CAP COMEDY TOUR trademark and the contracts between BMN and the venues for the
`
`
`
`4
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 5 of 25
`
`BMN Tour indicate that the BMN Tour would be promoted under the name NO CAP COMEDY
`
`TOUR.
`
`22.
`
`Throughout the period that the Parties worked together, BMN included Defendants
`
`in many communications with talent agencies and venues. BMN has had long-standing business
`
`relationships with these talent agencies and with the comedic talent procured through said
`
`agencies, as well as with the entertainment venues. These business relationships pre-existed the
`
`Parties’ association.
`
`23.
`
`Beginning in May, 2022, BMN began successfully enlisting numerous comedians
`
`to perform on the BMN Tour.
`
`24.
`
`Throughout the course of the Parties’ having worked together, BMN shared
`
`substantial amounts of confidential and sensitive business information with Defendants. Such
`
`confidential and sensitive business information includes, by way of example only, contact
`
`information for key management personnel at entertainment venues throughout the U.S. who are
`
`responsible for booking events at the venues.
`
`25.
`
`Such confidential and sensitive information also includes contact information for
`
`comedic talent who plan to perform on the BMN Tour, as well as for their talent agents.
`
`26.
`
`Defendants have recently booked two comedians that had performed on the Tour
`
`to perform on Defendants’ comedy tour taking place this fall that is competing with the BMN
`
`Tour. BMN has had long-standing professional relationships with each of these comedians since
`
`prior to formation of the Parties’ de facto partnership. Defendants paid these comedians
`
`substantially above market rate in an effort to outbid BMN and procure this talent for themselves
`
`exclusively.
`
`
`
`5
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 6 of 25
`
`27.
`
`In June, 2022, BMN began receiving communications from
`
`third-party
`
`entertainment venues indicating that Defendants had contacted them and indicated that Defendant
`
`JJE is the sole and exclusive owner of trademark rights in the trademark NO CAP COMEDY
`
`TOUR. An example of such correspondence from JJE to the venues is attached hereto as Exhibit
`
`4.
`
`28.
`
`As reflected in said correspondence, JJE asserts that it began using the NO CAP
`
`COMEDY TOUR trademark in commerce in November, 2021, continues to use the mark in
`
`interstate commerce, and that if a venue uses the mark in connection with services not originating
`
`from JJE, they will be “in violation of federal trademark law and JJE will seek damages for
`
`violation of the trademark.”
`
`29.
`
`On June 6, 2022, JJE filed a federal trademark application, U.S. Application Serial
`
`No. 97444116, with the U.S. Patent and Trademark Office for the standard character trademark
`
`NO CAP COMEDY TOUR. This application designates International Classes 18, 25, and 41. JJE
`
`filed this application based on a purported bona fide intent to use the mark in commerce in the
`
`future.
`
`30.
`
`On July 5, 2022, JJE filed a federal trademark application, U.S. Application Serial
`
`No. 97489677, with the U.S. Patent and Trademark Office for the standard character trademark
`
`NO CAP COMEDY. This application designates International Classes 9, 18, 25, 26, and 41. JJE
`
`filed this application based on a purported bona fide intent to use the mark in commerce in the
`
`future.
`
`31.
`
`On July 5, 2022, JJE filed a federal trademark application, U.S. Application Serial
`
`No. 97489606, with the U.S. Patent and Trademark Office for the standard character trademark
`
`NO CAP NO CAP COMEDY TOUR. This application designates International Classes 9, 18, 25,
`
`
`
`6
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 7 of 25
`
`26, and 41. JJE filed this application based on a purported bona fide intent to use the mark in
`
`commerce in the future.
`
`32.
`
`On July 5, 2022, JJE filed a federal trademark application, U.S. Application Serial
`
`No. 97489534, with the U.S. Patent and Trademark Office for the standard character trademark
`
`NO CAP COMEDY TOUR. This application designates International Classes 9, 18, 26, and 41.
`
`JJE filed this application based on a purported bona fide intent to use the mark in commerce in the
`
`future.
`
`33.
`
`In connection with each of the above-identified trademark applications, JJE
`
`submitted a signed and sworn declaration attesting, under penalty of perjury to, inter alia, the
`
`following:
`
`• To the best of the signatory’s knowledge and belief, no other persons, except, if applicable,
`concurrent users, have the right to use the mark in commerce, either in the identical form
`or in such near resemblance as to be likely, when used on or in connection with the
`goods/services of such other persons, to cause confusion or mistake, or to deceive; and
`
`• The signatory believes that the applicant is entitled to use the mark in commerce.
`
`
`
`34.
`
`Any otherwise applicable corporate veil should be pierced here to extend liability
`
`for the claims asserted herein to Mr. Johnson personally. There exists such a unity of interest and
`
`ownership as between JJE and Mr. Johnson that the separate personalities of JJE and Mr. Johnson
`
`no longer exist. The circumstances here are such that the adherence to the fiction of a separate
`
`corporation or limited liability company would promote injustice. As alleged further herein, Mr.
`
`Johnson used JJE as a tool through which to defraud BMN. As alleged further herein, Mr. Johnson
`
`used JJE to perpetrate malicious interference with BMN’s current and prospective valid business
`
`relationships with entertainment venues and other third-parties. Mr. Johnson is the Founder, sole
`
`owner, and Chief Executive Office of JJE.
`
`
`
`7
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 8 of 25
`
`35. Mr. Johnson used the corporate form to achieve an inequitable result; namely,
`
`interference with BMN’s efforts to book, route, and promote the BMN Tour, and disruption and
`
`termination of BMN’s contracts with the entertainment venues that BMN had booked for the BMN
`
`Tour. As discussed herein, Mr. Johnson has breached legal and equitable duties owed to BMN.
`
`Mr. Johnson’s conduct, including Mr. Johnson’s holding JJE out as the sole and exclusive owner
`
`of trademark rights in the NO CAP COMEDY TOUR trademark, as complained of herein, has
`
`deceived BMN, as well as entertainment venues, comedic talent and their agents, and prospective
`
`attendees of comedy shows. As explained herein, Mr. Johnson has violated the confidence placed
`
`in him by BMN when the Parties entered into their de facto partnership in advance of the Tour.
`
`Mr. Johnson’s conduct is injurious to the public interest because consumers are likely to
`
`mistakenly believe that services offered by Defendants alone under the NO CAP COMEDY TOUR
`
`mark emanate from the Parties’ since-dissolved de facto partnership. Recognizing a separate
`
`corporate existence for JJE would bring about an inequitable result here because it would enable
`
`Mr. Johnson to avoid being held to account personally for the fraud and other unlawful activities
`
`complained of herein.
`
`COUNT I
`WILLFUL COPYRIGHT INFRINGEMENT
`
`BMN repeats and incorporates herein by reference each of the allegations set forth
`
`36.
`
`above as if fully set forth here.
`
`37.
`
`BMN is the owner of valid and subsisting copyrights in the Copyrighted Works.
`
`38.
`
`Defendants have copied original elements of the Copyrighted Works.
`
`39.
`
`Defendants, inter alia, have reproduced, publicly displayed, created derivative
`
`works based upon, and distributed the Copyrighted Works without BMN’s authorization. Non-
`
`
`
`8
`
`

`

`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 9 of 25
`
`limiting examples of Defendants’ infringing use of the Copyrighted Materials are attached hereto
`
`as Exhibits 5-7.
`
`40.
`
`Defendants had access to the Copyrighted Works as a result of the Parties’ prior de
`
`facto partnership and, specifically, the Parties’ prior joint venture involving the Tour.
`
`41.
`
`The image depicted on the left below appears on Defendants’ website,
`
`www.nocapcomedytour.com. As reflected in the side-by-side comparison below, this image is
`
`substantially similar to each of the Copyrighted Works.
`
`
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`Defendants’ Infringing Work
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`BMN’s Copyrighted Works
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`42.
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`As reflected above, Defendants’ infringing work and the Copyrighted Works both
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`prominently feature the language “No Cap.” The “No Cap” verbiage in the infringing work appears
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`in substantially the same stylized font as the first Copyrighted Work above. Defendants’ infringing
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`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 10 of 25
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`work and each of the Copyrighted Works also include the verbiage “Comedy Tour.” The stylized
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`font for “Comedy Tour” in the infringing work is substantially the same as that of the second
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`Copyrighted Work above. Further, Defendants’ infringing work and each of the Copyrighted
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`Works include a circle with a line through it and an image of a ball cap inside of the circle.
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`43.
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`As a direct and proximate result of Defendants’ infringement of BMN’s copyrights
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`in the Copyrighted Works, BMN has suffered and continues to suffer irreparable harm.
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`44.
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`As a direct and proximate result of Defendants’ infringement of BMN’s copyrights
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`in the Copyrighted Works, BMN has suffered and continues to suffer pecuniary harm.
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`45.
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`Defendants had actual or constructive knowledge that they were infringing BMN’s
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`copyrights in the Copyrighted Works.
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`46.
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`Defendants have willfully engaged in the acts complained of herein in conscious
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`and reckless disregard of BMN’s rights.
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`WHEREFORE BMN prays for judgment in its favor with respect to Count I and for entry
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`of temporary, preliminary, and permanent injunctive relief prohibiting further reproduction,
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`distribution, creation of derivative works based upon, and publicly display of Defendants’
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`infringing works identified above and any other works substantially similar to the Copyrighted
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`Works. BMN further respectfully requests an Order awarding BMN actual and consequential
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`damages caused by Defendants’ conduct as complained of herein, awarding BMN all profits
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`received by Defendants as a result of their infringement of the Copyrighted Works, awarding BMN
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`the costs of this action, together with reasonable attorneys’ fees, and awarding such other and
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`further relief as the Court deems appropriate and just.
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`Case 4:22-cv-03143 Document 1 Filed on 09/14/22 in TXSD Page 11 of 25
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`COUNT II
`DECLARATORY JUDGMENT OF COPYRIGHT INFRINGEMENT
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`BMN repeats and incorporates herein by reference each of the allegations set forth
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`47.
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`above as if fully set forth here.
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`48.
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`BMN seeks a declaration that the unauthorized reproduction of, distribution of,
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`preparation of derivative works based upon, or public display of Defendants’ infringing works
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`identified above or any other work substantially similar to BMN’s Copyrighted Works shall
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`constitute infringement of BMN’s copyrights in the Copyrighted Works.
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`49.
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`This action is ripe for declaratory judgment pursuant to Rule 57 of the Federal Rules
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`of Civil Procedure as authorized by 28 U.S.C. § 2201. A final ruling by this Court will determine
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`whether Defendants (individually or collectively) may reproduce, distribute, prepare derivative
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`works based upon, publicly display, or otherwise use Defendants’ infringing works identified
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`above (or other work substantially similar thereto) in a manner that U.S. copyright law exclusively
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`allocates to the copyright owner(s) or whether such activity would constitute infringement of
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`BMN’s copyrights in the Copyrighted Works.
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`WHEREFORE BMN prays for judgment in its favor with respect to Count II and for entry
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`of an order declaring that the unauthorized reproduction of, distribution of, preparation of
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`derivative works based upon, public display of, or other use of Defendants’ infringing works
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`identified above, or any work substantially similar thereto, in a manner exclusively allocated to
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`the copyright owner(s) under U.S. copyright law shall constitute infringement of BMN’s
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`copyrights in the Copyrighted Works, awarding BMN the costs of this action, together with
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`reasonable attorneys’ fees, and awarding such other and further relief as the Court deems
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`appropriate and just.
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`COUNT III
`DECLARATORY JUDGMENT OF TRADEMARK OWNERSHIP
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`BMN repeats and incorporates herein by reference each of the allegations set forth
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`50.
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`above as if fully set forth here.
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`51.
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`BMN seeks a declaration that that BMN is the sole and exclusive owner of
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`trademark rights in the NO CAP COMEDY TOUR trademark.
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`52.
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`This action is ripe for declaratory judgment pursuant to Rule 57 of the Federal Rules
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`of Civil Procedure as authorized by 28 U.S.C. § 2201. A final ruling by this Court will determine
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`which entity owns exclusive rights to use the NO CAP COMEDY TOUR trademark in interstate
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`commerce in connection with planning, booking talent for, and promoting comedy events.
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`WHEREFORE BMN prays for judgment in its favor with respect to Count III and for
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`entry of an order declaring that BMN is the sole and exclusive owner of trademark rights in the
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`NO CAP COMEDY TOUR trademark.
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`COUNT IV
`FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
`(15 U.S.C. § 1125(a))
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`
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`53.
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`BMN repeats and incorporates herein by reference each of the allegations set forth
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`above as if fully set forth here.
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`54.
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`The Parties began using the NO CAP COMEDY TOUR mark together as part of
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`the Parties’ No Cap Comedy Tour joint business venture in or around January, 2022.
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`55.
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`The Parties dissolved their joint business venture related to the Tour, and otherwise
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`dissolved their at-will de facto partnership, in May of 2022.
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`56.
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`During the period when the Parties were jointly using the NO CAP COMEDY
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`TOUR trademark to promote the Tour, BMN was primarily responsible for controlling the quality
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`of the entertainment services offered under the trademark. This is because BMN was the party
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`responsible for acquiring the comedic talent. This included contacting their agents and booking
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`entertainment venues for the performances. In so doing, BMN relied on its extensive contacts and
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`pre-existing relationships with those in the comedy sector. While Defendants contributed to the
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`Tour by planning the route of the Tour, the actual content and quality of the Tour was ensured by
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`BMN. Further, BMN contributed a disproportionate amount of know-how to the Parties’ de facto
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`partnership. Upon information and belief, Defendants’ experience promoting entertainment events
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`was mostly limited to theatrical productions.
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`57.
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`Defendants’ independent use of the NO CAP COMEDY TOUR trademark in
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`interstate commerce and Defendants’ correspondence to entertainment venues claiming to
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`independently own trademark rights in the NO CAP COMEDY TOUR mark constitutes a false
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`designation of origin with respect to entertainment services offered by Defendants under the mark
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`at least because Defendants and BMN are no longer working together to procure the comedic talent
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`being offered under the mark and BMN is no longer working with Defendants to otherwise plan
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`and promote the Tour.
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`58.
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`Consumers are likely to mistakenly believe that services offered under the NO CAP
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`COMEDY TOUR mark, when said mark is used by Defendants alone, are of the same quality as
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`services offered under the mark when the Parties were using the mark jointly in connection with
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`their de facto partnership. This is an inaccurate perception because BMN was primarily responsible
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`for the quality of services offered under the mark when the Parties’ joint venture was active and
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`the Parties were using the mark jointly. Accordingly, Defendants’ words and conduct constitute
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`misleading statements of fact.
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`59.
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`Defendants’ unauthorized independent use of the NO CAP COMEDY TOUR mark
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`in connection with their services constitutes a false designation of origin, a false or misleading
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`description of fact, and false or misleading representation of fact, and has caused and is likely to
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`cause confusion, mistake, and/or deception as to the affiliation, connection, or association of
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`Defendants’ services with BMN and the origin, sponsorship, or approval of Defendants’ services
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`by BMN.
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`60.
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`Defendants’ actions complained of herein constitute false designation of origin and
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`unfair competition in violation of 15 U.S.C. § 1125(a).
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`61.
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`Defendants have undertaken the actions complained of herein willfully and
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`intentionally with the intent to trade upon BMN’s reputation and goodwill by causing confusion
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`and mistake among customers, including, without limitation, entertainment venues, comedic talent
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`and their agents, and prospective attendees of comedy events.
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`62.
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`Defendants have undertaken the actions complained of herein with the intent of
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`causing consumers to mistakenly believe that Defendants’ services are associated with, sponsored
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`by, approved by, or originate from BMN, when they are not and do not.
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`63.
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`Defendants had actual knowledge that BMN was primarily and substantially
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`exclusively responsible for procuring the comedic talent that performed under the NO CAP
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`COMEDY TOUR mark when the Parties were working together in connection with the Tour.
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`64. Without BMN’s consent and without BMN’s quality control oversight, Defendants
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`have used the NO CAP COMEDY TOUR trademark independently in connection with
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`procurement of comedic talent and promotion of comedy events. Such actions constitute willful
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`violations of 15 U.S.C. § 1125(a).
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`65.
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`Defendants have acted in bad faith and/or willfully in using