Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA392576
`ESTTA Tracking number:
`02/09/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92053383
`Defendant
`Heather Daniels
`HEATHER DANIELS
`22682 BRIDLE TRAIL
`KILDEER, IL 60047
`UNITED STATES
`Motion to Suspend for Civil Action
`Jason A. Berta
`jberta@foley.com, sszczepanski@foley.com, mboldingh@foley.com,
`jolsen@foley.com
`/JasonBerta/
`02/09/2011
`Motion to Suspend - Memo - Ex 1 and 2.pdf ( 145 pages )(9625533 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
`
`Cancellation No. 92053383
`Registration No. 3,888,346
`
`SPENCER GIFTS, LLC
`
`
`
` Petitioner,
`
`
`v.
`
`HEATHER DANIELS,
`
`
`
` Respondent.
`
`
`RESPONDENT’S MOTION TO SUSPEND CANCELLATION PROCEEDING
`
`Respondent, Heather Daniels, by and through her attorneys, Foley & Lardner LLP,
`
`moves the Board to suspend the above-identified cancellation proceeding pending final
`
`determination of the civil action pending in the District Court for Northern District of Illinois,
`
`Eastern Division, Civil Action No. 10-cv-05345 (“Illinois Lawsuit”). Count III of the First
`
`Amended Complaint is for infringement of Respondent’s mark which is the subject of this
`
`cancellation proceeding. See Exhibit L to the attached Exhibit 1. A copy of the First Amended
`
`Complaint and Respondent’s Answer to the Amended Complaint are attached to this motion as
`
`Exhibits 1 and 2, respectively.
`
`The issues involved in the Illinois Lawsuit overlap with those before the Board. A
`
`decision by the United States District Court is binding on the Board, while the decision of the
`
`Board is not binding on the court. Accordingly, to avoid duplication of proceedings and to
`
`promote judicial economy, the above-identified cancellation proceeding should be stayed
`
`pending the final determination of the Illinois Lawsuit.
`
`Error! Digit expected.
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`1
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`

`

`The grounds supporting the motion to suspend are set forth in more detail in the
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`accompanying memorandum.
`
`
`
`Dated: February 9, 2011
`
`Respectfully Submitted,
`
` /s/Jason A. Berta
`S.Z. Szczepanski
`Mary Jo Boldingh
`Jason A. Berta
`FOLEY & LARDNER LLP
`321 North Clark Street
`Suite 2800
`Chicago, Illinois 60654
`(312) 832-4500
`
`Attorneys For Respondent
`Heather Daniels
`
`
`
`
`Error! Digit expected.
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`2
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I, Jason A. Berta, an attorney, hereby certify that on February 9, 2011, I caused a true and
`
`correct copy of the attached RESPONDENT’S MOTION TO SUSPEND CANCELLATION
`
`PROCEEDING to be served upon the below listed counsel for Spencer Gifts, LLC on the date
`
`stated above via email and First Class U.S. mail postage prepaid:
`
`John T. Gabrielides
`Brinks Hofer Gilson & Lione
`NBC Tower – Ste. 3600
`455 N. Cityfront Plaza Dr
`Chicago, IL 60611-5599
`jtg@brinkshofer.com
`
`
` /s/Jason A. Berta
`
`
`Roberta Jacobs-Meadway
`Eckert Seamans Cherin & Mellott
`50 S. 16th St, Floor 22
`Two Liberty Place
`Philadelphia, PA 19102
`rjacobsmeadway@eckertseamans.com
`
`
`
`
`
`Error! Digit expected.
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`3
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`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92053383
`Registration No. 3,888,346
`
`SPENCER GIFTS, LLC
`
`
`
` Petitioner,
`
`
`v.
`
`HEATHER DANIELS,
`
`
`
` Respondent.
`
`
`MEMORANDUM IN SUPPORT OF
`RESPONDENT’S MOTION TO SUSPEND CANCELLATION PROCEEDING
`
`Respondent, Heather Daniels, files this memorandum of law in support of Respondent’s
`
`Motion to Suspend Cancellation Proceeding (“Motion to Suspend”). For the reasons set forth
`
`below, the Board should suspend the above-identified cancellation proceeding pending final
`
`determination of the civil action pending in the United States District Court for Northern District
`
`of Illinois, Eastern Division, Civil Action No. 10-cv-05345 (“Illinois Lawsuit”).
`
`I.
`
`FACTS
`
`On August 20, 2010, Daniels and her company Urban Bratz sued Petitioner Spencer Gifts
`
`LLC and other defendants in the United States District Court for the Northern District of Illinois
`
`for copyright infringement and violation of the Lanham Act. On November 22, 2010, Daniels
`
`and Urban Bratz filed a First Amended Complaint against Spencer Gifts, LLC and the other
`
`defendants adding claims for infringement of Respondent’s Mark. The First Amended
`
`Complaint is attached as Exhibit 1 to Respondent’s Motion. Specifically, in Count III of her first
`
`amended complaint, Respondent requests that the United States District Court for the Northern
`
`District of Illinois declare that the actions of Petitioner Spencer Gifts, LLC and other defendants
`
`CHIC_5265408.1 2/9/2011 3:14 PM
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`

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`constitute infringement of Respondent’s trademark SORRY BOYS, MY DADDY SAYS I
`
`CAN’T DATE ’TILL I’M 30, Serial No. 85/147,868 (Reg. No. 3,888,346) (hereinafter
`
`“Respondent’s Mark”) under the Lanham Act. See Ex. 1, Amended Complaint at 14-15 (Count
`
`III) & Ex. L.
`
`In its Petition for Cancellation filed on December 8, 2011 in this proceeding, Petitioner
`
`Spencer Gifts, LLC disclosed the existence of the Illinois Lawsuit which was pending between
`
`the parties. See Pet. ¶ 11. Petitioner further stated that “[t]he complaint [of the Illinois Lawsuit]
`
`contained no claim of trademark rights in Daniels’ alleged mark.” Id. This statement made by
`
`the Petitioner failed to disclose the fact that Respondent had previously filed a First Amended
`
`Complaint in the Illinois Lawsuit that does contain a claim of trademark rights in Respondent’s
`
`Mark. Ex. 1, Amended Complaint, at 14-15.
`
`On January 6, 2011, Petitioner Spencer Gifts, LLC and the other defendants filed an
`
`answer to the First Amended Complaint in the Illinois Lawsuit. The answer is attached as
`
`Exhibit 2 to the Motion to Suspend. In the answer, Spencer Gifts, LLC denies the allegations
`
`that Respondent has rights in Respondent’s Mark, and that its actions constituted infringement of
`
`Respondent’s Mark. See Ex. 2, Answer at 27-29. In addition, in a counterclaim, Petitioner asks
`
`the Court for the very relief for which it is asking the TTAB, cancellation of Respondent’s Mark:
`
`…the Court should declare that Plaintiffs have no rights in the
`common slogan because: (1) the slogan, “Sorry Boys, my Daddy
`says I Can’t Date ‘Til I’m 30”, is merely an ornamental phrase, not
`subject to trademark protection; (2) Plaintiffs have no basis to
`claim exclusive rights to use the slogan as it has been used by
`many others extensively before Plaintiffs’ claimed creation on or
`about November 11, 2008; (3) the Supplemental Register
`Trademark Registration No. 3,888,346 should be cancelled
`pursuant to 15 U.S.C. §1120. A petition for cancellation of said
`Registration was filed in the United States Trademark Office on
`December 8, 2010.
`
`CHIC_5265408.1 2/9/2011 3:14 PM
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`Answer at 54, ¶ 28 (Second Counterclaim).
`
`II.
`
`THE CANCELLATION PROCEEDING SHOULD BE SUSPENDED BECAUSE
`THE PENDING ILLINOIS LAWSUIT HAS A BEARING ON THIS
`PROCEEDING
`
`Rule 2.117(a) of the Trademark Rules of Practice states that whenever it comes to the
`
`attention of the Board that the parties to a case pending before it are involved in a civil action
`
`which may have a bearing on the Board case, proceedings before the Board may be suspended
`
`until final determination of the civil action. 37 C.F.R. § 2.117(a).
`
`It is the long-standing policy and practice of the Board to suspend proceedings when a
`
`pending civil action has bearing on the issues before the Board. Other Tel. Co. v. Conn. Nat’l
`
`Tel. Co., 181 U.S.P.Q. 125, 126 (T.T.A.B. 1974) (“It is clear therefore that the final
`
`determination of the civil suit will directly affect the resolution of the issue of likelihood of
`
`confusion which is involved in the proceeding before the [Board].”), aff’d, 181 U.S.P.Q. 799
`
`(Comm’r Pats. 1974); Tokaido v. Honda Assoc., Inc,. 179 U.S.P.Q. 861, 862 (T.T.A.B. 1973)
`
`(“[N]otwithstanding the fact that the Patent Office proceeding was the first to be filed, it is
`
`deemed to be the better policy to suspend proceedings herein until the civil suit has been finally
`
`concluded.”); Gen. Motors Corp. v. Cadillac Club Fashions Inc., 22 U.S.P.Q.2d 1933, 1936
`
`(T.T.A.B. 1992). Here, the final determination of the Illinois Lawsuit will directly affect
`
`Respondent’s rights in the mark SORRY BOYS, MY DADDY SAYS I CAN’T DATE ‘TILL
`
`I’M 30, which is the subject of the present cancellation proceeding. In the Illinois Lawsuit,
`
`Petitioner has denied Respondent’s allegations of trademark infringement, including the
`
`allegations that Respondent has well-known and prior established rights in Respondent’s Mark.
`
`See Ex. 2, Answer at 27-29 (¶ 80-85). In addition, Petitioner’s counterclaim asks the Court for
`
`the very relief for which it is asking the TTAB, cancellation of Respondent’s Mark. Answer at
`
`CHIC_5265408.1 2/9/2011 3:14 PM
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`3
`
`

`

`54, ¶ 28 (“the Supplemental Register Trademark Registration No. 3,888,346 should be
`
`cancelled”). In addressing this dispute, the federal court must determine whether Respondent
`
`owns protectable trademark rights in the mark SORRY BOYS, MY DADDY SAYS I CAN’T
`
`DATE ‘TILL I’M 30. Those same trademark rights are challenged by the Petitioner in the
`
`present cancellation proceeding. See Pet. ¶¶ 5, 8, 9, 14-16. The pending civil action will
`
`therefore have a direct bearing on the question of the rights that must be addressed by the Board.
`
`Whopper-Burger, Inc. v. Burger King Corp., 171 U.S.P.Q. 805, 807 (T.T.A.B. 1971) (“There can
`
`be no doubt therefore that 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.”).
`
`A suspension of the cancellation proceeding will avoid duplication of proceedings and
`
`promote judicial economy. The decision by the United States District Court would be binding on
`
`the United States Patent & Trademark Office whereas a determination by the Board as to
`
`Respondent’s rights to retain its registration would not be binding or res judicata in respect to the
`
`Illinois Lawsuit. Whopper-Burger, 171 U.S.P.Q. at 807; Tokaido,. 179 U.S.P.Q. at 862.
`
`III. CONCLUSION
`
`For the foregoing reasons, Respondent Heather Daniels respectfully requests that,
`
`pursuant to Trademark Rule of Practice 2.117(a), 37 C.F.R. 2.117(a), the Board suspend the
`
`above-identified cancellation proceeding pending final determination of the civil action pending
`
`in the United States District Court for Northern District of Illinois, Eastern Division, Civil Action
`
`No. 10-cv-05345.
`
`
`
`CHIC_5265408.1 2/9/2011 3:14 PM
`
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`
`

`

`Dated: February 9, 2011
`
`Respectfully Submitted,
`
` /s/Jason A. Berta
`S.Z. Szczepanski
`Mary Jo Boldingh
`Jason A. Berta
`FOLEY & LARDNER LLP
`321 North Clark Street
`Suite 2800
`Chicago, Illinois 60654
`(312) 832-4500
`
`Attorneys For Respondent
`Heather Daniels
`
`
`
`
`
`
`CHIC_5265408.1 2/9/2011 3:14 PM
`
`5
`
`

`

`
`
`CERTIFICATE OF SERVICE
`
`I, Jason A. Berta, an attorney, hereby certify that on February 9, 2011, I caused a true and
`
`correct copy of the attached MEMORANDUM IN SUPPORT OF RESPONDENT’S MOTION
`
`TO SUSPEND CANCELLATION PROCEEDING to be served upon the below listed counsel
`
`for Spencer Gifts, LLC on the date stated above via email and First Class U.S. mail postage
`
`John T. Gabrielides
`Brinks Hofer Gilson & Lione
`NBC Tower – Ste. 3600
`455 N. Cityfront Plaza Dr
`Chicago, IL 60611-5599
`jtg@brinkshofer.com
`
`
` /s/Jason A. Berta
`
`
`prepaid:
`
`Roberta Jacobs-Meadway
`Eckert Seamans Cherin & Mellott
`50 S. 16th St, Floor 22
`Two Liberty Place
`Philadelphia, PA 19102
`rjacobsmeadway@eckertseamans.com
`
`
`
`
`
`
`
`CHIC_5265408.1 2/9/2011 3:14 PM
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`
`

`

`Exhibit 1
`
`Exhibit 1 to Respondent's Motion to Suspend
`
`Spencer Gifts, LLC v. Daniels
`Cancellation No. 92053383
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 1 of 26 PageID #:592
`
`FILED
`NOVEMBER 22, 2010
` MICHAEL W. DOBBINS
`CLERK, U.S. DISTRICT COURT
`
`Exhibit 1 to Respondent's Motion to Suspend
`
`Spencer Gifts, LLC v. Daniels
`Cancellation No. 92053383
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 2 of 26 PageID #:593
`Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 2 of 26 PageID #2593
`
`4. Defendant Spencer Gifts LLC, is a Delaware Limited Liability company, doing
`
`business in the Northern District of Illinois and whose corporate headquarters are
`
`located at 6826 Black Horse Pike, Egg Harbor Township, New Jersey, 08234.
`
`5. Defendant Spencer Gifts Holding LLC, is a Delaware Limited Liability company,
`
`doing business in the Northern District of Illinois and whose corporate headquarters are
`
`located at 6826 Black Horse Pike, Egg Harbor Township, New Jersey 08234
`
`Ch
`
`Defendants Spencer Gifts Online, LLC, is a Delaware Limited Liability Compan ,
`
`doing business in the Northern District of Illinois, and whose corporate headquarters
`
`are located at 6826 Black Horse Pike, Egg Harbor Township, New Jersey 08234.
`
`7. Defendant Tee Shirt Central Inc. a Flordia corporation hereinafter referred to as Tee
`
`Shirt Central was the printer of the infringing apparel.
`
`8. Defendants Spencer Gifts, LLC, Spencer Gifts Holding LLC, and Spencer Gifts Online
`
`LLC, conduct business within the jurisdiction of the Northern District of Illinois and
`
`maintain stores and/or websites doing business throughout the Chicagoland
`
`metropolitan area in Illinois, including Cook and Lake counties.
`
`JURISDICTION AND VENUE
`
`9. This is a civil action arising under the Copyright Act and the Lanham Act. Accordingly,
`
`this court has federal question jurisdiction over the subject matter of this action
`
`pursuant to 17, U.S.C. Sections 101 et.seq. , 15 U.S.C. Sections 45, 1121 and 28 U.S.C.
`
`Sections 1331 and 1338 (a) and (b). The court has supplemental jurisdiction over the
`
`pendant state law claims pursuant to the principles of supplemental jurisdiction
`
`contained in 28 U.S.C. Sections 1367 (a). De-endant Spencer Gifts, LLC admitted in
`
`the filed pleadings that Venue was appropriate.
`2
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 3 of 26 PageID #:594
`Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 3 of 26 PageID #2594
`
`10.
`
`Venue is proper in this judicial district under 28 US. C. Section 1391 (b). in that the
`
`actions complained of herein are occurring in this district, and the Defendants may be
`
`found in this District under 28 U.S.C. section 1400 (a),
`
`ALLEGATIONS COMMON TO ALL CLAIMS FOR RELIEF
`
`ll.
`
`Plaintiff is a graphic designer, and is the owner of Urban Bratz, LLC a California
`
`Limited Liability company specializing in the sale of children and infant apparel with
`
`original graphic designs.
`
`12.
`
`Plaintiffs have been successful in the sale and marketing of their original apparel in
`
`over 100 stores throughout the world carrying their line of clothing, since Urban Bratz
`
`LLC began business on January 13, 2009.
`
`13.
`
`Plaintiff has created a website on or about January 2009 where the original graphic
`
`designs are marketed and sold.
`
`1
`
`. On or about November 11, 2008 the Plaintiff Heather Daniels created an original
`
`graphic design entitled “Sorry Boys, my Daddy says I Can’t Date ‘Till I’m 30. A true
`
`and correct copy of the copyrighted work is attached hereto and marked as Exhibit A.
`
`15.
`
`The copyrighted work, Exhibit A, attached hereto and incorporated by reference is the
`
`subject of United States Copyright office Certificate of Registration No. VA—1—698—
`
`384, issued to Plaintiff Heather Daniels on February 2, 2010. A true and correct copy of
`
`the Certificate of Copyright is attached hereto and Marked as Exhibit “13”.
`
`16.
`
`That on November 3, 2010 the Plaintiff was awarded another copyright, which the
`
`copyright office recognized as containing text, 2-D artwork, and an original epigram
`
`with, a hand—drawn human figure. A true and correct copy of the certificate of copyright
`
`is attached hereto and made a part hereof as exhibit J.
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 4 of 26 PageID #:595
`‘ Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 4 of 26 PageID #2595
`
`17
`
`. That the November 3, 2010 copyright was first created in 2008 and the registration
`
`number is VAu-043-680. See exhibit J consisting of the certificate and original design.
`
`O
`
`. That both copyrighted works contain the same original epigram text, design, and trade
`
`mark, belonging to the plaintiff.
`
`19
`
`. Since the creation of the works that are the subject of the copyrights Plaintiff has
`
`continued to comply with provisions of the Copyright Act with respect to the copyright.
`
`20
`
`. Plaintiff continues to be the sole proprietor of all right, title and interest in and to the
`
`copyrighted works.
`
`21.
`
`Plaintiff markets the copyrighted work through her company, Urban Bratz LLC.
`
`22.
`
`Plaintiff has never conveyed any right, title or interest in or to the copyrighted work to
`
`any other person.
`
`. Plaintiff has never released the copyrighted works into the public domain.
`
`24.
`
`In the marketing of her copyrighted wok, on or about March 23, 2009, the Plaintiff
`
`contacted the Defendants, Spencer Gifts, LLC. through Cori Totoro, Associate Buyer,
`
`of Defendants by E. Mail, informing her of Urban Bratz and product submission
`
`inquiring if Defendants would be interested in carrying Plaintiff s T—shirts and giving
`
`Defendants access to View Plaintiffs line of apparel by directing Defendants to
`
`Plaintiff’s Website www.Urban-bratz.com. See Exhibit C attached hereto and
`
`incorporated by reference the E—Mail dated March 23, 2009 to Cori Totoro.
`
`25.
`
`That Cori 'l‘otoro opened the E—Mail sent by the Plaintiff and had access to the
`
`Plaintiff’ s copyrighted materials for Spencer’s consideration to carry the Urban Bratz
`
`line. See exhibit D.
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 5 of 26 PageID #:596
`’ Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 5 of 26 PageID #2596
`
`26.
`
`Having already misappropriated the copyrighted material of Urban Bratz, Spencer’s
`
`employee, Cori Totoro requested additional copyrighted material from Urban Bratz on
`
`February 9, 2010. See Group Exhibit C.
`
`27.
`
`That Roseanne Seger, employed by the Defendants as Chief or Senior Buyer, was
`
`forwarded by Cori Totoro the E Mail of March 23, 2009 sent by the Plaintiff for her
`
`consideration for Defendants to carry the Plaintiffs line of apparel. See Exhibit C.
`
`28.
`
`Defendant’s interest in Plaintiff 5 designs were not for legitimate reasons rather they
`
`were for counterfeiting.
`
`29.
`
`The Defendants also had access to the Plaintiff s copyrighted material in that it was
`
`published on June 2009 in Kids LA Magazine and on various blogs from June 2009
`
`through January 2010. See attached Exhibit E.
`
`30.
`
`The Defendants copied the Plaintiffs design, and has been selling infant and children’s
`
`apparel with the Plaintiff’ s cop‘rrighted design, in their retail stores and on line in their
`
`web site. That said actions infringe on the copyright which the Plaintiff owns. See
`
`exhibit F attached hereto and incorporated by reference the Defendants infringing
`
`design.
`
`31.
`
`That one location in which this infringing design and trademark on apparel was sold
`
`was in the Spencer’s retail store in Vernon Hills Illinois, within this District Courts
`
`Jurisdiction. See attached Exhibit G receipt for purchase of the garment.
`
`32.
`
`That the Defendant Spencers admitted in discovery that Tee Shirt Central Inc printed all
`
`their “Sorry Boys” children apparel.
`
`. That a true and correct copy of the Defendants’ web page offering the infringing design
`
`on a T-shirt is attached as Exhibit H.
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 6 of 26 PageID #:597
`7 Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 6 of 26 PageID #2597
`
`34.
`
`The infringing T—shirt Exhibit F bears substantially the same design as the Plaintiff's
`
`exhibit A which is Plaintiff s twice copyrighted work. See Exhibit I for comparison.
`
`35.
`
`That Tee Shirt Central was disclosed by the Defendant in discovery as the Printer and
`
`supplier of the infringing material the Defendant marketed and sold which contained
`
`the essence of Plaintiffs copyrights and trademarks.
`
`36.
`
`That upon review of Defendant’s discovery it was discovered that Tee Shirt Central
`
`also took and infringed upon the Plaintiffs trademark “I like shiny things just like
`
`mommy.”
`
`. Neither the Plaintiffs nor anyone authorized by them has at any time licensed
`
`Defendants to reproduce, advertise, distribute, sell exhibit, or otherwise deal in the
`
`copyrighted and trademarked work whether on T-shirts or on any other article.
`
`38.
`
`The Plaintiffs T-shirts on average sell throughout the country for approximately
`
`$24.00 the Defendants infringing design and trademark T-shirt sold for $12.99. The
`
`Plaintiffs infant apparel on average sells throughout the country for approximately
`
`$22.00, the Defendant’s infringing design and trademark sells for $14.99.
`
`39.
`
`The Defendants counterfeited the Plaintiffs unique design in “Sorry Boys” copyrights
`
`and essence in violation of the copyright and trademark acts, without Plaintiffs consent
`
`and authority, and marketed it at a cheaper amount to obtain an unfair market
`
`advantage.
`
`40.
`
`The Defendants mass marketed this unique boutique item “Sorry boys” at a lower
`
`price thereby devaluing the Plaintiffs copyrighted and trademarked protected design.
`
`41.
`
`The Defendants had access to the Plaintiffs design and original epigram from the
`
`March 23, 2009 E-Mail attached as Exhibit C inviting the Defendants buyer to View the
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 7 of 26 PageID #:598
`Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 7 of 26 PageID #2598
`
`designs of the Plaintiff as a marketing inquiry if Defendants would be interested in
`
`selling Plaintiff s apparel in the Defendant’s store.
`
`. Plaintiff was unaware at the time the goed faith solicitation for sales was made that
`
`Spencer consists of a group that often times does not pay for the wares and designs of
`
`others but instead once exposed to the copyrighted and trademarked designs instead
`
`steals same for their own pecuniary gain.
`
`43.
`
`Plaintiff has since discovered that Defendant has been sued many times for copyright as
`
`well as trademark infringement:
`
`a. Lewis Galoob Toys V. Spencer Gifts LLC 1995 87—1231
`
`b. Sean Moorman V. Spencer Gifts LLC 207
`
`c. Tuni & G V. Spencer Gifts LLC 2008 80 C V 0410
`
`d. Olander enterprises Inc. V. Spencer Gifts LLC 2009 09 CV. 01372
`
`4s4s
`
`. That the Defendants have a pattern of cenduct of counterfeiting , stealing and
`
`infringing upon the copyright and trademarks of others and selling same at a reduced
`
`price to obtain an unfair market advantage in disregard of the rights of the lawful holder
`
`of the copyright and trademarks.
`
`45.
`
`That all of the Defendants sold their “Sorry Boys” children apparel for less than the
`
`Plaintiff.
`
`46.
`
`The Defendants attempt to put superficial changes in the design that Defendants were
`
`marketing was a superficial attempt to conceal or avoid copyright and trademark
`
`infringement charges.
`
`

`

`Case: 1:10-cv-05345 Document #: 48 Filed: 11/22/10 Page 8 of 26 PageID #:599
`Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 8 of 26 PageID #2599
`
`47.
`
`The Defendants design with a pipe in the father’s mouth, or a superficial font change in
`
`a letter does not change the character or essence of the design to differentiate it from
`
`the Plaintiff 5 original copyrighted design. See Exhibit 1 for comparison.
`
`48.
`
`The essence of the Plaintiffs copyrighted design and original epigram is in the version
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`used by the Defendants so much so that if you lay one over the other it is in the exact
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`same order.
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`49.
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`The superficial design change by Defendants of adding a pipe to the father and a font
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`change has caused and will continue to cause confusion in the market place in Violation
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`of the trademark Act. ( See Exhibit K Blog)
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`50.
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`The Design changes as superficial as they are is an infringement upon Plaintiffs
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`copyrights as no permission was given to the Defendants to make any design change to
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`the Plaintiffs copyrights.
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`51.
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`The Plaintiffs original copyrighted work and the Defendant’s counterfeited copied
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`work are substantially the same.
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`52.
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`Defendants have approximately 766 stores in the United States in which the T-shirt and
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`infant apparel “Sorry Boys” containing the Plaintiffs copyrighted and trademark
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`design was sold.
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`53a
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`The Defendants have other stores in Canada and the UK. and upon information and
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`belief in other countries in which the T—Shirt “Sorry Boys” containing the Plaintiff s
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`copyrighted and trademark design was sold.
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`54.
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`Plaintiff has spent a great deal of effort and time promoting her trademarks and
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`copyrights so that it is has become identified with her brand Urban Bratz line of
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`children apparel. In that:
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`a. Plaintiffs have received much press and notoriety:
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`Plaintiff‘s advertisements, reviews, promotions and products have been featured in numerous magazine
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`articles, Internet biog websites, and television news spots and have been featured with celebrities such as
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`Mario Lopez from Dancing With The Stars. See a sampling from Plaintiff’s press features attached herein
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`as Exhibit E. In fact with all of this exposure of plaintifiD 5 products, much attention and fame has been
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`brought to the Plaintiff 5 Urban Bratz brand and the registered marks. Plaintiff has further made it a
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`e-+
`requirement for all advertisers and features of it’s products to list the “Urban Bratz” mark in connec ion
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`with all featured or advertised products, which connects ownership of it’s brand with it’s products
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`including those containing the “ Sorry Boys My Daddy Says I Can’t Date Till’ I’m 30” and “I Like Shiny
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`Things Just Like Mommy” mark. Furthermore, a majority of the press featuring Plaintiff, focuses on the
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`fact that Plaintiff is well known for itis “Sorry Boys My Daddy Says I Can’t Date Till’ I’m 30” products.
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`Specifically, the Plaintiff’s products, which bear the Registered Mark, have been featured on the
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`following:
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`b. Plaintiff’s trademarks and copyrights have been published in Magazine and Print:
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`The Plaintiff 3 “Sorry Boys My Daddy Says I Can’t Date Till’ I’m 30” and other products have been
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`featured in numerous magazine and print brochures and have become widely known throughout the
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`United States. The following represents some ofthe featured articles: 1). Kid’s LA Magazine (reaching
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`20,000 readers monthly) 2.) Low County Parent Magazine (reaching 41,000 readers monthly) 3)
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`Earnshaw’s Magazine ( Multiple issues)
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`c. Plaintiff’s trade marks and copyrights have received Online Press
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`Plaintiff has also received a very large amount of internet press fe-‘turing the “ Sorry Boys My Daddy
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`Says I Can’t Date Till’ I’m 30”, “I Like Shiny Things Just Like Mommy” marks and many other products
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`9
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`{ Case: 1:10-cv-05345 Document #2 48 Filed: 11/22/10 Page 10 of 26 PageID #2601
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`offered. This attention has helped make these products widely known throughout the United States as well
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`as Australia, Canada, Indonesia, Malaysia, Japan, The Netherlands, New Zealand and The United
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`Kingdom. These products have been featured on more than fifty (50) websites. The following represents a
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`sample of such internet sites which have featured Plaintiffs products:
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`1) Foxnewscom 2)
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`CelebrityBabyScoopcom 3) Drooliciouscom 4) BabyElanDaily.com 5) Earnshawscom E—blast 6)
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`MommiesWithStyle.com 7) Kid’s LAMagazine.com 8) Sodaheadcom 9) AStayAtHomeMom.com 10)
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`FeistyFrugal& Fabulouscom l l) l LikeItFrantic.com l2) KiddiesCornerDealscom l3) My
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`OrganizedChaos.com l4) PieceOfMecom 15) PourSomeSugarOnMe.com 16) TheIEMommy.com 17)
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`The OneFantastical.com l8) TheVeaterFamily.com 19) The Stir.com 20) DetroitMomrnies.com 21)
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`ACouchWithAView.com 22) AKindredSpirit.com 23) And TwinsMake5.com 24) Designbabycom 25)
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`Hautemom.com 26) JabberingJessi.com 27) MonstersInMyHousecom
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`The referenced websites receive visits ranging to nearly 250,000,000 visits. The Plaintiff and their
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`registered mark have been so popular on the internet that many Google Alerts have been issued in
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`connection to the “ Sorry Boys My Daddy Says I Can’t Date Till’ I’m 30” mark in connection with the
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`Urban Bratz products.
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`(1. Plaintiff’s trade marks and copyrights have received Television Press
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`Furthermore Plaintiff s products have been showcased on features on television news and entertainment
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`shows including Fox Detroit News.
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`e.
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`Plaintiff’s trade marks and copyrights are known by and used by celebrities
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`Finally, the Plaintiff s “ Sorry Boys My Daddy Says I Can’t Date Till’ I’m 30” and “I Like Shiny Things
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`Just Like Mommy” products have ac iieved fame and notoriety by celebrities who have received these
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`products as gifts from Urban Bratz, as well as from friends and family. The following represents a sample
`
`10
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`of these celebrities: 1) Mario Lopez 2) Jennifer Lopez 3) Gwen Stefani 4) Ben Affleck 5) Angelina Jolie
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`6) The rock band Jane’s Addiction (purchased by a friend for drummer’s new baby) 7) Halle Berry 8)
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`Ashley Simpson 9) Torri Spelling. Upon heavily generated publicity in all of the above venues, it is
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`evident that Plaintiff’ 5 Registered Mark has become closely associated with Plaintiff and the Urban Bratz
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`brand.
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`COPYRIGHT INFRINGEMENT AGAINST ALL DEFENDANTS
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`COUNT I
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`55.
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`Plaintiff realleges and incorporates by this reference each and every allegation set forth
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`in paragraphs 1-54 herein for their First ground for relief.
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`56.
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`That the Defendants infringed upon the plaintiff’ 3 February 2, 2010 copyright.
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`57.
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`By reason of the foregoing, Defendants conduct has infringed Plaintiff copyright
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`interest in the copyrighted work.
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`58.
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`By reason of the foregoing Defendant’s conduct has devalued the Plaintiff s
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`copyrighted work.
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`59.
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`That the activities of the Defendants in intentionally or negligently offering for sale,
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`distributing, marketing, and/or publicly exhibiting articles of apparel that infringe the
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`aforementioned copyright constitute willful acts of infringement.
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`60.
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`This extensive and wide reaching infringement has and will continue to severely
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`diminish the value of Plaintiff 5 work by the distribution of inferior copies of Plaintiff’s
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`unique design. By reason of the foregoing, Plaintiff has and will suffer irreparable
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`damages to her business, reputation, and goodwill.
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`11
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`61.
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`There is a likelihood of success on the merits as the Defendants had access to the
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`Plaintiffs copyrighted design and the infringing design of the Defendant is substantially
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`similar in a side by side comparison to the copyrighted protected design of the Plaintiff.
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`62.
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`Defendant did not make an innocent mistake, in that after Defendant was exposed to the
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`Plaintiff” 5 copyright the plaintiff began to counterfeit the Plaintiffs copyright protected
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`design and trademark capturing all of its essence.
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`63.
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`Plaintiff is informed and believes, and on the basis alleges, that unless enjoined by this
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`court, Defendant intends to continue its course of conduct and to wrongfully use,
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`infringe upon, sell and otherwise profit from the copyrighted work.
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`64.
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`As a direct and proximate result of the acts of defendants alleged above, Plaintiffs have
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`already suffered irreparable damage.
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`65.
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`Plaintiff has no adequate remedy at law to redress all of the injuries that Defendant has
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`intends .0 cause by its infringement a--d it’s conduce.
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`66.
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`Plaintiff will continue to suffer irreparable damage until Defendant’s actions alleged
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`above are enjoined by this Court.
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`67.
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`The Def