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`UNITED STATES DISTRICT COURT
`FOR THE MIDDLE DISTRICT OF FLORIDA
`TAMPA DIVISION
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`: Civil Action No. ____________
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`JURY TRIAL DEMANDED
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`INJUNCTIVE RELIEF SOUGHT
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`CALEB PROCHNOW,
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`Plaintiff,
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`v.
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`MERCEDES MEDICAL, LLC,
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`Defendant.
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`CALEB PROCHNOW’S COMPLAINT
`FOR COPRYIGHT INFRINGEMENT, BREACH OF CONTRACT, AND
`UNJUST ENRICHMENT AGAINST MERCEDES MEDICAL, LLC AND
`DEMAND FOR JURY TRIAL
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`Plaintiff Caleb Prochnow (“Mr. Prochnow”), by and through his attorneys,
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`alleges the following against defendant Mercedes Medical, LLC (“Mercedes” or
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`“Defendant”):
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`NATURE OF THE ACTION
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`1.
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`This action arises from Defendant Mercedes’ willful, deliberate, and
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`repeated infringement of Mr. Prochnow’s copyrights for original and creative
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`works; Defendant Mercedes’ breach of its contract with Mr. Prochnow; and
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 2 of 17 PageID 2
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`Defendant Mercedes’ unjust enrichment through the use of Mr. Prochnow’s works
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`and derivatives thereof.
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`2.
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`Caleb Prochnow is an artist and instructor at the Ringling College of
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`Art and Design, based in Sarasota, Florida. Mr. Prochnow’s original, pictorial
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`illustrations have been purchased by a variety of corporations for use in advertising
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`and marketing around the world.
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`3.
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`In 2005, Mr. Prochnow created original pictorial illustrations of a
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`cartoon hippopotamus who is now immediately recognizable and referred to by
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`Mercedes as “Henry the Histo-Potamus” (“Henry”). Mercedes received limited
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`ownership rights from Mr. Prochnow to use thirteen original illustrations of Henry
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`in free, promotional calendars. No rights in the copyright were granted to
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`Mercedes, nor were derivative rights provided to Mercedes.
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`4.
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`For the next four years, Mr. Prochnow was asked by Mercedes to
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`provide, and Mr. Prochnow provided, illustrations to Mercedes for use by
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`Mercedes exclusively in annual free calendars. Each year the nominal price paid by
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`Mercedes was less than published rates for limited-use calendar illustrations and
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`confirmed that Mercedes’s right to use the works was limited to free, promotional
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`calendar illustrations. At no time did Mr. Prochnow grant or license copyright or
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`derivative rights in any of his works of authorship to Mercedes.
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`2
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 3 of 17 PageID 3
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`5.
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`In 2010, Mr. Prochnow received an offer from Mercedes to expand
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`the use of Mr. Prochnow’s Henry images and in return pay Mr. Prochnow quarterly
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`an eight percent (8%) royalty on sales of products sold in conjunction with the use
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`of Mr. Prochnow’s Henry illustrations. The offer was accepted by Mr. Prochnow
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`on at least March 26, 2010.
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`6.
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`Soon thereafter, communications from Mercedes ceased, no royalty
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`payments were sent to Mr. Prochnow, and Mr. Prochnow’s contact at Mercedes
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`left. Mr. Prochnow assumed that Mercedes had chosen not to use his illustrations
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`with the sale of Mercedes products. Indeed, Mr. Prochnow believed that Mercedes
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`had stopped using images of Henry entirely because they did not contact him for
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`additional calendars or additional Henry illustrations.
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`7.
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`In late 2015, Mr. Prochnow learned that Mercedes had and continues
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`to use Mr. Prochnow’s Henry illustrations and derivatives thereof directly with the
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`sale of Mercedes products, including through sale of products on Mercedes’
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`website, and on product packaging, catalogs, and other advertising materials
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`relating directly to the sale of Mercedes’ histology-related products.
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`8.
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`Despite being explicitly informed of Mr. Prochnow’s rights of
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`authorship and copyrights in the original, pictorial illustrations, Mercedes’
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`unauthorized use of the illustrations without remuneration to Mr. Prochnow
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`continues unabated. Such actions by Mercedes constitute willful copyright
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`3
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 4 of 17 PageID 4
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`infringement, a breach of the parties’ 2010 agreement, and unjust enrichment by
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`Mercedes at the expense of Mr. Prochnow’s efforts and work.
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`9.
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`Attempts by Plaintiff to reach an amicable and mutually acceptable
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`resolution without the need for litigation have been rebuffed by Defendant, leaving
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`Mr. Prochnow with no choice but to institute the current action.
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`JURISDICTION AND VENUE
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`10.
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`Jurisdiction of this Court is invoked at least under 28 U.S.C. §1338(a)
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`pursuant to the Copyright Act of 1976, 17 U.S.C. §101 et seq.
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`11. Venue is proper in this district pursuant to 28 U.S.C. §1391(b) and (c)
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`and 28 U.S.C. §1400(a).
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`THE PARTIES
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`12. Plaintiff Caleb Prochnow is an individual and resident of Manatee
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`County.
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`13. Mr. Prochnow is an illustration instructor at Ringling College and has
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`expertise as an artist creating content for use in products, advertising, and
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`marketing for a variety of corporations around the world.
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`14.
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` On information and belief, Defendant Mercedes Medical, LLC is a
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`company organized under the laws of Florida, with its principal place of business
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`in Sarasota County located at 7590 Commerce Court, Sarasota, FL 34243, and also
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`maintains an office at 7590 Commerce Court, Sarasota, FL 34243.
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`4
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 5 of 17 PageID 5
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`15.
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` Defendant Mercedes is a national medical distribution company and
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`sells over 20,000 medical products from over 1,000 manufacturers.
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`FACTUAL ALLEGATIONS RELEVANT TO ALL COUNTS
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`16.
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` Starting in 2005, Mr. Prochnow was asked by Defendant Mercedes to
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`prepare artwork relating to a vaguely described cartoon hippopotamus, a character
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`Mercedes wished to use in free, promotional calendars.
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`17. On information and belief, prior to this time Mercedes’ Henry
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`character was relegated to plush animal toys; a hippo outfit used at Histology
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`events; and a flat, two-dimensional generic hippopotamus. A picture of the two-
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`dimensional depiction of a hippopotamus provided to Mr. Prochnow in 2005 is
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`attached as Exhibit 1.
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`18. Mr. Prochnow, utilizing his training and skill as an artist, agreed to
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`create his own expression of a hippopotamus for Mercedes to use in free,
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`promotional calendars. Mr. Prochnow proceeded to bring Henry to life, as he is
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`known today, in October of 2005.
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`19. As shown in Exhibit 2, Mr. Prochnow’s work is conspicuously
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`recognizable as a mischievous, smart, and sometimes athletic hippopotamus having
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`large round eyes, defined ears and nostrils, and other original expressions of
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`authorship created by Mr. Prochnow.
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`5
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 6 of 17 PageID 6
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`20.
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` Mr. Prochnow agreed to provide thirteen further illustrations
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`exclusively for use by Mercedes in its 2006 promotional calendar. The
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`engagement, an unsigned copy of which is attached as Exhibit 3, was limited to
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`Mr. Prochnow’s preparation of the thirteen representations of Henry for use in the
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`upcoming calendar, for which Mr. Prochnow was paid a nominal amount of
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`$1,350, an amount much less than is typical for the license of limited-use calendar
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`illustrations.
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`21. While the agreement in Exhibit 3 set out that Mercedes would have
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`“ownership to reuse [the] images in future marketing of the company,” Mr.
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`Prochnow retained certain exclusive rights in the work, including copyrights
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`precluding Mercedes’ use of the work outside the scope of the 2006 free calendars.
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`This was the only written agreement entered into by Mr. Prochnow prior to the
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`2010 royalty agreement outlined herein.
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`22. At the end of 2005, Mr. Prochnow proceeded to author the thirteen
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`original pictorial works for the calendar, each such work consisting of Mr.
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`Prochnow’s original expression of Henry.
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` Representative works of Mr.
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`Prochnow’s prepared for and included in the 2006 calendar are attached as Exhibit
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`4.
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`23.
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` For the next four years, until 2010, Mercedes continued to ask Mr.
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`Prochnow to create original pictorial works for its free, promotional calendars.
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`6
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 7 of 17 PageID 7
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`While Mr. Prochnow was paid a nominal fee during each of these years for
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`allowing Mercedes the right to use his copyrighted works in Mercedes’ free
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`calendars, Mr. Prochnow entered into no written agreements relating to the post-
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`2006 works, nor did he provide any assignment of his exclusive rights in the works
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`to Mercedes.
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`24. As part of the 2006 discussions regarding the payment from Mercedes
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`for the 2007 calendar illustrations, Mr. Prochnow provided Sara McKee
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`(Marketing Manager of Mercedes at that time) with a copy of the calendar pricing
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`page from the eleventh edition of the Graphic Artist Guilds Pricing and Ethical
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`Guidelines book as shown in Exhibit 5. The parties ultimately agreed on a rate that
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`confirmed the limited nature of Mercedes use of the images provided by Mr.
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`Prochnow.
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`25.
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` In 2010, Ms. McKee, in her capacity as the Marketing Manager of
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`Mercedes, acknowledged the prior limited use of Mr. Prochnow’s works only for
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`“free” Mercedes promotional materials and inquired about expanding Mercedes’
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`use of Mr. Prochnow’s Henry illustrations to items for sale in “[Mercedes’] new
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`catalog.” This inquiry is reflected in the e-mail at Exhibit 6.
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`26. On March 19, 2010, a written offer was sent to Mr. Prochnow via
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`electronic mail from Ms. McKee in which Mercedes offered to pay Mr. Prochnow
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`7
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 8 of 17 PageID 8
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`quarterly an eight percent (8%) royalty on sales of products sold using Henry’s
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`image. A copy of this offer is attached as Exhibit 7.
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`27.
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` Mr. Prochnow accepted
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`the offer and asked for a formal
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`memorialization of the agreement at least by March 26, 2010, as evidenced by
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`Exhibit 8.
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`28.
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` Sometime after Mr. Prochnow agreed that Mercedes could use his
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`works directly to sell Mercedes’ products (with payment), Ms. McKee left the
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`employ of Mercedes. Mr. Prochnow received no quarterly royalty payments,
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`leaving him to assume that Mercedes had chosen not to use his illustrations in
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`conjunction with the sale of its products.
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`29.
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` In September 2015, however, it was brought to Mr. Prochnow’s
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`attention that his works of authorship of Henry, which he believed to have been
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`long forgotten about at Mercedes, had actually been used, including derivatives
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`thereof, since 2010 in increasing frequency to specifically promote the sale of
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`Mercedes’ products.
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`30. This use of Mr. Prochnow’s works since 2010 has been without Mr.
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`Prochnow’s permission and/or payment of the agreed-upon quarterly royalty
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`payments. In addition, Mercedes has continued to create calendars with additional
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`Henry illustrations without Mr. Prochnow’s involvement and without any
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`remuneration to Mr. Prochnow.
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`8
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 9 of 17 PageID 9
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`31.
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` The full extent of Mercedes’ unauthorized use of Mr. Prochnow’s
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`works is unknown. However, Mercedes’ use of Henry to sell its products is
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`widespread. By way of example, an original illustration authored by Mr. Prochnow
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`in 2005 is included on the “About Us” page of Mercedes’ website, next to an
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`express statement that Henry “has been the fun face of Histology at Mercedes
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`Medical for close to 10 years,” during which time he has helped to “to sell and
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`promote [Mercedes’] products” by being featured on “calendars, catalogs, mugs,
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`and private-labeled products.” A copy of this website statement is shown in
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`Exhibit 9.
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`32. Further, on information and belief, a 2006 pictorial work of Mr.
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`Prochnow’s is being used without authority and/or remuneration directly on the
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`product labeling of Mercedes’ Freezespray products as shown in Exhibit 10. And
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`notwithstanding the use of the images directly on product packaging, Mercedes
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`expressly tied the sale of its commercial products to the identity of Mr. Prochnow’s
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`Henry illustrations, applying – without Mr. Prochnow’s knowledge – in July 2008
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`for a federal trademark registration containing one of Mr. Prochnow’s illustrations
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`as shown in Exhibit 11.
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`33. Accordingly, Mr. Prochnow’s works have been displayed, altered, and
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`published without remuneration to Mr. Prochnow. These illustrations by Mr.
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`Prochnow are original and creative works of authorship with copyrights therein
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`9
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 10 of 17 PageID 10
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`vested in Mr. Prochnow. The works are protected under United States’ copyright
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`law.
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`34.
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`In addition to the above, despite Mr. Prochnow’s exclusive rights in
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`his works, on information and belief, Mercedes has digitally altered Mr.
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`Prochnow’s original artwork into pieces and re-arranged these pieces into new and
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`unauthorized derivative works. In the process, Mercedes has adulterated and
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`resized Mr. Prochnow’s illustrations using elements from other artists and/or
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`photographs. Examples of these re-purposed images are shown in Exhibit 12.
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`Mercedes’ continued manipulation of Mr. Prochnow’s artwork has destroyed the
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`integrity of the original art and caused irreparable harm to Mr. Prochnow’s
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`reputation as an artist, whose success and reputation is based on the quality and
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`integrity of his artistic craftsmanship
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`35. On information and belief, Mercedes has hired other artists to create
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`derivative works based on Mr. Prochnow’s illustrations.
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` Mr. Prochnow
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`accordingly has lost wages and/or royalties based on the unauthorized use of Mr.
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`Prochnow’s original illustrations to create unauthorized derivative works to the
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`benefit of Mercedes and without compensation to Mr. Prochnow.
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`36. On
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`learning of Defendant’s unauthorized use of his Henry
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`illustrations, Mr. Prochnow contacted Mercedes in May 2016 and requested that
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`Mercedes identify and remit proper remuneration for the sale of Mercedes products
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`10
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 11 of 17 PageID 11
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`covered by the 2010 agreement. Mr. Prochnow further filed applications for
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`federal registrations on certain of the works, which applications remain pending.
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`37. Defendant refused discussions and continues to display the Henry
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`images and derivatives thereof in violation of Mr. Prochnow’s exclusive rights,
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`leaving Mr. Prochnow with no choice but to institute the current action.
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`COUNT I
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`COPYRIGHT INFRINGEMENT
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`38. Mr. Prochnow incorporates the proceeding allegations 1-37 as though
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`fully set forth herein.
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`39. Mr. Prochnow’s illustrations of Henry provided to Mercedes for
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`Mercedes’ limited use embody copyrightable expression and subject matter under
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`the copyright laws of the United States (herein “the Copyrighted Works”).
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`40. Mr. Prochnow is the owner of certain rights, titles, and interests in and
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`to the Copyrighted Works.
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`41. With full knowledge of Mr. Prochnow’s rights, Defendant Mercedes,
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`in violation of Mr. Prochnow’s exclusive rights under 17 U.S.C. §106, has
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`infringed and continues to infringe the Copyrighted Works by distributing,
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`displaying, and causing others to distribute and display, the Copyrighted Works
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`without Mr. Prochnow’s consent.
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`11
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 12 of 17 PageID 12
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`42. Defendant Mercedes engaged
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`in such
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`infringement with full
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`knowledge of Mr. Prochnow’s rights in the Copyrighted Works. Accordingly,
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`Defendant’s acts constitute knowing, willful, and/or deliberate infringement of the
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`Copyrighted Works. Each and every act of infringement is a separate, distinct, and
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`new act of infringement.
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`43. Mr. Prochnow is entitled to damages in an amount sufficient to
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`compensate him for the benefit received by Mercedes from Mercedes’ use of the
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`Copyrighted Works. The exact measure of damages suffered by Mr. Prochnow as
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`a consequence of Mercedes’ infringement are not presently known and will be
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`proven at trial.
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`44.
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`In addition, Mr. Prochnow cannot be fully compensated in damages
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`and will suffer irreparable harm if infringement of his copyrights in the works
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`continues, leaving him without an adequate remedy at law and requiring entry of
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`an injunction prohibiting further infringement by Mercedes.
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`COUNT II
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`BREACH OF CONTRACT
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`45. Mr. Prochnow incorporates the proceeding allegations 1-44 as though
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`fully set forth herein.
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`12
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 13 of 17 PageID 13
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`46. Mr. Prochnow entered into a written, valid, binding, and enforceable
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`agreement with Mercedes in 2010 concerning the use of his Henry illustrations in
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`the promotion and sale of Mercedes products.
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`47.
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`In exchange for the expanded use of Mr. Prochnow’s Henry
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`illustrations, Mercedes agreed to pay Mr. Prochnow quarterly a royalty of 8% of
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`sales on Mercedes’ products bearing Mr. Prochnow’s authorship of Henry’s image.
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`48. Mr. Prochnow performed all obligations and duties required in
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`performance of the contract.
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`49. Defendant Mercedes materially and wholly breached the contract
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`when it failed to provide remuneration to Mr. Prochnow for use of the Henry
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`illustrations on its website, product packaging, catalogs and other advertising to
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`directly promote and sell Mercedes’ histology-related products.
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`50. Mr. Prochnow suffered and continues to suffer damages as a direct
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`and proximate result of Mercedes’ breach.
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`51. Mr. Prochnow is entitled to damages in an amount sufficient to
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`compensate him for Mercedes’ breach of contract. The exact measure of damages
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`suffered by Mr. Prochnow as a consequence of Mercedes’ breach are not presently
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`known and will be proven at trial.
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`13
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 14 of 17 PageID 14
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`COUNT III
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`UNJUST ENRICHMENT
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`52. Mr. Prochnow incorporates the proceeding allegations 1-51 as though
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`fully set forth herein.
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`53. Mercedes has received a benefit from the use of Mr. Prochnow’s
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`original Henry illustrations on its website, product packaging, catalogs, and other
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`advertising to promote and sell Mercedes’ histology-related products without
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`compensation to Mr. Prochnow. Mercedes appreciated this benefit and continues to
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`enjoy the benefits of using Mr. Prochnow’s original illustrations.
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`54. Mercedes’ acceptance and retention of these benefits would be
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`inequitable without fair remuneration to Mr. Prochnow, for Mercedes’ use and
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`benefit of the Henry illustrations.
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`55. Mr. Prochnow has been damaged and continues to be damaged by
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`Mercedes’ acts and omissions which have resulted in unjust enrichment to
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`Mercedes. Mr. Prochnow is entitled to damages in an amount sufficient to
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`compensate him for Mercedes’ unjust enrichment.
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`56. The exact measure of damages suffered by Mr. Prochnow as a
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`consequence of Mercedes’ unjust enrichment are not presently known and will be
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`proven at trial.
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`14
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 15 of 17 PageID 15
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`57. As set forth above, Mr. Prochnow has no adequate remedy at law for
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`Mercedes' continuing actions that led to its unjust enrichment and will suffer
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`irreparable harm as a consequence of Mercedes’ continued use of his original
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`Henry illustrations, leaving him without an adequate remedy at law and requiring
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`entry of an injunction prohibiting further use by Mercedes of the works.
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`PRAYER FOR RELIEF
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`WHEREFORE, Mr. Prochnow respectfully requests that the Court enter
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`judgment:
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`a.
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`That Defendant Mercedes be permanently enjoined and restrained
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`from copying, displaying, duplicating, disseminating, distributing, or otherwise
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`using and infringing the copyrights in the Copyrighted Works;
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`b.
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`That Defendant be ordered to file, within 30 days of issuance of the
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`injunction, a sworn report setting forth in detail the manner in which Mercedes has
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`complied with the injunction;
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`c.
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`That Defendant be required to pay Mr. Prochnow such actual damages
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`as Mr. Prochnow has sustained as a result of the copyright infringement and/or
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`breach of contract;
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`d.
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`That Defendant be required to account for and pay to Mr. Prochnow
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`all gains, profits earned, and advantages derived from Mercedes’ infringement of
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`15
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 16 of 17 PageID 16
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`Mr. Prochnow’s Copyrighted Works, including, without limitation, all gains,
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`profits earned, and advantages realized by Mercedes;
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`e.
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`That Defendant be required to disgorge all profits, direct and indirect,
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`earned from Mercedes’ acts of copyright infringement complained of including,
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`without limitation, all gains, profits earned, and advantages realized by Mercedes
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`following use of the Copyrighted Works;
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`f.
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`That Defendant be required to pay Mr. Prochnow such damages as
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`Mr. Prochnow has sustained as a result of Mercedes’ breach of contract;
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`g.
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`That Defendant be required to pay Mr. Prochnow such damages as
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`Mr. Prochnow has sustained as a result of Mercedes’ unjust enrichment;
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`h.
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`That pursuant to 17 U.S.C. §505, Defendant be required to pay Mr.
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`Prochnow’s full costs in this action and reasonable attorney’s fees;
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`i.
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`That Defendant Mercedes be required to pay punitive damages to Mr.
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`Prochnow; and
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`j.
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`That the Court award such other and further relief as it deems just and
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`appropriate.
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`JURY DEMAND
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`Plaintiff Caleb Prochnow respectfully requests a trial by jury on all issues
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`triable by a jury in this case.
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`16
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`Case 8:16-cv-03095-CEH-AAS Document 1 Filed 11/02/16 Page 17 of 17 PageID 17
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`Dated: November 2, 2016.
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`Respectfully submitted,
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` ______
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`/s/ Janelle A. Weber
`Janelle A. Weber
`Florida Bar No. 017630
`SHUTTS & BOWEN LLP
`4301 West Boy Scout Boulevard, Suite 300
`Tampa, FL 33607
`Telephone: (813) 229-8900
`Facsimile: (813) 229-8901
`Email: jweber@shutts.com
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`and
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`David S. Moreland
`(Trial Counsel seeking pro hac vice admission)
`Georgia. Bar No. 521998
`MEUNIER CARLIN & CURFMAN, LLC
`817 W. Peachtree Street, NW, Suite 500
`Atlanta, Georgia 30308
`Telephone: (404) 645-7700
`Facsimile: (404) 645-7707
`Email: dmoreland@mcciplaw.com
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` talley@mcciplaw.com
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`Counsel for Plaintiff Caleb Prochnow
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