Zorro Productions, Inc v. Mars, Inc. et al

Filing 27

Defendants' ANSWER to Complaint byBBDO Worldwide, Inc.,, Mars, Inc.. (Holland, Christopher) (Filed on 6/21/2010)

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

Christopher T. Holland KRIEG KELLER SLOAN REILLEY & ROMAN LLP 555 Montgomery Street, 17th Floor San Francisco, California 94111 [phone] (T) [phone] (F) [e-mail] Attorneys for Defendants Mars, Inc. and BBDO Worldwide, Inc.

UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF CALIFORNIA ZORRO PRODUCTIONS, INC., a California Corporation, v. Plaintiff, No. C10-01179-SC DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES TO PLAINTIFF'S COMPLAINT

MARS, INC., a Delaware corporation; and BBDO WORLDWIDE, INC., a New York corporation, Defendants.

Defendants Mars, Inc. ("Mars") and BBDO Worldwide, Inc. ("BBDO") (collectively "Defendants"), as and for their answer (the "Answer") to plaintiff Zorro Productions, Inc.'s ("Zorro" or "Plaintiff") Complaint (the "Complaint"), hereby state as follows:1 JURISDICTION 1. Paragraph 1 of the Complaint contains legal conclusions, to which no

response should be required. To the extent that the Court determines any response is required, however, Defendants admit that Plaintiff purports to bring this action in this Court pursuant to the cited statues but deny the validity of the underlying claims set forth in the

1

The various headings that appear throughout the Complaint require no answer. To the extent said headings require an answer, Defendants deny any allegations contained therein.

DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 1

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

Complaint, and otherwise deny each and every allegation contained in paragraph 1 of the Complaint. INTRADISTRICT ASSIGNMENT 2. Paragraph 2 of the Complaint contains legal conclusions, to which no

response is required. To the extent that the Court determines any response is required, however, Defendants admit that Plaintiff purports to bring this action in this Court pursuant to the cited rule and admit that Defendants transact business and purposefully avail themselves of the benefits of being in this judicial district, but lack knowledge or information sufficient to form a belief as to the allegation that a substantial part of the property that is the subject of the action is situated in Alameda county and therefore deny same. Defendants deny the validity of the underlying claims set forth in the Complaint, and otherwise deny each and every allegation contained in paragraph 2 of the Complaint. VENUE 3. Paragraph 3 of the Complaint contains legal conclusions, to which no

response should be required. To the extent that the Court determines any response is required, however, Defendants admit that Plaintiff purports to bring this action in this Court pursuant to the cited statute but deny that a substantial part of the events giving rise to the putative causes of action occurred in Alameda County, and lack knowledge or information sufficient to form a belief as to the allegation that a substantial part of the property that is the subject of the action is situated in Alameda county and therefore deny same. Defendants deny the validity of the underlying claims set forth in the Complaint, and otherwise deny each and every allegation contained in paragraph 3 of the Complaint. PARTIES 4. Defendants Lack knowledge or information sufficient to form a

belief as to the allegations contained in paragraph 4 of the Complaint, and therefore deny same. 5. Complaint.
DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 2

Defendants admit the allegations contained in paragraph 5 of the

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Complaint. Complaint.

6.

Defendants admit the allegations contained in paragraph 6 of the

7.

Paragraph 7 of the Complaint contains no allegations of fact

requiring a response from defendants. To the extent that the Court determines any response is required, however, Defendants each and every factual allegation contained in paragraph 7 of the Complaint. 8. Defendants deny the allegations contained in Paragraph 8 of the FIRST CAUSE OF ACTION Violation of the Lanham Act §43 (a) (By ZPI Against All Defendants) 9. Defendants repeat, reallege and incorporate by reference their various

responses in paragraphs 1 through 8 of this Answer as if set forth more fully herein. 10. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 10 of the Complaint, and therefore deny same. 11. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 11 of the Complaint, and therefore deny same. 12. of the Complaint. 13. of the Complaint. 14. of the Complaint. 15. of the Complaint. 16. of the Complaint. SECOND CAUSE OF ACTION Violation of the Lanham Act § 32
DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 3

Defendants deny each and every allegation contained in paragraph 12

Defendants deny each and every allegation contained in paragraph 13

Defendants deny each and every allegation contained in paragraph 14

Defendants deny each and every allegation contained in paragraph 15

Defendants deny each and every allegation contained in paragraph 16

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 26. 17.

(Against All Defendants) Defendants repeat, reallege and incorporate by reference their various

responses in paragraphs 1 through 16 of this Answer as if set forth more fully herein. 18. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 18 of the Complaint, and therefore deny same. 19. Paragraph 19 of the Complaint contains legal conclusions, to which

no response should be required. To the extent that the Court determines any response is required, however, Defendants lack knowledge or information sufficient to form a belief as to the allegations contained in paragraph 19, and therefore deny same. 20. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 20, and therefore deny same. 21. Paragraph 21 of the Complaint refers to a certain television

commercial, the content of which speaks for itself. Defendants respectfully refer the Court to that commercial for the content thereof. Defendants otherwise deny each and every allegation contained in Paragraph 21 of the Complaint. 22. of the Complaint. 23. of the Complaint. 24. of the Complaint. 25. of the Complaint. THIRD CAUSE OF ACTION Dilution Under Lanham Act § 43(c) (Against All Defendants) Defendants repeat, reallege and incorporate by reference their various Defendants deny each and every allegation contained in Paragraph 25 Defendants deny each and every allegation contained in Paragraph 24 Defendants deny each and every allegation contained in Paragraph 23 Defendants deny each and every allegation contained in Paragraph 22

responses in paragraphs 1 through 25 of this Answer as if set forth more fully herein.
DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 4

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

27.

Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 27 of the Complaint, and therefore deny same. 28. of the Complaint. 29. of the Complaint. 30. of the Complaint. 31. of the Complaint. 32. Complaint. FOURTH CAUSE OF ACTION Common Law Unfair Competition Under California Law (Against All Defendants) 33. Defendants repeat, reallege and incorporate by reference their various Defendants deny the allegations contained in Paragraph 32 of the Defendants deny each and every allegation contained in Paragraph 31 Defendants deny each and every allegation contained in Paragraph 30 Defendants deny each and every allegation contained in Paragraph 29 Defendants deny each and every allegation contained in Paragraph 28

responses in paragraphs 1 through 32 of this Answer as if set forth more fully herein. 34. Paragraph 34 of the Complaint contains legal conclusions, to which

no response should be required. To the extent that the Court determines any response is required, however, Defendants admit that Plaintiff purports to bring this action in this Court pursuant to the cited statutes, but deny the validity of the underlying claims set forth in the Complaint, and otherwise deny each and every allegation contained in paragraph 34 of the Complaint. 35. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 35 of the Complaint, and therefore deny same. 36. of the Complaint. Defendants deny each and every allegation contained in Paragraph 36

DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 5

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

37. of the Complaint. 38. of the Complaint. 39. of the Complaint. 40. of the Complaint.

Defendants deny each and every allegation contained in Paragraph 37

Defendants deny each and every allegation contained in Paragraph 38

Defendants deny each and every allegation contained in Paragraph 39

Defendants deny each and every allegation contained in Paragraph 40

FIFTH CAUSE OF ACTION Violation of California Business and Professions Code §§ 14245, 14247 and 17200, et seq. (Against All Defendants) 41. Defendants repeat, reallege and incorporate by reference their various

responses in paragraphs 1 through 40 of this Answer as if set forth more fully herein. 42. Paragraph 42 of the Complaint contains legal conclusions, to which

no response should required. To the extent that the Court determines that any response is required, however, Defendants admit that Plaintiff purports to bring this action in this Court pursuant to the cited statues but deny the validity of the underlying claims set forth in the Complaint, and otherwise deny each and every allegation contained in paragraph 42 of the Complaint. 43. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 43 of the Complaint, and therefore deny same. 44. Defendants lack knowledge or information sufficient to form a belief

as to the allegations contained in paragraph 44 of the Complaint, and therefore deny same. 45. of the Complaint. 46. of the Complaint. Defendants deny each and every allegation contained in Paragraph 46 Defendants deny each and every allegation contained in Paragraph 45

DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 6

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

47. of the Complaint. 48. of the Complaint. 49. of the Complaint. 50. of the Complaint. 51. of the Complaint.

Defendants deny each and every allegation contained in Paragraph 47

Defendants deny each and every allegation contained in Paragraph 48

Defendants deny each and every allegation contained in Paragraph 49

Defendants deny each and every allegation contained in Paragraph 50

Defendants deny each and every allegation contained in Paragraph 51

AFFIRMATIVE DEFENSES As further, separate and affirmative defenses, without assuming the burden of proof of any such defense that rests with Plaintiff, Defendants state as follows: FIRST AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because the Complaint fails to state a claim upon which relief may be granted. SECOND AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, by the doctrine of fair use. THIRD AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, by the doctrine of nominative use. FOURTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because Defendants have not used Plaintiff's mark as an identifier of the affiliation, connection, or association of
DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 7

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

Plaintiff with Defendants' goods, or as to the origin, sponsorship, or approval of Defendants' goods, services, or commercial activities. FIFTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because Defendants have not used Plaintiff's mark in a manner that misrepresents the nature, characteristics, qualities, or geographic origin of either Plaintiff's or Defendants' goods, services, or commercial activities. SIXTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because Defendants' alleged use of Plaintiff's mark has caused no confusion among the public, and is not likely to cause such confusion. SEVENTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part Plaintiff has not suffered any irreparable injury. EIGHTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because Plaintiff has suffered no damages as a result of any matters alleged in the Complaint. NINTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because the goods and services of Plaintiff and Defendants are noncompetitive and unrelated.

DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 8

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26

TENTH AFFIRMATIVE DEFENSE Plaintiff's claims are barred, in whole or in part, because any alleged use by Defendants of any mark has created no likelihood that any distinctive quality or goodwill of Plaintiff's marks will be diluted or that Plaintiff's reputation or goodwill will be injured. ELEVENTH AFFIRMATIVE DEFENSE Plaintiff's damages, if any, are remote, uncertain, speculative and without basis in law or in fact. TWELFTH AFFIRMATIVE DEFENSE Plaintiff's claim for disgorgement of Defendants' alleged profits is barred because Defendants' alleged use of any mark, if proven, was not willfully deceptive, but was instead made in good faith. THIRTEENTH AFFIRMATIVE DEFENSE Plaintiff is not entitled to attorneys' fees pursuant to any applicable laws because Defendants' use of any mark, if proven, was in good faith.

Defendants reserve the right to amend this Answer to raise and rely upon any defenses that become available or apparent during discovery.

DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 9

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26
DEFENDANTS' ANSWER AND AFFIRMATIVE DEFENSES NO. C10-01179-SC ­ Page 10

PRAYER FOR RELIEF WHEREFORE, Defendants respectfully request and pray as follows: 1. 2. That Plaintiff take nothing by reason of the Complaint; That judgment be entered against Plaintiff and in favor of

Defendants, dismissing this action with prejudice; and 3. proper. Dated this June 21, 2010 That the Court grant such other and further relief as it deems just and

KRIEG KELLER SLOAN REILLEY & ROMAN LLP ______________/s/________________ By: Christopher T. Holland 555 Montgomery Street, 17th Floor San Francisco, California 94111 [phone] (T) [phone] (F) [e-mail] Attorneys for Defendants Mars, Inc. and BBDO Worldwide, Inc.