Silvers v. Google, Inc.

Filing 49

AMENDED CROSSCLAIM against Steven A. Silvers [14-1] cross claim (Former Deputy Clerk)

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Silvers v. Google, Inc. Doc. 49 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 1 of 71 Nov 14 2005 UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA CASE NO. 05-80387 CIV RYSKAMP/VITUNAC STEVEN A. SILVERS, an individual, Plaintiff, v. GOOGLE INC., a Delaware corporation, Defendant. _______________________________________/ GOOGLE INC., a Delaware corporation Counterclaimant, v. STEVEN A. SILVERS, an individual; STELOR PRODUCTIONS, INC., a Delaware Corporation; STELOR PRODUCTIONS, LLC, a Delaware limited liability company; and STEVEN ESRIG, an individual, Counterdefendants. ________________________________________/ STELOR DEFENDANTS' ANSWER, AFFIRMATIVE DEFENSES, COUNTERCLAIM AGAINST GOOGLE INC, AND AMENDED CROSS-CLAIM AGAINST SILVERS ANSWER STELOR PRODUCTIONS, LLC, f/k/a STELOR PRODUCTIONS, INC. ("Stelor")1 and Steven Esrig, by and through their undersigned attorneys, hereby answer Google Inc.'s 1 Stelor Productions, LLC is the successor to Stelor Productions, Inc. Accordingly, the two are referred to collectively as "Stelor". 1 of 71 Dockets.Just49pa ia.com Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 2 of 71 ("Google") Counterclaim2 as follows: 1. 2. 3. 4. 5. 6. Denied, except to admit that claims are pending against Google. Denied. Denied, except to admit that Google operates an internet search engine. Admitted. Denied, except to admit that Mr. Esrig resides in Maryland. Denied, and further alleged that Stelor Productions, Inc. has been converted to a limited liability company, Stelor Productions, LLC. 7. 8. 9. 10. 11. Admitted. Denied, except to admit that Stelor has rights in the marks. Denied, except to admit that Stelor had and retains rights to enforce the marks. Denied, except to admit that litigation was pending between Stelor and Silvers. Denied, except to admit that Silvers filed this action and that proceedings were brought before the TTAB. 12. 13. 14. 15. 16. 17. 18. 2 Denied, except to admit that Google seeks relief, to which it is not entitled. Denied, except to admit that Google operates a website and search engine. Denied. Denied, except to admit that Exhibit "A" speaks for itself. Denied, except to admit that Exhibit "B" speaks for itself. Denied, except to admit that Exhibit "C" speaks for itself. Denied, except to admit that Exhibit "D" speaks for itself. Although styled a "Counterclaim" as to Stelor and Esrig, Google has effectively brought a Third-Party Complaint against these previously-unjoined parties. 2 2 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 3 of 71 19. 20. 21. 22. 23. 24. 25. 26. 27. Without knowledge and therefore denied. Without knowledge and therefore denied. Admitted. Admitted Denied. Denied, except to admit that Exhibit "G" speaks for itself. Denied. Admitted. Denied, except to admit that Silvers executed an assignment and that Exhibit "H" speaks for itself. 28. 29. 30. for itself. 31. 32. 33. 34. 35. 36. 37. Denied, except to admit that Exhibit "I" speaks for itself. Denied, except to admit that Exhibit "I" speaks for itself. Without knowledge and therefore denied. Without knowledge and therefore denied. Denied. Denied. Without knowledge and therefore denied. Without knowledge and therefore denied.. Denied, except to admit that paragraph 46 of Silvers' Complaint speaks for itself. Without knowledge and therefore denied, except to admit that Exhibit "I" speaks 3 3 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 4 of 71 38. Without knowledge and therefore denied, except to admit that the PTO record speaks for itself. 39. 40. 41. 42. 43. 44. 45. 46. 47. 48. 49. 50. 51. 52. Without knowledge and therefore denied. Denied. Without knowledge and therefore denied. Denied. Denied. Denied. Denied. Denied, except to admit that Exhibit "J" speaks for itself. Denied, except to admit that Exhibit "K" speaks for itself. Denied, except to admit that Exhibit "K" speaks for itself. Denied, except to admit that Exhibit "K" speaks for itself. Denied, except to admit that the PTO record speaks for itself. Admitted. Denied, except to admit that documents were filed before the TTAB, which speak for themselves. 53. 54. itself. 55. 56. Denied. Denied. 4 Denied, except to admit that a press release was issued, which speaks for itself. Denied, except to admit that a UDRP Complaint was filed, which speaks for 4 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 5 of 71 57. 58. 59. 60. 61. 62. 63. 64. 65. 66. 67. 68. 69. 70. 71. 72. 73. 74. 75. 76. 77. 78. Denied. The responses to paragraphs 1-57 above are restated and incorporated. Denied, except to admit that a controversy exists. Denied. Denied. Denied. Denied. Denied. Denied as to Esrig and Stelor. Denied. Denied. Denied, Denied, except to admit that a controversy exists. The responses to paragraphs 1-57 above are restated and incorporated. Denied. Denied. Denied. Denied. Denied. Denied. The responses to paragraphs 1-57 above are restated and incorporated. Denied. 5 5 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 6 of 71 79. 80. 81. 82. 83. 84. 85. 86. 87. 88. 89. 90. 91. 92. demanded. Denied. Denied. Denied. The responses to paragraphs 1-57 above are restated and incorporated. Denied. Denied. Denied. Denied. Denied. Denied. Denied. Denied. Denied, along with all allegations in the WHEREFORE clause. All allegations not expressly admitted are hereby denied, and strict proof is AFFIRMATIVE DEFENSES For their affirmative Defenses, Esrig and Stelor allege as follows: 1. 2. 3. 4. 5. Google fails to state a claim for relief against Esrig or Stelor. Google lacks standing to bring its claims. Google's claims are barred by the doctrines of waiver and estoppel. Google's claims are barred by the doctrine of laches. Google has unclean hands. 6 6 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 7 of 71 6. Google's trademark registration for the Google mark was obtained fraudulently and must be cancelled. Accordingly, Google's claims are barred. 7. Google's claims are barred by the applicable statute of limitation and the doctrine of acquiescence. 8. The injuries and expenses of which Google complains were caused in whole or in part by the acts and omissions of others for whose conduct Stelor and Esrig are not responsible. 9. Stelor and Esrig reserve the right to add additional affirmative defenses as discovery proceeds in this action. WHEREFORE, Stelor and Esrig request that the counterclaim be dismissed with prejudice. STELOR'S COUNTERCLAIM3 AGAINST GOOGLE AND AMENDED CROSS-CLAIM AGAINST SILVERS Stelor, hereby sues Google, Inc. and Steven A. Silvers, and alleges as follows: JURISDICTION 1. 2. Silvers is an individual domiciled in Palm Beach County, Florida. Stelor is a limited liability company organized and existing under the laws of the State of Delaware, and having its principal place of business in Darnestown, Maryland. 3. Google is a Delaware corporation with its principal place of business at Mountain View, California. 4. This is an action for trademark infringement and unfair competition arising under the Lanham Act, 15 U.S.C. 1051-1127, and for related claims arising under the common law of the State of Florida. 3 This pleading is styled a "Counterclaim", as a claim against a third-party plaintiff, Google. 7 7 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 8 of 71 5. This Court has subject matter jurisdiction pursuant to 15 U.S.C. § 1121 (Lanham Act), 28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338 (trademark and unfair competition), and the principles of supplemental jurisdiction pursuant to 28 U.S.C. § 1367. This Court also has jurisdiction under the Declaratory Judgment Act, 28 U.S.C. § 2201. 6. Venue is proper in this judicial district pursuant to 28 U.S.C. Sections 1391. GENERAL ALLEGATIONS 7. Stelor and its predecessors are the senior users of the mark "Googles" which they have used as a trademark for over twenty years in connection with goods and services directed to children's education and entertainment. The trademark ­ GOOGLES AND DESIGN ­ was registered bearing number 2,087,590 on August 12, 1997. 8. Stelor and its predecessors are also the senior users of the Internet domain name "googles.com" which they have used since 1997 for the "Googles" Website, www.googles.com. 9. Stelor has an exclusive worldwide license covering the Googles trademarks, as well as related intellectual property, including the "Googles" Website. 10. Stelor's rights are memorialized in a written "License, Distribution and Manufacturing Agreement" ("License Agreement") (a true and correct copy of which is attached hereto as Exhibit "A"). That Agreement grants to Stelor "the exclusive (even as to LICENSOR), worldwide, sub licensable right and license" with respect to all of the "Googles" intellectual property and trademarks. Agreement ¶ 1(A). The Agreement also expressly grants to Stelor "all right, power and interest to seek, obtain and maintain all Intellectual Property Rights associated with the Licensed Intellectual Property and Licensed Trademarks", as well as "an irrevocable power of attorney to act for and on LICENSOR's behalf". Agreement ¶ VIII(A). Article IX of 8 8 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 9 of 71 the Agreement titled "INFRINGEMENTS", gives Stelor "the sole right, in its discretion and at its expense, to take any and all actions against third persons to protect the Intellectual Property Rights licensed in this Agreement." 11. Stelor's rights pursuant to the License Agreement were reaffirmed pursuant to a Confidential Settlement Agreement ("Settlement Agreement") dated January 18, 2005, which resolved certain pending litigation between the parties. A true and correct copy of the Settlement Agreement is attached as Exhibit "B". (Although it is required to be filed under seal, Silvers previously breached that obligation and filed the Agreement as part of the public record). 12. 13. The License Agreement and Settlement Agreement remain in full force and effect. Accordingly, Stelor, not Silvers, has the right and responsibility to pursue all Googles trademark and other intellectual property matters (Ex. "A" at ¶ VIIIA), including the present claims for trademark infringement against Google. GOOGLE, INC.'S INFRINGEMENT 14. Defendant Google, Inc. ("Google" or "Defendant") owns and operates the very well known Internet search engine "Google". The name "Google" was adopted in or about 1998, which postdates Silvers' prior use and registration of the "Googles" mark, and "googles.com" domain name and Website. 15. Google's "Google" mark, and its efforts to expand that mark into areas of commerce including the market for children's goods and services, is interfering with the "Googles" mark, of which Stelor is the exclusive licensee. 16. Stelor has filed this action to protect its rights to use the "Googles" mark on the Internet in connection with children's goods and services, and to enjoin Google from using the 9 9 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 10 of 71 "Google" mark in connection with the advertising, promoting, marketing and sale of children's goods and services. Stelor also seeks damages. SILVERS' WRONGFUL TERMINATION AND OTHER MISCONDUCT 17. Although Silvers has purported to terminate the License and Settlement Agreements, the termination is improper and ineffective. The Agreements remain in full force and effect, and the right to pursue this action against Google Inc. for trademark infringement belongs to Stelor. 18. Thus, by letter dated April 27, 2005, Silvers through counsel claimed that the License Agreement and Settlement Agreement were terminated. A true and correct copy of the April 27th Letter is attached hereto as Exhibit "C". Although the License Agreement expressly provides for 60 days' notice and opportunity to cure any alleged breaches as an express precondition for any right of termination (Ex. "A" at ¶ IX), Silvers provided no such notice or opportunity to cure. 19. Counsel for Stelor responded by letter dated April 29, 2005, refuting the specious grounds cited by Silvers for termination, and offering to cure any conceivable breaches (even though none existed). A true and correct copy of the April 29th letter is attached hereto as Exhibit "D". 20. On May 2, 2005, Silvers' counsel responded by letter, reiterating his wrongful renunciation of the Agreements and stating that Silvers "intends to go in a different direction to develop his characters and intellectual property". A true and correct copy of the May 2nd letter (which is erroneously dated "2004") is attached hereto as Exhibit "E". 10 10 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 11 of 71 21. as licensee. Even before the letter was sent, Silvers had begun to interfere with Stelor's rights Thus, in clear violation of the Agreements, Silvers had changed 78 different Googles domain names from Stelor's control to Silvers' control and improperly excluded Stelor from being the administrative contact with the domain name registrar. 22. Due to Silvers' actions in violation of the Agreements, Stelor is currently unable to reassert control over the domain names that it has licensed, a true and correct list of which is attached hereto as Exhibit "F". 23. Silvers' actions have continued to harm Stelor, and improperly deprive Stelor of the use and benefit of the intellectual property to which Stelor is clearly entitled pursuant to the Agreements. 24. Silvers has also violated the agreements by pursuing the present action against Google ­ a right that belongs exclusively to Stelor pursuant to the Agreements. 25. In addition, Silvers has threatened to sue Stelor for trademark infringement, while Stelor continues to conduct its business as best it can. Thus, by letter dated July 27, 2005, Silvers through counsel has claimed that Stelor's use of the Googles trademarks was unauthorized and demanded that Stelor "eliminate all reference to the Googles name and `goo' related words." Silvers further advised that it would "file an action for trademark infringement" unless Stelor complied. A true and correct copy of the July 27th letter is attached hereto as Exhibit "G". 26. Notwithstanding Silvers' breaches and misconduct, Stelor has continued to perform all of its obligations pursuant to the Agreements, including tendering payment to Silvers of all amounts when due under the Agreements. Silvers has refused to accept those payments, 11 11 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 12 of 71 and has returned all of the checks Stelor has tendered. Silvers has also attempted to interfere with the other actions Stelor has continued to take ­ at substantial expense ­ to protect and enforce the intellectual property rights under the License Agreement. 27. All conditions precedent to the bringing of this action have been satisfied, performed, excused or waived. 28. Stelor has retained undersigned counsel to prosecute this action and is obligated to them for reasonable attorney's fees and costs in connection therewith. COUNT ONE (Declaratory Judgment Against Silvers) Stelor re-alleges and incorporates by reference the allegations of paragraphs 1 through 28, inclusive, as though fully set forth herein. 29. This is a claim for declaratory judgment under the Declaratory Judgment Act, 28 U.S.C. § 2201. Specifically, Stelor seeks a declaration that a. its continued use of the Googles trademarks does not infringe Silvers' rights in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a), does not constitute unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), and does not infringe Silvers' common law rights; and b. That Silvers' purported termination of the License and Settlement Agreements is wrongful and invalid, and thus, the Agreements remain in full force and effect. 30. Silvers has threatened to bring a trademark infringement action against Stelor. See July 27, 2005 letter from Silvers' counsel, Exhibit "G" hereto. 31. Stelor believes that Silvers' claim is unfounded, and that Stelor has continuing rights to use the Googles trademarks. 12 12 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 13 of 71 32. Silvers' conduct, however, has created a real and reasonable apprehension of liability on the part of Stelor. 33. Silvers. 34. Stelor is in doubt about its rights and Silvers' rights regarding the trademarks, and Stelor's continued use of the trademarks has created an adversarial conflict with requests entry of declaratory relief by the Court. 35. Silvers also claims that Stelor has breached the Settlement Agreement and that the License Agreement is terminated. As detailed above, Silvers has taken actions in violation of his obligations and undertakings pursuant to the Agreements, in apparent reliance upon his purported termination of the License Agreement. 36. Stelor believes that the Settlement Agreement and the License Agreement are valid and effective contractual commitments that continue to bind the parties. Stelor further contends that Silvers' actions violate the terms of the Settlement Agreement and the License Agreement and threaten the business of Stelor. 37. Stelor additionally has ongoing obligations (including financial) under the Settlement Agreement that it has continued to meet, but which are not required if the License Agreement has been terminated. Stelor has continued to perform all of its obligations pursuant to the Agreements, including tendering payment to Silvers of all amounts when due under the Agreements. Silvers has wrongly refused to accept those payments, and has returned all of the checks Stelor has tendered. 13 13 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 14 of 71 38. Accordingly, Stelor is in doubt about its rights and Silvers' rights under the License Agreement and the Settlement Agreement, and requests entry of declaratory relief by the Court. WHEREFORE, Stelor requests that this Court provide relief against these acts of Silvers as set forth in the WHEREFORE clause below. COUNT TWO (Trademark Infringement under 15 U.S.C. § 1114 against Google Inc.) Stelor realleges and incorporates by reference the allegations of paragraphs 1 through 28, inclusive, as though fully set forth. 39. Stelor and its predecessors are the senior users of the mark "Googles" for use in connection with children's books, merchandise, music, toys, and related goods and services. Since 1997, Stelor and its predecessors have used the Internet to market and promote the "Googles" mark. 40. 41. Stelor has the sole right to bring this action against Google, as set forth above. With knowledge of the superior and exclusive rights of Stelor and its predecessors in the "Googles" mark, the "googles.com" domain name, and Website, Google adopted the mark "Google" (which is the singular version of and almost identical to the "Googles" mark), and Google has used that mark extensively in connection with goods and services offered to consumers through the Internet. 42. With knowledge of the superior rights of Stelor and its predecessors in the "Googles" mark, "googles.com" domain name, and Website, Google registered the domain name "google.com" and has used that domain name extensively in connection with its Internet-based services. 14 14 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 15 of 71 43. Google's use of the name "Google," which is substantially identical to the "Googles" mark, has caused and will continue to cause "reverse confusion" in that the consuming public will now wrongly believe that Stelor's goods and services, "googles.com" domain name, and Website are connected, affiliated, associated, sponsored, endorsed or approved by Google, and that Google is the source of origin of the "Googles" concept, books, music, "googles.com" domain name, Website, merchandise, and related goods and services, in violation of 15 U.S.C. 1114. 44. Google's infringing use of the "Google" name and "google.com" domain name for Internet-based services is diminishing the identity and value of Stelor's "Googles" mark, "googles.com" domain name, and Website, and is preventing Stelor from flourishing on the Web, or expanding its goods and services at the "googles.com" Website, and otherwise causing Stelor harm. 45. As a direct and proximate result of Google's unauthorized acts, Stelor has suffered and will continue to suffer irreparable harm for which there is no adequate remedy at law. Unless restrained, Google's conduct as described above, will continue to cause confusion and will continue to injure the value of Stelor's "Googles" mark, domain name, and Website, causing substantial harm and damage to Stelor. 46. As a direct and proximate result of Google's wrongful conduct, Stelor has also suffered and will continue to suffer monetary damages from the "reverse confusion" caused by Google. WHEREFORE, Stelor requests that this Court provide relief against these acts of Google as set forth in the Wherefore clause below. 15 15 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 16 of 71 COUNT THREE (Unfair Competition under 15 U.S.C. § 1125 (a) against Google Inc.) Stelor realleges and incorporate by reference the allegations of paragraphs 1 through 28, inclusive, as though fully set forth. 47. Stelor and its predecessors are the senior users of the mark "Googles" for use in connection with children's books, merchandise, music, toys and related goods and services. Since 1997, Stelor and its predecessors have used the Internet to market and promote the "Googles" mark. 48. 49. Stelor has the sole right to bring this action against Google, as set forth above. With knowledge of the superior and exclusive rights of Stelor and its predecessors in the "Googles" mark the "googles.com" domain name, and Website, Google adopted the mark "Google" (which is the singular version of and almost identical to the "Googles" mark), and Google has used that mark extensively in connection with goods and services offered to consumers through the Internet. 50. With knowledge of the superior rights of Stelor and its predecessors in the "Googles" mark, "googles.com" domain name, and Website, Google registered the domain name "google.com" and has used that domain name extensively in connection with its Internet-based services. 51. Google's unauthorized use of the name "Google," which is substantially identical to Stelor's "googles" mark, has caused and will continue to cause "reverse confusion" in that the consuming public will now wrongly believe that Stelor's goods and services, "googles.com" domain name, and Website are connected, affiliated, associated, sponsored, endorsed or approved by Google, and that Google is the source of origin of the "Googles" concept, books, 16 16 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 17 of 71 music, "googles.com" domain name, Website, merchandise, and related goods and services, in violation of 15 U.S.C.' 1125 (a). 52. Google's use of the "Google" name and "google.com" domain name for Internet- based services is diminishing the identity and value of Stelor's "Googles" mark, "googles.com" domain name, and Website, and is preventing Stelor from flourishing on the Web, or expanding its goods and services at the "googles.com" Website, and otherwise causing Stelor substantial harm. 53. As a direct and proximate result of Google's acts, Stelor has suffered and will continue to suffer irreparable harm for which there is no adequate remedy at law. Unless restrained, Google's conduct as described above, will continue to cause confusion and will continue to injure the value of Stelor's "Googles" mark, domain name, and Website, causing substantial harm and damage to Stelor. 54. As a direct and proximate result of Google's wrongful conduct, Stelor has also suffered and will continue to suffer monetary damages from the "reverse confusion" caused by Google. WHEREFORE, Stelor requests that this Court provide relief against these acts of Google as set forth in the Wherefore clause below. COUNT FOUR (Unfair Competition Under Florida Law against Google Inc.) Stelor realleges and incorporates by reference the allegations of paragraphs 1 through 28, inclusive, as though fully set forth. 55. Google's use of the name "Google" (which is substantially identical to the "Googles" mark), has caused and will continue to cause "reverse confusion" in that the 17 17 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 18 of 71 consuming public will now wrongly believe that Stelor's goods and services, "googles.com" domain name, and Website are connected, affiliated, associated, sponsored, endorsed or approved by Google, and that Google is the source of origin of the "Googles" concept, books, music, googles.com domain name, Website, merchandise, and related goods and services, which constitutes unfair competition under Florida common law. 56. Google's use of the "Google" name and "google.com" domain name for Internet- based services is diminishing the identity and value of the "Googles" mark, "googles.com" domain name, and Website, and is preventing Stelor from flourishing on the Web, or expanding its Internet-based services and goods at the googles.com Website, and otherwise causing Stelor substantial harm. 57. Google is also attempting to prevent other from using any derivation of the "Google" mark whatsoever, which constitutes unfair competition under Florida Law. 58. As a direct and proximate result of Google's unauthorized acts, Stelor has suffered and will continue to suffer irreparable harm for which there is no adequate remedy at law. Unless restrained, Google's conduct as described above, will continue to cause confusion and will continue to injure the value of the "Googles" mark, domain name, and Website, causing substantial harm and damage to Stelor. 59. As a direct and proximate result of Google's wrongful conduct, Stelor has also suffered and will continue to suffer monetary damages from the "reverse confusion" cause by Google. 60. Stelor has the sole right to bring this action against Google, as set forth above. 18 18 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 19 of 71 WHEREFORE, Stelor requests that this Court provide relief against these acts of Google as set forth in the Wherefore clause below. COUNT FIVE (Breach of Contract against Silvers) 61. Stelor re-alleges and incorporates by reference the allegations of paragraphs 1 through 29, inclusive, as though fully set forth herein. 62. Silvers' actions set forth above constitute material breaches of the Licensing Agreement and the Settlement Agreement. In addition, Silvers has breached the Agreements by unilaterally filing a trademark infringement action against Google, Inc., a valuable right that belongs exclusively to Stelor under the Agreements. 63. 64. 65. 66. As a result of Silvers' actions, Stelor has been damaged. Silvers' breaches have caused irreparable injury to Stelor. Stelor has no adequate remedy at law. Stelor has continued to perform all of its obligations pursuant to the Agreements, including tendering payment to Silvers of all amounts when due under the Agreements. Silvers has refused to accept those payments, and has returned all of the checks Stelor has tendered. WHEREFORE, Stelor requests that this Court provide relief against these acts of Silvers as set forth in the Wherefore clause below. COUNT SIX (Breach of Express Warranty against Silvers) Stelor re-alleges and incorporates by reference the allegations of paragraphs 1 through 28, inclusive, as though fully set forth herein. 67. This is a claim, in the alternative, for breach of express warranty seeking damages 19 19 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 20 of 71 in excess of $75,000.00, exclusive of attorneys' fees and costs. 68. Among other provisions in the License Agreement, Silvers expressly warranted that he "owns the exclusive rights in and to the Licensed Intellectual Property, Licensed Trademarks, Licensed Patents and Licensed Copyrights necessary to effectual the granting of the Licensed Rights from the LICENSOR to the LICENSEE". (Ex. "A" at ¶ VA(iii)). Silvers, moreover, warranted that his performance of the License Agreement would "not violate or conflict with any applicable U.S. law or regulation". 69. (Ex. "A" at ¶ VA(ii)). Silvers similarly represented in the initial whereas clauses of the License Agreement that he "is the sole and exclusive owner of the GOOGLES trademarks", as well as of the "GOOGLES characters." 70. Stelor reasonable relied on these representations, which were a material inducement for it to enter into the agreement, and to pursue the development of the property through substantial effort and investment. 71. Google, Inc., however, in this action, has alleged that it ­ and not Silvers ­ has the right to use the Licensed Property and Trademarks, and has further alleged that the use of the Googles Property and Trademarks violates applicable trademark and other laws. Google, in fact, seeks to cancel the GOOGLES Registration. 72. If Google, Inc.'s allegations are correct, then Silvers has breached the express warranties set forth in the License Agreement. 73. As a result of Silvers' actions, Stelor has been damaged. WHEREFORE, Stelor requests that this Court provide the following relief against Silvers and Google, Inc.: 20 20 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 21 of 71 RELIEF AGAINST SILVERS (a) a preliminary and permanent injunction enjoining Silvers from taking any action in violation of or contrary to the terms of the Licensing Agreement or the Settlement Agreement and affirmatively requiring him to restore to Stelor's control (1) the domain names listed on Exhibit "F" (2) the www.googles.com website and (3) the registration/WHOIS information pursuant to the Licensing Agreement and the Settlement Agreement; (b) a declaratory judgment declaring that Stelor's continued use of the Googles trademarks does not infringe Silvers' rights in violation of the Lanham Act, 15 U.S.C. § 1114(1)(a), does not constitute unfair competition in violation of the Lanham Act, 15 U.S.C. § 1125(a), and does not infringe Silvers' common law rights. (c) a declaratory judgment declaring that Stelor has complied with its obligations under the Licensing Agreement and the Settlement Agreement and that those agreements remain in full force and effect; (c) a judgment awarding Stelor its reasonable attorneys' fees and costs pursuant to ¶ 17 of the Settlement Agreement; (d) (e) proper. RELIEF AGAINST GOOGLE (a) That Google, its agents, servants and employees, and other such persons in a judgment awarding damages to Stelor; and a judgment awarding Stelor such other relief as may be deemed just and concert or participation with Defendant, including licensees, pursuant to 15 U.S.C. § 1116, be 21 21 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 22 of 71 preliminarily and then permanently enjoined from the further use of the mark "Google" or any confusingly similar variation thereof, in connection with the advertising, promotion, marketing, and sale of children's goods and services; (b) cancelled; (c) cancelled; (d) That Stelor be awarded compensatory damages for the reverse confusion That Google's Federal Trademark Registration No. 2806075 be ordered That Google's Federal Trademark Registration No. 2954071 be ordered caused by Google consistent with, but not limited to, all remedies available under 15 U.S.C. §§ 1114 and 1117, and Florida common law. (e) That Stelor be awarded its costs, and attorneys fees pursuant to the exceptional case provisions of 15 U.S.C. § 1117(a) and (b); (f) That Google's domain name registrations for googlesadsense.com, googlesadwords.com, googles-adwords.com, 20googles.com, googlesc.com, googlesms.com, googlessms.co.il, googlessms.de and any other domain name incorporating the word "Googles" be cancelled; (g) That Google, its agents, servants and employees, and other such persons in concert or participation with Google, including licensees, be preliminarily and then permanently enjoined from the further use of the name "Googles" in connection with any domain name; (h) That Google, its agents, servants and employees, and other such persons in concert or participation with Google, including licensees, be preliminarily and then permanently enjoined from using any trade practices whatsoever that injure the value and goodwill in the 22 22 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 23 of 71 "Googles" mark and Stelor's related intellectual property, including claims that it has superior rights to any mark using the GOO- or ­OGGLE formative marks; (i) proper. JURY DEMAND Stelor demands a trial by jury on all issues so triable. Respectfully submitted, BURLINGTON, WEIL, SCHWIEP, KAPLAN & BLONSKY, P.A. Attorneys for Stelor Productions, LLC f/k/a Stelor Productions, Inc. and Steven A. Esrig 2699 South Bayshore Drive, Penthouse Miami, Florida 33133 Tel: 305-858-2900 Fax: 305-858-5261 Email: kkaplan@bwskb.com By: /s/ Kevin C. Kaplan Kevin C. Kaplan Florida Bar No. 933848 David J. Zack Florida Bar No. 641685 That Stelor be granted such further relief as this Court may deem just and 23 23 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 24 of 71 CERTIFICATE OF SERVICE I HEREBY CERTIFY that a true copy of the foregoing was served via U.S. mail on this 14th day of November, 2005 upon the following: Adam T. Rabin, Esq. DIMOND, KAPLAN & ROTHSTEIN, P.A. Trump Plaza 525 S. Flagler Drive, Suite 200 West Palm Beach, Florida 33401 Jan Douglas Atlas ADORNO & YOSS LLP 350 East Las Olas Boulevard Suite 1700 Fort Lauderdale, Florida 33301 Kenneth R. Hartmann, Esq. Gail M. McQuilkin, Esq. KOZYAK TROPIN & THROCKMORTON, P.A. 2525 Ponce de Leon Blvd., 9th Floor Coral Gables, Florida 33134 Andrew P. Bridges WINSTON & STRAWN LLP 101 California Street, Suite 3900 San Francisco, California 94111 /s/ Kevin C. Kaplan Kevin C. Kaplan 24 24 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 25 of 71 EXHIBIT "A" 25 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 2 26 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 2 27 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Pag 28 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 2 29 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 30 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Pag 31 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 P 32 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 P 33 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 34 o 34 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 P 35 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 36 o 36 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 37 of 71 EXHIBIT "B" 37 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 38 of 71 38 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 39 of 71 39 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 40 of 71 40 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 41 of 71 41 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 42 of 71 42 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 43 of 71 43 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 44 of 71 44 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 45 of 71 45 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 46 of 71 46 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 47 of 71 47 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 48 of 71 48 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 49 of 71 49 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 50 of 71 EXHIBIT "C" 50 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 51 of 71 51 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 52 of 71 52 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 53 of 71 53 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 54 of 71 54 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 55 of 71 55 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 56 of 71 56 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 57 of 71 EXHIBIT "D" 57 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 58 of 71 58 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 59 of 71 59 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 60 of 71 60 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 61 of 71 61 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 62 of 71 62 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 63 of 71 63 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 64 of 71 64 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 65 of 71 EXHIBIT "E" 65 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 66 of 71 66 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 67 of 71 EXHIBIT "F" 67 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 68 of 71 DOMAIN NAMES IN DISPUTE GOOBEANIES.COM GOOBEANIES.NET GOOBOP.COM GOOGLEMAIL.NET GOOGLES.BIZ GOOGLES.INFO GOOGLES.NAME GOOGLES.NET GOOGLES.US GOOGLES.WS GOOGLESADVENTURE.COM GOOGLESADVENTURES.COM GOOGLESFROMGOO.COM GOOGLESFROMGOO.INFO GOOGLESFROMGOO.NET GOOGLESMAIL.COM GOOGLESMAIL.NET GOOGLESMANIA.COM GOOGLESMUSIC.COM GOOHOP.COM GOOKID.COM GOOKIDS.COM GOOKIDS.NET GOOKIDSMAIL.COM GOOKIDSMAIL.NET GOOKIDSRGOORIFFIC.COM GOOKIDZ.COM GOOKIDZ.NET GOOKIDZMAIL.COM GOOKIDZMAIL.NET GOOMAIL.NET GOOMANIA.COM GOOMUSIC.COM GOOPETS.COM GOOPETZ.COM GOORIFFICENTERTAINMENT.COM GOORIFFICENTERTAINMENT.NET GOOSHIP.COM GOOSHOES.COM GOOSTUFF.COM GOOTOPIA.COM GOOTOPIA.BIZ GOOTOPIA.INFO GOOTOYS.COM 68 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 69 of 71 GOOTOYS.NET GOOTUNES.COM GOOWARE. COM GOOWEAR.COM OOGLESADVENTURE.COM OOGLESFROMGOO.COM OOGLESFROMGOO.NET OOGOOS.COM OOGOOS.NET PLANETGOO.NET PLANETOFGOO.COM PLANETOFGOO.NET THEGOOCREW.COM THEGOOGLES.COM THEGOOGLESADVENTURE.COM THEGOOGLESADVENTURES.COM THEGOOGLESFROMGOO.COM THEGOOGLESFROMGOO.INFO THEGOOGLESFROMGOO.NET THEGOOGLESMAIL.COM THEGOOGLESMAIL.NET THEGOOKIDSMAIL.COM THEGOOKIDSMAIL.NET THEGOOKIDZMAIL.COM THEGOOKIDZMAIL.NET THEOOGLES.COM THEOOGLES.NET THEOOGLESFROMGOO.COM THEOOGLESFROMGOO.NET THEOOGOOS.COM THEOOGOOS.NET THEPLANETOFGOO.COM THEPLANETOFGOO.NET 69 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 70 of 71 EXHIBIT "G" 70 of 71 Case 9:05-cv-80387-KLR Document 49 Entered on FLSD Docket 11/15/2005 Page 71 of 71 71 of 71

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