Titlecraft, Inc. v. National Football League et al

Filing 1

COMPLAINT against NFL Properties, LLC, National Football League ( Filing fee $ 350 receipt number 4-43175.) assigned to Judge Richard H. Kyle per Master List referred to Magistrate Judge Jeffrey J. Keyes, filed by Titlecraft, Inc. (Attachments: # 1 Exhibit(s) A, # 2 Civil Cover Sheet) (VEM)

UNITED STATES DISTRICT COURT DISTRICT OF
TitlecraJt, Inc., a Minnesota Corporation

MINNESOTA
File No:

,:.,:..

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Plaintiff
vs.

COMPLAINT

National Football League and NFL Properties, LLC, Defendant.

Plaintiff TITLECRAFT, INC., A Minnesota Corporation ("Tit1ecraft") for its
Complaint for declaratory relief, states and alleges as follows:

1.

This action for declaratory judgment under 28 U.S.C.

S

2201 and Rule 57 of

the Federal Ruies of Civii Procedure is brought for the purpose of
determining a question of actual controversy between the parties
as

described below. NFL tfuough its authorized representative, De{endant

NFL Properties LLC, has declared its intention to commence litigation
against Titlecraft. Defendant has declared that intention in its counsel's

August 28, 2009 letter

to

Titlecraft alleging, among other things,

trademark in-{ringement, false designation of origin and false description
and trademark dilution. (A true and couect copy of August 28, 2009 ietter is attached hereto as Exhibit

A).

TitlecraJt seeks a declaration, in advance

of threatened cornmencement of suit by Defendant, that Defendant's
claims are without merit and that Titlecraft is not liable to the Defendant

for its myriad of alleged causes of action, including among other things,
trademark infringement, false designation of origin and false description
and trademark dilution.

THE PARTIES

Plaintiff Titlecraft is a Minnesota Corporation with its principal place of
business at 8540 Quarles Road, Maple Grove, Minnesota 55311. Titlecraft

manufactures and dislributes Fantasy Football Trophies.
3.

Defendant National Football League is an unincorporated association of

thirty-two member teams, with its principal piace of business at 280 Park
Avenue, 15tL Floor, New York, New York 10017.

The National Football League is

in the business of

commercializing

American rules football games in interstate corunerce
district.

in this judicial

5. Defendant NFL Properties, LLC ("NFLP"), is, upon inlormation and
belief, a limited liability company organized and existing under the laws of Delaware with its principal place of business at 280 Park Avenue, New

York, New York 10012 and has been authorized by the National Football
League to use their respective trademarks for commercial purposes and to

protect their trademarks.

6. NFLP is in the business of commercializing and policing use of NFL
related intellectual property in interstate co unerce and in this judicial
district.

SERVICE OF PROCESS
7.

The National Football League may be served through its appointed
Commissioner, currently Roger Goodell , at 280 Park Avenue, 15ft Floor, New York, New York 10017.

8.

NFL Properties, LLC may be served with process by serving its registered
agent, CT Corporation System, 111 Eighth Avenue, New York, New York,
10011.

TURISDICTION AND VENUE

9.

This action for declaratory judgment is brought to determine rights under the Lanham Act, 15 U.S.C. S 1121, and this Court has jurisdiction over this action pursuant to 28 U.S.C.
S

1331 and 28 U.S.C. S 1338.

10.

Titlecraft's claims for declaratory relief are authorized by the Declaratory
Judgment Act 28 U.S.C.
S 2201

&

2202 and Rule 57 of the Federal Rules of

Civil Procedure and by the general legal and equitable powers of this
Court.
11. Venue is

appropriate in this disfrict pursuant to 28 U.S.C. SS 1391 (b) and

1391 (c) on the grounds that a substantial part of the events giving rise to the claim occurred in this district.
12.

This Court has personal jurisdiction over NFLP because, upon
information and beliei NFLP conducts business on a nationwide basis,
including within the State of Mirmesota and in this jurisdiction. NFLP is
therefore subject to the jurisdiction of this Court.

13.

NFLP is the authorized representative of the National Football League
and its thirty-two Member Clubs (which include the Minnesota Vikings)

for the licensing and protection of their names, logos, symbols, and other identifying marks.
14. Beginning

in or about August 2009, Defendant, tfuough its legal counsel,

began a series of contacts with Titlecraft regarding the alleged violations.

These contacts were sent to Titlecraft directly and through their legal
counsel in the State o{ Minnesota.

STATEMENT OF THE CASE
15. Titlecraft, Inc. creates fantasy

football trophies in the State of MirLnesota,

Hennepin County.
1.6.

Titlecraft,Inc. offers for sale and se1ls these fantasy trophies via a website
at the address of wrvw.theultimatetroPh)'.com.

17. Defendants have alleged

via correspondence delivered to TitlecraJt in the

State of Minnesota that the public is likely

to mistakenly believe that

[Titlecraft] has been authorized or sponsored by, or is somehow affiliated

with the NFL and/or the NFL's Member Clubs.
18. Defendants have alleged

via correspondence delivered to TitlecraJt in the

State

of

Minnesota that Titlecraft's conduct constitutes trademark

infringement.

X9.

Defendants have alleged via correspondence deiivered to TltlecrJf in

ihe

'

State of Minnesota that Titlecraft conduct constitutes a false designation of

origin and false description under the Lanham Act.
20 Defendants have alleged via correspondence delivered

lo

Titlecra{!

:1 :n"

.. ,.. .

.

State of Minnesota that Titlecraft is in violation of state trademark and

dilution statutes and common law principals of unfair competition and
rnisappropriation.
2j..

Defendants have tfueatened legal action against Titlecralt via
.

correspondence delivered to Titlecraft in the State of Minnesota.

CAUSE OF ACTION FOR DECLARATION
22.

Defendant incorporates the allegations of the previous paragraphs
though fully stated herein.

as

23. Defendant's conduct shows there is a substantial conhoversy between the

parties regarding Plaintiff Titlecraft's Fantasy Trophies which has created
adverse legal interests that are real and immediate.
24.

By reason of

Defendant's written correspondence and trademark

opposition, Defendant has expressed an actual intention to sue Titlecraft and to hold Titlecraft liable for any such infringement and therefore an
actual controversy exists among and between the parties to this action.
25.

Resolution

of this definite and concrete

controversy requires

a

determination by the Court of whether Plaintiff Titlecraft has violated
Defendands rights.

26.If a declaration is not granted, Plaintilf s rights will
and Plaintiff may sustain significant losses.

!2e adwersely .a{f9gted

27.Pl,aintiff has a valid interest in prompt resolution of this controversy in

order to avoid unnecessary and unwarranted expenditure of resources that will otherwise be caused by a prolonged dispute with Defendant; particularly if Titlecraft is subsequently determined not to be liable for
Defendant's alleged actions or other wrong doing. PRAYER FOR RELIEF
\Arherefore, Plaintiff Titiecraft, Inc. prays that this Court enter judgment:
28. Declaring that Titlecraft, Inc.'s trophy products have not infringed and do

not infringe any valid claim of the Defendant;
29.

Declare that TitlecraJt's production

of its Fantasy Trophies 4o.99, l.oJ

violate any rights of Defendant and the Titlecr#t is not and carurot be
liable to Defendant for production, offering for sale or sales of the same'
30.

Enter an appropriate order enjoining Defendant from commencing suit
against Titlecraft for, among other things, alleged trademark infringement,

false designation of origin and false description and trademark dilution;
and
31. Granting Titlecraft, Inc. such other relief as is just and proper'

ruRYTRIALDEMAND

'

Plaintiff Titlecraft, Inc. hereby demands a Trial by fury on any or all issues
a

joined by the pleadings and so triable by

Jury.

Respectfu

lly subrnitted,
.r

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Dated: 3 -l l-

Ldo
L. Seurer (#336154)
11901 James Road

Minnetonka, MN 55343
P: (672) 45s-6669 F: (612) 4512782