Victory Outreach International Corporation v. Twitter, Inc. et al
Filing
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COMPLAINT against defendant All Defendants with receipt number 0865-3925413, in the amount of $400 Jury Demand,, filed by Victory Outreach International Corporation. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E, # 6 Exhibit F, # 7 Exhibit G, # 8 Original Filing Form, # 9 Civil Cover Sheet, # 10 Summons Twitter, Inc., # 11 Summons Victory Outreach Ministries Church, (Ash, Bryant) Modified on 8/2/2013 (DLT).
IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF MISSOURI
VICTORY OUTREACH
INTERNATIONAL CORPORATION
a California nonprofit corporation,
Plaintiff,
v.
TWITTER, INC.,
a Delaware corporation,
and
VICTORY OUTREACH
MINISTRIES CHURCH ,
a Missouri nonprofit corporation,
Defendants.
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Civil Action No.
JURY TRIAL DEMANDED
COMPLAINT
Plaintiff Victory Outreach International Corporation (plaintiff or “Victory
Outreach International”), for its complaint against defendants Twitter, Inc. (“Twitter”) and
Victory Outreach Ministries Church (“VOMC”), alleges and states as follows:
INTRODUCTION
1.
Victory Outreach International is an international ministry with hundreds
of ministry centers in the United States and in 23 other countries. Since 1982, Victory
Outreach International has owned the registered trademark VICTORY OUTREACH.
2.
This action arises out of VOMC’s infringement of plaintiff’s trademark in
which VOMC is using the mark VICTORY OUTREACH in violation of the Lanham Act, 15
U.S.C. § 1051 et seq., respectively, and the common law.
3.
Defendant Twitter has directly and contributorily infringed plaintiff’s
trademark by knowingly and intentionally providing the Twitter online identifier,
“VICTORYOUTREACH” used by VOMC and then publishing Tweets by VOMC using that
Username despite plaintiff’s demand that Twitter cease and desist from this conduct.
PARTIES
4.
Plaintiff Victory Outreach International is a California nonprofit
corporation having its principal location at 250 West Arrow Highway, San Dimas, California
91773.
5.
Defendant Twitter, Inc. is a Delaware corporation with its principal
location at 1355 Market Street, Suite 900, San Francisco, California 94103; service of
process may be obtained upon CT Corporation System, 818 W Seventh Street, Los Angeles,
California 90017.
6.
Defendant Victory Outreach Ministries Church is a Missouri nonprofit
corporation with its principal location at 718 North Benvenue Drive, St. Louis, Missouri
63137; service of process may be obtained upon VOMC by serving its registered agent:
Wayne Luster, 718 North Benvenue Drive, St. Louis, Missouri 63137.
Jurisdiction and Venue
7.
This Court has subject matter jurisdiction under 28 U.S.C. §§1331, 1337,
1338(a) and 1367.
8.
This Court has personal jurisdiction over VOMC because VOMC resides
and does business in this District; this court has personal jurisdiction over Twitter because
Twitter conducts business by providing internet, communication, and marketing services
worldwide and has committed acts of trademark infringement and/or has contributed to or
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induced acts of trademark infringement by others in this district in violation of 15 U.S.C. §
1125.
9.
Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) and (c)
because a substantial part of the events or omissions giving rise to the claims occurred in this
district.
Facts Common to All Counts
10.
Victory Outreach International was founded in 1967 and has grown to
become a network of over 600 churches and ministries, with locations across the United
States and in thirty countries from the Philippines to the Netherlands. As such, Victory
Outreach International has grown into one of the largest inner-city ministries of the world
meeting the needs of people from all walks of life.
11.
Victory Outreach International has branded its churches and ministries
with the VICTORY OUTREACH trademark, which was registered on September 21, 1981
under Registration Nos. 1,210,107 and 1,210,108 (the “VICTORY OUTREACH
Trademarks”). Attached hereto as Exhibits A and B.
12.
The VICTORY OUTREACH Trademarks are currently in full force and
have become incontestable under 15 U.S.C. § 1065.
13.
Over time, Victory Outreach International has registered other trademarks
in protection of its rights. VICTORY OUTREACH G.A.N.G. INTERNATIONAL was
registered on February 19, 2008 under Registration No. 3,384,310; VICTORY OUTREACH
INTERNATIONAL UNITED WE CAN was registered on May 22, 2012, under registration
No. 4,185,058; and VO VICTORY OUTREACH INTERNATIONAL SINCE 1967 was
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registered on June 12, 2012, as Registration No. 4197038. Attached as Exhibits C, D, and E,
respectively.
14.
VOMC was organized as a nonprofit corporation in the state of Missouri
15.
On October 9, 2010, VOMC filed an intent-to-use the trademark
in 2009.
VICTORY OUTREACH MINISTRIES CHURCH with the United States Patent and
Trademark Office (“USPTO”), Serial No. 85149006. VOMC’s application for registration of
this trademark was not granted by the USPTO and thereafter was abandoned by VOMC.
Through the course of this filing with the USPTO, VOMC was made aware of Victory
Outreach International’s ownership of the VICTORY OUTREACH trademarks.
16.
Nonetheless, VOMC has continued to use the VICTORY OUTREACH
Trademarks in the promotion of its church and ministries in violation and infringement of
plaintiff’s intellectual property rights.
17.
For example, VOMC prominently displays and uses the mark “Victory
Outreach” on all pages of its website, including the page that allows for anyone who visits
the website to make a monetary donation to VOMC.
18.
On or about February 11, 2013, representatives of plaintiff sent to
representatives of VOMC an email demanding that defendant cease and desist from further
use of the VICTORY OUTREACH Trademarks.
19.
On or about March 25, 2013, through counsel, plaintiff again sent VOMC
written correspondence demanding that VOMC cease and desist from further use of the
VICTORY OUTREACH Trademarks.
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20.
Notwithstanding VOMC’s knowledge of plaintiff’s ownership of the
VICTORY OUTREACH Trademarks through the United States Patent & Trademark Office,
and the two cease and desist letters sent by plaintiff to VOMC, VOMC continues to infringe
the VICTORY OUTREACH Trademarks in violation of plaintiff’s rights.
21.
Hence, VOMC’s infringement is intentional and undertaken with full
knowledge of plaintiff’s ownership of the VICTORY OUTREACH Trademarks and the
rights protected thereby.
22.
Additionally, plaintiff discovered that VOMC has registered the username
“VICTORYOUTREACH” with defendant Twitter.
23.
According to Wikipedia, “Twitter is an online social networking service
and microblogging service that enables its users to send and read text-based messages of up
to 140 characters, known as ‘tweets.’” According to its own website, “Twitter connects
businesses to customers in real time—and businesses use Twitter to quickly share
information with people interested in their products and services, gather real-time market
intelligence and feedback, and build relationships with customers, partners and influencers.
From brand lift to CRM to direct sales, Twitter offers businesses an easy way to reach an
engaged audience.”
24.
Twitter’s website goes on to speak to its world-wide reach: “Twitter was
founded in San Francisco, but it’s used by people in nearly every country in the world. The
service is available in more than 20 languages, and we continue to add them.”
25.
To do this, Twitter’s Cheat Sheet for business suggests that, when
establishing a Username, that the Username “Incorporate your brand name…” and that
images used “[v]isually represent your brand.”
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26.
Indeed, Twitter claims to protect trademarks in its “Trademark Policy,”
found at http://support.twitter.com/articles/18367-trademark-policy#.
27.
That Trademark Policy states: “Using a company or business name, logo,
or other trademark-protected materials in a manner that may mislead or confuse others with
regard to its brand or business affiliation may be considered a trademark policy violation.”
28.
plaintiff
On or about May 15, 2013, pursuant to Twitter’s Trademark Policy,
requested
that
defendant
Twitter
transfer
the
name
VICTORYOUTREACH@twitter.com to plaintiff and simultaneously informed Twitter that
plaintiff owned the registered trademark VICTORY OUTREACH.
29.
On or about May 28, 2013, Twitter responded through it’s representative
“drea” of the Twitter Trust & Safety department, and stated that “[t]he account is not being
used in a way that is misleading or confusing with regard to its brand, location or business
affiliation…. Twitter does not have a username reservation policy. Users are free to select
any name for their account, provided that they do not violate Twitter’s Terms of Service or
Rules.”
30.
On or about June 3, 2013, this time through counsel, plaintiff informed
Twitter of VOMC’s use of the Twitter username “VICTORYOUTREACH” in a manner that
infringes the VICTORY OUTREACH Trademarks. A true and correct copy of that letter is
attached as Exhibit F and incorporated herein by this reference.
31.
On or about July 12, 2013, Twitter again responded through its
representative “drea” of the Twitter Trust & Safety department, and sent an email identical to
the one sent on May 28, 2103.
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32.
Indeed, VOMC also established a Facebook page, but when the
infringement was brought to Facebook’s attention, Facebook took down VOMC’s infringing
Facebook page. See Exhibit G, which is incorporated herein by this reference.
33.
Despite plaintiff’s best efforts, VOMC and Twitter have failed and refused
to terminate the use of VICTORY OUTREACH and thus continue to infringe plaintiff’s
trademark and other intellectual property rights.
COUNT I
FEDERAL TRADEMARK INFRINGEMENT
AGAINST DEFENDANT VOMC
15 U.S.C. §1114
34.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
35.
This Count is pleaded against defendant VOMC.
36.
Defendant VOMC has infringed the VICTORY OUTREACH Trademarks
by displaying the VICTORY OUTREACH Trademarks on its website and various places on
the internet, signage, promotional materials, and other materials, all of which was done
without plaintiff’s permission or consent.
37.
Defendant VOMC’s use of the VICTORY OUTREACH Trademarks in
commerce without plaintiff’s consent is likely to cause confusion, cause mistake, or deceive
the consumer as to the source, affiliation, or sponsorship.
38.
Defendant VOMC’s use of the VICTORY OUTREACH Trademarks
enables defendant to benefit unfairly from plaintiff’s reputation and success, thereby giving
defendants’ ministries, churches and fundraising efforts value they otherwise would not have.
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39.
Prior to defendant VOMC’s first use of the VICTORY OUTREACH
Trademarks, defendant was aware of plaintiff’s churches and ministries and had either actual
notice and knowledge, or constructive notice of plaintiff’s registered trademarks.
40.
Defendant VOMC’s use of the VICTORY OUTREACH Trademarks,
without the consent of plaintiff, is likely to deceive or to cause confusion or mistake among
consumers as to the origin, sponsorship, or approval of defendant’s churches and ministries
and/or to cause confusion or mistake in violation of 15 U.S.C. § 1114(a).
41.
Defendant VOMC intended to confuse consumers as to the source of
defendant’s ministries and churches.
42.
Defendant VOMC’s infringement of the VICTORY OUTREACH
Trademarks as described herein has been intentional, willful, and without regard to plaintiff’s
rights.
43.
Defendant VOMC gained revenue and profits by virtue of their
infringement of the VICTORY OUTREACH Trademarks.
44.
Plaintiff also has sustained damages as a direct and proximate result of
defendant VOMC’s infringement of the VICTORY OUTREACH Trademarks in an amount
to be determined at trial.
45.
Because defendant VOMC’s actions have been committed with intent to
damage plaintiff and to confuse and deceive the public, plaintiff is entitled to defendants’
profits, treble plaintiff’s actual damages, an award of costs and, this being an exceptional
case, reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
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COUNT II
FEDERAL TRADEMARK INFRINGEMENT
AGAINST DEFENDANT TWITTER
15 U.S.C. §1114
46.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
47.
This Count is pleaded against defendant Twitter.
48.
Defendant Twitter operates a system on the internet in which users select a
name, called a “Username,” used on Twitter’s system. Each Username is unique on the
system.
49.
Each registered user may post communications, which Defendant Twitter
calls “Tweets,” to the system using the user’s Username.
50.
These Tweets can include advertisements, offers, solicitations, and
promotional information.
51.
Tweets are sent to other users who have elected to receive them from that
Username and the user of that Username is identified as the source of such Tweets
52.
Upon
VOMC’s
registration,
Twitter
assigned
the
Username
“VICTORYOUTREACH” to VOMC.
53.
The VOMC twitter account with the Username VICTORYOUTREACH is
used by VOMC for the same purposes plaintiff uses the Victory Outreach trademark, namely
the promotion of its ministries, including the raising of funds to support those ministries.
54.
and
thus
Twitter exercises dominion and control over the Usernames on its system
exercises
dominion
and
control
VICTORYOUTREACH as a Username.
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over
VOMC’s
ability
to
use
55.
Notwithstanding Twitter’s ability to terminate VOMC’s ability to use
VICTORYOUTREACH as a Twitter Username, and despite plaintiff’s demand that Twitter
do so, Twitter has failed and refused to terminate VOMC’s use of VICTORYOUTREACH as
a Twitter Username on its account.
56.
Notwithstanding
Twitter’s
ability
to
transfer
the
Username
VICTORYOUTREACH to plaintiff, and despite plaintiff’s demand that Twitter do so,
Twitter has failed and refused to transfer the Twitter Username VICTORYOUTREACH to
plaintiff.
57.
Twitter’s system is proprietary and self-contained. Tweets bearing the
label and Username VICTORYOUTREACH are delivered by Twitter to other Twitter users
on its system. Hence, with full knowledge of plaintiff’s rights in the trademark VICTORY
OUTREACH, and over plaintiff’s request to cease this activity, Twitter continues to deliver
and publish Tweets to other Twitter users and thus infringes plaintiff’s rights in the name
VICTORY OUTREACH.
58.
The damage suffered by plaintiff as a result of Twitter’s infringement of
plaintiff’s rights in the trademark VICTORY OUTREACH is irreparable and continuing.
COUNT III
FEDERAL CONTRIBUTORY TRADEMARK INFRINGEMENT
AGAINST DEFENDANT TWITTER
59.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
60.
This Count is pleaded in the alternative to Count VII against defendant
Twitter.
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61.
Defendant Twitter has provided the means on the Twitter system by which
VOMC has infringed plaintiff’s rights in the trademark VICTORY OUTREACH.
62.
Defendant Twitter has knowledge of plaintiff’s registrations with the U.S.
Patent and Trademark Office in the VICTORY OUTREACH trademarks.
63.
Notwithstanding this knowledge, defendant Twitter continues to publish
Tweets bearing the Username VICTORYOUTREACH in a manner which infringes
plaintiff’s rights in its federally registered trademarks.
COUNT IV
FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
AGAINST DEFENDANT VOMC
15 U.S.C. § 1125(a)
64.
Plaintiff incorporates by this reference the previous allegations as though
fully set forth in this paragraph.
65.
This Count is pleaded against defendant VOMC.
66.
The unauthorized use of the VICTORY OUTREACH Trademarks is
likely to cause the public to believe, erroneously, that defendant’s ministries and churches are
sponsored by, endorsed by, or associated with plaintiff.
67.
Defendant VOMC’s use of the VICTORY OUTREACH Trademarks as if
owned by defendant constitutes a false designation of origin and unfair competition.
68.
Defendant VOMC’s use of the VICTORY OUTREACH Trademarks on
their own websites, materials, promotional materials, signage, ministries and churches is
likely to cause the public to believe, erroneously, that these websites, materials, promotional
materials, signage, ministries and churches were made by plaintiff or were in some way
sponsored by, endorsed by, or associated with plaintiff.
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69.
Because defendant VOMC’s actions have been committed with intent to
damage plaintiff and to confuse and deceive the public, plaintiff is entitled to defendant’s
profits, treble plaintiff’s actual damages, an award of costs and, this being an exceptional
case, reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
COUNT V
FEDERAL TRADEMARK DILUTION
AGAINST DEFENDANT VOMC
15 U.S.C. § 1125(c)
70.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
71.
This Count is pleaded against defendant VOMC.
72.
Plaintiff has advertised and publicized the VICTORY OUTREACH
Trademarks extensively throughout the United States and internationally. As a result of
VICTORY OUTREACH’s inherent distinctiveness and extraordinary widespread use, the
VICTORY OUTREACH Trademarks have acquired a high degree of recognition and fame
for its churches, ministries, and related services.
73.
Defendant VOMC’s unauthorized use of the VICTORY OUTREACH
Trademarks in commerce occurred after the trademark had become famous throughout the
United States and internationally.
74.
Defendant VOMC’s unauthorized use of the VICTORY OUTREACH
Trademarks is likely to cause dilution as the ministries and churches of defendant are inferior
to those of plaintiff.
75.
Defendant VOMC’s unauthorized use of the VICTORY OUTREACH
Trademarks in marketing ministries and churches not authorized or approved by plaintiff is
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likely to cause dilution as these ministries and churches are inferior and do not uphold
plaintiff’s standards.
76.
Defendant VOMC’s dilution of the VICTORY OUTREACH Trademarks
as described herein has been intentional, willful, and without regard to plaintiff’s rights.
77.
Defendant VOMC’s gained profits by virtue of their infringement of the
VICTORY OUTREACH Trademarks.
78.
Because defendant VOMC’s actions have been committed with intent to
damage plaintiff and to confuse and deceive the public, plaintiff is entitled to defendant’s
profits, treble plaintiff’s actual damages, an award of costs and, this being an exceptional
case, reasonable attorneys’ fees pursuant to 15 U.S.C. § 1117(a).
COUNT VI
MISSOURI LAW TRADEMARK DILUTION
AGAINST DEFENDANT VOMC
R.S.Mo. § 417.061
79.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
80.
The VICTORY OUTREACH Trademarks are valid at common law.
81.
The VICTORY OUTREACH Trademarks are distinctive.
82.
Defendant VOMC’s use of the VICTORY OUTREACH Trademarks is
likely to injure the business reputation and/or dilute the distinctive quality of the VICTORY
OUTREACH Trademarks, and will cause irreparable damage to plaintiff in violation in
R.S.Mo. § 417.061.
83.
Plaintiff was thereby damaged.
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COUNT VII
COMMON LAW TRADEMARK INFRINGEMENT
AGAINST DEFENDANTS TWITTER AND VOMC
84.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
85.
This Count is pleaded against defendants VOMC and Twitter.
86.
Defendants have infringed the VICTORY OUTREACH Trademarks by
displaying them as set forth previously herein, all of which was done without plaintiff’s
permission or consent.
87.
Defendant VOMC’s acts have been conducted maliciously, fraudulently,
deliberately, and intentionally to divert sales, donations, and revenue from plaintiff and
inflict injury on plaintiff.
88.
Defendant Twitter’s acts have been done intentionally and recklessly,
without regard to plaintiff’s intellectual property rights in the VICTORY OUTREACH
Trademarks.
COUNT VIII
COMMON LAW UNFAIR COMPETITION
AGAINST DEFENDANT VOMC
89.
Plaintiff incorporates by reference the previous allegations as though fully
set forth in this paragraph.
90.
This Count is pleaded against defendant VOMC.
91.
Defendant VOMC’s acts complained of herein constitute unfair
competition in violation of the common law of Missouri and any other states where
defendant is conducting its activities.
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PRAYER FOR RELIEF
WHEREFORE, Plaintiff prays the Court to enter judgment in its favor and against
defendants Twitter, Inc. and Victory Outreach Ministries Church for the following:
a.
Actual, compensatory, and punitive damages in an amount to be
established at trial;
b.
A preliminary and permanent injunction enjoining defendants from use of
the VICTORY OUTREACH Trademarks, including any such use on the internet
or on Twitter’s system;
c.
Reasonable attorneys’ fees;
d.
Pre- and post-judgment interest, and
e.
Such other and further relief as may be just and proper.
REQUEST FOR JURY TRIAL
Plaintiff hereby requests trial by jury of the above-styled matter.
Respectfully submitted,
By: /s/Bryant S. Ash
Arthur K. Shaffer, #51,229
Bryant S. Ash, #63,693MO
INTELLECTUAL PROPERTY CENTER, LLC
7101 College Blvd., Suite 1520
Overland Park, KS 66210
Telephone: (913) 345-0900
Facsimile: (913) 345-0903
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