Hawaii-Pacific Apparel Group, Inc. v. Cleveland Browns Football Company, LLC et al

Filing 8

Hawaii-Pacific Apparel Group, Inc. v. Cleveland Browns Football Company, LLC et al

Doc. 8

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 1 of 25

UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
HAW All-PACIFC APPARL GROUP INC.
PlaitiffCoWlterclaim Defendant

Case

No. : 04 CV 7863 (DC)

Judge: The Honorable Denny Chi

-against -

CLEVELAN BROWNS FOOTBALL
COMPANY LLC and NATIONAL FOOTBALL LEAGUE PROPERTIES , INC.
Defendants/CoWlterclaim Plaintiffs.

ANSWER. AFFIRMTIVE DEFENSES

AN COUNERCLAIMS

Defendants/CoWlterclaim Plaitiffs Cleveland

Browns Football Company LLC

(the "Cleveland Browns" or the "Browns ) and NFL Properties LLC, as successor- in- interest to
National Football League Properties , Inc. ("NFLP" ), by their attorneys Whte &
Case

LLP

answer the complait ofPlaitiffCoWlterclai
HPAG"
as

Defendant Hawaii- Pacific

Apparel Group, Inc.

follows:

PARTIES AND JUSDICTION
The Browns and NFLP admit that HP AG purorts to allege that the Cour
has jursdiction pursuat to 28 D.

C. 99 1331 ,

1338 and 1367(a), admt that HPAG purorts to
Wlder 15 U.
C. 9 1121(a) and except as

brig a suit for inngement and unair competition

admtted deny the remaig allegations of Paragraph 1 of the Complait.
The Brown and NFLP are without knowledge or inormation suffcient to
form a belief as

to the trth

of the allegations of

Paragraph 2 of the Complaint.

The Browns and NFLP admt the allegations of Paragraph 3 of the

Complait.

NEORK 4360797 (2K

Dockets.Justia.com

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 2 of 25

The Browns and NFLP deny the allegations of Paragraph 4 of the
Complaint and aver that NFL Properties LLC , the successor-in-interest to National Football

League Properties, Inc. , is a limited liability company organzed and existing Wlder the laws of
Delaware with its principal place of business at 280 Park Avenue , New York, New York 10017.
For puroses of ths Answer, all allegations in the Complait as to "NFLP" shall be treated as

allegations against NFL Properties LLC , the successor-in-interest to National Football League

Properties , Inc.
The Browns and NFLP admt that HP AG purorts to allege that the Cour
has personal jursdiction pursuant to N. Y. C.

L.R. 302(a)(I) and (a)(2), admit that HP AG
C. 9 1391(b)(2) and except as

purorts to allege that

venue is proper in ths Distrct Wlder 28 U.

so admtted deny the remaig allegations of Paragraph 5 of the Complait.

COMMON FACTUAL ALLEGATIONS
The Browns and NFLP are without knowledge or inormation sufcient
form a belief as

to

to the trth of the allegations of

Paragraph 6 of the Complaint.

The Browns and NFLP are without knowledge or inormation suffcient
form a belief as

to

to the trth of the allegations of

Paragraph 7 of the Complait.

The Brown and NFLP deny the allegations of Paragraph 8 of the

Complait.
The Browns and NFLP admt that the National Football League is an

uncorporated association of member clubs, including the Cleveland Browns club , the New
York Giants club and the Bufalo Bils
club,

admt that the member clubs play competitive

NEORK 436097 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 3 of 25

football games that are broadcast in various cities throughout the United States , some of which

are broadcast in New York, admit that the Buffalo Bills club plays its home games in Buffalo
New York and except as

so admitted deny the remaining allegations of Paragraph 9 ofthe

Complait.
10.

The Browns and NFLP admit that NFLP is an entity related to the NFL

admt that NFLP licenses the trademarks of the member clubs of the NFL , including the
Cleveland Browns, for use in connection with varous goods and merchandise and except as so

admitted deny the remaing allegations of Paragraph 10 of the Complaint.
11.

The Browns and NFLP deny the allegations of Paragraph 11 of the

Complaint, and aver that before HPAG' s purorted use of the DA WG POUND and LlL DA WG

POUN marks, (i) the public associated the term "Dawg POWld" with the Browns and the NFL
and (ii) the Browns and NFLP entered into license agreements with manufacturers and
distrbutors of merchandise to use varations of the DA WG mark in connection with authorized
goods. The Browns and NFLP set fort
these facts
more fully in their COWlterclais,

infa
America, Inc.

12.
Logo Athetic,

The Brown and NFLP admit that Lee Sport , Puma Nort

Inc. , Reebok International , Ltd, Sportsline.com, Inc. and Browns Team Shop are

or have been authorized licensees , brands or retalers of the Browns and NFLP for products

bearg the trademarks of the Cleveland Browns , including the DA WG POUN mark

and

except as so admtted are without knowledge or information sufcient to form a belief as to the
trth of the

remaig allegations of Paragraph 12 of the Complait.
13.

The Browns and NFLP admt that on or afer March 31 , 2000 cOWlsel for

the Browns and NFLP received a letter :Iom cOWlsel for HP AG

claig rights in the Browns

NEORK 436097 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 4 of 25

DA WG POUND mark and except

as

so admitted deny the remaining allegations of Paragraph 14

of the Complaint.

14.

The Browns and NFLP admit the allegations of Paragraph 14 of the

Complaint and aver that the Browns and NFLP also sought a declaration that their use of the
DA WG POUND mark was non- dilutive.

15.

The Browns and NFLP admit the allegations in Paragraph 15 of the

Complaint.

16.

The Browns and NFLP deny the allegations of Paragraph 16 of the

Complaint.

TRAEMA INFRINGEMENT-FEDERA LAW
17.

COUNT I

The Browns and NFLP reassert and incorporate by reference the responses

to the allegations in Paragraphs 1 though 16 of the Complait.
18.

The Browns and NFLP are without knowledge or information suffcient to
of the allegations of

form a belief as to the trth

Paragraph 18 of the Complait.

19.
form a belief as

The Browns and NFLP are without knowledge or inormation sufcient
of the allegations of

to

to the trth
20.

Paragraph 19 of the Complait.

The Browns and NFLP are without knowledge or information sufcient
of the allegations of

to

form a belief as to the trth

Paragraph 20 of the Complait.

21.
form a belief as

The Browns and NFLP are without knowledge or inormation sufcient
of the allegations of

to

to the trth

Paragraph 21 of the Complait.

NEORK 436097 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 5 of 25

22.

The Browns and NFLP are without knowledge or information suffcient to
of the allegations of

form a belief as to the trth

Paragraph 22 of the Complaint.

23.

The Browns and NFLP are without knowledge or information suffcient to

form a belief as to the truth of the allegations of Paragraph 23 of the Complaint.
24.

The Browns and NFLP are without knowledge or information suffcient to
of the allegations of

form a belief as to the trth
25.

Paragraph 24 of the Complait.

The Browns and NFLP admt that the Browns fied Application Serial No.

75/668612 for the mark DAWG POUND on or about March 26 1999; admit that the Browns
filed Applications Serial Nos. 75/687371 , 75/687370, 75/687369 and 75/687368 for the mark

on or about April 20, 1999; admt that the Browns filed Application Serial

No. 75/786051 for the mark puppy POUN on or about August 28, 1999; admt that

fuer

action on these applications has been suspended; and except as so admtted deny the remaing

allegations of Paragraph 25 of the Complait.
26.
DA WG POUN

The Browns and NFLP admt that they licensed the use of the mark

and except as so admtted deny the remaig allegations in Paragraph 26 of

the Complait.

NEORK 436097 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 6 of 25

27.

The Browns and NFLP deny the allegations in Paragraph 27 of the

Complaint and aver that the Browns own the mark PUPPY POUND and therefore may license

the use ofthis mark.
28.

The Browns and NFLP deny the allegations in Paragraph 28 of the

Complaint.
29.

The Browns and NFLP deny the allegations in Paragraph 29 of the

Complaint.

30.

The Browns and NFLP deny the allegations of Paragraph 30 of the

Complaint and aver that Exhbit C to the Complait appears to be a letter :Iom cOWlsel for
HP AG to cOWlsel for the Browns and NFLP and that such document speaks for itself.

31.

The Browns and NFLP deny the allegations in Paragraph 31 of the

Complait.
32.
form a belief as

The Browns and NFLP are without knowledge or information suffcient to
of the allegation that "HPAG'

to the trth

s products bearg the Marks are sold
allegations in

by HP AG in interstate commerce

" and except

as

so stated deny the remaig

Paragraph 32 of the Complait.

COUNT II

UNFAI COMPETITION-FEDERA LAW
33.

The Brown and NFLP reassert and incorporate by reference the responses

to the allegations in Paragraphs 1 though 32 of the Complait.

NEORK 4360797 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 7 of 25

34.

The Browns and NFLP deny the allegations in Paragraph 34 of the

Complaint.

35.

The Brown and NFLP deny the allegations in Paragraph 35 of the

Complait.
36.

The Browns and NFLP deny the allegations in Paragraph 36 of the

Complaint
37.

The Browns and NFLP deny the allegations in Paragraph 37 of the

Complaint.

COUNT m UNFAI COMPETITION-NEW YORK LAW
38.

The Browns and NFLP reassert and incorporate by reference the responses

to the allegations in Paragraphs 1 though 37 of the Complaint.
39.

The Browns and NFLP deny the allegations in Paragraph 39 of the

Complait.
40.

The Brown and NFLP deny the allegations in Paragraph 40 of the

Complait.
41.

The Browns and NFLP deny the allegations in Paragraph 41 of the

Complait.

NEORK 4360797 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 8 of 25

COUNT IV

DECLARTION OF NONINRINGEMENT
42.

The Browns and NFLP reassert and incorporate by reference the responses

to the allegations in Paragraphs 1 though 41 of the Complaint.
43.

The Browns and NFLP are without knowledge or information sufcient
of the allegations in

to

form a belief as to the trth
44.

Paragraph 43 of the Complaint.

The Browns and NFLP aver that the WHEREFORE paragraph and

subparagraphs a though j do not contan any allegation that requies a response. To the extent
that HPAG' s prayer for relief is deemed by the Cour to include allegations , the Browns and

NFLP deny all of them.

FIRST AFFIRTIVE DEFENSE
(Failure to State a Claim for Relief)
45.
HP AG' s clai is bared , in whole or in par, because HP AG has failed to

state a claim for which relief can be granted.

SECOND AFFIRTIVE DEFENSE
(Unclean Hands)
46.
Wlclean hands.

HPAG' s

clai is bared, in whole or in par, by the equitable priciple of

TIl AFFIRTIV
47.

DEFENSE (Abandonment)

HPAG' s

clai is bared , in whole or in par, because it has abandoned any

rights in the mark DA WG POUN or LlL DA WG POUN by non-use of the mark with the

express or implied intent not to continue use.

NEORK 436097 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 9 of 25

FOURTH

AFFIRMTIV DEFENSE
(Acquiescence)

48.

HPAG' s claim is bared, in whole or in par, by the equitable principle of

acquiescence.

COUNTERCLAIMS
As their COWlterclais against HP AG, the Browns and NFLP allege:

PRELIMIARY STATEMENT
For a substatial period of tie ,

the Cleveland Browns have used and have
HP

been identified with the mark DA WG POUND. Notwthstading,

AG has attempted to extort

millons of dollars :Iom the Browns and NFLP by inappropriately claimig rights to ths mark
and filing federal trademark applications. In an intial effort to stop HPAG' s ilegal actions , the

Browns and NFLP filed opposition and cancellation proceedings against HP AG' s applications
and registrations for the marks DA WG POUN

and LlL DA WG POUN and other DA WG

marks in the United States Patent and Trademark Offce.
Five years afer the Browns and NFLP filed their first opposition

proceedig agait HPAG and despite knowledge of the Browns ' and NFLP' s long preexisting
and renowned trademark rights , HPAG went so far as to send letters to the Browns , NFLP, and

their licensees requesting, among other thigs , that they cease and desist :Iom using the mark
DA WG POUN.

In view of these letters, the Browns and NFLP were forced to file an action to

protect their rights in their famous DA WG POUND mark in the United States Distrct Cour for

the Nortern Distrct of Ohio. However
jursdiction over HP AG, a decision that

, the Cour dismissed the

case

for lack of personal

was

afed.

NEWYORK 436097 (2K

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 10 of 25

HP AG now brings its deficient claims to this Court in a continuation of
HPAG' s improper efforts to wrest the DA WG POUND mark from its rightful owners. The

Browns and NFLP welcome the opportity to resolve this matter once and for all , and
respectflly request by these

COWlterclais that this Cour declare that the Browns and NFLP

have superior trademark rights over HP AG , and prevent HP AG from interfering with the

Browns ' and NFLP' s use of their long-held, famous DA WG POUND brand.

THE PARTIES
DefendantiCoWlterclaim Plaitiff Cleveland

Browns Football Company

LLC is a limited liability company duly organzed and existing Wlder the laws of Delaware with
its principal place of business at 76 Lou Groza Boulevard , Berea, Ohio 44017.
NFL Properties LLC, successor-in-interest to DefendantiCoWlterclai
Plaitiff National Football

League Properties, Inc. , is a limited liability company organzed and
place of business at 280

existing Wlder the laws of Delaware with its pricipal

Park Avenue

New York, New York 10017.

PlaitiffCoWlterclai Defendant Hawaii- Pacific

Apparel Group, Inc. is a
place of business

corporation organzed and existing Wlder the laws of Hawaii with its pricipal
at 3037 Vail Avenue , Los Angeles, Californa 90040.

JURISDICTION

AN VENU
these

The Browns and NFLP brig

COWlterclais for federal false

designations of origin and misleading descriptions and representations in violation of Section
43(a) of the Trademark Act of 1946 , as amended (the "Lanam Act"), 15 U.
C. 9 1125(a);

federal trademark dilution in violation of Section 43(c) of the Lanam Act, 15 U.

C. 9 1125(c);

NEORK 436097 (2K

10-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 11 of 25

deceptive acts and practices in violation of Section 349(h) of the New York General Business

Law; injur to business

reputation and trademark dilution in violation of Section

360- of the
competition in

New York General Business Law; and trademark in:Iingement and unair

violation of the common laws of the State of New York and of the several states of the United

States. The Browns and NFLP also seek a declaration of non- ingement and non-dilution, the
subject matter of which is addressed in the statutes cited in the previous sentence, as well as
pursuant to 15 U.
C. 9 1114(1).

This Cour has subject matter jursdiction over these compulsory
COWlterclaims because they derive their jursdictional support :Iom HPAG' s

clais.

This Cour has personal jursdiction over HP AG for puroses of

adjudicating these compulsory COWlterclais because HP AG chose
afumative relief.

ths

foru in which to seek

10.

This venue is proper for puroses of adjudicating these compulsory

COWlterclais because HP AG chose ths foru in which to seek afumative relief.

THE MEMBER CLUBS AN THE NFL
11.

The National Football League (the "NFL") is an uncorporated

association oftb-two

member clubs (the "Member Clubs ). Each of the NFL' s Member
owns and operates a professional football club engaged

Clubs , includig

the Cleveland Browns,

in providing entertent services by playing competitive professional football games in

varous locations thoughout the United States.

NEORK

436097

11-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 12 of 25

12.

The Member Clubs, including the Cleveland Browns , derive substantial

revenue :Iom game admission fees and :Iom national television and radio broadcast rights to

games. Millons of persons attend the games each year , and millons more follow the respective
clubs and games in the electronic and print media and access and download information related

to the games via the Internet. The Member Clubs , including the Cleveland Browns , have
invested substantial sums of money in establishig a nationwide reputation for the high caliber

and excellence of their respective football clubs. NFL football is , and for many years has been
the most popular spectator sport in the United States.

13.

To identifY and distiguish their respective football clubs and the
the NFL, the Member Clubs , including the

entertent services that they provide with

Cleveland Browns , have adopted and used in interstate commerce varous names , terms

symbols , emblems, slogans, designs, colors and other identifYing marks (collectively, the "NFL

Trademarks"). The NFL Trademarks are well established at common law, and many have been

registered pursuant to the provisions of the Lanam Act and/or trademark acts of varous states.

THE CLEVELAN BROWNS
14.

DefendantiCoWlterclai Plaintiff Cleveland Browns, and its predecessorsOhio for over fift years.

in- interest, have owned and operated a football club in Cleveland ,

Durg ths time, the Cleveland Browns club has become nationally famous. Cleveland Browns
fan can be fOWld

thoughout the entire United States and even, paricularly in the age of the

Internet, aroWld the world. In fact , the offcial worldwide fan club of the Cleveland Brown

Browns Backers Worldwide , is the largest organzed fan club in professional sports with
hWldreds of local clubs and more than 40 000 members.

NEWYORK436097(2K

12-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 13 of 25

15.

The Cleveland Browns' Dawg POWld is par of the rich history of the club.

Durng the fall of 1984 , the Cleveland Browns and the public began to refer to the club' s defense
as the "Dawgs. " Soon thereafter, NFLP entered into license agreements with manufactuers and
distrbutors of merchandise to use varations of the DA WG mark in connection with authorized

goods. Cleveland Browns fans stared arving

at Muncipal Stadium in dog masks and with

other dog-related paraphernalia. Because the fans in the " bleachers " at the open end of the

Stadium were most parial to wearing ths dog-related apparel , millions of viewers , listeners,
readers and , most recently, Internet subscribers everywhere natually have referred to ths section

of the Stadium as the "Dawg POWld.
16.

As a result of the widespread use of the mark DA WG POUND , the great

popularty of NFL football and the extensive media coverage of the NFL and the Cleveland

Brown, the DA WG POUN mark embodies substantial goodwill and has achieved fame and

secondar meang as an identifier of the Cleveland Browns as the source or sponsor of the
merchandise upon which the DA WG POUND mark appears. Thus , the DA WG POUN mark
an extremely valuable commercial asset of the Browns.

17.

In March and April of 1999, the Browns attempted to register its valuable
See Federal Application Serial Numbers 75/668612 , 75/687368
as

DA WG POUN

mark.

75/687369 75/687370 , and 75/687371 attched hereto

Exhbit A.

Due to the existence of

HP AG' s application for the mark DA WG POUND and registration for the mark LlL DA WG

POUN - both of which the Browns and NFLP have challenged via opposition and
cancellation proceedings - and despite the Browns' and NFLP' s well-established long prior use

of the DA WG POUN

mark, the Brown' applications

remai suspended pendig

resolution of

the opposition and cancellation proceedigs and now, ths action. As a result, HP AG has

NEORK 436097 (2K

13-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 14 of 25

deprived the Browns of the valuable substantive and procedural rights and substantial

governent benefits inherent in a federal trademark registration.
THE BUSINESS OF NFLP
18.

Because the NFL and the Member Clubs have authorized NFLP to license

the marks of the Cleveland Browns and the other Member Clubs , NFLP has entered into license

agreements with manufactuers and distrbutors of merchandise by which such companes are
licensed to use the DA WG POUN

mark in connection with authorized goods (" Licensees

NFLP has entered into license agreements for use of the DA WG POUND mark with

rnanufactuers and distrbutors of a wide varety of goods , including T-shirts, sweatshirt
football jerseys, caps, and other aricles of clothng, and other products , such as mugs and
pennants. On behalf of the Cleveland Browns , NFLP controls and monitors the quality and style

of the offcially-licensed DA WG POUN products. DA WG POUND merchandise is advertised
though a wide varety of media, including over the Internet and in varous prited , direct-mail

cataogues.
19.

Licensees have devoted substatial amoWlts of tie and

effort to the

production, marketing and promotion of merchandise bearg

the DA

WG POUN mark and

have established a signficant consumer demand for these iterns though such effort. Consumers
readily identifY DA WG POUN merchandise as being sponsored and approved by the Browns.

20.

Licensees manufactue and distribute merchandise bearng the DA WG

POUN mark thoughout the United States in interstate commerce, where the products are sold
in a wide varety of retal outlets.

NEORK 436097 (2K

14-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 15 of 25

21.

NFLP derives income in the form of royalty payments :Iom Licensees

:Iom the sale of DA WG POUND merchandise.

UNLAWFUL CONDUCT BY

HAW

All-PACIFIC APPARL GROUP

22.

Upon inormation and belief, HPAG has long been aware of the vast and

valuable goodwill and reputation represented and symbolized by the DA WG POUN mark.
HP AG also has long been aware, upon information and belief, that the DA WG POUN

mark

used by the Browns and NFLP and is recognzed and relied upon by the public thoughout the United States as identifYng varous high-quaity goods and services of the Browns and NFLP
and their Licensees and distiguishing
them :Iom like goods and

services of others. Upon

information and belief, notwthstanding ths awareness, and in fact by reason thereof, HP AG is

attemptig to capitaize upon consumers ' favorable and widespread recogntion of the DA WG

POUN mark.
23.

Without the Brown' and NFLP' s consent, HPAG commenced sellng

thoughout the United States merchandise, including T-shirts, bearg DA WG designations.
Despite having no apparent connection to the sport of football , some ofHPAG' s merchandise

bears football indicia, including footballs and helmets. Copies of varous designs of HP AG' s
rnerchandise bearg the aforesaid ininging elements are attched
24.
as

Exhbit B
calculated to be

Upon inormation and belief, HP AG' s merchandise

was

sold and is likely to continue being sold in the same retal outlets , and in the same sections of

such retal outlets

as

Browns merchandise. In some retal outlets , the aforesaid merchandise is
to Browns

being sold in close proxity

merchandise.

NEORK 4360797 (2K)

15-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 16 of 25

25.

The Browns and NFLP have no adequate remedy at law for HP AG' s

unawfl conduct.
TRAEMARK TRIAL AND APPEAL BOAR PROCEEDINGS
26.

Over nine years ago, on March 29, 1995 , the Browns and NFLP fied a

Notice of Opposition to HPAG' s application serial number 74/498198 for the mark DA WG

POUN in International Class 25 for clothng, namely, footwear, headwear, shis, pants, shorts
jackets and swimwear. On April 25, 1995, the Browns and NFLP fied an Amended Notice of
Opposition to HPAG' s application serial number 74/498198. Opposition number 97 444 is

pending before the Trademark Trial and Appeal Board (" TTAB"), but is curently suspended in

light of ths proceeding.
27.
On JW1e 11 ,

1999, the Browns and NFLP fied a Petition to Cancel

HP AG' s registration number 1 963,463 for the mark LIL DA WG POUN

in

International

Class

25 for clothng, namely shis , pants, shorts, jackets and swiwear; headwear, namely caps, hats

baseball caps and Sherpa hats; and footwear, namely shoes, tenns shoes and work shoes.
Cancellation number 29 083 is pending before the TIAB, but is curently suspended in light of
ths proceedig.

28.

On August 24, 1999, the TIAB granted the paries ' motion on consent to

consolidate the aforementioned opposition and cancellation proceedings , among others.
29.

Durg ths four-year history and thereafer, the paries sporadically have

atternpted to negotiate a settlement of ths dispute.

NEORK 436097 (2K)

16-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 17 of 25

omo PROCEEDING
30.

Despite being well aware (and having been on notice since at least as early

as March 29, 1995) that the Browns and NFLP have used the DA WG POUND mark for many
years and long before HPAG' s alleged date of first use ofDA WG POUND and LIL DA WG

POUND , on March 31 , 2000, HPAG' s attorney sent a letter to the Browns' and NFLP' s attorney
requesting, among other thgs, that the Browns and NFLP and/or its licensees and related

entities cease and desist from using the mark DA WG POUN.
hereto as

A copy of ths letter is attached

Exhbit C. In the March 31 , 2000 letter, HP AG' s attorney stated that there is a

likelihood of confsion" between the Browns' and NFLP' s "use of the term DA WG POUND"
and HPAG' s "famly of marks." HPAG' s attorney also stated that the Browns' and NFLP' s "use
of the term DA WG POUN" dilutes HPAG' s "famly of marks." On April 25, 2000, HPAG'

attorney sent virally identical cease and desist letters to the Browns' and NFLP' s licensees.

Copies of these letters are attched hereto as
31.

Exhbit D

In view of these letters, the Browns and NFLP were forced to file an

action to protect their rights in their famous DA WG POUN mark. Thus, on May 8, 2000, the

Browns and NFLP brought an action in the United States Distrct Cour for the Nortern Distrct

of Ohio seekig a declaration that their use of the DA WG POUN trademark does not infnge
on or dilute any trademark rights HP AG may have, and for unair competition, dilution and

related claims W1der federal and Ohio statutory and common law. However, the Cour dismissed
the case for lack of personal jursdiction over HP AG, a decision that the United States Cour of

Appeals for the Sixth Circuit

afed.

NEWYORK 4360797 (2K

17-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 18 of 25

COUNT I

DECLARTION OF NON-INFRINGEMENT AND NON- DILUTION
32.

The Browns and NFLP hereby reallege and incorporate by reference the

allegations of paragraphs 1 though 31 of these COW1tercJaims.
33.

The Browns ' and NFLP' s use of the DA WG POUND mark does not, and

will not, (a) cause confsion or mistake or deceive the public in violation of Section 32(1) of the

Lanam Act, 15 U. C. 9 1114(1); (b) constitute unfair competition or a false designation of
origin in violation of Section 43(a) of the Lanam Act, 15 U. C. 9 1125(a); (c) constitute unair

competition or trademark infgement W1der state statutory or common law; (d) constitute
dilution in violation of Section 43(c) of the Lanam Act, 15 U. C. 9 1125(c); (e) constitute
dilution in violation of state statutory or common law; or (f) otherwise violate state or federal
statutory or common law.

COUNT II FEDERA UNFAIR COMPETITION
34.

The Browns and NFLP hereby reallege and incorporate by reference the

allegations of paragraphs 1 though 33 of these COW1terclais.
35.
The aforesaid acts of HP AG constitute the use of words , terms and

symbols and combinations thereof; false designations of origin; false and misleading descriptions
of fact; and false and misleadig representations of fact that are likely to cause confion , or to

cause mistae, or to deceive as to the afliation, connection, or association of HP AG with the
Browns and NFLP , or
as

to the origi, sponsorship or

approval of HP AG' s goods , servces or

other commercial activities by the Browns and NFLP.

NEORK 436097 (2K

18-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 19 of 25

36.

The aforesaid acts of HP AG constitute false designation of origin and
C. 9 1125(a).

false descriptions in violation of Section 43(a) of the Lanam Act, 15 U.
37.

The aforesaid acts of HP AG have caused and are causing great and

irreparable harm and damage to the Browns and NFLP , and uness permanently restrained by

this Cour, said irreparable injur

will continue.

COUNT II

FEDERA DILUTION
38.

The Browns and NFLP hereby reallege and incorporate by reference the

allegations of paragraphs 1 though 37 of these COW1tercJaims.

39.
become famous.

The aforesaid acts of HPAG began afer the mark DA WG POUND had

40.

The aforesaid acts of HP AG were wilfully intended to trade on the the

Browns ' and NFLP' s reputation and to cause dilution of the famous DA WG POUN mark.
41.

The aforesaid acts of HP AG dilute the distinctive quality of the famous
C. 9 1125(c).

DA WG POUN

mark in violation of Section 43(c) of the Lanam Act, 15 U.

42.

The aforesaid acts ofHP AG have caused and are causing great and to the Browns and NFLP, and uness permanently restraied by

ireparable har

and damage

ths Cour, said ireparable injur will contiue.
COUNT IV - DECEPTIV ACTS AN PRACTICES

UNER NEW YORK LAW
43.

The Browns and NFLP hereby reallege and incorporate by reference the

allegations of Paragraphs I though 42 of these COW1terclais.

NEORK 436097 (2K

19-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 20 of 25

44.

The aforesaid acts of HP AG constitute deceptive acts or practices in the

conduct of any business , trade or commerce in violation of Section 349(h) of the New York
General Business Law.
45.

The aforesaid acts ofHPAG have caused, and are causing, great and

irreparable har and damage to the Browns and NFLP, and W1less permanently restrained by

ths Cour, said ireparable injur will continue.
INJUY TO BUSINESS REPUTATION

COUNT

V-

DILUTION UNER NEW YORK LAW
46.

The Brown and NFLP hereby reallege and incorporate by reference the

allegations of Paragraphs I though 45 of these COW1terclaims.
47.
become famous.

The aforesaid acts ofHPAG began afer the mark DA WG POUN had

48.

The aforesaid acts of HP AG are likely to injure the business reputation of

the Browns and NFLP and to dilute the distinctive quaity of the Browns' and NFLP'
trademarks in violation of Section

360- of the New York General Business Law.

49.

The aforesaid acts of HP AG have caused , and are causing, great and

ireparable har

and damage

to the Browns and NFLP , and uness permanently restraied by

ths Cour, said ireparable injur will contiue.
COMMON LAW TRAEMA INFRIGEMENT

COUNT

VI -

50.

The Brown and NFLP hereby reallege and incorporate by reference the

allegations of Paragraphs 1 though 49 of these COW1terclais.

NEORK 436097 (2K

20-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 21 of 25

51.

The aforesaid acts of HP AG are likely to cause confsion, or to cause

mistake, or to deceive as to the affiliation, connection, or association ofHP AG with the Browns
and NFLP, or as to the origin, sponsorship or approval ofHPAG' s goods, services or other

commercial activities by the Browns and NFLP.

52.

The aforesaid acts ofHPAG constitute trademark inmngement in

violation of common law.

53.

The aforesaid acts ofHP AG have caused , and are causing, great and
to Plaintiffs, and uness permanently restrained by ths Cour , said

ireparable har

and damage

ireparable injur will continue.

COUNT VII - COMMON LAW UNFAIR COMPETITION
54.

The Browns and NFLP hereby reallege and incorporate by reference the

allegations of Paragraphs 1 though 53 of these COW1terclais.
55.

The aforesaid acts of HP AG are likely to cause confsion, or to cause
as

mistake , or to deceive
and NFLP, or
as

to the afliation, connection, or association of HP AG with the Browns

to the origin, sponsorship or approval ofHPAG' s goods, services or other

commercial activities by the Browns and NFLP.
The aforesaid acts of HP AG constitute unai competition in violation of

56.
common law.

57.

The aforesaid acts of HP AG have caused, and are causing, great and

ireparable har

and damage to the Browns and NFLP , and uness permanently restraied by
will continue.

ths Cour, said ireparable injur

NEORK 436097 (2K

21-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 22 of 25

RELIEF REOUESTED

WHREFORE, the Browns and NFLP pray for a judgment in their favor and
against HP AG orderig
and declarng:

That the Browns' and NFLP' s use of the DA WG POUND mark does not
and will not, (a) cause confsion or mistae or deceive the public in violation of Section 32(1) of

the Lanam Act, 15 U. C. 9 1114(1); (b) constitute unair competition or a false designation of
origin in violation of Section 43(a) of the Lanam Act, 15 U. C. 9 112S(a); (c) constitute unair
competition or trademark infgement W1der state statutory or common law; (d) constitute

dilution in violation of Section 43(c) of the Lanam Act, 15 U. C. 9 1l25(c); (e) constitute

dilution in violation of state statutory or common law; and (f) otherwse violate state or federal
statutory or common law.

That HP AG, and each of its offcers, directors, agents, servants
employees and representatives, and those persons in active concert or paricipation with them or

any of them, be permanently enjoined and restrained :Iom:
(1)

Using on or in connection with the production, manufactue

advertisement , promotion, displayig for sale, offerig for sale, sale, or distrbution of any
arcles of merchandise,

or for any puroses whatsoever, the DA WG POUN mark or any

colorable imtations thereof or anytg confsingly simlar thereto, including LIL DA WG

POUN;
(2)

Using on or in connection with the production, manufactue

advertsement, promotion, displayig for sale, offering for sale, sale, or distrbution of any
aricles of merchandise, or for any puroses whatsoever, the designation DA WG, including

NEORK 436097 (2K)

22-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 23 of 25

without limitation, DA WG POUND, LIL DA WG POUND , TOP DA WG and DA DA WG, in a

context indicative of the Cleveland Browns or the American sport of football , including the
geographic indicators Cleveland and Ohio , the colors orange and brown , or other similar indicia;
(3)
any other acts or

Representing by any means whatsoever, directly or indirectly, or doing

thgs calculated or likely to cause confsion, mistake or to deceive consumers

into believing that the HPAG' s goods originated with or are the goods of the Browns , NFLP, the

NFL or its Member Clubs , or that there is any afliation

or connection

between the Browns and

NFLP and HP AG or their products and :Iom otherwse W1fairly competing with the Browns and

NFLP or the NFL or other Member Clubs , including using on or in connection with the

production, manufacture, advertisement , promotion, displaying for sale, offerig for sale, sale, or

distrbution of any aricles of merchandise , or for any puroses whatsoever, the NFL
Trademarks; and
(4)

Using any mark in a maner so

as

to dilute the distictive quality of the

famous NFL Trademarks, including the DA WG POUND mark.
pursuat to Section 34 of the Lanam Act, 15

That HP AG be requied

C. 9 1116, to fie with ths Cour and to serve upon the Browns and NFLP with

thrt (30)

days afer service upon HP AG of ths Cour s injunction issued in ths action , a wrtten report by
HP AG W1der oath setting fort

in detal the maner in which HP AG has complied with ths

injW1ction.

That HP AG and those controlled by HP AG be requied
Section 36 of the Lanam Act, 15 U.

pursuant to

C. 9 1118, to deliver up and destroy alllabels , sign,

prits , packages, wrappers, receptacles, and advertisements in the possession ofHPAG that are

NEORK 436097 (2K

23-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 24 of 25

or that embody, any reproduction ,

copy, cOW1terfeit or colorable imitation of the

Cleveland

Browns marks and all plates , molds or other means of making the same.
That HP AG be required to take affiative steps to dispel any false

suggestion of a connection to the Browns and NFLP by virte
including without limtation,

of its infinging activities

all necessary and appropriate corrective advertising measures.

That the United States Patent and Trademark Offce , Trademark Trial and
Appeal Board refuse HPAG' s application serial number 74/498198 and grant judgment in favor

of the Browns and NFLP in opposition number 97 444 , and cancel HPAG' s registration number
963 463 and grant judgment in favor of the Browns and NFLP in cancellation number 29, 083.

That the Browns and NFLP recover their damages sustaied

as

a result of

HPAG' s federal, state and/or common law trademark ingement, unair competition , dilution
injur to business reputation and deceptive acts and practices ,
HP AG' s profits arsing

together with an accoW1ting of

:Iom such activities, and that the Cour exercise its discretion and enter a
to be just,

judgment for such additional sums as the Cour shall fid
natue of the acts ofHPAG.

according to the egregious

That the Browns and NFLP have and recover treble damages W1der

Section 35 of the Lanam Act, 15 U. C. 9 1117, and New York General Business Law
9 349(h).

That the Browns and NFLP have and recover their reasonable attorneys

fees pursuant to Section 35 of the Lanam Act, 15 U. C. 9 1117, and New York General
Business Law 9 349(h).

NEORK

4360797

(2K

24-

Case 1:04-cv-07863-DC

Document 8

Filed 12/03/2004

Page 25 of 25

That the Browns and NFLP have and recover their taxable costs and
disbursements herein.

That the Browns and NFLP have such other and fuher relief as the Cour may deem just and proper.
Dated:
New York, New York December 3 , 2004

obe L. a

f -502

Jenn er 1. Milones (JJ-3470) Jessica A. Rose (JR-4300)

WHITE KCASELU'
1155 Avenue of the Americas New York, New York 10036 Telephone: [phone]
Facsimile: (212) 354- 81 J3

ATTORNYS FOR
DEFENDANTS/COUNTERCLAI

PLAITIFFS

NEORK

436097

25-