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

Filing 8

ANSWER to Complaint., COUNTERCLAIM against Hawaii-Pacific Apparel Group, Inc.. Document filed by Cleveland Browns Football Company, LLC, National Football League Properties, Inc.. (Attachments: # 1 Exhibit A# 2 Exhibit B# 3 Exhibit C# 4 Exhibit D)(Rose, Jessica)

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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: (212) 819- 8200 Facsimile: (212) 354- 81 J3 ATTORNYS FOR DEFENDANTS/COUNTERCLAI PLAITIFFS NEORK 436097 25-

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