Ardis Health, LLC et al v. Nankivell

Filing 7

MEMORANDUM OF LAW in Support re: 6 MOTION for Preliminary Injunction.. Document filed by Ardis Health, LLC, Curb Your Cravings, LLC, USA Herbals, LLC. (Attachments: # 1 Text of Proposed Order Proposed Order)(Hennessey, Christopher)

David Valicenti
Christopher Hennessey
COHEN KINNE VALICENTI & COOK LLP
28 North Street, 3rd Floor
Pittsfield, MA 01201
Counsel for Plaintiffs
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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Case No: 11-cv-05013-NRB
ARDIS HEALTH, LLC, CURB YOUR CRAVINGS,
LLC, and USA HERBALS, LLC,
Plaintiffs,
-againstASHLEIGH NANKIVELL,
Defendant.
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PLAINTIFFS’ MEMORANDUM OF LAW
IN SUPPORT OF THEIR MOTION FOR PRELIMINARY INJUNCTION

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TABLE OF CONTENTS
TABLE OF AUTHORITIES ......................................................................................................... iii
INTRODUCTION .......................................................................................................................... 1
STATEMENT OF FACTS ............................................................................................................. 2
ARGUMENT .................................................................................................................................. 9
A.

Standard ............................................................................................................................ 9

B.
Plaintiffs Are Entitled to Injunctive Relief Based On Defendant’s Wrongful Conversion
of Plaintiffs’ Property ............................................................................................................... 10
1.
Defendant Has No Right to Plaintiffs’ Proprietary Content, Access Information or
Equipment ............................................................................................................................. 10
2.
Defendant Wrongfully Converted Plaintiffs’ Access Information, Proprietary Content
and Equipment ...................................................................................................................... 12
3.

Injunctive Relief Is Necessary to Prevent Irreparable Harm to Plaintiffs .................. 13

C.
Plaintiffs Are Entitled to Injunctive Relief Based On Defendant’s Breach of the Work
Product Agreement ................................................................................................................... 15
D.
Plaintiffs Are Entitled to Injunctive Relief Based On Defendant’s Trademark
Infringement .............................................................................................................................. 16
E.
Plaintiffs Are Entitled to Injunctive Relief Based On Defendants’ Copyright
Infringement .............................................................................................................................. 19
CONCLUSION ............................................................................................................................. 21

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TABLE OF AUTHORITIES
CASES
Astroworks, Inc. v. Astroexhibit, Inc., 257 F.Supp.2d 609 (S.D.N.Y.2003) ................................. 13
Audi AG v. Shokan Coachworks, Inc., 592 F.Supp.2d 246 (N.D.N.Y. 2008) .............................. 18
Biosafe-One, Inc. v. Hawks, 524 F.Supp.2d 452 (S.D.N.Y.2007) ................................................ 19
Blue Nile, Inc. v. Ice.com, Inc., 478 F.Supp.2d 1240 (W.D.Wash.2007) ..................................... 17
Broadcast Music, Inc. v. R Bar of Manhattan, Inc., 919 F.Supp. 656 (S.D.N.Y.1996) ............... 21
Carter v. Helmsley-Spear, Inc., 71 F.3d 77 (2nd Cir. 1995) ........................................................ 11
Century 21 Real Estate LLC v. Bercosa Corp., 666 F.Supp.2d 274 (E.D.N.Y. 2009) ................. 18
Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104 L.Ed.2d 811
(1989) .................................................................................................................................. 10, 11
Conference Archives v. Sound Images, Inc., 2010 WL 1626072 (W.D.Pa.2010) ........................ 17
Fendi Adele S.R.L. v. Ashley Reed Trading, Inc. 2010 WL 571804 (S.D.N.Y. 2010) ................ 19
Forschner Group, Inc. v. Arrow Trading Co., 124 F.3d 402 (2d Cir.1997) ........................... 17, 18
Franklin Res., Inc. v. Franklin Credit Mgmt. Corp., 998 F.Supp. 322 (S.D.N.Y.1997) .............. 17
Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137 (2d Cir.1997) ............................. 16, 18
Mikhlyn v. Bove 2008 WL 4610304 (E.D.N.Y. 2008) ................................................................. 12
Mint, Inc. v. Amad, 2011 WL 1792570 (S.D.N.Y. 2011) ............................................................. 20

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Motown Record Co., L.P. v. iMesh.Com, Inc., No. 03 Civ. 7339, 2004 WL 503720 (S.D.N.Y.
Mar. 12, 2004)........................................................................................................................... 22
New York City Triathlon, LLC v. NYC Triathlon Club, Inc., 704 F.Supp. 2d 305 (S.D.N.Y. 2010)
............................................................................................................................................. 14, 19
Nora Beverages, Inc. v. Perrier Group of Am., Inc., 164 F.3d 736 (2d Cir.1998) ....................... 17
NXIVM Corp. v. Ross Inst., 364 F.3d 471 (2d Cir. 2004) ............................................................... 9
Pan American World Airways, Inc. v. Flight 001, Inc. 2007 WL 2040588 (S.D.N.Y. 2007) ..... 17
Rex Med. L.P. v. Angiotech Pharms. (US), Inc., 754 F.Supp.2d 616 (S.D.N.Y. 2010) ................ 10
Roswell Capital Partners LLC v. Alternative Constr. Tech., 2009 WL 222348 (S.D.N.Y.2009)
............................................................................................................................................. 15, 16
Salinger v. Colting, 607 F.3d 68 (2d Cir. 2010) ................................................................. 9, 10, 22
Shmueli v. Corcoran Group, (2005 N.Y. Slip Op 35302[U] [Sup Ct, N.Y. County 2005] .......... 13
SimplexGrinnell v. Integrated Sys., 642 F.Supp.2d 167 (S.D.N.Y.2009)..................................... 21
Sleep Science Partners v. Lieberman, 2010 WL 1881770 (N.D.Cal.2010) ................................. 17
Starbucks Corp. v. Wolfe's Borough Coffee, Inc., 588 F.3d 97 (2d Cir. 2009) ............................ 17
State v. Seventh Regiment Fund, Inc., 98 N.Y.2d 249, 746 N.Y.S.2d 637 (N.Y. 2002) .............. 12
Tom Doherty Assoc., Inc. v. Saban Entm’t, Inc., 60 F.3d 27 (2d Cir.1995) ................................. 14
Tough Traveler, Ltd. v. Outbound Products, 60 F.3d 964 (2d Cir.1995) ..................................... 19
Tri-Star Pictures, Inc. v. Unger, 14 F.Supp.2d 339 (S.D.N.Y. 1998) .......................................... 19

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Warner Bros. Entertainment Inc. v. RDR Books, 575 F.Supp.2d 513 (S.D.N.Y.2008) ............... 21
Zino Davidoff SA v. CVS Corp., 571 F.3d 238 (2d Cir. 2009)...................................................... 19
STATUTES
15 U.S.C. § 1125(a) ...................................................................................................................... 16
17 U.S.C. § 101 ............................................................................................................................. 10
17 U.S.C. § 410(c) ........................................................................................................................ 20
Section 43(a) of the Lanham Act .................................................................................................. 16
Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02 ............................................. 18

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INTRODUCTION
Plaintiffs Ardis Health, LLC (“Ardis”), Curb Your Cravings, LLC (“CYC”), USA
Herbals, LLC (“USA Herbals”) (collectively “Plaintiffs”), respectfully submit this Memorandum
of Law, together with the Declaration of Jordan Finger with Exhibits (“Finger Dec.”), in support
of their Motion for Preliminary Injunction. A Proposed Order is attached herewith.
By this Motion, Plaintiffs merely seek to regain control over what is rightfully their
property and to stop Defendant from using it. The Motion seeks an order requiring Plaintiffs’
former Video & Social Media Producer, Defendant Ashleigh Nankivell (“Defendant”), to
immediately return all company equipment that she wrongfully retained when she was
terminated, as well as all passwords, login, hosting, server and other information for various
marketing venues that belong to Plaintiffs. In addition, Plaintiffs seek to enjoin Defendant from
using any proprietary content relating to Plaintiffs’ business, including all creative content used
in the advertisement and promotion of Plaintiffs’ products and services. Finally, Plaintiffs seek
an order enjoining Defendant from further use of Plaintiffs’ trademarks and copyrighted works.
Defendant is a disgruntled former employee who wrongfully kept Plaintiffs’ property
upon her termination and then unilaterally changed passwords and other critical information
needed by the Plaintiffs to control their business. Defendant is now using Plaintiffs’ proprietary
content for her own marketing website without authorization.
As a result of Defendant’s actions, Plaintiffs are losing business and customer goodwill,
and such losses continue to mount on a daily basis. Other Internet marketers are using Plaintiffs’
websites to steer prospective customers to their own products. While normally Plaintiffs could
easily control their website content, they now have no way of stopping this, as Defendant

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changed all the passwords. Plaintiffs also cannot access their critical marketing content, which
was uploaded on to a server and which Defendant now improperly controls.
The balance of the equities clearly favors Plaintiffs, as Plaintiffs simply seek to prohibit
Defendant from doing that which she has no right to do. Moreover, Defendant’s actions are
creating confusion in the marketplace and the public has a great interest in protecting the misuse
of this property under these circumstances. Accordingly, Plaintiffs are entitled to a preliminary
injunction.
STATEMENT OF FACTS
I.

Plaintiffs’ Business

Plaintiffs are a group of closely affiliated online marketing companies that develop and
market a variety of herbal, natural health, wellness and beauty products throughout the United
States and Europe. Plaintiffs market their products widely on the Internet. Finger Dec., ¶¶ 6-7.
Plaintiffs operate collaboratively under the direction and control of their founder, Jordan
Finger. Mr. Finger is the sole member and 100% owner of each of the Plaintiffs, along with
various other related entities. Finger Dec., ¶¶ 1, 20.
CYC is the main entity that conducts the online business of Mr. Finger’s enterprise. All
employees are hired by CYC, and employment agreements are established through CYC. CYC
outsources its employee payroll to USA Herbals, one of its affiliated companies. In connection
with their employment for CYC, Mr. Finger often direct his employees to create online
marketing content for his other entities, including Ardis. Finger Dec., ¶¶ 14-17.
Mr. Finger solely manages all CYC’s employees and oversees the development of
creative advertising and Plaintiffs’ marketing strategies, which are created with the assistance of
his employees.
Plaintiffs’ success is attributable largely to their creative advertising abilities coupled

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with Internet marketing savvy. The fast paced world of Internet marketing requires a dynamic
advertising model that is targeted over many platforms including on social networks such as
Facebook and Twitter, as well as blog sites.1 Successful Internet marketers must be able to adapt
their advertising campaigns on the fly in order to respond to the demands of consumers, the
actions of competitors, as well as Internet search engines, which prioritize marketers’ visibility to
consumers based on the quality of the content and the ability of the advertiser to drive traffic to
an individual website. Thus, the ability to immediately and seamlessly modify the content of an
advertisement or website can mean the difference between the success and failure of a brand.
Finger Dec., ¶¶ 9-11.
Because creative content is the lifeblood of Plaintiffs’ business, Plaintiffs have
undertaken significant efforts to protect and ensure their continued ownership and control over
the creative content used in the advertisement and promotion of their products and services
(“Proprietary Content”). Finger Dec., ¶ 12. Plaintiffs have expended significant time and effort
in the development, promotion and marketing of their products and services under a portfolio of
trademarks. Finger Dec., ¶ 8. Plaintiffs register their trademarks and copyrights, police the
unauthorized use of their Proprietary Content by others on the Internet, and secure agreements
with their affiliate advertisers, employees and others to ensure that their creative content is not
misused or misappropriated. Finger Dec., ¶ 13.
II.

Defendant’s Employment

In October 2008, Mr. Finger hired Defendant as a salaried employee. At all times during
her employment, Defendant was a regular W-2 salaried employee, hired by CYC and paid by
CYC or USA Herbals. Mr. Finger’s entities made appropriate tax withholdings for the
Defendant, classifying her as a salaried employee. In connection with her employment,

1

Blogs are usually websites maintained by an individual with regular entries of commentary, descriptions of events,
or other material such as graphics or video.

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Defendant received paychecks on a regular basis. Finger Dec., ¶¶ 21-23, Exh. A.
Around the time of her hire, Defendant executed an acknowledgement of CYC’s
employee handbook (“Handbook”). Finger Dec., ¶ 24, Exh. B. As set forth in the Handbook,
Defendant was provided with group health insurance benefits and worker’s compensation
insurance. Defendant also received up to five days of paid sick time and up to ten days of paid
vacation days, as well as seven paid holidays per year. Finger Dec., ¶ 25 Exh. B.
During her employment, Defendant held the title of Video & Social Media Producer.
Defendant’s duties and responsibilities as Mr. Finger’s employee involved the creation of
Proprietary Content, including creating videos for and about Plaintiffs’ products and services.
Defendant’s creative work was used, among other things, on Plaintiffs’, as well as Mr. Finger’s
other entities’ websites, blogs, and other venues on the Internet. Defendant’s duties and
responsibilities also encompassed designing other Proprietary Content, including websites for his
enterprise’s products and services, and social media fan pages on Facebook, Twitter and
elsewhere. Defendant had no role in hiring or paying assistants. Finger Dec., ¶¶ 26-29.
At all relevant times, Mr. Finger maintained the right to control the manner and means by
which the Proprietary Content was accomplished, including all Proprietary Content created by
Defendant. Plaintiffs are the owners of all Proprietary Content, including all Proprietary Content
created by Defendant. Finger Dec., ¶¶ 30-31.
As part of her job, Defendant was responsible for maintaining, and she exclusively
maintained, Plaintiffs’ passwords, login, hosting and other information for various websites,
email accounts, social media accounts and other accounts that were established on behalf of
Plaintiffs. Defendant also exclusively maintained password information to servers hosted by
third parties, which are accessible online, where a significant amount of Plaintiffs’ critical and

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proprietary data, including Proprietary Content, was uploaded and stored. (collectively, “Access
Information”) Finger Dec., ¶ 32, Exh. C.
In order to perform the functions of her job, Plaintiffs provided Defendant with various
computer and video equipment, including a Macintosh computer, digital camera, software and
related equipment (“Equipment”), which was paid for by Plaintiffs. Throughout her
employment, Defendant stored a significant amount of Plaintiffs’ critical information and
Proprietary Content on the Equipment. Finger Dec., ¶ 33, Exh. D.
III.

The Work Product Agreement

In October 2008, Defendant executed a Non-Disclosure and Rights to Work Product
Agreement in connection with her employment with Plaintiffs (“Work Product Agreement”).
Finger Dec., ¶ 34, Exh. E.
Pursuant to the Work Product Agreement, Defendant expressly agreed that: (1) any
Proprietary Content she created or developed, including names, designs, slogans, concepts,
advertisements, copyrightable works, trademarks and service marks, belonged solely to
Plaintiffs; (2) she had no right, title or interest in any Proprietary Content; and (3) all of the
creative work performed by Defendant in connection with her employment was part of Plaintiffs’
Proprietary Content and did not belong to Defendant. Finger Dec. ¶ 35; Exh. E, ¶ 10.
Pursuant to the Work Product Agreement, Defendant agreed to return all confidential
information, including Plaintiffs’ Access Information, immediately upon request of Plaintiffs.
Finger Dec. ¶ 36; Exh. E, ¶ 5.
Pursuant to the Work Product Agreement, Plaintiffs’ Access Information is confidential
information. Defendant agreed to hold Plaintiffs’ Confidential Information in strict confidence,
to protect that information, and not to use any confidential information for any purpose other
than for her engagement by Plaintiffs. Finger Dec. ¶ 37; Exh. E, ¶ 3. Upon information and
belief, Defendant was aware at all times that the work she created in connection with her

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employment belonged to Plaintiffs. Finger Dec., ¶ 38.
IV.

Whatsinurs Concept

In approximately June 2010, Mr. Finger began developing a concept for a service known
as “Whatsinurs”. The purpose of Whatsinurs was to provide content related to cosmetic and
beauty products over the Internet and mobile to a social media community. Whatsinurs would
enable participants to discover, review, comment on and buy beauty and cosmetic products
through the Whatsinurs platform both online and at local retailers. Finger Dec., ¶¶ 39-41.
Plaintiffs, chiefly through Mr. Finger, began to develop the Whatsinurs concept and
registered the domain Whatsinurs.com. Plaintiffs developed the Whatsinurs.com website
(“Whatsinurs Website”). Finger Dec., ¶¶ 42-43; Exh. F. The Whatsinurs Website has a
distinctive look and feel for the Whatsinurs concept (“Whatsinurs Trade Dress”). The
Whatsinurs Trade Dress encompasses the color scheme, logo and organizational structure of the
Whatsinurs Website. Finger Dec., ¶ 44; Exh. F. On July 27, 2011, Plaintiffs received a
copyright registration for the Whatsinurs Website. Finger Dec., ¶ 76; Exh. Q.
On February 27, 2011, the trademark, Whatsinurs, was first used in commerce (the
“Whatsinurs Mark”), which is an integral part of the Whatsinurs Website. Through Plaintiffs’
extensive and exclusive use of the Whatsinurs Mark and Whatsinurs Trade Dress, they have
become distinctively connected with Plaintiffs. Finger Dec. ¶¶ 45, 49.
On April 6, 2011, Plaintiffs sought registration of the Whatsinurs Mark with the United
States Patent and Trademark Office (“USPTO”). Finger Dec., ¶ 46; Exh. G. In connection with
the application, the USPTO Examiner conducted a search and determined that there are no
trademarks that conflict with the Whatsinurs Mark. Finger Dec., ¶ 47; Exh. H. Registration of
the Whatsinurs Mark, USPTO Serial No. 85287919, is pending. Finger Dec., ¶ 48.
In connection with her employment, Mr. Finger asked Defendant to assist him with the
creative development of Whatsinurs in her capacity as Plaintiffs’ employee. Under Mr. Finger’s

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direction and control, Defendant created Proprietary Content related to the Whatsinurs concept.
Among other things, Defendant, as part of her employment responsibilities, assisted in the
creation and development of the Whatsinurs Website. Finger Dec., ¶¶ 50-51.
V.

Defendant’s Termination

Defendant’s work became marred by excessive absences, consistent lateness, and
unexplained disappearances from the office for hours in the middle of the work day, sometimes
for hours on end, which began to escalate in the spring of 2011. Finger Dec., ¶ 52.
Unbeknownst to Mr. Finger and Plaintiffs at the time, Defendant had commenced
applying for other jobs and prepared to compete against Plaintiffs using Plaintiffs’ facilities and
equipment, including her work computer at Plaintiffs’ Manhattan office. Finger Dec., ¶ 53.
Defendant engaged in a pattern of leaving work during work hours, without requesting
vacation time or leave, in order to seek alternative employment and to interview for positions at
competing companies. Mr. Finger later discovered that Defendant had prepared at least sixty
job applications, including for work at competitors, using Plaintiffs’ equipment and facilities,
and while on the job. Finger Dec., ¶ 53.; Exh. I.
On June 23, 2011, after Defendant failed to show up for work without excuse, Mr. Finger
terminated Defendant’s employment. The Handbook made clear that Defendant was an
employee at will, and, as such, could be discharged for any reason and without cause. Finger
Dec., ¶¶ 56-57. Defendant has subsequently filed for unemployment, thereby acknowledging
that she was Plaintiffs’ employee. Finger Dec., ¶ 58, Exh. J.
VI.

Defendant’s Unlawful Conversion of Plaintiffs’ Proprietary Content, Access
Information, and Other Post Termination Conduct

At the time of her termination, Mr. Finger requested that Defendant return all Equipment
and information, including Proprietary Content in her possession, as well as the Access
Information that belonged to Plaintiffs. Finger Dec., ¶ 59, Exh. K. Defendant refused to return
the requested items and continues to maintain possession of, among other things, Plaintiffs’

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Equipment, Access Information and Proprietary Content, without authorization. Finger Dec., ¶
60.
In addition, Defendant unilaterally changed the passwords, login, hosting and other
information for various hosted servers, websites, email accounts, social media accounts and other
accounts that were established on behalf of Plaintiffs, and has refused to allow Plaintiffs access
to this Access Information, as well as a significant amount of Proprietary Content and other
highly sensitive information belonging to Plaintiffs that was uploaded and stored on servers.
Finger Dec., ¶ 61; Exh. L.
Because Defendant changed this Access Information, Plaintiffs do not have access to
these company assets and files, and cannot maintain, alter or modify some of their websites and
marketing campaigns.
Access to this information is critical to Plaintiffs’ business. Finger Dec., ¶ 62. For
example, Plaintiffs are unable to access a number of Facebook pages, which were set up for the
benefit of Plaintiffs’ products. Presently, others are now posting competing advertisements on
Plaintiffs’ Facebook pages in an effort to drive prospective customers away from Planitiffs’ sites.
Because Defendant maintains exclusive access to these pages, Plaintiffs are unable to remove the
offending posts, which are resulting in a loss of customers. Finger Dec., ¶¶ 63-65; Exh. M.
After her termination, Defendant publicly displayed and continues to use and publicly
display, Proprietary Content from the Whatsinurs Website on her commercial public website,
www.anankivell.com (“Anankivell.com”), including the Whatsinurs Mark and Whatsinurs Trade
Dress. Defendant copied portions of the Whatsinurs Website on to Anankivell.com. Defendant
uses Anankivell.com in a commercial capacity to promote herself and her work. Finger Dec., ¶¶
67-69; Exh. O.
Plaintiffs did not authorize Defendant to display portions of the Whatsinurs Website on to
Anankivell.com following her termination from employment. In using the Whatsinurs Website
content, Defendant provided no attribution to any of Plaintiffs and has improperly appropriated
Plaintiffs’ Proprietary Content for her own benefit. Finger Dec., ¶¶ 70-73; Exh. O.

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A Google search for the term “whatinurs” performed on July 27, 2011, reveals that
Anankivell.com appears among the top results. Customers searching for Plaintiffs’ products
would therefore confuse Defendants’ website as affiliated or sponsored by Plaintiffs. Finger
Dec., ¶ 70; Exh. P.
On June 28, 2011, Plaintiffs’ counsel advised Defendant that she must return Plaintiffs’
Proprietary Content and Access Information, as well as cease displaying of portions of the
Whatsinurs Website on Anankivell.com. Defendant has refused to return Plaintiffs’ Proprietary
Content and Access Information or remove the Whatsinurs Website content from
Anankivell.com. She continues to display such content for her own commercial gain. Finger
Dec., ¶¶ 74-75.
At no time did Plaintiffs authorize Defendant to use any Proprietary Content, except in
connection with her employment and for the benefit of Plaintiffs. Finger Dec., ¶ 77.

ARGUMENT
A. Standard
A court may issue a preliminary injunction if the movant has demonstrated “either (a) a
likelihood of success on the merits or (b) sufficiently serious questions going to the merits to
make them a fair ground for litigation and a balance of hardships tipping decidedly in the
[plaintiff]’ s favor.” Salinger v. Colting, 607 F.3d 68, 79 (2d Cir. 2010) (alteration in original),
quoting NXIVM Corp. v. Ross Inst., 364 F.3d 471, 476 (2d Cir. 2004).
Injunctive relief is warranted where the movant also establishes irreparable injury in the
absence of an injunction. Id., at 79–80. Irreparable harm is established where a plaintiff shows
that “(1) ‘he is likely to suffer irreparable injury in the absence of an injunction’; (2) ‘remedies at
law, such as monetary damages, are inadequate to compensate for that injury’; (3) the balance of
hardships tips in his favor; and (4) ‘the public interest would not be disserved by the issuance of

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a preliminary injunction.’” Rex Med. L.P. v. Angiotech Pharms. (US), Inc., 754 F.Supp.2d 616,
620 (S.D.N.Y. 2010) (quoting Salinger, supra).
Here, Plaintiffs are entitled to a preliminary injunction under this standard.
B. Plaintiffs Are Entitled to Injunctive Relief Based On Defendant’s Wrongful
Conversion of Plaintiffs’ Property
Plaintiffs have established a clear likelihood of success on the merits with respect to their
Seventh and Eight Claims for conversion of their Proprietary Content, Access Information and
Equipment set forth in the Amended Complaint. Defendant wrongfully converted this property,
and irreparable harm will result absent an injunction. Accordingly, the Court should
immediately enjoin Defendant from retaining possession of, or using Plaintiffs’ property in any
way.
1.

Defendant Has No Right to Plaintiffs’ Proprietary Content, Access Information or
Equipment

A “work made for hire” is “a work prepared by an employee within the scope of his or
her employment.” 17 U.S.C. § 101. Whether a person had created a work as an “employee
within the scope of his or her employment” is determined by reference to the common law of
agency. Community for Creative Non-Violence v. Reid, 490 U.S. 730, 109 S.Ct. 2166, 104
L.Ed.2d 811 (1989). The factors include, among others: “whether the hiring party has the right
to assign additional projects to the hired party,” “the hired party’s role in hiring and paying
assistants,” “the provision of employee benefits,” and “the tax treatment of the hired party.” Id.
at 751-52, 109 S.Ct. 2166.
Here, there can be no doubt that all Proprietary Content created by Defendant during her
employment belongs to Plaintiffs. At all times during her employment, Defendant was a regular
W-2 salaried employee, and was taxed, classified and paid as such. Finger Dec., ¶¶ 21-23; Exh.

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A. Defendant had no role in hiring and paying assistants. Finger Dec., ¶ 27. Defendant was
afforded benefits that were afforded to all Plaintiffs’ employees including health insurance, sick
time, paid vacation and paid holidays. Finger Dec., ¶¶ 25, Exh. B. Indeed, Defendant filed for
unemployment benefits as Plaintiffs’ former employee. Finger Dec. ¶ 58, Exh. J. Under these
circumstances, title to all Proprietary Content belongs to Plaintiffs. Carter v. Helmsley-Spear,
Inc., 71 F.3d 77, 86 -87 (2nd Cir. 1995) (copyright in sculptures belonged to employer where
employer paid payroll and social security taxes, provided employee benefits such as life, health,
and liability insurance and paid vacations, and contributed to unemployment insurance and
workers’ compensation funds on artists’ behalf and two of the three artists filed for
unemployment benefits after their positions were terminated).
Moreover, Defendant’s job title was Video & Social Media Producer and she was
specifically hired to create Proprietary Content and was paid by Plaintiffs for doing so. Finger
Dec., ¶ 26. In connection with her employment, Mr. Finger repeatedly assigned Defendant
additional projects to be performed for the various entities of his enterprise. That Defendant was
hired by CYC and paid by USA Herbals and performed work for other of Mr. Finger’s entities is
irrelevant. It is undisputable that Plaintiff was hired as an employee and paid by Plaintiffs for the
work she performed and, as such, all Proprietary Content she created during her employment
belongs to Plaintiffs under the work for hire doctrine. As Plaintiff is the owner of all Proprietary
Content, all Access Information in connection with such content also belongs to Plaintiffs and
Defendant had no right to unilaterally change the Access Information.
In addition to the work for hire doctrine, Defendant cannot escape the enforceability of
the Work Product Agreement. Under the Work Product Agreement, Plaintiff expressly agreed to
return all confidential information, including Plaintiffs’ Access Information, immediately upon

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request of Plaintiffs. See Exh. E, ¶ 5. Defendant also expressly acknowledged that: (1) any
content she created or developed, including names, designs, slogans, concepts, advertisements,
copyrightable works, trademarks and service marks, belonged solely to Plaintiffs (2) she had no
right, title or interest in any Proprietary Content; and (3) all of the creative work performed by
Defendant in connection with her employment was part of Plaintiffs’ Proprietary Content and did
not belong to Defendant. See Exh. E, ¶ 10. Under the Work Product Agreement, therefore, all
Access Information and Proprietary Content belongs to Plaintiffs.
Finally, it cannot be disputed that the Equipment was purchased by Plaintiffs for
Defendant’s use in connection with her employment, and Defendant can have no ownership
claim to the Equipment, which contains Plaintiffs’ critical information. Finger Dec., Exh D.
Thus, all Equipment, Access Information and Proprietary Content belongs to Plaintiffs.
2.

Defendant Wrongfully Converted Plaintiffs’ Access Information, Proprietary
Content and Equipment

“Conversion is the tort of unauthorized assumption and exercise of the right of ownership
over goods belonging to another to the exclusion of the owner’s rights. Mikhlyn v. Bove 2008
WL 4610304, *13 (E.D.N.Y. 2008), citing State v. Seventh Regiment Fund, Inc., 98 N.Y.2d 249,
259, 746 N.Y.S.2d 637 (N.Y. 2002). In addition to tangible property, intellectual property, such
as a website and its contents, and other intangible property, such as sensitive business
information, are forms of property that can be converted. Astroworks, Inc. v, Astroexhibit, Inc.,
257 F.Supp.2d 609, 618 (S.D.N.Y.2003) (holding that ideas set forth on website constitute
“tangible expression or implementation of an idea,” which can be converted as a matter of law);
Shmueli v. Corcoran Group, (2005 N.Y. Slip Op 35302[U] [Sup Ct, N.Y. County 2005]
(conversion claim sustained where defendant refused to let plaintiff access customer list she had
developed and stored on defendant’s computer system).

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Here, it cannot be disputed that upon termination, Defendant refused to return Plaintiffs’
Equipment, which contained critical business information, including Plaintiffs’ Proprietary
Content and Access Information. Defendant also unilaterally changed the password and login
information to Plaintiffs’ hosted servers, websites, email accounts, social media accounts and
other accounts that were established on behalf of Plaintiffs. Because Defendant has improperly
exercised of the right of ownership and control over Plaintiffs’ Equipment, Proprietary Content
and Access Information, Plaintiffs have established a clear likelihood of success on the merits of
their conversion claims.
3.

Injunctive Relief Is Necessary to Prevent Irreparable Harm to Plaintiffs

Absent an injunction, Defendant’s conversion of Plaintiffs’ property will continue to
result in irreparable harm to Plaintiffs. In order to be successful as an Internet marketer, it is
critical that Plaintiffs’ can adapt their advertising campaigns on the fly and immediately and
seamlessly modify the content of their advertisements or websites. By seizing control over
Plaintiffs’ property, Defendant has hindered Plaintiffs’ ability to compete in the marketplace and
Plaintiffs will continue to suffer until the property is returned.
Because Defendant changed the Access Information, Plaintiffs do not have access to
critical company assets and files, and cannot maintain, alter or modify some of their websites and
marketing campaigns. As a result of Defendant’s refusal to return this property, Plaintiffs’
business is suffering in that they are unable to change or control their advertising websites and
alter or modify their content, which is significantly harming their advertisements.
Among other things, Plaintiffs are unable to access a number of Facebook pages, which
were set up for the benefit of Plaintiffs’ products and to develop Plaintiffs’ brand in the eyes of
consumers. Presently, Plaintiffs’ competitors are now posting competing advertisements on

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Plaintiffs Facebook pages, which dilute Plaintiffs’ brands and steers customers away from
Plaintiffs’ marketing sites. See Finger Dec., Exh. M. Because Defendant maintains exclusive
access to these pages, Plaintiffs are unable to remove the offending posts, which is resulting in a
significant loss of customers affecting the goodwill established in Plaintiffs’ brands.
Thus, Plaintiffs have presented an imminent threat of continued harm and the difficulty of
evaluating the injury in monetary terms as a result of Defendants’ act of holding Plaintiffs’
property hostage weighs heavily in favor of injunctive relief. New York City Triathlon, LLC v.
NYC Triathlon Club, Inc., 704 F.Supp. 2d 305, 343 (S.D.N.Y. 2010) (preliminary injunction
appropriate because no monetary sum can sufficiently remedy Plaintiff for harm based on loss of
control its reputation and the services offered under its name and brand); Tom Doherty Assoc.,
Inc. v. Saban Entm’t, Inc., 60 F.3d 27, 37–38 (2d Cir.1995) (discussing that the loss of
prospective goodwill, which is the potential benefits to a business from selling an essential or
unique product, can constitute irreparable harm).
Moreover, in balancing the hardships, it is clear that there is no benefit to Defendant in
continuing to maintain possession of Plaintiffs’ Property, other than to enjoy watching Plaintiffs
scramble to protect their brands. Defendant is simply a disgruntled former employee who seeks
to harm Plaintiffs in any way that she can in retribution for her termination.
Finally, the public interest would not be disserved by the issuance of a preliminary
injunction, which would merely allow Plaintiffs possession of what is rightfully their property.
Under these circumstances, Plaintiffs have clearly established all of the elements for a
preliminary injunction, and Defendant should be ordered to immediately return all of Plaintiffs’
property.

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C. Plaintiffs Are Entitled to Injunctive Relief Based On Defendant’s Breach of the
Work Product Agreement
Plaintiffs have also established a likelihood success on the merits with respect to their
Sixth Claim for breach of the Work Product Agreement. Pursuant to the Work Product
Agreement, Defendant acknowledged that such a breach would cause Plaintiffs irreparable injury
and damage. As such, Plaintiffs are entitled to a preliminary injunction on this ground.
The elements of a breach of contract claim under New York law are as follows: (1) the
existence of an agreement; (2) adequate performance of the contract by the plaintiff; (3) breach
of contract by the defendant; and (4) damages. Roswell Capital Partners LLC v. Alternative
Constr. Tech., 2009 WL 222348,*8 (S.D.N.Y.2009).
Here, the evidence demonstrates that the parties entered into the Work Product
Agreement and Plaintiffs performed all obligations under the Work Product Agreement.
Defendant breached the Work Product Agreement by using Plaintiffs’ confidential information
(including Proprietary Content and Access Information) for an improper purpose and failing to
return Plaintiffs confidential information as expressly required under the agreement. Finger
Dec., Exh. E, ¶¶ 1,5.
Further, Plaintiff breached the Work Product Agreement by failing to acknowledge
Plaintiffs’ ownership of the Proprietary Content and failing to cooperate with Plaintiffs in
protecting its Proprietary Content. Finger Dec., Exh. E,¶10.
With respect to irreparable injury, pursuant to the Work Product Agreement, Defendant
expressly acknowledged that the “actual or threatened breach of this Agreement will cause
[Plaintiffs] irreparable harm” and that Plaintiffs shall “in addition to all other remedies available
to it, be entitled to injunctive and other equitable relief . . . .” Finger Dec., Exh. E, ¶ 8. Thus, in
addition to the irreparable injury set forth above, such terms in the Work Product Agreement are

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highly relevant to the Court’s determination as to whether irreparable harm has occurred.
Roswell Capital Partners LLC, supra, 2009 WL 222348 at *17 (“terms throughout the contracts
at issue specify that a default constitutes irreparable harm entitling Plaintiffs to injunctive relief
to cure breaches,” which, “[w]hile not dispositive, [may be viewed by] courts ... as evidence of
an admission that irreparable harm has occurred”).
Moreover, as stated in Part IB herein, the balance of the hardships and public interest
weigh in favor of Plaintiffs. Under these circumstances, Plaintiffs have clearly established that a
preliminary injunction is necessary based on Defendant’s breach of contract.
D. Plaintiffs Are Entitled to Injunctive Relief Based On Defendant’s Trademark
Infringement
Plaintiffs have also established a likelihood success on the merits with respect to their
First, Second, Fourth and Fifth Claims for trademark and trade dress infringement.
Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), creates a federal cause of action
for the infringement of an unregistered trademark. See, e.g., Genesee Brewing Co. v. Stroh
Brewing Co., 124 F.3d 137, 142 (2d Cir.1997). To prevail on a Section 43(a) claim of trademark
infringement under the Lanham Act, “the plaintiff must show, first, that its mark merits
protection, and second, that the defendant’s use of a similar mark is likely to cause consumer
confusion as to the origin, sponsorship, or affiliation of the defendant’s goods.” Pan American
World Airways, Inc. v. Flight 001, Inc. 2007 WL 2040588, 7 (S.D.N.Y. 2007); Starbucks Corp.
v. Wolfe's Borough Coffee, Inc., 588 F.3d 97, 114 (2d Cir. 2009). The elements necessary to
prevail on a common law cause of action for trademark infringement are identical to the
elements of a claim under the Lanham Act. Franklin Res., Inc. v. Franklin Credit Mgmt. Corp.,
998 F.Supp. 322, 338 (S.D.N.Y.1997).
With respect to trade dress infringement, trade dress “encompasses the design and

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appearance of the product together with all the elements making up the overall image that serves
to identify the product presented to the consumer.” Nora Beverages, Inc. v. Perrier Group of
Am., Inc., 164 F.3d 736, 743 (2d Cir.1998) (internal citations and quotations omitted). A
website’s total “look and feel” can constitute a protectible trade dress. See Blue Nile, Inc. v.
Ice.com, Inc., 478 F.Supp.2d 1240 (W.D.Wash.2007); Sleep Science Partners v. Lieberman,
2010 WL 1881770 (N.D.Cal.2010); Conference Archives v. Sound Images, Inc., 2010 WL
1626072 (W.D.Pa.2010).
To succeed on the merits of a trade dress infringement claim, a plaintiff must demonstrate
“(1) its trade dress is distinctive and (2) there exists a likelihood of confusion between its product
and the alleged infringer’s product.” Forschner Group, Inc. v. Arrow Trading Co., 124 F.3d
402, 407 (2d Cir.1997). Trade dress is “inherently distinctive” if it serves as an “indication of
origin, “so that a consumer would “readily rely on it to distinguish it” from competitors. Id. at
407-08.
Here, the Whatsinurs Mark is an arbitrary term, entitled to automatic protection under the
under the Lanham Act. Genesee Brewing Co., Inc. v. Stroh Brewing Co. 124 F.3d 137, 143 (2d
Cir. 1997) (“Marks that are arbitrary, fanciful, or suggestive are considered ‘inherently
distinctive,’ and are automatically entitled to protection under the Lanham Act”). Moreover,
registration for the Whatsinurs Mark is pending and the USPTO Trademark Examiner has
performed a search and found no conflicting marks. See Finger Dec., Exh. H (“The Office
records have been searched and there are no similar registered or pending marks that would bar
registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d). TMEP §704.02”)
Similarly, the color scheme and style selection of the Whatsinurs Website clearly serve as
an indication of origin, such that consumers can readily rely on it to distinguish it from

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competitors. See Finger Dec.,¶¶ 42-44; Exh. F. Thus, the Whatsinurs Trade Dress is inherently
distinctive and equally entitled to protection under the Lanham Act. Forschner Group, Inc.,
supra, 124 F.3d at 407.
Further, it cannot be disputed that Defendant is presently displaying the Whatsinurs Mark
and Whatsinurs Trade Dress on her own commercial Anankivell Website and without any
attribution to Plaintiffs. See Finger Dec., Exh. O. Under these circumstances, especially where
Defendant’s website displays near the top of search engine results, it is presumed that the use of
an identical mark is likely to cause consumer confusion as to the origin, sponsorship, or
affiliation of the defendant’s goods. See Audi AG v. Shokan Coachworks, Inc., 592 F.Supp.2d
246, 273 (N.D.N.Y. 2008) (where marks are “essentially identical” consumers are likely “to
believe that [defendant] somehow is associated with [plaintiff] or at least has consented to the
use of its trademark.”); Century 21 Real Estate LLC v. Bercosa Corp., 666 F.Supp.2d 274, 282
(E.D.N.Y. 2009) (likelihood of confusion established where defendant failed to stop using
plaintiff’s mark after termination of franchise agreement). Defendant’s use of the Plaintiff mark
to promote her own website also demonstrates her bad faith intention to capitalize on Plaintiffs’
reputation and goodwill. Tri-Star Pictures, Inc. v. Unger, 14 F.Supp.2d 339, 357 (S.D.N.Y.
1998) (where infringing marks are identical, defendant has the burden of persuading the court
that there is a credible innocent explanation).
With respect to irreparable harm, “[i]n trademark disputes, ‘a showing of likelihood of
confusion establishes both a likelihood of success on the merits and irreparable harm.’” Fendi
Adele S.R.L. v. Ashley Reed Trading, Inc. 2010 WL 571804, *7 (S.D.N.Y. 2010); Zino Davidoff
SA v. CVS Corp., 571 F.3d 238, 247 (2d Cir. 2009) (“a ‘plaintiff who establishes that an
infringer’s use of its trademark creates a likelihood of consumer confusion generally is entitled to

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a presumption of irreparable injury.’”); Biosafe-One, Inc. v. Hawks, 524 F.Supp.2d 452, 462-67
(S.D.N.Y.2007) (“[i]rreparable harm is often presumed in copyright, trademark, and trade dress
infringement cases”). The theory underlying this presumption is that it is difficult to remedy
confusion in the marketplace by an award of damages. Tough Traveler, Ltd. v. Outbound
Products, 60 F.3d 964, 967-68 (2d Cir.1995) (same in trademark and trade dress context).
Further, irreparable harm is demonstrated by the fact that Defendant’s Anankivell
Website shows up among the top results for web searches for the Whatsinurs Mark. Finger Dec.,
Exh. P. Thus, consumers searching for Plaintiffs services may be directed to Defendant’s
website resulting in a loss of Plaintiffs’ customers.
In balancing hardships, there is simply no hardship to the Defendant in granting the
injuction, as it merely seeks to prohibit her from using Plaintiffs’ trademarks for her own
personal gain and to return Plaintiffs’ property, which does not belong to her. Further, the
consuming public has a protectable interest in being free from confusion, deception and mistake.
See New York City Triathlon, supra, 704 F.Supp.2d at 344.
Accordingly, a preliminary injunction should issue based upon Defendant’s trademark
infringement.
E. Plaintiffs Are Entitled to Injunctive Relief Based On Defendants’ Copyright
Infringement
Similarly, Plaintiffs are entitled to injunctive relief based on their claim for copyright
infringement of the Whatsinurs Website.
“To prevail on a claim of copyright infringement, the plaintiff must demonstrate both (1)
ownership of a valid copyright and (2) infringement of the copyright by the defendant.” Mint,
Inc. v. Amad, 2011 WL 1792570, *2 (S.D.N.Y. 2011). Registration of a copyright before or
within five years of first publication is prima facie evidence of the “validity of the copyright.”

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17 U.S.C. § 410(c). To establish infringement, the copyright owner must demonstrate that (1)
the defendant has actually copied the plaintiff’s work; and (2) the copying is illegal because a
substantial similarity exists between the defendant’s work and the protectible elements of
plaintiff’s.” (Internal quotation marks omitted.) Mint, Inc, supra, 2011 WL 1792570, at *2.
Here, Plaintiffs have a valid copyright registration in the Whatsinurs Website and
therefore have established a prima facie case of ownership. Finger Dec., Exh. Q. Moreover,
Defendant’s use of portions of the Whatsinurs Website on the Anankivell Website constitutes
direct evidence of copying of the protectable elements of the work. As such, Plaintiff has clearly
established a likelihood of success on their claim for copyright infringement.
With respect to irreparable harm, Defendant’s continued use of content stolen directly
from Plaintiffs’ Whatsinurs Website and pasted on to her own commercial website will cause
Plaintiffs to suffer irreparable harm. Defendant has usurped control over the Whatsinurs content
and is using the content to market herself to competitors. Defendant’s use of the content on her
website dilutes the brand and customers searching for Plaintiffs services will be driven to
Defendant’s website, which contains Plaintiffs’ copyrighted content. Finger Dec., Exh. P.
Plaintiffs should not be expected to suffer a decline in market share – an injury difficult to
quantify – owing to Defendant’s infringement.
Moreover, a plaintiff has no adequate remedy at law where, absent an injunction, the
defendant “is likely to continue infringing” its copyrights. Warner Bros. Entertainment Inc. v.
RDR Books, 575 F.Supp.2d 513, 553 (S.D.N.Y.2008); See also SimplexGrinnell v. Integrated
Sys., 642 F.Supp.2d 167, 196-97 (S.D.N.Y.2009) (finding remedies at law inadequate where
evidence suggested defendant would continue unauthorized use of copyright). Here, Defendant
continues to infringe Plaintiffs’ copyright despite that Plaintiffs’ counsel specifically advised

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Defendant of the infringing activity. See Broadcast Music, Inc. v. R Bar of Manhattan, Inc., 919
F.Supp. 656, 658 (S.D.N.Y.1996); (granting plaintiffs in copyright infringement action
permanent injunction where licensing company’s investigator’s testimony established defendants
repeatedly infringed plaintiffs’ copyrights despite knowledge of the copyrights, and continued to
permit unauthorized public performance of copyrighted compositions licensed through licensing
company).
Further, in balancing the hardships, Plaintiffs merely seek to restrict Defendant from that
which she is not legally entitled to do – namely to use Plaintiffs’ content for her own commercial
purposes. Defendant cannot deny that she is infringing on Plaintiffs’ copyrights and Defendant
is profiting from the unauthorized use of the content. Thus, the balance of equities tips decidedly
in Plaintiffs’ favor.
Finally, it is undisputed that there is a strong policy in favor of enforcing copyrights. See
Motown Record Co., L.P. v. iMesh.Com, Inc., No. 03 Civ. 7339, 2004 WL 503720, at *7
(S.D.N.Y. Mar. 12, 2004) (“Importantly, plaintiffs assert an action to enforce their U.S.
copyrights, an area in which the U.S. has a strong public interest.”).
Thus, because Plaintiffs have established a substantial likelihood of success on the merits
as well as satisfied the four-part test required by Salinger, the Court should grant Plainitffs’
motion for preliminary injunction.
CONCLUSION
Based upon the foregoing, Plaintiffs, Ardis Health, LLC, Curb Your Cravings, LLC,
USA Herbals, LLC, respectfully requests that the Court issue a Preliminary Injunction in the
form of the Proposed Order attached hereto.

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Dated: August 8, 2011
Respectfully submitted,
Ardis Health, LLC, USA Herbals, LLC and Curb
Your Cravings, LLC
By their attorneys,

_/s/ Christopher Hennessey_____________
David Valicenti
Christopher Hennessey
COHEN KINNE VALICENTI & COOK LLP
28 North Street, 3rd Floor
Pittsfield, MA 01201
Phone: [phone]
Fax: [phone]
[e-mail]
[e-mail]

CERTIFICATE OF SERVICE
I hereby certify that this document filed through the ECF system will be sent electronically to the
registered participants as identified on the Notice of Electronic Filing (NEF) and paper copies
will be sent to those indicated as non registered participants and the lawyer believed to be
counsel for the Defendant on August 8, 2011.
____/s/ Christopher M. Hennessey_______
Christopher Hennessey

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