Tufamerica, Inc. v. Amazon. Com, Inc. et al

Filing 1

COMPLAINT against Amazon. Com, Inc., On-Demand Publishing LLC, The Orchard Enterprises, Inc.. (Filing Fee $ 350.00, Receipt Number 13287)Document filed by Tufamerica, Inc. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C)(ama)

3.

This Court has personal jurisdiction over Defendants. Defendants have

directed their activities and marketing of infringing compact disc recordings at New York
residents, and New York residents are able to purchase compact discs that include
infringed recordings, infringed album artwork, and one or more infringed trademarks.
Defendants thus do continuous and systematic business in New York, upon information
and belief has entered into transactions directly related to the subject matter of this
lawsuit, and are present in New York for purposes of establishing this Court’s jurisdiction
over them under N.Y. C.P.L.R. §§ 301 and 302(a)(1).
PARTIES
4.

Plaintiff TufAmerica, Inc. is a New York corporation with a place of

business at 10 West 37th Street, Suite 601, New York, New York.
5.

Upon information and belief, defendant Amazon.com Inc. is a Delaware

corporation having a place of business at 410 Terry Avenue North, Seattle, Washington
98109.
6.

Upon information and belief, defendant On-Demand Publishing LLC is a

Delaware limited liability company having a place of business at 100 Enterprise Way,
Suite A200, Scotts Valley, CA 95066, and is a subsidiary of defendant Amazon.com Inc.
On-Demand Publishing LLC and Amazon.com Inc. shall together be referred to herein as
“Amazon.”
7.

Upon information and belief, defendant The Orchard Enterprises, Inc.

(“Orchard”) is a Delaware corporation with its principal place of business at 23 E 4th St #
3, New York, NY 10003-7023.

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FACTS
8.

TufAmerica is the owner of the Tuff City Music Group, which was founded

in 1981 as a rap and hip-hop label. Since then, TufAmerica has moved into other musical
genres, including blues, soul, funk, and R&B, acquiring the rights to thousands of
musical recordings and compositions.
9.

Over the years, TufAmerica has acquired rights to thousands of musical

recordings and compositions, which it has released under a number of different label
marks. TufAmerica releases original hip hop recordings under its TUFF CITY label
mark, using two different logos; hip hop reissues under its OLD SKOOL FLAVA label
logo and mark; New Orleans, blues, and jazz music under its NIGHT TRAIN label logo
and mark; soul music under its SOUL-TAY-SHUS label logo and mark; and certain
vintage blues recordings under its SWING TIME label logo and mark (together, the
“TufAmerica Marks”).
10.

TufAmerica is the owner of each of the TufAmerica Marks, and has used

the marks on and in connection with compact discs and LP vinyl albums manufactured
and sold by TufAmerica for many years. TufAmerica strictly controls the quality and
selection of the musical recordings it releases under each of the TufAmerica Marks.
Each of the TufAmerica Marks has acquired secondary meaning in the minds of
consumers by virtue of TufAmerica’s long use of the marks on and in connection with
the specific types of music released by TufAmerica under each mark. TufAmerica
maintains strict quality control over the music that is selected and released under each of
the TufAmerica Marks, and has invested substantial time and money in promoting
recordings released under each of the TufAmerica Marks. Compact discs and LP vinyl

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albums bearing the TufAmerica Marks have been offered for sale and sold throughout the
United States as well as in numerous foreign countries.
11.

TufAmerica distributes many of the albums and recordings it controls on

compact discs and, increasingly, vinyl LPs. These include reissues of existing albums as
well as new compilation albums that are personally curated by TufAmerica’s CEO,
Aaron Fuchs. In addition, TufAmerica also actively licenses the recordings and
compositions it controls for use in commercials, television shows, and films.
The Limited TufAmerica License
12.

In September, 2006, TufAmerica entered into a limited license with Digital

Music Group, Inc. (“Digital”), Orchard’s predecessor in interest, that permitted Digital to
market a large number of musical tracks, but only in certain limited ways (the
“TufAmerica License”). TufAmerica delivered thousands of musical recordings to
Digital under the TufAmerica License.
13.

The TufAmerica License specified in detail the rights that TufAmerica was

and, more importantly for this lawsuit, was not licensing to Digital. In particular, the
TufAmerica License limited Digital’s use of the licensed recordings to electronic
transmissions or mobile-phone ringtones; in other words, to digital downloads of the
songs (for example, by way of a service such as iTunes), and to digital downloads of
ringtones (for example, by way of a mobile phone operator such as Verizon Wireless).
14.

The TufAmerica License also granted limited rights to Digital to use certain

TufAmerica trademarks; in particular, the marks TUFAMERICA, TUFF CITY
RECORDS, and NIGHT TRAIN INTERNATIONAL. Digital could only use these
marks, however, “in connection with the advertising, marketing and promotion of the

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Masters, the Option Masters, if any, and [Digital’s] services, as set forth in this
Agreement.”
15.

The TufAmerica License was by no means a broad license of all of

TufAmerica’s rights in and to the underlying musical recordings. There were a number
of rights that it specifically did not grant to Digital. In particular, TufAmerica reserved
for itself “[t]he right to license the Masters or Option Masters in connection with the socalled brick and mortar ‘manufacture on demand’ of phonorecords (even if the Masters
are delivered to the manufacture on demand via Electronic Transmission prior to the
embodiment in a phonorecord).”
16.

In late 2007, Digital and Orchard merged, and Orchard assumed Digital’s

obligations under the TufAmerica License.
Amazon, On-Demand, and Orchard Infringe TufAmerica’s Rights
17.

Upon information and belief, despite the fact that TufAmerica reserved for

itself the right to make or license for “manufacture on demand” the recordings that were
the subject of the TufAmerica License, defendants have nonetheless conspired to offer
for sale, manufacture, and sell hundreds of different “manufacture on demand”
counterfeit compact discs that incorporate thousands of TufAmerica musical recordings
for which defendants have no license. This blatant disregard for TufAmerica’s rights
constitutes copyright infringement.
18.

In addition, defendants have further conspired to infringe numerous

common-law trademarks – in particular, the TufAmerica Marks – owned and controlled
by TufAmerica. Defendants have infringed these marks by displaying them on the
Amazon website on or in connection with Amazon’s offers to sell infringing
“manufacture on demand” compact discs and by placing them on their counterfeit

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“manufacture on demand” compact discs that incorporate TufAmerica’s musical
recordings, all despite the fact that defendants have no right or license to do so.
19.

The counterfeit “manufacture on demand” compact discs are offered for sale

by way of defendant Amazon’s website at www.amazon.com. In many cases, the
counterfeit versions of TufAmerica albums manufactured and sold by Amazon are listed
for sale on the same search result page, and therefore compete directly with, genuine
compact discs manufactured for TufAmerica and offered for sale by TufAmerica or one
or more of TufAmerica’s distributors. An example of such a search result page (for the
album “New Orleans Twist Party”) is annexed hereto at Exhibit A. The counterfeit
manufacture-on-demand product is displayed first, at the top of the page, with the
genuine, authorized product displayed immediately below it.
20.

Annexed hereto at Exhibit B is a listing of more than 1400 musical

recordings controlled by TufAmerica (the “Infringed Recordings”) that were included
among the recordings delivered to Orchard’s predecessor Digital in connection with the
limited TufAmerica License. TufAmerica owns or controls the copyrights in and to each
of the Infringed Recordings listed on Exhibit B. Upon information and belief, despite the
specific reservation of rights in the TufAmerica license, Orchard has supplied each of the
Infringed Recordings to Amazon, and each is available from Amazon as part of a
“manufacture on demand” compact disc, in violation of a registered or common-law
copyright that is owned or controlled by TufAmerica. Exhibit B also lists, where
relevant, the United States Copyright Office registration numbers associated with the
Infringed Recordings (a number of the recordings predate 1972 and are protected by
common law). There may be more TufAmerica recordings that Amazon and Orchard are
infringing by way of their “manufacture on demand” scheme; the Infringed Recordings

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listed on Exhibit B are merely ones that TufAmerica has been able to identify through its
own considerable time and effort.
21.

Annexed hereto at Exhibit C is a listing of 124 musical compositions (the

“Infringed Compositions”) controlled by TufAmerica that correspond with master
recordings delivered to Orchard’s predecessor Digital in connection with the limited
TufAmerica License. TufAmerica owns or controls the copyrights in and to each of the
Infringed Compositions listed on Exhibit C. None of these compositions were licensed to
Amazon or Orchard. Upon information and belief, Orchard has supplied the recordings
corresponding with each of the Infringed Compositions to Amazon, and each recording is
available from Amazon as part of a “manufacture on demand” compact disc, in violation
of a registered composition copyright that is owned or controlled by TufAmerica.
Exhibit C also lists the United States Copyright Office registration numbers associated
with the Infringed Compositions. There may be more TufAmerica compositions that
Amazon and Orchard are infringing by way of their “manufacture on demand” scheme;
the compositions listed on Exhibit C are merely ones that TufAmerica has been able to
identify through its own considerable time and effort.
22.

TufAmerica also owns or controls the rights to album artwork associated

with at least two of the albums listed on Exhibit B: Johnny Otis – Too Late To Holler,
and Various Artists – New Orleans Twist Party (the “Infringed Album Art”).
23.

Defendants have reproduced the Infringed Album Art in connection with

their unauthorized marketing and sale of counterfeit “manufacture on demand” compact
discs. Defendants have no right to do so, and their unauthorized display and reproduction
of TufAmerica’s Infringed Album Art constitutes an additional infringement of
TufAmerica’s intellectual property rights.

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24.

In addition to violating TufAmerica’s copyright and trademark rights,

defendants are substantially damaging TufAmerica’s business reputation as well. Upon
information and belief, most if not all of the counterfeit TufAmerica compact discs made
and sold by Amazon do not include the so-called “liner notes,” or written commentaries
that accompany many of the genuine compact discs manufactured and sold by
TufAmerica. Many music consumers appreciate these liner notes, and find that the
information contained in the notes help enhance their enjoyment and understanding of the
music included in the compact disc. There is, however, no way for the consumer to
determine when ordering a “manufacture on demand” compact disc on the Amazon
website whether or not the product the consumer receives will include any liner notes.
Upon information and belief, none of the infringing “manufacture on demand” compact
discs include TufAmerica’s liner notes.
25.

At least one consumer who purchased an infringing manufacture on demand

compact disc from Amazon has disapproved of the lack of liner notes. For the album
“Wardell Quezerque: Sixty Smokin’ Soul Senders Vol.1,” available as of August 4, 2011
at http://www.amazon.com/Wardell-Quezerque-Sixty-SmokinSenders/dp/B004LB6A1C/ref=sr_1_1?ie=UTF8&qid=1312053582&sr=8-1, a reviewer
posted a one-out-of-five-star review of Amazon’s counterfeit manufacture-on-demand
album, noting “This is a CD-R of the first half of a double CD set. The title of the CD is
‘Sixty Smokin' Soul Senders’ but only the first CD is provided. The CD lists the titles of
the 30 songs. BUT IT DOESN'T IDENTIFY THE ARTISTS. The original included a 24page booklet. The CD-R provides no information at all, just a folded sheet with NO
INFORMATION. The music is great, the lack of information is a disgrace. If you search
the Internet you can find who the artists are, but you shouldn't have to do that.”

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26.

The review notes another problem with defendants’ counterfeit products:

they may misdescribe the content (in this case, the counterfeit product includes only 30 of
the 60 songs available on the genuine TufAmerica version), and may fail to fully describe
the content they do include (in this case, by failing to list the artists). In other cases, the
counterfeit product does not include a listing of the tracks that are on the compact disc.
In each of these cases, it is TufAmerica that is harmed by defendants’ advertising and
sale of these counterfeit, low-quality products.
27.

In addition, defendants have also created manufacture on demand compact

discs that include unlicensed musical recordings bearing no relationship to any existing
TufAmerica album. For example, there is a manufacture on demand “album” available
through Amazon titled “Funky Soul” by the Dynamic Walton Brothers. This “album”
contains a single song – Funky Soul – that is just under three minutes long. It sells for
$15.99, and bears the TUFF CITY mark. There is no corresponding album in the
TufAmerica catalog. In addition to being counterfeit, Amazon’s marketing and sale of
this single-track album for $15.99 is damaging to TufAmerica’s reputation; no reasonable
customer is likely to be satisfied with the purchase of a compact disc that contains only
one short song, and consumer dissatisfaction will be directed at the label whose name on
the disc: TUFF CITY.
28.

As a further example of defendants’ blatant disregard for TufAmerica’s

rights, they have also changed the titles of some existing TufAmerica albums and are
marketing the very same sets of recordings as “manufacture on demand” compact discs
under entirely new names. For example, Amazon is making and selling the Grandmaster
Caz album “Grandest of Them All” under the title “The Real Old School: Hip Hop/Rap
Classics Vol. 1.” Of course defendants have no right either to market these albums or to

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change their titles. This retitling is likely to cause consumer confusion and constitutes
unfair competition under New York state law.

FIRST CLAIM FOR RELIEF
(Copyright Infringement – 17 U.S.C. § 501, et seq. – Musical Recordings)
29.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 28 above as if set forth fully herein.
30.

Amazon, On-Demand, and Orchard are each liable to TufAmerica for

Copyright Infringement under 17 U.S.C. § 501, et seq. for each and every sale of every
“manufacture on demand” compact disc incorporating any recording whose copyright is
(a) registered with the United States Copyright Office and (b) owned or controlled by
TufAmerica.
SECOND CLAIM FOR RELIEF
(Copyright Infringement – 17 U.S.C. § 501, et seq. – Musical Compositions)
31.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 30 above as if set forth fully herein.
32.

Amazon, On-Demand, and Orchard are each liable to TufAmerica for

Copyright Infringement under 17 U.S.C. § 501, et seq. for each and every sale of every
“manufacture on demand” compact disc incorporating any composition whose copyright
is (a) registered with the United States Copyright Office and (b) owned or controlled by
TufAmerica.
THIRD CLAIM FOR RELIEF
(Copyright Infringement – 17 U.S.C. § 501, et seq. – Album Artwork)
33.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 32 above as if set forth fully herein.

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34.

Amazon, On-Demand, and Orchard are each liable to TufAmerica for

Copyright Infringement under 17 U.S.C. § 501, et seq. for the unauthorized display,
reproduction, and sale of one or more works of art whose copyright is (a) registered with
the United States Copyright Office and (b) owned or controlled by TufAmerica.
FOURTH CLAIM FOR RELIEF
(Copyright Infringement – Common Law)
35.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 34 above as if set forth fully herein.
36.

Amazon, On-Demand, and Orchard are each liable to TufAmerica for

Copyright Infringement under New York common law for each and every sale of every
“manufacture on demand” compact disc incorporating any pre-1972 recording whose
copyright is (a) not registered with the United States Copyright Office and (b) owned or
controlled by TufAmerica.
FIFTH CLAIM FOR RELIEF
(Trademark Infringement – Common Law)
37.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 36 above as if set forth fully herein.
38.

Amazon, On-Demand, and Orchard are each liable to TufAmerica for

infringement of the following TufAmerica trademarks: TUFF CITY, OLD SKOOL
FLAVA, NIGHT TRAIN, SOUL-TAY-SHUS, and SWING TIME.
SIXTH CLAIM FOR RELIEF
(Unfair Competition – Common Law)
39.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 38 above as if set forth fully herein.

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40.

As a result of their unauthorized sale of musical content identical to that sold

by TufAmerica, but under different titles, Amazon, On-Demand, and Orchard are each
liable to TufAmerica for unfair competition under New York law.
SEVENTH CLAIM FOR RELIEF
(Civil Conspiracy)
41.

TufAmerica repeats and realleges the allegations set forth in paragraphs 1

through 40 above as if set forth fully herein.
42.

Defendants Amazon.com, On-Demand, and Orchard conspired to infringe

on TufAmerica’s rights in and to one or more musical recordings, compositions, artwork,
and the Infringed TufAmerica Trademarks.
43.

As a direct consequence of defendants’ conspiracies and the torts committed

in connection therewith, TufAmerica has been damaged.
44.

Defendants are jointly and severally liable to TufAmerica for each of the

civil conspiracies (copyright infringement and trademark infringement).

WHEREFORE, TufAmerica prays for judgment against defendants as follows:
1.
For a preliminary and permanent injunction enjoining defendants, and
their respective agents, servants, employees, officers, successors, licensees, and assigns,
and all persons acting in concert or participation with each or any of them, from directly
or indirectly infringing in any manner any musical recording owned or controlled by
TufAmerica, including but not limited to the titles listed on Exhibit B, by using any of
those recordings to create “manufacture on demand” compact discs.
2.
For a preliminary and permanent injunction enjoining defendants, and
their respective agents, servants, employees, officers, successors, licensees, and assigns,
and all persons acting in concert or participation with each or any of them, from directly
or indirectly infringing in any manner any musical composition owned or controlled by
TufAmerica, including but not limited to the titles listed on Exhibit C, by using any of
those compositions to create “manufacture on demand” compact discs.
3.
For a preliminary and permanent injunction enjoining defendants, and
their respective agents, servants, employees, officers, successors, licensees, and assigns,
and all persons acting in concert or participation with each or any of them, from directly
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or indirectly infringing in any manner any artwork owned or controlled by TufAmerica,
by reproducing any of that artwork in either digital or hard copy form on or in connection
with the advertising or sale of any “manufacture on demand” compact discs.
4.
For a preliminary and permanent injunction enjoining defendants, and
their respective agents, servants, employees, officers, successors, licensees, and assigns,
and all persons acting in concert or participation with each or any of them, from directly
or indirectly infringing in any manner any trademark owned or controlled by TufAmerica
by reproducing an TufAmerica trademark or any mark confusingly similar thereto on or
in connection with the advertising or sale of any “manufacture on demand” compact
discs.
5.
For statutory damages against each defendant, including where
appropriate statutory damages of $150,000 per infringement, for each infringement of a
registered copyright owned or controlled by TufAmerica.
6.
For an order impounding (a) all compact discs manufactured by
defendants in violation of TufAmerica’s rights; (b) all plates, molds, matrices, masters,
tapes, film negatives, computer files, compact disc replication machines, or other articles
by means of which such copies of the infringing compact discs may be reproduced; and
(c) defendants’ records documenting the manufacture, sale, or receipt of things involved
in any such violation.
7.
For an order directing the destruction of (a) all compact discs
manufactured by defendants in violation of TufAmerica’s rights; (b) all plates, molds,
matrices, masters, tapes, film negatives, computer files, compact disc replication
machines, or other articles by means of which such copies of the infringing compact discs
may be reproduced.
8.
For an accounting, the imposition of a constructive trust, restitution to
TufAmerica of defendants’ unlawful proceeds, and damages according to proof in
connection with the sales by defendants of all pre-1972 recordings owned or controlled
by TufAmerica.
9.
trial.
10.

For punitive and exemplary damages in an amount as may be awarded at

For prejudgment interest according to law.

11.
For TufAmerica’s costs incurred in this action including its reasonable
attorneys’ fees.
12.

For such other and further relief as the Court may deem just and proper.

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