Professional Documents
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Lisa Frank v. Orb Factory Complaint PDF
Lisa Frank v. Orb Factory Complaint PDF
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Kirk M. Hallam
(Pro Hac Vice application forthcoming)
kirk@hallamhoffman.com
Nicholas J. Hoffman
(Pro Hac Vice application forthcoming)
nick@hallamhoffman.com
HALLAM & HOFFMAN, Attorneys at Law
201 Santa Monica Boulevard, Suite 300
Santa Monica, California 90401
Tel: (310) 393-4006
Fax: (310) 564-7623
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DISTRICT OF ARIZONA
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Case No.
VERIFIED COMPLAINT AND
DEMAND FOR JURY TRIAL
vs.
The Orb Factory Limited, a
Canadian corporation,
Defendant.
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
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Lisa Frank, Inc. ("LFI") has, since 1979, produced and distributed, and
licensed others to produce and distribute, unique items of stationery, school supplies,
toys, activity sets and other products designed principally for girls and young women,
bearing the distinctive artwork of LFI's President and CEO, Lisa Frank. Over the last
37 years the Lisa Frank brand has attained iconic status and a dedicated following
within its target market because of the unique look and quality of LFI's product line.
Sales have been sustained over the life of the brand. LFI products are currently sold
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offers for sale and sells online at http://www.orbfactory.com and through various
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retailers including Wal-Mart and Amazon.com, among other things, products that
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utilize packaging and product design that imitate LFI packaging and products by
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appropriating the distinctive look and feel of Lisa Frank's packaging and products as
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they are presented to consumers, and that infringe LFI's trade dress rights and
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with LFI, when there is none. LFI is compelled to bring this action to ensure
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Defendant ceases offering for sale and selling infringing packaging and products and
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to seek damages and other relief as prescribed by law for Defendant's infringements
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and attorneys' fees arising from Defendant's (i) infringement of LFI's trade dress and
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Trademark Act of 1946 as amended ("Lanham Act"), 15 U.S.C. 1125(a); (ii) unfair
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jurisdiction over this action pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331,
1332, 1338 and 1367(a), as this case arises under the Lanham Act and the U.S.
Copyright Act.
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because a substantial part of the events or omissions giving rise to the claim occurred
and continue to occur in this District and because Defendant is doing business in this
District.
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6.
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specific jurisdiction of this Court by virtue of its substantial contacts with Arizona,
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including, but not limited to, doing business in Arizona, marketing its products to
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continues to have significant contact with the state of Arizona and has purposefully
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business at 6760 S. Lisa Frank Avenue, Tucson, Arizona, in this District. LFI
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licenses its original art work and intellectual property for use on a wide range of
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products nationwide designed primarily for the young female and young adult female
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markets. LFI owns (a) registered copyrights for artwork used on its licensed products
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and packaging; (b) registered and unregistered trademarks used in connection with its
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licensed products and packaging; and (c) trade dress rights in the distinctive look and
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its principal place of business at 225 Herring Cove Road, Halifax, Nova Scotia, B3P
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1L3, Canada. Orb Factory offers for sale and sells toys and children's' activity
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
products and competes directly with LFI's licensees and indirectly with LFI in the
U.S. market. Upon information and belief, Orb Factory offers for sale and sells
products that appropriate LFI's trade dress such that they are confusingly similar to
LFI's products, and that reproduce LFI's copyrighted works or that utilize derivative
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In 1979 Lisa Frank founded LFI to design, make and sell products and
packaging bearing her distinctive original artwork, especially for girls between the
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ages of 6 and 14. That same year LFI received its first million-dollar order for
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stickers from U.S. national retailer Spencer Gifts. From stickers LFI expanded its
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product range to include back-to-school supplies, stationery, toys and activity sets, all
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Over the last 37 years LFI has enjoyed significant commercial success.
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company in 2010.
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intellectual property from companies desirous of using it to target girls and young
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women for their products. LFI licenses a wide range of product lines featuring Lisa
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Frank artwork and LFI intellectual property including school supplies, stationery,
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backpacks, crafts, cosmetics, electronic goods, clothing, shoes, jewelry, bedding, toys
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and fashion accessories. LFI licensed products are packaged, marketed and sold
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using LFI's distinctive trade dress, trademarks and copyrighted designs on the outside
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of the products and their packaging which serve to identify them to consumers at the
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purchase point as Lisa Frank branded products. LFI's products are sold in retail
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proprietary trademarks and trade dress. The value of that business is thus directly
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correlative to the actual and perceived exclusivity and quality, and the effective
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
protection from unauthorized use, of that copyrighted artwork, trademarks and trade
dress.
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incorporated into its license agreements, LFI exerts rigorous quality controls over the
use of its copyrighted artwork, trademarks and trade dress, and all products
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Over the course of its business, LFI has incurred significant expenditure
in advertising and promoting the Lisa Frank brand, initially through print
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materials and latterly additionally through social media, including Facebook and the
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internet.
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LFI's advertising and promotion utilizes and has the look and feel of
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LFI's artwork and trade dress, including its unique color combinations, and
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designs is based upon its founder Lisa Frank's beliefs about the communicative
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power of color, market research and feedback from LFI's enthusiastic fan base. Lisa
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Frank herself remains personally involved in the creation and development of LFI's
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art and designs. The resulting unique and distinctive look and feel of LFI products
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has been and remains consistent over time and throughout LFI's product lines.
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Licensees are willing to pay significant royalties for the right to use LFI trade dress
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with their products and on their packaging so as to identify them as Lisa Frank
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products for consumers and meet consumer demand for Lisa Frank products.
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LFI's trade dress displays bold and highly detailed graphics and designs,
intense, extraordinary color combinations with a high degree of detail, and crisp,
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
precise, bold and vibrant colors, including use of rainbow colors that gradually fade
into one another along the package or product. Each LFI product is crafted, designed
and packaged with an emphasis on color, design and attention to detail to achieve the
distinctively recognizable look and feel that is associated with the Lisa Frank brand
and products.
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following elements, depending upon the product and its packaging, that create a
unique overall image and distinct visual impression, and are protectable as a whole:
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individually or grouped with one or more other such characters, with rainbow colored
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features, large eyes, and happy, friendly expressions; (2) use of brilliant, often
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rainbow sequenced, colors, graduated color sequences, and rainbow colors that fade
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into one another, including the use of the distinctively bright "Lisa Frank shades of
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pink" (using a customized ink formula that is a LFI trade secret); (3) package, cover
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and product surface designs featuring, in addition to the distinctive animal characters,
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combinations of rainbows, flowers, ice cream cones, butterflies, birds, rabbits, fish,
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cupcakes, bubbles, peace symbols, random words, hearts, happy faces, and stars,
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fades and Lisa frank pink, props and landscape features such as trees, pools, and
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snow; and (4) product packaging incorporating the look and feel of the products.
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Market and retail experts recognize that LFI's distinctive styles and color
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schemes on the exterior or, if present, packaging, of the products make LFI Products
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material wholly original to LFI that is copyrightable subject matter under the laws of
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registration to LFI for its collection of graphics and designs used on or with LFI
products. LFI now owns and at all relevant times has owned the copyrights for many
of the graphics and designs used on LFI's own and licensed products and packaging.
LFI's production, distribution and licensing of LFI products is and has at all times
been in strict compliance with the Copyright Act of 1976 and all other laws
governing copyright.
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Licensees are willing to pay significant royalties for the right to use LFI's copyright
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works with their products and packaging so as to meet consumer demand for Lisa
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Frank products.
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Defendant offers for sale and sells products that appropriate LFI trade
dress and that are substantially and confusingly similar to LFI products.
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LFI's trade dress in such a manner as to confuse consumers and lead them to believe
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that Defendant's products originate with or are approved by LFI and/or that
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Defendant has some affiliation or connection with LFI, when such is not the case.
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commerce images and designs that are similar enough to images and designs
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comprised in LFI trade dress that their use individually or together is likely to cause
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Defendant's goods, or commercial activities by LFI. The use of these images in this
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
impression and look and feel of a genuine authorized and licensed LFI product.
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PlushCraft:
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
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Sticky Mosaics:
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Stickeez:
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Plusheez:
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good will and commercial success, and is passing off its products to consumers as
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following LFI copyrighted works identified here by their U.S. Copyright registration
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LFI's registered copyrighted work(s) and Orb Factory's infringing products and
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VA001892013
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
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VA0001373728
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VAu000707146
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VA0001005200
LFI is the owner of the U.S. copyright in all rights, titles, and interests to
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the works listed above, all of which are properly registered with the United States
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Copyright Office.
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31.
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independent creation.
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Defendant had access to LFI's copyrighted works and the designs and
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Defendant was, or should have been, aware of LFI's rights in its trade
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dress and copyrights since Defendant first employed the former art director of LFI,
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Laura Binder, sometime in 2012 or 2013. Defendant has been aware of LFI's legal
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
objections to Defendant's infringement of its trade dress since at least July, 2015,
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trade dress, without license or authority from LFI, for its own commercial benefit.
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continue to deprive, LFI of the full benefits of licensing its intellectual property, is
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detrimental to the Lisa Frank brand and to LFI's goodwill, and is injurious to LFI's
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LFI has lost and will continue to lose revenues from the sale of
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property used in its licensing business, and LFI's reputation and goodwill, which it
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Defendant's acts compromise LFI's control over the use of its valuable
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trade dress and LFI's control over the quality and nature of the products offered under
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LFI's distinctive and valuable brand and using LFI's intellectual property.
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44.
LFI's intellectual property rights causing damage to LFI's good will and business
reputation. Defendant's acts have caused, and unless enjoined will continue to cause,
COUNT I
15 U.S.C. 1125(a))
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and has been unjustly enriched by the foregoing acts. Defendant's acts have caused,
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and unless enjoined will continue to cause, irreparable harm to LFI for which there is
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COUNT II
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caused a likelihood of confusion among the public and has unfairly competed with
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This is an action for common law unfair competition arising under the
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and has been unjustly enriched by the foregoing acts. Defendant's acts have caused,
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and unless enjoined will continue to cause, irreparable harm to LFI for which there is
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COUNT III
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infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. 101 et
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seq.
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59.
Defendant's conduct has at all times been knowing, willful, and with
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
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registration no. VA0001892013, greatly enhances the financial value of Orb Factory's
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infringing products.
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From the date of the creation of Orb Factory's infringing works, the
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of the infringing works through the execution of licenses, and/or actually selling,
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sources; (b) by substantially copying and displaying the infringing works in related
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marketing and promotional materials for the sale of the infringing works; and (c) by
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the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
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VA0001892013.
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materially contributed to the infringing conduct of others, such that it should be found
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to be contributorily liable.
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67.
Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
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suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
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COUNT IV
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infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. 101 et
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seq.
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Defendant's conduct has at all times been knowing, willful, and with
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
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registration no. VA0001373728, greatly enhances the financial value of Orb Factory's
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infringing products.
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From the date of the creation of Orb Factory's infringing works, the
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of the infringing works through the execution of licenses, and/or actually selling,
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sources; (b) by substantially copying and displaying the infringing works in related
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marketing and promotional materials for the sale of the infringing works; and (c) by
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the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
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VA0001373728.
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materially contributed to the infringing conduct of others, such that it also should be
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Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
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suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
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COUNT V
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infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. 101.
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Defendant's conduct has at all times been knowing, willful, and with
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
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registration no. VA0001005200, greatly enhances the financial value of Orb Factory's
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infringing products.
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From the date of the creation of Orb Factory's infringing works, the
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of the infringing works through the execution of licenses, and/or actually selling,
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sources; (b) by substantially copying and displaying the infringing works in related
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marketing and promotional materials for the sale of the infringing works; and (c) by
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the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
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VA0001005200.
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materially contributed to the infringing conduct of others, such that it should be found
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to be contributorily liable.
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
95.
Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant should
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suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
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COUNT VI
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infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. 101 et
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seq.
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101. Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VAu000707146.
102. Defendant's conduct has at all times been knowing, willful, and with
complete disregard to LFI's rights.
103. As a proximate cause of Orb Factory's wrongful conduct, LFI has been
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
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105. The inclusion of the signature elements of LFI's copyrighted work, U.S.
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registration no. VAu000707146, greatly enhances the financial value of Orb Factory's
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infringing products.
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106. LFI is entitled to its actual damages and profits, alternatively statutory
damages, pursuant to 17 U.S.C. 504.
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107. From the date of the creation of Orb Factory's infringing works, the
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of the infringing works through the execution of licenses, and/or actually selling,
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sources; (b) by substantially copying and displaying the infringing works in related
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marketing and promotional materials for the sale of the infringing works; and (c) by
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the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
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VAu000707146.
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materially contributed to the infringing conduct of others, such that it also should be
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109. Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
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111. As a direct and proximate result of the conduct of Defendant, LFI has
suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
112. Defendant's conduct is causing and, unless enjoined by this Court, will
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WHEREFORE, Plaintiff, Lisa Frank, Inc. respectfully prays for judgment in its
favor and against Defendant ordering:
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officers, employees, agents, successors and assigns, and all others in active concert or
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(a)
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(c)
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above;
(f)
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Plaintiff's trade dress and/or copyrights, or of Plaintiff's rights in its trade dress and/or
copyrights, or to use or to exploit its trade dress and/or copyrights;
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Defendant to file with this Court and serve on Plaintiff within thirty (30)
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days from the date of entry of any restraining order and/or injunction, a report in
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writing, under oath, setting forth in detail the manner and form in which Defendant
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has complied with the terms of the injunction in accordance with 15 U.S.C. 1116
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and otherwise;
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4.
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(b)
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Plaintiff as a result of Defendant's unlawful conduct, including lost profits and costs
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(c)
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Payment of interest;
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Such other and further relief as this court shall deem just and equitable.
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DATED:
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s/John N. Iurino
John N. Iurino
Attorneys for Plaintiff Lisa Frank, Inc.
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DATED:
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s/John N. Iurino
John N. Iurino
Attorneys for Plaintiff Lisa Frank, Inc.
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