Vous êtes sur la page 1sur 13

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 1 of 13 PageID #: 1

IN THE UNITED STATES DISTRICT COURT


FOR THE SOUTHERN DISTRICT OF INDIANA
INDIANAPOLIS DIVISION
USA FOOTBALL, INC.,

)
)
)
)
)
)
)
)
)
)
)

Plaintiff,
v.
USA FOOTBALL NETWORK
CORPORATION and DENNIS
WILSON,
Defendants.

CASE NO. 1:14-CV-2115

COMPLAINT
Plaintiff USA Football, Inc. ("USA Football"), through its undersigned counsel, and for
its complaint against USA Football Network Corporation ("USAFNC") and Dennis Wilson
("Wilson", and together with USAFNC, the "Defendants"), alleges as follows:
Nature of the Action
1.

This is an action for trademark infringement, unfair competition, and false

designation of origin arising under the Lanham Act, 15 U.S.C. 1051 et seq., and the statutes
and common law of the State of Indiana.
Jurisdiction and Venue
2.

Jurisdiction over the parties and the subject matter of this action is proper in this

Court pursuant to 15 U.S.C. 1121 (actions arising under the Lanham Act; 28 U.S.C. 1331
(actions under the laws of the United States of America); 28 U.S.C. 1332(a) (diversity of
citizenship between the parties) and 28 U.S.C. 1338(a) (actions arising under an Act of
Congress relating to, among other things, trademarks). This Court has supplemental jurisdiction

1
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 2 of 13 PageID #: 2

over the claims in this Complaint that arise under state statutory and common law pursuant to
28 U.S.C. 1367(a).
3.

This Court has personal jurisdiction over Defendants because Defendants do

business in Indiana.
4.

Venue is properly founded in this judicial district pursuant to 28 U.S.C. 1391

because a substantial part of the events giving rise to the claims in this action occurred within the
State of Indiana.
Parties
5.

USA Football is a 501(c)(3) non-profit organization organized under the laws of

Virginia, with its headquarters at 45 N. Pennsylvania Street, Suite 700, Indianapolis, Indiana
46204.
6.

USAFNC is a New Jersey corporation. Its registered agent is Neil Malvone, 86

Washington Ave., Milltown, New Jersey 08860.


7.

Wilson is an individual residing in New Jersey with an address of 17 Essex Road,

Essex Fells, New Jersey 07021.


Allegations Applicable to All Counts
8.

USA Football was endowed by that National Football League ("NFL") and the

National Football League Players Association ("NFLPA") in 2002. USA Football is the official
youth football development partner of the NFL and its thirty-two teams. USA Football hosts
more than two hundred football training events annually, offering education for coaches and
game officials, skill development for players and resources for youth football league
administrators. As the United States sole member of the International Federation of American
Football, USA Football manages the U.S. National Football Team program. Each February, USA

2
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 3 of 13 PageID #: 3

Football hosts the International Bowl, a series of competitions between the U.S. National Teams
and international teams.
9.

USA Football is the owner of all right, title, and interest in and to the mark USA

FOOTBALL (the "USA FOOTBALL Mark"). The USA FOOTBALL Mark is registered with
the United States Patent and Trademark Office (the "USPTO") as U.S. Registration No.
3,182,472 (the "'472 Registration") and is identified for use in association with, among other
things, sports exhibitions and events in the field of football (from youth onward), with a date of
first use in 2002. A true and accurate copy of the '472 Registration is attached hereto as
Exhibit A.
10.

On February 9, 2012, the '472 Registration became incontestable. A true and

accurate copy of the USPTO's acknowledgement of USA Football's declaration of


incontestability is attached as Exhibit B.
11.

USA Football is also the owner of all right, title, and interest in and to the below-

pictured mark (the "USA FOOTBALL Design Mark", and together with the USA FOOTBALL
Mark, the "USA FOOTBALL Marks"):

The USA FOOTBALL Design Mark is registered with the United States Patent and Trademark
Office (the "USPTO") as U.S. Registration No. 3,241,236 (the "'236 Registration") and is
identified for use in association with, among other things, sports exhibitions and events in the

3
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 4 of 13 PageID #: 4

field of football (from youth onward), with a date of first use in 2003. A true and accurate copy
of the '236 Registration is attached hereto as Exhibit C.
12.

On May 19, 2013, the '236 Registration became incontestable. A true and

accurate copy of the USPTO's acknowledgement of USA Football's declaration of


incontestability is attached as Exhibit D.
13.

By virtue of USA Football's extensive, continuous, and exclusive use of the USA

FOOTBALL Marks in connection with, among other things, sports exhibitions and events in the
field of football (from youth onward), the USA FOOTBALL Marks have come to be recognized
and relied upon by consumers as identifying such services and distinguishing such services from
similar services offered by others.
14.

As a result of USA Football's extensive, continuous, and exclusive use of the

USA FOOTBALL Marks in connection with, among other things, sports exhibitions and events
in the field of football (from youth onward), USA Football has developed substantial goodwill in
the USA FOOTBALL Marks.
15.

Wilson is the President and CEO of USAFN. In addition, he holds himself out as

the President and CEO of an entity called "Sports In The USA, Inc." Sports In The USA, Inc. is
not a legally organized business entity under the laws of any State, but is rather an assumed
business name for Wilson.
16.

Wilson (doing business as Sports In The USA, Inc.) is the previous owner of the

domain names www.usafootball.com, www.usafootball.net, and www.usafootball.org. He


transferred these domains, along with the trademark USA FOOTBALL and any related
trademarks, to USA Football in 2002 for considerable consideration.

4
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 5 of 13 PageID #: 5

17.

The Defendants organize a college football game that is held in Jackson,

Mississippi. The Defendants refer to this game as the "USA Football Bowl", though it is not
sanctioned by, sponsored by, or affiliated with USA Football (or the National Collegiate Athletic
Association). Rather, Defendants solicit college football players across the country (including in
Indiana) who have exhausted their collegiate eligibility to pay an entry fee and travel to Jackson,
Mississippi at their own expense to play in the game. Players must provide their own game
pants, all equipment (including helmets, pads, and mouthpieces), as well as a practice jersey and
pants. In association with the USA Football Bowl, the Defendants host an event they refer to as
the "USA Football Festival" where players (who have paid their $700 entry fee) participate in a
"combine" in which they are "certified" for participation in the game. These events are slated to
occur beginning on January 16, 2015 and ending January 20, 2015.
18.

The Defendants promote these events via the following websites:

(1) www.usafootballbowl.com; (2) www.usacollegefootball.org; (3) www.sportsintheusa.com;


(4) www.usafootballnews.com; and (5) www.usacollegefootballbowl.com (collectively, the
"Sites"). Printouts of these websites are attached hereto as Exhibits E, F, G, H, and I
respectively.
19.

In late 2013, USA Football learned of the Defendants' USA Football Bowl as the

result of confusion in the marketplace. USA Football contacted Defendants on November 21,
2013, and in a telephone call on November 22, 2013, demanded that they cease and desist use of
the USA FOOTBALL Marks.
20.

After several months of negotiations, Defendants agreed to no longer refer to their

game as the "USA Football Bowl." See attached Exhibit J.

5
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 6 of 13 PageID #: 6

21.

However, the Defendants continue to promote the game as the "USA Football

Bowl" via the Sites. See attached Exhibits E, F, G, and H.


22.

Unless enjoined by this Court, Defendants' continued use of the USA

FOOTBALL Marks in connection with its bowl game and the related festivities is likely to
continue causing consumers to be confused, mistaken, or deceived as to the affiliation,
connection, or association of such bowl game and related festivities with USA Football and as to
the origin, sponsorship, or approval of such bowl game and related festivities by USA Football.
COUNT I: UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
(15 U.S.C. 1125(a))
23.

USA Football reincorporates and realleges paragraphs 1 through 22 as though

fully set forth herein.


24.

The Defendants' use in commerce of the USA FOOTBALL Marks has caused and

will continue to cause the public to believe, contrary to fact, that the pay-to-play game it
organizes is sponsored, licensed and/or otherwise approved by, or is in some way connected to or
affiliated with USA Football.
25.

The Defendants' use in commerce of the USA FOOTBALL Marks already has

and continues to cause mistake, deception, and consumer confusion.


26.

The Defendants' use of the USA FOOTBALL Marks is likely to cause initial

interest confusion among the general public.


27.

The Defendants had actual and constructive knowledge of USA Football's prior

use of the USA FOOTBALL Marks when they appropriated it for their own use.
28.

The Defendants had actual and constructive knowledge of the 472 Registration

when they began using the USA FOOTBALL Marks.

6
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 7 of 13 PageID #: 7

29.

The foregoing actions of Defendants constitute unfair competition and false

designation of origin in violation of 15 U.S.C. 1125(a), and, on information and belief, have
been knowing, deliberate, willful, intended to cause mistake or to deceive, and in disregard of
USA Football's rights.
30.

The Defendants have unfairly profited from the actions alleged.

31.

By reason of foregoing willful and intentional actions, USA Football has suffered

damage to the goodwill associated with the USA FOOTBALL Marks.


32.

The Defendants' activities have irreparably harmed and, if not enjoined, will

continue to irreparably harm the general public who has an interest in being free from confusion,
mistake and deception.
33.

By reason of the Defendants' acts, USA Football's remedy at law is not adequate

to compensate it for injuries inflicted by the Defendants. Accordingly, USA Football is entitled
to permanent injunctive relief pursuant to 15 U.S.C. 1116.
34.

By reason of the Defendants' knowing, intentional, deliberate, willful, and

malicious acts and pursuant to 15 U.S.C. 1117, USA Football is entitled to (i) the Defendants'
profits; (ii) damages (and to have those damages trebled); and (iii) the costs of this action.
35.

This is an exceptional case making USA Football eligible for an award of

attorneys' fees under 15 U.S.C. 1117.


COUNT II: TRADEMARK INFRINGEMENT
(15 U.S.C. 1114(1))
36.

USA Football reincorporates and realleges paragraphs 1 through 35 as though

fully set forth herein.


37.

The Defendants' commercial use of the USA FOOTBALL Marks already has and

continues to cause mistake, deception, and consumer confusion


7
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 8 of 13 PageID #: 8

38.

The Defendants' use of the USA FOOTBALL Marks is likely to cause initial

interest confusion among the general public.


39.

The above-described acts of the Defendants constitute trademark infringement in

violation of 15 U.S.C. 1114(1), and, on information and belief, have been knowing, deliberate,
willful, intended to cause confusion or mistake, or to deceive, and in disregard of USA Football's
rights.
40.

The Defendants have unfairly profited from the infringing actions alleged.

41.

By reason of the Defendants' willful and intentional acts, USA Football has

suffered damage in an amount as yet to be ascertained but which continues to accrue and
accumulate.
42.

The Defendants' willful and intentional activities have irreparably harmed and, if

not enjoined, will continue to irreparably harm, USA Football.


43.

The Defendants' willful and intentional activities have irreparably harmed and, if

not enjoined, will continue to irreparably harm, the general public who has an interest in being
free from confusion, mistake and deception.
44.

By reason of the Defendants' willful and intentional acts, USA Football's remedy

at law is not adequate to compensate him for the injuries inflicted by the Defendants.
Accordingly, USA Football is entitled to injunctive relief pursuant to 15 U.S.C. 1116.
45.

By reason of the Defendants' knowing, intentional, deliberate, willful, and

malicious acts and pursuant to 15 U.S.C. 1117, USA Football is entitled to (i) the Defendants'
profits; (ii) damages (and to have those damages trebled); and (iii) the costs of this action.
46.

This is an exceptional case making USA Football eligible for an award of

attorneys' fees under 15 U.S.C. 1117.

8
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 9 of 13 PageID #: 9

COUNT III: COMMON LAW UNFAIR COMPETITION


AND TRADEMARK INFRINGEMENT
47.

USA Football reincorporates and realleges paragraphs 1 through 46 as though

fully set forth herein.


48.

The Defendants' use in commerce of the USA FOOTBALL Marks in connection

with its pay-to-play football game is likely to causeand has causedconfusion, mistake, and
deception as to the source of the Defendants' services.
49.

The Defendants' conduct constitutes trademark infringement and unfair

competition under the common law of the State of Indiana, entitling USA Football to relief.
50.

The Defendants have unfairly profited from the actions alleged herein.

51.

By reason of the Defendants' actions described above, USA Football has suffered

damage to the goodwill associated with the USA FOOTBALL Marks and has suffered
irreparable harm.
52.

By reason of the Defendants' acts, USA Football's remedy at law is not adequate

to compensate it for the injuries inflicted by the Defendants. Accordingly, USA Football is
entitled to permanent injunctive relief.
53.

USA Football is informed and believes and on that basis alleges that the

Defendants' conduct has been intentional and willful and in conscious disregard of USA
Football's rights.
COUNT IV: UNJUST ENRICHMENT
54.

USA Football reincorporates and realleges paragraphs 1 through 53 as though

fully set forth herein.

9
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 10 of 13 PageID #: 10

55.

At the expense of and detriment to and without the prior express or implied

authorization of USA Football, the Defendants have been unjustly enriched through their
knowing, intentional, deliberate, willful, and malicious use of the USA FOOTBALL Marks.
56.

By reason of the Defendants' actions described above, USA Football has suffered

damages in an amount as yet to be ascertained but which continues to accrue and accumulate and
has suffered irreparable harm.
57.

By reason of the Defendants' acts, USA Footballs remedy at law is not adequate

to compensate it for the injuries inflicted by the Defendants. Accordingly, USA Football is
entitled to permanent injunctive relief.
COUNT V: CONVERSION
(Ind. Code 35-43-4-3)
58.

USA Football reincorporates and realleges paragraphs 1 through 57 as though

fully set forth herein.


59.

By engaging in the knowing, intentional, deliberate, willful, and malicious actions

described above, the Defendants have exerted unauthorized control over the USA FOOTBALL
Marks with the intent to deprive USA Football of its benefit.
60.

The Defendants have therefore committed conversion as defined under Ind. Code

35-43-4-3.
61.

The Defendants' conversion of the USA FOOTBALL Marks has proximately

caused USA Football to suffer damages in an amount as yet to be ascertained but which
continues to accrue and accumulate and irreparable harm.
62.

By reason of the Defendants' acts, USA Footballs remedy at law is not adequate

to compensate it for the injuries inflicted by Defendants. Accordingly, USA Football is entitled
to permanent injunctive relief.
10
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 11 of 13 PageID #: 11

COUNT VI: DECEPTION


(Ind. Code 35-43-5-3(a)(6))
63.

USA Football reincorporates and realleges paragraphs 1 through 62 as though

fully set forth herein.


64.

By engaging in the knowing, intentional, deliberate, willful, and malicious actions

described above, the Defendants have disseminated to the public information that the Defendants
know is false, misleading, or deceptive, with the intent to promote the Defendants' business
and/or commercial interests.
65.

The Defendants have therefore committed deception under I.C. 35-43-5-3(a)(6).

66.

The Defendants' deception has proximately caused USA Football to suffer

damages in an amount as yet to be ascertained but which continues to accrue and accumulate and
irreparable harm.
67.

By reason of Defendants' acts, USA Footballs remedy at law is not adequate to

compensate it for the injuries inflicted by Defendant. Accordingly, USA Football is entitled to
permanent injunctive relief.
COUNT VII: INDIANA CRIME VICTIMS RELIEF ACT
68.

USA Football reincorporates and realleges paragraphs 1 through 67 as though

fully set forth herein.


69.

Under the Indiana Crime Victims Act (I.C. 35-24-3-1), a person that suffers

pecuniary loss as a result of the violation of I.C. 35-43 et seq., may bring a civil action against
the person who caused the loss for treble damages, costs of the action, and reasonable attorneys
fees.

11
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 12 of 13 PageID #: 12

70.

The Defendants have violated Ind. Code. 35-43 through knowing, intentional,

deliberate, willful, and malicious commission of (i) conversion under Ind. Code 35-43-4-3 and
(ii) deception under Ind. Code. 35-43-5-3.
71.

USA Football is the victim of the Defendants knowing, intentional, deliberate,

willful, and malicious criminal actions, and, as a result, has suffered actual pecuniary damages in
an amount as yet to be ascertained but which continue to accrue and accumulate.
72.

USA Football is accordingly entitled to an award of those actual damages as well

as statutory treble damages, corrective advertising damages, costs, and reasonable attorneys
fees.
DEMAND FOR JURY TRIAL
USA Football hereby respectfully requests that all issues raised by this Complaint be
tried by jury.
PRAYER FOR RELIEF
WHEREFORE, USA Football, by counsel, hereby requests that this Court enter an order:
(a)

enjoining the Defendants from using the USA FOOTBALL Marks or any other

name, word, mark, or designation confusingly similar to the USA FOOTBALL Marks in
connection with their bowl game, the related festivities, or any other service similar to those
offered by USA Football;
(b)

requiring Defendants to provide an accounting of all gains, profits, savings and

advantages realized by it from the unauthorized use of the USA FOOTBALL Marks or any
name, word, mark, or designation confusingly similar thereto;

12
US.55428780.01

Case 1:14-cv-02115-RLY-TAB Document 1 Filed 12/29/14 Page 13 of 13 PageID #: 13

(d)

requiring Defendants to surrender any and all merchandise, design, plans, and

marketing materials featuring the USA FOOTBALL Marks or any name, word, mark, or
designation confusingly similar thereto;
(e)

awarding USA Football all damages, costs, disbursements, expenses, and

attorneys fees owed to them pursuant to the Lanham Act and Indiana common and statutory law
by reason of Defendants willful infringement and conversion of the USA FOOTBALL Marks;
(f)

declaring that this is an exceptional case under 15 U.S.C. 1117 due to

Defendants knowing, intentional, deliberate, willful, and malicious acts of trademark


infringement and awarding USA Football its reasonable attorneys fees; and
(g)

all other just and proper relief to which USA Football is entitled.

Respectfully submitted,
Dated: December 29, 2014

/s/ Louis T. Perry


Louis T. Perry (#25736-49)
Amie Peele Carter (#19523-29)
FAEGRE BAKER DANIELS LLP
300 North Meridian Street
Suite 2700
Indianapolis, IN 46204
(317) 237-0300
(317) 237-0000 (Fax)
louis.perry@FaegreBD.com
amie.peelecarter@FaegreBD.com
Attorneys for Plaintiff, USA Football, Inc.

13
US.55428780.01