JS 44C/SDNY

REV.4/f012 i»4 CV
CIVIL COVE
JUDGE RAMOS
• nfe JS-44 civil cover sheet an t and the information contained herein neither replace nor supplement the filinganO>«ervl
pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the
Judicial Conference of the United States in September 1974, is required for use of the Clerk of Court for the purpose of
initiating the civil docket sheet.
PLAINTIFFS
CONOPCO, INC. d/b/a UNILEVER
ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER
Gregory P. Gulia, Vanessa C. Hew, Mitchell A. Frank
Duane Morris LLP
1540 Broadway, New York, NY 10036-4086 (212) 692-1000
DEFENDANTS
WELLS ENTERPRISES, INC.
ATTORNEYS (IF KNOWN)
AUG 0 6 2014
CAUSEOF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE ABRIEF STATEMENT OFCAUSE)
(DO NOTCITEJURISDICTIONAL STATUTES UNLESS DIVERSITY)
Copyright infringement, common law unfair competition, deceptive trade practices
Hasthis ora similar case been previously filed inSDNYat anytime? No |x] Yes f~J Judge Previously Assigned
If yes, wasthis case Vol. Q Invol. • Dismissed. No Q Yes [~J If yes, give date. & Case No.
IS THIS AN INTERNATIONAL ARBITRATION CASE? No|^ YeS [~j
(PLACEAN[x] INONE BOX ONLY)
TORTS
NATURE OF SUIT
ACTIONS UNDER STATUTES
CONTRACT PERSONALINJURY PERSONAL INJURY FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES
[ J110 INSURANCE [ ]310 AIRPLANE\„ 1,1362 PERSONAL INJURY - [ J610 AGRICULTURE [ J 422 APPEAL [ J 400 STATE
I 1120 MARINE I J 315 AIRPLANE PRODUCT WED MALPRACTICE - [ J 620 OTHER FOOD & 28 USC 158 REAPPORTIONMENT
[ 1130 MILLER ACT LIABILITY *" %. [ ]365 PERSONAL'INJURY DRUG [ J 423 WITHDRAWAL [ J410 ANTITRUST
[]140 NEGOTIABLE [ ]320 ASSAULT, LIBEL & ^ PRODUCT LIABILITY [ I 625 DRUG RELATED 28 USC 157 [ J 430 BANKS & BANKING
INSTRUMENT SLANDER [1368" ASBESTOS PERSONAL SEIZURE OF [ I 450 COMMERCE
I J 150 RECOVERY OF [ J 330 FEDERAL INJURYPRODUCT
LIABILITY' .
PROPERTY [ ]460 DEPORTATION
OVERPAYMENT & EMPLOYERS' 21 USC 881 PROPERTY RIGHTS I )470 RACKETEER INFLU
ENFORCEMENT LIABILITY
•a*-
[ ]630 LIQUOR LAWS ENCED & CORRUPT
OF JUDGMENT [ ]340 MARINE PERSONALPROPERTY ^ ] 64fl_ RR & TRUCK KJ820 COPYRIGHTS ORGANIZATION ACT
[ ] 151 MEDICARE ACT [ ]345 MARINE PRODUCT i ]6«r AIRLINE REGS []830 PATENT (RICO)
[ J 152 RECOVERY OF LIABILITY [ 1370 OTHER FRAUD [ l 660 OCCUPATIONAL [ ] 840 TRADEMARK [ J 480 CONSUMER CREDIT
DEFAULTED [ ]350 MOTOR VEHICLE [ J 371 TRUTH IN LENDING SAFETY/HEALTH [ J 490 CABLE/SATELLITE TV
STUDENT LOANS [ ]355 MOTOR VEHICLE [ ]380 OTHER PERSONAL [ I 690 OTHER 1)810 SELECTIVE SERVICE
(EXCL VETERANS) PRODUCT LIABILITY PROPERTY DAMAGE SOCIAL SECURITY ( ]850 SECURITIES/
I 1153 RECOVERY OF [ ]360 OTHER PERSONAL [ ]385 PROPERTY DAMAGE COMMODITIES/
OVERPAYMENT INJURY PRODUCT LIABILITY LABOR [ J861 HIA(1395ff) EXCHANGE
OF VETERAN'S ».-V [ ] 862 BLACKLUNG(923) I] 875 CUSTOMER
BENEFITS I ] 71'0 FAIR LABOR [ J 863 DIWC/DIWW (405(g)) CHALLENGE
[ 1160 STOCKHOLDERS STANDARDS ACT [ ) 864 SSID TITLE XVI 12 USC 3410
SUITS [ ]720 LABOR/MGMT I J 865 RSI (405(g)) [ ]890 OTHER STATUTORY
I ]190 OTHER PRISONER PETITIONS RELATIONS ACTIONS
CONTRACT
f [ J 730 LABOR/MGMT [ J891 AGRICULTURAL ACTS
I ]1»5 CONTRACT I ]510 MOTIONS TO REPORTING & FEDERAL TAX SUITS [ J 892 ECONOMIC
PRODUCT ACTIONS UNDER STATUTES VACATE SENTENCE DISCLOSURE ACT STABILIZATION ACT
LIABILITY 2$ USC2255 [ I 740 RAILWAY LABOR ACT [ ]870 TAXES (U.S. Plaintiff or [ ] 893 ENVIRONMENTAL
I 1196 FRANCHISE CIVIL RIGHTS [ 1530 HABEAS CORPUS I ]7?0 OTHER LABOR Defendant) MATTERS
[ 1535 DEATH PENALTY LITIGATION [ ] 871 IRS-THIRD PARTY [ J 894 ENERGY
I H41 VOTING I ]540 MANDAMUS & OTHER I ] 791 EMPLRETINC 26 USC 7609 ALLOCATION ACT
[ ]442 EMPLOYMENT SECURITY ACT [ ]B95 FREEDOM OF
REAL PROPERTY [ ]443 HOUSING/ INFORMATION ACT
ACCOMMODATIONS IMMIGRATION [ ] 900 APPEAL OF FEE
[ ]210 LAND [ ]444 WELFARE PRISONER CIVIL RIGHTS DETERMINATION
CONDEMNATION [ ]445 AMERICANS WITH [ I 462 NATURALIZATION UNDER EQUAL
[ J 220 FORECLOSURE DISABILITIES • [ 1550 CIVIL RIGHTS APPLICATION ACCESS TO JUSTICE
[ J 230 RENT LEASE &
EJECTMENT [ ]446
EMPLOYMENT
AMERICANS WITH
[ ]555 PRISON CONDITION [ J 463 HABEAS CORPUS-
ALIEN DETAINEE
[ J 950 CONSTITUTIONALITY
OF STATE STATUTES
[ ]240 TORTS TO LAND DISABILITIES -OTHER [ ]465 OTHER IMMIGRATION
[ ]245 TORT PRODUCT
LIABILITY
[ J 440 OTHER CIVIL RIGHTS
(Non-Prisoner)
ACTIONS
I J 290 ALL OTHER
REAL PROPERTY
Check if demanded in complaint:
CHECK IF THIS IS A CLASS ACTION
UNDER FRCP. 23
DEMAND $_ OTHER
Check YES only if demanded in complaint
JURYDEMAND: S YES • NO
DO YOU CLAIM THIS CASE IS RELATED TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
IF SO, STATE:
JUDGE DOCKET NUMBER
NOTE: Please submit at the time of filingan explanation of why cases are deemed related.
(PLACEAN x INONE BOX ONLY)
S 1 Original
Proceeding
2 Removed from
State Court
] | 3. all parties represented
I I b. At leastone
party Is pro so.
ORIGIN
3 Remanded D 4 Reinstated or
from Reopened
Appellate
Court
| | 5 Transferred from L7J 6 Multidistrict
(Specify District) Litigation
LJ 7 Appeal toDistrict
Judge from
Magistrate Judge
Judgment
(PLACEAN x INONE BOX ONLY)
• 1 U.S. PLAINTIFF • 2 U.S. DEFENDANT
BASIS OF JURISDICTION
3 FEDERAL QUESTION Q4 DIVERSITY
(U.S. NOT A PARTY)
IF DIVERSITY, INDICATE
CITIZENSHIP BELOW.
(28 USC 1322, 1441)
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITYCASES ONLY)
(Place an [X] in one box for Plaintiff and one box for Defendant)
CITIZEN OF THIS STATE
CITIZEN OF ANOTHER STATE
PTF DEF
1 1 CITIZEN OR SUBJECT OF A
FOREIGN COUNTRY
INCORPORATED or PRINCIPAL PLACE
OF BUSINESS IN THIS STATE
PTF DEF PTF DEF
13 3 INCORPORATED and PRINCIPAL PLACE 5 5
OF BUSINESS IN ANOTHER STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)
Conopco, Inc. d/b/a Unilever
700 Sylvan Avenue
Englewood Cliffs, New Jersey 07632
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)
Wells Enterprises, Inc.
One Blue Bunny Drive
Le Mars, Iowa 51031
FOREIGN NATION
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADE THAT, AT THIS TIME, I HAVE BEEN UNABLE, WITH REASONABLE DILIGENCE, TO ASCERTAIN THE
RESIDENCE ADDRESSES OF THE FOLLOWING DEFENDANTS:
Checkone: THIS ACTION SHOULD BEASSIGNED TO: • WHITE PLAINS |X| MANHATTAN
(DO NOT check either box if this a PRISONER PETITION/PRISONER CIVIL RIGHTS COMPLAINT.)
DATE ?\loU^" SIGNATURE OF/OTORNEY OF RECORD ADMITTED TO PRACTICE IN THIS DISTRICT
XYES (DATE ADMITTED Mo. 11 Yr. 2004]
mey Bar Code # 4617 RECEIPT*
Magistrate Judge is to be designated by the Clerk
Magistrate Judge
to£»^'
-THE*
of the Court.
is so Designated.
Ruby J. Krajick, Clerk of Court by. Deputy Clerk, DATED
UNITED STATES DISTRICT COURT (NEW YORK SOUTHERN)
6
JDGERA?«!OS
DUANE MORRIS LLP
Gregory P. Gulia
Vanessa C. Hew
Mitchell A. Frank
1540 Broadway
New York, New York 10036-4086
Telephone: (212) 692-1000
Facsimile: (212) 692-1020
Attorneys for Plaintiff
1
$<*
16210
IN THE UNITED STATES DISTRICT COURT
FOR THE SOUTHERN DISTRICT OF NEW YORK
- - X
CONOPCO, INC. d/b/a UNILEVER,
Plaintiff,
Civil Action No.:
j ••• cz
COMPLAINT AND
JURY DEMAND
(..">
-against-
WELLS ENTERPRISES, INC.,
Defendant.
-X
Plaintiff, Conopco, Inc. d/b/a Unilever ("Unilever"), by its undersigned attorneys, Duane
Morris LLP, for its Complaint alleges as follows:
SUBSTANCE OF THE ACTION
1. This is an action for copyright infringement, common law unfair competition and
deceptivetrade practices under the laws of the State of New York. Plaintiff brings this action
based upon Defendant's unauthorized past and current use of an advertising campaign that
comprises audiovisual works, text, script, performances, artwork and images that have been
copied from and infringe upon copyrighted works in one of Plaintiff s advertising campaigns and
which provide the basis for Plaintiffs claims for copyright infringement under the Copyright Act
of 1976, 17 U.S.C. § 101 et seq. and for substantial and related claims of unfair competition and
deceptive trade practices under the laws of the State of New York. Plaintiff seeks injunctive
relief and damages.
JURISDICTION AND VENUE
2. This Court has jurisdiction under Sections 1332(a), 1338(a) and 1338(b) of the
Judicial Code, 28 U.S.C. §§ 1332(a), 1338(a) and 1338(b), and under principles of
supplementary jurisdiction. Venue properly lies in this District under Sections 1391(b) and
1391(c) of the Judicial Code, 28 U.S.C. §§ 1391(b) and 1391(c), because the Defendant conducts
business in and/or has substantial contacts with and/or may be found in the Southern District of
New York, and a substantial portion of the events at issue have arisen and/or will arise in this
judicial district.
PARTIES
3. Unilever is a New York corporation, with a place of business at 700 Sylvan
Avenue, Englewood Cliffs, New Jersey 07632. Unilever is the owner of the copyrights at issue
in the advertising campaign (collectively, "Plaintiffs Copyrights").
4. Upon information and belief, Defendant, Wells Enterprises, Inc., is an Iowa
corporation having a place of business at One Blue Bunny Drive, Le Mars, Iowa 51031.
FACTS COMMON TO ALL CLAIMS FOR RELIEF
A. Plaintiffs Activities
5. Since 1912, Unilever and/or its affiliates, and their predecessors and/or their
licensees have extensively marketed, advertised, promoted and sold frozen confections products,
including ice cream, gelato and ice cream toppings products under the BREYERS® mark
throughout the United States.
6. BREYERS® brand ice creamproductsconsistently rank amongthe most popular
ice creamproducts nationwide. As one of the most prestigious brands in the ice creamcategory,
Unilever sells its BREYERS® brand ice cream products through retail stores, including grocery
and convenience stores, supermarkets, drug stores, and national chain stores across the country.
7. Over the years, Unilever has continuously and extensively advertised, marketed
and promoted its BREYERS® brand ice creamproducts in a wide variety of national media
including television, radio, print and online, including on a website located at the domainname
www.breyers.com. As a result of Unilever's extensive advertising and promotion of its
BREYERS® brandproducts, the volumeof sales of goods sold under the BREYERS® brand
have been enormous and the BREYERS® brand is consistently one of the highest selling brands
for ice creamproducts in the United States. In fact, the BREYERS®brand is currently the
highest selling brand for ice cream products in the United States.
8. The extraordinary and longstanding success of Plaintiff s BREYERS®brand ice
cream has fostered wide renown with the trade and public and the products sold under the
BREYERS® brand have a reputation for being of the highest quality.
9. In 2013, Unilever created the original BREYERS® Moments television
commercial (the "BREYERS® Moments Commercial"), including all audiovisual works,
performances, text, script, artwork and images for the BREYERS®Moments Commercial.
Unilever created and uses the BREYERS® Moments Commercial to market, promote and
advertise the highly successful BREYERS® brand ice cream products. Annexed hereto as
Exhibit 1 is a copy of the BREYERS® Moments Commercial. The BREYERS® Moments
Commercial features copyrighted audiovisual works, performances, text, script, artwork and
images. The BREYERS® Moments Commercial was and is currentlyplayed on televisionand
online.
10. The BREYERS® Moments Commercial begins with a distinctiveon-screen super
that reads, "BREYERS® - TOGETHER MAKING MOMENTS." Throughout the Commercial,
Unilever features additional on-screen supers, including "STOLEN MOMENTS," "THAT'S MY
BOY MOMENT" and "QUALITY MOMENT." The on-screen supers are featured with scenes
of family members and close friends enjoyingice cream. All of the on-screensupers
prominently feature the term "moment" or "moments" in green font, while the other terms
appear in white font.
11. Unilever also created the original BREYERS®Moments digital marketing
campaign which consists of a Facebook activation, email blasts, e-newsletters, videos on demand
and a Twitter activation (the "BREYERS®Moments Digital Campaign"). Annexed hereto as
Exhibit 2 is a copy of the BREYERS® Moments Digital Campaign. The BREYERS® Moments
Digital Campaign features copyrighted artwork, text and images. The BREYERS®Moments
Digital Campaign was and is currently circulated online. The BREYERS® Moments
Commercial and the BREYERS® Moments Digital Campaign are collectively referred to herein
as the "BREYERS® Moments Campaign."
12. The BREYERS® Moments Campaign contains material which is wholly original.
The BREYERS®Moments Campaign constitutes copyrightable subject matter that is protected
against unauthorized copying under the laws of the United States.
13. Unilever filed with the U.S. Copyright Office an application to register the
copyrights in the BREYERS® Moments Campaign. The U.S. Copyright Office issued the
following copyright registration for the BREYERS® Moments Campaign: U.S. Copyright
Registration No. PA0001900548.
B. Defendant's Unlawful Activities
14. Upon information and belief, Defendant manufactures, markets, distributes and
sells frozen confection products under the name BLUE BUNNY® throughout the United States.
Defendant sells its BLUE BUNNY® products through numerous mass retail trade channels, such
as supermarkets, drug stores, convenience stores and national chain stores, including the same
retailers in which Unilever sells its BREYERS® ice cream products.
15. Upon information and belief, Defendant, independently or through a third party
created, reproduced, distributed or prepared derivative works of original elements of the
BREYERS® Moments Campaign in an advertising campaign for its BLUE BUNNY® ice cream
products (the "Infringing Campaign"). The Infringing Campaign consists of a television
commercial (the "Infringing Commercial") as well as a print advertisement (the "Infringing Print
Advertisement"). Annexed hereto as Exhibit 3 is a copy of the Infringing Commercial.
Annexed hereto as Exhibit 4 is a copy of the Infringing Print Advertisement.
16. Upon information and belief, Defendant has played or circulated and is playing or
circulating the Infringing Campaign in a wide variety of national media, including on television,
in print and online. The Infringing Campaign is currently played or circulated to consumers
throughout this District, this State and the United States.
17. The Infringing Campaign is comprised of audiovisual works, performances, text,
script, artwork and images which are substantially similar to the audiovisual works,
performances, text, script, artwork and images in the copyrighted BREYERS® Moments
Campaign.
18. The BREYERS® Moments Campaign and the Infringing Campaign feature at
least the following strikingly similar scenes, text, script, artwork and images:
BREYERS® Moments Campaign Infringing Campaign
Family members and close friends enjoying ice
cream
Family members and close friends enjoying ice
cream
A child holding a spoonful of ice cream in
front of their pregnant mother's belly
A child holding a spoonful of ice cream in
front of their pregnant mother's belly
A boy and his father licking ice cream from
bowls
A boy licking ice cream from his bowl
A grandfather and grandson doing "cheers"
with their ice cream cones
Two children doing "cheers" with their ice
cream sandwiches
A group of teen girls giggling and laughing
over ice cream
A group of teen girls giggling and laughing
with their ice cream cones
On-screen supers that label the "moments" as
"BREYERS® - TOGETHER MAKING
MOMENTS," "STOLEN MOMENTS,"
"THAT'S MY BOY MOMENT" and
"QUALITY MOMENT"
A voice over that labels the "moments" as,
"BIG ONES," "SMALL ONES," and "LIFE
CHANGING MOMENTS"
The term "moments" emphasized by a
distinctive font color
The term "moments" emphasized by a
distinctive font color
19. Upon information and belief, Defendant had access to the BREYERS® Moments
Campaign, intentionally copied or caused to be copied the audiovisual works, text, script,
performances, artwork and images featured in the BREYERS® Moments Campaign, and used
identical, or nearly identical audiovisual works, text, script, performances, artwork and images
for the Infringing Campaign. Upon information and belief, Defendant copied or caused to be
copied the BREYERS® Moments Campaign for the specific purpose of infringing Plaintiffs
Copyrights in the BREYERS® Moments Campaign.
20. Upon information and belief, Defendant has engaged in a pattern of deliberate and
willful infringement designed to confuse consumers as to the source of its products and trade
upon Unilever's valuable intellectual property, goodwill and reputation.
21. Defendant has engaged in a pattern of deliberate and willful infringement
designed to misappropriate Plaintiffs Copyrights and intellectual property, confuse consumers
as to the source of its products and trade upon the valuable good will and reputation of Plaintiff s
intellectual property.
22. Upon information and belief, Plaintiff has lost and will continue to lose
substantial revenue from the Infringing Campaign and will sustain damage as a result of
Defendant's wrongful conduct and Defendant's use of the Infringing Campaign. Defendant's
wrongful conduct has also deprived and will continue to deprive Unilever of opportunities for
expanding its goodwill. Upon information and belief, unless enjoined by this Court, Defendant
intends to continue its course of conduct and to wrongfully use, infringe upon, and otherwise
profit from the BREYERS® Moments Campaign and works derived therefrom. Upon
information and belief, unless enjoined by this Court, Defendant's conduct has caused and will
continue to cause injury to the reputation of Plaintiff and its well-known and distinctive brands.
23. As a direct and proximate result of the acts of Defendant alleged above, Plaintiff
has already suffered irreparable damage and lost revenues. Plaintiff has no adequate remedy at
law to redress all of the injuries that Defendant has caused and intends to cause by its conduct.
Plaintiff will continue to suffer irreparable damage and loss of revenues as a result of damage to
Plaintiffs goodwill and reputation, and the market for Plaintiffs goods and services, and injury
to Plaintiffs reputation and brands until Defendant's actions are enjoined by this Court.
24. On May 5, 2014, Unilever sent a letter to Defendant advising Defendant of
Plaintiffs rights in the BREYERS® Moments Campaign and demanding that Defendant cease
its illegal activities. Annexed hereto as Exhibit 5 is a copy of Plaintiff s May 5, 2014 letter to
Defendant.
25. To date, Defendant has not ceased its illegal activities.
FIRST CLAIM FOR RELIEF
COPYRIGHT INFRINGEMENT (17 U.S.C. § 101 et sea.)
26. Plaintiff realleges paragraphs 1 through 25 above and incorporates them by
reference as if fully set forth herein.
27. The BREYERS® Moments Campaign consists of original works of authorship,
embodying copyrightable subject matter, subject to the full protection of the United States
copyright laws. Unilever is the sole and exclusive owner of all rights, title and interest in and to
the copyrights in the BREYERS® Moments Campaign.
28. Upon information and belief, as a result of the open use of the copyrighted
BREYERS® Moments Campaign, Defendant had access to the BREYERS® Moments
Campaign prior to the creation of Defendant's Infringing Campaign.
29. Without the permission or authorization of Plaintiff, Defendant has continued to
copy and create unauthorized derivate works based on the copyrighted BREYERS® Moments
Campaign and play and circulate the Infringing Campaign, which is substantially similar to the
BREYERS® Moments Campaign.
30. Upon information and belief, Defendant has profited from the sales of products
sold under the Infringing Campaign, which is substantially similar to the BREYERS® Moments
Campaign.
I
31. Upon information and belief, unless enjoined by this Court, Defendant intends to
continue its course of conduct and to wrongfully use, infringe upon and otherwise profit from
Plaintiffs copyrighted BREYERS® Moments Campaign.
32. The natural, probable and foreseeable result of Defendant's wrongful conduct has
been and continues to be to deprive Unilever of the rights and benefits granted to it under
copyright, including the exclusive right to use, reproduce and exploit Plaintiffs Copyrights and
to create derivative works based on Plaintiffs Campaign, and to deprive Unilever of the
goodwill in Plaintiffs Copyrights, and to injure Unilever's relations with present and prospective
customers.
33. By its actions, as alleged above, Defendant has infringed and violated Unilever's
exclusive rights under copyrights in violation of the Copyright Act, 17 U.S.C. §501, by
reproducing, playing and circulating an advertising campaign that uses audiovisual works, text,
script, performances, artwork and images that are strikingly, or substantially, similar to
Unilever's copyrighted BREYERS® Moments Campaign, all without Unilever's authorization
or consent.
' 34. Upon information and belief, Defendant's infringement of Plaintiff s Copyrights
is willful and deliberate and Defendant has profited at the expense of Unilever.
35. Defendant's conduct has caused and will continue to cause irreparable injury to
Unilever unless enjoined by this Court. Unilever has no adequate remedy at law.
SECOND CLAIM FOR RELIEF
COMMON LAW UNFAIR COMPETITION
36. Plaintiff realleges paragraphs 1 through 35 above and incorporates them by
reference as if fully set forth herein.
37. Upon information and belief, Defendant was aware of Plaintiff s prior creation of
the BREYERS® Moments Campaign and adopted and used the Infringing Campaign in
disregard of Plaintiff s prior intellectual property rights. Upon information and belief, the sale of
goods under Defendant's Infringing Campaign has resulted in the misappropriation of and
trading upon Plaintiffs goodwill and business reputation at Plaintiffs expense and at no expense
to Defendant. The effect of Defendant's misappropriation of Plaintiff s goodwill symbolized by
the BREYERS® Moments Campaign is to unjustly enrich Defendant, damage Plaintiff and
confuse and/or deceive the public.
38. Defendant's conduct constitutes unfair competition with Plaintiff, all of which has
caused and will continue to cause irreparable injury to Plaintiffs goodwill and reputation unless
enjoined by this Court. Plaintiff has no adequate remedy at law.
THIRD CLAIM FOR RELIEF
DECEPTIVE TRADE PRACTICES (N.Y. General Business Law $ 349)
39. Plaintiff realleges paragraphs 1 through 38 above and incorporates them by
reference as if fully set forth herein.
40. By reason of the acts and practices set forth above, Defendant has and is engaged
in deceptive trade practices or acts in the conduct of a business, trade or commerce, or furnishing
of goods and/or services, in violation of § 349 of the New York General Business Law.
41. The public is likely to be damaged as a result of the deceptive trade practices or
acts engaged in by the Defendant.
42. Unless enjoined by the Court, Defendant will continue said deceptive trade
practices or acts, thereby deceiving the public and causing immediate and irreparable damage to
the Plaintiff. Plaintiff has no adequate remedy at law.
WHEREFORE, Plaintiff demands judgment as follows:
10
1. Preliminarily and permanently enjoining Defendant, its employees, agents,
officers, directors, attorneys, successors, affiliates, subsidiaries and assigns, and all those in
active concert and participation with Defendant, from:
(a) reproducing, selling, distributing, performing or preparing derivative
works of, or authorizing any third party to reproduce, sell, distribute,
perform or prepare derivative works of the Infringing Campaign or any
other item that infringes Plaintiffs rights;
(b) directly or indirectly infringing the Plaintiffs Copyrights or continuing to
market, offer, sell, dispose of, license, lease, transfer, display, advertise,
reproduce, develop or manufacture any works derived or copied from the
BREYERS® Moments Campaign or the Plaintiffs Copyrights or to
participate or assist in any such activity;
(c) continuing to market, offer, sell, dispose of, license, transfer, exploit,
advertise, promote, reproduce, develop, manufacture, import, or contribute
to or actively participate in the marketing, offering, sale, disposition,
licensing, transferring, exploiting, advertising, promotion, reproduction,
development, manufacture or importation of any products that bear,
contain or incorporate any unauthorized copy or reproduction of the
copyrighted BREYERS® Moments Campaign or any design substantially
similar thereto or derived therefrom;
(d) selling, using or authorizing any third party to sell or use any copy,
simulation, confusingly similar variation, or colorable imitation of
Plaintiffs BREYERS® Moments Campaign in any manner or form;
11
(e) imitating, copying or making any unauthorized use of Plaintiff s
BREYERS® Moments Campaign or any copy, simulation, variation or
imitation thereof;
(f) making or displaying any statement or representation that is likely to lead
the public or the trade to believe that Defendant's goods are in any manner
associated or affiliated with or approved, endorsed, licensed, sponsored,
authorized or franchised by or are otherwise connected with Plaintiff;
(g) using or authorizing any third party to use in connection with the
rendering, offering, advertising, promotion or importing of any goods, any
false description, false representation, or false designation of origin, or any
marks, names, words, symbols, devices or trade dress which falsely
associate Defendant's goods or services with Plaintiff or tend to do so;
(h) registering or applying to register as a copyright, trademark, service mark,
trade name or other source identifier or symbol of origin any copyright,
mark, trade dress or name that infringes on or is likely to be confused with
Plaintiffs Copyrights or marks;
(i) engaging in any other activity constituting unfair competition with
Plaintiff, or constituting an infringement of Plaintiff s rights;
(j) aiding, assisting or abettingany other party in doing any act prohibited by
sub-paragraphs (a) through (i).
2. Requiring Defendant to formally abandon with prejudice any and all applications
to register any copyrights consisting of, or containing, any aspect of the Infringing Campaign
either alone or in combination with other words and/or designs.
12
3. Requiring Defendant to formally abandon with prejudice any and all applications
to register any trademark or service mark consisting of any aspect of the Infringing Campaign
either alone or in combination with other words and/or designs.
4. Requiring Defendant to recall immediately any use of the Infringing Campaign
wherever located in the U.S., and to cease circulating or playing the Infringing Campaign, and to
immediately remove the Infringing Campaign from public access.
5. Directing that Defendant abandon its current practice of infringing,
misappropriating, and/or copying Plaintiffs Copyrights, and/or any original elements thereof, in
connection with any businesses.
6. Directing that Defendant deliver for destruction all products and goods and other
materials in its possession, or under its control, incorporating or bearing simulations, variations
or colorable imitations of Plaintiff s BREYERS® Moments Campaign, used alone or in
combination with other words and/or designs.
7. Directing such other relief as the Court may deem appropriate to prevent the trade
and public from deriving the erroneous impression that any product or service manufactured,
sold, distributed, licensed or otherwise offered, circulated or promoted by Defendant is
authorized by Plaintiff or related in any way to Plaintiffs products.
8. Directing that Defendant file with the Court and serve upon Plaintiffs counsel
within thirty (30) days after entry of such judgment, a report in writing under oath, setting forth
in detail the manner and form in which Defendant has complied therewith.
9. Awarding Plaintiff such damages as it has sustained or will sustain by reason of
Defendant's copyright infringement and unfair trade practices of Plaintiff s intellectual property.
13
10. Awarding Plaintiff all gains, profits, propertyand advantages derivedby
Defendant from such conduct; and pursuant to 15 U.S.C. § 1117, awarding Plaintiff an amount
upto three times the amount of the actual damages sustained as a result of Defendant's violation
of the Lanham Act.
11. Awarding Plaintiff all gains, profits, propertyand advantages obtainedor derived
by Defendant fromits acts of copyright infringement or, in lieu thereof, should Plaintiff so elect,
such statutorydamages as the Court shall deemproper, as provided in 17 U.S.C. § 504(c),
includingdamages for willful infringement of up to $150,000 for each infringement.
12. Awarding Plaintiff such exemplary and punitive damages as the Court finds
appropriate to deter any future willful infringement.
13. Awarding Plaintiff its costs and disbursements incurred in this action, including
its reasonable attorneys' fees, as provided in 17 U.S.C. § 505 and 15 U.S.C. § 1117.
14. Awarding Plaintiff interest, including pre-judgment interest, on the foregoing
sums.
14
JURY DEMAND
Plaintiff hereby demands a trial by jury pursuant to Fed. R. Civ. P. 38.
Dated: New York, New York
August ,2014
Respectfully submitted,
DUANE MORRIS LLP
By: l/ajyiV&S^JJL£rQ
Gregory P. Gulia • i
Vanessa C. Hew |
Mitchell A. Frank
1540 Broadway
New York, New York 10036-4086 f
Telephone: (212) 692-1000 I
Facsimile: (212) 692-1020 [
|
Attorneys for Plaintiff t
15
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EXHIBIT 1
HARD COPY FILING OF DISC
June Email
Deployment Date: June 25
Subject Line:
NAME, Celebrate Delicious
Moments this
Independence Day!
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8/6/2014
Email
Digital Banners
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MOMENTS - Q2/Q3
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8/6/2014
8/6/2014
Custom Media Units
Kiip Reward Email
Millennial Location Banner
DHBU
Washington, DC
WEEKEND EXTENDED
Warning: EXCESSIVE HEAT
WARNING. In effect untH Friday. Jul
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8/6/2014
8/6/2014
EXHIBIT 3
HARD COPY FILING OF DISC
BLUE BUNNY
NEW YORK
LONDON
SINGAPORE
PHILADELPHIA
CHICAGO
WASHINGTON, DC
SAN FRANCISCO
SILICON VALLEY
SAN DIEOO
BOSTON
HOUSTON
LOS ANOELES
HANOI
HO CHI MINH CITY
ATLANTA
May 5, 2014
Puanejyjprri5*
FIRM and AhFlUA IE OFFICES
GREGORY P. GUL1A
DIRECT DIAL: +1 212 692 1027
PERSONAL FAX: +1 212 202 6014
E-MAIL: gpgulia@duanemorris.com
M'ww.duanemorris com
BALTIMORE
WILMINGTON
MIAMI
BOCA RATON
P1TTSBUROH
NEWARK
LAS VEGAS
CHERRY HILL
LAKE TAHOE
MYANMAR
OMAN
/t GCC RWRhZWATH'EOFFICE
OFDUtXF.MORmS
MEXICQ CITY
ALLIANCE WITH
MIRANDA 4 ESTAVTLLO
BY FEDEX AND EMAIL
Natalie M. Hanlon-Leh, Esq.
Faegre Baker Daniels LLP
3200 Wells Fargo Center
1700 Lincoln St.
Denver, CO 80203
Email: natalie.hanlonleh@faegrebd.com
Re. Copying of BREYERS® MOMENTS Video by Wells Enterprises, Inc.
(Our Ref. Y0759-00864)
Dear Natalie:
As you are aware, this law firm acts as outside trademark litigation counsel in the United
States to Conopco, Inc. d/b/a Unilever and its affiliates (collectively "Unilever"). We are writing
to you as counsel for Wells Enterprises, Inc. ("Wells") with respect to Wells' recent advertising
campaign for Blue Bunny ice creams.
Unilever produces and markets a line of ice cream products under the famous
BREYERS® trademark (hereinafter, the "BREYERS® Brand"), which has been in use since at
least as early as 1912and, as a result of enormous sales and marketing activities by Unilever and
its predecessors, symbolizes and represents a tremendous amount of goodwill to Unilever.
Unilever has been marketing and promoting its BREYERS® Brand products using a
distinctive Breyers' "Moments" television commercial (the "BREYERS® MOMENTS
Commercial"), that originally went on air in June of 2013 and has since become uniquely
associated with the BREYERS® products. In conjunction with the BREYERS® MOMENTS
Commercial, Unilever also implemented a digital marketing campaign which also featured the
"Moments" theme, consisting of, among other things, a Facebook activation, email blasts, e-
Duane Morris llp
1540 BROADWAY NEW YORK. NY 10036-4086 PHONE: +1 212 692 1000 FAX: +1 2U 692 1020
DuaneJV[onis
Natalie M. Hanlon-Leh, Esq.
Faegre Baker Daniels LLP
May 5, 2014
Page 2
newsletters, video ondemand (Hulu and Netflix) and a Twitter activation ("Digital Campaign").
The focus of Unilever's BREYERS® MOMENTS Commercial and the Digital Campaign is
people spending authentic quality time with loved ones while eating BREYERS® ice cream. The
BREYERS® MOMENTS Commercial comprises several short scenes featuring family members
sharing heartwarming experiences together while eating BREYERS® ice cream, each ofwhich
is summed up and/or captioned by a corresponding on-screen "moment" reference. Inaddition,
the Digital Campaign also features similar family shared moments involving BREYERS® ice
cream.
Unilever's BREYERS® MOMENTS Commercial begins with the super "BREYERS --
TOGETHER MAKING MOMENTS" (at 2 seconds), andis punctuated throughout the rest of
the commercial with distinctive on-screen supersthat read: "STOLEN MOMENTS" (at 8
seconds); "THAT'S MY BOY MOMENT" (at 17 seconds); and "QUALITY MOMENT" (at
22 seconds). Each of these on-screen supers refers tothe experience that has just been shared by
family members, and prominently features the term "moment" or"moments" ina green font that
contrasts with the white font used for the other words. The use of a different color is intended to,
and does, emphasize the word "moment" or "moments."
Unilever has recently become aware of Wells' "real moments" advertising campaign for
its BLUE BUNNY icecream, consisting of, at least, a television commercial and printed
advertisement, in which Wells substantially imitates the theme, creative expression and overall
look and feel of the BREYERS® MOMENTS Commercial, in violation of Unilever's rights
under the Copyright Act and the LanhamAct.
As an initial matter, Wells' "real moments" television commercial (the "Infringing
Commercial ") makes a prominent use ofthe terms "moments" or "real moments", inmuch the
same was as does the BREYERS®MOMENTS Commercial. For example, the Infringing
Commercial also consistsof several scenes depicting family members or close friends enjoying
ice cream. The Infringing Commercial uses a voice over to punctuate the video with references
to"moments," namely: "Life is a series of moments.... Big ones... Small ones... Life changing
moments... And the best moments are the ones... You never planned.... These are the
moments... We help make even sweeter... Blue Bunny. Real Ice Cream. Real Moments."
(emphasis added). In addition, the last frame ofthe Infringing Commercial features the tag line
"REAL ICE CREAM. REALMOMENTS", whichprominently emphasizesthe words "ICE
CREAM" and "MOMENTS" in a different color that contrasts with the color used for the word
"REAL."
Lest therebe anydoubt as to Wells' intent in attempting to trade upon Unilever's
goodwill inthe BREYERS® MOMENTS Commercial and the Digital Campaign, one ofthe
"moments" shown inthe Infringing Commercial is a young child holding a spoonful oficecream
in front ofhis pregnant mother's belly, ascene which is virtually identical to the scene depicted
PuaneMorris
Natalie M. Hanlon-Leh, Esq.
Faegre Baker Daniels LLP
May 5, 2014
Page 3
in one of the e-newsletters sent by Unilever as part of the Digital Campaign. In addition, the
Infringing Commercial shows a young boywho licks icecream from the bowl, which is again
extremely similar to the BREYERS® MOMENTS Commercial, which shows a young boy and
his father both lickingthe ice creamfromtheir bowl in the "THAT'S MYBOYMOMENT"
sequence. Furthermore, Wells' Infringing Commercial features twoyoungsters who do "cheers"
with their ice cream sandwiches, while Unilever's Digital Campaign included a video of a
grandfather andgrandson doing "cheers" withtheir icecream cones, in what was called "A
Sunday Ritual Moment". And yet again, Unilever's Digital Campaign featured a video of a
group of teengirls giggling and laughing overice cream, in what was called "ABetter Than
Boys Moment", while Wells' Infringing Commercial also features a group of teengirls giggling
and laughing with their ice cream cones.
Such blatant similarities cannot plausibly be the result of coincidence, and can onlybe
interpreted as a deliberate attempt onthe part of Wells to misappropriate and capitalizeon
Unilever's intellectual property and the equity which Unilever had already built in the
marketplace.
Not only does Wells' Infringing Commercial blatantlycopy expressive elements of the
BREYERS® MOMENTS Commercial and the Digital Campaign, but Wells' deliberate decision
to showthe word"moments" in a different color can onlyhave been intendedto emphasize the
wordandthereby conjure up an imageof, and trade uponthe goodwill associated with, the
BREYERS® MOMENTS Commercial andDigital Campaign. Furthermore, the rhythmand style
of the editing, as well as themoodof Wells' Infringing Video, are substantially similarto the
BREYERS® MOMENTS Commercial.
Wells' unauthorized copying of Unilever's copyrighted BREYERS® MOMENTS
Commercial andDigital Campaign elements constitutes copyright infringement in violation of
the U.S. Copyright Act, 17 U.S.C. § 501 etseq. Inaddition, Wells' Infringing Commercial is
likely to cause confusion as to the product being advertised because of its similarities to the
BREYERS® MOMENTS Commercial and Digital Campaign, and therefore constitutes
deceptive, misleading or confusing conduct prohibited by Section 43(a) of the Lanham Act, 15
U.S.C. § 1125. Accordingly, Wells' actions constituteunfair competitionand/or false
designation of originunder federal, state and commonlaw, as well as copyright infringement
under 17 U.S.C. §501 etseq.
Under the applicable laws, Unileverwould be entitled not onlyto immediate and
permanent injunctive relief against Wells' infringement, but also to recovery of statutory
damages, actual damages, punitive damages, treble damages, and any profits that Wells made
fromits infringing enterprise. Indeed, under the U.S. Copyright Act, Unilever would be entitled
to statutory damages of up to $150,000per infringement for Wells' acts of copyright
infringement alone. In light of Well's willful infringement of Unilever's intellectual property
Duanejvlorris
Natalie M. Hanlon-Leh, Esq.
Faegre Baker Daniels LLP
May 5, 2014
Page 4
rights, relief would also likely include recovery of Unilever's attorneys' fees and costs incurred
in connection with litigating the matter.
We therefore demand that you or Wells supply us with written confirmation by May 12,
2014 that Wells, and itsaffiliates, subsidiaries, business partners, and those acting inconcert
with Wells oronits behalf have permanently ceased using the Infringing Commercial and all
related printed advertisements and other materials which copy orsimulate Unilever's
BREYERS® MOMENTS Commercial and/or the Digital Campaign.
This letter is written without prejudice toany of Unilever's rights, claims and/or
remedies, all of which are expressly reserved.
Very truly yours,
Gregory P. Gulia
GPG:slj
DM2\4902249,7