Civil Action No. I* \Q ^\J bjo

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1 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 1 of 15 FILED IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF VIRGINIA Alexandria Division 2010 JUM Ib P 1-53 WOLF TRAP FOUNDATION FOR THE PERFORMING ARTS 1645 Trap Road Vienna, Virginia Plaintiff, v. clerk us r^vr.iciccurt ALEXANDRIA. VIRGINIA Civil Action No. I* \Q ^\J bjo EDUCATIONAL BROADCASTING CORPORATION dba THIRTEEN/WNET 450 West 33rd Street, 6th and 1th Floor New York, NY COMPLAINT JURY TRIAL DEMANDED KUNHARDT PRODUCTIONS INC. 48 Wheeler Avenue, 3rd Floor, Pleasantville, NY and- -and- ARK MEDIA Ark Media 540 State Street Brooklyn, NY Defendants. Plaintiff Wolf Trap Foundation for the Performing Arts ("Wolf Trap"), by its undersigned counsel, brings this action against Defendants Educational Broadcasting Corporation dba Thirteen / WNET ("WNET"), Kunhardt Productions Inc. ("Kunhardt"), and Ark Media ("Ark") (collectively "Defendants") and alleges as follows:

2 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 2 of 15 NATURE OF THE CASE 1. This is an action for trademark and service mark infringement, unfair competition, false advertising, false designation of origin, unjust enrichment, and violation of the Consumer Protection Act of Commonwealth of Virginia. The claims arise under the statutes of the United States (Trademark Act of 1946, 15 U.S.C et seq.), the statutes of the Commonwealth of Virginia (Va. Code Ann et seq.), and the common law. JURISDICTION AND VENUE 2. The Court has jurisdiction over the subject matter of this action under Section 39 of the Trademark Act of 1946, 15 U.S.C. 1121; under 28 U.S.C and 1338; and under the doctrine of supplemental jurisdiction, 28 U.S.C Venue is proper in this district under 28 U.S.C. 1391(b) because a substantial part of the events or omissions giving rise to the claims occurred, and a substantial part of the property that is the subject of the action is situated, in this judicial district. 4. On information and belief, the Court may exercise personal jurisdiction over each of the Defendants because each has transacted or solicited business, derived substantial revenue from goods used or services rendered, contracted to supply services, and/or has caused tortious injury in the Commonwealth of Virginia. THE PARTIES 5. Plaintiff Wolf Trap is a not-for-profit organization existing under the law of the District of Columbia, with a principal place of business at 1645 Trap Road Vienna, Virginia On information and belief, Defendant Thirteen / WNET is a not-for-profit corporation existing under New York law, with a principal place of business at 450 West 33rd

3 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 3 of 15 Street, 6th and 7m Floors, New York, New York On information and belief, Defendant Kunhardt is a corporation existing under New York law, with a principal place of business at 48 Wheeler Avenue, 3rd Floor, Pleasantville, New York On information and belief, Defendant Ark is a limited liability company existing under New York law, with a principal place of business at 540 State Street Brooklyn, NY ALLEGATIONS COMMON TO ALL CLAIMS FOR RELIEF I. Wolf Trap's Ownership and Use of the Mark FACE OF AMERICA 9. Wolf Trap is among the leading performing arts organizations in the world. Wolf Trap was formed at the request of the United States government to oversee the presentation of performing arts and related educational and cultural programming at Wolf Trap National Park, which was created in 1966 by an act of Congress. Wolf Trap has since become deeply instilled in the minds of the American public as a provider of diverse, innovative, educational, and culturally relevant artistic and entertainment programs of the highest quality. 10. Each year, Wolf Trap sponsors, produces, and hosts critically acclaimed artistic events and experiences. Wolf Trap's artistic endeavors include live performances by a diverse selection of artists at its beloved indoor / outdoor venues at Wolf Trap National Park in Vienna, Virginia, on property that is under the jurisdiction of the National Park Service. 11. Wolf Trap collaborates with a wide range of creators, producers, educators, and content distributors. Wolf Trap also develops and provides a host of educational programs that further its core missions of enhancing our nation's cultural life and ensuring that the arts remain accessible and affordable to the broadest possible audience. 12. Consistent with its role as "America's National Park for the Performing Arts,"

4 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 4 of 15 Wolf Trap developed an original multi-disciplinary performing arts series, entitled Face of America, which uses the rich language of the performing arts to celebrate the diverse people, histories, and landscapes that exist across the country. 13. Wolf Trap's Face of America series is a multi-year initiative that premiered in September 2000 at Wolf Trap's Filene Center performing arts venue. 14. Wolf Trap's Face of America series explores and illuminates the rich tapestry of America's people, natural places, and creative processes, including through works and performances by a diverse group of some of the nation's most talented artists, as well as through Wolf Trap's related public outreach efforts. The series features legendary American icons, including outstanding artists in the music and dance fields, U.S. Olympic competitors, and historical figures. 15. Wolf Trap has made its Face of America series available to the public, in part, through collaboration with Defendant Thirteen / WNET, which first aired an installment of the series on its television network in April Wolf Trap has also made its Face of America series available to the public through a range of media, including television, the Internet, and DVDs. 17. On information and belief, Defendant Thirteen / WNET has promoted, and has made available for public viewing and/or purchase, parts or all of Wolf Trap's Face of America series via distribution channels it owns and controls, including via its Internet website(s). 18. Wolf Trap owns the trademark and service mark FACE OF AMERICA, which it has used since 2000 on and in connection with a variety of products and services related to its Face of America series. For example, Wolf Trap has promoted and used its mark FACE OF AMERICA on audio-visual recordings, clothing, posters, and educational materials related to its

5 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 5 of 15 Face of America series. 19. To provide notice to the public of, and to safeguard, its rights in its mark FACE OF AMERICA, Wolf Trap registered that mark with the U.S. Patent and Trademark Office. A copy of Wolf Trap's U.S. registration for the mark FACE OF AMERICA (U.S. Reg. No. 2,572,963, issued May 28, 2002) is attached hereto as Exhibit A. 20. Pursuant to 15 U.S.C and 1115(b), Wolf Trap's registration for its mark FACE OF AMERICA is incontestable and thus constitutes conclusive evidence of the validity and subsistence of that mark and of Wolf Trap's ownership of and exclusive right to use it in commerce. Pursuant to 15 U.S.C. 1057, 1072 and 1115, that registration also provides constructive notice of Wolf Trap's ownership. 21. Wolf Trap has devoted substantial resources to publicizing its mark FACE OF AMERICA and to promoting the goods and services it offers under that mark throughout the United States, including through advertising and other promotional efforts in the Commonwealth of Virginia. Wolf Trap's promotional efforts related to the mark FACE OF AMERICA, and the goods and services offered under it, have been disseminated and distributed via television, the Internet, DVDs, and other channels of promotion and trade. In addition, Wolf Trap's Face of America series has been a topic of extensive media attention. 22. On account of the substantial promotional expenditures Wolf Trap has made, and the widespread sales and publicity Wolf Trap has garnered, for its FACE OF AMERICA products and services, Wolf Trap's mark FACE OF AMERICA has become well-known among members of the purchasing public as a distinctive indicator of products and services that originate or are affiliated with Wolf Trap. The mark FACE OF AMERICA has thus become instilled in the public's consciousness as a symbol of the good will Wolf Trap has developed in

6 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 6 of 15 its Face of America series and the related products and services. II. Defendants' Unlawful Use of the Mark FACES OF AMERICA 23. Notwithstanding Wolf Trap's prior use of and rights in the mark FACE OF AMERICA, Defendants have used and are using the mark FACES OF AMERICA on and in connection with entertainment and educational programming, products, and services in a manner that is likely to cause confusion among an appreciable segment of the consuming public. Wolf Trap has not authorized Defendants to use that mark. 24. In particular, and on information and belief, each of the Defendants collaborated beginning in or around 2006 in the planning, development, creation, production, and titling of an audio-visual recording series that explores and illuminates the diverse ancestries and heritages represented by the American public, including through focus on certain well-known and talented Americans. Defendants' series, entitled Faces of America, is hosted and presented by wellknown Harvard University professor Henry Louis Gates, Jr. 25. On information and belief, each of the Defendants had substantial and ongoing involvement in, and made significant contributions to, the creation of the Faces of America series. 26. Each of the Defendants had actual and/or constructive knowledge of Wolf Trap's rights in the mark FACE OF AMERICA and use of that mark on its audio-visual series. 27. On information and belief, each of the Defendants has earned substantial profits and other advantages as a result and in recognition of their involvement in the Faces of America series. 28. Defendants' series has been promoted and distributed under the designation FACES OF AMERICA, and through the same or overlapping channels of promotion and

7 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 7 of 15 distribution as those that Wolf Trap has employed for the promotion and distribution of its FACE OF AMERICA audio-visual recording series. In particular, and on information and belief, Defendants' Face of America series has been and/or is being promoted, disseminated, and distributed via television, the Internet, DVDs, and other media. 29. On information and belief, Defendants' Faces of America series has been and is being marketed and sold to classes of consumers that are the same as, or overlap with, those to whom Wolf Trap has marketed and sold its Face of America series. 30. The likelihood of consumer confusion is enhanced in this case by virtue of the fact that Defendant Thirteen / WNET has premiered, promoted, and distributed both Wolf Trap's Face of America audio-visual series and Defendants' Faces of America audio-visual series. 31. The likelihood of consumer confusion is further enhanced in this case by virtue of the fact that Wolf Trap's Face of America audio-visual series and Defendants' Faces of America audio-visual series explore and illuminate the same or similar topics and themes. 32. On information and belief, Defendants have used the designation FACES OF AMERICA in connection with their series with the deliberate intent of causing consumer confusion, of unfairly capitalizing on Wolf Trap's good will and reputation, and of obtaining profits and advantages to which they are not entitled. CAUSES OF ACTION COUNTI TRADEMARK AND SERVICE MARK INFRINGEMENT IN VIOLATION OF 15 U.S.C. 1114(1) 33. As a separate cause of action and ground for relief, Wolf Trap alleges that Defendants have engaged in Trademark and Service Mark Infringement in violation of 15 U.S.C. 1114(1). Paragraphs 1 through 32 of this Complaint are incorporated by reference as a part of

8 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 8 of 15 this count. 34. Defendants have used and are using the designation FACES OF AMERICA in interstate commerce, on and/or in connection with the sale of goods and services, in a manner that creates a likelihood of confusion, mistake, or deception. 35. Defendants' conduct is likely to induce purchasers and others to believe, contrary to fact, that Defendants' products and services are rendered, sponsored, approved by, or connected with Wolf Trap and/or Wolf Trap's mark FACE OF AMERICA. 36. Defendants' acts have damaged, impaired and diluted that part of the goodwill symbolized by Wolf Trap's federally registered mark FACE OF AMERICA, which has caused irreparable injury to Wolf Trap. 37. Defendants had actual and/or constructive knowledge of Wolf Trap's rights in the mark FACE OF AMERICA when Defendants engaged in the conduct complained of herein. Thus, Defendants have willfully and deliberately engaged in the acts complained of with intent to trade off of the reputation of Wolf Trap's mark FACE OF AMERICA and/or to deceive the public. 38. Defendants' use of the designation FACE OF AMERICA in the manner alleged herein constitutes trademark and service mark infringement within the meaning of Section 32( 1) of the Trademark Act of 1946, 15 U.S.C. 1114(l)(a). 39. Defendants' acts of infringement have caused Wolf Trap irreparable injury and loss of reputation. Unless enjoined by this Court, Defendants will continue these acts of infringement to Wolf Trap's immediate and irreparable injury. Wolf Trap has been damaged in an amount to be proved at trial.

9 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 9 of 15 COUNT II FALSE DESIGNATION OF ORIGIN AND FALSE ADVERTISING UNDER 15 U.S.C. 1125(a) 40. As a separate cause of action and ground for relief, Wolf Trap alleges that Defendants have engaged in acts constituting unfair competition, false designation of origin, and false representation or advertising in violation of Section 43(a) of the Trademark Act, 15 U.S.C. 1125(a). Paragraphs 1 through 39 of this Complaint are incorporated by reference as part of this count. 41. By using the designation FACES OF AMERICA, Defendants have made and are making false or misleading representations that their goods and services originate with or are endorsed by or are connected with Wolf Trap, in such a manner as to create a likelihood of confusion among prospective purchasers. 42. Defendants' use of the designation FACES OF AMERICA to promote and sell its goods and/or services constitutes use of a false designation of origin, and Defendants' express and/or implied representations that the sale of their products and services originate with or are endorsed by Wolf Trap constitute use of false descriptions or representations of fact, within the meaning of Section 43(a) of the Trademark Act of 1946, 15 U.S.C. 1125(a). 43. Defendants' use of a designation confusingly similar to Wolf Trap's mark FACE OF AMERICA constitutes unfair competition, and entitles Wolf Trap to the remedies available under Section 43(a) of the Trademark Act of 1946, 15 U.S.C. 1125(a). 44. Defendants' acts of false designation of origin and false advertising have caused Wolf Trap irreparable injury, loss of reputation, and pecuniary damages. Unless enjoined by this Court, Defendants will continue its acts of unfair competition complained of herein to Wolf

10 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 10 of 15 Trap's immediate and irreparable damage. Wolf Trap has been damaged in an amount to be proved at trial. COUNT III COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 45. As a separate cause of action and ground for relief, WOLF TRAP alleges that Defendants have engaged in acts constituting trademark infringement and unfair competition under the common law. Paragraphs 1 through 44 of this Complaint are incorporated by reference as a part of this count. 46. Defendants have used the designation FACES OF AMERICA in advertising and selling goods and services in an unlawful, unfair, deceptive, and fraudulent manner that is likely to cause contusion among prospective purchasers exercising ordinary caution. Defendants' acts have damaged, impaired, and diluted the goodwill symbolized by Wolf Trap's mark FACE OF AMERICA. 47. Defendants' actions are intended to deceive and mislead, and/or are likely to deceive or mislead, the public into believing, contrary to fact, that Defendants' products and services originate with, are rendered, sponsored, or otherwise approved or endorsed by, or otherwise are connected with Wolf Trap. Defendants' acts have damaged, impaired and diluted that part of Wolf Trap's goodwill symbolized by its mark FACE OF AMERICA. 48. Defendants' acts complained of herein constitute trademark infringement and unfair competition under the common law. 49. Defendants' acts of trademark infringement and unfair competition have caused Wolf Trap irreparable injury, loss of reputation, and pecuniary damages. Unless enjoined by this Court, Defendants will continue their acts of trademark infringement and unfair competition to 10

11 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 11 of 15 Wolf Trap's immediate and irreparable damage. Wolf Trap has been damaged in an amount to be proved at trial. COUNT IV UNJUST ENRICHMENT 50. As a separate cause of action and ground for relief, Wolf Trap alleges that Defendants have and are engaged in acts resulting in the unjust enrichment of Defendants at Wolf Trap's expense. Paragraphs 1 through 49 of this Complaint are incorporated by reference as a part of this count. 51. Defendants' conduct complained of herein has caused and will continue to cause Wolf Trap irreparable injury, loss of reputation, and pecuniary damages. 52. Wolf Trap has created substantial value and generated substantial goodwill in its mark FACE OF AMERICA. 53. Defendants have traded on that value and goodwill, and on Wolf Trap's reputation, through deceptive, unfair, and unlawful practices. As a result of their actions, Defendants have realized and generated economic and other benefits to which they are not entitled and at Wolf Trap's expense. 54. Wolf Trap has not authorized, acquiesced in, or otherwise agreed to Defendants' actions complained of herein. 55. Under these circumstances, it would be inequitable for Defendants to retain the benefits accrued through their unlawful conduct complained of herein. 11

12 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 12 of 15 COUNT V VIOLATION OF THE CONSUMER PROTECTION ACT OF THE COMMONWEALTH OF VIRGINIA 56. As a separate cause of action and ground for relief, Wolf Trap alleges that Defendants have violated the Consumer Protection Act of the Commonwealth of Virginia. Paragraphs 1 through 55 of this Complaint are incorporated by reference as part of this count. 57. On information and belief, Defendants have used and/or are using the designation FACES OF AMERICA without Wolf Trap's authorization on and in connection with the Faces of America series on television, on the Internet, and on DVDs, and other media Defendants have used and are using the designation FACES OF AMERICA in such a manner as to misrepresent that the Faces of America series is sponsored, approved, or otherwise authorized by Wolf Trap; to misrepresent themselves as having an affiliation, connection, or association with Wolf Trap; to misrepresent that their Faces of America series has certain qualities, characteristics, or benefits; and/or to use other deceptions, fraud, false pretenses, false promises, or misrepresentations in connection with consumer transactions. Defendants' acts have damaged and impaired that part of Wolf Trap's goodwill symbolized by the mark FACE OF AMERICA to Wolf Trap's immediate and irreparable damage Defendants' use of the designation FACE OF AMERICA in the manner alleged herein constitutes deceptive trade practices of a type proscribed by Va. Code Defendants' unfair business practices are of a recurring nature and are harmful to consumers and the public at large Defendants' unfair and deceptive business practices have caused Wolf Trap irreparable injury, loss of reputation, and pecuniary damages. Unless enjoined by this Court, 12

13 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 13 of 15 Defendants will continue these unlawful acts, thereby deceiving the public and causing Wolf Trap immediate and irreparable damage. PRAYER FOR RELIEF WHEREFORE, Wolf Trap prays for judgment against Defendants as follows: (1) Pursuant to 15 U.S.C. 1116, and the common law of Virginia, that Defendants and each of their agents, servants, employees, attorneys, assigns, and all others in privity or acting in concert with Defendants be permanently enjoined from: (a) Using the name, title, or designation FACES OF AMERICA alone or in combination with any other names, titles, designations, words, marks, symbols, or designs, and any other designation that includes or is confusingly similar to FACE OF AMERICA, in the advertising or sale of any goods or services; (b) Using in any manner in the advertising or sale of any goods or services any service mark, trademark, trade name, domain name, trade dress, words, numbers, abbreviations, designs, colors, arrangements, collocations, or any combinations thereof which would imitate, resemble, or suggest Wolf Trap's mark FACE OF AMERICA; (c) Otherwise infringing Wolf Trap's trademarks, service marks and trade names; and (d) Unfairly competing with Wolf Trap or otherwise injuring Wolf Trap's goodwill or business reputation in any manner. (2) Pursuant to 15 U.S.C and the common law of Virginia, that Defendants be directed to deliver up for destruction all audio-video recordings, software, computer screen 13

14 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 14 of 15 printouts, promotional materials, handouts, advertisements, labels, signs, prints, packages, wrappers, photographs, videos, receptacles and all other materials in their possession or under their control that bear the name or designation FACES OF AMERICA, or any other reproduction, counterfeit, copy, or colorable imitation of Wolf Trap's trademarks and service marks and trade names, and all plates, molds, matrices, and other means of making or duplicating the same. (3) Pursuant to 15 U.S.C and the common law of Virginia, that Defendants be required to account and pay to Wolf Trap damages in an amount sufficient to fairly compensate Wolf Trap for the injury it has sustained, plus all profits that are attributable to the infringing sale of goods or services under the infringing name and mark FACES OF AMERICA, and further that the amount of the monetary award granted herein be trebled in view of the willful and deliberate nature of Defendants' unlawful conduct. (4) Pursuant to 15 U.S.C. 1117, that WOLF TRAP be awarded statutory damages in an amount to be determined by the Court. (5) That Wolf Trap be awarded punitive damages in an amount sufficient to deter Defendants from engaging in similar unlawful conduct in the future. (6) Pursuant to 15 U.S.C and the common law of Virginia, that Defendants be ordered to pay to Wolf Trap the costs of this action and Wolf Trap's attorney fees. (7) That Wolf Trap be granted such other, further, different or additional relief as this Court deems equitable and proper. 14

15 Case 1:10-cv JCC -TCB Document 1 Filed 06/16/10 Page 15 of 15 DEMAND FOR TRIAL BY JURY Plaintiff hereby demands a trial by jury in this action. WOLF TRAP FOUNDATION FOR THE PERFORMING ARTS Alec P. Rosenberg (Va. Bar. No ) Arent Fox LLP 1050 Connecticut Avenue, NW Washington, DC Telephone: (202) Facsimile: (202) rosenberg.alec@arentfox.com OF COUNSEL: Anthony V. Lupo, Esq. Arent Fox LLP 1050 Connecticut Avenue, NW Washington, DC Telephone: (202) Facsimile: (202) Counsel for Plaintiff Dated: June 16,