Case 1:11-cv-11722-JLT Document 1

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF MASSACHUSETTS FRANKLIN SPORTS, INC., Plaintiff, v. PETER MACFADEN, Defendant. Civil Action No. _________

COMPLAINT AND JURY DEMAND Plaintiff FRANKLIN SPORTS, INC., a Delaware Corporation (hereinafter Franklin or Plaintiff), brings this civil action against Defendant PETER MACFADEN (MacFaden or Defendant). THE PARTIES 1. Plaintiff Franklin is a Delaware Corporation with its principal place of

business at 17 Campanelli Parkway, Stoughton, MA 02072. Plaintiff Franklin provides goods related to a variety of sports and games, which are distributed throughout the country. Defendant provides services related to the creation and maintenance of websites, and also resells Franklins products through a website that he copied from Franklins website. 2. Upon information and belief, Defendant MacFaden is an individual living

and working at 47 Smyth Street, Stoughton, MA 02072.

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JURISDICTION AND VENUE 3. This is an action for trademark infringement and false designation of

origin arising under the Lanham Act, 15 U.S.C. 1051, et seq., for unfair trade practices, unfair competition, and trademark dilution under state law, and for copyright infringement under the Copyright Act, 17 U.S.C. 501, et seq. This Court has jurisdiction pursuant to 15 U.S.C. 1125 and 28 U.S.C. 1331, 1338 and 1367. 4. This Court has personal jurisdiction over the Defendant. The Defendant

resides and does business in this judicial district. The goods provided by Defendant using the infringing marks are currently on a website that can be reached from Massachusetts. Venue is proper in this judicial district under 28 U.S.C. 1391. PLAINTIFFS MARKS 5. Plaintiff has provided goods related to sporting goods using the mark

FRANKLIN since 1946 and the mark FRANKLIN SPORTS since 1994. Plaintiff distributes its sporting goods throughout the country via third party distributors and directly to consumers via various websites, including www.nfluniformset.com. 6. Plaintiff owns the federally registered trademarks, Registration Nos.

1,907,886 and 905,449 for FRANKLIN SPORTS and FRANKLIN respectively (the Marks). Printouts from the United States Patent and Trademark Office website reflecting these registrations are attached as Exhibits A and B, respectively. 7. The Registrations are valid and in full force and effect. They serve as

prima facie evidence of (1) the validity of the Marks, and (2) Plaintiff's exclusive right to use the Marks in connection with its goods.

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8.

In addition to its federal trademark registrations, Plaintiff FRANKLIN has

acquired common law trademark rights in the Marks FRANKLIN and FRANKLIN SPORTS in connection with its sporting goods. 9. Plaintiffs use of the mark FRANKLIN has been continuous and

substantial since 1946 and its use of the mark FRANKLIN SPORTS has been continuous and substantial since 1994. All of Plaintiffs business is done under or in connection with these Marks. 10. Plaintiff has invested heavily in promoting the Marks and developing

goodwill associated with the Marks. Plaintiff has spent hundreds of thousands of dollars on advertising that prominently featured the Marks. The Marks are also prominently featured on Plaintiffs websites, including www.franklinsports.com and www.nfluniformset.com. 11. Plaintiff is the owner of the following Internet domain names:

<nfluniformset.com> and <franklinsports.com>. 12. Plaintiffs goods, and the Marks themselves, enjoy an excellent reputation.

The Marks now designate excellently crafted sporting goods and have gained great value in the marketplace. Plaintiff's extensive use and promotion of the Marks has made the Marks well known, identifying and distinguishing goods emanating from, symbolizing, or authorized by Plaintiff. 13. Defendant is not and has never been authorized by Plaintiff, and is not and

has never been entitled, to use the Marks in connection with any business or service.

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DEFENDANTS UNAUTHORIZED USE OF THE MARKS 14. Upon information and belief, Defendant created the website

www.nflfootballuniformsets.com on June 9, 2009 to sell Plaintiffs goods, which Defendant purchases online or through third party distributors. 15. Defendant has also registered the domain name

<nflfootballuniformsets.com>. Defendant is listed as the administrative contact for the website domain. 16. After investigation of Defendants use of the name and Marks, Defendant

was advised by correspondence on September 19, 2011 of the existence of Plaintiffs registered Marks and that he must cease and desist using the Marks. Defendant failed to respond in any way to the letter itself or to the demands in the letter. Defendant did not answer a follow-up telephone call on September 23, 2011 and has not responded to a message left at that time. 17. Defendant has ignored every attempt to contact him and resolve the matter

outside of litigation. 18. Defendant continues to use Plaintiffs Marks despite several requests that

Defendant cease and desist doing so. Defendant is therefore actively engaged in the unlawful, willful and malicious use of the Marks. 19. Defendant has unlawfully and willfully and maliciously used the Marks to

the economic detriment of Plaintiff, including the misrepresentation of the source of the goods offered under the Marks, and the dilution of the Marks.

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FRANKLINS COPYRIGHTS 20. In or about June of 2005, Plaintiff hired the third party Brand Identity

Guru to create the website www.nfluniformset.com, including all content thereon, on a work for hire basis. 21. Brand Identity Guru did create all of the SEO, copy, and content found on

www.nfluniformset.com on a work for hire basis for Plaintiff. Plaintiff owns a valid copyright for all of the content found on its website www.nfluniformset.com. 22. At the time that Plaintiff hired Brand Identity Guru, Defendant worked for

Plaintiff and worked specifically on Plaintiffs website. 23. Upon information and belief, Defendant left Plaintiff in 2007, but

continued to work for the Plaintiff as an independent contractor from 2007 until 2009. During such time, Defendant continued to work on Plaintiffs website. Because Defendant worked on Plaintiffs website, he had access to all of Plaintiffs copyrighted material. 24. In or about 2009, Defendant made a substantially similar or identical

website by copying the content created on a work for hire basis for Plaintiff, including all photographs and copy on the website and the structure of the website. Defendant placed this copy of Plaintiffs website online at the domain www.nflfootballuniformsets.com. 25. For his own profit and advantage, Defendant misappropriated the

copyrighted material in which the Plaintiff has invested heavily. Defendant literally copied most or all of Plaintiffs website to take advantage of the investment made by

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Plaintiff in the development of its website in an attempt to get a free ride on Plaintiffs investment. 26. By copying Plaintiffs website, Defendant has diverted consumers looking

for Plaintiffs website. Furthermore, by copying Plaintiffs website, Defendant has seriously and negatively affected how Plaintiffs website appears in online search engine results, which has led to a significant decrease in traffic to Plaintiffs website. 27. Despite several demands that Defendant cease and desist using Plaintiffs

copyrighted material, he continues to make his infringing website available to countless users within this District and throughout the country. 28. Defendants conduct has been and continues to be in willful violation of

Plaintiffs repeated warnings to takedown his infringing website. COUNT I (Trademark Infringement under 15 U.S.C. 1125(a) and Common Law Relating to Defendants Use of the Marks FRANKLIN and FRANKLIN SPORTS) 29. The allegations of paragraphs 1-28 are restated and re-alleged as though

fully set forth herein. 30. SPORTS. 31. In addition to its rights in FRANKLIN and FRANKLIN SPORTS at Plaintiff is the rightful owner of the Marks FRANKLIN and FRANKLIN

common law, Plaintiff is the owner of U.S. Federal Registration Nos. 905,449 and 1,907,886.

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32.

Without authorization from Plaintiff, Defendant has used and continues to

use the marks FRANKLIN and FRANKLIN SPORTS in connection with the sale of Plaintiffs goods to falsely indicate that Defendant is affiliated with or licensed by Plaintiff. 33. Defendants past, present, and ongoing actions constitute trademark

infringement of Plaintiffs FRANKLIN and FRANKLIN SPORTS Marks by using those marks in a manner that is likely to confuse, mistake, and/or deceive consumers as to source, sponsorship, or affiliation, subjecting Defendant to liability under 15 U.S.C. 1125 and the common law of Massachusetts. 34. Defendants infringing actions have damaged Plaintiff in an amount to be

determined at trial. 35. Upon information and belief, Defendants infringing actions will continue

unless enjoined by this Court. 36. Plaintiff has no adequate remedy at law and will suffer irreparable harm to

its business, reputation and goodwill unless Defendants unlawful conduct is enjoined by this Court. COUNT II (False Designation of Origin under 15 U.S.C. 1125(a)) 37. The allegations of paragraphs 1-36 are restated and re-alleged as though

fully set forth herein.

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38.

The use of FRANKLIN and FRANKLIN SPORTS by Defendant to sell

goods constitutes a false designation of origin pursuant to 15 U.S.C. 1125(a), suggesting to consumers that Defendant is associated with or sponsored by Plaintiff. 39. Defendants unauthorized use of the Marks FRANKLIN and FRANKLIN

SPORTS has a substantial effect on interstate commerce. 40. Defendants false designation of origin has been made in connection with

goods and services from which he makes a profit. 41. Defendants false designation of origin is likely to cause confusion,

mistake, or deception as to the origin, sponsorship, or approval by Plaintiff of the goods provided by Defendant under the infringing Marks, subjecting Defendant to liability under 15 U.S.C. 1125(a). 42. Defendants false designation of origin has caused actual confusion,

mistake, or deception as to the origin, sponsorship, or approval by Plaintiff of the goods provided by Defendant under the infringing marks, subjecting Defendant to liability under 15 U.S.C. 1125(a). 43. Defendants false designation of origin has damaged Plaintiff in an

amount to be determined at trial. COUNT III (State Dilution, Mass. Gen. Laws Ch. 110B) 44. The allegations of paragraphs 1-43 are restated and re-alleged as though

fully set forth herein.

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45.

By its above-described conduct, Defendant has engaged in trademark

dilution and caused an injury and likely injury to Plaintiffs business reputation, all in violation of Massachusetts General Laws Chapter 110B, 12. 46. Plaintiff has been damaged by said conduct in an amount to be determined

at trial, and is further entitled to injunctive relief therefor. COUNT IV (Unfair Trade Practices, Mass. Gen. Laws Ch. 93A) 47. The allegations of paragraphs 1-46 are restated and re-alleged as though

fully set forth herein. 48. 49. Defendant is, and at all relevant times has been, engaged in commerce. The center of gravity of the Defendants acts has been primarily and

substantially in the Commonwealth of Massachusetts. 50. By its above-described conduct, Defendant engaged in unfair or deceptive

trade practices in violation of Mass. Gen. Laws Ch. 93A 11. 51. Defendants unfair and deceptive trade practices impact the public interest

by causing consumer confusion. 52. Defendants unfair and deceptive trade practices have been willful and

knowing. Defendant was on actual notice on September 20, 2011, but has continued with the infringing use. 53. at trial. Defendants conduct has damaged Plaintiff in an amount to be determined

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COUNT V (Common Law Unfair Competition) 54. The allegations of paragraphs 1-53 are restated and re-alleged as though

fully set forth herein. 55. By his above-described conduct, Defendant has engaged in unfair

competition under the common law of Massachusetts. 56. at trial. 57. 58. Defendants infringing actions will continue unless enjoined by this Court. Plaintiff has no adequate remedy at law and will suffer irreparable harm to Defendants conduct has damaged Plaintiff in an amount to be determined

its business, reputation, and goodwill unless Defendants unlawful conduct is enjoined by this Court. COUNT VI (Federal Copyright Infringement under 17 U.S.C. 501(a)) 59. The allegations of paragraphs 1-58 are restated and re-alleged as though

fully set forth herein. 61. Plaintiff owns all of the copyrighted materials found at or through the

URL www.nfluniformset.com and the United States Copyright Office is in receipt of an application to register all such materials as required by 17 U.S.C. 411(a) for the filing of an action for copyright infringement. 62. Plaintiff has complied in all respects with 17 U.S.C. 101 et seq., and

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referenced website. Plaintiff has been and still is the sole proprietor of all rights, title, and interest in and to the copyrights in its website as referenced above. 63. Defendants conduct violates the exclusive rights belonging to Plaintiff as

owner of the copyrights in its website, including without limitation Plaintiffs rights under 17 U.S.C. 106. 64. Upon information and belief, Plaintiff alleges that, as a direct and

proximate result of its wrongful and willful conduct, Defendant has realized and continues to realize profits and other benefits rightfully belonging to Plaintiff. Accordingly, Plaintiff seeks an award of damages pursuant to 17 U.S.C. 504 and 505. 65. Defendants infringing conduct has also caused and is causing substantial

and irreparable injury and damage to Plaintiff in an amount not capable of determination, and, unless restrained, will cause further irreparable injury, leaving the Plaintiff with no adequate remedy at law. Accordingly, Plaintiff seeks injunctive relief pursuant to 17 U.S.C. 502. 66. Upon information and belief, Defendant has willfully engaged in, and is

willfully engaging in, the acts complained of with oppression, fraud, and malice, and in conscious disregard of the rights of Plaintiff. 67. As a consequence of this dispute between the parties as to the rights, title,

and interest in the copyrighted articles described above, and pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. 2201 and 2202, Plaintiff also seeks a resolution of this ongoing controversy by a declaration of this Court as to the rights of the respective parties in this matter.

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RELIEF REQUESTED WHEREFORE, Plaintiff requests that this Court: A. Immediately and permanently enjoin Defendants, including all partners,

officers, agents, servants, employees, attorneys, and all those persons and entities in active concert or participation with them, from using the marks FRANKLIN and FRANKLIN SPORTS, whether alone or in combination with other words or symbols, and from any further infringement, false designation of origin, unfair competition, and unfair trade practices, with respect to Plaintiffs Marks FRANKLIN and FRANKLIN SPORTS pursuant to 15 U.S.C. 1125 or otherwise. B. Direct Defendant to pay Plaintiff its actual damages, any additional profits

realized by Defendant, and the cost of this action pursuant to 15 U.S.C. 1117(a), Mass. Gen. Laws Ch. 93A 11 or otherwise. C. Enter judgment that Defendants trademark infringement, false

designation of origin, unfair competition and unfair trade practices have been knowing and willful. D. Award Plaintiff its attorney fees and costs in prosecuting this action,

pursuant to 15 U.S.C. 1117(a), Mass. Gen. Laws Ch. 93A 11, and 17 U.S.C. 505 or otherwise. E. Award Plaintiff treble damages pursuant to 15 U.S.C. 1117(a), Mass.

Gen. Laws Ch. 93A 11 or otherwise. F. Order the Defendant to take down all infringing uses of Plaintiffs Marks

on Defendants website www.nflfootballuniformsets.com.

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G.

Declare that Defendants unauthorized conduct violates Plaintiffs rights

under common law and the Federal Copyright Act. H. Order Defendant to account to Plaintiff for all gains, profits, and

advantages derived by Defendant through his infringement of Plaintiffs copyrights or such damages as are proper. I. Order the Defendant to take down all content that infringes any of

Plaintiffs copyrighted material. J. Order the Defendant to convey the domain

www.nflfootballuniformsets.com to Plaintiff. K. necessary. JURY DEMAND Plaintiff demands a trial by jury of all issues so triable. Award Plaintiff such further relief as this Court may deem just and

FRANKLIN SPORTS, INC. By its attorneys,

Dated: September 29, 2011

_/s/ Michael A. Albert_____________ Michael A. Albert, BBO # 558566 malbert@wolfgreenfield.com WOLF, GREENFIELD & SACKS, P.C. 600 Atlantic Avenue Boston, Massachusetts 02210 (617) 646.8000 Phone (617) 646.8646 FAX

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