Lisa Frank v. Orb Factory Complaint PDF

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 1 of 25
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John N. Iurino (SBN 006574)

jiurino@lrrlaw.com
LEWIS ROCA ROTHBERGER, LLP
One South Church Avenue, Suite 700
Tucson, Arizona 85701-1611
Tel: (520) 629-4432
Fax: (520) 879-4711
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Kirk M. Hallam
(Pro Hac Vice application forthcoming)
kirk@hallamhoffman.com
Nicholas J. Hoffman
(Pro Hac Vice application forthcoming)
nick@hallamhoffman.com
HALLAM & HOFFMAN, Attorneys at Law
201 Santa Monica Boulevard, Suite 300
Santa Monica, California 90401
Tel: (310) 393-4006
Fax: (310) 564-7623
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Attorneys for Plaintiff Lisa Frank, Inc.
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UNITED STATES DISTRICT COURT
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DISTRICT OF ARIZONA
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Lisa Frank, Inc., an Arizona

corporation,
Plaintiff,
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Case No.
VERIFIED COMPLAINT AND
DEMAND FOR JURY TRIAL
vs.
The Orb Factory Limited, a
Canadian corporation,
Defendant.
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VERIFIED COMPLAINT; DEMAND FOR JURY TRIAL
Plaintiff, Lisa Frank, Inc. alleges:

Nature of the Action
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1.
Lisa Frank, Inc. ("LFI") has, since 1979, produced and distributed, and
licensed others to produce and distribute, unique items of stationery, school supplies,
toys, activity sets and other products designed principally for girls and young women,
bearing the distinctive artwork of LFI's President and CEO, Lisa Frank. Over the last
37 years the Lisa Frank brand has attained iconic status and a dedicated following
within its target market because of the unique look and quality of LFI's product line.
Sales have been sustained over the life of the brand. LFI products are currently sold
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in retail stores nationwide and on-line.

2.
Defendant, The Orb Factory Limited ("Orb Factory" or "Defendant"),
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offers for sale and sells online at http://www.orbfactory.com and through various
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retailers including Wal-Mart and Amazon.com, among other things, products that
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utilize packaging and product design that imitate LFI packaging and products by
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appropriating the distinctive look and feel of Lisa Frank's packaging and products as
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they are presented to consumers, and that infringe LFI's trade dress rights and
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copyrights. Defendant's actions are likely to cause confusion as to the origin of
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Defendant's infringing products and as to the connection or association of Defendant
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with LFI, when there is none. LFI is compelled to bring this action to ensure
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Defendant ceases offering for sale and selling infringing packaging and products and
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to seek damages and other relief as prescribed by law for Defendant's infringements
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of LFI's intellectual property rights.
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3.
By this action LFI seeks permanent injunctive relief, money damages,
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and attorneys' fees arising from Defendant's (i) infringement of LFI's trade dress and
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unregistered trademarks and unfair competition in violation of 43 of the Lanham
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Trademark Act of 1946 as amended ("Lanham Act"), 15 U.S.C. 1125(a); (ii) unfair
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competition in violation of Arizona common law; and (iii) infringement of LFI's
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copyrights in violation of the Copyright Act of 1976, 17 U.S.C. 101 et seq.

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Jurisdiction and Venue
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This Court has original federal question jurisdiction and supplemental
jurisdiction over this action pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331,
1332, 1338 and 1367(a), as this case arises under the Lanham Act and the U.S.
Copyright Act.
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Venue is proper in this District under 28 U.S.C. 1391(b) and (c)
because a substantial part of the events or omissions giving rise to the claim occurred
and continue to occur in this District and because Defendant is doing business in this
District.
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6.
Upon information and belief, Defendant is subject to general and
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specific jurisdiction of this Court by virtue of its substantial contacts with Arizona,
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including, but not limited to, doing business in Arizona, marketing its products to
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consumers in Arizona, and operating an active website through which consumers in
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Arizona can purchase Defendant's infringing products.
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continues to have significant contact with the state of Arizona and has purposefully
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availed itself of Arizona's laws.

The Parties
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Defendant has had and
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Plaintiff, LFI, is an Arizona corporation with its principal place of
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business at 6760 S. Lisa Frank Avenue, Tucson, Arizona, in this District. LFI
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licenses its original art work and intellectual property for use on a wide range of
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products nationwide designed primarily for the young female and young adult female
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markets. LFI owns (a) registered copyrights for artwork used on its licensed products
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and packaging; (b) registered and unregistered trademarks used in connection with its
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licensed products and packaging; and (c) trade dress rights in the distinctive look and
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feel of its licensed products and packaging.
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Orb Factory is, on information and belief, a Canadian corporation with
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its principal place of business at 225 Herring Cove Road, Halifax, Nova Scotia, B3P
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1L3, Canada. Orb Factory offers for sale and sells toys and children's' activity
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products and competes directly with LFI's licensees and indirectly with LFI in the
U.S. market. Upon information and belief, Orb Factory offers for sale and sells
products that appropriate LFI's trade dress such that they are confusingly similar to
LFI's products, and that reproduce LFI's copyrighted works or that utilize derivative
works based upon LFI's copyrighted works.
The Lisa Frank Story
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In 1979 Lisa Frank founded LFI to design, make and sell products and
packaging bearing her distinctive original artwork, especially for girls between the
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ages of 6 and 14. That same year LFI received its first million-dollar order for
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stickers from U.S. national retailer Spencer Gifts. From stickers LFI expanded its
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product range to include back-to-school supplies, stationery, toys and activity sets, all
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bearing Lisa Frank's distinctive artwork.
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Over the last 37 years LFI has enjoyed significant commercial success.
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LFI transitioned from a manufacturing and distribution company to a licensing
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company in 2010.
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intellectual property from companies desirous of using it to target girls and young
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women for their products. LFI licenses a wide range of product lines featuring Lisa
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Frank artwork and LFI intellectual property including school supplies, stationery,
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backpacks, crafts, cosmetics, electronic goods, clothing, shoes, jewelry, bedding, toys
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and fashion accessories. LFI licensed products are packaged, marketed and sold
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using LFI's distinctive trade dress, trademarks and copyrighted designs on the outside
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of the products and their packaging which serve to identify them to consumers at the
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purchase point as Lisa Frank branded products. LFI's products are sold in retail
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locations throughout the United States and online.
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LFI receives a large number of licensing requests for its
LFI's current business is licensing its copyrighted artwork and
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proprietary trademarks and trade dress. The value of that business is thus directly
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correlative to the actual and perceived exclusivity and quality, and the effective
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protection from unauthorized use, of that copyrighted artwork, trademarks and trade
dress.
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Through contract obligations and inspection and approval mechanisms
incorporated into its license agreements, LFI exerts rigorous quality controls over the
use of its copyrighted artwork, trademarks and trade dress, and all products
incorporating any elements of the same.
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Over the course of its business, LFI has incurred significant expenditure
in advertising and promoting the Lisa Frank brand, initially through print
advertisements, direct mailings, in-store signs, displays and other point-of-purchase
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materials and latterly additionally through social media, including Facebook and the
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internet.
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LFI's advertising and promotion utilizes and has the look and feel of
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LFI's artwork and trade dress, including its unique color combinations, and
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distinctive fanciful designs and characters.
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Plaintiff's Distinctive Trade Dress
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LFI's use, combination and choice of colors, trademarks, graphics and
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designs is based upon its founder Lisa Frank's beliefs about the communicative
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power of color, market research and feedback from LFI's enthusiastic fan base. Lisa
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Frank herself remains personally involved in the creation and development of LFI's
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art and designs. The resulting unique and distinctive look and feel of LFI products
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has been and remains consistent over time and throughout LFI's product lines.
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LFI's trade dress is a protectable asset of substantial value to LFI.
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Licensees are willing to pay significant royalties for the right to use LFI trade dress
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with their products and on their packaging so as to identify them as Lisa Frank
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products for consumers and meet consumer demand for Lisa Frank products.
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LFI's trade dress displays bold and highly detailed graphics and designs,
intense, extraordinary color combinations with a high degree of detail, and crisp,
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precise, bold and vibrant colors, including use of rainbow colors that gradually fade
into one another along the package or product. Each LFI product is crafted, designed
and packaged with an emphasis on color, design and attention to detail to achieve the
distinctively recognizable look and feel that is associated with the Lisa Frank brand
and products.
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LFI's trade dress is comprised of the combination of some or all of the
following elements, depending upon the product and its packaging, that create a
unique overall image and distinct visual impression, and are protectable as a whole:
(1) brightly colored bold graphics of distinctive animal characters depicted
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individually or grouped with one or more other such characters, with rainbow colored
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features, large eyes, and happy, friendly expressions; (2) use of brilliant, often
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rainbow sequenced, colors, graduated color sequences, and rainbow colors that fade
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into one another, including the use of the distinctively bright "Lisa Frank shades of
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pink" (using a customized ink formula that is a LFI trade secret); (3) package, cover
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and product surface designs featuring, in addition to the distinctive animal characters,
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combinations of rainbows, flowers, ice cream cones, butterflies, birds, rabbits, fish,
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cupcakes, bubbles, peace symbols, random words, hearts, happy faces, and stars,
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often in groups including colorful backgrounds employing rainbow colors, color
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fades and Lisa frank pink, props and landscape features such as trees, pools, and
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snow; and (4) product packaging incorporating the look and feel of the products.
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Market and retail experts recognize that LFI's distinctive styles and color
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schemes on the exterior or, if present, packaging, of the products make LFI Products
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stand out on store shelves and retail displays.
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Plaintiff's Valuable Copyrights
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LFI's own as well as its licensed products and packaging include
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material wholly original to LFI that is copyrightable subject matter under the laws of
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the United States, in particular 17 U.S.C. 102.

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21.
The U.S. Registrar of Copyrights has issued over 400 certificates of
registration to LFI for its collection of graphics and designs used on or with LFI
products. LFI now owns and at all relevant times has owned the copyrights for many
of the graphics and designs used on LFI's own and licensed products and packaging.
LFI's production, distribution and licensing of LFI products is and has at all times
been in strict compliance with the Copyright Act of 1976 and all other laws
governing copyright.
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LFI's copyrights are protectable assets of substantial value to LFI.
Licensees are willing to pay significant royalties for the right to use LFI's copyright
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works with their products and packaging so as to meet consumer demand for Lisa
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Frank products.
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LFI's copyright registrations cover, inter alia, some of the designs
contained in LFI's distinctive trade dress.
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Defendant's Imitative Products Unfairly Trade on
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Lisa Frank's Goodwill and Success
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Defendant offers for sale and sells products that appropriate LFI trade
dress and that are substantially and confusingly similar to LFI products.
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Defendant's products and packaging misappropriate the look and feel of
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LFI's trade dress in such a manner as to confuse consumers and lead them to believe
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that Defendant's products originate with or are approved by LFI and/or that
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Defendant has some affiliation or connection with LFI, when such is not the case.
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Defendant's products and product packaging listed below use in
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commerce images and designs that are similar enough to images and designs
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comprised in LFI trade dress that their use individually or together is likely to cause
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confusion, or to cause mistake, or to deceive as to the affiliation, connection, or
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association of Defendant with LFI, or as to the origin, sponsorship, or approval of
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Defendant's goods, or commercial activities by LFI. The use of these images in this
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way imparts to Defendant's products as presented to the consumer an overall visual
impression and look and feel of a genuine authorized and licensed LFI product.
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Defendant's products referred to in the preceding paragraph include
Defendant's product lines "PlushCraft" pillow products, "Sticky Mosaics,"
"Stickeez," and "Plusheez," and products related thereto, as pictured below:
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PlushCraft:
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Sticky Mosaics:
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Stickeez:
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Plusheez:
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Defendant has appropriated LFI's trade dress so as to capitalize on LFI's
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good will and commercial success, and is passing off its products to consumers as
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originating from LFI or authorized by LFI, to LFI's substantial detriment.

Defendant's Products Copy Plaintiff's Copyrighted Works
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Defendant's products and packaging copy and infringe at least the
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following LFI copyrighted works identified here by their U.S. Copyright registration
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numbers: VA0001892013 (Mischief {the unicorn}), VA0001373728 (Forrest {the
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tiger}), VA0001005200 (Surfing Dolphins), VAu000707146 (Dancing Dolphins).
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LFI's registered copyrighted work(s) and Orb Factory's infringing products and
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packaging are pictured below on the left and right, respectively):
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VA001892013
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VA0001373728
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VAu000707146
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VA0001005200
LFI is the owner of the U.S. copyright in all rights, titles, and interests to
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the works listed above, all of which are properly registered with the United States
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Copyright Office.
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The designs and graphics on Defendant's products are so similar to LFI's
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copyrighted works as particularized above as to preclude the possibility of
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independent creation.
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Defendant had access to LFI's copyrighted works and the designs and
graphics on Defendant's products are substantially similar to those works.
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Defendant's Infringement is Willful
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Defendant was, or should have been, aware of LFI's rights in its trade
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dress and copyrights since Defendant first employed the former art director of LFI,
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Laura Binder, sometime in 2012 or 2013. Defendant has been aware of LFI's legal
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objections to Defendant's infringement of its trade dress since at least July, 2015,
when it received a letter notifying it of Plaintiff's legal objections.
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34.
sale and sold its infringing products and is continuing to do so.

35.
In willful disregard of LFI's rights, Defendant has appropriated LFI's
trade dress, without license or authority from LFI, for its own commercial benefit.
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Defendant is not licensed or otherwise authorized by LFI to reproduce or
use its trade dress or copyrights.

37.
Accordingly, Defendant's actions complained of herein are willful.

Resulting Harm to Plaintiff
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In willful disregard of LFI's rights, Defendant commenced offering for
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Defendant's wrongful and unlawful conduct has deprived, and will
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continue to deprive, LFI of the full benefits of licensing its intellectual property, is
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detrimental to the Lisa Frank brand and to LFI's goodwill, and is injurious to LFI's
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relationship with present and potential licensees.
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39.
LFI has lost and will continue to lose revenues from the sale of
Defendant's infringing products.

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Defendant's infringing products are likely to cause consumers to be
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confused, mistaken and/or deceived as to their origin or as to their sponsorship or
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approval by LFI, when there is none.
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41.
Defendant's infringing products are likely to cause consumers to be
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confused, mistaken and/or deceived as to the existence of any affiliation, connection,
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or association of Defendant with LFI, when there is none.
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42.
Defendant's acts threaten to irreparably harm LFI's valuable intellectual
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property used in its licensing business, and LFI's reputation and goodwill, which it
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has established over its 37 years in business.
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43.
Defendant's acts compromise LFI's control over the use of its valuable
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trade dress and LFI's control over the quality and nature of the products offered under
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LFI's distinctive and valuable brand and using LFI's intellectual property.
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44.
Unless enjoined Defendant will continue to willfully infringe and violate
LFI's intellectual property rights causing damage to LFI's good will and business
reputation. Defendant's acts have caused, and unless enjoined will continue to cause,
irreparable harm to LFI for which there is no adequate remedy at law.
COUNT I
(Federal Trade Dress Infringement and Unfair
Competition under Lanham Act 43,
15 U.S.C. 1125(a))
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45.
LFI realleges and incorporates by reference the above paragraphs as if
fully set forth herein.

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The foregoing use in commerce by Defendant of LFI's trade dress and
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unregistered trademarks has caused and/or is likely to cause confusion, or mistake, or
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to deceive consumers as to the affiliation, connection, or association of Defendant
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with LFI, or as to the origin, sponsorship, or approval of Defendant's goods, or
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commercial activities by LFI.
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Defendant's acts constitute trade dress infringement and unfair
competition in violation of 15 U.S.C. 1125(a)(1)(A).
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48.
Defendant's acts are willful.
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By reason of the foregoing LFI has sustained, and unless Defendant is
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enjoined will continue to sustain, injury and damage.

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Defendant has unlawfully and wrongfully derived income and profits
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and has been unjustly enriched by the foregoing acts. Defendant's acts have caused,
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and unless enjoined will continue to cause, irreparable harm to LFI for which there is
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no adequate remedy at law.
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COUNT II
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(Unfair Competition under Arizona Common Law)
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52.
By virtue of Defendant's foregoing acts Defendant has intentionally
caused a likelihood of confusion among the public and has unfairly competed with
LFI in violation of the common law of the State of Arizona.

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This is an action for common law unfair competition arising under the
common law of the State of Arizona law.
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Defendant's acts are willful.
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By reason of the foregoing LFI has sustained, and unless Defendant is
enjoined will continue to sustain, injury and damage.

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Defendant has unlawfully and wrongfully derived income and profits
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and has been unjustly enriched by the foregoing acts. Defendant's acts have caused,
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and unless enjoined will continue to cause, irreparable harm to LFI for which there is
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no adequate remedy at law.
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COUNT III
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(Direct, Contributory, and Vicarious
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Copyright Infringement of U.S. Copyright no. VA0001892013)

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The foregoing acts by Defendant constitute the unauthorized
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reproduction, distribution, display, sale, and creation of derivative works of LFI's
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copyrighted work, U.S. registration no. VA0001892013 (pictured below), which
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infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. 101 et
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seq.
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Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VA0001892013.

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Defendant's conduct has at all times been knowing, willful, and with
complete disregard to LFI's rights.

61.
As a proximate cause of Orb Factory's wrongful conduct, LFI has been
irreparably harmed and will continue to sustain injury and damage unless Defendant
is enjoined.
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62.
Orb Factory's infringing works copy quantitatively and qualitatively
distinct, important, and recognizable portions of LFI's copyrighted work, U.S.

registration no. VA0001892013.
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The inclusion of the signature elements of LFI's copyrighted work, U.S.
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registration no. VA0001892013, greatly enhances the financial value of Orb Factory's
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infringing products.
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LFI is entitled to its actual damages and profits, alternatively statutory
damages, pursuant to 17 U.S.C. 504.

65.
From the date of the creation of Orb Factory's infringing works, the
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Defendant has infringed LFI's copyright interests in U.S. registration no.
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VA0001892013, including: (a) by authorizing the reproduction, distribution and sale
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of the infringing works through the execution of licenses, and/or actually selling,
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manufacturing and/or distributing Orb Factory's infringing works through various
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sources; (b) by substantially copying and displaying the infringing works in related
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marketing and promotional materials for the sale of the infringing works; and (c) by
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participating in and furthering the aforementioned infringing acts, and/or sharing in
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the proceeds therefrom, all through substantial use of LFI's U.S. registration no.
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VA0001892013.
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With knowledge of the infringement, Defendant has induced, caused or
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materially contributed to the infringing conduct of others, such that it should be found
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to be contributorily liable.
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67.
Defendant had the right and ability to control other infringers and has
derived a direct financial benefit from that infringement such that Defendant also
should be found to be vicariously liable.

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The infringement is continuing as the infringing products continue to be
promoted and sold.

69.
As a direct and proximate result of the conduct of Defendant, LFI has
suffered actual damages including lost profits, lost opportunities, and loss of
goodwill.
70.
Defendant's conduct is causing and, unless enjoined by this Court, will
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continue to cause LFI irreparably injury that cannot be fully compensated or
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measured in monetary terms. LFI has no adequate remedy at law.
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COUNT IV
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seq.
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is enjoined.
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Orb Factory's infringing works copy quantitatively and qualitatively

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VA0001373728.
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materially contributed to the infringing conduct of others, such that it also should be
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found to be contributorily liable.

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promoted and sold.

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goodwill.
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continue to cause to LFI irreparably injury that cannot fully be compensated or
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measured in monetary terms. Thus, LFI has no adequate remedy at law.
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COUNT V
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85.

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infringe LFI's exclusive rights in violation of the Copyright Act, 17 U.S.C. 101.
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is enjoined.
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Orb Factory's infringing works copy quantitatively and qualitatively the

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VA0001005200.
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materially contributed to the infringing conduct of others, such that it should be found
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to be contributorily liable.
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derived a direct financial benefit from that infringement such that Defendant should
be found to be vicariously liable.

96.
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promoted and sold.

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goodwill.
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continue to cause LFI irreparably injury that cannot fully be compensated or
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measured in monetary terms. Thus, LFI has no adequate remedy at law.
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COUNT VI
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Copyright Infringement of U.S. Copyright no. VAu000707146)

99.
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100. The foregoing acts by Defendant constitute the unauthorized
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copyrighted work, U.S. registration no. VAu000707146 (pictured below), which
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seq.
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101. Defendant did not seek or receive permission to copy any portion of
LFI's copyrighted work, U.S. registration no. VAu000707146.
102. Defendant's conduct has at all times been knowing, willful, and with
103. As a proximate cause of Orb Factory's wrongful conduct, LFI has been
is enjoined.
104. Orb Factory's infringing works copy quantitatively and qualitatively
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registration no. VAu000707146.
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105. The inclusion of the signature elements of LFI's copyrighted work, U.S.
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registration no. VAu000707146, greatly enhances the financial value of Orb Factory's
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106. LFI is entitled to its actual damages and profits, alternatively statutory
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107. From the date of the creation of Orb Factory's infringing works, the
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VAu000707146, including: (a) by authorizing the reproduction, distribution and sale
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VAu000707146.
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108. With knowledge of the infringement, Defendant has induced, caused or
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materially contributed to the infringing conduct of others, such that it also should be
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found to be contributorily liable.

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109. Defendant had the right and ability to control other infringers and has
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110. The infringement is continuing as the infringing products continue to be

promoted and sold.
111. As a direct and proximate result of the conduct of Defendant, LFI has
goodwill.
112. Defendant's conduct is causing and, unless enjoined by this Court, will
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continue to cause LFI irreparably injury that cannot be fully compensated or
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measured in monetary terms. LFI has no adequate remedy at law.
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PRAYER FOR RELIEF
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WHEREFORE, Plaintiff, Lisa Frank, Inc. respectfully prays for judgment in its
favor and against Defendant ordering:
1.
A preliminary and permanent injunction enjoining Defendant, its
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officers, employees, agents, successors and assigns, and all others in active concert or
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participation with Defendant pursuant to 15 U.S.C. 1116(a), 17 U.S.C. 502, or
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otherwise, from directly or indirectly:
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(a)
imitating, copying, counterfeiting or making unauthorized use of
Plaintiff's trade dress and/or copyrights;

(b)
manufacturing, producing, distributing, circulating, selling,
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offering for sale, moving, or otherwise disposing of, advertising, promoting or
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displaying any product bearing any simulation, reproduction, counterfeit, copy or
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colorable imitation of Plaintiff's trade dress and/or copyrights;
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(c)
using any simulation, reproduction, counterfeit, copy, or colorable
imitation of Plaintiff's trade dress and/or copyrights, in connection with the
28
21
promotion, advertisement, display, sale, offering for sale, manufacture, production,
circulation or distribution of Defendant's products;

(d)
3
4
selling, distributing, offering for sale, advertising, promoting or
displaying those products listed in Paragraphs 27 and 29;

(e)
assisting, aiding, or abetting any other person or business entity in
engaging in or performing any of the activities referred to in subparagraphs (a)-(d)
above;
(f)
8
9
10
11
12
13
engaging in any other activity constituting an infringement of
Plaintiff's trade dress and/or copyrights, or of Plaintiff's rights in its trade dress and/or
copyrights, or to use or to exploit its trade dress and/or copyrights;
2.
An accounting by Defendant of all gross revenues derived from the sale
of Defendant's infringing products;

3.
Defendant to file with this Court and serve on Plaintiff within thirty (30)
14
days from the date of entry of any restraining order and/or injunction, a report in
15
writing, under oath, setting forth in detail the manner and form in which Defendant
16
has complied with the terms of the injunction in accordance with 15 U.S.C. 1116
17
and otherwise;
18
4.
19
Defendant to pay Plaintiff:

(a)
all profits, gains and advantages derived by Defendant from
20
Defendant's unlawful conduct, as provided under 15 U.S.C. 1117(a)(1), 17 U.S.C.
21
504(a)(1), and otherwise;
22
(b)
monetary damages for injury, loss and damage incurred by
23
Plaintiff as a result of Defendant's unlawful conduct, including lost profits and costs
24
of corrective advertising, as provided under 15 U.S.C. 1117(a)(2), 17 U.S.C.
25
504(a)(1), and otherwise;
26
27
(c)
as an alternative to damages under 17 U.S.C. 504(a)(1), statutory
damages in an amount to be determined at trial based on the number of Plaintiff's
28
22
registered copyrights infringed and willfully infringed by Defendant, as provided
under 17 U.S.C. 504(a)(2) and (c);

(d)
3
4
attorneys' fees, under 15 U.S.C. 1117(a)(3), 17 U.S.C. 505, and otherwise;

5.
5
6
Plaintiff's costs and disbursements of this action and reasonable
Defendant's actions having been willful, payment of enhanced damages
under 15 U.S.C. 1117(a)(3), 17 U.S.C. 504(c), and otherwise;
6.
Payment of interest;
7.
Payment of Court costs; and
8.
Such other and further relief as this court shall deem just and equitable.
10
11
DATED:
September 16, 2015
12
13

HALLAM & HOFFMAN
By:
14
s/John N. Iurino
John N. Iurino
15
16
17
DEMAND FOR JURY TRIAL
18
19
Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a jury

trial.
20
21
22
23
DATED:
September 16, 2015

HALLAM & HOFFMAN
By:
24
s/John N. Iurino
John N. Iurino
25
26
27
28
23
16

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Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 1 of 25

John N. Iurino (SBN 006574)

Attorneys for Plaintiff Lisa Frank, Inc.

UNITED STATES DISTRICT COURT

Lisa Frank, Inc., an Arizona

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 2 of 25

Plaintiff, Lisa Frank, Inc. alleges:

in retail stores nationwide and on-line.

Defendant, The Orb Factory Limited ("Orb Factory" or "Defendant"),

copyrights. Defendant's actions are likely to cause confusion as to the origin of

Defendant's infringing products and as to the connection or association of Defendant

of LFI's intellectual property rights.

By this action LFI seeks permanent injunctive relief, money damages,

unregistered trademarks and unfair competition in violation of 43 of the Lanham

competition in violation of Arizona common law; and (iii) infringement of LFI's

copyrights in violation of the Copyright Act of 1976, 17 U.S.C. 101 et seq.

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 3 of 25

Jurisdiction and Venue

This Court has original federal question jurisdiction and supplemental

Venue is proper in this District under 28 U.S.C. 1391(b) and (c)

Upon information and belief, Defendant is subject to general and

consumers in Arizona, and operating an active website through which consumers in

Arizona can purchase Defendant's infringing products.

availed itself of Arizona's laws.

Defendant has had and

Plaintiff, LFI, is an Arizona corporation with its principal place of

feel of its licensed products and packaging.

Orb Factory is, on information and belief, a Canadian corporation with

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 4 of 25

works based upon LFI's copyrighted works.

The Lisa Frank Story

bearing Lisa Frank's distinctive artwork.

LFI transitioned from a manufacturing and distribution company to a licensing

locations throughout the United States and online.

LFI receives a large number of licensing requests for its

LFI's current business is licensing its copyrighted artwork and

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 5 of 25

Through contract obligations and inspection and approval mechanisms

incorporating any elements of the same.

advertisements, direct mailings, in-store signs, displays and other point-of-purchase

distinctive fanciful designs and characters.

Plaintiff's Distinctive Trade Dress

LFI's use, combination and choice of colors, trademarks, graphics and

LFI's trade dress is a protectable asset of substantial value to LFI.

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 6 of 25

LFI's trade dress is comprised of the combination of some or all of the

(1) brightly colored bold graphics of distinctive animal characters depicted

often in groups including colorful backgrounds employing rainbow colors, color

stand out on store shelves and retail displays.

Plaintiff's Valuable Copyrights

LFI's own as well as its licensed products and packaging include

the United States, in particular 17 U.S.C. 102.

Case 4:15-cv-00433-DCB Document 1 Filed 09/16/15 Page 7 of 25

The U.S. Registrar of Copyrights has issued over 400 certificates of

LFI's copyrights are protectable assets of substantial value to LFI.

LFI's copyright registrations cover, inter alia, some of the designs

contained in LFI's distinctive trade dress.

Defendant's Imitative Products Unfairly Trade on

Lisa Frank's Goodwill and Success

Defendant's products and packaging misappropriate the look and feel of

Defendant's products and product packaging listed below use in

confusion, or to cause mistake, or to deceive as to the affiliation, connection, or