Complaint Church of God v Mandalay

8/6/2019 Complaint Church of God v Mandalay

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IN THE UNITED STATES DISTRICT COURTFOR THE EASTERN DISTRICT OF TENNESSEE

CHURCH OF GOD,Plaintiff,

v. No.MANDALAY PICTURES, LLC, JURY TRIAL REQUESTEDIFC IN THEATERS, LLC, SONY PICTURESWORLDWIDE ACQUISITIONS, INC., andCOMCAST CORPORATION,

Defendants.

COMPLAINT FOR COPYRIGHT INFRINGEMENT, FEDERAL UNFAIR COMPETITION,COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION, AND

VIOLATIONS OF THE TENNESSEE CONSUMER PROTECTION ACTPlaintiff, Church of God, for its Complaint against Mandalay Pictures, LLC, IFC

in Theaters, LLC, Sony Worldwide Acquisitions, Inc., and Comcast Corporation (collectively"Defendants") states as follows:

PARTIES1. Church ofGod is a non-profit corporation of the State of Tennessee and

has its principal business address at 2490 Keith Street, Cleveland, Tennessee 37320-2430.2. Upon information and belief, Mandalay Pictures, LLC is a limited liability

company of the State ofDelaware and has its principal place of business at 4751 WilshireBoulevard, Third Floor, Los Angeles, California 90010.

3. Upon information and belief, IFC in Theaters, LLC is a limited liabilitycompany of the State ofDelaware and has its principal place of business at 11 Penn Plaza, NewYork, New York 10001.

4. Upon information and belief, Sony Pictures Worldwide Acquisitions, Inc.

Case 1:11-cv-00189 Document 1 Filed 07/14/11 Page 1 of 10 PagelD 1


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is a corporation of the state ofCalifornia and has its principal business address at 10202 WestWashington Boulevard, Culver City, California 90232.

5. Upon information and belief, Comcast Corporation is a corporation of thestate of Pennsylvania and has its principal business address at One Comcast Center, Philadelphia,Pennsylvania 19103.

JURISDICTION AND VENUE6. This is an action for infringement of copyrights under the Copyright Laws

of the United States, 17 U.S.C. 101 et. seq., for unfair competition under the United StatesTrademark Act of 1946, the Lanham Act, 15 USC 1051, et seq., for trademark infringementand unfair competition under the common law, and for violations of the Tennessee ConsumerProtection Act, T.C.A. 47-18-101

7. The matter in controversy exceeds the sum or value of Seventy-FiveThousand Dollars ($75,000.00), exclusive of costs and interest, and the citizenship ofChurch ofGod is diverse from the citizenship of the Defendants.

8. This Court has jurisdiction of the subject matter pursuant to 15 U.S.01121, 28 U.S.C. 1331, 1332, and 1338 and under this Court's pendent jurisdiction overrelated state claims arising under the same facts and circumstances pursuant to 28 U.S.C. 1367.

9. Venue is proper in this district pursuant to 28 USC 1391(b) and (c).NATURE OF THE ACTION

10. In existence since at least 1886, Church ofGod (hereinafter referred to attimes as the "Church") is and at all times relevant hereto has been a Christian religiousorganization providing evangelical and ministerial services throughout the United States and theworld. The Church includes, among other things, a substantial and multi-faceted "InternationalHeadquarters" operation in Cleveland, Tennessee, and thousands of member churches across theUnited States and around the world, together with affiliated major universities including LeeUniversity, located in Cleveland, Tennessee and Patten University, located in Oakland,California, a number ofBible Colleges and Seminaries, and a diverse array of film production,recording, and other studio facilities and print publication operations, all for production of video

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programs, publications, and other video/printed works for distribution in the U.S. and around theworld to its millions ofmembers and others in support of and in connection with its activities.

11 . Since at least as early as June 1, 1986, Church of God has been and is nowusing a certain Cross design (the "Cross Mark"), shown below, continuously in commerce in theUnited States as a mark to identify and distinguish the source of the aforementioned and any/allother services and products for which the Cross Mark has been used (the "Services").o

12 . By virtue of the Church's substantially exclusive and continuous use of itsCross Mark for its Services for over twenty five (25) years, the Cross Mark has acquired andcome to symbolize great and valuable goodwill throughout the United States and around theworld as an identifier of a unique source of religious services and of the services and productswhich emanate from the Church, including the aforementioned Services.

13 . Church of God owns all right, title and interest in and to the Cross Markfor use in connection with its Services throughout the United States and the world.

14. Church ofGod has promoted its Services under the Cross Mark in variousprinted and online advertising material, on signage and clothing, and other material publishedand/or distributed by the Church throughout the United States and the world. Church of Godowns all copyright in the design of its Cross Mark and in all authorized works which embody orcontain any form of the design of its Cross Mark, and all authorized derivative works basedthereon.

15. The design ofCross Mark is subject to copyright protection and thecopyright therein is and has been registered with the Library of Congress under U.S. CopyrightRegistration No. VA 1-712-217, with an effective date of registration of January 12, 2010, ("theCross Design Copyright Registration").

16 . On information and belief, Defendants, and each of them, have been andare now engaged in the production, manufacture, distribution, promotion, and/or display of a filmentitled Salvation Boulevard in commerce in the United States, including in this district.



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17. Defendants are using a certain "cross" design ("Defendants' Cross Design") topromote the Salvation Boulevard film. The design also appears within the film to identify a"religious group" at the center of the film's storyline. Exemplary frames from a promotional trailerfor the Salvation Boulevard film are shown below, wherein Defendants' Cross Design is shown onthe upper left of the "church" appearing in the frame on the left and on the vest apparel item in theframe to the right.

r_LI 1 1CHURCH OF THE THIRD MILLENNIUM

7r4W11.1 *Mml..1MA &BIM I I=KIM 0111.Widi.4490

18. Defendants' Cross Design is a substantial reproduction ofChurch ofGod'sCross Mark, in mirror image.

19. Long before any date of first use ofDefendants' Cross Design byDefendants for or in connection with the Salvation Boulevard film or otherwise, Church ofGodcommenced and, since commencement, has made substantially continuous and exclusive use ofits Cross Mark in commerce for and in connection with the Church's Services before itsmembership and before the general public throughout the United States and the world.

20. The distribution, advertising, promotion, creation, sale, and/or offer forsale of the Salvation Boulevard film under, using, and containing Defendants' Cross Design hasbeen done without the license, consent or acquiescence ofChurch of God.

21. On information and belief, Defendants knew of the prior use of the CrossMark by Church ofGod to, among other things, identify the source of the Church's Services and,therefore, Defendants did, and continue to, willfully and deliberately infringe upon, violate, andmisuse the Cross Mark and Church ofGod's rights associated therewith.

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22. On information and belief, Defendants substantially copied the design ofthe Cross Mark in the form of the design of the Defendant's Cross Design or caused or inducedothers to do so, have made, sold, and or distributed in commerce works, products, items,recordings, and materials which contain or embody such copies, or have caused or induced othersto do so, and have otherwise made or caused or induced others to make or cause to be made oneor more derivative or other works which infringe the copyright of the Church in the design of itsCross Mark, and the manufacture, distribution, display, rental, or other use of works, items, orthings which embody the same infringes or violates copyright of the Church ofGod in the designof its Cross Mark as protected by its Copyright Registration.

23. Despite having had actual knowledge of the Church's prior use of theCross Mark for the Church's Services, Defendants adopted and used the Defendants' CrossDesign and have continued to use the same in willful or reckless disregard of the Church's priorand superior exclusive rights therein.

COUNT IFEDERAL COPYRIGHT INFRINGEMENT

24. Church ofGod reasserts the allegations in the foregoing paragraphs as iffullyset forth herein, and states for its Count I as follows:

25. The SalvationBoulevard film published, made, copied, distributed and/or usedby and/or under the direction or control ofDefendants contains and displays subjectmatterwhich is,was, and has been copied from or otherwise obtained or derived from the subjectmatter of the CrossDesign Copyright Registration.

26. The Salvation Boulevard film constitutes unlawful publication ofreproductions and/or derivatives of the subject matter of the Cross Design CopyrightRegistrationsand Defendants' publication, copying, display, distribution, and us e ofthe Salvation Boulevard filmconstitutes violations of the Church's exclusive rights under 17 U.S.C. 106.

27. The acts ofDefendants alleged in this Count I have caused andwill continueto cause substantial and irreparable harm, damage and injury to the Church for which the Church ofhas no fully adequate remedy at law, and will continue unless and until enjoined and restrained by


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this Court.

COUNT IIFEDERAL UNFAIR COMPETITION AND RELATEDS VIOLATIONS

28. Church ofGod restates the foregoing paragraphs as if fully set forth herein,and for its Count II states as follows:

29. Defendants' Cross Design used by Defendants is confusingly similar to theChurch's previously used Cross Mark and is used to identify a product and serviceswhich are relatedto those for which the Church has prior use of its Cross Mark in commerce; and us e by Defendants incommerce as alleged herein is likely to cause confusion, mistake, and/or deception in violation of 15USC 1125(a).

30. Use by Defendants of Defendants' Cross Design for and in the SalvationBoulevard film falsely represents or suggests to the general public and to persons in the religiouscommunity that the Salvation Boulevard film was made, provided, distributed and/or sold with thepermission of or authorization from the same commercial source as, or by or from the samecommercial source as, the Services previously provided under the Church's Cross Mark, in violationof 15 USC 1125(a).

31. The unauthorized uses by Defendants of the Cross Mark as alleged hereinconstitute false designation of origin in violation of 15 USC 1125(a).

32. On information and belief, Defendants have, by their use ofDefendant'sCrossDesign, falsely represented to and deceived the purchasing public and the trade in general so as tocause members of the purchasing public and persons in the trade and industry in general to believethat the Salvation Boulevard film and Defendants' Cross Design used for and in connectiontherewith have been authorized by, sponsored by, or approved by the source of Services providedunder the Church's Cross Mark.

33. The unlawful use of Defendants' Cross Design by Defendants was and isbeing undertaken with knowledge of the Church's prior use ofand superior rights in the Cross Mark,and with the deliberate intent to infringe upon Church ofGod's rights and to unlawfully and unfairly

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compete with the Church and to divert trade, goodwill, and/or revenue from the Church, wherebyDefendants have been and are being unjustly enriched with revenue and other benefits proximatelycaused by and/or resulting from Defendants' unlawful misuse of Defendant's Cross Design.

34. The acts ofDefendants alleged in this Count II have caused andwill continueto cause substantial and irreparable harm, damage and injury to the Church for which the Church hasno fully adequate remedy at law, and will continue unless and until enjoined and restrained by thisCourt.

COUNT IIICOMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION

35. Church ofGod reasserts the allegations in the foregoing paragraphs as if fullyset forth herein, and states for its Count III as follows:

36. The activities of Defendants as alleged herein constitute unfair competitionand trade piracy in violation of the common law and have been undertaken in order to causeconfusion and deception among the purchasing public and persons in the trade and industry ingeneral, and to allow Defendants to unjustly and unfairly benefit and enrich itself from the goodwilland value built up by the Church over many years of us e of and extensive investment in advertisingand promotion of its Cross Mark.

37. Defendants' acts as alleged herein have engendered or are likely to engender afalse belief in the minds of the public and persons in the trade and industry in general thatDefendants are affiliated with, authorized by, sponsored by, or associated with the source of theservices provided under the Church's previously used Cross Mark.

38. The acts ofDefendants alleged in this Count III have caused and will continueto cause substantial and irreparable harm, damage and injury to the Church for which the Church hasno fully adequate remedy at law, and will continue unless and until enjoined and restrained by thisCourt.

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COUNT IVVIOLATIONS OF THE TENNESSEE CONSUMER PROTECTION ACT

39. Church ofGod reasserts the allegations in the foregoing paragraphs as if fullyset forth herein, and states for its Count IV as follows:

40. By the actions alleged herein, Defendants are in violation of the TennesseeConsumer Protection Act, T.C.A. 47-18-101 et seq. The acts complained of violate at leastsubsections (1), (2), (3), (5), (8), and (27) ofT.C.A. 47-18-104(b).

41. As a result of the actions alleged herein, the Church has suffered andcontinues to suffer financial damage, injury, and irreparable harm.

42. Defendants committed the actions alleged herein knowingly and willfully.43. Pursuant to T.C.A. 47-18-109(a)(3), the Church is entitled to treble damagesfor the knowing and willful acts ofDefendants alleged herein.44. Pursuant to T.C.A. 47-18-109(e)(1), the Church is entitled to its reasonable

attorney fees and costs in bringing this claim.

WHEREFORE, Church ofGod prays for at least the following relief:a. A preliminary and permanent injunction and such other and further

relief as is provided for under 15 U.S.C. 1116 to prohibit any further violation of the Church'sexclusive rights in the Cross Mark under 15 U.S.C. 1125(a), and prohibiting Defendants fromunfairly competing with the Church through the use of spurious designations substantially identicalwith or confusingly similar to the Church's previously used Cross Mark.

b. That the Court preliminarily and permanently enjoin and restrainDefendants and all of its employees, owners, officers, agents, attorneys, affiliates, all persons orentities in privity with it, and all those who receive notice thereof, from and against any and allfurther use ofDefendants' Cross Design or any other mark confusingly similar to the Church'sCrossMark, alone or in combination with any words or designs, for or in connection with the SalvationBoulevard film, or any related goods or services.

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c. A preliminary and permanent injunction and such other and furtherrelief as is available under 17 U.S.C. 502 to prevent any further violation of the Church's exclusiverights under 17 U.S.C. 106 in the Cross Mark.

d. An accounting and recovery under 15 USC 1117(a) of all ofDefendants' profits from sales of or other activities associated with the Salvation Boulevard film orand goods or services containing, using, bearing or sold under Defendant's Cross Design.

e. Recovery under 15 USC 1117 (a) of the Church's damages, in anamount to be determined.

f. Trebling of Defendants' profits or damages, whichever is greater,together with a reasonable attorney's fee and expenses and prejudgment interest, under 15 USC1117(a) and/or (b), due to the deliberate and willful misuse by Defendants of the Church's previouslyused Cross Mark.

8. An award under 15 USC 1117 to the Church of its costs in thisaction and reasonable attorney's fees and expenses due to the deliberate and willful nature ofDefendants' infringement of the Church's obviously superior and exclusive rights in the Cross Mark.

h. That all films, copies, goods, signs, prints, and other promotional oradvertisingmaterials in the possession or control ofDefendants bearing or using Defendants' CrossDesign or any other colorable imitation or confusingly similar variation of the Cross Mark of theChurch be delivered up to an officer of the Court for destruction pursuant to 15 USC 1118.

That all publications or copies thereof including material in violationof the Church's exclusive rights in its Cross Mark and means for reproducing such publications inthe possession or control of Defendants be delivered up to an officer of the Court for destructionpursuant to 17 USC 503.

j. Recovery under 17 USC 504 of the Church's actual damages and theprofits of Defendants that are attributable to its copyright infringements, in an amount to bedetermined, or, as the Church may elect at any time prior to trial, statutory damages pursuant to 17U.S.C. 504(c).

k. An award under 17 USC 505 to the Church of its costs in this actionand reasonable attorney's fees and expenses.

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Such other, further. and additional relief as this Court may deemreasonable and just.

Church of God demands a jury to try the issues joined.

Respectfully submitted,alURCI I OF 001)

By:Mark S. Graham, BPR 411505Robert O. Fox. BPR 415185Michael J. Bradford, 13PR 422689LUEDEKA, NEELY & GRAHAM. P.C.P.O. Box 18711871 Riverview TowerKnoxville, TN 37901Phone: (865) 546-4305Fax: (865) 523-4478ATTORNEYS FOR PLAINTIFF

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Ot.V-.+OVJ

Il 7 I I C fs 1Convrioht Infrindement

JS 44 (Rev. 12/07) CIVIL COVER SHEETThe JS 44 civil cover sheet and the information contained herein neither replace no r supplement the filing and service ofpleadings or other papers as required by law, except as provby local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the us e of the Clerk of Court for the purpose of initiathe civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)O (a) PLAINTIFFS DEFENDANTSMandalay Pictures, LLC, IFC In Theaters, LLC, Sony Pictures

Church of God Worldwide Acquisitions, Inc., and Comcast Corporation(b) County of Residence of First Listed Plaintiff Bradley County of Residence of First Listed Defendant

(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE

LAND INVOLVED.

(C Attorney's (f irm Name Address, and Telephone Number) Attorneys (If Known)Mark S. Graham, Esq. ancf Michael Bradford, EsqLuedeka, Neely & Graham, P.C., P.O. Box 1871, Knoxville, TN 37901OCC CAC A')I1C

II. BASIS OF JURISDICTION (Place an ")C" in One Box Only) HI. CITIZENSHIP OF PRINCIPAL PARTIES(Pace an "X " in One Box for Pla(For Diversity Cases Only) and One Box for Defendant)O 1 U.S. Government 1g 3 Federal Question PTF DEF PTF DEFPlaintiff (U.S. Government Not a Party) Citizen of This State 0 1 0 1 Incorporated or Principal Place 0 4 0 4

of Business In This State0 2 U.S. Government 0 4 Diversity Citizen of Another State 0 2 0 2 Incorporated and Principal Place 0 5 0

Defendant of Business In Another State(Indicate Citizenship of Parties in Item III)Citizen or Subject of a 0 3 0 3 Foreign Nation 0 6 0

IV . NATITRF (1 F SUIT (p ine. nn in rsd. ,I CONTRACT L TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTESO 110 Insurance PERSONAL INJURY PERSONAL INJURY 0 610 Agriculture 0 422 Appeal 28 USC 158 0 400 State ReapportionmentO 120 Marine 0 310 Airplane CI 362 Personal Injury 0 620 Other Food & Drug 0 423 Withdrawal CI 410 AntitrustCI 130 Miller Act 0 315 Airplane Product Med. Malpractice 0 625 Drug Related Seizure 28 USC 157 CI 430 Banks and BankingO 140 Negotiable Instrument Liability CI 365 Personal Injury of Property 21 USC 881 0 450 CommerceO 150 Recovery of Overpayment 0 320 Assault, Libel & Product Liability CI 630 Liquor Laws PROPERTY RIGHTS 0 460 Deportation&EnforcementofJudgment Slander 0 368 Asbestos Personal 0 640 R.R. & Truck IRI 820 Copyrights 0 470 Racketeer Influenced an0 151 Medicare Act 0 330 Federal Employers' Injury Product CI 650 Airline Regs. 0 830 Patent Con-upt OrganizationsO 152 Recovery of Defaulted Liability Liability 1:1 660 Occupational 0 840 Trademark 0 480 Consumer Credit

Student Loans 0 340 Marine PERSONAL PROPERTY Safety/Health 0 490 Cable/Sat TV(Excl. Veterans) 0 345 Marine Product 0 370 Other Fraud 0 690 Other 0 810 Selective Service0 153 Recovery of Overpayment Liability 0 371 Truth in Lending LABOR SOCIAL SECURITY 0 850 Securities/Commodities

of Veteran's Benefits 0 350 Motor Vehicle 0 380 Other Personal 0 710 Fair Labor Standards 0 861 H1A (139511) ExchangeO 160 Stockholders' Suits 0 355 Motor Vehicle Property Damage Act 0 862 Black Lung (923) 0 875 Customer Challenge0 190 Other Contract Product Liability 0 385 Property Damage 0 720 Labor/Mgmt. Relations 0 863 DIWC/DIWW (405(g)) 12 USC 3410O 195 Contract Product Liability 0 360 Other Personal Product Liability 0 730 Labor/Mgmt.Reporting 0 864 SSID Title XV I 0 890 Other Statutory ActionsO 196 Franchise Injury & DisclosureAct 0 865 RSI (405(g)) 0 891 Agricultural ActsI REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 0 740 Railway Labor Act FEDERAL TAX SUITS 0 892 Economic StabilizationD 210 Land Condemnation 0 441 Voting 0 510 Motions to Vacate 0 790 Other Labor Litigation 0 870 Taxes (U.S. Plaintiff 0 893 EnvironmentalMatters0 220 Foreclosure 0 442 Employment Sentence 0 791 Empl. Ret. Inc. or Defendant) 0 894 Energy Allocation Act0 230 Rent Lease & Ejectment 0 443 Housing/ Habeas Corp= Security Act 0 871 IRSThird Party 0 895 Freedom of Information0 240 Torts to Land Accommodations 0 530 General 26 USC 7609 Act0 245 Tort Product Liability 0 444 Welfare 0 535 Death Penalty IMMIGRATION 0 900Appeal of Fee Determina0 290 Al l Other Real Property 0 445 Amer. w/Disabilities Cl 540 Mandamus & Other 0 462 Naturalization Application Under Equal AccessEmployment 0 550 Civil Rights 0 463 Habeas Corpus to Justice0 446 Amer. w/Disabilities C71 555 Prison Condition Alien Detainee 0 950 Constitutionality ofOther 0 465 Other Immigration State StatutesCI 440 Other Civil Rights Actions

V. ORIGIN (Place an "X " in One Box Only) Appeal to Dist0 1 Original CI 2 Removed from 3 3 Remanded from CI 4 Reinstated or CI g Transferred from 1___m 6 Multidistrict 7 Judge fromProceeding State Court Appellate Court Reopened another district Litigation Magistrate(specify) JudementCite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):

VI. CAUSE OF ACTION !BriI'ef description of cause:VIL REQUESTED IN 0 CHECK IF THIS IS A CLASS ACTION DEMAND CHECK YES only if demanded in complaint:COMPLAINT: UNDER F.R.C.P. 23 JURY DEMAND: a Yes 0 NoVIII. RELATED CASE(S) (See instructions):IF ANY JUDGE DOCKET NUM,ERDATE >1......(11. I Sof' Z.V/ I SIGNATURE OF ATTORNEY OF RECORDFOR OFFICE USE ONLY

RECEIPT 6 AMOUNT APPLYING IFP JUDGE MAG. JUDGE

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Complaint Church of God v Mandalay

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