Fun World V Terry Rozier
Fun World V Terry Rozier
Fun World V Terry Rozier
Plaintiff,
COMPLAINT
vs.
Terry Rozier,
Defendant.
INTRODUCTION
1. This action seeks to recover for copyright infringement and trademark
infringement.
2. Plaintiff is a designer, manufacturer and supplier of original costumes and
masks, holiday items and novelty gifts.
3. Plaintiff is the owner of valuable intellectual property and has obtained U.S.
copyright and trademark registrations covering many of its original designs, including a ghost
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PARTIES
6. Easter Unlimited, Inc. is a New York Corporation and maintains its principal
place of business in Nassau County, New York.
7. On information and belief, Defendant Terry Rozier, is a now and at the time of
the filing of this Complaint and all intervening times, an Individual residing in Massachusetts
and is liable and responsible to Plaintiff based on the facts herein alleged.
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States Copyright Office (the “USCO”) which cover many of their designs.
14. Plaintiff has obtained active and valid trademark registrations from the United
States Patent and Trademark Office (the “USPTO”) which covers a variety of marks.
15. Plaintiff's products are original, creative works in which Plaintiff's own
protectable intellectual property interests.
16. Plaintiff is the original designer of the Ghost Face Mask, as set forth in Exhibit
“1” which is annexed hereto and incorporated in its entirety herein.
17. The Ghost Face Mask has been a famous copyright and trademark of
Plaintiff’s for many years.
18. In 1996, Plaintiff’s Ghost Face Mask was licensed for use in the popular
slasher film series “Scream”.
19. Scream was a wide box office success and subsequently had 3 sequels.
20. As a result of the Scream movies, Plaintiff’s Ghost Face Mask has become
widely famous and remains a popular Halloween costume mask.
21. Plaintiff is the owner of two (2) registered copyrights under registration
numbers VA 983 747, dated February 23, 1993, and VA 552 798, dated June 21, 1999. The
registrations are annexed hereto as Exhibit “2”.
22. Plaintiff is the owner of 2 registered trademarks related to their Ghost Face
Mask.
23. The block letter mark, “Ghost Face”, is registered under registration number
4035972.
24. The design mark “Ghost Face” is registered under registration number
4256208. The registrations are annexed hereto as Exhibit “3”.
25. Defendant is a professional basketball player for the NBA.
26. Defendant has a contract to play for the Boston Celtics.
27. Without permission or authorization from Plaintiff, Defendant adopted the
Ghost Face Mask design as his own mascot and paired the design with his alter ego “Scary
Terry”.
28. In promotion of his nickname, “Scary Terry”, Defendant has produced
merchandise such as t-shirts and sweatshirts with the Ghost Face mask designed and sold said
merchandise through various vendors.
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FIRST COUNT
(Direct Copyright Infringement, 17 U.S.C. §501 et seq.)
55. Plaintiff repeats and incorporates by reference the allegations contained in the
preceding paragraphs, as though set forth in full herein.
56. The Ghost Face Mask is an original, creative work in which Plaintiff owns
valid copyrights properly registered with the United States Copyright Office.
57. Plaintiff has not licensed Defendant the right to use the Ghost Face Mask in
any manner, nor has Plaintiff assigned any of its exclusive rights in the Copyrights to
Defendant.
58. Without permission or authorization from Plaintiff and in willful violation of
their rights under 17 U.S.C. §106, Defendant improperly and illegally copied, stored,
reproduced, distributed, adapted, and/or publicly displayed works copyrighted by Plaintiff
thereby violating one of Plaintiff's exclusive rights in its copyrights.
59. Defendant's reproduction of the Ghost Face Mask and display of the Ghost
Face Mask as his mascot constitutes willful copyright infringement. Feist Publications, Inc. v.
Rural Telephone Service Co., Inc., 499 U.S. 340, 361 (1991).
60. As a direct and proximate result of Defendant's misconduct, Plaintiff has been
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substantially harmed and should be awarded statutory damages against Defendant pursuant to
17 U.S.C. §504(c) of up to $150,000 per infringement in an amount to be proven at trial.
SECOND COUNT
(Contributory Copyright Infringement)
61. Plaintiff repeats and incorporates, as though fully set forth herein, each and
every allegation contained in the preceding paragraphs, as though set forth in full herein.
62. On information and belief, the Infringements were displayed for sale on the
websites of various vendors (the “Websites”) selling merchandise.
63. Defendant herein has caused enabled, facilitated and materially contributed to
the infringement at the Websites complained of herein by, providing the tools and instruction
for infringement via their Websites and has directly and indirectly promoted the infringement
and refused to exercise their ability to stop the infringement made possible by their
distribution.
64. Defendant had a continuing relationship with the individuals using the website
after distribution of the product, and, thus, Defendant's actions substantially contributed to the
infringing activity.
65. For example, Defendant has had various interviews with magazines and news
blogs where he has promoted the sale of his Scary Terry merchandise with the Ghost Face
Mask on them. See Exhibit “5”. See also Arista Records, LLC, 633 F. Supp. 2d. at 156.
66. Defendant is liable as contributory infringer since he had actual and/or
constructive knowledge of another's infringing conduct and induced, caused and/or materially
contributed to that conduct. See e.g., Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d. 1146,
1171 (9th Cir. 2007); Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913,
929-30 (2005); A&M Records, Inc. v. Napster, Inc. 239 F.3d 1004, 1019 (9th Cir. 2001); Sony
Corp. v. Universal City Studios, Inc., 464 U.S. 417 (1984).
67. Defendant's conduct and contributory infringement is and has been willful,
intentional, purposeful, and in disregard of the rights of Plaintiff, and has caused substantial
damage to Plaintiff
68. As a direct and proximate result of Defendant's misconduct, Plaintiff has been
substantially harmed and should be awarded statutory damages against Defendant pursuant to
17 U.S.C. §504(c) of up to $150,000 per infringement in an amount to be proven at trial.
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THIRD COUNT
(Vicarious Copyright Infringement)
69. Plaintiff repeats and incorporates, as though fully set forth herein, each and
every allegation contained in the preceding paragraphs, as though set forth in full herein.
70. At all material times hereto, on information and belief, Defendant had the right
and ability to supervise and/or control the infringing conduct of Defendants, his employees
and/or agents and declined to exercise the right and ability to supervise or control that
infringing conduct, despite its legal right to stop or limit the directly infringing conduct as
well as the practicable ability to do so.
71. On information and belief, Defendant's, his employees and/or agents have
continued to infringe upon Plaintiff's Ghost Face Mask, which in turn generates profits for
Defendant directly from the use of the Infringements.
72. On information and belief, Defendant enjoyed a directed financial benefit from
the infringing activity of its members, Employees and agents from, inter alia, advertising
revenue from the increased sale of merchandise and from increase in fees paid by sponsors.
73. Defendant is liable as vicarious infringers since he profited from direct
infringement while declining to exercise a right to stop or limit it. See e.g., Perfect 10, Inc. v.
Amazon.com, Inc., 508 F.3d. 1146, 1171 (9th Cir. 2007); Metro-Goldwyn-Mayer Studios Inc.
v. Grokster, Ltd., 545 U.S. 913, 929-30 (2005).
74. As a direct and proximate result of Defendant's misconduct, Plaintiff has been
substantially harmed and should be awarded statutory damages against Defendant pursuant to
17 U.S.C. §504(c) of up to $150,000 per infringement in an amount to be proven at trial.
FOURTH COUNT
Trademark Infringement 15 U.S.C. § 1114/Lanham Act §43(a)
75. Plaintiff repeats and incorporates, as though fully set forth herein, each and
every allegation contained in the preceding paragraphs, as though set forth in full herein.
76. Defendant is actually aware that Plaintiff is the registered trademark holder of
the Ghost Face mark and design (the “Mark”). Further Plaintiff’s registrations on the Principal
Register give constructive notice of Plaintiff’s ownership rights.
77. Defendant failed to obtain the consent or authorization of Plaintiff as the
registered owner of the subject name and mark to commercially distribute and market apparel
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FIFTH COUNT
Federal Trademark Counterfeiting 15 U.S.C. § 1114(1)(a)
81. Plaintiff repeats and incorporates, as though fully set forth herein, each and
every allegation contained in the preceding paragraphs, as though set forth in full herein.
82. Defendant has used false designations that are identical with, or substantially
indistinguishable from, the Ghost Face trademarks on goods covered by registrations for the
Ghost Face trademarks.
83. Defendant has used these false designations knowing they are counterfeit in
connection with the advertisement, promotion, sale, offering for sale and distribution of
goods.
84. Defendant’s use of the Ghost Face trademarks to advertise, promote, offer for
sale, distribute and sell defendant’s merchandise was and is without the consent of Plaintiff.
85. Defendant’s unauthorized use of the Ghost Face trademarks on and in
connection with Defendant’s advertisement, promotion, sale, offering for sale and distribution
of merchandise constitutes Defendant’s use of the Ghost Face in commerce.
86. Defendant’s unauthorized use of the Ghost Face trademarks as set forth above
is likely to: (a) cause confusion, mistake and deception; (b) cause the public to believe that
Defendant’s merchandise is the same as Plaintiff’s or that Defendant is authorized, sponsored
or approved by Plaintiff or that Defendant is affiliated, connected or associated with or in
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some way related to Plaintiff; and (c) results in Defendant unfairly benefiting from Plaintiff’s
advertising and promotion and profiting from the reputation of Plaintiff and its Ghost Face
trademarks all to the substantial and irreparable injury of the public, Plaintiff and Plaintiff’s
Ghost Face trademarks and the substantial goodwill represented thereby.
87. Defendant’s aforementioned acts constitute trademark counterfeiting in
violation of Section 32 of the Lanham Act, 15 U.S.C. §1114.
88. Defendant’s acts are both willful and malicious.
89. By reason of the foregoing, Defendant is liable to Plaintiff for: (a) statutory
damages in the amount of up to $1,000,000 for each mark counterfeited as provided by 15
U.S.C. § 1117(c) of the Lanham Act, or, at Plaintiff’s election, an amount representing three
(3) times Plaintiff’s damage or Defendant’s illicit profits; and (b) reasonable attorney’s fees,
investigative fees and pre-judgment interest pursuant to 15 U.S.C. § 1117(b).
SIXTH COUNT
Dilution by Blurring 15 U.S.C. § 1125(c)
90. Plaintiff repeats and incorporates, as though fully set forth herein, each and
every allegation contained in the preceding paragraphs, as though set forth in full herein.
91. Plaintiff’s Mark is “famous” within the meaning of the Lanham Act and is
distinctive in the states in which trademark registration was obtained by virtue of the
substantial inherent and acquired distinctiveness of the Mark, the extensive use in the relevant
states, and the wide advertising and publicity of Plaintiff’s goods bearing the mark.
92. As a result of the substantial inherent and acquired distinctiveness in Plaintiff’s
Mark, extensive use in the states in which registration was obtained, and the wide advertising
and publicity of the Mark, Plaintiff’s Mark has become strong and is widely identified and
respected.
93. Upon information and belief, Defendant’s unlawful actions began long after
Plaintiff’s Mark became famous, and Defendant acted knowingly, deliberately and willfully,
with the intent to trade on Plaintiff’s reputation and to dilute by blurring Plaintiff’s Mark.
Defendant’s conduct is willful, wanton and egregious.
94. The actions of Defendant complained of herein are likely to injure the business
reputation of Plaintiff and its Mark.
95. Defendant’s unauthorized use of Plaintiff’s famous Mark has diluted and will
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continue to dilute Plaintiff’s name and mark and is likely to detract from the distinctiveness of
Plaintiff’s mark.
96. Defendant’s conduct is intended to trade on Plaintiff’s reputation.
97. Defendant’s continuing and knowing use of the Ghost Face mark constitutes
intentional infringement of Plaintiff’s trademarks in violation of 15 U.S.C. § 1125 (c).
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