Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 1 of 30
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`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`__________________________________________
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`
`)
`FINCO SERVICES, INC.,
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`)
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`
`)
`Plaintiff,
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`
`
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`)
`
`
`
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`
`
`
`)
`v.
`
`
`
`
`
`) Case No. 1:19-cv-9410
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`
`
`
`
`
`)
`
`FACEBOOK, INC., CALIBRA, INC., JLV, LLC,
`) COMPLAINT
`and CHARACTER SF, LLC,
`)
`
`) JURY TRIAL DEMANDED
`Defendants.
`
`
`
`
`
`)
`__________________________________________)
`
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`Plaintiff Finco Services, Inc. brings this Complaint against defendants Facebook, Inc.,
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`Calibra, Inc., JLV, LLC, and Character SF, LLC (together, “Defendants”), and alleges, on
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`knowledge as to its own actions, and otherwise upon information and belief, as follows:
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`PRELIMINARY STATEMENT
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`1.
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`This is an action for trademark infringement, unfair competition, and false
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`designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for
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`related state law claims, all arising from the Defendants’ unauthorized use of Plaintiff’s
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`trademarks and service marks in connection with the marketing, advertising, and promotion of
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`the planned launch of the “Calibra” digital wallet and related financial services.
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`2.
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`Plaintiff seeks preliminary and permanent injunctive relief as well as monetary
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`relief.
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`JURISDICTION
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`3.
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`This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121, 28
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`U.S.C. §§ 1331 and 1338(a) and (b), and pursuant to the principles of supplemental jurisdiction
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`under 28 U.S.C. § 1367.
`
`
`
`UNITED STATES DISTRICT COURT
`SOUTHERN DISTRICT OF NEW YORK
`__________________________________________
`
`
`
`
`
`
`
`)
`FINCO SERVICES, INC.,
`
`
`
`)
`
`
`
`
`
`
`
`)
`Plaintiff,
`
`
`
`
`
`)
`
`
`
`
`
`
`
`)
`v.
`
`
`
`
`
`) Case No. 1:19-cv-9410
`
`
`
`
`
`
`)
`
`FACEBOOK, INC., CALIBRA, INC., JLV, LLC,
`) COMPLAINT
`and CHARACTER SF, LLC,
`)
`
`) JURY TRIAL DEMANDED
`Defendants.
`
`
`
`
`
`)
`__________________________________________)
`
`
`Plaintiff Finco Services, Inc. brings this Complaint against defendants Facebook, Inc.,
`
`Calibra, Inc., JLV, LLC, and Character SF, LLC (together, “Defendants”), and alleges, on
`
`knowledge as to its own actions, and otherwise upon information and belief, as follows:
`
`PRELIMINARY STATEMENT
`
`1.
`
`This is an action for trademark infringement, unfair competition, and false
`
`designation of origin under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), and for
`
`related state law claims, all arising from the Defendants’ unauthorized use of Plaintiff’s
`
`trademarks and service marks in connection with the marketing, advertising, and promotion of
`
`the planned launch of the “Calibra” digital wallet and related financial services.
`
`2.
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`Plaintiff seeks preliminary and permanent injunctive relief as well as monetary
`
`relief.
`
`JURISDICTION
`
`3.
`
`This Court has jurisdiction over this action pursuant to 15 U.S.C. § 1121, 28
`
`U.S.C. §§ 1331 and 1338(a) and (b), and pursuant to the principles of supplemental jurisdiction
`
`under 28 U.S.C. § 1367.
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 2 of 30
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`VENUE
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`4.
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`Venue is proper in this district under 28 U.S.C. § 1391(b)(1) because a Defendant
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`resides in the district and all Defendants reside in or are subject to personal jurisdiction in this
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`district, and under § 1391(b)(2) because a substantial part of the events or omissions giving rise
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`to the claim occurred in this district and a substantial part of property that is the subject of the
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`action is situated in this district.
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`PARTIES
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`5.
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`Plaintiff Finco Services, Inc. is a corporation operating under the name Current
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`(“Current”). It is incorporated in the State of Delaware and has its principal place of business in
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`New York, New York. Current provides online and mobile banking services via a mobile
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`application or “app.”
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`6.
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`Defendant Facebook, Inc. (“Facebook”) is a Delaware corporation with its
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`principal place of business in Menlo Park, California, and an office in New York City, New
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`York.
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`7.
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`Defendant Calibra, Inc. (“Calibra”) is a Delaware corporation with its principal
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`place of business in Menlo Park, California, and an office in New York City, New York. Calibra
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`is a subsidiary of Facebook, which plans on launching a digital wallet for the Libra
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`cryptocurrency sometime in 2020.
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`8.
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`Defendant JLV, LLC (“JLV”) is a Delaware limited liability company with its
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`principal place of business in Menlo Park, California. JLV is a subsidiary of Facebook and, upon
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`information and belief, is the entity that owns the intellectual property, including the infringing
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`trademarks and service marks, related to Calibra.
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 3 of 30
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`9.
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`Defendant Character SF, LLC (“Character”) is a California limited liability
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`company with offices in San Francisco, California and Brooklyn, New York. Character is a
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`branding and design agency.
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`STATEMENT OF FACTS
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`A.
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`Current and its CURRENT Design Marks
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`10.
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`Founded in 2015 by Stuart Sopp, Current provides online banking and financial
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`services, including the electronic transfer of money, via a mobile app.
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`11.
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`In 2016, Current paid Character to create a branding strategy and identity for the
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`company.
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`12.
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`As part of this branding strategy and identity, Character created certain logo
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`designs for Current to use in connection with its banking services and mobile app.
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`13.
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`As a branding agency, Character knew and understood that the purpose of the
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`logo designs was to assist Current in creating a brand identity, and to act as trademarks and
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`service marks that identify Current as the exclusive source of origin of the Current banking
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`services and app.
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`14.
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`Upon information and belief, one of the logo designs created by Character for
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`Current, and which has been in use by Current since at least as early as 2016, appears below (the
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`“CURRENT Logo”):
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`15.
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`Upon information and belief, Character also created design iterations
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`incorporating the CURRENT Logo, including, but not limited to, the images below, which
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 4 of 30
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`Current has used at various times as an icon in connection with its mobile app and in connection
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`with providing online banking services, among other related uses in commerce (the “CURRENT
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`Icon”):
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`16.
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`The CURRENT Icon on the left is used in connection with Current’s app offered
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`to consumers using Android devices via the Google Play Store, and the CURRENT Icon on the
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`right is used in connection with Current’s app offered to consumers using Apple devices via the
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`Apple App Store.
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`17.
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`Current owns a use-based application to register the CURRENT Logo (without
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`claiming color) in the U.S. Patent and Trademark Office (“USPTO”) in connection with, among
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`other things, banking services in Class 36, downloadable software for enabling the electronic
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`transfer of money between users in Class 9, and providing the use of online non-downloadable
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`software for enabling processing of electronic funds transfer, electronic check, and electronic
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`mobile and online payments in Class 42. (Application Serial No. 88,490,176; see also
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`Application Serial No. 88,489,765 (use-based application to register the CURRENT word mark
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`combined with the CURRENT Logo).)
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`18.
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`Current is also the owner of an intent-to-use application to register the CURRENT
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`Logo (without claiming color) in the USPTO in connection with a mobile computer software
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`application used for enabling cryptocurrency-based transactions in Class 9 and SaaS services
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 5 of 30
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`used for enabling cryptocurrency-based transactions in Class 42. (Application Serial No.
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`88,489,824.)
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`19.
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`Current has used the CURRENT Logo and CURRENT Icon design marks
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`(together, the “CURRENT Marks”) in commerce throughout the United States continuously
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`since at least as early as August 25, 2016 in connection with the offering for sale, sale,
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`marketing, advertising, and promotion of Current’s online and mobile banking and financial
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`services.
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`20.
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`For example, Current uses the CURRENT Marks in connection with its mobile
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`App in the Google Play Store and the Apple App Store, as well as on mobile devices:
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`21.
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`Current brands its debit cards with the CURRENT Marks, such as the below
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`example:
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 6 of 30
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`22.
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`23.
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`Current uses the CURRENT Marks on its website located at https://current.com.
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`As a result of its widespread, continuous, and exclusive use of the CURRENT
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`Marks to identify its downloadable app and related banking and financial services and Current as
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`the source of origin for that app and those services, consumers have come to recognize and
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`associate the CURRENT Marks with Current. Current owns valid and subsisting trademark
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`rights and has acquired substantial consumer goodwill in and to the CURRENT Marks.
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`24.
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`The CURRENT Marks are distinctive to both the consuming public and the
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`financial service industry.
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`25.
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`Current has expended substantial time, money, and resources marketing,
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`advertising, and promoting its banking services offered under the CURRENT Marks including
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`through the use of social media and influencers as well as online, radio, TV, and print.
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`26.
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`Current offers and sells its banking services under the CURRENT Marks to the
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`general public, as well as more specifically to teens and their parents to assist with seamless
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`family banking.
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`27.
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`Current’s financial and banking services are of high quality and have received
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`significant unsolicited coverage in various media, including CNBC, USA Today, and
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`TechCrunch.
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 7 of 30
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`28.
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`As a result of Current’s expenditures and efforts, the CURRENT Marks have
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`come to signify the high quality of the financial services designated by the CURRENT Marks,
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`and have acquired incalculable distinction, reputation, and goodwill belonging exclusively to
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`Current.
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`B.
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`Defendants’ Unlawful Activities
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`29.
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`On June 18, 2019, Facebook announced that it had formed a subsidiary named
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`Calibra, which will provide a digital wallet under the name “Calibra” for a new cryptocurrency
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`named “Libra.” The digital wallet will be offered via a mobile app that consumers can use to
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`save, send, and spend money using the Libra cryptocurrency. Businesses can use Calibra to
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`seamlessly accept payments from customers in person and online.
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`30.
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`Upon information and belief, Defendants Calibra, Facebook, and/or JLV
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`(collectively the “Calibra Defendants”) hired Defendant Character to create a branding identity
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`for the Calibra digital wallet.
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`31.
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`Upon information and belief, Character created the below logo design for use in
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`connection with the Calibra digital wallet (the “Infringing Mark”):
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`32.
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`Because Current had previously engaged Character to, among other things, design
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`the CURRENT Marks and upon information and belief, at the time Character designed the
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 8 of 30
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`Infringing Mark, Character had full knowledge of the CURRENT Marks, and that Current was
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`providing mobile financial services nationwide under the CURRENT Marks.
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`33.
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`Upon information and belief, at the time Character designed the Infringing Mark,
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`Character was aware of the digital wallet banking services the Calibra Defendants were
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`intending to promote and sell under the Infringing Mark.
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`34.
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`Upon information and belief, Character failed to inform the Calibra Defendants
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`that it was providing them with a logo design nearly identical to the logo design Character had
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`previously created for Current for use in connection with nearly identical banking services.
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`35.
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`The Calibra Defendants adopted the Infringing Mark and, since June 2019 (when
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`Calibra and Facebook announced their plans to launch the Calibra digital wallet sometime in
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`2020), the Calibra Defendants have used the Infringing Mark to advertise and promote the
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`Calibra digital wallet and the services it will provide.
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`36.
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`As shown below, the Infringing Mark adopted and used by the Calibra
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`Defendants is not only confusingly similar to, but virtually identical to the CURRENT Marks.
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`37.
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`Upon information and belief, the Calibra Defendants have been engaged in the
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`advertising, marketing, and promotion of the digital wallet’s banking and financial services
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`under the Infringing Mark throughout the United States through the same marketing channels as
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 9 of 30
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`Current uses to market its banking services; namely, on the Internet via its website (located at
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`https://calibra.com) and through social media.
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`38.
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`Upon information and belief, the digital wallet’s banking and financial services
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`offered by the Calibra Defendants under the Infringing Mark have received substantial press
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`coverage, including from CNN, Fox, CNBC, Reuters, BBC, and Yahoo! Finance.
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`39.
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`Upon information and belief, the Calibra services advertised, marketed, and
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`promoted under the Infringing Mark by the Calibra Defendants are closely related to those
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`provided by Current because they also involve financial services in Class 36, downloadable
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`software for payment transactions and electronic funds transfers in Class 9, and non-
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`downloadable software as a service for electronic payments and for transferring funds to and
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`from others in Class 42.
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`40.
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`Upon information and belief, the Calibra Defendants intend to provide, offer for
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`sale, and sell the Calibra goods and services under the Infringing Mark through the same trade
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`channels as Current’s services are provided, offered for sale, and sold; namely, to the general
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`public online and through the mobile app stores.
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`41.
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`Current first became aware of the Infringing Mark in June 2019 when Facebook
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`announced the planned launch of the Calibra digital wallet.
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`42.
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`On July 23, 2019, Current’s counsel sent a letter to Defendant Calibra objecting to
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`its use of the Infringing Mark.
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`43.
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`44.
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`Current received no response to the July 23, 2019 letter.
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`On August 2, 2019, Current’s counsel sent a letter to the General Counsel of
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`Facebook, again objecting to Calibra’s use of the Infringing Mark.
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`45.
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`On August 12, 2019, counsel for Calibra responded by letter stating it was
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`looking into the matter.
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`46.
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`Since August 14, 2019, Current’s counsel and Calibra’s counsel have exchanged
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`email correspondence and participated in at least one telephone call in an attempt to discuss a
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`mutually acceptable resolution of this matter.
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`47.
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`To date, these efforts have not been fruitful, and Current has received no response
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`or evidence indicating that the Calibra Defendants will comply with Current’s demand that they
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`cease using the Infringing Mark.
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`48.
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`Defendants’ infringing acts as alleged in this complaint have caused and are likely
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`to cause confusion, mistake, and deception among the relevant consuming public as to the source
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`of the Calibra digital wallet and have deceived and are likely to deceive the relevant consuming
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`public into believing, mistakenly, that the Calibra digital wallet app and Current’s mobile
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`banking services app, and the respective banking and financial services that may be performed
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`through each app, originate from the same source.
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`49.
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`Defendants’ infringing acts as alleged in this complaint have deceived and are
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`likely to deceive the relevant consuming public into believing, mistakenly, that the Calibra
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`digital wallet app and related banking and financial services are somehow associated or affiliated
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`with Current, or that they are sponsored or authorized by Current.
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`50.
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`Defendants’ infringing acts as alleged in this complaint have deceived and are
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`likely to deceive the relevant consuming public into believing, mistakenly, that Current’s online
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`and mobile banking app and related banking and financial services are somehow associated or
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`affiliated with Calibra, or that they are sponsored or authorized by Calibra.
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`51.
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`Upon information and belief, the Calibra Defendants’ continued use of the
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`Infringing Mark despite actual notice of Current’s prior intellectual property rights is willful,
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`with the deliberate intent to trade on the goodwill of the CURRENT Marks and cause confusion
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`and deception in the marketplace.
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`52.
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`Upon information and belief, Defendant Character’s acts were willful with the
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`deliberate intent to provide the Calibra Defendants with a branding identity that Character knew
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`it had previously sold to Current, enabling the Calibra Defendants to infringe the CURRENT
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`Marks.
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`53.
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`Defendants’ acts are causing, and unless restrained, will continue to cause damage
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`and immediate irreparable harm to Current and to its valuable reputation and goodwill with the
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`consuming public for which Current has no adequate remedy at law.
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`COUNT ONE
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`FEDERAL TRADEMARK INFRINGEMENT IN VIOLATION OF 15 U.S.C. § 1125(a)
`(Against the Calibra Defendants)
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`Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`54.
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`herein.
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`55. Without Current’s consent, the Calibra Defendants have used and continue to use
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`in commerce the Infringing Mark in connection with the advertising and promotion of the
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`Calibra Defendants’ products and services.
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`56.
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`These uses of the Infringing Mark have caused and are likely to cause confusion,
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`mistake, and deception as to the affiliation, connection, or association with, or sponsorship or
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`approval by, Current.
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 12 of 30
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`57.
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`Upon information and belief, the Calibra Defendants’ conduct as alleged herein is
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`willful, as they have continued to use the Infringing Mark despite receiving several cease-and-
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`desist letters from Current and being aware of Current’s rights to the CURRENT Marks.
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`58.
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`Upon information and belief, the Calibra Defendants’ conduct is intended to and
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`is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association
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`of the Calibra Defendants with Current.
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`59.
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`The Calibra Defendants’ conduct constitutes trademark infringement in violation
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`of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
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`60.
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`The Calibra Defendants’ conduct is causing immediate and irreparable harm and
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`injury to Current, and to its goodwill and reputation, and will continue to both damage Current
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`and confuse the public unless enjoined by this court. Current has no adequate remedy at law for
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`this irreparable harm.
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`61.
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`Current is entitled to, among other relief, injunctive relief and an award of actual
`
`damages, the Calibra Defendants’ profits, enhanced damages and profits, reasonable attorneys’
`
`fees, and costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116,
`
`1117, together with prejudgment and post-judgment interest.
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`COUNT TWO
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`FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN
`(Against the Calibra Defendants)
`
`Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`62.
`
`herein.
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`63. Without Current’s consent, the Calibra Defendants have used and continue to use
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`in commerce the Infringing Mark in connection with the advertising and promotion of the
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`Calibra Defendants’ products and services.
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`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 13 of 30
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`64.
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`This use of the Infringing Mark has caused and is likely to cause confusion,
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`mistake, and deception as to the affiliation, connection, or association with, or sponsorship or
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`approval by, Current.
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`65.
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`Upon information and belief, the Calibra Defendants’ conduct as alleged herein is
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`willful, as they have continued to use the Infringing Mark despite receiving several cease-and-
`
`desist letters from Current and being aware of Current’s rights to the CURRENT Marks.
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`66.
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`Upon information and belief, the Calibra Defendants’ conduct is intended to and
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`is likely to cause confusion, mistake, or deception as to the affiliation, connection, or association
`
`of the Calibra Defendants with Current.
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`67.
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`The Calibra Defendants’ conduct as alleged herein constitutes unfair competition
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`and false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. §
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`1125(a).
`
`68.
`
`The Calibra Defendants’ conduct is causing immediate and irreparable harm and
`
`injury to Current, and to its goodwill and reputation, and will continue to both damage Current
`
`and confuse the public unless enjoined by this court. Current has no adequate remedy at law for
`
`this irreparable harm.
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`69.
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`Current is entitled to, among other relief, injunctive relief and an award of actual
`
`damages, the Calibra Defendants’ profits, enhanced damages and profits, reasonable attorneys’
`
`fees, and costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116,
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`1117, together with prejudgment and post-judgment interest.
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`COUNT THREE
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`COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION
`(Against the Calibra Defendants)
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`70.
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`Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`herein.
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`71.
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`Current owns common law rights in the CURRENT Marks through the extensive,
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`continuous, and exclusive use of those marks in the United States.
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`72.
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`The Calibra Defendants have knowledge of Current’s superior rights in the
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`CURRENT Marks.
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`73.
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`The Calibra Defendants have used and continue to use the Infringing Mark in
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`connection with the advertising, promotion, and sale of their products and services without
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`Current’s authorization.
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`74.
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`Through their unauthorized conduct, the Calibra Defendants have unfairly
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`appropriated or exploited the special qualities associated with the CURRENT Marks, resulting in
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`the misappropriation of a commercial advantage belonging to Current.
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`75.
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`The Calibra Defendants’ unauthorized use of the Infringing Marks has caused and
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`is likely to cause confusion, mistake, and deception as to their affiliation, connection, association
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`with, or sponsorship or approval by Current, in violation of New York or other applicable state
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`common law.
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`76.
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`The Calibra Defendants’ unauthorized use of the Infringing Mark has caused and
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`is likely to cause confusion, mistake, and deception as to whether Current is the source of the
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`Calibra digital wallet, or whether the Calibra digital wallet is endorsed or sponsored by, or
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`otherwise associated or affiliated with, Current, in violation of common law.
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`77.
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`As a result of the Calibra Defendants’ unlawful conduct, Current has suffered and
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`is likely to continue to suffer damages, and the Calibra Defendants have obtained profits and/or
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`unjust enrichment.
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`78.
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`Unless the Calibra Defendants are permanently enjoined from their wrongful
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`conduct, Current will continue to suffer irreparable injury for which it has no adequate remedy at
`
`law.
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`79.
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`Current is entitled to, among other relief, injunctive relief, an award of actual
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`damages, the Calibra Defendants’ profits, and enhanced damages and profits and, together with
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`prejudgment and post-judgment interest.
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`COUNT FOUR
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`VICARIOUS TRADEMARK INFRINGEMENT IN VIOLATION OF 15 U.S.C. § 1125(a)
`(Against Defendant Facebook)
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`80.
`
`Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`herein.
`
`81.
`
`As previously alleged, the Calibra Defendants, including Calibra and JLV, have
`
`engaged in direct trademark infringement by infringing upon the CURRENT Marks through their
`
`use of the Infringing Mark.
`
`82.
`
`On information and belief, Calibra and JLV are both subsidiaries of, and are
`
`wholly owned and controlled by, Facebook.
`
`83.
`
`On information and belief, Facebook exercises control over Calibra and JLV at all
`
`times, including, among other things, in regard to the selection, use, and marketing of the
`
`Infringing Mark, defining the nature of Calibra’s business, JLV’s holding of the Infringing Mark,
`
`and JLV’s providing Calibra with the Infringing Mark for use in commerce.
`
`
`
` 15
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 16 of 30
`
`
`
`84.
`
`Facebook’s actions have made it a co-participant in Calibra and JLV’s
`
`infringement of the CURRENT Marks.
`
`85.
`
`On information and belief, Calibra’s use of the Infringing Mark is at the direction
`
`of Facebook, is within Calibra’s scope of authority as an agent, and has been ratified by
`
`Facebook through continued use and marketing of the Infringing Mark by both Calibra and by
`
`Facebook.
`
`86.
`
`Facebook’s actions have caused and are likely to cause confusion, mistake, or
`
`deception as to the affiliation, connection, or association of the Calibra Defendants with Current.
`
`87.
`
`Further, the infringement of the CURRENT Marks is causing immediate and
`
`irreparable harm and injury to Current, and to its goodwill and reputation, and will continue to
`
`both damage Current and confuse the public unless enjoined by this court. Current has no
`
`adequate remedy at law for this irreparable harm.
`
`88.
`
`Facebook’s conduct as alleged herein constitutes vicarious trademark
`
`infringement and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
`
`§ 1125(a).
`
`89.
`
`Upon information and belief, Facebook’s conduct as alleged herein is willful
`
`because Facebook has continued to allow the Calibra Defendants to use the Infringing Mark
`
`despite receiving several cease-and-desist letters from Current and being aware of Current’s prior
`
`rights to the CURRENT Marks.
`
`90.
`
`Current is entitled to, among other relief, injunctive relief and an award of actual
`
`damages, Facebook’s profits, enhanced damages and profits, reasonable attorneys’ fees, and
`
`costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116, 1117,
`
`together with prejudgment and post-judgment interest.
`
`
`
` 16
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 17 of 30
`
`COUNT FIVE
`
`VICARIOUS FEDERAL UNFAIR COMPETITION
`AND FALSE DESIGNATION OF ORIGIN
`(Against Defendant Facebook)
`
`91.
`
`Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`
`
`herein.
`
`92.
`
`As previously alleged, the Calibra Defendants, including Calibra and JLV, have
`
`engaged in direct trademark infringement by infringing upon the CURRENT Marks through their
`
`use of the Infringing Mark.
`
`93.
`
`Calibra and JLV are both subsidiaries of, and are owned and controlled by,
`
`Facebook.
`
`94.
`
`Facebook exercised control over Calibra and JLV at all times, including, among
`
`other things, in regard to the selection, use, and marketing of the Infringing Mark, the nature of
`
`Calibra’s business, JLV’s holding of the Infringing Mark, and JLV’s providing Calibra with the
`
`Infringing Mark for use in commerce.
`
`95.
`
`Facebook’s actions have made it a co-participant in Calibra and JLV’s
`
`infringement of the CURRENT Marks.
`
`96.
`
`Facebook’s actions have caused and are likely to cause confusion, mistake, or
`
`deception as to the affiliation, connection, or association of the Calibra Defendants with Current.
`
`97.
`
`Further, the infringement of the CURRENT Marks is causing immediate and
`
`irreparable harm and injury to Current, and to its goodwill and reputation, and will continue to
`
`both damage Current and confuse the public unless enjoined by this court. Current has no
`
`adequate remedy at law for this irreparable harm.
`
`98.
`
`Facebook’s conduct as alleged herein constitutes vicarious unfair competition and
`
`false designation of origin in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
`
`
`
` 17
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 18 of 30
`
`
`
`99.
`
`Upon information and belief, Facebook’s conduct as alleged herein is willful
`
`because Facebook has continued to allow the Calibra Defendants to use the Infringing Mark
`
`despite receiving several cease-and-desist letters from Current and being aware of Current’s
`
`rights to the CURRENT Marks.
`
`100. Current is entitled to, among other relief, injunctive relief and an award of actual
`
`damages, Facebook’s profits, enhanced damages and profits, reasonable attorneys’ fees, and
`
`costs of the action under Sections 34 and 35 of the Lanham Act, 15 U.S.C. §§ 1116, 1117,
`
`together with prejudgment and post-judgment interest.
`
`COUNT SIX
`
`VICARIOUS TRADEMARK INFRINGEMENT
`AND UNFAIR COMPETITION UNDER COMMON LAW
`(Against Defendant Facebook)
`
`101. Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`herein.
`
`102. As previously alleged, the Calibra Defendants, including Calibra and JLV, have
`
`engaged in direct trademark infringement by infringing upon the CURRENT Marks through their
`
`use of the Infringing Mark.
`
`103. Calibra and JLV are both subsidiaries of, and are owned and controlled by,
`
`Facebook.
`
`104. Facebook exercised control over Calibra and JLV at all times, including, among
`
`other things, in regard to the selection, use, and marketing of the Infringing Mark, the nature of
`
`Calibra’s business, JLV’s holding of the Infringing Mark, and JLV’s providing Calibra with the
`
`Infringing Mark for use in commerce.
`
`
`
` 18
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 19 of 30
`
`
`
`105. Facebook’s actions have made it a co-participant in Calibra and JLV’s
`
`infringement of the CURRENT Marks.
`
`106. Facebook’s actions have caused and are likely to cause confusion, mistake, or
`
`deception as to the affiliation, connection, or association of the Calibra Defendants with Current.
`
`107. Further, the infringement of the CURRENT Marks is causing immediate and
`
`irreparable harm and injury to Current, and to its goodwill and reputation, and will continue to
`
`both damage Current and confuse the public unless enjoined by this court. Current has no
`
`adequate remedy at law for this irreparable harm.
`
`108. Facebook’s conduct as alleged herein constitutes vicarious trademark
`
`infringement and unfair competition in violation of New York law or other applicable state
`
`common law.
`
`109. Upon information and belief, Facebook’s conduct as alleged herein is willful
`
`because Facebook has continued to allow the Calibra Defendants to use the Infringing Mark
`
`despite receiving several cease-and-desist letters from Current and being aware of Current’s
`
`rights to the CURRENT Marks.
`
`110. As a result of the Calibra Defendants’ unlawful conduct, Current has suffered and
`
`is likely to continue to suffer damages, and Calibra Defendants have obtained profits and/or
`
`unjust enrichment.
`
`111. Unless the Calibra Defendants are permanently enjoined from their wrongful
`
`conduct, Current will continue to suffer irreparable injury for which it has no adequate remedy at
`
`law.
`
`
`
` 19
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 20 of 30
`
`
`
`112. Current is entitled to, among other relief, injunctive relief, an award of actual
`
`damages, the Calibra Defendants’ profits, and enhanced damages and profits and, together with
`
`prejudgment and post-judgment interest.
`
`COUNT SEVEN
`
`CONTRIBUTORY TRADEMARK INFRINGEMENT
`IN VIOLATION OF 15 U.S.C. § 1125(a)
`(Against Defendant Character)
`
`113. Current repeats and realleges each of the foregoing paragraphs as if fully set forth
`
`herein.
`
`114. As previously alleged, the Calibra Defendants have engaged in direct trademark
`
`infringement by infringing upon the CURRENT Marks through their use of the Infringing Mark.
`
`115. Upon information and belief, Character designed and took affirmative acts to
`
`assist the Calibra Defendants in their respective direct and vicarious trademark infringement by
`
`supplying the Calibra Defendants with the Infringing Mark.
`
`116. At the time Character designed and supplied the Calibra Defendants with the
`
`Infringing Mark, it knew or should have known that Current was using the CURRENT Marks
`
`and providing financial services under the CURRENT Marks.
`
`117. At the time Character designed and supplied the Calibra Defendants with the
`
`Infringing Mark, it knew or should have known that the Calibra Defendants intended to provide
`
`financial services under the Infringing Mark.
`
`118. On information and belief, Character possesses the resources and design archive
`
`to cross-reference designs and logos provided to prior clients yet declined to ensure that the
`
`Infringing Mark did not conflict with prior designs or logos Character provided to its clients,
`
`including the CURRENT Marks.
`
`
`
` 20
`
`
`
`Case 1:19-cv-09410 Document 1 Filed 10/10/19 Page 21 of 30
`
`
`
`119. Given the foregoing and upon information and belief, Character continued to
`
`supply the Calibra Defendants with the Infringing Mark despite having actual or constructive
`
`knowledge that the Calibra Defendants’ use of the Infringing Mark would infringe on the
`
`CURRENT Marks.
`
`120. By supplying the Calibra Defendants with the Infringing Marks, Character
`
`caused, enabled, and/or assisted the Calibra Defendants to infringe on the CURRENT Marks.
`
`121. On information and belief, Character has taken no remedial actions to mitigate the
`
`infringing conduct of the Calibra Defendants.
`
`122. On information and belief, Character has taken actions to obscure its own
`
`assistance in causing and enabling the infringing conduct, including removing posts on its
`
`Internet website available at http://charactersf.com and from the LinkedIn account of it
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