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Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 1 of 28
`
`UNITED STATES DISTRICT COURT
`WESTERN DISTRICT OF TEXAS
`WACO DIVISION
`
`
`Cub Club Investment, LLC,
`
`
`
`
`
`Plaintiff,
`
`Case No. 6:20-cv-856
`
`v.
`
`
`
`Apple, Inc.,
`
`
`
`Defendant.
`
`JURY TRIAL DEMANDED
`
`
`
`
`ORIGINAL COMPLAINT FOR COPYRIGHT INFRINGEMENT
`
`Plaintiff Cub Club Investment, LLC (“CCI” or “Plaintiff”) files this Original Complaint
`
`for Copyright Infringement against Defendant Apple, Inc. (“Apple” or “Defendant”).
`
`NATURE OF THE ACTION
`
`1.
`
`This is an action for copyright infringement arising under the Copyright Act of
`
`1976, 17 U.S.C. §§ 101 et seq. This action involves U.S. Copyright Registration Nos. VAu 001-
`
`204-290, VAu 001-186-920, VAu 001-152-200, VAu 001-152-192, VAu 001-152-187, VAu 001-
`
`180-102, and VAu 001-152-204 (collectively, “Works”). See Ex. A. This action also involves
`
`trade dress infringement, unfair competition, misappropriation, and unjust enrichment. This action
`
`arises under the Copyright Act, the Lanham Act, Texas Business & Commerce Code, and state
`
`common law, including the laws of Texas.
`
`PARTIES
`
`2.
`
`Plaintiff CCI is a Texas limited liability company with its principal place of
`
`business at 2912 Port Rose Lane, League City, Texas 77573. CCI is the owner by assignment of
`
`the Works. CCI is owned and operated by Katrina A. Parrott.
`
`3.
`
`Defendant Apple, Inc. is a California corporation, and has a physical place of
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`business at 5505 W. Parmer Lane, Austin, Texas 78727. Apple is actively transacting business in
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 2 of 28
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`Texas. Apple’s Registered Agent for service of process is CT Corporation System, located at 1999
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`Bryan St., Suite 900, Dallas, Texas 75201.
`
`JURISDICTION AND VENUE
`
`4.
`
`This Court has original subject matter jurisdiction over this action in accordance
`
`with 28 U.S.C. §§ 1331 and 1338(a) because this action arises under the Copyright Act of 1976,
`
`17 U.S.C. §§ 101 et seq. and the Lanham Act, 15 U.S.C. § 1125. Additionally, this Court has
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`supplemental jurisdiction over this action in accordance with 28 U.S.C. § 1367.
`
`5.
`
`This Court has personal jurisdiction over Apple because Apple maintains multiple
`
`places of business in the State of Texas within this judicial district and has purposely availed itself
`
`of the privileges and benefits of the laws of the State of Texas. Apple has continuous and
`
`systematic business contacts with the State of Texas. Apple has a physical place located in the
`
`district at 5505 W. Parmer Lane, Austin, Texas 78727. In addition, Apple Stores are located at
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`Barton Creek Mall (2901 S. Capital of Texas Hwy, Austin, TX 78746), at The Domain (3121 Palm
`
`Way, Austin, TX 78758), at The Shops at La Cantera (15900 La Cantera Parkway, San Antonio,
`
`TX 78256), and at North Star Mall (7400 San Pedro Avenue, San Antonio, TX 78216).
`
`6.
`
`Venue is proper in this district under 28 U.S.C. §§ 1391, 1400(a).
`
`FACTUAL BACKGROUND
`
`CCI’s Development of iDiversicons® Emoji
`
`7.
`
`Emoji are digital images or icons used to express an idea or emotion by the sender.
`
`Emoji are ubiquitous in the digital age, including through communication on smartphones and
`
`social media platforms. Before 2013, people had limited options of emoji to represent themselves,
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`especially in terms of race or color. In June 2013, Mrs. Katrina A. Parrott envisioned bringing
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`racial diversity into the realm of digital communication after her daughter raised the question,
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`“Wouldn’t it be nice to have emoji that look like the person sending them?” With this vision,
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 3 of 28
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`Mrs. Parrott developed an innovative solution and assembled a team to create emoji so that people
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`of all races, gender, orientations, and abilities can express themselves through an abundance of
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`diverse emoji. Mrs. Parrott founded CCI and created the iDiversicons® brand, the world’s first
`
`diverse emoji.
`
`8.
`
`On October 11, 2013, iDiversicons® emoji were launched and released on the
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`Apple App Store with versions compatible on the iPhone, iPad, and iPod Touch. Additionally,
`
`iDiversicons® emoji were released on Apple iTunes on December 20, 2014.
`
`CCI’s Registered Copyrights and Other Intellectual Property
`
`9.
`
`CCI registered its first set of copyrighted works, covering emoji with five skin
`
`tones, with the U.S. Copyright Office on July 31, 2013. Today, CCI holds over 20 registered
`
`copyrights covering diverse emoji. See Ex. A. The Works are of great value to CCI and are used
`
`daily by its numerous customers that own the application. CCI is the sole owner and proprietor of
`
`all rights, title, and interest in and to the copyrights in the Works. The copyrights in the Works are
`
`presently valid and subsisting and were valid and subsisting at all times affecting the matters
`
`complained herein. The Works are a collection of creative, diverse emoji, including emoji with
`
`five skin tones. Each of the five skin tones comprises one of African-American tone, Asian tone,
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`Latino/Hispanic tone, Indian tone, and Caucasian tone.
`
`10.
`
`Additionally, the innovative, diverse emoji created by CCI are the subject of three
`
`pending applications before the U.S. Patent and Trademark Office, including utility and design
`
`patent applications.
`
`CCI’s Proposals to Unicode
`
`11.
`
`To make her solution accessible to consumers, CCI and Mrs. Parrott brought
`
`iDiversicons® emoji to Silicon Valley beginning in 2013. Mrs. Parrott joined the Unicode
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 4 of 28
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`Consortium (“Unicode”) on November 5, 2013 and became actively involved with the Unicode
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`Technical Committee (“UTC”) as a means to raise awareness among technology leaders about the
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`digital diversity and inclusion issue. On April 9, 2014, Mrs. Parrott submitted to the UTC
`
`document L2/14-085, titled “Request Approval to add ‘Our New iDiversicons: Diverse Emoji
`
`Characters’ to the next updated Unicode Standard.” When Mrs. Parrott presented her proposal on
`
`iDiversicons® emoji, its mission of bringing diverse emoji to the world, and its five skin tone
`
`emoji standard at UTC Meeting 139 on May 7, 2014 in San Jose, California, technology leaders
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`praised her efforts, which sparked a deeper conversation among UTC members regarding the fact
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`that no one was seriously addressing this issue. The iDiversicons® emoji solution for advancing
`
`the Unicode Standard to include diverse emoji gained traction at UTC meetings as Mrs. Parrott
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`continued to submit reports and proposals, including “Report on Diversity Emoji Use in
`
`iDiversicons and Proposal to Add New Emoji from iDiversicons Collection to Unicode”;
`
`“Applying Color Theory to the World of Emoji”; “Adding gender counterparts to emoji list?”1 At
`
`UTC Meeting 141 on October 28, 2014, hosted by Apple in Sunnyvale, CA, Mrs. Parrott presented
`
`her solution of using a color modifier pallet to implement the five skin tone options on digital
`
`keyboards, a solution recognized and utilized globally.
`
`12.
`
`Unicode held the following UTC Meetings: UTC Meeting 139 from May 6 – 9,
`
`2014 in San Jose, California; Unicode held UTC Meeting 140 from August 5 – 8, 2014 in
`
`Redmond, Washington; UTC Meeting 141 from October 27 – 30, 2014 in Sunnyvale, California
`
`(hosted by Apple); and UTC Meeting 142 from February 2 – 5, 2015 in Mountain View, California.
`
`
`1 UTC document L2/14-154, titled “Report on Diversity Emoji Use in iDiversicons and Proposal
`to Add New Emoji from iDiversicons Collection to Unicode (revised)” (August 5, 2014); UTC
`document L2/14-204, titled “Applying Color Theory to the World of Emoji” (August 7, 2014);
`UTC topic L2/15-048 “Adding gender counterparts to emoji list?” (February 3, 2015).
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 5 of 28
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`13. Mrs. Parrott attended UTC Meetings 139, 140, 141, and 142.
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`14. Mrs. Parrott submitted the following documents to the UTC: document L2/14-085
`
`titled “Request Approval to add ‘Our New iDiversicons: Diverse Emoji Characters’ to the next
`
`updated Unicode Standard” (April 9, 2014); document L2/14-085 titled “Request Approval to add
`
`‘Our New iDiversicons: Diverse Emoji Characters’ to the next updated Unicode Standard.” (May
`
`7, 2014); document L2/14-154 titled “Report on Diversity Emoji Use in iDiversicons and Proposal
`
`to Add New Emoji from iDiversicons Collection to Unicode (revised).” (August 5, 2014);
`
`document L2/14-204 titled “Applying Color Theory to the World of Emoji.” (August 7, 2014);
`
`topic L2/15-048 “Adding gender counterparts to emoji list?” (February 3, 2015).
`
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`5
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 6 of 28
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`
`
`CCI Internationally Recognized as Creator of Diverse Emoji
`
`15.
`
`CCI has sold its emoji app throughout the United States, including to customers in
`
`the State of Texas. CCI has invested significant resources in the design, development, distribution,
`
`advertising, and marketing of iDiversicons® emoji. The designs and features of the iDiversicons®
`
`emoji, including the diverse skin colors on emoji representing various races and ethnicities, have
`
`received widespread public attention.
`
`16.
`
`Since 2014, Mrs. Parrott has been internationally recognized as the creator of five
`
`skin tone emoji, and she continues to be recognized as the pioneer in digital communication by
`
`progressing diversity and inclusion through iDiversicons®. Co-founder and president of Unicode
`
`Dr. Mark Davis praised Mrs. Parrott’s innovative work, saying, “Without you, we certainly
`
`wouldn’t have come up with as good a solution!” American University recognized Mrs. Parrott
`
`as a pioneer in diversity and inclusion, and the 2019 film “Picture Character: An Emoji
`
`Documentary” featured iDiversicons® emoji. Additionally, numerous articles celebrate her
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`achievements, including: PCWorld, CNN, TexasMonthly, Black Enterprise, Women Leadership
`
`Magazine USA, SEVENTEEN, The Daily Dot, Houston Chronicle, Puget Sound Business Journal,
`
`Galveston Daily News, and Racing Toward Diversity. In 2015, the United Athletes Foundation
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`asked Mrs. Parrott to create a Ray Lewis emoji. This year, the Smithsonian National Museum of
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`African American History and Culture is considering iDiversicons® emoji as a potential feature
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`exhibit.
`
`17.
`
`The designs of iDiversicons® emoji have distinctive and non-functional features
`
`that identify to consumers that the origin of the iDiversicons® emoji is CCI. As a result of at least
`
`CCI’s continuous and exclusive use of the iDiversicons® emoji, CCI’s marketing, advertising, and
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`6
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 7 of 28
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`sales of iDiversicons® emoji, and the highly valuable goodwill and substantial secondary meaning
`
`acquired as a result, CCI owns trade dress rights in the designs and appearances of the
`
`iDiversicons® emoji, which consumers came to uniquely associate with CCI. CCI’s trade dress
`
`rights in the designs and appearances of the iDiversicons® emoji are collectively referred to as
`
`“CCI’s Trade Dress.”
`
`18.
`
`An exemplary image of iDiversicons® trade dress, shown below, demonstrates the
`
`palette of diverse emoji available to users when sending messages on an Apple iPhone.
`
`19.
`
`Additional exemplary images of iDiversicons® emoji are shown below:
`
`
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`7
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`Discussions between CCI and Apple
`
`
`
`20.
`
`Starting at a UTC meeting in May of 2014, Mrs. Parrott began discussing a potential
`
`partnership between CCI and Apple concerning her copyrighted diverse emoji with Apple’s senior
`
`software engineer and senior director.
`
`21.
`
`Apple participated in UTC meetings in 2013, 2014, and 2015, including UTC
`
`Meetings 139, 140, 141, and 142.
`
`22.
`
`Apple representatives, including Peter Edberg, Apple Senior Software Engineer,
`
`participated in UTC Meetings 139 and 140. Mr. Edberg also participated in UTC Meetings 141
`
`and 142.
`
`23.
`
`On March 27, 2014, Mrs. Parrott sent a first letter by mail and email to Tim Cook,
`
`CEO of Apple, requesting a meeting with Apple to discuss a potential partnership between CCI
`
`and Apple.
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`8
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 9 of 28
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`24.
`
`On April 9, 2014, Mrs. Parrot sent a second letter by mail and email to Mr. Cook
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`with additional information about iDiversicons® emoji along with images of at least 594
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`iDiversicons® emoji.
`
`25.
`
`On May 2, 2014, Mrs. Parrott sent an email to Mr. Cook requesting an in-person
`
`meeting.
`
`26.
`
`During UTC Meeting 139, Mrs. Parrott met Mr. Edberg, and Mr. Edberg reviewed
`
`iDiversicons® emoji and the iDiversicons® website.
`
`27.
`
`On or around May 7, 2014, Mr. Edberg helped coordinate a meeting between
`
`Mrs. Parrott and Celia Vigil, Apple’s Senior Director for Frameworks and Fonts at the time.
`
`28. Mr. Edberg helped coordinate the meeting between Mrs. Parrott and Mrs. Vigil to
`
`explore partnership opportunities between Apple and CCI.
`
`29.
`
`On or around May 7, 2014, Mrs. Parrott provided Mr. Edberg a thumb drive with
`
`over 100 iDiversicons® emoji, which Mr. Edberg uploaded to his laptop computer.
`
`30.
`
`On or around May 7, 2014, Mr. Edberg shared the uploaded emoji from Mrs.
`
`Parrott’s thumb drive with Ms. Vigil during a staff meeting.
`
`31.
`
`On or around May 7, 2014, Mr. Edberg requested that Mrs. Parrott create (1) a
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`series of five skin tone female emoji to compliment the iDiversicons® male police officer and
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`construction worker emoji; and (2) a unicorn emoji based on requests from Apple product users.
`
`32.
`
`On May 8, 2014, Mrs. Parrott provided eleven new emoji to Mr. Edberg at the
`
`Unicode meeting based on Mr. Edberg’s request on May 7, 2014.
`
`33.
`
`34.
`
`On May 8, 2014, Mrs. Parrott met with Ms. Vigil.
`
`On May 9, 2014, Mrs. Parrott sent Ms. Vigil an email with PDF versions of the
`
`emoji that Mr. Edberg uploaded from Mrs. Parrott’s thumb drive.
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`35.
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`On May 9, 2014, Ms. Vigil replied to Mrs. Parrott stating, “Thank you for taking
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`the time to meet with me. I pointed my colleagues at your [iDiversicons®] application. I can also
`
`show them the images you shared with Peter.”
`
`36.
`
`On May 9, 2014, Mr. Edberg sent Mrs. Parrott an email stating, “I hope we can
`
`work out something between iDiversicons and Apple.”
`
`37.
`
`On May 23, 2014, Mr. Edberg sent Mrs. Parrott information regarding the Unicode
`
`Standard.
`
`38.
`
`On June 9, 2014, Mrs. Parrott sent Mr. Edberg a draft research paper titled “Mobile
`
`Diversity Research” (hereinafter, “Research Paper”) for his review.
`
`39.
`
`On June 12, 2014, Mr. Edberg responded to Mrs. Parrott’s email with
`
`recommended edits and comments after reviewing the Research Paper.
`
`40.
`
`On September 26, 2014, Mr. Edberg emailed Mrs. Parrott about his successful
`
`testing of iDiversicons® emoji on the Apple OSX operating system and implementation
`
`instructions.
`
`41.
`
`On September 29, 2014, Mrs. Parrott emailed Mr. Edberg question technical
`
`questions regarding implementation, and Mr. Edberg responded.
`
`42.
`
`On October 23, 2014, Mrs. Parrott was disappointed to learn from Mr. Edberg that
`
`Ms. Vigil did not see an opportunity to partner with CCI and that Apple was proceeding use its
`
`own human interface designers to develop diverse emoji based on iDiversicons® emoji.
`
`43.
`
`On October 28, 2014, Mrs. Parrott presented to the UTC her solution of using a
`
`color modifier pallet to implement the five skin tone options for diverse emoji.
`
`44.
`
`On January 8, 2015, Mrs. Parrott sent a third letter by mail and email to Mr. Cook
`
`requesting that Apple reconsider a partnership with CCI.
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`10
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 11 of 28
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`45.
`
`On March 5, 2015, the iDiversicons® emoji app was a “featured” app on the Apple
`
`App Store.
`
`46.
`
`On April 9, 2015, Apple released its first diverse emoji (“Accused Products”) using
`
`the five skin tone keyboard modifier pallet.
`
`
`
`
`
`47.
`
`On July 13, 2015, Mrs. Parrott sent a fourth letter by mail and email to Mr. Cook
`
`requesting Apple to recognize CCI, iDiversicons® emoji, and her development of diverse emoji.
`
`48.
`
`Upon the release of Apple’s diverse emoji, CCI experienced a decrease in sales for
`
`iDiversicons® emoji.
`
`49.
`
`To date, Apple has released at least four versions of its emoji with five skin tone
`
`options.
`
`50. Mrs. Parrott and iDiversicons® emoji have been instrumental in shaping and
`
`evolving the worldwide emoji landscape, including Apple’s release of diverse emoji.
`
`
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`11
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`Apple’s Copied iDiversicons® Emoji
`
`51.
`
`Apple’s emoji are the same or at least substantially similar to the copyrighted
`
`iDiversicons® emoji that Mrs. Parrott shared with members of Apple’s team.
`
`52.
`
`For example, Apple’s five skin tone version of the “Oncoming Fist” emoji is the
`
`same or substantially similar to CCI’s copyrighted five skin tone “Oncoming Fist” emoji. Other
`
`Apple emoji that are the same or substantially similar to CCI’s copyrighted emoji include:
`
`“Thumbs Up,” “Backhand Index Pointing Up,” “Backhand Index Pointing Down,” “Backhand
`
`Index Pointing Left,” “Backhand Index Pointing Right,” “Index Pointing Up,” and “Ear.”
`
`“Oncoming Fist” Emoji
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`12
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 13 of 28
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`“Thumbs Up” Emoji
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`“Backhand Index Pointing Up” Emoji
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`13
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 14 of 28
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`“Backhand Index Pointing Left” Emoji
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`“Backhand Index Pointing Right” Emoji
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`14
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 15 of 28
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`“Backhand Index Pointing Down” Emoji
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`“Index Pointing Up” Emoji
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`15
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 16 of 28
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`“OK Hand” Emoji
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`“Ear” Emoji
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`
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`The Harm to CCI
`
`53.
`
`As discussed above, CCI receives revenues from its sales of iDiversicons® emoji
`
`on Apple’s App Store and iTunes.
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`16
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 17 of 28
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`54.
`
`Apple’s willful infringement takes away those revenues as Apple device users can
`
`access iDiversicons®-like emoji on the default Apple keyboard. Thus, CCI (1) profits
`
`commercially without paying the price for the use of CCI’s intellectual property; and (2) reduces
`
`and causes substantial harm to the value of the Works. As a result, CCI has been damaged by
`
`Apple’s conduct in an amount to be determined according to proof at trial.
`
`55.
`
`Apple’s infringement has been willful since at least its first release of diverse emoji
`
`in 2015.
`
`56.
`
`Unless enjoined by this Court, Apple intends to continue to infringe upon CCI’s
`
`copyrights and otherwise profit from CCI’s Works. Accordingly, CCI has suffered irreparable
`
`harm and will continue to suffer irreparable harm unless Apple is enjoined. CCI has no adequate
`
`remedy at law to redress all of the injuries that Apple has caused and intends to cause by its
`
`conduct. CCI will continue to suffer irreparable damage until Apple’s actions alleged above are
`
`enjoined by this Court.
`
`57.
`
`Apple’s actions also significantly harm innovation and America’s progress in
`
`diversity and inclusion. If Apple’s copying allows it to misappropriate CCI’s substantial
`
`investment in research, design, and development, other companies will be encouraged to simply
`
`copy others’ proprietary works rather than invest in, partner with, or license works. The
`
`significance of Apple’s wrongdoing is amplified by the fact that Apple’s willful actions target the
`
`creative works of the very community CCI seeks to support and include through iDiversicons®
`
`emoji.
`
`58.
`
`Indeed, this is contrary to Apple’s own mission to remedy gaps in diversity and
`
`inclusion, especially when Apple’s own representatives have recognized Mrs. Parrott’s
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 18 of 28
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`contributions
`
`to bring diversity and
`
`inclusion
`
`to digital communication.
`
` See
`
`www.apple.com/diversity.
`
`COUNT I
`
`Federal Copyright Infringement under the Copyright Act
`(17 U.S.C. §§ 101 et seq.)
`
`59.
`
`CCI incorporates by reference the allegations contained in all paragraphs above,
`
`inclusive, of this Complaint as if fully set forth herein.
`
`60.
`
`61.
`
`CCI owns valid copyrights in the Works at issue in this case.
`
`CCI registered the Works in this case with the U.S. Copyright Office pursuant to
`
`17 U.S.C. § 411(a).
`
`62.
`
`The U.S. Copyright Office issued valid Certificates of Registration to CCI for the
`
`seven (7) registered Works: U.S. Copyright Registration Nos. VAu 001-204-290, VAu 001-186-
`
`920, VAu 001-152-200, VAu 001-152-192, VAu 001-152-187, VAu 001-180-102, and VAu 001-
`
`152-204.
`
`63.
`
`The Works are original, creative works and copyrightable subject matter under the
`
`copyright laws of the United States.
`
`64.
`
`CCI has complied in all respects with 17 U.S.C. §§ 101 et seq., and has secured the
`
`exclusive rights and privileges in and to the copyrights in its Works.
`
`65.
`
`By its actions, alleged above, Defendant has infringed and will continue to infringe
`
`CCI’s copyrights in and relating to CCI’s iDiversicons® emoji by, inter alia, copying, distributing,
`
`and creating derivative works, based on the Works without any authorization or other permission
`
`from CCI.
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`18
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`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 19 of 28
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`66.
`
`Defendant’s actions constitute deliberate and willful infringement of CCI’s
`
`copyrights since it knew, or had reason to know, that its actions constituted copyright infringement;
`
`and/or because it has acted with reckless disregard of CCI’s copyrights.
`
`67.
`
`CCI never gave Defendant permission or authority to copy, distribute, or display
`
`the Works at issue in this case.
`
`68.
`
`As a direct and proximate result of its wrongful conduct, Defendant has obtained
`
`benefits to which Defendant is not entitled.
`
`69.
`
`As a direct and proximate result of Defendant’s wrongful conduct, CCI has been
`
`substantially and irreparably harmed in an amount not readily capable of determination. Unless
`
`enjoined by this Court, Defendant will cause further irreparable injury to CCI.
`
`70.
`
`CCI is entitled to injunctive relief enjoining Defendant, its agents and employees,
`
`and all persons acting in concert or participation with it, from engaging in any further infringement
`
`of CCI’s copyrighted emoji.
`
`71.
`
`CCI is further entitled to recover from Defendant the damages, including attorney’s
`
`fees and costs, it has sustained and will sustain, and any gains, profits, and advantages obtained by
`
`Defendant as a result of its acts of infringement as alleged above. At present, the amount of such
`
`damages, gains, profits, and advantages cannot be fully ascertained by CCI, but will be established
`
`according to proof at trial. CCI is also entitled to recover statutory damages for Defendant’s willful
`
`infringement of its copyrights.
`
`COUNT II
`
`Trade Dress Infringement and False Designation of Origin
`(Lanham Act § 43(a))
`
`72.
`
`CCI incorporates by reference the allegations contained in all paragraphs above,
`
`inclusive, of this Complaint as if fully set forth herein.
`
`19
`
`
`

`

`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 20 of 28
`
`73.
`
`CCI’s Trade Dress includes the overall look and feel of CCI’s products, including:
`
`the insertion of an emoji into messages (text messages, e-mails,
`
`communication app messages, social media apps, and other forms
`
`of content generated by mobile device users) on mobile devices by
`
`selecting from a palette of diverse, five skin tone emoji, comprising
`
`one of African-American tone, Asian tone, Latino/Hispanic tone,
`
`Indian tone, and Caucasian tone.
`
`An exemplary image of iDiversicons® trade dress is shown below:
`
`
`
`20
`
`
`

`

`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 21 of 28
`
`74.
`
`By reason of Defendant’s acts complained of herein concerning Defendant’s
`
`diverse, five skin tone emoji, Defendant has intentionally engaged in conduct that constitutes false
`
`advertising, a false designation of origin, a false or misleading description of fact, a false or
`
`misleading representation of fact tending wrongfully and falsely to describe or represent a
`
`connection between CCI’s and Defendant’s goods, and infringement of CCI’s Trade Dress rights
`
`in violation of 15 U.S.C. § 1125(a). CCI believes that customers are likely to be confused by
`
`Defendant’s use of such false designations of origin, false descriptions or representations regarding
`
`CCI’s and Defendant’s goods, and by Defendant’s confusingly similar trade dress.
`
`75.
`
`In addition, Defendant’s trade dress infringement, coupled with their false
`
`designation of origin, false descriptions, and misrepresentations, including in advertising,
`
`regarding CCI’s and Defendant’s goods, is likely to confuse mobile device users into thinking that
`
`CCI is the source of Defendant’s diverse, five skin tone emoji, that CCI has sponsored those goods,
`
`that those goods are in some manner affiliated with CCI, or that those goods are the same as CCI’s
`
`diverse, five skin tone emoji.
`
`76.
`
`Because of Defendant’s conduct, CCI has been irreparably harmed in its business.
`
`Moreover, CCI will continue to suffer irreparable harm unless Defendant is restrained from
`
`infringing CCI’s Trade Dress and making false designations of origin, false descriptions, or
`
`misrepresentations regarding CCI’s and Defendant’s goods.
`
`COUNT III
`
`Common Law Unfair Competition
`
`1.
`
`CCI incorporates by reference the allegations contained in all paragraphs above,
`
`inclusive, of this Complaint as if fully set forth herein.
`
`21
`
`
`

`

`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 22 of 28
`
`2.
`
`Defendant’s advertisements, marketing, promotions, offers to sell, sales and/or
`
`distribution of the Accused Products and infringing products, in direct competition with CCI,
`
`constitute common law unfair competition, at least by passing off of Defendant’s diverse emoji,
`
`by simulating CCI’s Trade Dress in an intentional and calculated manner that is likely to cause
`
`consumer confusion as to origin and/or sponsorship/affiliation of the Accused Products and
`
`infringing products are released by, distributed by, designed by, endorsed by, authorized by, or
`
`otherwise associated with CCI. Defendant has also interfered with CCI’s business.
`
`3.
`
`CCI’s Trade Dress is entitled to protection under the common law. CCI’s Trade
`
`Dress includes unique, distinctive, and non-functional designs. CCI has extensively and
`
`continuously promoted and used CCI’s Trade Dress for years in the United States and the State of
`
`Texas. Through that extensive and continuous use, CCI’s Trade Dress designs have become well-
`
`known indicators of the origin and quality of CCI’s iDiversicons® diverse emoji products. CCI’s
`
`Trade Dress have also acquired substantial secondary meaning in the marketplace. Moreover,
`
`CCI’s Trade Dress acquired this secondary meaning before Defendant commenced its unlawful
`
`use of CCI’s Trade Dress in connection with the Accused Products and infringing products.
`
`4.
`
`On information and belief, Defendant’s use of CCI’s Trade Dress, including
`
`through reproductions, copies, and/or colorable imitations thereof, has caused and, unless
`
`enjoined, will continue to cause substantial and irreparable injury to CCI for which CCI has no
`
`adequate remedy at law, including at least substantial and irreparable injury to the goodwill and
`
`reputation for quality associated with CCI’s Trade Dress, with CCI, and CCI’s products.
`
`5.
`
`On information and belief, Defendant’s use of CCI’s Trade Dress, including
`
`through reproductions, copies, and/or colorable imitations thereof, has been intentional, willful,
`
`and malicious. Defendant’s bad faith is evidenced at least by the similarity of the Accused
`
`22
`
`
`

`

`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 23 of 28
`
`Products and infringing products to CCI’s Trade Dress, as demonstrated in, for example,
`
`illustrations included herein, and by Defendant’s continuing disregard for CCI’s rights.
`
`6.
`
`On information and belief, Defendant has profited from their unlawful actions and
`
`has been unjustly enriched to the detriment of CCI. Defendant’s unlawful actions have caused
`
`CCI damage in an amount presently unknown, but in an amount to be determined at trial.
`
`7.
`
`CCI is entitled to injunctive relief, and CCI is also entitled to recover at least CCI’s
`
`damages, Defendant’s profits, punitive damages, costs, and reasonable attorney’s fees.
`
`COUNT IV
`
`Common Law Misappropriation
`
`8.
`
`CCI incorporates by reference the allegations contained in all paragraphs above,
`
`inclusive, of this Complaint as if fully set forth herein.
`
`9.
`
`CCI’s advertisements, marketing, promotions, offers to sell, sales, and/or
`
`distribution of the Accused Products and infringing products, in direct competition with CCI,
`
`constitute common law misappropriation.
`
`10.
`
`CCI created the products covered by CCI’s Trade Dress through extensive time,
`
`labor, effort, skill, and money.
`
`11.
`
`Defendant has wrongfully used CCI’s Trade Dress,
`
`including
`
`through
`
`reproductions, copies, and/or colorable imitations thereof, in competition with CCI and gained a
`
`special advantage because Defendant was not burdened with the expenses incurred by CCI.
`
`Defendant has commercially damaged CCI, at least by causing consumer confusion as to origin
`
`and/or sponsorship/affiliation of the Accused Products and infringing products, by creating the
`
`false and misleading impression that the Accused Products and infringing products are released
`
`23
`
`
`

`

`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 24 of 28
`
`by, distributed by, designed by, endorsed by, authorized by, or otherwise associated with CCI, and
`
`by taking away sales that CCI would have made.
`
`12.
`
`CCI’s Trade Dress is entitled to protection under the common law. CCI’s Trade
`
`Dress include unique, distinctive, and non-functional designs. CCI has extensively and
`
`continuously promoted and used CCI’s Trade Dress for years in the United States and the State of
`
`Texas. Through that extensive and continuous use, CCI’s Trade Dress has become a well-known
`
`indicator of the origin and quality of CCI’s iDiversicons® diverse emoji products. CCI’s Trade
`
`Dress has also acquired substantial secondary meaning in the marketplace. Moreover, CCI’s Trade
`
`Dress acquired this secondary meaning before Defendant commenced its unlawful use of CCI’s
`
`Trade Dress in connection with the Accused Products and infringing products.
`
`13.
`
`Defendant’s use of CCI’s Trade Dress, including through reproductions, copies,
`
`and/or colorable imitations thereof, has caused and, unless enjoined, will continue to cause
`
`substantial and irreparable commercial injury to CCI for which CCI has no adequate remedy at
`
`law, including at least substantial and irreparable injury to the goodwill and reputation for quality
`
`associated with CCI’s Trade Dress, with CCI, and CCI’s products. Moreover, as a result of its
`
`misappropriation, Defendant has profited and, unless such conduct is enjoined by this Court, will
`
`continue to profit by misappropriating the time, effort, and money that CCI invested in establishing
`
`the reputation and goodwill associated with CCI’s Trade Dress, with CCI, and CCI’s products.
`
`14.
`
`On information and belief, Defendant’s misappropriation of CCI’s Trade Dress,
`
`including through reproductions, copies, and/or colorable imitations thereof, has been intentional,
`
`willful, and malicious. Defendant’s bad faith is evidenced at least by the similarity of the Accused
`
`Products and infringing products to CCI’s Trade Dress, as demonstrated in, for example,
`
`illustrations included herein, and by Defendant’s continuing disregard for CCI’s rights.
`
`24
`
`
`

`

`Case 6:20-cv-00856-ADA Document 1 Filed 09/18/20 Page 25 of 28
`
`15.
`
`CCI is entitled to injunctive relief, and CCI is also entitled to recover at least CCI’s
`
`damages, Defendant’s profits, punitive damages, costs, and reasonable attorney’s fees.
`
`COUNT V
`
`Unjust Enrichment
`
`16.
`
`CCI incorporates

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