Danger Ninja v. Estee Lauder

8/3/2019 Danger Ninja v. Estee Lauder

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23 Kurt M. Rylander, OSB No. [email protected] Mark E. Beatty, OSB No. [email protected]

RYLANDER & ASSOCIATES PC6 406 West 12th StreetVancouver, WA 986607 Tel: 360.750.9931Fax: 360.397.04738 Attorneys for Plaintiff9

IN THE UNITED STATES DISTRICT COURT11 FOR THE DISTRICT OF OREGONPORTLAND DIVISION1213 DANGER NINJA PRODUCTIONS,14 a dba of DANIEL HOYT, andDANIEL HOYT, an individual,

Plaintiff(s),16 v.

1718 THE ESTEE LAUDER19 COMPANIES, INC., dba MACCOSMETICS, a Delawarecorporation;21 MAKE-UP ART COSMETICS, INC.22 dba MAC COSMETICS, a Delawarecorporation; and23 M.A.C. COSMETICS, INC., a24 Delaware corporation,_________Defendant(s).26 COMES NOW Plaintiff, DANGER27

PKCOMPLAINTFor Copyright Infringement,

Copyright Misattribution, DMCAViolation, Unfair Trade Practices,and Equitable Relief

JURY TRIAL DEMANDED

NINJA PRODUCTIONS andDANIEL HOYT, and by this Complaint seeks money damages and equitable

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Case 3:11 cv 01321 PK Document 1 Filed 11/03/11 Page 1 of 17 Page ID#: 1


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relief against Defendants THE ESTEE LAUDER COMPANIES, INC., :MAKE-34 UP-COSMETICS, INC., and M.A.C. COSMETICS, INC. for: (1) copyright5 infringement; (2) copyright misattribution; (3) violation of the Digital6 Millennium Copyright Act of 1998 (DMCA); and (4) violation of Oregon's Unfair7 Trade Practices Act; and alleges as follows:89

JURISDICTION AND VENUE101. This Court has subject matter jurisdiction over this action This11

12 Court has Federal Question jurisdiction over this action pursuant to 28 U.S.C.13 1331 and 1338 as an action arising under the laws of the United States,14 including Title 17 of the United States Code relating to copyrights.15 2. This Court has pendent jurisdiction over the state claims under 2816 U.S.C. 1338(b) in that said claims are joined with substantial and related17 claims under the Copyright Laws of the United States, Title 17 United States18

Code. This Court also has supplemental jurisdiction pursuant to 28 U.S.C. 1920 1367. Pursuant to Rule 9(c), Plaintiff pleads that al l acts and conditions21 precedent for establishing jurisdiction have been performed or have occurred.22 3. Venue and personal jurisdiction are proper in this district23 pursuant to 28 U.S.C. 1400, 28 U.S.C. 1391(b) and (c), and, pursuant to24 FRCP 4, Oregon's long arm jurisdictional rules ORCP 4A, 4C, 4D, and or 4L in25 .

that Plaintiff is informed and believes and on that basis alleges that26Defendant(s) reside in this district and/or can be found in this district by virtue27

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,23 of their activities, are engaged in substantial and not isolated activities in this4 district, and engaged in acts in this district and/or injured persons in this

district in conjunction with activities carried on within this district by6 Defendants and/or in the ordinary course of trade of Defendants.7 4. Plaintiff is informed and believes and on that basis alleges that8

this Court has personal jurisdiction over Defendants by virtue of Defendants9transacting and doing business in this judicial district.

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12 PARTIES13 5. Danger Ninja Productions. Plaintiff, DANIEL HOYT is a14 professional photographer operating under the sole proprietorship name of

DANGER NINJA PRODUCTIONS, with principal place of business I I I16

Portland, Oregon.1718 6. M.A.C. Cosmetics, Inc. Plaintiff is informed and believes and on

19 that basis alleges that Defendant M.A.C. Cosmetics, Inc. is a Delawarecorporation and a wholly owned subsidiary of Make-Up Art Cosmetics, Inc.,

21 conducting business in the State of Oregon, registered as a foreign corporation22 in Oregon, and by such extensive conduct, residing in the State of Oregon.23 7. Make-up Art Cosmetics, Inc. Plaintiff is informed and believes24 and on that basis alleges that Defendant Make-Up Art Cosmetics, Inc. is a

26 Delaware corporation and a wholly owned subsidiary of The Estee Lauder

27 Companies, Inc., conducting business in the State of Oregon, registered as a28

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23 foreign corporation in Oregon, and by such extensive conduct, residing in the4 State of Oregon.

8. The Estee Lauder Companies, Inc. Plaintiff is informed and6 believes and on that basis alleges that Defendant Th e Estee Lauder7 Companies, Inc. is a Delaware corporation conducting business in the State of8

Oregon, and by such extensive conduct, residing in th e State of Oregon, and9further that The Estee Lauder Companies, Inc. wholly owns, dominates, and

11 controls all activities and actions of Defendants Make-Up Art Cosmetics, Inc.,12 and M.A.C. Cosmetics, Inc. and that the Defendants share in-house corporate13 counsel and legal strategies, plans and knowledge.14 9. The website www.maccosmetics.com was registered and

maintained by The Estee Lauder Companies, Inc.16

10. The website www.macmeover.com was registered by William1718 Jelinek of Make-Up Art Cosmetics, Inc. Th e administrative contact is William

19 Jelinek of Make-Up Art Cosmetics, Inc. His e-mail was listed as a root"estee.com" e-mail. The technical contact was listed as Ken Gunther of Estee

21 Lauder, Inc. Plaintiff is informed and believes that William Jelinek, despite22 holding himself out as a an authorized individual of Make-Up Art Cosmetics,23 Inc., is actually an employee and assistant general counsel of Estee Lauder.24

11. Plaintiff is informed and believes and on that basis alleges that

26 Defendants are commonly owned and/or managed and have overlapping officers

27 and/or overlapping general counsels.2829

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212. Hereinafter, MAC Cosmetics, Inc., Make-up Art Cosmetics, Inc.,3

4 and The Estee Lauder Companies, Inc. will be referred to as "Defendants" or

"Estee Lauder Defendants".67 COMMON ALLEGATIONS OF FACT8 13. Plaintiff is a commercial professional photographer. In 2010,9

Plaintiff created the work titled DRIPPING BLACK. The work is a visuallyshocking and stunning visual work of art that immediately grabs the viewers'11

12 attention.13 14. Plaintiff was and is the sole owner of his copyrighted work14 DRIPPING BLACK, a true and correct black and white photocopy of which is

attached hereto as Exhibit "A" and incorporated herein by reference.16 15. Plaintiffs copyrighted work has been registered by the Library of17 Congress, Copyright Registration No. VA0001790744 (hereinafter the1819 "Copyrighted Work").

16. Plaintiffs copyright registration is prima facie evidence of the21 validity, ownership, and originality of his copyrighted work.22 17. Plaintiff incorporated copyright management information ("CMI")23 into all accessible digital copies of the Copyrighted Work. The CMI is displayed24 with digital copies and prints out to be visible on hard copies.

18. Plaintiff is informed and believes and on that basis alleges that26Defendants used and/or use Plaintiffs copyrighted photograph(s) to: promote,27

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23 advertise, and/or sell goods and/or serVIces In Oregon, and has shipped4 products including unauthorized copies of the Copyrighted Work to one or more

purchasers and/or locations in Oregon.6 19. Plaintiff is informed and believes, and on that basis alleges, that7 Defendants copied, published and publicly displayed the Copyrighted Work,8 and/or unauthorized derivative works created from the Copyrighted Work, in9

Oregon, and throughout the United States and internationally, in storedisplays, magazines, catalogues, brochures, and/or via the internet. Plaintiff is11

12 informed and believes and on that basis alleges that a true and correct black13 and white photocopy of one of Defendants' unlawful and violative displays used14 in the MAC Me Over campaign by Defendants at one of Defendants' stores in

Oregon is attached hereto as Exhibit "B" and incorporated herein by reference16 20. Plaintiff is informed and believes and on that basis alleges that17 Defendant(s) acquired one or more digital copies of the Copyrighted Work18

without Plaintiffs consent, that those digital copies included Plaintiffs CMI,19and that Defendant(s) removed or altered the CMI to display the Copyrighted

21 Work without the CMI in Defendant(s) national advertising campaign(s); and22 that Defendant(s) further failed to attribute Plaintiffs work to Plaintiff in those23 campaign(s). Plaintiff is informed and believes, and on that basis alleges, that24 . Defendants' actions were purposeful, knowing, and intentional and in absolute

derogation of Plaintiffs rights.2621. Plaintiff is informed and believes and on that basis alleges that27

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2Defendants used Plaintiffs copyrighted work, without permission, in national3

4 advertising campaigns, including in stores located in Oregon, to sell

Defendants' goods and/or services, and did not attribute that work to Plaintiff,6 and instead altered and removed attribution to Plaintiff.7 22. Plaintiff is informed and believes and on that basis alleges that8

Defendants used Plaintiffs copyrighted work, without permission, in national9

advertising campaigns, including in stores located in Oregon, to sellDefendants' goods and/or services, and in so doing, removed Plaintiffs eMI by11

12 which Plaintiff controls use and attribution of Plaintiffs copyrighted work.13 23. Plaintiff is informed and believes and on that basis alleges that14 Defendants are sophisticated users of copyrighted visual works of art, that

Defendants' employ and/or contract with photographers and models on a16

regular basis, and that Defendants are sophisticated and knowledgeableregarding copyright law and the rights of authors and models.18

24. Plaintiff is entitled to compensation to the extent possible for19damages, general and special, consequential, and incidental, in an amount to

21 be proven at trial, for the harm caused by Defendant, and for attorneys' fees,22 costs, and pre- and post-judgment interest.23 25. Plaintiff has suffered and likely will suffer immediate irreparable24

damage and ongoing harm by reasons of Defendants' unlawful acts unlessDefendants are restrained and enjoined, and Plaintiff is without adequate26remedy at law.27

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23 26. Defendants' unlawful activities caused, and likely will continue to4 cause, irreparable harm to Plaintiff, which cannot be fully compensated by

money damages.6 27. The public has an overriding interest in avoiding unlawful copying7. of the work of artists and in the enforcement of copyright and trade practices8 laws, and in the proper attribution of source and association for goods and9

services in commerce, and in maintaining the integrity of CMI systems11 28. Accordingly, Plaintiff demands an amount of money damages to12 compensate the Plaintiff for the harm caused, including but not limited to13 Defendants' profits, statutory and/or punitive' damages, as well as equitable14 relief, attorneys' fees, costs, and interest.

16FIRST CLAIM FOR RELIEF--COPYRIGHT INFRINGEMENT

1718 29. Plaintiff re-alleges every paragraph in this Complaint.19 30. Plaintiff is informed and believes and on that basis alleges that by

it s aforesaid conduct Defendants willfully infringed Plaintiffs copyrighted21 works; that Defendants' actions willfully and for profit violated exclusive rights22 of the Copyright Laws of the United States; that Plaintiff owned valid copyright23 on works which Defendants violated in acts of improper appropriation.24 31. Accordingly, Defendants are liable to Plaintiff for actual damages,

26 including Defendants' profits, and Defendants should be enjoined to remove27 and destroy al l infringing displays, and enjoined to post prominently, in al l28

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stores and other locations where the infringing work appeared, attribution toPlaintiff as the author and copyright owner of the work DRIPPING BLACK for

a period of no less than one year.

SECOND CLAIlYI FOR RELIEF--COPYRIGHT MISATTRIBUTION32. Plaintiff re-alleges every paragraph in this Complaint.33. Defendants altered and removed attribution of Plaintiffs

copyrighted work in it s infringing articles, and are liable therefore pursuant toSection 106A of the Copyright Act for false attribution.

34. Accordingly, Defendants are liable to Plaintiff for actual damages,including Defendants' profits, and Defendants should be enjoined to removeand destroy al l misattributing displays, and enjoined to post prominently, in allstores and other locations where the misattributing work appeared, attributionto Plaintiff as the author copyright owner of the work DRIPPING BLACK for aperiod of no less than one year ..

THIRD CLAIM FOR RELIEF--DMCA VIOLATION35. Plaintiff re-alleges every paragraph in this Complaint.36. Plaintiff marked his Copyrighted Work with "copyright

management information" (CMI) within the meaning of 17 U.S.C. 1202.37. Plaintiff is informed and believes and on that basis alleges that

Defendants violated the Digital Millennium Copyright Protection Act of 1998,

WRYLANDER9--- COMPLAINT FOR RELIEF , & ASSOCIATES PCrj\\, . lO6 WelJl 12th Street111212011 4:5H4 PM HOYD.OOI WA 98660( .360) 7!iO-993I



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23 17 U.S.C. 1201 et seq. by improperly, without consent of Plaintiff, removing4 or altering the CMI, and/or distributing, publishing or publicly displaying

copies of Plaintiffs Copyrighted Work, knowing that CMI had been altered or6 removed without permission of the copyright owner or law.7 38. Pursuant to 17 U.S.C. 1203, Defendants are liable to Plaintiff for8

damages, including:9

a. Actual damages suffered by Plaintiff;11 b. Disgorgement of Defendants' Profits, including any and al l12 gams and benefits Defendants received, realized or unrealized,13 from use of Plaintiffs copyrighted work; and/or,14 c. Statutory damages, at Plaintiffs election, for each violation

of Section 1202, in the sum of not less than $2,500 or more than16 $25,000, each use by Defendants of Plaintiffs Copyrighted Work,1718 as altered by Defendants, constituting a separate and distinct19 violation of Section 1202.

39. Pursuant to 17 U.S.C. 1203, Defendants should be enjoined to21 remove and destroy all infringing displays, and enjoined to post prominently, in22 al l stores and other locations where the infringing work appea.red, attribution23 to Plaintiff as the author and copyright owner o f the work DRIPPING BLACK24 for a period of no less than one year.

26 40. Pursuant to 17 U.S.C. 1203, Defendants are liable to Plaintiff for27 attorneys' fees and costs, including the cost of expert witnesses, and interest on2829 10- COMPLAINT FOR RELIEF

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al l claims.

FOURTH CLAIM FOR RELIEF-UNF ...L\lR TRADE PRACTICES41. Plaintiff re-alleges every paragraph in this Complaint.42. Plaintiff is informed and believes and on that basis alleges that

Defendant, by its aforesaid conduct, committed unfair trade practices inviolation of ORS 646.605 et seq., that Defendants willfully engaged in practicesand acts that cause likelihood of confusion or of misunderstanding as to thesource, sponsorship, approval, or certification of Defendants' goods or servicesand/or as to affiliation, connection, or association with, or certification by,Plaintiff and/or Plaintiffs products and/or that represent Defendants' goods tohave sponsorship or approval that they do not have or a status, qualification,affiliation, or connection that Defendants do not have.

43. Plaintiff is informed and believes and on that basis alleges thatDefendants' unlawful acts were and are knowing, willful, and malicious.

44. Plaintiff is entitled to compensation to the extent possible I I Idamages, general and special, consequential, and incidental, in an amount tobe proven at trial, for the harm caused by Defendant, and for attorneys'costs, and pre- and post-judgment interest.

45. Plaintiff has and will suffer immediate irreparable damage andongoing harm to it s business, reputation, and goodwill by reasons ofDefendants' unlawful acts unless Defendants are restrained and enjoined, and

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23 Plaintiff is without adequate remedy at law.4 46. Accordingly, Plaintiff demands an amount of money damages to

compensate the Plaintiff for the harm caused, including but not limited to6 Defendant's profits, statutory and/or punitive damages, as well as equitable7 relief, attorneys' fees, costs, and interest.89

DEMAND FOR JUDGMENT & PRAYER FOR RELIEFWHEREFORE Plaintiff prays for judgment against the Defendants as

1112 follows:13 (a) Granting judgment in favor of Plaintiff against Defendants on all14 claims;

(b) Awarding actual, general and specific, consequential and16 incidental, damages against Defendants, jointly and severally, in an amount to17 be determined at trial;18

(c) Awarding Plaintiff exemplary, statutory, treble damages against19Defendants, jointly and severally;

21 (d) Adjudging Defendants liable under United States copyright laws22 to Plaintiff for statutory, and or actual damages and disgorgement of23 Defendants' profits, at the election of Plaintiff:24 (1) For Plaintiff and against Defendants for actual damages

and/or Defendants' profits from Defendants' acts of26272829

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infringement, pursuant to the Copyright Act of 1976, 17 U.s.C. 101 et seq.;

(2) For Plaintiff and against Defendants for actual damagesand/or Defendants' profits from Defendants' acts ofmisattribution, pursuant to the Copyright Act of 1976, 17U.s.C. 101 et and

(3) For Plaintiff and against Defendants for statutory damagesand/or actual damages and/or profits, from Defendants'violation of the Digital Millennium Copyright Act of 1998, atthe election of Plaintiff;

(e) Enjoining Defendants to account for all gams and advantagesderived from its acts of infringement and for its other violations of law, and indisgorgement, reduce all such gains and advantages to money judgment infavor of Plaintiff;

(f) Enjoining Defendants to identify al l locations wherein Defendantsdisplayed Plaintiffs copyrighted work, and the number displays containingPlaintiffs copyright work at each such location;

(g) Enjoining Defendants to post prominently inside the front doors ofeach such location a notice properly attributing Plaintiff as the author of thework DRIPPING BLACK for a period not less than one year; such prominenceto be equally as prominent as Defendants original displays containingPlaintiffs work;

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(h) Enjoining Defendants to identify the location and content of anyand all production facilities, stores, inventories, stockpiles or distribution

centers containing infringing articles of which it has knowledge, includingproducts, accessories, designs, logos, prints, electronic files, and any otherthings, of which Defendants has knowledge, whether owned or controlled byDefendants or any other party, at which any infringing, misappropriating,misattributing works violative of Plaintiffs rights may be found;

(i) Ordering impoundment, destruction and verification of suchdestruction, of any things identified in the preceding paragraph;

Awarding Plaintiffs its reasonable attorneys' fees and costs,including costs for experts, pursuant to State and Federal law;

(k) Awarding Pre- and post- judgment interest; and(1) Entering such other and further relief as the Court deems

appropriate under the circumstances.

Plaintiff hereby demands trial by jury i

DATED , 112/0

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RYLANDER & ASSOCIATES PCP.O. Box 250Vancouver, WA 98666Tel: (360) 750-9931Fax: (360) 397-0473Of Attorneys for Plaintiff

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EXHIBIT ATO COMPAINT FOR RELIEFDanger Ninja Productions v. Estee Lauder et al.



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EXHIBIT B


Danger Ninja v. Estee Lauder

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