compaint texas dept of transportation v christie

8/4/2019 Compaint Texas Dept of Transportation v Christie

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IN THE UNITED STATES DISTRICT COURT

FOR THE WESTERN DISTRICT OF TEXAS

AUSTIN DIVISION

TEXAS DEPARTMENT OF

TRANSPORTATION Plaintiff, CIVIL ACTION NO.

v. 1:11-cv-726

CHRISTIE CRAIG, BARNES & NOBLE, INC. HACHETTE BOOK GROUP USA, and GRAND CENTRAL PUBLISHING

JURY DEMANDED

Defendants.

COMPLAINT AND REQUEST FOR TEMPORARY RESTRAINING ORDER AND

TEMPORARY AND PERMANENT INJUNCTION

The Parties

1. Plaintiff, the Texas Department of Transportation (TxDOT), is a Texas state

agency with a principal place of business at 125 E. 11

th

Street, Austin, Texas 78701-2483.

2. Upon information and belief, defendant Christie Craig is an author residing in

Houston, Texas. Upon information and belief, defendant Barnes & Noble is a Delaware

corporation with a principal place of business at 122 Fifth Avenue, New York, New York 10011.

Upon information and belief, defendant Hachette Book Group USA is a Delaware corporation

with a principal place of business at 237 Park Avenue, New York, New York 10017-3140. Upon

information and belief, defendant Grand Central Publishing is a Delaware corporation and

subsidiary of Hachette Book Group USA, with a principal place of business at 237 Park Avenue,

New York, New York 10017-3140. The foregoing entities are collectively referred to

Defendants, unless otherwise individually specified.

Case 1:11-cv-00726-SS Document 1 Filed 08/19/11 Page 1 of 14


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JURISDICTION

3. Jurisdiction is proper in this Court pursuant to 15 U.S.C.A. 1121, and 28 U.S.C.A.

1331 and 1338, because this action, at least in part, is an action for trademark infringement,

dilution, and unfair competition, and arises under the trademark laws of the United States, Title 15,

United States Code. This Court has jurisdiction over any Texas state law claims under principles of

pendent and ancillary jurisdiction.

4. Upon information and belief, Defendants offer and sell books (both electronic and

hard copy) as well as other related products and services.

5. Upon information and belief, Defendants actively market and sell books

(electronic and hard copy) to customers worldwide, nationwide, and statewide, including to

persons and entities that reside in this judicial district and division. Barnes & Nobles website,

located at http://www.barnesandnobleinc.com/our_company/our_company.html , states that

between its stores and its online operations, it sells approximately 300 million books per year.

Hachette Book Groups website at http://www.hachettebookgroup.com/about_index.aspx states

that it is a leading US trade publisher headquartered in New York, and owned by Hachette

Livre, the second largest publisher in the world.

6. This Court may exercise personal jurisdiction over Defendants by virtue of

Defendants marketing and sales of commercial goods and/or services within this judicial

district.

7. This Court may exercise personal jurisdiction over Defendants by virtue of

Defendants commission of the activities complained of herein within this judicial district.



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VENUE

8. Venue is proper in this district pursuant to 28 U.S.C.A. 1391(b) and (c) because

one or more Defendants reside and/or maintain offices and/or retail outlets in this district, and/or

because certain Defendants may be found in this district, and/or because the Defendants Products

are or will be offered in this district, and/or because one or more of the acts complained of took

place in this district.

GENERAL AVERMENTS

9. TxDOT has registered the mark DONT MESS WITH TEXAS (the Mark) on

the principal register of the United States Patent and Trademark Office (USPTO) in connection

with various goods and services. See printouts of TxDOT trademark registrations, attached

hereto as composite Exhibit A. The applications for the earliest of such registrations were filed

on October 16, 2000, and the registrations issued in September and October 2002. See U.S. Reg.

Nos. 2627196, 2616831, and 2619887, included as part of composite Exhibit A.

10. The foregoing registrations of the Mark are valid, subsisting, in full force and

effect, and certain of the registrations have become incontestable pursuant to 15 U.S.C. 1065.

11. The registrations for the Mark constituteprima facie evidence of their validity and

conclusive evidence of TxDOTs exclusive right to use the Mark in connection with the goods

and services identified therein and other commercial goods and services provided by TxDOT.

12. The registrations for the Mark also provide sufficient notice to Defendants of

TxDOTs ownership and exclusive rights in and to the Mark.

13. The Mark has been in continuous use for many years in connection with various

goods and services, including but not limited to anti-litter campaigns, clothing, beverage



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containers, magnets, jewelry, printed materials (such as postcards, note pads, posters, folders,

decorative pencils, etc.). SeeExhibit A.

14. TxDOT has spent millions of dollars advertising the Mark and related goods and

services, throughout the State of Texas and this judicial district, as well as nationwide. TxDOT

has received numerous awards and favorable publicity in connection with the Mark. See list of

awards and honors, attached as Exhibit B.

15. As a result of TxDOTs activities, and the widespread publicity and favorable

acclaim for the Mark, the Mark is now famous as that term is used in 15 U.S.C. 1125 (c)(1). In

particular, the Mark has been marketed, advertised and used nationwide by TxDOT and

authorized third parties in a variety of forms of media (television, print, radio, Internet, etc.) for

over twenty (20) years. TxDOT has offered and sold its various products, either directly or

through authorized third parties, on a nationwide basis for over twenty (20) years. The Mark has

been widely recognized by third parties, and the goods and services offered under the Mark are

associated with TxDOT. As an example, surveys have indicated that the Mark is recognized by

over 95% of the population in the State of Texas.

16. As a result of extensive use and promotion, the Mark has acquired a favorable

reputation to consumers as an identifier and symbol of TxDOT and its products, services, and

goodwill. Accordingly, TxDOT is the owner of broad common-law and federal trademark rights

in the Mark.

17. On or about August 8, 2011, TxDOT discovered that Defendants intend to publish

on August 23, 2011 a romance novel by the title of Dont Mess with Texas. See composite

Exhibit C. On August 9, 2011, TxDOT sent a demand letter to Defendants regarding



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infringement and dilution, and requested that the title of the foregoing book be changed to

something else that did not incorporate the Mark. SeeExhibit D.

18. Defendants responded on August 10, 2011, denying that any alteration was

necessary. SeeExhibit E.

19. On or about August 17, 2011, TxDOT received a copy of the Defendants book.

The book contains numerous graphic references to sexual acts, states of sexual arousal, etc. In

addition, Defendants have purposefully sought to copy and use the Mark, as admitted in the

context of the book at issue. See excerpts from the book, attached as composite Exhibit F.

20. Defendants have not obtained authorization, permission, or a license from TxDOT

to use the Mark in connection with the book entitled Dont Mess with Texas.

21. Defendants intend to sell their book in some of the same established, likely to

continue trade channels as some of TxDOTs products that are marketed and sold under the

Mark (e.g., TxDOT has licensed rights to a book entitled Dont Mess with Texas, which is

currently sold in Barnes & Noble stores; TxDOT also has registered the Mark for use in

connection with printed materials such as notepads, or decorative pencils, while Barnes & Noble

also sells pencils and notepads through its retail and online stores). See printout from Barnes &

Noble website, indicating that it also sells, for example, pencils and notepads at its stores,

attached as Exhibit G. If Defendants are allowed to proceed with publication of the book

entitled Dont Mess with Texas, irreparable harm will result to TxDOT. See also declaration

attached as Exhibit H.



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Count I Trademark Infringement

22. TxDOT hereby repeats the allegations of paragraphs 1-21 above as if fully set

forth herein.

23. This cause of action arises under 32 of the Trademark Act of 1946 as amended

(15 U.S.C. 1114) for infringement of a federally registered trademark, as well as pursuant to

provisions of state law.

24. Defendants, without authorization from TxDOT, have used, will use, and/or will

continue to use a book title Dont Mess with Texas that is confusingly similar to the Mark.

25. The foregoing acts of Defendants are intended to cause, have caused, and are

likely to continue to cause confusion, mistake, and deception among consumers, the public, and

the trade as to whether Defendants book originates from, or is affiliated with, sponsored by, or

endorsed by TxDOT.

26. Upon information and belief, Defendants have acted with knowledge of TxDOTs

ownership of the Mark and with deliberate intention or willful blindness to unfairly benefit from

the enormous amount of goodwill symbolized by the Mark.

27. Upon information and belief, Defendants have made, will make, and/or will

continue to make substantial profits and gains to which they are not in law or equity entitled as a

result of the unauthorized use of the Mark.

28. Upon information and belief, Defendants intend to continue their infringing acts,

unless restrained by this Court.

29. Defendants acts have damaged and will continue to damage TxDOT, and

TxDOT has no adequate remedy at law.



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Count II Dilution (Blurring)


forth herein.

31. The Mark is strong and distinctive, has been in use for many years and has

achieved enormous and widespread public recognition.

32. The Mark is famous within the meaning of Section 43(c) of the Lanham Act (15

U.S.C. 1125(c)).

33. Defendants use of the book title Dont Mess with Texas, without authorization

from TxDOT, is diluting the distinctive quality of the Mark and is decreasing the capacity of the

Mark to identify and distinguish TxDOTs products and services. In particular, Defendants

actual or proposed use of the Mark is likely to cause dilution by blurring by creating a likelihood

of association with TxDOTs famous Mark arising from its similarity to TxDOTs Mark, and is

likely to impair the distinctiveness of TxDOTs famous Mark.

34. Defendants actual or proposed use of the Mark is likely to cause dilution by

blurring, in light of, inter alia, the following factors: (a) the degree of similarity between the

Defendants actual or proposed use of Dont Mess with Texas and the Mark, (b) the degree of

inherent or acquired distinctiveness of the Mark, (c) the extent to which TxDOT is engaging in

substantially exclusive use of the Mark, (d) the degree of recognition of the Mark, (e) the

Defendants intention to create an association with the Mark, and (f) actual association between

Defendants actual or proposed use of Dont Mess with Texas and the Mark.

35. Defendants have intentionally and willfully diluted the distinctive quality of the

famous TxDOT Mark in violation of Section 43(c) of the Lanham Act (15 U.S.C. 1125(c)).



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Count III Dilution (Tarnishment)


forth herein.

40. The Mark is strong and distinctive, has been in use for many years and has


41. The Mark is famous within the meaning of Section 43(c) of the Lanham Act (15

U.S.C. 1125(c)).



Mark to identify and distinguish TxDOTs products and services. In particular, Defendants

actual or proposed use of the Mark is likely to cause dilution by tarnishment by creating an

association arising from the similarity between Defendants actual or proposed use of the Mark

and TxDOTs Mark thereby harming the reputation of TxDOTs Mark.

43. Defendants actual or proposed use of the Mark is likely to cause dilution by

tarnishment, in light of, inter alia, the following factors: (a) the degree of similarity between the

Defendants actual or proposed use of Dont Mess with Texas and the Mark, (b) the degree of



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inherent or acquired distinctiveness of the Mark, (c) the extent to which TxDOT is engaging in

substantially exclusive use of the Mark, (d) the degree of recognition of the Mark, (e) the

Defendants intention to create an association with the Mark, and (f) actual association between

Defendants actual or proposed use of Dont Mess with Texas and the Mark.

44. Defendants have intentionally and willfully diluted the distinctive quality of the

famous TxDOT Mark in violation of Section 43(c) of the Lanham Act (15 U.S.C. 1125(c)).








Count IV Dilution (Texas State Law)


forth herein.

49. The Mark is strong and distinctive marks, has been in use for many years and has


50. Through prominent, long, and continuous use in commerce, including commerce

within the State of Texas, the Mark has become and continues to be famous and distinctive.





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Mark to identify and distinguish TxDOT products and services and has caused a likelihood of

harm to TxDOTs business reputation.

52. Based on the foregoing acts, Defendants have diluted the distinctive quality of the

famous Mark in violation of Section 16.29 of the Texas Business and Commerce Code.

53. The foregoing acts of Defendants also constitute injury to TxDOTs business

reputation in violation of Section 16.29 of the Texas Business and Commerce Code.








Count V Unfair Competition


forth herein.

58. This cause of action arises under the common law of unfair competition of the

State of Texas, as well as pursuant to the Lanham Act (15 U.S.C. 1125).

59. By reason of the foregoing acts, Defendants have traded upon and appropriated

the reputation and valuable good will of TxDOT and have acted to create the likelihood of

confusion and mistake on the part of the purchasing public as to the source of Defendants goods

and/or services.



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60. Defendants acts are likely to lead the public mistakenly to the belief that

Defendants goods and/or services are in some way related to, sponsored by, or associated with,

TxDOT, and/or create the impression that Defendants and TxDOTs goods and/or services are

distributed under the same corporate aegis and authority.

61. Defendants activities constitute unfair competition and a misappropriation and

infringement of TxDOTs registered and common law trademark rights, and have caused and

will continue to cause irreparable injury, harm and damages to TxDOT unless enjoined by this

Court.

Count VI Request for Temporary Restraining Order, andTemporary and Permanent Injunctive Relief


forth herein.

63. This cause of action arises under the Lanham Act (15 U.S.C. 1116(a) and

1125(c)(1)).

64. There is a present danger of irreparable harm if a temporary restraining order and

injunctive relief is not granted, since Defendants intend to publish the book entitled Dont Mess

with Texas on or about August 23, 2011. TxDOT requires judicial relief prior to the publication

of the Defendants book since the harm to the Mark will occur upon release of the book.

65. Accordingly, TxDOT requests that the Court enter a temporary restraining order

and an order preliminarily and permanently enjoining the Defendants from using Dont Mess

with Texas, or anything confusingly similar thereto, in connection with any book titles, unless

prior express written authorization is obtained from TxDOT.



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Jury Demand and Request for Injunctive Relief

66. TxDOT demands a trial by jury on all issues, in the event that this Court does not

enter the temporary and permanent injunctive relief requested herein.

PRAYER

WHEREFORE, the Texas Department of Transportation respectfully requests that this

Court enter judgment against Defendants as follows:

A. Finding that:

(i) Defendants have violated Section 32 of the Lanham Act (15 U.S.C.

1114); Section 43(a) of the Lanham Act (15 U.S.C. 1125(a)); and Section 43(c) of the

Lanham Act (15 U.S.C. 1125(c));

(ii) Defendants have injured TxDOTs business reputation and diluted the

Mark in violation of 16.29 of the Texas Business and Commerce Code;

(iii) Defendants have engaged in trademark infringement and unfair

competition under the common law of Texas; and

(iv) Defendants have been and/or will be unjustly enriched in violation of

Texas common law.

B. Granting a temporary restraining order and an injunction, pursuant to Rule 65 of

the Federal Rules of Civil Procedure, 15 U.S.C. 1116, 17 U.S.C. 502, and 16.29 Texas

Business and Commerce Code, preliminarily and permanently restraining and enjoining

Defendants, their officers, agents, employees, and attorneys, and all those persons or entities in

active concert or participation with them from:

1. manufacturing, importing, advertising, marketing, promoting, supplying,

distributing, offering for sale, or selling any book or other product which bears the Mark,



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or any other mark or design element substantially similar or confusing thereto, and

engaging in any other activity constituting an infringement of any of TxDOTs rights in

or to the Mark;

2. engaging in any other activity constituting unfair competition with

TxDOT, or acts and practices that deceive consumers, the public, and/or trade; and,

3. engaging in any other activity that will cause the distinctiveness of the

Mark to be diluted.

C. Requiring Defendants to re-title the book at issue and recall from any distributors

and retailers and to deliver to TxDOT for destruction or other disposition any inventory of the

book at issue, including all advertisements, promotional and marketing materials therefore;

D. Requiring Defendants to file with this Court and serve on TxDOT within thirty

days after entry of the injunction a report in writing under oath setting forth in detail the manner

and form in which Defendants have complied with the injunction;

E. Directing such other relief as the Court may deem appropriate to prevent

consumers, the public, and/or the trade from deriving any erroneous impression that any product

at issue in this action that has been manufactured, imported, advertised, marketed, promoted,

supplied, distributed, offered for sale, or sold by Defendants, has been authorized by TxDOT, or

is related in any way with TxDOT and/or its products;

F. Ordering Defendants to account to and pay to TxDOT all profits realized by their

wrongful acts and also awarding TxDOT its actual damages, and also directing that such profits

or actual damages be trebled, in accordance with Section 35 of the Lanham Act (15 U.S.C.

1117);



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G. Awarding TxDOT actual and punitive damages to which it is entitled under

applicable federal and state laws;

H. Awarding TxDOT its costs, attorneys fees, and expenses to the full extent

provided by Section 35 and 43 of the Lanham Act (15 U.S.C. 1117 and 1125);

I. Awarding TxDOT pre-judgment interest on any monetary award made part of the

judgment against Defendants; and,

J. Awarding TxDOT such additional and further relief as the Court deems just and

proper.

Respectfully submitted,

/Dwayne K. Goetzel/

__________________________________________Dwayne K. Goetzel

Texas Bar No. 08059500

Eric B. MeyertonsTexas Bar No. 14004400

Meyertons, Hood, Kivlin,Kowert & Goetzel, P.C.

1120 S. Capital of Texas Hwy.

Building 2, Suite 300Austin, Texas 78746

(512) 853-8800 (telephone)

(512) 853-8801 (facsimile)

ATTORNEYS FOR PLAINTIFF

TEXAS DEPARTMENT OF

TRANSPORTATION



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Case 1:11-cv-00726-SS Document 1-1 Filed 08/19/11 Page 1 of 64


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2JS 44 (Rev. 12/07) CIVIL COVER SHEETThe JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as pry local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose of inhe civil docket sheet. (SEE INSTRUCTIONS ON THE REVERSE OF THE FORM.)

. (a) PLAINTIFFS DEFENDANTS

(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE

LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)

I. BASIS OF JURISDICTION (Place an X in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES(Place an X in One Box for P(For Diversity Cases Only) and One Box for Defendant

u 1 U.S. Government u 3 Federal Question PTF DEF PTF D

Plaintiff (U.S. Government Not a Party) Citizen of This State u 1 u 1 Incorporated orPrincipal Place u 4

of Business In This State

u 2 U.S. Government u 4 Diversity Citizen of Another State u 2 u 2 Incorporated andPrincipal Place u 5

Defendant(Indicate Citizenship of Parties in Item III)

of Business In Another State

Citizen or Subject of a u 3 u 3 Foreign Nation u 6

Foreign Country

V. NATURE OF SUIT (Place an X in One Box Only)CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTE

u 110 Insurance PERSONAL INJURY PERSONAL INJURY u 610 Agriculture u 422 Appeal 28 USC 158 u 400 State Reapportionm

u 120 Marine u 310 Airplane u 362 Personal Injury - u 620 Other Food & Drug u 423 Withdrawal u 410 Antitrust

u 130 Miller Act u 315 Airplane Product Med. Malpractice u 625 Drug Related Seizure 28 USC 157 u 430 Banks and Banking

u 140 Negotiable Instrument Liability u 365 Personal Injury - of Property 21 USC 881 u 450 Commerce

u 150 Recovery of Overpayment u 320 Assault, Libel & Product Liability u 630 Liquor Laws PROPERTY RIGHTS u 460 Deportation

& Enforcement of Judgment Slander u 368 Asbestos Personal u 640 R.R. & Truck u 820 Copyrights u 470 Racketeer Influence

u 151 Medicare Act u 330 Federal Employers Injury Product u 650 Airline Regs. u 830 Patent Corrupt Organizatio

u 152 Recovery of Defaulted Liability Liability u 660 Occupational u 840 Trademark u 480 Consumer Credit

Student Loans u 340 Marine PERSONAL PROPERTY Safety/Health u 490 Cable/Sat TV

(Excl. Veterans) u 345 Marine Product u 370 Other Fraud u 690 Other u 810 Selective Service

u 153 Recovery of Overpayment Liabil ity u 371 Truth in Lending LABOR SOCIAL SECURITY u 850 Securities/Commod

of Veterans Benefits u 350 Motor Vehicle u 380 Other Personal u 710 Fair Labor Standards u 861 HIA (1395ff) Exchange

u 160 Stockholders Suits u 355 Motor Vehicle Property Damage Act u 862 Black Lung (923) u 875 Customer Challenge

u 190 Other Contract Product Liability u 385 Property Damage u 720 Labor/Mgmt. Relations u 863 DIWC/DIWW (405(g)) 12 USC 3410

u 195 Contract Product Liability u 360 Other Personal Product Liability u 730 Labor/Mgmt.Reporting u 864 SSID Title XVI u 890 Other Statutory Acti

u 196 Franchise Injury & Disclosure Act u 865 RSI (405(g)) u 891 Agricultural Acts

REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS u 740 Railway Labor Act FEDERAL TAX SUITS u 892 Economic Stabilizat

u 210 Land Condemnation u 441 Voting u 510 Motions to Vacate u 790 Other Labor Litigation u 870 Taxes (U.S. Plaintiff u 893 Environmental Mat

u 220 Foreclosure u 442 Employment Sentence u 791 Empl. Ret. Inc. or Defendant) u 894 Energy Allocation A

u 230 Rent Lease & Ejectment u 443 Housing/ Habeas Corpus: Security Act u 871 IRSThird Party u 895 Freedom of Informa

u 240 Torts to Land Accommodations u 530 General 26 USC 7609 Act

u 245 Tort Product Liability u 444 Welfare u 535 Death Penalty IMMIGRATION u 900Appeal of Fee Determ

u 290 All Other Real Property u 445 Amer. w/Disabilities - u 540 Mandamus & Other u 462 Naturalization Application Under Equal Access

Employment u 550 Civil Rights u 463 Habeas Corpus - to Justice

u 446 Amer. w/Disabilities - u 555 Prison Condition Alien Detainee u 950 Constitutionality of

Other u 465 Other Immigration State Statutes

u 440 Other Civil Rights Actions

V. ORIGINTransferred fromanother district(specify)

Appeal to DJudge fromMagistrateJudgment

(Place an X in One Box Only)

u 1 OriginalProceeding

u 2 Removed fromState Court

u 3 Remanded fromAppellate Court

u 4 Reinstated orReopened

u 5 u 6 MultidistrictLitigation

u 7

XAS DEPARTMENT OF TRANSPORTATION

Travis

eyertons, Hood, Kivlin, Kowert & Goetzel, P.C.O. Box 398, Austin, Texas 78767-03982-853-8800

CHRISTIE CRAIG, BARNES & NOBLE, INC., HACHETTE BOOGROUP USA, AND GRAND CENTRAL PUBLISHING


compaint texas dept of transportation v christie

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