new york post trademark complaint.pdf

8/10/2019 New York Post trademark complaint.pdf

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JS

44C/SDNY

REV.

4/2014

CIVIL

COVER

SHEET

The JS-44 civilcover

sheet

and the information contained herein neither replace nor

supplement

the filingand service of

pleadings or other papers

as

required by law,

except as

provided by local rules of court. This form,

approved

by the

Judicial

Conference

of the United States in September 1974, is required for use ofthe Clerk ofCourt for the

purpose

of

initiating the civil docket

sheet.

1 4 CV

EFENDANTS

LAINTIFFS

NYP HOLDINGS, INC.

JUDGE

MARRERO

NEW YORK

POST

PUBLISHING

INC., STEVEN JUDE HOFFENBERG,

and

JANE

DOES

1-10

ATTORNEYS (FIRM NAME, ADDRESS, AND TELEPHONE NUMBER

Davis Wright Tremaine, LLP, 1633

Broadway,

27th Floor, New York, New

York,

10019

(212)489-8230

ATTORNEYS (IF KNOWN)

OCT 16Sif

CAUSE OF ACTION

(CITE

THEU.S.

CIVIL

STATUTE

UNDER

WHICH

YOU

ARE

FILING

AND

WRITE

ABRIEFSTATEMENT OF CAUSE)

(DO NOTCITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)

Lanham Act, 15 U.S.C. § 1051 et seq.; trademark infringement, dilution, cyberpiracy, unfair competition, false designation of origin

Has

this

action,

case,

or

proceeding,

or

one essentially the

same been previously

filed

in SDNY atany

time?

NaZjVesLJJudge Previously

Assigned

If yes,

was

this

case

Vol. [~J Invol. r~J Dismissed. No [~J

Yes

[~J If yes, give

date &Case

No.

No

[x] Yes •

S THIS AN INTERNATIONAL ARBITRATION CASE?

PLACE

AN lx] INONEBOXONLY)

TORTS

CONTRACT

PERSONAL

INJURY

( ] 310 AIRPLANE

j J 315 AIRPLANE PRODUCT

LIABILITY

i J

320

ASSAULT, LIBELS

SLANDER

[ I 330

FEDERAL

EMPLOYERS'

LIABILITY

[

[340

MARINE

[ ] 345 MARINE PRODUCT

LIABILITY

[ J 350

MOTOR

VEHICLE

[ J355 MOTOR VEHICLE

PRODUCT LIABILITY

[ I 360 OTHER

PERSONAL

INJURY

[ ]

36 2

PERSONAL INJURY -

ME D

MALPRACTICE

[ ] 110 INSURANCE

I ] 12 0 MARINE

[ J

13 0

MILLER ACT

1 ] 14 0 NEGOTIABLE

INSTRUMENT

I

]150

RECOVERY OF

OVERPAYMENT

8

ENFORCEMENT

OF

JUDGMENT

[ J 151 MEDICARE ACT

[ 152 RECOVERY OF

DEFAULTED

STUDENT

LOANS

(EXCL VETERANS)

[

)153

RECOVERY OF

OVERPAYMENT

OF

VETERAN'S

BENEFITS

1

1160

STOCKHOI

DERS

SUITS

[1190 OTHER

CONTRACT

I ) 195 CONTRACT

PRODUCT

LIABILITY

[ ] 196 FRANCHISE

ACTIONS

UNDER STATUTES

CIVIL

RIGHTS

NATURE

OF

SUIT

PERSONAL INJURY FORFEITURE/PENALTY

[ ] 367 HEALTHCARE/

PHARMACEUTICAL PERSONAL

( ,

625 DRUG RELATED

INJURY/PRODUCT

LIABILITY

[ ] 365 PERSONAL INJURY

PRODUCT LIABILITY

[ ] 368 ASBESTOS PERSONAL

INJURY PRODUCT

LIABILITY

PERSONAL PROPERTY

[ ] 370 OTHER FRAUD

[ ] 371

TRUTH

IN LENDING

SE IZURE OF PROPERTY

21 USC 88 1

[

[690

OTHER

REAL PROPERTY

[ 1210

[

)220

[

]230

[ ]240

[

]245

[ ]290

LAND

CONDEMNATION

FORECLOSURE

RENT LEASES,

EJECTMENT

TORTS TO LAND

TORT PRODUCT

LIABILITY

ALL

OTHER

REAL

PROPERTY

[ ] 380

OTHER PERSONAL

PROPERTY

DAMAGE

[ ] 385 PROPERTY DAMAGE

PRODUCT

LIABILITY

PRISONER PETITIONS

[ ] 463 ALIEN

DETAINEE

[ ] 510

MOTIONS

TO

VACATE

SENTENCE

28

US C 2255

i J 530 HABEAS CORPUS

[ ) 535 DEATH

PENALTY

[ ] 540 MANDAMUS & OTHER

PRISONER CIVIL RIGHTS

[

[550

CIVIL

RIGHTS

[ ) 555 PRISON

CONDITION

[ ] 560 CIVIL DETAINEE

LABOR

[ ] 710 FAIR LABOR

STANDARDS

AC T

[ ]

720 LABOR/MGMT

RELATIONS

[ ] 740 RAILWAY LABOR ACT

[ J 751 FAMILYMEDICAL

LEAVE ACT (FMLA)

[ ] 790 OTHER LABOR

LITIGATION

[ ] 791

EMPL

RET INC

SECURITY

ACT

IMMIGRATION

[ ) 462 NATURALIZATION

APPLICATION

[ 1465 OTHER IMMIGRATION

ACTIONS

[ ]440 OTHER CIVIL RIGHTS

(Non-Prisoner)

[ ] 441 VOTING

[ ] 442

EMPLOYMENT

[ ) 443 HOUSING/

ACCOMMODATIONS

[ ] 445

AMERICANS

WITH

DISABILITIES

-

EMPLOYMENT

[ ] 446

AMERICANS

WITH

DISABILITIES -OTHER

[ ) 448 EDUCATION

CONDITIONS OF CONFINEMENT

Checkifdemanded incomplaint:

CHECK IF

THIS

IS

ACLASS ACTION

UNDER FRCP 23

ACTIONS UNDER STATUTES

B A N K R U P T C Y

[

[422

APPEAL

28 US C 15 8

[ ] 42 3 WITHDRAWAL

28 U SC 1 57

PROPERTY

RIGHTS

[ ]

820

COPYRIGHTS

[ j830PATENT

[X]840 TRADEMARK

SOCIAL SECURITY

[ ]861 HIA(1395ff)

[ ] 862 BLACK LUNG (923)

[ ]863 DIWC/DIWW (405(g))

[ ] 864 SSID TITLE XVI

[ ] 865 RSI (405(g))

FEDERAL TA X SUITS

[ ] 870

TAXES (U S

Plaintiff or

Defendant)

[ [871 IRS-THIRD

PARTY

26

US C 7609

OTHERSTATUTES

[ ] 375 FALSE CLAIMS

[ ] 400 STATE

REAPPORTIONMEN

[ ] 410 ANTITRUST

[ ]

430

BANKS & BANKING

[ ]

450

COMMERCE

[ ] 460

DEPORTATION

[ ] 470

RACKETEER

INFLU

ENCED &

CORRUPT

ORGANIZATION ACT

(RICO)

[ ] 480

CONSUMER

CREDIT

[ ] 490 CABLE/SATELLITE T

[ ] 850

SECURITIES/

COMMODITIES/

EXCHANGE

]

89 0

OTHER

STATUTORY

ACTIONS

[891 AGRICULTURAL ACT

]

893

ENVIRONMENTAL

MATTERS

]

895

FREEDOM Oh

INFORMATION

ACT

1 89 6 ARBITRATION

j 89 9 ADMINISTRATIVE

PROCEDURE

ACT/REVIEW

APPEAL OF AGENCY

DEC

[ ] 950 CONSTITUTIONALIT

STATE

STATUTES

•

DEMAND

OTHER

(f^o°st£ t^-m this case is

related to

a civilcase now PENDING IN

S.D.N Y'

JUDGE DOCKET NUMBER

Check

Y S

only ifdemanded incomplaint

JURY DEMAND: • YES l*j\JO

NOTE:

Youmust also submit at the time of

filing

the Statement of Relatedness form(Form

IH



PLACE

ANx INONE BOXONLY

ORIGIN

W 1 Original Lj 2 Removed from LJ 3 Remanded LJ 4 Reinstated

or

LJ 5 Transferred from LJ6 Multidistrict [~J 7 Appeal to Distr

Proceeding

state Cour,

from Reopened

(Specify

District) Litigation

Judge

from

• AnriPiiatP Magistrate Jud

a.

all

parties

represented Court Judgment

| | b. At least one

party is pr o

se .

PLACEANxINONEBOXONLY

BASIS

OF JURISDICTION DIVERSITY INDICATE

• 1

U.S. PLAINTIFF

Q 2

U.S. DEFENDANT

[x] 3

FEDERAL

QUESTION

Q4

DIVERSITY

CITIZENSHIP

BELOW

(U.S. NOT A PARTY)

CITIZENSHIP OF PRINCIPAL PARTIES

(FOR

DIVERSITY

CASES

ONLY)

(Place an [X] in on e box for Plaintiff

and

on e box for Defendant)

PTF DEF PTF DEF PTF DE F

CITIZENOF THIS STATE

[>Q

1

[ ]1

CITIZENOR SUBJECT OF A

[ ] 3 [ ] 3

INCORPORATED and PRINCIPAL PLACE

[ ]5 [ ]5

FOREIGN COUNTRY OF

BUSINESS

IN ANOTHER STATE

CITIZEN OFANOTHER STATE [ ] 2 [x] 2 INCORPORATED or PRINCIPAL PLACE [ ] 4 [ *4 FOREIGN

NATION

[ ]6 [ ]6

OF

BUSINESS

IN

THIS STATE

PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)

NYP Holdings, Inc.

1211

Avenue

of

the

Amer icas

New York, New York, 10036-8790 (New York County)

DEFENDANT(S)

ADDRESS(ES)

AND COUNTY(IES)

NEW YORK POST PUBLISHING INC.,

c/o

Delaware Corporations

LLC, 800

Delaware

Ave., P .O. Box

8702, Wilmington, DE 19801 (New Castle County)

Steven Jude Hoffenberg, 305 East 40th Street Suite 8A, New York, NY 10016 (New YorkCounty)

DEFENDANT(S) ADDRESS

UNKNOWN

REPRESENTATION IS HEREBY MADETHAT, ATTHIS TIME, I HAVEBEEN UNABLE,WITHREASONABLE DILIGENCE, TO ASCERTAIN

RESlbENCE ADDRESSES

OF

THE

FOLLOWING

DEFENDANTS:

Checkone: THIS ACTION SHOULD BE ASSIGNED TO: • WHITE PLAINS

\x\

MANHATTAN

(DO NOT check either box if t his a PRISONER

PETITION/PRISONER

CIVIL RIGHTS

COMPLAINT.

<~\ A

\

TE

10/16/14

SIGN TURE OF

TTORNEY

OF RECORD

\L

,

\ \V\y

^ DMITTED

TO

PR CTICE

IN

THIS

DISTRICT

J [ X ]

YES

(DATE ADMITTED

MoApril Yr. 2011

)

RECEIPT* AttorneyBar Code 1873

Magistrate

Judge

is

to

be designated

by

the

Clerk JIA^.W^.GORiWTElN

Magistrate Judge js so Designated.

Ruby

J. Krajick, Clerk ofCourt by Deputy

Clerk,

DATED .

UNITED STATES DISTRICTCOURT (NEW YORKSOUTHERN)



UNITED STATES DISTRICT COURT

SOUTHERN

DISTRICT NEW YORK

NYP

Holdings, Inc.,

Plaintiff,

against

NEW

YORK POST PUBLISHING INC.,

STEVEN JUDE HOFFENBERG, and JANE

DOES

1-10,

Defendants .

DWT

24928133v5 3930033-000043

M

*

rt

O O

C O M P L A I N T

F O R I N JU N C T IV E

REL IEF AND DAMAGES

JUDGE M RBEBO

Plaintiff

NYP

Holdings,

Inc.

( NYP

Holdings ),

by^§Js4jiroQgi^pd8fsigned

attorneys

Davis Wright

Tremaine

LLP, as and for its

complaint against

Defendants New

York

Post

Publishing Inc. ( The Corporation ),

Steven Jude

Hoffenberg ( Hoffenberg ), and

Jane

Does 1

through 10, alleges as follows:

N A T U R E O F

T HE A C TIO N

1. This is an action for trademark infringement, trademark dilution, false designation

of origin,

unfair

competition,

and

cyberpiracy under the laws of the United States, trademark

dilution under the laws

of

the State

of

New York, and common-law trademark infringement and

unfair

competition, all arising from Defendants' publication of news content using

NYP

Holding's

famous,

federally-registered

NEW

YORK

POST trademarks, and their

registration

and use

of

a domain name containing the words NEW YORK POST at

www.newyorkpostpublishinginc.com. Defendant Hoffenberg,

the publisher for a

three-month

period oftheNew York Post in 1993

before serving sixteen years

of a 20-year

sentence

in

federal

prison for securities fraud, has intentionally and unlawfully appropriated theNEWYORK POST

trademarks and the internet domain www.newyorkpostpublishinginc.com to NYP Holding's



irreparable detriment, in violation of federal,

state,

and common

laws governing

trademarks and

unfair competition.

2. NYP Holdings publishes the New York Post, the oldest, continuously published

dailynewspaper in the

United

States, anda

recognized

NewYork City institution.

3. NYP Holdings owns numerous trademark registrations for NEW YORK POST

(collectively, the NEW

YORK

POST

Marks ).

As a result of approximately 80

years

of

extensive, continuous use in the United States by NYP Holdings and its predecessors operating

theNewYorkPosfsnews publishing business, thewidelyrecognized NEWYORKPOSTMarks

have generated valuable goodwill andhavebecomeworld famous and distinctive.

4. Defendants are perpetrating a brazen scheme to trade upon the reputation and

success of the

Post

name and

NEW

YORK POST Marks, by using the purported trade name

New York Post Publishing Inc. for their own commercial activities including a website at

www.newyorkpostpublishinginc.com that purports to offer

news

content to the

public.

Defendants have announced that they intend to publish a competing newspaper under the New

York Post PublishingInc. name this October and to license other newspapers to publish under

that name

a s we ll .

5. Defendants' use

of

the

NEW YORK

POST Marks and their attempt to free ride

on the New

York

Post s brand image and reputation has irreparably injured and will continue to

irreparably injure NYP Holdings unless Defendants are enjoined.

T H E

P A R T I E S

6. Plaintiff NYP Holdings, Inc. is a corporation organized and existing under the

laws

of

Delaware with its principal place

of

business at

1211

Avenue

of

the Americas, New

York,

New

York, 10036-8790.

DWT 24928133v5 3930033-000043



7. Defendant NewYorkPostPublishing

Inc.

is a corporation formed underthe laws

of the

State

of Delaware,

with

its

principal

place of

business

at

305

East 40th

Street Suite

8A,

New York, NY 10016.

8.

Defendant Steven

Jude

Hoffenberg

is an individual

who,

upon information

and

belief, following his release from federal prison

in

2013, currently

resides in New

Jersey.

He

is

the

CEO, publisher, and owner of Defendant New York Post

Publishing

Inc. and controls and

directs all of its business operations.

9. Upon

information

and

belief, Defendants

Jane Does 1-10 are

individuals

or

business entities affiliated with Defendant New York Post Publishing Inc. or Defendant

Hoffenberg,

the identities and residences ofwhich are currently

unknown.

J U R IS D IC T IO N A N D

VENUE

10. This action arises under and pursuant to the Lanham Act, 15 U.S.C. § 1051 et

seq., and under the common law of trademark

infringement

and unfair

competition.

11. This Court has jurisdiction

over this action

pursuant to 28 U.S.C.

§§

1331 and

1338(a)

and

(b), because

it

arises under the

trademark

and

unfair competition

laws

of

the United

States. The

court

has

supplemental

jurisdiction overPlaintiffs common law claims pursuant to

28 U.S.C.

§

1367(a)

because

these

claims

are so related

to Plaintiffs claims under federal law

that they

form a part of the

same case

or controversy and derive from a

common nucleus

of

operative fact.

12. The Court

has

personal jurisdiction over

Defendants pursuant

to

Fed.

R. Civ. P.,

Rule 4(k)(l)(A) because Defendants

do

business intheSouthern District ofNew York.

13. Venue in this action lies in the Southern District

of

New York pursuant to 28

U.S.C.

§

1391(b) because Defendant New York

Post

Publishing

Inc.'s

principal place

of

W 24928133v5 393 33 43



business is in this District, a substantial part of the events giving rise to the claim occurred in this

District, and the intellectual property that is the subject

of

this lawsuit is situated in this District.

F A C TU A L B A CK G R O UN D

T h e

New

York

st

14. The New York Post is the oldest, continuously published daily newspaper in the

United States, having first been published by Alexander Hamilton in 1801. Today, the

New

York

Post

is sold in many states in the United States, both at newsstands and by subscription.

15. The

New York Post

began publishing news on the web using the

NEW

YORK

POST Marks in 1996 and has done so continuously since then. The New York Post s website,

www.nypost.com ( NYPost.com ), is one

of

the largest newspaper websites in the United States

with approximately 98 million page views per month. NYPost.com is accessed by users in many

countries throughout the world.

16. The NEW YORK POST trademarks are recognized as representing one of the

most famous newspapers in the country. For consumers, the NEW YORK POST trademarks

ultimately bring to mind the

New

York

Post,

a newspaper and news website dealing with daily

issues in a distinctively original manner.

17. NYP Holdings, the publisher of the New York Post, is the sole and exclusive

owner

of

a number

of

United States registered trademarks, including but not limited to the

following (the NEW YORK POST Marks ):

T R A D E M A R K

APP /REG .

N O

A P P /REG .

DATE

GOODS / S ERV I CES

NEW

Y O R K P O ST

1,526,818

2/28/89

Daily newspaper

m im im

2,213,076

12/22/98

Daily newspaper covering a variety of

topics

DWT 24928133v5 3930033-000043



T R A D E M A R K

A P P / R E G

N O

A P P / R E G

D A T E

G O O D S / S E R V I C E S

N EW Y OR K P OS T

3,639,502 6/16/09

Computer services, namely, providing an

online newspaper featuring current local,

national

and

in te rnat iona l news

and

news

analysis on a wide variety

of

topics,

photographs, information about a wide

variety

of

topics related to business, sports,

gossip, entertainment, celebrities, celebrity

life style, travel, fashion and clothing,

health, coupons, games, and astrology,

accessible via the Internet; publication of a

daily electronic newsletter featuring a wide

variety

of

topics related to current local,

national

and

international news, business,

sports, gossip, entertainment, travel, fashion,

health

and

local weather, accessible via the

In ternet

N EW Y OR K P OS T

3,652,365

7/7/09

Electronic transmission

of

newspaper and

websi te

content

t o mobi le

devices

NEW

Y O RK P OS T 4,056,288

11/15/11

Downloadable

software

in

t he na tu r e

o f an

application for obtaining news, information,

commentary, and textual, audio, and visual

content of the type found in general interest

publications on mobile and stationary

consumer e lect ron ic dev ices

IMlMMMM.

3,098,182

5/30/06

Printed non-fiction books on a variety

of

topics

UlgltMdtM?

3,199,514

1/16/07

Tee

shirts, sweatshirts

N EW Y OR K P OS T 3,199,515 1/16/07

Tee shirts, fashion tops, sweatshirts, and

underwear

NEW

Y O RK

POST 3,357,150 12/18/07 Mugs made

from glass or ceramic

i imumm

3,319,743

10/23/07 Mugs made from glass or ceramic

DWT 24928133v5 3930033-000043



18. Copies of the Certificates

of

Registration from the United States Patent and

Trademark

Office

fo r th e NEW

YORK POST

Marks

a re annexed here to

as

Exhibit

A.

Al l o f

th e

registrations in Exhibit A are valid, subsisting, unrevoked, and uncancelled.

19. Both prior to and after these registrations, NYP Holdings and its predecessors

have continuously used the NEW YORK POST Marks, or predecessors to those marks, in

connection with the New

York

Post s print and online publishing activities and related

merchandise

s ince

1934.

20. Registrations number 1,526,818, 2,213,076, 3,098,182, 3,199,514, 3,199,515,

3,319,743, and 3,357,150 have become incontestable under 15 U.S.C. §1065. Copies

of

the

Section

15

Declarations fo r these

marks

filed

w ith th e United S tates

P ate nt a nd

Trademark

Off ice a re annexed he re to as

Exhibit

B.

21. These registrations constitute prima facie evidence of the validity of the NEW

YORK

POST trademarks and conclusive evidence ofNYP Holdings' exclusive right to use the

NEW

YORK

POST Marks in commerce in connection with the goods and services designated.

Registration

of

the NEW YORK POST Marks also constitutes constructive notice to Defendants

of

NYP Holdings' ownership and exclusive rights in the

NEW

YORK

POST Marks.

22. NYP Holdings also owns common law rights in the

NEW

YORK POST Marks

for use in connection with the provision

of

news content in print and digital mediums

of

all

kinds, among other things.

23. NYP Holdings has spent hundreds of millions

of

dollars producing the New York

Post,

including significant amounts on advertising and promotion

of

the newspaper, website, and

the related NEW

YORK

POST Marks throughout United States in a variety ofmedia, including

television, radio, and print advertisements, and the Internet.

DWT 24928133v5 3930033 0 0 0 043



24. Plaint iff sells various promotional items bearing the NEW YORK POST Marks

on NYPost.com, including t-shirts, tote bags, umbrellas, and coffee mugs.

25 . As a

result

o f

Plaintiff

s ex tensi ve and exclu si ve use

o f

the

NEW YORK

POST

Marks and wide-ranging marketing efforts, the

NEW YORK

POST Marks have come to be

widely recognized and relied upon by the trade and the public as identifying the

New York Post,

and as distinguishing it from other publications. The

NEW YORK

POST trademarks are

famous. There is no other publication like the New

York

Post.

Defendants ' I n f ring ing Websi t e

26. Defendants have used and/or are using NYP Holding's famous, federally-

registered NEW YORK POST Marks in interstate commerce in connection with its own

purported news services on a website (the Infringing Website ) located at

www.newyorkpostpublishinginc.com. which is accessible throughout the United States.

27. The domain name for the Infringing Website,

www.newyorkpostpublishinginc.com (the Infringing Domain Name ), was registered on

September 13, 2014—decades after the NEW YORK POST Marks were first registered and used

in

in te r s ta te commerce .

28. According to the WHOIS database maintained by DomainTools, LLC at

whois.domaintools.com, the owner

of

record for the above-captioned domain name, as

of

September 13, 2014, is DOMAIN PRIVACY SERVICE FBO REGISTRANT. A true and

correct copy of the WHOIS record is annexed hereto as Exhibit C.

29. Upon information and belief, the beneficial owner of the Infringing Website is

one or more

of

Defendants New York Post Publishing Inc., Hoffenberg, and/or one or more

of

the

Defendants

J an e Doe s

1-10.

DWT

24928133v5 3930033-000043



30. The Infringing Domain Name registered by Defendants incorporates the NEW

YORK POST

mark.

31. The Infringing Domain Name registered by Defendants is identical and/or

confusingly similar to the NEW YORK POST Marks.

32. Upon information and belief, Defendants commenced publishing news stories on

the Infringing Website using the NEW YORK POST Marks on or about September 15, 2014.

33. The Infringing Website's homepage features the mark NEW YORK POST at the

very top

of

the page, functioning as a masthead for the Infringing Website. The words New

York Post appear in large white block letters over a black background, followed by Publishing

Inc. in smaller, dark purple, script letters:

STEVEN J. HOFFENBERG, CEO PUBLISHER

Farewell

Jo

UnitedSt a t es Government Is

R u n n in g

The

Southern Trust

Corp

Through A Straw Person

This presentation clearly uses and emphasizes the mark

NEW YORK

POST. True and correct

copies

of

representative screenshots

of

the Infringing Website are annexed as Exhibit D.

D W T 24928133v5 3930033-000043



34. Besides using the mark NEW YORK POST prominently at the top of the page,

the Infringing Websi te 's homepage has a layout, font style, and overall look-and-feel that

resembles the trade dress and visual appearance ofNYPost.corn's homepage:

N WYOR POST

NEW YOR POST

THE ULTIMATE

COMMEMORATIVE MAGAZINE

DWT 24928133v5 3930033-000043

76-PAGE

O R D E R N O W

NEW YOR POST

THE

ULTIMATE

COMMEMORATIVE

True and correct copies of representative screenshots of NYPost.com's homepage are annexed

hereto as Exhibit E.

35. The Infringing Websi te' s home page features current news headlines that link to

news content elsewhere on the website; a photo

of

a

New York Post

cover from 1993 reading

Hoffenberg Saves the Post ; a banner reading The Future

of

the

New

York Post ; a link to a

History

of

the New

York

Post ; and a menu of sections including News, Entertainment,

Opinions, Metro, Fashion, Sports, and Liz Smith, a well-known, former gossip

columnist for the New York Post and now a syndicated columnist.

36. Like the homepage, the pages for each news story on the Infringing Website have

the mark NEW YORK POST emblazoned at the top

of

the page. Each

of

the story pages also

includes a photo of a New York Post cover from 1993 reading Hoffenberg Saves the Post and a

link to a History

of

the New York Post. Like the homepage, these pages have a layout, font



style, and overall look-and-feel that resemble the trade dress and visual appearance of pages on

NYPost.com. Compare Exhibits D and E.

37. Defendants also operate a related website called Post All Star News, at

http://starstruck. 1800gotnerd.com. That website also purports to offer news content, and (like

the Infringing Website) displays a photo

of

a

New York Post

cover from 1993 reading

Hoffenberg Saves the Post, and bears the identification at the bottom: Steven J. Hoffenberg,

CEO New York

Post Publishing Inc. licensed to

POSTALLSTARNEWS.COM.

38. NYP Holdings did not authorize any

of

Defendants' above-described uses of the

NEW

YORK

POST Marks on the Infringing Website, the Post All Star News website, or in

the Infringing Domain Name.

39 .

De fendan ts ' a bove -d es cr ib ed u se s

o f

the

NEW YORK

POST

Marks on

the

Infringing Website, the Post All Star News website, and in the Infringing Domain Name are

likely to lead the general public to believe that Defendants' website emanates from, or is

sponsored by or affiliated with the New York Post and/or NYP Holdings, when in truth and in

fact it is not.

Defendants Have No Righ ts to th e

N E W

Y O R K

P O S T

M a r k s

40. Defendants have no rights to, or legitimate interest in, the NEW

YORK POST

Marks, and they have no legitimate basis for incorporating the words New York Post into the

Disputed Domain name.

41. Defendant Hoffenberg is attempting to exploit his long-ago, three-month

connection with the New York Post to his commercial advantage, and to claim a current

relationship with the New York Post where there is none.

42. Hoffenberg

was the Post s

publisher from January to March 1993, and attempted

to buy the New York Post from its then-owner, Peter Kalikow (who had declared bankruptcy).

DWT

24928133v5 3930033-000043



Hoffenberg was unable to complete the purchase because the SEC filed a civil suit against him

and his company Towers Financial

Corporation,

which

resulted

inthe freezing of Towers' assets.

Instead, another investor, Abraham Hirschfeld, briefly took over management of the

Post,

which

was ultimately transferred in October

1993

to its current owner, NYP Holdings. Annexed as

Exhibit F are true and correct copies

of

news articles discussing Defendant Hoffenberg's short-

term involvement

with the Post

in 1993.

43. On February 2, 1993, during his brief involvementwith the Post and for unknown

reasons, Hoffenberg

formed

a Delaware corporation, New York Post Publishing Inc. (the

Corporation ). Copies of documents relating to the Corporation on

file

with the Delaware

Secretary

of

State are annexed hereto as Exhibit G.

44. Hoffenberg never had the right to use a business name that incorporated NEW

YORKPOST or to use that mark on goods or services in commercebecause he never acquired

the New

York

Post, or its trademark. In any event, any such right would have terminated when

Hoffenberg's three-month relationshipwith theNew

York

Post ended inMarch 1993.

45. According to public records, On March 1, 1995, the Delaware Secretary

of

State

voided the Corporation's Certificate of Incorporation under Delaware Corporation Law § 502,

apparently for failure to file its annual franchise tax report and pay the franchise tax due. See

Exhibit

G.

46. In 1997, Mr. Hoffenberg was sentenced to 20 years in prison for defrauding the

investors in Towers. Mr. Hoffenberg was also ordered to pay $476 million in restitution to the

investors. Mr. Hoffenberg was released from prison in or around 2013. Copies

of

news articles

discussing these events are annexed hereto as Exhibit H.

11

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47. After his release from prison, Defendant Hoffenberg filed a Certificate

of

Renewal with the Delaware Secretary of State on June 12, 2014 to bring the defunct Corporation

back into good standing in order to further his scheme

of

creating a news website and newspaper

that compete directly

with the

New

York Post.

48. Upon information and belief, the Corporation never offered or sold goods or

services in commerce under any trademark or service mark at any time between the

Corporation's formation in 1993 and the launch of the Infringing Website in September 2014.

The Corporation did not exist between March 1, 1995, when the Delaware Secretary

of

State

voided its Certificate

of

Incorporation, and June 12, 2014, when Hoffenberg filed the Certificate

o f

Renewal .

Defendants

Have Deliberately

Misled

th e Public About

Hoffenberg's Relationship

with

the

New York

Post and Re fu sed t o Cease

and

Desist

49. On June 16, 2014, a lawyer named Anthony J. Piacentini contacted in-house

counsel for NYP Holdings by telephone, purporting to represent Hoffenberg. Mr. Piacentini

informed in-house counsel that Hoffenberg was planning to use the name New York Post

Publishing Inc. and that Mr. Piacentini was authorized to accept service in the event that NYP

Holdings sued Hoffenberg for using this name.

50. On June 24, 2014, in-house counsel for NYP Holdings wrote a letter to Mr.

Piacentini, copying Hoffenberg, warning them that Hoffenberg had no rights in the

Post s

name

or trademarks and that any imaginable use in commerce

[o f

the New York Post Publishing Inc.

name] would infringe NYP Holdings' intellectual property rights, and NYP Holdings will not

hesitate to take legal action against your client to defend its rights. A copy

of

the letter is

annexed he re to

as

Exhibit

I.

12

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51. In-house counsel for NYP Holdings received a response from Mr. Piacentini on

June 24, 2014, which stated: Pleased be herein advised, specifically in connection with the

contents

of

your letter dated June 20, 2014, that I am not representing Mr. Steven Hoffenberg or

his corporation, New York Post Publishing Incorporated. Therefore, any and all service of

process, or any correspondence or legal documents you may generate on behalf of your client,

must be served on Mr. Steven [sic]. A true and correct copy of the letter is annexed hereto as

Exhibit J.

52. In-house counsel for NYP Holdings then re-sent a copy

of

the letter to Hoffenberg

and spoke with Hoffenberg on the telephone on the afternoon

of

June 24, 2014. Counsel

reiterated NYP Holdings' demand that Hoffenberg cease and desist from any use of the New

York Post Publishing Inc. name.

53. Upon information and belief, on August 25, 2014, one or more of the Defendants

issued a press release titled Business Man Steven J. Hoffenberg to Once Again Publish the New

York Post Publishing Inc. (the August 25 Press Release ). A copy of the press release is

annexed as Exhibit

K.

54. The August 25 Press Release states repeatedly that Defendant Hoffenberg will

once again

publish the New York Post Publishing Inc. (emphasis added) This statement

conveys a misleading impression about Hoffenberg's relationship with the

New York Post.

55. Upon information and belief, before August 25, 2014, neither Hoffenberg nor the

Corporation had previously published any publication called New York Post Publishing Inc.

56. Because Hoffenberg was briefly the publisher

of

the

New

York

Post,

the statement

that he is once again publishing the New York Post Publishing Inc. creates the misleading

impression that Hoffenberg is once again the publisher

of

the

New

York

Post.

Upon

13

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information and belief, Defendants intended to convey this false and misleading impression and

did so in order to sow confusion about the relationship between Hoffenberg and the

New

York

Post.

57. The August 25 Press release then exacerbates this misleading impression by

stating: Although he has spent a number of years away from the newspaper, his return is a

welcomed one by many vital persons involved with NewsCorp. This statement conveys the

impression that Hoffenberg has returned to the newspaper, meaning the New

York

Post, with

the blessing ofNews Corporation, all of which is patently false. Upon information and belief,

Defendants intended to convey this false and misleading impression and did so in order to sow

confusion about the relationship between Hoffenberg and the New York Post.

58. On September 16, 2014, NYP Holdings discovered that, despite its cease and

desist letter to Hoffenberg and Piacentini in June 2014, Defendants had launched the Infringing

Websi te .

59. On September 17, 2014, NYP Holdings sent a letter to the Infringing Website's

hosting service and domain registrar demanding that it withdraw its services from the Infringing

Website. A copy of that letter with exhibits is annexed hereto as Exhibit L. The hosting service

and registrar temporarily disabled the Infringing Website and Infringing Domain Name, but

Defendants were able to get the website reactivated, and the website remains active and will

continue to be active unless Defendants are enjoined.

60. Despite notice and knowledge

of

their ongoing infringement, Defendants willfully

and defiantly persist in infringing the NEW YORK POST Marks and using the Infringing

Domain Name. Defendants continue to falsely assert their claim

of

rights to the NEW YORK

14

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3930033-000043



POST Marks and have threatened

NYP

Holdings and its counsel with legal action should it try to

enforce its valuable trademark rights.

61. On or about October 6, 2014, Defendants announced that they intend to publish a

competing newspaper under the NEW

YORK

POST PUBLISHING INC. name this

October. Defendants also announced that

they

plan to partner[] with other free newspapers,

licensing them the New York Post Publishing Inc title. A true and correct copy

of

the webpage

is

a nn ex ed a s Exh ib it M .

62. Defendants' continuing conduct constitutes an ongoing threat to Plaintiff.

Plaintiff has sustained and will continue to sustain irreparable injury, including injury to its

reputation and goodwill, as a direct result

of

Defendants' conduct. This injury is not wholly

compensable by an award ofmonetary damages. Unless Defendants are restrained and enjoined

from engaging in their ongoing infringing, dilutive, and deceptive conduct, Plaintiff will

continue to suffer irreparable injury.

Defendants '

Bad

Faith Intent to Profi t

from

the

In fr ing ing Domain

Name

63. Defendants have registered and are

using

the Infringing

Domain Name with

bad-

faith intent to profit by trading of f the reputation and goodwill associated with the New

York

Post .

64. At the time they registered the Infringing Domain Name and began operating the

Infringing Website, Defendants had actual knowledge of the NEW YORK POST Marks based

on (1) NYP Holdings' extensive and widespread use of the famous NEW YORK POST Marks in

commerce; (2) Hoffenberg's personal involvement with the New

York

Post in 1993; and (3) New

York Post s cease

a nd d es is t l et te r

o f June 2014.

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393 33 43



65. At the time they registered the Disputed Domain name and began operating the

Infringing Website, Defendants had no legitimate grounds to claim rights to the

NEW YORK

POST Marks:

Defendant Hoffenberg never owned the

New

York

Post.

Hoffenberg registered a corporation using the name New York Post

Publishing Inc. in 1993, but that company never had ownership of or

rights to use the NEW

YORK

POST Marks.

The corporation was completely dormant for 19 years starting in 1995. It

never sold goods

or

services and never published a newspaper, as falsely

suggested in the August 25 Press Release.

66. Defendants knew these facts in September 2014 when the registered the

Infringing Domain Name and commenced publishing on the Infringing Website.

67. Despite this knowledge, Defendants have falsely claimed ownership

of

the NEW

YORK POST Marks to generate publicity for their competing business enterprise by picking a

high-profile legal fight with the New York

Post

without legal basis to do so.

68. In an attempt to sow confusion in the minds

of

the public, the Infringing Website

states: All of th e assets inclusive of the trademarks and the website, New York Post, which

receives 78 million hits per day, are rightfully owned by Steven Hoffenberg and

TowersInvestors.com, not Rupert Murdoch. A true and correct copy of the webpage is annexed

as Exhibit N. There is no basis for

the

false statement that anyone

other than NYP

Holdings

owns the

New

YorkPost NYPost.com, and the NEW YORK POST Marks.

69. Defendants use the Infringing Domain

Name

and Infringing Website and the

NEW YORK POST Marks to profit from advertising revenue by deliberately playing

of f

DW T 24928133v5 3930033-000043



consumer and advertiser confusion about the source, sponsorship, affiliation, or endorsement of

the Infringing Website.

70. The Infringing Website currently features commercial advertising for the Angus

Club Steakhouse and Pazzo Pizza (both located in Manhattan); the Pocono Mountains Film

Festival; and Cutex Nail Polish Remover. Upon information and belief, these advertisers are

either confused as the Infringing Website's affiliation with the New

York

Post or are willing to

capitalize on consumer confusion regarding the Infringing Website's affiliation with the New

York

Post.

71. The Infringing Website also features ads for business that that, upon information

and belief, are affiliated with Hoffenberg, including Christ Couture and towersinvestors.com.

Exhibit

D.

72. Upon information and belief, Defendants intend to garner publicity for these and

other Hoffenberg enterprises by falsely claiming ownership of the

NEW

YORK POST Marks

and picking a high-profile legal fight with the New York Post without legal basis to do so.

73. Since June 2014, Hoffenberg has displayed his guilty knowledge by repeatedly

challenging NYP Holdings to file suit against him and inviting counsel to serve process on him.

74. Defendants registered the Infringing Domain Name using the privacy service

Domain Privacy Service, a service typically used with the intent to hide

one's

identity.

Irreparable Injury to N Y P a nd th e New York Post

75. As a news organization, the New

York

Post depends on its reputation for quality

journalism. Defendant's use

of

the

NEW

YORK POST Marks on the Infringing Website, in the

Infringing Domain Name, and elsewhere continues to irreparably harm the New

York

Post s

reputation with the reading public and deprive it

of

customer goodwill.

17

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393 33 43



76. By using the

NEW

YORK POST Marks on the Infringing Website, Defendants

wrongfully associate the New York Post with the Infringing Website's poor-quality news content.

Many

of

the news stories on the Infringing Website are short and poor ly wr itten stories that

appear to be hasty rewrites that are blatantly derivative

of

content from other news outlets like

CNN and the Associated Press. While the Infringing Website also purports to contain syndicated

content from the Tribune Content Agency, the Infringing Website's stories possess none of the

original reporting, local color, and style that readers have come to associate with the New York

Post. See Exhibit D. The Infringing Website also contains a questionable offer, from a man who

owes millions in restitution, to pay up to one million dollars to readers who send in stories

about great scandals.

See

Exhibit O. Even

if

the Infringing Website were publishing high-

quality content, the injury to the

New York Post

brand from consumer confusion would be

significant and irreparable. Linking the

New York Post

to such inferior and poorly conceived

content magnifies the irreparable harm.

77. Defendants' plan to publish a competing newspaper using the NEW YORK POST

Marks this October will greatly exacerbate the irreparable harm already being suffered by

NYP Holdings, further depriving it

of

control over the New York Post brand and reputation.

78. By using the NEW

YORK

POST Mark on the Infringing Website, Defendants

wrongfully associate the New

York

Post with Defendant Hoffenberg's criminal history, lengthy

time in jail, and ongoing efforts to pay back defrauded investors. For example, the August 25

Press Release, after falsely stating that he is once again publishing the New York Post

Publishing Inc., goes on: Hoffenberg has committed himself and is driven to pay restitution of

over

700

million

to

th e

200,000

victims

in

the

TowersInvestors.com fraud.

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24928133v5 3930033-000043



A S A ND F O R A F I R S T C L A I M F O R R E LIE F

(Trademark Infringement Under

Section 32 a) of

the Lanham Act)

79. Plaintiff repeats and realleges paragraphs 1 through and including 78 as

if

the

same were fully set forth herein.

80. NYP Holdings owns valid and protectable federally registered trademarks for

NEW YORK POST, Trademark Registrations No. 1,526,818, 2,213,076, 3,199,514, 3,199,515,

3,357,150, 3,319,743, 3,652,365, 3,639,502, and 4,056,288.

81. The NEW

YORK

POST Marks have acquired secondary meaning.

82. Defendants are using in commerce in connection with services a mark that is

confusingly similar in sound, appearance, and meaning to NYP Holdings' federally-registered

NEW YORK POST Marks.

83. The services offered by Defendants are competitive with and/or directly related to

goods and services offered by NYP Holdings under its NEW YORK POST Marks, including a

news website. Defendants have also announced plans to publish newspapers in New York,

which would compete with the daily newspaper published inNew York by NYP Holdings.

84. Defendants' actions as alleged herein are likely to cause confusion or mistake or

to deceive as to the origin, sponsorship, or approval

of

Defendants' services, and thus constitute

infringement of NYP Holdings' federally-registered trademark in violation of Section 32(a) of

the Lanham Act, 15 U.S.C. § 1114(l)(a).

85. Defendants have acted and/or continue to act intentionally, willfully, and with full

knowledge

of

NYP Holdings' rights. This case is exceptional within the meaning

of

15 U.S.C. §

1117 .

19

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24928133v5 3930033-000043



86. As a direct and proximate result

of

Defendants' intentional acts as alleged herein,

Plaintiff has been injured and/or will continue to be injured, in an amount presently unknown and

to

be

determined at the time o f

trial.

87. Plaintiffis entitled to a preliminary and a permanent injunction because the injury

that Plaintiffhas suffered, are suffering, and/or will continue to suffer unless Defendants' acts of

infringement are enjoined as requested herein is irreparable; Plaintiff has no adequate remedy at

law; considering the balance

of

hardships between Plaintiff and Defendants, a remedy in equity

is warranted; and the public interest would not be disserved by a permanent injunction.

88. Defendants are liable to Plaintiff for all profits and damages resulting from their

infringing activities as well as additional penalties and costs for this willful and deliberate

infringement pursuant to 15 U.S.C. § 1117.

A S A ND F OR A S E C O N D C L A I M F O R

R E L I E F

(Trademark Infringement,

False

Designation

of Origin, and

Unfair Competition Under

Section 43 a)

of

the

Lanham

Act)


if

the


90. The NEW YORK POST Marks have acquired secondary meaning.

91. Defendants' actions as alleged herein are likely to confuse consumers as to the

origin, sponsorship, or approval of Defendants' services and commercial activities, and the

affiliation, connection,

or

association between Defendants' and

Plaintiffs

services, and thus

constitute trademark infringement, false designation of origin, and unfair competition with

respect to the NEW YORK POST Marks in violation of Section 43(a) of the Lanham Act, 15

U.S.C. § 1125(a).

2 0

DWT 24928133v5 3930033 0 0 0 043



92. As a direct and proximate result ofDefendants' intentional acts as alleged herein,

Plaintiffhas been injured and/or will continue to be injured, in an amount presently unknown and

to

be

determined at the

t ime

o f

trial.

93. Defendants acted and/or continue to act intentionally, willfully, and

with

full

knowledge

of

NYP Holdings' rights. This case is exceptional within the meaning

of

15 U.S.C. §

1117.

94. Pla in ti ff is entitled to a preliminary and a permanent injunction because the injury

that Plaintiff has suffered, is suffering, and/or will continue to suffer unless Defendants' acts

of


law; considering

the

balance

of

hardships

between Plaintiff

and Defendants, a remedy in equi ty


95. Defendants' are also liable to Plaintiff for all profits and damages resulting from

their violation of 15 U.S.C. § 1125(a), as well as additional penalt ies and costs for such willful

and deliberate violations pursuant to 15 U.S.C. § 1117.

A S A N D F O R

A T H I R D

C L A I M F O R

R E L I E F

(Trademark Dilution Under

Section

43(c)

of

the Lanham Act)


if

the


97. Defendants' actions as alleged herein constitute trademark dilution

under

the

Lanham Act, 15 U.S.C. § 1125(c) .

98.

NYP Holdings'

NEW YORK

POST

Marks

have become

distinctive

and

famous

as the result

of

many years

of

nationwide use and promotion

of

the marks by Plaintiff.

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24928133v5 393 33 43



99. Defendants' first use

of

the New York Post Publishing Inc. name, mark, and

domain name in interstate commerce occurred

many

years after

the

NEW

YORK POST

Marks

had become famous.

100. De fendan ts ' u naut ho ri ze d u se o f the NEW YORK

POST

Marks in

interstate

commerce in the sale, advertising, and promotion

of

goods and/or services dilutes by blurring the

distinctiveness, strength and value ofPlaintiff s famous marks.

101. The use

of

the NEW YORK POST Marks in interstate commerce by Defendants

(one

of

whom is a convicted fraudster who pleaded guilty to multiple felonies) for a low-quality

purported news site featuring rewritten news stories and syndicated content, dilutes by

tarnishment the distinctiveness, strength and value

ofPlaintiff

s famous marks.

102. Defendants' unauthor ized use

of

the

New

York Post Publishing Inc. name,

mark, and domain name in commerce, as alleged herein, with knowledge of Plaintiff s famous

mark

constitutes

a

will fu l in te nt to

cause

dilution o f the

f amou s ma rk s

in

violation

o f

Section

43(c) of the

Lanham

Act, 15 U.S.C. § 1125(c).


of



to

be

determined at

t h e t ime

o f

trial.

104. Plaintiff is entitled to a preliminary and a permanent injunction restraining further

acts

of

dilution, because the injury that Plaintiffhas suffered, is suffering, and/or will continue to

suffer unless Defendants' acts of infringement are enjoined as requested herein, is irreparable;

Plaintiff has no adequate remedy at law; considering the balance

of

hardships between Plaintiff

and Defendants, a remedy in equity is warranted; and the public interest would not be disserved

by a permanent injunction.

22

DWT 24928133v5 3930033 0 0 0 043



105. Defendant is also liable to Plaintiff for all profits and damages resulting from their

activities, as well as additional penalties and costs for the willful and deliberate violation

of

15 U.S.C. § 1125(c), as well as additional penalties and costs for such willful and deliberate

violations pursuant to 15 U.S.C. § 1117.

AS A N D F O R A F O U R T H C L A I M F O R R E LI EF

(Trademark

Cyberpiracy Under Section 43(d) of

the

Lanham Act)


if

the


107. Defendants' actions as alleged herein constitute cyberpiracy under the Lanham

Act, 15 U.S.C. § 1125(d).

108. Defendants registered and are using a domain name that is confusingly similar to

NYP Holdings'

NEW

YORK POST Marks and that incorporates the NEW YORK POST Marks

in their entirety.

109. The NEW YORK POST Marks have acquired secondary meaning and are

distinctive, and were distinctive and/or famous at the time Defendants registered the Infringing

Domain Name.

110. Defendants' registration and use

of

the Infringing Domain

Name

are likely to

cause consumers to believe erroneously that Defendants' website is sponsored, approved, or

endorsed by, or otherwise affiliated with, NYP Holdings and/or the New York Post.

111. Defendants possess the bad faith intent to profit from the public's association

of

the

NEW YORK

POST

Marks wi th the

New

York Post.

Defendants ' bad

f ai th i nte nt

is

evidenced by their lack

of

rights in the marks at issue; their lack

of

use

of

the marks in any bona

fide offering of goods and services over the last twenty years; their admit ted intent to use the

23

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24928133v5 3930033-000043



marks to compete with the New York Post; and their registration of a domain name that they

know is confusingly similar to

the NEW YORK POST

Marks.

112. As a direct and proximate result ofDefendants' intentional acts as alleged herein,


to

be determined

at

the

t ime o f trial.

113. Defendants have acted and/or continue to act intentionally, willfully, and with full

knowledge ofNYP Holdings' rights. This case is exceptional within the meaning of 15 U.S.C. §

1117.

114. Plaintiff is entitled to a preliminary and a permanent injunction restraining further

acts

of

cyberpiracy and transferring the Infringing Domain Name to Plaintiff, because the injury


of



of



115. Defendants' are also liable to Plainti ff for all profits and damages resulting f rom

their violation

of

15 U.S.C. § 1125(d) , as well as addit ional penalt ies and costs for such wil lful

and deliberate violations pursuant to 15 U.S.C. § 1117.

A S

A N D

F O R

A F O U R T H

C L A I M

F O R R E L I E F

(Common Law Trademark Infringement and

Unfair

Competition)


if

the

same were

fully set forth herein.

117. Defendants' actions as alleged herein constitute

common

law trademark

infringement and common law unfair competition.

DWT 24928133v5 3930033-000043



118. Defendants' actions as alleged herein are likely to cause confusion and deception

in the consuming public and have caused and are likely to cause NYP Holdings actual injury or

damage.

119. The

NEW

YORK POST Marks have acquired secondary meaning.

120.

Defendants have used and/or c on ti nu e t o

use in

commerce

marks that

are

confusingly similar in sound, appearance, and meaning to the NEW YORK POST Marks,

notwithstanding the fact that each

of

them knew that NYP Holdings is the rightful owner

of

those

marks, in order to trade upon and profit from NYP Holdings' reputation and goodwill associated

wi th t he NEW YORK POST Marks.

121. Defendants have made false statements on their website and in press releases

regarding the ownership

of

the NEW YORK POST Marks.


of



to

be

determined at the

t ime

o f

trial.

123. Defendants have acted and/or are acting with predatory intent and in bad faith.

124. Plaintiff is entitled to a preliminary and a permanent injunction because the injury


of



of


is warranted; and

the

public interest would not be disserved

by

a permanent injunction.

125. Plaintiff is also entitled to an award

of

actual damages in an amount presently

unknown and to disgorgement ofDefendants' infringing profits.

DW T 24928133v5 3930033-000043



126. Plaintiff seeks punitive damages for Defendants' gross, wanton, and willful fraud

and morally culpable conduct.

AS A ND F O R A F I F T H C L A I M F O R

R E L I E F

(Trademark Dilution Under N.Y. Gen.

Bus.

Law

360-1)


if

the


128. Defendants' actions as alleged herein constitute trademark dilution in violation of

N.Y. Gen. Bus.

Law

§ 360-1.

129.

The

NEW YORK

POST

Marks

are w ell known

and

distinctive

as ind ica to rs

of

source for NYP Holdings and the

New

York

Post

newspaper and website.

130. Defendan ts ' u s e o f

the

NEW YORK

POST Mar ks

on

their

websi te and for their

proposed print newspaper is likely to and actually dilutes and blurs the distinctiveness ofNYP

Holdings' NEW YORK POST Marks.

131. Defendants' false s tatements on their websi te are l ikely to and actually di lute and

tarnish the

NEW

YORK POST Marks.


of



to be determined at t ime o f

trial.

133. Plaintiff is entitled to a preliminary and a permanent injunction because the injury


of


law; considering the balance of hardships between Plaintiff and Defendants, a remedy in equity


26

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134. Plaintiff is also entitled to an award

of

actual damages in an amount presently

unknown and to disgorgement

of

Defendants' infringing profits.

135. Plaintiff seeks punitive damages for Defendants' gross, wanton, and willful fraud

and morally culpable conduct.

P R A Y E R F O R R E LI EF

Wherefore, Plaintiffrespectfully requests that this Court enter judgment as follows:

1. Preliminarily and permanently enjoining Defendants and all those acting at then-

direction

or pursuant to their control from:

a. Using any trademark, including but not limited to

NEW YORK

POST

PUBLISHING INC., that is likely to be confusingly similar to, or dilutive

of, any

of

the NEW YORK POST Marks, in a way that is likely to have an

impact on interstate commerce;

b. Inducing, encouraging, causing, facilitating, materially contr ibuting to, or

receiving a direct financial benefit from, the use, reproduction, posting,

and display

of

any trademark, including but not limited to

NEW

YORK

POST PUBLISHING

INC., that is l ikely to be confusingly similar to, or

dilutive of, any of

Plaintiff

s trademarks or service marks, in a

way

that is

likely to have an impact on interstate commerce, by others in the United

States;

c. Registering, applying to register, or maintaining a registration for the

NEWYORKPOSTPUBLISHINGINC

domain name, or any domain

name relating to, containing, or suggesting Plaintiffs trademarks or

service marks;

27

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24928133v5 3930033-000043



d. Using the NEWYORKPOSTPUBLISHINGINC domain name, or any

domain name relating to, containing, or suggesting Plaintiffs trademarks

or service marks;

e. Representing, by any means whatsoever, that any services offered,

advertised, promoted, marketed, or sold by Defendants are offered by or

affiliated with The New YorkPost;

f. Doing any other act or thing calculated or likely to cause confusion or

mistake in the minds

of

the public or prospective consumers

of TheNew

York Post s goods or services as to the source

of

Defendants' goods or

services;

or

g. Otherwise unfairly competing with NYP Holdings.

2. Directing Defendants to relinquish and convey to

NYP

Holdings the registration

for the domain name newyorkpublishinginc.com and to be limited to use

of

a domain name or

names that do not use the NEW

YORK

POST Marks, any colorable imitation

of

such

trademarks, or anything or mark confusingly similar thereto or likely to cause confusion,

dilution, or injury to

NYP

Holdings' business reputation;

3. Directing Defendants to remove any social media account, username, nickname,

or handle containing the words New York Post , or to rename such account, username,

nickname, or handle to remove the words New York Post ;

4. Directing Defendants to take affirmative steps to dispel

the

false impressions that

have been heretofore created by the use of marks and domain names confusingly similar to the

NEW YORK POST Marks;

5. Awarding damages to Plaintiff in an amount to be ascertained at time

of

trial;

28

DWT24928133v5

3930033-000043



6. Ordering Defendants to account and pay to Plaintiff all profits and advantages

gained from Defendants' wrongful acts, and, in accordance with such accounting, award NYP

Holdings three times such profits or three times NYP Holdings' damages (whichever is greater),

pursuant to 15 U.S.C. § 1117;

7. Awarding statutory damages to Plaintiff pursuant to 15 U.S.C. § 1117(d);

8. Awarding punitive damages to Plaintiff for Defendants' acts of common law

trademark infringement and common law unfair competition;

9. Awarding to Plaintiff its reasonable attorneys' fees and disbursements in this

action, pursuant to 15 U.S.C. § 1117; and

10. Granting Plaintiff such other and further relief as to this Court shall seem just and

proper .

Dated:

New York, New York

October

16,2014

Respectfully submitted,

DAV IS WR IGHT

TREMAINE

LLP

W

24928133v5 393 33 43

By:

v n

Laura R. Handman

Samuel M. Bayard

Cami ll e Ca iman

Attorneysfor NYP Holdings, Inc.

1633

Broadway 27th floor

New York, New York 10019

(212)489-8230

29



I n t CI.: 16

Pr ior U.S.

a

38

Reg. No. 1,526,818

United States Patent

and

Trademark Office Regutered

Feb. 28

i<»9

TRADEMARK

PRINCIPAL REGISTER

NEW

YORK

POST

NEW YORK

POST

CO., INC., THE (NEW YORK

CORPORATION)

21 0 SOUTH S T R E E T

NEW YORK,

NY

10002 ,

ASSIGNEE

OF

AND

BY

CHANGE

OF NAME

FROM NEWS

AMERICA

PUBLI SH ING INCORPORATED (DELA

WARE CORPORATION) NEW

YORK,

NY

10002

FOR:

DAILY

NEWSPAPER,

IN CLASS 16

U.S. CL. 38).

FIRST USE 3-20-1934; IN COMMERCE

3-20-1934.

NO

CLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE NEWYORK , APART FROM

T HE M A RK

A S SHOWN.

SER. NO. 699,439, FILED 12-7-1987.

MARY COYLE, EXAMINING ATTORNEY



Int.

Cls.:

16 and

42

Prior

U.S. Cls.:

2, 5,22,

23, 29,

37, 38,

50,100

and

101 Reg. No. 2,213,076

United States Patent and Trademark Office

Regutered

Dec

22 1998

TRADEMARK

SERVICE MARK

PRINCIPAL REGISTER

mmmmm

NYP HOLDINGS, INC DELAWARE CORPO

RATION)

1211 AVENUEOF

THE

AMERICAS

NEW

YORK,

NY 10036

FOR:

DAILY NEWSPAPER COVERING A

VARIETY OF

TOPICS,

IN CLASS 16

U.S.

CLS.

2, 5,22,23, 29,37,38

AND

50).

FIRST USE

4-4-1988;

IN COMMERCE

4—4—1988

FOR:

ONLINE SERVICE OFFERING NEWS

AND INFORMATION ON A VARIETY OF

TOPICS, DISTRIBUTED

THROUGH

GLOBAL

COMPUTER NETWORKS, IN CLASS 42

U.S.

CLS.

100 AND 101).

FIRST USE

8-30-1997;

IN COMMERCE

8-30-1997.

OWNER OFUS. REG. NO. 1,526,818.

NOCLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE NEW YORK , APART

FROM

THE MARK AS

SHOWN.

SER. NO. 75-437,129, FILED 2-19-1998.

H.M. FISHER, EXAMINING

ATTORNEY



Int. CL: 41

Prior U.S. Qs.: 100,101 and 107

Reg. No. 3,639,502

United States

Patent and Trademark

Office Registered June

16,2009

S E R V I C E

M A R K

PRINCIPAL REGISTER

NEW Y OR K PO ST

NYP

HOLDINGS, INC. (DELAWARE CORPORA

TION)

1211 AVENUE O F T HE AMERICAS

NEW

YORK, NY 10036

FOR:

COMPUTER SERVICES,

NAMELY, PRO

VIDING AN ONLINE NEWSPAPER

FEATURING

CURRENT LOCAL, NATIONAL AND

INTERNA

TIONAL

NEWS

A ND

NEWS ANALYS IS ON A

WIDE

VARIETY

OF

TOPICS. PHOTOGRAPHS, INFORMA

TION

ABOUT A

WIDE

VARIETY

OF

TOPICS

RE

LATED TO BUSIN ESS, SPORTS, GOSSIP,

ENTERTAINMENT, CELEBRITIES,

CELEBRITY

LIFE STYLE,

TRAVEL, FASHIONAND CLOTHING,

HEALTH,

COUPONS, GAMES, AND ASTROLOGY,

ACCESSIBLE

VIA

THE

INTERNET; PUBLICATION

OF

A

DA ILY ELECTRONI C NEWSLETTER F EA

TURING

A WIDE VARIETY OF

TOPICS

RELATED

TO

CURRENT LOCAL,

NATIONAL

AND

INTER

NATIONAL NEWS, BUSINESS, SPORTS, GOSSIP,

ENTERTAINMENT,

TRAVEL,

FASHION,

HEALTH

AND LOCAL WEATHER, ACCESSIBLE

VIA

THE

INTERNET

, IN CLASS 41 (U.S. CLS. 100, 101

AND

107).

FIRST USE 12-20-1996;

IN

COMMERCE 12-20-1996.

T HE M AR K

CONSISTS OF STANDARD

CHAR

ACTERS

WITHOUT

CLAIM

TO ANY PARTICULAR

FONT, STYLE, SIZE, OR COLOR.

OWNER OF U.S. REG. NOS. 1,526,818, 3,357,150

AND

OTHERS.

NO CLAIM

IS

MADE TO THE EXCLUSIVE

RIGHT

TO USE

NEW

YORK ,

APART FROM THE

MARK

AS SHOWN.

SER. NO.

77-637,983,

FILED

12-22-2008.

ESTHER BELENKER,

EXAMINING

ATTORNEY



Int . CI.: 38

Prior U.S. Cls.: 100,101, and 104 „ „ „ _

Reg. No. 3,652,365

United S ta te s Patent

and

Trademark

Office Registered July i,

2009

SERVICE M A R K

PRINCIPAL REGISTER

NEW YORK POST

NYP HOLDINGS, INC. (DELAWARE CORPORA

TION)

1211

AVENUE

OF THE

AMERICAS

NEW

YORK,

NY

10036

FOR: ELECTRONIC TRANSMISSION OF NEWS

PAPER

AND

WEBSITE CONTENT

TO MOBILE

DEVICES, IN CLASS 38(U.S. CLS. 100,101AND 104).

FIRST

USE

12-6-2007;

IN COMMERCE

12-6-2007.

THE MARK CONSISTS OF STANDARD

CHAR

ACTERS WITHOUT CLAIM

TO

ANY PARTICULAR


OWNER OF U.S.

REG.

NOS. 1,526,818, 3,098,182,

AND

OTHERS.

N O CLAIM IS MADE TO THE EXCLUSIVE

RIGHT TO USE

NEW YORK , APART

FROM THE

MARK

AS

SHOWN.

SN 77-485,317, FILED 5-28-2008.

DAWN FELDMAN, EXAMINING ATTORNEY



^witetJ

states

of

3W.,,.

Mi^ WniUh tatc* patent an

t rabemarfe

Office

f

NEW

YORK

POST

Reg. No. 4,056,288 nypholdings, inc. (Delaware corporation)

1211 AVENUE

OF

THEAMERICAS

Registered

Nov.

15,2011

newyork,ny 10036

Int .

CI.: 9

T R A D E M A R K

P R I N C I P A L R E G I S T E R

Director

of

the United States Paten t and Trademark Office

FOR: DOWNLOADABLE SOFTWARE I N T HE NATURE OF AN APPLICATION F OR OB

TAINING NEWS, INFORMATION, COMMENTARY, AND TEXTUAL, AUDIO,

AND

VISUAL

CONTENT OF

TH E

TYPE FOUND IN GENERAL INTEREST PUBLICATIONS

ON

MOBILE

AND

STATIONARY

CONSUMER

ELECTRONIC DEVICES, IN CLASS 9 (U.S. CLS. 21, 23,

26,36 AND 38).

FIRST USE 10-14-2010; IN COMMERCE 10-14-2010.

THE MARK CONS IS TS OF STANDARD CHARACTERS

WITHOUT

C LA IM T O A N Y PA R

TICULAR

FONT, STYLE, SIZE,

OR

COLOR.

OWNER OF U.S.

REG. NOS. 1,526,818,3,652,365 AND OTHERS.

NO

CLAIM IS MADE TO

I'HE

EXCLUSIVE RIGHT TO

USE NEW

YORK , APART FROM

THE MAR K

AS SHOWN.

SER. NO. 85-296,005, FILED 4-15-2011.

LEIGH CAROLINECASE, EXAMINING ATTORNEY



Int.

CI.: 16

Prior U.S. Qs. : 2, 5, 22, 23, 29, 37, 38 and 50

Reg.

No.

3,098,182

United

S ta te s Patent

and

Trademark

Office

Registered May

30,2006

T R A D E M A R K

P R I N C I P A L REGISTER

mmmuim


TION)


NEW YORK,

NY 10036

FOR: PRINTED NON -F I CT ION BOOKS

ON A

VARIETY OF TOPICS,

IN

CLASS

16 (U.S . CLS. 2, 5,

22, 23, 29, 37, 38

AND

50).

FIRST

USE

8-0-2001;

IN COMMERCE

8-0-2001.

OWNER OF

U.S.

REG.

NOS.

1,526,818

AND

2,213,076.

NO CLAIM

IS

MADE TO THE EXCLUSIVE

RIGHT

TO USE

NEW YORK , APART FROM THE

MARK

AS SHOWN.

SER. NO.

78-655,850, FILED 6-22-2005.

KAELIE KUNG,

EXAMINING ATTORNEY



Int.

CI.: 25

PriorU.S. as.: 22 and 39 „ ^T ,<iM1„_

Reg. No. 3,199,515

United

States

Patent

and

Trademark Of fi ce

Registered

Jan. 16,2007

TRADEMARK

PR INCIPAL REGISTER

N EW Y ORK

POST

NYP HOLDINGS, INC. (DELAWARE

CORPORA

TION)

1211

AVENUE OF

THE

AMERICAS

NEW YORK,

NY 10036

FOR : TEE

SHIRTS,

FASHION

TOPS,

SWEAT

SHIRTS,

AND UNDERWEAR,

IN CLASS 25 (U.S.

CLS. 22AND 39).

FIRST USE

10-0-2001;

IN

COMMERCE

10-0-2001.

THE MARK

CONSISTS OF STANDARD

CHAR

ACTERSWITHOUTCLAIM TO ANY PARTICULAR


OWNER

OF

U.S.

REG.

NOS. 1,526,818 AND

2,213,076.

NO CLAIM IS MADE TO

THE

EXCLUSIVE

RIGHT

TO USE

NEW

YORK ,

APART FROM THE

MARK

AS SHOWN.

SN 78-502,612, FILED 10-20-2004.

SOPHIA S.

KIM,

EXAMINING

ATTORNEY



Int .

a :

21

Prior U.S. as.: 2,13, 23, 29, 30, 33,40, and 50

Reg. No. 3,357,150

United

States

Patent

and

Trademark

Office

Registered

Dec

is,

2007

T R A D E M A R K

P R I N C I P A L REGISTER

NEW YORK POST

NYP HOLDINGS, INC. (DELAWARE

CORPORA

TION)


NEW YORK, NY

10036

FOR: MUGS MADE FROM

GLASS OR CERAMIC,

IN CLASS 21 (U.S. CLS.

2,13,23,29,30,33,40

AND 50).

FIRST

USE 10-1-2001;

IN COMMERCE

10-1-2001.

T HE M AR K CONSISTS OF

S T AN D AR D C H AR

ACTERS

W ITH OU T CLAIM TO A N Y PA RTICU LA R

FONT,

STYLE, SIZE, OR COLOR.

OWNER

OF

U.S.

REG.

NOS.

1,526,818

AND

2,213,076.

NO

CLAIM

IS

MADE

TO THE EXCLUSIVE

RIGHT TO USE NEW YORK , APART FROM THE

MARK AS

SHOWN.

SN 78-554,819, FILED 1-27-2005.

SOPHIA S.

KIM,

EXAMINING

ATTORNEY



Int . CL: 21

Prior

U.S. Os.: 2,13,

23, 29, 30,

33,40,

and 50

Reg. No.

3,319,743

United

S ta te s Patent

and

Trademark

Office

Registered

Oct

23,2007

T R A D E M A R K

PRINCIPAL

REGISTER

Tnmm


TION)

1211 AVENUE OF

THE

AMERICAS

NEW YORK, NY 10036

FOR: MUGS

MADE

FROM GLASS OR CERAMIC,

IN CLASS 21 (U.S. CLS. 2,13,23,29,30,33,40 AND 50).

FIRST USE

10-1-2001;

IN COMMERCE

10-1-2001.

OWNER

OF

U.S.

REG.

NOS.

1,526,818

AND

2,213,076.

N O C LA IM

IS

MADE

TO THE EXCLUSIVE

RIGHT TO USE

NEW YORK , APART

FROM

THE

MARK AS

SHOWN.

SN 78-554,817,

FILED

1-27-2005.

SOPHIA S. KIM,

EXAMINING ATTORNEY

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