avid vs digisec and vice versa- digisec answer to complaint

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Larry W. McFarland (Bar No. 129668) E-Mail: [email protected] Christopher T. Varas (Bar No. 257080) E-Mail: [email protected] KILPATRICK TOWNSEND & STOCKTON LLP 9720 Wilshire Boulevard Penthouse Suite Beverly Hills, California 90212 Telephone: (310) 248-3830 Facsimile: (310) 860-0363 Attorneys for Defendants DIGISEC MEDIA AS and SIGURD VEDAL

UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA

WESTERN DIVISION AVID LIFE MEDIA, INC., an Ontario corporation, and AVID DATING LIFE, INC., an Ontario corporation dba ASHLEY MADISON, Plaintiffs, v. DIGISEC MEDIA AS dba www.victoriamilan.com, a Norway company; SIGURD VEDAL, an individual; and DOES 1 THROUGH 10, Defendants.

Case No.: 12-08602 JAK (FMOx) ANSWER TO COMPLAINT DEMAND FOR JURY TRIAL

Case 2:12-cv-08602-JAK-MAN Document 11 Filed 03/14/13 Page 1 of 18 Page ID #:76

-2- ANSWER CASE NO. 12-08602 JAK (FMOx)

1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Defendants DIGISEC MEDIA AS and SIGURD VEDAL (collectively

Defendants) jointly and severally respond to the complaint of AVID LIFE MEDIA,

INC. and AVID DATING LIFE, INC. (collectively Plaintiffs) (Plaintiffs and

Defendants are collectively referred to as Parties) as follows:

DEFENDANTS INTRODUCTORY ALLEGATIONS

Defendants make the following introductory allegations, which are incorporated

into each and every paragraph of this Answer.

A. Defendants are informed and believe that Plaintiffs have filed this lawsuit

in bad faith and with full knowledge that their claims are entirely without merit.

B. For example, and without limitation, Defendants are informed and

believe that the depiction of a woman with her finger near her sealed lips alleged in,

and attached to, Plaintiffs Complaint (the Alleged Trade Dress Image) is nothing

but a superficial modification of a third party stock image in which Plaintiffs own

no rights, and which is currently available for anyone to license from its real owner

through (and possibly other sites), as shown below. A true and

correct copy of the relevant page is attached hereto as Exhibit A. Plaintiffs Alleged Trade Dress Image Available For License From

C. The real infringer in this dispute is Avid. For example and without

limitation, as alleged in Digisec Ltd.s related lawsuit against Plaintiffs and other

related defendants (Case No. CV13-01849), Defendants are informed and believe that



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Avid has willfully infringed Digisecs rights by registering and using the domain

names (which replaces the m in milan with the letters r

and n), and with a bad faith intent to

profit from Digisecs distinctive registered VICTORIA MILAN mark, including by

creating fake Victoria Milan websites designed to trick consumers into signing up

with Avid in the mistaken belief that they are doing business with Digisec.

D. The website located at is a virtual replica of the

Ashley Madison website, and features the deceptive headline Victoriarnilan.com

presentsASHLEY MADISON. Not surprisingly, every link on this website

funnels users directly to Avids website, which is not

presented by or in any other way associated with Digisec. A true and correct copy

of this website is attached hereto as Exhibit B, and reproduced below with red ovals

added to indicate the multiple infringing uses of .



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

E. Defendants are informed and believe that Avid is using

for similar deceptive purposes. That website purports to

be a blog owned and operated by Digisec, and even features text that has been copied

word for word from Digisecs copyrighted VICTORIA MILAN website, as well as

numerous unauthorized uses of the registered VICTORIA MILAN mark and an

unauthorized confusingly similar variation of Digisecs service mark RELIVE THE

PASSION FIND YOUR AFFAIR. Notwithstanding this extensive unauthorized use

of Digisecs intellectual property, the website is filled with advertisements for, and

links to, the website. Defendants are informed and believe that

Avid or someone acting under Avids direction or control created this website in order

to confuse and deceive consumers searching for Digisecs services into clicking

through to Avids own website that competes directly with Digisec. A true and

correct copy of the home page of this website (including an edited version of the

pornographic image that appears at the top of home page) is attached hereto as

Exhibit C and incorporated herein by reference.

F. In accordance with the foregoing and all other allegations and averments

contained herein, Defendants answer Plaintiffs complaint as set forth below.

DEFENDANTS RESPONSES TO THE ALLEGATIONS IN PLAINTIFFS COMPLAINT

Nature of Action

1. Answering Paragraph 1 of the Complaint, Defendants are without

knowledge or information sufficient to form a belief as to the truth of the allegations

contained in Paragraph 1, and on that basis deny each and every such allegation.

2. Answering Paragraph 2 of the Complaint, Defendants admit that the

Complaint purports to request damages and injunctive relief. Except as expressly

admitted herein, Defendants deny each and every allegation contained in Paragraph 2.



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

The Parties







5. Answering Paragraph 5 of the Complaint, Defendants admit that Digisec

Media AS is a Norwegian company with its principal place of business located at

Martin Linges vei 25, N-1364 Fornebu, Norway. Defendants aver that Digisec Media

AS previously owned and operated the VICTORIA MILAN website located at

. Except as expressly admitted or averred herein, Defendants

deny each and every allegation contained in Paragraph 5.

6. Answering Paragraph 6 of the Complaint, Defendants aver that Sigurd

Vedal was previously the Chief Executive Officer of Digisec Media AS. Except as

expressly averred herein, Defendants deny each and every allegation contained in

Paragraph 6.

7. Answering Paragraph 7 of the Complaint, Defendants aver that Paragraph

7 of the Complaint does not contain any allegations to which a response is required.

To the extent a response to Paragraph 7 is required, Defendants deny each and every

such allegation contained in Paragraph 7.

8. Answering Paragraph 8 of the Complaint, Defendants aver that the

purported allegations in Paragraph 8 are conclusions of law or fact to which no

responsive pleading is required. To the extent a response to Paragraph 8 is required,

Defendants deny each and every such allegation contained in Paragraph 8.



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Jurisdiction And Venue













12. Answering Paragraph 12 of the Complaint, Defendants deny each and

every allegation contained in Paragraph 12.


VICTORIA MILAN website that is available to United States users (hereinafter the

United States VICTORIA MILAN Website) is not a purely passive website. Except

as expressly admitted herein, Defendants deny each and every allegation contained in

Paragraph 13.


United States VICTORIA MILAN Website is accessible by Internet users located in

this Judicial District. Except as expressly admitted herein, Defendants deny each and



United States VICTORIA MILAN Website is accessible by Internet users located in

this Judicial District, and that it is possible for users to submit payments through the



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

United States VICTORIA MILAN Website. Except as expressly admitted herein,

Defendants deny each and every allegation contained in Paragraph 15.

Factual Allegations




17. Answering Paragraph 17 of the Complaint, Defendants admit that Exhibit

C to the Complaint purports to be a print-out of the home page to which the domain

name resolves. Except as expressly admitted herein,







purported allegations in the first sentence of Paragraph 19 are conclusions of law or

fact to which no responsive pleading is required. To the extent a response to the first

sentence of Paragraph 19 is required, Defendants deny each and every such allegation

contained in the first sentence of Paragraph 19. Defendants are without knowledge or

information sufficient to form a belief as to the truth of the allegations contained in the

second and third sentences of Paragraph 19, and on that basis deny each and every

such allegation.








1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28




parties are competitors. Except as expressly admitted herein, Defendants deny each

and every allegation contained in Paragraph 22.

23. Answering Paragraph 23 of the Complaint, Defendants aver that

consumers located in the United States were previously able to access the global

VICTORIA MILAN website at . Defendants further aver that

currently, consumers located in the United States who navigate to

are redirected to the United States VICTORIA MILAN Website

at . Except as expressly averred herein, Defendants deny each and


24. Answering Paragraph 24 of the Complaint, Defendants admit that both

parties provide discreet online dating services that cater to married or attached adults.

Except as expressly admitted herein, Defendants deny each and every allegation

contained in Paragraph 24.


VICTORIA MILAN service was launched in 2010. Except as expressly admitted

herein, Defendants deny each and every allegation contained in Paragraph 25.

26. Answering Paragraph 26 of the Complaint, Defendants admit that

Digisec received correspondence from Avid regarding the European market in or

around January of 2011. Except as expressly admitted herein, Defendants deny each

and every allegation contained in Paragraph 26.

27. Answering Paragraph 27 of the Complaint, Defendants admit that they

received correspondence from Avids Swedish counsel [f]urther to Avids January,

2011 letter regarding the European market in or about March of 2011. Except as



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

expressly admitted herein, Defendants deny each and every allegation contained in

Paragraph 27.



29. Answering Paragraph 29 of the Complaint, Defendants admit that

Digisec Media AS filed United States Trademark Application Serial No. 79109849.

Except as expressly admitted herein, Defendants deny each and every allegation

contained in Paragraph 29.



FIRST CAUSE OF ACTION

(For Federal Trade Dress Infringement/False Designation of Origin and Unfair

Competition under 15 U.S.C. 1125(a))

(Against All Defendants)

31. Answering Paragraph 31 of the Complaint, Defendants refer to and

incorporate Paragraphs A through F and 1 through 30 of this Answer as though fully

set forth herein.

32. Answering Paragraph 32 of the Complaint, Defendants admit that Exhibit

C to the Complaint purports to be a print-out of the home page to which the domain

name resolves. Except as expressly admitted herein,










1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28


















Defendants deny each and every such allegation contained in Paragraph 38, and also

deny that Plaintiffs have suffered any injury or damages whatsoever.


purported allegations in Paragraph 39 are conclusions of law or fact, or a prayer for

relief, to which no responsive pleading is required. To the extent a response to

Paragraph 39 is required, Defendants deny each and every such allegation contained

in Paragraph 39, and also deny that Plaintiffs have suffered any injury or damages

whatsoever.





1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28








whatsoever.






whatsoever.

SECOND CAUSE OF ACTION

(Federal Trade Dress Dilution under 15 U.S.C. 1125(c))




set forth herein.









1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28










Defendants deny each and every such allegation contained in Paragraph 47, and also

deny that Plaintiffs have suffered any injury or damages whatsoever.














whatsoever.





1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28




whatsoever.

THIRD CAUSE OF ACTION

(Common Law Unfair Competition)




set forth herein.



















1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28


whatsoever.






whatsoever.

FOURTH CAUSE OF ACTION

(For Unfair Competition under Cal. Bus. & Prof. Code 17200)




set forth herein.










whatsoever.






1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28



whatsoever.

DEFENDANTS AFFIRMATIVE DEFENSES

Defendants jointly and severally assert the following affirmative defenses to

each and every one of Plaintiffs causes of action.

First Affirmative Defense: Failure To State A Claim

The Complaint and each and every cause of action asserted therein fails to state

a claim upon which relief can be granted.

Second Affirmative Defense: Lack Of Standing

Each and every cause of action asserted in the Complaint is barred because

Plaintiffs lack standing.

Third Affirmative Defense: Unclean Hands

Each and every cause of action asserted in the Complaint is barred by the

doctrine of unclean hands.

Fourth Affirmative Defense: Breach of License


Plaintiffs are maintaining them in breach of their non-exclusive license to use the

Alleged Trade Dress Image.

Fifth Affirmative Defense: Estoppel, Waiver & Acquiescence


doctrines of estoppel, waiver and acquiescence.

Sixth Affirmative Defense: Laches


doctrine of laches.



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Seventh Affirmative Defense: Fair Use


doctrine of fair use.

Eighth Affirmative Defense: Functionality


Plaintiffs alleged trade dress is functional.

Ninth Affirmative Defense: Genericness


Plaintiffs alleged trade dress is generic.

Tenth Affirmative Defense: License


Defendants have at all times acted in conformance with the terms of the license

agreement(s) under which they obtained the image(s) alleged to be infringing.

Eleventh Affirmative Defense: No Ownership


Plaintiffs do not own any right to their alleged trade dress, including without

limitation the Alleged Trade Dress Image.

Twelfth Affirmative Defense: No Trademark/Trade Dress Use


Plaintiffs have not used the alleged trade dress as an indicator of source.

Thirteenth Affirmative Defense: Abandonment

Each and every cause of action asserted in the Compliant is barred because

Plaintiffs have abandoned any rights they may have had in their alleged trade dress.

Fourteenth Affirmative Defense: Naked Licensing


Plaintiffs have lost any rights they may have had in their alleged trade dress through

the uncontrolled, or inadequately controlled, licensing of such trade dress.



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

Fifteenth Affirmative Defense: Descriptive Use


Defendants use of the allegedly infringing image(s) has at all times been purely

descriptive.

Sixteenth Affirmative Defense: Contributory and/or Comparative Negligence

Each and every cause of action asserted in the Complaint is barred because any

confusion or damage that Plaintiffs have suffered was directly and proximately caused

or contributed to by Plaintiffs own negligence in failing to exercise reasonable care in

protecting their alleged rights.

Seventeenth Affirmative Defense: Failure to Mitigate


Plaintiffs have failed to mitigate their alleged damages.

Eighteenth Affirmative Defense: Any Confusion Was Created By Plaintiffs


Plaintiffs themselves have created any likelihood of confusion by their own deliberate

actions, including without limitation by associating a depiction of a woman with her

finger near her sealed lips with a confusingly similar variation of the registered

VICTORIA MILAN mark on .

Nineteenth Affirmative Defense: Lack Of Sufficient Particularity To Identify All

Defenses

The Complaint does not describe the facts or claims being alleged with

sufficient particularity to permit Defendants to ascertain what other defenses may

exist. Defendants will rely on all further defenses that become available during

discovery in this action. Defendants expressly reserve the right to amend this Answer

for purposes of asserting such additional affirmative defenses, or to assert such

additional affirmative defenses as permitted by law.



1

2

3

4

5

6

7

8

9

10

11

12

13

14

15

16

17

18

19

20

21

22

23

24

25

26

27

28

DEFENDANTS PRAYER FOR RELIEF

WHEREFORE, Defendants Digisec Media SA and Sigurd Vedal pray for relief

jointly and severally in defense against Plaintiffs claims as follows:

1. That Plaintiffs take nothing by their complaint;

2. That judgment be entered in favor of Defendants and against Plaintiffs;

3. That the Court award Defendants their reasonable costs of suit;

4. That the Court find this to be an exceptional case for purposes of 15

U.S.C. 1117(a), and award Defendants their reasonable attorneys fees

and costs of suit, together with pre-judgment and post-judgment interest.

Dated: March 14, 2013 By: /s/Christopher T. Varas

Christopher T. Varas KILPATRICK TOWNSEND &

STOCKTON LLP Attorneys for Defendants Digisec Media AS and Sigurd Vedal

DIGISEC MEDIA AS AND SIGURD VEDAL DEMAND A JURY TRIAL. Dated: March 14, 2013 By: /s/Christopher T. Varas

Christopher T. Varas KILPATRICK TOWNSEND &

STOCKTON LLP Attorneys for Defendants Digisec Media AS and Sigurd Vedal


avid vs digisec and vice versa- digisec answer to complaint

Documents