UNITED STATES DISTRICT COURT WESTERN DISTRICT OF KENTUCKY

(ELECTRONICALLY FILED)

KENTUCKY DERBY FESTIVAL, INC. ) Civil Action No.: _________________ ) Plaintiff, ) ) Judge _____________________ v. ) ) ANDRE WILSON d/b/a ) STYLE ICON ) Serve: 12307 Saratoga View Court ) Louisville, KY 40299 ) ) Defendant. ) ____________________________________)

KENTUCKY DERBY FESTIVAL, INC.’S COMPLAINT AGAINST ANDRÉ WILSON d/b/a STYLE ICON

Kentucky Derby Festival, Inc. (“KDF”), for its Complaint against Defendant Andre Wilson

d/b/a Style Icon (“Wilson”), hereby states as follows:

NATURE OF ACTION

1. This is an action under the Declaratory Judgment Act 28 U.S.C. § 2201 and Federal

Rule of Civil Procedure § 57 to declare that Wilson does not own any copyrights to KDF’s

intellectual property or products, including the 2019 Pegasus Pin and 2018 KDF Uniform

Jacket, and declare that KDF is not causing harm to Wilson.

2. Specifically, KDF retained Wilson as the “Official Stylist of the KDF Blazer” in

2018. KDF provided Wilson with the parameters of its KDF Uniform Jacket design, including

the Pegasus logo, the colors to use, and the repeating Pegasus design of the jacket. That design

was based upon the same and similar designs that KDF has used for its uniform jackets for more

than 40 years. Wilson assisted in identifying and procuring the sources for the manufacturer

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and embroidery on the KDF Uniform Jacket but was not responsible for the overall design.

Wilson was properly paid for his services as provided by the terms of the parties’ agreement.

Furthermore, Wilson obtained significant positive publicity surrounding the 2018 jacket – all

to his benefit.

3. However, Wilson now claims that he owns KDF intellectual property, namely

KDF’s copyright rights in and to its KDF Uniform Jacket. He has further alleged that KDF’s

use of its own design with the 2019 Pegasus Pin somehow infringes his claimed rights in the

2018 KDF Uniform Jacket and claims the rights to royalty payments and other damages.

4. Wilson, through his counsel, has threatened litigation, stating in an email dated

March 29, 2019 that “[W]e attach a draft complaint that our client has authorized should matters

remain unresolved by April 5. Mr. Wilson is eager to share his story with media outlets, social

media and organizations that help protect the rights of artists, designers, small businesses and

minorities.” That email included a draft complaint.

5. KDF is the owner of all intellectual property rights associated with the 2018 KDF

Uniform Jacket and the 2019 Pegasus Pins. At the same time, Wilson claims to be the owner

of all right, title, and interest to the following U.S. Copyright Registration: VA 2-140-721

(hereinafter “the Copyright”), which he filed immediately prior to sending his first demand

letter in this controversy.

6. There is thus a present case or controversy as to whether Wilson’s claimed

Copyrights are valid and whether KDF has infringed the Copyright. This Action involves an

actual controversy and need for a declaration of the parties’ rights and interest between the

parties within the meaning and import of 28 U.S.C. §2201, et seq

VENUE AND JURISDICTION

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7. This Court has jurisdiction pursuant to 28 U.S.C. §2201 and §2202.

8. Venue in the Western District of Kentucky is proper pursuant to 28 U.S.C. § 1391

because it is the judicial district where the Defendant resides and a substantial part of the events

or omissions giving rise to the claims asserted by KDF herein occurred within the Western

District of Kentucky.

THE PARTIES

9. Plaintiff KDF is a Kentucky non-profit corporation with its principal place of

business located at 1001 South Third Street, Louisville, Kentucky 40203.

10. Defendant Wilson is a resident of Kentucky who resides Louisville, Kentucky.

Wilson transacts business under the name “Style Icon LLC”, which was a Kentucky limited

liability company that was administratively dissolved in 2010.

FACTS GIVING RISE TO THE COMPLAINT

11. KDF is a community organization of 4,000 volunteers who work all year to provide

quality entertainment that enhances the community. KDF was formed in 1956 and now

provides more than seventy (70) special events each year to bring the community together.

12. The Kentucky Derby Festival is a two week celebration which kicks off with the

“They’re Off!” Luncheon, followed by Thunder Over Louisville, the Chow Wagon, the Great

Steamboat Race, the Pegasus Parade, the Great Balloon Race, Run for the Rosé, the $1 Million

Dollar Hole-In-One Golf Contest, and the MiniMarathon, just to name a few.

13. The Kentucky Derby Festival is also a mirror of the community and KDF events

are attended by people representing all age, educational, geographic, demographic, and income

groups.

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14. KDF created its first uniform jacket in 1973 to make KDF Board Members stand

out in a crowd and to raise awareness of the Kentucky Derby Festival.

15. The uniform jackets worn between 1973 and 1976 were a solid burgundy in color

with pocket crests. Since that jacket was not too distinctive, in 1976, KDF changed to a

repeating Pegasus design using the colors navy and gold, which featured a full Pegasus design

as illustrated below:

16. In 1989, the uniform jackets were again changed to reflect an updated Pegasus

logo which featured the silhouette of the head and neck of a Pegasus, with wings flowing

behind, and the colors of the uniform jackets were changed to pink and teal. Below is a

photograph of the KDF uniform jackets worn between 1989 and 2005.

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17. In 2006, KDF updated its Pegasus logo as illustrated below:

18. On August 10, 2007, KDF filed an application with the USPTO to register this logo

for use in connection with “charitable fundraising” and “entertainment services, namely,

organizing and conducting a community festival celebrating the annual running of a horse race.”

Registration of this logo was issued by the USPTO on February 12, 2008, under Reg. No.

3,417,762. This registration is live, subsisting, and is incontestable.

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19. On September 10, 2007, KDF registered the above-referenced logo with the

Kentucky Secretary of State for use in connection with “pins; shirts” under Reg. No. 016714.

This registration was last renewed in 2017 and is valid through September 10, 2022.

20. In 2006, the color scheme of the uniform jackets was changed from pink and teal

to khaki and black, but continued the traditional repeating Pegasus design, as illustrated below:

21. For illustration, below is a photograph of a handmade quilt fashioned from swatches

of material cut from the various KDF uniform jackets which was presented to KDF in 2007.

This quilt has been displayed in the Earl Ruby Conference Room at KDF, which is where

Wilson occasionally met with KDF in 2017 and 2018, since that time.

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KDF’s Design of 2018 Jacket

22. After KDF ran out of the khaki and black fabric in 2017, KDF decided to return to

its more distinctive pink and teal brand colors for the 2018 uniform jackets, continued using the

traditional repeating Pegasus design.

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23. However, KDF no longer had a source for fabric and, more importantly, did not

have an embroiderer since the companies which had previously manufactured its uniform

jackets were no longer in business.

24. Through a contact at Churchill Downs, Stacey Robinson, Executive Vice

President/Chief of Staff of KDF, met with Wilson, whom she knew of as a local stylist, at a

local restaurant in June 2017, to discuss how KDF could update its uniform jackets.

25. However, nothing formal came from this initial meeting and KDF wanted to pursue

its options.

26. Thereafter, KDF formed a Uniform Committee, which worked with two different

clothing design companies during the summer and fall of 2017, neither of which were affiliated

with Wilson, to consider a wide range of designs and options.

27. By way of example, below are a few of the images that were provided to KDF in

and around August, 2017 from sources other than Wilson.

28. These images feature a larger Pegasus design, a similar color scheme, similar

design spacing, a Pegasus design without the “halo”, a “heads up” Pegasus within the repeating

pattern, and a Pegasus design based exclusively on the KDF trademarked logo.

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29. Notably, these are design elements to which Wilson now claims to own by

copyright even though they were considered by KDF through separate suppliers well before

Wilson was engaged to provide consulting and stylist services to KDF.

30. KDF ultimately chose not to work with either of these clothing designers since

neither of these designers could embroidery the Pegasus logo on to the uniform jackets and

KDF did not want to have the Pegasus logo simply printed on the fabric.

KDF’s Meeting with Wilson in October 2017

31. While KDF was considering its options, it still needed a source for the fabric and

an embroiderer.

32. To that end, Ms. Robinson arranged to meet with Wilson at KDF in October 2017,

along with Jennifer Morgan, Merchandising Manager of KDF.

33. At this meeting, Wilson was shown these other designs and it was discussed

whether he could procure the fabric and find an embroiderer, as well as serve as a “stylist” in

an effort to modernize and update the overall fit of the new KDF blazer.

34. During the meeting, Wilson took photographs of the designs that had been

developed on behalf of KDF to that point.

35. Ms. Robinson and Ms. Morgan advised Wilson at this meeting that the KDF

Uniform Committee was seeking to return to the traditional KDF pink and teal color scheme,

with the pink background and a repeated Pegasus pattern where the Pegasus would be KDF teal.

36. The KDF pink and teal color scheme has been a part of KDF’s brand colors for a

long time and is even featured on the walls of the conference room in which Wilson met with

KDF. See e.g., the KDF pink and teal color scheme as used on other materials since at least as

early as 1993 are attached as Exhibit 1.

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37. At this meeting, Wilson assured Ms. Robinson that he could stay in this “look” to

follow KDF branding but give the KDF blazer an updated style and fit.

KDF’s Designs Independent of Wilson Prior to November 15, 2017 Wilson Meeting

38. Following the October meeting, KDF did not hear from Wilson until sometime on

or after November 15, 2017, which is when Wilson again met with Ms. Robinson and Ms.

Morgan at Toast.

39. In the meantime, Ms. Morgan had asked one of KDF’s in house merchandising

employees to create Photoshop images of proposed blazer designs that Ms. Robinson could

present to a KDF Executive Board meeting on or about November 13, 2017.

40. To illustrate the color scheme of the 2018 uniform jackets, Ms. Morgan and Ms.

Robinson spun a color wheel in the conference room (which are painted the KDF pink and teal

colors), to identify the pantone color which closely matched or was slightly lighter than the

KDF color scheme.

41. The selected colors were to be the colors used in the proposed blazer designs.

42. Below are images created by KDF in house on November 1, 2017 and November

7, 2017:

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43. Wilson did not contribute to the design of the jackets illustrated above in any way

and they were independently created before any of Wilson’s alleged designs were shown to

representatives of KDF.

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44. The existence of these prior, independently created designs confirm that KDF

already had design plans in place and that Wilson was given instructions from KDF in an effort

to replicate those preexisting design plans.

45. At the November 15, 2017 meeting, Wilson provided digital renderings of various

versions of the blazer on his iPad.

Wilson’s Post November 15, 2017 Involvement with KDF

46. KDF downloaded these renderings through a web link that Wilson provided to Ms.

Robinson and Ms. Morgan on November 16, 2017. See Email, attached as Exhibit 2.

47. The renderings provided to KDF by Wilson are attached as Exhibit 3.

48. Thereafter, on November 20, 2017, Wilson asked if he could pick up a sample

jacket from KDF to show his embroiderer. See November 20, 2017 email, attached as Exhibit

4.

49. Later, on November 29, 2017, Wilson asked Ms. Morgan to send him the KDF

logo, which she did, but made clear that the image she was sending him included the “font AND

the circle behind the Pegasus and (according to the mock ups) the logo for the jackets would be

the Pegasus only.” See November 29, 2017 email, attached as Exhibit 5.

50. KDF made clear to Wilson that the KDF Pegasus logo was to be used in connection

with the new blazer with no exceptions.

Wilson and KDF’s Agreement

51. After an additional meeting on December 20, 2017, Ms. Morgan sent Wilson a

follow up email to summarize the parties’ arrangement “[f]or consulting and for your efforts in

sourcing and securing suppliers for our fabric, embroidery and tailoring.” See December 21,

2017 email, attached as Exhibit 6.

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52. This email constituted the outline of the written agreement dated January 22, 2018.

53. The Letter of Agreement was executed following a meeting with Stacey Robinson,

Jennifer Morgan and Jeff English, Senior Vice President and General Counsel of KDF, at KDF

on January 18, 2018 to address some concerns KDF was having with Wilson’s sourcing,

invoicing practices and production timeline. See Exhibit 7.

54. Ultimately, KDF paid Wilson $4500 for his styling and consulting services.

55. At the same time, KDF paid well over $50,000 directly to the outside vendors for

the fabric, embroidery and tailoring.

Wilson Does Not Own the KDF Copyrights

56. Wilson alleges that he owns copyright to numerous aspects of the 2018 KDF

Uniform Jacket.

57. Specifically, Wilson claims he owns copyrights to the Pegasus, the size and shape

of the Pegasus, the overall design of the fabric, and the lining of the jacket.

58. Wilson does not own any such copyrights as set forth below:

A. Wilson’s Claims that He Owns the Copyrights to the Pegasus

59. As to the Pegasus design itself, Wilson claims copyright to the design as a whole

alleging that it has a unique silhouette with a contoured nose, slimmer neck and body, and the

separation between the head and plumage (all as compared to the KDF Pegasus).

60. Wilson further claims protection in the additional eye detail, and the solid

coloration with no open spaces in the Pegasus as follows:

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B. Wilson’s Claims that He Owns the Copyrights to the Size and Shape of the Pegasus

61. Wilson also claims that the “size and shape” of the Pegasus design qualify for

copyright protection.

62. In other words, Wilson claims that he owns copyrights to the design that the

Pegasus has an altered proportion height to length as compared to the prior jacket version of the

Pegasus logos used by KDF (in essence, a larger Pegasus).

C. Wilson’s Claims that He Owns the Copyrights to the Overall Design of the Fabric

63. Wilson claims protection to the following overall design features of the fabric

(including the Pegasus itself): the 3-D effect finish of the Pegasus, the “head up” orientation

position of the logo on the fabric (as opposed to being tilted), the manner and placement of the

Pegasus pattern (i.e. lined in straight horizontal and vertical orientation as opposed to diagonal),

and the spacing between the Pegasus designs on the fabric.

64. However, Copyright Registration No. VA 2-140-721 only claims rights to a “two-

dimensional work of art” and, therefore, could not cover any functional, three-dimensional

aspects of the Pegasus logo.

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65. For reference, below on the right is the photo Wilson claims as the “2018 KDF

Uniform Jacket” as compared to the image of the jacket on the left prepared by KDF in house

independently of Wilson, and before any of Wilson’s alleged designs were shown to KDF:

Pre-Wilson KDF Design Wilson Claimed Design

D. Wilson’s Claims that He Owns the Copyrights to the Lining of the Jacket

66. Wilson further claims that the contrasting color lining of the jacket is also subject

to copyright.

67. However, the color of the lining is either utilitarian, or is a variation in color, neither

of which are eligible for copyright protection. See 37 C.F.R. §202.1(a).

68. Additionally, the other clothing companies KDF worked with during the summer

and fall of 2017 had also suggested contrasting color lining. See, paragraph 27 of the Complaint,

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infra. The images prepared by the other clothing companies were likewise created

independently of Wilson, and before any of Wilson’s alleged designs were shown to KDF.

E. Wilson Does Not Own Any Copyrights in the KDF Uniform Jackets

69. Wilson did not control the selection and approval of the colors used for the 2018

KDF Uniform Jacket.

70. Instead, as indicated above, KDF instructed Wilson to use the KDF pink and teal

color combination in order to replicate the traditional KDF color scheme.

71. In fact, Wilson felt very strongly that KDF should continue using the KDF pink

color.

72. Further, KDF instructed Wilson to have the Pegasus logo a single KDF teal color

as the embroidery on the fabric.

73. Therefore, any “trial and error” to select the color was a result of Wilson having to

comply with KDF branding guidelines and not subject to his personal choice.

74. Indeed, Wilson presented sample fabric to KDF which KDF rejected because it did

not appear to match KDF’s branding standards – i.e. KDF pink and teal color scheme. See e.g.,

photo comparisons of Wilson proposed colors which were rejected by KDF, attached as Exhibit

8.

75. KDF directed Wilson to use its longstanding Pegasus logo (as provided to him in

November 2017):

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76. Wilson provided the “stitch” file of the repeating Pegasus logo (single icon

illustrated below and the “stitch” file attached as Exhibit 9) to KDF sometime in December

2017. However, any variations between the “stitch” file and KDF’s trademark is a result of the

transformation of a 2-D design into a 3-D design.

77. In other words, the “stitch file” is simply an illustration of the KDF logo without

the halo and in one color, which were KDF’s instructions to Wilson.

78. The “stitch file” design is nothing more than the KDF logo created in a form needed

for purposes of the embroidery.

79. Moreover, the remaining claimed elements, such as the increased size of the

Pegasus, the spacing, the orientation of the Pegasus repeating pattern (horizontal and vertical as

opposed to diagonal) and the orientation of the Pegasus (“heads up”), are not substantial

variations of the preexisting work, are not original to Wilson, and not subject to copyright

protection.

80. The KDF uniform jackets throughout the years have featured the same or very

similar linear and horizontal orientation of the Pegasus logo, and the Pegasus logos in all of the

jackets are stitched in a “raised” 3-D finish and feature the repeating Pegasus pattern, which has

become symbolic of KDF.

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81. Therefore, Wilson does not have any copyright rights to the Pegasus ultimately

used for the 2018 KDF Uniform Jacket.

82. Wilson does not otherwise have any copyright rights to the 2018 Jacket.

Wilson Does Not Own Any Copyright Rights to the 2019 Pegasus Pin

83. KDF has not infringed on any “Wilson Design” with respect to the 2019 Pegasus

Pin.

84. Specifically, the 2019 Pegasus Pin does not incorporate or duplicate the design

elements claimed to be part of Wilson’s alleged copyright claim (aside from the color lining

which is purely utilitarian).

85. Although the KDF Pegasus logo depicted on the 2019 Pegasus Pin is situated in a

“heads up” position, the Pegasus logo has been used in “head up” position in some way since

the 1970’s and is not something new conceived of by Wilson. See, infra.

86. Furthermore, the colors used in the 2019 Pegasus Pin are the same as those dictated

by KDF’s brand standards since 2007, namely Pantone 227 (KDF pink) and Pantone 5483 (KDF

blue).

87. Therefore, any similarity in color is dictated purely by the fact that both designs

were required to match or incorporate the KDF brand colors and standards.

88. That said, nothing of Wilson’s has been copied by KDF in connection with the 2019

Pegasus Pin.

89. Rather, the 2019 Pegasus Pin incorporates KDF’s federally-registered trademark

Pegasus logo that was first used in 2006 and is registered with the USPTO under Reg. No.

3,417,762, and is the very same logo registered with the Kentucky Secretary of State for inter

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alia “pins” under Reg. No. 16714.02, as discussed infra. Below is a photo comparison of the

works at issue:

90. Furthermore, the 2019 Pegasus Pin complies with the Pegasus Pin Guidelines,

attached as Exhibit 10.

91. The Pegasus logo illustrated in the 2019 Pegasus Pin, the repeating Pegasus pattern

used since 1989, and the KDF pink and teal color scheme which have been part of KDF’s brand

standards for many years, are all elements that KDF either owns under trademark or copyright

law or could not be subject to copyright ownership by Wilson.

92. A comparison of the “Wilson” claimed Pegasus and the Pegasus illustrated in the

2019 Pegasus Pin further supports that Wilson has no claims to copyrights in the 2019 Pegasus

Pin:

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KDF Trademarked Pegasus

Close-Up of KDF Pin Logo

2019 Pegasus Pin Packaging

and Marketing

2019 Pegasus Pin Packaging

and Marketing

“Wilson Design”

93. The 2019 Pegasus Pin does not contain the “filled in” solid coloration or the

“design” otherwise claimed to have been created by Wilson.

94. Instead, the Pegasus logo in the 2019 Pin features the same contrast in colors and

“open space” illustrated in the KDF trademarked Pegasus.

95. Based on the foregoing, the 2019 Pegasus Pin cannot be the subject of a copying or

infringement claim.

COUNT I - DECLARATORY JUDGMENT

96. KDF incorporates by reference each and every allegation previously set forth in

this Complaint as if fully set forth herein.

97. KDF retained Wilson as the “Official Stylist of the KDF Blazer” in 2018.

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98. KDF provided Wilson with the parameters of its KDF uniform jacket design,

including the Pegasus logo, the colors to use, and the repeating Pegasus pattern on the jacket.

99. Wilson was properly paid for his services as provided by the terms of the parties’

agreement.

100. Furthermore, Wilson obtained significant positive publicity surrounding the 2018

jacket – all to his benefit.

101. KDF seeks a declaratory judgment that Wilson does not own any copyrights to

KDF’s intellectual property or products, including the 2019 Pegasus Pin and 2018 KDF

Uniform Jacket.

102. KDF further seeks a declaratory judgment that it is not causing harm to Wilson.

103. KDF seeks a declaratory judgment that the Plaintiff’s copyright and copyright

registration is invalid.

104. KDF seeks a declaratory judgment that it has not infringed any copyright rights

allegedly owned by Plaintiff.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Kentucky Derby Festival, Inc., hereby demands judgment as

follows:

A. For a Declaratory Judgment that Wilson does not own any copyrights to KDF’s

intellectual property or products, including the 2019 Pegasus Pin and 2018 KDF

Uniform Jacket;

B. For a Declaratory Judgment that Wilson has suffered no harm as a result of his

allegations;

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C. For a declaration that the Plaintiff’s Copyright is invalid and for an order directing

Plaintiff to voluntarily cancel the registration with the U.S. Copyright Office.

D. For a declaration that the Plaintiff has not infringed Plaintiff’s Copyright.

E. A trial by jury on all issues so triable; and

F. Any and all other relief to which they may be entitled.

Respectfully submitted,

/s/ Dennis D. Murrell Dennis D. Murrell dmurrell@middletonlaw.com Elisabeth S. Gray egray@middletonlaw.com Brian P. McGraw bmcgraw@middletonlaw.com MIDDLETON REUTLINGER 401 South 4th Street, Suite 2600 Louisville, Kentucky 40202 Phone: (502) 584-1135 Counsel for Plaintiff Kentucky Derby Festival, Inc.