JS 44C/SDNY

REV. 4/2014
CIVIL COVER SHEET
The JS-44 civil cover 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 of the Clerk of Court for the purpose of
initiating the civil docket sheet.
14 CV
DEFENDANTS PLAINTIFFS
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 ANDWRITE A BRIEFSTATEMENT OF CAUSE)
(DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)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 at any time? NaZjVesLJJudge Previously Assigned
If yes, wasthis case Vol. [~J Invol. r~J Dismissed. No [~J Yes [~J If yes, give date &Case No.
No [x] Yes IS 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
[ J 355 MOTOR VEHICLE
PRODUCT LIABILITY
[ I 360 OTHER PERSONAL
INJURY
[ ] 362 PERSONAL INJURY -
MED MALPRACTICE
[ ] 110 INSURANCE
I ] 120 MARINE
[ J 130 MILLER ACT
1 ] 140 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
SEIZURE OF PROPERTY
21 USC 881
[ [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 USC 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 ACT
[ ] 720 LABOR/MGMT
RELATIONS
[ ] 740 RAILWAY LABOR ACT
[ J 751 FAMILY MEDICAL
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
Checkif demanded incomplaint:
CHECK IF THIS IS ACLASS ACTION
UNDER FRCP 23
ACTIONS UNDER STATUTES
BANKRUPTCY
[ [422 APPEAL
28 USC 158
[ ] 423 WITHDRAWAL
28 USC 157
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 TAX SUITS
[ ] 870 TAXES (US Plaintiff or
Defendant)
[ [871 IRS-THIRD PARTY
26 USC 7609
OTHER STATUTES
[ ] 375 FALSE CLAIMS
[ ] 400 STATE
REAPPORTIONMENT
[ ] 410 ANTITRUST
[ ] 430 BANKS & BANKING
[ ] 450 COMMERCE
[ ] 460 DEPORTATION
[ ] 470 RACKETEER INFLU
ENCED & CORRUPT
ORGANIZATION ACT
(RICO)
[ ] 480 CONSUMER CREDIT
[ ] 490 CABLE/SATELLITE TV
[ ] 850 SECURITIES/
COMMODITIES/
EXCHANGE
] 890 OTHER STATUTORY
ACTIONS
[891 AGRICULTURAL ACTS
] 893 ENVIRONMENTAL
MATTERS
] 895 FREEDOM Oh
INFORMATION ACT
1 896 ARBITRATION
j 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW OF
APPEAL OF AGENCY DECISIO
[ ] 950 CONSTITUTIONALITY O
STATE STATUTES

DEMAND OTHER
(f^ost!t^-m this case is related to a civilcase nowPENDING IN S.D.N Y'
JUDGE DOCKET NUMBER
Check YES onlyif demanded incomplaint
JURY DEMAND: YES l*j\JO
NOTE: You must also submit at the time of filing the Statement of Relatedness form(Form IH-32
(PLACEANx INONEBOXONLY) ORIGIN
W1 Original Lj 2 Removed from LJ 3 Remanded LJ 4 Reinstated or LJ 5 Transferred from LJ 6 Multidistrict [~J 7 Appeal to District
Proceeding state Cour, from Reopened (Specify District) Litigation Judgefrom
AnriPiiatP Magistrate Judge
a. all parties represented Court Judgment
| | b. At least one
party is pro se.
(PLACEANxINONEBOXONLY) BASIS OF JURISDICTION IF 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 one box for Plaintiff and one box for Defendant)
PTF DEF PTF DEF PTF DEF
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 OF ANOTHERSTATE [ ] 2 [x] 2 INCORPORATEDor 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 Americas
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 York County)
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADETHAT, AT THIS TIME, I HAVEBEEN UNABLE, WITH REASONABLE 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 this a PRISONER PETITION/PRISONER CIVIL RIGHTS
COMPLAINT.) <~\ A <\
DATE 10/16/14 SIGNATURE OF ATTORNEY OF RECORD \L, \A\V\y ^ADMITTED TO PRACTICE 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 of Court 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
COMPLAINT FOR INJUNCTIVE
RELIEF AND DAMAGES
JUDGE MARBEBO
PlaintiffNYP Holdings, Inc. ("NYP Holdings"), by^Js4jiroQgi^pd8fsignedattorneys
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:
NATURE OF THE ACTION
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 of theNew York Post in 1993 before serving sixteen years of a 20-year sentence in federal
prison for securities fraud, has intentionally and unlawfully appropriated the NEWYORK 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 inthe United States, anda recognized NewYork Cityinstitution.
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
the NewYorkPosfs news publishing business, the widelyrecognized NEWYORKPOSTMarks
have generated valuable goodwill andhavebecomeworld famous anddistinctive.
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 as well.
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.
THE PARTIES
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 NewYork Post Publishing Inc. is a corporation formed under the 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, theidentities and residences of which are currently unknown.
JURISDICTION AND VENUE
10. This action arises under and pursuant to the Lanham Act, 15 U.S.C. 1051 et
seq., and under the common law oftrademark 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 over Plaintiffs 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 inthe Southern District of New 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
DWT 24928133v5 3930033-000043
business is in this District, a substantial part ofthe 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.
FACTUAL BACKGROUND
The New York Post
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"):
TRADEMARK
APP/REG.
NO
APP/REG.
DATE GOODS/SERVICES
NEW YORK POST 1,526,818 2/28/89 Daily newspaper
mimim--
2,213,076 12/22/98 Daily newspaper covering a variety of
topics
DWT 24928133v5 3930033-000043
TRADEMARK
APP/REG.
NO
APP/REG.
DATE GOODS/SERVICES
NEW YORK POST 3,639,502 6/16/09 Computer services, namely, providing an
online newspaper featuring current local,
national and international 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
Internet
NEW YORK POST 3,652,365
7/7/09 Electronic transmission of newspaper and
website content to mobile devices
NEW YORK POST 4,056,288 11/15/11 Downloadable software in the nature of 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 electronic devices
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
NEW YORK POST 3,199,515 1/16/07 Tee shirts, fashion tops, sweatshirts, and
underwear
NEW YORK POST 3,357,150 12/18/07 Mugs made from glass or ceramic
iimumm?
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 for the NEW YORK POST Marks are annexed hereto as Exhibit A. All of the
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 since 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 for these marks filed with the United States Patent and Trademark
Office are annexed hereto as Exhibit B.
21. These registrations constitute prima facie evidence of the validity of the NEW
YORK POST trademarks and conclusive evidence of NYP 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 of media, including
television, radio, and print advertisements, and the Internet.
DWT 24928133v5 3930033-000043
24. Plaintiff 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 of Plaintiff s extensive and exclusive use of 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' Infringing Website
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, 2014decades after the NEW YORK POST Marks were first registered and used
in interstate 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 Jane Does 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
"United States Government Is Running The
Southern Trust Corp Through A Straw Person"
This presentation clearly uses and emphasizes the mark NEW YORK POST. True and correct
copies ofrepresentative screenshots of the Infringing Website are annexed as Exhibit D.
DWT 24928133v5 3930033-000043
34. Besides using the mark NEW YORK POST prominently at the top of the page,
the Infringing Website's homepage has a layout, font style, and overall look-and-feel that
resembles the trade dress and visual appearance of NYPost.corn's homepage:
NEWYORKPOST
NEW YORK POST
THE ULTIMATE
COMMEMORATIVE MAGAZINE
DWT 24928133v5 3930033-000043
76-PAGE
ORDER NOW
NEWYORK POST
THE ULTIMATE
COMMEMORATIVE
mmmm
True and correct copies of representative screenshots of NYPost.com's homepage are annexed
hereto as Exhibit E.
35. The Infringing Website'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. Defendants' above-described uses of 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 Rights to the NEW YORK POST Marks
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 involvement with 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 commerce because he never acquired
the New York Post, or its trademark. In any event, any such right would have terminated when
Hoffenberg's three-monthrelationship with the New York Post ended in March 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
DWT 24928133v5 3930033-000043
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
of Renewal.
Defendants Have Deliberately Misled the Public About
Hoffenberg's Relationship with the New York Post and Refused to 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 [of 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 hereto as Exhibit I.
12
DWT 24928133v5 3930033-000043
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 ofthe 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 ofthe 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
DWT 24928133v5 3930033-000043
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 of News 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
Website.
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 oftheir 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
DWT 24928133v5 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 annexed as Exhibit 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 of monetary 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 Profit from the Infringing Domain Name
63. Defendants have registered and are using the Infringing Domain Name with bad-
faith intent to profit by trading off 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 ofthe 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 and desist letter of June 2014.
DWT 24928133v5 3930033-000043
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 the 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 ofthe 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 off
DWT 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 NYP and the 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
DWT 24928133v5 3930033-000043
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 poorly written 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 the 200,000 victims in the TowersInvestors.com fraud."
DWT 24928133v5 3930033-000043
AS AND FOR A FIRST CLAIM FOR RELIEF
(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 in New 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
DWT 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 of trial.
87. Plaintiff is entitled to a preliminary and a permanent injunction because the injury
that Plaintiff has 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.
AS AND FOR A SECOND CLAIM FOR RELIEF
(Trademark Infringement, False Designation of Origin, and
Unfair Competition Under Section 43(a) of the Lanham Act)
89. Plaintiff repeats and realleges paragraphs 1 through and including 88 as if the
same were fully set forth herein.
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).
20
DWT 24928133v5 3930033-000043
92. 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 oftrial.
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. Plaintiff 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
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.
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 penalties and costs for such willful
and deliberate violations pursuant to 15 U.S.C. 1117.
AS AND FOR A THIRD CLAIM FOR RELIEF
(Trademark Dilution Under Section 43(c) of the Lanham Act)
96. Plaintiff repeats and realleges paragraphs 1 through and including 95 as if the
same were fully set forth herein.
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 ofnationwide use and promotion of the marks by Plaintiff.
DWT 24928133v5 3930033-000043
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. Defendants' unauthorized use of 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 of Plaintiff 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 of Plaintiff s famous marks.
102. Defendants' unauthorized 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 willful intent to cause dilution of the famous marks in violation of Section
43(c) ofthe Lanham Act, 15 U.S.C. 1125(c).
103. 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 oftrial.
104. Plaintiff is entitled to a preliminary and a permanent injunction restraining further
acts of dilution, because the injury that Plaintiff has 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 3930033-000043
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 AND FOR A FOURTH CLAIM FOR RELIEF
(Trademark Cyberpiracy Under Section 43(d) of the Lanham Act)
106. Plaintiff repeats and realleges paragraphs 1 through and including 105 as if the
same were fully set forth herein.
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 with the New York Post. Defendants' bad faith intent 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 admitted intent to use the
23
DWT 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 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 oftrial.
113. 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.
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
that Plaintiff has 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.
115. Defendants' are also liable to Plaintiff for all profits and damages resulting from
their violation of 15 U.S.C. 1125(d), as well as additional penalties and costs for such willful
and deliberate violations pursuant to 15 U.S.C. 1117.
AS AND FOR A FOURTH CLAIM FOR RELIEF
(Common Law Trademark Infringement and Unfair Competition)
116. Plaintiff repeats and realleges paragraphs 1 through and including 115 as 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 continue to use in commerce marks that are
confusingly similar in sound, appearance, and meaning to the NEW YORK POST Marks,
notwithstanding the fact that each ofthem knew that NYP Holdings is the rightful owner ofthose
marks, in order to trade upon and profit from NYP Holdings' reputation and goodwill associated
with the NEW YORK POST Marks.
121. Defendants have made false statements on their website and in press releases
regarding the ownership ofthe NEW YORK POST Marks.
122. 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 of 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
that Plaintiff has 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.
125. Plaintiff is also entitled to an award of actual damages in an amount presently
unknown and to disgorgement of Defendants' infringing profits.
DWT 24928133v5 3930033-000043
126. Plaintiff seeks punitive damages for Defendants' gross, wanton, and willful fraud
and morally culpable conduct.
AS AND FOR A FIFTH CLAIM FOR RELIEF
(Trademark Dilution Under N.Y. Gen. Bus. Law 360-1)
127. Plaintiff repeats and realleges paragraphs 1 through and including 126 as if the
same were fully set forth herein.
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 well known and distinctive as indicators of
source for NYP Holdings and the New York Post newspaper and website.
130. Defendants' use of the NEW YORK POST Marks on their website and for their
proposed print newspaper is likely to and actually dilutes and blurs the distinctiveness of NYP
Holdings' NEW YORK POST Marks.
131. Defendants' false statements on their website are likely to and actually dilute and
tarnish the NEW YORK POST Marks.
132. 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 time oftrial.
133. Plaintiff 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
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.
26
DWT 24928133v5 3930033-000043
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.
PRAYER FOR RELIEF
Wherefore, Plaintiff respectfully 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 ofthe NEW YORK POST Marks, in a way that is likely to have an
impact on interstate commerce;
b. Inducing, encouraging, causing, facilitating, materially contributing 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 likely 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
DWT 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 York Post;
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 The New
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 oftrial;
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 seemjust and
proper.
Dated: New York, New York
October 16,2014
Respectfully submitted,
DAVIS WRIGHT TREMAINE LLP
DWT 24928133v5 3930033-000043
By: vn
Laura R. Handman
Samuel M. Bayard
Camille Caiman
Attorneysfor NYP Holdings, Inc.
1633 Broadway 27th floor
New York, New York 10019
(212)489-8230
29
Int CI.: 16
Prior 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)
210 SOUTH STREET
NEW YORK, NY 10002 , ASSIGNEE OF AND BY
CHANGE OF NAME FROM NEWS AMERICA
PUBLISHING 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 "NEW YORK", APART FROM
THE MARK AS 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 AVENUE OF 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
441988
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 OF US. REG. NO. 1,526,818.
NO CLAIM 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
SERVICE MARK
PRINCIPAL REGISTER
NEW YORK POST
NYP HOLDINGS, INC. (DELAWARE CORPORA
TION)
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
FOR: COMPUTER SERVICES, NAMELY, PRO
VIDING AN ONLINE NEWSPAPER FEATURING
CURRENT LOCAL, NATIONAL AND INTERNA
TIONAL NEWS AND NEWS ANALYSIS ON A WIDE
VARIETY OF TOPICS. PHOTOGRAPHS, INFORMA
TION ABOUT A WIDE VARIETY OF TOPICS RE
LATED 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 FEA
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.
THE MARK 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 XT ,,_
Reg. No. 3,652,365
United States Patent and Trademark Office Registered July i, 2009
SERVICE MARK
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
FONT, STYLE, SIZE, OR COLOR.
OWNER OF U.S. REG. NOS. 1,526,818, 3,098,182,
AND OTHERS.
NO 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 nyp holdings, inc. (Delaware corporation)
1211 AVENUE OF THEAMERICAS
Registered Nov. 15,2011 newyork,ny 10036
Int. CI.: 9
TRADEMARK
PRINCIPAL REGISTER
Director of the United States Patent and Trademark Office
FOR: DOWNLOADABLE SOFTWARE IN THE NATURE OF AN APPLICATION FOR OB
TAINING NEWS, INFORMATION, COMMENTARY, AND TEXTUAL, AUDIO, AND VISUAL
CONTENT OF THE 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 CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR
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 MARKAS SHOWN.
SER. NO. 85-296,005, FILED 4-15-2011.
LEIGH CAROLINE CASE, EXAMINING ATTORNEY
Int. CI.: 16
Prior U.S. Qs.: 2, 5, 22, 23, 29, 37, 38 and 50
Reg. No. 3,098,182
United States Patent and Trademark Office Registered May 30,2006
TRADEMARK
PRINCIPAL REGISTER
mmmuim
NYP HOLDINGS, INC. (DELAWARE CORPORA
TION)
1211 AVENUE OF THE AMERICAS
NEW YORK, NY 10036
FOR: PRINTED NON-FICTION 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
Prior U.S. as.: 22 and 39 ^T ,<iM1_
Reg. No. 3,199,515
United States Patent and Trademark Office Registered Jan. 16,2007
TRADEMARK
PRINCIPAL REGISTER
NEW YORK 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. 22 AND 39).
FIRST USE 10-0-2001; IN COMMERCE 10-0-2001.
THE MARK CONSISTS OF STANDARD CHAR
ACTERS WITHOUT CLAIM TO ANY PARTICULAR
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 78-502,612, 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
TRADEMARK
PRINCIPAL REGISTER
NEW YORK POST
NYP HOLDINGS, INC. (DELAWARE CORPORA
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.
THE MARK CONSISTS OF STANDARD CHAR
ACTERS WITHOUT CLAIM TO ANY PARTICULAR
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 States Patent and Trademark Office Registered Oct 23,2007
TRADEMARK
PRINCIPAL REGISTER
Tnmm
NYP HOLDINGS, INC. (DELAWARE CORPORA
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.
NO CLAIM 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