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1 Mutual of Omaha Insurance Company, a Nebraska corporation, v. Plaintiff, Oprah Winfrey, an individual, and Harpo Productions, Inc., an Illinois corporation, IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF NEBRASKA Defendants. Case No. 09cv145 COMPLAINT (TRIAL REQUESTED IN OMAHA) COMES NOW Plaintiff Mutual of Omaha Insurance Company and, for its Complaint against Oprah Winfrey and Harpo Productions, Inc. states the following: PARTIES 1. Plaintiff Mutual of Omaha Insurance Company ( Mutual or Plaintiff ) is a corporation organized and existing under the laws of the State of Nebraska and maintains its headquarters and principal place of business at Mutual of Omaha Plaza, Omaha, Nebraska Upon information and belief, Defendant Oprah Winfrey is an Illinois citizen and resident with a business address at 110 North Carpenter Street, Chicago, Illinois Defendant Harpo Productions, Inc. is a corporation organized and existing under the laws of Illinois with a principal place of business at 110 North Carpenter Street, Chicago, IL Courthouse News Service

2 4. Upon information and belief, Oprah Winfrey is the owner, chief executive and alter ego of Harpo Productions, Inc. As used herein, the Defendants will be collectively referred to as Harpo or Defendants. JURISDICTION AND VENUE 5. Jurisdiction in this Court and in the subject matter of this action arises under the trademark laws of the United States, 15 U.S.C. 1051, et seq.; 28 U.S.C. 1331, 1332 and 1338 as the matter in controversy exceeds the sum or value of $75,000, exclusive of interest and costs; under the Declaratory Judgment Act, 28 U.S.C and 2202; and under the supplemental jurisdiction of this Court pursuant to 28 U.S.C This Court may exercise personal jurisdiction over the Defendants based upon their presence within this judicial district, as well as, upon information and belief, their activities including their transaction of business within the District of Nebraska. 7. Venue in this Court is proper under 28 U.S.C. 1391(b) because at all times relevant to the Complaint the actions complained of herein are alleged to have occurred within this judicial district. FACTUAL ALLEGATIONS OF THE COMPLAINT Plaintiff and official sponsor of the aha moment SM Advertising Campaign 8. Plaintiff Mutual is a well-known provider of insurance underwriting services in this District and throughout the United States. 9. Plaintiff Mutual promotes its business and goodwill by various public service and business promotions. One such promotion was conceived on or about February of 2008 as associating Mutual of Omaha insurance and financial services with the company slogan official sponsor of the aha moment SM and doing so primarily through a public service venue that would 2

3 invite members of the public to share with others significant life experiences, and to do so using various coined formatives built around the commonly understood term aha as part of an awareness campaign of the importance of insurance and financial products to family well-being. In fact, the promotion came to employ various and sundry formatives, including aha story, aha moments, aha features, aha network, aha tour, aha newsletter, the aha times, and aha on the web ( Aha Formatives ). A significant platform employed by Mutual for associating Mutual insurance and financial services with its slogan official sponsor of the aha moment SM and for promoting free public services through the Aha Formatives, is a website which has been open and fully operating since February A true and correct screenshot of website home page is attached hereto as Exhibit A. Mutual has also engaged in television commercial and online media activities. 10. Due diligence and design work upon that promotion began in July The due diligence included a professional search for any possible federal trademark, state trademark or common law trademark rights that might be claimed or owned by others. A true and correct copy of the summary pages of a July 2008 Thompson and Thompson search are attached hereto as Exhibit B. 11. That due diligence confirmed the good faith belief and understanding of Mutual that the formative aha was commonly used and understood by the public as an exclamation of triumph or surprise and that the formative aha moment commonly was used and understood to describe a particular life experience. Consistent with that understanding, there was inserted a prominent definition question what is an aha moment? on the home page of the website, as shown by Exhibit A. 3

4 12. That due diligence also confirmed the good faith belief and understanding of Mutual that there was an opportunity to adopt, use and apply to federally register the slogan official sponsor of the aha moment SM as a distinctive service mark in connection with Mutual insurance underwriting services. 13. On August 6, 2008, Mutual prepared and filed at the United States Patent & Trademark Office ( USPTO ) the application Serial No ,052 for OFFICIAL SPONSOR OF THE AHA MOMENT as a service mark in Int Class 036 for the services of Insurance underwriting in the field of life, health, disability, dental, long-term care, Medicare supplement, critical illness, accidental death and dismemberment, hospital income, annuities, retirement plans and mutual funds. That application was publicly available to anyone to inspect after August 6, 2008; was published on January 27, 2009 for opposition by anyone who believed the person would be damaged by such a federal registration; and in the absence of any opposition was granted a Notice of Allowance on April 21, A true and correct copy of the official USPTO status report on Serial No ,052 is attached hereto as Exhibit C. The Allegations Of Infringement By Defendants 14. On April 21, 2009, Marc J. Rachman ( Rachman ) contacted Martha K. Zajicek ( Zajicek ), attorney of record for Serial No ,052 and Assistant General Counsel to Mutual. Rachman asserted he was from the New York City law firm Davis & Gilbert LLP and that he represented Harpo. In Rachman s April 21, 2009 call to Zajicek he indicated concern about the approved application Serial No ,052 and informed Zajicek he would articulate those concerns in a letter. He also expressed concern that Mutual was confusing consumers through its advertising campaign. A true and correct copy of the letter that followed on April 21, 2009 (hereafter referred to as the Rachman Letter ) is attached hereto as Exhibit D. 4

5 15. The Rachman Letter inter alia wrongfully asserted ownership by Defendants of some manner of common-law trademark rights, rights of publicity, sponsorship, rights of designation of origin, etc. all grounded upon or embodied by the simple formative Aha Moment. The letter also accused Mutual of diluting Defendants alleged trademark rights in the formative Aha Moment as a result of operation of the website and the associated public service promotion activities of Mutual illustrated within that website and its current advertising and marketing campaign. 16. The Rachman Letter, titled CEASE & DESIST, demands that Mutual immediately discontinue its public service promotion, destroy all advertising materials that bear Aha Moment, shut down its website and expressly abandon the approved application Serial No , By its terms, the Rachman Letter is unambiguous and demands that Mutual begin a prompt cessation of further use of Infringing Materials and there is no other resolution or compromise to be discussed. 18. Zajicek was shocked and amazed at the untimely and unsupportable allegations in the Rachman Letter, particularly in view of the plainly descriptive nature of all the Aha Formatives. 19. There was no objective invitation at all to compromise the issues by the plain language of the Rachman Letter, which created an immediate and present threat to a national and strategic campaign announced openly in February 2009 and now entering a new and active phase, with dispatch of the five month and nationwide aha tour to Oklahoma City on May 4, The aha tour dates are set forth in Exhibit A. 5

6 20. Defendants conduct of claiming proprietary rights that do not exist has cast a cloud over Mutual s national advertising campaign and has caused irreparable harm to Mutual and threatens Mutual s substantial investment in the advertising and promotional campaign. Plaintiff s Use Does Not Infringe or Unfairly Compete With Any of Defendants Legitimate Rights 21. Plaintiff s use of one or more Aha Formatives in connection with the its public service promotions, as featured in Mutual publications, television advertising and/or on the web site, does not infringe any trademark rights, or any other right, under federal or common law or otherwise, that Defendants may have in their alleged Aha Moment. 22. A comparison of the descriptive uses of any of the Aha Formatives, or the slogan of approved application Serial No ,052, with the alleged rights in Aha Moment being arrogated by Defendants underscores the differences between the uses. The USPTO approved OFFICIAL SPONSOR OF THE AHA MOMENT as a composite service mark in Int Class 036 in the face of various other prior aha applications or registrations, as illustrated by Exhibit B. Mutual has not asserted any rights in the formative aha moment apart from the mark as a whole. 23. Moreover, Mutual objectively uses the various Aha Formatives in connection with advertising and marketing activities in a manner clearly labeled as sponsored by Mutual. 24. There are no metes and bounds at all associated with hopelessly vague trademark rights being claimed by Harpo in the formative Aha Moment. There is no application for federal registration asserted by the Rachman Letter. 25. Indeed, upon information and belief, Harpo objectively and only uses Aha! Moment in a non-trademark, descriptive sense in O magazine, as shown by the titles of example 6

7 articles. A true and correct copy of example articles from O magazine is attached hereto as Exhibit E. 26. Harpo does not use Aha! Moment as a source of origin and can claim no proprietary rights to that term. Third Party Uses Of Aha Formatives 27. In addition to the differences between the use of the various Aha Formatives by Mutual and those uses by Harpo alleged in the Rachman Letter, there are a number of unrelated third-parties also using various Aha Formatives for various goods and services. A true and correct sampling of websites demonstrating such uses are attached hereto as Exhibit F. 28. Even if Harpo could demonstrate secondary meaning between Aha Moment and some goods or services sold in commerce by Harpo, and it cannot, third-party uses in a descriptive sense of Aha Formatives inherently point to more than a single source. 29. In view of Mutual and various third party uses of the Aha Formatives referred to herein, Defendants have failed to police their alleged mark and take action against such third-party uses, have caused their alleged mark to lose any significance it allegedly may have had as a mark, and have thereby abandoned whatever rights they may have allegedly had in the mark. 30. In view of the foregoing, Mutual is being, and will likely continue to be, damaged by the cloud and chill on its legitimate activities because (i) the mark alleged in the Rachman Letter is merely descriptive; (ii) Harpo has, through acts and omissions, abandoned any rights they may have had in the alleged mark; and (iii) Harpo is asserting non-existing rights in an unfair attempt to inhibit, impair and interfere with Mutual s legitimate right to use in commerce one or more Aha Formatives. 7

8 An Actual Case Or Controversy Exists 31. An actual case and controversy exists between Plaintiff and Defendants arising from Defendants imminent threat to initiate litigation. 32. Mutual has a right to certainty with respect to its advertising plans and business activities so that it is not left guessing as to what actions Defendants will take or when. COUNT I DECLARATORY JUDGMENT 33. Mutual repeats and realleges each of the allegations in the preceding paragraphs previously pled in this Complaint as if each were set forth in full herein. 34. Mutual seeks a declaration under 28 U.S.C and 2202 that its use of OFFICIAL SPONSOR OF THE AHA MOMENT or various and sundry aha formatives, including aha story, aha moments, aha features, aha network, aha tour, aha newsletter, the aha times and aha on the web in conjunction with a its advertising and marketing does not infringe or violate the Trademark Laws of the United States, including 15 U.S.C. 1125, or constitute a false or misleading designation of origin, description of fact or representation of fact that is likely to cause confusion, to cause mistake, or to deceive as to the affiliation, connection or association of Mutual with Harpo. COUNT II DECLARATORY JUDGMENT 35. Mutual repeats and realleges each of the allegations in the preceding paragraphs previously pled in this Complaint as if each were set forth in full herein. 36. Plaintiff seeks a declaration under 28 U.S.C and 2202 that its use of OFFICIAL SPONSOR OF THE AHA MOMENT or various and sundry aha formatives, including aha story, aha moments, aha features, aha network, aha tour, aha 8

9 newsletter, the aha times and aha on the web in conjunction with its advertising and marketing does not infringe or violate the alleged rights of Harpo under the trademark, anti-dilution, or other laws of Nebraska or any other state, and does not constitute unfair competition with Defendants under any common law or statutory right of Nebraska or constitute a false or misleading designation of origin, description of fact or representation of fact that is likely to cause confusion, to cause mistake, or to deceive as to the affiliation, connection or association of Mutual with Harpo. COUNT III DECLARATORY JUDGMENT 37. Mutual repeats and realleges each of the allegations in the preceding paragraphs previously pled in this Complaint as if each were set forth in full herein. 38. Mutual seeks a declaration under 28 U.S.C and 2202 that its use of OFFICIAL SPONSOR OF THE AHA MOMENT or various and sundry aha formatives, including aha story, aha moments, aha features, aha network, aha tour, aha newsletter, the aha times and aha on the web in conjunction with its advertising and marketing does not infringe or violate the alleged rights of Harpo under Neb. Rev. Stat , et seq, any common law or statutory right of Nebraska or any other state as to publicity, sponsorship, or privacy. COUNT IV DECLARATORY JUDGMENT 39. Mutual repeats and realleges each of the allegations in the preceding paragraphs previously pled in this Complaint as if each were set forth in full herein. 40. Mutual seeks a declaration under 28 U.S.C and 2202 that Mutual is the owner of all rights, title and interest in the slogan OFFICIAL SPONSOR OF THE AHA 9

10 MOMENT for insurance underwriting in the field of life, health, disability, dental, long-term care, Medicare supplement, critical illness, accidental death and dismemberment, hospital income, annuities, retirement plans and mutual funds. COUNT V COMMON LAW UNFAIR COMPETITION 41. Mutual repeats and realleges each of the allegations in the preceding paragraphs previously pled in this Complaint as if each were set forth in full herein. 42. Defendants activities as stated herein constitute unfair competition in violation of the common law of the state of Nebraska. 43. Upon information and belief, Defendants wrongful activities have caused, and unless enjoined by this Court will continue to cause, irreparable injury and other damage to Mutual s business, reputation and goodwill in the industry. Mutual has no adequate remedy at law. COUNT V NEBRASKA DECEPTIVE TRADE PRACTICE ACT 44. Mutual repeats and realleges each of the allegations in the preceding paragraphs previously pled in this Complaint as if each were set forth in full herein. 45. Defendants activities as stated herein constitute unlawful acts and practices in the conduct of its trade and business in violation of Neb. Rev. Stat Upon information and belief, Defendants wrongful activities have caused, and unless enjoined by this Court will continue to cause, irreparable injury and other damage to Mutual s business, reputation and goodwill in the industry. Mutual has no adequate remedy at law. 10

11 WHEREFORE, Plaintiff Mutual of Omaha Insurance Company prays for relief as follows: 1. A declaration that use by Mutual of OFFICIAL SPONSOR OF THE AHA MOMENT or various and sundry aha formatives, including aha story, aha moments, aha features, aha network, aha tour, aha newsletter, the aha times and aha on the web in conjunction with its advertising and marketing does not constitute infringement of any rights of, or any form of unfair competition with, Defendants; 2. A declaration that Mutual is the owner of all rights, title and interest in OFFICIAL SPONSOR OF THE AHA MOMENT for insurance underwriting in the field of life, health, disability, dental, long-term care, Medicare supplement, critical illness, accidental death and dismemberment, hospital income, annuities, retirement plans and mutual funds; 3. An injunction prohibiting further acts of harassment and threats by Defendants against Mutual; 4. An injunction prohibiting further interference with Mutual s businesses, including its advertising and promotional campaigns described above; 5. An award of costs and reasonable attorneys fees incurred in this action; 6. Judgment on Counts I through VI above; 7. Such other and further relief as the Court deems just and proper; and 8. A trial in Omaha for all of its claims. 11

12 Dated this 22nd day of April, MUTUAL OF OMAHA INSURANCE COMPANY, Plaintiff By s/ John P. Passarelli John P. Passarelli #16018 James M. Sulentic #19610 Kutak Rock LLP 1650 Farnam Street Omaha, NE Telephone (402) Facsimile (402) and Warren E. Olsen, Pro Hac Vice application forthcoming Edmund J. Haughey, Pro Hac Vice application forthcoming Fitzpatrick, Cella, Harper & Scinto 975 F. Street, N.W. Suite 400 Washington, D.C Telephone (202) Facsimile (202)

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