IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF COLORADO

Civil Action No. 97-Z-1592

OPPEDAHL & LARSON,
Plaintiff,

v.

ADVANCED CONCEPTS, ROBERT A. WELCH, 
CODE TEAM - LBK, INC., GEORGE WILLIAMS,
PROFESSIONAL WEBSITE DEVELOPMENT,
DAVE DEAN, MSI MARKETING, INC., and 
INTERNET BUSINESS SERVICES,
Defendants.

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COMPLAINT

Statement of the Case

1. This is an action for federal unfair competition, federal dilution, common law unfair competition, and common law trademark infringement, and arises from the use of "OPPEDAHL" and "LARSON" on Internet web sites, wherein the usage enables the web sites to be identified as a result of a search for "OPPEDAHL" and "LARSON" despite their being no visible usage of "OPPEDAHL" and "LARSON" on the web sites.

The Parties

2. Plaintiff, Oppedahl & Larson ("the Firm") is a New York Partnership authorized to do business in the State of Colorado, and practices law in Summit Country, Colorado, in the area of patents, trademark and copyright law at a business address of 611 Main Street, P.O. Box 5540, Frisco, Colorado 80443. Plaintiff maintains a web site in the Internet with an address ofpatents.com, which provides information to the public in the field of intellectual property law.

3. On information and belief, defendant Advanced Concepts ("AC") is an unincorporated entity having an office at 124 Clubview Drive, Levelland, TX 79336-6304 and having a mailing address at P.O. Box 16248, Lubbock, TX 79490-6248. On further information and belief, defendant AC owns the Internet domain name "advancedconcepts.com" and operates the web site "www.advancedconcepts.com" (the "AC website").

4. On information and belief, defendant Robert A. Welch ("Welch") has an office at 124 Clubview Drive, Levelland, TX 79336-6304, and has a mailing address at P.O. Box 830, Levelland, TX 79336-0830. On further information and belief, defendant Welch is the administrative contact for the "advancedconcepts.com" domain name.

5. On information and belief, defendant Code Team - LBK, Inc. ("Codeteam") is or was a Texas corporation having an address at 5605 45th Street, Lubbock, TX 79414-1212. On further information and belief, defendant Codeteam owns the Internet domain name "codeteam.com" and operates the web site "www.codeteam.com" (the "CT website").

6. On information and belief, defendant George Williams ("Williams") has an address at 5605 45th Street, Lubbock, TX 79414-1212. On further information and belief, defendant Williams is the administrative contact for the domain name "codeteam.com".

7. On information and belief, defendant Professional Website Development ("PWD") is an unincorporated entity having an address at 8258 Veterans Highway, Suite 3A, Millersville, MD 21108 and having a mailing address at P.O. Box 1365, Millersville, MD 21108. On further information and belief, defendant PWD is the owner of the Internet domain name "prowebsite.com" and operates the web site "prowebsite.com" (the "PW website").

8. On information and belief, defendant Dave Dean is an individual having an address of 8258 Veterans Highway, Suite 3A, Millersville, MD 21108 and having a mailing address at P.O. Box 1365, Millersville, MD 21108. On further information and belief, defendant Dave Dean is the administrative contact for the domain name "prowebsite.com".

9. On information and belief, defendant MSI Marketing, Inc. ("MSI") is a Maryland corporation having an address at 8258 Veterans Highway, Suite 3A, Millersville, MD 21108. On further information and belief, defendant MSI hosts the AC, CT and PW websites and provides Internet connectivity to each of these websites.

10. On information and belief, defendant Dave Dean is the coordinator for defendant MSI.

11. On information and belief, defendant Internet Business Services ("IBS") is an unincorporated entity having an address at 8258 Veterans Highway, Suite 3A, Millersville, MD 21108. On further information and belief, defendant IBS provides name service for the AC, CT and PW websites. On information and belief defendant IBS provides name service for the "advancedconcepts.com," "codeteam.com," and "prowebsites.com" domain names.

Jurisdiction

12. The First and Second Causes of Action arise under the United States Trademark (Lanham) Act of 1946, as amended, 15 U.S.C. §§ 1051-1127. Jurisdiction in this Court is proper pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338.

13. The Third and Fourth Causes of Action arise under Colorado common law and are based upon the same operative facts as the First Cause of Action. Jurisdiction in this Court is proper pursuant to 28 U.S.C. §§ 1338(b) and 1367.

Venue

14. Venue is proper in this judicial district pursuant to 28 U.S.C. §§ 1391(b) and (c).

First Cause of Action

(Federal Unfair Competition)

15. Plaintiff realleges and incorporates herein by reference the allegations of paragraphs 1 through 14 of the Complaint as set forth above.

16. The Internet is a worldwide network of computers through which businesses and individuals can send nearly-instantaneous email (electronic mail) communications and other information of various kinds.

17. Sending, receiving or obtaining information on the Internet is keyed to a piece of information referred to as a domain name. Typically, email communications on the Internet are addressed using addresses having a form such as jones@company.com. The part of the address after the "@" sign is called the "domain name." The domain name is a unique identifier which designates a set of computers on the Internet. The address is pronounced jones at company dot com. The part of the address after the dot, or period, is a general indicator of the type of network; and the .com designation indicates a commercial network. While the name preceding the domain name is unique to a single user, many users can share a single domain name.

18. Domain names are also used to identify World Wide Web sites using addresses in a form such as www.company.com. The address is pronounced www dot company dot com. When an address is given in the form of http://www.company.com or http://www.company.com/page.html, this is referred to as a URL (Universal Resource Locator), and if the page.html portion is given, this identifies a specific file (or page) on the web site. A Word Wide Web site provides a method by which a party may publish information about a variety of different topics. Information on a typical World Wide Web site may then retrieved by anyone in the world who has access to the Internet.

19. The number of World Wide Web site has proliferated in recent years, which has increased the difficulty for someone connected to the Internet to identify web sites which may be of particular interest. To address this problem, several commercial search services have been established. These search services use "spiders" to automatically identify new web sites, and then index the contents of the web sites for ease of identification. Examples of such search services are www.altavista.digital.com, www.lycos.com, www.infoseek.com, and www.yahoo.com. Someone looking for a web site goes to the web site of the search service, and then sets forth the terms to be searched, and the search service then returns addresses of web sites which meet the search criteria.

20. From about July 1, 1995 to the present, Oppedahl & Larson has offered to the public a World Wide Web site from which it provides information in the area of intellectual property law. The address of Oppedahl & Larson's web site is www.patents.com, and a copy of the material initially viewed upon going to the site ("the home page") is attached as Exhibit A.

21. The trademark "OPPEDAHL & LARSON" has been extensively and continually promoted internationally and within the United States since at least the founding of the Firm. Substantial amounts of time, effort, and money have been expended in ensuring that the public associates the mark "OPPEDAHL & LARSON" exclusively with plaintiff. As a result of this time, effort, and money invested, plaintiff has achieved a reputation for providing quality legal services and information in the field of intellectual property. Plaintiff enjoys a substantial demand for and use of such services as well as tremendous goodwill in its trademark.

22. By virtue of the extensive scope of the consumer uses and the substantial sums spent to promote plaintiff's "OPPEDAHL & LARSON" mark, said name and mark has acquired a strong secondary meaning in the minds of the public and business community, and now uniquely identify plaintiff's services. Through widespread and favorable public acceptance and recognition, the mark "OPPEDAHL & LARSON" has become an asset of incalculable value as a symbol of plaintiff's services and goodwill.

23. During early July, 1997, plaintiff ran a search on the terms "OPPEDAHL" and "LARSON" in the www.altavista.digital.com search service, which identified, inter alia, the following URLs as containing these terms:

These URLs are contained on three web sites, to wit, prowebsite.com,www.codeteam.com, and www.advancedconcepts.com. One of the pages of the search report from Altavista is attached hereto as Exhibit B.

24. Plaintiff then viewed these URLs to observe the reference to "OPPEDAHL" and "LARSON," however, Plaintiff was unable to find these terms at the URLs using a conventional web browser. Looking at the underlying source document which generates the images viewed with a conventional web browser, Plaintiff was able to find the references to "OPPEDAHL" and "LARSON."

25. A true and correct copy of the page http://prowebsite.com/server.html from the PW web site as viewed through a web browser is attached as Exhibit C, and a true and correct copy of the underlying source document for this page is attached as Exhibit D. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

26. A true and correct copy of the page http://www.codeteam.com/msiorder.htm from the CT web site as viewed through a web browser is attached as Exhibit E, and a true and correct copy of the underlying source document for this page is attached as Exhibit F. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

27. A true and correct copy of the page http://www.advancedconcepts.com/website.html from the AC web site as viewed through a web browser is attached as Exhibit G, and a true and correct copy of the underlying source document for this page is attached as Exhibit H. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

28. A true and correct copy of the page http://www.advancedconcepts.com/ordrblnk.html from the AC web site as viewed through a web browser is attached as Exhibit I, and a true and correct copy of the underlying source document for this page is attached as Exhibit J. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

29. A true and correct copy of the page http://www.advancedconcepts.com/examples.html from the AC web site as viewed through a web browser is attached as Exhibit K, and a true and correct copy of the underlying source document for this page is attached as Exhibit L. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

30. A true and correct copy of the page http://www.advancedconcepts.com/ from the AC web site as viewed through a web browser is attached as Exhibit M, and a true and correct copy of the underlying source document for this page is attached as Exhibit N. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

31. A true and correct copy of the page http://www.advancedconcepts.com/products.html from the AC web site as viewed through a web browser is attached as Exhibit O, and a true and correct copy of the underlying source document for this page is attached as Exhibit P. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

32. A true and correct copy of the page http://www.advancedconcepts.com/whois.html from the AC web site as viewed through a web browser is attached as Exhibit Q, and a true and correct copy of the underlying source document for this page is attached as Exhibit R. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

33. A true and correct copy of the page http://www.advancedconcepts.com/domain.html from the AC web site as viewed through a web browser is attached as Exhibit S, and a true and correct copy of the underlying source document for this page is attached as Exhibit T. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

34. A true and correct copy of the page http://www.advancedconcepts.com/domregis.html from the AC web site as viewed through a web browser is attached as Exhibit U, and a true and correct copy of the underlying source document for this page is attached as Exhibit V. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

35. A true and correct copy of the page http://www.advancedconcepts.com/vserfea.html from the AC web site as viewed through a web browser is attached as Exhibit W, and a true and correct copy of the underlying source document for this page is attached as Exhibit X. On information and belief, this page contains the words "Oppedahl" and "Larson" eight times each, hidden from view.

36. Based on an evaluation of the underlying source documents, Plaintiff has determined that the URLs on defendants' web sites are using Plaintiff's "OPPEDAHL" and "LARSON" marks to erroneously identify to search services that these URLs are identifying services provided by Plaintiff.

37. Notwithstanding plaintiff's well-known and prior use of, and prior statutory and common-law rights in, the marks "OPPEDAHL & LARSON," defendants, without the consent of plaintiff, have adopted, used and caused to be used in interstate commerce, and continues to use and cause to be used, the substantially identical mark in connection with identifying the source of the content of its web pages.

38. Such use by defendants of web pages bearing a substantially identical mark to plaintiff's mark "OPPEDAHL & LARSON" is misleading and is likely to cause confusion and mistake, and to deceive the public into believing falsely that defendants' web pages are connected with and/or sponsored or authorized by Plaintiff, when in fact defendants have no connection whatsoever with Plaintiff in regard to such web pages.

39. Defendants' misleading use of a mark substantially identical to the mark "OPPEDAHL & LARSON" constitutes false advertising, false designation of origin, and false representation in and affecting interstate commerce in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).

40. As a proximate result of the acts of defendants as alleged herein, Plaintiff has suffered and will continue to suffer great damage to its business, goodwill, reputation, and profits.

41. Plaintiff has no adequate remedy at law against this unfair competition. Unless defendants are preliminarily and permanently enjoined by this Court, plaintiff will continue to suffer irreparable harm.

Second Cause of Action

(Federal Dilution)

42. Plaintiff realleges and incorporate herein by reference the allegations of paragraphs 1-37 and 40-41 of the Complaint as set forth above.

43. As a direct result of plaintiff's long and extensive experience, care, and skill in producing and marketing legal services and providing information on intellectual property law under the mark "OPPEDAHL & LARSON," plaintiff's mark has become famous.

44. Defendants, by using a confusingly similar trademark, are misleading the public into believing that their services are connected with Plaintiff's business. On information and belief, the defendants willfully intended to trade on the reputation of Oppedahl & Larson or to cause dilution of the "OPPEDAHL & LARSON" mark.

45. Such acts by defendants are likely to deprive plaintiff of the benefit of the goodwill attached to the mark "OPPEDAHL & LARSON," injure plaintiff's business reputation, and dilute the distinctive quality of plaintiff's trademark in violation of 15 U.S.C. § 1125(c).

46. As a proximate result of the acts of defendants as alleged herein, plaintiff has suffered and will continue to suffer damage to its business, goodwill, and reputation.

47. Plaintiff has no adequate remedy at law against this dilution of and injury to business reputation. Unless defendants are enjoined by this Court, plaintiff will continue to suffer irreparable harm.

Third Cause of Action

(Unfair Competition - Colorado Common Law)

48. Plaintiff realleges and incorporates herein by reference the allegations of paragraphs 1-38 the Complaint as set forth above.

49. Plaintiff's mark "OPPEDAHL & LARSON" is inherently distinctive and has acquired a strong secondary meaning.

50. Defendants' wrongful use of a substantially identical and therefore confusingly similar trademark as alleged herein is likely to deceive the public into believing falsely that there is a connection between plaintiff and defendants. Defendants have unfairly competed with plaintiff in violation of the Colorado common law.

51. As a proximate result of the acts of defendants as alleged herein, plaintiff has suffered and will continue to suffer great damage to its business, goodwill, and reputation.

52. Plaintiff has no adequate remedy at law against this unfair competition. Unless defendants are enjoined by this Court, plaintiff will continue to suffer irreparable harm.

53. In acting as alleged herein, defendants have acted with oppression, fraud, and malice toward plaintiff. Plaintiff is therefore entitled to an award of punitive damages for the sake of example and by way of punishing defendants.

Fourth Cause of Action

(Trademark Infringement - Colorado Common Law)

54. Plaintiff realleges and incorporate herein by reference the allegations of paragraphs 1-38 and 51-53 of the Complaint as set forth above.

55. Plaintiff has used the mark "OPPEDAHL & LARSON" for providing intellectual property information over the Internet for many years. Said mark has become extensively known and associated in the minds of the public with plaintiff's business and services.

56. Defendants have used the designation "OPPEDAHL" and "LARSON" in connection with their web pages that is confusingly similar to that created and used by plaintiff with intentional disregard of plaintiff's trademark rights. As a result of such acts, defendants are misleading the public into believing falsely that their web pages are connected with plaintiff's services, all in violation of the Colorado common law concerning the protection of trademarks.

57. As a proximate result of the acts of defendants as alleged herein, plaintiff has suffered and will continue to suffer damage to its business, goodwill, and reputation.

58. Plaintiff has no adequate remedy at law for the infringements of the mark "OPPEDAHL & LARSON" alleged herein. Unless defendants are enjoined by this Court, plaintiff will continue to suffer irreparable harm.

59. In acting as alleged herein, defendants have acted with oppression, fraud, and malice toward plaintiff. Plaintiff is therefore entitled to an award of punitive damages for the sake of example and by way of punishing defendants.

WHEREFORE, Plaintiff prays for relief as follows:

  1. That defendants, their officers, agents, servants, employees and representatives and all other persons, firms or corporations in active concert or participation with them, be preliminarily and thereafter permanently enjoined and restrained from: (1) using in any manner in connection with any of their web pages, or in connection with any advertising or promotions of such web pages, the names and trademarks "OPPEDAHL," "LARSON," and "OPPEDAHL & LARSON" and any colorable imitation thereof; and (2) doing any act or thing calculated or likely to cause confusion or mistake in the minds of members of the public or the trade, or prospective users of defendants' services, as to the source of services provided, produced, distributed, sold or offered for sale thereby, or likely to deceive members of the public or the trade, or prospective purchasers, into believing that there is some connection between defendants' and plaintiff or that defendants' web pages are being produced, distributed, sold or offered for sale with plaintiff's authorization;
  2. That defendants, pursuant to 15 U.S.C. § 1116(a), be directed to file with this Court and serve upon plaintiff within thirty (30) days after entry of the injunction, a report in writing under oath setting forth in detail the manner and form in which they have complied with the injunction;
  3. That defendants, pursuant to 15 U.S.C. § 1118, be ordered to deliver up for destruction all media, packages, wrappers, receptacles, and articles in their possession bearing the mark "OPPEDAHL," "LARSON" and/or "OPPEDAHL & LARSON," or any reproduction, counterfeit, copy, or colorable imitation thereof, and all plates, molds, matrices, and other means of making the same;
  4. That defendants account for and pay over to plaintiff all of the profits realized by defendants, or others acting in concert or participation with defendant, from the sale and distribution of their services in connection with the unauthorized use of the marks "OPPEDAHL," "LARSON" and/or "OPPEDAHL & LARSON," and defendants' unfair methods of competition as alleged herein;
  5. That plaintiff recover its damages sustained as a result of defendants' unfair competition and infringement of plaintiff's marks;
  6. That plaintiff be awarded three times defendants' profits or three times plaintiff's damages, whichever is greater, together with its reasonable attorneys' fees pursuant to 15 U.S.C. §§ 1117(a) and (b);
  7. The plaintiff be awarded punitive damages pursuant to Colorado common law.
  8. That plaintiff recover the costs of this action; and
  9. That plaintiff be granted such other and further relief as the Court deems just and proper.

OPPEDAHL & LARSON

Dated: July 23, 1997

Carl Oppedahl
Oppedahl & Larson
611 Main Street
P.O. Box 5540
Frisco, Colorado  80443-5540
(970) 513-9950
Fax (970) 513-9948 
Plaintiff

Of Counsel:

Marina T. Larson
Stanley D. Ference III
Oppedahl & Larson
1992 Commerce Street, Suite 309
Yorktown Heights, New York  10598
(914) 245-3252
Fax (914) 962-4330

Address of plaintiff:

Oppedahl & Larson
611 Main Street
P.O. Box 5540
Frisco, Colorado  80443-5540

This page is http://www.patents.com/ac/complain.htm

Page updated July 25, 1997

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