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IN THE UNITED STATES DISTRICT COURT FOR
AMENDED COMPLAINT Plaintiff AMERICA ONLINE, INC. ("AOL"), for its claim against Defendant AT&T Corp. ("AT&T") states and alleges as follows: NATURE OF THE CASE This is an action against Defendant AT&T for (a) its unauthorized appropriation, use, infringement, blurring, and tarnishment of AOL's world-famous common-law service marks YOU HAVE MAIL, YOU'VE GOT MAIL, mailbox logo, and IM, and (b) its unfair, infringing, and diluting uses of AOL's world-famous federally registered service mark, BUDDY LISTŪ. AT&T has used or is using AOL's marks in connection with the automatic e-mail notification and real-time chat components of AT&T's interactive computer services. AT&T's interactive computer service competes for subscribers with AOL's interactive computer service, and both the AT&T and AOL services include automatic e-mail notification and real-time chat components. On December 15, 1998, Defendant AT&T launched its unfair, infringing, and diluting uses of AOL's marks -- three days before the opening of a new blockbuster film, "You've Got [begin page 2] Mail," which, under license from AOL, makes extensive use of AOL's marks and logos (including AOL's famous YOU'VE GOT MAIL mark). Defendant's actions appear to have been taken not only to take advantage of the existing goodwill attendant to AOL's marks but also to reap the benefits of the popularity of this new film. JURISDICTION AND VENUE 1. This Court has jurisdiction over the subject matter of this action pursuant to 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331 and 1338, and has supplemental jurisdiction pursuant to 28 U.S.C. § 1367(a). 2. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) because the claim asserted by AOL against Defendant arose in this judicial district by virtue of Defendant's use of infringing and diluting "You Have lave Mail!," "I M Here," and "Buddy List" brands for automatic e-mail notification services and real-time chat services in this judicial district. Venue is also proper under 28 U.S.C. §1391(c) in that, on information and belief, Defendant is licensed to do business and is doing business in this judicial district. THE PARTIES 3. Plaintiff AOL is a corporation duly organized and existing under the laws of the State of Delaware and having its principal place of business at 22000 AOL Way, Dulles, Virginia 20166. 4. Defendant AT&T is, on information and belief, a corporation organized and existing under the laws of the State of New York and having its principal [begin page 3] place of business at 32 Avenue of the Americas, New York, New York 10013. BACKGROUND 5. This action is based on Defendant AT&T's unauthorized appropriation, use, blurring, and tarnishment of AOL's famous YOU HAVE MAIL, YOU'VE GOT MAIL, mailbox logo, IM, and BUDDY LISTS marks. 6. AOL operates the world's largest interactive online service (the "AOL Service"). More than fifteen million people subscribe to, and are members of, the AOL Service. For a basic monthly fee of $21.95, the AOL Service enables its members to disseminate and receive information by means of computer modem connections to AOL's vast computer network. The AOL Service also gives its members access to the Internet, which is a worldwide network of interconnected computer networks. AOL provides access to the Internet to more people than any other Internet access provider in the United States. 7. AOL was founded in 1985, and has grown to become the world's leading provider of interactive online services. AOL's success is due in large part to its successful marketing efforts, which have been based on AOL's investment of substantial amounts of capital and other resources in developing strong and distinctive brands for its services. [begin page 4] YOU HAVE MAIL, YOU'VE GOT MAIL, AND MAILBOX LOGO 8. For nearly a decade, AOL has been using YOU HAVE MAIL and YOU'VE GOT MAIL marks in connection with its automatic e-mail notification services for AOL Service members. In early 1997, AOL began using an old-fashioned U.S. mailbox (with a red flag that pops up when a user has mail) as a logo in connection with its automatic e-mail notification services. 9. AOL's YOU HAVE MAIL and YOU'VE GOT MAIL marks for automatic e-mail notification services have continuously appeared on the AOL Service since at least 1989. Whenever a member starts an online session and has new e-mail, the folksy, cheerful spoken words YOU'VE GOT MAIL (recorded by Elwood H. Edwards, Jr., in 1989) are immediately heard. At the same time that this voice sounds, a logo of an old fashioned U.S. mailbox with a red signal flag pointing upwards appears prominently on the member's computer screen above the phrase YOU HAVE MAIL. This same audio and visual display repeats itself whenever the member receives additional new mail during the course of an online session. Each of these three service marks (YOU HAVE MAIL, YOU'VE GOT MAIL, and the mailbox logo) announces the AOL member's arrival at the front door of the AOL Service. These prominent features of the AOL "welcome mat" have thereby become hallmarks of the entire AOL Service. 10. AOL has applied for U.S. federal trademark registrations YOU HAVE MAIL with mailbox design mark and YOU'VE GOT MAIL mark. [begin page 5] AOL's YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL marks are central to AOL's image as the leading provider of interactive online services and Internet access throughout the world. 12. AOL has extensively promoted and advertised its online services using its YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL marks worldwide, spending millions of dollars each year on such promotion and advertising. AOL's advertising has featured some or all of the YOU HAVE MAIL, mailbox design, and YOU'VE GOT MAIL marks since at least 1992. 13. For years, AOL and its YOU'VE GOT MAIL, mailbox logo, and YOU HAVE MAIL marks have been the subject of extensive media coverage in a wide variety of publications and broadcast media throughout the United States and abroad. A recent search of the ALLNEWS file on LEXIS revealed over 350 news articles since 1993 concerning the use of YOU'VE GOT MAIL, mailbox logo, and/or YOU HAVE MAIL marks by AOL. 14. By reason of the extensive promotion, advertising, media coverage, and the enormous number of persons who have received information about the AOL Service in connection with AOL's YOU'VE GOT MAIL, mailbox logo, and YOU HAVE MAIL marks -- since long before Defendant AT&T's acts complained of herein -- these marks have come to be recognized by the public as identifying AOL and the quality of its Service, and readily serve to identify and distinguish not only AOL's automatic e-mail notification component but the entire AOL Service in the public marketplace. [begin page 6] 15. AOL has continuously and vigorously preserved the strength of its YOU HAVE MAIL, YOU'VE GOT MAIL, and mailbox logo marks and has actively guarded against their infringement. BUDDY LISTŪ AND IM 16. BUDDY LISTS is the brand for a service provided by AOL that provides real-time chat between two or more persons who are simultaneously using the AOL Service. Using this service, members can also learn when pre-selected users are online and available for real-time chat. AOL has been providing this one-to-one real-time chat service continuously since early 1997. AOL and its members call the real-time chat component of the BUDDY LISTS service the "IM" (pronounced "eye em") feature. 17. AOL registered its BUDDY LISTŪ service mark (U.S. Reg. No. 2,167,048) on the Principal Register of the U.S. Patent and Trademark Office on June 23, 1998, for computer services; namely, providing multiple user access to computer networks and bulletin boards for the transfer and dissemination of a wide range of information. AOL's BUDDY LISTS mark has been and continues to be used for this purpose. 18. This registration remains in full force and effect. A copy registration for BUDDY LISTS is attached hereto as Exhibit A. 19. AOL has registered BUDDY LISTŪ as a trademark in Argentina, Ecuador, Honduras, Mexico, Nicaragua, Paraguay, Peru, and Taiwan. AOL has filed [begin page 7] applications for registration of BUDDY LISTŪ (in English, French, and German) with the European Community. 20. Both the BUDDY LISTS and IM marks are central to AOL's image as the leading provider of interactive services and Internet access throughout the world. 21. AOL has extensively promoted and advertised its real-time chat services associated with its BUDDY LISTS and IM marks worldwide, spending millions of dollars on such promotion and advertising. AOL's advertising has featured the IM and BUDDY LISTS marks since at least early 1997. 22. For more than two years, AOL and its BUDDY LISTS and IM marks have been the subject of extensive media coverage in a wide variety of publications and broadcast media throughout the United States and abroad. A recent search of the ALLNEWS file on LEXIS revealed over 400 news articles since 1997 concerning the use of IM and/or BUDDY LISTS marks by AOL. 23. By reason of the extensive promotion, advertising, media coverage, and the enormous number of persons who have received information about the real-time chat services provided by AOL on the AOL Service, AOL's IM and BUDDY LISTS marks -- since long before Defendant AT&T's acts complained of herein -- have been recognized by the public as identifying AOL and the quality of its services, and readily serve to identify and distinguish AOL's real-time chat services in the public marketplace. 24. AOL has continuously and vigorously preserved the strength of BUDDY LISTŪ and IM marks and has actively guarded against their infringement. AT&T'S SERVICES 25. Defendant AT&T provides Internet access to subscribers through its "AT&T WorldNet Service" for a monthly fee. On November 20, 1998, AT&T announced to its "AT&T WorldNet beta site members" that it was testing an "automatic e-mail notification" feature. (AT&T did not call the feature "You Have Mail!" in this announcement.) 26. On Tuesday, December 15, 1998, Defendant AT&T issued a press release stating that it had "added a You Have Mail! notification window that will pop up whenever a member visits the AT&T WorldNet home page." Defendant's press release also revealed a new "I M Here instant messaging technology .... Members can email the AT&T I M Here instant message software to their friends and then create a buddy list containing the online addresses for these people." Defendant AT&T announced a price increase in its basic monthly fee for its Internet access and other services in this press release (from $19.95 to $21.95). 27. AOL learned of AT&T's plan to offer a "You Have Mail!" branded automatic e-mail notification service and "I M Here" branded real-time chat service (with a "Buddy List" branded service) on or about Tuesday, December 15, 1998. 28. On Wednesday, December 16, 1998, AOL sent an e-mail to AT&T [begin page 9] trademark lawyer Michelle Farber, saying, "AOL has been using the YOU HAVE MAIL! (word) and YOU'VE GOT MAIL (word and sound) marks for nearly a decade. Applications to register these marks with the PTO and in a number of foreign countries are currently pending. AOL has used these marks as hallmarks of AOL's online service, on a broad range of merchandised products and in connection with Warner Brothers' 'You've Got Mail' movie which is being released this week." This e-mail also expressed AOL's concern over AT&T's adoption of an "I M Here" branded real-time chat service. Ms. Farber, on information and belief, received this e-mail. 29. As of Thursday, December 17, 1998, AT&T had launched its new automatic e-mail notification service, calling it a "'You Have Mail!' feature." The AT&T Web page describing this feature is entitled YOU HAVE MAIL! in large bold print, and the text on this page reads: "The 'You Have Mail!' feature provides an automatic e-mail notification when you visit the AT&T WorldNet Service home page. A pop-up window tells you how many messages are in your e-mail inbox and gives you easy access to our web-based e-mail interface. In addition, you're able to access other AT&T WorldNet Service functions and view the latest web site features. Using 'You Have Mail' does not affect your ability to use your e-mail software to download messages whenever you wish." When a user has mail, the AT&T pop-up window text reads: "Hi, [NAME]! You have 1 messages." The pop-up window mentioned by AT&T has a title bar that reads: "AT&T WorldNet Service -- You Have Mail." As of December 17, 1998, the public website promotion for the new service included the words "You Have Mail!" next to a picture of an old-fashioned U.S. mailbox. AT&T's description of its new service, using [begin page 10] AOL's YOU HAVE MAIL word mark and mailbox logo, was being made available worldwide via the Internet as of December 17, 1998. 30. On or before Thursday, December 17, 1998, AT&T also launched its new real-time chat service, calling it the "I M Here" service. The service has a "Buddy List" real-time chat component similar to AOL's BUDDY LISTS service. AT&T's description of its new real-time chat service, using AOL's IM and BUDDY LISTŪ marks (e.g., "The easiest way to request to add someone to your Buddy List is from an active Community in the I M Here Navigator window.") was being made available worldwide via the Internet as of December 17, 1998. 31. On Friday, December 18, 1998, AOL sent a letter via fax and certified mail to AT&T general counsel James Cicconi, demanding that AT&T cease and desist from using a "You Have Mail!" brand, old-fashioned U.S. mailbox logo, and IM brand in connection with its automatic e-mail notification service and real-time chat service. Mr. Cicconi, on information and belief, received this letter. 32. On Monday, December 21, 1998, AOL, having identified AT&T's misuse of AOL's BUDDY LISTS mark as a result of AOL's ongoing investigation of AT&T's website, wrote again to Mr. Cicconi. In this letter, AOL demanded that AT&T cease its infringing and diluting use of AOL's BUDDY LISTS mark. 33. On Friday, December 18, 1998, a new Warner Bros. movie entitle "You've Got Mail" opened nationwide. AOL has licensed its YOU HAVE MAIL word [begin page 11] mark, YOU'VE GOT MAIL spoken mark, mailbox logo, IM mark, and BUDDY LISTŪ mark to Warner Bros. for use in connection with this movie, and AOL's YOU HAVE MAIL word mark, YOU'VE GOT MAIL spoken mark, mailbox logo, IM mark, and BUDDY LISTŪ mark are frequently seen and heard in the film. Indeed, the trailer for the "You've Got Mail" movie features all three marks that are part of the distinctive welcome mat for the AOL Service. AOL has invested substantial advertising efforts in promoting the "You've Got Mail" film and these marks. 34. AT&T apparently attempted to take advantage of the publicity attending the opening of the Warner Bros. movie by using a YOU HAVE MAIL slogan as a brand for automatic e-mail notification services and IM and BUDDY LISTŪ brands for real-time chat services. 35. On or about Friday, December 18, 1998, apparently in response to AOL's cease and desist e-mail and letter, AT&T removed the old-fashioned U.S. mailbox logo from its "You Have Mail!" feature area of its website. The words "You Have Mail!," used as a brand, remain, as do the IM and BUDDY LISTŪ brands. 36. AT&T has refused to stop infringing and/or diluting AOL's YOU HAVE MAIL, YOU'VE GOT MAIL, IM, and BUDDY LISTŪ marks. Visitors to the AT&T WorldNet home page at www.att.net (whether or not they are AT&T WorldNet subscribers) are subjected to many references to the "You Have Mail!" feature and I M Here real-time chat service (and to AT&T's infringing use of the mark "Buddy List") on AT&T WorldNet Web pages. The words "You Have Mail!," "I M Here," and "Buddy [begin page 12] List' 'are clearly used as branding slogans for automatic e-mail notification services and real-time chat services and not as descriptive terms by AT&T. 37. AT&T is using "You Have Mail!," "I M Here," and "Buddy List" brands as identifiers for inferior automatic e-mail notification services and real-time chat services. 38. AOL's YOU HAVE MAIL, YOU'VE GOT MAIL, mailbox IM, and BUDDY LISTŪ marks for e-mail notification services and real-time chat services are extremely valuable to AOL. 39. Defendant AT&T's act of deliberately appropriating and tarnishing AOL's YOU HAVE MAIL brand, YOU'VE GOT MAIL brand, mailbox logo, IM brand, and BUDDY LISTŪ brand for its own use is clearly timed to conjure up in the minds of consumers the folksy, cheerful relationship between AOL and its subscribers promoted in the new Warner Bros. film, "You've Got Mail." Defendant AT&T's actions have caused and are causing irreparable harm to plaintiff AOL, in violation of federal and state laws governing trademark infringement, trademark dilution, and unfair competition. COUNT I 40. AOL repeats and realleges the allegations in paragraphs 1 through 39 above as if fully set forth herein. 41. AOL's YOU HAVE MAIL, mailbox logo, and YOU'VE GOT [begin page 13] MAIL marks are highly recognized and widely used in interstate commerce in the United States, as well as worldwide. Among other things, (a) the marks have acquired a high degree of distinctiveness; (b) AOL has used the YOU HAVE MAIL and YOU'VE GOT MAIL marks continuously for at least six years throughout the United States in connection with the AOL Service, including in AOL's automatic e-mail notification services; (c) AOL has used the mailbox logo continuously for almost two years throughout the United States in connection with the AOL Service and AOL's automatic e-mail notification services; (d) AOL has extensively advertised and publicized the marks for many years throughout the United States; (e) AOL has used the marks in a broad geographical trading area encompassing all of the states and territories of the United States, and abroad; and (e) the marks have an extremely high degree of recognition among the public, including on the Internet. 42. AOL's YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL marks are "famous" marks as defined by 15 U.S.C. § 1125(c) because of the marks' acquired distinctiveness in identifying AOL's online and Internet related services, their extensive worldwide use in conjunction with the AOL Service over the past six years, and the widespread advertising and publicity the marks have received in national and international media. 43. The acts of Defendant AT&T as described above are commercial uses in commerce that dilute and detract from the distinctiveness of the YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL marks, and severely tarnish them, with [begin page 14] consequent damage to AOL and the services and goodwill symbolized by these AOL marks, in violation of the Federal Trademark Dilution Act of 1996, codified at 15 U.S.C. § 1125(c). 44. Defendant AT&T's acts of willful trademark dilution have caused and are causing great and irreparable injury to AOL and its YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL marks and to the services and goodwill represented thereby, in an amount that cannot be ascertained at this time and, unless restrained, will cause further irreparable injury, leaving AOL with no adequate remedy at law. 45. By reason of the foregoing, AOL is entitled to injunctive relief against Defendant AT&T restraining further acts of trademark dilution and to recover attorneys' fees and any damages proven to have been caused by reason of Defendant AT&T's aforesaid acts of trademark dilution. COUNT II 46. AOL repeats and realleges the allegations in paragraphs 1 through 45 above as if fully set forth herein. 47. AOL's IM and BUDDY LISTS marks are highly recognized and widely used in interstate commerce in the United States, as well as worldwide. Among other things, (a) the marks have acquired a high degree of distinctiveness; (b) AOL has used the marks continuously for at least two years throughout the United States in [begin page 15] connection with the AOL Service and AOL's real-time chat services; (c) AOL has extensively advertised and publicized the marks throughout the United States; (d) AOL has used the marks in a broad geographical trading area encompassing all of the states and territories of the United States, and abroad; (e) BUDDY LISTS is a registered service mark on the Principal Register of the U.S. Patent and Trademark Office; and (f) the marks have an extremely high degree of recognition among the public, including on the Internet. 48. AOL's IM and BUDDY LISTS marks are "famous" marks as defined by 15 U.S.C. § 1125(c) because of the marks' acquired distinctiveness in identifying AOL's real-time chat services, their extensive worldwide use in conjunction with the AOL Service over the past two years, and the widespread advertising and publicity the marks have received in national and international media. 49. The acts of Defendant AT&T as described above are a commercial use in commerce that dilute and detract from the distinctiveness of the IM and BUDDY LISTS marks, and severely tarnish them, with consequent damage to AOL and the services and goodwill symbolized by these AOL marks, in violation of the Federal Trademark Dilution Act of 1996, codified at 15 U.S.C. § 1125(c). 50. Defendant AT&T's acts of willful trademark dilution have caused and are causing great and irreparable injury to AOL and its IM and BUDDY LISTS marks and to the services and goodwill represented thereby, in an amount that cannot be ascertained at this time and, unless restrained, will cause further irreparable injury, [begin page 16] leaving AOL with no adequate remedy at law. 51. By reason of the foregoing, AOL is entitled to injunctive relief against Defendant AT&T restraining further acts of trademark dilution and to recover attorneys' fees and any damages proven to have been caused by reason of Defendant AT&T's aforesaid acts of trademark dilution. COUNT III 52. AOL repeats and realleges the allegations in paragraphs 1 through 51 above as if fully set forth herein. 53. Defendant AT&T's use of the BUDDY LISTŪ mark as a brand for a feature of its real-time chat service constitutes a use in commerce that is likely to cause confusion and mistake and to deceive consumers as to the source or origin of the information services or products offered in connection with AT&T's use of a "Buddy List" brand. 54. Defendant AT&T's act of trademark infringement has caused and is causing great and irreparable injury to AOL and its BUDDY LISTŪ mark and to the services and goodwill represented thereby, in an amount that cannot be ascertained at this time. Unless this infringement is restrained, AT&T's use will cause further irreparable injury, leaving AOL with no adequate remedy at law. 55. AT&T's use of the BUDDY LISTŪ mark constitutes infringement [begin page 17] of AOL's federally-registered service mark in violation of Section 32 of the Lanham Act, 15 U.S.C. § 1114. 56. By reason of the foregoing, AOL is entitled to in injunctive relief against Defendant restraining further acts of infringement and to attorneys' fees and any damages proven to have been caused by reason of AT&T's aforesaid infringement of AOL's registered BUDDY LISTS mark. COUNT IV 57. AOL repeats and realleges the allegations in paragraphs 56 above as if fully set forth herein. 58. Defendant AT&T's use of a "You Have Mail!" brand in connection with its automatic e-mail notification service constitutes a use in commerce that is likely to cause confusion and mistake and to deceive consumers as to the source or origin of Defendant AT&T's automatic e-mail notification services. Defendant's use has a tendency to deceive or confuse consumers into believing that Defendant AT&T's automatic e-mail notification services are affiliated with AOL, are sponsored or approved of by AOL, or are otherwise associated with or authorized by AOL. 59. By engaging in the activities described above, Defendant AT&T has made and is making false, deceptive, and misleading statements constituting unfair competition, false representations, false designation of origin, and false advertising made [begin page 18] in connection with services distributed in interstate commerce in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 60. Defendant AT&T's acts of unfair competition and false advertising have caused and are causing great and irreparable injury to AOL and its YOU HAVE MAIL, mailbox logo, and YOU'VE GOT MAIL marks and to the services and goodwill represented thereby, in an amount that cannot be ascertained at this time and, unless restrained, will cause further irreparable injury, leaving AOL with no adequate remedy at law. 61. By reason of the foregoing, AOL is entitled to injunctive relief against Defendant AT&T, restraining further acts of unfair competition, false designation of origin, and false advertising, and to recover attorneys' fees and any damages proven to have been caused by reason of Defendant AT&T's aforesaid acts of unfair competition, false designation of origin, false representation, and false advertising. COUNT V 62. AOL repeats and realleges the allegations in paragraphs 1 through 61 above as if fully set forth herein. 63. Defendant AT&T's use of "I M Here" and "Buddy List" brands in connection with its real-time chat service constitutes a use in commerce that is likely to cause confusion and mistake and to deceive consumers as to the source or origin of [begin page 19] defendant AT&T's real-time chat services. Defendant's use has a tendency to deceive or confuse consumers into believing that defendant AT&T's real-time chat service is affiliated with AOL, is sponsored or approved of by AOL, or is otherwise associated with or authorized by AOL. 64. By engaging in the activities described above, defendant AT&T has made and is making false, deceptive, and misleading statements constituting unfair competition, false representations, false designation of origin, and false advertising made in connection with services distributed in interstate commerce in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 65. Defendant AT&T's acts of unfair competition and false advertising have caused and are causing great and irreparable injury to AOL and its IM and BUDDY LISTŪ marks and to the services and goodwill represented thereby, in an amount that cannot be ascertained at this time and, unless restrained, will cause further irreparable injury, leaving AOL with no adequate remedy at law. 66. By reason of the foregoing, AOL is entitled to injunctive relief against Defendant AT&T, restraining further acts of unfair competition, false designation of origin, and false advertising, and to recover attorneys' fees and any damages proven to have been caused by reason of Defendant AT&T's aforesaid acts of unfair competition, false designation of origin, false representation, and false advertising. [begin page 20] COUNT VI 67. AOL repeats and realleges the allegations in paragraphs 1 through 65 above as if fully set forth herein. 68. Defendant AT&T's use of a collection of AOL marks, including YOU HAVE MAIL, IM, and BUDDY LISTŪ as brands in connection with the automatic e-mail notification and real-time chat components of its interactive computer service constitutes a use in commerce that is likely to cause confusion and mistake and to deceive consumers as to the source or origin of Defendant AT&T's services. Defendant's use of this collection of marks create the overall impression that Defendant AT&T's interactive computer service and its automatic e-mail notification and real-time chat components are affiliated with AOL, are sponsored or approved of by AOL, or are otherwise associated with or authorized by AOL. 69. By engaging in the activities described above, Defendant AT&T has made and is making false, deceptive, and misleading statements constituting unfair competition, false representation, false designation of origin, and false advertising made in connection with services distributed in interstate commerce in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a). 70. Defendant AT&T's acts of unfair competition and false advertising have caused and are causing great and irreparable injury to AOL, its marks, and to the [begin page 21] services and goodwill represented thereby, in an amount that cannot be ascertained at this time and, unless restrained, will cause further irreparable injury, leaving AOL with no adequate remedy at law. 71. By reason of the foregoing, AOL is entitled to injunctive relief against Defendant AT&T, restraining further acts of unfair competition, false designation of origin, and false advertising, and to recover attorneys' fees and any damages proven to have been caused by reason of Defendant AT&T's aforesaid acts of unfair competition, false designation of origin, false representation, and false advertising. COUNT VII 72. AOL repeats and realleges the allegations of paragraphs 1 through 71 above as if fully set forth herein. 73. AOL's licensing relationship with Warner Bros., under which Warner Bros. has agreed to feature AOL's online services (and the brands associated with them) in the "You've Got Mail" film, was designed to result in economic benefit to AOL. 74. On information and belief, AT&T was aware of the AOL/Warner Bros. relationship prior to December 15, 1998, the date AT&T announced its "You Have Mail" branded e-mail notification service and "I M Here" (with use of the "Buddy List" mark) branded real-time chat service. 75. Because of AT&T's intentional misconduct in misappropriating AOL's individual marks and the overall impression created by those marks, there is a [begin page 22] reasonable certainty that AOL's return from its promotional efforts in connection with "You've Got Mail" has already been diminished and will be further greatly diminished, to AOL's injury. 76. By reason of the foregoing, AOL is entitled to injunctive relief against Defendant AT&T restraining further acts of interference with AOL's prospective economic advantage and to recover attorneys' fees and any damages proven to have been caused by reason of Defendant AT&T's aforesaid acts of interference. PRAYER FOR RELIEF WHEREFORE, AOL respectfully requests: 1. That Defendant AT&T, its agents, servants, employees, representatives, attorneys, subsidiaries, related companies, successors, assigns, and all others in active concert or participation with Defendant, be permanently enjoined and restrained:
2. That Defendant, its agents, servants, employees, representatives, attorneys, subsidiaries, related companies, successors, assigns, and all others in active concert or participation with Defendant, take affirmative steps to dispel such false impressions that heretofore have been created by Defendant AT&T's use of the YOU HAVE MAIL, YOU'VE GOT MAIL, mailbox logo, IM, or BUDDY LISTŪ marks. 3. That Defendant account to AOL for AT&T's profits arising from the foregoing acts of dilution, infringement, false advertising, false designation of origin, unfair competition, misappropriation, and tortious interference with economic advantage. [begin page 24] 4. That, pursuant to 15 U.S.C. § 1117(a), AOL be awarded for three times the greater of
5. That AOL have and recover its costs, including its reasonable attorneys' fees and disbursements in this action, pursuant to 15 U.S.C. § 1117(a). 6. That AOL be awarded punitive damages pursuant to the law of State of Virginia in view of AT&T's intentional and willful infringement of AOL's marks. 7. That AOL have such other and further relief as the Court may deem just and proper. [begin page 25] JURY DEMAND Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure and Local Rule 38, Plaintiff AOL demands a trial by jury on all of the issues so triable. Dated: January 19, 1999 Respectfully submitted,
LATHAM & WATKINS Everett C. Johnson, Jr. Attorneys for Plaintiff OF COUNSEL: Randall J. Boe (VSB No. 2791) [begin page 26] CERTIFICATE OF SERVICE I hereby certify that a true copy of the Amended Complaint was served this 19th day of January 1999 in the manner indicated: BY HAND DELIVERY James E. Rosini
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