In The
United States District Court
For the Northern District of Illinois
Eastern Division

Civil Action File
No. 96C5105

URANTIA FOUNDATION, an Illinois
Non-profit trustt,
Plaintiff,
vs.

FIFTH EPOCHAL FELLOWSHIP
CORPORATION, an Illinois
non-profit corporation,
UVERSA PRESS, an Illinois
non-profit corporation, and
JESUSONIAN FOUNDATION, a
Colorado non-profit corporation,

Defendants.

8/15/96


COMPLAINT

COMES NOW plaintiff URANTIA Foundation and files the following complaint against defendants Fifth Epochal Fellowship Corporation, Uversa Press, and Jesusonian Foundation.

Parties and Jurisdiction

Plaintiff URANTIA Foundation (the "Foundation") is a non-profit trust existing under the laws of the State of Illinois.

Defendant Fifth Epochal Fellowship ("FEF") is a non-profit corporation existing under the laws of the State of Illinois. FEF may be served with the summons and complaint by personal service upon its registered agent, Gloriann Harris, at 529 W. Wrightwood, Chicago, Illinois 60614-1794.

Defendant Uversa Press ("Uversa") is a non-profit corporation existing under the laws of the State of Illinois. Uversa may be served with the summons and complaint by personal service upon its registered agent, John W. Hales, at 529 W. Wrightwood Avenue, Chicago, Illinois 60614-1794.

Defendant Jesusonian Foundation is a non-profit corporation existing under the laws of the State of Colorado. The Jesusonian Foundation also does business using the trade name "Good Cheer Press" ("Good Cheer"). The Jesusonian Foundation and "Good Cheer Press" may be served with the summons and complaint by personal service upon their registered agent, Paula J. Thompson, at 4699 Nautilus Court, Suite 304, Boulder, Colorado 80301.

This Court possesses jurisdiction over the subject matter of this action pursuant to 15 U.S.C., Sections 1331, 1332 and 1338 (a), because this case arises under the Copyright Act, 17 U.S.C., Sections 101, et seq., and the Lanham Act, 15 U.S.C., Sections 1051, et seq. This Court possesses supplemental jurisdiction over all state law claims asserted herein pursuant to 28 U.S.C. Section 1367.

Venue is proper under 28 U.S.C. Section 1391 (b) because a substantial part of the events or omissions giving rise to the claims asserted herein occurred, and a substantial part of the injury took place and continues to take place, in this judicial district, and defendants FEF and Uversa reside within this judicial district.

Plaintiff's Marks and Copyright

Beginning in the early 1950's, the Foundation adopted and commenced use of the name "URANTIA Foundation," and the trademarks and service marks "URANTIA," "URANTIAN" and a symbol of three blue concentric circles to identify its goods and services. Since its first use of its name and marks, the Foundation has continuously and extensively used its marks throughout the United States and elsewhere.

The Foundation has obtained the following four registrations in the United States Patent and Trademark Office for its "URANTIA" marks:

MARK

ID

DATE

GOODS/SERVICES

URANTIA

915,734

June 29, 1971, 
renewed June 29, 1991

Books

 

1,112,713

February 06, 1979

Printed Publications -- namely books, booklets, brochures, pamphlets, newsletters, bulletins, and leaflets, concerning educational, religious, or philosophical subjects.

 

1,089,942

April 18, 1978

Indicating Membership in a Social and Fraternal Organization.

 

948,104

November 28,1972, renewed November 29, 1992

Educational Services -- namely religious teaching.

Said registrations, true and correct copies of which are attached hereto as Exhibits "A" through "D," are owned by the Foundation, are valid and in full force and effect, and have become incontestable in accordance with 15 U.S.C. Sections 1065 and 1115.

As a result of the Foundation's long and extensive use of its name and its URANTIA marks, the name and marks have become well known as symbolizing the Foundation and its goods and services.

The Foundation is the owner of all right, title, and interest in and to the copyright in "The Urantia Book," having complied in all respects with the provisions of the copyright laws of the United States, 17 U.S.C. Section 101 et seq., and all applicable preceding copyright laws, and having registered and renewed its claim of copyright in the Copyright Office of the United States, as shown by the copies of Certificates of Registration A 216,389 and RE 152-055, true and correct copies of which are attached hereto as Exhibits "E" and "F."

By order dated February 27, 1995, a civil action captioned URANTIA Foundation v. Maaherra, Civ. 91-0325, the United States District Court for the District of Arizona held that the Foundation's renewal copyright in "The Urantia Book" is invalid.

The Foundation has appealed to the United States Court of Appeal for the Ninth Circuit (the "Ninth Circuit") from the decision holding that its renewal copyright in "The Urantia Book" is invalid. That appeal, which is captioned URANTIA Foundation v. Maaherra, 95-17093, is pending before the Ninth Circuit.

Defendant's Infringing Publication

From June 15, 1996, through June 17, 1996, the American Booksellers' Association ("ABA") Convention was held in Chicago, Illinois. The ABA Convention is an annual event at which book publishers can market their books to distributors and the general public.

The Foundation maintained a booth to market "The Urantia Book" at the ABA Convention, which is its most significant annual marketing event.

The defendants also had a booth at the ABA Convention to market their unauthorized version of "The Urantia Book," entitled "The Urantia Book -- A Revelation for Humanity," which is published by defendants FEF and Uversa and distributed by defendant Jesusonian Foundation d\b\a Good Cheer Press. The defendants did not identify their booth with the names of their organizations. Instead, they placed a sign at their booth which stated "The Urantia Book."

The defendant's marketing materials represent their unauthorized version of "The Urantia Book" as a "New Edition" with over 250,000 copies already sold and use their marketing materials to offer their unauthorized version of "The Urantia Book" for sale to distributors and the general public. The statement that over 250,000 copies have already been sold is false, deceptive, and misleading because the 250,000 book sales to which defendants' marketing materials refer are the total book sales made by the Foundation since 1955 when it first published "The Urantia Book."

The defendants' marketing materials also instruct purchasers to call a toll free telephone number, "1-888-2-URANTIA," to order the defendants' infringing version of "The Urantia Book." The defendants' use of this mnemonic toll free number also is intended to mislead consumers as to the origin of the defendants' goods because the defendants' use of the number infringes upon the Foundation's "URANTIA" marks and because the Foundation already possesses and uses a toll free number, "1-888-URANTIA."

Prior to FEF's publication of its unauthorized version of "The Urantia Book," the Trustees of the Foundation informed FEF that its version of "The Urantia Book" infringes on the Foundation's copyright in "The Urantia Book" and asked FEF not to publish it.

FEF refused the Foundation's requests and is publishing and selling its unauthorized version of "The Urantia Book." In doing so, FEF apparently relies upon the decision of the United States District Court for the District of Arizona referred to in paragraph 11 above.

Since the ABA Convention, The Foundation has requested that the defendants discontinue their use of the "1-888-2-URANTIA" toll free number and the misleading marketing materials distributed by the defendants at the ABA Convention, but, to the Foundation's knowledge, the defendants have not done so.

The case referenced in paragraph 12 above, in which the district court entered summary judgment invalidating the Foundation's renewal copyright in "The Urantia Book" without a full trial on the merits, is on appeal to the ninth circuit.

The Foundation is vigorously pursuing this appeal and believes that the Ninth Circuit will reverse the district court's decision which purports to declare the Foundation's renewal copyright in "The Urantia Book" to be invalid.

Defendant FEF has attempted to intervene as an amicus curiae party in the Ninth Circuit appeal in support of the defendant and appellee's attempts to invalidate the Foundation's copyright in that case. FEF has filed several briefs with the Ninth Circuit which attempt to argue the merits of that case.

The Foundation intends to file a motion asking the Court to stay all proceedings on Count IV of its complaint pending the outcome of its appeal to the Ninth Circuit.

Defendants' Acts of Unfair Competition Trademark Infringement and Trademark Dilution

At the ABA Convention, the defendants distributed handouts and other advertising materials which offered their version of "The Urantia Book" for sale to the general public. Attached to the Complaint as Exhibits "G" and "H" are true and correct copies of the advertising materials distributed by the defendants. These advertising materials and the defendants' unauthorized version of "The Urantia Book" itself represent the defendants' unauthorized version of the book as a "New Edition" with "over 250,000 copies already sold." The Foundation's version of "The URANTIA book," not the defendants' unauthorized version of the book, has sold over 250,000 copies. Thus, the representation of the defendants' regarding the number of books sold falsely suggests that the defendants' books are offered by the Foundation.

These materials also inform consumers that they can call a telephone number described as "888-2-URANTIA" in order to receive information about, or to order, the defendants' unauthorized version of "The Urantia Book."

The Foundation also possesses a toll free number, "888-URANTIA," which is likely to be confused by consumers with the "888-2-URANTIA" advertised by the defendants.

The defendants were aware of the Foundation's ownership of the "888-URANTIA" number and its URANTIA marks and intentionally procured their toll free number to be as close as possible to the Foundation's number and marks in order to confuse consumers and to lead them to believe that the defendants are affiliated with, or sponsored by, the Foundation, that the Foundation has authorized the defendants to use the "888-2-URANTIA" number, and that the Foundation endorses the sale of defendants' version of "The Urantia Book."

The defendants are not affiliated with, or sponsored by, the Foundation.

The Foundation has not authorized the defendants to use the "888-2-URANTIA" number or its URANTIA marks.

The Foundation does not endorse the sale of the defendants' unauthorized version of "The Urantia Book."

COUNT I -- TRADEMARK INFRINGEMENT

The Foundation realleges paragraphs 1-31 of this Complaint as if they were set forth fully herein.

The defendants' use of the Foundation's "URANTIA" trademark as part of the "888-2-URANTIA" toll free telephone number in connection with the sale of, and information concerning, their unauthorized version of "The Urantia Book" without the Foundation's authorization infringes the Foundation's exclusive rights in its federally registered trademarks in violation of 15 U.S.C. Section 1114(1), in that the public is likely to be confused, deceived, or mistaken regarding the source or sponsorship of the books offered for sale by the defendants. Such use of the Foundation's marks also infringes the Foundation's marks by leading th public to believe that the defendants are authorized by the Foundation to use the "888-2-URANTIA" number and to believe that the Foundation is the author of or has endorsed the defendants' books.

The infringements of the Foundation's marks by the defendants were and are willful and deliberate.

The defendants' conduct is causing the Foundation immediate and irreparable injury for which the Foundation has no adequate remedy at law.

The Foundation is entitled to recover monetary damages and its attorney's fees and costs of litigation in the manner specified by the Lanham Act, 15 U.S.C. Sections 1051, et seq.

COUNT II -- SECTION 43 OF THE LANHAM ACT AND RELATED STATE LAW UNFAIR COMPETITION CLAIMS

The Foundation realleges paragraphs 1-31 of this Complaint as if they were set forth fully herein.

The defendants have utilized the Foundation's marks so as to constitute a false designation of origin or description and to misrepresent the nature of their activities by erroneously and explicitly designating the books which they offer for sale as coming from, or connected with, the Foundation.

The defendants' acts are in violation of Section 43 of the Lanham Act, 15 U.S.C. Section 1125(a), and the related Illinois law of unfair competition, IL. ST. CH. 765 Section 1035/12. The Foundation is therefore entitled to recover monetary damages and its attorney's fees and costs of litigation in the manner provided by the Lanham Act, 15 U.S.C. Sections 1051, et seq., and IL. ST. CH. 765 Section 1035/12.

The defendants' conduct is causing the Foundation immediate and irreparable injury for which the Foundation has no adequate remedy at law.

COUNT III -- TRADEMARK DILUTION

The Foundation hereby realleges paragraphs 1-31 of this Complaint as if they were set forth fully herein.

The Foundation's marks have become recognized marks in the United States and elsewhere by reason of the Foundation's extensive and long-standing use thereof. The marks are highly distinctive of the Foundation's goods and services.

The defendants' use of the Foundation's marks in connection with their aforesaid activities is unconnected to the Foundation, is not sponsored by the Foundation, and is diluting the distinctive quality of the marks and causing injury to the Foundation in volation of the Federal Trademark Dilution Act, 15 U.S.C. Section 1125(c).

The defendants' conduct is causing the Foundation immediate and irreparable injury for which the Foundation has on adequate remedy at law.

COUNT IV -- COPYRIGHT INFRINGEMENT

The Foundation hereby realleges paragraphs 1-31 of this Complaint as if set forth fully herein.

In the event that the Ninth Circuit rules that the Foundation's renewal copyright in "The Urantia Book" is valid and in full force and effect, the publishing of the text of "The Urantia Book" in the defendants' version of the book constitutes copyright infringement in violation of 17 U.S.C. Section 101 et seq. Such violation entitles the Foundation to all relief authorized by 17 U.S.C. Section 101 et seq., including, inter alia, monetary damages,. attorney's fees, and permanent injunctive relief.

WHEREFORE, Plaintiff URANTIA Foundation requests the following relief:

(a) That the Court enter judgment in favor of the Foundation and against the defendants jointly and severally as to Counts I, II, and III of the Complaint.

(b) That the Court stay Count IV of the Complaint pending the decision of the United States Court of Appeals for the Ninth Circuit in Urantia Foundation v. Maahera, 95-17093, and, in the event that decision holds that the Foundation's renewal copyright in "The Urantia Book" is valid, enter judgment in favor of the Foundation and against the defendants as to Count IV of the Complaint.

(c) That the Court enter a preliminary injunction and a permanent injunction ordering the defendants to Cease and desist from using the toll free telephone number "888-2-URANTIA," to inform the necessary telephone companies that service to this number should be discontinued immediately, and to deliver up to the Court all infringing, misleading, and deceptive advertising materials, packaging, and labels for destruction upon the entry of said permanent injunction.

(d) That, in the event that the Ninth Circuit holds that the Foundation's renewal copyright in "The Urantia Book" is valid, the Court enter a permanent injunction pohibiting the defendants from publishing and selling "The Urantia Book -- A Revelation for Humanity," and that the defendants be ordered to deliver to the Court all copies of said book for destruction upon the entry of a permanent injunction.

(e) That the Court award the Foundation its monetary damages, attorney's fees, and costs of litigation against the defendants, jointly and severally, pursuant to Counts I, II, and IV of the Complaint.

(f) For such other relief as the Court deems just and proper. Respectfully submitted,

By:____________________
One of the Attorneys for
Plaintiff URANTIA Foundation
 
 
Dean Booth, Esq.
Attorney No. 90784444
Scott A. Wharton, Esq.
Attorney No. 90784440
 
SCHREEDER, WHEELER & FLINT
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