Case 1:17-cv-05914-UA Document 1 Filed 08/04/17 Page 1 of 38

Jonathan D. Lupkin (JL 0792)
Michael B. Smith (MS 3281)
LUPKIN & ASSOCIATES PLLC
26 Broadway, 19th Floor
New York, NY 10004
Tel: (646) 367-2771
Fax: (646) 219-4870
jlupkin@lupkinassociates.com
msmith@lupkinassociates.com
Attorneys for Western New York Public Broadcasting Association
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
WESTERN NEW YORK PUBLIC
BROADCASTING ASSOCIATION,
a New York corporation,

Case No. 1:17-cv-5914

Plaintiff,
v.
RRKIDZ, INC., d/b/a LEVAR BURTON KIDS,
a Delaware corporation, LEVARDIS ROBERT
MARTYN BURTON, JR., an individual,
Defendant,
and
RAYMONDS CAPITAL, LLC, a Delaware
limited liability company,

COMPLAINT FOR (1) COPYRIGHT
INFRINGEMENT, (2) CONVERSION,
(3) CYBERSQUATTING, (4) BREACH
OF CONTRACT, (5) BREACH OF
THE IMPLIED COVENANT OF
GOOD FAITH AND FAIR DEALING,
(6) INTERFERENCE WITH
CUSTOMER RELATIONS, (7)
TRADEMARK INFRINGEMENT,
AND (8) DECLARATORY RELIEF

Nominal Defendant.
JURY TRIAL DEMANDED

Plaintiff Western New York Public Broadcasting Association (“WNED”), by its
undersigned attorneys, Lupkin & Associates PLLC, as and for its Complaint against defendants
RRKidz, Inc. d/b/a LeVar Burton Kids (“RRKidz”), Levardis Robert Martyn Burton, Jr. (“LeVar
Burton”), and Raymonds Capital LLC (“Raymonds Capital”) alleges the following based upon
personal knowledge with respect to its own acts and status, and upon information and belief with
respect to all other matters:

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Nature of the Dispute
1.

Reading Rainbow (the “RR Series”) is one of the longest-running and best-loved

children’s television series. The last episode of the RR Series aired in 2006, after changes in
federal funding for education depleted the revenue available for production of new episodes. The
Series continued to air in re-runs until 2009.
2.

The RR Series employed a consistent format throughout its 155 episodes. With

few—if any—exceptions, every episode:
a.

begins with a whimsical semi-animated sequence featuring children, books,
rainbows and butterflies over the theme song “Butterfly in the Sky,” composed
by Stephen Horelick (the “Intro”);

b.

is hosted by LeVar Burton, who typically speaks directly to the camera (the
“Host”);

c.

features a different children’s book, partially animated and read aloud—often by
a celebrity guest (the “Book”);

d.

includes one or two segments in which Mr. Burton visits a location, person,
event, etc. related to a theme from the book (the “Field Trips”);

e.

includes a segment featuring children talking about books they like (the
“Reviews”), introduced by Mr. Burton with the catchphrase, “…but you don’t
have to take my word for it” (the “Slogan”); and

f.
3.

ends with Mr. Burton saying, “I’ll see you next time” (the “Tagline”).
WNED, a PBS affiliate television station in Buffalo, New York, and a co-creator

of the series, owns the exclusive rights to Reading Rainbow and the associated intellectual
property (the “RR Intellectual Property”), including the copyrights in the RR Series episodes and

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various famous and distinctive trademarks such as READING RAINBOW, the Reading Rainbow
logo, and the slogan “…but you don’t have to take my word for it.” (collectively, the “RR
Marks”).1
4.

In late 2011, LeVar Burton’s newly-formed company, defendant RRKidz,

obtained a license from WNED to use the RR Intellectual Property (the “License Agreement”).2
As WNED’s licensee, RRKidz took over digital distribution of the RR Series and developed of a
Reading Rainbow-branded digital platform for the distribution of old and new Reading Rainbow
content (eventually called “Reading Rainbow Skybrary”). At no point has LeVar Burton ever
held, in his personal capacity, any rights in the RR Intellectual Property.
5.

By 2015, the relationship between the parties had soured to the point where

WNED chose to terminate the license. In this case, termination meant that many—but not all—of
the licensed rights reverted to WNED.
6.

The License Agreement gives RRKidz ownership of those elements of the

Reading Rainbow-branded products and services that it created independent of the RR
Intellectual Property. Accordingly, the agreement granted RRKidz a perpetual non-exclusive
license to continue exploiting such “hybrid” products and services post-termination, provided it
continued to pay royalties to WNED, and did not create any new products or services
incorporating RR Intellectual Property.
7.

RRKidz challenged WNED’s termination, and WNED and RRKidz have been

embroiled in contentious litigation arising out of that termination for the better part of two years.
The validity of WNED’s termination has yet to be fully adjudicated.

1

A table of RR Marks registered on the Principal Register in the United States Patent and
Trademark Office is attached hereto as Exhibit A.
2
A copy of the License Agreement is attached hereto as Exhibit B.
3

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8.

Until August 1, 2017, RRKidz conducted its business as if the License Agreement

had not been terminated. On August 1, 2017, near the close of discovery in that litigation,
RRKidz (1) purported to “terminate” the License Agreement, (2) purported to transfer the
exclusive right to distribute the RR Series to Raymonds Capital, a company owned by John
Raymonds (LeVar Burton’s longtime friend), to whom they secretly had pledged those rights in
exchange for $2.5 million, (3) moved the contents of the Reading Rainbow website at
readingrainbow.com to levarburtonkids.com, (4) rebranded Reading Rainbow Skybrary as
“LeVar Burton Kids Skybrary”; and (5) reduced the Reading Rainbow website to a single page
directing visitors to the LeVar Burton Kids website.
9.

As of the filing of this Complaint, RRKidz retains exclusive control over

WNED’s domains, social media accounts, and YouTube pages. It is not clear who, if anyone, is
administering the many sublicenses for distribution of the classic RR Series that RRKidz had
been managing prior to its abdication of that role. In addition, RRKidz claims exclusive
ownership of Reading Rainbow Skybrary, and is using the readingrainbow.com domain to
redirect consumers to its new “copycat” site, levarburtonkids.com.
10.

As a result of defendants’ actions, WNED has no meaningful access to Reading

Rainbow customers, no control over the distribution of the classic RR Series, and no revenue
from the exploitation of either the RR Series or Reading Rainbow Skybrary. At the same time,
defendants are exerting full control over the RR Intellectual Property, and using it to promote
Mr. Burton at the expense of WNED and Reading Rainbow.
11.

As WNED’s licensee, RRKidz had two privileges: the right to sell products and

services incorporating the RR Intellectual Property (i.e., Reading Rainbow Skybrary), and the
right to distribute episodes of the classic RR Series. Those rights came with concomitant

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obligations, not least of which was the obligation to protect and promote Reading Rainbow and
associated products and services for the benefit of WNED.
12.

RRKidz has tried for years to enjoy the privileges without assuming the

obligations. When all else failed, RRKidz (1) co-opted Reading Rainbow’s Internet presence,
content, and subscription service, slapped LeVar Burton’s name on them, and claimed exclusive
ownership; and (2) purported to hand over exclusive rights to the classic RR Series to LeVar
Burton’s longtime friend, an investor with no apparent experience or ability to successfully
manage the distribution of a television series.
Parties
13.

WNED is a New York not-for-profit educational group with its principal place of

business at Horizons Plaza, 140 Lower Terrace, Buffalo, New York.
14.

LeVar Burton is an individual residing in California and an officer of RRKidz.

Mr. Burton is an actor known for, among other things, his role as the host of Reading Rainbow.
15.

RRKidz is a Delaware corporation with its principal place of business at 101 S.

First Street, Suite 204, Burbank, California. RRKidz was co-founded in 2011 by LeVar Burton.
16.

Nominal defendant Raymonds Capital is a Delaware limited liability company

with its principal place of business at 5 Mason Hill Road, Warren, New Jersey.
Jurisdiction and Venue
17.

This Court has original subject matter jurisdiction over this matter pursuant to 28

U.S.C. § 1331 because this action arises under the laws of the United States, including the
Lanham Act, 15 U.S.C. §§ 1501 et seq. and the United States Copyright Act, 17 U.S.C. §§ 101 et
seq. This Court also has supplemental jurisdiction over the state law claims herein pursuant to 28
U.S.C. § 1367.

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18.

In addition, subject matter jurisdiction exists under 28 U.S.C. § 1332 because

there is complete diversity of citizenship between the parties, and the amount in controversy
exceeds $75,000.
19.

Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(2) because a

substantial part of the events or omissions giving rise to the claim occurred in this District.
Moreover, the agreement from which many of the claims herein arise out of or relate to provides:
All actions, proceedings or litigation arising from this Agreement shall be
instituted and prosecuted solely within [the State of New York].
20.

This Court has in personam jurisdiction over the defendants pursuant to FRCP

4(k) under New York State’s “long arm statute,” CPLR 302. Upon information and belief, each
of the defendants, including LeVar Burton, transacts business within this state and/or contracts to
supply goods or services in this state, has committed a tortious act causing injury to person or
property within this state, and committed tortious acts within the state.
21.

This Court also has in personam jurisdiction over RRKidz because RRKidz

expressly consented to the jurisdiction of this Court when it executed the License Agreement,
which provides, in relevant part:
The parties hereby consent to the jurisdiction of the…federal courts located in the
Southern District of New York as to any matter arising out of or relating to this
agreement.
Raymonds Capital similarly consented to the jurisdiction of this Court when it purported to
assume RRKidz’s rights under the License Agreement.

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LeVar Burton’s Public Campaign to “Bring Back” Reading Rainbow
22.

On or about February 18, 2009, LeVar Burton tweeted: “Want y’all to know that

I’m seriously moving forward with an idea for a new version of a Reading Rainbow like show.
Webisodes for adults.”3
23.

On or about February 11, 2010, LeVar Burton appeared during the keynote

presentation at Macworld Expo 2010, where he told the audience, in words or substance, he was
planning to bring Reading Rainbow back via the Internet later that year.4
24.

On or about March 19, 2010, LeVar Burton used his personal Twitter feed to

announce that “Reading Rainbow 2.0 is in th[e] works! Stay tuned for more info. But, you don’t
have to….”5
25.

At no time between February 2009 and August 2011 did Mr. Burton or any

person or entity associated with Mr. Burton have any rights in or to the RR Intellectual Property,
nor had WNED authorized Mr. Burton to promote any new Reading Rainbow content, product,
or service.
The License Agreement
26.

On or about August 23, 2011, two years after Mr. Burton began telling the public

he was going to “bring back” Reading Rainbow, RRKidz entered into the License Agreement,
pursuant to which WNED granted RRKidz the exclusive right to distribute existing episodes of
the RR Series in channels other than broadcast television, and to create and exploit new goods,

3

https://twitter.com/levarburton/status/1225549175
https://arstechnica.com/gadgets/2010/02/pogues-macworld-keynote-overcomes-skepticismentertains/
5
https://twitter.com/levarburton/status/10730167290
4

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products, and services using the RR Intellectual Property, in exchange for a 1% royalty (subject
to a guaranteed minimum annual payment).
27.

WNED expressly reserved for itself the right to produce new episodes of the RR

Series, or motion pictures featuring the RR Intellectual Property, but gave RRKidz the rights of
first negotiation and last refusal for the exploitation of such new content, and the opportunity to
share in the revenue from exploitation of WNED’s reserved rights by third parties.
28.

The License Agreement contemplated a “divide and conquer” approach to the

renascence of Reading Rainbow: While RRKidz and Mr. Burton focused on “the creation of
good, products and services” incorporating the RR Intellectual Property—specifically, a digital
“app” for children—WNED would focus on developing new Reading Rainbow episodes. Once
WNED launched the new series, both parties would share in the upside—the License Agreement
provides that RRKIDZ would share 50% of all proceeds from any license or transfer by WNED
of its reserved rights in the RR Intellectual Property after the first $2 million.
Reading Rainbow Skybrary
29.

On or about June 20, 2012, RRKidz launched a Reading Rainbow branded iPad

app. The app operated on a subscription model and featured children’s books, partially animated
and read aloud by Burton and others—i.e., the “Book” segment of the RR Series. The app also
featured RRKidz-produced “video field trips” designed to look and feel like the “Field Trip”
segments from the RR Series.

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30.

On or about May 28, 2014, RRKidz launched a Kickstarter6 campaign to raise

money to “Bring Reading Rainbow Back for Every Child, Everywhere!”7 RRKidz raised over
$6.5 million to “Bring Reading Rainbow Back,” and used that money to expand the app to
platforms other than the iPad.
31.

On or about May 13, 2015, RRKidz launched Skybrary by Reading Rainbow, a

subscription-based digital library of children’s books, “video field trips”, and clips from the
original RR Series that could be accessed on iPads, Android tablets, Kindle Fire tablets, or
through a web browser at www.readingrainbow.com/skybrary. The proceeds of the Reading
Rainbow Kickstarter campaign funded the development, production, marketing, and distribution
of Skybrary by Reading Rainbow (often referred to as Reading Rainbow Skybrary).
RRKidz Impedes WNED’s Ability to Develop a New Reading Rainbow Series
32.

Unfortunately, even as RRKidz rejoiced in the success of Reading Rainbow

Skybrary, it was actively undermining WNED’s efforts to develop a new series.
33.

During the Reading Rainbow Kickstarter campaign, Netflix’s Director of Content

Acquisition, Andy Yeatman, reached out to RRKIDZ about developing a new Reading Rainbow
series. Even though WNED had the exclusive right to develop new episodes of the series,
RRKidz engaged in extensive discussions with Netflix without WNED’s knowledge. By the time
WNED learned about those discussions, in late September 2014, RRKidz had already negotiated
the terms of a development and production deal with Netflix and brought in The Jim Henson
Company as a producer.

6

Kickstarter is a digital “crowdfunding” platform where individuals or organizations can set up a
webpage to solicit monetary contributions in exchange for various tiers of “rewards” to be
delivered once funding goals are met.
7
https://www.kickstarter.com/projects/readingrainbow/bring-reading-rainbow-back-for-everychild-everywh/
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34.

Even after RRKidz finally revealed the Netflix deal to WNED, RRKidz worked

assiduously to prevent WNED from participating in discussions with Netflix. RRKidz’s thenCEO, Mark Wolfe, told WNED’s CEO, Don Boswell, that RRKidz would come to WNED after
RRKidz and Netflix (and The Jim Henson Company) had reached a final agreement, to get
WNED’s approval. RRKidz’s intentional exclusion of WNED ensured that a deal would not be
consummated.
35.

While RRKidz was secretly negotiating with Netflix, WNED had been working

on the development of a new Reading Rainbow series. As part of those development efforts, Don
Boswell would occasionally seek advice or recommendations from an executive at PBS with
expertise in children’s programming. In or around April of 2015, WNED learned that
representatives of RRKidz had met with that executive and told her that a Reading Rainbow
series could not be made without LeVar Burton as the host. RRKidz failed to inform her that
RRKidz was not involved in WNED’s development efforts, and had no right to direct those
efforts. Mr. Burton knew at that time that WNED was not considering using Mr. Burton as the
host for the new series.
36.

The License Agreement created a licensing paradigm that, if followed, would

prevent WNED and RRKidz from working at cross-purposes. For example, the License
Agreement imposed explicit restrictions on the RRKidz’s distribution of audiovisual content.
Among other things, it prohibited RRKidz from distributing any single piece, or collection of
pieces, the total length of which was fifteen minutes or longer—i.e., content that might be
consumed in the same manner or method as an episode of a TV series, and thus cross over into
the territory reserved for WNED.

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37.

In or around March 2015, WNED learned that RRKidz was making available on

the Reading Rainbow YouTube channel collections of “video field trips” longer than 15 minutes
in duration. Concerned that the availability—for free—of episodic content similar to the original
RR Series episodes would discourage potential business partners from investing in new Reading
Rainbow content, WNED repeatedly asked RRKidz to conform the content available on
YouTube to the requirements of the License Agreement. RRKidz refused.
38.

On or about August 7, 2015, WNED provided RRKidz with formal notice of

breach of the License Agreement, triggering a 60-day period after which, if RRKidz had not
cured its breach, the License Agreement would terminate.
39.

Termination of the License Agreement pursuant to its terms would not fully sever

the relationship between the parties. Rather, it would permit RRKidz to continue exploiting
existing Reading Rainbow branded products (i.e., Reading Rainbow Skybrary) on a nonexclusive basis, while returning exclusive control of the RR Series to WNED. RRKidz would no
longer have the right to distribute episodes of the original RR Series, nor would it have the rights
of first negotiation and last refusal for, or the right to share in the revenue from, any new
episodes produced by WNED.
40.

Termination pursuant to the License Agreement also would return control of the

Reading Rainbow website, social media, domains, and YouTube pages to WNED.
RRKidz Sues WNED to Avoid the Restrictions in the License Agreement
41.

On February 5, 2016, after WNED and RRKidz agreed to several extensions of

the cure period, RRKidz filed a lawsuit against WNED seeking, among other things, a
declaration that “the Agreement is not and cannot be terminated by the WNED Termination
Notice or otherwise” and that WNED’s termination notice “constitutes a material anticipatory

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breach and repudiation…[which] excuses further performance under the Agreement by
RRKidz.” 8
42.

The relief RRKidz sought (and, paradoxically, still is seeking in that action) is

telling. RRKidz asked the Court to rule that the License Agreement remains valid and
enforceable insofar as it imposes obligations and restrictions on WNED (e.g., RRKidz would
continue to enjoy an exclusive license to the RR Intellectual Property, the right of first
refusal/last negotiation for the production of any new episodes, and revenue participation in
WNED’s exploitation of those rights) but at the same time free RRKidz from its own obligations
(e.g., payment of royalties, identification of WNED as the owner and licensor of the RR
Intellectual Property, accountability to WNED, etc.), as well as the consequences of termination
(e.g., the reversion of rights to WNED).
43.

On March 10, 2016, WNED filed an answer, affirmative defenses, and

counterclaims against RRKidz. The counterclaims asserted, among other things, breach of the
License Agreement, violation of WNED’s trademark rights, and unfair and deceptive business
practices. (RRKIDZ Action, Dkt. No. 22). In its prayer for relief, WNED asked the court to
dismiss RRKidz’s complaint, order RRKidz to comply with its obligations under the License
Agreement, and stop misrepresenting the scope of its rights in the RR Intellectual Property.
44.

On March 18, 2016, the extended cure period expired and the License Agreement

was terminated. RRKidz refused to acknowledge that termination, and continued to exploit the
original episodes of the RR Series and control the Reading Rainbow website, YouTube page, and
social media accounts.

8

RRKidz, Inc. v. Western New York Public Broadcasting Association, 1:16-cv-00912-VSB-DCF
(the “RRKIDZ Action”).
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45.

On August 4, 2016, WNED was forced to seek a preliminary injunction after

RRKidz and Mr. Burton refused to withdraw or correct numerous false and misleading
assertions—including on the Reading Rainbow website, a book authored by Mr. Burton, and on
the Facebook page of Mr. Burton’s business partner—that Mr. Burton is the “owner” of Reading
Rainbow. (RRKIDZ Action, Dkt. Nos. 45, 46, 67).
46.

Only after a hearing before the Court on October 11, 2016 did RRKidz finally

agree to correct the misleading statements. On October 20, 2016, the Court entered an order
enjoining RRKidz from representing that Mr. Burton owns Reading Rainbow. (RRKIDZ Action,
Dkt. No. 76).
Mr. Burton Uses the RR Marks to Promote his New Podcast
47.

On or about June 13, 2017, Mr. Burton launched a new podcast entitled “Levar

Burton Reads,” in which Mr. Burton narrates short stories.9
48.

Approximately 48 seconds into the first episode, after a musical intro, the

following exchange occurs:
FEMALE VOICE:

Let’s talk about…

LEVAR BURTON:

Why I want to do a podcast?

FEMALE VOICE:

Yeah, let’s talk about that.

LEVAR BURTON: [laughs] Yeah, yeah. Well here’s the thing: people have asked me,
um, for years and years and years, when are you going to do a Reading Rainbow for
adults? And it’s always been something that’s on my mind so I wanted to address that, I
wanted to address a Reading Rainbow for adults.
(emphasis added).

9

The podcast can be found at http://www.levarburtonpodcast.com/
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49.

In the days and weeks following the release of that episode, the media latched on

to Mr. Burton’s use of the phrase “Reading Rainbow for adults,” and it became the de facto
slogan for the podcast.10
50.

On July 27, 2017, Mr. Burton appeared on The Brian Lehrer Show on WNYC in

New York to promote his new podcast. The first question Mr. Lehrer asked Mr. Burton was: “Is
the podcast Reading Rainbow for the millennials who grew up watching it?” Mr. Burton replied:
“It’s not intended to be a direct translation of Reading Rainbow. The commonalities are: it is
storytelling. It’s simply just me reading short stories honestly, that’s the deal. But people are
calling it Reading Rainbow for adults and I can’t stop them from that.” (emphasis added).
51.

Mr. Burton’s response reflects his sophistication as a promoter: he deftly seized

upon an unremarkable question about the target market for his podcast as an opportunity to
repeat his pithy slogan, even as he coyly purported to distance himself from it. WNED did not
authorize Mr. Burton to use the registered mark Reading Rainbow in connection with his
podcast.
52.

Mr. Burton also closes each episode of his podcast by saying “I’ll see you next

time, but you don’t have to take my word for it.” Burton’s use of both the Slogan and the Tagline
from the RR Series is an unmistakable—and unauthorized—invocation of Reading Rainbow and

10

See, e.g., https://www.elephantjournal.com/2017/06/reading-rainbow-for-adults-is-a-realthing-its-just-what-we-all-need/, https://www.bustle.com/p/reading-rainbow-host-levar-burtonhas-a-new-podcast-where-he-reads-to-adults-its-soothing-af-65810,
https://geektyrant.com/news/levar-burton-has-a-new-podcast-that-is-basically-reading-rainbowfor-adults, http://www.huffingtonpost.com/entry/levar-burton-reading-rainbowpodcast_us_594a7413e4b00cdb99cbb1c1, https://www.nerdist.com/levar-burtons-new-podcastis-like-reading-rainbow-for-adults/, http://fanfest.com/2017/06/28/levar-burtons-new-shortfiction-podcast-is-basically-reading-rainbow-for-adults/,
http://www.neatorama.com/neatogeek/2017/07/08/LeVar-Burtons-New-Podcast-Is-LikeReading-Rainbow-For-Adults/, http://www.sfgate.com/entertainment/article/Reading-RainbowLeVar-Burton-new-podcast-11250797.php.
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its goodwill in the service of Mr. Burton’s personal career goals. When WNED demanded that
Mr. Burton cease using the RR Marks to promote his podcast, counsel for RRKidz and Mr.
Burton refused, claiming that RRKidz had no control over Mr. Burton’s actions and suggesting
Mr. Burton believes he has the unrestricted right to use the Slogan.
RRKidz Misappropriates Reading Rainbow Skybrary
53.

On the evening of July 31, 2017, with only residual discovery left before the

parties were due to file dispositive motions and prepare for trial in the RRKIDZ Action,
RRKidz’s counsel sent WNED a draft settlement agreement and an ultimatum:
Due to the availability of certain RRKidz personnel who are critical to the
transition process, RRKidz must transition Skybrary to a new branded website
tomorrow (August 1, 2017). RRKidz sees three potential paths forward:
1.

The parties can sign the attached settlement agreement today or tomorrow;

2.
If the attached settlement terms are acceptable to WNED (and WNED
expects they will be after discussion with the Board), but WNED needs additional
time for logistics, WNED can send RRKidz a simple email agreeing that RRKidz
can launch a new branded website for Skybrary tomorrow and that RRKidz will
keep readingrainbow.com active with clips and content re: the classic series until
the settlement closes; or,
3.
If the attached settlement terms are not acceptable to WNED, RRKidz can
terminate the RR license agreement and the parties can proceed with litigation.
54.

WNED never authorized RRKidz to “transition Skybrary to a new branded

website.” Upon receiving this ultimatum, WNED promptly notified RRKidz, through counsel,
that RRKidz could not terminate the license agreement in the threatened manner.
55.

Late on the night of July 31, 2017 or early in the morning of August 1, 2017,

RRKidz replaced the entire Reading Rainbow website at www.readingrainbow.com with a single
page headed by a large banner:

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56.

The banner shows two logos. The first is the Reading Rainbow logo; the second is

the Reading Rainbow Skybrary logo, with a simple but profound change: RRKidz replaced
“Reading Rainbow” with “Levar Burton Kids”:

57.

Below the banner is a notice that reads: “As of August 1, 2017 RRKidz will no

longer license the Reading Rainbow brand. ReadingRainbow.com is owned and operated by
WNED-Buffalo.”
58.

The “CLICK HERE” link beneath the adulterated Reading Rainbow Skybrary

logo takes the user to www.levarburtonkids.com, which is where RRKidz moved the rest of the
Reading Rainbow website, replacing “Reading Rainbow” with “LeVar Burton Kids”. Below are
comparisons of pages currently on levarburtonkids.com with pages that were on
readingrainbow.com just a few days ago.

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readingrainbow.com, July 25, 2017:

levarburtonkids.com, August 2, 2017:

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readingrainbow.com/skybrary-family, July 10,
2017

18

levarburton.com/skybrary, August 3, 2017:

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59.

At the same time, RRKidz “updated” the Reading Rainbow Skybrary app,

renaming it LeVar Burton Kids Skybrary on iTunes and simply Skybrary on Amazon and Google
Play. As with the webpages, RRKidz merely replaced “Reading Rainbow” with “LeVar Burton
Kids”:

60.

RRKidz also removed most of the content from the Reading Rainbow YouTube

61.

At 11:34 on the morning of August 1, WNED demanded that RRKidz restore the

page.

Reading Rainbow website and YouTube page.

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62.

At 6:49 that evening (after it had sabotaged Reading Rainbow’s internet presence

and converted the website and Skybrary for its exclusive use), RRKidz sent a notice to WNED
stating “effective August 1, 2017, RRKidz will not pay to WNED the Minimum Guarantee as set
forth in paragraphs 5 and 6 of the License Agreement. Accordingly, under paragraph 8.c., the
License Agreement has expired.” RRKidz’s claim that License Agreement expired is contrary to
the terms of the License Agreement itself.
63.

Paragraph 5 of the License Agreement requires RRKidz to pay a minimum annual

royalty (the “Minimum Guarantee”) by December 31 of each year.
64.

Paragraph 6 of the License Agreement states that the agreement “will be

automatically extended in one-year increments (in perpetuity) for each year that WNED receives
the Minimum Guarantee set forth in paragraph 5 above. In the event the applicable Minimum
Guarantee is not timely paid to WNED, WNED may elect to terminate this Agreement upon 60
(sixty) days’ notice to RRKIDZ.” (emphasis added).
65.

Paragraph 8.c sets forth the consequences of “termination of this Agreement by

WNED or expiration of the Term of this Agreement [at WNED’s election] on account of the
failure of RRKIDZ to pay the Minimum Guarantee as set forth in paragraphs 5 and 6 hereof.”
66.

In other words, RRKidz asserts the License Agreement is terminated, effective

immediately, because in five months’ time, when the Minimum Guarantee comes due, RRKidz
will not pay it. But that failure to pay, should it happen, would give WNED (not RRKidz) the
option to terminate the agreement—no earlier than March 1, 2018.
67.

Why would RRKidz concoct such a flimsy and contractually baseless pretext for

terminating the License Agreement, especially since WNED gave RRKidz notice of termination
almost two years ago, and RRKidz has spent the past two years fighting about its validity? The

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answer, as set forth more fully below, is that RRKidz and Mr. Burton realized their litigation
gambit had failed.
Defendants’ Bait-and-Switch
68.

As evidenced by Mr. Burton’s conduct since he began “teasing” the public about

the return of Reading Rainbow years before his company acquired any rights to do so, Mr.
Burton’s goal is to control and reap the benefits of Reading Rainbow’s substantial goodwill—
goodwill that unquestionably belongs to WNED.
69.

First, defendants tried to assert control over the brand through deception: secret

negotiations with Netflix, false assertions of ownership of the RR Intellectual Property, and
misleading efforts to persuade WNED’s business associates to make Mr. Burton the host of any
new series.
70.

Then, defendants tried brute force: the RRKIDZ Action, through which they tied

up the RR Intellectual Property while waging a war of attrition intended to extract a settlement
that would loosen restrictions of their ability to exploit the RR Intellectual Property.
71.

Now that WNED has called their bluff and is prepared to take the RRKIDZ

Action to trial, defendants have resorted to theft and extortion.
72.

As the RRKIDZ Action moved closer to trial, RRKidz began working with Mr.

Burton’s longtime friend, John Raymonds, to secretly encumber the RR Intellectual Property as
collateral for $2.5 million in loans from Raymonds Capital.
73.

To be sure, the License Agreement permits RRKidz to pledge its rights in the RR

Intellectual Property as security to finance its exploitation of the Reading Rainbow brand. It also
provides that, upon termination of the agreement, “any such rights that are subject to a Security
Interest at the time of termination or expiration will transfer to the holder of such Security

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interest and WNED, in its sole discretion, will have the right, but not the obligation, to purchase
such rights from the holder of the Security Interest.”
74.

But what RRKidz did during the pendency of the RRKIDZ Action was neither

contemplated nor permitted by the License Agreement.
75.

Prior to WNED’s termination of the License Agreement effective March 18,

2016, RRKidz’s rights under the License Agreement were pledged to Raymonds Capital as
security for a promissory note in the amount of $351,750.
76.

During the pendency of the RRKIDZ Action, RRKidz paid Raymonds Capital

$400,000 (i.e., more than the full amount outstanding on the pre-termination note) and borrowed
an additional $2.5 million against its rights under the License Agreement.
77.

WNED did not learn of this significant encumbrance until mid-July 2017, when

RRKidz made its settlement proposal with the arbitrary August 1 deadline. The message was
clear: if WNED did not accept settlement on RRKidz’s terms, WNED would face a massive
encumbrance on its intellectual property and the possible transfer of those rights to a third party
aligned with RRKidz, and from whom WNED would have to buy back its own rights.
78.

When WNED again called RRKidz’s bluff, RRKidz concocted the theory it put

forth in its August 1 letter: that it could unilaterally terminate the License Agreement under a
provision that gives WNED—and only WNED—the option to terminate the agreement.
79.

The proof of RRKidz’s desperate intent can be found in the fifth paragraph of its

August 1 letter:
As you are already aware, the rights to exploit the classic series under the SV
License and the RRKIDZ/SV Acquisition (as defined in the License Agreement)
are subject to a security interest held by Raymonds Capital LLC. Therefore,
pursuant to paragraph 8.c.(i) of the License Agreement, those rights have
transferred to Raymonds Capital LLC. If WNED is interested in purchasing those

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rights from Raymonds Capital LLC, please let me know and I will put you in
contact with the proper representative from Raymonds Capital LLC.
80.

Presumably, RRKidz continues to enjoy the $2.5 million dollars it obtained from

Raymonds Capital. At the same time, RRKidz’s clear implication is that Raymonds Capital is
free to extract whatever price it chooses from WNED for the return of WNED’s rights.
81.

RRKidz is wrong. Once WNED terminated the License Agreement effective

March 18, 2016, RRKidz lost both the right to distribute the RR Series and the right to use that
right as security. Thus, RRKidz’s post-termination pledge of $2.5 million to Raymonds Capital is
void.
Count I
(Copyright Infringement – against RRKidz and LeVar Burton)
82.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 81 of these counterclaims, as though fully set forth herein.
83.

WNED owns the rights and title to the copyright in the RR Series.

84.

WNED has registered with the United States Copyright Office individual episodes

of the Series as television motion pictures (the “Works”).
85.

A list of the Works appears as Schedule B to the License Agreement (Exhibit B).

86.

The Works are original, creative, copyrightable works composed of numerous

protectable elements that recur from episode to episode, including, among others, the Intro, the
Host, the Book, the Field Trips, the Reviews, and the Slogan.
87.

RRKidz has had copies of the master tapes for each of the Works in its

possession, custody, or control since 2011.
88.

RRKidz, as WNED’s licensee, created original audiovisual content for use in

connection with Reading Rainbow Skybrary (the “Skybrary Content”) That content was and is
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substantially similar to the Works, and observers immediately recognized those similarities—
describing them as “basically new video segments in the style of the old show, recorded with
Burton,”11 “recorded segments featuring Burton that are reminiscent of the old show,”12 and
“video segments in the style of the old show with Burton showing the children an
environment.”13
89.

RRKidz was authorized to create and distribute the Skybrary Content pursuant to

section 2.a of the License Agreement, which granted RRKidz the right to “use [RR Intellectual
Property] in the creation of goods, products and services (collectively ‘RRKIDZ/RR Branded
Content’) and the exploitation thereof….”
90.

Upon termination of the License Agreement, pursuant to section 8.c.(v), RRKidz

retained the nonexclusive right to exploit RRKIDZ/RR Branded Content created by RRKidz
prior to termination, so long as WNED continued to receive royalty payments for such
exploitation. RRKidz would retain ownership of that portion of the RRKIDZ/RR Branded
Content that did not constitute RR Intellectual Property (§ 2.b), but could not, after termination,
create any new content using RR Intellectual Property (§ 8.c.(v)).
91.

Also on August 1, 2017, at the direction (and with the participation) of its officer,

Mr. Burton, RRKidz began to exploit a new product (“Levar Burton Kids Skybrary”), which
incorporates the Skybrary Content.
92.

Although the parties dispute the date on which the License Agreement terminated,

both agree it was terminated by August 1, 2017. Thus, there is no dispute defendants do not have
any license, authorization, permission, or consent to use the Works or any of the protected

11

https://techcrunch.com/2012/06/20/reading-rainbow-ipad/
http://www.nydailynews.com/life-style/reading-rainbow-back-ipad-app-article-1.1099278
13
http://vator.tv/news/2012-06-20-reading-rainbow-reborn-on-the-smaller-screen
12

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elements thereof in “LeVar Burton Kids Skybrary”—or in any other goods, products, or services
other than Reading Rainbow Skybrary, as it existed at the time of termination.
93.

Defendants have infringed and are continuing to infringe WNED’s copyrights in

and relating to the RR Series by, inter alia, reproducing, distributing, publicly performing and
publicly displaying the Skybrary Content outside of Reading Rainbow Skybrary (as it existed at
the time of termination of the License Agreement) without any authorization or other permission
from WNED.
94.

Defendants’ infringement of WNED’s copyrights has been deliberate, willful and

in utter disregard of WNED’s rights.
95.

As a direct and proximate result of defendants’ wrongful conduct, WNED has

been substantially and irreparably harmed in an amount not readily capable of determination.
Unless restrained by this Court, defendants will cause further irreparable injury to WNED. Thus,
WNED is entitled to an order enjoining RRKidz, its officers, agents, employees, and all persons
acting in concert or participation with them, from engaging in any further infringement of
WNED’s rights in the RR Series.
96.

WNED also is entitled to monetary damages, including any gains, profits and

advantages obtained by defendants as a result of their wrongful acts, or statutory damages,
pursuant to 17 U.S.C. § 504.
Count II
(Conversion – against RRKidz)
97.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 96 of these counterclaims, as though fully set forth herein.

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98.

As WNED’s licensee, RRKidz was responsible for operating and maintaining the

websites, blogs, and social media accounts employed in connection with the marketing and
distribution of RRKIDZ/RR Branded Content.
99.

RRKidz has sole control over and access to the passwords and other credentials

for those websites and social media accounts, associated email accounts, and the servers where
the content on those various sites and accounts is stored.
100.

On August 1, 2017 RRKidz purported to terminate the License Agreement and

abdicate its responsibilities as WNED’s licensee. At the same time, it made significant changes
to the website at readingrainbow.com, and to the Reading Rainbow YouTube channel.
101.

When WNED demanded that RRKidz reverse the changes it made, RRKidz

refused.
102.

On August 2, 2017, WNED demanded that RRKidz immediately turn over to

WNED all access and administrative rights in (and any and all files, credentials, services,
software, or other assets or information on, or necessary to the operation or maintenance of)
every website, webpage, and social media account associated with Reading Rainbow—
including, without limitation, the Reading Rainbow Facebook, Twitter, Instagram, Pinterest,
Google+, and YouTube pages, and the following domains, including all subdirectories and
subdomains thereof (e.g., reader.readingrainbow.com, assets.readingrainbow.com,
cdn.readingrainbow.com, cdn1.readingrainbow.com, cdn2.readingrainbow.com,
content.readingrainbow.com, readingrainbow.com/skybrary-family, readingrainbow.com/school,
etc.):


readingrainbow.com



readingrainbow.net

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

readingrainbow.org



reading-rainbow.com



reading-rainbow.net



reading-rainbow.org



readingrainbowdvd.com



rrkickstarter.com



supportreadingrainbow.com



helpreading-rainbow.com



savereadingrainbow.com

(collectively, the “Electronic Assets”).
103.

RRKidz has not turned over control of, or provided access to, any of the

Electronic Assets.
104.

So long as RRKidz remains in possession of WNED’s Electronic Assets, and

therefore in control over Reading Rainbow’s entire Internet presence and the means by which
WNED would communicate with Reading Rainbow customers, WNED will continue to suffer
irreparable harm.
105.

WNED seeks an order requiring RRKidz to immediately turn over and surrender

to WNED all the Electronic Assets, and to destroy any and all copies that thereafter remain
within RRKidz’s possession, custody, or control.
Count III
(Lanham Act § 43(d) – against RRKidz)
106.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 105 of these counterclaims, as though fully set forth herein.

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107.

WNED has long used the RR Marks in interstate commerce in connection with

the advertising, promotion, and distribution of the RR Series and associated products and
services.
108.

RRKidz is aware of WNED’s exclusive ownership of the RR Marks.

109.

RRKidz is the registrant of the domain name readingrainbow.com.

110.

RRKidz is using the domain name readingrainbow.com to direct customers of

Reading Rainbow to levarburtonkids.com, a site promoting products and services from which
RRKidz seeks to profit at the expense of WNED.
111.

RRKidz has violated 15 U.S.C. § 1125(d)(1)(A) in that it has used, and is using, a

domain name that is identical to the famous registered mark READING RAINBOW with a bad
faith intent to profit from that mark.
112.

RRKidz’s unauthorized and tortious conduct has caused WNED to suffer

commercial damage, as well as the loss of goodwill and reputation established by WNED in the
RR Marks.
113.

WNED seeks an order transferring the domain readingrainbow.com to WNED

and an award of statutory damages in the amount of not less than $1,000 and not more than
$100,000, as the Court considers just.
114.

Because RRKidz acted knowingly, deliberately, and willfully, this is an

exceptional case under § 1117(a), entitling WNED to recover its reasonable attorneys’ fees.
Count IV
(Breach of Contract – against RRKidz)
115.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 114 as though fully set forth herein.

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116.

WNED and RRKidz are parties to a valid and enforceable license agreement.

117.

WNED contends it terminated the License Agreement effective March 18, 2016.

RRKidz contends the License Agreement was only terminated on August 1, 2017. In either case,
WNED has fully performed under the agreement and RRKidz has breached it.
118.

RRKidz breached section 8.c the License Agreement, which sets forth certain

changes triggered by termination of the agreement, by failing to acknowledge the reversion of
rights to WNED, continuing to assert the exclusive right to distribute the RR Series, purporting
to assign that right to Raymonds Capital as security for a loan, and refusing to return control to
WNED over its Internet presence, content and subscription services.
119.

RRKidz breached section 2.b of the License Agreement by failing to “consult

with WNED regarding the design(s) of RRKIDZ’ sites.”
120.

RRKidz breached section 7.j of the License Agreement by engaging in “activity

or conduct which reflects unfavorably on the goodwill associated with the Registered Marks,”
including by removing most of the content from the Reading Rainbow website and YouTube
page, by turning the Reading Rainbow website into an advertisement for “LeVar Burton Kids,”
and by falsely announcing to the world (including on the Reading Rainbow website), without
explanation or context, that RRKidz is no longer a licensee of WNED.
121.

RRKidz breached sections 7.a and 7.b of the License Agreement by failing to

exert commercially reasonable efforts to cause LeVar Burton to comport himself with
professionalism, decorum, and honesty in connection with the RR Intellectual Property.
122.

RRKidz breached section 7.l of the License Agreement by failing to promptly

inform WNED of LeVar Burton’s unauthorized use of the RR Marks, and by refusing to assist
WNED in the enforcement of WNED’s rights against LeVar Burton.

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123.

RRKidz breached section 7.r of the License Agreement by failing to “use

commercially reasonable efforts to promote the exploitation of the RR Series…and the
exploitation of RR Branded products,” instead abandoning the RR Series, removing the Reading
Rainbow brand from Reading Rainbow Skybrary, and exploiting that formerly RR Branded
product for the exclusive benefit of RRKidz and LeVar Burton
124.

RRKidz breached section 8.c.(v) by “exploit[ing] RRKIDZ/RR Branded Content

created by RRKIDZ prior to the termination of” the License Agreement (i.e., Reading Rainbow
Skybrary) in a manner other than that permitted by WNED, by excluding WNED from its Gross
Receipts participation in RRKIDZ’s exploitation of Reading Rainbow Skybrary, and by
“creat[ing]…new RRKIDZ/RR Branded Content that uses the RR Intellectual Property” (i.e.,
“LeVar Burton Kids Skybrary”).
125.

RRKidz’s conduct has caused, and continues to cause, substantial injury to

WNED, for which WNED seeks monetary damages in an amount to be proven at trial.
126.

WNED is entitled to reasonable attorneys’ fees under section 18.e. of the License

Agreement because this claim and controversy arise out of or relate to the Agreement.
127.

WNED further requests such other or additional relief as the Court may find just

according to the circumstances of the case.
Count V
(Breach of Implied Covenant of
Good Faith and Fair Dealing – against RRKidz)
128.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 128 of these counterclaims, as though fully set forth herein.

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129.

In the alternative, to the extent that RRKidz’s conduct described in Count IV

above did not constitute a breach of the Agreement, it was a breach of the implied covenant of
good faith and fair dealing.
130.

If it is finally adjudicated that the License Agreement was terminated effective

March 18, 2016, certain provisions of that agreement would not have applied after that date.
However, because RRKidz behaved (until August 1, 2017) as if the agreement were in place, to
the extent its conduct did not technically constitute a breach of the License Agreement, it was a
breach of the implied covenant of good faith and fair dealing.
131.

RRKidz’s unauthorized conduct has caused, and continues to cause, substantial

injury to WNED, for which WNED seeks monetary damages, the costs of the action together
with WNED’s reasonable attorneys’ fees, and such other or additional relief as the Court may
find just according to the circumstances of the case.
132.

WNED is entitled to reasonable attorneys’ fees under section 18.e. of the

Agreement because this claim and controversy arise out of or relate to the Agreement.
Count VI
(Interference with Customer Relations – against RRKidz)
133.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 132 of these counterclaims, as though fully set forth herein.
134.

WNED, as the owner and licensor of the RR Intellectual Property, has an existing

or prospective economic relationship with present and former subscribers to Reading Rainbow
Skybrary and contributors to the Reading Rainbow Kickstarter campaign.
135.

RRKidz, as WNED’s licensee, is aware of those relationships.

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136.

On or about August 1, 2017, RRKidz intentionally interfered with those

relationships by unilaterally and without notice transferring those consumers’ accounts from
Reading Rainbow to “LeVar Burton Kids”, and changing all emails, websites, and other conduits
of information associated with those relationships to ones solely within RRKidz’s ownership and
control, thus preventing WNED from communicating or transacting with those customers and
vice versa.
137.

RRKidz acted without justification when it cut off WNED’s access to Reading

Rainbow’s customers and used dishonest, unfair, and improper means to do so.
138.

RRKidz’s tortious and unauthorized conduct has caused, and continues to cause,

substantial injury to WNED, for which WNED seeks monetary damages (including the lost
opportunities for profits on the business RRKidz diverted), the costs of the action together with
WNED’s reasonable attorneys’ fees, and such other or additional relief as the Court may find just
according to the circumstances of the case.
139.

WNED is entitled to reasonable attorneys’ fees under section 18.e. of the

Agreement because this claim and controversy arise out of or relate to the Agreement.
Count VII
(Lanham Act § 43(a) – against LeVar Burton)
140.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through 139 of these counterclaims, as though fully set forth herein.
141.

WNED is the registered owner of the famous mark, READING RAINBOW.

142.

The Slogan (“…but you don’t have to take my word for it”) was recited in each of

the 155 episodes of the RR Series and incorporated into related content and associated marketing
and promotional materials. Therefore, over the past 35 years, the Slogan has become immutably

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associated with Reading Rainbow and acquired secondary meaning sufficient to qualify for
protection under the Lanham Act.
143.

WNED has long used the RR Marks in interstate commerce in connection with

the advertising, promotion, and distribution of the RR Series and associated products and
services.
144.

Mr. Burton is aware of WNED’s exclusive ownership of the RR Marks.

145.

Mr. Burton has violated 15 U.S.C. § 1125(a)(1)(A) in that he has used, and is

using, the RR Marks (specifically, READING RAINBOW and the Slogan) in a manner not
authorized by WNED that is likely to cause—and has caused—confusion, mistake or deception
as to the origin of its goods, services, and commercial activities.
146.

Mr. Burton’s unauthorized and tortious conduct has caused WNED to suffer

commercial damage, as well as the loss of goodwill and reputation established by WNED in the
RR Marks.
147.

WNED seeks recovery of Mr. Burton’s profits from the “LeVar Burton Reads”

podcast, WNED’s actual damages, and treble damages under 15 U.S.C. § 1117(a). Because Mr.
Burton acted knowingly, deliberately, and willfully, this is an exceptional case under § 1117(a),
entitling WNED to recover its reasonable attorneys’ fees.
148.

WNED also seeks an injunction under 15 U.S.C. §1116(a) restraining and

enjoining Mr. Burton from using the phrases “Reading Rainbow for adults” and “but you don’t
have to take my word for it,” in connection with the “LeVar Burton Reads” podcast.

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Count VIII
(Declaratory Relief)
149.

WNED hereby repeats and re-alleges the allegations set forth in paragraphs 1

through __ of these counterclaims, as though fully set forth herein.
150.

A bona fide justiciable and substantial controversy has arisen and now exists

between RRKidz and WNED concerning their present and prospective rights and obligations.
151.

RRKidz contends:

a.

it caused the License Agreement to expire effective August 1;

b.

the rights to exploit the RR Series are subject to a security interest held by
Raymonds Capital;

c.

those rights have transferred to Raymonds Capital; and

d.

RRKidz has no further obligations to WNED or Reading Rainbow.

152.
a.

WNED contends:
there is no provision of the License Agreement that permits RRKidz to cause it to
expire, as RRKidz contends it did;

b.

the purported security interest in the rights to the RR Series is void, as RRKidz
lacked the authority to pledge those rights as security after WNED terminated the
License Agreement effective March 18, 2016 and, in any event, had repaid all
amounts secured prior to that date;

c.

Raymonds Capital has no right, title, or interest in the RR Series, RR Intellectual
Property, or any associated rights; and

d.

RRKidz remains bound by the provisions of the License Agreement, which
includes the obligations that survive termination, regardless of whether or when
it was terminated.

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153.

Accordingly, pursuant to the Declaratory Judgment Act, 28 U.S.C. §§ 2201, et

seq., WNED desires judicial determination of its rights and duties, and specifically judicial
declarations that:
a.

RRKidz’s purported termination by “expiration” of the License Agreement was
ineffective;

b.

RRKidz’s purported encumbrance of the RR Intellectual Property as security for
post-termination loans by Raymonds Capital was ineffective;

c.

Raymonds Capital has no right, title, or interest in the RR Series, RR Intellectual
Property, or any associated rights; and

d.
154.

RRKidz remains bound by the provisions of the License Agreement.
Such judicial determinations are necessary and serve a useful purpose in

clarifying the parties’ respective rights and would finalize the controversy and offer relief from
uncertainty.
PRAYER FOR RELIEF
WHEREFORE, WNED prays for entry of judgment against RRKidz and LeVar Burton
and in favor of WNED as follows:
a. Enjoining and restraining RRKidz, its officers, agents, employees, and all persons
acting in concert or participation with them, from reproducing, distributing, publicly performing,
or publicly displaying content substantially similar to the RR Series, other than the continued
distribution of content created prior to March 18, 2016 through Reading Rainbow Skybrary, as
that product existed at the time of the termination of the License Agreement.

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b. Directing RRKidz to immediately turn over to WNED (and thereafter destroy any
copies that remain in RRKidz’s possession, custody, or control) all access and administrative
rights in (and any and all files, credentials, services, software, or other assets or information on,
or necessary to the operation or maintenance of) every website, webpage, and social media
account associated with Reading Rainbow—including, without limitation, the Reading Rainbow
Facebook, Twitter, Instagram, Pinterest, Google+, and YouTube pages, and the following
domains, including all subdirectories and subdomains thereof (e.g., reader.readingrainbow.com,
assets.readingrainbow.com, cdn.readingrainbow.com, cdn1.readingrainbow.com,
cdn2.readingrainbow.com, content.readingrainbow.com, readingrainbow.com/skybrary-family,
readingrainbow.com/school, etc.):


readingrainbow.com



readingrainbow.net



readingrainbow.org



reading-rainbow.com



reading-rainbow.net



reading-rainbow.org



readingrainbowdvd.com



rrkickstarter.com



supportreadingrainbow.com



helpreading-rainbow.com



savereadingrainbow.com
c. Directing that registration of each of the above domains be transferred to WNED.

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d. Enjoining and restraining LeVar Burton from using the phrases “Reading
Rainbow for adults” and “…but you don’t have to take my word for it” in connection with the
“LeVar Burton Reads” podcast.
e. Declaring RRKidz’s purported “expiration’ of the License Agreement a nullity.
f. Declaring RRKidz’s purported encumbrance of the RR Intellectual Property as
security for loans made after March 18, 2016 a nullity.
g. Declaring Raymonds Capital has no right, title, or interest in the RR Series, RR
Intellectual Property, or any associated rights.
h. Declaring RRKidz remains bound by the provisions of the License Agreement.
i. Awarding WNED monetary damages in an amount to be proven at trial.
j. Awarding WNED its reasonable costs and attorneys’ fees.
k. Awarding WNED statutory damages of not less than $1,000 and not more than
$100,000, as the Court considers just, pursuant to 15 U.S.C. § 1117(a).
l. Awarding WNED treble damages pursuant to 15 U.S.C. § 1117(a).
m. Awarding WNED such other or additional relief as the court may find just
according to the circumstances of the case.

37

 Case 1:17-cv-05914-UA Document 1 Filed 08/04/17 Page 38 of 38

Dated: New York, New York
August 4, 2017
LUPKIN & ASSOCIATES PLLC

By__/s/ Michael B. Smith_______
Jonathan D. Lupkin
Michael B. Smith
26 Broadway, 19th Floor
New York, NY 10004
(646) 367-2771 (main)
(646) 219-4870 (fax)
jlupkin@lupkinassociates.com
msmith@lupkinassociates.com
Attorneys for Western New York
Public Broadcasting Association

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