Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 1 of 22

PageID #: 486

UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF MAINE

JL Powell LLC and JL Powell Clothing LLC,
Plaintiffs
v.
Joshua L. Powell, individually and
d/b/a/ The Field, The Field Outfitting, and
The Field Outfitting Company,
Defendant

)
)
)
)
)
)
)
)
)
)
)
)

Docket No. 2:13-cv-160-NT

AMENDED COMPLAINT
(Injunctive Relief Requested)
Plaintiffs JL Powell LLC and JL Powell Clothing LLC complain against
Defendant Joshua L. Powell, individually and d/b/a The Field, The Field Outfitting, and
The Field Outfitting Company, as follows:
PARTIES, JURISDICTION, AND VENUE
1. Plaintiff JL Powell LLC is a Delaware limited liability company with a
principal place of business in California.
2. Plaintiff JL Powell Clothing LLC is a Delaware limited liability company
with a principal place of business in California.
3. Plaintiffs JL Powell LLC and JL Powell Clothing LLC (each and both “JL
Powell”) are affiliates.
4. Defendant Joshua L. Powell is a resident and citizen of Michigan.

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 2 of 22

PageID #: 487

5. The Court has original subject matter jurisdiction of this civil action pursuant
to 15 U.S.C. § 1121, 28 U.S.C. § 1331, and 28 U.S.C. § 1338, as this case involves
federal questions arising under the Lanham Act, 15 U.S.C. § 1051, et seq. The Court has
original jurisdiction of state law claims asserted pursuant to 28 U.S.C. § 1367. The Court
also has original jurisdiction based upon diversity of citizenship, 28 U.S.C. § 1332, as
there is complete diversity of citizenship between the parties, and the amount in
controversy is in excess of $75,000.
6. The Court has personal jurisdiction over Defendant Powell because he has
conducted and continues to conduct business in the State of Maine, including marketing
and direct sales to individuals residing in Maine, and personal travel to the State of Maine
to establish business relationships specifically related to the claims asserted by Plaintiffs
in this action.
7. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b)(2) and (3).
ALLEGATIONS COMMON TO ALL COUNTS
8. Defendant Joshua L. Powell founded a company known as J.L. Powell,
building the company on his personal name and image. J.L. Powell sells a line of highend goods and apparel for a sporting lifestyle, marketing the notion of escape into a world
of outdoor adventures that Defendant Powell had created and made alluring.
9. In the years prior to 2010, Defendant Powell was looking for investors that
appreciated his unique selling proposition and could augment it with catalog industry
experience, management acumen, and financial backing.

2

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 3 of 22

PageID #: 488

10. Defendant Powell had built a business that targeted a high-end market with a
boutique collection of rugged outerwear, clothing, footwear and accessories that had a
hunting and fishing pedigree. To market these products, Defendant Powell had
“mythologized” an image of himself, building a brand around his name and identity. He
had successfully cultivated a catalog company that focused on a character based on his
personal lifestyle. In effect, he was his own avatar – a fictional version of the real Joshua
L. Powell.
11. While Defendant Powell was never a public figure, he disseminated a public
version of the image he created through his catalogs and commercial website internet
advertising which was closely linked to his name and endorsement. He served as the sole
model for his company’s catalog, and the catalog offered personal messages from
Defendant Powell to its customers, many of which were followed by his signature
thereby reinforcing the connection between his name and the fictional version of himself
that he had created.
12. Catalog companies typically feature an aspirational element and achieve
success by creating brand recognition around a desired lifestyle. In building his
company, Defendant Powell had articulated a rugged sporting lifestyle and effectively
attached his name and image to that lifestyle in his company’s catalogs and e-commerce
website.
13. Absent the creative element and established brand identity that Defendant
Powell had developed, any investment in his company would not have been attractive.
Catalog sales companies typically do not have significant assets. Their success depends
3

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 4 of 22

PageID #: 489

upon developing a list of customers that bring loyalty and purchasing power to the
catalog offering. Indeed, the development of loyal customers and continuing interaction
with these customers, whose purchases are tracked by the company for marketing
purposes, forms the heart of catalog sales.
14. In 2010, a group of investors organized a Delaware limited liability company
known as Blue Highway Holdings III LLC (“Blue Highways”). The purpose of Blue
Highways was to invest in and ultimately acquire Defendant Powell’s catalog and ecommerce company, JL Powell, Inc. The investment group was attracted to JL Powell,
Inc., by virtue of its unique brand position and brand value.
15. Through negotiations with Defendant Powell and the other major shareholders
of his company, the parties arrived at a valuation of the company of approximately
$4,385,000. This value resided entirely in the brand; i.e., the name and persona of
Defendant Joshua L. Powell.
16. As the first step of a two-step contribution transaction, the investors
contributed $2,500,000 to a new entity: Plaintiff JL Powell LLC, of which Blue
Highways was the sole member. On March 10, 2010, as the second step of the
contribution transaction, JL Powell Inc. contributed all of its assets, including all of its
trademarks and other intellectual property to Plaintiff JL Powell LLC. This transaction
occurred pursuant to a Contribution Agreement dated March 10, 2010 (the “Contribution
Agreement”), by and among JL Powell Inc., JL Powell LLC, and Joshua L. Powell, in his
personal capacity and a Bill of Sale and Assignment that effected the contribution and
transfer of assets agreed to pursuant to the Contribution Agreement. In connection with
4

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 5 of 22

PageID #: 490

the closing of the contribution transaction, the Board and Stockholders of Defendant
Powell’s company, JL Powell, Inc. executed a Joint Written Consent, consenting to the
transfer and assignment of assets and to the terms of the contribution transaction. Section
6 of the Bill of Sale and Assignment specifically permitted Plaintiff JL Powell LLC to
assign all assets acquired thereunder, including all contract rights, intellectual property,
general intangibles, and goodwill of JL Powell, Inc., to any of its affiliates or to any
successor to all or substantially all of its business.
17. When the investment group acquired JL Powell, Inc. in 2010, it did so based
on confidence that Defendant Powell had gathered hundreds of thousands of customers
loyal to his name and image, as presented in its catalog and on its website. This brand
identity, as established by the name and image of Joshua L. Powell, is what the investors
were purchasing.
18. Following the completion of the contribution transaction, the power to
manage Plaintiff JL Powell LLC resided in a board of directors, consisting of three
members appointed by Blue Highways and two members appointed by JL Powell, Inc.
JL Powell, Inc. appointed Defendant Powell as one of its two Board members. He served
as a director of Plaintiff JL Powell LLC throughout the period of his employment with
that company, which ended on April 2, 2012.
19. To protect its rights in the JL Powell name, Blue Highways required JL
Powell, Inc. to change its name to JLP Retail Holding Company, Inc. following the
acquisition.

5

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 6 of 22

PageID #: 491

20. In connection with the contribution and transfer of all intellectual property of
JL Powell, Inc., and in recognition of the importance of the name of Joshua L. Powell to
the brand being acquired, Blue Highways also required Defendant Powell to personally
grant to Plaintiff JL Powell LLC the exclusive right to use his name and endorsement in
commerce. In recognition of the exclusive nature of this grant, Defendant Powell agreed
that he would not grant any similar right to another person or entity and that he would not
use his name or permit any other person or entity to use his name in connection with any
business competitive in any respect to Plaintiff JL Powell LLC or any of its affiliates.
Section 7.1(b) of the Contribution Agreement effected Defendant Powell’s grant of the
exclusive right to use his name and endorsement as follows:
In connection with this Agreement and the transfer and assignment by [JL
Powell Inc.] of all [JL Powell Inc.]Intellectual Property to [JL Powell
LLC], Joshua L. Powell (the “Founder”) hereby grants to [JL Powell LLC]
throughout the world the sole and exclusive right, license, and permission
to use his name and endorsement to exploit, turn to account, advertise, and
otherwise profit from [JL Powell LLC’s] goods and services bearing such
name, image, and/or endorsement. The grant made hereunder shall be
exclusive to [JL Powell LLC], and the Founder agrees that he shall not, on
behalf of himself or any other person or entity, grant any similar right of
any kind in connection with any business competitive in any respect with
[JL Powell LLC] or any of its affiliates and/or subsidiaries. The Founder
further agrees that he will not use his name or permit any other person or
entity to use his name, and otherwise will not assert any right to use his
name, including but not limited to any right to use his name under the
doctrine of fair use, in connection with any business competitive in any
respect to [JL Powell LLC] or any of its affiliates and/or subsidiaries.
To evidence his grant of the exclusive right to use his name and endorsement, as provided
in Section 7.1(b) of the Contribution Agreement, Defendant Powell was required to, and
did, sign and execute the Contribution Agreement in his personal capacity.

6

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 7 of 22

21.

PageID #: 492

Given that the brand based on Defendant Powell’s name represented the

entire value of the company, Blue Highways would not have acquired the assets of JL
Powell, Inc. without Defendant Powell’s personal grant of the exclusive right to use his
name and endorsement provided in Section 7.1(b) of the Contribution Agreement. This
was essential to protect the brand by prohibiting Defendant Powell’s use of his name and
endorsement in the event he ever parted ways with Plaintiff JL Powell LLC to pursue
another competitive venture.
22.

On May 5, 2010, Plaintiff JL Powell LLC filed an application to register

the mark “J.L. Powell” with the United States Patent and Trademark Office (the
“U.S.P.T.O.”). It registered the mark in International Class 25 for belts, coats, footwear,
gloves, hats, jackets, pants, scarves, shirts, shorts, sleepwear, sweaters, swimwear, ties,
and underwear. The mark was registered in such class with the U.S.P.T.O on January 11,
2011, bearing Serial Number 85030757, Registration Number 3903489, and International
Registration Number 1039183.

The registered mark “J.L. Powell” was not limited to

any characteristic that would be associated with a particular logo. Instead, the mark
consisted of standard characters without regard to any particular font style, size, or color,
and expressly provided that “the mark identifies ‘Joshua L. Powell,’ whose consent to
register is made of record.”
23.

Recognizing that giving a company the right to use one’s name as a

trademark results in the loss of such individual’s right to use his or her name in
connection with future business pursuits in the same industry, Section 2(c) of the
Trademark Act, 15 U.S.C. § 1052(c), requires applicants seeking to register a mark
7

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 8 of 22

PageID #: 493

identifying a living person to obtain that individual’s consent. In accordance with this
requirement, on September 3, 2010, Plaintiff JL Powell LLC filed a written consent
signed by Defendant Powell on August 31, 2010. By this document, Defendant Powell
consented to the registration of “J.L. Powell” and acknowledged that the mark includes
the initials of his first and middle name and his full surname.
24.

Registration of the “J.L. Powell” mark provided constructive nationwide

notice to all persons and is evidence of Plaintiff JL Powell LLC’s ownership of, and
exclusive right to use, the mark in connection with the sale of goods described in
International Class 25.
25.

The “J.L. Powell” mark has been used since March 12, 2006 in connection

with sales and marketing to customers located throughout the United States. The sales
volume of goods sold under the mark since 2006 is approximately $ 40 Million.
26.

On May 7, 2010, JL Powell LLC filed an application to register the mark

“The Sporting Life” with the PTO. Registration of this mark also was in International
Class 25 for belts, coats, footwear, gloves, hats, jackets, pants, scarves, shirts, shorts,
sleepwear, sweaters, swimwear, ties, and underwear. This mark was registered with the
PTO on April 5, 2011, and bears Serial Number 85032940, Registration Number
3940149, and International Registration Number 1052074.
27.

As with the “J.L. Powell” mark, registration of the “The Sporting Life”

mark provided constructive nationwide notice to all persons and is evidence of JL Powell
LLC’s ownership of, and exclusive right to use, the mark in connection with the sale of
goods described in International Class 25.
8

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 9 of 22

28.

PageID #: 494

“The Sporting Life” mark has been used since March 12, 2006 in

connection with sales and marketing to customers located throughout the United States.
The sales volume of goods sold under the mark since 2006 is approximately $40 Million.
29.

The J.L. Powell mark and The Sporting Life mark are widely and generally

known, distinctive and famous, and are extremely valuable to Plaintiffs. Plaintiffs
extensively advertise using these trademarks and trade names nationwide to the
consuming public.
30.

In connection with the sale of his company, Defendant Powell entered into

an employment agreement with Plaintiff JL Powell LLC with respect to his employment
as chief executive officer (the “Employment Agreement”). The Employment Agreement
was effective March 10, 2010, and subsequently amended and restated as of November 1,
2011. The parties to the Employment Agreement were Plaintiff JL Powell LLC and
Defendant Powell, individually. The Employment Agreement provided that either party
could terminate the Agreement, with or without cause, at any time. The Board of Plaintiff
JL Powell LLC terminated Defendant Powell’s employment on April 2, 2012, and the
parties executed a Separation Agreement and Release.
31.

In 2012, Plaintiff JL Powell LLC defaulted on certain loans made to it by

Blue Highways pursuant to certain notes and security agreements approved by the board
of directors of Plaintiff JL Powell LLC and Defendant Powell with respect to those fully
secured loans made while Defendant Powell served as the chief executive officer of
Plaintiff JL Powell LLC. These loans were secured by all the assets of Plaintiff JL

9

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 10 of 22

PageID #: 495

Powell LLC, tangible and intangible, including its intellectual property. Blue Highways
was a fully secured creditor holding a perfected security interest.
32.

On January 31, 2013, following default, notice to Plaintiff JL Powell LLC,

and expiration of the applicable twenty-day notice period, Blue Highways retained and
accepted, pursuant to Section 9-620 of the Uniform Commercial Code, as adopted in the
State of Delaware, all the assets of Plaintiff JL Powell LLC in full satisfaction of the debt
due on the secured loans. These assets included all of Plaintiff JL Powell LLC’s
intellectual property and contractual rights to the extent transferrable. Blue Highways
subsequently contributed all of these assets to Plaintiff JL Powell Clothing LLC, of which
Blue Highways is the sole member. By virtue of common and overlapping ownership
and control, Plaintiffs JL Powell LLC and JL Powell Clothing LLC are affiliated
companies.
33.

Sometime before April 2013, Defendant Powell began a new business

venture known as The Field, The Field Outfitting, or The Field Outfitting Company.
34.

Sometime before April 9, 2013 Defendant Powell began distributing a

clothing and accessories catalog called “The Field.”
35.

On April 9, 2013, Defendant Powell launched a corresponding e-commerce

website for The Field with the URL address of www.thefieldoutfitting.com. A digital
version of The Field catalog was provided on The Field website.
36.

The Field catalog and website are targeted at precisely the same customers

as JL Powell—high end goods for the sporting life. The Field catalog has been
distributed to some of JL Powell’s customers.
10

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 11 of 22

37.

PageID #: 496

The clothing products and accessories offered by Defendant Powell’s new

business, The Field, include products within the same class (International Class 25) for
which the marks “J.L. Powell” and “The Sporting Life” are registered with the PTO, such
as belts, coats, footwear, jackets, pants, shirts, shorts, sweaters, and swimwear.
38.

The Field catalog and website advertise and promote goods for sale using

the name and endorsement of Joshua L. Powell and bear his image in connection with
such use of his name and endorsement. The cover page of The Field’s initial catalog
bears the name J. Powell. Such use of his name and endorsement unmistakably identify
The Field with Defendant Powell, thereby trading on the goodwill of JL Powell and
creating confusion in the mind of the consumer concerning the collection and assembly
of the products offered for sale in its catalog and on its website.
39.

By virtue of the grant of right contained in Par. 7.1(b) of the Contribution

Agreement that he personally executed on March 10, 2010, Defendant Powell has waived
any right to use his name, under the doctrine of fair use or otherwise, in connection with
the business of The Field, which business is competitive with the Plaintiffs’ business.
40.

The Field commercial website at www.thefieldoutfitting.com uses as

“meta-tags” (defined as keywords for its search engine) “JL Powell” and “the sporting
life”, which are trademarks and trade names owned by Plaintiffs.
41.

Defendant Powell distributes The Field catalog nationwide, including to

consumers residing in the State of Maine.
42.

Defendant Powell markets and sells the merchandise advertised in The

Field catalog nationwide, including to consumers residing in the State of Maine.
11

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 12 of 22

43.

PageID #: 497

The Field website includes an interactive feature that invites consumers,

including individuals residing in the State of Maine, to order a print version of the
catalog, to order and purchase merchandise advertised in the catalog (digital version or
print), and to provide personal information to receive news and notices from The Field.
44.

The Field website includes an interactive feature that allows customers to

create profiles and then connect with The Field via social media websites including
Facebook, Twitter, and Pinterest.
45.

Sometime in July 2012, Defendant Powell called Michael Rancourt,

President and owner of Rancourt & Co. Shoecrafters, Inc. in Lewiston, Maine (“Rancourt
& Co.”). Defendant Powell explained that he no longer worked with J.L. Powell and told
Mr. Rancourt that he had “a similar business venture in the works” and that he would “be
back in touch in the fall.”
46.

Sometime in the fall of 2012, Defendant Powell arranged to meet with

Michael and Kyle Rancourt of Rancourt & Co. in Lewiston, Maine. At that meeting in
Maine, Defendant Powell proposed a business relationship with Rancourt & Co., in
connection with his new business venture. Mr. Powell described his new venture, The
Field, as similar to his work at JL Powell—a catalog and e-commerce outfitter of high
end apparel and sporting goods.
47.

As a part of the business relationship he proposed to Rancourt & Co.,

Defendant Powell agreed to promote the Rancourt & Co. brand, with details of the
Rancourt family history of shoe making, in The Field catalog and on The Field website.
Sometime in late January or early February 2013, Defendant Powell sent representatives
12

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 13 of 22

PageID #: 498

of The Field to Lewiston, where they took photographs at the Rancourt & Co. factory and
filmed an interview with Michael Rancourt. Defendant Powell used some of these
photographs in The Field catalog and on The Field’s website, and posted a video of the
interview with Michael Rancourt on The Field’s website.
48.

Sometime in late March or early April, 2013, Defendant Powell

alerted Rancourt & Co. that he was about to launch The Field website.
49.

On April 9, 2013, the same day that The Field launched its website,

Rancourt & Co. entered a blog post on its website stating as follows :
MICHAEL RANCOURT, PRESIDENT, INTERVIEW FOR THE FIELD
DAILY
The Field is a new catalog and ecommerce outfitter specializing in high end
goods for the sporting life. We are happy to be part of this new venture
from Josh Powell, the man behind the JL Powell company. In advance of
our first delivery of handmade shoes and boots, The Field sent a
photographer and filmmaker to film in our factory and interview Michael
Rancourt on the history of shoemaking for the Rancourt family in Maine.
See more from The Field here: http://www.thefieldoutfitting.com
Below this text was a link to a video of The Field’s interview with Michael Rancourt in
Lewiston. Defendant Powell provided on The Field’s website a link to the Rancourt &
Co. website and boasted of The Field’s partnership with Rancourt & Co. Defendant
Powell permitted Rancourt & Co. to use his name and endorsement in this blog post on
the Rancourt & Co. website until May 6, 2013.
50.

The initial catalog of The Field was mailed to customers for delivery

sometime during the first week of April 2013. Customers of JL Powell, having received
a copy of The Field catalog, have sent emails to JL Powell asking whether The Field is a
13

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 14 of 22

PageID #: 499

new J.L. Powell catalog. Customers have indicated that they noticed Defendant Powell’s
name and image in The Field catalog and website. Some customers complained to JL
Powell about the sloppy quality of The Field catalog. These emails demonstrate that
actual confusion already is occurring among JL Powell customers due to The Field’s
unauthorized use of Defendant Powell’s name and endorsement in its catalog and on its
website.
COUNT I
(Lanham Act – Dilution of Famous Mark: 15 U.S.C. § 1125(c))
51.

Plaintiffs repeat and incorporate by reference the allegations contained in

paragraphs 1 through 50 of the Complaint.
52.

The J.L. Powell mark is distinctive, both inherently and through acquired

distinctiveness, and has become famous both by virtue of its registration with the USPTO
and by the volume of advertising and sales since 2006, as well as by actual recognition of
the mark.
53.

By using the name and endorsement of Joshua L. Powell in advertising and

sales materials, Defendant Powell has used a mark or trade name in commerce that is
likely to cause dilution by blurring.
54.

Defendant Powell’s use of the designation “Josh Powell” and “J. Powell”

associates the name in the consumer’s mind with the famous mark of Plaintiffs, and
leaves the impression with the consuming public that the goods and services of
Defendant originate with, are produced by, licensed by, or sponsored in some way by
Plaintiffs, even though Plaintiffs have no connection with Defendant’s goods and

14

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 15 of 22

PageID #: 500

services. Plaintiffs have neither licensed nor approved Defendant Powell’s use of the
designations “Josh Powell” or “J. Powell.”
55.

By virtue of the foregoing, Defendant Powell has caused dilution of the

distinctive quality of Plaintiffs’ famous mark.
56.

At all material times, Defendant Powell has acted and continues to act with

willful intent to trade on Plaintiffs’ reputation or to cause dilution of Plaintiffs’ famous
mark.
57.

By virtue of the foregoing, Defendant Powell has violated and continues to

violate 15 U.S.C. § 1125(c).
58.

As a direct and proximate result of Defendant Powell’s conduct, Plaintiffs

have suffered and continue to suffer immediate and irreparable injury, and they will
continue to suffer irreparable injury unless or until Defendant Powell is restrained from
his present conduct.
59.

As a direct and proximate result of Defendant Powell’s conduct, Plaintiffs

have suffered additional damages, including costs and attorney’s fees, in an amount to be
proved at trial.
COUNT II
(Lanham Act – Likelihood of Confusion: 15 U.S.C. § 1125(a))
60.

Plaintiffs repeat and incorporate by reference the allegations contained in

paragraphs 1 through 59 of the Complaint.
61.

By virtue of the foregoing, through its catalog and website, Defendant

Powell has, in connection with the sale of goods, used words, terms, and names that are
15

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 16 of 22

PageID #: 501

likely to cause, and have caused, confusion, mistake, or deception as to the affiliation,
connection, or association of Defendant and Plaintiffs or as to the origin, sponsorship, or
approval of Defendant’s goods by Plaintiffs.
62.

By virtue of the foregoing, Defendant Powell has violated and continues to

violate 15 U.S.C. §1125(a).
63.

As a direct and proximate result of the Defendant Powell’s conduct,

Plaintiffs have suffered and continue to suffer immediate and irreparable injury, and will
continue to suffer irreparable injury unless or until Defendant Powell is restrained from
their present conduct.
COUNT III
(Trademark Infringement: 15 U.S.C. § 1114(1))
64.

Plaintiffs repeat and incorporate by reference the allegations contained in

paragraphs 1 through 63 of the Complaint.
65.

At all times material, Defendant Powell had actual knowledge of (a) the

extremely valuable nature of Plaintiffs’ trademarks, and (b) that these trademarks are
owned and used exclusively by Plaintiffs.
66.

After the adoption and use of the trademarks by Plaintiffs, and without any

authorization, Defendant Powell used in commerce a colorable imitation of the J.L.
Powell trademark in connection with the sale and advertising of goods, in contravention
of Plaintiffs’ trademark rights.

16

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 17 of 22

67.

PageID #: 502

The designations “Josh Powell” and “J. Powell,” as used by Defendant

Powell, so resembles Plaintiffs’ “J.L. Powell” trademark, and was used in such a similar
trade, as to be likely to cause confusion, or to cause mistake, or to deceive.
68.

Defendant Powell has used and continues to use the designations “Josh

Powell” and “J. Powell” with knowledge that the imitation is intended to cause
confusion, or to cause mistake, or to deceive.
69.

Defendant Powell has used and continues to use on his commercial website,

as metatags for his website’s search engine, Plaintiff’s registered trademarks “JL Powell”
and “the sporting life.”
70.

The purchasing public likely will be, and actually has been, confused and

deceived into believing that Defendant Powell’s goods and services are part of Plaintiffs’
business and/or are authorized by Plaintiffs.
71.

Plaintiffs’ goods and services travel through the same trade channels as

Defendant Powell’s goods, and they are marketed similarly. The similarities of the two
marks and the similarities of the type of goods increase the likelihood of public
confusion.
72.

By virtue of the foregoing, Defendant Powell’s usage of the designations

“Josh Powell” and “J. Powell” violates 15 U.S.C. §1114(1).
73.

By virtue of the foregoing, Defendant Powell’s usage of “JL Powell” and

“the sporting life” violates 15 U.S.C. §1114(1).
74.

As a direct and proximate result of the Defendant Powell’s unlawful use of

the “Josh Powell” and “J. Powell” designations, and unlawful use of “JL Powell” and
17

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 18 of 22

PageID #: 503

“the sporting life”, Plaintiffs have suffered immediate and irreparable injury and will
continue to suffer irreparable injury unless or until Defendant Powell is restrained from
use of the marks.
75.

As a direct and proximate result of Defendant Powell’s unlawful use of the

“Josh Powell” and “J. Powell” designations, Plaintiffs have suffered additional damages,
including lost profits, attorney’s fees and costs, in an amount to be proved at trial.
COUNT IV
(Maine Deceptive Trade Practices Act: 10 M.R.S.A. § 1211 et seq.)
76.

Plaintiffs repeat and incorporate by reference the allegations contained in

paragraphs 1 through 75 of the Complaint.
77.

By virtue of the foregoing, Defendant Powell, in the course of his business,

vocation, or occupation, has engaged and continues to engage in deceptive trade practices
in violation of 10 M.R.S.A. § 1212(1)(A), (B), (C), (E), (H) and/or (L).
78.

Defendant Powell has engaged and continues to engage in willful

misconduct.
79.

Plaintiffs are entitled to injunctive relief as a result of Defendant Powell’s

deceptive trade practices, as well as attorney’s fees, as set forth in 10 M.R.S.A. §1213.
COUNT V
(Maine Anti-Dilution Statute: 10 M.R.S.A. § 1530)
80.

Plaintiffs repeat and incorporate by reference the allegations contained in

paragraphs 1 through 79 of the Complaint.
81.

By virtue of the foregoing, Defendant Powell’s conduct has caused and

continues to cause a likelihood of injury to Plaintiffs’ business reputation and/or the
18

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 19 of 22

PageID #: 504

dilution of the distinctive quality of Plaintiffs’ marks in violation of the Maine antidilution statute, 10 M.R.S.A. §1530.
82.

Plaintiffs are entitled to relief for Defendant Powell’s violation of the

Maine anti-dilution statute, including injunctive relief, costs and attorney’s fees, as set
forth in 10 M.R.S.A. §1530 et seq.
COUNT VI
(Specific Performance – Contribution Agreement)
83.

Plaintiffs repeat and incorporate by reference the allegations contained in

paragraphs 1 through 82 of the Complaint.
84.

By virtue of the foregoing, Defendant Powell has violated and impaired

Plaintiff’s intellectual property right to the exclusive right to use Defendant Powell’s
name and endorsement and breached the Contribution Agreement, which prohibits him
from using his name or endorsement, or permitting any other person or entity to use his
name, or endorsement, in connection with any business competitive in any respect with
Plaintiffs’ business.
85.

The Contribution Agreement specifically provides, at Paragraph 12.13, that

the parties “agree that irreparable damage would occur in the event any provision of this
Agreement was not performed in accordance with the terms hereof and that the parties
shall be entitled to specific performance of the terms hereof in addition to any other
remedy at law or in equity.”
86.

Plaintiffs seek specific performance of the Contribution Agreement.

Specifically, Plaintiffs seek an immediate cessation of the use of Defendant Powell’s

19

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 20 of 22

PageID #: 505

name or endorsement in connection with “The Field” catalog, website, marketing
materials, or in any other way. Such specific performance is required in order to prevent
further irreparable damage.
WHEREFORE, Plaintiffs, jointly and severally or in the alternative, request
injunctive relief against Defendant together with an award of attorney’s fees and costs
pursuant to 15 U.S.C. § 1117(a) and/or 10 M.R.S.A. §1531, in the form of an order that
sets forth the following relief:
1.

enjoining and restraining Defendant Powell, and his agents, servants,
employees, attorneys, successors, assigns and consignees, and all those
acting under his authority or in concert or privity with him, or otherwise
participating in his business venture The Field, from using the name or
endorsement of Joshua L. Powell or the marks JL Powell and The Sporting
Life in any way in connection with the business of The Field, including
without limitation The Field catalog, The Field Outfitting website
(including that site’s meta-tags or “keywords”), and any and all advertising,
promotional, or other related materials in connection with the business of
the Field, The Field Outfitting, or The Field Outfitting Company;

2.

ordering Defendant Powell to disclose the identity and locations of any
persons or entities acting in concert with or participating with The Field
that are using the name or endorsement of Joshua L. Powell, and ordering
Defendant Powell to immediately direct such persons or entities to cease
using his name or endorsement;
20

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 21 of 22

3.

PageID #: 506

ordering Defendant Powell to disclose the identity and location of the
printers of The Field catalog, and the identity and location of any party
holding or warehousing copies of The Field catalog, and ordering
Defendant Powell to direct such persons to cease any further mailing or
distribution of The Field catalog;

4.

enjoining and restraining Defendant Powell from printing or distributing
any further catalogs of The Field, either in paper copy or by digital version
on The Field Outfitting Company website, that bear or use the name or
endorsement of Defendant Powell in any fashion, including without
limitation variations of his name such as Joshua L. Powell, J.L. Powell,
J. Powell, Josh Powell, JL Powell, J Powell, or any other variation
identifying the person of Defendant Powell;

5.

ordering the destruction of all infringing or diluting materials, including
destruction of all copies of The Field’s first and second catalogs, and
removal of the digital version of the catalog from The Field Company’s
website at www.thefieldoutfitting.com.

Plaintiffs request an award of reasonable attorney’s fees and costs, and such other
and further relief as the Court may deem just and proper.

Dated: May 31, 2013

/s/ Thomas C. Newman
Thomas C. Newman
Richard L. O’Meara
Nicole L. Bradick
Attorneys for Plaintiff s
21

 Case 2:13-cv-00160-NT Document 39 Filed 05/31/13 Page 22 of 22

PageID #: 507

MURRAY, PLUMB & MURRAY
75 Pearl Street, P.O. Box 9785
Portland, ME 04104-5085
(207) 773-5651
CERTIFICATE OF SERVICE
I certify that on this date I filed the foregoing document with the Clerk of Court
using the CM/ECF system which will send notification of such filing and serve a copy
electronically on all parties of record.

Dated: May 31, 2013

/s/ Thomas C. Newman
Thomas C. Newman
tnewman@mpmlaw.com

MURRAY PLUMB & MURRAY
75 Pearl Street, P.O. Box 9785
Portland, ME 04104-5085
(207) 773-5651

22