Case: 1:16-cv-03354 Document #: 33 Filed: 05/25/16 Page 1 of 11 PageID #:83

IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION

PELE IP OWNERSHIP LLC,

Plaintiff,
v.
SAMSUNG ELECTRONICS CO., LTD., and
SAMSUNG ELECTRONICS AMERICA, INC.,
Defendants.

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Case No.: 16-cv-03354

Honorable John J. Tharp, Jr

AMENDED COMPLAINT
Plaintiff Pele IP Ownership LLC, by its attorneys, for its complaint against Samsung
Electronics Co., LTD. and Samsung Electronics America, Inc., states as follows:
THE PARTIES
1.

Plaintiff Pele IP Ownership, LLC (Pele IP) is a Delaware limited liability

company with its sole member domiciled in the Cayman Islands. By assignment, Pele IP owns
the trademark rights, copyrights, right of publicity and all other intellectual property rights of
Edson Arantes Do Nascimento, known worldwide as Pel.
2.

Defendant Samsung Electronics Co., Inc. (Samsung) is a Korean company with

its principal place of business in Suwon, South Korea. Samsung conducts business throughout
the world. Samsung, according to its website, leads the global market in high-tech electronics
manufacturing and digital media.
3.

Defendant Samsung Electronics America, Inc. (Samsung America) is a New

York Corporation with its principal place of business in Ridgefield Park, New Jersey and is

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registered to do business in Illinois. Samsung America is a wholly-owned Samsung subsidiary

that, among other things, markets Samsungs televisions to American consumers.
NATURE OF THE CASE
4.

This case arises out of the Defendants unauthorized use of Pels identity in a

nationally-distributed advertisement promoting Samsung and its products. Pele IP brings these
claims for violation of the right of publicity, false endorsement, deceptive business practices and
unfair competition against Defendants to remedy the damage caused by Defendants
unauthorized advertisement.
JURISDICTION
5.

Count I of this Action arises under the Lanham Act of 1946, as amended, 15

U.S.C. 1051 et seq. This Court has jurisdiction over this cause of action under 15 U.S.C.
1121 and 28 U.S.C. 1331 and 1338.
6.

Counts II-IV of this Action arise under state statutory and common law. This

Court has jurisdiction over these claims under 28 U.S.C. 1338(b) in that these claims are joined
with substantial and related claims brought under the trademark laws of the United States (15
U.S.C. 1051 et seq). This Court also has supplemental jurisdiction over the state law claims
under 28 U.S.C. 1367 because the federal and state claims are based on the same operative
facts, and because judicial economy, convenience and fairness to the parties will result if the
Court assumes and exercises jurisdiction over the state law claims.
7.

This Court has personal jurisdiction over both Defendants because they caused

the advertisement at issue in this case to be distributed in this District and elsewhere in Illinois
where they market and sell consumer electronics.

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FACTUAL BACKGROUND
8.

Now retired from playing, Pel is widely regarded as the greatest soccer player in

history. In 1999, he was elected Athlete of the Century by the International Olympic Committee
and was voted World Player of the Century by the International Federation of Football History &
Statistics (IFFHS). The IFFHS counts Pel as the most successful league scorer in the world,
having scored 541 league goals, with a total of 1,281 goals in 1,363 games, a feat that earned him
the Guinness Book of World Record for most career goals scored in soccer.
9.

Among his many lifetime honors, Pel was declared a national treasure by the

Brazilian President, received a lifetime achievement award from Nelson Mandela, was bestowed
with an honorary knighthood from Queen Elizabeth II at a ceremony in Buckingham Palace and
was appointed as UNESCOs goodwill ambassador. Time Magazine named Pel one of the 100
most influential people of the twentieth century.
10.

Pel has also had enormous success as an endorser of products and services in

which businesses that wish to profit from an association with Pel contract with him to use
aspects of his world famous identity, including his image and persona, in their advertising and
marketing materials.
11.

By carefully controlling the nature and frequency of his product endorsements

rejecting far more requests to use his name and persona than he grants Pel has enhanced and
maintained the value of his endorsements.
12.

The majority of Pels income, and his income potential, is now derived from

Pele IPs ability to license his name and persona to commercial sponsors who wish to capitalize
on Pels fame. As a business, the licensing of Pels identity is just as important to him now as
his professional soccer playing career once was.

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13.

Because of the publics widespread knowledge and recognition of Pel and

admiration for him, goods and services endorsed by and associated with Pel have come to be
well and favorably known and have benefitted greatly from their association with Pel.
14.

Pels name and persona have developed enormous commercial value and

secondary meaning in promoting products as a result of the publics widespread knowledge and
admiration of him.
15.

In the second half of 2013, Samsung negotiated with Pel and his then licensing

company for the right to use Pels identity, including his name, image and likeness, in an
advertising campaign for all Samsung electronic devices. Pel was prepared to enter into the
proposed license to allow Samsung the right to use Pels identity in connection with the
advertisement and promotion of Samsung products.
16.

At the last minute, Defendants pulled out of the negotiations and never obtained

the right to use Pels identity in any manner or in any format.

17.

In October 2015, Defendants placed a full-page ad on the last page of the first

section of The New York Times, a copy of which is attached to this Complaint as Exhibit A. On
information and belief, the ad was distributed nationwide.
18.

Taking up approximately two thirds of the full-page ad is the image of a Pel

lookalike a smiling man who very closely resembles Pel. Next to the Pel lookalike is a
superimposed photograph of a Samsung television, which depicts a soccer match in which one of
the players is seen making a modified bicycle or scissors-kick, perfected and famously used by
Pel.
19.

Below the Samsung television and next to the mouth of the Pel lookalike is a

first-person endorsement of the Samsung television, which states:

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More colour. More wonder.

Sport. I love it. Every match, every last minute
screamer, every stumble for the finishing line. So I dont
just want to watch it, I want to feel it. I want colours so
brilliant that Ill feel like Im in the stadium. Introducing
the next generation SUHD TV from Samsung.
See More. Feel More.
20.

The bottom of the ad includes the words and logo of the Samsung SUHDTV and

the words With New Nano Crystal Display.

21.

The Samsung full-page ad was created or authorized by Defendants.

22.

Defendants caused the advertisement at issue in this case to be distributed in this

District and elsewhere in Illinois where they market and sell consumer electronics.
23.

Defendants never requested or received Pele IPs permission to use Pels identity

or to imply his endorsement in connection with the goods offered by Defendants.

24.

Defendants advertisement, which uses Pels identity through the use of a

lookalike to promote the sale of Samsungs electronic products, is likely to confuse consumers as
to Plaintiffs sponsorship or approval of those products.
25.

Pele IP has been damaged by Defendants, whose unauthorized advertisement

infringes Pels right of publicity and falsely conveys Pels endorsement of Defendants goods,
leading consumers to wrongly conclude that Pel endorses those goods. The advertisement
further damages Pele IP by diminishing Pels endorsement value, limiting the number and scope
of potential licensees of Pels identity and unfairly enriching Defendants.

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COUNT I
(PLAINTIFFS CLAIM FOR VIOLATION OF SECTION 43(a) OF
THE LANHAM ACT FALSE ENDORSEMENT)
26.

Pele IP realleges and incorporates by reference paragraphs 1 through 25 of this

Complaint.
27.

Defendants unauthorized use of Pels identity, including his image and persona,

in its advertisement was a false or misleading representation of fact that falsely implies Pels
endorsement of Defendants goods.
28.

Defendants unauthorized use of Pels identity

(a)

is likely to cause confusion, mistake or deception as to the affiliation,

connection or association of Defendants with Pel or as to the origin, sponsorship or approval of

Defendants goods by Pel in violation of Section 43(a) of the Lanham Act, 15 U.S.C.
1125(a)(1)(A); or
(b)

misrepresents the nature, characteristics, or qualities of Defendants

goods, services, or commercial activities in violation of Section 43(a) of the Lanham Act, 15
U.S.C. 1125(a)(1)(B).
29.

Pele IP has been damaged by these acts. Pele IP has no adequate remedy at law.

30.

This case is an exceptional case pursuant to 15 U.S.C. 1117.

WHEREFORE, Pele IP requests that relief be granted in its favor and against Defendants,
jointly and severally, for (a) damages sustained by Pele IP, including Defendants profits, in an
amount greater than $10,000,000, such damages to be trebled pursuant to 15 U.S.C. 1117, (b)
attorneys fees and costs, (c) a permanent injunction requiring Defendants to refrain from any
use of Pels identity without prior authorization from Pele IP, (d) an order requiring Defendants

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to place corrective advertising in future issues of The New York Times and (e) such other and
further relief as the Court deems just and proper.
COUNT II
(PLAINTIFFS CLAIM FOR VIOLATION OF THE ILLINOIS RIGHT
OF PUBLICITY ACT)
31.

Pele IP realleges and incorporates by reference paragraphs 1 through 25 of this

Complaint.
32.

Defendants unauthorized use of Pels identity for commercial purposes is a

violation of the Illinois Right of Publicity Act, 765 ILCS 1075/1-60.

33.

Defendants use of Pels identity was unauthorized because Defendants did not

obtain Pele IPs consent to use Pels identity in connection with the advertisement. In fact,
Defendants did not even request Pels or Pele IPs consent.
34.

Defendants use of Pels identity was willful because they used Pels identity

intentionally and with knowledge that its use was not authorized.
35.

Pele IP has been damaged by Defendants unauthorized use of Pels identity.

Pele IP has no adequate remedy at law.

WHEREFORE, Pele IP requests that relief be granted in its favor and against Defendants,
jointly and severally, for (a) damages sustained by Pele IP, including Defendants profits, in an
amount greater than $10,000,000, (b) punitive damages, (c) attorneys fees and costs, (d) a
permanent injunction requiring Defendants to refrain from any use of Pels identity without
prior authorization from Pele IP, (e) an order requiring Defendants to place corrective advertising
in future issues of The New York Times and (f) such other and further relief as the Court deems
just and proper.

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COUNT III
(PLAINTIFFS CLAIMS FOR VIOLATION OF ILLINOIS CONSUMER FRAUD AND
DECEPTIVE BUSINESS PRACTICES ACT)
36.

Pele IP realleges and incorporates by reference paragraphs 1 through 25 of this

Complaint.
37.

Defendants acts constitute unfair methods of competition and unfair or deceptive

acts or practices in violation of the Illinois Consumer Fraud and Deceptive Business Practices
Act, 815 ILCS 505/2 et seq., in that those acts created a likelihood of confusion or
misunderstanding as to Pels or Pele IPs sponsorship or approval of Defendants goods, or
created a likelihood of confusion as to Defendants affiliation, connection or association with
Pel or Pele IP.
38.

Defendants conduct in violation of the Illinois Consumer Fraud and Deceptive

Business Practices Act was willful and outrageous, perpetrated by evil motive or with reckless
indifference to the rights of others.
39.

Pele IP has been damaged by these acts. Pele IP has no adequate remedy at law.

WHEREFORE, Pele IP requests that relief be granted in its favor and against Defendants,
jointly and severally, for (a) damages sustained by Pele IP in an amount greater than
$10,000,000, (b) punitive damages, (c) attorneys fees and costs, (d) a permanent injunction
requiring Defendants to refrain from any use of Pels identity without prior authorization from
Pele IP, (e) an order requiring Defendants to place corrective advertising in future issues of The
New York Times and (f) such other and further relief as the Court deems just and proper.

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COUNT IV
(PLAINTIFFS CLAIMS FOR COMMON LAW
UNFAIR COMPETITION)
40.

Pele IP realleges and incorporates by reference paragraphs 1 through 25 of this

Complaint.
41.

Defendants acts constitute unfair competition under the common law of the State

of Illinois.
42.

Defendants acts were willful and damaged Pele IP. Pele IP has no adequate

remedy at law.
WHEREFORE, Pele IP requests that relief be granted in its favor and against Defendants,
jointly and severally, for (a) damages sustained by Pele IP in an amount greater than
$10,000,000, (b) punitive damages, (c) attorneys fees and costs, (d) a permanent injunction
requiring Defendants to refrain from any use of Pels identity without prior authorization from
Pele IP, (e) an order requiring Defendants to place corrective advertising in future issues of The
New York Times and (f) such other and further relief as the Court deems just and proper.

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JURY DEMAND
Pele IP hereby demands a trial by jury.

Dated: May 25, 2016

/s/ Frederick J. Sperling

Frederick J. Sperling
Clay A. Tillack
Ann H. MacDonald
Shawna S. Boothe
SCHIFF HARDIN LLP
233 South Wacker Drive, Suite 6600
Chicago, IL 60606
(312) 258-5500
Attorneys for Plaintiff
Pele IP Ownership LLC

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CERTIFICATE OF SERVICE
The undersigned attorney hereby certifies that, on May 25, 2016, she caused a true and
correct copy of the foregoing to be filed electronically with the Courts CM/ECF system, which
caused an electronic copy of this filing to be served on counsel of record.

/s/ Ann H. MacDonald