Court filing

ANSWER to 1 Complaint by Blue Acorn PPP, LLC, Blue Oak Forest, LLC, Fin Cap, Inc — Blueacorn Beringer (Dkt. 48)

No. 5:21-cv-00251-BO · Doc. 48 · Docket on CourtListener

Summary

Answer and response to the plaintiff's verified complaint, filed July 20, 2021 as Document 48 by Fin Cap, Inc., Blueacorn PPP, LLC and Blue Oak Forest, LLC in Beringer Commerce, Inc. v. Fin Cap, Inc., Civil Action No. 5:21-cv-251-BO, U.S. District Court for the Eastern District of North Carolina. The defendants deny that their businesses infringed the plaintiff's trademarks or created actionable confusion and state that the court dissolved a temporary restraining order and denied a preliminary injunction. Responding paragraph by paragraph, they admit that the domain blueacorn.co was registered in April 2020 and assert, on information and belief, that the plaintiff abandoned its Blue Acorn trademark. They ask the court to dismiss the action and award attorneys' fees under N.C. Gen. Stat. § 75-16.1 or 17 U.S.C. § 505.

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Full text

IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NORTH CAROLINA
WESTERN DIVISION

BERINGER COMMERCE, INC., d/b/a Civil Action No. 5:21-cv-251-BO
BLUE ACORN, iCi,

Plaintiff,

vs.

FIN CAP, INC., d/b/a “BLUEACORN.CO,”
BLUE ACORN PPP, LLC, BLUE OAK
FOREST, LLC, MICHAEL S. COTA,
JAMES FLORES, STEPHANIE
HOCKRIDGE REIS, and NATHAN REIS,

Defendants.

ANSWER & RESPONSE TO
PLAINTIFF’S VERIFIED COMPLAINT

NOW COMES Defendants Fin Cap, Inc., Blueacorn PPP, LLC and Blue Oak Forest,

LLC (collectively, “Blueacorn PPP” or “Defendants”) in response to Plaintiff’s Verified

Complaint (DE #1) (“Complaint”) and aver and say:

FIRST DEFENSE
(Response to the Allegations of the Complaint)

INTRODUCTION

In the “Introduction” of the Complaint, Plaintiff sets forth several unnumbered

paragraphs. Defendants deny the factual allegations in these paragraphs and deny that the

allegations support any conclusion of wrongdoing on behalf of Blueacorn PPP. Defendants

particularly deny that their businesses have infringed on Plaintiff’s trademarks or created

actionable confusion. Further, Defendants state that the Court has dissolved a temporary

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restraining order and denied a preliminary injunction that would prevent Defendants from use of

the “blue acorn” name.

In response to the individually numbered paragraphs of the Complaint, Blueacorn PPP

avers and states as follows:

1. Upon information and belief, Paragraph 1 of the Complaint is admitted.

2. Admitted.

3. Admitted.

4. Admitted.

5. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 5 of the Complaint, which means they are denied.

6. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 6 of the Complaint, which means they are denied.

7. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 7 of the Complaint, which means they are denied.

8. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 8 of the Complaint, which means they are denied.

9. In response to the allegations of Paragraph 9 of the Complaint, Defendants deny

that Defendants Michael S. Cota, James Flores, Stephanie Hockridge Reis, and Nathan Reis (as

referred to in the Complaint) are controlling, directing, or authorizing the activities of the

Defendants. Defendants further deny that any of the individuals referred to in Paragraph 9 of the

Complaint “established” Defendants.

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10. The allegations of Paragraph 10 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. However, Defendants do

not dispute that facts exist that would support this Court’s subject matter jurisdiction.

11. The allegations of Paragraph 11 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. However, Defendants deny

that the Plaintiff can recover on its federal claims, and therefore deny that the state law claims

are actionable.

12. The allegations of Paragraph 12 of the Complaint are not factual statements, but

legal conclusions and therefore require no response. However, Defendants do not dispute that

facts exist that would support a single court hearing all claims in this Action.

13. In response to the allegations in Paragraph 13 of the Complaint, Defendants do

not dispute that facts exist that would support proper venue being in the Eastern District of North

Carolina because Plaintiff is alleged to have suffered harm here, but Defendants deny that “a

substantial part of the events giving rise to this action” occurred in North Carolina given that

Plaintiff alleges harm occurring at its South Carolina offices and Defendants are alleged to have

infringed on Plaintiff’s marks online in a nationwide market.

14. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 14 of the Complaint, which means they are denied.

15. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 15 of the Complaint, which means they are denied.

16. In response to the allegations in Paragraph 16 of the Complaint, Defendants admit

that Plaintiff operates the website domain “https://www.blueacornici.com/”. Defendants lack

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knowledge or information sufficient to form a belief about the truth of the remaining allegations

in Paragraph 16 of the Complaint, which means they are denied.

17. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 17 of the Complaint, which means they are denied.

18. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 18 of the Complaint, which means they are denied.

19. In response to the allegations in Paragraph 19 of the Complaint, Defendants admit

that Plaintiff operates the website domains “blueacorn.com” and “blueacornici.com”.

Defendants lack knowledge or information sufficient to form a belief about the truth of the

remaining allegations in Paragraph 19 of the Complaint, which means they are denied.

20. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 20 of the Complaint, which means they are denied.

21. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 21 of the Complaint, which means they are denied.

22. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 22 of the Complaint, including Exhibit A, which means they

are denied.

23. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 23 of the Complaint, which means they are denied.

24. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 24 of the Complaint, which means they are denied.

25. In response to the allegations in Paragraph 25 of the Complaint, upon information

and belief, Defendants assert that Plaintiff has abandoned the “Blue Acorn” trademark. As to the

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remaining allegations, Defendants lack knowledge or information sufficient to form a belief

about the truth of the allegations in Paragraph 25 of the Complaint, including Exhibit B, which

means they are denied.

26. In response to the allegations in Paragraph 26 of the Complaint, Defendants assert

that Plaintiff has materially changed its “Blue Acorn” trademark over the years, and thus, cannot

tack back to the priority of such various uses. As to the remaining allegations, Defendants lack

knowledge or information sufficient to form a belief about the truth of the allegations in

Paragraph 26 of the Complaint, including Exhibit B, which means they are denied.

27. Upon information and belief, Defendants admit only that it appears the Blue

Acorn trademark and the acorn design have undergone material alterations over the years.

Defendants lack knowledge or information sufficient to form a belief about the truth of the

remaining allegations in Paragraph 27 of the Complaint, which means they are denied.

28. Denied.

29. Denied.

30. In response to the allegations in Paragraph 30 of the Complaint, Defendants admit

that Exhibit C is attached to the Complaint and appears to include a US Patent and Trademark

Office registration certificate, the text of which speaks for itself. Defendants deny any

allegations inconsistent with the text of Exhibit C. Defendants lack knowledge or information

sufficient to form a belief about the truth of the remaining allegations in Paragraph 30 of the

Complaint, which means they are denied.

31. In response to the allegations in Paragraph 31 of the Complaint, Defendants admit

that Exhibit C is attached to the Complaint and appears to include a US Patent and Trademark

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Office registration certificate, the text of which speaks for itself. Defendants deny any

allegations in Paragraph 31 of the Complaint inconsistent with the text of Exhibit C.

32. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 32 of the Complaint, which means they are denied.

33. Defendants admit that Exhibit C is attached to the Complaint and appears to

include a US Patent and Trademark Office TSDR record printout, the text of which speaks for

itself. Defendants deny any allegations in Paragraph 33 of the Complaint inconsistent with the

text of Exhibit C.

34. Defendants admit that Exhibit C is attached to the Complaint and appears to

include a US Patent and Trademark Office TSDR record printout, the text of which speaks for

itself. Defendants deny any allegations in Paragraph 34 of the Complaint inconsistent with the

text of Exhibit C.

35. Defendants admit that Exhibit C is attached to the Complaint and appears to

include a US Patent and Trademark Office TSDR record printout, the text of which speaks for

itself. Defendants deny any allegations in Paragraph 35 of the Complaint inconsistent with the

text of Exhibit C.

36. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 36 of the Complaint, which means they are denied.

37. Defendants admit that Exhibit C is attached to the Complaint and appears to

include a US Patent and Trademark Office registration certificate, the text of which speaks for

itself. Defendants deny any allegations in Paragraph 37 of the Complaint inconsistent with the

text of Exhibit C.

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38. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 38 of the Complaint, which means they are denied.

39. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 39 of the Complaint, which means they are denied.

40. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 40 of the Complaint, which means they are denied.

41. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 41 of the Complaint, including Exhibit A, which means they

are denied.

42. Denied.

43. Defendants admit that Exhibit C is attached to the Complaint and appears to

include a US Copyright Office application filing and a May 10, 2021 refusal letter, the text of

each of which speak for themselves. Defendants deny any allegations in Paragraph 43 of the

Complaint inconsistent with the text of Exhibit C. Defendants lack knowledge or information

sufficient to form a belief about the truth of the remaining allegations in Paragraph 43 of the

Complaint, which means they are denied.

44. Defendants admit that Exhibit C is attached to the Complaint and appears to

include documents entitled “First Reconsideration” and “Notice of Complaint,” the text of each

of which speak for themselves. Defendants deny any allegations in Paragraph 44 of the

Complaint inconsistent with the text of Exhibit C. Defendants lack knowledge or information

sufficient to form a belief about the truth of the remaining allegations in Paragraph 44 of the

Complaint, which means they are denied.

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45. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 45 of the Complaint, which means they are denied.

46. Denied.

47. Denied.

48. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 48 of the Complaint, which means they are denied.

49. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 49 of the Complaint, which means they are denied.

Defendants specifically deny that Exhibits A-C show that Plaintiff has valuable reputation and

goodwill in the Blue Acorn brand.

50. Denied.

51. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 51 of the Complaint, which means they are denied.

52. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 52 of the Complaint, including Exhibit D, which means they

are denied.

53. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 53 of the Complaint, which means they are denied.

54. Admitted.

55. Admitted.

56. In response to the allegations of Paragraph 56 of the Complaint, Defendants admit

that Exhibit E identifies the nature of “blueacorn.co’s” business to be software.

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57. In response to the allegations of Paragraph 57 of the Complaint, Defendants admit

that the domain name “blueacorn.co” was registered in April 2020. The remaining allegations of

Paragraph 57 are denied.

58. In response to the allegations of Paragraph 58 of the Complaint, Defendants admit

that Blueacorn PPP was created specifically in response to the problem small business owners

were experiencing at the start of the Covid-19 pandemic accessing Paycheck Protection Program

(“PPP”) loan funds through a bank. Blueacorn PPP itself is not a lender. Instead, Blueacorn PPP

is a lender service provider that utilizes technology to work with community lenders as their

online processing and support platform. Any remaining allegations of Paragraph 58 of the

Complaint are denied.

59. As part of its role as a lender service provider, Blueacorn PPP has access to

personally identifiable information and takes great care in protecting the confidentiality of that

information. Any remaining allegations of Paragraph 59 of the Complaint are denied.

60. In response to the allegations of Paragraph 60 of the Complaint, Defendants admit

only that in February and March of 2021 they increased their online marketing efforts. Any

remaining allegations of Paragraph 60 of the Complaint are denied.

61. Defendants admit that on or about April 16, 2021, Blue Acorn PPP, LLC was

established as a parent corporate entity, and that the text of Exhibit E speaks for itself. Any

remaining allegations of Paragraph 61 of the Complaint are denied.

62. In response to the allegations of Paragraph 62 of the Complaint, Defendants admit

that they have previously promoted their businesses through the websites “blueacorn.co,”

“blueppp.net,” “blueppp.com,” and “howndppp.com,” but that Defendants are no longer

accepting or processing new applicants. Defendants further admit that the website

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“getblueacorn.com” is still active as a website for Defendants’ customers to log into and reflects

that the website is not affiliated with Plaintiff. Except as admitted, the remaining allegations of

Paragraph 62 of the Complaint are denied.

63. In response to the allegations of Paragraph 63 of the Complaint, Defendants admit

that they have previously promoted their businesses through the websites “blueacorn.co,”

“blueppp.net,” “blueppp.com,” and “howndppp.com,” and that these websites utilized a

questionnaire, but since May 30, 2021, Defendants are no longer accepting or processing new

applicants though these websites. Defendants further admit that the website “getblueacorn.com”

is still active as a website for Defendants’ customers to log into and reflects that the website is

not affiliated with Plaintiff. Except as admitted, the remaining allegations of Paragraph 63 of the

Complaint are denied.

64. In response to the allegations of Paragraph 64 of the Complaint, Defendants admit

that they have previously promoted their businesses through the websites “blueacorn.co,”

“blueppp.net,” “blueppp.com,” and “howndppp.com,” and that these websites utilized a

questionnaire, but Since May 30, 02021, Defendants are no longer accepting or processing new

applicants. Except as admitted, the remaining allegations of Paragraph 64 of the Complaint are

denied.

65. In response to the allegations of Paragraph 65, Defendants admit only that they

have customers with addresses in North Carolina. Defendants lack knowledge or information

sufficient to form a belief about the truth of the remaining allegations in Paragraph 65 of the

Complaint, which means they are denied.

66. In response to the allegations of Paragraph 66 of the Complaint, Defendants admit

that beginning in 2021, Blueacorn PPP increased marketing and utilized several affiliates to

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market their services. These affiliates were independent third-party companies that advertised to

generate customer leads to Blueacorn PPP. Blueacorn PPP has since ceased all outside

marketing activities for PPP loans. Except as herein admitted, the remaining allegations of

Paragraph 66 are denied.

67. In response to the allegations of Paragraph 67 of the Complaint, Defendants admit

only that they advertised on certain social media platforms Blueacorn PPP has since ceased all

outside marketing activities for PPP loans. Except as herein admitted, the remaining allegations

of Paragraph 67 are denied.

68. In response to the allegations of Paragraph 68 of the Complaint, Defendants admit

only that they have engaged in nationwide marketing and advertising. Any remaining allegations

of Paragraph 68 are denied.

69. In response to the allegations of Paragraph 69 of the Complaint, Defendants admit

only that they have engaged in nationwide marketing and advertising, including on radio and

billboards. Any remaining allegations of Paragraph 69 are denied.

70. In response to the allegations of Paragraph 70 of the Complaint, Defendants admit

only that they have used the trademark “BLUEACORN”, like many other businesses, for

services wholly unrelated to those of Plaintiff. Defendants deny any remaining allegations of

Paragraph 70.

71. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 71 of the Complaint, including Exhibit G, which means they

are denied.

72. Denied.

73. Denied.

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74. Denied.

75. Denied.

76. Denied.

77. In response to the allegations of Paragraph 77 of the Complaint, Defendants admit

only that they have customers with addresses in North Carolina. The remaining allegations of

Paragraph 77 are denied.

78. Denied.

79. In response to the allegations of Paragraph 79 of the Complaint, Defendants admit

that beginning in 2021, Blueacorn PPP utilized several affiliates to market their services. These

affiliates were independent third-party companies that advertised to generate customer leads to

Blueacorn PPP. One of these affiliates posted a promotional video on YouTube that included a

“blue acorn” logo that is referenced in the Verified Complaint filed by Plaintiff without prior

knowledge of, or approval by, Blueacorn PPP. Except as admitted herein, the remaining

allegations of Paragraph 79 of the Complaint are denied.

80. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 80 of the Complaint, which means they are denied.

81. Denied.

82. Denied.

83. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 83 of the Complaint, which means they are denied.

84. Denied.

85. Upon information and belief, Defendants admit that Plaintiff has received

telephone calls and other correspondence from people and entities apparently attempting to reach

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Defendants. Defendants deny that these misdirected communications are evidence of confused

customers and state that whether any marks associated with Defendants are confusingly similar

to Plaintiff’s marks are not factual statements, but legal conclusions and therefore require no

response. Any remaining allegations of Paragraph 85 of the Complaint are denied.

86. Upon information and belief, Defendants admit that Plaintiff has received

telephone calls and other correspondence from people and entities apparently attempting to reach

Defendants. Defendants deny that these misdirected communications are evidence of confused

customers and state that whether any marks associated with Defendants are confusingly similar

to Plaintiff’s marks are not factual statements, but legal conclusions and therefore require no

response. Defendants lack knowledge or information sufficient to form a belief about the truth

of the remaining allegations in Paragraph 86 of the Complaint, including Exhibit F, which means

they are denied.

87. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 87 of the Complaint, which means they are denied.

88. Upon information and belief, Defendants admit that Plaintiff has received

telephone calls and other correspondence from people and entities apparently attempting to reach

Defendants. Defendants deny that these misdirected communications are actionable against

them and state that whether any marks associated with Defendants are confusingly similar to

Plaintiff’s marks are not factual statements, but legal conclusions and therefore require no

response. Defendants lack knowledge or information sufficient to form a belief about the truth

of the remaining allegations in Paragraph 88 of the Complaint, including Exhibit F, which means

they are denied.

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89. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 89 of the Complaint, which means they are denied.

90. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 90 of the Complaint, which means they are denied.

91. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 91 of the Complaint, which means they are denied.

92. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 92 of the Complaint, which means they are denied.

93. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 93 of the Complaint, which means they are denied.

94. Denied.

95. Denied.

96. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 96 of the Complaint, which means they are denied.

97. Denied. Since the filing of the Verified Complaint, Blueacorn PPP has instructed

the third-party affiliate to remove the BCI “blue acorn” logo from the YouTube promotional

video in Plaintiff’s Complaint.

98. Denied.

99. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 99 of the Complaint, which means they are denied.

100. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 100 of the Complaint, which means they are denied.

101. Denied.

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102. Denied.

103. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 103 of the Complaint, which means they are denied.

104. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 104 of the Complaint, including Exhibit H, which means

they are denied.

105. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 105 of the Complaint, which means they are denied.

106. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 106 of the Complaint, which means they are denied.

107. Denied.

108. Denied.

109. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 109 of the Complaint, which means they are denied.

110. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 110 of the Complaint, which means they are denied.

111. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 111 of the Complaint, which means they are denied.

112. Denied.

113. Denied.

114. Defendants admit that Exhibit I is a copy of a letter that Defendants received after

outside general counsel for Defendants inquired about it. Defendants deny receiving a copy of

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the letter on or about April 8, 2020 via certified mail. Except as herein admitted, the remaining

allegations of Paragraph 114 of the Complaint are denied.

115. In response to the allegations of Paragraph 115 of the Complaint, Defendants

deny receiving a copy of the April 8, 2020 letter until after outside general counsel for

Defendants inquired about it following an additional written communication from Plaintiffs.

Except as herein admitted, the remaining allegations of Paragraph 115 of the Complaint are

denied.

116. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 116 of the Complaint, which means they are denied.

117. In response to the allegations of Paragraph 117 of the Complaint, Defendants

admit that on or about May 19, 2021, outside general counsel for Defendants received a copy of

a letter dated May 12, 2021 from counsel for Plaintiff which enclosed a few mail items that had

been forwarded to Plaintiff. Defendants further admit that Exhibit K appears to be a copy of the

May 12, 2021 letter and that Exhibit L, under seal, appears to be a copy of the mailed items

therein enclosed. Except as herein admitted, Defendants lack knowledge or information

sufficient to form a belief about the truth of the remaining allegations in Paragraph 117 of the

Complaint, which means they are denied.

118. In response to the allegations of Paragraph 118 of the Complaint, Defendants

admit that on or about May 27, 2021, outside general counsel for Defendants received a copy of

a letter dated May 26, 2021 from counsel for Plaintiff. Defendants further admit that Exhibit O

appears to be a copy of the May 26, 2021 letter. Except as herein admitted, Defendants lack

knowledge or information sufficient to form a belief about the truth of the remaining allegations

in Paragraph 118 of the Complaint, which means they are denied.

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119. Defendants admit that they received a copy of Exhibit O and that the content of

Exhibit O speaks for itself. Defendants deny any allegations of Paragraph 119 to the contrary.

120. Defendants admit that they received a copy of Exhibit O and that the content of

Exhibit O speaks for itself. Defendants deny any allegations of Paragraph 120 to the contrary.

121. Denied.

122. Defendants, through their outside general counsel, admit reaching out to counsel

for Plaintiff, but deny the remaining allegations of Paragraph 122.

123. Denied.

124. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 124 of the Complaint, which means they are denied.

125. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 125 of the Complaint, which means they are denied.

126. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 126 of the Complaint, which means they are denied.

127. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 127 of the Complaint, which means they are denied.

128. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 128 of the Complaint, which means they are denied.

129. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 129 of the Complaint, which means they are denied.

130. Defendants admit that Plaintiff has filed this action, but the remaining allegations

of Paragraph 130 are denied.

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COUNT 1

131. In response to the allegations of Paragraph 131, Defendants incorporate and

restate their prior responses as stated herein.

132. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 132 of the Complaint, which means they are denied.

133. Denied.

134. Denied.

135. The allegations of Paragraph 135 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 135 are denied.

136. Denied.

137. Denied.

138. Denied.

139. Denied.

140. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 140 of the Complaint, which means they are denied.

141. Denied.

142. The allegations of Paragraph 142 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 142 are denied.

143. Denied.

144. Denied.

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145. The allegations of Paragraph 145 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 145 are denied.

146. Denied.

147. Denied.

148. Denied.

149. Denied.

COUNT II

150. In response to the allegations of Paragraph 150, Defendants incorporate and

restate their prior responses as stated herein.

151. Denied.

152. Denied.

153. Denied.

154. The allegations of Paragraph 154 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 154 are denied.

155. Denied.

156. Denied.

157. Denied.

158. Denied.

COUNT III

159. In response to the allegations of Paragraph 159, Defendants incorporate and

restate their prior responses as stated herein.

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160. Defendants lack knowledge or information sufficient to form a belief about the

truth of the remaining allegations in Paragraph 160 of the Complaint, which means they are

denied.

161. Denied.

162. Denied.

163. Denied.

164. The allegations of Paragraph 164 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 164 are denied.

165. Denied.

166. The allegations of Paragraph 166 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 166 are denied.

167. Denied.

168. Denied.

169. Denied.

170. Denied.

COUNT IV

171. In response to the allegations of Paragraph 171, Defendants incorporate and

restate their prior responses as stated herein.

172. The allegations of Paragraph 172 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 172 are denied.

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173. Defendants admit that Exhibit C is attached to the Complaint and appears to

include a US Copyright Office application filing and a May 10, 2021 refusal letter, the text of

each of which speak for themselves. Defendants deny any allegations inconsistent with the text

of Exhibit C. Defendants lack knowledge or information sufficient to form a belief about the

truth of the remaining allegations in Paragraph 173 of the Complaint, which means they are

denied.

174. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 174 of the Complaint, which means they are denied.

175. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 175 of the Complaint, which means they are denied.

176. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 176 of the Complaint, which means they are denied.

177. Denied.

178. Denied.

179. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 179 of the Complaint, which means they are denied.

180. Upon information and belief, Defendants admit that they have never paid Plaintiff

for any good or service but deny that there has ever been an obligation to do so.

181. Denied.

182. Denied.

183. The allegations of Paragraph 183 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 183 are denied.

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 21 of 28
184. Denied.

185. Denied.

186. Denied.

187. Denied.

188. Denied.

189. Denied.

190. Denied.

191. Denied.

COUNT V

192. In response to the allegations of Paragraph 192, Defendants incorporate and

restate their prior responses as stated herein.

193. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 193 of the Complaint, which means they are denied.

194. Denied.

195. Upon information and belief, Defendants admit that Plaintiff has use Plaintiff’s

marks in North Carolina. Defendants lack knowledge or information sufficient to form a belief

about the truth of the remaining allegations in Paragraph 195 of the Complaint, which means

they are denied.

196. Denied.

197. Denied.

198. Denied.

199. Denied.

200. Denied.

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 22 of 28
201. Denied.

202. Defendants lack knowledge or information sufficient to form a belief about the

truth of the allegations in Paragraph 202 of the Complaint, which means they are denied.

203. Denied.

204. The allegations of Paragraph 204 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 204 are denied.

205. Denied.

206. Denied.

207. The allegations of Paragraph 207 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 207 are denied.

208. Denied.

209. Denied.

210. Denied.

211. Denied.

COUNT VI

212. In response to the allegations of Paragraph 212, Defendants incorporate and

restate their prior responses as stated herein.

213. Denied.

214. Denied.

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 23 of 28
215. The allegations of Paragraph 215 of the Complaint do not appear to be factual

statements, but legal conclusions and therefore require no response. To the extent a response is

necessary, the allegations of Paragraph 215 are denied.

216. Denied.

Defendants specifically deny any allegation not specifically admitted herein or that has

otherwise not been denied through the legal effect of Defendants’ response. Defendants further

deny Plaintiff’s Prayer for Relief.

SECOND AFFIRMATIVE DEFENSE
(No Damages)

Plaintiff has not suffered any recoverable damages.

THIRD AFFIRMATIVE DEFENSE
(Causation)

Plaintiff’s damages, if any, were not proximately caused by Defendants.

FOURTH AFFIRMATIVE DEFENSE
(Causation – Acts of Others)

Plaintiff’s damages, if any, were caused by third parties or by the Plaintiff itself.

FIFTH AFFIRMATIVE DEFENSE
(Fair Use)

The claims of copyright infringement made in the Complaint are bared, in whole or in

part, by the doctrine of fair use.

SIXTH AFFIRMATIVE DEFENSE
(Lack of Originality / Merger)

Plaintiff’s claims are barred because the alleged copyrights are invalid due to the design

consisting of un-protectable idea(s) or being a common shape or design lacking sufficient

originality. Plaintiff’s claims, including their assertion of copyright protection, are barred by the

doctrine of Merger and/or lack sufficient originality to be subject to copyright protection.

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 24 of 28
SEVENTH AFFIRMATIVE DEFENSE
(Lack of Standing for Failure to Comply with 17 U.S.C. Section 411(a)

Plaintiff’s copyright application for its alleged Blue Acorn design has not been registered

by the United States Copyright Office. Furthermore, Plaintiff’s copyright application has not

been finally refused, and in fact, the Plaintiff pleads that it has filed a request for reconsideration.

Therefore, Plaintiff lacks standing to bring its copyright claims.

EIGHTH AFFIRMATIVE DEFENSE
(Failure to Police Trademarks)

Plaintiff has failed to police its mark(s) alleged herein to such an extent throughout the

United States that it has lost its ability to serve as an indicator of source for Plaintiff and should

be deemed abandoned.

NINTH AFFIRMATIVE DEFENSE
(Abandonment)

Plaintiff has abandoned its BLUE ACORN mark(s) with the intention not to resume use.

In addition, with respect to the BLUE ACORN and BLUE ACORN ICI trademarks, Plaintiff,

parent company, used the BLUE ACORN and BLUE ACORN ICI trademarks in an unlicensed

manner while the marks were owned by a subsidiary for a period of years as evidenced by

Exhibit A to the Complaint. As a result of such “naked licensing”, Plaintiff has lost all

trademark rights in the BLUE ACORN and BLUE ACORN ICI trademarks.

TENTH AFFIRMATIVE DEFENSE
(Lack of Irreparable Harm)

Plaintiff’s request for injunctive relief is barred because Plaintiff cannot show that it will

suffer any irreparable harm from the alleged conduct.

ELEVENTH AFFIRMATIVE DEFENSE
(Unclean Hands)

Plaintiff’s claims are barred, in whole or in party, by the doctrine of unclean hands.

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 25 of 28
TWELVETH AFFIRMATIVE DEFENSE
(Failure to Mitigate)

Plaintiff has failed to take reasonable steps to mitigate its claimed damages, if any exist.

THIRTEENTH AFFIRMATIVE DEFENSE
(Unconstitutionality)

Civil penalties, punitive damages, and treble damages sought by Plaintiff under its claims

are punitive in nature and will deprive Defendant of Due Process guaranteed under the United

States Constitution and the Constitution of North Carolina. Therefore, the remedies requested by

Plaintiff are unconstitutional and should be barred.

FOURTEENTH AFFIRMATIVE DEFENSE
(Registrant)

Plaintiff’s ACPA claims are barred, in whole or in party, because some or all of the

Defendants are registrants of the alleged domain names.

FIFTHTEENTH AFFIRMATIVE DEFENSE
(Attorneys’ Fees)

This Court should, in its discretion, award reasonable attorneys’ fees and costs to

Defendants pursuant to N.C. Gen. Stat. § 75-16.1 or under other applicable law as Plaintiff

“knew, or should have known, the action was frivolous and malicious.” Alternatively,

reasonable attorneys’ fees should be awarded to Defendants pursuant to 17 U.S.C. § 505.

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 26 of 28
WHEREFORE, Defendants Fin Cap, Inc., Blueacorn PPP, LLC and Blue Oak Forest,

LLC do hereby pray that this Court:

1. Enter an Order denying any and all claims asserted by Plaintiff;

2. Enter an Order denying Plaintiff’s prayer for relief, including but not limited to

money damages and injunctive relief;

3. Dismiss this action and tax all costs, fees, and reasonable attorneys where

applicable by law, against Plaintiff; and

4. Order any such other relief that this Court deems just and proper.

Respectfully submitted, this the 20th day of July, 2021.

NELSON MULLINS RILEY & SCARBOROUGH LLP

/s/ Christopher J. Blake
Christopher J. Blake
N.C. State Bar No. 16433
chris.blake@nelsonmullins.com
D. Martin Warf
N.C. State Bar No. 32982
martin.warf@nelsonmullins.com
4140 Parklake Avenue, Suite 200
Raleigh, North Carolina 27612
Phone: (919) 329-3800
Fax: (919) 329-3799

Counsel for Defendants Fin Cap, Inc., Blueacorn PPP,
LLC and Blue Oak Forest, LLC

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 27 of 28
CERTIFICATE OF SERVICE

I hereby certify that on July 20, 2021, I electronically filed the foregoing with the Clerk

of the Court using the CM/ECF system which will send notification of such filing to all counsel

of record.

NELSON MULLINS RILEY & SCARBOROUGH
LLP

/s/ Christopher J. Blake
Christopher J. Blake
N.C. State Bar No. 16433
chris.blake@nelsonmullins.com
4140 Parklake Avenue, Suite 200
Raleigh, North Carolina 27612

Case 5:21-cv-00251-BO Document 48 Filed 07/20/21 Page 28 of 28

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