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IN THE UNITED STATES DISTRICT COURTFOR THE DISTRICT OF NEBRASKA

Mutual of Omaha Insurance Company, a Nebraska corporation,

Plaintiff,

v.

Oprah Winfrey, an individual, and HarpoProductions, Inc., an Illinois corporation,

Defendants.

Case No. 09cv145

COMPLAINT

(TRIAL REQUESTED IN OMAHA)

COMES NOW Plaintiff Mutual of Omaha Insurance Company and, for its Complaint

against Oprah Winfrey and Harpo Productions, Inc. states the following:

PARTIES

1. Plaintiff Mutual of Omaha Insurance Company (“Mutual” or “Plaintiff”) is a

corporation organized and existing under the laws of the State of Nebraska and maintains its

headquarters and principal place of business at Mutual of Omaha Plaza, Omaha, Nebraska

68175.

2. Upon information and belief, Defendant Oprah Winfrey is an Illinois citizen and

resident with a business address at 110 North Carpenter Street, Chicago, Illinois 60607.

3. Defendant Harpo Productions, Inc. is a corporation organized and existing under

the laws of Illinois with a principal place of business at 110 North Carpenter Street, Chicago, IL

60607.

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4. Upon information and belief, Oprah Winfrey is the owner, chief executive and

alter ego of Harpo Productions, Inc. As used herein, the Defendants will be collectively referred

to as “Harpo” or “Defendants.”

JURISDICTION AND VENUE

5. Jurisdiction in this Court and in the subject matter of this action arises under the

trademark laws of the United States, 15 U.S.C. §§ 1051, et seq.; 28 U.S.C. §§ 1331, 1332 and

1338 as the matter in controversy exceeds the sum or value of $75,000, exclusive of interest and

costs; under the Declaratory Judgment Act, 28 U.S.C. § 2201 and 2202; and under the

supplemental jurisdiction of this Court pursuant to 28 U.S.C. § 1367.

6. This Court may exercise personal jurisdiction over the Defendants based upon

their presence within this judicial district, as well as, upon information and belief, their activities

including their transaction of business within the District of Nebraska.

7. Venue in this Court is proper under 28 U.S.C. § 1391(b) because at all times

relevant to the Complaint the actions complained of herein are alleged to have occurred within

this judicial district.

FACTUAL ALLEGATIONS OF THE COMPLAINT

Plaintiff and “official sponsor of the aha momentSM” Advertising Campaign

8. Plaintiff Mutual is a well-known provider of insurance underwriting services in

this District and throughout the United States.

9. Plaintiff Mutual promotes its business and goodwill by various public service and

business promotions. One such promotion was conceived on or about February of 2008 as

associating Mutual of Omaha insurance and financial services with the company slogan official

sponsor of the aha momentSM and doing so primarily through a public service venue that would



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invite members of the public to share with others significant life experiences, and to do so using

various coined formatives built around the commonly understood term “aha” as part of an

awareness campaign of the importance of insurance and financial products to family well-being.

In fact, the promotion came to employ various and sundry formatives, including “aha story,”

“aha moments,” “aha features,” “aha network,” “aha tour,” “aha newsletter,” “the aha times,”

and “aha on the web” (“Aha Formatives”). A significant platform employed by Mutual for

associating Mutual insurance and financial services with its slogan official sponsor of the aha

moment SM and for promoting free public services through the Aha Formatives, is a website which

has been open and fully operating since February 2009-www.ahamoment.com. A true and

correct screenshot of website home page www.ahamoment.com is attached hereto as Exhibit A.

Mutual has also engaged in television commercial and online media activities.

10. Due diligence and design work upon that promotion began in July 2008. The due

diligence included a professional search for any possible federal trademark, state trademark or

common law trademark rights that might be claimed or owned by others. A true and correct

copy of the summary pages of a July 2008 Thompson and Thompson search are attached hereto

as Exhibit B.

11. That due diligence confirmed the good faith belief and understanding of Mutual

that the formative “aha” was commonly used and understood by the public as an exclamation of

triumph or surprise and that the formative “aha moment” commonly was used and understood to

describe a particular life experience. Consistent with that understanding, there was inserted a

prominent definition question “what is an aha moment?” on the home page of the website,

www.ahamoment.com, as shown by Exhibit A.



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12. That due diligence also confirmed the good faith belief and understanding of

Mutual that there was an opportunity to adopt, use and apply to federally register the slogan

official sponsor of the aha momentSM as a distinctive service mark in connection with Mutual

insurance underwriting services.

13. On August 6, 2008, Mutual prepared and filed at the United States Patent &

Trademark Office (“USPTO”) the application Serial No. 77-540,052 for OFFICIAL SPONSOR

OF THE AHA MOMENT as a service mark in Int Class 036 for the services of “Insurance

underwriting in the field of life, health, disability, dental, long-term care, Medicare supplement,

critical illness, accidental death and dismemberment, hospital income, annuities, retirement plans

and mutual funds.” That application was publicly available to anyone to inspect after August 6,

2008; was published on January 27, 2009 for opposition by anyone who believed the person

would be damaged by such a federal registration; and in the absence of any opposition was

granted a Notice of Allowance on April 21, 2009. A true and correct copy of the official USPTO

status report on Serial No. 77-540,052 is attached hereto as Exhibit C.

The Allegations Of Infringement By Defendants

14. On April 21, 2009, Marc J. Rachman (“Rachman”) contacted Martha K. Zajicek

(“Zajicek”), attorney of record for Serial No. 77-540,052 and Assistant General Counsel to

Mutual. Rachman asserted he was from the New York City law firm Davis & Gilbert LLP and

that he represented Harpo. In Rachman’s April 21, 2009 call to Zajicek he indicated concern

about the approved application Serial No. 77-540,052 and informed Zajicek he would articulate

those concerns in a letter. He also expressed concern that Mutual was confusing consumers

through its advertising campaign. A true and correct copy of the letter that followed on

April 21, 2009 (hereafter referred to as “the Rachman Letter”) is attached hereto as Exhibit D.



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15. The Rachman Letter inter alia wrongfully asserted ownership by Defendants of

some manner of common-law trademark rights, rights of publicity, sponsorship, rights of

designation of origin, etc. all grounded upon or embodied by the simple formative “Aha

Moment.” The letter also accused Mutual of “diluting” Defendants’ alleged trademark rights in

the formative “Aha Moment” as a result of operation of the website www.ahamoment.com and

the associated public service promotion activities of Mutual illustrated within that website and its

current advertising and marketing campaign.

16. The Rachman Letter, titled CEASE & DESIST, demands that Mutual

immediately discontinue its public service promotion, destroy all advertising materials that bear

“Aha Moment,” shut down its website www.ahamoment.com, and expressly abandon the

approved application Serial No. 77-540,052.

17. By its terms, the Rachman Letter is unambiguous and demands that Mutual begin

a “prompt cessation of further use of Infringing Materials” and there is no other resolution or

compromise to be discussed.

18. Zajicek was shocked and amazed at the untimely and unsupportable allegations in

the Rachman Letter, particularly in view of the plainly descriptive nature of all the Aha

Formatives.

19. There was no objective invitation at all to compromise the issues by the plain

language of the Rachman Letter, which created an immediate and present threat to a national and

strategic campaign announced openly in February 2009 and now entering a new and active

phase, with dispatch of the five month and nationwide “aha tour” to Oklahoma City on

May 4, 2009. The “aha tour dates” are set forth in Exhibit A.



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20. Defendants’ conduct of claiming proprietary rights that do not exist has cast a

cloud over Mutual’s national advertising campaign and has caused irreparable harm to Mutual

and threatens Mutual’s substantial investment in the advertising and promotional campaign.

Plaintiff’s Use Does Not Infringe or Unfairly Compete With Any of Defendants’ Legitimate Rights

21. Plaintiff’s use of one or more Aha Formatives in connection with the its public

service promotions, as featured in Mutual publications, television advertising and/or on the web

site, does not infringe any trademark rights, or any other right, under federal or common law or

otherwise, that Defendants may have in their alleged “Aha Moment.”

22. A comparison of the descriptive uses of any of the Aha Formatives, or the slogan

of approved application Serial No. 77-540,052, with the alleged rights in “Aha Moment” being

arrogated by Defendants underscores the differences between the uses. The USPTO approved

OFFICIAL SPONSOR OF THE AHA MOMENT as a composite service mark in Int Class 036

in the face of various other prior “aha” applications or registrations, as illustrated by Exhibit B.

Mutual has not asserted any rights in the formative “aha moment” apart from the mark as a

whole.

23. Moreover, Mutual objectively uses the various Aha Formatives in connection

with advertising and marketing activities in a manner clearly labeled as sponsored by Mutual.

24. There are no metes and bounds at all associated with hopelessly vague trademark

rights being claimed by Harpo in the formative “Aha Moment.” There is no application for

federal registration asserted by the Rachman Letter.

25. Indeed, upon information and belief, Harpo objectively and only uses “Aha!

Moment” in a non-trademark, descriptive sense in O magazine, as shown by the titles of example



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articles. A true and correct copy of example articles from O magazine is attached hereto as

Exhibit E.

26. Harpo does not use “Aha! Moment” as a source of origin and can claim no

proprietary rights to that term.

Third Party Uses Of Aha Formatives

27. In addition to the differences between the use of the various Aha Formatives by

Mutual and those “uses” by Harpo alleged in the Rachman Letter, there are a number of

unrelated third-parties also using various Aha Formatives for various goods and services. A true

and correct sampling of websites demonstrating such uses are attached hereto as Exhibit F.

28. Even if Harpo could demonstrate secondary meaning between Aha Moment and

some goods or services sold in commerce by Harpo, and it cannot, third-party uses in a

descriptive sense of Aha Formatives inherently point to more than a single source.

29. In view of Mutual and various third party uses of the Aha Formatives referred to

herein, Defendants have failed to police their alleged mark and take action against such

third-party uses, have caused their alleged mark to lose any significance it allegedly may have

had as a mark, and have thereby abandoned whatever rights they may have allegedly had in the

mark.

30. In view of the foregoing, Mutual is being, and will likely continue to be, damaged

by the cloud and chill on its legitimate activities because (i) the mark alleged in the Rachman

Letter is merely descriptive; (ii) Harpo has, through acts and omissions, abandoned any rights

they may have had in the alleged mark; and (iii) Harpo is asserting non-existing rights in an

unfair attempt to inhibit, impair and interfere with Mutual’s legitimate right to use in commerce

one or more Aha Formatives.



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An Actual Case Or Controversy Exists

31. An actual case and controversy exists between Plaintiff and Defendants arising

from Defendants’ imminent threat to initiate litigation.

32. Mutual has a right to certainty with respect to its advertising plans and business

activities so that it is not left guessing as to what actions Defendants will take or when.

COUNT I

DECLARATORY JUDGMENT

33. Mutual repeats and realleges each of the allegations in the preceding paragraphs

previously pled in this Complaint as if each were set forth in full herein.

34. Mutual seeks a declaration under 28 U.S.C. §§ 2201 and 2202 that its use of

OFFICIAL SPONSOR OF THE AHA MOMENT or various and sundry “aha” formatives,

including “aha story,” “aha moments,” “aha features,”“aha network,” “aha tour,” “aha

newsletter,” “the aha times” and “aha on the web” in conjunction with a its advertising and

marketing does not infringe or violate the Trademark Laws of the United States, including 15

U.S.C. § 1125, or constitute a false or misleading designation of origin, description of fact or

representation of fact that is likely to cause confusion, to cause mistake, or to deceive as to the

affiliation, connection or association of Mutual with Harpo.

COUNT II




36. Plaintiff seeks a declaration under 28 U.S.C. §§ 2201 and 2202 that its use of





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newsletter,” “the aha times” and “aha on the web” in conjunction with its advertising and

marketing does not infringe or violate the alleged rights of Harpo under the trademark,

anti-dilution, or other laws of Nebraska or any other state, and does not constitute unfair

competition with Defendants under any common law or statutory right of Nebraska or constitute

a false or misleading designation of origin, description of fact or representation of fact that is

likely to cause confusion, to cause mistake, or to deceive as to the affiliation, connection or

association of Mutual with Harpo.

COUNT III




38. Mutual seeks a declaration under 28 U.S.C. §§ 2201 and 2202 that its use of



newsletter,” “the aha times” and “aha on the web” in conjunction with its advertising and

marketing does not infringe or violate the alleged rights of Harpo under Neb. Rev.

Stat. § 20-201, et seq, any common law or statutory right of Nebraska or any other state as to

publicity, sponsorship, or privacy.

COUNT IV




40. Mutual seeks a declaration under 28 U.S.C. §§ 2201 and 2202 that Mutual is the

owner of all rights, title and interest in the slogan OFFICIAL SPONSOR OF THE AHA



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MOMENT for insurance underwriting in the field of life, health, disability, dental, long-term

care, Medicare supplement, critical illness, accidental death and dismemberment, hospital

income, annuities, retirement plans and mutual funds.

COUNT V

COMMON LAW UNFAIR COMPETITION



42. Defendants’ activities as stated herein constitute unfair competition in violation of

the common law of the state of Nebraska.

43. Upon information and belief, Defendants’ wrongful activities have caused, and

unless enjoined by this Court will continue to cause, irreparable injury and other damage to

Mutual’s business, reputation and goodwill in the industry. Mutual has no adequate remedy at

law.

COUNT V

NEBRASKA DECEPTIVE TRADE PRACTICE ACT



45. Defendants’ activities as stated herein constitute unlawful acts and practices in the

conduct of its trade and business in violation of Neb. Rev. Stat. §§ 87-301 - 87-306.

46. Upon information and belief, Defendants’ wrongful activities have caused, and

unless enjoined by this Court will continue to cause, irreparable injury and other damage to

Mutual’s business, reputation and goodwill in the industry. Mutual has no adequate remedy at

law.



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WHEREFORE, Plaintiff Mutual of Omaha Insurance Company prays for relief as

follows:

1. A declaration that use by Mutual of OFFICIAL SPONSOR OF THE AHA

MOMENT or various and sundry ‘aha” formatives, including “aha story,” “aha

moments,” “aha features,”“aha network,” “aha tour,” “aha newsletter,” “the aha times”

and “aha on the web” in conjunction with its advertising and marketing does not

constitute infringement of any rights of, or any form of unfair competition with,

Defendants;

2. A declaration that Mutual is the owner of all rights, title and interest in

OFFICIAL SPONSOR OF THE AHA MOMENT for insurance underwriting in the field

of life, health, disability, dental, long-term care, Medicare supplement, critical illness,

accidental death and dismemberment, hospital income, annuities, retirement plans and

mutual funds;

3. An injunction prohibiting further acts of harassment and threats by

Defendants against Mutual;

4. An injunction prohibiting further interference with Mutual’s businesses,

including its advertising and promotional campaigns described above;

5. An award of costs and reasonable attorneys’ fees incurred in this action;

6. Judgment on Counts I through VI above;

7. Such other and further relief as the Court deems just and proper; and

8. A trial in Omaha for all of its claims.



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Dated this 22nd day of April, 2009.

MUTUAL OF OMAHA INSURANCE COMPANY, Plaintiff

By s/ John P. PassarelliJohn P. Passarelli #16018James M. Sulentic #19610Kutak Rock LLP1650 Farnam StreetOmaha, NE 68102-2186Telephone (402) 346-6000Facsimile (402) [email protected]@kutakrock.com

and

Warren E. Olsen, Pro Hac Vice application forthcomingEdmund J. Haughey, Pro Hac Vice application forthcomingFitzpatrick, Cella, Harper & Scinto975 F. Street, N.W.Suite 400Washington, D.C. 20004-1454Telephone (202) 530-1010Facsimile (202) [email protected] [email protected]



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