You are on page 1of 15

IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK ------------------------------------------------------------------------ X HICKIES, INC., : : Plaintiff, : : v. : Case No.

: ECF Case SOURCE ADVANTAGES, LLC and RED CARPET : Trial by Jury Demanded STUDIOS, LLC, : : Defendant. X ----------------------------------------------------------------------COMPLAINT Plaintiff, Hickies, Inc. (Plaintiff), by and through its attorneys, for its complaint against Defendants Source Advantages, LLC and Red Carpet Studios, LLC (jointly Defendants@), alleges as follows:

NATURE OF ACTION 1. In this action, Plaintiff seeks injunctive relief, lost profits, damages, costs, and attorneys

fees for Defendants acts of willful patent infringement, willful trade dress infringement, false designation of origin, false descriptions, unfair competition, deceptive trade practices, and intent to deceive under the Lanham Act, and common law and statutes of the State of New York.

JURISDICTION AND VENUE 2. This Court has original jurisdiction of this action pursuant to 15 U.S.C. 1121, 28 U.S.C.

1331 and 1338, and 35 U.S.C. 281. 3. Upon information and belief, Defendants regularly and systematically contract to supply

goods and transact business in New York and within this judicial district, and the tortious acts of

Defendants complained of in this Complaint, including, without limitation, the offer for sale, advertisement, and sale of Defendants infringing goods, have been and continue to be committed, and have caused harm to Plaintiff within this judicial district. Without limitation, Defendants maintain an interactive web site, though which Defendants sell the infringing goods at issue in this case. Accordingly, personal jurisdiction exists over Defendants pursuant to CPLR 301 and 302. 4. Venue is proper in this district pursuant to 28 U.S.C. 1391 and 1400.

THE PARTIES 5. Plaintiff is a corporation duly organized and existing under the laws of the State of

Delaware, having its principal place of business in Brooklyn, New York. 6. Upon information and belief, Defendant Source Advantage LLC is a limited liability

company duly organized and existing under the laws of the State of Ohio, having its principal place(s) of business in Cincinnati, Ohio. 7. Upon information and belief, Defendant Red Carpet Studios, LLC is a limited liability

company duly organized and existing under the laws of the State of Ohio, having its principal place(s) of business in Cincinnati, Ohio. 8. Upon information and belief, Defendants are related entities, sharing a business address

and officers, directors, and/or shareholders.

-2-

GENERAL ALLEGATIONS Plaintiffs Patent 9. Plaintiff is in the business of, inter alia, creating, manufacturing, distributing, marketing,

and selling elastic shoe laces (Plaintiffs Products or the Products). 10. Plaintiff is the record owner of U.S. Patent No. D686909 for a fastening device (the

Patent), issued July 30, 2013. A copy of the Patent is attached to this Complaint as Exhibit 1. 11. 12. Plaintiff has owned the Patent at all times relevant to this action. The Patent claims and protects the ornamental design for a fastening device, namely

Plaintiffs elastic shoes laces. 13. 14. The Patent is valid. Without the authorization or consent of Plaintiff, Defendants are making, using, and/or

selling products which infringe the Patent (the Infringing Products). More specifically, Defendants are making, using, and/or selling nearly indistinguishable copies of Plaintiffs Products. 15. Defendants are selling the Infringing Products through, inter alia, through its website

http://www.rcsgifts.com/index.htm (the Website).

Plaintiffs Trade Dress 16. Plaintiffs Products are sold in distinctive packaging. The overall visual impression

created by the packaging shall be referred to as Plaintiffs Trade Dress or the Trade Dress.

-3-

17.

While the Trade Dress resides in the overall visual impression created by the packaging,

the features and components making up Plaintiffs Trade Dress include: a. b. c. a 3 piece package including; first, a white plastic tub approximately 5.5 inches x 2.5 inches x .75 inches; second, a white plastic tray designed to fit on a ledge formed into the tub, such that the tray sits above the floor of the tube leaving space thereunder; d. the top of the tray molded to hold and display four of Plaintiffs elastic laces in depressions formed in the tray, in an alternating head-to-toe pattern, the depressions shaped in the configuration of the elastic laces themselves; e. and third, a clear plastic lid designed to slide upon and be retained by a lip formed into the top and a groove formed into the lid; f. the clear plastic lid permitting potential purchasers to view the elastic laces retained in the tray; and g. and graphics on the lid, including the name of the product printed in a contrasting color in a black background and a drawing of white athletic shoes with Plaintiffs Products therein. 18. 19. 20. 21. The Trade Dress is not functional. The Trade Dress is inherently distinctive. The Trade Dress has been used consistently since its introduction. Plaintiffs Products, as sold in the Trade Dress, have enjoyed commercial and critical

success.

-4-

22.

Because of Plaintiff=s exclusive (save for Defendants infringement) and extensive use

and promotion of the Trade Dress, and the sales of the Product packaged in the Trade Dress, the Trade Dress has acquired distinctiveness (or a secondary meaning) and indicates a single source of origin of Plaintiff=s Product, namely, Plaintiff. 23. Plaintiff used the Trade Dress in interstate commerce prior to any of the acts of

Defendant complained of herein, and the Trade Dress is currently in such use. 24. Plaintiff=s use of the Trade Dress has been open, notorious, and continuous since the date

of first use, a time prior to any of the acts of Defendants complained of herein.

Defendant 25. According to the Website, Defendant Red Carpet Studios, LLC is a family run business

since 2000 offering original design in garden gifts and womens fashion accessory products to fine retailers throughout the United States. 26. 27. 28. Among Defendants products are elastic shoe laces (the Infringing Products). The Infringing Products infringe the Patent. The Infringing Products are sold in outer packaging, the overall visual impression of

which mimics nearly exactly Plaintiffs Trade Dress. 29. The overall visual impression created by Defendants packaging (the Infringing Trade

Dress) include the following features and components: a. a 3 piece package including;

-5-

b.

first, a white plastic tub very slightly larger than the tub of Plaintiff Trade Dress;

c.

second, a white plastic tray designed to fit on a ledge formed into the tub, such that the tray sits above the floor of the tube leaving space thereunder;

d.

the top of the tray molded to hold and display four of Plaintiffs elastic laces in depressions formed in the tray, in an alternating head-to-toe pattern, the depressions shaped in the configuration of the elastic laces themselves;

e.

and third, a clear plastic lid designed to slide upon and be retained by a lip formed into the top and a groove formed into the lid;

f.

the clear plastic lid permitting potential purchasers to view the elastic laces retained in the tray; and

g.

and graphics on the lid, including the name of the product printed in a contrasting color in a black background and a drawing of a white athletic shoe with Defendants Products therein.

30. Dress. 31.

The Infringing Trade Dress is confusingly and deceptively similar to Plaintiffs Trade

Upon information and belief, Defendants are willfully and intentionally using the

Infringing Trade Dress with the purpose and intent of causing consumer confusion. 32. Defendants are using the Infringing Trade Dress without the authorization or consent of

Plaintiff. 33. Defendants commenced use of the Infringing Trade Dress after Plaintiff built up

extensive and valuable business and goodwill in connection with the Trade Dress.

-6-

34.

Plaintiff and Defendants are engaged in the business of selling the same type of goods,

namely elastic shoe laces, aimed at the same class of customers, and distributed through the same channels of trade. 35. Defendants Products packaged in the Infringing Trade Dress is of inferior quality to

Plaintiffs Product packaged in its Trade Dress. 36. Defendants actions, including the offer for sale, promotion, and sale of the Infringing

Products have injured and interfered with Plaintiffs relationships with its suppliers, distributors, and customers.

COUNT I PATENT INFRINGEMENT 37. Plaintiff repeats and re-alleges each and every allegation contained in the prior

paragraphs. 38. 39. Defendants activities infringe the Patent and thus, constitute patent infringement. Plaintiff is the owner of United States Patent No. D686909, which issued on July 30,

2013 for a fastening device. 40. 41. 42. 43. 44. The Patent is valid and subsisting. Defendants are manufacturing, using, and/or selling products which infringe the Patent. Plaintiff placed Defendant on actual notice of its Patent. Defendants are aware of the Patent, yet continue their infringing activities. Upon information and belief, Defendants conduct and infringement of the Patent are

willful and deliberate.

-7-

45.

Defendants unlawful actions have inferred with Plaintiffs sales by unfairly diverting

sales to Defendants. 46. 47. As a result of the diverted sales, Plaintiff has suffered monetary damages. The acts of Defendants have caused irreparable harm and damage to Plaintiff and caused

Plaintiff to suffer monetary damage in an amount thus far not determined. 48. Based upon Defendants acts of willful infringement, rendering this as an exceptional

case, Plaintiff is entitled to injunctive relief, monetary damages, treble damages, costs, and attorneys fees.

COUNT II TRADE DRESS INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, FALSE DESCRIPTION AND UNFAIR COMPETITION 49. 50. Plaintiff repeats and re-alleges each allegation contained in the prior paragraphs. The aforementioned acts of Defendants have caused and will continue to cause a

likelihood of confusion in the minds of the trade and the public, and will damage Plaintiff=s reputation for exclusivity in connection with the Trade Dress, as well as for quality and reliable merchandise. 51. Defendants acts constitute trade dress infringement and the use of a false designation of

origin, a false representation, and unfair competition, by inducing the erroneous belief that the product contained within Defendants Infringing Trade Dress is in some manner affiliated with, originate from, or are sponsored by Plaintiff, and by misrepresenting the nature and origin of Defendants Products, all in violation of Lanham Act 43(a), 15 U.S.C. 1125(a).

-8-

52.

Defendants acts are willful, intentional, unfair, untrue, and deceptive, and they tend to

mislead, deceive and confuse, and will have the result of misleading, deceiving and confusing the public to believe that Defendants and/or the products contained in its Infringing Trade Dress is affiliated with, sponsored or controlled by Plaintiff. As a consequence, Defendants have traded upon, and gained public acceptance and other benefits from Plaintiff=s favorable reputation, which has accordingly been placed at risk by Defendants illegal acts and conduct. 53. Defendants unlawful actions have interfered with Plaintiffs sales, have unfairly diverted

sales to Defendants, and have caused Plaintiff monetary damage. 54. Defendants have caused irreparable harm and damage to Plaintiff and will continue to

cause irreparable harm to Plaintiff, and have caused Plaintiff to suffer monetary damage in an amount thus far not determined. 55. Plaintiff has no adequate remedy at law for the injury alleged in this count, and said

injury is, in part, intangible in nature and not capable of being fully measured or valued entirely in terms of monetary damages. COUNT III INJURY TO BUSINESS REPUTATION and DECEPTIVE ACTS AND PRACTICES 56. 57. Plaintiff repeats and re-alleges each allegation contained in the prior paragraphs. The forgoing acts of Defendants constitute unfair competition and infringement of the

Trade Dress.

-9-

58.

The forgoing acts of Defendants have and will create a likelihood of injury to the

business reputation of Plaintiff, in violation of New York Gen. Bus. Law 360-l, for which Plaintiff is entitled to injunctive relief. 59. The foregoing acts of Defendants constitute willful, deceptive acts and practices in the

conduct of business, trade and/or commerce, in violation of New York Gen. Bus. Law ' 349, for which Plaintiff is entitled to injunctive relief, actual damages, treble damages, punitive damages, attorneys= fees, and costs.

COUNT IV COMMON LAW TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION 60. 61. Plaintiff repeats and re-alleges each allegation contained in the prior paragraphs. The acts of Defendants infringe the Trade Dress, and constitute trade dress infringement

in violation of the common law of the State of New York. 62. Defendants misappropriated Plaintiff=s Trade Dress, and took advantage and made use of

Plaintiff=s efforts and good will, and have otherwise unfairly competed with Plaintiff, in violation of the common law of the State of New York. 63. Defendants intentionally and willfully infringed and misappropriated Plaintiff=s Trade

Dress, took advantage and made use of Plaintiff=s efforts and good will, and otherwise unfairly competed with Plaintiff with the intent of causing confusion, mistake and deception as to the source of the Infringing Trade Dress and Defendants Products contained therein, and with the intent to palm-off Defendants Products as that of Plaintiff. As such, Defendants have committed unfair competition in violation of the common law of the State of New York.

-10-

64.

The foregoing acts of Defendants have injured and will continue to injure Plaintiff by

depriving it of sales of Plaintiffs Products, by injuring its business reputation, and by passing off Defendants Infringing Trade Dress and Defendants Products contained therein as Plaintiffs Products, all in violation of the common law of the State of New York. 65. Defendants acts of common law trade dress infringement and unfair competition have

caused irreparable harm and damage to Plaintiff and have caused Plaintiff monetary damage in an amount thus far not determined, for which Plaintiff is entitled to its actual damages, Defendants profits, punitive damages, and attorneys= fees and costs. 66. Plaintiff has no adequate remedy at law.

TRIAL BY JURY DEMANDED WHEREFORE, Plaintiff demands judgment against Defendants as follows: A. seq. B. That Defendants conduct willfully infringes the Trade Dress, falsely designate the origin That Defendants conduct willfully infringes the Patent, in violation of 35 U.S.C. 281 et

of Defendants Products contained therein, falsely describes such products and unfairly competes with Plaintiff, in violation of Lanham Act 43(a), 15 U.S.C. 1125. C. That Defendants conduct violates the provisions of New York Gen. Bus. Law 360-l

and 349, and constitutes willful trade dress infringement and unfair competition under the common law of the State of New York.

-11-

D.

That Defendants and its agents, officers, directors, servants, employees, their successors

and assigns, and all others in active concert or participation with Defendants be preliminarily and permanently enjoined from directly or indirectly: i. Using the Trade Dress, and/or Infringing Trade Dress, or any trade dresses which are similar to or are colorable imitations of the Trade Dress, alone or as a part of, or together with any other designs, artwork, word or words, trademark, service mark, trade name, trade dress or other business or commercial designation or any logo, symbol or design in conjunction with the sale, offering for sale, advertising, distributing or promoting of Defendants Products or any skin care products related thereto; ii. Representing by words or conduct that the Infringing Trade Dress or Defendants Products that are contained therein, is authorized, sponsored, endorsed by, or otherwise connected with Plaintiff; iii. Committing any act which, in and of itself, or from the manner or under the circumstances in which it is done, amounts to trade dress infringement, false designation of origin, false description or false representation of the Trade Dress, whereby wholesalers, retailers and/or consumers of such products are deceived into believing that Defendants Infringing Trade Dress, or the products contained therein, emanate from Plaintiff or from a company that is sponsored, authorized, or endorsed by Plaintiff;

-12-

iv.

Taking any action which is likely to put others in a position to sell or palm-off the products of Defendants as the products of Plaintiff or to unfairly compete with Plaintiff;

v.

Otherwise unfairly competing with Plaintiff or committing infringement of Plaintiff rights; and

vi.

Importing, manufacturing, making, using, offering for sale, or sell and goods which infringe the Patent.

E.

That the Court issue an Order directing Defendants: i. To immediately deliver to Plaintiff, under oath and for destruction, all packaging, boxes, and/or containers, which are similar to and/or a colorable imitation of the Trade Dress, in the possession, custody, or control of Defendants; ii. To immediately deliver to Plaintiff, under oath and for destructions, all advertisements, promotional materials, printing devices, catalogs, and/or all of the things that contain images of packaging which are similar to and/or a colorable imitation of the Trade Dress, in the possession, custody, or control of Defendants; iii. To file with the Court and serve on Plaintiff, within thirty (30) days after the service on Defendants of such injunctions, a report in writing and under oath, setting forth in detail the manner and form in which Defendant has complied with the injunction.

F.

That the Court award judgment in favor of Plaintiff for the damages sustained by Plaintiff

and the profits made by Defendants as a result of Defendants wrongful conduct.

-13-

G. H. I.

That the Court award judgment in favor of Plaintiff in the amount of treble damages. That the Court award punitive damages to Plaintiff in an amount to be determined. That the Court award judgment against Defendants for the full costs of this action,

including reasonable attorneys= fees. J. That the Court require a full and complete accounting of all monies received by

Defendants as a result of the manufacture, sale, advertising, and distribution of the Infringing Products, together with an order transferring to Plaintiff any amount found to be due to it. K. For interest on all amounts found to be due to Plaintiff from Defendants, at the prevailing

rate, from the date said amounts or any part thereof became or becomes due. L. That the Court require Defendants to notify their commercial associates, suppliers and

customers, including manufacturers, wholesalers and retailers of said Order. M. That the Court order such other, further, and different relief as the nature of this action

may require and that the Court may deem just and proper. N. That the Court retain jurisdiction of this action for the purpose of enabling Plaintiff to

apply to the Court, at any time, for such further orders and directions as may be necessary or appropriate for the interpretation or execution of any order entered in this action, for the modification of any such order, for the enforcement or compliance therewith, and for the punishment of any violations thereof.

-14-

Dated: Westchester, New York September 27, 2013 Respectfully submitted, LACKENBACH SIEGEL LLP By: _/Robert Golden/ Howard N. Aronson (HA 6743) Robert B. Golden (RG 6157) Attorneys for Plaintiff Lackenbach Siegel Building One Chase Road Scarsdale, New York 10583 (914) 723-4300 (914) 723-4301 haronson@LSLLP.com rgolden@LSLLP.com

-15-