JODGESMTON

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
14 CV
72W5
Civ. Action No. BHH LLC and E. Mishan & Sons, Inc.,
Plaintiffs,
v. COMPLAINT
p :"u
I
r< -"-
GO
O
Kenu, Inc.,
Defendant.
Plaintiffs, BHH LLC and E. Mishan & Sons, Inc., by their attorneys, for their
complaint against Defendant Kenu, Inc. allege upon knowledge as to plaintiffs, and
otherwise upon information and belief, as follows.
The Parties
1. Plaintiff, BHH LLC is a limited liability company duly organized and existing
under the laws of the State of New York, with its principal place of business at 230 Fifth
Avenue, New York, New York 10001 (hereinafter referred to as "BHH").
2. E. Mishan &Sons, Inc., is a corporation duly organized, existing and qualified
to do business under the assumed trade name "Emson," under the laws of the State of
New York, with its principal place of business at 230 Fifth Avenue, New York, New York
10001 (hereinafter referred to as "Emson").
-ri
3. Defendant, Kenu, Inc., is a corporation organized and existing underthe laws
of the State of Delaware with a place of business inSan Francisco, California (hereinafter
referred to as "Kenu" or "Defendant" or both).
Jurisdiction and Venue
4. This action arises under the laws of the United States, specifically Titles 15
and 35 of the United States Code. This Court has jurisdiction over the subject matter of
this action pursuant to (I) 15 U.S.C. 1121(a); (ii) 35 U.S.C. 1 et. seq.; 28 U.S.C.
1331 and 1338(a); 15 U.S.C. 1051 etseq.; and (Hi) 28 U.S.C. 1367(a), pursuant to the
principles of supplemental jurisdiction. Further, because this action presents an actual
controversy with respect to trademark and patent infringement, the Court may grant the
declaratory relief sought pursuant to 28 U.S.C. 2201 and 2202.
5. In addition, this Court has original jurisdiction under 28 U.S.C. 1332(a)(1),
in that it is a civil action between a citizen of different States in which the amount in
controversy exceeds $75,0000, exclusive of interests and costs.
6. Venue properly lies in this judicial district pursuant to 28 U.S.C. 1391 (b),
1391(c) and 1400.
7. This Court has personal jurisdiction over Defendant because a substantial
portion of the events or occurrences giving rise to the claims at issue herein arose within
this judicial district, because the Defendant availed itself of the privilege of exploiting the
trade dress at issue in NewYork and by reason of Defendant's advertising, sales activities
and other contacts in the State of New York. Defendant is transacting business within this
district; derives substantial revenue from intrastate and interstate commerce within and
2
without this district having injurious consequences within this district, and Defendant is
otherwise within the jurisdiction of this Court.
Factual Background
A. Plaintiffs
8. BHH is the owner of the trademark BELL + HOWELL which it uses for
various products including cameras, flashlights, lanterns, worklights and floor lamps,
personal sound amplifiers, air purifiers, solar chargers, portable humidifiers, USBchargers,
solar chargers, electric shavers, radios and ultrasonic pest repellers.
9. BHH also sells a phone mount that attaches to car vents known as the Bell
&Howell Clever Grip air vent phone mount, a true and accurate image of which is attached
hereto as Exhibit 1.
10. Emson is a family-owned business with offices located in New York City
where it has continuously operated since it was established over 65 years ago.
11. Emson's employees are all located at its offices in New York City where
Emson operates its showroom and maintains its purchase, sales, advertising and other
records of its business.
12. Emson creates, develops, manufactures, purchases and sells a wide range
of consumer products, pet products, tools, flashlights, and personal care products,
backpacks, laptop cases and movie DVDs, among other products, to retail stores,
department stores, mass merchandisers, supermarket chains, drug store chains,
warehouse clubs, mail order catalog companies and through other market channels.
13. Emson, in addition, sells products directly to consumers via direct response
television infomercials, websites and other e-commerce means.
14. Emson has produced and broadcast over three hundred infomercials for
different products.
15. Emson sells various BHH products including the Bell + Howell Clever Grip
air vent phone mount.
16. The Bell + Howell Clever Grip air vent phone holder is sold in packaging and
advertised in advertisements that prominently display the Bell + Howell and Clever Grip
trademarks. A true and accurate copy of the packaging is annexed hereto as Exhibit 2.
17. The Bell + Howell Clever Grip air vent phone holder packaging identifies the
Clever Grip as a Bell + Howell branded product distributed by Emson.
18. Elite Brands, Inc. is licensed by BHH to market and sell certain BELL +
HOWELL branded products but not the Bell + Howell Clever Grip air vent phone mount.
19. The Bell + Howell Clever Grip air vent phone mount is sold on the Internet,
interalia, through the website ofAmazon.com ("Amazon") accessible atwww.amazon.com.
B. Defendant Kenu, Inc.
20. Kenu advertises, offers for sale and sells an air vent phone mount under the
name "Airframe" to retailers, other resellers and consumers in the United States, including
residents of New York located in this Judicial District.
21. Kenu distributes, ships and delivers the Airframe air vent phone mount to
purchasers located in this Judicial District and elsewhere in New York state, including this
Judicial District, in response to orders placed for Kenu's goods.
22. Kenu also advertises and sells goods, including the Airframe air vent phone
mount, throughout the United States through Internet websites.
23. Kenu operates an interactive website atwww.kenu.comdirected to NewYork
residents which, on information and belief, directly markets and sells products, including
the Airframeair vent cell phone mount to residents of NewYork, including residents of this
Judicial District.
24. Kenu also sells the Airframe air vent cell phone mount to national retailers
including Target, Staples, Radio Shack and Brookstone for resale to consumers, including
consumers in New York and this Judicial District.
25. Kenu intentionally directs its sales and offers for sale of goods, including the
Airframe air vent phone mount, to potential purchasers located inthis Judicial District and
elsewhere in New York.
26. On information and belief, the Kenu Airframe air vent phone mount is also
sold through Amazon's website at www.amazon.com.
27. BHH and Emson are competitors of Kenu in the marketing and sale of air
vent phone mounts.
C. Kenu's Cease and Desist Letter and Illegal Acts
28. On August 28,2014, Kenu's attorney sent a letter to Elite Brands, Inc. in New
York City addressed to "Norman Didia, Chief Executive Officer, BELL + HOWELL
PRODUCTS, Elite Brands, inc., 499 7th Avenue, North Tower, 17th Floor, New York, New
York 10001." A copy of the letter is annexed hereto as Exhibit 3.
29. The August 28th letter, interalia, alleges that:
[T]he offer and sale of the Bell + Howell Clever
Grip Air Vent Phone Mount, model 9434, is likely
a violation of Kenu's patent and trade dress
rights related to its AIRFRAME product.
Kenu is the legal owner of United States Design
Patent D690,707 "which we believe covers the
items offered for sale by Bell + Howell and Elite
Brands, Inc. under the name Clever Grip Air
Vent Phone Mount."
The Bell + Howell Clever Grip Air Vent Phone
Mount products, and particularly the design and
appearance of that product, are infringing Kenu's
patent and trade dress rights.
30. In the letter:
Kenu hereby demands that Bell + Howell and
Elite Brands, Inc. immediately cease and desist
from any and all infringing activity
Kenu also requests an accounting of Bell +
Howell sales of its Clever Grip Air Vent Phone
Mount to determine the extent of damages
incurred by Kenu as a result of your infringing
conduct.
31. Elite Brands, Inc. has never sold or offered the Bell + Howell Clever Grip air
vent phone mount for sale.
32. Norman Didia is not now and has never been a chief executive officer or an
employee, member, manager or owner of BHH.
33. The August 28th letter to Elite Brands, Inc. does not specifically identify the
trade dress claimed to be related to Kenu's Airframe product.
34. On information and belief, on August 28, 2014, Kenu sent an electronic
communication to Amazon, a copy of which is attached as Exhibit 4.
35. Kenu's communication to Amazon identifies U.S. design patent D690.707
and alleges that certain products including a Bell + Howell product "violates our design
patent and are using our brand images to sell an imitation product."
36. On information and belief, Kenu's communication refers to the Bell + Howell
Clever Grip air vent phone mount.
37. Kenu'sAugust 28th communication toAmazon does not identify brand images
alleged to be used.
38. Advertisements for the Bell + Howell Clever Grip air vent phone mount on
Amazon's website and elsewhere do not now use, and have never used, images of the
Kenu product to sell the Bell + Howell Clever Grip air vent phone mount.
39. It is visually obvious that the images displayed on the Amazon website for the
Bell + Howell Clever Grip product are images of the Clever Grip product, not a Kenu
product.
40. On August 29, 2014, Amazon emailed Kenu's communication to Emson. A
copy of the Amazon email is attached as Exhibit 5.
41. The Amazon email to Emson, inter alia, requires that:
Amazon.com has received the attached letter
alleging that a E. Mishan & Sons, Inc. product
shown on the Amazon.com web site infringers
patent(s) purportedly owned by Kenu, LLC.
[Pjlease provide us written confirmation that, in
the event Amazon is required to participate, E.
Mishan & Sons, Inc. will defend and indemnify
Amazon in this matter.
42. As a consequence of Kenu's communication to Amazon, Emson has been
required to provide to Amazon and undertake defense and indemnification obligations, not
7
normally required in its ordinary course of business with Amazon, in order to protect its
goodwill and business relationship with Amazon.
43. The appearance of the Bell+ Howell Clever Grip air vent holder and the trade
dress, if any, of the Kenu Airframe product are not likelyto be confused.
44. Kenu's claim of trade dress rights in New York arises at common law and, at
least in part, relate to Kenu's uses and alleged secondary meaning acquired by and arising
from the use of the alleged trade dress of the Kenu Airframe product in the State of New
York and in this Judicial District.
45. On information and belief, Kenu sells and ships products bearing the alleged
trade dress to residents of New York, including residents of this Judicial District.
46. On information and belief, Kenu's claims of trade dress claim and brand
images are couched in intentionally vague and imprecise language and omit factual details
in order to mislead and intimidate licensees and customers of BHH and Emson by
obfuscating the lack of merit of Kenu's claims.
47. On information and belief, Kenu has disparaged the Bell + Howell Clever Grip
air vent phone holder as an imitation product in order to impugn the quality of the product.
48. The appearance of the Bell + Howell Clever Grip air vent phone holder
differs from the appearance of the Kenu Airframe product.
49. The surface ornamentation, overall shape, and shapes of the individual
elements of the Bell + Howell Clever Grip air holder differ from the corresponding elements
of Kenu Airframe product and the design illustrated in the drawings of Kenu's design patent
D690.707.
50. On information and belief, the plainly dissimilar appearance of the Bell +
Howell Clever Grip air vent phone mount and the patented design shown in the drawings
of Kenu's design patent D690.707 are immediately apparent to an ordinary observer.
51. Kenu's design patent infringement claims are not made in good faith.
52. Kenu maliciously, or at least with gross recklessness, has published false and
misleading statements of fact by sending them to Elite Brands, Inc. in New York City and
Amazon with intent to harm the interests of BHH and Emson, or which Kenu either
recognized or should have recognized are likely harm the interests of BHH and Emson.
53. Kenu's statements to Elite Brands, Inc. and Amazon are couched in terms
of "trade dress" and "brand images" without specific identification of such to unfairly
intimate that the Bell + Howell Clever Grip air vent phone holder violates its alleged trade
dress.
54. Kenu's conduct has caused and continues to cause irreparable harm and
damages to BHH and Emson, including but not limited to the following:
a. Significant harm to their goodwill, business reputations and the
reputation of the Clever Grip goods which they provide to customers and licensees.
b. Interference of their business with Amazon requiring Emson, a
business corporation, to undertake the burdens and risks of defense obligations and
indemnification obligations which would not otherwise not be required in the ordinary
course of its business, except for the actions of Kenu.
c. Disparagement of the Bell + Howell Clever Grip air vent phone holder.
55. An actual controversy has arisen and now exists between BHH, Emson and
Kenu in that Kenu alleges that the Bell + Howell Clever Grip air vent phone mount is being
9
sold inviolation of Kenu's alleged trade dress rights, that advertisements of the Clever Grip
product use images of Kenu product in violation of Kenu's rights, that the Clever Grip
product infringes Kenu's design patent D690,707 and because Kenu has directed false,
untrue and dishonest statements to a licensee and customer of BHH and Emson in New
York and elsewhere which disparage the Clever Grip product to the customer and/or
licensee of BHH and Emson, who are competitors of Kenu, for the purpose of injuring
these firms with the likelihood of confusing and deceiving their licensee and customers.
56. Kenu intended the acts above to harm and are directed to BHH and Emson
in their business within the State of New York.
57. Kenu's action cause irreparable injury to BHH and Emson and are likely to
continue to do so unless enjoined by this Court.
CAUSES OF ACTION
Claim One: Unfair Competition
(15 U.S.C. 1125(a))
58. BHH and Emson reallege the allegations set forth above
59. Kenu's actions against BHH and Emson as their competitor constitutes unfair
competition. Their wrongful acts include making false statements to Amazon and Elite
Brands, Inc., falsely claiming that BHH and Emson are using Kenu's brand images to sell
imitation product, falsely claiming that the Bell + Howell Clever Grip air vent phone mount
violates unidentified trade dress rights, and/or falsely claiming that the Clever Grip air vent
10
phone mount infringes design patent D690.707. These acts violate Section 43(a) of the
Lanham Act.
60. BHHand Emson are entitled to an injunction enjoining Kenu from continuing
to engage in such tactics.
61. Kenu's acts have damaged BHH and Emson in an amount to be proven at
trial.
Claim Two: Tortious Interference
(New York Common Law)
62. BHH and Emson reallege the allegations set forth above.
63. BHH and Emson have valid contractual relationships and business
expectancies with Amazon and consumers who purchase the Clever Grip air vent phone
mount through Amazon.
64. Kenu is aware of those contractual relationships and business expectancies.
65. Byengaging inthe actions described above, Kenu intentionally interfered with
BHH and Emson's contractual relationships and business expectancies.
66. Kenu's interference is for an improper purpose and used improper means.
67. Kenu's interference damages BHH and Emson as a result in an amount to
be proven at trial.
Claim Three: Unfair Competition Under New York Law
68. BHH and Emson reallege the allegations set forth above.
11
69. Kenu's acts constitute unfair methods of competition and unfair trade
practices, which are damaging to the public interest in violation of the New York law.
70. Kenu's unfair methods of competition occur in trade or commerce and cause
injury and/or are intended to injure the businesses of BHH and Emson, including the loss
of sales, customers, and goodwill.
71. As a result of Kenu's unfair business practices, BHH and Emson have been
damaged in an amount to be proven at trial, and will be irreparably harmed ifsuch wrongful
conduct is allowed to proceed.
72. BHH and Emson are entitled to their actual damages, an injunction
restraining Kenu's unfair competition, its attorney's fees, and exemplary damages.
Claim Four: Declaratory Judgment
of Non-Infringement of Trade Dress
73. BHH and Emson reallege the allegations set forth above.
74. BHH and Emson have not infringed, and are not infringing, upon trade dress
rights relating to the Kenu Airframe product.
75. Kenu claims that the Bell + Howell Clever Grip air vent phone holder infringes
Kenu's trade dress rights.
76. BHH and Emson dispute this contention, among other reasons, on the
following grounds:
The Kenu trade dress is not inherently distinctive and
has not acquired secondary meaning.
The appearance of the Kenu Airframe product does not
indicate the source of the product.
12
The Bell + Howell Clever Grip air vent phone holder and
the Kenu Airframe product are not likelyto be confused.
77. Accordingly, BHH and Emson seek a judgment of this Court declaring that
the Bell + Howell Clever Gripvent phone holder does not infringe Kenu's trade dress rights.
Claim Five: Declaratory Judgment of
Non-Infringement of Design Patent D690.707
78. BHH and Emson reallege the allegations set forth above.
79. The manufacture, importation, offer for sale, sale and use of the Bell + Howell
Clever Grip air vent phone holder does not infringe U.S. design patent D690,707.
80. Kenu claims that the Bell + Howell Clever Grip air vent phone holder infringes
U.S. design patent D690.707.
81. There exists a substantial and continuing justiciable controversy between
BHH and Emson and Kenu as to the non-infringement of design patent D690,707.
82. BHHand Emson request that the Court enter a declaratory judgment that the
manufacture, importation, offer to sell, sale and use of the Bell + Howell Clever Grip air
vent phone holder does not infringe design patent D690,707.
PRAYER FOR RELIEF
Wherefore, BHH and Emson respectfully request judgment against Kenu, as
follows:
13
1. That the Court issue temporary, preliminary, and permanent injunctive relief against
Kenu, its officers, agents, representatives, servants, employees, attorneys,
successors and assigns, and all others in active concert or participation with them
be enjoined and restrained from continuing to: (a) unfairlycompete with BHH and/or
Emson; (b) interfering with the contractual relationships of BHH and Emson with
their customers; and (c) violating the unfair competition laws of New York; and
disparaging the Bell + Howell Clever Grip air vent phone holder.
2. ThattheCourtenteranOrderdeclaring that manufacture, importation, offerforsale,
sale and use of the Bell + Howell Clever Grip air vent phone holder does not directly
or indirectly infringe U.S. design patent D690,707.
3. That the Court enter an Order declaring that the Bell + Howell Clever Grip air vent
phone holder does not violate Kenu's Airframe trade dress rights, if any.
4. That the Court enter an Order awarding BHHand Emson their actual and exemplary
damages against the Kenu, in an amount to be determined at trial;
5. That the Court enter an Order awarding BHHand Emson their reasonable costs and
attorney's fees; and
6. That the Court grant such additional relief as it deems just and appropriate.
Dated: September 9,2014 ^ ^^
JoNota
14
Angelo Notaro
John Zaccaria
Notaro, Michalos & Zaccaria P.C.
100 Dutch Hill Road, Suite 240
Orangeburg, New York 10962-2100
(845) 359-7700
Attorneys for Plaintiffs