Case 2:15-cv-06015-DRH-AYS Document 17 Filed 12/04/15 Page 1 of 16 PageID #: 97

DORSEY & WHITNEY LLP

Richard H. Silberberg
Bruce R. Ewing
Dai Wai Chin Feman
51 West 52nd Street
New York, NY 10019-6119
(212) 415-9200
Attorneys for Plaintiff Canon U.S.A., Inc.
UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF NEW YORK

CANON U.S.A. INC.,

Plaintiff,
v.

Case No. 2:15-cv-6015-DRH-AYS

AMENDED
COMPLAINT WITH JURY DEMAND

F & E TRADING LLC, a New York Limited

Liability Company, D/B/A BIG VALUE, INC.,
ELECTRONICS VALLEY, ELECTRONICS
BASKET, DAVISMAX, NETSALES AND
SIXTH AVENUE; F & E TRADING LLC, a
New Jersey Limited Liability Company, D/B/A
BIG VALUE, INC., ELECTRONICS
VALLEY, ELECTRONICS BASKET,
DAVISMAX, NETSALES AND SIXTH
AVENUE, AND ALBERT HOULLOU,
Defendants.

Plaintiff Canon U.S.A., Inc. (CUSA), by its attorneys, Dorsey & Whitney LLP, for its
Complaint against defendants F & E Trading LLC d/b/a Big Value, Inc., Electronics Valley,
Electronics Basket, DavisMAX, NetSales and Sixth Avenue (F&E New York); F & E Trading
LLC d/b/a Big Value, Inc., Electronics Valley, Electronics Basket, DavisMAX, NetSales and
Sixth Avenue (F&E New Jersey, and together with F&E New York, F&E) and Albert Houllou
(Houllou, and together with F&E, Defendants), alleges, upon personal knowledge as to
matters pertaining to itself and upon information and belief as to all other matters, as follows:

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Introduction
1.

This is a case brought to halt Defendants repeated violations of CUSAs trademark

2.

CUSA is one of the most successful U.S. suppliers of printing, photographic and

rights.

imaging equipment and related goods, with a long history of marketing and selling high quality
products bearing the CANON trademark. Among CUSAs many businesses is the importation,
marketing, distribution and sale of CANON-brand cameras under famous trademarks that CUSA
has licensed exclusively from its parent, Canon Inc. (CINC) for use in the U.S. CUSA imports,
markets, distributes and sells genuine CANON-brand cameras intended for use and resale in the
U.S. (Genuine CANON Cameras).
3.

In contrast, Defendants have built a substantial component of their business in the

U.S. by marketing, selling and distributing cameras bearing the CANON trademark that are not
genuine, because such goods are either intended for use and resale in Asia or Europe, or are
otherwise materially different from Genuine CANON Cameras sold in the U.S. (collectively,
Gray Market Cameras). Defendants are not authorized dealers or resellers of Genuine CANON
Cameras.
4.

Specifically, as set forth herein, Defendants have marketed, distributed and sold in

the U.S. many Gray Market Cameras that are materially different from Genuine CANON Cameras
in multiple respects, including, without limitation:
a. Serial numbers that are either missing, counterfeit or mutilated;
b. Lack of manufacturers warranties or inferior warranty coverage;
c. Packaging that does not accurately describe the products contained therein;

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d. The inclusion of cheap photocopies of product operating manuals, as opposed

to the genuine manuals that accompany Genuine CANON Cameras; and
e. Power supplies and accessories that are manufactured by third parties and/or
are not compliant with applicable laws, regulations and certifications.
5.

In light of the material differences between Genuine CANON Cameras and Gray

Market Cameras, Defendants sale of Gray Market Cameras within the U.S. irreparably harms
CUSA and will continue to harm CUSA unless and until such conduct is enjoined.
6.

The infringing acts of Defendants described herein are those known to CUSA at

this time, but it is possible, if not likely, that further violations of CUSAs intellectual property and
other rights will come to light as this litigation progresses. Thus, Defendants wrongdoing as
described herein should not be viewed as an exhaustive recitation of all of Defendants ongoing
violations of CUSAs rights.
Parties
7.

CUSA is a New York corporation having its principal place of business at One

Canon Park, Melville, New York 11747.

8.

Upon information and belief, defendant F&E New York is a New York limited

liability company formed by Houllou in 2008, with a registered service address of 337 East 89th
Street, Brooklyn, New York 11236, and a principal place of business at 245 Belmont Drive in
Somerset, New Jersey 08873.
9.

Upon information and belief, defendant F&E New Jersey is a New Jersey limited

liability company formed by Houllou in 2010, with a principal place of business located at 245
Belmont Drive in Somerset, New Jersey 08873.

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10.

Upon information and belief, F&E New York and F&E New Jersey do or have

done business as F&E Trading, Big Value, Inc., Electronics Valley, Electronics Basket,
DavisMAX, NetSales and Sixth Avenue (collectively, the DBAs).
11.

F&E is a wholesaler and retailer of consumer electronics, including cameras, doing

business primarily on the Internet through the domain names www.fetrading.com,

www.bigvalueinc.com, and www.6aveexpress.com (collectively, the Websites), and Internet
marketplaces, including but not limited to the websites www.ebay.com, www.amazon.com, and
www.rakuten.com (collectively, the Marketplaces).
12.

Upon information and belief, defendant Houllou is an individual residing at 3925

Bedford Avenue, Brooklyn, New York 11229. Upon information and belief, at all relevant times,
Houllou is and has been the President and CEO of F&E, and online biographies of Houllou
describe him as having a leadership role with the company who is responsible for overseeing all
daily operations, including business development, strategic planning, and sales operations. He
also oversees the board of directors, manages staff, and makes key decisions about the direction of
the firm. As part of his role at F&E, Houllou directly and personally participates and participated
in the acts of trademark infringement and unfair competition described herein, with full knowledge
that such activity is in violation of CUSAs trademark rights.
Jurisdiction and Venue
13.

This is a civil action arising out of Defendants violations of CUSAs trademark

rights in violation of 43(a)(1)(A) of the Trademark Act of 1946, as amended (the Lanham
Act), 15 U.S.C. 1125(a)(1)(A); and for unfair competition under the common law of the State of
New York.

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14.

Subject matter jurisdiction is conferred upon this Court by 28 U.S.C. 1331 and

1338(a), which confer original jurisdiction upon this Court for all civil actions arising under the
laws of the United States and any act of Congress relating to trademarks, respectively. In addition,
supplemental jurisdiction over related state law claims is conferred upon this Court by 28 U.S.C.
1367(a).
15.

Defendants F&E New York and Houllou are located in the State of New York and

this District and are therefore subject to personal jurisdiction in this proceeding under New York
CPLR 301. Defendant F&E New Jersey is subject to personal jurisdiction in this proceeding under
New York CPLR 302(a), inter alia, by virtue of its intentional shipment into New York of
merchandise that violates CUSAs intellectual property rights as described herein.
16.

Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(b) and (c).
CUSAs Business

17.

CINC is the owner of the CANON trademark (the CANON Mark), which has

been used in the U.S. for decades with, among many other things, cameras, camera accessories and
related goods.
18.

CINC has exclusively licensed the CANON Mark to CUSA for use in the U.S. in

connection with, among many other things, cameras, camera accessories and related goods.
19.

As the exclusive licensee of the CANON Mark, CUSA has express authority to

take action to prevent actual or threatened infringement of such Mark.

20.

For decades, CUSA has imported, marketed, distributed and sold a wide range of

Genuine CANON Cameras within the State of New York and elsewhere through interstate
commerce, all of which bear the CANON Mark.

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21.

These products have been and are now extensively advertised through the Internet,

television, magazines, newspapers, brochures, trade shows and other means.

22.

Through CUSAs extensive sales of Genuine CANON Cameras, the public has

come to recognize CANON-brand cameras as being of excellent quality and reputation.

23.

CUSAs advertising and promotional activities involving Genuine CANON

Cameras bearing the CANON Mark have been continuous and have been for the purpose of
acquainting the public with the excellent quality of CANON-brand products so that consumers
may, with knowledge and confidence, purchase and use products bearing such Mark.
24.

By reason of their high quality and as a result of CUSAs continued and extensive

sales, advertising and promotion, CANON-brand cameras sold under the CANON Mark enjoy an
excellent reputation among the public.
25.

The CANON Mark is a symbol of substantial goodwill among consumers that has

been obtained by CUSA and CINC over time that is of great value to CUSA in the conduct of its
business.
26.

CUSA maintains quality control over its exclusively licensed Genuine CANON

Cameras by selling such products directly to authorized retailers. Furthermore, CUSA monitors
the market and investigates the distribution and sale of non-genuine goods when evidence of
illegal activity appears.

In particular, CUSA investigates merchandise offered for sale at

unauthorized retail locations, because these products are often defaced and/or materially different
products that are sold in violation of CUSAs trademark rights and may implicate consumer safety
concerns.
27.

The complete and unaltered, exclusively-licensed CANON Mark appearing on the

packaging of Genuine CANON Cameras is a material aspect of Genuine CANON Cameras, and

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CUSA does not authorize any of its products bearing such Mark to be modified, defaced or
damaged in any way.
CUSAs Genuine CANON Cameras
I.

Generally
28.

CUSA exclusively deals in Genuine CANON Cameras that include important

features to protect consumers.

29.

Genuine Cameras distributed by CUSA are localized to meet the needs of

customers in the U.S. market and are engineered to comply with local safety regulations,
governmental requirements and certifications.
30.

Accordingly, Genuine CANON Cameras are sold, marketed and distributed by

CUSA with multiple material characteristics, many of which are distinct to the U.S. market. These
material characteristics concern, without limitation, serial numbers, power supplies and
accessories, and warranty coverage.
II.

Material Features
a. Serial Numbers
31.

Each Genuine CANON Camera has a unique serial number. Serial numbers appear

as barcodes on the outside and interior of the packaging and on the product itself.
32.

Serial numbers are crucial to CUSAs quality control efforts and are used

particularly to identify CUSA products with quality control issues, product upgrades and to aid in
the event of a product recall or firmware upgrade.
b. Warranty Coverage
33.

Genuine CANON Cameras are covered by robust, enforceable CUSA warranties.

c. Packaging

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34.

Genuine CANON Cameras are sold to consumers in packaging with exterior

descriptions and specifications that accurately communicate to consumers the contents of the
packaging, and what consumers will receive when the packaging is opened.
d. Operating Manuals
35.

Genuine CANON Cameras contain genuine operating manuals that have been

individually printed by CUSA, not photocopied.

e. Power Supplies, Accessories and Certifications
36.

Genuine CANON Cameras are equipped with Canon-brand power supplies and

accessories that are engineered to comply with U.S. safety regulations, governmental requirements
and certifications.
37.

For example, because, in many instances, power accessories used in other countries

are not consistent with U.S. electrical systems, Genuine CANON cameras only include power
accessories that are consistent with such U.S. systems.
38.

Examples of U.S. safety regulations, requirements and certifications include

Underwriters Laboratories (UL) safety certifications and Californias battery charger system
appliance regulation (BC). To comply with UL and BC standards, the power supplies and
accessories of Genuine CANON Cameras must meet certain specifications, and bear UL and BC
identifications.
Defendants Unlawful Conduct
I.

Generally
39.

Defendants, in common with the rest of the trade and public, are well aware of the

CANON Mark, and of the goodwill represented and symbolized thereby. Notwithstanding such
awareness, and in fact by reason of same, Defendants have knowingly and in bad faith marketed,

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distributed, offered for sale and/or sold in the United States materially different products, and/or
directly and actively participated in such activities without authorization and in a manner
deliberately designed to confuse and mislead consumers. Specifically, F&E, directly and through
the DBAs, retails such materially different products to consumers, and Houllou has directed and/or
caused such wrongful conduct in his capacity as the person in charge of F&E. Indeed, in a
corporate

video

touting

F&Es

business

accessible

at

https://www.youtube.com/watch?v=i1i-R563tdg&feature=youtu.be, Houllou describes himself as

the founder of F&E, and as he and others describe F&Es business, images of Gray Market
Cameras bearing the CANON Mark that are stored in F&Es warehouse are depicted prominently.
40.

Defendants bad faith and intentional marketing, distribution and sale of Gray

Market Cameras prominently featuring the CANON Mark, but containing material differences in
serial numbers, warranty coverage, packaging, operating manuals, power supplies and accessories
are intended to, and are likely to, cause actual confusion, mistake or deception of the trade and
public and to cause them to believe that Defendants Gray Market Cameras are the same as
CUSAs products, are authorized, sponsored or approved by CUSA, or are otherwise affiliated or
connected with CUSA.
41.

Defendants unauthorized use of the CANON Mark falsely communicates to

consumers that Defendants are authorized resellers of Genuine CANON Cameras.

42.

Indeed, defendant F&Es Websites contain deceptively altered depictions of the

CANON Mark, as shown in the genuine CANON logo depicted in Exhibit 1 hereto, and the altered
CANON logo shown in Exhibit 2 hereto that is a true and correct printout of an excerpt from the
page entitled Brands We Carry that has been taken from F&Es website accessible at

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http://www.fetrading.com/bmc. Houllou, personally, is the registrant and owner of this domain

name.
43.

Defendants actions deprive CUSA of the opportunity to earn profits from the sale

of Genuine CANON Cameras to consumers. Such profits would be significant, given that the
Genuine CANON Cameras at issue herein are sold to consumers at prices in the thousands of
dollars.
44.

Defendants actions substantially harm CUSA and consumers by placing

non-genuine, materially different cameras into the stream of commerce in the U.S.
45.

Defendants activities have caused and will continue to cause irreparable harm to

CUSA and to the substantial goodwill embodied in the CANON Mark, which has been exclusively
licensed to CUSA, and such acts will continue unless restrained by this Court.
46.

Defendants conduct has also resulted in customer confusion, as consumers who

purchase the Gray Market Cameras believe they are Genuine CANON Cameras when that is not
the case.
47.
II.

CUSA has no adequate remedy at law.

Material Differences

48.

F&E, at the direction of defendant Houllou, is importing Gray Market Cameras

bearing the Canon Mark from Asia and Europe. Many of the Gray Market Cameras are intended
for use and resale only in Asian and European markets.
49.

After importing Asian and European Gray Market Cameras, F&E, at Houllous

direction, is marketing, distributing and selling the Gray Market Cameras to U.S. consumers as
Genuine CANON Cameras through Internet advertising, the Websites, and the Marketplaces
under the identities of F&E Trading and the DBAs.

10

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50.

The Asian and European Gray Market Cameras are not intended for use and resale

in the U.S.
51.

Additionally, F&E, at Houllous direction, has physically obscured, mutilated

and/or defaced serial numbers from Gray Market Cameras, as well as replaced authentic serial
numbers with counterfeit serial numbers.
52.

Material differences between Genuine CANON Cameras and Gray Market

Cameras include the following:

a. Serial Numbers
53.

Many of Defendants Gray Market Cameras either lack serial numbers, contain

counterfeit serial numbers, or contain serial numbers that have been obscured, mutilated and/or
defaced. By way of example only, Exhibit 3 hereto depicts a Gray Market Camera purchased in
November 2014 from Sixth Avenue, one of the DBAs, at a price of more than $2,500. The original
serial number was removed from the camera body and box replaced with blank serial number
labels that easily peel off.
54.

Such defacements damage the goodwill inherent in CUSAs well-regarded

CANON brand, subvert CUSAs quality control procedures, and mislead consumers, who are
unaware that, in the event of a problem with their camera, CUSAs ability to fix that problem will
be impeded due to the absence of the authentic serial number. In addition, to the extent CUSA
needs to implement a product recall or issue a firmware upgrade, the absence of authentic serial
numbers from Gray Market Cameras makes doing so materially more difficult or, in some cases,
impossible for CUSA to administer the recall or upgrade, and/or for customers to receive the
benefits of such recall or upgrade.
b. Warranty Coverage

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55.

Many Gray Market Cameras sold by Defendants either lack warranty coverage

altogether, or have warranty coverage that is inferior to that accompanying Genuine CANON
Cameras.
56.

By way of example, Gray Market Cameras frequently have no warranty coverage

whatsoever.
57.

By way of further example, Exhibit 4 hereto depicts the warranty that accompanied

the Gray Market Camera purchased in November 2014 from Sixth Avenue, and Exhibit 5 depicts a
copy of the genuine CUSA warranty for the same model camera. The Gray Market Camera
warranty depicted in Exhibit 4 contains multiple material differences from the genuine CUSA
warranty depicted in Exhibit 5, which appear designed to minimize Defendants warranty
obligations, to the detriment of consumers. For example, in contrast to the genuine CUSA
warranty, the Gray Market Camera warranty states that it (i) is void unless the product is registered
within thirty days of purchase, (ii) is only valid for 90 days on labor and (iii) excludes
software-related defects and various accessories.
58.

These material differences in warranty coverage damage the goodwill inherent in

CUSAs well-regarded CANON brand and cause consumers to believe, wrongly, that it is CUSA
providing such nonexistent or inferior warranty coverage for the cameras they have purchased, as
opposed to F&E, as directed by Houllou, that is actually responsible.

c. Incorrect Packaging
59.

Gray Market Cameras purchased by CUSA from Defendants have been received in

the wrong boxes in a number of instances.

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60.

By way of example only, as shown in Exhibit 6 hereto, a Gray Market Camera body

(i.e. the camera without the lens) purchased in June 2014 from Big Value, one of the DBAs, at a
price of more than $2,000, was received in packaging intended for the full camera kit (i.e. with the
lens). What Defendants have done is remove the lens and sold it separately, and then marketed the
Gray Market Camera body alone without bothering to change the kit packaging.
61.

The material differences in what the Gray Market Camera packaging tells

consumers they are receiving, and what they are actually receiving, damage the goodwill inherent
in CUSAs well-regarded CANON brand and cause consumers to believe, wrongly, that it is
CUSA that is marketing Genuine CANON Cameras in this way when, in reality, it is F&E, as
directed by Houllou, that is actually responsible.
d. Photocopied Product Manuals
62.

Gray Market Cameras purchased by CUSA from Defendants contain operating

manuals that are not the genuine manuals supplied by CUSA, but inferior photocopies Defendants
appear to have assembled themselves.
63.

By way of example only, Exhibit 7 hereto depicts a Gray Market Camera purchased

in February 2015 from Big Value, at a price of approximately $2,000, that includes a photocopied
operating manual, not the genuine manual CUSA includes with Genuine CANON Cameras.
64.

The material differences in the operating manuals received by purchasers of Gray

Market Cameras, as compared to what purchasers of Genuine CANON Cameras receive, damage
the goodwill inherent in CUSAs well-regarded CANON brand and cause consumers to believe,
wrongly, that it is CUSA that is including inferior photocopies of operating manuals with Genuine
CANON Cameras, when, in reality, it is F&E, as directed by Houllou, that is actually responsible.
e. Power Supplies, Accessories and Certifications

13

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65.

Gray Market Cameras purchased by CUSA from Defendants contain power

supplies and accessories that are manufactured by third parties and/or are not compliant with
applicable laws and regulations.
66.

As an illustration, Exhibit 8 hereto depicts the Gray Market Camera purchased in

June 2014 from Big Value, accompanied by a battery charger power cord that is manufactured by
a third party, and not by or at the direction of CINC. The battery charger power cord also lacks UL
certification.
67.

Because CINC did not manufacture or direct the manufacture of the battery charger

power cord depicted in Exhibit 8, CUSA and CINC cannot guarantee the safety and quality of the
battery charger power cord.
68.

Other Gray Market Cameras are sold with Canon-brand battery chargers that lack

BC certification identifiers, which is required by certain state regulations.

69.

The material differences in the Gray Market Cameras power supplies, accessories

and certifications, as compared to what purchasers of Genuine CANON Cameras receive, damage
the goodwill inherent in CUSAs well-regarded CANON brand and cause consumers to believe,
wrongly, that it is CUSA that is marketing Genuine CANON Cameras in this way when, in reality,
it is F&E, as directed by Houllou, that is actually responsible.

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FIRST CLAIM FOR RELIEF

Violations of Section 43(a)(1)(A) of the Lanham Act
70.

CUSA repeats and realleges each and every allegation set forth in paragraphs 1

through 69 hereof as if fully set forth herein.

71.

Defendants conduct constitutes infringement, unfair competition and the use of

false designations of origin and false descriptions and representations in violation of Section
43(a)(1)(A) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A), with respect to the CANON Mark.
SECOND CLAIM FOR RELIEF
Common Law Unfair Competition
72.

CUSA repeats and realleges each and every allegation set forth in paragraphs 1

through 71 hereof as if fully set forth herein.

73.

Defendants

conduct

constitutes

unfair

competition

by

passing

off,

misappropriation and unprivileged imitation under common law.

PRAYER FOR RELIEF
WHEREFORE, CUSA prays for a judgment:
1.

Preliminarily and then permanently enjoining and restraining Defendants, their

officers, agents, servants, employees, attorneys, successors or assigns, and all persons or entities
acting in concert or participation with them, or any of them, from infringing the CANON Mark
through the marketing, distribution, offering for sale, sale and/or promotion in the United States of:
(i) the Gray Market Cameras; or (ii) any CANON-brand cameras or related products that
materially differ from Genuine CANON Cameras and related products intended for use and resale
in the United States; or (iii) any other false designation of origin or false description or
representation or any other thing calculated or likely to cause confusion or mistake in the mind of
the trade or public or to deceive the trade or public into believing that Defendants business and
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products or the business and products sold by them are in any way associated or affiliated with or
related to CUSA or CUSAs lines of goods as described herein;
2.

Directing Defendants to file with the Court and serve on counsel for CUSA, within

thirty (30) days after entry of any injunction issued by the Court in this action, sworn written
statements as provided in 15 U.S.C. 1116;
3.

Directing Defendants to account to CUSA for their profits arising from the conduct

complained of herein, pursuant to 15 U.S.C. 1117(a);

4.

Awarding CUSA its actual damages incurred as a consequence of Defendants

wrongful conduct as described herein, pursuant to 15 U.S.C. 1117(a);

5.

Awarding CUSA its reasonable attorneys fees, taxable costs, and disbursements of

this action, pursuant to 15 U.S.C. 1117; and

6.

Awarding CUSA such other and further relief as the Court deems just and proper.
JURY DEMAND
Plaintiff demands a trial by jury on all of its claims so triable.

Dated:

New York, New York

December 4, 2015

DORSEY & WHITNEY LLP

By: /s/ Richard H. Silberberg
Richard H. Silberberg
silberberg.richard@dorsey.com
Bruce R. Ewing
ewing.bruce@dorsey.com
Dai Wai Chin Feman
chinfeman.daiwai@dorsey.com
51 West 52nd Street
New York, NY 10019-6119
(212) 415-9200
Attorneys for Plaintiff Canon U.S.A., Inc.

16