Case 2:15-cv-06019-LDW-AKT Document 17 Filed 12/11/15 Page 1 of 9 PageID #: 96

UNITED STATES DISTRICT COURT

EASTERN DISTRICT OF NEW YORJK
CANON U.S.A., INC.,
No. 2:15-cv-6019 (LDW) (AKT)

Plaintiff,
-against-

DEFENDANTS ANSWER TO
PLAINTIFFS COMPLAINT

GET IT DIGITAL LLC and

ALL NEW SHOP,
Defendants.

Defendants Get It Digital LLC and All New Shop (collectively, Defendants), by
and through their attorneys Emery Celli Brinckerhoff & Abady LLP, for their answer to the
Complaint in this matter, aver as follows in response to the correspondingly numbered
paragraphs of Plaintiffs Complaint:
1.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
2.

As to the first sentence, deny knowledge or information sufficient to form

a belief as to the truth of the allegation. As to the second sentence, admit that among Plaintiffs
businesses is the importation, marketing, distribution, and sale of Canon-brand cameras;
otherwise deny knowledge or information sufficient to form a belief as to the truth of the
allegation. As to the third sentence, deny.
3.

Admit that Defendants are not authorized dealers of Canon products;

otherwise deny.
4.

Deny all of the allegations contained in this paragraph and, as to

subparagraph (e), aver that it states a legal conclusion to which no response is required.

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a.

Deny;

b.

Deny;

c.

Deny;

d.

Deny;

e.

This paragraph states a legal conclusion to which no response is

required. To the extent this paragraph states factual allegations, deny.

5.

Deny.

6.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states factual allegations, deny.

7.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
8.

Admit.

9.

Admit.

10.

Admit, except deny that Defendants function as one unitary entity as a

practical matter, and except as to the final sentence, which states a legal conclusion to which no
response is required.
11.

This paragraph states a legal conclusion to which no response is required.

12.

This paragraph states a legal conclusion to which no response is required.

13.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
14.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.

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15.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
16.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
17.

Admit that Canon-branded products are advertised and deny knowledge or

information sufficient to form a belief as to the truth of the remaining allegations.

18.

Admit that Canon-brand cameras are of excellent quality and reputation;

otherwise deny knowledge or information sufficient to form a belief as to the truth of the
allegation.
19.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
20.

Admit that Canon-brand cameras enjoy an excellent reputation; otherwise

deny knowledge or information sufficient to form a belief as to the truth of the allegation.
21.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states a factual allegation, deny knowledge or information sufficient
to form a belief as to the truth thereof.
22.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
23.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
24.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.

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25.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
26.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
27.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
28.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
29.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
30.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
31.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
32.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
33.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
34.

Admit that examples of U.S. safety regulations, requirements, and

certifications include Underwriters Laboratories safety certifications and Californias battery

charger system appliance regulation. Otherwise deny knowledge or information sufficient to
form a belief as to the truth of the allegation.

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35.

As to the first sentence, admit that Defendants are aware of the Canon

mark; otherwise deny the remaining allegations.

36.

Deny.

37.

Deny.

38.

Deny.

39.

Deny.

40.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states factual allegations, deny allegations.

41.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states factual allegations, deny the allegations.
42.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states a factual allegation, deny.

43.

Admit that Defendants import cameras bearing the Canon mark from the

Asia-Pacific and European regions on the gray market. Otherwise deny, including that these
cameras satisfy the definition of Gray Market Cameras set forth in the Complaint.
44.

Admit that Defendants market, distribute, and sell cameras bearing the

Canon mark, and purchased from the Asia-Pacific and European regions, to U.S. consumers.
Otherwise deny, including that these cameras satisfy the definition of Gray Market Cameras
set forth in the Complaint.
45.

Deny.

46.

Deny.

47.

Deny.

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48.

The first sentence of this paragraph states a legal conclusion to which no

response is required. To the extent the first sentence of this paragraph states a factual allegation,
deny. As to the second sentence, deny knowledge or information sufficient to form a belief as to
the truth of the allegation.
49.

Deny.

50.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegations and, as to the last sentence of the paragraph, aver that it states a legal
conclusion to which no response is required..
51.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
52.

Deny.

53.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
54.

As to the first sentence, deny knowledge or information sufficient to form

a belief as to the truth of the allegation. As to the second sentence, deny.

55.

Deny.

56.

Deny.

57.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
58.

Deny.

59.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states a factual allegation, deny knowledge or information sufficient
to form a belief as to the truth of the allegation.

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60.

Deny.

61.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
62.

Deny knowledge or information sufficient to form a belief as to the truth

of the allegation.
63.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states a factual allegation, deny knowledge or information sufficient
to form a belief as to the truth of the allegation.
64.

Deny.

65.

Defendants repeat and reincorporate their responses to Paragraphs 1

through 64, set forth above.

66.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states a factual allegation, deny.

67.

Defendants repeat and reincorporate their responses to Paragraphs 1

through 66, set forth above.

68.

This paragraph states a legal conclusion to which no response is required.

To the extent this paragraph states a factual allegation, deny.

AFFIRMATIVE DEFENSES
FIRST AFFIRMATIVE DEFENSE
Exhaustion Doctrine / First Sale Doctrine
1.

As a general rule, trademark law does not reach the sale of genuine goods

bearing a true mark even though the sale is not authorized by the mark owner. Polymer Tech.
Corp. v. Mimran, 975 F.2d 58, 61 (2d Cir. 1992). This idea is also referred to as the first sale

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doctrine, as it is in copyright law, insofar as it recognizes that the right of a producer to control
distribution of its trademarked product does not extend beyond the first sale of the product.
Microban Prods. Co. v. API Indus., Inc., No. 14-CV-41, 2014 WL 1856471 (S.D.N.Y. May 8,
2014) (internal quotation marks omitted).
2.

On information and belief, either Plaintiff, Canon USA, Inc., or another

licensee of Canon, Inc., authorized the initial sale of all goods bearing the Canon mark that were
later resold by Defendants.
3.

On information and belief, all goods bearing the Canon mark resold by

Defendants were genuine goods, regardless of whether Defendants had the consent of the
trademark owner or trademark licensee to resell them.
4.

Defendants subsequent resale of genuine Canon goods falls outside the

scope of the trademark owner or licensees right to control the sale of trademarked goods.
SECOND AFFIRMATIVE DEFENSE
Laches
6.

Defendants began reselling goods bearing the Canon mark in or about

7.

Defendants openly and notoriously resold goods bearing the Canon mark.

2006.

Defendants sold such goods on heavily-trafficked public websites such as eBay.

8.

Plaintiff was aware of such resales and unreasonably delayed in asserting

its rights, if any.

9.

Plaintiff passively consented to Defendants conduct by failing to timely

assert its rights, if any.

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10.

Plaintiffs unreasonable delay in asserting its rights, if any, prejudiced

Defendants by leading Defendants to invest in and grow their business under the impression that
Plaintiff passively consented to their activities.
THIRD AFFIRMATIVE DEFENSE
Acquiescence/Estoppel
11.

Plaintiff Canon USA, Inc. was aware that Defendants openly and

notoriously resold goods bearing the Canon mark that they had purchased from Canon
authorized dealers.
12.

Upon information and belief, Plaintiff actively condoned the resale and

transshipment of Canon-branded products from Canon authorized dealers to other resellers.

13. Plaintiffs conduct estops Plaintiff from asserting the claims against
Defendants that are set forth in the Complaint.
Dated: New York, New York
December 11, 2015
EMERY CELLI BRINCKERHOFF &
ABADY LLP
By:

/s
Andrew G. Celli, Jr.
Douglas E. Lieb*
600 Fifth Avenue
10th Floor
New York, NY 10020
(212) 763-5000
acelli@ecbalaw.com
Attorneys for Defendants
Get It Digital LLC and All New Shop
* Admitted pro hac vice

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