Godinger Silver Art v. Hirschkorn - Amended Complaint

Case 1:18-cv-06175-ENV-ST Document 8 Filed 11/28/18 Page 1 of 11 PageID #: 43
IN THE UNITED STATES DISTRICT COURT

FOR THE EASTERN DISTRICT OF NEW YORK
GODINGER SILVER ART LTD. and P&W )

GIFTS LLC, ) Civil No.: 1:18-cv-06175 (ENV)(ST)
)
) FIRST AMENDED COMPLAINT
Plaintiffs, )
)
v. )
)
LIRAN HIRSCHKORN, )
)
Defendant. )
)
Plaintiffs, Godinger Silver Art Ltd. (“Godinger Silver”) and P&W Gifts LLC (“P&W
Gifts,” and with Godinger Silver, “Plaintiffs”) for their Amended Complaint against Defendant
Liran Hirschkorn (“Defendant” or “Hirschkorn”), allege as follows:
THE PARTIES
1. Godinger Silver is a New York limited partnership with a place of business at 63-
15 Traffic Avenue, Ridgewood, New York 11385.
2. P&W Gifts is a New York limited liability company with a place of business at 20
Bond Street, Central Valley, New York 10917. P&W Gifts sells Plaintiffs’ Globe
Decanter and Plaintiffs’ Skull Decanter that are the subject of this First Amended
Complaint.
3. Upon information and belief, Hirschkorn is an individual residing at 6753 173rd
Street, Fresh Meadows, New York 11365.
LEGAL\38940149\3
JURISDICTION AND VENUE
4. This action arises under the Patent Act of 1952, 35 U.S.C. §§ 1 et seq., and under
the Declaratory Judgment Act, 28 U.S.C. §§ 2201, et seq. This Court has subject
matter jurisdiction to hear this action under 28 U.S.C. §§ 1331, 1338(a), 2201, and
2202 based on an actual controversy between Plaintiffs and Hirschkorn created
when Hirschkorn instructed Amazon.com, Inc. (“Amazon”) to remove Plaintiffs’
Globe Decanter and Plaintiffs’ Skull Decanter (photographs of which are attached
hereto as Exhibits 1 and 2, respectively) from sale on Amazon’s website due to
alleged infringement of two design patents owned by Hirschkorn.
5. Upon information and belief, Hirschkorn resides in this judicial district, is currently
doing business in this judicial district, has purposefully availed himself of the
privilege of conducting business with residents of this judicial district, and/or has
established sufficient minimum contacts with New York such that Hirschkorn
should reasonably and fairly anticipate being hauled into court in New York.
6. Venue is proper in this judicial district at least under 28 U.S.C. §§ 1391 and
1400(b).
BACKGROUND
7. P&W Gifts began offering a globe-shaped gift decanter (“Plaintiffs’ Original Globe
Decanter”) for sale on Amazon’s website on or about December 19, 2017.
8. On July 31, 2017, U.S. Design Patent No. D824,263 issued to Hirschkorn (“the
‘263 patent,” attached hereto as Exhibit 3), and on information and belief, on that
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same date Hirschkorn requested that Amazon remove Plaintiffs’ Original Globe
Decanter from Amazon’s website because it allegedly infringed the ‘263 patent.
9. On or about August 1, 2018, Amazon notified P&W Gifts that as a result of
Hirschkorn’s “take down” request, Amazon was removing the listing for Plaintiffs’
Original Globe Decanter from Amazon’s website, and that listing was in fact
removed on or about August 1, 2018, and has not been reinstated.
10. On or about August 8, 2018, Plaintiffs’ counsel provided Hirschkorn’s counsel with
prior art which Plaintiffs believed rendered the ‘263 patent invalid.
11. Notwithstanding this invalidating prior art, Godinger Silver modified Plaintiffs’
Original Globe Decanter (this modified design is the accused Plaintiffs’ Globe
Decanter of Exhibit 1 hereto) to further distinguish Plaintiffs’ product from the ‘263
patent.
12. On or about October 13, 2018, P&W Gifts began offering Plaintiffs’ Globe
Decanter for sale on Amazon’s website
13. On or about October 21, 2018, Hirschkorn made a new request that Amazon remove
Plaintiffs’ Globe Decanter (Exhibit 1 hereto) from Amazon’s website because it
allegedly infringed Hirschkorn’s ‘263 patent, and on or about October 22, 2018,
Amazon notified P&W Gifts that as a result of Hirschkorn’s new “take down”
request, Amazon was removing the listing for Plaintiffs’ Globe Decanter from
Amazon’s website, and that listing was in fact removed on or about October 22,
2018, and has not been reinstated.
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14. P&W Gifts began offering a skull-shaped gift decanter (“Plaintiffs’ Skull
Decanter”) for sale on Amazon’s website on or about November 13, 2018.
Photographs of Plaintiffs’ Skull Decanter are attached as Exhibit 2.
15. On information and belief, on or about November 20, 2018, defendant Hirschkorn
requested that Amazon remove Plaintiffs’ Skull Decanter from Amazon’s website
because Plaintiffs’ Skull Decanter allegedly infringed Hirschkorn’s U.S. Design
Patent No. D826,640 (“the ‘640 patent,” copy attached hereto as Exhibit 4).
16. On or about November 21, 2018, Amazon notified P&W Gifts that as a result of
Hirschkorn’s November 20, 2018, “take-down” request, Amazon was removing
Plaintiffs’ Skull Decanter from Amazon’s website, and that listing was in fact
removed on or about November 21, 2018. P&W Gifts promptly complained to
Amazon that Plaintiffs’ Skull Decanter does not infringe Hirschkorn’s ‘640 patent
and therefore that Plaintiffs’ Skull Decanter should be reinstated on Amazon.
Amazon agreed and on November 22, 2018, Amazon reinstated Plaintiffs’ Skull
Decanter on Amazon’s website.
17. However, Hirschkorn immediately filed a second “take-down” request with
Amazon for Plaintiffs’ Skull Decanter based on Hirschkorn’s ‘640 patent, and still
on November 22, 2018, Amazon notified P&W Gifts that Amazon was again
removing Plaintiffs’ Skull Decanter from Amazon’s website. Later that same day,
November 22, 2018, P&W Gifts again complained to Amazon that Plaintiffs’ Skull
Decanter did not infringe Hirschkorn’s ‘640 patent and therefore that Plaintiffs’
Skull Decanter should be reinstated on Amazon’s website, and still on that same
day, November 22, 2018, Amazon agreed and for a second time reinstated
4
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Plaintiffs’ Skull Decanter on Amazon’s website. However, almost immediately
thereafter Amazon reversed course and notified P&W Gifts that it was not
reinstating Plaintiffs’ Skull Decanter on Amazon’s website, effectively negating
the second reinstatement notice.
18. Shortly thereafter, P&W Gifts complained yet again to Amazon that Plaintiffs’
Skull Decanter did not infringe Hirschkorn’s ‘640 patent and therefore that
Plaintiffs’ Skull Decanter should be reinstated on Amazon’s website, and once
again Amazon agreed and for a third time on November 23, 2018, Amazon
reinstated Plaintiffs’ Skull Decanter on Amazon’s website. As of the date of this
Amended Complaint, Plaintiffs’ Skull Decanter remains on Amazon’s website,
though the foregoing history suggests that Hirschkorn has attempted and/or will
attempt to have Plaintiffs’ Skull Decanter again removed from Amazon’s website.
19. Based on Hirschkorn’s “take down” requests to Amazon concerning Plaintiffs’
Globe Decanter and Plaintiffs’ Skull Decanter, and Amazon’s delisting of those
decanters in response to Hirschkorn’s requests, there is now an actual and
justiciable controversy between Plaintiffs and Hirschkorn regarding, inter alia,
infringement and validity of the ‘263 and ‘640 patents that is of sufficient
immediacy and reality to warrant the issuance of a declaratory judgment.
FIRST COUNT
(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘263 PATENT)
20. Plaintiffs repeat and reallege each of the foregoing paragraphs of this Amended
Complaint.
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21. Hirschkorn’s ‘263 patent is invalid for failure to satisfy one or more provisions of
Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 102,
103.
22. For example, Hirschkorn’s ‘263 patent is invalid under 35 U.S.C. §§ 102, 103 in
view of the prior art, including but not limited to, a prior art globe-shaped decanter
sold by Stylish Whisky.
23. Plaintiffs reserve the right to assert additional bases for invalidity of the ‘263 patent.
24. Accordingly, Plaintiffs are entitled to a declaratory judgment that the ‘263 patent is
invalid, that Hirschkorn should cease interfering with Plaintiffs’ sale of Plaintiffs’
Globe Decanter, and that Hirschkorn should be directed to forthwith retract his
“take-down” request to Amazon for Plaintiffs’ Globe Decanter and take all other
steps necessary to ensure that Amazon reinstates forthwith Plaintiffs’ Globe
Decanter on Amazon’s website.
SECOND COUNT
(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘263 PATENT)
Complaint.
26. The manufacture, use, offer for sale, sale, and/or importation of Plaintiffs’ Globe
Decanter does not infringe and will not infringe, directly or indirectly, Hirschkorn’s
‘263 patent because the accused Plaintiffs’ Globe Decanter and the article depicted
in the ‘263 patent are sufficiently different from each other that there can be no
6
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infringement, particularly when the differences between Plaintiffs’ Globe Decanter
and the ‘263 patent are considered in light of the prior art.
27. Plaintiffs are therefore entitled to a declaration that Hirschkorn has no claim for
relief from or against Plaintiffs for infringement of the ‘263 patent, that Hirschkorn
should cease interfering with Plaintiffs’ sale of Plaintiffs’ Globe Decanter, and that
Hirschkorn should be directed to forthwith retract his “take-down” request to
Amazon for Plaintiffs’ Globe Decanter and take all other steps necessary to ensure
that Amazon reinstates forthwith Plaintiffs’ Globe Decanter on Amazon’s website.
THIRD COUNT
(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘640 PATENT)
Complaint.
29. Hirschkorn’s ‘640 patent is invalid for failure to satisfy one or more provisions of
Title 35 of the United States Code, including but not limited to 35 U.S.C. §§ 102,
103.
30. For example, Hirschkorn’s ‘640 patent is invalid under 35 U.S.C. §§ 102, 103 in
view of the prior art, including but not limited to, a prior art skull-shaped decanter
sold by FromKelly LLC, alone or in combination with the aforementioned prior art
Stylish Whisky decanter.
31. Plaintiffs reserve the right to assert additional bases for invalidity of the ‘640 patent.
7
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32. Accordingly, Plaintiffs are entitled to a declaratory judgment that the ‘640 patent is
invalid, that Hirschkorn should cease interfering with Plaintiffs’ sale of Plaintiffs’
Skull Decanter, and that Hirschkorn should be enjoined from taking any future
action to remove Plaintiffs’ Skull Decanter from Amazon’s website.
FOURTH COUNT
(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘640 PATENT)
Complaint.
34. The manufacture, use, offer for sale, sale, and/or importation of Plaintiffs’ Skull
Decanter does not infringe and will not infringe, directly or indirectly, the ‘640
patent because Plaintiffs’ Skull Decanter and the article depicted in the ‘640 patent
are sufficiently different from each other that there can be no infringement,
particularly when considered in light of the prior art.
35. Plaintiffs are therefore entitled to a declaration that Hirschkorn has no claim for
relief from or against Plaintiffs for infringement of the ‘640 patent, that Hirschkorn
should cease interfering with Plaintiffs’ sale of Plaintiffs’ Skull Decanter, and that
Hirschkorn should be enjoined from taking any future action to remove Plaintiffs’
Skull Decanter from Amazon’s website.
FIFTH COUNT
(TORTIOUS INTERFERENCE WITH PROSPECTIVE BUSINESS RELATIONS)
Complaint.
8
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37. Hirschkorn, through a company named Royal Decanters, offers for sale on Amazon
a globe-shaped decanter and a skull-shaped decanter that directly compete with
Plaintiffs’ Globe Decanter and Plaintiffs’ Skull Decanter, respectively.
38. Prior to Hirschkorn’s actions that precipitated the removal of Plaintiffs’ Globe
Decanter and Plaintiffs’ Skull Decanter from Amazon, P&W Gifts had a business
relationship with Amazon whereby P&W Gifts sold products manufactured by
Godinger Silver to the public via the Amazon website.
39. Hirschkorn was aware of P&W Gifts’ relationship with Amazon.
40. Hirschkorn misused the Amazon “take-down” policy by making wrongful and
baseless claims that Plaintiffs’ Globe Decanter and Plaintiffs’ Skull Decanter
infringed his ‘263 and ‘640 patents, respectively.
41. Hirschkorn’s actions were done with the intent to interfere with P&W Gifts’
relationship with Amazon, P&W Gifts’ potential customers that buy P&W Gifts’
products on Amazon, and with Godinger Silver’s relationship with its retail
customers, including P&W Gifts, who sell Godinger Silver’s products on the
Amazon website.
42. In making his wrongful and baseless infringement allegations to Amazon,
Hirschkorn used dishonest, unfair and improper means to interfere with Plaintiffs’
businesses.
43. Hirschkorn’s actions were done with an intent to harm Plaintiffs.
9
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44. Absent Hirschkorn’s actions, P&W Gifts had the expectation of selling Plaintiffs’
Globe Decanter and Plaintiffs’ Skull Decanter to the public via the Amazon
website, and Godinger Silver had the expectation of selling those decanters to
Godinger Silver’s retail customers, including P&W Gifts, who sell Godinger
Silver’s products on the Amazon website.
45. Hirschkorn was aware of P&W Gifts’ expectation of selling Plaintiffs’ Globe
Decanter and Plaintiffs’ Skull Decanter to the public via the Amazon website and
Godinger Silver’s expectation of selling those decanters to Godinger Silver’s retail
customers, including P&W Gifts, who sell Godinger Silver’s products on the
Amazon website, yet Hirschkorn acted as aforesaid to squelch competition from
Plaintiffs and enhance sales of Hirschkorn’s competing products, which are also
sold on Amazon’s website.
46. Plaintiffs have been materially damaged by Hirschkorn’s improper actions.
PLAINTIFF’S REQUEST FOR RELIEF
WHEREFORE, Plaintiffs respectfully request that this Court enter judgment in Plaintiffs’
favor and against Defendant Hirschkorn as follows:
A. Declaring that the ‘263 patent is invalid and unenforceable;
B. Declaring that Plaintiffs’ Globe Decanter does not infringe the ‘263 patent;
C. Declaring that the ‘640 patent is invalid and unenforceable;
D. Declaring that Plaintiffs’ Skull Decanter does not infringe the ‘640 patent;
E. Directing Hirschkorn to cease interfering with Plaintiffs’ sale of Plaintiffs’ Globe

Decanter, to forthwith retract his “take-down” request to Amazon for Plaintiffs’
Globe Decanter, and to take all other steps necessary to ensure that Amazon
reinstates forthwith Plaintiffs’ Globe Decanter on Amazon’s website;
10
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F. Directing Hirschkorn to cease interfering with Plaintiffs’ sale of Plaintiffs’ Skull

Decanter, and enjoining Hirschkorn from taking any future action to remove
Plaintiffs’ Skull Decanter from Amazon’s website;
G. Awarding Plaintiffs damages for Hirschkorn’s tortious interference with

Plaintiffs’ prospective business relations;
H. Declaring this case exceptional and awarding Plaintiffs their reasonable attorneys’
fees under 35 U.S.C. § 285;
I. Awarding Plaintiffs their costs and expenses;
J. Awarding Plaintiffs pre- and post-judgment interest; and
K. Awarding Plaintiffs such other and further relief as the Court deems just and
proper.
Respectfully submitted,
Dated: November 28, 2018 COZEN O’CONNOR
By: /s/ Martin B. Pavane

Martin B. Pavane (MP4871)
Lisa A. Ferrari (LF8081)
Darren S. Mogil (DM2065)
Cozen O’Connor
277 Park Avenue
New York, NY 10172
Telephone: (212) 883-4900
Facsimile: (212) 986-0604
mpavane@cozen.com
lferrari@cozen.com
dmogil@cozen.com
Attorneys for Plaintiffs Godinger Silver Art Ltd. and P&W

Gifts LLC
11
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Case 1:18-cv-06175-ENV-ST Document 8-1 Filed 11/28/18 Page 1 of 2 PageID #: 54
AO 440 (Rev. 06/12) Summons in a Civil Action
UNITED STATES DISTRICT COURT

for the
Eastern District
__________ of of
District New York
__________
GODINGER SILVER ART LTD. and P&W )

GIFTS LLC )
)
)
Plaintiff(s) )
)
v. Civil Action No. 1:18-cv-06175 (ENV)(ST)
)
LIRAN HIRSCHKORN )
)
)
)
Defendant(s) )
AMENDED SUMMONS IN A CIVIL ACTION
To: (Defendant’s name and address) Liran Hirschkorn

6753 173rd Street
Fresh Meadows, NY 11365
A lawsuit has been filed against you.
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are: Martin B. Pavane
Lisa A. Ferrari
Cozen O'Connor
277 Park Avenue
New York, NY 10172
Tel. (212) 883-4900; Fax (212) 986-0604
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
AO 440 (Rev. 06/12) Summons in a Civil Action (Page 2)
Civil Action No.
PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
This summons for (name of individual and title, if any)

was received by me on (date) .
u I personally served the summons on the individual at (place)

on (date) ; or
u I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
u I served the summons on (name of individual) , who is

designated by law to accept service of process on behalf of (name of organization)
on (date) ; or
u I returned the summons unexecuted because ; or
u Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
I declare under penalty of perjury that this information is true.
Date:
Server’s signature
Printed name and title
Server’s address
Additional information regarding attempted service, etc:

EXHIBIT 1
2
3
4
5
EXHIBIT 2
EXHIBIT 3
EXHIBIT 4

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Case 1:18-cv-06175-ENV-ST Document 8 Filed 11/28/18 Page 1 of 11 PageID #: 43

IN THE UNITED STATES DISTRICT COURT

GODINGER SILVER ART LTD. and P&W )

Liran Hirschkorn (“Defendant” or “Hirschkorn”), allege as follows:

15 Traffic Avenue, Ridgewood, New York 11385.

3. Upon information and belief, Hirschkorn is an individual residing at 6753 173rd

Street, Fresh Meadows, New York 11365.

JURISDICTION AND VENUE

2202 based on an actual controversy between Plaintiffs and Hirschkorn created

when Hirschkorn instructed Amazon.com, Inc. (“Amazon”) to remove Plaintiffs’

hereto as Exhibits 1 and 2, respectively) from sale on Amazon’s website due to

alleged infringement of two design patents owned by Hirschkorn.

Decanter”) for sale on Amazon’s website on or about December 19, 2017.

9. On or about August 1, 2018, Amazon notified P&W Gifts that as a result of

removed on or about August 1, 2018, and has not been reinstated.

Decanter for sale on Amazon’s website

Plaintiffs’ Globe Decanter (Exhibit 1 hereto) from Amazon’s website because it

2018, and has not been reinstated.

Decanter”) for sale on Amazon’s website on or about November 13, 2018.

Photographs of Plaintiffs’ Skull Decanter are attached as Exhibit 2.

because Plaintiffs’ Skull Decanter allegedly infringed Hirschkorn’s U.S. Design

Hirschkorn’s November 20, 2018, “take-down” request, Amazon was removing

removed on or about November 21, 2018. P&W Gifts promptly complained to

and therefore that Plaintiffs’ Skull Decanter should be reinstated on Amazon.

Decanter on Amazon’s website.

17. However, Hirschkorn immediately filed a second “take-down” request with

Plaintiffs’ Skull Decanter on Amazon’s website. However, almost immediately

reinstating Plaintiffs’ Skull Decanter on Amazon’s website, effectively negating

the second reinstatement notice.

Plaintiffs’ Skull Decanter should be reinstated on Amazon’s website, and once

reinstated Plaintiffs’ Skull Decanter on Amazon’s website. As of the date of this

Amended Complaint, Plaintiffs’ Skull Decanter remains on Amazon’s website,

19. Based on Hirschkorn’s “take down” requests to Amazon concerning Plaintiffs’

decanters in response to Hirschkorn’s requests, there is now an actual and

justiciable controversy between Plaintiffs and Hirschkorn regarding, inter alia,

immediacy and reality to warrant the issuance of a declaratory judgment.

(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘263 PATENT)

sold by Stylish Whisky.

steps necessary to ensure that Amazon reinstates forthwith Plaintiffs’ Globe

Decanter on Amazon’s website.

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘263 PATENT)

infringement, particularly when the differences between Plaintiffs’ Globe Decanter

Hirschkorn should be directed to forthwith retract his “take-down” request to

that Amazon reinstates forthwith Plaintiffs’ Globe Decanter on Amazon’s website.

(DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘640 PATENT)

Stylish Whisky decanter.

action to remove Plaintiffs’ Skull Decanter from Amazon’s website.

(DECLARATORY JUDGMENT OF NON-INFRINGEMENT OF THE ‘640 PATENT)

particularly when considered in light of the prior art.

Skull Decanter from Amazon’s website.

(TORTIOUS INTERFERENCE WITH PROSPECTIVE BUSINESS RELATIONS)

a globe-shaped decanter and a skull-shaped decanter that directly compete with

Plaintiffs’ Globe Decanter and Plaintiffs’ Skull Decanter, respectively.

relationship with Amazon whereby P&W Gifts sold products manufactured by

Godinger Silver to the public via the Amazon website.

39. Hirschkorn was aware of P&W Gifts’ relationship with Amazon.

infringed his ‘263 and ‘640 patents, respectively.

42. In making his wrongful and baseless infringement allegations to Amazon,

43. Hirschkorn’s actions were done with an intent to harm Plaintiffs.

Silver’s products on the Amazon website.

Godinger Silver’s expectation of selling those decanters to Godinger Silver’s retail

Amazon website, yet Hirschkorn acted as aforesaid to squelch competition from

sold on Amazon’s website.