FILED

2012 Feb-14 PM 04:11 U.S. DISTRICT COURT N.D. OF ALABAMA

IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF ALABAMA SOUTHERN DIVISION SPORTSHIELDS LLC, Plaintiff, v. PRO PERFORMANCE SPORTS LLC d/b/a SKLZ; and ACADEMY, LTD. d/b/a Academy Sports + Outdoors, Defendants. COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES AND DEMAND FOR JURY TRIAL COMES NOW Plaintiff, SPORTSHIELDS LLC, by and through its undersigned counsel, and for its Complaint against Defendants, PRO PERFORMANCE SPORTS LLC d/b/a SKLZ and ACADEMY, LTD. d/b/a Academy Sports + Outdoors, states and alleges as follows: NATURE OF THE ACTION 1. This is a civil action at law and in equity for design patent Case No. _________________ JURY TRIAL DEMANDED

infringement and unfair competition, arising under the Patent Act, the Lanham Act, and common law, and arising out of Defendants importing, making, using, offering to sell and/or selling of products that are

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substantially similar imitations of Plaintiff SPORTSHIELDS LLCs patented products and/or Plaintiffs unique patented design. 2. Plaintiff SPORTSHIELDS LLC seeks a preliminary and

permanent injunction and damages, including treble damages and attorneys fees for willfulness under 35 U.S.C. 284 and 285 and 15 U.S.C. 1117, against the Defendants, preventing the Defendants from further importation, manufacture, use, offering to sell and/or sale of any and all products or the like which infringe directly or indirectly upon Plaintiff SPORTSHIELDS LLCs U.S. Patent Number D570,054 S, Plaintiffs rights under the Lanham Act and at common law, and from otherwise competing unfairly with Plaintiff SPORTSHIELDS LLC. THE PARTIES 3. Plaintiff SPORTSHIELDS LLC is a limited liability company

organized and existing under the laws of the State of Alabama and having a principal office located at 3260 Verdure Drive, Hoover (Jefferson County), Alabama 35226-2274. 4. Upon information and belief, Defendant PRO

PERFORMANCE SPORTS LLC is a limited liability corporation, organized and existing under the laws of the State of California, is doing business as SKLZ, has a principal office located at 5823 Newton Drive in Carlsbad,
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California 92008-7361, and has identified as its registered agent Mr. Ross J. Schwartz, located at 101 West Broadway, Suite 810, in San Diego, California 92101. 5. Upon information and belief, Defendant ACADEMY, LTD. is a

limited partnership, organized and existing under the laws of the State of Texas, is doing business as Academy Sports + Outdoors, has a principal office located at 1800 North Mason Road in Katy, Texas 77449, is registered to do business in Alabama (Entity ID Number 816-254), and has identified as its registered agent Mr. M. Wade Turner located at 1800 North Mason Road in Katy, Texas 77449. JURISDICTION AND VENUE 6. This action for patent infringement arises under the provisions

of 35 U.S.C. 271 et seq. This Court has subject matter jurisdiction over causes of action for patent infringement pursuant to 28 U.S.C. 1331 and 1338. 7. This action for unfair competition and false designation or

origin arises under the Lanham Act, 35 U.S.C. 1051 et seq. This Court has subject matter jurisdiction over causes of action under the Lanham Act pursuant to 28 U.S.C. 1331 and 1338, and Section 39 of the Lanham Act, 15 U.S.C. 1121.
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8.

This Court also has jurisdiction over the causes of action set

forth herein pursuant to 28 U.S.C. 1332. 9. This Court has jurisdiction over the common law claims in this

action pursuant to 28 U.S.C. 1367(a), as the common law claims are so related to the federal claims that they form part of the same case or controversy and derive from a common nucleus of operative fact. 10. Upon information and belief, Defendant PRO

PERFORMANCE SPORTS LLC d/b/a SKLZ (SKLZ) is subject to this Courts general and specific personal jurisdiction pursuant to due process and/or the Alabama Long-Arm Statute, at least because SKLZ has been and is doing substantial business in the State of Alabama and in this judicial district, including: (i) at least a portion of the infringing conduct alleged herein; and (ii) regularly doing or soliciting business, engaging in other persistent courses of conduct, and/or deriving substantial revenue from goods and services provided to persons in the State of Alabama and in this judicial district. 11. Upon information and belief, Defendant ACADEMY, LTD.

d/b/a Academy Sports + Outdoors (ACADEMY) is subject to this Courts general and specific personal jurisdiction pursuant to due process and/or the Alabama Long-Arm Statute, at least because ACADEMY has been and is
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doing substantial business in the State of Alabama and in this judicial district, including: (i) at least a portion of the infringing conduct alleged herein; and (ii) regularly doing or soliciting business, engaging in other persistent courses of conduct, and/or deriving substantial revenue from goods and services provided to persons in the State of Alabama and in this judicial district. 12. Venue is proper in this Court under the provisions of 28 U.S.C.

1391 and 1400, as each Defendant has transacted business in this judicial district, and because each Defendant has committed and/or induced acts of patent infringement in this judicial district. BACKGROUND FACTS 13. On May 27, 2008, United States Patent Number D570,054 S

(the 054 Patent), entitled SPORTS FACE MASK, was duly and lawfully issued to Mr. Rodney L. Haley, the named inventor of the subject matter claimed in the 054 Patent. A true and correct copy of the 054 Patent is attached hereto as Exhibit A. 14. Since as early as 2008, Plaintiff SPORTSHIELDS LLC has

been selling sports face masks, covered by its 054 Patent, attached to a header card that includes the notice, Defender SportShields are patent pending or the equivalent. Plaintiffs patented products are depicted in
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photographs attached hereto as Exhibit B. Exhibit C is a copy of the header card that is attached to Plaintiffs patented products in a retail setting. 15. Since at least as early as the Spring of 2011, Defendants SKLZ

and ACADEMY have been making, using, importing, offering for sale and/or selling one or more products that infringe the 054 Patent, including but not limited to the SKLZ Field Shield adult mask (SKU 8 31345 00257 8) and the SKLZ Field Shield youth mask (SKU 8 31345 00271 4) (hereinafter collectively referred to as the accused SKLZ masks). The accused SKLZ masks are depicted in photographs attached hereto as Exhibit D. Exhibit E is a copy of the header card that is attached to the accused SKLZ masks (adult size) in a retail setting. 16. In a letter dated September 30, 2011, counsel for Plaintiff

notified Defendant SKLZ that its Field Shield masks are infringing the 054 Patent and demanded that SKLZ immediately cease and desist from making, using, selling, offering for sale, or causing to be sold the counterfeit [masks]. A copy of this letter is attached hereto as Exhibit F. 17. Defendants SKLZ and ACADEMY are continuing to make,

use, import, offer for sale, and/or sell one or more products that infringe the 054 Patent and will continue to do so unless enjoined by the Court.

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COUNT ONE PATENT INFRINGEMENT 18. Plaintiff repeats and re-alleges the allegations contained in all

the preceding paragraphs, as if fully set forth herein. 19. Plaintiff SPORTSHIELDS LLC is the owner of all right, title,

and interest in and to the 054 Patent. 20. Defendant SKLZ has been and is now directly infringing, and

indirectly infringing by way of inducing infringement and/or contributing to the infringement of the 054 Patent in the State of Alabama, in this judicial district, and elsewhere in the United States, by, among other conduct, importing, making, using, offering to sell, and/or selling one or more products embodying the patented invention. For example, Defendant SKLZ is importing, making, using, offering to sell, and/or selling the accused SKLZ masks. In the eye of an ordinary observer, giving such attention as a purchaser usually gives, the accused SKLZ masks and Plaintiffs patented design are substantially the same. Defendant SKLZ is thus liable for

infringement of the 054 Patent, in violation of 35 U.S.C. 271. 21. Defendant ACADEMY has been and is now directly infringing,

and indirectly infringing by way of inducing infringement and/or contributing to the infringement of the 054 Patent in the State of Alabama,
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in this judicial district, and elsewhere in the United States, by, among other conduct, importing, making, using, offering to sell, and/or selling one or more products embodying the patented invention. For example, Defendant ACADEMY is importing, making, using, offering to sell, and/or selling the accused SKLZ masks. In the eye of an ordinary observer, giving such attention as a purchaser usually gives, the accused SKLZ masks and Plaintiffs patented design are substantially the same. Defendant

ACADEMY is thus liable for infringement of the 054 Patent, in violation of 35 U.S.C. 271. 22. Plaintiff has provided notice of the 054 Patent to Defendants,

at least in the manner set forth in 35 U.S.C. 287(a). 23. Defendants conduct constitutes a knowing and willful

infringement of the 054 Patent. 24. 25. This is an exceptional case pursuant to 35 U.S.C. 285. As a direct and proximate result of the Defendants

infringement, Plaintiff SPORTSHIELDS LLC has been and is irreparably harmed, damaged, and injured, and will continue to sustain harm, damage, and injury unless Defendants are restrained by this Court.

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COUNT TWO FEDERAL UNFAIR COMPETITION AND FALSE DESIGNATION OF ORIGIN 26. Plaintiff repeats and re-alleges the allegations contained in all

the preceding paragraphs, as if fully set forth herein. 27. By selling products that copy Plaintiffs products and Plaintiffs

unique patented design, Defendants have misappropriated Plaintiffs trade dress and falsely represented the origin of the accused SKLZ products. Thus, Defendants conduct of importing, making, using, offering to sell, and/or selling the accused SKLZ products is causing and is likely to continue to cause confusion, deception, and mistake by creating the false and misleading impression that Defendants products are affiliated, connected, or associated with Plaintiff or have the sponsorship, endorsement, or approval of Plaintiff, all in violation of 15 U.S.C. 1125(a). 28. Defendants conduct, done with actual knowledge of Plaintiffs

exclusive rights, demonstrates an intentional, willful, and bad-faith intent to (1) trade on the goodwill of Plaintiffs distinctive trade dress; and (2) cause confusion, deception, and mistake in the minds of Plaintiffs customers and potential customers by implying a non-existent affiliation or relationship between Defendants and Plaintiff, to the great and irreparable injury of

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Plaintiff. Defendants have acted knowingly and have been unjustly enriched by such conduct. 29. As Defendants unfair competition is causing and is likely to

continue to cause substantial injury to the public and to Plaintiff, Plaintiff is entitled to injunctive relief and is entitled to recover Defendants trebled profits associated with the infringement, Plaintiffs damages, and Plaintiffs reasonable attorneys fees in accordance with 15 U.S.C. 1116 and 1117. COUNT THREE COMMON LAW UNFAIR COMPETITION 30. Plaintiff repeats and re-alleges the allegations contained in all

the preceding paragraphs, as if fully set forth herein. 31. Defendants conduct, as described herein, demonstrates that

Defendants have engaged and are continuing to engage in acts of unfair competition, in violation of the common law, in that: (a) Defendants conduct enables the Defendants to obtain the

benefit of, and trade on, the good will of Plaintiff; (b) Defendants conduct damages Plaintiffs good will in that

Plaintiff has no control over the business of Defendants; (c) Defendants conduct is likely to cause confusion, mistake, or

deception; and
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(d)

Defendants conduct has resulted and will continue to result in

the unjust enrichment of Defendants. 32. Upon information and belief, Defendants committed the

aforesaid actions with knowledge and in disregard of Plaintiffs exclusive rights. 33. Defendants have injured Plaintiff in an amount of damages to

be proven at trial. 34. Defendants aforesaid conduct has irreparably damaged

Plaintiff and will continue to irreparably damage Plaintiff unless enjoined by this Court, as a result of which Plaintiff is without an adequate remedy at law. PRAYER FOR RELIEF WHEREFORE, PREMISES CONSIDERED, Plaintiff respectfully requests that this Court enter judgment in its favor and against Defendants on the Complaint and enter an order as follows: A. Entering a preliminary injunction enjoining and restraining

Defendants and all those acting in concert with them from engaging in conduct that infringes, induces infringement, or contributes to the infringement of Plaintiffs exclusive rights in the 054 Patent; and B.
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Finding that Defendants have infringed the 054 Patent; and

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C.

Ordering Defendants to pay Plaintiff its damages in an amount

at least equal to Plaintiffs lost profits and in no event less than a reasonable royalty, plus costs and expenses, together with pre-judgment and post-judgment interest at the maximum rate allowable by law, according to proof at trial, for Defendants infringement of the 054 Patent as provided under 35 U.S.C. 284; and D. Awarding to Plaintiff enhanced damages resulting from the

knowing, deliberate, and willful nature of Defendants prohibited conduct, undertaken with notice to each Defendant, or at least as early as the date of the filing of this Complaint, as provided under 35 U.S.C. 284; and E. Finding that this is an exceptional case within the meaning of

35 U.S.C. 285 and awarding to Plaintiff its reasonable attorneys fees; and F. Entering a permanent injunction enjoining and restraining

Defendants and all those acting in concert with them from engaging in conduct that infringes, induces infringement, or contributes to the infringement of Plaintiffs exclusive rights in the 054 Patent; and G. Enjoining and restraining Defendants and all subsidiaries,

divisions, agents, officers, employees, representatives, successors, assigns, attorneys, and all other persons acting for, with, by, through, or under authority from Defendants, from:
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(1)

using any copy, reproduction, or colorable imitation or

simulation of Plaintiffs patented mask products in connection with any goods or services offered by Defendants; and (2) using any trademark, service mark, trade dress, name, logo, or

source designation of any kind that is a copy, reproduction, or colorable imitation or simulation of, or confusingly similar to, or in any way similar to Plaintiffs trademarks, service marks, trade dress elements, names, or logos; and (3) engaging in any conduct that will cause, or is likely to cause,

confusion, mistake, deception, or public misunderstanding as to the affiliation, connection, association, origin, sponsorship or approval of Defendants goods or services with or by Plaintiff; and (4) otherwise infringing upon Plaintiffs distinctive trade dress or

unfairly competing with Plaintiff in any manner whatsoever. H. Compelling Defendants to account to Plaintiff for any and all

profits derived by Defendants through its infringement, and to pay Plaintiff for all damage caused, including pre-judgment interest at the maximum rate allowable by law, under 15 U.S.C. 1117(a) and under the common law.

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I.

Awarding treble damages to Plaintiff in the amount of three

times the profits resulting from Defendants infringement, unfair competition, and false designation of origin. J. K. Awarding statutory damages to Plaintiff, if it so elects. Awarding to Plaintiff punitive damages in an amount such as

the Court shall find to be just, according to the willful and deliberate infringement by Defendants. L. Awarding to Plaintiff all costs of this action and all its

reasonable attorneys fees in accordance with 15 U.S.C. 1117(a); and M. Ordering Defendants to deliver-up for safekeeping during the

pendency of this action, and for destruction upon entry of judgment: (1) all SKLZ products that are confusingly similar to Plaintiffs

patented products and/or Plaintiffs unique patented design, including but not limited to the accused SKLZ masks; and (2) all tooling, plates, molds, and other materials that are

specifically designed to manufacture products that are confusingly similar to Plaintiffs patented products and/or Plaintiffs unique patented design; and (3) any and all other materials that are causing and are likely to

continue to cause confusion, deception, and mistake by creating the

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false and misleading impression that Defendants products are affiliated, connected, or associated with Plaintiff or have the sponsorship, endorsement, or approval of Plaintiff. N. Directing Defendant to file with the Court and serve on

Plaintiff, within thirty (30) days after entry of a final injunction, a report in writing under oath setting forth in detail the manner and form in which Defendant has complied with the injunction. O. and proper. DEMAND FOR JURY TRIAL Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff hereby requests a trial by jury on all issues and claims so triable. Dated: February 14, 2012 Respectfully submitted, /s/ L. Jackson Young, Jr. L. Jackson Young, Jr. (ASB-7946-G65L) John W. Dodson (ASB-9724-D65J) David A. Rich (ASB-3039-D54R) Attorneys for Plaintiff SportShields LLC OF COUNSEL: FERGUSON, FROST & DODSON, LLP 2500 Acton Road, Suite 200 Birmingham, Alabama 35243 (205) 879-8722 telephone (205) 879-8831 telecopier Email: ljy@ffdlaw.com
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Granting such other and further relief as this Court deems just

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Please serve the Defendants via Certified Mail as follows: ACADEMY, LTD. Attn. Mr. M. Wade Turner, Registered Agent 1800 North Mason Road Katy, Texas 77449 PRO PERFORMANCE SPORTS, LLC Attn. Mr. Ross J. Schwartz, Registered Agent 101 West Broadway, Suite 810 San Diego, California 92101

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