IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF NORTH CAROLINA CHARLOTTE DIVISION

IRWIN INDUSTRIAL TOOL COMPANY, Plaintiff, v. HARBOR FREIGHT TOOLS USA, INC. and JOHN DOE, Defendants.

) ) ) ) ) ) ) ) ) )

Civil Action No. ______________________

JURY TRIAL DEMANDED

The Plaintiff, Irwin Industrial Tool Company (Irwin), hereby files this Complaint for Patent Infringement, Trade Dress Infringement, Unfair Competition, and Unfair and Deceptive Trade Practices against Defendants Harbor Freight Tools USA, Inc. (Harbor Freight) and John Doe (collectively, Defendants) and avers as follows: NATURE OF THE ACTION 1. This is an action at law and in equity for design patent infringement under 35

U.S.C. 1 et seq., trade dress infringement under 15 U.S.C. 1051 et seq., unfair competition under federal and state law, 15 U.S.C. 1051 et seq. and N.C. Gen. Stat. 75-1.1 et seq., deceptive trade practices under N.C. Gen. Stat. 75-1.1 et seq., and the common law of North Carolina. 2. Irwin is a leading manufacturer of professional grade hand tools and power tool

accessories, and is recognized for producing innovative products of superior quality and design. Irwin designed and sells a unique utility knife. Irwin obtained United States Design Patent No. D520,327 (the 327 patent) covering the ornamental design of its unique utility knife. Irwin

extensively markets and promotes its products, including its utility knife, using a distinctive, well-known blue and yellow trade dress. Irwin has acquired and developed valuable trademark and trade dress rights. 3. Defendants are offering for sale and selling a utility knife that infringes Irwins

327 patent. Defendants are further using packaging that is confusingly similar to Irwins distinctive, well-known blue and yellow trade dress. Defendants utility knife is not manufactured by Irwin. Defendants are not connected with, affiliated with, or authorized by Irwin in any way. Defendants actions are likely to cause confusion and to harm Irwins valuable goodwill and reputation. Irwin brings this action to address the likelihood of public confusion, and to protect its valuable intellectual property rights. The Parties 4. Plaintiff Irwin is a corporation organized and existing under the laws of the State

of Delaware, having a place of business at 8935 North Pointe Executive Drive, Huntersville, North Carolina 28078. 5. Defendant Harbor Freight, on information and belief, is a company organized and

existing under the laws of the State of Delaware, having a principal place of business at 26541 Agoura Road, Calabasas, California 91302. 6. Defendant John Doe, whose actual identity is presently unknown to Plaintiff

Irwin, on information and belief, is a manufacturer and/or seller of hand tools that supplies such tools to Defendant Harbor Freight. Thus, on further information and belief, Defendant John Doe is engaging or otherwise participating in unlawful conduct and activities, separately and in concert with Defendant Harbor Freight.

Jurisdiction and Venue 7. This Court has jurisdiction over the subject matter of this action pursuant to 28

U.S.C. 1331, 1337(a), 1338(a), and 1367(a), including pendent or supplemental jurisdiction, and venue is proper in this district pursuant to 28 U.S.C. 1391(b)-(c) and 1400(b). 8. This Court has personal jurisdiction over Defendant Harbor Freight consistent

with the principles underlying the U.S. Constitution and NC Gen Stat 1-75.4 because, among other things, this Complaint includes a cause of action for patent infringement under the laws of the United States, 35 USC 1 et seq. and any injury caused to Plaintiff Irwin occurred in the State of North Carolina as a result of Harbor Freight's actions. Additionally, upon information and belief, Defendant Harbor Freight is doing business and has done business in this State and District, or is otherwise a resident of this jurisdiction for purposes of jurisdiction and venue. 9. This Court has personal jurisdiction over Defendant John Doe consistent with the

principles underlying the U.S. Constitution, and NC Gen Stat 1-75.4 and 1-166, because, among other things, this Complaint includes a cause of action for patent infringement under the laws of the United States, 35 USC 1 et seq. and any injury caused to Plaintiff Irwin occurred in the State of North Carolina as a result of John Doe's actions. Additionally, upon information and belief, Defendant John Doe is doing business and has done business in this State and District, or is otherwise a resident of this jurisdiction for purposes of jurisdiction and venue. Prior Action Confirming Irwins Design Patent and Trademark/Trade Dress Rights 10. In 2006, Plaintiff Irwin initiated Civil Action No. 3:06-cv-00380-CH in this

Court, alleging that Inter-Pacific Trading Co. a/k/a Inpac USA (Inpac) had infringed Irwins rights in the 327 patent and Irwins trademark and trade dress rights by making and selling a utility knife.

11.

In an April 19, 2007 Order, the Honorable Carl Horn III entered a permanent

injunction against Inpac. See Exhibit 1 (Stipulation For Entry of Permanent Injunction and Permanent Injunction) (the Order). 12. In that Order, the Court made, inter alia, the following Findings of Fact and

Conclusions of Law: a. Irwin is the owner of the 327 patent entitled Utility Knife, which was

properly issued by the United States Patent and Trademark Office on May 9, 2006. The 327 patent is directed generally to the ornamental design for a utility knife and is not invalid. Ex. 1, at 3. b. For 15 years, Irwin and its predecessors-in-interest have continuously used

the distinctive colors blue and yellow for product packaging, tools, cases, displays, marketing, promotional items, including but not limited to tool handles and grips (the Irwin Trade Dress). The Irwin Trade Dress is distinctive and used throughout the Irwin tool line of products and accessories. Consumers associate the distinctive blue and yellow colors with Irwin and its superior quality hand tools and power tool accessories, including its retractable blade knife. Ex. 1, at 7. c. Irwin has sold hundreds of millions of dollars in products bearing the blue

and yellow Irwin Trade Dress over the last several years. Ex. 1, at 10. d. As a result of its extensive and continuous use by Irwin, Irwin and its

distinctive trade dress have become closely associated with one another in the mind of the public so that the public has come to recognize the products of Irwin by the distinctive Irwin Trade Dress. Ex. 1, at 11.

e.

Consequently, through such usage and recognition, Irwin has acquired

rights in the Irwin Trade Dress, which rights extend, without limitation, to the exclusive right to use the Irwin Trade Dress in the United States in conjunction with hand tools and power tool accessories. Ex. 1, at 12. 13. In that Order, the Court permanently enjoined Inpac from manufacturing, using,

importing, distributing, selling or offering to sell any products bearing the ornamental design of Irwins Utility Knife, in contravention of Irwins rights in the 327 patent. Ex. 1, at 30. 14. In that Order, the Court further permanently enjoined Inpac from manufacturing,

importing, distributing, selling or offering to sell any products bearing the Irwin Trade Dress in contradiction of Irwins rights therein. Ex. 1, at 31. COUNT I PATENT INFRINGEMENT 15. The allegations contained in paragraphs 1-14 of this Complaint are incorporated

by reference as if fully set forth herein. 16. Plaintiff Irwin continues to be the owner of the 327 patent entitled Utility

Knife, which was issued by the United States Patent and Trademark Office on May 9, 2006. The 327 patent is directed generally to the ornamental design for a utility knife. See Exhibit 2. 17. On information and belief, Defendants are making, offering for sale, or selling a

utility knife in contravention of Plaintiffs rights under the 327 patent. More particularly, on information and belief, Defendant Harbor Freight has offered and sold, and is offering and selling, a utility knife identified as the Utility Knife with Ergonomic Grip (Item No. 66443) through established streams of commerce throughout the United States, including to customers or potential customers in this judicial district. See Exhibit 3. Defendant Harbor Freight is currently offering for sale the Utility Knife with Ergonomic Grip (Item No. 66443) via the 5

Internet on Harbor Freights website, at http://www.harborfreight.com/catalogsearch/result?q=utility+knife. See Exhibit 3. 18. On information and belief, Defendant John Doe has made and sold to Harbor

Freight the referenced Utility Knife with Ergonomic Grip (Item No. 66443). 19. Defendants have committed the aforesaid acts without the consent or

authorization of Irwin. Defendants have infringed Irwins exclusive rights in the 327 patent in derogation of 35 U.S.C. 271. On information and belief, Defendants acts of infringement will continue unabated unless and until enjoined by this Court. 20. On information and belief, Defendants acts of infringement have been committed

in willful and deliberate disregard of Irwins patent rights and without reasonable justification, thus making this an exceptional case within the meaning of 35 U.S.C. 285, thereby entitling Irwin to an award of increased damages and reimbursement of reasonable attorneys fees. COUNT II TRADEMARK/TRADE DRESS INFRINGEMENT 21. The allegations contained in paragraphs 1-20 of this Complaint are incorporated

by reference as if fully set forth herein. 22. For over 20 years, Irwin and its predecessors-in-interest have continuously used

the distinctive colors blue and yellow for, inter alia, product packaging, displays, and marketing. Irwin has acquired valuable trademark and trade dress rights in such colors and the like, which rights are hereinafter referred to the Irwin Trade Dress. The Irwin Trade Dress is distinctive and used throughout the Irwin tool line of products and accessories. For example, the Irwin Trade Dress has been used in print catalogs, see Exhibit 4, and on Irwins website, as shown at webpage http://www.irwin.com/promotions-events/utility-knives-and-blades. See Exhibit 5. As a result of such promotions, and various and extensive other advertising, consumers associate the 6

distinctive blue and yellow colors with Irwin and its superior quality hand tools and power tool accessories, including its retractable blade knife. See Exhibit 6. 23. Plaintiff Irwin establishes and maintains quality standards for products identified

by the Irwin Trade Dress. As a result of Irwins strict quality control practices, its trade dress has become synonymous with high quality on a wide variety of hand tools and power tool accessories from Irwin. 24. To promote Plaintiff Irwins business and associate Irwin and its blue and yellow

trade dress, Irwin has and continues to advertise its products extensively to the public. Irwin has spent over tens of millions of dollars in advertising, promotional activities, and packaging development. All of Irwins advertising, marketing, and in-store displays prominently feature the Irwin Trade Dress. 25. For example, Irwin has used its distinctive blue and yellow trade dress in the

sponsorship of a NASCAR race team (Team Irwin) and a NASCAR race. Team Irwin has sponsored Kurt Busch and Jamie McMurray. Such sponsorship has included using the blue and yellow Irwin Trade Dress on the drivers car and suit; having pit road decals featuring the Irwin Trade Dress; NASCAR driver merchandise featuring the Irwin Trade Dress; advertising and promotional material in NASCAR publications featuring the Irwin Trade Dress; and display and interactive booths at NASCAR events featuring the Irwin Trade Dress. See Exhibit 7. As a further example, beginning in 2010, Irwin became the title sponsor for the Night Race at Bristol Motor Speedway. The Irwin Tools Night Race event, one of stock car racings most popular events, is a key venue for Irwins brand building activity, including the distinctive and well-known blue and yellow trade dress. See http://www.irwin.com/racing.

26.

During many NASCAR seasons, Team Irwin has commonly and prominently

included a large replica Irwin ProTouch Retractable Blade Knife, featuring the Irwin Trade Dress, in its victory celebrations, in its advertising and promotional materials, and in its display and interactive booths. See Exhibit 7. 27. Sponsorship of the Irwin Tools Night Race event includes prominent display of

the blue and yellow Irwin Trade Dress in and around the Bristol Motor Speedway; in NASCAR publications that feature the Irwin Trade Dress; in advertising and promotional material regarding the Irwin Tools Night Race featuring the Irwin Trade Dress; and display and interactive booths at the Irwin Tools Night Race featuring the Irwin Trade Dress. 28. On information and belief, the Irwin Trade Dress has been exposed to millions of

households on a nationwide basis. 29. Irwin has sold hundreds of millions of dollars in products bearing the blue and

yellow Irwin Trade Dress over the last several years. 30. As a result of its extensive and continuous use by Irwin, the Irwin Trade Dress has

become closely associated with Irwin in the mind of the public so that the public has come to recognize the products of Irwin by the distinctive Irwin Trade Dress. Irwin enjoys substantial goodwill and a valuable reputation, as symbolized by the Irwin Trade Dress. When encountering the distinctive blue and yellow trade dress on products, customers and potential customers expect superior quality products based on Irwins substantial reputation and goodwill in the marketplace. 31. Consequently, Irwin has acquired substantial and valuable rights in the Irwin

Trade Dress, which rights extend, without limitation, to the exclusive right to use the Irwin Trade Dress in conjunction with hand tools and power tool accessories.

32.

Defendant Harbor Freight is offering for sale and selling a utility knife in blue and

yellow product packaging that is confusingly similar to the Irwin Trade Dress. On information and belief, Defendant Harbor Freight has used or is using such a product in an attempt to confuse consumers and trade off Irwins goodwill and valuable reputation as represented in the Irwin Trade Dress. 33. On information and belief, Defendant John Doe has made or had made a utility

knife that has been offered for sale and sold to Harbor Freight in a blue and yellow product packaging that is confusingly similar to the Irwin Trade Dress. On further information and belief, Defendant John Doe has used or is using such a product packaging in an attempt to confuse consumers and trade off Irwins goodwill and valuable reputation as represented in the Irwin Trade Dress. 34. Defendants have not been authorized by Irwin to use the Irwin Trade Dress, or

any colorable imitations thereof, in connection with any of Defendants goods or services. 35. The hand tools marketed, promoted, packaged, and sold by Defendants are so

similar to Irwins products in nature that Defendants unauthorized use of a blue and yellow packaging in conjunction with a utility knife is likely to cause confusion and to deceive and mislead the public into becoming interested in and/or acquiring Defendants products, believing the products are offered under the control or with the authorization of Irwin. Defendants choice of such packaging manifests an intent and willful attempt to trade upon the goodwill created by, and subsisting in, the Irwin Trade Dress. 36. Defendants unlawful activities have resulted in irreparable harm and injury to

Irwin in that, among other things, they deprive Irwin of its absolute right to determine the manner in which its products are presented to the public; deceive and confuse the public as to the

origin and sponsorship of such products; wrongfully prey upon and usurp the reputation and goodwill of Irwin; and irreparably harm and injure the reputation of Irwin for providing quality hand tools and power tool accessories. 37. Pursuant to 15 U.S.C. 1125(a), the acts of Defendants constitute a false

designation of origin and a false or misleading description or representation of its products in violation of Section 43(a) of the Lanham Act. 38. More particularly, Defendants use of product packaging that is confusingly

similar to the Irwin Trade Dress tends falsely to associate in the mind of the public the products of Defendants with the products of Irwin, and tends to falsely describe, represent, and designate that Defendants and their products enjoy the sponsorship of Irwin, or some manner of association with Irwin, to the damage of Irwin. 39. The acts of Defendants complained herein constitute infringement of the common

law rights of Irwin in its well known trade dress. 40. Defendants actions are willful, deliberate, and done with knowledge of Irwins

exclusive proprietary rights and other legitimate interests and with knowledge that these actions are likely to confuse, mislead, and deceive the public. 41. Irwin has no adequate remedy at law. The unlawful activities of Defendants

described herein have caused, and if not enjoined will continue to cause, irreparable damage to the legitimate rights and interests of Irwin, including the goodwill associated with the Irwin Trade Dress.

10

COUNT III UNFAIR COMPETITION UNFAIR AND DECEPTIVE TRADE PRACTICES 42. The allegations contained in paragraphs 1-41 of this Complaint are incorporated

by reference as if fully set forth herein. 43. By virtue of the aforesaid acts, Defendants have acted unfairly and deceptively

with Plaintiff Irwin, and have been unjustly enriched at the expense of Irwin in violation of the common law of the State of North Carolina and N.C. Gen. Stat. 75-1.1, et seq. 44. Plaintiff Irwin has suffered actual injury and has been damaged by virtue of

Defendants unfair and deceptive acts. 45. Pursuant to N.C. Gen. Stat. 75-1.1, et seq., Plaintiff Irwin is entitled to treble

damages and attorneys fees for Defendants unfair and deceptive acts. REQUEST FOR RELIEF WHEREFORE, Plaintiff Irwin respectfully requests that the Court: A. B. Hold that Defendants have infringed the 327 patent; Award Plaintiff Irwin damages adequate to compensate for all such unauthorized

acts of infringement pursuant to 35 U.S.C. 284, and increase the damages awarded up to threefold by reason of the willful and deliberate nature of such acts of infringement also pursuant to 35 U.S.C. 284; C. Declare this case as exceptional within the meaning of 35 U.S.C. 285, and

award Plaintiff Irwin its reasonable attorneys fees and other costs and expenses as incurred in the prosecution of this action; D. Award Plaintiff Irwin damages, including treble damages, costs and attorneys

fees for Defendants acts of trade dress infringement, pursuant to 15 U.S.C. 1116-1118;

11

E.

Permanently enjoin Defendants from any further acts of infringement and/or

unfair competition; F. Award Plaintiff Irwin damages, including treble damages, costs and attorneys

fees, for Defendants unfair and deceptive acts, pursuant to N.C. Gen. Stat. 75-1.1, et seq.; and G. Award such other and further relief as this Court may deem just and proper. JURY DEMAND Pursuant to Rule 38 of the Federal Rules of Civil Procedure, Plaintiff Irwin demands a jury trial as to all matters so triable.

Respectfully submitted, this 16th day of August, 2012.

__________________________ Gregory J. Carlin North Carolina Bar No.: 29,138 McKeon Meunier Carlin & Curfman 817 W. Peachtree Street, NW, Suite 500 Atlanta, GA 30308 Telephone: (404) 645-7700 Facsimile: (404) 645-7707

ATTORNEYS FOR PLAINTIFF

12