J ed H. Hansen, UT 10679 Eric E. Westerberg, UT 12712 THORPE, NORTH & WESTERN, LLP 8180 South 700 East, Suite 350 Sandy, Utah 84070 Telephone: (801) 566-6633 Facsimile: (801) 566-0750
Attorney for American Covers, Inc. and Local Counsel for Brandywine Product Group International, Inc.
Francis DiGiovanni, DE 3189 (Pro Hac Vice Application to be Filed) Drinker Biddle & Reath LLP 222 Delaware Ave., Ste. 1410 Wilmington, DE 19801-1621
Attorney for Plaintiff, Brandywine Product Group International, Inc.
IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF UTAH, CENTRAL DISTRICT
AMERICAN COVERS, INC., a Utah corporation, and BRANDYWINE PRODUCT GROUP INTERNATIONAL, INC., a Delaware corporation,
Plaintiffs, v.
GREENBRIER INTERNATIONAL, INC., a Delaware Corporation, and DOLLAR TREE STORES, INC., a Virginia Corporation,
Defendants.
Case No.: 2:14-cv-00490
COMPLAINT WITH JURY DEMAND
J udge Paul M. Warner
Plaintiffs American Covers, Inc. (American Covers) and Brandywine Product Group, Inc. (BPG) (collectively Plaintiffs) by and through their counsel hereby file this Complaint with J ury Demand against Defendants Greenbrier International, Inc. and Dollar Tree Stores, Inc. (collectively Dollar Tree or Defendants). 2
COMPLAINT Plaintiffs complain and allege as follows: PARTIES, JURISDICTION AND VENUE 1. American Covers, Inc. is a Utah corporation having a principal place of business at 102 West 12200 South, Draper Utah 84020. 2. Brandywine Product Group, Inc. is a Delaware corporation having a principal place of business at 3 Mill Road, Suite 202, Wilmington Delaware 19806. 3. Upon information and belief, Defendant Greenbrier International, Inc. is a Delaware corporation having a principal place of business at 500 Volvo Parkway, Chesapeake, Virginia 23320. 4. Upon information and belief, Defendant Dollar Tree Stores, Inc. is a Virginia corporation having a principal place of business at 500 Volvo Parkway, Chesapeake, Virginia 23320. 5. Plaintiffs bring this action under U.S. patent laws, 35 U.S.C. 1 et seq., under the Lanham Trademark Act, Title 15, United States Code 1051, et seq., and under various other Utah state law and common law provisions. 6. This Court has subject matter jurisdiction over this action under 28 U.S.C. 1331 and 1338. 7. This Court has supplemental jurisdiction over any state law statutory and common law claims pursuant to 28 U.S.C. 1367. 8. Upon information and belief, this Court has specific personal jurisdiction over Defendants as Defendants have purposefully directed their activities toward the state of Utah. 9. Upon information and belief, this Court has general personal jurisdiction over Defendants since their contacts with Utah are substantial, continuous, and systematic and this action is based upon activities that arise out of or are related to those contacts. 3
10. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391 because Defendants conduct business directly related to the patents and trade dress at issue in this case, thereby harming Plaintiffs in this judicial district.
GENERAL ALLEGATIONS PLAINTIFFS PRODUCTS AND INTELLECTUAL PROPERTY
11. Plaintiffs are in the business of inventing, developing, manufacturing, distributing, and selling various air fresheners and other products. 12. BPG is the owner of two design patents designated as United States Design Patent Nos. D604,826 and D614,279 (collectively the BPG Patents). The BPG Patents claim the design of an air freshener product that approximates the shape of a flower. The design claimed by the BPG Patents is illustrated below.
13. American Covers is an exclusive licensee of the BPG Patents within the automotive air freshener channel. 14. American Covers manufactures, markets, and sells throughout the United States air freshener products, including air freshener devices that approximate the shape of a flower (the Flower Air Freshener Products). Through the extensive sale, marketing, and distribution of the Flower Air Freshener Products, the design and trade dress of the products have become 4
distinctive and consumers associate its design and trade dress with American Covers. An image of one example of the Flower Air Freshener Product is illustrated below.
15. The trade dress design features associated with the American Covers Flower Air Freshener Product are the subject of a pending trademark application for the United States Patent and Trademark Office as U.S. Ser. No. 86/295,025.
DEFENDANTS MISCONDUCT 16. Upon information and belief, Defendants make, use, sell, offer for sale, and import into the United States an air freshener that infringes the BPG Patents (the Infringing Products). An image of one example of the Defendants Infringing Products is shown below.
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17. Upon information and belief, Defendants continued manufacture, use, sale, import, and offer for sale and distribution of their Infringing Products has injured, is injuring, and will continue to cause irreparable injury to Plaintiffs. 18. Additionally, upon information and belief, Defendants acted in an objectively reckless manner with respect to Plaintiffs patent rights. Upon information and belief, Defendants made, used, sold, offered for sale, and imported into the United States their Infringing Products knowing that it was highly likely that their acts would constitute infringement of a valid patent. Upon information and belief, Defendants knew or should have known that their actions were highly likely to result in the infringement of a valid patent. As a consequence, Defendants have engaged in willful infringement of the BPG Patents and Plaintiffs are therefore entitled to treble damages and attorneys fees as well as costs incurred in this action along with prejudgment interest under 35 U.S.C. 284 and 285. 19. Defendants make, use, sell, import, offer for sale, and distribute their Infringing Products in the United States. These products copy the trade dress of American Covers Flower Air Freshener Products. 20. Defendant is in direct competition with American Covers and Defendants Infringing Products are substantially identical to American Covers Flower Air Freshener Products. Moreover, Defendants and American Covers products are marketed through identical channels of trade and to identical consumers. 21. In view of the above, it is clear that Defendants use of their confusingly similar product design is likely to cause confusion, or to cause mistake, or to deceive consumers as to the affiliation, connection, or association of Defendants with American Covers Flower Air Freshener Products. 6
22. Upon information and belief, Defendants have purposefully copied American Covers Flower Air Freshener Products trade dress to unlawfully benefit from American Covers goodwill in the marketplace. 23. Plaintiffs have been, and continue to be, significantly damaged by Defendants actions. So long as Defendants continue performing the unlawful and improper actions described in this Complaint, Plaintiffs will continue to suffer irreparable harm that will not be fully compensable by money damages.
FIRST CAUSE OF ACTION (PATENT INFRINGEMENT OF THE BPG PATENTS UNDER 35 U.S.C. 271) 24. Plaintiffs hereby incorporate by reference each and every preceding allegation of this complaint as if set forth fully herein. 25. BPG owns the BPG Patents. 26. American Covers is an exclusive licensee of the BPG Patents within the automotive air freshener channel. 27. Defendants make, use, sell, offer for sale, and/or import into the United States air fresheners that directly infringe the BPG Patent. 28. At no time has BPG or American Covers granted Defendants permission, license, or authorization to use the designs claimed in the BPG Patents. 29. Upon information and belief, Defendants infringing activities have damaged BPG and American Covers in an amount to be proven at trial. Among other remedies, American Covers is entitled to its lost profits or, in the alternative a reasonable royalty to adequately compensate American Covers for Defendants infringing activities under 35 U.S.C. 284. Additionally, the harm to American Covers arising from these acts by Defendants is not fully compensable by money damages. American Covers has suffered and continues to suffer 7
irreparable harm that has no adequate remedy at law and that will continue unless the infringing conduct by Defendants is preliminarily and permanently enjoined. 30. Upon information and belief, Defendants acted in an objectively reckless manner with respect to Plaintiffs patent rights. Upon information and belief, Defendants made, used, sold, and offered for sale their infringing air freshener products knowing that it was highly likely that their acts would constitute infringement of a valid patent. Defendants knew, or should have known, that their actions were highly likely to result in the infringement of a valid patent. As a consequence, Defendants have engaged in willful infringement of the patents-in-suit and American Covers is therefore entitled to treble damages and attorneys fees as well as costs incurred in this action along with prejudgment interest under 35 U.S.C. 284 and 285.
SECOND CAUSE OF ACTION (TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION, 15 U.S.C. 1125(A) AND COMMON LAW) 31. Plaintiffs hereby incorporate by this reference each and every preceding allegation as if set forth fully herein. 32. The trade dress design features associated with the American Covers Flower Air Freshener Product are the subject of a pending trademark application for the United States Patent and Trademark Office as U.S. Ser. No. 86/295,025. 33. The trade dress design features associated with the American Covers Flower Air Freshener Products are indicative of American Covers and its air fresheners, are inherently distinctive, and have acquired secondary meaning with the consuming public. 34. Defendants Infringing Products use design features that are likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, association, origin, sponsorship, or approval of their goods and commercial activities in light of American Covers trade dress. 8
35. By engaging in these activities, Defendants have infringed American Covers trade dress and are liable for unfair competition under 15 U.S.C. 1125(a)(1)(A) and under the common law. 36. American Covers has suffered actual damages as a result of Defendants trade dress infringement and unfair competition in an amount to be proven at trial. Additionally, the harm to American Covers arising from Defendants acts is not fully compensable by money damages. American Covers has suffered, and continues to suffer, irreparable harm that has no adequate remedy at law and that will continue unless Defendants conduct is preliminarily and permanently enjoined. 37. Defendants continued use of American Covers trade dress is willful and intentional. As a result, American Covers is further entitled to treble damages and an award of costs and attorneys fees.
THIRD CAUSE OF ACTION (UNFAIR COMPETITION, UTAH CODE ANN. 13-5A-102, 103 AND UTAH COMMON LAW) 38. Plaintiffs hereby incorporate by this reference each and every preceding allegation as if set forth fully herein. 39. BPG owns the BPG Patents. 40. American Covers is an exclusive licensee of the BPG Patents within the automotive air freshener channel. 41. Defendants have engaged in unfair methods of competition by copying American Covers trade dress. 42. Defendants make, use, sell, offer for sale, and/or import into the United States air fresheners that infringe the BPG Patents. 43. Defendants have engaged in unfair methods of competition by infringing American Covers trade dress. 44. Upon information and belief, American Covers has been injured by Defendants infringing acts. 9
45. By engaging in the above-described activities, Defendants have engaged in unfair competition under Utah Code Ann. 13-5a-102, 103 and under Utah common law. 46. American Covers and BPG have suffered actual damages as a result of unfair business practices by Defendants in an amount to be proven at trial. Additionally, the harm to American Covers arising from Defendants acts is not fully compensable by money damages. American Covers has suffered, and continues to suffer irreparable harm that has no adequate remedy at law and that will continue unless this unfair conduct by Defendants is preliminarily and permanently enjoined. Furthermore, American Covers is entitled to its attorneys fees and costs.
WHEREFORE, it is respectfully requested that the Court enter judgment in favor of Plaintiffs as follows: A. That the Court enter judgment that Defendants have infringed the BPG Patents. B. That the Court enter judgment that the Defendants have competed unfairly pursuant to 15 U.S.C. 1125 and infringed American Covers trade dress under the Lanham Act and common law. C. That the Court enter judgment that Defendants have competed unfairly pursuant to Utah Code. Ann. 13-5a-102, 103 and Utah common law. D. That Defendants be ordered to pay damages to Plaintiffs, together with interest, in an amount be determined by this Court. E. That the Court award Plaintiffs treble damages pursuant to 35 U.S.C. 284. F. That the Court award Plaintiffs costs and attorneys fees related to this action. G. That the Court award Plaintiffs prejudgment interest. H. That Plaintiffs have such other and further relief as shall seem just and proper to the Court. I. That the Court grant preliminary and permanent injunctive relief enjoining Defendants, their officers, directors, principals, agents, servants, employees, successors and assigns, and all other aiding, abetting, or acting in concert or active participation therewith, from 10
directly or indirectly infringing the patents and trade dress in suit, including with limitation, precluding Defendants from making, using, selling, offering for sale, or importing the infringing products.
DATED: J uly 2, 2014 THORPE NORTH & WESTERN, LLP
/Jed H. Hansen/ Peter M. de J onge J ed H. Hansen Eric E. Westerberg
Attorney for American Covers, Inc. and Local Counsel for Brandywine Product Group International, Inc.
DRINKER BIDDLE & REATH LLP
/Francis DiGiovanni/ Signed by filing attorney with permission Francis DiGiovanni, (Pro Hac Vice Application to be Filed)
Attorney for Plaintiff, Brandywine Product Group International, Inc.