Case 1:16-cv-10043-WHP Document 1 Filed 12/30/16 Page 1 of 5

Max Moskowitz
Michael F. Hurley
Ariel S. Peikes
OSTROLENK FABER, LLP
1180 Avenue of the Americas
New York, New York 10036
(212) 382-0700
Attorneys for Plaintiff
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
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:
SOUND AROUND INC.,
: Civil Action No. 16-cv-10043
:
Plaintiff,
:
:
v.
:
:
GOPRO, INC.
:
:
Defendant.
:
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COMPLAINT FOR DECLARATORY JUDGMENT OF NO
TRADEMARK OR PATENT INFRINGEMENT, AND FOR ORDER THAT
DEFENDANT WITHDRAW ITS REQUEST TO AMAZON
TO DELIST PLAINTIFFS CAMERA GOODS

Plaintiff, SOUND AROUND INC., through its counsel and for the complaint against
GOPRO, INC., states as follows:
1.

This is an action for a Declaration of no trademark infringement under the federal

Lanham Act, and Declaration of no patent infringement.

THE PARTIES
2.

Plaintiff Sound Around Inc. (Sound Around) is a New York corporation with an

address at 1600 63rd Street, Brooklyn, New York 11204.

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3.

On information and belief, Defendant GoPro, Inc. (GoPro) is a California

corporation with an address at 3000 Clearview Way, San Mateo, California 94402.
JURISDICTION AND VENUE
4.

This action arises under the trademark laws of the United States, 15 U.S.C.

1501, et seq., under the Patent Law 35 U.S.C. 101 et seq. and seeks relief, inter alia, under the
Declaratory Judgment Act, 28 U.S.C. 2201 and 2202. This Court has jurisdiction under 28
U.S.C. 1338(a). Venue is proper in this judicial district under 28 U.S.C. 1391(c) and
1400(b).
FACTUAL BACKGROUND FOR CLAIMS FOR RELIEF
5.

Founded 37 years ago, Sound Around is a leading importer and seller of high-

quality audio, video and electronics products, DJ equipment, and musical instruments, many sold
under its trademark PYLE.
6.

Among the electronics products sold by Sound Around are cameras, including

cameras for underwater use involved in this action (the Gear Pro cameras).
7.

Sound Around has been selling the subject Gear Pro cameras to the public

including through Amazon under certain Amazon listing numbers that are identified in Exhibit
A hereto.
8.

GoPro contacted Amazon and asked Amazon to delist the Gear Pro cameras. See

Exhibit A.
9.

Sound Arounds counsel has written to Amazon and to GoPro requesting

explanation for this delisting and has received the attached letter dated December 29, 2016
(Exhibit B), asserting infringement of GoPros trademarks GOPRO and/or HERO (the
GoPro Trademarks) and has further asserted infringement of United States Design Patent Nos.

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D721,395; D737,879; D740,868; D741,394; D702,747; and D740,875 (collectively, the GoPro
Patents).
10.

On information and belief, the Gear Pro cameras that Sound Around purchases in

Asia and resells in the United States including through Amazon neither encroach on any
trademarks or trade dress or patent rights of GoPro.
11.

On information and belief, the GoPro patents in suit are invalid and not infringed

by the Gear Pro products being offered to the marketplace by Sound Around.
COUNT I
Gear Pro Cameras Do Not Infringe GoPros Trademarks and/or Patents
12. This is an action for a Declaratory Judgment that Sound Arounds use of Gear Pro
and SereneLife on its cameras is not likely to cause confusion or to cause mistake or to deceive
the public with regard to GoPros trademark rights asserted.
13. Sound Around repeats and realleges the averments contained in Paragraphs 1-12
of this Complaint as if fully set forth herein.
14. This is also an action for a Declaratory Judgment that Sound Arounds marketing
of the Gear Pro and SereneLife cameras does not give rise to any valid claim of patent
infringement of the GoPro Patents.
15. This is also an action for a Declaratory Judgment that the GoPro patents are
invalid under one or more of 101, 102, 103 and 112 of the Patent Act.
16.

Sound Around is under a real and imminent threat that GoPro will bring suit

against it in the immediate future for trademark and/or patent infringement and related causes of
action.

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17.

By reason of the foregoing, Sound Around has suffered, and will continue to

suffer, irreparable harm by GoPro in the manner set forth above unless a declaratory judgment
issues precluding GoPro from suing Sound Around based upon the aforesaid acts.
18.

Sound Around has no adequate remedy at law.

COUNT II
For an Order Requiring GoPro to Direct Amazon
to Relist the Gear Pro cameras.

19.

Sound Around repeats and realleges the averments contained in Paragraphs 1-18

of this Complaint as if fully set forth herein.

20.

GoPros acts of directing Amazon to delist a competitors product that does not

infringe on any of its proprietary rights constitutes a violation of the Lanham Act and tortious
interference with business relations.
21.

This is also a Count for Unfair Competition Under the Lanham Act, for false

statements and tortious interference with a competitors business.

22.

By reason of the foregoing, Sound Around has suffered, and will continue to

suffer, irreparable harm by GoPro in the manner set forth above unless a declaratory judgment
issues requiring GoPro to consent to inform Amazon to relist the Gear Pro camera.
23.

Sound Around has no adequate remedy at law.

WHEREFORE, Sound Around prays that judgment be entered:

A.

Declaring that Sound Around has not infringed the alleged trademark in U.S.

Trademark Reg. Nos. 3,032,989 and 3,308,141.

B.

Declaring that Sound Around has not infringed upon United States Design Patent

Nos. D721,395; D737,879; D740,868; D741,394; D702,747; and D740,875.

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C.

Ordering GoPro to immediately provide its consent to the relisting by Amazon of

the Gear Pro delisted cameras.

D.

Ordering that Sound Around be granted such other and further relief as the Court

may deem just and proper.

Dated: December 30, 2016

Respectfully submitted,

__s/ Max Moskowitz____________

Max Moskowitz
OSTROLENK FABER, LLP
mmoskowitz@ostrolenk.com
Michael F. Hurley
mhurley@ostrolenk.com
Ariel S. Peikes
apeikes@ostrolenk.com
1180 Avenue of the Americas
New York, New York 10036
Tel. (212) 382-0700
Fax (212) 382-0888
Attorneys for Plaintiff

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Exhibit A

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Exhibit B

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