Kitsch v. CM Nat'l - Complaint

Case 2:18-cv-08532 Document 1 Filed 10/04/18 Page 1 of 14 Page ID #:1
1 William E. Thomson, Jr. (SBN 47195)

wthomson@brookskushman.com
2 BROOKS KUSHMAN P.C.
601 S. Figueroa Street, Suite 2080
3 Los Angeles, CA 90017
Tel.: (213) 622-3003/Fax: (213) 622-3053
4
Mark A. Cantor (MI Bar No. P32661)
5 Rebecca J. Cantor (MI Bar No. P76826)
mcantor@brookskushman.com
6 rcantor@brookskushman.com
BROOKS KUSHMAN P.C.
7 1000 Town Center, Twenty-Second Floor
Southfield, MI 48075
8 Tel.: (248) 358-4400/Fax: (248) 358-3351
9 Attorneys for Plaintiff
Kitsch LLC
10
11 UNITED STATES DISTRICT COURT

12 CENTRAL DISTRICT OF CALIFORNIA
13 WESTERN DIVISION
14
15
16 Kitsch LLC, a California

company, Case No.
17
18 Plaintiff, COMPLAINT FOR DECLARATORY

v. JUDGMENT AND DEMAND FOR
19 JURY TRIAL
20 CM National Inc., a California
corporation, Noam
21 Krasniansky, an individual, and
Irene Krasniansky, an
22 individual,
23 Defendants.
24
25
26
27
28
1 COMPLAINT FOR DECLARATORY JUDGMENT

2 AND JURY DEMAND
3
Plaintiff Kitsch LLC (“Kitsch”), by and through its undersigned counsel, for
4
its Complaint against Defendants CM National Inc., Noam Krasniansky, and Irene
5
Krasniansky (collectively, “Defendants”), states as follows:
6
I. PARTIES
7
8 1. Plaintiff Kitsch is a Limited Liability Company organized under the

9 laws of California, having a principal place of business at 307 N. New Hampshire,
10 Los Angeles, California 90004.
11 2. On information and belief, Defendant CM National Inc. is a corporation
12 organized under the laws of the State of California, having a principal place of
13 business at 1959 Blake Ave, Unit L, Los Angeles, California 90039.
14 3. On information and belief, Defendant Noam Krasniansky, an
15 individual, resides at 5443 Pine Cone Rd, La Crescenta, California 91214-1461 and
16 owns and/or is an officer of Defendant CM National Inc.
17 4. On information and belief, Defendant Irene Krasniansky, an individual,
18 resides at 5443 Pine Cone Rd, La Crescenta, California 91214-1461 and owns and/or
19 is an officer of Defendant CM National Inc.
20
II. JURISDICTION AND VENUE
21
22 5. As detailed below, an actual case or controversy exists between Kitsch

23 and the Defendants as to whether Kitsch has infringed or is infringing one or more
24 valid and enforceable claims of U.S. Design Patent No. D698,996 (“the ‘996 Design
25 Patent”), and whether the ‘996 Design Patent is invalid.
26 6. The Court has subject matter jurisdiction over the claims herein
27 pursuant to 28 U.S.C. §§ 1331, 1338(a), 2201 and 2202. This Court also has
28 supplemental jurisdiction under 28 U.S.C. § 1367(a) over Kitsch’s state law claims
1 COMPLAINT
1
because they are so related to Kitsch’s federal claims that they form part of the same
2
case or controversy under Article III of the United States Constitution.
3
7. Venue and personal jurisdiction are appropriate in this Court under 28
4
U.S.C. §§ 1391(b) and 1400(b) because one or more defendants are located in this
5
District and/or because a substantial part of the events and omissions giving rise to
6
Kitsch’s claims occurred in this District.
7
III. FACTUAL BACKGROUND
8
9 A. Kitsch and Kitsch’s Hair Coil Products

10 8. Kitsch is a leading accessories manufacturer with products including,
11 hair ties, headbands, and jewelry, including rings, necklaces, earrings and other
12 fashion accessories. Today, Kitsch products can be found in over 2,000 locations
13 worldwide and has sold to large retailers such as Nordstrom, Anthropologie, Free
14 People, Kitson, Urban Outfitters, W Hotels, Francesca's and more. Kitsch
15 additionally operates an e-commerce website that serves thousands of retail
16 customers worldwide.
17 9. One of the many popular accessories Kitsch designed and manufactures
18 is a “hair coil,” which uses multiple coils to hold hair of different lengths and textures
19 in place without leaving a crease or dent.
20 10. Among other venues, Kitsch advertises and sells its hair coils through
21 the Amazon.com website.
22 11. Kitsch’s hair coils are among its best-selling products on Amazon. In
23 fact, the Kitsch hair coils have earned multiple “Amazon’s Choice” badges, earning
24 #1 and #3 positions in Amazon Hot New Releases (see Fig. 1), and #1 selling hair
25 tie/elastic, all designations Amazon reserves for popular, top-selling and highly-
26 rated goods:
27
28
2 COMPLAINT
10
11
12
Fig. 1
13
14 B. Defendants’ Wrongful Conduct

15 12. Defendants are competitors of Kitsch that also sell hair accessories via
16 Amazon, including “Ooo” hair ties that purport to hold hair in place using multiple
17 coils.
18 13. Defendant Noam Krasniansky is the named inventor on the ‘996 Design
19 Patent, which was filed on April 13, 2012 and matured into a patent on February 4,
20 2014. See Exh. 1. The ‘996 Design Patent, entitled “Cylindrical Hair Band,” lists a
21 single claim for “the ornamental design for a cylindrical hair band” that consists of
22 22 rings as illustrated in the patent. Id.
23 14. Unlike utility patents that protect the manner in which a product is used
24 and functions (35 U.S.C. §101), design patents only protect the way a product looks,
25 i.e., the ornamental design characteristics embodied in or applied to the product (35
26 U.S.C. §171). The scope of protection afforded under a design patent is limited to
27 the ornamental aspects of the claimed article alone and does not extend to any of the
28 article’s functional elements.
3 COMPLAINT
1
15. Additionally, a person is only entitled to patent a claimed invention that
2
was not “described in a printed publication, or in public use, on sale, or otherwise
3
available to the public before the effective filing date of the claimed invention….”
4
35 U.S.C. §102(a).
5
16. The ‘996 Design Patent discloses an article that is entirely functional,
6
given that the entire band is designed to hold various lengths and textures of hair.
7
See Exh. 1. The only ornamental design disclosed in the ‘996 Design Patent is the
8
number of coil rings, 22 according to the patent. Id.
9
17. In August 2017, Defendants filed a complaint with Amazon alleging
10
that certain Kitsch hair coils infringed the ‘996 Design Patent and requested that
11
Amazon remove Kitsch’s products from the website. In reliance on Defendants’
12
representations, Amazon removed multiple Kitsch hair coil products, including:
13
ASIN: B01HHGQRZG
14
ASIN: B01HHGQRZG
15 ASIN: B01G4GPPY4
ASIN: B07232K5Q4
16
ASIN: B0725N8HHJ
17 ASIN: B072FG5WCH
ASIN: B071Z6QZQ9
18
ASIN: B074KTXTZ9
19 ASIN: B074KTN8PY
20 18. For more than two months, Amazon precluded Kitsch from selling the
21 Kitsch hair coils targeted by Defendants, costing Kitsch a substantial amount of lost
22 revenue. Amazon did not lift the ban on Kitsch’s products until Defendants withdrew
23 the complaint in November 2017 after Kitsch pointed out that Defendants’ claim of
24 infringement was baseless for multiple reasons, including but not limited to the fact
25 that (1) even a cursory internet search reveals numerous products virtually identical
26 to the article claimed in the ‘996 Design Patent that were available for sale to the
27 public years before the ‘996 Design Patent was filed in April 2012, rendering the
28 ‘996 patent invalid, and (2) the only ornamental design disclosed in the ‘996 Design
4 COMPLAINT
1
Patent was the 22 coil rings spaced as indicated in the patent, whereas the Kitsch
2
hair coils are different, taking the Kitsch hair coils outside the scope of the ‘996
3
Design Patent. These deficiencies were pointed out directly to Defendants in a letter
4
sent on October 20, 2017. See Exh. 2.
5
19. Despite being aware that the Kitsch hair coils do not infringe any valid
6
claim of the ‘996 Design Patent, on September 7, 2018 Defendants once again issued
7
a complaint against multiple Kitsch hair coil products. Defendants again baselessly
8
claimed that the Kitsch products (the same products Defendants previously targeted)
9
infringe the ‘996 Design Patent. In reliance on Defendants’ representations, Amazon
10
again removed multiple Kitsch hair coil products, including:
11
ASIN: B072FG5WCH
12
ASIN: B07288PNFT
13 ASIN: B077GCNMH7
ASIN: B07C1D79YB
14
ASIN: B07HB937L8
15 ASIN: B0725N8HHJ
ASIN: B07HBB3L32
16
ASIN: B07BYRG1G5
17 ASIN: B01G4GPPY4
ASIN: B07DF5PFLK
18
ASIN: B07FP3686J
19 ASIN: B074KVK6H7
ASIN: B07232K5Q4
20
ASIN: B0769MTT1Z
21 ASIN: B077GDVQL7
22
ASIN: B01HHGQRZG
ASIN: B01HHGQIXW
23
24 20. To date, Amazon continues to preclude Kitsch from selling the Kitsch
25 hair coils targeted by Defendants’ most recent complaint. Kitsch suffers lost revenue
26 each day it is banned from selling its products on Amazon.
27
28
5 COMPLAINT
1
21. On September 24, 2018, Kitsch contacted Defendants and demanded
2
that they withdraw their baseless Amazon complaint against the Kitsch hair coil
3
products. Defendants refused.
4
22. On September 27, 2018, Defendants replied, acknowledging the risk of
5
invalidity of the ‘996 Design Patent, but nonetheless sent a take-down notice to
6
Amazon:
7
“At this point I would like to make some money on Amazon, but you are
8
getting in the way of this. And all my hard work, the patent and my
9
policing of the patent, is only rewarding you. If you would like you can
10
invalidate my patent and open the flood gates to thousands and thousands
11
of sellers, which will sell this product much below your price point.”
12
13 23. Defendants’ repeated filing of baseless complaints against Kitsch,

14 asserting claims of infringement that Defendants know or should know to be
15 completely baseless, are deliberate and willful. In an apparent effort to unlawfully
16 obtain a competitive advantage, Defendants intended to and have caused disruption
17 of Kitsch’s business and standing as an Amazon retailer.
18 24. As a direct result of Defendants’ actions, Kitsch has suffered and will
19 continue to suffer significant harm to its business, goodwill, reputation and profits.
20 25. Kitsch has no adequate remedy at law. Kitsch has suffered and will
21 continue to suffer immediate and irreparable injury, loss and damage as a result of
22 Defendants’ deliberate and wrongful actions. Kitsch will continue to suffer
23 irreparable harm unless Defendants are preliminarily and permanently enjoined by
24 this Court.
25
26
27
28
6 COMPLAINT
1 IV. COUNT I:
2 DECLARATION OF PATENT INVALIDITY
3 (Alleged Against Defendant Noam Krasniansky)

4 26. Kitsch repeats and realleges the allegations of the preceding paragraphs
5 as of set forth herein.
6 27. The claims of the ‘996 Patent are invalid under 35 U.S.C. §§102, 103
7 and 112.
8 28. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et
9 seq., Kitsch requests a declaration from the Court that the ‘996 Patent is invalid.
10
11 V. COUNT II
DECLARATION OF NON-INFRINGEMENT
12
13
(Alleged Against Defendant Noam Krasniansky)
29. Kitsch repeats and realleges the allegations of the preceding paragraphs
14
as of set forth herein.
15
30. Kitsch is not infringing, and has not infringed, directly, by inducement,
16
contributorily, or in any way, either literally or under the doctrine of equivalents,
17
any valid and enforceable claims of the ‘996 Patent.
18
31. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et
19
seq., Kitsch requests a declaration from the Court that Kitsch does not and has not
20
infringed the ‘996 Patent.
21
22 VI. COUNT III

DECLARATION OF PATENT MISUSE
23
24 (Alleged Against Defendant Noam Krasniansky)

27 33. Defendant Noam Krasniansky’s wrongful conduct as alleged herein
28 has and is likely to cause relevant entities and/or consumers, including Amazon, to
7 COMPLAINT
1
have a false impression as to the scope of Defendant Noam Krasniansky’s
2
intellectual property rights in the ‘996 Design Patent, including that Defendant
3
Noam Krasniansky’s rights are more expansive than actually afforded under the ‘996
4
Design Patent and superior to Kitsch’s intellectual property rights in the Kitsch hair
5
coil products Defendant Noam Krasniansky’s repeatedly and falsely accuses of
6
patent infringement.
7
34. Defendant Noam Krasniansky’s conduct as alleged herein was and is
8
willful and intentional, and was intended to and has enabled Defendant Noam
9
Krasniansky to wrongfully disrupt Kitsch’s business and standing as an Amazon
10
retailer and gain an unlawful competitive advantage.
11
35. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201 et
12
seq., Kitsch requests a declaration from the Court that the ‘996 Patent is invalid due
13
to Defendant Noam Krasniansky’s patent misuse.
14
VII. COUNT IV
15
INTENTIONAL INTERFRENCE WITH PROSPECTIVE
16 ECONOMIC ADVANTAGE
17 (Alleged against All Defendants)
20 37. Kitsch has a valid and existing contract with Amazon that enables
21 Kitsch to advertise and sell various products, including the Kitsch hair coil products
22 at retail to consumers.
23 38. Defendants were well aware of Kitsch’s economic relationship with
24 Amazon.
25 39. Defendants’ aforementioned intentional acts, namely Defendants’
26 repeated filing of complaints against Kitsch asserting claims of infringement that
27 Defendants know or should know to be completely baseless, were designed to and
28
8 COMPLAINT
1
did interfere with Kitsch’s economic relationship with Amazon by wrongfully
2
inducing Amazon to ban Kitsch from selling its hair coil products.
3
40. As a direct and proximate result of Defendants’ conduct, Kitsch has
4
suffered irreparable harm to its business, goodwill and reputation, including
5
monetary damages of at least one million ($1,000,000) dollars. Unless Defendants
6
are restrained from such conduct, Kitsch will continue to be irreparably harmed.
7
41. Kitsch has no adequate remedy at law that will compensate for the
8
continued and irreparable harm it will suffer if Defendants’ conduct is allowed to
9
continue.
10
VIII. COUNT V
11
INTENTIONAL INTERFERENCE WITH
12 CONTRACTUAL RELATIONS
13 (Alleged against all Defendants)
14
42. Kitsch repeats and realleges the allegations of the preceding paragraphs
15
as of set forth herein.
16
43. Kitsch has a valid and existing contract with Amazon that enables
17
Kitsch to advertise and sell various products, including the Kitsch hair coil products
18
at retail to consumers.
19
44. Defendants were well aware of Kitsch’s contractual relationship with
20
Amazon.
21
45. Defendants’ aforementioned intentional acts, namely Defendants’
22
repeated filing of complaints against Kitsch asserting claims of infringement that
23
Defendants know or should know to be completely baseless, was designed to and
24
did induce a breach or disruption of Kitsch’s contractual relationship with Amazon
25
by wrongfully inducing Amazon to ban Kitsch from selling its hair coil products.
26
46. As a direct and proximate result of Defendants’ conduct, Kitsch has
27
suffered irreparable harm to its business, goodwill and reputation, including
28
9 COMPLAINT
1
monetary damages of at least one million ($1,000,000) dollars. Unless Defendants
2
are restrained from such conduct, Kitsch will continue to be irreparably harmed.
3
47. Kitsch has no adequate remedy at law that will compensate for the
4
continued and irreparable harm it will suffer if Defendants’ conduct is allowed to
5
continue.
6
IX. COUNT VI
7
COMMON LAW UNFAIR COMPETITION
8
(Alleged against All Defendants)
9
12 49. This claim arises under the common law of the State of California
13 relating to unfair competition.
14 50. Defendants’ wrongful conduct as alleged herein has and will continue
15 to cause disruption of Kitsch’s business and standing as an Amazon retailer and
16 significant harm to Kitsch’s goodwill, reputation and profits.
17 51. Defendants have thus committed unfair competition under the common
18 law of the State of California.
19 52. Defendants’ conduct as alleged herein was and is willful and
20 intentional.
21 53. As a direct and proximate result of Defendants’ conduct, Kitsch has
22 suffered irreparable harm to its business, goodwill and reputation, including
23 monetary damages of at least one million ($1,000,000) dollars. Unless Defendants
24 are restrained from such conduct, Kitsch will continue to be irreparably harmed.
25 54. Kitsch has no adequate remedy at law that will compensate for the
26 continued and irreparable harm it will suffer if Defendants’ conduct is allowed to
27 continue.
28
10 COMPLAINT
1
55. Upon information and belief, Defendants have engaged in the wrongful
2
conduct alleged herein intentionally, maliciously, fraudulently and/or oppressively,
3
entitling Kitsch to punitive and exemplary damages in an amount to be determined
4
at trial.
5
X. COUNT VII
6 STATUTORY UNFAIR COMPETITION –
CALIFORNIA BUS. & PROF. CODE §17200, et seq.
7
(Alleged against All Defendants)
8
11 57. By virtue of the conduct described herein, Defendants have been and
12 are engaged in “unlawful, unfair or fraudulent business act[s] or practice[s]” in
13 violation of California Business and Professions Code Section 17200, et seq.
14 58. As a direct and proximate result of Defendants’ conduct, Kitsch has
15 suffered irreparable harm to its business, goodwill and reputation, including
16 monetary damages of at least one million ($1,000,000) dollars. Unless Defendants
17 are restrained from such conduct, Kitsch will continue to be irreparably harmed.
18 59. Kitsch has no adequate remedy at law that will compensate for the
19 continued and irreparable harm it will suffer if Defendants’ conduct is allowed to
20 continue.
21 PRAYER FOR RELIEF
22 WHEREFORE, Plaintiff respectfully requests the following relief:
23
a. A declaration that Kitsch does not infringe and has not infringed any
24
claims of the ‘996 patent;
25
b. A declaration that the ‘996 patent is invalid under 35 U.S.C. §§102, 103
26
and 112;
27
c. A declaration that the ‘996 patent is invalid due to patent misuse;
28
11 COMPLAINT
1
d. A determination that the Defendants have intentionally interfered with
2
Kitsch’s prospective economic advantage, that Kitsch been damaged by such
3
interference, and that Defendants are liable to Kitsch for such interference;
4
e. A determination that the Defendants have intentionally interfered with
5
Kitsch’s contractual relations, that Kitsch been damaged by such interference, and that
6
Defendants are liable to Kitsch for such interference;
7
f. A determination that the Defendants have committed common law unfair
8
competition, that Kitsch been damaged by such violations, and that Defendants are
9
liable to Kitsch for common law unfair competition;
10
g. A determination that the Defendants have violated Calif. Bus. & Prof.
11
Code §§17200 et seq., that Kitsch been damaged by such violations, and that
12
Defendants are liable to Kitsch for such violations;
13
h. A declaration that this is an exceptional case and award Kitsch its costs,
14
disbursements, and reasonable attorneys’ fees pursuant to 35 U.S.C. § 285;
15
i. Under all claims for relief, including Cal. Bus. & Prof. Code § 17203, a
16
preliminary and permanent injunction restraining and enjoining Defendants and their
17
officer, agents, attorneys and employees, and those acting in privity or concert with
18
them, from committing acts of unfair competition; and
19
k. Such other and further relief as the Court may deem just and proper.
20
21 Dated: October 4, 2018 Respectfully submitted,

22 By: /s/ William E. Thomson, Jr.
William E. Thomson, Jr. SBN 47195)
23 Mark A. Cantor (MI BAR No. P32661)
Rebecca J. Cantor (MI Bar No. P76826)
24 wthomson@brookskushman.com
BROOKS KUSHMAN P.C.
26 601 S. Figueroa Street, Suite 2080
Los Angeles, CA 90017
27 Tel.: (213) 622-3003/Fax: (213) 622-3053
12 COMPLAINT
1 JURY DEMAND
2 Plaintiff Kitsch LLC demands trial by jury of all issues in this action so triable.
3
4 Dated: October 4, 2018 Respectfully submitted,

5
By: /s/ William E. Thomson, Jr.
6 William E. Thomson, Jr. SBN 47195)
wthomson@brookskushman.com
7 BROOKS KUSHMAN P.C.
601 S. Figueroa Street, Suite 2080
8 Los Angeles, CA 90017
Tel.: (213) 622-3003/Fax: (213) 622-3053
9
Mark A. Cantor (MI Bar No. P32661)
10 Rebecca J. Cantor (MI Bar No. P76826)
BROOKS KUSHMAN P.C.
12 1000 Town Center, Twenty-Second Floor
Southfield, MI 48075
13 Tel: (248) 358-4400/Fax: (248) 358-3351
15
16
17
18
19
20
21
22
23
24
25
26
27
28
13 COMPLAINT
Case 2:18-cv-08532 Document 1-1 Filed 10/04/18 Page 1 of 5 Page ID #:15
EXHIBIT 1
USO0D698996S
(12) Unlted States Deslgn Patent (10) Patent N0.: US D698,996 S

Krasniansky (45) Date of Patent: 4* Feb. 4, 2014
(54) CYLINDRICAL HAIR BAND 5,429,360 A * 7/1995 Capecci, Jr. ................ .. 473/589
5,503,375 A * 4/1996 Balsells ....... .. 267/167
. - D372,338 S * 7/1996 Engelet a1. . D28/41
(76) IIIVBIIIOF- 0351111 KrasnlanskmLosAnge/leeCA 13374306 S ,, 10/1996 Query “““““ “ 1328/10
( ) 5,878,755 A * 3/1999 Crabtree et a1. 132/273
5,946,728 A * 9/1999 Tane . . . . . . . . . . . . . . . . . . . .. 2/171
(**) Term: 14 Years D428,530 S * 7/2000 Dorsey D28/4l

D523,191 S * 6/2006 Wang .... .. .. D30/160
(21) APPLNQ; 29/418,263 D544,l54 S * 6/2007 Bidinger .. D30/l60
7,328,710 B2* 2/2008 Hall et a1. .... .. 132/208
- _ 2007/0175493 A1* 8/2007 Tandberg et a1. .. 132/275
(22) Med Apr‘ 13’ 2012 2008/0099036 Al* 5/2008 Crowleyet a1. 132/275
(51) LOC (10) Cl. .............................................. .. 28-03 2009/0229625 A1* 9/2009 Shyu ............ .. 132/276
(52) US-Cl- 2009/0301510 A1* 12/2009 Hsu ............................. .. 132/273
. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .. * Cited examiner
(58) Field of Classi?cation Search

USPC ............... .. D28/21e34, 39443; 132/101, 126, Primary ExamineriZenia Bennett
132/l28el31, 144, 148, 219, 2754284; (74) Attorney, Agent, or Firm 4 Michael N. Cohen; Cohen
D1 l/3e6 LP. LaW Group PC.
See application ?le for complete search history.
_ (57) CLAIM
(56) References Clted I claim the ornamental design for a cylindrical hair band, as
US PATENT DOCUMENTS Show“ and descnbed'
2,587,810 A * 3/1952 Beyer .......................... .. 277/618 DESCRIPTION

2,924,228 A * 2/1960 McGee .. 132/273
,
‘SA : Rmslhlos, Jr
ac er ....... ..
~~~~~D623é FIG. 1 is a side perspective View of cylindrical hair band;
- - _
4,979,276 A * 12/1990 Chimento 29/89641 131G215 af¥° mY1eW OfFIG' 1’ and’

5,003,993 A * 4/1991 Silver . . . . . . . . . . . .. 128/842 FIG~31S a slde VleW OfFIG 1
D3l7,663 s * 6/1991 Calderon . D28/41

5,271,421 A * 12/1993 Videtzky ..................... .. 132/200 1 Claim, 3 Drawing Sheets
22 patent shows 22 rings

21
20 12 3
19 4
18 5
17 6
16 7
15
14 8
13 9
12 11 10
US. Patent Feb. 4, 2014 Sheet 1 of3 US D698,996 S
HQ. 1
FEG. 2
HG. 3
EXHIBIT 2
Brooks Kushman P.C.

1000 Town Center, Twenty-Second Floor
Southfield, Michigan 48075-1238 USA Ernie L. Brooks
Tel (248) 358-4400 ● Fax (248) 358-3351 1942-2007
www.BrooksKushman.com
October 20, 2017
Via E-Mail: noambambooee@gmail.com

sales@bambooee.com
Noam Krasniansky
Bambooee
CM National Inc.
1959 Blake Ave, Unit L
Los Angeles, CA 90039
Re: Noam Krasniansky and Bambooee Complaint IDs: 1060202631;

1071147331; 1071147611; 1071147351; 1144329831; 1144329821
Dear Mr. Krasniansky:
Brooks Kushman is intellectual property and litigation counsel for Kitsch LLC (“Kitsch”).
On behalf of Kitsch, we are writing this letter to demand that you cease activities interfering with
our client’s business interests.
We demand that you, Mr. Noam Krasniansky of Bambooee (“Bambooee”), any other
associate or business partner of Mr. Krasniansky, and any other representative of Bambooee, cease
and desist your baseless intellectual property (“IP”) complaints to the Amazon.com website
regarding Kitsch and its associates. Additionally, we request that you refrain from filing any
further complaints regarding U.S. Design Patent No. D698,996 (“’996 Patent”) that impede
Kitsch’s legitimate course of business.
Bambooee has identified the ’996 Patent as the basis for its complaint. However, the Kitsch
products do not remotely infringe the ’996 Patent.
DESIGN PATENT LAW
“A patented design is ordinarily claimed ‘as shown’, that is, by its drawing.” L.A. Gear,
Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1122 (Fed. Cir. 1993)(citing 37 C.F.R. § 1.153(a).
To determine whether an accused product infringes a patented design, the court applies the
“ordinary observer” test. Crocs, Inc. v. Int’l Trade Comm’n, 598 F.3d 1294, 1303 (Fed. Cir. 2010)
(citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 681 (Fed. Cir. 2008)). A design patent
owner must demonstrate that an ordinary observer “would be deceived into believing that the
accused product is the same as the patented design.” Id. “[I]f, in the eye of an ordinary observer,
October 22, 2017

Page 2
giving such attention as a purchaser usually gives, two designs are substantially the same, if the
resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to
be the other, the first one patented is infringed by the other.” Egyptian Goddess, 543 F.3d at 670
(quoting Gorham Co. v. White, 81 U.S. 511, 528, 20 L. Ed. 731 (1871)).
“It is the appearance of a design as a whole which is controlling in determining

infringement. There can be no infringement based on the similarity of specific features if the
overall appearance of the designs are dissimilar.” OddzOn Prod., Inc. v. Just Toys, Inc., 122 F.3d
1396, 1405 (Fed. Cir. 1997). “Where the claimed and accused designs are ‘sufficiently distinct’
and ‘plainly dissimilar,’ the patentee fails to meet its burden of proving infringement as a matter
of law.” Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1335 (Fed. Cir. 2015).
“when [a] design also contains ornamental aspects, it is entitled to a design patent whose
scope is limited to those aspects alone and does not extend to any functional elements of the
claimed article.” Richardson v. Stanley Works, Inc., 597 F.3d 1288, 1294 (Fed. Cir. 2010)(citing
L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993) (“The elements of
the design may indeed serve a utilitarian purpose, but it is the ornamental aspect that is the basis
of the design patent.”)
NON-INFRINGEMENT ANALYSIS
In the instant case, the ’996 Patent is entitled “Cylindrical Hair Band.” It was filed on April
13, 2012, and matured into a patent on February 4, 2014. We believe the ’996 Patent is invalid and
Kitsch’s non-infringement of the ’996 Patent is clear.
The ‘996 Patent discloses three figures with various views of the hair band. The first step
of non-infringement analysis is to subtract the functional portions of the ‘996 Patent from the
claimed ornamental design. Whatever is left must be compared to Kitsch’s products for analysis.
Since the entire band holds various sizes of hair strands, it is entirely functional. Without
any non-functional portions left, Kitsch’s products do not infringe the ‘996 Patent. “[A]design
patent, unlike a utility patent, limits protection to the Ornamental design of the article. Lee v.
Dayton-Hudson Corp., 838F.2d 1186, 1188 (Fed. Cir. 1988) (citing 35 U.S.C. § 171).
Although not completely dispositive, a side-by-side comparison of the ‘996 Patent and
Kitsch’s products is helpful. On the left is a figure from the ‘996 Patent, and on the right, are
images of our client’s product.
October 22, 2017

Page 3
Figure 1 - Non-infringement of the ’996 Patent
THE ’996 PATENT IS INVALID
A simple prior art search has revealed numerous references that will invalidate the ’996
Patent. For your convenience, we have included two references. See SWIRLYDO™ Hair Ties,
Attachment 1 (evidencing a filing date of November 3, 2008); see also Attachment 2 (Google
search results for “telephone wire hair tie”). The KITSCH style coils are the same as the
SWIRLYDO™ Hair Ties that pre-date the ’996 Patent by at least two years. If the Kitsch product
infringes, the ’996 Patent is invalid
THE COMPLAINTS FILED WITH AMAZON.COM
Mr. Krasniansky has filed complaints on behalf of Bambooee with Amazon. The
complaints tortuously interfere with contractual relationships between Kitsch its customers. See
Buxbom v. Smith, 23 Cal. 2d 535, 546, 145 P.2d 305 (1944). We consider these complaints against
Kitsch to also constitute unfair competition under 15 U.S.C. § 1125(a) and Cal. Bus. & Prof. Code
§ 17200.
The following is a list of complaints (“Complaints”) that you or your associates have filed
against Kitsch. Complaint IDs: 1060202631; 1071147331; 1071147611; 1071147351;
1144329831; 1144329821. We further request that you contact Amazon.com to remove these
Complaints and any other complaints that are not listed.
The following is a list of affected product numbers that your complaints have caused to
become inactive on Amazon. We further request that you contact Amazon.com to ensure each
item’s status is reactivated.
ASIN: B01HHGQRZG, Kitsch 4 Piece Hair Coil Set – Ballet

ASIN: B01G4GPPY4, Kitsch 4 Piece Hair Coil Set – Clear
October 22, 2017

Page 4
ASIN: B07232K5Q4, Kitsch 4 Piece Hair Coil Set, Sea Vibe

ASIN: B0725N8HHJ, Kitsch 4 Piece Hair Coil Set, Denim
ASIN: B072FG5WCH, Kitsch 4 Piece Hair Coil Set, Stargazer
ASIN: B071Z6QZQ9, Kitsch 4 Piece Mega Hair Coil Set, Black
ASIN: B074KTXTZ9, Kitsch Watercolor Henna Hair Coils
ASIN: B074KTN8PY, Kitsch Hair Coils Bow
We also ask for your written assurances that you will:
1. Immediately rescind all the complaints filed against Kitsch with Amazon.
2. Immediately rescind any complaint not listed that affects the product listings above.
3. Refrain from filing any further complaints regarding the ’996 Patent.
Absent your compliance on or before November 1, 2017, we will file suit in U.S. District
court for tortious interference, unfair competition under 15 U.S.C. § 1125(a) and Cal. Bus. & Prof.
Code § 17200, and a declaratory judgment for invalidity and non-infringement of the ’996 Patent.
We will also seek damages, costs, and attorney fees as specifically allowed by statute.
Nothing contained in or omitted from this letter shall be deemed a waiver of any of our
client’s rights or remedies with respect to this matter, and our client expressly reserves all of its
rights and remedies. This letter is not intended as a complete recitation of the facts or issues. It is
intended for settlement purposes only and shall not be deemed admissible in any legal proceeding
pursuant to Rule 408 of the Federal Rules of Evidence.
Very truly yours,
BROOKS KUSHMAN P.C.
Mark A. Cantor

SWIRLYDO™ Hair Ties Information

Trademark owner: Grace Harvest & Assoc. LLC
https://trademarks.justia.com/850/71/swirlydo‐85071199.html
‐ Filing Date: 06‐24‐2010
‐ Registrtion Date: 05‐03‐2011

Brand: Lindo™ (owned by Grace Harvest & Assoc. LLC)
https://trademarks.justia.com/850/71/lindo‐85071114.html

Lindo Products Company Website
http://lindoproducts.com/store/shop/category/swirlydo/

Grace Harvest & Associates, LLC
‐ Filling Date: 11‐03‐2008
http://wncompanies.com/grace‐harvest‐assoc‐llc.1245430.company.v2#top_info

http://pbabeautyindustryguide.com/Listing/Company/Extensions_%2B_Wigs/Hair_Extensions/
1237200

Google Search shows SwirlyDo hair ties have been available for purchase since 2009
Link to search:
https://www.google.com/search?q=swirlydo+hair+ties&client=safari&channel=mac_bm&biw=1
370&bih=902&source=lnt&tbs=cdr%3A1%2Ccd_min%3A1%2F1%2F2007%2Ccd_max%3A12%2F
31%2F2010&tbm

Note: SwirlyDo originally began with the name SwirliDo and when trademarked it changed it to
SwirlyDo™ (with the letter “Y”). Therefore, some of the names on the packaging may show the
spelling differently.


Breakdown of information in file:
Images: Shows global presence of plastic telehpone hair ties with images leading back to
international wholesale websites that were selling the hair ties in large quantities, muli‐colors
and shapes. Predominently from Asian countries., but also include Russia, U.K. and U.S.

Blog: Shows blog post of SwirlyDo™ hair ties which have been available for wholesale and retail
purchase since 2009

International: AliExpress, eBay, Amazon, DHgate.com (B2B & B2C eCommerce), etc. showing
international sales of hair ties for wholesale and retail purchase

Forum: Demonstrates poeople actively discussing their experiences with the hair ties and
having discovered them in other outlets including claims of Target, Dollar Store and Asia.

In addition, SwirlyDo™ Hair ties have been available for purchase since 2009 in the United
States and continue to be sold on their website and other sites. (Document with company info
attached)


Analysis

A simple Google search with a date filter will yield results proving the existence of prior art prior to April 13,
2012. The image below is exactly what one would find by typing in the same criteria and filter. For example,
such a search yields the following results, highlighted for clarity:

More search results are continued below:

Below, the same images are highlighted for clarity:


In addition, searching through images with the same date filter also yields many results:

Furthermore, several blog and forum posts about this type of product (mainly reviewing the effectiveness of said
product) clearly show a time stamp giving more evidence that this has existed for at least 6 years as of 2016.

The following images were taken as screenshots from links followed from the above google search, and have been
unaltered. Links for these will also be available at the bottom of this document.

Here is the same image, with information highlighted for clarity.

The highlighted link in the second image of this blog post leads to an image posted by the user which links to this picture
of the product:

Here is another blog post reviewing the product:

In this highlighted image, one can see the date of Sunday, November 1st, 2009 shown clearly. Additional images from
this same post include pictures of the product as well as a description of its functions and features. After each image of
this blog post, a highlighted one shall follow:




Lastly, this Search result was also found, and at the end of the page, some company information about a manufacturer
of the same “telephone wire hair tie” can be found:


Here is some company information about the publisher of the previous search result that might be of interest:

Here are the links for easy access and verification:
Google Search Link: Forum Post Image Link:
https://www.google.com/search?q=telephone+wire+ha http://4.bp.blogspot.com/_MgfU0Egq‐
ir+tie&espv=2&biw=1600&bih=775&source=lnt&tbs=sb Cc/TOk12Y975rI/AAAAAAAADN4/aVaCsE1Wl88/s1600/f
d%3A1%2Ccdr%3A1%2Ccd_min%3A2010%2Ccd_max%3 .jpg
A2011&tbm=#q=telephone+wire+hair+tie&tbs=cdr:1,cd
_min:2010,cd_max:2011&tbas=0
Blog Posti Link:
Google Images Link: http://nouveaucheap.blogspot.com/2009/11/swirlido‐
or‐swirlidont.html
https://www.google.com/search?q=telephone+wire+ha
ir+tie&espv=2&biw=1777&bih=861&tbas=0&tbs=cdr:1,
cd_min:2010,cd_max:2011&source=lnms&tbm=isch&sa
Search Result Link:
=X&ved=0ahUKEwiAt97iuIDOAhULzWMKHVuBBMsQ_A
UIBygC http://independentretailer.com/2010/05/01/swirlido‐
hair‐ties/

Forum Post Link:
Search Result Info Link:
http://forums.longhaircommunity.com/archive/index.p
hp/t‐75477.html http://independentretailer.com/about‐2/


Kitsch v. CM Nat&#39;l - Complaint

Enviado por

Dados do documento

Direitos autorais

Formatos disponíveis

Compartilhar este documento

Compartilhar ou incorporar documento

Opções de compartilhamento

Você considera este documento útil?

Este conteúdo é inapropriado?

Direitos autorais:

Formatos disponíveis

Kitsch v. CM Nat&#39;l - Complaint

Enviado por

Direitos autorais:

Formatos disponíveis

Case 2:18-cv-08532 Document 1 Filed 10/04/18 Page 1 of 14 Page ID #:1

1 William E. Thomson, Jr. (SBN 47195)

11 UNITED STATES DISTRICT COURT

16 Kitsch LLC, a California

18 Plaintiff, COMPLAINT FOR DECLARATORY

1 COMPLAINT FOR DECLARATORY JUDGMENT

8 1. Plaintiff Kitsch is a Limited Liability Company organized under the

22 5. As detailed below, an actual case or controversy exists between Kitsch

9 A. Kitsch and Kitsch’s Hair Coil Products

14 B. Defendants’ Wrongful Conduct

13 23. Defendants’ repeated filing of baseless complaints against Kitsch,

3 (Alleged Against Defendant Noam Krasniansky)

22 VI. COUNT III

24 (Alleged Against Defendant Noam Krasniansky)

21 Dated: October 4, 2018 Respectfully submitted,

4 Dated: October 4, 2018 Respectfully submitted,

(12) Unlted States Deslgn Patent (10) Patent N0.: US D698,996 S

(**) Term: 14 Years D428,530 S * 7/2000 Dorsey D28/4l

(58) Field of Classi?cation Search

2,587,810 A * 3/1952 Beyer .......................... .. 277/618 DESCRIPTION

4,979,276 A * 12/1990 Chimento 29/89641 131G215 af¥° mY1eW OfFIG' 1’ and’

D3l7,663 s * 6/1991 Calderon . D28/41

22 patent shows 22 rings

US. Patent Feb. 4, 2014 Sheet 1 of3 US D698,996 S

US. Patent Feb. 4, 2014 Sheet 2 of3 US D698,996 S

US. Patent Feb. 4, 2014 Sheet 3 of3 US D698,996 S

Brooks Kushman P.C.

October 20, 2017

Via E-Mail: noambambooee@gmail.com

Re: Noam Krasniansky and Bambooee Complaint IDs: 1060202631;

Dear Mr. Krasniansky:

DESIGN PATENT LAW

October 22, 2017

“It is the appearance of a design as a whole which is controlling in determining

October 22, 2017

Figure 1 - Non-infringement of the ’996 Patent

THE ’996 PATENT IS INVALID

THE COMPLAINTS FILED WITH AMAZON.COM

ASIN: B01HHGQRZG, Kitsch 4 Piece Hair Coil Set – Ballet

October 22, 2017

ASIN: B07232K5Q4, Kitsch 4 Piece Hair Coil Set, Sea Vibe

We also ask for your written assurances that you will:

Very truly yours,

BROOKS KUSHMAN P.C.

Você também pode gostar

Kitsch v. CM Nat'l - Complaint

Kitsch v. CM Nat'l - Complaint