IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF TENNESSEE NASHVILLE DIVISION R & L MERCHANDISE, LLC., d/b/a ) BELLA RYAN, ) ) Plaintiff, ) ) v. ) Civil Action No. ) ALEX AND ANI, LLC., d/b/a ALEX AND ) JUDGE ANI, ) ) JURY TRIAL DEMANDED Defendant. ) DECLARATORY JUDGMENT COMPLAINT Plaintiff R & L Merchandising, LLC, d/b/a Bella Ryann brings this Declaratory Judgment Complaint against defendant Alex & Ani, LLC, d/b/a Alex & Ani. This Declaratory Judgment Complaint relates to R & L Merchandising, LLC’s current efforts to resolve ongoing disputes between the parties – direct competitors in the field of jewelry – regarding their respective legal rights to manufacture and sell jewelry what is colloquially known as “bangle bracelets.” Specifically, R & L Merchandising, LLC seeks declaratory judgments of patent non-infringement and invalidity with respect to one Alex and Ani, LLC design patent directed to expandable bracelets, and of trade dress non-infringement with respect to a bangle bracelet sold by Alex and Ani, LLC. Plaintiff R & L Merchandising, LLC alleges as follows: NATURE OF THIS ACTION 1. This is an action seeking Declaratory Judgments that United States Patent No. D498,167 (“the ’167 patent”), which is owned by Alex and Ani., LLC, has not been infringed by R & L Merchandising, LLC and/or is invalid and that R & L Merchandising, LLC has not infringed Case 3:12-cv-01081 Document 1 Filed 10/19/12 Page 1 of 8 PageID #: 1
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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF TENNESSEE
NASHVILLE DIVISION
R & L MERCHANDISE, LLC., d/b/a ) BELLA RYAN, )
) Plaintiff, )
) v. ) Civil Action No.
) ALEX AND ANI, LLC., d/b/a ALEX AND ) JUDGE ANI, ) ) JURY TRIAL DEMANDED Defendant. )
DECLARATORY JUDGMENT COMPLAINT
Plaintiff R & L Merchandising, LLC, d/b/a Bella Ryann brings this Declaratory Judgment
Complaint against defendant Alex & Ani, LLC, d/b/a Alex & Ani. This Declaratory Judgment
Complaint relates to R & L Merchandising, LLC’s current efforts to resolve ongoing disputes
between the parties – direct competitors in the field of jewelry – regarding their respective legal
rights to manufacture and sell jewelry what is colloquially known as “bangle bracelets.”
Specifically, R & L Merchandising, LLC seeks declaratory judgments of patent non-infringement
and invalidity with respect to one Alex and Ani, LLC design patent directed to expandable
bracelets, and of trade dress non-infringement with respect to a bangle bracelet sold by Alex and
Ani, LLC. Plaintiff R & L Merchandising, LLC alleges as follows:
NATURE OF THIS ACTION
1. This is an action seeking Declaratory Judgments that United States Patent No.
D498,167 (“the ’167 patent”), which is owned by Alex and Ani., LLC, has not been infringed by R
& L Merchandising, LLC and/or is invalid and that R & L Merchandising, LLC has not infringed
Case 3:12-cv-01081 Document 1 Filed 10/19/12 Page 1 of 8 PageID #: 1
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any rights of Alex and Ani, LLC arising under section 43(a) of the Lanham Act.
2. This action arises under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and
2202, the Patent Laws of the United States, Title 35 of the United States Code, and Section 43(a)
of the Lanham Act.
3. R & L Merchandising, LLC, d/b/a Bella Ryann, (“R & L” or “Plaintiff”) is a
limited liability corporation organized and existing under the laws of the state of Tennessee, with
its principal place of business located in Davidson County, Tennessee.
4. R & L manufactures and sells expandable bracelets with attached charms.
5. On information and belief, Alex & Ani, LLC, (“Alex & Ani” or “Defendant”) is an
LLC organized and existing under the laws of the state of Rhode Island. Its registered agent for
service of process is Michael F. Sweeney, Esq., One Financial Plaza, Suite 1800, Providence, RI
02903.
6. Alex & Ani and R & L manufacture and sell bangle bracelets. Alex & Ani and R &
L have an ongoing dispute regarding their respective legal rights to manufacture and sell bangle
bracelets. Alex & Ani has indicated to R & L that Alex & Ani believes R & L is infringing its
bangle bracelet design. R & L seeks to resolve the parties’ current disputes regarding bangle
bracelets and thus R & L brings this declaratory judgment action, in which R & L seeks a
declaration that the patents have not been infringed by R & L and/or are invalid.
JURISDICTION AND VENUE
7. This Court has jurisdiction over the subject matter of this action pursuant to 28
U.S.C. §§ 1331, 1338(a), 2201 and 2202.
8. This action is filed to resolve an actual and justiciable controversy between the
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parties hereto. Alex & Ani’s conduct towards R & L establishes that a real and substantial dispute
exists between the parties regarding Alex & Ani’s allegations that R & L’s product infringes the
‘167 patent and Alex & Ani’s trade dress rights. This dispute is both definite and concrete and
admits of specific relief through a decree of a conclusive character. As set forth in succeeding
paragraphs herein, Alex & Ani has taken at least one affirmative act related to enforcement of its
patent and trade secret rights, and R & L is currently engaged in offering for sale a bracelet
alleged by Alex & Ani to infringe those rights. Accordingly there is a conflict of asserted rights
among the parties and an actual controversy exists between R & L and Alex & Ani with respect to
the infringement, validity, and scope of the ‘167 patent and of Alex & Ani’s trade dress rights.
9. This Court has personal jurisdiction over Alex & Ani because it has purposely
directed its activities at the State of Tennessee and purposely availed itself of the benefits and
protections of the laws of this State, including this Judicial District, by repeatedly directing
correspondence to R & L alleging that bracelets currently being offered for sale by R & L infringe
Alex & Ani’s patent and trade dress rights. Further, the Alex & Ani correspondence not only
threatened litigation, but also demanded payment of $150,000, surrender of all R & L bracelets for
destruction, and ordered R & L to preserve allegedly relevant documents in eight specific
categories in anticipation of litigation.
10. This Court also has personal jurisdiction over Alex & Ani because Alex & Ani’s
contacts with the State of Tennessee are significant and pervasive. The State of Tennessee is a
large and important market for the sale of Alex & Ani’s products. Alex & Ani has sales
representatives, dealers, and distributors located in the State of Tennessee that market, promote,
and sell Alex & Ani’s products. Alex & Ani has conducted business continuously and
systematically in the State of Tennessee and in this judicial district for many years and continues
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to conduct that business actively today.
11. Venue is proper in this Court under 28 U.S.C. § 1391(c) because Alex & Ani is
subject to personal jurisdiction in Tennessee, and thus is deemed to reside in Tennessee for
purposes of venue.
12. Venue may also be proper under 28 U.S.C. § 1391(b) inasmuch as a substantial
part of the events giving rise to Alex & Ani’s allegations of patent and trade dress infringement
took place in this judicial district. That is, R & L is based in Tennessee, and records pertinent to
any alleged infringement by the Accused Products are in Tennessee, as are pertinent witnesses
relative to R & L’s alleged infringement.
FACTUAL BACKGROUND
13. R & L designs, manufactures, and sells bangle bracelet products in the United
States and elsewhere.
14. Alex & Ani designs, manufactures, and sells bangle bracelet products in the United
States and elsewhere.
15. Alex & Ani is the owner of the D498,167 patent, entitled “Expandable Wire
Bracelet,” which issued on November 9, 2004. A true and correct copy of the D498,167 patent is
attached hereto as Exhibit A.
16. On October 17, 2012, Alex & Ani, through its attorney, served a cease and desist
letter via email on R & L. Alex & Ani’s Communications to R & L regarding the ‘167 patent
stating that R & L’s bangle bracelet infringed the ‘167 patent and threatened to bring suit in the
Southern District of New York unless R & L surrendered its “infringing” product and paid a
substantial monetary fee. A copy of this correspondence is attached as Exhibit B.
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17. On October 18, 2012, Alex & Ani’s attorney served another cease and desist letter
via email. A copy of this correspondence is attached as Exhibit C.
18. On information and belief, if this action is dismissed for lack of subject matter
jurisdiction, Alex & Ani will sue R & L for infringement of the ‘167 patent in a separate action in
another court.
19. By virtue of all the foregoing circumstances, including but not limited to the
statements and actions of Alex & Ani, an immediate, real, and justiciable controversy exists
between Alex & Ani and R & L over the validity and R & L’s alleged infringement of the ‘167
patent and of Alex & Ani’s alleged trade dress rights.
20. Under all the circumstances alleged herein, a substantial controversy exists
between Alex & Ani and R & L of sufficient immediacy and reality to warrant the issuance of a
declaratory judgment regarding the parties’ adverse legal interests with respect to Alex & Ani’s
U.S. Patent D498,167 and Alex & Ani’s alleged trade dress rights.
21. The Court may and should exercise its broad discretion to adjudicate this action
under the Declaratory Judgment Act. There is no better or more effective remedy or forum for
resolving the present controversies between the parties regarding bangle bracelets. Such
adjudication will serve the underlying purposes of the Declaratory Judgment Act by resolving
legal disputes between Alex & Ani and R & L regarding their respective legal rights to
manufacture and sell bangle bracelets. These disputes should be resolved efficiently and
economically in this action, deciding the controversies between the parties with certainty,
completeness and finality.
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COUNT I DECLARATORY JUDGMENT OF NONINFRINGEMENT OF THE ‘167 PATENT
22. R & L realleges and incorporates by reference the averments pled in the preceding
paragraphs of this Complaint.
23. An actual and justiciable controversy exists between R & L and Alex & Ani
regarding the alleged infringement of the ‘167 patent by R & L’s manufacture and sales of bangle
bracelets.
24. R & L’s bangle bracelet products do not infringe, literally or under the doctrine of
equivalents, any valid claim of the ‘167 patent.
25. R & L is not infringing, and has never infringed, any valid claim of the ‘167 patent,
either directly or indirectly, either literally or under the doctrine of equivalents.
26. R & L is entitled to judgment declaring that it has never infringed and is not
infringing any valid claim of the ‘167 patent.
COUNT II DECLARATORY JUDGMENT OF INVALIDITY OF THE ‘167 PATENT
27. R & L realleges and incorporates by reference the averments pled in the preceding
paragraphs of this Complaint.
28. An actual and justiciable controversy exists between R & L and Alex & Ani
regarding the invalidity of the ‘167 patent under 35 U.S.C. §§ 102, 103, 112 and/or 251.
29. The ‘167 is invalid under 35 U.S.C. §§ 102, 103, 112 and/or 251.
30. R & L is entitled to judgment declaring that U.S. Patent D498,167 is invalid.
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COUNT III DECLARATORY JUDGMENT OF TRADE DRESS NON-INFRINGEMENT
31. R & L realleges and incorporates by reference the averments pled in the preceding
paragraphs of this Complaint.
32. R & L has not and is not committing any acts of trade dress infringement.
COUNT IV DECLARATORY JUDGMENT OF TRADE DRESS INVALIDITY
33. R & L realleges and incorporates by reference the averments pled in the preceding
paragraphs of this Complaint.
34. Alex & Ani’s claim of trade dress is invalid.
35. The design that Alex & Ani purports to have claimed as its trade dress is vague, is
lacking in inherent distinctiveness, depends on features that are generic and commonly used, as
well as elements that are functional and used to compete in its particular market and do not
indicate they come from a common source with others and are not likely to confuse consumers as
to their origin and have not and are unlikely to develop secondary meaning.
PRAYER FOR RELIEF
WHEREFORE, Plaintiff respectfully prays for entry of judgment as follows:
1. That the Defendant, together with all of its officers, agents, servants, employees,
representatives, and attorneys, and all persons in active concert or participation with any of them
be forthwith preliminarily and thereafter permanently enjoined and restrained from contacting
dealers whom Plaintiff has a business relationship and alleging that Plaintiff has infringed
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Case 3:12-cv-01081 Document 1 Filed 10/19/12 Page 8 of 8 PageID #: 8
Defendant's patents and/or trade dress;
2. That the Court declare that Plaintiff has not infringed and is not infringing U.S.
Patent 0498,167;
3. That the Court declare that U.S. Patent D498,167 is invalid;
4. That the Court declare that Plaintiff has not infringed Defendant's claimed trade
dress;
5. That the Court award Plaintiff attorneys' fees and costs incurred in this action; and
6. For any such other and further relief as this Court deems just and proper.
7. Declaring Plaintiff is free to make, sell and distribute its bangle bracelets.
DEMAND FOR JURY TRIAL
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, R & L demands a trial by
jury of any and all issues on which a trial by jury is available under applicable law.
8
Respectfully submitted,
Randall W. Burton, No. 15393 144 Second Avenue North, Suite 212 Nashville, Tennessee 37201 (615) 620-5838 Attorney for Plaintiff
EXHIBIT 1
Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 1 of 8 PageID #: 9
I IIIII 1111111111111111111111111111111111111111111 11111111111 USOOD498167S
(12) United States Design Patent (lo) Patent No.: US D498,167 S ** Nov. 9, 2004 Ferlise (45) Date of Patent:
(62) Division of application No. 29/181,844, filed on May 16, 2003, now Pat. No. Des. 487,709.
(51) LOC (7) Cl. .................................................... 11-01 (52) U.S. Cl. .......................................................... Dll/5 (58) Field of Search .......................... Dll/1-15, 18-20,
428,339 A * 5/1890 Howard ... .. ... ... ... ... ... .. ... 63/11 D69,012 S * 12/1925 Dalin .......................... Dll/30
D247,102 S * 1!1978 Durante ........................ Dll/5 5,247,814 A * 9/1993 McDonald .................... 63/3.2
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D472,177 S * 3/2003 McCullough-McPherson Dll/4
* cited by examiner
Primary Examiner-Louis S. Zarfas Assistant Examiner-John Windmuller (74) Attorney, Agent, or Firm-Linda M. Buckley; Christine C. O'Day; Edwards & Angell, LLP
(57) CLAIM
The ornamental design for an expandable wire bracelet, as shown and described.
DESCRIPTION
FIG. 1 is a perspective view of an expandable wire bracelet, showing my new design; FIG. 2 is a top plan view thereof; FIG. 3 is a bottom view thereof; FIG. 4 is a left side view thereof; FIG. 5 is a right side view thereof; FIG. 6 is a rear view thereof; and, FIG. 7 is a front view thereof. The subject matter depicted in dashed lines in FIGS. 1-7 is shown for illustrative purposes only and forms no part of the claimed design.
1 Claim, 7 Drawing Sheets
EXHIBIT 1
Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 2 of 8 PageID #: 10
U.S. Patent Nov. 9, 2004
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EXHIBIT 1
Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 3 of 8 PageID #: 11
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Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 4 of 8 PageID #: 12
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Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 5 of 8 PageID #: 13
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Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 6 of 8 PageID #: 14
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Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 7 of 8 PageID #: 15
U.S. Patent Nov. 9, 2004 Sheet 6 of 7 US D498,167 S
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EXHIBIT 1
Case 3:12-cv-01081 Document 1-1 Filed 10/19/12 Page 8 of 8 PageID #: 16
Ms. Reep: Attached are the complete exhibits you should have recieved today via Federal Express. We, regrettably, have been afforded a very short time-frame to resolve this matter, or file in the Federal Court for the Southrn District of New York; which will do by Tuesday, October 23, 2012. If you have any interest in attempting to resolve this pre-litigation, we have to talk by tomorrow. I am sure we can reach an amicable soluton, but I cannot stress enough, that the window of opportunity to do so is very short. Richard M. Garbarini, Esq. GARBARINI FITZGERALD P.C. 420 Lexington Avenue The Graybar Building Suite 2743 New York, NY 10170 Office : 212.300.5358 Direct Line : 212.252.2281 Fax : 888.265.7054 www.garbarinilaw.com certa bonum certamen CONFIDENTIALITY NOTE -- THIS E-MAIL TRANSMISSION IS INTENDED ONLY FOR THE USE OF THE INDIVIDUAL OR ENTITY TO WHICH IT IS ADDRESSED AND MAY CONTAIN INFORMATION THAT IS PRIVILEGED, CONFIDENTIAL OR EXEMPT FROM DISCLOSURE UNDER APPLICABLE LAW. If the reader of this transmission is NOT the intended recipient, or the employee or agent responsible to deliver it to the intended recipient, you are hereby notified that any dissemination, distribution or copying of this communication is strictly prohibited. If you have received this communication in error, please notify the GARBARINI FITZGERALD immediately by telephone at 212.300.5358 and delete this message from your system.
EXHIBIT 3
Case 3:12-cv-01081 Document 1-3 Filed 10/19/12 Page 1 of 1 PageID #: 19
Case 3:12-cv-01081 Document 1-4 Filed 10/19/12 Page 1 of 1 PageID #: 20
<!o.JS 44 (Rev. 12/07) CIVIL COVER SHEET The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the purpose ofmitiating the civil docket sheet. {SEE JNSTRUCfJONS ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS
R&L Merchandising, LLC
(b) County of Residence of First Listed Plaintiff Davidson Cty, TN (EXCEPT IN U.S. PLAINTIFF CASES)
(c) Attorney's (Finn Name, Address, and Telephone Nul)lber)
DEFENDANTS
Alex and Ani, LLC
County of Residence of First Listed Defendant Providence Cty, Rl (IN U.S . PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE LAND JNVOL VED.
Attorneys (!fKnown)
Randall W. Burton, Attorney at Law, 144 Second Ave., N. Ste. 212 Nashville TN 37201 615 620-5838
II. BASIS OF JURISDICTION (Place an "X" inOneBoxOnly) III. CITIZENSHIP OF PRINCIPAL PARTIES(Piace an "X" in One Box for Plaintiff (For Diversity Cases Only) and One Box for Defendant)
1!!1 3 Federa!Question PTF DEF PTF DEF 0 I U.S . Government Plaintiff (U.S. Government Not a Party) Citizen of This State 0 I 0 1 Incorporated or Principal Place 0 4 0 4
0 2 U.S. Government Defendant
0 II 0 Insurance 0 120 Marine 0 130 Miller Act 0 140 Negotiable Instrument 0 150 Recovery of Overpayment
& Enforcement of 0 151 Medicare Act 0 152 Recovery of Defaulted
Student Loans (ExcL Veterans)
0 153 Recovery of Overpayment ofVeteran's Benefits
Appeal to District Judge from Magistrate State Court Jud ment
c8eJgrJMt~~ilJJ~~frf&~1 ~~\;h:l§u!Y§~i~emfo"r\'tt!Wr~Wl:f~a'l;t~'t:f'D~~ss diversity): VI. CAUSE OF ACTION t:B::-r::-ie-::-fd":"e-sc-r::-ip-:ti-on;...o-:f:-c-au...:;;s_e:----------------------...... ,......-----------
Declaratory. action seeking patent and tr~de dress declared invalid Vll. REQUESTED IN
COMPLAINT:
0 CHECK IF THIS IS A CLASS ACTION DEMAND$ CHECK YES only if demanded in complaint:
UNDER F.R.C.·P. 23 JURY DEMAND: li1l' Yes 0 No
VIII. RELATED CASE(S)
IF ANY
DATE
10/19/2012 FOR OFFICE. USE ONLY
RECEIPT# AMOUNT
(See instructions): JUDGE
APPLYING IFP ----- ------
DOCKET NUMBER
JUDGE MAG. JUDGE ------- ------ ------"-----
Case 3:12-cv-01081 Document 1-5 Filed 10/19/12 Page 1 of 1 PageID #: 21
AO 440 (Rev. 12/09) Summons in a Civil Action
UNITED STATES DISTRICT COURT
R&L Merchandising, LLC
Plaintiff
v. Alex and Ani, LLC
for the
Middle District of Tennessee
) ) ) ) ) )
Civil Action No.
SUMMONS IN A CIVIL ACTION
To: (Defendant's name and address) Alex and Ani, LLC
12
C/0 Michael F. Sweeney, Esq., Registered Agent for Service of Process One Financial Plaza, Suite 1800 Providence, Rl 03903
A lawsuit has been filed against you.
1081
Within 21 days after service of this summons on you (not counting the day you received it)- or 60 days if you are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ. P. 12 (a)(2) or (3)- you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiffs attorney, whose name and address are: Randall W. Burton
Attorney at Law 144 Second Ave., N. Ste. 212 Nashville, TN 37201
If you fail to respond. judgment by default will be entered against you for the relief demanded in the complaint. You also must file your answer or motion with the court.