1 IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF PENNSYLVANIA AMERICAN BEVERAGE CORPORATION, and POUCH PAC INNOVATIONS, LLC Plaintiffs, Case No. v. JURY TRIAL DEMANDED DIAGEO NORTH AMERICA, INC., and DIAGEO AMERICAS SUPPLY, INC. t/d/b/a CAPTAIN MORGAN CO., Defendants. VERIFIED COMPLAINT Plaintiffs, American Beverage Corporation (“ABC”) and Pouch Pac Innovations, LLC (“PPI”) (together, “Plaintiffs”), by their counsel, file this Verified Complaint against Defendants Diageo North America, Inc. and Diageo Americas Supply, Inc. t/d/b/a Captain Morgan Co., and in support thereof aver as follows. Preliminary Statement This case involves ABC’s Daily’s Cocktails and the infringement of ABC’s intellectual property rights therein by the Defendants and their aptly-named Parrot Bay Cocktails. This case arose because the Defendants, seeking to capitalize on the commercial success of ABC’s Daily’s Cocktails, and despite a myriad of available alternatives, recently launched their Parrot Bay Cocktails packaged in pouches that – true to their name – parrot both the patented design and trade dress of ABC’s Daily’s Cocktails. The Defendants’ Parrot Bay Cocktails not only infringe ABC’s patent pouch design, but are also so similar in appearance to ABC’s Daily’s Cocktails that consumer confusion is likely to occur and in fact has already Case 2:12-cv-00601-JFC Document 1 Filed 05/07/12 Page 1 of 23
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1211975 Fordetal.3/1978 Stearley4/1982 Burton et al.
11/1982 Gautier et al.211985 Smith, 11111988 nrogli et a!.711989 Froese et a!.311991 Kohlbach et al.6/1 993 Roders
121 I993 Wakabayashi et a!.7/1995 Wild et al.II I996 Montalvo
1212000 Croft et al. 09/696
DESCRIPTION
FIG. 1 is a front side elevational vit.'W of a flexible pouchshowing my new design;
FIG. 2 is a side elevational view thereof;
FIG. 3 is a rear side elevational view thereof;
FIG. 4 is a bottom plan view thereof;
riG. 5 is a front side elevational view ofa second embodimentof the flexible pouch;
FIG. 6, a side elevational view thereof;
FIG. 7 is a rear side elevational view thereof; and,
FIG. 8 is a bottom plan view thereof.
1 Claim, 4 Drawing Sheets
o
o o EXHIBrr
Case 2:12-cv-00601-JFC Document 1-1 Filed 05/07/12 Page 2 of 5
u.s. Patent Jun. 24,2008 Sheet 1 of 4
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US D571,672 S
Case 2:12-cv-00601-JFC Document 1-1 Filed 05/07/12 Page 3 of 5
U.S. Patent Jun. 24, 2008 Sheet 2 of 4 US D571,672 S
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FIIl-3
Case 2:12-cv-00601-JFC Document 1-1 Filed 05/07/12 Page 4 of 5
u.s. Patent Jun. 24, 2008 Sheet 3 of 4 US D571,672 S
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116-5
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u.s. Patent Jun. 24, 2008 Sheet 4 of 4 us I>S71,672 S
FIB· 1
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Case 2:12-cv-00601-JFC Document 1-2 Filed 05/07/12 Page 1 of 2
ERNEST l. GIFFORD /IIALLEN M. KRASSDOUOLAS W. Sl'IUNltl.1!THOMAS E. ANDERSON IIIRONALD W. CITKOWSKIJULIE A. GREENBERGDOUGLAS J. McEVOYJOHN O. POSADOUGLASL.WATHENMARK D. SCHNEIDERKEVIN S. MAcKENZIEJULIE K. STAPLE. 1'11.0.MARTI>~ S. BANCROFT, pu.D. f2J
MARK A. HARPER, PH.D.
JOHN CHAUCESARE A. SCLAFANIERIN B. KLUGWESTON ll. OOULD. PlI.D. U)
(1) ALSO ADU'TTI!O IN fLOIUDA
()) ALAe ADMITTliD IH ~n; .... YOIlK.
(1) Ot4LY AculTTUJ Itt CONN'ICTJI:UT
Mr. Evan GourvitzDirector & Senior CounselDiageo North America, Inc.801 Main AvenueNorwalk, Connecticut 06851
.-.( "
"'GIFFORD,KRASS.SPRINKLE.ANDERSON &
C====~y-__ CITKOWSKI. PC.PATENT, TRAOEMAJ\l< & COl'YRIGHT PRACTICE
Re: Parrot Bay PackagingOur Reference: PPJ-27981/08
Dear Mr. Gourvitz:
We represent PPi Technologies Inc. in its intellectual property matters. Thiscorrespondence relates to packaging for the Parrot Bay beverage produced by Diageo.
PPi Technologies is the owner of U.S. Patent Application Publication No. 2008/0247682and U.S. Design Patent No, D571 ,672, copies of which are enclosed. These patents are directedto a stand-up flexible pouch. PPi Technologies has licensed the technology covered by thepatent and application to American Beverage Corp. for its use in packaging Daily's frozenalcoholic beverages. It has corne to our attention that Diageo is marketing a frozen alcoholicbeverage in a flexible pouch under the Parrot Bay brand. We have compared the Parrot Baypouch with Design Patent No. D571,672. It is our opinion that the Parrot Bay pouch is aninfringement of the PPi Technologies' design patent. In fact, the Parrot Bay pouch is virtuallyidentical to the Daily's pouch. A copy of photographs taken of the pouches side by side isenclosed as Exhibit A. It is interesting to note that not only has Diageo copied the shape of thepouch but also has copied aspects of the Daily's branding.
As you are well aware, representatives of Diageo visited PPi Technologies and wereinfonned of PPi's patent rights in the pouch. Nevertheless, this will stand as formal notificationof PPi's patent rights. We remind Diageo that the penalties for willful infringement includetriple damages and attorneys fees. Diageo and its customers are infringing PPi's rights. PPidemands· that Diageo cease and desist from producing packaging currently used for the ParrotBay product.
EXHI8rT
Case 2:12-cv-00601-JFC Document 1-2 Filed 05/07/12 Page 2 of 2
If you have any questions or wish to discuss the matter, please contact the undersigned.
Thomas E. Anderson
TEAJgsEnclosures
Case 2:12-cv-00601-JFC Document 1-3 Filed 05/07/12 Page 1 of 3
I 211l-\41 tille'
--------------
Dickie
Steven W. ZotterAttorney-at-LawAdmitted in PA. DC
April 25, 2012
VIA FEDERAL EXPRESSEvan GourvitzDirector and Senior CounselDiageo North America, Inc.801 Main AvenueNorwalk, CT 06851
RE: American Beverage Corporation GeneralParrot Bay PackagingOur File No.: 0004085.0267432
Dear Mr. Gourvitz:
Direct Dial: 412-392-5492Direct Fax: 412-392-5367
szoffer@dmclaw,com
This finn has been retained by American Beverage Corporation ("ABC") in connectionwith frozen cocktails sold by Diageo North America, Inc., and Diageo Americas Supply, Inc.CDiageo") under its Parrot Bay brand.
For several years, ABC has been making and selling frozen cocktails under its Daily'sbrand name. The Daily's cocktails are packaged in pouches that embody a unique trade dress,consisting of a distinctive shape, size, and overalI general appearance. ABC has expendedsubstantial time, resources, and money in connection with its trade dress, and as a result, theDaily's cocktails have become easily recognizable and popular due to ABC's trade dress. Asyou may also know, ABC's pouch is the subject of U.S. Design Patent No. 0571,672, which hasbeen licensed exclusively to ABC.
It has come to our attention that Diageo is making and selling frozen cocktails under itsParrot Bay brand in pouches that so closely embody and imitate ABC's pouches that consumerconfusion is likely to occur. In fact, ABC has already received reports of actual consumerconfusion caused by Diageo's conduct. A picture of the two products is enclosed as Exhibit A.The resemblance is undeniable.
ABC believes that Diageo is infringing ABC's trade dress and the aforementioned patent.Accordingly, ABC demands that Diageo cease and desist from making and selling its infringingParrot Bay cocktails. As you know, damages for willful infringement include treble damagesand attorney's fees. Please confirm in writing by May 1,2012 that Diageo will comply withABC's request to cease and desist. If we do not hear from you by that time, ABC will take
DICKIE. MlCAMEY &CHILCOTE, PC I ATTORNEYS AT lAWMAIN: 412·281·7272 FAX: 412·392-5367lWO PPG PlACE, sum: 400 I PlTTS8URGH, PA 15222·5402 I WWW.DMCLAW.COM
EXHIBITChorlotle, NC ICoIumbus,OH I Haddonfield, NJ I HOlrisburg, PA
Philadelphia, PA I Pitlsburgh, PA I Raleigh, NC I Steuben'<iUe,OHWashington, DC I VvreeIing, Wi IlMlminglon, DE
Case 2:12-cv-00601-JFC Document 1-3 Filed 05/07/12 Page 2 of 3
Evan C;ourvitzDIrector and Senior CounselDiageo North America, Inc.April ,2012Page 2
whatever action it deems appropriate including, but not limited to, proceeding to enforce itsrights, should that become necessary, in the United States District Court for the Western Districtof Pennsylvania. Nothing herein constitutes a waiver of any of ABC's rights or remedies, al! ofwhich are expressly reserved.
Thank you for your attention to this matter, and please do not hesitate to contact us at theabove address or phone if you have any questions or would like to discuss.
Very truly
~\.j'UI1""" for American Beverage Corporation
SWZlpfhAttachmentcc: American Beverage Corporation (w/attachment)
Nathan A. Kostelnik, Esquire (w/o attachment)
Case 2:12-cv-00601-JFC Document 1-3 Filed 05/07/12 Page 3 of 3
Case 2:12-cv-00601-JFC Document 1-4 Filed 05/07/12 Page 1 of 1-".;S 44 (Rev, 12/07) CIVIL COVER SHEETThe JS 44 civil cover sheet and the intormatinn contained herein neither replace nor supplement the filing and service of pleadings or olher papers as required by law, except as providedby local rules of court. This fonl1, approved by Ihe Judicial Conference ot the United Slates in September 1974. is required for the usc of the Clerk ofCourt for the purpose of1l1itiatingthe civil docket sheet. (SEE INSTRUCTIO~S ON THE REVERSE OF THE FORM.)
I. (a) PLAINTIFFS
AMERICAN BEVERAGE CORPORATION and
POUCH PAC INNOVATIONS, LLC
(b) County of Residence of First Listed Plaintiff Alle~heny
(EXCEPT IN U.S. PLAINTIFF CASES)
DEFENDANTS DIAGEO NORTH AMERICA, INC. and
IAGEO AMERICAS SUPPLY, INC. t/d/b/a CAPTAIN
ORGAN CO.
County of Residence of First Listed Defendant
(IN U,S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES. USE THE LOCATION OFTHE
PERSONAL INJURYo 3 I0 Airplanea 3 I5 Airplane Product
Liability320 Assault. Libel &
Slander330 Federal Employers
Liabilitya 340 Marineo 345 Marine Product
Liabilitya 350 Motor Vehieleo 355 Motor Vehicle
Product Liabilitya 360 Other Personal
Iniu
o 44 J Votinga 442 Employmenta 443 Housing!
Accommodations 0a 444 Welfare aa 445 Amer. wlDisabilities - a
Employment aa 44~ Amer. w/Disabilities - a
Othera 440 Other Civil Rights
Itl' l.I'ItOP.'KTYa 2 J0 Land Condemnationa 220 Foreclosurea 230 Rent Lease & Ejectmenta 240 Torts to Landa 245 Tort Product Liabilitya 290 All Other Real Property
a I 10 Insurancea 120 Marinea 130 Miller Acta 140 Negotiable Instrumenta 150 Recovery of Overpayment a
& Enforcement ofJudgmenta 15! Medicare Act aa 152 Recovery of Defaulted
Student Loans(Exel. Veterans)
a 153 Recovery of Overpaymentof Veteran's Benctits
a 160 Stockholders' Suitsa 190 Other Contracta 195 Contract Product Liabilitya 196 Franchise
V. ORIGIN
KJ I OriginalProceeding
(Place an ..x.. in One Box Only)
o 2 Removed from 0 3State Court
Remanded from 0 4 Reinstated or 0 5 Transferred from 0 6 MultidistrictAppellate Court Reopened another dlSlnCt Litigation
s eCl
o 7Appeal to DistrictJudge fromMagistrateJud ent
Cite the U.S. Civil Statute under which you are filing (Do Dot cite jurisdictional statutes unless diversity):35 USC 271 and 15
VI. CAUSE OF ACTION ~B~n':'"'e-:'f-:-de;";sc;;"n';'ip-:ti';;;on""o"';f:-c"';au:;;s:':'e:-=--=-"'---'''''''''''-''''''''''''''''''---------------------------
Patent infringement, trade dress infrin ement, and unfair com etition
VII. REQUESTED IN
COMPLAINT:
o CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint: