DreamGEAR v Sakar - Complaint

8/13/2019 DreamGEAR v Sakar - Complaint

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.COMPLAINT

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A. Eric Bjorgum (State Bar No. 198392)Marc Karish (State Bar No. 205440)KARISH & BJORGUM PC16 N. Marengo Ave., Suite 307Pasadena, CA 91101Telephone: (213) 785-8070

Facsimile: (626) 795-6321E-Mail: [email protected]

Attorneys for Plaintiff dreamGEAR, LLC

UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA

DREAMGEAR, LLC, a Californialimited liability company,

Plaintiff,

vs.

SAKAR INTERNATIONAL, INC., aNew York corporation, and DOES 1-10,inclusive,

Defendants.

))))))))))))

Case No. CV

COMPLAINT FOR:

1) PATENT INFRINGEMENT2) FALSE DESIGNATION OF

ORIGIN TRADE DRESS3) COMMON LAW UNFAIR

COMPETITION4) VIOLATION OF CAL. BUS. &

PROF. CODE SECTION 172005) COPYRIGHT

INFRINGEMENT

REQUEST FOR JURY TRIAL

Case 2:13-cv-09307 Document 1 Filed 12/18/13 Page 1 of 12 Page ID #:1


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Plaintiff DREAMGEAR, LLC, by its attorneys, Karish & Bjorgum, PC

allege:

JURISDICTION AND VENUE

1. This is an action for patent infringement, arising under the acts ofCongress relating to patents, 35 U.S.C. 1 et seq., trade dress infringement arising

under Section 43(a) of the Lanham Act, and copyright infringement under 17

U.S.C. 101, et seq. This court has jurisdiction over patent, copyright and

trademark claims under 28 U.S.C. 1331, 1338(a) and 1338(b), which provide

for federal question jurisdiction of actions relating to patents, copyrights and

trademarks. This court has supplemental jurisdiction over the plaintiffs non-

federal claims under 28 U.S.C. 1367 in that those claims are so related to the

plaintiffs federal claims that they form part of the same case or controversy.

2. Venue is proper in this district pursuant to 28 U.S.C. 1391(b), (c),and 1400(b). Defendant Sakar International, Inc. sells products in this District.

THE PARTIES AND GENERAL ALLEGATIONS

3. Plaintiff DreamGEAR, LLC (DREAMGEAR or Plaintiff) is aCalifornia limited liability company.

4. Defendant Sakar International, Inc. (SAKAR) is a New Yorkcorporation with its principal place of business in Edison, New Jersey.

5. Plaintiff is informed and believes and based thereon alleges that theDefendants (collectively, with SAKAR, Defendants) sued herein as Does 1-10

are persons or entities accused of infringement in this matter. The true and correct

identity of these Defendants is not yet known to Plaintiff, but Plaintiff expects their

identity to become known during discovery, and Plaintiff will at that time seek

leave of Court to amend the complaint to sue them in their proper names.



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6. Plaintiff is the owner of U.S. Design Patent No. D691,116 (the 116Patent), attached as Exhibit A to this complaint. The 116 Patent issued on

October 8, 2013 and claims the ornamental design for a glowing speaker.

7. Plaintiff is the owner of the FIRE WAVES trade dress, attached asExhibit B hereto. The FIRE WAVES trade dress includes a cylindrical speaker

enclosure of a certain size and dimension, featuring a continuous surface when

compressed and an indented surface when expanded, with an interior bellows-like

midsection. The FIRE WAVES trade dress is inherently distinctive. Plaintiff is

the exclusive seller of the FIRE WAVES trade dress.

8. Plaintiffs have been selling in the United States (including in the Stateof California) speakers bearing the FIRE WAVES trade dress since at least as early

as January, 2013.

9. Due to the extensive use and promotion of the FIRE WAVES tradedress it has acquired secondary meaning.

10. Plaintiff is informed and believes and based thereon alleges that theDefendants have imported into the United States and sell in the United States

speaker products under the name Sizzle that bear a design that is confusingly

similar to the FIRE WAVES trade dress. A photo of the Sizzle product is attached

hereto as Exhibit C to this Complaint.

11. Plaintiff is the owner of the HANG ON trade dress, attached asExhibit D hereto. The trade dress features an enclosure for a speaker that is

generally cylindrical, hangs from a wrist strap, and has a bridged grill cover, an

ornamental slot-shaped cutout, and an external circular band of a contrasting

material/color. The HANG ON dress is inherently distinctive. Plaintiff is the

exclusive seller of the HANG ON trade dress.

12. Plaintiff has been selling in the United States (including in the State ofCalifornia) speakers bearing the HANG ON trade dress since at least as early as

January, 2013.



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13. Due to the extensive use and promotion of the HANG ON trade dressit has acquired secondary meaning.

14. Plaintiff is informed and believes and based thereon alleges that theDefendants have imported into the United States and sell in the United Statesspeaker products under the name Tag & Blast that bears a design that is

confusingly similar to the HANG ON trade dress. A photo of the Tag & Blast

product is attached as Exhibit E hereto.

15. Plaintiff is the exclusive licensee of the Chinese design patent CN302382842 (the 842 Patent), a copy of which is attached as Exhibit F hereto.

The 842 Patent issued on April 3, 2013. The Fire Waves product incorporates the

design elements of the 842 Patent. On information and belief, Defendants

Sizzle product would violate the 842 Patent under Chinese law.

16. During the spring of 2013, Plaintiff was in negotiations withWalgreens to sell items that incorporated the FIRE WAVES trade dress, the

HANG ON trade dress and the 116 Patent.

17. The negotiations were detailed, but the parties could not come to anagreement. Soon thereafter, Walgreens began selling products from Defendant

SAKAR that incorporated the design elements for three of the products that had

been involved in the discussions between the parties.

18. Specifically, Defendants Sizzle speaker is a copy of Plaintiffs FireWaves speaker. Defendants Tag & Blast wireless speaker is a copy of

Plaintiffs Hang On speaker.

19. Defendants products are not of the same quality as Plaintiffs.Specifically, the audio output of Defendants speaker components is of a lower

quality, so that the value of Plaintiffs trade dress is diminished as a result of

Defendants inferior goods being associated with Plaintiffs designs.

20. Defendants copied Plaintiffs operating instructions nearly verbatimfor their operating instructions on the infringing Sizzle and Tag and Blast



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products. Copies of portions of the Fire Waves and Hang On operating instructions

and warranty cards are attached hereto as Exhibit G. Plaintiff has filed for

copyright registrations on the instructions and warranty cards.

21. Copies of portions of the operating instructions and warranty cards forthe Sizzle and Tag & Blast products, and the warranty card for the Party Orb

product, are attached hereto as Exhibit H.

22. Plaintiff is informed and believes and based thereon allege that theactions of Defendants herein were conducted with fraud, oppression, and malice in

an attempt to trade on the goodwill of Plaintiffs products.

FIRST CLAIM FOR RELIEF INFRINGEMENT

OF THE 116 PATENT

(By dreamGEAR Against SAKAR)

23. Plaintiff realleges and incorporates the allegations in paragraphs 1through 22 as if set forth fully herein.

24. Plaintiff is the owner of the 116 Patent.25. Defendants have infringed and are still infringing the 116 Patent by

making, selling, and using an ornamental design for a glowing speaker that

infringes the 116 Patent. Defendants, unless enjoined by this court, will

irreparably harm Plaintiff by this conduct. A picture of Defendants infringing

Party Orb product is attached hereto as Exhibit I.

26. Plaintiff placed a patent pending notice of the IGlowSound product.27. Plaintiff has been damaged by Defendants acts of infringement of the

116 Patent in an amount to be determined at trial, such damages including all of

Defendants profits in selling the infringing goods.

SECOND CLAIM FOR RELIEF



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THIRD CLAIM FOR RELIEF

(By Plaintiff dreamGEAR Against Defendants for

Common Law Unfair Competition)35. Plaintiff realleges and incorporates the allegations in paragraphs 1

through 22 as if set forth fully herein.

36. The above-described acts of Defendants constitute common law unfaircompetition in that Defendants are passing off their goods as those of the Plaintiff.

Such acts have caused and will continue to cause irreparable and immediate injury

to Plaintiff for which Plaintiff has no adequate remedy at law. Unless Defendants

are restrained by this Court from continuing the acts alleged herein, these injuries

will continue to occur.

37. Plaintiff is informed and believes and based thereon alleges that theforegoing acts of the Defendants are willful and malicious in that they have been

undertaken with a conscious disregard of the Plaintiffs rights and with a desire to

injure the Plaintiffs business and to improve their own.

FOURTH CLAIM FOR RELIEF


Unfair Competition, Cal. Bus. & Prof. Code 17200)

38. Plaintiff realleges paragraphs 1 through 22 as though set forth atlength herein.

39. The above-described acts of Defendants constitute unfair competitionwithin the meaning of California Business and Professions Code Section 17200.

Such acts have caused and will continue to cause irreparable and immediate injury

to Plaintiff for which Plaintiff has no adequate remedy at law. Unless Defendants

are restrained by this Court from continuing the acts alleged herein, these injuries

will continue to occur.



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FIFTH CLAIM FOR RELIEF


Copyright Infringement, 17 U.S.C. 17200)40. Plaintiff realleges paragraphs 1 through 22 as though set forth at

length herein.

41. Plaintiff is the owner of all copyright rights in the warranty cards andwritten instructions for the materials that accompany the Fire Waves and Hang On

products.

42. Plaintiff has filed for copyright registrations on all three sets ofinstructions and warranties.

43. All three of Defendants products at issue copy Plaintiffs warrantycard. The instructions for the Sizzle and Tag & Blast products copy nearly

verbatim the instructions for the Fire Waves and Hang On products, respectively.

44. The above-described acts of Defendants constitute copyrightinfringement. Such acts have caused and will continue to cause irreparable and

immediate injury to Plaintiff for which Plaintiff has no adequate remedy at law.

Unless Defendants are restrained by this Court from continuing the acts alleged

herein, these injuries will continue to occur.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff prays for judgment against Defendants as follows:

1. A determination that Defendants have infringed the 116 Patent;2. The Court preliminarily and permanently restrain and enjoin

Defendants and their officers, directors, agents, employees, licensees, successors

and assigns and all others acting in concert and participating with Defendants from

further acts of infringement, contributory infringement and inducing infringement

of the 116 Patent;



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3. The Court preliminarily and permanently restrain and enjoinDefendants and their officers, directors, agents, employees, licensees, successors

and assigns and all others acting in concert and participating with Defendants

from:a. Directly or indirectly manufacturing, producing, printing,

distributing, importing, trafficking in, selling, offering for sale, possessing,

advertising, promoting or displaying any products, including gloves, bearing any

simulation, reproduction, copy or colorable imitation of the FIRE WAVES or

HANG ON trade dress.

b. Directly or indirectly printing and/or importing into the United

States any items bearing any simulation, reproduction, copy or colorable imitation

of the FIRE WAVES or HANG ON trade dress;

c. Making any unauthorized use of the FIRE WAVES trade dress

or HANG ON trade dress in such a way as to cause confusion, mistake or

deception as to the affiliation, connection or association of the Defendants with

Plaintiff or as to the origin, sponsorship or approval of Defendants products;

d. Using any false designation of origin or false description or

misrepresentation, or performing any other act which is likely to mislead the trade

or public, or individual members thereof, into believing that the Defendants

products are associated or connected with Plaintiff;

e. Otherwise infringing the Plaintiffs rights in and to the FIRE

WAVES or HANG ON trade dress;

f. For an order directing the Defendants to deliver for destruction

all products, labels, boxes, bottles, signs, prints, packages, wrappers, and artwork

in their possession, or under their control, bearing or intended to bear any

simulation, reproduction, copy or colorable imitation of the FIRE WAVES or

HANG ON trade dress, including all plates, molds, matrices and other means of

making the same;



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4. For compensatory damages according to proof;5. The Court treble the damages award to Plaintiffs as a consequence of

Defendants willful infringement;

6. For all damages allowed under 35 U.S.C. 289 pertaining toinfringement of design patents including profits;

7. Directly or indirectly manufacturing, producing, printing, distributing,importing, trafficking in, selling, offering for sale, possessing, advertising,

promoting or displaying any products bearing any simulation, reproduction, copy

or colorable imitation of Plaintiffs copyrighted works;

8. For an order directing the Defendants to deliver for destruction allbooks or printed material in their possession, or under their control, having any

portion therein of Plaintiffs copyrighted works;

9. That Plaintiff be awarded all profits of Defendants, and each of them,plus all losses of Plaintiff, the exact sum to be proven at the time of trial, or, if

elected before final judgment, statutory damages, as available under the Copyright

Act, 17 U.S.C. 101 et seq.;

10. That Plaintiff be awarded its attorneys fees as available under theCopyright Act, 17 U.S.C. 101 et seq.;

11. That Defendants, and each of them, account to Plaintiff for theirprofits and any damages sustained by Plaintiff arising from the foregoing acts of

infringement;

12. That Plaintiff be awarded such further legal and equitable relief as theCourt deems proper.



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EXHIBITA

Case 2:13-cv-09307 Document 1-1 Filed 12/18/13 Page 1 of 19 Page ID #:13


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EXHIBIT C



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Case 2:13-cv-09307 Document 1-1 Filed 12/18/13 Page 10 of 19 Page


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EXHIBITD



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Exhibit E



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Exhibit F



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Exhibit G



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Case 2:13-cv-09307 Document 1-2 Filed 12/18/13 Page 3 of 11 Page


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Exhibit H



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Exhibit I



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DreamGEAR v Sakar - Complaint

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