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IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF NEW YORK
NIKON CORPORATION and NIKON INC., Plaintiffs ,
1 3 CV 72 2 8
CIVIL ACTION NO. JUR
SAKAR INTERNATIONAL, INC., Defendant.
COMPLAINT Plaintiffs Nikon Corporation and Nikon Inc. ("Nikon" or "Plaintiffs"), by their undersigned attorneys, allege as follows, upon actual knowledge with respect to themselves and their own acts and upon information and belief as to all other matters: NATURE OF THE ACTION 1. This is an action for infringement of U.S. Design Patent No. D682,906 ("the ’906
patent") (attached as Exhibit A) under 35 U.S.C. §§ 271 and 289, trade dress infringement under 15 U.S.C. § 1125(a) and the common law, and violation of New York General Business Law § 349. Defendant recently introduced and offered for sale a digital camera that infringes both Nikon’s patented camera design and trade dress rights in their highly promoted, successful, and publicly recognized "Nikon 1" "Everyday Cameras" series of digital cameras. THE PARTIES 2. Plaintiff Nikon Corp. is a Japanese corporation with a principal place of business
at 1-12-1, Yurakucho 1 -ehome, Chiyoda-ku, Tokyo, Japan 100-8331. Nikon Corp. manufactures cameras and other products, including the Nikon 1 "Everyday Cameras" series digital cameras.
Plaintiff Nikon Inc. is a New York corporation with a principal place of business
at 1300 Walt Whitman Road, Melville, NY 11747-3064. Nikon Inc. imports and sells cameras and other products in the U.S., including the Nikon 1 cameras. 4. Defendant Sakar International, Inc. is a New York corporation with its principal
place of business at 195 Carter Drive, Edison, New Jersey 08817 ("Sakar"). Defendant Sakar manufactures and imports digital cameras and lenses, including the infringing camera, and advertises and sells or offers them for sale throughout the United States and in this Judicial District. Sakar is qualified to do business in the State of New York and maintains an office in this Judicial District at 10 West 33’’ St, Suite 1200, New York, New York 10001. JURISDICTION AND VENUE This Court has jurisdiction over the subject matter of this action pursuant to 35 U.S.C. §271,281,and289,15 U.S.C. §§ 1121 and ll25, and 28U.S.C. §§ 1331 and 1338(a) and (b). Because the parties are citizens of a U.S. and foreign state, and the matter in controversy exceeds $75,000 exclusive of interest and costs, this Court also has subject matter jurisdiction under 28 U.S.C. § 1332. The Court has supplemental jurisdiction over Nikon’s statelaw claims pursuant to 28 U.S.C. § 1367(a) because they are substantially related to their federal claims and arise out of the same case or controversy and operative facts. 6. This Court has general personal jurisdiction over Sakar based on its continuous
and systematic contacts with the State of New York and this Judicial District, including its incorporation in New York State and maintaining a place of business in this Judicial District, its offering for sale and sale of products through stores in New York State and this Judicial District, and its sale and shipment of products into New York State and this Judicial District.
This Court has specific personal jurisdiction over Sakar because it has
purposefully availed itself of the privilege of conducting business in New York State and this Judicial District. Sakar designs, manufactures (directly or indirectly through third party manufacturers), imports, and/or assembles infringing products that Sakar offers for sale, advertises, promotes, sells, and/or offers for sale in New York State and this Judicial District. Sakar, directly or through its distribution networks and online retail stores such as Amazon.com , places the infringing cameras into the stream of commerce, which is directed at this Judicial District, with the knowledge and/or understanding that such products infringe Nikon’s patent and trade dress rights and are sold in the State of New York and this Judicial District. 8. Venue is proper in this Judicial District under 28 U.S.C. §§ 1391(b) and (c) and
1400(b) because Sakar does business in this Judicial District, committed and continues to commit acts of infringement in this Judicial District, a substantial part of the events that gave rise to Nikon’s claims occurred in this Judicial District, and Sakar is subject to personal jurisdiction in this Judicial District. NIKON’S DESIGN PATENT 9. On May 21, 2013, the United States Patent and Trademark Office ("PTO") duly
and legally issued the ’906 patent (Exhibit A), titled "Digital Camera," to inventors Tatsuya Uemachi, Takashi Umehara, and Akira Nojima. 10. Nikon is the owner of all right, title, and interest in and to the ’906 patent by
assignment from inventors Tatsuya Uemachi, Takashi Umehara, and Akira Nojima. 11. The claimed design of the ’906 patent is directed to a digital camera, as shown in
figures 1-8 and described in the accompanying figure descriptions (see Exhibit A). 12. Under 35 U.S.C. § 282, the ’906 patent is presumed valid.
NIKON’S TRADE DRESS 13. In 2011, Nikon launched a compact digital camera line, the Nikon 1 "Everyday
Cameras" series. 14. The Nikon 1 "Everyday Cameras" have a consistent, uniform, and recognizable
overall look, exemplified by the flagship J152 models, and comprised of the following aesthetically-driven design elements: (1) flat-front design; (2) racetrack shape body (from top view); (3) knurled lens design; (4) placement of the product trademark; (5) lens cap shape, placement, and matching color to camera body (with brand name); (6) angled transition extending along the top rear of the back panel; (7) power button shape and location; (8) shape and location of eyelets for a strap; and (9) single, uniform color of camera body and lens barrel (referred to in this Complaint as the "Nikon 1 Trade Dress"). The Nikon 1 Trade Dress is shown in the cameras depicted in Exhibit B. No other camera with similar features and design elements is currently on the market, except Sakar’s infringing Polaroid iMi 836 camera. 15. Since the Nikon 1 "Everyday Camera" series launched in 2011, Nikon has made
substantial sales in the U.S., in units and dollars, of cameras with the Nikon 1 Trade Dress. 16. Nikon has extensively advertised and promoted their Nikon 1 "Everyday Camera"
series and their unique trade dress, so that consumers have come to associate the Nikon 1 Trade Dress exclusively with one source, namely, Nikon, as evidenced by the examples set forth in this Complaint of statements found on the Internet. 17. In the United States alone, Nikon has spent substantial amounts of money to
advertise, market, and promote their cameras embodying the Nikon 1 Trade Dress through virtually every type of digital, broadcast, and print media, including but not limited to print advertisements (e.g., magazines and newspapers), television commercials, in-cinema
commercials, Internet advertising, social media, billboards, brochures, catalogs, point-of-sale displays, Internet advertisements, sponsorships, trade shows, and promotional items. 18. The Nikon 1 Trade Dress has been promoted through nationally-distributed trade
magazines, such as Twice, Dealerscope, Photo Industry Reporter, and Digital Imaging Reporter, as well as major national newspapers, such as the Wall Street Journal and USA Today. Additionally, retail stores regularly run advertisements in local newspapers throughout the country featuring cameras embodying the Nikon 1 Trade Dress. 19. The Nikon 1 Trade Dress has been regularly showcased in national television
commercials featuring famed celebrity spokesman Ashton Kutcher. Those and other commercials showing the Nikon 1 Trade Dress have appeared on major television network channels, including NBC, ABC, CBS, and FOX channels. They have also aired on cabletelevision networks, such as ESPN, USA, A&E, AMC, Bravo, E, Food Network, Lifetime, National Geographic, Nat Geo Wild, TBS, TLC, MTV, HGTV, Travel, TNT, VH1, FX, We, WGN, DIY Channel, Comedy Central, Discovery Channel, and The History Channel. 20. The Nikon 1 Trade Dress also has been promoted online through various
company websites, advertising placed on third-party websites, and popular social-networking websites (including FACEBOOK and Twitter). 21. The Nikon 1 Trade Dress has been further promoted through sponsorship of a
number of high-profile events, such as the South by Southwest Music Conference and Festival, Billboard Magazine Candid Covers, and Clearchannel’s iHeartRadio Online Concerts. The Nikon 1 Trade Dress is featured in various ways throughout these and other sponsorships. 22. The Nikon 1 Trade Dress has also received a significant amount of unsolicited
media coverage, including on nationally broadcast television programs, in widely circulated
publications, and on the internet. The Nikon 1 "Everyday Cameras" series received a "red dot award: product design 2012" and a "red dot: best of the best" award. The Nikon 1 Ji and J2 also received "IF Product Design Award 2013." The Nikon 1 J3 received a "red dot award: product design 2013." 23. As a result of strong sales and widespread use, advertising, publicity, and
promotion, the public has come to recognize the shape and design of the Nikon 1 camera and Nikon 1 Trade Dress and to associate that shape, design, and trade dress with a single source, namely, Nikon.
SAKAR’S INFRINGING ACTS
24. In January 2013, at the Consumer Electronics Show in Las Vegas, Nevada, Sakar
displayed the Polaroid iM1836 digital camera. Attached as Exhibit Care true and correct copies of photographs of the Polaroid iM183 6 camera taken at the trade show. 25. Shortly thereafter, Sakar displayed the Polaroid iM1836 camera on its website, at
http://www.sakar.comlproducts/16,cameras/101,polaroid-im1836 . Attached as Exhibit D is a true and correct screenshot of the www sakar corn website, showing the Polaroid iM1836 camera. 26. According to the Amazon.corn website, the Polaroid iMi 836 camera was first
offered for sale on April 1, 2013. Attached as Exhibit B is a true and correct screenshot of the www.amazon.com website, offering for sale Sakar’s Polaroid iM1836 camera. 27. The Amazon.corn website continues to offer for sale, and to accept orders for, the
infringing Polaroid iMi 836 camera.
The Polaroid iM1836 camera is also offered for sale on eBay.com . Attached as
Exhibit F is a true and correct screenshot of the www.ebay.com website, offering for sale Sakar’s Polaroid iM1836 camera. 29. On March 7, 2013, before the ’906 patent issued, counsel for Nikon notified Sakar
and PLR IP Holdings that Nikon expected the ’906 patent to issue shortly (the ’906 patent soon issued, on May 21, 2013) and that the Polaroid iM1836 camera infringed Nikon’s trade dress rights. Sakar’s counsel responded to Nikon’s letter, disagreeing with Nikon’s position. INJURY TO NIKON AND THE PUBLIC 30. As a result of the undeniable and publicly recognized similarities between the
Nikon 1 "Everyday Cameras" and Polaroid iM1836 digital cameras, the public is likely to mistake and/or confuse Sakar’s camera with Nikon’s cameras and patented and trade dress design. 31. Sakar’s camera has caused and is likely to continue to cause confusion, mistake,
and deception as to the source of origin of Sakar’ s products, and is likely to suggest, falsely, a sponsorship, connection, or association of Sakar, its products, and/or its commercial activities with Nikon. For example, the public has been confused and is likely to continue to be confused, or to believe, mistakenly, that Nikon makes the Polaroid camera for Sakar, that Nikon has authorized Sakar to use the Nikon design, or that there is some kind of relationship between the Nikon and Polaroid cameras. 32. Such actual public confusion and mistake have already occurred. For example,
Nikon found the following news reports and related statements on the Internet: A. Polaroid to announce an Android based mirrorless interchangeable lens camera, PhotoRumors. corn (Dec. 17, 2012), http://photorumors.com/2012/12/17/polaroid-to-
announce-an-android-based-rnirrorless-interchangeable-lens-carnera/. (Attached as Exhibit G) ’For some reason, the Polaroid iM183 6 looks identical to the Nikon 1 J2 mirrorless camera with the exception of the lens release button.’ (in the article) "I can’t tell if the resemblance to the Nikon is superficial or not, does anyone know if Nikon outsources the 1 series?" (in the comments) B. Is Polaroid really making an interchangeable-lens Android camera?, TheVerge.com (Dec. 18, 2012), http://www.theverge.coml2O 12/12/18/377961 6/polaroidinterchangeable-lens-mirrorless-android-camera-rumor (internal citations omitted). (Attached as Exhibit H) Describing the Polaroid iMi 836 as "[l]ooking eerily like a Nikon 1 J series camera." "The fact that the recently released Nikon 1 J2 and iM1836 look so alike has led some to speculate that it’s a repackaged and repurposed version of Nikon’s interchangeable-lens system camera, and will accept the same lenses." C. Leak reveals Polaroid’s Android-powered camera with interchangeable lenses, Yahoo News (Dec. 18, 2012), http ://news.yahoo .comlleak-reveals-polaroid-androidpowered-camera-interchangeable-lenses-Q403 175 07.html. (Attached as Exhibit I) "At first glance, Polaroid’s camera looks to be a rebadged Nikon 1 J2, but the resemblance only runs skin deep, as PhotoRumors reports the camera only takes MicroSD cards." D. Sakar Remakes the Nikon Ji With a Polaroid Logo, ThePhoblographer.com (Jan. 8, 2013), http ://www.thephoblographer.comI2O 13/0 1/08/sakar-remakes-the-nikon-i 1with-a-polaroid-logo!. (Attached as Exhibit J)
"Well, the people who bought the rights to use Polaroid’s name continue to tarnish it.... The above model is the Polaroid iM1836. . . . [It] will come in the shape of a Nikon Ji." "Both of the [Polaroid] cameras I’m sure are possibly the worst photography investment you could make--because we all know you get what you pay for.T! 33. As shown by at least one of these statements, Nikon’s reputation and the
reputation of their cameras is being tarnished by the look-alike, infringing, Polaroid camera clones. 34. Sakar’s infringement of Nikon’s patented design and Nikon 1 Trade Dress has
damaged and irreparably injured Nikon and, unless preliminarily and permanently enjoined, will further damage and irreparably injure Nikon and the goodwill they have built in their name, design, and trade dress. 35. Sakar’s infringement of Nikon’s patented design and Nikon 1 Trade Dress has
irreparably injured the public, and, unless preliminarily and permanently enjoined, will further irreparably injure the public, which has an interest in being free from confusion and/or mistake in the marketplace. 36. Sakar has acted willfully, knowingly, and in bad faith, as evidenced in part by its
obvious copying of the Nikon camera design and its sale or offer for sale of the Polaroid iM183 6 camera despite Nikon’s objections to its design.
COUNT ONE: Design Patent Infringement Under 35 U.S.C. §4 271, 289
Nikon repeats and realleges each and every allegation set forth in this Complaint.
In the eye of the ordinary observer familiar with the relevant prior art, giving such
attention as a purchaser usually gives, the claimed design of the ’906 patent and the Polaroid iM183 6 camera are substantially the same, such that the ordinary observer would be deceived into believing that the design of the Polaroid iMl836 camera is the same as the design claimed in the ’906 patent. 39. In violation of 35 U. S. C. § 271, Sakar is now, and has been, directly infringing
the ’906 patent by making, offering for sale, selling, and/or importing the Polaroid iM1836 camera in the United States. 40. In violation of 35 U.S.C. § 289, Sakar is now, and has been, directly infringing
the ’906 patent by applying the patented design of the ’906 patent, or a colorable imitation thereof, to an article of manufacture, including the Polaroid iM1836 camera, for the purpose of sale and/or by selling, offering, or exposing for sale an article of manufacture, including the Polaroid iM1836, to which the patented design of the ’906 patent or a colorable imitation thereof has been applied. COUNT TWO Trade Dress Infringement, False Designation of Origin, Passing Off, and Unfair Competition Under 15 U.S.C. § 1125(a) 41. 42. Nikon repeats and realleges each and every allegation set forth in this Complaint. Sakar’s actions described in this Complaint are likely to cause confusion, or to
cause mistake, or to deceive as to the affiliation, connection, association, origin, sponsorship, or approval of Sakar and/or its products or commercial activities with Nikon and/or Nikon’s products or commercial activities, or as to the origin, sponsorship, or approval of its products, services, and/or commercial activities by or with Nikon and/or the public, and thus constitute
trade dress infringement, false designation of origin, passing off, and unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
COUNT THREE: Violation of New York General Business Law 349
Nikon repeats and realleges each and every allegation set forth in this Complaint. Sakar’s actions described in this Complaint are (1) consumer-oriented; (2)
deceptive and misleading in a material way; and (3) caused Nikon injury as a result of such deceptive and misleading activities. Sakar’ s actions described in this Complaint thus constitute deceptive acts or practices in the conduct of business, trade, or commerce in the State of New York.
COUNT FOUR: Common Law Trade Dress Infringement and Unfair Competition
Nikon repeats and realleges each and every allegation set forth this Complaint. Sakar’ s actions described in this Complaint have caused and are likely to continue
to cause confusion, or to cause mistake, or to deceive the public regarding the origin, sponsorship, affiliation, connection, association, or approval of Sakar’ s and Nikon’s respective products and commercial activities described in this Complaint, such that Sakar’ s acts constitute infringement of the Nikon 1 Trade Dress, misappropriation of the goodwill in that trade dress, and unfair competition under New York common law.
Nikon demands a jury trial on all issues that are triable by a jury in this action.
PRAYER FOR RELIEF
WHEREFORE, Nikon respectfully requests that this Court enter judgment in their favor on each and every claim set forth above and award them relief, including but not limited to the following: A. A judgment declaring that Sakar’s Polaroid iM1836 camera infringes the ’906
patent, infringes the Nikon 1 Trade Dress, violates New York General Business Law § 349, and constitutes unfair competition under federal, state, and/or common law, as described in this Complaint; B. Preliminary and permanent injunctions under 35 U.S.C. § 283, 15 U.S.C. § 1116,
and the common law, enjoining Sakar and its employees, agents, partners, officers, directors, owners, shareholders, principals, subsidiaries, related companies, affiliates, distributors, dealers, retailers, and all persons in active concert or participation with any of them from: 1. making, importing, promoting, offering or exposing for sale, or selling the
infringing Polaroid iM1836 camera or any camera confusingly similar to Nikon’s asserted patented design and/or trade dress; 2. representing by any means whatsoever, directly or indirectly, that Sakar,
any products or services offered by Sakar, or any activities undertaken by Sakar, are associated or connected with Nikon in any way, or are sponsored by or affiliated with Nikon in any way; and 3. assisting, aiding, or abetting any other person or business entity in
engaging in or performing any of the activities described in this Complaint; C. An order directing Sakar to file with this Court and serve upon Nikon’s counsel
within 30 days after the entry of an injunction a report setting forth the manner and form in which Sakar has complied with the injunction; -12-
An order directing Sakar to destroy all products, packaging, signage,
advertisements, promotional materials, stationery, forms, and/or any other materials and things that contain, bear, incorporate, or depict the infringing Polaroid iM1836 camera, in accordance with 15 U.S.C. § 1118 and other applicable laws; E. An order requiring Sakar to disseminate pre-approved corrective advertising and
send pre-approved letters to all customers, agents, and representatives to address the likely confusion caused by their infringing Polaroid iM183 6 camera; F. An award of damages, in an amount to be determined (and including prejudgment
and post-judgment interest), adequate to compensate Nikon for the infringement that has occurred, pursuant to 35 U.S.C. §§ 284 or 289, 15 U.S.C. § 1117, and other applicable laws, and trebling such damages; G. An accounting and/or supplemental damages for all infringement occurring after
any discovery cutoff and through the Court’s decision regarding the imposition of a permanent injunction; H. An order requiring Sakar to account for and pay to Nikon any and all profits
arising from the foregoing acts, and increasing such profits, in accordance with 15 U.S.C. § 1117 and other applicable laws; A finding that this is an exceptional case and an award of attorneys’ fees (including prejudgment interest on such fees), pursuant to 35 U.S.C. § 285, 15 U.S.C. § 1117, and other applicable laws; J. K. L. An award of exemplary and punitive damages; Costs and expenses in this action; Any further relief that this Court deems just and proper.
Dated: October 11, 2013 Gerald G. PaqV(GP-1450) Grant A. Shehigian (GS-0904) FLEMMING ZULACK WILLIAMSON ZAUDERER LLP One Liberty Plaza New York, New York 10006 (212) 412-9500 gpau1fzwz.com gshehigianfzwz.com Of Counsel: John F. Hornick Douglas A. Rettew Elizabeth D. Ferrill Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 901 New York Street, N.W. Washington, D.C. 20001 Tel: (202) 408-4000 Fax: (202) 408-4400
Attorneysfor Plaintiff Nikon Corp. and Nikon Inc.
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