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Michael K. Friedland (SBN 157,217) mfriedland@knobbe.com Lauren K. Katzenellenbogen (SBN 223,370) lauren.katzenellenbogen@knobbe.com Ali S. Razai (SBN 246,922) ali.razai@knobbe.com Samantha Y. Hsu (SBN 285,853) samantha.hsu@knobbe.com KNOBBE, MARTENS, OLSON & BEAR, LLP 2040 Main Street Fourteenth Floor Irvine, CA 92614 Phone: (949) 760-0404 Facsimile: (949) 760-9502 Attorneys for Plaintiff OAKLEY, INC.

IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF CALIFORNIA

'14 CV0270 LAB BLM
OAKLEY, INC., a Washington corporation, Plaintiff, v. NEWEGG INC., a California corporation, Defendant. ) ) ) ) ) ) ) ) ) ) ) ) ) Civil Action No. COMPLAINT FOR PATENT INFRINGEMENT, TRADEMARK INFRINGEMENT, FALSE DESIGNATION OF ORIGIN, TRADEMARK DILUTION, AND UNFAIR COMPETITION DEMAND FOR JURY TRIAL

COMPLAINT

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Plaintiff Oakley, Inc. (“Oakley”) hereby complains of Defendant Newegg Inc. and alleges as follows: I. THE PARTIES 1. Plaintiff Oakley is a corporation organized and existing under the

laws of the State of Washington, having its principal place of business at One Icon, Foothill Ranch, California 92610. 2. Plaintiff is informed and believes, and thereon alleges, that

Defendant Newegg Inc. is a corporation organized and existing under the laws of the state of California and has a principal place of business at 16839 E. Gale Avenue, City of Industry, CA 91745. 3. Oakley is informed and believes, and thereon alleges, that

Defendant regularly conducts business in, and has committed the acts alleged herein, within this judicial district. II. JURISDICTION AND VENUE 4. This is an action for (a) patent infringement arising under the patent

laws of the United States, 35 U.S.C. §§ 271 and 281, (b) trademark infringement arising under 15 U.S.C. § 1114, (c) false designation of origin arising under 15 U.S.C. § 1125(a), (d) trademark dilution arising under 15 U.S.C. § 1125(c), (e) trademark infringement arising under the common law of the State of California, and (f) unfair competition arising under the common law of the State of California. 5. This Court has original subject matter jurisdiction pursuant to 15

U.S.C. §§ 1116(a) and 1121(a) and 28 U.S.C. §§ 1331 and 1338 over the claims arising under the laws of the United States. This Court has supplemental jurisdiction over the remaining claims in this Complaint pursuant to 28 U.S.C. § 1367(a) because the state law claims are so related to the federal claims that they form part of the same case or controversy and derive from a common nucleus of operative facts. -1COMPLAINT

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6.

This Court has personal jurisdiction over Defendant because

Defendant has a continuous, systematic, and substantial presence within this judicial district including by regularly doing and soliciting business and deriving revenue from goods provided to individuals in this judicial district, including but not limited to selling infringing eyewear directly to consumers and/or retailers in this district and selling into the stream of commerce knowing such eyewear products would be sold in California and this district, which acts form a substantial part of the events or omissions giving rise to Oakley’s claim. 7. Venue is proper in this judicial district under 28 U.S.C. § 1391 (b)-

(d), and 28 U.S.C. § 1400(b). III. GENERAL ALLEGATIONS 8. Oakley has been actively engaged in the manufacture and sale of Oakley is the manufacturer and

high quality eyewear since at least 1985.

retailer of several lines of eyewear that have enjoyed substantial success and are protected by various intellectual property rights owned by Oakley. 9. On November 22, 2005, the United States Patent and Trademark

Office (“U.S.P.T.O.”) duly and lawfully issued United States Patent No. 6,966,647 (“the ’647 Patent”), entitled “TELECOMMUNICATIONS

ENABLED EYEGLASS.” Oakley is the owner by assignment of all right, title, and interest in the ’647 Patent. A true and correct copy of the ’647 Patent is attached hereto as Exhibit A. 10. On December 12, 2006, the U.S.P.T.O. duly and lawfully issued

United States Patent No. 7,147,324 (“the ’324 Patent”), entitled “SPEAKER MOUNTS FOR EYEGLASS WITH MP3 PLAYER.” Oakley is the owner by assignment of all right, title, and interest in the ’324 Patent. A true and correct copy of the ’324 Patent is attached hereto as Exhibit B. 11. On May 15, 2007, the U.S.P.T.O. duly and lawfully issued United

States Patent No. 7,216,973 (“the ’973 Patent”), entitled “EYEGLASS WITH -2COMPLAINT

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MP3 PLAYER.” Oakley is the owner by assignment of all right, title, and interest in the ’973 Patent. A true and correct copy of the ’973 Patent is attached hereto as Exhibit C. 12. On May 22, 2007, the U.S.P.T.O. duly and lawfully issued United

States Patent No. 7,219,994 (“the ’994 Patent”), entitled “EYEGLASS WITH MP3 PLAYER.” Oakley is the owner by assignment of all right, title, and interest in the ’994 Patent. A true and correct copy of the ’994 Patent is attached hereto as Exhibit D. 13. On September 4, 2007, the U.S.P.T.O. duly and lawfully issued

United States Patent No. 7,264,350 (“the ’350 Patent”), entitled “MULTIDIRECTIONAL ADJUSTMENT DEVICES FOR SPEAKER MOUNTS FOR EYEGLASS WITH MP3 PLAYER.” Oakley is the owner by assignment of all right, title, and interest in the ’350 Patent. A true and correct copy of the ’350 Patent is attached hereto as Exhibit E. 14. States On May 16, 2000, the U.S.P.T.O. duly and lawfully issued United Patent No. D425,103 (“the D103 Patent”), entitled

Design

“EYEGLASSES.” Oakley is the owner by assignment of all right, title, and interest in the D103 Patent. A true and correct copy of the D103 Patent is attached hereto as Exhibit F. 15. On February 7, 2006, the U.S.P.T.O. duly and lawfully issued

United States Design Patent No. D514,613 (“the D613 Patent”), entitled “EYEGLASS AND EYEGLASS COMPONENTS.” Oakley is the owner by assignment of all right, title, and interest in the D613 Patent. A true and correct copy of the D613 Patent is attached hereto as Exhibit G. 16. On June 20, 2006, the U.S.P.T.O. duly and lawfully issued United

States Design Patent No. D523,461 (“the D461 Patent”), entitled “EYEGLASS COMPONENT.” Oakley is the owner by assignment of all right, title, and /// -3COMPLAINT

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interest in the D461 Patent. A true and correct copy of the D461 Patent is attached hereto as Exhibit H. 17. States On July 31, 2007, the U.S.P.T.O. duly and lawfully issued United Patent No. D547,794 (“the D794 Patent”), entitled

Design

“EYEGLASSES.” Oakley is the owner by assignment of all right, title, and interest in the D794 Patent. A true and correct copy of the D794 Patent is attached hereto as Exhibit I. 18. On December 4, 2007, the U.S.P.T.O. duly and lawfully issued

United States Design Patent No. D556,818 (“the D818 Patent”), entitled “EYEGLASS COMPONENTS.” Oakley is the owner by assignment of all right, title, and interest in the D818 Patent. A true and correct copy of the D818 Patent is attached hereto as Exhibit J. 19. On December 16, 2008, the U.S.P.T.O. duly and lawfully issued

United States Design Patent No. D582,957 (“the D957 Patent”), entitled “EYEGLASS.” Oakley is the owner by assignment of all right, title, and

interest in the D957 Patent. A true and correct copy of the D957 Patent is attached hereto as Exhibit K. 20. On February 23, 2010, the U.S.P.T.O. duly and lawfully issued

United States Design Patent No. D610,604 (“the D604 Patent”), entitled “EYEGLASS AND EYEGLASS COMPONENTS.” Oakley is the owner by assignment of all right, title, and interest in the D604 Patent. A true and correct copy of the D604 Patent is attached hereto as Exhibit L. 21. Oakley has provided the public with constructive notice of its

patent rights pursuant to 35 U.S.C. §287. 22. Defendant manufactures, uses, sells, offers for sale and/or imports

into the United States eyewear that infringes Oakley’s intellectual property rights including the ’647 Patent, the ’324 Patent, the ’973 Patent, the ’994 Patent, the ’350 Patent, the D103 Patent, the D613 Patent, the D461 Patent, the -4COMPLAINT

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D794 Patent, the D818 Patent, the D957 Patent, and the D604 Patent (“the Patents-in-Suit”). 23. Since at least as early as 2005, Oakley has marketed and sold its Mark. Since Oakley

high quality eyewear in connection with the

Mark, its use of the mark in connection with eyewear began using the has been continuous and exclusive. 24. Over the years Oakley has invested a considerable amount of time

and money in establishing the Mark in the minds of consumers as a source of high quality eyewear. As a result of Oakley’s substantial use and promotion of the Mark in connection with the eyewear and other products, the mark has acquired great value as a specific identifier of Oakley’s products and serve to distinguish Oakley’s products from that of others. Customers in this Judicial District and elsewhere readily recognize the Mark as a distinctive designation of origin of Oakley’s products. The Mark is an intellectual property asset of great value as a symbol of Oakley’s quality products and goodwill. 25. the 26. Oakley is the owner of Trademark Registration No. 3,151,994, for Mark. Trademark Registration No. 3,151,994 was registered with the Trademark

U.S.P.T.O. on October 3, 2006 on the Principal Register.

Registration No. 3,151,994 is associated with the following goods: protective eyewear, namely spectacles, prescription eyewear, anti glare glasses and sunglasses and their parts and accessories, namely replacement lenses, frames, earstems, and nose pieces; cases specially adapted for spectacles and sunglasses and their parts and accessories. A true and correct copy of the certificate of registration of Trademark Registration No. 3,151,994 is attached hereto as Exhibit M. /// -5COMPLAINT

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27.

Without permission or consent from Oakley, Defendant is offering

for sale, distributing, marketing, and/or selling eyewear bearing the mark “O”. 28. Defendant did not begin using its infringing mark in connection

with eyewear until long after Oakley began using the Mark. 29. Oakley is informed and believes, and on that basis alleges, that Defendant’s unauthorized use of its infringing mark is intended to trade upon the goodwill and substantial recognition associated with Oakley and the Mark. 30. Oakley is informed and believes, and on that basis alleges, that Defendant is using its infringing mark in an attempt to associate its eyewear products with Oakley and the Mark, to cause mistake or deception as to the source of Defendant’s eyewear products and/or to otherwise trade upon Oakley’s valuable reputation and customer goodwill in its marks. 31. Oakley is informed and believes, and on that basis alleges, that

Defendant’s use of its infringing mark is designed to cause confusion, mistake, or deception. 32. By virtue of the acts complained of herein, Defendant has created a

likelihood of injury to Oakley’s business reputation, caused a strong likelihood of consumer confusion, mistake, and deception as to the source of or origin or relationship of Oakley’s and Defendant’s goods, has caused actual confusion, and has otherwise competed unfairly with Oakley by unlawfully trading on and using the 33. Mark without Oakley’s permission or consent. At no time has Oakley ever given Defendant license, permission or

authority to use or display the Mark in connection with any of Defendant’s eyewear products or to use the designs claimed in the D103 Patent, the D613 Patent, the D461 Patent, the D794 Patent, the D818 Patent, the D957 Patent, or the D604 Patent. /// -6COMPLAINT

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34.

Oakley is informed and believes, and on that basis alleges, that

Defendant’s acts complained of herein are willful and deliberate. 35. Defendant’s acts complained of herein have caused Oakley to

suffer irreparable injury to its business. Oakley will suffer substantial loss of goodwill and reputation unless and until Defendant is preliminarily and permanently enjoined from its wrongful actions complained of herein. IV. FIRST CLAIM FOR RELIEF (Patent Infringement) (35 U.S.C. § 271) 36. Oakley repeats and re-alleges the allegations of paragraphs 1-35 of

this Complaint as if set forth fully herein. 37. 38. This is a claim for patent infringement under 35 U.S.C. § 271. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the ’647 Patent by making, using, selling, offering for sale and/or importing eyewear that infringe at least one claim of the ’647 Patent, including, for example, Defendant’s 5.0 Mega pixels HD 1280X720 Sunglasses with camera, 5.0 Mega pixels HD 1280X720 Spy Camera Sunglasses with MP3 player 8GB, Comfortable and Secure 2GB 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, 2GB Sunglass Mp3 Player With USB 2.0 Interface Plug & Play, 2GB Digital Sunglasses Eyewear Sun Glasses Headset Sport WMA MP3 Music Player, 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, and Bluetooth + FM radioHeadset Sunglasses Mp3 Player-4GB. 39. Defendant’s acts of infringement of the ’647 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the ’647 Patent and its actions constitute willful and intentional infringement of the ’647 Patent. Defendant infringed the ’647 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so -7COMPLAINT

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obvious that Defendant should have known, that its actions constituted infringement of the ’647 Patent. Defendant’s acts of infringement of the ’647 Patent were not consistent with the standards for its industry. 40. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the ’324 Patent by making, using, selling, offering for sale and/or importing eyewear that infringe at least one claim of the ’324 Patent, including, for example, Defendant’s 5.0 Mega pixels HD 1280X720 Sunglasses with camera, 5.0 Mega pixels HD 1280X720 Spy Camera Sunglasses with MP3 player 8GB, Comfortable and Secure 2GB 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, 2GB Sunglass Mp3 Player With USB 2.0 Interface Plug & Play, 2GB Digital Sunglasses Eyewear Sun Glasses Headset Sport WMA MP3 Music Player, 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, and Bluetooth + FM radioHeadset Sunglasses Mp3 Player-4GB. 41. Defendant’s acts of infringement of the ’324 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the ’324 Patent and its actions constitute willful and intentional infringement of the ’324 Patent. Defendant infringed the ’324 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the ’324 Patent. Defendant’s acts of infringement of the ’324 Patent were not consistent with the standards for its industry. 42. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the ’973 Patent by making, using, selling, offering for sale and/or importing eyewear that infringe at least one claim of the ’973 Patent, including, for example, Defendant’s 5.0 Mega pixels HD 1280X720 Sunglasses with camera, 5.0 Mega pixels HD 1280X720 Spy Camera Sunglasses with MP3 player 8GB, Comfortable and -8COMPLAINT

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Secure 2GB 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, 2GB Sunglass Mp3 Player With USB 2.0 Interface Plug & Play, 2GB Digital Sunglasses Eyewear Sun Glasses Headset Sport WMA MP3 Music Player, 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, and Bluetooth + FM radioHeadset Sunglasses Mp3 Player-4GB. 43. Defendant’s acts of infringement of the ’973 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the ’973 Patent and its actions constitute willful and intentional infringement of the ’973 Patent. Defendant infringed the ’973 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the ’973 Patent. Defendant’s acts of infringement of the ’973 Patent were not consistent with the standards for its industry. 44. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the ’994 Patent by making, using, selling, offering for sale and/or importing eyewear that infringe at least one claim of the ’994 Patent, including, for example, Defendant’s 5.0 Mega pixels HD 1280X720 Sunglasses with camera, 5.0 Mega pixels HD 1280X720 Spy Camera Sunglasses with MP3 player 8GB, Comfortable and Secure 2GB 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, 2GB Sunglass Mp3 Player With USB 2.0 Interface Plug & Play, 2GB Digital Sunglasses Eyewear Sun Glasses Headset Sport WMA MP3 Music Player, 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, and Bluetooth + FM radioHeadset Sunglasses Mp3 Player-4GB. 45. Defendant’s acts of infringement of the ’994 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the ’994 Patent and its actions constitute willful and intentional infringement of the ’994 Patent. Defendant infringed the ’994 Patent with -9COMPLAINT

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reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the ’994 Patent. Defendant’s acts of infringement of the ’994 Patent were not consistent with the standards for its industry. 46. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the ’350 Patent by making, using, selling, offering for sale and/or importing eyewear that infringe at least one claim of the ’350 Patent, including, for example, Defendant’s 5.0 Mega pixels HD 1280X720 Sunglasses with camera, 5.0 Mega pixels HD 1280X720 Spy Camera Sunglasses with MP3 player 8GB, Comfortable and Secure 2GB 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, 2GB Sunglass Mp3 Player With USB 2.0 Interface Plug & Play, 2GB Digital Sunglasses Eyewear Sun Glasses Headset Sport WMA MP3 Music Player, 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, and Bluetooth + FM radioHeadset Sunglasses Mp3 Player-4GB. 47. Defendant’s acts of infringement of the ’350 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the ’350 Patent and its actions constitute willful and intentional infringement of the ’350 Patent. Defendant infringed the ’350 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the ’350 Patent. Defendant’s acts of infringement of the ’350 Patent were not consistent with the standards for its industry. 48. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D103 Patent by making, using, selling, offering for sale and/or importing eyewear that are covered by the claim of the D103 Patent, including, for example, Defendant’s MLB Sunglasses. - 10 COMPLAINT

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49.

Defendant’s acts of infringement of the D103 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D103 Patent and its actions constitute willful and intentional infringement of the D103 Patent. Defendant infringed the D103 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the D103 Patent. Defendant’s acts of infringement of the D103 Patent were not consistent with the standards for its industry. 50. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D613 Patent by making, using, selling, offering for sale and/or importing eyewear that are covered by the claim of the D613 Patent, including, for example, Defendant’s Comfortable and Secure 2GB 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, 2GB Sunglass Mp3 Player With USB 2.0 Interface Plug & Play, 2GB Digital Sunglasses Eyewear Sun Glasses Headset Sport WMA MP3 Music Player, 2G Mp3 Player Sport Sunglasses Headset Sun Glasses, and Bluetooth + FM radio-Headset Sunglasses Mp3 Player-4GB. 51. Defendant’s acts of infringement of the D613 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D613 Patent and its actions constitute willful and intentional infringement of the D613 Patent. Defendant infringed the D613 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the D613 Patent. Defendant’s acts of infringement of the D613 Patent were not consistent with the standards for its industry. 52. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D461 Patent by making, using, selling, offering for sale and/or importing eyewear that are - 11 COMPLAINT

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covered by the claim of the D461 Patent, including, for example, Defendant’s Flylink DV DVR Sunglasses Spy Hidden Camera Video Recorder MP3 + Earphone + 6 pair Lens SC48, Cobra Digital MINI 300 Black 640x480 CMOS 2MP Digital Camera Sunglasses, Cobra Digital MINI 300 2.0 Megapixel MINI 300 Digital Camcorder Sunglasses and V AGC20-4CA Camo CMOS Digital Camcorder. 53. Defendant’s acts of infringement of the D461 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D461 Patent and its actions constitute willful and intentional infringement of the D461 Patent. Defendant infringed the D461 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the D461 Patent. Defendant’s acts of infringement of the D461 Patent were not consistent with the standards for its industry. 54. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D794 Patent by making, using, selling, offering for sale and/or importing eyewear that are covered by the claim of the D794 Patent, including, for example, Defendant’s Men's Designer Sports Wrap Around Sunglasses Shades Active Sunnies, Men's Sport Wrap Around Soft Touch Matte Sunglasses Designer Inspired, and Men's Designer Inspired Sunglasses Sports Wrap Around Mirrored. 55. Defendant’s acts of infringement of the D794 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D794 Patent and its actions constitute willful and intentional infringement of the D794 Patent. Defendant infringed the D794 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted /// - 12 COMPLAINT

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infringement of the D794 Patent. Defendant’s acts of infringement of the D794 Patent were not consistent with the standards for its industry. 56. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D818 Patent by making, using, selling, offering for sale and/or importing eyewear that are covered by the claim of the D818 Patent, including, for example, Defendant’s Men’s Capuccino Black Plastic Sport Sunglasses. 57. Defendant’s acts of infringement of the D818 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D818 Patent and its actions constitute willful and intentional infringement of the D818 Patent. Defendant infringed the D818 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the D818 Patent. Defendant’s acts of infringement of the D818 Patent were not consistent with the standards for its industry. 58. Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D604 Patent by making, using, selling, offering for sale and/or importing eyewear that are covered by the claim of the D604 Patent, including, for example, Defendant’s Men's Sport Designer Inspired Wrap Around Sunglasses Soft Touch Frame. 59. Defendant’s acts of infringement of the D604 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D604 Patent and its actions constitute willful and intentional infringement of the D604 Patent. Defendant infringed the D604 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the D604 Patent. Defendant’s acts of infringement of the D604 Patent were not consistent with the standards for its industry. - 13 COMPLAINT

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60.

Defendant, through its agents, employees and servants, has, and

continues to, knowingly, intentionally and willfully infringe the D957 Patent by making, using, selling, offering for sale and/or importing eyewear that are covered by the claim of the D957 Patent, including, for example, Defendant’s 5.0 Mega pixels HD 1280X720 Sunglasses with camera and 5.0 Mega pixels HD 1280X720 Spy Camera Sunglasses with MP3 player 8GB. 61. Defendant’s acts of infringement of the D957 Patent were Defendant had

undertaken without permission or license from Oakley.

knowledge of the D957 Patent and its actions constitute willful and intentional infringement of the D957 Patent. Defendant infringed the D957 Patent with reckless disregard of Oakley’s patent rights. Defendant knew, or it was so obvious that Defendant should have known, that its actions constituted infringement of the D957 Patent. Defendant’s acts of infringement of the D957 Patent were not consistent with the standards for its industry. 62. As a direct and proximate result of Defendant’s acts of

infringement, Defendant has derived and received gains, profits, and advantages in an amount that is not presently known to Oakley. 63. Pursuant to 35 U.S.C. § 284, Oakley is entitled to damages for

Defendant’s infringing acts and treble damages together with interests and costs as fixed by this Court. 64. Pursuant to 35 U.S.C. § 285, Oakley is entitled to reasonable

attorneys’ fees for the necessity of bringing this claim. 65. Pursuant to 35 U.S.C. § 289, Oakley is entitled to Defendant’s total

profits from Defendant’s infringement. 66. Due to the aforesaid infringing acts, Oakley has suffered great and

irreparable injury, for which Oakley has no adequate remedy at law. 67. Defendant will continue to infringe the ’647 Patent, the ’324

Patent, the ’973 Patent, the ’994 Patent, the ’350 Patent, the D103 Patent, the - 14 COMPLAINT

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D613 Patent, the D461 Patent, the D794 Patent, the D818 Patent, the D957 Patent, and the D604 Patent to the great and irreparable injury of Oakley, unless enjoined by this Court. V. SECOND CLAIM FOR RELIEF (Federal Trademark Infringement) (15 U.S.C. § 1114) 68. Oakley repeats and re-alleges the allegations of paragraphs 1-67 of

this Complaint as if set forth fully herein. 69. § 1114. 70. Defendant has used in commerce, without Oakley’s permission, This is a claim for trademark infringement arising under 15 U.S.C.

Mark in reproductions, copies or colorable imitations of the connection with distributing, selling, offering for sale, advertising, and/or promoting Defendant’s eyewear. 71. Without Oakley’s permission, Defendant is reproducing, copying,

Mark and applying such reproductions, or colorably imitating the copies or colorable imitations to merchandise, labels, signs, packages, receptacles or advertisements intended to be used in commerce upon or in connection with the distributing, selling, offering for sale, advertising and/or promoting of goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake, or to deceive. 72. Oakley is informed and believes, and on that basis alleges, that

Defendant’s activities complained of herein constitute willful and intentional Mark, and that Defendant did so with the intent to infringements of the unfairly compete against Oakley, to trade upon Oakley’s reputation and goodwill by causing confusion and mistake among customers and the public, and to deceive the public into believing that Defendant’s eyewear products are

- 15 -

COMPLAINT

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associated with, sponsored by, originated from, or are approved by Oakley, when in truth and fact they are not. 73. Oakley is informed and believes, and on that basis alleges, that

Defendant had actual knowledge of Oakley’s ownership and prior use of the Mark and without the consent of Oakley has willfully infringed the Mark in violation of 15 U.S.C. § 1114. 74. Oakley is informed and believes, and thereon alleges, that Defendant has derived and received, and will continue to derive and receive, gains, profits, and advantages from the use of the Mark in an amount that is not presently known to Oakley. By reason of Defendant’s actions, constituting unauthorized use of the Mark, Oakley has been damaged and is entitled to monetary relief in an amount to be determined at trial. 75. Due to Defendant’s actions, constituting unauthorized use of the

Mark, Oakley has suffered and continues to suffer great and irreparable injury, for which Oakley has no adequate remedy at law. VI. THIRD CLAIM FOR RELIEF (Federal Unfair Competition & False Designation of Origin) (15 .S.C. § 1125(a)) 76. Oakley repeats and realleges the allegations of paragraphs 1-75 of

this complaint as if set forth fully herein. 77. This is a claim for unfair competition and false designation of

origin arising under 15 U.S.C. § 1125(a). 78. Without Oakley’s consent, Defendant has created and will create a Mark and/or

false designation of origin by using in commerce the

Mark in connection with the other marks confusingly similar to the distribution, sale, offering for sale, advertising, and/or promotion of Defendant’s eyewear, thereby causing a likelihood of confusion, mistake or deception as to an affiliation, connection or association with Oakley or to suggest Oakley as the - 16 COMPLAINT

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origin of the goods and/or services, or that Oakley has sponsored or approved Defendant’s commercial activities. 79. Oakley is informed and believes, and on that basis alleges, that

Defendant acted with the intent to unfairly compete against Oakley, to trade upon Oakley’s reputation and goodwill by causing confusion and mistake among customers and the public, and to deceive the public into believing that Defendant’s eyewear products are associated with, sponsored by or approved by Oakley, when they are not. 80. Oakley is informed and believes, and on that basis alleges, that

Defendant had knowledge of Oakley’s ownership and prior use of the Mark, and without the consent of Oakley, has willfully committed acts of unfair competition and false designation of origin in violation of 15 U.S.C. § 1125(a). 81. Oakley is informed and believes, and thereon alleges, that

Defendant has derived and received, and will continue to derive and receive, gains, profits, and advantages from Defendant’s false designation of origin, false or misleading statements, descriptions of fact, or false or misleading representations of fact in an amount that is not presently known to Oakley. By reason of Defendant’s actions, constituting false designation of origin, false or misleading statements, false or misleading descriptions of fact, or false or misleading representations of fact, Oakley has been damaged and is entitled to monetary relief in an amount to be determined at trial. 82. Due to Defendant’s actions, constituting false designation of origin,

false or misleading statements, false or misleading description of fact, or false or misleading representations of fact, Oakley has suffered and continues to suffer great and irreparable injury, for which Oakley has no adequate remedy at law. /// /// - 17 COMPLAINT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 83.

VII. FOURTH CLAIM FOR RELIEF (Federal Trademark Dilution) (15 U.S.C. § 1125(c)) Oakley repeats and re-alleges the allegations of paragraphs 1-82 of

this Complaint as if set forth fully herein. 84. This is a claim for trademark dilution under 15 U.S.C. § 1125(c).

Mark have been 85. The products sold by Oakley under the widely advertised, promoted, and distributed to the purchasing public throughout the United States and the world. 86. Oakley’s products sold under the Mark, by reason of their style and design and quality of workmanship, have come to be known to the purchasing public throughout the United States as high quality products, which are sold under excellent merchandising and customer service conditions. As a result, the value to Oakley. Mark, and the goodwill associated therewith, is of great

87. By virtue of the wide renown acquired by the Mark, coupled with the national and international distribution and extensive sale of various products distributed under the Mark, the Mark is famous, and became so prior to Defendant’s acts complained of herein. 88. Defendant’s unauthorized commercial use of the Mark in connection with the advertisement, offering for sale and sale of Defendant’s eyewear products has caused and is likely to continue to cause dilution of the distinctive quality of the famous Mark. 89. Defendant’s acts are likely to tarnish, injure, or trade upon Oakley’s business, reputation or goodwill, and to deprive Oakley of the ability to control the use of its therewith. /// - 18 COMPLAINT Mark and quality of products associated

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90.

Oakley is informed and believes, and on that basis alleges, that

Defendant’s dilution has been willful and deliberate. 91. By reason of the aforesaid acts constituting trademark dilution,

Oakley has been damaged and is entitled to monetary relief in an amount to be determined at trial. 92. Due to Defendant’s actions, constituting trademark dilution,

Oakley has suffered and continues to suffer great and irreparable injury, for which Oakley has no adequate remedy at law. VIII. FIFTH CLAIM FOR RELIEF (California Common Law Trademark Infringement) 93. Oakley repeats and re-alleges the allegations of paragraphs 1-92 of

this Complaint as if set forth fully herein. 94. This is a claim for trademark infringement, arising under California

common law. 95. Defendant’s acts complained of herein constitute trademark

infringement under California common law. Defendant’s acts complained of herein are willful and deliberate and committed with knowledge that Defendant’s unauthorized use of the confusion. 96. Mark causes a likelihood of

Oakley is informed and believes, and thereon alleges, that

Defendant has derived and received and will continue to derive and receive, gains, profits and advantages from Defendant’s trademark infringement in an amount that is not presently known to Oakley. By reason of Defendant’s

wrongful acts as alleged in this Complaint, Oakley has been damaged and is entitled to monetary relief in an amount to be determined at trial. /// /// - 19 COMPLAINT

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97.

Due to Defendant’s trademark infringement, Oakley has suffered

and continues to suffer great and irreparable injury for which Oakley has no adequate remedy at law. 98. Defendant’s willful acts of trademark infringement under

California common law constitute fraud, oppression, and malice. Accordingly, Oakley is entitled to exemplary damages. IX. SIXTH CLAIM FOR RELIEF (California Unfair Competition) 99. Oakley repeats and re-alleges the allegations of paragraphs 1-98 of

this Complaint as if set forth fully herein. 100. This is a claim for unfair competition, arising under California Business & Professions Code § 17200, et seq. and California common law. 101. Defendant’s acts of trademark infringement, false designation of origin, and trademark dilution complained of herein constitute unfair competition with Oakley under the common law and statutory laws of the State of California, particularly California Business & Professions Code § 17200 et seq. 102. Oakley is informed and believes, and thereon alleges, that Defendant has derived and received, and will continue to derive and receive, gains, profits and advantages from Defendant’s unfair competition in an amount that is not presently known to Oakley. By reason of Defendant’s wrongful acts as alleged in this Complaint, Oakley has been damaged and is entitled to monetary relief in an amount to be determined at trial. 103. By its actions, Defendant has injured and violated the rights of Oakley and has irreparably injured Oakley, and such irreparable injury will continue unless Defendant is enjoined by this Court. /// - 20 COMPLAINT

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WHEREFORE, Oakley prays for judgment in its favor against Defendant for the following relief: A. That the Patents-in-Suit each be deemed valid and willfully

infringed by Defendant under 35 U.S.C. § 271; B. A preliminary and permanent injunction enjoining Defendant, its

respective officers, directors, agents, servants, employees and attorneys, and those persons in active concert or participation with Defendant, from infringing the Patents-in-Suit in violation of 35 U.S.C. § 271; C. That Defendant account for all gains, profits, and advantages

derived by Defendant’s infringement of the Patents-in-Suit in violation of 35 U.S.C. § 271, and that Defendant pay to Oakley all damages suffered by Oakley and/or Defendant’s total profits from such infringement pursuant to 35 U.S.C. § 284; D. That Oakley have and recover Defendant’s total profits under 35

U.S.C. § 289 for Defendant’s infringement of the D103 Patent, the D613 Patent, the D461 Patent, the D794 Patent, the D818 Patent, the D957 Patent, and the D604 Patent; E. An Order for a trebling of damages and/or exemplary damages

because of Defendant’s willful conduct pursuant to 35 U.S.C. § 284; F. For an Order deeming this to be an exceptional case within the

meaning of 35 U.S.C. § 285, entitling Oakley to an award of its reasonable attorneys’ fees, expenses and costs in this action; Mark be deemed valid and willfully infringed by G. That the Defendant in violation of 15 U.S.C. § 1114, et seq.; H. A preliminary and permanent injunction against Defendant, its

officers, agents, servants, employees, representatives, successors, and assigns, and all persons, firms, or corporations in active concert or participation with Defendant, enjoining them from engaging in the following activities and from - 21 COMPLAINT

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assisting or inducing, directly or indirectly, others to engage in the following activities: 1. using to market, advertise, promote, sell, offer for sale, and/or identify Defendant’s goods with the Mark or any mark

Mark or is likely to that is confusingly similar to the create the erroneous impression that Defendant’s goods or services originate from Oakley, are endorsed by Oakley, or are connected in any way with Oakley; 2. manufacturing, distributing, shipping, importing, reproducing, displaying, advertising, marketing, promoting, transferring, selling, and/or offering to sell any eyewear products bearing the Mark and/or any confusingly similar marks; 3. otherwise infringing or diluting the of Oakley’s other trademarks; Mark and/or any

4. falsely designating the origin of Defendant’s goods; 5. unfairly competing with Oakley in any manner; or 6. causing a likelihood of confusion or injuries to Oakley’s business reputation; I. That Defendant be directed to file with this Court and serve on

Oakley within thirty (30) days after the service of the injunction, a report, in writing, under oath, setting forth in detail the manner and form in which Defendant has complied with the injunction pursuant to 15 U.S.C. § 1116; J. That, because of the exceptional nature of this case resulting from

Defendant’s deliberate infringing actions, this Court award to Oakley all reasonable attorneys’ fees, costs and disbursements incurred as a result of this action, pursuant to 15 U.S.C. § 1117; K. That Defendant be required to account for any and all profits

derived by its acts of trademark infringement, false designation of origin, - 22 COMPLAINT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28

trademark dilution, and unfair competition complained of in this Complaint; L. That Oakley be awarded damages for Defendant’s trademark

infringement pursuant to 15 U.S.C. § 1117 in the form of Defendant’s profits, damages sustained by Oakley and the costs of the action, together with prejudgment and post-judgment interest; M. That Defendant’s acts of trademark infringement, false designation

of origin, trademark dilution, and unfair competition complained of in this Complaint be deemed willful, and that Oakley be entitled to enhanced damages; O. That Defendant be adjudged to have acted with willful intent to Mark in

trade on Oakley’s reputation and to dilute the famous violation of 15 U.S.C. § 1125(c), et seq.; P.

That Defendant be adjudged to have willfully and maliciously

infringed the Mark in violation of Oakley’s common law rights under California common law; Q. That Defendant be adjudged to have violated California Business &

Professional Code § 14247 by seeking to injure Oakley’s business reputation Mark; and to dilute the distinctive quality of the R. That Defendant be adjudged to have competed unfairly with Oakley under the common law of the State of California; S. That Defendant be adjudged to have competed unfairly with

Oakley under California Business & Professional Code § 17200, and that Defendant’s actions in so doing be adjudged willful and done knowingly; T. That an accounting be ordered to determine Defendant’s profits

resulting from its infringement, unfair competition, dilution, and false designation of origin, and that Oakley be awarded monetary relief in an amount to be fixed by the Court in its discretion as it finds just as an equitable remedy, including: /// - 23 COMPLAINT

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 U.

1.

all profits received by Defendant from sales and revenues of any kind made as a result of its infringing actions, said amount to be trebled;

2.

all damages sustained by Oakley as a result of Defendant’s acts of infringement, unfair competition, false designation of origin, and dilution, and that such damages be trebled; and

3.

punitive damages stemming from Defendant’s willful, intentional, and malicious acts;

That such damages and profits be trebled and awarded to Oakley

pursuant to 15 U.S.C. § 1117; V. That Oakley recover exemplary damages pursuant to California

Civil Code § 3294; W. That Oakley have and recover the costs of this civil action,

including reasonable attorneys’ fees; X. An award of pre-judgment and post-judgment interest and costs of

this action against Defendant; and Z. proper. Respectfully submitted, KNOBBE, MARTENS, OLSON & BEAR, LLP Such other and further relief as this Court may deem just and

Dated: February 4, 2014

By: /s/ Ali S. Razai Michael K. Friedland Lauren K. Katzenellenbogen Ali S. Razai Samantha Y. Hsu Attorneys for Plaintiff OAKLEY, INC.

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COMPLAINT

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17185264

DEMAND FOR JURY TRIAL Plaintiff Oakley, Inc. hereby demands a trial by jury on all issues so triable. Respectfully submitted, KNOBBE, MARTENS, OLSON & BEAR, LLP

Dated: February 4, 2014

By: /s/ Ali S. Razai Michael K. Friedland Lauren K. Katzenellenbogen Ali S. Razai Samantha Y. Hsu Attorneys for Plaintiff OAKLEY, INC.

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COMPLAINT

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17185361

TABLE OF EXHIBITS Page # Exhibit A ............................................................................................................... 1 Exhibit B ............................................................................................................. 13 Exhibit C ............................................................................................................. 62 Exhibit D ........................................................................................................... 110 Exhibit E ........................................................................................................... 123 Exhibit F ........................................................................................................... 171 Exhibit G ........................................................................................................... 179 Exhibit H ........................................................................................................... 191 Exhibit I ............................................................................................................ 197 Exhibit J ............................................................................................................ 202 Exhibit K ........................................................................................................... 208 Exhibit L ........................................................................................................... 213 Exhibit M .......................................................................................................... 218

TABLE OF EXHIBITS

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