You are on page 1of 18

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 1 of 18

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
SUGARTOWN WORLDWIDE LLC,
Plaintiff,
v.
OLD NAVY (APPAREL), LLC,
OLD NAVY, LLC, and THE GAP,
INC.,

)
)
)
)
)
) Civil Action No.
)
)
)
)

Defendants.
COMPLAINT
Plaintiff Sugartown Worldwide LLC (Sugartown) states the following for
its Complaint against Defendants Old Navy (Apparel), LLC, Old Navy, LLC and
The Gap, Inc. (Defendants):
SUBSTANCE OF THE ACTION
1.

This is an action at law and in equity for copyright infringement

arising under the Copyright Act of 1976, 17 U.S.C. 101 et seq.


2.

Defendants have created and sold apparel incorporating designs that

are substantially similar to Sugartowns copyrighted designs, without Sugartowns


authorization. Defendants actions infringe Sugartowns exclusive copyright rights
and have damaged and will continue to damage Sugartown, and have caused and

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 2 of 18

will continue to cause irreparable harm to Sugartown, absent relief from this Court.
JURISDICTION AND VENUE
3.

This Court has subject matter jurisdiction under 28 U.S.C. 1331

and 1338.
4.

This Court has personal jurisdiction over Defendants because, on

information and belief, Defendants transact business in this State, have committed
tortious acts in this State, derive substantial revenue from or engage in a persistent
course of conduct in this State, have committed tortious acts outside this State
causing injury in this State, and have otherwise established contacts within this
State making the exercise of personal jurisdiction proper.
5.

Venue is proper in this District pursuant to 28 U.S.C. 1400(a).


THE PARTIES

6.

Sugartown is a Delaware limited liability company with an office and

principal place of business located at 800 3rd Avenue, King of Prussia,


Pennsylvania 19406. Sugartown is the owner of the well-known LILLY
PULITZER trademarks, and it markets and distributes Lilly Pulitzer apparel and
accessories in retail stores throughout the United States, including within this
District. Additionally, several Sugartown executives and the majority of its
corporate officers maintain offices in this District, and Sugartowns parent

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 3 of 18

company resides in this District.


7.

On information and belief, Defendant Old Navy (Apparel), LLC is a

California limited liability company with an office and principal place of business
located at 2 Folsom Street, San Francisco, California 94105.
8.

On information and belief, Defendant Old Navy, LLC is a Delaware

limited liability company with an office and principal place of business located at 2
Folsom Street, San Francisco, California 94105. Old Navy (Apparel), LLC and
Old Navy, LLC are hereinafter referred to collectively as Old Navy.
9.

On information and belief, Old Navy does business in this District by

operating retail stores, and by promoting, marketing, selling, and distributing


various products, including apparel and accessories, through its website at
http://oldnavy.gap.com, and through other media.
10.

On information and belief, The Gap, Inc. (Gap) is a Delaware

corporation with an office and principal place of business located at 2 Folsom


Street, San Francisco, California 94105. Gap does business in this District by
operating retail stores, and by promoting, marketing, selling, and distributing
various products, including apparel and accessories, through its website at
http://gap.com, and through other media.

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 4 of 18

FACTS
A.

Plaintiff Sugartown and Its Designs


11.

In the 1950s, Lilly Pulitzer began designing, manufacturing, and

selling distinctive fashion apparel featuring bright, colorful prints. Her apparel and
fabric designs quickly grew in popularity, in large part because they were unique
and distinctive. Ms. Pulitzer founded Lilly Pulitzer, Inc. in 1959, and within a few
years, she was selling products bearing her original and distinctive designs
nationwide.
12.

Sugartown purchased the rights to the LILLY PULITZER brand in

1993 and established a design team to continue creating original art, in keeping
with Ms. Pulitzers original vision, on which the distinctive and popular Lilly
Pulitzer designs are based.
13.

The LILLY PULITZER brand has enjoyed enormous success.

Sugartown currently operates thirty-three (33) Lilly Pulitzer retail stores in the
United States selling fashion apparel and accessories featuring the distinctive Lilly
Pulitzer designs, with one store in this District. In addition, Sugartown has entered
into license agreements with third parties pursuant to which over seventy (70) Lilly
Pulitzer signature store boutiques are operated throughout the United States,
including two stores in this District, selling Lilly Pulitzer fashion apparel and

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 5 of 18

accessories. Sugartown also sells Lilly Pulitzer products to major department stores
and individually-owned stores in this District, as well as through the Lilly Pulitzer
website at http://www.lillypulitzer.com. The Lilly Pulitzer retail store, signature
store boutiques, and website generate significant sales in this District.
14.

The unique, vibrant designs that appear on Lilly Pulitzer products are

the original creations of Sugartowns design team, and many are created as original
works of art painted on canvas by Sugartowns design team.
15.

In or around the summer of 2011, the Lilly Pulitzer design team

created as a work made for hire the original artwork Summer 2012 Z27 High
Tide Toile (the High Tide Design), shown below. A complete copy of the
deposit material filed with the Copyright Office is attached as Exhibit A.

16.

The High Tide Design is an original work of authorship embodying

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 6 of 18

copyrightable subject matter, subject to the full protection of the United States
Copyright Act.
17.

Sugartown is the sole and exclusive owner to all right, title, and

interest in and to the copyrights in the High Tide Design.


18.

Sugartown duly registered the copyright in the High Tide Design with

the United States Copyright Office. A copy of registration certificate VAu 1-091128, issued November 30, 2011 and reflecting Sugartowns ownership of the U.S.
copyright in the High Tide Design, is attached hereto as Exhibit B.
19.

Sugartown designed, manufactured, advertised, and widely distributed

fashion apparel and accessory products bearing the High Tide Design,
commencing in 2012.
20.

Sugartowns advertising included depictions of the High Tide Design

on the Lilly Pulitzer website and in catalogs. The High Tide Design was sold in
Lilly Pulitzer stores throughout the country.
21.

In or around the summer of 2013, the Lilly Pulitzer design team

created as a work made for hire the original artwork titled Summer 2014 HA7
Sparks Fly Glow (the Sparks Fly Design), shown below:

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 7 of 18

The gold color in the above image reflects the glow-in-the-dark quality of the
fireworks. When printed on a product, the fireworks appear white, as shown in the
below print:

22.

The Sparks Fly Design is an original work of authorship embodying

copyrightable subject matter, subject to the full protection of the United States
Copyright Act.

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 8 of 18

23.

Sugartown is the sole and exclusive owner to all right, title, and

interest in and to the copyrights in the Sparks Fly Design.


24.

Sugartown duly registered the copyright in the Sparks Fly Design with

the United States Copyright Office. A copy of registration certificate VAu 1-153421, issued November 26, 2013 and reflecting Sugartowns ownership of the U.S.
copyright in the Sparks Fly Design, is attached hereto as Exhibit C.
25.

Sugartowns advertising included depictions of the Sparks Fly Design

on the Lilly Pulitzer website and in catalogs. The Sparks Fly Design was sold in
Lilly Pulitzer stores throughout the country.
26.

Sugartown designed, manufactured, advertised, and widely distributed

products bearing the Sparks Fly Design, commencing in 2014. Certain products
displayed the design in essentially the form depicted above, i.e., with red boats and
white fireworks against a dark blue background. Other products depicted the
design in a different color scheme with blue boats and multi-colored fireworks
against a white background, an example of which is shown below:

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 9 of 18

27.

Sugartowns products made from its copyrighted High Tide Design

and Sparks Fly Design are popular and commercially successful; they have
acquired substantial market value in the trade.
B.

Defendants Unlawful Activities


28.

On information and belief, Defendants had access to the High Tide

Design and Sparks Fly Design, both of which were widely advertised and sold in
Lilly Pulitzer stores across the country and on the Lilly Pulitzer website.
29.

On information and belief, Defendants have manufactured, imported,

sold, offered for sale, advertised, promoted and/or distributed products, namely
fashion apparel and accessories, bearing a design copied from and substantially
similar to the High Tide Design. Examples of such products are shown below:

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 10 of 18

A side-by-side comparison of the High Tide Design on Sugartowns product and


Old Navys product is shown below:

Lilly Pulitzer

30.

Old Navy

On information and belief, Defendants also have manufactured,

imported, sold, offered for sale, advertised, promoted, and/or distributed products,
namely fashion apparel and accessories, bearing a design copied from and
substantially similar to the Sparks Fly Design. Examples of such products are
shown below:

10

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 11 of 18

A side-by-side comparison of the Sparks Fly Design on Sugartowns product and


Old Navys product is shown below:

Lilly Pulitzer

31.

Old Navy

Defendants also have manufactured, imported, sold, offered for sale,

advertised, promoted, and/or distributed products, namely fashion apparel and


accessories featuring an alternate version of the Sparks Fly Design. Examples of
such products are shown below:

11

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 12 of 18

32.

Sugartown is the exclusive owner of the right to reproduce the High

Tide Design and the Sparks Fly Design in the United States, and Sugartown has
not authorized Defendants actions.
33.

On information and belief, Defendants began to market and sell their

products depicted in paragraphs 29-31 above in 2015, after Sugartown had publicly
advertised, sold, and distributed its fashion apparel and accessories featuring the
High Tide Design and the Sparks Fly Design.
34.

On information and belief, Defendants infringement of Sugartowns

copyrights in the High Tide Design and the Sparks Fly Design is willful,
intentional, and deliberate, and was accomplished with the intent to reap the
benefits of Sugartowns original artworks.
35.

Indeed, the similarities between the infringing Old Navy designs and

12

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 13 of 18

Sugartowns copyrighted High Tide Design and Sparks Fly Design are so striking
that consumers and commentators have remarked upon them, referring to the
infringing designs as Lilly Pulitzer copies, dupes, or knock offs. Examples
of blog posts are shown below:

13

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 14 of 18

Attached as Exhibit D are the full webpage printouts for the above sample blog
posts, and representative others.
36.

The natural, probable, and foreseeable result of Defendants wrongful

conduct has been and continues to be to deprive Sugartown of the benefits of its
exclusive right to reproduce, distribute, and display products incorporating its
copyrighted designs, or modifications thereof.
CLAIM FOR RELIEF
37.

Sugartown repeats and incorporates by reference the allegations

14

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 15 of 18

contained in the preceding paragraphs.


38.

Through the conduct described above, Defendants have infringed

Sugartowns exclusive copyright rights in the High Tide Design and in the Sparks
Fly Design.
39.

Through their infringing acts, Defendants have made profits and gains

to which they are not entitled in law or equity.


40.

Defendants infringements of Sugartowns copyright rights in the

High Tide Design and in the Sparks Fly Design have damaged and will continue to
damage Sugartown.
41.

Defendants infringements of Sugartowns copyright rights in the

High Tide Design and in the Sparks Fly Design have caused and will continue to
cause irreparable harm to Sugartown, for which Sugartown has no adequate
remedy at law.
PRAYER FOR RELIEF
Sugartown therefore prays that:
1.

Defendants and their agents, officers, employees, representatives,

successors, assigns, attorneys, parents, subsidiaries, affiliates, and all other persons
acting for, with, by, through, or under authority from Defendants, or in concert or
participation with Defendants, and each of them, be permanently enjoined, from

15

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 16 of 18

reproducing, making, reprinting, modifying, publishing, displaying, manufacturing,


selling, offering for sale, promoting, advertising, distributing and/or commercially
exploiting in any manner, either directly or indirectly, any products or other
materials on which are imprinted or which display unauthorized copies of the High
Tide Design or the Sparks Fly Design or any design substantially similar thereto;
2.

Defendants be ordered to destroy all products, signs, labels,

brochures, advertising, web sites, promotional materials, and/or other materials in


Defendants possession or control, which, if sold, distributed, or used in any way
would violate paragraph 1 immediately above;
3.

Sugartown recover its actual damages caused by Defendants conduct

and all profits derived from Defendants infringing acts in an amount to be


determined at trial of this action; or in lieu of such damages and profits, should
Sugartown so elect, Sugartown be awarded statutory damages, as provided by 17
U.S.C. 504(c);
4.

Defendants be required to pay to Sugartown the costs of this action

and Sugartowns reasonable attorneys fees; and


5.

Sugartown be provided such other relief as this Court may deem just

and proper.

16

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 17 of 18

JURY TRIAL DEMAND


Sugartown respectfully demands a trial by jury on all claims and issues so
triable.
Respectfully submitted, this 24th day of July, 2015.
/s/ James Trigg
Candice Decaire, GA Bar No. 209815
James Trigg, GA Bar No. 716285
Crystal Genteman, GA Bar No. 294382
Kilpatrick Townsend & Stockton LLP
1100 Peachtree Street
Suite 2800
Atlanta, Georgia 30309-4528
404-815-6500 (ph.)
404-815-6555 (fax)
Attorneys for Plaintiff Sugartown
Worldwide LLC

17

Case 1:15-cv-02633-ELR Document 1 Filed 07/24/15 Page 18 of 18

IN THE UNITED STATES DISTRICT COURT


FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
SUGARTOWN WORLDWIDE LLC,
Plaintiff,
v.
OLD NAVY (APPAREL), LLC,
OLD NAVY, LLC, and THE GAP,
INC.,

)
)
)
)
)
) Civil Action No.
)
)
)
)

Defendants.

CERTIFICATE OF COMPLIANCE
Pursuant to Local Rule 7.1D, the attached pleading complies with the font
and point selections prescribed by Local Rule 5.1B and uses 14 point Times New
Roman Font.

/s/ James Trigg


James Trigg