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1 VIJAY K. TOKE (CA Bar No.

215079)
(vijay@cobaltlaw.com)
2 COBALT LLP
918 Parker Street, Bldg. A21
3 Berkeley, CA 94710
Telephone: (510) 841-9800
4 Facsimile: (510) 295-2401
5 DAVID B. OWSLEY II (to be admitted pro hac vice)
(dowsley@stites.com)
6 STITES & HARBISON PLLC
400 West Market Street, Suite 1800
7 Louisville, KY 40202-3352
Telephone: (502) 587-3400
8 Facsimile: (502) 587-6391
9 Attorneys for Plaintiffs
TECH 21 UK LIMITED and
10 TECH 21 LICENSING LIMITED
11

UNITED STATES DISTRICT COURT


NORTHERN DISTRICT OF CALIFORNIA

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14 TECH 21 UK LIMITED, a UK company and


TECH 21 LICENSING LIMITED, a UK
15 company,
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Case No.: 3:16-cv-07147


COMPLAINT FOR:

Plaintiffs,

(1) Trade Dress Infringement (15


U.S.C. 1125(a))

v.

(2) False Designation of Origin (15


U.S.C. 1125(a))

18 RUBICON VENTURES LLC, a Massachusetts


limited liability company,
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Defendant.
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(3) Trade Dress Infringement


(California Common Law)

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(4) Unfair Business Practices (Cal.


Bus. & Prof. Code 17200)

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(5) Design Patent Infringement (35


U.S.C. 271 & 289)

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DEMAND FOR JURY TRIAL

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COMPLAINT

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2

COMPLAINT
Plaintiffs Tech 21 UK Limited and Tech 21 Licensing Limited (collectively Tech21) by

3 counsel, for their complaint against Defendant Rubicon Ventures L.L.C. (Rubicon), state as
4 follows:
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6

PARTIES
1.

Tech 21 UK Limited and Tech 21 Licensing Limited are UK companies with their

7 principal place of business located in Twickenham, England, and with their primary United States
8 business office located at 3031 Tisch Way, Suite 900, San Jose, California 95128. Tech21 UK
9 Limited is the parent company of Tech 21 Licensing Limited.
10

2.

Rubicon Ventures LLC is a Massachusetts limited liability corporation with a

11 principal place of business located in West Springfield, Massachusetts.


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JURISDICTION AND VENUE


3.

This Court has original jurisdiction to adjudicate the Lanham Act and Patent Act

14 claims in this action pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1331 and 1338, and has
15 pendent jurisdiction to adjudicate the remaining claims pursuant to 28 U.S.C. 1338. This Court
16 also has supplemental jurisdiction under 28 U.S.C. 1367 over the state law claims.
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4.

Venue is proper in this Court pursuant to 28 U.S.C. 1391. Tech21 has an office in

18 this District. The San Jose office is the primary business office for Tech21 in the United States and
19 is in proximity to the Silicon Valley offices of phone case manufacturers and strategic partners of
20 Tech 21 UK Limited. On information and belief, Rubicons infringing products are sold or have
21 been offered for sale within this District. Defendant is subject to personal jurisdiction in this
22 District.
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INTRADISTRICT ASSIGNMENT
5.

Pursuant to Civil L.R. 3-2(c) and General Order No. 44, this case is properly

25 assigned to any division of this Court, except that pursuant to Civil Local Rules 3-2(g) and 73-1,
26 Plaintiff does not consent to assignment to a Magistrate Judge residing in the Eureka Division.
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COMPLAINT

1
2

FACTS
6.

This is an action for willful trade dress infringement, unfair competition, and willful

3 design patent infringement under the Lanham Act, California law, and the Patent Act.
4

7.

Tech21 is an industry leader and pioneer in designing protective cases for smart

5 phones, with a top three market share in the United States. Tech21 is the fastest growing major
6 phone case manufacturer in the United States.
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8.

For nearly a decade, Tech21s cases have contained Impact Strips that run along

8 the internal perimeter of its cases. The Impact Strips use advanced materials, such as Flexshock,
9 formulated to dissipate force. Initially, Tech21s designs included Impact Strips that were not
10 externally visible to consumers.
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9.

In late 2010, Tech21 developed a design aesthetic intended to visually display and

12 foster brand association with the signature strips. Rather than obscure the presence of the strips
13 through opaque materials, the new design made the outer edges of the case transparent or
14 translucent with the internal strips visible through the outer layer and highlighted with an offsetting
15 color. The photograph below demonstrates the launch of Tech21s trade dress:
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COMPLAINT

10.

Specifically, Tech21s distinctive and non-functional trade dress for a stylized smart

2 phone case is comprised of translucent or transparent material that contains colored inserts aligned
3 within the perimeter of the case that are visible through the outer layer of the case (the Trade
4 Dress) and has become exclusively associated with Tech21. Tech21 has marketed and sold phone
5 cases bearing the Tech21 Trade Dress for cases across phone types since at least as early as 2011.
6

11.

Tech21s Trade Dress distinguishes Tech21 cases from competitors and makes them

7 instantly recognizable.
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12.

Tech21s Trade Dress is non-functional and has acquired secondary meaning.

13.

Examples of Tech21 products launched in 2014 for the iPhone 6 appear below:

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Tech21s Classic Check for the iPhone 6

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COMPLAINT

Tech21s Evo Mesh for the iPhone 6

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Tech21s Classic Impact Frame for the iPhone 6

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COMPLAINT

Tech21s Classic Shell for the iPhone 6

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Tech21s Evo Check for the iPhone 6

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COMPLAINT

14.

Tech21s Trade Dress has acquired distinctiveness, is broadly known, and has

2 become exclusively associated with Tech21 through Tech21s substantially exclusive and
3 continuous use in commerce in connection with phone cases. Tech21s Trade Dress has been in
4 continuous, extensive, and exclusive commercial use in connection with Tech21s products for
5 approximately 5 years.
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15.

There are many examples of commentators acknowledging that Tech21s distinctive

7 look stands out from the crowd, and the visibility of the strips is prominently featured in
8 packaging and marketing material. For example, an article published May 24, 2012 titled Tech21
9 Launches Unique Line Of iPhone Cases In U.S. (http://appadvice.com/appnn/2012/05/tech2110 launches-unique-line-of-iphone-cases-in-u-s) states: At the core of Tech21s unique approach to
11 device protection is their signature Impact Band. This orange strip inside helps absorb impact at the
12 molecular level, using a non-Newtonian polymer (like cornstarch and water) that has the strength of
13 Otterbox, but with a significantly different design.
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16.

Another example is a customer review published on www.amazon.com that states, I

15 also like the fact that it is easily recognizable, as compared to other phone cases that you see in use
16 everywhere in the wild (OtterBox, Case-Mate, Ballistic, Body Glove, Incipio, Seidio, Noreve,
17 etc.) When my phone is on the table with others, it is immediately recognizable.
18 (http://www.amazon.com/Tech21-Impact-Mesh-Samsung-Galaxy/products19 reviews/B00DSNQ2BW).
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17.

Tech21s Trade Dress of a transparent or translucent case with colored strips within

21 and running along the perimeter of the case and visible through the outer layer is a non-functional
22 visual design aesthetic meant to signal the presence of, and display, Tech21s signature Impact
23 Strips and thus cement the products association with Tech21s unique brand of cases across
24 multiple distinct product designs for various electronic devices. Tech21s Trade Dress is not
25 functional because the combination of decorative design elements is not essential to the use of the
26 phone case, and alternative designs can have the same function. There is no utilitarian function for
27 this combination of transparency and offsetting color. These design elements are meant to
28 distinctively display, and foster the brand association with Tech21s signature embedded Impact
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COMPLAINT

1 Strips. A phone case can serve the same protective function without using the combination of
2 design elements at issue. Tech21s pre-2011 opaque black cases with Impact Strips, for example,
3 demonstrate an alternative phone case design that has identical functionality without the aesthetic
4 design elements at issue. Any shock-absorbing functions of Tech21s cases are separate and apart
5 from Tech21s distinctive Trade Dress, as demonstrated by Tech21s earlier products that did not
6 display the Trade Dress.
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18.

Below is a picture, taken from the abovementioned article Tech21 Launches Unique

8 Line Of iPhone Cases In U.S., illustrating Tech21s Trade Dress within a prior case design for an
9 earlier version of the iPhone in 2012.
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19.

Tech21 is a global strategic partner of Apple and its products are broadly sold in the

20 Apple Stores worldwide. For a period in 2014, the Tech21 Evo Mesh phone case, bearing the
21 Tech21 Trade Dress, was exclusively sold at the Apple Store and was the only non-OEM case sold
22 at Apple for the iPhone 6.
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20.

Tech21s products have also been sold across the United States at retail stores such

24 as Best Buy, Target, T-Mobile, Verizon, US Cellular, Apple, and Sprint.


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21.

Tech21 has achieved millions of dollars in sales in the United States of products

26 featuring the Tech21 Trade Dress.


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22.

Tech21 has been awarded multiple U.S. and foreign patents on its novel products,

28 including but not limited to U.S. Patent No. D747,708 (the 708 patent).
8
COMPLAINT

23.

The 708 patent was duly and legally issued by the United States Patent and

2 Trademark Office on January 19, 2016 and is valid and subsisting and in full force and effect.
3

24.

A true and correct copy of the 708 patent, which is incorporated herein by reference,

4 is attached as Exhibit A to this Complaint.


5

25.

Tech 21 Licensing Limited is the owner of all right, title, and interest in the 708

26.

At some point shortly before or after Apples release of the iPhone 7 and iPhone 7

6 patent.
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8 Plus on September 7, 2016, Defendant launched a product line called the Phantom line and sold
9 under the NIMBUS 9 name. The Phantom products (hereinafter the Infringing Phantom
10 Products) are deliberate copies of Tech21s Trade Dress and constitute a willful infringement of
11 that trade dress.
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27.

The photographs below show a side-by-side comparison of Tech21s distinctive

13 phone cases incorporating the Tech21 Trade Dress (on the left) and the Infringing Phantom
14 Products (on the right):
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COMPLAINT

28.

The Infringing Phantom Products feature all of the distinctive elements of Tech21s

2 Trade Dress, and these imitative phone cases are visually similar. Purchase of the Infringing
3 Phantom Products would result in consumer injury as a result of the substantially inferior quality of
4 such products.
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29.

The offering of the Infringing Phantom Products has been to the detriment and harm

6 of Tech21s brand and goodwill and has resulted in a likelihood of confusion as to source,
7 affiliation, or sponsorship between Defendants infringing phone cases and Tech21s Trade Dress,
8 and risks irreparable harm to Tech21s business, goodwill, and customer relationships.
9

30.

The 708 patent covers an ornamental design for a mobile communications device

10 cover. Tech21 has practiced the 708 patent in connection with the commercialization of at least its
11 Evo Mesh products, as shown for example below:
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708 patent

Tech21s Evo Mesh for iPhone 6

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31.

The Infringing Phantom Products have a design that is the same or substantially the

27 same as that of the 708 patent and at least Tech21s Evo Mesh products. The designs are so similar
28 as to be nearly identical such that an ordinary observer, giving such attention as a purchaser usually
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COMPLAINT

1 gives, would be so deceived by the substantial similarity between the designs as to be induced to
2 purchase the Infringing Phantom Products believing them to be substantially the same as the design
3 protected by the 708 patent.
4

32.

Upon receipt of a cease and desist letter, a representative of the Defendant, Andre

5 Mai, did not deny that the infringing products were imitative of Tech21s designs or that they
6 infringe Tech21s 708 patent. Mr. Mai sent an email to undersigned counsel stating only that
7 [t]he Phantoms have been removed from all sales and marketing channels.
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33.

Defendant claimed that it had stopped selling the infringing products, but failed to

9 provide confirmation and other information about the infringing activity that Tech21 demanded.
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34.

As of the filing of this complaint, the Infringing Phantom Products have not been

11 removed from all sales and marketing channels.


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35.

The Infringing Phantom Products are still being marketed and sold in channels

13 including but not limited to a business affiliate of Defendant and/or Defendants principals.
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COUNTS
36.

Tech21 incorporates by reference and hereby realleges as if fully set forth herein, the

16 above paragraphs for each of the following Counts.


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COUNT 1 - TRADE DRESS INFRINGEMENT

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(15 U.S.C. 1125(a))

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37.

Defendant has used in commerce trade dress that is confusingly similar to Tech21s

20 Trade Dress for mobile phone cases, and Defendants use of a trade dress confusingly similar to
21 Tech21s Trade Dress for mobile phone cases is likely to cause confusion, or to cause mistake, or to
22 deceive as to the affiliation, connection, or association of Defendant with Tech21, or as to the
23 origin, sponsorship, or approval of Defendants goods by Tech21 in violation of 15 U.S.C.
24 1125(a).
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38.

Defendants acts as alleged herein were and are committed with the intent to confuse

26 the public into thinking that there is an affiliation or association with or a sponsorship, or approval
27 of Defendants mobile phone cases by Tech21. Defendants acts of trade dress infringement have
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COMPLAINT

1 deceived consumers and are likely to continue to deceive a substantial segment of the consuming
2 public, which is likely to influence purchasing decisions.
3

39.

Defendants aforesaid acts were done with knowledge and in willful disregard of

4 Tech21s exclusive rights in the Trade Dress. Defendants acts have injured and continue to injure
5 Tech21 in an amount of damages to be proven at trial.
6

40.

Tech21 has been irreparably damaged and is continuing to be irreparably damaged

7 by Defendants willful infringement of Tech21s Trade Dress for which Tech21 has no adequate
8 remedy at law. Tech21 is entitled under Title 15 United States Code 1116 to an injunction against
9 Defendants continuing infringement.
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41.

Tech21 is entitled to an award of Defendants profits, damages caused by

11 Defendants actions, and the costs of this action under Title 15 United States Code 1117. Because
12 Defendants wrongful acts alleged herein are willful, this is an extraordinary case entitling Tech21
13 to treble damages and attorneys fees under Title 15 United States Code 1117(b).
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COUNT 2 FALSE DESIGNATION OF ORIGIN

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(15 U.S.C. 1125(a))

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42.

Defendant has used in commerce without Tech21s consent trade dress that is

17 confusingly similar to Tech21s Trade Dress for mobile phone cases. Defendants use of trade dress
18 confusingly similar to Tech21s Trade Dress for mobile phone cases is likely to cause confusion, or
19 to cause mistake, or to deceive as to the affiliation, connection, or association of Defendant with
20 Tech21, or as to the origin, sponsorship, or approval of Defendants goods by Tech21 in violation of
21 15 U.S.C. 1125(a).
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43.

Defendants acts as alleged herein were and are committed with the intent to confuse

23 the public into thinking that there is an affiliation or association with or a sponsorship or approval of
24 Defendants mobile phone cases by Tech21. Defendants acts of false designation of origin and
25 trademark infringement have deceived consumers and are likely to continue to deceive a substantial
26 segment of the consuming public, which is likely to influence purchasing decisions.
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COMPLAINT

44.

Defendants aforesaid acts were done with knowledge and in willful disregard of

2 Tech21s exclusive rights in its Trade Dress. Defendants acts have injured and continue to injure
3 Tech21 in an amount of damages to be proven at trial.
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45.

Tech21 has been irreparably damaged and is continuing to be irreparably damaged

5 by Defendants willful infringement of Tech21s Trade Dress for which Tech21 has no adequate
6 remedy at law. Tech21 is entitled under Title 15 United States Code 1116 to an injunction against
7 Defendants continuing infringement.
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46.

Tech21 is entitled to an award of Defendants profits, damages caused by

9 Defendants actions, and the costs of this action under Title 15 United States Code 1117. Because
10 Defendants wrongful acts alleged herein are willful, this an extraordinary case entitling Tech21 to
11 treble damages and attorneys fees under Title 15 United States Code 1117(b).
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COUNT 3 - TRADE DRESS INFRINGEMENT

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(CALIFORNIA COMMON LAW)

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47.

As alleged above, Defendant has engaged and is continuing to engage in acts of trade

15 dress infringement in violation of the common law of California.


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48.

The aforesaid acts by Defendant were committed with knowledge and in willful

17 disregard of Tech21s prior rights in its trade dress. Defendants acts have injured Tech21 in an
18 amount of damages to be proven at trial.
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49.

Defendants acts of unfair competition and trade dress infringement have caused and

20 will continue to cause financial damage to Tech21 and irreparable injury for which Tech21 has no
21 adequate remedy at law. Defendants acts have irreparably harmed Tech21 and will continue to
22 harm Tech21 unless enjoined by this Court.
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COUNT 4 - UNFAIR COMPETITION

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(CAL. BUS. & PROF. CODE 17200)

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50.

Defendant has attempted to encroach upon the business of Tech21 by use of

26 confusingly similar trade dress for mobile phone cases with the intention of misleading the public.
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COMPLAINT

51.

Defendants acts, as alleged above, constitute unlawful and/or unfair business

2 practices in violation of the California Unfair Competition Law (UCL), Cal. Bus. & Prof. Code
3 17200, et seq. Defendants acts are unlawful and/or unfair under the UCL.
4

52.

Defendants acts of unfair competition in the State of California have caused Tech21

5 irreparable injury. Unless said conduct is enjoined by this Court, Defendant will continue, and
6 expand, those activities to the continued and irreparable injury of Tech21.
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53.

The aforesaid acts by Defendant were committed with knowledge and in willful

8 disregard of Tech21s prior rights in Tech21s Trade Dress and marks. Defendants acts have
9 injured Tech21 in an amount to be proven at trial.
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54.

Defendants acts of unfair competition have caused and will continue to cause

11 financial damage to Tech21 and irreparable injury for which Tech21 has no adequate remedy at
12 law. Defendants acts have irreparably harmed Tech21 and will continue to harm Tech21 unless
13 enjoined by this Court. Defendants acts were, and are, willful, wanton, egregious, and with
14 disregard of Tech21s patent and trade dress rights and entitle Plaintiffs to punitive damages
15 commensurate with any damages award to Plaintiffs, in accordance with California law.
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COUNT 5 DESIGN PATENT INFRINGEMENT

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(35 U.S.C. 271 & 289)

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55.

Defendant has infringed and continues to infringe the 708 patent by, inter alia,

19 making, using, offering to sell, or selling in the United States or importing into the United States
20 products infringing the ornamental design covered by the 708 patent in violation of 35 U.S.C.
21 271 and 289, including but not limited to Defendants Infringing Phantom Products.
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56.

Defendants infringement of the 708 patent has been willful, wanton, egregious, and

23 with disregard of Tech21s patent rights and will continue unabated unless enjoined by this Court.
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57.

Unless the future occurrence of these actions is enjoined, Tech21 will suffer

25 irreparable injury for which there is no adequate remedy at law.


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58.

Tech21 is entitled to an award of Defendants profits, damages caused by

27 Defendants actions, and the costs of this action under Title 35 United States Code 284 and 289.
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COMPLAINT

59.

Because Defendants wrongful acts alleged herein are willful, this is an extraordinary

2 case entitling Tech21 to treble damages and attorneys fees under Title 15 United States Code
3 284 and 285.
4

PRAYER FOR RELIEF

WHEREFORE, Tech21 prays:

1.

That this Court enter a judgment that Defendants conduct violated Tech21s rights

7 under the Lanham Act, California law, and the Patent Act;
8

2.

That this Court grant temporary, preliminary, and permanent injunctive relief;

3.

That this Court enjoin Defendant, Defendants affiliates, agents, employees,

10 servants, parents, successors, and assigns, and all other persons acting in concert, participation or
11 combination with Defendant from using all designs and designations confusingly similar to, or
12 identical to Tech21s Trade Dress or other marks in any manner;
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4.

That this Court enjoin Defendant, Defendants affiliates, agents, employees,

14 servants, parents, successors, and assigns, and all other persons acting in concert, participation or
15 combination with Defendant from continued infringement of the 708 patent;
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5.

That Tech21 be awarded its actual damages;

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That Tech21 be awarded a disgorgement of all profits of Defendant and Defendants

18 affiliates in connection with the Infringing Phantom Products;


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That Tech21 be awarded the maximum damages available under the Lanham Act,

20 including treble damages;


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That Tech21 be awarded the maximum punitive damages available under California

9.

That Tech21 be awarded the maximum damages available under the Patent Act,

22 law;
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24 including Defendants total profit pursuant to 35 U.S.C. 289 and including treble damages
25 pursuant to 35 U.S.C. 284;
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That Tech21 be awarded prejudgment interest on said sums;

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That this Court require Defendant to pay Tech21s attorneys fees and costs;

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COMPLAINT

12.

That Tech21 be awarded post judgment interest on said sums at the legal judgment

2 rate from the date of the judgment;


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13.

That this Court grant Tech21 such other and further relief as it should deem just and

4 proper.
5 Dated: December 14, 2016

By:

Vijay K. Toke
COBALT LLP

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/s/ Vijay K. Toke____________

David B. Owsley II (to be admitted pro hac vice)


STITES & HARBISON PLLC
Attorneys for Plaintiffs
TECH 21 UK LIMITED and
TECH 21 LICENSING LIMITED

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COMPLAINT

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DEMAND FOR JURY TRIAL


Plaintiffs hereby demand a jury trial as provided by Rule 38(a) of the Federal Rules of Civil

3 Procedure.
4 Dated: December 14, 2016

By:

Vijay K. Toke
COBALT LLP

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/s/ Vijay K. Toke____________

David B. Owsley II (to be admitted pro hac vice)


STITES & HARBISON PLLC
Attorneys for Plaintiffs
TECH 21 UK LIMITED and
TECH 21 LICENSING LIMITED

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COMPLAINT