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Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 1 of 12 PageID #: 98

UNITED STATES DISTRICT COURT


DISTRICT OF DELAWARE

MAYA SWIMWEAR, CORP. and


CAROLINA DINARDI, Civil Action No.: 1:11-cv-00059-UNA

Plaintiffs,

vs.

MAYA SWIMWEAR, LLC (D/B/A MAYA


SWIMWEAR USA); DAVID MCKINNEY,
and TODD FORD,

Defendants.

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SECOND AMENDED COMPLAINT
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Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi, by their attorneys, file
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this Complaint against the Defendants, alleging as follows:


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JURISDICTION AND VENUE


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1. This action essentially arises from Defendants continued infringement of

Plaintiffs trademark (and trade dress) pursuant to the Lanham Trademark Act 15 U.S.C.

§§ 1051 et seq. (the “Lanham Act”) from October 13, 2010 to the present. Accordingly,

this Court has federal question jurisdiction over the subject matter of this action pursuant

to 15 U.S.C. § 1221 and 28 U.S.C. §§ 1338(a), (b). Moreover, Defendant Maya

Swimwear, LLC, is a company organized under the laws of the State of Delaware, hence

venue in this district is proper under 28 U.S.C. § 1391(b).

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PARTIES

2. Plaintiff Maya Swimwear, Corp. (hereinafter “Maya Argentina”) is a

company organized under the laws of the State of Florida, with a registered address at:

7570 S. Federal Hwy, Suite 7, Hypoluxo, FL 33462.

3. Plaintiff Carolina Dinardi is the owner of Maya Swimwear, Corp., and has

an address at: Guatemala 6045 2 Piso Depto."5" C.P (1425) Capital Federal, Buenos

Aires. Argentina.

4. Maya Swimwear, LLC (d/b/a Maya Swimwear USA; hereinafter “Maya

USA”) is domiciled in Delaware at its registered agent’s (Corporation Trust Company)

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address: 1209 Orange Street, Wilmington, Delaware 19801.

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Upon information and belief, Defendant David McKinney is a
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Member/Member Manager of Defendant Maya Swimwear, LLC; he resides at: 305 West
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50th Street, Suite 22A, New York, New York 10019.


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6. Upon information and belief, Defendant Todd Ford is a Member/Member


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Manager of Defendant Maya Swimwear, LLC; he resides at: 635 Euclid Avenue, #106,
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Miami Beach, Florida 33159.

THE BACKGROUND OF THE ACTION

7. Plaintiffs repeat and reiterate each and every allegation contained in

Paragraphs 1-6 of the Complaint, and makes them a part hereof as if set forth at length

herein.

8. In 2002/2003 Plaintiff Carolina Dinardi designed a swimsuit collection,

collectively named Maya Swimwear; consisting of bikinis with a distinctive “Argentine

cut” in the derrière.

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9. Ms. Dinardi owns the Maya Swimwear trademark (including the

distinctive logo), the website: www.mayaswimwear.com, the swimsuit designs, and the

know-how of the manufacturing process of every particular style; she properly registered

the name and the logo she created in Argentina, and began to explore the possibility of

distributing her product in the USA and throughout the World.

10. In July of 2002, Ms. Dinardi presented her first collection in the United

States, in order to test the market and the acceptance of her designs. Ms. Dinardi

combined the very distinctive “Argentine cut” with the more conservative American

“cuts.”

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11. Ms. Dinardi received excellent feedback and so decided to start a business.

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She visited many stores and boutiques in the United States to show her product; she also
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sent samples and catalogues and made many contacts many of whom later became Maya
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swimwear clients.
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12. By the end of 2002, Ms. Dinardi had opened 39 new accounts in the
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United States. During this time, she formed Maya Swimwear Corp. in Florida so that she
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could begin to sell Maya bikinis in the States and also for the purpose of registering her

trademark there. Ms. Dinardi requested the domain name: www.mayaswimwear.com, on

October 30, 2002.

13. In or about July, September and October of 2002 Ms. Dinardi contacted

several boutiques in Florida, California, and New York, that bought her Maya Swimwear

collection.

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14. At that time, Carolina Dinardi initially used an American company to

import and implement sales and deliver the products in the States – Joe Market USA

LLC.

15. By 2003, the Maya Swimwear collection was recognized by many

customers and the fashion press; Ms. Dinardi also received accolades for her work as the

chief designer of the swimwear line. The acceptance and success of Ms. Dinardi’s design

in its first year, made her believe that the Maya swimwear brand had a promising future

ahead.

16. In 2003, Carolina Dinardi presented the 2004 collection at the Miami

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Trade Show with great success, opening new accounts in the process.

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That same year (in 2003) Defendant Todd Ford contacted Carolina
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Dinardi to make a business proposal. Previously, (in 2002), he had requested bikini
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samples from her. In September of 2003, he and his partner, Defendant David
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McKinney, traveled to Argentina to present a business proposal. Messrs. Ford,


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McKinney and Ms. Dinardi reached an agreement and signed a Letter of Intent
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(hereinafter “Maya LOI”) for the sale and distribution of Maya Swimwear bikinis in the

United States; under the Maya LOI, Messrs. Ford and McKinney’s company, Defendant

Maya USA was responsible for meeting certain sales goals in the first 24 months of the

association with Maya Argentina.

18. On or about October 1, 2003, Messrs. Ford and McKinney endeavored to

pursue existing Maya Argentina clients in the United States, with the promise to continue

the Maya line and improve sales. Ms. Dinardi provided them with a list of the names and

contacts of her current customers and also a list of potential customers that she had

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already contacted in 2002 and the first quarter of 2003 (in all, a total of approximately

160 stores including department stores such as Bloomingdales, Bergdorf Goodman,

Barneys). Additionally, Carolina Dinardi provided them with the personal phone

numbers and names of the buyers that contacted her at the 2003 Trade Show, and other

important potential customers that showed interest in her collection.

19. Ms. Dinardi filed for registration of the Maya Swimwear distinctive

trademark on April 20, 2004, receiving full registry of the mark on October 9, 2007

(Registration No.: 3306450); the mark had been in use in the United States since at least

the Fall of 2002 by then distributor Joe Market USA LLC).

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20. As a consequence of Maya USA not meeting any sales goals, the Maya

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LOI expired in October of 2005. Notwithstanding the same, Maya Argentina remained
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associated with Maya USA to continue to sell and market Maya Swimwear bikinis.
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21. Ms. Dinardi asked Messrs. Ford and McKinney several times to draft a
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new business contract with her for continued sales in the United States through Maya
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USA. As they both presented themselves as lawyers, knowledgeable in how to do so,


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Ms. Dinardi believed in their continued promises to put together such a new contract that

they said they were working on – year after year; though, none was ever forthcoming.

22. Despite the fact that the original Maya LOI had expired, and, there was no

new contract with Messrs. Ford and McKinney, Ms. Dinardi kept her business

relationship with them based solely upon past goodwill.

23. Throughout the relevant time period (from 2003 through to the present),

Ms. Dinardi continued to design and manufacture every Maya collection through her

company “Maya by Carolina Dinardi” and Maya Swimwear, Corp. She also traveled to

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Florida every year to present the collection at the Miami trade Show. Ms. Dinardi also

continued to meet and obtain customers by explaining to them the concept and every

detail related to the collection. She spoke with and followed-up on orders from

customers. She supported all her travel expenses, hotels, etc. on each and every visit.

24. Ms. Dinardi was the driving force behind the image of Maya Swimwear.

She continued to conduct photo shoots and designed the catalogues, first in Argentina

(until 2005), and thereafter in the USA. Ms. Dinardi traveled constantly to the United

States to mind the image of the brand and participated in the decision-making process of

all main issues in the continued sales and marketing of the Maya Swimwear product line.

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25. From 2003 to 2005, Maya Argentina, through Ms. Dinardi was funding all

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the photo-shoots in Argentina (hired models, hired photographers, etc.); additionally, Ms.
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Dinardi designed the Maya Swimwear catalog, paid for the printing of said catalog, and
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the launches; Maya USA paid the models.


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26. The Maya Swimwear brand became very well known as a consequence of
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various celebrities who chose to wear Ms. Dinardi’s designs. She procured many clients
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herself and she knew most of the buyers of the main customers of Maya Swimwear

because she personally showed them the collection each year, in trade show after trade

show, in order to maintain Maya Swimwear’s relationships (since 2002).

27. It should be noted that Maya USA, by and through Messrs. Ford and

McKinney, “booked” all trade shows for Maya Argentina, after the Maya LOI became

effective.

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28. Despite this recognition, sales plummeted (according to Maya USA and

Messrs. Ford and McKinney) through 2010. Sales in the United States, though, continued

to chiefly be the responsibility of Messrs. Ford and McKinney.

29. Then, in 2010, Messrs. Ford and McKinney failed to book a booth (and, of

course, a Maya presence) at the Miami Trade Show, as they had previously committed to

(and had done in the years prior), nor did they advise Ms. Dinardi (or therefore Maya

Argentina) of the same (despite her repeated inquiries) until it was too late for her to do it

herself.

30. The 2011 Maya Collection was not presented at the Miami Trade show for

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the first time since the brand was in business, thus causing great damage to the image of

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the brand, and compromising the continuity of the business.
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31. In the past six months preceding this action, Mr. Ford expressed his
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repeated his lack of interest in continuing to work for Maya USA, claiming that Ms.
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Dinardi was “a failure as a designer” and that “the mystique” he allegedly “created
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surrounding the brand had been lost.” Paradoxically, Mr. McKinney and he continued to
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illegally utilize the Maya Swimwear name brand name on www.buymaya.com until

January 11, 2011, and now again from January 19, 2011 to the present. Further, Maya

USA continues to market the Maya Swimwear brand on Twitter and Facebook and is

actively preparing a “launch” of products – Maya Argentina decided that the relationship

should end.

32. On or about October 13, 2010, Ms. Dinardi (and Maya Argentina) sent

Maya USA a letter memo officially severing ties to Maya USA and Messrs. Ford and

McKinney, ending any and all business relations with them predicated on the Maya LOI.

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33. Despite the October 13th Memo, Maya USA continued to market and sell

bikinis in the United States, bearing the Maya Trademark/tradedress, in violation of the

Lanham Act.

34. Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi, now bring this

action against Defendant Maya Swimwear, LLC, for an order declaring that from the

moment the Maya LOI was terminated and the business relationship between Maya

Argentina and Maya USA was severed, Defendant Maya Swimwear, LLC (d/b/a Maya

Swimwear, USA) and/or Messrs. Ford and McKinney (as officers, operators, owners,

and/or members of the same), have no ownership interests in, or rights to utilize, the

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Maya Swimwear trademark/tradedress and shall be enjoined from having any ownership

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interests in, or right to utilize the same in the future.
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FIRST COUNT
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(Declaratory judgment)
33. Plaintiffs repeat and reiterate each and every allegation contained in
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Paragraphs 1-32 of the Complaint, and makes them a part hereof as if set forth at length

herein.

34. Pursuant to Argentine law, Maya Argentina properly terminated the Maya

LOI with the Defendants on or about October 13, 2010.

35. Despite this fact, the Defendants continued to utilize the Maya Swimwear

Trademark/tradedress in the United States in violation of the Lanham Act.

36. Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi, seek a declaratory

judgment that since the Maya LOI was terminated and the business relationship between

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Maya Argentina and Maya USA has been severed, Defendant Maya Swimwear, LLC

(d/b/a Maya Swimwear, USA) and/or by inference Messrs. Ford and McKinney (as

officers, operators, owners, and/or members of the same), have no ownership interests in,

or rights to utilize, the Maya Swimwear trademark/tradedress.

SECOND COUNT

(Violation of the Lanham Act)

37. Plaintiffs repeat and reiterate each and every allegation contained in

Paragraphs 1-36 of the Complaint, and makes them a part hereof as if set forth at length

herein.

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38. For the foregoing reasons, Plaintiffs hereby assert a claim against
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Defendants for injunctive and monetary relief pursuant to Section 43(a) of the Lanham
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Act 15 U.S.C. §1125(a) with regard to the false designation of origin and false
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description and representations in commerce of Defendants’ unauthorized merchandise.


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THIRD COUNT
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(Infringement of Registered Trademark)


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39. Plaintiffs repeat and reiterate each and every allegation contained in

Paragraphs 1-38 of the Complaint, and makes them a part hereof as if set forth at length

herein.

40. For the foregoing reasons, Plaintiffs hereby assert a claim for injunctive

and monetary relief pursuant to 15 U.S.C. §1114(b) with respect to Defendants’

infringement of the registered trademark.

WHEREFORE, Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi

respectfully request that this Court enter an order as follows:

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A. A declaratory judgment finding that the Maya LOI has been terminated;

B. A declaratory judgment finding that Defendant Maya Swimwear, LLC

(d/b/a Maya Swimwear, USA) has no ownership interest(s) in the Maya Swimwear

Trademark/tradedress;

C. Injunctive relief in the form of a permanent injunction prohibiting

Defendants their agents, employees, officers, successors and assigns, in this and all other

judicial districts of the United States, from (1) manufacturing, selling, distributing,

offering, holding or advertising for sale any products, merchandise, or goods bearing the

name, trademark, or likeness of the Maya Swimwear Trademark/tradedress or any

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colorable variation or imitation thereof, and (2) representing that any products,
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merchandise, or goods manufactured, distributed, sold, held for sale, or advertised by
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them is sponsored or authorized by Plaintiffs in this District or any other district in which
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Plaintiffs seek to enforce this Court’s injunctive order.


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D. Injunctive relief in the form of a mandatory injunction mandating that


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Defendants deliver up for destruction any and all unauthorized products, merchandise, or
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goods manufactured or held for sale by them.

E. Awarding damages to Plaintiffs in an amount to be determined;

F. Awarding Plaintiffs their costs and expenses, including reasonable

attorney’s fees in connection with this action; and

G. Granting such other, further, and different relief as the Court may deem

just and proper.

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FOURTH COUNT

(Tortious Interference with Contractual Relations)

41. Plaintiffs repeat and reiterate each and every allegation contained in

Paragraphs 1-40 of the Complaint, and makes them a part hereof as if set forth at length

herein.

42. Plaintiffs hired a one Christina Pino as an employee in or about late

January, 2011.

43. Upon information and belief, Defendants had previously fired Ms. Pino in

early December of 2010.

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44. Ms. Pino was an employee “at-will,” and had no written contract of

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45. Ms. Pino signed no non-disclosure and/or confidentiality agreements with
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the Defendants.
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46. Ms. Pino signed no non-competition agreements with the Defendants.


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47. On February 3, 2011, Defendants threatened to sue Plaintiffs over their


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hiring of Ms. Pino. See letter, herewith attached as Exhibit “A.”

48. Moreover, on that same date, Defendants inappropriately threatened

criminal prosecution of Plaintiffs for said hire.

49. Additionally, on that same date, by letter under separate cover, Defendants

have threatened to interfere with Plaintiffs’ ongoing and relationships with existing

customers/buyers and/or prospective clients. See letter, herewith attached as Exhibit “B.”

50. Defendants are engaging in this conduct to interfere with and harass

Plaintiffs in their business pursuits and expectations.

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51. Defendants are also engaging in this conduct to cause Plaintiffs to expend

additional monies on frivolous litigation.

52. Defendants’ conduct is improper and tortiously interferes with Plaintiffs’

contractual relations with Ms. Pino and their ongoing and relationships with existing

customers/buyers and/or prospective clients.

WHEREFORE, Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi

respectfully request that this Court enter an order as follows:

A. Awarding damages to Plaintiffs in an amount to be determined;

B. Awarding Plaintiffs their costs and expenses, including reasonable

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attorney’s fees in connection with this action; and
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Granting such other, further, and different relief as the Court may deem just and
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proper.
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Elliott Greenleaf
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/s/ Neil R. Lapinski


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By: Neil R. Lapinski (DE No.3645)


1105 N. Market Street
Suite 1700
Wilmington, DE 19801
(302) 384-9400

Daniel G. P. Marchese, Esquire


The Marchese Law Firm, LLC
93 Spring Street, Suite 300
Newton, New Jersey 07860
(973) 383-3898

Attorney(s) for Plaintiffs Maya Swimwear, Corp. and


Carolina Dinardi

Date: February 3, 2011

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