UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA

Transcription

1 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 1 of 10 PageID 1 Case No. UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA DAMOTECH INC., a Quebec corporation, v. Plaintiff, ALLLPOINTS WAREHOUSE EQUIPMENT COMPANY, a Florida corporation, ALAN D. BRIDGES, an individual, and Does Defendants. COMPLAINT For its complaint against Allpoints Warehousing Equipment Company and Alan D. Bridges and such other defendants as may be named (together, the Defendants ), plaintiff Damotech Inc. alleges as follows: PARTIES 1. Damotech Inc. ( Damotech ) is a company incorporated under the laws of the Province of Quebec, Canada with principal offices located at 3525 Grande Allee Blvd., Boisbriand, Quebec. 2. On information and belief, Allpoints Warehousing Equipment Company ( Allpoints ) is a corporation organized under the laws of the State of Florida, with principal offices located at 5210 Causeway Blvd., Tampa, FL. 3. On information and belief, Alan D. Bridges ( Bridges ) is, and at all materials times was, the principal of Allpoints. 4. Plaintiff is ignorant of the true names capacities of defendants sued here and as

2 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 2 of 10 PageID 2 Does 1 through 100, inclusive, and therefore sues these defendants by these fictitious names. Plaintiff will amend this complaint to allege their true names and capacities when ascertained. Plaintiff is informed and believes and thereon alleges that each of the fictitiously named defendants is responsible in some manner for the occurrences herein alleged, and that plaintiff s damages as herein alleged were proximately caused by those defendants. 5. Plaintiff is informed and believes and thereon alleges that at all times material to this complaint, each of the Defendants, in addition to acting for himself, herself, or itself and on his, her or its own behalf individually, is and was acting as the agent, servant, employee and representative of, and with the knowledge, consent and permission of, and in conspiracy with, each and all of the Defendants and within the course, scope and authority of that agency, service, employment, representation, and conspiracy. Plaintiff further alleges on information and belief that the acts of each of the Defendants were fully ratified by each and all of the Defendants. Specifically, and without limitation, plaintiff alleges on information and belief that the actions, omissions, breaches, conspiracy, and misrepresentations alleged herein and attributed to one or more of the specific Defendants were approved, ratified, and done in cooperation and knowledge of each and all of the Defendants. JURISDICTION AND VENUE 6. This is an action arising under the patent and trademark laws of the United States, Titles 35 and 15, United States Code. Jurisdiction as to these claims is conferred on this Court by 28 U.S.C and Venue is proper in the middle District of Florida under 28 U.S.C and 1400(b). 8. This court has personal jurisdiction over AllPoints and Bridges because they conducted, and continue to conduct business within the State of Florida and within this judicial district. 9. AllPoints makes, distributes, offers for sale or advertises its products and services in the United States, the State of Florida and this judicial district. 2

3 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 3 of 10 PageID 3 BACKGROUND 10. Damotech is a pioneer and a leading manufacturer of rack repair systems. These repair systems are used to repair large rack storage systems, such as those used in large warehouses. These storage systems are often damaged by heavy machinery, such as forklifts, which are used in day-to-day operations. The repair systems designed and manufactured by Damotech are used over the damaged structure of the racks, and thereby obviate the need for a complete replacement of the rack which could be very costly and cumbersome. 11. The founder of Damotech, Dany Dion, spent considerable time and effort in pursuing an intellectual property portfolio in the United States in order to protect his inventions and trademarks. Commencing in 2001, Mr. Dion filed and received five United States patents concerning his rack repair systems, including 6,298,537 (pallet rack repair system) and 6,405,884 (pallet rack reinforcement unit) (together, the Damotech Patents ). 12. Damotech is the owner, by assignment, of the Damotech Patents. 13. In addition to its patents, Damotech owns a United States federally registered trademark, serial number for DAMO PRO (the Registered Mark ). In addition, Damotech uses its trade name as a common law trademark to carry out its business of designing and manufacturing high quality, innovative storage rack technologies. Together, the Registered Mark and Damotech are referred to hereinafter as the Marks. 14. Commencing in 1999, Allpoints started distributing Damotech products pursuant to distribution contract that permitted AllPoints to distribute Damotech products and use the Marks in the state of Florida (the Distribution Agreement ). The Distribution Agreement was executed by Bridges on behalf of Allpoints, and Section 2 of the Distribution Agreement specifically noted that the products to be distributed were the subject of at least one Canadian patent, and at least one pending United States patent application. A copy of the Distribution Agreement is attached hereto as Exhibit A. That agreement was terminated in December In June 2010, Damotech became aware that Allpoints was operating a website at 3

4 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 4 of 10 PageID 4 which publicly advertised AllPoints as selling Damo Pro rack repair systems. A copy of the screen shot taken from Allpoints web page on June 21, 2010 is attached hereto as Exhibit B. 16. At some time after June 21, 2010, Allpoints re-organized its website, which is now called Got-rack.com, which shows that Allpoints continues to be involved in the manufacture, sale and servicing of storage rack solutions, including rack repair systems. Exhibit C hereto is a screenshot from the Pallet Rack Repair page of Got-rack.com which displays one of the rack repair systems manufactured and/or sold by Allpoints, called a Recon Kit. The Recon Kit, together with various other accessories sold by AllPoints, are referred to hereinafter as the Accused Products. 17. Allpoints sells the Accused Products throughout various states, including Florida, North Carolina, Kansas and Missouri. COUNT 1 (Infringement of the 537 Patent) (Against all Defendants) 18. Damotech hereby re-alleges the allegations set forth in the paragraphs above and 19. On October 9, 2001, United States Patent Number 6, 298, 537 ( the 537 Patent ) entitled Pallet Rack Repair System was duly and legally issued to Dany Dion by the United States Patent and Trademark Office. Damotech is the owner of the entire right, title and interest in and to the 537 Patent. A true and correct copy of the 537 patent is attached as Exhibit D to this complaint. 20. Through its manufacture and sale of the Accused Products, Allpoints actively and knowingly has infringed and is infringing the 537 patent with knowledge of Damotech's patent rights and without reasonable basis for believing that Allpoints conduct was lawful. Allpoints has also induced and contributed to the infringement of the 537 patent by purchasers and users 4

5 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 5 of 10 PageID 5 of the Accused Products and is continuing to induce and contribute to the infringement of the 537 patent by purchasers and users in reckless disregard of Damotech's patent rights. Allpoints is thus liable to Damotech for infringement of the 537 patent pursuant to 35 U.S.C Defendant Bridges is liable for actively inducing Allpoints into infringing the 537 Patent, as he is the principal of Allpoints and knowingly caused the infringing conduct complained of herein. COUNT 2 (Infringement of the 884 Patent) (Against Allpoints) 22. Damotech hereby re-alleges the allegations set forth in the paragraphs above and 23. On April 6, 2004, United States Patent Number 6,405,884 ( the 884 Patent ) entitled Pallet Rack Reinforcement Unit was duly and legally issued to Dany Dion by the United States Patent And Trademark Office. Damotech is the owner of the entire right, title and interest in and to the 884 Patent. A true and correct copy of the 884 Patent is attached as Exhibit E to this complaint. 24. Through its manufacture and sale of the Accused Products, Allpoints actively and knowingly has infringed and is infringing the 884 Patent with knowledge of Damotech's patent rights and without reasonable basis for believing that Allpoints conduct was lawful. Allpoints has also induced and contributed to the infringement of the 884 patent by purchasers and users of the Accused Products and is continuing to induce and contribute to the infringement of the 884 Patent by purchasers and users in reckless disregard of Damotech's patent rights. Allpoints is thus liable to Damotech for infringement of the 884 patent pursuant to 35 U.S.C

6 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 6 of 10 PageID 6 COUNT 3 (Trademark Infringement Counterfeiting under 15 U.S.C ) (Against All Defendants) 25. Damotech hereby re-alleges the allegations set forth in the paragraphs above and 26. Sometime in the past and continuing through the present, Allpoints has been and is engaged in the systematic pattern of misusing and exploiting the Marks. Aware of Damotech s reputation for high quality products, Allpoints has set out to confuse consumers as to the relationship between it and Damotech. 27. Damotech is informed and believes, and on that basis alleges, that AllPoints has, with actual and constructive notice of the Marks, marketed and sold substantial quantities of the Accused Products by virtue of their infringement of the Marks, and have obtained and continue to obtain profits from these sales. 28. Such actions by Allpoints have caused, and are likely to continue to cause, confusion and mistake by customers who have been, and will continue to be, led to believe that Allpoints Accused Products are genuine Damotech products. Allpoints conduct constitutes infringement, contributory infringement with others, and counterfeiting under federal law. 29. Allpoints actions have caused and will continue to cause Damotech irreparable harm for which money damages and other remedies are inadequate. Unless AllPoints is restrained by this court, AllPoints will continue and/or expand the illegal activities alleged in the Complaint and otherwise continue to cause great irreparable damage and injury to Damotech through, among other things: (a) depriving Damotech of its statutory and common-law rights to use and control its trademarks and patented products; (b) creating a likelihood of confusion, mistake and deception among consumers and the trade as to the source of defendants products; (c) causing the public to falsely associate Damotech with AllPoints or vice versa; (d) causing irreparable damage to Damotech's goodwill and its trademarks; and (e) causing Damotech to lose sales of its genuine products. 6

7 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 7 of 10 PageID Accordingly, in addition to other relief sought, Damotech is entitled to permanent injunctive relief against AllPoints, its officers, agents, employees and all persons acting in concert with it. 31. As a direct and proximate result of the activities as alleged above, Damotech has suffered damage. Unless Allpoints is restrained by this Court, Allpoints will continue and/or expand the legal activities alleged above, by infringing and counterfeiting the products and otherwise continue to cause great irreparable damage and injury to Damotech. 32. Allpoints infringement, contributory infringement with others, and counterfeiting of the Damotech products as alleged herein is an exceptional case and was willful and intentional. Allpoints has passed-off the counterfeit products knowing that they are not genuine. This exceptional intentional infringement has damaged Damotech as described above, entitling Damotech treble actual damages or Allpoints profits, and to an award of costs and attorneys fees under 15 U.S.C Alternatively, Damotech is entitled to the maximum statutory damages, including damages in an amount up to $1 million per counterfeit mark, and Damotech will make its election at the appropriate time under the statute. COUNT 4 (Trademark Infringement 15 U.S.C ) (Against All Defendants) 33. Damotech hereby re-alleges the allegations set forth in the paragraphs above and 34. Without Damotech s consent, AllPoints has used, in connection with the sale, offering for sale, distribution, marketing or advertising of the Accused Products, the Registered Mark, which constitutes infringement of the Registered Mark. 35. These acts of trademark infringement have been committed with the intent to cause, and are likely to cause, confusion, mistake or deception that are in violation of 15 U.S.C

8 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 8 of 10 PageID As a direct and proximate result of AllPoints infringing activities as alleged herein, Damotech has suffered substantial damage. 37. The trademark infringement alleged herein is an exceptional case and was intentional. Such exceptional intentional infringement has damaged Damotech as described in this complaint, entitling Damotech to treble actual damages and an award of attorney's fees under 15 U.S.C COUNT 5 (FLORIDA COMMON LAW TRADEMARK INFRINGEMENT) (Against All Defendants) 38. Damotech hereby re-alleges the allegations set forth in the paragraphs above and 39. Allpoints conduct constitutes the unauthorized use in commerce of a reproduction, counterfeit or colorable imitation of the Marks in connection with the sale, offer for sale, or advertising of goods and services. This use causes confusion, mistake, or deception in violation of Damotech s common law trademark rights. 40. Allpoints status as a former distributor of Damotech products demonstrates that Allpoints infringement have been committed deliberately, willfully and maliciously, without regard for Damotech s property rights with the intent to cause confusion, mistake or deception. 41. Defendants wrongful acts are the proximate cause, and continue to cause, Damotech substantial and irreparable injury including usurpation of goodwill, confusion of potential customers, and injury to reputation. COUNT 6 (FLORIDA UNFAIR COMPETITION) (Against All Defendants) 42. Damotech hereby re-alleges the allegations set forth in the paragraphs above and 43. Allpoints conduct is likely to cause confusion, mistake or deception by or in the 8

9 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 9 of 10 PageID 9 public as to the affiliation, association, origin or approval of the Accused Products to the detriment of Damotech and constitutes unfair competition under Florida common law. 44. AllPoints wrongful acts have proximately caused, and continue to cause Damotech substantial and irreparable injury, including usurpation of goodwill, confusion of potential customers, and injury to reputation. PRAYER FOR RELIEF WHEREFORE, Damotech prays for judgment as follows: A. Entry of judgment holding Defendants liable for infringement of the Damotech Patents and Marks; B. An order permanently enjoining Allpoints, its officers, agents, servants, employees, and affiliated companies, its assigns and successors in interest, and those persons in active concert or participation with it, from continued acts of infringement of the Damotech Patents and Marks; C. An order awarding Damotech statutory damages and damages according to proof resulting from Allpoints infringement of the DamoTech Patents and Marks, together with prejudgment and post-judgment interest; D. An order requiring Defendants to account for any profits that are attributable to their illegal acts complained of herein and that Damotech be awarded all such amounts, as permitted by law; E. Trebling of damages under 35 U.S.C. 284 in view of the willful and deliberate nature of Defendants infringement of the Damotech Patents; F. Trebling of damages under 15 U.S.C in view of the willful and deliberate nature of Defendants infringement of the Registered Mark; G. An order awarding dated Damotech its costs and attorneys fees under 35 U.S.C. 285 and 15 U.S.C. 1117; and 9

10 Case 8:10-cv VMC-AEP Document 1 Filed 08/31/10 Page 10 of 10 PageID 10 H. Any and all other relief as may be available and which the court may deem proper. Respectfully submitted, NARANCIC & KATZMAN, PC /s/ Perry J. Narancic By: Perry J. Narancic (CA Bar # ) Dated: Augsut 30, Sharon Park Drive, #736 Menlo Park, CA Attorneys for NAIC Tel: Fax: pnarancic@nk-pc.com Trial Counsel for Plaintiff Damotech Inc. Local Counsel Thomas T. Steele, Atty. Florida Bar No Sarah M. Hammet Florida Bar No Steele Law Group, P.A. 201 E. Kennedy Boulevard, Suite 425 Tampa Florida (813)