Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 1 of 11

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1 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 1 of 11 SPIKER, INC. Plaintiff, IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF FLORIDA PENSACOLA DIVISION v. Civil Action No. TRACEE MARTIN, individually; OCCASIONALLY MADE, LLC; DARRAH & CO., LTD; and NOTEWORTHY PAPER, INC; Defendants. / COMPLAINT Plaintiff, Spiker (hereinafter SPIKER ), hereby files its complaint for damages against Defendants Tracee Martin (hereinafter MARTIN ), Individually, Occasionally Made, LLC (hereinafter OCCASIONALLY MADE ), Darrah & CO., LTD. (hereinafter DARRAH ) and Noteworthy Paper, Inc. (hereinafter NOTEWORTHY ) and alleges as follows: NATURE OF THE ACTION 1. Plaintiff, SPIKER, brings this action for infringement of U.S. Design Patent No. D657,633 ( the 633 Patent) under 35 U.S.C 271 and 289. A true and correct copy of the 633 Patent is attached hereto as Exhibit A. Defendants have engaged in the unauthorized making, using, selling and/or offering to sell in the United States, and/or importing into the United States of a plastic cup holder identified in this Complaint that embodies the design covered by the 633 Patent. 1

2 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 2 of 11 THE PARTIES 2. Plaintiff, SPIKER, is a Florida Corporation with its principal place of business in the Northern District at 755 Grand Boulevard, Suite B-105 #357, Miramar Beach, Florida Upon information and belief, Defendant, OCCASIONALLY MADE, LLC, is a Limited Liability Company organized under the law of the state of Virginia, with its principal place of business at 7027 Three Chopt Road, Suite 204, Richmond, VA Upon information and belief, Defendant, TRACEE MARTIN, is a principal of OCCASIONALLY MADE and is a moving, conscious and active force behind the infringing acts at issue and actively participates in and approves the acts and she resides in or near Richmond, Virginia. 5. Upon information and belief, Defendant, DARRAH & CO., LTD., is a Georgia corporation, with its principal office address at 230 Spring Street NW, Suite 1818, Atlanta, GA Upon information and belief, Defendant, NOTEWORTHY PAPER INC., is a Georgia corporation, doing business at 595 Flying Scot Way, Alpharetta, GA JURISDICTION AND VENUE 7. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C and 1338(a). 8. Defendants MARTIN and OCCASIONALLY MADE are subject to personal jurisdiction in the Northern District of Florida (the District ) because they have purposefully availed themselves of the privilege of conducting business in the state of Florida and in this District. Defendants MARTIN and OCCASIONALLY MADE design, manufacture (directly or 2

3 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 3 of 11 indirectly through third party manufacturers), import the infringing product, offer for sale, advertise, promote, and/or sell in the state of Florida and this Judicial District. Defendants have committed acts of patent infringement (directly or indirectly) in this Judicial District. 9. This District has personal jurisdiction over Defendants DARRAH and NOTEWORTHY because each of these Defendants continues to commit acts of infringement and places infringing products into the stream of commerce, with the knowledge and understanding that such products are sold in the State of Florida, including this District. The acts of the Defendants cause injury to the Plaintiff in this District. Upon information and belief, the Defendants derive substantial revenue from the interstate and international commerce. Defendants have committed acts of patent infringement in this Judicial District. 10. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c) because the Defendants transact business within this Judicial District and offer for sale in this Judicial District products that infringe the Plaintiff s patent. In addition, a substantial part of the events giving rise to the Plaintiff s claims occurred in this District. FACTUAL BACKGROUND 11. On April 17, 2012, the United States Patent and Trademark Office ( PTO ) duly and legally issued the 633 Patent, entitled Beach Beverage Holder, to inventor John Butler. 12. SPIKER, a family owned business located in Miramar Beach, Fl, is the owner of all right, title and interest in and to the 633 Patent by assignment from John Butler. 13. The claimed design of the 633 Patent is directed to the ornamental design for a beach beverage holder as shown in figures 1-7 and described in the accompanying figure descriptions (see Exhibit A ). 3

4 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 4 of Under 35 U.S.C. 282, the 633 Patent is presumed valid. 15. SPIKER manufactures and distributes the product embodying the ornamental design claimed in the 633 Patent under the name Spiker. See image of the product below. 16. Defendants MARTIN and OCCASSIONALLY MADE distribute and sell in this Judicial District, and import, manufacture, distribute and sell in the United States, beverage holders that fall within the scope of the claim of the 633 Patent, all in violation of 35 U.S.C. 271, et seq. MARTIN and OCCASSIONALLY MADE refer to their beverage holders as the Beach Buddy Cup Holder (hereinafter Beach Buddy ). An image of the infringing product is depicted below. 17. MARTIN is the alter ego, owner and operator of OCCASSIONALLY MADE. In January of 2014, MARTIN approached SPIKER in an attempt to negotiate an agreement to license the 633 Patent in order to lawfully manufacture, distribute, import and sell the Beach Buddy product. SPIKER refused to enter into any such agreement. However, MARTIN and 4

5 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 5 of 11 OCCASSIONALLY MADE continue to manufacture, distribute, import, and sell the infringing Beach Buddy product. Thus, continuing to willfully and intentionally manufacture, distribute and sell infringement products. 18. Defendants MARTIN and OCCASSIONALLY MADE manufacture, import, distribute and sell the infringing Beach Buddy product. OCCASSIONALLY MADE sells the Beach Buddy product online at distributes the product to various resellers and makes the product through various manufacturer representatives. Attached as Exhibit B is a true and correct screenshot of the website, offering for sale the infringing Beach Buddy product. 19. OCCASIONALLY MADE distributes the Beach Buddy product to Defendants DARRAH and NOTEWORTHY. 20. Defendant DARRAH sells and offers for sale the Beach Buddy product within this Judicial District. DARRAH distributes the OCCASSIONALLY MADE catalog at least at trade shows and via its website, In January of 2014 SPIKER informed DARRAH of the 633 Patent and that the beverage holder product being offered for sale by DARRAH was an infringing product. However, DARRAH continues to distribute and sell the infringing Beach Buddy product. 22. Defendant DARRAH offers for sale, and sells the infringing Beach Buddy at least via its online catalogs and through its sales representatives in this Judicial District. 23. Defendant NOTEWORTHY displays, advertises, offers for sale, and sells the infringing Beach Buddy product (falling within the scope of the claim of the 633 Patent) in this Judicial District and in the United States at least via their website 5

6 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 6 of 11 Attached as Exhibit C is a true and correct screenshot of the website, offering for sale OCCASIONALLY MADE s infringing BEACH BUDDY product. COUNT ONE: AGAINST DEFENDANT MARTIN FOR DESIGN PATENT INFRINGEMENT AND ACTIVE INDUCEMENT TO INFRINGE UNDER 35 U.S.C. 271, Plaintiff hereby incorporates by reference all prior allegations contained in this complaint to the extent they are not inconsistent with the claim set forth in this count. 25. Plaintiff is, and at all times relevant has been, the lawful owner of all right, title and interest in and to the 633 patent. 26. Defendant MARTIN makes, sells, offers for sale and imports a beverage holder product (the Beach Buddy product) that falls within the scope of the claim of the 633 Patent. A side by side comparison on the following page reveals the substantial similarity of the products. Defendant MARTIN has misappropriated the Plaintiff s patented Spiker product in the accused Beach Buddy product. 6

7 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 7 of 11 PLAINTIFF S D D657,633 PATENT THE SPIKER THE INFRINGING PRODUCT THE BEACH BUDDY CUP HOLDER 27. Defendant MARTIN had knowledge of the 633 Patent and as the owner and alter ego of Defendant OCCASSIONALLY MADE, actively and intentionally induced OCCASSIONALLY MADE to make, sell, offer for sale, distribute and import the infringing Beach Buddy product, in violation of 35 U.S.C. 271(b). 28. In violation of 35 U.S.C. 271, Defendant MARTIN is now, and has been, infringing and actively inducing the infringement of the 633 Patent by making, offering for sale, selling and/or importing the Beach Buddy product in the United States. 29. In violation of 35 U.S.C. 289, Defendant MARTIN is now, and has been, directly infringing the 633 Patent by applying the patented design of the 633 Patent, or the colorable imitation thereof, to an article of manufacture (the Beach Buddy product), for the purpose of sale and/or selling, offering, or exposing for sale an article of manufacture, including 7

8 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 8 of 11 the Beach Buddy, to which the patented design of the 633 Patent or a colorable imitation thereof has been applied. 30. Defendant MARTIN s acts of infringement described above have been and continue to be intentional and willful. COUNT TWO: AGAINST DEFENDANT OCCASIONALLY MADE FOR DESIGN PATENT INFRINGEMENT UNDER 35 U.S.C. 271, Plaintiff hereby incorporates by reference all prior allegations contained in this complaint to the extent they are not inconsistent with the claim set forth in this count. 32. Defendant OCCASIONALLY MADE makes, sells, offers for sale and imports a beverage holder product (the Beach Buddy product) that falls within the scope of the claim of the 633 Patent. Defendant OCCASIONALLY MADE has misappropriated the Plaintiff s patented Spiker product in the accused Beach Buddy product. 33. In violation of 35 U.S.C. 271, Defendant OCCASIONALLY MADE, is now, and has been, infringing the 633 Patent by making, offering for sale, selling and/or importing the Beach Buddy in the United States. 34. In violation of 35 U.S.C. 289, Defendant OCCASIONALLY MADE, is now, and has been, directly infringing the 633 Patent by applying the patented design of the 633 Patent, or the colorable imitation thereof, to an article of manufacture, including the Beach Buddy, for the purpose of sale and/or selling, offering, or exposing for sale an article of manufacture, including the Beach Buddy product, to which the patented design of the 633 Patent or a colorable imitation thereof has been applied. 8

9 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 9 of Defendant OCCASIONALLY MADE s acts of infringement described above have been and continue to be intentional and willful. COUNT THREE: AGAINST DEFENDANT DARRAH FOR DESIGN PATENT INFRINGEMENT UNDER 35 U.S.C. 271, Plaintiff hereby incorporates by reference all prior allegations contained in this complaint to the extent they are not inconsistent with the claim set forth in this count. 37. Defendant DARRAH sells and offers for sale a beverage holder product (the Beach Buddy product) that falls within the scope of the claim of the 633 Patent. 38. In violation of 35 U.S.C. 271, Defendant DARRAH, is now, and has been, infringing the 633 Patent by offering for sale and selling the Beach Buddy in the United States and this Judicial District. 39. In violation of 35 U.S.C. 289, Defendant DARRAH, is now, and has been, directly infringing the 633 Patent by selling or exposing for sale an article of manufacture, including the Beach Buddy, to which the patented design of the 633 Patent or a colorable imitation thereof has been applied. 40. Defendant DARRAH s acts of infringement described above have been and continue to be intentional and willful. COUNT FOUR: AGAINST DEFENDANT NOTEWORTHY FOR DESIGN PATENT INFRINGEMENT UNDER 35 U.S.C. 271, Plaintiff hereby incorporates by reference all prior allegations contained in this complaint to the extent they are not inconsistent with the claim set forth in this count. 9

10 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 10 of Defendant NOTEWORTHY sells and offers for sale a beverage holder product (the Beach Buddy product) that falls within the scope of the claim of the 633 Patent. 43. In violation of 35 U.S.C. 271, Defendant NOTEWORTHY, is now, and has been, infringing the 633 Patent by offering for sale and selling the Beach Buddy in the United States and this Judicial District. 44. In violation of 35 U.S.C. 289, Defendant NOTEWORTHY is now, and has been, directly infringing the 633 Patent by selling or exposing for sale an article of manufacture, including the Beach Buddy, to which the patented design of the 633 Patent or a colorable imitation thereof has been applied. 45. Defendant NOTEWORTHY s acts of infringement described above have been and continue to be intentional and willful. PRAYER FOR RELIEF WHEREFORE, the Plaintiff prays for a judgment against Defendants as follows: a. That the Defendants have infringed the Plaintiff s 633 Patent and that such infringement was willful and intentional; b. That Defendant MARTIN has actively induced the infringement of the 633 Patent; c. That Defendants and its partners, associates, employees, officers, directors, agents, servants, affiliates, and all other acting in privity or in concert with them, and their parents, subsidiaries, divisions, successors and assigns, be permanently enjoined from further acts of infringement of the Plaintiff s 633 Patent; d. An award to Plaintiff of all damages adequate to compensate for the Defendants infringement of the Plaintiff s 633 Patent, and in no event less than a reasonable royalty 10

11 Case 3:14-cv RS-EMT Document 1 Filed 03/28/14 Page 11 of 11 for the Defendants acts of infringement, including all pre-judgment and post-judgment interest at the maximum rate permitted by law; e. An award to Plaintiff of all damages, including treble damages, based on any infringement found to be willful, pursuant to 35 U.S.C. 284, together with prejudgment interest; f. Costs of suit and reasonable attorneys fees pursuant to 35 U.S.C. 285; and g. any other remedy to which the Plaintiff may be entitled. DEMAND FOR JURY TRIAL Plaintiff requests a trial by jury pursuant to Rule 38(b), Fed.R.Civ.P., of all claims and issues so triable under law. Dated: March 28, s/wiley Horton John Wiley Horton, Esquire (FL Bar # 59242) wiley@penningtonlaw.com PENNINGTON, P.A. 215 S. Monroe Street, 2nd Floor Tallahassee, Florida Phone: Fax: