Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 1 of 12 IN THE UNITED STATES DISTRICT COURT EASTERN DISTRICT OF PENNSYLVANIA ------------------------------------------ JOHN JOSEPH BENGIS, an individual, v. Plaintiff. QVC, Inc., a corporation, Defendant. ------------------------------------------ CASE NO. COMPLAINT FOR PATENT INFRINGEMENT AND JURY DEMAND NOW COMES Plaintiff JOHN JOSEPH BENGIS, by and through his undersigned attorneys, Kolansky & Tuttle, P.C. on his behalf and as local counsel for The Law Offices of P.B. Tufariello, P.C., and for his Complaint against the above named Defendant alleges and avers as follows: JURISDICTION AND VENUE 1. This Court has jurisdiction of this action on the following basis: a. Under 28 U.S.C. 1331 as this action arises under the laws of the United States, 35 U.S.C. 271, and 281-285; 15 U.S.C. 1125 et seq.; b. Under 28 U.S.C. 1338 as this action involves questions arising under the Patent Laws of the United States, Title 35 U.S.C. 271, and 281-285; 15 U.S.C. 1125 et seq.; c. Under 15 U.S.C. 1121 since this action involves questions arising under the Lanham Act 43(a), 15 U.S.C. 1125(a); Page 1- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 2 of 12 d. Under the doctrine of supplemental jurisdiction under 28 U.S.C. 1367, since this action alleges state law violations that are part of the same case or controversy as those claims arising under the laws of the United States; and 2. Defendant is subject to personal jurisdiction in this Court in view of the fact that (a) Defendant has its headquarters in West Chester, Pennsylvania; (b) Defendant transacts business in the State of Pennsylvania soliciting sales and selling the infringing goods in the state of Pennsylvania; and (c) the matters asserted in this action arise, inter alia, within the State of Pennsylvania. 3. Venue is proper in the Eastern District of Pennsylvania pursuant to 28 U.S.C. 1400 in that (a) Defendant has committed the acts of infringement asserted herein in this judicial district; and (b) upon information and belief, Defendant has a regular and established place of business in this district. Venue is also proper in this District under 28 U.S.C. 1391 (b) and (c) since a substantial part of the events giving rise to the present claims occurred within this district. PARTIES 4. Plaintiff JOHN JOSEPH BENGIS is an individual residing at and having a regular and established place of business at 33 Barker Avenue, No. 2A, White Plains, New York 10601. 5. Upon information and belief, defendant QVC, Inc. (hereinafter Defendant ) is a corporation organized and existing under the laws of Pennsylvania having its headquarters and a regular and established place of business at 1200 Wilson Drive Page 2- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 3 of 12 at Studio Park, West Chester, Pennsylvania 19380. FACTS COMMON TO ALL CAUSES 6. Plaintiff JOHN JOSEPH BENGIS is the sole and exclusive owner of the entire right, title and interest in and to United States Letters Patent No. 6,450,179 B2 (hereinafter the '179 patent ) granted to him on September 17, 2002, and entitled COSMETIC CONTAINER WITH INTERCHANGEABLE ATTACHMENTS. A copy of the '179 patent is attached hereto as Exhibit 1. 7. Plaintiff JOHN JOSEPH BENGIS, as owner of the '179 patent, has the exclusive authority to prevent others from making, selling and using the '179 patent. 8. Upon information and belief Defendant makes, uses, offers to sell and sells a cosmetic container with interchangeable attachments under the name Mojave Magic Total Endurance Lip Color Duo in at least four variations. 9. Upon information and belief Defendant makes, uses, offers to sell and sells a cosmetic container with interchangeable attachments under the name Mojave Magic Total Endurance Lip Color Duo - Sun Down Peach (Product Item Number A39034). A copy of Defendant s marketing materials for Mojave Magic Total Endurance Lip Color Duo - Sun Down Peach product is attached hereto as Exhibit 2. 10. Upon information and belief Defendant makes, uses, offers to sell and sells a cosmetic container with interchangeable attachments under the name Mojave Magic Total Endurance Lip Color Duo - Bronze Treasure (Product Item Number A39037). A copy of Defendant s marketing materials for Mojave Magic Total Endurance Lip Color Duo - Bronze Treasure product is attached hereto as Exhibit 3. Page 3- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 4 of 12 11. Upon information and belief Defendant makes, uses, offers to sell and sells a cosmetic container with interchangeable attachments under the name Mojave Magic Total Endurance Lip Color Duo Canyon Kiss (Product Item Number A17456). A copy of Defendant s marketing materials for Mojave Magic Total Endurance Lip Color Duo Canyon Kiss product is attached hereto as Exhibit 4. 12. Upon information and belief Defendant makes, uses, offers to sell and sells a cosmetic container with interchangeable attachments under the name Mojave Magic Total Endurance Lip Color Duo - Sunset Pink (Product Item Number A39036). A copy of Defendant s marketing materials for Mojave Magic Total Endurance Lip Color Duo - Sunset Pink product is attached hereto as Exhibit 5. 13. Every element of claims 1, 2, 3, 4, 5, 6, 7, 8, 19, 20, 21, 22, 23, 24, 25, and 26 of the '179 patent is found in Defendant s Mojave Magic Total Endurance Lip Color Duo products, as set forth in paragraphs 9-12 above. 14. Defendant does not own the '179 patent. 15. Defendant does not have a license to make, use, offer to sell or sell the COSMETIC CONTAINER WITH INTERCHANGEABLE ATTACHMENTS claimed in the '179 patent. In fact, all of Defendant s activities in connection with the making, using, offering to sell and selling of its Mojave Magic Total Endurance Lip Color Duo products are conducted without the authority of plaintiff JOHN JOSEPH BENGIS. 16. Upon information and belief, Defendant s Mojave Magic Total Endurance Lip Color Duo products were manufactured, used, offered for sale and sold by Defendants with full knowledge of the '179 patent and the ownership of the '179 patent by plaintiff JOHN JOSEPH BENGIS. Page 4- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 5 of 12 17. Upon information and belief, Defendant continues to manufacture and sell its Mojave Magic Total Endurance Lip Color Duo products with full knowledge of the '179 patent and the ownership of the '179 patent by plaintiff JOHN JOSEPH BENGIS. 18. Plaintiff JOHN JOSEPH BENGIS has provided actual notice of the '179 patent. Yet Defendant continues to infringe the '179 patent with its Mojave Magic Total Endurance Lip Color Duo products. 19. Defendant s manufacturing, using and selling of its Mojave Magic Total Endurance Lip Color Duo products is willful and wanton. 20. Defendant s sale of its Mojave Magic Total Endurance Lip Color Duo products (i) misrepresents ownership of the '179 patent when the '179 is not in fact owned by Defendant; (ii) falsely represents the source of Defendant s Mojave Magic Total Endurance Lip Color Duo products; (iii) falsely represents the affiliation of Defendant s Mojave Magic Total Endurance Lip Color Duo products; (iv) causes consumers to confuse the source of Defendant s goods as those of another; and (v) enables Defendant to directly and unfairly compete with plaintiff JOHN JOSEPH BENGIS. 21. Defendant s actions have caused irreparable injury to plaintiff JOHN JOSEPH BENGIS s business and business reputation, for which injury there is no adequate remedy at law. Page 5- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 6 of 12 FIRST CLAIM FOR RELIEF (Patent Infringement) 22. Plaintiff JOHN JOSEPH BENGIS repeats and realleges by reference the allegations in paragraphs 1-21. 23. Defendant s acts of making, using, offering to sell and selling its Mojave Magic Total Endurance Lip Color Duo products constitute a willful infringement under 35 U.S.C. 271 and 281-285 of the '179 patent. 24. Plaintiff JOHN JOSEPH BENGIS has provided actual notice of the '179 patent to Defendant. 25. Defendant's actions have caused irreparable injury to plaintiff JOHN JOSEPH BENGIS s business and business reputation, for which injury there is no adequate remedy at law. 26. Defendant will continue to infringe the '179 patent by its manufacture and sale of its Mojave Magic Total Endurance Lip Color Duo products, unless enjoined by this Court. 27. Defendant's actions will continue to harm plaintiff JOHN JOSEPH BENGIS in that said actions will continue to damage his business and business reputation in a manner not adequately compensable by law. 28. Defendant's actions have harmed plaintiff JOHN JOSEPH BENGIS s business in that he has lost sales and has suffered monetary damages, the amount of which is yet undetermined. 29. Defendant has caused and is likely to continue causing substantial injury to the public and to plaintiff JOHN JOSEPH BENGIS, and plaintiff JOHN JOSEPH Page 6- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 7 of 12 BENGIS is entitled to injunctive relief and to recover Defendant s profits, actual damages, enhanced profits and damages, costs and reasonable attorneys fees. SECOND CLAIM FOR RELIEF (Federal Unfair Competition) 30. Plaintiff JOHN JOSEPH BENGIS repeats and realleges by reference the allegations in paragraphs 1-29. 31. Defendant s sale of its Mojave Magic Total Endurance Lip Color Duo products has caused and is likely to cause confusion, deception, and mistake by creating the false and misleading impression that its goods are manufactured or distributed by plaintiff JOHN JOSEPH BENGIS, or are affiliated, connected or associated with plaintiff JOHN JOSEPH BENGIS, or have the sponsorship, endorsement, or approval of plaintiff JOHN JOSEPH BENGIS. 32. Defendant has made false representations, false descriptions, and false designations of origin of their goods in violation of 15 U.S.C. 1125(a) and Defendant s activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion and deception of members of the trade and public and, additionally, injury to plaintiff JOHN JOSEPH BENGIS s goodwill and reputation, as symbolized by the '179 patent, for which plaintiff JOHN JOSEPH BENGIS has no adequate remedy at law. 33. Defendant s actions demonstrate an intentional, willful and malicious intent to trade on the goodwill associated with plaintiff JOHN JOSEPH BENGIS s '179 patent to the great and irreparable injury of plaintiff JOHN JOSEPH BENGIS. Page 7- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 8 of 12 34. Defendant s conduct has caused, and is likely to continue causing substantial injury to the public and to plaintiff JOHN JOSEPH BENGIS, and Plaintiff JOHN JOSEPH BENGIS is entitled to injunctive relief and to recover Defendant s profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys fees pursuant to 15 U.S.C. 1125(a), 1116 and 1117. THIRD CLAIM FOR RELIEF (Common Law Unfair Competition) 35. Plaintiff JOHN JOSEPH BENGIS repeats and realleges by reference the allegations in paragraphs 1-34. 36. Defendant s acts constitute common law unfair competition and have created and will continue to create a likelihood of confusion to the irreparable injury to the public and to plaintiff JOHN JOSEPH BENGIS, unless restrained by this Court. Plaintiff JOHN JOSEPH BENGIS has no adequate remedy at law for this injury. 37. Defendant s actions demonstrate an intentional, willful and malicious intent to trade on the goodwill associated with plaintiff JOHN JOSEPH BENGIS s '179 patent to the great and irreparable injury of plaintiff JOHN JOSEPH BENGIS. 38. As a result of Defendant s conduct, plaintiff JOHN JOSEPH BENGIS has been damaged in an amount not as yet determined or ascertainable. At a minimum however, plaintiff JOHN JOSEPH BENGIS is entitled to injunctive relief and to recover Defendant s profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys fees. In light of the deliberately fraudulent and malicious conduct, and the need to deter Defendant from similar conduct in the future, plaintiff Page 8- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 9 of 12 JOHN JOSEPH BENGIS is entitled to punitive damages. FOURTH CLAIM FOR RELIEF (Unfair and Deceptive Trade Practices) 39. Plaintiff JOHN JOSEPH BENGIS repeats and realleges by reference the allegations in paragraphs 1-38. 40. Defendant has been and is now passing off their goods as those of plaintiff JOHN JOSEPH BENGIS, causing a likelihood of confusion or of misunderstanding as to the source, sponsorship, or approval of Defendant s goods, causing a likelihood of confusion as to Defendant s affiliation, connection or association with another and otherwise damaging the public. Defendant s conduct constitutes unfair deceptive acts or practices in the course of a business, trade or commerce in violation of Pennsylvania s Unlawful Trade Practices Law. 41. Defendant s unauthorized use of plaintiff JOHN JOSEPH BENGIS s patent has caused and is likely to cause substantial injury to the public and to plaintiff JOHN JOSEPH BENGIS, and plaintiff JOHN JOSEPH BENGIS is entitled to injunctive relief and to recover Defendant s profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys fees. In light of the deliberately fraudulent and malicious use of the '179 patent, and the need to deter Defendant from similar conduct in the future, Plaintiff JOHN JOSEPH BENGIS is also entitled to punitive damages. Page 9- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 10 of 12 PRAYER FOR RELIEF WHEREFORE, Plaintiff JOHN JOSEPH BENGIS prays that: a. Defendant, its officers, agents, servants, employees and attorneys, and all others holding by, through or under Defendant, or in active concert or participation with Defendant, be preliminarily and permanently enjoined and restrained from (i) infringing U.S. Letters Patent No. 6,450,179 B2; and (ii) passing off, palming off, or assisting in passing off or palming off, Defendant s goods as those of Plaintiff s, or otherwise continuing any and all acts of unfair competition as alleged in this Complaint. b. Defendant be required to:! account for as trustee ex maleficio and pay to Plaintiff all profits derived by Defendant from their aforesaid acts at least in the amount of two million dollars ($2,000,000.00);! pay Plaintiff damages incurred as a result of Defendant s unlawful acts complained of herein to the fullest extent permissible by Chapter 29 of 35 U.S.C. due to the willful nature of Defendant s acts at least in the amount of two million dollars ($2,000,000.00);! deliver up for destruction all packages, literature, labels, advertising and other materials of an infringing, false, misleading or unfair nature in Defendant s possession or control and all plates, molds, matrices and other means of making the infringing device;! use their best efforts to recall from the trade any and all infringing goods; and! file with this Court and serve on Plaintiff a report in writing, Page 10- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 11 of 12 under oath, setting forth in detail the manner and form in which Defendant has complied with the terms of any injunction entered by this Court. c. Plaintiff be awarded punitive damages in the amount of $6,000,000.00. d. The Court declare this case exceptional pursuant to 35 U.S.C. 285 and award Plaintiff his costs and expenses in this action, together with reasonable attorney's fees, as well as award Plaintiff treble damages. e. Plaintiff have such other and further relief as this Court deems just and equitable. Page 11- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement
Case 2:03-cv-05534-NS Document 1 Filed 10/03/03 Page 12 of 12 JURY DEMAND Plaintiff JOHN JOSEPH BENGIS hereby demands a trial by jury of all issues so triable. Respectfully submitted, KOLANSKY & TUTTLE, P.C. ATTORNEYS AT LAW September, 2003 By: Jeffrey M. Kolansky Suite 200 1429 Walnut Street Philadelphia, Pennsylvania 19102 Tel: (215) 963-9517 Fax: (215) 963-9999 Attorneys for Plaintiff John Joseph Bengis and as local counsel for: THE LAW OFFICES OF P.B. TUFARIELLO, P.C. Dated: By: Panagiota Betty Tufariello (NY - PBT 3429) Marios Christos Sfantos (NY - MCS 7054) 8 Fountain Avenue Selden, New York 11784 Tel.: (631) 716-0091 Fax: (631) 716-0094 Email: 24yellow@optonline.net Attorneys for Plaintiff John Joseph Bengis Page 12- John Joseph Bengis v. QVC, Inc. Complaint for Patent Infringement