Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 1 of 17 IN THE UNITED STATES DISTRICT COURT FOR THE SOUTHERN DISTRICT OF FLORIDA SUNSCREEN MIST HOLDINGS, LLC, a Michigan limited liability company, Plaintiff CASE NO. v. SNAPPYSCREEN, INC., a New York corporation, and LOEWS MIAMI BEACH HOTEL OPERATING COMPANY, INC. d/b/a LOWES HOTEL MIAMI BEACH, a Delaware corporation; and DEMAND FOR JURY TRIAL HIT PORTFOLIO I MISC TRS, LLC d/b/a HYATT REGENCY COCONUT POINT, a Florida limited liability company, Defendants. COMPLAINT AND DEMAND FOR JURY TRIAL INJUNCTIVE RELIEF SOUGHT SUNSCREEN MIST HOLDINGS, LLC ( SUN ), Plaintiff, brings this action for patent infringement and violation of the Lanham Act against SNAPPYSCREEN, INC. ( SNAPPY ), LOEWS MIAMI BEACH HOTEL OPERATING COMPANY, INC ( LOEWS ), and HIT PORTFOLIO I MISC TRS, LLC ( HYATT ) (each a Defendant and collectively Defendants ), and alleges as follows: NATURE OF THE CASE 1. This action is in part a patent infringement action involving SUNS s U.S. Patent No. 6,918,897 (the 897 Patent) directed to an automatic sunscreen application vending apparatus which accepts payment from a user, stores a plurality grades of 1
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 2 of 17 sunscreen lotion, allows the user to select a grade of suntan lotion by SPF factor, and sprays the user with the selected grade of stored sunscreen lotion after acceptance of payment. A copy of the 897 Patent is attached as Exhibit A. This is also a false advertising action due to SNAPPY s literally false statements made in connection with SNAPPY s product and in its advertising. PARTIES 2. SUN is a Michigan limited liability company with its principal place of business at place of business at 42350 Grand River Avenue, Novi, Michigan 48375. 3. SUN offers complete equipment and service solutions relating to its automatic sunscreen application vending apparatus which may accept payment from a user, stores a plurality of grades of sunscreen lotion, allows the user to select a grade of sunscreen lotion by SPF factor, and sprays the user with the selected grade of stored sunscreen lotion ( SUN Products ). 4. On information and belief, Defendant SNAPPY is a New York corporation with a principal place of business at 78 Forest Avenue Locust Valley, NY 11560. See Exhibit B attached. 5. On information and belief, Kristen M. McClelland is the founder and Chief Executive Officer of SNAPPY. See Exhibit B. 6. On information and belief, Defendant LOEWS is a Delaware corporation with a principal address at 667 MADISON AVENUE NEW YORK, NY 10065-8087. See Exhibit C attached. 7. On information and belief, Defendant HYATT is a Florida limited liability company with a principal address at 3950 University Dr., Suite 301, Fairfax, VA 22030. See Exhibit D attached. 2
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 3 of 17 JURISDICTION, VENUE, AND PROCEDURAL MATTERS 8. On information and belief, SNAPPY has an office in and conducts extensive business in the State of Florida and in Miami Beach and Bonita Springs, Florida. 9. On information and belief, SNAPPY has offered for sale, used and/or sold its infringing SNAPPY Product in Bonita Springs, Florida. 10. On information and belief, SNAPPY conducts business in the State of Florida and in Miami Beach, Florida. 11. On information and belief, SNAPPY has offered for sale, used and/or sold the infringing SNAPPY Product in the State of Florida and in Miami Beach, Florida. 12. On information and belief, SNAPPY maintains an Internet website (www.snappyscreen.com) available within this district on which it advertises its products and makes them available for purchase. 13. On information and belief, SNAPPY derives revenue from selling and installing its products, which it manufactures or assembles itself. 14. On information and belief, LOEWS operates a hotel named LOEWS MIAMI located at 1601 Collins Ave, Miami Beach, FL 33139 (the LOEWS Hotel ). 15. On information and belief, SNAPPY has offered for sale, sold and used an infringing SNAPPY Product at the LOEWS Hotel. 16. On information and belief, LOEWS has purchased, used and operated the infringing SNAPPY Product at the LOEWS Hotel. 17. On information and belief, SNAPPY and LOEWS are making the infringing SNAPPY Product available to patrons of the LOEWS Hotel who use the infringing SNAPPY Product. 18. On information and belief, HYATT operates a hotel, resort and spa named Hyatt Regency Coconut Point located at 5001 Coconut Road, Bonita Springs, Florida, USA, 34134 (the Hyatt Hotel ). 3
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 4 of 17 19. On information and belief, SNAPPY has offered for sale, sold and used an infringing SNAPPY Product at the Hyatt Hotel. See Exhibit E attached at page 3. 20. On information and belief, HYATT has purchased, used and operated the infringing SNAPPY Product at the Hyatt Hotel. 21. On information and belief, SNAPPY and HYATT are making the infringing SNAPPY Product available to patrons of the Hyatt Hotel who use the infringing SNAPPY Product. 22. SUN s claims for patent infringement against SNAPPY, HYATT and LOEWS arise under the Patent Laws of the United States of America, 35 U.S.C. 101 et seq. This Court has exclusive original jurisdiction over the subject matter of this action pursuant to 28 U.S.C. 1331 and 1338(a). Because there is complete diversity of citizenship between the parties, in that SUN is not a citizen of any state in which SNAPPY is a citizen, this Court also has original jurisdiction under 28 U.S.C. 1332. 23. This Court has personal jurisdiction over SNAPPY because, upon information and belief, SNAPPY has continuous and systematic contacts with the State of Florida, and because SNAPPY has specific contacts with the Middle District of Florida including, upon information and belief, SNAPPY has made, used, sold, and/or offered for sale a SNAPPY sunblock lotion dispensing machine that infringes the claims of the 897 Patent within this jurisdiction and because SNAPPY has committed and is continuing to commit acts of infringement in this District. 24. Venue is proper in this District under 28 U.S.C. 1391(b), (c) and 1400(b) because a substantial part of the events giving rise to this patent infringement action have occurred and/or are occurring within this District. BACKGROUND 25. SUN was formed in Michigan in 2014 as part of the acquisition and purchase of U.S. Patent 6,918,897 B2 (the 897 Patent ) and other assets from Joseph 4
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 5 of 17 Severino, and has been the leader of automated, patented sunscreen-spray stations and booths. SUN spray-on sunscreen machines make protecting one s skin quick, easy, and convenient for all ages. 26. Prior to SUN s acquisition of the 897 Patent and other assets, members of SUN operated in Sunless Mist, LLC. SUN promotes its spray-on sunscreen machines as potential profit centers and guest amenities for hotels and other outdoor gathering places and has developed a reputation that its machines send a message of safety and concern to a host s guests. 27. The SUN spray-on sunscreen machine was developed to allow the customer to choose from multiple types of lotions (e.g., UVA/UVB protection; and varying sunscreen SPF levels (e.g., SPF 15 or SPF 30), tan enhancer, cooling aloe, and / or insect barrier (which may include a sunscreen lotion ( SUN Product ). 28. SUN and Sunless Mist have sold and promoted SUN products in interstate commerce since 2006. Due to such sales and promotion, the distinctive SUN Product has become a valuable asset and has developed substantial and valuable goodwill. 29. SUN is the owner of U.S. Patent No. 6,918,897 B2 (the 897 Patent). See Exhibit F attached. 30. SUN is in the business of consulting, designing and building its spray-on sunscreen machines for its customers throughout the United States and in other countries. 31. In addition to the 897 Patent, SUN has developed its own proprietary product designs and trade secrets ( SUN Intellectual Property ). 32. SUN s spray-on sunscreen machines are based upon and incorporate the SUN Intellectual Property ( SUN Products ). 33. SUN has invested significant resources in the creation, development, acquisition and protection of the SUN Intellectual Property. 5
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 6 of 17 34. Due to the superior performance of the SUN Products and due to the SUN Intellectual Property, the SUN Products have attracted attention from many potential customers and have met with significant and unexpected commercial success. 35. Due to the superior performance of the SUN Products and due to the SUN Intellectual Property, the SUN Products have attracted attention from many potential customers and have met with significant and unexpected commercial success. SNAPPY AND INFRINGING PRODUCT 36. In or about, 2010, Kristen McClelland contacted SUN seeking information and details about the SUN products and its business and customers. Further, in or about this time, Kristen McCelland also offered to acquire SUN. Despite several attempts and communications, Ms. McClelland failed to purchase SUN. 37. Upon information and belief, SNAPPY was formed in 2011 in New York state by Kristen McClelland. See Exhibit B attached. 38. Upon information and belief, SNAPPY makes, uses, sells and offers for sale an infringing spray-on sunscreen machine ( SNAPPY Product ). See picture below taken from the website available at http://www.snappyscreen.com. 6
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 7 of 17 39. Upon information and belief, the SNAPPY Product includes three (3) different sunscreen lotions (SPF 15, 30, 50) as shown in the image below. Further, the SNAPPY Product allows the user to select one of the sunscreen lotions for application to the user. See picture below taken from the website available at http://www.snappyscreen.com. 40. Upon information and belief, SNAPPY has also advertised and marketed the SNAPPY Product making the factual statement that "SNAPPYSCREEN The World's 7
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 8 of 17 First Touchless Sunscreen Application System." See picture below taken from the website available at http://www.snappyscreen.com. 41. Upon information and belief, SNAPPY has advertised its SNAPPY Product using and claiming in its advertising that its SNAPPY Product is the "The World's First Touchless Sunscreen Application System." 42. Upon information and belief, SNAPPY advertised and promoted "The World's First Touchless Sunscreen Application System" statement to LOEWS and the LOEWS Hotel to get them to buy and use the SNAPPY Product. 43. Upon information and belief, SNAPPY advertised and promoted "The World's First Touchless Sunscreen Application System" statement to HYATT and the Hyatt Hotel to get them to buy and use the SNAPPY Product. 44. Upon information and belief, SNAPPY has had success and will continue to have success in marketing, using, offering for sale and selling the SNAPPY Product due to its use of the false statement that the SNAPPY Product is allegedly "The World's First Touchless Sunscreen Application System". 8
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 9 of 17 U.S. PATENT 6,918,897 45. U.S. Patent 6,918,897 issued July 19, 20015 based upon a United Stated Patent Application No. 10/210,652, filed July 31, 2002 and claiming priority to a United Stated Provisional Patent Application No. 60/309,226, filed July 31, 2001, naming JOSEPH SEVERINO as the sole inventor, and entitled SPF VENDING MACHINE AND METHOD. 46. The 897 Patent was assigned to SUN in a signed writing by Joseph Severino executed March 12, 2014 ( Assignment ). The Assignment was recorded with the US Patent Office on August 6, 2014 at Reel/frame 033479/0787. A copy of the Assignment as recorded is attached as Exhibit F. 47. The '897 Patent discloses, in Figure 2 (shown below), a sunscreen application vending machine and method of operation. The sunscreen application vending machine includes a chamber 30 having spray assemblies 31 for the touchless spraying of atomized sunscreen lotion on a user standing in the chamber 30. See 897 Patent, col. 5, lines 17-25, Exhibit A attached. 9
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 10 of 17 48. Once a user is in the chamber 30, the user may select which SPF grade of sunscreen lotion to be applied by the sprayer assemblies 31. See Fig. 3 below and see '897 Patent, col. 5, lines 56-61. See also '897 Patent, col. 7, lines 35-41; and col. 7, line 66 - col. 8, line 14, Exhibit A attached. 10
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 11 of 17 49. Once the grade of SPF is selected, that specific grade of SPF sunscreen lotion is sprayed on the user. See '897 Patent, col. 7, lines 35-41; and col. 7, line 66 - col. 8, line 14, Exhibit A attached. 50. Claim 1 of the 897 Patent recites: 1. A vending machine for dispensing sunscreen lotion comprising: means to accept payment from a user, means to store sunscreen lotion, and means to spray the user with the stored sunscreen lotion after acceptance of payment wherein the means to store sunscreen lotion is adapted to store a plurality of grades of sunscreen lotion, the machine further comprising means for the user to select which grade of sunscreen lotion will be sprayed by the means to spray. See 897 Patent, col. 8, lines 56-67, Exhibit A attached. 51. Claims 2-16 depend, directly or indirectly, from Claim 1 and recite additional limitations on the vending machine in Claim 1, relating to, inter alia, an enclosure door, a locking controller, a drain and reservoir, user detection means, storing a disinfectant, a no-slip floor, and adapting the machine for outdoor use. 52. Claim 17 of the 897 Patent recites: 17. A method of dispensing sunscreen lotion comprising: providing a machine which is adapted to receive and accept payment and store and spray sunscreen lotion; spraying a user with the sunscreen lotion for a predetermined amount of time or volume of lotion upon a user providing payment to the machine; storing a plurality of grades of sunscreen lotion; and providing means for the user to select which grade of sunscreen lotion will be sprayed by the means to spray. See 897 Patent, col. 8, lines 14-24, Exhibit A attached. 53. Claims 18 and 19 depend directly from Claim 17 and recite additional method limitations for unlocking the machine to allow the use of the machine after receiving payment and spraying a disinfectant after a use of the machine. 11
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 12 of 17 54. Upon information and belief, SNAPPY has had actual knowledge that the SNAPPY Product infringes the claims of the 897 Patent since at least 2014. COUNT I Patent Infringement of the 897 Patent 55. SUN re-alleges and incorporates by reference the allegations of the above paragraphs. 56. On information and belief, SNAPPY, LOEWS and HYATT have been, and presently are, directly infringing at least claims 1 and 17 of the 897 Patent, literally or under the doctrine of equivalents, by making, importing, using, testing, selling, or offering for sale within the United States the SNAPPY Product in violation of 35 U.S.C. 271(a). 57. On information and belief, SNAPPY has actively induced infringement with specific knowledge of the 897 Patent and knowledge that others would be directly infringing the 897 Patent as the result of SNAPPY s active inducement. On information and belief SNAPPY has actively induced LOEWS and HYATT to directly infringe at least claims 1 and 17 of the 897 Patent in violation of 35 U.S.C. 271(b). 58. On information and belief, SNAPPY has actively induced infringement with specific knowledge of the 897 Patent and knowledge that others would be directly infringing the 897 Patent as the result of SNAPPY s inducement. On information and belief SNAPPY has actively induced other third parties, including the customers of the Loews Hotel and the Hyatt Hotel to directly infringe at least claims 1 and 17 of the 897 Patent in violation of 35 U.S.C. 271(b). 59. SNAPPY is not licensed or otherwise authorized by SUN to manufacture, import, use, sell, offer for sale, or induce others to make, use, sell or offer for sale any product that infringes any claim of the 897 Patent and SNAPPY s conduct is, in every instance, without SUN s consent. 12
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 13 of 17 60. SNAPPY will continue to manufacture, import, use, sell, and offer for sale, its infringing SNAPPY Products unless enjoined by this Court. 61. Due to SNAPPY s infringement of the claims of the 897 Patent, SUN is entitled to recover from SNAPPY the damages it has sustained because of SNAPPY s wrongful acts in an amount to be proven at trial, but in no event less than a reasonable royalty, together with interest and costs as fixed by this Court under 35 U.S.C. 284. 62. Due to SNAPPY s infringement of the claims of the 897 Patent, SUN has suffered, is suffering, and will continue to suffer irreparable injury and damage for which SUN has no adequate remedy at law. SUN is entitled to preliminary and permanent injunctions against SNAPPY s further infringing conduct under 35 U.S.C. 283. 63. SNAPPY s infringement of the 897 Patent is and has been willful, entitling SUN to recover enhanced damages in the sound discretion of the Court pursuant to COUNT II Violation of Lanham Act (15 U.S.C. 1125 et seq.) for False Advertising 64. SUN re-alleges and incorporates by reference the allegations of the above paragraphs. 65. The Lanham Act provides, in part, as follows: (a)(l) Any person who... uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which - (B) in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person's goods, services or commercial activities, shall be liable in a civil action by any person who believes that he or she is or is likely to be damaged by such act. See 15 U.S.C. 1125(a). 13
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 14 of 17 66. For a proven violation of the Lanham Act, the Court may award up to treble damages or the profits derived from violation of the act, whichever is greater, together with the costs of the action, including reasonable attorneys' fees. 67. For a violation of 15 U.S.C. 1125(a), the plaintiff shall be entitled, subject to the provisions of sections 1111 and 1114 of 15 U.S.C., and subject to the principles of equity, to recover (1) defendant's profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court in exceptional cases may award reasonable attorney fees to the prevailing party. See 15 U.S.C. 1117(a). 68. Upon information and belief, McClelland and SNAPPY have prior knowledge of the SUN Product and the 897 Patent. 69. SNAPPY s statements made in interstate commerce constitute false or misleading representations of fact concerning the SNAPPY Products and commercial activities in violation of Section 43(a) of the Lanham Act. See 15 U.S.C. 1125(a). 70. SNAPPY s false representations of fact are material, and have deceived, or have the capacity to deceive potential customers. 71. SUN has been, and will in the future continue to be, damaged by these false representations of material fact. 72. Upon information and belief, McClelland and SNAPPY have known that the '897 Patent discloses and teaches a touchless sunscreen lotion application vending machine that was publicly known long before the SNAPPY Product. 73. Despite haying prior knowledge of a touchless sunscreen lotion application vending machine, McClelland and SNAPPY still advertised, promoted and labeled the SNAPPY Product using the literally false statement "SNAPPYSCREEN - The World's First Touchless Sunscreen Application System." 74. SNAPPY's false statements of fact are material, and have deceived, or have the capacity to deceive potential customers. 14
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 15 of 17 75. SUN has been, and will in the future continue to be, damaged by these false statements of material fact. 76. SNAPPY's false statements of fact have resulted, and will continue to result, in actual or probable injury to SUN in terms of loss of sales, loss of good will and damage to SUN's reputation within the industry and among its consumers. 77. SNAPPY's false statements of fact and misconduct has caused, and if not enjoined from such further actions, will in the future cause, SUN to suffer additional damages. 78. By their conduct, as set forth above, SNAPPY has intentionally engaged in unfair methods of competition with SUN, by making false or misleading statements of fact concerning the SNAPPY Product. 79. SNAPPY's actions were undertaken intentionally, willfully, maliciously and in bad faith, and for the sole purposes of injuring SUN and its business and to give SNAPPY and the SNAPPY Product an unfair competitive advantage. 80. These false statements of fact and deceptive marketing and advertising have caused, and will continue to cause, damage to SUN and, unless restrained and enjoined, will continue to cause SUN immediate and irreparable future harm. RELIEF REQUESTED SUN requests that the Court enter judgment in its favor and against SNAPPY, LOEWS and HYATT and provide SUN the following relief adjudging that: a. all claims of the 897 Patent are valid and enforceable; b. SNAPPY s, LOEWS and HYATT s manufacture, use, offer to sell, sale, and/or importation into the United States of the SNAPPY Product infringes claims 1 and 17 of the 897 Patent; 15
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 16 of 17 c. SNAPPY s active inducement of LOEWS and HYATT and their customers using the SNAPPY Product infringes claims 1 and 17 of the 897 Patent; d. SUN be awarded damages resulting from SNAPPY's, LOEWS and HYATT s infringement of the '897 Patent, together with interest and costs, and all other damages permitted by 35 U.S.C. 284, including increased damages up to three times the amount of damages found or measured, and further including an accounting for infringing sales not presented at trial and an award by the Court of additional damages for any such infringing sales; e. this action is an exceptional case in favor of SUN and awarding SUN its costs, expenses, and reasonable attorneys' fees pursuant to 35 U.S.C. 285; f. SNAPPY has engaged in false advertising in violation of 15 U.S.C. 1125(a); g. SUN be awarded damages, costs and attorney fees pursuant to 15 U.S.C. 1125(a); h. SNAPPY be permanently enjoined from any further acts of false advertising; and i. SUN be awarded all such other relief as the Court determines to be just and proper. Respectfully submitted, Dated: March 5, 2018 /s / Jan Jeffrey Rubinstein Jan Jeffrey Rubinstein (77605) The Rubinstein Law Firm 16
Case 1:18-cv-20971-DPG Document 1 Entered on FLSD Docket 03/14/2018 Page 17 of 17 2637 E Atlantic Blvd #28613 Pompano Beach, FL 33062 Telephone: 248-220-1415 Fax: (248) 213-6394 E-mail: jjrubinstein@yahoo.com John VanOphem (P48804) (admission pending) or pro hac vice VANOPHEM IP LAW PLC 1585 S. Hickory Ridge Road Milford, Michigan 48380 Telephone: (248) 897-8913 E-mail: john@vanophemiplaw.com Attorneys for Plaintiff 17