fusionbrands v. norpro
TRANSCRIPT
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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
FUSIONBRANDS, INC.,
Plaintiff,
v.
NORPRO, INC.,
Defendant.
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CIVIL ACTION
FILE NO. _________________
JURY TRIAL
DEMANDED
COMPLAINT
Plaintiff, FUSIONBRANDS, INC., (“Plaintiff” or “Fusionbrands.”) for its
Complaint against Defendant, NORPRO, INC., (“Defendant” or “Norpro”) alleges
as follows:
PRELIMINARY STATEMENT
1. This case concerns the willful infringement of intellectual property.
Plaintiff, Fusionbrands, is the manufacturer of the Poachpod® egg poacher, which
is a flexible device that floats in boiling water and, among other things, poaches
eggs. The owners of Fusionbrands, a husband and wife team, are inventors and
designers who have assigned the intellectual property rights associated with this
popular kitchen product to Fusionbrands. Launched only a few years ago, the
Poachpod® egg poacher has already received national and international design
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awards, been sold in at least fourteen (14) world markets, and has been featured in
national publications such as the New York Times and Bon Appétit Magazine.
2. Defendant Norpro is a Washington State corporation in the business
of manufacturing and selling kitchenware. Norpro sells knock-off silicone egg
poachers through various retailers throughout the United States, including the
Northern District of Georgia. These knock-off poaching products are sold through
Defendant’s website, in stores, and through its catalogue to customers in the
Northern District of Georgia. These sales have continued despite Defendant’s
actual knowledge of the existence of the intellectual property rights of
Fusionbrands. Defendant knowingly infringed on, contributed to the infringement
of, and induced the infringement of Plaintiff’s intellectual property rights.
3. Therefore, this is an action for infringement of United States Patent
No. US D556,501 S (“the ‘501 Patent) and United States Patent No. US 7,754,261
B2 (“the ‘261 Patent”), pursuant to the United States Patent Act (35 U.S.C. §271).
A copy of the ‘501 Patent is attached to this Complaint as Exhibit A, and a copy of
the ‘261 Patent is attached to this Complaint as Exhibit B.
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PARTIES
4. Plaintiff FUSIONBRANDS, INC. (“Fusionbrands”) is the
manufacturer of the Poachpod® egg poacher.
5. Plaintiff Fusionbrands is, and at all times mentioned herein was, a
corporation organized and existing under the laws of the State of Georgia.
6. Plaintiff is organized and existing in the State of Georgia, may be
contacted through the undersigned counsel, and served through its registered agent,
CGA Admin, LLC, at 1000 Johnson Ferry Road, Suite A-125, Marietta, Georgia
30068.
7. Defendant Norpro is, and at all times mentioned herein was, a
corporation organized and existing under the laws of the State of Washington,
having a principal place of business located at 2215 Merrill Creek Parkway,
Everett, Washington 98203-5899.
8. Defendant Norpro may be served through its registered agent, Michael
A. Sills at 19105 85th Avenue Court East, Puyallup, Washington 98375.
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JURISDICTION AND VENUE
9. This is an action for pecuniary and injunctive relief for patent
infringement arising under the United States Patent Act, Title 35 of the United
States Code, and for trade dress infringement arising under § 43(a) of the Lanham
Act, 15 U.S.C. § 1125(a).
10. This Court has jurisdiction over the subject matter of this action as
provided for in 28 U.S.C. §§ 1331 and 1338. Venue is proper in this District
pursuant to 28 U.S.C. § 1391 and § 1400. This action arises out of the wrongful
acts of Defendant in Georgia and elsewhere.
11. Upon information and belief, this Court has personal jurisdiction over
the Defendant in that it maintains several internet websites wherein it actively
solicits business from, and completes sales with, customers in the Northern District
of Georgia. Upon information and belief, Defendant sells products, or has caused
products to be sold, and sends products, or has caused products to be sent, into the
Northern District of Georgia. Further, Defendant has committed acts of patent
infringement during the course of business in this District.
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FACTUAL BACKGROUND
12. On December 4, 2007, United States Patent No. D 556,501, entitled
“Poach Pod,” (the “ ‘501 Patent”) was duly and legally issued on an application by
Anna M. Stewart and Stephen (“Kraigh”) Stewart (hereinafter, the “Stewarts”).
13. On July 13, 2010, United States Patent No. 7,754,261 B2, entitled
“Food Containment Cooking Device,” (the “ ‘261 Patent”) was duly and legally
issued on an application by the Stewarts.
14. Fusionbrands is the owner of all right, title, and interest in and to the
‘501 Patent and the ‘261 Patent by virtue of an assignment recorded on November
2, 2010, from the Stewarts to Fusionbrands, Inc.
15. A copy of the ‘501 Patent is attached to this Complaint as Exhibit A.
16. A copy of the ‘261 Patent is attached to this Complaint as Exhibit B.
17. As a result of Plaintiff’s substantial advertising and promotional
efforts, Plaintiff Fusionbrands has become widely known to consumers as the
source of the Poachpod® egg poacher. The Poachpod® egg poacher is widely
recognized by consumers as being associated with Plaintiff’s high quality goods
and has become synonymous with the goodwill and reputation of Plaintiff
Fusionbrands.
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18. Defendant makes, uses, sells, and/or offers to sell products that
infringe upon the claims of the ‘501 Patent and ‘261 Patent.
19. Defendant has manufactured, used, sold, offered for sale and/or
imported a product which is covered by the ‘501 Patent and the ‘261 Patent.
20. Since the introduction of the Poachpod® design, Fusionbrands has
created, marketed and promoted the Poachpod® in a variety of colors with one
distinctive shape, all of which are marketed under the Poachpod® name. Through
extensive advertising and promotion of the Poachpod®, its distinctive look has
come to be associated with Fusionbrands as a single source.
21. Fusionbrands’ Poachpod® thus features a distinctive and unique
combination of elements that collectively create a particular trade dress (The
“Poachpod® Trade Dress”). The Poachpod® Trade Dress consists of a collection
of design elements. The combination of all or almost all such elements together
gives the Poachpod® egg poacher a distinct overall look and commercial
impression. These features include, but are not limited to, size, shape, colors, and
texture.
22. The collection of features comprising the Poachpod® egg poacher’s
distinct overall look constitutes a distinctive trade dress that has secondary
meaning. This design has been extensively promoted by Fusionbrands in at least
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fourteen (14) world markets, and has achieved significant sales success. The
public has come to recognize this design as distinctive of Fusionbrands® products.
The Poachpod® Trade Dress is thus a means by which Fusionbrands® is known to
the public and the trade as the sole source and origin of the Poachpod® egg
poacher.
23. The Poachpod® Trade Dress is in no way functional.
24. By way of example only, Defendant used a confusingly similar
ornamental design of the ‘501 Patent and the method of the ‘261 Patent for
Defendants’ infringing goods, and manufactured, tested, and shipped a product
that, while similar in design and shape, is inferior to the original. Photographs
showing a side-by-side comparison of genuine Poachpod® egg poachers to the
knock-off products sold by Defendant are pictured below. The genuine
Poachpod® appears in the left of each photograph.
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25. Defendant includes instructions with the infringing goods describing
in detail a step-by-step process their customers are encouraged and intended to use
in poaching eggs with their product.
26. As laid out more fully below, Defendant has been and is now
infringing the ‘501 Patent and the ‘261 Patent in this judicial district and
elsewhere, by making, using, selling, offering for sale and/or importing its products
and services, which individually or in combination incorporate and/or use the
subject matter claimed by the ‘501 Patent and the ‘261 Patent.
27. By the actions alleged in Paragraph 26, Defendant is inducing its
customers to infringe the ‘261 Patent, and is contributing to the infringement by its
customers of the ‘261 Patent.
28. Upon information and belief, such activities were done willfully and
knowingly, knowing that certain of Defendant’s products were based upon a
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design copied from the Poachpod® and that such products are confusingly similar
to the Poachpod® egg poacher.
29. Defendant has not sought nor has it received a license or authorization
from Fusionbrands® for any purpose whatsoever, including for the acts described
herein.
30. Defendant was advised of the existence of both the ‘501 Patent and
the ‘261 Patent and has refused to voluntarily refrain from selling infringing
products. See Exhibit C.
31. Unless enjoined from continuing to do the acts complained of herein,
Defendant will continue to do so, causing damage and irreparable harm to
Fusionbrands and its business. Fusionbrands is thus without an adequate remedy at
law.
FIRST CAUSE OF ACTION FOR PATENT INFRINGEMENT
(the ’501 Patent)
32. Plaintiff repeats and hereby incorporates herein by reference, as
though specifically pleaded herein, the allegations of the preceding paragraphs.
33. The aforementioned acts of Defendant in making, using, selling,
offering for sale and/or importing the infringing products constitute infringement
of the ‘501 Patent in violation of 35 U.S.C. § 271.
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34. Defendant’s acts of infringement have been and continue to be
knowing, deliberate, and willful. Such acts have caused damage and irreparable
harm to Fusionbrands® and will continue to do so unless and until such acts are
enjoined by this Court.
35. Upon information and belief, Defendant will continue to infringe the
‘501 Patent unless enjoined by this Court.
36. The infringement of the ‘501 Patent has injured Plaintiff. Plaintiff is
entitled to recover damages in an amount that adequately compensates Plaintiff for
Defendant’s such infringement, which, in no event, can be less than a reasonable
royalty.
37. Plaintiff’s ongoing business has suffered from the infringement of
Defendant, and has lost and will continue to lose profits as a result of the
Defendant’s infringement.
38. Plaintiff has no adequate remedy at law against these acts of patent
infringement. Unless Defendant is permanently enjoined from its unlawful and
willful infringement of the ‘501 Patent, Plaintiff will suffer irreparable harm.
39. Plaintiff has incurred and will incur attorneys’ fees, costs, and
expenses in the prosecution of this action. The circumstances of this dispute create
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an exceptional case within the meaning of 35 U.S.C. § 285, and Plaintiff is entitled
to recover its reasonable and necessary fees and expenses.
SECOND CAUSE OF ACTION FOR PATENT INFRINGEMENT
(the ‘261 Patent)
40. Plaintiff repeats and hereby incorporates herein by reference, as
though specifically pleaded herein, the allegations of the preceding paragraphs.
41. Claim 1 of the ‘261 Patent relates to “a method of poaching an egg”
and comprises a variety of elements.
42. Upon information and belief, at all times relevant herein, Defendant
has been and is infringing the ‘261 Patent by making, using, selling, offering for
sale, and/or importing into the United States, without authority, products that fall
within the scope of the claim of the ‘261 Patent.
43. Defendant has also infringed claim 1 of the ‘261 Patent by knowingly,
intentionally, and actively inducing others to infringe, by contributing to the
infringement of others, and by intentionally aiding, assisting, and encouraging the
infringement of others through the making, using, sale, and offer for sale of at least
its “Silicone Egg Poachers.” On information and belief, Defendants have
knowledge that at least its “Silicone Egg Poachers” are used in practicing the
method claimed in the ‘261 Patent, constitutes a material part of the invention, is
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especially made or adapted for use in an infringement of the ‘261 Patent, and is not
suitable for substantial non-infringing use.
44. Upon information and belief, Defendant will continue to infringe the
‘261 Patent unless enjoined by this Court.
45. The infringement, contributory infringement, and inducement to
infringe of the ‘261 Patent has injured Plaintiff. Plaintiff is entitled to recover
damages in an amount that adequately compensates Plaintiff for Defendant’s such
infringement, which, in no event, can be less than a reasonable royalty.
46. Plaintiff’s ongoing business has suffered from the infringement of
Defendant, and has lost and will continue to lose profits as a result of the
Defendant’s infringement.
47. Plaintiff Fusionbrands has no adequate remedy at law against these
acts of patent infringement. Unless Defendant is permanently enjoined from its
unlawful and willful infringement of the ‘261 Patent, Plaintiff Fusionbrands will
suffer irreparable harm.
48. Plaintiff Fusionbrands has incurred and will incur attorneys’ fees,
costs, and expenses in the prosecution of this action. The circumstances of this
dispute create an exceptional case within the meaning of 35 U.S.C. § 285, and
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Plaintiff Fusionbrands is entitled to recover its reasonable and necessary fees and
expenses.
THIRD CAUSE OF ACTION FOR TRADE DRESS INFRINGEMENT
49. Plaintiff repeats and hereby incorporates herein by reference, as
though specifically pleaded herein, the allegations of the preceding paragraphs.
50. Defendant has reproduced, copied, and imitated the Poachpod® Trade
Dress in designing certain of its products in a manner that is confusingly similar to
the distinctive trade dress of the Poachpod® egg poacher.
51. Defendant’s adoption and use of the Poachpod® Trade Dress
constitutes trade dress infringement and deliberate and willful violations of Section
43(a) of the Lanham Act, 15 U.S.C. § 1125(a).
52. The actions and conduct of the Defendant complained of herein have
damaged Plaintiff and will, unless restrained, further impair, if not destroy, the
value of the Poachpod® Trade Dress and the goodwill associated therewith.
53. Upon information and belief, Defendant will continue to infringe the
Poachpod® Trade Dress unless enjoined by this Court.
54. The infringement of the Poachpod® Trade Dress has injured Plaintiff.
Plaintiff is entitled to recover damages in an amount that adequately compensates
Plaintiff for Defendant’s such infringement.
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55. Plaintiff’s ongoing business has suffered significantly from the
infringement of Defendant, and has lost and will continue to lose profits as a result
of the Defendant’s infringement.
56. Plaintiff Fusionbrands has no adequate remedy at law against these
acts of trade dress infringement. Unless Defendant is permanently enjoined from
its unlawful and willful infringement of the Poachpod® Trade Dress, Plaintiff
Fusionbrands will suffer irreparable harm.
REQUESTED RELIEF
WHEREFORE, Plaintiff prays for entry of a judgment in favor of Plaintiff and
against Defendant which:
A. Declares that the ‘501 Patent and the ‘261 Patent are valid and
enforceable;
B. Declares that Defendants have infringed, induced others to infringe,
and/or committed acts of contributory infringement, with respect to
the claims of the ‘501 Patent and the ‘261 Patent;
C. Enters a temporary, preliminary, and thereafter permanent, injunction
enjoining Defendant, its officers, agents, servants, employees,
attorneys, parents, subsidiaries, affiliates, successors, and all others in
active concern or participation with them or acting on their behalf,
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from infringing the ‘501 Patent and the ‘261 Patent, from inducing
others to infringe, and from contributing to infringement by others;
D. Requires Defendant to deliver up to Plaintiff for destruction any and
all goods in its possession that infringe upon the patents identified
herein;
E. Awards costs and damages adequate to compensate Plaintiff for the
infringement that has occurred, but in no event less than a reasonable
royalty as permitted by 35 U.S.C. § 284;
F. Finds that Defendant’s infringement has been willful, and awards
increased damages to Plaintiff as provided by 35 U.S.C. § 284;
G. Awards to Plaintiff its expenses, costs, and attorneys’ fees pursuant to
35 U.S.C. § 285;
H. Awards a temporary, preliminary, and thereafter permanent injunction
permanently enjoining Defendant, its officers, agents, servants,
employees, attorneys, parents, subsidiaries, affiliates, successors, and
all others in active concern or participation with them or acting on
their behalf:
a. From using in any manner the Poachpod® Trade Dress, alone
or in combination with any other words or designs, in a manner
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likely to cause confusion, deception, or mistake on or in
connection with advertising, offering for sale or sale of any
goods not manufactured by Fusionbrands, or not authorized by
Fusionbrands to be sold in connection with its respective marks;
b. From representing, suggesting in any fashion to any third party,
or performing any act that may give rise to the belief that
Defendant, or any of its goods, are authorized or sponsored by
Fusionbrands;
c. From passing off, inducing or enabling others to sell or pass off
any goods as products produced by Plaintiff that are not in fact
genuine Fusionbrands goods, or not produced under the control
and supervision of Fusionbrands and approved by
Fusionbrands; and
d. From otherwise competing unfairly with Plaintiff in any
manner.
I. Requires Defendant to deliver up to Plaintiff for destruction, any and
all goods in its possession or under its control that were or are being
advertised, promoted, offered for sale or sold in connection with the
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Poachpod® Trade Dress, whether alone or in combination with any
words or designs.
J. Requires Defendant to deliver up to Plaintiff for destruction, any and
all catalogs, circulars, and other printed material in its possession or
under its control displaying or promoting the goods that were or are
being advertised, promoted, offered for sale or sold in connection with
the Poachpod® Trade Dress, whether alone or in combination with
any words or designs.
K. Requires Defendant, pursuant to 15 U.S.C. § 1116(a) to file with the
Court and serve upon the Plaintiff, within thirty (30) days of the entry
of any injunction prayed for herein, a written report under oath or
affirmed under penalty of perjury setting forth in detail the form and
manner in which it has complied with the permanent injunction.
L. Requires Defendant, pursuant to 15 U.S.C. § 1117, to account to
Plaintiff for any and all profits derived by it, and for all damages
sustained by Plaintiff by reason of Defendant’s actions complained of
herein, including an award of treble damages as provided for by
statute.
M. Awards damages to Plaintiff to which it is entitled for its lost profits;
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N. Grants Plaintiff pre-judgment and post-judgment interest on each and
every damage award;
O. Awards Plaintiff its expenses, costs, and attorneys’ fees pursuant to 15
U.S.C. § 1117.
P. Grants Plaintiff such other and further relief as the case may require
and the Court may deem just and proper.
JURY DEMAND
In accordance with Fed. R. Civ. P. 38 (b), Plaintiff hereby demands a trial by
jury.
[SIGNATURE PAGE TO FOLLOW]
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Respectfully submitted this 30th day of August, 2011.
/s/ Mary Donne Peters
MARY DONNE PETERS
Georgia Bar No. 573595
MICHAEL J. GORBY
Georgia Bar No. 301950
JEFFREY D. COOPER
Georgia Bar No. 478395
[email protected] for Plaintiff
GORBY, PETERS & ASSOCIATES, LLC
Two Ravinia Drive, Suite 1500
Atlanta, Georgia 30346
404-239-1150
404-239-1179 (fax)
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IN THE UNITED STATES DISTRICT COURT
FOR THE NORTHERN DISTRICT OF GEORGIA
ATLANTA DIVISION
FUSIONBRANDS, INC.,
Plaintiff,
v.
NORPRO, INC.,
Defendant.
)
)
)
)
)
)
)
)
)
CIVIL ACTION
FILE NO. _________________
JURY TRIAL
DEMANDED
CERTIFICATION
The Undersigned hereby certifies that the text of this document has been
prepared with Times New Roman 14 point, one of the fonts and point selections
approved by the Court in Local Rule 5.1B.
[SIGNATURE PAGE TO FOLLOW]
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Respectfully submitted this 30th day of August, 2011.
/s/ Mary Donne Peters
MARY DONNE PETERS
Georgia Bar No. 573595
MICHAEL J. GORBY
Georgia Bar No. 301950
JEFFREY D. COOPER
Georgia Bar No. 478395 [email protected]
Attorneys for Plaintiff
GORBY, PETERS & ASSOCIATES, LLC
Two Ravinia Drive, Suite 1500
Atlanta, Georgia 30346
404-239-1150
404-239-1179 (fax)