AGL v. Lsil - Complaint
AGL v. Lsil - Complaint
AGL v. Lsil - Complaint
10
WESTERN DIVISION
11
12
13
14
15
16
17
18
19
20
21
Plaintiff,
CASE No.:
2:15-cv-2128
22
23
24
25
26
27
28
COMPLAINT FOR DECLARATORY JUDGMENT AND DAMAGES
2 hereby brings the following complaint for declaratory judgment and damages against Lsil
3 & Co., Inc. (Lsil) and Lori Silverman (Silverman) (collectively Defendants) and
4 avers as follows:
5
6
1.
7 Defendants trademarks, including U.S. Trademark Registration No. 4,362,523, and for
8 damages sustained by AGL resulting from Defendants tortious interference of AGLs
9 contractual relationship with its clients.
THE PARTIES
10
11
2.
AGL is an Italian Societ per Azioni located at Via Bettino Craxi 1, 63812
3.
4.
16 the state of New York. On information and belief, defendant Silverman is the founder
17 and president of Lsil & Co., Inc.
18
19
5.
This action arises under the Lanham Act of 1946. This Court has subject
20 matter jurisdiction over the action pursuant to 28 U.S.C. 1331and 1367(a) based on an
21 actual controversy between AGL and Defendants for claims under the Lanham Act of
22 1946, 15 U.S.C. 1051, et seq. AGL is seeking declaratory relief of non-infringement
23 pursuant to the Declaratory Judgment Act, 28 U.S.C. 2201 and 2202.
24
6.
This Court has subject matter jurisdiction over the claims set forth in this
7.
27
8.
The Court has personal jurisdiction over Lsil because, on information and
1 business in this judicial district by offering its product showroom through ShopTheFloor
2 located at www.shopthefloor.com, which is operated by Lsils representative
3 ShopTheFloor (also known as MagicOnline). ShopTheFloors corporate office is located
4 in this judicial district at 2501 Colorado Avenue, Suite 280, Santa Monica, California
5 90404.
6
9.
7 and belief, Silverman, as the president of Lsil, regularly and systematically directs and
8 manages Lsils business activities in this judicial district through Lsils representative
9 ShopTheFloor (also known as MagicOnline) located at 2501 Colorado Avenue, Suite
10 280, Santa Monica, California 90404.
FACTUAL BACKGROUND
11
12
10.
13 in creating footwear. Softness and the attention for a comfortable fit are the priorities for
14 every AGL footwear creation over the last 50 years.
15
11.
16 in the business of footwear design. Lsils footwear make use of the most popular,
17 timeless patterns that have been fashionable for decades such as paisley, glen plaid,
18 zebra, polka dot, checkers and camouflage.
19
20
12.
21 Waldbaum of Eaton & Van Winkle LLP, sent a demand letter to AGL (AGL Demand
22 Letter, Exhibit A) alleging that AGLs Double Sole Oxford (offered for sale through
23 Nordstrom) and Lace Up Oxford Flats (offered for sale through Bloomingdales/Macys)
24 (collectively Accused Products) infringe Defendants allegedly protected CAMO
25 design sole. Defendants claimed that Silverman developed a complete line of protected
26 shoe sole designs and [n]o one but Ms. Silverman has any rights to these concepts,
27 designs and structures.
28
3
13.
Defendants set out in the AGL Demand Letter a list of Defendants U.S.
2 trademarks, U.S. design patents, pending U.S. design patent applications, and European
3 design patents. Upon information and belief, Defendants asserted that AGL allegedly
4 infringed U.S. patent applications and European design patents in the United States
5 knowing that neither the U.S. patent applications nor the European patents constitute
6 enforceable patent rights in the United States.
7
14.
Lsils assertions in the AGL Demand Letter were vague and ambiguous and
8 failed to identify any specific U.S. trademark registration or U.S. design patent that
9 provides any bases for its assertion that AGL has allegedly infringed such trademark or
10 patent.
11
15.
16.
In addition to the AGL Demand Letter, Defendants also sent a demand letter
17.
Defendant sent a similar demand letter dated March 11, 2015 to Nordstrom
18.
10
DEFENDANTS GOODS
11
19.
20.
15 application for the Camouflage Design seeking registration on the Principal Register.
16 The United States Patent and Trademark Office (USPTO), however, issued a final
17 refusal to Defendants application because the proposed Camouflage Design is merely a
18 decorative or ornamental feature of the goods and it does not function as a trademark to
19 identify and distinguish applicants goods from those of others and to indicate the source
20 of applicants goods.
21
21.
COUNT ONE
24
25
22.
23.
2 Defendants regarding the alleged infringement of the Camouflage Design by the Accused
3 Products.
4
24.
The Accused Products do not infringe the Camouflage Design because the
25.
26.
11 and will not infringe the Camouflage Design; and because the Camouflage Design does
12 not function as a trademark, U.S. Trademark Registration No. 4,362,523 should be
13 cancelled pursuant to 15 U.S.C. 1119.
14
COUNT TWO
15
16
27.
28.
29.
30.
27 suffering damages including harm to its reputation, loss of sales and related expenses in
28 an amount to be determined at trial.
6
31.
32.
Defendants conduct has injured AGL and, unless enjoined, will continue to
33.
6 claiming the Camouflage Design as trademark and making statements that are fraudulent,
7 malicious, misleading, or deceptive to any of AGLs clients.
8
COUNT THREE
10
11
34.
35.
14 and has been finally rejected by the USPTO for registration on the Principle Register, yet
15 Defendants have knowingly and intentionally claimed protectable trademark rights to the
16 Camouflage Design to hamper competition.
17
36.
The aforesaid acts by Defendants are unlawful and are likely to cause injury
18 to AGLs reputation and result in Defendants unfairly competing with AGL in violation
19 of California Business and Professions Code 17200, et seq. (Californias Unfair
20 Competition Law, the UCL)
21
37.
Defendants conduct has injured AGL and, unless enjoined, will continue to
38.
COUNT FOUR
39.
40.
The aforesaid acts by Defendants are unlawful and likely to cause injury to
6 AGLs reputation and constitute unfair competition under the common law of the State of
7 California.
8
41.
Defendants acts have caused damage to AGLs goodwill and reputation and
42.
13
14
15
A.
16
B.
Declaring that the Accused Products do not infringe and will not infringe
C.
Declaring that the Camouflage Design cannot function as trademark and its
D.
E.
F.
G.
H.
6 awards;
7
I.
J.
Granting AGL any other and further relief as the Court deems just and
9 proper.
10
11
12
13
14
15
16
17
By:
18
19
20
21
22
23
24
25
26
27
28
9
1
2
3
4
5
6
7
8
9
By:
10
11
12
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
10
EXHIBIT A
EXHIBIT B
EXHIBIT C