Master Cutlery v. Panther - Am Complaint

Case 2:12-cv-04493-JLL-MAH Document 28 Filed 02/27/13 Page 1 of 20 PageID: 285
RUBIN, KAPLAN & ASSOCIATES

A Professional Corporation
200 Centennial Avenue, Suite 110
Piscataway, New Jersey 08854
(732) 463-7511
Attorneys for Plaintiff, Master Cutlery, Inc.
UNITED STATES DISTRICT COURT
DISTRICT OF NEW JERSEY
MASTER CUTLERY, INC.,
Plaintif4
v.
PANTHER TRADING CO., INC.,
ABC COMPANIES 1-30,
(said companies being fictitious
sellers, buyers, marketers and/or
manufacturers infringing products
obtained from Panther,
Defendants.
Civil Action No.: 12-4493 (JLL)
AMENDED COMPLAINT AND
DEMAND FOR JURY TRIAL
AMENDED COMPLAINT AND DEMAND FOR JURY TRIAL
Plaintiff Master Cutlery, Inc. (hereinafter "Master by and through its
counsel, Richard Kaplan, Esq., of Rubin, Kaplan & Associates, complain against Panther
Trading Co., Inc. (hereinafter "Panther") and ABC Companies (1-30), said companied
being fictitious sellers and/or buyers and/or marketers and/or manufacturers, of infringing
products obtained from Panther, and alleges upon knowledge as to itself and otherwise
upon information and belief as follows:
NATURE OF THE ACTION
1. This is an action for (1) Patent Infringement under 35 U.S. C. 271(a), (2)
Induced Patent Infringement under 35 U.S.C. 271(b), (3) Willful
Copyright Infringement under 17 U.S.C. 101, et ~ - , ( 4) Willful
Trademark Infringement under the Lanham Act, (5) Unfair Competition
under 15 U.S.C. 1125 (a), (6) Unfair Competition under New Jersey
Common Law, (7) Tortious Interference with Prospective Economic
Advantage under New Jersey Common Law, and (8) misappropriation of
intellectual property under New Jersey Common Law.
JURISDICTION AND VENUE
2. This Court has subject matter jurisdiction over all causes of actions set
forth herein based upon 15 U.S.C. 1121,28 U.S.C. 1331, l338(a) and
1338(b), and pursuant to the supplemental jurisdiction of this Court for all
non-federal causes of action under28 U.S.C. 1367.
3. This Court has personal jurisdiction over Defendants by virtue of, inter
alia, (a) Defendant Panther Trading Co., Inc.'s having numerous business
relations within the State of New Jersey and conducting regular and
continuous business transactions therewith, giving it the requisite
minimum contacts with the state required to be subject to jurisdiction
therein; (b) Defendant Panther Trading Co., Inc. having a place of
business at 2652 West Patapsco Avenue, Maryland 21230; (c) commission
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of tortious acts by all Defendants within the State of New Jersey and
within this Judicial District; and (d) regular and continuous transaction of
business, including the tortious acts complained of herein, within the State
ofNew Jersey and within this Judicial District.
4. Venue is proper in this judicial district and division pursuant to 28 U.S.C.
139l(b) and (c).
THE PARTIES TO THE COMPLAINT
5. Plaintiff Master Cutlery, Inc. ("Master Cutlery") is a New Jersey
Corporation with its principal place of business at 700 Penhom Avenue,
Secaucus, New Jersey 07094.
6. Defendant Panther Trading Co., Inc. ("Panther") is believed to be a
Maryland Corporation, having a principal place of business at 2652 West
Patapsco Avenue, Baltimore, Maryland 21230.
7. Defendants ABC Companies are fictitious persons or entities whose
present identity and address is unknown, who have also violated Plaintiff's
rights as set forth herein, or who assisted, conspired, or otherwise
cooperated with the other Defendants in the acts complained of herein.
BACKGROUND
8. On December 2, 2003, Victor Lee, President of Master Cutlery, Inc., filed
a patent application with the United State Patent and Trademark Office
("USPTO"), entitled "Knife," which was granted United States
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Application Serial No. 29/187/429 (the "429 application"). The claim was
successfully prosecuted, and on September 27, 2005 in United States
Patent No. US D 510, 009S (the "Patent") was issued.
9. Master Cutlery is the exclusive owner of the Patent and has the right to
sue and recover damages for infringement thereof.
10. In or about early 2003, through its market brand, Master Cutlery, began
selling commercial embodiments of the claimed inventions in the Patent
while such patents were pending, under the product brand name,
"Cyclone." Master Cutlery properly marks all its cutlery products in
accordance with 35 U.S.C. 287.
11. Defendant Panther is a manufacturer and/ or distributor of cutlery products.
12. Master Cutlery learned in 2011 that Panther had been offering for sale and
selling such a nearly identical product to Master Cutlery's three (3) blade
folding knife under the name "Skull Pirate 3 Blade Folding Knife," which
it has introduced to the market.
FIRST CAUSE OF ACTION
DIRECT AND WILLFULL PATENT INFRINGEMENT UNDER 35 U.S.C. 271(a)
13. Paragraphs 1 through 12 are realleged and incorporated herein by
reference.
14. The claims of the Patent are presumed valid pursuant to 35 U.S.C. 282,
and are valid.
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15. Panther, in violation of 35 U.S.C. 271 (a), has infringed and is currently
infringing, contributorily infringing and/or inducing a third party to
infringe, at least one or more of the claims of the Patent, either literally or
under the Doctrine of Equivalents, by causing to be made, using, offering
to sell, selling and/or importing into the United States, without license or
authority, within this Judicial District and elsewhere, the Infringing
Product, which is covered by the Patent, and/or contributing towards
and/or inducing a third party to do the same.
16. In particular, each of the Infringing Products embodies a three blade
folding knife circular in design wherein each of the three blades operate
independently with any or all of the blades in an open or closed. position as
recited by the Patent.
17. The Infringing Products further embody each of the remaining elements
recited by clalrus of the Patent.
18. Panther Trading purchased products from Master Cutlery until2005.
19. Panther Trading had purchased the patented Cyclone (item #VL-03) on
numerous occasions, and knew it was a patented product so its
infringement was willful.
20. Panther intentionally caused to be made, used, offered to sell, sold and/or
imported into the United States the Infringing Products, with actual
knowledge, and/or knowledge imputed to it, that such products embody at
least one of the clairus of the Patent.
5
21. Panther has infringed, and upon infonnation and belief, will continue to
infringe, the claims of the Patent by the use, manufacture, offer for sale,
. sale, and/or importation of the Infringing Products.
22. As a result of Panther's actions, Master Cutlery has suffered injury,
including irreparable injury, and damages, including lost profits,
reasonable royalties, and other damages as set forth herein.
SECOND CAUSE OF ACTION
DIRECT AND WILLFUL COPYRIGHT INFRINGEMENT UNDER 17 U.S.C.
101. et seq.
23. Paragraph 1 through 22 are realleged and incorporated herein by
reference.
24. Plaintiff holds several copyrights, among them VAl-818-540, VAl-257-
089, VAl-293-258, VA1-771-004, VAl-382-077, VA1-858-203, and
V Al-818-424 for the following:
a. Spider Folding Knife (MT-044) (V Al-257-089)
b. Scorpion Folding Knife (MT-043X) (V Al-293-258)
c. Electric Flash Knife Item (VL-15) (V A1-771-004)
d. Spider Attack Knife (TF-553) (V Al-818-540)
e. Chopper Flame Folder (MT-158Bk) (V A1-382-077)
f. Camo Scorpion (TF-648) (V A1-858-203)
g. Dragon with Flame (fF-707) (VAl-818-424)
6
25. Master Cutlery has expended significant resources promoting its
ownership of its copyrights. In view of the associated niche market, most
persons and businesses in the cutlery/specialty knives industry are aware
of Master Cutlery's technology and its rights under the copyrights.
26. Defendant Panther has willfully infringed the copyrights of Master Cutlery
by copying copyrighted designs belonging to Master Cutlery, specifically:
a. Spider Folding Knife (MT-044) (11 Al-257-089)
b. Scorpion Folding Knife (MT -043X) (11 Al-293-258)
c. Electric Flash Knife Item (VL-15) (11 Al-771-004)
d. Spider Attack Knife (TF-553) (11 Al-818-540)
e. Chopper Flame Folder (MT-158Bk) (11 Al-382-077)
f. Camo Scorpion (TF-648) (11 Al-858-203)
g. Dragon with Flame (TF-707) (11 Al-818-424)
least one of the claims of the copyright.
28. Defendant Panther Trading had purchased these items from plaintiff and
knew they were copyrighted products and so Panther's infringement was
willful.
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TimiD CAUSE OF ACTION
UNFAIR COMPETITION WIDER 15 U.S.C. 1125(a)
reference.
31. Master Cutlery has expended significant resources promoting its
ownership of the Patent, and the exclusive rights to the technology
covered by the claims therein. In view of the associated niche market,
most persons and businesses in the cutlery/specialty knives industry are
aware of Master Cutlery's technology and its rights under the patent.
32. The Defendants collective actions regarding the Infringing Products, as
described herein, are likely to have misled, and will continue to mislead
many persons purchasing specialty knives to believe the Defendants have
received permission, license, or other consent from Master Cutlery to
make, use, sell, offer for sale, or import into the United States, the
Infringing Products.
33. The Defendant's use of the Infringing Products, through sale, offering for
sale, and the like, is likely to deceive relevant consumers as to the
Defendant's affiliation with Master Cutlery or as to a sponsorship or an
approval of the Infringing Products by Master Cutlery.
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34. The Defendants will, if not preliminarily and permanently enjoined by the
Court, continue its acts of unfair competition as set forth in the Lanham
Act, thereby deceiving the public, trading on the exclusive rights granted
to Master Cutlery in the form of the patent, and causing Master Cutlery
immediate and irreparable harm, damage and injury.
3 5. As a result of the Defendants' collective actions, Master Cutlery has
suffered injury, including irreparable injury, and damages, including lost
profits, reasonable royalties, and other damages as set forth herein.
FOURTH CAUSE OF ACTION
DIRECT AND WILLFUL TRAPEMARK VIOLATIONS
36. Paragraphs 1 through 35 are real1eged an incorporated herein by reference.
37. Plaintiff Master Cutlery is the holder of the "Sheriff' trademark which
was filed on February 8, 2011 and registered on February 7, 2012, serial
number 85236751, and Panther has infringed this trademark with the
following:
1. K-1 OS 6" Black Sheriff Two-Toned Tactical Action Assisted Knife
2. K-242 8" Sheriff Tactical Rescue Black Folding Knife-Scimitar
Blade
3. K-253 6" Sheriff Handcuffs Action Assisted Knife
4. K-254 6" Sheriff Handcuffs Action Assisted Knife- Gray
5. K-80 9" Sheriff Tactical Rescue Folding Knife (112 Lb. of Power)
6. KX-100 Karambit Rescue Action Assisted Knife- Sheriff Black
9
7. P-527-B-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife-
Black Sheriff
8. P-527-GY-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife
-Grey Sheriff
9. P-528-SH-BK 7.5" Action Assisted Rescue Knives- Sheriff
10. P-528-SH-GY 7.5" Action Assisted Rescue Knives - Sheriff
(Grey)
11. P-529-SH-BK 9" Black Sheriff Tactical Action Assisted Folding
Knife
12. P-529-SH-GY 9" Grey Sheriff Tactical Action Assisted Folding
Knife
Knife "New"
Knife "New''
Knife
Knife
3 8. Master Cutlery has expended significant resources promoting its
ownership of the trademarks. In view of the associated niche market, most
persons and businesses in the cutlery/specialty knives industry are aware
of Master Cutlery's technology and its rights under the trademark.
10
least one of the claims of the trademark.
40. Such infringing use of the plaintiffs trademarks was willful.
FIFTH CAUSE OF ACTION
UNFAIR COMPETITION UNDER NEW JERSEY COMMON LAW
reference.
43. The aforementioned collective acts of the Defendants constitute unfair
competition and unfair business practices contrary to the common law of
New Jersey.
Court, continue its acts of unfair competition as defined by the common
law of New Jersey, thereby deceiving the public, trading on the exclusive
rights granted to Master Cutlery in the form of the patent, and causing
Master Cutlery immediate and irreparable harm, damage and injury.
11
45. As a result of the Defendants' collective actions, Master Cutlery has
suffered injury, including irreparable injury, aud damages, including lost
profits, reasonable royalties, aud other damages as set forth herein.
SIXTH CAUSE OF ACTION
TORTIOUS INTERFERENCE WITH PROSPECTIVE ECONOMIC
ADVANJAGE
46. Paragraphs 1 through 45 are realleged aud incorporated herein by
reference.
4 7. The patent grants Master Cutlery the right to exclude others from making,
using, selling, offering for sale, or selling the claimed invention
throughout the United States or importing the claimed invention into the
United States pursuant to 35 U.S. C. 154.
48. Master Cutlery enjoys a protectable right in the form of a United States
patent, copyrights aud trademarks aud the claimed invention recited by the
claims of the patent, copyrights aud trademarks which provides Master
Cutlery reasonable expectation of au economic advantage to the entirety of
a marketplace covered by such claims.
49. Any prospective consumers seeking to purchase a product or device
embodying the claims of the patent would need permission, consent or
license from Master Cutlery to acquire such a product; aud accordingly,
Master Cutlery has a reasonable expectation of economic advantage from
12
any person seeking to acquire a product embodying the claims of the
patent.
50. The Defendants, as a result of their collective actions set forth herein, have
interfered with Master Cutlery's protectable right in the claimed invention
and more specifically, they have disrupted Master Cutlery's enjoyment of
its exclusive rights under the patent.
51. The Defendants' collective actions were committed with malice,
willfulness and the intent to interfere with Master Cutlery's exclusive
rights under the patent, without reasonable and lawful justification or
excuse.
52. But for the Defendants' collective actions, Master Cutlery had more than a
reasonable expectation, in view of its monopolistic rights under the patent,
that every prospective consumer who showed interest in acquiring
Infringing Products from the Defendants would have acquired Master
Cutlery's patented product(s) instead.
53. The Defendants' collective actions constitute a statutory violation under
35 U.S. C. 271, the Lanham Act and 17 U.S. C. 101, e t ~ . and as such,
transgress generally accepted standards of common morality and law.
Court, continue to tortiously interfere with Master Cutlery's prospective
economic advantage as granted by the patent, copyrights and trademarks
and causing Master Cutlery inunediate and irreparable harm, damage and
injury.
13
55. Defendants have engaged in a pattern of infringement of other products
created with notable unique design features and offered for purchase by
plaintiff by copy without consent, the following:
a) a belt knife
b) a barber knife, with multiple color variations
c) butterfly shaped throwing knife
d) "rescue action" knife- black
e) "rescue action" knife - red
f) "rescue action" knife- orange
g) "action assisted" knife - red
h) "skull and snake" throwing knife.
i) spider folding knife (MT-044) (V Al-257-089)
j) scorpion folding knife (MT-043X) (V Al-293-258)
k) electric flash knife Item (VL-15) (V Al-771-004)
I) spider attack knife (fF-553)(V Al-818-540)
m) K-105 6" Black Sheriff Two-Toned Tactical Action Assisted Knife
n) K-242 8" Sheriff Tactical Rescue Black Folding Knife-Scimitar
Blade
o) K-253 6" Sheriff Handcuffs Action Assisted Knife
p) K-254 6" Sheriff Handcuffs Action Assisted Knife- Gray
q) K-80 9" Sheriff Tactical Rescue Folding Knife (1/2 Lb. of Power)
r) KX-1 00 Karambit Rescue Action Assisted Knife- Sheriff Black
14
s) P-527-B-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife-
Black Sheriff
t) P-527-GY-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife
- Grey Sheriff
u) P-528-SH-BK 7.5" Action Assisted Rescue Knives- Sheriff
v) P-528-SH-GY 7.5" Action Assisted Rescue Knives - Sheriff
(Grey)
w) P-529-SH-BK 9" Black Sheriff Tactical Action Assisted Folding
Knife
x) P-529-SH-GY 9" Grey Sheriff Tactical Action Assisted Folding
Knife
y) P-530-SH-BK T' Black Sheriff Tactical Action Assisted Folding
Knife "New"
z) P-530-SH-GY 7" Grey Sheriff Tactical Action Assisted Folding
Knife "New''
aa) P-569-SH-BK 9" Black Sheriff Tactical Action Assisted Folding
Knife
bb) P-569-SH-GY 9" Grey Sheriff Tactical Action Assisted Folding
Knife
cc) Chopper Flame Folder (MT-158Bk) (VA1-382-077)
dd) Camo Scorpion (TF-648) (V A1-858-203)
ee) Dragon with Flame (TF-707) (V Al-818-424)
ff) Battle Hawk (VL-0 1)
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gg) Jaws Folder (FC-1)
SEVENTH CAUSE OF ACTION
MISAPPROPRIATION OF INTELLECTUAL PROPERTY
reference.
58. The aforementioned collective acts of the Defendants constitute
misappropriation of intellectual property under New Jersey Common Law.
59. The Defendants will, if not enjoined by the Court, coutinue to benefit by
the information gained through misappropriation of corporate proprietary
materials, and causing Master Cutlery immediate and irreparable harm,
damage and injury.
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PRAYER FOR RELIEF
WHEREFORE, Plaintiff demands judgment against each of the defendants as follows:
A. a permanent injunction restraining Defendants, their respective officers,
agents, servants, employees, attorneys, and those in active concert or
participation with them, or any of them who receive actual notice of the
order by personal service or otherwise, from:
l. making, using, selling, offering for sale, or importing into the United
States, the Infringing Products; and
2. assisting or inducing others to make, use, sell, offer for sale, or import into
the United States, the Infringing Products;
B. an award of damages for Defendants' willful acts of liability under 35
U.S. C. 271, in accordance 35 U.S.C. 284, and in particniar, an award
of damages adequate to compensate for the willful infringement but in no
event less than a reasonable royalty for the use made of the Infringing
Products, together with interest and costs as fixed by the Court;
C. an award of increased damages under 35 U.S.C. 284, including three
times the amount found or assessed in paragraph (B) above;
D. an award of damages inclusive of any actual damages suffered by Plaintiff
as a result of Defendants' liability stated hereinabove, including arising
out of Defendants' liability arising out of Counts I- VII, and other Counts
that may be added at a later date once additional information is obtained;
E. an award of damages from Defendants for their liability under 43(a) of
the Lanham Act, including any profits made by Defendants in connection
17
with its unlawful activity, any damages sustained by Plaintiff as a result of
Defendants' unlawful activity, and any costs incurred with pursuing this
Action, including Court costs, attorney's fees, and additional costs related
thereto, pursuant to 15 U.S. C. lll7(a);
F. an award of damages for Defendants' acts of liability under 17 U.S.C.
504, in accordance 17 U.S.C. 504, and in particular, statutory damages
of $150,000 per infringement of willful violation, or an award of damages
adequate to compensate for the infringement but in no event less than a
reasonable royalty for the use made of the Infringing Products, together
with interest and costs as fixed by the Court;
G. an award of all damages incurred, directly or indirectly, as a result of
Defendants' unlawful acts set forth herein, said damages to be trebled at
the discretion of the Court pursuant to N.J.S.A. 56:4-2;
R a determination by the Court that Defendants' unlawful actions set forth
herein are exceptional, warranting an award of damages to Plaintiffs for all
reasonable attorney's fees incurred by Plaintiffs, pursuant to 35 U.S.C.
285 and 15 U.S.C. 1117(a); 17 U.S.C. 101, et seq.
I. an award of prejudgment and post-judgment interest and costs of suit;
J. an award of punitive damages in an amount to be determined by the Court,
but not less than $1,000,000.00, for Defendants' deliberate and willful
acts;
K. an award of actual and compensatory damages in an amount not presently
known, but to be computed during the pendency of this action; and
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L. an award of any such other and further relief as this Court deems just and
equitable.
DEMAND FOR JURY
Plaintiff, Master Cutlery, hereby demands trial by jury as to all issues in the
Complaint.
Date: February 21, 2013
Respectfully submitted,
By:/s/ Evelyn A. Donegan EAD 6720
EVELYN A. DONEGAN, ESQ.
ATTORNEYSFORPLAINTITF
200 Centennial A venue, Suite 110
732-463-7511
edonegan@rkalaw.com (Email)
19
CERTIFICATION PURSUANT TO LOCAL CML RULE 11.2
The undersigned hereby certifies, pursuant to Local Civil Rule 11.2, that with
respect to the matter in controversy herein, neither plaintiff nor plaintiff's attorney is
aware of any other action pending in any court, or any pending arbitration or
administrative proceeding, to which this matter is subject.
Date: February 21, 2013
Respectfully submitted,
By:/s/ Evelyn A. Donegan EAD 6720
EVELYN A. DONEGAN, ESQ.
ATTORNEYS FOR PLAINTIFF
200 Centennial Avenue, Suite li 0
732-463-7511
edonegan@rkalaw.com (Email)
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Case 2:12-cv-04493-JLL-MAH Document 28 Filed 02/27/13 Page 1 of 20 PageID: 285

RUBIN, KAPLAN & ASSOCIATES

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