case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 1 of 30
UNITED STATES DISTRICT COURT NORTHERN DISTRICT OF INDIANA FORT WAYNE DIVISION
TIPPMANN SPORTS, LLC ) (f/k/a TIPPMANN PNEUMATICS, LLC) ) and CHEROKEE AIR PRODUCTS, INC. ) (f/k/a TIPPMANN PNEUMATICS, INC.), ) ) Plaintiffs, ) ) vs. ) Civil Action No. 1:04cv436 ) BT PAINTBALL DESIGNS, INC., ) JURY TRIAL DEMANDED f/k/a BEN TIPPMANN ENTERPRISES, ) LTD., BENJAMIN R. TIPPMANN, and ) NATIONAL PAINTBALL SUPPLY, ) INC., ) ) Defendants. )
PLAINTIFFS’ FIRST AMENDED COMPLAINT
Tippmann Sports, LLC f/k/a Tippmann Pneumatics, LLC (“Tippmann”) and Cherokee
Air Products, Inc. f/k/a Tippmann Pneumatics, Inc. (“Cherokee”), by counsel, and for their
Complaint against the Defendants, BT Paintball Designs, Inc. (“BT”) f/k/a Ben Tippmann
Enterprises, Ltd., Benjamin R. Tippmann, and National Paintball Supply, Inc. (“National
Paintball”) file their “First Amended Complaint” and allege and state:
THE PARTIES
1. Tippmann is a limited liability company organized under the laws of Delaware.
Tippmann has its principal place of business in Fort Wayne, Indiana. Tippmann was formed in
June 16, 2004. Tippmann Sports, LLC was formerly known as Tippmann Pneumatics, LLC and
changed its name to Tippmann Sports, LLC on or about August 31, 2004. case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 2 of 30
2. Cherokee is a corporation organized and existing under the laws of Indiana.
Cherokee has its principal place of business in Fort Wayne, Indiana. Cherokee was formerly
Tippmann Pneumatics, Inc. Cherokee is a substantial owner of Tippmann. Tippmann
Pneumatics, Inc. changed its name to Cherokee Air Products, Inc. on or about July 22, 2004.
3. Upon information and belief, BT is a corporation organized under the laws of
Indiana and has its principal place of business in Fort Wayne, Indiana. Prior to April 21, 2004,
BT was known as Ben Tippmann Enterprises, Ltd.
4. Upon information and belief, BT conducts business in this judicial district through the marketing and sale of its products. BT is a direct competitor of Tippmann.
5. Benjamin R. Tippmann is an Indiana citizen residing at 9837 St. Joe Road, Fort
Wayne, Indiana. Benjamin R. Tippmann is the owner of and is employed by BT. Upon information and belief, Benjamin R. Tippmann is the exclusive owner of BT, and BT is the alter ego of Benjamin R. Tippmann. Upon information and belief, Benjamin R. Tippmann directs and participates in the actions of BT. Prior to working for BT, Benjamin R. Tippmann was an employee of Tippmann Pneumatics, Inc. n/k/a Cherokee.
6. Upon information and belief, National Paintball is a corporation organized under the laws of Delaware and has its principal place of business in Sewell, New Jersey.
7. Upon information and belief, National Paintball conducts business in this judicial district through the marketing and sale of products. Among other things, National Paintball manufactures, imports, sells, and/or offers to sell products to BT that infringe Tippmann’s intellectual property. By so doing, National Paintball is competing with Tippmann.
-2- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 3 of 30
8. National Paintball’s website provides it has dealers located in Indiana and this judicial district. Materials from National Paintball’s website regarding (among other things) its
Indiana dealers are attached as Exhibit 5.
JURISDICTION AND VENUE
9. This action arises under the patent laws of the United States pursuant to 35 U.S.C.
§1, et seq., trademark and unfair competition laws of the United States pursuant to 15 U.S.C.
§1051 et seq., Indiana statutory law, and the Indiana common law.
10. This Court has jurisdiction over the subject matter of this case pursuant to 15
U.S.C. §1121, 28 U.S.C. §§1331 and 1338, and supplemental jurisdiction pursuant to 28 U.S.C.
§1367.
11. Venue is proper in this district pursuant to 28 U.S.C. §1391(b) and §1400(b).
ALLEGATIONS COMMON TO ALL COUNTS
The Business of Tippmann and Cherokee
12. For almost 20 years, Tippmann and Cherokee f/k/a Tippmann Pneumatics, Inc. have manufactured high quality paintball equipment, parts and accessories. Prior to June 17,
2004, Cherokee (f/k/a Tippmann Pneumatics, Inc.) manufactured and sold these products. On
June 17, 2004, Cherokee completed a UNIT Purchase and Redemption Agreement that resulted in transferring its business intellectual property and the goodwill associated therewith, to
Tippmann. Since that time, Tippmann manufactures and sells paintball equipment, parts, and accessories.
13. Tippmann’s products are sold through a wide network of dealers throughout the
United States and its products are well known and highly desirable in the paintball industry.
Tippmann’s products are also well known and highly desirable to consumers. Defendant
National Paintball has been a distributor of Tippmann’s products for several years.
-3- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 4 of 30
14. To protect its intellectual property, goodwill, and name recognition, Tippmann has various patents and trademarks.
Tippmann's Patents
A. U.S. Patent No. 4,819,609.
15. On April 11, 1989, United States Patent No. 4,819,609 (the “’609 Patent”), entitled “Automatic Feed Marking Pellet Gun,” was duly and legally issued to Dennis J.
Tippmann. The ’609 Patent was subsequently assigned to Tippmann on or about June 17, 2004.
A copy of the '609 Patent is attached as Exhibit 1.
16. The ’609 Patent relates to a compressed gas power marking gun for the firing of pellets and similar projectiles (i.e. paintballs) that are spherical and sufficiently fragile so as to break upon impact.
17. Since June 17, 2004, Tippmann has and is still the owner by assignment of the entire right, title, and interest in and to the ’609 Patent.
B. U.S. Patent No. 5,383,442.
18. On January 24, 1995, U.S. Patent No. 5,383,442 (the “’442 Patent”) entitled
“Pump Action Marking Pellet Gun” was duly and legally issued to Dennis J. Tippmann.
The ’442 was subsequently assigned to Tippmann on or about June 17, 2004. A copy of the ’442
Patent is attached as Exhibit 2.
19. The ’442 Patent relates to a compressed powered gun that has a receiver with a compressed gas source fastened to one end of the gun and an elongated barrel through which projectiles may be sequentially discharged.
20. Since June 17, 2004, Tippmann has been and is still the owner by assignment of the entire right, title and interest in the ’442 Patent.
-4- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 5 of 30
Tippmann’s Trademark 21. Tippmann and its predecessor in interest, Cherokee (f/k/a Tippmann Pneumatics,
Inc.) have sold paintball equipment, parts and accessories under the trademark TIPPMANN throughout the United States. Tippmann is the owner of U.S. Trademark Application No.
78/392,301 for the trademark TIPPMANN for paintball markers, paintball ammunition; paintball marker power supplies, namely, projectile feeders, rear velocity adjusters, regulators, side/rear cocking systems, sight rails, stocks, trigger upgrades, barrel adapters, barrels, drop forward/tank adapters, expansion chambers, fire power upgrades, grips, cases miscellaneous fittings; grenades containing paint or colorant and sports goggles for paintball games (the “TIPPMANN Mark”).
22. Since at least as early as April, 1988, and long prior to BT’s, Benjamin R.
Tippmann’s, and National Paintball’s acts complained of in this Complaint, Tippmann has used the TIPPMANN Mark in interstate commerce throughout the entire United States to identify and distinguish its goods from the products provided by others.
23. Tippmann has spent and continues to spend money using, advancing, promoting, and advertising the TIPPMANN Mark and the goods sold thereunder and, as a result of such advertising and of the reputation of Tippmann’s products, the TIPPMANN Mark has attained goodwill among consumers.
24. As a result of the long-standing manufacture and sales of its products, as well as the use of the TIPPMANN Mark in connection with the sales and offerings for sale of its products, TIPPMANN brand products have earned commercial success, recognition, and acceptance in the marketplace.
25. The TIPPMANN Mark and the goodwill of the business associated therewith are of inestimable value to Tippmann.
-5- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 6 of 30
26. By the acts described below, BT and Benjamin R. Tippmann have willfully infringed the TIPPMANN Mark, engaged in unfair and deceptive practices, and deliberately traded on Tippmann’s goodwill and reputation, to Tippmann’s irreparable injury.
27. By the acts described below, National Paintball has willfully infringed the
TIPPMANN Mark, engaged in contributory infringement of the TIPPMANN Mark, engaged in unfair and deceptive practices, and deliberately traded on Tippmann’s goodwill and reputation, to Tippmann’s irreparable injury.
BT’s and Benjamin R. Tippmann’s Relationship to Cherokee and Tippmann 28. Defendant Benjamin R. Tippmann was employed by Tippmann Pneumatics, Inc. n/k/a as Cherokee (Tippmann's predecessor in interest) for several years. Benjamin R. Tippmann was terminated from Tippmann Pneumatics, Inc. n/k/a Cherokee on or about May 2003.
Benjamin R. Tippmann acted Cherokee’s Sales Manager. Among other things, Benjamin R.
Tippmann was responsible for overseeing Cherokee’s sales personnel.
29. While he was an employee of Cherokee, Benjamin R. Tippmann breached his fiduciary duties owed to Cherokee, committed constructive and actual fraud and committed criminal mischief. As discussed more fully below, Benjamin R. Tippmann secretly negotiated a fraudulent kickback scheme with a Cherokee sales person, Kyle L. Coon. Under this scheme,
Benjamin R. Tippmann received monetary kickbacks that he should not have received. In negotiating the scheme and operating under it, Benjamin R. Tippmann placed his own personal interests above the interests of Cherokee and harmed Cherokee.
30. After his termination, Benjamin R. Tippmann immediately formed BT for the express purpose of competing with Tippmann.
-6- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 7 of 30
31. BT began doing business in early 2004. BT now purports to be in the business of selling paintball markers or guns and paintball accessories. Materials from BT’s current website regarding some of BT’s infringing paintball markers are attached as Exhibit 9.
32. In competing against Tippmann, BT and Benjamin R. Tippmann have infringed the ’609 Patent, the ’442 Patent, usurped Tippmann’s goodwill, infringed Tippmann’s trademarks, violated Tippmann's intellectual property rights and have competed unfairly against
Tippmann.
National Paintball’s Relationship with Tippmann and the Defendants 33. National Paintball has been a distributor of Tippmann products for approximately fifteen (15) years. Among other things, National Paintball distributes and sells Tippmann products protected by Tippmann’s intellectual property, including the ’609 Patent, the ’442
Patent, and the TIPPMANN mark.
34. While simultaneously acting as Tippmann’s distributor, National Paintball began to manufacture, import, sell, and/or offer to sell paintball markers to BT and Benjamin R.
Tippmann that infringe the ’609 Patent and the ’442 Patent. As discussed above, BT is a direct competitor of Tippmann.
35. Upon information and belief, National Paintball manufactures, imports, sells, and/or offers to sell the BT-16 line of paintball markers and the BT-4 line of paintball markers to
Defendant BT. The BT-4 line of paintball markers was introduced in approximately July or
August of 2005. Photographs depicting the “BT-4: Combat” and product packaging are attached as Exhibit 6.
36. As further addressed below, National Paintball is infringing the ’609 Patent and the ’442 Patent by importing, selling, and/or offering to sell within this judicial district and
-7- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 8 of 30
elsewhere compressed paintball markers/guns covered by one or more claims of the ’609 Patent and the ’442 Patent.
37. Upon information and belief, the BT-16 and BT-4 line of paintball markers are manufactured in Taiwan.
38. Upon information and belief, National Paintball has set Benjamin R. Tippmann up in business to compete with Tippmann and sell products manufactured by National Paintball but then labeled under marks and names that infringe Tippmann’s rights, which are then in turn sold by National Paintball. Specifically, National Paintball has assisted Benjamin R. Tippmann in forming BT and has assisted Defendants’ with the marketing, sale and promotion of BT’s products with the express purpose and intent to unfairly compete against Tippmann. National
Paintball, as a distributor of BT’s products has also advertised and promoted for sale and upon information and belief sold BT’s products under marks and names that infringe the TIPPMANN
Mark.
39. As further addressed below, National Paintball has willfully infringed the
TIPPMANN Mark, engaged in contributory infringement of the TIPPMANN Mark, engaged in unfair and deceptive practices, and deliberately traded on Tippmann’s goodwill and reputation.
COUNT I
Patent Infringement Against BT and Benjamin R. Tippmann
40. Tippmann incorporates by reference paragraphs 1 through 39 above, as if fully set forth in this paragraph.
41. The ’609 Patent and the ’442 Patent are presumed to be valid.
42. Tippmann is the owner by assignment of all rights, title, and interest in and to the ’609 Patent and the ’442 Patent.
-8- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 9 of 30
43. BT has been, and is now, willfully and deliberately infringing the ’609 Patent and the ’442 Patent by using, selling and/or offering to sell within this judicial district and elsewhere compressed paintball guns covered by the claims of the ’609 Patent and the ’442 Patent.
Materials from BT’s prior website regarding some of its infringing products are attached as
Exhibit 3, and materials from BT’s current website regarding some of its infringing products are attached as Exhibit 9. Among other things, these materials show that BT’s infringing products have been and continue to be sold throughout the United States by BT.
44. Benjamin R. Tippmann is personally liable for BT's infringement of the ’609
Patent and the ’442 Patent because he is inducing BT's infringement of the ’609 Patent and the ’442 Patent and because BT is the alter ego of Benjamin R. Tippmann.
45. Benjamin R. Tippmann and BT have been on constructive and/or actual notice of the ’609 Patent and the ’442 Patent. Tippmann provides notice to the public that its products are patented under the ’609 Patent by fixing on the products or the packaging the word “patent” or the abbreviation “pat.” with the applicable patent number. BT and Benjamin R. Tippmann are also on actual notice by virtue of this Complaint. Despite this notice, BT and Benjamin R.
Tippmann have willfully an deliberately persisted in its infringement.
46. As a consequence of BT’s acts of infringement, Tippmann has suffered irreparable damage to its property in an amount yet to be determined, and Tippmann will continue to be damaged by such acts in the future.
COUNT II
Patent Infringement Against National Paintball
47. Tippmann incorporates by reference paragraphs 1 through 46 above, as if fully set forth in this paragraph.
-9- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 10 of 30
48. The ’609 Patent and the ’442 Patent are presumed to be valid.
49. Tippmann is the owner by assignment of all rights, title, and interest in and to the ’609 Patent and the ’442 Patent.
50. National Paintball has been, and is now, willfully and deliberately infringing the ’609 Patent and the ’442 Patent by making, using, importing, selling and/or offering to sell within this judicial district and elsewhere compressed paintball guns covered by the claims of the ’609 Patent and the ’442 Patent. National Paintball manufactures, imports, sells, and/or offers to sell the BT-16 line of paintball markers and the BT-4 line of paintball markers to
Defendant BT. National Paintball has sold and continues to sell infringing paintball markers to
BT within this judicial district.
51. National Paintball has been on constructive and/or actual notice of the ’609 Patent and the ’442 Patent. Tippmann provides notice to the public that its products are patented under the ’609 Patent by fixing on the products or the packaging the word “patent” or the abbreviation
“pat.” with the applicable patent number. National Paintball is also on actual notice by virtue of this Complaint and prior communications with Tippmann representatives. Despite this notice,
National Paintball has willfully an deliberately persisted in its infringement.
52. As a consequence of National Paintball’s acts of infringement, Tippmann has suffered irreparable damage to its property in an amount yet to be determined, and Tippmann will continue to be damaged by such acts in the future.
COUNT III
Lanham Act Violations - Infringement Against BT and Benjamin R. Tippmann
53. Tippmann incorporates by reference paragraphs 1 through 52 above, as if fully set forth in this paragraph.
-10- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 11 of 30
54. On information and belief, Benjamin R. Tippmann has participated in and/or directed each of the tortious actions of BT complained of in this Complaint. As such,
Benjamin R. Tippmann is personally liable for each act of infringement and unfair competition.
55. On information and belief, despite Benjamin R. Tippmann’s former employment with Cherokee (f/k/a Tippmann Pneumatics, Inc.) and his undoubted knowledge of the value of the TIPPMANN Mark, BT and Benjamin R. Tippmann began marketing, distributing and selling paintball equipment, parts and accessories under the name BEN TIPPMANN in the United States prior to March 17, 2004 (the “Infringing Mark”).
56. In addition, BT and Benjamin R. Tippmann have advertised and promoted paintball products under the trade name Ben Tippmann Enterprises, Inc. and Benjamin R.
Tippmann Paintball Designs, Inc. (collectively the “Infringing Trade Name”). BT and
Benjamin R. Tippmann have also registered the domain name bentippmann.com and have marketed and sold paintball products under the Infringing Mark and Infringing Trade Name through the website bentippmann.com. A copy of printouts from the bentippmann.com website showing the Infringing Mark is attached as Exhibit 3.
57. Tippmann’s products and BT’s products are marketed through the same channels of trade and to the same consumers. BT is a direct competitor of Tippmann.
58. BT’s products are not Tippmann’s products, and neither BT nor Benjamin R.
Tippmann has the sponsorship, consent, approval, or certification of Tippmann to use the
TIPPMANN Mark or any confusingly similar marks or trade names in the United States.
59. Upon learning of BT’s and Benjamin R. Tippmann’s use of the Infringing Mark and Infringing Trade Name in connection with paintball products, Tippmann, through its counsel, contacted BT and Benjamin R. Tippmann in an effort to amicably resolve this dispute.
-11- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 12 of 30
Tippmann reminded BT and Benjamin R. Tippmann of Tippmann’s longstanding rights in the
TIPPMANN Mark and requested that BT and Benjamin R. Tippmann immediately cease the infringing activity. A copy of Tippmann’s correspondence of March 17, 2004, is attached hereto as Exhibit 4.
60. Tippmann received no response whatsoever from either BT or Benjamin R.
Tippmann. Upon investigation, Tippmann found that BT did make certain changes to its website and uses of the Infringing Mark.
61. After having been put on notice of its infringing activity and with an apparent acknowledgement of Tippmann’s rights in the TIPPMANN Mark, BT and Benjamin R.
Tippmann have once again made unauthorized uses of the TIPPMANN Mark and have made use of Tippmann’s products in advertising of BT’s products such that consumer confusion is likely
(the “Unfair Practices”). Copies of pages from BT’s websites reflecting these inappropriate uses are attached hereto as Exhibit 3.
62. For example, BT and Benjamin R. Tippmann have continued to operate a website, which advertises paintball products at the domain bentippmann.com. Further, BT and
Benjamin R. Tippmann prominently pictured Tippmann’s products that display the TIPPMANN
Mark throughout this website.
63. In addition, on or about June 15, 2005, BT also printed and distributed a press release which deliberately and intentionally attempts to trade upon the goodwill of the
TIPPMANN mark. The press release specifically states, in part: “One of the oldest family names in the business, Tippmann is once again behind the new products.” A copy of this advertisement is attached as Exhibit 10.
-12- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 13 of 30
64. In sum, despite BT’s and Benjamin R. Tippmann’s actual knowledge of
Tippmann’s rights, BT and Benjamin R. Tippmann are willfully attempting to trade upon the goodwill of the TIPPMANN Mark.
65. BT’s and Benjamin R. Tippmann’s Unfair Practices falsely create the impression that BT’s products are manufactured by or affiliated with Tippmann and constitute willful trademark infringement and unfair competition.
66. BT’s and Benjamin R. Tippmann’s Unfair Practices result in a false designation of origin, false description, and false representation that BT and its products are sponsored by, authorized by, or affiliated with Tippmann.
67. BT’s and Benjamin R. Tippmann’s Unfair Practices are calculated to cause actual confusion and are likely to cause confusion or mistake among purchasers as to the true origin, source, sponsorship, or affiliation of BT’s products with Tippmann, to trade on Tippmann’s goodwill, and to pass off BT’s products as those of Tippmann in violation of 15 U.S.C. §1125(a).
68. BT’s and Benjamin R. Tippmann’s Unfair Practices have caused and continue to cause actual confusion among purchasers as the true origin, source, sponsorship, or affiliation of
BT’s products with Tippmann.
69. BT’s and Benjamin R. Tippmann’s unfair competition and infringement demonstrate intentional, willful, and bad faith attempts to deceive or to create mistake or confusion in the minds of Tippmann’s customers and potential customers and of the public, to trade on Tippmann’s goodwill, to palm off BT’s products as those of Tippmann and to create the false impression of a connection, affiliation, association, sponsorship, or approval of, or between
Tippmann and BT, all causing irreparable injury and damage to Tippmann.
-13- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 14 of 30
70. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
71. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has also suffered actual damages.
72. Tippmann is entitled to recover actual and treble damages, reasonable attorneys’ fees, and the costs of this litigation pursuant to 15 U.S.C. §1117.
COUNT IV
Lanham Act Violations – False Advertising Against BT and Benjamin R. Tippmann
73. Tippmann incorporates by reference paragraphs 1 through 72 above, as if fully set forth in this paragraph.
74. BT and Benjamin R. Tippmann are now advertising both on the BT website and the BT product packaging that BT’s products are manufactured in, assembled in or emanate from
“Ft. Wayne, Indiana USA.” (See Exhibits 6 and 9), when in fact they do not.
75. In addition, BT’s products themselves also misrepresent their geographic origin.
For example, BT’s “BT-4 Combat Marker” bears the phrase: “BT Paintball Designs, Ft. Wayne,
IN.” (See Exhibit 6). There is no other indication of geographic origin on the “BT-4 Combat
Marker” itself thereby misleading the purchasing public about the geographic origin of BT’s products.
76. BT and Benjamin R. Tippmann have purposely made a commercial advertisement or promotion that contains literally false and deceptively misleading statements of fact about the geographic origin of BT’s product.
77. Upon information and belief, the statements actually deceived or have the tendency to deceive a substantial segment of the audience of BT’s products and BT’s promotions.
-14- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 15 of 30
78. BT’s and Benjamin R. Tippmann’s false and misleading statements and actions are material, in that it is likely to influence the purchasing decisions of the customers for BT’s products.
79. By distributing BT’s products in its current product packaging and the BT website,
BT and Benjamin R. Tippmann have caused their false and misleading statements and actions to enter interstate commerce.
80. BT’s and Benjamin R. Tippmann’s false and misleading statements and actions regarding BT’s products constitute violations of 15 U.S.C. §1125(a).
81. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has been or is likely to be injured either by direct diversion of sales from itself to BT or by a loss of goodwill.
82. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
83. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has also suffered actual damages.
COUNT V
Lanham Act Violations – Infringement Against National Paintball
84. Tippmann incorporates by reference paragraphs 1 through 83 above, as if fully set forth in this paragraph.
85. Despite being Tippmann’s distributor for approximately 15 years, upon information and belief, National Paintball assisted Benjamin R. Tippmann in forming BT with the express purpose and intent to compete against Tippmann under the Infringing Trademark and
Infringing Trade Name.
-15- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 16 of 30
86. For example, National Paintball assisted BT and Benjamin R. Tippmann in designing, adopting and using logos and company names, including the Infringing Trademark and Infringing Trade Name.
87. National Paintball has assisted BT and Benjamin R. Tippmann in creating, developing, and/or upgrading BT’s website. Documents evidencing National Paintball’s actions in assisting BT and Benjamin R. Tippmann with the creation, development, and upgrading of
BT’s website are attached as Exhibit 7.
88. National Paintball also considered hosting the Defendants’ website in approximately December of 2003 but declined because they determined it was “too risky when considering that people may track it back to National Paintball.” (See Exhibit 7).
89. National Paintball has advertised and promoted paintball products under the
Infringing Trademark and the Infringing Trade name such that consumer confusion is likely. A
National Paintball advertisement showing National Paintball’s use of the BEN TIPPMANN name is attached as Exhibit 8.
90. National Paintball has also printed, published and distributed advertisements for
BT’s products under the Infringing Trademark and Infringing Trade name. For example,
National Paintball ran a “New Product Spotlight” on BT’s products in the “Paintball 2xtremes” magazine, published by National Paintball, wherein it states: “Ben Tippmann, manufacturer of an extensive line of custom upgrades and aftermarket accessories for Tippmann paintball guns such as the 98 Custom and A5, have released their first paintball gun, the BT-16 .... Visit www.btpaintball.com for more information, and ask for Ben Tippmann products at the local paintball store.” A copy of this publication is attached as Exhibit 11.
-16- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 17 of 30
91. Tippmann’s products and National Paintball’s products are marketed through the same channels of trade and to the same consumers. Indeed, National Paintball is a distributor of
Tippmann’s products under the TIPPMANN Mark and a direct competitor of Tippmann.
92. BT’s products are not Tippmann’s products, and National Paintball did not and does not have the sponsorship, consent, approval, or certification of Tippmann to use the
TIPPMANN Mark or any confusingly similar marks or trade names on BT’s products.
93. By it actions, National Paintball has falsely created the impression that BT’s products are manufactured by or affiliated with Tippmann and constitute willful trademark infringement and unfair competition.
94. National Paintball’s actions result in a false designation of origin, false description, and false representation that BT and its products are sponsored by, authorized by, or affiliated with Tippmann.
95. National Paintball’s actions are calculated to cause actual confusion and are likely to cause confusion or mistake among purchasers as to the true origin, source, sponsorship, or affiliation of BT’s products with Tippmann, to trade on Tippmann’s goodwill, and to pass off
BT’s products as those of Tippmann in violation of 15 U.S.C. §1125(a).
96. National Paintball’s unfair competition and infringement demonstrate intentional, willful, and bad faith attempts to deceive or to create mistake or confusion in the minds of
Tippmann’s customers and potential customers and of the public, to trade on Tippmann’s goodwill, to palm off BT’s products as those of Tippmann and to create the false impression of a connection, affiliation, association, sponsorship, or approval of, or between Tippmann and BT, all causing irreparable injury and damage to Tippmann.
-17- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 18 of 30
97. As a result of National Paintball’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
98. As a result of National Paintball’s conduct, Tippmann has also suffered actual damages.
99. Tippmann is entitled to recover actual and treble damages, reasonable attorneys’ fees, and the costs of this litigation pursuant to 15 U.S.C. §1117.
COUNT VI
Lanham Act Violations – Contributory Infringement Against National Paintball
100. Tippmann incorporates by reference paragraphs 1 through 99 above, as if fully set forth in this paragraph.
101. By National Paintball’s actions, including assisting in setting up BT, assisting in preparing BT’s logo which incorporates the Infringing Trademark, setting up BT’s website and/or other promotional materials under the Infringing Trademark and Infringing Trade Name, it induced or knowingly enabled BT and Benjamin R. Tippmann to infringe the TIPPMANN
Mark.
102. National Paintball supplied BT and Benjamin R. Tippmann with the BT products knowing that BT and Benjamin R. Tippmann would promote, market and sell those products under the Infringing Trademark and the Infringing Trade Name. Indeed, National Paintball assisted in plotting the development, marketing and eventual sale of BT’s products under the
Infringing Trademark and Infringing Trade Name.
103. By National Paintball’s actions, it knowingly provided BT and Benjamin R.
Tippmann with the tools of infringement.
-18- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 19 of 30
104. By National Paintball’s actions, National Paintball expressly induced BT &
Benjamin R. Tippmann to infringe the TIPPMANN Mark.
105. As a result of National Paintball’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
106. As a result of National Paintball’s conduct, Tippmann has also suffered actual damages.
107. Tippmann is entitled to recover actual and treble damages, reasonable attorneys’ fees, and the costs of this litigation pursuant to 15 U.S.C. §1117.
COUNT VII
Lanham Act Violations – False Advertising Against National Paintball
108. Tippmann incorporates by reference paragraphs 1 through 102 above, as if fully set forth in this paragraph.
109. National Paintball is the manufacturer of BT’s products. Upon information and belief, National Paintball also manages the content of BT’s website.
110. Through its actions as BT’s business partner, National Paintball is now advertising both on the BT website and the BT product packaging that BT’s products are manufactured in, assembled in or emanate from “Ft. Wayne, Indiana USA.” (See Exhibits 6 and
9), when in fact they do not.
111. In addition, National Paintball has also manufactured, produced and offered for sale the BT products that also misrepresent their geographic origin. For example, BT’s “BT-4
Combat Marker” bears the phrase: “BT Paintball Designs, Fort Wayne, IN.” (See Exhibit 6).
There is no other indication of geographic origin on the “BT-4 Combat Marker” itself.
-19- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 20 of 30
112. National Paintball has purposely made a commercial advertisement or promotion that contains literally false and deceptively misleading statements of fact about the geographic origin of BT’s product.
113. Upon information and belief, the statements actually deceived or have the tendency to deceive a substantial segment of the audience of BT’s products and BT’s promotions.
114. National Paintball’s false and misleading statements and actions are material, in that it is likely to influence the purchasing decisions of the customers for BT’s and National’s products.
115. By distributing BT’s products in its current product packaging and the BT website,
National Paintball has caused their false and misleading statements and actions to enter interstate commerce.
116. National Paintball’s false and misleading statements and actions regarding BT’s products constitute violations of 15 U.S.C. §1125(a).
117. As a result of National Paintball’s conduct, Tippmann has been or is likely to be injured either by direct diversion of sales from itself to BT and National Paintball or by a loss of goodwill.
118. As a result of National Paintball’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
119. As a result of National Paintball’s conduct, Tippmann has also suffered actual damages.
-20- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 21 of 30
COUNT VIII
Common Law Unfair Competition Against BT and Benjamin R. Tippmann
120. Tippmann incorporates by reference paragraphs 1 through 119 above, as if fully set forth in this paragraph.
121. BT and Benjamin R. Tippmann have sold, promoted, and offered for sale products under the Infringing Mark and the Infringing Trade Names and have engaged in Unfair
Practices in violation of Tippmann’s trademark rights with full knowledge of Tippmann’s rights, for the purpose of trading upon Tippmann’s goodwill and reputation and the passing off of BT’s products as those of Tippmann.
122. BT’s and Benjamin R. Tippmann’s actions constitute infringement of Tippmann’s common law rights and improper and unfair competition. As a result, Tippmann is entitled to recover actual and punitive damages.
123. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
124. As a result of BT’s and Benjamin R. Tippmann’s conduct, Tippmann has suffered actual damages.
COUNT IX
Common Law Unfair Competition Against National Paintball
125. Tippmann incorporates by reference paragraphs 1 through 124 above, as if fully set forth in this paragraph.
126. National Paintball has promoted and offered for sale products under the Infringing
Mark and has acted and induced BT and Benjamin R. Tippmann to act in violation of
Tippmann’s trademark rights with full knowledge of Tippmann’s rights, for the purpose of
-21- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 22 of 30
trading upon Tippmann’s goodwill and reputation and the passing off of BT’s products as those of Tippmann.
127. National Paintball’s actions constitute infringement of Tippmann’s common law rights and improper and unfair competition. As a result, Tippmann is entitled to recover actual and punitive damages.
128. As a result of National Paintball’s conduct, Tippmann has suffered irreparable harm for which there is no adequate remedy at law.
129. As a result of National Paintball’s conduct, Tippmann has suffered actual damages.
COUNT X
Common Law Trademark Infringement – Against BT and Benjamin R. Tippmann
130. Tippmann incorporates by reference paragraphs 1 through 129 above, as if fully set forth in this paragraph.
131. Tippmann has used the TIPPMANN Mark in connection with its products long before BT’s and Benjamin R. Tippmann’s first use of the Infringing Mark and Infringing Trade
Name in connection with paintball products.
132. BT’s and Benjamin R. Tippmann’s use of the Infringing Mark and Infringing
Trade Name on paintball products constitutes an infringement of Tippmann’s common law rights in its trademark.
COUNT XI
Common Law Trademark Infringement – Against National Paintball
133. Tippmann incorporates by reference paragraphs 1 through 132 above, as if fully set forth in this paragraph.
-22- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 23 of 30
134. Tippmann has used the TIPPMANN Mark in connection with its products long before National Paintball’s actions complained of in this Complaint.
135. National Paintball’s use of the Infringing Mark on paintball products constitutes an infringement of Tippmann’s common law rights in its trademark.
COUNT XII
Breach of Fiduciary Duty Against Benjamin R. Tippmann
136. Tippmann and Cherokee incorporate by reference paragraphs 1 through 135 above, as if fully set forth in this paragraph.
137. At all relevant times prior to May 2003, Benjamin R. Tippmann was an employee of Cherokee (f/k/a Tippmann Pneumatics, Inc.) and acted as Cherokee’s Sales Manager.
138. As a Cherokee employee, Benjamin R. Tippmann owed a fiduciary duty to
Cherokee to act loyal, honestly and fairly on behalf of Cherokee.
139. During the fall of 2001, Benjamin R. Tippmann represented Cherokee in the negotiation to employ Kyle L. Coon (“Coon”) as its National Account Manager. During the negotiations to employ Coon, Benjamin R. Tippmann secretly negotiated a fraudulent payment scheme (the “Scheme”) with Coon under which Coon would pay Benjamin R. Tippmann a kickback equal to one half of the commission's that Coon earned from his services on behalf of
Cherokee.
140. From the date of Coon's hire through the spring of 2003, Benjamin R. Tippmann received several thousands of dollars, pursuant to the secret and illegal Scheme.
141. The Scheme constitutes a breach of Benjamin R. Tippmann’s fiduciary duties of honesty and loyalty that he owed to Cherokee.
-23- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 24 of 30
142. Benjamin R. Tippmann has been unjustly enriched to the extent he was compensated by Coon to Cherokee’s detriment.
143. As a result of Benjamin R. Tippmann’s fraud, Cherokee has been damaged and is entitled to receive damages against Benjamin R. Tippmann.
144. Benjamin R. Tippmann’s conduct was so willful and wanton as to warrant the assessment of punitive damages.
COUNT XIII
Constructive Fraud Against Benjamin R. Tippmann
145. Tippmann and Cherokee incorporate by reference paragraphs 1 through 144 above, as if fully set forth in this paragraph.
146. While he was an employee of Cherokee (f/n/a Tippmann Pneumatics, Inc.),
Benjamin R. Tippmann owed fiduciary duties to Cherokee.
147. Benjamin R. Tippmann had a duty to deal openly, honestly, fairly, and in good faith with Cherokee.
148. Benjamin R. Tippmann violated his duties to Cherokee (among other things) by secretly negotiating the fraudulent payment Scheme with Coon. Benjamin R. Tippmann had a duty not to place his own personal interest above the interest of Cherokee and he had a duty to speak and inform Cherokee regarding the kickback that he was unilaterally paying to himself.
Benjamin R. Tippmann held himself to be a loyal employee of Cherokee when in fact he used his position to secretly obtain a kickback for his benefit and to Cherokee’s detriment.
149. Cherokee relied upon Benjamin R. Tippmann’s silence to its detriment, but for
Benjamin R. Tippmann’s silence, Cherokee would have never approved the kickback that
Benjamin R. Tippmann negotiated with Coon and, in essence, paid to himself.
-24- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 25 of 30
150. As a result of Benjamin R. Tippmann’s illegal actions and Cherokee’s reliance upon Benjamin R. Tippmann’s illegal actions and silence, which were motivated by Benjamin R.
Tippmann’s deceit and his own vested self interest, Cherokee has been injured. Among other things, Cherokee has sustained monetary damages.
151. As a result of Benjamin R. Tippmann’s conduct, he has gained an advantage at the expense of Cherokee.
152. Benjamin R. Tippmann’s conduct was so willful and wanton as to warrant the assessment of punitive damages.
COUNT XIV
Actual Fraud Against Benjamin R. Tippmann
153. Tippmann and Cherokee incorporate by reference paragraphs 1 through 152 above, as if fully set forth in this paragraph.
154. Benjamin R. Tippmann has made implied representations of past or existing fact by failing to inform Cherokee (f/k/a Tippmann Pneumatics, Inc.) that he negotiated for himself kickbacks, and that he received kickbacks from Coon's commissions.
155. Benjamin R. Tippmann’s silence and omissions regarding the kickback Scheme induced Cherokee to believe (among other things) that he was acting in good faith and was receiving a reasonable compensation. In fact, Benjamin R. Tippmann, in essence, was unilaterally paying himself a kickback that was not commensurate with his job duties.
Benjamin R. Tippmann held himself to be a loyal employee of Cherokee when in fact he used his position to secretly obtain a kickback for his benefit and to Cherokee’s detriment.
-25- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 26 of 30
156. Benjamin R. Tippmann’s silence and omissions regarding the Scheme and kickbacks were intentional or made with reckless disregard in an effort to mislead and deceive
Cherokee.
157. Cherokee reasonably relied upon Benjamin R. Tippmann’s silence and omissions to their detriment. Among other things, Cherokee has sustained monetary damages.
158. As a result of Benjamin R. Tippmann’s conduct, Cherokee has been damaged and is entitled to receive damages against Benjamin R. Tippmann under the Scheme. Benjamin R.
Tippmann gained an advantage at the expense of Cherokee.
COUNT XV
Civil Action by Crime Victim for Criminal Mischief
159. Tippmann and Cherokee incorporate by reference herein paragraphs 1 through
158 above.
160. In negotiating the kickback Scheme and receiving monetary kickbacks,
Benjamin R. Tippmann has violated Indiana Code § 35-43-1-2, criminal mischief, by knowingly and intentionally causing Cherokee to suffer pecuniary loss by deception.
161. Cherokee has suffered a pecuniary loss as a direct result of Benjamin R.
Tippmann’s violations of Indiana Code § 35-43-1-2.
162. Pursuant to Indiana Code § 34-24-3-1 et seq., Cherokee is entitled to recover
(among other things), treble damages, attorneys' costs, and its other related expenses incurred to recover against Benjamin R. Tippmann and his criminal acts.
WHEREFORE, Plaintiffs request the Court to award the following relief:
a. A judgment declaring the ’609 Patent and the ’442 Patent infringed by BT,
Benjamin R. Tippmann and National Paintball;
-26- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 27 of 30
b. An award of damages adequate to compensate Tippmann for BT’s, Benjamin R.
Tippmann’s, and National Paintball’s infringement of the ’609 Patent and the ’442 Patent, but in no event less than a reasonable royalty, together with interest and cost as fixed by the court;
c. An award increasing damages up to three times the amount found or assessed by the Court in Tippmann’s favor and against BT, Benjamin R. Tippmann, and National Paintball for their infringement of the ’609 Patent and the ’442 Patent in view of the willful and deliberate nature of BT’s, Benjamin R. Tippmann’s and National Paintball’s infringement;
d. A permanent injunction from enjoining BT and National Paintball from continuing its infringing activities under the ’609 Patent and the ’442 Patent;
e. A permanent injunction enjoining and restraining BT, Benjamin R. Tippmann, and National Paintball, their associates, agents, servants, employees, officers, directors, representatives, successors, assigns, attorneys and all persons in active concert or participation with them who learn of the injunction through personal service or otherwise (a) from using the confusingly similar terms TIPPMANN, BEN TIPPMANN or any mark or name which contains the term TIPPMANN in connection with paintball equipment, part or accessories or confusing similar products, (b) from representing by words or conduct that Benjamin R. Tippmann and BT or their products are authorized, sponsored, endorsed, or otherwise connected with Tippmann, and (c) any other conduct which causes, or is likely to cause, confusion, mistake, deception, or misunderstanding as to the source, affiliation, connection or association of BT’s products;
f. An accounting and judgment against BT, Benjamin R. Tippmann and National
Paintball for (a) all profits received from the sale of products bearing the Infringing Mark, (b) damages sustained by Tippmann on account of BT’s, Benjamin R. Tippmann’s, and National
-27- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 28 of 30
Paintball’s trademark infringement, unfair competition, and false designation of origin, (c) treble damages, where appropriate, and (d) punitive damages to deter such actions in the future;
g. A permanent injunction requiring BT, Benjamin R. Tippmann and National
Paintball to cease distribution and showing of BT’s products and BT’s product packaging; requiring them to cease distribution and showing of BT’s website; enjoining and restraining them from making false statements regarding their products; and enjoining and restraining them from further acts of unfair competition and deceptive trade practices;
h. Plaintiffs’ costs of this suit, including reasonable attorneys’ fees and expenses;
i. Pursuant to 15 U.S.C. §1118, the destruction of all business cards, invoices, forms, advertisements, promotional materials, packaging, products or any other materials bearing the
Infringing Mark, the Infringing Trade Name or any other term infringing TIPPMANN Mark;
j. That Benjamin R. Tippmann be ordered to pay damages, including punitive damages, for the fraud, constructive fraud, and breach of fiduciary duty that he committed against Cherokee as a result of the Scheme.
k. Pursuant to Indiana Code § 34-24-3-1, that Benjamin R. Tippmann be ordered to pay treble damages, Plaintiffs' attorneys' fees, and all available costs; an award to Plaintiffs of punitive damages as a result of Benjamin R. Tippmann’s malicious, fraudulent and oppressive conduct; and
l. All other just and proper relief.
JURY DEMAND
Tippmann and Cherokee demand a trial by jury on all issues in this case other than their request for injunctive relief.
-28- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 29 of 30
Respectfully submitted,
s/Gary C. Furst William T. Hopkins, Jr. (#8074-02) ([email protected]) Bobby B. Gillenwater (#11562-02) ([email protected]) Gary C. Furst (#19349-64) ([email protected]) BARNES & THORNBURG LLP 600 One Summit Square Fort Wayne, IN 46802 Phone: (260) 423-9440 Facsimile: (260) 424-8316
Attorneys for Plaintiffs Tippmann Sports, LLC and Cherokee Air Products, Inc. (f/k/a Tippmann Pneumatics, Inc.)
-29- case 1:04-cv-00436-TLS-RBC document 51 filed 09/06/05 page 30 of 30
CERTIFICATE OF SERVICE
The undersigned hereby certifies that a copy of the foregoing document has been served this 6th day of September, 2005, either by United States mail or by electronically filing the same with the Clerk of the Court using the CM/ECF system which sent notification of such filing to the following:
Dean E. McConnell, Esquire David J. Hensel, Esquire Blake J. Burgan, Esquire Stephanie A. Hale, Esquire SOMMER BARNARD ATTORNEYS, PC Suite 3500 One Indiana Square Indianapolis, IN 46204 and by summons issued to:
National Paintball Supply, Inc. c/o Mr. Gino Postorivo, President 570 Mantua Boulevard Sewell, NJ 08080
National Paintball Supply, Inc. c/o The Corporation Trust Company Corporation Trust Center 1209 Orange Street Wilmington, DE 19801
Gary C. Furst
FWDS01 GCF 198806v1
-30-