Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 1 of 42 FILED IN CLERK'S OFFICE U.S.D.C. Atlanta OCT 2 7 2016
JA lis N. HATTEN, Clerk is IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION
ORAFOL AMERICAS, INC.,
Plaintiff,
Civil Action File No.: 1:16-CV-3516-SCJ FUJIAN XINLIYUAN REFLECTIVE MATERIAL CO. LTD. a/k/a OT TID REFLECTIVE MATERIAL CO., LTD., Jury Trial Demanded SAFETY SYSTEMS BARRICADES CORP., WE SOURCE IT, LLC, VICTOR CABANAS, W. IVETTE CABANAS, DBI SERVICES, LLC, and JOHN DOES 1-5.
Defendants.
AMENDED COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF
1. INTRODUCTORY STATEMENT
1.
This is a hademark counterfeihng and inhingement case. Plainhff ORAFOL
Americas Inc. ("ORAFOL") seeks damages and equitable remedies to halt the produchon, dishibuhon, and sale of counterfeit versions of one of its proprietary reflective sheeting products. Specifically, and as described in further detail herein.
Defendants have worked, in some instances in achve concert, to manufacture.
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distribute, and sell knock-offs of ORAFOL'S proprietary ORALITE® ARIOOO delineation sheeting (the "ARIOOO sheeting"), a product used on hafhc delineahon posts. The quality and durability of haffic posts containing the knock-off sheehng, which have already been installed along a long shetch of public highway, are markedly inferior to the genuine products.
2.
Because the counterfeit sheehng infringes upon two of ORAFOL's registered hademarks as well as its protected trade dress, and has been sold in dhect compehhon with ORAFOL, its supply and use have caused and threaten to conhnue to cause signihcant irreparable injury to ORAFOL and to the pubhc. That injury includes harm to the unquanhfiable value, reputahon, and goodwill associated with ORAFOL's hademarks and the ARlOOO's hade dress, as well as confusion and potenhally reduced highway safety.
IL THE PARTIES, lURISDICTION, AND VENUE
3.
ORAFOL is a Georgia limited hability corporahon with its corporate headquarters located at 1100 Oracal Parkway, Black Creek, Georgia 31308 in Bryan
County.
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4.
Defendant Fujian Xinliyuan Reflective Material Co. Ltd. a/k/a OT TID
Reflective Material Co., Ltd. ("OT TID") is a corporation formed under the laws of the People's Republic of China, with its principal place of business located at No. 2
Building, Area B, Jianxin Indushial Park, Hongshan Town, Shishi City, in Fujian
Province on mainland China. Defendant OT TID may be served with process
through the procedures set forth in the Hague Convenhon on the Service Abroad
of Judicial and Exha-Judicial Documents in Civil or Commercial Matters, to which
the People's Republic of China is a signatory.
5.
OT TID is subject to both specihc and general jurisdichon in the State of
Georgia and in the United States. OT TID maintains a website (www.cn-
tid.com),which it uses to direct adverhsing to engage in commerce with, among
others, buyers in the United States and in the State of Georgia. OT TID has also
directed the counterfeit and infringing products at issue into the United States'
stream of commerce as part of an overall arrangement and supply chain including
the named party defendants. It was foreseeable to OT TID that it could be haled
into court in the State of Georgia and in the United States.
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6.
Defendant We Source It, LLC ("We Source It") is a Florida limited liability company with a principal place of business located at 8030 NW 159 Terrace, Miami
Lakes, Florida 33016. We Source It may be served with process at the same address by delivery of a copy of the Summons and this Complaint to an officer or managing agent at the same address.
7.
Defendant Victor Cabanas is an individual resident of the State of Florida and an ofhcer and principal of Defendant We Source It. Defendant Victor Cabanas may be served with process by delivery of a copy of this Complaint to him at his address at 8030 NW 159 Terrace, Miami Lakes, Florida 33016, also the business address of Defendant We Source It.
8.
Defendant W. Ivette Cabanas is an individual resident of the State of Florida and an ofhcer and principal of Defendant We Source It. Defendant W. Ivette
Cabanas may be served with process by delivery of a copy of this Complaint to her
at her address at 8030 NW 159 Terrace, Miami Lakes, Florida 33016, also the business address of Defendant We Source It.
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9.
Defendant Safety Systems Barricade Corp. ("SSBC") is a Florida corporation with a principal place of business located at 6138 NW 74^ Avenue, Miami, Florida
33166. SSBC may be served with process at the same address by delivery of a copy of the Summons and this Complaint to its officer or managing agent.
10.
Defendant DBi is a Delaware limited liability company with a principal place of business located at 100 N. Conahan Drive, Hazelton, PA 18201 and with a project office and operations, and registered agent, in the State of Georgia. DBi may be served with process at the address of its registered agent, CT Corporahon
System, located at 1201 Peachhee Sheet, NE, Atlanta, Georgia 30361 in Fulton
County.
11.
In order to conduct business in Georgia, DBi has registered to do business and has entered into conhactual obligations in this State. DBi maintains a project office in Brunswick, Georgia, through which it provides asset management and routine maintenance to Interstate 95 within the State of Georgia. DBi regularly conducts business in this State, and its marketing and advertising activities are directed at and reach Georgia. Moreover, given the nature of the asset
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management project along Interstate 95, the infringing goods are likely being sold to or deployed in this District as well as in Florida.
12.
Defendants John Doe 1 through John Doe 5 (the "Doe Defendants") are, on informahon and belief, addihonal parhes who are individuals involved in authorizing and dhecting the manufacture, dishibuhon and sale of counterfeit
ORAFOL products, including, but not limited to, the counterfeit ARIOOO sheehng, by other, corporate Defendants.
13.
This Court has subject matter jurisdichon under 28 U.S.C. § 1331 (because
several of the claims alleged herein arise under the laws of the United States) and under 28 U.S.C. § 1367.
14.
This Court has personal jurisdichon over Defendants because their conduct, individually and/or acting in concert with one another, was deliberately directed
at a party residing in this State, namely, ORAFOL. Defendants have also, either in person or through an agent, in connechon with the factual allegations of this
lawsuit: (1) transacted business within the State of Georgia, (2) committed a
torhous act or omission in this State or committed a torhous injury in this state
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caused by comiriitting an act or omission outside this State, and/or (3) engaged in a persistent course of conduct and have derived revenues hom goods used or consumed, or services rendered, in Georgia.
15.
OI^FOL further anticipates that discovery will reveal additional substantial contacts and tortious acts or omissions by each Defendant supporting the exercise of personal jurisdiction by this Court.
16.
Venue is proper in this Dishict as Defendant DBi has availed itself of this
Dishict by maintaining a registered agent and office in Fulton County; conhachng for numerous projects with the Georgia Department of Transportahon ("GDOT"), which is based out of Dalton, Georgia; and by its work on a High Friction Surfacing
Treatment project in GDOT Dishict 6, which is located in this Dishict.
IIL FACTUAL BACKGROUND
A. ORAFOVs Business and the ORALITE® ARIOOO Sheeting
17.
Plaintiff ORAFOL is a recognized global manufacturer of premium vinyl graphic products, reflective solutions, and adhesive tape systems used in signage, graphics, industrial, traffic, and safety applications. It advertises and
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promotes its products extensively in various print and communications media, as well as on the Internet. ORAFOL's customers and the valuable goodwill associated with ORAFOL's name and products are found in the United States and in other countries around the world.
18.
One of ORAFOL's products is its ORALITE® brand ARIOOO Delineahon
Sheeting. The ARIOOO sheeting is a retroretlective sheeting used, among other applications, in highway maintenance and repair and affixed to flexible delineator posts, barrier mounted delineators, and guardrail delineators. (A true and correct photograph of ARIOOO sheeting is attached hereto as Exhibit "A.")
19.
Reflecting proprietary engineering and know-how, ORAFOL ARIOOO sheeting has been developed and engineered for ease of installation, long-term use, and durability. Its impact, abrasion, and solvent-resistant surface improve safety and reduce the life cycle cost for users, and its microprismatic elements allow for increased driver reaction time. ARIOOO enjoys quality certifications including meeting the requirements of MUTCD and ASTM D 4956 specificahons for Type V, Class 1 retroreflechve sheehng.
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20.
The ARIOOO sheehng also enjoys dishnchve hade dress, featuring the encircled "AR" specification mark and fanciful Double Prism and Multi-Triangle logos that are the subject of two of ORAFOL's registered trademarks. (True and correct copies of these trademark registrations, no. 3,179,490 and no. 2,946,387, as reflected in the records of the United States Patent and Trademark Office
(USPTP), are attached hereto as Exhibits "B" and "C," respectively.) One side of the sheehng consists of a smooth surface, with an engineered high-gloss, UV- stabilized microprismatic layer that is both abrasion- and weather-resistant. The other side has an adhesive layer, permitting ARIOOO to be affixed to other surfaces, including, as in this case, to traffic delineation posts. ARIOOO is available in a variety of widths and colors, including white, red orange, yellow, blue, and green.
21.
ORAFOL sells the ARIOOO sheeting in markets throughout the United
States and around the world and has worked and conhnues to work to maintain the highest standards of consistency and product quality across its product lines, including its ORALITE® and ARIOOO products.
22.
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The impetus for this case is ORAFOL's recent discovery that Defendants have been producing and procuring, and DBi has been selling to the State of
Florida and installing on the public highways, delineation posts with counterfeit
ARIOOO sheeting that reproduces and infringes upon ORAFOL trademarks. The background to this discovery is set forth in the following paragraphs.
B. Defendants' Procurement and Use of Counterfeit ARIOOO Sheeting
23.
One of ORAFOL's customers, FlexStake, Inc. ("FlexStake"), manufactures posts and assembles traffic delineators and has been supplying them to
Defendant DBi for use in a highway project in Florida. These posts contain
ARIOOO sheeting, as ORAFOL is one of a small number of manufacturers whose products have been approved by the State of Florida for this purpose.
24.
These traffic delineators generally have four parts: the retroreflechve sheeting, the post, a mechanism connecting the post and the base, and a base.
The following is a depiction of one such delineator:
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Retroreflective sheeting
25.
As part of the Florida project, FlexStake has been supplying authorized, genuine delineators for installation. It has manufactured the posts, assembling the delineators including by affixing ARIOOO sheehng, and then shipped completed delineators to Defendant DBi. DBi, in turn, under an asset and construction management contract with the State of Florida, was supposed to install these posts for use in separating lanes on a stretch of Interstate 95, including in the Miami / Dade County area in Florida. Under its contract, DBi is responsible for overall highway maintenance including installing and, as necessary, replacing these delineators.
26.
At some point, however, despite the ongoing Florida project, FlexStake noted that DBi's orders of the FlexStake delineators with genuine ARIOOO
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sheeting began to drop off.
27.
Then, quality issues with the DBi-installed posts, which would not have been present had the proper posts been supplied, began surfacing. In a July 2016 report commissioned by the State of Florida, a third-party examined the durability of the delineator posts installed by DBi, including various failure modes of the posts or the sheeting as a result of impact. The report examined the project in two phases. In Phase 1 (approximately 7.8 miles with 8,240 delineators), the posts included one 12-inch white retroreflechve stripe. In Phase
2 (approximately 11.6 miles with 12,250 delineators), the posts included two 4- inch orange and two 4-inch white retroreflechve stripes.
28.
The material differences the report described in durability and replacement rates of delineators from Phase 1 (much earlier failures) and Phase 2 suggested a possibility: that DBi had been using different, non-FlexStake posts of an inferior quality and durability. Inspechon by FlexStake of some of the posts used by DBi confirmed that the posts were counterfeit. Both the material and design were different in ways that, to FlexStake as the manufacturer, were apparent.
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29.
Upon learning this information, FlexStake alerted ORAFOL, which then conducted materials testing on the sheehng included on the counterfeit posts.
ORAFOL's analysis confirmed that DBi had been installing posts containing a knock-off version of the trademark-protected ARIOOO sheeting (the "Counterfeit
Delineators"). In the following photo, the top post depicts a delineator post with genuine ORAFOL ARIOOO sheeting, and the bottom, the counterfeit post instahed by DBi:
30.
ORAFOL's testing and inspection confirmed that one or more of the
Defendants had commissioned a knock-off product. As the following close-up view of the same two posts reveals, the knock-off attempts to replicate identically both ORAFOL'S federally registered Double Prism and Multi-Triangle marks
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(trademark registration nos. 3,179,490 and 2,946,387) as well as ARlOOO's overall trade dress, including the encircled "AR" printed on the sheeting.
In this photograph, the genuine ARIOOO appears at top, and one of the
Counterfeit Delineators installed by DBi appears at the bottom. ORAFOL has never licensed any of the Defendants to manufacture ARIOOO sheeting or otherwise to use any ORAFOL trademarks or proprietary trade dress to produce any goods.
31.
ORAFOL's laboratory construction analysis further confirmed the counterfeiting, revealing a difference in sheeting layer construction and material composition, tooling, and even post material. Although designed to replicate the
ARIOOO trade dress exactly, the posts using counterfeit ARIOOO sheeting are of inferior quality and not in keeping with the standards for products
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manufactured and sold by ORAFOL. The July 2016 report confirms the substandard performance of the counterfeit posts, providing evidence that actual confusion has already arisen from the counterfeits' inclusion among posts installed on Interstate 95.
32.
It appears that Defendant DBi provided a sample post or posts and connmissioned the process of producing lower-cost posts and sheeting, a commission that, as described herein below, ulhmately resulted in the produchon of the counterfeit ARIOOO sheehng. Upon informahon and belief. Defendant DBi as the procuring party and installer knew or should have known of the product's status as a knock-off and of the infringement of ORAFOL's intellectual property, as well as the goodwill associated therewith, by the other Defendants. The inferior post and sheehng in the counterfeit dehneators would likely result in a materially reduced cost to DBi, and DBi's own inspection and installation of the posts would have confirmed differences with the genuine ARIOOO sheeting not immediately apparent to the end user or the public.
C. The Discovery and Seizure of Stored Counterfeit ARIOOO Sheeting
33.
One of the locations at which DBi has stored delineators for use in the
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Interstate 95 project, including certain of the Counterfeit Delineators, is a facility located at 7429 NW 50th St, Miami, Florida 33166. This location is the one to which FlexStake has shipped its own delineator posts and is a storage facility and transportation hub for DBi to use in picking up delineators for installation and dropping off used delineators.
34.
On September 27, 2016, the United States Marshals Service executed a writ of seizure at this DBi facility. During that visit, the Marshals discovered and took into custody new Counterfeit Delineators being stored as well as a quantity of discarded Counterfeit Delineators.
35.
DBi purchased the Counterfeit Delineators from Defendant SSBC, a
Florida-based operahon located at 6138 NW 74th Street, Miami, FL 33166.
According to SSBC's website (http://www.sssbarricades.com), it "make[s] traffic and custom signs," and SSBC stores at the same address a variety of traffic barricades and delineators.
36.
On information and belief, DBi provided SSBC with a sample post containing genuine ORAFOL ARIOOO sheeting to use as a "go by" in replicating
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or ordering additional posts. Following the order from DBi, SSBC commissioned the production of 10,000 Counterfeit Delineators from a third party.
37.
That third party was Defendant We Source It, a business set up by the husband and wife team of Defendants Victor Cabanas and W. Ivette Cabanas
Defendants Victor Cabanas and W. Ivette Cabanas formed Defendant We Source
It for the purpose of engaging in the purchase of the Counterfeit Posts. Both of these individual Defendants, as founders and/or officers of a company engaged in counterfeiting activities, are vicariously liable for the actions of the company.
These individuals, together with with Defendant We Source It, are referred to as
the "Cabanas Defendants."
38.
The Cabanas Defendants contacted Defendant OT TID, a Chinese
manufacturer that, on information and belief, had already engaged in the
manufacture and online sale of other counterfeit ORAFOL products. Defendant
We Source It provided a sample, obtained directly or indirectly from Defendant
SSBC and/or Defendant DBi, that Defendant OT TID used for that purpose. At
the behest of the Cabanas Defendants, who knew they were facilitating and
procuring counterfeit and infringing goods. Defendant OT TID fabricated and
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assembled 10,000 of the Counterfeit Delineators, including the counterfeit
ARIOOO sheeting and the plastic tubes that comprised them.
39.
Defendant OT TID then shipped 10,000 of the Counterfeit Delineators to the Cabanas Defendants, who arranged to sell the posts to Defendant SSBC, which in turn sold them to Defendant DBI. These posts were the source of the counterfeit product in Defendant DBi's possession and that Defendant DBi had begun installing on Interstate 95.
40.
On October 11, 2016, the United States Marshals Service executed a writ of seizure at SSBC's facility. During this visit, one of SSBC's principals and its vice- president, Amilcar Robleda, claimed that aU delineators SSBC had ever provided to DBi came from FlexStake. Robleda further professed to have no knowledge of any other delineator suppliers or of any counterfeits. He claimed that, apart from a handful of scattered posts, SSBC had no further delineators in inventory.
41.
Each of these claims turned out to be false. During their execution of the writ of seizure, with assistance from representatives of ORAFOL, the United
States Marshals identified and impounded some eight unopened boxes of the
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Counterfeit Delineators, each containing approximately 50 counterfeit posts with the knock-off ARIOOO. These boxes were hidden out of view at the bottom of a large metal trailer, concealed by signs and other material SSBC had stacked on and around them.
42.
Upon discovery of the Counterfeit Delineators, Robleda suddenly professed to remember the existence of another supplier. He claimed that an unknown individual had approached SSBC in order to sell the counterfeits, fie did not admit to knowing any of the Cabanas Defendants or to having contacted them to procure knock off products.
43.
In reality, SSBC conspired with one or more of the Cabanas Defendants to procure the Counterfeit Posts in a way that would permit plausible deniability concerning the purchase. On information and belief Defendant SSBC's Robleda was personally acquainted with Defendant Victor Cabanas. Aware that
Defendant Victor Cabanas would be willing and able to obtain counterfeit product, SSBC presented him with the opportunity to do so.
44.
The veil of Defendant We Source It should be pierced. Defendant We
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Source It is tlie alter ego of both of the individual Cabanas Defendants and was used as a vehicle to engage in tortious conduct, including the infringing conduct described above, and to evade legal responsibilities. Further illustrating its nature as a shell entity, subsequent to the transactions involving the Counterfeit
Delineators, Defendant We Source It has sought to cease doing business.
IV. CAUSES OF ACTION
COUNTI Trademark Infringement (Asserted Against All Defendants)
45.
ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
46.
In connechon with the marketing, adverhsing, and promohon of delineation sheehng, ORAFOL has used, for many years, various trademarks including, but not hmited to, its "Double Prism" logo and "Multi-Triangle" logo. ORAFOL is the owner of all right, title, and interest in and to these valid and subsisting trademarks, and has registered them with the United States Patent and Trademark
Oftice.
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47.
Specifically, ORAFOL holds hademark registrahon no. 3,179,490 for the
Double Prism logo, one of the marks used in connection with and engraved into its ARIOOO sheeting.
48.
ORAFOL also holds trademark registration no. 2,946,387 for its Multi-
Triangle logo, another mark used in connection with and engraved into the
ARIOOO sheeting.
49.
Defendants have used both of these marks in commerce without permission from ORAFOL. The counterfeit sheehng manufactured and sold by Defendant OT
TID and sold by the other Defendants contains ORAFOL's hademarks, including the Double Prism and Mulh-Triangle marks, which are incorporated into the counterfeit ARIOOO sheehng design. The counterfeit sheehng also replicates the
ARlOOO's proprietary trade dress.
50.
Following Defendant DBi's installahon of Counterfeit Delineators on
Interstate 95 in Florida, they were publicly displayed and uhlized.
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51.
The unauthorized use of the ORAFOL marlcs and the ARIOOO hade dress in commerce by Defendants has been and is likely to cause confusion among the consuming public concerning the source of goods and services marketed under those marks. Specifically, in violahon of 15 U.S.C. § 1114, Defendants' use of the aforementioned designahons is Intended to confuse consumers into believing that products and/or services marketed under these marks originate with ORAFOL when, in fact, they are counterfeit and of inferior quality.
52.
ORAFOL has been damaged by the aforementioned acts in an amount to be determined at hial. ORAFOL further expects that discovery will confirm that the conduct of certain Defendants in using ORAFOL hademarks was intenhonal, malicious, and undertaken in bad faith. Therefore, ORAFOL is enhtled to recover, in addihon to actual damages, profits earned by Defendants as a result of their inhinging achons, exemplary damages, and attorneys' fees pursuant to 15 U.S.C.
§1117.
53.
ORAFOL is enhtled to seizure and impoundment of the inhinging goods and counterfeit marks, as well as records documenhng the manufacture, sale, or
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receipt of tilings involved in Defendants' counterfeiting, pursuant to 15 U.S.C. §
1116(d)(1).
54.
In addition. Defendants' conduct, if it continues unchecked, will result in irreparable harm to ORAFOL and, specihcally, to the goodwill associated with
ORAFOL's registered hademarks. The knock-off products manufactured and sold by the Defendants are of an inferior and poor quality, and thus have the impact of diluting and tarnishing ORAFOL's goodwill and corporate idenhty.
55.
Therefore, ORAFOL is enhtled to preliminary and permanent injunctive relief prohibiting Defendants from using ORAFOL's ARIOOO hade dress, its
Double Prism and Mulh-Triangle marks, as well as any other any frademarks confusingly similar to ORAFOL trademarks or hade dress, under 15 U.S.C. §1116.
COUNT II Counterfeiting (Asserted Against All Defendants)
56.
ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
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57.
The marks used on the counterfeit sheehng are substanhally indistinguishable hom, and indeed intended to be idenhcal to, ORAFOL's registered hademarks.
58.
Defendants' intenhonal use in commerce of a spurious version of ORAFOL's registered hademarks in connechon with the dishibution and/or sale of imitahon retroreflechve sheehng and delineators, with knowledge that such use was unlawful, is likely to cause confusion among the consurrdng pubhc concerning the source of goods and services marketed under those marks.
59.
Defendants' use of the aforemenhoned designahons is designed for the purpose of deceiving consumers into believing that products and/or services marketed under these marks originate with ORAFOL. Further harm and confusion results from the continued presence of the inferior, counterfeit ARIOOO sheehng on the public highways and otherwise in the marketplace.
60.
ORAFOL is enhtled to recover damages hom Defendants resulhng from
their produchon, sale, and other use in commerce of counterfeit goods bearing
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ORAFOL trademarks. Such damages hiclude, but are not hmited to, monetary and statutory damages for wiUful inhingement of up to $2,000,000.00 per counterfeited mark per type of goods sold, pursuant to 15 U.S.C. §1117.
61.
Because Defendants' products conshtute counterfeit goods, ORAFOL is entitled to a prejudgment seizure and impoundment of the goods and counterfeit marks, as well as records documenhng the manufacture, sale, or receipt of things involved in Defendants' counterfeihng, pursuant to 15 U.S.C. § 1116(d)(1).
62.
As further discovery taken in this achon will confirm, the conduct of certain
Defendants in using ORAFOL hademarks was intenhonal, malicious, undertaken in bad faith, and was done with knowledge that the mark or design was a
counterfeit mark. Therefore, ORAFOL is enhtled to recover, in addihon to actual
damages, profits earned by Defendants as a result of their counterfeihng achons,
augmented damages, exemplary damages, and attorney's fees from these
Defendants, pursuant to 15 U.S.C. §1117.
63.
Because Defendants are engaged in counterfeihng as defined by the Lanham
Act, ORAFOL is enhtled to an award of three hmes the amount of damages or
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profits awarded by the Court, whichever amount is greater, pursuant to 15 U.S.C.
§1117(b).
64.
In addition. Defendants' conduct, if it conhnues unchecked, will result in irreparable harm to ORAFOL and, specihcally, to the goodwill associated with
ORAFOL's registered hademarks. The knock-off products manufactured and sold by the Defendants are of an inferior and poor quality, and thus have the impact of diluhng and tarnishing ORAFOL's hademarks. Therefore, this Court should preliminarily and permanently enjoin Defendants hom using ORAFOL's Double
Prism and Mulh-Triangle marks, as provided under 15 U.S.C. §1116.
COUNT II Trade Dress Infringement (Asserted Against All Defendants)
65.
ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
66.
The ARIOOO sheeting's trade dress is distinctive in appearance, featuring the Double Prism logo, the Multi-Triangle logo, and over both of them the encircled "AR," arranged in a distinctive pattern on metalized, micro-prismatic.
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retroreflective material as follows:
•.-ii
67.
The ARIOOO sheeting is available in a variety of widths and colors,
including white, red orange, yellow, blue, and green. Each article of genuine
ARIOOO sheeting features the "AR" specification mark, which is printed over a
pattern of the Double Prism and Multi-Triangle logos.
68.
The ARIOOO hade dress is nonfunchonal. The "AR" specihcahon mark.
Double Prism logo, and Mulh-Triangle logo are not essential to the use or purpose
of the ARIOOO sheehng nor affect its cost or quality.
69.
The "AR" specihcahon mark. Double Prism logo, and Mulh-Triangle logo
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found on ARIOOO sheeting assure customers that the product was in fact produced by ORAFOL.
70.
The trade dress of Defendants' knock-off sheeting is identical to the hade dress of ARIOOO sheehng. The counterfeit sheeting features the same pattern of the
"AR" specificahon mark. Double Prism logo, and Multi-Triangle logo that distinguishes the ARIOOO sheehng as an ORAFOL product.
71.
Defendants' unauthorized use of the ORAFOL marks and the ARIOOO hade dress in connechon with the sale of imitahon products is likely to cause confusion among the consuming public concerning the source of goods and services marketed under those marks. Specifically, in violation of 15 U.S.C. § 1125(a)(1),
Defendants' use of the aforemenhoned designahons is intended to confuse consumers into believing that their ersatz rehoreflechve sheeting originates with
ORAFOL when, in fact, it is counterfeit and of inferior quality.
72.
ORAFOL has been damaged by the aforemenhoned acts in an amount to be determined at hial. The conduct of Defendants in using ORAFOL hademarks was intenhonal, malicious, and undertaken in bad faith. Therefore, ORAFOL is enhtled
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to recover, in addition to actual damages, profits earned by Defendants as a result of their inhinging achons, exemplary damages, and attorneys' fees pursuant to 15
U.S.C. §1117.
73.
ORAFOL is enhtled to seizure and impoundment of the infringing goods and counterfeit marks, as well as records documenting the manufacture, sale, or receipt of thhigs involved in Defendants' counterfeihng, pursuant to 15 U.S.C. §
1116(d)(1).
74.
In addihon. Defendants' conduct, if it continues unchecked, will result in irreparable harm to ORAFOL and, specihcally, to the goodwill associated with
ORAFOL's registered trademarks. The knock-off products manufactured and sold by the Defendants are of an inferior and poor quality, and thus have the impact of
diluhng and tarnishing ORAFOL's goodwill and corporate identity.
75.
Therefore, ORAFOL is enhtled to temporary and permanent injunchve relief
prohibiting Defendants hom using ORAFOL's ARIOOO hade dress, its Double
Prism and Mulh-Triangle marks, as well as any other any hademarks confusingly
similar to ORAFOL hademarks or hade dress, under 15 U.S.C. §1116.
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COUNT IV Contributory Trademark Infringement, Trade Dress Infringement and Counterfeiting (Asserted, in the Alternative, against Defendants We Source It, Victor F. Cabanas, W. Ivette Cabanas, SSBC and DBi)
76.
ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
77.
Although it was Defendant OT TID that manufactured the counterfeit
ARIOOO, the other Defendants were aware of the inhinging conduct and, based on the same facts and in the alternative to their direct liability under Counts 1, II, and
III, are liable for contributory infringement of ORAFOL's hademarks and hade
dress and for counterfeihng.
78.
These Defendants knowingly parhcipated in furthering the inhingement
and counterfeihng at issue in this case. The Cabanas Defendants knew that they were commissioning counterfeit ARIOOO. Defendants SSBC and DBi knew both
that their source was of dubious repute and unauthorized and that they would be
supplying posts for sale to the State of Florida, which would ultimately beheve it
was receiving a higher quality, genuine arhcle. All of these Defendants, on
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information and belief, knew or should have known that reflechve sheehng being sourced hom an unauthorized Chinese manufacturer at a price so far below market was counterfeit product that was intended to be and would be used for hademark inhingement.
79.
The unauthorized use of the ORAFOL marks and the ARIOOO hade dress in commerce, to which these Defendants achvely and knowingly conhibuted, has been and is likely to cause confusion among the consuming public concerning the source of goods and services marketed under those marks. Specifically, in violahon of 15 U.S.C. § 1114, Defendants' use of the aforemenhoned designahons is intended to confuse consumers into believing that products and/or services marketed under these marks originate with ORAFOL when, in fact, they are counterfeit and of inferior quality.
80.
ORAFOL has been damaged by the aforemenhoned acts in an amount to be determined at hial. ORAFOL further expects that discovery will conhrm that the conduct of certain Defendants in using ORAFOL hademarks was intenhonal, malicious, and undertaken in bad faith. Therefore, ORAFOL is enhtled to recover, in addihon to actual damages, prohts earned by Defendants as a result of their
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infringing actions, exemplary damages, and attorneys' fees pursuant to 15 U.S.C.
§1117.
81.
ORAFOL is entitled to seizure and impoundment of the infringing goods and counterfeit marks, as well as records documenhng the manufacture, sale, or receipt of things involved in Defendants' counterfeihng, pursuant to 15 U.S.C. §
1116(d)(1).
82.
In addihon. Defendants' conduct, if it conhnues unchecked, will result in irreparable harm to ORAFOL and, specihcally, to the goodwiU associated with
ORAFOL's registered hademarks. The knock-off products manufactured and sold by the Defendants are of an inferior and poor quahty, and thus have the impact of diluting and tarnishing ORAFOL's goodwill and corporate identity.
83.
Therefore, ORAFOL is entitled to preliminary and permanent injunchve rehef prohibihng Defendants hom using ORAFOL's ARIOOO hade dress, hs
Double Prism and Multi-Triangle marks, as well as any other any hademarks
confusingly similar to ORAFOL trademarks or hade dress, under 15 U.S.C. §1116.
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COUNT V Trademark Infringement - Passing Off (Asserted Against AU Defendants)
84.
ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
85.
Defendants have inhoduced into conomerce a rehoreflechve sheeting product that intenhonally uses hademarks owned by ORAFOL to confuse and mislead the consuming public as to the source and origin of the identified goods, and to improperly suggest an affiliation, sponsorship or approval by ORAFOL which the Defendants do not have.
86.
Defendants have caused their counterfeit goods to enter into interstate commerce.
87.
Defendants' false and misleading use of ORAFOL's hademarks conshtute false designation of origin in violahon of §43(a)(l)(E) of the Lanham Act, 15 U.S.C.
§1125.
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88.
ORAFOL has been damaged by Defendants' false designahons of origin, in an amount to be determined at hial. Specihcally, ORAFOL has been damaged because it has lost sales, suffered a loss of goodwill, suffered a tarnished reputahon, and has been or will be required to spend hme and funds to counter these false designahons in the marketplace. Moreover, Defendants have reaped unjushfied profits by their misstatements of origin.
89.
Defendants' false designahons of origin, if allowed to go unchecked, will irreparably damage ORAFOL. Therefore, in addihon to awarding damages and lost prohts, this Court should preliminarily and permanently enjoin Defendants
from making false designahons of origin, and, in addihon, should order
Defendants to undertake or to reimburse for correchve advertising sufhcient to
counter Defendants' false designahons.
COUNT VI
Violation of the Georgia Deceptive Trade Practices Act, O.C.G.A. § 10-1-370 et seq. (Asserted Against All Defendants)
90.
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ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
91.
Through the use of ORAFOL's trademarks, by using unauthorized copies of
ORAFOL's ARIOOO sheeting, and through Defendants' false designahons of origin.
Defendants have created a likelihood of confusion and misunderstanding as to the source, sponsorship, approval, or cerhficahon of the counterfeit goods. Such achons by the Defendants conshtute deceptive hade prachces in violation of
O.C.G.A. § 10-1-370 et. seq.
92.
As a result of Defendants' ongoing decephve hade prachces, ORAFOL is enhtled to injunchve rehef to remedy those violahons.
93.
ORAFOL is also entitled to recover its attorney's fees and costs incurred in connechon with this achon.
COUNT VII Unjust Enrichment (Asserted Against All Defendants)
94.
ORAFOL incorporates and re-alleges, as though fully set forth herein.
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paragraphs 1 through 44 above.
95.
By theh achons as described above. Defendants have received benefits
which they are not, in equity and good conscience, entitled to retain.
96.
By their achons, as described above. Defendants have been unjustly enriched
at the expense of ORAFOL, and ORAFOL has thereby been damaged in an amount
to be proven at hial.
COUNT VIII Fraudulent Use of Trademarks Pursuant to O.C.G.A. §23-2-55 (Asserted Against All Defendants)
97.
ORAFOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
98.
By their achons as described above. Defendants have encroached upon the
business of ORAFOL through the use of virtually idenhcal hademarks on their
posts.
99.
Defendants' actions were undertaken with the intent to deceive and mislead
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the pubhc, and they conshtute the haudulent use of hademarks pursuant to
O.C.G.A. §23-2-55.
100.
ORAFOL is entitled to recover in equity any and all damages sustained on
account of Defendants' conduct, in an amount to be determined at trial.
COUNT IX Accounting (Asserted Against All Defendants)
101.
OI^FOL incorporates and re-alleges, as though fully set forth herein, paragraphs 1 through 44 above.
102.
Defendants' false designation of origin and trademark infringement has
been deliberate and willful.
103.
Defendants have been and continue to be unjustly enriched by their
conduct, as alleged herein. As a result of their conduct. Defendants have made
sales of their products that they would not otherwise have made.
104.
By reason of Defendants' acts alleged herein, ORAFOL has and will suffer
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damage to its business, reputation and goodwill and the loss of sales and profits
ORAFOL would have made but for Defendants' acts.
105.
ORAFOL has been damaged monetarily by Defendants' conduct, in an amount to be proven at trial.
106.
Pursuant to 15 U.S.C. § 1117, ORAFOL is enhtled to an order that
Defendants account to OI^FOL for all profits realized by virtue of Defendants' false designations of origin, deceptive acts and practices, and unfair competition, and the product sales resulting therefrom.
107.
ORAFOL is also entitled to examine all of Defendants' corporate records to
determine the extent to which Defendants have wrongfully profited from their
false and misleading statements.
V. RELIEF REQUESTED
WHEREFORE, ORAFOL requests that judgment be entered:
A. Preliminarily and permanently enjoining Defendants from:
(i) using, asserhng ownership of, or registering any of ORAFOL's
hademarks or hade dress, including, but not limited to.
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ORAFOL's Double Prism and Multi-Triangle marks and its
ARIOOO trade dress, as well as any other any hademarks
confusingly similar to ORAFOL hademarks or hade dress;
(ii) using any retroreflechve sheehng that is substanhally similar to
ORAFOL's ARIOOO sheehng or otherwise using any of
ORAFOL's hade dress;
(iii) engaging in any acts of false designahon of origin; and
(iv) violahng the Georgia Uniform Decephve Prachces Act.
B. Ordering Defendants to undertake and/or to pay the costs of
appropriate correchve adverhsing;
C. Granting judgment in favor of ORAFOL and against each and every
Defendant on each and every count of the Complaint, as applicable,
and awarding the amount of actual, consequenhal and/or
compensatory damages proved by ORAFOL;
D. Awarding ORAFOL statutory damages against each and every
Defendant, as applicable, for their acts described herein to the extent
allowed by law;
E. Awarding ORAFOL augmented and exemplary damages against
each and every Defendant, as applicable, for their intentional acts
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described herein to the extent allowed by law;
F. Ordering an accounting from Defendants of all revenues received
from operation of their business and disgorgement of all profits
from their wrongful activity;
G. Ordering the immediate impoundment and seizure of all infringing
goods for destruction by ORAFOL, with Defendants to bear the
costs of the same;
H. Awarding to ORAFOL the costs and disbursements of this action,
including reasonable attorneys' fees, costs associated with the
seizure and storage of counterfeit goods, accountants' fees and
expert fees;
I. Awarding pre- and post-judgment interest at the legal rate; and
J. Granting such other and further relief as this Court deems just,
equitable and proper.
Dated this 27th day of October, 2016.
Signature of Counsel Appears on the Following Page
-40- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 41 of 42
Respectfully submitted.
ARNALL GOLDEN GREGORY LLP
/s/ Andrew B. Flake Georgia Bar No. 262425 [email protected] Morgan E. M. Morrison Georgia Bar No. 470983 [email protected]
17117th street NW, Suite 2100 Atlanta, Georgia 30363 Tel: 404-873-8500 Fax: 404-873-8501
Attorneys for ORAFOL Americas Inc.
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CERTIFICATE OF SERVICE
The undersigned ahorney herby cerhhes that she has this day served
Defendant DBi Services, LLC with the foregoing document by first class United
States mail addressed to its counsel of record as follows:
Timothy H. Kratz, Esq. George J. Barry III, Esq. McGuire Woods LLP 1230 Peachtree St. N.E., Suite 2100 Adanta, GA 30309-7649
This 27th day of October, 2016.
I si Morgan E. M. Morrison Morgan E. M. Morrison
9295968