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In the United States District Court for the District of Colorado

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In the United States District Court for the District of Colorado Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 1 of 17 IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF COLORADO SURF 9, LLC, § § Plaintiff, § Civil Action No. _______________ § v. § § Date: December 1, 2014 THE SPORTS AUTHORITY, INC. § EASTMAN FOOTWEAR GROUP, INC., § § Defendants. § COMPLAINT FOR PATENT INFRINGEMENT; DEMAND FOR JURY TRIAL; INJUNCTIVE RELIEF REQUESTED PARTIES 1. Plaintiff Surf 9, LLC (“Surf 9”) is a Florida limited liability company with its principal place of business at 16120 San Carlos Blvd., Unit 9, Fort Myers, Florida 33908. Surf 9 designs, manufactures, and distributes footwear, amongst other goods. 2. Defendant The Sports Authority, Inc. (“TSA”) is a Delaware corporation with its principal place of business at 1050 W. Hampden Ave, Englewood, Colorado 80110. On information and belief, TSA is a retailer of sporting goods, including footwear. 3. Defendant Eastman Footwear Group, Inc. (“Eastman”) is a New York corporation with its principal place of business at 34 West 33rd St., New York, New York 10001. On information and belief, Eastman manufactures goods for sale to consumers and is a supplier of said goods, including footwear, to TSA. JURISDICTION 4. This is a civil action for patent infringement arising under the patent laws of the United States, 35 U.S.C. § 101, et. seq. This Court has jurisdiction over the subject matter of - 1 - Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 2 of 17 this action pursuant to 28 U.S.C. §§ 1331 and 1338(a). 5. This Court has personal jurisdiction over the defendants in this matter. The Court has general jurisdiction over TSA as TSA’s principal place of business is in this District. On information and belief, this Court further has general and specific jurisdiction over TSA and Eastman as the parties have engaged in systematic and continuous business together in this District and as Eastman sold the accused products to TSA in this District. On information and belief, TSA has further sold the accused products at retail outlets in this District and sold and/or offered to sell the accused products online to customers in this District. 6. For the reasons set forth in the paragraph above, venue is proper in this district under 28 U.S.C. §§ 1391 and 1400(b). CAUSE OF ACTION The Patent 7. On November 19, 2013, United States Patent D 693,546, titled “Water Shoe,” was duly and legally issued to John M. Chenciner (the “‘546 patent”). The ‘546 patent discloses and claims a distinctive design for a water shoe. Surf 9 sells an embodiment of the patented design. The water shoe design, as depicted in Figure 2 of the ‘546 patent, is reproduced below. A true and correct copy of the ‘546 patent is attached as Exhibit A. 8. By assignment, Surf 9 owns all right, title and interest in and to the ‘546 patent, including but not limited to the right to enforce the ‘546 patent and collect damages for past - 2 - Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 3 of 17 and future infringements. Count One (Infringement of U.S. Patent D 693,546 by TSA) 9. Surf 9 incorporates herein by reference each and every allegation in the preceding paragraphs. 10. TSA has sold and/or offered to sell products in the United States, including but not limited to Eastman’s OXIDE Water Shoes, Riptide II Water Shoes, and Tide Water Socks (including but not limited to item numbers 24733326, 16508026, 24677186, 16508036), that incorporate Surf 9’s patented design. TSA’s sales and offers for sale of at least these water shoes infringe the ‘546 patent. Photographs of examples of infringing water shoes offered for sale by TSA are reproduced below. - 3 - Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 4 of 17 11. The water shoe products sold by TSA are, in the eyes of the ordinary consumer, substantially the same – if not virtually identical – as the design set forth in the ‘546 patent, and infringe Surf 9’s rights. 12. TSA has had both constructive and actual notice of the ‘546 patent and its application to infringing products under 35 U.S.C. § 287, including but not limited to Eastman’s OXIDE Water Shoes, Riptide II Water Shoes, and Tide Water Socks, including through numerous oral and written communications between TSA, Surf 9 and related persons and entities, and including through TSA’s knowledge of Surf 9’s product embodying the design in the ‘546 patent, knowledge of Surf 9’s pursuit of patent protection for the design, knowledge of the issuance of the ‘546 patent, and the marking of the ‘546 patent number on certain Surf 9 products. Despite this notice, TSA nevertheless sold and offered to sell products that infringe the ‘546 patent during the relevant times. 13. On information and belief, TSA is inducing and/or contributing to direct infringement of the ‘546 patent by others by actively instructing, assisting, and/or encouraging others to manufacture, use, and/or import products that incorporate the design set forth in the ‘546 patent, including but not limited to the OXIDE Water Shoes, Riptide II Water Shoes, and Tide Water Socks (item numbers 16508026, 24677186, 16508036) sold and/or offered to sell by TSA. 14. TSA’s infringement of the ‘546 patent has been willful, deliberate, and in conscious disregard of Surf 9’s patent rights, making this an exceptional case within the meaning of 35 U.S.C. §§ 284 and 285. 15. The infringement of the ‘546 patent by TSA will continue unless enjoined by - 4 - Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 5 of 17 this Court. The infringing activities by TSA have caused and will continue to cause irreparable injury to Surf 9 to which there exists no adequate remedy at law. 16. As a result of TSA’s deliberate and willful infringement of the ‘546 patent, Surf 9 has been damaged in an amount to be determined at trial. 17. TSA is liable to Surf 9 under 35 U.S.C. § 289 to the extent of TSA’s total profit. Count Two (Infringement of U.S. Patent D 693,546 by Eastman) 18. Surf 9 incorporates herein by reference each and every allegation in the preceding paragraphs. 19. Eastman has made, used, sold, offered to sell, and/or imported water shoes that incorporate Surf 9’s patented design, including but not limited to the OXIDE Water Shoes, Riptide II Water Shoes, and Tide Water Socks. Eastman’s making, using, selling, offering to sell, and/or importation of its water shoes infringe the ‘546 patent. Surf 9 incorporates the photographs in Paragraph 10 of examples of infringing water shoes manufactured, used, sold, offered to sell, and/or imported by Eastman as if set forth below. 20. The water shoe products manufactured, used, sold, offered to sell, and/or imported by Eastman are, in the eyes of the ordinary consumer, substantially the same – if not virtually identical – as the design set forth in the ‘546 patent, and infringe Surf 9’s rights. 21. Eastman has had both constructive and actual notice of the ‘546 patent and its application to infringing products under 35 U.S.C. § 287, including but not limited to Eastman’s OXIDE Water Shoes, Riptide II Water Shoes, and Tide Water Socks, including through numerous oral and written communications between Eastman, Surf 9 and related persons and entities, and including through Eastman’s knowledge of Surf 9’s product embodying the design in the ‘546 patent, knowledge of Surf 9’s pursuit of patent protection for the design, knowledge of the issuance of the ‘546 patent, and the marking of the ‘546 patent - 5 - Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 6 of 17 number on certain Surf 9 products. Despite this notice, Eastman nevertheless sold and offered to sell products that infringe the ‘546 patent during the relevant times. 22. On information and belief, Eastman is inducing and/or contributing to direct infringement of the ‘546 patent by others by actively instructing, assisting, and/or encouraging others to use, sell and/or offer to sell products that incorporate the design set forth in the ‘546 patent, including but not limited to the to the OXIDE Water Shoe, Riptide II Water Shoes, and Tide Water Socks sold and/or offered to sell by TSA. 23. Eastman’s infringement of the ‘546 patent has been willful, deliberate, and in conscious disregard of Surf 9’s patent rights, making this an exceptional case within the meaning of 35 U.S.C. §§ 284 and 285. 24. The infringement of the ‘546 patent by Eastman will continue unless enjoined by this Court. The infringing activities by Eastman have caused and will continue to cause irreparable injury to Surf 9 to which there exists no adequate remedy at law. 25. As a result of Eastman’s deliberate and willful infringement of the ‘546 patent, Surf 9 has been damaged in an amount to be determined at trial. 26. Eastman is liable to Surf 9 under 35 U.S.C. § 289 to the extent of Eastman’s total profit. DEMAND WHEREFORE, Surf 9 requests that judgment be entered in its favor and against TSA and Eastman as follows: A. Declaring that TSA and Eastman have infringed United States Patent D 693,546 pursuant to 35 U.S.C. § 271; B. Issuing a permanent injunction enjoining TSA and Eastman, their officers, agents, subsidiaries and employees, and those in privity or in active concert with them, from further - 6 - Case 1:14-cv-03260 Document 1 Filed 12/01/14 USDC Colorado Page 7 of 17 activities that constitute infringement of United States Patent D 693,546 both within the State of Colorado and across the United States; C.
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