Case3:10-cv-05680-MMC Document1 Filed12/14/10 Page1 of 51 Marilyn Raia, SBN 72320 C. Todd Norris, SBN 181337 BULLIVANT HOUSER BAILEY PC 2 601 California Street, Suite 1800 San Francisco, CA 94108 3 Tel: (415) 352-2700 Fax: (415) 352-2701 E-mail: [email protected] 4 E-mail: [email protected] 5 Attorneys for Plaintiff BEATS ELECTRONICS, LLC 6 7 Robert W. Payne, Esq. (Bar No. 073901) Scott J. Allen, Esq. (Bar No. 178925) 8 Christopher J. Passarelli (Bar No. 241174) LARIV1ERE, GRUBMAN & PAYNE, LLP Post Office Box 3140 9 19 Upper Ragsdale Drive Monterey, CA 93942-3140 10 Tel: (831) 649-8800 Facsimile: (831) 649-8835 11 Attorneys for Plaintiff 12 MONSTER CABLE PRODUCTS, INC. Mc 13 IN THE UNITED STATES DISTRICT COURT 14 FOR THE NORTHERN DISTRICT OF CALIFORNIA 15 16 BEATS ELECTRONICS, LLC, a Delaware Limited Liability Company and MONSTER ) 17 CABLE PRODUCTS, INC., a California ) corporation, ) COMPLAINT FOR PATENT 18 ) INFRINGEMENT, INDUCEMENT Plaintiffs, ) OF PATENT INFRINGEMENT, 19 VS. ) TRADE DRESS INFRINGEMENT 20 ) AND UNFAIR COMPETITION, FANNY WANG HEADPHONE COMPANY, ) 21 INC., a California Corporation and TIMOTHY ) JURY TRIAL DEMANDED W. HICKMAN, an Individual ) 22 ) Defendants. ) 23 24 25 Plaintiff Beats Electronics, LLC ("Beats") and Plaintiff Monster Cable Products, Inc. 26 ("Monster") (collectively, "Plaintiffs"), by their attorneys, for their Complaint against Defendant 27 Fanny Wang Headphone Company, Inc. ("Fanny Wang") and Defendant Timothy W. Hickman 28 ("Hickman") (collectively, "Defendants") allege as follows: COMPLAINT FOR PATENT INFRINGEMENT, INDUCEMENT OF PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION Case3:10-cv-05680-MMC Document1 Filed12/14/10 Page2 of 51 1 PARTIES 2 1. Plaintiff Beats is a limited liability company organized under the laws of 3 Delaware, with a principal place of business at 2200 Colorado Avenue, Santa Monica, 4 California, 90404. Beats is a world-class producer of cutting-edge audio equipment, including 5 its "Solo" and "Studio" headphones, both of which are protected by Beats' proprietary trade 6 dress — with its Studio headphone further protected under the U.S. Patent Law — and are the 7 subject of this action. 8 2. Plaintiff Monster is a corporation organized under the laws of California, with a 9 principal place of business at 455 Valley Drive, Brisbane, California, 94005. Monster is the 10 world's leading manufacturer of high performance cables that connect audio/visual components 11 for home, car and professional use. Among their many attributes and benefits, Monster's audio 12 cables increase the clarity, dynamics and power of the audio signals that travel through them. In 13 addition, Monster is the exclusive licensee and distributor of Beats' Studio Headphones. 14 3. According to its Website and upon information and belief, Defendant Fanny 15 Wang is a corporation with a principal place of business at 375 Diablo Road, Danville, 16 California 94526. Despite Defendants' assertions, Plaintiffs have performed their due diligence 17 but have been unable to confirm that Defendant Fanny Wang is a legal entity registered with the 18 any state's Secretary of State's Office. 19 4. Upon information and belief, Defendant Hickman is an individual, either 20 operating a business from, or residing at, 20 Highland Court, Danville, CA 94526. 21 5. There may be additional persons or entities liable for the activities which form the 22 basis for this Complaint. Plaintiffs will explore this on discovery and, if necessary, amend this 23 Complaint to add such persons or entities as parties. 24 NATURE OF THE ACTION 25 6. This Complaint is brought because of Defendants' on-going manufacture, 26 importation, use and/or sales of "Fanny Wang" Headphones, which are knock-offs of Beats' 27 world-famous "Studio" and "Solo" model headphones. As a result of these actions, Defendant 28 has: [i] willfully infringed Beats' United States Patent, Pat. No. D552,077, in violation of 35 2 COMPLAINT FOR PATENT INFRINGEMENT, INDUCEMENT OF PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION Case3:10-cv-05680-MMC Document1 Filed12/14/10 Page3 of 51 1 U.S.C. § 271(a); [ii] willfully induced others to infringe Beats' United States Patent in violation 2 of 35 U.S.C. § 271(b); [iii] willfully infringed Plaintiffs' trade dress and committed unfair 3 competition in violation of 15 U.S.C. § 1125(a); [iv] willfully diluted Plaintiffs' famous trade 4 dress in violation of 15 U.S.C. § 1125(c); [v] willfully diluted Plaintiffs' famous trade dress in 5 violation of California Trademark Dilution Act § 14330, et. seq.; [vi] willfully committed unfair 6 competition in violation of the California Unfair Practices Act, Cal. Bus. & Prof. Code § 17200 7 et. seq.; and [vii] willfully committed trade dress infringement and unfair competition in 8 violation of California common law, 9 JURISDICTION AND VENUE 10 7. This Court has subject matter jurisdiction under one or more of the following 11 statutes: 28 U.S.C. § 1331 (federal question), 28 U.S.C. § 1338 (patents and trademarks), and 28 12 U. S .C. § 1367 (supplemental jurisdiction). 13 8. Personal jurisdiction is proper in the Northern District of California under 28 14 U.S.C. § 1391(b) and (c) with respect to Defendants, because a substantial part of the events 15 giving rise to the claims occurred in this District. Upon information and belief', Defendants are 16 located within this District, conduct regular business within this District, and specifically have 17 marketed and continue to market its infringing headphones in this District. 18 9. Venue is proper under 28 U.S.C. § 1391 (a), (b) and (c), as well as 28 U.S.C. § 19 1400(b). 20 BACKGROUND AND FACTS RELATED TO THIS ACTION 21 10. Beats grew out of a collaboration between legendary artist and producer Andre 22 Young (professionally known as Dr. Dre) and Jimmy Iovine, Chairman of Interscope Geffen 23 A&M Records. Among its products, Beats has developed a new line of revolutionary 24 headphones with the capacity to reproduce the full spectrum of sound that musical artists and 25 producers hear with producing music. Among these revolutionary headphones are the Beats 26 Studio Headphones and the Beats Solo Headphones. Several copies of photographs of the Studio 27 Headphones are attached hereto as Exhibit A, and copies of photographs of the Solo Headphones 28 are attached hereto as Exhibit B. 3 COMPLAINT FOR PATENT INFRINGEMENT, INDUCEMENT OF PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION Case3:10-cv-05680-MMC Document1 Filed12/14/10 Page4 of 51 1 11. Indeed, Beats' has obtained patent protection for the design of its revolutionary 2 headphones, and owns U.S. Patent No. D552,077 (the "077 Patent"). A copy of the '077 Patent 3 is attached as Exhibit C. 4 12. Since their introduction, Beats' headphones have enjoyed tremendous sales. The 5 Studio Headphones have been featured with Dr. Dre in commercials for Dr. Pepper, and have 6 been endorsed in commercials by numerous perfauning artists, such as William Adams 7 (professionally known as Will.i.am). Moreover, through Plaintiffs' extensive sales and 8 promotion of the Beats headphones, consumers have come to associate the distinctive 9 appearance of Beats' Studio Headphones and Solo Headphones with a single source, Beats. 10 Accordingly, the distinctive appearance of both the Studio and Solo Design headphones 11 constitutes Beats' protectable, proprietary trade dress ("Beats' Trade Dress"). As a result, Beats' 12 Trade Dress, along with the valuable goodwill associated with both Beats' and Monsters' names 13 and their products, are among Plaintiffs' most valuable assets. 14 13. On December 9, 2010, Plaintiffs first became aware of the infringing Fanny Wang 15 headphones, which are being marketed on Defendants' website at <http://www.fannywang.com > 16 ("the Fanny Wang Website"). Plaintiffs also learned on that date that Defendants planned to host 17 a "Product Launch Party" for the infringing Fanny Wang headphones at the W Hotel in San 18 Francisco, CA on December 14, 2010. Copies of the Fanny Wang Website are attached hereto 19 as Exhibit D, and copies of the Product Launch Party leaflets are attached hereto as Exhibit E. 20 14. Upon information and belief, Defendant Fanny Wang manufactures, imports, 21 distributes and sells a line of headphones under the mark "Fanny Wang." Upon information and 22 belief, these headphones are specifically designed to infringe Beats' patent rights, and 23 simultaneously trade off of Beats' Trade Dress (described in detail below) and Plaintiffs' 24 goodwill in their products. Indeed, Fanny Wang's entire advertisement campaign appears to be a 25 direct assault on Beats' proprietary rights. Specifically, Fanny Wang's website includes multiple 26 statements such as, "add punch to the base line without artificially over doing it like so many 27 others in this category (a'hmm — Beats)". A side-by-side comparison of the Fanny Wang 28 headphones and Beats"077 Patent is attached hereto as Exhibit F. 4 COMPLAINT FOR PATENT INFRINGEMENT, INDUCEMENT OF PATENT INFRINGEMENT, TRADE DRESS INFRINGEMENT AND UNFAIR COMPETITION Case3:10-cv-05680-MMC Document1 Filed12/14/10 Page5 of 51 1 15. To make the Fanny Wang headphones, Fanny Wang slavishly copied the 2 distinctive product configuration of Beats' Solo Headphones, as well as Beats' Studio 3 Headphones. 4 16. Under the "about us" link, Defendants' Website states, in part, "The Fanny Wang 5 headphones takes the trend started by 'Beats by Dr Dre' [sic] to the next level in terms of 6 fashion, sound, and price. Consumer [sic] will be blown away at the sound quality which rivals 7 Beats by providing a forceful bass (without over doing it) while keeping a very clean sound. The 8 same sound engineer in China who designed the "Beats by Dr Dre" [sic] acoustics tackled the 9 Fanny Wang challenge to create a superior sound that compliments urban hip hop and provides 10 enough range to satisfy any modem consumer." Additionally, on December 9, 2010, Defendants 11 posted a video on the YouTub e web site, located at the 12 <www.youtube.com/watch?v=IxDPEEoERh8 > domain name.