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. 9295968 Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 2 of 42 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. 9295968 -2- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 3 of 42 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. 9295968 -3- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 4 of 42 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. 9295968 -4- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 5 of 42 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 9295968 -5- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 6 of 42 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 9295968 -6- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 7 of 42 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 9295968 -7- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 8 of 42 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. 9295968 -8- Case 1:16-cv-03516-SCJ Document 26 Filed 10/27/16 Page 9 of 42 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.