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Yang & Wang, P.C.
Andrew J. Wei SBN: 293787
Tommy SF Wang SBN: 272409
355 S. Grand Ave., Ste. #2450
Los Angeles, CA 90071
Telephone: (888) 827-8880
Fax: (888) 827-8880
Email: twang@yangwanglaw.com.awei@yangwanglaw.com;
Attorneys for Plaintiff
JAT Wheels, Inc.
UNITED STATES DISTRICT COURT
/)
(IJ'"
CENTRAL OF CALIFORNIA .
JAT Wheels, Inc., a California - 5 5 12 .JfYv - kJvv I
Corporation d/b/a! STR Racing,
Plaintiff, COMPLAINT FOR:
vs.
Wheel Supply Systems, Inc., a Nevada
COrPoration; and DOES 1-10,
collectively,
Defendant.
1. PATENT INFRINGEMENT [35
U.S.C. 271];
2. FEDERAL COPYRIGHT
INFRINGEMENT n 7 U.S.C. 106];
3. CALIFORNIA COMMON LAW
UNFAIR COMPETITION; and
4. CALIFORNIA UNFAIR
COMPETITION (CALIFORNIA
BUSINESS & PROFESSIONS
CODES 17200, et seq.]
DEMAND FOR JURY TRIAL
JAT WHEELS INC.'S COMPLAINT
1
1 Plaintiff, JAT WHEELS, Inc. a California Corporation, dba STR Racing
2 (hereinafter "Plaintiff'), hereby files this Complaint against Defendant Wheel
3 Supply Systems, Inc. (hereinafter "Defendant"), and DOES 1 to 10, and alleges as
4 follows:
5 INTRODUCTION
6 1. Plaintiff files this action to combat the willful sale of unlicensed and
7 counterfeit products (hereinafter "Infringing Products") utilizing the
8 Plaintiffs exclusive design patents, and unauthorized use of Plaintiff's
9 copyrighted photographs. The Defendant is a corporation specializing in
10 the research, manufacture and sales of aftermarket automobile wheels.
11 2. Plaintiff seeks a Permanent Injunction, damages, costs, and attorneys' fees
12 as authorized by the Lanham Act, the patent laws of the United States,
13 Title 35, United States Code, California's common law, and California
14 Business & Professions Code.
15 JURISDICTION N D ~ V E N U E
16 3. This Court has subject matter jurisdiction under 28 U.S.C. 1331 (federal
17 question) and 28 U.S.C. 1338(a) (action arising under an Act of
18 Congress relating to patents).
19 4. The Court has personal jurisdiction over Defendant since Defendant has
20 committed acts of Design Patent infringement and unfair competition in
21 this district and/or Defendant has sufficient minimum contacts with this
22 district to such that the exercise of jurisdiction over Defendant by this
23 Court does not offend traditional notions of fair play and substantial
24 justice. Among other things, Defendant has advertised, offered to sell and
25 sold products that infringe Plaintiff's Design Patent rights to consumers
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JAT WHEELS INC.'S COMPLAINT
2
1 within this judicial district, knowing or having reason to know that
2 consumers, including those within this judicial district, would purchase
3 said goods from Defendant, believing that they were authentic goods
4 produced by and/or associated with Plaintiff or its authorized licensees.
5 5. Further, this Court has jurisdiction over Plaintiffs California state
6 statutory and common law claims pursuant to 28 U.S.C. 1367.
7 6. Supplemental jurisdiction exists over Defendant because on information
8 and belief, Defendant conducts business in California and in this judicial
9 district, has purposefully availed itself to California and in this judicial
10 district, or has otherwise availed itself of the privileges and protections of
11 the law of the State of California, such that this Court's assertion of
12 jurisdiction over Defendant does not offend traditional notions of fair play
13 and due process.
14 7. Venue is proper within the Central District of California pursuant to 28
15 U.S.C. 1391(b) and 1400(a) because on information and belief, a
16 substantial part of the events or omissions giving rise to the claim
17 occurred in this judicial district, and has caused damages to Plaintiff in
18 this district.
19 THE PARTIES
20 8. Plaintiff, JAT WHEELS, INC., dba STR Racing, is a California
21 corporation duly organized and existing under the laws of the State of
22 California, and whose office is located at address 2107-D W.
23 Commonwealth Ave. #392, Alhambra, California 91803.
24 9. Upon information and belief, Defendant, Wheel Supply Systems, Inc.
25 (hereinafter "Defendant"), is, and at all times mentioned herein was, a
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JAT WHEELS INC.'S COMPLAINT
3
1 corporation organized and existing under the laws of the State of Nevada,
2 having its principal place of business at 7545 Rosecrans Ave., Paramount,
3 CA 90723.
4 10. The true names and capacities, whether individual, corporate, associate or
5 otherwise, of Defendants herein named DOES 1-10, inclusive are
6 unknown to Plaintiff. Plaintiff therefore sues said Defendants by such
7 fictitious names. When the true names and capacities of said Defendants
8 have been ascertained, Plaintiff will amend this pleading accordingly.
9 11. Plaintiff further alleges that Defendant and DOES 1-10, inclusive sued
10 herein by fictitious names are jointly, severally and concurrently liable
11 and responsible with the named Defendant upon the causes of action
12 hereinafter set forth.
13 12. Plaintiff is informed and believes and thereon alleges that at all times
14 mentioned herein Defendant, and DOES 1-10, inclusive, and each of
15 them, were the agents, servants, and employees of every other Defendant
16 and the acts of each Defendant, as alleged herein, were performed within
17 the course and scope of that agency, service or employment.
18 FACTS
19 13.Plaintiffis the owner of all right, title and interest in the U.S. Design
20 Patent Application No. 29,492,155 (the "Design Patent") filed May 29,
21 2014.
22 14.In or around June 2014, Plaintiff discovered that Defendant was
23 manufacturing and selling automobile parts on the Internet that infringed
24 on Plaintiffs Design Patent.
25
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JAT WHEELS INC.'S COMPLAINT
4
1 15.In or around May 2014, Plaintiff published photographs to its website
2 displaying its aftennarket automobile parts. Plaintiff owns the copyrights
3 and ownership rights to these photographs.
4 16.Without Plaintiffs consent, Defendant sporadically, but consistently, used
5 Plaintiffs copyrighted images to promote and sell the Infringing Products
6 on Defendant's website.
7 17.Defendant's infringing activities have caused damages to Plaintiffby
8 causing customer confusion as to the source of the Design Patent. In
9 addition, Defendant's use of the aforementioned Design Patent has and
10 continues to dilute Plaintiffs goodwill in its products and business that it
11 has invested significant time and resources.
12 18.0n infonnation and belief, Defendant's infringement of one or more of
13 the Plaintiff s Patents is willful and deliberate, therefore entitling Plaintiff
14 to enhanced damages and reasonable attorney fees and costs.
15 19. On infonnation and belief, Defendant intends to continue their unlawful
16 infringing activity, and Plaintiff continues to and will continue to suffer
17 irreparable hann-for which there is no adequate remedy at law-unless
18 Defendant is enjoined by this Court.
19 20.As a result of Defendant's unlawful infringement of the Plaintiffs Design
20 Patent, Plaintiff has suffered and will continue to suffer damages. Plaintiff
21 is entitled to recover from Defendant the damages suffered as a result of
22 Defendant's unlawful acts.
23
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JA T WHEELS INC:S COMPLAINT
5
1 COUNT 1- INFRINGEMENT OF THE DESIGNPATENT
2 21. Plainti ff repeats and re-alleges, as if set forth herein, the allegations
3 contained in paragraphs 1 through 20.
4 22. Plaintiff is the owner of all right, title, and interest in the Design Patent,
5 titled "STR513 Wheel Design" duly and properly filed with the U.S.
6 Patent and Trademark Office on May 29,2014. A copy of the Design
7 Patent is attached as Exhibit A.
8 23. Defendants have been and/or are directly infringing and/or inducing
9 infringement of and/or contributory infringing the Design Patent by,
10 among other things, making, using, offering to sell or selling in the United
11 States, or importing into the United States, products that are covered by
12 the design patent, including, by way of example and not limitation, the
13 MST WHEELS MTll wheel, attached as Exhibit B.
14 24. Plaintiff is infonned and believes, and on that basis alleges, that
15 Defendant's infringement of the Design Patent has been and continues to
16 be intentional, willful, and without regard to Plaintiff's rights. Plaintiff is
17 infonned and believes, and on that basis alleges, that Defendant's
18 infringement of the Design Patent is and has been intentional, deliberate,
19 and willful at least because it had knowledge of the Design Patent through
20 direct or indirect communications with Plaintiff and/or as a result of its
21 participation in the aftennarket automobile parts industry.
22 25. Plaintiff is infonned and believes, and on that basis alleges, that
23 Defendant has gained profits by virtue of its infringement of the Design
24 Patent.
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JAT WHEELS INC.'S COMPLAINT
6
1 26. Plaintiffhas sustained damages as a direct and proximate result of
2 Defendant's infringement of the Design Patent.
3 COUNT II-FEDERAL COPYRIGHT INFRINGEMENT
4 27. Plaintiff repeats and re-alleges, as set forth herein, the allegations
5 contained in paragraphs 1 through 26.
6 28. Plaintiffs were and are the exclusive holder of all rights, title and interest
7 in their photographs, as separate and distinct works.
8 29. Defendant has infringed and is infringing the copyrighted photographs by
9 unlawfully reproducing and using such photographs in violation of the
10 United States Copyright Act, 17 U.S.C. 106.
11 30. Defendant's infringement was and is willful, in bad faith, and executed
12 with full knowledge of Plaintiffs copyright, and in conscious disregard
13 for Plaintiffs exclusive rights in the protected work.
14 31. Defendant's deliberate infringement of Plaintiff s copyrights has greatly
15 and irreparably damaged Plaintiff.
16 32. Defendant's production of infringing products and copyrighted material,
17 and Defendant's wrongful conduct, have deprived and continue to deprive
18 the Plaintiff of their opportunity of expanding their goodwill. Plaintiff is
19 entitled to an injunction restraining Defendant, its officers, agents, and
20 employees, and all persons acting in concert with it, from engaging in any
21 further acts in violation of the copyright laws.
22 33.Plaintiff is further entitled to recover the damages, including attorneys'
23 fees, they have sustained and will sustain, and any gains, profits, and
24 advantages obtained by Defendant as a result of Defendant's acts of
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JAT WHEELS INC.'S COMPLAINT
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1 infringement alleged above. At present, the amount of such damages,
2 gains, profits, are in an amount to be determined.
3 COUNT 111- CALIFORNIA COMMON LAW UNFAIR COMPETITION
4 34. Plaintiff repeats and re-alleges, as set forth herein, the allegations
5 contained in paragraphs 1 through 34 and brings the following claim for
6 unfair competition pursuant to California's common law against the
7 Defendant.
8 35. The Court has jurisdiction over this Cause pursuant to 28 U.S.C. 1367
9 and 1338(b).
10 36. By Defendant's acts alleged herein, the Defendant has engaged in unfair
11 competition under the common law of the State of California.
12 37. Defendant has distributed and sold Infringing Products utilizing the
13 Design Patent of the Plaintiff in California, thereby creating a false
14 designation of origin of Plaintiffs brand of goods and unfairly competing
15 with Plaintiff s business.
16 38. Upon information and belief, Defendant has knowingly and willfully
17 misappropriated Plaintiff s Design Patent in an effort to create the
18 impression that the Defendant's counterfeit products are sanctioned by the
19 Plaintiff and to misappropriate the goodwill associated with Plaintiff s
20 Design Patent, entitling Plaintiff to an award of exemplary damages and
21 attorneys' fees.
22 39. The aforesaid acts of the Defendant have caused damage to Plaintiff, in
23 an amount to be determined.
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JAT WHEELS INC.'S COMPLAINT
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1 40.By reason of the acts of the Defendants alleged herein, Plaintiff has
2 suffered, is suffering and will continue to suffer irreparable damage,
3 which damage will continue unless enjoined by Order of this Court.
4 COUNT IV- UNFAIR COMPETITION UNDER CALIFORNIA
5 BUSINESS & PROFESSIONS CODE 17200, et seq.
6 41. Plaintiff repeats and re-alleges, as set forth herein, the allegations
7 contained in paragraphs 1 through 49 and brings the following claim for
8 unfair competition pursuant to California Business and Professions Code
9 17200.
10 42. The Court has jurisdiction over this Cause pursuant to 26 U.S.C. 1367.
11 43. By acts complained of herein, Defendant has engaged in unfair
12 competition under Section 17200 of the Business and Professions Code of
13 the State of California.
14 44.Defendant's use of the infringing Design Patent complained of herein
15 constitutes deceptive and misleading advertising and is likely to, and is
16 intended to, cause confusion to the purchasers and potential purchasers of
17 the products.
18 45.Defendant markets, conducts business, and publicly represents that the
19 Plaintiff s Design Patent is associated or connected to the Defendant's
20 business and thus creates a false designation of origin of Plaintiff s brand
21 of goods and services.
22 46.Upon information and belief, the aforesaid acts of Defendant was
23 undertaken willfully and with the intention of causing confusion, mistake
24 and deception, entitling the Plaintiff to an award of exemplary damages
25 and attorneys' fees.
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JA T WHEELS INC. 'S COMPLAlNT
9
1 47. The aforesaid acts of Defendant have caused damage to Plaintiff in an
2 amount to be determined.
3 48.By reason of the acts of the Defendant alleged herein, Plaintiff has
4 suffered injury in fact and has lost money or property as a result of
5 Defendant's acts of unfair business practices alleged herein, is suffering
6 and will continue to suffer irreparable damage, which irreparable damage
7 will continue unless enjoined by Order of this Court.
8 PRA YER FOR RELIEF
9 WHEREFORE, Plaintiff demands entry of a judgment against the Defendant as
10 follows:
11 1. For a judgment declaring that Defendant has infringed on Plaintiff s
12 Patents.
13 2. For a judgment awarding Plaintiff compensatory damages as a result of
14 Defendant's infringement of Plaintiffs Design Patent, together with
15 interest and costs, and in no event less than a reasonable royalty;
16 3. For a judgment declaring that Defendant's infringement of Plaintiffs
17 Design Patent was willful and deliberate;
18 4. The Defendant, its officers, agents, servants, employees, attorneys, and
19 all those in active concert or participation with them be enjoined and
20 restrained:
21 a. From further using Plaintiff s Design Patents or any other
22 confusingly similar design, in connection with the manufacture,
23 sale, advertisement or promotion of any product or any other
24 similar infringement of Plaintiffs Design Patent rights, for
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JAT WHEELS INC.'S COMPLAINT
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1 products not originating from Plaintiff or authorized by Plaintiff;
2 and
3 b. From engaging in unfair competition by making and selling its
4 products or otherwise using confusingly similar designs, in such a
5 way as to misrepresent the origin of any of the Defendant's
6 products;
7 5. For an order requiring Defendant to deliver and be impounded during the
8 pendency of this action all material in Defendant's possession, custody or
9 control that include or incorporate products that infringe Plaintiffs
10 Design Patent rights, including but not limited to, any containers,
11 packages, labels and advertisements in their possession or under their
12 control utilizing Plaintiff s Design Patents, or any simulation,
13 reproduction, counterfeit, copy, or colorable imitation thereof;
14 6. Directing that the Defendant report to this Court within thirty (30) days
15 after a Permanent Injunction is entered to show its compliance with
16 paragraphs 1 and 2 above;
17 7. For compensatory damages in an amount to be proven at trial;
18 8. For all gains, profits and advantages derived by Defendant by its
19 infringement of Plaintiffs Design Patent rights;
20 9. For punitive damages in an amount sufficient to punish Defendant for its
21 wrongful conduct and to deter others from engaging in similar conduct in
22 the future;
23 10.For permanent injunction against Defendant, preventing Defendant from
24 any future usage of any identical or similarly confusing designs related to
25 Plaintiff s registered Design Patent;
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JAT WHEELS INC.'S COMPLAINT
I I
1 II.Directing such other relief as the Court may deem appropriate to prevent
2 the trade and public, or individual members thereof, from gaining the
3 erroneous impression that the Plaintiff authorized or approved any
4 products manufactured, sold, or otherwise circulated or promoted by the
5 Defendant or that such products are in any way related to the Plaintiff;
6 12. For a judgment declaring that this case is exceptional and awarding to
7 the Plaintiff from the Defendant, its expenses, costs, and attorneys fees in
8 accordance with 35 U.S.C. 284 and 285 and Rule 54(d) of the Federal
9 Rules of Civil Procedure;
10 13. That Plaintiff be granted pre-judgment and post-judgment interest in
11 accordance with 35 U.S.C. 284 on the damages caused to it by reason
12 of Defendants' infringement of the Design Patent, including pre-judgment
13 and post-judgment interest on any enhanced damages or attorneys' fees
14 award;
15 I4.F or statutory damages as provided by law;
16 I5.Awarding other such relief to the Plaintiff as this Court deems just.
17
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19 DATE: July 15,2014
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BY://()
( ..._--,1 __ _
lAT WHEELS INC.'S COMPLAINT
12
!
Yang & Wang P.C.
Attorney for Plaintiff
J A T Wheels, Inc.