Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 1 of 8

UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK
RFA HOLDING GROUP LLC,

ECF Case
Case No.

Plaintiff,
against
U.S.A. DAWGS, INC.,
Defendant.
COMPLAINT

Plaintiff RFA Holding Group LLC (RFA), by its attorneys, as and for its Complaint
(Complaint) herein against U.S.A. Dawgs, Inc. (Dawgs) alleges as follows:
PRELIMINARY STATEMENT
1.

This is an action for a declaratory judgment that (a) Dawgs has no copyright or

trade dress rights in certain microsuede boots in which it has asserted protectable trade dress
rights and copyright; and (b) RFA has not infringed any of defendants purported copyright or
trade dress rights in said boots. This is also an action for unfair competition under the Lanham
Act and New York law arising out of Dawgs bad faith cease and desist letter sent for the
purpose of prohibiting competition, not to legitimately protect Dawgs intellectual property
rights.
JURISDICTION AND VENUE
2.

Jurisdiction over the subject matter of this action is conferred on this Court by

28 U.S.C. 1338(a) and (b), 1367 supplemental jurisdiction, and under the Declaratory
Judgment Act, pursuant to 28 U.S.C. 2201, et seq.
3.

Venue is proper in this judicial District under 28 U.S.C. 1391 in that plaintiff

resides in this District and defendant is found and doing business in this District and therefore is

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 2 of 8

subject to personal jurisdiction and resides in this District under 1391(d), and a substantial part
of the events giving rise to the claims herein occurred in this District.
THE PARTIES AND PRODUCTS
4.

Plaintiff RFA is a limited liability company duly organized and existing under the

laws of the State of New York with a principal place of business at 385 Fifth Avenue, New York,
NY. RFA designs, has manufactured for it, markets and sells a variety of consumer footwear
products and accessories, including the boots which are the subject of this action.
5.

Among the products RFA sells are boots under the brand name Goldtoe having

an microsuede outer surface and a bottom outsole with functional treads designed for traction in
slippery conditions.
6.

Upon information and belief, defendant Dawgs is a corporation organized and

existing under the laws of Nevada, with a principal place of business at 4120 W. Windmill Lane,
Las Vegas, NV. Dawgs is in the business of selling a variety of footwear products for
consumers, including boots, sandals, sport shoes and work shoes, among others.
7.

Defendant Dawgs advertises and sells its products nationwide from its U.S.

website, www.usadawgs.com (Dawgs website) and upon information and belief, to consumers
located in this District. Dawgs also sells to retailers across the country, identified on the Dawgs
website, including several located in this District. Accordingly, Dawgs may be found in and is
doing regular and continuous business in this District. In addition, defendant Dawgs has
committed tortious acts without this District as hereinafter alleged, causing injury to plaintiff
within the District. Upon information and belief, defendant regularly does and solicits business
and engages in a persistent course of conduct, and derives substantial revenue from its footwear
goods used and consumed in the State of New York and in this District, and expects and should

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 3 of 8

reasonably expect its acts to have consequences in the State of New York and it derives
substantial revenue from interstate commerce. Accordingly, the Court has personal jurisdiction
over defendant Dawgs.
8.

Upon information and belief, Dawgs manufactured or has had manufactured for

it, and sells nationwide boots having a microsuede outer surface and a bottom outsole with
functional treads designed for traction on slippery surfaces, described on the Dawgs website as
microfiber sheepdawgs boots.
FIRST CAUSE OF ACTION FOR
DECLARATION OF NO ENFORCEABLE
COPYRIGHT, TRADE DRESS AND FOR
NON-INFRINGEMENT
9.

Plaintiff repeats and realleges paragraphs 1 through 8 of this Complaint with the

same force and effect as if fully set forth herein.

10.

On or about September 16, 2015, Dawgs, through its General Counsel, issued a

cease and desist letter to Groupon Goods (Groupon), which operates an ecommerce website
selling products at various deal discounts (Dawgs Demand Letter). The Dawgs Demand
Letter asserted that Groupons website was promoting and selling boot products referenced as
Goldtoe Womens Micro Suede Boots (Goldtoe Boots) which Dawgs asserted bear the
same outsole design and the same manner of construction as USA Dawgs products. The Dawgs
Demand Letter further asserted that it believed that these products infringe the copyright and
protectable trade dress rights of USA Dawgs and demanded that Groupon immediately remove
these infringing products from your website.
11.

For the reasons more fully alleged hereinafter, Dawgs knew or should have

known that it had no copyright and no trade dress rights in its boot products as claimed in its
Dawgs Demand Letter to Groupon and accordingly, the demands were made without legal or

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 4 of 8

factual foundation and in bad faith, solely to interfere with plaintiff RFAs business and sales of
RFAs Goldtoe Boots through Groupon and other customers.
12.

Shortly after the Dawgs Demand Letter, plaintiff RFA was made aware of it and,

through counsel, advised Dawgs that the boots charged as an infringement were manufactured
for and sold by RFA. Without admitting any liability, RFA sought to resolve the dispute.
Dawgs failed and refused to resolve the dispute or to withdraw its demand to Groupon, thus
necessitating this action.
13.

RFA has sold and intends to continue to sell its Goldtoe Boots to consumers in

interstate commerce.
14.

As hereinabove alleged, defendant Dawgs, through counsel, has asserted that the

Goldtoe Boots infringe Dawgs alleged copyright and trade dress in the Dawgs boot products.
15.

Plaintiff RFA believes and therefore alleges that it does not now nor has it ever

infringed any copyright or valid trade dress in the Dawgs boot products.
16.

Among other things, upon information and belief, Dawgs has filed no application

to register any copyright in connection with any of its boots for which it claims the Goldtoe
Boots are an infringement and no such copyright could be claimed because, as a matter of law, as
set forth in the most current Compendium of U.S. Copyright Office Practices, Third Edition
(2014) (the Compendium) available at http://copyright.gov/comp3 useful articles are not
protected by copyright law. ( 924.) The Compendium further provides that An item or
article is considered a useful article if it performs any inherent or intrinsic utilitarian function
other than to inform, entertain or portray its appearance to human beings. Examples of useful
articles include automobiles . . . clothing, shoes . . . . The statute also states that [a]n article
that is normally part of a useful article is considered a useful article. ( 924.1.) The uppers

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 5 of 8

and outsoles of the Dawgs boots are part of the useful article of a boot and therefore are not
protectable by copyright as a matter of law.
17.

Since the copyright law as set forth above is well settled and publicly available in

the Compendium of the U.S. Copyright Office, defendant Dawgs knew or should have known
with ordinary diligence that it has no copyright in its boot products as claimed in the Dawgs
Demand Letter to Groupon and such letter was issued without basis and in bad faith solely to
interfere with sales of the Goldtoe Boots.
18.

With respect to Dawgs claim of trade dress rights, the design of the Dawgs boots

is a common appearance of generic microsuede boots, sold in interstate commerce by a wide

range of manufacturers under various name and private label brands, including, for example,
Uggs, Bearpaws, Muk Luks, Reneeze, and many more. Dawgs being in the business of selling
such boots, knew or should have known of the commonality and genericness of the appearance
of its microsuede boots, and therefore knew of should have known that it has and could have
acquired no secondary meaning in the appearance of its boots, which is required for any claim of
protectable trade dress.
19.

Moreover, because of the commonality of the Dawgs microsuede boot design and

the lack of secondary meaning, RFAs Goldtoe Boots are not confusingly similar to Dawgs
microsuede boots and there can be no claim of trade dress infringement.
20.

In addition, the features of the Dawgs boots appearance in the microsuede uppers

and treaded outsoles are primarily functional and serve to provide a common, smooth appearance
for the uppers like so many other boots with microsuede uppers, keep the boots attached to the
wearers feet, hold the material of the boot together and provide traction on the outsole for

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 6 of 8

walking on slippery surfaces. These features are not separable from the function of the boot so
that there is no copyright or trade dress protection.
21.

Despite RFAs demands, Dawgs has failed and refused to withdraw its assertions

against RFA and Groupon for infringement. By reason of the foregoing, there has been and is
now an actual controversy between plaintiff and defendant as to the existence of any copyright or
trade dress as asserted by Dawgs and as to the non-infringement of the aforesaid Dawgs claimed
copyright and trade dress rights. Said controversy is interfering with and harming RFAs
business and will continue to do so unless resolved by the Court.
SECOND CAUSE OF ACTION
FOR UNFAIR COMPETITION
22.

Plaintiff repeats and realleges paragraphs 1 through 21 of this Complaint with the

same force and effect as if fully set forth herein.

23.

Defendant Dawgs wrongful conduct and false and bad faith demands to Groupon

concerning its sale of RFAs Goldtoe Boots represent unfair competition under the Lanham Act
and the common law of New York.
24.

Defendants knowing and willful false assertions to Groupon and to RFA of

copyright and trade dress rights and infringement as hereinabove alleged constitutes a use in
interstate commerce and a false and misleading description or representation of goods and
services in commerce, with knowledge of the falsity, which is likely to cause confusion, mistake
and deception, and in commercial advertising and promotion, misrepresents the nature,
characteristics, qualities and origin of defendant's goods, within the meaning and in violation of
15 U.S.C. 1125(a) of the Lanham Act.
25.

Further, defendants knowing and willful false assertions to Groupon and to RFA

of copyright and trade dress rights and infringement as hereinabove alleged is designed to

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 7 of 8

and does misappropriate plaintiffs lawful Goldtoe Boot designs by charging them to be
infringements of defendant Dawgs alleged copyright and trade dress rights, for the commercial
advantage of defendant.
26.

The aforesaid acts of defendant have caused, as their proximate, necessary and

direct result, substantial injury to the property and reputation of plaintiff in an amount to be
determined at trial.
27.

The aforesaid acts of defendant do now and unless preliminarily and permanently

enjoined will continue to (a) confuse and deceive Groupon, RFAs other customers and the
public into believing that plaintiffs Goldtoe Boots infringe some protectable intellectual
property right of defendant Dawgs; (b) injure plaintiff's business reputation and endanger
plaintiff's good will; and (c) unjustly enrich defendant; and thereby defendant will cause plaintiff
irreparable damage unless restrained and enjoined.
WHEREFORE, plaintiff prays for a judgment against defendant as follows:
A.

For judgment declaring that defendant Dawgs has no copyright or trade dress

rights in its Dawgs boots as claimed by Dawgs against plaintiffs Goldtoe Boots;
B.

For judgment declaring that RFA does not infringe any such claimed copyright or

trade dress rights by RFAs sale of its Goldtoe Boots;

C.

Preliminarily and permanently enjoining defendant, and their subsidiaries and

their respective officers, agents, servants, employees, attorneys, and all persons in active concert
or participation with them or any of them who receive actual notice of the order and judgment
from asserting that defendant has any copyright or trade dress rights in its Dawgs microsuede
boots or that plaintiff or any reseller of plaintiffs Goldtoe Boots infringes any rights of
defendant;

Case 1:15-cv-08014-GBD Document 1 Filed 10/12/15 Page 8 of 8

D.

For judgment awarding plaintiff damages on its Second Cause of action in an

amount to be determined at trial;

E.

Awarding plaintiff its costs, expenses and reasonable attorneys' fees as permitted

by law; and
F.

Awarding plaintiff such other and further relief as the case may require and as the

Court may deem just and proper.

Dated: New York, New York
October 8, 2015

SCHWARTZ & THOMASHOWER LLP

s/ Rachel Schwartz
By:
Rachel Schwartz
William Thomashower
Carla E. Sereny
15 Maiden Lane, Suite 705
New York, NY 10038-5120
Tel: 212-227-4300
rschwartz@stllplaw.com
wthomashower@stllplaw.com
csereny@stllplaw.com
Attorneys for Plaintiff
RFA HOLDING GROUP LLC