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J W REILLY LLC,
v.
Defendants.
COMPLAINT
Plaintiff J W Reilly LLC (“Plaintiff or “JW”), by its undersigned attorneys, for its
complaint against Bally Americas Inc., Bally International AG, and Bally Schuhfabriken AG
1. JW’s founder, Judith Reilly, is an artist and designer of timeless sterling silver
products, including sterling shoe buckles, medallions, bracelets and money clips. JW’s silver
products are all handmade in the U.S. by New England craftsmen, using centuries old techniques.
patented shoe buckle design on several high-end women’s shoes. Before JW’s buckles were publicly
available, JW shared its elegant and unique design with Bally in connection with its efforts to organize
a charity event for victims of the 2013 Boston Marathon bombing. While Bally had no interest in
partnering with JW on such an event, it apparently did have an interest in using JW’s patented buckle
3. Since 2013, Bally has sold a number of high-end women’s shoes that infringe JW’s
patented design, but it has refused to acknowledge or engage in discussions concerning its
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 2 of 10
unauthorized use of JW’s patented design. As a result, JW brings this lawsuit for design patent
infringement, seeking damages for Bally’s willful infringement and a permanent injunction.
THE PARTIES
incorporated in Switzerland, with its headquarters located at Via Industria 1, 6987 Caslano,
Switzerland. Bally International AG is the holding company of all subsidiary, affiliated, and
associated Bally companies throughout the world. Bally International AG, along with Bally
Schuhfabriken AG and Bally Americas Inc., designs, manufactures, distributes, and sells luxury
goods under the Bally brand, including the accused shoe products.
6. On information and belief, defendant Bally Schuhfabriken AG, also known as Bally
Bally Schuhfabriken's headquarters are located at Via Industria 1, 6987 Casiano, Switzerland. Bally
International AG, along with Bally Schuhfabriken AG and Bally Americas Inc., designs,
manufactures, distributes, and sells luxury goods under the Bally brand, including the accused shoe
products.
with a principal place of business at 750 Lexington Ave, 21st Floor, New York, NY 10022, and is a
subsidiary of Bally International AG. Bally Americas Inc. is registered with the Secretary of the
infringement, Bally Americas Inc. operated a Bally retail store in Boston, Massachusetts, from which
Accused Products were offered for sale and sold. Bally Americas Inc., along with Bally International
2
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 3 of 10
AG and Bally Schuhfabriken, designs, manufactures, distributes, and sells luxury goods under the
8. This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and 1338(a)
because this action arises under the patent laws of the United States, 35 U.S.C. §§ 101, et seq.
9. This Court has personal jurisdiction over Defendants pursuant to M.G.L. c. 223A, § 3
because each of these entities, directly or through affiliates, subsidiaries or intermediaries, have
transacted business in the Commonwealth of Massachusetts, including offering to sell and/or selling
the Accused Products within the Commonwealth of Massachusetts directly or through intermediaries
via established distribution channels; contracted to supply services or things in the Commonwealth;
caused tortious injury by acts or omissions in the Commonwealth; caused tortious injury in the
Commonwealth by acts or omissions outside the Commonwealth and regularly do and solicit business
in the Commonwealth; and engaged in conduct, and derived substantial revenue from goods used or
consumed or services rendered, in the Commonwealth. Upon information and belief, Defendants
expect their actions to have consequences within this District, and derive substantial revenue from
10. In the alternative, this Court has personal jurisdiction over Bally International AG,
and Bally Schuhfabriken AG because the requirements of Federal Rules of Civil Procedure 4(k)(2)
are met.
11. Venue is proper in this District pursuant to 28 U.S.C. §§ 1391(b)-(c) and 1400(b).
12. JW’s shoe buckle design is the result of significant investment in design and
development, including extensive prototyping and testing by Ms. Reilly. The end result was a clean,
3
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 4 of 10
13. On June 3, 2011, Ms. Reilly filed an application to protect her innovative design with
a U.S. design patent and, on September 18, 2012, U.S. Patent No. D667,212 was duly and legally
issued (the “JW Patent”). The JW Patent covers the unique and ornamental appearance of JW’s
buckles. A true and correct copy of the JW Patent is attached hereto as Exhibit 1.
14. JW is the owner by assignment of all right, title, and interest in and to the JW Patent,
including the right to assert all causes of action arising under the patent and the right to any remedies
15. At all relevant times, JW has complied with the patent marking requirements of 35
U.S.C. § 287.
16. In April 2013, shortly after the tragic Boston Marathon bombing, Ms. Reilly had the
idea to host a charitable event to raise money for victims of the bombing.
17. Having been a customer of Bally for years, Ms. Reilly believed that Bally might be
interested in such an event. Ms. Reilly contacted Mr. Jeremy McCulla, the manager of Bally’s store
location at Copley Place in Boston, Massachusetts, and proposed that the two companies host a joint
event to raise money for the Boston One Fund, which was set up to raise money for victims and their
families.
18. Mr. McCulla expressed an interest in the idea and invited Ms. Reilly to send a proposal
19. Pursuant to Mr. McCulla’s request, on November 4, 2013, Ms. Reilly sent Mr.
McCulla the email attached hereto as Exhibit 2, in which she inquired whether Bally would like to
“team up with us to do a special shoe event for Boston Strong” and provided information about the
money that would be donated to charity. Exhibit 2. In the email, Ms. Reilly described JW’s shoe
buckles and attached a photograph of the buckles on a pair of shoes. At this time, JW’s buckles were
4
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 5 of 10
not yet available for purchase but embodied the design of the JW Patent. The photograph specifically
20. On information and belief, Mr. McCulla shared Ms. Reilly’s proposal, including the
photograph of her patented shoe buckle design, with one or more individuals at Bally corporate.
21. On or about April 26, 2014, Judith Reilly was told by Mr. McCulla that Bally
corporate informed him that Bally was not interested in working with JW on the event.
22. JW subsequently discovered that Bally had begun selling in the United States at least
three styles of shoes that included buckles nearly identical to the buckle design that was sent to Mr.
McCulla and Bally corporate in November 2013. These shoes were sold under the names “Heline,”
“Holga,” and “Harmoni.” On information and belief, these shoes were commercially successful and
Bally has also sold an outlet store version of at least the Heline. All of these shoes are hereinafter
collectively referred to as the “Accused Products.” The buckle on each shoe is substantially the same
5
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 6 of 10
Bally Heline
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 7 of 10
Bally Holga
7
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 8 of 10
23. On information and belief, Bally intentionally copied the design of the buckle that was
24. The buckles of the Accused Products are substantially similar to the design of the JW
25. After realizing that Bally had copied JW’s patented design, JW retained Swiss counsel
to contact Bally at its headquarters in Switzerland, with the goal of resolving this matter amicably.
Specifically, on October 3, 2017, JW sent the letter attached as Exhibit 3 to Mr. Frédéric De Narp,
26. Since then, JW has sent correspondence to several other individuals at Bally in an
effort to understand and resolve Bally’s use of JW’s patented design. However, Bally has refused to
acknowledge its unauthorized use of the design claimed in the JW Patent. As a result, JW was left
COUNT I
Design Patent Infringement
27. Plaintiff repeats and realleges each and every paragraph above as if fully set forth
herein.
28. Bally has infringed the JW Patent by making, using, selling and/or offering to sell in
the United States, and/or importing into the United States one or more of the Accused Products,
29. On information and belief, Bally’s infringement of the JW Patent has been intentional,
30. On information and belief, Bally has gained profits by virtue of its infringement of the
JW Patent.
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 9 of 10
31. Plaintiff has sustained damages as a direct and proximate result of Bally’s
32. Plaintiff is entitled to a permanent injunction preventing Bally from further infringing
the JW Patent.
b. An order and judgment preliminarily and permanently enjoining Bally and its
officers, directors, agents, servants, employees, affiliates, attorneys, and all others acting in
privity or in concert with them, and their parents, subsidiaries, divisions, successors and assigns
infringement of the JW Patent, and in no event less than a reasonable royalty for Bally’s acts of
infringement, including all pre-judgment and post-judgment interest at the maximum rate
permitted by law;
35 U.S.C. § 284;
f. A declaration that this case is exceptional under 35 U.S.C. § 285 and an award to
Plaintiff of its reasonable costs and expenses of litigation, including attorneys’ and experts’ fees;
h. Awarding all other relief this Court deems just, proper, and equitable.
JURY DEMAND
Plaintiff demands a trial by jury as to all claims and all issues properly triable thereby.
9
Case 1:19-cv-11007 Document 1 Filed 04/29/19 Page 10 of 10
J W Reilly LLC,
By its attorneys,
and
10
4838-6486-0559.2
Case 1:19-cv-11007 Document 1-1 Filed 04/29/19 Page 1 of 5
Exhibit 1
Case 1:19-cv-11007 Document 1-1 Filed 04/29/19 Page 2 of 5
USOOD667212S
FIG. 2
FIG 3
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FIG. 4 FIG. 5
FIG. 6
Case 1:19-cv-11007 Document 1-2 Filed 04/29/19 Page 1 of 3
Exhibit 2
Case 1:19-cv-11007 Document 1-2 Filed 04/29/19 Page 2 of 3
Dear Jeremy,
Attached is the image of our shoe buckles. We are getting ready to launch our sterling product line for 2014 and are
now
reaching out to shoe companies in Boston to see if they would like to team up with us to do a special shoe event for
Boston Strong.
The shoe buckles may be worn on a variety of women’s pumps- be it heels, flats, peep toe and they are all handcrafted
right here in New England.
They are all made to order and retail for $450 per pair.
We would like to give $26.2 per shoe buckle pair purchased directly to Boston Strong. If you have an interest I’d be
happy to come in and share our work with you.
Judy Reilly
Designer/Owner
JW Reilly-Boston
1
Case 1:19-cv-11007 Document 1-2 Filed 04/29/19 Page 3 of 3
JW Reilly B O S T O N
TM
D667212
NUMBER
USA PATENT
Handcrafted Sterling Silver
JW R EILLY –B OSTON JUDITH . REILLY @ COMCAST. NET 617-510-3239
Case 1:19-cv-11007 Document 1-3 Filed 04/29/19 Page 1 of 3
Exhibit 3
Case 1:19-cv-11007 Document 1-3 Filed 04/29/19 Page 2 of 3
cms.law
3. Oktober 2017
214462/02/Letter JW Reilly to Bally_English.docx/CGA/sfu
We represent JW Reilly Boston and its owner Judith W. Reilly (collectively, “JW Reilly”).
JW Reilly is a designer and seller of timeless sterling silver products, which are made to order
by New England craftsman using centuries old techniques.
Among other things, since 2012, JW Reilly has sold sterling shoe buckles. (See below and at
www.jwreillyboston.com.) They currently retail for $450 per pair.
In addition to any common law rights our client has acquired in connection with these buck-
les, it owns U.S. Patent No. D667,212, which the United States Patent and Trademark Office
German qualified lawyer (Member of the German Bar Association Frankfurt am Main) and registered in the Swiss roll of solicitors in accordance with Art. 28
BGFA
CMS von Erlach Poncet Ltd. is a member of CMS, the organisation of European law firms. In certain circumstances, CMS is used as a brand or business
name of some or all of the member firms. Further information can be found at cms.law.
CMS locations: Aberdeen, Algiers, Amsterdam, Antwerp, Barcelona, Beijing, Belgrade, Berlin, Bogotá, Bratislava, Bristol, Brussels, Bucharest, Budapest,
Casablanca, Cologne, Dubai, Duesseldorf, Edinburgh, Frankfurt, Geneva, Glasgow, Hamburg, Hong Kong, Istanbul, Kyiv, Leipzig, Lima, Lisbon, Ljubljana,
London, Luxembourg, Lyon, Madrid, Medellín, Mexico City, Milan, Moscow, Munich, Muscat, Paris, Podgorica, Prague, Rio de Janeiro, Rome,
Santiago de Chile, Sarajevo, Seville, Shanghai, Sofia, Strasbourg, Stuttgart, Tehran, Tirana, Utrecht, Vienna, Warsaw, Zagreb and Zurich.
Case 1:19-cv-11007 Document 1-3 Filed 04/29/19 Page 3 of 3
issued on September 18, 2012. A copy of that patent is enclosed for your reference. In addi-
tion, JW Reilly owns EU Community Design Registration Nos. 03389261-0001 - 03389261-
0004, Switzerland Design Registration No. 142902, and Norwegian Design Registration No.
085520. Also, JW Reilly filed U.S. Design Application No. 29/598,031 on March 22, 2017.
You may in fact be familiar with our client’s shoe buckles and our client’s intellectual proper-
ty as a result of prior interactions between JW Reilly and Bally. In or about November 2013,
our client contacted the manager of Bally’s store location at Copley Place in Boston, Massa-
chusetts. JW Reilly proposed that the two companies host a joint event to assist the victims of
the Boston Marathon bombing and to contribute to the Boston One Fund. Although discus-
sions of a partnership did not progress at that time, JW Reilly revealed to Bally images of its
shoe buckles, which were not yet available for purchase. Our client had further contact with
Bally at Copley Place in or about March, April and June 2014.
It has come to JW Reilly’s attention that Bally has marketed and sold shoes bearing a buckle,
including shoes under the name “Holga,” “Heline” and “Harmoni.”
Our client would like to generally discuss with you these designs, including potential joint
venture opportunities and/or a possible licensing agreement.
Accordingly, we ask that you or your legal counsel respond to this letter until
Of course, this letter does not waive, and is without prejudice to, our client’s rights and reme-
dies, all of which are expressly reserved.
Yours sincerely,
Caroline Gaul
-2-
Case 1:19-cv-11007 Document 1-4 Filed 04/29/19 Page 1 of 2
JS 44 (Rev. 06/17) CIVIL COVER SHEET
The JS 44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as
provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
(b) County of Residence of First Listed Plaintiff Suffolk County of Residence of First Listed Defendant New York
(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)
NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)
Jennifer B. Furey, Esq. & Andrew T. O'Connor, Esq. - (617) 482-1776
400 Atlantic Ave.
Boston, MA 02110
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
’ 1 U.S. Government ’ 3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State ’ 1 ’ 1 Incorporated or Principal Place ’ 4 ’ 4
of Business In This State
’ 2 U.S. Government ’ 4 Diversity Citizen of Another State ’ 2 ’ 2 Incorporated and Principal Place ’ 5 ’ 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers as
required by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is
required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk of
Court for each civil complaint filed. The attorney filing a case should complete the form as follows:
I.(a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, use
only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency and
then the official, giving both name and title.
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time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: In land
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(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment, noting
in this section "(see attachment)".
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in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.
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citizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity
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VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictional
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Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.
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Date and Attorney Signature. Date and sign the civil cover sheet.
Case 1:19-cv-11007 Document 1-5 Filed 04/29/19 Page 1 of 1
UNITED STATES DISTRICT COURT
DISTRICT OF MASSACHUSETTS
1. T¡tle of case (name of first party on each side JWRei LLC v. Bally Americas lnc.
2. Category in which the case belongs based upon the numbered nature of suit code tisted on the civil cover sheet. (See local
rule 40.1 (aX1)).
r' 1 160, 400,410,441, 535, 830*, 835*, 850, 891, 893, R.23, REGARDLESS OF NATURE OF SU|T.
3, T¡tle and number, if any, of related cases. (See local rule 40,1(g)). lf more than one prior related case has been filed in this
district please indicate the title and number of the first filed case in this court.
nla
4. Has a prior action between the same parties and based on the same claim ever bee¡.fiþd in this
YES T NO
5. Does the compla¡nt in this case question the constitut¡onality of an act of congress affecting the public interest? (See 28 USC
s2403)
YES NO r'
lf so, is the U.S.A. or an officer, agent or employee of the U.S, a party?
YES NO
6,
tl
ls this case required to be heard and determined by a district court of three judges Dursuant to t¡tle 28 USC s2284?
YES NO ø
7. parties in this action, excluding governmental agencies of the United States and the Commonwealth of
Do all of the
Massachusetts ("governmental agencies"), residing in Massachusetts resl division? - 40.1(d)).
i::""üe flit-ocarRure
A. lf yes, in which divis ign-do all of the non-governmental parties reside?
Eastern Division |l - c"r,tr"loivision f Western Division
B. !f no, in which division do the majority of the plaintiffs or the only parties, excluding governmentat agencies,
residing in Massachusetts reside?
YES NO