shopkeep v. payvida complaint.pdf
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8/10/2019 Shopkeep v. PayVida complaint.pdf
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J S 44C/SDNY
REV. 4 / 2 0 1 4
JUDGE DAW
hJLtO
IVIL COVER
SI
#T^?15
The JS-44 civilcover
sheet
and the information contained herein neither replace nor supplement the filingand service of
pleadingsorother papers as requiredbylaw,except as
provided
bylocalrulesof court. This
form,
approvedbythe
Judicial Conference ofthe UnitedStates inSeptember 1974, isrequired for use ofthe Clerk of Court for the purpose of
initiating the civil
docket
sheet.
PLAINTIFFS
Shopkeep.com, Inc.
DEFENDANTS
PayVida Solutions Inc.
ATTORNEYS
(FIRM
NAME, ADDRESS,ANDTELEPHONENUMBER ATTORNEYS(IF KNOWN)
Sabety + Associates PLLC, 830 Third Avenue, 5th Floor, New York, NY
1 0 0 2 2
Phone:212-481-8686
CAUSEOF ACTION (CITE THE U.S. CIVIL STATUTE UNDER
WHICH YOU
ARE
FILING AND
WRITE ABRIEF STATEMENT OFCAUSE)
(DO NOTCITEJURISDICTIONALSTATUTES UNLESS DIVERSITY)
copyright
infringement 17
USC
106, 501;false designation&trademark infringement 15 U.S.C. 1114, 1125;NYS unfair competition
Has this action, case, or proceeding, or one
essentially
the same
been
previously
filed in SDNY
at
any time? NrJZjVesIUudge PreviouslyAssigned
Ifyes,
was this case
Vol.
f j
Invol.
Q Dismissed. No []] Yes
f j
If yes, give date.
ISTHIS AN INTERNATIONAL ARBITRATION CASE?
(PLACE
AN[x] INONEBOXONLY)
TORTS
PERSONAL INJURY
No 0
Yes
NATURE
OF SUIT
FORFEITURE/PENALTY
[ ]625 DRUG RELATED
SE IZURE OF PROPERTY
21 US C 88 1
[ ]690 OTHER
& C a s e No .
ACT IONS UNDER STATUTES
BANKRUPTCY
[ ] 422 APPEAL
28 US C
15 8
[ ] 423 WITHDRAWAL
2 8 U SC 1 57
[ 1110
[ 1120
[ 1130
[ 1140
[
1150
[ 1151
[
1152
INSURANCE
MARINE
MILLER ACT
NEGOTIABLE
INSTRUMENT
RECOVERY
OF
OVERPAYMENT &
ENFORCEMENT
OF
JUDGMENT
MEDICARE ACT
RECOVERY OF
DEFAULTED
STUDENT LOANS
(EXCLVETERANS)
RECOVERY
OF
OVERPAYMENT
OF
VETERAN'S
BENEFITS
STOCKHOLDERS
SUITS
OTHER
CONTRACT
CONTRACT
PRODUCT
LIABILITY
FRANCHISE
[ ] 310 AIRPLANE
[ ] 315 AIRPLANEPRODUCT
LIABILITY
[ ] 320 ASSAULT, LIBELS,
SLANDER
[ ] 330 FEDERAL
EMPLOYERS'
LIABILITY
[ ]340 MARINE
[ ] 345 MARINEPRODUCT
LIABILITY
[ ] 350 MOTORVEHICLE
[ ] 355 MOTORVEHICLE
PRODUCT
LIABILITY
[ ] 360 OTHER PERSONAL
INJURY
[ ] 362 PERSONAL INJURY-
MED MALPRACTICE
PERSONALINJURY
[ ] 367 HEALTHCARE/
PHARMACEUTICAL
PERSONAL
INJURY/PRODUCT LIABILITY
[ ]
365 PERSONAL
INJURY
PRODUCT LIABILITY
[ ] 3 68 ASBESTOS PERSONAL
INJURY PRODUCT
LIABILITY
PERSONAL
PROPERTY
[ ] 370 OTHER FRAUD
[ ] 371 TRUTH INLENDING
PROPERTY R IGHTS
M
820 COPYRIGHTS
[ ]
830
PATENT
[
]153
[1160
[ ]190
[ ]195
[ 1196
REAL
PROPERTY
[ ]210
[ ]220
[ ]230
[ I 240
[ I 245
[ ]290
LAND
CONDEMNATION
FORECLOSURE
RENT
LEASE
&
EJECTMENT
TORTS
TO
LAND
TORT PRODUCT
LIABILITY
ALL
OTHER
REAL
P R O P E R T Y
ACTIONS
UNDER
STATUTES
CIVIL
RIGHTS
[ ] 440 OTHER CIVILRIGHTS
(Non-Prisoner)
( ] 441 VOTING
[ ] 442 EMPLOYMENT
[ ] 443 HOUSING/
ACCOMMODATIONS
[ ]445 AMERICANS WITH
DISABILITIES
-
EMPLOYMENT
[ ] 446 AMERICANS WITH
DISABILITIES-OTHER
[ ] 448 EDUCATION
Checkifdemanded incomplaint:
CHECK IF
THIS
IS ACLASS
ACTION
UNDER F .R .C .P .
23
[ ] 380 OTHER PERSONAL
PROPERTY DAMAGE
[ ] 385 PROPERTY DAMAGE
PRODUCT LIABILITY
PRISONER PETITIONS
[ ] 463 ALIEN DETAINEE
[ ] 510 MOTIONS TO
VACATE SENTENCE
28
US C
2 2 5 5
[ ]530 HABEAS CORPUS
[ ] 535 DEATH PENALTY
[ ] 540 MANDAMUS& OTHER
PRISONER
CIVIL
RIGHTS
[
] 550 CIVILRIGHTS
[ ] 555 PRISON CONDITION
[ ] 560 CIVILDETAINEE
LABOR
[ ] 710 FAIRLABOR
STANDARDS
AC T
[ ] 720 LABOR/MGMT
RELATIONS
[ ] 740 RAILWAYLABOR ACT
[ ] 751 FAMILYMEDICAL
LEAVE ACT (FMLA)
[ ]790 OTHER LABOR
LITIGATION
[ ]791 EMPLRETINC
SECURITY
AC T
IMMIGRATION
[ ] 462 NATURALIZATION
APPLICATION
[ ] 465 OTHER IMMIGRATION
ACTIONS
CONDITIONS
OF
CONFINEMENT
SOC IAL SECUR ITY
[
]861
HIA(1395ff)
[ ] 862 BLACKLUNG (923)
( ] 863 DIWC/DIWW (405(g))
[ ]
864SSID
TITLE XVI
[ ] 865 RSI (405(g) )
FEDERAL
TA X SU ITS
[ ] 870 TAXES (U.S. Plainti ffor
Defendant)
[ ]871 IRS-THIRD PARTY
26
US C
7 6 0 9
OTHER STATUTES
[ 1375 FALSE CLAIMS
( ]400
STATE
REAPPORTIONMENT
[ ] 410 ANTITRUST
[ ] 430 BANKS &BANKING
[ ]450 COMMERCE
[ ]460 DEPORTATION
[ ]470 RACKETEER INFLU
ENCED & CORRUPT
ORGANIZATION ACT
(RICO)
[ ] 480 CONSUMER CREDIT
[ ] 490 CABLE/SATELLITETV
[ ] 850 SECURITIES/
COMMODITIES/
EXCHANGE
[ ] 890 OTHER STATUTORY
ACTIONS
[ ] 891 AGRICULTURAL ACTS
[ ] 893 ENVIRONMENTAL
MATTERS
[ ]895 FREEDOM OF
INFORMATION ACT
[ ] 896 ARBITRATION
[ ] 899 ADMINISTRATIVE
PROCEDURE ACT/REVIEW
APPEAL OF
AGENCY
DECI
[ ] 950 CONSTITUTIONALIT
STATE
STATUTES
DEM ND
OTHER
DO
YOU
CLAIM THIS CASE IS
RELATED
TO A CIVIL CASE NOW PENDING IN S.D.N.Y.?
JUDGE DOCKET NUMBER
Check YES onlyifdemandedincomplaint
JURY DEMAND: E YES QjO
NOTE: You must also submit at the time of filing the Statement of Relatedness form (Form IH-
-
8/10/2019 Shopkeep v. PayVida complaint.pdf
2/59
PLACEANx INONEBOXONLY)
S 1 Original 2 Removed from
Proceeding state Court
3. allpartiesrepresented
3
R e m a n d e d
from
Appellate
C o u r t
ORIGIN
I I4 Reinstated or Q 5 Transferred
from
Q 6 Multidistrict
(Specify
District) Litigation
eopened
I I 7 Appeal toDistrict
Judge from
Magistrate Judge
Judgment
I | b.
At
least one
party is pro se.
(PLACEAN
x
INONEBOXONLY)
BASIS
OF JURISDICTION
1
U.S. PLAINTIFF
2 U.S.
DEFENDANT
[x] 3 FEDERAL QUESTION .[x]1 DIVERSITY0
(U.S. NOT A PARTY)
IFDIVERSITY,INDICATE
CITIZENSHIP BELOW.
CITIZENSHIP OF PRINCIPAL PARTIES (FOR DIVERSITY CASES ONLY)
(Place
an [X]in
one
box for Plaintiff
and one
box for Defendant)
P TF D E F
T F DE F
- W - r H 1
PTF DEF
INCORPORATEDand PRINCIPArPtAeE h+W-
OF BUSINESS IN
ANOTHER
STATE
0
I I Z h N O h T H I S S T A T E -
CITIZEN OF ANOTHER STATE [ ] 2 [ ] 2
CITIZEN OR
SUBJECT OF A
FOREIGN COUNTRY
t r
INCORPORATED or PRINCIPAL PLACE .[xj [
}A
FOREIGN NAIIUN
OF
BUSINESS
IN THIS
STATE
PLAINTIFF(S) ADDRESS(ES) AND COUNTY(IES)
143
Varick
Street
New
York, NY
10013,
United
States
of America,
New
York
County
t4&-_U6
DEFENDANT(S) ADDRESS(ES) AND COUNTY(IES)
PayVida Solutions Inc., 221-3011 Louie Drive,
Westbank
BC V4T
3E3,
Canada
PayVida Solutions Inc., c/o Ryan
Conrad Strauss,
2209
Sunview Drive,
West
Kelowna BC V1Z 3X9,
C a n a d a
DEFENDANT(S) ADDRESS UNKNOWN
REPRESENTATION IS HEREBY MADE THAT, AT
THIS
TIME, I HAVE BEEN UNABLE,
WITH
REASONABLE
DILIGENCE,
TO ASCERTAIN
RE9IBINCE
ADDRESSES OF
THE
FOLLOWING
DEFENDANTS:
Check one: THIS ACTION
SHOULD
BEASSIGNEDTO: WHITE
PLAINS \x\ MANHATTAN
(DO NOT
check either
box
if
this
a
PRISONER
PETITION/PRISONER
CIVIL
RIGHTS
COMPLAINT.)
DATE
SIGNATURE OF ATTORNEY OF RECORD
I t
S
ADMITTED
TO PRACTICE
IN
THIS DISTRICT
V\^V WYES (DATE ADMITTED MoPj? Yr. 2010 )
RECEIPT #
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Shopkeep.com, Inc.
Plaintiff
PayVida Solutions Inc.,
Defendant
}
Case
N o .
C OM PL AIN T A ND JU RY D EM A ND
CO
C _
p
-
I,.
C
1
r~
COMPLAINT
AND
JURY
DEMAND ' g
Plaintiff, Shopkeep.com, Inc. ( Shopkeep ), by counsel, for its Complaint against
Defendant, PayVida Solutions Inc. ( Defendant or PayVida ), seeks damages, injunctive
relief, and other relief for copyright infringement, trademark infringement, false designation of
origin, and unfair competition, alleges as follows:
1. This is an action for copyright infringement, trademark infringement, false designation
of
origin, and unfair competition under the Copyright Act, 17U.S.C. 101 et seq., the Lanham
Act, 15 U.S.C. 1051 et seq., and New York state law.
PART I E S
2. Shopkeep is a corporation organized and existing under the laws
of
the State of
Delaware. Shopkeep has its principal place of business at 143 Varick Street,
New
York, NY
10013, United
States
of America.
3. On information and belief, PayVida is a corporation organized and existing under the
laws o f Canada.
4. On information and belief, PayVida has its principal place
of
business at 221-3011
Louie Drive, Westbank
BC V4T 3E3, Canada.
UNITED S TA TE S D I STR ICT
COURT
FOR THE SOUTHERN D I ST R IC T OF
NEW YORK
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5. On information and belief, PayVida has at least one corporate director, Ryan Conrad
Strauss, with a residence at 2209 Sunview Drive, West Kelowna BC
VIZ
3X9, Canada.
JUR ISD IC TION AND
VENUE
6. This action arisesunder the Copyright Act and LanhamAct, 17U.S.C. 101 et seq.,
15U.S.C.
1051
et seq., and New York State law. Subject matter jurisdiction exists pursuant to
28 U.S.C. 1331 (federal question), 28 U.S.C. 1338(a) (copyright, trademark, and unfair
competition), 28 U.S.C. 1338(b) (action asserting claim of unfair competition joined with a
substantial and related claim under the trademark and copyright laws); and 28 U.S.C. 1367
(supplemental jurisdiction).
7. This Court has personal jurisdiction over Defendant because Defendant has committed
acts of infringement in the District and due to its contacts with this District should reasonably
have expected to be brought before a court in this District as a result
of
such acts. Defendant's
website, which includes publications of infringing content, is accessible across the Internet,
including to residents in New York State. On information and belief, Defendant offers its
products and services for sale to customers in the state ofNew York. On information and belief
Defendant employs at least one U.S.-based sales agent that promotes Defendant's product and
services in the state
of
New York. On information and beliefDefendant intentionally directs its
website into the state ofNew York in an effort to unfairly compete with Plaintiffand abscond
with it s customers
in
this state
and
district.
8. Venue is proper pursuant to 28 U.S.C. 1391(b)(2), (c), (d), and/or 1400(a).
BACKGROUND AND SHOPKEEP 'S
INTELLECTUAL PROPERTY
RIGHTS
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9. Shopkeep is in the businessof software services, offeringan awardwinning iPad
point of sale and businessmanagement software system that is currently used by over ten
thousand (10,000) small businesses in North America.
10.
Shopkeep offersits software systemand servicesto customers by sales througha
varietyof platforms. Customers cancontactShopkeep directlyfrom the Shopkeep websiteor
through its customerservice telephone line. Shopkeepalso offers its software system and
servicesto consumers through VAR (value added resellers), as well as by referrals from credit
card processing vendors.
11.
Shopkeep is the ownerof importantand highlyvaluable intellectual propertythat is
the heart of its products and award-winning brand.
12. Shopkeep is the ownerof numerous federally registered trademarkregistrations
registered on the
U.S.
Principal Register, including the following marks(the Shopkeep
Trademarks ):
Mar k
U.S.
Tr ad ema r k
Registration
Numbe r
Goods /
Services
S H O P K E E P
3,936,441
Class 9: Computer software for business management,
namely, sales transaction data management, sale
transaction processing, inventory management, contact
management, payroll management, vendor payment
management, marketing, scheduling
Class 35: Business services, namely, data processing
of business management data, namely, sales
transaction data, inventory management data, contact
management data, payroll management data, vendor
payment management data, marketing data and
scheduling data
Class 42: Operating a website providing software as a
service (SAAS) for use with business management,
namely, sales transaction data management, sale
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transaction processing, inventory management, contact
management, payroll management, vendor payment
management, marketing, scheduling
ShopKeepPOS
4,370,734
Class 9: Computer software for business management,
namely, sales transaction data management, sale
transaction processing, inventory management, contact
management, payroll management, vendor payment
management, marketing, scheduling
Class 42: Operating a website providing software as a
service (SAAS) for use with business management,
namely, sales transaction data management, sale
transaction processing, inventory management, contact
management, payroll management, vendor payment
management, marketing, scheduling
ShopKeepPOS
4,376,632
Class 35: Business services, namely, data processing
of
business management data, namely, sales
transaction data, inventory management data, contact
management data, payroll management data, vendor
payment management data, marketing data and
scheduling data
True and correct copies
of
these trademark registration certificates are attached as Exhibits 1 to 3
and are incorporated herein by reference.
13. Shopkeep is, and at all relevant times has been, the owner of numerous U.S.
copyright registrations including U.S. Copyright RegistrationNumber PA 1-762-902, Register
for iPad , which protects the graphical user interface of a version of the Shopkeep iPad point of
sale software. A true and correct copy of this copyright registration certificate is attached as
Exhibit 4 and is incorporated herein by reference.
14. Shopkeep is, and at all relevant times has been, also the owner
of
the copyrightable
works embodiedin the content on its website, including the website homepage as it appearedon
May 2, 2013, available in archived format at
https://web.archive.org/web/20130502213645//http://www.shopkeep.com/ (U.S. Copyright
4
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Registration
Number
PA
1-762-902
and related website copyrightable content hereinafter
referred to as Shopkeep Copyrights , Shopkeep Copyrighted works , or Shopkeep's
Copyrights ).
See
Exhibit 5, Merritt Aff.
fflf
5, 6, 7.
15.
Shopkeep expends enormous efforts to develop andmarket its brand, copyrighted
products and services, and its registered trademarks.
16. Shopkeep has receivedgreat industryand consumerrecognition of its productsand
services. For example, in 2011 Shopkeep won the Retail Solutions Providers Association
Innovative Solutions Award. In2012, Shopkeep wonthe Best in Show designation at the
FinovateFall 2012 technology innovation showcase. In 2013, Shopkeep was selectedas the #1
New and Noteworthy Business App by the iTunes App Store, it was awarded a Bronze in
Customer Service by the StevieAwards, andwon the Technology Innovatorof theYear
award at theETAStarAwards. In 2014, Shopkeep surpassed its award-winning performance in
2013 and was awarded a Gold in Customer Service by the Stevie Awards.
17. As a resultof Shopkeep's long-term and widespread use of the Shopkeep
Trademarks, the Shopkeep Trademarks haveacquired suchgoodwill and secondary meaning that
the public has come to associate the ShopkeepTrademarksas exclusively with the Plaintiff, and
the Shopkeep Trademarks have become famous.
DEFEND NT S UNL WFUL
TS
N D O ND U T
18. On information and belief, PayVida is the registrant and owner of the domain name
www.pavvida.ca and owns, operates, and maintains the website www.payvida.ca.
19. On informationand belief, GoDaddy.com, LLC is acting as a contractor for
Defendant to host and maintain www.pavvida.ca.
See
Exhibit 7.
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20. Defendant's website www.payvida.ca depicts unauthorized reproductions of the
Shopkeep Trademarks and unauthorized reproductions of, and derivative works of, the Shopkeep
Copyrights. Exhibit 5, Merritt Aff. lj[ 10-19.
21. Rather than develop its own website content, Defendant chose to copy and reproduce
Plaintiffs website content and reproduce depictions ofPlaintiff s copyrighted graphical user
interface that appeared on Plaintiffs website. Exhibit 5, Merritt Aff. Iff 10-19.
22. Defendant's website employs unauthorized reproductions
of
Plaintiff
s intellectual
property in order to promote its directly competitive point of sale systems for businesses to
process payment and manage their staff, inventory, and business data. Exhibit 5, Merritt Aff. f]f
10-19.
23. Defendant does not have a license from Shopkeep to use any
of
the Shopkeep
Copyrighted works appearing on Defendant's website and Shopkeep has not consented to,
sponsored, endorsed, or approved of Defendant's use of the Shopkeep Trademarks and Shopkeep
Copyrights or any variation thereof to promote a PayVida branded point of sale system. Exhibit
5, Merritt Aff.
118.
24. The association
of
the Shopkeep Trademarks with the PayVida platform has and will
continueto cause damage to the goodwill and value of the ShopkeepTrademarks. Shopkeephas
and continues to be injured by Defendant's unlawful acts within the State ofNew York and this
judicial district.
25. Shopkeep has made demands that Defendant discontinue and cease the infringement
and acts complained of, but Defendant has continued to infringe the Shopkeep Trademarks and
Shopkeep Copyrights. See Exhibit 6.
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26. On information and belief, Defendant has performed the acts complained of herein
willfully andwith knowledge of the infringement causedandwith intent to causeconfusion,
mistake,or deception,and to unfairly trade on Shopkeep's goodwill in the Shopkeep
Trademarks, copyrighted website contentand the copyrighted graphical user interface
comprising the Shopkeep Copyrights.
27. As of the date of this Complaint, Defendant continues to use unauthorized and
confusinguses of the ShopkeepTrademarks and unauthorizedcopiesof the Shopkeep
Copyrights. Defendant's failure to complywith Shopkeep's demands to cease anddesist further
demonstrates Defendant's intent to wrongfully infringe Plaintiffs intellectual property rights, to
dilute and damagethe enormousvalue of the ShopkeepTrademarks, to damage the goodwill
associated with the Shopkeep Trademarks, and to unfairly compete with Shopkeep.
COUNT
ONE:
FEDERAL
COPYRIGHT
INFRINGEMENT (17 U.S.C.
$106, 501)
28. Plaintiff repeats and realleges each and every allegation set forth above as if fully set
f or th he re .
29. Shopkeep is the sole and exclusive owner of all rights, title, and interest in and to the
registered copyrights in the Shopkeep graphical user interface display.
30. Defendant accessed Shopkeep's website content in order to obtain the images
comprisingdepictions ofShopkeep's registered copyrights in its graphical user interface display
and copyrighted website content.
31. Defendant has infringed
Plaintiffs
Shopkeep Copyrights in its graphical user
interface display and related website content in violation of Section 106 and 501 of the
Copyright Act, 17U.S.C. 106, 501 by creating unauthorized derivative works of, and making
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copies of, transmitting or publicly performing the Shopkeep Copyrighted works without
author izat ion.
32. Upon information and belief, Defendant has profited from the use
of
infringing
imagesand interfaces,which are identical or virtually identical to Shopkeep's Copyrights in the
graphical user interface and related website content.
33. As a result of Defendant's wrongful conduct, Shopkeep has been deprived of its
exclusiverights under the CopyrightAct, includingShopkeep's exclusive rights to reproduce,
distributecopies, transmit, publicly perform, and create derivateworks of the Shopkeep
Copyrights.
34. Defendant's acts
of
infringement are willful, intentional, and purposeful, in disregard
of
and with indifference to
Plaintiffs
exclusive rights.
35. As a direct and proximate result of said copyright infringement by Defendant,
Plaintiff is entitled to statutory damages for copyright infringement.
36. Plaintiffis also entitled to Defendant's profits attributable to the infringement,
pursuant to 17U.S.C. 504(b), including an accounting of and a constructive trust with respect
to such profits.
37. Plaintiff is further are entitled to its attorneys' fees and full costs pursuant to 17
U.S.C. 505 and otherwise according to law.
38. As a direct and proximate result of the foregoing acts and conduct, Plaintiffhas
sustained and will continue to sustain substantial, immediate, and irreparable injury, for which
there is no adequate remedy at law. Plaintiff, on information and belief, and on that basis aver
that unless enjoined and restrained by this Court, Defendant will continue to infringe Plaintiffs
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rights in the Shopkeep Copyrights. Plaintiff is entitled to preliminary and permanent injunctive
reliefto restrain and enjoin Defendant's continuing infringing conduct.
COUNT
TWO : UNFAIR COMPE T IT ION
39. Plaintiff repeats and realleges each and every allegation set forth above as
if
fully set
forth
here.
40. Upon information and belief, Defendant has adopted and used
Plaintiffs
intellectual
property rights, including the Shopkeep Trademarks and Shopkeep Copyrights which are the
products
of
Shopkeep's labors and expenditure, with full knowledge of Shopkeep's rights, and
without Shopkeep's authorization or consent.
41. Defendant's misappropriation and use of Shopkeep's intellectual property rights is
likely to cause confusion or to deceive consumers as to the origin
of
the goods and services
and/or has caused actual confusion among consumer as to the origin of the goods and services.
42. Defendant's use of Shopkeep's intellectual property has resulted in the
misappropriation
of
and trading upon Shopkeep's goodwill and business reputation at
Shopkeep's expense and at no expense to Defendant.
43. Defendant's misappropriation and use of Shopkeep's intellectual property rights has
unjustly enriched Defendant.
44. Defendant's misappropriation and use of Shopkeep's intellectual property rights has
damaged Shopkeep.
45.
Defendant's
aforesaid conduct, as alleged herein, constitutes willful unfair
competition in violation of the common law of the State ofNew York.
46.
Upon
information and belief, Defendant intends to continue its willful unfair
competitive conduct, unless restrained by this Court.
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47.
Upon information
and
belief,
Defendant, byits
willful
conduct, has
made and will
continue to make substantial profits and gains to which it is not entitledto in law or in equity.
48. Defendant's conduct is causing and will continue to cause Shopkeepto suffer
irreparable harmand damage, and Shopkeep has no adequate remedy at law.
COUNT THREE: FALSE
DESIGNATION
OF ORIGIN
OR
SPONSORSHIP
(1 5 U.S .C . 1125(a ))
49. Plaintiff repeatsand realleges each and every allegation set forth above as if fully set
forth
here.
50. Defendant's advertising,promotion, distribution, sale, and offering for sale of a point
of saleplatformthat without license or authorization employs the ShopkeepTrademarks and
Shopkeep
Copyrights in eitherDefendant'splatform itselfor its promotion, is calculated to, and
is likely to confuse, mislead, or deceive consumers, the public, and the payment processingand
retail store industries, as to the origin, source, sponsorship, and/or affiliation of or between the
Shopkeep and the PayVida point of sale platforms, and is intendedor is likely to cause such
parties to believe in error that the infringing PayVida platform has been authorized, sponsored,
approved, endorsed, or licensedby Shopkeep, or that there is some other affiliation, connection,
or association between Shopkeep and Defendant.
51. Defendant's conduct constitutes a false designation
of
origin and/or sponsorship
and/or false and misleading descriptions and representations of fact, all in violation of 15 U.S.C
1125(a).
52. Upon information and belief, Defendant intends to continue its willful false
designation of the origin of the PayVida platform, unless restrained by this Court.
1 0
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53. Upon information and belief, by its willful acts, Defendant has made and will
continue to make substantial profits and gains to which it is not in law or in equity entitled.
54. The actions of Defendant,
if
not enjoined, will continue. Plaintiff has suffered, is
suffering, and will continue to suffer irreparable damage consisting of, among other things,
diminution in the value of and goodwill associated with the Shopkeep Trademarks, and injury to
Shopkeep's business. Unless Defendant is restrained from continuing its wrongful acts and
operations of its infringement, the damage to Plaintiffwill increase. Plaintifftherefore is entitled
to injunctive reliefpursuant to 15 U.S.C. 1116.
55. Because Defendant's actions have been committed with intent to damage Shopkeep
and to confuse and deceive the public, Shopkeep is entitled to treble its actual damages or
Defendant's profits, whichever is greater, and to an award
of
costs, and reasonable attorneys fees
pursuant to 15 U.S.C. 1117.
COUNT FOUR: FEDERAL
TRADEMARK
INFR INGEMENT UNDER
15 U.S.C.
1114(1)
56. Plaintiff repeats and realleges each and every allegation set forth above as if fully set
f o rt h he re .
57. The United States Patent and Trademark Office has granted federal registrations to
the trademarks SHOPKEEP and SHOPKEEPPOS. Shopkeep owns the exclusive trademark
rights and privileges in and to SHOPKEEP and SHOPKEEPPOS. Shopkeep uses the
SHOPKEEP and SHOPKEEPPOS marks as designations
of
the source and quality
of
its goods
and services.
58. Defendant is using the Shopkeep Trademarks without authorization and confusingly
similar variations thereof in a manner that is likely to confuse, cause mistake, deceive as to the
1 1
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sourceof origin or sponsorship or endorsement of Defendant's website and point of sale system,
or to wrongly lead consumers and website browsers to conclude that some connectionexists
between Defendant's products and Shopkeep, and therefore infringes Shopkeep's exclusive
rights in the Shopkeep Trademarks in violation of 15U.S.C. 1114(1).
59. On information and belief, prior to Defendant's first use of the infringing content, it
was aware of Shopkeep's business and had either actual notice and knowledge, or constructive
notice of, the registered Shopkeep Trademarks.
60. Shopkeephas no adequate remedy at law for Defendant's infringement of the
ShopkeepTrademarks in that: (i) the Shopkeep Trademarks are unique and valuable property,
injury to which cannot adequately be compensated by monetary damages; (ii) the infringement
of the ShopkeepTrademarks has injured and threatens to continue to injure Plaintiffs reputation
and goodwill; and (iii) the injury resulting to Plaintifffrom Defendant's wrongful conduct, and
the conduct itself, are continuing.
61. On information and belief, the acts were undertaken willfully and with the intention
of causing confusion, mistake, or deception.
62. The actions of Defendant,
if
not enjoined, will continue. Plaintiffhas suffered, is
suffering, and will continue to suffer irreparable damage consisting of, among other things,
diminution in the value of and goodwill associated with the Shopkeep Trademarks, and injury to
Shopkeep's business. Unless Defendant is restrained from continuing its wrongful acts and
operations
of
its infringement, the damage to Plaintiffwill increase. Plaintiff therefore is entitled
to injunctive relief pursuant
tol5U.S.C. 1116.
63. Because Defendant's actions have been committed with intent to damage Shopkeep
and to confuse and deceive the public, Shopkeep is entitled to treble its actual damages or
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Defendant's profits, whichever is greater, and to an award of costs, and reasonable attorneys fees
pursuant to 15 U.S.C. 1117.
COUNT
FIVE: COMMON LAW
TRADEMARK
INFR INGEMENT
64. Plaintiff repeats and realleges each and every allegation set forth above as if fully set
f or th he re .
65. Shopkeep has prior rights in the Shopkeep Trademarks.
66. Defendant has infringed the Shopkeep Trademarks by using identical and
confusingly similar variations of the Shopkeep Trademarks in the promotion of its competing
products.
67. Defendant is using the Shopkeep Trademarks and confusingly similar variations
thereof in a manner that is likely to confuse, cause mistake, deceive as to the source
of
origin or
sponsorship or endorsement
of
Defendant's website and point of sale system, or to wrongly lead
consumers to conclude that some connection exists between Defendant's products or services
and Shopkeep, and therefore infringes Shopkeep's exclusive rights in the Shopkeep Trademarks
in violation o f New York State
common
law.
68. On information and belief, prior to Defendant's first infringing use of the Shopkeep
Trademarks, it was aware of Shopkeep's business and had either actual notice and knowledge, or
constructive notice of, the registered Shopkeep Trademarks.
69. Shopkeep has no adequate remedy at law for Defendant's infringement of the
Shopkeep Trademarks in that: (i) the Shopkeep Trademarks are unique and valuable property,
injury to which cannot adequately be compensated by monetary damages; (ii) the infringement
has injured and threatens to continue to injure Plaintiffs reputation and goodwill; and (iii) the
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injury resulting to Plaintifffrom Defendant's wrongful conduct, and the conduct itself, are
continuing.
70. On information and belief, the acts were undertaken willfully and with the intention
of causing confusion, mistake, or deception.
71. The actions of Defendant, if not enjoined, will continue. Plaintiffhas suffered, is
suffering, and will continue to suffer irreparable damage consisting of, among other things,
diminution in the value of and goodwill associated with the Shopkeep Trademarks, and injury to
Shopkeep's business. Unless Defendant is restrained from continuing its wrongful acts and
operations
of
its infringement, the damage to Plaintiffwill increase. Plaintiff therefore is entitled
to injunctive relief.
72. Because Defendant's actions have been committed with intent to damage Shopkeep
and to confuse and deceive the public, Shopkeep is entitled to recover its actual damages or
Defendant's profits, whichever is greater.
PRA YE R FOR REL IEF
WHEREFORE, Shopkeep demands judgment against PayVida as follows:
1. That Defendant and their officers, agents, servants, distributors, affiliates, employees,
attorneys and representatives, and all those in privity or acting in concert with Defendants or on
their behalf, be preliminary and permanently enjoined and restrained from:
i) using Shopkeep Trademarks, or any other confusingly similar mark or design
thereto, or the Shopkeep Copyrights, or any substantially similar designs thereto, alone or in
combination to advertise or promote any PayVida products or services;
ii) manufacturing, importing, advertising, promoting, supplying, distributing,
offering for sale or selling any products or services which bear the Shopkeep Trademarks, or any
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other confusingly similar mark or design thereto, or the Shopkeep Copyrights, or any
substantially similar designs thereto, alone or in combination;
iii) engaging in any other conduct constituting infringement of any Shopkeep
intellectual property right;
iv) using in any other way any mark or designation so similar to the Shopkeep
Trademarks as to be likely to cause confusion, mistake or deception;
v) falsely designating the origin, sponsorship, or affiliation of the Defendant's
products as in some
way
related to Shopkeep;
vi) otherwise competing unfairly with Shopkeep;
vii) infringing Shopkeep's exclusive rights in its copyrights;
viii) continuing to perform in any manner whatsoever any of the acts complained
of
in this complaint.
2. That pursuant to 17 U.S.C 503, Defendant pay to Plaintiff for its infringement of the
Shopkeep Copyrights statutory damages for Defendant's infringement of Shopkeep's registered
Copyrights, plus any profits of Defendant attributable to the other claims of copyright
infringement and Plaintiffs fees and costs.
3. That Defendant be required to account for and pay over all gains, profits, and
advantages derived by Defendant and any damages sustained by Plaintiff as a result of its
infringements of Plaintiffs intellectual property rights as enumerated herein.
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4. That Defendant be required to account for and pay over all gains, profits, and
advantages derived by Defendant and any damages sustained by Plaintiffas a result of its
infringements
of
Plaintiffs unfair competition as enumerated herein.
5. Requiring such other measure as the Court may deem appropriate to prevent the public
from deriving any erroneous impression that the PayVida website or the PayVida point
of
sale
platform has been authorized or is in any way related to Shopkeep.
6. Awarding Shopkeep its costs and attorneys fees and investigatory fees and expenses to
the fullest extend provided for by the Lanham Act and the Copyright Act.
7. Requiring Defendant to deliver up to Shopkeep for destruction and other disposition
any remaining infringing inventory, including all advertising, promotional, and marketing
materials, as well as all means of making the same.
8. Awarding to Shopkeep pre-judgment interest on any monetary award made part
of
the
judgment against Defendant.
9. Awarding to Shopkeep such additional and further relief as the Court deems just and
proper .
Dated: New York, New York
January
8,
2015
1 6
S A B E T Y
+
ASSOCIATES PLLC
By:_
AttorneMfor Plaintiff,
SMgDkeep.com,
Inc.
830
Third
Avenue,
5th Floor
New
York, NY
10022
Tel: (212) 481-8686
Fax: (646) 349-2782
E-mail:
docketfSjsabety.net
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EXHIBIT
1
TH E UN I TED
S TA TE S
OF AMER I C A
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20/59
^tttU
states
ofMitten
W*
Wuittto
m
patent
an*
t&ra&emarlt
Office
*-*#
S H O P K E E P
Reg. No. 3,936,441
Registered Mar. 29,2011
In t
Cls.:
9,35
and
42
TRADEMARK
SERV ICEMARK
PRINCIPAL REGISTER
WINEDELIVERY, LLC(NEWYORKLIMITED LIABILITYCOMPANY)
17 5
LAFAYETTE
AVE
BROOKLYN, NY
11238
FOR:
COMPUTER SOFTWARE
FOR
BUSINESS MANAGEMENT, NAMELY,
SALES
TRANSACTIONDATAMAN\GEMENT,SALETRANSACTION
PROCESSING,
INVENTORY
MANAGEMENT, CONTACT MANAGEMENT, PAYROLL MANAGEMENT, VENDOR
PAYMENT
MANAGEMENT, MARKETING,
SCHEDULING, INCLASS9 (U.S. CLS.21,23,
26,36 AND 38).
UiRclw
o f the UnitedStun Paten end 1'mlaiaik Office
FIRST USE 1-20-2010;IN COMMERCE 1-20-2010.
FOR:
BUSINESS SERVICES,NAMELY, DATAPROCESSINGOFBUSINESS MANAGEMENT
DATA,
NAMELY, SALES TRANSACTION
DATA,
INVENTORY
MANAGEMENT DATA,
CONTACT
MANAGEMENT DATA,
PAYROLL
MANAGEMENT DATA,
VENDOR PAYMENT
MANAGEMENT DATA, MARKETING DATA AND SCHEDULING DATA, IN CLASS 35
(U.S. CLS. 100,101 AND 102).
FIRST USE 1-20-2010; IN COMMERCE 1-20-2010.
FOR: OPERATING
A
WEBSITE PROVIDING SOFTWARE
ASA
SERVICE (SAAS) FOR USE
WITH BUSINESS MANAGEMENT, NAMELY, SALES TRANSACTION DATA MANAGE
MENT, SALE TRANSACTION PROCESSING, INVENTORY
MANAGEMENT,
CONTACT
MANAGEMENT, PAYROLL MANAGEMENT,
VENDOR PAYMENT
MANAGEMENT,
MARKETING,
SCHEDULING,
INCLASS42
(U.S. CLS.
100 AND101)
FIRST USE 1-20-2010; IN COMMERCE 1-20-2010.
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PAR
TICULAR FONT, STYLE, SIZE, OR COLOR.
SER. NO. 77-921,264, FILED 1-27-2010.
JEFFREY
LOOK,
EXAMINING
ATTORNEY
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EXHIBIT
2
^vte* states
of
met,rjy
VIV^
?Hmtetr
States* patent
anb tErabemarfc
Office ^Cf
ShopKeepPOS
Reg.
No. 4,370,734
shopkeep.com, inc.(Delaware corporation)
55
BROAD
STREET, 13TH
FLOOR
Registered July 23,2013
newyork,ny
10004
In t . Cls.: 9 and 42
TRADEMARK
SERV ICE
MARK
PRINCIPAL REGISTER
J^5*
ActBig Directorfthe United Slatei Patent and TrademarkOflke
FOR: COMPUTER SOFTWARE FOR BUSINESS MANAGEMENT, NAMELY, SALES
TRANSACTION
DATA
MANAGEMENT, SALETRANSACTION
PROCESSING,
INVENTORY
MANAGEMENT, CONTACT MANAGEMENT, PAYROLL MANAGEMENT, VENDOR
PAYMENT MANAGEMENT, MARKETING, SCHEDULING, IN CLASS 9 (U.S. CLS. 21, 23,
26, 36
AND
38).
FIRST USE
2-27-2012; IN COMMERCE 2-27-2012.
FOR: OPERATINGA WEBSITE PROVIDINGSOFTWAREAS A SERVICE (SAAS) FOR USE
WITH BUSINESS MANAGEMENT,
NAMELY,
SALES TRANSACTION
DATA
MANAGE
MENT,
SALE TRANSACTION PROCESSING, INVENTORY MANAGEMENT,
CONTACT
MANAGEMENT, PAYROLL MANAGEMENT, VENDOR PAYMENT MANAGEMENT,
MARKETING, SCHEDULING, IN CLASS 42 (U.S. CLS. 100 AND 101).
FIRST USE 2-27-2012;
IN COMMERCE
2-27-2012.
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
PA R
TICULAR FONT, STYLE, SIZE, OR COLOR.
OWNER OF U.S. REG. NO.
3,936,441.
SER.
NO.
85-564,448,
FILED 3-8-2012.
PAM
WILLIS, EXAMINING
ATTORNEY
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EXHIBIT
3
VZy* Wnitds &tate* patent an* ^ratremarfe Office ^ f.
ShopKeepPOS
Reg. No. 4,376,632 shopkeep.com, inc.(Delawarecorporation)
5 5 BROAD STREET
Registered
July 30,2013
oth floor
NEW
YORK, NY 10004
In t . CL: 3 5
SERV ICE MARK
PRINCIPAL REG I STER
FOR:
BUSINESS
SERVICES,NAMELY, DATA
PROCESSING
OF
BUSINESS MANAGEMENT
DATA, NAMELY, SALES TRANSACTION DATA, INVENTORY MANAGEMENT DATA,
CONTACT MANAGEMENT
DATA, PAYROLL
MANAGEMENT
DATA, VENDOR
PAYMENT
MANAGEMENT
DATA,
MARKETING
DATA
AND SCHEDULING
DATA, IN
CLASS
35
(U.S.
CLS.
100, 101 AND 102).
FIRST USE 2-27-2012; IN COMMERCE 2-27-2012.
THE MARK CONS ISTS OF STANDARD CHARACTERS WITHOUT CLA IM TO ANY PAR
TICULAR FONT, STYLE, SIZE,
OR
COLOR.
OWNER
OF U.S.
REG.
NO. 3,936,441.
SER. NO. 85-977,483, FILED
3-8-2012.
PAM WILLIS,
EXAMINING
ATTORNEY
Atttaf
Directoraffile
United
SlatesPatent and
Tradeniarit Oflke
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Certificate
ofRegistration
d>:***
J 8 7 0
This Certificate issued
under
the seal
of
the Copyright
Office in accordancewithtitle 17, United States Code,
atteststhat registrationhasbeen made for thework
identified below.
The
information on this certificate has
been made apartofthe
Copyright
Office
records.
7%u*l
x
&
M z
Register ofCopyrights, UnitedStates ofAmerica
Ti t le
Tide of
Work:
ShopKeep Register for iPad
Completion/Publication
EXHIBIT
4
Registration
Number
PA 1-762-902
Effective
date
o f
registration:
November 28,2011
Year
of
Completion: 2011
Date of 1st Publication:
August 5, 2011
Nation o f
1st
Publication: United States
Author
Author: Ronald Reeser
Au tho r Created: audiovisual material
Work made f o r h i re: Yes
Citizen
of : United
States
Author:
Jason
Richelson
Author
Created:
audiovisual material
Work
made
f o r h i re:
Yes
Citizen
of :
United States
Author:
MattCullin
Author Created: audiovisual material
Work
made
fo r
hire: Ye s
Citizen of : United States
Domiciled
in :
United
States
Domiciled
in : United States
Domiciled
in :
United
States
Copyright claimant
Copyright Claimant:
ShopKeep.com, Inc.
55 Broad Street,
New
York, NY, 10004, United States
Transfer Statement:
By written agreement
Rights and Permissions
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Organization Name:
Sabety+ Associates PLLC
Certi f ication
Telephone:
Address:
Name:
Date:
212-481-8686
8 West 40th Street, 12th Floor
New York, NY 10018 United States
TedSabety,Esq.
November 28,2011
Page 2
of
2
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Registration
#: PA0001762902
Service Request #: 1-691208254
Sabety + Associates PLLC
TedSabety
8 West
40th
Street,
12th Floor
New York, NY
10018
United
States
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26/59
IN
THE
UNITED STATES
D I ST R IC T COURT
FOR THE SOUTHERN DISTR ICT
OF
NEW
YORK
SHOPKEEP.COM, INC.,
Plaintiff, Case No.
v
PAYVIDA SOLUTIONS INC.,
Def endan t .
DECLARAT ION
OF
NORM MERR I T T
EXHIBIT
5
Norm Merritt hereby states as follows:
1. I a m
N o r m
Merrit t .
2. I am Co-CEO and President ofShopkeep.com, Inc.
3. I make this declaration based on my personal knowledge.
4. Attached as Exhibit A is a true and correct copy
of
screenshots
of
a webpage from
the Defendant's website, specifically (referred to
herein as the Payvida website ), as retrieved on November 24, 2014.
5. Attached as Exhibit B is a true and correct Certificate ofRegistration for U.S.
Copyright Registration No. PA 1-762-902.
6. Attached as Exhibit C is a true and correct copy
of
the deposit for registration PA 1-
762-902.
7. Shopkeep.com, Inc. is the owner
of
U.S. Copyright Registration PA 1-762-902.
8. Shopkeep.com, Inc. is the owner of all copyright interest in the display imagerythat
depicts its software user interface and all other text and imagery that appears on its website,
www.shopkeep.com.
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9. Exhibit D is a true and correct screenshot of the home page www.shopkeep.com,
dated May 2, 2013 archived at
. The home page
includes the copyright notice ShopKeep.com, Inc. All Rights Reserved.
10. The Payvida website as shown in Exhibit A contains at least 6 instances
of
unauthorized copies, transmissions or unauthorized derivative works of Shopkeep.com's
copyrighted user interface.
11. The unauthorized images
of
Shopkeep.com's copyrighted user interface that appear
on the Payvida website are identical to and extracted from an earlier version
of
Shopkeep.com's
website that was published on and made publicly available on Shopkeep.corn's website,
www.shopkeep.com.
12. One page of the Payvida Website presented in Exhibit A, sheet 4, includes an image
of
a person alongside the text Hi,
I'm
Josh I'll be your dedicated POS Specialist during your 30-
day trial. Feel free to contact me for helpful tips and tricks and any questions you have about
POS. A magnified portion is presented on sheet 5
of
Exhibit A.
13. The person identified as Josh on the PayVida webpage presented in Exhibit A is
Josh Jasper.
14. Josh Jasper is an employee ofShopkeep.com, Inc. and his current title is Point Of
Sale Specialist.
15. Josh Jasper did not authorize Payvida to use his image or likeness.
16. The image of the person identified as Josh in the PayVida webpage presented in
Exhibit A is identical to a picture
of
Josh Jasper that was published on and made publicly available
on Shopkeep.com's website, www.shopkeep.com.
17. Shopkeep.com, Inc. owns all copyright in the image
of
Josh Jasper and the
accompanying text that appears on the Shopkeep.com website, www.shopkeep.com.
18. Shopkeep.com, Inc. did not authorize Payvida to copy, transmit, publicly perform,
create derivativeworks of or otherwise use its copyrighted user interface imagery or any imagery
obtained from Shopkeep.com, Inc.'s website www.shopkeep.com or those of its authorized
distr ibutors.
19. Access and verbatim copying is demonstrated by Exhibit E, which is a true and
correct screenshot from Payvida's website. It shows content reproduced from the Shopkeep
website. This is demonstrated byExhibit F, which shows a zoom-in image
of
the screenshot in
Exhibit E, where Payvida's attempt to obscure Shopkeep's trademark failed and Shopkeep's
trademark readily appears.
[Remainder of Page Blank]
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I declare under penalty of perjury that the foregoing is true and correct.
Executed on l^-f lyj^Q^
Declaration
o f
Norm
Merritt
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E X H I B I T A
E it e fdi t y jew H ipory fioofcmarig loots t jg ip
Tablet8u PadPointof SalePay... x
4 f3t payvidaxa.'^t'e*p
* in i+-
^ P a y V i d a
C H
mpepusptogov
petition to
reviveissue fee
P A & i 2
HOME ABOUT PRODUCTS BENEFITS WORKWTTHUS
CONTACT
US
Meet Your New Rockstar Business
Manager
PayVida's iPad POS Makes Sales Simple
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^ ^ >
Cash :
Accept
Any
Payment
Take c a s h or credit c a rd s , o r deb it
All Major Credit
Cards:
Maj
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C B * mpep uspto.govpetition to revive issue fee P ^ ft &
n e e u u u u i t J i lu(j LtMiiniicn
iu i
y o u i
deb i t t ransac tions .
The
Most Powerful Tools To Manage Your
B u s i n e s s
Make smarter
business
decisions from any web browser with our
BackOffice & Clearsight Reports
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ile Edit
View
History
fiooknwrta
loots jjetpl
41 r$ payvKJaxataif p--- r^cis-m
Reilly RocketDashboard
Ftom PayVida
C 0~
mpep uspto gov petition
to
revive issue fee P i 1k
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s
K,rmJWN
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iw m fm *m w w tar
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Ge?orwnogs^r FREE
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us
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Simple. Reliable
An d Efficient Wired
&
Wireless
Point
Of
S a l e
Solutions T h a t
Offer
The Latest Chip Card
L e ar n M o re
Now Anyone Can
Col lect Credi tCard
Payments Anywhere.
Anytime. Accept Credit
Ca rd s On
Your iPhone,
L e ar n M o re
WEB TERMINAL
TABLET POS
All In
O ne Solut ion
To
G et
A
Merchant
Account,
Payment
Gateway
& Recurring
Billing.Start Accepting
Simple to se t up and
easy
to
use
POS
System. Scan
barcodes,
take cash or
credit, print or email
1^
0
L e a m
M o r e
L e a m
M o r e
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Certificate ofRegistration
AzSZSSz-.
This Certificate issued under theseal oftheCopyright
Officein accordance with title 17, United
States
Code,
attests that registration hasbeenmade for the work
identified below.
The
information on this certificate has
been
made
apartofthe
Copyright
Office records.
uu
x Rk
Wt
Register
ofCopyrights, United
States
of
America
Title
Tide of
Work: ShopKeepRegister for iPad
Completion/Publication
EXHIBIT
B
Registration Number
PA 1-762-902
Effect ive
date
o f
registration:
November 28,2011
Year
ofComplet ion: 2011
Date of 1st Publication: August 5,2011
Nat ion o f 1st Publication: United States
Author
Author: Ronald Reeser
Au tho r
Crea ted:
audiovisual materia l
Work
made
fo r
hire: Ye s
Citizen
of : United States
Author: Jason Richelson
Author Created: audiovisual mater ial
Work made f o r h ir e :
Ye s
Citizen
of : United States
Author:
Matt
Cullin
Author Created: audiovisual materia l
Work
made
fo r
hire:
Ye s
Citizen
of : United
States
Copyright claimant
Domici led in : United States
Domici led
in :
United
States
Domiciled in : United
States
Copyright
Claimant:
ShopKeep.com, Inc.
55 Broad Street, New York, NY, 10004, United States
Transfer Statement: By written agreement
Rights
and Permissions
^^^__^_^__^^^_
Page 1 of 2
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Organization Name: Sabety+AssociatesPLLC
Telephone: \
212-481-8686
Address: | 8West 40th
Street,
12th Floor
iNewYork, NY10018
United States
Certi f ication
Name :
Date:
TedSabety, Esq.
November 28,2011
Page 2 of 2
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Registration #: PAOOO1762902
Service
Request
#: 1-691208254
Sabety + Associates
PLLC
TedSabety
8
West
40th Street, 12th Floor
New York, NY
10018 United States
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E X H I B I T
C
ShopKecp:Jason
Description
Qty Unit Price Sub to ta l
jMSinjtifl
Total
Esptesso
Roberta's
sBcfcybun
Coffee Mactfifetto
Butter+Lov
e
C o o k i e s
appuccin E&fe Caffe
CofcfcSirew
Mocha NQfcQ
Drip Sairaftwche
o f f e e S O S
C a s h
Stegte
Espresso
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C a sh T e n d e r
5 .98
1 2
3
4
5
6
7
8
9
0
0
0
E n t e r
2 0 . 0 0
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Description
Sandw i che s
Macch ia to
Bu t t e r+Love
Cook i e s
Drip Cof fee SO
ShopKeep:
Jason
Qty Unit Price
Subtotal
|2jgg
2
5.49 10.98
1
3.25 3.25
1
1.50
1.50
10.98 T
3 .25 T
1 .50
3 .50 T
S u b t o t a l 1 9 . 2 3
D i s c o u n t 0 . 0 0
Coffee
Mafcfififeto
iGaffe Caffe OofefcSrew T
tiHK Mocha ' {US Hot.ea
CiSfflffirate
P a in s a u Almond
Ctiocolat C r o i s s a n t s
B u t t e t + t o v
e CotStoes
Drip Sanfltefehe
Sip^te-
Espresso
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EXHIBIT D
jie E di t iew History Eoofcmarfcs
IooUHelpJ
iPad
POS
System
j
Cloud Point
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elegant
easy-to-use iPad. By combining an iPad
register with our cloud-based BackOffice
reporting, you have the ability to generate
powerful analysisof inventory, sales and
customer relationship managementwith a
service that
neve rbecomes
outdated .
up customers, print or email receipts, popthe personal store online. Our powerful
cash drawer,accept creditcards, print to the reporting suite allows you to slice and
kitchen, scan items, manageyour inventory, dice your data easily and extract the
updatepricing and havereal timeaccess to infonnation thatis really meaningful to
sales numbers from anywhere. Try the demo, your business. ShopKeep POS is the
signup. thengo liveinminutes.Havea simplestway tomakesmarter business
question or concern? Call us. decisions.
S H O P K E E P P O S
i
Why ShopKeep POS
Ho w
it
Works
Customer
Reviews
Pricing
SignUp
Hardware
Introduction t o POS
Don't
hesitate to
call
us.
We're
a friendly
bunch
800-820-9814
work
wrm us
C 2013 ShopKeep.com.Inc. All Rights Reserved.
iPad isa registered trademark ofApple. Inc.
Patent pending.
Tenns
o f
Service
PrivacyPol icy
Rilling policy
M m f t f t
User License Agreement
Blog
Press
Jobs
C o n t a ct U s
PayPal Partnership
LevelUp Integration
Merchant Services Providers55
Broad
Street.9th Floor,
New
York,
NY
10004
Value Added Resellers
Affiliates
Merchants
800-820-9814
M a d e i n NY C i
Facebook
Twit ter
RSPA,
Innovative SolutionAwards
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E X H I B I T
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file Edit
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EXHIBIT F
J o h n Srciilh
c*oek
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46/59
( ;
H|
Sabety+associates pllc
I
Law, Technology and Electronic Media
Robert J. Ronning
President
& CEO
PayVida Solutions, Inc.
221-3011 Louie Drive
WestbankBCV4T3E3
Canada
Fax: 855,346.8432
EXHIBIT
6
0
SWesi 40th Street. 12th Floor
NewYork.NYI00IB
Pi 212481 .8686
Fi
646.349.2782
EMAILi
lnfo@beiy.nec
URL:
www.tibety.net
December 6,2013
Dear Mr. Ronning,
I represent Shopkeep.com, Inc., locatedin NewYorkCity ( ShopKeep ). I understand that
you contactedmy client in May of this year ostensiblyto procure a referral code and becomea
value
added
reseller.
However, myunderstanding is thatyour
company never
signed the
referralagreementthat you requestednor procuredanycustomers. Therefore, there is no
contract between your company and ShopKeep.
Shopkeep.com
owns
several copyright
registrations for its
software code,
including a
registered
copyright
foritsuser
interface.
I have
been
alerted
to thefact that
your company
sells
software
thatpresents a user interface that infringes Shopkeep'scopyrights. I attachhere the relevant
copyright
registrations. In particular the
attached
screenshot fromthe PayVida
website shows
a
userinterface that is virtuallyidentical to theuserinterface thatShopKeep.com created and
registered with theU.S.Copyright Officetwoyearsago. It is galling to seethat youhave
placed the
PayVida
trademark onto the
images
of theuserinterface of ShopKeep's software.
The identical appearance of theuserinterface is itselfblatant copyright
infringement.
But the
identical
nature
of theuser interface suggests thatPayVidaobtained a copyof ShopKeep's
tabletPOSprogram codebypretending to bea ShopKeep customerand,withoutauthorization,
used ShopKeep's softwarecode in violationof theShopKeepend user license.
UnderU.S. andCanadian law, it is copyright infringement to makecopiesof,distribute, or
createderivations of copyrighted workswithout permission from the copyright owner.
Therefore,
theuse,creationand transmission of the infringing user interface and the infringing
software code
areactionable bothin the
U.S.
andin
Canada
under the respective
copyright
laws
ofboth
countries.
Thetransmission of the
infringing
screenshots
from
thePayVida website are
equally
actionable
both in theU.S. andin Canada. In addition, theassociation of the
PayVida
logowithShopKeep'sdistinctive user interface design raisesclaimsof trade dress infringement
and unfair competition,
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8/10/2019 Shopkeep v. PayVida complaint.pdf
47/59
To the
extent you think
there is a contract between your
company
and
ShopKeep, consider
this
letter
termination on
notice, due
to
your
company's
infringement
ofShopKeep's
intellectual
property, pursuant toSection 5 ofthatunsigned document. Furthermore,
any rights
in
Shopkeep's trademarks
or
copyrights granted
by
such document
are
granted
at
will, pursuant
to
Section
9, So
consider this letter
revocation
and termination
of
such
rights
on
notice,
Therefore, as ofnow there isno doubt your company has no rights to
the
intellectual property of
Shopkeep.
On behalfofShopkeep.com, I demand that PayVida cease and desist
from
any
further
use,
creation ordistribution of
any software
code that (i)isderived from
ShopKeep's
program
code
or
(ii) displays
the infringing user interface and that
PayVida cease
and desist from any further
use, copying or
transmission
of
the
infringing
images.
I also demand that PayVida cease
associating
its
name
with
any
ShopKeep intellectual property, including user interface designs,
website
images
and/or ShopKeep's
trademarks.
I alsodemand that
PayVida
disclose the
number of customers who have
received
thePayVida software, the
amount
of revenues
received
and the
country
of
their residence.
If I
do
not get confirmation
back from
PayVida within
5
days that il intends to
comply with
these
demands,
orif
PayVida
does not comply within 10
days, ShopKeep
is
prepared
to(i)
take legal action against your company, seeking damages,
attorney's
fees
and an injunction preventing PayVida from further distribution of its software in
Canada and/or
the
U.S.,
(ii)
take legal action against your website hosting provider
to
have
the
infringing website taken down and (iii)
inform
PayVida's
credit
card
partners that
PayVida
intentionally infringes ShopKeep's intellectual property, putting such
partners
at risk.
Shopkeep reservesall of its rights anddefensesin this matter.
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8/10/2019 Shopkeep v. PayVida complaint.pdf
48/59
Certificate ofRegistration
mo
This Certificate
Issued
under the
seal of
the Copyright
Office
inaccordance withtitle
17, United
States
Code,
atteststhat
registration
hasbeenmade
for
thework
Identifiedbelow.The information on this certificatehas
been made apart oftheCopyright Office
records
iTLMLA hk
u
Register ofCopyrights, United States of
America
Ti t le ^^^^
Title ofWork: ShopKeepRegister
for iPad
Completion/Publication
Year of Completion:
2011
DateOf1stPublication; August5,2031
Registration Number
TX 7-482-937
Effective
date of
^
registration:
February
9,2012
Nation
of
1st Publication: United Stales
Au thor
Author. Ronald
Reeier
Author Created: computerprogram
Work
made for
hire:
Ye s
Citizen of :
United States
Author: Jason Rtchelson
Author Created: computer program
Work
made
for hire: Ye s
CJt izci ro f; United States
Author: MattCullin
AuthorCreated;
computer
program
Work made
for hire:
Ye s
Citizen
of :
United States
Domiciled id: United States
Domiciled
in: United States
Domiciled in: United States
Copyright claimant
CopyrightClaimant:
ShopKeep
corn,
the
55
Broad Street,
NewYork, NY,
10004,
United States
TransferStatement Bywrittenagreement
Rights
and
Permissions
1 ;
i i
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. i1' 'i . .--,-J.-Si' i v-/; v^/ .\ ' . : ' .-I- ; . ...: -, '.--;:
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8
West40thStreet,
ISUfFloor ^^M^
-
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51/59
-'''t' v': .Q;' 'Lf/=^;( '';?^v:':' '.': ' :
'i'T'.'.'.j'v '/:'?^.v?' i;'- .^'?1/:('^^.'
'-:'.0-y'>( '--^''A 'r-';JJ^
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( ^
( :
Certificate ofRegistration
^p-gf*I*fr. Tnls
Certificate
issued
under
theseal oftheCopyright
* c Office inaccordancewith title
17,
United States Code,
attests thatregistration hasbeenmadefor thework
identified below. The information
on
this certificate has
been made a
part
of the Copyright Office
records.
Register
ofCopyrights, UnitedStates of
America
Title
Title
of
Work: ShopKeepRegisterfor
iPad
Completion/Publication
Registration Number
PA 1-762-902
Effective
date
o f
registration:
November 28,2011
Year of Completion: 2011
Date of1st Publication: August5,2011
Nation o f 1s t Publication: United States
Author
Author:
RonaldReeser
Author Created: audiovisual material
Work made fo r hire Ye s
Citizen of : United
States
Author: Jason
Richelson
Author Created: audiovisual
material
Work
made
fo r hire: Yes
Citizen o f: Uni te d S ta te s
Author;
MattCullln
Author Crea
t ed ; aud io vi sual material
Work
made
fo r hlrci Yes
Citizen o f: Uni te d S ta te s
Copyright
claimant
Domici led in: United States
Domici led i n : Uni ted
States
Domiciled in:
United States
Copyright Claimant: ShopKeep.com,Inc,
55Broad Street,New York, NY, 10004,United States
Transfer Statement: By written agreement
Rights and
Permissions
Page J of 2
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53/59
Organization
Name:
jSabety +
Associates
PLLC
Telephone:
;
212-481-8686
i
Addrm: 8 West 40th Street, 12th Floor
Certi f ication
Name:
Date:
New York,NY 10018 United States
Ted
Sabety,
Esq.
November28,2011
Page 2
of
2
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54/59
Registration H:
PAOOO
1762902
Service Request ft 1-691208254
Sabety+Associates PLLC
TedSabety
8 West
40lh
Street, 12th Floor
New York, NY 10018 United States
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55/59
Tablet
&
iPad
Point of Sale
Payment Solutions
-PayVida Solutions
Inc.
http://www.payvida.ca/lablet-pos-solulions.hlml
I o f 5
E S t 3 f f i 5 3 3 S r a i
4 ^
PayVida*
HOME ABOUT PRODUCTS BENEFITS
WORKWITH US
CONTACT
US
Meet Your
New
Rockstar Business Manager
PayVida's iPad POS Makes Sales Simple
A dd
I tems:
Add
itemsby tapping, searching byname, or using the
bar-code scanner. Easily adjust quantities or apply discounts.
Pick A Payment Type:
Accept
cash, swipe
credit
cardsor debit
(debit
is
through
a
separate PayVida terminal).
Add A
Tip:
Invite tippingwith the preset tip icons.
Complete The
Sale:
Let yourcustomerssign
right
onyouriPad and thenyoucan
either print their receipt or email it to them.
^'V:
Tailor Your iPad Register to YOU
Customize yourhardware setup to theexact noeds ofyour business
12/3/2013 3:56
PM
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56/59
Tablet iPad Point of Sale
Payment
Solutions - PayVida Solutions Inc.
htlp://www,payvida.ca/lablet-pos-solutions.html
2 of 5
Takethe basic setup to the next
level with
additional hardware
Bar-code
scanner :
Improveyour checkout speed to
focus on interacting with
your customer.
Remote
Printer:
Print orders straight to the bar,
kitchen or Batista for increased
efficiency.
Scale s :
Diversify your offerings and
sell any itemby
weight,
easily
with more accuracy.
Modify With Ease
Cheeseburger, hold the kelehtip,
add fried
onions...
No
Problem
Configure groups (e.g. welldone, medium,
and rare) oradd-ons (e.g. lettuce or
tomatoes) forany item, then tap thai itemon
your PayVida register to open up its options.
Completelycustomize (heorder for your
customers andwlrelessley send itstraightto
the kitchen orbar printer.
Accept Any Payment
Take cash
or credit
cards,
or
debit
12/3/2013 3;56PM
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57/59
Tablet
& iPad Point ofSale
Payment
Solutions - PayVida Solutions Inc.
hUp://www.payvida.ca/lablet-pos-solulions,html
3 o f 5
C a s h :
When your customer pays,
the cash drawer pops open.
Store your cash safely and keep it
organized.
All Major
Credit
Card.s:
Swipe
any major credit card
through the PayVida card swiper
attached to your iPad.
Debi t Cards:
The iPad does not accept debit
because
o f t he
EMV/Pin in Canada.
But, PayVida provides you witha
free counter top terminal for your
debit transactions.
The Most Powerful Tools To Manage Your
B u s i n e s s
Make
smarter business
decisions from any web browser with our
BackOffice & Clearsight Reports
inventory management:
Add
Items: Track your entire
Inventory, Including pricingand
quantities. Have choices with
th e
modifiers
an d know when (o
order more product or supplies.
Customize your
layout:
Choose exactly how your items
are arranged on your iPad
register, so you can assure that
popular
items
are easy to find,
Employee management:
Control
access:
Assign
Individual sign Incodes toyour
employees, offering them
cashier, manager orback
office permissions.
Manager dashboard:
Managers can open and close
shifts, se e the dally totals,
create payouls and print
reports.
12/3/2013 3:56
PM
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Tablet &
iPad Point
of SalePayment Solutions - PayVida Solutions Inc,
htlp.7Avww.payvlda.ca/lablet-pos-solulions.html
4 o f 5
Raw Goods: Keep trackof
Individual Ingredients that go
Into your productsto ensure
re-ordering
when
supplies are
running low.
Time clock: Easilytrack
employee hours foreasier
payrolland shift management
when Ihey clock inand clock
ou t
on th e iPad.
Customize receipts;
Customer Loyalty:
Customize store details;
Encourage customers to
remember you with a
customized printreceipt
featuring
your company name,
slogan, contact and social
media info.
Offer digital receipts: Save
lime and trees by offeringemail
receipts and the abilityfor
customers to sign and tip for
their orders right on the display
s c r e e n .
Get to
know
your
customers: Save customer
information on every
purchase and greet regulars
wilh their favorite items.
Send marketing emails:
Contact your PayVida iPad
customers wilh
information
about special events,
promotions and
much
more.
Robust
Reporting
UiKioi'stcind your business better than ever with our Clearln&ight Reports
A report for everything
Use the powerand
flexibility
of oureasy-to-understand Clearinsight Reports to make smarterbusiness decisions.
A range of reports
Cj Summary Report
b Sa les by Date
CjSales by Hour
L Sales by DateRange
f_j
Sales byTender
Cj Sales by
Department
Plus, plenty of useful exports
CjTop
Selling
items
Cj QulckBooks
Cj Sales
D
So ld I tems
Cj
Slock
Items
Cj Modifiers Report
Cj InventoryValue Report
Ci Reorder Report
Cj TaxReport
Cj Drop/Payouls/lnventory
Cj Inventory Adjustment
Report
Cj Returns
Cj Returned Items
L>
LoyaltyProgramVouchers
G
Order
from
Sales
Cj
What do
I
need
to
order?
All In th e Cloud
Payvida POS Isa cloud-based
point
of sale
system, meaning
no
more
local
servers,
easy
upgrades, and data thai Is
always available and accessible
from anywhere,
Safe, Easy, Fast
Safe
and Secure
. All PayVida POS transactions are
- ( protected by several layers of
securily and no card dala Isever
louched. stored, orshared Inany
way. The register Bvenworte
when you are offline.
Keep track from
W4.-,[Mt.vJ
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