herman miller v. king's mark et. al
DESCRIPTION
Herman Miller v. King's Mark et. al.TRANSCRIPT
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IN THE UNITED STATES DISTRICT COURT FOR THE WESTERN DISTRICT OF MICHIGAN
HERMAN MILLER, INC., a Michigan corporation Plaintiff, v. THE KING’S MARK, LLC, a California limited liability corporation, CUBE KING, INC. d/b/a CUBEKING, a California corporation, OFFICE FURNITURE DISCOUNTERS, INC. d/b/a/ OFFICE FURNITURE OUTLET, a California corporation, MARK STEINBERG, an individual, FRANK RAWSON, an individual, MICHAEL SHIMEK, an individual, and DEREK DELLAFOSSE, an individual d/b/a REUSEACUBE, Defendants.
Case No. 1:13-cv-00411 JURY TRIAL DEMANDED
COMPLAINT
Herman Miller, Inc. ( “Herman Miller” or “Plaintiff”), for its Complaint against The
King’s Mark, LLC (“King’s Mark”), Cube King, Inc. d/b/a CubeKing (“CubeKing”), Office
Furniture Discounters, Inc. d/b/a Office Furniture Outlet (“OFO”), Mark Steinberg, Frank
Rawson, Michael Shimek, and Derek Dellafosse d/b/a Reuseacube (collectively
“Defendants”), states and alleges as follows:
NATURE OF THE ACTION
1. This is an action for violation of the laws of the United States relating to
federal trade dress infringement, counterfeiting, unfair competition, and trademark
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dilution in violation of the Lanham Act, 15 U.S.C. §§ 1114(1), 1125(a), and 1125(c);
violation of the Michigan Consumer Protection Act, Mich. Com. Laws § 445.903; unfair
competition under Michigan common law; patent infringement in violation of 35 U.S.C. §
271, and civil conspiracy under Michigan common law.
2. This action results from Defendants’ unauthorized manufacture,
importation, distribution, offer for sale, sale, and/or use of chairs, including the Cloud
Chair, that infringe Herman Miller’s federally registered trade dress for the shape and
appearance of Herman Miller’s famous AERON® chair and Herman Miller’s patents.
THE PARTIES
3. Plaintiff, Herman Miller, is a Michigan corporation with its principal place of
business at 855 East Main Avenue, Zeeland, Michigan 49464. Herman Miller is a
worldwide leader in the design and manufacture of products for the home, office,
healthcare, and educational environments.
4. On information and belief, Defendant King’s Mark is a California
corporation with a business address at 1401 Village Way, Santa Ana, California 92705.
5. On May 16, 2012, Defendant King’s Mark filed intent-to-use U.S.
Trademark Application Serial No. 85/626,952 for the mark “Cloud Chair and design.”
The correspondence information provided in the application filed by King’s Mark
included the following phone and fax numbers and email addresses: 714-953-5464
(phone), 714-953-5414 (fax), [email protected], and [email protected]. See
Exhibit A attached hereto.
6. On information and belief, Defendant Frank Rawson is a California
resident and is Controller of King’s Mark. Id.
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7. On information and belief, Defendant Michael Shimek is a California
resident and currently is or has been a Managing Member of Defendant King’s Mark.
8. On information and belief, Defendant CubeKing is a California corporation
with a business address at 1401 Village Way, Santa Ana, California 92705, the same
address as King’s Mark. On further information and belief, CubeKing can be reached
via telephone at (714) 953-5464, the same telephone number listed in King’s Mark’s
trademark application for “Cloud Chair and design.” See Exhibit B attached hereto.
9. On information and belief, Mark Steinberg is the owner of Defendant
CubeKing and is a resident of California. On further information and belief, Defendant
Steinberg can be reached at the email address [email protected].
10. On information and belief, Defendant Frank Rawson also is an employee,
representative, or agent of CubeKing and can be reached at the email address
[email protected], an email address listed in King’s Mark’s trademark application for
“Cloud Chair and design.”
11. On information and belief, Defendant Michael Shimek also is an
employee, representative or agent of CubeKing and can be reached at the email
address [email protected], an email address listed in King’s Mark’s trademark
application for “Cloud Chair and design.”
12. On information and belief, Defendants King’s Mark and CubeKing have
common owners, employees, representatives, and/or agents, including Defendants
Mark Steinberg, Frank Rawson, and Michael Shimek.
13. On information and belief, Defendant OFO is a California corporation with
a business address at 421 N. Cota Street, Corona, California 92880.
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14. On information and belief, Defendant Derek Dellafosse does or has done
business as Reuseacube and resides at 1702 Carnegie Court, Creedmoor, North
Carolina 27522.
15. On further information and belief, Defendant Dellafosse is currently
employed by or is otherwise a sales representative or agent for King’s Mark and/or
CubeKing.
16. On information and belief, one or more of the Defendants, acting
individually and/or in active concert, manufacture, import, promote, advertise, distribute,
use, offer for sale, and/or sell office chairs, including the Cloud Chair, in direct
competition with Herman Miller.
JURISDICTION AND VENUE
17. This Court has jurisdiction over Herman Miller’s federal claims pursuant to
15 U.S.C. §1121 and 28 U.S.C. §§ 1331 and 1338. This Court also has diversity
jurisdiction pursuant to 28 U.S.C. § 1332 with the amount in controversy exceeding
$75,000.00, excluding interest and costs. This Court further has supplemental
jurisdiction over Herman Miller’s state and common law claims under 28 U.S.C. §§ 1338
and 1367 because those claims are so related to Herman Miller’s federal claims that
they form part of the same case or controversy.
18. Venue is proper in the Western District of Michigan under 28 U.S.C. §
1391 and 1400(b) because the claims arose in this District, a substantial part of the
events giving rise to the claims occurred in this District, and Defendants are doing
business in this District. Plaintiff Herman Miller has been and continues to be harmed in
this District.
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19. All Defendants are properly joined in this action under 35 U.S.C. § 299
because Defendants’ infringing acts arise out of the same transaction, occurrence, or
series of transactions relating to the making, using, importing into the United States,
offering for sale, and/or selling of the infringing Cloud Chair. Defendants further are
properly joined under 35 U.S.C. §299 because questions of fact common to all
Defendants exist.
20. This Court has personal jurisdiction over the Defendants because
Defendants are engaging in various activities within this State and this District, including
advertising, promoting, offering for sale, and selling infringing Cloud Chairs in this State
and in this District. In addition, Defendant OFO is offering for sale and selling Cloud
Chairs on its website (www.ofousa.com), which is accessible by individuals and entities
in this State and this District. The consequences of Defendants’ actions produce effects
in and directly impact this forum.
HERMAN MILLER’S INTELLECTUAL PROPERTY RIGHTS
The AERON Chair Trade Dress
21. For over eighty years, Herman Miller has been a leader in the extremely
competitive business of designing, manufacturing, and selling high-quality furniture,
including office furniture.
22. In 1991, Herman Miller recognized that most office chairs had few, if any,
distinguishing characteristics. Consequently, Herman Miller engaged world-renowned
designers to create a new office chair that was distinctively different from those of
Herman Miller’s competitors.
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23. For nearly three years, Herman Miller’s designers worked to create a
unique and distinctive office chair like no other in the marketplace. The resulting design
was the AERON chair.
24. Below is a representation of the shape and appearance of Herman Miller’s
AERON chair (hereafter the "AERON Trade Dress"):
25. The AERON Trade Dress is unique, distinctive, and non-functional. The
AERON Trade Dress is not necessary for others to compete with Herman Miller, is not
essential to the use or purpose of the AERON chair, and does not affect the cost or
quality of the AERON chair.
26. The distinctiveness of the AERON Trade Dress identifies and
distinguishes the AERON chair from office chairs offered by other companies.
27. Since long before the acts of the Defendants complained of herein, and
since at least as early as October, 1994, Herman Miller has continuously manufactured,
distributed, advertised, promoted, offered for sale, and sold the AERON chair in
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interstate commerce under Herman Miller’s registered AERON and Herman Miller
trademarks.
28. Herman Miller and its authorized dealers and retailers have expended
substantial time, effort, and money extensively advertising, promoting, and marketing
Herman Miller’s AERON chair throughout the United States, with particular emphasis on
the AERON Trade Dress. Since its introduction into the marketplace, Herman Miller’s
AERON chair has gained worldwide recognition and acclaim, and has been featured in,
for example, television commercials for well-known goods and services, feature films,
and major network television programs. Herman Miller’s AERON chair has received
extensive, unsolicited media coverage and is featured in permanent museum collections
throughout the world.
29. As a result of the extensive and continuous advertising, promotion, and
sales of the AERON chair and through favorable industry acceptance and recognition,
the consuming public and the trade have come to recognize and identify the AERON
Trade Dress with Herman Miller.
30. As a further result of the extensive and continuous advertising, promotion,
and sales of Herman Miller’s AERON chair and through favorable industry acceptance
and recognition, the AERON Trade Dress became, prior to the acts of the Defendants
complained of herein, distinctive and famous in the office furniture industry under
Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
31. Herman Miller is the owner of United States Trademark Registration No.
2,754,826 covering the AERON Trade Dress, which registration is legally and validly
registered on the Principal Register of the United States Patent and Trademark Office
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(“USPTO”). See Exhibit C attached hereto. A printout from the USPTO’s Trademark
Status and Document Retrieval database evidencing the status of the AERON Trade
Dress registration is attached hereto at Exhibit D.
32. Pursuant to 15 U.S.C. § 1065, Herman Miller’s federal registration is
incontestable and conclusive evidence of the validity of its AERON Trade Dress as well
as Herman Miller’s ownership and exclusive right to use the AERON Trade Dress in
connection with the goods identified in the registration certificate.
33. Herman Miller has recorded Trademark Registration No. 2,754,826
covering the AERON Trade Dress with the United States Customs and Border Patrol,
which is authorized to exclude, detain, and/or seize imported products that infringe
Herman Miller’s AERON Trade Dress registration.
34. Accordingly, Herman Miller’s AERON Trade Dress is an asset of
incalculable value as an identifier of Herman Miller, its high quality products and
services, and its goodwill.
The Herman Miller Patents
35. Herman Miller’s design and development of the AERON chair also yielded
several different innovations, which were patented by Herman Miller.
36. Herman Miller is the owner of United States Patent No. 6,386,634 (“the
�634 patent”) entitled “Office Chair,” which duly and legally issued on May 14, 2002. A
copy of the �643 patent is attached hereto at Exhibit E.
37. Herman Miller is the owner of United States Patent No. 6,059,368 (“the
�368 patent”) entitled “Office Chair,” which duly and legally issued on May 9, 2000. A
copy of the �368 patent is attached hereto at Exhibit F.
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38. Herman Miller is the owner of United States Patent No. 6,035,901 (“the
�901 patent”) entitled “Woven Fabric Membrane for a Seating Chair,” which duly and
legally issued on March 14, 2000. A copy of the �901 patent is attached hereto at
Exhibit G.
39. Herman Miller is the owner of United States Patent No. 5,772,282 (“the
�282 patent”) entitled “Tilt Control Mechanism for a Chair,” which duly and legally
issued on June 30, 1998. A copy of the �282 patent is attached hereto at Exhibit H.
These four patents will be referred to collectively as the “Herman Miller Patents” herein.
DEFENDANTS’ ACTS OF TRADE DRESS INFRINGEMENT, COUNTERFEITING, UNFAIR COMPETITION, DILUTION, AND PATENT INFRINGEMENT
40. On information and belief, one or more of the Defendants individually
and/or in concert have manufactured, imported, distributed, used, offered for sale and/or
sold the Cloud Chair in this District and in interstate commerce within the United States,
without authorization from Herman Miller. Defendants’ actions complained of herein
have violated and continue to violate numerous intellectual property rights of Herman
Miller in the AERON chair as set forth below.
41. Defendant CubeKing, according to its website, is an industry leader in
office furniture liquidation and a leading source for new and used, brand name, high
quality office furniture, including cubicles, workstations, tables, desks, and chairs. See
Exhibit I attached hereto.
42. CubeKing has sold used Herman Miller AERON chairs since at least as
early as 2007. See Exhibit J attached hereto. As a result, on information and belief,
CubeKing and its officers, employees, representatives, and agents, including one or
more of Defendants Mark Steinberg, Frank Rawson, and Michael Shimek, knew about
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and became familiar with the AERON chair and the famous AERON Trade Dress long
before the acts complained of herein.
43. As set forth in paragraph 5, Defendant King’s Mark filed an intent-to-use
application to register the Cloud Chair mark and design on May 16, 2012. On January
1, 2013, the USPTO issued a Notice of Allowance for the application, and on February
6, 2013, King’s Mark filed a Statement of Use. See Exhibits K and L attached hereto.
King’s Mark’s Statement of Use asserts that the Cloud Chair and design mark was first
used on November 1, 2012 and first used in commerce on November 20, 2012. See
Exhibit L.
44. The specimens of use filed by King’s Mark with the above-referenced
Statement of Use are photographs of the box used to ship the Cloud Chair. The box
shown in one of specimens includes a drawing of the Cloud Chair, which is substantially
identical to Herman Miller’s registered AERON Trade Dress. This specimen of use is
shown below:
45. On information and belief, since at least as early as November 2012, and
notwithstanding Herman Miller’s prior rights in and to the AERON Trade Dress, King’s
Mark or one or more of the Defendants have manufactured, imported, distributed, used,
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advertised, promoted, offered for sale, and/or sold in Michigan and elsewhere in
interstate commerce, the Cloud Chair, which incorporates a shape and appearance
which is nearly identical to that of the AERON Trade Dress. A picture of the actual
Cloud Chair is shown below on the left next to the registered AERON Trade Dress on
the right.
Infringing Cloud Chair Registered AERON Chair Trade Dress
46. On information and belief, Defendant OFO has sold the Cloud Chair since
at least as early as February 9, 2013 and is currently selling the Cloud Chair at its store
in Corona, California and on its website located at www.ofousa.com. See Exhibit M
attached hereto.
47. Defendant OFO is selling the Cloud chair for $549.00, well below the list
price of a new Herman Miller Aeron chair. Id.
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48. On further information and belief, Defendant King’s Mark and/or
Defendant CubeKing have supplied and continue to supply OFO with the Cloud Chairs
that OFO is selling at its Corona, California store and on its website at
www.ofousa.com.
49. On information and belief, one or more of the Defendants also created a
Facebook® page to advertise and promote the Cloud Chair on November 9, 2012. See
Exhibit N attached hereto.
50. On information and belief, one or more of the Defendants have compared
and continue to compare the Cloud Chair to Herman Miller’s AERON chair when
advertising and promoting the Cloud Chair. On further information and belief, one or
more of the Defendants are offering the Cloud Chair for sale for nearly half the price of
the famous AERON chair. See Exhibit O attached hereto.
51. On information and belief, Defendant Dellafosse directed Anne Flanagan,
a relative of or individual associated with Defendant Dellafosse, to register the domain
name mycloudchair.com, which she registered on January 14, 2013. See Exhibit P
attached hereto.
52. On further information and belief, Defendant Dellafosse requested
registration of the domain name in order to develop a website to further advertise,
promote, offer for sale, and sell the Cloud Chair.
53. Herman Miller has never authorized, licensed, or otherwise permitted any
of the Defendants to use the AERON Trade Dress, any other confusingly similar or
dilutive variations thereof, or the inventions claimed in the Herman Miller Patents.
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54. Defendants’ misappropriation of the AERON Trade Dress is an intentional
attempt to pass off Defendants’ inferior products as Herman Miller’s high quality
AERON chairs by deceiving the relevant public, including consumers.
55. Defendants also have competed unfairly with Herman Miller. For
example, knowing Herman Miller’s long-standing and excellent reputation for producing
high quality AERON chairs, Defendants’ unfair competition, deceptive business
practices, and unauthorized use of the AERON Trade Dress is an effort to trade on the
valuable goodwill and reputation associated with the AERON Trade Dress, and is likely
to cause confusion with regard to the affiliation or connection between Herman Miller
and Defendants, and with regard to the source, sponsorship, or approval of the Cloud
Chair, all to Herman Miller’s harm and Defendants’ unjust enrichment.
56. On information and belief, Herman Miller has lost sales of the AERON
chair and corresponding profits, which it would have made but for Defendants’ infringing
and unauthorized sales of the Cloud Chair, all to the detriment of Herman Miller.
57. On information and belief, at the time Defendants first engaged in the acts
complained of herein, Defendants had actual or constructive knowledge of the Herman
Miller Patents, the AERON chair, the AERON Trade Dress, and the fame, valuable
reputation, and goodwill associated with the AERON Trade Dress. As a result, one or
more of the Defendants’ actions have been and continue to be willful and intentional
acts intending to trade on the reputation and goodwill of Herman Miller and the AERON
Trade Dress, to confuse, deceive, and mislead consumers, and to dilute the fame and
distinctiveness of the AERON Trade Dress.
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COUNT I
Federal Trade Dress Infringement
58. As the first ground for relief, Herman Miller hereby alleges infringement of
the federally registered AERON Trade Dress in violation of Section 32(1) of the Lanham
Act, 15 U.S.C. § 1114(1). Herman Miller repeats and realleges the allegations of
paragraphs 1 through 57, as though fully set forth herein.
59. Defendants’ unauthorized use in commerce of the AERON Trade Dress in
connection with the Cloud Chair, as described herein, is likely to cause confusion,
mistake or deception as to the source, sponsorship or approval of Defendants’ products
by Herman Miller. The consuming public and the trade are likely to believe that
Defendants’ Cloud Chair originates with Herman Miller, is licensed, sponsored or
approved by Herman Miller, or is in some way connected with or related to Herman
Miller, in violation of §32(1) of the Lanham Act, 15 U.S.C. § 1114(1), as amended.
60. Defendants’ unauthorized and infringing use of the AERON Trade Dress,
as alleged herein, constitutes intentional and willful infringement of Herman Miller’s
rights in and to its federally registered AERON Trade Dress in Violation of §32(1) of the
Lanham Act, 15 U.S.C. § 1114(1), as amended.
61. Said infringing acts have occurred in interstate commerce and have
caused, and unless enjoined by this Court will continue to cause, serious and
irreparable injury to Herman Miller, including in this District, for which Herman Miller has
no adequate remedy at law.
62. Defendants’ above actions were, and are, willful, fraudulent, and
malicious. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
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punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
COUNT II
Federal Trademark Counterfeiting
63. As the second ground for relief, Herman Miller hereby alleges trademark
counterfeiting in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
Herman Miller repeats and realleges the allegations of paragraphs 1 through 62, as
though fully set forth herein.
64. Defendants’ unauthorized and infringing acts complained of herein
constitute the reproduction, counterfeit and copy and/or use of a reproduction,
counterfeit or copy in commerce of Herman Miller’s AERON Trade Dress in violation of
§32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
65. Defendants’ acts of counterfeiting constitute intentional and willful
infringement of Herman Miller’s rights in and to its federally registered AERON Trade
Dress in violation of §32(1) of the Lanham Act, 15 U.S.C. § 1114(1), as amended.
66. Said acts of counterfeiting have occurred in interstate commerce and have
caused, and unless enjoined by this Court will continue to cause, serious and
irreparable injury to Herman Miller, including in this District, for which Herman Miller has
no adequate remedy at law.
67. Defendants’ above actions were, and are, willful, fraudulent, and
malicious. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
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COUNT III
Federal Unfair Competition
68. As the third ground for relief, Herman Miller hereby alleges federal unfair
competition in violation of Section 43(a)(1) of the Lanham Act, 15 U.S.C. § 1125(a)(1).
Herman Miller repeats and realleges the allegations of paragraphs 1 through 67, as
though fully set forth herein.
69. Defendants’ unauthorized use in commerce of the AERON Trade Dress in
connection with the Cloud Chair, as described herein, is likely to cause confusion, to
cause mistake, or to deceive as to the affiliation, connection, or association of
Defendants with Herman Miller, or as to the origin, sponsorship, or approval of
Defendants’ goods by Herman Miller in violation of Section 43(a)(1) of the Lanham Act,
15 U.S.C. § 1125(a)(1).
70. Defendants’ unauthorized and infringing use of the AERON Trade Dress,
as alleged herein, constitutes intentional and willful infringement of Herman Miller’s
rights in and to its AERON Trade Dress in Violation of §43(a) of the Lanham Act, 15
U.S.C. § 1125(a), as amended.
71. Defendants’ unauthorized and infringing use of the AERON Trade Dress,
as alleged herein, constitutes intentional and willful unfair competition in violation of
Herman Miller’s rights.
72. Said infringing acts have occurred in interstate commerce and have
caused, and unless enjoined by this Court will continue to cause, serious and
irreparable injury to Herman Miller, including in this District, for which Herman Miller has
no adequate remedy at law.
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73. Defendants’ above actions were, and are, willful, fraudulent, and
malicious. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
COUNT IV
Federal Dilution
74. As the fourth ground for relief, Herman Miller hereby alleges federal
dilution in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). Herman
Miller repeats and realleges the allegations of paragraphs 1 through 73, as though fully
set forth herein.
75. Prior to the acts of Defendants complained of herein, the AERON Trade
Dress, became distinctive and famous within the meaning of Section 43(c) of the
Lanham Act, 15 U.S.C. § 1125(c).
76. Defendants’ commercial sale and use of the Cloud Chair in commerce, as
alleged herein, has caused and continues to cause dilution of the distinctive quality of
the AERON Trade Dress in violation of Section 43(c) of the Lanham Act, 15 U.S.C. §
1125(c).
77. Defendants’ unauthorized use of the AERON Trade Dress, as alleged
herein, constitutes intentional and willful dilution of the AERON Trade Dress.
78. Said acts of dilution have occurred in interstate commerce and have
caused, and unless enjoined by this Court will continue to cause, serious and
irreparable injury to Herman Miller, including in this District, for which Herman Miller has
no adequate remedy at law.
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79. Defendants’ above actions were, and are, willful, fraudulent, and
malicious. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
COUNT V
Violation of the Michigan Consumer Protection Act
80. As the fifth ground for relief, Herman Miller hereby alleges violation of the
Michigan Consumer Protection Act, Mich. Comp. Laws § 445.903. Herman Miller
repeats and realleges the allegations of paragraphs 1 through 79, as though fully set
forth herein.
81. Defendants’ unauthorized use in commerce of the AERON Trade Dress in
connection with the Cloud Chair, as described herein, is causing a probability of
confusion or misunderstanding as to the source, sponsorship, approval, and/or
confusion of Defendants’ Cloud Chairs. The consuming public is likely to believe that
Defendants’ Cloud Chair originates with Herman Miller, is licensed, sponsored or
approved by Herman Miller, or in some way connected with or related to Herman Miller.
82. Defendants’ unauthorized use of the AERON Trade Dress, as alleged
herein, has caused and is likely to cause in the future, a public injury and a detrimental
effect on consumers by causing confusion as to the origin or sponsorship of
Defendants’ inferior Cloud Chair, all in violation of the Michigan Consumer Protection
Act, Mich. Comp. Laws § 445.903.
83. Said unauthorized acts have occurred in Michigan, have caused, and
unless enjoined by this Court, will continue to cause, serious and irreparable damage, in
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an amount yet to be determined, for which Herman Miller has no adequate remedy at
law.
84. Defendants’ above actions were, and are, willful, fraudulent, and
malicious. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
COUNT VI
Violation of Michigan Common Law of Unfair Competition
85. As for the sixth ground for relief, Herman Miller hereby alleges unfair
competition in violation of Michigan common law. Herman Miller repeats and realleges
the allegations of paragraphs 1 through 84, as though fully set forth herein.
86. As a result of its actions complained of herein, Defendants have caused
confusion, or are likely to cause confusion or mistake, or to deceive members of the
consuming public and the trade. Defendants have misappropriated valuable property
rights of Herman Miller and are trading on the goodwill symbolized by the AERON
Trade Dress. Said acts, which are willful, constitute unfair competition in violation of the
common law of the State of Michigan.
87. Said unauthorized acts have occurred in Michigan, have caused, and
unless restrained by this Court, will continue to cause serious and irreparable damage
in an amount yet to be determined, for which Herman Miller has no adequate remedy at
law.
88. Defendants’ above actions were, and are, willful, fraudulent, and
malicious. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
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punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
COUNT VII
Infringement of U.S. Patent No. 6,386,634
89. As the seventh ground for relief, Herman Miller hereby alleges patent
infringement in violation of the laws of the United States relating to patents, Title 35 of
the United States Code. Herman Miller repeats and realleges the allegations of
paragraphs 1 through 88, as though fully set forth herein
90. Herman Miller is the owner of the �634 patent, which duly and legally
issued on May 14, 2002.
91. Defendants have infringed, and are now directly infringing, one or more
claims of the �634 patent within this District and elsewhere within the United States
through their manufacture, importation, use, offer for sale, and/or sale of the Cloud
Chair.
92. On information and belief, Defendants have not only directly infringed the
�634 patent, but also induced others to infringe and/or contributed to the infringement
of at least one claim of the �634 patent in violation of 35 U.S.C. § 271.
93. On further information and belief, Defendants intentionally took steps to
induce and/or contribute to the infringement of the �634 patent by sales
representatives, customers, and other users of the Cloud Chair, with knowledge or
willful blindness of that infringement by others, including such steps as: arranging or
contracting for the manufacture, assembly, and/or distribution of the Cloud Chair for
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infringing sales and/or use and marketing and promoting the Cloud Chair in this State
and in this District.
94. On information and belief, Defendants knew that the Cloud Chair,
including the linkage assembly for tilting the chair, was especially made or adapted for
use in infringing the �634 patent.
95. On information and belief, the Cloud Chair, including the linkage
assembly, is not capable of a substantial use that does not infringe the �634 patent.
96. On information and belief, Defendants have worked in conjunction with
each other and/or their sales representatives, suppliers, and distributors to manufacture,
offer to sell, sell, import, and/or distribute the infringing Cloud Chair.
97. Defendants will continue to infringe the �634 patent unless enjoined by
this Court.
98. On information and belief, at the time Defendants first engaged in
infringement of the �634 patent, Defendants had actual or constructive knowledge of
the patent. As a result, Defendants’ infringement of the �634 patent has been and
continues to be willful and wanton.
99. Herman Miller has been irreparably damaged, including in this District, in
an amount yet to be determined, by Defendants’ acts of infringement and will continue
to be damaged by such acts in the future unless and until enjoined by this Court.
100. Given Defendants’ willful, fraudulent, and malicious conduct, Plaintiff, is
entitled to an award of exemplary, enhanced, or punitive damages in an amount
appropriate to punish Defendants and deter others from engaging in similar misconduct.
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COUNT VIII
Infringement of U.S. Patent No. 6,059,368
101. As the eighth ground for relief, Herman Miller hereby alleges patent
infringement in violation of the laws of the United States relating to patents, Title 35 of
the United States Code. Herman Miller repeats and realleges the allegations of
paragraphs 1 through 100, as though fully set forth herein.
102. Herman Miller is the owner of the �368 patent, which duly and legally
issued on May 9, 2000.
103. Defendants have infringed, and are now directly infringing, one or more
claims of the �368 patent within this District and elsewhere within the United States
through their manufacture, importation, use, offer for sale, and/or sale of the Cloud
Chair.
104. On information and belief, Defendants have not only directly infringed the
�368 patent, but also induced others to infringe and/or contributed to the infringement
of at least one claim of the �368 patent in violation of 35 U.S.C. § 271.
105. On further information and belief, Defendants intentionally took steps to
induce and/or contribute to the infringement of the �368 patent by sales
representatives, customers, and other users of the Cloud Chair, with knowledge or
willful blindness of that infringement by others, including such steps as: arranging or
contracting for the manufacture, assembly, and/or distribution of the Cloud Chair for
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infringing sales and/or use and marketing and promoting the Cloud Chair in this State
and in this District.
106. On information and belief, Defendants knew that the Cloud Chair,
including the seat portion, was especially made or adapted for use in infringing the
�368 patent.
107. On information and belief, the Cloud Chair, including the seat portion, is
not capable of a substantial use that does not infringe the �368 patent.
108. On information and belief, Defendants have worked in conjunction with
each other and/or their sales representatives, suppliers, and distributors to manufacture,
offer to sell, sell, import, and/or distribute the infringing Cloud Chair.
109. Defendants will continue to infringe the �368 patent unless enjoined by
this Court.
110. On information and belief, at the time Defendants first engaged in
infringement of the �368 patent, Defendants had actual or constructive knowledge of
the patent. As a result, Defendants’ infringement of the �368 patent has been and
continues to be willful and wanton.
111. Herman Miller has been irreparably damaged, including in this District, in
an amount yet to be determined, by Defendants’ acts of infringement and will continue
to be damaged by such acts in the future unless and until enjoined by this Court.
112. Given Defendants’ willful, fraudulent, and malicious conduct, Plaintiff is
entitled to an award of exemplary, enhanced, or punitive damages in an amount
appropriate to punish Defendants and deter others from engaging in similar misconduct.
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COUNT IX
Infringement of U.S. Patent No. 6,035,901
113. As the ninth ground for relief, Herman Miller hereby alleges patent
infringement in violation of the laws of the United States relating to patents, Title 35 of
the United States Code. Herman Miller repeats and realleges the allegations of
paragraphs 1 through 112, as though fully set forth herein.
114. Herman Miller is the owner of the �901 patent, which duly and legally
issued on March 14, 2000.
115. Defendants have infringed, and are now directly infringing, one or more
claims of the �901 patent within this District and elsewhere within the United States
through their manufacture, importation, use, offer for sale, and/or sale of the Cloud
Chair.
116. On information and belief, Defendants have not only directly infringed the
�901 patent, but also induced others to infringe and/or contributed to the infringement
of at least one claim of the �901 patent in violation of 35 U.S.C. § 271.
117. On further information and belief, Defendants intentionally took steps to
induce and/or contribute to the infringement of the �901 patent by sales
representatives, customers, and other users of the Cloud Chair, with knowledge or
willful blindness of that infringement by others, including such steps as: arranging or
contracting for the manufacture, assembly, and/or distribution of the Cloud Chair for
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infringing sales and/or use and marketing and promoting the Cloud Chair in this State
and in this District.
118. On information and belief, Defendants knew that the Cloud Chair,
including the woven fabric membrane, was especially made or adapted for use in
infringing the �901 patent.
119. On information and belief, the Cloud Chair, including the woven fabric, is
not capable of a substantial use that does not infringe the �901 patent.
120. On information and belief, Defendants have worked in conjunction with
each other and/or their sales representatives, suppliers, and distributors to manufacture,
offer to sell, sell, import, and/or distribute the infringing Cloud Chair.
121. Defendants will continue to infringe the �901 patent unless enjoined by
this Court.
122. On information and belief, at the time Defendants first engaged in
infringement of the �901 patent, Defendants had actual or constructive knowledge of
the patent. As a result, Defendants’ infringement of the �901 patent has been and
continues to be willful and wanton.
123. Herman Miller has been irreparably damaged, including in this District, in
an amount yet to be determined, by Defendants’ acts of infringement and will continue
to be damaged by such acts in the future unless and until enjoined by this Court.
124. Given Defendants’ willful, fraudulent, and malicious conduct, Plaintiff is
entitled to an award of exemplary, enhanced, or punitive damages in an amount
appropriate to punish Defendants and deter others from engaging in similar misconduct.
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COUNT X
Infringement of U.S. Patent No. 5,772,282
125. As the tenth ground for relief, Herman Miller hereby alleges patent
infringement in violation of the laws of the United States relating to patents, Title 35 of
the United States Code. Herman Miller repeats and realleges the allegations of
paragraphs 1 through 124, as though fully set forth herein.
126. Herman Miller is the owner of the �282 patent, which duly and legally
issued on June 30, 1998.
127. Defendants have infringed, and are now directly infringing one or more
claims of the �282 patent within this District and elsewhere within the United States
through their manufacture, importation, use, offer for sale, and/or sale of the Cloud
Chair.
128. On information and belief, Defendants have not only directly infringed the
�282 patent, but also induced others to infringe and/or contributed to the infringement
of at least one claim of the �282 patent in violation of 35 U.S.C. § 271.
129. On further information and belief, Defendants intentionally took steps to
induce and/or contribute to the infringement of the �282 patent by sales
representatives, customers, and other users of the Cloud Chair, with knowledge or
willful blindness of that infringement by others, including such steps as: arranging or
contracting for the manufacture, assembly, and/or distribution of the Cloud Chair for
27
infringing sales and/or use and marketing and promoting the Cloud Chair in this State
and in this District.
130. On information and belief, Defendants knew that the Cloud Chair,
including the tilting mechanism for the chair. was especially made or adapted for use in
infringing the �282 patent.
131. On information and belief, the Cloud Chair, including the tilting
mechanism, is not capable of a substantial use that does not infringe the �282 patent.
132. On information and belief, Defendants have worked in conjunction with
each other and/or their sales representatives, suppliers, and distributors to manufacture,
offer to sell, sell, import, and/or distribute the infringing Cloud Chair.
133. Defendants will continue to infringe the �282 patent unless enjoined by
this Court.
134. On information and belief, at the time Defendants first engaged in
infringement of the �282 patent, Defendants had actual or constructive knowledge of
the patent. As a result, Defendants’ infringement of the �282 patent has been and
continues to be willful and wanton.
135. Herman Miller has been irreparably damaged, including in this District, in
an amount yet to be determined, by Defendants’ acts of infringement and will continue
to be damaged by such acts in the future unless and until enjoined by this Court.
136. Given Defendants’ willful, fraudulent, and malicious conduct, Plaintiff is
entitled to an award of exemplary, enhanced, or punitive damages in an amount
appropriate to punish Defendants and deter others from engaging in similar misconduct.
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COUNT XI
Civil Conspiracy
137. As the eleventh ground for relief, Herman Miller hereby alleges civil
conspiracy in violation of the laws of the State of Michigan. Herman Miller repeats and
realleges the allegations of paragraphs 1 through 136, as though fully set forth herein.
138. As set forth above, Defendants are members of a combination of two or
more persons.
139. The object of the combination was and continues to accomplish an
unlawful purpose by unlawful means, including the tortious taking, use and
diminishment of Herman Miller’s intellectual property and other rights through the
unlawful means described above.
140. Defendants had a meeting of the minds and have acted in concert on the
object or course of action, including the participation in the conspiracy.
141. One or more of the members of the conspiracy committed an unlawful,
overt act(s) and continue to commit those acts to further the object or course of action of
the conspiracy.
142. As a direct and proximate result of the Defendants’ wrongful conduct,
Plaintiffs have suffered and will continue to suffer incalculable financial loss, loss of
goodwill, loss of customers, and other damages.
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143. Plaintiff has suffered irreparable harm as a result of Defendants’ actions
as described herein, and Defendants’ actions have been done intentionally and with
conscious disregard for the law.
144. Plaintiff, therefore, is entitled to an award of exemplary, enhanced, or
punitive damages in an amount appropriate to punish Defendants and deter others from
engaging in similar misconduct.
WHEREFORE, Herman Miller prays that this Court enter the following judgment and
order:
A. That Defendants have violated Sections 32(a), 43(a), and 43(c) of the
Lanham Act, have violated the Michigan Consumer Protection Action, Section 445.903,
and have committed acts of unfair competition in violation of the common law of
Michigan.
B. That Defendants have infringed U.S. Patent Nos. 6,386,634, 6,059,368,
6,035,901, and 5,772,282;
C. That Defendants have engaged in an unlawful civil conspiracy in violation
of the common law of Michigan;
D. The Defendants their officers, directors, agents, servants, employees,
successors, distributors, assigns and attorneys, and all those controlled by or in active
concert or participation with them, be preliminarily and permanently enjoined and
restrained from:
1. Further infringement of U.S. Trademark Registration No. 2,754,826;
2. Further infringement of U.S. Patent Nos. 6,386,634, 6,059,368, 6,035,901,
and 5,772,282;
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3. Manufacturing, importing in to the United States, distributing, advertising,
promoting, offering for sale, and selling the Cloud Chair or any other
product, design or configuration, that gives rise to a likelihood of
confusion, mistake, or deception with respect to the AERON Trade Dress
or in any way dilutes Herman Miller’s famous AERON Trade Dress;
4. Trading on the goodwill associated with the AERON Trade Dress and
passing off their goods as those of Herman Miller;
5. Injuring Herman Miller’s business reputation and goodwill associated with
the AERON Trade Dress and otherwise unfairly competing with Herman
Miller in any manner whatsoever;
6. Engaging in deceptive trade practices with regard to importing,
distributing, advertising, marketing, promoting, offering for sale, and selling
the Cloud Chair, the AERON Chair, or other Herman Miller products;
7. Making any false or misleading descriptions or misrepresentations of fact
relating to the Cloud Chair, AERON chair, or other Herman Miller
products; and
8. Doing any other act or thing likely to cause or induce the mistaken belief
that Defendants are in any way affiliated, associated with, or sponsored by
Herman Miller.
E. That, pursuant to 15 U.S.C. § 1118, Defendants be ordered to deliver up
to Herman Miller or destroy all products, labels, packages, brochures, wrappers,
advertisements, promotions, displays, catalogs, Internet web pages, literature, and all
other matter, whether in paper or electronic form, in the custody or under the control of
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Defendants that constitute, bear, or depict the Cloud Chair, or any other unauthorized
use of the AERON Trade Dress, or any confusingly similar variation thereof;
F. That, pursuant to 15 U.S.C. §§ 1116(d) and 1118, all counterfeits of
Herman Miller’s AERON Trade Dress, the means of making such goods, including, all
dies, molds, and equipment, and records documenting the manufacture, sale, or receipt
of things involved in such counterfeit violation, including paper and electronic
documents, be seized and subject to destruction;
G. That, pursuant to 15 U.S.C. §§ 1116, Defendants be directed to file with
the Court and serve on Herman Miller within thirty (30) days after issuance of an
injunction, a report in writing and under oath setting forth in detail the manner and form
in which Defendants have complied with the injunction;
H. That, pursuant to 15 U.S.C. §1117 Herman Miller be awarded monetary
relief in an amount fixed by the Court in its discretion as just, including:
1. All profits received by Defendants from sales and revenues of any kind
made as a result of acts of trade dress infringement, unfair competition,
and dilution, said amount to be trebled due to Defendants’ willful actions;
2. All damages sustained by Herman Miller as a result of Defendants’
actions, said damages to be trebled due to Defendants’ willful actions; and
3. If Herman Miller so elects, statutory damages of up to $1,000,000 per
counterfeit mark, per type of goods sold, offered for sale, or distributed.
I. That Defendants be ordered to compensate Herman Miller for the
advertising and other expenditures necessary to dispel any public confusion caused by
Defendants’ unlawful acts complained of herein;
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J. That, pursuant to 35 U.S.C. § 284, Defendants be ordered by this Court to
account for and pay to Herman Miller damages adequate to compensate Herman Miller
for the infringement of United States Patent Nos. 6,386,634, 6,059,368, 6,035,901, and
5,772,282, said damages to be increased up to three times the amount found or
assessed in view of the willful nature of the continued infringement of said patents;
K. That, because of the exceptional nature of this case resulting from
Defendants’ deliberate and willful actions, this Court award to Herman Miller all
reasonable attorneys' fees, costs, and disbursements incurred by it as a result of this
action, pursuant to 35 U.S.C. § 285 and 15 U.S.C. § 1117;
L. That, pursuant to Michigan common law, Defendants be ordered by this
Court to pay Herman Miller damages to compensate Herman Miller for the unlawful acts
committed as a result of Defendants’ conspiring to infringe Herman Miller’s patent
rights, trademark rights, and other intellectual property rights in the AERON chair; and
M. That Herman Miller be awarded any such other and further relief as this
Court deems just and fair.
DEMAND FOR JURY TRIAL
Pursuant to Fed. R. Civ. P. 38(b), Herman Miller demands trial by jury in this
action on all issues so triable.
Dated: April 15, 2013 Respectfully submitted,
By: __/James K. Cleland/_______ James K. Cleland BRINKS HOFER GILSON & LIONE 524 South Main Street, Suite 200 Ann Arbor, Michigan 48104 Tel. 734.302.6000
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Fax 734.994.6331
Laura Beth Miller Katherine L. Tabor BRINKS HOFER GILSON & LIONE 455 N. Cityfront Plaza Drive NBC Tower, Suite 3600 Chicago, Illinois Tel. 312.321.4200 Fax 312.321.4299
Counsel for Plaintiff Herman Miller, Inc.