master cutlery v. panther - am complaint

Case 2:12-cv-04493-JLL-MAH Document 28 Filed 02/27/13 of 20 PageID: 285

RUBIN, KAPLAN & ASSOCIATES A Professional Corporation 200 Centennial Avenue, Suite 110 Piscataway, New Jersey 08854 (732) 463-7511 Attorneys for Plaintiff, Master Cutlery, Inc.

UNITED STATES DISTRICT COURT DISTRICT OF NEW JERSEY

MASTER CUTLERY, INC.,

Plaintif4

v.

PANTHER TRADING CO., INC., ABC COMPANIES 1-30,

(said companies being fictitious sellers, buyers, marketers and/or manufacturers infringing products obtained from Panther,

Defendants.

Civil Action No.: 12-4493 (JLL)

AMENDED COMPLAINT AND DEMAND FOR JURY TRIAL

AMENDED COMPLAINT AND DEMAND FOR JURY TRIAL

Plaintiff Master Cutlery, Inc. (hereinafter "Master Cutlery'~. by and through its

counsel, Richard Kaplan, Esq., of Rubin, Kaplan & Associates, complain against Panther

Trading Co., Inc. (hereinafter "Panther") and ABC Companies (1-30), said companied

being fictitious sellers and/or buyers and/or marketers and/or manufacturers, of infringing

products obtained from Panther, and alleges upon knowledge as to itself and otherwise

upon information and belief as follows:


NATURE OF THE ACTION

1. This is an action for (1) Patent Infringement under 35 U.S. C. § 271(a), (2)

Induced Patent Infringement under 35 U.S.C. § 271(b), (3) Willful

Copyright Infringement under 17 U.S.C. § 101, et ~-, ( 4) Willful

Trademark Infringement under the Lanham Act, (5) Unfair Competition

under 15 U.S.C. § 1125 (a), (6) Unfair Competition under New Jersey

Common Law, (7) Tortious Interference with Prospective Economic

Advantage under New Jersey Common Law, and (8) misappropriation of

intellectual property under New Jersey Common Law.

JURISDICTION AND VENUE

2. This Court has subject matter jurisdiction over all causes of actions set

forth herein based upon 15 U.S.C. § 1121,28 U.S.C. §§ 1331, l338(a) and

1338(b), and pursuant to the supplemental jurisdiction of this Court for all

non-federal causes of action under28 U.S.C. § 1367.

3. This Court has personal jurisdiction over Defendants by virtue of, inter

alia, (a) Defendant Panther Trading Co., Inc.'s having numerous business

relations within the State of New Jersey and conducting regular and

continuous business transactions therewith, giving it the requisite

minimum contacts with the state required to be subject to jurisdiction

therein; (b) Defendant Panther Trading Co., Inc. having a place of

business at 2652 West Patapsco Avenue, Maryland 21230; (c) commission

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of tortious acts by all Defendants within the State of New Jersey and

within this Judicial District; and (d) regular and continuous transaction of

business, including the tortious acts complained of herein, within the State

ofNew Jersey and within this Judicial District.

4. Venue is proper in this judicial district and division pursuant to 28 U.S.C.

§ 139l(b) and (c).

THE PARTIES TO THE COMPLAINT

5. Plaintiff Master Cutlery, Inc. ("Master Cutlery") is a New Jersey

Corporation with its principal place of business at 700 Penhom Avenue,

Secaucus, New Jersey 07094.

6. Defendant Panther Trading Co., Inc. ("Panther") is believed to be a

Maryland Corporation, having a principal place of business at 2652 West

Patapsco Avenue, Baltimore, Maryland 21230.

7. Defendants ABC Companies are fictitious persons or entities whose

present identity and address is unknown, who have also violated Plaintiff's

rights as set forth herein, or who assisted, conspired, or otherwise

cooperated with the other Defendants in the acts complained of herein.

BACKGROUND

8. On December 2, 2003, Victor Lee, President of Master Cutlery, Inc., filed

a patent application with the United State Patent and Trademark Office

("USPTO"), entitled "Knife," which was granted United States

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Application Serial No. 29/187/429 (the "429 application"). The claim was

successfully prosecuted, and on September 27, 2005 in United States

Patent No. US D 510, 009S (the "Patent") was issued.

9. Master Cutlery is the exclusive owner of the Patent and has the right to

sue and recover damages for infringement thereof.

10. In or about early 2003, through its market brand, Master Cutlery, began

selling commercial embodiments of the claimed inventions in the Patent

while such patents were pending, under the product brand name,

"Cyclone." Master Cutlery properly marks all its cutlery products in

accordance with 35 U.S.C. § 287.

11. Defendant Panther is a manufacturer and/ or distributor of cutlery products.

12. Master Cutlery learned in 2011 that Panther had been offering for sale and

selling such a nearly identical product to Master Cutlery's three (3) blade

folding knife under the name "Skull Pirate 3 Blade Folding Knife," which

it has introduced to the market.

FIRST CAUSE OF ACTION

DIRECT AND WILLFULL PATENT INFRINGEMENT UNDER 35 U.S.C. 271(a)

13. Paragraphs 1 through 12 are realleged and incorporated herein by

reference.

14. The claims of the Patent are presumed valid pursuant to 35 U.S.C. § 282,

and are valid.

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15. Panther, in violation of 35 U.S.C. § 271 (a), has infringed and is currently

infringing, contributorily infringing and/or inducing a third party to

infringe, at least one or more of the claims of the Patent, either literally or

under the Doctrine of Equivalents, by causing to be made, using, offering

to sell, selling and/or importing into the United States, without license or

authority, within this Judicial District and elsewhere, the Infringing

Product, which is covered by the Patent, and/or contributing towards

and/or inducing a third party to do the same.

16. In particular, each of the Infringing Products embodies a three blade

folding knife circular in design wherein each of the three blades operate

independently with any or all of the blades in an open or closed. position as

recited by the Patent.

17. The Infringing Products further embody each of the remaining elements

recited by clalrus of the Patent.

18. Panther Trading purchased products from Master Cutlery until2005.

19. Panther Trading had purchased the patented Cyclone (item #VL-03) on

numerous occasions, and knew it was a patented product so its

infringement was willful.

20. Panther intentionally caused to be made, used, offered to sell, sold and/or

imported into the United States the Infringing Products, with actual

knowledge, and/or knowledge imputed to it, that such products embody at

least one of the clairus of the Patent.

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21. Panther has infringed, and upon infonnation and belief, will continue to

infringe, the claims of the Patent by the use, manufacture, offer for sale,

. sale, and/or importation of the Infringing Products.

22. As a result of Panther's actions, Master Cutlery has suffered injury,

including irreparable injury, and damages, including lost profits,

reasonable royalties, and other damages as set forth herein.

SECOND CAUSE OF ACTION

DIRECT AND WILLFUL COPYRIGHT INFRINGEMENT UNDER 17 U.S.C. § 101. et seq.

23. Paragraph 1 through 22 are realleged and incorporated herein by

reference.

24. Plaintiff holds several copyrights, among them VAl-818-540, VAl-257-

089, VAl-293-258, VA1-771-004, VAl-382-077, VA1-858-203, and

V Al-818-424 for the following:

a. Spider Folding Knife (MT-044) (V Al-257-089)

b. Scorpion Folding Knife (MT-043X) (V Al-293-258)

c. Electric Flash Knife Item (VL-15) (V A1-771-004)

d. Spider Attack Knife (TF-553) (V Al-818-540)

e. Chopper Flame Folder (MT-158Bk) (V A1-382-077)

f. Camo Scorpion (TF-648) (V A1-858-203)

g. Dragon with Flame (fF-707) (VAl-818-424)

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25. Master Cutlery has expended significant resources promoting its

ownership of its copyrights. In view of the associated niche market, most

persons and businesses in the cutlery/specialty knives industry are aware

of Master Cutlery's technology and its rights under the copyrights.

26. Defendant Panther has willfully infringed the copyrights of Master Cutlery

by copying copyrighted designs belonging to Master Cutlery, specifically:

a. Spider Folding Knife (MT-044) (11 Al-257-089)

b. Scorpion Folding Knife (MT -043X) (11 Al-293-258)

c. Electric Flash Knife Item (VL-15) (11 Al-771-004)

d. Spider Attack Knife (TF-553) (11 Al-818-540)

e. Chopper Flame Folder (MT-158Bk) (11 Al-382-077)

f. Camo Scorpion (TF-648) (11 Al-858-203)

g. Dragon with Flame (TF-707) (11 Al-818-424)




least one of the claims of the copyright.

28. Defendant Panther Trading had purchased these items from plaintiff and

knew they were copyrighted products and so Panther's infringement was

willful.

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TimiD CAUSE OF ACTION

UNFAIR COMPETITION WIDER 15 U.S.C. § 1125(a)


reference.

31. Master Cutlery has expended significant resources promoting its

ownership of the Patent, and the exclusive rights to the technology

covered by the claims therein. In view of the associated niche market,

most persons and businesses in the cutlery/specialty knives industry are

aware of Master Cutlery's technology and its rights under the patent.

32. The Defendants collective actions regarding the Infringing Products, as

described herein, are likely to have misled, and will continue to mislead

many persons purchasing specialty knives to believe the Defendants have

received permission, license, or other consent from Master Cutlery to

make, use, sell, offer for sale, or import into the United States, the

Infringing Products.

33. The Defendant's use of the Infringing Products, through sale, offering for

sale, and the like, is likely to deceive relevant consumers as to the

Defendant's affiliation with Master Cutlery or as to a sponsorship or an

approval of the Infringing Products by Master Cutlery.

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34. The Defendants will, if not preliminarily and permanently enjoined by the

Court, continue its acts of unfair competition as set forth in the Lanham

Act, thereby deceiving the public, trading on the exclusive rights granted

to Master Cutlery in the form of the patent, and causing Master Cutlery

immediate and irreparable harm, damage and injury.

3 5. As a result of the Defendants' collective actions, Master Cutlery has

suffered injury, including irreparable injury, and damages, including lost

profits, reasonable royalties, and other damages as set forth herein.

FOURTH CAUSE OF ACTION

DIRECT AND WILLFUL TRAPEMARK VIOLATIONS

36. Paragraphs 1 through 35 are real1eged an incorporated herein by reference.

37. Plaintiff Master Cutlery is the holder of the "Sheriff' trademark which

was filed on February 8, 2011 and registered on February 7, 2012, serial

number 85236751, and Panther has infringed this trademark with the

following:

1. K-1 OS 6" Black Sheriff Two-Toned Tactical Action Assisted Knife

2. K-242 8" Sheriff Tactical Rescue Black Folding Knife-Scimitar

Blade

3. K-253 6" Sheriff Handcuffs Action Assisted Knife

4. K-254 6" Sheriff Handcuffs Action Assisted Knife- Gray

5. K-80 9" Sheriff Tactical Rescue Folding Knife (112 Lb. of Power)

6. KX-100 Karambit Rescue Action Assisted Knife- Sheriff Black

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7. P-527-B-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife

Black Sheriff

8. P-527-GY-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife

-Grey Sheriff

9. P-528-SH-BK 7.5" Action Assisted Rescue Knives- Sheriff

10. P-528-SH-GY 7.5" Action Assisted Rescue Knives - Sheriff

(Grey)

11. P-529-SH-BK 9" Black Sheriff Tactical Action Assisted Folding

Knife

12. P-529-SH-GY 9" Grey Sheriff Tactical Action Assisted Folding

Knife


Knife "New"


Knife "New''


Knife


Knife

3 8. Master Cutlery has expended significant resources promoting its

ownership of the trademarks. In view of the associated niche market, most

persons and businesses in the cutlery/specialty knives industry are aware

of Master Cutlery's technology and its rights under the trademark.

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least one of the claims of the trademark.

40. Such infringing use of the plaintiffs trademarks was willful.




FIFTH CAUSE OF ACTION

UNFAIR COMPETITION UNDER NEW JERSEY COMMON LAW


reference.

43. The aforementioned collective acts of the Defendants constitute unfair

competition and unfair business practices contrary to the common law of

New Jersey.


Court, continue its acts of unfair competition as defined by the common

law of New Jersey, thereby deceiving the public, trading on the exclusive

rights granted to Master Cutlery in the form of the patent, and causing

Master Cutlery immediate and irreparable harm, damage and injury.

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45. As a result of the Defendants' collective actions, Master Cutlery has

suffered injury, including irreparable injury, aud damages, including lost

profits, reasonable royalties, aud other damages as set forth herein.

SIXTH CAUSE OF ACTION

TORTIOUS INTERFERENCE WITH PROSPECTIVE ECONOMIC

ADVANJAGE

46. Paragraphs 1 through 45 are realleged aud incorporated herein by

reference.

4 7. The patent grants Master Cutlery the right to exclude others from making,

using, selling, offering for sale, or selling the claimed invention

throughout the United States or importing the claimed invention into the

United States pursuant to 35 U.S. C. § 154.

48. Master Cutlery enjoys a protectable right in the form of a United States

patent, copyrights aud trademarks aud the claimed invention recited by the

claims of the patent, copyrights aud trademarks which provides Master

Cutlery reasonable expectation of au economic advantage to the entirety of

a marketplace covered by such claims.

49. Any prospective consumers seeking to purchase a product or device

embodying the claims of the patent would need permission, consent or

license from Master Cutlery to acquire such a product; aud accordingly,

Master Cutlery has a reasonable expectation of economic advantage from

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any person seeking to acquire a product embodying the claims of the

patent.

50. The Defendants, as a result of their collective actions set forth herein, have

interfered with Master Cutlery's protectable right in the claimed invention

and more specifically, they have disrupted Master Cutlery's enjoyment of

its exclusive rights under the patent.

51. The Defendants' collective actions were committed with malice,

willfulness and the intent to interfere with Master Cutlery's exclusive

rights under the patent, without reasonable and lawful justification or

excuse.

52. But for the Defendants' collective actions, Master Cutlery had more than a

reasonable expectation, in view of its monopolistic rights under the patent,

that every prospective consumer who showed interest in acquiring

Infringing Products from the Defendants would have acquired Master

Cutlery's patented product(s) instead.

53. The Defendants' collective actions constitute a statutory violation under

35 U.S. C.§ 271, the Lanham Act and 17 U.S. C.§ 101, et~. and as such,

transgress generally accepted standards of common morality and law.


Court, continue to tortiously interfere with Master Cutlery's prospective

economic advantage as granted by the patent, copyrights and trademarks

and causing Master Cutlery inunediate and irreparable harm, damage and

injury.

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55. Defendants have engaged in a pattern of infringement of other products

created with notable unique design features and offered for purchase by

plaintiff by copy without consent, the following:

a) a belt knife

b) a barber knife, with multiple color variations

c) butterfly shaped throwing knife

d) "rescue action" knife- black

e) "rescue action" knife - red

f) "rescue action" knife- orange

g) "action assisted" knife - red

h) "skull and snake" throwing knife.

i) spider folding knife (MT-044) (V Al-257-089)

j) scorpion folding knife (MT-043X) (V Al-293-258)

k) electric flash knife Item (VL-15) (V Al-771-004)

I) spider attack knife (fF-553)(V Al-818-540)

m) K-105 6" Black Sheriff Two-Toned Tactical Action Assisted Knife

n) K-242 8" Sheriff Tactical Rescue Black Folding Knife-Scimitar

Blade

o) K-253 6" Sheriff Handcuffs Action Assisted Knife

p) K-254 6" Sheriff Handcuffs Action Assisted Knife- Gray

q) K-80 9" Sheriff Tactical Rescue Folding Knife (1/2 Lb. of Power)

r) KX-1 00 Karambit Rescue Action Assisted Knife- Sheriff Black

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s) P-527-B-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife

Black Sheriff

t) P-527-GY-SH 8.5" Tactical Rescue "Bold" Action Assisted Knife

- Grey Sheriff

u) P-528-SH-BK 7.5" Action Assisted Rescue Knives- Sheriff

v) P-528-SH-GY 7.5" Action Assisted Rescue Knives - Sheriff

(Grey)

w) P-529-SH-BK 9" Black Sheriff Tactical Action Assisted Folding

Knife

x) P-529-SH-GY 9" Grey Sheriff Tactical Action Assisted Folding

Knife

y) P-530-SH-BK T' Black Sheriff Tactical Action Assisted Folding

Knife "New"

z) P-530-SH-GY 7" Grey Sheriff Tactical Action Assisted Folding

Knife "New''

aa) P-569-SH-BK 9" Black Sheriff Tactical Action Assisted Folding

Knife

bb) P-569-SH-GY 9" Grey Sheriff Tactical Action Assisted Folding

Knife

cc) Chopper Flame Folder (MT-158Bk) (VA1-382-077)

dd) Camo Scorpion (TF-648) (V A1-858-203)

ee) Dragon with Flame (TF-707) (V Al-818-424)

ff) Battle Hawk (VL-0 1)

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gg) Jaws Folder (FC-1)




SEVENTH CAUSE OF ACTION

MISAPPROPRIATION OF INTELLECTUAL PROPERTY


reference.

58. The aforementioned collective acts of the Defendants constitute

misappropriation of intellectual property under New Jersey Common Law.

59. The Defendants will, if not enjoined by the Court, coutinue to benefit by

the information gained through misappropriation of corporate proprietary

materials, and causing Master Cutlery immediate and irreparable harm,

damage and injury.




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PRAYER FOR RELIEF

WHEREFORE, Plaintiff demands judgment against each of the defendants as follows:

A. a permanent injunction restraining Defendants, their respective officers,

agents, servants, employees, attorneys, and those in active concert or

participation with them, or any of them who receive actual notice of the

order by personal service or otherwise, from:

l. making, using, selling, offering for sale, or importing into the United

States, the Infringing Products; and

2. assisting or inducing others to make, use, sell, offer for sale, or import into

the United States, the Infringing Products;

B. an award of damages for Defendants' willful acts of liability under 35

U.S. C. § 271, in accordance 35 U.S.C. § 284, and in particniar, an award

of damages adequate to compensate for the willful infringement but in no

event less than a reasonable royalty for the use made of the Infringing

Products, together with interest and costs as fixed by the Court;

C. an award of increased damages under 35 U.S.C. § 284, including three

times the amount found or assessed in paragraph (B) above;

D. an award of damages inclusive of any actual damages suffered by Plaintiff

as a result of Defendants' liability stated hereinabove, including arising

out of Defendants' liability arising out of Counts I- VII, and other Counts

that may be added at a later date once additional information is obtained;

E. an award of damages from Defendants for their liability under § 43(a) of

the Lanham Act, including any profits made by Defendants in connection

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with its unlawful activity, any damages sustained by Plaintiff as a result of

Defendants' unlawful activity, and any costs incurred with pursuing this

Action, including Court costs, attorney's fees, and additional costs related

thereto, pursuant to 15 U.S. C. § lll7(a);

F. an award of damages for Defendants' acts of liability under 17 U.S.C. §

504, in accordance 17 U.S.C. § 504, and in particular, statutory damages

of $150,000 per infringement of willful violation, or an award of damages

adequate to compensate for the infringement but in no event less than a

reasonable royalty for the use made of the Infringing Products, together

with interest and costs as fixed by the Court;

G. an award of all damages incurred, directly or indirectly, as a result of

Defendants' unlawful acts set forth herein, said damages to be trebled at

the discretion of the Court pursuant to N.J.S.A. 56:4-2;

R a determination by the Court that Defendants' unlawful actions set forth

herein are exceptional, warranting an award of damages to Plaintiffs for all

reasonable attorney's fees incurred by Plaintiffs, pursuant to 35 U.S.C. §

285 and 15 U.S.C. § 1117(a); 17 U.S.C. § 101, et seq.

I. an award of prejudgment and post-judgment interest and costs of suit;

J. an award of punitive damages in an amount to be determined by the Court,

but not less than $1,000,000.00, for Defendants' deliberate and willful

acts;

K. an award of actual and compensatory damages in an amount not presently

known, but to be computed during the pendency of this action; and

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L. an award of any such other and further relief as this Court deems just and

equitable.

DEMAND FOR JURY

Plaintiff, Master Cutlery, hereby demands trial by jury as to all issues in the

Complaint.

Date: February 21, 2013

Respectfully submitted,

By:/s/ Evelyn A. Donegan EAD 6720 EVELYN A. DONEGAN, ESQ. RUBIN, KAPLAN & ASSOCIATES ATTORNEYSFORPLAINTITF 200 Centennial A venue, Suite 110 Piscataway, New Jersey 08854 732-463-7511 [email protected] (Email)

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CERTIFICATION PURSUANT TO LOCAL CML RULE 11.2

The undersigned hereby certifies, pursuant to Local Civil Rule 11.2, that with

respect to the matter in controversy herein, neither plaintiff nor plaintiff's attorney is

aware of any other action pending in any court, or any pending arbitration or

administrative proceeding, to which this matter is subject.

Date: February 21, 2013

Respectfully submitted,

By:/s/ Evelyn A. Donegan EAD 6720 EVELYN A. DONEGAN, ESQ. RUBIN, KAPLAN & ASSOCIATES ATTORNEYS FOR PLAINTIFF 200 Centennial Avenue, Suite li 0 Piscataway, New Jersey 08854 732-463-7511 [email protected] (Email)

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master cutlery v. panther - am complaint

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