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Darren J. Quinn (149679)
LAW OFFICES OF DARREN J. QUINN
12702 Via Cortina, Suite 105
Del Mar, CA 92014
Tel: (858) 509-9401
Attorneys for Plaintiff Olaes Enterprises, Inc.
UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF CALIFORNIA
OLAES ENTERPRISES, INC., a
California Corporation,
Plaintiff,
v.
WALTZING T BEAR LLC, a
Connecticut Limited Liability Company
Defendant.
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CASE NO.
COMPLAINT FOR
DECLARATORY RELIEF
DEMAND FOR A JURY TRIAL
COMPLAINT FOR DECLARATORY RELIEF
'14CV1718 WVG BAS
Case 3:14-cv-01718-BAS-WVG Document 1 Filed 07/22/14 Page 1 of 9
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Plaintiff makes the following allegations on information and belief.
JURISDICTION AND VENUE
1. This is an action for declaratory relief (28 U.S.C. 2201) in relation to
a claim by defendant that plaintiff infringed defendants copyrights (17 U.S.C.
101 et seq.) and trademarks (15 U.S.C. 1125).
2. This court has jurisdiction of this action under 28 U.S.C.
1331(federal question), 1338 (original jurisdiction relating to copyrights and
trademarks), 15 U.S.C. 1121(trademarks) and the declaratory relief act, 28 U.S.C.
2201.
3. Venue is proper in this district under 28 U.S.C. 1391 because a
substantial part of the events or omissions giving rise to the claim occurred in this
district and because a substantial part of property that is the subject of the action is
situated in this district. Venue is also proper in this district under 28 U.S.C.
1400(a) as defendant or its agents may be found in this district.
THE PARTIES
4. Plaintiff OLAES ENTERPRISES, INC. dba ODM (ODM) is a
California corporation with its office at 13860 Stowe Drive, Poway, California
92064. Plaintiff is the owner of copyrighted graphic designs that are the subject of
this declaratory relief action. Plaintiff created in this district the graphic design
that defendant contends infringes defendants copyrights and trademarks. All or a
substantial part of plaintiffs t-shirts that defendant contends infringe defendants
copyrights and trademarks were situated in this district.
5. On information and belief, defendant WALTZING T BEAR LLC
(WTB) is a Connecticut limited liability company. On information and belief,
defendant WTB sells t-shirts or clothing apparel in this district.
COMPLAINT FOR DECLARATORY RELIEF
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FIRST CAUSE OF ACTION
(Declaratory Relief)
28 U.S.C. 2201
6. Plaintiff hereby incorporates by reference the allegations contained in
paragraphs 1 through 5 of the Complaint.
7. Plaintiff is one of the largest design houses in the world. Plaintiff has
created thousands of designs that contain a large amount of material wholly
original with plaintiff and are copyrightable subject matter under the laws of the
United States.
8. One of plaintiffs copyrighted designs is a two-dimensional drawing
of a pinstriped suit vest with a striped tie. Plaintiff placed this design on a t-shirt.
9. Plaintiffs pinstriped suit vest with a striped tie design on the front of
a t-shirt is ornamental and not used in a trademark manner.
10. Defendant WTB claims it is the owner of the fanciful design of a
necktie on a shirt (hereinafter the Design), and enjoys the exclusive right to use
the Design in the United States.
11. Defendant claims: The Design was registered with the United States
Patent and Trademark Office (USPTO) at Trademark Registration No. 2746427,
on the Principal Register in 2003. It is active and has been renewed in April of
2013 for an additional ten years. This same Registration was made Incontestable
in August 2008.
COMPLAINT FOR DECLARATORY RELIEF
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12. Defendant claims: Protectable copyright is also asserted in the
various specific iterations of the design.
13. Defendant sent plaintiff a cease and desist letter dated July 7, 2014
that provides, in part: I am writing to you today because it has come to our
attention that Walmart has sold a Gildan shirt (Boys Tee tie shirt -Style# AG l
5992-UPC#882932326577- RN#9068 l--P07541) with a necktie design imprinted
thereon, in which WTB owns the exclusive rights.
14. On information and belief, defendant licenses its necktie design on t-
shirts without exercising actual control over the nature and the quality of the
goods sold under defendants claimed trademark. For instance, defendants
www.ShirtTie.com website states, in part:
Corporate Use
Of course! Shirt Ties are a perfect solution for businesses, small
organizations, and retailers alike! After licensing our trademarked
design, you are free to use any company or distributor to
manufacture your very own Shirt Tie design! The possibilities are
endless!
(Emphasis added)
15. Persons that license defendants necktie design on a t-shirt are not
indicating defendant as the source of the t-shirts, but rather the licensee as the
source. Defendants www.ShirtTie.com website states, in part:
WHO USES SHIRT TIES?
COMPLAINT FOR DECLARATORY RELIEF
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Everyone! Shirt Ties are perfect for a gift, any casual occasion, event
or even a campaign. Here are just a few amazing uses for a fun and
attractive Shirt Tie:
EVENTS
Add some levity to the next big event or game. Can you imagine a
golf course or baseball stadium full of your companys Shirt Tie
design? Build brand recognition, teamwork and camaraderie while
having fun with your own Shirt Tie design.
PROMOTIONAL ITEMS
Although hats and coffee mugs are fine for logos, we have so many of
them. Design your own Shirt Tie with your logo in that tie! Your
customers will love wearing them and advertising your company for
you!
FUND RAISERS
Why not thank your generous donors or alumni with a Shirt Tie
sporting your organizations logo and tagline right on the tie. What
a great way to build awareness and grow your support base!
(Emphasis added)
16. Defendant is the owner of the now expired design patent Des.
369,013, issued April 23, 1996 (Design Patent) for the ornamental design for a
tee shirt, as shown and described. The Design Patent attached drawings of t-
shirts with a tie printed on the front.
17. With respect to expired patents, the Supreme Court has stated, inter
alia,
COMPLAINT FOR DECLARATORY RELIEF
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For almost 100 years it has been well established that in the case of an
expired patent, the federal patent laws do create a federal right to
copy and to use.
Bonito Boats v. Thunder Craft Boats, 489 U.S. 141, 165 (1989)
The right to copy, and to copy without attribution, once a copyright
has expired, like the right to make [an article whose patent has
expired]--including the right to make it in precisely the shape it
carried when patented--passes to the public. Sears, Roebuck & Co. v.
Stiffel Co., 376 U.S. 225, 230, 11 L. Ed. 2d 661, 84 S. Ct. 784, 1964
Dec. Commr Pat. 425 (1964); see also Kellogg Co. v. National
Biscuit Co., 305 U.S. 111, 121-122, 83 L. Ed. 73, 59 S. Ct. 109, 1939
Dec. Commr Pat. 850 (1938). In general, unless an intellectual
property right such as a patent or copyright protects an item, it will be
subject to copying. TrafFix Devices, Inc. v. Marketing Displays,
Inc., 532 U.S. 23, 29, 149 L. Ed. 2d 164, 121 S. Ct. 1255 (2001). The
rights of a patentee or copyright holder are part of a carefully
crafted bargain, Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 150-151, 103 L. Ed. 2d 118, 109 S. Ct. [***42] 971
(1989), under which, once the patent or copyright [*34] monopoly
has expired, the public may use the invention or work at will and
without attribution. Thus, in construing the Lanham Act, we have
been careful to caution against misuse or over-extension of
trademark and related protections into areas traditionally occupied by
patent or copyright. TrafFix, 532 U.S., at 29, 149 L Ed 2d 164, 121 S
Ct 1255.
Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23, 33-34 (2003)
(emphasis added)
18. A justifiable controversy now exists between the parties. Plaintiff
has a real and reasonable apprehension of litigation by defendant based upon
plaintiffs promotion and sale of its copyrighted t-shirt designs containing an
image of a tie.
COMPLAINT FOR DECLARATORY RELIEF
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19. Plaintiff therefore seeks a declaration from the Court declaring the
various rights and obligations of the parties. Specifically, plaintiff seeks a
declaration regarding:
a. Whether defendant has any exclusive rights to use a t-shirt
design that contains a neck tie;
b. Whether the public may use the t-shirt designs in the Design
Patent at will and without attribution based upon the expiration of the
Design Patent;
c. Whether any trademark of defendant that includes a t-shirt
design that contains a neck tie are valid and enforceable;
d. Whether any t-shirt of plaintiff containing a tie infringes any
copyright of defendant.
e. Whether any t-shirt of plaintiff containing a tie infringes any
trademark rights of defendant.
WHEREFORE, plaintiff prays for judgment and/or orders as follows:
1. A declaration from the Court that defendants patent rights to exclude
others from making a t-shirt with a tie design have expired and may be freely used
by the public without attribution;
2. A declaration from the Court that defendant does not have the
exclusive right to use a tie design on a t-shirt;
COMPLAINT FOR DECLARATORY RELIEF
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3. A declaration from the Court that any t-shirt of plaintiff containing a
tie design does not infringe on any trademarks of defendant;
4. A declaration from the Court that any t-shirt of plaintiff containing a
tie design does not infringe any copyrights of defendant.
5. That defendant, its agents, attorneys, and all persons acting in concert
with them be restrained and enjoined from filing any actions for copyright
infringement and/or trademark infringement against plaintiff in relation to any t-
shirt of plaintiff containing a tie design.
6. That defendant pay to plaintiff the cost of this action, expenses, and
reasonable attorneys fees;
7. That plaintiff have such other and further relief as to this Court may
appear just and proper.
Dated: July 22, 2014
Respectfully submitted,
LAW OFFICES OF DARREN J. QUINN
DARREN J. QUINN
___s/s Darren J. Quinn ____
Darren J. Quinn
12702 Via Cortina, Suite 105
Del Mar, CA 92014
Telephone: (858) 509-9401
Attorneys for Plaintiff Olaes Enterprises,
Inc.
COMPLAINT FOR DECLARATORY RELIEF
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DEMAND FOR A JURY TRIAL
Plaintiff demands a trial by jury on all causes of action so triable.
Dated: July 22, 2014
Respectfully submitted,
LAW OFFICES OF DARREN J. QUINN
DARREN J. QUINN
___s/s Darren J. Quinn ____
Darren J. Quinn
12702 Via Cortina, Suite 105
Del Mar, CA 92014
Telephone: (858) 509-9401
Attorneys for Plaintiff Olaes Enterprises,
Inc.
COMPLAINT FOR DECLARATORY RELIEF
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