Lanphere v. Prima et. al.

7/31/2019 Lanphere v. Prima et. al.

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IN THE UNITED STATES DISTRICT COURTFOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

DONALD J. LANPHERE, JR., )

) Civil Action No.:Plaintiff, )

v. )) Hon. Judge:

PRIMA (XIAMEN) CO., LTD.; and )HELEN HUANG ) Magistrate Judge:

)Defendants. )

__________________________________________ ) JURY TRIAL DEMANDED

COMPLAINT FOR INJUNCTIVE RELIEF AND DAMAGES

Plaintiff DONALD J. LANPHERE, JR. (hereinafter Don Lanphere), by his undersigned

attorneys, for their complaint against Defendants PRIMA (XIAMEN) CO., LTD. and HELEN

HUANG (hereinafter collectively the Defendants), states and alleges as follows:

Cause of Action

1. This action arises from the Defendants willful misappropriation of Don Lanpheres rights

in and to his original, copyrighted, patented, trade dressed and highly distinctive Helmet-Shaped Hat

With Facemask (hereinafter Huddle Hat), and to the Defendants importation into the U.S. of

products that are derivatives of, wholesale imitations of, substantially similar and/or confusingly

similar to Don Lanpheres Huddle Hat.

2. This action is for copyright infringement under 17 U.S.C. 101 et seq., design patent

infringement under 35 U.S.C. 271 et seq., trade dress infringement, unfair competition and false

designation of origin, under 15 U.S.C. 1125(a), and related state and common law claims. Don

Lanphere seeks a preliminary and permanent injunction and damages, including statutory damages

Case: 1:12-cv-05150 Document #: 1 Filed: 06/27/12 Page 1 of 25 PageID #:1


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and treble damages and attorneys fees for willfulness under 17 U.S.C 505, 15 U.S.C. 1117 and 35

U.S.C. 284 and 285, against the Defendants, preventing the Defendants from further importation

into the U.S. of any and all products or the like which infringe directly or indirectly upon Don

Lanpheres U.S. Copyright Registration No. VA-1-768-794, U.S. Patent Number D559,502S, his

rights under the Lanham Act, State law and at common law.

Parties

3. Plaintiff Don Lanphere is an individual, U.S. citizen residing at 1741 Ridgewood Ln. E.,

Glenview, Illinois 60025.

4. Upon information and belief, Defendant Prima (Xiamen) Co. Ltd. is a foreign company

residing in China, and having a place of business at No. 958, West Jinyuan Road, Xinglin District,

Xiamen , 361022 , P.R.China.

5. Upon information and belief, Defendant Prima (Xiamen) Co. Ltd. has been, and is doing

business in the State of Illinois and within this judicial district by importing one or more helmet-

shaped hats with removable flexible facemasks into Illinois.

6. Upon information and belief, Defendant Helen Huang is a foreign individual residing in

China and having a place of business at No. 958, West Jinyuan Road, Xinglin District, Xiamen,

361022 , P.R.China, and has participated in, directed, and/or induced the unlawful acts complained

of herein.

7. Upon information and belief, Helen Huang has been, and is doing business in the State of

Illinois and within this judicial district by importing one or more of helmet-shaped hats with

removable flexible facemasks into Illinois.



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Jurisdiction and Venue

8. This action arises under the provisions of 17 U.S.C. 101 et seq., 15 U.S.C. 1051 et seq.,

35 U.S.C. 1 et seq., and related state and common law.

9. This Court has jurisdiction of these claims under, inter alia, the provisions of 15 U.S.C.

1501 et seq., 17 U.S.C. 501 et seq., 35 U.S.C. 271 et seq.,. and 28 U.S.C. 1331 and 1338. This

Court has jurisdiction over the state law and common law claims in this action pursuant to 28 U.S.C.

1367(a) because the state law and common law claims are so related to the federal claims that they

form part of the same case or controversy and derive from a common nucleus of operative facts.

10. Venue is proper in this District under, inter alia, the provisions of Section 1391 and

1400 of Title 28, United States Code.

Background Facts

11. On January 15, 2008, United States Patent No. D559,502S (the 502 patent),

entitled Helmet-Shaped Hat with Facemask, was duly and legally issued to Don Lanphere, the

named inventor and sole owner of the subject matter claimed in the 502 patent. A true and correct

copy of the 502 patent is attached hereto as Exhibit A.

12. Effective March 7, 2011, United States Copyright Registration No. VA-1-768-794

(the 794 Copyright) entitled Helmet Shaped Hat With Flexible Removable Facemask was duly

and legally registered to Don Lanphere, the author and sole copyright claimant of sculpture/3-D

artwork subject matter in the 794 Copyright. A true and correct copy of the 794 Copyright is

attached hereto as Exhibit B.

13. Upon information and belief, sometime in the late summer/early fall of 2009, a third

party sent to the Defendants one of Don Lanpheres Huddle Hats, or pictures thereof. Upon



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information and belief, at this time, the Defendants proceeded to make one or more samples of Don

Lanpheres Huddle Hats or one or more substantially similar variations thereof (hereinafter the

Huddle Hat Samples). Upon information and belief, also at this time, the Defendants imported

into the U.S. one or more of these Huddle Hat Samples. The Defendants actions described herein

were without Don Lanpheres knowledge and/or consent.

14. Upon information and belief, the Defendants Huddle Hat Samples are substantial

copies of Don Lanpheres Huddle Hat product. As such, the Defendants have violated Don

Lanpheres patent and copyright by making and importing into the U.S. their infringing Huddle Hat

Samples.

15. Subsequent thereto, upon information and belief, the Defendants began

manufacturing and have been importing into the U.S. one or more helmet-shaped hats with

removable flexible facemasks (hereinafter Fanaticaps) which are derivatives of, wholesale

imitations of, substantially similar and/or confusingly similar to Don Lanpheres Huddle Hats. The

Defendants actions described herein are without Don Lanpheres consent.

16. Attached hereto as Exhibit C is a side by side comparison of the Defendants

Fanaticap product and Don Lanpheres Huddle Hat product. As can be readily seen in Exhibit C,

these two products are substantially similar and are likely to cause confusion in the marketplace.

Upon information and belief, the Defendants Fanaticaps are substantial copies of Don Lanpheres

Huddle Hat product. As such, the Defendants have violated Don Lanpheres patent and copyright by

making and importing into the U.S. their infringing Fanaticaps.

17. On information and belief, the Defendants have and/or are importing into the U.S.

one or more products which infringe the 502 patent and the 794 Copyright, including, but not



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limited to, the Huddle Hat Samples and the Fanaticaps, and that this infringement is willful and

deliberate.

18. On information and belief, the Defendants are also infringing Don Lanpheres trade

dress in and to his Huddle Hat product by making and importing into the U.S. one or more

confusingly similar products to the Huddle Hat products, including, but not limited to, the Huddle

Hat Samples and the Fanaticaps, and that this infringement is willful and deliberate.

19. On information and belief, the Defendants intentionally and willfully have and

continue to import into the U.S. one or more infringing products, despite having actual or at least

constructive knowledge of the 502 patent, the 794 Copyright and/or the Huddle Hat trade dress.

20. Upon information and belief, the Defendants copying of and/or derivative of Don

Lanpheres Huddle Hat product and design has caused actual confusion and is likely to cause further

confusion, to the detriment of Don Lanphere.

21. Upon information and belief, Don Lanpheres Huddle Hat is non-functional and has

acquired distinctiveness.

COUNT I

Copyright Infringement

22. Don Lanphere repeats and realleges paragraphs 1-21 as though fully stated herein.

23. The Defendants, who had actual knowledge of the copyrighted design, intentionally

copied the copyrighted design, and/or intentionally made derivatives of the copyrighted design.

24. Defendants conduct as aforesaid constitutes infringement of Don Lanpheres

copyrights in and to his Helmet Shaped Hat with Flexible Removable Facemask.

25. Defendants share liability jointly and severally for said infringing conduct.



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26. Defendants conduct as aforesaid has caused great and irreparable injury to Don

Lanphere, and unless such conduct is enjoined, it will continue, and Don Lanphere will continue to

suffer great and irreparable injury.

27. Plaintiff has no adequate remedy at law.

COUNT II

Patent Infringement of the 502 Patent


29. In the eye of an ordinary observer, giving such attention as a purchaser usually gives,

the accused designs and the patented design are substantially the same, the resemblance between the

accused designs and the patented design is such as to deceive such an ordinary observer, inducing

him to purchase one supposing it to be the other. Considering the designs as a whole, an ordinary

observer, familiar with the prior art designs, would be deceived into believing that the accused

products are the same as the patented design. The accused designs are deceptively similar overall to

the patented design. The accused products embody the patented design or any colorable imitation

thereof. The accused products embody the overall effect of the 502 design in sufficient detail and

clarity to cause market confusion.

30. The Defendants, who had actual knowledge of the patented design, intentionally

copied the patented design and/or merely attempted to make minor alterations to the patented design

in a bad faith attempt to cover up their willful infringement. As such, the Defendants had an

affirmative duty to avoid infringement before initiation of any possible infringing activity.

31. The Defendants helmet-shaped hats are essentially the same overall shape as in

Plaintiffs patented design. Any changes in the seams, to the extent noticeable, are insufficient to



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preclude infringement in the eye of the ordinary observer as to the overall design as a whole.

Further, the Defendants flexible removable polyurethane facemasks are essentially the same overall

shape as in Plaintiffs patented design, with the mere addition of additional facemask segments. The

accused designs do not escape infringement by merely adding features, since they otherwise have

adopted the basic features of the 502 patent. Finally, Defendants fasteners are essentially the same

exact shape and location as in Plaintiffs patented design, with the mere addition of a single

connecting piece across the top front. This change, to the extent noticeable, is insufficient to

preclude infringement in the eye of the ordinary observer as to the overall design as a whole, and

again, is merely an added feature to an infringing product which has adopted the basic features of the

patent in suit.

32. Through the conduct described above, the Defendants have infringed and continue to

infringe the 502 patent in violation of 35 U.S.C. 271 by importing, making, using, offering for sale

and/or selling in the United States one or more products embodying the patented invention.

33. Don Lanphere has given notice of the 502 patent to the Defendants, at least in the

manner required by 35 U.S.C. 287(a).

34. On information and belief, the Defendants actions constitute knowing and willful

infringement of the 502 patent.

35. As a result of the Defendants infringement, Don Lanphere has been and, unless

restrained by this Court, will continue to be irreparably harmed, damaged and injured.

36. This is an exceptional case pursuant to 35 U.S.C. 285.

37. Plaintiffs undersigned counsel has obtained, reviewed and analyzed one or more of

the accused products of the Defendants and certifies, to the best of his knowledge, information, and



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belief, formed after an inquiry reasonable under the circumstances, that this Count is not being

presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly

increase the cost of litigation; that the claims and other legal contentions are warranted by existing

law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for

establishing new law; and that the factual contentions have evidentiary support or, if specifically so

identified, will likely have evidentiary support after a reasonable opportunity for further

investigation or discovery.

COUNT III

Trade Dress Infringement


39. The Defendants unauthorized copying and use of the distinctive and source

identifying trade dress in the Huddle Hat product falsely indicates that Don Lanphere or his agents

are connected with, sponsored, endorsed, authorized, or approved, or affiliated with the Defendants,

or that the Defendants are connected with, sponsored, endorsed, authorized, or approved by, or

affiliated with Don Lanphere.

40. The Defendants use of the distinctive and source identifying trade dress in the

Huddle Hat product is likely to cause confusion, mistake or deception as to the source or affiliation

of the Defendants goods.

41. The acts of the Defendants complained of herein constitute trade dress infringement,

a false designation of origin, and unfair competition, in violation of Section 43 of the Lanham Act,

15 U.S.C. 1125.

42. On information and belief, the Defendants actions complained of herein were



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committed willfully.

43. As a result of the foregoing actions of the Defendants, the Defendants are being

unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the

foregoing actions of the Defendants are restrained by this Court, Don Lanphere will continue to be

irreparably harmed, damaged and injured.

44. Plaintiffs undersigned counsel certifies, to the best of his knowledge, information,

and belief, formed after an inquiry reasonable under the circumstances, that this Count is not being

presented for any improper purpose, such as to harass, cause unnecessary delay, or needlessly

increase the cost of litigation; that the claims and other legal contentions are warranted by existing

law or by a nonfrivolous argument for extending, modifying, or reversing existing law or for

establishing new law; and that the factual contentions have evidentiary support or, if specifically so

identified, will likely have evidentiary support after a reasonable opportunity for further

investigation or discovery.

COUNT IV

Federal Unfair Competition,

False Designation of Origin and Deceptive Trade Practices


46. The Defendants have competed unfairly with Don Lanphere by importing into the

U.S. one or more products that infringe Don Lanpheres rights under the patent laws, under the

copyright laws, and under the trade dress laws.

47. The acts of the Defendants complained of herein constitute a false designation of

origin, unfair competition and deceptive trade practices, in violation of Section 43 of the Lanham

Act, 15 U.S.C. 1125.



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48. Defendants have, and on information and belief intend to continue to, willfully

engage in unfair competition and deceptive trade practices under the federal law by the acts

complained of herein.

49. On information and belief, the Defendants actions complained of herein were and

continue to be committed willfully.

50. As a result of the foregoing alleged actions of the Defendants, the Defendants are

being unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the

foregoing alleged actions of the Defendants are restrained by this Court, Don Lanphere will continue

to be irreparably harmed, damaged and injured.

COUNT V

Common Law Unfair Competition,

False Designation of Origin and Deceptive Trade Practices


52. The acts of the Defendants complained of herein constitute a false designation of

origin, unfair competition and deceptive trade practices, in violation of the common law.

53. Defendants have, and on information and belief intend to continue to, willfully

engage in unfair competition and deceptive trade practices under the common law by the acts

complained of herein.

54. On information and belief, the Defendants, with full knowledge of Don Lanpheres

patent, trade dress and copyrights in the Huddle Hat products, have committed the acts described

herein willfully, with the intent to trade on, or in complete disregard of Don Lanpheres rights and

the goodwill associated with the Huddle Hat products.




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being unjustly enriched and Don Lanphere has been and is being injured and damaged. Unless the

foregoing alleged actions of the Defendants are restrained by this Court, Don Lanphere will continue

to be irreparably harmed, damaged and injured.

JURY DEMAND

Pursuant to Federal Rule of Civil Procedure 38(b), Plaintiff demands a trial by jury as to

all issues so triable in this action.

WHEREFORE, plaintiff Don Lanphere prays that this Court enter judgment against the

Defendants as follows:

A. That the 502 patent, the 794 Copyright and the Huddle Hat trade dress are valid and

enforceable;

B. That the Defendants have been and are infringing the 502 patent pursuant to 35

U.S.C. 271;

C. That the Defendants, their agents, officers, servants, employees, attorneys, successors,

companies, customers and assignees, and all those in active concert or participation with them, be

preliminarily, permanently and finally enjoined from activities infringing upon the 502 patent;

D. That the Defendants infringement of the 502 patent has been willful;

E. That this Court award damages adequate to compensate Don Lanphere for the

Defendants infringement of the 502 patent pursuant to 35 U.S.C. 284 and 35 U.S.C. 289;

F. That this Court award treble damages pursuant to 35 U.S.C. 284;

G. That this is an exceptional case pursuant to 35 U.S.C. 285;

H. That this Court award reasonable attorneys fees pursuant to 35 U.S.C. 285;



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I. That the Defendants have infringed upon the distinctive and source identifying trade

dress in the Huddle Hat product under 15 U.S.C. 1125 and at common law; have competed unfairly

with Don Lanphere under 43 of the Lanham Act and at common law, have violated the Illinois

Uniform Deceptive Trade Practices Act, 815 ILCS 510/2; and have otherwise injured Don

Lanpheres business and have misappropriated Don Lanpheres rights by using the distinctive and

source identifying trade dress in the Huddle Hat product in connection with the Defendants

competing products without permission or license;

J. That this Court preliminarily, permanently and finally enjoin the Defendants, their

agents, officers, servants, employees, attorneys, successors, companies, customers and assignees, and all

those in active concert or participation with them, from using the distinctive and source identifying

trade dress in the Huddle Hat product or from using any other confusingly similar design, and from

infringing Don Lanpheres trade dress, and damaging the business of Don Lanphere and otherwise

competing unfairly with Don Lanphere;

K. That this Court issue an order requiring the Defendants and all those in privy or

concert therewith to deliver up for destruction all infringing products, including containers, labels,

signs, packages, wrappers, articles and promotional and advertising materials of any kind, in their

possession or under their control relating to the infringing products;

L. That this Court award to Don Lanphere such damages as he has sustained in

consequence of the Defendants infringement, unfair competition, false designation of origin, and other

unlawful acts and activities, as well as the Defendants profits, and to account for all gains, profits and

advantages derived by the Defendants therefrom, and to award appropriate exemplary and/or treble

damages so as to set an example that the willful acts of the Defendants cannot be condoned and further



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damages under 15 U.S.C. 1117 for willfulness should be awarded to Don Lanphere;

M. That all costs and expenses in this action, including reasonable attorney's fees as

provided for inter alia by 15 U.S.C. 1117 and 1125, and appropriate interest on all damages

sustained by Don Lanphere, be taxed in favor of Don Lanphere and against the Defendants and that

Don Lanphere shall have judgment and execution thereof against the Defendants;

N. That Defendants have infringed the copyrights of Don Lanphere in and to his helmet

shaped hat with flexible removable facemask pursuant to 17 U.S.C. 101 et seq., and award to

Plaintiff the remedies afforded under 17 U.S.C. 501 et seq.

O. That this Court preliminarily and permanently enjoin the Defendants, their agents,

representatives, employees, assigns, and suppliers, and all persons acting in concert or privity with

them, from infringing Plaintiffs copyrighted works;

P. That this Court direct the destruction of all infringing merchandise and molds and

means of producing the same;

Q. That this Court award Plaintiff its damages and Defendants profits derived by reason

of the unlawful acts complained of herein and/or statutory damages as provided by law;

R. That this Court award Plaintiff treble damages as provided by law; and

S. That this Court award Plaintiff its reasonable attorney fees, prejudgment interest, and

costs of this action as provided by law.

T. That Don Lanphere be awarded punitive damages under the unfair competition

common law, or as otherwise provided by law; and

U. That this Court grant all other relief as this Court may deem just and proper.



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Respectfully submitted,

DONALD J. LANPHERE, JR.

Date: June 27, 2012 By: s/Charles T. Riggs Jr.

One of the Attorneys for Plaintiff

Timothy T. Patula ([email protected])

Charles T. Riggs Jr. ([email protected])

PATULA & ASSOCIATES, P.C.

116 S. Michigan Ave., 14th Fl.

Chicago, Illinois 60603

(312) 201-8220



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EXHIBIT A



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EXHIBIT B



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EXHIBIT C



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Lanphere v. Prima et. al.

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