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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
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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
28. Don Lanphere repeats and realleges paragraphs 1-27 as though fully stated herein.
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
38. Don Lanphere repeats and realleges paragraphs 1-37 as though fully stated herein.
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
45. Don Lanphere repeats and realleges paragraphs 1-44 as though fully stated herein.
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
51. Don Lanphere repeats and realleges paragraphs 1-50 as though fully stated herein.
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.
55. As a result of the foregoing alleged actions of the Defendants, the Defendants are
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61. 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.
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 (patula@patula.com)
Charles T. Riggs Jr. (riggs@patula.com)
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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