1 LATHAM & WATKINS LLP Jennifer L. Barry (Bar No. 228066) 2 jennifer.barry@lw.

com 3 600 West Broadway, Suite 1800 San Diego, California 92101-3375 4 (619) 236-1234 / (619) 696-7419 Fax 5 Attorneys for Plaintiff 6 David Sutherland, Inc. d/b/a Sutherland 7 8 9 10 11 DAVID SUTHERLAND, INC. d/b/a SUTHERLAND, a Texas corporation, 12 Plaintiff, 13 v. 14 TEAK WAREHOUSE INC., a 15 California corporation; and DOES 110, 16 Defendants. 17 18 19 20 21 22 23 24 25 26 27 28
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UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF CALIFORNIA CASE NO. '13 CV0937 LAB KSC Complaint For: (1) Patent Infringement (35 U.S.C. 271) (2) Trade Dress Infringement (15 U.S.C. 1125) (3) Unfair Competition (Cal. Bus. & Prof. Code 17200 et seq.) (4) Common Law Unfair Competition Demand For Jury Trial

Complaint Demand for Jury Trial

Plaintiff David Sutherland, Inc. d/b/a Sutherland (Sutherland), for its

2 Complaint against Teak Warehouse, Inc. (Teak Warehouse) and Does 1-10 (the 3 Doe Defendants) (collectively, Defendants), alleges as follows: 4 5 1. Nature of Action Sutherland designs, markets, and sells unique, stylish, designer-

6 class outdoor and indoor furniture. Since its inception in 1991, Sutherland has 7 transformed the outdoor furniture industry, including because of the award8 winning designs and extremely high quality construction of its products. As a 9 result of its innovative efforts reflected in the quality and style of its products, 10 Sutherland has garnered numerous accolades and has developed an outstanding, 11 and hard-earned, reputation among consumers, including interior decorators, 12 architects, and furniture buyers for luxury hotels and travel resorts. 13 2. Sutherlands efforts and creative achievements have resulted in

14 broad intellectual property protection for Sutherlands innovations, including 15 various patents and protectable trade dress rights. Nevertheless, Sutherlands 16 innovations and distinctively-styled products have been the subject of emulation by 17 some of its competitors (or would-be competitors), who have attempted to 18 unlawfully capitalize on Sutherlands success. Teak Warehouse is one such 19 infringer. 20 3. Teak Warehouse markets and sells furniture products that blatantly

21 imitate the patented design of Sutherlands successful and distinctive Poolside 22 Collection in an attempt to improperly profit from Sutherlands innovations and 23 hard-earned reputation and goodwill. 24 4. By this action, Sutherland seeks to put a stop to Defendants

25 unlawful conduct and obtain compensation for the violations that have occurred 26 thus far. 27 28
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The Parties 5. Sutherland is a corporation organized and existing under the laws of
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1 the State of Texas, having its principal place of business at 140 Regal Row, Dallas, 2 Texas 75247. 3 6. On information and belief, Teak Warehouse is a corporation

4 organized and existing under the laws of the State of California, having its 5 principal place of business at 2653 Manhattan Beach Blvd., Redondo Beach, 6 California 90278, and operating a warehouse located at 7668 Miramar Road, San 7 Diego, California 92126. 8 7. Sutherland is ignorant of the true names of Doe Defendants 1

9 through 10, inclusive, and therefore sues those defendants by such fictitious names. 10 Sutherland is informed and believes, and on that basis alleges, that Doe Defendants 11 1 through 10, inclusive, are responsible for the acts alleged in this Complaint. 12 When the true names of such fictitious defendants are ascertained, Sutherland will 13 seek leave of this Court to amend this Complaint to name those individuals or 14 entities. 15 8. Sutherland is informed and believes, and on that basis alleges, that

16 each of the Defendants was the agent and employee of the remaining Defendants 17 and, at all times mentioned, acted within the course and scope of such agency and 18 employment. 19 20 9. Jurisdiction and Venue This is a civil action alleging patent infringement under 35 U.S.C.

21 271; trade dress infringement under the Lanham Act, 15 U.S.C. 1125(a); unfair 22 competition under California Business & Professions Code 17200 et seq.; and 23 California common law unfair competition. 24 10. Pursuant to 15 U.S.C. 1121 and 28 U.S.C. 1338(a), this Court

25 has subject matter jurisdiction over Sutherlands federal statutory claims. Pursuant 26 to 28 U.S.C. 1338(b), this Court has supplemental jurisdiction over Sutherlands 27 state law unfair competition claims, in that the claims are joined with substantial 28 and related claims under the federal statutes. This Court also has supplemental
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Complaint Demand for Jury Trial

1 jurisdiction over Sutherlands state law claims pursuant to 28 U.S.C. 1367(a), in 2 that all of Sutherlands claims arise out of a common nucleus of operative facts. 3 11. This Court has personal jurisdiction over Defendants because Teak

4 Warehouse is a California corporation with its principal place of business located 5 in Redondo Beach, California and a warehouse located in San Diego, California 6 and, on information and belief, Defendants have conducted substantial business in 7 the State of California and attempted to derive financial benefits from residents of 8 the State of California, including by marketing and selling their products to 9 residents of the State of California and otherwise placing infringing products into 10 the stream of commerce, with the knowledge or understanding that such products 11 are sold in the State of California, including within this District. 12 12. Venue in this Court is proper under 28 U.S.C. 1391(b), (c),

13 because, on information and belief, Defendants transact business within this 14 District and have marketed and sold in this District products that infringe 15 Sutherlands intellectual property rights, and a substantial part of the events giving 16 rise to the claims alleged in this Complaint occurred in this District. 17 18 19 13. Facts Common to All Claims for Relief Sutherlands Intellectual Property Rights Since its inception in 1991, Sutherland has developed and fostered a

20 well-deserved national and international reputation as an innovative source of 21 unique, designer-class furniture for the discriminating consumer, which furniture 22 products are distinctive for their award-winning designs and high quality 23 craftsmanship and construction. In particular, Sutherlands unique and distinctive 24 lines of outdoor furniture have been both widely acclaimed and commercially 25 successful. 26 14. For example, Sutherlands Poolside Collection, illustrations of

27 which are depicted below and in Exhibit A attached hereto, is comprised of 28 uniquely designed casual contemporary outdoor furniture handcrafted from
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1 Tectona Grandis grade teak (deemed by many to be the worlds finest hardwood). 2 The high quality materials, expert craftsmanship, unique shapes, and ornamental 3 features of the Poolside Collection provide the overall unique look and feel of the 4 distinctive Sutherland brand of furniture. 5 15. Sutherlands Poolside Collection has been extensively and

6 continuously sold for many years throughout the United States and internationally. 7 Sutherland products have also been extensively advertised and promoted in 8 Architectural Digest, Southern Accents, Ell Dcor, and other publications 9 particularly directed to the interior design trade. These activities have been carried 10 out by Sutherland long before Teak Warehouse introduced the infringing knock11 off furniture complained of herein. 12 16. As a result of Sutherlands aforementioned long and extensive

13 promotion and sale, the trade and consuming public have come to recognize the 14 distinctive styling and look and feel of the Poolside Collection as representing 15 furniture products originating solely from Sutherland, and such styling and designs 16 have therefore acquired secondary meaning and the status of protectable trade 17 dress exclusively owned by Sutherland. 18 17. Sutherland has also protected its innovative designs embodied by

19 the Poolside Collection by patent. On June 8, 2004, the U.S. Patent and Trademark 20 Office issued Design Patent Number D490,995 (the D995 Patent), which bears 21 the title Pool Chair and claims the ornamental design for a pool chair as shown 22 and described therein. A copy of the D995 Patent is attached hereto as Exhibit B. 23 18. At all times relevant hereto, the Poolside Slipper chair products

24 have been marked with the D995 Patent number. 25 26 19. Defendants Infringing Products and Activities Rather than innovate and develop its own distinctive style and

27 brand, Teak Warehouse has chosen to improperly piggyback on Sutherlands 28 success and reputation by blatantly copying Sutherlands outdoor furniture lines,
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1 specifically including its Poolside Collection, and offering for sale and selling 2 inferior knock off products that are virtually identical in appearance to 3 Sutherlands highly successful and distinctively-styled outdoor furniture products. 4 Depictions of Teak Warehouses knock-off products are attached hereto as 5 Exhibit C. Indeed, the side-by-side comparisons below demonstrate the extent to 6 which Defendants have misappropriated Sutherlands patented design and 7 protectable trade dress: D995 Patent 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 20. 25 forth above. 21. 26 FIRST CLAIM FOR RELIEF Patent Infringement 35 U.S.C. 271 Sutherland incorporates by reference the factual allegations set Sutherlands Poolside Slipper Chair Teak Warehouses Cabana 1 Seat Chair

Defendants have been and are directly infringing the D995 Patent

27 in violation of 35 U.S.C. 271 by, without authority, making, using, selling and/or 28 offering to sell in the United States, and/or importing into the United States
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1 furniture products that incorporate the design covered by the D995 Patent, or 2 colorable imitations thereof. 3 22. Defendants have been and are indirectly infringing the D995

4 Patent in violation of 35 U.S.C. 271 by actively inducing others to infringe the 5 995 Patent by selling its furniture to customers knowing and intending for those 6 customers to use that furniture. 7 23. On information and belief, Defendants infringement of the D995

8 Patent has been and continues to be intentional, willful, and without regard to 9 Sutherlands rights, including because Defendants are and were on at least 10 constructive notice that the designs that they are and have been copying are 11 protected by the D995 Patent based on the marking of Sutherlands products in 12 compliance with 35 U.S.C. 271(a). 13 24. On information and belief, Defendants have gained profits by virtue

14 of their infringement of the D995 Patent. 15 25. As a direct and proximate result of Defendants infringement of the

16 D995 Patent, Sutherland has been and will continue to be damaged. 17 26. Sutherland will suffer and is suffering irreparable harm from

18 Defendants infringement of the D995 Patent. Sutherland has no adequate remedy 19 at law and is entitled to an injunction against Defendants continuing infringement 20 of the D995 Patent. Unless enjoined, Defendants will continue their infringing 21 conduct. 22 27. Defendants acts make this an exceptional case under 35 U.S.C.

23 285, and Sutherland is thus entitled to an award of attorneys fees. 24 25 26 SECOND CLAIM FOR RELIEF Lanham Act Trade Dress Infringement - 15 U.S.C. 1125(a) 28. Sutherland incorporates by reference the factual allegations set

27 forth above. 28
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29.

Sutherland has established a unique and recognizable trade dress

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1 for its furniture products, including the products in its Poolside Collection, such 2 that the designs of such products are inherently distinctive and, thus, the trade and 3 the general public recognize products embodying those designs as originating from 4 Sutherland. 5 30. On information and belief, through their use of Sutherlands trade

6 dress protected designs, Defendants intended to, and did in fact, confuse and 7 mislead consumers into falsely believing that Defendants products incorporating 8 that mark originated from, were licensed, sponsored or approved by, or were 9 somehow affiliated, connected, or associated with Sutherland. 10 31. In fact, there is no connection, association, or licensing relationship

11 between Sutherland and Defendants, nor has Sutherland ever authorized, licensed 12 or given permission to Defendants to use the its trade dress in any manner 13 whatsoever. 14 32. As a direct and proximate result of Defendants wrongful conduct,

15 Sutherland has been and, unless Defendants are enjoined, will continue to be 16 damaged. 17 33. Defendants actions thus constitute trade dress infringement in

18 violation of the Lanham Act, 15 U.S.C. 1125(a)(1)(A). 19 34. On information and belief, Defendants activities have caused and

20 will cause irreparable harm to Sutherland for which it has no adequate remedy at 21 law, in that (i) Sutherlands trade dress rights comprise unique and valuable 22 property rights that have no readily determinable market value; (ii) Defendants 23 infringement constitutes an interference with Sutherlands goodwill and customer 24 relationships and will substantially harm Sutherlands reputation as a source of 25 high quality goods and services; and (iii) Defendants wrongful conduct, and the 26 damages resulting to Sutherland, are continuing. Accordingly, Sutherland is 27 entitled to injunctive relief pursuant to 15 U.S.C. 1116(a). 28
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35.

Pursuant to 15 U.S.C. 1117(a), Sutherland is entitled to an order:

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1 (a) requiring Defendants to account to Sutherland for any and all profits derived by 2 Defendants from their actions, to be increased in accordance with the applicable 3 provisions of law; and (b) awarding all damages sustained by Sutherland caused by 4 Defendants conduct. 5 36. Defendants conduct was intentional and without foundation in law,

6 and thus, pursuant to 15 U.S.C. 1117(a), Sutherland is entitled to an award of 7 treble damages against Defendants. 8 37. Defendants acts make this an exceptional case under 15 U.S.C.

9 1117(a), and Sutherland is thus entitled to an award of attorneys fees and costs. 10 11 12 THIRD CLAIM FOR RELIEF Unfair Competition - California Business & Professions Code 17200 et seq. 38. Sutherland incorporates by reference the factual allegations set

13 forth above. 14 39. The above-described acts and practices by Defendants are likely to

15 confuse, mislead or deceive the general public and therefore constitute unfair and 16 fraudulent business practices in violation of California Business & Professions 17 Code 17200, et seq. 18 40. The above-described acts further constitute business acts that

19 violate 15 U.S.C. 1125(a) and 35 U.S.C. 271, and are therefore unlawful. 20 41. The unfair, unlawful, and fraudulent business practices of

21 Defendants described above present a continuing threat and are meant to deceive 22 members of the public. 23 42. As a direct and proximate result of Defendants wrongful conduct,

24 Sutherland has been injured in fact and has lost money and profits, and has 25 suffered injury to its reputation and goodwill. Such harm will continue unless 26 Defendants acts are enjoined by the Court. Sutherland has no adequate remedy at 27 law. Accordingly, Sutherland is entitled to an injunction prohibiting Defendants 28 from continuing the practices described above.
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1 2 3 43.

FOURTH CLAIM FOR RELIEF Common Law Unfair Competition Sutherland incorporates by reference the factual allegations set

4 forth above. 5 44. Sutherland has expended significant time and expense in

6 developing its distinctive trade dress and the patented design of the high-quality 7 products it markets and sells thereunder. Sutherlands trade dress and the patented 8 design of products associated therewith have been very successful and have 9 developed a substantial reputation and goodwill in the marketplace. 10 45. On information and belief, through their actions described above,

11 Defendants have misappropriated Sutherlands efforts and have exploited 12 Sutherlands trade dress, the patented design of products associated therewith, and 13 Sutherlands reputation, to market and sell their own products that misappropriate 14 Sutherlands trade dress and patented designs. These actions constitute unfair 15 competition. 16 46. As a direct and proximate result of Defendants wrongful conduct,

17 Sutherland has been and will continue to be damaged. 18 47. Unless an injunction is issued enjoining Defendants unfairly

19 competitive conduct, Sutherland will continue to be damaged irreparably. 20 Sutherland has no adequate remedy at law. 21 48. On information and belief, Defendants have acted willfully,

22 intentionally and maliciously, such that Sutherland is entitled to punitive damages. 23 24 25 PRAYER WHEREFORE, Sutherland prays for the following relief: A. A judgment that, by the acts complained of above, Defendants have

26 infringed the D995 Patent in violation of 35 U.S.C. 271. 27 B. A judgment that, by the acts complained of above, Defendants have

28 committed trade dress infringement in violation of 15 U.S.C. 1125(a).

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C. A judgment that, by the acts complained of above, Defendants have

2 engaged in unfair competition and acts of unfair and deceptive business practices 3 in violation of California Business & Professions Code 17200 et seq. 4 D. A judgment that, by the acts complained of above, Defendants have

5 engaged in common law unfair competition. 6 E. An injunction enjoining Defendants, their officers, agents, servants,

7 employees, successors, and assigns, its subsidiary and related entities, attorneys, 8 and all other persons, firms, associations, and entities who are in active concert or 9 participation with them, from: 10 (i) reproducing, distributing, importing, selling, or offering for sale

11 any furniture products, which are copies of, or are substantially similar to, any of 12 Sutherlands furniture lines, in whole or in part, including but not limited to 13 Sutherlands Poolside Collection; and 14 (ii) using any designs which are similar, in whole or in part, to any

15 trade dress of Sutherland, or tending to dilute such trade dress; and 16 (iii) committing any acts causing, or calculated to cause, purchasers

17 or the trade to mistakenly believe that Defendants products are Sutherlands 18 products, or vice versa, in whole or in part; and 19 (iv) infringing any patent of Sutherland, including but not limited to

20 the D995 patent; and 21 22 (v) otherwise competing unfairly with Sutherland.

F. An order pursuant to 15 U.S.C. 1116(a) directing Defendants to file

23 with this Court and to serve upon Sutherlands counsel, within thirty (30) days 24 after the entry and service on Defendants of an injunction, a report in writing and 25 under oath setting forth in detail the manner and form in which Defendants have 26 complied with the injunction. 27 G. An order pursuant to 15 U.S.C. 1117(a) compelling Defendants to

28 account to Sutherland for any and all profits derived from their unlawful and
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1 infringing conduct. 2 3 H. An order awarding Sutherland damages as follows: (1) all damages adequate to compensate Sutherland for Defendants

4 infringement of the D995 Patent, and in no event less than a reasonable royalty for 5 Defendants acts of infringement; 6 (2) pursuant to 35 U.S.C. 284, all damages, including treble

7 damages, based on any infringement of the D995 Patent found to be willful; 8 (3) pursuant to 15 U.S.C. 1117(a), Sutherlands actual damages, as

9 well as all of Defendants profits or gains of any kind from their acts of trade dress 10 infringement, including a trebling of those damages; 11 (4) punitive damages based on Defendants unfair competition under

12 California common law. 13 I. An order pursuant to 15 U.S.C. 1117(a) and 35 U.S.C. 285,

14 finding that this is an exceptional case and awarding Sutherland its reasonable 15 attorneys fees. 16 J. An order awarding Sutherland all of its costs, disbursements and other

17 expenses incurred due to Defendants unlawful conduct, pursuant to 15 U.S.C. 18 1117(a). 19 20 K. An order awarding Sutherland interest. L. An order awarding Sutherland such other relief as the Court may

21 deem appropriate. 22 Dated: April 18, 2013 23 24 25 26 27 28

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LATHAM & WATKINS LLP

By

Jennifer L. Barry Attorneys for Plaintiff David Sutherland, Inc. d/b/a Sutherland

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Complaint Demand for Jury Trial

1 2

JURY DEMAND Pursuant to Rule 38 of the Federal Rules of Civil Procedure and Local Rule

3 38-1, Plaintiff hereby demands a trial by jury. 4 Dated: April 18, 2013 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28
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LATHAM & WATKINS LLP

By

Jennifer L. Barry Attorneys for Plaintiff David Sutherland, Inc. d/b/a Sutherland

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Complaint Demand for Jury Trial

'13CV0937 LAB KSC

; 15:1126