PopSockets v. GiftekTM - Complaint

Case 8:17-cv-01825-JVS-DFM Document 40 Filed 01/27/18 Page 1 of 26 Page ID #:505
Michael M. Ahmadshahi, Esq. (Bar No. 219933)

Email: mahmadshahi@mmaiplaw.com
AHMADSHAHI LAW OFFICES
2030 Main Street, Suite 1300
Irvine, CA 92614
Telephone: 949.260.4997
Facsimile: 949.260.4996
Attorney for Defendants
GiftekTM, LLC and
Zoe Ozveren
UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
SOUTHERN DIVISION
)
POPSOCKETS, LLC, ) Case No.: 8:17-CV-01825-JVS-DFM
)
Plaintiff, )
)
v. ) DEFENDANT GIFTEKTM, LLC
) SECOND AMENDED
) COUNTERCLAIM PURSUANT TO
GIFTEKTM, LLC AND ZOE ) FED.R.CIV.P. 15(a)(2)
)
OZVEREN ) DEMAND FOR JURY TRIAL
)
Defendants. )
)
GIFTEKTM, LLC )
)
Counterclaimant, )
)
v. ) DATE:
) TIME:
POPSOCKETS, LLC, ) CTRM: 10C, 10th Fl.
)
Counterdefendant. )
) Judge: The Honorable James V. Selna
1 COUNTERCLAIMS
2
3 Pursuant to this Court’s Order (Dkt. 38) and Rule 13 of the Federal Rules of
4 Civil Procedure, Defendant and Counterclaimant GiftekTM, LLC (“GIFTEKTM”
5 or “DEFENDANT”), by and through its undersigned counsel, hereby asserts the
6 following Second Amended Counterclaims, a redline copy of which is attached as
7 Exhibit-1, against Plaintiff and Counterdefendant PopSockets, LLC
8 (“POPSOCKETS” or “PLAINTIFF”), as follows:
9
10 JURISDICTION AND VENUE

11
12 1. This Court has subject matter jurisdiction over these Counterclaims

13 pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202, as well as Lanham Act, 15
14 U.S.C. § 1051, et seq. In addition, this Court has subject matter jurisdiction over
15 these Counterclaims pursuant to 28 U.S.C. § 1332(a) because there is complete
16 diversity of citizenship between the parties and the amount in controversy exceeds
17 $75,000, excluding interest and costs. This Court has supplemental jurisdiction over
18 these Counterclaims with respect to the California state law claims pursuant to 28
19 U.S.C. §1367(a).
20
21 2. This Court has personal jurisdiction over PLAINTIFF in that

22 PLAINTIFF consented to this Court’s jurisdiction by virtue of having filed its
23 Complaint (“COMPLAINT”) (Docket No. 1) against DEFENDANT.
24
25 3. Venue is proper in this district pursuant to 28 U.S.C. § 1391 as

26 PLAINTIFF may be found or transact business in this district, and the violations
27 alleged arose and are continuing to occur in this district. Venue is further
28
2
SECOND AMENDED COUNTERCLAIM
1 appropriate in this Court because PLAINTIFF consented to this venue as a result

2 of filing its COMPLAINT in this venue.
3
4 PARTIES
5
6 4. GIFTEKTM is a California Limited Liability Company with its

7 Principal Office at 198 Borrego, Irvine, CA 92618.
8
9 5. Upon information and belief, POPSOCKETS is a corporation

10 organized under the laws of Colorado with its Principal Place of Business at 3033
11 Sterling Circle, Boulder, CO 80301.
12
13 INTRODUCTION
14
15 6. GIFTEKTM1 is an online merchant of the Expanding Stand & Grip

16 (“GIFTEKTM PRODUCT”), commonly described as “pop sockets.”
17
18 7. GIFTEKTM sells GIFTEKTM PRODUCT, through online

19 marketplaces, namely, Amazon.com, eBay.com, Wanelo.com, and Shopify.com
20 which hosts GIFTEKTM’s own website at buygiftek.com. GIFTEKTM and
21 POPSOCKETS are competitors.
22
23
24 1
GIFTEKTM was organized as a Limited Liability Company under the laws of
25 the State of California on August 10, 2017. GiftekTM, LLC (“GIFTEKTM-TX”),
also an online merchant of GIFTEKTM PRODUCT, was organized as a Limited
26
Liability Company under the laws of the State of Texas on November 29, 2016.
27 On August 28, 2017, GIFTEKTM and GIFTEKTM-TX merged upon which the
28
latter disappeared and the former was the surviving entity.
3
1 8. “Amazon.com (“AMAZON”) is an American electronic commerce

2 and cloud commerce and cloud computing company based in Seattle,
3 Washington that was founded by Jeff Bezos on July 5, 1994. The tech giant is the
4 largest Internet retailer in the world measured by revenue and market
5 capitalization, and second largest after Alibaba Group in terms of total sales.”2
6
7 9. “eBay Inc. (“EBAY”) is a multinational e-commerce corporation

8 headquartered in San Jose, California that facilitates consumer-to-
9 consumer and business-to-consumer sales through its website. eBay was founded
10 by Pierre Omidyar in 1995, and became a notable success story of the dot-com
11 bubble. Today, eBay is a multi-billion-dollar business with operations in about 30
12 countries. The company manages eBay.com, an online auction and shopping
13 website in which people and businesses buy and sell a wide variety of goods and
14 services worldwide.”3
15
16 10. “More than half of U.S. online consumers begin their product searches
17 on Amazon.com Inc.’s website or mobile app, a survey found.4” There are
18 approximately 186 million online shoppers on AMAZON and 86 million online
19 shoppers on EBAY5.
20
21
22
23
24 2
See, https://en.wikipedia.org/wiki/Amazon_(company).
3
25 See, https://en.wikipedia.org/wiki/EBay.
4
See, https://www.bloomberg.com/news/articles/2016-09-27/more-than-50-of-
26
shoppers-turn-first-to-amazon-in-product-search
5
27 https://www.statista.com/statistics/271450/monthly-unique-visitors-to-us-retail-
28
websites/
4
1 11. On information and belief, both EBAY and AMAZON are considered
2 Internet Service Providers (“ISPs”).
3
4 12. On information and belief, pop sockets that are aesthetically similar to
5 GIFTEKTM PRODUCT, have been sold online at least on EBAY and AMAZON
6 by third parties at least since December 1, 2016 in the United States, Canada,
7 Europe, and Asia.
8
9 COMMON ALLEGATIONS
10
11 13. In the period from February 2017 through May 2017, EBAY issued
12 several emails to GIFTEKTM stating that it has received, on information and belief,
13 takedown notices pursuant to 15 U.S.C. § 512(c) (“DMCA NOTICE”) from
14 POPSOCKETS claiming violation of its copyrights, and takedown notices pursuant
15 to its Terms of Service (“TOS NOTICE”) from POPSOCKETS claiming violation
16 of its alleged trademark.
17
18 14. POPSOCKETS’ intellectual property manager, Kelly Frazier

19 (“FRAZIER”), is a licensed patent agent, registration No. 64,639 (see, Exhibit-2)
20 and, on information and belief, prosecutes both utility and design patent
21 applications at the United States Patent and Trademark Office (“USPTO”), who, on
22 information and belief, issued the DMCA NOTICES and TOS NOTICES to EBAY.
23
24 15. As a result of POPSOCKETS’ DMCA NOTICES and TOS NOTICES,

25 EBAY removed GIFTEKTM PRODUCTS having customized images
26 (“CUTOMIZED IMAGES”) corresponding to at least the following:
27 272561500483, 272561511662, 272561511665, 272561616868, 272561668842,
28
5
1 272562170282, 272562196518, 272566019363, 272566039512, 272567840689,

2 272567850157, 272569275212, 272580169511, 272580175417, 272580177489,
3 272580182994, 272580206650, 272580217814, 272596662233, 272603691558,
4 272641975824, 272643729025, 272645259218, 272646862176, 272647036324
5 (collectively “REMOVED EBAY LISTINGS”).
6
7 16. On information and belief, FRAZIER had made misrepresentations in

8 one or more DMCA NOTICES to EBAY regarding these REMOVED EBAY
9 LISTINGS in bad faith because she knew that POPSOCKETS was not the copyright
10 owner.
11
12 17. On information and belief, FRAZIER made misrepresentations in one

13 or more TOS NOTICES to EBAY regarding these REMOVED EBAY LISTINGS
14 in bad faith because she knew POPSOCKETS’ alleged trademark was not infringed
15 by GIFTEKTM because any alleged use of the terms POP and SOCKETS by
16 GIFTEKTM was for describing its products and as such was a classic fair use of
17 POPSOCKETS’ alleged trademark.
18
19 18. On information and belief, FRAIZER issued the DMCA NOTICES

20 and the TOS NOTICES in bad faith only to cause EBAY to remove GIFTEKTM
21 PRODUCTS’ listings and prevent GIFTEKTM from selling on EBAY.
22
23 19. In or about June 2017, AMAZON emailed GIFTEKTM stating that it

24 has received, on information and belief, a TOS NOTICE pursuant to Amazon’s
25 Service Agreement, from FRAIZER claiming violation of its “utility patent.”
26
27
28
6
1 20. On June 12, 2017, GIFTEKTM emailed POPSOCKETS stating that it

2 did not infringe any patent but was willing to “work this out” without any
3 adversarial proceedings in court.
4
5 21. In the period between June 12, 2017 and June 19, 2017, in a series of
6 emails between GIFTEKTM and POPSOCKETS, the latter refused to work with
7 the former and on October 18, 2017 filed its COMPLAINT6 asserting, amongst
8 others, infringement of the U.S. Patent No. 8,560,031 (the “‘031 Patent”).
9
10 22. On information and belief, in the period from June 9, 2017 and October
11 30, 2017, FRAIZER had made several misrepresentations by issuing, at least to
12 AMAZON, several DMCA NOTICES claiming copyright infringement and several
13 TOS NOTICES claiming design patent infringement and utility patent infringement
14 as described below.
15

17 AMAZON removed GIFTEKTM PRODUCTS having CUTOMIZED IMAGES
18 corresponding to at least the following Amazon Seller Identification Numbers
19 (“ASINs”), B071ZKTTC3, B071G6GXTL, B071ZN9TK9, B071KVR27C,
20 B072P28ZJ1, B072FL473B, B0711667XF, B0727QKV9Z, B072BB63WV,
21 B071167MRH, B072J3XDDQ, B071H8WWKW, B072P26MCC, B0713RZGH5,
22 B072HHKBGT, B072P23PQ7, B071LHHPDX, B0713RSLYN, B072P1CDY9,
23 B072J41HRZ, B071DPFYL1, B071RMJB7X, B072HHMZ19, B071LJYYLF,
24
6
25 POPSOCKETS first filed its Complaint against GIFTEKTM-TX, entitled
PopSockets, LLC v GiftekTM, LLC and Zoe Ozveren, U.S. District Court for the
26
Southern District of Texas, Case 4:17-cv-02463. The case was voluntarily
27 dismissed without prejudice upon the parties’ agreement to refile the case in
28
California.
7
1 B072BBD8VM, B072P1SBSW, B07254NNCG, B071V77KBW, B071FCJGFV,

2 B071SB1P42, B07455SGXR, B074565RDD, B073J83PZJ, B07453KF92,
3 B07459SV5H, B07452MJDF, B07459FMZG, B07457CKHR, B073JB8451, and
4 B071LHHPDX (collectively “REMOVED AMAZON LISTINGS”).
5
6 24. GIFTEKTM requested POPSOCKETS to retract its DMCA

7 NOTICES and TOS NOTICES, and AMAZON to relist its products providing
8 evidence to AMAZON and, on information and belief, to POPSOCKETS who were
9 copied on the emails to AMAZON that GIFTEKTM had either purchased the
10 CUTOMIZED IMAGES at http://www.istockphoto.com or that said CUTOMIZED
11 IMAGES were fallen into the public domain and thus available for free to use at
12 https://www.pexels.com, and therefore POPSOCKETS was not the right owner.
13
14 25. On June 9, 2017, AMAZON emailed GIFTEKTM stating that

15 FRAIZER, prior to June 9, 2017, had issued a TOS NOTICE claiming violation of
16 POPSOCKETS’ “design patent.” (See, Exhibit-3) GIFTEKTM had appealed
17 AMAZON’s decision because in that same email AMAZON stated that it had
18 determined POPSOCKETS’ allegations were false and on June 9, 2017, AMAZON
19 relisted GIFTEKTM PRODUCTS corresponding to ASINs.: B0722N1G4R and
20 B071RMNKFF, clearly revealing FRAIZER’s bad faith misrepresentation made in
21 the TOS NOTICE with respect to infringement of the ‘022 Design Patent. In the
22 same email, however, AMAZON stated that FRAZIER, prior to June 9, 2017, had
23 issued another TOS NOTICE claiming violation of POPSOCKETS’ “utility patent”
24 regarding the same ASINs B0722N1G4R and B071RMNKFF and requested that
25 GIFTEKTM contact FRAZIER at fakes@popsockets.com to resolve the issue.
26
27
28
8
1 26. POPSOCKETS’ one and only U.S. Design Patent No. D777,022 (the
2 “‘022 Design Patent”) (See, Exhibit-4) is shown below and compared with the
3 alleged GIFTEKTM’s Accused Product:
4
10
11
12
13
14
15
16 POPSOCKETS’ ‘022 Design Patent

17
18
19
20
21
22
23
24 ALLEGED GIFTEKTM’s ACCUSED PRODUCT (See, Dkt. 1)

25
26 27. On information and belief, FRAZIER knew that the ‘022 Design
27 Patent was not infringed by GIFTEKTM but made the misrepresentation by issuing
28
9
1 the TOS NOTICE in bad faith only to cause AMAZON to remove GIFTEKTM
2 PRODUCTS’ listings and prevent GIFTEKTM from competing with
3 POPSOCKETS on AMAZON. Even as an ordinary observer, FRAIZER knew that
4 any such infringement contentions was objectively baseless.
5
6 28. On information and belief, prior to July 1, 2017, FRAZIER had made
7 misrepresentations in bad faith in one or more DMCA NOTICES and TOS
8 NOTICES to AMAZON regarding eleven (11) of GIFTEKTM’s PRODUCTS, i.e.,
9 ASINs.: B0711667XF; B0727QKV9Z; B072FL473B; B072BBD8VM;
10 B072P1SBSW; B07254NNCG; B071V77KBW; B071FCJGFV; B071SB1P42;
11 B072P28ZJ1; and B072BB63WV.
12
13 29. On information and belief, FRAZIER had made the misrepresentations

14 in the DMCA NOTICES to AMAZON regarding these 11 ASINs in bad faith and
15 she knew that POPSOCKETS was not the copyright owner because she had been
16 informed that GIFTEKTM had either purchased the CUTOMIZED IMAGES at
17 http://www.istockphoto.com or that said CUTOMIZED IMAGES were fallen into
18 the public domain and thus available for free to use at https://www.pexels.com.
19
20 30. On information and belief, FRAZIER had made the

21 misrepresentations in the TOS NOTICES to AMAZON regarding these 11 ASINs
22 in bad faith because FRAZIER knew that the ‘022 Design Patent was not infringed
23 by GIFTEKTM but made the misrepresentation by issuing the TOS NOTICES in
24 bad faith only to cause AMAZON to remove GIFTEKTM PRODUCTS’ listings
25 and prevent GIFTEKTM from competing with POPSOCKETS on AMAZON. Even
26 as an ordinary observer, FRAIZER knew that any such infringement contentions
27 would be objectively baseless.
28
10
1 31. On July 1, 2017, AMAZON emailed GIFTEKTM stating that it has

2 reinstated the 11 ASINs clearly revealing FRAIZER’s bad faith misrepresentation
3 made in the TOS NOTICES and the DMCA NOTICES. (See, Exhibit-5)
4
5 32. On August 24, 2017, while POPSOCKETS’ Texas Action was

6 pending, AMAZON emailed GIFTEKTM stating that it has received, on
7 information and belief, a DMCA NOTICE from FRAZIER and has removed nine
8 (9) products corresponding to the ASINs.: B07455SGXR; B074565RDD;
9 B073J83PZJ; B07453KF92; B07459SV5H; B07452MJDF; B07459FMZG;
10 B07457CKHR; and B073JB8451. (See, Exhibit-6)
11

13 the DMCA NOTICE to AMAZON regarding these 9 ASINs in bad faith and she
14 knew that these ASINs did not belong to GIFTEKTM but made the
15 misrepresentation by issuing the DMCA NOTICE in bad faith only to cause
16 AMAZON to remove GIFTEKTM PRODUCTS’ listings and prevent GIFTEKTM
17 from competing with POPSOCKETS on AMAZON.
18
19 34. On September 27, 2017, while POPSOCKETS’ Texas Action was

21 information and belief, one or more DMCA NOTICES and one or more TOS
22 NOTICES from FRAZIER and has removed one (1) product corresponding to the
23 ASIN.: B071LHHPDX. (See, Exhibit-7)
24

26 in the DMCA NOTICES to AMAZON regarding this 1 ASIN in bad faith and she
27 knew that POPSOCKETS was not the copyright owner because she had been
28
11

4

6 misrepresentations in the TOS NOTICES to AMAZON regarding this 1 ASIN in
7 bad faith because FRAZIER knew that the ‘022 Design Patent was not infringed by
8 GIFTEKTM but made the misrepresentation by issuing the TOS NOTICES in bad
9 faith only to cause AMAZON to remove GIFTEKTM PRODUCTS’ listings and
10 prevent GIFTEKTM from competing with POPSOCKETS on AMAZON. Even as
11 an ordinary observer, FRAIZER knew that any such infringement contentions
13
14 37. On October 23, 2017, AMAZON emailed GIFTEKTM stating that it

15 has reinstated the 1 ASIN clearly revealing FRAIZER’s bad faith misrepresentation
16 made in the DMCA NOTICES and the TOS NOTICES with respect to infringement
17 of the ‘022 Design Patent and POPSOCKETS’ copyright ownership. (See, Exhibit-
18 8)
19
20 38. On this last email of September 27, 2017, AMAZON warned

21 GIFTEKTM that its account is under review. AMAZON stated: “[I]f we receive
22 more complaints about your listings, we may not allow you to sell on
23 Amazon.com.”
24
25 39. On September 27, 2017 and on October 3, 2017, GIFTEKTM, via its
26 undersigned counsel, emailed AMAZON to relist GIFTEKTM PRODUCTS having
27 the CUTOMIZED IMAGES corresponding to some or all of the aforementioned
28
12
1 REMOVED AMAZON LISTINGS, to no avail, because AMAZON stated that it

2 would not relist those products unless and until POPSOCKETS retracted its DMCA
3 NOTICES and/or TOS NOTICES.
4
5 40. On October 25, 2017, GIFTEKTM, via its undersigned counsel,

6 emailed POPSOCKETS’ counsel requesting POPSOCKETS to retract its DMCA
7 NOTICES and/or TOS NOTICES corresponding to the remainder of the
8 REMOVED AMAZON LISTINGS since the parties are litigating their disputes in
9 court.
10
11 41. On October 30, 2017, POPSOCKES, on information and belief,

12 retracted its DMCA NOTICES and/or TOS NOTICES and AMAZON relisted all
13 of GIFTEKTM PRODUCTS corresponding to the remainder of the REMOVED
14 AMAZON LISTINGS.
15
16 42. On November 13 and 14, 2017, AMAZON emailed GIFTEKTM that

17 it has suspended its account at least partly because of POPSOCKETS’ pending
18 DMCA NOTICES and/or TOS NOTICES with AMAZON and that GIFTEKTM
19 should contact POPSOCKETS requesting that the latter retract its complaint.
20
21 43. On November 15, 2017, GIFTEKTM, via its undersigned counsel,

22 spoke telephonically with POPSOCKETS’ counsel explaining AMAZON’s
23 response and requesting POPSOCKETS to retract any and all of its DMCA
24 NOTICES and/or TOS NOTICES.
25
26 44. On the same day, POPSOCKETS’ counsel emailed GIFTEKTM’s

27 undersigned counsel stating: “PopSockets is not responsible for the takedown
28
13
1 request(s) identified below. PopSockets further confirmed with Amazon today that
2 PopSockets has no association with Complaint ID: 1191163301.”
3
4 45. On the same day, GIFTEKTM’s undersigned counsel emailed

5 AMAZON providing them with POPSOCKETS’ response and requesting that
6 AMAZON reinstate GIFTEKTM’s account.
7
8 46. On November 15, 2017, AMAZON issued several emails to

9 GIFTEKTM again stating that POPSOCKET would have to retract its DMCA
10 NOTICES and/or TOS NOTICES before GIFTEKTM’s account could be
11 reinstated. (See, Exhibit-9)
12
13 47. POPSOCKETS’ alleged copyrighted Works of Art are substantially

14 similar to the drawings included in the ‘031 Patent disclosure. (See, Dkt. 1-2, Pages
15 2-5, and Dkt. 1-1, Page 4, Figures 1A and 1B, Page 10, Figures 6-9, and Page 11,
16 Figures 10A and 10B.) However, the ‘031 Patent disclosure, including the
17 drawings, does not include any copyright notice and the requisite authorization as
18 required under 37 CFR §§ 1.71(d) and (e), and 37 CFR §§ 1.84(s)7. The ‘031 Patent
19
20
7
37 CFR §§ 1.71. DETAILED DESCRIPTION AND SPECIFICATION OF THE
21
INVENTION.
22 “. . . (d) A copyright or mask work notice may be placed in a design or utility
23 patent application adjacent to copyright and mask work material contained
therein. The notice may appear at any appropriate portion of the patent application
24
disclosure. For notices in drawings, see § 1.84(s). The content of the notice must
25 be limited to only those elements provided for by law. For example, “©1983 John
Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly
26
limited and, under current statutes, legally sufficient notices of copyright and
27 mask work, respectively. Inclusion of a copyright or mask work notice will be
28
permitted only if the authorization language set forth in paragraph (e) of this
14
1 was first published on December 27, 2012 and POPSOCKETS filed to register its
2 alleged copyrights to those drawings on July 20, 2017.
3
4 48. An actual controversy exists between DEFENDANT GIFTEKTM on

5 one hand, and PLAINTIFF POPSOCKETS on the other hand, under 28 U.S.C. §
6 2201 relating to the alleged infringement and validity of the ’031 Patent.
7
10
11
12
section is included at the beginning (preferably as the first paragraph) of the
13
specification.
14 (e) The authorization shall read as follows:
15
A portion of the disclosure of this patent document contains material which is
subject to (copyright or mask work) protection. The (copyright or mask work)
16 owner has no objection to the facsimile reproduction by anyone of the patent
17 document or the patent disclosure, as it appears in the Patent and Trademark
Office patent file or records, but otherwise reserves all (copyright or mask work)
18
rights whatsoever. . .”
19 37 CFR §§ 1.84. STANDARDS FOR DRAWINGS.
“. . . (s) Copyright or Mask Work Notice. A copyright or mask work notice may
20
appear in the drawing, but must be placed within the sight of the drawing
21 immediately below the figure representing the copyright or mask work material
22 and be limited to letters having a print size of.32 cm. to.64 cm. (1/8 to 1/4 inches)
high. The content of the notice must be limited to only those elements provided
23
for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John
24 Doe” (17 U.S.C. 909) would be properly limited and, under current statutes,
legally sufficient notices of copyright and mask work, respectively. Inclusion of a
25
copyright or mask work notice will be permitted only if the authorization language
26 set forth in § 1.71(e) is included at the beginning (preferably as the first
27
paragraph) of the specification. . .”
28
15
1 49. Because PLAINTIFF POPSOCKETS filed the instant COMPLAINT

2 against DEFENDANT GIFTEKTM, the latter has standing to file counterclaims for
3 declaratory judgments of non-infringement and invalidity.
4
5 COUNT ONE: DECLARATORY JUDGEMENT OF NON-

6 INFRINGEMENT OF THE ‘031 PATENT
7
8 50. GIFTEKTM realleges and incorporates by reference the allegations of

9 paragraphs 1-49 inclusive, as though fully set forth.
10
11 51. Based on PLAINTIFF POPSOCKETS’ filing of the COMPLAINT

12 and at least DEFENDANT GIFTEKTM’s denial of infringement of the ‘031 Patent,
13 an actual controversy has arisen and now exists as to whether DEFENDANT
14 GIFTEKTM infringes the ’031 Patent.
15
16 52. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201

17 et seq., DEFENDANT GIFTEKTM requests a declaration by the Court that
18 DEFENDANT GIFTEKTM has not infringed and does not infringe any claim of
19 the ‘031 Patent under any theory (including directly (whether individually or
20 jointly) or indirectly (whether contributorily or by inducement)).
21
22 COUNT TWO: DECLARATORY JUDGEMENT OF INVALIDITY OF

23 THE ‘031 PATENT
24

27
28
16
1 54. Based on PLAINTIFF POPSOCKETS’ filing of the COMPLAINT

2 and at least DEFENDANT GIFTEKTM’s denial of validity of the ‘031 Patent, an
3 actual controversy has arisen and now exists as to the validity of the claims of the
4 ‘031 Patent.
5
6 55. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201

7 et seq., DEFENDANT GIFTEKTM requests a declaration by the Court that the
8 claims of the ‘031 Patent are invalid for failure to comply with one or more of the
9 requirements of United States Code, Title 35, including without limitation, 35
10 U.S.C. §§ 101, 102, 103, 112, and 116 and the rules, regulations, and laws
11 pertaining thereto.
12
13 COUNT THREE: CALIFORNIA UCL (B&P CODE § 17200 ET SEQ)

14

17
18 57. POPSOCKETS has made several bad faith misrepresentations made in

19 the TOS NOTICES to AMAZON concerning GIFTEKTM’s alleged infringement
20 of the ‘022 Design Patent knowing such contentions were objectively baseless, and
21 the TOS NOTICES to EBAY concerning GIFTEKTM’s alleged trademark
22 infringement with knowledge of its classic fair use. POPSOCKETS wrongful
23 conduct has caused EBAY to remove GIFTEKTM’s PRODUCTS and AMAZON
24 to suspend GIFTEKTM’s account, effectively operating as an extrajudicial de facto
25 injunction against GIFTEKTM.
26
27
28
17
1 58. POPSOCKETS has also obtained copyright registrations for some, if

2 not all, of the alleged Works of Art which are substantially similar to the drawings
3 included in the ‘031 Patent disclosure publication without providing any copyright
4 notice and the requisite authorization as required under 37 CFR §§ 1.71(d) and (e),
5 and 37 CFR §§ 1.84(s), and almost five (5) years later has asserted those alleged
6 copyright rights against the general public and its competitors including
7 GIFTEKTM.
8
9 59. POPSOCKETS made these bad faith misrepresentations before and

10 after it filed suit against GIFTEKTM having full knowledge of their impacts on
11 EBAY and AMAZON and intending to harm GIFTEKTM by preventing
12 GIFTEKTM from selling its products on two of the largest Internet retailers, EBAY
13 and AMAZON, depriving tens of millions of online shoppers from purchasing
14 competing products from GIFTEKTM.
15
16 60. Juxtaposing these wrongful acts and POPSOCKETS’ bad faith

17 misrepresentations in the DMCA NOTICES, knowing it was not the copyright
18 owner of the CUTOMIZED IMAGES, shows a clear anticompetitive conduct.
19 POPSOCKETS’ conduct as described herein, including but not limited to,
20 repeatedly wielding an unenforceable design patent, complaining about fair use of
21 its alleged trademark, and claiming copyrights to publicly owned material, only to
22 portray its competitor GIFTEKTM as a wrongdoer to EBAY and AMAZON so as
23 to eliminate competition, constitutes unfair business practices in violation of
24 California Business and Professions Code Section 17200.
25
26 61. As a direct and proximate result of POPSOCKETS’ conduct,

27 GIFTEKTM has suffered and will continue to suffer damage. Specifically, by its
28
18
1 repeated misrepresentations to EABY and AMAZON, POPSOCKETS has further

2 damaged GIFTEKTM’s goodwill and business reputation by portraying
3 GIFTEKTM as a counterfeiter to EBAY and AMAZAN, thus, causing EBAY to
4 remove GIFTEKTM PRODUCT listings and AMAZON to do the same and further
5 suspend GIFTEKTM’s account. Unless enjoined by this Court, POPSOCKETS’
6 unfair business practices have and will continue to cause great and irreparable injury
7 to GIFTEKTM. Moreover, GIFTEKTM has no other adequate remedy at law for
8 such acts and threatened acts, and therefore pursuant to California Business and
9 Professions Code Section 17203, a preliminary and permanent injunction should
10 issue.
11
12 62. The unfair business practices set forth herein have been undertaken
13 with knowledge by POPSOCKETS willfully with the intention of causing harm to
14 GIFTEKTM in the form of lost sales and for the calculated purpose of damaging
15 GIFTEKTM’s goodwill and business reputation.
16
17 63. POPSOCKETS’ unfair business practices set forth herein have

18 deprived GIFTEKTM of the right to sell its products including GIFTEKTM
19 PRODUCTS and to control the use of its goodwill and business reputation.
20
21 64. As a direct and proximate result of POPSOCKETS’ unfair business

22 practices set forth herein, GIFTEKTM has suffered damages in the form of lost
23 sales and will continue to suffer damages in an amount that is not presently
24 ascertainable but will be proven at trial. GIFTEKTM is entitled to all available relief
25 provided for in California Unfair Competition Law (B&P Code § 17200 et seq.)
26 including permanent injunctive relief.
27
28
19
1 65. POPSOCKETS committed the acts alleged herein intentionally,

2 fraudulently, maliciously, willfully, wantonly and oppressively, with intent to injure
3 GIFTEKTM in its business and with conscious disregard for GIFTEKTM’s rights,
4 thereby justifying awards of punitive and exemplary damages in amounts sufficient
5 to punish and to set an example for others.
6
7 COUNT FOUR: 17 U.S.C. § 512 (F) MISREPRESENTATION

8

11
12 67. On information and belief, POPSOCKETS has made bad faith

13 misrepresentations in several DMCA NOTICES to EBAY and AMAZON
14 regarding at least the REMOVED EBAY LISTINGS and the REMOVED
15 AMAZON LISTINGS and POPSOCKETS knew that it was not the copyright
16 owner.
17
18 68. On information and belief, POPSOCKETS had actual subjective

19 knowledge of the aforementioned misrepresentations because she knew that
20 GIFTEKTM had either purchased the CUTOMIZED IMAGES at
22 the public domain and thus available for free to use at https://www.pexels.com, and
23 therefore POPSOCKETS was not the right owner. With this actual subjective
24 knowledge, POPSOCKETS acted in bad faith when it sent the DMCA NOTICES,
25 knowingly and materially misrepresenting that they had concluded that the
26 CUTOMIZED IMAGES were infringing.
27
28
20
1 69. POPSOCKETS violated 17 U.S.C. § 512(f) by knowingly materially

2 misrepresenting that the CUTOMIZED IMAGES infringed POPSOCKETS’
3 copyright.
4
5 70. As a direct and proximate result of POPSOCKETS’ actions,

6 GIFTEKTM has been injured substantially and irreparably. Such injury includes,
7 but is not limited to, the lost sales and account suspension at AMAZON.
8
9 COUNT FIVE: INTENTIONAL INTERFERENCE WITH

10 CONTRACTUAL RELATIONS
11

14
15 72. GIFTEKTM sells its PRODUCTS on EBAY and AMAZON

16 according to EBAY’s Terms of Service and AMAZON’s Service Agreement.
17
18 73. POPSOCKETS knew of the Terms of Service and Service Agreement

19 between GIFTEKTM and EBAY, and GIFTEKTM and AMAZON, because
20 POPSOCKETS itself has been selling and continues to sell its competing products
21 according to the same agreements on EBAY and AMAZON.
22
23 74. Beginning in February 2017 through May 2017, POPSOCKETS made

24 several misrepresentations by issuing several TOS NOTICES to EBAY claiming
25 trademark infringement in bad faith because it knew POPSOCKETS’ alleged
26 trademark was not infringed by GIFTEKTM since any alleged use of the terms POP
27
28
21
1 and SOCKETS by GIFTEKTM was for describing its products and as such was a
2 classic fair use of POPSOCKETS’ alleged trademark.
3
4 75. Beginning in June 2017 through November 13, 2017, POPSOCKETS

5 made several misrepresentations by issuing several TOS NOTICES to AMAZON
6 claiming GIFTEKTM infringed on its ‘022 Design Patent in bad faith because it
7 knew that any such infringement contentions would be objectively baseless.
8
9 76. POPSOCKETS’ repeated bad faith misrepresentations made in the

10 TOS NOTICES to EBAY and AMAZON concerning GIFTEKTM’s alleged
11 trademark infringement and the ‘022 Design Patent infringement, even after it filed
12 suit against GIFTEKTM, was designed to destroy GIFTEKTM’s relationships with
13 EBAY and AMAZON.
14
15 77. As a result of POPSOCKETS’ TOS NOTICES, EBAY removed

16 twenty-five (25) of GIFTEKTM PRODUCTS listings.
17
18 78. On or about November 13, 2017, AMAZON suspended GIFTEKTM’s

19 account due to POPSOCKETS’ pending TOS NOTICES with AMAZON.
20

22 GIFTEKTM has suffered and will continue to suffer damage, the amount of which
23 will be proven at the time of trial.
24
25
26
27
28
22
1 REQUEST FOR RELIEF

2
3 WHEREFORE, in consideration of the foregoing, GIFTEKTM

4 respectfully requests that this Court enter judgement as follows:
5
6 I. A declaration that the ‘031 Patent is invalid;

7
8 II. A declaration that GIFTEKTM does not infringe, under any theory,
9 any valid claim of the ‘031 Patent;
10
11 III. A declaration that the POPSOCKETS takes nothing by its

12 COMPLAINT;
13
14 IV. A finding that this case is an exceptional case under 35 U.S.C. § 285
15 and an award to GIFTEKTM of its costs and attorneys’ fees incurred in this
16 action;
17
18 V. That POPSOCKETS has violated California statutory unfair

19 competition laws under B&P Code § 17200 et seq., and that said violations were
20 willful;
21
22 VI. For a preliminary and/or permanent injunction requiring

23 POPSOCKETS to withdraw its takedown requests and/or issuing further
24 takedown requests with AMAZON or any other online marketplace regarding its
25 complaint of alleged infringement of any kind as to GIFTEKTM PRODUCTS;
26
27
28
23
1 VII. After a hearing on the merits, grant GIFTEKTM an award of all

2 profits realized by POPSOCKETS by reason of POPSOCKETS’ unlawful acts
3 herein alleged.
4
5 VIII. Awarding GIFTEKTM punitive damages in connection with its

6 claims under California law;
7
8 IX. Attorney fees pursuant to 17 U.S.C. § 512(f);

9
10 X. Judgment against POPSOCKETS and in favor of GIFTEKTM;

11
12 XI. Dismissal of the COMPLAINT with prejudice; and

13
14 XII. Grant GIFTEKTM such other and further relief as the Court may
15 deem just.
16
17
18
19 Respectfully submitted,
20 Dated: January 27, 2018, AHMADSHAHI LAW OFFICES
21
22
23 By: /s/Michael M. Ahmadshahi

Michael M. Ahmadshahi, Esq.
24 Attorney for Defendants
25
26
27
28
24
1 DEMAND FOR JURY TRIAL

2
3 Pursuant to Fed. R. Civ. P. 38(b), GIFTEKTM demands a trial by jury on all

4 matters to which it is entitled by law.
5
6 Dated: January 27, 2018,

7
By: /s/ Michael M. Ahmadshahi
8 Michael M. Ahmadshahi, Esq.
2030 Main Street, Ste. 1300
10 Irvine, CA 92614
Telephone: 949.260.4997
11 Facsimile: 949.260.4996
13
14
15
16
17
18
19
20
21
22
23
24
25
26
27
28
25
1 CERTIFICATE OF SERVICE
2
3 I, Michael M. Ahmadshahi, certify under penalty of perjury that the

4 foregoing was served on the interested parties listed below, via the Court’s
5 Electronic Filing Program, United States Mail, Electronic Mail, and/or any other
6 manner permitted by the Federal Rules of Civil Procedure on January 27, 2018.
7
8 Dated: January 27, 2018,

9
12 Irvine, CA 92614
Telephone: 949.260.4997
13 Facsimile: 949.260.4996
15
16
17
18 Benjamin T. Horton
bhorton@marshallip.com
19 Tron Y. Fu
tfu@marshallip.com
20 Michelle Bolos
mbolos@marshallip.com
21 MARSHALL, GERSTEIN & BORUN LLP
233 S. Wacker Dr., 6300 Willis Tower
22 Chicago, IL 60606
Phone: (312) 474-6300
23 Facsimile: (312) 474-0448
24 Michelle E. Armond
michelle.armond@knobbe.com
25 KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street
26 Fourteenth Floor
Irvine, CA 92614
27 Phone: (949) 760-0404
Facsimile: (949) 760-9502
28
26
EXHIBIT-1
Case 8:17-cv-01825-JVS-DFM Document 40-1 Filed 01/27/18 Page 1 of 32 Page ID #:531
Michael M. Ahmadshahi, Esq. (Bar No. 219933)

2030 Main Street, Suite 1300
Irvine, CA 92614
Telephone: 949.260.4997
Facsimile: 949.260.4996
GiftekTM, LLC and
Zoe Ozveren
UNITED STATES DISTRICT COURT

CENTRAL DISTRICT OF CALIFORNIA
SOUTHERN DIVISION
)
POPSOCKETS, LLC, ) Case No.: 8:17-CV-01825-JVS-DFM8:16-
) CV-00040-JVS-KES
Plaintiff, )
)
v. )
) DEFENDANT GIFTEKTM, LLC
) FIRST SECOND AMENDED
GIFTEKTM, LLC AND ZOE ) COUNTERCLAIM PURSUANT TO
) FED.R.CIV.P. 15(a)(21)
OZVEREN )
) DEMAND FOR JURY TRIAL
Defendants. )
)
GIFTEKTM, LLC )
)
Counterclaimant, )
)
v. )
)
POPSOCKETS, LLC, ) DATE:
) TIME:
Counterdefendant. ) CTRM: 10C, 10th Fl.
)
Judge: The Honorable James V. Selna
1 COUNTERCLAIMS
2
3 Pursuant to this Court’s Order (Dkt. 38) and Rule 13 of the Federal Rules of
4 Civil Procedure, Defendant and Counterclaimant GiftekTM, LLC (“GIFTEKTM”
5 or “DEFENDANT”), by and through its undersigned counsel, hereby asserts the
6 following Second Amended Counterclaims, a redline copy of which is attached as
7 Exhibit-1, against Plaintiff and Counterdefendant PopSockets, LLC
8 (“POPSOCKETS” or “PLAINTIFF”), as follows:
9
10 JURISDICTION AND VENUE

11
12 1. This Court has subject matter jurisdiction over these Counterclaims

13 pursuant to 28 U.S.C. §§ 1331, 1338, 2201, and 2202, as well as Lanham Act, 15
14 U.S.C. § 1051, et seq. In addition, this Court has subject matter jurisdiction over
15 these Counterclaims pursuant to 28 U.S.C. § 1332(a) because there is complete
16 diversity of citizenship between the parties and the amount in controversy exceeds
17 $75,000, excluding interest and costs. This Court has supplemental jurisdiction over
18 these Counterclaims with respect to the California state law claims pursuant to 28
19 U.S.C. §1367(a).
20
21 2. This Court has personal jurisdiction over PLAINTIFF in that

22 PLAINTIFF consented to this Court’s jurisdiction by virtue of having filed its
23 Complaint (“COMPLAINT”) (Docket No. 1) against DEFENDANT.
24
25 3. Venue is proper in this district pursuant to 28 U.S.C. § 1391 as

26 PLAINTIFF may be found or transact business in this district, and the violations
27 alleged arose and are continuing to occur in this district. Venue is further
28
2
FIRST SECOND AMENDED COUNTERCLAIM
1 appropriate in this Court because PLAINTIFF consented to this venue as a result

2 of filing its COMPLAINT in this venue.
3
4 PARTIES
5
6 4. GIFTEKTM is a California Limited Liability Company with its

7 Principal Office at 198 Borrego, Irvine, CA 92618.
8
9 5. Upon information and belief, POPSOCKETS is a corporation

10 organized under the laws of Colorado with its Principal Place of Business at 3033
11 Sterling Circle, Boulder, CO 80301.
12
13 INTRODUCTION
14
15 6. GIFTEKTM1 is an online merchant of the Expanding Stand & Grip

16 (“GIFTEKTM PRODUCT”), commonly described as “pop sockets.”
17
18 6.
19
20 7. GIFTEKTM sells GIFTEKTM PRODUCT, through online

21 marketplaces, namely, Amazon.com, eBay.com, Wanelo.com, and Shopify.com
22
23
24 1
GIFTEKTM was organized as a Limited Liability Company under the laws of
25 the State of California on August 10, 2017. GiftekTM, LLC (“GIFTEKTM-TX”),
also an online merchant of GIFTEKTM PRODUCT, was organized as a Limited
26
Liability Company under the laws of the State of Texas on November 29, 2016.
27 On August 28, 2017, GIFTEKTM and GIFTEKTM-TX merged upon which the
28
latter disappeared and the former was the surviving entity.
3
1 which hosts GIFTEKTM’s own website at buygiftek.com. GIFTEKTM and

2 POPSOCKETS are competitors.
3
Formatted: Font: (Default) Times New Roman, 14 pt, Not
4 8. “Amazon.com (“AMAZON”) is an American electronic commerce Bold, Font color: Auto, Pattern: Clear
Formatted: Font: 14 pt
5 and cloud commerce and cloud computing company based in Seattle,
Formatted: Font: (Default) Times New Roman, 14 pt, Font
6 Washington that was founded by Jeff Bezos on July 5, 1994. The tech giant is the color: Auto, Pattern: Clear
7 largest Internet retailer in the world measured by revenue and market Formatted: Font: (Default) Times New Roman, 14 pt, Font
color: Auto, Pattern: Clear
2
8 capitalization, and second largest after Alibaba Group in terms of total sales.” Formatted: Font: 14 pt, Pattern: Clear
9 Formatted: Default Paragraph Font, Font: (Default) Times

New Roman, 14 pt, Font color: Auto, Pattern: Clear
10 9. “eBay Inc. (“EBAY”) is a multinational e-commerce corporation Formatted: Font: (Default) Times New Roman, 14 pt, Font
11 headquartered in San Jose, California that facilitates consumer-to- Formatted: Font: (Default) Times New Roman, 14 pt, Not
Bold, Font color: Auto, Pattern: Clear
12 consumer and business-to-consumer sales through its website. eBay was founded Formatted: Font: (Default) Times New Roman, 14 pt, Font
13 by Pierre Omidyar in 1995, and became a notable success story of the dot-com Formatted: Font: (Default) Times New Roman, 14 pt, Font
14 bubble. Today, eBay is a multi-billion-dollar business with operations in about 30
Formatted: Default Paragraph Font, Font: (Default) Times
New Roman, 14 pt, Font color: Auto, Pattern: Clear
15 countries. The company manages eBay.com, an online auction and shopping
16 website in which people and businesses buy and sell a wide variety of goods and New Roman, 14 pt, Font color: Auto, Pattern: Clear
17 services worldwide.”3 New Roman, 14 pt, Font color: Auto, Pattern: Clear
18 New Roman, 14 pt, Font color: Auto, Pattern: Clear
19 10. “More than half of U.S. online consumers begin their product searches New Roman, 14 pt, Font color: Auto, Pattern: Clear
20 on Amazon.com Inc.’s website or mobile app, a survey found.4” There are New Roman, 14 pt, Font color: Auto, Pattern: Clear
21
22
23 Formatted: Line spacing: single
24 Formatted: Font: 14 pt
2
See, https://en.wikipedia.org/wiki/Amazon_(company). Formatted: Font: 14 pt
26 3
See, https://en.wikipedia.org/wiki/EBay. Formatted: Font: 14 pt
4
27 See, https://www.bloomberg.com/news/articles/2016-09-27/more-than-50-of- Formatted: Font: 14 pt
28
shoppers-turn-first-to-amazon-in-product-search Formatted: Font: 14 pt
4
1 approximately 186 million online shoppers on AMAZON and 86 million online

2 shoppers on EBAY5.
3
4 11. On information and belief, both EBAY and AMAZON are considered
5 Internet Service Providers (“ISPs”).
6
7 12. On information and belief, pop sockets that are aesthetically similar to
8 GIFTEKTM PRODUCT, have been sold online at least on EBAY and AMAZON
9 by third parties at least since December 1, 2016 in the United States, Canada,
10 Europe, and Asia.
11
Formatted: Indent: Left: 0", First line: 0.5"
12 7.
13
14 COMMON ALLEGATIONS
15
16 13. In the period from February 2017 through May 2017, eBay.com
17 (“EBAY”) issued several emails to GIFTEKTM stating that it has received, on
18 information and belief, takedown notices pursuant to 15 U.S.C. § 512(c) (“DMCA
19 NOTICE”) takedown notices from POPSOCKETS claiming violation of its
20 copyrights, and takedown notices pursuant to its Terms of Service (“TOS
21 NOTICE”) from POPSOCKETS claiming violation of its alleged trademark.
22
23 14. POPSOCKETS’ intellectual property manager, Kelly Frazier

24 (“FRAZIER”), is a licensed patent agent, registration No. 64,639 (see, Exhibit-2)
25 and, on information and belief, prosecutes both utility and design patent
26
27 https://www.statista.com/statistics/271450/monthly-unique-visitors-to-us-retail-
websites/ Formatted: Font: 14 pt
28
5
1 applications at the United States Patent and Trademark Office (“USPTO”), who, on
2 information and belief, issued the DMCA NOTICES and TOS NOTICES to EBAY.
3
4 8. and trademark.
5
6 15. As a result of POPSOCKETS’ DMCA NOTICES and TOS

7 NOTICEStakedown notices, EBAY removed GIFTEKTM PRODUCTS having
8 customized images (“CUTOMIZED IMAGES”) corresponding to at least the
9 following: 272561500483, 272561511662, 272561511665, 272561616868,
10 272561668842, 272562170282, 272562196518, 272566019363, 272566039512,
11 272567840689, 272567850157, 272569275212, 272580169511, 272580175417,
12 272580177489, 272580182994, 272580206650, 272580217814, 272596662233,
13 272603691558, 272641975824, 272643729025, 272645259218, 272646862176,
14 272647036324 (collectively “REMOVED EBAY LISTINGS”).
15

17 one or more DMCA NOTICES to EBAY regarding these REMOVED EBAY
18 LISTINGS in bad faith because she knew that POPSOCKETS was not the copyright
19 owner.
20
21 17. On information and belief, FRAZIER made misrepresentations in one

22 or more TOS NOTICES to EBAY regarding these REMOVED EBAY LISTINGS
23 in bad faith because she knew POPSOCKETS’ alleged trademark was not infringed
24 by GIFTEKTM because any alleged use of the terms POP and SOCKETS by
25 GIFTEKTM was for describing its products and as such was a classic fair use of
26 POPSOCKETS’ alleged trademark.
27
28
6
1 18. On information and belief, FRAIZER issued the DMCA NOTICES

2 and the TOS NOTICES in bad faith only to cause EBAY to remove GIFTEKTM
3 PRODUCTS’ listings and prevent GIFTEKTM from selling on EBAY.
4
5 9.
6
7 10.19. In or about June 2017, Amazon.com (“AMAZON”) emailed

8 GIFTEKTM stating that it has received, on information and belief, a TOS NOTICE
9 pursuant to Amazon’s Service Agreement, takedown notice from POPSOCKETS
10 FRAIZER claiming violation of its “utility patent.”
11
12 11.20. On June 12, 2017, GIFTEKTM emailed POPSOCKETS stating that it

13 did not infringe any patent but was willing to “work this out” without any
14 adversarial proceedings in court.
15
16 12.21. In the period between June 12, 2017 and June 19, 2017, in a series of
17 emails between GIFTEKTM and POPSOCKETS, the latter refused to work with
18 the former and on October 18, 2017 filed its COMPLAINT6 asserting, amongst
19 others, infringement of the U.S. Patent No. 8,560,031 (the “’‘031 Patent”).
20
21 22. On information and belief, in the period from June 19, 2017 and
22 October 30, 2017, FRAIZER POPSOCKETS hasd made several misrepresentations
23 by issuinged, at least to AMAZON, several takedown DMCA NOTICES claiming
24
6
25 POPSOCKETS first filed its Complaint against GIFTEKTM-TX, entitled
PopSockets, LLC v GiftekTM, LLC and Zoe Ozveren, U.S. District Court for the
26
Southern District of Texas, Case 4:17-cv-02463. The case was voluntarily
27 dismissed without prejudice upon the parties’ agreement to refile the case in
28
California.
7
1 copyright infringement and several TOS NOTICES claimingnotices, at least to

2 AMAZON claiming copyright infringement, design patent infringement, and
3 utility patent infringement as described below.
4

6 AMAZON removed GIFTEKTM PRODUCTS having CUTOMIZED IMAGES
7 corresponding to at least the following Amazon Seller Identification Numbers
8 (“ASINs”), B071ZKTTC3, B071G6GXTL, B071ZN9TK9, B071KVR27C,
9 B072P28ZJ1, B072FL473B, B0711667XF, B0727QKV9Z, B072BB63WV,
10 B071167MRH, B072J3XDDQ, B071H8WWKW, B072P26MCC, B0713RZGH5,
11 B072HHKBGT, B072P23PQ7, B071LHHPDX, B0713RSLYN, B072P1CDY9,
12 B072J41HRZ, B071DPFYL1, B071RMJB7X, B072HHMZ19, B071LJYYLF,
13 B072BBD8VM, B072P1SBSW, B07254NNCG, B071V77KBW, B071FCJGFV,
14 B071SB1P42, B07455SGXR, B074565RDD, B073J83PZJ, B07453KF92,
15 B07459SV5H, B07452MJDF, B07459FMZG, B07457CKHR, B073JB8451, and
16 B071LHHPDX (collectively “REMOVED AMAZON LISTINGS”).
17
18 24. GIFTEKTM requested POPSOCKETS to retract its DMCA

19 NOTICES and TOS NOTICES, and AMAZON to relist its products providing
20 evidence to AMAZON and, on information and belief, to POPSOCKETS who were
21 copied on the emails to AMAZON that GIFTEKTM had either purchased the
22 CUTOMIZED IMAGES at http://www.istockphoto.com or that said CUTOMIZED
23 IMAGES were fallen into the public domain and thus available for free to use at
24 https://www.pexels.com, and therefore POPSOCKETS was not the right owner.
25
26 25. On June 9, 2017, AMAZON emailed GIFTEKTM stating that
27 FRAIZER, prior to June 9, 2017, had issued a TOS NOTICE claiming violation of
28
8
Case 8:17-cv-01825-JVS-DFM Document 40-1 Filed 01/27/18 Page 10 of 32 Page ID
#:540
Formatted: Font: Not Italic

1 POPSOCKETS’ “design patent.” (See, Exhibit-3) GIFTEKTM had appealed
2 AMAZON’s decision because in that same email AMAZON stated that it had
3 determined POPSOCKETS’ allegations were false and on June 9, 2017, AMAZON
4 relisted GIFTEKTM PRODUCTS corresponding to ASINs.: B0722N1G4R and
5 B071RMNKFF, clearly revealing FRAIZER’s bad faith misrepresentation made in
6 the TOS NOTICE with respect to infringement of the ‘022 Design Patent. In the
7 same email, however, AMAZON stated that FRAZIER, prior to June 9, 2017, had
8 issued another TOS NOTICE claiming violation of POPSOCKETS’ “utility patent”
9 regarding the same ASINs B0722N1G4R and B071RMNKFF and requested that
Formatted: Default Paragraph Font, Font: 9 pt
10 GIFTEKTM contact FRAZIER at fakes@popsockets.com to resolve the issue.
11
12 26. POPSOCKETS’ one and only U.S. Design Patent No. D777,022 (the
13 “‘022 Design Patent”) (See, Exhibit-4) is shown below and compared with the
14 alleged GIFTEKTM’s Accused Product:
15
16
17
18
19
20
21
22
23
24
25
26
27
28
9
#:541
Formatted: Centered
1 POPSOCKETS’ ‘022 Design Patent
2
3 ALLEGED GIFTEKTM’s ACCUSED PRODUCT (See, Dkt. 1)

4
10 27. On information and belief, FRAZIER knew that the ‘022 Design
11 Patent was not infringed by GIFTEKTM but made the misrepresentation by issuing
12 the TOS NOTICE in bad faith only to cause AMAZON to remove GIFTEKTM
13 PRODUCTS’ listings and prevent GIFTEKTM from competing with
14 POPSOCKETS on AMAZON. Even as an ordinary observer, FRAIZER knew that
15 any such infringement contentions was objectively baseless.
16
17 13.
18
19 14. As a result of POPSOCKETS’ takedown notices, AMAZON removed

20 GIFTEKTM PRODUCTS having CUTOMIZED IMAGES corresponding to at
21 least the following Amazon Seller Identification Numbers (“ASINs”),
22 B071ZKTTC3, B071G6GXTL, B071ZN9TK9, B071KVR27C, B072P28ZJ1,
23 B072FL473B, B0711667XF, B0727QKV9Z, B072BB63WV, B071167MRH,
24 B072J3XDDQ, B071H8WWKW, B072P26MCC, B0713RZGH5, B072HHKBGT,
25 B072P23PQ7, B071LHHPDX, B0713RSLYN, B072P1CDY9, B072J41HRZ,
26 B071DPFYL1, B071RMJB7X, B072HHMZ19, B071LJYYLF (collectively
27 “REMOVED ASINs”).
28
10
#:542
1 28. On information and belief, prior to July 1, 2017, FRAZIER had made
2 misrepresentations in bad faith in one or more DMCA NOTICES and TOS
3 NOTICES to AMAZON regarding eleven (11) of GIFTEKTM’s PRODUCTS, i.e.,
4 ASINs.: B0711667XF; B0727QKV9Z; B072FL473B; B072BBD8VM;
5 B072P1SBSW; B07254NNCG; B071V77KBW; B071FCJGFV; B071SB1P42;
6 B072P28ZJ1; and B072BB63WV.
7

9 in the DMCA NOTICES to AMAZON regarding these 11 ASINs in bad faith and
10 she knew that POPSOCKETS was not the copyright owner because she had been
14

16 misrepresentations in the TOS NOTICES to AMAZON regarding these 11 ASINs
17 in bad faith because FRAZIER knew that the ‘022 Design Patent was not infringed
18 by GIFTEKTM but made the misrepresentation by issuing the TOS NOTICES in
19 bad faith only to cause AMAZON to remove GIFTEKTM PRODUCTS’ listings
20 and prevent GIFTEKTM from competing with POPSOCKETS on AMAZON. Even
21 as an ordinary observer, FRAIZER knew that any such infringement contentions
23
24 31. On July 1, 2017, AMAZON emailed GIFTEKTM stating that it has

25 reinstated the 11 ASINs clearly revealing FRAIZER’s bad faith misrepresentation
26 made in the TOS NOTICES and the DMCA NOTICES. (See, Exhibit-5)
27
28
11
#:543
1 32. On August 24, 2017, while POPSOCKETS’ Texas Action was
3 information and belief, a DMCA NOTICE from FRAZIER and has removed nine
4 (9) products corresponding to the ASINs.: B07455SGXR; B074565RDD;
5 B073J83PZJ; B07453KF92; B07459SV5H; B07452MJDF; B07459FMZG;
6 B07457CKHR; and B073JB8451. (See, Exhibit-6)
7

9 the DMCA NOTICE to AMAZON regarding these 9 ASINs in bad faith and she
10 knew that these ASINs did not belong to GIFTEKTM but made the
11 misrepresentation by issuing the DMCA NOTICE in bad faith only to cause
12 AMAZON to remove GIFTEKTM PRODUCTS’ listings and prevent GIFTEKTM
13 from competing with POPSOCKETS on AMAZON.
14
15 34. On September 27, 2017, while POPSOCKETS’ Texas Action was

17 information and belief, one or more DMCA NOTICES and one or more TOS
18 NOTICES from FRAZIER and has removed one (1) product corresponding to the
19 ASIN.: B071LHHPDX. (See, Exhibit-7)
20

22 in the DMCA NOTICES to AMAZON regarding this 1 ASIN in bad faith and she
23 knew that POPSOCKETS was not the copyright owner because she had been
27
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12
#:544

2 misrepresentations in the TOS NOTICES to AMAZON regarding this 1 ASIN in
3 bad faith because FRAZIER knew that the ‘022 Design Patent was not infringed by
4 GIFTEKTM but made the misrepresentation by issuing the TOS NOTICES in bad
5 faith only to cause AMAZON to remove GIFTEKTM PRODUCTS’ listings and
6 prevent GIFTEKTM from competing with POPSOCKETS on AMAZON. Even as
7 an ordinary observer, FRAIZER knew that any such infringement contentions
9
10 37. On October 23, 2017, AMAZON emailed GIFTEKTM stating that it

11 has reinstated the 1 ASIN clearly revealing FRAIZER’s bad faith misrepresentation
12 made in the DMCA NOTICES and the TOS NOTICES with respect to infringement
13 of the ‘022 Design Patent and POPSOCKETS’ copyright ownership. (See, Exhibit-
14 8)
15
16 38. On this last email of September 27, 2017, AMAZON warned

17 GIFTEKTM that its account is under review. AMAZON stated: “[I]f we receive
18 more complaints about your listings, we may not allow you to sell on
19 Amazon.com.”
20
21 15. On information and belief, GIFTEKTM requested POPSOCKETS to

22 retract its takedown notices and AMAZON to relist its products providing evidence
23 that GIFTEKTM had either purchased the CUTOMIZED IMAGES or that said
24 CUTOMIZED IMAGES were available for free to use, and therefore
25 POPSOCKETS is not the right owner.
26
27
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#:545
1 16.39. On September 27, 2017 and on October 3, 2017, GIFTEKTM, via its
2 undersigned counsel, emailed AMAZON to relist GIFTEKTM PRODUCTS having
3 the CUTOMIZED IMAGES corresponding to some or all of the aforementioned
4 REMOVED ASINsREMOVED AMAZON LISTINGS, to no avail, because
5 AMAZON stated that it would not relist those products unless and until
6 POPSOCKETS retracted its DMCA NOTICES and/or TOS NOTICES takedown
7 notices.
8
9 17.40. On October 23, 2017, AMAZON relisted ASIN B071LHHPDX and

10 on October 25, 2017, GIFTEKTM, via its undersigned counsel, emailed
11 POPSOCKETS’ counsel requesting POPSOCKETS to retract its DMCA
12 NOTICES and/or TOS NOTICES its takedown notices corresponding to the
13 remainder of the REMOVED ASINsREMOVED AMAZON LISTINGS since the
14 parties are litigating their disputes in court..
15
16 18.41. On October 30, 2017, POPSOCKES, on information and belief,

17 retracted its DMCA NOTICES and/or TOS NOTICES takedown notices and
18 AMAZON relisted all of GIFTEKTM PRODUCTS corresponding to the remainder
19 of the REMOVED ASINsREMOVED AMAZON LISTINGS.
20
21 19.42. On November 13 and 14, 2017, AMAZON emailed GIFTEKTM that

22 it has suspended its account at least partly because of POPSOCKETS’ pending
23 DMCA NOTICES and/or TOS NOTICES complaints with AMAZON and that
24 GIFTEKTM should contact POPSOCKETS requesting that the latter retract its
25 complaint.
26
27
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#:546
1 20.43. On November 15, 2017, GIFTEKTM, via its undersigned counsel,

2 spoke telephonically with POPSOCKETS’ counsel explaining AMAZON’s
3 response and requesting POPSOCKETS to retract any and all of its DMCA
4 NOTICES and/or TOS NOTICES. takedown notices.
5
6 21.44. On the same day, POPSOCKETS’ counsel emailed GIFTEKTM’s

7 undersigned counsel stating: “PopSockets is not responsible for the takedown
8 request(s) identified below. PopSockets further confirmed with Amazon today that
9 PopSockets has no association with Complaint ID: 1191163301.”
10
11 22.45. On the same day, GIFTEKTM’s undersigned counsel emailed

12 AMAZON providing them with POPSOCKETS’ response and requesting that
13 AMAZON reinstate GIFTEKTM’s account.
14
15 23.46. On November 165, 2017, AMAZON issued several emails to

16 GIFTEKTM again stating that POPSOCKET would have to retract its DMCA
17 NOTICES and/or TOS NOTICES complaint before GIFTEKTM’s account could
18 be reinstated. (See, Exhibit-9)
19
20 47. POPSOCKETS’ alleged copyrighted Works of Art are substantially

21 similar to the drawings included in the ‘031 Patent disclosure. (See, Dkt. 1-2, Pages
22 2-5, and Dkt. 1-1, Page 4, Figures 1A and 1B, Page 10, Figures 6-9, and Page 11,
23 Figures 10A and 10B.) However, the ‘031 Patent disclosure, including the
24 drawings, does not include any copyright notice and the requisite authorization as
25 required under 37 CFR §§ 1.71(d) and (e), and 37 CFR §§ 1.84(s)7. The ‘031 Patent
26
27 37 CFR §§ 1.71. DETAILED DESCRIPTION AND SPECIFICATION OF THE
INVENTION. Formatted: Font: 14 pt
28
15
#:547
1 was first published on December 27, 2012 and POPSOCKETS filed to register its
2 alleged copyrights to those drawings on July 20, 2017.
3
6
“. . . (d) A copyright or mask work notice may be placed in a design or utility
7 patent application adjacent to copyright and mask work material contained
therein. The notice may appear at any appropriate portion of the patent application
8
disclosure. For notices in drawings, see § 1.84(s). The content of the notice must
9 be limited to only those elements provided for by law. For example, “©1983 John
10
Doe” (17 U.S.C. 401) and “*M* John Doe” (17 U.S.C. 909) would be properly
limited and, under current statutes, legally sufficient notices of copyright and
11 mask work, respectively. Inclusion of a copyright or mask work notice will be
12 permitted only if the authorization language set forth in paragraph (e) of this
section is included at the beginning (preferably as the first paragraph) of the
13
specification.
14 (e) The authorization shall read as follows:
15
A portion of the disclosure of this patent document contains material which is
subject to (copyright or mask work) protection. The (copyright or mask work)
16 owner has no objection to the facsimile reproduction by anyone of the patent
17 document or the patent disclosure, as it appears in the Patent and Trademark
Office patent file or records, but otherwise reserves all (copyright or mask work)
18
rights whatsoever. . .”
19 37 CFR §§ 1.84. STANDARDS FOR DRAWINGS.
“. . . (s) Copyright or Mask Work Notice. A copyright or mask work notice may
20
appear in the drawing, but must be placed within the sight of the drawing
21 immediately below the figure representing the copyright or mask work material
22 and be limited to letters having a print size of.32 cm. to.64 cm. (1/8 to 1/4 inches)
high. The content of the notice must be limited to only those elements provided
23
for by law. For example, “©1983 John Doe” (17 U.S.C. 401) and “*M* John
24 Doe” (17 U.S.C. 909) would be properly limited and, under current statutes,
legally sufficient notices of copyright and mask work, respectively. Inclusion of a
25
copyright or mask work notice will be permitted only if the authorization language
26 set forth in § 1.71(e) is included at the beginning (preferably as the first
27
paragraph) of the specification. . .”
28
16
#:548
1 24.48. An actual controversy exists between DEFENDANT GIFTEKTM on

2 one hand, and PLAINTIFF POPSOCKETS on the other hand, under 28 U.S.C. §
3 2201 relating to the alleged infringement and validity of the ’031 Patent.
4
5 49. Because PLAINTIFF POPSOCKETS filed the instant COMPLAINT

6 against DEFENDANT GIFTEKTM, the latter has standing to file counterclaims for
7 declaratory judgments of non-infringement and invalidity.
8
9 25.
10
11 COUNT ONE: DECLARATORY JUDGEMENT OF NON-

12 INFRINGEMENT OF THE ‘031 PATENT
13
14 26.50. GIFTEKTM realleges and incorporates by reference the allegations of

15 paragraphs 1-25 49 inclusive, as though fully set forth.
16
17 27.51. Based on PLAINTIFF POPSOCKETS’ filing of the COMPLAINT

18 and at least DEFENDANT GIFTEKTM’s denial of infringement of the ‘031 Patent,
19 an actual controversy has arisen and now exists as to whether DEFENDANT
20 GIFTEKTM infringes the ’031 Patent.
21
22 28.52. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201

23 et seq., DEFENDANT GIFTEKTM requests a declaration by the Court that
24 DEFENDANT GIFTEKTM has not infringed and does not infringe any claim of
25 the ‘031 Patent under any theory (including directly (whether individually or
26 jointly) or indirectly (whether contributorily or by inducement)).
27
28
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#:549
1 COUNT TWO: DECLARATORY JUDGEMENT OF INVALIDITY OF

2 THE ‘031 PATENT
3

6
7 30.54. Based on PLAINTIFF POPSOCKETS’ filing of the COMPLAINT

8 and at least DEFENDANT GIFTEKTM’s denial of validity of the ‘031 Patent, an
9 actual controversy has arisen and now exists as to the validity of the claims of the
10 ‘031 Patent.
11
12 31.55. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201

13 et seq., DEFENDANT GIFTEKTM requests a declaration by the Court that the
14 claims of the ‘031 Patent are invalid for failure to comply with one or more of the
15 requirements of United States Code, Title 35, including without limitation, 35
16 U.S.C. §§ 101, 102, 103, 112, and 116 and the rules, regulations, and laws
17 pertaining thereto.
18
19 COUNT THREE: CALIFORNIA UCL (B&P CODE § 17200 ET SEQ)

20

23
24 33. As its third ground for relief, GIFTEKTM hereby alleges that
25 POPSOCKETS has violated the California Unfair Competition Law (B&P Code §
26 17200 et seq.).
27
28
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#:550
1 57. POPSOCKETS has made several bad faith misrepresentations made in

2 the TOS NOTICES to AMAZON concerning GIFTEKTM’s alleged infringement
3 of the ‘022 Design Patent knowing such contentions were objectively baseless, and
4 the TOS NOTICES to EBAY concerning GIFTEKTM’s alleged trademark
5 infringement with knowledge of its classic fair use. POPSOCKETS wrongful
6 conduct has caused EBAY to remove GIFTEKTM’s PRODUCTS and AMAZON
7 to suspend GIFTEKTM’s account, effectively operating as an extrajudicial de facto
8 injunction against GIFTEKTM.
9
10 58. POPSOCKETS has also obtained copyright registrations for some, if

11 not all, of the alleged Works of Art which are substantially similar to the drawings
12 included in the ‘031 Patent disclosure publication without providing any copyright
13 notice and the requisite authorization as required under 37 CFR §§ 1.71(d) and (e),
14 and 37 CFR §§ 1.84(s), and almost five (5) years later has asserted those alleged
15 copyright rights against the general public and its competitors including
16 GIFTEKTM.
17
18 59. POPSOCKETS made these bad faith misrepresentations before and

19 after it filed suit against GIFTEKTM having full knowledge of their impacts on
20 EBAY and AMAZON and intending to harm GIFTEKTM by preventing
21 GIFTEKTM from selling its products on two of the largest Internet retailers, EBAY
22 and AMAZON, depriving tens of millions of online shoppers from purchasing
23 competing products from GIFTEKTM.
24
25 60. Juxtaposing these wrongful acts and POPSOCKETS’ bad faith

26 misrepresentations in the DMCA NOTICES, knowing it was not the copyright
27 owner of the CUTOMIZED IMAGES, shows a clear anticompetitive conduct.
28
19
#:551
1 POPSOCKETS’ conduct as described herein, including but not limited to,

2 repeatedly wielding an unenforceable design patent, complaining about fair use of
3 its alleged trademark, and claiming copyrights to publicly owned material, only to
4 portray its competitor GIFTEKTM as a wrongdoer to EBAY and AMAZON so as
5 to eliminate competition, The conduct of POPSOCKETS as described herein,
6 including without limitation, POPSOCKETS’ baseless takedown notices at least to
7 AMAZON constitutes unfair business practices in violation of California Business
8 and Professions Code Section 17200.
9
10 34. and EBAY, including but not limited to those which were directed at
11 the REMOVED EBAY LISTINGS and REMOVED ASINs and those other ASINs
12 that did not even belong to GIFTEKTM, concerning GIFTEKTM’s alleged
13 trademark infringement, copyright infringement, design patent infringement, and
14 utility patent infringement, is a clear case of wrongfully using the 17 U.S.C. § 512
15 notification procedures, which were designed to protect Internet Service Providers,
16 not copyright holders, as a sword to prevent GIFTEKTM from selling its products
17 including GIFTEKTM PRODUCTS and to damage GIFTEKTM’s goodwill and
18 business reputation, and it constitutes unlawful, unfair, and fraudulent business
19 practices in violation of California Business and Professions Code Section 17200.
20
21 35.61. As a direct and proximate result of POPSOCKETS’ conduct,

22 GIFTEKTM has suffered and will continue to suffer damage. Specifically, by its
23 repeated misrepresentations to EABY and AMAZON, POPSOCKETS has further
24 damaged GIFTEKTM’s goodwill and business reputation by portraying
25 GIFTEKTM as a counterfeiter to EBAY and AMAZAN, thus, causing EBAY to
26 remove GIFTEKTM PRODUCT listings and AMAZON to do the same and further
27 suspend GIFTEKTM’s account. Unless enjoined by this Court, POPSOCKETS’
28
20
#:552
1 unlawful, unfair, and fraudulentunfair business practices have and will continue to
2 cause great and irreparable injury to GIFTEKTM. Moreover, GIFTEKTM has no
3 other adequate remedy at law for such acts and threatened acts, and therefore
4 pursuant to California Business and Professions Code Section 17203, a preliminary
5 and permanent injunction should issue.
6
7 36.62. The unlawful, unfair, and fraudulentunfair business practices set forth
8 herein have been undertaken with knowledge by POPSOCKETS willfully with the
9 intention of causing harm to GIFTEKTM in the form of lost sales and for the
10 calculated purpose of misappropriating damaging GIFTEKTM’s goodwill and
11 business reputation.
12
13 37.63. POPSOCKETS’ unlawful, unfair, and fraudulentunfair business

14 practices set forth herein have deprived GIFTEKTM of the right to sell its products
15 including GIFTEKTM PRODUCTS and to control the use of its goodwill and
16 business reputation.
17
18 38.64. As a direct and proximate result of POPSOCKETS’ unlawful, unfair,

19 and fraudulentunfair business practices set forth herein, GIFTEKTM has suffered
20 damages in the form of lost sales and will continue to suffer damages in an amount
21 that is not presently ascertainable but will be proven at trial. GIFTEKTM is entitled
22 to all available relief provided for in California Unfair Competition Law (B&P
23 Code § 17200 et seq.) including permanent injunctive relief.
24
25 39.65. POPSOCKETS committed the acts alleged herein intentionally,

26 fraudulently, maliciously, willfully, wantonly and oppressively, with intent to injure
27 GIFTEKTM in its business and with conscious disregard for GIFTEKTM’s rights,
28
21
#:553
1 thereby justifying awards of punitive and exemplary damages in amounts sufficient

2 to punish and to set an example for others.
3
Formatted: Indent: First line: 0"
4 COUNT FOUR: 17 U.S.C. § 512 (F)
5 MISREPRESENTATIONCALIFORNIA COMMON LAW UNFAIR
6 COMPETITION
7

10
11 67. As its fourth ground for relief, GIFTEKTM hereby alleges

12 POPSOCKETS has violated the California Common Law Unfair Competition.On
13 information and belief, POPSOCKETS has made bad faith misrepresentations in
14 several DMCA NOTICES to EBAY and AMAZON regarding at least the
15 REMOVED EBAY LISTINGS and the REMOVED AMAZON LISTINGS and
16 POPSOCKETS knew that it was not the copyright owner.
17
18 68. On information and belief, POPSOCKETS had actual subjective
19 knowledge of the aforementioned misrepresentations because she knew that
20 GIFTEKTM had either purchased the CUTOMIZED IMAGES at
22 the public domain and thus available for free to use at https://www.pexels.com, and
Formatted: Font: (Default) Times New Roman, 14 pt
23 therefore POPSOCKETS was not the right owner. With this actual subjective
24 knowledge, POPSOCKETS acted in bad faith when it sent the DMCA NOTICES,
25 knowingly and materially misrepresenting that they had concluded that the
26 CUTOMIZED IMAGES were infringing.
27
28
22
#:554
1 69. POPSOCKETS violated 17 U.S.C. § 512(f) by knowingly materially
2 misrepresenting that the CUTOMIZED IMAGES infringed POPSOCKETS’
3 copyright.
4
5 70. As a direct and proximate result of POPSOCKETS’ actions,
6 GIFTEKTM has been injured substantially and irreparably. Such injury includes,
7 but is not limited to, the lost sales and account suspension at AMAZON.
8
Formatted: Indent: First line: 0"
9 COUNT FIVE: INTENTIONAL INTERFERENCE WITH
10 CONTRACTUAL RELATIONS
11

14
15 72. GIFTEKTM sells its PRODUCTS on EBAY and AMAZON

16 according to EBAY’s Terms of Service and AMAZON’s Service Agreement.
17
18 73. POPSOCKETS knew of the Terms of Service and Service Agreement

19 between GIFTEKTM and EBAY, and GIFTEKTM and AMAZON, because
20 POPSOCKETS itself has been selling and continues to sell its competing products
21 according to the same agreements on EBAY and AMAZON.
22
23 74. Beginning in February 2017 through May 2017, POPSOCKETS made

24 several misrepresentations by issuing several TOS NOTICES to EBAY claiming
25 trademark infringement in bad faith because it knew POPSOCKETS’ alleged
26 trademark was not infringed by GIFTEKTM since any alleged use of the terms POP
27
28
23
#:555
1 and SOCKETS by GIFTEKTM was for describing its products and as such was a
2 classic fair use of POPSOCKETS’ alleged trademark.
3
4 75. Beginning in June 2017 through November 13, 2017, POPSOCKETS

5 made several misrepresentations by issuing several TOS NOTICES to AMAZON
6 claiming GIFTEKTM infringed on its ‘022 Design Patent in bad faith because it
7 knew that any such infringement contentions would be objectively baseless.
8
9 76. POPSOCKETS’ repeated bad faith misrepresentations made in the

10 TOS NOTICES to EBAY and AMAZON concerning GIFTEKTM’s alleged
11 trademark infringement and the ‘022 Design Patent infringement, even after it filed
12 suit against GIFTEKTM, was designed to destroy GIFTEKTM’s relationships with
13 EBAY and AMAZON.
14
15 77. As a result of POPSOCKETS’ TOS NOTICES, EBAY removed

16 twenty-five (25) of GIFTEKTM PRODUCTS listings.
17
18 78. On or about November 13, 2017, AMAZON suspended GIFTEKTM’s

19 account due to POPSOCKETS’ pending TOS NOTICES with AMAZON.
20

22 GIFTEKTM has suffered and will continue to suffer damage, the amount of which
23 will be proven at the time of trial.
24
25 41.
26
27
28
24
#:556
1 42. The conduct of POPSOCKETS as described herein, including without

2 limitation, POPSOCKETS’ baseless takedown notices at least to AMAZON and
3 EBAY, including but not limited to those which were directed at the REMOVED
4 EBAY LISTINGS and REMOVED ASINs and those other ASINs that did not even
5 belong to GIFTEKTM, concerning GIFTEKTM’s alleged trademark infringement,
6 copyright infringement, design patent infringement, and utility patent infringement,
7 is a clear case of wrongfully using the 17 U.S.C. § 512 notification procedures,
8 which were designed to protect Internet Service Providers, not copyright holders,
9 as a sword to prevent GIFTEKTM from selling its products including GIFTEKTM
10 PRODUCTS and to damage GIFTEKTM’s goodwill and business reputation, and
11 it constitutes unfair competition in violation of the common law of the State of
12 California.
13
14 43. POPSOCKETS is a competitor of GIFTEKTM and has committed the

15 acts alleged herein intentionally in an effort to prevent GIFTEKTM from selling its
16 products including GIFTEKTM PRODUCTS and to exploit GIFTEKTM’s
17 goodwill and business reputation in the market.
18
19 44. POPSOCKETS’ acts alleged herein were intended to prevent

20 GIFTEKTM from selling its products including GIFTEKTM PRODUCTS and
21 further to capitalize on GIFTEKTM’s goodwill and business reputation associated
22 therewith for POPSOCKETS’ own pecuniary gain. GIFTEKTM has expended
23 substantial time, resources and effort in order to sell its products including
24 GIFTEKTM PRODUCTS and further to obtain its goodwill and business
25 reputation. As a result of GIFTEKTM’s efforts, POPSOCKETS is now unjustly
26 enriched and is benefiting from property rights that rightfully belong to
27 GIFTEKTM.
28
25
#:557
1 45. POPSOCKETS’ acts are willful, deliberate, and intended to capitalize

2 on GIFTEKTM’s property rights and to injure GIFTEKTM.
3
4 46. GIFTEKTM has no adequate remedy at law to compensate it fully for

5 the damages that have been caused and which will continue to be caused by
6 POPSOCKETS’ wrongful conducts as alleged herein, unless it is enjoined by this
7 Court.
8
9 47. The conduct herein complained of was extreme, outrageous, and was
10 inflicted on GIFTEKTM in reckless disregard of GIFTEKTM’s rights. Said conduct
11 was despicable and harmful to GIFTEKTM and as such supports an award of
12 exemplary and punitive damages in an amount sufficient to punish and make an
13 example of POPSOCKETS and to deter them from similar such conduct in the
14 future.
15
16 48. In light of the foregoing, GIFTEKTM is entitled to injunctive relief

17 prohibiting POPSOCKETS from violating GIFTEKTM’s rights and to recover all
18 damages, including attorneys’ fees, that GIFTEKTM has sustained and will sustain,
19 and all gains, profits and advantages obtained by POPSOCKETS as a result of its
20 wrongful conduct alleged above in an amount not yet known, and the costs of this
21 action.
22
23 REQUEST FOR RELIEF

24
25 WHEREFORE, in consideration of the foregoing, GIFTEKTM

26 respectfully requests that this Court enter judgement as follows:
27
28
26
#:558
1 I. A declaration that the ‘031 Patent is invalid;

2
3 II. A declaration that GIFTEKTM does not infringe, under any theory,
4 any valid claim of the ‘031 Patent;
5
6 III. A declaration that the POPSOCKETS takes nothing by its

7 COMPLAINT;
8
9 IV. A finding that this case is an exceptional case under 35 U.S.C. § 285
10 and an award to GIFTEKTM of its costs and attorneys’ fees incurred in this
11 action;
12
13 V. That POPSOCKETS has violated California State common and

14 statutory unfair competition laws under B&P Code § 17200 et seq., and that said
15 violations were willful;
16
17 VI. For a preliminary and/or permanent injunction requiring

18 POPSOCKETS to withdraw its takedown requests and/or issuing further
19 takedown requests with AMAZON or any other online marketplace regarding its
20 complaint of alleged copyright infringement of any kind as to GIFTEKTM
21 PRODUCTS;
22
23 VII. After a hearing on the merits, grant GIFTEKTM an award of all

24 profits realized by POPSOCKETS by reason of POPSOCKETS’ unlawful acts
25 herein alleged.
26
27
28
27
#:559
1 VIII. Awarding GIFTEKTM punitive damages in connection with its

2 claims under California law;
3
4 VIII.IX. Attorney fees pursuant to 17 U.S.C. § 512(f);
5
6 IX.X. Judgment against POPSOCKETS and in favor of GIFTEKTM;

7
8 X.XI. Dismissal of the COMPLAINT with prejudice; and

9
10 XI.XII. Grant GIFTEKTM such other and further relief as the Court
11 may deem just.
12
13
14
15 Respectfully submitted,
16 Dated: January 27, 2018January 11, 2018, AHMADSHAHI LAW
17 OFFICES
18
19
20 By: /s/Michael M. Ahmadshahi

22
23
24
25
26
27
28
28
#:560
10
11
12
13
14
15
16
17
18
19
20
21 DEMAND FOR JURY TRIAL

22
23 Pursuant to Fed. R. Civ. P. 38(b), GIFTEKTM demands a trial by jury on all

24 matters to which it is entitled by law.
25
26 Dated: January 27, 2018January 11, 2018,

27
28
29
#:561

1 AHMADSHAHI LAW OFFICES
2 2030 Main Street, Ste. 1300
Irvine, CA 92614
3 Telephone: 949.260.4997
Facsimile: 949.260.4996
4 Email: mahmadshahi@mmaiplaw.com
5
10
11
12
13
14
15
16
17
18
19
20
CERTIFICATE OF SERVICE
21
22
I, Michael M. Ahmadshahi, certify under penalty of perjury that the
23
foregoing was served on the interested parties listed below, via the Court’s
24
Electronic Filing Program, United States Mail, Electronic Mail, and/or any other
25
manner permitted by the Federal Rules of Civil Procedure on January 27,
26
2018January 11, 2018.
27
28
30
#:562
1 Dated: January 27, 2018January 11, 2018,

2
5 Irvine, CA 92614
Telephone: 949.260.4997
6 Facsimile: 949.260.4996
8
10
11 Benjamin T. Horton
bhorton@marshallip.com
12 Tron Y. Fu
tfu@marshallip.com
13 Michelle Bolos
mbolos@marshallip.com
14 MARSHALL, GERSTEIN & BORUN LLP
233 S. Wacker Dr., 6300 Willis Tower
15 Chicago, IL 60606
Phone: (312) 474-6300
16 Facsimile: (312) 474-0448
17 Michelle E. Armond
michelle.armond@knobbe.com
18 KNOBBE, MARTENS, OLSON & BEAR, LLP
2040 Main Street
19 Fourteenth Floor
Irvine, CA 92614
20 Phone: (949) 760-0404
Facsimile: (949) 760-9502
21
22
23
24
25
26
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31
EXHIBIT-2
EXHIBIT-3
EXHIBIT-4
EXHIBIT-5
EXHIBIT-6
EXHIBIT-7
EXHIBIT-8
Michael Ahmadshahi
From: Sales <giftektm@gmail.com>

Sent: Monday, October 23, 2017 12:06 PM
To: Michael Ahmadshahi
Subject: Fwd: Your Amazon.com Seller Account
---------- Forwarded message ---------

From: notice@amazon.com <notice@amazon.com>
Date: Man, Oct 23,2017 at 10:59 AM
Subject: Your Amazon.com Seller Account
To: IGiftekTM@gmail.com" <GiftekTM@gmail.com>
We reviewed your appeal and reinstated the following content:
ASIN: B071LHHPDX
Complaint ID: 1150680661
Sincerely,
Sincerely,
Seller Performance Team

Amazon.com
https://www.amazon.com
EXHIBIT-9
Michael Ahmadshahi
From: Zoe Ozveren <giftektm@gmail.com>

Sent: Thursday, November 16, 2017 3:39 AM
To: Michael Ahmadshahi
Subject: Fwd: Your Amazon.com selling privileges have been removed
(.
Begin forwarded message:
1
From: notice-request-dispute@amazon.com
Date: November 15, 2017 at 10:55:07 PM PST
To: giftektm@gmail.com
Subject: RE: Your Amazon.com selling privileges have been removed
Reply-To: notice-request-dispute+A2SSTOl22XlOSJ@amazon.com
Hello,
We still need more information about your plan to address rights owner complaints.
If you want to resolve this dispute, contact the rights owner:
-- fakes@popsockets.com
If resolved, ask the rights owner to contact us at notice@amazon.com to withdraw their complaint.
To sell on Amazon.com again, please send us a plan that explains
-- The issues that caused the complaints.
-- The actions you took to resolve the issues and prevent similar complaints.
Do not limit your plan to issues with specific orders. For help creating your plan, search for "Appeal the
Removal of Selling Privileges" in Seller Central Help. To send us your plan, click the Appeal button next to
this email on the Performance Notifications page in Seller Central.
We will review your plan and decide if you may sell on Amazon.com again.
To learn more about our policies, search for "Intellectual Property Violations" in Seller Central Help.
Have questions? We can help right away. Contact us (https:LLseliercentral.amazon.com/cu/contact

us/performance).
Complaint ID: 1194217121
From: giftektm@gmail.com
Sent: Monday, November 13,20179:25 PM (PST)
Subject: RE: Your Amazon.com selling privileges have been removed

PopSockets v. GiftekTM - Complaint

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PopSockets v. GiftekTM - Complaint

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Case 8:17-cv-01825-JVS-DFM Document 40 Filed 01/27/18 Page 1 of 26 Page ID #:505

Michael M. Ahmadshahi, Esq. (Bar No. 219933)

UNITED STATES DISTRICT COURT

10 JURISDICTION AND VENUE

12 1. This Court has subject matter jurisdiction over these Counterclaims

21 2. This Court has personal jurisdiction over PLAINTIFF in that

25 3. Venue is proper in this district pursuant to 28 U.S.C. § 1391 as

1 appropriate in this Court because PLAINTIFF consented to this venue as a result

6 4. GIFTEKTM is a California Limited Liability Company with its

9 5. Upon information and belief, POPSOCKETS is a corporation

15 6. GIFTEKTM1 is an online merchant of the Expanding Stand & Grip

18 7. GIFTEKTM sells GIFTEKTM PRODUCT, through online

1 8. “Amazon.com (“AMAZON”) is an American electronic commerce

7 9. “eBay Inc. (“EBAY”) is a multinational e-commerce corporation

18 14. POPSOCKETS’ intellectual property manager, Kelly Frazier

24 15. As a result of POPSOCKETS’ DMCA NOTICES and TOS NOTICES,

1 272562170282, 272562196518, 272566019363, 272566039512, 272567840689,

7 16. On information and belief, FRAZIER had made misrepresentations in

12 17. On information and belief, FRAZIER made misrepresentations in one

19 18. On information and belief, FRAIZER issued the DMCA NOTICES

23 19. In or about June 2017, AMAZON emailed GIFTEKTM stating that it

1 20. On June 12, 2017, GIFTEKTM emailed POPSOCKETS stating that it

16 23. As a result of POPSOCKETS’ DMCA NOTICES and TOS NOTICES,

1 B072BBD8VM, B072P1SBSW, B07254NNCG, B071V77KBW, B071FCJGFV,

6 24. GIFTEKTM requested POPSOCKETS to retract its DMCA

14 25. On June 9, 2017, AMAZON emailed GIFTEKTM stating that

16 POPSOCKETS’ ‘022 Design Patent

24 ALLEGED GIFTEKTM’s ACCUSED PRODUCT (See, Dkt. 1)

13 29. On information and belief, FRAZIER had made the misrepresentations

20 30. On information and belief, FRAZIER had made the

1 31. On July 1, 2017, AMAZON emailed GIFTEKTM stating that it has

5 32. On August 24, 2017, while POPSOCKETS’ Texas Action was

12 33. On information and belief, FRAZIER had made misrepresentations in

19 34. On September 27, 2017, while POPSOCKETS’ Texas Action was

25 35. On information and belief, FRAZIER had made the misrepresentations

1 informed that GIFTEKTM had either purchased the CUTOMIZED IMAGES at

5 36. On information and belief, FRAZIER had made the

14 37. On October 23, 2017, AMAZON emailed GIFTEKTM stating that it

20 38. On this last email of September 27, 2017, AMAZON warned

1 REMOVED AMAZON LISTINGS, to no avail, because AMAZON stated that it

5 40. On October 25, 2017, GIFTEKTM, via its undersigned counsel,

11 41. On October 30, 2017, POPSOCKES, on information and belief,

16 42. On November 13 and 14, 2017, AMAZON emailed GIFTEKTM that

21 43. On November 15, 2017, GIFTEKTM, via its undersigned counsel,

26 44. On the same day, POPSOCKETS’ counsel emailed GIFTEKTM’s

4 45. On the same day, GIFTEKTM’s undersigned counsel emailed

8 46. On November 15, 2017, AMAZON issued several emails to

13 47. POPSOCKETS’ alleged copyrighted Works of Art are substantially

4 48. An actual controversy exists between DEFENDANT GIFTEKTM on

1 49. Because PLAINTIFF POPSOCKETS filed the instant COMPLAINT

5 COUNT ONE: DECLARATORY JUDGEMENT OF NON-

8 50. GIFTEKTM realleges and incorporates by reference the allegations of

11 51. Based on PLAINTIFF POPSOCKETS’ filing of the COMPLAINT

16 52. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201

22 COUNT TWO: DECLARATORY JUDGEMENT OF INVALIDITY OF

25 53. GIFTEKTM realleges and incorporates by reference the allegations of

1 54. Based on PLAINTIFF POPSOCKETS’ filing of the COMPLAINT

6 55. Pursuant to the Federal Declaratory Judgment Act, 28 U.S.C. § 2201

13 COUNT THREE: CALIFORNIA UCL (B&P CODE § 17200 ET SEQ)

15 56. GIFTEKTM realleges and incorporates by reference the allegations of

18 57. POPSOCKETS has made several bad faith misrepresentations made in

1 58. POPSOCKETS has also obtained copyright registrations for some, if

9 59. POPSOCKETS made these bad faith misrepresentations before and

16 60. Juxtaposing these wrongful acts and POPSOCKETS’ bad faith