Global Cellular v. Otter Products

Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 1 of 37 Case 1:11-cv-02260-CAP Document 1 Filed 07/11/11 Page 1 of 14
IN THE UNITED STATES DISTRICT COURT FOR THE NORTHERN DISTRICT OF GEORGIA ATLANTA DIVISION GLOBAL CELLULAR, INC., a Georgia corporation, Plaintiff, vs. OTTER PRODUCTS, LLC, a Colorado limited liability company, Defendant. Declaratory Judgment Patent Copyright Trademark Unfair Competition Tortious Interference Defamation
Civil Action No.:
COMPLAINT
NATURE OF THE ACTION Plaintiff Global Cellular, Inc. (Global), through its undersigned attorney, complains of Defendant, Otter Products, LLC (OtterBox or Defendant), as follows: 1. This is an action seeking a declaratory judgment that Plaintiff does not
infringe any valid patent, copyright, trademark, other intellectual property rights of OtterBox and that Plaintiff has not violated any state unfair competition law, whether statutory or at common law. This action further seeks compensatory and punitive damages for unfair competition, tortious interference with Plaintiffs
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business relationships, and defamation, as well as injunctive relief and attorneys fees in accordance with the appropriate statutes, as set forth hereinafter. PARTIES Plaintiff 2. Global is a corporation organized and existing under the laws of the State of
Georgia, having its principal office at 6485 Shiloh Road, Building B-100, Alpharetta, GA 30005. Defendant 3. On information and belief, OtterBox is a limited liability company organized
and existing under the laws of the State of Colorado having a registered office at 1 Old Town Square, Suite 303, Fort Collins, CO 80524. JURISDICTION AND VENUE 4. This action arises under the federal Patent Act, 35 U.S.C. 101, et. seq., the
federal Copyright Act, 17 U.S.C. 101, et seq., the federal Trademark (Lanham) Act 15 U.S.C. 1051, et. seq., and under the federal Declaratory Judgment Act, 28 U.S.C. 2201, 2202. 5. This action is further based upon state law claims relating to tortious
interference. 6. This court has subject matter jurisdiction pursuant to 28 U.S.C. 1331,
1338(a), and 1338(b) because this action arises under Acts of Congress relating to
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patents, copyrights, and trademarks, and because it contains a claim of unfair competition joined with a substantial and related claim under the patent, copyright, and/or trademark laws. Subject matter jurisdiction over this action is conferred upon this court by 28 U.S.C. 1331, 28 U.S.C. 1338(a), 28 U.S.C. 1338(b), 17 U.S.C. 1121, and supplemental jurisdiction pursuant to 28 U.S.C. 1367. 7. This court has further subject matter jurisdiction pursuant to 28 U.S.C.
1332, because there is diversity of citizenship and the amount in controversy, exclusive of interest and costs, exceeds $75,000. 8. Venue is properly laid in the Northern District of Georgia pursuant to 28
U.S.C. 1391(a), (b), and 1391(c), in that Defendant committed the acts complained of herein within this judicial district, and it is subject to personal jurisdiction within this judicial district. Statement of Facts The Infringement Letter 9. Cellairis Franchise, Inc. (Cellairis) is the owner of a system (the System)
for the operation of Cellairis branded kiosks and other physical facilities (Business Units), which specialize in the sale of wireless/cellular telephone accessories and other related products (the Products) under marks owned and licensed by Plaintiff through the Business Units.
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10.
Plaintiffs marks, as used on Products, include the Cellairis mark, the
Cellairis.com mark, the dragonfly mark, the dragon fly mark, and the dragon fly (with logo) mark, all of which are federally registered to Global (the Marks). 11. The various Business Units are operated by franchisees of Cellairis
(Franchisees), and the various Business Units purchase Products directly from Global, which is in the business of supplying Products to the Franchisees who have been licensed to use the System pursuant to Franchise Agreements entered into between such Franchisees and Cellairis. 12. In view of the foregoing, Global has had, and continues to have business
relationships with such Franchisees. 13. No Products are manufactured, sold, offered for sale, or imported by
Cellairis, and no Products supplied to Franchisees are sold by Cellairis. 14. On or about May 19, 2009, Karen I. Boyd, Esq. of Turner Boyd LLP,
counsel for OtterBox, wrote and emailed a letter (the Infringement Letter), a true copy of which is attached hereto as Exhibit 1, in which Cellairis was expressly accused of selling a blatant copy of the OtterBox 3G iPhone Defender Series Case under the name Ultrabox and selling knock-off products [in] knowing and willful infringement of OtterBoxs intellectual property 15. In fact, Cellairis does not manufacture, sell, or import any Products.
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16.
The Infringement Letter (Exhibit 1) further stated that the iPhone Defender
Series case is protected under both federal and state statutory and common law. 17. The Infringement Letter (Exhibit 1) further stated, OtterBox registered the
iPhone Defender Series case with the United States Copyright office [sic], and it is the subject of a recently allowed United States design patent and pending utility patents. 18. The Infringement Letter (Exhibit 1) also asserted, Celairiss [sic] sale of the
UltraBox copy of the iPhone Defender series case infringes OtterBoxs copyright in iPhone Defender Series case, and upon issuance of the allowed design patent, will infringe that as well. 19. The Infringement Letter (Exhibit 1) further asserted that Cellairis was a
willful infringer and it expressly stated, Cellairis faces liability under the criminal infringement statute, 17 U.S.C. 506. 20. Notwithstanding the allegations in the Infringement Letter, Cellairis neither
manufactures, sells, offers for sale, nor imports any goods or Products, whereby it is impossible for Cellairis to have violated any patent, trademark, copyright, trade secret, or other intellectual property right of OtterBox; nor did the Infringement Letter specifically give notice of any U.S. Patent, any U.S. Copyright Registration, and U.S. Trademark Registration, or any other claimed right which allegedly gave rise to the Infringement Letter.
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21.
Accordingly, Cellairis and its Franchisees turned to Plaintiff, the supplier of
Products to Franchisees, regarding the false infringement allegations that OtterBox had leveled against Cellairis. 22. In view of Globals business relationship with the Franchisees, Global
reviewed the patents, trademarks, and copyrights known to be assigned to OtterBox (OtterBox IP). 23. Having reviewed the OtterBox IP, and having compared it to the Products
which Global provided to the Franchisees, Global denies that any of the Products infringe any valid design or utility patent, any copyright, any trademark, any nondisclosure agreement, or any other intellectual property right of OtterBox, and Global specifically denies that it willfully infringed any legally cognizable intellectual property right of OtterBox as set out in the Infringement Letter. 24. Global further denies committing any act in violation of any state unfair
competition law, whether statutory or at common law which may have given rise to the Infringement Letter. The Infringement Email 25. On or about October 29, 2010 Eric Land, Distributor Sales Manager for
OtterBox sent an email to Joseph Brown, (the Infringement Email), a true copy of which is attached hereto as Exhibit 2, in which Mr. Land asserted that one of OtterBoxs Account Development Executives was recently in Alabama. He
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came across another Cellairis kiosk selling counterfeit Defender cases. The Infringement Email accused Cellairis of manufacturing the allegedly infringing cases, and it included a photo of an allegedly infringing case (Exhibit 3) as well as a copy of U.S. Patent No. D617,784 (Exhibit 4). 26. Cellairis expressly denies that it manufactured the case shown in Exhibit 3,
as (wrongly) asserted in the Infringement Email (Exhibit 2). 27. Cellairis further denies that the case shown in Exhibit 3 falls within the
scope of any valid claim of U.S. Patent No. D617,784 (Exhibit 4). 28. The allegation that Cellairis was engaged in infringing upon U.S. Patent
No. D617,784 (Exhibit 4) was false and defamatory, and, on information and belief, it was published to third parties, including, inter alia, Kelly Frazier, Intellectual Property Manager of OtterBox, and John McKinney, as set forth in the Cc: of the Infringement Email. 29. After sending the Infringement Email on October 29, 2010, Mr. Land sent a
follow-up email to Mr. Joseph Brown on or about November 1, 2010 (Exhibit 5). 30. On or about November 1, 2010, Kelly Frazier, Intellectual Property Manager
of OtterBox, suspended negotiations in an additional defamatory email to Mr. Brown in which Cellairs was, again, (wrongly) accused of selling knock-offs, with copies sent to Eric Land and John McKinney (See, Exhibit 6). The First District Court Action
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31.
As a result of the foregoing improper activities by OtterBox, on or about
January 5, 2011, Global, together with Cellairis (which is not presently a party to the present action) filed an action in U.S. District Court for the Northern District of Georgia, namely Global Cellular, Inc. and Cellairis Franchise, Inc. v. Otter Products, LLC, Case No. 1:11-cv-00037-JEC (the First District Court Case). 32. In that OtterBox appeared to have mended its ways, the Summons in the
First District Court Case was not served, and the First District Court Case was allowed to be dismissed. 33. Notwithstanding, the calm which appeared to have prevailed, OtterBox
subsequently brought a Section 337 Investigation before the International Trade Commission, captioned In re Investigation of Certain Protective Cases and Components Thereof, ITC Investigation No. 337-780 in which OtterBox named Cellairis as a respondent (the ITC Investigation). 34. In the ITC Investigation, OtterBox alleged that various U.S. Patents (namely
U.S. Patent Nos. 7,933,122; D600,908; D617,784; D615,536; D617,785; D634,741; D636,386) and various U.S. Trademarks (namely, U.S. Trademark Reg. Nos. 3,788,535; 3,623,789; and 3,795,187) were being infringed by the various respondents, including Cellairis. 35. Global is the sole provider of any of the Products complained of, as
aforesaid, or as set out in the ITC Action, whereby the foregoing acts of OtterBox,
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including the commencement and continuance of the ITC Action against Cellairis have negatively impacted and damaged Globals relationships with Cellairis and the Franchisees.
First Cause of Action Declaratory Judgment of Non-Infringement 36. 37. Global repeats and realleges the allegations of the foregoing paragraphs. A case of actual controversy between Global and OtterBox exists under 28
U.S.C. 2201 and 2202. 38. Notwithstanding the allegations contained in the Infringement Letter
(Exhibit 1) and in the Infringement Email (Exhibit 2), and in the ITC Action, Global expressly denies that it has infringed any valid claim of any U.S. Design Patent owned by OtterBox, including, but not limited to, U.S. Patent Nos. D600,908; D617,784; D615,536; D617,785; D634,741; D636,386. 39. Global expressly denies that it has infringed any valid claim of any U.S.
utility patent owned by OtterBox including, but not limited to, U.S. Patent Nos. 7,933,122. 40. Global expressly denies that it has infringed any U.S. Trademark registered
to OtterBox, including, but not limited to U.S. Trademark Reg. Nos. 3,788,535; 3,623,789; and 3,795,187.
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41.
Global expressly denies that it has infringed any valid copyright owned by
OtterBox. 42. Global expressly denies that it has violated any trade secret owned by
OtterBox. 43. Global expressly denies that it has infringed any legally cognizable
intellectual right of OtterBox. 44. A declaratory judgment will serve a useful purpose in clarifying and settling
legal relations at issue between the parties, and it will terminate and afford relief to Plaintiffs from the uncertainty, insecurity, and controversy giving rise to this proceeding. 45. A case of actual controversy between Plaintiffs and OtterBox exists under 28
U.S.C. 2201 and 2202.
Second Cause of Action Declaratory Judgment Non-Infringement of U.S. Patent No. D617,784 46. 47. Global repeats and realleges the allegations of the foregoing paragraphs. U.S. Patent No. D617,784 (Exhibit 4) appears to depict a case for a cellular
telephone.
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48.
The DESCRIPTION portion of U.S. Patent No. D617,784, expressly
states, The broken line portions of the disclosure are for illustrative purposes only and form no part of the claimed design. 49. In view of the disclaimer expressed in the DESCRIPTION to five
bumps as shown in FIGS. 4-6. 50. As shown in Mr. Lands own photograph of the allegedly infringing case
manufactured, sold, offered for sale, and/or imported by Global (Exhibit 3), no such bumps are present in that case. 51. In view of the foregoing, Global expressly denies that the case shown in
Exhibit 3 infringes U.S. Patent No. D617,784 as wrongly asserted by OtterBox. 52. A declaratory judgment will serve a useful purpose in clarifying and settling
legal relations at issue between the parties, and it will terminate and afford relief to Plaintiffs from the uncertainty, insecurity, and controversy giving rise to this proceeding. 53. A case of actual controversy between Plaintiffs and OtterBox exists under 28
U.S.C. 2201 and 2202.
Third Cause of Action Unfair Competition Relations 54. Global repeats and realleges the allegations of the foregoing paragraphs.
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55.
The foregoing acts by OtterBox constitute unfair competition.
Fourth Cause of Action Tortious Interference with Globals Business Relations 56. 57. Global repeats and realleges the allegations of the foregoing paragraphs. By making the foregoing frivolous claims to Globals customers, namely, the
Franchisees, OtterBox has damaged Globals reputation with such Franchisees and with Cellairis, all without any basis.
Fifth Cause of Action Defamation 58. 59. Global repeats and realleges the allegations of the foregoing paragraphs. By repeatedly, publicly claiming and publishing statements wrongly
accusing the Products of Global as infringing, OtterBox has defamed Global, with those who have relied upon Globals impeccable reputation as providing high quality infringement free Products, including both the Franchisees and Cellairis, all without any basis.
PRAYER FOR RELIEF WHEREFORE, Global respectfully requests declaratory relief against OtterBox
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that: A. Global has not infringed any valid patent, copyright, trademark, or other
intellectual property right of OtterBox. B. Global has not violated any state unfair competition laws, whether statutory
or at common law. C. This action should be considered to be an exceptional case, and the court
should award the costs of this action and Globals reasonable attorneys fees against OtterBox, in accordance with 35 U.S.C. 285, 17 U.S.C. 505, or 15 U.S.C. 1117. D. OtterBox should be permanently enjoined from making, disseminating, or
publishing any frivolous accusations as to Global having infringed any patent, copyright, trademark, or other rights of OtterBox. E. Global should be awarded compensatory and punitive damages, as well as
injunctive relief, for based upon unfair competition. F. Global should be awarded compensatory and punitive damages for tortious
interference with Globals business relations. G. Global should be awarded compensatory and punitive damages for
defamation. H. Global should be awarded such other and further relief as this honorable
court may deem equitable and proper.
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A JURY TRIAL IS DEMANDED. Undersigned certifies compliance with LR 5.1C (Times New Roman, 14 point). Respectfully submitted, Dated: __July 11, 2011__ By:_s/ Sanford J. Asman________________ Sanford J. Asman Georgia Bar No. 026118 Attorney for Plaintiff Global Cellular, Inc.
Law Office of Sanford J. Asman 570 Vinington Court Atlanta, Georgia 30350 Phone : (770) 391-0215 Fax : (770) 668-9144 Email : sandy@asman.com
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Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 15 of 37 Case 1:11-cv-02260-CAP Document 1-1 Filed 07/11/11 Page 1 of 4
Mr. Paki Skouris May 19, 2010 Page 1
2625 Middlefield Road No. 675 Palo Alto, CA 94306
Karen I. Boyd Direct: 650-533-7572 boyd@turnerboyd.com
VIA EMAIL C/O SANDY KARASIK, SANDYKARASIK@CELLAIRIS.COM VIA FACSIMILE TRANSMISSION TO 678-513-4060 May 19, 2010
Mr. Paki Skouras Chief Executive Officer CELLAIRIS FRANCHISE, INC. 6485 Shiloh Rd., Bldg. B #100 Alpharetta, GA 30005 RE: Infringement by Cellairis of OtterBox Products, LLCs Intellectual Property Dear Mr. Skouras: It has come to the attention of my client, Otter Products, LLC (OtterBox) that Cellairis recently began selling a blatant copy of the OtterBox 3G iPhone Defender Series Case (iPhone Defender Series) under the name Ultrabox. Cellairiss sales of these knock-off products constitute a knowing and willful infringement of OtterBoxs intellectual property in the iPhone Defender Series, particularly in light of the fact that Cellairis also sells the iPhone Defender Series case. OtterBoxs intellectual property in its iPhone Defender Series case is protected under both federal and state statutory and common law. OtterBox registered the iPhone Defender Series case with the United States Copyright
office, and it is the subject of a recently allowed United States design patent and pending utility patents. Cellairiss sale of the Ultrabox copy of the iPhone Defender Series case infringes OtterBoxs copyright in iPhone Defender Series case and, upon issuance of the allowed design patent, will infringe that as well. Pursuant to Chapter 5 of Title 17 of the United States Code, OtterBox is entitled to enjoin Cellairis from selling the Ultrabox, to impound and dispose of all Ultrabox units in the possession of Cellairis and its franchisees, to collect from Cellairis its profits from Ultrabox sales as well as damages that OtterBox has suffered by virtue of those sales, and to recover its costs and attorneys fees. Absent an amicable settlement with Cellairis, OtterBox intends to enforce its intellectual property rights and seek each and every one of these remedies to the full extent allowed by law. As a willful infringer, Cellairis also faces liability under the criminal copyright infringement statute, 17 U.S.C. 506. The penalties for criminal copyright infringement include up to five years in federal prison and up to a $250,000 fine. Absent a swift and amicable resolution of Cellairiss ongoing infringement, OtterBox may elect, at its pleasure, to pursue criminal charges against Cellairis with the Department of Justice and Federal Bureau of Investigation. In order to settle this matter forthwith, OtterBox demands that Cellairis: 1. Immediately cease and desist from selling and advertising the Ultrabox in any forum, including online and through franchisees; 2. Immediately recall all units of the Ultrabox from any franchisees or other sales outlets affiliated with Cellairis; 3. Tender to OtterBox all unsold and recalled units within 10 days of recalling and receiving such units; 4. Provide OtterBox with an accounting of (a) the number of units purchased by Cellairis, (b) the number of units sold by Cellairis, (c)
the unit purchase price, (d) the unit sales price, and (e) the number of units remaining in inventory; 5. Agree to disgorge its gross profits, in an amount to be determined, to OtterBox or, in the alternative, to pay OtterBox its lost gross profits, at OtterBoxs election; 6. Immediately inform OtterBox of the identity of any and all suppliers of the Ultrabox known to Cellairis; and 7. Reimburse OtterBox for the attorneys fees and costs it has incurred pursuing this matter. Absent agreement to OtterBoxs demand, OtterBox intends to vigorously enforce its rights against not only Cellairis, but Cellairiss franchisees, the operators of the venues (such as shopping malls) in which the Cellairis franchisees operate, the internet service provider used by Cellairis to sell the Ultrabox online, and any other entities that may be liable directly or indirectly as a result of Cellairiss infringements. OtterBox is being harmed and continues to be harmed each and every day that Cellairis continues to sell the Ultrabox. Consequently, please provide to me, by Monday, May 24, 2010, your assurance, in writing, that you will comply with the above demands.
This letter is sent without prejudice to OtterBoxs rights and claims, all of which are expressly reserved. OtterBox reserves the right to pursue without further notice any and all legal avenues available to it. Sincerely, TURNER BOYD LLP
Karen I. Boyd Attorneys for Otter Products, LLC
Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page Page 237 2 19 of of Case 1:11-cv-02260-CAP Document 1-2 Filed 07/11/11 Page 1 of 1
From: Eric Land [mailto:eric.land@otterbox.com] Sent: Friday, October 29, 2010 12:50 PM To: Joseph Brown Cc: Kelly Frazier; John McKinney Subject: Patent Infringment
JosephOne of my Account Development Executives was recently in Alabama. He came across another Cellairis kiosk selling counterfeit Defender cases. The individual he spoke with informed him that Cellairis is manufacturing these cases. Attached you will the photo of the case along with the PDF that explains the US patent that you are infringing upon. I have copied the OtterBox legal department; Im sure they will be in touch shortly. Here is the phone number to the store where this particular case was located. 205-981-1778 Alabama Eric Land
Distributor Sales Manager P: (970) 490-8990 F: (970) 493-1755 eric.land@OtterBox.com OtterBox 1 Old Town Square, Suite 303 Fort Collins, CO 80524 www.otterbox.com Weve Got Technology Covered Be an OtterBox fan on Facebook: http://www.facebook.com/OtterBox Follow OtterBox on Twitter: http://www.twitter.com/OtterBox
NOTICE OF CONFIDENTIALITY: The information contained in this e-mail, and in any attachment thereto, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. If you have received this communication in error, please notify me immediately by telephone, fax, or e-mail and then delete this e-mail. Please consider the environment before printing this email
12/28/2010
Sanford J. Asman
From: Sent: To: Jason Adler [jasonadler@cellairis.com] Tuesday, November 02, 2010 11:09 AM sandy@asman.com
Subject: FW: Patent Infringment
Jason Adler, Esq. |Vice President - General Counsel 6485ShilohRd.BldgB#100 | Alpharetta,GA30005 Phone#678.513.4020x275|eFax#678.679.4115

From: Joseph Brown [mailto:josephbrown@cellairis.com] Sent: Monday, November 01, 2010 4:07 PM To: 'Jason Adler' Subject: FW: Patent Infringment
Readbelow.IwouldliketorespondtohimASAP. Thank you, Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci

Cellairis dot com logo

Confidentiality Notice: This e-mail is intended only for the person(s) to whom it is addressed and may contain information that is confidential, proprietary, privileged or otherwise protected from disclosure. If you are not an intended recipient, please (i) do not read, copy or use this communication, or disclose it to others, (ii) notify the sender immediately by replying to the message, and (iii) delete the e-mail from your system. Thank you.
Save a tree. Don't print this e-mail unless it's really necessary
From: Eric Land [mailto:eric.land@otterbox.com] Sent: Monday, November 01, 2010 4:04 PM To: Joseph Brown Subject: RE: Patent Infringment
12/28/2010
Joseph- Itriedthisrouteforseveralmonthsanditdidnotseemtowork.Youtoldmeoverandoveragainthatyou wouldbecontactingallofyourfranchiseestohavethecounterfeitOtterBoxspulled;itneverhappened. Eric Land Distributor Sales Manager P:(970)490-8990 F:(970)493-1755 eric.land@OtterBox.com OtterBox 1OldTownSquare,Suite303 FortCollins,CO80524 www.otterbox.com Weve Got Technology Covered
BeanOtterBoxfanonFacebook:http://www.facebook.com/OtterBox FollowOtterBoxonTwitter:http://www.twitter.com/OtterBox

From: Joseph Brown [mailto:josephbrown@cellairis.com] Sent: Monday, November 01, 2010 2:02 PM To: Eric Land Cc: Kelly Frazier; John McKinney Subject: RE: Patent Infringment
Helloall, Asyouknow,wearebigsupportersofOtterboxproductsandbasedonourvolumeofpurchases,Ithinkitis obviousthatwestandbehindyourbrand.Wehavebeenincreasingourpurchasesoverthesepastmonths whichisevidencethatourfranchisedsystemalsobelievesinyourproductsandweareimprovingour30% penetrationratewithOtterboxbrandproductsthroughoutourFranchisees. Withthatbeingsaid,andbasedonyourFridaye-mail,werespectyourintellectualpropertyrights,totheextent theyexistonanygivenproduct,andwetakeallintellectualpropertyclaimsextremelyserious.Tothatend,and basedonyourthreattogetyourlegalteaminvolved,wehavesentthismattertoourlegalteam.Inthefuture,I thinkitwouldbemoreproductiveforustotalkaboutanyperceivedissues,ratherthanmakingthreatstoget lawyersinvolved(whichasyouknowonlyprotractsissuesandcausesadditionalexpensesthatarenot necessaryforeitherofus).Ifyoudesiretopursuethismatterfurther,thenpleasehaveyourlegalteamcontact ourin-houseGeneralCounsel,JasonAdlerwhocanbereachedat678-513-4020ext.275andhecanwork throughanylegalissuesthatmayexist. Ihopewecancontinuetoworktogetherandgroweachofourcompaniesasopposedtospendingtime,money, andeffortonlegalissues,wheretheonlytruewinnersarethelawyers.
12/28/2010
Thank you for your urgent reply,
Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci


Joseph- OneofmyAccountDevelopmentExecutiveswasrecentlyinAlabama.HecameacrossanotherCellairiskiosk sellingcounterfeitDefendercases.TheindividualhespokewithinformedhimthatCellairisismanufacturing thesecases.AttachedyouwillthephotoofthecasealongwiththePDFthatexplainstheUSpatentthatyouare infringingupon. IhavecopiedtheOtterBoxlegaldepartment;Imsuretheywillbeintouchshortly. Hereisthephonenumbertothestorewherethisparticularcasewaslocated. 205-981-1778Alabama Eric Land Distributor Sales Manager P:(970)490-8990 F:(970)493-1755 eric.land@OtterBox.com OtterBox 1OldTownSquare,Suite303 FortCollins,CO80524
12/28/2010
www.otterbox.com Weve Got Technology Covered

12/28/2010
Sanford J. Asman
From: Sent: To: Jason Adler [jasonadler@cellairis.com] Tuesday, November 02, 2010 11:09 AM sandy@asman.com
Subject: FW: Patent Infringment
Jason Adler, Esq. |Vice President - General Counsel 6485ShilohRd.BldgB#100 | Alpharetta,GA30005 Phone#678.513.4020x275|eFax#678.679.4115

From: Joseph Brown [mailto:josephbrown@cellairis.com] Sent: Monday, November 01, 2010 4:47 PM To: 'Jason Adler' Subject: FW: Patent Infringment
Andanotherone Thank you, Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci


From: Kelly Frazier [mailto:kelly.frazier@otterbox.com] Sent: Monday, November 01, 2010 4:45 PM To: Joseph Brown; Eric Land Cc: John McKinney
12/28/2010
Subject: RE: Patent Infringment
Joseph- Mr.Adlershould,andyouaswellfromconversationsinJuly,beawareoftheOtterBoxknock-offissuesweare havingwithCellairisanditskiosks/franchisees.Mr.Adlerhadbeenspeakingwithouroutsidecounseland insidesalesregardingourceaseanddesistrequests,andpossibleresolutions.Negotiationsaresuspendeddue tocontinuedinstancesofknock-offsinkiosks. Myself,andoutsidecounsel,willbeacquiringthenecessaryinformationregardingthesenewknock-offsthatare beingsoldunderCellairis,andmarketedasaCellairisbrand.Wewillbeintouch. Kelly Frazier IntellectualPropertyManager P:970.980.2040 C:303.564.7434 F:970.493.1755 kelly.frazier@otterbox.com OtterBox 1OldTownSquare,Suite303 FortCollins,Colorado80524 www.OtterBox.com We've Got Technology Covered
NOTICE OF CONFIDENTIALITY: The information contained in this e-mail, and in any attachment thereto, is confidential and may be privileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient, you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. If you have received this communication in error, please notify me immediately by telephone, fax, or e-mail and then delete this e-mail.
Please consider the environment before printing this email
From: Joseph Brown [mailto:josephbrown@cellairis.com] Sent: Monday, November 01, 2010 2:02 PM To: Eric Land Cc: Kelly Frazier; John McKinney Subject: RE: Patent Infringment
Helloall, Asyouknow,wearebigsupportersofOtterboxproductsandbasedonourvolumeofpurchases,Ithinkitis obviousthatwestandbehindyourbrand.Wehavebeenincreasingourpurchasesoverthesepastmonths whichisevidencethatourfranchisedsystemalsobelievesinyourproductsandweareimprovingour30% penetrationratewithOtterboxbrandproductsthroughoutourFranchisees. Withthatbeingsaid,andbasedonyourFridaye-mail,werespectyourintellectualpropertyrights,totheextent theyexistonanygivenproduct,andwetakeallintellectualpropertyclaimsextremelyserious.Tothatend,and basedonyourthreattogetyourlegalteaminvolved,wehavesentthismattertoourlegalteam.Inthefuture,I thinkitwouldbemoreproductiveforustotalkaboutanyperceivedissues,ratherthanmakingthreatstoget lawyersinvolved(whichasyouknowonlyprotractsissuesandcausesadditionalexpensesthatarenot necessaryforeitherofus).Ifyoudesiretopursuethismatterfurther,thenpleasehaveyourlegalteamcontact ourin-houseGeneralCounsel,JasonAdlerwhocanbereachedat678-513-4020ext.275andhecanwork throughanylegalissuesthatmayexist.
12/28/2010
Ihopewecancontinuetoworktogetherandgroweachofourcompaniesasopposedtospendingtime,money, andeffortonlegalissues,wheretheonlytruewinnersarethelawyers. Thank you for your urgent reply, Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci

Joseph- OneofmyAccountDevelopmentExecutiveswasrecentlyinAlabama.HecameacrossanotherCellairiskiosk sellingcounterfeitDefendercases.TheindividualhespokewithinformedhimthatCellairisismanufacturing thesecases.AttachedyouwillthephotoofthecasealongwiththePDFthatexplainstheUSpatentthatyouare infringingupon. IhavecopiedtheOtterBoxlegaldepartment;Imsuretheywillbeintouchshortly. Hereisthephonenumbertothestorewherethisparticularcasewaslocated. 205-981-1778Alabama Eric Land Distributor Sales Manager P:(970)490-8990 F:(970)493-1755 eric.land@OtterBox.com
12/28/2010
OtterBox 1OldTownSquare,Suite303 FortCollins,CO80524 www.otterbox.com Weve Got Technology Covered

12/28/2010
Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 36 of 37 Case 1:11-cv-02260-CAP Document 1-7 Filed 07/11/11 Page 1 of 2 JS44 (Rev. 1/08 NDGA) CIVIL COVER SHEET
The JS44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as provided by local rules of court. This form is required for the use of the Clerk of Court for the purpose of initiating the civil docket record. (SEE INSTRUCTIONS ATTACHED)
I. (a) PLAINTIFF(S)
Global Cellular, Inc.
DEFENDANT(S)
Otter Products, LLC
(b) COUNTY OF RESIDENCE OF FIRST LISTED

PLAINTIFF Fulton
(EXCEPT IN U.S. PLAINTIFF CASES)
COUNTY OF RESIDENCE OF FIRST LISTED DEFENDANT

(IN U.S. PLAINTIFF CASES ONLY) NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF LAND INVOLVED
(c) ATTORNEYS (FIRM NAME, ADDRESS, TELEPHONE NUMBER, AND

E-MAIL ADDRESS)
ATTORNEYS
(IF KNOWN)
Sanford J. Asman Law Office of Sanford J. Asman 570 Vinington Court Atlanta, GA 30350-5710 Phone: 770-391-0215 Email: sandy@asman.com
II. BASIS OF JURISDICTION

(PLACE AN X IN ONE BOX ONLY)
III. CITIZENSHIP OF PRINCIPAL PARTIES

(PLACE AN X IN ONE BOX FOR PLAINTIFF AND ONE BOX FOR DEFENDANT) (FOR DIVERSITY CASES ONLY) PLF DEF 1 CITIZEN OF THIS STATE PLF
4
DEF 4 INCORPORATED OR PRINCIPAL PLACE OF BUSINESS IN THIS STATE INCORPORATED AND PRINCIPAL PLACE OF BUSINESS IN ANOTHER STATE FOREIGN NATION
1 U.S. GOVERNMENT PLAINTIFF 2 U.S. GOVERNMENT DEFENDANT
3 FEDERAL QUESTION (U.S. GOVERNMENT NOT A PARTY)
4 DIVERSITY (INDICATE CITIZENSHIP OF PARTIES IN ITEM III)
CITIZEN OF ANOTHER STATE
CITIZEN OR SUBJECT OF A FOREIGN COUNTRY
IV. ORIGIN
1 ORIGINAL
PROCEEDING
(PLACE AN X IN ONE BOX ONLY) 2 REMOVED FROM STATE COURT 3 REMANDED FROM APPELLATE COURT 4 REINSTATED OR REOPENED TRANSFERRED FROM 5 ANOTHER DISTRICT (Specify District) 6 MULTIDISTRICT LITIGATION APPEAL TO DISTRICT JUDGE 7 FROM MAGISTRATE JUDGE JUDGMENT
V. CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE - DO NOT CITE JURISDICTIONAL STATUTES UNLESS DIVERSITY)
Patent Act 35 U.S.C. 101, et seq., Copyright Act 17 U.S.C. 101, et seq., Lanham Act 15 U.S.C. 1051, et seq., and Declaratory Judgment Act 28 U.S.C. 2201
(IF COMPLEX, CHECK REASON BELOW) 1. Unusually large number of parties. 2. Unusually large number of claims or defenses. 3. Factual issues are exceptionally complex 4. Greater than normal volume of evidence. 5. Extended discovery period is needed. 6. Problems locating or preserving evidence 7. Pending parallel investigations or actions by government. 8. Multiple use of experts. 9. Need for discovery outside United States boundaries. 10. Existence of highly technical issues and proof.
CONTINUED ON REVERSE
FOR OFFICE USE ONLY
RECEIPT # JUDGE AMOUNT $ MAG. JUDGE (Referral) APPLYING IFP NATURE OF SUIT MAG. JUDGE (IFP) CAUSE OF ACTION
Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 37 of 37 Case 1:11-cv-02260-CAP VI. NATURE OF SUIT (PLACE AN X IN ONE BOX ONLY)Document 1-7 Filed 07/11/11 Page 2 of 2
CONTRACT - "0" MONTHS DISCOVERY TRACK
150 RECOVERY OF OVERPAYMENT & ENFORCEMENT OF JUDGMENT 152 RECOVERY OF DEFAULTED STUDENT LOANS (Excl. Veterans) 153 RECOVERY OF OVERPAYMENT OF VETERAN'S BENEFITS
CIVIL RIGHTS - "4" MONTHS DISCOVERY TRACK

441 VOTING 442 EMPLOYMENT 443 HOUSING/ ACCOMMODATIONS 444 WELFARE 440 OTHER CIVIL RIGHTS 445 AMERICANS with DISABILITIES - Employment 446 AMERICANS with DISABILITIES - Other
SOCIAL SECURITY - "0" MONTHS DISCOVERY TRACK

861 HIA (1395ff) 862 BLACK LUNG (923) 863 DIWC (405(g)) 863 DIWW (405(g)) 864 SSID TITLE XVI 865 RSI (405(g))
CONTRACT - "4" MONTHS DISCOVERY TRACK

110 INSURANCE 120 MARINE 130 MILLER ACT 140 NEGOTIABLE INSTRUMENT 151 MEDICARE ACT 160 STOCKHOLDERS' SUITS 190 OTHER CONTRACT 195 CONTRACT PRODUCT LIABILITY 196 FRANCHISE
IMMIGRATION - "0" MONTHS DISCOVERY TRACK

462 NATURALIZATION APPLICATION 463 HABEAS CORPUS- Alien Detainee 465 OTHER IMMIGRATION ACTIONS
FEDERAL TAX SUITS - "4" MONTHS DISCOVERY TRACK

870 TAXES (U.S. Plaintiff or Defendant) 871 IRS - THIRD PARTY 26 USC 7609
PRISONER PETITIONS - "0" MONTHS DISCOVERY TRACK

510 MOTIONS TO VACATE SENTENCE 530 HABEAS CORPUS 535 HABEAS CORPUS DEATH PENALTY 540 MANDAMUS & OTHER 550 CIVIL RIGHTS - Filed Pro se 555 PRISON CONDITION(S) - Filed Pro se
OTHER STATUTES - "4" MONTHS DISCOVERY TRACK

400 STATE REAPPORTIONMENT 430 BANKS AND BANKING 450 COMMERCE/ICC RATES/ETC. 460 DEPORTATION 470 RACKETEER INFLUENCED AND CORRUPT ORGANIZATIONS 480 CONSUMER CREDIT 490 CABLE/SATELLITE TV 810 SELECTIVE SERVICE 875 CUSTOMER CHALLENGE 12 USC 3410 891 AGRICULTURAL ACTS 892 ECONOMIC STABILIZATION ACT 893 ENVIRONMENTAL MATTERS 894 ENERGY ALLOCATION ACT 895 FREEDOM OF INFORMATION ACT 900 APPEAL OF FEE DETERMINATION UNDER EQUAL ACCESS TO JUSTICE 950 CONSTITUTIONALITY OF STATE STATUTES 890 OTHER STATUTORY ACTIONS
REAL PROPERTY - "4" MONTHS DISCOVERY TRACK

210 LAND CONDEMNATION 220 FORECLOSURE 230 RENT LEASE & EJECTMENT 240 TORTS TO LAND 245 TORT PRODUCT LIABILITY 290 ALL OTHER REAL PROPERTY
PRISONER PETITIONS - "4" MONTHS DISCOVERY TRACK

550 CIVIL RIGHTS - Filed by Counsel 555 PRISON CONDITION(S) - Filed by Counsel
TORTS - PERSONAL INJURY - "4" MONTHS DISCOVERY TRACK

310 AIRPLANE 315 AIRPLANE PRODUCT LIABILITY 320 ASSAULT, LIBEL & SLANDER 330 FEDERAL EMPLOYERS' LIABILITY 340 MARINE 345 MARINE PRODUCT LIABILITY 350 MOTOR VEHICLE 355 MOTOR VEHICLE PRODUCT LIABILITY 360 OTHER PERSONAL INJURY 362 PERSONAL INJURY - MEDICAL MALPRACTICE 365 PERSONAL INJURY - PRODUCT LIABILITY 368 ASBESTOS PERSONAL INJURY PRODUCT LIABILITY
FORFEITURE/PENALTY - "4" MONTHS DISCOVERY TRACK

610 AGRICULTURE 620 FOOD & DRUG 625 DRUG RELATED SEIZURE OF PROPERTY 21 USC 881 630 LIQUOR LAWS 640 R.R. & TRUCK 650 AIRLINE REGS. 660 OCCUPATIONAL SAFETY / HEALTH 690 OTHER
OTHER STATUTES - "8" MONTHS DISCOVERY TRACK

410 ANTITRUST 850 SECURITIES / COMMODITIES / EXCHANGE
LABOR - "4" MONTHS DISCOVERY TRACK

710 FAIR LABOR STANDARDS ACT 720 LABOR/MGMT. RELATIONS 730 LABOR/MGMT. REPORTING & DISCLOSURE ACT 740 RAILWAY LABOR ACT 790 OTHER LABOR LITIGATION 791 EMPL. RET. INC. SECURITY ACT
OTHER STATUTES - 0" MONTHS DISCOVERY TRACK

ARBITRATION (Confirm / Vacate / Order / Modify)
TORTS - PERSONAL PROPERTY - "4" MONTHS DISCOVERY TRACK

370 OTHER FRAUD 371 TRUTH IN LENDING 380 OTHER PERSONAL PROPERTY DAMAGE 385 PROPERTY DAMAGE PRODUCT LIABILITY
(Note: Mark underlying Nature of Suit as well)
PROPERTY RIGHTS - "4" MONTHS DISCOVERY TRACK

820 COPYRIGHTS 840 TRADEMARK
* PLEASE NOTE DISCOVERY

TRACK FOR EACH CASE TYPE. SEE LOCAL RULE 26.3
BANKRUPTCY - "0" MONTHS DISCOVERY TRACK

422 APPEAL 28 USC 158 423 WITHDRAWAL 28 USC 157
PROPERTY RIGHTS - "8" MONTHS DISCOVERY TRACK
830 PATENT
VII. REQUESTED IN COMPLAINT:

CHECK IF CLASS ACTION UNDER F.R.Civ.P. 23 JURY DEMAND
DEMAND $_____________________________
YES
NO (CHECK YES ONLY IF DEMANDED IN COMPLAINT)
VIII. RELATED/REFILED CASE(S) IF ANY

Julie Carnes JUDGE_______________________________ 1:11-cv-00037-JEC DOCKET NO._______________________
(CHECK APPROPRIATE BOX)
CIVIL CASES ARE DEEMED RELATED IF THE PENDING CASE INVOLVES:

1. 2. 3. 4.
PROPERTY INCLUDED IN AN EARLIER NUMBERED PENDING SUIT. SAME ISSUE OF FACT OR ARISES OUT OF THE SAME EVENT OR TRANSACTION INCLUDED IN AN EARLIER NUMBERED PENDING SUIT. VALIDITY OR INFRINGEMENT OF THE SAME PATENT, COPYRIGHT OR TRADEMARK INCLUDED IN AN EARLIER NUMBERED PENDING SUIT. APPEALS ARISING OUT OF THE SAME BANKRUPTCY CASE AND ANY CASE RELATED THERETO WHICH HAVE BEEN DECIDED BY THE SAME BANKRUPTCY JUDGE. 5. REPETITIVE CASES FILED BY PRO SE LITIGANTS. 6. COMPANION OR RELATED CASE TO CASE(S) BEING SIMULTANEOUSLY FILED (INCLUDE ABBREVIATED STYLE OF OTHER CASE(S)):
7. EITHER SAME OR ALL OF THE PARTIES AND ISSUES IN THIS CASE WERE PREVIOUSLY INVOLVED IN CASE NO. 1:11-cv-0037-JEC , WHICH WAS DISMISSED. This case IS IS NOT (check one box) SUBSTANTIALLY THE SAME CASE.
s/ Sanford J. Asman
SIGNATURE OF ATTORNEY OF RECORD
07/11/2011
DATE

Global Cellular v. Otter Products

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Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 1 of 37 Case 1:11-cv-02260-CAP Document 1 Filed 07/11/11 Page 1 of 14

Civil Action No.:

Plaintiffs marks, as used on Products, include the Cellairis mark, the

Accordingly, Cellairis and its Franchisees turned to Plaintiff, the supplier of

As a result of the foregoing improper activities by OtterBox, on or about

U.S.C. 2201 and 2202.

The DESCRIPTION portion of U.S. Patent No. D617,784, expressly

U.S.C. 2201 and 2202.

The foregoing acts by OtterBox constitute unfair competition.

court may deem equitable and proper.

Mr. Paki Skouris May 19, 2010 Page 1

2625 Middlefield Road No. 675 Palo Alto, CA 94306

Karen I. Boyd Direct: 650-533-7572 boyd@turnerboyd.com

Mr. Paki Skouris May 19, 2010 Page 2

Mr. Paki Skouris May 19, 2010 Page 3

Mr. Paki Skouris May 19, 2010 Page 4

Karen I. Boyd Attorneys for Otter Products, LLC

Subject: FW: Patent Infringment

Readbelow.IwouldliketorespondtohimASAP. Thank you, Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci

Thank you for your urgent reply,

Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci

Subject: FW: Patent Infringment

Andanotherone Thank you, Joseph Brown|President 6485ShilohRd.BldgB-100 | Alpharetta,GA30005 Phone678.513.4020x227|Fax678.341.7717 Skype:josephgci

Please consider the environment before printing this email

(b) COUNTY OF RESIDENCE OF FIRST LISTED

COUNTY OF RESIDENCE OF FIRST LISTED DEFENDANT

(c) ATTORNEYS (FIRM NAME, ADDRESS, TELEPHONE NUMBER, AND

II. BASIS OF JURISDICTION

III. CITIZENSHIP OF PRINCIPAL PARTIES

1 U.S. GOVERNMENT PLAINTIFF 2 U.S. GOVERNMENT DEFENDANT

3 FEDERAL QUESTION (U.S. GOVERNMENT NOT A PARTY)

4 DIVERSITY (INDICATE CITIZENSHIP OF PARTIES IN ITEM III)

CITIZEN OF ANOTHER STATE

CITIZEN OR SUBJECT OF A FOREIGN COUNTRY

CIVIL RIGHTS - "4" MONTHS DISCOVERY TRACK

SOCIAL SECURITY - "0" MONTHS DISCOVERY TRACK

CONTRACT - "4" MONTHS DISCOVERY TRACK

IMMIGRATION - "0" MONTHS DISCOVERY TRACK

FEDERAL TAX SUITS - "4" MONTHS DISCOVERY TRACK

PRISONER PETITIONS - "0" MONTHS DISCOVERY TRACK

OTHER STATUTES - "4" MONTHS DISCOVERY TRACK

REAL PROPERTY - "4" MONTHS DISCOVERY TRACK

PRISONER PETITIONS - "4" MONTHS DISCOVERY TRACK

TORTS - PERSONAL INJURY - "4" MONTHS DISCOVERY TRACK

FORFEITURE/PENALTY - "4" MONTHS DISCOVERY TRACK

OTHER STATUTES - "8" MONTHS DISCOVERY TRACK

LABOR - "4" MONTHS DISCOVERY TRACK

OTHER STATUTES - 0" MONTHS DISCOVERY TRACK

TORTS - PERSONAL PROPERTY - "4" MONTHS DISCOVERY TRACK

(Note: Mark underlying Nature of Suit as well)

PROPERTY RIGHTS - "4" MONTHS DISCOVERY TRACK

* PLEASE NOTE DISCOVERY

BANKRUPTCY - "0" MONTHS DISCOVERY TRACK

PROPERTY RIGHTS - "8" MONTHS DISCOVERY TRACK

VII. REQUESTED IN COMPLAINT:

NO (CHECK YES ONLY IF DEMANDED IN COMPLAINT)

VIII. RELATED/REFILED CASE(S) IF ANY

CIVIL CASES ARE DEEMED RELATED IF THE PENDING CASE INVOLVES:

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