tri-coastal v. cool gear int'l - complaint

7/27/2019 Tri-Coastal v. Cool Gear Int'l - Complaint

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UNITED STATES DISTRICT COURT

SOUTHERN DISTRICT OF NEW YORK

X:

TRI-COASTAL DESIGN GROUP, INC., a New :Jersey corporation :

: CIVIL ACTION: Index No.: 13-cv-7331 (KMW)

Plaintiff, :: COMPLAINT

v. : (Demand for Jury Trial):

COOL GEAR INTERNATIONAL, LLC, :a Delaware Limited Liability Company, and :DOES 1-10, :

:Defendants. :

X

Plaintiff Tri-Coastal Design Group, Inc. (hereinafter Tri-Coastal or Plaintiff) by and

through its undersigned attorneys, The Law Offices of Tedd S. Levine, LLC, alleges as follows:

PARTIES

1. Plaintiff Tri-Coastal is a corporation organized and existing under the laws of theState of New Jersey, having a principal place of business at 49 West 37 th Street, New York, NY

10018.

2. Upon information and belief, Defendant Cool Gear International, LLC (hereinafterCool Gear) is a limited liability company organized and existing under the laws of the State of

Delaware, having a principal place of business at 10 Cordage Park, Plymouth, MA 02360.

3. Does 1-10 are individuals and business entities whose complete identities arepresently unknown to Plaintiff, and, upon information and belief, were and continue to be

involved with claims described in this Complaint. When the identities of these parties become

known to Plaintiff, those defendants and the acts they engaged in will be described in an

Case 1:13-cv-07331-KMW Document 1 Filed 10/17/13 Page 1 of 8


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amended complaint.

JURISDICTION & VENUE

4. The United States District Court has jurisdiction of this action on the followingbases:

a. Under 28 U.S.C. 1331, since Tri-Coastal has claims and seeks remediesthat involve questions arising under Title 17 and Title 15 of the United

States Code;

b. Under 28 U.S.C. 1332, since this action is between citizens of differentstates where the matter in controversy exceeds the sum or value of

$100,000, exclusive of interest and costs;

c. Under 28 U.S.C. 2201 and 2202, since this action seeks multipledeclaratory judgments; and

d. Under the doctrine of supplemental jurisdiction 28 U.S.C. 1367, sincethis action alleges state law violations that are part of the same case or

controversy involved with respect to the other claims in this action over

which this Court has original jurisdiction.

5. Venue is proper in the Southern District of New York under 28 U.S.C. 1391(b)(2)and (c), since a substantial part of the events giving rise to Plaintiffs claims occurred in the

Southern District of New York and Defendants do business in and targets this jurisdiction.

6. The Southern District of New York has personal jurisdiction over Defendants.

NATURE OF THE ACTION

7. This action seeks declaratory judgments arising under the copyright laws of theUnited States, Title 17 of the United States Code, and damages for product disparagement arising



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under 43(a) of the Lanham Act, 15 U.S.C. 1125(a), et seq., as well as under the laws of New

York State.

FACTS

8. After filing an application with the United States Copyright Office, on or aboutSeptember 20, 2003, Cool Gear secured a Certificate of Registration, VA 1-876-232 (the

Registration), for the sculpture it entitled Three Dimensional Representation of a Skull (the

Sculpture). Cool Gear claims it owns a copyright in and to the Sculpture (the Copyright).

9. The Sculpture possesses an intrinsic utilitarian function that is not merely to portraythe appearance of the article or to convey information. More specifically, the Sculpture is

nothing other than a plastic tumbler used for drinking with a human skull imbedded in the

interior of the tumbler. The portion of the Sculpture, which is a human skull permanently

implanted in the interior of the tumbler, as expressly stated on a label affixed to the bottom of the

tumbler serves the purpose of being a double wall [to insulate a] hot or cold beverage. Such

fixed interior portion of the Sculpture cannot be removed from the tumbler and separately sold

without adversely impacting the article's functionality.10. The image of the human skull used by Cool Gear lacks requisite originality since

the purported author listed in the Registration did not independently create it. In addition, upon

information and belief, the Sculpture was copied from other works and articles that have a

functional and utilitarian purpose. The Sculpture fails to possess the requisite degree of creativity

to warrant copyright protection.

11. The image of the human skull used by Cool Gear is substantially similar to orvirtually the same as images of human skulls that are in the public domain.

12. On or about October 11, 2013, Cool Gear, through its attorneys, sent a letter (the



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Letter) to a customer of Plaintiff, namely, Spirit Halloween Superstores, LLC (Spirit),

claiming a tumbler product that Plaintiff sold to Spirit infringes the Sculpture. Further, the Letter

demands that Spirit stop selling and destroy such articles.

13. Cool Gear has made false claims of ownership in and to the Sculpture, theCopyright, and the Registration, in an attempt to put pressure on Plaintiff to curtail or otherwise

eliminate sales of its tumbler product.

14. Cool Gear has made false claims of ownership in and to the Sculpture, theCopyright, and the Registration, in an attempt to promote its tumbler product.

15.

Cool Gear does not own the rights it claims in the Copyright and Registration and

the Copyright and Registration are invalid.

16. Upon information and belief, Cool Gear profits from its sales of the Sculpturethroughout the United States, including in this judicial district.

COUNT I - Declaratory Judgment

Finding Copyright Registration VA 1-876-232

to be Cancelled

17. Plaintiff repeats and re-alleges Paragraphs 1 through 16 of this complaint as if fullyset forth herein.

18. A justiciable controversy exists between Plaintiff and Cool Gear regarding CoolGear's rights in and to the Copyright and the Registration, as well as Cool Gear's assertions that

Plaintiffs tumbler product that was sold to Spirit has been infringing Cool Gear's purported

rights in and to the Copyright and the Registration.

19. Plaintiff believes that it has been and will in the future be damaged by Cool Gearclaiming to own the Copyright and the Registration.

20. The Registration should be declared cancelled.



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COUNT II - Declaratory Judgment

Finding the Copyright to be Invalid

21.

Plaintiff repeats and re-alleges Paragraphs 1 through 20 of this complaint as if fully

set forth herein.





24. The Copyright should be declared invalid.COUNT III-Declaratory Judgment

Finding Non-Infringement

25. Plaintiff repeats and re-alleges paragraphs 1 through 24 as if more fully set forthherein.





28. Plaintiffs tumbler product that was sold to Spirit should be declared not to haveinfringed the purported Copyright and the Registration.



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COUNT IV- Product Disparagement

(State Action)

29.

Plaintiff repeats and re-alleges Paragraphs 1 through 27 of this complaint as if fully

set forth herein.

30. Cool Gear made a false statement to Spirit of ownership in and to the Copyright andthe Registration.

31. Further, Cool Gear made a false statement to Spirit that the tumbler productPlaintiff sold Spirit infringes the purported Copyright and the Registration.

32. Cool Gear made such false statements to Spirit with knowledge that such statementswere false or with reckless disregard of whether such statements were false or not.

33. As a result of Cool Gears wrongful conduct Plaintiff lost sales of its tumblerproduct and suffered damages of not less that $100,000.

COUNT V- Product Disparagement

(43(a) of the Lanham Act, 15 U.S.C. 1125(a), et seq.)

34. Plaintiff repeats and re-alleges Paragraphs 1 through 27 of this complaint as if fullyset forth herein.

35. Cool Gear made a false statement to Spirit of ownership in and to the Copyright andthe Registration.

36. Further, Cool Gear made a false statement to Spirit that the tumbler productPlaintiff sold Spirit infringes the purported Copyright and the Registration.

37. Cool Gear made such false statements to Spirit with knowledge that such statementswere false or with reckless disregard of whether such statements were false or not.

38. As a result of Cool Gears wrongful conduct Plaintiff lost sales of its tumbler



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product and suffered damages of not less that $100,000.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff demands judgment:

1. Permanently enjoining and restraining Cool Gear, its officers, directors,

principals, servants, employees, customers, successors and assigns, and all those in active

concert or participation with them, from:

(a) making unauthorized assertions of rights in and to the Copyright;

(b) making unauthorized assertions of rights in and to the Registration;

(c) making unauthorized assertions of rights in and to the Sculpture;

(d) using, registering, attempting to register, or aiding and abetting

others to use, register, or attempt to register any copyright or design patent relating to the

Sculpture;

(e) engaging in any other activity, including the effectuation ofassignments, licenses, or transfers of interests in any creation that makes use of the Copyright or

the Registration, as well as the formation of other corporations, partnerships, associations or

other entities or the utilization of any other devices, for the purpose of circumventing, evading,

avoiding or otherwise violating the prohibitions set forth in subsection 1(a) and 1(d) above;

(f) making any statement or representation whatsoever with respect tothe Sculpture that falsely designates ownership in it, or is misleading in any way; and

(g) engaging in any other activity with regard to Plaintiffs tumblerproduct sold to Spirit, and/or the reputation and the goodwill associated with Plaintiff and/or

Plaintiffs products.



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2. Directing such other relief as the Court may deem appropriate to prevent

the unauthorized use of the Sculpture.

3. Awarding Plaintiff damages representing three times the amount of

Plaintiffs actual damages incurred by reason of the facts and occurrences alleged herein.

4. Awarding Plaintiff consequential and other damages to be determined.5. Awarding Plaintiff its costs and reasonable attorneys, expert witness, and

investigating fees, together with pre-judgment interest.

6. Awarding Plaintiff such other and further relief as the Court may deemjust and proper.

DATED: October 17, 2013 Respectfully Submitted,

__/s/Tedd S. Levine_________________Tedd S. Levine, Esq. (TL 0158)THE LAW OFFICES OF TEDD S. LEVINE, LLC1305 Franklin Avenue , Suite 300Garden City, NY 11530(516) [email protected]

Attorneys for Plaintiff


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