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Decathlon v. Aloke Hale - Complaint
Decathlon v. Aloke Hale - Complaint
Plaintiffs,
COMPLAINT; EXHIBITS A AND
vs. B; SUMMONS
Defendants.
COMPLAINT
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deceptive trade practices, trade dress dilution, and design patent infringement,
sports equipment and products around the world. One of Plaintiffs’ products is the
obtained design patent protection for the design, Defendants began importing and
4. By selling this knock-off, which Defendants call the H2O Ninja Mask,
consumers, given the shoddy quality of Defendants’ product. Further, given the
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their use of the infringing design and trade dress, damages, attorneys’ fees, and
such other and further relief as the Court deems just and proper.
THE PARTIES
organized and exists under the laws of Delaware, with a principal place of business
under the laws of Hawaii, with a place of business at 1297 Kukila Street, Honolulu,
Hawaii, 96818.
controls Alokele Hale LLC, is its sole member, and profits from its activities.
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10. This Court has jurisdiction over the subject matter of this action under
Section 39 of the Lanham Act, 15 U.S.C. § 1121, and under Sections 1331,
1338(a) and 1338(b) of the United States Judicial Code, 28 U.S.C. §§ 1331,
1338(a)-(b).
11. This Court has supplemental jurisdiction over Plaintiffs’ state law
claims under Section 1367(a) of the United States Judicial Code, 28 U.S.C.
§ 1367(a).
United States Judicial Code, 28 U.S.C. § 1391(b), because a substantial part of the
events at issue and Defendants’ acts of infringement have occurred in this district
1
An LLC is a citizen of “every state of which its owners/members are citizens.”
Michaels v. Longs Drug Stores Cal., LLC, 2014 WL 5488434, at *2 (D. Haw. Oct.
28, 2014) (quoting Johnson v. Columbia Props. Anchorage, LP, 437 F.3d 894, 899
(9th Cir. 2006).
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companies in the world, and Plaintiff Decathlon USA LLC is its United States
distributor.
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by a rigid frame, a breathing tube centered at the top of the mask (as opposed to a
separate mouth tube used with traditional snorkel masks) and a valve at the bottom
of the mask. The combination of these features makes the mask instantly
No. D775,722 S, entitled “Mask with Snorkel,” for the “ornamental design of a
mask with snorkel,” issued on January 3, 2017. (A copy of this Design Patent is
dress rights in their EASYBREATH mask. Trade dress protects the design of a
EASYBREATH mask, and the widespread sale, advertising and promotion of the
mask, the public understands that the trade dress signifies Decathlon S.A. as the
world before being introduced in the United States. The product is an important
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22. The striking and distinctive nature of the EASYBREATH trade dress
ensures that, even from far away, consumers will recognize and be drawn to the
product.
dress is not functional for purposes of Section 43(a)(3) of the Lanham Act, 15
U.S.C. § 1125(a)(3), as it is not essential to the use or purpose of the products, does
not affect the cost or quality of products, and, when used exclusively by Plaintiffs,
disadvantage.
denoting Plaintiffs and signaling the high quality of their products. The
EASYBREATH trade dress achieved this status long before Defendants first began
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bearing the EASYBREATH trade dress, Plaintiffs own common law rights in the
trade dress, Defendants—in a blatant attempt to trade off the renown of the
knock-off mask (the “Infringing Mask”) using a design confusingly similar to that
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EASYBREATH Mask H2O Ninja Mask
29. Just like the EASYBREATH mask, the Infringing Mask has a clear,
full-face lens surrounded by a rigid frame, a breathing tube centered at the top of
the mask (as opposed to a separate mouth tube used with traditional snorkel
30. Thus, Defendants’ Infringing Mask mimics every key element of the
famous and distinctive EASYBREATH trade dress, and is substantially similar to the
31. Defendants’ use of Plaintiffs’ patented design and trade dress clearly
seeks to mislead consumers into believing that the Infringing Mask and Plaintiffs’
EASYBREATH mask are one and the same; or that the Infringing Mask is made,
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somehow connected. This confusion will occur not only at the point of sale, but
also post-sale.
offered for sale, and sold the Infringing Mask in the United States, including in this
judicial district.
sell the Infringing Mask to Plaintiffs’ customers and potential customers and
dress.
by Plaintiffs in any way, and the Infringing Mask is not made by, affiliated with,
“During the first day out in the water between swims one of the flappy
valves fell out allowing the water coming in the top to gather around
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“I bought this mask early for Christmas last year and now is when my
water is leaking inside into the mask when she submerges her head
“Cannot recommend this mask, could not manage the fogging, worst
ever experience and a full day of snorkeling the Dry Tortugas was
lost.”
“It sucks.”
(Printouts of these comments are attached as Exhibit B). Because of the poor quality
of the Infringing Mask, it poses a consumer health and safety threat and consumers
likely to lose sales as a result of post-sale confusion. For example, a snorkeler who
sees a friend using what appears to be the EASYBREATH mask (but is really the
Infringing Mask), and hears the friend complaining about the product, may say to
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obvious.
37. On information and belief, Defendants use the infringing trade dress
to pass off their goods as Plaintiffs’ and otherwise to benefit from the recognition
Mask, divert business from Plaintiffs, pass off the Infringing Mask as authorized and
endorsed by Plaintiffs, and otherwise falsely misrepresent the nature and quality of
Defendants’ product and misappropriate the goodwill associated with Plaintiffs and
38. On information and belief, Defendants began using and are using the
infringing trade dress with full knowledge of Plaintiffs’ prior exclusive rights, with
knowledge of the reputation and goodwill of the EASYBREATH trade dress, and
with knowledge that the trade dress is associated exclusively with Plaintiffs and
Plaintiffs’ goods.
39. The goodwill that Plaintiffs have built up in the EASYBREATH trade
continued use of a trade dress nearly identical to that of the EASYBREATH mask
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marketplace, because purchasers and potential purchasers will assume that the
by, endorsed by, associated with, or otherwise connected with Plaintiffs and/or
potential purchasers will assume, incorrectly, that the infringing goods are
Plaintiffs’.
EASYBREATH trade dress unfairly and unlawfully wrests from Plaintiffs control
43. Plaintiffs repeat and reallege the allegations set forth in the paragraphs
44. Plaintiff Decathlon S.A. owns U.S. Design Patent Number No.
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imported distributed, advertised, promoted, offered for sale and sold snorkel masks
bearing a design that substantially resembles each design claimed in the ’722
Patent. Defendants have known of the Patent since at least April 17, 2017.
gives, would find the design of Defendants’ Infringing Mask to be substantially the
Defendants have been willful, intentional, and in bad faith, and with knowledge of
the EASYBREATH mask, Defendants have caused and are causing substantial
irreparable harm to Plaintiff and will continue to damage Plaintiff unless enjoined
by this Court.
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51. Plaintiffs repeat and reallege the allegations set forth in the paragraphs
marketplace.
features a trade dress that is confusingly similar to the EASYBREATH trade dress
promotion of the Infringing Mask is likely to cause confusion and mistake and to
product.
55. Defendants chose to use the trade dress of the Infringing Mask with
knowledge of Plaintiffs’ prior use of and rights in the well-known and distinctive
EASYBREATH trade dress. On information and belief, Defendants have used the
Infringing Mask trade dress in commerce with the intent to cause confusion, to
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to the source of Defendants’ goods, and is likely to create the false impression that
with Plaintiffs.
59. On information and belief, Defendants chose to use the trade dress of
the Infringing Mask with knowledge of Plaintiffs’ prior use of, and rights in, the
EASYBREATH trade dress. On information and belief, Defendants used the trade
dress of the Infringing Mask in commerce with the intent to cause confusion, to
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61. Plaintiffs repeat and reallege the allegations set forth in the paragraphs
mistake or to deceive the public into believing that Defendants’ goods are made,
violation of Plaintiffs’ rights in the EASYBREATH trade dress under the common
law.
63. On information and belief, Defendants chose to use the trade dress of
the Infringing Mask with knowledge of Plaintiffs’ prior use of, and rights in, the
Defendants have been unjustly enriched and Plaintiffs have been damaged.
and, unless enjoined by this Court, will continue to be unjustly enriched at Plaintiffs’
expense.
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trade dress in connection with the Infringing Mask constitutes unfair competition
irreparable injury to Plaintiffs and will continue to injure Plaintiffs and injure and
68. Plaintiffs repeat and reallege the allegations set forth in the paragraphs
69. Defendants’ use of the trade dress of the Infringing Mask has the
rights.
competition and unfair or deceptive acts or practices in the conduct of any trade or
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irreparable injury to Plaintiffs and will continue to both damage Plaintiffs and
75. In the course of their business, Defendants’ pass off the Infringing
76. Defendants have been and are engaged in deceptive trade practices in
irreparable injury to Plaintiffs and will continue to both damage Plaintiffs and
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attorneys, servants, employees, affiliates, subsidiaries, and assigns, and all those
masks, in any media or format, using the trade dress of the Infringing
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Plaintiffs;
infringement;
trade dress;
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(2) That Defendants and those acting in concert or participation with them
(including, but not limited to, their officers, directors, agents, distributors, dealers,
successors, and assigns) take affirmative steps to dispel such false impressions that
heretofore have been created by their use of the trade dress of Infringing Mask,
including, but not limited to, delivering to Plaintiffs’ attorneys for destruction or
other disposition all goods, labels, tags, signs, stationery, prints, packages,
featuring or bearing the trade dress of the Infringing Mask or any other simulation,
(4) Directing such other relief as the Court may deem appropriate to
prevent the public from deriving the erroneous impression that any product
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(5) Directing Defendants to file with the Court and serve on Plaintiffs’
counsel within thirty (30) days after entry of judgment a report in writing under
oath, setting forth in detail the manner and form in which they have complied with
the above;
(6) Awarding Plaintiffs such damages they have sustained or will sustain
(7) Awarding Plaintiffs such damages they have sustained or will sustain
(8) Awarding Plaintiffs all gains, profits, property and advantages derived
U.S.C. § 285;
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(12) Awarding to Plaintiffs such other and further relief as the Court may
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EXHIBIT A
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EXHIBIT B
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To: (Defendant’s name and address) ALOKELE HALE LLC, doing business as H20 NINJA
1297 Kukila Street, Honolulu, Hawaii 96818
ALEXANDER KRIVOULIAN
1297 Kukila Street, Honolulu, Hawaii 96818
Within 21 days after service of this summons on you (not counting the day you received it) — or 60 days if you
are the United States or a United States agency, or an officer or employee of the United States described in Fed. R. Civ.
P. 12 (a)(2) or (3) — you must serve on the plaintiff an answer to the attached complaint or a motion under Rule 12 of
the Federal Rules of Civil Procedure. The answer or motion must be served on the plaintiff or plaintiff’s attorney,
whose name and address are: Brett R. Tobin
Goodsill Anderson Quinn & Stifel
999 Bishop Street, Suite 1600
Honolulu, Hawaii 96813
If you fail to respond, judgment by default will be entered against you for the relief demanded in the complaint.
You also must file your answer or motion with the court.
CLERK OF COURT
Date:
Signature of Clerk or Deputy Clerk
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PROOF OF SERVICE
(This section should not be filed with the court unless required by Fed. R. Civ. P. 4 (l))
u I left the summons at the individual’s residence or usual place of abode with (name)
, a person of suitable age and discretion who resides there,
on (date) , and mailed a copy to the individual’s last known address; or
u Other (specify):
.
My fees are $ for travel and $ for services, for a total of $ 0.00 .
Date:
Server’s signature
Server’s address