H&S Motorsports v. Smeding Diesel - Complaint
H&S Motorsports v. Smeding Diesel - Complaint
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v. COMPLAINT
Plaintiff, H&S Motorsports, LLC, by and through its counsel, Gurr Brande & Spendlove,
PLLC, hereby brings this Complaint against the Defendant, Smeding Diesel, LLC, and alleges as
follows:
THE PARTIES
1. Plaintiff, H&S Motorsports, LLC, is Utah Limited Liability Company with its
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2. Upon information and belief, Defendant Smeding Diesel, LLC, is a Texas Limited
Liability Company with its principal place of business at 28875 I-H 10 W, Boerne, Texas 78006.
damages, and injunctive relief under federal and state law and files this action against Smeding
Diesel, LLC (“Defendant”) for Defendant’s willful acts of copyright infringement, trademark
4. This Court has original subject matter jurisdiction over the claims that relate to
copyright infringement under 17 U.S.C. § 501, trademark infringement and false designation of
origin under 15 U.S.C. §§ 1116 and/or 1121(a), and for Design Patent infringement pursuant to
28 U.S.C. §§ 1331 and 1338(a). The Court has supplemental jurisdiction over the claims in this
Complaint that arise under state statutory and common law pursuant to 28 U.S.C. §§ 1338(b) and
1367(a) because those claims are so related to Plaintiff’s federal claims within the Court’s
original jurisdiction that they form part of the same case or controversy and derive from a
5. This Court has personal jurisdiction over Defendant because Defendant has a
continuous, systematic, and substantial presence within this Judicial District and within Utah. In
designation of origin, unfair competition, and design patent infringement in this Judicial District,
including, but not limited to, by using copyrighted photos in connection with the advertisement,
marketing, promotion, sale, and offer for sale of goods to customers in this Judicial District,
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Defendant’s acts form a substantial part of the events or omissions giving rise to Plaintiff’s
claims.
GENERAL ALLEGATIONS
7. Plaintiff is the owner of numerous copyrighted photos that are used to advertise
a 2014 Steel Piping Kit (Registration No. VAu 1-421-525), hereafter referred to as the “Steel
Piping Photo”. The Steel Piping Photo was registered on March 1, 2021. See Exhibit A.
depicting a 2017 Silicone Boot Kit (Registration No. VAu 1-421-524), hereafter referred to as
the “Silicone Boot Photo”. The Silicone Boot Photo was registered on March 1, 2021. See
Exhibit B.
10. Plaintiff has created and owns rights, as described above, to the Silicone Boot
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11. Plaintiff is the owner of U.S. Trademark Registration No. 6338699 for HSM and
associated design (“’699 Mark”) and owns common law rights in the marks “H&S Motorsports”
as well as “HSM” in connection with aftermarket automotive parts and online stores selling
12. Plaintiff operates a business selling automotive parts, namely, fuel kits comprised
of fuel lines, fuel pumps, fuel pulleys, and attaching hardware, turbo kits comprised of
turbochargers, intercooler pipes, and couplers, among other things. Plaintiff further provides
online retail store services featuring aftermarket automotive parts and accessories in the nature of
14. Plaintiff is also the owner of a design patent in the United States, entitled
“Throttle Body Coupler” and having Design Patent No. D828,399 (hereafter the “’399 Patent”),
15. Plaintiff has invested substantial time and resources into developing its
intellectual property portfolio and its brand, amassing consumer goodwill over the years.
16. Defendant sells its line of aftermarket automotive parts through its website
(https://www.smedingdiesel.com/) and other websites, including, but not limited to, Ebay.com.
17. In about November of 2018, Plaintiff became aware that Defendant was using an
unauthorized, unaltered version of Plaintiff’s Steel Piping Photo on Defendant’s website, selling
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18. Defendant admitted, on social media platforms, to using the unauthorized photo to
19. In about January 2021, Plaintiff became aware that Defendant was using an
unauthorized, altered version of the Silicone Boot Photo to market its goods. The Silicone Boot
Photo contains an intercooler pipe and coupler (hereafter the “Coupler”) designed by Plaintiff. In
a deliberate effort to hide its infringement, Defendant altered the Silicone Boot Photo to remove
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(https://www.ebay.com/itm/Replacement-Silicone-Intercooler-Pipe-for-11-16-Ford-6-7L-
Powerstroke-OEM/133526746794)
20. Plaintiff sent Defendant a cease and desist and demand letter in about February of
2021.
22. Defendant has not been granted permission to use the Steel Piping Photo, the
23. Defendant further has willfully and intentionally edited the Silicone Boot Photo to
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24. Additionally, Plaintiff placed an order from Defendant via the eBay listing, which
is shown in the above-described photo, to determine whether the products sold by Defendant
were indeed the Plaintiff’s Coupler. When the package arrived, the throttle body coupler was not
Plaintiff’s coupler as shown in the Photo listing. A photo of the throttle body coupler Plaintiff
consumers believe is the Plaintiff’s Coupler, but consumers are then receiving a different,
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27. Plaintiff exclusively owns rights to the copyrighted Steel Piping Photo and the
28. Defendant’s unauthorized use of the Steel Piping Photo constitutes copyright
29. Defendant’s unauthorized use of the Silicone Boot Photo constitutes copyright
30. Without Plaintiff’s authorization, Defendant has removed the Plaintiff’s ’699
Mark from the Silicone Boot Photo and has used it to advertise and sell their own goods.
31. Defendant’s acts of removing the HSM Marks demonstrate that its copyright
infringement was knowing, willful, and intentional and were done with the intent to profit off of
the Silicone Boot Photo. Plaintiff is entitled to receive increased damages as a result of the
32. Defendant’s infringement of the Steel Piping Photo and the Silicone Boot Photo
33. Plaintiff has suffered and continues to suffer due to Defendant’s infringement in
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36. Plaintiff has used the ’699 Mark in interstate commerce with the advertising and
37. Without Plaintiff’s permission, Defendant has used the Steel Piping Photo in
commerce, bearing the ’699 Mark, to induce consumers to purchase goods sold by Defendant
38. Defendant’s unauthorized use of the Steel Piping Photo and providing a different,
inferior throttle body coupler has caused, and will likely continue to cause, confusion, mistake,
39. Defendant had actual knowledge of the Defendant’s ownership of the ’699 mark
40. Defendant’s infringing acts have caused and will continue to cause Plaintiff to
suffer irreparable injury to its reputation and goodwill. Plaintiff does not have an adequate
remedy at law to recover for this harm, and it is therefore entitled to injunctive relief.
42. Defendant’s use of an inferior imitation of the Coupler associated with the HSM
Marks has caused and continues to cause dilution by tarnishment of the distinctive quality of the
HSM Marks. Defendant’s use of an imitation of the Coupler is a violation of 15 U.S.C. § 1125.
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43. Defendant has acted in bad faith and/or willfully in removing the ’699 Mark or
other HSM Marks and offering a throttle body coupler that varies, and is inferior to, the Coupler
shown in the Silicone Boot Photo; thereby the Defendant has tarnished, and continues to tarnish,
44. Plaintiff is entitled to injunctive relief under 15 U.S.C. § 1116 and recovery of
damages from Defendant, pursuant to 15 U.S.C. § 1117(a). Damages recoverable are actual
damages sustained by the Plaintiff, Defendant’s profits, and the costs of the action together with
Plaintiff’s reasonable attorney fees. In the alternative, Plaintiff is entitled to recover damages in
such sum as the Court may find just according to the circumstances of the case.
46. Defendant has used the Steel Piping Photo and the Silicone Boot Photo without
47. Defendant’s acts of using these photos have fraudulently induced consumers to
48. By virtue of the acts complained of herein, Defendant has intentionally caused a
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competition, and unlawful, unfair, malicious, or fraudulent business practices, which have
injured Plaintiff.
50. Defendant’s unfair and unlawful business practices have caused substantial injury
to Plaintiff and are continuing to cause substantial injury. Plaintiff has no adequate remedy at law
for these injuries. Unless the Defendant is restrained by this Court from continuing its unfair and
unlawful business practices these injuries will continue to accrue. Plaintiff is entitled to
preliminary and permanent injunctive relief against the Defendant’s unfair and unlawful business
52. Plaintiff is the owner of the ’399 Patent, which is valid and enforceable.
53. Defendant has infringed, induced others to infringe, and/or contributed to the
infringement of the ’399 Patent, and continues to do so by manufacturing, using, offering to sell,
and selling within the United States, without permission from Plaintiff to do so, products covered
54. A side-by-side comparison of figures from the ‘399 Patent (left) and photos of the
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55. An ordinary observer, given such attention as a purchaser usually gives, would be
deceived by the substantial similarity between the design of the Defendant’s throttle body
56. Despite being notified of the ’399 Patent, Defendant has refused to cease its
infringing activities.
57. Defendant’s deliberate and willful actions in infringing the design of Plaintiff’s
’399 Patent, have caused, and will continue to cause, irreparable harm to Plaintiff unless
58. Defendant has also profited from, and continues to profit from, its infringing
result of Defendant’s willful infringement of the ’399 patent, pursuant to 35 U.S.C. §§ 284 and
289.
conduct makes this an exceptional case entitling Plaintiff to an award of attorney’s fees and
costs.
Based on the foregoing, Plaintiff respectfully requests judgment in its favor against
Defendant as follows:
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B. That the Court render a final judgment that the Defendant has violated 17 U.S.C.
C. That the Court render a final judgment that the Defendant has violated the
provisions of 15 U.S.C. § 1114 by willfully infringing Plaintiff’s trademark rights in the ’699
Mark;
D. That the Court render a final judgment that the Defendant has violated the
E. That the Court render a final judgment that the Defendant has violated Utah Code
Ann. § 13-5a-102 by false advertising and fraudulently inducing consumers to buy Defendant’s
products;
F. That the Court, under 17 U.S.C. § 502(a), permanently enjoin the Defendant from
G. That Defendant be directed to file with this Court and serve on Plaintiff within
thirty (30) days after the service of the injunction, a report, in writing, under oath, setting forth in
detail the manner and form in which it has complied with the injunction pursuant to 15 U.S.C. §
1116;
H. Enter judgment and preliminarily and permanently enjoin and restrain Defendant,
its officers, directors, principals, agents, servants, employees, successors and assigns, and all
others aiding, abetting, or acting in concert or active participation therewith, from making, using,
importing, selling or offering for sale, or otherwise distributing any product that infringes the
’399 Patent;
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I. That Defendant be required to account to Plaintiff for any and all profits derived
K. That this case be deemed exceptional and the amount of profits be increased by as
L. That the Court award Plaintiff its reasonable costs, expenses, and attorneys’ fees
O. That Plaintiff be awarded any such other relief that the circumstances may require
Respectfully submitted,
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Registration #: VAu001421525
Service Request #: 1-10219788411
Registration Number
VAu 1-421-525
Effective Date of Registration:
March 01, 2021
Registration Decision Date:
March 03, 2021
Title
Title of Work: 2014 Steel Piping Kit
Completion/Publication
Year of Completion: 2014
Author
Copyright Claimant
1
Rights and Permissions
Certification
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JS 44 (Rev. 10/20) Case 4:21-cv-00063-DN Document 2-3 Filed
CIVIL COVER 06/03/21 PageID.23 Page 1 of 1
SHEET
The JS 44 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, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for the
purpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)
I. (a) PLAINTIFFS DEFENDANTS
H&S Motorsports, LLC Smeding Diesel, LLC
(b) County of Residence of First Listed Plaintiff Washington Co., Utah County of Residence of First Listed Defendant Kendall Co., Texas
(EXCEPT IN U.S. PLAINTIFF CASES) (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, and Telephone Number) Attorneys (If Known)
Gurr Brande & Spendlove, PLLC
491 E Riverside Dr, 4B, St. George, UT (435) 767-7808
II. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for Plaintiff
(For Diversity Cases Only) and One Box for Defendant)
1 U.S. Government X3 Federal Question PTF DEF PTF DEF
Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4 4
of Business In This State
2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 5
Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State
VII. REQUESTED IN CHECK IF THIS IS A CLASS ACTION DEMAND $ CHECK YES only if demanded in complaint:
COMPLAINT: UNDER RULE 23, F.R.Cv.P. preliminary injunction JURY DEMAND: X✖ Yes No
VIII. RELATED CASE(S)
(See instructions):
IF ANY JUDGE DOCKET NUMBER
DATE SIGNATURE OF ATTORNEY OF RECORD
06/03/2021
FOR OFFICE USE ONLY