Case 2:14-cv-00759 Document 1 Filed 01/31/14 Page 1 of 20 Page ID #:1

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James B. Hardin (State Bar No. 205071) jhardin@trialnewport.com Tyler J. Woods (State Bar No. 232464) twoods@trialnewport.com Tu-Quyen Pham (State Bar No. 260864) tpham@trialnewport.com NEWPORT TRIAL GROUP A Professional Corporation 4100 Newport Place, Suite 800 Newport Beach, CA 92660 Tel: (949) 706-6464 Fax: (949) 706-6469 Attorneys for Plaintiff NIKE, INC.

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UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA, WESTERN DIVISION NIKE, INC., Plaintiff, v. SUPER STAR INTL, INC., and SAI LIU, Defendants. Case No. COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) TRADEMARK INFRINGEMENT IN VIOLATION OF 15 U.S.C. 1114; (2) UNFAIR COMPETITION IN VIOLATION OF THE LANHAM ACT, 15 U.S.C. 1125(a); (3) TRADEMARK DILUTION IN VIOLATION OF 15 U.S.C. 1114; (4) COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION; (5) STATUTORY TRADEMARK DILUTION IN VIOLATION OF CAL. BUS. & PROF. CODE 14247 (6) UNFAIR COMPETITION IN VIOLATION OF CAL. BUS. & PROF. CODE 17200 ET SEQ.; AND (7) PATENT INFRINGEMENT IN VIOLATION OF 35 U.S.C. 271 Jury Trial Demanded

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF

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COMPLAINT Plaintiff, NIKE, Inc. (NIKE), for its complaint against Defendants, Super Star Intl, Inc., and Sai Liu, (collectively, Defendants), based on provisional knowledge and on information and belief as appropriate, alleges as follows: I. 1. The Parties

NIKE is a corporation organized and existing under the laws of the State of

Oregon with a principal place of business at One Bowerman Drive, Beaverton, Oregon 97005. 2. On information and belief, Super Star Intl, Inc. (Superstar), is a

corporation organized and existing under the laws of the State of California with a principal place of business at 1935 Santa Anita Ave., South El Monte, California 91733. 3. On information and belief, Sai Liu is an individual and the President and

registered agent of Superstar. On information and belief, Sai Liu is the alter ego of Superstar and controls its selection, importation, and sales of footwear designs, including those relevant to this dispute. II. 4. Jurisdiction and Venue

This is an action for trademark infringement, false designation of origin,

unfair competition, trademark dilution, and patent infringement. This action arises under the Trademark Act of 1946, 15 U.S.C. 1051, et seq. (Lanham Act), California Business and Professions Code Sections 14247 and 17200, et seq., federal common law, the common law of the state of California, and U.S. Patent Laws, 35 U.S.C. 271, 281, 283-285. 5. This Court has subject matter jurisdiction over this action pursuant to at

least 15 U.S.C. 1121(a) and 28 U.S.C. 1331, 1338(a) & (b), and 1367(a). 6. On information and belief, Defendants have and are continuing to

advertise, offer for sale, and sell infringing and diluting footwear products to customers, including customers in the State of California and in this District.
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7.

On information and belief, this Court may exercise personal jurisdiction

over Defendants based upon their contacts with this forum, including at least having a principal place of business here, regularly and intentionally doing business here, and committing acts giving rise to this lawsuit here. 8. III. 9. Venue is proper in this judicial district pursuant to at least 28 U.S.C. General Allegations NIKEs Trademarks and Design Patents For many years, NIKE has continuously engaged in the development,

1391(b) and (c).

manufacture, and sale of a wide array of athletic and fashion footwear, apparel, and sports equipment. NIKE has taken many steps to protect its innovative designs,

including its footwear-related designs. For example, NIKE owns a variety of common law and federal trademark rights relating to the source identifying features of its footwear designs. Additionally, NIKE owns numerous United States design patents covering many of its footwear designs. A. 10. NIKEs Air Force 1 Trademarks Relevant to this dispute, in 1982, NIKE designed the Air Force 1 shoe.

Since then, NIKE has produced the Air Force 1 shoe in more than 1,700 different color combinations and has sold the shoe in all fifty states and around the world. The design of the Air Force 1 is one of the most popular shoe designs of all time, as evidenced by the fact that NIKE sells tens of millions of pairs of shoes bearing the Air Force 1 design every single year. 11. The Air Force 1 shoe design is also is also the subject of widespread and

unsolicited public attention. This publicity extends from acclaim in magazines and newspapers to appearances in movies, television shows, and even hit songs dedicated to the shoe. In particular, the Air Force 1 shoe design has been featured in numerous newspaper, magazine, and Internet articles that extol its presence throughout American culture and/or that celebrated the shoe designs twenty-fifth anniversary in 2007. Example articles and website images illustrating the fame and unsolicited publicity of
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the Air Force 1 are attached to this Complaint as Exhibit A. 12. The upper, midsole, and outsole of the Air Force 1 shoe design have a

distinctive and non-functional configuration that identifies to consumers that the origin of the shoe is NIKE. Illustration 1 below shows the iconic Air Force 1 shoe design.

Illustration 1: The Air Force 1 Shoe 13. NIKE owns federal trademark registrations for the design of the Air Force 1 shoe. For example, NIKE owns U.S. Trademark Registration No. 3,451,905,

registered June 24, 2008, for the design of the stitching on the exterior of the shoe, the design of the material panels that form the exterior body of the shoe, the design of the wavy panel on the top of the shoe that encompasses the eyelets for the shoe laces, the design of the vertical ridge pattern on the sides of the sole of the shoe, and the relative position of these elements to each other as generally shown in Illustration 2 below. A copy of Registration No. 3,451,905 (the 905 Registration) is attached to this Complaint as Exhibit B.
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Illustration 2: the 905 Registration Figure 14. NIKE also owns U.S. Trademark Registration No. 3,451,904, registered

June 24, 2008, for the design of the tread on the sole a shoe as generally shown in Illustration 3 below. A copy of Registration No. 3,451,904 (the 904 Registration) is attached to this Complaint as Exhibit C.

Illustration 3: the 904 Registration Figure 15. The 904 and 905 Registrations have become incontestable, and constitute

conclusive evidence of the validity of the trademarks and of NIKEs ownership of and exclusive right to use the trademarks. 16. NIKE also owns common law trademark rights in the upper, midsole, and

outsole of the Air Force 1 shoe design as a result of NIKEs continuous and exclusive use of the design for more than thirty years. NIKEs federal and common law

trademark rights in the designs of the Air Force 1 shoe are collectively hereafter referred to as the NIKE Marks. 17. As a result of NIKEs long-term, exclusive, continuous, and substantial

use, advertising, and sales of shoes bearing the NIKE Marks, and the widespread publicity and attention that has been paid to the NIKE Marks, the NIKE Marks are famous and have acquired substantial secondary meaning in the marketplace as consumers have come to uniquely associate them as a source identifier of NIKE.
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B. 18.

NIKEs Asserted Design Patent NIKE is renowned for creating highly sought after, ornamental footwear

designs. In 2011, NIKE introduced its NIKE Free Run +2, an image of which appears in Illustration 4 below.

Illustration 4: the NIKE Free Run +2 Shoe 19. Because its ornamental footwear designs are often copied, NIKE takes

steps to protect its designs. To that end, on August 16, 2011, the United States Patent and Trademark Office issued United States Design Patent No. D643,202 (hereafter, the 202 Patent or Asserted Patent) to NIKE (attached to this complaint as Exhibit D). An exemplary view of the claim of the Asserted Patent is displayed in Illustration 5 below. NIKE owns all right, title, and interest in the 202 Patent and the202 Patent is presumed to be valid.

Illustration 5: the Asserted Patent Claim General Allegations Defendants Unlawful Activities 20. On information and belief, Defendants have and are continuing to

advertise, offer for sale, and sell footwear bearing confusingly similar imitations of the
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NIKE Marks, as well as footwear bearing designs that are substantially similar to the Asserted Patent (collectively, the Offending Products). 21. Illustration 6 below demonstrates Defendants unlawful activity by

comparing examples of the NIKE Marks and the Asserted Patent to representative images of Offending Products. Illustration 6: Example NIKE Marks or Asserted Patent (left), Representative Offending Product (right)

905 Registration Figure

Air Force 1 Shoe Design

Offending Product

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Illustration 6: Example NIKE Marks or Asserted Patent (left), Representative Offending Product (right)

904 Registration Figure

Offending Product

Air Force 1 Shoe Design

Asserted Patent Claim

Offending Product

22.

NIKE used the NIKE Marks extensively and continuously before

Defendants began selling, offering to sell, distributing, or advertising the Offending Products.
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23.

NIKE never authorized Defendants to sell, offer to sell, distribute, or

advertise the Offending Products. 24. This is not the first time Defendants have infringed NIKE intellectual

property rights, or the intellectual property rights of Converse Inc. (Converse), a wholly owned subsidiary of NIKE. Over the past eight years the Defendants, which on information and belief have operated under a variety of company and/or trade names, including JeAir and K-Air, have established a clear pattern of willful infringements. To that end, between February 2006 and February 2012, NIKE and Converse served Defendants or their predecessor businesses with seven cease and desist letters relating to infringement of eleven NIKE design patents and several Converse trademarks. 25. Because Defendants refused to stop infringing NIKE and Converses

intellectual property rights, on June 15, 2012, NIKE and Converse filed civil action number No. 12-5240 in the Central District of California against the Defendants, among other parties. Defendants ultimately admitted their infringements and consented to entry of judgment in favor of NIKE and Converse on every allegation of the complaint. (See Case No. 12-5240, Dkt. No. 90). The Court entered the consent judgment and a permanent injunction on May 15, 2013. (Id.). 26. Several months later, on August 21, 2013, NIKEs representatives

observed Defendant Superstar at the World Shoe Association (WSA) trade show in Las Vegas offering to sell shoes identified as model M853 bearing the design covered by the 202 Patent. The same day, NIKEs counsel provided a copy of the 202 Patent to representatives at Superstars WSA trade show booth. Nevertheless, on October 8, 2013, a private investigator discovered Superstar offering to sell the same design at its retail store in South El Monte, California. 27. On information and belief as evidenced by the facts and circumstances

alleged above, Defendants infringements have been intentional and willful, and manifest a deliberate and continuing pattern of infringing Plaintiffs trademark and design patent rights.
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Count I: Trademark Infringement under Section 32(1) of the Lanham Act 15 U.S.C. 1114(1) 28. NIKE re-alleges each and every allegation set forth in paragraphs 1

through 27 above, inclusive, and incorporates them by reference herein. 29. Defendants offers to sell, sales, distribution, and/or advertisement of

Offending Products violates Section 32(1) of the Lanham Act, 15 U.S.C. 1114(1). 30. law. The NIKE Marks are entitled to protection under both federal and common

The NIKE Marks include U.S. Trademark Registration Nos. 3,451,904 and These trademark registrations have become incontestable and constitute

3,451,905.

conclusive evidence of the validity of trademarks and of NIKEs ownership of and exclusive right to use the trademarks. 31. The NIKE Marks have distinctive appearances using unique and non-

functional designs. NIKE has extensively and continuously promoted and used the NIKE Marks for decades in the United States and worldwide. Through that extensive and continuous use, the NIKE Marks have become famous and well-known indicators of the origin and quality of NIKE footwear. The NIKE Marks have also acquired substantial secondary meaning in the marketplace. Moreover, the NIKE Marks became famous and acquired this secondary meaning long before Defendants commenced their use of the NIKE Marks and colorable imitations thereof in connection with the Offending Products. 32. Defendants use of the NIKE Marks and colorable imitations thereof is

likely to cause consumer confusion as to the origin and/or sponsorship/affiliation of the Offending Products, at least by creating the false and misleading impression that the Offending Products are manufactured by, authorized by, or otherwise associated with NIKE. 33. Defendants use of the NIKE Marks and colorable imitations thereof has

caused and, unless enjoined, will continue to cause substantial and irreparable injury to NIKE for which NIKE has no adequate remedy at law, including at least substantial and
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irreparable injury to the goodwill and reputation for quality associated with the NIKE Marks. 34. On information and belief, Defendants use of the NIKE Marks and

colorable imitations thereof has been intentional, willful, and malicious. Defendants bad faith is evidenced at least by the similarity of the Offending Products to the NIKE Marks, as demonstrated in Illustration 4 above, and by the Defendants long-standing and continuing disregard for NIKEs intellectual property rights. 35. NIKE is entitled to injunctive relief, and NIKE is also entitled to recover

Defendants profits, actual damages, enhanced profits and damages, costs, and reasonable attorney fees under 15 U.S.C. 1114, 1116, and 1117. Count II: False Designation of Origin/Unfair Competition under Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a) 36. NIKE re-alleges each and every allegation set forth in paragraphs 1

through 35 above, inclusive, and incorporates them by reference herein. 37. Defendants offers to sell, sales, distribution, and/or advertisement of

Offending Products, in direct competition with NIKE, violates Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a). 38. law. The NIKE Marks are entitled to protection under both federal and common

The NIKE Marks include U.S. Trademark Registration Nos. 3,451,904 and These trademark registrations have become incontestable and constitute

3,451,905.

conclusive evidence of the validity of trademarks and of NIKEs ownership of and exclusive right to use the trademarks. 39. The NIKE Marks have distinctive appearances using unique and non-

functional designs. NIKE has extensively and continuously promoted and used the NIKE Marks for decades in the United States and worldwide. Through that extensive and continuous use, the NIKE Marks have become famous and well-known indicators of the origin and quality of NIKE footwear. The NIKE Marks have also acquired substantial secondary meaning in the marketplace. Moreover, the NIKE Marks became
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famous and acquired this secondary meaning long before Defendants commenced their use of the NIKE Marks and colorable imitations thereof in connection with the Offending Products. 40. Defendants use of the NIKE Marks and colorable imitations thereof

constitutes a false designation of origin that is likely to cause consumer as to the origin and/or sponsorship/affiliation of the Offending Products, at least by creating the false and misleading impression that the Offending Products are manufactured by, authorized by, or otherwise associated with NIKE. 41. Defendants use of the NIKE Marks and colorable imitations thereof has

caused and, unless enjoined, will continue to cause substantial and irreparable injury to NIKE for which NIKE has no adequate remedy at law, including at least substantial and irreparable injury to the goodwill and reputation for quality associated with the NIKE Marks. 42. On information and belief, Defendants use of the NIKE Marks and

colorable imitations thereof has been intentional, willful, and malicious. Defendants bad faith is evidenced at least by the similarity of the Offending Products to the NIKE Marks, as demonstrated in Illustration 4 above, and by the Defendants long-standing and continuing disregard for NIKEs intellectual property rights. 43. NIKE is entitled to injunctive relief, and NIKE is also entitled to recover

Defendants profits, actual damages, enhanced profits and damages, costs, and reasonable attorney fees under 15 U.S.C. 1125(a), 1116, and 1117. Count III: Dilution under Section 43(c) of the Lanham Act 15 U.S.C. 1125(c) 44. NIKE re-alleges each and every allegation set forth in paragraphs 1

through 43 above, inclusive, and incorporates them by reference herein. 45. Defendants offers to sell, sales, distribution, and/or advertisement of

Offending Products violates Section 43(c) of the Lanham Act, 15 U.S.C. 1125(c).
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46. law.

The NIKE Marks are entitled to protection under both federal and common

The NIKE Marks include U.S. Trademark Registration Nos. 3,451,904 and These trademark registrations have become incontestable and constitute

3,451,905.

conclusive evidence of the validity of trademarks and of NIKEs ownership of and exclusive right to use the trademarks. 47. The NIKE Marks have distinctive appearances using unique and non-

functional designs. NIKE has extensively and continuously promoted and used the NIKE Marks for decades in the United States and worldwide. Through that extensive and continuous use, the NIKE Marks have become famous and well-known indicators of the origin and quality of NIKE footwear. The NIKE Marks have also acquired substantial secondary meaning in the marketplace. Moreover, the NIKE Marks became famous and acquired this secondary meaning long before Defendants commenced their use of the NIKE Marks and colorable imitations thereof in connection with the Offending Products. 48. Defendants use of the NIKE Marks and colorable imitations thereof is

likely to cause, and has caused, dilution of the famous NIKE Marks at least by eroding the publics exclusive identification of the famous NIKE Marks with NIKE and by lessening the capacity of the famous NIKE Marks to identify and distinguish NIKE footwear. 49. Defendants use of the NIKE Marks and colorable imitations thereof has

caused, and, unless enjoined, will continue to cause, substantial and irreparable injury to NIKE for which NIKE has no adequate remedy at law, including at least substantial and irreparable injury to the goodwill and reputation for quality associated with the NIKE Marks. 50. On information and belief, Defendants use of the NIKE Marks and

colorable imitations thereof has been intentional, willful, and malicious. Defendants bad faith is evidenced at least by the similarity of the Offending Products to the NIKE Marks, as demonstrated in Illustration 4 above, and by the Defendants long-standing
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and continuing disregard for NIKEs intellectual property rights. 51. NIKE is entitled to injunctive relief, and NIKE is also entitled to recover

Defendants profits, actual damages, enhanced profits and damages, costs, and reasonable attorney fees under 15 U.S.C. 1125(c), 1116, and 1117. Count IV: Common Law Trademark Infringement and Unfair Competition 52. NIKE re-alleges each and every allegation set forth in paragraphs 1

through 51 above, inclusive, and incorporates them by reference herein. 53. Defendants offers to sell, sales, distribution, and/or advertisement of

Offending Products, in direct competition with NIKE, constitute common law trademark infringement and unfair competition. 54. The NIKE Marks are entitled to protection under both federal and common

law. The NIKE Marks have distinctive appearances using unique and non-functional designs. NIKE has extensively and continuously promoted and used the NIKE Marks for decades in the United States and worldwide. Through that extensive and continuous use, the NIKE Marks have become famous and well-known indicators of the origin and quality of NIKE footwear. The NIKE Marks have also acquired substantial secondary meaning in the marketplace. Moreover, the NIKE Marks became famous and acquired this secondary meaning long before Defendants commenced their use of the NIKE Marks and colorable imitations thereof in connection with the Offending Products. 55. Defendants use of the NIKE Marks and colorable imitations thereof is

likely to cause consumer confusion as to the origin or sponsorship of the Offending Products by creating the false and misleading impression that the Offending Products are manufactured by, authorized by, or otherwise associated with NIKE. 56. Defendants use of the NIKE Marks and colorable imitations thereof has

caused and, unless enjoined, will continue to cause substantial and irreparable injury to NIKE for which NIKE has no adequate remedy at law, including at least substantial and irreparable injury to the goodwill and reputation for quality associated with the NIKE Marks.
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57.

On information and belief, Defendants use of the NIKE Marks and

colorable imitations thereof has been intentional, willful, and malicious. Defendants bad faith is evidenced at least by the similarity of the Offending Products to the NIKE Marks, as demonstrated in Illustration 4 above, and by the Defendants long-standing and continuing disregard for NIKEs intellectual property rights. 58. NIKE is entitled to injunctive relief, and NIKE is also entitled to recover

Defendants profits, actual damages, costs, and reasonable attorney fees. Count V: Dilution under California State Law California Business and Professions Code 14247 59. NIKE re-alleges each and every allegation set forth in paragraphs 1

through 58 above, inclusive, and incorporates them by reference herein. 60. Defendants offers to sell, sales, distribution, and/or advertisement of

Offending Products are diluting and are likely to continue to dilute the distinctive nature of NIKEs trademarks and trade dress. These acts are injuring NIKEs business reputation and goodwill in violation of Section 14247 of California Business and Professions Code. 61. The NIKE Marks are entitled to protection under federal law, common

law, and California state law. The NIKE Marks have distinctive appearances using unique and non-functional designs. NIKE has extensively and continuously promoted and used the NIKE Marks for decades in the United States and worldwide. Through that extensive and continuous use, the NIKE Marks have become famous and wellknown indicators of the origin and quality of NIKE footwear. The NIKE Marks have also acquired substantial secondary meaning in the marketplace. Moreover, the NIKE Marks became famous and acquired this secondary meaning long before Defendants commenced their use of the NIKE Marks and colorable imitations thereof in connection with the Offending Products. 62. Defendants use of the NIKE Marks and colorable imitations thereof is

likely to cause, and has caused, dilution of the famous NIKE Marks at least by eroding
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the publics exclusive identification of the famous NIKE Marks with NIKE and by lessening the capacity of the famous NIKE Marks to identify and distinguish NIKE footwear. 63. Defendants use of the NIKE Marks and colorable imitations thereof has

caused, and, unless enjoined, will continue to cause, substantial and irreparable injury to NIKE for which NIKE has no adequate remedy at law, including at least substantial and irreparable injury to the goodwill and reputation for quality associated with the NIKE Marks. 64. On information and belief, Defendants use of the NIKE Marks and

colorable imitations thereof has been intentional, willful, and malicious. Defendants bad faith is evidenced at least by the similarity of the Offending Products to the NIKE Marks, as demonstrated in Illustration 4 above. 65. NIKE is entitled to injunctive relief, and NIKE is also entitled to recover

Defendants profits, actual damages, and enhanced profits and damages. Count VI: Unfair Competition under California State Law California Business and Professions Code 17200 66. NIKE re-alleges each and every allegation set forth in paragraphs 1 through 65 above, inclusive, and incorporates them by reference herein. 67. Defendants offers to sell, sales, distribution, and/or advertisement of

Offending Products constitutes unfair competition within the meaning and in violation of the California Business and Professions Code 17200, et. seq. 68. The NIKE Marks are entitled to protection under federal law, common

law, and California state law. The NIKE Marks include U.S. Trademark Registration Nos. 3,451,904 and 3,451,905. The NIKE Marks have distinctive appearances using unique and non-functional designs. NIKE has extensively and continuously promoted and used the NIKE Marks for decades in the United States and worldwide. Through that extensive and continuous use, the NIKE Marks have become famous and wellknown indicators of the origin and quality of NIKE footwear. The NIKE Marks have
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also acquired substantial secondary meaning in the marketplace. Moreover, the NIKE Marks became famous and acquired this secondary meaning long before Defendants commenced their use of the NIKE Marks and colorable imitations thereof in connection with the Offending Products. 69. Defendants use of the NIKE Marks and colorable imitations thereof is

likely to cause consumer confusion as to the origin or sponsorship of the Offending Products by creating the false and misleading impression that the Offending Products are manufactured by, authorized by, or otherwise associated with NIKE, and is also likely to cause, and has caused, dilution of the famous NIKE Marks at least by eroding the publics exclusive identification of the famous NIKE Marks with NIKE and by lessening the capacity of the famous NIKE Marks to identify and distinguish NIKE footwear. 70. Defendants use of the NIKE Marks and colorable imitations thereof has

caused, and, unless enjoined, will continue to cause, substantial and irreparable injury to NIKE for which NIKE has no adequate remedy at law, including at least substantial and irreparable injury to the goodwill and reputation for quality associated with the NIKE Marks. 71. On information and belief, Defendants use of the NIKE Marks and

colorable imitations thereof has been intentional, willful, and malicious. Defendants bad faith is evidenced at least by the similarity of the Offending Products to the NIKE Marks, as demonstrated in Illustration 4 above. 72. NIKE is entitled to injunctive relief pursuant to California Business and

Professions Code 17203, and NIKE is also entitled to recover Defendants profits, restitution, and reasonable attorney fees. Count VII: Patent Infringement 73. NIKE re-alleges each and every allegation set forth in paragraphs 1 through 72 above, inclusive, and incorporates them by reference herein.
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74.

On information and belief, Defendants have used, sold, or offered to sell,

and will continue to use, sell, or offer to sell, footwear that infringes the claim of the Asserted Patent, without license from NIKE, in the State of California, including this judicial district, and elsewhere throughout the United States. 75. By using, selling, and/or offering for sale their footwear, Defendants have

infringed, and will continue to infringe, the Asserted Patent under 35 U.S.C. 271 literally and/or under the doctrine of equivalents. 76. On information and belief, Defendants infringement of the Asserted

Patent under 35 U.S.C. 271 has been and continues to be willful and deliberate. 77. As a consequence of Defendants infringing acts, NIKE has been, is being,

and will continue to be injured and has suffered, is suffering, and will continue to suffer injury and damages for which it is entitled to relief under 35 U.S.C. 281, 284, 285, and 289. 78. As a consequence of Defendants infringing acts, Defendants have also

caused, are causing, and will continue to cause irreparable harm to NIKE, for which there is no adequate remedy at law, and for which NIKE is entitled to injunctive relief under 35 U.S.C. 283. Relief Sought WHEREFORE, Plaintiffs respectfully pray for: 1. Judgment that Defendants have (i) willfully infringed the Asserted Patent

in violation of 35 U.S.C. 271 (a) and (b), (ii) willfully infringed the NIKE Marks in violation of 1114 of Title 15 in the United States Code; (iii) willfully used false designations of origin/unfair competition in violation of 1125(a) of Title 15 in the United States Code; (iv) willfully diluted the NIKE Marks in violation of 1125(c) of Title 15 in the United States Code; (v) willfully violated NIKEs common law rights in the NIKE Marks; (vi) willfully infringed the NIKE Marks and engaged in unfair competition in violation of the common law of California; (vii) willfully diluted the NIKE Marks in violation of 14247 of the California Business and Professions Code;
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and (viii) willfully engaged in unfair competition in violation of 17200, et. seq. of the California Business and Professions Code; 2. A preliminary and permanent injunction against further infringement,

direct and indirect, of the Asserted Patent by Defendants, and each of their agents, employees, servants, attorneys, successors and assigns, and all others in privity or acting in concert with any of them; 3. A preliminary and permanent injunction against further infringement, false

designation of origin, unfair competition, and dilution of the NIKE Marks by Defendants, and each of their agents, employees, servants, attorneys, successors and assigns, and all others in privity or acting in concert with any of them, including at least from selling, offering to sell, distributing, or advertising the Offending Products, or any other products that use a copy, reproduction, or colorable imitation of the NIKE Marks; 4. An order directing the destruction of all Offending Products, or any other

products that use a copy, reproduction, or colorable imitation of the NIKE Marks in Defendants possession or control, including the destruction of all advertising materials related to the Offending Products and any additional Offending Products in Defendants possession or control, including on the Internet; 5. An award of damages adequate to compensate Plaintiffs for the patent

infringements that have occurred pursuant to 35 U.S.C. 284, which shall be trebled as a result of Defendants willful patent infringement, or an award of Defendants profits from their infringements pursuant to 35 U.S.C. 289, whichever is greater, together with prejudgment interest and costs; 6. An assessment of costs, including reasonable attorney fees and expenses,

pursuant to 35 U.S.C. 285, with prejudgment interest; 7. An award of Defendants profits, actual damages, enhanced profits and

damages, costs, and reasonable attorney fees under 15 U.S.C. 1114, 1116, and 1117 for Defendants trademark infringements and dilution; and
///
- 18 COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF

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EXHIBIT A

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The Nike Air Force 1 Sneaker Turns 25 Years Old

By FRED BIERMAN Published: December 23, 2007 E-MAIL

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In 1982, Nike released the Air Force 1, a basketball shoe that featured a revolutionary technological innovation: a pocket of air in the heel for cushioning and support. The shoe, although expensive at $89.95, was an immediate hit among players, from the N.B.A. to the playground, with professionals like Moses Malone and Michael Cooper endorsing them and wearing them during games. Twenty-five years later, only Pistons

E-MAILE

forward Rasheed Wallace still wears the shoe in the N.B.A. But the Air Force 1, now priced at $80 for the basic whiteon-white, is a far better seller than when it was introduced. Largely because of its popularity off the court, it has become the best-selling sneaker ever with more than 1,800
Nike

color combinations, many in limited editions that can cost thousands of dollars. Its the No. 1 seller in the history of athletic footwear, said Matt Powell, an analyst at SportsOneSource, a
MOST PO

Nike released the Air Force 1 in 1982. The sneaker comes in more than 1,800 color combinations and can cost thousands of dollars.

research and data firm in Charlotte, N.C., that follows the sporting-goods industry. Nike declined to release sales figures, but Powell estimated that about 12 million pairs of the Air Force 1 were sold at its peak in 2005, and 10 million to 11 million were sold last year.

1. 2. 3. 4. 5.

A T o W F A T

Case 2:14-cv-00759 Document 1-1 Filed 01/31/14 Page 7 of 9 Page ID #:27

The shoe was originally popular in the East, and Nike is giving loyalists in Baltimore, Philadelphia and New York the chance to choose 1 of 25 of the most popular models to be re-released in those cities in the summer. Baltimore voted last month, and the Philadelphia balloting ends Wednesday. Voting in New York will take place Jan. 2-31. (Polling locations and the winning models are at nike.com/af1.) That a 25-year-old sneaker was the best-selling athletic
Rusty Kennedy/Associated Press

6. 7. 8. 9. 10.

To on Ho Ta Ma Bo

Go to Co

shoe last year reflects a change in an industry whose product is becoming valued more for its fashion relevance than for its performance. Few people buy Air Force 1s to wear on a basketball court, and many collectors keep several pairs in pristine condition to protect their value. Yet people are still unable to describe what has made the shoe so popular. People want to analyze it death, but its really just that it looks great on your foot, said Bobbito Garcia, a sneaker and hip-hop expert who wrote the book Whered You Get Those? New York Citys Sneaker Culture: 1960-1987.
ADVERTI

Moses Malone was an early adopter.

How
Also in J Recru Are yo Find g

All the ne

Jeffrey Neira/UPN

The rapper Nelly recorded an ode titled Air Force Ones.

Rare Air Force 1s like the Entourage Edition (in honor of the HBO show) and a crocodile-skin 25th anniversary

edition cost more than $2,000 at Flight Club New York, a consignment sneaker store in Lower Manhattan. The shoe is just an excellent shoe, said Esteban Padilla, the director of consignment at Flight Club, who was wearing a pair of burnt orange canvas Air Force 1s. Its classic. One of the keys to the Air Force 1s popularity is that it comes in so many color combinations. It takes color very well, KeJuan Wilkens, a Nike spokesman, said. Thats the unique thing about the shoe, different colors to some people make it feel like a completely
INSIDE N

Case 2:14-cv-00759 Document 1-1 Filed 01/31/14 Page 8 of 9 Page ID #:28

different shoe. Yet the white-on-white is the most popular model, although many people also own other colors to complement an outfit or to achieve a different look. Nike often produces limited runs of various colors, and their scarcity makes them more desirable and more expensive. For many collectors, the ultimate goal is to be the only one wearing a particular sneaker. Garcia was hand-painting his Air Force 1s in the mid-1980s, well before Nike started producing different colors. I didnt want to wear the same colors that everyone else has, he said. Until the mid-1990s, the Air Force 1 was a hit in some Eastern cities. But their popularity among influential rappers of that era helped them to sell across the country and across the globe. A lot of that had to do with the huge increase in the shoes exposure not entirely due to sports, but now due to the culture, Garcia said. A lot of the artists from the Eastern Seaboard who were really killing them particularly Jay-Z with all the influence he had globally and him wearing Air Force 1 on stage and videos and concert appearances really, really pushed the shoe. Had that not happened, the shoe would have still been selling in New York, Philly and Baltimore; it still would have been that hot shoe. But once all the recording artists started talking about them, then it just went crazy. The shoes were popular across the country in 2002, when Nelly, a rapper from St. Louis, recorded Air Force Ones with a chorus that includes the lines, I said give me two pair/I need two pair. As more colors became available starting in the mid-1990s, Nike began releasing limitededition models and collaborations with artists that became collectors items. The company managed sales by regularly releasing models in fewer numbers than the market demanded. Nike also gave select vendors more exclusive products. That phenomenon is going on across the whole industry where the kid really wants to have a unique product, he wants to have a one of one if he can, Powell said. I think Nike is feeding that interest on the part of the consumer by keeping supply tight. The sneakers history and original purpose are lost on todays youth.

Case 2:14-cv-00759 Document 1-1 Filed 01/31/14 Page 9 of 9 Page ID #:29

There are new generations coming into it that have no idea that it was a basketball shoe when it came out, Garcia said. No idea. So in another 10 or 20 years, they wont even know that Jay-Z wore them. They wont have any idea. Theyll just keep wearing them cause its a cool shoe.
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Tips To find reference information about the words used in this article, double-click on any word, phrase or name. A new window will open with a dictionary definition or encyclopedia entry. Past Coverage Vaccaro Brings Opinions To Harvard (September 20, 2007) Nike Pops Up in SoHo, Sells $250 Sneakers, and Leaves (November 16, 2006) ADVERTISING; Nike Reaches Deeper Into New Media to Find Young Buyers (October 31, 2006) Sports of The Times; A Kick for Marbury: Hot Shoes, Cool Price (August 25, 2006) Related Searches Sneakers Basketball Nike Inc
Add Alert Add Alert Add Alert

Case 2:14-cv-00759 Document 1-2 Filed 01/31/14 Page 1 of 2 Page ID #:30

EXHIBIT B

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Case 2:14-cv-00759 Document 1-3 Filed 01/31/14 Page 1 of 2 Page ID #:32

EXHIBIT C

Case 2:14-cv-00759 Document 1-3 Filed 01/31/14 Page 2 of 2 Page ID #:33

Case 2:14-cv-00759 Document 1-4 Filed 01/31/14 Page 1 of 6 Page ID #:34

EXHIBIT D

Case 2:14-cv-00759 Document 1-4 Filed 01/31/14 Page 2 of 6 Page ID #:35

USO0D643202S

(12) United States Design Patent (10) Patent N0.2

Jarvis
(54) SHOE UPPER

US D643,202 S
*1, Aug. 16, 2011

(45) Date of Patent:

D516,795 S *
*

3/2006 Tresser ........................ .. D2/972

D528,765 S (75) lnvemor.

9/2006 PoItZline
11/2006

Kelly B- JalVlS, Oakley, UT (Us)

D5316 S .,.

D531,397 S

3/2007 Hlavacs 132/972

Smith

.......................... .. D2/972

(73) Assignee: NIKE, Inc., Beaverton, OR (US)

(**) Term: 14 Years

2
D578,294 S
D593,306 S
D636,585 S

aker
10/2008 Mervar et a1.
*
*

6/2009 St-Louis et al. ............. .. D2/969

4/2011 Williams, Jr. ................ .. D2/972

(21)
(22)
(51)

Appl_ No; 29/392 959

D636,586 S
D636,587 S

4/2011 Williams, Jr.

4/2011 Williams, Jr.

Filed:

May 27, 2011

................................................ .. 02-99

D637,379 S

5/2011 Voare et a1.

OTHER PUBLICATIONS

LOC (9) Cl.

(52)

US. Cl. ...................................................... .. D2/972

Nike Footwear Catalog, Mens andWomens Footwear: Late Spring

(58)

Field of Classi?cation Search ..

. D2/896,

D2/902, 906908, 943, 944, 969, 972*974; 36/45i49, 50.1, 77 M, 77 R, 83, 88, 113,
36/114, l26il3l See application ?le for complete search history.

2002, pp. 50 and 87, published Sep. 2001, Nike, Inc., USA. Nike Footwear Catalog, Mens and Womens Footwear: Holiday 2002, pp. 19 and 25, published Mar. 2002, Nike, Inc., USA. Nike Footwear Catalog, Mens, Womens & Kids Footwear: Fall 2004, pp. 7 and 66, published Nov. 2003, Nike, Inc., USA.

(56)
D248,192 D339,449 D341,703 D342,600 D342,604 D342,821 S S S S S S
*
* *

References Cited U.S. PATENT DOCUMENTS

6/1978 9/1993 11/1993 12/1993 12/1993 1/1994
6/1994
2/1998 3/1998

(Continued)
Primary Examiner * Dominic Simone

(74) Attorney, Agent, or Firm * Banner & Witcoff, Ltd.

Stevenson Hat?eld Hat?eldet al. Hat?eld et al. Avar Avar

Teague ......................... .. D2/969
Ford ............................. .. D2/972 von Conta .................... .. D2/969

(57)

CLAIM

The ornamental design for a shoe upper, as shown and described.

D347,724 S

D347,725 S
D391,070 S D391,752 S

6/1994 Brown et al.

DESCRIPTION
FIG. 1 is a front perspective view of a shoe upper showing my new design; FIG. 2 is a side view thereof; and, FIG. 3 is a rear perspective view thereof The broken lines immediately adjacent to the shaded area

D397,855 S
D398,756 S *

9/1998 Clarke
9/1998 Tong ............................ .. D2/972

D400,003 S
D402,102 S
D408,123 S *

10/1998 Fogg
12/1998 Rask
4/1999 James .......................... .. D2/969

D415,882 S

11/1999 McDowell

D432,781 S
D480,551 S

10/2000 Hardy
10/2003 Matis et a1.

D487,337 S D496,152 S D500,197 S

D505,251 S

3/2004 Rogers 9/2004 Doxey 12/2004 Young

5/2005 Matis et a1.

represent unclaimed boundaries of the design. The four unshaded eyelet regions demarcated by broken lines form no part of the claimed design. The broken lines showing the
remainder of the shoe are for environmental purposes only and form no part of the claimed design.

D511,885 S

11/2005 Young

1 Claim, 3 Drawing Sheets

Case 2:14-cv-00759 Document 1-4 Filed 01/31/14 Page 3 of 6 Page ID #:36

US D643,202 S
Page 2
OTHER PUBLICATIONS
Nike Footwear Catalog, Performance Footwear: Fall 2010, pp. 33

Nike Footwear Catalog, Mens, Womens, Boys and Girls Foot wear: Spring 2005, p. 52, published Jun. 2004, Nike, Inc., USA. Nike Footwear Catalog: Late Spring 2005, p. 11, published Aug. 2004, Nike, Inc., USA. Nike Footwear Catalog: Holiday 2005, p. 29, published Mar. 2005, Nike, Inc., USA. Nike Footwear Catalog: Fall 2006, p. 148, published Nov. 2005, Nike, Inc., USA.

and 57, published Nov. 2009, Nike, Inc., USA. Nike Footwear Catalog, Young Athletes Footwear: Fall 2011, p. 7, published Nov. 2010, Nike, Inc., USA.
Nike Footwear Catalog, Men s Sportswear Footwear: Summer 201 l,

p. 15, published Aug. 2010, Nike, Inc., USA.

* cited by examiner

Case 2:14-cv-00759 Document 1-4 Filed 01/31/14 Page 4 of 6 Page ID #:37

US. Patent

Aug. 16, 2011

Sheet 1 013

US D643,202 S

Case 2:14-cv-00759 Document 1-4 Filed 01/31/14 Page 5 of 6 Page ID #:38

US. Patent

Aug. 16, 2011

Sheet 2 013

US D643,202 S

Case 2:14-cv-00759 Document 1-4 Filed 01/31/14 Page 6 of 6 Page ID #:39

US. Patent

Aug. 16, 2011

Sheet 3 013

US D643,202 S

FIG. 3