Case 1:18-cv-11513 Document 1 Filed 12/10/18 Page 1 of 7

Rip Andrews (ripandrews@mrblaw.com)

Jane F. Mauzy (jmauzy@mrblaw.com)
MARSH, RICKARD & BRYAN, P.C.
800 Shades Creek Parkway, Suite 600-D
Birmingham, AL 35209
T: (205) 879-1981 F: (205) 879-1986

Michael J. Douglas (mdouglas@leakdouglas.com)

LEAK DOUGLAS & MORANO, P.C.
17 20th Street North, Suite 200
Birmingham, AL 35203
T: (205) 977-7099 F: (205) 977-7067

Attorneys for Plaintiff.

IN THE UNITED STATES DISTRICT COURT

FOR THE SOUTHERN DISTRICT OF NEW YORK

DUELLE, LLC,

Plaintiff, Civil Action No.: _________________

v.

EFFY JEWELERS, CORP., COMPLAINT

(JURY TRIAL DEMANDED)
Defendant.

Plaintiff Duelle, LLC, for its Complaint against Defendant Effy Jewelers Corporation,

alleges as follows:

NATURE OF THE ACTION

1. This is an action arising under the patent laws of the United States, 35 U.S.C. § 1

et seq., based on Defendant’s infringement of U.S. Design Patent No. D650,304.

PARTIES, JURISDICTION AND VENUE

2. Plaintiff Duelle, LLC (“Duelle”) is a limited liability company organized and

existing under the laws of the State of Alabama, having its principal place of business at 1919

Oxmoor Road, Suite 121, Birmingham, AL 35209.

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3. Upon information and belief, Defendant Effy Jewelers, Corp. (“Effy”) is a

corporation organized and existing under the laws of the State of New York, having a principal

place of business at 7 West 45th Street, Suite 1105, New York, NY 10036.

4. This is an action for design patent infringement. The claims set forth herein arise

under the patent laws of the United States, 35 U.S.C. § 1 et seq. This Court has subject matter

jurisdiction over this action pursuant to 28 U.S.C. §§ 1331 and 1338.

5. This Court has personal jurisdiction over Defendant Effy pursuant to Fed. R. Civ.

P. 4(k)(1)(A) because Defendant Effy does business in, has substantial contacts with, resides in

and/or may be found in the Southern District of New York, and a substantial portion of the

activities at issue in this action arose and will arise in this judicial district. Upon information and

belief, such activities include, without limitation, unlawful promotion, distribution, offers to sell,

sale, and use of infringing jewelry products in this judicial district.

6. Venue is proper in this district pursuant to 28 U.S.C. § 1391(b) and (c) because a

substantial part of the events giving rise to this action occurred in this judicial district in so far as

Defendant Effy is deemed to reside in this judicial district by virtue of it being subject to

personal jurisdiction here and/or because Plaintiff Duelle is suffering harm in this judicial

district.

FACTUAL AVERMENTS

7. Plaintiff Duelle is the owner of the entire right, title, and interest in and to U.S.

Design Patent No. D650,304 (the “D’304 Patent” or “Patent”), which the United States Patent

and Trademark Office duly and lawfully issued on December 13, 2011, entitled “Changeable

Multiple Position Jewelry.” A true and correct copy of the D’304 Patent is attached hereto as

Exhibit A.

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8. The D’304 Patent is now, and has been at all times since its issuance, valid and

enforceable.

9. The claim of the D’304 Patent consists of the ornamental design for changeable

multiple position jewelry, such that the jewelry can either be worn in a stud position, as

illustrated in Figure 1 of the Patent, or other positions, as illustrated in Figures 2 and 3 of the

Patent, shown below:

Figure 1

Figure 3

Figure 2

10. The designs illustrated in Figures 1-3, above, are hereinafter referred to

collectively as the “Duelle Design.”

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11. Upon information and belief, Defendant Effy has, without authorization from

Plaintiff Duelle, manufactured, promoted, distributed, offered to sell, and sold jewelry that is

substantially similar in overall appearance to the designs set forth in the D’304 Patent, and

embodied the designs protected by the D’304 Patent in its own jewelry lines, including but not

limited to the DiVersa Collection, as illustrated in Photographs 1-4, shown below:

Photograph 1 Photograph 2
(necklace – stud position) (earrings – stud position)

Photograph 3 Photograph 4
(necklace – drop position) (earrings – drop position)

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12. The designs illustrated in Photographs 1-4, above, are hereinafter referred to

collectively as the “Effy Design.”

13. More specifically, the Effy Design illustrates jewelry that can be worn in a stud

position, as shown in Photographs 1 and 2, or other positions, including but not limited to the

drop position illustrated in Photographs 3 and 4.

14. Upon information and belief, Defendant Effy had actual knowledge of the D’304

Patent prior to the filing of this lawsuit.

CAUSE OF ACTION

Count I – Design Patent Infringement of the D’304 Patent

15. Plaintiff Duelle incorporates and adopts the allegations in the preceding

paragraphs, as if fully set forth herein, and further alleges that:

16. Plaintiff Duelle owns the D’304 Patent, which is valid and enforceable, and

embodied by the Duelle Design.

17. Upon information and belief, Defendant Effy’s imitation of the Duelle Design

appropriates the novel ornamental features set forth in the D’304 Patent such that an ordinary

observer, giving such attention as a purchaser usually gives, would find the Duelle Design and

the Effy Design to be substantially similar, and would find the two designs to resemble each

other sufficiently enough to be deceived and induced into purchasing one design supposing it to

be the other.

18. Upon information and belief, Defendant Effy’s manufacture, promotion,

distribution, offer to sell, sale, and use of the Effy Design within the United States and this

judicial district directly infringed, or infringed under the doctrine of equivalents, the claim in the

D’304 Patent pursuant to 35 U.S.C. §§ 271 (a), (b), (c), and (f).

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19. Upon information and belief, Defendant Effy’s infringement of the D’304 Patent

has been knowing, willful, and with knowledge of Plaintiff Duelle’s exclusive patent rights.

20. Defendant Effy’s infringement of the D’304 Patent has caused and continues to

cause Plaintiff Duelle to suffer substantial monetary damages.

21. Defendant Effy’s infringement of the D’304 Patent has caused and continues to

cause Plaintiff Duelle to suffer irreparable harm for which there is no adequate remedy at law.

PRAYER FOR RELIEF

WHEREFORE, Plaintiff Duelle respectfully requests this Court to grant the following

relief:

a. Enter judgment that Defendant Effy infringes and has infringed the D’304 Patent;

b. Declare that Defendant Effy’s infringement of the D’304 Patent has been willful;

c. Enter a permanent injunction enjoining Defendant Effy, its officers, agents,

servants, employees, and attorneys, and those persons and entities in active concert or

participation with Defendant Effy, from further infringement of the D’304 Patent;

d. Enter judgment awarding Plaintiff Duelle damages from Defendant Effy adequate

to compensate Plaintiff Duelle for Defendant Effy’s infringement of the D’304 Patent,

particularly Defendant Effy’s total profits pursuant to 35 U.S.C. § 289;

e. Enter judgment awarding Plaintiff Duelle all damages, costs, and interest,

including treble damages based on Defendant Effy’s willful infringement of the D’304 Patent,

under 35 U.S.C. § 284, together with prejudgment interest;

f. An accounting of Defendant Effy’s total profits on sales of any article of

manufacture incorporating the D’304 Patent and/or Duelle Design;

g. Declare this case to be exceptional and enter judgment awarding Plaintiff Duelle

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its reasonable attorneys’ fees under 35 U.S.C. § 285; and

h. Award Plaintiff Duelle such further and other relief as this Court deems just and

proper.

Dated: December 10, 2018.

Respectfully submitted,

/s/ Rip Andrews

Rip Andrews (Pro Hac Vice)
/s/ Jane F. Mauzy
Jane F. Mauzy (Pro Hac Vice)
MARSH, RICKARD & BRYAN, P.C.
800 Shades Creek Parkway, Suite 600-D
Birmingham, AL 35209
T: (205)879-1981 F: (205)879-1986
ripandrews@mrblaw.com
jmauzy@mrblaw.com

/s/ Michael J. Douglas

Michael J. Douglas (Pro Hac Vice)
LEAK DOUGLAS & MORANO, P.C.
17 20th Street North, Suite 200
Birmingham, AL 35203
T: (205) 977-7099 F: (205) 977-7067
mdouglas@leakdouglas.com

Attorneys for Plaintiff.

JURY DEMAND

Plaintiff hereby demands a struck jury for the trial of this case.

/s/ Jane F. Mauzy

Attorney for Plaintiff.

PLEASE SERVE DEFENDANT BY CERTIFIED MAIL AS FOLLOWS:

Effy Jewelers, Corp.

7 West 45th Street, Suite 1105
New York, NY 10036

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Duelle, LLC v. Effy Jewelers, Corp.

exhibitsticker.com

COMPLAINT

Exhibit A
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