Spiker v. Martin Et. Al.

8/12/2019 Spiker v. Martin Et. Al.

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF FLORIDAPENSACOLA DIVISION

SPIKER, INC.

Plaintiff,

v. Civil Action No.

TRACEE MARTIN, individually;

OCCASIONALLY MADE, LLC;DARRAH & CO., LTD; and NOTEWORTHY

PAPER, INC;

Defendants.

/

COMPLAINT

Plaintiff, Spiker (hereinafter SPIKER), hereby files its complaint for damages against

Defendants Tracee Martin (hereinafter MARTIN), Individually, Occasionally Made, LLC

(hereinafter OCCASIONALLY MADE), Darrah & CO., LTD. (hereinafter DARRAH) and

Noteworthy Paper, Inc. (hereinafter NOTEWORTHY) and alleges as follows:

NATURE OF THE ACTION

1. Plaintiff, SPIKER, brings this action for infringement of U.S. Design Patent No.

D657,633 (the 633 Patent) under 35 U.S.C 271 and 289. A true and correct copy of the

633 Patent is attached hereto as Exhibit A. Defendants have engaged in the unauthorized

making, using, selling and/or offering to sell in the United States, and/or importing into the

United States of a plastic cup holder identified in this Complaint that embodies the design

covered by the 633 Patent.


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THE PARTIES

2. Plaintiff, SPIKER, is a Florida Corporation with its principal place of business in

the Northern District at 755 Grand Boulevard, Suite B-105 #357, Miramar Beach, Florida 32550.

3. Upon information and belief, Defendant, OCCASIONALLY MADE, LLC, is a

Limited Liability Company organized under the law of the state of Virginia, with its principal

place of business at 7027 Three Chopt Road, Suite 204, Richmond, VA 23226.

4. Upon information and belief, Defendant, TRACEE MARTIN, is a principal of

OCCASIONALLY MADE and is a moving, conscious and active force behind the infringing

acts at issue and actively participates in and approves the acts and she resides in or near

Richmond, Virginia.

5. Upon information and belief, Defendant, DARRAH & CO., LTD., is a Georgia

corporation, with its principal office address at 230 Spring Street NW, Suite 1818, Atlanta, GA

30303-1070.

6. Upon information and belief, Defendant, NOTEWORTHY PAPER INC., is a

Georgia corporation, doing business at 595 Flying Scot Way, Alpharetta, GA 30005.

JURISDICTION AND VENUE

7. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C.

1331 and 1338(a).

8. Defendants MARTIN and OCCASIONALLY MADE are subject to personal

jurisdiction in the Northern District of Florida (the District) because they have purposefully

availed themselves of the privilege of conducting business in the state of Florida and in this

District. Defendants MARTIN and OCCASIONALLY MADE design, manufacture (directly or


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indirectly through third party manufacturers), import the infringing product, offer for sale,

advertise, promote, and/or sell in the state of Florida and this Judicial District. Defendants have

committed acts of patent infringement (directly or indirectly) in this Judicial District.

9. This District has personal jurisdiction over Defendants DARRAH and

NOTEWORTHY because each of these Defendants continues to commit acts of infringement

and places infringing products into the stream of commerce, with the knowledge and

understanding that such products are sold in the State of Florida, including this District. The acts

of the Defendants cause injury to the Plaintiff in this District. Upon information and belief, the

Defendants derive substantial revenue from the interstate and international commerce.

Defendants have committed acts of patent infringement in this Judicial District.

10. Venue is proper in this District pursuant to 28 U.S.C. 1391(b) and (c) because

the Defendants transact business within this Judicial District and offer for sale in this Judicial

District products that infringe the Plaintiffs patent. In addition, a substantial part of the events

giving rise to the Plaintiffs claims occurred in this District.

FACTUAL BACKGROUND

11. On April 17, 2012, the United States Patent and Trademark Office (PTO) duly

and legally issued the633 Patent, entitled Beach Beverage Holder, to inventor John Butler.

12. SPIKER, a family owned business located in Miramar Beach, Fl, is the owner of

all right, title and interest in and to the 633 Patent by assignment from John Butler.

13. The claimed design of the 633 Patent is directed to the ornamental design for a

beach beverage holder as shown in figures 1-7 and described in the accompanying figure

descriptions (see Exhibit A).


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14. Under 35 U.S.C. 282, the 633 Patent is presumed valid.

15. SPIKER manufactures and distributes the product embodying the ornamental

design claimed in the 633 Patent under the name Spiker. See image of the product below.

16. Defendants MARTIN and OCCASSIONALLY MADE distribute and sell in this

Judicial District, and import, manufacture, distribute and sell in the United States, beverage

holders that fall within the scope of the claim of the 633 Patent, all in violation of 35 U.S.C.

271, et seq. MARTIN and OCCASSIONALLY MADE refer to their beverage holders as the

Beach Buddy Cup Holder (hereinafter Beach Buddy). An image of the infringing product is

depicted below.

17. MARTIN is the alter ego, owner and operator of OCCASSIONALLY MADE. In

January of 2014, MARTIN approached SPIKER in an attempt to negotiate an agreement to

license the 633 Patent in order to lawfully manufacture, distribute, import and sell the Beach

Buddy product. SPIKER refused to enter into any such agreement. However, MARTIN and


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OCCASSIONALLY MADE continue to manufacture, distribute, import, and sell the infringing

Beach Buddy product. Thus, continuing to willfully and intentionally manufacture, distribute

and sell infringement products.

18. Defendants MARTIN and OCCASSIONALLY MADE manufacture, import,

distribute and sell the infringing Beach Buddy product. OCCASSIONALLY MADE sells the

Beach Buddy product online at www.occasionallymade.com, distributes the product to various

resellers and makes the product through various manufacturer representatives. Attached as

Exhibit B is a true and correct screenshot of the www.occasionallymade.comwebsite, offering

for sale the infringing Beach Buddy product.

19. OCCASIONALLY MADE distributes the Beach Buddy product to Defendants

DARRAH and NOTEWORTHY.

20. Defendant DARRAH sells and offers for sale the Beach Buddy product within

this Judicial District. DARRAH distributes the OCCASSIONALLY MADE catalog at least at

trade shows and via its website, http://www.darrahreps.com,

21. In January of 2014 SPIKER informed DARRAH of the 633 Patent and that the

beverage holder product being offered for sale by DARRAH was an infringing product.

However, DARRAH continues to distribute and sell the infringing Beach Buddy product.

22. Defendant DARRAH offers for sale, and sells the infringing Beach Buddy at least

via its online catalogs www.darrahreps.comand through its sales representatives in this Judicial

District.

23. Defendant NOTEWORTHY displays, advertises, offers for sale, and sells the

infringing Beach Buddy product (falling within the scope of the claim of the 633 Patent) in this

Judicial District and in the United States at least via their website www.noteworthypaper.com.


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Attached as Exhibit C is a true and correct screenshot of the www.noteworthypaper.com

website, offering for sale OCCASIONALLY MADEs infringing BEACH BUDDY product.

COUNT ONE:AGAINST DEFENDANT MARTIN

FOR DESIGN PATENT INFRINGEMENT AND ACTIVE INDUCEMENT TO

INFRINGE UNDER 35 U.S.C. 271, 289

24. Plaintiff hereby incorporates by reference all prior allegations contained in this

complaint to the extent they are not inconsistent with the claim set forth in this count.

25. Plaintiff is, and at all times relevant has been, the lawful owner of all right, title

and interest in and to the 633 patent.

26. Defendant MARTIN makes, sells, offers for sale and imports a beverage holder

product (the Beach Buddy product) that falls within the scope of the claim of the 633 Patent.

A side by side comparison on the following page reveals the substantial similarity of the

products. Defendant MARTIN has misappropriated the Plaintiffs patented Spiker product in the

accused Beach Buddy product.


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PLAINTIFFS D D657,633 PATENT

THE SPIKER

THE INFRINGING PRODUCT

THE BEACH BUDDY CUP HOLDER

27. Defendant MARTIN had knowledge of the 633 Patent and as the owner and alter

ego of Defendant OCCASSIONALLY MADE, actively and intentionally induced

OCCASSIONALLY MADE to make, sell, offer for sale, distribute and import the infringing

Beach Buddy product, in violation of 35 U.S.C. 271(b).

28. In violation of 35 U.S.C. 271, Defendant MARTIN is now, and has been,

infringing and actively inducing the infringement of the 633 Patent by making, offering for sale,

selling and/or importing the Beach Buddy product in the United States.

29. In violation of 35 U.S.C. 289, Defendant MARTIN is now, and has been,

directly infringing the 633 Patent by applying the patented design of the 633 Patent, or the

colorable imitation thereof, to an article of manufacture (the Beach Buddy product), for the

purpose of sale and/or selling, offering, or exposing for sale an article of manufacture, including


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35. Defendant OCCASIONALLY MADEs acts of infringement described above

have been and continue to be intentional and willful.

COUNT THREE:

AGAINST DEFENDANT DARRAHFOR DESIGN PATENT INFRINGEMENT UNDER 35 U.S.C. 271, 289



37. Defendant DARRAH sells and offers for sale a beverage holder product (the

Beach Buddy product) that falls within the scope of the claim of the 633 Patent.

38. In violation of 35 U.S.C. 271, Defendant DARRAH, is now, and has been,

infringing the 633 Patent by offering for sale and selling the Beach Buddy in the United States

and this Judicial District.

39. In violation of 35 U.S.C. 289, Defendant DARRAH, is now, and has been,

directly infringing the 633 Patent by selling or exposing for sale an article of manufacture,

including the Beach Buddy, to which the patented design of the 633 Patent or a colorable

imitation thereof has been applied.

40. Defendant DARRAHs acts of infringement described above have been and

continue to be intentional and willful.

COUNT FOUR:

AGAINST DEFENDANT NOTEWORTHY

FOR DESIGN PATENT INFRINGEMENT UNDER 35 U.S.C. 271, 289




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42. Defendant NOTEWORTHY sells and offers for sale a beverage holder product

(the Beach Buddy product) that falls within the scope of the claim of the 633 Patent.

43. In violation of 35 U.S.C. 271, Defendant NOTEWORTHY, is now, and has

been, infringing the 633 Patent by offering for sale and selling the Beach Buddy in the United

States and this Judicial District.

44. In violation of 35 U.S.C. 289, Defendant NOTEWORTHY is now, and has

been, directly infringing the 633 Patent by selling or exposing for sale an article of manufacture,

including the Beach Buddy, to which the patented design of the 633 Patent or a colorable

imitation thereof has been applied.

45. Defendant NOTEWORTHYs acts of infringement described above have been

and continue to be intentional and willful.

PRAYER FOR RELIEF

WHEREFORE, the Plaintiff prays for a judgment against Defendants as follows:

a. That the Defendants have infringed the Plaintiffs 633 Patent and that such

infringement was willful and intentional;

b. That Defendant MARTIN has actively induced the infringement of the 633

Patent;

c. That Defendants and its partners, associates, employees, officers, directors,

agents, servants, affiliates, and all other acting in privity or in concert with them, and

their parents, subsidiaries, divisions, successors and assigns, be permanently enjoined

from further acts of infringement of the Plaintiffs 633 Patent;

d. An award to Plaintiff of all damages adequate to compensate for the Defendants

infringement of the Plaintiffs 633 Patent, and in no event less than a reasonable royalty


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for the Defendants acts of infringement, including all pre-judgment and post-judgment

interest at the maximum rate permitted by law;

e. An award to Plaintiff of all damages, including treble damages, based on any

infringement found to be willful, pursuant to 35 U.S.C. 284, together with prejudgment

interest;

f. Costs of suit and reasonable attorneys fees pursuant to 35 U.S.C. 285; and

g. any other remedy to which the Plaintiff may be entitled.

DEMAND FOR JURY TRIAL

Plaintiff requests a trial by jury pursuant to Rule 38(b), Fed.R.Civ.P., of all claims and

issues so triable under law.

Dated: March 28, 2014.

s/Wiley Horton

John Wiley Horton, Esquire

(FL Bar # 59242)

[email protected]

PENNINGTON, P.A.

215 S. Monroe Street, 2nd Floor

Tallahassee, Florida 32301

Phone: 850 222-3533

Fax: 850 222-2126

Spiker v. Martin Et. Al.

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