Restoration Hardware v. Chicago Wicker - Complaint

8/9/2019 Restoration Hardware v. Chicago Wicker - Complaint

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MICHAEL J. MCCUE (SBN: 296425)Email: [email protected] D. JOHNSON (SBN: 261747)Email: [email protected] Roca Rothgerber LLP4300 Bohannon Drive

Menlo Park, CA 94025(650) 391-1380 (Tel.)(702) 391-1395 (Fax)

Attorneys for PlaintiffsRESTORATION HARDWARE, INC.RH US, LLC

UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF CALIFORNIA

RESTORATION HARDWARE, INC.,a Delaware corporation, and RH US,LLC, a Delaware limited liabilitycompany,

Plaintiffs,

vs.

CHICAGO WICKER & TRADINGCOMPANY, an Illinois corporation,

Defendant.

C v Case No.: 3:15-cv-00894

COMPLAINT

Plaintiffs Restoration Hardware, Inc. and RH US, LLC (together, “RH”)

allege the following:

NATURE OF THIS ACTION

1.

This is an action for design patent infringement under the Patent Act35 U.S.C. § 1, et seq., and for trademark infringement and unfair competition under

the Lanham Act, 15 U.S.C. § 1051 et seq., arising out of Defendant Chicago Wicker

& Trading Company’s (“Defendant’s”) infringement of RH’s patented furniture

designs and trademarks.

///

Case3:15-cv-00894 Document1 Filed02/26/15 Page1 of 12


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PARTIES

2. Plaintiff Restoration Hardware, Inc. is a Delaware corporation whose

principal place of business is located at 15 Koch Road, Corte Madera, California

94925. Prior to January 30, 2015, Restoration Hardware, Inc. was the owner o

United States Design Patents D663,967 (the “D’967 Patent”) and D663,966 (the

“D’966 Patent) (together, the “RH Patents”). True and accurate copies of the RH

Patents are attached hereto as Exhibit A. On January 30, 2015, Restoration

Hardware, Inc. assigned all right, title, and interest in and to the RH Patents to

Plaintiff RH US, LLC, which granted a license back to Restoration Hardware, Inc..

3. Plaintiff RH US, LLC is a Delaware limited liability company whose

principal place of business is located at 15 Koch Road, Corte Madera, California

94925.

4.

Defendant Chicago Wicker & Trading Company is an Illinois

corporation whose principal place of business is located at 5625 W. 115th Street

Suite B, Alsip, Illinois, 60603. Upon information and belief, Defendant conducts

business under a variety of names, including, without limitation, “Forever Patio,”

“Chicago Wicker – NCI,” “Northcape International,” “Northcape Outdoor,” and

“Northcape.”

JURISDICTION AND VENUE

5.

This Court has subject matter jurisdiction over this action pursuant to

28 U.S.C. §§ 1331 and 1338 because this action involves claims for paten

infringement in violation of 35 U.S.C. § 1, et seq.

6.

This Court has personal jurisdiction over Defendant because Defendan purposefully, willfully, and/or intentionally infringed upon RH’s design patents and

trademarks by using RH’s patented designs and trademarks with the knowledge tha

RH is located in California and that RH would likely suffer injury or harm resulting

from the infringement in California. Indeed, Defendant continued its infringing

conduct despite notice from RH. Upon information and belief, Defendant conducts



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Relevant Description: FIG. 1 is a perspective view of a lounge showing my new

design.

14. Together, the D’967 Patent and the D’966 Patent are referred to herein

as the “RH Patents.”

15.

RH sells furniture products embodying the designs set forth in the RH

Patents as part of its “Provence” collection.

16.

In addition to the foregoing, RH is the owner of United States

Tramemark Registration No. 4,231,598 for the PROVENCE mark for use in

connection with, “Furniture, namely, chaise lounges, sofas, loveseats, lounge chairs

arm chairs, side chairs, ottomans, coffee tables, side tables, dining tables, console

tables, cushions.” RH’s federal registration for the PROVENCE mark is valid and

subsisting.

17.

Upon information and belief, Defendant owns and operates a web

based furniture manufacturing business based in Illinois with facilities in California

Florida, New Jersey, and Ontario, Canada, , that sells goods to retailers and

customers across the United States.

18.

In or about February, 2015, RH learned that Defendant is advertising

and selling, through the http://www.www.foreverpatio.com website and, upon

information and belief, other websites and distribution channels, a sofa, lounge

chair, loveseat, and sectional sofa components as part of its “Bayside” collection tha

each include designs that are nearly identical to the design of RH’s sofa and lounge

chair set forth in the RH Patents.

19.

For instance, a side-by-side comparison of RH’s sofa and lounge chairand Defendant’s sofa and lounge chair shows that Defendant’s designs are

substantially the same as RH’s:

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RH’s Patented Design Defendant’s Infringing Products

Provence Sofa Bayside Sofa

Provence Lounge Chair Bayside Lounge Chair

20.

RH has also learned that Defendant is advertising and selling, through

the http://www.northcapeinternational.com website, and upon information and

belief, other websites and distribution channels, a sofa, lounge chair, loveseat, and

sectional sofa components as part of its “Geneva” collection that each include

designs that are nearly identical to the design of RH’s sofa and lounge chair set forth

in the RH Patents.



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21. For instance, a side-by-side comparison of RH’s sofa and lounge chair

and Defendant’s sofa and lounge chair shows that Defendant’s designs are

substantially the same as RH’s:

RH’s Patented Design Defendant’s Infringing Products

Provence Sofa Geneva Sofa

Provence Lounge Chair Geneva Lounge Chair

22.

The design of Defendant’s sofa, lounge chair, loveseat, and sectional

sofa components and the design of RH’s Provence sofa and lounge are so similar

that it is highly unlikely that Defendant adopted its designs without prior knowledge

of the Provence designs set forth in the RH Patents.



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23. Upon information and belief and despite RH’s demands, Defendant has

continued to manufacture, use, offer to sell, sell, and/or import into the United

States, furniture products that infringe upon the designs set forth in the RH Patents

including sales to consumers and to numerous retailers.

24.

In addition to the foregoing, RH has learned that Defendant has adopted

the “Provance” designation for a line of outdoor furniture, known as “The Provance

Collection,” that Defendant advertises on its website

http://www.northcapeinternational.com/collections/the-provance-collection and

upon information and belief, other websites as well. A screenshot of the webpage i

set forth below:

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COUNT I

(Patent Infringement

under 35 U.S.C. § 1, et seq.)

25. RH incorporates the allegations in foregoing paragraphs as though fully

set forth herein.

26. RH owns the D’967 Patent.

27. Defendant infringed the D’967 Patent by making, using, offering to

sell, selling, and/or importing into the United States products that embody or use the

designs claimed in the D’967 Patent.

28.

RH did not authorize Defendant’s conduct.

29. Defendant’s conduct was knowing, intentional, and willful, making this

an exceptional case.

30. RH incorporates the allegations in foregoing paragraphs as though fully

set forth herein.

COUNT II

(Patent Infringement

under 35 U.S.C. § 1, et seq.)

31.

RH incorporates the allegations in the foregoing paragraphs as though

fully set forth herein.

32.

RH owns the D’966 Patent.

33. Defendant infringed the D’966 Patent by making, using, offering to sell

selling, and/or importing into the United States products that embody or use the

designs claimed in the D’966 Patent.

34. RH did not authorize Defendant’s conduct.

35.

Defendant’s conduct was knowing, intentional, and willful, making thisan exceptional case.

COUNT III

(Trademark Infringement

under the Lanham Act, 15 U.S.C. § 1114)

36.

RH incorporates the allegations in the foregoing paragraphs as though

fully set forth herein.



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37. RH has been using the PROVENCE trademark in commerce in

connection with the advertising and sale of furniture products since at least as early

as April, 2010. RH’s use of the PROVENCE mark in commerce predate

Defendants use of the confusingly similar “Provance” mark.

38.

Given RH’s longstanding use of its PROVENCE mark in commerce in

connection with furniture products including sofas and lounge chairs, Defendant’s

use of the confusingly similar “Provance” mark in connection with furniture

products, including sofas, lounge chairs, and loveseats, constitutes a reproduction

copying, counterfeit, and/or colorable imitation of RH’s PROVENCE mark in a

manner that is likely to cause confusion or mistake or is likely to deceive consumers

39. Defendants’ unlawful use of RH’s PROVENCE mark in commerce has

at all times, been willful, deliberate, and intentional. Defendant’s use of RH’

PROVENCE mark in commerce was designed to usurp and wrongfully trade off of

the substantial investment and goodwill RH has developed in its PROVENCE mark.

40.

Defendant’s unlawful use of RH’s PROVENCE mark in commerce

constitutes trademark infringement in violation of the Lanham Act, 15 U.S.C. §

1114.

41. As a direct and proximate result of Defendant’s conduct, RH has

suffered, and will continue to suffer, monetary loss and irreparable injury to its

business, reputation, and goodwill.

COUNT IV

(Unfair Competition

under the Lanham Act, 15 U.S.C. § 1125)

42.

RH incorporates the allegations in the foregoing paragraphs as thoughfully set forth herein.

43.

Defendant is selling, and/or offering to sell, furniture in commerce

including, without limitation, sofas, chairs, and loveseats using the designation

“Provance,”– a designation that is confusingly similar to RH’s federally registered

PROVENCE mark.



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44.

Defendant’s use of the confusingly similar “Provance” designation is a

false designation of origin which is likely to cause confusion, to cause mistake, or to

deceive consumers as to the existence of an affiliation, connection or association

between Defendant and RH, and/or is likely to cause confusion, to cause mistake, or

to deceive consumers as to the origin, sponsorship, or approval of Defendant’s

furniture products by RH.

45. Defendant’s use of the confusingly similar “Provance” designation in

commerce has, at all times, been willful, deliberate, and intentional. The

Defendant’s use of the confusingly similar “Provance” designation in commerce was

designed to usurp and wrongfully trade off of the substantial investment and

goodwill RH has developed in its PROVENCE mark.

46. Defendant’s use of the confusingly similar “Provance” mark in

commerce constitutes unfair competition in violation of the Lanham Act, 15 U.S.C

§ 1125(a), in that Defendant has used in connection with goods a false designation

of origin, a false or misleading description and representation of fact which is likely

to cause confusion, and to cause mistake, and to deceive as to the affiliation

connection, or association of Defendant with RH and as to the origin, sponsorship

and approval of Defendant’s furniture products and commercial activities by RH.

47. As a direct and proximate result of Defendant’s conduct, RH has

suffered, and will continue to suffer, monetary loss and irreparable injury to its

business, reputation, and goodwill.

PRAYER FOR RELIEF

WHEREFORE, RH requests that the Court enter:A. A preliminary and permanent injunction prohibiting Defendant and its

officers, agents, servants, and those persons in active concert or participation with

them from directly or indirectly infringing RH’s rights in the RH Patents, including

without limitation, Defendant’s manufacturers, suppliers, and retailers;

B.

A preliminary and permanent injunction prohibiting Defendant and its



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officers, agents, servants, and those persons in active concert or participation with

them from using the PROVENCE mark or any confusingly similar variations

thereof, in commerce;

C.

Judgment in favor of RH and against Defendant for damages adequate

to compensate RH for Defendant’s infringment of the RH Patents, wich shall be

trebled as a result of Defendant’s willful patent infringement, pursuant to 35 U.S.C

§ 284, or an award of Defendant’s profits from its infringements pursuant to 35

U.S.C. § 289, whichever is greater, together with prejudement interest and costs;

D. Judgment in favor of RH and against Defendant for damages adequate

to compensate RH for Defendant’s infringment of the PROVENCE mark, including

but not limited to RH’s actual damages, Defendant’s profits, and the costs of the

action, pursuant to 15 U.S.C. § 1117;

E.

Judgment in favor of RH and against Defendant for RH’s costs and

attorneys’ fees incurred in this action, pursuant to 35 U.S.C. § 285 and 15 U.S.C

1117; and

F. Judgment in favor of RH and against Defendant for such other relief as

the Court deems just, equitable, and proper.

Respectfully submitted,

Dated: February 26, 2015 By: /s/ Michael J. McCue

MICHAEL J. MCCUEAARON D. JOHNSONLewis Roca Rothgerber LLP3993 Howard Hughes Parkway, Suite 600Las Vegas, Nevada 89169-5996(702) 949-8200 (Tel.)(702) 949-8398 (Fax)

Attorneys for PlaintiffsRESTORATION HARDWARE, INC.RH US, LLC.



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Exhibit A

Exhibit A

Case3:15-cv-00894 Document1-1 Filed02/26/15 Page1 of 21


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S 44 (Rev. 12/12) cand rev (1/15/13) CIVIL COVER SHEETThe 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

rovided 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 theurpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

. (a) PLAINTIFFS DEFENDANTS

(b) County of Residence of First Listed Plaintiff County of Residence of First Listed Defendant

(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OFTHE TRACT OF LAND INVOLVED.

(c) Attorneys (Firm Name, Address, and Telephone Number) Attorneys (If Known)

I. BASIS OF JURISDICTION (Place an “X” in One Box Only) III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an “X” in One Box for(For Diversity Cases Only) and One Box for Defendant

’ 1 U.S. Government ’ 3 Federal Question PTF DEF PTF D

Plaintiff (U.S. Government Not a Party) Citizen of This State ’ 1 ’ 1 Incorporated or Principal Place ’ 4

of Business In This State

’ 2 U.S. Government ’ 4 Diversity Citizen of Another State ’ 2 ’ 2 Incorporated and Principal Place ’ 5

Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State

Citizen or Subject of a ’ 3 ’ 3 Foreign Nation ’ 6

Foreign Country

V. NATURE OF SUIT (Place an “X” in One Box Only)CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES

’ 110 Insurance PERSONAL INJURY PERSONAL INJURY ’ 625 Drug Related Seizure ’ 422 Appeal 28 USC 158 ’ 375 False Claims Act

’ 120 Marine ’ 310 Airplane ’ 365 Personal Injury - of Property 21 USC 881 ’ 423 Withdrawal ’ 400 State Reapportionm

’ 130 Miller Act ’ 315 Airplane Product Product Liability ’ 690 Other 28 USC 157 ’ 410 Antitrust

’ 140 Negotiable Instrument Liability ’ 367 Health Care/ ’ 430 Banks and Banking

’ 150 Recovery of Overpayment ’ 320 Assault, Libel & Pharmaceutical PROPERTY RIGHTS ’ 450 Commerce

& Enforcement of Judgment Slander Personal Injury ’ 820 Copyrights ’ 460 Deportation

’ 151 Medicare Act ’ 330 Federal Employers’ Product Liabi lity ’ 830 Patent ’ 470 Racketeer Influence

’ 152 Recovery of Defaulted Liability ’ 368 Asbestos Personal ’ 840 Trademark Corrupt Organizatio

Student Loans ’ 340 Marine Injury Product ’ 480 Consumer Credit

(Excludes Veterans) ’ 345 Marine Product Liability LABOR SOCIAL SECURITY ’ 490 Cable/Sat TV

’ 153 Recovery of Overpayment Liability PERSONAL PROPERTY ’ 710 Fair Labor Standards ’ 861 HIA (1395ff) ’ 850 Securities/Commod

of Veteran’s Benefits ’ 350 Motor Vehicle ’ 370 Other Fraud Act ’ 862 Black Lung (923) Exchange

’ 160 Stockholders’ Suits ’ 355 Motor Vehicle ’ 371 Truth in Lending ’ 720 Labor/Management ’ 863 DIWC/DIWW (405(g)) ’ 890 Other Statutory Acti

’ 190 Other Contract Product Liability ’ 380 Other Personal Relations ’ 864 SSID Title XVI ’ 891 Agricultural Acts

’ 195 Contract Product Liability ’ 360 Other Personal Property Damage ’ 740 Railway Labor Act ’ 865 RSI (405(g)) ’ 893 Environmental Matt

’ 196 Franchise Injury ’ 385 Property Damage ’ 751 Family and Medical ’ 895 Freedom of Informa

’ 362 Personal Injury - Product Liability Leave Act Act Medical Malpractice ’ 790 Other Labor Litigation ’ 896 Arbitration

REAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS ’ 791 Employee Retirement FEDERAL TAX SUITS ’ 899 Administrative Proc

’ 210 Land Condemnation ’ 440 Other Civil Rights Habeas Corpus: Income Security Act ’ 870 Taxes (U.S. Plaintiff Act/Review or Appe

’ 220 Foreclosure ’ 441 Voting ’ 463 Alien Detainee or Defendant) Agency Decision

’ 230 Rent Lease & Ejectment ’ 442 Employment ’ 510 Motions to Vacate ’ 871 IRS—Third Party ’ 950 Constitutionality of

’ 240 Torts to Land ’ 443 Housing/ Sentence 26 USC 7609 State Statutes

’ 245 Tort Product Liability Accommodations ’ 530 General

’ 290 All Other Real Property ’ 445 Amer. w/Disabilities - ’ 535 Death Penalty IMMIGRATION

Employment Other: ’ 462 Naturalization Application’ 446 Amer. w/Disabilities - ’ 540 Mandamus & Other ’ 465 Other Immigration

Other ’ 550 Civil Rights Actions

’ 448 Education ’ 555 Prison Condition

’ 560 Civil Detainee -

Conditions of

Confinement

V. ORIGIN (Place an “X” in One Box Only)

’ 1 OriginalProceeding

’ 2 Removed fromState Court

’ 3 Remanded fromAppellate Court

’ 4 Reinstated or Reopened

’ 5 Transferred fromAnother District(specify)

’ 6 MultidistrictLitigation

VI. CAUSE OF ACTION

Cite the U.S. Civil Statute under which you are filing (Do not cite jurisdictional statutes unless diversity):

Brief description of cause:

VII. REQUESTED IN

COMPLAINT:

’ CHECK IF THIS IS A CLASS ACTION

UNDER RULE 23, F.R.Cv.P.

DEMAND $ CHECK YES only if demanded in complaint

JURY DEMAND: ’ Yes ’ No

VIII. RELATED CASE(S)

IF ANY(See instructions):

JUDGE DOCKET NUMBER


RESTORATION HARDWARE, INC., RH US, LLC

Marin

Michael J. McCue, Aaron D. Johnson, LEWIS ROCA ROTHGERBER LLP4300 Bohannon Drive, Menlo Park, CA 94025Tele: (650) 391-1380

CHICAGO WICKER & TRADING COMPANY

35 U.S.C. § 271

patent infringement

Restoration Hardware v. Chicago Wicker - Complaint

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