Canon v GID Combined Complaint

DORSEY & WHITNEY LLP Richard H. Silberberg Bruce R. Ewing Dai Wai Chin Feman 51 West 52nd Street New York, NY 10019-6119 (212) 415-9200

Attorneys for Plaintiff Canon U.S.A., Inc.

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK CANON U.S.A. INC., Plaintiff, v. GET IT DIGITAL LLC and ALL NEW SHOP, Defendants.

Case No. 2:15-cv-6019

COMPLAINT WITH JURY DEMAND

Plaintiff Canon U.S.A., Inc. (CUSA), by its attorneys, Dorsey & Whitney LLP, for its

Complaint against defendants Get It Digital LLC (Get It Digital) and All New Shop (together

with Get It Digital, Defendants), alleges, upon personal knowledge as to matters pertaining to

itself and upon information and belief as to all other matters, as follows:

Introduction

1. This is a case brought to halt Defendants repeated violations of CUSAs

trademark rights.

2. CUSA is one of the most successful U.S. suppliers of printing, photographic and

imaging equipment and related goods, with a long history of marketing and selling high quality

products bearing the CANON trademark. Among CUSAs many businesses is the importation,

Case 2:15-cv-06019-LDW-AKT Document 1 Filed 10/20/15 Page 1 of 15 PageID #: 1

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marketing, distribution and sale of CANON-brand cameras under famous trademarks that CUSA

has licensed exclusively from its parent, Canon Inc. (CINC) for use in the U.S. CUSA

imports, markets, distributes and sells genuine CANON-brand cameras intended for use and

resale in the U.S. (Genuine CANON Cameras).

3. In contrast, Defendants have built a substantial component of their business in the

U.S. by marketing, selling and distributing cameras bearing the CANON trademark that are not

genuine, because such goods are either intended for use and resale in the Asia-Pacific or

European regions, or are otherwise materially different from Genuine CANON Cameras sold in

the U.S. (collectively, Gray Market Cameras). Defendants are not authorized dealers or

resellers of Genuine CANON Cameras.

4. Specifically, as set forth herein, Defendants have marketed, distributed and sold in

the U.S. many Gray Market Cameras that are materially different from Genuine CANON

Cameras in multiple respects, including, without limitation:

a. Counterfeit serial numbers;

b. Lack of enforceable warranties or inferior warranty coverage;

c. Packaging that does not accurately describe the products contained therein;

d. The inclusion of cheap photocopies of product operating manuals, as opposed

to the genuine manuals that accompany Genuine CANON Cameras; and

e. Power supplies and accessories that are counterfeit, manufactured by third

parties and/or not compliant with applicable laws, regulations and

certifications.


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5. In light of the material differences between Genuine CANON Cameras and Gray

Market Cameras, Defendants sale of Gray Market Cameras within the U.S. irreparably harms

CUSA and will continue to harm CUSA unless and until such conduct is enjoined.

6. The infringing acts of Defendants described herein are those known to CUSA at

this time, but it is possible, if not likely, that further violations of CUSAs intellectual property

and other rights will come to light as this litigation progresses. Thus, Defendants wrongdoing

as described herein should not be viewed as an exhaustive recitation of all of Defendants

ongoing violations of CUSAs rights.

Parties

7. CUSA is a New York corporation having its principal place of business at One

Canon Park, Melville, New York 11747.

8. Upon information and belief, defendant Get It Digital is a New York limited

liability company with a principal place of business located at 984 East 35th Street, Brooklyn,

New York 11210. Get It Digital is a wholesaler and retailer of consumer electronics, including

cameras, doing business primarily on the Internet through the domain name

www.getitdigital.com, and Internet marketplaces, including but not limited to the website

www.ebay.com (collectively, the Marketplaces).

9. Upon information and belief, defendant All New Shop is a New York entity with

a principal place of business located at 984 East 35th Street, Brooklyn, New York 11210. All

New Shop is a wholesaler and retailer of consumer electronics, including cameras, doing

business primarily on the Internet through the domain name www.allnewshop.com (together

with www.getitdigital.com, the Websites) and the Marketplaces.


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10. Upon information and belief, Defendants are affiliates of one another and under

common control, such that they function as one unitary entity as a practical matter. For example,

Exhibit 1 hereto consists of redacted sales receipts for Get It Digital and All New Shop. The

sales receipts are substantially similar in appearance and format, and they both provide the same

address, state ANYTHING MISSING, DAMAGED, OR NOT AS YOU EXPECTED? LET

ME KNOW and I WILL RESOLVE IT!, and list ALBERT KUNIS, having the phone

number of 1.718.360.0920, as the customer service contact. As a result, the actions of each

Defendant are imputable to the other.

Jurisdiction and Venue

11. This is a civil action arising out of Defendants violations of CUSAs trademark

rights in violation of 43(a)(1)(A) of the Trademark Act of 1946, as amended (the Lanham

Act), 15 U.S.C. 1125(a)(1)(A); and for unfair competition under the common law of the State

of New York.

12. Subject matter jurisdiction is conferred upon this Court by 28 U.S.C. 1331 and

1338(a), which confer original jurisdiction upon this Court for all civil actions arising under the

laws of the United States and any act of Congress relating to trademarks, respectively. In

addition, supplemental jurisdiction over related state law claims is conferred upon this Court by

28 U.S.C. 1367(a). Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(c)

because Defendants are domiciled within this judicial district.

CUSAs Business

13. CINC is the owner of the CANON trademark (the CANON Mark), which has

been used in the U.S. for decades with, among many other things, cameras, camera accessories

and related goods.


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14. CINC has exclusively licensed the CANON Mark to CUSA for use in the U.S. in

connection with, among many other things, cameras, camera accessories and related goods.

15. As the exclusive licensee of the CANON Mark, CUSA has express authority to

take action to prevent actual or threatened infringement of such Mark.

16. For decades, CUSA has imported, marketed, distributed and sold a wide range of

Genuine CANON Cameras within the State of New York and elsewhere through interstate

commerce, all of which bear the CANON Mark.

17. These products have been and are now extensively advertised through the

Internet, television, magazines, newspapers, brochures, trade shows and other means.

18. Through CUSAs extensive sales of Genuine CANON Cameras, the public has

come to recognize CANON-brand cameras as being of excellent quality and reputation.

19. CUSAs advertising and promotional activities involving Genuine CANON

Cameras bearing the CANON Mark have been continuous and have been for the purpose of

acquainting the public with the excellent quality of CANON-brand products so that consumers

may, with knowledge and confidence, purchase and use products bearing such Mark.

20. By reason of their high quality and as a result of CUSAs continued and extensive

sales, advertising and promotion, CANON-brand cameras sold under the CANON Mark enjoy an

excellent reputation among the public.

21. The CANON Mark is a symbol of substantial goodwill among consumers that has

been obtained by CUSA and CINC over time that is of great value to CUSA in the conduct of its

business.

22. CUSA maintains quality control over its exclusively licensed Genuine CANON

Cameras by selling such products directly to authorized retailers. Furthermore, CUSA monitors


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the market and investigates the distribution and sale of non-genuine goods when evidence of

illegal activity appears. In particular, CUSA investigates merchandise offered for sale at

unauthorized retail locations, because these products are often defaced and/or materially different

products that are sold in violation of CUSAs trademark rights and may implicate consumer

safety concerns.

23. The complete and unaltered, exclusively-licensed CANON Mark appearing on the

packaging of Genuine CANON Cameras is a material aspect of Genuine CANON Cameras, and

CUSA does not authorize any of its products bearing such Mark to be modified, defaced or

damaged in any way.

CUSAs Genuine CANON Cameras

I. Generally

24. CUSA exclusively deals in Genuine CANON Cameras that include important

features to protect consumers.

25. Genuine Cameras distributed by CUSA are localized to meet the needs of

customers in the U.S. market and are engineered to comply with local safety regulations,

governmental requirements and certifications.

26. Accordingly, Genuine CANON Cameras are sold, marketed and distributed by

CUSA with multiple material characteristics, many of which are distinct to the U.S. market.

These material characteristics concern, without limitation, serial numbers, power supplies and

accessories and warranty coverage.


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II. Material Features

a. Serial Numbers

27. Each Genuine CANON Camera has a unique serial number. Serial numbers

appear as barcodes on the outside and interior of the packaging and on the product itself.

28. Serial numbers are crucial to CUSAs quality control efforts and are used

particularly to identify CUSA products with quality control issues, product upgrades and to aid

in the event of a product recall or firmware upgrade.

b. Warranty Coverage

29. Genuine CANON Cameras are covered by robust, enforceable CUSA warranties.

c. Packaging

30. Genuine CANON Cameras are sold to consumers in packaging with exterior

descriptions and specifications that accurately communicate to consumers the contents of the

packaging, and what consumers will receive when the packaging is opened.

d. Operating Manuals

31. Genuine CANON Cameras contain genuine operating manuals that have been

individually printed by CUSA, not photocopied.

e. Power Supplies, Accessories and Certifications

32. Genuine CANON Cameras are equipped with Canon-brand power supplies and

accessories that are engineered to comply with U.S. safety regulations, governmental

requirements and certifications.

33. For example, because, in many instances, power accessories used in other

countries are not consistent with U.S. electrical systems, Genuine CANON cameras only include

power accessories that are consistent with such U.S. systems.


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34. Examples of U.S. safety regulations, requirements and certifications include

Underwriters Laboratories (UL) safety certifications and Californias battery charger system

appliance regulation (BC). To comply with UL and BC standards, the power supplies and

accessories of Genuine CANON Cameras must meet certain specifications, and bear UL and BC

identifications.

Defendants Unlawful Conduct

I. Generally

35. Defendants, in common with the rest of the trade and public, are well aware of the

CANON Mark, and of the goodwill represented and symbolized thereby. Notwithstanding such

awareness, and in fact by reason of same, Defendants have knowingly and in bad faith marketed,

distributed, offered for sale and/or sold in the United States materially different products, and/or

directly and actively participated in such activities without authorization and in a manner

deliberately designed to confuse and mislead consumers.

36. Defendants bad faith and intentional marketing, distribution and sale of Gray

Market Cameras prominently featuring the CANON Mark, but containing material differences in

serial numbers, warranty coverage, packaging, operating manuals, power supplies and

accessories are intended to, and are likely to, cause actual confusion, mistake or deception of the

trade and public and to cause them to believe that Defendants Gray Market Cameras are the

same as CUSAs products, are authorized, sponsored or approved by CUSA or are otherwise

affiliated or connected with CUSA.

37. Defendants unauthorized use of the CANON Mark falsely communicates to

consumers that Defendants are authorized resellers of Genuine CANON Cameras.


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38. Defendants actions deprive CUSA of the opportunity to earn profits from the sale

of Genuine CANON Cameras to consumers. Such profits would be significant, given that the

Genuine CANON Cameras at issue herein are sold to consumers at prices in the thousands of

dollars.

39. Defendants actions substantially harm CUSA and consumers by placing non-

genuine, materially different cameras into the stream of commerce in the U.S.

40. Defendants activities have caused and will continue to cause irreparable harm to

CUSA and to the substantial goodwill embodied in the CANON Mark, which has been

exclusively licensed to CUSA, and such acts will continue unless restrained by this Court.

41. Defendants conduct has also resulted in customer confusion, as consumers who

purchase the Gray Market Cameras believe they are Genuine CANON Cameras when that is not

the case.

42. CUSA has no adequate remedy at law.

II. Material Differences

43. Defendants are importing Gray Market Cameras bearing the Canon Mark from

the Asia-Pacific and European regions. Many of the Gray Market Cameras are intended for use

and resale only in the Asia-Pacific and European markets.

44. After importing Asia-Pacific and European Gray Market Cameras, Defendants are

marketing, distributing and selling the Gray Market Cameras to U.S. consumers as Genuine

CANON Cameras through Internet advertising, the Websites, and the Marketplaces.

45. The Asia-Pacific and European Gray Market Cameras are not intended for use

and resale in the U.S.


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46. Material differences between Genuine CANON Cameras and Gray Market

Cameras include the following:

a. Serial Numbers

47. Some of Defendants Gray Market Cameras contain counterfeit serial numbers.

By way of example only, Exhibit 2 hereto depicts a Gray Market Camera purchased in

November 2014 from All New Shop, at a price of more than $2,500. The serial number was

removed from the camera body and replaced with a counterfeit serial number.

48. Such counterfeit serial numbers damage the goodwill inherent in CUSAs well-

regarded CANON brand, subvert CUSAs quality control procedures and mislead consumers,

who are unaware that, in the event of a problem with their camera, CUSAs ability to fix that

problem will be impeded due to the absence of the authentic serial number. In addition, to the

extent CUSA needs to implement a product recall or issue a firmware upgrade, the absence of

authentic serial numbers from Gray Market Cameras makes doing so materially more difficult or,

in some cases, impossible for CUSA to administer the recall or upgrade, and/or for customers to

receive the benefits of such recall or upgrade.

b. Warranty Coverage

49. Many Gray Market Cameras sold by Defendants either lack warranty coverage

altogether, or have warranty coverage that is inferior to that accompanying Genuine CANON

Cameras.

50. By way of example only, Exhibit 3 hereto depicts the warranty that accompanied

a Gray Market Camera purchased in March 2015 from Get It Digital, at a price of more than

$1,100. That warranty states in all-capitalized letters AUSTRALIA & NEW ZEALAND

ONLY, states that it is [f]or Canon products distributed by Canon Australia Pty Ltd or Canon


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New Zealand Ltd only and does not cover Canon products purchased in other countries unless

otherwise stated. CUSA has no legal obligation to honor the warranty in the United States.

51. In contrast, the genuine CUSA warranty for this model camera is enforceable in

the United States.

52. These material differences in warranty coverage damage the goodwill inherent in

CUSAs well-regarded CANON brand and cause consumers to believe, wrongly, that it is CUSA

providing such nonexistent or inferior warranty coverage for the cameras they have purchased, as

opposed to Defendants, who are actually responsible.

c. Incorrect Packaging

53. Gray Market Cameras purchased by CUSA from Defendants have been received

in the wrong boxes in a number of instances.

54. By way of example only, as shown in Exhibit 4 hereto, the Gray Market Camera

purchased in March 2015 from Get It Digital was received in packaging containing a model 18-

55 IS STM lens. What Defendants have done is remove the lens indicated on the packaging and

sold it separately, and then marketed the Gray Market Camera bodies with a model 18-135 IS

STM lens, without bothering to change the kit packaging.

55. The material differences in what the Gray Market Camera packaging tells

consumers they are receiving, and what they are actually receiving, damage the goodwill

inherent in CUSAs well-regarded CANON brand and cause consumers to believe, wrongly, that

it is CUSA that is marketing Genuine CANON Cameras in this way when, in reality, it is

Defendants who are actually responsible.


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d. Photocopied Product Manuals

56. Gray Market Cameras purchased by CUSA from Defendants contain operating

manuals that are not the genuine manuals supplied by CUSA, but inferior photocopies

Defendants appear to have assembled themselves.

57. By way of further example, Exhibit 5 hereto depicts a Gray Market Camera

purchased in September 2014 from Get It Digital, at a price of more than $5,300, that includes a

photocopied operating manual, not the genuine manual CUSA includes with Genuine CANON

Cameras.

58. The material differences in the operating manuals received by purchasers of Gray

Market Cameras, as compared to what purchasers of Genuine CANON Cameras receive, damage

the goodwill inherent in CUSAs well-regarded CANON brand and cause consumers to believe,

wrongly, that it is CUSA that is including inferior photocopies of operating manuals with

Genuine CANON Cameras, when, in reality, it is Defendants who are actually responsible.

e. Power Supplies, Accessories and Certifications

59. Gray Market Cameras purchased by CUSA from Defendants contain power

supplies and accessories that are manufactured by third parties and/or are not compliant with

applicable laws and regulations.

60. As an illustration, Exhibit 6 hereto depicts the Gray Market Camera purchased

from All New Shop in November 2014, accompanied by a counterfeit battery charger improperly

designated with a Canon logo that is manufactured by a third party, and not by or at the direction

of CINC. The battery charger power cord is also manufactured by a third-party and lacks UL

certification.


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61. Because CINC did not manufacture or direct the manufacture of the battery

charger or power cord depicted in Exhibit 6, and because the power cord lacks UL certification,

CUSA and CINC cannot guarantee the safety and quality of the battery charger or power cord.

62. As a further illustration, Exhibit 7 hereto depicts the Gray Market Camera

purchased from Get It Digital in March 2015, accompanied by a non-US battery charger and a

battery charger power cord that is manufactured by a third-party, and not by or at the direction of

CINC.

63. The Gray Market Camera depicted in Exhibit 7 is sold with a Canon-brand battery

charger that lacks BC certification identifiers, which are required by certain state regulations.

The charger also lacks UL certification. In addition, because CINC did not manufacture or direct

the manufacture of the battery charger power cord, CUSA and CINC cannot guarantee the safety

and quality of the power cord.

64. The material differences in the Gray Market Cameras power supplies,

accessories, and certifications damage the goodwill inherent in CUSAs well-regarded CANON

brand and cause consumers to believe, wrongly, that it is CUSA that is marketing Genuine

CANON Cameras in this way when, in reality, it is Defendants who are actually responsible.

FIRST CLAIM FOR RELIEF

Violations of Section 43(a)(1)(A) of the Lanham Act

65. CUSA repeats and realleges each and every allegation set forth in paragraphs 1

through 64 hereof as if fully set forth herein.

66. Defendants conduct constitutes infringement, unfair competition and the use of

false designations of origin and false descriptions and representations in violation of Section

43(a)(1)(A) of the Lanham Act, 15 U.S.C. 1125(a)(1)(A), with respect to the CANON Mark.


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SECOND CLAIM FOR RELIEF

Common Law Unfair Competition

67. CUSA repeats and realleges each and every allegation set forth in paragraphs 1

through 66 hereof as if fully set forth herein.

68. Defendants conduct constitutes unfair competition by passing off,

misappropriation and unprivileged imitation under common law.

PRAYER FOR RELIEF

WHEREFORE, CUSA prays for a judgment:

1. Preliminarily and then permanently enjoining and restraining Defendants, their

officers, agents, servants, employees, attorneys, successors or assigns, and all persons or entities

acting in concert or participation with them, or any of them, from infringing the CANON Mark

through the marketing, distribution, offering for sale, sale and/or promotion in the United States

of: (i) the Gray Market Cameras; or (ii) any CANON-brand cameras or related products that

materially differ from Genuine CANON Cameras and related products intended for use and

resale in the United States; or (iii) any other false designation of origin or false description or

representation or any other thing calculated or likely to cause confusion or mistake in the mind of

the trade or public or to deceive the trade or public into believing that Defendants business and

products or the business and products sold by them are in any way associated or affiliated with or

related to CUSA or CUSAs lines of goods as described herein;

2. Directing Defendants to file with the Court and serve on counsel for CUSA,

within thirty (30) days after entry of any injunction issued by the Court in this action, sworn

written statements as provided in 15 U.S.C. 1116;


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3. Directing Defendants to account to CUSA for their profits arising from the

conduct complained of herein, pursuant to 15 U.S.C. 1117(a);

4. Awarding CUSA its actual damages incurred as a consequence of Defendants

wrongful conduct as described herein, pursuant to 15 U.S.C. 1117(a);

5. Awarding CUSA its reasonable attorneys fees, taxable costs, and disbursements

of this action, pursuant to 15 U.S.C. 1117; and

6. Awarding CUSA such other and further relief as the Court deems just and proper.

JURY DEMAND

Plaintiff demands a trial by jury on all of its claims so triable.

Dated: New York, New York October 20, 2015

DORSEY & WHITNEY LLP By: /s/ Richard H. Silberberg

Richard H. Silberberg [email protected] Bruce R. Ewing [email protected] Dai Wai Chin Feman [email protected]

51 West 52nd Street New York, NY 10019-6119 (212) 415-9200

Attorneys for Plaintiff Canon U.S.A., Inc.


EXHIBIT 1

Case 2:15-cv-06019-LDW-AKT Document 1-1 Filed 10/20/15 Page 1 of 3 PageID #: 16

EXHIBIT 2


EXHIBIT 3


C a s e 2 : 1 5 - c v - 0 6 0 1 9 - L D W - A K T D o c u m e n t 1 - 3 F i l e d 1 0 / 2 0 / 1 5 P a g e 2 o f 2 P a g e I D # : 2 2

EXHIBIT 4


EXHIBIT 5


EXHIBIT 6


EXHIBIT 7



Canon USA v Get It DigitalExhibit 1Exhibit 2Exhibit 3Exhibit 4Exhibit 5Exhibit 6Exhibit 7

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Canon v GID Combined Complaint

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