Z Produx v MAC - Complaint

7/29/2019 Z Produx v MAC - Complaint

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1 Jeffrey A. Koncius, State Bar No. 189803koncius@kbla. com2 KIESEL + LARSON LLP8648 Wilshire Boulevard3 Beverly Hills, California 90211-2910Tel: 310-854-44444 Fax: 310-854-08125 Robert Katzrkatz@katzlawpllc. com6 KATZ PLLC

~ ~ ; ; -o:X'I !

6060 N. Central Expressway, Suite 570l587 Dallas, Texas 75206Tel: 214-865-8000Fax: 888-231-5775

;)9101112131415

Attorneys for Plaintiff,Z PRODUX, INC.

16 Z PRODUX, INC.1718 v.

Plaintiff,

UNITED STATES DISTRICT COURTCENTRAL DISTRICT OF CALIFORNIA

C J . l ~ 0 0734t:Mot 2 x JCOMPLAINT FOR PATENTINFRINGEMENT19 MAKE-UP ART COSMETICS, INC.20212223

JURY TRIAL DEMANDEDDefendant.

COMPLAINT FOR PATENT INFRINGEMENT24 Z Produx, Inc. ("Z Produx" or "Plaintiff') sues Defendant Make-Up Art Cosmetics, Inc.25 ("MAC" or "Defendant") for design patent infringement and on information and belief, alleges as26 follows:2728 1.

,.

INTRODUCTIONPlaintiff Z Produx has been assigned all rights, title, interest in and to the design

COMPLAINT FOR PATENT INFRINGEMENT


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1 claimed in United States Design Patent No. D642,743 (the '"743 Patent" or "the patent-in-suit"),2 entitled "Cosmetic Holder" including the right to sue for past infringement. Defendant has used and3 continues to use Z Produx's patented designs in products that it makes, uses, sells, and offers to sell,4 without Z Produx' s permission. Z Produx seeks damages and/or a disgorgement ofDefendant ' s tota5 profits for patent infringement and an injunction preventing Defendant from making, using, selling, or6 offering to sell, and from inducing others to make, use, s e l ~ or offer to sell Z Produx's patented7 designs without permission.8 JURISDICTION & VENUE9 2. This is an action for patent infringement arising under the patent laws of the United10 States, 35 U.S.C. I, et seq. The Court has original jurisdiction over this patent infringement action11 pursuant to 28 U.S.C. 1331, 1338(a).12 3. This Court has personal jurisdiction over Defendant and venue in this judicial district is13 proper because, on information and belief, Defendant engages in continuous and systematic business14 within the United States and within this judicial district and/or Defendant has placed infringing15 products into the stream ofcommerce by selling and/or offering to sell products into the United States16 and this judicial district with knowledge that such products would be shipped into and/or used in the17 United States and this judicial district.18 PLAINTIFF Z PRODUX19 4. Z Produx is a corporation organized and existing under the laws of the State o20 California, with its principal place ofbusiness in Sherman Oaks, California.21 5. Z Produx's Z Palette product line was conceived and designed by Zena Shteysel, a22 make-up artist who has worked with Laila Ali, Mel B., Kelly Osbourne, Melissa Joan Hart, and23 Brooke Burke to name a few. An image of he Z Palette "Black Large Palette" appears below:2425262728

2 COMPLAINT FOR PATENT INFRINGEMI::'NT


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123456789 6. Z Produx's designs are embodied in the line of Z Palette products, which are

10 customizable empty makeup palettes which have an open bottom to fit the colorpans that the user11 chooses. Z Produx's Z Palette line is sold online on its website, www.zpalette.com, and at retailers12 such as Alcone LLC, Naimies Beauty Supply, Beauty.com, Cinema Secrets, Makeup Mania, Nigels13 Beauty Supply, MakeupGeek.com and Frends Beauty Supply.14 7. Z Produx launched its Z Palette line in May 2009. Z Palette quickly became a15 success, being touted as "stylish" and "Z Greatest" in beauty and make-up magazines. For example, Z16 Palette was featured in the Spring 2010 issue ofGenLux as GenLux's Beauty Editor 's Picks. Z17 Palette also appeared in America Salon in April 2011, Self Magazine in March 2011, Juicy18 Magazine in January 2011, Beauty Store Business in January 2011, yhc in July 2010, America Salon19 inJune2010, Make-Up Artist inlssue#83 and in TTLRN inApril2010. Furthermore, theZPalette20 has been praised by Jennifer Grey, Laila Ali, Kate Gosselin, Chelsie Hightower, Brandy and others21 ZPRODUX'S DESIGN PATENTS22 8. The United States Patent and Trademark Office issued the '743 Patent on August 223 2011. A copy of the '743 Patent is attached hereto as Exhibit A. Z Produx is the owner by24 assignment of all right, title, and interest in the '743 Patent, including the right to sue for past25 infringement.26 9. Z Produx has complied with the statutory requirement ofplacing a noticeof he patent27 in-suit on all necessary products it manufactures and sells.28

3 COMPLAINT FOR PATENT INFRINGEMENT


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1 DEFENDANT MAC2 10. On information and belief, MA C is a corporation organized and existing under the law3 of he State ofDelaware, with its principal place ofbusiness in Melville, New York. Further, MAC is4 registered to do business in the State ofCalifornia, maintaining as its agent for service ofprocess CSC5 - Lawyers Incorporating Service located at 2710 Gateway Oaks Drive, Suite 150N, Sacramento,6 California 95833.7 MAC'S ACTS OF INFRINGEMENT8 11. Defendant has used and continues to use the designs of the patent-in-suit in products9 that it makes, uses, sells, and offers to selL without Z Produx's permission, including, withou10 limitation, Defendant's "Pro Palette Large/Single" (having UPC 7-73602-23605-3) (the "Knock-Of11 Palette"). An image of he Knock-OffPalette appears below:12131415161718192021 12. On information and belief, MA C intentionally designed the Knock-OffPaletteto copy22 the design embodied by the patent-in-suit, in order to tradeoffof he innovative, pa tented designs tha23 are associated with Z Produx's Z Palette line of make-up palettes. The design ofthe Knock-Off-24 Palette is strikingly similar to the design of Z Produx's Z Palette line of make-up palettes and the25 design embodied by the patent-in-suit.262728

4 COMPLAINT FOR PATENT INFRINGEMENT


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1 COUNT I2 DESIGN PATENT INFRINGEMENT, 35 U.S.C. 2713 13. Z Produx incorporates the allegations contained in paragraphs 1 through 12 as though4 fully set forth herein.5 14. MAC has been and, on information and belief, still is making, using, offering to sell6 selling, and/or importing in the State ofCalifornia, this judicial district and elsewhere in the United7 States, Knock-Off-Palettes that infringe the '743 Patent in violation of35 U.S.C. 27l(a).8 15. On information and belief, MAC has been and is now indirectly infringing the '7439 Patent pursuant to 35 U.S.C. 271(b) and/or (c) by intentionally inducing infringement and/o

10 contributing to the infringement of he '743 Patent in the State ofCalifornia, this judicial district, and11 elsewhere in the United States by providing and/or selling the Knock-Off-Palettes to customers and/o12 users ofthose products.13 16. On information and belief, MAC's infringement has been intentional and willful14 making this an exceptional case.15 17. Z Produx has been damaged and injured by Defendant's infringement ofthe '74316 Patent. Because of its infringing acts and for its unauthorized use of the inventions claimed in the17 '743 Patent, Defendant is liable to Z Produx for damages in an amount no less than a reasonable18 royalty.19 18. ByreasonofMAC's infringement, ZProduxhas suffered, and unless MAC's conduc20 is permanently enjoined, will continue to suffer, actual damages and irreparable harm, as to which i21 has no adequate remedy at law.22 PRAYER FOR RELIEF23 WHEREFORE, Z Produx respectfully requests that this Court:24 1. Enter judgment in favor ofZ Produx;25 2. Permanently enjoin MAC and its predecessors, successors, divisions, subsidiaries, o26 joint ventures thereof, together with any and all parent or affiliated companies or corporations, and al27 officers, directors, employees, agents, attorneys, representatives, those acting in privity or concern28 with MAC, or on its behalf, from further infringing the '743 Patent, and from inducing others to

5 COMPLAINT FOR PA TENT INFRINGEMEN


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1 infringe the '743 Patent;2 3. Award Z Produx its actual damages under 35 U.S.C. 284 in an amount to b3 determined at trial;4 4. Award Z Produx enhanced damages up to three times the amount found or assesse5 under 35 U.S.C. 284, as a result of MAC's knowing and willful infringement;6 5. Award Z Produx the disgorged total profits of MAC under 35 U.S.C. 289 from7 infringing the patent-in-suit in an amount to be determined at trial;8 6. Award Z Pro dux punitive damages because ofMAC's knowing, willful, and delibera9 bad faith acts of unfair competition in an amount to be determined at trial;

10 7. Award Z Produx pre-judgrnent and post-judgrnent interest;11 8. Award Z Produx all of its actual costs and reasonable attorneys' fees in this action a12 authorized by 35 U.S.C. 285; and13 9. Grant to Z Produx such other and further relief as may be just and warranted under th14 circumstances.15 JURY TRIAL DEMAND16 Z Produx demands a trial by jury on all issues so triable.1718 DATED: January 31, 201319202122232425262728

KIESEL+ LARSON LLP

By:

6 COMPLAINT FOR PATENT INFRINGEMEN


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IIIII ~1 1 1 1 1 1 ~ 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 1 111111(12) United States Design Patent

Shteysel(54) COSMETIC HOLDER(76) Inventor: Zena Shteysel, Sherman Oaks, CA (US)(**) Term: 14 Years(21) Appl. No.: 29/359,687(22) filed: Apr. 14, 2010(51) LOC (9) Cl. .......... .... ............ ......... ........ ....... 28-03(52) U.S. Ct . ....................................................... D28/83(58) Field of Classification Search .................. 206/823.

(56)

206/581; D28173, 76-84, 64.1; 132/286-288,132/293-307.314-318See application file for complete search history.References Cited

U.S. PATENT DOCUMENTS0422,120 s 0453,859 s 0477,895 s 0480.837 s 0485,018 s 0503,245 s 0597,256 s 0601.757 s 0603.564 s

3i2000 Orsomando .......... ... 028!832/2002 Spearman . 028/ 777/2003 Goswell . .. 028/8310/2003 Liu .............. .. ... 028/831!2004 Beilman .................... ... 0281773/2005 Vanoncini ..................... 028: 787/2009 Liden ............................. 028/ 83I 0/2009 Sage! ............................. 02 8/8311!2009 Liden .......... ........... ........ 028.'83* cited by examinerPrimary Examiner Jennifer Rivard(7 4) Attorney, Agent, or Hrm Stroock& Stroock& LavanLLP

USOOD642743S

(IO) Patent No.:(45) Date of Patent:

(57) CLAL'\1

US D642,743 S** Aug. 2, 2011'!he ornamental design for the cosmetic holder, as shown anddescribed.

DESCRIPTIONfiG. 1 is a perspective view of the cosmetic holder in accordance with a first embodiment of the invention:fiG. 2 is a top plan view thereof;fiG. 3 is a front elevational view thereof;FIG. 4 is a side elevational view thereof from either sidethereof;FIG. 5 is a rear elevational view thereof;FIG. 6 is a bottom plan view thereof;FIG. 7 s a perspective view of he cosmetic holder depicted inFIG. 1, with cosmetic containers therein (which cosmeticcontainers form no part of the claimed design);FKi. 8 is perspective view of the cosmetic holder in accordance with a se cond embodimentof the invention;FIG. 9 is a top plan view thereof;FIG. 10 is a front eievationai view thereof;FIG. 11 is a side elevational view thereof from either sidethereof;FIG. 12 is a rear elevational view thereof:FIG. 13 is a bottom pl an view thereof; and,FIG. 14 is a perspective view of he cosmetic holder depictedin FIG. 8, with cosmetic containers therein (which cosmeticcontainers form no part of the claimed design).The broken Jines shown in the drawings illustrate cosmeticcontainers and iorm no part ofthe claimed design.

1 Claim, 6 Drawing Sheets


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U.S. Patent Aug. 2, 2011 Sheet 1 of 6 US D642,743 S

FIG.1

FIG.2


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FIG.3

FIG.S

FIG.4

FIG.6


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U.S. Patent Aug. 2, 2011 Sheet 3 of6 US D642,743 S

FIG.7


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U.S. Patent Aug. 2, 2011 Sheet 4 of 6

FIG.8

I IIFIG.9

US D642,743 S


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FIG.1 0

FIG.12

FIG.11

FIG.13


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U.S. Patent Aug. 2, 2011 Sheet 6 of6 US D642,743 S

FIG.14


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UNITED S T A ~ S DISTRICT C O U R ~ , C E N ~ R A L D I S T R I C ~ F CALIFORNIACIVIL COVER SHEET

DEFENDANTS(a) PLAINTIFFS (Check box if you are representing yourself D)Z PRODUX, INC. MAKE-UP ART COSMETICS, INC

(b) Attorneys (Finn Name, Address and Telephone Number. If you are representingyourself, provide same.)Jeffrey A. Koncius, Esq., KIESEL+ LARSON LLP8648 Wilshire Blvd., Beverly Hills, CA 90211T el (310) 854-4444; Fax (310) 854-0812

Attorneys (I fKnown)

H. BASIS OF JURISDICTION (Place an X in one box only.) I l l . CITIZENSHIP OF PRINCIPAL PARTIES- For Diversity Cases Only{Place an X in one box for plaintiff and one for defendant.)0 1 US . Government Plainti ff "3 Federal Question (U.S. PTF DEF PTF DGovernment Not a Pany) Citizen of This State I D l Incorporated or Principal Place 4 0

of Business in this State0 2 U.S. Government Defendant 0 4 Diversity (Indicate Citizenship Citizen of Another State 0 2 0 2 Incorporated and Principal Place 0 5 0 5

of Parties in Item III) of Business in Another StateCitizen or Subject of a Foreign Country 0 3 0 3 Foreign Nation 0 6 C

IV. ORIGIN (Place an X in one box only.)Mt Original C 2 Removed from 0 3 Remanded fromProceeding State Court Appellate Court 0 4 Reinstated orReopened 0 5 Transferred from another district (specify): 0 6 MultiDistrictLitigation

0 7 Appeal to DistJudge fromMagistrate JudV. REQUESTED IN COMPLAINT: JURY DEMAND: FfYe s 0 No (Check 'Yes' only if demanded in complaint.)CLASS ACTION nnder F.R.C. P. 23: 0 Yes r:fNo !if'MONEY DEMANDED IN COMPLAINT:$VI. CAUSE OF ACTION (Cite the U.S. Civil Statute under which you are filing and write a brief statement of cause. Do not cite jurisdictional statutes unless diversity.)

35 US.C 271 and 281 --Plaintiff is alleging that Defendant infringed on U.S Design Patent No. D642,743VII. NATURE OF SUIT (Place an X in one box only.)

cmDll.STATUTES CONTRACI' TORTS roars PRISONER LABOR0400 State Reapportionment 0110 Insurance PERSONAl INJURY PERSONAL Pm1110NS 0710 Fair Labor Standa0410 Antitrust 0120 Marine 0310 Airplane PROPERTY 0 510 Motions to Act0430 Banks and Banking 0130 Miller Act 0315 Airplane Product 0 370 Other Fraud Vacate Sentence C720 Labor!Mgmt.0450 Commerce/ICC 0140 Negotiable Instrument Liability 0371 Truth in Lending Habeas Corpus RelationsRates/etc. 0150 Recovery of 0320 Assault, Libel & 0 380 Other Personal 0 530 General 0730 Labor/Mgmt.0460 Deportation Overpayment & Slander Property Damage 0 535 Death Penalty Reporting &0470 Racketeer Influenced Enforcement of 0 330 Fed. Employers' 0 385 Property Damage 0 540 Mandamus/ Disclosure Actand Corrupt Judgment Liability Product Liability Other 0740 Railway Labor AcOrganizations 0151 Medicare Act 0340 Marine BANkRUPTCY 0 550 Civil Rights 0 790 Other Labor0345 Marine Product0480 Consumer Credit 0152 Recovery of Defaulted Liability 0 422 Appea l28 USC 0 555 Prison Condition Litigation0490 Cable/Sat TV Student Loan (Excl. 0350 Motor Vehicle 158 FORF'EITURE I 0 791 Empl. Ret. Inc.0 810 Selective Service Veterans} 0 355 Motor Vehicle 0423 Withdrawal28 PI1NAL1Y Security Act0 850 Securities/Commodities/ 0153 Recovery of Product Liability usc 157 0 610 Agriculture PflOPER.lY RIOHTSExchange Overpayment of 0360 Other Personal CMLRIOHTS 0 620 Other Food & ~ 2 0 Copyrights0 875 Customer Challenge 12 Veteran's Benefits Injury 0441 Voting Drug 830 Patentusc 3410 0160 Stockholders' Suits 0362 Personal Injury- 0442 Employment 0625 Drug Related 0 840 Trademark0890 Other Statutory Actions 0190 Other Con ract Med Malpractice 0443 Housing/ Acco- Seizure of SOCIAL SECURITY0891 Agricultural Act 0195 Contract Product 0365 Personal Injury- mmodations Property 21 USC 0 861 HIA (I 395ft)0 892 Economic Stabilization Liability Product Liability 0444 Welfare 881 0 862 Black Lung (923}Act 0 196 Franchise 0368 Asbestos Personal 0445 American with 0630 Liquor Laws 0 863 DIWC/DIWW0 893 Environmental Matters REAL PROPERlY Injury Product Disabilities 0640 R.R. & Truck (405(g))0894 Energy Allocation Act 0210 Land Condemnation Liability Employment 0 650 Airline Regs 0 864 SSID Title XVI0895 Freedom of Info. Act 0220 Foreclosure IMMIGRATION 0 446 American with 0660 Occupational 0 865 RSI (405(g))0900 Appeal of Fee Deterrni- 0 230 Rent Lease & Ejectment 0462 Naturalization Disabilities- Safety !Health FEDERAL TAX SUrrSnation Under Equal 0240 Torts to Land Application Other 0690 Other 0870 Taxes (U.S. PlainAccess to Justice 0245 Tort Product Liability 0463 Habeas Corpus- 0440 Other Civil or Defendant)0950 Constitutionality of 0290 All Other Real Property Alien Detainee Rights 0 871 IRS-Third Party 2State Statutes 0465 Other Immigration USC7609Actions

FO R OFFICE USE ONLY: Case Number:AFTER COMPLETING THE FRONT SIDE OF FORM CV-71, COMPLETE THE INFORMATION REQUESTED BELOW.

CV-71 (05/08) CIVIL COVER SHEET Page I


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'- uNITED STATES DISTRICT COURT, CENTRAL DISTRICT OF CALIFORNIACIVIL COVER SHEET

VIII(a). I D E ~ T I C A L CASES: Has this action been previously filed in this court and dismissed, remanded or closed?If yes, list casenumber(s): 12-cv-05040 PDP (RZx)VIII(b). RELATED CASE S: Have any cases been previously filed in this court that are related to the present case? riNo 0 Yeslfyes, list case number(s):-----------------------------------------------------Civil cases are deemed related if a previo usly filed case an d the present case:(Check all boxes that apply) 0 A. Arise from the same or closely related transactions, happenings, or events; or

0 B. Call for determination of the same or substantially related or similar questions of law and fact; or0 C. For other reasons would entail substantial duplication of labor if heard by different judges; or0 D. Involve the same patent, trademark or copyright, and one of the factors identified above in a, b or c also is present.

IX. VENUE: (When completing the following information, use an additional sheet if necessary.)(a) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named plaintiff resides.0 Check here if the government, its agencies or employees is a named plaintiff. If this box is checked, go to item (b).

County in this District:* California County outside of this District; State. i f other than California; or Foreign CounltyLos Angeles County

(b) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH named defendant resides.0 Check here if the government, its agencies or employees is a named defendant. If this box is checked, go to item (c).County in this District: California County outside of this District; State. if other than California; or Foreign Counlty

New York

(c) List the County in this District; California County outside of this District; State if other than California; or Foreign Country, in which EACH claim arose.Note In land condemnation cases use the location of the tract of land involved'

County in this District:* California County outside of this District; State. if other than California; or Foreign CounltyLos Angeles

*Los Angeles, Orange, San Bernardino, Riverside, Ventura, Santa Barbara, or San Luis Obispo CountiesNote: In land condemnation cases use the location ofthe tract of land volved

Notice to Counsel/Part ies: Ib e CV-71 (JS-44) Civ Cover Sheet and the information contained herein neither replace nor supplemen t the filing and serviceof pleadingsor other papers as required by law. This form, approved by the Judicial Conference ofthe United States in Septem ber 1974, is required pursuant to Local Rule 3-1 is not filedbut is used by the Clerk of the Court for the purpose of statistics, venue and initiating the civil docke t sheet. (For more detailed instructions, see separate instructions sheet.)

Key to Statistical codes relating to Soc ial Security Cases:~ a t u r e of Suit Code Abbreviation

861 HIA

862 BL863 DIWC

863 DIWW

864 SSJD

865 RSl

CV-71 (05108)

Substantive Statement of Cause of Action

All claims for health insurance benefits (Medicare) under Title 18, Part A, of the Social Security Act, as amended.Also, include claims by hospitals, skilled nursing facilities, etc., for certification as providers of services under theprogram. (42 U.S.C. 1935FF(b))All claims for "Black Lung" benefits under Title 4, Part B, of the Federal Coal Mine Health and Safety Act of 1969.(30 u.s.c 923)All claims filed by insured workers for disability insurance benefits under Title 2 of the Social Security Act, asamended; plus all claims filed for child's insurance benefits based on disability. (42 U.S.C. 405(g))All claims filed for widows or widowers insurance benefits based on disability under Title 2 of the Social SecurityAct, as amended. (42 U.S.C. 405(g))All claims for supplemental security income payments based upon disability filed under Title 16 of the Social SecurityAct, as amended.All claims for retirement (old age) and survivors benefits under Title 2 of the Social Security Act, as amended. (42U.S.C'. (g))

CIVIL COVER SHEET Page 2 o

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Z Produx v MAC - Complaint