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Case 3:16-cv-06689-LB Document 1 Filed 11/18/16 Page 1 of 19

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JOHNSON & PHAM, LLP


Christopher D. Johnson, SBN: 222698
E-mail: cjohnson@johnsonpham.com
Christopher Q. Pham, SBN: 206697
E-mail: cpham@johnsonpham.com
Marcus F. Chaney, SBN: 245227
E-mail: mchaney@johnsonpham.com
6355 Topanga Canyon Boulevard, Suite 326
Woodland Hills, California 91367
Telephone: (818) 888-7540
Facsimile: (818) 888-7544
Attorneys for Plaintiff
CREE, INC.

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UNITED STATES DISTRICT COURT

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NORTHERN DISTRICT OF CALIFORNIA

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SAN JOSE COURTHOUSE

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CREE, INC., a North Carolina Corporation,

Case No.: 5:16-cv-06689

Plaintiff,

COMPLAINT FOR DAMAGES


AND DECLARATORY RELIEF:

v.

(1) FEDERAL TRADEMARK


INFRINGEMENT [15 U.S.C.
1114/Lanham Act 32(a)];
(2) FALSE DESIGNATION OF
ORIGIN/UNFAIR
COMPETITION [15 U.S.C.
1125(a)/Lanham Act 43(a)];
(3) TRADEMARK DILUTION [15
U.S.C. 1125(c)];
(4) CONTRIBUTORY TRADEMARK
INFRINGEMENT
(5) FEDERAL DESIGN PATENT
INFRINGEMENT [35 U.S.C.
271]; AND
(6) CONTRIBUTORY DESIGN
PATENT INFRINGEMENT

MAXBRITE LED LIGHTING


TECHNOLOGY, LLC, a California Limited
Liability Company; JOHN ANH LE a/k/a
JOHN LEE and a/k/a KIM LE, an Individual;
and DOES 1-10, Inclusive,
Defendants.

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[DEMAND FOR JURY TRIAL]

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COMES NOW, Plaintiff Cree, Inc. (Plaintiff) hereby files its Complaint for Damages

and Declaratory Relief (Complaint) against Defendants Maxbrite LED Lighting Technology,

LLC (Maxbrite); John Anh Le, who is also known as John Lee and/or Kim Le; and DOES 1-

10, inclusive (collectively Defendants).

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PARTIES
1.

Plaintiff, is now, and was at the time of the filing of this Complaint, and at all

intervening times, a North Carolina corporation with its principal place of business located in

Durham, North Carolina.

2.

Plaintiff alleges, on information and belief, that Defendant Maxbrite LED Lighting

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Technology, LLC (Defendant), is now, and was at the time of the filing of this Complaint, a

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California limited liability company with its principal place of business located in San Jose,

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California.

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3.

Plaintiff is informed and believes that Defendant John Anh Le is, at the time of

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the filing of this Complaint and at all intervening times, an individual also known as John Lee

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and/or Kim Le, who resides in San Jose, California, and is a principal member of Defendant

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Maxbrite, controlling and supervising its business operations.

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4.

Defendant Maxbrite did not and does not have sufficient funding to assume

responsibility for its foreseeable and actual liabilities.


5.

Plaintiff is informed and believes that since the time of its creation, now, and at all

times relevant to this Complaint, Defendant Maxbrite was undercapitalized.


6.

Plaintiff is informed and believes that since the time of its creation, now, and at all

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times relevant to this Complaint, Defendant Maxbrite failed to observe corporate formalities

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required by law.

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7.

Plaintiff further alleges, on information and belief, that Defendant John Anh Le is

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the alter ego of Defendant Maxbrite and that Defendant John Anh Le personally directed and

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benefited from the infringing activities of Defendant Maxbrite.

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8.

The true names and capacities, whether individual, corporate, associate or

otherwise, of Defendants herein named as DOES 1-10, inclusive, are unknown to Plaintiff.
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Plaintiff therefore sues said Defendants by such fictitious names. When the true names and

capacities of said Defendants have been ascertained, Plaintiff will amend this pleading

accordingly.

9.

Plaintiff is informed and believes and thereon alleges that at all times mentioned

herein Defendants and DOES 1-10, inclusive, and each of them, were the agents, servants and

employees of every other Defendant and the acts of each Defendant, as alleged herein, were

performed within the course and scope of that agency, service or employment.

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Plaintiff further alleges that Defendants and DOES 1-10, inclusive, sued herein by

fictitious names are jointly, severally and concurrently liable and responsible with the named

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Defendants upon the causes of action hereinafter set forth and shall henceforth be referred to

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collectively as Defendants.

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JURISDICTION / VENUE

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11.

This Court has Federal subject matter jurisdiction over this matter pursuant to 28

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U.S.C. 1331 and 1338(a) and (b), in that the case arises out of claims for trademark infringement,

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false designation of origin, and dilution under the Lanham Act (15 U.S.C. 1051 et seq.), and

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design patent infringement under the Patent Act (35 U.S.C. 271).

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12.

This Court also has supplemental jurisdiction pursuant to 28 U.S.C. 1367(a) and

1338 (a)(b).

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13.

Venue is proper, inter alia, pursuant to 28 U.S.C. 1391(b) because on information

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and belief, a substantial part of the events or omissions giving rise to the claim occurred in this

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judicial district, and has caused damages to Plaintiff in this district.

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Personal jurisdiction exists over Defendants because on information and belief,

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Defendants conduct business in California and in this judicial district, have purposefully directed

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action to California and this district, or have otherwise availed themselves of the privileges and

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protections of the laws of the State of California, such that this Courts assertion of jurisdiction

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over Defendants does not offend traditional notions of fair play and due process.

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COMPLAINT - Case No.: 5:16-cv-06689

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INTRADISTRICT ASSIGNMENT

15.

Pursuant to Rule 3-2(c) of the Local Rules of Practice in Civil Proceedings before

the United States District Court for the Northern District of California (Civil L.R.) and the

Courts Assignment Plan, this is an Intellectual Property Action to be assigned on a district wide-

basis.

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Assignment to the San Jose Division is appropriate pursuant to Civil L.R. 3-2(d)

because a substantial part of the events that give rise to Plaintiffs claims against Defendants

occurred in Santa Clara County, California, where Defendants principal place of business is

located.

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GENERAL ALLEGATIONS
Plaintiff and its Famous CREE Brand and Products

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Plaintiff was founded in 1987 as a manufacturer of silicon carbon (SiC) wafers.

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Building on its success with SiC, Plaintiff began developing an innovative light emitting diode

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(LED) for use in a variety of applications and introduced numerous LEDs in the 1990s and

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2000s.

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Plaintiff is a market-leading innovator in the design, development, manufacture,

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and sale of LEDs, lighting products using LEDs, semiconductor products for RF applications, and

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a variety of other products under various trademarks, including but not limited to the CREE

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marks. Plaintiffs CREE-branded products and marks have achieved great success since their

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introduction at least as of July 1990.

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Plaintiffs lighting and related products have earned a reputation for innovation,

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quality and performance. Plaintiff has spent substantial time, money and effort in developing

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consumer recognition and awareness of its CREE marks and products. Plaintiff has spent an

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enormous amount of money on print and Internet advertising in order to inform consumers of the

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benefits of Plaintiffs products and services.

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Through the extensive use of Plaintiffs marks, Plaintiff has built up and developed

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significant goodwill in its entire product line. Wide arrays of newspapers, magazines and

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television networks have included advertising of Plaintiffs products, which are immediately
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identified by Plaintiffs marks.

21.

As a result of the quality and popularity of the CREE-branded products, including

Plaintiffs LED and LED lighting products, the CREE marks have been prominently placed in

the minds of the public. Consumers, purchasers and the members of the public have become

familiar with Plaintiffs intellectual property and products, and have come to recognize the

CREE marks and products, and associate them exclusively with Plaintiff. Plaintiff has acquired

a valuable reputation and goodwill among the public as a result of such association. Indeed, the

CREE marks are famous in the United States and around the world.

Plaintiffs Trademarks

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While Plaintiff has gained significant common law trademark and other rights in

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its CREE products and services through its use, advertising and promotion, Plaintiff has also

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protected its valuable rights by filing for and obtaining numerous federal trademark registrations.

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This includes registration for the following non-exhaustive list of Trademarks (collectively

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referred herein as CREE Trademarks).

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Trademarks are attached hereto as Exhibits A - D, respectively:

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A.

The registration certificates for the CREE

CREE: United States Patent and Trademark Office (USPTO) Reg. No.:

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2,440,530, Registered April 3, 2001, for electronic devices and materials, namely, optoelectronic

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devices, light emitting diodes, photodiodes, and silicon carbide semiconductor wafers;

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B.

diodes, transistors, semiconductor devices, semiconductor chips, and semiconductor wafers;

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CREE: USPTO Reg. No.: 3,935,628, Registered March 22, 2011, for

C.

CREE: USPTO Reg. No.: 3,935,629, Registered March 22, 2011, for

flashlights, light emitting diode lighting fixtures, light bulbs, lighting fixtures, and spotlights; and

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D.

CPY250: USPTO Reg. No.: 4,888,986, Registered January 19, 2016, for

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lighting fixtures using light-emitting diodes as the light source.

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COMPLAINT - Case No.: 5:16-cv-06689

Case 3:16-cv-06689-LB Document 1 Filed 11/18/16 Page 6 of 19

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Plaintiffs Design Patents


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Plaintiff is one of the foremost designers and manufacturers of lighting and LED

related products in the world. Plaintiff designs and manufactures LED lighting products for

commercial and business use.

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Plaintiff owns various valid and lawfully issued United States Design Patents for

its lighting products, including but not limited to U.S. Design Patent Nos.: D721,844 S (parent)

and D743,084 S (divisional) (collectively referred herein as CREE Design Patents).

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Defendants Wrongful and Infringing Conduct


25.

Plaintiff has never authorized or consented to Defendants use of Plaintiffs CREE

Trademarks or any confusingly similar marks.


26.

Plaintiff has never authorized or consented to Defendants manufacturing, copying,

selling, importing, or distributing any products embodying the CREE Design Patents.
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By letter dated April 22, 2016, counsel for Plaintiff placed Defendants on notice

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that its advertising, offer for sale, and sale of certain lighting products infringed on specific CREE

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Trademarks and CREE Design Patents.

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On May 3, 2016, Defendant John Anh Le, a/k/a John Lee, confirmed via email to

counsel for Plaintiff that Defendants are in receipt of the April 22, 2016 letter.
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On May 26, 2016, Plaintiffs investigator purchased an LED Canopy Gas Station

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Luminaire from Defendants through its website, www.maxbriteled.com, for a cost of $292.52,

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paid for by a PayPal electronic fund transfer.


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30.

The LED Canopy Gas Station Luminaire purchased and received from Defendants

was inspected by Plaintiff to determine its authenticity. Plaintiffs inspection of the purchased item

confirmed that the item Defendants sold and distributed infringed upon the CREE Design Patents.

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On July 26, 2016, and August 8, 2016, Plaintiffs investigator purchased LED

Shoebox Parking Lot Fixtures from Defendants through its website, www.maxbriteled.com, for

costs of $525.57 and $431.77, respectively, paid for by PayPal electronic fund transfers. The

listings on www.maxbriteled.com advertised that each of the two purchased products contained a

Cree LED light source, 14,029 lumen.

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The two LED Shoebox Parking Lot Fixtures purchased and received from

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Defendants were inspected by Plaintiff to determine their authenticity. Plaintiffs inspection of the

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purchased items confirmed that the items Defendants sold and distributed did not contain

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Plaintiffs LED light products or component parts. The light source on the products did not

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originate from Plaintiff, was not manufactured or distributed by Plaintiff, and was not authorized

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by Plaintiff.

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By these sales, and on information and belief, Defendants violated and continue to

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violate Plaintiffs exclusive rights in its trademarked and patented lighting products, components,

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and related goods and services, and use images and marks which are confusingly similar to,

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identical to, and/or constitute infringing reproductions of Plaintiffs trademarks and design

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patented products to confuse consumers and aid in the promotion and sales of their unauthorized

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goods.

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Defendants conduct and use began long after Plaintiffs adoption and use of its

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CREE Trademarks and CREE Design Patents, and after Plaintiff obtained the trademark

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registrations and issued design patents alleged above, and after Plaintiffs marks became famous.

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Indeed, Defendants had knowledge of Plaintiffs ownership of the marks, and of the fame in such

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marks, prior to the actions alleged herein, and adopted them in bad faith and with intent to cause

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confusion, tarnish, counterfeit and dilute Plaintiffs marks and products. Defendants also had

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knowledge of Plaintiffs ownership of the design patents and reproduced the products claimed by

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them in bad faith and in violation of Plaintiffs patent rights. Neither Plaintiff nor any authorized
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agents of Plaintiff have consented to Defendants use of Plaintiffs CREE Trademarks or CREE

Design Patents in the manner complained of herein.

35.

Defendants actions were committed negligently, recklessly, willfully, and/or in

bad faith and with the intent to dilute Plaintiffs marks, and to cause confusion and mistake, and

to deceive the consuming public and the public at large as to the origin, source, sponsorship and/or

affiliation of Defendants, and/or Defendants infringing goods. By their wrongful conduct,

Defendants have traded upon and diminished Plaintiffs goodwill.

36.

In committing these acts, Defendants have, among other things, negligently,

recklessly, willfully, or in bad faith committed the following acts, all of which have and will

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continue to cause irreparable harm to Plaintiff: (i) infringed, tarnished, and diluted Plaintiffs rights

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in the CREE Trademarks; (ii) misled the public into believing there is an association or

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connection between Defendants and Plaintiff, and the products advertised and sold by Defendants

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and Plaintiff; (iii) used false designations of origin on or in connection with its goods and services;

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(iv) committed false advertising and unfair business practices; (vi) infringed upon Plaintiffs

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patented designs; and (viii) unfairly profited from such activity. Unless enjoined, Defendants will

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continue to cause irreparable harm to Plaintiff.

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FIRST CAUSE OF ACTION

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(Infringement of Registered Trademarks against Defendants MAXBRITE LED

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LIGHTING TECHNOLOGY, LLC; JOHN ANH LE a/k/a JOHN LEE and/or KIM LE;

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and DOES 1 through 10, Inclusive)

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[15 U.S.C. 1114/Lanham Act 32(a)]

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Plaintiff hereby incorporates by reference each of the other allegations set forth

elsewhere in this Complaint as though fully set forth in this cause of action.

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38.

Plaintiff has continuously used its CREE Trademarks in interstate commerce.

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39.

Plaintiff, as the owner of all right, title and interest in and to these trademarks, has

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standing to maintain an action for trademark infringement under the U.S. Trademark Statute 15

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U.S.C. 1114.

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40.

Defendants are, and at the time of their actions complained of herein were, actually

aware that Plaintiff is the registered trademark owner of the CREE Trademarks. (See Exhibits

A - D).

41.

Defendants did not have and failed to obtain the consent or authorization of

Plaintiff as the registered owner of the CREE Trademarks to deal in and commercially distribute,

market and sell CREE products bearing Plaintiffs asserted marks into the stream of commerce.

42.

Defendants negligently, recklessly, willfully, and/or in bad faith used in commerce

the reproductions, counterfeits, copies, and/ or colorable imitations of Plaintiffs asserted marks

in connection with the sale, offering for sale, distribution, or advertising of Defendants goods by

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offering, advertising, promoting, retailing, selling, and distributing counterfeit CREE products

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bearing the CREE Trademarks.

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Defendants reproduced, counterfeited, copied, and colorably imitated Plaintiffs

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registered CREE Trademarks and applied such reproductions, counterfeits, copies, or colorable

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imitations to labels, signs, prints, packages, wrappers, receptacles and/or advertisements intended

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to be used in commerce upon or in connection with the sale, offering for sale, import, distribution,

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and/or advertising of goods. Defendants thereupon offered, advertised, promoted, retailed, sold,

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and distributed counterfeit CREE products bearing the CREE asserted marks.

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44.

Defendants use and sale of lighting products bearing Plaintiffs trademarks is

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likely to cause confusion, or to cause mistake, or to deceive, mislead, betray, and defraud

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consumers who believe that Defendants items are authentic products manufactured by Plaintiff.

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Defendants acts infringe on Plaintiffs exclusive rights and goodwill in the marks,

as well as causing confusion or to cause mistake and to deceive.


46.

Plaintiff has suffered and will continue to suffer substantial and irreparable injury,

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loss and damage to its rights in and to the CREE Trademarks and the goodwill associated

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therewith, for which it has no adequate remedy at law; thus Plaintiff requests injunctive relief.

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Defendants continued use of Plaintiffs asserted marks without Plaintiffs consent

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or authorization constitutes intentional infringement of Plaintiffs federally registered trademarks

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in violation of 32 of the Lanham Act, 15 U.S.C. 1114. Based on such conduct, Plaintiff is
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entitled to injunctive relief as well as monetary damages, and other remedies provided by 1116,

1117, and 1118, including Defendants profits, treble damages, reasonable attorneys fees, costs,

statutory damages and/or prejudgment interest.

SECOND CAUSE OF ACTION

(False Designation of Origin & Unfair Competition against Defendants MAXBRITE LED

LIGHTING TECHNOLOGY, LLC; JOHN ANH LE a/k/a JOHN LEE and/or KIM LE;

and DOES 1 through 10, Inclusive)

[15 U.S.C. 1125(a)/Lanham Act 43(a)]

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48.

Plaintiff hereby incorporates by reference each of the other allegations set forth

elsewhere in this Complaint as though fully set forth in this cause of action.

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49.

Plaintiff, as the owner of all common law right, title, and interest in and to the

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CREE asserted marks, has standing to maintain an action for false designation of origin and

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unfair competition under the Federal Trademark Statute, Lanham Act 43(a) (15 U.S.C. 1125).

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Plaintiffs asserted marks are fanciful, inherently distinctive and/or have acquired distinctiveness.

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50.

Defendants have, without authorization, on or in connection with its goods and

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services, used in commerce marks which are confusingly similar to the asserted marks, and have

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made false designations of origin which are likely to cause confusion or cause mistake or to

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deceive as to the affiliation, connection or association of Defendants with Plaintiff, and as to the

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origin, sponsorship or approval of Defendants goods or services or commercial activities.

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51.

Defendants conduct described above violates the Lanham Act, and Defendants

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have unfairly competed with and injured and, unless immediately restrained, will continue to

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injure Plaintiff, causing damage to Plaintiff in an amount to be determined at trial, and will cause

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irreparable injury to Plaintiffs goodwill and reputation associated with the value of Plaintiffs

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asserted marks.

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On information and belief, the conduct of Defendants has been negligent, reckless,

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willful, or in bad faith to cause confusion, or to cause mistake or to deceive and in blatant disregard

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of Plaintiffs rights.

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53.

Defendants knew, or by the exercise of reasonable care should have known, that

their adoption and commencement of use in commerce and continuing use of marks which are

confusingly similar to and constitute a counterfeit reproduction of Plaintiffs asserted marks

would cause confusion, mistake, or deception among purchasers, users and the public.

54.

Defendants use and sale of lighting products bearing Plaintiffs asserted marks

unfairly competes with Plaintiff and is likely to cause confusion, mistake, or to deceive, mislead,

betray, and defraud consumers to believe that the substandard imitations are genuine CREE

products.

55.

Defendants continuing use of Plaintiffs asserted marks constitutes false

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designation of origin and unfair competition in violation of 43(a) of the Lanham Act, 15 U.S.C.

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1125(a), causing Plaintiff to suffer substantial and irreparable injury for which it has no adequate

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remedy at law.

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56.

Defendants wrongful conduct has permitted or will permit them to make

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substantial sales and profits on the strength of Plaintiffs marketing, advertising, sales and

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consumer recognition. As a direct and proximate result of Defendants wrongful conduct, as

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alleged herein, Plaintiff has been and will be deprived of sales of its CREE products in an amount

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as yet unknown but to be determined at trial, and has been deprived and will be deprived of the

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value of their marks as commercial assets in an amount as yet unknown but to be determined at

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trial. Plaintiff seek damages and an accounting of Defendants profits, and requests that the Court

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grant Plaintiff three times that amount in the Courts discretion.

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Based on Defendants wrongful conduct, Plaintiff is entitled to injunctive relief as

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well as monetary damages, and other remedies as provided by the Lanham Act, including

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Defendants profits, treble damages, reasonable attorneys fees, costs and prejudgment interest.

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THIRD CAUSE OF ACTION

(Dilution against Defendants MAXBRITE LED LIGHTING TECHNOLOGY, LLC;

JOHN ANH LE a/k/a JOHN LEE and/or KIM LE; and DOES 1 through 10, Inclusive)

[15 U.S.C. 1125(c)]

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58.

elsewhere in this Complaint as though fully set forth in this cause of action.

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Plaintiff hereby incorporates by reference each of the other allegations set forth

59.

Plaintiffs asserted marks are distinctive and famous within the meaning of the

Lanham Act.

60.

Upon information and belief, Defendants unlawful actions began long after

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Plaintiffs mark became famous, and Defendants acted negligently, recklessly, willfully, or in bad

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faith to trade on Plaintiffs reputation and to dilute Plaintiffs asserted marks. Defendants

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conduct is wanton and egregious.

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61.

Defendants intentional sale of fake, pirated and counterfeit items bearing

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Plaintiffs marks is likely to cause confusion, mistake, or to deceive, mislead, betray, and defraud

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consumers to believe that the substandard imitations are genuine CREE products. The actions

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of Defendants complained of herein have diluted and will continue to dilute Plaintiffs asserted

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and other marks, and are likely to impair the distinctiveness, strength and value of Plaintiffs

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marks, and injure the business reputation of Plaintiff and its marks.

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62.

Defendants acts have caused and will continue to cause Plaintiff irreparable harm.

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Plaintiff has no adequate remedy at law to compensate it fully for the damages which have been

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caused and which will continue to be caused by Defendants unlawful acts, unless they are

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enjoined by this Court.

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63.

As the acts alleged herein constitute a violation of 43(c) of the Lanham Act, 15

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U.S.C. 1125(c), Plaintiff is entitled to injunctive relief as well as monetary damages and other

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remedies provided by 15 U.S.C. 1116, 1117, 1118, and 1125(c), including Defendants profits,

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actual and statutory damages, treble damages, reasonable attorneys fees, costs and prejudgment

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interest.

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FOURTH CAUSE OF ACTION

(Contributory Infringement of Registered Trademarks Against Defendants MAXBRITE

LED LIGHTING TECHNOLOGY, LLC; JOHN ANH LE a/k/a JOHN LEE and/or KIM

LE; and DOES 1 through 10, Inclusive)

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64.

Plaintiff hereby incorporates by reference each of the other allegations set forth

elsewhere in this Complaint as though fully set forth in this cause of action.
65.

Defendants are and at the time of their actions complained of herein were actually

aware that Plaintiff is the registered owner of the CREE Trademarks.


66.

Defendants did not have and failed to obtain the consent or authorization of

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Plaintiff as the registered owner of the CREE Trademarks to use Plaintiffs Trademarks to deal

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in and commercially distribute, advertise and sell products to consumers.

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67.

Plaintiff is informed and believes that Defendants knew or should have known that

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the products they were dealing in, distributing, selling, and/or advertising on behalf of their

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customers were lighting products infringing upon the CREE Trademarks.

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68.

Plaintiff is informed and believes and alleges that Defendant John Anh Le profited

directly from Defendant MaxBrites and his infringing use of the CREE Trademarks.
69.

Plaintiff is informed and believes and alleges that Defendant John Anh Le had the

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right and ability to supervise and/or control and indeed directed the infringing activity of

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Defendant Maxbrite.

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As a proximate result of Defendants contributory actions infringing upon the

CREE Trademarks, Plaintiff has been damaged.

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FIFTH CAUSE OF ACTION

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(Federal Design Patent Infringement Against Defendants MAXBRITE LED LIGHTING

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TECHNOLOGY, LLC; JOHN ANH LE a/k/a JOHN LEE and/or KIM LE; and

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DOES 1 through 10, Inclusive)

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[35 U.S.C. 271]

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Plaintiff hereby incorporates by reference each of the other allegations set forth

elsewhere in this Complaint as though fully set forth in this cause of action.
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72.

Plaintiff is the owner of the CREE Design Patents with the United States Patent &

Trademark Office certificate numbers D721,844 S and D743,084 S.


73.

Upon information and belief, Defendants have infringed and continue to infringe

directly and indirectly the CREE Design Patents by advertising, offering to sell, selling and/or

distributing in the United States and/or importing into the United States, lighting products which

embody the designs covered by Plaintiffs design patents or equivalents thereof, including but not

limited to LED Canopy Gas Station Luminaires.

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74.

Upon information and belief, Defendants infringing products include all of the

ornamental designs of the CREE Design Patents or equivalents thereof.


75.

The design of the LED Canopy Gas Station Luminaire purchased from Defendants

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is the same or substantially the same as Plaintiffs CREE Design Patents. The design of

12

Defendants knockoff product are so similar as to be nearly identical such that an ordinary

13

observer, giving such attention as a purchaser usually gives, would be so deceived by the

14

substantial similarity between the designs so as to be induced to purchase the infringing products

15

believing them to be substantially the same as Plaintiffs authentic lighting products. The

16

following is a side-by-side comparision of the trademarked and patented CPY250 gas canopy

17

model manufactured and sold by Plaintiff with a picture of the infringing LED Canopy Gas

18

Station Luminaire sold by Defendants, as adverstised by Defendants on November 9, 2016, on

19

their website www.maxbriteled.com/download/NURAGasStationLuminaireSpecSheet.pdf:

20
21
22
23
24
25
26
27
28
- 15 -

COMPLAINT - Case No.: 5:16-cv-06689

Case 3:16-cv-06689-LB Document 1 Filed 11/18/16 Page 16 of 19

76.

By their conduct, Defendants have violated and continue to violate 35 U.S.C. 271

by infringement of Plaintiffs CREE Design Patents, by advertising, offering to sell, selling,

and/ordistributing in the United States and/or importing into the United States products that are

the equivalent of the CREE Design Patents.

77.

On information and belief, Defendants have violated and continue to violate 35

U.S.C. 271 by indirect infringement of Plaintiffs CREE Design Patents, by inducing others to

directly infringe the CREE Design Patents by advertising, offering to sell, selling, and/or

distributing in the United States and/or importing into the United States products that directly

infringe the CREE Design Patents.

10

78.

Plaintiff has not granted a license or other authorization to Defendants to make

11

use, offer to sale, sell, import, or distribute any lighting products bearing similarities to the CREE

12

Design Patents, particularly in relation to Plaintiffs product known and trademarked as the

13

CPY250.

14
15
16

79.

Plaintiff is informed and believes, and on that basis alleges, that Defendants have

gained profits by virtue of their infringement of the CREE Design Patents.


80.

As a direct and legal result of Defendants wrongful conduct, Plaintiff has been

17

and will be irreparably and permanently harmed; wherefore Plaintiff is without an adequate

18

remedy at law. Accordingly, Plaintiff is entitled to, among other things, an order enjoining and

19

restraining Defendants from further engaging in infringement of the CREE Design Patents.

20

81.

Defendants infringement of the CREE Design Patents is and has been willful.

21

Accordingly, Plaintiff is entitled to its monetary damages, in an amount to be proven at trial, an

22

award of treble damages, and its reasonable attorneys fees and costs.

23

SIXTH CAUSE OF ACTION

24

(Contributory Infringement of Registered Design Patents Against Defendants MAXBRITE

25

LED LIGHTING TECHNOLOGY, LLC; JOHN ANH LE a/k/a JOHN LEE and/or KIM

26

LE; and DOES 1 through 10, Inclusive)

27
28

82.

Plaintiff hereby incorporates by reference each of the other allegations set forth

elsewhere in this Complaint as though fully set forth in this cause of action.
- 16 -

COMPLAINT - Case No.: 5:16-cv-06689

Case 3:16-cv-06689-LB Document 1 Filed 11/18/16 Page 17 of 19

1
2
3

83.

Defendants are and at the time of their actions complained of herein were actually

aware that Plaintiff is the registered owner of the CREE Design Patents.
84.

Defendants did not and failed to obtain the consent or authorization of Plaintiff as

the registered owner of the CREE Design Patents to use the protected design to deal and

commercially distribute, advertise and sell products to consumers.

85.

Plaintiff is informed and believes that Defendants knew or should have known that

the products they were dealing in, importing, distributing, selling, and/or advertising on behalf of

their customers were lighting products infringing upon the CREE Design Patents.

9
10
11

86.

Plaintiff is informed and believes and alleges that Defendant John Anh Le profited

directly from Defendant MaxBrites and his infringing use of the CREE Design Patents.
87.

Plaintiff is informed and believes and alleges that Defendant John Anh Le had the

12

right and ability to supervise and/or control and indeed directed the infringing activity of

13

Defendant Maxbrite or, on information and belief, Defendants knowingly induced infringement

14

and has had a specific intent to induce infringement of the Cree Design Patents by its activities

15

relating to the marketing, sales, support and distribution of the products.

16
17

88.

As a proximate result of Defendants contributory actions infringing upon the

CREE Design Patents, Plaintiff has been damaged.

18

PRAYER FOR RELIEF

19

WHEREFORE, Plaintiff Cree, Inc., prays for judgment against Defendants Maxbrite LED

20

Lighting Technology, LLC; John Anh Le, who is also known as John Lee and/or Kim Le; and

21

DOES 1 through 10, inclusive, and each of them, as follows:

22
23

1. For an award of Defendants profits and Plaintiffs damages in an amount to be proven


at trial for trademark infringement under 15 U.S.C. 1114(a);

24

2. For an award of Defendants profits and Plaintiffs damages in an amount to be proven

25

at trial for false designation of origin and unfair competition under 15 U.S.C.

26

1125(a);

27
28

3. For $2,000,000.00 per counterfeit mark per type of goods sold, offered for sale, or
distributed under 15 U.S.C. 1117(c).
- 17 -

COMPLAINT - Case No.: 5:16-cv-06689

Case 3:16-cv-06689-LB Document 1 Filed 11/18/16 Page 18 of 19

1
2

4. For an award of Defendants profits and Plaintiffs damages in an amount to be proven


at trial for trademark dilution under 15 U.S.C. 1125(c);

5. In the alternative to actual damages and Defendants profits for the infringement and

counterfeiting of Plaintiffs trademarks pursuant to the Lanham Act, for statutory

damages pursuant to 15 U.S.C. 1117(c), which election Plaintiff will make prior to

the rendering of final judgment;

6. Judgment in favor of Plaintiff and against Defendants, that the CREE Design Patents

are valid and Defendants have and continue to directly infringe, induce infringement

and contribute to infringement of the Cree Design Patents;

10

7. For an award of all damages, including treble damages, based on any infringement

11

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

12

8. For an award of all profits, pursuant to 35 U.S.C. 289 together with prejudgment

13

interest;

14

9. For temporary, preliminary and permanent injunctive relief from this Court

15

prohibiting Defendants from engaging or continuing to engage in the unlawful, unfair,

16

or fraudulent business acts or practices described herein, including the advertising

17

and/or dealing in any counterfeit product; the unauthorized use of any trademark; acts

18

of trademark infringement or dilution; false designation of origin; unfair competition;

19

and any other act in derogation of Plaintiffs rights;

20

10. For an order from the Court requiring that Defendants provide complete accountings

21

and for equitable relief, including that Defendants disgorge and return or pay their ill-

22

gotten gains obtained from the illegal transactions entered into and or pay restitution,

23

including the amount of monies that should have been paid if Defendants complied

24

with their legal obligations, or as equity requires;

25

11. For an order from the Court that an asset freeze or constructive trust be imposed over

26

all monies and profits in Defendants possession which rightfully belong to Plaintiff;

27

12. For destruction of the infringing articles in Defendants possession under 15 U.S.C.

28

1118;
- 18 -

COMPLAINT - Case No.: 5:16-cv-06689

Case 3:16-cv-06689-LB Document 1 Filed 11/18/16 Page 19 of 19

13. For treble damages suffered by Plaintiff as a result of the willful and intentional

infringements and acts of counterfeiting engaged in by Defendants, under 15 U.S.C.

1117(b);

14. For damages in an amount to be proven at trial for unjust enrichment;

15. For an award of exemplary or punitive damages in an amount to be determined by the

Court;

16. For Plaintiffs reasonable attorneys fees;

17. For all costs of suit;

18. For such other and further relief as the Court may deem just and equitable.

10
11

DATED: November 18, 2016

12

JOHNSON & PHAM, LLP


By: __/s/ Christopher D. Johnson_______
Christopher D. Johnson, Esq.
Christopher Q. Pham, Esq.
Marcus F. Chaney, Esq.
Attorneys for Plaintiff
CREE, INC.

13
14
15
16
17

DEMAND FOR JURY TRIAL

18
19

Plaintiff Cree, Inc. respectfully demands a trial by jury in this action pursuant to Civil L.R.
3-6(a).

20
21
22
23
24
25

DATED: November 18, 2016

JOHNSON & PHAM, LLP


By: __/s/ Christopher D. Johnson_______
Christopher D. Johnson, Esq.
Christopher Q. Pham, Esq.
Marcus F. Chaney, Esq.
Attorneys for Plaintiff
CREE, INC.

26
27
28
- 19 -

COMPLAINT - Case No.: 5:16-cv-06689

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 1 of 9

Exhibit A

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 2 of 9

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 3 of 9

Exhibit B

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 4 of 9

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 5 of 9

Exhibit C

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 6 of 9

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 7 of 9

Exhibit D

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 8 of 9

Case 3:16-cv-06689-LB Document 1-1 Filed 11/18/16 Page 9 of 9

Case 3:16-cv-06689-LB Document 1-2 Filed 11/18/16 Page 1 of 1

JS-CAND 44 (Rev. 07/16)

CIVIL COVER SHEET

The JS-CAND 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 as provided by local rules of court. This form, approved in its original form by the Judicial Conference of the United States in September 1974, is required for the Clerk of
Court to initiate the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

I. (a) PLAINTIFFS

DEFENDANTS

CREE, INC., a North Carolina Corporation,

(b)

MAXBRITE LED LIGHTING TECHNOLOGY, LLC, a California Limited


Liability Company; JOHN ANH LE a/k/a JOHN LEE and a/k/a KIM LE, an
Individual; and DOES 1-10, Inclusive,

County of Residence of First Listed Plaintiff

County of Residence of First Listed Defendant

Durham County

(EXCEPT IN U.S. PLAINTIFF CASES)

(IN U.S. PLAINTIFF CASES ONLY)


IN LAND CONDEMNATION CASES, USE THE LOCATION OF
THE TRACT OF LAND INVOLVED.
Attorneys (If Known)

NOTE:

(c)

Attorneys (Firm Name, Address, and Telephone Number)


Johnson & Pham, LLP
6355 Topanga Canyon Boulevard, Suite 326
Woodland Hills, California 91367
Tel: (818) 888-7540

II. BASIS OF JURISDICTION (Place an X in One Box Only)


1

U.S. Government
Plaintiff

3 Federal Question
(U.S. Government Not a Party)

U.S. Government
Defendant

4 Diversity
(Indicate Citizenship of Parties in Item III)

IV. NATURE OF SUIT


CONTRACT

(For Diversity Cases Only)


PTF

(Place an X in One Box Only)


TORTS

110 Insurance
120 Marine
130 Miller Act
140 Negotiable Instrument
150 Recovery of Overpayment
Of Veterans Benefits
151 Medicare Act
152 Recovery of Defaulted
Student Loans
(Excludes Veterans)
153 Recovery of Overpayment
of Veterans Benefits
160 Stockholders Suits
190 Other Contract
195 Contract Product Liability
196 Franchise

REAL PROPERTY
210 Land Condemnation
220 Foreclosure
230 Rent Lease & Ejectment
240 Torts to Land
245 Tort Product Liability
290 All Other Real Property

2 Removed from
State Court

3 Remanded from
Appellate Court

and One Box for Defendant)


PTF
DEF

DEF

Citizen of This State

1 Incorporated or Principal Place


of Business In This State

Citizen of Another State

2 Incorporated and Principal Place


of Business In Another State

Citizen or Subject of a
Foreign Country

3 Foreign Nation

FORFEITURE/PENALTY

PERSONAL INJURY
PERSONAL INJURY
310 Airplane
365 Personal Injury
315 Airplane Product
Product Liability
Liability
367 Health Care/
320 Assault, Libel &
Pharmaceutical
Slander
Personal Injury
330 Federal Employers
Product Liability
Liability
368 Asbestos Personal
340 Marine
Injury Product
345 Marine Product
Liability
Liability
PERSONAL PROPERTY
350 Motor Vehicle
370 Other Fraud
355 Motor Vehicle
371 Truth in Lending
Product Liability
380 Other Personal
Property Damage
360 Other Personal
Injury
385 Property Damage
362 Personal Injury Product Liability
Medical Malpractice
CIVIL RIGHTS
PRISONER PETITIONS
Habeas Corpus:
440 Other Civil Rights
441 Voting
463 Alien Detainee
442 Employment
510 Motions to Vacate
Sentence
443 Housing/
Accommodations
530 General
535 Death Penalty
445 Amer. w/Disabilities
Employment
Other:
540 Mandamus & Other
446 Amer. w/Disabilities
Other
550 Civil Rights
448 Education
555 Prison Condition
560 Civil Detainee
Conditions of
Confinement

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


1 Original
Proceeding

III. CITIZENSHIP OF PRINCIPAL PARTIES (Place an X in One Box for Plaintiff

BANKRUPTCY

625 Drug Related Seizure


of Property 21 USC 881
690 Other

422 Appeal 28 USC 158


423 Withdrawal
28 USC 157
PROPERTY RIGHTS
820 Copyrights
830 Patent
840 Trademark

LABOR
710 Fair Labor Standards
Act
720 Labor/Management
Relations
740 Railway Labor Act
751 Family and Medical
Leave Act
790 Other Labor Litigation
791 Employee Retirement
Income Security Act

SOCIAL SECURITY
861 HIA (1395ff)
862 Black Lung (923)
863 DIWC/DIWW (405(g))
864 SSID Title XVI
865 RSI (405(g))

FEDERAL TAX SUITS


870 Taxes (U.S. Plaintiff
or Defendant)
871 IRSThird Party
26 USC 7609

IMMIGRATION
462 Naturalization Application
465 Other Immigration
Actions

4 Reinstated or
Reopened

5 Transferred from
Another District

OTHER STATUTES
375 False Claims Act
376 Qui Tam (31 USC
3729(a))
400 State Reapportionment
410 Antitrust
430 Banks and Banking
450 Commerce
460 Deportation
470 Racketeer Influenced and
Corrupt Organizations
480 Consumer Credit
490 Cable/Sat TV
850 Securities/Commodities/
Exchange
890 Other Statutory Actions
891 Agricultural Acts
893 Environmental Matters
895 Freedom of Information
Act
896 Arbitration
899 Administrative Procedure
Act/Review or Appeal of
Agency Decision
950 Constitutionality of
State Statutes

6 Multidistrict
LitigationTransfer

(specify)

8 Multidistrict
LitigationDirect File

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

VI. CAUSE OF ACTION

15 U.S.C. 1114/Lanham Act 32(a); 15 U.S.C. 1125(a)/Lanham Act 43(a); 15 U.S.C. 1125(c); and 35 U.S.C. 271

Brief description of cause:


Trademark Infringement, False Designation of Origin, Dilution, and Design Patent Infringement

DEMAND $
VII. REQUESTED IN
CHECK IF THIS IS A CLASS ACTION
UNDER RULE 23, Fed. R. Civ. P.
COMPLAINT:
VIII. RELATED CASE(S),
IF ANY (See instructions):
JUDGE
IX. DIVISIONAL ASSIGNMENT (Civil Local Rule 3-2)
(Place an X in One Box Only)
SAN FRANCISCO/OAKLAND

DATE: 11/18/2016

Print

CHECK YES only if demanded in complaint:


JURY DEMAND:

Yes

DOCKET NUMBER

SAN JOSE

EUREKA-MCKINLEYVILLE

SIGNATURE OF ATTORNEY OF RECORD: /s/ Christopher D. Johnson

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