Boyce v. Studio Select - Complaint

8/20/2019 Boyce v. Studio Select - Complaint

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UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

DANIEL BOYCE and

CLASSY CRAFT, INC. d/b/a

CLASSY CRAFTS INC.

Plaintiffs,

v.

STUDIO SELECT INC. d/b/a

FRAMEWORKS;

KARLA JORDAN d/b/a

GIFTWORKSPLUS;

DENNIS GUSTAFSON;

WOOD CREATIONS LLC; and

LEGACY IMAGES, LLC

Defendants.

Civ. Action No. 0:16-cv-00359

COMPLAINT

JURY TRIAL DEMANDED

COMPLAINT

Daniel Boyce (“Boyce”) and Classy Craft, Inc. (collectively, “Plaintiffs”), for their

Complaint against Studio Select Inc. (“Studio Select”), Karla Jordan (“Jordan”), Dennis

Gustafson (“Gustafson”), Wood Creations LLC (“Wood Creations”) and Legacy Images,

LLC (“Legacy Images”) (collectively, “Defendants”), allege as follows:

CASE 0:16-cv-00359-ADM-BRT Document 1 Filed 02/12/16 Page 1 of 25


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THE PARTIES

1.

Plaintiff Boyce is a resident of Minnesota with residence at 2304 169th Ave. NE,

Ham Lake, Minnesota, 55304.

2. Plaintiff Classy Craft, Inc. is a corporation organized under the laws of the state of

Minnesota and having a principal place of business at 2304 169th Ave. NE, Ham Lake,

Minnesota, 55304.

3. Boyce and his wife, Joyce Boyce, are the founders and owners of Classy Craft, Inc.

4. Boyce is the Chief Executive Officer of Classy Craft, Inc.

5. Classy Craft, Inc. also does business as “Classy Crafts Inc.,” an assumed name

registered with the state of Minnesota (both will be referred to collectively as “Classy

Crafts”).

6. Upon information and belief, Defendant Studio Select is a corporation organized

under the laws of the state of Wisconsin having a principal place of business at N15

W22218 Watertown Rd. Suite 5, Waukesha, Wisconsin, 53186-1176.

7. Upon information and belief, Studio Select does business in the picture frame

industry as “FrameWorks.”

8. Upon information and belief, “FrameWorks” also does business as “Frame

Works.”

9. Upon information and belief, Defendant Jordan is the founder, owner, president,

and registered agent of Studio Select.



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10. Upon information and belief, Jordan is a resident of Wisconsin with residence at

20325 Independence Dr., Brookfield, Wisconsin, 53045-5325.

11. Upon information and belief, Jordan does business as “GiftWorksPlus.”

12. Upon information and belief, Jordan is the founder, owner, and president of

GiftWorksPlus.

13. Upon information and belief, “GiftWorksPlus” also does business as “GiftWorks

Plus,” “Gift Works Plus,” and “GiftWorksPlus.com.”

14. Upon information and belief, Defendant Gustafson is an “affiliate” of

GiftWorksPlus who offers for sale, exposes for sale, and/or sells GiftWorksPlus products

at events, including trade and craft fairs, throughout the United States.

15. Upon information and belief, an affiliate of GiftWorksPlus is a vendor or

franchisee that earns a commission on each GiftWorksPlus product sold by that affiliate.

16. Upon information and belief, Gustafson is a resident of Wisconsin who lives at

and/or conducts business at 20325 Independence Dr., Brookfield, Wisconsin, 53045-

5325.

17. Upon information and belief, Gustafson has appeared and continues to appear as

an affiliate of GiftWorksPlus at events, including trade and craft fairs, under his own

name.

18. Upon information and belief, Gustafson has appeared and continues to appear at

events as a representative of Defendant Wood Creations.



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19. Upon information and belief, Wood Creations is a corporation organized under the

laws of the state of Wisconsin having a principal place of business at 9828 North

Andover Ct., Mequon, Wisconsin, 53097-3869.

20. Upon information and belief, Adam Herbst is the registered agent of Wood

Creations with a residence at 9828 North Andover Ct., Mequon, Wisconsin, 53097-3869.

21. Upon information and belief, Wood Creations is an affiliate of GiftWorksPlus.

Wood Creations offers for sale, exposes for sale, and/or sells GiftWorksPlus products at

events, including trade and craft fairs, throughout the United States on its own, through

employment of Gustafson, and/or in conjunction with Gustafson.

22. Upon information and belief, Defendant Legacy Images is a corporation organized

under the laws of the state of Indiana having a principal place of business at 19601

Horton Rd., Westfield, Indiana, 46074-9231.

23. Upon information and belief, Legacy Images was founded and is owned and

operated by Paul and Jane Catlin with a residence at 19601 Horton Rd., Westfield,

Indiana, 46074-9231.

24. Upon information and belief, Studio Select and/or Jordan offer for sale, expose for

sale, sell, and/or otherwise provide picture frames to Legacy Images.

25. Upon information and belief, Legacy Images offers for sale, exposes for sale,

and/or sells to consumers picture frames provided to it by GiftWorksPlus and/or Jordan.

26. Upon information and belief, Legacy Images offers for sale, exposes for sale,

and/or sells products, including picture frames, on its website, legacyimages-pc.com, and



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other retail websites, including Amazon.com, Etsy.com, Aftcra.com, MarthaStewart.com,

Pinterest.com, and eBay.com.

JURISDICTION AND VENUE

27. This is an action for (1) patent infringement under the laws of the United States,

particularly 35 U.S.C. §1 et seq.; (2) unfair competition relating to trademarks under the

laws of the United States, particularly §43(a) of the Lanham Act (15 U.S.C. §1125(a));

(3) unfair or deceptive acts or practices under the laws of the state of Minnesota,

particularly the Minnesota Uniform Deceptive Trade Practices Act (Minn. Stat. §325D.43

et seq.); and (4) unfair competition under the Common Law of the state of Minnesota.

28. This Court has jurisdiction over the subject matter of this action pursuant to 28

U.S.C. §§1331, 1332, 1338(a), 1338(b), and 1367(a).


U.S.C. §1331, in that this is a civil action arising under the laws of the United States.

30.

This Court has jurisdiction over the subject matter of this action pursuant to 28

U.S.C. §1338(a), in that this is a civil action arising under an Act of Congress relating to

patents and trademarks, and, as to Plaintiffs’ unfair competition claim, pursuant to 28

U.S.C. §1338(b), in that the claim is joined with a substantial and related claim under the

trademark laws of the United States.


U.S.C. §1332, in that this is a civil action between citizens/corporations of different states

and the matter in controversy exceeds $75,000.



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32. This Court has supplemental jurisdiction over the subject matter of Plaintiff s’ state

law claims pursuant to 28 U.S.C. §1367(a), in that these claims are so related to

Plaintiffs’ federal claims that they form part of the same case or controversy.

33. This Court has personal jurisdiction over Studio Select and Jordan because, on

information and belief, Studio Select and Jordan conduct business in this District and

engage in acts of patent infringement in the United States and in the District of

Minnesota. In addition, upon information and belief, Studio Select and Jordan deliver

their infringing products into the stream of commerce with the expectation that the

products will be purchased by consumers in the District of Minnesota.

34. This Court has personal jurisdiction over Gustafson because, on information and

belief, Gustafson conducts business in this District and engages in acts of patent

infringement in the United States and in the District of Minnesota. In addition, upon

information and belief, Gustafson delivers his infringing products into the stream of

commerce with the expectation that the products will be purchased by consumers in the

District of Minnesota.

35. This Court has personal jurisdiction over Wood Creations because, on information

and belief, Wood Creations conducts business in this District and engages in acts of

patent infringement in the United States and in the District of Minnesota. In addition,

upon information and belief, Wood Creations delivers its infringing products into the

stream of commerce with the expectation that the products will be purchased by

consumers in the District of Minnesota.



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36. This Court has personal jurisdiction over Legacy Images because, upon

information and belief, Legacy Images conducts business in this District and engages in

acts of patent infringement and unfair competition in the United States and the District of

Minnesota and deceptive acts or practices and unfair competition in the state of

Minnesota. In addition, upon information and belief, Legacy Images delivers its

infringing products into the stream of commerce with the expectation that the products

will be purchased by consumers in the District of Minnesota.

37. Venue in the United States District Court for the District of Minnesota is proper

pursuant to 28 U.S.C. §§1391(c) and 1400(b) because, on information and belief,

Defendants have committed acts of infringement, engaged in unfair competition, and

conduct regular and ongoing business in this District and engaged in unfair or deceptive

acts or practices, unfair competition, and conduct regular and ongoing business in the

state of Minnesota.

COUNT I: PATENT INFRINGEMENT – INFRINGEMENT

OF THE ‘577 PATENT

38. Plaintiffs repeat and incorporate by reference herein their allegations contained in

Paragraphs 1 through 37 of this Complaint.

39. On July 3, 2007, U.S. Design Patent No. D545,577 entitled EIGHTEEN-YEAR

PHOTOGRAGH FRAME (“the ‘577 patent”) was duly and legally issued by the United

States Patent and Trademark Office. Exhibit A is a true and correct copy of the ‘577

patent.

40. Boyce is the sole inventor of the ‘577 patent.



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41. The ‘577 patent has never been assigned and the entire right, title, and interest in

and to the ‘577 patent with the right to sue for past, present, and future infringement of

the ‘577 patent is with the inventor, Boyce.

42. Boyce authorizes Classy Crafts to make, offer for sale, expose for sale, sell, and

import products covered by the ‘577 patent.

43. Classy Crafts has been the only party authorized by Boyce to make, offer for sale,

expose for sale, sell, and import products covered by the ‘577 patent.

44. In 2006, Boyce, Classy Crafts, and Boyce’s wife Joyce sent Jordan a cease and

desist letter regarding a copyright issue that is unrelated to the ‘577 patent.

45. Classy Crafts has been offering for sale, exposing for sale, and selling picture

framing products, including picture frames, mat boards, and back mattings, covered by

the ‘577 patent (“the Frame”) continuously since 2006.

46. Classy Crafts marked the Frame or materials sold with the Frame, including the

back matting and protective covering, from 2006 to 2007 indicating that a patent

application was pending that covered the Frame.

47. Classy Crafts has been marking the Frame or materials sold with the Frame,

including the back matting and protective covering, with “Patent Protected D545577” or a

similar variation thereof since 2007.

48. Prior to 2010, Boyce observed at a craft fair a copy of the Classy Crafts’s Frame

being offered for sale and exposed for sale at a retail booth registered to and operated by

Gustafson.



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49. At Gustafson’s retail booth observed by Boyce at the craft fair prior to 2010, upon

information and belief, payment using a credit or debit card for items purchased from

Gustafson’s retail booth was processed through Studio Select.

50. At Gustafson’s retail booth observed by Boyce at the craft fair prior to 2010, upon

information and belief, “FrameWorks” was listed at the top of the order form used by

Gustafson.

51. At Gustafson’s retail booth observed by Boyce at the craft fair prior to 2010 ,

Boyce informed the individuals working at Gustafson’s retail booth that he had a patent

application pending that covered the copy of the Frame that was being offered and

exposed for sale.

52. Between the time Boyce observed a copy of the Frame being offered and exposed

for sale at Gustafson’s retail booth and 2010, Plaintiffs did not observe an offer for sale or

actual sale by Defendants of any picture frames that are covered by the ‘577 patent.

53. Between 2006 and late 2009, at least one member of Boyce’s immediate family

experienced health problems that limited Plaintiffs’ ability to attend events, including

trade and craft fairs, throughout the United States and otherwise devote their time to

marketing, offering for sale, exposing for sale, and selling the Frame.

54. From 2010 until present, Boyce has experienced health problems that limit

Plaintiffs’ ability to attend events, including trade and craft fairs, throughout the United

States and otherwise devote their time to marketing, offering for sale, exposing for sale,

and selling the Frame.



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55. Upon information and belief, Studio Select and/or Jordan, either on their own or

under the FrameWorks and/or GiftWorksPlus name, make, offer for sale, expose for sale,

sell, and/or import a picture frame (“the GiftWorksPlus Frame”) that infringes the ‘577

patent.

56. Upon information and belief, Studio Select and/or Jordan offer for sale, expose for

sale, and sell the GiftWorksPlus Frame to consumers throughout the United States,

including within the District of Minnesota.

57. Upon information and belief, Studio Select and/or Jordan, either on their own or

under the FrameWorks and/or GiftWorksPlus name, offer for sale, sell, or otherwise

provide the GiftWorksPlus Frame to affiliates to offer for sale, expose for sale, and sell to

consumers throughout the United States, including within the District of Minnesota.

Exhibit B is a true and correct copy of a computer printout of the GiftWorksPlus website

showing how to become an affiliate of GiftWorksPlus.

58. Upon information and belief, Studio Select and/or Jordan offer for sale, sell, or

otherwise provide the GiftWorksPlus Frame to Gustafson to offer for sale, expose for

sale, and sell to consumers throughout the United States, including within the District of

Minnesota.

59. Exhibit C is a true and correct photograph of a display at a craft fair in Omaha,

Nebraska, showing the GiftWorksPlus Frame offered for sale by Gustafson.


otherwise provide the GiftWorksPlus Frame to Wood Creations to offer for sale, expose



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for sale, and sell to consumers throughout the United States, including within the District

of Minnesota.

61. Upon information and belief, Wood Creations offers for sale, exposes for sale,

sells, and has sold GiftWorksPlus products, including the GiftWorksPlus Frame, at

events, including trade and craft fairs, throughout the United States, including within the

District of Minnesota.

62. Upon information and belief, Gustafson offers for sale, exposes for sale, sells, and

has sold GiftWorksPlus products, including the GiftWorksPlus Frame, while employed by

or working with Wood Creations at events, including trade and craft fairs, throughout the

United States, including within the District of Minnesota.

63. Exhibit D is a true and correct photograph of the GiftWorksPlus Frame ordered

from Gustafson and Wood Creations at a craft fair in Milwaukee, Wisconsin, and

subsequently mailed by GiftWorksPlus to a consumer in Minnesota.

64. Upon information and belief, “FrameWorks” was listed at the top of the order form

used to order the GiftWorksPlus Frame at the craft fair in Milwaukee, Wisconsin.

65. Upon information and belief, Adam Herbst, the registered agent of Wood

Creations, was the salesperson from whom the GiftWorksPlus Frame was order at the

craft fair in Milwaukee, Wisconsin.

66. At the craft fair in Milwaukee, Wisconsin, Adam Herbst gave his email address,

[email protected], and the email address of Gustafson,



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[email protected], to consumers to contact for future orders of the

GiftWorksPlus Frame.

67. Upon information and belief, Gustafson offers for sale, exposes for sale, sells, and

has sold GiftWorksPlus products, including the GiftWorksPlus Frame, under his own

name at events, including trade and craft fairs, throughout the United States, including

within the District of Minnesota.

68. Upon information and belief, GiftWorksPlus and/or an affiliate of GiftWorksPlus

sold GiftWorksPlus products at the Autumn Festival in Shakopee, Minnesota, from

November 12, 2015, to November 15, 2015.


otherwise provide the GiftWorksPlus Frame to Defendant Legacy Images, and/or Legacy

Images makes or hires another to make a picture frame that infringes the ‘577 patent.

70. Upon information and belief, Legacy Images offers for sale, exposes for sale, and

sells a picture frame that infringes the ‘577 patent (“the Legacy Images Frame”) to

consumers throughout the United States, including the District of Minnesota. Exhibit E is

a true and correct photograph of the Legacy Images Frame ordered from Legacy Images

in December 2015 and mailed by Legacy Images to a consumer in Minnesota.

71. Upon information and belief, at least some of the Legacy Images Frames offered

for sale, exposed for sale, and sold by Legacy Images included a back matting that was

identical to the back matting in the GiftWorksPlus Frame. Exhibit F is a true and correct

copy of a computer printout of the Etsy.com website showing the Legacy Images profile



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page with a picture of Legacy Images’s booth with the Legacy Images Frame and back

matting. Exhibit G is a true and correct photograph of a display at a craft fair in Omaha,

Nebraska, showing the GiftWorksPlus Frame offered for sale by Gustafson with the

GiftWorksPlus Frame having an identical back matting as the Legacy Images Frame.

72. Upon information and belief, Legacy Images offered for sale, exposed for sale, and

sold the Legacy Images Frame to consumers at events, including trade and craft fairs,

throughout the United States.

73. Upon information and belief, Legacy Images offers for sale, exposes for sale, sells,

and has sold the Legacy Images Frame on its website, legacyimages-pc.com, and on other

retail websites, including Amazon.com, Etsy.com, Aftcra.com, MarthaStewart.com,

Pinterest.com, and eBay.com. Exhibit H is a true and correct copy of a computer printout

of the Legacy Images website showing the Legacy Images Frame for sale.

74. The Frame continuously offered for sale, exposed for sale, and sold by Classy

Crafts since before 2010 has a back matting that is marked indicating that the Frame is

covered by the ‘577 patent.

75. Upon information and belief, around 2010, Legacy Images began offering for sale,

exposing for sale, and selling at least some of the Legacy Images Frames with a back

matting that is similar to the back matting used with the Frame offered for sale, exposed

for sale, and sold by Classy Crafts. See Exhibit E for a true and correct photograph of the

Legacy Images Frame with a back matting having quotes similar to the back matting of

the Frame.



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76. Upon information and belief, Legacy Images was aware around 2010 or prior to

2010 that the Frame offered for sale, exposed for sale, and sold by Classy Crafts is


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

the ‘577 patent by making, importing, offering for sale, exposing for sale, and/or selling

in the United States, without Boyce’s authorization, the GiftWorksPlus Frame and the

Legacy Images Frame, which are substantially the same as the design illustrated and

described in the ‘577 patent and the Frame offered for sale, exposed for sale, and sold by

Classy Crafts.

78. Upon information and belief, the resemblance between Classy Crafts’s Frame and

the GiftWorksPlus Frame and Legacy Images Frame made, imported, offered for sale,

exposed for sale, and/or sold by Defendants is such as to permit an ordinary observer to

purchase the GiftWorksPlus Frame and/or the Legacy Images Frame supposing it to be

the Frame offered for sale, exposed for sale, and sold by Classy Crafts.

79. On information and belief, Defendants have been and are making, offering for

sale, exposing for sale, selling, and/or importing, without license or authority from Boyce,

in this District and elsewhere in the United States, products that embody the invention

illustrated and described in the ‘577 patent in violation of 35 U.S.C. §271.

80. Upon information and belief, Defendants will continue to infringe the ‘577 patent

unless enjoined by this Court.



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81. Upon information and belief, Plaintiffs have been damaged by Defendants’

infringement of the ‘577 patent, and will continue to be damaged by that infringement

unless enjoined by this Court.

82. Upon information and belief, Studio Select, Jordan, Gustafson, and Wood

Creations have actual k nowledge of the full contents of the ‘577 patent, and their prior

and continuing infringement of the ‘577 patent was and is willful and deliberate because

Classy Crafts has been and continues to mark the Frame indicating that the Frame is


83. Upon information and belief, Legacy Images has actual knowledge of the full

contents of the ‘577 patent, and its prior and continuing infringement of the ‘577 patent

was and is willful and deliberate, because, around 2010 or prior to 2010, Legacy Images

viewed the back matting of the Frame that indicates the Frame is covered by the ‘577

patent.

COUNT II: UNFAIR COMPETITION RELATING TO TRADEMARKS UNDER

SECTION 43(a) OF THE LANHAM ACT BY LEGACY IMAGES



85. Count II arises under §43(a) of the Lanham Act, codified as 15 U.S.C. §1125(a).

86.

Classy Crafts has been marketing, offering for sale, exposing for sale, and selling

picture frames (consumer goods) in interstate commerce under the “Birth to Eighteen”

trademark.



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87. Classy Crafts has used the “Birth to Eighteen” trademark in interstate commerce in

association with the offer for sale, exposure for sale, and sale of picture frames

continuously since 2006. Exhibit I is a true and correct copy of a computer printout of the

Internet Archive Wayback Machine website showing use of the “Birth to Eighteen”

trademark by Classy Crafts on the website photonameframes.com on August 28, 2006.

88. Upon information and belief, consumers associate the “Birth to Eighteen”

trademark with Classy Crafts and the picture frames sold by Classy Crafts.

89. Classy Crafts uses the “Birth to Eighteen” trademark when offering for sale,

exposing for sale, and selling picture frames on websites owned and operated by Classy

Crafts and via retail website Amazon.com.

90. Upon information and belief, Legacy Images currently markets, offers for sale,

exposes for sale, and sells picture frames under the “Birth-18” trademark on the Internet

without the authorization of Classy Crafts. Exhibit J is a true and correct copy of a

computer printout of the Aftcra.com website showing use of the “Birth -18” trademark by

Legacy Images.


exposes for sale, and sells picture frames under the “Birth thru 18” trademark on the

Internet without the authorization of Classy Crafts. Exhibit K is a true and correct copy

of a computer printout of the Etsy.com website showing use o f the “Birth thru 18”

trademark by Legacy Images.



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exposes for sale, and sells picture frames under the “1-18” trademark on the Internet

without the authorization of Classy Crafts. See Exhibit H for a true and correct copy of a

computer printout of the Legacy Images website showing use of the “1-18” trademark by

Legacy Images.

93. Upon information and belief, the “Birth-18” trademark, the “Birth thru 18”

trademark, and the “1-18” trademark (collectively, “the Legacy Images Marks”) are

confusingly similar to and infringe Classy Crafts’s “Birth to Eighteen” trademark.

94. Upon information and belief, the use and display by Legacy Images of the Legacy

Images Marks is likely to cause confusion, to cause mistake, or to deceive those viewing

and purchasing Legacy Images products, in that those viewing and purchasing Legacy

Images products are likely to be deceived into believing, falsely, that Classy Crafts is

offering for sale or authorizing the offer for sale of the Legacy Images products, or that

Classy Crafts is otherwise the “origin” of the Legacy Images products as that term is used

in the Trademark Act.

95. Upon information and belief, the use and display by Legacy Images of the Legacy

Images Marks is likely to cause confusion, to cause mistake, or to deceive those viewing

and purchasing Legacy Images products, in that those viewing and purchasing the Legacy

Images products are likely to be deceived into believing, falsely, that Classy Crafts

sponsored or approved Legacy Images products by licensing the “Birth to Eighteen”

trademark to Legacy Images.



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96. Upon information and belief, Legacy Images’s use and display of the Legacy

Images Marks in association with its products would have inured to the benefit of Classy

Crafts if Legacy Images had legitimately acquired a license to use the “Birth to Eighteen”

trademark from Classy Crafts in that Classy Crafts would have received revenue from

such a license.


Images Marks in association with its products causes consumers to mistakenly purchase

Legacy Images products under the belief that those products are associated with Classy

Crafts’s “Birth to Eighteen” trademarked products, resulting in a denial of revenue to

Classy Crafts.

98. Upon information and belief, Legacy Images’s unauthorized use and display of the

Legacy Images Marks that are confusingly similar to the “Birth to Eighteen” trademark

enable Legacy Images to offer for sale and sell products at a lower cost than Classy

Crafts, resulting in a denial of revenue to Classy Crafts.

99. Upon information and belief, because Classy Crafts has been denied this revenue,

it has been damaged by Legacy Images’s use and display of trademarks that are

confusingly similar to the “Birth to Eighteen” trademark .

100. Unless enjoined by this Court, Defendant Legacy Images’s unfair competition

activities as described above will continue unabated and will continue to cause irreparable

harm to Classy Crafts.



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COUNT III: VIOLATION OF THE MINNESOTA UNIFORM DECEPTIVE

TRADE PRACTICES ACT BY LEGACY IMAGES



102. Count III arises under Minn. Stat. §325.43 et seq., referred to as the Minnesota

Uniform Deceptive Trade Practices Act.

103. Upon information and belief, Legacy Images used and knowingly directly

benefited from the use and display of the Legacy Images Marks that are confusingly

similar to Classy Crafts’s “Birth to Eighteen” trademark in connection with picture

frames by marketing, offering for sale, exposing for sale, and selling products under the

Legacy Images Marks.


Images Marks that are confusingly similar to Classy Crafts’s “Birth to Eighteen”

trademark occurred during the conduct of trade or commerce, from which Legacy Images

derived an economic benefit.



trademark constitute unfair or deceptive acts or practices within the meaning of Minn.

Stat. §325D.43 et seq.





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trademark cause likelihood of confusion or of misunderstanding as to affiliation,

connection, or association with or certification by Classy Crafts.

107. Upon information and belief, as a direct and proximate result of Legacy Images ’s

unfair or deceptive acts or practices, Classy Crafts have suffered a pecuniary loss,

including the loss of revenue associated with sales of Legacy Images products.

108. As such, upon information and belief, Classy Crafts have been damaged and are

likely to be further damaged by unfair or deceptive acts or practices by Legacy Images

within the meaning of Minn. Stat. §325D.44.

109. Unless enjoined by this Court, Legacy Images’s unfair or deceptive acts or

practices as described above will continue unabated and will continue to cause irreparable

harm to Classy Crafts.

COUNT IV: VIOLATION OF MINNESOTA COMMON LAW UNFAIR

COMPEITITION BY LEGACY IMAGES

110.

Plaintiffs repeat and incorporate by reference herein their allegations contained in


111. Count IV arises under the Common Law of Minnesota.

112. Classy Crafts did not license or otherwise authorize Legacy Images to use or

display the “Birth to Eighteen” trademark in connection with Legacy Images products.

113.

Upon information and belief, Legacy Images used and knowingly directly

benefited from the use and display of the Legacy Images Marks that are confusingly

similar to Classy Crafts’s “Birth to Eighteen” trademark in connection with the Legacy



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Images products by offering for sale, exposing for sale, and selling products under the

Legacy Images Marks.



trademark are open and public and are for the commercial benefit of Legacy Images.

115. Upon information and belief, use of the Legacy Images Marks that are confusingly

similar to Classy Crafts’s “Birth to Eighteen” tr ademark in the manner attributable to

Legacy Images is likely to cause confusion, to cause mistake, or to deceive consumers

viewing and purchasing Legacy Images products into believing that the products those

consumers are receiving are being provided with the authorization of Classy Crafts.

116. Upon information and belief, Legacy Images’s acts were willful and knowing.

117.

Classy Crafts has been damaged by Legacy Images’s use and display of the Legacy


trademark.

118. Unless enjoined by this Court, Legacy Images’s use and display of the Legacy

Images Marks as described above will continue unabated and will continue to cause

irreparable harm to Classy Crafts.



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PRAYER FOR RELIEF

WHEREFORE, Plaintiffs, Daniel Boyce and Classy Craft, Inc., pray for the

following relief:

a. This Court enter judgment against Defendants and in favor of Plaintiffs on all

applicable counts;

b. That Defendants and their officers, agents, servants, employees, attorneys, and all

persons in active concert or participation with them are found to have infringed the valid

U.S. Design Patent No. D545,577, and be enjoined, preliminarily and permanently, from

making, using, selling, offering for sale, exposing for sale, and importing into the United

States products which infringe U.S. Design Patent No. D545,577;

c. That Defendants are found to have acted willfully and for profit in infringing U.S.

Design Patent No. D545,577;

d. That Plaintiffs are compensated by Defendants for the damages caused by their

infringement of U.S. Design Patent No. D545,577 under 35 U.S.C. §§284 or 289, in an

amount to be determined by an accounting, but not less than a reasonable royalty,

Defendants’ profits, or $250 per infringing product, whichever is greatest;

e. In the event that damages under 35 U.S.C. §284 are awarded, that the award of

damages for infringement of U.S. Design Patent No. D545,577 are trebled as provided for

by 35 U.S.C. §284 for willful infringement by Defendants;

f. That Plaintiffs are awarded their costs and attorneys’ fees incurred in prosecuting

this exceptional case, as provided for by 35 U.S.C. §285, plus interest;



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g. That Legacy Images is found to have engaged in unfair competition detrimental to

Plaintiffs in violation of §43(a) of the Lanham Act (15 U.S.C. §1125(a)) because of the

unauthorized use and display of trademarks by Legacy Images that are confusingly similar

to Plaintiffs’ “Birth to Eighteen” trademark ;

h. That Legacy Images is found to have engaged in unfair or deceptive acts or

practices in violation of Minn. Stat. §315D.44 because of the unauthorized use and

display by Legacy Images of trademarks that are confusingly similar to Plaintiffs’ “Birth

to Eighteen” trademark ;

i. That Legacy Images is found to have engaged in unfair competition detrimental to

Plaintiffs in violation of Minnesota common law because of the unauthorized use and

display by Legacy Images of trademarks that are confusingly similar to Plaintiffs’ “Birth

to Eighteen”;

j. That Legacy Images is found to have acted willfully and for profit in engaging in

unfair competition in violation of §43(a) of the Lanham Act and Minnesota common law

and engaging in unfair or deceptive acts or practices in violation of Minn. Stat. §315D.44;

k. That Plaintiffs are awarded Legacy Images’s profits and the damages sustained by

Plaintiffs because of Legacy Images’s acts of unfair competition under §43(a) of the

Lanham Act;

l. That Plaintiffs are awarded treble, punitive, or otherwise enhanced damages, as

available, for Legacy Images’s willful engagement in unfair competition, in accordance

with §35 of the Lanham Act (15 U.S.C. §1117);



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m. That Legacy Images, its officers, agents, servants, employees, attorneys, and all

persons in active concert or participation with it are preliminarily and permanently

enjoined, in accordance with §34 of the Lanham Act (15 U.S.C. §1116) and Minn. Stat.

§325D.45, from:

i. Further use and display of trademarks that are confusingly similar to

Plaintiffs’ “Birth to Eighteen” trademark or any other mark, name, trade dress, or

trade practice that is likely to cause confusion with the “Birth to Eighteen”

trademark, in connection with the advertising, promotion, sale, or distribution of

its business, goods, and services;

ii. Doing any other act or thing likely to induce the mistaken belief that Legacy

Images’s goods, services, or commercial activities are in any way affiliated,

connected, or associate with Plaintiffs or their products and services;

iii. Doing any other act or thing likely to cause confusion or induce the

mistaken belief that Legacy Images’s goods, services, or commercial activities are

in any way originated from, sponsored by, or approved by Plaintiffs or their

products and services; and

iv. Unfairly competing with Plaintiffs in any manner whatsoever;

n. That Plaintiffs are awarded their costs of this suit and attorney fees, to the extent

not awarded above, in accordance with §35 of the Lanham Act and Minn. Stat. §325D.45;

and

o. That Plaintiffs are awarded such other relief as the Court deems just and proper.



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JURY DEMAND

Plaintiffs demand a jury trial on all issues so triable.

Dated: February 12, 2016 By: s/Austen ZuegeAusten Zuege (No. 330,267)

Nicholas Peterka (No. 396,653)

KINNEY & LANGE, P.A.

The Kinney & Lange Building

312 South Third Street

Minneapolis, MN 55415-1002

Email: [email protected]

[email protected]

[email protected]

Telephone: (612) 339-1863Facsimile: (612) 339-6580

ATTORNEYS FOR PLAINTIFFS

DANIEL BOYCE AND CLASSY

CRAFT, INC.



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EXHIBIT A

CASE 0:16-cv-00359-ADM-BRT Document 1-1 Filed 02/12/16 Page 1 of 4


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EXHIBIT B



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EXHIBIT C



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EXHIBIT D



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EXHIBIT E



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EXHIBIT F



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EXHIBIT G



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EXHIBIT H



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EXHIBIT I



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EXHIBIT J



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EXHIBIT K



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S 44 (Rev. 12/12) CIVIL COVER SHEET e c v cover s eet an t e n ormat on conta ne ere n ne t er rep ace nor supp ement t e ng an serv ce o p ea ngs or ot er papers as requ re y aw, excep

rovided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is required for the use of the Clerk of Court for theurpose of initiating the civil docket sheet. (SEE INSTRUCTIONS ON NEXT PAGE OF THIS FORM.)

. (a) PLAINTIFFS DEFENDANTS oyce, an e .; assy ra t, nc. tu o e ect nc.; or an, ar a; usta son, enn s; oo reat ons ;

Legacy Images, LLC

(b) County of Residence of First Listed Plaintiff Anoka County, MN County of Residence of First Listed Defendant(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)

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

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

312 Sourth Third StreetMinneapolis, MN 55415(612) 339-1863

n nown

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

1 U.S. Government 3 Federal Question PTF DEF PTF Plaintiff (U.S. Government Not a Party) Citizen of This State 1 1 Incorporated or Principal Place 4

of Business In This State

2 U.S. Government 4 Diversity Citizen of Another State 2 2 Incorporated and Principal Place 5 Defendant (Indicate Citizenship of Parties in Item III) of Business In Another State

Citizen or Subject of a 3 3 Foreign Nation 6

Foreign Country

V. NATURE OF SUIT (Place an “X” in One Box Only)

CONTRACT TORTS FORFEITURE/PENALTY BANKRUPTCY OTHER STATUTES

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

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

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

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

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

& Enforcement of Judgment Slander Personal Injury 820 Copyrights 460 Deportation

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

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

Student Loans 340 Marine Injury Product 480 Consumer Credit

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

153 Recovery of Overpayment Liability PERSONAL PROPERTY 710 Fair Labor Standards 861 HIA (1395ff) 850 Securities/Commodof Veteran’s Benefits 350 Motor Vehicle 370 Other Fraud Act 862 Black Lung (923) Exchange

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

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

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

196 Franchise Injury 385 Property Damage 751 Family and Medical 895 Freedom of Informa362 Personal Injury - Product Liability Leave Act Act

Medical Malpractice 790 Other Labor Litigation 896 ArbitrationREAL PROPERTY CIVIL RIGHTS PRISONER PETITIONS 791 Employee Retirement FEDERAL TAX SUITS 899 Administrative Proc

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

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

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

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

245 Tort Product Liability Accommodations 530 General

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

Employment Other: 462 Naturalization Application

446 Amer. w/Disabilities 540 Mandamus & Other 465 Other Immigration

Other 550 Civil Rights Actions

448 Education 555 Prison Condition

560 Civil Detainee -

Conditions of

Confinement

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

Another District(specify)

r g na

Proceeding

emove rom

State Court

eman e rom

Appellate Court

e nstate or

Reopened

u t str ct

Litigation

VI. CAUSE OF

ACTION

Cite the U.S. Civil Statute under which you are filing (Do not cite j uri sdictional statutes unless diversity ): 35 U.S.C. §271; 15 U.S.C. §1125

Brief description of cause:

Patent Infringement; Unfair Competition; Minnesota Uniform Deceptive Trade Practices Act; Common Law Trademark Infringement

VII. REQUESTED IN

COMPLAINT: CHECK IF THIS IS A CLASS ACTION

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

DEMAND $ To Be Determined CHECK YES only if demanded in complaint

JURY DEMAND: Yes No

VIII. RELATED CASE(S)

IF ANY (See instructions): JUDGE DOCKET NUMBER

DATE SIGNATURE OF ATTORNEY OF RECORD

02/12/2016 s/Austen Zuege

FOR OFFICE USE ONLY

RECEIPT # AMOUNT APPLYING IFP JUDGE MAG. JUDGE



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JS 44 Reverse (Rev. 12/12)

INSTRUCTIONS FOR ATTORNEYS COMPLETING CIVIL COVER SHEET FORM JS 44

Authority For Civil Cover Sheet

The JS 44 civil cover sheet and the information contained herein neither replaces nor supplements the filings and service of pleading or other papers asrequired by law, except as provided by local rules of court. This form, approved by the Judicial Conference of the United States in September 1974, is

required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. Consequently, a civil cover sheet is submitted to the Clerk oCourt for each civil complaint filed. The attorney filing a case should complete the form as follows:

I. (a) Plaintiffs-Defendants. Enter names (last, first, middle initial) of plaintiff and defendant. If the plaintiff or defendant is a government agency, only the full name or standard abbreviations. If the plaintiff or defendant is an official within a government agency, identify first the agency an

then the official, giving both name and title.(b) County of Residence. For each civil case filed, except U.S. plaintiff cases, enter the name of the county where the first listed plaintiff resides a

the time of filing. In U.S. plaintiff cases, enter the name of the county in which the first listed defendant resides at the time of filing. (NOTE: Iland condemnation cases, the county of residence of the "defendant" is the location of the tract of land involved.)

(c) Attorneys. Enter the firm name, address, telephone number, and attorney of record. If there are several attorneys, list them on an attachment,noting in this section "(see attachment)".

II. Jurisdiction. The basis of jurisdiction is set forth under Rule 8(a), F.R.Cv.P., which requires that jurisdictions be shown in pleadings. Place an

in one of the boxes. If there is more than one basis of jurisdiction, precedence is given in the order shown below.United States plaintiff. (1) Jurisdiction based on 28 U.S.C. 1345 and 1348. Suits by agencies and officers of the United States are included herUnited States defendant. (2) When the plaintiff is suing the United States, its officers or agencies, place an "X" in this box.Federal question. (3) This refers to suits under 28 U.S.C. 1331, where jurisdiction arises under the Constitution of the United States, an amendm

to the Constitution, an act of Congress or a treaty of the United States. In cases where the U.S. is a party, the U.S. plaintiff or defendant code ta

precedence, and box 1 or 2 should be marked.Diversity of citizenship. (4) This refers to suits under 28 U.S.C. 1332, where parties are citizens of different states. When Box 4 is checked, thcitizenship of the different parties must be checked. (See Section III below; NOTE: federal question actions take precedence over diversity

cases.)

III. Residence (citizenship) of Principal Parties. This section of the JS 44 is to be completed if diversity of citizenship was indicated above. Marthis section for each principal party.

IV. Nature of Suit. Place an "X" in the appropriate box. If the nature of suit cannot be determined, be sure the cause of action, in Section VI belowsufficient to enable the deputy clerk or the statistical clerk(s) in the Administrative Office to determine the nature of suit. If the cause fits morethan one nature of suit, select the most definitive.

V. Origin. Place an "X" in one of the six boxes.Original Proceedings. (1) Cases which originate in the United States district courts.Removed from State Court. (2) Proceedings initiated in state courts may be removed to the district courts under Title 28 U.S.C., Section 1441.

When the petition for removal is granted, check this box.Remanded from Appellate Court. (3) Check this box for cases remanded to the district court for further action. Use the date of remand as the fdate.Reinstated or Reopened. (4) Check this box for cases reinstated or reopened in the district court. Use the reopening date as the filing date.Transferred from Another District. (5) For cases transferred under Title 28 U.S.C. Section 1404(a). Do not use this for within district transfers

multidistrict litigation transfers.Multidistrict Litigation. (6) Check this box when a multidistrict case is transferred into the district under authority of Title 28 U.S.C. Section 14When this box is checked, do not check (5) above.

VI. Cause of Action. Report the civil statute directly related to the cause of action and give a brief description of the cause. Do not cite jurisdictistatutes unless diversity. Example: U.S. Civil Statute: 47 USC 553 Brief Description: Unauthorized reception of cable service

VII. Requested in Complaint. Class Action. Place an "X" in this box if you are filing a class action under Rule 23, F.R.Cv.P.

Demand. In this space enter the actual dollar amount being demanded or indicate other demand, such as a preliminary injunction.Jury Demand. Check the appropriate box to indicate whether or not a jury is being demanded.

VIII. Related Cases. This section of the JS 44 is used to reference related pending cases, if any. If there are related pending cases, insert the docket

numbers and the corresponding judge names for such cases.

Date and Attorney Signature. Date and sign the civil cover sheet.


Boyce v. Studio Select - Complaint

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