MacNeil Automotive Products v. Kramer America et. al.

8/4/2019 MacNeil Automotive Products v. Kramer America et. al.

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS

EASTERN DIVISION

MACNEIL AUTOMOTIVE PRODUCTS )

LIMITED, d/b/a WEATHERTECH, )an Illinois Corporation, )

)

Plaintiff, ) No.

)

v. )

)

KRAMER AMERICA, INC., a Florida )

Corporation; VANDAPAC COMPANY )

LIMITED, a Thailand Company; and )

POLGLOBE, L.L.C., a Michigan limited )

Liability company, d/b/a FAMILY CAR )GEAR, )

)

Defendants. ) JURY TRIAL DEMANDED

COMPLAINT

Plaintiff, MacNeil Automotive Products Limited, by its undersigned attorneys, for its

Complaint against defendants Kramer America, Inc., Polglobe, LLC, d/b/a Family Car Gear, and

Vandapac Company Limited (collectively, Defendants) alleges as follows:

NATURE OF THE ACTION

1. This is an action against Defendants for patent infringement, unfair competition,unjust enrichment, federal unfair competition, copyright infringement, federal unfair

competition, the Illinois Deceptive Trade Practices Act, and the Illinois Consumer Fraud and

Deceptive Business Practices Act.

PARTIES

2. Plaintiff MacNeil Automotive Products Limited (MacNeil) is a corporationorganized under the laws of the State of Illinois with a principal place of business located at 1


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MacNeil Court, Bolingbrook, Illinois 60440. MacNeil is a manufacturer and supplier of

automotive accessories including, among other things, vehicle floor trays and mats.

3. Upon information and belief, Defendant Kramer America, Inc. (Kramer) is acorporation organized under the laws of Florida with its principal place of business located at

3763 Mercy Star Ct., Orlando, Florida. Kramer designs, develops, has manufactured, offers for

sale, imports and/or sells nationwide, including engaging in substantial business in this judicial

district, Max Liner products, including MAXFLOORMAT vehicle floor trays (Accused Floor

Trays) and the devices which affix certain of the Accused Floor Trays to the vehicle foot wells

(collectively the Infringing Products).

4. Upon information and belief, Defendant Vandapac Company Limited(Vandapac) is a foreign corporation organized and existing under the laws of Thailand, with its

principal place of business located at 93 Moo 15 Kingkaew Rd, Samut Prakarn, 10540, Thailand.

Vandapac designs, develops, manufactures and exports products, including the Infringing

Products, to its exclusive United States distributor Kramer, where they are then sold nationwide,

including substantial sales into this judicial district.

5. Upon information and belief, Defendant Polglobe, LLC d/b/a Family Car Gear(Polglobe), is a limited liability company organized under the laws of Michigan with a

registered office at 5026 Gardner E, Sterling Heights, Michigan 48310. Polglobe is a reseller

and distributor of automotive accessories, including WeatherTech products and

MAXFLOORMAT floor trays and, upon information and belief, certain infringing carpet

affixation devices. Polglobe markets and sells the Infringing Products nationwide, including

substantial sales into this judicial district.


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JURISDICTION AND VENUE

6. This Court has subject matter jurisdiction over this matter pursuant to 28 U.S.C. 1331 and 1338 because MacNeils claims arise under the laws of the United States. This

Court has supplemental jurisdiction over MacNeils state law claims pursuant to 28 U.S.C.

1367. This Court has personal jurisdiction over Kramer because it transacts business in this

district by offering to sell and selling products, including Infringing Products, to Illinois

customers and having conducted numerous sales to Illinois consumers of said products and

Infringing Products. This Court has personal jurisdiction over Polglobe because it transacts

business in this district by offering to sell and selling products, including Infringing Products, to

Illinois customers and having conducted numerous sales to Illinois consumers of said products

and Infringing Products. This Court has personal jurisdiction over Vandapac because it, through

its established United States exclusive distributor Kramer, has deliberately and intentionally

caused products, including Infringing Products, to be placed into the stream of commerce via its

established distribution channel, knowing that said products and Infringing Products would be

offered for sale and were in fact sold in the United States and, specifically, this judicial district.

7. Venue is proper in this judicial district pursuant to 28 U.S.C. 1391(c) and1400(b) because Defendants are subject to personal jurisdiction in, do business in and have

committed acts of infringement in this judicial district.

FACTUAL BACKGROUND

8. MacNeil is the exclusive licensee of three U.S. Patents: United States Patent No.7,401,837 (the 837 patent), attached hereto as Exhibit 1, duly and legally issued on July 22,

2008; United States Patent No. 7,686,370 (the 370 patent), attached hereto as Exhibit 2, duly

and legally issued on March 30, 2010; and United States Patent No. 6,735,819 (the 819


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patent), attached hereto as Exhibit 3, duly and legally issued on May 18, 2004. These patents

collectively shall be referred to herein as the Subject Patents.

9. As the exclusive licensee of all right, title and interest in the Subject Patents,MacNeil has standing to sue for infringement of the Subject Patents and may seek monetary

damages, injunctions and other relief pursuant to 35 U.S.C. 271 for past, current and future

infringement of the Subject Patents. The exclusive license is attached hereto as Exhibit 4.

10. Since 2005, MacNeil has manufactured, distributed, advertised and sold toconsumers throughout the United States its vehicle floor trays which are digitally measured for

precise fit for certain makes and models of vehicles. MacNeil markets these products

extensively under its mark WEATHERTECH.

11. MacNeils floor trays were and are a revolutionary product in the vehicle floortray industry. MacNeils design and inventions with regard to said floor trays were so successful

that MacNeil was able to obtain a significant market share in the floor tray product market very

shortly after the products introduction to the marketplace.

12. In 2002, MacNeil invented a mat and tray affixation device designed to affix amat or tray to the carpeting of a vehicle footwell. MacNeil supplies such affixation devices with

select mats and trays, including trays which are covered by certain Subject Patents.

13. MacNeil does not make just a one-size-fits-all vehicle floor tray, but insteadproduces a wide range of vehicle floor trays which are custom fit particular vehicles by make,

model and year. In addition to incorporating several patented inventions, MacNeils floor trays

each incorporate a product configuration or trade dress which is not dictated by functional

considerations, which is repeated from one make/model/vehicle to the next, and which have

come to be recognized by the public as an indication that the vehicle floor tray in question is a


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MacNeil floor tray. The unique and distinctive product configuration shall be referred to herein

as MacNeils Trade Dress. MacNeils trade dress is not functional.

14. Among these nonfunctional features, which make up MacNeils trade dress, are afore-and-aft oriented parallel array of ribs that have a constant, predetermined width and a

constant spacing apart from each other. The fore-and-aft ribs are all straight.

15. The nonfunctional features further include a recessed rectangular badge receptaclelocated near the aft, outboard corner of the floor tray. The rectangular badge receptacle is

elongate in a fore-and-aft direction.

16.

The nonfunctional features further include a printout badge which is applied by

adhesive inside of the badge receptacle. The badge is coated with glossy plastic and has a profile

which is rounded toward its edges. The background of the badge is black. The trademark on the

badge makes prominent use of a bright silver color.

17. The nonfunctional features further include a so-called haircell surface textureon the upper surface of the part. All these nonfunctional features constitute MacNeils trade

dress.

18. Long prior to the acts of the Defendants described in this Complaint, MacNeil hasextensively advertised and promoted its trade dress. As a result of the care and skill exercised by

MacNeil and the quality of its superior floor tray, and because of the extensive advertising,

promotion, sales and public acceptance of MacNeils trade dress, MacNeils floor trays have

acquired a fine and valuable reputation. The public recognizes MacNeils trade dress and that it

identifies MacNeils products exclusively. MacNeils floor trays have acquired an outstanding

celebrity and symbolize the fine reputation and goodwill that MacNeil has created by distributing


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and selling products of high quality and by fair and honorable dealing with the trade and public

in the distribution and sale of its floor tray products.

19. MacNeils products are known for their superior quality of material andMacNeils trade dress is recognized by the public as a symbol of those superior qualities.

20. The identifying appearance of MacNeils trade dress constitutes protectableproperty of MacNeil.

21. MacNeil has spent and continues to spend substantial sums of money, time andeffort to develop, advertise and promote its trade dress and related products through, in part,

distribution of catalogs and brochures, advertising campaigns, and national and international

trade shows. MacNeil recently made an expensive media buy in support of the Chicago

Blackhawks 2010 Stanley Cup Championship.

MacNeils Relationship With Kramers Principals

22. There are two listed principals/officers of Kramer, Messrs. Salvador Lairet andCamacho Esdras. MacNeil has a long history with Mr. Lairet and he was formerly MacNeils de

facto exclusive distributor for MacNeil products in Venezuela.

23. In and around 1997, Mr. Lairet was the principal of a Venezuelan company calledAccesorios Kramer, C.A. Based on several discussions between MacNeil and Mr. Lairet,

MacNeil eventually allowed Accesorios Kramer to distribute MacNeil products in Venezuela.

On or about October 1997, Mr. Lairet placed his first orders for MacNeil products.

24. MacNeil supports distributors of its products in many ways. For example,MacNeil provides confidential pricing points and information to its distributors, MacNeil

provides marketing and advertising support to its distributors, MacNeil provides confidential

sales leads and information to its distributors, MacNeil supports its distributors with discounts


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and special price-points on MacNeil products, MacNeil supports its distributors with its intimate

knowledge of the relevant marketplace and proper order structures, and MacNeil provides

ultimate retail consumer support through its various warranties and other programs. Specific to

Venezuela and South America, MacNeil also traveled to South America to design parts for

vehicles that were specific to the Venezuelan and South American market.

25. These types of support were provided to Lairet and Accesorios Kramer as adistributor of MacNeils products in Venezuela. Further, MacNeil provided additional support to

Accesorios Kramer by treating Accesorios Kramer as MacNeils de facto exclusive distributor in

Venezuela by referring all other companies seeking to distribute MacNeils product in Venezuela

directly to Accesorios Kramer.

26. During this relationship, MacNeil would ship its product to Miami whereuponMr. Lairet would accept the products and ship them to Venezuela. During this time, 1997-2003,

Lairets purchases from MacNeil consisted of approximately 80% cargo liners (a cargo liner is

a protective liner for the cargo area of a vehicle) and 20% of other MacNeil products, such as

floor mats. Mr. Lairet and Accesorios Kramer continued to serve as MacNeils distributor in

Venezuela up until 2003, when the Venezuelan economy took a turn for the worse and

Accesorios Kramer ceased to send to MacNeil any further orders. Thereafter, MacNeil did not

hear from Mr. Lairet or Accesorios Kramer for several years.

27. However, in November of 2008, during the SEMA show (an annual tradeshow inLas Vegas at which MacNeil regularly exhibits) Mr. Lairet visited MacNeils booth with his

associate Mr. Camacho Esdras and met with several MacNeil representatives. During this

meeting, Mr. Lairet expressed his interest to once again become a distributor of MacNeils

products in Venezuela. The meeting was so positive that MacNeil had the impression that Mr.


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Lairet could eventually become a million dollar account/distributor of MacNeils products in

Venezuela. It was also at this meeting that Mr. Lairet introduced his associate, Mr. Esdras, to

several MacNeil representatives.

28. As a result of the many promises Mr. Lairet made to MacNeil, such as promisingto become a loyal and very successful distributor of MacNeils products once again, MacNeil

agreed to have Mr. Lairet and Accesorios Kramer distribute its products in Venezuela again. Mr.

Lairets associate, Mr. Esdras, began discussing and negotiating with MacNeil the composition

of Accesorios Kramers first order from MacNeil. During these discussions, MacNeil noticed

that, unlike its prior orders in years past (whereby roughly 80% of the orders would be composed

of cargo liners), Accesorios Kramer was not interested in purchasing any cargo liners, despite its

experience and success in formerly distributing the same and despite the fact that MacNeil

repeatedly tried to push at least some cargo liner sales given that that product had been

successful for Accesorios Kramer in the past. Instead, Accesorios Kramer was focused solely on

buying MacNeils floor tray product for roughly 15-20 vehicles. The first order was placed with

MacNeil on December 5, 2008, and shipped to Accesorios Kramer on January 28, 2009.

29. As MacNeil had in the past, it provided key support to Accesorios Kramer as arenewed distributor of MacNeil products in Venezuela. In addition to providing the support

detailed in Paragraph 13, MacNeil provided Accesorios Kramer with significant price support

with regard to its products, as well as specific marketing and advertising support.

30. And what did MacNeil get for the support it gave to and trust it reposed inAccesorios Kramer? Accesorios Kramer wrongfully used MacNeils support and deeply

discounted supply of product to openly compete with MacNeil and push its MaxLiner line of

products, which are manufactured by Vandapac. Indeed, Accesorios Kramer used MacNeils


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proprietary marketing materials in an advertisement that, instead of promoting MacNeils

products, directly promoted the MAXFLOORMAT vehicle floor tray and other MaxLiner

products. See Exhibit 5. Accesorios Kramer went so far as to specifically denigrate MacNeils

products in its attempts to push MaxLiner products, as can be seen in the attached marketing

email from Accesorios Kramer. See Exhibit 6. Upon information and belief, Accesorios Kramer

sent the MacNeil floor trays it was supposed to be distributing directly to Vandapac, so that

Vandapac could wrongfully copy and infringe MacNeils patented floor trays and trade dress.

31. In April 2009, MacNeil sent Accesorios Kramer the pricing for the second order.But, rather than discussing a second order with Accesorios Kramer, MacNeil heard nothing

about continuing the distributor relationship. To date, Accesorios Kramer has not placed any

more orders with MacNeil and continues to push MaxLiner products instead.

Kramer America Is Born

32. Kramer America, Inc.s (Kramer) incorporation papers were filed in Florida onJuly 10, 2009. See Exhibit 7. The President and Treasurer of Kramer was listed as none other

than Salvador Lairet. This incorporation was filed mere months after Accesorios Kramer

received its first and only shipment of floor trays from MacNeil. Upon information and belief,

Kramer was then and is now operating as the exclusive distributor for Vandapac and its

MaxLiner products in the United States. The most recently listed officers of Kramer include Mr.

Lairet and also Mr. Camacho Esdras. Both of these gentlemen acted as representatives of

Accesorios Kramer in its negotiations and discussions with MacNeil to act as a distributor of

MacNeil products. See Exhibit 8.

33. Recently, MacNeil was alerted to Kramers activities by a then Florida-baseddistributor (now a Michigan-based distributor) of MacNeils and other automotive accessory


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products. The distributors comment was that these [Kramers infringing MaxLiner products]

look familiar The distributor recognized that the MaxLiner floor trays were strikingly similar

to the trade dress of MacNeils highly successful vehicle floor trays.

34. Upon further investigation, MacNeil discovered that Kramer was selling and hadsold these products in the United States, including several such sales in this judicial district.

35. MacNeil also discovered that Kramer had bought many different versions ofMacNeils floor trays for various vehicle models and makes and had shipped these floor trays

directly to Vandapac in Thailand. See Exhibit 9. On information and belief, Vandapac and

Kramer have colluded together to systematically copy and infringe MacNeils distinctive trade

dress and patented floor trays and MacNeils patented carpet affixation device and system known

as the MatGrip. For a photo comparison of these products side by side (and the MaxLiner

floor trays also laid inside MacNeils floor trays) see Exhibits 10 and 11.

36. MacNeil recently sent a cease and desist letter to Kramer and Vandapac.However, MacNeil has heard no response and thus filed the instant lawsuit. Since sending these

letters, Kramers website at www.krameramerica.com has apparently been disabled. However,

MacNeil has captured several screenshots of the website as it existed before it was disabled and

Kramer employed this website to market and accomplish sales of the Infringing Products,

including accomplishing several actual sales to this judicial district. See Exhibit 12.

37. Upon information and belief, since at least 2010 Kramer has used its in-houseteam of designers and engineers to design and develop automotive vehicle floor trays, as

well as the affixing devices, that infringe the Subject Patents, including but not limited to the

Infringing Products.


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38. Relative at least as to MacNeils floor trays, Kramers design and developmentefforts have not been directed to independently creating original tray designs, but rather to

slavishly copying both patented and nonfunctional features of MacNeils trade dress and its

patented floor trays, with one of the principal aims being to emulate the overall look and

distinctive appearance of MacNeils floor trays as closely as possible.

39. Upon information and belief, Kramers slavish copying has been performed withthe objective to deceive the public into believing that there is some connection or sponsorship

between MacNeil and Kramer, and/or to pass off Kramers floor trays as those manufactured

by MacNeil.

40. Upon information and belief, since at least 2010, Kramer has assisted Vandapacin the design and manufacture of automotive vehicle floor trays, including but not limited to

the Infringing Products, that infringe MacNeils patents, including but not limited to the

Infringing Products and intentionally emulate MacNeils trade dress.

41. Upon information and belief, since at least 2011, Kramer has imported (anddistributed in the United States, including this judicial district), from Vandapac, automotive

vehicle floor trays and carpet affixation devices that infringe MacNeils Subject Patents,

including but not limited to the Infringing Products and which copy the trade dress and product

configuration of MacNeils distinctive floor trays.

42. Since at least 2011, Defendants introduced, advertised, distributed and sold orcaused to be introduced, advertised, distributed or sold a floor tray product that they called the

MAXFLOORMAT to consumers throughout the United States, including consumers in this

judicial district. The MAXFLOORMAT is a colorable imitation of MacNeils trade dress.


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43. Defendants MAXFLOORMAT floor trays products are a colorable imitation ofMacNeils trade dress, including the elements described above, and are confusingly similar

thereto.

44. Defendants MAXFLOORMAT floor tray products are advertised, promoted andmarketed in the same channels of trade as MacNeils trade dress in the United States, including

this district.

45. On information and belief, Defendants knew of MacNeils trade dress and hard-earned goodwill at all pertinent times prior to Defendants first promotion, use and/or sale of the

MAXFLOORMAT floor tray products. Defendants deliberately adopted the appearance of their

MAXFLOORMAT products to trade upon the hard-earned goodwill of MacNeil and Defendants

have deliberately attempted to free-ride on MacNeils trade dress.

46. Confusion has resulted and will be likely to continue to result from Defendantsconduct unless it is enjoined by this Court.

47. MacNeil has been and will continue to be seriously and irreparably injured unlessDefendants conduct is enjoined by this Court.

Vandapacs Involvement and Infringing/Wrongful Activities

48. Prior to Vandapacs collusion with Kramer, approximately pre-2009, oninformation and belief Vandapac offered for sale ex-US a vehicle floor tray that was

substantially in the form of the tray that is found in Exhibit 13.

49. However, even before MacNeil was aware of Vandapacs collusion with Kramer,on or about September of 2010, at the 2010 Automechanika trade show at Frankfurt, Germany, a

MacNeil representative became aware that Vandapac was marketing a MaxLiner floor tray at

said trade show that infringed MacNeils German intellectual property at said trade show


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(corresponding to several US patents). See Exhibit 14. The MacNeil representative informed

Vandapacs representative that its product infringed MacNeils intellectual property and

informed said Vandapac representative that MacNeil would take action if any such product was

distributed and sold in the United States.

50. Since that time, MacNeil has never seen Vandapac market a floor tray in the formthat was found in Exhibit 14. Instead, MacNeil recently became aware that Vandapac was

manufacturing and distributing an infringing floor tray and related accessories in the form such

as Kramer distributed to this judicial district and throughout the United States. See Exhibit 10.

51.

On information and belief, Vandapac and Kramer have conspired and colluded to

systematically copy and infringe MacNeils distinctive and patented floor trays and MatGrip

affixation devices, as well as MacNeils trade dress. Vandapac has received numerous MacNeil

floor trays from Kramer and/or Accesorios Kramer. Vandapac has manufactured its Infringing

Products in direct violation of the Subject Patents and has intentionally copied MacNeils trade

dress, and, upon information and belief, with full knowledge of MacNeils intellectual property

rights.

52. On information and belief, Vandapac colluded and conspired with Kramer andwrongfully took advantage of the relationship that the principals of Kramer had with MacNeil to

receive valuable support from MacNeil, all the while intending to use this support to wrongfully

compete with MacNeil and infringe MacNeils intellectual property rights.

53. On information and belief, Vandapac, through its established distribution channelin the United States, Kramer, has caused to be placed in the stream of commerce, for distribution

in the United States and this judicial district, the Infringing Products. Vandapac has done so

intentionally with the sole purpose of distributing these Infringing Products in the United States


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and this judicial district. On information and belief, Vandapac designed, manufactured and

distributed the Infringing Products, expressly for sale into the United States and this judicial

district, in collusion with Kramer and the principals thereof.

Polglobes Infringement And Wrongful Activities

54. Polglobe is a Michigan based reseller of MacNeils products andMAXFLOORMAT floor tray products and, on information and belief, certain infringing

affixation devices. Polglobe has marketed and sold the Infringing Products nationwide and has

conducted said sales of the Infringing Products in this judicial district. Polglobe accomplishes a

significant amount of its sales through its website, www.ecargoliners.com, which markets many

different products, including the Infringing Products, nationwide and has accomplished several

sales in this judicial district through said website.

55. In addition to selling, offering for sale, and on information and belief importingInfringing Products nationwide and specifically this judicial district, Polglobe also misused

MacNeils copyrighted marketing materials in its support of MaxLiner products.

56. Specifically, Polglobe stated as follows with regard to its advertisements forMaxLiner products:

MAXLINER Cargo Liners are perfect protection while hauling just about

anything from the family pet to gardening supplies to rough construction

MAXLINER Floor Liners materials accurately and completely line the interior

carpet giving the owner the absolute interior protection. Rear Floor Liners areeither one piece or two piece depending on the vehicle application. Exhibit 15.

57. This ad copy is almost a word for word replication of MacNeils copyrightedand trademarked material. Specifically, except for the reference to MaxLiner these

advertisements directly lift the language from MacNeils copyrighted material. Further, MacNeil

has claimed mark rights in the phrase absolute interior protection as it applies to its line of


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products. Polglobe has wrongfully used MacNeils support to sell MacNeil products to sell

MaxLiner products.

COUNT I PATENT INFRINGEMENT OF U.S. PATENT NO. 7,401,837

58. MacNeil reasserts and incorporates by reference the allegations of its Complaintat paragraphs 1 through 57 as if fully set forth herein.

59. Upon information and belief, without the consent of MacNeil, Defendants havemade, used, offered for sale, sold and/or imported Infringing Products which directly and/or

indirectly infringe at least one claim of the 837 patent.

60.

Upon information and belief, without the consent of MacNeil, Defendants have

committed acts that constitute inducement of infringement of at least one claim of the 837

patent by others through their acts of making, importing, offering to sell and/or selling Infringing

Products.

61. As a direct and proximate result of Defendants direct infringement and/orinducement to infringe the 837 patent, MacNeil has suffered and will continue to suffer

irreparable injury and damages in an amount not yet determined for which MacNeil is entitled to

relief.

62. Upon information and belief, Defendants infringement and/or inducement toinfringe the 837 patent has been and continues to be willful and deliberate.

WHEREFORE, MacNeil prays for entry of judgment in its favor and against Defendants

as follows:

A. Enter judgment that Defendants have directly infringed the 837 patent;

B. Enter judgment that Defendants have induced others to infringe the 837 patent;

C. Enter judgment that Defendants have willfully infringed the 837 patent;


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D. Enter judgment that this case is found to be an exceptional case under 35 U.S.C.

285;

E. Enter a permanent injunction, pursuant to 35 U.S.C. 283, restraining and

enjoining Defendants and their respective officers, agents, servants, employees, attorneys,

customers and those in concert or participation with Defendants from any further sales of the

Infringing Products and any other infringement of the 837 patent, whether direct or indirect;

F. Enter judgment ordering Defendants to compensate MacNeil for Defendants

infringement of the 837 patent pursuant to 35 U.S.C. 284;

G. Enter a judgment ordering Defendants to pay enhanced damages pursuant to 35

U.S.C. 284;

H. Enter a judgment for an award of pre-judgment and post-judgment interest and

costs to MacNeil pursuant to 35 U.S.C. 284;

I. Enter a judgment for an award of Plaintiffs reasonable attorneys fees pursuant to

35 U.S.C. 285;

J. Enter a permanent injunction pursuant to 35 U.S.C. 283, restraining and


customers and those in concert or participation with Defendants, from offering for sale or selling

the Infringing Products, and requiring destruction of all molds and tooling related to the

Infringing Products; and

K. Grant MacNeil such other and further relief as the Court may deem just, proper

and equitable under the circumstances.


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COUNT II PATENT INFRINGEMENT OF U.S. PATENT NO. 7,686,370


64. Upon information and belief, without the consent of MacNeil, Defendants havemade, used, offered for sale, sold and/or imported Infringing Products which directly and/or

indirectly infringe at least one claim of the 370 patent.

65. Upon information and belief, without the consent of MacNeil, Defendants havecommitted acts that constitute inducement of infringement of at least one claim of the 370


Products.

66. As a direct and proximate result of Defendants direct infringement, indirectinfringement and/or inducement to infringe the 370 patent, MacNeil has suffered and will

continue to suffer irreparable injury and damages in an amount not yet determined for which

MacNeil is entitled to relief.

67. Upon information and belief, Defendants direct infringement, indirectinfringement and/or inducement to infringe the 370 patent has been and continues to be willful

and deliberate.


as follows:

A. Enter judgment that Defendants have directly and indirectly infringed the 370

patent;




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285;








U.S.C. 284;




35 U.S.C. 285;









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COUNT III PATENT INFRINGEMENT OF U.S. PATENT NO. 6,735,819


69. Upon information and belief, without the consent of MacNeil, Defendants havemade, used, offered for sale, sold and/or imported Infringing Products (including vehicle floor

tray affixation devices) which directly and/or indirectly infringe at least one claim of the 819

patent.

70. Upon information and belief, without the consent of MacNeil, Defendants havecommitted acts that constitute inducement of infringement of at least one claim of the 819


Products.

71. As a direct and proximate result of Defendants direct infringement and/orinducement to infringe the 819 patent, MacNeil has suffered and will continue to suffer

irreparable injury and damages in an amount not yet determined for which MacNeil is entitled to

relief.

72. Upon information and belief, Defendants infringement and/or inducement toinfringe the 819 patent has been and continues to be willful and deliberate.


as follows:

A. Enter judgment that Defendants have directly infringed the 819 patent;




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285;








U.S.C. 284;




35 U.S.C. 285;









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COUNT IV ILLINOIS COMMON LAW UNFAIR COMPETITION


74. MacNeil supports its distributors in many different ways, as detailed herein. As adistributor of MacNeil products, the principals of Kramer, through their company Accesorios

Kramer, received MacNeils substantial support in many different areas. However, rather than

act as a loyal and successful distributor of MacNeil products, Kramer colluded and conspired

with Vandapac and Accesorios Kramer to knock-off MacNeils floor tray product and violate

MacNeils intellectual property rights. Vandapac and Kramer wrongfully acted to take

advantage of the support that MacNeil provided to Kramers principals and Accesorios Kramer

to compete directly with MacNeil and, to add insult to injury, were granted a significant discount

on the floor trays provided by MacNeil, which the Defendants then used to violate MacNeils

intellectual property rights and outright copy MacNeils floor trays. Further to this collusion and

conspiracy between Vandapac, Kramer and Accesorios Kramer, the latter used proprietary

marketing materials provided to it by MacNeil to directly promote the infringing MaxLiner

products and also specifically denigrate MacNeils product. Specifically as to Defendant

Polgobe, Polglobe has wrongfully used MacNeils copyrighted material to support sales and

advertisements of MaxLiner products.

75. For many years, MacNeil has expended substantial sums of money creating,advertising, promoting, establishing and supporting its trade dress with its customers and Illinois

and American consumers in general.

76. As a result of MacNeils substantial investment and hard work over the years, aswell as MacNeils commitment to quality, excellence and customer service, MacNeil has earned


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tremendous goodwill and a fine reputation with consumers and the trade, who associate MacNeil

with its trade dress.

77. Defendants are aware of the above facts, and have sought to wrongfully capitalizeon MacNeils fine reputation and goodwill by advertising, promoting and selling, and/or causing

such marketing its MaxLiner floor tray product which is an intentional attempt to copy and/or

create a colorable imitation of MacNeils trade dress. As a result of Defendants wrongful

conduct, Defendants are able to free-ride off of MacNeils substantial investment and hard work

by causing confusion among consumers in the marketplace and attempting to identify or

associate their MaxLiner floor tray product with MacNeils product and/or confuse consumers

that this is the case.

78. On information and belief, further discovery will reveal that Kramer andAccesorios Kramer should be treated as one and the same entity, under either a substantial

control theory or under an alter ego/piercing the corporate veil analysis, and both these

companies are merely the instruments of Mr. Salvador Lairet, who is a central figure behind the

wrongful actions detailed herein.

79. MacNeil has been, is, and will continue to be damaged by the Defendants actionsand MacNeil does not have an adequate remedy at law. Defendants actions have damaged, and

will continue to damage, MacNeils business, market, reputation and goodwill.


as follows:

A. Enter a permanent injunction restraining and enjoining Defendants and all of their

agents, servants, employees, successors and assigns, and all persons in active concert or

participation with Defendants, from


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1) Selling, marketing, advertising, importing or purchasing the InfringingProducts as detailed in this Complaint;

2) Unfairly competing with MacNeil; and

3) Causing a likelihood of confusion or misunderstanding as to source,sponsorship, approval or certification of their products or as to anyaffiliation, connection or association of them with or approval of said

products by MacNeil, or engaging in any other conduct that similarly

creates a likelihood of confusion or misunderstanding or false

representation with respect to MacNeil.

B. An Order requiring Defendants to file with this Court and serve upon MacNeil

within 30 days after the entry of the permanent injunction a report, in writing and under oath,

setting forth in detail the manner and form in which Defendants have complied with the above

subparagraph (A) of this prayer;

C. An award to MacNeil of all profits received by Defendants from the sales and

revenues of any kind made as a result of Defendants sales of its Infringing Products, damages, to

be determined, that MacNeil has suffered as a result of Defendants conduct, and the costs of this

litigation; and

D. Grant MacNeil such other and further relief as the Court may deem just, proper


COUNT V UNJUST ENRICHMENT


81. MacNeil supports its distributors in many different ways, as detailed herein. As adistributor of MacNeil products, the principals of Kramer, through their company Accesorios

Kramer, received MacNeils substantial support in many different areas. However, rather than

act as a loyal and successful distributor of MacNeil products, Kramer colluded and conspired


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with Vandapac and Accesorios Kramer to knock-off MacNeils floor tray product and violate

MacNeils intellectual property rights. Vandapac and Kramer wrongfully acted to take

advantage of the support that MacNeil provided to Kramers principals and Accesorios Kramer

to compete directly with MacNeil and, to add insult to injury, were granted a significant discount

on the floor trays provided by MacNeil, which the Defendants then used to violate MacNeils

intellectual property rights and outright copy MacNeils floor trays. Further to this collusion and

conspiracy between Vandapac, Kramer and Accesorios Kramer, the latter used proprietary

marketing materials provided to it by MacNeil to directly promote the infringing MaxLiner

products and also specifically denigrate MacNeils product. Specifically as to Defendant

Polgobe, Polglobe has wrongfully used MacNeils copyrighted material to support sales and

advertisements of MaxLiner products.

82. For many years, MacNeil has expended substantial sums of money creating,advertising, promoting, establishing and supporting its trade dress with its customers and Illinois

and American consumers in general.

83. As a result of MacNeils substantial investment and hard work over the years, aswell as MacNeils commitment to quality, excellence and customer service, MacNeil has earned

tremendous goodwill and a fine reputation with consumers and the trade, who associate MacNeil

with its trade dress.

84. Defendants are aware of the above facts, and have sought to wrongfully capitalizeon MacNeils fine reputation and goodwill by advertising, promoting and selling, and/or causing

such marketing its MaxLiner floor tray product which is an intentional attempt to copy and/or

create a colorable imitation of MacNeils trade dress. As a result of Defendants wrongful

conduct, Defendants are able to free-ride off of MacNeils substantial investment and hard work


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by causing confusion among consumers in the marketplace and attempting to identify or

associate their MaxLiner floor tray product with MacNeils product and/or confuse consumers

that this is the case.

85. On information and belief, further discovery will reveal that Kramer andAccesorios Kramer should be treated as one and the same entity, under either a substantial

control theory or under an alter ego/piercing the corporate veil analysis, and both these

companies are merely the instruments of Mr. Salvador Lairet, who is a central figure behind the

wrongful actions detailed herein.

86.

MacNeil has been, is, and will continue to be damaged by the Defendants actions

and MacNeil does not have an adequate remedy at law. Defendants actions have damaged, and


87. Defendants unjustly have received the benefit of MacNeils substantialinvestment in its distributors and support thereof, and MacNeils hard-earned goodwill and fine

reputation.

88. Defendants have been unjustly enriched.89. It would violate the principles of justice, equity and good conscience for

Defendants to retain this benefit.

90. To avoid an unjust enrichment, MacNeil should be awarded damages reflectingDefendants enrichment, among other relief.


as follows:


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3) Causing a likelihood of confusion or misunderstanding as to source,

sponsorship, approval or certification of their products or as to any

affiliation, connection or association of them with or approval of saidproducts by MacNeil, or engaging in any other conduct that similarly










litigation; and



COUNT VI FEDERAL UNFAIR COMPETITION



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92. Defendants have intentionally and willfully adopted and are using in interstatecommerce in connection with the advertising, promotion, exportation and importation, and sale

of the MAXFLOORMAT floor tray products, a floor tray product that is intended by Defendants

to be substantially similar to, and a colorable imitation of, the distinctive MacNeil trade dress.

93. Defendants unlawful adoption and use, in interstate commerce, of such acolorable imitation of MacNeils trade dress without authorization of MacNeil is likely to cause

confusion, to cause mistake and/or to deceive.

94. Through the promotion, manufacture, exportation and importation, advertisingand sale of such a confusingly similar product appearance, Defendants have unlawfully

simulated, appropriated and infringed MacNeils rights and its proprietary trade dress. Such

conduct and appropriation constitute a false description or representation of MacNeils trade

dress or a false designation of origin in violation of 15 U.S.C. 1125(a).




as follows:




1) Selling, marketing, advertising, importing or purchasing the Infringing

Products as detailed in this Complaint;



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3) Causing a likelihood of confusion or misunderstanding as to source,sponsorship, approval or certification of their products or as to any

affiliation, connection or association of them with or approval of said

products by MacNeil, or engaging in any other conduct that similarlycreates a likelihood of confusion or misunderstanding or false


B. An Order, under 15 U.S.C. 1116 and 1118, requiring Defendants (including

their employees and agents) to deliver to MacNeil or requiring destroyed, all infringing floor

trays of Defendants, all molds and tooling for manufacturing such floor trays or liners, and all

promotional and packaging materials related to Defendants infringing floor trays.

C. An Order, pursuant to 15 U.S.C. 1116, requiring Defendants to file with this

Court and serve upon MacNeil within 30 days after the entry of the permanent injunction a

report, in writing and under oath, setting forth in detail the manner and form in which Defendants

have complied with the above two subparagraphs (A and B) of this prayer.

D. An award to MacNeil, under 15 U.S.C. 1117, of all profits received by

Defendants from the sales and revenue of any kind made as a result of Defendants sales of its

infringing floor tray products, damages, to be determined, that MacNeil has suffered as a result

of Defendants conduct and find that, due to the flagrant and deliberate character of such

infringement and unfair competition, any such damages shall be trebled, and the costs of this

litigation and find this case to be an exceptional case and therefore grant MacNeil its attorneys

fees in pursuing this litigation; and

E. Grant MacNeil such other and further relief as the Court may deem just, proper


COUNT VII ILLINOIS UNIFORM DECEPTIVE TRADE PRACTICES ACT



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97. Defendants knowing and willful copying and colorable imitation of MacNeilstrade dress is intended by Defendants to allow them to free-ride on MacNeils substantial

investment in its trade dress and the hard-earned goodwill and excellent reputation of MacNeils

WeatherTech floor tray product.

98. Defendants knowing and continued sales of their MAXFLOORMAT floor trayproduct to unsuspecting Illinois consumers has created a substantial likelihood of confusion and

caused mistake and deception in Illinois consumers minds because the MAXFLOORMAT

product is inferior to, and not the same as, MacNeils WeatherTech floor tray product.

99.

The above-described knowing and willful conduct constitutes deceptive trade

practices within the meaning of Section 2 of the Illinois Uniform Deceptive Trade Practices Act,

815 ILCS 510/2.

100. Defendants unlawful adoption and use, in interstate commerce, of such acolorable imitation of MacNeils trade dress without authorization of MacNeil is likely to cause

confusion, to cause mistake and/or to deceive.

101. Through the promotion, manufacture, exportation and importation, advertisingand sale of such a confusingly similar product appearance, Defendants have unlawfully

simulated, appropriated and infringed MacNeils rights and its proprietary trade dress. Such

conduct and appropriation constitute a false description or representation of MacNeils trade

dress or a false designation of origin in violation of 15 U.S.C. 1125(a).




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as follows:






3) Causing a likelihood of confusion or misunderstanding as to source,

sponsorship, approval or certification of their products or as to anyaffiliation, connection or association of them with or approval of said

products by MacNeil, or engaging in any other conduct that similarly










litigation; and




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COUNT VIII ILLINOIS CONSUMER

FRAUD AND DECEPTIVE BUSINESS PRACTICES ACT


104. In violation of the Illinois Consumer Fraud and Deceptive Business Practices Act,Defendants have engaged in at least the following unfair and/or deceptive acts or practices:

a) By its use of an infringing product, namely the MAXFLOORMAT floortray, Defendants have confused consumers as to the origins of the

MAXFLOORMAT product and falsely attempted to represent that theMAXFLOORMAT floor tray has some relation to MacNeil; and

b)

Other false statements and misrepresentations, concealments, suppressionsor omissions according to proof.

105. Defendants intended for consumers to suffer confusion and to misrepresent thesource of its MAXFLOORMAT product.

106. Defendants unfair and deceptive acts and practices occurred in the normal courseof trade or commerce.

107. Through their unfair and deceptive acts and practices, Defendants have harmedMacNeil and American consumers of their MAXFLOORMAT floor tray products.


as follows:







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3) Causing a likelihood of confusion or misunderstanding as to source,sponsorship, approval or certification of their products or as to any

affiliation, connection or association of them with or approval of said

products by MacNeil, or engaging in any other conduct that similarlycreates a likelihood of confusion or misunderstanding or false









litigation;

D. An award to MacNeil for its costs and attorneys fees for this litigation; and

E. Grant MacNeil such other and further relief as the Court may deem just, proper


COUNT IX AS TO DEFENDANT POLGLOBE

(VIOLATION OF THE U.S. COPYRIGHT ACT OF 1976, AS AMENDED)


109. In or around the year 2004, MacNeil created a printed brochure as an aid for itssale and marketing of its automotive aftermarket products, including but not limited to vehicle

floor mats, floor trays and cargo liners (the "Catalog").

110. On or about October 31, 2004, MacNeil first published the Catalog. Versions ofthe Catalog have been published on a yearly basis ever since.


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111. At all times relevant to this Complaint, MacNeil had a valid and enforceablecopyright in the Catalog, within the meaning of the Copyright Act of 1976 (as amended), 17

U.S.C. 101, et seq. (the "Copyright Act"): the Catalog is an original work of authorship (a

literary and artistic work originally authored by MacNeil which includes two-dimensional

artwork, photographs and text); fixed in a tangible medium of expression (the Catalog has been

printed); from which the work can be perceived, reproduced, and otherwise communicated. See

17 U.S.C. 102.

112. MacNeil received a registration for its claim of copyright in the Catalog from theUnited States Copyright Office, January 25, 2006. An official Certificate of Registration of

MacNeil's copyright in the Software, under the Seal of the U.S. Copyright Office, is attached

hereto as Exhibit 16.

113. In or around the year 2004, MacNeil created a web site as an aid for its sale andmarketing of its automotive aftermarket products, including but not limited to vehicle floor mats,

floor trays and cargo liners (the "Web Site"; shown at www.weathertech.com).

114. On or about October 31, 2004, MacNeil first published the Web Site by makingits contents available to the public online. The Web Site has been modified periodically since

then and continues to be publicly displayed as of the time of writing. Versions of the Catalog

have been published on a yearly basis ever since.

115. At all times relevant to this Complaint, MacNeil or MacNeils assignee had avalid and enforceable copyright in the Web Site, within the meaning of the Copyright Act of

1976 (as amended), 17 U.S.C. 101, et seq. (the "Copyright Act"): the Web Site is an original

work of authorship (a literary and artistic work originally authored by Plaintiff which includes

two-dimensional artwork, photographs and text); fixed in a tangible medium of expression (the


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Web Site has been fixed in markup language and other machine-readable computer language);

from which the work can be perceived, reproduced, and otherwise communicated (the Web Site

was accessible to and displayed to the public without restriction). See 17 U.S.C. 102.

116. MacNeil received a registration for its claim of copyright in the Web Site from theUnited States Copyright Office, effective April 26, 2006. An official Certificate of Registration

of MacNeil's copyright in the Web Site, under the Seal of the U.S. Copyright Office, is attached

hereto as Exhibit 17.

117. MacNeil assigned its interest in and to the registered copyrights in writing,according to the license agreement attached hereto as Exhibit 4.

118. According to this same license agreement, MacNeil is the exclusive licensee of allrights in and to the Catalog and Web Site, including all rights under copyright. MacNeil has

been expressly granted the right to enforce the copyright in the works it has assigned to the

owner (MacNeil IP LLC), including the right to bring this action.

119. Sometime during the second or third quarters of 2011, Polglobe (d/b/a Family CarGear at its website, www.ecargoliners.com) authored a web page which offered for sale certain

MAXLFLOORMAT vehicle floor trays. A sample copy of the web page is attached hereto as

Exhibit 15. The web page also offers for sale certain WEATHERTECH products originating

from MacNeil.

120. Polglobe was given access by Plaintiff to certain of its images and text as an aid toreselling MacNeils products.

121. On information and belief, in assembling its web page, Polglobe copied textauthored by MacNeil, and used it to market products competitive to those sold by MacNeil. The

copied text appears in a product description used to advertise products from Vandapac, doing


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business as MaxLiner, and sold under the mark MAXFLOORMAT. Polglobe continues to use

the pirated text as of the date of this Complaint.

122. MacNeil has never expressly or implicitly authorized Polglobe to use itscopyrighted text in any manner except in support of the sales of products originating from

MacNeil. Specifically, MacNeil has never authorized Polglobe to: (a) copy the text for use in

promoting competitors products; (b) create derivative works, for any purpose whatsoever; or (c)

publicly display the text as a product description of any competitors product.

123. The above-referenced acts of Polglobe were wrongful, intentional and clearviolations of Plaintiff's rights under the Copyright Act.

124. As a direct and proximate result of the wrongful acts of Polglobe, MacNeil hassuffered damages.

125. MacNeil's copyright in the Catalog and the Web Site is registered with the U.S.Copyright Office.

126. MacNeil's copyright in the Catalog and Web Site has been in force and effect atall times relevant to this Complaint.

127. Pursuant to 17 U.S.C. 106, MacNeil has a number of exclusive rights to do andauthorize certain acts with respect to its Catalog and Web Site, including but not limited to:

a. Reproduce the Catalog and Web Site in copies (17 U.S.C. 106(1));b. Prepare derivative works based upon the Catalog and Web Site (17 U.S.C.

106(2)); and

c. Distribute copies of the Catalog and Web Site to the public by sale or othertransfer of ownership, or by rental, lease, or lending (17 U.S.C. 106(3)); and

d. Publicly display the Catalog and Web site (17 U.S.C. 106(5)).


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128. Pursuant to 17 U.S.C. 501, "[a]nyone who violates any of the exclusive rights ofthe copyright owner as provided by section[] 106 . . . is an infringer of the copyright or right of

the author, as the case may be." Id.

129. Polglobe infringed MacNeil's copyright in the Catalog and Web Site by, interalia:

a. Reproducing text from the Catalog and the Web Site;b. Creating a derivative work based on the copied text, for the promotion of the

MaxLiner competing products; and

c.

Publicly displaying the text and derivative work on its ecargoliners web page.

130. Pursuant to 17 U.S.C. 504(a), MacNeil is entitled to recover its actual damagesand any additional profits of Polglobe.

131. MacNeil suffered actual damages as a direct and proximate result of Polglobesinfringement of Plaintiff's copyright in the Catalog and Website, including but not limited to lost

profits from sales made of products described by Polglobes infringing text and which were

competitive with products made and offered for sale by MacNeil.

132. Polglobes infringement of the copyrighted works occurred after their effectivedates of registration with the U.S. Copyright Office.

133. Accordingly, MacNeil is entitled, at its election at any point prior to final judgement and in lieu of actual damages, to an award of statutory damages under 17 U.S.C.

502(c)(2), as enhanced because of the willful nature of Polglobes infringement.

134. Plaintiff is also entitled to an award of its attorneys fees and costs under 17U.S.C. 505.


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WHEREFORE, the Plaintiff MacNeil Automotive Products Limited respectfully prays

that the Court enter judgment in its favor and against defendant Polglobe:

(a) Awarding to Plaintiff money damages in an amount equal to Plaintiff's actualdamages, plus any additional profits of Polglobe from its infringement of Plaintiff's copyright in

the Web Site and Catalog, pursuant to 17 U.S.C. 504;

(b) At Plaintiffs election, and in substitution for (a), Awarding to Plaintiff statutorydamages as determined by the Court, pursuant to 17 U.S.C. 502(c)(2);

(c) Awarding to Plaintiff it attorneys fees and costs, pursuant to 17 U.S.C. 505;(d)

Enjoining Polglobe, and all of its agents, employees, successors, and assigns from

using, reproducing, publicly displaying, preparing derivative works of, and distributing copies of

the Catalog or the Web Site, pursuant to 17 U.S.C. 502; and

(e) Granting such other and further relief as the Court deems just and equitable.JURY TRIAL DEMAND

MacNeil hereby demands a trial by jury on all issues so triable.

Respectfully submitted,

MACNEIL AUTOMOTIVE PRODUCTS

LIMITED

Dated: September 12, 2011 By:

One of Its Attorneys


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Robert S. [email protected]

Timothy M. Schaum

[email protected]

DASPIN & AUMENT, LLP

227 West MonroeSuite 3500Chicago, Illinois 60606

(312)258-1600

MacNeil Automotive Products v. Kramer America et. al.

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