Color Image Apparel v. Namastetics - Complaint

Case 2:18-cv-00503 Document 1 Filed 01/19/18 Page 1 of 12 Page ID #:1
1 Andrew P. Holland/Bar No. 224737

aholland@thoits.com
2 Mark V. Boennighausen/Bar No. 142147
mboennighausen@thoits.com
3 Misasha S. Graham/Bar No. 237187
mgraham@thoits.com
4 THOITS LAW
A Professional Corporation
5 400 Main Street, Suite 250
Los Altos, California 94022
6 Telephone: (650) 327-4200
Facsimile: (650) 325-5572
7
Attorneys for Plaintiff
8 Color Image Apparel, Inc.
9
UNITED STATES DISTRICT COURT
10
CENTRAL DISTRICT OF CALIFORNIA
11
WESTERN DIVISION
12
A PROFESSIONAL CORPORATION
400 Main Street, Suite 250
13 COLOR IMAGE APPAREL, INC. No.

a California corporation,
(650) 327-4200
COMPLAINT FOR:
THOITS LAW
14
Plaintiff,
15 1. PATENT INFRINGEMENT
v.
16
NAMASTETICS, INC., a 2. UNFAIR COMPETITION
17 Canadian corporation; DOES 1
through 10, inclusive,
18 DEMAND FOR JURY TRIAL
Defendants.
19
20 Plaintiff Color Image Apparel, Inc. (“CIA”) alleges against defendants

21 Namastetics, Inc. (“Defendant” or “Namastetics”) and Does 1 through 10, as
22 follows:
23 NATURE OF THE CASE
24 1. This is an action at law and in equity for patent infringement and unfair
25 competition, arising under 35 U.S.C. section 271 et seq. and common law unfair
26 competition.
10965.004/1049871v2 1
COMPLAINT
1 2. CIA is the creator of ALO® and ALO Yoga® (collectively, “ALO

2 Yoga”), a well-known and exceedingly popular line of athletic wear designed for
3 both athletic and non-athletic settings. This line includes, among other distinctive
4 designs, ALO Yoga’s Goddess Legging (“Goddess Legging”), which is at issue in
5 this case.
6 3. Namastetics, without authorization, is copying CIA’s distinctive
7 Goddess Legging design and, as a result, is offering for sale and selling products
8 that are confusingly similar to the Goddess Legging. Defendant’s products are not
9 manufactured by CIA and are not connected to or endorsed by CIA in any way. As
10 a result, Defendant is infringing CIA’s patent on the Goddess Legging. In addition,
11 Defendant’s merchandise is likely to cause confusion in the marketplace and to
12 deceive consumers and the public regarding its source.
13 PARTIES
(650) 327-4200
4. Plaintiff Color Image Apparel, Inc. is a California corporation with its

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15 principal place of business at 6670 Flotilla Street, Commerce, California, 90040.

16 5. On information and belief, Defendant Namastetics, Inc. is a Canadian
17 corporation with its principal place of business at 61 Edgewater Drive, Stoney
18 Creek, ON L8E 4Z2, Canada.
19 6. The true names and capacities of defendants sued herein as Does 1
20 through 10, inclusive, are unknown to Plaintiff and Plaintiff therefore sues these
21 defendants by such fictitious names. Plaintiff will amend this complaint to allege
22 their true names and capacities when ascertained.
23 7. On information and belief, Namastetics has purposefully directed
24 business activities toward consumers residing in this judicial district, including but
25 without limitation by offering for sale, selling, and entering into sales contracts for
26 their infringing products with residents of this judicial district, and calculating and
10965.004/1049871v2 2
COMPLAINT
1 collecting California sales tax on sales of the infringing products to residents of this
2 judicial district.
3 8. By engaging in the activities set forth herein, Namastetics has
4 purposefully availed themselves of the privilege of conducting activities in this
5 forum, thereby invoking the benefits and protections of the laws of the State of
6 California, and of this judicial district in particular.
7 JURISDICTION AND VENUE
8 9. This action arises under 35 U.S.C. section 271 et seq. and common law
9 unfair competition. This Court has subject matter jurisdiction over this action
10 pursuant to 28 U.S.C. sections 1331 and 1338, as CIA’s claims arise under the
11 Patent Act. This Court has supplemental jurisdiction pursuant to 28 U.S.C. sections
12 1338(b) and 1367 over CIA’s claims arising under the laws of the State of California.
13 10. This Court has personal jurisdiction over Namastetics as, on

(650) 327-4200
information and belief, Namastetics is doing business in this judicial district through
THOITS LAW
14
15 its website (https://www.namastetics.com/), through which it advertises and sells

16 goods that infringe CIA’s design patent to consumers residing in this judicial district,
17 thereby invoking the benefits and protections of the laws of this judicial district.
18 11. Namastetics has distributed or sold infringing merchandise within this
19 judicial district, has manufactured or distributed products used or consumed within
20 this judicial district in the ordinary course of trade, or has otherwise made or
21 established contacts within this judicial district sufficient to permit the exercise of
22 personal jurisdiction. Venue is proper in this judicial district under 28 U.S.C.
23 section 1391(b)(2) as, on information and belief, a substantial part of the events,
24 omissions and acts causing injury that are the subject matter of this action arise out
25 of or relate to Namastetics’s activities within this judicial district.
26 ///
10965.004/1049871v2 3
COMPLAINT
1 FACTUAL ALLEGATIONS
2 12. CIA’s innovative concept of creating an exercise pant with integrated
3 legwarmer revolutionized the athletic wear market when it was first marketed and
4 quickly became one of the hallmarks of the ALO Yoga® brand, known for its
5 distinctive appearance and ornamental legwarmer design.
6 13. On September 6, 2016, the United States Patent and Trademark Office
7 duly and legally issued United States Design Patent No. US D765,346 S (the “’346
8 Patent”), which covers products sold under ALO Yoga’s “Goddess Legging”
9 collection. A true and correct copy of the ’346 Patent is attached hereto as Exhibit
10 A. CIA is the owner of the entire right, title, and interest in and to the ’346 Patent,
11 and owned the ’346 Patent throughout the period of Defendant’s infringing acts.
12 CIA still owns the ’346 Patent.
13 14. Certain Namastetics leggings marketed under the “Fusion” line infringe
(650) 327-4200
the ’346 Patent (collectively, the “Accused Products”). True and correct copies of
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14
15 photographs of the infringing Accused Products as displayed on Namastetics’s

16 website (https://www.namastetics.com), Facebook Account, and Instagram
17 Account are attached hereto as Exhibit B.
18 15. The overall appearance and design of the invention embodied in the
19 ’346 Patent and the corresponding design of the infringing Accused Products are
20 substantially the same.
21 16. On information and belief, an ordinary observer will perceive the
22 overall appearance of the design of the invention embodied in the ’346 Patent and
23 the corresponding designs of Defendant’s infringing Accused Products to be
24 substantially the same.
25 17. Table 1, below, shows side-by-side comparisons of the ’346 Patent
26 design (left), with the infringing Fusions-Black leggings (right) as an example of
10965.004/1049871v2 4
COMPLAINT
1 the entire Accused Products line. A copy of Table 1 is also attached as Exhibit C.
2
Table 1: Comparison of ’346 Patent
3
and Defendant’s Infringing Fusions Leggings
4
’346 Patent Figures Defendant’s Infringing Leggings
5
10
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13
(650) 327-4200
THOITS LAW
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comparable image not available
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10965.004/1049871v2 5
COMPLAINT
10
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(650) 327-4200
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10965.004/1049871v2 6
COMPLAINT
10
11
12 18. Namastetics offers for sale and sells the Accused Products to customers
13 in the United States through its website and social media ads. Furthermore,
(650) 327-4200
THOITS LAW
14 Namastetics indirectly infringes the ’346 Patent because its customers use the
15 Accused Products.
16 19. Upon information and belief, Namastetics offers to sell and sells the
17 Accused Products to customers with the specific intent to induce infringement of the
18 ’346 Patent.
19 20. Upon information and belief, Namastetics had knowledge that the
20 Accused Products are especially made or especially adapted for use in an
21 infringement of the ’346 Patent and is not a staple article or commodity of commerce
22 suitable for substantial non-infringing use.
23 21. Namastetics has infringed and is still infringing, directly and indirectly,
24 the ’346 Patent by making, using, offering to sell, selling and/or importing athletic
25 leggings that embody the ’346 Patent including, but not limited to, the Accused
26 Products.
10965.004/1049871v2 7
COMPLAINT
1 22. CIA has been manufacturing, advertising, and selling the Goddess
2 Legging for both athletic and non-athletic use. The Goddess Legging
3 revolutionized the area of sports leggings due to the total image and overall
4 appearance of its design, as it married the athletic nature of leggings with the
5 aesthetic of more ballet-inspired pants with distinctive, non-functional attributes
6 such as a flat front panel at the top of the leggings and a loose panel at the bottom
7 of the leg which gives the appearance of an integrated leg warmer.
8 23. On information and belief, Namastetics is, and will continue to
9 manufacture, distribute, advertise, sell and offer for sale its unauthorized products
10 in this judicial district and throughout the United States unless enjoined by this
11 Court.
12 24. The products manufactured, distributed, offered for sale and sold by
13 Namastetics are not manufactured by CIA, nor is Namastetics associated or

(650) 327-4200
connected with CIA, or licensed, authorized, endorsed or approved by CIA in any

THOITS LAW
14
15 way.
16 25. Upon information and belief, Namastetics became aware of the
17 infringement allegations and the ’346 Patent at least as early as August 29, 2017
18 after a cease and desist letter was sent to Namastetics by CIA’s counsel. A true and
19 correct copy of this letter is attached as Exhibit D.
20 26. After receiving no response from Namastetics to its August 29, 2017
21 letter, counsel for CIA sent a follow-up letter on November 7, 2017. A true and
22 correct copy of this letter is attached as Exhibit E.
23 27. In an email dated December 4, 2017, counsel for Namastetics
24 responded to CIA. Namastetics’s response did not resolve the dispute.
25 ///
26 ///
10965.004/1049871v2 8
COMPLAINT
1 FIRST CLAIM FOR RELIEF

2 (Patent Infringement – 35 U.S.C. §271)
3 28. CIA repeats and incorporates by this reference each and every
4 allegation contained in paragraphs 1 through 26 above, inclusive, as though set forth
5 in full.
6 29. Namastetics, without authorization from CIA, has made, used, offered
7 for sale, sold, and/or imported in or into the United States, and continues to make,
8 use, offer for sale, sell, and/or import in or into the United States, leggings having
9 a design that infringes the ’346 Patent.
10 30. CIA has been and will continue to be irreparably harmed by
11 Namastetics’s infringement of the ’346 Patent.
12 SECOND CLAIM FOR RELIEF
13 (Unfair Competition)
(650) 327-4200
31. CIA repeats and incorporates by this reference each and every
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14
15 allegation contained in paragraphs 1 through 29 above, inclusive, as though set forth

16 in full.
17 32. Namastetics’s unauthorized actions and conduct as alleged herein
18 constitute unfair competition under California common law, and have created and
19 will continue to create a likelihood of confusion and irreparable harm, damage, and
20 injury to CIA, including but not limited to injury to CIA's goodwill and business
21 reputation, unless restrained and enjoined by this Court.
22 33. On information and belief, Namastetics’s unfair competition with CIA
23 was, and is, done with full knowledge of CIA’s statutory and common law rights
24 and without regard to the likelihood of confusion to the public created by
25 Namastetics’s activities.
26 34. Namastetics has caused and, unless restrained and enjoined by this
10965.004/1049871v2 9
COMPLAINT
1 Court, will continue to cause irreparable harm, damage and injury to CIA, including
2 but not limited to injury to CIA’s goodwill and business reputation.
3 35. As a result of Namastetics’s acts, CIA has suffered, is suffering, and
4 will continue to suffer irreparable injury for which CIA has no adequate remedy at
5 law. CIA is therefore entitled to a permanent injunction against further infringing
6 conduct by Namastetics.
7 PRAYER
8 WHEREFORE, Plaintiff prays for an order and judgment against Defendant
9 and requests relief as follows:
10 1. A determination that this action is an exceptional case pursuant to the
11 Patent Act;
12 2. A determination that Defendant has infringed the ‘346 Patent;
13 3. That Defendant and its officers, directors, partners, agents, servants,

(650) 327-4200
employees, attorneys, confederates, and all persons acting for, with, by, through or
THOITS LAW
14
15 under it, and any others within their control or supervision, and all others in active
16 concert or participation with the above, be enjoined during the pendency of this action
17 and permanently thereafter from infringing the ‘346 Patent in the manufacturing,
18 marketing, sales, distribution, promotion, advertising, identification, or in any other
19 manner in connection with apparel in the United States;
20 4. That Defendant, and each of its officers, directors, partners, agents,
21 servants, employees, attorneys, confederates, and all persons acting for, with, by,
22 through or under them, and any others within their control or supervision, and all
23 others in active concert or participation with the above, be enjoined during the
24 pendency of this action and permanently thereafter from representing to anyone,
25 either orally or in writing, that their business or goods are affiliated with CIA in any
26 way or are approved by CIA;
10965.004/1049871v2 10
COMPLAINT
1 5. For an order requiring Defendant to cease offering for sale its infringing
2 products, and to destroy all patterns, stencils, molds, plates, masters, or means of
3 creating the infringing items;
4 6. For an order requiring Defendant to instruct, within thirty (30) days after
5 the entry of any preliminary or permanent injunction, any third-party website that
6 carries Defendant’s infringing products to cease selling those products at the earliest
7 possible date;
8 7. For an order requiring Defendant to file with the Clerk of this Court and
9 serve CIA, within thirty (30) days after the entry of any preliminary or permanent
10 injunction, a report in writing, under oath, setting forth in detail the manner and form
11 in which Defendant has complied with 1 through 7 above;
12 8. For an award of Defendant’s profits and CIA’s damages according to
13 proof at trial and as detailed in this Complaint;

(650) 327-4200
9. For an award of three times CIA’s damages or Defendant’s profits in

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14
15 view of the intentional and willful nature of Defendant’s acts, pursuant to 35 U.S.C.
16 section 285 and as detailed in this Complaint;
17 10. For an order requiring Defendant to account for and pay to CIA all gains,
18 profits and advantages derived by Defendant from the unlawful activities alleged
19 herein, and/or as a result of unjust enrichment as detailed in this Complaint;
20 11. For an award of punitive damages according to proof;
21 12. For an award of CIA’s attorneys’ fees for bringing and prosecuting this
22 action pursuant to 35 U.S.C. section 285 and all applicable state statutes;
23 13. For an award of CIA’s costs and expenses incurred in bringing and
24 prosecuting this action pursuant to 35 U.S.C. section 285 and all applicable state
25 statutes; and
26 14. For such further relief as this Court shall deem just and proper.
10965.004/1049871v2 11
COMPLAINT
1 JURY DEMAND
2 Plaintiff Color Image Apparel, Inc. hereby demands trial by jury in the
3 above entitled action pursuant to Fed. R. Civ. P. 38(b).
4
5 Dated: January 18, 2018

THOITS LAW
6
7 By: /s/ Andrew P. Holland

Andrew P. Holland
8 Attorneys for Plaintiff
Color Image Apparel, Inc.
9
10
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13
(650) 327-4200
THOITS LAW
14
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10965.004/1049871v2 12
COMPLAINT
Case 2:18-cv-00503 Document 1-1 Filed 01/19/18 Page 1 of 19 Page ID #:13
“Fusions – Rebel”
(https://www.namastetics.com/collections/getting-meshy-1/products/rebel-black-mesh-yoga-pants)
Case 2:18-cv-00503 Document 1-2 Filed
“Fusions 01/19/18 Page 3 of 4 Page ID #:34
– Black”
(https://www.namastetics.com/collections/fusions/products/yoga-pants-black)
Exhibit C

comparable image not available



T HOITS LAW 400 Main Street, Suite 250

A Professional Corporation Los Altos, California 94022
TEL (650) 327-4200
FAX (650) 325-5572
www.thoits.com
Andrew P. Holland (650) 330-4709

aholland@thoits.com
August 29, 2017
Via E-mail (shane_peter99@hotmail.com) and U.S. Mail
Namastetics
61 Edge Water Dr.
Stoney Creek, ON L8E 4Z2
Canada
Re: Cease and Desist of Infringement of United States Design Patent No. US
D765,346 S
To whom it may concern:
This law firm represents Color Image Apparel, Inc. (“Color Image”) in connection
with the protection and enforcement of its United States Patent No. D765,346 S (the “'346
Patent”), which covers products sold under Alo’s “Goddess Legging” collection. A copy of
this patent is enclosed for your reference.
We compared your company’s “Fusions - Black” yoga leggings and “Fusions - Rebel”
yoga leggings against the ’346 Patent. Both of these products are being sold on your website
(see Exhibits A and B attached hereto). Based on our analysis, Color Image believes that
these products infringe the ’346 Patent in violation of Section 271 of the Patent Act.
Under United States Code, Title 35, patent infringement is defined as “the unauthorized
making, using, offering for sale, or selling any patented invention within the United States or
U.S. Territories, or importing into the United States of any patented invention during the term
of the patent.” See 35 U.S.C. § 271. Under this Title, available remedies for patent
infringement include injunctive relief and damages or other monetary relief. Similarly, under §
285 of this Title, attorney’s fees may also be available.
In addition to notifying you of Color Image’s patent rights, the purpose of this letter is to
request that you:
1. Immediately cease and desist from all further activity that infringes the claims of
the '346 Patent.
Namastetics
August 29, 2017
Page 2
2. Provide Color Image with sufficient information to determine the number of all
infringing products made, used, offered for sale, sold or imported and all proceeds
therefrom and pay suitable damages for the infringement.
3. Promptly provide Color Image with written confirmation that Namastetics will
comply with these demands.
Namastetics is specifically advised that any failure or delay in complying with these
requests may compound the damages for which Namastetics may be liable. If Color Image does
not receive a satisfactory response to these requests by the close of business on September 12,
2017, Color Image is prepared to take all steps necessary to protect its valuable intellectual
property rights.
The above is not an exhaustive statement of all the relevant facts and law. Color Image
expressly reserves all of its legal and equitable rights and remedies, including the right to seek
injunctive relief and recover monetary damages.
I look forward to your prompt response.
Sincerely,
THOITS LAW
Andrew P. Holland
Andrew P. Holland
APH:ds
Enclosure
cc: Michael Hsueh, Esq. (via e-mail to mhsueh@thoits.com)
10965.004/976060
EXHIBIT A
EXHIBIT B
T HOITS LAW 400 Main Street, Suite 250

A Professional Corporation Los Altos, California 94022
TEL (650) 327-4200
FAX (650) 325-5572
www.thoits.com
Andrew P. Holland (650) 330-4709

aholland@thoits.com
November 7, 2017
Via E-mail (shane_peter99@hotmail.com) and U.S. Mail
Namastetics
61 Edge Water Dr.
Stoney Creek, ON L8E 4Z2
Canada
Re: Cease and Desist of Infringement of United States Design Patent No. US
D765,346 S
To whom it may concern:
This law firm represents Color Image Apparel, Inc. (“Color Image”) in connection
with the protection and enforcement of its United States Patent No. D765,346 S (the “’346
Patent”), which covers products sold under Alo’s “Goddess Legging” collection.
I wrote to you on August 29, 2017 regarding your potential violation of my client’s
intellectual property rights and requested that you provide certain written assurances that
you would cease and desist from participating in any further infringing activity and provide
certain information relevant to this dispute. A copy of that letter is enclosed for your
reference. To date, I have not received a response from you. In addition, your “Fusions -
Black” yoga leggings, as well as other colors, are still being offered for sale in the U.S. on
www.namastetics.com.
I request a response by the close of business on November 22, 2017. If I do not hear
from you by that date, Color Image will be forced to consider its options.
I look forward to your prompt response.

Sincerely,
THOITS LAW
Andrew P. Holland
Andrew P. Holland
APH:mg
Enclosure
cc: Michael Hsueh, Esq. (via e-mail to mhsueh@thoits.com)
10965.004/1034587v1

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Case 2:18-cv-00503 Document 1 Filed 01/19/18 Page 1 of 12 Page ID #:1

1 Andrew P. Holland/Bar No. 224737

13 COLOR IMAGE APPAREL, INC. No.

20 Plaintiff Color Image Apparel, Inc. (“CIA”) alleges against defendants

1 2. CIA is the creator of ALO® and ALO Yoga® (collectively, “ALO

4. Plaintiff Color Image Apparel, Inc. is a California corporation with its

15 principal place of business at 6670 Flotilla Street, Commerce, California, 90040.

13 10. This Court has personal jurisdiction over Namastetics as, on

15 its website (https://www.namastetics.com/), through which it advertises and sells

15 photographs of the infringing Accused Products as displayed on Namastetics’s

13 Namastetics are not manufactured by CIA, nor is Namastetics associated or

connected with CIA, or licensed, authorized, endorsed or approved by CIA in any

1 FIRST CLAIM FOR RELIEF

15 allegation contained in paragraphs 1 through 29 above, inclusive, as though set forth

13 3. That Defendant and its officers, directors, partners, agents, servants,

13 proof at trial and as detailed in this Complaint;

9. For an award of three times CIA’s damages or Defendant’s profits in

5 Dated: January 18, 2018

7 By: /s/ Andrew P. Holland

Table 1: Comparison of ’346 Patent

comparable image not available

Table 1: Comparison of ’346 Patent

Table 1: Comparison of ’346 Patent

T HOITS LAW 400 Main Street, Suite 250

Andrew P. Holland (650) 330-4709

August 29, 2017

Via E-mail (shane_peter99@hotmail.com) and U.S. Mail

To whom it may concern:

I look forward to your prompt response.

T HOITS LAW 400 Main Street, Suite 250

Andrew P. Holland (650) 330-4709

Via E-mail (shane_peter99@hotmail.com) and U.S. Mail

To whom it may concern:

I look forward to your prompt response.

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