Cree, Inc v. Xiu Ping Chen et al

Motion to Dismiss for Failure to State a Claim

E.D.N.Y.May 26, 2017

UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK CREE, INC., a North Carolina Corporation, Plaintiff, - against - XIU PING CHEN, an Individual; HANG FENG WU a/k/a NICK WU, an Individual; N&K TRADING, INC., a New Jersey Corporation; ENUMBER, INC., a New Jersey Corporation; and DOES 1-10, Inclusive, Defendants. . 16 Civ. 1065 (NG)(CLP) NOTICE OF MOTION TO DISMISS PLEASE TAKE NOTICE that upon the annexed Memorandum of Law, dated May 26, 2017, and the accompanying Declaration of Elizabeth Wolstein, executed May 26, 2017, with the exhibits annexed thereto, Defendants N&K Trading Inc., Hang Feng Wu, Xiu Ping Chen, and Enumber, Inc. (collectively, “Defendants”) will move this Court, located at 225 Cadman Plaza East, Brooklyn, NY 11201, at a date and time to be set by the Court, for an order granting: 1) Defendants’ motion for partial dismissal of Plaintiff Cree, Inc.’s Amended Complaint and dismissing, pursuant to Fed. R. Civ. P. 12(b)(6): (i) all causes of action to the extent they are premised on the XM-L mark; (ii) all causes of action to the extent they are premised on the XLAMP mark; (iii) the first cause of action, for infringement, to the extent it is based on a consumer confusion theory (as opposed to a counterfeiting theory); (iv) the second cause of action, for false designation of origin, in its entirety; and (v) ENumber as a defendant; and 2) such other and further relief that the Court deems just and proper. Case 1:16-cv-01065-NG-CLP Document 90 Filed 05/26/17 Page 1 of 2 PageID #: 2954 2 PLEASE TAKE FURTHER NOTICE that upon the agreement of the Plaintiff and Defendants, any opposition to this motion shall be filed on or before June 16, 2017, and any replies in further support of this motion shall be filed on or before June 30, 2017. Dated: New York, New York May 26, 2017 Respectfully submitted, SCHLAM STONE & DOLAN LLP By: ______s/ Elizabeth Wolstein___ Elizabeth Wolstein Samuel L. Butt 26 Broadway New York, New York 10004 Telephone: (212) 344-5400 Facsimile: (212) 344-7677 E-Mail: ewolstein@schlamstone.com E-Mail: sbutt@schlamstone.com Attorneys for Defendants Case 1:16-cv-01065-NG-CLP Document 90 Filed 05/26/17 Page 2 of 2 PageID #: 2955 1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK CREE, INC., a North Carolina Corporation, Plaintiff, - against - XIU PING CHEN, an Individual; HANG FENG WU a/k/a NICK WU, an Individual; N&K TRADING, INC., a New Jersey Corporation; ENUMBER, INC., a New Jersey Corporation; and DOES 1-10, Inclusive, Defendants. 16 Civ. 1065 (NG)(CLP) MEMORANDUM OF LAW IN SUPPORT OF DEFENDANTS’ MOTION TO DISMISS IN PART AMENDED COMPLAINT SCHLAM STONE & DOLAN LLP Elizabeth Wolstein Samuel L. Butt 26 Broadway, 19th Floor New York, New York 10004 Tel.: (212) 344-5400 Fax: (212) 344-7677 E-mail: ewolstein@schlamstone.com E-mail: sbutt@schlamstone.com Attorneys for Defendants Xiu Ping Chen, Hang Feng Wu, N&K Trading, Inc., and ENumber, Inc. Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 1 of 26 PageID #: 2956 i TABLE OF CONTENTS Page TABLE OF CONTENTS ................................................................................................................. i TABLE OF AUTHORITIES .......................................................................................................... ii PRELIMINARY STATEMENT .................................................................................................... 1 A. The Allegations Of The Amended Complaint .................................................................... 2 B. Relevant Procedural History ............................................................................................... 6 ARGUMENT .................................................................................................................................. 7 THE COURT SHOULD GRANT DEFENDANTS’ PARTIAL MOTION TO DISMISS ...................................................................................................................... 7 A. Applicable Legal Standards .......................................................................................... 7 1. Motion To Dismiss ................................................................................................. 7 2. Substantive Law – Trademark Infringement and Counterfeiting ........................... 9 B. The Court Should Not Consider The Exhibits To The Chaney Declaration Or The Supplemental Chaney Declaration ................................................................. 10 C. The Amended Complaint Fails To State Any Claim Premised On The Unregistered Alleged Word Mark “XM-L” ................................................................ 11 1. There Are No Factual Allegations Suggesting The Purported Mark Is Entitled To Protection ........................................................................................... 12 2. There Are No Factual Allegations That Speak At All To The Likelihood Of Confusion ......................................................................................................... 15 3. ENumber Should Be Dismissed Given The Absence Of Any Plausible Claim Premised On The Purported XM-L Mark .................................................. 16 D. The Amended Complaint Fails To State Any Claim Premised On The XLAMP Mark ............................................................................................................. 17 E. The Amended Complaint Fails To State Any Claim That Requires Proof Of Consumer Confusion, And Therefore Fails To State Any Claim For Non- Counterfeiting Infringement Or False Designation Of Origin .................................... 18 CONCLUSION ............................................................................................................................. 21 Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 2 of 26 PageID #: 2957 ii TABLE OF AUTHORITIES Page Cases Ahmed v. GEO USA LLC, 2015 WL 1408895 (S.D.N.Y. Mar. 27, 2015) ................................................................. 8, 14-15 Ashcroft v. Iqbal, 556 U.S. 662 (2009) ........................................................................................................... passim Associated Press v. All Headline News Corp., 608 F. Supp. 2d 454 (S.D.N.Y. 2009) ........................................................................................ 8 BeautyBank, Inc. v. Harvey Prince, LLP, 2013 WL 11327097 (S.D.N.Y. Mar. 29, 2013) .......................................................................... 9 Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) ................................................................................................................ 7, 8 Birmingham v. Mizuno USA, Inc., No. 5:09-CV-0566, 2011 WL 1299356 (N.D.N.Y. Mar. 31, 2011) ........................................... 9 Chambers v. Time Warner, Inc., 282 F.3d 147 (2d Cir.2002) ............................................................................................ 8, 10, 11 Colgate-Palmolive Co. v. J.M.D. All-Star Imp. & Exp. Inc., 486 F. Supp. 2d 286 (S.D.N.Y. 2007) ...................................................................................... 10 Cortec Indus. Inc. v. Sum Holding L.P., 949 F.2d 42 (2d Cir. 1991) ....................................................................................................... 10 Dor Yeshurim, Inc. v. A Torah Infertility Medium of Exch., 2011 WL 7285038 (E.D.N.Y. Aug. 10, 2011) report and recommendation adopted, 2012 WL 464000 (E.D.N.Y. Feb. 10, 2012) ............................................................................................. 19 Dow Jones & Co., Inc. v. Int’l Sec. Exch., Inc., 451 F.3d 295 (2d Cir. 2006) ....................................................................................................... 8 GTFM, Inc. v. Solid Clothing, Inc., 215 F. Supp. 2d 273 (S.D.N.Y. 2002) ...................................................................................... 13 In re Bayer Corp. Combination Aspirin Products Marketing and Sales Practices Litigation, 701 F. Supp.2d 356 (E.D.N.Y. 2010) ............................................................................. 3, 5, 6, 7 In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80 (E.D.N.Y. 2012) ................................................................................................ 15 Int’l Audiotext Network, Inc. v. Am. Tel. & Tel. Co., 62 F.3d 69 (2d Cir. 1995) ......................................................................................................... 11 Japan Press Serv., Inc. v. Japan Press Serv., Inc., 2013 WL 80181 (E.D.N.Y. Jan. 2, 2013) ................................................................................. 19 Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 3 of 26 PageID #: 2958 iii Lopez v. Gap, Inc., 883 F. Supp.2d 400 (S.D.N.Y. 2012) ....................................................................................... 12 Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108 (2d Cir. 2006) ..................................................................................................... 12 Madu, Edozie & Madu, P.C. v. SocketWorks Ltd. Nigeria, 265 F.R.D. 106 (S.D.N.Y. 2010) .............................................................................................. 10 MDB LLC v. Hussain, 2016 WL 1267793 (S.D.N.Y. Mar. 29, 2016) ............................................................................ 9 Montres Rolex, S.A. v. Snyder, 718 F.2d 524 (2d Cir.1983) .................................................................................................. 9, 18 Patrick Collins, Inc. v. Doe 1, 288 F.R.D. 233 (E.D.N.Y. 2012) .............................................................................................. 15 Patrick Collins, Inc., 2012 WL 1889766 .................................................................................................................... 15 Philip Morris USA Inc. v. U.S. Sun Star Trading, Inc., 2010 WL 2133937 (E.D.N.Y. Mar. 11, 2010), report and recommendation adopted, 2010 WL 2160058 (E.D.N.Y. May 27, 2010) .......................................................................................... 19 Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492 (2d Cir. 1961) ................................................................................................. 1, 15 Pub. Free Will Corp., 2017 WL 1047330 .................................................................................................................... 15 Ritani, LLC v. Aghjayan, 880 F. Supp. 2d 425 (S.D.N.Y. 2012) ...................................................................................... 13 Sahu v. Union Carbide Corp., 548 F.3d 59 (2d Cir. 2008) ....................................................................................................... 11 Sara Designs, Inc. v. A Classic Time Watch Co. Inc., 2017 WL 627461 (S.D.N.Y. Feb. 15, 2017) ............................................................................. 14 Sira v. Morton, 380 F.3d 57 (2d Cir. 2004) ....................................................................................................... 10 Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373 (2d Cir. 2005) .............................................................................................. passim Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010) ......................................................................................................... 9 Tsirelman v. Dames, 794 F.3d 310 (2d Cir. 2015) ....................................................................................................... 7 Van Praagh v. Gratton, 993 F. Supp. 2d 293 (E.D.N.Y. 2014) ........................................................................................ 9 Vedder Software Grp. Ltd. v. Ins. Servs. Office, Inc., 545 F. App’x 30 (2d Cir. 2013) ................................................................................................ 14 Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 4 of 26 PageID #: 2959 iv Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205 (2000) .................................................................................................................. 13 Wells Fargo Bank, N.A. v. Wrights Mill Holdings, LLC, 127 F. Supp.3d 156 (S.D.N.Y. 2015) ......................................................................................... 3 Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101 (2d Cir.2001) ...................................................................................................... 19 Zimmerli Textil AG v. Kabbaz, 2015 WL 5821523 (E.D.N.Y. Sept. 30, 2015) ........................................................................... 9 Statutes 15 U.S.C. § 1114 ............................................................................................................................. 9 15 U.S.C. § 1114(1) or § 1125(a) ................................................................................................... 9 15 U.S.C. § 1114(1)(a) .................................................................................................................... 9 15 U.S.C. § 1125 ............................................................................................................................. 9 15 U.S.C. § 1125(a) .................................................................................................................. 9, 12 15 U.S.C. § 1127 ....................................................................................................................... 9, 18 Rules Fed. R. Civ. P. 12(b)(6)................................................................................................................... 1 Rule 12(c)........................................................................................................................................ 3 Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 5 of 26 PageID #: 2960 1 Defendants N&K Trading Inc. (“N&K”), Hang Feng Wu (“Mr. Wu”), Xiu Ping Chen (“Ms. Chen”), and Enumber, Inc. (“Enumber”) (collectively, “Defendants”) respectfully submit this memorandum of law, together with the Declaration of Elizabeth Wolstein (“Wolstein Decl.” or “Wolstein Declaration”), and the exhibits annexed thereto, in support of their motion for partial dismissal of Plaintiff Cree, Inc.’s (“Cree” or “Plaintiff”) Amended Complaint (“Amended Complaint”) pursuant to Fed. R. Civ. P. 12(b)(6). A true copy of the Amended Complaint is attached as Exhibit 1 to the Wolstein Declaration. PRELIMINARY STATEMENT As a result of prior motion practice, Cree withdrew its claims for (i) trademark dilution and (ii) trademark infringement by counterfeiting as to the XM-L mark. Even without revisiting Defendants’ arguments for dismissal of the other counterfeiting claims, there are additional claims in the Amended Complaint that are unsupported by well-pled factual allegations and should be dismissed for failure to state a claim. First, the Amended Complaint fails to state any claim premised on the unregistered alleged word mark “XM-L” or the alleged XLAMP mark. As to the unregistered XM-L mark, there are no factual allegations that speak to either of the elements of trademark infringement or false designation of origin, namely, that the mark is entitled to protection by virtue of its inherent distinctiveness or secondary meaning, and that Defendants’ use caused a likelihood of confusion under the test set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir. 1961). Thus, there is no remotely plausible claim alleged premised on the purported XM-L mark. The same is true of the XLAMP mark. This mark (like all others) goes unmentioned in Amended Complaint except for the allegation in paragraph 18 that Cree has registered the mark. It also makes no appearance in the Chaney Declarations and their exhibits submitted in support Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 6 of 26 PageID #: 2961 2 of Cree’s motion to amend. Defendants are not alleged to have engaged in any conduct in connection with this mark. If Plaintiff is attempting to assert claims with respect to this mark, the Amended Complaint fails to state any such claim. Thus, all of Plaintiffs’ claims premised on the XLAMP mark should be dismissed. Finally, the absence of any factual allegations speaking to the consumer confusion element is also fatal to Plaintiff’s false designation of origin claim in its entirety (second cause of action), and to the infringement claim (first cause of action) to the extent it does not rest on a counterfeiting theory. As noted above and shown below, likelihood of consumer confusion is an essential element of claims for trademark infringement and false designation of origin. On a counterfeiting theory consumer confusion is presumed; otherwise, a likelihood of confusion must be proven under the eight-factor Polaroid test. With the Amended Complaint bereft of factual allegations concerning this element, the pleading fails to state any claim for false designation of origin and fails to state an infringement claim other than infringement via counterfeiting in which consumer confusion is presumed. FACTUAL AND PROCEDURAL BACKGROUND A. The Allegations Of The Amended Complaint Cree is a public company headquartered in North Carolina that is engaged in the design, development, manufacture, and sale of light-emitting diodes (“LEDs”). Amended Complaint (“Am. Cmplt.”) ¶¶ 1, 16, Wolstein Decl., Exh. 1. It “manufactures and sells LED bulbs, LED lighting products, LED components . . . and LED chips to manufacturers, resellers, and retailers.” Id. ¶ 17. There are no allegations about whether or to what extent those “manufacturers resellers, and retailers” offer for sale, sell, market, or advertise products containing Cree LED products. Nor are there any allegations about what the products look like that Cree sells to “manufacturers resellers, and retailers”, whether any finished goods are Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 7 of 26 PageID #: 2962 3 ultimately sold to consumers and if so, who the buyers are, through what sales channels the products can be bought, and what the products look like that they are buying. Cree operates a public website at http://www.cree.com. Id. ¶ 16. Cree alleges that it has trademark registrations for certain claimed word and design marks, and has a trademark “application pending for registration of the XM-L word mark.” Id. ¶¶ 18-19. Thus, the alleged “XM-L” mark is an unregistered mark. Cree filed its application to register this purported mark with the Patent & Trademark Office on October 28, 2016, one month after Defendants requested permission, by letter dated September 23, 2016, to move to dismiss the original complaint under Rule 12(c). See Wolstein Decl., Exhs. 2 and 9. Cree authorizes certain third-party manufacturers of “consumer portable and high-end portable” lighting products to use unspecified trademarks under license. Am. Cmplt. ¶ 24. There are no allegations that any licensee manufactures, markets, advertises, or sells finished products to consumers. The Amended Complaint also does not allege that Cree makes or sells portable lighting products to consumers. Cree’s website in fact states that it does not: “It is important to note that Cree does not manufacture products like flashlights, agricultural grow lights or automotive lighting accessories as examples.” See http://www.cree.com/LED- Components-and-Modules/Tools-and-Support/LEDs-Branding-Categories (last visited January 20, 2017) (copy at Wolstein Decl., Exh. 3).1 Defendant N&K is a family business that fulfills orders for products advertised and sold on the Internet by other entities. Answer to Original Cmplt. at 7, Wolstein Decl., Exh. 4. It and Defendant ENumber are New Jersey corporations. Am. Cmplt. ¶¶ 4-5. Defendant Nick Wu is 1 The court may take judicial notice of Plaintiff’s website. See, e.g., Wells Fargo Bank, N.A. v. Wrights Mill Holdings, LLC, 127 F. Supp.3d 156, 166 (S.D.N.Y. 2015); In re Bayer Corp. Combination Aspirin Products Marketing and Sales Practices Litigation, 701 F. Supp.2d 356, 367-68 (E.D.N.Y. 2010). Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 8 of 26 PageID #: 2963 4 the CEO of N&K and ENumber. Id. ¶ 8. The Amended Complaint appears to allege that Defendant Xiu Ping Chen is President of N&K, see id. ¶ 7, although Plaintiff has had in its possession since July 2016 Ms. Chen’s Declaration stating under penalty of perjury that she has not been President of N&K, a title she held in name only, having no responsibilities other than in the human resources area, since 2013. See Wolstein Decl., Exh. 5. N&K does not make, advertise, market, offer for sale, or sell any products, and does not own or operate any website through which customers order or buy products. Answer to Original Cmplt. at 7, Wolstein Decl., Exh. 4, at Third Affirmative Defense and ¶¶ 28, 31 (denials); N&K’s Responses & Objections to Plaintiff’s First Set of Interrogatories, Response to No. 1, Wolstein Decl., Exh. 6, at page 4 (“N&K’s business consists of fulfilling orders placed by customers on websites maintained and operated by other entities, and collecting the customers’ payments on behalf of the sellers. N&K does not own, maintain, host, or operate any website through which customers place orders, or otherwise advertise or market goods to consumers. It does not manufacture products, contribute to the manufacturing of products by others, or sell products.”) As to the alleged wrongdoing by Defendants, the Amended Complaint makes general allegations that Defendants advertise, sell online, and export and import from China counterfeit Cree products, and that they do so “regularly and systematically.” Am. Cmplt. ¶¶ 29-37. The Amended Complaint also alleges that Defendants “and/or” a non-party, Fujian Zongteng Network Co. (“FZT”), registered accounts on Amazon and eBay in order to in order to advertise and offer for sale “non-genuine LED bulbs” and “counterfeit portable lighting products.” Id. ¶¶ 31, 32. These general and conclusory allegations do not include any specific facts supporting the allegation that Defendants are engaged in the business of advertising, offering for sale, or selling Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 9 of 26 PageID #: 2964 5 products online, whether allegedly counterfeit Cree products or any other products. As noted above, Cree knows from Defendants’ sworn interrogatory responses that Defendants are not in the business of advertising and selling products online. The only specific allegations relating to Defendants’ role in distribution of alleged counterfeit “portable lighting products” are that defendants N&K and Enumber received funds through Paypal accounts registered to them from sales of such products. See Am. Cmplt. ¶ 33; see also Chaney Declaration (Dkt. 69-2) Exhibits G and N. This is, again, is consistent with the portion of N&K’s interrogatory answers quoted above, which state that “N&K’s business consists of fulfilling orders placed by customers on websites maintained and operated by other entities, and collecting the customers’ payments on behalf of the sellers.” Wolstein Decl., Exh. 6, at page 4; id., Exh. 7, at page 10 (interrogatory responses of defendant Mr. Wu). There are no allegations in the Complaint concerning any specific products Plaintiff alleges are counterfeit. Neither the declarations of Plaintiff’s attorney—the Chaney Declaration (Dkt. 69-2) and the Chaney Supplemental Declaration (Dkt. 77-1) (collectively, the “Chaney Declarations”)—that Plaintiff submitted in support of its motion to amend nor their exhibits were filed with or as part of the Amended Complaint. Accordingly, they should not be considered in connection with this motion for the reasons set forth below. As to the individual defendants, Mr. Wu and his mother Ms. Chen, the Amended Complaint conclusorily alleges they “directed and benefited from the infringing activities of” the corporate defendants. Am. Cmplt. ¶ 9, Wolstein Decl., Exh. 1. Based on the foregoing, the Amended Complaint asserts claims under the Lanham Act for trademark infringement (first cause of action), false designation of origin (second cause of action), and trademark dilution (third cause of action, since withdrawn as shown below). See Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 10 of 26 PageID #: 2965 6 Am. Cmplt. ¶¶ 42-67. The Amended Complaint also asserts two secondary liability claims, for contributory and vicarious trademark infringement (fourth and fifth causes of action). See id. ¶¶ 68-76. The requested relief includes treble damages, statutory damages, enhanced damages for counterfeit marks, a preliminary and permanent injunction, punitive damages, and attorneys’ fees. B. Relevant Procedural History This case was transferred from the Central District of California on or about March 3, 2016. Wolstein Decl., Exh. 8, at page 7 (Docket Sheet as of May 25, 2017). As the parties had by then answered, they proceeded to engage in written discovery. Wolstein Decl. ¶ 7. Plaintiff served over 400 document requests, interrogatories, and requests for admission combined to all the defendants. Id. As shown above, the sworn answers of N&K and Mr. Wu to these interrogatories state that N&K does not own or operate any website that sells goods to consumers. See also Wolstein Decl., Exh. 6 at page 4 and Exh. 7 at 10. Nonetheless, Plaintiff continues to plead, with no good faith basis, that N&K operates websites that sell goods to consumers. By letter dated September 23, 2016, Defendants requested a pre-motion conference to address their intended motion for judgment on the pleadings (the “Pre-Motion Letter”) dismissing the original complaint for failure to state a claim. Wolstein Decl., Exh. 9. The Pre- Motion Letter detailed substantial deficiencies in the pleading, including: the absence of any plausible counterfeiting or dilution claim and the absence of any relevant factual allegations at all supporting the claims against Ms. Chen. See id. Twelve days before the scheduled November 28, 2016 pre-motion conference, Cree informed Defendants of its wish to file an amended complaint. See Wolstein Decl. ¶ 10. In light Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 11 of 26 PageID #: 2966 7 of this, the pre-motion conference was adjourned. See id. Plaintiff filed a motion for leave to amend on or about December 29, 2016. Wolstein Decl., Exh. 8 (Dkt. No. 69). Defendants opposed Plaintiff’s motion to amend. (Dkt. Nos. 74, 75, 76). On April 26, 2017, the Court granted Plaintiff’s motion to amend and directed Plaintiff to file the version of the amended complaint that the Court considered on the motion to amend. See Wolstein Decl. Exh. 10. The Court further directed Plaintiff to file a stipulation if it decided to dismiss the trademark dilution claim upon the filing of the Amended Complaint. Id. By stipulation dated May 11, 2017, and so ordered by the Court on the same date, the dilution claim (third cause of action) was dismissed with prejudice. Id., Exh. 11. Finally, at the April 26, 2017 conference, Plaintiff stipulated that it was discontinuing its pursuit of a counterfeit theory as to the unregistered XM-L mark. Id., Exh. 10. ARGUMENT THE COURT SHOULD GRANT DEFENDANTS’ PARTIAL MOTION TO DISMISS A. Applicable Legal Standards 1. Motion To Dismiss The standard for adjudicating Defendants’ motion is well settled. To survive a Rule 12(b)(6) motion, a plaintiff must allege “sufficient factual matter, accepted as true, to ‘state a claim to relief that is plausible on its face.’” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009) (quoting Bell Atlantic Corp. v. Twombly, 550 U.S. 544, 570 (2007)). The court must “accept all factual allegations in the complaint as true and draw inferences from those allegations in the light most favorable to the plaintiff.” Tsirelman v. Dames, 794 F.3d 310, 313 (2d Cir. 2015). However, a pleading consisting only of “‘labels and conclusions’ or ‘a formulaic recitation of the elements of a cause of action will not do.’” Iqbal, 556 U.S. at 678 (quoting Twombly, 550 U.S. at 555)). Furthermore, the court may “draw on its experience and common sense” in reviewing a Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 12 of 26 PageID #: 2967 8 complaint, and is not bound by the labels plaintiff uses. Iqbal, 556 U.S. at 678-79. In addition to the allegations contained within the complaint, the court considers any written instrument attached as an exhibit, as well as any documents which are incorporated into the complaint by reference, or upon which the complaint relies so heavily that it is rendered integral to the pleading. See Chambers v. Time Warner, Inc., 282 F.3d 147, 152–53 (2d Cir.2002). In the context of trademark infringement claims, a complaint fails under Rule 12(b)(6) if it “consists of conclusory allegations unsupported by factual assertions.” Dow Jones & Co., Inc. v. Int’l Sec. Exch., Inc., 451 F.3d 295, 307 (2d Cir. 2006) (internal citation and quotation marks omitted). In particular, “the mere assertion” that a defendant’s conduct “would constitute trademark infringement and dilution, without any factual allegations concerning the nature of the threatened use . . . does not show, by facts alleged, that [the plaintiff] is entitled to relief.” Id.; see also Associated Press v. All Headline News Corp., 608 F. Supp. 2d 454, 462 (S.D.N.Y. 2009) (dismissing trademark infringement claim for failure to state a claim because “the Amended Complaint consists entirely of conclusory allegations that lack factual support”); Patrick Collins, Inc., 2012 WL 1889766, at *2 (S.D.N.Y. May 24, 2012) (complaint, alleging, in conclusory terms, that defendants’ actions are likely to cause confusion and deception to consumers, with no factual allegations to support any conclusion related to a trademark violation, are “are deficient” under the standard set forth in [Iqbal].); Ahmed v. GEO USA LLC, 2015 WL 1408895, at *3 (S.D.N.Y. Mar. 27, 2015) (dismissing claim for trademark infringement where Complaint alleged only that Defendant’s use of the mark is “confusingly similar” to Plaintiff’s mark and that Defendant is using the mark “to divert customers and further to mislead and deceive the customers of the Plaintiff” and Plaintiff contended in his opposition memorandum, in conclusory Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 13 of 26 PageID #: 2968 9 fashion, that his mark was “inherently distinctive” because ‘[s]uch broad statements—devoid of any factual detail—are plainly insufficient as a matter of law”) (citing Iqbal). 2. Substantive Law – Trademark Infringement and Counterfeiting Courts employ substantially similar standards when analyzing claims for trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a) and false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a). Van Praagh v. Gratton, 993 F. Supp. 2d 293, 301 (E.D.N.Y. 2014); see also Zimmerli Textil AG v. Kabbaz, 2015 WL 5821523, at *3 (E.D.N.Y. Sept. 30, 2015) (same); MDB LLC v. Hussain, 2016 WL 1267793, at *6 (S.D.N.Y. Mar. 29, 2016) (“the standards for false designation of origin claims under Section 43(a) of the Lanham Act (15 U.S.C. § 1125) are the same as for trademark infringement claims under Section 32 (15 U.S.C. § 1114)”). Such claims are analyzed by looking “first to whether the plaintiff’s mark is entitled to protection, and second to whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.” Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010); see also BeautyBank, Inc. v. Harvey Prince, LLP, 2013 WL 11327097, at *12 (S.D.N.Y. Mar. 29, 2013) (“To prove trademark infringement under either 15 U.S.C. § 1114(1) or § 1125(a), a plaintiff must satisfy a two-prong inquiry by showing (1) that its mark is protectable and (2) that there is a likelihood of consumer confusion as to the source of the goods.”) The Lanham Act defines a counterfeit mark as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. In analyzing a counterfeiting claim, the “allegedly counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.” Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 533 (2d Cir.1983); Birmingham v. Mizuno USA, Inc., No. 5:09-CV-0566, 2011 WL 1299356, at *8 (N.D.N.Y. Mar. 31, 2011) (same); Colgate-Palmolive Co. v. J.M.D. All-Star Imp. Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 14 of 26 PageID #: 2969 10 & Exp. Inc., 486 F. Supp. 2d 286, 289 (S.D.N.Y. 2007) (same). On a claim of counterfeit marks “it is not necessary to consider” the factors that speak to consumer confusion, because “‘counterfeit marks’ are inherently confusing.” Id. B. The Court Should Not Consider The Exhibits To The Chaney Declaration Or The Supplemental Chaney Declaration Although the Chaney Declarations were submitted in connection with Plaintiff’s motion to amend the complaint, the exhibits are not incorporated by reference into the Amended Complaint nor are they integral to the Amended Complaint, as required by Chambers, 282 F.3d at 152–53. Accordingly, the Court should not consider them in adjudicating this motion. Documents that may be considered “incorporated by reference” are those that the complaint “explicitly refers to and relies upon.” Sira v. Morton, 380 F.3d 57, 67 (2d Cir. 2004). This is a high standard: “limited quotation from or reference to documents that may constitute relevant evidence in a case is not enough to incorporate those documents, wholesale, into the complaint.” Id. There is no mention of, much less quotation from, the exhibits to the Chaney Declarations and thus they cannot be considered on this basis. To be considered “integral” to a complaint, the plaintiff must have (i) “either had [the document] in its possession or had knowledge of” it, and (ii) it must be one “upon which they relied in bringing suit.” Cortec Indus. Inc. v. Sum Holding L.P. 949 F.2d 42, 48 (2d Cir. 1991); see also Madu, Edozie & Madu, P.C. v. SocketWorks Ltd. Nigeria, 265 F.R.D. 106, 124 (S.D.N.Y. 2010) (even if plaintiff had “‘actual notice’ of the extraneous information,” court may not rely on it where “the second integrality prong” is not present—”reliance upon the documents in framing their complaint”). The relevance requirement, too, sets a high bar, as it is only where a complaint “relies heavily upon its terms and effect” that a document may be considered integral. Int’l Audiotext Network, Inc. v. Am. Tel. & Tel. Co., 62 F.3d 69, 72 (2d Cir. 1995); see Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 15 of 26 PageID #: 2970 11 also Chambers, 282 F.3d at 153 (same); Sahu v. Union Carbide Corp., 548 F.3d 59, 68 (2d Cir. 2008) (documents not integral to complaint because they “do not appear to have been necessary” to allegations claiming entitlement to relief). The Chaney Declarations and exhibits thereto are neither incorporated by reference into nor integral to the Amended Complaint. They are not explicitly referred to or relied on, nor were their terms and effect heavily relied on in the framing of the Complaint. The pleading does not heavily rely on them, or rely on them at all but contains only general, conclusory assertions about Defendants’ alleged business and allege sales of unspecified “counterfeit portable lighting products.” Plaintiff could have readily included allegations as to which particular products Plaintiff claims bear counterfeit marks—just as it presented those products to the Court in seeking leave to amend. For strategic reasons it simply chose not to. The upshot is a complaint devoid of non-conclusory factual allegations of the kind necessary to support a claim, which leaves Defendants to guess about what products and conduct are at issue. However, as set forth below, even if the exhibits to the Chaney Declarations are considered on this motion, Plaintiff’s claims still fail. C. The Amended Complaint Fails To State Any Claim Premised On The Unregistered Alleged Word Mark “XM-L” As noted, Plaintiff withdrew its counterfeiting claims as to the unregistered purported “XM-L” mark on the record at the April 26, 2017 oral argument on Plaintiff’s motion for leave to amend. See Wolstein Decl., Exh. 10. Thus, to prove the remaining claims concerning this mark Cree must prove that the mark is entitled to protection and that Defendants’ alleged use caused a likelihood of consumer confusion. See supra at 9. The Amended Complaint contains no factual allegations at all that speak to these elements, and thus fails to state any cause of action as to the unregistered purported “XM-L” mark. Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 16 of 26 PageID #: 2971 12 1. There Are No Factual Allegations Suggesting The Purported Mark Is Entitled To Protection While an unregistered mark is entitled to protection under Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),2 “[t]o establish a claim under this provision, a plaintiff must show that he or she has a valid mark that is entitled to protection and that the defendant’s actions are likely to cause confusion with the plaintiff’s mark.” Lopez v. Gap, Inc., 883 F. Supp.2d 400, 413 (S.D.N.Y. 2012). The Amended Complaint, however, contains no factual allegations whatsoever suggesting that the unregistered XM-L mark is entitled to protection. “An unregistered mark is entitled to protection under the Lanham Act if it would qualify for registration as a trademark. To qualify for registration a mark must be sufficiently “distinctive” to distinguish the registrant’s goods from those of others. Such distinctiveness may be demonstrated in either of two ways. The mark may be “inherently distinctive” if its intrinsic nature serves to identify its particular source. Alternatively, even if not inherently distinctive, the mark may be distinctive by virtue of having acquired a “secondary meaning” in the minds of consumers. Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 381 (2d Cir. 2005) (citations omitted); see also Louis Vuitton Malletier v. Dooney & Bourke, 454 F.3d at 116 (same). Thus, to sufficiently plead that its unregistered XM-L mark is entitled to protection, Cree must allege facts suggesting that the “XM-L” mark is inherently distinctive or has acquired a “secondary meaning in the minds of consumers.” Star Indus., Inc., 412 F.3d at 381. A mark consisting of three letters with a dash is not “inherently distinctive” because its “intrinsic nature,” Star Indus., Inc., 412 F.3d at 381, does not identify its source. See, e.g., GTFM, Inc. v. Solid 2 See, e.g., Louis Vuitton Malletier v. Dooney & Bourke, Inc., 454 F.3d 108, 114–15 (2d Cir. 2006) (“Section 43(a) of the Lanham Act prohibits a person from using “any word, term, name, symbol, or device, or any combination thereof ... which ... is likely to cause confusion ... as to the origin, sponsorship, or approval of his or her goods....” 15 U.S.C. § 1125(a). This section protects from infringement unregistered trademarks . . .”). Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 17 of 26 PageID #: 2972 13 Clothing, Inc., 215 F. Supp. 2d 273, 293 (S.D.N.Y. 2002) (unregistered “05” mark not inherently distinctive); Ritani, LLC v. Aghjayan, 880 F. Supp. 2d 425, 446 (S.D.N.Y. 2012) (noting that common letters are not inherently distinctive and, as such, the use of the letter “R” in “Harout R” is insufficient to allege the existence of the likelihood of confusion). A mark acquires a secondary meaning “‘when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself.’” GTFM v. Solid Clothing, 215 F. Supp. 2d at 293 (quoting Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 211 (2000)) (“Because the [unregistered] ‘05’ mark is descriptive, GTFM must show that it had acquired secondary meaning during the period when it was infringed.”). The Amended Complaint contains not one single factual allegation supporting this element. There is not a single allegation claiming that any consumer has ever even been exposed to the XM-L mark—such as through products bearing this mark being offered for sale, sold, or advertised anywhere—much less suggesting that the alleged mark has any significance to consumers.3 Rather, the only allegation relating to the purported XM-L mark in the entire Amended Complaint is the allegation in paragraph 18 that Cree has an application pending for registration of this claimed mark. The Chaney Declarations also make no assertions concerning the issue of the mark’s alleged inherent distinctiveness or secondary meaning. Plaintiff’s allegations in paragraph 21 that consumers “have come to recognize” all the trademarks lumped together in paragraphs 18 and 19 “and associate them exclusively with 3 This is unsurprising given that as its website makes clear, Cree uses “XM-L” as part of a description of a highly technical LED component that Cree markets for use by bulb manufacturers. See e.g., http://www.cree.com/led-components/products/xlamp-leds-arrays/xlamp-xm-l-easywhite and http://www.cree.com/led-components/media/documents/XLampXML_EZW.pdf (last visited May 24, 2017) (“The XLamp XM-L EasyWhite (EZW) LED eliminates chromaticity binning, and enables luminaire and bulb manufacturers to deliver the consistent color and high efficacy light output of a multi‑die LED in the compact XM-L footprint. XLamp XM‑L EasyWhite LEDs can reduce LED‑to‑LED color variation to within a 2‑step MacAdam ellipse, 94% smaller than the total area of the corresponding ANSI C78.377 colorregion.”). Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 18 of 26 PageID #: 2973 14 Plaintiff” is a bald conclusory assertion unsupported by one single factual allegation of the kind required to state a plausible claim under Iqbal. See Iqbal, 556 U.S. at 678 (“Nor does a complaint suffice if it tenders naked assertion[s] devoid of further factual enhancement.”) (internal quotation marks omitted); Sara Designs, Inc. v. A Classic Time Watch Co. Inc., 2017 WL 627461, at *3 (S.D.N.Y. Feb. 15, 2017) (dismissing trade dress infringement claim where plaintiff only alleged “in a conclusory manner that Plaintiff is a ‘brand known primarily for its unique and famous Wrap Style Watches,’ and that ‘Plaintiff’s trade dress is widely recognized by consumers as being associated with Plaintiff and has developed secondary meaning in the marketplace’”). So too with Plaintiff’s bald, conclusory, and unsupported assertion in paragraph 53 that all the trademarks lumped together in paragraphs 18 and 19 are “fanciful, inherently distinctive and/or have acquired distinctiveness and secondary meaning”—”a formulaic recitation of the elements of [Plaintiff’s] cause of action” that Iqbal squarely held “will not do.” Iqbal, 556 U.S. at 678 (internal quotation marks omitted); Vedder Software Grp. Ltd. v. Ins. Servs. Office, Inc., 545 F. App’x 30, 33 (2d Cir. 2013) (affirming dismissal of trademark infringement claim where complaint alleged that plaintiff’s product had a “distinctive interface” of “non-functional elements” with a “secondary meaning” and that the defendants’ conduct was “likely to cause confusion or mistake” regarding the affiliation of Xactimate and the Estimating Wizard, since “[t]hese bare assertions ‘amount to nothing more than a formulaic recitation of the elements’ of a trademark infringement claim” and “no factual allegations support its legal conclusions”) (quoting Iqbal, 556 U.S. at 681, 129 S.Ct. 1937); Ahmed, 2015 WL 1408895, at *3 (dismissing claim for trademark infringement where, inter alia, allegations of confusion were conclusory) (citing Iqbal); Patrick Collins, Inc., 2012 WL 1889766, at *2 (dismissing plaintiff’s trademark infringement claims because they alleged confusion to consumers only in conclusory Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 19 of 26 PageID #: 2974 15 terms and thus “are deficient” under Iqbal); In re BitTorrent Adult Film Copyright Infringement Cases, 296 F.R.D. 80, 87 (E.D.N.Y. 2012) (noting trademark allegations fail to state a claim because “[t]he complaint fails to explain in what ways the illegal downloading and uploading alleged could possibly cause confusion among consumers, or ‘hamper efforts by Plaintiff to protect its reputation’ with ‘the purchasing public in New York.’”) (report and recommendation adopted sub nom. Patrick Collins, Inc. v. Doe 1, 288 F.R.D. 233 (E.D.N.Y. 2012)). Thus, all of Plaintiff’s claims premised on the purported XM-L mark should be dismissed on this basis alone, i.e., for lack of a single factual allegation suggesting the purported XM-L mark is entitled to protection. 2. There Are No Factual Allegations That Speak At All To The Likelihood Of Confusion In addition, the Amended Complaint contains no factual allegations that speak to a likelihood of consumer confusion under the test set forth in Polaroid Corp. v. Polarad Elecs. Corp., 287 F.2d 492, 495 (2d Cir.1961), the second required element of an infringement and false designation of origin claim. See Pub. Free Will Corp., 2017 WL 1047330, at *4 (dismissing infringement claim for lack of allegations sufficient to give rise to consumer confusion under the Polaroid factors). A court determines whether there is a likelihood of confusion by applying the eight Polaroid factors, which are “(1) strength of the trademark; (2) similarity of the marks; (3) proximity of the products and their competitiveness with one another; (4) evidence that the senior user may “bridge the gap” by developing a product for sale in the market of the alleged infringer’s product; (5) evidence of actual consumer confusion; (6) evidence that the imitative mark was adopted in bad faith; (7) respective quality of the products; and (8) sophistication of consumers in the relevant market.” Star Indus., Inc., 412 F.3d at 384. Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 20 of 26 PageID #: 2975 16 The Amended Complaint contains no allegations whatsoever to suggest that any products referring to the term XM-L allegedly used by Defendants were likely to cause confusion under the Polaroid test. There is not one single allegation that products bearing the XM-L alleged mark are offered for sale, sold, marketed, or advertised to consumers. Thus a fortiori there are no allegations concerning proximity of the products (factor 3), actual consumer confusion (factor 5), respective quality of the products (factor 7), or sophistication of consumers in the relevant market (factor 8). In short, there is not one single factual allegation to suggest that consumers have ever come into contact with the purported XM-L mark. How can a consumer who has never seen a product bearing a purported genuine XM-L mark be confused into thinking that an alleged imitation of an XM-L mark indicates that Cree is the source of the product? In sum, there are no factual allegations whatsoever supporting either of the elements Plaintiff is required to prove to establish its infringement and false designation of origin claims as to the purported XM-L mark, namely, that the mark is entitled to protection, or that Defendants’ alleged conduct created a likelihood of consumer confusion. Accordingly, all the claims premised on the unregistered XM-L mark should be dismissed. 3. ENumber Should Be Dismissed Given The Absence Of Any Plausible Claim Premised On The Purported XM-L Mark This result leaves no claim premised on the XM-L mark and therefore no claim against defendant ENumber. According to the Chaney Declaration, the only mark allegedly infringed by ENumber did is the XM-L mark: the Chaney Declaration states that the only product for which payment was made to ENumber is a product with “XM-L” on the listing (Exhibit M to Chaney Declaration) and on some portion of the inside of the product (Exhibit O to Chaney Declaration). See Chaney Decl. ¶¶ 16-18. Since the only claims against ENumber are premised on the XM-L mark, see Chaney Decl. ¶¶ 16-18, and Exhs. M, N, and O, and as shown above there is no Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 21 of 26 PageID #: 2976 17 plausible claim of infringement of false designation of origin premised on this mark, ENumber should be dismissed as a defendant. D. The Amended Complaint Fails To State Any Claim Premised On The XLAMP Mark The Amended Complaint also utterly fails to state any claim, whether for counterfeiting or other infringement, or false designation of origin, or secondary liability as to the alleged XLAMP mark. The sole mention of the XLAMP mark occurs in paragraph 18 of the Amended Complaint, in which Cree alleges that it has “obtained trademark registrations” for several alleged “word marks,” including “the XLAMP word mark.” Am. Cmplt. ¶ 18. Beyond this allegation that the mark has been registered, there is not one single further allegation in either the Amended Complaint or the Chaney Declarations relating to the XLAMP mark. For this reason, the viability of a purported claim based on this mark was not briefed by either party in connection with Plaintiff’s motion for leave to amend the complaint. It was only during a telephonic conference with Judge Pollak on May 2, 2017, that Plaintiff’s counsel stated Plaintiff’s position that Amended Complaint asserts claims premised on the XLAMP mark. Wolstein Decl. ¶ 13. The Amended Complaint fails to state any such claim. There are no allegations that Defendants engaged in any conduct relating to the XLAMP mark—not in the Amended Complaint or either of the Chaney Declarations. Certainly there is no allegation that any defendant distributed any product bearing an alleged counterfeit or other copy of this mark, or otherwise “used” the mark in commerce. There are no images of a genuine XLAMP mark in either the Amended Complaint or the Chaney Declarations exhibits at all—much less an image of the mark as it appears “on actual merchandise to an average purchaser,” Montres Rolex, S.A., 718 F.2d at 533, as necessary to state a counterfeiting claim. There are no images of any product Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 22 of 26 PageID #: 2977 18 purportedly bearing a counterfeit or infringing mark. Indeed there are no images whatsoever in the Amended Complaint, Chaney Declarations or their exhibits concerning this mark. Absent a single allegation of conduct and a single image, there is no hint of a counterfeiting claim. There are also no allegations of consumer confusion under the Polaroid test, or that any consumers have ever even come into contact with this mark in the marketplace. The mere allegation of the existence and registration of a mark, without anything more to allege any conduct that could amount to infringement cannot state a claim. As shown above, conclusory, formulaic, generalized, and unsupported assertions such as those in paragraphs 30-34 do not count. As such, the Amended Complaint fails to state any plausible claim for relief premised on the XLAMP mark. E. The Amended Complaint Fails To State Any Claim That Requires Proof Of Consumer Confusion, And Therefore Fails To State Any Claim For Non- Counterfeiting Infringement Or False Designation Of Origin In its ruling on Plaintiff’s motion for leave to amend, the Court rejected Defendants’ arguments that the Amended Complaint fails to state any plausible trademark-infringement-by- counterfeiting claim given that as shown by the images provided by Plaintiff, none of the alleged counterfeit marks is “identical with or substantially indistinguishable from” the registered marks, as required to establish the existence of a counterfeit mark. 15 U.S.C. § 1127 (defining counterfeit mark as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark”). While Defendants respectfully disagree with the Court’s ruling, we do not seek to relitigate those issues here. Defendants do, however, now move to dismiss the infringement claim (first cause of action) to the extent it seeks relief based on a non- counterfeiting theory, and the false designation of origin claim (second cause of action) in full, on the grounds that the Amended Complaint contains no factual allegations at all that speak to Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 23 of 26 PageID #: 2978 19 the likelihood of consumer confusion. Even assuming the truth of every single factual allegation in the pleading, Plaintiff would not have established a likelihood of consumer confusion. As explained above, to prove a claim for trademark infringement, the plaintiff must establish, in addition to the mark’s protectability, “a probability of confusion, not a mere possibility, affecting numerous ordinary prudent purchasers.” Star Indus., Inc. v. Bacardi, 412 F.3d at 383. This is also an element of a claim for false designation of origin. See, e.g., Japan Press Serv., Inc. v. Japan Press Serv., Inc., 2013 WL 80181, at *12 (E.D.N.Y. Jan. 2, 2013) (in order to establish a claim for false designation of origin under the Lanham Act, a plaintiff must prove: (1) that the mark is distinctive as to the source of the good, and (2) that there is a likelihood of confusion between the plaintiff’s good and the defendant’s good) (citing Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101, 115 (2d Cir.2001)); Dor Yeshurim, Inc. v. A Torah Infertility Medium of Exch., 2011 WL 7285038, at *4 (E.D.N.Y. Aug. 10, 2011), report and recommendation adopted, 2012 WL 464000 (E.D.N.Y. Feb. 10, 2012) (elements of false designation are “(1) that the mark is distinctive as to the source of the good, and (2) that there is a likelihood of confusion between its good the defendant’s”); Philip Morris USA Inc. v. U.S. Sun Star Trading, Inc., 2010 WL 2133937, at *4 (E.D.N.Y. Mar. 11, 2010) (to state a claim for false designation of origin, plaintiff must show that the defendant’s use of that trademark “is likely to cause confusion regarding the source of the product”), report and recommendation adopted, 2010 WL 2160058 (E.D.N.Y. May 27, 2010). The “ultimate question” under the Polaroid test for determining whether there is a likelihood of confusion is “whether, looking at the products in their totality, consumers are likely to be confused.” Star Indus., Inc. v. Bacardi, 412 F.3d at 384. The Amended Complaint contains no allegations whatsoever to suggest that the alleged distribution of “portable lighting products” by Defendants was likely to cause confusion under Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 24 of 26 PageID #: 2979 20 the Polaroid test. There is not one single allegation that products bearing the alleged genuine marks identified in paragraphs 18 and 19 are offered for sale, sold, marketed, or advertised to consumers. There are no allegations that Cree itself sells to consumers—and indeed its website states that it does not—and no allegations that Cree’s licensees sell anything to consumers. There are no allegations that the genuine marks reach consumers in any way, in what context the consumer sees the marks, through what sales channels the products, if any, can be purchased, and who the consumers are that supposedly use the product. As with the alleged XM-L and XLAMP marks, absent any such factual allegations (not including conclusory assertions insufficient as a matter of law under Iqbal) there is simply nothing in the Complaint (or the Chaney Declarations) that even touches on the consumer confusion element of Plaintiff’s non- counterfeit-based infringement and false designation of origin claims. As with the purported XM-L and XLAMP marks, this means, among other things, that there are no allegations concerning proximity of the products (factor 3), actual consumer confusion (factor 5), respective quality of the products (factor 7), or sophistication of consumers in the relevant market (factor 8). In short, as with the alleged XM-L and XLAMP marks, there is not one single factual allegation to suggest that consumers, as opposed to manufacturers, sellers, and licensees, have ever come into contact with the purported genuine marks, much less in what form, on what products, in what advertising, or through what sales channels.4 In sum, there are no factual allegations whatsoever supporting the likelihood of consumer confusion element Plaintiff is required to prove to establish its infringement and false 4 The photograph of a single package of flashlights authorized to bear a Cree trademark attached as Exhibit B to the Chaney Declaration also says nothing of whether these flashlights are currently on the market or were ever on the market, as opposed to being, say, a prototype that was never offered for sale to consumers. The Chaney Declaration says only that Exhibit B is “an example of a lawfully licensed use of CREE marks,” Chaney Decl. ¶ 3, again saying nothing about whether or to what extent such flashlights have ever been offered for sale to consumers. Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 25 of 26 PageID #: 2980 21 designation of origin claims. Accordingly, the Amended Complaint states no plausible claim for non-counterfeiting infringement or for false designation of origin. CONCLUSION For the foregoing reasons, the Court should grant Defendants’ partial motion to dismiss the Amended Complaint, and dismiss: (i) all causes of action to the extent they are premised on the XM-L mark; (ii) all causes of action to the extent they are premised on the XLAMP mark; (iii) the first cause of action, for infringement, to the extent it is based on a consumer confusion theory (as opposed to a counterfeiting theory); (iv) the second cause of action, for false designation of origin, in its entirety; and (v) ENumber as a defendant. Dated: New York, New York May 26, 2017 Respectfully submitted, SCHLAM STONE & DOLAN LLP By: ______s/ Elizabeth Wolstein___ Elizabeth Wolstein Samuel L. Butt 26 Broadway New York, New York 10004 Telephone: (212) 344-5400 Facsimile: (212) 344-7677 E-Mail: ewolstein@schlamstone.com E-Mail: sbutt@schlamstone.com Attorneys for Defendants Case 1:16-cv-01065-NG-CLP Document 90-1 Filed 05/26/17 Page 26 of 26 PageID #: 2981 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK CREE, INC., a North Carolina Corporation, Plaintiff, - against - XIU PING CHEN, an Individual; HANG FENG WU a/k/a NICK WU, an Individual; N&K TRADING, INC., a New Jersey Corporation; ENUMBER, INC., a New Jersey Corporation; and DOES 1-10, Inclusive, Defendants. . 16 Civ. 1065 (NG)(CLP) DECLARATION OF ELIZABETH WOLSTEIN Pursuant to 28 U.S.C. § 1746, ELIZABETH WOLSTEIN declares under penalty of perjury the following to be true and correct: 1. I am a member of Schlam Stone & Dolan LLP, counsel to Defendants in this action. I submit this Declaration in support of Defendants’ motion for partial dismissal of Plaintiff Cree, Inc.’s (“Cree” or “Plaintiff”) Amended Complaint (“Amended Complaint”) pursuant to Fed. R. Civ. P. 12(b)(6), to place before the Court documents and matters referred to in Defendants’ memorandum of law in support of the motion. Unless otherwise indicated, the statements set forth below are based upon my personal knowledge or review of documents contained in my firm's files. 2. A true copy of the Amended Complaint in this action, as filed on May 1, 2017, is attached hereto as Exhibit 1. 3. A true copy of Plaintiff’s October 28, 2016 filing with the Patent & Trademark Office, as retrieved from the PTO website, is attached hereto as Exhibit 2. Case 1:16-cv-01065-NG-CLP Document 90-2 Filed 05/26/17 Page 1 of 3 PageID #: 2982 2 4. A true copy of the page from Cree’s website stating “It is important to note that Cree does not manufacture products like flashlights . . . .” is attached hereto as Exhibit 3. 5. A true copy of the Answer to the Original Complaint of Defendants Xiu Ping Chen, Hang Feng Wu, and N&K Trading, Inc., dated December 18, 2015, is attached hereto as Exhibit 4, without its exhibits. 6. A true copy of the Declaration of Xiu Ping Chen, dated June 30, 2016, is attached hereto as Exhibit 5. 7. After this case was transferred to this District from the Central District of California on or about March 3, 2016, the parties engaged in written discovery. To date, Plaintiff has served over 400 document requests, interrogatories, and requests for admission combined to the original five defendants. Among their other responses to these discovery requests, the original defendants served responses and objections to Cree’s interrogatories. True copies of the Objections and Responses to Plaintiff’s Interrogatories of Defendant N&K Trading, Inc. and Defendant Nick Wu are attached hereto as Exhibit 6 and Exhibit 7, respectively. 8. A true copy of the docket sheet in this matter as of May 25, 2017, is attached hereto as Exhibit 8. 9. A true copy of Defendants’ September 23, 2016 letter to this Court requesting a pre-motion conference is attached hereto as Exhibit 9 (without its exhibits). 10. Twelve days before the scheduled November 28, 2016 pre-motion conference, Cree’s counsel informed me that Cree wished to file an amended complaint. In light of this, the pre-motion conference was adjourned. Case 1:16-cv-01065-NG-CLP Document 90-2 Filed 05/26/17 Page 2 of 3 PageID #: 2983 3 11. A true copy of this Court’s Order, dated April 26, 2017, and entered April 27, 2017, is attached hereto as Exhibit 10. 12. A true copy of the So Ordered stipulation, dated May 11, 2017, dismissing Plaintiff’s dilution claim is attached hereto as Exhibit 11. 13. At a telephonic conference with Judge Pollak on May 2, 2017, Plaintiff’s counsel stated Plaintiff’s position that the Amended Complaint asserts claims premised on the XLAMP mark. I declare under penalty of perjury that the foregoing is true and correct. Executed: New York, New York, May 26, 2017 ____/s/ Elizabeth Wolstein ELIZABETH WOLSTEIN Case 1:16-cv-01065-NG-CLP Document 90-2 Filed 05/26/17 Page 3 of 3 PageID #: 2984 Exhibit 1 Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 1 of 19 PageID #: 2985 1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK ------------------------------------------------------------X CREE, INC., a North Carolina Corporation AMENDED COMPLAINT Plaintiff, 1:16-cv-01065 NG (CLP) v. XIU PING CHEN, an Individual; HANG FENG WU a/k/a NICK WU, an Individual; N&K TRADING, INC., a New Jersey Corporation; ENUMBER, INC., a New Jersey Corporation; and DOES 1-10, Inclusive, Defendants. ------------------------------------------------------------X COMES NOW, Plaintiff Cree, Inc. (“Plaintiff”), to hereby file its Amended Complaint against Defendants Xiu Ping Chen, Hang Feng Wu a/k/a Nick Wu, N&K Trading, Inc., Enumber, Inc., and Does 1-10, inclusive (collectively “Defendants”). THE PARTIES 1. Plaintiff is a publicly held company incorporated in the State of North Carolina having its principal place of business located at 4600 Silicon Drive, Durham, North Carolina. 2. Plaintiff is informed and believes that Defendant Xiu Ping Chen is an individual residing in and conducting business from Brooklyn, New York. 3. Plaintiff is informed and believes that Defendant Hang Feng Wu is an individual, also known as Nick Wu, residing in and conducting business from Brooklyn, New York. 4. Plaintiff is informed and believes that Defendant N&K Trading, Inc. is a privately held company incorporated in the State of New Jersey having its principal place of business located at 1980 US Highway 1, Bldg. #3, North Brunswick, New Jersey. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 1 of 18 PageID #: 2922Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 2 of 19 PageID #: 2986 2 5. Plaintiff is informed and believes that Defendant Enumber, Inc. is a privately held company incorporated in the State of New Jersey having its principal place of business located at 1980 US Highway 1, Bldg. #3, North Brunswick, New Jersey. 6. Plaintiff is informed and believes that Defendant N&K Trading, Inc. is the successor in interest to Yall, Inc., a New York corporation formerly having its principal place of business located at 726 64th Street, New York, New York prior to merging with Defendant N&K Trading, Inc. 7. Plaintiff is informed and believes that Defendant Xiu Ping Chen was the former President of Yall, Inc. and President of N&K Trading, Inc. 8. Plaintiff is informed and believes that Defendant Hang Feng Wu was a former manager for Yall, Inc., CEO of Defendant N&K Trading, Inc., and CEO of Defendant Enumber, Inc. 9. Plaintiff is informed and believes that Defendants Xiu Ping Chen and Heng Feng Wu personally directed and benefited from the infringing activities of Defendants N&K Trading, Inc. and Enumber, Inc. alleged herein. 10. Plaintiff is informed and believes that Defendants Xiu Ping Chen, Hang Feng Wu, N&K Trading, Inc., Enumber, Inc. and Does 1-10, inclusive, sued herein by fictitious names are jointly, severally and concurrently liable and responsible with one another upon the causes of action hereinafter set forth. 11. Plaintiff is informed and believes that at all times mentioned herein Defendants Xiu Ping Chen, Hang Feng Wu, N&K Trading, Inc., Enumber, Inc. and Does 1-10, inclusive, and each of them, were the agents, servants and employees of every other Defendant and the acts of each Defendant, as alleged herein, were performed within the course and scope of that agency, service Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 2 of 18 PageID #: 2923Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 3 of 19 PageID #: 2987 3 or employment. 12. The true names and capacities, whether individual, corporate, associate or otherwise, of defendants herein named as Does 1-10, inclusive, are unknown to Plaintiff. Plaintiff therefore sues said defendants by such fictitious names. When the true names and capacities of said defendants have been ascertained, Plaintiff will seek to amend this pleading accordingly. JURISDICTION 13. This Court has subject matter jurisdiction over this trademark infringement action arising under the Lanham Act (15 United States Code (“U.S.C.”) §1051, et seq.) pursuant to 28 U.S.C. §§1331, 1338(a) and 15 U.S.C. §1121. 14. This Court has general and specific personal jurisdiction over Defendants as Defendants have committed the tortious Lanham Act violations within the State of New York and/or Defendants have sufficient minimum contacts with the State of New York such that the exercise of jurisdiction over Defendants by this Court does not offend traditional notions of fair play and substantial justice. 15. The Eastern District of New York is the proper venue for this action pursuant to 28 U.S.C. §1391(b) because Defendants reside in and conduct business from Brooklyn, New York and a substantial part of the events or omissions giving rise to Plaintiff’s claims against Defendants’ occurred in this judicial district, and has caused damage to Plaintiff in this district. GENERAL ALLEGATIONS 16. Plaintiff is a market-leading innovator in the design, development, manufacture, and sale of light-emitting diodes (“LEDs”) operating a public website with URL http://www.cree.com. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 3 of 18 PageID #: 2924Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 4 of 19 PageID #: 2988 4 17. Plaintiff manufactures and sells LED bulbs, LED lighting products, LED components (“CREE LEDs”), and LED chips to manufacturers, resellers, and retailers, and uses, or authorizes third party manufacturers to use, its registered word and design marks for CREE LEDs and LED bulbs, lighting products and chips (collectively “CREE LED Products”). Plaintiff’s CREE LED Products have achieved great success since their introduction as early as July 1990. 18. Plaintiff has obtained trademark registrations from the United States Patent and Trademark Office for the CREE® word marks (Reg. Nos. 2,440,530; 3,935629) for light emitting diodes, flashlights, and light bulbs, the XLAMP® word mark (Reg. No. 3,014,910) for light emitting diodes, and has an application pending for registration of the XM-L™ word mark (Serial No. 87218890) for light emitting diodes (LEDs), light bulbs, flashlights, headlamps, motor vehicle lighting, and portable lighting (collectively “CREE Word Marks”). 19. Plaintiff has also obtained trademark registrations for the following design marks for light emitting diodes, flashlights, headlamps, and light bulbs (collectively “CREE Design Marks”): (Reg. Nos. 2,452,761; 3,935,631) (Reg. No. 4,233,855) (Reg. No. 3,998,142) Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 4 of 18 PageID #: 2925Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 5 of 19 PageID #: 2989 5 (Reg. Nos. 3,360,315; 4,558,924) (Plaintiff’s non-exhaustive list of CREE Word Marks and CREE Design Marks identified above are collectively referred to herein as “CREE Trademarks”). 20. Plaintiff’s CREE LED Products have earned a reputation for innovation, quality and performance, and Plaintiff has spent substantial time, money on television, print, and online advertising in an effort to develop consumer recognition and awareness of its CREE LED Products and the CREE Trademarks. 21. Through the extensive use of the CREE Trademarks, Plaintiff has built up and developed significant goodwill in the CREE LED Products. As a result of the quality and popularity of CREE LED Products, the CREE Trademarks have been prominently placed in the minds of the public. Manufacturers, resellers, retailers, consumers, and members of the public have become familiar with Plaintiff’s CREE LED Products and the CREE Trademarks, and have come to recognize the CREE Trademarks and the CREE LED Products, and associate them exclusively with Plaintiff. 22. Plaintiff has acquired a valuable reputation and goodwill among the public as a result of such association. Indeed, the CREE Trademarks are famous in the United States and around the world. 23. Plaintiff uses the CREE Trademarks in relation to LED bulbs, LED lighting products, LED components, and LED chips that it manufactures, sells, and distributes directly and through authorized distributors. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 5 of 18 PageID #: 2926Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 6 of 19 PageID #: 2990 6 24. Plaintiff authorizes third party product manufacturers that use CREE LEDs in their products to use the CREE Trademarks under license, including but not limited to third party product manufacturers of consumer portable and high-end portable lighting products such as flashlights, head lamps, lanterns, bike lights, tactical flashlights, and weapon lights. 25. Plaintiff has never sold or distributed any CREE LEDs or CREE LED Products to Defendants nor have any of Plaintiff’s authorized distributors or branding partners sold or distributed any CREE LEDs, CREE LED Products or any portable lighting products powered by genuine CREE LEDs to Defendants. 26. Plaintiff has never authorized or consented to Defendants’ use of the CREE Trademarks, in commerce. 27. Plaintiff has never authorized or consented to Defendants’ manufacturing, exporting, importing, advertising, marketing, offering for sale, selling, distributing, or otherwise dealing in any CREE LED Products or any portable lighting products bearing the CREE Trademarks. 28. Plaintiff is informed and believes that Fujian Zongteng Network Co., Ltd., a Chinese limited company: (i) exports products from China into the United States for delivery to a warehouse operated by Defendants Xiu Ping Chen, Heng Feng Wu, N&K Trading, Inc., and Enumber, Inc.; and (ii) lists products for sale online through Amazon.com (“Amazon”) and eBay.com (“eBay”) in conjunction with Defendants Xiu Ping Chen, Heng Feng Wu, N&K Trading, Inc., and Enumber, Inc. 29. Plaintiff is informed and believes that Defendants Xiu Ping Chen, Heng Feng Wu, N&K Trading, Inc. and Enumber, Inc. operate a business enterprise: (i) importing products into the United States from China; (ii) listing products for sale online through Tmart.com (“Tmart”); Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 6 of 18 PageID #: 2927Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 7 of 19 PageID #: 2991 7 (iii) selling products to consumers that are listed for sale online through Amazon, eBay, and Tmart; and (iv) packaging and shipping products to consumers. 30. Plaintiff is informed and believes that Defendants: (i) advertise LED bulbs for sale to consumers not manufactured by Plaintiff using the CREE Trademarks on Amazon, eBay, and Tmart; (ii) advertise for sale portable lighting products, including flashlights, headlamps, and bike lights powered by non-genuine CREE LEDs to consumers not manufactured by Plaintiff or any of Plaintiff’s authorized licensees using the CREE Trademarks on Amazon, eBay, and Tmart; (iii) sell portable lighting products, including flashlights, to consumers powered by non-genuine CREE LEDs not manufactured by Plaintiff or any of Plaintiff’s authorized licensees and bearing counterfeit CREE Trademarks through Amazon, eBay, and Tmart; and (iv) distribute these non- genuine CREE LED bulbs and non-genuine, counterfeit portable lighting products, including flashlights,headlamps, and bike lights, to consumers from Defendants’ warehouse. 31. Plaintiff is informed and believes that Defendants Xiu Ping Chen, Heng Feng Wu, N&K Trading, Inc., and Enumber, Inc. and/or Fujian Zongteng Network Co., Ltd. registered accounts on Amazon, under user IDs “DealPe” and “Tmartz,” to advertise and offer for sale non- genuine LED bulbs and non-genuine and/or counterfeit portable lighting products to consumers using the CREE Trademarks and that Defendants Xiu Ping Chen, Hang Feng Wu, N&K Trading, Inc., and Enumber, Inc. imported, stored, sold, and distributed these non-genuine CREE LED bulbs and non-genuine, counterfeit portable lighting products to consumers in conjunction with Fujian Zongteng Network Co., Ltd. 32. Plaintiff is informed and believes that Defendants Xiu Ping Chen, Heng Feng Wu, N&K Trading, Inc., and Enumber, Inc. and/or Fujian Zongteng Network Co., Ltd. registered accounts on eBay, under user IDs “campingsurvivals,” “hi-autopia,” “hi-etech,” “ownmaxx,” Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 7 of 18 PageID #: 2928Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 8 of 19 PageID #: 2992 8 “worthorder,” “wushushu2011,” “yall-fr,” “yallstore,” and “zone-all,” to advertise and offer for sale non-genuine CREE LED bulbs and non-genuine and/or counterfeit portable lighting products to consumers using the CREE Trademarks and that Defendants Xiu Ping Chen, Hang Feng Wu, N&K Trading, Inc., and Enumber, Inc.imported, stored, sold, and distributed these non-genuine CREE LED bulbs and non-genuine, counterfeit portable lighting products to consumers in conjunction with Fujian Zongteng Network Co., Ltd. 33. Plaintiff is informed and believes that commercial transactions facilitated through eBay account user IDs “campingsurvivals,” “hi-autopia,” “hi-etech,” “ownmaxx,” “worthorder,” “wushushu2011,” “yall-fr,” “yallstore,” and “zone-all,” for non-genuine CREE LED bulbs and non-genuine, counterfeit portable lighting products are completed through PayPal accounts registered to Defendants N&K Trading, Inc. and Enumber, Inc. and that all funds collected on sales of non-genuine CREE LED bulbs and/or non-genuine portable lighting products advertised for sale to consumers using the CREE Trademarks and/or non-genuine, counterfeit portable lighting products sold to consumers powered by non-genuine, counterfeit CREE LEDs and bearing the CREE Trademarks were received and processed by Defendants N&K Trading, Inc. and Enumber, Inc. 34. Plaintiff is informed and believes that Defendants regularly and systematically advertised, marketed, offered for sale, sold, and distributed non-genuine CREE LEDs and portable lighting products, including flashlights,headlamps, and bike lights, powered by non-genuine CREE LEDs to consumers through the Amazon, eBay, and Tmart using the CREE Trademarks. 35. Plaintiff is informed and believes that Defendants regularly and systematically exported portable lighting products, including flashlights, from China into the United States bearing the CREE Trademarks and powered by non-genuine, counterfeit CREE LEDs. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 8 of 18 PageID #: 2929Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 9 of 19 PageID #: 29 3 9 36. Plaintiff is informed and believes that Defendants regularly and systematically imported portable lighting products, including flashlights, into the United States from China bearing the CREE Trademarks and powered by non-genuine, counterfeit CREE LEDs. 37. Plaintiff is informed and believes that Defendants regularly and systematically sold and distributed portable lighting products, including flashlights, to consumers through Amazon, eBay, and Tmart, bearing the CREE Trademarks, powered by non-genuine, counterfeit CREE LEDs and using the CREE Trademarks in listing titles. 38. Through these exportations, importations, advertisements, sales and distributions of non-genuine CREE LED Products and/or non-genuine, counterfeit portable lighting products bearing the CREE Trademarks, Defendants have violated Plaintiff’s exclusive rights in its trademarked materials, goods and services, and use images and marks that are identical to, confusingly similar to and/or constitute counterfeit reproductions of the CREE Trademarks to confuse consumers and aid in the promotion and sales of their unauthorized products. 39. Defendants’ infringing conduct began long after Plaintiff’s adoption and use of the CREE Trademarks, after Plaintiff obtained the trademark registrations alleged above, and after the CREE Trademarks became famous. 40. Defendants’ infringing conduct was committed in bad faith and with the intent to dilute the CREE Trademarks, and to cause confusion and mistake, and to deceive the consuming public and the public at large as to the source, sponsorship and/or affiliation of Defendants, and/or Defendants’ non-genuine, counterfeit goods. 41. In committing these acts, Defendants have, among other things, willfully and in bad faith committed the following acts, all of which have and will continue to cause irreparable harm to Plaintiff: (i) infringed, tarnished, counterfeited and diluted Plaintiff’s rights in the CREE Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 9 of 18 PageID #: 2930Case 1: 6-cv-01065-NG-CLP Document 90-3 il /26/ 10 of 19 PageID #: 2994 10 Trademarks; (ii) dealt in products bearing counterfeit marks; (iii) misled the public into believing there is an association or connection between Defendants, Plaintiff, and Plaintiff’s authorized licensees and/or the products advertised and sold by Defendants, Plaintiff, and Plaintiff’s authorized licensees; (iv) used false designations of origin on or in connection with its goods and services; (v) committed unfair competition; (vi) engaged in trademark counterfeiting; and (vii) unfairly profited from such activity. Unless enjoined, Defendants will continue to cause irreparable harm to Plaintiff. FIRST CAUSE OF ACTION (Trademark Infringement) [15 U.S.C. §1114 / Lanham Act §32(a)] 42. Plaintiff hereby incorporates by reference each of the other allegations set forth elsewhere in this Amended Complaint as though fully set forth in this cause of action. 43. Plaintiff has continuously used its CREE Trademarks in interstate commerce. 44. Plaintiff, as the owners of all right, title and interest in and to the CREE Trademarks, has standing to maintain an action for trademark infringement under 15 U.S.C. §1114. 45. Defendants were actually aware and constructively on notice that Plaintiff is the registered trademark holder of the CREE Trademarks. 46. Defendants did not seek and failed to obtain the consent or authorization of Plaintiff as the registered owner of the CREE Trademarks to deal in, manufacture, export, import, commercially advertise, market, sell, and distribute LED bulbs and/or portable lighting products using and/or bearing the CREE Trademarks into the stream of commerce. 47. Defendants intentionally and knowingly used, in commerce, reproductions, counterfeits, copies and/or colorable imitations of the CREE Trademarks in connection with the Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 10 of 18 PageID #: 2931Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 11 of 19 PageID #: 2995 11 sale, offering for sale, distribution, or advertising of Defendant’s goods by offering, advertising, promoting, selling, and distributing non-genuine LEDs and portable lighting products using the CREE Trademarks and counterfeit portable lighting products bearing the CREE Trademarks. 48. Defendants’ egregious and intentional use and sale of fake and counterfeit items bearing the CREE Trademarks is likely to cause confusion, or to cause mistake, or to deceive, mislead, betray, and defraud consumers who believe that Defendants’ items are authentic products manufactured by Plaintiff or Plaintiff’s authorized licensees. 49. Plaintiff has suffered and will continue to suffer substantial and irreparable injury, loss and damage to its rights in and to the CREE Trademarks and the goodwill associated therewith, for which it has no adequate remedy at law; thus Plaintiff requests injunctive relief. 50. Defendants’ continued and knowing use of the CREE Trademarks without Plaintiff’s consent or authorization constitutes intentional infringement of Plaintiff’s federally registered trademarks in violation of § 32 of the Lanham Act (15 U.S.C. §1114). Based on such conduct, Plaintiff is entitled to injunctive relief as well as monetary damages, and other remedies provided by15 U.S.C. §§ 1116, 1117, and 1118, including Defendants’ profits, treble damages, reasonable attorneys’ fees, costs, statutory damages and/or prejudgment interest. SECOND CAUSE OF ACTION (False Designation of Origin & Unfair Competition) [15 U.S.C. §1125(a) / Lanham Act §43(a)] 51. Plaintiff hereby incorporates by reference each of the other allegations set forth elsewhere in this Amended Complaint as though fully set forth in this cause of action. 52. Plaintiff, as the owner of all common law right, title, and interest in and to the CREE Trademarks, has standing to maintain an action for false designation of origin and unfair Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 11 of 18 PageID #: 2932Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 2 of 19 PageID #: 2996 12 competition under 15 U.S.C. §1125. 53. Plaintiff’s CREE Trademarks are fanciful, inherently distinctive and/or have acquired distinctiveness and secondary meaning. 54. Defendants have without authorization, on or in connection with its goods and services, used in commerce marks which are identical the CREE Trademarks, confusingly similar to the CREE Trademarks, and have made false designations of origin which are likely to cause confusion or cause mistake or to deceive as to the affiliation, connection or association of Defendants with Plaintiff and/or Plaintiff’s authorized licensees, and as to the origin, sponsorship or approval of Defendants’ goods or services or commercial activities. 55. Defendants’ infringing conduct described above violates the Lanham Act, and Defendants have unfairly competed with and injured and, unless immediately restrained, will continue to injure Plaintiff, causing damage to Plaintiff in an amount to be determined at trial, and will cause irreparable injury to Plaintiff’s goodwill and reputation associated with the value of the CREE Trademarks. 56. Defendants infringing conduct has been knowing, deliberate, willful, intended to cause confusion, or to cause mistake or to deceive and in blatant disregard of Plaintiff’s rights. 57. Defendants knew, or by the exercise of reasonable care should have known, that their adoption and use, in commerce, of the CREE Trademarks would cause confusion, mistake, or deception among purchasers, users and the public. 58. Defendants’ egregious and intentional use of CREE Trademarks, sale of non- genuine LEDs and portable lighting products, and sale of counterfeit portable lighting products, bearing the CREE Trademarks unfairly competes with Plaintiff and is likely to cause confusion, mistake, or to deceive, mislead, betray, and defraud consumers to believe that the substandard Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 12 of 18 PageID #: 2933Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 13 of 19 PageID #: 2997 13 imitations are genuine CREE LEDs, CREE LED Products and/or authorized third party portable lighting products manufactured by Plaintiff’s authorized licensees. 59. Defendants’ continuing and knowing use of the CREE Trademarks constitutes false designation of origin and unfair competition in violation of § 43(a) of the Lanham Act (15 U.S.C. §1125(a)), causing Plaintiff to suffer substantial and irreparable injury for which it has no adequate remedy at law. 60. Defendants’ infringing conduct has permitted or will permit it to make substantial sales and profits on the strength of Plaintiff’s marketing, advertising, sales and consumer recognition. As a direct and proximate result of Defendants’ wrongful conduct, as alleged herein, Plaintiff has been and will be deprived of sales of CREE LEDs and/or CREE LED Products in an amount as yet unknown but to be determined at trial, and has been deprived and will be deprived of the value of its CREE Trademarks as commercial assets in an amount as yet unknown but to be determined at trial. 61. Based on Defendants’ wrongful conduct, Plaintiff is entitled to injunctive relief as well as monetary damages, and other remedies as provided by the Lanham Act, including Defendants’ profits, treble damages, reasonable attorneys’ fees, costs and prejudgment interest. THIRD CAUSE OF ACTION (Dilution) [15 U.S.C. §1125(c)] 62. Plaintiff hereby incorporates by reference each of the other allegations set forth elsewhere in this Amended Complaint as though fully set forth in this cause of action. 63. Plaintiff’s CREE Trademarks are distinctive and famous within the meaning of the Lanham Act. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 13 of 18 PageID #: 2934Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 14 of 19 PageID #: 2998 14 64. Defendants’ infringing conduct began long after Plaintiff’s mark became famous, and Defendants acted knowingly, deliberately and willfully with the intent to trade on Plaintiff’s reputation and to dilute Plaintiff’s asserted marks. Defendants’ conduct is willful, wanton and egregious. 65. Defendants’ intentional sale of fake, pirated and counterfeit items bearing Plaintiff’s marks is likely to cause confusion, mistake, or to deceive, mislead, betray, and defraud consumers to believe that the substandard imitations are genuine CREE LEDs, CREE LED Products and/or authorized third party portable lighting products manufactured by Plaintiff’s authorized licensees. The actions of Defendants complained of herein have diluted and will continue to dilute Plaintiff’s asserted and other marks, and are likely to impair the distinctiveness, strength and value of Plaintiff’s marks, and injure the business reputation of Plaintiff and their marks. 66. Defendants’ acts have caused and will continue to cause Plaintiff irreparable harm, and Plaintiff has no adequate remedy at law to compensate it fully for the damages that have been caused and which will continue to be caused by Defendants’ unlawful acts, unless they are enjoined by this Court. 67. As the acts alleged herein constitute a willful violation of § 43(c) of the Lanham Act, 15 U.S.C. § 1125(c), Plaintiff is entitled to injunctive relief as well as monetary damages and other remedies provided by 15 U.S.C. §§1116, 1117, 1118, and 1125(c), including Defendants’ profits, actual and statutory damages, treble damages, reasonable attorney’s fees, costs and prejudgment interest. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 14 of 18 PageID #: 2935Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 15 of 19 PageID #: 2999 15 FOURTH CAUSE OF ACTION (Contributory Trademark Infringement) 68. Plaintiff hereby incorporates by reference each of the other allegations set forth elsewhere in this Amended Complaint as though fully set forth in this cause of action. 69. Defendants are and at the time of their actions complained of herein were actually aware and constructively on notice that Plaintiff is the registered owner of the CREE Trademarks. 70. Defendants did not seek and failed to obtain the consent or authorization of Plaintiff, as the registered owners of the CREE Trademarks, to use the CREE Trademarks to deal in and commercially distribute, advertise and sell products to consumers. 71. Defendants knew or should have known that the products they were dealing in, distributing, selling, and/or advertising directly and/or on behalf of a third party were non-genuine, counterfeit products infringing upon the CREE Trademarks. 72. As a proximate result of Defendants’ contributory actions infringing upon the CREE Trademarks, Plaintiff been damaged. FIFTH CAUSE OF ACTION (Vicarious Trademark Infringement) 73. Plaintiff hereby incorporates by reference each of the other allegations set forth elsewhere in this Amended Complaint as though fully set forth in this cause of action. 74. Defendants have infringed upon the CREE Trademarks by importing, selling, and distributing non-genuine, counterfeit LEDs and portable lighting products to consumers that were advertised for sale through online accounts established on Amazon and eBay. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 15 of 18 PageID #: 2936Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 16 of 19 PageID #: 3000 16 75. By selling and distributing non-genuine, counterfeit LEDs and portable lighting products to consumers, Defendants had the right and ability to control the infringing conduct and had a direct financial interest in such activities. 76. As a proximate result of Defendants’ vicarious infringement, Plaintiff has been damaged. PRAYER FOR RELIEF WHEREFORE, Plaintiff Cree, Inc. prays for judgment against Defendants Xiu Ping Chen, Hang Feng Wu a/k/ Nick Wu, N&K Trading, Inc., Enumber, Inc. and Does 1-10, inclusive, and each of them, as follows: 1. For an award of Defendants’ profits and Plaintiff’s damages in an amount to be proven at trial for trademark infringement under 15 U.S.C. §1114(a); 2. For treble damages suffered by Plaintiff as a result of Defendants’ willful and intentional infringements under 15 U.S.C. §1117(b); 3. For an award of Defendants’ profits and Plaintiff’s damages in an amount to be proven at trial for false designation of origin and unfair competition under 15 U.S.C. §1125(a); 4. For an award of Defendants’ profits and Plaintiff’s damages in an amount to be proven at trial for trademark dilution under 15 U.S.C. §1125(c); 5. In the alternative to actual damages and Defendants’ profits for the infringement and counterfeiting of Plaintiff’s trademarks pursuant to the Lanham Act, for statutory damages pursuant to 15 U.S.C. §1117(c), which election Plaintiff will make prior to the rendering of final judgment; 6. For $2,000,000.00 per counterfeit mark, per type of goods sold, offered for sale, or distributed under 15 U.S.C. §1117(c). Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 16 of 18 PageID #: 2937Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 17 of 19 PageID #: 3001 17 7. For temporary, preliminary and permanent injunctive relief from this Court prohibiting Defendants from engaging or continuing to engage in the unlawful, unfair, or fraudulent business acts or practices described herein, including the advertising and/or dealing in any counterfeit product; the unauthorized use of any trademark; acts of trademark infringement or dilution; false designation of origin; unfair competition; and any other act in derogation of Plaintiff’s rights; 8. For an order from the Court requiring that Defendants provide complete accountings and for equitable relief, including that Defendants disgorge and return or pay their ill- gotten gains obtained from the illegal transactions entered into and or pay restitution, including the amount of monies that should have been paid if Defendants complied with their legal obligations, or as equity requires; 9. For an order from the Court that an asset freeze or constructive trust be imposed over all monies and profits in Defendants’ possession which rightfully belong to Plaintiff; 10. For an order requiring deliverance, for destruction, of the infringing articles in Defendants’ possession under 15 U.S.C. §1118; 11. For damages in an amount to be proven at trial for unjust enrichment; 12. For an award of exemplary or punitive damages in an amount to be determined by the Court; 13. For Plaintiff’s reasonable attorney’s fees; 14. For all costs of suit; and 15. For such other and further relief as the Court may deem just and equitable. Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 17 of 18 PageID #: 2938Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 18 of 19 PageID #: 3002 18 Dated: November 16, 2016 JOHNSON & PHAM, LLP By: ___/s/ Marcus F. Chaney____________ Marcus F. Chaney, Esq. * 6355 Topanga Canyon Blvd., Suite 326 Woodland Hills, CA 91367 Tel: (818) 888-7540 E-mail: mchaney@johnsonpham.com * Admitted pro hac vice Attorneys for Plaintiff DEMAND FOR JURY TRIAL Plaintiff Cree, Inc. respectfully demands a trial by jury in this action pursuant to Rule 38 of the Federal Rules of Civil Procedure. Dated: November 16, 2016 JOHNSON & PHAM, LLP By: ___/s/ Marcus F. Chaney____________ Marcus F. Chaney, Esq. * 6355 Topanga Canyon Blvd., Suite 326 Woodland Hills, CA 91367 Tel: (818) 888-7540 E-mail: mchaney@johnsonpham.com * Admitted pro hac vice Attorneys for Plaintiff Case 1:16-cv-01065-NG-CLP Document 81 Filed 05/01/17 Page 18 of 18 PageID #: 2939Case 1:16-cv-01065-NG-CLP Document 90-3 Filed 05/26/17 Page 19 of 19 PageID #: 3003 Exhibit 2 Case 1:16-cv-01065-NG-CLP Document 90-4 Filed 05/26/17 Page 1 of 3 PageID #: 3004 1/18/2017 Trademark Electronic Search System (TESS) http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:aanhd2.2.1 1/2 United States Patent and Trademark Office Home|Site Index|Search|FAQ|Glossary|Guides|Contacts|eBusiness|eBiz alerts|News|Help Trademarks > Trademark Electronic Search System (TESS) TESS was last updated on Wed Jan 18 03:21:03 EST 2017 Logout Please logout when you are done to release system resources allocated for you. Record 1 out of 1 ( Use the "Back" button of the Internet Browser to return to TESS) Word Mark XML Goods and Services IC 009. US 021 023 026 036 038. G & S: Light emitting diodes (LEDs); semiconductor devices and LEDs, particularly for use in lighting apparatus, lighting fixtures, downlights, table lamps, light bulbs, flashlights, headlamps, motor vehicle lighting, and portable lighting. FIRST USE: 20101105. FIRST USE IN COMMERCE: 20101105 Standard Characters Claimed Mark Drawing Code (4) STANDARD CHARACTER MARK Serial Number 87218890 Filing Date October 28, 2016 Current Basis 1A Original Filing Basis 1A Owner (APPLICANT) Cree, Inc. CORPORATION NORTH CAROLINA 4600 Silicon Drive Durham NORTH CAROLINA 27703 Attorney of Record William M. Bryner Type of Mark TRADEMARK Register PRINCIPAL Live/Dead Indicator LIVE Case 1:16-cv-01065-NG-CLP Document 90-4 Filed 05/26/17 Page 2 of 3 PageID #: 3005 1/18/2017 Trademark Electronic Search System (TESS) http://tmsearch.uspto.gov/bin/showfield?f=doc&state=4809:aanhd2.2.1 2/2 |.HOME | SITE INDEX| SEARCH | eBUSINESS | HELP | PRIVACY POLICY Case 1:16-cv-01065-NG-CLP Document 90-4 Filed 05/26/17 Page 3 of 3 PageID #: 3006 Exhibit 3 Case 1:16-cv-01065-NG-CLP Document 90-5 Filed 05/26/17 Page 1 of 4 PageID #: 3007 Expand All Expand All Cree.com / LED Components / Support / Cree LEDs Branding Program and Partners Cree LEDs Branding Program and Partners Cree LEDs Branding Partners Cree LEDs can be found in numerous lighting products manufactured by many different companies. Manufacturers that use Cree LEDs in their products and have formally entered into a branding agreement with Cree are listed below (organized by application). It is important to note that Cree does not manufacture products such as flashlights, agricultural grow lights or automotive lighting accessories. Please contact Cree Customer Service should you require further clarification. View Cree LEDs Branding Partners by Category: • Indoor Lighting • Outdoor Lighting • Specialty Lighting • Portable Lighting Cree LEDs Branding Partner Program Cree is recognized in the industry by both lighting manufacturers and lighting customers for its technology, innovation, high-performing products as well as its commitment to driving LED lighting adoption. Cree’s strong brand position can increase the visibility and profitability of your products. As an LEDs Branding Partner, you will: • Give your customers the confidence of knowing that your luminaire is powered with the highest-quality LEDs • Provide your customers with the assurance that your luminaire design has been evaluated by Cree • Benefit from branding your products with Cree LEDs logo • Benefit from branding your customer literature, product packaging and website content with the Cree LEDs logo • Gain exposure through Cree’s website Please contact your Cree sales person for more information about joining the Cree LEDs Branding Program. Indoor Lighting Non-Directional Lighting ◦ A & E replacement lamps ◦ chandeliers ◦ sconces ◦ table lamps ◦ floor lamps ◦ vanity fixtures ◦ indoor safety lighting ⇣ Cree Branded Partners for Non-Directional lighting Directional Lighting ◦ MR replacement lamps ◦ PAR replacement lamps ◦ BR replacement lamps ◦ accent ◦ track ◦ spot ⇣ Cree Branded Partners for Directional lighting Downlighting ◦ recessed ◦ can ◦ pendant ◦ surface-mount ◦ solar tubes ⇣ Cree Branded Partners for Downlighting Distributed Lighting ◦ troffers ◦ T8 replacements ◦ refrigerated display ◦ under-cabinet ◦ retail display ◦ wall-wash ⇣ Cree Branded Partners for Distributed lighting Low and High-Bay Lighting ◦ 30 feet and above ◦ 11 to 29 feet ◦ 10 feet and below ◦ arena ◦ stadium ⇣ Cree Branded Partners for Low and High-Bay Lighting Outdoor Lighting Page 1 of 3Cree LED Components and Modules: The Cree LEDs Branding Partner Program 1/20/2017http://www.cree.com/LED-Components-and-Modules/Tools-and-Support/LEDs-Branding-... Case 1:16-cv-01065-NG-CLP Document 90-5 Filed 05/26/17 Page 2 of 4 PageID #: 3008 PRODUCTS & SOLUTIONS LED Bulbs LED Lighting LED Components LED Chips Wolfspeed Power | RF WHERE TO BUY LED Bulbs LED Lighting LED Components LED Chips Wolfspeed Power | RF ABOUT CREE What is Better Light? News Events Investors Careers Community Engagement CONTACT CREE Customer Support Contact Forms Licensing Small Business Recalls Expand All Expand All Roadway & Parking Lighting ◦ canopy ◦ tunnel ◦ parking garage ◦ road ◦ street ◦ parking lot ⇣ Cree Branded Partners for Roadway & Parking lighting Exterior Area Lighting ◦ wall pack ◦ post top ◦ bollard ◦ coach ◦ security ◦ exterior sconce ◦ underwater ◦ hazard ⇣ Cree Branded Partners for Exterior Area lighting Landscaping ◦ spot ◦ path ◦ step ◦ deck ◦ accent ⇣ Cree Branded Partners for Landscape Lighting Specialty Lighting Entertainment Lighting ◦ studio ◦ stage ◦ production ⇣ Cree Branded Partners for Entertainment lighting Horticulture Lighting ◦ high-bay ◦ linear strips ◦ troffers ⇣ Cree Branded Partners for Horticulture lighting Vehicle Lighting ◦ light bars ◦ spotlights ◦ headlights ⇣ Cree Branded Partners for Vehicle lighting Portable Lighting Consumer Portable Lighting ◦ flashlight / torch ◦ head lamp ◦ lantern ◦ bike ⇣ Cree Branded Partners for Consumer Portable lighting High-End Portable Lighting ◦ weapon ◦ tactical flashlight ◦ cave light ◦ underwater torch ⇣ Cree Branded Partners for High-End Portable lighting Page 2 of 3Cree LED Components and Modules: The Cree LEDs Branding Partner Program 1/20/2017http://www.cree.com/LED-Components-and-Modules/Tools-and-Support/LEDs-Branding-... Case 1:16-cv-01065-NG-CLP Document 90-5 Filed 05/26/17 Page 3 of 4 PageID #: 3009 Copyright © 2016 Cree, Inc. All rights reserved. Terms of Use | Privacy Policy STAY CONNECTED WITH CREE History Page 3 of 3Cree LED Components and Modules: The Cree LEDs Branding Partner Program 1/20/2017http://www.cree.com/LED-Components-and-Modules/Tools-and-Support/LEDs-Branding-... Case 1:16-cv-01065-NG-CLP Document 90-5 Filed 05/26/17 Page 4 of 4 PageID #: 3010 Exhibit 4 Case 1:16-cv-01065-NG-CLP Document 90-6 Filed 05/26/17 Page 1 of 15 PageID #: 3011 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MEYLAN DAVITT JAIN AREVIAN & KIM LLP BENEDETTO L. BALDING (State Bar No. 244508) 444 South Flower Street, Suite 1850 Los Angeles, CA 90071 Telephone: (213) 225-6000 Facsimile: (213) 225-6660 bbalding@MDJAlaw.com SCHLAM STONE & DOLAN LLP ELIZABETH WOLSTEIN (pro hac vice forthcoming) 26 Broadway, 19th Floor New York, New York 10004 Telephone: (212) 344-5400 Facsimile: (212) 344-7677 ewolstein@schlamstone.com Attorneys for Defendants Xiu Ping Chen a/k/a Randy Chen, Hang Feng Wu a/k/a Nick Wu, and N&K Trading, Inc. UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA WESTERN DIVISION CREE, INC., a North Carolina Corporation, Plaintiff, v. XIU PING CHEN aka RANDY CHEN, an Individual; XIU MIN CHEN, an Individual; XIU JUAN CHEN, an Individual; HANG FENG WU aka NICK WU, an Individual; N&K TRADING, INC., a New Jersey Corporation; and DOES 1-10, inclusive, Defendants. Case No.: 2:15-cv-08118 RGK (PLAx) ANSWER OF DEFENDANTS XIU PING CHEN aka RANDY CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC. TO COMPLAINT; DEMAND FOR JURY TRIAL ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 1 of 14 Page ID #:124 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 2 f 5 PageID #: 3012 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Defendants XIU PING CHEN aka RANDY CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC. (collectively, “Defendants”), by their attorneys, MEYLAN DAVITT JAIN AREVIAN & KIM LLP and SCHLAM STONE & DOLAN LLP, answer the Complaint For Damages and Declaratory Relief of Plaintiff CREE, INC. (“Plaintiff” or “Cree”) as follows: PARTIES 1. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 1 of the Complaint. 2. Defendants deny the allegations in paragraph 2 of the Complaint, except admit that Xiu Ping Chen resides in New York, and that prior to 2014 Xiu Ping Chen served as President of N&K Trading. 3. Defendants deny the allegations in paragraph 3 of the Complaint. 4. Defendants deny the allegations in paragraph 4 of the Complaint. 5. Defendants deny the allegations in paragraph 5 of the Complaint, except admit that Defendant NICK WU is CEO of N&K Trading, Inc. (“N&K”) and was CEO of Yall, Inc. and resides in New York, and deny knowledge or information sufficient to form a belief as to what Plaintiff means by “all intervening times.” 6. Defendants deny the allegations in paragraph 6 of the Complaint, except admit that N&K Trading, Inc. is a New Jersey Corporation. 7. Defendants deny the allegations in paragraph 7 of the Complaint. 8. Defendants deny the allegations in paragraph 8 of the Complaint. 9. Defendants deny the allegations in paragraph 9 of the Complaint. 10. Defendants deny the allegations in paragraph 10 of the Complaint. 11. Defendants deny the allegations in paragraph 11 of the Complaint. 12. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 12 of the Complaint. 13. Defendants deny the allegations in paragraph 13 of the Complaint. 14. Defendants deny the allegations in paragraph 14 of the Complaint. -1- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 2 of 14 Page ID #:125 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 3 f 5 PageID #: 3013 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 15. Defendants state that paragraph 15 of the Complaint states a legal conclusion to which no response is required. To the extent a response is required, Defendants admit that this Court has subject matter jurisdiction over claims that assert violation of the Lanham Act. 16. Defendants deny the allegations in paragraph 16 of the Complaint. 17. Defendants deny the allegations in paragraph 17 of the Complaint. 18. Defendants deny the allegations in paragraph 18 of the Complaint. GENERAL ALLEGATIONS Plaintiff and their (sic) Well-Known CREE Brand and Products 19. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 19 of the Complaint. 20. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 20 of the Complaint. 21. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 21 of the Complaint. 22. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 22 of the Complaint. 23. Defendants deny the allegations in paragraph 23 of the Complaint. 24. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 24 of the Complaint. 25. Defendants deny the allegations in paragraph 25 of the Complaint. Defendants’ Wrongful and Infringing Conduct 26. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 26 of the Complaint. 27. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 27 of the Complaint. 28. Defendants deny the allegations in paragraph 28 of the Complaint. -2- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 3 of 14 Page ID #:126 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 4 f 5 PageID #: 3014 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 29. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 29 of the Complaint. 30. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 30 of the Complaint 31. Defendants deny the allegations in paragraph 31 of the Complaint. 32. Defendants deny the allegations in paragraph 32 of the Complaint. 33. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 33 of the Complaint. 34. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 34 of the Complaint. 35. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 35 of the Complaint. 36. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 36 of the Complaint. 37. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 37 of the Complaint. 38. Defendants deny the allegations in paragraph 38 of the Complaint. 39. Defendants deny the allegations in paragraph 39 of the Complaint. 40. Defendants deny the allegations in paragraph 40 of the Complaint. 41. Defendants deny the allegations in paragraph 41 of the Complaint. FIRST CAUSE OF ACTION (Infringement of Registered Trademarks Against Defendants XIU PING CHEN aka RANDY CHEN, XIU MIN CHEN, XIU JUAN CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC.) [15 U.S.C. § 1114/Lanham Act § 32(a)] 42. Defendants incorporate by reference their responses to each and every one of Plaintiff’s allegations set forth elsewhere in this Complaint as though fully set forth in this paragraph. -3- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 4 of 14 Page ID #:127 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 5 f 5 PageID #: 3015 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 43. Defendants deny the allegations in paragraph 43 of the Complaint. 44. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 44 of the Complaint. 45. Defendants deny the allegations in paragraph 45 of the Complaint. 46. Defendants deny the allegations in paragraph 46 of the Complaint. 47. Defendants deny the allegations in paragraph 47 of the Complaint. 48. Defendants deny the allegations in paragraph 48 of the Complaint. 49. Defendants deny the allegations in paragraph 49 of the Complaint. 50. Defendants deny the allegations in paragraph 50 of the Complaint. 51. Defendants deny the allegations in paragraph 51 of the Complaint. 52. Defendants deny the allegations in paragraph 52 of the Complaint. SECOND CAUSE OF ACTION (False Designation of Origin & Unfair Competition Against Defendants XIU PING CHEN aka RANDY CHEN, XIU MIN CHEN, XIU JUAN CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC) [15 U.S.C. § 1125(a)/Lanham Act § 43(a)] 53. Defendants incorporate by reference their responses to each and every one of Plaintiff’s allegations set forth elsewhere in this Complaint as though fully set forth in this paragraph. 54. Defendants deny knowledge or information sufficient to form a belief as to the truth of the allegations in paragraph 54 of the Complaint. 55. Defendants deny the allegations in paragraph 55 of the Complaint. 56. Defendants deny the allegations in paragraph 56 of the Complaint. 57. Defendants deny the allegations in paragraph 57 of the Complaint. 58. Defendants deny the allegations in paragraph 58 of the Complaint. 59. Defendants deny the allegations in paragraph 59 of the Complaint. 60. Defendants deny the allegations in paragraph 60 of the Complaint. 61. Defendants deny the allegations in paragraph 61 of the Complaint. -4- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 5 of 14 Page ID #:128 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 6 f 5 PageID #: 3016 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 62. Defendants deny the allegations in paragraph 62 of the Complaint. THIRD CAUSE OF ACTION (Dilution Against Defendants XIU PING CHEN aka RANDY CHEN, XIU MIN CHEN, XIU JUAN CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC.) [15 U.S.C. § 1125(c)] 63. Defendants incorporate by reference their responses to each and every one of Plaintiff’s allegations set forth elsewhere in this Complaint as though fully set forth in this paragraph. 64. Defendants deny the allegations in paragraph 64 of the Complaint. 65. Defendants deny the allegations in paragraph 65 of the Complaint. 66. Defendants deny the allegations in paragraph 66 of the Complaint. 67. Defendants deny the allegations in paragraph 67 of the Complaint. 68. Defendants deny the allegations in paragraph 68 of the Complaint. FOURTH CAUSE OF ACTION (Unlawful, Unfair, Fraudulent Business Practices Against Defendants XIU PING CHEN aka RANDY CHEN, XIU MIN CHEN, XIU JUAN CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC.) [California Business & Professions Code § 17200 et seq.] 69. Defendants incorporate by reference their responses to each and every one of Plaintiff’s allegations set forth elsewhere in this Complaint as though fully set forth in this paragraph. 70. Defendants deny the allegations in paragraph 70 of the Complaint. 71. Defendants deny the allegations in paragraph 71 of the Complaint. 72. Defendants deny the allegations in paragraph 72 of the Complaint. 73. Defendants deny the allegations in paragraph 73 of the Complaint. 74. Defendants deny the allegations in paragraph 74 of the Complaint. 75. Defendants deny the allegations in paragraph 75 of the Complaint. -5- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 6 of 14 Page ID #:129 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 7 f 5 PageID #: 3017 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 76. Defendants deny the allegations in the first sentence of paragraph 76 of the Complaint. Defendants state that the second sentence of paragraph 76 states a request for relief, to which no response is required. To the extent a response is required, Defendants deny that Plaintiff is entitled to injunctive relief, or any relief at all. 77. Defendants state that paragraph 77 states a request for relief, to which no response is required. To the extent a response is required, Defendants deny that Plaintiff is entitled to a court order for an asset freeze or constructive trust, or any relief at all, and Defendants deny that they are in possession of any money or assets which rightfully belong to Plaintiff. The paragraph beginning with the word “WHEREFORE” and all subsequent paragraphs, including all numbered paragraphs on pages 22 through 23 of the Complaint, state Plaintiff’s request for relief, to which no response is required. To the extent a response is required, Defendants deny that Plaintiff is entitled to the requested relief, or any relief whatsoever. AFFIRMATIVE DEFENSES FIRST AFFIRMATIVE DEFENSE (Failure to State A Claim) The Complaint fails to state a claim upon which relief may be granted because Plaintiff’s claimed trademark for flashlights is invalid for lack of use in commerce, in that Plaintiff does not manufacture or sell flashlights. SECOND AFFIRMATIVE DEFENSE (Failure to State A Claim) The Complaint fails to state a claim upon which relief may be granted based on Plaintiff’s purported counterfeiting theory because Plaintiff does not manufacture or sell flashlights. The legal theory underlying all of Plaintiff’s claims is that the flashlights purchased by Plaintiff’s investigator were “counterfeit CREE products.” See, e.g., Complaint ¶¶18, 32, 33-38, 39, 47, 48, 49, 58, 59, 66, 70, 71. Plaintiff, however, does not manufacture or sell flashlights. Consequently, any flashlight purportedly bearing -6- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 7 of 14 Page ID #:130 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 8 f 5 PageID #: 3018 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Plaintiff’s alleged marks purportedly purchased by Plaintiff’s investigator cannot have been a “counterfeit product” as a matter of law. THIRD AFFIRMATIVE DEFENSE (Failure To State A Claim) The Complaint fails to state a claim upon which relief may be granted because Plaintiff’s alleged trademark is no longer, if it ever was, a source indicator for flashlights. Plaintiff has acquiesced in widespread unauthorized use of its alleged mark by third parties that is unpoliced by Plaintiff and that has rendered Plaintiff’s alleged mark without significance as to the source of the goods, at least for flashlights. A simple internet search for “Cree flashlight” returns more than one million hits. Yet as noted, Cree does not make or sell flashlights, nor upon information and belief does the company license its alleged mark to any flashlight maker. Yet there are tens of thousands of flashlights bearing Plaintiff’s alleged mark that are offered for sale over the internet by dozens if not hundreds of sellers, including e-commerce giants Amazon and Walmart, whose sales upon information and belief Plaintiff has never sought to police. A small sample of the vast third-party uses of Plaintiff’s alleged mark on flashlights is attached hereto as Exhibit A. Plaintiff’s alleged mark appears on the popular Chinese flashlight brand UltraFire, as well as on brands such as Outlite, Refun, RockBirds, UniqueFire, TrustFire, and Lumintop, to name a few of the many offered for sale all over the internet. Unlike Amazon, Walmart, and the flashlight manufacturers whose products these and other internet sellers offer for sale, N&K does not make, advertise, market, or offer for sale any flashlights bearing Cree’s purported mark but merely fulfills orders placed through websites maintained by other entities. Yet Plaintiff chooses to bully N&K, a mom and pop small family business, with false accusations of counterfeiting while allowing massive volumes of unauthorized third-party unlicensed uses by the big players to go unpoliced. -7- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 8 of 14 Page ID #:131 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 9 f 5 PageID #: 3019 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 FOURTH AFFIRMATIVE DEFENSE (Failure To State A Claim) The Complaint fails to state a claim upon which relief may be granted for dilution under federal and/or California law because (i) Cree’s alleged mark is not “famous,” as a matter of law, within the meaning of the Lanham Act and analogous California law, if any, and (ii) the name “Cree” is in use by and has been trademarked and registered as a trademark by many other companies. Additionally, there are many and multiple uses of the word Cree in myriad corporate names in states such as New York and Delaware. FIFTH AFFIRMATIVE DEFENSE (Unclean Hands: Fraud on the Court) Plaintiff’s claims are barred by the doctrine of unclean hands based on its false and misleading allegations advancing a counterfeiting theory of trademark infringement and related claims—brought for the purpose of beating down a mom and pop family fulfillment business to make room for Cree to enter the fulfillment services space with one less competitor, as evidenced by its 2014 “intent to use” trademark application for “order fulfillment services,” see Exhibit B hereto—when Plaintiff knows it does not manufacture or sell flashlights, so that a flashlight that says “Cree” on it is not a counterfeit flashlight. The operative factual allegations of the Complaint are that plaintiff’s investigator purchased several flashlights from websites alleged to belong to Defendants—in fact, however, Defendants do not own, operate, or maintain any websites that sell goods to consumers—he then “inspected” “the flashlight products” “to determine authenticity,” and concluded that the flashlights “were in fact counterfeit CREE products.” Complaint ¶38. These allegations charge Defendants with selling counterfeit products even though Plaintiff knows that any flashlight bearing Plaintiff’s alleged mark cannot be counterfeit because Plaintiff does not make or sell flashlights. This is not merely loose language, but a deliberate choice to mislead the Court by painting a false picture of Defendants as counterfeiters in the mold of street sellers of, say, fake Louis Vuitton bags or Chanel sunglasses. Such fraud on the court precludes -8- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 9 of 14 Page ID #:132Case 1:16-cv-01065-NG-CL Document 90- il 05/26/ 7 10 of 15 ID #: 30 0 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 Plaintiff from obtaining any relief and warrants swift dismissal of its Complaint with prejudice and appropriate sanctions, including attorneys’ fees. SIXTH AFFIRMATIVE DEFENSE (Unclean Hands: Fraud On The Patent and Trademark Office) In obtaining its two trademark registrations for flashlights in 2011, Cree was required to state under oath, and did state under oath, that it used flashlights in commerce. Upon information and belief Cree’s statement was false because Cree did not manufacture or sell flashlights at the time, or it engaged in de minimis use that did not make it eligible to register its alleged trademark for flashlights. Plaintiff’s application was therefore fraudulent, its registration is fraudulent, and the registration is subject to cancellation on that basis. Plaintiff’s unclean hands preclude Plaintiff from obtaining any relief and warrant swift dismissal of its Complaint with prejudice and appropriate sanctions, including attorneys’ fees. SEVENTH AFFIRMATIVE DEFENSE (Unclean Hands: Fraud On The Court) Even if Plaintiff once did manufacture or sell flashlights, the filing of this action commits a fraud on the Court because as of the filing of this action Plaintiff was not and is not using its alleged trademark for flashlights. Plaintiff knew at the time it filed this action that it was not using its alleged mark on flashlights yet asserts as the gravamen of its Complaint the counterfeiting of Cree flashlights—which Cree does not make or use—by Defendants. Plaintiff’s fraud and unclean hands bar Plaintiff from obtaining any relief and warrant swift dismissal of the Complaint with prejudice and appropriate sanctions, including attorneys’ fees. EIGHTH AFFIRMATIVE DEFENSE (Cancellation of Invalid Trademarks) Plaintiff’s ongoing fraudulent conduct warrants cancellation of its trademarks at least for flashlights. Plaintiff was not using its alleged trademark for flashlights when it registered the alleged mark in 2011; was not using its alleged trademark for flashlights -9- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 10 of 14 Page ID #:133 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 1 f 5 PageID #: 3021 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 when it filed this action in October 2015; and despite that it was not using the alleged trademark and does not manufacture or sell flashlights, is misleading the Court by knowingly falsely claiming that Defendants are dealing in supposedly counterfeit Cree flashlights. Cree’s fraudulent conduct and misuse of its alleged trademark to attempt to extract a settlement from Defendants warrants cancellation of its alleged trademark for flashlights. And because Plaintiff’s registration for flashlights also registers LED lighting fixtures, light bulbs, lighting fixtures, and spotlights, cancellation of the registration for flashlights will also cancel registration of Cree’s alleged trademarks for these products. Defendants reserve the right to file a counterclaim for cancellation of Plaintiff’s trademark registration for flashlights, LED lighting fixtures, light bulbs, lighting fixtures, and spotlights. NINTH AFFIRMATIVE DEFENSE (Lack of Personal Jurisdiction) The Court lacks personal jurisdiction over all the defendants. Among other things, and contrary to Plaintiff’s allegations, Defendants do not operate, maintain, or use any website, interactive or otherwise, to market, offer for sale, or sell goods to customers or potential customers in California. TENTH AFFIRMATIVE DEFENSE (Improper Venue) Venue does not lie in this District because no Defendant resides in this District and this is not a “judicial district in which a substantial part of the events or omissions giving rise to the claim occurred.” 28 U.S.C. § 1391(b). ELEVENTH AFFIRMATIVE DEFENSE (No Good Faith Claim Against Individual Defendants) Plaintiff has no good faith basis for the allegations in paragraphs 8 through 11, alleging that N&K Trading is undercapitalized and failed to observe corporate formalities, and that the individual defendants are the alter egos of N&K, and those allegations should be stricken. -10- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 11 of 14 Page ID #:134 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 2 f 5 PageID #: 3022 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DATED: December 18, 2015 MEYLAN DAVITT JAIN AREVIAN & KIM LLP SCHLAM STONE & DOLAN LLP By: /s/ Benedetto L. Balding, Esq. Attorneys for Defendants XIU PING CHEN aka RANDY CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC. -11- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 12 of 14 Page ID #:135 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 3 f 5 PageID #: 3023 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 DEMAND FOR JURY TRIAL Defendants XIU PING CHEN aka RANDY CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC., respectfully demand a jury trial on all issues so triable in this action pursuant to Local Rule 38-1. DATED: December 18, 2015 MEYLAN DAVITT JAIN AREVIAN & KIM LLP SCHLAM STONE & DOLAN LLP By: /s/ Benedetto L. Balding, Esq. Attorneys for Defendants XIU PING CHEN aka RANDY CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC. -12- ANSWER TO COMPLAINT MEYLAN DAVITT JAIN AREVIAN & KIM LLP Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 13 of 14 Page ID #:136 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 4 f 5 PageID #: 3024 CERTIFICATE OF SERVICE 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 MEYLAN DAVITT JAIN AREVIAN & KIM LLP CERTIFICATE OF SERVICE I hereby certify that on December 18, 2015, I electronically filed the foregoing ANSWER OF DEFENDANTS XIU PING CHEN aka RANDY CHEN, HANG FENG WU aka NICK WU, and N&K TRADING, INC. TO COMPLAINT; DEMAND FOR JURY TRIAL with the Clerk of the Court using the CM/ECF system which will send notification of such filing via electronic mail to all counsels of record. /s/ Christina Yi Case 2:15-cv-08118-RGK-PLA Document 16 Filed 12/18/15 Page 14 of 14 Page ID #:137 1: 6- - 1065-N -CLP Document 90- il 05/26/ 7 5 f 5 PageID #: 3025 Exhibit 5 Case 1:16-cv-01065-NG-CLP Document 90-7 Filed 05/26/17 Page 1 of 4 PageID #: 3026 Case 1:16-cv-01065-NG-CLP Document 90-7 Filed 05/26/17 Page 2 of 4 PageID #: 3027 Case 1:16-cv-01065-NG-CLP Document 90-7 Filed 05/26/17 Page 3 of 4 PageID #: 3028 Case 1:16-cv-01065-NG-CLP Document 90-7 Filed 05/26/17 Page 4 of 4 PageID #: 3029 Exhibit 6 Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 1 of 17 PageID #: 3030 1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK X X CREE, INC., DEFENDANT N&K TRADING, INC.’S OBJECTIONS AND RESPONSES TO Plaintiff, PLAINTIFF’S INTERROGATORIES v. XIU PING CHEN, et al., 1:16-cv-01065 NG (CLPx) Defendants. Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, and Local Civil Rule 26.3 of the United States District Court for the Eastern District of New York (the “Applicable Rules”), Defendant N&K Trading, Inc. (“Defendant” or “N&K”), through its undersigned attorneys, hereby responds and/or objects to Plaintiff Cree, Inc.’s (“Plaintiff”) Interrogatories (“Interrogatories” or “Interrogatory”), dated May 20, 2016, as follows: DEFINITIONS 1. “Burdensome” means that an Interrogatory is so stated that it would require an unreasonable amount of time, expense, and effort to produce responsive information. 2. “Complaint” means Plaintiff’s complaint in this action. 3. “Irrelevant” means that an Interrogatory seeks information that is so far from matters having relevance to the case that the Interrogatory is not reasonably calculated to lead to the discovery of admissible evidence. 4. “Overbroad” means that an Interrogatory is of such scope that, although it may seek the disclosure of information that is discoverable, it extends substantially into matters having no Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 2 of 17 PageID #: 3031 2 relevance to this action and, therefore, it is not reasonably calculated to lead to the discovery of admissible evidence. 5. “Vague” means that an Interrogatory is either ambiguous or so unclear as not to provide Plaintiff with fair notice of the information being sought. GENERAL OBJECTIONS 1. Defendant objects to the Interrogatories to the extent they purport to impose any obligation that is beyond the scope of the Applicable Rules of this Court or other applicable law. 2. Defendant object to the Interrogatories to the extent they are Overbroad, duplicative, Burdensome, and/or harassing. 3. Defendant objects to the Interrogatories to the extent they purport to require the provision of information that is not relevant to the claims or defenses of any party to this action, to the subject matter of this action, or otherwise beyond the scope of permissible discovery under Rule 26. 4. Defendant objects to the Interrogatories to the extent they use Vague, ambiguous, or undefined terms, or are otherwise Vague and/or ambiguous. 5. Defendant objects to the Interrogatories to the extent they assume disputed facts or legal conclusions in describing the documents or information requested. Any response or objection by Defendant is without prejudice to this objection. 6. Defendant objects to the Interrogatories to the extent they purport to require responses based on information and/or documents not in its possession, custody or control, information that is available from the existing record or from other parties to this action, and/or information that is in the public domain. 7. Defendant objects to the Interrogatories to the extent they purport to require the Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 3 of 17 PageID #: 3032 3 disclosure of information that: (1) was developed in anticipation of litigation, (2) constitutes attorney work product, (3) reveals privileged attorney-client communications, (4) is subject to the settlement negotiation privilege, or (5) is otherwise protected from disclosure under applicable privileges, laws or rules. Defendant hereby claims such privileges and protections to the extent implicated by the Interrogatories, and exclude such privileged or protected information from them responses to the Interrogatories. Any disclosure of such protected or privileged information is inadvertent, and is not intended to waive those privileges or protections. 8. Defendant’s objections and responses to the Interrogatories are not intended to waive or prejudice any objections it may assert now or in the future, including without limitation objections as to the relevance of the subject matter, at any hearing or trial. 9. Defendant’s objections and responses to the Interrogatories are made subject to further discovery in this action. Defendant reserves the right to amend or supplement these objections and responses where appropriate. 10. Each of these general objections is incorporated by reference into each of the responses set forth below, which responses Defendant makes without waiving any of these general objections. 11. Defendant objects to the Definition of “DOCUMENT” to the extent it imposes any obligation on Defendant that is beyond the scope of Federal Rules of Civil Procedure 26 and 34, or the Local Civil Rules. 12. Defendant objects to the Definition of “PRODUCT(S)” as Vague, ambiguous, Overbroad, and Burdensome. The Definition of “Product(s)” encompasses any and all products bearing Cree’s purported mark, but the only products at issue in this action are purportedly counterfeit flashlights. 13. Defendant objects to the Definition of “TRADEMARKS” as Overbroad and Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 4 of 17 PageID #: 3033 4 Burdensome. The only alleged trademarks relevant to this action are the alleged trademarks relating to flashlights, given that the only products at issue in the Complaint are purportedly counterfeit flashlights. 14. Defendant reserves the right to supplement these objections and responses if and when any information responsive to the Interrogatories are obtained through discovery or further internal investigation. INTERROGATORIES INTERROGATORY NO. 1: IDENTIFY the nature of DEFENDANT’s business. RESPONSE TO INTERROGATORY NO. 1: Subject to and without waiving its General Objections, Defendant responds as follows: N&K’s business consists of fulfilling orders placed by customers on websites maintained and operated by other entities, and collecting the customers’ payments on behalf of the sellers. N&K does not own, maintain, host, or operate any website through which customers place orders, or otherwise advertise or market goods to consumers. It does not manufacture products, contribute to the manufacturing of products by others, or sell products. N&K has no control over those other entities’ advertising, marketing, pricing, or sales of these goods. INTERROGATORY NO. 2: IDENTIFY the location, including country and address, of all of DEFENDANT’s current and former business operations since 2010 with a description of what type of business operations are conducted at each location. RESPONSE TO INTERROGATORY NO. 2: Subject to and without waiving its General Objections, Defendant responds as follows: Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 5 of 17 PageID #: 3034 5 N&K operated out of 726 64th Street, Brooklyn, NY 11220 as of 2010 through 2011. Beginning in 2011, it operated out of 1980 U.S. Highway 1, Building 3, North Brunswick, NJ 08902. INTERROGATORY NO. 3: IDENTIFY the manner since 2010 in which DEFENDANT obtains users/customers. RESPONSE TO INTERROGATORY NO. 3: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and Burdensome and harassing to the extent that it calls for a lengthy narrative response more appropriate for deposition testimony and because it assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale to “customers” or “users”, see response to Interrogatory No. 1, supra, and thus Defendant has no “customers” or “users.” INTERROGATORY NO. 4: IDENTIFY any advertising and marketing used by DEFENDANT since 2010 to offer products for sale to consumers. RESPONSE TO INTERROGATORY NO. 4: Defendant objects to this interrogatory on the grounds that it is Irrelevant, assumes disputed facts or legal conclusions in describing the documents or information requested, and is Burdensome and harassing to the extent that it calls for a lengthy narrative response more appropriate for deposition testimony. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale to consumers, see response to Interrogatory No. 1, supra. Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 6 of 17 PageID #: 3035 6 INTERROGATORY NO. 5: IDENTIFY all eBay seller identification names, addresses, and account numbers used by DEFENDANT since 2010 to offer products for sale to consumers. RESPONSE TO INTERROGATORY NO. 5: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale to consumers, see response to Interrogatory No. 1, supra. INTERROGATORY NO. 6: IDENTIFY any Internet websites, including the corresponding user ID, used by DEFENDANT since 2010 to offer products for sale to consumers. RESPONSE TO INTERROGATORY NO. 6: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the forgoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale to consumers, see response to Interrogatory No. 1, supra. INTERROGATORY NO. 7: IDENTIFY the manner since 2010 in which DEFENDANT communicates with users/customers. RESPONSE TO INTERROGATORY NO. 7: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, assumes disputed facts or legal conclusions in describing the documents or information requested, Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 7 of 17 PageID #: 3036 7 and is Burdensome and harassing to the extent that it calls for a lengthy narrative response more appropriate for deposition testimony. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale to customers or users, see response to Interrogatory No. 1, supra, and Defendant has no “customers” or “users”, see response to Interrogatory No. 3, supra. INTERROGATORY NO. 8: IDENTIFY the manner in which users/customers pay for products offered for sale since 2010 by DEFENDANT. RESPONSE TO INTERROGATORY NO. 8: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale to consumers, see response to Interrogatory No. 1, supra, and Defendant has no “customers” or “users”, see response to Interrogatory No. 3, supra. INTERROGATORY NO. 9: IDENTIFY all of DEFENDANT’s current and former owners, executive officers, managers, and employees, since 2010, inclusive of his/her title and job description. RESPONSE TO INTERROGATORY NO. 9: Defendant object to this interrogatory on the grounds that it is Overbroad, Burdensome, and seeks Irrelevant information for the apparent purpose of burdening and harassing Defendant, in that it seeks the identity of all employees since 2010. Subject to and without waiving the foregoing, or its General Objections, Defendant states that its executive level staff has been as follows: Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 8 of 17 PageID #: 3037 8 1) Hang Feng Wu, aka Nick Wu, Chief Executive Officer, as of December 31, 2013 through the present; and 2) Xiu Ping Chen, President from 2012 through 2013, and Human Resources Manager, from 2014-December 15, 2015. Since December 31, 2013, Nick Wu has been the 100% owner of N&K. INTERROGATORY NO. 10: IDENTIFY DEFENDANT’s relationship to the other named DEFENDANTS in this lawsuit, i.e. XIU PING CHEN, XIU MIN CHEN, XIU JUAN CHEN, and HANG FENG WU. RESPONSE TO INTERROGATORY NO. 10: Subject to and without waiving its General Objections, Defendant responds as follows: Hang Feng Wu, aka Nick Wu, is the Chief Executive Officer and 100% owner of N&K Trading. N&K Trading currently has no relationship to the other Defendants. Xiu Juan Chen worked as a packer for N&K Trading from August 2012 to April 2014. Xiu Ping Chen was an owner of N&K Trading until December 31, 2013, when Mr. Wu became the 100% owner. Xiu Min Chen never had any relationship with N&K Trading. INTERROGATORY NO. 11: IDENTIFY all buyers, including name and contact information, since 2010, to whom DEFENDANT has sold or distributed PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 11: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant does not offer products for sale, see response to Interrogatory No. 1, supra. Further, to the extent Defendant may have fulfilled orders for flashlights bearing an alleged Cree Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 9 of 17 PageID #: 3038 9 mark, pursuant to Fed. R. Civ. P. 33(d), defendants will produce documents containing responsive information to the extent it is accessible to N&K. INTERROGATORY NO. 12: IDENTIFY all suppliers, vendors, and/or sources, including name and contact information, since 2010, from whom DEFENDANT has purchased or obtained PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 12: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant has received flashlights bearing an alleged Cree mark from FuJian Zongteng network Co.ltd, 4th Laoguang Building, Shangxiadian Road, Cangshan District, Fuzhou City, China 350001, for order fulfillment. INTERROGATORY NO. 13: IDENTIFY all users/customers, including name and contact information, since 2010, who have used DEFENDANT’s services to sell or distribute PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 13: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: See response to Interrogatory No. 12, supra. Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 10 of 17 PageID #: 3039 10 INTERROGATORY NO. 14: Identify all services provided by DEFENDANT to users/customers, since 2010, who have used Defendant’s services to distribute PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 14: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: See response to Interrogatory No. 1, supra. INTERROGATORY NO. 15: IDENTIFY the manner in which DEFENDANT fulfills orders for PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 15: Defendant objects to this interrogatory on the grounds that it is Overbroad and Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, assumes disputed facts or legal conclusions in describing the documents or information requested, and is Burdensome and harassing to the extent that it calls for a lengthy narrative response more appropriate for deposition testimony. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: See response to Interrogatory No. 1, supra. Further, Defendant receives products from the overseas seller. The items are stored in boxes then placed in a bin at N&K’s warehouse. When an order is placed on another entity’s website, N&K receives a print out and begins the process of fulfilling the order on behalf of the seller entity. An employee, a picker, takes the item from the appropriate bin, and takes it to a packer. The packer places the item in mailing packaging, then places it in a collection areas. Other employees affix a shipping label and/or postage to the packaged item, and place the items so packaged and labeled Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 11 of 17 PageID #: 3040 11 in another collection area to be shipped. Items are picked up by the third party carrier, such as FedEx, UPS, or the United States Postal Service. INTERROGATORY NO. 16: IDENTIFY the total quantity of PRODUCTS bearing PLAINTIFF’s TRADEMARKS sold by DEFENDANT. RESPONSE TO INTERROGATORY NO. 16: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, assumes disputed facts or legal conclusions in describing the documents or information requested, and is not appropriately limited by reference to a relevant time period. Defendant further objects since it does not offer products for sale or sell products, see Response to Interrogatory No. 1, supra. INTERROGATORY NO. 17: IDENTIFY the total quantity of orders fulfilled by DEFENDANT for PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 17: Subject to and without waiving its General Objections, Defendant responds as follows: To the extent Defendant may have fulfilled orders for flashlights bearing an alleged Cree mark, pursuant to Fed. R. Civ. P. 33(d), the answer to this interrogatory may be found by examining the documents being produced in response to Plaintiff’s first set of document requests. INTERROGATORY NO. 18: IDENTIFY any locations where DEFENDANT currently stores or has any inventory of PRODUCTS bearing PLAINTIFF’s TRADEMARKS. Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 12 of 17 PageID #: 3041 12 RESPONSE TO INTERROGATORY NO. 18: Defendant objects to this interrogatory on the grounds that it is Overbroad and Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights. Subject to and without waiving its General Objections, Defendant responds as follows: Defendant stores any flashlights bearing an alleged Cree mark at 200 Docks Corner Road, Suite 221, Dayton, NJ 08810. INTERROGATORY NO. 19: IDENTIFY by types and quantities all PRODUCTS bearing PLAINTIFF’s TRADEMARKS presently within DEFENDANT’s possession, custody, or control. RESPONSE TO INTERROGATORY NO. 19: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: Defendant has 157 units of flashlights of the kind seemingly referred to in the Complaint. INTERROGATORY NO. 20: Calculate DEFENDANT’s total gross sales derived from its sales and distributions of PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 20: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds that, Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 13 of 17 PageID #: 3042 13 pursuant to Rule 33(d), N&K will produce documents sufficient to show the total gross proceeds N&K received from having shipped any flashlights bearing an alleged Cree mark. INTERROGATORY NO. 21: Calculate DEFENDANT’s total profit derived from its sales and distributions of PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 21: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, unduly Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds that, pursuant to Rule 33(d), N&K will produce documents sufficient to show the total profit N&K received from having shipped any flashlights bearing an alleged Cree mark. INTERROGATORY NO. 22: IDENTIFY all DOCUMENTS received by DEFENDANT putting it on notice that its users were using DEFENDANT’s services to sell counterfeit or infringing PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 22: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: the Complaint in this action. Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 14 of 17 PageID #: 3043 14 INTERROGATORY NO. 23: IDENTIFY any measures taken by DEFENDANT after receiving notice of PLAINTIFF’s claims to prevent the distribution of counterfeit or infringing PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 23: Defendant objects to this interrogatory on the grounds that it is Irrelevant and Burdensome to the extent that it calls for a lengthy narrative response more appropriate for deposition testimony and because it assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds as follows: After receiving Plaintiff’s Complaint, N&K asked the entity that was selling the allegedly counterfeit flashlights to identify all the allegedly infringing products at issue by their unique warehouse reference number, or SKU, and once it received the SKU numbers, set aside and quarantined any allegedly infringing products, thereby ensuring that none would be shipped. INTERROGATORY NO. 24: IDENTIFY any insurance business that has issued DEFENDANT an insurance agreement that may be liable to satisfy all or part of a possible judgment against DEFENDANT in this action in favor of PLAINTIFF. RESPONSE TO INTERROGATORY NO. 24: Subject to and without waiving its General Objections, Defendant responds as follows: None. Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 15 of 17 PageID #: 3044 15 INTERROGATORY NO. 25: IDENTIFY by quantities and gross sales dollar amounts any and all sales or distribution by DEFENDANT, after October 15, 2015, of PRODUCTS bearing PLAINTIFF’S TRADEMARKS. RESPONSE TO INTERROGATORY NO. 25: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, unduly Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, and assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or its General Objections, Defendant responds that, pursuant to Rule 33(d), N&K will produce documents sufficient to show the total number of allegedly counterfeit flashlights N&K shipped and the gross proceeds N&K received from having shipped such flashlights. Dated: New York, New York July 22, 2016 SCHLAM STONE & DOLAN LLP By: s/ Elizabeth Wolstein Elizabeth Wolstein Samuel L. Butt 26 Broadway New York, NY 10004 (212) 344-5400 (telephone) (212) 344-7677 (facsimile) ewolstein@schlamstone.com sbutt@schlamstone.com Attorneys for Defendants To: JOHNSON & PHAM, LLP Christopher Q. Pham, Esq. Marcus F. Chaney, Esq. 6355 Topanga Canyon Blvd. Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 16 of 17 PageID #: 3045 16 Suite 326 Woodland Hills, CA 91367 Attorneys for Plaintiff Case 1:16-cv-01065-NG-CLP Document 90-8 Filed 05/26/17 Page 17 of 17 PageID #: 3046 Exhibit 7 Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 1 of 16 PageID #: 3047 1 UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORK X X CREE, INC., DEFENDANT HANG FENG WU’S OBJECTIONS AND RESPONSES TO Plaintiff, PLAINTIFF’S INTERROGATORIES v. XIU PING CHEN, et al., 1:16-cv-01065 NG (CLPx) Defendants. Pursuant to Rules 26 and 33 of the Federal Rules of Civil Procedure, and Local Civil Rule 26.3 of the United States District Court for the Eastern District of New York (the “Applicable Rules”), Defendant Hang Feng Wu (“Defendant”), through his undersigned attorneys, hereby responds and/or objects to Plaintiff Cree, Inc.’s (“Plaintiff”) Interrogatories (“Interrogatories” or “Interrogatory”), dated May 20, 2016, as follows: DEFINITIONS 1. “Burdensome” means that an Interrogatory is so stated that it would require an unreasonable amount of time, expense, and effort to produce responsive information. 2. “Complaint” means Plaintiff’s complaint in this action. 3. “Irrelevant” means that an Interrogatory seeks information that is so far from matters having relevance to the case that the Interrogatory is not reasonably calculated to lead to the discovery of admissible evidence. 4. “Overbroad” means that an Interrogatory is of such scope that, although it may seek the disclosure of information that is discoverable, it extends substantially into matters having no Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 2 of 16 PageID #: 3048 2 relevance to this action and, therefore, it is not reasonably calculated to lead to the discovery of admissible evidence. 5. “Vague” means that an Interrogatory is either ambiguous or so unclear as not to provide Plaintiff with fair notice of the information being sought. GENERAL OBJECTIONS 1. Defendant objects to the Interrogatories to the extent they purport to impose any obligation that is beyond the scope of the Applicable Rules of this Court or other applicable law. 2. Defendant object to the Interrogatories to the extent they are Overbroad, duplicative, Burdensome and/or harassing. 3. Defendant objects to the Interrogatories to the extent they purport to require the provision of information that is not relevant to the claims or defenses of any party to this action, to the subject matter of this action, or otherwise beyond the scope of permissible discovery under Rule 26. 4. Defendant objects to the Interrogatories to the extent they use Vague, ambiguous, or undefined terms, or are otherwise Vague and/or ambiguous. 5. Defendant objects to the Interrogatories to the extent they assume disputed facts or legal conclusions in describing the documents or information requested. Any response or objection by Defendant is without prejudice to this objection. 6. Defendant objects to the Interrogatories to the extent they purport to require responses based on information and/or documents not in its possession, custody or control, information that is available from the existing record or from other parties to this action, and/or information that is in the public domain. 7. Defendant objects to the Interrogatories to the extent they purport to require the disclosure of information that: (1) was developed in anticipation of litigation, (2) constitutes Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 3 of 16 PageID #: 3049 3 attorney work product, (3) reveals privileged attorney-client communications, (4) is subject to the settlement negotiation privilege, or (5) is otherwise protected from disclosure under applicable privileges, laws or rules. Defendant hereby claims such privileges and protections to the extent implicated by the Interrogatories, and exclude such privileged or protected information from them responses to the Interrogatories. Any disclosure of such protected or privileged information is inadvertent, and is not intended to waive those privileges or protections. 8. Defendant’s objections and responses to the Interrogatories are not intended to waive or prejudice any objections he may assert now or in the future, including without limitation objections as to the relevance of the subject matter, at any hearing or trial. 9. Defendant’s objections and responses to the Interrogatories are made subject to further discovery in this action. Defendant reserves the right to amend or supplement these objections and responses where appropriate. 10. Each of these general objections is incorporated by reference into each of the responses set forth below, which responses Defendant makes without waiving any of these general objections. 11. Defendant objects to each Interrogatory, and to the Interrogatories as a whole, on the ground that they are designed to multiply these proceedings and intentionally burden and attempt to intimidate Mr. Wu for the purpose of extracting an early settlement of Plaintiff’s meritless claims. None of the interrogatories propounded to Mr. Wu individually seeks information bearing on the narrow circumstances in which Mr. Wu could be held liable for N&K’s alleged infringement. 12. Defendant objects to the Definition of “DOCUMENT” to the extent it imposes any obligation on Defendant that is beyond the scope of Federal Rules of Civil Procedure 26 and 34, or the Local Civil Rules. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 4 of 16 PageID #: 3050 4 13. Defendant objects to the Definition of “PRODUCT(S)” as Vague, ambiguous Overbroad, and Burdensome. The Definition of “Product(s)” encompasses any and all products bearing Cree’s purported mark, but the only products at issue in this action are purportedly counterfeit flashlights. 14. Defendant objects to the Definition of “TRADEMARKS” as Overbroad and Burdensome. The only alleged trademarks relevant to this action are the alleged trademarks relating to flashlights, given that the only products at issue in the action are purportedly counterfeit flashlights. 15. Defendant reserves the right to supplement these objections and responses if and when any information responsive to the Interrogatories are obtained through discovery or further internal investigation. SPECIFIC RESPONSES AND/OR OBJECTIONS TO INTERROGATORIES INTERROGATORY NO. 1: IDENTIFY all businesses by name and address, since 2010, that are wholly or partially owned, operated, and/or controlled by DEFENDANT. RESPONSE TO INTERROGATORY NO. 1: Defendant objects to this Interrogatory on the ground that it is Overbroad, Burdensome, and Irrelevant. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: Defendant is the Chief Executive Officer and 100% owner of Defendant N&K Trading, Inc. (“N&K”), and has been since the end of 2013. INTERROGATORY NO. 2: IDENTIFY the location, including country and address, of all of DEFENDANT’s current and former business operations since 2010 with a description of what type of business operations are conducted at each location. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 5 of 16 PageID #: 3051 5 RESPONSE TO INTERROGATORY NO. 2: Defendant objects to this Interrogatory on the ground that it is Overbroad, Burdensome, and Irrelevant, and intended to harass rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds he has no personal business operations. To the extent this interrogatory is asking about N&K, see N&K’s response to interrogatory no. 2. INTERROGATORY NO. 3: IDENTIFY by name and addresses, since 2010, all DEFENDANT’s business partners, joint venturers, and/or co-shareholders in any businesses that are wholly or partially owned, operated, and/or controlled by DEFENDANT. RESPONSE TO INTERROGATORY NO. 3: Defendant objects to this Interrogatory on the ground that it is Vague, Overbroad, Irrelevant, and intended to harass rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: None, since he has owned 100% of N&K since the end of 2013. INTERROGATORY NO. 4: For each business that are wholly or partially owned, operated, and/or controlled by DEFENDANT since 2010, IDENTIFY your title(s) and/or type and percentage of ownership or control in each business. RESPONSE TO INTERROGATORY NO. 4: Defendant objects to this Interrogatory on the ground that it is Vague, Overbroad, Irrelevant, and intended to harass rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: Since the end of 2013, he has been the Chief Executive Officer and 100% owner of N&K. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 6 of 16 PageID #: 3052 6 INTERROGATORY NO. 5: IDENTIFY the title(s) you hold at N&K TRADING, INC. and the date DEFENDANT obtained such title(s). RESPONSE TO INTERROGATORY NO. 5: Defendant objects to this Interrogatory on the ground that it is cumulative and duplicative of interrogatory number 4, and intended to harass and multiply the proceedings and burden on defendant rather than gather relevant discovery. Subject to and without waiving his General Objections, Defendant responds as follows: Since the end of 2013, he has been the Chief Executive Officer of N&K. INTERROGATORY NO. 6: IDENTIFY any and all start-up monetary contributions or monetary investments DEFENDANT has in N&K TRADING, INC. RESPONSE TO INTERROGATORY NO. 6: Defendant objects to this Interrogatory on the ground that it is Irrelevant, Burdensome, and intended to harass rather than gather relevant discovery. INTERROGATORY NO. 7: IDENTIFY the source(s) of N&K TRADING, INC.’s start-up capital. RESPONSE TO INTERROGATORY NO. 7: Defendant objects to this Interrogatory on the ground that it is Irrelevant, Burdensome, and intended to harass rather than gather relevant discovery. INTERROGATORY NO. 8: IDENTIFY all officers and directors of N&K TRADING, INC. RESPONSE TO INTERROGATORY NO. 8: Defendant objects to this Interrogatory on this ground that it is Irrelevant and to the extent it is not appropriately limited by reference to a relevant time period. Subject to and without waiving the foregoing, or his General Objections, Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 7 of 16 PageID #: 3053 7 Defendant responds as follows: Since the end of 2013, he has been the Chief Executive Officer of N&K. INTERROGATORY NO. 9: IDENTIFY all shareholders and their percentage of ownership or control of N&K TRADING, INC. RESPONSE TO INTERROGATORY NO. 9: Defendant objects to this Interrogatory on this ground that it is Irrelevant and to the extent it is not appropriately limited by reference to a relevant time period. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: Since the end of 2013, he has been the Chief Executive Officer and 100% owner of N&K. INTERROGATORY NO. 10: IDENTIFY the date(s) and location(s) of all shareholder meetings of N&K TRADING, INC. that you attended personally or through any electronics means. RESPONSE TO INTERROGATORY NO. 10: Defendant objects to this Interrogatory on the ground that it is Irrelevant, Burdensome, and intended to harass rather than gather relevant discovery. INTERROGATORY NO. 11: IDENTIFY in what manner and how much you have ever received in compensation, in any form, from N&K TRADING, INC. RESPONSE TO INTERROGATORY NO. 11: Defendant objects to this Interrogatory on the ground that it is Irrelevant, Overbroad, Burdensome, and intended to harass rather than gather relevant discovery. Subject to and without waiving the foregoing, or its General Objections, Defendant responds that, pursuant to Rule 33(d), Defendant will produce documents sufficient to show his compensation by N&K and the manner of it for 2012, 2013, 2014, and 2015. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 8 of 16 PageID #: 3054 8 INTERROGATORY NO. 12: IDENTIFY DEFENDANT’s relationship to the other named DEFENDANTS in this lawsuit, i.e. N&K TRADING, INC., XIU PING CHEN, XIU MIN CHEN, and XIU JUAN CHEN. RESPONSE TO INTERROGATORY NO. 12: Subject to and without waiving his General Objections, Defendant responds as follows: Defendant is the Chief Executive Officer and 100% owner of N&K. Xiu Juan Chen is defendant’s aunt. Xiu Ping Chen is defendant’s mother. Xiu Min Chen is defendant’s aunt. INTERROGATORY NO. 13: IDENTIFY any businesses that are wholly or partially owned, operated, and/or controlled by DEFENDANT that sold or distributed PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 13: Defendant objects to this Interrogatory on the grounds that it is Irrelevant and Overbroad given that Plaintiff’s Complaint asserts claims relating only to flashlights, assumes disputed facts or legal conclusions in describing the documents or information requested, and is intended to harass rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: N&K does not offer products for sale to consumers. The only business owned, operated or controlled by Defendant since 2013 that has ever shipped flashlights bearing an alleged Cree mark is N&K. INTERROGATORY NO. 14: IDENTIFY any businesses that are wholly or partially owned, operated, and/or controlled by DEFENDANT that purchased or obtained PRODUCTS bearing PLAINTIFF’s TRADEMARKS. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 9 of 16 PageID #: 3055 9 RESPONSE TO INTERROGATORY NO. 14: Defendant objects to this Interrogatory on the grounds that it is Irrelevant and Overbroad given that Plaintiff’s Complaint asserts claims relating only to flashlights, assumes disputed facts or legal conclusions in describing the documents or information requested, and is intended to harass rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: N&K does not purchase products. The only business owned, operated or controlled by Defendant since 2013 that has ever obtained flashlights bearing an alleged Cree mark is N&K. INTERROGATORY NO. 15: IDENTIFY all suppliers, vendors, and/or sources, including name and contact information, since 2010, with whom DEFENDANT has had direct communication with RELATING to the purchase or acquisition of PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 15: Defendant objects to this Interrogatory on the grounds that it is Irrelevant, Overbroad, and Burdensome given that Plaintiff’s Complaint asserts claims relating only to flashlights, and assumes disputed facts or legal conclusions in describing the documents or information requested. Defendant further objects to this Interrogatory on the ground that Defendant has no “suppliers” or “vendors” or “sources”, and neither does N&K, of which he is CEO, since it does business with Internet sellers for whom it performs fulfillment and collection services. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: Defendant has had direct communications with FuJian Zongteng network Co.ltd (“ZT”), 4th Laoguang Building, Shangxiadian Road, Cangshan District, Fuzhou City, China 350001, concerning N&K’s receipt of flashlights bearing an alleged Cree mark, for order fulfillment. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 10 of 16 PageID #: 3056 10 INTERROGATORY NO. 16: IDENTIFY all users/customers, including name and contact information, since 2010, with whom DEFENDANT has had direct communication with RELATING to the sales or distribution of PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 16: Defendant objects to this Interrogatory on the grounds that it is Irrelevant and Overbroad given that Plaintiff’s Complaint asserts claims relating only to flashlights, assumes disputed facts or legal conclusions in describing the documents requested and is not appropriately limited by reference to a relevant time period. Defendant further objects to this Request on the ground that he has no “customers” or “users”, and neither does N&K, of which he is CEO, since it does business with Internet sellers for whom it performs fulfillment and collection services. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: see response to Interrogatory No. 15, supra. INTERROGATORY NO. 17: IDENTIFY all DOCUMENTS received by DEFENDANT putting him on notice of any claims or lawsuits by PLAINTIFF RELATING to counterfeit or infringing PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 17: Defendant objects to this Interrogatory on the grounds that it is Irrelevant and Overbroad given that Plaintiff’s Complaint asserts claims relating only to flashlights. Subject to and without waiving the foregoing, or his General Objections, Plaintiff responds as follows: the Complaint in this action. INTERROGATORY NO. 18: IDENTIFY all DOCUMENTS received by DEFENDANT putting him on notice of any claims or lawsuits by any PERSONS RELATING allegations of trademark infringement. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 11 of 16 PageID #: 3057 11 RESPONSE TO INTERROGATORY NO. 18: Defendant objects to this Interrogatory on the grounds that it is Irrelevant, Overbroad, and intended to harass rather than gather relevant discovery. INTERROGATORY NO. 19: IDENTIFY any measures taken by DEFENDANT after receiving notice of PLAINTIFF’s claims to prevent the distribution of counterfeit or infringing PRODUCTS bearing PLAINTIFF’s TRADEMARKS. RESPONSE TO INTERROGATORY NO. 19: Defendant objects to this interrogatory on the grounds that it is Irrelevant and Burdensome and harassing to the extent that it calls for a lengthy narrative response more appropriate for deposition testimony and because it assumes disputed facts or legal conclusions in describing the documents or information requested. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: After receiving Plaintiff’s Complaint, he directed N&K to ask, and N&K asked the entity, ZT, that was selling the flashlights alleged in the Complaint to be counterfeit to identify all the allegedly infringing products at issue by their unique warehouse reference number, or SKU, and once N&K received the SKU numbers, N&K, at Defendant’s direction, set aside and quarantined any allegedly infringing products, thereby ensuring that none would be shipped. INTERROGATORY NO. 20: IDENTIFY any insurance business that has issued DEFENDANT an insurance agreement that may be liable to satisfy all or part of a possible judgment against DEFENDANT in this action in favor of PLAINTIFF. Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 12 of 16 PageID #: 3058 12 RESPONSE TO INTERROGATORY NO. 20: Subject to and without waiving his General Objections, Defendant responds as follows: None. INTERROGATORY NO. 21: IDENTIFY by quantities and gross sales dollar amounts any and all sales or distribution by DEFENDANT, after October 15, 2015, of PRODUCTS bearing PLAINTIFF’S TRADEMARKS. RESPONSE TO INTERROGATORY NO. 21: Subject to and without waiving his General Objections, Defendant responds as follows: None. INTERROGATORY NO. 22: IDENTIFY all eBay seller identification names and accounts purchased, owned, operated, controlled, or maintained by DEFENDANT. RESPONSE TO INTERROGATORY NO. 22: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, and is designed to embarrass, annoy, oppress and serve as a fishing expedition through which plaintiff’s counsel hopes to finding information to use in bringing additional meritless actions against defendants on behalf of future clients rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: none. INTERROGATORY NO. 23: IDENTIFY all eBay seller identification names and accounts purchased, owned, operated, controlled, or maintained by DEFENDANT that sell or distribute PRODUCTS bearing PLAINTIFF’S TRADEMARKS. RESPONSE TO INTERROGATORY NO. 23: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, is designed to embarrass, annoy, oppress, and is intended to serve as a fishing expedition through which plaintiff’s counsel hopes to finding information to use in bringing additional meritless actions against defendants on behalf of future clients rather Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 13 of 16 PageID #: 3059 13 than gather relevant discovery. Subject to and without waiving the foregoing, or his General Objections, Defendant responds as follows: none. INTERROGATORY NO. 24: IDENTIFY DEFENDANT’s relationship to the following eBay sellers: campingsurvivals forever-night * fka wushushu2011 hi-autopia hi-etech ownmaxx worthorder yall-fr yallstore accmonster brainytrade city-green etopmarket gadgettown gaingame-outlet idsonlinestore laptopz-outlet millionshare screenaid sweepworld worldokit yall-au yall-uk yallstock zone-all RESPONSE TO INTERROGATORY NO. 24: Defendant objects to this interrogatory on the grounds that it is Irrelevant, Overbroad, is intended to embarrass, annoy, oppress, and is designed serve as a fishing expedition through which plaintiff’s counsel hopes to finding information to use in bringing additional meritless actions against defendants on behalf of future clients rather than gather relevant discovery. Subject to and without waiving the foregoing, or his General Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 14 of 16 PageID #: 3060 14 Objections, Defendant responds that he has no relationship to the above names listed in the interrogatory. Dated: New York, New York August 12, 2016 SCHLAM STONE & DOLAN LLP By: s/ Elizabeth Wolstein Elizabeth Wolstein Samuel L. Butt 26 Broadway New York, NY 10004 (212) 344-5400 (telephone) (212) 344-7677 (facsimile) ewolstein@schlamstone.com sbutt@schlamstone.com Attorneys for Defendant Hang Feng Wu To: JOHNSON & PHAM, LLP Christopher Q. Pham, Esq. Marcus F. Chaney, Esq. 6355 Topanga Canyon Blvd. Suite 326 Woodland Hills, CA 91367 Attorneys for Plaintiff Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 15 of 16 PageID #: 3061 VERIFICATION Pursuant to 28 U.S.C. § 1746, I, HANG FENG WU, declare the following: I have read the foregoing Responses and Objections to Plaintiff’s First Set of Interrogatories to me and state that the statements made therein are true and correct to the best of my knowledge, information and belief. I declare under penalty of perjury pursuant to 28 U.S.C. § 1746 that the foregoing is true and correct. Executed on August ___, 2016 HANG FENG WU Case 1:16-cv-01065-NG-CLP Document 90-9 Filed 05/26/17 Page 16 of 16 PageID #: 3062 Exhibit 8 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 1 of 15 PageID #: 3063 TRADEMARK U.S. District Court Eastern District of New York (Brooklyn) CIVIL DOCKET FOR CASE #: 1:16-cv-01065-NG-CLP Cree, Inc v. Xiu Ping Chen et al Assigned to: Judge Nina Gershon Referred to: Magistrate Judge Cheryl L. Pollak Case in other court: California Central, 2:15-cv-08118 Cause: 15:1114 Trademark Infringement Date Filed: 03/03/2016 Jury Demand: Both Nature of Suit: 840 Trademark Jurisdiction: Federal Question Plaintiff Cree, Inc. a North Carolina Corporation represented by Marcus F Chaney Johnson and Pham LLP 6355 Topanga Canyon Blvd Suite 326 Woodland Hills, CA 91367 818-888-7540 Fax: 818-888-7544 Email: mchaney@johnsonpham.com LEAD ATTORNEY PRO HAC VICE ATTORNEY TO BE NOTICED Christopher Dain Johnson Johnson and Pham LLP 6355 Topanga Canyon Boulevard Suite 326 Woodland Hills, CA 91367 818-888-7540 Fax: 818-888-7544 Email: cjohnson@johnsonpham.com ATTORNEY TO BE NOTICED Christopher Q Pham Johnson and Pham LLP 6355 Topanga Canyon Blvd Suite 326 Woodland Hills, CA 91367 (818)888-7540 Fax: (818)888-7544 Email: cpham@johnsonpham.com PRO HAC VICE ATTORNEY TO BE NOTICED Hung Q Pham Page 1 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 2 of 15 PageID #: 3064 Johnson and Pham LLP 6355 Topanga Canyon Boulevard Suite 326 Woodland Hills, CA 91367 818-888-7540 Fax: 818-888-7544 Email: ppham@johnsonpham.com ATTORNEY TO BE NOTICED V. Defendant Xiu Ping Chen an Individual represented by Benedetto L. Balding Meylan Davitt Jain Arevian & Kim LLP 444 South Flower Street Suite 1850 Los Angeles, CA 90071 213-225-6000 Fax: 213-225-6660 Email: bbalding@mdjalaw.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Elizabeth Wolstein Schlam Stone & Dolan LLP 26 Broadway 18th Floor New York, NY 10004 212-344-5400 Fax: 212-344-7677 Email: ewolstein@schlamstone.com LEAD ATTORNEY ATTORNEY TO BE NOTICED Samuel Lucien Butt Schlam Stone & Dolan LLP 26 Broadway New York, NY 10004 (212)344-5400 Fax: (212)344-7677 Email: sbutt@schlamstone.com ATTORNEY TO BE NOTICED Defendant Xiu Min Chen an individual TERMINATED: 10/27/2016 represented by Elizabeth Wolstein (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Page 2 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 3 of 15 PageID #: 3065 Benedetto L. Balding (See above for address) ATTORNEY TO BE NOTICED Samuel Lucien Butt (See above for address) ATTORNEY TO BE NOTICED Defendant Xiu Juan Chen an individual TERMINATED: 10/27/2016 represented by Elizabeth Wolstein (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Benedetto L. Balding (See above for address) ATTORNEY TO BE NOTICED Samuel Lucien Butt (See above for address) ATTORNEY TO BE NOTICED Defendant Hang Feng Wu an Individual also known as Nick Wu represented by Benedetto L. Balding (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Elizabeth Wolstein (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Samuel Lucien Butt (See above for address) ATTORNEY TO BE NOTICED Defendant N&K Trading, Inc. a New Jersey Corporation represented by Benedetto L. Balding (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Elizabeth Wolstein (See above for address) LEAD ATTORNEY ATTORNEY TO BE NOTICED Page 3 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 4 of 15 PageID #: 3066 Samuel Lucien Butt (See above for address) ATTORNEY TO BE NOTICED Defendant Does 1-10 Inclusive Defendant Enumber, Inc. a New Jersey Corporation Date Filed # Docket Text 10/15/2015 1 COMPLAINT Receipt No: 0973-16624837 - Fee: $400, filed by Plaintiff Cree Inc. (Attachments: # 1 Exhibit A-Z, # 2 Exhibit AA-II) (Attorney Marcus F Chaney added to party Cree Inc(pty:pla))(Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 10/15/2015) 10/15/2015 2 CIVIL COVER SHEET filed by Plaintiff Cree Inc. (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 10/15/2015) 10/15/2015 3 Request for Clerk to Issue Summons on Complaint (Attorney Civil Case Opening) 1 filed by Plaintiff Cree Inc. (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 10/15/2015) 10/15/2015 4 NOTICE of Interested Parties filed by Plaintiff Cree Inc, (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 10/15/2015) 10/15/2015 5 CORPORATE DISCLOSURE STATEMENT pursuant to Fed. R. Civ. P. 7.1 filed by Plaintiff Cree Inc (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 10/15/2015) 10/15/2015 6 REPORT ON THE FILING OF AN ACTION Regarding a Patent or a Trademark (Initial Notification) filed by Cree Inc. (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 10/15/2015) 10/16/2015 7 NOTICE OF ASSIGNMENT to District Judge R. Gary Klausner and Magistrate Judge Paul L. Abrams. (esa) [Transferred from California Central on 3/3/2016.] (Entered: 10/16/2015) 10/16/2015 8 21 DAY Summons issued re Complaint 1 as to defendants Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, N and K Trading, Inc., Hang Feng Wu. (esa) [Transferred from California Central on 3/3/2016.] (Entered: 10/16/2015) 10/22/2015 9 STANDING ORDER by Judge R. Gary Klausner. Refer to the Court's order for details. (pso) [Transferred from California Central on 3/3/2016.] (Entered: 10/22/2015) 11/11/2015 10 PROOF OF SERVICE Executed by Plaintiff Cree Inc, upon Defendant Hang Feng Wu served on 10/28/2015, answer due 11/18/2015. Service of the Summons and Complaint were executed upon Hang Feng Wu a/k/a Nick Wu, Page 4 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 5 of 15 PageID #: 3067 Defendant in compliance with California Code of Civil Procedure by personal service.Original Summons NOT returned. (Pham, Christopher) [Transferred from California Central on 3/3/2016.] (Entered: 11/11/2015) 11/11/2015 11 PROOF OF SERVICE Executed by Plaintiff Cree Inc, upon Defendant N and K Trading, Inc. served on 10/28/2015, answer due 11/18/2015. Service of the Summons and Complaint were executed upon Nick Wu, Operation Manager in compliance with California Code of Civil Procedure by substituted service on a domestic corporation, unincorporated association, or public entity and no service by mail was executed.Original Summons NOT returned. (Pham, Christopher) [Transferred from California Central on 3/3/2016.] (Entered: 11/11/2015) 11/11/2015 12 PROOF OF SERVICE Executed by Plaintiff Cree Inc, upon Defendant Xiu Ping Chen served on 10/28/2015, answer due 11/18/2015. Service of the Summons and Complaint were executed upon Xiu Ping Chen a/k/a Randy Chen, Defendant in compliance with California Code of Civil Procedure by personal service.Original Summons NOT returned. (Pham, Christopher) [Transferred from California Central on 3/3/2016.] (Entered: 11/11/2015) 11/16/2015 13 STIPULATION Extending Time to Answer the complaint as to Hang Feng Wu answer now due 12/18/2015; N and K Trading, Inc. answer now due 12/18/2015; Xiu Ping Chen answer now due 12/18/2015, re Complaint (Attorney Civil Case Opening) 1 filed by defendants Hang Feng Wu; N and K Trading, Inc.; Xiu Ping Chen.(Balding, Benedetto) [Transferred from California Central on 3/3/2016.] (Entered: 11/16/2015) 12/17/2015 14 WAIVER OF SERVICE Returned Executed filed by Plaintiff Cree Inc. upon Xiu Min Chen waiver sent by Plaintiff on 11/30/2015, answer due 1/29/2016. Waiver of Service signed by Defendant Xiu Min Chen. (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 12/17/2015) 12/17/2015 15 WAIVER OF SERVICE Returned Executed filed by Plaintiff Cree Inc. upon Xiu Juan Chen waiver sent by Plaintiff on 11/30/2015, answer due 1/29/2016. Waiver of Service signed by Defendant Xiu Juan Chen. (Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 12/17/2015) 12/18/2015 16 ANSWER to Complaint (Attorney Civil Case Opening) 1 JURY DEMAND. filed by Defendants Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Attachments: # 1 Exhibit A (Part 1 of 2), # 2 Exhibit A (Part 2 of 2), # 3 Exhibit B)(Balding, Benedetto) [Transferred from California Central on 3/3/2016.] (Entered: 12/18/2015) 12/18/2015 17 CERTIFICATE of Interested Parties filed by Defendants Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu, (Balding, Benedetto) [Transferred from California Central on 3/3/2016.] (Entered: 12/18/2015) 01/11/2016 18 ORDER SETTING SCHEDULING CONFERENCE by Judge R. Gary Klausner. A Scheduling Conference has been placed on calendar for April 4, 2016, at 9:00 a.m. The Conference will be held pursuant to F.R.Civ. P. 16(b). Trial counsel must be present and there are no telephonic appearances. Counsel are ordered to file a joint statement providing a brief factual summary of the case, including the claims being asserted. The parties are reminded of their Page 5 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 6 of 15 PageID #: 3068 obligations to disclose information and confer on a discovery plan not later than 21 days prior to the scheduling conference, and to file a joint statement with the Court not later than 14 days after they confer, as required by F.R. Civ.P. 26 and the Local Rules of this Court. Failure to comply may lead to the imposition of sanctions. Plaintiff's counsel is directed to give notice of the scheduling conference to each party that makes an initial appearance in the action after this date. Not later than 5 court days prior to the Scheduling Conference, counsel are ordered to confer and electronically file (joint) Form ADR-1 (and proposed order, Form ADR 12), selecting one of the three settlement options available. (pso) [Transferred from California Central on 3/3/2016.] (Entered: 01/11/2016) 01/29/2016 19 ANSWER to Complaint (Attorney Civil Case Opening) 1 filed by Defendants Xiu Min Chen, Xiu Juan Chen. (Attachments: # 1 Exhibit A 1 of 2, # 2 Exhibit A 2 of 2, # 3 Exhibit B)(Attorney Benedetto L. Balding added to party Xiu Min Chen(pty:dft), Attorney Benedetto L. Balding added to party Xiu Juan Chen (pty:dft))(Balding, Benedetto) [Transferred from California Central on 3/3/2016.] (Entered: 01/29/2016) 01/29/2016 20 CERTIFICATE of Interested Parties filed by Defendants Xiu Min Chen, Xiu Juan Chen, (Balding, Benedetto) [Transferred from California Central on 3/3/2016.] (Entered: 01/29/2016) 02/01/2016 21 APPLICATION for attorney Elizabeth Wolstein to Appear Pro Hac Vice (PHV Fee of $325 receipt number 0973-17200165 paid.) filed by Defendants Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, N and K Trading, Inc., Hang Feng Wu. (Attachments: # 1 Proposed Order) (Balding, Benedetto) [Transferred from California Central on 3/3/2016.] (Entered: 02/01/2016) 02/02/2016 22 ORDER by Judge R. Gary Klausner: granting 21 APPLICATION to Appear Pro Hac Vice by Attorney Elizabeth Wolstein on behalf of Defendants Xiu Ping Chen aka Randy Chen, Xiu Min Chen, Xiu Juan Chen, Hang Feng Wu aka Nick Wu, and N&K Trading, Inc., designating Benedetto L. Balding as local counsel. (pso) [Transferred from California Central on 3/3/2016.] (Entered: 02/02/2016) 02/18/2016 23 STIPULATION to Change Venue to United States District Court, Eastern District of New York filed by Plaintiff Cree Inc. (Attachments: # 1 Proposed Order Granting Stipulation to Transfer of Venue to the United States District Court, Eastern District of New York)(Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 02/18/2016) 02/22/2016 24 MINUTE ORDER IN CHAMBERS Order re: Stipulation to Transfer (DE 23) by Judge R. Gary Klausner: On February 18, 2016, the parties filed a Stipulation to Transfer of Venue to the United States District Court, Eastern District of New York. In their Stipulation, the parties generally that the parties have agreed to the transfer "for the convenience of the parties and witness, in the interest of justice." (Stipulation, 2:14-15.) The Court finds this statement too general to constitute cause for granting the parties' Stipulation. The Court grants the parties leave to file a Supplemental Stipulation that includes a declaration explaining why transfer of this action would serve the convenience of the parties and witness, and the interests of justice. The Supplemental Stipulation shall be restricted to 5 pages, and filed no later than February 26, 2016. The parties shall Page 6 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 7 of 15 PageID #: 3069 attached a Proposed Order to the Supplemental Stipulation. (bp) [Transferred from California Central on 3/3/2016.] (Entered: 02/22/2016) 02/26/2016 25 Supplemental STIPULATION to Change Venue to United States District Court, Eastern District of New York filed by Plaintiff Cree Inc. (Attachments: # 1 Declaration of Nick Wu in Support of Supplemental Stipulation to Transfer of Venue, # 2 Proposed Order Granting Supplemental Stipulation to Transfer of Venue)(Chaney, Marcus) [Transferred from California Central on 3/3/2016.] (Entered: 02/26/2016) 03/01/2016 26 ORDER GRANTING STIPULATION TO TRANSFER OF VENUE TO THE UNITED STATES DISTRICT COURT, EASTERN DISTRICT OF NEW YORK by Judge R. Gary Klausner transferring case to Eastern District of New York. The Stipulation to Transfer of Venue submitted by the parties is hereby GRANTED. This case is hereby TRANSFERRED to the United States of District Court, Eastern District of New York, for all further proceedings pursuant to 28 U.S.C. 1404(a). The Clerk is directed to TRANSFER this case to the United States District Court, Eastern District of New York, forthwith (MD JS-6. Case Terminated.) (bp) [Transferred from California Central on 3/3/2016.] (Entered: 03/03/2016) 03/03/2016 27 Transfer Out Transmittal Letter sent to USDC Eastern District of New York at Brooklyn. (bp) [Transferred from California Central on 3/3/2016.] (Entered: 03/03/2016) 03/03/2016 28 Case transferred in from District of California Central; Case Number 2:15-cv- 08118. Original file certified copy of transfer order and docket sheet received. (Entered: 03/03/2016) 03/03/2016 The case of Cree, Inc v. Xiu Ping Chen et al, has been transferred from Central District of California to the Eastern District of New York. The new case number is 16cv1065. PLEASE NOTE: if you plan to continue representing your client(s), you must be admitted to practice before this court. You must do so by applying for Pro Hac Vice or permanent admission. To apply for Pro Hac Vice admission, you must first register for an ECF login and password. Please visit the Court's website at www.nyed.uscourts.gov for guidance. Once registered, you must electronically file a Motion to Appear Pro Hac Vice. You must pay the required pro hac vice fee online. (Bowens, Priscilla) (Entered: 03/03/2016) 03/03/2016 29 In accordance with Rule 73 of the Federal Rules of Civil Procedure and Local Rule 73.1, the parties are notified that if all parties consent a United States magistrate judge of this court is available to conduct all proceedings in this civil action including a (jury or nonjury) trial and to order the entry of a final judgment. Attached to the Notice is a blank copy of the consent form that should be filled out, signed and filed electronically only if all parties wish to consent. The form may also be accessed at the following link: http://www.uscourts.gov/uscourts/FormsAndFees/Forms/AO085.pdf. You may withhold your consent without adverse substantive consequences. Do NOT return or file the consent unless all parties have signed the consent. (Bowens, Priscilla) (Entered: 03/03/2016) Page 7 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 8 of 15 PageID #: 3070 03/03/2016 30 SCHEDULING ORDER: An Initial Conference set for 4/19/2016 @ 9:30 AM before Magistrate Judge Cheryl L. Pollak. So Ordered by Magistrate Judge Cheryl L. Pollak on 3/3/2016. (Caggiano, Diana) (Entered: 03/03/2016) 03/03/2016 31 Notice of Report on the filing of an action regarding a Patent or Trademark. (Attachments: # 1 attachment) CASE TRANSFERRED FROM Central District of California (Rocco, Christine) (Entered: 03/03/2016) 03/11/2016 32 MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0207-8447823. by Cree Inc. (Attachments: # 1 Affidavit in Support of Motion to Admit Counsel Pro Hac Vice, # 2 Proposed Order Admission to Practice Pro Hac Vice) (Chaney, Marcus) (Entered: 03/11/2016) 03/21/2016 33 ORDER granting 32 Motion for Leave to Appear Pro Hac Vice The attorney shall register for ECF, registration is available online at the NYEDs homepage. Once registered, the attorney shall file a notice of appearance and ensure that s/he receives electronic notification of activity in this case. Also, the attorney shall ensure that the $150 admission fee be submitted to the Clerks Office. So Ordered by Magistrate Judge Cheryl L. Pollak on 3/21/2016. (Caggiano, Diana) (Entered: 03/21/2016) 03/22/2016 34 NOTICE of Appearance by Marcus F Chaney on behalf of Cree Inc (notification declined or already on case) (Chaney, Marcus) (Entered: 03/22/2016) 03/22/2016 35 MOTION for Leave to Appear Pro Hac Vice Filing fee $ 150, receipt number 0207-8474152. by Cree Inc. (Attachments: # 1 Affidavit of Christopher Q. Pham in support of Motion to Admit Counsel Pro Hac Vice, # 2 Proposed Order Admission to Practice Pro Hac Vice) (Pham, Christopher) (Entered: 03/22/2016) 03/23/2016 36 ORDER granting 35 Motion for Leave to Appear Pro Hac Vice The attorney shall register for ECF, registration is available online at the NYEDs homepage. Once registered, the attorney shall file a notice of appearance and ensure that s/he receives electronic notification of activity in this case. Also, the attorney shall ensure that the $150 admission fee be submitted to the Clerks Office. So Ordered by Magistrate Judge Cheryl L. Pollak on 3/23/2016. (Caggiano, Diana) (Entered: 03/23/2016) 03/23/2016 37 NOTICE of Appearance by Christopher Q Pham on behalf of Cree Inc (notification declined or already on case) (Pham, Christopher) (Entered: 03/23/2016) 04/06/2016 38 NOTICE of Appearance by Samuel Lucien Butt on behalf of Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, N and K Trading, Inc., Hang Feng Wu (aty to be noticed) (Butt, Samuel) (Entered: 04/06/2016) 04/19/2016 39 MINUTE ENTRY for Initial Conference proceeding held before MJ Pollak on 4/19/2016. Parties to exchange documents requests and interrogatories by 5/20/16 - responses 6/20/16. Subpoenas to be produces for in camera review. Telephone Conference set for 7/26/2016 @ 10:30 AM. (Caggiano, Diana) (Entered: 04/19/2016) 07/19/2016 40 STIPULATION AND ORDER REGARDING CONFIDENTIAL INFORMATION by Cree Inc (Chaney, Marcus) (Entered: 07/19/2016) Page 8 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 9 of 15 PageID #: 3071 07/20/2016 41 MINUTE ENTRY for Telephone Conference proceeding held before MJ Pollak on 7/20/2016. Parties to revise confidential agreement 40 in accordance with Cumberland v. Monsanto. (Caggiano, Diana) (Entered: 07/20/2016) 07/22/2016 42 MOTION for Extension of Time to File Response/Reply by Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, Does, N and K Trading, Inc., Hang Feng Wu. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7) (Wolstein, Elizabeth) (Entered: 07/22/2016) 07/26/2016 43 AMENDED MINUTE ENTRY for Status Conference proceeding re 42 held before MJ Pollak on 7/26/2016. Defendant's request for 3 week discovery extension is granted as to N&K & Wu. Parties are to meet and confer on 4 interrogatories per each Chen defendant and to confer on any objections to their adversary's discovery requests. Any disputes are to be submitted to the Court by 8/26/16; response 9/2/16. Status Conference set for 9/9/2016 @ 12:30 PM. (Caggiano, Diana) Modified on 7/26/2016 (Caggiano, Diana). (Entered: 07/26/2016) 08/09/2016 44 STIPULATION (AMENDED) and Order Regarding Confidential Information by Cree Inc (Chaney, Marcus) (Entered: 08/09/2016) 08/25/2016 45 STIPULATION AND ORDER re 44 So Ordered by Magistrate Judge Cheryl L. Pollak on 8/25/2016. (Caggiano, Diana) (Entered: 08/25/2016) 08/26/2016 46 MOTION for Discovery by Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, Does, N and K Trading, Inc., Hang Feng Wu. (Attachments: # 1 Exhibit A, # 2 Exhibit B, # 3 Exhibit C, # 4 Exhibit D, # 5 Exhibit E) (Butt, Samuel) (Entered: 08/26/2016) 08/26/2016 47 Letter MOTION for Discovery by Cree Inc. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10) (Chaney, Marcus) (Entered: 08/26/2016) 08/31/2016 48 Letter Motion to Appear by Telephone at Status Conference scheduled on Friday, September 9, 2016 at 12:30 P.M. by Cree Inc. (Chaney, Marcus) (Entered: 08/31/2016) 08/31/2016 ELECTRONIC ORDER granting 48 Motion to Appear by Telephone on 9/9/16 @ 12:30 PM. So Ordered by Magistrate Judge Cheryl L. Pollak on 8/31/2016. (Caggiano, Diana) (Entered: 08/31/2016) 09/02/2016 49 Letter in Reply to Plaintiff's Letter dated August 26 2016 by Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, Does, N and K Trading, Inc., Hang Feng Wu (Attachments: # 1 Exhibit A1- Sample of Plaintiff's Production, # 2 Exhibit A2- Sample of Plaintiff's Production, # 3 Exhibit B- Photo of item 1, # 4 Exhibit C- Photos of item 2) (Butt, Samuel) (Entered: 09/02/2016) 09/02/2016 50 RESPONSE in Opposition re 46 MOTION for Discovery by Xiu Min Chen, Xiu Ping Chen, Xiu Juan Chen, N&K Trading Inc., Hang Feng Wu filed by Cree Inc. (Chaney, Marcus) (Entered: 09/02/2016) 09/08/2016 51 Page 9 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 10 of 15 PageID #: 3072 STIPULATION of Dismissal as to Defendants Xiu Min Chen and Xiu Juan Chen, without prejudice by Cree Inc (Chaney, Marcus) (Entered: 09/08/2016) 09/09/2016 52 MINUTE ENTRY for Status Conference proceeding re 46 - 47 held before MJ Pollak on 9/9/2016. Parties are Ordered to meet and confer on scope of requests. Status Conference set for 10/13/2016 @ 2:00 PM. (Caggiano, Diana) (Entered: 09/09/2016) 09/23/2016 53 Letter MOTION for pre motion conference by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11) (Wolstein, Elizabeth) (Entered: 09/23/2016) 09/30/2016 54 RESPONSE in Opposition re 53 Letter MOTION for pre motion conference filed by Cree Inc. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11) (Chaney, Marcus) (Entered: 09/30/2016) 10/07/2016 ORDER granting 53 Motion for Pre Motion Conference. Conference scheduled for November 28, 2016 at 10:30 A.M.. Ordered by Judge Nina Gershon on 10/7/2016. (Joe, Victor) (Entered: 10/07/2016) 10/13/2016 55 MODIFIED MINUTE ENTRY for Telephone Conference held before MJ Pollak. By 10/31 plaintiff to provide affidavit from someone with knowledge detailing the product it sells, its licensing arrangements, and its records relating to sales and profits as to flashlights; plaintiff is also to respond to outstanding interrogatories. By 10/31 defendant is to produce documents. By 11/14, defendant is to provide letter detailing the e-discovery sought and its relevance. By 11/14, plaintiff is to respond to interrogatories re damages. Telephone conference set for November 22, 2016 at 2:00 p.m. (Tape #2:30-3:22.)(Singer, Jacob) Modified on 10/14/2016 (Rao, Sony). (Entered: 10/13/2016) 10/27/2016 56 ORDER endorsed on 51 Stipulation of Dismissal as to Defendants Xiu Min Chen and Xiu Juan Chen, without prejudice: So Ordered. Ordered by Judge Nina Gershon on 10/26/2016. (Barrett, C) (Entered: 10/27/2016) 11/10/2016 Set/Reset Hearings: Pre Motion Conference scheduled for November 28, 2016 is adjourned to Wednesday, November 30, 2016 at 10:30 A.M. in Courtroom 6D South before Judge Nina Gershon. (Joe, Victor) (Entered: 11/10/2016) 11/14/2016 57 Letter pursuant to October 13, 2016 Order by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7 part 1, # 8 Exhibit 7 part 2, # 9 Exhibit 7 part 3) (Wolstein, Elizabeth) (Entered: 11/14/2016) 11/21/2016 58 Letter in Response to Letter pursuant to October 13, 2016 Order directing Defendants to detail e-discovery sought and its relevance by Cree Inc (Attachments: # 1 Exhibit 1 - [Proposed] Amended Complaint) (Chaney, Marcus) (Entered: 11/21/2016) 11/22/2016 59 MINUTE ENTRY for Telephone Conference proceeding held before MJ Pollak on 11/22/2016. By 12/2/16, defendant to notify court regarding redaction of PayPal records. By 12/9/16, defendant to notify court regarding consent to Page 10 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 11 of 15 PageID #: 3073 amended complaint or need for motion. Counsel to confer regarding pre-motion conference adjournment request. Discovery held in abeyance pending motions. (Tape #1:58-2:40) (Caggiano, Diana) (Entered: 11/22/2016) 11/23/2016 60 Joint MOTION to Adjourn Conference by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Wolstein, Elizabeth) (Entered: 11/23/2016) 11/28/2016 61 Letter Motion to Appear by Telephone at Pre-Motion Conference if Joint Motion for Adjournment of Pre-Motion Conference is Denied by the Court by Cree Inc. (Chaney, Marcus) (Entered: 11/28/2016) 11/29/2016 ORDER granting 60 Motion to Adjourn Conference. Ordered by Judge Nina Gershon on 11/29/2016. (Joe, Victor) (Entered: 11/29/2016) 11/29/2016 ORDER denying 61 Motion to Appear by Telephone. Ordered by Judge Nina Gershon on 11/29/2016. (Joe, Victor) (Entered: 11/29/2016) 12/02/2016 62 Letter pursuant to 11/22/16 conference and order by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Wolstein, Elizabeth) (Entered: 12/02/2016) 12/05/2016 63 ENDORSED LETTER ORDER re 62 Redacted records should be provided to counsel and the Court by 12/30/16. So Ordered by Magistrate Judge Cheryl L. Pollak on 12/5/2016. (Caggiano, Diana) (Entered: 12/05/2016) 12/09/2016 64 ORDER re 62 : Accordingly, the original PayPal records containing sales information of the accounts allegedly owned by defendants are being provided to defendants' counsel for purposes of redacting these records and providing the Court and plaintiff with a copy of the redacted records by December 30, 2016. After defendants have produced redacted versions of the PayPal records, they are to return the original records to the Court within 30 days of completing the redaction. So Ordered by Magistrate Judge Cheryl L. Pollak on 12/9/2016. (Caggiano, Diana) (Entered: 12/09/2016) 12/09/2016 65 Letter pursuant to 11-22-16 conference and order by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Wolstein, Elizabeth) (Entered: 12/09/2016) 12/12/2016 ELECTRONIC ORDER re 65 : Given that defendants have declined to consent to the amendments, the briefing schedule for the motion to amend the complaint is as follows: 1) by 12/30/2016, plaintiff is to file a formal motion to amend; 2) by 1/13/2017 defendants are to file their response to the motion; 3) by 1/20/2017, plaintiff is to file a reply, if any. So Ordered by Magistrate Judge Cheryl L. Pollak on 12/12/2016. (Rao, Sony) (Entered: 12/12/2016) 12/23/2016 66 Letter concerning production of ESI and requesting certain relief by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Wolstein, Elizabeth) (Entered: 12/23/2016) 12/27/2016 67 Letter in Response to Defendants Letter concerning redaction and production of records pursuant to Discovery Order (ECF Dkt. 64) by Cree Inc (Attachments: # 1 Exhibit A) (Pham, Christopher) (Entered: 12/27/2016) 12/28/2016 68 Letter regarding case management order by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Attachments: # 1 Exhibit 1) (Wolstein, Elizabeth) (Entered: 12/28/2016) Page 11 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 12 of 15 PageID #: 3074 12/29/2016 ELECTRONIC ORDER re 66 - 67 - 68 : Defendants are given until 1/23/2017 to complete the redaction project. The remainder of the issues raised by the parties will be addressed at a Telephone Conference set for January 4, 2017 at 2:30 P.M. So Ordered by Magistrate Judge Cheryl L. Pollak on 12/29/2016. (Rao, Sony) (Entered: 12/29/2016) 12/29/2016 69 Notice of MOTION for Leave to File Amended Complaint pursuant to Rule 15 (a)(2) of the Federal Rules of Civil Procedure by Cree Inc. (Attachments: # 1 Memorandum in Support of Motion for Leave to File Amended Complaint, # 2 Declaration of Marcus F. Chaney in Support of Motion for Leave to File Amended Complaint, # 3 Exhibit A, # 4 Exhibit B, # 5 Exhibit C, # 6 Exhibit D, # 7 Exhibit E, # 8 Exhibit F, # 9 Exhibit G, # 10 Exhibit H, # 11 Exhibit I, # 12 Exhibit J, # 13 Exhibit K, # 14 Exhibit L, # 15 Exhibit M, # 16 Exhibit N, # 17 Exhibit O, # 18 Exhibit P, # 19 Exhibit Q, # 20 Exhibit R, # 21 Proposed Order Granting Leave to File Amended Complaint) (Chaney, Marcus) Modified on 4/27/2017 (Barrett, C). (Entered: 12/29/2016) 12/29/2016 70 Letter regarding telephonic conference by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Wolstein, Elizabeth) (Entered: 12/29/2016) 01/03/2017 71 Letter regarding scheduling of telephone conference by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu (Wolstein, Elizabeth) (Entered: 01/03/2017) 01/04/2017 72 MINUTE ENTRY for Telephone Conference proceeding held before MJ Pollak on 1/4/2017. Defendant's request 68 to stay further redactions of the Paypal records pending motion to amend is granted. (Tape #2:36-2:45) (Caggiano, Diana) (Entered: 01/04/2017) 01/09/2017 73 Letter MOTION for Extension of Time to File Response/Reply as to 69 Notice of MOTION for Leave to File Amended Complaint pursuant to Rule 15(a)(2) of the Federal Rules of Civil Procedure by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Wolstein, Elizabeth) (Entered: 01/09/2017) 01/11/2017 ORDER granting 73 Motion for Extension of Time to File Response/Reply. Ordered by Judge Nina Gershon on 1/11/2017. (Joe, Victor) (Entered: 01/11/2017) 01/20/2017 74 AFFIDAVIT/DECLARATION in Opposition re 69 Notice of MOTION for Leave to File Amended Complaint pursuant to Rule 15(a)(2) of the Federal Rules of Civil Procedure filed by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Attachments: # 1 Exhibit 1, # 2 Exhibit 2, # 3 Exhibit 3, # 4 Exhibit 4, # 5 Exhibit 5, # 6 Exhibit 6, # 7 Exhibit 7, # 8 Exhibit 8, # 9 Exhibit 9, # 10 Exhibit 10, # 11 Exhibit 11, # 12 Exhibit 12, # 13 Exhibit 13, # 14 Exhibit 14) (Wolstein, Elizabeth) (Entered: 01/20/2017) 01/20/2017 75 AFFIDAVIT/DECLARATION in Opposition re 69 Notice of MOTION for Leave to File Amended Complaint pursuant to Rule 15(a)(2) of the Federal Rules of Civil Procedure filed by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Wolstein, Elizabeth) (Entered: 01/20/2017) 01/20/2017 76 MEMORANDUM in Opposition re 69 Notice of MOTION for Leave to File Amended Complaint pursuant to Rule 15(a)(2) of the Federal Rules of Civil Page 12 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 13 of 15 PageID #: 3075 Procedure filed by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Wolstein, Elizabeth) (Entered: 01/20/2017) 01/27/2017 77 REPLY to Response to Motion re 69 Notice of MOTION for Leave to File Amended Complaint pursuant to Rule 15(a)(2) of the Federal Rules of Civil Procedure filed by Cree Inc. (Attachments: # 1 Declaration, # 2 Exhibit S, # 3 Exhibit T, # 4 Exhibit U, # 5 Exhibit V, # 6 Exhibit W) (Chaney, Marcus) (Entered: 01/27/2017) 01/31/2017 78 Letter MOTION to Strike 77 Reply to Response to Motion, or in the alternative to consider defendants arguments in surreply by Xiu Ping Chen, N and K Trading, Inc., Hang Feng Wu. (Wolstein, Elizabeth) (Entered: 01/31/2017) 02/01/2017 79 RESPONSE to Motion re 78 Letter MOTION to Strike 77 Reply to Response to Motion, or in the alternative to consider defendants arguments in surreply filed by Cree Inc. (Chaney, Marcus) (Entered: 02/01/2017) 03/30/2017 Set/Reset Hearings: Oral argument set for 4/26/2017 at 10:30 AM in Courtroom 6D South before Judge Nina Gershon. (Joe, Victor) (Entered: 03/30/2017) 04/26/2017 ELECTRONIC SCHEDULING ORDER: A Telephone Conference is set for 5/2/2017 @ 10:00 AM before Magistrate Judge Cheryl L. Pollak. So Ordered by Magistrate Judge Cheryl L. Pollak on 4/26/2017. (Caggiano, Diana) (Entered: 04/26/2017) 04/26/2017 Minute Entry for proceedings held before Judge Nina Gershon: Case called. Marcus Chaney, Esq. for Cree, Inc. Elizabeth Wolstein, Esq. for N amd K, Inc.Pre Motion Conference held on 4/26/2017 (Court Reporter Anthony Mancuso.) (Joe, Victor) (Entered: 04/26/2017) 04/27/2017 80 ORDER granting 69 Motion to Amend 1 Complaint and lifting any stays of discovery currently in effect. (Amended Complaint due by 5/4/2017.) Ordered by Judge Nina Gershon on 4/26/2017. (Barrett, C) (Entered: 04/27/2017) 05/01/2017 81 AMENDED COMPLAINT against Xiu Ping Chen, Does, N and K Trading, Inc., Hang Feng Wu, Enumber, Inc., filed by Cree Inc. (Chaney, Marcus) (Entered: 05/01/2017) 05/02/2017 82 MINUTE ENTRY for Telephone Conference proceeding before MJ Pollak on 5/2/2017. By 5/17 defendants to send letter outlining outstanding discovery and serving new requests based on Amended Complaint. Plaintiff to respond to new requests by 6/16. Plaintiff to submit responses to outstanding discovery and/or meet and confer by 5/31. Defendants to submit all 3 terms (incl. XLamp) to vendor but hold back XLamp docs pending anticipated motion to dismiss. Telephone Conference set for June 22, 2017 at 2:00 p.m. (Tape #10:06-10:24.) (Singer, Jacob) (Entered: 05/02/2017) 05/08/2017 83 ORDER re 47 - 49 - 50 : In light of the foregoing, the Court grants plaintiff's motion for discovery of the Amazon and eBay records, specifically the records provided to this Court for in camera review. However, defendants may provide the records under seal or redact the records before providing them to plaintiff. If defendants choose to redact the records, they must follow the procedures set for the redaction of the PayPal records during the May 2, 2017 conference - namely, Page 13 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 14 of 15 PageID #: 3076 exclude all listings that contain the terms: "XLAMP," "CREE," and "XM-L" in making the initial redactions. By May 17, 2017, defendants are to inform the Court when they will be able to provide the Amazon and eBay records to plaintiff and the manner in which they choose to provide the records. So Ordered by Magistrate Judge Cheryl L. Pollak on 5/8/2017. (Caggiano, Diana) (Entered: 05/08/2017) 05/10/2017 84 MOTION for Extension of Time to File Response/Reply as to 81 Amended Complaint by Xiu Ping Chen, N&K Trading, Inc., Hang Feng Wu. (Wolstein, Elizabeth) (Entered: 05/10/2017) 05/11/2017 85 STIPULATION of Dismissal of Third Cause of Action for Dilution in Amended Complaint, with prejudice by Cree, Inc. (Chaney, Marcus) (Entered: 05/11/2017) 05/11/2017 86 ENDORSED ORDER granting 84 Motion for Extension of Time to File Response/Reply. Response to Amended Complaint due by 5/26/2017. Ordered by Judge Nina Gershon on 5/11/2017. (Barrett, C) (Entered: 05/12/2017) 05/11/2017 87 STIPULATION OF DISMISSAL OF THIRD CAUSE OF ACTION FOR DILUTION IN AMENDED COMPLAINT, WITH PREJUDICE. So Ordered. Ordered by Judge Nina Gershon on 5/11/2017. (Barrett, C) (Entered: 05/12/2017) 05/17/2017 88 Letter in response to May 8, 2017 order by Xiu Ping Chen, N&K Trading, Inc., Hang Feng Wu (Wolstein, Elizabeth) (Entered: 05/17/2017) 05/19/2017 89 ELECTRONIC RESCHEDULING ORDER: re 88 Request to adjourned is granted. Telephone Conference is rescheduled for 7/12/2017 @ 9:30 AM. So Ordered by Magistrate Judge Cheryl L. Pollak on 5/19/2017. (Caggiano, Diana) (Entered: 05/19/2017) Page 14 of 14Eastern District of New York - LIVE Database V6.1.1.2 5/25/2017https://ecf.nyed.uscourts.gov/cgi-bin/DktRpt.pl?905785081139634-L_1_0-1 REDACTED Case 1:16-cv-01065-NG-CLP Document 90-10 Filed 05/26/17 Page 15 of 15 PageID #: 3077 Exhibit 9 Case 1:16-cv-01065-NG-CLP Document 90-11 Filed 05/26/17 Page 1 of 6 PageID #: 3078 26 Broadway, New York, NY 10004 Main: 212 344-5400 Fax: 212 344-7677 schlamstone.com Elizabeth Wolstein Partner 212 612-0688 ewolstein@schlamstone.com September 23, 2016 BY ECF FILING Honorable Nina Gershon United States District Judge, Eastern District of New York 225 Cadman Plaza East Brooklyn, New York 11201 Re: Cree v. Chen, et al., No. 16-CV-1065 (NG) (CLP) Dear Judge Gershon: We represent Defendants in the above-referenced action for trademark infringement, and write respectfully to request a pre-motion conference to discuss Defendants’ proposed motion for judgment on the pleadings dismissing the Complaint, and additionally as to defendant Xiu Ping Chen, for summary judgment. Due to the importance of providing the legal framework under which Plaintiff’s trademark claims are analyzed, we respectfully request permission to exceed the usual three-page limit by one page. I. The Allegations Of The Complaint Plaintiff Cree is a maker of light emitting diodes, better known as LEDs, and products that incorporate LEDs. Cmplt. ¶ 20 (Exh. 1 hereto). Plaintiff alleges that it has registered and common law trademarks covering, among other things, LEDs, photodiodes, semiconductor wafers and chips, LED bulbs, electronic circuits, electric components for lighting, and, relevant here, flashlights. Id. ¶ 24. Defendant N&K is a family business that fulfills orders for products advertised and sold on the Internet by other entities. N&K does not make, advertise, market, offer for sale, or sell any products, and does not own or operate any website through which customers order or buy products. Answer at page 7 (Third Affirmative Defense); id. ¶¶ 28, 31 (Exh. 2 hereto).1 Cree has also sued N&K’s CEO Nick Wu, Wu’s mother, Xiu Ping Chen, and two aunts, Xiu Min Chen, and Xiu Juan Chen, though it recently agreed to dismiss the two aunts given the lack of any factual basis for naming them as defendants. (Docket Entry No. 51). The Complaint alleges that five flashlights Plaintiff’s investigator purchased from eBay were “counterfeit CREE products.” Cmplt. ¶¶ 33-38; see also id. ¶ 41 (alleging that Defendants “applied counterfeit marks” and “engaged in counterfeiting”). Based on conclusory and formulaic recitations of the elements of each claim, the Complaint asserts three causes of action under the Lanham Act: for infringement under 15 U.S.C. § 1114, false designation of origin under 15 U.S.C. § 1125(a), and trademark dilution under 15 U.S.C. § 1125(c), all of 1 The subsequently filed answer of defendants Xiu Min Chen and Xiu Juan Chen (Docket Entry No. 19) is substantially similar. Case 1:16-cv-01065-NG-CLP Document 90-11 Filed 05/26/17 Page 2 of 6 PageID #: 3079 Honorable Nina Gershon September 23, 2016 Page 2 which rest on Plaintiff’s counterfeiting theory. See Cmplt. ¶ 47-49 (alleging that defendants distributed “counterfeit Cree products” and “fake and counterfeit items bearing Plaintiff’s trademarks,”); id. ¶ 58 (alleging that products bore a “counterfeit reproduction of” Cree’s alleged marks); id. ¶ 66 (alleging that defendants were selling “fake, pirated and counterfeit items”). The Complaint also asserts a claim for “unlawful, unfair, and fraudulent business practices” pursuant to Calif. Bus. and Profess. Code 17200, et seq. Id. at pages 20-22. II. The Infringement Claims (First And Second Causes Of Action) Should Be Dismissed For Failure To State Any Plausible Counterfeiting Claim Courts “employ substantially similar standards when analyzing claims for trademark infringement under the Lanham Act, 15 U.S.C. § 1114(1)(a) and false designation of origin under the Lanham Act, 15 U.S.C. § 1125(a).” Van Praagh v. Gratton, 993 F. Supp. 2d 293, 301 (E.D.N.Y. 2014); see also Zimmerli Textil AG v. Kabbaz, No. 14-CV-1560 (JS) (AYS), 2015 WL 5821523, at *3 (E.D.N.Y. Sept. 30, 2015) (same). Claims for trademark infringement are analyzed by looking “first to whether the plaintiff’s mark is entitled to protection, and second to whether the defendant’s use of the mark is likely to cause consumers confusion as to the origin or sponsorship of the defendant’s goods.” Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93, 102 (2d Cir. 2010). To establish a claim for infringement or counterfeiting, “the plaintiff must also demonstrate that the defendants actually reproduced the registered trademark.” Overseas Direct Imp. Co. v. Family Dollar Stores Inc., 929 F. Supp.2d 296, 306-07 (S.D.N.Y. 2013). The Lanham Act defines a counterfeit mark as “a spurious mark which is identical with, or substantially indistinguishable from, a registered mark.” 15 U.S.C. § 1127. In analyzing a counterfeiting claim, the “allegedly counterfeit mark must be compared with the registered mark as it appears on actual merchandise to an average purchaser.” Montres Rolex, S.A. v. Snyder, 718 F.2d 524, 533 (2d Cir.1983); Birmingham v. Mizuno USA, Inc., No. 5:09-CV- 0566, 2011 WL 1299356, at *8 (N.D.N.Y. Mar. 31, 2011) (same).2 The Complaint fails to allege any plausible counterfeiting claim. It contains no image of any allegedly genuine Cree flashlight, and no image of any allegedly counterfeit Cree flashlight, and thus provides no “factual content that allows the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678 (2009). See Milo & Gabby, LLC v. Amazon.com, Inc., 12 F. Supp.3d 1341, 1352 (W.D. Wash. 2014) (granting motion to dismiss counterfeiting claim for failure to state a plausible claim, where complaint did not depict product bearing allegedly counterfeit mark; “Plaintiffs cannot sustain a claim for trademark counterfeiting based upon exhibits that do not show any reproduction of Plaintiff’s registered mark”); see also Boarding School Review, LLC v. Delta 2 On a Rule 12(c) motion, a court may consider “the complaint, the answer, any written documents attached to them, and any matter of which the court can take judicial notice . . .” L-7 Designs, Inc. v. Old Navy LLC, 647 F.3d 419, 422 (2d Cir. 2011). Case 1:16-cv-01065-NG-CLP Document 90-11 Filed 05/26/17 Page 3 of 6 PageID #: 3080 Honorable Nina Gershon September 23, 2016 Page 3 Career Educ. Corp., 2013 WL 6670584, at *4 (S.D.N.Y. Mar. 29, 2013) (granting motion to dismiss because plaintiff’s theory of trademark infringement was “no more than a ‘sheer possibility’ and ‘stop[ped] short of the line between possibility and plausibility of entitlement to relief’”) (quoting Iqbal, 556 U.S. at 678); cf. Overseas Direct Imp. Co., 929 F. Supp. 2d at 306 (dismissing trademark infringement claims on summary judgment because plaintiff failed to show that packaging produced and sold by defendants bore plaintiff’s mark). The absence of images that should be the sine qua non of any counterfeiting or infringement claim is no oversight. In fact, there is no such thing as a “genuine” Cree flashlight because, as Cree’s website states, Cree does not make flashlights. See Exh. 3 hereto (“It is important to note that Cree does not manufacture products like flashlights . . . .”).3 Thus, Plaintiff has not offered, and cannot offer, any image of a genuine Cree flashlight that would allow the Court to assess the allegedly counterfeit mark (also absent from the Complaint) as “compared with the registered mark as it appears on actual merchandise to an average purchaser.” Montres Rolex, 718 F.2d at 533. Even if the allegedly counterfeit flashlights purchased by Plaintiff’s investigator (see Cmplt. ¶¶ 33-37), photos of which are attached hereto as Exhs. 4, 5, 6, 7, and 8, respectively, are deemed incorporated by reference into the Complaint, the markings on these flashlights cannot be assessed for whether they are “identical with, or substantially indistinguishable from” the genuine product given that there is no such thing as a genuine Cree flashlight, nor does the Complaint include any image of an actual flashlight bearing marks Cree has licensed others to reproduce on flashlights. Accordingly, the Complaint fails to state any plausible claim for trademark infringement on Plaintiff’s counterfeiting theory. III. The Trademark Dilution Claim (Third Cause Of Action) Should Be Dismissed Because Cree’s Mark Is Not “Famous” As A Matter Of Law To state a claim for trademark dilution, “a trademark owner must demonstrate that its mark is famous or widely recognized by the general consuming public of the United States as a designation of source of the goods or services of the mark’s owner.” New World Solutions, Inc. v. NameMedia Inc., --F.Supp.3d --, 2015 WL 8958390, at *18 (S.D.N.Y. Dec. 15, 2015) (quoting statutory definition, emphasis added).4 “[T]he element of fame is the key ingredient,” because “the [prerequisite] that most narrows the universe of potentially successful claims is the requirement that the senior mark be truly famous before a court will afford the owner of the mark the vast protections” of the TDRA. Id. “Put another way, . . . the mark must be a household name.” Thane Intern., Inc. v. Trek Bicycle Corp., 305 F.3d 894, 911 (9th Cir. 2002). “One of the major purposes of the TDRA was to restrict dilution 3 The court may take judicial notice of Plaintiff’s website. See, e.g., Wells Fargo Bank, N.A. v. Wrights Mill Holdings, LLC, 127 F. Supp.3d 156, 166 (S.D.N.Y. 2015); In re Bayer Corp. Combination Aspirin Products Marketing and Sales Practices Litigation, 701 F. Supp.2d 356, 367-68 (E.D.N.Y. 2010). 4 In general, the Trademark Dilution Revision Act of 2006 (“TDRA”) allows the owner of a “famous mark” to obtain an injunction against “against another person who, at any time after the owner's mark has become famous, commences use of a mark or trade name in commerce that is likely to cause dilution by blurring or dilution by tarnishment of the famous mark.” 15 U.S.C. § 1125(c)(1). Case 1:16-cv-01065-NG-CLP Document 90-11 Filed 05/26/17 Page 4 of 6 PageID #: 3081 Honorable Nina Gershon September 23, 2016 Page 4 causes of action to those few truly famous marks like Budweiser beer, Camel cigarettes, Barbie Dolls, and the like.” Luv N' Care, Ltd. v. Regent Baby Prod. Corp., 841 F. Supp. 2d 753, 758 (S.D.N.Y. 2012) (internal quotation marks omitted) (dismissing dilution claim where, as here, pleading contained only conclusory, formulaic statements that marks were famous, unsupported by factual references); see also Kuklachev v. Gelfman, 600 F. Supp.2d 437, 472 (E.D.N.Y. 2009) (granting motion to dismiss dilution claim because plaintiff’s “Moscow Cats Theatre” mark not “truly famous”). The Complaint contains no factual allegations at all supporting its conclusory assertion that the Cree mark is famous, and certainly none suggesting that Cree has any plausible claim to being a household name on the order of Budweiser, Camel, or Barbie. Cree’s website confirms the point: other than LED light bulbs, it neither makes nor sells consumer products. Its lighting products are used in commercial and industrial applications such as airport, roadway, gas station, and parking structure lighting. See Exh. 9 hereto (pages from Cree website). Product information on its website is highly technical and clearly addressed to scientists, engineers, and other specialists, not consumers. See, e.g., Exh. 10 hereto (describing XLamp XP-E LEDs). In its 2016 Annual Report, Cree describes itself as a maker of “lightning-class light emitting diode (LED) products, lighting products and wide bandgap semiconductor products for power and radio-frequency (RF) applications” (excerpt attached as Exh. 11 hereto)—not exactly fields that make it a household name.5 IV. The Complaint Should Additionally Be Dismissed Or Summary Judgment Granted As To Defendant Xiu Ping Chen, And The Court Should Stay Discovery Pending Resolution Of Defendants’ Motion For an individual corporate officer to be liable for trademark infringement, she must have been the “‘moving active conscious force’ behind the employer’s alleged infringement.” Kuklachev v. Gelfman, 2009 WL 804095, at *5 (E.D.N.Y. March 25, 2009). The Complaint pleads no facts that would provide a basis to hold Xiu Ping Chen liable under this standard. In addition, Defendants have provided Plaintiff with admissible evidence showing that the only work Ms. Chen performed at N&K was in the human resources area and that she had no responsibilities involving the products, leaving no basis on which to impose liability. Finally, with our motion Defendants propose to move to stay discovery beyond the discovery disputes currently pending. A stay is warranted given the strength of Defendants’ motion, the complexity of discovery, and the lack of prejudice to Plaintiff. See, e.g., Chesney v. Valley Stream Union Free Sch. Dist. No. 24, 236 F.R.D. 113, 115 (E.D.N.Y. 2006). 5 To the extent Plaintiff’s Lanham Act claims are dismissed, there will be no basis for the Court to exercise supplemental jurisdiction over Plaintiff’s California state law claim. Case 1:16-cv-01065-NG-CLP Document 90-11 Filed 05/26/17 Page 5 of 6 PageID #: 3082 Honorable Nina Gershon September 23, 2016 Page 5 Respectfully, Elizabeth Wolstein Cc: Christopher Pham, Esq. (by ECF filing) Marcus Chaney, Esq. (by ECF filing) Case 1:16-cv-01065-NG-CLP Document 90-11 Filed 05/26/17 Page 6 of 6 PageID #: 3083 Exhibit 10 Case 1:16-cv-01065-NG-CLP Document 90-12 Filed 05/26/17 Page 1 of 2 PageID #: 3084 UNITED STATES DISTRICT COURT IN CLERK'S OFFICE EASTERN DISTRICT OF NEW YORK U.S. DISTRICT COURT E.D.N,Y. ------- ------- ----------x * APR 272017 * CREE, INC., BROOKLYN OFFICE Plaintiff, - against - No. 16-cv-1065 (NG) (CLP) XIU PING CHEN, et al., Defendants. ---------------------------------------------- -x GERSHON, United States District Judge: As stated on the record at today's conference, plaintiff's motion to amend the complaint is granted, and it must file the amended complaint by May 4, 2017. Plaintiff is to file the version of the amended complaint that I considered on the motion to amend. However, if plaintiff decides to drop the trademark dilution claim, then it is to file a stipulation to that effect upon filing the amended complaint. Additionally, at today's conference, plaintiff stipulated that it is not pursuing a counterfeit theory as to the XM-L mark. Lastly, any stays of discovery currently in effect are lifted subject to any future rulings by United States Magistrate Judge Pollak. SO ORDERED. NINA GERSHON United States District Judge Dated: April 26, 2017 Brooklyn, New York /s/ Nina Gershon Case 1:16-cv-01065-NG-CLP Document 80 Filed 04/27/17 Page 1 of 1 PageID #: 2921Case 1: 6-cv-01065-NG-CLP Document 90-12 Filed 05/26/17 Page 2 of 2 PageID #: 3085 Exhibit 11 Case 1:16-cv-01065-NG-CLP Document 90-13 Filed 05/26/17 Page 1 of 2 PageID #: 3086 Dated: May 11, 2017 Dated: May 11, 2017 N CLERKS OFFICE U.s. DISTRICT COURT EDN.Y * MAY 1I2O17 * BROOKLYN OFFICE UNITED STATES DISTRICT COURT EASTERN F DISTRICT O NEW YORK ------------------------------------------------------------ --------------- x CREE, INC., V. XIU PING CHEN, et al., Defendants. ---------------------------------------x STIPULATION OF DISMISSAL OF THIRD CAUSE OF ACTION FOR DILUTION IN AMENDED COMPLAINT, WITH PREJUDICE 1:1 6-cv-0 1 065-NG (CLP) Pursuant to the Court's April 27, 2017 ORDER (ECF Dkt. 80), Plaintiff Cree, Inc., through its counsel, and Defendants Xiu Ping Chen, Hang Feng Wu a/k/a Nick Wu and N&K Trading, Inc., through their counsel, hereby stipulate and agree that the Third Cause of Action for Dilution [15 U.S.C. §1125(a)] in the Amended Complaint (ECF Dkt. 81) be dismissed in its entirety, with prejudice. Each party to bear its own fees and costs. So Ordered: JOHNSON & PHAM, LLP By: /s/ Marcus F. Chaney________ Marcus F. Chaney, Esq. 6355 Topanga Canyon Blvd., Suite 326 Woodland Hills, CA 91367 Tel: (818) 888-7540 E-mail: mchaney(iohnsonpham.com Attorneys for Plaintiff SCHLAM STONE & DOLAN LLP By: /s/ Elizabeth Wolstein Elizabeth Woistein, Esq. Samuel L. Butt, Esq. 26 Broadway, 19th Floor New York, NY 10004 Tel: (212) 344-5400 E-mail: ewolstein@schlamstone.com Attorneys for Defendants 1 /s/ Ni na G ershon Case 1:16-cv-01065-NG-CLP Document 87 Filed 05/11/17 Page 1 of 1 PageID #: 2951Case 1: 6-cv-01065-NG-CLP Document 90-13 Filed 05/26/17 Page 2 of 2 PageID #: 3087