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Marshall A. Lerner (State Bar No. 55,224) mlerner@kleinberglerner.com KLEINBERG & LERNER, LLP 1875 Century Park East, Suite 1150 Los Angeles, California 90067-2501 Telephone: (310) 557-1511 Facsimile: (310) 557-1540 Attorney for Plaintiffs Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA-WESTERN DIVISION SKECHERS U.S.A., INC., a Delaware ) Corporation, and SKECHERS U.S.A., ) INC. II, a Delaware Corporation ) Plaintiffs, ) v. ) SHOE CONFESSION, LLC., a New York ) Corporation, PERRY ELLIS ) INTERNATIONAL, INC., a Florida ) Corporation, PEI LICENSING, INC., a ) Delaware Corporation and Does 1 10 ) inclusive, ) Defendants. ) ) ) __________________________________ Plaintiffs Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II (collectively Skechers) for their complaint against defendants Shoe Confession, LLC, Perry Ellis International, Inc., PEI Licensing Inc. and Does 1-10 (collectively defendants), allege as follows: NATURE OF THE ACTION 1. competition. 2. Skechers is a billion-dollar global leader in the lifestyle footwear industry. Skechers is also a high-performance footwear brand and a world leader in designing cutting-edge footwear. It has This is an action for design patent infringement, trade dress infringement, and unfair Case No.: COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) (2) (3) PATENT INFRINGEMENT [35 U.S.C. 271]; FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT [15 U.S.C. 1125(a)]; COMMON LAW UNFAIR COMPETITION

DEMAND FOR JURY TRIAL

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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invested and spent hundreds of millions of dollars creating and promoting its new shoe designs. One such new design is an ornamental sole bottom and outsole periphery, an example of which is embodied in its SKECHERS GO RUN shoe. The SKECHERS GO RUN shoe, its sole bottom and its outsole periphery have been heavily advertised on TV, in magazines, and the Internet. In approximately the last year alone, Skechers spent more than $10 million promoting, marketing and advertising its SKECHERS GO RUN shoe. The shoe has been featured in several widely aired television commercials and has been the subject of a number of magazine articles. The innovative design of the SKECHERS GO RUN shoe has also received several awards. See Exhibit 1. The fame and popularity of the SKECHERS GO RUN shoe and its sole bottom and outsole periphery can be measured by the fact that hundreds of thousands of pairs of SKECHERS GO RUN shoes have been sold since the shoe has been on the market. 3. In order to identify certain of its shoes, including the SKECHERS GO RUN shoe, as emanating from a single source, Skechers created a new and unique trade dress embodied in the sole bottom and a new and unique trade dress embodied in the outsole periphery of the SKECHERS GO RUN shoe. 4. An example of this sole bottom trade dress is shown in the following photograph indicated by the red circle:

SKECHERS GO RUN Sole Bottom Trade Dress

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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5.

This sole bottom trade dress has an ornamental configuration that uniquely identifies the

shoe as emanating from a single source, Skechers. As can be seen in the following photograph, the distinctive ornamental feature of the SKECHERS GO RUN sole bottom trade dress is (1) the pattern of nubs where large nubs (indicated by wide red arrows) form the shape of an X (indicated by the red line); (2) the large X-patterned nubs are surrounded by mid-size and smaller sized nubs (indicated by narrow blue arrows); and (3) the repeating pattern of cleats and nubs where cleats that have a relatively straight periphery surface (indicated by wide yellow arrows) alternate with nubs that have a curved periphery surface (indicated by wide green arrows):

SKECHERS GO RUN Sole Bottom Trade Dress

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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6.

An example of this outsole periphery trade dress is indicated by the red outline in the

following photograph:

SKECHERS GO RUN Outsole Periphery Trade Dress Indicated by Red Outline

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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7.

As can be seen in the following photograph, the distinctive ornamental feature of the

SKECHERS GO RUN outsole periphery trade dress is the repeating pattern of cleats and nubs where cleats that have a relatively straight periphery surface (indicated by wide yellow arrows) alternate with nubs that have a curved periphery surface (indicated by wide green arrows):

SKECHERS GO RUN Outsole Periphery Trade Dress Indicated by Green and Yellow Arrows 8. Skechers has acquired four U.S. design patents, D651,788 S (Exhibit 2), D652,613 S

(Exhibit 3), D652,614 S (Exhibit 4), and D650,980 S (Exhibit 5) which each cover different ornamental features of the SKECHERS GO RUN sole bottom and outsole periphery. 9. The unique ornamental appearance of the SKECHERS GO RUN sole bottom trade dress and the SKECHERS GO RUN outsole periphery, combined with Skechers extensive advertising, promotion, and sales, has resulted in the SKECHERS GO RUN sole bottom trade dress and SKECHERS GO RUN outsole periphery trade dress acquiring distinctiveness among shoe buyers. In the mind of the typical shoe buyer, the SKECHERS GO RUN sole bottom trade dress and the SKECHERS GO RUN outsole periphery trade dress is believed to emanate from a single source,
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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namely, Skechers. This acquired distinctiveness is protectable, proprietary trade dress owned exclusively by Skechers. 10. Rather than undertake the hard work and financial risks involved in developing their own sole bottom trade dress, defendants simply copied Skechers SKECHERS GO RUN sole bottom trade dress. The sole bottom of defendants Pro Player Phaze 2M. shoe in this regard is shown below.

Pro Player Phaze 2M Shoe Sole Bottom by Shoe Confession, LLC, Perry Ellis International, Inc., and PEI Licensing, Inc. 11. As can be seen in the photograph above, the sole bottom of defendants Pro Player Phaze

2M shoe bears the same repeating nub pattern used by Skechers as its SKECHERS GO RUN sole bottom trade dress, i.e., the nubs are arranged in a distinctive ornamental pattern where large nubs (indicated by wide red arrows) form the shape of an X (indicated by the red line), the large X-patterned nubs are surrounded by mid-size and smaller sized nubs (indicated by narrow blue arrows), and the repeating pattern of cleats and nubs where cleats that have a relatively straight periphery surface ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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(indicated by wide yellow arrows) alternate with nubs that have a curved periphery surface (indicated by wide green arrows). 12. As can be seen in the photograph below, the outsole periphery of defendants Pro Player Phaze 2M shoe bears the same repeating cleat and nub pattern used by Skechers as its SKECHERS GO RUN outsole periphery trade dress, i.e. the cleats that have a relatively straight periphery surface (indicated by wide yellow arrows) alternate with nubs that have a curved periphery surface (indicated by wide green arrows).

Pro Player Phaze 2M Shoe Outsole Periphery by Shoe Confession, LLC, Perry Ellis International, Inc., and PEI Licensing, Inc. 13. By using Skechers SKECHERS GO RUN sole bottom trade dress and outsole

periphery trade dress on defendants shoes, defendants deceive consumers into buying defendants shoes in the mistaken belief that defendants shoes emanate from Skechers and are genuine Skechers shoes. ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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 20. 14.

PARTIES Plaintiff Skechers U.S.A., Inc. is a corporation duly organized and existing under the laws of the State of Delaware with a principal place of business located at 228 Manhattan Beach Blvd., Manhattan Beach, California 90266. 15. Plaintiff Skechers U.S.A., Inc. II is a corporation duly organized and existing under the laws of the State of Delaware with a principal place of business located at 228 Manhattan Beach Blvd., Manhattan Beach, California 90266. Skechers U.S.A., Inc. II is a wholly-owned subsidiary of Skechers U.S.A., Inc. 16. 17. 18. Defendant Shoe Confession, LLC is a New York corporation having an office and place Defendant Perry Ellis International, Inc. is a Florida corporation having an office and Defendant PEI Licensing, Inc. is a Delaware corporation having an office and place of of business at 1 W 34th Street #703, New York, NY 10001. place of business at 3000 N.W. 107th Avenue, Miami, Florida 33172. business at 3000 N.W. 107th Avenue, Miami, Florida 33172. PEI Licensing, Inc. is a wholly-owned subsidiary of Perry Ellis International, Inc. 19. Defendants Does 1 10, inclusive, are sued herein under fictitious names. Their true names and capacities are unknown to Skechers. When their true names and capacities are ascertained, Skechers will amend this complaint by inserting their true names and capacities. Skechers is informed and believes and thereon alleges, that Does 1 10, and each of them are responsible in some manner for the occurrences alleged herein and that Skechers damages were proximately caused by such defendants. JURISDICTION AND VENUE Jurisdiction in this Court arises under the patent laws of the United States, 35 U.S.C. 271 and 289 and the provisions of 15 U.S.C. 1121 and 1125. This complaint also alleges violations of state law and common law. This Court has jurisdiction over these claims pursuant to 28 U.S.C. 1338(a) and (b), 1367(a), and 1400(b). 21. This Court has personal jurisdiction over defendants because they have committed one or more of the infringing acts complained of herein in California and in this district, they have multiple
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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sales outlets in California and in this district, and they do regular business in California and in this district. 22. Venue in this Court is proper under the provisions of 28 U.S.C. 1391(b) and (c) because a substantial part of the claims arose in this district. SKECHERS SKECHERS GO RUN SOLE BOTTOM AND OUTSOLE PERIPHERY DESIGN PATENTS 23. The United States Patent and Trademark Office has acknowledged the novel, nonobvious, and ornamental appearance of the sole bottom and outsole periphery of the SKECHERS GO RUN shoe by issuing U.S. Patent, No. D651,788 S (Exhibit 2, the '788 patent) therefor to Skechers. Defendants infringement of the '788 patent can be seen in the comparison below which shows a sample figure of the sole bottom from the '788 patent next to defendants Pro Player Phaze 2M shoe sole bottom.
SKECHERS U.S. DESIGN PATENT D651,788 S SHOE BOTTOM

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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Defendants infringement of the '788 patent can also be seen in the comparison below which shows a sample figure of the outsole periphery from the '788 patent next to defendants Pro Player Phaze 2M shoe outsole periphery.
SKECHERS U.S. DESIGN PATENT D651,788 S SHOE BOTTOM

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

/// /// /// /// /// /// /// /// ///

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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24.

The United States Patent and Trademark Office has acknowledged the novel, non-

obvious, and ornamental appearance of the sole bottom and outsole periphery of the SKECHERS GO RUN shoe by issuing U.S. Patent, No. D652,613 S (Exhibit 3, the '613 patent) therefor to Skechers. Defendants infringement of the '613 patent can be seen in the comparison below which shows a sample figure of the sole bottom from the '613 patent next to defendants Pro Player Phaze 2M shoe sole bottom.
SKECHERS U.S. DESIGN PATENT D652,613 S SHOE BOTTOM

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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Defendants infringement of the '613 patent can also be seen in the comparison below which shows a sample figure of the outsole periphery from the '613 patent next to defendants Pro Player Phaze 2M shoe outsole periphery.
SKECHERS U.S. DESIGN PATENT D652,613 S SHOE BOTTOM

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

/// /// /// /// /// /// /// ///

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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25.

The United States Patent and Trademark Office has acknowledged the novel, non-

obvious, and ornamental appearance of the sole bottom and outsole periphery of the SKECHERS GO RUN shoe by issuing U.S. Patent, No. D652,614 S (Exhibit 4, the '614 patent) therefor to Skechers. Defendants infringement of the '614 patent can be seen in the comparison below which shows a sample figure of the sole bottom from the '614 patent next to defendants Pro Player Phaze 2M shoe sole bottom.
SKECHERS U.S. DESIGN PATENT D652,614 S SHOE BOTTOM

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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Defendants infringement of the '614 patent can also be seen in the comparison below which shows a sample figure of the outsole periphery from the '614 patent next to defendants Pro Player Phaze 2M shoe outsole periphery.

SKECHERS U.S. DESIGN PATENT D652,614 S SHOE BOTTOM

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

/// /// /// /// /// /// ///

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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26.

The United States Patent and Trademark Office has acknowledged the novel, non-

obvious, and ornamental appearance of the outsole periphery of the SKECHERS GO RUN shoe by issuing U.S. Patent, No. D650,980 (Exhibit 5, the '980 patent) therefor to Skechers. Defendants infringement of the '980 patent can be seen in the comparison below which shows a sample figure of the sole bottom from the '980 patent next to defendants Pro Player Phaze 2M shoe sole bottom.
SKECHERS U.S. DESIGN PATENT D650,980 S SHOE OUTSOLE AND PERIPHERY

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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Defendants infringement of the '980 patent can also be seen in the comparison below which shows a sample figure of the outsole periphery from the '980 patent next to defendants Pro Player Phaze 2M shoe outsole periphery.
SKECHERS U.S. DESIGN PATENT D650,980 S SHOE OUTSOLE AND PERIPHERY

PRO PLAYER PHAZE 2M (SHOE CONFESSION, LLC, PERRY ELLIS INTERNATIONAL, INC., AND PEI LICENSING, INC.)

/// /// /// /// /// /// /// ///

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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SKECHERS SKECHERS GO RUN SOLE BOTTOM AND OUTSOLE PERIPHERY TRADE DRESS 27. The trade dress embodied in the sole bottom of the SKECHERS GO RUN shoe is shown in comparison to the Pro Player Phaze 2M shoe below.

SKECHERS GO RUN Sole Bottom

Pro Player Phaze 2M Shoe Sole Bottom by Shoe Confession, LLC., Perry Ellis International, Inc., and PEI Licensing Inc. Sole Bottom
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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28.

The trade dress embodied in the outsole periphery of the SKECHERS GO RUN shoe is

shown in comparison to the Pro Player Phaze 2M shoe below.

SKECHERS GO RUN Outsole Periphery

Pro Player Phaze 2M Shoe Outsole Periphery by Shoe Confession, LLC., Perry Ellis International, Inc., and PEI Licensing Inc. Outsole Periphery

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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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.

FIRST CAUSE OF ACTION (Design Patent Infringement, Patent No. US D651,788 S) Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 30. On January 10, 2012, the United States Patent and Trademark Office issued United States Patent, Patent No. US D651,788 S, the '788 patent. At all times since the date of issue of the '788 patent, Skechers has been, and currently is, the exclusive owner of the entire right, title and interest in and to the '788 patent. Skechers' ownership of the '788 patent includes without limitation the exclusive right to enforce the '788 patent, the exclusive right to file actions based on infringement of the '788 patent, and the exclusive right to recover damages or other monetary amounts for infringement of the '788 patent and to be awarded injunctive relief pertaining to the '788 patent. Skechers has owned the '788 patent at all times during defendants' infringement of the '788 patent. 31. Defendants have been, and presently are, infringing the '788 patent within this judicial district and elsewhere by making and selling shoes that embody the patented invention disclosed in the '788 patent. Defendants infringement of the '788 patent is willful. Defendants' infringing shoes are referred to as Pro Player Phaze 2M. Defendants' Pro Player Phaze 2M shoe is shown above and in Exhibit 6. Defendants will continue to manufacture and sell their Pro Player Phaze 2M shoes unless enjoined by this Court. 32. The sole bottom and outsole periphery of defendants' Pro Player Phaze 2M shoe so closely resembles the invention disclosed in the '788 patent that an ordinary observer would be deceived into purchasing the Pro Player Phaze 2M shoe in the mistaken belief that it includes the invention disclosed in the '788 patent. Defendants' Pro Player Phaze 2M shoe infringes the '788 patent in violation of 35 U.S.C. 271 and 289. 33. Due to Defendants' infringement of the '788 patent, Skechers has suffered, is suffering, and will continue to suffer irreparable injury for which Skechers has no adequate remedy at law. Skechers is therefore entitled to a permanent injunction against defendants' further infringing conduct. ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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34.

Defendants have profited and are profiting from their infringement of the '788 patent and

Skechers has been and is being damaged and losing profit by such infringement. Skechers is therefore entitled to recover damages from defendants and the total profit derived from such infringement, all in an amount to be proven at trial. SECOND CAUSE OF ACTION (Design Patent Infringement, Patent No. US D652,613 S) 35. Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 36. On January 24, 2012, the United States Patent and Trademark Office issued United States Patent, Patent No. US D652,613 S, the '613 patent. At all times since the date of issue of the '613 patent, Skechers has been, and currently is, the exclusive owner of the entire right, title and interest in and to the '613 patent. Skechers' ownership of the '613 patent includes without limitation the exclusive right to enforce the '613 patent, the exclusive right to file actions based on infringement of the '613 patent, and the exclusive right to recover damages or other monetary amounts for infringement of the '613 patent and to be awarded injunctive relief pertaining to the '613 patent. Skechers has owned the '613 patent at all times during defendants' infringement of the '613 patent. 37. Defendants have been, and presently are, infringing the '613 patent within this judicial district and elsewhere by making and selling shoes that embody the patented invention disclosed in the '613 patent. Defendants infringement of the '613 patent is willful. Defendants' infringing shoes are referred to as Pro Player Phaze 2M. Defendants' Pro Player Phaze 2M shoe is shown above and in Exhibit 6. Defendants will continue to manufacture and sell their Pro Player Phaze 2M shoes unless enjoined by this Court. 38. The sole bottom and outsole periphery of defendants' Pro Player Phaze 2M shoe so closely resembles the invention disclosed in the '613 patent that an ordinary observer would be deceived into purchasing the Pro Player Phaze 2M shoe in the mistaken belief that it includes the invention ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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disclosed in the '613 patent. Defendants' Pro Player Phaze 2M shoe infringes the '613 patent in violation of 35 U.S.C. 271 and 289. 39. Due to defendants' infringement of the '613 patent, Skechers has suffered, is suffering, and will continue to suffer irreparable injury for which Skechers has no adequate remedy at law. Skechers is therefore entitled to a permanent injunction against defendants' further infringing conduct. 40. Defendants have profited and are profiting from their infringement of the '613 patent and Skechers has been and is being damaged and losing profit by such infringement. Skechers is therefore entitled to recover damages from defendants and the total profit derived from such infringement, all in an amount to be proven at trial. THIRD CAUSE OF ACTION (Design Patent Infringement, Patent No. US D652,614 S) 41. Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 42. On January 24, 2012, the United States Patent and Trademark Office issued United States Patent, Patent No. US D652,614 S, the '614 patent. At all times since the date of issue of the '614 patent, Skechers has been, and currently is, the exclusive owner of the entire right, title and interest in and to the '614 patent. Skechers' ownership of the '614 patent includes without limitation the exclusive right to enforce the '614 patent, the exclusive right to file actions based on infringement of the '614 patent, and the exclusive right to recover damages or other monetary amounts for infringement of the '614 patent and to be awarded injunctive relief pertaining to the '614 patent. Skechers has owned the '614 patent at all times during defendants' infringement of the '614 patent. 43. Defendants have been, and presently are, infringing the '614 patent within this judicial district and elsewhere by making and selling shoes that embody the patented invention disclosed in the '614 patent. Defendants infringement of the '614 patent is willful. Defendants' infringing shoes are referred to as Pro Player Phaze 2M. Defendants' Pro Player Phaxer 2M shoe is shown above and in ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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Exhibit 6. Defendants will continue to manufacture and sell their Pro Player Phaze 2M shoes unless enjoined by this Court. 44. The sole bottom and outsole periphery of defendants' Pro Player Phaze 2M shoe so closely resembles the invention disclosed in the '614 patent that an ordinary observer would be deceived into purchasing the Pro Player Phaze 2M shoe in the mistaken belief that it includes the invention disclosed in the '614 patent. Defendants' Pro Player Phaze 2M shoe infringes the '614 patent in violation of 35 U.S.C. 271 and 289. 45. Due to defendants' infringement of the '614 patent, Skechers has suffered, is suffering, and will continue to suffer irreparable injury for which Skechers has no adequate remedy at law. Skechers is therefore entitled to a permanent injunction against defendants' further infringing conduct. Defendants have profited and are profiting from their infringement of the '614 patent and Skechers has been and is being damaged and losing profit by such infringement. Skechers is therefore entitled to recover damages from defendants and the total profit derived from such infringement, all in an amount to be proven at trial. FOURTH CAUSE OF ACTION (Design Patent Infringement, Patent No. US D650,980 S) 46. Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 47. On December 27, 2011, the United States Patent and Trademark Office issued United States Patent, Patent No. US D650,980 S, the '980 patent. At all times since the date of issue of the '980 patent, Skechers has been, and currently is, the exclusive owner of the entire right, title and interest in and to the '980 patent. Skechers' ownership of the '980 patent includes without limitation the exclusive right to enforce the '980 patent, the exclusive right to file actions based on infringement of the '980 patent, and the exclusive right to recover damages or other monetary amounts for infringement of the '980 patent and to be awarded injunctive relief pertaining to the '980 patent. Skechers has owned the '980 patent at all times during defendants' infringement of the '980 patent.
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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48.

Defendants have been, and presently are, infringing the '980 patent within this judicial

district and elsewhere by making and selling shoes that embody the patented invention disclosed in the '980 patent. Defendants infringement of the '980 patent is willful. Defendants' infringing shoes are referred to as Pro Player Phaze 2M. Defendants' Pro Player Phaxer 2M shoe is shown above and in Exhibit 6. Defendants will continue to manufacture and sell their Pro Player Phaze 2M shoes unless enjoined by this Court. 49. The sole bottom and outsole periphery of defendants' Pro Player Phaze 2M shoe so closely resembles the invention disclosed in the '980 patent that an ordinary observer would be deceived into purchasing the Pro Player Phaze 2M shoe in the mistaken belief that it includes the invention disclosed in the '980 patent. Defendants' Pro Player Phaze 2M shoe infringes the '980 patent in violation of 35 U.S.C. 271 and 289. 50. Due to defendants' infringement of the '980 patent, Skechers has suffered, is suffering, and will continue to suffer irreparable injury for which Skechers has no adequate remedy at law. Skechers is therefore entitled to a permanent injunction against defendants' further infringing conduct. Defendants have profited and are profiting from their infringement of the '980 patent and Skechers has been and is being damaged and losing profit by such infringement. Skechers is therefore entitled to recover damages from defendants and the total profit derived from such infringement, all in an amount to be proven at trial. FIFTH CAUSE OF ACTION (SKECHERS GO RUN Sole Bottom Trade Dress - Federal Unfair Competition and Trade Dress Infringement; 15 U.S.C. 1125(a)) 51. Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 52. Skechers has acquired exclusive and protectable trade dress rights embodied in its SKECHERS GO RUN sole bottom trade dress. By the acts and omissions set forth above, defendants are violating Lanham Act 43(a), 15 U.S.C. 1125(a) and are unfairly competing with Skechers.
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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Defendants' use in commerce of the SKECHERS GO RUN sole bottom on their Pro Player Phaze 2M shoe constitutes a false designation of origin and a false and misleading representation of fact which is likely to cause confusion, and to cause mistake, and to deceive by wrongly suggesting that defendants Pro Player Phaze 2M shoe has some affiliation, connection, or association with Skechers. Such use by defendants of their Pro Player Phaze 2M shoe is also likely to cause confusion, and to cause mistake, and to deceive as to the origin, sponsorship, or approval of defendants' Pro Player Phaze 2M shoe. Such use by defendants of their Pro Player Phaze 2M shoe constitutes trade dress infringement in violation of Lanham Act 43(a), 15 U.S.C. 1125(a). 53. Defendants have infringed, and continue to infringe, Skechers' SKECHERS GO RUN sole bottom trade dress. Defendants' Pro Player Phaze 2M shoe infringes Skechers' SKECHERS GO RUN sole bottom trade dress. 54. Defendants' conduct is likely to cause confusion, mistake and deception among the general purchasing public, and interfere with Skechers' ability to sell and profit from its SKECHERS GO RUN sole bottom trade dress. 55. Defendants' conduct as described above is also likely to harm or extinguish the current ability of Skechers' SKECHERS GO RUN sole bottom trade dress to indicate that that trade dress emanates from a single source. Defendants' conduct as described above harms the goodwill and reputation associated with Skechers SKECHERS GO RUN sole bottom trade dress. 56. Skechers has suffered, is suffering, and will continue to suffer irreparable injury for which Skechers has no adequate remedy at law. Skechers is therefore entitled to a permanent injunction against defendants' further infringing conduct. 57. Defendants have profited and are profiting from such trade dress infringement and unfair competition, and Skechers has been and is being damaged and losing profit by such infringement and unfair competition. Skechers is therefore entitled to recover damages and profits from defendants in an amount to be proved at trial as a consequence of defendants' violations of Lanham Act 43(a), 15 U.S.C. 1125(a). /// ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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 58.

SIXTH CAUSE OF ACTION (SKECHERS GO RUN Outsole Periphery Trade Dress - Federal Unfair Competition and Trade Dress Infringement; 15 U.S.C. 1125(a)) Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 59. Skechers has acquired exclusive and protectable trade dress rights embodied in its SKECHERS GO RUN outsole periphery trade dress. By the acts and omissions set forth above, defendants are violating Lanham Act 43(a), 15 U.S.C. 1125(a) and are unfairly competing with Skechers. Defendants' use in commerce of the SKECHERS GO RUN outsole periphery on their Pro Player Phaze 2M shoe constitutes a false designation of origin and a false and misleading representation of fact which is likely to cause confusion, and to cause mistake, and to deceive by wrongly suggesting that defendants Pro Player Phaze 2M shoe has some affiliation, connection, or association with Skechers. Such use by defendants of their Pro Player Phaze 2M shoe is also likely to cause confusion, and to cause mistake, and to deceive as to the origin, sponsorship, or approval of defendants' Pro Player Phaze 2M shoe. Such use by defendants of their Pro Player Phaze 2M shoe constitutes trade dress infringement in violation of Lanham Act 43(a), 15 U.S.C. 1125(a). 60. Defendants have infringed, and continue to infringe, Skechers' SKECHERS GO RUN outsole periphery trade dress. Defendants' Pro Player Phaze 2M shoe infringes Skechers' SKECHERS GO RUN outsole periphery trade dress. 61. Defendants' conduct is likely to cause confusion, mistake and deception among the general purchasing public, and interfere with Skechers' ability to sell and profit from its SKECHERS GO RUN outsole periphery trade dress. 62. Defendants' conduct as described above is also likely to harm or extinguish the current ability of Skechers' SKECHERS GO RUN outsole periphery trade dress to indicate that that trade dress emanates from a single source. Defendants' conduct as described above harms the goodwill and reputation associated with Skechers SKECHERS GO RUN outsole periphery trade dress. ///
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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63.

Skechers has suffered, is suffering, and will continue to suffer irreparable injury for

which Skechers has no adequate remedy at law. Skechers is therefore entitled to a permanent injunction against defendants' further infringing conduct. 64. Defendants have profited and are profiting from such trade dress infringement and unfair competition, and Skechers has been and is being damaged and losing profit by such infringement and unfair competition. Skechers is therefore entitled to recover damages and profits from defendants in an amount to be proved at trial as a consequence of defendants' violations of Lanham Act 43(a), 15 U.S.C. 1125(a). SEVENTH CAUSE OF ACTION (Common Law Unfair Competition) 65. Skechers realleges and incorporates by reference the full text of all of the foregoing numbered paragraphs, photographs and figures as though each such paragraph, photograph and figure has been fully set forth hereat. 66. by Skechers. 67. Defendants use in commerce of the Pro Player Phaze 2M shoe continues to confuse and deceive consumers as to the source of origin of the goods and services for which Skechers has invested substantial time, effort and money in developing and further damages Skechers' goodwill and reputation. 68. Skechers. 69. 70. Skechers.
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

Defendants are willfully, fraudulently, oppressively, maliciously and unlawfully

attempting to pass off, and are passing off, their infringing footwear as those approved and/or authorized

Defendants have been palming off their goods as Skechers' goods. Consumers have been

and continue to be confused as to whether defendants Pro Player Phaze 2M shoe is affiliated with The damage suffered by Skechers is irreparable and will continue unless defendants are Defendants' willful, deliberate and malicious conduct constitutes unfair competition with

restrained by this Court from the commission of these acts.

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71.

Such conduct by defendants is the sole reason for defendants' ability to market and sell

their unauthorized copies of shoes that embody Skechers' SKECHERS GO RUN sole bottom trade dress and outsole periphery trade dress. 72. 73. Defendants are being unjustly enriched through such flagrantly unlawful conduct and Skechers has no adequate remedy at law in that the continuing nature of the unfair should be punished therefor. competition will result in irreparable harm to Skechers should defendants not be enjoined from their acts of unfair competition. 74. A complete recitation of the damages suffered by Skechers as a result of this unfair competition must await discovery of defendants' books and records. REQUEST FOR RELIEF WHEREFORE, Plaintiffs Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II respectfully demand a judgment against defendants as follows: 1. A judgment declaring that defendants have: a. Infringed Skechers '788, '613, '614 and '980 patents; b. Infringed Skechers SKECHERS GO RUN sole bottom trade dress; c. Infringed Skechers SKECHERS GO RUN outsole periphery trade dress; d. Competed unfairly with Skechers; e. Injured Skechers business reputation by the unauthorized use of Skechers SKECHERS GO RUN sole bottom trade dress; f. Injured Skechers business reputation by the unauthorized use of Skechers SKECHERS GO RUN outsole periphery trade dress; g. Willfully violated the applicable laws of the United States and of the states where defendants goods have been sold, all to the detriment of Skechers; 2. That the defendants, their officers, agents, servants, employees, attorneys, assigns and all persons in active concert with or participation with them be forthwith preliminarily and thereafter permanently enjoined and restrained from:
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL

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a. Infringing or inducing infringement of the Skechers '788, '613, '614 and '980 patents; b. Infringing or inducing infringement of Skechers' SKECHERS GO RUN sole bottom trade dress or Skechers SKECHERS GO RUN outsole periphery trade dress; c. Using Skechers SKECHERS GO RUN sole bottom trade dress or Skechers SKECHERS GO RUN outsole periphery trade dress, alone or in combination with any other elements, to advertise or identify defendants' goods or services; d. Unfairly competing with Skechers in any manner whatsoever; e. Causing likelihood of confusion, or injury to Skechers business and to the reputation of Skechers marks, symbols, labels, or forms of advertising or promotion; f. Engaging in any acts or activities directly or indirectly calculated to trade upon Skechers SKECHERS GO RUN sole bottom trade dress or Skechers SKECHERS GO RUN outsole periphery trade dress or the reputation or goodwill of Skechers, or in any way to compete unfairly with Skechers; 3. For a judgment directing that any shoes, goods, labels, emblems or packaging in the possession or under the control of defendants which infringe the '788, '613, '614 and '980 patents or any colorable imitation or facsimile thereof, but not emanating from Skechers, be delivered up and destroyed within 10 days of entry of judgment, and that all instrumentalities used in the production of such shoes, goods, labels, emblems or packaging, including any and all items, objects, tools, machines, and equipment used in such production, be delivered up and destroyed within 10 days of entry of judgment; 4. For a judgment directing defendants to recall all infringing goods and any other materials sold, distributed, advertised or marketed which infringe any and all of the '788, '613, '614 and '980 patents or any colorable imitation or facsimile thereof, but not emanating from Skechers; 5. For a judgment against defendants awarding Skechers damages, lost profits, reasonable royalties, and other monetary amounts including without limitation: a. All damages sustained by Skechers as a result of defendants' unlawful infringement of the any and all of the '788, '613, '614 and '980 patents, together with appropriate interest on such damages and that such damages be trebled, pursuant to 35 U.S.C. 284;
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COMPLAINT FOR DAMAGES AND INJUNCTIVE RELIEF FOR: (1) PATENT INFRINGEMENT, (2) FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT, AND (3) COMMON LAW UNFAIR COMPETITION; DEMAND FOR JURY TRIAL