Controlled Entry v. Master Remotes - Complaint

Case: 1:20-cv-07643 Document #: 1 Filed: 12/22/20 Page 1 of 19 PageID #:1
Susan H. Booker
shbooker@lgclaw.com
LEVUN, GOODMAN & COHEN, LLP
500 Skokie Boulevard, Suite 650
Northbrook, Illinois 60062
Telephone: (847) 509-7700
Facsimile: (847) 849-5695
Brett L. Foster (pro hac vice application to be submitted)

foster.brett@dorsey.com
Tamara L. Kapaloski (pro hac vice application to be submitted)
kapaloski.tammy@dorsey.com
DORSEY & WHITNEY LLP
111 S. Main St., Suite 2100
Salt Lake City, Utah 84111
Telephone: (801) 933-7360
Facsimile: (801) 933-7373
Attorneys for Plaintiffs Controlled

Entry Distributors, Inc. and
Transmitter Solutions, LLC
THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF ILLINOIS, EASTERN DIVISION
CONTROLLED ENTRY DISTRIBUTORS,

INC., a Utah Corporation, and TRANSMITTER CIVIL ACTION NO.:
SOLUTIONS, LLC, a Nevada Limited Liability District Judge:
Company,
COMPLAINT
Plaintiffs,
Jury Trial Demanded
vs.
MASTER REMOTES, INC., an Illinois

Corporation,
Defendant.
Plaintiffs Controlled Entry Distributors, Inc. and Transmitter Solutions, LLC (collectively
“Plaintiffs”), for their complaint against Defendant Master Remotes, Inc. (“Defendant” or “Master
Remotes”), allege as follows:
COMPLAINT
NATURE OF THE ACTION
1. This is an action by Plaintiffs to stop Master Remotes’ willful sale of unlicensed,
infringing products bearing Plaintiffs’ trademarks and patented design. Master Remotes is selling
transmitters through internet websites including, eBay, the advertising and sale of which infringes
Controlled Entry Distributors, Inc.’s design patent and registered trademarks and infringes
Plaintiffs’ common law trade dress and copyrights.
PARTIES
2. Plaintiff Controlled Entry Distributors, Inc., doing business as Community Controls
(“Community Controls”), is a corporation organized and existing under the laws of the State of
Utah. Community Controls has a principle place of business at 2480 S. 3850 W. Suite A, Salt Lake
City, Utah, 84120. Community Controls designs, promotes, and sells automated gate and garage
accessories, including among other things, gate and garage remote controls, to end users
throughout the United States. Community Controls promotes its remotes online at its website at
www.communitycontrols.com.
3. Plaintiff Transmitter Solutions, LLC (“Transmitter Solutions”) is a limited liability
company organized and existing under the laws of the State of Nevada. Transmitter Solutions has
a principle place of business at 2480 S. 3850 W., Suite B, Salt Lake City, Utah, 84120. Transmitter
Solutions designs, promotes, and sells radio transmitters and receivers, including transmitters
commonly known as garage door openers, to a network of resellers and distributors throughout the
United States. Transmitter Solutions promotes its transmitters online at its website at
www.transmittersolutions.com.
4. Defendant Master Remotes is an Illinois Corporation. Upon information and belief,
Master Remotes has a principle place of business at 330 W. Colfax St., Suite 104, Palatine, IL,
60067. Master Remotes promotes and sells radio transmitters and receivers, including transmitters
2
COMPLAINT
commonly known as garage door openers or garage remote controls, to consumers throughout the
United States. Upon information and belief, Master Remotes maintains, promotes, and sells its
transmitters online, including through its eBay store at Danielstore1847, located online at
https://www.ebay.com/str/danielstore1847.
JURISDICTION AND VENUE
5. The design patent infringement claim asserted herein arises under the patent statute,
Title 35 of the United States Code. The trademark and trade dress infringement claims asserted
herein arise under the Trademark (Lanham) Act, 15 U.S.C. § 1051 et seq., specifically, 15 U.S.C.
§ 1114 and 15 U.S.C. § 1125(a). Plaintiffs also assert herein a claim under the Copyright Act, Title
17 of the United States Code. This Court has original subject matter jurisdiction over the claims in
this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).
6. This Court has personal jurisdiction over Master Remotes because Master Remotes
is incorporated and has a principal place of business in this Judicial District.
7. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391. A substantial part of
the events giving rise to Plaintiffs’ claims occurred in this judicial district, and Defendant resides
in this judicial district.
FACTUAL BACKGROUND
Plaintiffs’ Intellectual Property Rights in the Stinger® Transmitter
8. Plaintiffs, under common ownership, are among the largest suppliers of garage and
gate accessories and radio transmitters and receivers in the United States. Plaintiffs have decades
of experience developing, designing, and selling wireless receivers, remote transmitters,
automated gates, door solutions, and access control systems.
9. Plaintiff Community Controls designs and markets transmitters and other products
under the Transmitter Solutions® mark which is registered on the Principal Register as U.S.
3
COMPLAINT
Registration No. 3,337,930. A true and correct copy of the Transmitter Solutions® trademark
registration is attached hereto as Exhibit A. U.S. Registration No. 3,337,930 has become
incontestable pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065. Community Controls
owns all of the trademark rights and design patent rights asserted in this case. Community Controls
uses those rights in its business activities and licenses those rights to Transmitter Solutions, who
also uses these intellectual property rights. Thus, in this Complaint, the Plaintiffs are sometimes
referred to collectively as “Plaintiffs”.
10. Transmitter Solutions® is registered as a service mark on the Principal Register as
U.S. Registration No. 3,337,929. U.S. Registration No. 3,337,929 has become incontestable
pursuant to Section 15 of the Lanham Act, 15 U.S.C. § 1065. A true and correct copy of the
Transmitter Solutions® service mark registration is attached hereto as Exhibit B.
11. Continuously since 2005, Plaintiffs have marketed and sold a transmitter under the
Stinger® trademark. The Stinger® trademark is registered on the Principal Register as U.S.
Registration No. 3,473,750. U.S. Registration No. 3,473,750 has become incontestable pursuant
to Section 15 of the Lanham Act, 15 U.S.C. § 1065. A true and correct copy of the Stinger®
trademark registration is attached hereto as Exhibit C.
12. Plaintiffs have used and promoted the Transmitter Solutions® and Stinger®
trademarks continuously since October of 2005. The registrations for the Transmitter Solutions®
mark and the Stinger® mark (Exhibits A-C), are valid, have become incontestable, and have not
been licensed to Master Remotes for use in any manner whatsoever.
13. Plaintiffs have become well known throughout the United States as a source of high
quality transmitter products, including the Stinger® brand of transmitters. Plaintiffs are dedicated
to designing and providing high quality products and providing customer service of the highest
4
COMPLAINT
order. As a result, Plaintiffs’ products, including its Stinger® transmitter, are well known in their
markets.
14. Based on the quality of its goods and the quality of the services provided to its
customers, Community Controls has earned substantial goodwill in its Transmitter Solutions®
mark and Stinger® mark and is held in high regard in its market. The excellent reputation of these
marks is a direct result of Community Controls’ dedication to designing high quality transmitters,
its careful selection of and quality control over products, its excellent customer service, and the
efforts of its employees and resellers.
15. Throughout their existence, Plaintiffs have continuously and actively promoted
themselves, their products, and their services through various channels in the trade including
through their websites at www.transmittersolutions.com and www.communitycontrols.com, and
by promotion through distributors, resellers, and through Plaintiffs’ direct sales force. Plaintiffs
also enjoy substantial word-of-mouth marketing from their many satisfied customers. As a result
of their advertising and efforts, over the past decade, Plaintiffs have established very substantial
goodwill and a correspondingly substantial network of customers and national resellers.
16. In 2012, Plaintiffs designed and brought to market a very small (13/4” by 3” by ½”)
visor style wireless transmitter. The transmitter is sold throughout the United States and Canada
under the Stinger® trademark. The Stinger® transmitter achieves its small size by using state-of-
the-art surface mount components. A Stinger® transmitter was designed for use with and is
compatible with most dip switch receivers operating between 300 MHz and 433 MHz frequencies.
17. On December 10, 2013, United States Patent No. D695,315 (the “’315 Patent”),
entitled “Transmitter Apparatus,” was duly and legally issued by the United States Patent and
Trademark Office, and is valid, in full force and effect, and solely owned by Plaintiff Community
5
COMPLAINT
Controls. A copy of the ‘315 Patent is attached hereto as Exhibit D. The ‘315 patent covers the
Stinger® products.
18. The Stinger® transmitter enjoys trade dress rights. The Stinger transmitter is
characterized by a unique, non-functional overall look and feel including a slim profile, a
rectangular shape where the sides along the length of the rectangle are curved slightly outward, a
single button with an oval or elongated-diamond shape located in the top half of the front of the
transmitter, and, below the button, is a downward pointing arrow shape that protrudes slightly from
the face of the transmitter (the “Stinger Trade Dress”). The look and feel of the Stinger Trade Dress
is unique and serves to immediately identify the transmitter as coming from Plaintiffs.
19. The features that constitute the Stinger Trade Dress are non-functional, in that they
serve a decorative and aesthetic purpose and are not required to exist in this design in order for the
product to be used for its intended purpose. This non-functionality is further demonstrated by the
existence in the marketplace of numerous transmitters with completely different designs than the
Stinger Trade Dress. The Stinger Trade Dress distinguishes the Stinger® transmitter from its
competition.
20. Long before the acts of Master Remotes described in this Complaint, Plaintiffs,
along with their network of resellers and direct sales force, had extensively advertised and
promoted the Stinger Trade Dress. As a result of the care and skill in cultivating the unique
appearance of the Stinger® transmitter, as well as the extensive advertising, promotion, and sales
of the Stinger® transmitter, Plaintiffs’ Stinger Trade Dress has acquired a valuable reputation and
significant good will. Transmitter purchasers and users have come to recognize the well-known
appearance of the Stinger Trade Dress and associate it with Plaintiffs as the source of the
transmitters.
6
COMPLAINT
21. Since its introduction in 2012, Plaintiffs have sold hundreds of thousands of
Stinger® transmitters with the Stinger Trade Dress.
22. In May 2012, Plaintiff Community Controls authored and published owner’s
manuals for its Stinger® transmitters operating between 300 MHz and 433 MHz. Community
Controls publishes the owner’s manuals on its website. Community Controls also ships its Stinger®
remotes with a copy of the owner’s manual. A true and correct copy of Community Controls’
owner’s manual for the Stinger® transmitter 390 1 Button is attached hereto as Exhibit E.
23. In October 2015, Plaintiff Transmitter Solutions published owner’s manuals for the
Transmitter Solutions brand of Stinger® transmitters operating between 300 MHz and 433 MHz.
Transmitter Solutions publishes the owner’s manuals on its website. Transmitter Solutions also
ships its Stinger® transmitters with a copy of the respective owner’s manual. A true and correct
copy of Transmitter Solutions’ owner’s manual for the Stinger transmitter 390 2 Button is attached
hereto as Exhibit F.
24. Plaintiffs are the owners of the respective Stinger owner’s manuals, which
constitute original works of authorship.
25. On November 4, 2020, Plaintiffs filed applications to obtain copyright registrations
from the U.S. Copyright Office for their respective Stinger owner’s manuals. True and correct
copies of the mail certificates for the applications are attached hereto as Exhibit H-I.
26. On December 9, 2020, a Copyright Registration issued for the 2012 Community
Controls Stinger® owner’s manual, Registration Number TX 8-917-185. A true and correct copy
of the mail certificate for the registration is attached hereto as Exhibit J.
Infringement of Plaintiffs’ Intellectual Property by Master Remotes, Inc.
27. Defendant Master Remotes, and/or its principals or representatives Larry Smith,
Pier Pedraza, and Eunice Sarai Garcia, are former or current customers of Plaintiffs. Upon
7
COMPLAINT
information and belief, between 2018 and 2019, Defendant Master Remotes purchased tens of
thousands of Stinger® transmitters from Plaintiffs to resell online. As a result, Master Remotes has
knowledge of and is familiar with the Stinger® transmitter product, Community Controls’ rights
in the ‘315 Patent, the Stinger Trade Dress, and the Stinger® owner’s manuals. In addition, because
the Stinger® transmitters were shipped to Master Remotes with the owner’s manuals, Master
Remotes had access to the owner’s manuals.
28. Upon information and belief, in an attempt to capitalize on Plaintiffs’ hard work,
intellectual property, and success, and without compensating Plaintiffs or obtaining a license,
Defendant Master Remotes recently began advertising, promoting, distributing, selling and/or
offering for sale, including through its eBay store at Danielstore1847, knock-off Stinger
transmitter products (the “Infringing Transmitter”). The Infringing Transmitter can be found for
sale online at the Danielstore1847 eBay store, at the following link:
https://www.ebay.com/itm/Sears-Craftsman-Garage-Door-Opener-Remote-Control-For-139-
53960SRT-139-53927SRT/141833402164?hash=item2105edf734:g:bfcAAOSwQFNef2-E
29. As shown below, a side-by-side comparison reveals that Master Remotes’
Infringing Transmitter is substantially identical in appearance to the Stinger® Transmitter:
//
//
//
//
//
//
//
//
8
COMPLAINT
Plaintiffs’ Stinger Transmitter Infringing Transmitter 1
30. Master Remotes’ Infringing Transmitter infringes the Stinger Trade Dress. The
Infringing Transmitter includes a slim profile, a rectangular shape where the sides along the
length of the rectangle are curved slightly outward, a single button with an oval or elongated-
diamond shape located in the top half of the front of the transmitter, and, below the button, is a
downward pointing arrow shape that protrudes slightly from the face of the transmitter. As such,
the Infringing Transmitter has all of the features of the Stinger Trade Dress, and is virtually
indistinguishable from the Stinger® transmitter.
31. Master Remotes is involved in the importation, offering for sale, and/or sale of
Infringing Transmitters that infringe the ‘315 Patent.
32. Photos of transmitters sold by Master Remotes are shown below in reference to
the ‘315 Patent:
1See https://www.ebay.com/itm/Sears-Craftsman-Garage-Door-Opener-Remote-Control-For-
139-53960SRT-139-53927SRT/141833402164?hash=item2105edf734:g:bfcAAOSwQFNef2-E
9
COMPLAINT
‘315 Patent Infringing Transmitter
33. The design of the Infringing Transmitter is substantially the same as the ‘315 Patent
such as to deceive an ordinary observer into inducing him or her to purchase Master Remotes’
Infringing Transmitter supposing them to be the Stinger® transmitter. Moreover, the substantial
similarity between the Stinger® transmitter and the Infringing Transmitter is likely to cause
consumer confusion.
34. Master Remotes’ conduct in using, selling, offering to sell and/or importing the
Infringing Transmitter directly infringes the ‘315 Patent. The foregoing conduct also infringes
Plaintiffs’ rights in the Stinger Trade Dress.
35. Master Remotes’ infringement of Plaintiffs’ Stinger Trade Dress is willful. Upon
information and belief, Master Remotes knew of Plaintiffs’ hard-earned goodwill in the Stinger®
transmitter but chose to adopt a confusingly similar appearance for its Infringing Transmitter to
10
COMPLAINT
capitalize on the popularity of the Stinger® transmitter. Accordingly, Master Remotes’
infringement of the Stinger Trade Dress is willful, and this action is an exceptional case.
36. Upon information and belief, in connection with Master Remotes’ importation,
purchase, distribution, offering for sale, and/or sale of the Infringing Transmitter, Master Remotes
is engaging in flagrant infringement of the Stinger® and Transmitter Solutions® trademarks,
including through sales over the internet using the Danielstore eBay store as shown by the
following screen shot:
Description of the Infringing Transmitter on Master Remotes’

eBay Store Displays the Transmitter Solutions® and Stinger® Marks
37. Master Remotes’ use of the Stinger® and Transmitter Solutions® trademarks is
likely to cause confusion, mistake, and deception among consumers or potential consumers and
infringes Community Controls’ trademarks.
38. Upon information and belief, Master Remotes ships the Infringing Transmitter with
an owners’ manual. Exhibit G is a true and correct copy of the owners’ manual for the Infringing
Transmitter 390B 1 Button. The owners’ manual for the Infringing Transmitter is substantially
identical to the Stinger® owners’ manuals. Compare Exh. G with Exhs. H and I.
11
COMPLAINT
39. Master Remotes had access to the Stinger® owner’s manuals prior to publishing its
manual for the Infringing Transmitter. Master Remotes has copied the Stinger® owner’s manuals
without authorization and the copying constitutes unlawful appropriation of Plaintiffs’ copyrights.
40. Given that Master Remotes, and/or its principals, are former customers of Plaintiffs
and have purchased thousands of Stinger® transmitters, on information and belief, Master Remotes
had knowledge of Plaintiffs’ intellectual property rights in the Stinger® transmitter, including the
trademarks, design patent, trade dress rights, and copyrights described herein.
41. Despite its knowledge of Plaintiffs’ intellectual property rights, Master Remotes
imported, promoted, and sold, and/or offered for sale Infringing Transmitters in direct competition
with Plaintiffs and with a reckless and blatant disregard of Plaintiffs’ rights.
COUNT 1 – DESIGN PATENT INFRINGEMENT
(Community Controls vs. Master Remotes)
42. Plaintiffs repeat and reaffirm all of the foregoing allegations contained in the
preceding paragraphs, with the same force and effect as if fully set forth herein.
43. Plaintiff Community Controls is the owner of the ‘315 Patent, and licenses the ‘315
patent to Plaintiff Transmitter Solutions, a commonly owned company. The ‘315 Patent claims an
“ornamental design for a transmitter apparatus.”
44. The Infringing Transmitter appropriates the ornamental design for a transmitter
apparatus as shown and described in the ‘351 Patent.
45. In the eye of the ordinary observer, giving such attention as a purchaser usually
gives, the ornamental design for a transmitter apparatus claimed in the ‘315 Patent and the
Infringing Transmitter are substantially the same; the resemblance is such as to deceive an ordinary
observer, inducing such observer to purchase one supposing it to be the other.
12
COMPLAINT
46. Master Remotes has infringed and continues to infringe the ornamental design for
a transmitter apparatus claimed in the ‘315 Patent within the meaning of 35 U.S.C. § 271(a)
through the foregoing described activities including, without limitation, importing, selling, and/or
offering to sell the Infringing Transmitter.
47. Upon information and belief, Defendant has been aware of the ‘315 Patent and its
infringement thereof, yet has continued its infringement without regard to the ‘315 Patent or
Community Controls’ rights. The infringement continues today despite an objectively high
likelihood that Defendant’s actions constitute infringement of the ‘315 Patent. This objectively
high likelihood of infringement was either known or so obvious that it should have been known to
Defendant. Defendant’s infringement of the ‘315 Patent has been willful, deliberate, and
objectively reckless.
48. Defendant’s continued actions of importing, using, selling, and/or offering for sale
the Infringing Transmitter has injured, is injuring, and will cause irreparable injury to Community
Controls if not preliminarily and permanently enjoined.
49. Community Controls is entitled to an injunction under 35 U.S.C. § 283 prohibiting
Defendant from further making, using, selling, offering to sell, or importing the Infringing
Transmitter and any other infringing transmitters without permission or license from Community
Controls.
50. Community Controls is entitled to recover all monetary damages caused by
Defendant’s infringing conduct under 35 U.S.C. § 284 and for profits under 35 U.S.C. § 289.
51. Given Defendant’s willful infringement, Community Controls is entitled to
enhanced damages and attorneys’ fees and costs along with prejudgment interest under 35 U.S.C.
§§ 284, 285.
13
COMPLAINT
COUNT 2 – TRADE DRESS INFRINGEMENT
(Plaintiffs vs. Master Remotes)
53. The Stinger Trade Dress is non-functional – it is not essential to the product’s
purpose and it is not dictated by concern for cost efficiency.
54. Plaintiffs have expended considerable time, effort, and resources to develop and
promote the Stinger Trade Dress.
55. The purchasing public has come to recognize the Stinger Trade Dress and associate
the trade dress with Plaintiffs as the source of Stinger® transmitters.
56. Master Remotes intentionally adopted and is using in commerce in connection with
the advertising, promotion, and sale of the Infringing Transmitter an overall product appearance
that is intended by Master Remotes to be substantially similar to, and a colorable imitation of,
Plaintiffs’ distinctive Stinger Trade Dress.
57. Master Remotes’ unlawful adoption and use, in commerce, of a substantial
imitation of the Stinger Trade Dress without the authorization of Plaintiffs is likely to cause
confusion, to cause mistake and/or to deceive consumers as to the affiliation, connection, or
association of the Infringing Transmitter or as to origin, sponsorship, or approval of the Infringing
Transmitter with the Stinger® transmitter.
58. Defendant’s actions constitute trade dress infringement in violation of the Lanham
Act, 15 U.S.C. § 1125(a). Plaintiffs have been and will continue to be injured as a result of
Defendant’s conduct. Plaintiffs have no adequate remedy at law for these injuries. Unless
Defendant is restrained by this court from continuing to infringe the Stinger Trade Dress, these
injuries will continue.
14
COMPLAINT
COUNT 3 – TRADEMARK INFRINGEMENT
(Community Controls vs. Master Remotes)
60. Plaintiff Community Controls possesses valid registrations issued by the United
States Patent and Trademark Office for “Transmitter Solutions”, Registration Nos. 3,337,930 and
3,337,929 (Exhibits A-B).
61. Plaintiff Community Controls possesses a valid registration issued by the United
States Patent and Trademark Office for the “Stinger” mark, Registration No. 3,473,750 (Exhibit
C).
62. Plaintiff Transmitter Solutions is a licensee of the Transmitter Solutions® and
Stinger® marks.
63. Plaintiffs recently discovered that Master Remotes is using the Transmitter
Solutions® and Stinger® marks in its advertising for the Infringing Transmitters.
64. Master Remotes’ use of the Transmitter Solutions® and Stinger® marks in its
advertisements is identical to and confusingly similar to Community Controls’ marks.
65. Master Remotes’ actions as described above, including its use of Community
Control’s marks to promote Master Remotes’ business interests, is likely to cause confusion, or to
cause mistake, or to deceive as to the affiliation, connection, or association of Master Remotes
with Community Controls, or as to the origin, sponsorship, or approval of Master Remotes’
services and products by Community Controls. Master Remotes’ conduct constitutes trademark
infringement in violation of § 32 of the Lanham Act (15 U.S.C. § 1114).
66. Master Remotes’ trademark infringement has caused and continues to cause
damage and irreparable injury to the value and goodwill of Community Controls’ registered marks,
15
COMPLAINT
as well as damages and irreparable injury to Community Controls’ business, goodwill, and
reputation. Community Controls has no adequate remedy at law because damages are continuing
and difficult to ascertain. On information and belief, Master Remotes’ continued use of
Community Controls’ marks is deliberate, willful, fraudulent, and constitutes a knowing
infringement of Community Controls’ marks, and makes this case exceptional.
67. By virtue of the foregoing, Community Controls is entitled to an award of treble
damages under § 35(a) of the Lanham act (15 U.S.C. § 1117(a)).
68. By virtue of the foregoing, Community Controls is entitled to an award of
attorneys’ fees under § 35(a) of the Lanham act (15 U.S.C. § 1117(a)).
69. By virtue of the foregoing, Community Controls is entitled to injunctive relief and
monetary damages against Master Remotes.
COUNT 4 – COPYRIGHT INFRINGEMENT CLAIM
(Plaintiffs vs. Master Remotes)
71. As alleged above, as the author and owner of the 2012 Community Controls
Stinger® owner’s manual, Community Controls has the exclusive right to reproduce, to prepare
derivative works based on, to distribute copies of, and to publicly display the Stinger® owner’s
manual.
72. On December 9, 2020, Copyright Registration No. 8-917-185 issued for the 2012
Community Controls Stinger® owner’s manual. See Exhibit J.
73. Upon information and belief, Master Remotes had access to the Stinger® owner’s
manual which is and/or was displayed on Community Controls’ website. In addition, Master
16
COMPLAINT
Remotes, or its representatives, received a physical copy of the Stinger® owner’s manual with the
Stinger® transmitters that Master Remotes purchased from Plaintiffs.
74. Defendant copied the Stinger® owner’s manual and currently displays and
publishes the copy-cat owner’s manual, including by enclosing a copy of the infringing manual to
purchasers of the Infringing Transmitters.
75. Defendant knowingly, deliberately, and willfully copied the Stinger® owner’s
manual.
76. Defendant knowingly, deliberately, and willingly publish their copy-cat owner’s
manual to sell the knock-off Infringing Transmitter in direct competition with Plaintiffs, thereby
causing Plaintiffs monetary and other damages.
77. On November 4, 2020, Transmitter Solutions filed a copyright application for the
Transmitter Solutions’ Stinger® owner’s manual with the United States Copyright Office. See
Exhibit I. Transmitter Solutions expects and believes that a copyright registration for this Stinger®
owner’s manual will issue within the next few weeks.
78. Upon issuance of the copyright registration from the United States Copyright Office
for the 2015 Transmitter Solutions’ owner’s manual, Plaintiffs will amend this Complaint to assert
a claim for copyright infringement based on Master Remotes’ publication of a copy-cat manual.
79. Plaintiffs are entitled to recover from Master Remotes the damages Plaintiffs
sustained prior to registration and will sustain after registration, and any gains, profits, and
advantages obtained by Master Remotes as a result of its acts alleged herein pursuant to 17 U.S.C.
§ 504.
80. Plaintiffs will also be entitled to an injunction prohibiting Master Remotes from
further infringement of the Stinger® owner’s manual pursuant to 17 U.S.C. § 502.
17
COMPLAINT
PRAYER FOR RELIEF
WHEREFORE, Plaintiffs pray for the following relief:
1. Granting a judgment that Defendant has infringed the ’315 Patent and an award of
damages adequate to compensate Community Controls for the design patent infringement that has
occurred, but in no event less than a reasonable royalty as permitted by 35 U.S.C. § 289, together
with prejudgment interest from the date the infringement began;
2. Enhanced damages as permitted under 35 U.S.C. § 284;
3. A finding that this case is exceptional and an award of reasonable attorneys’ fees
and costs as provided by 35 U.S.C. § 285;
4. An accounting of Master Remotes’ profits from their infringement of the ‘315
Patent;
5. Granting a judgment that Defendant has infringed Plaintiffs’ rights in the Stinger
Trade Dress and an award of damages adequate to compensate Plaintiffs for the trade dress
infringement, together with prejudgment interest from the date the infringement began;
6. Granting a judgment that Defendant has infringed Community Controls’ rights in
its Transmitter Solutions® and Stinger® trademarks and an award of damages adequate to
compensate Community Controls for the trademark infringement, together with prejudgment
interest from the date the infringement began;
7. A judgment that Defendant has infringed Community Controls’ rights in its
copyright to the 2012 Community Controls Stinger® owner’s manual and an award of damages
adequate to compensate Community Controls for the copyright infringement, together with
prejudgment interest from the date the infringement began;
8. Following issuance of the copyright registration for the 2015 Transmitter Solutions
Stinger® owner’s manual, a judgment that Defendant has infringed Transmitter Solutions’ rights
18
COMPLAINT
in its copyright to the 2015 Transmitter Solutions owner’s manual and an award of damages
adequate to compensate Transmitter Solutions for the copyright infringement, together with
prejudgment interest from the date the infringement began;
9. A preliminary and permanent injunction against Defendant prohibiting Defendant
from any further design patent infringement, trade dress infringement, trademark infringement,
and copyright infringement, including an injunction prohibiting any further importation, sale or
offers to sell the Infringing Transmitter and any other product that infringes the ‘315 Patent, the
Stinger Trade Dress or Community Controls’ trademarks;
10. Directing defendants to deliver up to Plaintiffs all of the copy-cat owner’s manuals;
11. That this Court award Plaintiffs all damages caused by Defendant’s infringing
actions;
12. That this Court find this case exceptional and award enhanced damages and all
attorneys’ fees and costs incurred by Plaintiffs in this action;
13. For any further relief that this Court deems equitable and just.
JURY DEMAND
Pursuant to Rule 38(b) of the Federal Rules of Civil Procedure, Plaintiffs hereby demand
a jury trial on all issues so triable.
Dated: December 21, 2020 Respectfully submitted,
By: /s/Susan H. Booker
Susan H. Booker
shbooker@lgclaw.com
LEVUN, GOODMAN & COHEN, LLP
500 Skokie Boulevard, Suite 650
Northbrook, Illinois 60062
Telephone: (847) 509-7700
Facsimile: (847) 849-5695
Attorneys for Plaintiffs
19
COMPLAINT
Case: 1:20-cv-07643 Document #: 1-1 Filed: 12/22/20 Page 1 of 3 PageID #:20
EXHIBIT H
Registration #: *-APPLICATION-*
Service Request #: 1-9720339231
Mail Certificate
Dorsey & Whitney LLP

Tiffany D.W. Shimada
111 South Main Street, Suite 2100
Salt Lake City, UT 84111-2176 United States
Priority: Special Handling Application Date: November 04, 2020

Note to C.O.: Controlled Entry Distributors, Inc. has filed a copyright application for the old works under Application No.
1-9721776981 on November 4, 2020.
Correspondent
Organization Name: Dorsey & Whitney LLP

Name: Tiffany D.W. Shimada
Email: shimada.tiffany@dorsey.com
Telephone: (801)933-7360
Fax: (801)933-7373
Address: 111 South Main Street, Suite 2100
Salt Lake City, UT 84111-2176 United States
Registration Number
*-APPLICATION-*
Title
Title of Work: 2012 Community Stinger Manual
Completion/Publication
Year of Completion: 2012
Date of 1st Publication: May 31, 2012
Nation of 1st Publication: United States
Author
• Author: Controlled Entry Distributors, Inc.

Author Created: text, artwork
Work made for hire: Yes
Domiciled in: United States
Copyright Claimant
Copyright Claimant: Controlled Entry Distributors, Inc.

2480 South 3850 West, Suite A, Salt Lake City, UT, 84120, United States
1
Limitation of copyright claim
Material excluded from this claim: text, artwork
New material included in claim: text, artwork

0
Certification
Name: Tiffany D.W. Shimada

Date: November 04, 2020
Applicant's Tracking Number: M289937
Date: November 04, 2020
Pending
Page 1 of 1

Controlled Entry v. Master Remotes - Complaint

Încărcat de

Informații document

Drepturi de autor

Formate disponibile

Partajați acest document

Partajați sau inserați document

Opțiuni de partajare

Vi se pare util acest document?

Este necorespunzător acest conținut?

Drepturi de autor:

Formate disponibile

Controlled Entry v. Master Remotes - Complaint

Încărcat de

Drepturi de autor:

Formate disponibile

Case: 1:20-cv-07643 Document #: 1 Filed: 12/22/20 Page 1 of 19 PageID #:1

Brett L. Foster (pro hac vice application to be submitted)

Attorneys for Plaintiffs Controlled

THE UNITED STATES DISTRICT COURT

CONTROLLED ENTRY DISTRIBUTORS,

MASTER REMOTES, INC., an Illinois

Remotes”), allege as follows:

NATURE OF THE ACTION

1. This is an action by Plaintiffs to stop Master Remotes’ willful sale of unlicensed,

Plaintiffs’ common law trade dress and copyrights.

2. Plaintiff Controlled Entry Distributors, Inc., doing business as Community Controls

3. Plaintiff Transmitter Solutions, LLC (“Transmitter Solutions”) is a limited liability

4. Defendant Master Remotes is an Illinois Corporation. Upon information and belief,

JURISDICTION AND VENUE

this action pursuant to 28 U.S.C. §§ 1331 and 1338(a).

is incorporated and has a principal place of business in this Judicial District.

7. Venue is proper in this Court pursuant to 28 U.S.C. §§ 1391. A substantial part of

in this judicial district.

Plaintiffs’ Intellectual Property Rights in the Stinger® Transmitter

of experience developing, designing, and selling wireless receivers, remote transmitters,

automated gates, door solutions, and access control systems.

referred to collectively as “Plaintiffs”.

10. Transmitter Solutions® is registered as a service mark on the Principal Register as

Transmitter Solutions® service mark registration is attached hereto as Exhibit B.

trademark registration is attached hereto as Exhibit C.

been licensed to Master Remotes for use in any manner whatsoever.

efforts of its employees and resellers.

through their websites at www.transmittersolutions.com and www.communitycontrols.com, and

goodwill and a correspondingly substantial network of customers and national resellers.

Stinger® transmitters with the Stinger Trade Dress.

constitute original works of authorship.

25. On November 4, 2020, Plaintiffs filed applications to obtain copyright registrations

of the mail certificate for the registration is attached hereto as Exhibit J.

Infringement of Plaintiffs’ Intellectual Property by Master Remotes, Inc.

Remotes had access to the owner’s manuals.

sale online at the Danielstore1847 eBay store, at the following link:

29. As shown below, a side-by-side comparison reveals that Master Remotes’

Infringing Transmitter is substantially identical in appearance to the Stinger® Transmitter:

Plaintiffs’ Stinger Transmitter Infringing Transmitter 1

indistinguishable from the Stinger® transmitter.

Infringing Transmitters that infringe the ‘315 Patent.

the ‘315 Patent:

‘315 Patent Infringing Transmitter

Plaintiffs’ rights in the Stinger Trade Dress.

capitalize on the popularity of the Stinger® transmitter. Accordingly, Master Remotes’

is engaging in flagrant infringement of the Stinger® and Transmitter Solutions® trademarks,

following screen shot:

Description of the Infringing Transmitter on Master Remotes’

infringes Community Controls’ trademarks.

COUNT 1 – DESIGN PATENT INFRINGEMENT

(Community Controls vs. Master Remotes)

“ornamental design for a transmitter apparatus.”

apparatus as shown and described in the ‘351 Patent.

observer, inducing such observer to purchase one supposing it to be the other.

offering to sell the Infringing Transmitter.

Controls if not preliminarily and permanently enjoined.

49. Community Controls is entitled to an injunction under 35 U.S.C. § 283 prohibiting

50. Community Controls is entitled to recover all monetary damages caused by

51. Given Defendant’s willful infringement, Community Controls is entitled to

COUNT 2 – TRADE DRESS INFRINGEMENT

(Plaintiffs vs. Master Remotes)

purpose and it is not dictated by concern for cost efficiency.

promote the Stinger Trade Dress.

the trade dress with Plaintiffs as the source of Stinger® transmitters.