Novelty v. Rothschild - Complaint

Case 1:13-cv-00497-WTL-TAB Document 1 Filed 03/25/13 Page 1 of 4 PageID #: 1

NOVELTY, INC. An Indiana Corporation,

Plaintiff,

v.

Margaret Rothschild An Individual

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA

INDIANAPOLIS DIVISION

Civil Action No.

Defendant

) ) ) ) ) ) ) ) ) ) )

-------

COMPLAINT FOR DECLARATORY JUDGMENT

This is an action by Novelty, Inc. ("Novelty") for declaratory judgment against

Margaret Rothschild ("Rothschild") arising under the patent laws of the United States,

Title 35 of the United States Code. For its complaint against Defendant, PlaintiffNovelty

alleges:

PARTIES

1. Plaintiff Novelty is an Indiana corporation organized and existing under

the laws of the State of Indiana, and located at 351 West Muskegon Dr., Greenfield,

Indiana 46140.

2. On information and belief, defendant Margaret Rothschild is a resident of

the State of California. Rothschild is named as the sole inventor of U.S. Design Patent

No. D501,897 ("the '897 Patent").

3. The '897 Patent identifies R WL Millennium, LLC as an assignee. On

information and belief, the '897 Patent was assigned by RWL Millennium LLC to RWL,

Inc. by virtue of an assignment recorded with the U.S. Patent Office on October 15, 2004.

4. On information and belief, RWL, Inc., was a California corporation,

formed in 2004 by Rothschild, which has since been administratively dissolved.

5. Rothschild claims ownership of the '897 Patent.

1

srogers

Typewritten Text

1:13-cv-497


JURISDICTION

6. This action involves claims arising under the patent laws of the United

States, including 35 U.S.C. §§ 271, 282 and 285.

7. This Court has original jurisdiction over the subject matter of this

Complaint pursuant to 28 U.S.C. §§1331 and 1338.

8. On information and belief Rothschild is engaged in the business of

licensing the '897 Patent to third party providers and of providing product to retailers and

other companies. This Court has personal jurisdiction over Defendant because, on

information and belief, Rothschild has introduced, marketed and sold products into the

stream of commerce in Indiana, has licensed companies to sell her products into the

stream of commerce in Indiana, and has asserted patent rights against an Indiana

corporation in communications with Novelty and its agent.

9. Venue in this district is proper pursuant to 28 U.S.C. §§ 1391 and 1400.

BACKGROUND

10. Novelty, Inc. is a company that specializes in the distribution and sale of

toys, games, novelty items, point-of-purchase displays, souvenir items, and a wide range

of consumer products. One of Novelty's products is a plush toy sold under the name

"Mohawk Monkey" through Novelty's Kipp Toys subsidiary. An image of various

"Mohawk Monkey" products is attached as Exhibit A.

11. On March 7, 2013, Novelty received a letter ("the March 7 Letter") from

an attorney acting on behalf of defendant Rothschild, in which Novelty was accused of

infringing United States Design Patent No. D501,897 ("the '897 Patent). Rothschild

alleged that Novelty's "Mohawk Monkey" is a copy of Rothschild's product in the

likeness of the toy shown in the '897 Patent. A copy of the March 7 Letter is attached as

Exhibit B, which letter includes a copy of the '897 Patent. The letter states that

Rothschild is the CEO and President of the former RWL, Inc., asserts that Rothschild is

the owner of the '897 Patent and refers to Rothschild's purported rights in the '897

Patent.

2


12. In the March 7 Letter, defendant Rothschild, through her attorney, issued

several demands, including a demand to stop all sales of the "Mohawk Monkey" and a

demand for payment for alleged damages. The March 7 Letter further threatens that if

Novelty does not comply, "Your refusal will be bet [sic] with litigation vigorously

pursued," and that Rothschild "must proceed by litigation."

13. In response to the letter of March 7, Novelty, through its attorney,

responded in a letter dated March 21, 2013 ("the Reply Letter", a copy of which is

attached as Exhibit C) denying that the "Mohawk Monkey" infringed the '897 Patent

and identifying four significant differences (among many) between the "Mohawk

Monkey" and the design covered by the '897 Patent.

14. Rothschild responded to Novelty's Reply Letter by a letter dated March

21, 2013, ("the March 21 Letter", a copy of which is attached as Exhibit D) from her

attorney reiterating the allegation of infringement and repeating the prior demands. The

March 21 Letter includes the further threat, in bold type, that if Novelty does not change

its position on infringement, "we fully intend to seek resolution in court and will

promptly file suit."

15. Novelty's "Mohawk Monkey" is significantly different in overall

appearance from the design claimed in the '897 Patent, and an ordinary observer would

not be deceived into thinking that the "Mohawk Monkey" is the same as the design

claimed in the '897 Patent.

CAUSES OF ACTION

16. There is an actual, substantial and justiciable controversy between Novelty

and defendant Rothschild. Rothschild has charged Novelty with infringement of the '897

Patent. Rothschild asserts ownership of the '897 Patent and all the rights associated

therewith, including the right to sue for infringement. Rothschild has threatened litigation

for infringement of the '897 Patent.

17. Novelty denied the allegation of infringement and presented evidence of

non-infringement. Defendant repudiated the evidence and maintained the allegation of

3


infringement. The dispute between Novelty and Rothschild is definite and concrete and

touches on the legal relations of parties having adverse legal interests.

18. On information and belief, the '897 Patent is unenforceable and/or invalid

under the provisions of at least 35 U.S.C. §§102, 103 and/or 112.

19. Novelty has not infringed, and has not willfully or deliberately infringed,

the '897 Patent.

PRAYER FOR RELIEF

In view of the foregoing allegations, Novelty prays that this Court:

1. Issue a declaration adjudging that Novelty's "Mohawk Monkey" and any

similarly configured plush toy product does not infringe United States Design Patent No.

D501,897;

2. Issue a declaration adjudging that United States Design Patent No.

D501 ,897 is unenforceable and/or invalid under the U.S. Patent Laws;

3. Upon finding that this case is an exceptional case under 35 U.S.C. § 285,

award Novelty its reasonable attorneys' fees;

4. Grant and award to Novelty any and all relief found necessary and proper

under the circumstances.

Counsel for PlaintiffNovelty, Inc.

s/ Michael D. Beck

Michael D. Beck, Attorney No. 11139-49 Harold C. Moore, Attorney No. 19004-49 MAGINOT, MOORE & BECK, LLP. One Indiana Square, Suite 2200 Indianapolis, Indiana 46204 Phone: 317-554-2927 Fax: 317-638-2139 E-mail:[email protected]

4

Case 1:13-cv-00497-WTL-TAB Document 1-1 Filed 03/25/13 Page 1 of 2 PageID #: 5

EXHIBIT A


5


EXHIBITB


Maxine Raphael

March 7, 2013

VIA United Parcel Service Mr. Brian Croel Novelty Inc.

· 351 West Muskegon Dr. Greenfield, In 46140

Re: Margaret Rothschild, CEO, President of the former RWL, Inc., Design Patent No. D501,897 S

Attn: Brian Croel

80 Jane Street

UnitE New York, NY 10014

T 310-617-0322 F 917-274-3426

[email protected]

I represent Margaret Rothschild ("Rothschild"), CEO, President of the former RWL, Inc. Rothschild is the owner of l!nited States Design Patent No. D501,897 S issued February 15,2005. The patent is for a plush toy as shown and described in the patent ("Patented Monkey"), a copy of which is enclosed within. My client also has patent protection for numerous other of its nov'elty items including hat and wig designs. Furthermore, my client has officially licensed its Patented Money to third party plush manufacturers for exclusive right of use.

It has come to my attention that Novelty, Inc. ("Novelty") has produced a copy of my client's product in the likeness of Patented Money ("Infringing Product") _and sold said product online via Amazon Marketplace and to retailers including independent concession stands at gas stations and car wash locations, among others. Printout copies of the Infringing Product for sale on Amazon Marketplace and photos of Infringing Product obtained from Valero Corner Store, Store #1020, 250 N. Loop 1604 E., Hollywood Park, TX 78232 are enclosed hereto.

You are obviously aware that you are not a licensee or authorized distributor of my client's novelty plush monkey covered by the D501,897 S patent. My client considers your conduct to be an infringement of its patent rights. Your conduct, especially since you have now been put on notice of my client's rights, constitutes willful patent infringement, unfair competition and/or counterfeiting. This kind of conduct is particularly damaging to my client in view of its current licensing agreements with third party providers and ongoing business dealings with retailers and other companies.

Your misconduct exposes you to very serious liabilities, including compensatory damages measured by both my client's losses and your ill-gotten gains (which can be subject to trebling), attorney's fees and court costs if our client has to bring legal action ..


Our client hereby demands that you immediately cease and desist your acts of infringement and other misconduct and that you immediately do the following:

1.

2.

3.

4.

5.

6.

Stop all sales, offers for sale, advertising, distribution, manufacture, and/or import of the Infringing Product covered by my client's patent and undertake not to engage in such conduct in the future;

Recall all copies of any marketing or promotional materials showing the Infringing Product and deliver all existing copies of said material to me for destruction;

Disclose to my client when and how or from whom you obtained or manufactured the Infringing Product including names, addresses, telephone numbers, and contact persons;

Account to my client, the quantities and prices of all the Infringing Product sold, distributed, made, imported and or currently in inventory, and disclose all invoices and purchase orders for any and all purchases of the Infringing Product, including names, addresses, telephone numbers, and contact persons;

Providing an inventory of all of the Infringing Product remaining on hand; and

Immediately recall all the Infringing Product.

We shall expect a response with the documentation requested and a good faith attempt to resolve this mater by the payment to our client of appropriate damages.

Your cooperation will invite the respect and cooperation of my client. Your refusal will be bet

with litigation vigorously pursued.

Please contact the undersigned at your earliest convenience and advise of your intentions. If we do not hear from you on or before March 22, 2013, with written assurances that you will comply with our client's d~mands, I will assume that this matter will not be resolved amicably and that my client must proceed by litigation.

Sincerely yours,

CY\\_.~ Maxine Raphael, Esq.

Enclosures: As stated above

cc: Margaret Rothschild (w/out encls.)

cc: Amazon. com, Inc., c/o Corporation Service Company at 300 Deschutes Way SW, Suite 304, Tumwater, WA 98501, Attn: Legal Department


111111 lllllllllllllllllllllllllllllllllllllllllllllllllllllllllllll . USOOD501897S

(12) United States Design Patent oo) Patent No.: US D501,897 S ** *Feb. 15, 2005 Rothschild (45) Date of Patent:

(54) PLUSH TOY

(75) Inventor: Margaret Rothschild, Sherman Oaks, CA (US)

(73) Assignee: RWL Millennium LLC, Sherman Oaks, CA (US) .

( *) Notice: This patent is subject to a tenninal dis-claimer.

(**) Term: 14 Years

(21) Appl. No.: 29/169,177

(22) Filed: Oct. 15, 2002

(51) (52)

(58)

(56)

LOC (7) Cl ..................................................... 21-01 U.S. Cl •...................................... D211596; D211576 Field of Search ............ ... . Dll/158; D21/576-577,

. 021/585-588, 596, 604-605; 446/72, 97-98, 278, 368-369; D2/866

References Cited

U.S. PATENT DOCUMENTS

3,295,536 A 3,474,798 A 3,782,396 A 4,268,918 A 4,296,567 A D302,484 S D308,401 S 5,119,513 A D357,569 S D369,014 S D378,948 s. 5,806,535 A

1/1967 Shaw et al. 1011969 Tillotson

1/1974 Tomlinson 5/1981 Lee

* 10/1981 Kamar .. .. .......... . ........ 446/369 8/1989 Egan

* 6/1990 Dinelli .............. , ....... D21/577 6/1992 McKay 4/1995 Jacobellis 4/1996 Lucas 4/1997 Ragus 9/1998 Becker

D4ll ,577 S 6/1999 Walker et al. 6,000,063 A 1211999 Sullivan 6,115,843 A 9/2000 Travalgia 0467,707 S * 1212002 Rothschild .. ................. 021866 0468,373 S * 1/2003 Rothschild .......... ...... . 021/605 0469,133 S * 112003 Rothschild .. ....... ..... .. . 0211605

OTHER PUBLICATIONS

Princess Soft Toys 1994 Catalog. p. 8, Congo Monkey.* Major League Teddy Bears brochure, Dodger bear.* Beta Toys Catalog, p. 3, monkey 9002-SB. * * cited by examiner

Primary Examiner-Sandra L. Morris (74) Attorney, Agent, or Finn-Buchalter, Nemer, Fields and Younger

(57) CLAlM

The ornamental design for a plush toy, as shown and described.

DESCRIPTION

FIG. 1 is a front view of my plush toy of the present invention, the broken line drawing of the letters being for illustrative purposes only; FIG. 2 is a back view -of the plush toy in FIG. 1; FIG. 3 is a left side view of the plush toy in FIG. 1, the

· broken line drawing of the letters being for illustrative purposes only; · · · · FIG. 4 is a right side view of the plush toy in FIG. 1, the broken line drawing of the letters being for illustrative purposes only; FIG. 5 is a·bottom view of the plush toy in FIG. 1; and, FIG. 6 is a top view of the plush toy in FIG. 1.

1 Claim, 5 Drawing Sheets


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EXHIBITC


I .. . I MAGINOT, M OORE&BECKLLP L _____ ,.~-~"'~~·-"""~- ~ ATENT .~ i m r.,PADE:'·HRI( A.r:rom lEY~;

March 21, 2013

Maxine Raphael, Esq. 80 Jane Street, Unit B New York, NY 10014

Re: Margaret Rothschild Design Patent No. D501,897 Novelty, Inc. "Mohawk Monkey"

Dear Ms. Raphael:

PAUL j. MAGIN OT

H AROLD C. fvi OORE

MICHAEL D. BECK

DAV ID M. LocK,\!ANLl

RUSSELL E. fOWLER [(

] M IES D. WOOD

M ICHAEL A. SWIFT

DAVID R. lv!OORMAN

CHARLES B. PHILliPS

CHARLES M. Fox KELll D. MORI N

!-fOJ\IER W . fAUCETT Ill

DANIEL j . GREENH ALGH

DAN IEl. J. KRIEGER

TRAVIS W. BAXTER

~ GEoRGiA· i-OHiOBARS~ ALso

We represent Novelty, Inc. with respect to their intellectual property matters. Your letter

of March 7, 2013 has been forwarded to us for review and response. Please be assured that

Novelty, Inc. has not copied the plush toy claimed in the above-mentioned design patent (the

'897 Patent). For the reasons explained below, we believe that there is no legal basis for your

client's demand that Novelty cease sales of its non-infringing product.

We have reviewed the "Mohawk Monkey" product of Novelty with respect to the '897

Patent and have determined that this product cannot infringe under the Egyptian Goddess

standard for design patent infringement. In particular, an ordinary observer would not be

deceived into thinking the "Mohawk Monkey" is the same as the patented design of the '897

Patent. For instance, the top view of the "Mohawk Monkey" is very different from Fig. 6 of the

'897 Patent in that the side of the head, the ears and the arms are all visible outside the hair,

whereas in the '897 Patent no features of the plush toy are visible below the hair. In addition, the

front view of our client's product is not substantially similar to the front view in Fig. 1 of the

patent. For instance, the arms are much shorter, the tail is differently configured, the facial area

is very different and the feet and hands ofthe "Mohawk Monkey" have 'fmgers' and 'toes' in

contrast to the 'mitten' appearance in the design patent. These examples are not exhaustive -

there are many other differences that would be readily apparent to an ordinary observer.

One Indiana Square, Suite 2200 Indianapo lis, Indiana 46204 United States Tel: + 1 317 638-2922 Fax: + 1 317 638-2139 [email protected] www.maginot.com

Case 1:13-cv-00497-WTL-TAB Document 1-4 Filed 03/25/13 Page 3 of 3 PageID #: 25Maxine Raphael, Esq. March 21, 2013 Page 2

Novelty, Inc. respects the intellectual property rights of others and appreciates being

infmmed of your client's '897 Patent, which will be taken into consideration should Novelty

develop any new plush animal toy in the future. However, with respect to the "Mohawk

Monkey", the demands in your March 7, 2013, letter are over-reaching since this product does

not infringe the '897 Patent. Given the significant differences between Novelty's product and

the design in the '897 Patent we will consider this matter closed.

Cc: Novelty, Inc.


EXHIBITD


March 21, 2013

Re: Margm.'et Rothschild Design Patent No.D501,897

Novelty, Inc., "Mohawk Monkey"

Dear Mr. Beck,

Maxine Raphael 80 Jane Street

UnitE New York, NY 10014

T 310-617-0322 F 917-274-3426

[email protected]

I am in receipt of your letter dated March 21,2013 in response to our March 7, 2013letter

regarding an intellectual property dispute between my client Margaret Rothschild

("Rothschild") and Novelty, Inc. regarding Design Patent No. D501,897.

We are not satisfied with the reasons you outline in your letter dismissing our claim of patent

infringement. In summary of your letter, you claim that Novelty, Inc.'s "Mohawk Monkey" has

slightly different dimensions (e.g., length of arm and tail) and that its ears are fully visible as

opposed to partially visible in the D501,897 patent.

We do not believe these minor differences in Novelty Inc.'s product overcome the primary

basis for the design patent: a hanging or elongated monkey plush design with a wig affixed to

its head. In addition, the wig itself is patented with Design Patent No. D467,406 S which

includes any wig or multi-colored wig, with a band affixed across the base of the wig; this patent also includes embroidery or printing on the band of the wig.

Rothschild is known for her creativity and the quality of her products. Her patent is of great value, and she has been licensed by Major League Baseball, National Hockey League, CLC and

other organizations who have sought to purchase this distinct design from Rothschild. In

addition, this kind of infringement is particularly damaging to my client in view of its current

licensing agreements with third party providers and ongoing business dealings with retailers

m1d other companies.


Lastly, you have been put on notice as of March 7, 2013 that my client considers the actions of

~ovelty, Inc., to be a violation of its patent rights. However, March 17-20,2013, Novelty, Inc.

displayed the "Mowhawk Monkey" at the Associated Surplus Dealer Retail Merchandise Trade

Show in Las Vegas as its own design and offered it for purchase. Photos of this display were

taken, and sent directly to your client on March 21, 2013. At this point, your conduct is deemed to be willful.

Our client hereby demands that you immediately cease and desist your acts of infringement

and other misconduct and that you immediately do the following:

1.

2.

3.

4.

5.

6.

7.

Stop all sales, offers for sale, advertising, distribution, manufacture, and/or

import of the Infringing Product covered by my client's patent and undertake

not to engage in such conduct in the future;

Recall all copies of any marketing or promotional materials showing the

Infringing Product and deliver all existing copies of said material to me for

destruction;

Disclose to my client when and how or from whom you obtained or

manufactured the Infringing Product including names, addresses, telephone

numbers, and contact persons;

Account to my client the quantities and prices of all the Infringing Product sold,

distributed, made, imported and or currently in inventory, and disclose all

invoices and purchase orders for any and all purchases of the Infringing

Product, including names, addresses, telephone numbers, and contact persons;

Account to my client all purchase orders or potential purchase orders of the

Infringing Product obtained from the Associated Surplus Dealer Retail

Merchandise Trade Show in Las Vegas from March 17-20, 2013;

Provide an inventory of all of the Infringing Product remaining on hand; and

Immediately recall all the Infringing Product.

If you do not change your position on this matter, provide in good faith the documentation

requested, and seek to resolve this matter by the payment to our client of appropriate

damages, we fully intend to seek resolution in court and will promptly file suit. Upon resolution of this matter, if Novelty. Inc. desires to continue sales and/or promotion of this product, Rothschild is open to engaging in discussion reg·arding a licensing agTeement.

Please contact the undersigned at your earliest convenience and advise of your intentions. If

we do not hear from you on or before March 25, 2013, with written assurances that you will


comnlv with our client's demands. I will assume that this matter will not be resolved arnica];,; . .. ~ '

and that my client must proceed by litigation .

Sincerely yours,

Nfaxine Raphael, Esq.

JS 44 (Rev 09/10)

UNITED STATES DISTRICT COURT SOUTHERN DISTRICT OF INDIANA

CIVIL COVER SHEET

This automated JS-44 conforms generally to the manual JS-44 approved by the Judicial Conference of the United States in September 1974. The data is required for the use of the Clerk of Court for the purpose of initiating the civil docket sheet. The information contained herein neither replaces nor supplements the filing and service of pleadings or other papers as required by law.

Signature: s/Michael D. Beck

Date: 03/25/2013

If any of this information is incorrect, please close this window and go back to the Civil Cover Sheet Input form to make the correction and generate the updated JS44. Once

corrected, print this form, sign and date it, and submit it with your new civil action.

Plaintiff(s): Defendant(s):

First Listed Plaintiff: Novelty, Inc ; County of Residence: Hancock County

First Listed Defendant: Margaret Rothschild ; County of Residence: Outside This District

County Where Claim For Relief Arose: Marion County

Plaintiff's Attorney(s): Defendant's Attorney(s):

Michael D. Beck ( Novelty, Inc) Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, Indiana 46204 Phone: 317-638-2922 Fax: 317-638-2139 Email: [email protected]

Basis of Jurisdiction: 3. Federal Question (U.S. not a party)

Citizenship of Principal Parties (Diversity Cases Only)

Plaintiff: N/A

Defendant: N/A

Origin: 1. Original Proceeding

Nature of Suit: 830 Patent

Cause of Action: 35 U.S.C. Sections 271, 282 and 285- declaratory judgment of non-infringement of patent

Requested in Complaint

Class Action: Not filed as a Class Action

Monetary Demand (in Thousands):

Jury Demand: No

Related Cases: Is NOT a refiling of a previously dismissed action


Documents

Novelty v. Rothschild - Complaint