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COMPLAINT
JOHN W. SPIEGEL (SBN: 78935) [email protected] MUNGER, TOLLES & OLSON LLP 355 South Grand Avenue, Thirty-Fifth Floor Los Angeles, CA 90071-1560 Telephone: (213) 683-9100 Facsimile: (213) 687-3702 JONATHAN H. BLAVIN (SBN: 230269) [email protected] MUNGER, TOLLES & OLSON LLP 560 Mission Street, 27th Floor San Francisco, CA 94105 Telephone: (415) 512-4000 Facsimile: (415) 512-4077
Attorneys for Plaintiff EMECO INDUSTRIES, INC.
UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
EMECO INDUSTRIES, INC.
Plaintiff,
v.
RESTORATION HARDWARE, INC., GARY FRIEDMAN, and DOES 1-10.
Defendants.
CASE NO.
COMPLAINT FOR FEDERAL TRADE DRESS AND TRADEMARK COUNTERFEITING AND INFRINGEMENT; FEDERAL DILUTION; COMMON LAW TRADE DRESS AND TRADEMARK INFRINGEMENT; VIOLATION OF CAL. BUS. & PROF. CODE §§ 14330 et seq.; VIOLATION OF CAL. BUS. & PROF. CODE §§ 17200 et seq.
DEMAND FOR JURY TRIAL
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COMPLAINT
Plaintiff Emeco Industries, Inc. (“Emeco” or “Plaintiff”), by and through its attorneys,
brings this Complaint against Defendants Restoration Hardware, Inc., its former Chief Executive
Officer and present Chairman Emeritus, Creator and Curator Gary Friedman, and Does 1-10
(collectively, “Restoration Hardware” or “Defendants”) for injunctive relief and damages. Emeco
alleges as follows:
NATURE OF THE ACTION
1. This action arises out of Restoration Hardware’s flagrant and willful infringement
of Emeco’s trade dress and trademark rights in its world-renowned Navy Chair® collection.
Restoration Hardware has developed and is presently selling a series of cheap knockoffs, with the
near-identical “Naval Chair” name, that copy verbatim the iconic and highly distinctive design of
the Navy Chair® product line. Below is a side-by-side comparison of Emeco’s Navy Chair® and
Restoration Hardware’s “Naval Chair.”
Emeco’s Navy Chair® Restoration Hardware’s “Naval Chair”
2. Originally commissioned by the United States Navy during World War II, the
Emeco Navy Chair® is a modern classic of twentieth century design, universally celebrated for
its craftsmanship and sustainable composition. The Navy Chair® is featured in the permanent
collections of modern art museums and is a prominent fixture of homes, offices, colleges, hotels,
and restaurants around the world. Composed of recycled aluminum, the chairs are sculpted and
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COMPLAINT
manufactured by hand in Hanover, Pennsylvania through a highly technical and precise system
of 77 steps. As a result of this rigorous process, the Navy Chair® is three times as strong as steel
and is built to last for 150 years. The Navy Chair® is sold at retail for approximately $450.
3. Restoration Hardware’s “Naval Chair” line of chairs and stools are blatant, cheap
knockoffs of the Emeco Navy® product line. By giving its chairs and stools the confusingly
similar “Naval Chair” name and describing them as an “update of an armed forces classic,”
Restoration Hardware misleadingly suggests that, like the Emeco Navy Chair®, its products are
American-made. On information and belief, they are manufactured in China for a fraction of the
cost, and are not the result of the extensive and precise manufacturing process that ensures the
high quality of the Navy Chair® collection. The “Naval Chair” presently sells at retail for $129.
4. Restoration Hardware has stated, euphemistically, that “[a]t our core we are not
designers, rather we are curators and composers of inspired design and experiences.”1 In fact,
Restoration Hardware is not a “curator” or “composer” of others’ “inspired designs”; it is a
counterfeiter of them. In advance of its upcoming IPO, Restoration Hardware’s publicly-
announced revenue-surging strategy is built upon “[e]xternally discover[ing] and curat[ing]”
others’ designs, which decreases production lead times and costs.2 Having been sued for copying
more than half a dozen times in the past decade, Restoration Hardware’s current activities are part
of an established practice of infringing others’ designs and trademarks for financial gain.
5. The irreparable harm caused by Restoration Hardware’s willful and manifest
infringement to Emeco’s reputation and significant goodwill is massive, incomparable to that
caused by a typical, small-time counterfeiter. Restoration Hardware is hijacking and exploiting
Emeco’s brand image and iconic designs. As an established company, consumers are highly
likely to believe that the products Restoration Hardware sells are genuine, legitimate articles, not
cheap counterfeits made overseas. Emeco brings this action to halt that harm and protect its
exclusive rights. Emeco further is entitled to its actual damages, to Restoration Hardware’s illicit
profits, to statutory damages, and/or exemplary damages as a result of this unlawful conduct. 1 http://www.sec.gov/Archives/edgar/data/1528849/000119312512282937/d70987ds1a.htm. 2 Id.
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COMPLAINT
THE PARTIES
6. Emeco is a privately held Pennsylvania corporation and has its principal place of
business in Hanover, Pennsylvania.
7. Restoration Hardware is a Delaware corporation and has its principal place of
business in Corte Madera, California. Private equity firms Catterton Partners and Tower Three
Partners LLC, along with Defendant Gary Friedman, bought a controlling equity stake in
Restoration Hardware in a merger agreement approved by shareholders in June 2008. On
September 19, 2012, the company filed plans for an initial public offering in 2013 of up to $150
million in common stock. Restoration Hardware presently has 87 retail and 10 outlet stores
throughout the United States and Canada.
8. Gary Friedman is former Chairman and Chief Executive Officer of Restoration
Hardware. In August 2012, he was appointed Chairman Emeritus, Creator and Curator of
Restoration Hardware. On information and belief, Friedman is the owner of up to 20% of
Restoration Hardware’s equity,3 and is expected to make several million dollars in the upcoming
IPO. He resides in Belvedere, California.
9. Does 1-10 are individual directors, officers, employees and/or investors of
Restoration Hardware who personally directed, controlled, ratified, or otherwise participated in
Restoration Hardware’s infringing and unlawful activity, but whose identities are presently
unknown. Emeco intends to name such individuals after it ascertains their identities through
discovery.
JURISDICTION AND VENUE
10. The Court has subject matter jurisdiction over the Lanham Act causes of action
pleaded herein pursuant to 28 U.S.C. §§ 1331 (federal question) and 15 U.S.C. §§ 1051, et seq.
The Court has supplemental jurisdiction over the state law causes of action pleaded herein
pursuant to 28 U.S.C. § 1367.
3 http://thedealsleuth.wordpress.com/2008/06/18/restoration-hardware-class-action-payout-still-leaves-shareholders-short-of-full-value/.
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COMPLAINT
11. Venue is proper in this District because Restoration Hardware resides in the
District and is subject to personal jurisdiction within it, 28 U.S.C. § 1391.
INTRADISTRICT ASSIGNMENT
12. This is an Intellectual Property Action to be assigned on a district-wide basis
pursuant to Civil Local Rule 3-2(c).
FACTUAL ALLEGATIONS
Emeco and Its Iconic Navy Chair® Line of Products
13. Emeco was founded in 1944 in Hanover, Pennsylvania. Commissioned by the
United States Navy during World War II to build a seaworthy, lightweight and durable chair that
could be used on warships and submarines, Emeco developed the iconic Navy Chair® (known as
the “1006 Navy Chair”). The United States government to this day continues to purchase Emeco
Navy Chairs® for United States Navy ships and submarines.
14. In the years since, the Emeco Navy Chair® has been recognized as a modern
masterpiece of twentieth century design. It is in the permanent collections of museums around
the world, including the Design Museum in London and the Carnegie Museum of Art in
Pittsburgh, and is presently on display in the Museum of American History in Washington, D.C.
and a traveling exhibition entitled The Art of Seating: 200 Years of American Design. It is used in
homes, offices, hotels, colleges, and restaurants around the world and regularly appears in design
magazines, fashion layouts, and Hollywood films and television series. The Navy Chair® also
has been prominently displayed by preeminent designers — including Philippe Starck and Frank
Gehry — in their own projects, and such designers also have collaborated with Emeco in their
own furniture designs.
15. The Navy Chair® is constructed by hand in Hanover, one at a time, through a
highly technical and precise manufacturing process consisting of 77 independent steps. The
chairs are subjected to a proprietary thermal treatment, making them three times stronger than
steel. Emeco has approximately 54 workers in Hanover that produce an output of about 1,000
Navy Chairs® per month. Each chair takes approximately two weeks to complete, is expected to
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last for 150 years, and comes with a lifetime guarantee. Emeco Navy Chairs® also pass the most
stringent American National Standards Institute (ANSI) and Business and Institutional Furniture
Manufacturer’s Association (BIFMA) standards.
16. Emeco has an industry-wide reputation for exclusively manufacturing the Navy
Chair® through this rigorous process. The unique Emeco manufacturing process and the Navy
Chair® product line have been featured by several media outlets, including CNN and John
Ratzenberger’s “Made in America” television show. Emeco has extensively advertised and
marketed the Navy Chair® and has sold over 1,000,000 of them, always associating Emeco as the
source of the Navy Chair®.
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17. As part of a Joint Venture Partnership with the Coca-Cola company, Emeco also
constructs a version of the Navy Chair® made out of recycled plastic Coca-Cola bottles (known
as the “111 Navy Chair®”). The production of this chair is expected to keep three million plastic
bottles out of landfills each year (since 2010, 8 million bottles have been keep out of landfills).
The 111 Navy Chair® is available in various colors, including red, black, green, orange, and
white. The 111 Navy Chair® has won several awards, including the Good Design Award and the
International Forum Product Design Award.
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18. Below are images of the 1006 Navy Chair® and the 111 Navy Chair®.
1006 Navy Chair® 111 Navy Chair®
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COMPLAINT
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19. In addition, Emeco makes a number of other products as part of its Navy Chair®
collection, including the Navy Armchair, the Navy Counter Stool, and the Navy Barstool. 2
The Navy Armchair The Navy Counter Stool The Navy Barstool
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COMPLAINT
20. Emeco sells its Navy Chair® collection directly to consumers, including through
its website, and through established retail furniture and design stores such as Design Within
Reach. Emeco also sells its Navy Chair® products to trade architects and designers,
governments, contract dealers, international distributors, and for end use commercial applications.
Emeco’s Navy Chair® Trade Dress and Trademark Rights
21. Emeco is the owner of the exclusive trade dress and trademark rights in the Navy
Chair® collection.
22. Emeco is the owner of U.S. federal registration nos. 2511360 and 3191187, which
cover the design and outline of the Navy Chair®, respectively. Under these registrations, Emeco
has the exclusive right to use the design and outline of the Navy Chair® in connection with its
furniture and marketing materials. Copies of the certificates for these federal trademark
registrations are attached hereto as Exhibit 1. Both of these trademarks are incontestable.
23. Emeco also is the owner of U.S. federal registration nos. 3016791 and 3912854,
which cover the trademarks “Navy Chair” and “111 Navy Chair.” Under these registrations,
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COMPLAINT
Emeco has the exclusive right to use the Navy Chair® trademark. Copies of the certificates for
these federal trademark registrations are attached hereto as Exhibit 2. The “Navy Chair”
trademark is incontestable.
24. Emeco owns statutory and common law rights in the design and trade dress of the
entire Navy Chair® product line, including the Navy Armchair, the Navy Counter Stool, and the
Navy Barstool, as well as their associated Navy Chair® trademarks.
25. The design elements of the Navy Chair® collection together comprise an
inherently distinctive and non-functional aesthetic. This includes, for example, the rounded bends
at the top corners on the upper back of the seat, which also form the back legs; the rounded curves
on the lower back of the seat; the overall concave curvature of the chair back (when viewed from
the back); the number, space, and positioning of the three vertical bars connecting the upper and
lower curves of the back of the seat; the unique, molded seat defined by concave curves meeting
in the center of the seat to form a triangle “butt dip”; the pie-shaped cross section of the tapered
front legs; the two curved horizontal bars running between the corresponding front and back chair
legs in the chair and armchair versions, and for the stool versions, between the two front legs and
two back legs; the positioning and angle of the curved horizontal bar(s) on the lower base of the
seat; the outward bent of the back legs; the lack of fasteners, yielding a sculpture-like, one-piece
design; and the distinct hand brushed finish with the contrasting direction where the leg meets the
seat bottom.
26. Emeco’s use of the Navy Chair® design and trademark has been substantially
continuous and exclusive. Emeco has attained strong name recognition in the Navy Chair®
design and mark, which have come to be associated with Emeco and which identify Emeco as the
source of the Navy Chair® collection. Emeco has spent significant sums marketing and
promoting its products in connection with Navy Chair® design and trademark, and considers
them to be vitally important, valuable assets for the company. Emeco has vigorously and
continuously enforced its Navy Chair® trade dress and trademark rights against infringers and
counterfeiters.
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27. Emeco is so closely associated with the design of the Navy Chair® that it uses the
outline of the chair (federal registration no. 3191187) as the company’s official logo: 2
Restoration Hardware’s Unauthorized Use of Emeco’s Trade Dress and Trademarks
28. Without any authorization from Emeco, Restoration Hardware has replicated the
inherently distinctive trade dress of Emeco’s Navy Chair® product line with a series of cheap
knockoffs, and has used the confusingly similar “Naval Chair” mark in describing these products.
29. Consumers are highly likely to confuse the source, association, affiliation,
endorsement or sponsorship of Restoration Hardware’s “Naval Chair” products with the Emeco
Navy Chair® brand. Consumers who directly purchase the “Naval Chair” products from
Restoration Hardware are likely to think they are the original Emeco Navy Chair® products or
otherwise associated or affiliated with them. Consumers are unlikely to believe that an
established company such as Restoration Hardware would be selling cheap counterfeits made
overseas. Moreover, consumers who do not directly purchase the “Naval Chairs” from
Restoration Hardware but who see them in the world (offices, restaurants, homes, etc.) are highly
likely to confuse them with Emeco’s Navy Chair® collection. Restoration Hardware’s products
further dilute the highly distinctive and famous quality of the Navy Chair® trade dress and mark,
by both blurring and tarnishment.
30. Upon information and belief, in using Emeco’s trade dress and a confusingly
similar name to the Navy Chair® trademark, Restoration Hardware has willfully and deliberately
sought to profit from Emeco’s established goodwill and reputation.
31. On information and belief, the Restoration Hardware “Naval Chair” products are
manufactured in China and are not the result of the extensive and precise manufacturing process
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COMPLAINT
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that ensures the high quality of the Navy Chair® product line.4 Restoration Hardware does not
disclose to consumers that its chairs and stools are made overseas in its marketing materials; to
the contrary, Restoration Hardware misleadingly suggests that they are manufactured in the
United States by naming them “Naval Chair” and describing them as an “update of an armed
forces classic.” Moreover, a recent Restoration Hardware catalog had on its cover a picture of
Abraham Lincoln’s profile on Mount Rushmore, further suggesting the purportedly American-
made nature of its products. And by describing its products as the “1940s Naval” chair,
Restoration Hardware seeks to capitalize on, and usurp, Emeco’s own unique role in American
history.
32. The “Naval Chair” products sell at retail at prices that are on average $300 less
than their Navy Chair® counterparts. For example, the Navy Chair® sells at retail for
approximately $450.00, and the “Naval Chair” sells for $129.00.
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33. The designs of the Restoration Hardware “Naval Chair” side chair and armchair
versions are virtually identical to that of the Navy Chair® products, as shown below. 14
Navy Chair® “Naval Chair”
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COMPLAINT
4 As Restoration Hardware has stated in its filings with the SEC, approximately 77% of its products are sourced in Asia, the majority of which originate from China. http://www.sec.gov/Archives/edgar/data/1528849/000119312512282937/d70987ds1a.htm.
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Navy Armchair “Naval” Armchair
34. The designs of the Restoration Hardware “Naval” counter stool and barstool
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Navy Counter Stool “Naval” Counter Stool
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COMPLAINT
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Navy Barstool “Naval” Barstool
35. A minor difference between the “Naval Chair” counter stool and barstool and the
Navy Chair® stools is that the latter have a single bar on their lower base, whereas the
Restoration Hardware stools have two bars. On information and belief, this difference is not the
result of Restoration Hardware seeking to modify the Navy Chair® design, but rather because it
had to include the additional bar for support because its chairs are not thermal treated and
therefore lack the strength of the Navy Chair® stools.
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36. Restoration Hardware has prominently marketed and advertised its chairs and
stools with the “Naval Chair” name in its print catalog and on its website. 19
37. Below is in image from the Restoration Hardware fall 2012 catalog. For the last
fiscal year, Restoration Hardware states that it distributed approximately 26.1 million catalogs to
consumers.5
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COMPLAINT
5 http://www.northbaybusinessjournal.com/61583/restoration-hardware-aims-for-150m-in-ipo/.
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38. Below is an image of the Restoration Hardware website using the “Naval Chair”
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COMPLAINT
Emeco Sends Restoration Hardware Cease and Desist Notices, and It Responds By Removing “Naval Chair” From Its Website, Admitting a Likelihood of Confusion
39. On September 7, 2012, Gregg Buchbinder, President & CEO of Emeco, had a
telephone conversation with Glenn Krevlin, a member of the board of directors of Restoration
Hardware, in which he expressed his concerns regarding Restoration Hardware’s “Naval Chair”
product line and told him that if Restoration Hardware did not cease its conduct, Emeco would be
forced to bring legal action. Mr. Krevlin responded that Mr. Buchbinder should email him a
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6 http://www.sec.gov/Archives/edgar/data/1528849/000119312512282937/d70987ds1a.htm.
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COMPLAINT
summary of Emeco’s demands so that he could forward them to the key personnel at Restoration
Hardware.
40. Per Mr. Krevlin’s suggestion, on September 8, 2012 Mr. Buchbinder sent an email
to Mr. Krevlin, summarizing Emeco’s position and demands, and requesting that he bring this
issue to the attention of the key personnel at Restoration Hardware. Mr. Krevlin stated in
response, “Got it.”
41. Seeing no response from Restoration Hardware, on September 20, 2012, the
undersigned, representing Emeco, sent a letter to Restoration Hardware’s current CEO, Carlos
Alberini, again requesting that Restoration Hardware cease and desist its infringing conduct. The
letter requested that Restoration Hardware provide written assurances that it would comply with
Emeco’s demands by September 27, 2012, and stated that if Restoration Hardware did not,
Emeco would initiate legal proceedings to enjoin Restoration Hardware’s unlawful conduct.
42. On or about September 21, 2012, Restoration Hardware, in a clear admission as to
the confusingly similar nature of the “Naval Chair” name, modified its website to remove all
references to “Naval Chair” in describing its chairs and stools. The infringing products, now just
named the “Aluminum” line, however, remain for sale. Moreover, millions of catalogs describing
these products as part of the “Naval Chair” series already have been circulated to the public.
43. On September 27, 2012, Restoration Hardware’s counsel sent the undersigned a
letter stating that it would respond to Emeco’s September 20, 2012 letter sometime “next week.”
On September 28, 2012, Restoration Counsel’s sent another letter stating a “few preliminary
comments and questions,” but otherwise refusing to comply with Emeco’s demand that
Restoration Hardware cease and desist its infringing conduct.
Upon Information and Belief, Restoration Hardware’s Conduct is Willful and Part of a Well-Documented History of Using Others’ Designs and Trademarks
44. Emeco believes and therefore alleges that the identical nature of the Navy Chair®
and “Naval Chair” product lines is not mere coincidence, but is the result of willful, intentional
conduct that is part of Restoration Hardware’s established practice of using others’ designs and
trademarks for financial gain.
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COMPLAINT
45. On information and belief, Restoration Hardware’s infringing “Naval Chair”
product line is the result of the company’s efforts in advance of its IPO to grow revenue rapidly
without significant investment in the design and development of its own products. As Restoration
Hardware itself has stated, euphemistically, in its pre-IPO filings with the Securities and
Exchange Commission, “[a]t our core we are not designers, rather we are curators and composers
of inspired design and experiences.”7 In fact, Restoration Hardware is a “counterfeiter” of others’
designs. As Restoration Hardware acknowledges in those public filings, by “[e]xternally
discover[ing] and curat[ing]” others’ designs, as opposed to “[i]nternally design[ing] and
develop[ing]” its own products, it can cut the product development process from “12-18 months
lead time” to “3-9 months lead time” and “reduce product costs.”8
46. By contrast, it takes Emeco approximately 2 to 4 years to design, prototype, R&D,
engineer, market, and launch a new, original product, and there is no guarantee the product will
sell. By contrast, Restoration Hardware has skipped all of these steps and misappropriated the
design of the Navy Chair®, which already has proven market success, and which Restoration
Hardware intends to sell at a significantly discounted price.
47. Prior claims and lawsuits against Restoration Hardware further substantiate the
willfulness of Restoration Hardware’s present conduct.
48. For example, in 2003, Brookstone commenced an action against Restoration
Hardware regarding certain fans Restoration Hardware was selling, which were alleged to have
infringed upon Brookstone’s design patents (E.D. Mo., No. 4:03cv00264(CDP)).
49. In 2004, PRL Holdings, Inc. (Polo Ralph Lauren) brought an action against
Restoration Hardware with respect to its “Lauren Collection” of sofas, claiming trademark
infringement, dilution, and unfair competition (S.D.N.Y., No. 1:04cv01964(LAK)).
50. In 2005, the Good Home Co. filed an action against Restoration Hardware,
alleging that the company was affixing Good Home Co. marks to Restoration Hardware’s own
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products and selling them without any authorization from the Good Home Co. (S.D.N.Y., No.
1:05cv02026(TPG)).
51. Also in 2005, the Hamil Textiles division of Tangiers International filed an action
against Restoration Hardware, claiming that Restoration Hardware committed copyright
infringement by using on its bedding products an artistic pattern substantially similar to one
created by Hamil, which Hamil was using in its own printed textiles (S.D.N.Y., No.
1:05cv04332(LLS)).
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52. In 2006, the Storus Corporation brought an action alleging that Restoration
Hardware was selling a money clip that infringed its design patent, trademark, and trade dress
rights with respect to its own money clip (N.D. Cal., No. 3:06cv02454(MMC)).
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53. In 2011, the antique and furnishings dealer Obsolete brought an action against
Restoration Hardware alleging intentional misrepresentation, fraudulent concealment, false
advertising, and unfair competition, claiming that a Restoration Hardware employee purchased
vintage furnishings at Obsolete, had them shipped directly to Restoration Hardware’s
headquarters, where they were subsequently reproduced (Cal. Super. Ct., Los Angeles, No.
SC112170). The complaint attached images showing the significant similarities between
Obsolete’s products and Restoration Hardware’s products. One example is below.
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COMPLAINT
54. As one store owner commented in response to the lawsuit in an article in the Los
Angeles Times, “[t]hey should call it Replication Hardware.”9
9 http://articles.latimes.com/2011/apr/30/home/la-hm-obsolete-restoration-20110430/3.
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COMPLAINT
55. In 2012, Lumetique, Inc. filed an action against Restoration Hardware alleging that
Restoration Hardware was selling a wood-wick candle product that infringed several design
patents held by Lumetique with respect to its own wood-wick candles (E.D. Tex., No.
2:12cv00049(JRG)).
Restoration Hardware Former CEO and Present “Creator and Curator” Gary Friedman’s
Active Participation in and Control of Restoration Hardware’s Unlawful Activities
56. Defendant Gary Friedman is former CEO and present “Creator and Curator” of
Restoration Hardware. On information and belief, he has directed, controlled, ratified, and
participated in Restoration Hardware’s infringing and unlawful activity. And as a substantial
equity owner in Restoration Hardware, Friedman, along with other investors, has and will
continue to profit substantially from such activity.
57. On information and belief, Friedman plays a core, central role in Restoration
Hardware’s infringing and unlawful activities. According to the Restoration Hardware website,
Friedman is personally “responsible for strategy, creative, design direction and concept
development for the Company.”10 In an article in the Wall Street Journal from 2011 profiling
Friedman, he is quoted as saying that Restoration Hardware is “completely personal—the kind of
aesthetic that I believe in, the way to live that I believe in.”11 The article further notes that “a
visit to Friedman’s home . . . reveals just how closely connected the brand is to Friedman,” and
quotes a competitor saying that “Restoration Hardware is dead . . . . It’s become a Gary Frie
interpretation of home furnishings.”
dman
12 A New York Times profile from earlier this year similarly
10 http://www.restorationhardware.com/company-info/management-team.jsp. 11 http://online.wsj.com/article/SB10001424052748704436004576300181946707482.html#ixzz27LthcpFE. 12 Id.
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states that Friedman “is considered the driving force behind the company’s vision and
aesthetic.”13
58. Friedman has a series of “letters” posted on the Restoration Hardware website
describing the direction of the company; as he notes in one post, “[i]n the spirit of ‘just being me,’
we will continue to push the boundaries, be authentic to our own unique point of view . . . .”14
59. On information and belief, Friedman has been and is a primary actor in the
activities of Restoration Hardware that give rise to Emeco’s claims; he has had knowledge of,
consented to, and exercised control over Restoration Hardware’s unlawful and infringing
activities.
Restoration Hardware’s Conduct Causes Immediate and
Irreparable Harm to Emeco
60. The significant harm caused by Restoration Hardware’s conduct is both immediate
and irreparable to Emeco’s exclusive rights.
61. Restoration Hardware’s unlawful activities have caused, and will continue to
cause, irreparable injury by hurting the goodwill and reputation established by Emeco’s iconic
furniture pieces and the Navy Chair® name. The Navy Chair® design and name are at the core
of the Emeco brand; they are equivalent to Nike’s Swish or the Mercedes Benz logo. Restoration
Hardware’s cheap counterfeit knockoffs will irreparably harm Emeco’s reputation and significant
goodwill in the marketplace.
62. The irreparable harm caused and, in the future, threatened by Restoration
Hardware is on a massive scale, incomparable to that caused by a run-of-the mill, small-time
counterfeiter. Restoration Hardware is an established company with 87 retail and 10 outlet stores
throughout the United States and Canada. It sends its catalog to tens of millions of consumers
each year. Consumers are likely to be deceived into thinking that the products Restoration
Hardware sells are genuine, legitimate articles, not cheap counterfeits made overseas.
13 http://dealbook.nytimes.com/2012/08/16/restoration-hardware-co-chief-steps-down-after-an-inquiry/. 14 http://www.restorationhardware.com/content/page.jsp?id=garysp11&&link=GarysLetter.
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63. An injunction also would serve to prevent Restoration Hardware from continuing
to infringe Emeco’s Navy Chair® trade dress and trademarks, and would resolve the ongoing and
future public confusion regarding Emeco’s Navy Chair® trade dress and trademarks.
FIRST CAUSE OF ACTION (TRADE DRESS COUNTERFEITING AND INFRINGEMENT,
15 U.S.C. §§ 1114(1), 1125(a))
64. Emeco incorporates by reference the allegations of paragraphs 1-63 above as if
fully set forth herein.
65. Emeco has exclusively manufactured, advertised, and sold the highly distinctive
and famous Navy Chair® product line. The highly distinctive and famous Navy Chair® product
line has a quality exclusively controlled by Emeco.
66. The United States Patent and Trademark Office has legally issued federal
registration nos. 3191187 and 2511360, which cover the design and outline of the Navy Chair®.
Under these registrations, Emeco has the exclusive right to use the design and outline of the Navy
Chair® in connection with its furniture and marketing materials. Emeco also has common law
rights in the design of its Navy Chair® products.
67. The protected trade dress of the Navy Chair® product line is inherently distinctive,
unique, and non-functional.
68. Emeco has expended much effort in the form of advertising, promotion, and sales
to promote the trade dress configuration of the Navy Chair® product line as distinctive of
Emeco’s goods in commerce.
69. As a result of such extensive and exclusive use and promotion of the Navy Chair®
product line trade dress configuration, the configuration has developed secondary meaning as an
indicator that Emeco is the source of the goods.
70. Emeco’s trademarked design represents valuable goodwill owned by Emeco.
71. Restoration Hardware has knowingly and willfully used in interstate commerce
counterfeits that are identical with, or substantially indistinguishable from, Emeco’s Navy Chair®
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trade dress configuration in connection with the sale, offering for sale, distribution, and
advertising of goods and/or services.
72. Restoration Hardware’s said use is likely to cause confusion, mistake, or deception
as to the source of origin, sponsorship, or approval of its products, in that purchasers or others are
likely to believe Restoration Hardware’s products are Emeco’s products or the products of a
company legitimately connected with, approved by, or related to Emeco.
73. Restoration Hardware’s said use enables it to deceptively advertise, merchandise,
market, display, and promote that its products emanate from Emeco or from a concern
legitimately connected with or approved by Emeco, and to substitute and pass off its products as
Emeco’s products. It also enables purchasers of Restoration Hardware’s products to represent
and display that such products emanate from Emeco or from a concern legitimately connected
with or approved by Emeco.
74. Restoration Hardware’s said knowing and willful use has imitated, counterfeited,
and infringed Emeco’s trade dress configuration in interstate commerce in violation of Section
32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
75. Restoration Hardware’s aforesaid acts also constitute false designation of
association, affiliation, connection, endorsement, and/or approval under 15 U.S.C. § 1125(a).
76. Upon information and belief, Restoration Hardware has engaged in such conduct
willfully, deliberately, and in conscious disregard of Emeco’s rights, making this an exceptional
case within the meaning of 15 U.S.C. § 1117.
77. By reason of the foregoing, Emeco has been injured in an amount not yet
ascertained and is entitled to the remedies provided for in 15 U.S.C. §§ 1116 et seq.
78. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its trade dress and to the business,
positive reputation, and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief pursuant to 15 U.S.C. §§ 1116 et seq.
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SECOND CAUSE OF ACTION (TRADEMARK COUNTERFEITING AND INFRINGEMENT,
15 U.S.C. §§ 1114(1), 1125(a))
79. Emeco incorporates by reference the allegations of paragraphs 1-78 above as if
fully set forth herein.
80. The United States Patent and Trademark Office has legally issued federal
registration nos. 3016791 and 3912854, which cover the marks “Navy Chair” and “111 Navy
Chair.” Under these registrations, Emeco has the exclusive right to use the Navy Chair®
trademark in connection with its furniture. Emeco also has common law rights in this trademark
in connection with its furniture.
81. Emeco has used the inherently distinctive and famous Navy Chair® trademarks
continuously in connection with its furniture.
82. Emeco has exerted significant effort in the form of advertising, promotion, and
sales to promote the Navy Chair® trademark as a name distinctive of Emeco’s goods in
commerce.
83. As a result of such extensive and exclusive use and promotion of the Navy Chair®
trademark, the mark has developed secondary meaning as an indicator that Emeco is the source of
goods identified by the Navy Chair® trademark.
84. Emeco’s Navy Chair® trademark represents valuable goodwill owned by Emeco.
85. Restoration Hardware has knowingly and willfully used in interstate commerce the
“Naval Chair” mark, a counterfeit mark that is substantially indistinguishable from Emeco’s Navy
Chair® trademark, in connection with the sale, offering for sale, distribution, and advertising of
goods and/or services.
86. Restoration Hardware’s said use is likely to cause confusion, mistake, or deception
as to the source of origin, sponsorship, or approval of Restoration Hardware’s products, in that
purchasers or others are likely to believe Restoration Hardware’s products are Emeco’s products
or the products of a company legitimately connected with, approved by, or related to Emeco.
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87. Restoration Hardware’s use enables it to represent and deceptively advertise,
merchandise, market, display, and promote that Restoration Hardware’s products emanate from
Emeco or from a concern legitimately connected with or approved by Emeco, and to substitute
and pass off Restoration Hardware’s products as Emeco’s products. It also enables purchasers of
Restoration Hardware’s products to represent and display that such products emanate from
Emeco or from a concern legitimately connected with or approved by Emeco.
88. Restoration Hardware’s said knowing and willful use has imitated, counterfeited,
and infringed Emeco’s Navy Chair® trademark in interstate commerce in violation of 15 U.S.C.
§ 1114(1).
89. Restoration Hardware’s aforesaid acts constitute trademark infringement in
violation of 15 U.S.C. § 1125(a).
90. Upon information and belief, Restoration Hardware has engaged in such conduct
willfully, deliberately, and in conscious disregard of Emeco’s rights, making this an exceptional
case within the meaning of 15 U.S.C. § 1117.
91. By reason of the foregoing, Emeco has been injured in an amount not yet
ascertained and is entitled to the remedies provided for in 15 U.S.C. §§ 1116 et seq.
92. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its marks and to the business,
positive reputation and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief pursuant to 15 U.S.C. §§ 1116 et seq.
THIRD CAUSE OF ACTION
(FEDERAL DILUTION, 15 U.S.C. § 1125(c))
93. Emeco incorporates by reference the allegations of paragraphs 1-92 above as if
fully set forth herein.
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94. Emeco’s Navy Chair® trade dress and trademarks are famous and distinctive and
became famous and distinctive before any of the unlawful conduct of Restoration Hardware
complained of herein.
95. Restoration Hardware’s aforesaid acts constitute trademark uses in commerce that
are likely to dilute the distinctive quality of the Navy Chair® trade dress and trademarks, by both
blurring and tarnishment, in violation of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c).
96. Upon information and belief, Restoration Hardware has engaged in such conduct
willfully, deliberately, and in conscious disregard of Emeco’s rights, making this an exceptional
case within the meaning of 15 U.S.C. § 1117.
97. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its marks and to the business,
positive reputation and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief pursuant to 15 U.S.C. § 1116.
FOURTH CAUSE OF ACTION
(COMMON LAW TRADE DRESS INFRINGEMENT)
98. Emeco incorporates by reference the allegations of paragraphs 1-97 above as if
fully set forth herein.
99. The general consuming public of California widely recognizes the Navy Chair®
trade dress configuration as designating Emeco as the source of services and/or goods. Emeco
has common law trade dress rights in the Navy Chair® trade dress configuration under California
law.
100. Restoration Hardware has knowingly and willfully used in California counterfeits
that are identical with, or substantially indistinguishable from, Emeco’s Navy Chair® product
trade dress configuration in connection with the sale, offering for sale, distribution, and
advertising of goods and/or services.
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101. Restoration Hardware’s said use is likely to cause confusion, mistake, or deception
as to the source of origin, sponsorship, or approval of its products, in that purchasers or others are
likely to believe Restoration Hardware’s products are Emeco’s products or the products of a
company legitimately connected with, approved by, or related to Emeco.
102. Restoration Hardware’s said use enables it to deceptively advertise, merchandise,
market, display, and promote that its products emanate from Emeco or from a concern
legitimately connected with or approved by Emeco, and to substitute and pass off its products as
Emeco’s products. It also enables purchasers of Restoration Hardware’s products to represent
and display that such products emanate from Emeco or from a concern legitimately connected
with or approved by Emeco.
103. Restoration Hardware’s said knowing and willful use has imitated, counterfeited,
and infringed Emeco’s trade dress configuration in commerce in violation of California common
law.
104. Upon information and belief, Restoration Hardware has engaged in such conduct
willfully, deliberately, and in conscious disregard of Emeco’s rights.
105. By reason of the foregoing, Emeco has been injured in an amount not yet
ascertained and is entitled to the remedies provided for it under the common law.
106. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its trade dress and to the business,
positive reputation, and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief.
FIFTH CAUSE OF ACTION
(COMMON LAW TRADEMARK INFRINGEMENT)
107. Emeco incorporates by reference the allegations of paragraphs 1-106 above as if
fully set forth herein.
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108. The general consuming public of California widely recognizes the Navy Chair®
trademark as designating Emeco as the source of services and/or goods. Emeco has common law
rights in the Navy Chair® trademark under California law.
109. Restoration Hardware has knowingly and willfully used in California the “Naval
Chair” mark, a counterfeit mark that is substantially indistinguishable from Emeco’s Navy
Chair® trademark, in connection with the sale, offering for sale, distribution, and advertising of
goods and/or services.
110. Restoration Hardware’s said use is likely to cause confusion, mistake, or deception
as to the source of origin, sponsorship, or approval of its products, in that purchasers or others are
likely to believe Restoration Hardware’s products are Emeco’s products or the products of a
company legitimately connected with, approved by, or related to Emeco.
111. Restoration Hardware’s said use enables it to deceptively advertise, merchandise,
market, display, and promote that its products emanate from Emeco or from a concern
legitimately connected with or approved by Emeco, and to substitute and pass off its products as
Emeco’s products. It also enables purchasers of Restoration Hardware’s products to represent
and display that such products emanate from Emeco or from a concern legitimately connected
with or approved by Emeco.
112. Restoration Hardware’s said knowing and willful use has imitated, counterfeited,
and infringed Emeco’s trademarks in commerce in violation of California common law.
113. Upon information and belief, Restoration Hardware has engaged in such conduct
willfully, deliberately, and in conscious disregard of Emeco’s rights.
114. By reason of the foregoing, Emeco has been injured in an amount not yet
ascertained and is entitled to the remedies provided for it under the common law.
115. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its trade dress and to the business,
positive reputation, and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief.
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SIXTH CAUSE OF ACTION (DILUTION, CAL. BUS. & PROF. CODE §§ 14330 et seq. AND COMMON LAW)
116. Emeco incorporates by reference the allegations of paragraphs 1-115 above as if
fully set forth herein.
117. Restoration Hardware’s aforesaid acts in California constitute trademark uses in
commerce that are likely to dilute the distinctive quality of the Navy Chair® trade dress and
trademarks, by both blurring and tarnishment, in violation of Section 14330 of the California
Business and Professions Code.
118. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its marks and to the business,
positive reputation and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief.
SEVENTH CAUSE OF ACTION (CAL. BUS. & PROF. CODE §§ 17200 et seq.)
119. Emeco incorporates by reference the allegations of paragraphs 1-118 above as if
fully set forth herein.
120. Restoration Hardware’s acts, as alleged above, constitute unlawful and/or unfair
business practices in violation of the California Unfair Competition Law (“UCL”), Cal. Bus. &
Prof. Code §§ 17200 et seq.
121. Restoration Hardware’s said acts are unlawful and/or unfair under the UCL
because they are likely to cause confusion, mistake, or deception as to the source of origin,
sponsorship, or approval of its products, in that purchasers or others are likely to believe
Restoration Hardware’s products are Emeco’s products or the products of a company legitimately
connected with, approved by, or related to Emeco.
122. Restoration Hardware’s said acts are unlawful and/or unfair under the UCL
because they enable it to deceptively advertise, merchandise, market, display, and promote that its
products emanate from Emeco or from a concern legitimately connected with or approved by
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Emeco, and to substitute and pass off its products as Emeco’s products. Restoration Hardware
also enables purchasers of Restoration Hardware’s products to represent and display that such
products emanate from Emeco or from a concern legitimately connected with or approved by
Emeco.
123. By reason of the foregoing, Emeco has been injured in an amount not yet
ascertained and is entitled to the remedies provided for in Sections 17200 et seq. of the Cal. Bus.
& Prof. Code.
124. Restoration Hardware’s conduct described herein has caused, and if not enjoined
will continue to cause, irreparable damage to Emeco’s rights in its trade dress and to the business,
positive reputation and goodwill of Emeco, which cannot be adequately compensated solely by
monetary damages. Emeco therefore has no adequate remedy at law and seeks preliminary and
permanent injunctive relief.
PRAYER FOR RELIEF
WHEREFORE, Emeco prays for judgment against Restoration Hardware and for the
following relief:
A. Restoration Hardware, its officers, directors, agents, employees, privies,
successors, and assigns, and all persons in active concert or participation with them who receive
actual notice or knowledge of this injunction by personal service or otherwise, be enjoined and
restrained preliminarily and permanently:
1. from further using Navy Chair®, Naval, or any other confusingly similar
variation in connection with the sale, manufacturing, or advertising of furniture
2. from manufacturing, selling, importing, exporting into the United States, or
advertising furniture mimicking Emeco’s Navy Chair® trademark and trade dress, described
above
3. from further unlawfully trading upon and misappropriating the goodwill and
reputation of Emeco and competing unfairly with Emeco;
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B. Restoration Hardware file with the Court and serve on Emeco in accordance with
15 U.S.C. § 1116, within thirty (30) days after service on them of such injunction (or such
extended period as the Court may direct), a report in writing and under oath, setting forth in detail
the manner and form in which Restoration Hardware has complied with the injunction;
C. In accordance with 15 U.S.C. § 1116, Restoration Hardware deliver to Emeco, at
Restoration Hardware’s expense, for destruction or other disposition, all products, including,
without limitation, all furniture, labels, packaging, signs, prints, advertisements, promotional, and
other materials incorporating, bearing or displaying a trademark or trade dress confusingly similar
to the aforementioned trademarks or aforementioned trade dress of Emeco or which otherwise
violates 15 U.S.C. §§ 1114 or 1125(a), in the possession, custody, or control of Restoration
Hardware, as well as any reproduction, counterfeit, copy, or colorable imitation thereof, and all
plates, molds, matrices, masters, or other materials or means of making the same;
D. Restoration Hardware provide direct notice to all recipients of its catalog and on its
website that the “Naval Chair” product line is no longer available, that it was an unauthorized and
unlawful replica of the Navy Chair® product line, and that consumers interested in genuine Navy
Chair® products may purchase them from Emeco or its authorized retail partners;
E. Restoration Hardware be required to account and pay over to Emeco all gains,
profits, and advantages derived from its violation of 15 U.S.C. §§ 1114 and 1125(a), and in
addition the damages which Emeco has sustained by reasons thereof, together with legal interest
from the date of accrual thereof;
F. Because of the willful nature of said violations and pursuant to 15 U.S.C. § 1117,
Restoration Hardware be required to pay over to Emeco three times the amount of said profits and
damages;
G. If Emeco so elects before final judgment, Restoration Hardware be required to pay
over to Emeco statutory damages pursuant to 15 U.S.C. § 1117(c) for the willful or non-willful
use of a counterfeit trade dress and mark;
H. Restoration Hardware be required to account and pay to Emeco all gains, profits,
and advantages derived by it from and by reason of its violation of unfair competition under
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California law, together with the damages which Emeco has sustained as a result thereof, and
legal interest from the date of accrual thereof;
I. Because of the willful and deliberate nature of Restoration Hardware’s acts and the
willful disregard for the rights of Emeco, Restoration Hardware be required to pay over to Emeco
exemplary damages in an amount to be determined by the Court;
J. Restoration Hardware be required to pay over to Emeco its reasonable attorney
fees and costs pursuant to 15 U.S.C. § 1117 and applicable California statutory law; and
K. Such other and further relief as this Court deems just and proper.
DEMAND FOR JURY TRIAL
Emeco hereby demands a jury trial of all issues in this Complaint which are triable to a
jury.
DATED: October 1, 2012
Munger, Tolles & Olson LLP
By: /s/ John W. Spiegel JOHN W. SPIEGEL
Exhibit 1
Exhibit 2