3M Innovative Properties Company et. al. v. SAS Safety

8/3/2019 3M Innovative Properties Company et. al. v. SAS Safety

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UNITED STATES DISTRICT COURT

DISTRICT OF MINNESOTA

3M INNOVATIVE PROPERTIESivil Action No.

COMPANY,

and

3M COMPANY,

Plaintiffs,

V.OMPLAINT

SAS SAFETY CORP.,Jury Trial Demanded)

Defendant.

Plaintiffs 3M Company and 3M Innovative Properties Company (collectively

"3M"), by its attorneys Bowman and Brooke LLP, for their Complaint against Defendant

SAS Safety Corp. ("SAS"), state and allege as follows:

NATURE OF THE ACTION

1 .his is an action for patent infringement arising under the patent laws of

the United States, 35 U.S.C. §§ 271, 281 - 285, and for trade dress infringement under

Section 43(a) of the Lanham Act 15 U.S.C. § 1125(a), for violation of the Minnesota

Deceptive Trade Practices Act, Minn. Stat. § 325D.44; for trade dress infringement

under the common law of Minnesota; and for unfair competition under the common law

of the State of Minnesota.

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THE PARTIES

2. Plaintiff 3M Company is a corporation organized and existing under the

laws of the State of Delaware, having its principal place of business at 3M Center, 2501

Hudson Road, St. Paul, Minnesota. 3M Company designs, develops, manufactures and

sells a wide variety of products in the United States and around the world.

3. Plaintiff 3M Innovative Properties Company is a corporation organized and

existing under the laws of the State of Delaware, having a principal place of business at

3M Center, 2501 Hudson Road, St. Paul, Minnesota.

4. Upon information and belief, Defendant SAS is a corporation organized

and existing under the laws of the State of California, having a principal place of

business located at 3031 Gardenia Avenue, Long Beach, CA 90807.

JURISDICTION

5. This Court has jurisdiction under 15 U.S.C. § 1121 and 28 U.S.C. §§ 1331

and 1338(a). The Court has supplemental jurisdiction over 3M’s state law claims

because they are related to 3M’s federal law claims and form part of the same case or

controversy.

6. This Court has personal jurisdiction over SAS because, inter a/ia, (1) SAS

conducts business in Minnesota; and (2) under the Minnesota Long Arm Statute, Minn.

Stat. § 543.19, SAS transacts business within Minnesota.

7. Venue is proper in this Court in accordance with 28 U.S.C. §§ 1391 and

1400.

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COUNT I

Patent Infringement

8.On January 24, 1995, United States Patent No. 5,384,857 ("the ’857

patent"), entitled "Snap-In Attachment for Ear Defender Cup" was duly and legally

issued by the United States Patent and Trademark Office. A true and correct copy of

the ’857 patent is attached as Exhibit A to this Complaint.

9. 3M Innovative Properties Company owns the ’857 patent by assignment.

3M Company is the exclusive licensee of the ’857 patent and has standing to bring an

action for infringement of the ’857 patent.

10 . Defendant SAS has directly infringed, contributed to the infringement of,

and/or induced infringement of the ’857 patent through the manufacture, use, sale, and

offer for sale of their products, including the SAS Digital Earmuffs. A depiction of this

product is reproduced below.

11 . The SAS Digital Earmuffs product embodies and is intended to practice

the invention described and claimed in 3M’s ’857 patent.

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12. 3M has been damaged by the infringement of the ’857 patent and will

continue to be damaged in the future unless the SAS is permanently enjoined from

infringing the ’857 patent, contributing to the infringement of the ’857 patent, and/or

inducing the infringement of the ’857 patent by others.

COUNT II

Trade Dress Infringement Pursuant To Section 43(A) Of The Lanham Act, 15

U.S.C. § 1125(A)

13 . 3M markets and distributes AM/FM radio hearing 3M hearing protection

earmuff products. A depiction of a representative 3M product is below on the left, and a

depiction of the SAS product is below on the right.

14 . 3M’s yellow and black color selection and arrangement give the 3M

products their unique appearance.

15. 3M and its predecessor company have been marketing AM/FM radio 3M

hearing protection earmuff products with this unique color scheme since 2003.

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16 . As a result of marketing of the 3M hearing protection earmuff products

with this yellow and black color, and unique color scheme, and as a result of

advertising, the 3M hearing protection products have become widely known to users of

industrial and commercial hearing safety devices as denoting and associated

exclusively with 3M and/or its predecessor company.

17 . Consequently, 3M’s trade dress for its 3M hearing protection earmuff

products has acquired a distinctiveness which serves to identify such yellow and black

colored products with 3M and/or its predecessor companies.

18 . For the purpose and with the intent of profiting from the reputation and

goodwill that 3M owns from marketing of the 3M hearing protection earmuff products,

and to divert 3M’s customers by means of deception as to the source of Defendant’s

hearing protection earmuffs, SAS has copied the 3M products’ unique coloration

scheme as is illustrated in the images appended herein. Such blatant imitation is

calculated to mislead the public.

19 . All of the infringing acts committed by SAS have been conducted without

the authority or consent of 3M, and are in violation of 3M’s trade dress rights.

20 . As a result of the acts of trade dress infringement by Defendant, as set out

in this cause of action, 3M has suffered damage to its business, reputation and goodwill,

the amount of which is to be determined at trial.

21 . 3M is informed and believes, and on the basis of such information and

belief alleges, that Defendant, by virtue of its acts of trade dress infringement, as set out

in this cause of action, has derived substantial profit and has been unjustly enriched at

the expense of 3M, in an amount and in a sum that is currently unknown to 3M.

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22.nless the acts of trade dress infringement by Defendant, as set out in

this cause of action, are restrained and enjoined, 3M will be seriously and irreparably

damaged.

COUNT Ill

Minnesota Deceptive Trade Practices Act, Minn. Stat. § 325D.44

23. 3M incorporates the allegations of paragraphs I through 22 above as if

fully set forth herein.

24. SAS has, in the course of its business, copied and used 3M’s trade dress

in a manner that has caused and will continue to cause a likelihood of confusion or a

likelihood of misunderstanding as to the source, sponsorship, approval, association, or

certification of the SAS Digital Earmuffs. SAS’s use of 3M’s trade dress is likely to

cause damage to 3M. By engaging in these activities, SAS has, and is, engaged in

deceptive trade practices within the meaning of Minn. Stat. § 325D.43, et seq.

25. 3M is entitled to an injunction pursuant to Minn. Stat. § 325D.45, subd. 1

and all other appropriate relief available to it at law.

26. SAS has willfully engaged in the described deceptive trade practices

knowing them to be deceptive.M should therefore be awarded its reasonable

attorney’s fees pursuant to Minn. Stat. § 325D.45, subd. 2.

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COUNT IV

Trade Dress Infringement under the Common Law

27. 3M incorporates the allegations of paragraphs 1 through 26 above as if


28. SAS’s copying of the distinctive appearance of 3M hearing protection

earmuff products constitutes infringement of 3M’s common law trade dress rights under

the common law of Minnesota and the laws of other states.

29. SAS’s product mimics the distinctive appearance of 3M hearing protection

earmuff products such that it is likely to cause confusion, mistake or deception

regarding the source, affiliation, characteristics, properties, relationship, or endorsement

of SASs product.

30 . SAS has infringed 3M’s trade dress rights as alleged herein with the intent

to deceive, defraud, and confuse the public.

31 . 3M has been irreparably damaged and, unless SAS is restrained and

enjoined, 3M will continue to be so damaged. 3M is entitled to its damages, an

accounting of SAS’s profits, an injunction, and all other relief afforded at law or at equity.

COUNT V

Unfair Competition under the Common Law

32 . 3M incorporates the allegations of paragraphs 1 through 31 above as if


33 . SAS’s infringement of 3M’s trade dress and other unfair and improper

practices alleged hereinabove, constitute unfair competition under the common law of

Minnesota and the laws of other states. SAS has infringed 3M’s intellectual property

rights as alleged herein with the intent to deceive, defraud, and confuse the public.

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34.AS’s unlawful acts have caused and continue to cause 3M to suffer

damages in an amount to be proven at trial. SAS’s unlawful acts have caused and

continue to cause 3M irreparable injury to 3M’s business reputation and goodwill.

35.M has been and is being irreparably damaged and, unless SAS is

restrained and enjoined, 3M will continue to be so damaged.

PRAYER FOR RELIEF

WHEREFORE, Plaintiffs respectfully request this Court:

A. Enter judgment that Defendant SAS has infringed the ’857 patent;

B. Enter an order permanently enjoining SAS and their officers, agents,

servants, employees and all persons in active concert or participation with any of them,

from infringing the ’857 patent;

C. Award 3M damages in an amount sufficient to compensate it for

Defendant’s infringement of the ’857 patent, together with pie-judgment and post-

judgment interest and costs, pursuant to 35 U.S.C. § 284;

D. Award 3M its attorneys’ fees, costs, and expenses pursuant to 35 U.S.C. §

285;

E .ssue a preliminary and final injunction enjoining Defendant, its agents and

employees, and all those controlled by or acting on behalf of Defendant, from:

(a ) Infringing in any manner on 3M’s trade dress;

(b ) Using trade dress that is in any way similar to 3M’s, and particularly

from using color scheme used in 3M’s hearing protection products;

F .ward money damages to 3M for injury to its business, reputation and

goodwill;

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G .rder an accounting of profits derived by Defendant from the acts of trade

dress infringement described above;

H .ward such other and further relief as this Court deems just, equitable,

and proper.

DEMAND FOR JURY TRIAL

Plaintiff 3M hereby demands a trial by jury of all issues so triable.

Dated: February 15, 2012OWMAN AND BROOKE LLP

By: s/Richard C. MorganRichard G . Morgan, Esq. (#157053)Timothy J. Mattson, Esq. (#0194517)

150 South Fifth Street, Suite 3000Minneapo lis, Minnesota 55402Telephone: (612) 339-8682Facsimile: (612) 672-3200

ATTORNEYS FOR PLAINTIFF

3M INNOVATIVE PROPERTIES COMPANY

And 3M COMPANY

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3M Innovative Properties Company et. al. v. SAS Safety

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