Maya Swimwear v Maya Swimwear bikini battle
-
Upload
fame-appeal -
Category
Documents
-
view
743 -
download
3
description
Transcript of Maya Swimwear v Maya Swimwear bikini battle
FameA
ppea
l.com
1
UNITED STATES DISTRICT COURT DISTRICT OF DELAWARE
MAYA SWIMWEAR, CORP. and CAROLINA DINARDI, Plaintiffs, vs. MAYA SWIMWEAR, LLC (D/B/A MAYA SWIMWEAR USA); DAVID MCKINNEY, and TODD FORD, Defendants.
Civil Action No.: 1:11-cv-00059-UNA
SECOND AMENDED COMPLAINT
Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi, by their attorneys, file
this Complaint against the Defendants, alleging as follows:
JURISDICTION AND VENUE
1. This action essentially arises from Defendants continued infringement of
Plaintiffs trademark (and trade dress) pursuant to the Lanham Trademark Act 15 U.S.C.
§§ 1051 et seq. (the “Lanham Act”) from October 13, 2010 to the present. Accordingly,
this Court has federal question jurisdiction over the subject matter of this action pursuant
to 15 U.S.C. § 1221 and 28 U.S.C. §§ 1338(a), (b). Moreover, Defendant Maya
Swimwear, LLC, is a company organized under the laws of the State of Delaware, hence
venue in this district is proper under 28 U.S.C. § 1391(b).
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 1 of 12 PageID #: 98
FameA
ppea
l.com
2
PARTIES
2. Plaintiff Maya Swimwear, Corp. (hereinafter “Maya Argentina”) is a
company organized under the laws of the State of Florida, with a registered address at:
7570 S. Federal Hwy, Suite 7, Hypoluxo, FL 33462.
3. Plaintiff Carolina Dinardi is the owner of Maya Swimwear, Corp., and has
an address at: Guatemala 6045 2 Piso Depto."5" C.P (1425) Capital Federal, Buenos
Aires. Argentina.
4. Maya Swimwear, LLC (d/b/a Maya Swimwear USA; hereinafter “Maya
USA”) is domiciled in Delaware at its registered agent’s (Corporation Trust Company)
address: 1209 Orange Street, Wilmington, Delaware 19801.
5. Upon information and belief, Defendant David McKinney is a
Member/Member Manager of Defendant Maya Swimwear, LLC; he resides at: 305 West
50th Street, Suite 22A, New York, New York 10019.
6. Upon information and belief, Defendant Todd Ford is a Member/Member
Manager of Defendant Maya Swimwear, LLC; he resides at: 635 Euclid Avenue, #106,
Miami Beach, Florida 33159.
THE BACKGROUND OF THE ACTION
7. Plaintiffs repeat and reiterate each and every allegation contained in
Paragraphs 1-6 of the Complaint, and makes them a part hereof as if set forth at length
herein.
8. In 2002/2003 Plaintiff Carolina Dinardi designed a swimsuit collection,
collectively named Maya Swimwear; consisting of bikinis with a distinctive “Argentine
cut” in the derrière.
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 2 of 12 PageID #: 99
FameA
ppea
l.com
3
9. Ms. Dinardi owns the Maya Swimwear trademark (including the
distinctive logo), the website: www.mayaswimwear.com, the swimsuit designs, and the
know-how of the manufacturing process of every particular style; she properly registered
the name and the logo she created in Argentina, and began to explore the possibility of
distributing her product in the USA and throughout the World.
10. In July of 2002, Ms. Dinardi presented her first collection in the United
States, in order to test the market and the acceptance of her designs. Ms. Dinardi
combined the very distinctive “Argentine cut” with the more conservative American
“cuts.”
11. Ms. Dinardi received excellent feedback and so decided to start a business.
She visited many stores and boutiques in the United States to show her product; she also
sent samples and catalogues and made many contacts many of whom later became Maya
swimwear clients.
12. By the end of 2002, Ms. Dinardi had opened 39 new accounts in the
United States. During this time, she formed Maya Swimwear Corp. in Florida so that she
could begin to sell Maya bikinis in the States and also for the purpose of registering her
trademark there. Ms. Dinardi requested the domain name: www.mayaswimwear.com, on
October 30, 2002.
13. In or about July, September and October of 2002 Ms. Dinardi contacted
several boutiques in Florida, California, and New York, that bought her Maya Swimwear
collection.
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 3 of 12 PageID #: 100
FameA
ppea
l.com
4
14. At that time, Carolina Dinardi initially used an American company to
import and implement sales and deliver the products in the States – Joe Market USA
LLC.
15. By 2003, the Maya Swimwear collection was recognized by many
customers and the fashion press; Ms. Dinardi also received accolades for her work as the
chief designer of the swimwear line. The acceptance and success of Ms. Dinardi’s design
in its first year, made her believe that the Maya swimwear brand had a promising future
ahead.
16. In 2003, Carolina Dinardi presented the 2004 collection at the Miami
Trade Show with great success, opening new accounts in the process.
17. That same year (in 2003) Defendant Todd Ford contacted Carolina
Dinardi to make a business proposal. Previously, (in 2002), he had requested bikini
samples from her. In September of 2003, he and his partner, Defendant David
McKinney, traveled to Argentina to present a business proposal. Messrs. Ford,
McKinney and Ms. Dinardi reached an agreement and signed a Letter of Intent
(hereinafter “Maya LOI”) for the sale and distribution of Maya Swimwear bikinis in the
United States; under the Maya LOI, Messrs. Ford and McKinney’s company, Defendant
Maya USA was responsible for meeting certain sales goals in the first 24 months of the
association with Maya Argentina.
18. On or about October 1, 2003, Messrs. Ford and McKinney endeavored to
pursue existing Maya Argentina clients in the United States, with the promise to continue
the Maya line and improve sales. Ms. Dinardi provided them with a list of the names and
contacts of her current customers and also a list of potential customers that she had
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 4 of 12 PageID #: 101
FameA
ppea
l.com
5
already contacted in 2002 and the first quarter of 2003 (in all, a total of approximately
160 stores including department stores such as Bloomingdales, Bergdorf Goodman,
Barneys). Additionally, Carolina Dinardi provided them with the personal phone
numbers and names of the buyers that contacted her at the 2003 Trade Show, and other
important potential customers that showed interest in her collection.
19. Ms. Dinardi filed for registration of the Maya Swimwear distinctive
trademark on April 20, 2004, receiving full registry of the mark on October 9, 2007
(Registration No.: 3306450); the mark had been in use in the United States since at least
the Fall of 2002 by then distributor Joe Market USA LLC).
20. As a consequence of Maya USA not meeting any sales goals, the Maya
LOI expired in October of 2005. Notwithstanding the same, Maya Argentina remained
associated with Maya USA to continue to sell and market Maya Swimwear bikinis.
21. Ms. Dinardi asked Messrs. Ford and McKinney several times to draft a
new business contract with her for continued sales in the United States through Maya
USA. As they both presented themselves as lawyers, knowledgeable in how to do so,
Ms. Dinardi believed in their continued promises to put together such a new contract that
they said they were working on – year after year; though, none was ever forthcoming.
22. Despite the fact that the original Maya LOI had expired, and, there was no
new contract with Messrs. Ford and McKinney, Ms. Dinardi kept her business
relationship with them based solely upon past goodwill.
23. Throughout the relevant time period (from 2003 through to the present),
Ms. Dinardi continued to design and manufacture every Maya collection through her
company “Maya by Carolina Dinardi” and Maya Swimwear, Corp. She also traveled to
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 5 of 12 PageID #: 102
FameA
ppea
l.com
6
Florida every year to present the collection at the Miami trade Show. Ms. Dinardi also
continued to meet and obtain customers by explaining to them the concept and every
detail related to the collection. She spoke with and followed-up on orders from
customers. She supported all her travel expenses, hotels, etc. on each and every visit.
24. Ms. Dinardi was the driving force behind the image of Maya Swimwear.
She continued to conduct photo shoots and designed the catalogues, first in Argentina
(until 2005), and thereafter in the USA. Ms. Dinardi traveled constantly to the United
States to mind the image of the brand and participated in the decision-making process of
all main issues in the continued sales and marketing of the Maya Swimwear product line.
25. From 2003 to 2005, Maya Argentina, through Ms. Dinardi was funding all
the photo-shoots in Argentina (hired models, hired photographers, etc.); additionally, Ms.
Dinardi designed the Maya Swimwear catalog, paid for the printing of said catalog, and
the launches; Maya USA paid the models.
26. The Maya Swimwear brand became very well known as a consequence of
various celebrities who chose to wear Ms. Dinardi’s designs. She procured many clients
herself and she knew most of the buyers of the main customers of Maya Swimwear
because she personally showed them the collection each year, in trade show after trade
show, in order to maintain Maya Swimwear’s relationships (since 2002).
27. It should be noted that Maya USA, by and through Messrs. Ford and
McKinney, “booked” all trade shows for Maya Argentina, after the Maya LOI became
effective.
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 6 of 12 PageID #: 103
FameA
ppea
l.com
7
28. Despite this recognition, sales plummeted (according to Maya USA and
Messrs. Ford and McKinney) through 2010. Sales in the United States, though, continued
to chiefly be the responsibility of Messrs. Ford and McKinney.
29. Then, in 2010, Messrs. Ford and McKinney failed to book a booth (and, of
course, a Maya presence) at the Miami Trade Show, as they had previously committed to
(and had done in the years prior), nor did they advise Ms. Dinardi (or therefore Maya
Argentina) of the same (despite her repeated inquiries) until it was too late for her to do it
herself.
30. The 2011 Maya Collection was not presented at the Miami Trade show for
the first time since the brand was in business, thus causing great damage to the image of
the brand, and compromising the continuity of the business.
31. In the past six months preceding this action, Mr. Ford expressed his
repeated his lack of interest in continuing to work for Maya USA, claiming that Ms.
Dinardi was “a failure as a designer” and that “the mystique” he allegedly “created
surrounding the brand had been lost.” Paradoxically, Mr. McKinney and he continued to
illegally utilize the Maya Swimwear name brand name on www.buymaya.com until
January 11, 2011, and now again from January 19, 2011 to the present. Further, Maya
USA continues to market the Maya Swimwear brand on Twitter and Facebook and is
actively preparing a “launch” of products – Maya Argentina decided that the relationship
should end.
32. On or about October 13, 2010, Ms. Dinardi (and Maya Argentina) sent
Maya USA a letter memo officially severing ties to Maya USA and Messrs. Ford and
McKinney, ending any and all business relations with them predicated on the Maya LOI.
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 7 of 12 PageID #: 104
FameA
ppea
l.com
8
33. Despite the October 13th Memo, Maya USA continued to market and sell
bikinis in the United States, bearing the Maya Trademark/tradedress, in violation of the
Lanham Act.
34. Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi, now bring this
action against Defendant Maya Swimwear, LLC, for an order declaring that from the
moment the Maya LOI was terminated and the business relationship between Maya
Argentina and Maya USA was severed, Defendant Maya Swimwear, LLC (d/b/a Maya
Swimwear, USA) and/or Messrs. Ford and McKinney (as officers, operators, owners,
and/or members of the same), have no ownership interests in, or rights to utilize, the
Maya Swimwear trademark/tradedress and shall be enjoined from having any ownership
interests in, or right to utilize the same in the future.
FIRST COUNT
(Declaratory judgment)
33. Plaintiffs repeat and reiterate each and every allegation contained in
Paragraphs 1-32 of the Complaint, and makes them a part hereof as if set forth at length
herein.
34. Pursuant to Argentine law, Maya Argentina properly terminated the Maya
LOI with the Defendants on or about October 13, 2010.
35. Despite this fact, the Defendants continued to utilize the Maya Swimwear
Trademark/tradedress in the United States in violation of the Lanham Act.
36. Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi, seek a declaratory
judgment that since the Maya LOI was terminated and the business relationship between
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 8 of 12 PageID #: 105
FameA
ppea
l.com
9
Maya Argentina and Maya USA has been severed, Defendant Maya Swimwear, LLC
(d/b/a Maya Swimwear, USA) and/or by inference Messrs. Ford and McKinney (as
officers, operators, owners, and/or members of the same), have no ownership interests in,
or rights to utilize, the Maya Swimwear trademark/tradedress.
SECOND COUNT
(Violation of the Lanham Act)
37. Plaintiffs repeat and reiterate each and every allegation contained in
Paragraphs 1-36 of the Complaint, and makes them a part hereof as if set forth at length
herein.
38. For the foregoing reasons, Plaintiffs hereby assert a claim against
Defendants for injunctive and monetary relief pursuant to Section 43(a) of the Lanham
Act 15 U.S.C. §1125(a) with regard to the false designation of origin and false
description and representations in commerce of Defendants’ unauthorized merchandise.
THIRD COUNT
(Infringement of Registered Trademark)
39. Plaintiffs repeat and reiterate each and every allegation contained in
Paragraphs 1-38 of the Complaint, and makes them a part hereof as if set forth at length
herein.
40. For the foregoing reasons, Plaintiffs hereby assert a claim for injunctive
and monetary relief pursuant to 15 U.S.C. §1114(b) with respect to Defendants’
infringement of the registered trademark.
WHEREFORE, Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi
respectfully request that this Court enter an order as follows:
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 9 of 12 PageID #: 106
FameA
ppea
l.com
10
A. A declaratory judgment finding that the Maya LOI has been terminated;
B. A declaratory judgment finding that Defendant Maya Swimwear, LLC
(d/b/a Maya Swimwear, USA) has no ownership interest(s) in the Maya Swimwear
Trademark/tradedress;
C. Injunctive relief in the form of a permanent injunction prohibiting
Defendants their agents, employees, officers, successors and assigns, in this and all other
judicial districts of the United States, from (1) manufacturing, selling, distributing,
offering, holding or advertising for sale any products, merchandise, or goods bearing the
name, trademark, or likeness of the Maya Swimwear Trademark/tradedress or any
colorable variation or imitation thereof, and (2) representing that any products,
merchandise, or goods manufactured, distributed, sold, held for sale, or advertised by
them is sponsored or authorized by Plaintiffs in this District or any other district in which
Plaintiffs seek to enforce this Court’s injunctive order.
D. Injunctive relief in the form of a mandatory injunction mandating that
Defendants deliver up for destruction any and all unauthorized products, merchandise, or
goods manufactured or held for sale by them.
E. Awarding damages to Plaintiffs in an amount to be determined;
F. Awarding Plaintiffs their costs and expenses, including reasonable
attorney’s fees in connection with this action; and
G. Granting such other, further, and different relief as the Court may deem
just and proper.
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 10 of 12 PageID #: 107
FameA
ppea
l.com
11
FOURTH COUNT
(Tortious Interference with Contractual Relations)
41. Plaintiffs repeat and reiterate each and every allegation contained in
Paragraphs 1-40 of the Complaint, and makes them a part hereof as if set forth at length
herein.
42. Plaintiffs hired a one Christina Pino as an employee in or about late
January, 2011.
43. Upon information and belief, Defendants had previously fired Ms. Pino in
early December of 2010.
44. Ms. Pino was an employee “at-will,” and had no written contract of
employment with the Defendants.
45. Ms. Pino signed no non-disclosure and/or confidentiality agreements with
the Defendants.
46. Ms. Pino signed no non-competition agreements with the Defendants.
47. On February 3, 2011, Defendants threatened to sue Plaintiffs over their
hiring of Ms. Pino. See letter, herewith attached as Exhibit “A.”
48. Moreover, on that same date, Defendants inappropriately threatened
criminal prosecution of Plaintiffs for said hire.
49. Additionally, on that same date, by letter under separate cover, Defendants
have threatened to interfere with Plaintiffs’ ongoing and relationships with existing
customers/buyers and/or prospective clients. See letter, herewith attached as Exhibit “B.”
50. Defendants are engaging in this conduct to interfere with and harass
Plaintiffs in their business pursuits and expectations.
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 11 of 12 PageID #: 108
FameA
ppea
l.com
12
51. Defendants are also engaging in this conduct to cause Plaintiffs to expend
additional monies on frivolous litigation.
52. Defendants’ conduct is improper and tortiously interferes with Plaintiffs’
contractual relations with Ms. Pino and their ongoing and relationships with existing
customers/buyers and/or prospective clients.
WHEREFORE, Plaintiffs Maya Swimwear, Corp. and Carolina Dinardi
respectfully request that this Court enter an order as follows:
A. Awarding damages to Plaintiffs in an amount to be determined;
B. Awarding Plaintiffs their costs and expenses, including reasonable
attorney’s fees in connection with this action; and
Granting such other, further, and different relief as the Court may deem just and
proper.
Elliott Greenleaf
/s/ Neil R. Lapinski By: Neil R. Lapinski (DE No.3645) 1105 N. Market Street Suite 1700 Wilmington, DE 19801 (302) 384-9400
Daniel G. P. Marchese, Esquire The Marchese Law Firm, LLC 93 Spring Street, Suite 300 Newton, New Jersey 07860 (973) 383-3898 Attorney(s) for Plaintiffs Maya Swimwear, Corp. and
Carolina Dinardi Date: February 3, 2011
Case 1:11-cv-00059-SLR Document 14 Filed 02/03/11 Page 12 of 12 PageID #: 109