beer barrel v. deep wood - complaint

8/16/2019 Beer Barrel v. Deep Wood - Complaint

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Phillip J. Russell (10445)Justin L. James (15167)

HATCH, JAMES & DODGE, P.C.

10 West Broadway, Suite 400Salt Lake City, UT 84101Telephone: (801) 363-6363

Facsimile: (801) 363-6666 [email protected]

[email protected]

Attorneys for Plaintiff Beer Barrel, LLC

IN THE UNITED STATES DISTRICT COURT FOR THE

DISTRICT OF UTAH, CENTRAL DIVISION

THE BEER BARREL, LLC,

a Utah limited liability company

Plaintiff,

v.

DEEP WOOD BREW PRODUCTS, LLC,

a Michigan limited liability company;

MANCAN UNIVERSE, LLC, a Michiganlimited liability company; MANCANUNIVERSE, INC., a Colorado corporation.

Defendants.

COMPLAINT

Case No. 2:16-cv-00440-EJF

Magistrate Judge: Evelyn J. Furse

JURY DEMAND

Plaintiff The Beer Barrel, LLC, (“Beer Barrel”) hereby complains and alleges against

defendants Deep Wood Brew Products, LLC (“Deep Wood”), ManCan Universe, LLC

(“ManCan LLC”), and ManCan Universe, Inc. (“ManCan Inc.”) (collectively the “Defendants”)

as follows:

Case 2:16-cv-00440-EJF Document 2 Filed 05/25/16 of 8



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PARTIES

1. Plaintiff Beer Barrel is a Utah limited liability company with its principal place of

business located in American Fork, Utah.

2. Upon information and belief, Defendant Deep Wood is a Michigan limited

liability company with its principal place of business located at 1716 Deepwood Circle

Rochester Hills, MI 48307.

3. Upon information and belief, Defendant ManCan LLC is a Michigan limited

liability company with its principal place of business at 9200 E. Mineral Ave., Ste. 185,

Centennial, Colorado.

4. Upon information and belief, Defendant ManCan Inc. is a Colorado corporation

with its principal place of business located at 9200 E. Mineral Ave., Ste. 185, Centennial,

Colorado.

JURISDICTION AND VENUE

5. Jurisdiction is proper pursuant to the Federal Declaratory Judgment Act, 28

U.S.C. § 2201 and 2202. Because certain claims arise under the Patent Code, 35 U.S.C. § 1 et

seq., this Court also has jurisdiction pursuant to 28 U.S.C. § 1331 and 1338(a). This Court also

has jurisdiction pursuant to 28 U.S.C. § 1367 and 28 U.S.C. § 1332.

6. This Court has personal jurisdiction over the Defendants because the Defendants

regularly conduct business in the district and have committed acts in this judicial district which

give rise to this action. On information and belief, the Defendants sell, offer for sale, and have

sold products to residents of this jurisdiction. As explained in more detail below, Defendants




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have purposefully directed actions aimed at harming the Plaintiff in an attempt to deprive

Plaintiff of its interstate activities.

7. Venue in this district is proper pursuant to 28 U.S.C. § 1391.

GENERAL ALLEGATIONS

8. Beer Barrel sells products from its American Fork, Utah location. The Beer

Barrel’s primary products are a 128 oz. growler and a 64 oz. growler (“Beer Barrel’s Products”).

Beer Barrel’s Products are sold for the purpose of storing and serving beer.

9.

Beer Barrel’s Products are manufactured by Sino Dragon, a Chinese manufacturer

located in Tianjin, China.

10. Defendants are a competitor of the Beer Barrel and sell similar products.

11. Defendants originally sold their products under the product name Deep Wood

Brew Products, but more recently have rebranded and are now selling their products under the

ManCan brand name.

12. The Defendants’ ManCan products are manufactured by Sino Dragon, the same

Chinese manufacturer that makes the Beer Barrel’s Products.

13. Upon information and belief, Sino Dragon supplied the Defendants with the

design of their products. Indeed, Sino Dragon has patented its design in China, under Chinese

Patent Application Number 2013305314567.

14.

On or about January 21, 2016, Chris Mueller, the CEO for Deep Wood and

ManCan LLC sent the Beer Barrel a form letter on behalf of Deep Wood and ManCan LLC,

wherein Mr. Mueller claimed to have common law copyrights, design patents and pending utility

patent applications for his products. However, the only actual patent Mr. Mueller mentions is




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Design Patent D735,436 (“Design Patent D735,436”). Mr. Mueller concludes his letter

requesting that the Beer Barrel cease selling its products. [Mr. Mueller’s Letter is attached

hereto as Exhibit 1].

15. On that same day, Mr. Mueller also forwarded a letter from BrooksGroup—Deep

Wood’s attorneys. Upon information and belief, this letter was originally drafted for another

competitor, as it is dated July 24, 2015 and is addressed to “To Whom It May Concern.”

[(“Brooks Group Letter”) attached as Exhibit 2]. In the Brooks Group Letter, references are

made to Deep Wood’s attorneys who have “extensive experience in both prosecution and

litigation of intellectual property matters.” [ Id.].

16. Upon information and belief Defendants have attempted to eliminate their

competition by utilizing the form cease and desist letters to intimidate competitors and force

them to either cease transacting business—i.e. stop competing—or pay Defendants a royalty fee.

17. On or about February 1, 2016, the Beer Barrel’s attorney sent Mr. Mueller a

response indicating that the Beer Barrel had not infringed upon any of Defendants’ alleged

patents and did not intend to.

18. Two week later, Mr. Kenneth F. Brooks, from the Brooks Group responded on

behalf of ManCan—Mr. Brooks did not specify ManCan LLC or ManCan Inc. [“Brooks Group

Response Letter” attached as Exhibit 3]. Again in that letter the only patent mentioned is Design

Patent D735,436. The letter also identifies Design Patent Application 29/471,710 as a “recently

Allowed U.S. Design Patent.”




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19. On March 29, 2016, nearly 6 weeks after Deep Wood’s attorneys claimed that the

application was allowed, the U.S. Patent and Trademark Office granted a patent for Design

Patent Application 29/471,710 under the Patent Number D752,839.

20. The only patents the Defendants allege or have alleged the Beer Barrel infringes

upon are Design Patent Nos. D752,839 and D735,436 (collectively “Defendants’ Patents”).

21. After asserting that Beer Barrel infringes Defendants Patents, the Response Letter

demands that the Beer Barrel “cease all sales of the mini-keg growler in question,” enter into a

“Licensing Agreement” with the ManCan, or face “statutory damages per occurrence of patent

infringement,” including a possible damages “enhance[ment] by as much as three times.”

22. A licensing arrangement was never reached, and the ManCan did not contact the

Beer Barrel for three months. Then, on or about May 14, 2016, the Defendants contacted

Amazon.com—the primary vendor for the Beer Barrel’s products—and alleged to Amazon.com

that the Beer Barrel was infringing on Defendants’ patents. In accordance with Amazon’s

policy, the allegation was not investigated, but instead Amazon immediately ceased selling the

Beer Barrel’s products, pending a resolution between the Beer Barrel and the Defendants.

23. As a result of the Defendants’ representations to Amazon.com, Amazon.com has

ceased selling the Beer Barrel’s products and the Beer Barrel’s sales have slowed to a near halt

causing significant damage to the Beer Barrel.

FIRST CAUSE OF ACTION(Declaratory Judgment of Non-infringement and Invalidity)

24. The Beer Barrel incorporates by reference all preceding allegations of this

Complaint as though fully set forth herein.




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25. The Beer Barrel’s Products do not and have not infringed on any valid and

enforceable claim of Defendants’ Patents, directly or indirectly, by inducement or contributory

infringement, literally or under the doctrine of equivalents.

26. One or more claims of Defendants Patents are invalid for failure to comply with

one or more requirements for patentability under the patent laws of the United States, including,

but not limited to, 35 U.S.C. § 101, 102, 103, 112, 113, 115 and/or 116.

27. As a result of the Defendants’ allegations of infringement against the Beer Barrel,

threats of litigation, and representations to Amazon.com that the Beer Barrel’s products infringe

Defendants’ Patents, an actual controversy exists as to infringement of Defendants’ Patents.

28. The Beer Barrel is entitled to a declaratory judgment that the Beer Barrel is not

directly, indirectly, contributorily infringe the Defendants’ Patents; that the Beer Barrel has not

actively induced others to infringe any claim of the Defendants’ Patents; and that one or more

claims of Defendants Patents are invalid for failure to comply with one or more requirements for

patentability under that patent laws of the United States.

29. Defendants’ conduct in this action is exceptional, and Defendants are entitled to

their attorneys’ fees and costs pursuant to 35 U.S.C. § 285 and 28 U.S.C. § 1927.

SECOND CAUSE OF ACTION

(Tortious Interference with Current and Prospective Economic Relations)

30. The Beer Barrel incorporates by reference all preceding allegations of this

Complaint as though fully set forth herein.

31. In an effort to interfere with the Beer Barrel’s economic relations, the Defendants

contacted Amazon.com to allege that the Beer Barrel was infringing on Defendants’ Patents.




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32. Upon information and belief, Defendants knew and intended that by making such

an allegation, Amazon.com would immediately remove the Beer Barrel’s listing from its website

and prohibit the Beer Barrel from selling its products until the allegation of infringement was

resolved.

33. The Defendants’ allegation of patent infringement by the Beer Barrel to

Amazon.com was knowingly false, was an improper means, and was done with the intent to

interfere with the Beer Barrel’s current and prospective economic relations.

34.

As a direct and proximate result of the Defendants’ actions, the Beer Barrel has

been damaged in an amount to be determined at trial.

PRAYER FOR RELIEF

WHEREFORE, The Beer Barrel prays for judgment and relief against the Defendants as

follows:

A. For the Court to find and enter a declaratory judgment that the Beer Barrel has not

infringed in any way any of Defendants’ Patents;

B. For the Court to find and enter a declaratory judgment that the Defendants’

Patents are invalid and unenforceable;

C. For the Court to find and enter and order that Defendants’ conduct amounts to an

exceptional case and award the Beer Barrel its costs and attorney’s fees under 35 U.S.C. § 285

and 28 U.S.C. § 1927;

D. For actual, consequential, and punitive damages caused by the Defendants’

intentional and tortious interference with the Beer Barrel’s economic relations

E. For any other such relief as the Court deems just and equitable.




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DATED this 25th day of May, 2016

HATCH, JAMES, & DODGE P.C.

/s/ Justin L. JamesPhillip J. Russell

Justin L. James Attorneys for Plaintiff Beer Barrel




Case 2:16-cv-00440-EJF Document 2-1 Filed 05/25/16 Page 1 of 1



EXHIBIT 1




Beer Barrel, Zach Frantz via email: [[email protected]] 647 N 200 W

America Fort, UT 84003

858-414-5021

[1/21/15]

Re: Notice

Dear Zach Frantz,

On behalf of Deep Wood Brew Products, LLC / MANCAN UNIVERSE LLC, it ismy understanding that you are selling mini-growlers in the United States.

Please be advised that I have common law copyright in the works of art of a mini-growler and has also filed a Federal Registration for a copyright case #1-107758917(copy attached). Please also be advised that I have filed a utility Patent

Application Serial No. 14/075,563 (copy attached) as well as utility Patent ApplicationSerial No. 14/465,965. I have also filed Design Applications Serial No. 29/471,705(copy attached) which was granted patent number D 735436; and Serial No. 29/471,710(copy attached).

At least in view of my common law copyright I request that you do not sell amicro-keg, mini-growler, or stainless steel keg style growler as shown in my federalcopyright application, design patent & applications, or utility patent application. Thisnotice provides additional protection to myself as of the date of this notice onceintellectual property rights are granted by the United States Patent and TrademarkOffice.

At this point in time, I would like to resolve this matter amicably. If you have anyquestions contact me.

Chris MuellerCEO, ManCan Universe




EXHIBIT 2




EXHIBIT 3




February 12, 2016

Justin L James via email : jj [email protected]

Hatch, James, & Dodge,

10 West Broadway, Suite 400

Salt Lake City, Utah 84101(801) 363-6363

Dear Mr. James:

On behalf of Chris Mueller and ManCan, we appreciate your timely response.

With respect to ManCan’s common law copyright; you suggested that “The common law

copyright is terminated by publication of the work by the proprietor of the copyright.” We

respectfully disagree. That information was correct approximately 40 years ago, prior to 1976.

The distinction between unpublished and published works no longer exists according to the

Copyright Act of 1976. In 1976, the Copyright Act was enacted (effective date January 1st, 1978)and automatically applies to all “original works of authorship fixed in any tangible medium of

expression.” 17 U.S.C. §102(a). The design of the mini-keg growler in question is a fixed work

as described in the relevant statute in that it is a “permanent and stable record of the expression.”

Copyright in a work created on or after January 1, 1978 subsists from its creation and endures for

a term consisting of the life of the author and 70 years after the author's death. 17 U.S.C.

§302(a). Therefore, at least under common law copyright, ManCan requests that your client

cease all sales of the mini-keg growler in question.

With respect to Issued Design Patent D735,436 and recently Allowed U.S. Design Patent

Application number 29/471710, you suggest that “this is a patent for your ManCan 64, a productthat Mr. Frantz does not sell.” We respectfully disagree. A U.S. design patent is a granted to

provide legal protection regarding the ornamental design of an item, and not the product itself.

The ManCan 64 and ManCan 128 are, ornamentally speaking, identical. Aside from being

functionally different in terms of volume and capacity, the two products are ornamentally

identical and both fall within the scope of Issued Design Patent D735,436 and recently Issued

U.S. Design Patent Application number 29/471710. Therefore, at least under the scope of the




patents mentioned, ManCan requests that your client cease all sales of the mini-keg growler in

question.

Regarding pending Utility Patent Applications 14/075,563, 61/972,845, and 14/465,965, you are

correct that there can be no infringement on a pending patent application. ManCan provided

notice of said pending applications in order to make The Beer Barrel aware that ManCan intendsto protect and grow its intellectual property portfolio.

In the alternative to ceasing all sales of the mini-keg growler in question, our client is willing to

offer a Licensing Agreement which is included with this letter. In the event that a Licensing

Agreement cannot be reached, be aware that statutory damages per occurrence of patent

infringement may include lost profits of sales, lost profits from diverted sales, or at least a

reasonable royalty award from the time when The Beer Barrel began selling the mini-keg

growlers of when The Beer Barrel was notified. Also be aware that damages in the form of lost

profits or royalties may be enhanced by as much as three times according to the courts discretion

where willful infringement is found.

ManCan would prefer to solve this matter amicably. Included with this letter is a License

Agreement offered by ManCan to The Beer Barrel. If you have any questions please do not

hesitate to contact us.

Regards,

Kenneth F. Brooks

BrooksGroup48685 Hayes RoadShelby Township, Michigan 48315(586) 596-9600


beer barrel v. deep wood - complaint

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