get it digital answer
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Get It Digital AnswerTRANSCRIPT
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UNITED STATES DISTRICT COURT EASTERN DISTRICT OF NEW YORJK CANON U.S.A., INC.,
Plaintiff,
-against-
GET IT DIGITAL LLC and ALL NEW SHOP,
Defendants.
No. 2:15-cv-6019 (LDW) (AKT) DEFENDANTS’ ANSWER TO PLAINTIFF’S COMPLAINT
Defendants Get It Digital LLC and All New Shop (collectively, “Defendants”), by
and through their attorneys Emery Celli Brinckerhoff & Abady LLP, for their answer to the
Complaint in this matter, aver as follows in response to the correspondingly numbered
paragraphs of Plaintiff’s Complaint:
1. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
2. As to the first sentence, deny knowledge or information sufficient to form
a belief as to the truth of the allegation. As to the second sentence, admit that among Plaintiff’s
businesses is the importation, marketing, distribution, and sale of Canon-brand cameras;
otherwise deny knowledge or information sufficient to form a belief as to the truth of the
allegation. As to the third sentence, deny.
3. Admit that Defendants are not authorized dealers of Canon products;
otherwise deny.
4. Deny all of the allegations contained in this paragraph and, as to
subparagraph (e), aver that it states a legal conclusion to which no response is required.
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a. Deny;
b. Deny;
c. Deny;
d. Deny;
e. This paragraph states a legal conclusion to which no response is
required. To the extent this paragraph states factual allegations, deny.
5. Deny.
6. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states factual allegations, deny.
7. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
8. Admit.
9. Admit.
10. Admit, except deny that Defendants “function as one unitary entity as a
practical matter,” and except as to the final sentence, which states a legal conclusion to which no
response is required.
11. This paragraph states a legal conclusion to which no response is required.
12. This paragraph states a legal conclusion to which no response is required.
13. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
14. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
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15. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
16. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
17. Admit that Canon-branded products are advertised and deny knowledge or
information sufficient to form a belief as to the truth of the remaining allegations.
18. Admit that Canon-brand cameras are of excellent quality and reputation;
otherwise deny knowledge or information sufficient to form a belief as to the truth of the
allegation.
19. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
20. Admit that Canon-brand cameras enjoy an excellent reputation; otherwise
deny knowledge or information sufficient to form a belief as to the truth of the allegation.
21. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states a factual allegation, deny knowledge or information sufficient
to form a belief as to the truth thereof.
22. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
23. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
24. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
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25. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
26. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
27. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
28. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
29. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
30. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
31. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
32. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
33. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
34. Admit that examples of U.S. safety regulations, requirements, and
certifications include Underwriters Laboratories safety certifications and California’s battery
charger system appliance regulation. Otherwise deny knowledge or information sufficient to
form a belief as to the truth of the allegation.
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35. As to the first sentence, admit that Defendants are aware of the Canon
mark; otherwise deny the remaining allegations.
36. Deny.
37. Deny.
38. Deny.
39. Deny.
40. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states factual allegations, deny allegations.
41. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states factual allegations, deny the allegations.
42. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states a factual allegation, deny.
43. Admit that Defendants import cameras bearing the Canon mark from the
Asia-Pacific and European regions on the gray market. Otherwise deny, including that these
cameras satisfy the definition of “Gray Market Cameras” set forth in the Complaint.
44. Admit that Defendants market, distribute, and sell cameras bearing the
Canon mark, and purchased from the Asia-Pacific and European regions, to U.S. consumers.
Otherwise deny, including that these cameras satisfy the definition of “Gray Market Cameras”
set forth in the Complaint.
45. Deny.
46. Deny.
47. Deny.
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48. The first sentence of this paragraph states a legal conclusion to which no
response is required. To the extent the first sentence of this paragraph states a factual allegation,
deny. As to the second sentence, deny knowledge or information sufficient to form a belief as to
the truth of the allegation.
49. Deny.
50. Deny knowledge or information sufficient to form a belief as to the truth
of the allegations and, as to the last sentence of the paragraph, aver that it states a legal
conclusion to which no response is required..
51. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
52. Deny.
53. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
54. As to the first sentence, deny knowledge or information sufficient to form
a belief as to the truth of the allegation. As to the second sentence, deny.
55. Deny.
56. Deny.
57. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
58. Deny.
59. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states a factual allegation, deny knowledge or information sufficient
to form a belief as to the truth of the allegation.
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60. Deny.
61. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
62. Deny knowledge or information sufficient to form a belief as to the truth
of the allegation.
63. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states a factual allegation, deny knowledge or information sufficient
to form a belief as to the truth of the allegation.
64. Deny.
65. Defendants repeat and reincorporate their responses to Paragraphs 1
through 64, set forth above.
66. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states a factual allegation, deny.
67. Defendants repeat and reincorporate their responses to Paragraphs 1
through 66, set forth above.
68. This paragraph states a legal conclusion to which no response is required.
To the extent this paragraph states a factual allegation, deny.
AFFIRMATIVE DEFENSES
FIRST AFFIRMATIVE DEFENSE
Exhaustion Doctrine / First Sale Doctrine
1. “As a general rule, trademark law does not reach the sale of genuine goods
bearing a true mark even though the sale is not authorized by the mark owner.” Polymer Tech.
Corp. v. Mimran, 975 F.2d 58, 61 (2d Cir. 1992). “This idea is also referred to as the first sale
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doctrine, as it is in copyright law, insofar as it recognizes that the right of a producer to control
distribution of its trademarked product does not extend beyond the first sale of the product.”
Microban Prods. Co. v. API Indus., Inc., No. 14-CV-41, 2014 WL 1856471 (S.D.N.Y. May 8,
2014) (internal quotation marks omitted).
2. On information and belief, either Plaintiff, Canon USA, Inc., or another
licensee of Canon, Inc., authorized the initial sale of all goods bearing the Canon mark that were
later resold by Defendants.
3. On information and belief, all goods bearing the Canon mark resold by
Defendants were genuine goods, regardless of whether Defendants had the consent of the
trademark owner or trademark licensee to resell them.
4. Defendants’ subsequent resale of genuine Canon goods falls outside the
scope of the trademark owner or licensee’s right to control the sale of trademarked goods.
SECOND AFFIRMATIVE DEFENSE
Laches
6. Defendants began reselling goods bearing the Canon mark in or about
2006.
7. Defendants openly and notoriously resold goods bearing the Canon mark.
Defendants sold such goods on heavily-trafficked public websites such as eBay.
8. Plaintiff was aware of such resales and unreasonably delayed in asserting
its rights, if any.
9. Plaintiff passively consented to Defendants’ conduct by failing to timely
assert its rights, if any.
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10. Plaintiff’s unreasonable delay in asserting its rights, if any, prejudiced
Defendants by leading Defendants to invest in and grow their business under the impression that
Plaintiff passively consented to their activities.
THIRD AFFIRMATIVE DEFENSE
Acquiescence/Estoppel
11. Plaintiff Canon USA, Inc. was aware that Defendants openly and
notoriously resold goods bearing the Canon mark that they had purchased from Canon
authorized dealers.
12. Upon information and belief, Plaintiff actively condoned the resale and
transshipment of Canon-branded products from Canon authorized dealers to other resellers.
13. Plaintiff’s conduct estops Plaintiff from asserting the claims against
Defendants that are set forth in the Complaint.
Dated: New York, New York December 11, 2015
EMERY CELLI BRINCKERHOFF & ABADY LLP By: /s Andrew G. Celli, Jr. Douglas E. Lieb* 600 Fifth Avenue 10th Floor New York, NY 10020 (212) 763-5000 [email protected] Attorneys for Defendants Get It Digital LLC and All New Shop * Admitted pro hac vice
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