global cellular v. otter products

8/4/2019 Global Cellular v. Otter Products

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IN THE UNITED STATES DISTRICT COURT

FOR THE NORTHERN DISTRICT OF GEORGIA

ATLANTA DIVISION

Civil Action No.:

GLOBAL CELLULAR, INC., a Georgia

corporation,

Plaintiff,

vs.

OTTER PRODUCTS, LLC, a Colorado

limited liability company,

Defendant.

Declaratory Judgment

Patent

Copyright

Trademark

Unfair Competition

Tortious InterferenceDefamation

COMPLAINT

NATURE OF THE ACTION

Plaintiff Global Cellular, Inc. (Global), through its undersigned attorney,

complains of Defendant, Otter Products, LLC (OtterBox or Defendant), as

follows:

1. This is an action seeking a declaratory judgment that Plaintiff does notinfringe any valid patent, copyright, trademark, other intellectual property rights of

OtterBox and that Plaintiff has not violated any state unfair competition law,

whether statutory or at common law. This action further seeks compensatory and

punitive damages for unfair competition, tortious interference with Plaintiffs

Case 1:11-cv-02260-CAP Document 1 Filed 07/11/11 Page 1 of 14Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 1 of 37


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business relationships, and defamation, as well as injunctive relief and attorneys

fees in accordance with the appropriate statutes, as set forth hereinafter.

PARTIES

Plaintiff

2. Global is a corporation organized and existing under the laws of the State ofGeorgia, having its principal office at 6485 Shiloh Road, Building B-100,

Alpharetta, GA 30005.

Defendant

3. On information and belief, OtterBox is a limited liability company organizedand existing under the laws of the State of Colorado having a registered office at 1

Old Town Square, Suite 303, Fort Collins, CO 80524.

JURISDICTION AND VENUE

4. This action arises under the federal Patent Act, 35 U.S.C. 101, et. seq., thefederal Copyright Act, 17 U.S.C. 101, et seq., the federal Trademark (Lanham)

Act 15 U.S.C. 1051, et. seq., and under the federal Declaratory Judgment Act, 28

U.S.C. 2201, 2202.

5. This action is further based upon state law claims relating to tortiousinterference.

6. This court has subject matter jurisdiction pursuant to 28 U.S.C. 1331,1338(a), and 1338(b) because this action arises under Acts of Congress relating to



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patents, copyrights, and trademarks, and because it contains a claim of unfair

competition joined with a substantial and related claim under the patent, copyright,

and/or trademark laws. Subject matter jurisdiction over this action is conferred

upon this court by 28 U.S.C. 1331, 28 U.S.C. 1338(a), 28 U.S.C. 1338(b), 17

U.S.C. 1121, and supplemental jurisdiction pursuant to 28 U.S.C. 1367.

7. This court has further subject matter jurisdiction pursuant to 28 U.S.C. 1332, because there is diversity of citizenship and the amount in controversy,

exclusive of interest and costs, exceeds $75,000.

8. Venue is properly laid in the Northern District of Georgia pursuant to 28U.S.C. 1391(a), (b), and 1391(c), in that Defendant committed the acts

complained of herein within this judicial district, and it is subject to personal

jurisdiction within this judicial district.

Statement of Facts

The Infringement Letter

9. Cellairis Franchise, Inc. (Cellairis) is the owner of a system (the System)for the operation of Cellairis branded kiosks and other physical facilities

(Business Units), which specialize in the sale of wireless/cellular telephone

accessories and other related products (the Products) under marks owned and

licensed by Plaintiff through the Business Units.



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10. Plaintiffs marks, as used on Products, include the Cellairis mark, theCellairis.com mark, the dragonfly mark, the dragon fly mark, and the

dragon fly (with logo) mark, all of which are federally registered to Global (the

Marks).

11. The various Business Units are operated by franchisees of Cellairis(Franchisees), and the various Business Units purchase Products directly from

Global, which is in the business of supplying Products to the Franchisees who have

been licensed to use the System pursuant to Franchise Agreements entered into

between such Franchisees and Cellairis.

12. In view of the foregoing, Global has had, and continues to have businessrelationships with such Franchisees.

13. No Products are manufactured, sold, offered for sale, or imported byCellairis, and no Products supplied to Franchisees are sold by Cellairis.

14. On or about May 19, 2009, Karen I. Boyd, Esq. of Turner Boyd LLP,counsel for OtterBox, wrote and emailed a letter (the Infringement Letter), a true

copy of which is attached hereto as Exhibit 1, in which Cellairis was expressly

accused of selling a blatant copy of the OtterBox 3G iPhone Defender Series

Case under the name Ultrabox and selling knock-off products [in]

knowing and willful infringement of OtterBoxs intellectual property

15. In fact, Cellairis does not manufacture, sell, or import any Products.



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16. The Infringement Letter (Exhibit 1) further stated that the iPhone DefenderSeries case is protected under both federal and state statutory and common law.

17. The Infringement Letter (Exhibit 1) further stated, OtterBox registered theiPhone Defender Series case with the United States Copyright office [sic], and it is

the subject of a recently allowed United States design patent and pending utility

patents.

18. The Infringement Letter (Exhibit 1) also asserted, Celairiss [sic] sale of theUltraBox copy of the iPhone Defender series case infringes OtterBoxs copyright

in iPhone Defender Series case, and upon issuance of the allowed design patent,

will infringe that as well.

19. The Infringement Letter (Exhibit 1) further asserted that Cellairis was awillful infringer and it expressly stated, Cellairis faces liability under the

criminal infringement statute, 17 U.S.C. 506.

20. Notwithstanding the allegations in the Infringement Letter, Cellairis neithermanufactures, sells, offers for sale, nor imports any goods or Products, whereby it

is impossible for Cellairis to have violated any patent, trademark, copyright, trade

secret, or other intellectual property right of OtterBox; nor did the Infringement

Letter specifically give notice of any U.S. Patent, any U.S. Copyright Registration,

and U.S. Trademark Registration, or any other claimed right which allegedly gave

rise to the Infringement Letter.



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21. Accordingly, Cellairis and its Franchisees turned to Plaintiff, the supplier ofProducts to Franchisees, regarding the false infringement allegations that OtterBox

had leveled against Cellairis.

22. In view of Globals business relationship with the Franchisees, Globalreviewed the patents, trademarks, and copyrights known to be assigned to OtterBox

(OtterBox IP).

23. Having reviewed the OtterBox IP, and having compared it to the Productswhich Global provided to the Franchisees, Global denies that any of the Products

infringe any valid design or utility patent, any copyright, any trademark, any non-

disclosure agreement, or any other intellectual property right of OtterBox, and

Global specifically denies that it willfully infringed any legally cognizable

intellectual property right of OtterBox as set out in the Infringement Letter.

24. Global further denies committing any act in violation of any state unfaircompetition law, whether statutory or at common law which may have given rise to

the Infringement Letter.

The Infringement Email

25. On or about October 29, 2010 Eric Land, Distributor Sales Manager forOtterBox sent an email to Joseph Brown, (the Infringement Email), a true copy

of which is attached hereto as Exhibit 2, in which Mr. Land asserted that one of

OtterBoxs Account Development Executives was recently in Alabama. He



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came across another Cellairis kiosk selling counterfeit Defender cases. The

Infringement Email accused Cellairis of manufacturing the allegedly infringing

cases, and it included a photo of an allegedly infringing case (Exhibit 3) as well as

a copy of U.S. Patent No. D617,784 (Exhibit 4).

26. Cellairis expressly denies that it manufactured the case shown in Exhibit 3,as (wrongly) asserted in the Infringement Email (Exhibit 2).

27. Cellairis further denies that the case shown in Exhibit 3 falls within thescope of any valid claim of U.S. Patent No. D617,784 (Exhibit 4).

28. The allegation that Cellairis was engaged in infringing upon U.S. PatentNo. D617,784 (Exhibit 4) was false and defamatory, and, on information and

belief, it was published to third parties, including, inter alia, Kelly Frazier,

Intellectual Property Manager of OtterBox, and John McKinney, as set forth in the

Cc: of the Infringement Email.

29. After sending the Infringement Email on October 29, 2010, Mr. Land sent afollow-up email to Mr. Joseph Brown on or about November 1, 2010 (Exhibit 5).

30. On or about November 1, 2010, Kelly Frazier, Intellectual Property Managerof OtterBox, suspended negotiations in an additional defamatory email to Mr.

Brown in which Cellairs was, again, (wrongly) accused of selling knock-offs,

with copies sent to Eric Land and John McKinney (See, Exhibit 6).

The First District Court Action



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31. As a result of the foregoing improper activities by OtterBox, on or aboutJanuary 5, 2011, Global, together with Cellairis (which is not presently a party to

the present action) filed an action in U.S. District Court for the Northern District of

Georgia, namely Global Cellular, Inc. and Cellairis Franchise, Inc. v. Otter

Products, LLC, Case No. 1:11-cv-00037-JEC (the First District Court Case).

32. In that OtterBox appeared to have mended its ways, the Summons in theFirst District Court Case was not served, and the First District Court Case was

allowed to be dismissed.

33. Notwithstanding, the calm which appeared to have prevailed, OtterBoxsubsequently brought a Section 337 Investigation before the International Trade

Commission, captionedIn re Investigation of Certain Protective Cases and

Components Thereof, ITC Investigation No. 337-780 in which OtterBox named

Cellairis as a respondent (the ITC Investigation).

34. In the ITC Investigation, OtterBox alleged that various U.S. Patents (namelyU.S. Patent Nos. 7,933,122; D600,908; D617,784; D615,536; D617,785;

D634,741; D636,386) and various U.S. Trademarks (namely, U.S. Trademark Reg.

Nos. 3,788,535; 3,623,789; and 3,795,187) were being infringed by the various

respondents, including Cellairis.

35. Global is the sole provider of any of the Products complained of, asaforesaid, or as set out in the ITC Action, whereby the foregoing acts of OtterBox,



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including the commencement and continuance of the ITC Action against Cellairis

have negatively impacted and damaged Globals relationships with Cellairis and

the Franchisees.

First Cause of Action

Declaratory Judgment of Non-Infringement

36. Global repeats and realleges the allegations of the foregoing paragraphs.37. A case of actual controversy between Global and OtterBox exists under 28U.S.C. 2201 and 2202.

38. Notwithstanding the allegations contained in the Infringement Letter(Exhibit 1) and in the Infringement Email (Exhibit 2), and in the ITC Action,

Global expressly denies that it has infringed any valid claim of any U.S. Design

Patent owned by OtterBox, including, but not limited to, U.S. Patent Nos.

D600,908; D617,784; D615,536; D617,785; D634,741; D636,386.

39. Global expressly denies that it has infringed any valid claim of any U.S.utility patent owned by OtterBox including, but not limited to, U.S. Patent Nos.

7,933,122.

40. Global expressly denies that it has infringed any U.S. Trademark registeredto OtterBox, including, but not limited to U.S. Trademark Reg. Nos. 3,788,535;

3,623,789; and 3,795,187.



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41. Global expressly denies that it has infringed any valid copyright owned byOtterBox.

42. Global expressly denies that it has violated any trade secret owned byOtterBox.

43. Global expressly denies that it has infringed any legally cognizableintellectual right of OtterBox.

44. A declaratory judgment will serve a useful purpose in clarifying and settlinglegal relations at issue between the parties, and it will terminate and afford relief to

Plaintiffs from the uncertainty, insecurity, and controversy giving rise to this

proceeding.

45. A case of actual controversy between Plaintiffs and OtterBox exists under 28U.S.C. 2201 and 2202.

Second Cause of Action

Declaratory Judgment Non-Infringement of U.S. Patent No. D617,784

46. Global repeats and realleges the allegations of the foregoing paragraphs.47. U.S. Patent No. D617,784 (Exhibit 4) appears to depict a case for a cellulartelephone.



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48. The DESCRIPTION portion of U.S. Patent No. D617,784, expresslystates, The broken line portions of the disclosure are for illustrative purposes only

and form no part of the claimed design.

49. In view of the disclaimer expressed in the DESCRIPTION to fivebumps as shown in FIGS. 4-6.

50. As shown in Mr. Lands own photograph of the allegedly infringing casemanufactured, sold, offered for sale, and/or imported by Global (Exhibit 3), no

such bumps are present in that case.

51. In view of the foregoing, Global expressly denies that the case shown inExhibit 3 infringes U.S. Patent No. D617,784 as wrongly asserted by OtterBox.

52. A declaratory judgment will serve a useful purpose in clarifying and settlinglegal relations at issue between the parties, and it will terminate and afford relief to

Plaintiffs from the uncertainty, insecurity, and controversy giving rise to this

proceeding.

53. A case of actual controversy between Plaintiffs and OtterBox exists under 28U.S.C. 2201 and 2202.

Third Cause of Action

Unfair Competition Relations

54. Global repeats and realleges the allegations of the foregoing paragraphs.



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55. The foregoing acts by OtterBox constitute unfair competition.

Fourth Cause of Action

Tortious Interference with Globals Business Relations

56. Global repeats and realleges the allegations of the foregoing paragraphs.57. By making the foregoing frivolous claims to Globals customers, namely, theFranchisees, OtterBox has damaged Globals reputation with such Franchisees and

with Cellairis, all without any basis.

Fifth Cause of Action

Defamation

58. Global repeats and realleges the allegations of the foregoing paragraphs.59. By repeatedly, publicly claiming and publishing statements wronglyaccusing the Products of Global as infringing, OtterBox has defamed Global, with

those who have relied upon Globals impeccable reputation as providing high

quality infringement free Products, including both the Franchisees and Cellairis, all

without any basis.

PRAYER FOR RELIEF

WHEREFORE, Global respectfully requests declaratory relief against OtterBox



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that:

A. Global has not infringed any valid patent, copyright, trademark, or otherintellectual property right of OtterBox.

B. Global has not violated any state unfair competition laws, whether statutoryor at common law.

C. This action should be considered to be an exceptional case, and the courtshould award the costs of this action and Globals reasonable attorneys fees

against OtterBox, in accordance with 35 U.S.C. 285, 17 U.S.C. 505, or 15

U.S.C. 1117.

D. OtterBox should be permanently enjoined from making, disseminating, orpublishing any frivolous accusations as to Global having infringed any patent,

copyright, trademark, or other rights of OtterBox.

E. Global should be awarded compensatory and punitive damages, as well asinjunctive relief, for based upon unfair competition.

F. Global should be awarded compensatory and punitive damages for tortiousinterference with Globals business relations.

G. Global should be awarded compensatory and punitive damages fordefamation.

H. Global should be awarded such other and further relief as this honorablecourt may deem equitable and proper.



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A JURY TRIAL IS DEMANDED.

Undersigned certifies compliance with LR 5.1C (Times New Roman, 14 point).

Respectfully submitted,

Dated: __July 11, 2011__ By:_s/ Sanford J. Asman________________

Law Office of Sanford J. Asman570 Vinington CourtAtlanta, Georgia 30350Phone : (770) 391-0215Fax : (770) 668-9144Email : [email protected]

Sanford J. AsmanGeorgia Bar No. 026118Attorney for Plaintiff Global Cellular, Inc.



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Mr. Paki SkourisMay 19, 2010Page 1

VIA EMAIL C/O SANDY KARASIK,[email protected]

VIA FACSIMILE TRANSMISSIONTO 678-513-4060

May 19, 2010

Mr. Paki SkourasChief Executive OfficerCELLAIRIS FRANCHISE, INC.6485 Shiloh Rd., Bldg. B #100Alpharetta, GA 30005

RE: Infringement by Cellairis of OtterBox Products, LLCs Intellectual

Property

Dear Mr. Skouras:

It has come to the attention of my client, Otter Products, LLC (OtterBox)that Cellairis recently began selling a blatant copy of the OtterBox 3GiPhone Defender Series Case (iPhone Defender Series) under the nameUltrabox. Cellairiss sales of these knock-off products constitute a

knowing and willful infringement of OtterBoxs intellectual property in theiPhone Defender Series, particularly in light of the fact that Cellairis alsosells the iPhone Defender Series case.

OtterBoxs intellectual property in its iPhone Defender Series case isprotected under both federal and state statutory and common law. OtterBoxregistered the iPhone Defender Series case with the United States Copyright

2625 Middlefield Road

No. 675

Palo Alto, CA 94306

Karen I. Boyd

Direct: 650-533-7572

[email protected]

Case 1:11-cv-02260-CAP Document 1-1 Filed 07/11/11 Page 1 of 4Case 1:11-cv-02564-CMA Document 2 Filed 09/30/11 USDC Colorado Page 15 of 37


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office, and it is the subject of a recently allowed United States design patent

and pending utility patents. Cellairiss sale of the Ultrabox copy of theiPhone Defender Series case infringes OtterBoxs copyright in iPhoneDefender Series case and, upon issuance of the allowed design patent, willinfringe that as well.

Pursuant to Chapter 5 of Title 17 of the United States Code, OtterBox isentitled to enjoin Cellairis from selling the Ultrabox, to impound and disposeof all Ultrabox units in the possession of Cellairis and its franchisees, tocollect from Cellairis its profits from Ultrabox sales as well as damages thatOtterBox has suffered by virtue of those sales, and to recover its costs andattorneys fees. Absent an amicable settlement with Cellairis, OtterBoxintends to enforce its intellectual property rights and seek each and everyone of these remedies to the full extent allowed by law.

As a willful infringer, Cellairis also faces liability under the criminalcopyright infringement statute, 17 U.S.C. 506. The penalties for criminalcopyright infringement include up to five years in federal prison and up to a$250,000 fine. Absent a swift and amicable resolution of Cellairiss ongoinginfringement, OtterBox may elect, at its pleasure, to pursue criminal charges

against Cellairis with the Department of Justice and Federal Bureau ofInvestigation.

In order to settle this matter forthwith, OtterBox demands that Cellairis:

1. Immediately cease and desist from selling and advertising theUltrabox in any forum, including online and through franchisees;

2. Immediately recall all units of the Ultrabox from any franchisees orother sales outlets affiliated with Cellairis;

3. Tender to OtterBox all unsold and recalled units within 10 days ofrecalling and receiving such units;

4. Provide OtterBox with an accounting of (a) the number of unitspurchased by Cellairis, (b) the number of units sold by Cellairis, (c)



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the unit purchase price, (d) the unit sales price, and (e) the number of

units remaining in inventory;

5. Agree to disgorge its gross profits, in an amount to be determined, toOtterBox or, in the alternative, to pay OtterBox its lost gross profits,at OtterBoxs election;

6. Immediately inform OtterBox of the identity of any and all suppliersof the Ultrabox known to Cellairis; and

7. Reimburse OtterBox for the attorneys fees and costs it has incurredpursuing this matter.

Absent agreement to OtterBoxs demand, OtterBox intends to vigorouslyenforce its rights against not only Cellairis, but Cellairiss franchisees, theoperators of the venues (such as shopping malls) in which the Cellairisfranchisees operate, the internet service provider used by Cellairis to sell theUltrabox online, and any other entities that may be liable directly orindirectly as a result of Cellairiss infringements.

OtterBox is being harmed and continues to be harmed each and every day

that Cellairis continues to sell the Ultrabox. Consequently, please provide tome, by Monday, May 24, 2010, your assurance, in writing, that you willcomply with the above demands.



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This letter is sent without prejudice to OtterBoxs rights and claims, all of

which are expressly reserved. OtterBox reserves the right to pursue withoutfurther notice any and all legal avenues available to it.

Sincerely,

TURNER BOYD LLP

Karen I. Boyd

Attorneys for

Otter Products, LLC



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From: Eric Land [mailto:[email protected]]Sent: Friday, October 29, 2010 12:50 PMTo: Joseph BrownCc: Kelly Frazier; John McKinneySubject: Patent Infringment

Joseph-

One of my Account Development Executives was recently in Alabama. He came across another Cellairis kiosk

selling counterfeit Defender cases. The individual he spoke with informed him that Cellairis is manufacturing

these cases. Attached you will the photo of the case along with the PDF that explains the US patent that you are

infringing upon.

I have copied the OtterBox legal department; Im sure they will be in touch shortly.

Here is the phone number to the store where this particular case was located.

205-981-1778 Alabama

Eric Land

Distributor Sales ManagerP: (970) 490-8990F: (970) 493-1755

[email protected]

OtterBox1 Old Town Square, Suite 303Fort Collins, CO 80524www.otterbox.com

Weve Got TechnologyCovered

Be an OtterBox fan on Facebook: http://www.facebook.com/OtterBox

Follow OtterBox on Twitter:http://www.twitter.com/OtterBox

NOTICE OF CONFIDENTIALITY: The information contained in this e-mail, and in any attachment thereto, is confidential and may beprivileged. It is intended only for the use of the individual(s) or entity named herein. If the reader of this message is not the intended recipient,you are hereby notified that any dissemination, distribution, or copying of this communication is strictly prohibited. If you have received thiscommunication in error, please notify me immediately by telephone, fax, or e-mail and then delete this e-mail.

Please consider the environment before printing this email

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Sanford J. Asman

From: Jason Adler [[email protected]]

Sent: Tuesday, November 02, 2010 11:09 AM

To: [email protected]

Subject: FW: Patent Infringment

Page 1 of 4

12/28/2010

Jason Adler, Esq. |Vice President - General Counsel

6485 Shiloh Rd. Bldg B #100| Alpharetta, GA 30005

Phone # 678.513.4020 x275 | eFax # 678.679.4115

From: Joseph Brown [mailto:[email protected]]Sent: Monday, November 01, 2010 4:07 PMTo: 'Jason Adler'Subject: FW: Patent Infringment

Read below. I would like to respond to him ASAP.

Thank you,

Joseph Brown|President

6485 Shiloh Rd. Bldg B-100| Alpharetta, GA 30005

Phone 678.513.4020x227| Fax 678.341.7717

Skype: josephgci

Confidentiality Notice: This e-mail is intended only for the person(s) to whom it is addressed and may contain information that is confidential,proprietary, privileged or otherwise protected from disclosure. If you are not an intended recipient, please (i) do not read, copy or use thiscommunication, or disclose it to others, (ii) notify the sender immediately by replying to the message, and (iii) delete the e-mail from yoursystem. Thank you.

Save a tree. Don't print this e-mail unless it's really necessary

From: Eric Land [mailto:[email protected]]Sent: Monday, November 01, 2010 4:04 PMTo: Joseph BrownSubject: RE: Patent Infringment

Cellairisdotcomlogo



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Joseph-

I tried this route for several months and it did not seem to work. You told me over and over again that you

would be contacting all of your franchisees to have the counterfeit OtterBoxs pulled; it never happened.

Eric Land

Distributor Sales ManagerP: (970) 490-8990F: (970) [email protected]

OtterBox1 Old Town Square, Suite 303Fort Collins, CO 80524www.otterbox.com


Be an OtterBox fan on Facebook: http://www.facebook.com/OtterBoxFollow OtterBox on Twitter:http://www.twitter.com/OtterBox



From: Joseph Brown [mailto:[email protected]]Sent: Monday, November 01, 2010 2:02 PMTo: Eric Land

Cc: Kelly Frazier; John McKinneySubject: RE: Patent Infringment

Hello all,

As you know, we are big supporters of Otterbox products and based on our volume of purchases, I think it is

obvious that we stand behind your brand. We have been increasing our purchases over these past months

which is evidence that our franchised system also believes in your products and we are improving our 30%

penetration rate with Otterbox brand products throughout our Franchisees.

With that being said, and based on your Friday e-mail, we respect your intellectual property rights, to the extent

they exist on any given product, and we take all intellectual property claims extremely serious. To that end, andbased on your threat to get your legal team involved, we have sent this matter to our legal team. In the future, I

think it would be more productive for us to talk about any perceived issues, rather than making threats to get

lawyers involved (which as you know only protracts issues and causes additional expenses that are not

necessary for either of us). If you desire to pursue this matter further, then please have your legal team contact

our in-house General Counsel, Jason Adler who can be reached at 678-513-4020 ext. 275 and he can work

through any legal issues that may exist.

I hope we can continue to work together and grow each of our companies as opposed to spending time, money,

and effort on legal issues, where the only true winners are the lawyers.

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Thank you for your urgent reply,



Phone 678.513.4020x227| Fax 678.341.7717

Skype: josephgci

Confidentiality Notice: This e-mail is intended only for the person(s) to whom it is addressed and may contain information that is confidential, proprietary,privileged or otherwise protected from disclosure. If you are not an intended recipient, please (i) do not read, copy or use this communication, ordisclose it to others, (ii) notify the sender immediately by replying to the message, and (iii) delete the e-mail from your system. Thank you.


From: Eric Land [mailto:[email protected]]Sent: Friday, October 29, 2010 12:50 PMTo: Joseph BrownCc: Kelly Frazier; John McKinneySubject: Patent Infringment

Joseph-




infringing upon.



205-981-1778 Alabama

Eric Land

Distributor Sales ManagerP: (970) 490-8990

F: (970) 493-1755

[email protected]

OtterBox1 Old Town Square, Suite 303Fort Collins, CO 80524

Cellairisdotcomlogo

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www.otterbox.com






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Sanford J. Asman

From: Jason Adler [[email protected]]

Sent: Tuesday, November 02, 2010 11:09 AM

To: [email protected]

Subject: FW: Patent Infringment

Page 1 of 4

12/28/2010

Jason Adler, Esq. |Vice President - General Counsel

6485 Shiloh Rd. Bldg B #100| Alpharetta, GA 30005

Phone # 678.513.4020 x275 | eFax # 678.679.4115

From: Joseph Brown [mailto:[email protected]]Sent: Monday, November 01, 2010 4:47 PMTo: 'Jason Adler'Subject: FW: Patent Infringment

And another one

Thank you,



Phone 678.513.4020x227| Fax 678.341.7717

Skype: josephgci

Confidentiality Notice: This e-mail is intended only for the person(s) to whom it is addressed and may contain information that is confidential,proprietary, privileged or otherwise protected from disclosure. If you are not an intended recipient, please (i) do not read, copy or use thiscommunication, or disclose it to others, (ii) notify the sender immediately by replying to the message, and (iii) delete the e-mail from yoursystem. Thank you.


From: Kelly Frazier [mailto:[email protected]]Sent: Monday, November 01, 2010 4:45 PMTo: Joseph Brown; Eric LandCc: John McKinney

Cellairisdotcomlogo



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Subject: RE: Patent Infringment

Joseph -

Mr. Adler should, and you as well from conversations in July, be aware of the OtterBox knock-off issues we are

having with Cellairis and its kiosks / franchisees. Mr. Adler had been speaking with our outside counsel and

inside sales regarding our cease and desist requests, and possible resolutions. Negotiations are suspended due

to continued instances of knock-offs in kiosks.

Myself, and outside counsel, will be acquiring the necessary information regarding these new knock-offs that are

being sold under Cellairis, and marketed as a Cellairis brand. We will be in touch.

Kelly FrazierIntellectual Property ManagerP: 970.980.2040C: 303.564.7434F: 970.493.1755

[email protected]

OtterBox1 Old Town Square, Suite 303Fort Collins, Colorado 80524www.OtterBox.com

We've Got TechnologyCovered



From: Joseph Brown [mailto:[email protected]]Sent: Monday, November 01, 2010 2:02 PMTo: Eric LandCc: Kelly Frazier; John McKinneySubject: RE: Patent Infringment

Hello all,

As you know, we are big supporters of Otterbox products and based on our volume of purchases, I think it is

obvious that we stand behind your brand. We have been increasing our purchases over these past months

which is evidence that our franchised system also believes in your products and we are improving our 30%

penetration rate with Otterbox brand products throughout our Franchisees.

With that being said, and based on your Friday e-mail, we respect your intellectual property rights, to the extent

they exist on any given product, and we take all intellectual property claims extremely serious. To that end, and

based on your threat to get your legal team involved, we have sent this matter to our legal team. In the future, I

think it would be more productive for us to talk about any perceived issues, rather than making threats to get

lawyers involved (which as you know only protracts issues and causes additional expenses that are not

necessary for either of us). If you desire to pursue this matter further, then please have your legal team contact

our in-house General Counsel, Jason Adler who can be reached at 678-513-4020 ext. 275 and he can work

through any legal issues that may exist.

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I hope we can continue to work together and grow each of our companies as opposed to spending time, money,

and effort on legal issues, where the only true winners are the lawyers.

Thank you for your urgent reply,


6485 Shiloh Rd. Bldg B-100| Alpharetta, GA 30005Phone 678.513.4020x227| Fax 678.341.7717

Skype: josephgci

Confidentiality Notice: This e-mail is intended only for the person(s) to whom it is addressed and may contain information that is confidential, proprietary,privileged or otherwise protected from disclosure. If you are not an intended recipient, please (i) do not read, copy or use this communication, ordisclose it to others, (ii) notify the sender immediately by replying to the message, and (iii) delete the e-mail from your system. Thank you.


From: Eric Land [mailto:[email protected]]Sent: Friday, October 29, 2010 12:50 PM

To: Joseph BrownCc: Kelly Frazier; John McKinneySubject: Patent Infringment

Joseph-




infringing upon.



205-981-1778 Alabama

Eric Land

Distributor Sales ManagerP: (970) 490-8990

F: (970) [email protected]

Cellairisdotcomlogo

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OtterBox1 Old Town Square, Suite 303Fort Collins, CO 80524

www.otterbox.com






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JS44 (Rev. 1/08 NDGA) CIVIL COVER SHEETThe JS44 civil cover sheet and the information contained herein neither replace nor supplement the filing and service of pleadings or other papers as required by law, except as

provided by local rules of court. This form is required for the use of the Clerk of Court for the purpose of initiating the civil docket record. (SEE INSTRUCTIONS ATTACHED)

I. (a) PLAINTIFF(S) DEFENDANT(S)

(b) COUNTY OF RESIDENCE OF FIRST LISTED COUNTY OF RESIDENCE OF FIRST LISTEDPLAINTIFF DEFENDANT

(EXCEPT IN U.S. PLAINTIFF CASES) (IN U.S. PLAINTIFF CASES ONLY)

NOTE: IN LAND CONDEMNATION CASES, USE THE LOCATION OF THE TRACT OF

LAND INVOLVED

(c) ATTORNEYS (FIRM NAME, ADDRESS, TELEPHONE NUMBER, AND ATTORNEYS (IF KNOWN)E-MAIL ADDRESS)

II. BASIS OF JURISDICTION III. CITIZENSHIP OF PRINCIPAL PARTIES(PLACE AN X IN ONE BOX ONLY) (PLACE AN X IN ONE BOX FOR PLAINTIFF AND ONE BOX FOR DEFENDANT)

(FOR DIVERSITY CASES ONLY)

PLF DEF PLF DEF

1 U.S. GOVERNMENT 3 FEDERAL QUESTION 1 1 CITIZEN OF THIS STATE 4 4 INCORPORATED OR PRINCIPAL

PLAINTIFF (U.S. GOVERNMENT NOT A PARTY) PLACE OF BUSINESS IN THIS STATE

2 U.S. GOVERNMENT 4 DIVERSITY 2 2 CITIZEN OF ANOTHER STATE 5 5 INCORPORATED AND PRINCIPAL

DEFENDANT (INDICATE CITIZENSHIP OF PARTIES PLACE OF BUSINESS IN ANOTHER

IN ITEM III) STATE

3 3 CITIZEN OR SUBJECT OF A

FOREIGN COUNTRY 6 6 FOREIGN NATION

IV. ORIGIN (PLACE AN X IN ONE BOX ONLY)

TRANSFERRED FROM APPEAL TO DISTRICT JUDG1 ORIGINAL 2 REMOVED FROM 3 REMANDED FROM 4 REINSTATED OR 5 ANOTHER DISTRICT 6 MULTIDISTRICT 7 FROM MAGISTRATE JUDGE

PROCEEDING STATE COURT APPELLATE COURT REOPENED (Specify District) LITIGATION JUDGMENT

V. CAUSE OF ACTION (CITE THE U.S. CIVIL STATUTE UNDER WHICH YOU ARE FILING AND WRITE A BRIEF STATEMENT OF CAUSE - DO NOT CITEJURISDICTIONAL STATUTES UNLESS DIVERSITY)

(IF COMPLEX, CHECK REASON BELOW)

1. Unusually large number of parties. 6. Problems locating or preserving evidence

2. Unusually large number of claims or defenses. 7. Pending parallel investigations or actions by government.

3. Factual issues are exceptionally complex 8. Multiple use of experts.

4. Greater than normal volume of evidence. 9. Need for discovery outside United States boundaries.

5. Extended discovery period is needed. 10. Existence of highly technical issues and proof.

CONTINUED ON REVERSE

FOR OFFICE USE ONLY

RECEIPT # AMOUNT $ APPLYING IFP MAG. JUDGE (IFP)

JUDGE MAG. JUDGE NATURE OF SUIT CAUSE OF ACTION

(Referral)

Global Cellular, Inc.

Fulton

Otter Products, LLC

Sanford J. AsmanLaw Office of Sanford J. Asman570 Vinington CourtAtlanta, GA 30350-5710Phone: 770-391-0215Email: [email protected]

Patent Act 35 U.S.C. 101, et seq., Copyright Act 17 U.S.C. 101, et seq., Lanham Act 15 U.S.C. 1051, et seq., and Declaratory JudgmeAct 28 U.S.C. 2201



37/37

VI. NATURE OF SUIT (PLACE AN X IN ONE BOX ONLY)

CONTRACT - "0" MONTHS DISCOVERY TRACK150 RECOVERY OF OVERPAYMENT &

ENFORCEMENT OF JUDGMENT

152 RECOVERY OF DEFAULTED STUDENT

LOANS (Excl. Veterans)

153 RECOVERY OF OVERPAYMENT OF

VETERAN'S BENEFITS

CONTRACT - "4" MONTHS DISCOVERY TRACK

110 INSURANCE

120 MARINE

130 MILLER ACT

140 NEGOTIABLE INSTRUMENT

151 MEDICARE ACT

160 STOCKHOLDERS' SUITS

190 OTHER CONTRACT195 CONTRACT PRODUCT LIABILITY

196 FRANCHISE

REAL PROPERTY - "4" MONTHS DISCOVERY

TRACK

210 LAND CONDEMNATION

220 FORECLOSURE

230 RENT LEASE & EJECTMENT

240 TORTS TO LAND

245 TORT PRODUCT LIABILITY

290 ALL OTHER REAL PROPERTY

TORTS - PERSONAL INJURY - "4" MONTHS

DISCOVERY TRACK

310 AIRPLANE

315 AIRPLANE PRODUCT LIABILITY

320 ASSAULT, LIBEL & SLANDER

330 FEDERAL EMPLOYERS' LIABILITY

340 MARINE

345 MARINE PRODUCT LIABILITY350 MOTOR VEHICLE

355 MOTOR VEHICLE PRODUCT LIABILITY

360 OTHER PERSONAL INJURY

362 PERSONAL INJURY - MEDICAL

MALPRACTICE

365 PERSONAL INJURY - PRODUCT LIABILITY

368 ASBESTOS PERSONAL INJURY PRODUCT

LIABILITY

TORTS - PERSONAL PROPERTY - "4" MONTHS

DISCOVERY TRACK370 OTHER FRAUD

371 TRUTH IN LENDING

380 OTHER PERSONAL PROPERTY DAMAGE

385 PROPERTY DAMAGE PRODUCT LIABILITY

BANKRUPTCY - "0" MONTHS DISCOVERY

TRACK

422 APPEAL 28 USC 158

423 WITHDRAWAL 28 USC 157

CIVIL RIGHTS - "4" MONTHS DISCOVERY TRACK

441 VOTING

442 EMPLOYMENT

443 HOUSING/ ACCOMMODATIONS

444 WELFARE

440 OTHER CIVIL RIGHTS

445 AMERICANS with DISABILITIES - Employment

446 AMERICANS with DISABILITIES - Other

IMMIGRATION - "0" MONTHS DISCOVERY TRACK462 NATURALIZATION APPLICATION

463 HABEAS CORPUS- Alien Detainee

465 OTHER IMMIGRATION ACTIONS

PRISONER PETITIONS - "0" MONTHS DISCOVERY

TRACK510 MOTIONS TO VACATE SENTENCE

530 HABEAS CORPUS

535 HABEAS CORPUS DEATH PENALTY

540 MANDAMUS & OTHER

550 CIVIL RIGHTS - Filed Pro se

555 PRISON CONDITION(S) - Filed Pro se

PRISONER PETITIONS - "4" MONTHS DISCOVERY

TRACK550 CIVIL RIGHTS - Filed by Counsel

555 PRISON CONDITION(S) - Filed by Counsel

FORFEITURE/PENALTY - "4" MONTHS DISCOVERY

TRACK610 AGRICULTURE

620 FOOD & DRUG

625 DRUG RELATED SEIZURE OF PROPERTY

21 USC 881

630 LIQUOR LAWS

640 R.R. & TRUCK650 AIRLINE REGS.

660 OCCUPATIONAL SAFETY / HEALTH

690 OTHER

LABOR - "4" MONTHS DISCOVERY TRACK710 FAIR LABOR STANDARDS ACT

720 LABOR/MGMT. RELATIONS

730 LABOR/MGMT. REPORTING & DISCLOSURE

ACT

740 RAILWAY LABOR ACT

790 OTHER LABOR LITIGATION

791 EMPL. RET. INC. SECURITY ACT

PROPERTY RIGHTS - "4" MONTHS DISCOVERY

TRACK820 COPYRIGHTS

840 TRADEMARK

PROPERTY RIGHTS - "8" MONTHS DISCOVERY

TRACK830 PATENT

SOCIAL SECURITY - "0" MONTHS DISCOVERY

TRACK861 HIA (1395ff)

862 BLACK LUNG (923)

863 DIWC (405(g))

863 DIWW (405(g))

864 SSID TITLE XVI

865 RSI (405(g))

FEDERAL TAX SUITS - "4" MONTHS DISCOVERY

TRACK870 TAXES (U.S. Plaintiff or Defendant)

871 IRS - THIRD PARTY 26 USC 7609

OTHER STATUTES - "4" MONTHS DISCOVERY

TRACK400 STATE REAPPORTIONMENT

430 BANKS AND BANKING

450 COMMERCE/ICC RATES/ETC.

460 DEPORTATION

470 RACKETEER INFLUENCED AND CORRUPT

ORGANIZATIONS

480 CONSUMER CREDIT

490 CABLE/SATELLITE TV

810 SELECTIVE SERVICE

875 CUSTOMER CHALLENGE 12 USC 3410

891 AGRICULTURAL ACTS

892 ECONOMIC STABILIZATION ACT

893 ENVIRONMENTAL MATTERS

894 ENERGY ALLOCATION ACT

895 FREEDOM OF INFORMATION ACT

900 APPEAL OF FEE DETERMINATION UNDER

EQUAL ACCESS TO JUSTICE

950 CONSTITUTIONALITY OF STATE STATUTES

890 OTHER STATUTORY ACTIONS

OTHER STATUTES - "8" MONTHS DISCOVERYTRACK

410 ANTITRUST

850 SECURITIES / COMMODITIES / EXCHANGE

OTHER STATUTES - 0" MONTHS DISCOVERY

TRACKARBITRATION (Confirm / Vacate / Order / Modify)

(Note: Mark underlying Nature of Suit as well)

* PLEASE NOTE DISCOVERYTRACK FOR EACH CASE TYPE.SEE LOCAL RULE 26.3

VII. REQUESTED IN COMPLAINT:

CHECK IF CLASS ACTION UNDER F.R.Civ.P. 23 DEMAND $_____________________________

JURY DEMAND YES NO (CHECK YES ONLY IF DEMANDED IN COMPLAINT)

VIII. RELATED/REFILED CASE(S) IF ANY JUDGE_______________________________ DOCKET NO._______________________

CIVIL CASES ARE DEEMED RELATED IF THE PENDING CASE INVOLVES: (CHECK APPROPRIATE BOX)

1. PROPERTY INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.

2. SAME ISSUE OF FACT OR ARISES OUT OF THE SAME EVENT OR TRANSACTION INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.

3. VALIDITY OR INFRINGEMENT OF THE SAME PATENT, COPYRIGHT OR TRADEMARK INCLUDED IN AN EARLIER NUMBERED PENDING SUIT.

4. APPEALS ARISING OUT OF THE SAME BANKRUPTCY CASE AND ANY CASE RELATED THERETO WHICH HAVE BEEN DECIDED BY THE SAMEBANKRUPTCY JUDGE.

5. REPETITIVE CASES FILED BY PRO SE LITIGANTS.

6. COMPANION OR RELATED CASE TO CASE(S) BEING SIMULTANEOUSLY FILED (INCLUDE ABBREVIATED STYLE OF OTHER CASE(S)):

7. EITHER SAME OR ALL OF THE PARTIES AND ISSUES IN THIS CASE WERE PREVIOUSLY INVOLVED IN CASE NO. , WHICH WAS

DISMISSED. This case IS IS NOT (check one box) SUBSTANTIALLY THE SAME CASE.

Julie Carnes 1:11-cv-00037-JEC

1:11-cv-0037-JEC

07/11/2011


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