The following document was converted by BlindBargains.com and is believed to be reasonably accurate. Errors may exist due to OCR processing. Case 8:10-cv-01669-JSM-MAP Document 3-1 Filed 07/28/10 UNITED STATES DISTRICT COURT MIDDLE DISTRICT OF FLORIDA TAMPA DIVISION FREEDOM SCIENTIFIC, INC., ) a Delaware corporation, ) ) ) FREEDOM SCIENTIFIC ) CASE NO.: BLV GROUP, LLC ) a Delaware Limited Liability Company ) ) INJUNCTIVE RELEIF REQUESTED Plaintiffs, ) ) vs. ) ) THE FOUNDATION FOR BLIND ) CHILDREN ) an Arizona Corporation, ) ) Defendant. ) ) COMPLAINT Plaintiffs, FREEDOM SCIENTIFIC, INC. ("Freedom") and FREEDOM SCIENTIFIC BLV GROUP, LLC ("Freedom BLV"), sue Defendant, THE FOUNDATION FOR BLIND CHILDREN (the "FBC"), and for their causes of action state as follows: I. PARTIES, JURISDICTION AND VENUE 1. This is an action for trademark infringement against FBC for: (a) infringement of a federally registered mark under 15 U.S.C. §1114(1); (b) common law trademark infringement and unfair competition; and (c) breach of contract. The Court has jurisdiction over this action under 15 U.S.C. §1121 and 28 U.S.C. §1338(a). 2. Freedom is a Delaware corporation with its principal place of business at 11800 31st Court North, in St. Petersburg, Florida 33716. 3. Freedom BLV is a Delaware Limited Liability Company with its principal place of business at 11800 31st Court North, in St. Petersburg, Florida 33716. 4. Defendant FBC is an Arizona corporation, with an address of 1235 E. Harmont Drive, Phoenix, AZ 85020 and is doing business in Florida and Arizona. 5. FBC is a former authorized dealer of Freedom BLV's products pursuant to an Authorized Dealer Agreement between FBC and Freedom BLV. The Authorized Dealer Agreement provides that FBC consents to personal jurisdiction and venue in the Middle District of Florida. 6. This action concerns FBC's obligations under the Authorized Dealer Agreement. FBC is accordingly subject to the personal jurisdiction of this Court as this litigation arises out of or relates to the substantial contacts FBC had with this state and district in negotiating and carrying out the Authorized Dealer Agreement. 7. Venue is proper in the Middle District of Florida pursuant to 28 U.S.C. §1391(b)(2) and 1391(c) because FBC is subject to personal jurisdiction in the Middle District of Florida and therefore is deemed to reside here for venue purposes. II. COMMON ALLEGATIONS A. Freedom Scientific 8. Freedom BLV is the owner, by assignment, of the federally registered trademark JAWS for use in conjunction with "pre-recorded computer programs for use in the field of communication products." See EXHIBIT A, Reg. No. 1,606,168. 9. The JAWS mark was first used in commerce in December 1987 and has now been in use for over 22 years. 10. Freedom BLV has filed with the United States Patent and Trademark Office an affidavit of use for the JAWS® mark as required by 15 U.S.C. §1058(a), and said registration is presently valid and enforceable. 11. The validity of the JAWS® mark and of the registration of the mark, registrant's ownership of the mark, and Freedom BLV's exclusive right to use said registered mark in commerce for the above mentioned goods are incontestable under 15 U.S.C. §1065 and 15 U.S.C. §1115(b), as Freedom BLV has filed the required affidavit with the Commissioner of Patents and Trademarks. 12. An advertisement showing the JAWS® mark as used in commerce is included as EXHIBIT B. 13. Freedom is the owner of the federally registered trademark MAGIC® for use in conjunction with "computer software used to provide magnification of text and graphics and text-to-speech output." See EXHIBIT C, Reg. No. 3,142,224. 14. The MAGIC® mark was first used in commerce in September 1997 and has now been in use for over 12 years. 15. An advertisement showing the MAGIC mark as used in commerce is included as EXHIBIT D. 16. Freedom BLV is also the owner of the common law trademark SARATM for use in conjunction with devices for scanning and reading text. 17. An advertisement showing the SARATM mark as used in commerce is included as EXHIBIT E. 18. Freedom BLV is also the owner of the common law trademark PAC MATETM for use in conjunction with portable Braille displays. 19. An advertisement showing the PAC MATE TM mark as used in commerce is included as EXHIBIT F. 20. Freedom BLV is also the owner of the common law trademark FOCUSTM for use in conjunction with Braille displays. 21. An advertisement showing the FOCUSTM mark as used in commerce is included as EXHIBIT G. The JAWS®, MAGIC®, SARATM, PAC MATETM, and FOCUSTM marks are collectively referenced herein as "Freedom's Marks." B. Authorized Dealer Agreement 22. Freedom BLV and FBC previously entered into an Authorized Dealer Agreement. 23. Under the Authorized Dealer Agreement, FBC was the dealer for a variety of Freedom BLV's products throughout the state of Arizona. 24. FBC sold products under Freedom's Marks as an authorized dealer. 25. FBC was terminated as an authorized dealer on or about November 2009. 26. Despite being terminated as an authorized dealer, FBC continues to offer for sale a variety products featuring Freedom's Marks. FBC's website is located at: http://sales.seeitourway.org/. 27. FBC has continued to offer for sale products under Freedom's Marks following termination of the Authorized Dealer Agreement. 28. Freedom BLV wrote to FBC and requested that FBC cease using Freedom's Marks. See EXHIBIT H, Letter R. Rafalco to M. Nelson of 7/14/2010. 29. Despite receiving this letter, FBC has continued to use Freedom's Marks. 30. The advertisements used by FBC prominently feature Freedom's Marks, as well as Freedom BLV's product photographs and descriptions. 31. Relevant advertisements from FBC's website are included as composite EXHIBIT I. COUNT I FEDERAL TRADEMARK INFRINGEMENT 32. Plaintiffs repeat and reallege the allegations set forth in Paragraphs 1-31. 33. FBC is offering for sale goods under Freedom's Marks without authorization or consent. 34. FBC is also using Freedom BLV's product photographs and descriptions and otherwise holding itself out to be an authorized distributor of Freedom BLV when such is not the case. 35. FBC's acts constitute trademark infringement in violation of 15 U.S.C. §1125 and §1114. 36. These acts of trademark infringement have been committed with the intent to cause confusion, mistake, and to deceive. 37. By reason of FBC's acts herein, Plaintiffs have and will suffer damage to their business, reputation, and good will and the loss of sales. restrained and enjoined, will continue to do so, all to Plaintiffs' irreparable damage. It would be difficult to ascertain the amount of compensation which could afford Plaintiffs adequate relief for such continuing acts, and a multiplicity of judicial proceedings would be required. 39. Plaintiffs remedy at law is not adequate to compensate it for the injuries threatened. WHEREFORE Plaintiffs pray: (a) That this Court grant a preliminary and permanent injunction pursuant to the powers granted it under 15 U.S.C. §1116, enjoining and restraining FBC and its agents, servants, and employees from directly or indirectly using Freedom's Marks on any marketing materials, websites, or products because such use is likely to cause confusion, mistake, or to deceive; (b) That this Court, pursuant to the powers granted it under 15 U.S.C. §1118, order that all marketing materials, websites, and products, and other materials in the possession of FBC bearing Freedom's Marks shall be delivered up, altered, and/or destroyed; (c) That this Court award Plaintiffs treble the amount of actual damages suffered by Plaintiffs; (d) That the costs of this action be awarded to Plaintiffs; (e) That this is an exceptional case and that Plaintiffs be awarded their reasonable attorneys' fees; and (0 That this Court grant such other and further relief as it shall deem just. COUNT II COMMON LAW TRADEMARK INFRINGEMENT AND UNFAIR COMPETITION 40. Plaintiffs repeat and reallege the allegations set forth in Paragraphs 1-31. 41. Freedom BLV has generated common law trademark rights through the continuous use and adoption of the marks SARATM, PAC MATETm, and FOCUSTM to identify products tailored to blind and low-vision users, including scanners and Braille displays. 42. Freedom BLV uses the SARATM, PAC MATETm, and FOCUSTM marks to distinguish its products from those made or sold by others, by, among other things, prominently displaying the marks on the products, their containers, the displays, and marketing associated therewith. 43. In competition with Freedom BLV and in the same trade area, FBC is using Freedom's Marks to identify products tailored to blind and low-vision users, including scanners and Braille displays. 44. The foregoing has been done without the authorization or consent of Freedom BLV and in a manner that is likely to cause confusion as to the source of the goods among a significant number of persons using ordinary care and prudence in the purchase of goods. 45. The infringing acts of FBC, as heretofore alleged, have been without the consent of Plaintiffs. WHEREFORE Plaintiffs pray: (a) That this Court grant a preliminary and permanent injunction enjoining and restraining FBC and its agents, servants, and employees from directly or indirectly using Freedom's Marks on any marketing materials, websites, or products because such use is likely to cause confusion, mistake, or to deceive; (b) That this Court order that all marketing materials, websites, or any products in possession of FBC bearing Freedom's Marks be delivered up, altered, or destroyed; (c) That the costs of this action be awarded to Plaintiffs; (d) That Plaintiffs be awarded its reasonable attorneys' fees; and (e) That this Court grant such other and further relief as it shall deem just. COUNT III BREACH OF CONTRACT 46. Plaintiffs repeat and reallege the allegations set forth in Paragraphs 1-31. 47. FBC entered into the Authorized Dealer Agreement with Freedom BLV, whereby FBC was authorized to sell Freedom BLV's products and use Freedom's Marks. 48. Freedom BLV validly WI linated the Authorized Dealer Agreement in November 2009. 49. Pursuant to the Authorized Dealer Agreement, FBC was to cease using Freedom's Marks and otherwise cease selling Freedom BLV's products. 50. FBC continues to use Freedom's Marks in violation of the Authorized Dealer Agreement. 51. FBC's continued use of Freedom's Marks constitutes a material breach of the Authorized Dealer Agreement and as a direct and proximate cause of such breach, Freedom BLV has suffered monetary damages. 52. Because of FBC's breach of the Authorized Dealer Agreement, Freedom BLV has been forced to retain the undersigned counsel and is obligated to pay them a reasonable fee. 53. All conditions precedent to this Count have been performed, waived or excused. WHEREFORE Plaintiffs pray this Court to award the following relief: (a) Damages adequate to compensate Plaintiffs for monetary damages suffered due to FBC's acts; (b) Reasonable attorneys' fees, costs and expenses of this lawsuit; and (c) Such other and further relief as this Court deems just and proper. Respectfully submitted, /cM Michael J. Colltz, III Trial Counsel Florida Bar No. 0164348 GrayRobinson, P.A. 201 N. Franklin St., Suite 2200 Tampa, FL 33602 Tel: (813) 273-5000 Fax: (813) 273-5145 Email: michael.colitza,grav-robinson.com # 2173722 v4