James E. Bailey, OSB # 922008 

780 NW York Drive, Suite 104 

Bend, OR 97701 

v: 541.241.9002 

e: jbailey@byllp.com 

Aron D. Yarmo, OSB # 934626 

780 NW York Drive, Suite 104 

Bend, OR 97701 

v: 541.241.9002 

e: ayarmo@byllp.com 

Mark S. Hubert, OSB # 982561 

2300 SW First Avenue, Suite 101 

Portland, OR 97201 

v: 503.234.7711 

e: markhubert@pacifier.com 

Attorneys for Plaintiff 

IN THE UNITED STATES DISTRICT COURT 

ZIPSLEEVE, LLC, 

An Oregon Corporation, 

Plaintiff, 

vs. 

WEST MARINE, INC., 

A California Corporation 

Defendant. 

FOR THE DISTRICT OF OREGON 

PORTLAND DIVISION 

Case No. 3:14-cv-01754-SI 

PLAINTIFF'S FIRST AMENDED 

COMPLAINT 

Trademark Infringement, 

False Designation of Origin/Unfair 

Competition/ Misrepresentation/Passing 

Off, Copyright Infringement, and 

Unjust Enrichment 

DEMAND FOR JURY TRIAL 

Defendant filed and served their Motion to Dismiss under Rule 12(B)(6) on February 2, 2015. 

Pursuant to FRCP 15 ( a)(l) Plaintiff as a mater of course, files "Plaintiffs First Amended 

Complaint" within 21 days after service of Defendant's motion. 

Page 1 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 1 of 23
NATURE OF THE ACTION 

Plaintiff, ZipSleeve, LLC, by their attorneys bring this action in law and equity against 

Defendant West Marine, Inc. for: 

• Trademark Infringement 15 U.S.C. §1114 

• False Designation of Origin, Unfair Competition, Passing Off and Misrepresentation 

(Common Law Trademark Infringement) 15 U.S.C. §1125(a) 

• 

• 

Copyright Infringement 17 U.S.C. § 501 

Unjust Enrichment (at common law) 

As set forth below, Plaintiff is the distributor of a popular boating accessory, the 

"ZipSleeve," which is a protective cord co ver used fot' the storage and organization of ship-toshore power cords. Plaintiff has been assigned the patent, holds the registered copyright for the 

original works of visual promotional material used in the "ZipSleeve " packaging, and has 

established rights for the trademark "ZipSleeve" in conjunction with the sales of cord covers. 

West Marine, Inc., a former retailer turned competitor of the "ZipSleeve," sells a cord 

cover that competes with Plaintiffs product, and that bears advertising material that uses 

Plaintiffs trademark and Plaintiffs copyrighted visual works. Upon information and belief, 

West Marine, Inc. is using acts of unfair competition to promote, market, offer for sale and sell 

their cord cover in an effort to mislead and confuse prospective purchasers as to the origin, 

affiliation and sponsorship of their competing cord cover. West Marine, Inc.'s sales of their 

product uses titles and visual advertisements that are confusingly similar to Plaintiffs 

"ZipSleeve " and even goes to the extent ofusing an unauthorized photograph of Plaintiffs 

product in their catalogue. Upon information and belief, West Marine, Inc. ' s actions are part of a 

deliberate attempt to divert sales away from Plaintiff, the market leader in sales of the 

Page 2 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 2 of 23
aforementioned cord covers. These actions will continue unless enjoined by this Court. 

Plaintiff seeks to obtain permanent injunctive relief, actual and treble damages, punitive 

damages, attorney ' s fees and costs for Defendant' s wrongful acts. Plaintiff alleges as follows: 

PARTIES 

1. 

Plaintiff, ZipSleeve, LLC is a corporation organized and existing under the laws of the 

State of Oregon, having a principal place of business at 4380 SW Macadam Avenue, Suite 190, 

Portland, Oregon 97239, and doing business under the same name. ZipSleeve, LLC has 

designated its registered agent for purposes of service of process as Robert R Neihaus, at 4380 

SW Macadam Avenue, Suite 190, Portland, Oregon 97239. 

2. 

ZipSleeve, LLC owns the entire right, title, and interest in U.S. Patent Number 7,119,279 

(the ' 279 patent.) (A copy of the ' 279 patent is appended as EXHIBIT A.) 

,.., 

.) . 

ZipSleeve, LLC is a producing entity that sells an electrical cord cover called 

"ZipSleeve" which embodies at least one 0fthe clairr..s of U.S. Patent No.7, 199,279. The 

""ZipSleeve" is a cable cover intended for use as a protective cover over the ship to shore power 

lines used by large boats when docked. Sales of "ZipSleeve '"' to date exceed 30,000 units. 

These sales have been made through Plaintiffs boating trade show presence, ZipSleeve, LLC's 

own website, the Amazon.com website and from 2003 to 2013 through the "brick and mortar" 

shops of the Defendant herein, West Marine, Inc. The advertisement for the "ZipSleeve " can be 

seen at http://www.zipsleeve .com. 

Page 3 - PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 3 of 23
Home 

4. 

On information and belief, Defendant West Marine, Inc. is a registered for-profit 

corporation organized in the State of Delaware and existing under the laws of the State of 

California since April 6, 1998, having a principal place of business of 500 Westridge Drive, 

Watsonville, CA, 95076. It was registered in the State of Oregon on April12, 1976, and has 

designated its registered agent for purposes of service of process in Oregon as CT Corporation 

System, 388 State Street, Ste 420, Salem, OR 97301. 

5. 

Defendant West Marine, Inc. is doing business as a manufacturer, importer, distributor 

and retailer of boating accessories that has established a network of over 300 stores in the United 

States as well as a strong internet sales presence. 

Page 4 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 4 of 23
6. 

West Marine, Inc. solicits and conducts sales in the state of Oregon through the following 

three distinct routes: 

• The on line sales segment of their internet website htt :llwww.westmarine.com; 

• Either of their retail stores in the State of Oregon located at 12085 N Parker Ave, 

Portland, OR 97217 and at 15230 SW Sequoia Pkwy, Suite 190, Tigard, OR; and 

• The West Marine, Inc. mail-order catalogue. 

JURISDICTION 

7. 

This is a civil action for Trademark Infringement arising under the Lanham Act 15 

U.S.C. § 1114, for False Designation of Origin, Unfair Competition, Passing Off and 

Misappropriation arising under the Lanham Act, 15 U.S.C. § 1125(a), for Copyright 

Infringement arising under the United States Copyright Act, 17 U.S.C. § 501 , and for Unjust 

Enrichment under the common laws of the State of Oregon. 

8. 

This Court has subject matter jurisdiction (federal question jurisdiction) of the claims 

asserted herein under 28 U.S.C. §§ 1331 and 1338(a) and (b) and 15 U.S.C. §§ 1121 . 

9. 

The court has supplemental jurisdiction pursuant to 28 U.S.C. §1367 and 1338(b) over 

the Oregon state law common law claim of Unjust Enrichment. This claim is so related to the 

claims under the Lanham Act that it forms part of the same case and controversy under Article 

III of the United States Constitution, and hence fall within the scope of this Court's supplemental 

jurisdiction 

II 

Page 5 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 5 of 23
10. 

This Court has in personam jurisdiction over Defendant West Marine, Inc. because: (a) it 

conducts regular business within Oregon having two brick and mortar retail stores within the 

state of Oregon, (b) its cord cover product is sold in Oregon, (c) it has engaged in unlawful and 

purposeful conduct directed towards Zip Sleeve, LLC, an Oregon Corporation, (d) it is and has 

been registered with the Oregon Secretary of State as a Corporation since December 4, 1997, and 

(e) it has caused injury to Plaintiff in Oregon. Defendant West Marine, Inc. has systematic and 

continuous contacts with the State of Oregon and has purposefully availed itselfthe privilege of 

conducting activities in Oregon by soliciting and/or conducting business transactions in Oregon. 

VENUE 

11. 

Venue is proper in this District of Oregon Court under 28 U.S.C. §§ 139l(b) and (c), and 

1400(b) for the same reasons. A substantial part of the acts, events and omissions giving rise to 

the claims asserted in this action occurred within this Judicial District and because Defendant is 

subject to personal jurisdiction in Oregon. Additionally, venue is proper because the principal 

place ofbusiness ofZipSleeve, LLC (the patent owner) and one ofthe inventors is in Oregon and 

many of the key documents and witnesses are located in Oregon. 

FACTS COMMON TO ALL COUNTS 

PLAINTIFF'S PATENT 

12. 

On October 10, 2006, U.S. Patent No. 7, 199,279 ("the '279" patent") entitled 

"Protective Sleeve " was duly and legally issued to the assignee ZipSleeve, LLC. (A copy of the 

patent is attached as EXHIBIT A.) It was acquired by assignment of the original inventors, 

Robert Neihaus, John E. Nemazi and Michael D. Turner at the time of the filing of the patent 

Page 6 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 6 of 23
application. (A copy of the patent assignment abstract of title is appended as EXHIBIT B.) This 

assignment is located at Reel/Frame 01468910730 of the United States Patent and Trademark 

Office ("USPTO") and was received in the USPTO on November 7, 2003 accompanying the 

original utility patent application SIN 10/746074. 

13. 

The ' 279 patent incorporates both apparatus and method claims directed at the 

segmentation of the sleeve into separate shorter sleeves about its longitudinal center. 

14. 

The '279 patent is presumed valid per 35 U.S.C. § 282(a), and all the appropriate 

maintenance fees of 35 U.S.C. § 41 have been paid to ensure the continued existence of the '279 

patent. (A copy of a USPTO Maintenance Fee Statement of March 20, 2014 is appended as 

EXHIBIT C.) 

THE COPYRIGHT IN SUIT 

15. 

On August 30, 2005, Plaintiff created an original work of visual promotional material 

which was used in the packaging of all subsequent "ZipSleeve " units. This consisted of two 

original, artistic photographs of a "ZipSleeve " in use with a boat owned by the president of 

ZipSleeve, LLC, as well as six original hand drawings depicting the features of the "ZipSleeve. " 

16. 

Copyright protection was afforded Plaintiffs original work of visual promotional 

material upon creation and affixation in a tangible medium of expression pursuant to 17. U.S.C § 

301 , because it comes within the subject matter of copyright under 17 U.S.C § 102 and was 

created after January 1, 1978. 

II 

Page 7 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 7 of 23
17. 

This visual material was registered with the US Copyright Office and US Copyright 

Registration Number V AOOO 1911986 was obtained. The Plaintiff is the legal owner of the visual 

works embodied in the advertisement insert of its "ZipSleeve " and is entitled to copyright 

protection thereof. (A copy of the copyrigl1t is attached as EXHIBIT D.) 

18. 

This copyright is still valid and has not been sold, transferred or assigned by ZipSleeve, 

LLC to any other party. 

THE TRADEMARK IN SUIT 

19. 

Plaintiff coined the term "ZipSleeve" for all of the various cord covers they sold in 

interstate commerce and US Trademark Registration Number 3285002 was obtained August 28, 

2007. The section 8 affidavit of continued use was inadvertently not filed and this federally 

registered trademark was cancelled April 4, 2014, although it was continuously and still is 

prominently displayed and used with each ZipSleeve unit sold. (A copy of the trademark is 

attached as EXHIBIT E.) 

20. 

Reregistration of the trademark ZipSleeve has been applied for and is pending. (A copy 

of the reregistration is attached as EXHIBIT F.) 

PLAINTIFF'S PRODUCT - "ZIPSLEEVE" 

21. 

The "ZipSleeve " is a protective sleeve that is intended and advertised for the covering of 

the ship to shore electrical cables that are used when a larger marine vessel is docked. 

"ZipSleeve" has a distinctive 2 14 inch, tubular, black nylon body with a separate zipper running 

Page 8 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 8 of 23
from either of its ends that meet at the middle of its tubular body. The "ZipSleeve " is capable of 

being separated into two shorter sleeves at its approximate midpoint and is also capable of being 

joined at its distal or proximate ends to another "ZipSleeve. " The phrase "Patent No. 7119279" 

as well as the trademark "ZipSleeve TM" is boldly embroidered in yellow thread on both ends of 

the separable "ZipSleeve " body. 

22. 

The "ZipSleeve " is sold in a blister pack with a cardboard advertising insert that bears the 

phrase "Patent Number 7119279", the trademark "ZipSleeve," and six copyright protected 

original artworks and two copyright protected original photographs. 

II 

II 

II 

II 

Page 9 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 9 of 23
Patent No. 71192 

"'"'"'"'"'"'"' ... "'"'"'",..""""UI'-'1-#HHHI .. ,,_M,_,., ........... .,. .. .,. .. ,. J<)ltt~tht-liJ~'('{~>f~ 

~ WfJP IN: hoc# "M 1M? ;Jh~4r'Q-tlf->d t~i••rWcaJ<~ 

iAd:.Qf ¢flu lfld taw•t' 

\ ' . ...................... ...... ,.. .. ,. ............. w .. w ..•••• " ............ ,..""' "' 

IIN~fM~.t<l'd~~ -----

23. 

Plaintiff has been selling their "ZipSleeve " for approximately 10 years and has sold over 

100,000 units. The ZipSleeve enjoys widespread recognition it its market niche. 

24. 

The majority of the sales of the "ZipSleeve " cord cover have been to West Marine, Inc. 

through the Wisconsin distributor Marinco. In the fall of2012, Marinco terminated its 

relationship with Plaintiff, and Plaintiff attempted to establish a direct vendor agreement with 

West Marine, Inc. to handle the sale of their cord cover. West Marine, Inc. opted out of handling 

the Plaintiffs cord cover because Marinco offered them "an identical product. " 

25. 

Shortly thereafter, following years of stable sales numbers, Plaintiffs sales ofthe 

"ZipSleeve " dropped from an annual average of $30,000 to under $5,000. 

26. 

In the spring of 2014, Plaintiff learned that Defendant was offering a competing cord 

cover for sale. The packaging of the competing cord cover bore Plaintiffs "ZipSleeve " 

Page 10 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 10 of 23
advertising material. Thereafter, investigation revealed further statutory and common law 

violations by the Defendant with respect to Plaintiffs trademark and copyright rights. 

DEFENDANT'S PRODUCT 

27. 

Defendant offers for sale and sells a cord cover of which the advertising in their online 

catalogue depicts a photograph of Plaintiffs "ZipSleeve " cord cover. The description and 

photograph unmistakably shows Plaintiffs cord cover which can be clearly identified by 

Plaintiffs yellow trademark "ZipSleeve" sewn thereon. Use of Plaintiffs trademark in 

association with Defendant's competing cord cover was not and is not authorized. 

' .,. 

28. 

Defendant advertises their competing cord cover as the "MARINCO ZipSleeve Cord 

Organizer". Use of Plaintiffs trademark in association with Defendant' s competing cord cover 

was not and is not authorized. 

Page 11 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 11 of 23
Shop By Department 

FREE SHIPPING on orders over $49 V FREE DELIVERY to any West Marine S1 

1ome > 4ccessones > Manne Electrical Accessones > Shore Power Accessories 

' , 

MARI.NCO ZipSleeve Cord Organizer 

Model# 54634431 Mf~ It ZIP-01 

$49.99 

t..'U'JC 

Quantity In stock ontme 

29. 

The stock cord cover sold on the shelves of West Marine, Inc. ' s stores, and that is 

shipped to the customer when an online order for a ccrd cover is fulfilled, has a cardboard 

advertising insert that depicts five of the six copyright protected original artworks and both of the 

copyright protected original photographs belonging to Plaintiff. Use of Plaintiff's copyrighted 

work in association with Defendant's competing cord cover was not and is not authorized. 

II 

II 

II 

II 

II 

II 

Page 12 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 12 of 23
Page 13 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 13 of 23
30. 

The actual cord cover that West Marine, Inc. is advertising and selling, both online and in 

their stores as a "ZipSleeve , is not the Plaintiffs "ZipSleeve" cord cover, but rather is 

Defendant's own competing product. 

31. 

West Marine, Inc. sold Plaintiffs "ZipSleeve " (which they purchased through 

Plaintiffs exclusive distributor) since the spring of2004. In the fall of2012 the relationship 

between Plaintiff and their distributor was severed by Marinco and Plaintiff approached West 

Marine, Inc. in hopes of establishing themselves as a direct "ZipSleeve " vendor to West Marine, 

Inc. On March 29, 2013 West Marine, Inc. rejected such a relationship stating "Marinco has 

offered a new identical product at a much lower cost than currently and will enable us to sell it 

at a much lower retail. " Plaintiff responded April 2, 2013 cautioning and reminding Defendant 

of the existing patent rights. 

32. 

Defendant advertises the Plaintiffs cord cover (the ZipSleeve) for sale but delivers 

instead their own cord cover with an advertising insert bearing many of the Plaintiffs 

copyrighted visual works of art. The Plaintiffs "ZipSleeve " retails online from the Plaintiffs 

website for $34.95. The West Marine cord cover retails for $49.99 from their website. 

33. 

Defendant was able to copy Plaintiffs visual works with little or no cost thus achieving 

the benefit of Plaintiffs work and outlay of expenses. 

34. 

Except for the allegedly infringing cord cover, Plaintiff would be able to continue their 

Page 14 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 14 of 23
benefit of exclusivity in this niche market and maintain their established level of sales. 

35. 

Defendant's sales have injured plaintiff as the direct diversion of profits from the Plaintiff 

to the Defendant, or at a minimum, as the loss of royalties the Plaintiff may have charged one to 

use the "ZipSleeve " associated trademark and copyright. 

36. 

Plaintiffs sales of"ZipSleeve" have plummeted to less than 10% of the level, which they 

had previously experienced for the last five years. 

COUNT I 

TRADEMARKINFruNGEMENT 

15 u.s.c. §1114 

37. 

Plaintiff incorporates the allegations contained in the foregoing paragraphs as though 

fully set forth herein. 

38. 

West Marine, Inc. 's acts as alleged constitute trademark infringement that violated 15 

U.S.C § 1114 to the substantial and irreparable injury of the public and of Plaintiffs business 

reputation and goodwill during the period that Plaintiffs trademark was registered federally. 

39. 

Defendant' s use of Plaintiffs trademark "ZipSleeve " was likely to cause confusion, 

deception and mistake by creating the false and misleading impression that Defendant' s goods 

were manufactured or distributed by Plaintiff, or were associated or connected with Plaintiff or 

had the sponsorship, endorsement or approval of Plaintiff. 

40. 

Page 15 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 15 of 23
West Marine, Inc. ' s use of Plaintiff's trademark "ZipSleeve " to advertise their own 

competing cord cover, occurred while Plaintiff owned a valid and legally protectable federal 

trademark registration and also continues to occur while Plaintiff has the rights of common law 

ownership of this trademark. 

41. 

Defendant's actions demonstrate an intentional, willful and malicious intent to trade on 

the goodwill associated with Plaintiff's trademark to Plaintiff's great and irreparable injury. 

42. 

Upon information and belief, by such wrongful acts, Defendant has and unless restrained 

by the Court, will continue to cause serious irreparable injury and damage to the public and 

Plaintiff and to the goodwill associated with their trademark, including diversion of customers, 

lost sales and lost profits. 

43. 

Plaintiff is entitled to injunctive relief and to recover Defendant' s profits, actual damages, 

enhanced profits and damages, costs and reasonable attorneys' fees under 15 U.S.C. § 1114, 

1116 and 111 7. 

COUNT II 

FALSE DESIGNATION OF ORIGIN, UNFAIR COMPETITION, PASSING OFF 

AND MISREPRESENTATION 

(COMMON LAW TRADEMARK INFRINGEMENT) 15 U.S.C. §1125(a) 

44. 

Plaintiff incorporates the allegations contained in the foregoing paragraphs as though 

fully set forth herein. 

II 

Page 16 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 16 of 23
45. 

Based on West Marine, Inc. ' s adoption and use of "ZipSleeve " as a brand name for their 

cord cover in violation of Plaintiffs established rights in "ZipSleeve " as a registered and 

common law trademark, Defendant's acts as alleged constitute trademark infringement, false 

designation of origin, unfair competition, passing off and misrepresentation in violation of the 

Lanham Act, Section 43(a), 15 U.S.C. § 1125(a), all to the substantial and irreparable harm of 

the public and to Plaintiffs business reputation and goodwill. 

46. 

Defendant's use of a photograph of Plaintiffs branded product aside Plaintiffs 

trademark in Defendant's advertising to sell Defendant' s own competing product, amounts to 

passing off. 

47. 

By such wrongful acts, Defendant' s use of Plaintiffs trademark "ZipSleeve " is likely to 

cause confusion, deception and mistake by creating the false and misleading impression that 

Defendant' s goods are manufactured or distributed by Plaintiff, or are associated or connected 

with Plaintiff or have the sponsorship, endorsement or approval of Plaintiff. 

48. 

Unless restrained by the Court, Defendant's use of the "ZipSleeve " trademark in its 

advertising will continue to deceive customers and prospective customers into believing that the 

Defendant's products are those of the Plaintiff, and as a consequence, are likely to divert and 

have diverted customers away from Plaintiff. This will continue to cause serious irreparable 

injury and damage to Plaintiff and to the goodwill associated with Plaintiffs trademarks, 

including diversion of customers, lost sales and lost profits. 

Page 17 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 17 of 23
49. 

Defendant's intent has been intentional, and willfully and wantonly malicious. Their 

knowledge of Plaintiffs rights, their reckless disregard for the likely confusion caused by their 

acts, and their conduct described herein renders this case exceptional under 15 U.S.C. § 1125(a), 

1116 and 1117(a), entitling Plaintiffto Defendant's profits, actual damages, enhanced profits, 

damages, costs and reasonable attorney 's fees. 

50. 

Defendant's acts of false designation of origin, unfair competition, and misrepresentation 

will continue unless enjoined by this court. 

51. 

Plaintiff has no adequate remedy at law. 

COUNT III 

COPYRIGHT INFRINGEMENT 

17 u.s.c. § 501 

52. 

Plaintiff incorporates the allegations contained in the foregoing paragraphs as though 

fully set forth herein. 

53 . 

Defendant unlawfully and willfully copied all or a part of Plaintiffs visual promotional 

material which was used in the distinctive packaging and presentation of all Plaintiffs 

"ZipSleeve " cord covers and used these images in the advertisement of Defendant's competing 

cord cover. Packaged with Defendant' s cord cover is a cardboard insert. On the back of the 

cardboard insert is displayed five of Plaintiffs copyright protected original visual works and on 

the front of the cardboard insert is displayed both of Plaintiffs copyright protected original 

photographs. Defendant misappropriated and copied a significant portion of Plaintiffs 

Page 18 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 18 of 23
copyrighted works. 

54. 

Defendant' s copying of Plaintiff's visual promotional material and the use of the images 

therein of the Defendant's cord cover misleads the public's identification of the "ZipSleeve " as 

Plaintiff's exclusive property, thereby confusing the public and causing Plaintiff to suffer 

irreparable damages and lost profits. 

55. 

Defendant does not have permission to use any part of Plaintiff's copyrighted advertising 

material. 

56. 

With full knowledge of Plaintiffs rights herein, Defendant has infringed and continues to 

infringe Plaintiffs copyrights by directly copying the images and photographs of Plaintiff's 

advertising onto Defendant' s product packaging and then selling and distributing Defendant's 

product to consumers throughout the United States and in other countries. 

57. 

Plaintiffs are entitled to their damages and Defendant' s profits pursuant to 17 U.S.C. § 

504(b) or optionally, enhanced statutory damages. 

COUNT VI 

UNJUST ENRICHMENT 

58. 

Plaintiff incorporates the allegations contained in the foregoing paragraphs as though 

fully set forth herein. 

59. 

Defendant knowingly and intentionally misappropriate Plaintiff's trademark, and 

Page 19 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 19 of 23
copyrighted material and uses them in Defendant's own advertising and packaging. 

60. 

Defendant advertises the Plaintiffs "ZipSleeve" cord cover photographically and 

verbally in their catalog and online sales screens with no intent to provide the product as 

advertised. 

61. 

Defendant engages in other unfair or deceptive conduct in trade or commerce by using 

Plaintiffs own copyrighted material on advertising and packaging of their competing cord cover. 

62. 

Defendant advertises their product using a picture and the trademark of the Plaintiffs 

cord cover and then sells and delivers Defendant's higher priced competing cord cover. This 

action constitutes a "bait and switch" in which the consumer is led to believe the product is 

Plaintiffs product when in fact the product sold is Defendant' s product, thereby damaging the 

reputation of the Plaintiffs product. 

63 . 

Defendant has willfully and knowingly committed the acts alleged herein for its own 

purposes and as a direct and proximate result of its improper acts, Defendant has been unjustly 

enriched, receiving the financial benefit of the significant time, marketing and effort expended 

by Plaintiff to create and develop the "ZipSleeve 's " goodwill and market. 

64. 

Defendant' s conduct further enables them to benefit unfairly from Plaintiffs success and 

reputation, thereby giving Defendant commercial value it would not otherwise have. 

65. 

Plaintiff has suffered and will continue to suffer, loss of profits by virtue of Defendant's 

Page 20 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 20 of 23
conduct and improper acts as well as irreparable injury to the reputation and goodwill that 

Plaintiff has established over the years. 

profits. 

66. 

It is unjust to allow Defendant to retain the above-mentioned illegally obtained benefits. 

67. 

Plaintiff is entitled to an award equal to Defendant' s unjust profits and Plaintiffs lost 

PRAYER FOR RELIEF 

WHEREFORE, Plaintiff respectfully requests and prays that this Court enter judgment in 

its favor against Defendant and grant the following relief: 

A. A judgment declaring that Defendant' s conduct has: 

1. infringed Plaintiffs copyrights in violation of 17 U.S.C. § 501; 

2. infringed Plaintiffs registered trademark in violation of 15 U.S.C. §1114; 

3. misrepresented and falsely designated the origin of their product in an act 

of unfair competition in violation of 15 U.S.C. § 1125(a) 

4. resulted in the unjust enrichment of Defendant 

B. A judgment that Defendant's conduct in the acts above with regard to the 

infringement of the "ZipSleeve" trademark, the infringement of Plaintiffs copyrights and the 

unfair competition acts have been willful and wanton; 

C. Immediately and permanently enjoining Defendant, their officers, directors, 

agents, servants, employees, representatives, attorneys, related companies, successors, assigns 

and all others in active concert or participation with them, from any further acts of infringement, 

unfair business practices and unfair competition with respect to Plaintiffs trademark, copyright 

or business. 

Page 21 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 21 of 23
D. An order and judgment requiring the Defendant to deliver to the Plaintiff for 

destruction all advertising material, any product packaging literature, catalogue, signs, 

advertising material and the like or any confusingly similar variation thereof depicting Plaintiffs 

trademark or copyrighted works, and that Defendant be required to recall all such items that it 

has delivered, shipped or otherwise provided to any distributors, retailers or third parties and 

refund any monies paid for such products; 

E: An Order requiring Defendant, within 30 days after service of the judgment, to 

file with the Court and serve upon Plaintiffs attorney a written report under oath setting forth in 

detail the manner in which Defendant has complied with D herein; 

F. An order, pursuant to 15 U.S.C. § 1117(a), based on Defendant's infringement of 

the "ZipSleeve" trademark, as well Defendant' s acts of unfair competition in violation of 15 

U.S.C. §1125(a), awarding Plaintiffthe Defendant's profits, any damages sustained by Plaintiff, 

attorney' s fees and the costs ofthis action; 

G. An order, pursuant to 15 U.S.C. § 1117(a)(3), and based on Defendant's willful 

and wanton infringements of the "ZipSleeve" trademark rights and Defendant' s acts of unfair 

competition, enhancing or trebling all damages awarded to Plaintiff; 

H. An order, pursuant to 17 U.S.C. § 504, based on Defendant's infringement of 

Plaintiffs copyright, awarding Plaintiff both actual damages and profits of the Defendant; 

I. An order, pursuant to 35 U.S.C. § 284, awarding to Plaintiff pre-judgment interest 

on the damages and their costs incurred in this action; 

II 

II 

II 

J. Awarding Plaintiff such other relief as the Court may deem just and equitable. 

Page 22 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 22 of 23
38(b). 

DEMAND FOR JURY TRIAL 

Plaintiff demands a trial by jury of all claims where it is so entitled, pursuant to FRCP 

DATED this 13th day of February 2015. 

Is/James E. Bailey 

James E. Bailey, OSB # 922008 

780 NW York Drive, Suite 104 

Bend, OR 97701 

v: 541.241.9002 e: jbailey@byllp.com 

/s/Aron D. Yarmo 

Aron D. Yarmo, OSB # 934626 

780 NW York Drive, Suite 104 

Bend, OR 97701 

v: 541.241.9002 e: ~v~mQ@hy!Jp,~Qm 

Is/Mark S. Hubert 

MarkS. Hubert, OSB # 982561 

2300 SW First Avenue, Suite 101 

Portland, OR 97201 

v: 503.234.771 e: markhubert(a),pacifier.com 

Page 23 -PLAINTIFF'S FIRST AMENDED COMPLAINT 

Case 3:14-cv-01754-SI Document 12 Filed 02/13/15 Page 23 of 23