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Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 1 of 11 PageID: 1
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`UNITED STATES DISTRICT COURT
`DISTRICT OF NEW JERSEY
`
`
`
`
`
`
`
`
`
`
`Civil Action No.
`
`ECF CASE
`
`
`FREI ENTERPRISES, INC. d/b/a
`INK GENIE,
`
`
`
`
` v.
`
`HP, INC.
`
`
`
`
`Plaintiff,
`
`Defendant.
`
`
`
`COMPLAINT FOR DECLARATORY JUDGMENT
`
`Plaintiff, Frei Enterprises, Inc. (“Plaintiff” or “Ink Genie”) by and through its
`
`undersigned attorneys, STERN & SCHURIN LLP, as and for its Complaint against Defendant,
`
`HP, Inc. (“Defendant” or “HP”), alleges as follows:
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`NATURE OF ACTION
`
`1.
`
`This is a case of greed and improper market control disguised as legitimate “brand
`
`protection.”
`
`2.
`
`Plaintiff Ink Genie legally operates within a market niche that serves as a
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`valuable, efficient segment of the economy. Specifically, Ink Genie sources various types of new
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`and 100% authentic ink and toner cartridges from surplus suppliers and other downstream
`
`market participants. Ink Genie then advertises and offers these products to its customers for the
`
`lowest possible price on its online website located at www.inkgenie.com.
`
`3.
`
`Ink Genie thus benefits consumers who can access authentic HP branded ink and
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`toner products at discount prices on the Ink Genie website.
`
`
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 2 of 11 PageID: 2
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`4.
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`HP and its purported authorized distributors desire to eliminate discount sellers –
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`like Ink Genie – in order to maintain control over the prices at which HP branded products are
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`advertised and sold to consumers, and thereby maintain the highest profit margins possible for
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`these products.
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`5.
`
`With these goals, manufacturers, like HP, often use improper and unlawful means
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`to try to eliminate lawful market competition so as to increase their own profits.
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`6.
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`In this case, HP has employed such unlawful means, including threats from its
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`counsel to bring legal action against Ink Genie for trademark and trade dress infringement.
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`7.
`
`For example, on May 10, 2021, HP’s counsel sent a “cease and desist” letter to an
`
`entity named “Genie Trading Group LLC.” HP and its counsel mistakenly believed that “Genie
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`Trading Group LLC” was associated with Ink Genie, when in fact, Genie Trading Group LLC
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`has nothing to do with the sale of ink and toner cartridges, and its only relationship with Ink
`
`Genie is that it is owned by both of Ink Genie’s principles.
`
`8.
`
`In its “cease and desist letter,” HP demands unequivocally that the recipient
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`“immediately remove all HP products” from its website, identifying www.inkgenie.com by
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`name, and all other “unauthorized websites, stop selling any and all HP Products, and identify all
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`sources of HP Products it is selling.” HP further states that to avoid a lawsuit, the recipient must
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`“immediately” comply with its demands. A copy of the original letter sent by HP’s counsel on
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`May 10, 2021, is attached hereto as Exhibit A.
`
`9.
`
`More recently, on July 6, 2021, HP’s counsel sent a second letter again
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`threatening and demanding that the recipient immediately stop advertising and selling HP
`
`branded products.
`
`
`
`2
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 3 of 11 PageID: 3
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`10.
`
`HP again threatened to bring suit if its demands are not met immediately. A copy
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`of the letter dated July 6, 2021 is attached hereto as Exhibit B.
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`11.
`
`Since Ink Genie legally procures, advertises, markets, promotes, offers for sale,
`
`and sells HP branded products that are 100% genuine and authentic, Ink Genie has done
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`absolutely nothing wrong and rejects HP’s demands.
`
`12.
`
`Accordingly, Ink Genie now brings this action against HP seeking a declaration of
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`non-infringement, so as to once and for all stop HP’s misplaced and clumsy threats and
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`intimidation tactics.
`
`JURISDICTION AND VENUE
`
`13.
`
` This Court has subject matter jurisdiction pursuant to 28 U.S.C. §§ 1331 and
`
`1338 with respect to the claims arising under the Lanham Act, 15 U.S.C. § 1051, et seq., and
`
`pursuant to the Declaratory Judgment Act, 28 U.S.C. § 2201, et seq.
`
`14.
`
` This Court also has diversity jurisdiction over this dispute under 28 U.S.C.
`
`§1332(a) since the matter in controversy exceeds $75,000 and the dispute is between citizens of
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`different states.
`
`15.
`
`Venue is proper in this judicial district pursuant to 28 U.S.C. § 1391(b)(2)
`
`because a substantial part of the events giving rise to the claims in this Complaint occurred in
`
`this judicial district.
`
`THE PARTIES
`
`16.
`
`Ink Genie is a corporation organized and existing under the laws of the State of
`
`New Jersey located at 11 Cayuga Court, Springfield, New Jersey.
`
`17.
`
`Ink Genie legally procures, then advertises, markets, promotes, offers for sale, and
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`sells ink and toner products to the public through its online store located at www.inkgenie.com.
`
`
`
`3
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 4 of 11 PageID: 4
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`18.
`
`Upon information and belief, HP is a corporation organized and existing under the
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`laws of the State of Delaware.
`
`19.
`
`Upon information and belief, HP has a principal place of business located in
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`California at 1501 Page Mill Road, Palo Alto, California.
`
`20.
`
`Upon information and belief, HP is in the business of advertising, marketing,
`
`promoting, developing, offering for sale, and selling a variety of products, including the toner
`
`and ink cartridges at issue in this case.
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`21.
`
`The ink and toner cartridges at issue herein are advertised and sold under HP
`
`trademarks, and the associated HP trade dress in its packaging.
`
`22.
`
`Upon information and belief, HP does a substantial amount of business in the
`
`State of New Jersey and in this judicial district.
`
`23.
`
`Upon information and belief, HP advertises, markets, promotes, offers for sale,
`
`and sells ink and toner products under the HP® trademarks, logos, and associated trade dress in
`
`its packaging for ink and toner products which are at issue in this lawsuit, in the State of New
`
`Jersey and in this judicial district.
`
`24.
`
`Upon information and belief, HP sells ink and toner products throughout the
`
`United States and the world, including in the State of New Jersey and in this judicial district.
`
`
`
`STATEMENT OF FACTS
`
`INK GENIE’S LAWFUL ADVERTISEMENT AND SALE OF HP PRODUCTS
`
`Ink Genie has built a business by legally procuring, then advertising, marketing,
`
`25.
`
`promoting, offering for sale, and selling different types of authentic and genuine ink and toner
`
`cartridges on its own online website located at www.inkgenie.com.
`
`
`
`4
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 5 of 11 PageID: 5
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`26.
`
`Some of the authentic and genuine products that Ink Genie legally procures, then
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`advertises, markets, promotes, offers for sale, and sells are HP® branded ink and toner
`
`cartridges.
`
`27.
`
`At all times material hereto, the HP® branded ink and toner cartridges advertised
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`on Ink Genie’s online website were brand new and had been legally purchased by Ink Genie.
`
`28.
`
`Ink Genie legally procures, then markets, promotes, advertises, offers for sale, and
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`sells 100% authentic and genuine HP® branded products under the HP® trademarks, logos, and
`
`associated trade dress in its original packaging.
`
`29.
`
`Ink Genie does not use any of HP’s photos on its website. Rather, Ink Genie only
`
`uses photos that it takes itself.
`
`30.
`
`Such pictures of HP® branded ink and toner products may be found on Ink
`
`Genie’s online website at https://inkgenie.com/collections/genuine-hp-ink-and-toner-cartridges,
`
`where there are currently over 400 listings being advertised and offered for sale.
`
`31.
`
`Each of these ink and toner products appearing on the Ink Genie website are
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`genuine and authentic HP® branded products.
`
`32.
`
`The ink and toner products appearing on the Ink Genie website appear in
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`packaging that serves as part of HP’s trade dress in its packaging design.
`
`33.
`
`By the same token, all of the HP®-branded products advertised and sold by Ink
`
`Genie bear the original copyright designs and logos that are depicted on the packaging of the
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`HP®-branded products.
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`34.
`
`Ink Genie unilaterally and lawfully controls the prices at which it advertises and
`
`offers the goods that it sells on its website, including the HP®-branded products at issue herein.
`
`
`
`5
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 6 of 11 PageID: 6
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`35.
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`Although unnecessary, in order to eliminate any conceivably possible likelihood
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`of confusion, Ink Genie makes it clear on its website that it is not affiliated with HP in any way.
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`36.
`
`In particular, in connection with each HP® branded ink and toner product it
`
`advertises and offers for sale, Ink Genie provides a clear and easily understood disclaimer
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`statement to its customers.
`
`37.
`
`The Ink Genie statement reads, “Ink Genie® is an independent ink and toner
`
`reseller and is not affiliated with HP. This allows us to offer original, brand name ink and toner
`
`cartridges at below retail prices.”
`
`38.
`
`Thus, the disclaimer statement clearly states that Ink Genie is not affiliated with
`
`HP, thus eliminating any purported likelihood of confusion that HP may believe would somehow
`
`otherwise exist.
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`39.
`
`This disclaimer is prominent and impossible to miss. For example, this statement
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`appears twice on each product page, under the “add to cart” button and in the product
`
`description.
`
`40.
`
`The Ink Genie website also provides additional disclaimer statements regarding
`
`HP® branded items.
`
`41.
`
`For example, in connection with HP-branded ink and toner product it advertises
`
`and offers for sale, Ink Genie also states: “Every HP product that Ink Genie® offers is a genuine
`
`OEM product.”
`
`
`
`DEFENDANT’S WRONGFUL ACTIVITIES
`
`42.
`
`HP manufactured or caused to be manufactured the HP®-branded ink and toner
`
`products that were advertised and sold by Ink Genie, and which are at issue in this case.
`
`
`
`6
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 7 of 11 PageID: 7
`
`43.
`
`Packaging of HP’s products comprises HP registered trademarks, including HP®,
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`U.S. Reg. No. 1840215, and the registered design logo
`
`, U.S. Reg. No. 4272548
`
`(collectively “the HP Trademarks”), as well as the associated trade dress in its packaging design.
`
`44.
`
`Upon information and belief, the packaging of HP® branded ink and toner
`
`products also comprise copyrighted designs and textual material, which are also proprietary to
`
`HP.
`
`45.
`
`HP advertises and sells its HP® branded ink and toner products directly to
`
`consumers on its website located at www.hp.com.
`
`46.
`
`Upon information and belief, HP also sells these same products on a wholesale
`
`basis to wholesale distributors, which then resell these products to other businesses and/or direct
`
`to consumers through online retail websites.
`
`47.
`
`Ink Genie has no knowledge of the contractual terms or contractual relationships
`
`between HP and its wholesale distributors, if any.
`
`48.
`
`Upon information and belief, all of the HP products at issue in this case were
`
`already sold once by HP to or through at least one of its so-called “authorized distributors.”
`
`49.
`
`Accordingly, HP has already been paid for and has already received revenue from
`
`each sale of HP®-branded ink and toner products advertised and sold by Ink Genie.
`
`50.
`
`The revenues received by HP were earned well before Ink Genie ever commenced
`
`advertising and marketing the HP® branded ink and toner products for re-sale to consumers.
`
`51. Well established doctrines make clear that trademark, trade dress and copyright
`
`laws do not prevent purchasers of such items from re-selling them without permission of the
`
`original manufacturer or original intellectual property rights holder. This is commonly referred
`
`to as the “First Sale Doctrine.”
`
`
`
`7
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 8 of 11 PageID: 8
`
`52. Moreover, the long recognized “First Sale Doctrine” also permits a reseller to use
`
`a party’s trademark and trade dress to identify the goods it is selling. Such use is entirely
`
`legitimate and does not create a likelihood of confusion as to the source of the product nor with
`
`respect to the trademark or trade dress holder’s sponsorship or affiliation.
`
`53.
`
`The marketplace is thus routinely presented with multiple sellers of the same
`
`product, and customers can therefore shop for the best price.
`
`54.
`
`However, in this case, HP has undertaken various measures to try to prevent the
`
`marketplace from working in this legitimate manner.
`
`55.
`
`For example, in HP’s May 10, 2021, letter to Ink Genie, HP states unequivocally
`
`that “HP Products May Only Be Sold By Authorized Sellers Through Authorized Channels.”
`
`56.
`
`In addition, HP also purports to claim that the product sold by a so-called
`
`“unauthorized re-seller” is materially different from the same exact product sold by an
`
`“authorized” seller because they fail to conform to so-called “quality control” standards imposed
`
`by HP on authorized sellers.
`
`57.
`
`Here, however, the alleged quality control requirements are all “pretextual” and
`
`created exclusively for the purpose of restricting competition.
`
`58.
`
`HP’s May 10, 2021, letter also claims that the products Ink Genie sells are
`
`materially different because HP “forbids Authorized Sellers from relabeling, repackaging or
`
`otherwise altering HP Products or any labels or literature accompanying the products.” However,
`
`as previously noted, Ink Genie does not alter the products in any way, and HP does not even
`
`claim that Ink Genie does so.
`
`
`
`
`
`
`
`8
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 9 of 11 PageID: 9
`
`COUNT I
`DECLARATION OF INVALIDITY, UNENFORCEABILITY AND/OR
`NON- INFRINGEMENT UNDER THE LANHAM ACT
`
`Ink Genie repeats and realleges each of the preceding allegations in paragraphs as
`
`59.
`
`though fully set forth herein.
`
`60.
`
`Ink Genie has advertised, marketed, offered for sale, and sold products alleged by
`
`HP to be infringing and which, according to HP, infringe its trademark and trade dress rights.
`
`61.
`
`However, and as described herein, Ink Genie is advertising and selling only 100%
`
`authentic and genuine HP Products which it lawfully procured, and which were originally sold
`
`by HP and or its authorized partners.
`
`62.
`
`Accordingly, an actual controversy has arisen and now exists between Ink Genie
`
`and HP concerning whether Ink Genie has infringed and is infringing HP’s trademark and trade
`
`dress rights in Ink Genie’s advertisements and sales of products on its website,
`
`www.inkgenie.com.
`
`63.
`
`Upon information and belief, HP still believes and maintains that Ink Genie’s
`
`activities with respect to its advertising, marketing, offer for sale, and sale of the HP® branded
`
`ink and toner products constitute infringement of HP’s trademark and trade dress rights.
`
`64.
`
`HP objects to Ink Genie’s advertising and sale of HP® branded ink and toner
`
`products.
`
`65.
`
`HP objects to Ink Genie’s advertising and sale of ink and toner products bearing
`
`the HP Trademarks, including the registered word mark HP®, U.S. Reg. No. 1840215.
`
`66.
`
`HP objects to Ink Genie’s advertising and sale of ink and toner products bearing
`
`the HP Trademarks, including the registered design logo
`
`, U.S. Reg. No. 4272548 (“the HP
`
`Design Logo”).
`
`
`
`9
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 10 of 11 PageID: 10
`
`67.
`
`Upon information and belief, the HP Design Logo is also protectable under the
`
`Copyright Act, 17 U.S.C. § 101 et seq.
`
`68.
`
`HP objects to Ink Genie’s advertising and sale of ink and toner products in
`
`packaging bearing HP’s trade dress and the HP Design Logo.
`
`69.
`
`In contrast, Ink Genie believes and alleges that its products, advertisements, and
`
`marketing and promotional materials do not infringe upon any valid rights of HP, and that it has
`
`not committed any acts of infringement under the Lanham Act or the Copyright Act.
`
`70.
`
`By virtue of the foregoing, Ink Genie desires a judicial determination of the
`
`parties’ rights and duties with respect to the intellectual property rights asserted by HP.
`
`71.
`
`A judicial declaration is necessary and appropriate at this time so that the parties
`
`may proceed in accordance with their respective rights as determined by the Court.
`
`
`
`PRAYER FOR RELIEF
`
`WHEREFORE, Plaintiff prays for judgment against Defendant as follows:
`
`A.
`
`For judgment declaring that HP’s trademark and trade dress rights are not
`
`infringed by Ink Genie.
`
`B.
`
`Awarding Ink Genie costs, expenses, and reasonable attorney’s fees as permitted
`
`by law; and
`
`C.
`
`Awarding Ink Genie such other and further relief as the Court may deem just and
`
`proper.
`
`
`
`
`
`JURY DEMAND
`
`Plaintiff demands a trial by jury on all issues so triable.
`
`10
`
`

`

`Case 2:21-cv-14209-JXN-CLW Document 1 Filed 07/27/21 Page 11 of 11 PageID: 11
`Case 2:21-cv-14209—JXN-CLW Document 1 Filed 07/27/21 Page 11 of 11 PageID: 11
`
`Dated: July 27, 2021
`Garden City, New York
`
`STERN & SCHURIN LLP
`
`Penina Green (PG 4648)
`-
`, eternachurineom
`
`
`Attorneys for Plaintifi’
`595 Stewart Avenue, Suite 510
`
`Garden City, New York 11530
`Telephone: (516) 248-0300
`Facsimile: (516) 283-0277
`
`Steven Stern ($85203)
`Richard S. Schurin (R80199)
`STERN & SCHURIN LLP
`
`(PRO HAC VICE APPLICATION
`FORTHCOMING)
`
`11
`
`

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