Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 1 of 10
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
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`Virtual Compute Corporation
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`Plaintiff,
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` ) Case No.:
`v.
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`NVIDIA Corporation )
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`Defendant.
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`COMPLAINT
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`JURY TRIAL DEMANDED
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`Plaintiff Virtual Compute Corporation (“VCC”) for its Complaint against Defendant
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`NVIDIA Corporation (“NVIDIA” or “Defendant”), hereby states as follows:
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`INTRODUCTION
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`This is a case for infringement of VCC’s federally registered “vCompute” trademark as
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`well as for infringement of VCC’s common law trademark rights in its vCompute and “Virtual
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`Compute” marks (collectively, the “Marks”). VCC was founded in 2003 in Houston, Texas. VCC
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`has used the Marks in connection with its business since at least 2003. NVIDIA Corporation does
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`business as NVIDIA and is the junior, and infringing, user of the Marks. NVIDIA is a multi-
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`billion-dollar corporation that specializes in computer hardware and services.
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`PARTIES
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`1.
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`VCC is a Texas corporation with its principal place of business at 1717 North Sam
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`Houston Pkwy W #125b, Houston, Texas 77038.
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`2.
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`VCC has been in business since 2003 and has been incorporated in Texas since
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`2004.
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`COMPLAINT
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`1
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`IN THE UNITED STATES DISTRICT COURT
`FOR THE SOUTHERN DISTRICT OF TEXAS
`HOUSTON DIVISION
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` )
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`Virtual Compute Corporation
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`Plaintiff,
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`
` ) Case No.:
`v.
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` )
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`NVIDIA Corporation )
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`Defendant.
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` )
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`COMPLAINT
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`JURY TRIAL DEMANDED
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`
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`Plaintiff Virtual Compute Corporation (“VCC”) for its Complaint against Defendant
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`NVIDIA Corporation (“NVIDIA” or “Defendant”), hereby states as follows:
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`INTRODUCTION
`
`This is a case for infringement of VCC’s federally registered “vCompute” trademark as
`
`well as for infringement of VCC’s common law trademark rights in its vCompute and “Virtual
`
`Compute” marks (collectively, the “Marks”). VCC was founded in 2003 in Houston, Texas. VCC
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`has used the Marks in connection with its business since at least 2003. NVIDIA Corporation does
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`business as NVIDIA and is the junior, and infringing, user of the Marks. NVIDIA is a multi-
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`billion-dollar corporation that specializes in computer hardware and services.
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`PARTIES
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`1.
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`VCC is a Texas corporation with its principal place of business at 1717 North Sam
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`Houston Pkwy W #125b, Houston, Texas 77038.
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`2.
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`VCC has been in business since 2003 and has been incorporated in Texas since
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`2004.
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`COMPLAINT
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`1
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 2 of 10
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`3.
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`NVIDIA is a Delaware corporation with a principal place of business at 2788 San
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`Tomas Expressway, Santa Clara, CA 95051.
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`JURISDICTION AND VENUE
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`4.
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`Subject matter jurisdiction exists pursuant to 28 U.S.C. §§ 1331 (federal question)
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`and 1338(a) (trademarks) and 1332 (diversity), and pursuant to 15 U.S.C. §§ 1116 (injunctive
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`relief) and 1121 (trademarks). VCC’s claims arise under the laws of the United States, including
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`15 U.S.C. § 1125. Subject matter jurisdiction exists over VCC’s remaining claims under 28 U.S.C.
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`§ 1367(a) because the claims are so related that they form part of the same case or controversy.
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`5.
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`This Court has personal jurisdiction over NVIDIA. NVIDIA markets its goods and
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`services in Texas in person, through direct mail and advertisements, and over the Internet through
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`interactive websites. NVIDIA committed tortious acts described herein in Texas and in this judicial
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`district. NVIDIA knew its tortious acts would cause injury to Plaintiff in this District. NVIDIA
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`has purposefully availed itself of the benefits and protections of Texas law by purposefully
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`directing, doing, and transacting business in this District and in the State of Texas. NVIDIA
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`employs individuals in Texas. NVIDIA otherwise established contacts with this District sufficient
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`to make the exercise of personal jurisdiction proper.
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`6.
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`Venue is proper pursuant to 28 U.S.C. §1391(b), because a substantial part of the
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`events or omissions giving rise to this action occurred in this District, a substantial part of property
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`that is the subject of this action is situated in this District, NVIDIA’s trademark infringement
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`caused injury in this District; and 28 U.S.C. § 1391(c) because NIVDIA is subject to personal
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`jurisdiction in this District.
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`7.
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`8.
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`VCC is an independent computer services company.
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`VCC serves clients throughout the United States and internationally.
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`COMPLAINT
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`2
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 3 of 10
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`9.
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`VCC provides private cloud computing, data center design, and IT managed
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`services.
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`10.
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`Businesses, including those who use VCC’s goods and services, recognize the
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`Marks as indicators of source and associate the Marks with VCC.
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`11.
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`12.
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`VCC relies on the Marks to develop and promote business.
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`The goodwill engendered by VCC through the Marks has allowed VCC to expand
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`its business opportunities.
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`13.
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`VCC’s primary website is www.vcompute.com.
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`VCC IS THE SENIOR USER OF THE vCOMPUTE MARK
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`14.
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`VCC first began using the vCompute Mark in interstate commerce as a source
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`identifier at least as early as 2003.
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`15.
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`VCC has continuously used the vCompute Mark in connection with its computer
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`services related business since at least 2003.
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`16.
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`VCC’s actual use of its vCompute Mark predates the date of NVIDIA’s first use or
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`any date of first use that NVIDIA may properly allege.
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`17.
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`On January 24, 2011, VCC filed to register the vCompute Mark with the United
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`States Patent and Trademark Office.
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`18.
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`On June 21, 2011, the United States Patent and Trademark office published the
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`vCompute Mark for opposition.
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`19.
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`On September 6, 2011 the United States Patent and Trademark Office Registered
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`the vCompute Mark and listed the Registrant as VCC, granting VCC nationwide protectable rights
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`in the mark. The vCompute Mark is registered under U.S. Reg. No. 4022166 and is still currently
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`active. The vCompute Mark has attained incontestability status.
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`COMPLAINT
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`3
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 4 of 10
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`20.
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`VCC has invested substantial resources towards the protection of the vCompute
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`mark, and securing and protecting the consumer goodwill associated with it.
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`21.
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`A Google search for the term “vcompute” dated June 6, 2020 shows that the first
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`link to appear on the page is for Defendant’s website and read “vCompute Server NVIDIA.” The
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`second link on this page is for VCC’s website and read “VCompute: Houston Data Centers.”
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`22.
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`On June 22, 2020, VCC’s attorney Ms. Annette Heller sent a letter to Defendant
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`notifying them of their infringement of the vCompute Mark.
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`23.
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`The potential for confusion between VCC’s use of the vCompute Mark and
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`Defendant’s use of the Mark was great because (1) the mark NIVDIA used was identical in terms
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`of appearance, sound, and commercial impression (both marks use the small “v” prefix to
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`compute) to the true vCompute Mark; (2) the services NVIDIA was advertising with the mark
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`were the same or similar to those offered by VCC; and (3) NVIDIA’s services were advertised in
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`the same channels of trade and would be of interest to the same customers as VCC’s services.
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`24.
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`Defendant, recognizing VCC’s superior rights in the vCompute Mark, agreed to
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`change the name of its product. On July 17, 2020, Defendant notified Ms. Heller the new name
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`NVIDIA would use was “virtual compute server.” Bafflingly, the mark Defendant proposed to use
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`was still confusingly similar to VCC’s corporate name.
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`25.
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`VCC has common-law trademark rights in its Virtual Compute name and, given
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`the already existing trademark infringement, selecting a mark that matches VCC’s corporate name
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`increases the likelihood of confusion.
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`26.
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`A Google search conducted July 23, 2020 for the term “vcompute” shows that
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`NVIDIA did in fact change the name of its service from “vCompute Server NVIDIA” to “Virtual
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`COMPLAINT
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`4
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 5 of 10
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`Compute Server (vComputeServer) NVIDIA.” This name continues to cause confusion based on
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`the use of a very similar variation of the vCompute Mark along with VCC’s corporate name.
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`27.
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`A Google search of the term “vcompute” conducted August 11, 2020 shows that
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`NVIDIA has changed the name again, this time to read “Virtual Compute Server (vCS) NVIDIA.”
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`This name continues to cause confusion based on the use of VCC’s corporate name.
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`28.
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`Defendant’s infringing activities are likely to cause both forward and reverse
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`confusion. Consumers are likely to be confused by Defendant’s infringing activities.
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`29.
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`30.
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`The Marks are valid and protectable.
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`Defendant’s infringement is damaging VCC. For example, VCC has seen a drastic
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`drop in revenue since Defendant began infringing.
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`31.
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`The internet is the main channel through which both VCC and Defendant advertise.
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`With the much larger NVIDIA entering the same market for the same service using VCC’s
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`trademarks, VCC has seen demand for its products sharply fall.
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`32.
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`33.
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`VCC formerly relied on Google searches for new clients.
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`Now, Defendant’s infringement has frozen VCC out. In addition, Defendant and
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`VCC are now direct competitors.
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`COUNT I
`Federal Trademark Infringement Under 15 U.S.C. § 1114
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`VCC realleges and incorporates each and every allegation set forth above as if fully
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`34.
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`set forth and restated herein.
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`35.
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`36.
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`VCC is the owner of the federally registered vCompute Mark.
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`Defendant’s unauthorized use of the vCompute Mark in the United States is causing
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`and is likely to continue to cause confusion, reverse confusion, and/or mistake among purchasers
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`COMPLAINT
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`5
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 6 of 10
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`and customers as to the source, origin, or sponsorship of Defendant’s products, or to deceive
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`customers regarding the same.
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`37.
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`The trade and consuming public are likely to believe that Defendant’s products
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`originate from VCC or its affiliates and/or that there is some affiliation, connection, or association
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`between Defendant, on the one hand, and VCC, on the other, which is not the case.
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`38.
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`Defendant has infringed, and is infringing, VCC’s federally registered vCompute
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`Mark in violation of Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
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`39.
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`As a direct and proximate result of Defendant’s unlawful conduct, VCC has
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`suffered, and will continue to suffer irreparable damages and inherently unquantifiable injury and
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`harm to its business, reputation, and customer goodwill. Harm to VCC will continue unless and
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`until Defendant’s infringing conduct is enjoined by this Court.
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`40.
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`VCC has no adequate remedy at law. If Defendant’s activities are not enjoined,
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`VCC will suffer irreparable harm and injury to its vCompute Mark.
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`41.
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`Defendant’s conduct is causing, and is likely to continue to cause, injury to the
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`public and to VCC, and VCC is entitled to injunctive relief and to recover VCC’s actual damages
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`and/or an award of profits, costs, and reasonable attorneys’ fees under 15 U.S.C. §§ 1116 and
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`1117. Any such damages and/or profits awarded should be trebled pursuant to 15 U.S.C. § 1117(a).
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`COUNT II
`Common Law Trademark Infringement
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`VCC realleges and incorporates each and every allegation set forth above as if fully
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`42.
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`set forth and restated herein.
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`43.
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`VCC has used the Marks in connection with, without limitation, private cloud
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`computing, data center design and hosting, and IT managed service since at least 2003 throughout
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`the United States.
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`COMPLAINT
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`6
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 7 of 10
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`44.
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`45.
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`The Marks are distinctive of the goods and services of VCC.
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`VCC is the rightful owner of common law rights in the Marks. The Marks are valid,
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`protectable marks.
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`46.
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`Defendant, without the consent of VCC, has used, and, on information and belief,
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`will continue to use, VCC’s Marks in commerce.
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`47.
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`Defendant’s use of VCC’s Marks throughout the states where VCC uses the Marks
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`has caused and is likely to cause confusion and reverse confusion amongst consumers as to the
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`source of VCC’s goods and services, and constitutes common law trademark infringement under
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`the laws of the State of Texas.
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`48.
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`Defendant’s acts of trademark infringement have caused and will continue to cause
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`damage and irreparable harm to VCC, and are likely to continue unabated, thereby causing further
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`damage and irreparable harm to VCC, unless enjoined and restrained by the Court.
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`49.
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`VCC has no adequate remedy at law. If Defendant’s activities are not enjoined,
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`VCC will suffer irreparable harm and injury to its Marks.
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`50.
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`51.
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`Defendant’s trademark infringement is and was knowing and willful.
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`As a result of Defendant’s activities, VCC has been damaged in an amount to be
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`ascertained at trial.
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`COUNT III
`Federal Unfair Competition, False Representation, and
`False Designation of Origin under 15 U.S.C. § 1125(a)
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`VCC realleges and incorporates each and every allegation set forth above as if fully
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`52.
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`set forth and restated herein.
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`53.
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`VCC has used the Marks in interstate commerce since at least as early as 2003.
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`COMPLAINT
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`7
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 8 of 10
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`54.
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`Defendant’s use of the Marks constitutes false designation of origin and unfair
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`competition under 15 U.S.C. § 1125(a).
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`55.
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`Defendant’s conduct is likely to cause confusion, or to cause mistake, or to deceive
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`as to the affiliation, connection, or association of Defendant with VCC, or as to the origin,
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`sponsorship, or approval of Defendant’s goods, services, or commercial activities by VCC.
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`56.
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`Pursuant to 15 U.S.C. § 1116(a), VCC is entitled to permanent injunctive relief to
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`prevent Defendant’s continued use of VCC’s trademarks.
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`57.
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`Pursuant to 15 U.S.C. § 1117(a), VCC is entitled to damages for Defendant’s use
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`of VCC’s trademarks, in an amount to be ascertained at trial; an accounting of profits made by
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`Defendant; and a recovery of VCC’s costs of this action.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff VCC demands judgment against Defendant NVIDIA as follows:
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`A.
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`That Defendant, its subsidiaries, affiliates, franchisees, licensees, officers, agents,
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`sales, representatives, servants, employees, associates, successors and assigns, and all entities and
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`persons acting under its control, by, through, under, or in active concert or in participation with
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`Defendant, pursuant to 15 U.S.C. § 1116, be permanently enjoined from:
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`1.
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`Using the Marks or any other mark or trade name that is likely to cause
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`confusion, mistake or deception with Virtual Compute Corporation d/b/a vCompute
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`and/or the Marks;
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`2.
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`Using any mark or trade name or doing any act or thing likely to confuse
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`the public that Defendant’s goods or services are in any way connected with VCC,
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`including, but not limited to, using on the worldwide web the Marks, or any mark
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`or trade name confusingly similar thereto, or printing, publishing, promoting,
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`COMPLAINT
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`8
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 9 of 10
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`lending, or distributing any advertisement, whether written, audio or video, which
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`uses the Infringing Marks, vCompute, Virtual Compute or any mark or trade name
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`confusingly similar thereto.
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`B.
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`That Defendant deliver up for destruction all goods, advertising, literature, and
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`other forms of promotional material bearing or showing the infringing Marks or a confusingly
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`similar mark or trade name pursuant to 15 U.S.C. §1118;
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`C.
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`That Defendant must pay VCC such damages as VCC has sustained as a result of
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`Defendant’s infringement of the Marks;
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`D.
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`That Defendant must change its trade name to a name that does not incorporate
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`“vCompute,” “Virtual Compute,” or any other confusingly similar name;
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`E.
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`That Defendant must account for all gains, profits, and advantages derived from its
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`acts of infringement pursuant to 15 U.S.C. § 1117 or, at VCC’s option, the damages found in
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`15 U.S.C. § 1117(c).
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`F.
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`Finding this an exceptional case under 15 U.S.C. §1117, and awarding VCC a sum
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`above the amount found as actual damages not exceeding three times such amount, and its
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`reasonable attorneys’ fees;
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`G.
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`That Defendant must pay VCC its costs and disbursements in bringing this action
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`and prejudgment and post-judgment interest as appropriate pursuant to 15 U.S.C. § 1117;
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`H.
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`That Defendant must pay punitive damages due to Defendant’s willful and/or
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`reckless indifference to VCC’s trademark rights;
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`I.
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`That Defendant must ensure links and references to the infringing uses are removed
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`from all search engines and other third-party websites;
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`COMPLAINT
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`9
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`Case 4:20-cv-03216 Document 1 Filed on 09/15/20 in TXSD Page 10 of 10
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`J.
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`That Defendant must report to this Court of its compliance of the foregoing within
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`thirty (30) days of the judgment; and
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`K.
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`For such other and further relief that the Court deems just and proper.
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`JURY TRIAL DEMANDED
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`VCC hereby demands a jury trial on all issues so triable.
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`Date: September 15, 2020
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`Respectfully submitted,
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`Benjamin Foster PLLC
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`/s/ Benjamin F. Foster
`Benjamin F. Foster
`Texas Bar No. 24080898
`808 Travis Street
`Suite 1420
`Houston TX 77002
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`Anthony G. Simon, Pro Hac Vice Forthcoming
`THE SIMON LAW FIRM, P.C.
`800 Market Street, Suite 1700
`St. Louis, MO 63101
`F: (314) 241-2029
`asimon@simonlawpc.com
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`Attorney for Plaintiff
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`COMPLAINT
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`10
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