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Jeff S. Pitzer, OSB No. 02084 Email: jpitzer@pitzerlaw.net Bryan S. Geon, OSB No. 97505 Email: bgeon@pitzerlaw.net PITZERLAW 101 SW Main St., Suite 805 Portland, OR 97204 Telephone: 503-227-1477 Facsimile: 503-227-5839 Attorneys for Plaintiff Repar Corporation

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lThTlTED STATES DISTRICT COURT DISTRICT OF OREGON EUGENE DIVISION

REPAR CORPORATION, a Texas corporation, Plaintiff,

Case No.6: 13-cv-l 043

v.
WILLOWOOD USA, LLC, an Oregon limited liability company, and BRIAN HEINZE, Defendants.

COMPLAINT FOR TRADEMARK INFRINGEMENT, BREACH OF CONTRACT, AND OTHER CLAIMS

(Breach of express contract; breach of implied-in fact contract; quasi-contract/unjust enrichment; misappropriation of trade secrets (ORS 646.461 et seq.); federal trademark infringement (15 U.S.c. 1114, 1116, 1117); federal unfair competition (15 U.S.C. 1116, 1117, 1125); common law trademark infringement and unfair competition)

DEMAND FOR JURY TRIAL

In support of its Complaint against defendants, plaintiff alleges as follows:

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Parties

1. Plaintiff Repar Corporation ("Repar") is a Texas corporation with its principal place of business in Silver Spring, Maryland. Repar is in the business of distributing agricultural pesticides. 2. Defendant Willowood USA, LLC ("Willowood") is an Oregon limited liability company with its principal place of business in Roseburg, Oregon. Willowood is in the same business as Repar. 3. Defendant Brian Heinze ("Heinze") is an individual who resides in Douglas County, Oregon. Heinze is, and at all material times has been, president ofWillowood. On information and belief, at all material times Heinze was the only manager at Willowood with decision-making authority.
Jurisdiction and Venue

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4.
The United States District Court for the District of Oregon has subject-matter jurisdiction in this matter pursuant to 28 U.S.C. 1331, because the dispute arises in part under federal law, and pursuant to 28 U.S.C. 1332, because there is complete diversity between the parties and the amount in controversy exceeds $75,000. Venue is proper in the United States District Court for the District of Oregon, Eugene Division, pursuant to 28 U.S.C. 1391 and LR 3-2.

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Factual Background
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5. The Federal Insecticide, Fungicide and Rodenticide Act ("FIFRA"), 7 U.S.c. 136 et seq., is a comprehensive federal environmental statute that regulates pesticides. Among other things, FIFRA requires the registration of pesticides with the U.S. Environmental Protection Agency ("EPA") and bars the sale, use, or distribution of unregistered pesticides. The chemical "tebuconazole," an agricultural pesticide, is subject to the EPA registration requirements of FIFRA.

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6.
Since 2008, Repar has distributed two formulations of an agricultural pesticide that contains tebuconazole. Repar markets these two products under the trade names TEBUCON 45 DF and TEBUCON 3.6F.

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7.
In accordance with the requirements of FIFRA, Repar timely obtained registrations for these tebuconazole formulations from the EPA. 8. Repar was in the business of marketing and distributing its TEBUCON 45 DF and TEBUCON 3.6F products before Willowood even existed. 9. Willowood was formed in December 2009. Heinze, Willowood's president, had once been in the business of marketing agricultural pesticides but, after selling his former company, was for several years subject to a non-compete agreement.

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10. Heinze had previously met Repar's founder and president, Bhushan Mandava. When the end of Heinze's non-compete term was approaching, Heinze contacted Mandava to discuss a potential business relationship. In particular, Heinze was interested in marketing and selling Repar's TEBUCON products in Oregon. Willowood, however, did not have a FIFRA registration from the EPA that would permit the company to sell or distribute such agricultural pesticides under its own name. 11. To put himself in a position to lawfully sell and distribute pesticides like Repar's TEBUCON products, Heinze proposed that Willowood enter into distribution arrangements with Repar allowing Willowood to sell TEBUCON 45 DF and TEBUCON 3.6F under labels showing Willowood as the distributor. To facilitate discussions about this proposal, Heinze signed an EPA "supplemental distribution" agreement (EPA Form 8570-5) for each product. Submission of this form is a legal requirement for any company to sell an EPA-registered product under its own company name when that company does not have its own registration. By jointly submitting this form with Repar, Willowood was able to become a lawful distributor or "subregistrant" of Repar's registered products. Heinze also signed a nondisclosure agreement to protect the secrecy of product formulas and other proprietary information he and Willowood might receive from Repar. Willowood promised Repar that it would not use the name TEBUCON except for sales authorized under the EPA Form 8570-5 agreement for that product. 12. EPA Form 8570-5 requires that the subregistrant's product be manufactured and packaged by the same person who manufactures and packages the registrant's product. To meet

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this requirement for Repar's TEBUCON 3.6F product, Willowood and Repar jointly reached agreement with a third-party formulator/packager in Arkansas. Willowood and Repar also entered into a formulating and packaging agreement for TEBUCON 45 DF between themselves and a third-party formulator/packager in Texas, who sent finished product to both Repar and Willowood under Repar's label. In both instances,Willowood agreed that Repar would be the exclusive supplier of technical grade tebuconazole for both products. 13. Willowood agreed to these terms verbally, and pledged to enter into a written contract reflecting these terms. In reliance on Willowood's representations regarding Repar's exclusivity as Willowood's supplier of technical-grade tebuconazole and Willowood's representations regarding confidentiality, Repar disclosed to Willowood its proprietary formulas for its two formulated TEBUCON products. After it received Repar's formulas, however, Willowood failed to execute a written contract confirming the terms on which the parties had agreed. 14. In reliance upon and subject to Willowood's representations and agreements, Repar granted Willowood a license to distribute and sell products in connection with the TEBUCON mark as an EPA subregistrant of Repar for the TEBUCON 45 DF and 3.6F products, and subject to Repar's quality control. Repar did not grant the license for Willowood to use Repar's TEBUCON mark under any other circumstances. Willowood subsequently marketed the two formulated products under Repar's TEBUCON mark and subject to Repar's registration at EPA for these products.

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15. Willowood later approached Repar seeking permission to obtain primary EPA registrations (as opposed to sub-registrations) for the 45 DF and 3.6F tebuconazole formulations. Willowood asked Repar for assistance in this endeavor, and specifically sought permission to cite Repar's product chemistry data in support of its primary registration applications. In reliance upon Willowood's promises to maintain the confidentiality of this data, to use Repar as its sole supplier of technical-grade tebuconazole, and to use a trade name other than TEBUCON in connection with Willowood's own products containing tebuconazole, Repar gave Willowood permission to cite its data. Again, Willowood pledged to enter into a written contract formalizing this agreement. 16. After Willowood had filed its applications at EPA to register the 45 DF and 3.6F formulations in its own name, and in direct contravention of its earlier representations and agreements, Willowood reneged on its pledge to sign formal written agreements confirming that Willowood would purchase technical-grade tebuconazole exclusively from Repar. To the contrary, Willowood advised Repar that it would not be purchasing tebuconazole from Repar in the future. At approximately the same time, Willowood entered into subregistration agreements with another registrant of the two tebuconazole formulations, thereby circumventing Repar as a supplier of technical tebuconazole. On information and belief, Willowood also had the thirdparty formulator/packager in Texas take surplus technical tebuconazole belonging to Repar and use it to make a second batch of the 45 DF formulation, which Willowood then sold on its own account. These developments understandably prompted Repar to withdraw its support for

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Willowood's applications for primary EPA registrations. Willowood, however, was able to refile its applications using data from another supplier, and the applications were successful. 17. Unbeknownst to Repar, Willowood had identified the products in its re-filed EPA registration applications as "WILLOWOOD TEBUCON 45DF" and "WILLOWOOD TEBUCON 3.6 SC," literally, and intentionally, copying outright Repar's TEBUCON trademark. 18. Willowood subsequently began using Repar's TEBUCON mark in connection with the sale and distribution of its own tebuconazole products. Repar had not granted Willowood any license to do this. 19. On information and belief, Willowood's products are also being produced using Repar's confidential formulas, which were obtained by Willowood under false pretenses. 20. Since at least as early as 2008, Repar has continuously used in the United States in interstate commerce the TEBUCON mark in connection with the sale and distribution of products with tebuconazole as the active ingredient. The TEBUCON mark immediately and inherently signified the quality, reputation, and source of these products, and Repar has owned protectable trademark rights in the TEBUCON mark beginning with its first use. 21. In addition to its common law trademark rights in the TEBUCON mark, on August 23, 2011, the U.S. Patent and Trademark Office ("PTO") issued to Repar federal

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trademark registration No. 4,015,686 for the TEBUCON mark for various types of pesticide 2
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products. Federal trademark registration 4,015,686 is valid and subsisting. 22. As a result of Repar's own use and licensed use of the TEBUCON mark, relevant consumers understand that the TEBUCON mark distinguishes and identifies Repar's products. As a result of Repar's use and promotion of the TEBUCON mark, the relevant public has come to associate the TEBUCON mark with Repar. 23. Willowood's unlicensed use of the TEBUCON mark began after Repar established protectable trademark rights in the TEBUCON mark. Although Willowood's original use ofTEBUCON was licensed and controlled by Repar (notwithstanding that Willowood ultimately did not abide by all its obligations under the parties' agreement), Willowood's subsequent and current use ofTEBUCON is no longer associated or connected with Repar, or licensed, authorized, sponsored, endorsed, or approved by Repar.
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The products sold by Willowood under the TEBUCON mark are similar to, and compete with, the goods sold by Repar under the TEBUCON mark, and the parties' products are sold through similar and overlapping channels of trade. 25. Willowood's use of a confusingly similar imitation of Repar's TEBUCON mark is likely to deceive, confuse, and mislead purchasers and prospective purchasers into believing that the products offered by Willowood are manufactured by, authorized by, or in some manner associated with Repar, which they are not. The likelihood of confusion, mistake, and deception

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engendered by Willowood's misappropriation of Repar's mark is causing irreparable harm to the 2 3 4 5

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goodwill symbolized by the TEBUCON mark and the reputation for quality that it embodies. 26. On information and belief, Willowood knowingly, willfully, intentionally, and maliciously adopted and used a confusingly similar imitation of Repar's TEBUCON mark. 27. Willowood continues to improperly and maliciously use the TEBUCON mark in connection with its products in the marketplace, directly and intentionally infringing Repar's registered trademark.
FIRST CLAIM FOR RELIEF

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(Breach of Express Contract) (Against Willowood) 28. Plaintiff incorporates and realleges paragraphs 1 through 27 as if fully set forth herein. 29. Repar and Willowood formed two express contracts. The first was for Willowood's distribution of Repar's TECUCON 45 DF and TEBUCON 3.6F products on a subregistered basis. The second was for Repar's data support for Willowood's obtaining its own EPA registrations for the two formulated products it had earlier been distributing on a subregistered basis. The terms of each contract were as described above. Under the first contract, Willowood was able to develop a distribution network for tebuconazole products using

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Repar's registrations, product formulas, and trade name. Under the second contract, Willowood 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16
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used Repar's product formulas, trade names, and data to obtain its own EPA registrations. 30. Willowood subsequently breached these contracts by, inter alia, not using Repar as its sole supplier for technical-grade tebuconazole; by distributing tebuconazole using Repar's TEBUCON trademark without Repar's permission; and by misappropriating the formulas for 45 DF and 3.6F for its own use. 31. Willowood's breach ofthe parties' agreements has caused Repar damage in an amount to be proven at trial, but estimated to be at least $500,000. SECOND CLAIM FOR RELIEF (Breach of Implied-in-Fact Contract) (Against Willowood) 32. Plaintiff incorporates and realleges paragraphs 1 through 31 as if fully set forth herein. 33. Willowood's course of conduct and representations manifested its assent to the terms of the proposed agreement between the Repar and Willowood. 34. As a consequence of Willowood' s breach of the implied agreement, Repar is entitled to damages to be proven at trial but estimated to be at least $500,000.

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THIRD CLAIM FOR RELIEF

(Quasi-ContractIUnjust Enrichment) (Against Willowood) 35. Plaintiff incorporates and realleges paragraphs 1 through 34 as fully set forth

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36.
Repar conveyed a benefit on Willowood by, inter alia, permitting it to buy technical-grade tebuconazole on favorable terms and by allowing Willowood to develop a distribution network for tebuconazole formulations using Repar' s products, EPA registration and trade name. Had Repar not conferred these benefits upon Willowood, it would have been far more difficult and expensive for Willowood to establish a tebuconazole product distribution business. 37. Willowood was aware that it had received these benefits from Repar. 38. Repar had a reasonable expectation that Willowood would pay for the benefits it received, and Willowood should reasonably have expected to do so. Under the circumstances alleged in this complaint, Willowood's retention of the benefits, without requiring Willowood to pay Repar, would be unjust. 39. Repar is entitled to the value of the benefits it conferred on Willowood, which will be proven at trial but is estimated to be at least $500,000.

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FOUTH CLAIM FOR RELIEF

(Misappropriation of Trade Secrets)
(ORS 646.461 et seq.)
(Against Willowood)

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Plaintiff incorporates and realleges paragraphs 1 through 39 as if fully set forth herein.
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Repar's formulas for TEBUCON 45 OF and TEBUCON 3.6 SC (the "formulas") constituted a trade secret, in that they derive independent economic value from not being generally known to the public or to other persons who could obtain economic value from their disclosure or use.
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Repar took reasonable steps under the circumstances to maintain the secrecy of the formulas. 43. Willowood misappropriated Repar's trade secrets by using the secrets without Repar's consent, when Willowood knew or had reason to know that its knowledge of the formulas was acquired in circumstances requiring that it maintain their secrecy or limit their use. In addition, Repar's disclosure of the formula to Willowood created an implied promise by Willowood not to appropriate the formula for its own use.

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44. Repar is entitled to an order enjoining Willowood's use or disclosure of Repar's trade secrets, pursuant to ORS 646.463. 45. As a result of the misappropriation, Repar has suffered money damages in an amount to be proven at trial, but estimated to be at least $500,000. 46. Willowood's misappropriation was willful. Pursuant to ORS 646.465(3), Repar requests punitive damages in the amount twice that of its actual money damages. 47. Because Willowood's misappropriation was willful, Repar is also entitled to its reasonable attorney fees pursuant to ORS 646.467.
FIFTH CLAIM FOR RELIEF

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herein.

(Federal Trademark Infringement) (Against Willowood and Heinze)

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Plaintiff incorporates and realleges paragraphs 1 through 47 as if fully set forth

49. Willowood's use of confusingly similar imitations of Repar's TEBUCON mark is likely to cause confusion, deception, and mistake by creating the false and misleading impression that Willowood's products are manufactured, produced, distributed, endorsed, sponsored, approved, or licensed by Repar, or are associated or connected with Repar.

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50. Willowood has used a mark confusingly similar to Repar's federally registered TEBUCON mark in violation of 15 U.S.C. 1114. Willowood's activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion and deception of members of the trade and public, and, additionally, injury to Repar's goodwill and reputation as symbolized by the registered TEBUCON mark, for which Repar has no adequate remedy at law. 51. Willowood's actions demonstrate an intentional, willful, and malicious intent to trade on the goodwill associated with Repar's federally registered TEBUCON mark, to Repar's great and irreparable injury. 52. Willowood has caused and is likely to continue causing substantial injury to the
public and to Repar, and Repar is entitled to injunctive relief and to recover Willowood's profits,
actual damages, enhanced profits and damages, costs, and reasonable attorneys' fees under 15
U.S.C. 1114, 1116, and 1117.
53. Heinze authorized, approved, and directed Willowood's infringement of Repar's
TEBUCON mark. As a result, he is personally liable for that infringement.

III
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SIXTH CLAIM FOR RELIEF (Federal Unfair Competition) (Against Willowood and Heinze) 54. Plaintiff incorporates and realleges paragraphs I through 53 as if fully set forth herein. 55. Willowood's use of confusingly similar imitations of Repar's TEBUCON mark has caused and is likely to cause confusion, deception, and mistake by creating the false and misleading impression that Willowood's goods are manufactured or distributed by Repar, are affiliated, connected, or associated with Repar, or have the sponsorship, endorsement, or approval of Repar.
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Willowood has made false representations, false descriptions, and false designations of its goods in violation of 15 U.S.C. 1125(a). 57. Willowood's activities have caused and, unless enjoined by this Court, will continue to cause a likelihood of confusion and deception of members of the trade and public, as well as injury to Repar's goodwill and reputation as symbolized by the TEBUCON mark, for which Repar has no adequate remedy at law.

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Willowood's actions demonstrate an intentional, willful, and malicious intent to trade on the goodwill associated with Repar's TEBUCON mark to the great and irreparable injury of Repar. 59. Willowood's conduct has caused, and is likely to continue causing, substantial injury to the public and to Repar. Repar is entitled to injunctive relief and to recover Willowood's profits, actual damages, enhanced profits and damages, costs, and reasonable attorneys' fees under 15 U.S.C. 1125(a), 1116, and 1117. 60. Heinze authorized, approved, and directed Willowood's acts of unfair competition. As a result, he is personally liable for those acts. SEVENTH CLAIM FOR RELIEF (Common Law Trademark Infringement and Unfair Competition) (Against Willowood and Heinze) 61. Plaintiff incorporates and realleges paragraphs 1 through 60 as if fully set forth herein. 62. Willowood's acts constitute common law trademark infringement and unfair competition, and have created and will continue to create, unless restrained by this Court, a likelihood of confusion to the irreparable injury of Repar. Repar has no adequate remedy at law for this injury.

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63. On information and belief, Willowood acted with full knowledge of Repar's use of, and statutory and common law rights to, the TEBUCON mark and without regard to the likelihood of confusion of the public created by Willowood's activities. 64. Willowood's actions demonstrate an intentional, willful, and malicious intent to trade on the goodwill associated with Repar's TEBUCON mark to the great and irreparable injury of Repar. 65. As a result of Willowood's acts, Repar has been damaged in an amount not yet determined or ascertainable. At a minimum, however, Repar is entitled to injunctive relief, an accounting of Willowood's profits, damages, and costs. Further, in light of the deliberately fraudulent and malicious use of confusingly similar imitations of Repar's TEBUCON mark, and the need to deter Willowood from engaging in similar conduct in the future, Repar additionally is entitled to punitive damages. 66. Heinze authorized, approved, and directed Willowood's infringement of Repar's TEBUCON mark. As a result, he is personally liable for that infringement.

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WHEREFORE, Repar respectfully requests the entry ofjudgment against

defendants as follows: 1. With respect to its First Claim for Relief, an award of damages against Willowood to be proven at trial, but estimated to be in excess of $500,000;

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2. With respect to its Second Claim for Relief, in the alternative to an award under the First Claim for Relief, an award of damages against Willowood to be proven at trial, but estimated to be in excess of $500,000; 3. With respect to its Third Claim for Relief, an award of damages against Willowood to be proven at trial, but estimated to be in excess of $500,000; 4. With respect to its Fourth Claim for Relief, an order enjoining Willowood's use of Repar's trade secrets, and an award of damages against Willowood to be proven at trial but estimated to be in excess of $500,000, plus interest, plus punitive damages; 5. With respect to its Fifth through Seventh Claims for Relief, the following relief: a. Willowood and all of its agents, officers, employees, representatives,

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successors, assigns, attorneys, and all other persons acting for, with, by, through, or under authority from Willowood, or in concert or participation with Willowood, and each of them, be enjoined permanently, from:

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using Repar's TEBUCON mark or any other copy, reproduction, colorable imitation, or simulation of Repar's TEBUCON mark on or in connection with Willowood's products;

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using any trademark, logo, design, or source designation of any kind on, or in connection with, Willowood's goods that is a copy, reproduction, colorable imitation, or simulation of, or confusingly similar to Repar's TEBUCON mark;

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using any trademark, logo, design, or source designation of any kind on or in connection with Willowood's goods that is likely to cause confusion, mistake, deception, or public misunderstanding that such goods are

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produced or provided by Repar, are sponsored or authorized by Repar, or are in any way connected or related to Repar;
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passing off, palming off, or assisting in passing off or palming off Willowood's goods as those of Repar, or otherwise continuing any and all acts of unfair competition as alleged in this Complaint;

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b.

Willowood be ordered to cease offering for sale, distributing , marketing,

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promoting, and selling, and to recall and retrieve all products bearing the TEBUCON mark or any other confusingly similar variation, which are in Willowood's possession or have been shipped by Willowood or under its authority, to any customer, including, but not limited to, any wholesaler, distributor, distribution center, retail store, consignor, or marketer, and also to deliver to each such customer or other third party a copy of this Court's order as it relates to said injunctive relief against Willowood; c. Willowood be ordered to deliver up for impoundment and for destruction,

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all products, boxes, labels, tags, signs, packages, receptacles, advertising, promotional material, stationary, or other materials in the possession, custody, or under the control of Willowood that are found to adopt, use, or infringe any of Repar's trademarks, or that otherwise unfairly compete with Repar and Repar's products;

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d.

Willowood be compelled to account to Repar for any and all profits

derived by Willowood from the sale or distribution of infringing goods as described in this Complaint; e. Willowood and Heinze be ordered to pay all damages resulting from the

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acts forming the basis of Repar's Fifth through Seventh Claims for Relief;

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f.

Based on Willowood's knowing and intentional use of confusingly similar

imitations of Repar's TEBUCON mark, the damages awarded be trebled and the award of Willowood's profits be enhanced as provided for by 15 U.S.C. 1117(a) and (b);

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Based on Willowood's willful and deliberate infringement of Repar's

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marks, and to deter such conduct in the future, an award of punitive damages; 6. An award of Repar's costs and reasonable attorneys' fees; 7. Willowood be required to pay prejudgment and post-judgment interest on the damages and profits awards; and 8. Such other relief as the Court deems just and proper.

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By: sf JeffS. Pitzer Jeff S. Pitzer Bryan S. Geon PITZER LAW
101 SW Main St., Suite 805
Portland, OR 97204
Telephone: (503) 227-1477
Facsimile: (503) 227-5839
Attorneys for Plaintiff REPAR CORPORAnON

Page 20 - COMPLAINT FOR TRADEMARK INFRINGEMENT, BREACH OF CONTRACT, AND OTHER CLAIMS