Case 8:19-cv-01760 Document 1 Filed 09/16/19 Page 1 of 12 Page ID #:1

1 Marc E. Hankin, SBN 170505

E-Mail: Marc@HankinPatentLaw.com
2
Anooj Patel, SBN 300297
3 E-Mail: Anooj@HankinPatentLaw.com
HANKIN PATENT LAW, APC
4
12400 Wilshire Boulevard, Suite 1265
5 Los Angeles, CA 90025
Phone: (310) 979-3600
6
Fax: (310) 979-3603
7
Attorneys for Plaintiff,
8
ADDADAY LLC
9

10
UNITED STATES DISTRICT COURT
11 CENTRAL DISTRICT OF CALIFORNIA
12

13 Addaday LLC, a California Case No.: 8:19-CV-01760

14
limited liability company,
VERIFIED COMPLAINT FOR
15 Plaintiff, DECLARATORY JUDGMENT OF:
16
v.
1) PATENT NONINFRINGEMENT;
17 Hyper Ice, Inc., a California 2) PATENT INVALIDITY;
18
corporation, 3) TRADE DRESS
NONINFRINGEMENT; AND
19 Defendant. 4) TRADE DRESS INVALIDITY.
20

21

22

23

24

25

26

27

28
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
1
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1 Plaintiff, Addaday LLC (“Addaday” or “Plaintiff”), for its Verified Complaint

2 for Declaratory Judgment against Defendant Hyper Ice, Inc. (“Hyper” or
3 “Defendant”) alleges as follows.
4 JURISDICTION AND VENUE
5 1) This Verified Complaint arises under the Federal Declaratory Judgment Act, 28
6 U.S.C. §§ 2201 & 2202 et seq. and the Patent laws of the United States, Title 35 of
7 the United States Code, 35 U.S.C § 100 et seq. This Court has subject matter
8 jurisdiction over this Verified Complaint pursuant to 28 U.S.C. §§1331 & 1338(a).
9 2) Venue is proper pursuant to 28 U.S.C. § 1391, as a substantial part of the events
10 described herein occurred in this judicial district, and Hyper Ice is subject to
11 personal jurisdiction in this judicial district, inter alia, because the effect of its
12 threatening Addaday with Patent Infringement takes place entirely within this
13 judicial district and Hyper Ice maintains a place of business at 15440 Laguna
14 Canyon Road, Suite 230, Irvine, California 92618, thus subjecting itself to the
15 jurisdiction and venue of this Honorable District Court.
16 3) This Verified Complaint sets forth four Claims for Declaratory Judgment pursuant
17 to 28 U.S.C. §§ 2201 & 2202 et seq., in which Addaday desires a declaration of
18 rights in the form of a Judgment against Hyper.
19 4) An actual case and controversy exists between the Parties, in view of Hyper’s
20 September 13, 2019 letter to Addaday, which alleges that Addaday is infringing
21 certain Patent and Trademark rights allegedly held by Hyper, and said letter
22 explicitly threatens Addaday with litigation (“the September 13 Letter”). A true
23 and correct copy of the September 13, 2019 Letter is attached hereto as Exhibit A.
24 PARTIES
25 5) Addaday is a California limited liability company having a principal place of
26 business at 2500 Broadway, F125, Santa Monica, CA 90404.
27 6) On information and belief, Hyper is a California corporation having a principal
28 place of business at 15440 Laguna Canyon Road, Suite 230, Irvine CA 92618.
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
2
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1 FACTUAL BACKGROUND
2 7) Since 2012, Addaday has provided a number of health and fitness products, many
3 focusing in the field of massage devices.
4 8) As early as 2013, people began affixing massage implementations to the heads of
5 jigsaw power tools, such that the jigsaw tools with the massage implementations
6 were capable of providing tissue massages.
7 9) Over the years, various entities adapted this jigsaw tool with massage
8 implementations into a “massage gun”, which has become an extremely popular
9 type of product, made and sold under many different brands by many companies.
10 10) Massage guns generally take the shape of a device having a main body, from
11 which a handle extends downward, and a massaging portion extends forward.
12 Many devices also comprise protrusions extending upward and rearward.
13 11) In 2018, Addaday introduced its own wired massage gun product, and in 2019
14 introduced its own wireless massage gun product, the Addaday BioZoom
15 Massager.
16 12) The Addaday BioZoom Massager follows the same general shape as the
17 numerous massage guns currently available, while incorporating significant
18 structural and design elements that differentiate it from the myriad of available
19 competitors.
20 Hyper’s Alleged Patent And Trademark Rights
21 13) According to the United States Patent Office, Hyper filed U.S. Design Patent
22 Application No. 29/637,855 on February 22, 2018, which issued into U.S. Design
23 Patent No. D855,822 on August 6, 2019 (“the Hyper Design Patent”). A true and
24 correct copy of the Hyper Design Patent is attached hereto as Exhibit B.
25 14) The Hyper Design Patent claims “[t]he ornamental design for a “percussive
26 massage device,” as shown and described.”
27 15) The only “percussive massage device” that is “shown and described” pursuant
28 to the claim is presented in Figures 1-8 of the Hyper Design Patent (see Exhibit B).
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
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1 16) The Hyper Design Patent includes the disclaimer that “[t]he broken lines in the
2 drawings are for the purpose of illustrating portions of the percussive massage
3 device, which form no part of the claimed design” (see Exhibit B).
4 17) The only portion of the Figures of the Hyper Design Patent that are in broken
5 line format is the portion of the “percussive massage device” that engages a tip,
6 wherein the tip would comprise a mechanism for connecting to a massage
7 attachment.
8 18) In the September 13 Letter, Hyper alleges that it has a Trade Dress in the shape
9 of Hyper’s Hypervolt product. A true and correct copy of a representation of the
10 Hypervolt product is attached hereto as Exhibit C.
11 19) The Hypervolt product practices the Hyper Design Patent.
12 20) In the September 13 Letter, Hyper alleges that the Addaday BioZoom Massager
13 infringed both the Hyper Design Patent and Trade Dress owned by Hyper based on
14 the Hypervolt product.
15 21) Hyper alleges that it owns Trade Dress Rights in the shape of the Hypervolt
16 product.
17 22) Trade Dress is designed to identify the source of origin of goods, to assure
18 consistency of quality on repeat purchases, and to serve as an advertisement by
19 which a manufacturer can bypass individual retailers to reach consumers directly.
20 Additionally, Trade Dress protection may not be granted on a design that is
21 inherently functional. If found to be functional, the Trade Dress is invalid and
22 unenforceable.
23 23) The purpose of both Trademark and Patent protection is to enrich the
24 consuming public based on different considerations. “[A]ttempting to protect by
25 way of trademark the very same advances that were protected … by patent [is an
26 attempt to] impermissibly … extend the patent grant.” Mech. Plastics Corp. v.
27 Titan Techs., Inc., 823 F. Supp. 1137, 1147 (S.D.N.Y. 1993). Put simply, it is
28 improper to protect by Trade Dress that which was previously protected by Patent.
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
4
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1 24) The Hyper Design Pa;tent and Hyper Trade Dress protect the same shape.
2 25) The September 13 Letter demands that Addaday “1. Immediately cease and
3 permanently desist the sale, marketing, advertising, production, manufacturing
4 and/or distribution of any product whatsoever whose configuration resembles, is
5 confusingly similar to, or infringes Hyperice’s intellectual property rights in the
6 HYPERVOLT; 2. Provide Hyperice with all records, financial and otherwise,
7 arising out of or related to your marketing, manufacturing, fabrication, purchasing,
8 sales, shipments of Addaday.com’s BioZoom, commencing with the date you first
9 engaged in the same in any market and in any media throughout the world; 3.
10 Reimburse Hyperice for its legal fees and costs in pursuing this matter; and 4.
11 Execute a Settlement Agreement which includes, inter alia, the foregoing and your
12 consent to exclusive jurisdiction, venue, injunctive relief, and a recovery of
13 attorneys’ fees for any violation thereof” (see Exhibit A).
14 26) In the September 13 Letter, Hyper stated that “it will file suit absent
15 [Addaday’s] written agreement to comply with the foregoing [demands] by the
16 close of business on Monday, September 23, 2019” (see Exhibit A).
17 27) Accordingly, Addaday is under a reasonable apprehension of lawsuit from
18 Hyper because Hyper has: (1) alleged that the Addaday BioZoom Massager
19 infringes the Hyper Design Patent and alleged Trade Dress in the same exact shape
20 covered by the Hyper Design Patent; and (2) threatened to file a lawsuit against
21 Addaday for infringement of the Hyper Design Patent and Trade Dress.
22 28) Addaday denies that any of its products infringe any claim of the Hyper Design
23 Patent, and makes this denial based on Addaday’s analysis of the Hyper Design
24 Patent and the Addaday BioZoom Massager.
25 29) To resolve the legal and factual questions raised by Hyper, and to afford relief
26 from the uncertainty that has precipitated, Addaday is entitled to a Declaratory
27 Judgment stating that Hyper is barred from asserting the Hyper Design Patent
28 against Addaday, that its products do not infringe any patent allegedly owned by
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
5
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1 Hyper, and/or that the Hyper Design Patent.

2 30) Addaday also seeks reimbursement for its reasonable Attorneys’ Fees and
3 Taxable Costs that have had to be expended as a result of Hyper’s frivolous claims
4 of Patent Infringement of the Hyper Design Patent and Trade Dress Infringement.
5 31) As a result of Hyper’s frivolous claims, Addaday has been forced to expend time
6 and money defending itself, through analysis of the allegations contained in the
7 September 13 Letter and preparation of this Verified Complaint by its Counsel.
8 32) Hyper’s threat of litigation has been brought in subjective bad faith, and is
9 objectively baseless, because there is simply no way that the Addaday BioZoom
10 Massager infringes the Hyper Design Patent, and because Hyper claims both Patent
11 and Trade Dress protection in the exact same design, protections that should be
12 mutually exclusive.
13 33) Hyper’s threat of litigation stands out from others with respect to the substantive
14 strength of Hyper’s legal rights and position, because Hyper has no chance of
15 success, yet it attempts to coerce Addaday to comply with Hyper’s unreasonable
16 and unwarranted demands.
17 34) Pursuant to 35 U.S.C. §285 and the line of cases starting with Octane Fitness
18 LLC v. Icon Health & Fitness Inc., 572 U.S. ___, 134 S. Ct. 1749 (2014), and its
19 progeny, Addaday is entitled to receive reimbursement of its reasonable Attorneys’
20 Fees and Taxable Costs that have had to be expended and will continue to have to
21 be expended in the future to resolve this litigation, because the present litigation is
22 an exceptional case, given the clear non-infringement and Hyper’s blatant attempt
23 to protect the exact same design by mutually exclusive protections of patent and
24 trademark.
25 FIRST CLAIM FOR RELIEF
26 (Declaratory Judgment of Non-Infringement
27 of U.S. Design Patent Number D855,822)
28 35) Addaday incorporates by reference each and every allegation set forth in the
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
6
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1 above 34 paragraphs as if fully set forth herein.

2 36) An actual controversy now exists between Addaday and Hyper, as to their
3 respective rights and responsibilities with respect to U.S. Design Patent No.
4 D855,822.
5 37) Hyper has alleged that Addaday has committed certain acts that infringe the
6 Hyper Design Patent, and Addaday denies that any of its products infringe any
7 claim of the Hyper Design Patent, either literally, directly, indirectly, under the
8 doctrine of equivalents, or by any other manner.
9 38) True and correct photographs of the Addaday BioZoom Massager mirroring
10 those views provided in the Hyper Design Patent are attached hereto as Exhibit D.
11 39) To resolve the legal and factual questions raised by Hyper and to afford relief
12 from the uncertainty that has precipitated, Addaday is entitled to a Declaratory
13 Judgment stating that Hyper is barred from asserting the Hyper Design Patent
14 against Addaday, that its product, the Addaday BioZoom Massager does not
15 infringe any patent allegedly owned by Hyper, and/or that the Hyper Design Patent
16 is invalid and/or unenforceable (at least as to Addaday itself).
17 SECOND CLAIM FOR RELIEF
18 (Declaratory Judgment of Invalidity of
19 U.S. Design Patent Number D855,822)
20 40) Addaday incorporates by reference each and every allegation set forth in the
21 above 39 paragraphs as if fully set forth herein.
22 41) An actual controversy now exists between Addaday and Hyper, as to their
23 respective rights and responsibilities with respect to U.S. Design Patent No.
24 D855,822.
25 42) To resolve the legal and factual questions raised by Hyper and to afford relief
26 from the uncertainty that has precipitated, Addaday is entitled to a Declaratory
27 Judgment stating that Hyper is barred from asserting the Hyper Design Patent
28 against Addaday, that its products do not infringe any patent allegedly owned by
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
7
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1 Hyper, and/or that the Hyper Design Patent is invalid for failing to comply with all
2 of the requirements of 35 U.S.C. §§ 101, 102, 103, and/or 112 and/or the Hyper
3 Design Patent is unenforceable (at least as to Addaday itself).
4 THIRD CLAIM FOR RELIEF
5 (Declaratory Judgment of Non-Infringement
6 of Hyper Trade Dress)
7 43) Addaday incorporates by reference each and every allegation set forth in the
8 above 42 paragraphs as if fully set forth herein.
9 44) An actual controversy now exists between Addaday and Hyper, as to their
10 respective rights and responsibilities with respect to Hyper’s alleged Trade Dress
11 rights to the Hypervolt Product shape.
12 45) Hyper has alleged that Addaday has committed certain acts that infringe the
13 Hyper Trade Dress, and Addaday denies that any of its products infringe any
14 protectible interest in any Hyper Trade Dress.
15 46) To resolve the legal and factual questions raised by Hyper and to afford relief
16 from the uncertainty that has precipitated, Addaday is entitled to a Declaratory
17 Judgment stating that Hyper is barred from asserting the alleged Hyper Trade
18 Dress against Addaday, that its product, the Addaday BioZoom Massager does not
19 infringe any Trade Dress allegedly owned by Hyper, and/or that the Hyper Trade
20 Dress is invalid and/or unenforceable (at least as to Addaday itself).
21 FOURTH CLAIM FOR RELIEF
22 (Declaratory Judgment of Invalidity of
23 U.S. Design Patent Number D855,822)
24 47) Addaday incorporates by reference each and every allegation set forth in the
25 above 46 paragraphs as if fully set forth herein.
26 48) An actual controversy now exists between Addaday and Hyper, as to their
27 respective rights and responsibilities with respect to the alleged Hyper Trade Dress.
28 49) The Hyper Trade Dress covers the same shape as that which is allegedly
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
8
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1 protected by the Hyper Design Patent.

2 50) The Hyper Trade Dress allegedly protects functional aspects of the Hypervolt
3 product.
4 51) To resolve the legal and factual questions raised by Hyper and to afford relief
5 from the uncertainty that has precipitated, Addaday is entitled to a Declaratory
6 Judgment stating that Hyper is barred from asserting the Hyper Trade Dress
7 against Addaday, that its products do not infringe any Trade Dress allegedly owned
8 by Hyper, and/or that the Hyper Trade Dress is invalid for failing to meet the
9 requirements of a Trademark.
10 PRAYER FOR RELIEF
11 Addaday respectfully requests that a Declaratory Judgment be Entered in its
12 favor and against Hyper as follows:
13 A. For a Declaratory Judgment that none of Addaday’s products, including the
14 Addaday BioZoom Massager infringe the Hyper Design Patent and/or any other
15 Patent allegedly owned by Hyper, and/or that the Hyper Design Patent is invalid
16 and/or unenforceable.
17 B. For a Permanent Injunction enjoining Hyper and their agents and attorneys from
18 further asserting rights pursuant to the Hyper Design Patent against Addaday
19 and/or its dealers and/or its customers.
20 C. For the recovery of Addaday’s reasonable Attorneys’ Fees and Taxable Costs
21 pursuant to 35 U.S.C. §285 and the Octane Fitness line of cases; and
22 D. For a Declaratory Judgment that none of Addaday’s products, including the
23 Addaday BioZoom Massager infringe the Hyper Trade Dress and/or any other
24 Trademark allegedly owned by Hyper, and/or that the Hyper Trade Dress is
25 invalid and/or unenforceable.
26 E. For a Permanent Injunction enjoining Hyper and its agents and attorneys from
27 further asserting rights pursuant to the Hyper Trade Dress against Addaday
28 and/or its dealers and/or its customers.
VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
9
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1 F. For such additional and further relief in law and equity, as the court may deem
2 just and proper.
3 Respectfully submitted,
4
HANKIN PATENT LAW, APC

5 /Marc E. Hankin/
6 Dated: September 16, 2019 Marc E. Hankin
Attorneys for Plaintiff,
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ADDADAY LLC
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VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
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JURY TRIAL DEMANDED

1

2 Pursuant to Federal Rule of Civil Procedure 38(b) and Local Rule 3-6(a),
3 Plaintiff hereby demands a Trial by Jury as to all issues so triable.
4

5
Respectfully Submitted,
HANKIN PATENT LAW, APC
6

7 Date: September 16, 2019 By: /Marc E. Hankin/

Marc E. Hankin (SBN# 170505)
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Attorney for Plaintiff,
9 Addaday LLC
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VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
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1 VERIFICATION
2 I am a co-owner and Member of PLAINTIFF, ADDADAY LLC. I have read
3 the foregoing Verified Complaint and Exhibits thereto, and I know the contents
4 thereof. The same is true of my own personal knowledge, except for those matters
5 which have been stated herein on information and belief, and as to those matters, I
6 believe them to be true.
7 I declare under the penalties of perjury of the State of California and the United
8 States that the foregoing is true and correct. Executed at Santa Monica, California, on
9 September 16, 2019.
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11 By: __________________________
12 Victor Yang
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VERIFIED COMPLAINT FOR DECLARATORY JUDGMENT: PATENT NONINFRINGEMENT;
PATENT INVALIDITY; TRADE DRESS NONINFRINGEMENT; AND TRADE DRESS INVALIDITY
12
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Exhibit A

9/16/2019
Ex.A, Pg. 13
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Rohini Roy
Mark Twain Plaza II
103 W. Vandalia Street, Suite 300
Edwardsville, Illinois 62025
Rohini.Roy@lewisbrisbois.com
Direct: 618.307.7624

September 13, 2019

VIA ELECTRONIC MAIL ONLY

Addaday.com
Attn: Owner or General Counsel
Email: addaday@addaday.com

Re: Cease and Desist: Unauthorized Use of HyperIce, Inc.’s Intellectual Property

Dear Sir or Madam:

This office is legal counsel to Hyper Ice, Inc. (“Hyperice”). Hyperice is an internationally
known purveyor of sports-injury-recovery devices. These devices, used by top athletes,
combine state of the art technology with sleek and appealing designs. One product that fits
this description is the “Hypervolt,” a cordless, state-of-the-art vibration massage device
that helps relax sore and stiff muscles to improve mobility.

An image of that product is here:

ARIZONA • CALIFORNIA • COLORADO • CONNECTICUT • FLORIDA • GEORGIA • ILLINOIS • INDIANA • KANSAS • KENTUCKY
LOUISIANA • MARYLAND • MASSACHUSETTS • MISSOURI • NEVADA • NEW JERSEY • NEW MEXICO • NEW YORK
NORTH CAROLINA • OHIO • OREGON • PENNSYLVANIA • RHODE ISLAND • TEXAS • WASHINGTON • WEST VIRGINIA
4839-6329-5397.1
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Addaday.com
September 13, 2019
Page 2

1. Trademark and Trade Dress Infringement

Hyperice owns federally registered trademarks in the words HYPERICE and HYPERVOLT.
(US Registration Nos. 5489979 and 5498668).) Pursuant to 15 U.S.C. Section 1114 et. sec.,
Hyperice also owns, and is entitled to protection in, Hypervolt’s trade dress, e.g. its product
configuration.

Trade dress protection applies to “a combination of any elements in which a product is

presented to a buyer,” including the shape and design of a product. J.Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 8:1, at 8-3 (4th ed. 2008). Courts have
interpreted this to mean that the manner in which goods are presented to perspective
purchasers, or the physical features of the product itself, may serve as an indication of
source so as to come within the purview of federal trademark law as set forth in 15 U.S.C.
Section 1125 et. sec. (Section 43(a) of the federal Lanham Act). See, El-Com Hardware, Inc.
v. Fireman’s Fund Ins. Co. (2001) 92 Cal.App.4th 205, 213-215. Trade dress has also been
defined as the “total image of a product and may include features such as shape, color or
color combinations, . . . but the design of the product itself may also constitute protectible
trade dress.” See, Clicks Billiards, Inc. v. Sixshooters, Inc. 251 F.3d 1252, 1257 (9th Cir. 2001);
Poof Toy Products, Inc. v. USF&G Co. (E.D. Mich. 1995) 891 F.Supp. 1228, 1232.1

Trade dress protection belongs to those who first use it in connection with specified goods
or services. Levi Strauss & Co. v. BlueBell, Inc., 778 F.2d 1352, 1363 (9th Cir. 1985).
Registration is not a prerequisite; a senior user may prohibit a junior user’s adoption of the
same or similar trade dress where such use is likely to cause consumer confusion. Dawn
Donut Co. v. Hart’s Food Stores, Inc. 267 F.2d 358 (2d Cir. 1959);Western Pub. Co. v. Rose Art
Indus. Inc., 910 F.2d 57, 59 (2d Cir. 1990); Dallas Cowboys Cheerleaders, Inc. v. Pussycat
Cinema, Ltd., 604 F.2d 200, 205 (2d Cir. 1979) (“The public’s belief that the mark’s owner
sponsored or otherwise approved the use of the [trade dress] satisfies the confusion

1
As with a company’s trademark, its trade dress is useful as a source identifier, allowing
consumers to identify and distinguish a company’s goods from those sold by others. See In
re Chemical Dynamics, supra; Aloha Pacific, Inc. v. California Ins. Guar. Assn. (2000) 79
Cal.App.4th 297, 318-320 (holding that trade dress is a species of trademark). To this end,
it puts the purchasing public on notice that goods bearing the relevant trade dress
originated from the same source and therefore is of equal quality. See generally Retail
Servs., Inc. v. Freebies Publ'g, 364 F.3d 535, 538 (4th Cir. 2004). Thus, a company’s trade
dress not only protects the goodwill represented by particular marks, but also allows
consumers readily to recognize products and their source, preventing consumer confusion
between products and between sources of products. In re Chem. Dynamics, supra, at 839
F.2d at 1571; OBX-Stock, Inc. v. Bicast, Inc., 558 F.3d 334, 339 (4th Cir.2009). Notably, the
products in question need not be identical. CAE, Inc. v. Clean Air Eng'g, Inc., 267 F.3d 660,
679 (7th Cir.2001).

LEWIS BRISBOIS BISGAARD & SMITH LLP

www.lewisbrisbois.com

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Addaday.com
September 13, 2019
Page 3

requirement.”). To the extent goods serve the same purpose or fall within the same general
class, the use of similar designations [e.g. their respective protected configuration]is more
likely to cause confusion." Lang v. Ret. Living Pub. Co., 949 F.2d 576, 582 (2d Cir.1991); Levi
Strauss & Co. v. BlueBell, supra.

Here, it has come to our attention that Addaday.com is manufacturing, selling and/or
distributing a massage gun that so closely mimics Hypervolt’s protected trade dress that it
is an illegal counterfeit that is likely to cause consumer confusion as to source, approval
and/or sponsorship of the same. The photographs below make this clear.

Hypervolt Addaday.com’s BioZoom2

Both products exhibit identical configurations. Such conduct is illegal under California state
and U.S. federal law (see e.g. 15 U.S.C. Section 1125 et. seq.), and may lead to costly legal
consequences for Addaday.com, its owner(s) and operators. It is a “text book example” of
blatant and willful trade dress infringement, false advertising and unfair competition. As
such, neither Hyperice nor any U.S. court will tolerate it.

2. Patent Infringement

In addition to the foregoing rights, Hyperice owns a patent in the Hypervolt (U.S. Patent No.
D855,822). As a direct counterfeit of the Hypervolt, your sale of that product infringes the
‘822 patent in every respect as evidenced by the comparison, below:

2
See https://www.addaday.com/collections/all-products/products/biozoom

LEWIS BRISBOIS BISGAARD & SMITH LLP

www.lewisbrisbois.com

4839-6329-5397.1
9/16/2019
Ex.A, Pg. 16
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Addaday.com
September 13, 2019
Page 4

US D855,822 Shape of Infringing Product (without TM)

Liability for patent infringement attaches immediately. See 35 U.S.C. §289. Under Section
289, a design patent infringer is “liable to the owner to the extent of his total profit,” that is,
all the profit made from the manufacture or sale “of the article of manufacture to which the
design or colorable imitation has been applied.” The term “article of manufacture” covers
both a product sold and protected component parts thereof. Thus a component of an
infringing product may give rise to an infringement claim despite the fact that consumers
cannot buy it separately from the infringing article. Under the Patent Act, the patentee may
recover its profits even where the accused infringer was unaware of the patented design,
and regardless of whether the infringement was willful. Id. To this end, even if
Addaday.com did not know its sale of the BioZoom infringed Hyperice’s valuable
intellectual property rights (as if this were possible), Addaday.com will still be liable for
damages arising out of that infringement.

3. Pending Legal Action; Demand that You Cease and Desist

Based on the foregoing, your advertising, selling and offering for sale a knock-off of the
Hypervolt should be sufficient for Hyperice to assert jurisdiction over you in a U.S. federal
court where you may face substantial liability. Indeed, if Hyperice is forced to file such a
suit, it will seek injunctive relief, an award of treble damages, a disgorgement of your
profits and a recovery of its legal fees and costs.

Hyperice intends to take such legal action within the next ten days unless you, and all those
working on your behalf:
LEWIS BRISBOIS BISGAARD & SMITH LLP
www.lewisbrisbois.com

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 Case 8:19-cv-01760 Document 1-1 Filed 09/16/19 Page 6 of 7 Page ID #:18

Addaday.com
September 13, 2019
Page 5

Immediately cease and permanently desist the sale, marketing,

advertising, production, manufacturing and/or distribution of
any product whatsoever whose configuration resembles, is
confusingly similar to, or infringes Hyperice’s intellectual
property rights in the HYPERVOLT;

Provide Hyperice with all records, financial and otherwise,

arising out of or related to your marketing, manufacturing,
fabrication, purchasing, sales, shipments of Addaday.com’s
BioZoom, commencing with the date you first engaged in the
same in any market and in any media throughout the world;

Reimburse Hyperice for its legal fees and costs in pursuing this
matter; and

Execute a Settlement Agreement which includes, inter alia, the

foregoing and your consent to exclusive jurisdiction, venue,
injunctive relief, and a recovery of attorney’s fees for any
violation thereof.

While Hyperice would prefer to resolve this matter without resorting to litigation, it will
file suit absent your written agreement to comply with the foregoing by the close of
business on Monday, September 23, 2019. To this end, we ask that you countersign this
letter where indicated below and return it to Rohini Roy, Esq. on or before that date.

Very truly yours,

/s/ Rohini Roy

Rohini Roy

cc: Jonathan S. Pink

Jim Huether, CEO, Hyper Ice, Inc.

RR

LEWIS BRISBOIS BISGAARD & SMITH LLP

www.lewisbrisbois.com

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 Case 8:19-cv-01760 Document 1-1 Filed 09/16/19 Page 7 of 7 Page ID #:19

Addaday.com
September 13, 2019
Page 6

Having read and understood the foregoing, the undersigned affirms and covenants on behalf
of Addadaycom and all those working on its behalf (including, without limitation, its owners,
operators, partners and affiliates) that it will immediately cease and desist all activities
identified, and otherwise comply with the requirements set forth in this letter. Furthermore,
Addaday.com will comply with such further demands that Hyperice may make arising out of
or relating to Hyperice’s efforts to stop the infringement that is the subject matter set forth in
this correspondence.

Addaday.com

By: _________________________________ Date: __________, 2019

Its: _________________________________

LEWIS BRISBOIS BISGAARD & SMITH LLP

www.lewisbrisbois.com

4839-6329-5397.1
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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 1 of 7 Page ID #:20

Exhibit B

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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 2 of 7 Page ID #:21

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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 3 of 7 Page ID #:22

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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 4 of 7 Page ID #:23

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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 5 of 7 Page ID #:24

9/16/2019
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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 6 of 7 Page ID #:25

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Case 8:19-cv-01760 Document 1-2 Filed 09/16/19 Page 7 of 7 Page ID #:26

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Case 8:19-cv-01760 Document 1-3 Filed 09/16/19 Page 1 of 4 Page ID #:27

Exhibit C

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Case 8:19-cv-01760 Document 1-3 Filed 09/16/19 Page 2 of 4 Page ID #:28

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Case 8:19-cv-01760 Document 1-3 Filed 09/16/19 Page 3 of 4 Page ID #:29

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Case 8:19-cv-01760 Document 1-3 Filed 09/16/19 Page 4 of 4 Page ID #:30

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 1 of 7 Page ID #:31

Exhibit D

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 2 of 7 Page ID #:32

Addaday BioZoom Photo Views Corresponding To U.S. Design Patent No. D855,822

FIG. 1 View Equivalent

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 3 of 7 Page ID #:33

FIG. 2 View Equivalent

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 4 of 7 Page ID #:34

FIG. 3 View Equivalent

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 5 of 7 Page ID #:35

FIG. 4 View Equivalent

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 6 of 7 Page ID #:36

FIG. 5 View Equivalent

FIG. 6 View Equivalent

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Case 8:19-cv-01760 Document 1-4 Filed 09/16/19 Page 7 of 7 Page ID #:37

FIG. 7 View Equivalent

FIG. 8 View Equivalent

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