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Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 1 of 22

IN THE UNITED STATES DISTRICT COURT


FOR SOUTHERN DISTRICT OF NEW YORK

)
CARDINAL MOTORS, INC, )
) Case No.____________
Plaintiff, )
)
v. ) COMPLAINT
)
H&H SPORTS PROTECTION USA INC., ) DEMAND FOR JURY TRIAL
)
)
Defendant. )
----------------------------------------------------- )

This is an action for design patent and trade dress in which Cardinal

Motors, Inc. (“Cardinal”) makes the following allegations against Defendant

H&H Sports Protection USA, Inc. (“H&H”) as follows:

PARTIES

1. Plaintiff Cardinal is a limited liability company duly created and existing

under the laws of the State of New York and operating from offices located in

Saugerties, New York”. Cardinal is the owner of all rights, title, and interest in

and has standing to sue for infringement of United States Patent No. D661,027

(the “‘027 Patent”), which is entitled “HELMET” (Exhibit A). Plaintiff Cardinal is

in the business of designing for sale and licensing motorcycle helmets with
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distinctive designs, and is further the owner of trade dress rights in the

appearance of its helmets, as more fully appears below.

2. Upon information and belief, Defendant H&H Sports Protection USA Inc.

(“H&H”) is a California corporation with a place of business at 100 E. Colorado

Blvd 2nd Floor, Pasadena CA, 91105 and manufactures and sells motorcycle

helmets, and has committed acts of infringement in this District.

3. H&H has previously and is presently infringing intellectual property

rights of Cardinal by, inter alia, making, using, selling, or importing to the United

States and/or exporting from the United States motorcycle helmets that infringe

one or more claims of the ‘027 Patent and its distinctive trade dress appearance.

4. These motorcycle helmets of Defendant have been manufactured and/or

made available for purchase by Defendant and interfere with and constitute

infringement of Cardinal’s trade dress and Cardinal’s patent rights under the

‘027 Patent, as more fully appears below.

JURISDICTION AND VENUE

5. This is an action for patent infringement and jurisdiction is founded on the

existence of a federal question arising under the Patent Act of 1952, more

particularly for patent infringement arising under the Acts of Congress relating

to patents, 35 U.S.C. §§ 271; 281-285. This court has jurisdiction under 28 U.S.C.

§§ 1331 and 1338(a).


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6. Jurisdiction is also based on diversity of citizenship, 28 U.S.C. §§ 1332 and

1338(a) as the defendant is a California Corporation and Plaintiff is a resident of

New York.

7. This is also an action for trade dress infringement. The Court has

jurisdiction of the federal trade dress claims under Section 43(a) of the

Trademark Act of 1946, 15 U.S.C. §§ 1121 and 1125(a), and the Judicial Code, 28

U.S.C. § 1331(a), and of the Lanham Act §§ 1332 and 1338 (a) in that this case

arises under the trademark laws of the United States, 15 U.S.C. § 1051 et seq., as

hereinafter more fully appears below.

8. Jurisdiction exists over related common law claims of unfair competition

herein under the provisions of 28 U.S.C. § 1338(b) in that said claims are joined

with a substantial and related claim under the trademark laws of the United

States, 15 U.S.C. § 1051 et seq. and/or the patent laws of the United States 35

U.S.C. § 101 et seq.

9. The Court has jurisdiction over related claims arising under the law of the

State of New York under the provisions of 28 U.S.C. § 1338(b) in that said claims

are joined with a substantial and related claim under the trademark laws of the

United States, 15 U.S.C. § 1051 et seq. and/or the patent laws of the United States

35 U.S.C. § 101 et seq.

10. Venue is proper under 28 U.S.C. § 1391.


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FACTS COMMON TO ALL COUNTS

The ‘027 Patent

11. On April 7, 2011, Chad Hodge filed a design patent application on a

helmet design. That application matured into the ‘027 Patent on May 29, 2012.

Chad Hodge has assigned all rights in and related to the ‘027 Patent to Cardinal.

In or around early 2013, Plaintiff Cardinal collaborated with Bell Sports, Inc.

(“Bell Helmets”) to release the Bullitt helmet (“The Bullitt”), which embodies the

patented design of the ‘027 Patent, and whose appearance and design is licensed

to Bell Helmets. The Bullitt is notable for its distinctive styling with a large eye

port, a distinctive silhouette and relatively thin chin bar. While The Bullitt allows

for personal stylization, mainly in terms of color, the various versions of The

Bullitt exhibit the distinctive substance of the design which has come to be

associated with Plaintiff as the originator of the design.

The Trade Dress

12. The Bullitt motorcycle helmet, designed by Cardinal, with its distinctive

trade dress has been known in the field for many years. Chad Hodge is a

prominent name in the motorcycle helmet design community and his name is

associated with The Bullitt.


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13. Hodge’s work has been featured in such prominent magazines as Bloomberg,

Fuel Magazine, Playboy, New York Magazine, and Maxim, among others. The

Bullitt Helmet received special attention in these features.

14. The Bullitt Helmet has been a very successful product and has been sold

since 2013.

15. The distinction and popularity of Plaintiff Cardinal’s design for the Bullitt

and its significance as an indication of origin with Plaintiff is further evidenced

by the popularity of The Bullitt over social media. The Instagram page for The

Bullitt has over 50,000 followers. Also on Instagram, the hashtag for the Bell

Bullitt has been tagged in more than 30,000 posts. Even misspellings or variations

of the hashtag generally have more than 500 posts each.

16. Plaintiff, long prior to the acts complained of herein, has been and is now

engaged in interstate commerce and/or the foreign commerce of the United

States by virtue of the ongoing sales of a wide and diverse line of products, and

other related products, including the above helmets having the design illustrated

in the ‘076 Patent.

17. The sculptural and graphic design of The Bullitt (hereinafter, the “Trade

Dress”), namely its sculptural configuration and/or its graphic and tonal finish

design features, is a protectable trade dress under §43(a) of the Lanham Act, by

virtue of extensive sales, publicity and online presence. The Trade Dress has
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been infringed by Defendant, as detailed and illustrated below, and continues to

be infringed on account of Defendant’s sale in commerce of piratical copies of

Plaintiff Cardinal’s motorcycle helmet design for The Bullitt. Plaintiffs derive

substantial benefits from selling products bearing the Trade Dress.

18. For years Plaintiff has exclusively licensed the patented design of The

Bullitt helmet with its associated trade dress to Bell Helmets. Due to long and

extensive use, as well as considerable effort and sums of money expended in

promoting the helmet and its distinctive trade dress appearance, the Trade Dress

has come to be associated with goods that originate with Cardinal as designer

and licensor.

Defendant’s Activities

19. Defendant has introduced for sale and marketed a so-called Torc T-1

helmet (the “HSP Copy”), which infringes upon Cardinal’s patent, trade dress,

and associated rights.

20. Cardinal’s original The Bullitt and the HSP Copy are illustrated in the

images below which show the exterior of the two helmets:


Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 7 of 22

The Bullitt HSP Copy

As indicated on the image above, both helmets use rivets 1 visible from the

outside to secure the inside chinstraps. Both also have a metallic reflective

borderline 2 on the bottom and a metallic reflective borderline 3 near the forward

opening. Both helmets use large decorative roundhead slotted screws with

oversized decorative washers 4 to secure the plastic visor. The similarity in

overall form factor reinforces the apparent objective of Defendant to make the

overall appearance of the HSP Copy confusingly similar to The Bullitt.

21. As illustrated in the images below, the size of the front openings of both

helmets measure almost identically in the vertical and horizontal directions. The

original and copied helmets approximately have a width of 21cm and a height of

12.5cm. These dimensions may be varied substantially in design of a helmet.

Both helmets also feature prominently a decorative leather overlay on top of the

front opening.
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The Bullitt HSP Copy

22. The helmets also share the same visual elements when viewed from the

bottom of the helmet, as illustrated in the image below. For example, both

helmets have brown leather-like arc segments, metallic bottom trim and a brown

leather trim patch. Both helmets use substantially the same color of leather for

their internal parts.

The Bullitt HSP Copy


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23. In addition, the chinstraps are rectangular nylon straps that terminate in a

semicircle with a contrasting snap, as illustrated below:

The Bullitt HSP Copy

24. As shown below, the internal cheek pads of Cardinal’s original The Bullitt,

with their combination of brown shiny leather and suede leather are again

copied by the HSP Copy with the objective of simulating The Bullitt and

confusing the consumer. The original and copied pads are both a jig saw puzzle

part V-shape and made of diamond-perforated pseudo-suede brown material.

Both have leather on the edges that connects the diamond perforated pseudo-

suede material to the back piece.


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The Bullitt HSP Copy

25. The reverse of the internal lining pads, pictured below, are also

substantially identical in appearance:

The Bullitt HSP Copy


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26. As illustrated below, the copying of the configuration and color plan of the

original by the HSP Copy evidences a transparent attempt by the Defendant to

confuse consumers into believing that the HSP Copy is The Bullitt.

The Bullitt HSP Copy

27. As illustrated below, the HSP Copy copies The Bullitt’s decorative leather

overlay on the back of the helmet (a design element that resonates with the

decorative leather overlay on the front of the helmet), again evidencing an intent

to confuse the consumer. The HSP copy also arbitrarily copies The Bullitt with

copied placement of a similar advertisement of DOT certification.


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The Bullitt HSP Copy


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28. The neck cushion holders on both helmets are identical. The holders are

also both finished with mesh fabric and have leather on the bottom.

The Bullitt HSP Copy

Willful Nature of the Infringement

29. On June 26, 2019, Plaintiff’s counsel, on behalf of Plaintiff, sent a letter to

Defendant notifying them of their infringement of Plaintiff’s rights. This letter

asserted Plaintiff’s rights over the infringed trade dress and over the ‘027 Patent.

Such infringement has continued and is thus willful and malicious.

COUNT ONE
DESIGN PATENT INFRINGEMENT
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30. As a cause of action and ground for relief, Plaintiff alleges and

incorporates by reference paragraphs 1 through 29 of this complaint as a part of

this Count.

31. Plaintiff Cardinal is the owner of all rights under United States Design

Patent No. D661,027, entitled “Helmet” drawn to a design for a motorcycle

helmet.

32. On May 29, 2012 the Design Patent (Exhibit A) was duly and legally issued

to Chad Hodge, and Hodge has assigned the Design Patent to Plaintiff Cardinal.

Plaintiff Cardinal is the owner of rights under the Design Patent, including the

right to bring action against Defendant as an infringer of the Design Patent.

33. Defendant has manufactured, used, sold, imported into the United States

and/or offered for sale in the United States products (including, without

limitation the HSP Copy) that (a) embody the decorative, sculptural and graphic

design of the helmet illustrated in the Design Patent, and (b) infringe the Design

Patent, including, without limitation, direct infringement, inducing infringement

and/or contributory infringement of the Design Patent.

34. Plaintiff Cardinal has never authorized Defendant at any time to make,

use, import or sell any products covered by the Design Patent.

35. Plaintiff has been damaged by Defendant’s infringement of the Design

Patent in an amount believed to be in excess of $2.5 million. Such damage


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includes, without limitation, lost profits, and/or royalty income, and/or

damages on account of convoyed sales. The Defendant has been unjustly

enriched by such infringement, on account of profits and/or convoyed sales and

such damage is believed to be in excess of $5 million. Plaintiff has also suffered

irreparable harm by Defendant’s infringement of the Design Patent and will

continue to suffer irreparable harm in the future unless Defendant is

preliminarily and permanently enjoined from infringing the Design Patent.

36. Defendant has had actual and/or constructive knowledge of the Design

Patent, and its infringement of the Design Patent has been, and continues to be,

willful, wanton, malicious and deliberate. The circumstances of such

infringement warrant finding the above-complained of infringement to be an

exceptional one, entitling Cardinal to treble damages.

COUNT TWO

FEDERAL UNFAIR COMPETITION AND TRADE DRESS INFRINGEMENT

37. As a cause of action and ground for relief, Plaintiff alleges and

incorporates by reference paragraphs 1 through 36 of this complaint as a part of

this Count.

38. Upon information and belief, long after Plaintiff created and invested

considerable effort and resources in Plaintiff’s Trade Dress, and in contravention


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of Plaintiff’s trade dress rights, Defendant adopted and used a design for its

helmets calculated to capitalize on the goodwill and reputation of Plaintiff’s

Trade Dress. Defendant had the objective of mimicking the Trade Dress as a

means of unfairly taking advantage of and profiting from Plaintiff’s image and

reputation in the marketplace. Defendant has distributed and continues to

distribute and advertise in interstate commerce, to the public, infringing helmets

and otherwise misappropriating the Trade Dress of The Bullitt for Defendant’s

own commercial advantage.

39. Defendant has used and continues to use derivatives and/or colorable

imitations of Plaintiff Cardinal’s Trade Dress in direct competition with Plaintiff.

Defendant has used and continues to use these infringing derivatives and/or

colorable imitations of Plaintiff’s Trade Dress in connection with sales, offering

for sale and distribution, advertising and promotion of goods in a manner that is

both calculated to and likely to cause confusion or mistake or to deceive

purchasers as to the source of origin of such goods.

40. Defendant has deliberately mislead and will continue to mislead

purchasers, and prospective purchasers, as well as the public at large, to believe,

contrary to fact, that Defendant’s goods are manufactured, marketed, sponsored,

or endorsed by, or otherwise affiliated with Plaintiff. Defendant is unfairly


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competing with Plaintiff by trading on and disparaging Plaintiff’s goodwill

symbolized by its Trade Dress.

41. Defendant’s acts of using the Trade Dress are a false description and

representation that said goods are made by, sponsored by and/or affiliated with

Plaintiff Cardinal. Said acts of using Cardinal’s Trade Dress are in violation of

15 U.S.C. § 1125 in that Defendant, inter alia, has used, in connection with

goods, a false designation of origin and a false description and

representation, including words, reproductions and other symbols tending to

falsely describe or represent the same and has caused such goods to enter

into interstate commerce, and/or are in violation of §43 of the Lanham Act as

constituting dilution of the Trade Dress.

42. As a direct and proximate result of these acts of unfair competition,

trade dress infringement and false designations of origin, together with the

other acts complained of herein, Plaintiff has sustained and will continue to

sustain monetary damages and irreparable injury to their business, goodwill,

reputation and profits, in an amount not presently known but believed to be

in excess of $2.5 million. Plaintiff is entitled to judgment for Defendant’s profits

believed to be in excess of $5 million and any damages, including lost royalty

income, sustained by Plaintiff in consequence of the deliberate nature of the

infringement by Defendant in an amount equaling three times said damages.


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43. By reason of the acts of Defendant herein alleged, Plaintiff has been

damaged, and, unless restrained and enjoined preliminarily and permanently,

Defendant has and will continue to deceive the public, and otherwise will cause

Plaintiff immediate and irreparable harm.

COUNT THREE

COMMON LAW AND STATE STATUTORY UNFAIR COMPETITION

44. As a cause of action and ground for relief, Plaintiff alleges and

incorporates by reference paragraphs 1 through 43 of this complaint as a part of

this Count.

45. The above complained of activities of Defendant constitute free-riding on

the reputation of Cardinal’s licensed products, seeking to sow where one has not

reaped, creation of consumer confusion with respect to the origin of Defendant’s

goods, unfair competition and unfair trade practices under the statutory and

common law of the several states.

Prayer for Relief

WHEREFORE, Plaintiff prays for the following relief:

a. A judgment that the Trade Dress is valid at law, and that Defendant

has infringed Plaintiff’s Trade Dress;

b. A judgment that the Design Patent is valid at law, and that

Defendant has infringed Plaintiff’s Design Patent;


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c. A permanent injunction enjoining and restraining Defendant, its

officers, directors, agents, servants, employees, attorneys, and all others acting

under or through it, directly or indirectly, from using the Trade Dress and

otherwise infringing rights of Plaintiff, and further from using products of

Plaintiff in advertising, promotion, marketing and the like;

d. For a permanent injunctions restraining Defendant, its officers,

directors, agents, servants, employees, attorneys, and all others acting under or

through it, directly or indirectly, from infringing the Design Patent of Plaintiff

Cardinal;

e. A judgment and order requiring to account to Plaintiff and for

Defendant to pay damages to Plaintiff, in an amount to be determined at trial but

believed to be in excess of $5 million on account of the complained of patent and

trade dress infringement, and unfair competition, with prejudgment interest, and

further awarding treble damages;

f. For an order requiring Defendant to account to Plaintiff for its unjust

enrichment and profits on infringing products and convoyed sales on account of

the complained of patent and trade dress infringement, and unfair competition,

and for Defendant to pay to Plaintiff the amount of such unjust enrichment and

profits, in an amount to be determined at trial but believed to be in excess of $5

million, with prejudgment interest;


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g. For an order requiring that all products, documents, materials,

labels, signs, products, packages, wrappings, receptacles, and advertisements in

Defendant’s possession or control bearing the design or any reproduction,

counterfeit, copy or colorable imitation thereof, and all plates, molds, matrices,

electronic files and other means of making the same shall be delivered up and

destroyed;

h. For an order requiring Defendant to recall from its distributors,

wholesalers, retailers, and customers any product bearing any reproduction,

counterfeit, copy or colorable imitation of the Trade Dress;

i. For a judgment according to the circumstances of the case, for such

sum above the amount found in actual damages, but not to exceed three times

such amount as the Court may deem just;

j. A judgment and order directing Defendant to pay the costs of this

action (including all disbursements) and attorneys’ fees; and

k. Such other and further relief as this Court may deem just and

equitable.

Respectfully submitted,

By: /s/ Anthony H. Handal


Anthony H. Handal
Handal & Morofsky, LLC
Attorney for Plaintiff
Case 7:20-cv-07899 Document 1 Filed 09/24/20 Page 21 of 22

83 East Avenue
Norwalk CT 06851
917 880-0811
Email: handal@HandalGlobal.com
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DEMAND FOR JURY TRIAL

Plaintiff, under Rule 38 of the Federal Rules of Civil Procedure, requests a

trial by jury of all issues so triable by right.

Dated: September 23, 2020

By: /s/ Anthony H. Handal


Anthony H. Handal
Handal & Morofsky, LLC
Attorneys for Plaintiff
83 East Avenue
Norwalk, CT 06851
917 880-0811
Email: handal@HandalGlobal.com
Case 7:20-cv-07899 Document 1-1 Filed 09/24/20 Page 1 of 6

Exhibit A
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