Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 1 of 82 Page ID #:1

Transcription

1 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 1 of 82 Page ID #:1

2 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 2 of 82 Page ID #: of this action pursuant to 28 U.S.C. 1331, 1338, and 15 U.S.C This Court has personal jurisdiction over the Defendants and venue is proper in this Judicial District pursuant to 28 U.S.C. 1391(b), (c) and (d), and 1400(b). Plaintiffs are informed and believe, and on that basis allege, that Defendants have conducted and continue to conduct business in this District and have engaged in the complained of activities in this Judicial District. The Parties 3. Plaintiff TTR is a Japanese corporation with its corporate headquarters and principal place of business at Edobori, Nishi-ku, Osaka , Japan. 4. Plaintiff TTC is a California corporation with corporate headquarters and principal place of business located at 5665 Plaza Drive, Suite 300, Cypress, CA Plaintiff TTC is the exclusive importer and distributor of "Toyo" brand tires, such as the Toyo Proxes 4, Toyo Open Country A/T II, and Toyo Open Country M/T tires. 5. Plaintiffs are informed and believe, and on that basis allege, that Defendant Hong Kong Tri-Ace Tire Co., Ltd. ("Tri-Ace HK") is a Hong Kong corporation located at Unit 602 6F, Causeway Bay Commercial Building 1 Sugar Street, Causeway Bay HK and that Tri-Ace HK is engaged in the business of manufacturing, using, exporting, importing, marketing, selling and/or offering for sale in this Judicial District the tires at issue in this lawsuit, including tires sold under the Tri-Ace and Mark Ma series names and brands, as well as advertising such tires in publications such as Tire Business that are distributed in this Judicial District and displaying such tires at industry trade shows, such as the Specialty Equipment Market Association s (SEMA) annual Las Vegas trade show to which tire industry personnel and buyers from this Judicial District regularly attend. Plaintiffs are further informed and believe, and on that basis allege, that Tri-Ace HK focuses on two main brands, TRI-ACE and Mark-Ma, and that the U.S. trademark registrations for Tri-Ace and Mark Ma are owned by Jinlin Ma, manager of Tri-Ace HK. Plaintiffs are additionally informed and believe, and on that basis allege, that Tri-Ace HK ships its Mud Gripper M/T from China to Defendant ITG Voma

3 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 3 of 82 Page ID #: Corporation in this Judicial District as alleged hereinbelow, and that Tri-Ace HK has entered into an agreement with MHT Wheels, a company located in this Judicial District, to supply private label Fuel Mud Gripper Tires to MHT in this Judicial District to complement MHT's Fuel line of wheels. 6. Plaintiffs are informed and believe, and on that basis allege, that Defendant Tri-Ace Wheel & Tire Corporation ( Tri-Ace USA ) is a Tennessee corporation with its principal place of business located at 6005 E Shelby Drive, Suite 6, Memphis, Tennessee , and that Tri-Ace USA is engaged in the business of importing, purchasing, using, marketing, selling and/or offering for sale in this Judicial District the tires at issue in this lawsuit, including tires sold under the Tri-Ace and Mark Ma series name and brand. 7. Plaintiffs are informed and believe, and on that basis allege, that Defendant Voma Tire Corporation ( Voma Tire ) is a Tennessee corporation with its principal place of business located at 5815 East Shelby Drive, Memphis, Tennessee , and an additional place of business located at Hertz Avenue, Moorpark, California , and that Tri-Ace is one of three brands belonging to Voma Tire. Plaintiffs are further informed and believe, and on that basis allege, that Voma Tire is engaged in the business of importing, purchasing, using, marketing, selling and/or offering for sale in this Judicial District the tires at issue in this lawsuit, including tires sold under the Tri- Ace series name and brand. 8. Plaintiffs are informed and believe, and on that basis allege, that Defendant ITG Voma Corp. ( ITG Voma ), a joint venture of Voma Tire and Chinese conglomerate Xiamen ITG Group Corp., is a Tennessee corporation with its principal place of business located 5815 East Shelby Drive, Memphis, Tennessee , and an additional place of business located at Hertz Avenue, Moorpark, California , and that ITG Voma is engaged in the business of importing, purchasing, using, marketing, selling, and/or offering for sale in this Judicial District the tires at issue in this lawsuit, including tires sold under the Tri-Ace series name and brand. Plaintiffs are further

4 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 4 of 82 Page ID #: informed and believe, and on that basis allege that Tri-Ace HK s Mud Gripper M/T is made in China and is subsequently shipped to California to ITG Voma. 9. Plaintiffs are informed and believe, and on that basis allege, that Defendant Doublestar Dong Feng Tyre Co., Ltd. ("Doublestar Tyre") is a Chinese corporation with its principal place of business located at No. 21 Hanjiang North Rd., Shiyan, Hubei, China Plaintiffs are further informed and believe, and on that basis allege, that Doublestar Tyre is engaged in the business of manufacturing, using, exporting, importing, marketing, selling, and/or offering for sale in this Judicial District the tires at issue in this lawsuit, including tires sold under the Mark Ma series name and brand. 10. Plaintiffs are informed and believe, and on that basis allege, that these Defendants have acted in concert with the other to form an enterprise, partnership, or other formal or informal business association or affiliation whose goal is the manufacturing and sale into, and transshipment through, this Judicial District, among others, copies of tires of the major manufacturers such as Toyo, with such tires being sold under the Tri-Ace and Mark Ma brands. Plaintiffs are further informed and believe, and on that basis allege, that pursuant to this association or affiliation, the Defendants use this Judicial District as a hub from which Defendants effectuate the importation, purchase, use, marketing, sale, and/or offer for sale, or transport of the infringing Tri-Ace and Mark Ma tires identified herein. 11. Plaintiffs are informed and believe, and on that basis allege, that as part of such association and/or affiliation, each of these Defendants has ongoing and systematic contacts with this Judicial District, including: placing the products accused of infringement herein into the stream of commerce knowing and expecting that such products would end up in this Judicial District, availing themselves of the Ports of Los Angeles and Long Beach in this Judicial District, and occupying business locations within this Judicial District,. 12. Plaintiffs are informed and believe, and on that basis allege, that the activities of Defendants as set forth in this Complaint arise out of the same transaction,

5 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 5 of 82 Page ID #: occurrence, or series of transactions or occurrences and/or involve common questions of law and fact common to all Defendants. 13. The acts complained of herein, and the claims asserted by TTR and TTC arise out of the same transaction, occurrence, or series of transactions or occurrences and involve common questions of law and fact common to TTR and TTC. Claim 1: Infringement of TTR s 424 Patent by the Tri-Ace Dub Tire 14. This is a claim by TTR against Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma and each of them for patent infringement under 35 U.S.C TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by reference. 16. On March 9, 2004, the U.S. Patent and Trademark Office duly and legally issued U.S. Patent No. D487,424 ("the 424 patent") to Takahashi et al. A true and correct copy of the 424 patent is attached to the Complaint as Ex. 1. The 424 patent claims an ornamental design for an automobile tire, as shown and described in Figures 1 through 6 of the 424 patent. The United States Patent and Trademark Office issued a certificate of correction attached as Ex. 2 for the 424 patent. 17. TTR is the owner of the entire right, title and interest in and to the 424 patent by assignment made on November 12, 2002, and recorded on November 21, TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have made, exported, imported, used, marketed, sold and/or offered for sale one or more tire products, including but not limited to the Tri-Ace Dub tire, that infringe the 424 patent. The design of this tire, in the eye of the ordinary observer, would appear substantially similar to the ornamental design of the 424 patent. 19. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have actively induced others, including each other, to directly infringe the 424 patent by aiding, abetting, encouraging,

6 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 6 of 82 Page ID #: and otherwise promoting the use, manufacture, sale and/or offer for sale by others, including each other, of infringing tire products, including but not limited to the Tri-Ace Dub tire, with knowledge of the infringement of the 424 patent and with the intent to cause such infringement and/or with willful blindness to the existence of the 424 patent. 20. TTR is informed and believes, and on that basis alleges, that the business model of Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma is built in large part upon deliberately copying the tire designs of major tire manufacturers such as TTR, and in conscious ignorance of the patent portfolios of such companies. 21. TTR is informed and believes, and on that basis alleges, that infringement of the 424 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma has been and continues to be willful and deliberate. 22. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have had notice and actual knowledge of the 424 patent before the filing of TTR s complaint with the U.S. International Trade Commission on August 14, 2013, and before the filing of this suit. 23. TTR has been damaged by infringement of the 424 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at trial, such damages including all of these Defendants' profits from the infringement alleged herein. 24. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma have irreparably injured Toyo and such injury will continue unless these Defendants are enjoined by this Court. Claim 2: Infringement of TTR s 200 Patent by the Tri-Ace Pioneer A/T Tire 25. This is a claim by TTR against Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma and each of them for patent infringement under 35 U.S.C TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by reference

7 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 7 of 82 Page ID #: On January 31, 2012, the U.S. Patent and Trademark Office duly and legally issued U.S. Patent No. D653,200 ("the 200 patent") to Kuwano. A true and correct copy of the 200 patent is attached to the Complaint as Ex. 3. The 200 patent claims an ornamental design for an automobile tire, as shown and described in Figures 1 through 12 of the 200 patent. 28. TTR is the owner of the entire right, title and interest in and to the 200 patent by assignment made on July 14, 2011, and recorded on October 7, TTR is informed and believes, and on that basis alleges, that Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have made, exported, imported, used, marketed, sold and/or offered for sale one or more tire products, including but not limited to the Tri-Ace Pioneer A/T tire, that infringe the 200 patent. The design of this tire, in the eye of the ordinary observer, would appear substantially similar to the ornamental design of the 200 patent. 29. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have actively induced others, including each other, to directly infringe the 200 patent by aiding, abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or offer for sale by others, including each other, of infringing tire products, including but not limited to the Tri-Ace Pioneer A/T tire, with knowledge of the infringement of the 200 patent and with the intent to cause such infringement and/or with willful blindness to the existence of the 200 patent. 30. TTR is informed and believes, and on that basis alleges, that infringement of the 200 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma has been and continues to be willful and deliberate. 31. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have had notice and actual knowledge of the 200 patent before the filing of TTR s complaint with the U.S. International Trade Commission, on August 14, 2013, and before the filing of this suit

8 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 8 of 82 Page ID #: TTR has been damaged by infringement of the 200 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at trial, such damages including all of these Defendants' profits from the infringement alleged herein. 33. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma have irreparably injured Toyo and such injury will continue unless these Defendants are enjoined by this Court. Claim 3: Infringement of TTR s 525 Patent by Tri-Ace Pioneer A/T Tire 34. This is a claim by TTR against Defendants and each of them for patent infringement under 35 U.S.C TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by reference. 36. On June 18, 2013, the U.S. Patent and Trademark Office duly and legally issued U.S. Patent No. D684,525 ("the 525 patent") to Kuwano. A true and correct copy of the 525 patent is attached to the Complaint as Ex. 4. The 525 patent claims an ornamental design for a tire, as shown and described in Figures 1 through 7 of the 525 patent. 37. TTR is the owner of the entire right, title and interest in and to the 525 patent by assignment made on July 14, 2011, and recorded on October 7, TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have made, exported, imported, used, marketed, sold and/or offered for sale one or more tire products, including but not limited to the Tri-Ace Pioneer A/T tire, that infringe the 525 patent. The design of this tire, in the eye of the ordinary observer, would appear substantially similar to the ornamental design of the 525 patent. 39. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have actively induced others, including each other, to directly infringe the 525 patent by aiding, abetting, encouraging,

9 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 9 of 82 Page ID #: and otherwise promoting the use, manufacture, sale and/or offer for sale by others of infringing tire products, including but not limited to the Tri-Ace Pioneer A/T tire, with knowledge of the infringement of the 525 patent and with the intent to cause such infringement and/or with willful blindness to the existence of the 525 patent. 40. TTR is informed and believes, and on that basis alleges, that infringement of the 525 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma has been and continues to be willful and deliberate. 41. TTR has been damaged by infringement of the 525 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at trial, such damages including all of these Defendants' profits from the infringement alleged herein. 42. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma have irreparably injured Toyo and such injury will continue unless these Defendants are enjoined by this Court. Claim 4: Infringement of TTR s 765 Patent by the Tri-Ace Pioneer A/T Tire 43. This is a claim by TTR against Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma and each of them for patent infringement under 35 U.S.C TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by reference. 45. On August 13, 2013, the U.S. Patent and Trademark Office duly and legally issued U.S. Patent No. D687,765 ("the 765 patent") to Kuwano et al. A true and correct copy of the 765 patent is attached to the Complaint as Ex. 5. The 765 patent claims an ornamental design for a tire, as shown and described in Figures 1 through 7 of the 765 patent. 46. TTR is the owner of the entire right, title and interest in and to the 765 patent by assignment made on July 14, 2011, and recorded on October 07, TTR is informed and believes, and on that basis alleges, that Defendants Tri

10 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 10 of 82 Page ID #: Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have made, exported, imported, used, marketed, sold and/or offered for sale one or more tire products, including but not limited to the Tri-Ace Pioneer A/T tire, that infringe the 765 patent. The design of this tire, in the eye of the ordinary observer, would appear substantially similar to the ornamental design of the 765 patent. 48. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have actively induced others, including each other, to directly infringe the 765 patent by aiding, abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or offer for sale by others, including each other, of infringing tire products, including but not limited to the Tri-Ace Pioneer A/T tire, with knowledge of the infringement of the 765 patent and with the intent to cause such infringement and/or with willful blindness to the existence of the 765 patent. 49. TTR is informed and believes, and on that basis alleges, that infringement of the 765 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma has been and continues to be willful and deliberate. 50. TTR has been damaged by infringement of the 765 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma in an amount to be determined at trial, such damages including all of these Defendants' profits from the infringement alleged herein. 51. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma have irreparably injured Toyo and such injury will continue unless these Defendants are enjoined by this Court. Claim 5: Infringement of TTR s 031 Patent by the Mark Ma Dakar M/T Tire 52. This is a claim by TTR against Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre and each of them for patent infringement under 35 U.S.C TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by

11 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 11 of 82 Page ID #: reference. 54. On May 4, 2010, the U.S. Patent and Trademark Office duly and legally issued U.S. Patent No. D615,031 ("the 031patent") to Osaka. A true and correct copy of the 031 patent is attached to the Complaint as Ex. 6. The 031 patent claims an ornamental design for an automobile tire, as shown and described in Figures 1 through 10 of the 031 patent. The United States Patent and Trademark Office issued a certificate of correction attached as Exhibit 10 for the 031 patent. 55. TTR is the owner of the entire right, title and interest in and to the 031 patent by assignment made on June 10, 2013, and recorded on June 13, TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have made, exported, imported, used, marketed, sold and/or offered for sale one or more tire products, including but not limited to the Mark Ma Dakar M/T tire, that infringe the 031 patent. The design of this tire, in the eye of the ordinary observer, would appear substantially similar to the ornamental design of the 031 patent. 57. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have actively induced others, including each other, to directly infringe the 031 patent by aiding, abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or offer for sale by others, including each other, of infringing tire products, including but not limited to the Mark Ma Dakar M/T tire, with knowledge of the infringement of the 031 patent and with the intent to cause such infringement and/or with willful blindness to the existence of the 031 patent. 58. TTR is informed and believes, and on that basis alleges, that the business model of Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma, and Doublestar Tyre is built in large part upon deliberately copying the tire designs of major tire manufacturers such as TTR, and in conscious ignorance of the patent portfolios of such companies

12 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 12 of 82 Page ID #: TTR is informed and believes, and on that basis alleges, that infringement of the 031 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre has been and continues to be willful and deliberate. 60. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have had notice and actual knowledge of the 031 patent before the filing of TTR s complaint with the U.S. International Trade Commission, on August 14, 2013, and before the filing of this suit. 61. TTR has been damaged by infringement of the 031 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre in an amount to be determined at trial, such damages including all of Defendants' profits from the infringement alleged herein. 62. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma, and Doublestar Tyre have irreparably injured Toyo and such injury will continue unless Defendants are enjoined by this Court. Claim 6: Infringement of TTR s 975 Patent by the Mark Ma Dakar M/T Tire 63. This is a claim by TTR against Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre and each of them for patent infringement under 35 U.S.C TTR hereby incorporates Paragraphs 1 through 13, inclusive, herein by reference. 65. On March 2, 2010, the U.S. Patent and Trademark Office duly and legally issued U.S. Patent No. D610,975 ("the 975 patent") to Osaka. A true and correct copy of the 975 patent is attached to the Complaint as Ex. 8. The 975 patent claims an ornamental design for a tire, as shown and described in Figures 1 through 12 of the 975 patent. The United States Patent and Trademark Office issued a certificate of correction attached as Ex. 7 for the 975 patent. 66. TTR is the owner of the entire right, title and interest in and to the 975 patent by assignment made on June 10, 2013, and recorded on June 13,

13 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 13 of 82 Page ID #: TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have made, used, sold and/or offered for sale one or more tire products, including but not limited to the Mark Ma Dakar M/T tire, that infringe the 975 patent. The design of this tire, in the eye of the ordinary observer, would appear substantially similar to the ornamental design of the 975 patent. 68. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have actively induced others, including each other, to directly infringe the 975 patent by aiding, abetting, encouraging, and otherwise promoting the use, manufacture, sale and/or offer for sale by others, including each other, of infringing tire products, including but not limited to the Mark Ma Dakar M/T tire, with knowledge of the infringement of the 975 patent and with the intent to cause such infringement and/or with willful blindness to the existence of the 975 patent. 69. TTR is informed and believes, and on that basis alleges, that infringement of the 975 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre has been and continues to be willful and deliberate. 70. TTR is informed and believes, and on that basis alleges, that Defendants Tri- Ace HK, Tri-Ace USA, Voma Tire and ITG Voma have had notice and actual knowledge of the 975 patent before the filing of TTR s complaint with the U.S. International Trade Commission, on August 14, 2013, and before the filing of this suit. 71. TTR has been damaged by infringement of the 975 patent by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre in an amount to be determined at trial, such damages including all of Defendants' profits from the infringement alleged herein. 72. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma, and Doublestar Tyre have irreparably injured Toyo and such injury will continue unless Defendants are enjoined by this Court

14 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 14 of 82 Page ID #: Claim 7: Trade Dress Infringement by the Mark Ma Dakar M/T and Tri-Ace Mud Gripper M/T Tires 73. This is a claim by TTC against Defendants and each of them for trade dress infringement in violation of 15 U.S.C TTC hereby incorporates Paragraphs 1 through 13, inclusive, herein by reference. 75. TTC has a protectable trade dress in the overall appearance of its Open Country M/T tires, which was first introduced in 2003 under the Toyo brand. The Open Country M/T tire is a premium off-road maximum traction tire that combines solid onroad performance with extra ground clearance and higher load-carrying capacity and, for truck enthusiasts, a tread pattern with an aggressive appearance. 76. With its unique, aesthetically aggressive appearance and significant sales volume, the ornamental, distinctive look of the Open Country M/T tire has become associated with the Toyo brand. This look includes open scalloped shoulder blocks, an aggressive, attack tread with hook-shaped blocks, a distinctive over-the-shoulder tread, and deep siping in the tread blocks (hereinafter referred to as the OPMT Trade Dress ). 77. The overall tread design of the OPMT Trade Dress is arbitrary, inherently distinctive, and non-functional. 78. TTC has always been the exclusive source for Open Country M/T tires, more than 2.3 million of which have been sold to customers throughout the United States since Since 2003, TTC has built up valuable recognition and goodwill in its distinctive OPMT Trade Dress. TTC has expended, and continues to expend, substantial time, effort, money, and other resources to develop and maintain the valuable goodwill that has come to be associated with the Open Country M/T tires incorporating the unique and recognizable OPMT Trade Dress. 80. TTC has continuously and extensively advertised, marketed, and promoted its Open Country M/T tires in the United States, investing over $22 million in such

15 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 15 of 82 Page ID #: activities, including advertising directed to the distinctive, non-functional aspects of the appearance of the Open Country M/T tires. 81. As a result of TTC s efforts, the OPMT Trade Dress has acquired secondary meaning and distinctiveness among off-road tire consumers and members of the industry, and it continues to have secondary meaning and distinctiveness. The Open Country M/T tire, which prominently displays the OPMT Trade Dress, is now widely known and recognized by its unique and distinctive appearance, which identifies to off-road tire consumers and members of the industry that its source of origin is Toyo. The OPMT Trade Dress has come to be, and now is, well and favorably known to the public, particularly to off-road tire consumers, as being associated with Toyo s high-quality tires. 82. Based on the foregoing, the OPMT Trade Dress has become and now is a designation of origin of Toyo and a trademark owned by TTC. 83. Upon information and belief, Defendants have made, used, exported, imported, marketed, sold and/or offered for sale tire products, including but not limited to the Mark Ma Dakar M/T and Tri-Ace Mud Gripper M/T tires, that infringe the OPMT Trade Dress. 84. To consumers, including off-road tire customers and members of the industry, the look of the Mark Ma Dakar M/T and Tri-Ace Mud Gripper M/T tires is confusingly similar to the OPMT Trade Dress and, in particular, the, distinctive look of the Toyo Open Country M/T tire, which is unique in appearance, eye-catching and readily recognized among customers and members of the trade. 85. The Past, present and future use, distribution, sale and/or offer for sale by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre of tires using the OPMT Trade Dress, including but not limited to the Mark Ma Dakar M/T and Tri-Ace Mud Gripper M/T tires, constitutes trade dress infringement under 15 U.S.C. 1125(a). 86. TTC is informed and believes, and on that basis alleges, that Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre have been aware

16 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 16 of 82 Page ID #: of Toyo s Open Country M/T tire and the OPMT trade dress, based on TTC s extensive and exclusive original sales of Open Country M/T tires for over ten years, and their trade dress infringement has been and continues to be willful and deliberate. 87. TTC has been damaged by willful trade dress infringement by Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre in an amount to be determined at trial, including profits of Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma and Doublestar Tyre and three times the amount of actual damages sustained by TTC, together with costs and reasonable attorneys fees. Furthermore, by these acts, Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, ITG Voma, and Doublestar Tyre have irreparably injured TTC and caused TTC to suffer a substantial loss of goodwill and reputation, and such injury will continue unless they are enjoined by this Court. 88. By reason of the above actions, TTC is entitled to the full range of relief under the Lanham Act, 15 U.S.C PRAYER FOR RELIEF WHEREFORE, by virtue of the unlawful conduct of Defendants as alleged in Counts I through VII above, Plaintiffs respectfully pray for judgment against Defendants, and each of them, as follows: A. That Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma be adjudged to have infringed the '424, 200, 525, 765, 031, and 975 patents; B. That Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire, and ITG Voma be adjudged to have induced infringement of the '424, 200, 525, 765, 031, and 975 patents; C. That Defendant Doublestar Tyre be adjudged to have infringed the 031 and 975 patents; D. That Defendant Doublestar Tyre be adjudged to have induced infringement of the 031 and 975 patents; E. That such patent infringement be adjudged willful and deliberate;

17 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 17 of 82 Page ID #: F. That this case be deemed exceptional under 35 U.S.C. 285, and that the damages for patent infringement be enhanced accordingly; G. That Defendants be adjudged to have infringed TTC s OPMT Trade Dress in violation of 15 U.S.C. 1125(a); H. That Defendants trade dress infringement be adjudged willful and deliberate; I. That Defendants Tri-Ace HK, Tri-Ace USA, Voma Tire and ITG Voma, its subsidiaries, affiliates, parents, successors, assigns, officers, agents, servants, employees, attorneys, and all persons acting in concert or in participation with it be preliminarily and permanently enjoined from: (1) Infringing or inducing infringement of the '424, 200, 525, and 975 patents, and specifically from directly or indirectly making, using, selling, or offering for sale, any products embodying the invention of '424, 200, 525, and 975 patents during their terms, without the express written authority of Plaintiffs; (2) Using TTC s OPMT Trade Dress or any trade dress or tread or sidewall design confusingly similar thereto, for or in connection with advertising, marketing, promoting, distributing, offering for sale, or selling tires; (3) Using photographs, illustrations, or other depictions of TTC s OPMT Trade Dress or any trade dress or tread or sidewall design confusingly similar thereto, for or in connection with advertising, marketing, promoting, distributing, offering for sale, or selling tires; (4) Using any name, mark, designation, product configuration, trade dress, or other material for or in connection with advertising, marketing, promoting, distributing, offering for sale, or selling tires that are likely to cause confusion, mistake or deception as to source relative to any of TTR and TTC s names, marks, designations, product configurations, or trade dress, including but not limited to TTC s OPMT Trade Dress;

18 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 18 of 82 Page ID #: (5) Passing off its goods and/or services as those of TTC; and, (6) Engaging in any conduct aimed at or likely to result in diverting business intended for TTC or injuring TTC s goodwill or business reputation by way of imitation, misrepresentation, false statements, advertising, fraud and/or deception. J. That Defendant Doublestar Tyre, its subsidiaries, affiliates, parents, successors, assigns, officers, agents, servants, employees, attorneys, and all persons acting in concert or in participation with it be preliminarily and permanently enjoined from: (1) Infringing or inducing infringement of the 031 and 975 patents, and specifically from directly or indirectly making, using, selling, or offering for sale, any products embodying the invention of 031 and 975 patents during their terms, without the express written authority of Plaintiffs; (2) Using TTC s OPMT Trade Dress or any trade dress or tread or sidewall design confusingly similar thereto, for or in connection with advertising, marketing, promoting, distributing, offering for sale, or selling tires; (3) Using photographs, illustrations, or other depictions of TTC s OPMT Trade Dress or any trade dress or tread or sidewall design confusingly similar thereto, for or in connection with advertising, marketing, promoting, distributing, offering for sale, or selling tires; (4) Using any name, mark, designation, product configuration, trade dress, or other material for or in connection with advertising, marketing, promoting, distributing, offering for sale, or selling tires that are likely to cause confusion, mistake or deception as to source relative to any of TTR and TTC s names, marks, designations, product configurations, or trade dress, including but not limited to TTC s OPMT Trade Dress; (5) Passing off its goods and/or services as those of TTC; and, (6) Engaging in any conduct aimed at or likely to result in diverting

19 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 19 of 82 Page ID #: business intended for TTC or injuring TTC s goodwill or business reputation by way of imitation, misrepresentation, false statements, advertising, fraud and/or deception.. K. An order from this Court compelling each Defendant to mail notice letters at their own expense to all distributors, dealers, accounts, salesmen, employees, jobbers, and suppliers, informing them that each Defendant has committed patent infringement, and/or trade dress infringement, and that Defendant has no affiliation, connection, or other business relationship with Plaintiffs, and requesting that the letter recipients return to Defendant for full credit or refund all of Defendant s tires using the infringing design and/or trade dress. L. An order from this Court commanding that each Defendant deliver to Plaintiffs for destruction all advertising, products, tires, labeling, packaging, sales literature, promotional literature, owner's manuals, catalogs, displays, boxes, packages, and other trade pieces within their possession or control and which use or display the infringing design and trade dress. M. An accounting for all profits of each Defendant derived by reason of the acts alleged in this Complaint. N. An award of money damages suffered by Plaintiffs in an amount to be ascertained, and the trebling thereof. O. An order compelling each Defendant to disgorge the amounts by which it has been unjustly enriched by the acts alleged herein. P. A constructive trust imposed on all revenue, income, and things of value derived by each Defendant in the marketing and selling of tires using imitative tread designs, trade dress, and marks, including the tread design and trade dress complained of in Complaint. Q. Judgment, relief, and requests as set forth in this Complaint. R. Reasonable attorney's fees, prejudgment interest, and costs of this action. S. Such other, further, and different relief as the court deems proper under the

21 Case 8:14-cv AG-JPR Document 1 Filed 01/14/14 Page 21 of 82 Page ID #:21 EXHIBIT 1