Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 1 of 29
`
`UNITED STATES DISTRICT COURT
`DISTRICT COURT OF COLORADO
`
`
`PREDATOR INTERNATIONAL, INC.,
`a Colorado corporation,
`
`
`
`
`
`
`
`
`
`Plaintiff/Counter-Defendant,
`
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`
`
`
`
`GAMO OUTDOOR USA, INC.,
`
`a Florida corporation, and
`
`INDUSTRIALS EL GAMO, S.A.,
`a Spanish corporation,
`
`
`
`
`
`
`
`
`
`Defendants/Counter-Plaintiff.
`
`
`)
`)
`)
`)
`)
`) Case No. 09 cv 00970-PAB-KMT
`)
`) DEMAND FOR JURY TRIAL
`)
`)
`)
`)
`)
`
`
`DEFENDANT GAMO OUTDOOR USA, INC.’S and DEFENDANT INDUSTRIAS EL
`GAMO S.A. n/k/a GAMO OUTDOOR S.L.’S
`ANSWER AND AFFIRMATIVE DEFENSES TO
`FOURTH AMENDED COMPLAINT AND COUNTERCLAIMS
`
`
`
`
`
`Defendants, GAMO OUTDOOR USA, INC. (“GAMO USA”) and INDUSTRIAS EL
`
`GAMO S.A., now known as, GAMO OUTDOOR S.L., a Spanish corporation (“GAMO
`
`SPAIN”) (hereinafter collectively referred to as “GAMO”), by counsel, SWANSON,
`
`MARTIN & BELL, LLP and PATTON BOGGS LLP, for their Answer and Affirmative
`
`Defenses to Plaintiff PREDATOR INTERNATIONAL, INC.‟s (“PREDATOR”) Fourth
`
`Amended Complaint (“the Complaint”), state as follows:
`
`THE PARTIES
`
`
`
`1.
`
`Plaintiff Predator International, Inc. (“Predator”) is a corporation organized
`
`under the laws of the State of Colorado having a principal place of business at 4401 S.
`
`Broadway, Suite 201, Englewood, Colorado, 80113.
`
`
`
`UNITED STATES DISTRICT COURT
`DISTRICT COURT OF COLORADO
`
`
`PREDATOR INTERNATIONAL, INC.,
`a Colorado corporation,
`
`
`
`
`
`
`
`
`
`Plaintiff/Counter-Defendant,
`
`
`
`
`
`
`vs.
`
`
`
`
`
`
`
`
`
`
`
`GAMO OUTDOOR USA, INC.,
`
`a Florida corporation, and
`
`INDUSTRIALS EL GAMO, S.A.,
`a Spanish corporation,
`
`
`
`
`
`
`
`
`
`Defendants/Counter-Plaintiff.
`
`
`)
`)
`)
`)
`)
`) Case No. 09 cv 00970-PAB-KMT
`)
`) DEMAND FOR JURY TRIAL
`)
`)
`)
`)
`)
`
`
`DEFENDANT GAMO OUTDOOR USA, INC.’S and DEFENDANT INDUSTRIAS EL
`GAMO S.A. n/k/a GAMO OUTDOOR S.L.’S
`ANSWER AND AFFIRMATIVE DEFENSES TO
`FOURTH AMENDED COMPLAINT AND COUNTERCLAIMS
`
`
`
`
`
`Defendants, GAMO OUTDOOR USA, INC. (“GAMO USA”) and INDUSTRIAS EL
`
`GAMO S.A., now known as, GAMO OUTDOOR S.L., a Spanish corporation (“GAMO
`
`SPAIN”) (hereinafter collectively referred to as “GAMO”), by counsel, SWANSON,
`
`MARTIN & BELL, LLP and PATTON BOGGS LLP, for their Answer and Affirmative
`
`Defenses to Plaintiff PREDATOR INTERNATIONAL, INC.‟s (“PREDATOR”) Fourth
`
`Amended Complaint (“the Complaint”), state as follows:
`
`THE PARTIES
`
`
`
`1.
`
`Plaintiff Predator International, Inc. (“Predator”) is a corporation organized
`
`under the laws of the State of Colorado having a principal place of business at 4401 S.
`
`Broadway, Suite 201, Englewood, Colorado, 80113.
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 2 of 29
`
`
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 1 of the Complaint
`
`and therefore denies the same.
`
`
`
`2.
`
`Upon information and belief, Defendant Gamo Outdoor USA, Inc.
`
`(“Gamo”) is a corporation organized under the laws of the State of Florida having a
`
`principal place of business at 3911 SW 47th Avenue, Suite 194, Fort Lauderdale,
`
`Florida, 33314.
`
`
`
`ANSWER: GAMO admits the allegations contained in Paragraph 2 of the
`
`Complaint.
`
`
`
`3.
`
`Upon information and belief, Defendant Industrias El Gamo, S.A. is a
`
`corporation organized and existing under the laws of Spain having a principal place of
`
`business at Santa Creu Calafell KM 10, Sant Boi de Llobregat, Barcelona, 08830.
`
`Defendants are hereinafter collectively referred to as “Gamo.”
`
`
`
`ANSWER: GAMO admits
`
`that
`
`INDUSTRIAS EL GAMO S.A. was
`
`extinguished and merged into GAMO OUTDOOR S.L., a Spanish corporation, in
`
`2009. GAMO OUTDOOR S.L. has a principal place of business at Santa Creu
`
`Calafell KM 10, Sant Boi de Llobregat, Barcelona, 08830.
`
`4.
`
`Predator is in the business of manufacturing, distributing, and selling high
`
`performance air gun pellets in interstate commerce and internationally.
`
`
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 4 of the Complaint
`
`and therefore denies the same.
`
`
`
`2
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 3 of 29
`
`
`
`5.
`
`Upon information and belief, Defendants are in the business of designing,
`
`manufacturing, distributing, and selling airguns and airgun pellets in interstate
`
`commerce and internationally.
`
`
`
`ANSWER: GAMO admits that GAMO SPAIN is in the business of
`
`manufacturing, distributing and selling airguns and airgun pellets internationally.
`
`GAMO admits that GAMO USA it is in the business of distributing and selling
`
`airguns and airgun pellets in interstate commerce. GAMO denies the remaining
`
`allegations contained in Paragraph 5 of the Complaint.
`
`JURISDICTION
`
`
`
`6.
`
`This action arises under the Lanham Act, 15 U.S.C. §1051, et seq., the
`
`Copyright Act, Colorado Consumer Protection Act, C.R.S. §6-1-101, et seq., and the
`
`principles of common law in the State of Colorado and pertaining to trade dress
`
`infringement, unjust enrichment, and unfair competition.
`
`
`
`ANSWER: GAMO admits that this action arises under the Lanham Act, 15
`
`U.S.C. §1051, et seq., and the Copyright Act, but denies that the claims asserted
`
`in the Fourth Amended Complaint are valid and denies the remaining allegations
`
`contained in Paragraph 6 of the Complaint.
`
`
`
`7.
`
`This is a civil action for federal trade dress infringement, copyright
`
`infringement, violation of the Colorado Consumer Protection Act, and common law
`
`unfair competition, trade dress infringement, and unjust enrichment.
`
`
`
`ANSWER: GAMO admits that this is a civil action for federal trade dress
`
`infringement and copyright infringement, but denies that the claims asserted in
`
`
`
`3
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 4 of 29
`
`the Complaint are valid and denies the remaining allegations contained in
`
`Paragraph 7 of the Complaint.
`
`
`
`8.
`
`This Court has jurisdiction over the counts of this action based on 28
`
`U.S.C. §§1331, 1338, and 1367.
`
`
`
`ANSWER: GAMO admits the allegations contained in Paragraph 8 of the
`
`Complaint.
`
`
`
`9.
`
`Upon information and belief, this Court has personal jurisdiction over the
`
`Defendants by virtue of the Defendants‟ acts of offering products for sale in this District.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 9 of the
`
`Complaint.
`
`
`
`
`
`10. Venue is proper in this District pursuant to 28 U.S.C. §1391(b) and (c).
`
`ANSWER: GAMO denies the allegations contained in Paragraph 10 of the
`
`Complaint.
`
`FACTUAL BACKGROUND OF CLAIMS
`
`
`
`11. Since at least as early as 2002, Predator has been manufacturing,
`
`distributing, and selling a polymer tipped airgun pellet in the United States and
`
`internationally. At that time, the pellets were called Predator Premium Hunting Pellets.
`
`Since 2007, they‟ve been sold under the mark POLYMAG. See POLYMAG product
`
`image and description attached hereto as Exhibit 1.
`
`
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 11 of the
`
`Complaint and therefore denies the same.
`
`
`
`4
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 5 of 29
`
`
`
`17.[sic]1 On its website and in its brochure, the Predator describes the POLYMAG
`
`as follows: “The Predator PolymagTM (polymer tip pellet) was designed specifically to
`
`be the most effective and efficient airgun hunting ammunition available. See Exhibit 1.
`
`ANSWER: GAMO admits a document labeled Exhibit 1 is attached to the
`
`Complaint and states that the document speaks for itself. GAMO otherwise
`
`denies the allegations contained in Paragraph 17 of the Complaint.
`
`
`
`18. On its website, Predator also describes the POLYMAG as follows:
`
`Experience better accuracy, deeper penetration and higher velocity with
`Predator‟s revolutionary new hunting PolymagsTM (polymer tip pellet).
`Hollow point design creates instant expansion on impact allowing for the
`taking of larger animals. Hard polymer tip provides excellent flight
`characteristics. See Exhibit 1.
`
`ANSWER: GAMO admits a document labeled Exhibit 1 is attached to the
`
`Complaint and states that the document speaks for itself. GAMO otherwise
`
`denies the allegations contained in Paragraph 18 of the Complaint.
`
`
`
`19. Elsewhere on Predator‟s website, the features of the POLYMAG are
`
`described by Predator as follows:
`
`The Predator PolymagTM (polymer tip pellet) features a traditional hollow
`point design in a standard airgun application. The aerodynamic shape
`and hard polymer tip provide excellent flight characteristics. Other
`features include:
`
`
` Higher Velocity & Flat Trajectory
` Very Accurate and Efficient
` Allows for Deeper Penetration
`
`Instant Expansion on Impact
` Light Weight (.177 cal weighs 8gr., 22 weighs 16 gr)
`
`
`
`
`1 GAMO notes that paragraphs 12 through and including 16 are omitted from Predator‟s Fourth Amended
`Complaint.
`
`
`
`5
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 6 of 29
`
`
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 19 of the
`
`Complaint and therefore denies the same.
`
`
`
`20. Predator is the author and owner of all right, title, and interest to the rights
`
`afforded by the U.S. Copyright Act of the product description and ad copy described
`
`above and found on its website at www.predatorpellets.com. See Exhibit 1. The
`
`product description and ad copy described above will hereinafter be referred to as the
`
`“Copyrighted Work.”
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 20 of the
`
`Complaint.
`
`
`
`21.
`
`The Copyrighted is an original work of authorship and was created in may
`
`2000. It was first published on Predator‟s website located at www.predatorpellets.com
`
`in June 2000.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 21 of the
`
`Complaint.
`
`22. Predator‟s brochure was created in 2006. This brochure was first
`
`distributed at the Shot Show in the beginning of 2007. It has also been distributed at
`
`the 2008 and 2009 Shot Shows.
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 22 of the
`
`Complaint and therefore denies the same.
`
`
`
`23. Predator has complied in all respects with 17 U.S.C. §§ 101 et seq., and
`
`secured the exclusive rights and privileges in and to the copyright of the Copyrighted
`
`
`
`6
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 7 of 29
`
`Work. The Copyrighted Work is the subject of U.S. Copyright registration No. TX-6-
`
`913-217, issued on April 16, 2009.
`
`
`
`ANSWER: GAMO admits that Predator has attached a copy of U.S.
`
`Copyright Registration No. TX-6-913-217, issued on April 16, 2009, as Exhibit 4 to
`
`the Complaint, and states that the document speaks for itself. GAMO denies the
`
`remaining allegations contained in Paragraph 23 of the Complaint.
`
`
`
`24.
`
`The POLYMAG features a distinctive, nonfunctional red colored tip that is
`
`well known to consumers and has become associated with Predator and the
`
`POLYMAG. This red tip will hereinafter be referred to as the “POLYMAG trade dress.”
`
`ANSWER: GAMO denies the allegations contained in Paragraph 24 of the
`
`Complaint.
`
`25. Predator has expended considerable resources
`
`in promoting
`
`the
`
`POLYMAG and the POLYMAG trade dress through various media, including trade
`
`publications, trade shows, brochures, and on the internet.
`
`ANSWER: GAMO denies the allegations contained in Paragraph 25 of the
`
`Complaint.
`
`26.
`
`The POLYMAG is available for sale at sporting goods retailers such as
`
`Cabelas, Pyramydair, Gander Mountain, Bass Pro Shops, and Morgan Dees. A tin of
`
`200 retails for $15.99 or $16.99 depending on the caliber.
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 26 of the
`
`Complaint and therefore denies the same.
`
`
`
`7
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 8 of 29
`
`27.
`
`In the past three years, annual sales of the POLYMAG have jumped from
`
`$100,000 to $365,000.
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 27 of the
`
`Complaint and therefore denies the same.
`
`28.
`
`In 2007, Predator created a five-year plan for growth that leads to gross
`
`profits of $500,000 in 2010 based on its plans to consolidate manufacturing and
`
`increase production. This increase of production would allow Predator to introduce the
`
`POLYMAG to retailers that they had previously been unable to use because of their
`
`limited production capacity.
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 28 of the
`
`Complaint and therefore denies the same.
`
`29.
`
`In furtherance of five year plan, Predator spent most of 2008 adding
`
`tipping machines in Hungary and increasing production in the Czech Republic. It is now
`
`poised for a new surge of growth.
`
`ANSWER: GAMO is without knowledge or information sufficient to form a
`
`belief as to the truth of the allegations contained in Paragraph 29 of the
`
`Complaint and therefore denies the same.
`
`30. By reason of the adoption and longstanding continuous use of the
`
`POLYMAG trade dress, the POLYMAG trade dress has acquired special and particular
`
`significance and very valuable goodwill as identifying the POLYMAG, so that when
`
`
`
`8
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 9 of 29
`
`members of the public in the United States and elsewhere see or hear it, they
`
`automatically think of Predator.
`
`ANSWER: GAMO denies the allegations contained in Paragraph 30 of the
`
`Complaint.
`
`31. Consequently, through such usage and recognition, the POLYMAG trade
`
`dress is protected under the laws of the United States and numerous other countries,
`
`granting Predator the right to prevent others from using any mark, trade dress, or other
`
`designation which is confusingly similar thereo.
`
`ANSWER: GAMO denies the allegations contained in Paragraph 31 of the
`
`Complaint.
`
`32. On November 13, 2008, Gamo, the largest air gun manufacturer in
`
`Europe, issued a press release announcing its expected release of the RED FIRE
`
`airgun pellet. The RED FIRE looks almost identical to the POLYMAG, and specifically,
`
`features the POLYMAG‟s non-functional, distinctive red colored tip. It also weighs the
`
`exact same as the POLYMAG, even though the grain weight of an air gun pellet such as
`
`the RED FIRE could range anywhere from 6.5 gr. to 10.5 gr. To announce its newest
`
`product to the world, Gamo said the following regarding the RED FIRE:
`
`You will experience better accuracy, deeper penetration and higher
`velocity with these revolutionary new hunting polymer tipped pellets. The
`hollow point design creates instant expansion on impact allowing for the
`taking of larger animals. The hard polymer tip provides excellent flight
`characteristics as well. This will be one of the air industries signature
`pellets.
`
`The Red FireTM is designed specifically to be the most effective and
`efficient air gun hunting ammunition available.
`
`Specifications:
`
`
`
`
`9
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 10 of 29
`
`Higher Velocity & Flat Trajectory
`Accurate and Efficient
`Allows for Deeper Penetration
`Instant Expansion of Impact
`Light Weight
`.177 cal weighs 8gr., .22 weights 16gr
`
`See Exhibit 2 attached for Gamo Press Release.
`
`
`ANSWER: GAMO admits a document labeled Exhibit 2 is attached to the
`
`Complaint and states that the document speaks for itself. GAMO denies the
`
`remaining allegations contained in Paragraph 32 of the Complaint.
`
`33. Predator immediately contacted Gamo informing Gamo that the RED
`
`FIRE appeared to be a direct copy of the POLYMAG. Gamo denied any infringement.
`
`ANSWER: GAMO admits Predator contacted GAMO prior to the RED FIRE
`
`being commercially available, prior to its initiation of this lawsuit and prior to
`
`Predator having seen the RED FIRE. GAMO denies the remaining allegations
`
`contained in Paragraph 33 of the Complaint.
`
`34. Gamo further showed the RED FIRE in January 2009 at the annual Shot
`
`Show, where Predator also had a booth featuring the POLYMAG. The RED FIRE was
`
`not available for purchase at the Shot Show.
`
`ANSWER: GAMO admits that GAMO showed the RED FIRE in January
`
`2009 at the annual Shot Show, and that the RED FIRE was not available for
`
`purchase at the Shot Show. GAMO is without knowledge or information sufficient
`
`to form a belief as to the truth of the remaining allegations contained in
`
`Paragraph 34 of the Complaint and therefore denies the same.
`
`
`
`10
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 11 of 29
`
`35. Sales of the RED FIRE in the United States have just recently
`
`commenced. A tin of 150 pellets retails for $9.99. The RED FIRE and POLYMAG are
`
`both sold by Cabelas.
`
`ANSWER: GAMO admits that sales of the RED FIRE® commenced in the
`
`United States in April 2009. GAMO denies the allegations contained in the
`
`second sentence of Paragraph 31 of the Complaint. GAMO is without knowledge
`
`or information sufficient to form a belief as to the third sentence in Paragraph 34
`
`of the Complaint.
`
`36. Gamo‟s website located at www.gamousa.com , describes the RED FIRE
`
`as follows:
`
`Experience better accuracy, deeper penetration and higher velocity with
`GAMO‟s revolutionary new hunting Red Fire TM (polymer tip pellet). The
`hollow point design creates instant expansion on impact allowing for the
`taking of larger animals. The hard polymer tip provides excellent flight
`characteristics as well.
`
`
`
`
`
`
`
`
`Higher Velocity & Flat Trajectory
`Accurate and Efficient
`Allows for Deeper Penetration
`Instant Expansion on Impact
`Light Weight
`
`
`See Red Fire image and product description attached hereto at Exhibit 3.
`
`
`ANSWER: GAMO admits a document labeled Exhibit 3 is attached to the
`
`Complaint and states that the document speaks for itself. GAMO otherwise
`
`denies the allegations contained in Paragraph 36 of the Complaint.
`
`37. Moreover, even after the very short period of time during which the RED
`
`FIRE has been commercially available, Predator has become aware of numerous
`
`instances of actual confusion between the two products. Consumers are also reporting
`
`
`
`11
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 12 of 29
`
`the inferior quality of Gamo‟s RED FIRE compared to the POLYMAG, which leads to
`
`further damage of Predator‟s goodwill and reputation.
`
`
`
`ANSWER: GAMO specifically denies
`
`the allegation contained
`
`in
`
`Paragraph 37 of the Complaint that there have been “numerous instances of
`
`actual confusion between the two products”. GAMO further specifically denies
`
`that there has been damage to Predator’s goodwill and reputation. GAMO is
`
`without knowledge or information sufficient to form a belief as to the truth of the
`
`remaining allegations contained in Paragraph 37 of the Complaint and therefore
`
`denies the same.
`
`
`
`38. Despite Predator‟s notice to Gamo of Gamo‟s blatant copying of
`
`Predator‟s Copyrighted Work and the POLYMAG trade dress, Gamo continues to sell
`
`the RED FIRE, causing damage and irreparable harm to Predator.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 38 of the
`
`Complaint.
`
`FIRST CLAIM:
`TRADE DRESS INFRINGEMENT UNDER 15 U.S.C. 1125(a)
`
`39. Predator incorporates by reference all of the averments set forth in
`
`
`
`Paragraphs 1 through 38, inclusive, with the same effect as though fully rewritten in this
`
`Count for trade dress infringement by Defendants.
`
`
`
`ANSWER:
`
`In the event that a response to Paragraph 39 of the Complaint
`
`is required, GAMO repeats, re-alleges and
`
`incorporates by reference
`
`its
`
`responses to Paragraph 1-38 as though set forth fully herein. To the extent, if
`
`any, that the foregoing does not respond to any facet of the allegations of
`
`
`
`12
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 13 of 29
`
`Paragraph 39 of the Complaint, GAMO denies the remaining allegation of
`
`Paragraph 39.
`
`
`
`40. By virtue of the facts herein averred, Gamo has been and is engaging in
`
`trade dress infringement by manufacturing, packaging, and selling the RED FIRE in
`
`violation of 15 U.S.C. §1125(a) in a manner likely to cause confusion, or to cause
`
`mistake, or to deceive consumers.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 40 of the
`
`Complaint.
`
`
`
`41.
`
`To identify the POLYMAG, Predator has extensively advertised, and
`
`caused to be advertised, throughout the United States the POLYMAG with the
`
`POLYMAG trade dress. As a result of marketing manufacturing, and sales of the
`
`POLYMAG for many years using the non-functional POLYMAG trade dress, the
`
`POLYMAG trade dress has become distinctive and/or has obtained secondary meaning
`
`as a means to identify the source of the POLYMAG.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 41 of the
`
`Complaint.
`
`
`
`42. Predator is the owner of the POLYMAG trade dress and was the first to
`
`adopt and use, or cause to be used, the POLYMAG trade dress in connection with air
`
`gun pellets.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 42 of the
`
`Complaint.
`
`
`
`43. By virtue of the widespread use and recognition of the POLYMAG trade
`
`dress by the public, the POLYMAG has come to be, and now is, well and favorably
`
`
`
`13
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 14 of 29
`
`known to the public as a high quality, unique good sold and provided exclusively by
`
`Predator.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 43 of the
`
`Complaint.
`
`
`
`44. Use of the POLYMAG trade dress in conjunction with the POLYMAG is
`
`distinctive and represents a highly valuable source indicator for consumers who are
`
`seeking in purchase and consume the POLYMAG. Plaintiff has thereby built up and
`
`now owns valuable goodwill in the POLYMAG trade dress.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 44 of the
`
`Complaint.
`
`
`
`45. Defendants have been and continue
`
`to unfairly
`
`trade upon and
`
`appropriate the longstanding prestige, reputation, notoriety, and goodwill of Predator as
`
`represented by the POLYMAG trade dress, and are thereby deceiving the public.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 45 of the
`
`Complaint.
`
`
`
`46. Upon information and belief, Defendants‟ infringing use of the POLYMAG
`
`trade dress has been deliberate and willful and has been committed with the intent to
`
`cause confusion and mistake, and to deceive and defraud the public into believing that
`
`their goods are affiliated with, sponsored by, or in some manner associated with
`
`Predator.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 46 of the
`
`Complaint.
`
`
`
`14
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 15 of 29
`
`
`
`47. Predator has been and will continue to be damaged and irreparably
`
`harmed by Defendants‟ actions of trade dress infringement unless Gamo‟s trade dress
`
`infringement is enjoined preliminary and permanently by this Court.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 47 of the
`
`Complaint.
`
`SECOND CLAIM:
`COPYRIGHT INFRINGEMENT
`
`48. Predator incorporates by reference all of the averment set forth in
`
`
`
`Paragraphs 1 through 47, inclusive, with the same effect as though fully rewritten in this
`
`Count for copyright infringement by Defendants.
`
`
`
`ANSWER:
`
`In the event that a response to Paragraph 48 of the Complaint
`
`is required, GAMO repeats, re-alleges and
`
`incorporates by reference
`
`its
`
`responses to Paragraph 1-47 as though set forth fully herein. To the extent, if
`
`any, that the foregoing does not respond to any facet of the allegations of
`
`Paragraph 48 of the Complaint, GAMO denies the remaining allegation of
`
`Paragraph 48.
`
`
`
`49. By virtue of the facts herein averred, Gamo has been and continues to
`
`infringe Predator‟s exclusive rights to the Copyrighted Work granted by 17 U.S.C. §106.
`
`Through Gamo‟s use of the Copyrighted Work to sell the RED FIRE in violation of 17
`
`U.S.C. §501.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 49 of the
`
`Complaint.
`
`
`
`15
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 16 of 29
`
`
`
`50. Predator is the owner of all title, right, and interest to the Copyrighted
`
`Work and has obtained U.S. Copyright Registration No. TX-6-913-217, issued on April
`
`16, 2009. See Exhibit 4.
`
`
`
`ANSWER: GAMO admits a document labeled Exhibit 4 is attached to the
`
`Complaint and states that the document speaks for itself. GAMO denies the
`
`remaining allegations contained in Paragraph 50 of the Complaint.
`
`
`
`51. Predator has not granted Gamo a license or any right to copy, reproduce,
`
`distribute, publish, exploit, or use the Copyrighted Work in any manner.
`
`
`
`ANSWER: GAMO admits that Predator has not granted GAMO a license.
`
`GAMO denies the remaining allegations contained in Paragraph 51 of the
`
`Complaint.
`
`
`
`52. Gamo has unlawfully and willfully copied the Copyrighted Work to use in
`
`its own press release and product description for the RED FIRE.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 52 of the
`
`Complaint.
`
`
`
`53. Predator has been and continues to be damaged by Gamo‟s infringement
`
`of the Copyrighted Work.
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 53 of the
`
`Complaint.
`
`
`
`54. Predator is suffering, and will continue to suffer, irreparable harm from
`
`Gamo‟s infringement of the Copyrighted Work unless Gamo‟s copyright infringement is
`
`enjoined preliminarily and permanently by this Court.
`
`
`
`16
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 17 of 29
`
`
`
`ANSWER: GAMO denies the allegations contained in Paragraph 54 of the
`
`Complaint.
`
`THIRD CLAIM:
`VIOLATION OF COLORADO’S CONSUMER PROTECTION ACT,
`C.R.S. §6-1-101 et seq.
`
`GAMO makes no response to the allegations contained in the Third Claim of the
`
`
`
`Complaint, as said claim is subject to the Motion to Dismiss filed simultaneously
`
`herewith. In the event that a response is required, GAMO denies the allegations
`
`contained in the Third Claim of the Complaint.
`
`FOURTH CLAIM
`UNJUST ENRICHMENT
`
`GAMO makes no response to the allegations contained in the Fourth Claim of
`
`
`
`the Complaint, as said claim is subject to the Motion to Dismiss filed simultaneously
`
`herewith. In the event that a response is required, GAMO denies the allegations
`
`contained in the Fourth Claim of the Complaint.
`
`FIFTH CLAIM
`COMMON LAW UNFAIR COMPETITION
`
`GAMO makes no response to the allegations contained in the Fifth Claim of the
`
`Complaint, as said claim is subject to the Motion to Dismiss filed simultaneously
`
`herewith. In the event that a response is required, GAMO denies the allegations
`
`contained in the Fifth Claim of the Complaint.
`
`AFFIRMATIVE DEFENSES
`
`First Affirmative Defense
`
`
`
`PREDATOR INTERNATIONAL, INC. fails to state a claim upon which relief
`
`really granted against GAMO.
`
`
`
`17
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 18 of 29
`
`Second Affirmative Defense
`
`
`
`PREDATOR INTERNATIONAL, INC.‟s claims are barred by the equitable
`
`doctrines of consent, waiver, unclean hands and laches.
`
`Third Affirmative Defense
`
`GAMO does not infringe the alleged trademarks and is not subject to liability for
`
`infringement of the alleged marks.
`
`Fourth Affirmative Defense
`
`There is no likelihood of confusion between the alleged marks and the asserted
`
`use of the alleged marks. PREDATOR INTERNATIONAL, INC. has not pled any facts,
`
`such as actual confusion to substantiate likelihood of confusion and GAMO is not aware
`
`of any consumer confusion.
`
`Fifth Affirmative Defense
`
`At all times, GAMO‟s conduct was lawful, justified, reasonable, in good faith, and
`
`with innocent intent based upon the facts known at the time it acted, thereby precluding
`
`PREDATOR INTERNATIONAL, INC., even if it prevails, from recovering treble
`
`damages, attorneys‟ fees and/or costs, or any other enhanced damages.
`
`Sixth Affirmative Defense
`
`The alleged trade dress of the POLYMAG is not famous.
`
`Seventh Affirmative Defense
`
`The alleged trade dress of the POLYMAG is functional.
`
`Eighth Affirmative Defense
`
`The alleged is trade dress of the POLYMAG has not acquired secondary
`
`meaning and is not distinctive.
`
`
`
`18
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 19 of 29
`
`Ninth Affirmative Defense
`
`The alleged trade dress of the POLYMAG is generic.
`
`Tenth Affirmative Defense
`
`PREDATOR INTERNATIONAL, INC.‟s claims are barred by the Fair Use
`
`Doctrine.
`
`Eleventh Affirmative Defense
`
`PREDATOR INTERNATIONAL, INC.‟s claims are barred by the Merger Doctrine.
`
`Twelfth Affirmative Defense
`
`PREDATOR INTERNATIONAL, INC. lacks standing to bring a claim for patent
`
`infringement.
`
`Thirteenth Affirmative Defense
`
`Any damages assignable to PREDATOR INTERNATIONAL, INC. are limited
`
`under 17 U.S.C. § 504(b), (c) and 17 U.S.C. § 505.
`
`Fourteenth Affirmative Defense
`
`
`
`PREDATOR INTERNATIONAL, INC. failed to perform the necessary due
`
`diligence on patent ownership prior to initiating this lawsuit.
`
`WHEREFORE, Defendants, GAMO OUTDOOR USA, INC. and INDUSTRIAS EL
`
`GAMO S.A., now known as, GAMO OUTDOOR S.L., respectfully request this Court
`
`dismiss the Fourth Amended Complaint at Plaintiff‟s cost and enter a judgment as
`
`follows:
`
`(a) That U.S. Copyright Registration No. TX-6-913-217 is invalid and
`
`unenforceable.
`
`
`
`19
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 20 of 29
`
`(b) That U.S. Copyright Registration No. TX-6-913-217 has not been and
`
`is not infringed by GAMO.
`
`(c) The alleged Polymag Trade Dress is unprotectable.
`
`(d) GAMO has not and is not infringing any intellectual property in
`
`Predator‟s POLYMAG pellets.
`
`(e) That GAMO is awarded its costs and attorneys‟ fees associated with
`
`the defense of this matter.
`
`(f) That GAMO is granted all other relief this Honorable Court deems just
`
`and appropriate.
`
`GAMO’S COUNTERCLAIM FOR DECLARATORY JUDGMENT
`
`
`
`Defendants, GAMO OUTDOOR USA, INC. (“GAMO USA”) and INDUSTRIAS EL
`
`GAMO S.A., now known as, GAMO OUTDOOR S.L., a Spanish corporation (“GAMO
`
`SPAIN”) (hereinafter collectively referred to as “GAMO”), by counsel SWANSON,
`
`MARTIN & BELL, LLP and PATTON BOGGS LLP, pursuant to Rule 13(c) of the
`
`Federal Rules of Civil Procedure, hereby assert their counterclaims for declaratory
`
`judgment on patent infringement, trade dress infringement and copyright infringement
`
`against Plaintiff/Counter-Defendant PREDATOR INTERNATIONAL, INC.‟s (“Predator”).
`
`FACTUAL BACKGROUND
`
`1.
`
`GAMO is in the business of manufacturing, distributing and selling airguns
`
`and airgun pellets internationally.
`
`2.
`
`Among other airgun and airgun pellet products, GAMO SPAIN
`
`manufacturers, distributes and sells internationally an airgun pellet with a polymer tip
`
`under the federally registered trademark RED FIRE®, Registration No. 3632918 (“RED
`
`
`
`20
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 21 of 29
`
`FIRE® pellets”). GAMO USA distributes and sells the RED FIRE® within the United
`
`States. GAMO‟s RED FIRE® pellets feature a red tip and involve a unique
`
`manufacturing process, which is the subject of international patent rights and a pending
`
`U.S. patent application.
`
`3.
`
`In approximately 2000, Thomas May (“May”) and Lee Phillips (“Phillips”)
`
`formed Predator. Predator is also in the business of manufacturing, distributing and
`
`selling airgun pellets.
`
`4.
`
`Predator alleges that it sells an airgun pellet with a hard polymer ballistic
`
`tip under the trade name POLYMAG (“POLYMAG pellets”).
`
`5.
`
`On January 26, 2001, May and Phillips filed U.S. Patent Application No.
`
`09/770,816 for Polymer Ballistic Tip Pellets as the inventors of the POLYMAG, which
`
`matured into United States Patent No. 6,526,893 (the “„893 Patent”) on March 4, 2003.
`
`6.
`
`On or about January 1, 2007, Jay Cogswell and Richard Dixon allegedly
`
`purchased Predator from May without paying Phillips or obtaining his consent.
`
`7.
`
`On or about December 2, 2008, May assigned his rights, title and interest
`
`in the „893 Patent to Predator.
`
`8.
`
`At no time did Phillips assign his rights, title and interest the „893 Patent to
`
`Predator or to May.
`
`9.
`
`In July 2010, GAMO obtained an assignment from Lee Phillips in his
`
`rights, title and interest to and in the „893 Patent.
`
`10. Predator‟s POLYMAG pellets are manufactured and sold with red tips that
`
`one attaches with adhesives. The shade of red featured on the POLYMAG pellets is
`
`distinguishable from the shade of red implemented by GAMO on its RED FIRE® pellets.
`
`
`
`21
`
`
`
`Case 1:09-cv-00970-PAB-KMT Document 164 Filed 09/23/10 USDC Colorado Page 22 of 29
`
`11. Predator has alleged that the red tip feature of the POLYMAG pellets is
`
`distinctive and well-
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
