Trademark Trial and Appeal Board Electronic Filing System. httgj/estta.usQto.gov
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA576250
`ESTTA Tracking number:
`12/12/2013
`
`
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91204168
`91204168
`Plaintiff
`Plaintiff
`International Medcom, Inc.
`International Medcom, Inc.
`JULIA SPOOR GARD
`JULIA SPOOR GARD
`BARNES THORNBURG LLP
`BARNES THORNBURG LLP
`11 SOUTH MERIDIAN STREET
`11 SOUTH MERIDIAN STREET
`INDIANAPOLIS, IN 46204
`INDIANAPOLIS, IN 46204
`UNITED STATES
`UNITED STATES
`jgard@btlaw.com, bmcginnis@btlaw.com, tmindocket@btlaw.com
`jgard@bt|aw.com, bmcginnis@bt|aw.com, tmindocket@bt|aw.com
`Response to Board Order/Inquiry
`Response to Board Order/Inquiry
`Brian J. McGinnis
`Brian J. McGinnis
`bmcginnis@btlaw.com, tmindocket@btlaw.com
`bmcginnis@bt|aw.com, tmindocket@bt|aw.com
`/bmcginnis/
`lbmcginnisl
`12/12/2013
`12/12/2013
`Int'l Medcom v. SEI - Filed Complaint (Doc 1).pdf(813431 bytes )
`|nt'| Medcom v. SEI — Filed Complaint (Doc 1).pdf(813431 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page1 of 27
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`Carlton J. Willey (CA Bar No. 269120)
`WILLEY & BENT ALEB LLP
`One Market Street, Steuart Tower Suite 500
`San Francisco, CA 94105
`Phone: ( 415) 426-7111
`Fax: (415) 276-1737
`Carlton@WBLawPartners.com
`
`Attorney for Plaintiff
`International Medcom, Inc.
`
`sef
`X FILED
`NOV - 6 2013
`
`RICHAAO W. WIEKING
`N CLERK, U.S. DISTRICT COURT
`ORTHERN DISTRICT OF CALIFORNIA
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`UNITED STATES DISTRICT COURT
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`FOR THE NORTHERN DISTRICT OF CALIFORNIA
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`SAN FRANCISCO DIVISION
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`INTERNATIONAL MEDCOM.INC.,
`a California Corporation;
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`! me· 1a 5193/
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`Plaintiff,
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`vs.
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`S.E. INTERNATIONAL, INC.,
`a Tennessee Corporation;
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`Defendant.
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`___________________________)
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`I
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`COMPLAINT WITH JURY DEMAND
`FOR:
`1) BREACH OF CONTRACT
`(NONPAYMENT OF ROYA
`2) BREACH OF CONTRACT
`(TRADEMARK OWNERSHIP
`RIGHTS)
`3) BREACH OF CONTRACT
`(FAILURE TO DELIVER)
`4) BREACH OF CONTRACT
`(FAILURE TO ARBITRATE)
`5) BREACH OF CONTRACT
`(WRONGFUL USE OF
`PROPRIETARY INFORMATION)
`6) LANHAM ACT§ 43(A) UNFAIR
`COMPETITION
`7) CALIFORNIA COMMON LAW
`TRADEMARK INFRINGEMENT
`8) CAL. BUS. & PROF. CODE§
`17200 UNFAIR BUSINESS
`PRACTICES AND UNFAIR
`COMPETITION
`9) DECLARATORY JUDGMENT
`10) BREACH OF FIDUCIARY DUTY
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`AND MOTION TO COMPEL
`ARBITRATION
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`WILLEY&
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page2 of 27
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`Plaintifflnternational Medcom, Inc. ("IM" or "Plaintiff') hereby petitions the Court to
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`compel arbitration pursuant to agreement and Federal and California state law, and complains anf
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`alleges as follows:
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`JURISDICTION AND VENUE
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`II
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`1.
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`This Court has subject matter jurisdiction over the matter pursuant to 28 U.S.C. § 1332( ),
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`as the amount in controversy exceeds $75,000, and Plaintiff and Defendant are citizens !of
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`different states. This Court has supplemental jurisdiction over Plaintiff's state law clai s
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`pursuant to 28 U.S.C. § 1367.
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`2.
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`3.
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`This Court also has subject matter jurisdiction over the matter pursuant to 28 U.S.C. § 13
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`as this matter arises under Federal Trademark law.
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`This Court has personal jurisdiction over the defendant in this matter, as the transacti 'ns
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`and occurrences that are the subject matter of this Complaint arose out of Defendan 's
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`business relations and transactions with Plaintiff in California, as described here n.
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`Defendant's contacts with Plaintiff in California were purposeful and substantial, such t;at
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`Defendant should reasonably anticipate being called into court in California. Specifical y,
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`the contract mentioned herein were made by Defendant with Plaintiff, a company do .i g
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`business in Sebastopol, California.
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`4.
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`Venue is proper in the Northern District of California pursuant to 28 U.S.C. § 13 1,
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`because a substantial part of the events or omissions giving rise to this Complaint occu ed
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`in Sonoma County, California.
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`THE INTRADISTRICT ASSIGNMENT
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`5.
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`Pursuant to Civil. L.R. 3-2( d), this case is suitable for assignment in the San Francisco'1 or
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`Oakland divisions, because a substantial amount of the events and omissions giving risel to
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`this action occurred in Sonoma County, California.
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`6.
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`Plaintiff International Medcom, Inc. ("IM" or "Plaintiff') is a California Corporation
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`headquarters at 103 Morris Street, Suite A5, Sebastopol, CA 95472 in Sonoma County.
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`ith
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`WILLEY&
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`SAN FRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page3 of 27
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`7.
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`8.
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`9.
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`10.
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`Defendant S.E. International, Inc. ("SEI" or "Defendant") is a Tennessee Corporation w th
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`headquarters at 436 Farm Rd. Summertown, TN 38483.
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`GENERAL ALLEGATIONS
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`Founded in 1986, Plaintiff International Medcom, Inc. is in the business of developi g,
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`producing, and marketing high quality radiation detection instruments and systems.
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`Defendant S.E. International, Inc. is a manufacturer of radiation detection instruments.
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`In May I991, IM and SEI jointly endeavored to develop and bring to market a radiati n
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`contamination monitor, which they named "Inspector." They memorialized their agreem nt
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`to this effect in writing. A true and accurate copy of that agreement (the
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`Agreement") is attached hereto as Exhibit A and is incorporated by reference.
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`11.
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`Under the Inspector Agreement, IM' s contribution to the endeavor was to be an "ini ial
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`cash investment, additional market research, electronic and mechanical design, engineer g
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`and the custom enclosure," while SEI was to contribute "its technical expertise, mar et
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`research, an
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`initial cash
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`investment
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`for development, marketing,
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`tooling,
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`1nd
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`manufacturing." Exhibit A, p. 2.
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`12.
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`Although IM and SEI each had specified capital and labor contributions to the developm nt
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`and manufacture of the Investor product, the contract contemplated parallel production
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`sales of the product by both companies.
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`13.
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`The Inspector Agreement specifically provides for quarterly royalty payments of 10% of
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`average selling price per unit on the number of instruments either company sells in exc ss
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`of the other company, to be made by the company whose sales exceed those of the ot er
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`company in any given quarter. Ex. A., p. 4.
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`14.
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`The Inspector Agreement provides that both companies would maintain sales and paymfnt
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`records, and that all such records would be made "open to review by either party." Ex.IA,
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`p. 4.
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`15.
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`Since the Third Quarter of 20 II, IM has received no royalty payments from SEI, or recofds
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`ofsales.
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`16.
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`The Inspector Agreement also contemplates ownership rights of intellectual
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`WILLEY&
`BENTALEB LLP
`SAN FRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page4 of 27
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`relating to the Inspector product. The contract states, "SEI reserves the right to tradem k
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`the name 'Inspector' but will allow IM to use the name on this product." Ex. A, p. 4.
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`17.
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`18.
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`Further, the Inspector Agreement states unequivocally that with regard to ownership
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`intellectual property rights, "The rights to the Inspector will be jointly owned by S I
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`and IM." Ex. A, p. 5 (emphasis added).
`With regard to rights to other aspects of the Inspector aside from the name, the Inspec~or
`Agreement clarifies that "Any proprietary design, software programming, and tooling for
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`the custom enclosure are owned exclusively by IM. SEI will be prohibited from using itl]in
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`future products without the agreement ofiM." Ex. A, p. 4.
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`19.
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`The Inspector Agreement also contemplated a scenario where SEI as manufacturer wo ld
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`supply the Inspector product upon the purchase orders ofiM. The Agreement provides," s
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`a manufacturer, SEI agrees to supply the Inspector in a manner that is necessary to m et
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`demand, maintain quality and market competitiveness." Another clause says SEI will "G ve
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`1M's purchase orders equal priority when assigning fulfillment of orders." Ex. A, p. 3.
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`20.
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`However, beginning in Third Quarter 2011 SEI delayed delivery of 1M's Spring 2 111
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`purchase orders for the Inspector product for approximately 7 months, causing damagel to
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`IM.
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`21.
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`Under the plain language of the Inspector Agreement, the contract would "continue in
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`force and effect and can only be terminated or changed by mutual agreement of SEI
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`IM."
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`22.
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`Finally, the Inspector Agreement provides for mandatory arbitration should a dispute ar se:
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`"In the unlikely event of an unreconcilable [sic] dispute, both parties agree to appoint an
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`impartial arbitrator or arbitrators within 30 days. The cost of arbitration will be equ lly
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`shared by both parties and the decision ofthe arbitrator(s) will be binding." Ex. A, p. 5.
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`23.
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`For more than 20 years, IM and SEI each independently produced and sold the Inspe~tor
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`product under that name, and regularly continued royalty payments where
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`though those payments have never been audited by either company.
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`24.
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`However, on July 30, 2011, Dan Sythe of IM wrote Susan Skinner of SEI to express I .
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`WILLEY&
`BENTALEB LLP
`SAN FRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page5 of 27
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`concern with SEI's business practices, including but not limited to predatory pricing on t ,e
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`part of SEI with regard to the Inspector product, aimed at driving down IM sales there
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`Mr. Sythe expressed that the business relationship between the two companies was "n t
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`currently working" and set forth a list of proposals to modify the relationship goi g
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`incorporated by reference.
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`forward. A true and accurate copy of that email is attached hereto as Exhibit B and i11s
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`25.
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`Two months later, on September 23, 2011, Ms. Skinner replied to Mr. Sythe, stating t
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`the business relationship "was no longer serving us." She asserted that she w s
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`"terminating" SEI's business relationship with IM through her letter, and unilatera. y
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`claimed that "if the [Inspector Agreement] document defines a binding agreement betwe n
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`SEI and IM, IM has materially breached that agreement." Ms. Skinner also claimed t at
`SEI owned all rights to the Inspector trademark, and ordered that IM cease all use of ~e
`mark in branding its products. A true and accurate copy of that email is attached hereto lias
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`Exhibit C and is incorporated by reference.
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`26.
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`On October 13,2011, IM responded to SEI's claims of breach and termination. Noting t at
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`it was clear the relationship was at an impasse, IM again proposed a set of terms or
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`winding down the relationship in a mutually agreeable way. IM proposed that it would h ve
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`the right to audit SEI' s records to determine royalties due and owing to IM, that both part es
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`would discontinue use of the "Inspector" mark after two years, and that SEI wo ld
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`discontinue use of all of IM's proprietary technology (product design, software, ,nd
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`tooling) after that time, among other terms.
`In an October 24, 2011 response, SEI claimed that any agreements with IM pertainin~ to
`the "Inspector" product have ended, and that IM must cease any further use of the m1rk,
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`and should expeditiously re-brand its product to avoid confusion on the market. SEI J1so
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`claimed that it had paid all monies due to IM, and denied that it was using any aspectJ of
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`the "Inspector" product design that can be considered proprietary to IM, based solely
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`lack of documents that support the existence of any such proprietary technology. In o 'her
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`words, SEI claimed that because IM had no documentation proving ownership o . its
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page6 of 27
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`intellectual property, SEI was free to use it.
`In a December 7, 20 II response, IM stated in no uncertain terms that it maintains the ri~ht
`to use the mark "Inspector" for its products, and that nothing in the Inspector Agreemtnt
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`,,
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`gives SEI exclusive rights in that name. Further, IM pointed out specific proprietfry
`technology belonging to IM that SEI was unlawfully using and continues to use with~ut
`permission, including the following:
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`,,
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`• The electronics [of the Inspector] are all designed by IM. Although SEI 4id
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`some printed circuit board design under 1M's supervision, the electronifs,
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`the functions, the overall printed circuit board and electronic design ire
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`proprietary and owned by IM.
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`• The user interface and physical layout of the [Inspector] instrument is basfd
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`on 1M's Radalert 50, is a variant of that tooling, and is proprietary apd
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`owned by IM. This includes the switch functions and position, and Iay4ut
`relative to the detector and display. The interface to headphones a~d
`computers/data loggers is an IM invention, first utilized in the Radalert ~0,
`and a proprietary feature owned by IM.
`• The input jack for electronic calibration [on the Inspector] is an I~
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`proprietary feature.
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`• The push button switches on the end panel [of the Inspector] for setting altrt
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`and timer features were designed and created by IM and are considered to e
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`proprietary.
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`• The custom LCD [on the Inspector] is proprietary to IM.
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`• The microprocessor/software system design, pin assignments, power savi
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`technology, and software algorithms [ofthe Inspector] are proprietary to I
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`• The digital calibration procedure [on
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`the Inspector] for
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`technician exposure is an IM innovation and proprietary to IM.
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`IM thus demanded compensation from SEI for SEI's use of this proprietary technology, b t
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`to date has received none.
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page7 of 27
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`29.
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`34.
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`Finally, IM stated unequivocally, "If the foregoing is not acceptable, then IM her , y
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`demands that the matter be submitted to binding arbitration pursuant to the arbitrati n
`clause in the May 23, 1991 Agreement. Neither the forum nor the procedure for selecti~g
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`arbitrator(s) is specified in that Agreement. IM proposes that the arbitration take place it a
`neutral forum before a single arbitrator selected in accordance with the Commerc~al
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`Arbitration Rules of the American Arbitration Association. Prior to actually commencipg
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`arbitration, IM proposes that the parties participate in a non-binding mediation with AAAl"
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`On January 17, 2012, SEI replied to IM, and claimed again that it owned the exclusi~e
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`rights to the name "Inspector," and that IM was only permitted to use the mark during
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`collaboration between SEI and IM an in INSPECTOR-branded product. SEI claimed t at
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`that collaboration has ended and that SEI would therefore continue to pursue and protect ts
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`exclusive rights in the INSPECTOR mark. As to 1M's specified proprietary informatiqn,
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`SEI claimed that anything it was using was either in the public domain and/or represe1ts
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`general technical knowledge, and therefore SEI claimed it owed IM nothing for using t+s
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`information. Finally, SEI stated that it declines 1M's proposal for arbitration or mediation. I
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`On August 3, 2011, SEI applied to register the mark "Inspector" in connection w· h
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`radiation detectors, and alleged a date of first use in commerce of June 30, 1995.
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`January 12, 2012, that application was published, and on March 5, 2012, IM filed
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`Opposition to SEI's trademark application. That matter is still pending in the United Sta+s
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`Patent and Trademark Office as of the date of this filing, and counsel for IM has requeste~l, a
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`!! ,,
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`stay on those proceedings pending the outcome of this lawsuit.
`As a joint owner of the rights to the "Inspector" name, IM has never permitted t'>
`authorized SEI's unilateral application to register a trademark.
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`SEI is therefore seeking to unilaterally control the "Inspector" trademark that is jointly
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`owned by SEI and IM, and is purporting to exercise exclusive control over that trademafk
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`to the detriment ofiM.
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`IM has used the name "Inspector" in interstate commerce at least as early as March l99r,
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`long prior to both the date that SEI filed its application, and the date that SEI has asserted s
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page8 of 27
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`its date of first use. Upon information and belief, SEI has no rights in the "Inspector" m rk
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`prior to IM' s rights in the mark.
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`35.
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`As a result of the quality and excellence of 1M's goods, the widespread association of e
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`"Inspector" trademark with IM in the minds of the relevant public, and as a result of
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`I
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`continuous and extensive use of the "Inspector" mark, IM established substantial rights in
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`the "Inspector" mark long prior to SEI's filing of its application to register the "Inspect
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`trademark.
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`36.
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`Through its long-term use of the "Inspector" trademark, IM has developed substant al
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`goodwill in that trademark.
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`37.
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`1M's "Inspector" trademark has acquired distinctiveness and substantial secondary meani g
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`in the minds of relevant consumers.
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`IM is widely recognized as a source of origin of radiation detectors marketed and s4ld
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`under the "Inspector" trademark.
`SEI's goods are marketed to the same consumers through the same channels of trade ~s
`1M's goods.
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`38.
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`39.
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`40.
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`If SEI and IM are not joint owners of the mark, then SEI' s use of the "Inspector" tradem"fk
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`is likely to create confusion among relevant consumers as to the source or origin of t e
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`goods.
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`41.
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`SEI' s purported exclusive use of the "Inspector" trademark is likely to cause confusion, r
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`to cause mistake, or to deceive, as relevant consumers are likely to mistakenly believe t ' t
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`SEI is the exclusive owner of the "Inspector" trademark and the
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`provider of radiation detector goods under the "Inspector" trademark.
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`42.
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`SEI's registration of the "Inspector" trademark would be deceptive within the meaning f
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`Section 2(a) ofthe Trademark Act, 15 U.S.C. § 1052(a).
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`43.
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`SEI's registration and/or exclusive use of the "Inspector" trademark would adversely affe t
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`1M's business and irreparably damage the substantial goodwill IM has cultivated via · s
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`!
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`long-term use of its trademark.
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`44.
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`As a result of SEI's conduct alleged herein, IM has been damaged in an amount to e
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`WILLEY&
`BENTALEB LLP
`SAN FRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page9 of 27
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`determined at trial, but exceeding $600,000.
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`FIRST CAUSE OF ACTION
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`Breach of Contract (Nonpayment of Royalties)
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`Plaintiffhereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`II
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`Under the Inspector Agreement, SEI was obligated to make quarterly royalty payments II to
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`IM where its Inspector sales surpassed those of IM.
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`SEI has failed to make royalty payments to IM from the third quarter of 20 II to the prese t.
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`Upon information and belief, in every quarter from the third quarter of 20 II to the prese t,
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`SEI sales of the Inspector product have surpassed those of IM.
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`All conditions necessary to trigger SEI's obligation to pay royalties to IM have b en
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`satisfied.
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`SEI's failure to make the required royalty payments to IM was without
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`excuse lor
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`justification.
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`As a result of SEI's failure to make royalty payments to IM, IM has been damaged in
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`amount to be determined at trial.
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`SECOND CAUSE OF ACTION
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`Breach of Contract (Trademark Ownership Rights)
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`Plaintiffhereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`The Inspector Agreement provides that all rights to the Inspector product are jointly ow d
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`by SEI and IM, and that SEI and IM will jointly be permitted to use the tradem rk
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`!
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`"Inspector" in connection with this radiation detector. The contract therefore imposes 1 n
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`"
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`1r
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`obligation upon SEI and IM to permit each other to continue using the "Inspect
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`45.
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`46.
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`47.
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`48.
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`49.
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`50.
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`51.
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`52.
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`53.
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`trademark and refrain from efforts to prevent the exercise of joint ownership rights in
`~~~
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`54.
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`"
`Without excuse or justification, SEI has breached this contractual obligation by attemptipg
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`to revoke 1M's right to use the "Inspector" trademark, and by purporting to exercjse
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`exclusive rights thereto, as alleged herein.
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`55.
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`As a result of SEI' s conduct, IM has been damaged in an amount to be determined at trial 1
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`WILLEY&
`BENT ALEB LLP
`SAN FRANCISCO
`
`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
`
`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page10 of 27
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`THIRD CAUSE OF ACTION
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`Breach of Contract (Failure to Deliver)
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`56.
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`57.
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`ii
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`The Inspector Agreement obligates SEI to supply and deliver the Inspector product to I~
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`upon IM submitting purchase orders, in order for IM to fulfill its own sales orders of tte
`~~
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`IM submitted purchase orders in March 2011, but SEI delayed fulfillment and delivery pf
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`58.
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`those orders to IM for approximately 7 months, eventually forcing IM to cancel the ordersj
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`59.
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`As a result of SEI's delay in shipment, IM was damaged in an amount to be determined ~t
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`trial.
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`FOURTH CAUSE OF ACTION
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`Breach of Contract (Failure to Arbitrate)
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`The Inspector Agreement contains a mandatory arbitration clause.
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`li
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`11
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`II
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`li
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`IM has demanded arbitration of the dispute between IM and SEI pursuant to the arbitrati+
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`clause.
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`SEI has refused to submit to arbitration as demanded by IM,
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`As a result, IM has been damaged in an amount to be determined at trial.
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`FIFTH CAUSE OF ACTION
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`Breach of Contract (Wrongful Use of Proprietary Information)
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`11
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`The Inspector Agreement prohibits SEI from using 1M's proprietary information in othtr
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`products.
`SEI used 1M's proprietary information without 1M's consent on products other than t~e
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`il
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`II
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`"Inspector" product, including but not limited to SEI's "Digilert" product.
`As a result of SEI's use of 1M's proprietary information, IM has been damaged in Jb
`. d
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`b d
`amount to e etermme at tna .
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`60.
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`61.
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`62.
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`63.
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`64.
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`65.
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`66.
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`67.
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`68.
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`WILLEY&
`BENT ALEB LLP
`SAN FRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`10
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page11 of 27
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`SIXTH CAUSE OF ACTION
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`Unfair Competition in Violation of Lanham Act§ 43(a)
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`69.
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`70.
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`IM has a protectable ownership interest in the "Inspector" trademark that predates a1y
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`interest of SEI in that trademark.
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`II
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`71.
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`SEI's use of the "Inspector" trademark has caused and will continue to cause consumrr
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`72.
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`73.
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`74.
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`75.
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`confusion between 1M's trademark and SEI's infringing mark.
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`As a result of SEI's conduct, IM has been damaged in an amount to be determined at triai.il
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`',
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`SEVENTH CAUSE OF ACTION
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`California Common Law Trademark Infringement
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`Plaintiffhereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`IM has a protectable ownership interest in the "Inspector" trademark that predates a+y
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`interest of SEI in that trademark.
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`I!
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`SEI's use of the "Inspector" trademark has caused and will continue to cause consu+r
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`confusion between 1M's trademark and SEI's infringing mark.
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`76.
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`As a result of SEI 's conduct, IM has been damaged in an amount to be determined at trial
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`EIGHTH CAUSE OF ACTION
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`Unfair Business Practices and Unfair Competition
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`in Violation of Cal. Bus. and Prof. Code § 17200 et seq.
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`77.
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`78.
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`Defendant engaged in the following unfair business practices, unlawful and/or fraudul9nt
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`conduct:
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`a.
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`b.
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`c.
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`Breach of contract, as alleged herein
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`Unfair competition and trademark infringement, as alleged herein
`Wrongful use ofiM's proprietary information without 1M's consent, as alle~d
`herein
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`79.
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`The conduct of SEI, as alleged above, constitutes unlawful, unfair and fraudulent busin 1 ss
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`acts and practices prohibited by Business and Professions Code section 17200, and s id
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`11
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`WILLEY&
`BENTALEB LLP
`SAN FRANCISCO
`
`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
`
`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page12 of 27
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`unlawful, unfair and fraudulent conduct directly harmed IM.
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`80.
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`As a direct and proximate result of SEI's unlawful activities, IM has suffered damages, aqd
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`SEI has reaped unfair economic benefits, in an amount to be proven at trial.
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`NINTH CAUSE OF ACTION
`
`Declaratory Judgment
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`81.
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`82.
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`83.
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`84.
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`I
`SEI claims that the Inspector Agreement has somehow ceased to be in effect. IM conten~s
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`:!
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`that the Inspector Agreement is still in effect.
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`IM contends that SEI has breached the Inspector Agreement by failing to pay royalties aJd
`engaging in unlawful exercise of exclusivity rights over the "Inspector" mark. A cloud ~f
`suspicion remains as to whether IM, SEI, or both can continue to lawfully utilize that mar~.
`An actual, justiciable controversy therefore exists as to each of the following issues:
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`I!
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`a.
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`b.
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`c.
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`d.
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`Whether the Inspector Agreement is still in effect
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`Whether SEI has breached the Inspector Agreement
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`Whether IM has a valid protectable interest in the name "Inspector"
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`Whether SEI and IM are joint owners of the "Inspector" mark
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`85.
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`Declaratory judgment is necessary to terminate the controversy and clarify the legal rig its
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`ofthe parties.
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`TENTH CAUSE OF ACTION
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`Breach of Fiduciary Duty
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`Plaintiff hereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`il ,,
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`86.
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`87.
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`88.
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`As joint venturers who endeavored to develop and produce the Inspector product, SEI ow. d
`a fiduciary duty to IM to act with the utmost good faith for the benefit of IM, including tfut
`not limited to a duty of undivided loyalty that prohibited SEI from undertaking pr
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`I'
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`By endeavoring to exercise exclusive rights over the "Inspector" mark to the detriment 11
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`participating in activities adverse to the interests of IM.
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`exclusion oflM, and by copying 1M's inspector logo, SEI breached its fiduciary duty to I
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`89.
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`As a direct and proximate result of SEI's breach of its fiduciary duty, IM suffered dama s
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`12
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`WILLEY&
`BENTALEB LLP
`SAN fRANCISCO
`
`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page13 of 27
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`in an amount to be determined at trial.
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`MOTION TO COMPEL ARBITRATION
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`Plaintiffhereby incorporates all of the preceding paragraphs as if fully set forth herein.
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`The Inspector Agreement contemplates interstate commerce, as well as commerte
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`occurring in the State of California.
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`The Inspector Agreement contains a mandatory arbitration clause.
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`,;
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`IM has demanded arbitration of the dispute between IM and SEI pursuant to the arbitrati1n
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`clause.
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`SEI has refused to submit to arbitration as demanded by IM.
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`Pursuant to 9 U.S.C. § 4 and Cal. Code Civ. Proc. § 1281.2, IM hereby moves the Court tpr
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`90.
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`91.
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`92.
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`93.
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`94.
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`95.
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`an Order compelling arbitration of this matter.
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`JURY DEMAND
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`Plaintiff demands a trial by jury on all issues so triable.
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`PRAYER FOR RELIEF
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`WHEREFORE, Plaintiff seeks relief against Defendant as follows:
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`',
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`1:
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`1.
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`2.
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`3.
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`4.
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`5.
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`6.
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`For general damages according to proof;
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`For special damages according to proof;
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`For statutory pre-judgment interest at the legal rate;
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`For restitution and/or disgorgement of ill-gotten gains pursuant to Cal. B+.
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`& Prof. Code§ 17200 et seq.;
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`li
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`For declaratory judgment that (1) the Inspector Agreement remains in effe4t;
`(2) SEI has materially breached the Inspector Agreement; (3) IM has a vali~,
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`protectable interest in the "Inspector" mark; and ( 4) SEI and IM are joirt
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`!
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`owners of the "Inspector" mark;
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`' I
`For an Order enjoining (1) any further attempt by SEI to register tte
`"Inspector" trademark without the written permission and approval of I~;
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`and (2) any other further attempt by SEI to prevent IM from using tte
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`"Inspector" mark;
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`WILLEY&
`BENT ALEB LLP
`SAN fRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`

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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page14 of 27
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`For attorney's fees pursuant to 15 U.S.C. § 1117, and all other applica~e
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`7.
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`8.
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`law; and
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`For other just and equitable relief as deemed appropriate by the Court.
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`Respectfully Submitted,
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`DATED: NOVEMBER 6, 2013
`
`Is/ Carlton J Willey
`
`Carlton J. Willey (269120)
`WILLEY & BENT ALEB LLP
`One Market Street, Steuart Tower, Suite 500
`San Francisco, CA 94105
`Phone: (415) 426-7111
`Fax: (415) 276-1737
`Carlton@WBLawPartners.com
`
`Attorney for Plaintiff
`International Medcom, Inc.
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`WILLEY&
`BENT ALEB LLP
`SAN FRANCISCO
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`COMPLAINT WITH JURY DEMAND AND MOTION TO COMPEL ARBITRATION
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`14
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`Case3:13-cv-05193-LB Document1 Filed11/06/13 Page15 of 27
`Case3:13—cv—@93—LB Documentl Filedll/O6/J§QPage15 of 27
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`EXHIBIT A
`EXHI