Suppressed v. Suppressed - Complaint (Bala Bangles) Sans Exhibits

Case: 1:21-cv-05051 Document #: 1 Filed: 09/23/21 Page 1 of 17 PageID #:1
FILED
IN THE T'NITED STATES DISTRICT COURT stP 2 3 20210)
FOR THE NORTHERN DISTRICT OF ILLINOIS
EASTERN DIVISION THOMASG. BRUTON
CLERK, U.S. DTSTRICT COURT
Bala Bangles, Inc.,
Plaintiff, Civil Action No.
v.
The Entities and Individuals Identified in

Amex A,
Defendants.
COMPLAINT
Plaintiff, Bala Bangles, Inc. ("Bala" or "Plaintiff'), by and through its undersigned
attorneys, for its Complaint against the Entities identified in Annex A (individually and
collectively referred to as "Defendants"), herein allege:
NATURE OF THE ACTION
1. This is an action for copyright infringement pursuant to 17 U.S.C. $ 501, trademark
infringement and counterfeiting pursuant to 15 U.S.C. $ I I 14, false designation of origin and unfair
competition pursuant to 15 U.S.C. $ 1 125(a), and design patent infringement pursuant to 35 U.S.C.
$ 271 against Defendants for unlawful use of Bala's trademarks, copyrighted imagery, and design
patent on and in conjunction with unauthorized sales of counterfeit products.
Defendants are individuals and entities who trade on Bala's goodwill and sell and/or
offer to sell counterfeit and unauthorized products through various "storefronts" via online retail
websites.
JURISDICTION AND VENUE
3. This Court has jurisdiction of Bala's federal claims pursuant to 28 U.S.C. $ 1331
and 1338(a).
4. Each Defendant runs a "storefront" accepting US Dollars through Alibaba, Ali
Express, Amazon, DH Gate, eBay, Joom, Newegg, Shopify, or Wish website platforms through
which each Defendant specifically targets residents in this judicial district by offering to sell and,
upon information and belief, shipping infringing and/or counterfeit products to residents within the
Northern District of Illinois, by: displaying infringing imagery in its product listings, selling and/or
offering to sell the protected design, and/or using Plaintiff s trademarks, copyrights, and/or design
in its product listings. Thus each Defendant is commiffing, inter alia, trademark infringement,
copyright infringement, and design patent infringement in this district.
5. Venue in the Northern District of Illinois is proper pursuant to 28 U.S.C. $ 1391
because a substantialpart of the events that give rise to the claim occur within this District, each
Defendant has committed acts of infringement in and has significant contacts within this District,
and each Defendant as delineated in Annex A is infringing Plaintiff s intellectual property in its
product listings targeted at this District and/or are using, selling, or offering to sell the infringing
and/or counterfeit mark and/or design in this District. In addition, on information and belief, each
of the Defendants is a foreign entity or individual and "a defendant not resident in the United States
maybe sued in anyjudicial district ...." 28 U.S.C. $ 1391(c)(3).

PARTIES
Bala Bangles
6. Bala is a limited liability company organized and existing under the laws of the
State of Delaware, having its principal place of business at280l Hyperion Ave#102, Los Angeles,
Califomia 90027.
7. The Bala weighted exercise band originally launched in 2017 and has become a
wildly popular product sold across the United States.
8. Over the past approximately 3 years, Bala has sold millions of dollars' worth of
Bala-branded fi tness products.
9. In2019, Bala sold $2 million in Bala branded products, and by the end of 2020,
Bala sold $16 million in Bala branded products.
10. The Bala products are distributed and sold to consumers throughout the United
States, including in Illinois, through Bala's official website, shopbala.com ("Bala's Website"), as
well as through online retailers such as Amzon, and popular brick and mortar stores across the
country such as Nordstrom, Dicks Sporting Goods, and Saks.
1 1. Bala has offered its Bala products on the Bala Website at shopbala.com since 2018.
12. Bala also owns and operates its lnstagram account @bala which boasts 150,000
followers (the "lnstagram Account").
13. Both Bala's Website and its Instagram Account feature proprietary content,
including the Bala trademark, copyrighted imagery, and the Bala weighted exercise band that is
protected by the design patent for the purpose of marketing and selling its products to consumers.
14. In order to protect its goodwill and valuable brand, Bala federally registered its
trademark, photos, and unique design for its weighted exercise band, as outlined in detail below.
15. Exhibit 1 includes the relevant images asserted by Bala in this action and infringed
by Defendants, the visual picture materials subject thereto are referred to as the "Copyrighted
Materials." A copy of the registration certificates that cover the Copyrighted Materials are also
attached as Exhibit 1 (the "Bala Copyrights"). See Copyright Reg. Nos. VA 2253658, YA
2253663, V A 22537 81, VA 22537 83.
Bala Product Pictures Registered Visual YA2-253-658

2017 Material
2018 Material
2019 Material

2020 Material
16. The Bala Copyrights are original works of authorship created and owned by Bala.
t7. The registration for the Bala Copyrights are valid, subsisting, and in full force and
effect.
18. The following chart lists the trademarks asserted by Bala in this action (the "Bala
Trademarks"). A copy of the trademark registration for BALA and pending application for BALA
& design are attached hereto as Exhibit 2.
BALA Resistered 28 5678006 2ll9l20l9

Pending 28 90165497 9t08t2020
bo\o
19. The Bala Trademarks have been and continue to be used exclusively by Bala.
The registration for the Bala trademark is valid, subsisting, and

in full force and
20.
effect.
The registration for BALA constitutes primafacie evidence of

its validity and of
21.
1057(b)'
Bala,s exclusive right to use the Bala mark pursuant to 15 U.S.C' $
action (the
22. The following chart lists the design patent asserted by Bala in this
..Design patent,,). A copy of the design patent registration is attached hereto as Exhibit 3'
Bala is the assignee, and the sole and exclusive owner of all right,
title, and interest
21,.
, ..weighted Exercise Band." The'167 patent was duly and legally issued
in the 167 patententitled
by the United States Patent and Trademark Office on June 23,2020'
Bala,s design covered by the '167 patent is a weighted exercised

band. A photo of
24.
product are shown below:
the desigu protected by the Design Patent (the "Design") and Bala's
25. The Bala products have also been the subject of unsolicited publicity resulting
from their innovative design.
26. Among the unsolicited coverage, some of the publications that have featured the
Bala products are Vogue, Cosmopolitan Magazine, Forbes, Goop, Shape Magazine, CNN, and
more.
27. Bala has also been featured on the popular U.S. television show Shark Tank.
28. ln view of Bala's efforts and consumers' response to Bala's products, Bala's
Trademarks, Copyrighted Materials, and Desigu have become known throughout the United States,
uniquely signifying to consumers that the products come from Bala.
29. Because Bala's products have become popular and the Bala intellectual property is
recognized by consumers, the Bala products have been subject to widespread counterfeiting.
Similarly, because Bala uses its Trademarks,
Design, and Copyrighted Materials in its legitimate advertisements and product listings for genuine
Bala products, counterfeiters have also used the intellectual property in an effort to further deceive
consumers. Bala's investigation has revealed many online marketplace listings on platforms such
as AliExpress, eBay, Amazon, and Alibaba, including listings posted by Defendants, which offer
for sale and, on information and belief, sell counterfeit Bala goods to consumers in Illinois and
offer to ship those products to Illinois.
The Defendants
30. On information and belief, Defendants are individuals and business entities who
conduct business in the United States, including within Illinois, through their operation of
interactive, online marketplaces and/or websites which offer for sale counterfeit Bala goods
and/or use Bala's intellectual property in advertising and selling counterfeit products.
31 . On information and belief, based on similarities in the characteristics of some of the
websites and counterfeit merchandise offered for sale, some of the Defendants are related or work
together as part of a single enterprise to willfully make, distribute, offer for sale, and sell counterfeit
products displaying and/or using the Bala intellectual property.
32. At present, many of the Defendants can only be identified through their storefronts
and other limited publicly available information. Bala will voluntarily amend its Complaint as
needed if Defendants provide additional credible information regarding their identities.
DEFENDANTS' T'NLAWFUL CONDUCT
33. Defendants intentionally deceive and mislead consumers by creating storefronts
that appear as if they are authorized online retailers who offer bona fide Bala goods. These
websites commonly use Bala's Trademarks, Design, and/ot Copyrighted Materials without Bala's
permission. The sites also include payment options via: (1) credit cards, such as Visa@,
MasterCard@, Discover@, American Express@; (2) the platform's online payment service; or (3)
through other means denominated in U.S. currency, such as Apple Pay@. The content of these
sites is designed to make it difficult for consumers to detect that the site does not belong to an
authorized retailer or that the products being sold are counterfeit products.
34. Many of the storefronts created by Defendants to sell counterfeit Bala goods also
use either Bala's Copyrighted Materials, Bala's Trademarks, and/or sell or offer to sell product that
infringes the Design without authorization. Defendants use the Design, Trademarks, and/or
Copyrighted Materials in an effort to mislead consumers into believing the goods the Defendants
sell via their various storefronts are legitimate goods because this proprietary content also appears
on Bala's official website and social media accounts.

35. Similarly, many of the storefronts created by Defendants to sell counterfeit Bala
goods also misuse the Bala Trademarks within the text of the online marketplace listings.
Defendants leverage use of the Bala Trademarks in order to attract consumers searching for
genuine Bala products because the use of the Bala Trademarks in this manner causes these listings
to appear toward the top of internet search results for searches containing the Bala Trademarks.
Thus, these tactics contribute to the intentional misdirection of consumers using the internet to find
bona fide Bala products to instead be directed to counterfeit products on Defendants' listings.
36. Defendants, like many counterfeiters, operate under many different names on a
variety of different websites and sales platforms to overwhelm the marketplace with a multitude of
counterfeit products in order to evade detection by trademark owners. Upon information and belief,
some of the Defendants operate under more than one alias so as to avoid identification. These sites
conceal the actual persons and entities responsible for the websites and listings in favor of fictitious
ones.
37. Additionally, counterfeiters like Defendants commonly disable their marketplace
storefronts and attempt to disappear as soon as they learn that they have been sued. They typically
re-emerge under new online marketplace accounts with new fictitious names after a short period
of time. Additionally, these actors often utilize multiple Paypal@ accounts, credit card accounts,
and payment gateways so that even if detection requires them to close down one account, there are
others set up to take its place.
38. Counterfeiters located abroad frequently maintain off-shore and foreign bank
accounts. If detected, these counterfeiters quickly move funds from their accounts denominated in
U.S. currency, such as PayPal@ accounts, to off-shore bank accounts outside the jurisdiction of
this Court.
COT]NT I
FEDERAL COPYRIGHT INFRINGEMENT
17 U.S.C. $ 106 and 501
39. Bala repeats and incorporates by reference the allegations contained in Paragraphs
1 through 38.
40. Bala owns the copyright registrations attached hereto as Exhibit 1. The copyright
registrations are valid and enforceable.
41. The Copyright Act provides in pertinent part that "[a]nyone who violates any of the
exclusive rights of the copyright owner as provided by sections 106 through 122...is an infringer
of the copyright..." 17 U.S.C. $ 501.
42. Defendants have infringed and continue to infringe the Bala Copyrighted Materials
by deliberately copying, reproducing, displaying, and/or creating derivative works of the Bala
Copyrighted Materials on the Defendants' product listings without Bala's authorization in violation
of 17 U.S.C. $$ 106 and 501.
43. The Defendants' conduct is blatant, wanton, and willful.
44. Such conduct as alleged herein has damaged Bala in an amount to be determined at
trial.
45. Defendants' conduct has caused and will continue to cause Bala irreparable harm
for which there is no adequate remedy at law unless restrained.
46. Bala is entitled to injunctive relief, actual damages, and to recover the profits that
Defendants realize for such unauthorized conduct pursuant to 17 U.S.C. $$ 502 and 504.
COI.INT II
FEDERAL TRADEMARK INFRINGEMENT AND COUNTERFEITING
ls u.s.c. $ 1114
1 through 46.
48. Section 32 of the Lanham Act, 15 U.S.C. $ 111a(1)(a), provides in pertinent part
that "[a]ny person who shall, without the consent of the registrant use in commerce any
-
reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the
sale, offering for sale, distribution, or advertising of any goods or services on or in connection with
which such use is likely to cause confusion, or to cause mistake, or to deceive . . . shall be liable in
a civil action by the registrant . . . ."
49. Upon information and belief, Defendants have sold and.ior offered to sell goods
using a reproduction, counterfeit, copy, or colorable imitation of the Bala Trademarks, including
the registered BALA trademark, in connection with the sale, offering for sale, distribution, or
advertising of goods. Such use is likely to cause confusion, or to cause mistake, or to deceive in
violation of Section 32 of the Lanham Act. Bala has not authorized these activities.
50. Defendants' acts of infringement and counterfeiting in violation of Section 32 of the
Lanham Act are intentional, malicious, fraudulent, willful, and deliberate.
51. Defendants have knowingly and willfully intended to trade on the recognition of,
and have willfully intended to harm the reputation of the Bala Trademarks.
52. Defendants' acts of infringement in violation of Section 32 of the Lanham Act have
inflicted and, if not enjoined, will continue to inflict irreparable harm on Bala. Thus, Bala has no
adequate remedy at law.
r0
53. Pursuant to 15 U.S.C. $ 11 lT,Bala is entitled to recover damages in an amount to
be determined at trial, including Defendants' profits, Bala's losses due to the Defendants' conduct,
and costs of the action. Furthermore, the actions of Defendants were undertaken willfully and with
the intention of causing confusion, mistake, or deception, making this an exceptional case entitling
Bala to recover additional treble damages and reasonable attomeys' fees pursuant to 15 U.S.C. $
ttt7.
COTJNT III
FEDERAL FALSE DESIGNATION OF ORIGIN AND UNFAIR COMPETITION
rs U.S.C. $ 112s(a)
I through 53 as if set forth fully herein.
55. Section 43(a) of the Lanham Act, 15 U.S.C. $ 1125(a), provides in pertinent part
that "[a]ny person who, on or in connection with any goods or services . . . uses in commerce any
word,term,name, symbol .... oranyfalsedesignationof origin... whichislikelyto cause
confusion or to cause mistake, or to deceive as to affiliation . . . or as to origin, sponsorship, or
approval of goods [or] services . . . shall be liable in a civil action."
56. Defendants' use of the Bala Trademarks in order to promote, market, offer for sale,
and sell the counterfeit Bala goods has created and is creating a likelihood of confusion, mistake,
and deception as to affiliation, connection, or association with Bala or the origin, sponsorship, or
approval of Defendants' counterfeit Bala goods. By using the Bala Trademarks on the counterfeit
goods, Defendants create a false designation of origin.
57. Defendants' actions demonstrate a malicious, intentional, willful, and bad faith
intent to trade on Bala's goodwill and to cause confusion, deception, and mistake by offering
counterfeit products under the Bala Trademarks and by intentionally portraying a non-existent
11
affiliation or relationship between Bala and Defendants' goods, businesses, and websites, thereby
causing significant and irreparable injury to Bala.
58. Defendants have willfully intended to trade on the recognition of, and have willfully
intended to harm the reputation of Bala and the Bala Trademarks.
59. Defendants' aforementioned acts constitute false designation of origin, trademark
infringement, and unfair competition in violation of 15 U.S.C. $ 1125(a) (Section 43(a) of the
Lanham Act).
60. Defendants' actions have caused and are likely to cause substantial injury to the
public and to Bala, its business, goodwill, and reputation.
61. Bala is entitled to injunctive relief, and to recover Defendants'profits associated
with the infringement and Bala's costs and reasonable attomeys' fees under l5 U.S.C. $$ 1116 and
1117.
COTINT IV
INFRINGEMENT OF THE '167 DESIGN PATENT
1 through 61 as if set forth fully herein.
63. Defendants have infringed and/or are currently infringing, and unless enjoined will
continue to infringe the'167 patent.
64. Defendants infringed the'167 patent by importing, making, using, selling, and
offering for sale nearly identical versions of the protected Bala design.
65. An ordinary observer, giving such attention as a purchaser usually gives, would be
so deceived by the resemblance between the design of the accused products and the '167 patent as
to be induced to purchase the accused products believing they embody the design of the 't67 patent.
t2
Exemptary Images of Product Offered by

BaIa'167 Potent
Defendants
13
66. Defendants' deliberate and willful actions in infringing the design of the '167 patent
have caused and will continue to cause irreparable harm to Bala unless preliminarily and
permanently enjoined pursuant to 35 U.S.C. $ 283.
67. Defendants have profited from and Bala has suffered damages as a result of
Defendants' infringement of the '167 patent.
PRAYER FOR RELIEF
WHEREFORE, Bala prays for judgment as follows:
1. That Defendants, and each of them, and their respective agents, employees,
servants, affiliates, and all persons acting for, with, or in concert with them be temporarily,
preliminarily, and permanently enjoined and restrained from:
a. reproducing, distributing copies of, making derivative works of, or publicly displaying the
Bala Copyrighted Materials ;
b. using the Bala Trademarks or any variant, reproduction, copy, or colorable imitation thereof
as a trademark, trade name, corporate identity, or indicia of origin on Defendants' products
or in connection with the marketing, advertisement, distribution, sale, or offering for sale
of Defendants' products, unless such products are genuine products made by Bala or with
Bala's authorization;
fuither infringement of the '167 Paten, including, importing, making, using, selling, and
offering for sale nearly identical versions of the protected Design.
d. engaging in any conduct which will cause, or is likely to cause, confusion, mistake,
deception, or misunderstanding as to source, or confusion as to the affiliation, connection,
association, origin, sponsorship, or approval of Defendants' business, services, website or
other activities with Bala or Bala's Trademarks, Copyrighted Materials, and/or Design;
t4
e. passing off or inducing or causing others to pass off any product under Bala's intellectual
property unless such product is a genuine Bala product sold under the Bala Trademarks
with the authorization of Bala; selling, disposing, destroying, transferring, or otherwise
distributing any counterfeit or infringing products in inventory or otherwise currently
possessed or under the control of Defendants or any of Defendants' agents, whether to
customers or to any third party.
2. That, upon Bala's request, all in privity with Defendants and with notice of the
injunction, including but not limited to any online marketplace platforms, such as Alibaba, Ali
Express, Amazon, DH Gate, eBay, Newegg, Shopi$, Wish, and vendors of sponsored search terms
or online ad-word providers, financial services providers, including but not limited to credit card
providers, banks, merchant account providers, third party payment processors, web hosts, and
Internet search engines, such as Google, Bing, and Yahoo shall:
a. cease providing services used by Defendants, currently or in the future, to sell or
offer for sale goods under the Bala Trademarks, Bala Copyrighted Materials, and/or
the'167 Patent;
b. cease displaying any advertisements in any form, connected or associated with
Defendants in connection with the sale of counterfeit or infringing goods under the
Bala intellectual property; and
disable all links to the marketplace accounts identified on Annex A from displaying
in search results, including from any search index.
3. That Defendants, and each of them, account to Bala for their profits and any
damages sustained by Bala arising from their acts of counterfeiting and
infringement;
l5
4. That Bala be awarded damages as well as Defendants' profits under 17 U.S.C. $
s0a@);
5. An award to Bala for past and future damages, costs, expenses, together with
prejudgment and post-judgment interest to compensate for Defendants' infringement of the'167
patent provided under 35 U.S.C. $ 284, and increase such award by up to three times the amount
found or assessed in accordance with 35 U.S.C. $ 284;
6. A determination that this is an exceptional case within the meaning of 35 U.S.C. $ 285
and an award to Bala its costs, expenses, and reasonable attorneys' fees incurred in this action;
7. That Bala be awarded reasonable attorneys' fees under 17 U.S.C. $ 505, 15 U.S.C.
$ 1117;
8. That Bala be awarded enhanced damages under 15 U.S.C. $ 1117;
9. ln the alternative, that Bala be awarded statutory damages under 15 U.S.C. $
rttT(c)(2).
10. That Defendants disgorge any profits eamed by their tortious activities;
11. That Bala be awarded punitive damages;
12. That Bala be awarded pre-judgment interest as allowed by law;
13. That Bala be awarded the costs of this action;
14. That Bala be awarded its reasonable afforneys' fees incurred in connection with this
action; and
15. That Bala be awarded such further legal and equitable relief as the Court deems
proper.
Dated this 23'd day of September,202L
t6
Respectfully submitted,
Bala Bangles, Inc.
/s/ Michelle Bolos

Marshall, Gerstein & Borun LLP
Benjamin T. Horton
Gregory J. Chinlund
Michelle Bolos
Kelley S. Gordon
233 South Wacker Drive
6300 Willis Tower
Chicago, Illinois 60606-6357
Telephone: (312) 474-6300
Fax: (312) 474-7044
bhorton@marshallip. com
gchinlund@marshallip. com
mbolos@marshallip.com
kgordon@marshallip. com
t7

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Case: 1:21-cv-05051 Document #: 1 Filed: 09/23/21 Page 1 of 17 PageID #:1

Plaintiff, Civil Action No.

The Entities and Individuals Identified in

collectively referred to as "Defendants"), herein allege:

NATURE OF THE ACTION

1. This is an action for copyright infringement pursuant to 17 U.S.C. $ 501, trademark

patent on and in conjunction with unauthorized sales of counterfeit products.

JURISDICTION AND VENUE

4. Each Defendant runs a "storefront" accepting US Dollars through Alibaba, Ali

copyright infringement, and design patent infringement in this district.

5. Venue in the Northern District of Illinois is proper pursuant to 28 U.S.C. $ 1391

maybe sued in anyjudicial district ...." 28 U.S.C. $ 1391(c)(3).

wildly popular product sold across the United States.

Bala-branded fi tness products.

Bala sold $16 million in Bala branded products.

country such as Nordstrom, Dicks Sporting Goods, and Saks.

followers (the "lnstagram Account").

2253663, V A 22537 81, VA 22537 83.

Bala Product Pictures Registered Visual YA2-253-658

Bala Product Pictures Registered Visual YA2-253-783

& design are attached hereto as Exhibit 2.

BALA Resistered 28 5678006 2ll9l20l9

The registration for the Bala trademark is valid, subsisting, and

The registration for BALA constitutes primafacie evidence of

by the United States Patent and Trademark Office on June 23,2020'

Bala,s design covered by the '167 patent is a weighted exercised

from their innovative design.

uniquely signifying to consumers that the products come from Bala.

Similarly, because Bala uses its Trademarks,

offer to ship those products to Illinois.

31 . On information and belief, based on similarities in the characteristics of some of the

products displaying and/or using the Bala intellectual property.

needed if Defendants provide additional credible information regarding their identities.

DEFENDANTS' T'NLAWFUL CONDUCT

33. Defendants intentionally deceive and mislead consumers by creating storefronts

on Bala's official website and social media accounts.

37. Additionally, counterfeiters like Defendants commonly disable their marketplace

others set up to take its place.

registrations are valid and enforceable.

of the copyright..." 17 U.S.C. $ 501.

of 17 U.S.C. $$ 106 and 501.

43. The Defendants' conduct is blatant, wanton, and willful.

for which there is no adequate remedy at law unless restrained.

a civil action by the registrant . . . ."

50. Defendants' acts of infringement and counterfeiting in violation of Section 32 of the

Lanham Act are intentional, malicious, fraudulent, willful, and deliberate.

adequate remedy at law.

53. Pursuant to 15 U.S.C. $ 11 lT,Bala is entitled to recover damages in an amount to

I through 53 as if set forth fully herein.

word,term,name, symbol .... oranyfalsedesignationof origin... whichislikelyto cause

confusion or to cause mistake, or to deceive as to affiliation . . . or as to origin, sponsorship, or

approval of goods [or] services . . . shall be liable in a civil action."

goods, Defendants create a false designation of origin.

causing significant and irreparable injury to Bala.

intended to harm the reputation of Bala and the Bala Trademarks.

59. Defendants' aforementioned acts constitute false designation of origin, trademark

public and to Bala, its business, goodwill, and reputation.

61. Bala is entitled to injunctive relief, and to recover Defendants'profits associated

1 through 61 as if set forth fully herein.

continue to infringe the'167 patent.

Exemptary Images of Product Offered by

permanently enjoined pursuant to 35 U.S.C. $ 283.