Apple Inc. v. Lam et al

Filing 1

COMPLAINT against Dunwah Lam, Fei Lik Lam, Yuk Lam, Whiteiphone4now.com Disclosure Statement on Civil Cover Sheet completed -yes,, filed by Apple Inc.. (Attachments: # 1 Civil Cover Sheet) (Siegfried, Evan)

FlLED

IN CLERK"S OFFic:_E N '(
U S DISTRICT COURT ~.0 .

John J. Kuster
James D. Arden
SIDLEY AUSTIN LLP
787 Seventh Avenue
New York, New York 10022
[phone]
[e-mail]
[e-mail]

* MAY 25 20" *
BROOKLYN OFFICE

cv 11 - 250 7 . ~

UNITED STATES DISTRICT COURT FOR THE
EASTERN DISTRICT OF NEW YORK

MAUSKOPF, J.
pQHORELSKY, M.J.

-------------------------------X
APPLE INC.:
Plaintiff,
-againstFE! LIK LAM a/k/a PHILLIP LAM,
DUNWAH LAM, YUK LAM AND
WHITEIPHONE4NOW.COM

COMPLAINT
Index No.

Defendants.

-------------------------------X
Plaintiff Apple Inc. ("Apple"), by its attorneys Sidley Austin LLP, as and
for its complaint against Fei Lik Lam a/k/a Phillip Lam, Dunwah Lam, Yuk Lam and
whiteiphone4now.com ("Defendants") alleges as follows:

NATURE AND BASIS OF THE ACTION
I.

This action is brought by Apple Inc. ("Apple") under the Lanham

Act, 15 U.S.C. § 1051, et seq., New York General Business Law§§ 349,350, and 360-1
and the common Jaw of New York, against Defendant Fei Lik Lam, a/k/a Phillip Lam
and his business whiteiphone4now.com, seeking damages relating to Defendant Lam's
infringing and diluting Apple's famous trademarks, in willful violation of the Lanham
Act (15 U.S.C. § 1051 et seq.) and for engaging in deceptive practices and unfair
competition in willful violation of New York state Jaw.

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2.

Defendant Lam willfully and without authorization has used

Apple's trademarks in connection with the sale of his "White iPhone 4 Conversion Kits,"
which among other things included white front and back panels branded with Apple's
logo and "iPhone" trademarks that are used in connection with the promotion and sale of
Apple's well known iPhone 4 handheld mobile digital electronic devices. Defendant at
all times knew that Apple never has authorized the sale of white panels for its iPhone 4
mobile devices, and that he obtained these panels from sources that were not authorized
by Apple or any of its suppliers to sell them.
3.

Defendants Dunweh Lam and Yuk Lam are the parents of

Defendant Fei Lik Lam ("Defendants D& Y Lam"). These defendants aided and abetted
Defendant Lam in his willful infringement of Apple's trademarks by allowing Defendant
Lam to engage in the misconduct alleged herein and under their supervision.
4.

Apple owns the federally-registered trademark Apple logo and the

trademark "iPhone" for use in connection with, among other things, telecommunications
products and services. Apple has invested enormous sums of money not only in research
and development to ensure all of its products are of the highest quality, but also to
advertise and publicize its Apple and iPhone trademarks, which are very successful and
well known.
5.

Defendants were plainly aware ofthe existence and fame of

Apple's trademarks, and oftheir value, and have intentionally and unlawfully
misappropriated Apple's trademarks in order to profit from Apple's business and
goodwill, in a manner that causes confusion among customers who may think that Apple
has authorized the sale of white iPhones or released front and white panels for the

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iPhones when in fact it has not, which dilutes the value of Apple's trademarks and
compromises its business and relationship with its customers.
6.

As a result of Defendants' misconduct, Apple seeks to recover the

injury and damages it has incurred, including but not limited to the recovery of the illegal
profits Defendants gained from their misconduct and Apple's expenses in prosecuting
this matter.
PARTIES

7.

Plaintiff Apple Inc. is a corporation organized under the Jaws of

California, with its principal place of business in Cupertino, California. Apple designs,
manufactures, and markets mobile communication and media devices, including the
iPhone 4, among other products. Since as early as 1977, Apple has continuously and
exclusively used the iconic Apple logo to identify its products. Additionally, since the
introduction of its iPhone device in 2007, Apple has continuously and exclusively used
its iPhone trademark to identity its mobile handheld electronic mobile devices.
8.

Defendant Fei Lik Lam, a/k/a Phillip Lam, is a minor residing at

13009 58th Avenue, Flushing, New York, 11355.

9.

Upon information and belief, defendant

www.whiteiphone4now.com at all relevant times was a business owned, controlled and
operated by Defendant Lam, and was a website registered in the name of Phillip Lam,
13009 58th Avenue, Flushing, New York, 11355.
10.

Defendants Dunwah and Yuk Lam are residents of New York

residing at 13009 58'h Avenue, Flushing, New York, 11355, and are the parents of
Defendant Phillip Lam.

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"-'
JURISDICTION AND VENUE

11.

This Court has subject matter jurisdiction pursuant to the 15 U.S.C.

§ 1121 and 28 U.S.C. §§ 1331, 1332, and 1338(a) and (b). The Court has supplemental
jurisdiction over the claims arising under state law pursuant to 28 U .S.C. § 1367.
12.

The Court has personal jurisdiction over defendants because

defendants reside in this Judicial District and/or are doing business here or, alternatively,
because defendants are subject to personal jurisdiction under New York Civil Practice
Law and Rule § 302.
13.

Venue is appropriate in this Court pursuant to 28 U.S.C. § 1391

because defendants are subject to personal jurisdiction in this Judicial District and
because a substantial portion of the conduct giving rise to Apple's claims occurred in this
Judicial District.
ALLEGATIONS COMMON TO ALL CLAIMS

14.

Apple is a world-wide leading manufacturer of electronic devices,

including its mobile telecommunication devices commonly known as "iPhones."
Apple's iPhones have been extremely successful since their introduction into the
marketplace in 2007, and Apple started selling iPhone 4s to the public in June 2010. The
iPhone 4 is one of the world's leading mobile handheld electronic telecommunications
devices. Apple is an industry leader in mobile handheld devices market, and Apple has
spent millions of dollars and extensive resources on research and development of its
iPhones generally, and its iPhone 4 in particular.
15.

Since as early as 1977, Apple has continuously and exclusively

used the iconic Apple logo to identity its consumer electronics, computer software and
personal computer products. Apple is owner of numerous valid, subsisting and existing

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U.S. Federal trademark registrations, including but not limited to the Apple logo, Reg.
Nos. 3,679,056 (the "Apple Logo") and iPhone trademark, 3,669,402 (the "iPhone
Trademark") (collectively the "Apple Trademarks"). True and correct copies of the
registrations of the Apple Trademarks are attached hereto as Exhibit A.
16.

The Apple Trademarks have become incontestable within the

meaning of 15 U.S.C. § 1065. Apple also owns valid and subsisting common law rights
to the Apple Trademarks as a result of its extensive, continuous and exclusive use of
these marks throughout the Untied States and the world to identify its distinctive
electronic products and services, as well as its iPhone mobile handheld
telecommunications devices.
17.

The Apple Logo and iPhone Trademark are distinctive, iconic and

famous trademarks that are instantly recognized as indicating products and services
created, designed, manufactured, produced and /or provided by Apple.
18.

Apple has adopted and utilized its Apple logo and iPhone

Trademarks extensively in connection with the advertising, promotion, and sales of its
iPhone 4 mobile telecommunications devices, which have appeared extensively on
television, radio, internet and print media. Apple's extensive marketing, advertising and
promotion of its Apple Logo and iPhone Trademark have been highly successful, and
within a very short period of time, the Apple Trademarks became exceptionally wellknown and famous throughout the United States and abroad.
19.

By virtue of Apple's substantial use, sales, advertising, and

promotion of its Apple Logo and iPhone Trademarks throughout the United States and
abroad, the enormous publicity and media attention accorded to the marks, and the

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inherently distinctive nature of the marks, the Apple Trademarks have become wellknown and famous marks, have become distinctive of Apple products and services, and
have come to serve to identify and indicate the source of Apple's products and services to
consumers, purchasers and others. Apple has developed for itself and its Apple and
iPhone branded products and services substantial goodwill and excellent reputation
among actual and potential consumers.
20.

In light of the distinctiveness of the Apple Trademarks, the

duration and extent of Apple's sales, advertising, marketing, use and widespread
publicity regarding its Apple Logo and iPhone Trademark throughout the United States,
the Apple Trademarks are famous trademarks within the meaning of Section 43( c) of the
Lanham Act, 15 U.S.C. § 1125(c).

Defendants Misappropriation and Unauthorized Use of Apple's Trademarks
21.

All iPhone 4 mobile handheld electronic devices that Apple has

sold since its introduction to the market in June 2010 have utilized black front and back
panels. The back panel contains the distinctive Apple Trademarks.
22.

Apple has not sold white front or back panels branded with the

Apple Trademarks or otherwise for the iPhone 4 mobile devices anywhere in the United
States or the world.
23.

Upon information and belief, Defendant Lam was aware at all

relevant times that Apple has not authorized the sale of a white iPhone 4, or of any white
front and back panels for its iPhone 4s branded with the Apple Trademarks.
24.

Upon information and belief, Defendant Lam commenced his

website www.whiteiphone4now.com in or about July 2010, the sole business of which
was to sell "White iPhone 4 Conversion Kits."

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25.

According to Defendant Lam's website, the White iPhone 4

Conversion Kits included white front and back panels for the iPhone 4 branded with the
Apple Trademarks.
26.

Defendant Lam's website stated that Apple had not authorized the

sale of any White iPhone 4 mobile handheld telecommunication devices at all relevant
times, and that it was Apple's intention to do so sometime in July 2011.
27.

Upon information and belief, Mr. Lam initially arranged for the

purchase of the white front and back panels branded with the Apple Trademarks for his
iPhone 4 Conversion Kits from an unauthorized supplier in Shenzhen Province in the
People's Republic of China, whom he knew in turn had purchased these white panels
from shops on the streets of Shenzhen.
28.

Defendant knew that the parts he was obtaining for his Kits were

not authorized for sale by Apple. Defendant's supplier in China referred to its business
as "Focusupply- Connection with Apple repair Parts and Friends with Foxconn
Worker." Upon information and belief, Focusupply was owned and operated by Mr.
Alan Yang, who resided in Shenzhen Province in the People's Republic of China.
29.

At all relevant times, Foxconn was an authorized manufacturer of

electronics and parts for Apple in China, but Foxconn was not authorized by Apple to sell
white front or back panels for the iPhone 4 to the market.
30.

Prior to commencing the Kits via his website, Defendant Lam

asked Mr. Yang via instant messaging what relationship Focusupply had with Foxconn,
and he was told that "I have a friend on [sic] this company."

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31.

Defendant Lam knew or should have known that the white front

and back panels branded with Apple's Trademarks that he used in the White iPhone 4
Conversion Kits were not from authorized suppliers, dealers, or agents of Apple, or from
Apple itself.
32.

In or about July 3, 2010, Defendant Lam and Mr. Yang had

another electronic conversation, in which Mr. Yang stated that he changed couriers from
DHL to EMS over the last several shipments, because "back cover lens is original with
'Apple' Logo," and that he had "custom trouble on Hongkong custom," to which
Defendant Lam replied, "ah that's right, the trade mark issues."
33.

In or about July 9, 2010 Defendant Lam and Mr. Yang had another

electronic conversation in which Defendant Lam was asking about white front and back
panels for the iPhone 4. Mr. Yang told Defendant Lam that "tomorrow will have three or
four may out from Foxconn, just take it easy," and Defendant Lam asked, "Foxconn sells
the parts? Directly?" Mr. Yang then responded unequivocally, "no," to which Defendant
Lam then wrote, "oh."
34.

In yet another electronic conversation on or about July 13,2010,

Mr. Yang advised Defendant Lam to use EMS for shipping "just to be safe," because
"las[t] week I have one shipment hold by hongkong [sic] custom due to the original apple
logo," to which Defendant Lam responded, "oh, that's too bad."
3 5.

Despite his knowledge that the white front and back panels he is

purchasing from Focusupply in China are unauthorized and not legal sales, Defendant
Lam nevertheless launched www.whiteiPhone4now.com, and registered that domain
name using the Apple Trademarks without the consent of Apple in July 2010.

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36.

In his website, Defendant Lam offered White iPhone 4 Conversion

Kits to convert black iPhone 4 mobile devices to white utilizing white front and back
panels branded with Apple's Logo and iPhone Trademarks for sale to the general public.
Defendant Lam feature pictures of white iPhone 4 front and back panels branded with the
Apple Trademarks prominently in his website.
37.

A true and correct excerpt from his website in which Mr. Lam used

Apple's Trademarks is attached hereto as Exhibit B.
38.

Defendant Lam sold the White iPhone 4 Conversion Kits for

approximately $129 to $279 per Kit.
39.

On numerous occasions, Defendant Lam publicized to industry

press and on the internet that consumers could convert their iPhone 4 devices to "white"
iPhone 4s by utilizing his White iPhone4 Conversion Kits, which included white panels
branded with the Apple Trademarks. Defendant Lam boasted that his sales as of
November 20 I 0 exceeded $130,000.
40.

At all relevant times, Defendant Lam operated his

whiteiphone4now.com business at 13009 58th Avenue, Flushing, New York, 11355.
41.

At all relevant times, Defendants D& Y Lam were the parents

and/or guardians of Defendant Lam. Because Defendant Lam was a minor at all relevant
times when www.whiteiphone4now.com was operating, Defendants D&Y Lam, as his
parents, were responsible for his supervision and actions while Defendant Lam lived in
and conducted illegal activities in their residence. Upon information and belief,
Defendants D&Y Lam were aware of and/or willfully ignorant about Defendant Lam's
whiteiphone4now.com business activities, and did nothing to prevent Defendant Lam

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from the unauthorized sale of goods as branded with Apple's Trademarks as part of his
White iPhone 4 Conversion Kits.
42.

In November 2010, Defendant Lam was warned that the sales of

white front and back panels branded with Apple's Trademarks were not authorized.
Thereafter, Defendant Lam made no attempt to contact Apple to determine whether any
sales of white front and back panels branded with Apple Trademarks was authorized, and
continued to sell Apple's stolen property in blatant disregarded of Apple's rights.
43.

On December I, 2010, Apple served a cease and desist letter on

Defendant Lam's attorney, and on that same day served a cease and desist letter on
Defendant Dunwah Lam.
44.

Later that day, on December I, 2010, the

www.whiteiPhone4now.com website was no longer available on the internet.
45.

Defendants have never been authorized to sell any Apple products,

or to use any of Apple's Trademarks in connection with their business, services or
products.
46.

Defendant Lam's use of the Apple Trademarks in his website's

domain name, throughout his website (including photographs) and on the panels in his
iPhone Conversion Kits confused and deceived purchasers and the consuming public as
to the source or origin of the Apple products being sold, advertised and promoted by
Defendant Lam. Actual and potential purchasers and consumers in New York, and in this
Judicial District and throughout the United States, upon visiting Defendant Lam's
website, www.whiteiPhone4now.com, likely believed that Mr. Lam's panels branded

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with the Apple Trademarks for the iPhone 4 were properly licensed, approved, sponsored
or endorsed by Apple for sale when they are in fact not.
47.

As a result of Defendant Lam's illegal and unauthorized sales, as

well as the result of Defendants D& Y Lams' negligent supervision and/or willful
blindness to the misconduct of their son, Defendant Lam, Apple's business and good will
has been irreparably harmed and Apple is entitled to permanent injunctive relief
enjoining Defendants from any attempt to sell White iPhone 4 Conversion Kits utilizing
panels branded with Apple's Trademarks, including without limitation any use of the
Apple Trademarks to advertise, promote or sell such Kits and/or panels, and to
permanently cease any use of the www.whiteiPhone4now.com website. Defendants also
have failed to return the ill-gotten gains and profits they obtained through their
misconduct.
FIRST CLAIM FOR RELIEF
Trademark Infringement Under 15 U.S.C. § 1114(1)

48.

Apple repeats and realleges paragraphs I through 47 of this

complaint as if fully set forth herein.
49.

This claim is for infringement of trademarks registered in the

United States Patent and Trademark Office, pursuant to Section 32(1) of the Lanham Act,
15 U.S.C. § 1114(1), as amended.
50.

Defendant Lam knew that Apple never authorized the sale of white

iPhone 4 front and back panels to anyone.
51.

Apple has never authorized the sale of white iPhone 4 mobile

telecommunications devices or the sale of white front and back panels branded with the
Apple Trademarks for the iPhone 4, in any market in the world.

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II

52.

Defendants' unauthorized use of the Apple Trademarks caused

confusion and deceived the public as to the approval, sponsorship, license, quality,
manufacturing processes, and sources of origin of Apple's goods and services associated
with the panels branded with the Apple Trademarks that are part of Defendant Lam's
iPhone Conversion Kits.
53.

Defendants D&Y Lam permitted Defendant Lam to engage in this

unlawful conduct out of their home and while under their supervision, and upon
information and belief also are beneficiaries of Defendant Lam's illicit business
operations.
54.

On information and belief, Defendant Lam's infringement of the

federally registered Apple Trademarks has been willful and deliberate, and designed to
trade on Apple's goodwill associated with the Apple Trademarks, and Defendants have
profited and been unjustly enriched by sales and publicity that they would not otherwise
have obtained but for his unlawful conduct.
55.

As a result of Defendants' misconduct, Apple's business and good

will has been irreparably harmed and Apple is entitled to permanent injunctive relief
against Defendants. Defendants also must disgorge the ill-gotten gains and profits they
obtained through their misconduct, and to compensate Apple for its expenses, including
attorneys' fees, in connection with prosecuting this matter.
SECOND CLAIM FOR RELIEF
False Designation of Origin Under 15 U.S.C. § 1125

56.

Apple repeats and realleges paragraphs I through 55 ofthis

Complaint as if fully set forth herein.

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57.

This claim is for false designation of origin, false endorsement and

unfair competition in violation of Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a),
as amended.
58.

By their unauthorized use of the Apple Trademarks as described

above, Defendant Lam has falsely designated the origin of his services and products and
Defendant Lam has thereby competed unfairly with Apple and engaged in acts of false
designation of origin and false sponsorship, in violation of 15 U.S.C. § 1125(a).
59.

Defendant Lam's acts of false designation of origin, false

sponsorship and unfair competition have been done willfully and deliberately and he has
profited and been unjustly enriched by sales and publicity that he would not have
otherwise have obtained but for his unlawful conduct.
60.

Defendants D&Y Lam permitted Defendant Lam to engage in this

unlawful conduct out of their home and while under their supervision, and upon
information and belief also are beneficiaries of Defendant Lam's illicit business
operations.
61.

As a result of Defendants' misconduct, Apple's business and good

will has been irreparably harmed and Apple is entitled to permanent injunctive relief
against Defendants. Defendants also must disgorge the ill-gotten gains and profits they
obtained through their misconduct, and to compensate Apple for its expenses, including
attorneys' fees, in connection with prosecuting this matter.

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THIRD CLAIM FOR RELIEF
Federal Trademark Dilution Under 15 U.S.C. § 1125(c)

62.

Apple repeats and realleges paragraphs 1 through 61 of this

Complaint as if fully set forth herein.
63.

This claim is for trademark dilution pursuant to Section 43(a) of

the Lanham Act, 15 U.S.C. § 1125(c).
64.

The Apple logo and iPhone Trademarks are distinctive and famous

within the meaning of 15 U.S.C. § 1125(c)(l) and were distinctive and famous prior to
the date of Defendant Lam's unauthorized use of the Apple Trademarks in his website
and otherwise.
65.

Defendant Lam willfully intended to trade on Apple's reputation

and good will, and the unauthorized use described above dilutes the distinctive quality of
Apple's famous, registered Apple Trademarks in violation of 15 U.S.C. § 1125(c).
66.

Defendants D& Y Lam permitted Defendant Lam to engage in this

unlawful conduct out of their home and while under their supervision, and upon
information and belief also are beneficiaries of Defendant Lam's illicit business
operations.
67.

As a result of Defendants' misconduct, Apple's business and good

will has been irreparably harmed and Apple is entitled to permanent injunctive relief
against Defendants. Defendants also must disgorge the ill-gotten gains and profits they
obtained through their misconduct, and to compensate Apple for its expenses, including
attorneys' fees, in connection with prosecuting this matter.

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FOURTH CLAIM FOR RELIEF
Common Law Trademark Infringement

68.

Apple repeats and realleges paragraphs I through 67 of this

Complaint as if fully set forth herein.
69.

This claim is for trademark infringement and unfair competition in

violation of the common law of the State of New York.
70.

Defendants' use of the Apple Trademarks, as described above,

constitute common law trademark infringement and unfair competition in violation of
common law.
71.

Upon information and belief, Defendants' unlawful conduct

described above has been done willfully and deliberately and defendants have profited
and been unjustly enriched by sales and publicity that defendants would not otherwise
have obtained but for their unlawful conduct.
72.

Defendants D&Y Lam permitted Defendant Lam to engage in this

unlawful conduct out of their home and while under their supervision, and upon
information and belief also are beneficiaries of Defendant Lam's illicit business
operations.
73.

As a result of Defendants' misconduct, Apple's business and good

will has been irreparably harmed and Apple is entitled to permanent injunctive relief
against Defendants. Defendants also must disgorge the ill-gotten gains and profits they
obtained through their misconduct, and to compensate Apple for its expenses, including
attorneys' fees, in connection with prosecuting this matter.

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FIFTH CLAIM FOR RELIEF

Deceptive Acts and Practices Under
New York Gen. Bus. Law§§ 133,349-50,360-1
74.

Apple repeats and realleges paragraphs I through 73 ofthis

Complaint as if fully set forth herein.
75.

This claim is for false advertising and deceptive acts and practices

under New York General Business Law Sections 349-50, et seq.
76.

Defendants use of the Apple Trademarks, as described above, have

caused mistake or deception among consumers and the public in the State of New York.
77.

Defendants' use of the Apple Trademarks, as described above,

constituted false advertising and deceptive acts and practice in violation of New York
General Business Law Sections 349-50, et seq.
78.

Defendants unauthorized use of the Apple Logo, as described

above, was done with the intent to deceive or mislead the public in violation of New
York General Business Law Section 133.
79.

Upon information and belief, Defendants' unlawful conduct

described above has been done willfully and deliberately and defendants have profited
and been unjustly enriched by sales and publicity that defendants would not otherwise
have obtained but for their unlawful conduct.
80.

Defendants D& Y Lam permitted Defendant Lam to engage in this

unlawful conduct out of their home and while under their supervision, and upon
information and belief also are beneficiaries of Defendant Lam's illicit business
operations.

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81.

As a result of Defendants' misconduct, Apple's business and good

will has been irreparably harmed and Apple is entitled to permanent injunctive relief
against Defendants pursuant to New York Gen. Bus. Law Section 360-1. Defendants
also must disgorge the ill-gotten gains and profits they obtained through their
misconduct, and to compensate Apple for its expenses, including attorneys' fees, in
connection with prosecuting this matter.
SIXTH CLAIM FOR RELIEF
Aiding and Abetting Trademark Infringement Against
Defendants D& Y Lam

82.

Apple repeats and realleges paragraphs I through 81 of this

Complaint as if fully set forth herein.
83.

Defendants D&Y Lam are the parents of Defendant Lam.

84.

At all relevant times, Defendant Lam had not reached the age of

majority under New York law.
85.

Defendant Lam engaged in the willful violations of the Lanham

Act, including trademark infringement, through his unauthorized sale of goods branded
with Apple's Trademarks, as described above.
86.

Defendants D& Y Lam allowed Defendant Lam to use their

residence in connection with the operation of the www.whiteiphone4now.com website,
which was registered by Defendant Lam using Defendants D&Y Lam's residence for the
address, and permitted their residence to be used in connection with the unlawful sales of
White iPhone Conversion Kits and use of the Apple Trademarks.
87.

Defendants D& Y Lam knew Defendant Lam was engaged in the

unauthorized and unlawful sale of Apple products as described above, and/or chose to be
willfully blind to the illegal business being operated by their son out of their home, such
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that Defendants D&Y Lam engaged in contributory trademark infringement of the Apple
Trademarks.
88.

Upon information and belief, Defendants D& Y Lam knew that

Defendant Lam was profiting from his lawful conduct described above, and were the
beneficiaries and/or shared in the illegal profits taken by Defendant Lam.
89.

As a result of Defendants' misconduct, Apple's business and good

will has been irreparably harmed and Apple is entitled to permanent injunctive relief
against Defendants. Defendants also must disgorge the ill-gotten gains and profits they
obtained through their misconduct, and to compensate Apple for its expenses, including
attorneys' fees, in connection with prosecuting this matter.
PRAYER FOR RELIEF
WHEREFORE, Apple prays that this Court enter judgment against Defendants as
follows:
a.

Ordering that Defendants be adjudged to have violated

Sections 32, 433(a) and 43(c) of the Lanham Act, 15 U.S.C. §§ 1114, 1125(a) and
1125(c), to have committed acts of trademark infringement and unfair
competition in violation of state common law, and to have committed unfair
competition and deceptive acts in violation of New York Gen. Bus. Law§§ 133,
149 and 350 et seq.;
b.

Ordering an accounting of all gains, profits, savings and

advantages realized by Defendants for their aforesaid acts of trademark
infringement, trademark dilution, unfair competition, false designation of origin,
false advertising and deceptive acts and practices;

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c.

Awarding such damages as Apple shall establish in

consequence of Defendants' aforesaid acts of trademark infringement, trademark
dilution, unfair competition, false designation of origin, false advertising and
deceptive acts and practices, together with appropriate interest thereon, including
disgorgement of Defendants' ill-gotten gains from the aforesaid acts, as well as
three times the amount found as actual damages by the trier of fact to properly
compensate Apple for its damages pursuant to 15 U.S.C. §§ 1117(a), and,
pursuant to New York Gen. Bus. Law § 349(h), statutory damages of $1,000 for
each violation, together with appropriate interest thereon; and
d.

Ordering defendants to deliver to Apple any and all goods

and products, product packaging, promotional materials, advertisements, or other
items in the possession, custody or control of Defendants which, if sold, displayed
or used would constitute further aforesaid acts of trademark infringement,
trademark dilution, unfair competition, false designation of origin, false
advertising and deceptive acts and practices;
e.

A warding Apple its costs and expenses in this action,

including attorneys' fees pursuant to 15 U.S.C. § 1117, as Defendants' acts were
willful, deliberate and exceptional;
f.

Granting a permanent injunction restraining Defendants

and all others in privity or active in concert or participation with any of them,
from engaging in any of the aforesaid acts of trademark infringement, trademark
dilution, unfair competition, false designation of origin, false advertising and
deceptive acts and practices, as Apple will suffer irreparable harm in the absence

NYI 7481709v.l

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of such relief, and any damages recovered from Defendants will be insufficient to
make Apple whole. Apple respectfully requests that the Court issue a permanent
injunction to enjoin Defendants, their agents and all persons in active concert and
participation with them, from directly or indirectly: (i) using the Apple
Trademarks in connection with the advertising, promotion or offering for sale the
White iPhone Conversion Kits and/or white front and back iPhone panels branded
with the Apple Trademarks; (ii) using the domain name and website,
www.whiteiphone4now.com to advertise, promote or offer for sale the White
iPhone Conversion Kits and/or white front and back iPhone 4 panels branded with
the Apple Trademarks; and (iii) using any trade practices whatsoever, including
those complained of herein and the unauthorized sale of any products branded
with Apple Trademarks, which tend to unfairly compete with or injure Apple's
business and the good will appertaining thereto; and
g.

Granting Apple such other and further relief as the Court

deems just and appropriate.
Dated: New York, New York
May 25,2011

By:
r

ames D. rden
87 Seventh Avenue
New York, New York 10019
[phone]
[e-mail]
[e-mail]
Attorneys for Plaintiff Apple Inc.

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Int. CI.: 9
Prior u.s. as.: 21, 23, 26, 36 and 38

Reg. No. 3,679,056

United States Patent and Trademark Office

Registered Sep. 8, 2009

TRADEMARK
PRINCIPAL REGISTER

APPLE INC. (CALIFORNIA CORPORATION)
I INFINITE LOOP
CUPERTINO, CA 95014
FOR: COMPUTERS; COMPUTER HARDWARE;
COMPUTER PERIPHERALS; HANDHELD COMPUTERS; HANDHELD MOBILE DIGITAL ELECTRONIC DEVICES FOR RECORDING, ORGANIZING,
TRANSMITTING, MANIPULATING, AND REVIEWING TEXT, DATA, IMAGE, AUDIO, AND
AUDIOVISUAL FILES, FOR THE SENDING AND
RECEIVING OF TELEPHONE CALLS, ELECTRONIC MAIL, ANDOTHERDIGITALDATA, FOR USE
AS A DIGITAL FORMAT AUDIO PLAYER, HANDHELD COMPUTER, PERSONAL DIGITAL ASSISTANT, ELECTRONIC ORGANIZER, ELECTRONIC
NOTEPAD, CAMERA, AND GLOBAL POSmONING SYSTEM (GPS) ELECTRONIC NAVIGATION
DEVICE; DIGITAL AUDIO AND VIDEO RECORDERS AND PLAYERS; PERSONAL DIGITAL ASSISTANTS; ELECTRONIC ORGANIZERS; CAMERAS;
TELEPHONES; MOBILE PHONES; SATELLITE NAVIGATIONAL SYSTEMS, NAMELY, GLOBAL POSITIONING SYSTEMS (GPS); ELECTRONIC
NAVIGATIONAL DEVICES, NAMELY, GLOBAL
POSmONING SATELLITE (GPS) BASED NAVIGATION RECEIVERS; COMPUTER GAME MACHINES
FOR USE WITH EXTERNAL DISPLAY SCREENS,
MONITORS, OR TELEVISIONS; A FULL LINE OF
ACCESSORIES AND PARTS FOR THE AFOREMENTIONED GOODS; STANDS, COVERS, CASES, HOLSTERS, POWER ADAPTORS, AND WIRED AND
WIRELESS REMOTE CONTROLS FOR THE AFOREMENTIONED GOODS; COMPUTER MEMORY
HARDWARE; COMPUTER DISC DRIVES; OPTICAL
DISC DRIVES; COMPUTER NETWORKING HARD-

WARE; COMPUTER MONITORS; FLAT PANEL
DISPLAY MONITORS; COMPUTER KEYBOARDS;
COMPUTER CABLES; MODEMS; COMPUTER
MICE; ELECTRONIC DOCKING STATIONS; SET
TOP BOXES; BATTERIES; BATTERY CHARGERS;
ELECTRICAL CONNECTORS, WIRES, CABLES,
AND ADAPTORS; DEVICES FOR HANDS-FREE
USE; HEADPHONES; EARPHONES; EAR BUDS;
AUDIO SPEAKERS; MICROPHONES; AND HEADSETS; A FULL LINE OF COMPUTER SOFTWARE
FOR BUSINESS, HOME, EDUCATION, AND DEVELOPER USE; USER MANUALS FOR USE WITH,
AND SOLD AS A UNIT WITH, THE AFOREMENTIONED GOODS; DOWNLOADABLE AUDIO AND
VIDEO FILES, MOVIES, RING TONES, VIDEO
GAMES, TELEVISION PROGRAMS, POD CASTS
AND AUDIO BOOKS VIA THE INTERNET AND
WIRELESS DEVICES FEATURING MUSIC, MOVIES, VIDEOS, TELEVISION, CELEBRITIES,
SPORTS, NEWS, HISTORY, SCIENCE, POLITICS,
COMEDY, CHILDREN'S ENTERTAINMENT, ANIMATION, CULTURE, CURRENT EVEI'<1S AND
TOPICS OF GENERAL INTEREST, IN CLASS 9
(U.S. CLS. 21, 23, 26, 36 AND 38).
FIRST USE 1-31-1977; IN COMMERCE 1-31-1977.
OWNER OF U.S. REG. NOS. 1,114,431, 2,753,069
AND OTHERS.
THE MARK CONSISTS OF THE DESIGN OF AN
APPLE WITH A BITE REMOVED.
SER. NO. 77-648,705, FILED 1-13-2009.
JERI J. FICKES, EXAMINING ATTORNEY

Int. CI.: 9
Prior u.s. as.: 21, 23, 26, 36 and 38

Reg. No. 3,669,402

United States Patent and Trademark Office

Registered Aug. 18, 2009

TRADEMARK
PRINCIPAL REGISTER

iPhone
APPLE INC. (CALIFORNIA CORPORATION)
I INFINITE LOOP
CUPERTINO, CA 95014

THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY PARTICULAR
FONT, STYLE, SIZE, OR COLOR.

FOR: HANDHEW MOBILE DIGITAL ELECTRONIC DEVICES FOR THE SENDING AND RECEIVING OF TELEPHONE CALLS, ELECTRONIC MAIL,
AND OTHER DIGITAL DATA, FOR USE AS A
DIGITAL FORMAT AUDIO PLAYER, AND FOR
USE AS A HANDHELD COMPUTER, PERSONAL
DIGITAL ASSISTANT, ELECTRONIC ORGANIZER,
ELECTRONIC NOTEPAD, AND CAMERA, IN
CLASS 9 (U.S. CLS. 21, 23, 26, 36 AND 38).

PRIORITY CLAIMED UNDER SEC. 44(D) ON
TRINIDAD/TOBAGO APPLICATION NO. 37090,
FILED 3-27-2006.

FIRST USE 1-9-2007; IN COMMERCE 1-29-2007.

SEC. 2(F).
SER. NO. 77-975,076, FILED 9-26-2006.
LINDA ESTRADA, EXAMINING ATTORNEY

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