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EXHIBIT E
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IN THE UNITED STATES DISTRICT COURT
FOR THE EASTERN DISTRICT OF NEW YORK
URBAN INTELLIGENCE INC., ) CIVIL ACTION NO.:
) 23-cv-1789 (RPK)(PK)
Plaintiff, )
)
v. )
)
SPRING SCAFFOLDING LLC, )
)
Defendant. )
ANSWER AND AFFIRMATIVE DEFENSES
Defendant Spring Scaffolding LLC (“Spring”), by and through its counsel, hereby answers
Plaintiff Urban Intelligence Inc.’s (“Urban”) Second Amended Complaint (“SAC”) [ECF 39]. Any
allegations not specifically admitted herein are denied.
NATURE OF THE ACTION
1. Spring admits the allegations in Paragraph 1 only insofar as it states that Urban has
brought claims under the Lanham Act, 15 U.S.C. § 1051 et seq. and unfair competition arising
under the common law of the State of New York. Spring denies the remainder of the allegations
in Paragraph 1.
2. Spring admits the allegations in Paragraph 2.
3. Spring admits the allegations in Paragraph 3.
JURISDICTION AND VENUE
4. Paragraph 4 states legal conclusions to which no responsive pleading is required.
To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 4.
5. Paragraph 5 states legal conclusions to which no responsive pleading is required.
To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 5.
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6. Paragraph 6 states legal conclusions to which no responsive pleading is required.
To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 6.
7. Paragraph 7 states legal conclusions to which no responsive pleading is required.
To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 7.
8. Paragraph 8 states legal conclusions to which no responsive pleading is required.
To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 8.
FACTUAL BACKGROUND
A. URBAN UMBRELLA ORIGINS AND ITS UNIQUE SIDEWALK SHED
9. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 9 and, therefore, denies the allegations in Paragraph 9.
10. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 10 and, therefore, denies the allegations in Paragraph 10.
11. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 11 and, therefore, denies the allegations in Paragraph 11.
12. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 12 and, therefore, denies the allegations in Paragraph 12.
B. THE URBAN UMBRELLA TRADE DRESS
13. Spring denies the allegations in Paragraph 13.
14. Spring denies the allegations in Paragraph 14.
15. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 15 and, therefore, denies the allegations in Paragraph 15.
16. Spring denies that Urban has a valid and protectable trade dress in its scaffolding
products and, therefore, Spring denies the allegations in Paragraph 16.
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17. Spring denies the allegations in Paragraph 17.
18. Spring denies the allegations in Paragraph 18.
19. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 19 and, therefore, denies the allegations in Paragraph 19.
20. Spring denies the allegations in Paragraph 20.
21. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 21 and, therefore, denies the allegations in Paragraph 21.
22. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 22 and, therefore, denies the allegations in Paragraph 22.
23. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 23 and, therefore, denies the allegations in Paragraph 23.
24. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 24 and, therefore, denies the allegations in Paragraph 24.
25. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 25 and, therefore, denies the allegations in Paragraph 25.
26. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 26 and, therefore, denies the allegations in Paragraph 26.
27. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 27 and, therefore, denies the allegations in Paragraph 27.
28. Spring denies the allegations in Paragraph 28.
C. DEFENDANT AND ITS INFRINGING ACTS
29. Spring admits the allegations in Paragraph 29.
30. Spring admits the allegations in Paragraph 30.
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31. Spring denies the allegations in Paragraph 31.
32. Spring denies the allegations in Paragraph 32.
33. Spring denies the allegations in Paragraph 33.
34. Spring denies the allegations in Paragraph 34.
35. Spring denies the allegations in Paragraph 35.
36. Spring denies the allegations in Paragraph 36.
37. Spring admits the allegations in Paragraph 37 only insofar as they serve to identify
images of Spring and Urban’s respective products. Spring denies the remaining allegations in
Paragraph 37.
38. Spring denies the allegations in Paragraph 38 as Spring has not used or otherwise
copied any valid or protectable trade dress rights allegedly owned by Urban.
39. Spring denies the allegations in Paragraph 39 as Spring has not used or otherwise
copied any valid or protectable trade dress rights allegedly owned by Urban.
40. Spring admits the allegations in Paragraph 40 only insofar as it states that Urban
sent Spring a cease-and-desist letter alleging infringement of Urban’s purported trade dress and
demanding Spring cease certain conduct. Spring denies the remainder of the allegations in
Paragraph 40.
41. Spring admits the allegations in Paragraph 41 only insofar as it states Urban sent
Spring a second cease-and-desist letter on November 8, 2022. Spring denies the remainder of the
allegations in Paragraph 41.
42. Spring denies the allegations in Paragraph 42.
FIRST CAUSE OF ACTION
(15 U.S.C. § 1125(a) – Trade Dress Infringement)
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43. Spring repeats and realleges the responses in each of the preceding paragraphs as if
fully set forth herein.
44. Spring admits the allegations in Paragraph 44 only insofar as it states that Urban
brings a claim under the Lanham Act, 15 U.S.C. § 1051 et seq. and has alleged false designations
of origin, false descriptions, and false representations. Spring denies the remaining allegations in
Paragraph 44.
45. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 45 and, therefore, denies the allegations in Paragraph 45.
46. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 46 and, therefore, denies the allegations in Paragraph 46.
47. Spring denies the allegations in Paragraph 47.
48. Spring admits the allegations in Paragraph 48 only insofar as it states in or about
2020 and until the present Spring began offering, selling, renting, and installing white scaffolding
without Urban’s authorization as no authorization was needed because Spring has not used or
otherwise copied any valid or protectable trade dress rights allegedly owned by Urban. Spring
denies the remaining allegations in Paragraph 48.
49. Spring denies the allegations in Paragraph 49.
50. Spring denies the allegations in Paragraph 50.
51. Spring denies the allegations in Paragraph 51.
52. Spring denies the allegations in Paragraph 52.
53. Spring denies the allegations in Paragraph 53.
SECOND CAUSE OF ACTION
(Common Law Trade Dress Infringement and Unfair Competition)
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54. Spring repeats and realleges the responses in each of the preceding paragraphs as if
fully set forth herein.
55. Spring denies that Urban has any valid or protectable trade dress rights and
therefore denies the allegations in Paragraph 55.
56. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 56 and, therefore, denies the allegations in Paragraph 56.
57. Spring lacks sufficient knowledge and information to admit or deny the allegations
in Paragraph 57 and, therefore, denies the allegations in Paragraph 57.
58. Spring denies the allegations in Paragraph 58.
59. Spring denies the allegations in Paragraph 59.
60. Spring denies the allegations in Paragraph 60.
61. Spring denies the allegations in Paragraph 61.
62. Spring denies the allegations in Paragraph 62.
In response to the WHEREFORE paragraph and Subparagraphs A through H, Spring
denies that Urban is entitled to any of the relief requested therein; Spring respectfully requests that
the Second Amended Complaint be dismissed with prejudice, that the Court enter Judgment
finding for Spring in all respects and ordering that Urban take nothing in relation to this matter,
granting Spring its costs, including attorneys’ fees, incurred in relation to this matter, and granting
Spring such other relief as the Court finds just and proper.
DEFENSES AND AFFIRMATIVE DEFENSES
First Defense
63. The Second Amended Complaint fails to state a claim upon which relief can be
granted.
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Second Defense
64. The claims are barred by the doctrine of unclean hands.
Third Defense
65. The claims are barred as the asserted trade dress is non-distinctive, lacks secondary
meaning, is not identified with specificity, and/or is functional.
Fourth Defense
66. The claims are barred by the doctrine of laches.
Fifth Defense
67. The claims are barred by fair use.
Sixth Defense
68. The claims are barred as the asserted trade dress is not infringed.
Seventh Defense
69. The claims have been waived by Urban.
Reservation of Rights
70. Spring reserves all rights to assert further defenses as they become known during
the course of discovery or otherwise become available or applicable, and to amend this Answer
accordingly.
COUNTERCLAIMS
Counterclaim Plaintiff Spring Scaffolding LLC (“Spring”), by and through its attorneys,
hereby allege for their Counterclaims against Urban Intelligence Inc. (“Urban”) on personal
knowledge as to their own activities and on information and belief as to all other matters, as
follows:
NATURE OF THE ACTION
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71. Spring is in the business of designing, manufacturing, selling, renting out, and
installing sidewalk sheds and scaffolding to its customers.
72. The sidewalk shed and scaffolding industry is highly competitive, particularly in
New York City where many storefronts and businesses require scaffolding.
73. Urban is also in the business of sidewalk sheds and scaffolding, in which Spring
and Urban are competitors.
74. Urban operates primarily in the City of New York.
75. Spring operates primarily in the City of New York.
76. This is an action for declaratory judgment arising under the Declaratory Judgment
Act, 28 U.S.C. §§ 2201 and 2202 for non-infringement and invalidity of Urban’s purported trade
dress and patents and for declarations of unenforceability of Urban’s patents, and for tortious
interference with prospective economic advantage, violation of New York General Business Law
§§ 349 and 350, defamation, and trade libel.
77. In a clear attempt to neutralize lawful competition in the sidewalk shed and
scaffolding business, Urban has conducted an aggressive campaign of harassing and bullying
businesses, including Spring, into submission, preventing lawful business activity that competes
with Urban.
78. Specifically, Urban has sent letters to Spring and many of Spring’s customers, with
whom Spring has active contracts for the construction and/or rental of sidewalk scaffolding, in
which Urban summarily accuses Spring of violating Urban’s intellectual property rights in its
purported trade dress and patent.
79. Spring has thus been forced to file these counterclaims to vindicate its rights.
PARTIES
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80. Counterclaim Plaintiff Spring Scaffolding LLC is a New York limited liability
company with a principal place of business located at 49-30 31st Place, Long Island City, New
York, 11101.
81. Upon information and belief, Counterclaim Defendant Urban Intelligence Inc. is a
Delaware corporation with a principal place of business located at 20 Harrison Street, New York,
New York, 10013.
JURISDICTION AND VENUE
82. This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 and 2202,
New York General Business Law Sections 349 and 350, and under the common laws of the State
of New York, due to Urban’s false and malicious assertions of (1) patent infringement of U.S.
Patent No. D958,412 entitled “Building Scaffolding Brace Assembly (the “’412 Patent”), and other
patents, and (2) Urban’s purported trade dress in its sidewalk scaffolding (the “Asserted Trade
Dress”) against Spring, related to Spring’s lawful manufacturing, rental, and sales of Spring’s own
sidewalk scaffolding and sheds.
83. Subject matter jurisdiction over the claims is conferred upon this Court by 28
U.S.C. § 2201 and 2202 (declaratory judgment), 28 U.S.C. § 1331 (federal question jurisdiction),
and 28 U.S.C. § 1367 (supplemental jurisdiction).
84. This Court also has personal jurisdiction over Urban because, upon information and
belief, Urban maintains continuous and systematic contacts within New York, derives substantial
revenue from New York, and has committed acts giving rise to this action within New York and
within this District, including, inter alia, accusing Spring of patent and trade dress infringement
and related claims by directing multiple letters to Spring’s customers in this District.
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85. The exercise of personal jurisdiction comports with Urban’s right to due process
because Urban has purposefully availed itself of the privilege of conducting activities within the
Eastern District of New York, such that Urban should reasonably anticipate being haled into court
here.
86. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c) at least
because Urban has directed its enforcement activities at Spring in this District, and a substantial
part of the events giving rise to the claim occurred in this District.
STATEMENT OF FACTS
87. Over the past several years, Spring has built a very successful business by
designing, manufacturing, selling, renting out, and installing sidewalk sheds and scaffolding to its
customers.
88. On or about October 19, 2022, Urban sent Spring a cease-and-desist letter claiming,
in sum and substance, that Spring’s sidewalk scaffolding and sheds infringe Urban’s intellectual
property rights, including Urban’s purported trade dress and patents.
89. The October 19, 2022 letter from Urban asserted that Spring’s sidewalk scaffolding
and sheds “constitute, among other things, (i) copyright infringement under 17 U.S.C. § 501, (ii)
potential patent infringement under 35 U.S.C. § 271, and a violation of §§ 3307.6.4.11 and
3307.4.7.9 of the NYC Building Code 2022.”
90. On or about June 12, 2023, Urban sent threatening letters to many of Spring’s
clients, alleging that the sidewalk sheds and/or scaffolding constructed by Spring for its clients
violates the ’412 Patent and Asserted Trade Dress (the “Tortious Letters”).
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91. Spring does not yet know the number of its customers that Urban sent the Tortious
Letters to. As of the filing of the instant Answer and Counterclaims, Urban has sent the Tortious
Letters to at least five (5) of Spring’s customers.
92. In the Tortious Letters, Urban summarily asserts that the scaffolding systems
provided by Spring “unlawfully infringes upon Urban Umbrella’s patent and trade dress, which
may result in federal litigation.”
93. Further, at a time presently unknown to Spring but no later than June 20, 2023,
Urban published an industry newsletter again accusing Spring of unlawful activity (the “Tortious
Newsletter”).
94. In the Tortious Newsletter, Urban states that Spring “has engaged in the illegal
installation of white scaffolding, deliberately copying Urban Umbrella’s patented design
elements.”
95. The Tortious Newsletter further states that “[t]his unauthorized replication of the
Urban Umbrella’s distinctive appearance constitutes trade dress infringement under federal and
common law.”
ACTUAL CASE OR CONTROVERSY
96. There is an actual controversy between the parties to this litigation within the
jurisdiction of this Court under 28 U.S.C. § 2201 and 2202.
97. Spring denies that any of its products or services infringe any of Urban’s alleged
intellectual property rights.
98. Beyond the Tortious Letters and Tortious Newsletter, Urban brought a frivolous
claim for design patent infringement against Spring alleging infringement of the ’412 Patent.
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99. While Urban ultimately withdrew its frivolous claim of design patent infringement
regarding the ’412 Patent, Urban did so without prejudice and has indicated its potential intent to
bring the same claim again in the future.
100. On August 11, 2023, Urban notified Spring of its intent to withdraw the design
patent infringement claim.
101. Despite Urban’s statement that it would withdraw the design patent infringement
claim, four days later, on August 15, 2023, Urban sent yet another tortious letter to one of Spring
customers, once again falsely accusing Spring of infringing “Urban Umbrella’s patents[.]”
102. Like the previous Tortious Letters, the accusations in the August 15 letter were not
limited to the ’412 Patent.
103. Based on the foregoing, a justiciable controversy exists between Spring and Urban
as to whether Spring’s products and/or services infringe Urban’s alleged intellectual property
rights, including the ’412 Patent and Asserted Trade Dress.
104. Given Urban’s willingness to falsely claim that Spring’s products infringe upon the
’412 Patent, and the ambiguity in the Tortious Letters as to which patent is allegedly infringed by
Spring’s products and services, a justiciable controversy exists between Spring and Urban as to
whether Spring’s products and/or services infringe Urban’s other similar patents; specifically, U.S.
Patent Nos. D958,410 entitled “Building Scaffolding Assembly” (the “’410 Patent”) and D958,411
entitled “Building Scaffolding Column Assembly” (the “’411 Patent” and, collectively with the
’412 Patent and ’410 Patent, “Urban’s Patents”).
105. Absent a declaration of non-infringement, Urban will continue to wrongfully allege
that Spring’s products and services infringe Urban’s intellectual property rights, including Urban’s
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Patents and the Asserted Trade Dress, and can continue to bring frivolous claims of patent
infringement against Spring, thereby causing irreparable injury and damage to Spring.
106. Absent such a declaration, Urban will continue to engage in abusive processes of
bullying competing businesses into submission in its attempt to monopolize a market to which it
has no right to do so.
107. Absent such a declaration, Urban will continue to interfere with Spring’s long-
standing reputable business relationships, including its reputation with its clients and in the
scaffolding industry as a whole, causing irreparable harm to Spring’s reputation with its business
partners, and impeding Spring’s lawful sales of its goods and services based on Urban’s baseless,
bad faith infringement allegations, and permanently tarnishing Spring’s ability to trade on its
reputation.
INVALIDITY OF URBAN’S PATENTS
108. Each of Urban’s Patents is invalid and unenforceable for failure to comply with
one or more of the conditions for patentability set forth in 35 U.S.C. §§ 102, 103, 112 and/or 171.
109. Specifically, each of Urban’s Patents should be declared invalid and unenforceable
because, inter alia, they are anticipated by and/or obvious over the prior art under Sections 102
and 103, respectively.
110. The prior art at issue is Urban’s own product–a sidewalk shed previously located
at 434 Broadway, New York, New York 10013 (the “434 Broadway Shed”), depicted below:
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111. The 434 Broadway Shed, offered for sale at least as early as June of 2019, was
comprised of components substantially identical to the ’410, ’411, and ’412 Patents.
112. Urban’s Patents should be declared invalid and unenforceable for the additional
reason that they are each directed to a set of functional features.
113. Urban cannot legally own or assert design patent rights to a functional design.
COUNT I: TORTIOUS INTERFERENCE WITH PROSPECTIVE ECONOMIC
ADVANTAGE
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114. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs
as if fully set forth herein.
115. Urban has baldly asserted its alleged rights under the ’412 Patent, other unnamed
patents, and Asserted Trade Dress, knowing that neither are infringed by Spring.
116. Asserting a trade dress and/or patent known to not be the subject of infringement
constitutes bad faith.
117. Due at least to its offering of its products for sale to numerous customers, Spring
has created strong relationships and goodwill with its customers and has built its reputation in the
scaffolding industry to a high regard. Spring continues to develop its economic relationships with
its sales channels and customers and intends to continue manufacturing, selling and/or renting out,
offering for sale, and installing its sidewalk sheds and scaffolding.
118. Further, Spring has a reasonable expectation of entering into future contracts with
its existing customers.
119. Urban possessed full knowledge of Spring’s reasonable expectations of entering
into future contracts with its customers to continue selling products, as Urban engages in similar
practices.
120. Urban’s communications with Spring’s customers and within the scaffolding
industry, including its baseless infringement allegations against Spring via the Tortious Letters and
Tortious Newsletter, were made solely out of malice, and used dishonest, unfair, and improper
means.
121. Urban’s communications with Spring’s customers were threats of litigation and
false allegations of infringement.
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122. Urban, in contacting Spring’s customers, intended to cause disruption and/or
termination of the relationship between Spring and its customers.
123. Due to Urban’s actions as described herein, Spring’s relationships with its
customers have been harmed.
124. Spring’s relationships with its customers and within the scaffolding industry
community have been permanently tarnished due to Urban’s false infringement allegations.
125. Spring has suffered and will continue to suffer damages due to Urban’s tortious
interference with its prospective economic advantages.
COUNT II: TRADE LIBEL
126. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs
as if fully set forth herein.
127. Urban knowingly, and without justification, made and/or caused to be made
materially false representations in writing to third parties, including to Spring’s customers, by
which Urban falsely stated that Spring’s sidewalk sheds and scaffolding infringe the ’412 Patent,
other unnamed patents, and Asserted Trade Dress.
128. Such statements, including but not limited to the Tortious Letters and Tortious
Newsletter, are materially false.
129. Urban’s statements were false in that, among other things, Spring’s products do not
infringe the ’412 Patent nor the Asserted Trade Dress.
130. Urban’s materially false representations were calculated to impugn Spring’s
business reputation and that of its products sold in competition with Urban’s, and to dissuade
others from doing business with Spring and were calculated to otherwise interfere with Spring’s
business relationships.
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131. Urban made and/or caused to be made such false communications regarding Spring
knowingly, intentionally, in bad faith, and motivated solely by unrestrained self-interest, malice
and/or disinterested malevolence, without legal or social justification.
132. Urban’s willful and intentional misconduct, without Spring’s knowledge or
consent, irreparably injured and caused damage to Spring in its business reputation.
133. As a result of Urban’s aforesaid acts and conduct, Spring has been irreparably
injured in its business and in its good name and character. Spring’s standing in its business has
also been seriously impaired.
134. The false statements affected Spring in its trade, business, and profession.
135. As discussed in more detail above, at the time it made the false statements, Urban
knew that such statements to third parties were false or were made with reckless disregard for the
truth in that Urban knew that Spring’s products and services do not infringe the ’412 Patent, other
unnamed patents, nor the Asserted Trade Dress.
136. Urban’s statements were not mere statements of opinion.
137. Spring is entitled to damages in an amount no less than $1,000,000 but which
amount is to be determined at trial.
138. Spring is entitled to an award of punitive damages in an amount sufficient to punish
and deter Urban from engaging in further knowing acts of trade libel.
COUNT III: VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 349
139. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs
as if fully set forth herein.
140. Urban engaged in consumer-directed conduct through their business as a seller of
goods who offers for sale and sells products to consumers and the general public.
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141. Urban’s conduct in making the false statements in the Tortious Newsletter and the
Tortious Letters was materially misleading as to the nature and quality of the goods offered for
sale by Spring.
142. Upon information and belief, and considering Urban’s clear goal of eliminating
competition, Urban’s deceptive conduct was willful and knowing.
143. As described herein, Urban’s deceptive conduct has damaged Spring in the form of
damage to its business relationships, damage to its standing and goodwill as a provider of sidewalk
sheds and scaffolding, and damage to Spring’s relationships with its customers.
144. Spring is therefore entitled to judgment against Urban for violation of New York
General Business Law § 349.
COUNT IV: VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 350
145. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs
as if fully set forth herein.
146. By way of the acts alleged herein, Urban has been and is engaged in consumer-
oriented advertising and marketing that is false and misleading in material respects in violation of
New York General Business Law § 350.
147. In addition to the deceptive acts described above, Urban advertises and promotes
its scaffolding products in part by falsely stating that Urban is the only scaffolding company who
is allowed to use the color white on their products in New York City and the only company who
is permitted to use transparent decking in its scaffolding by virtue of Chapter 33 of the New York
City Department of Buildings Code.
148. Upon information and belief, Urban makes these false representations in every
pitch they put on for consumers.
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149. At all relevant times, Urban engaged in a scheme of knowingly and falsely
advertising itself as having special privileges, purportedly awarded by New York City, that other
scaffolding companies do not have.
150. Urban’s acts of false advertising have misled consumers and have intentionally
diverted customers from Spring.
151. For example, in a pitch to potential customers, Urban states that it is “[t]he only
company allowed to produce alternate-color sidewalk bridging and construction fencing” and
“[t]he only company allowed to . . . utilize transparent decking.” Neither of these statements are
true.
152. Urban knew, or in the exercise of reasonable care should have known, that its
misrepresentations as to Urban’s exclusive right to use the color white and transparent decking
were false, misleading, and/or deceptive.
153. Indeed, Chapter 33 section 3307.6.4.11 of the New York City Building Code
clearly states that “[s]idewalk sheds that are of a model whose prototype won a design competition
recognized by the city may be white in color.”
154. New York City has held multiple design competitions with different winners, and
companies whose scaffolding products resemble a model whose prototype won a competition may
use the color white.
155. Upon information and belief, and considering Urban’s clear goal of eliminating
competition, Urban’s false advertising was willful and knowing.
156. As described herein, Urban’s false advertising has damaged Spring in the form of
harm to its business relationships, damage to its standing and goodwill as a provider of sidewalk
sheds and scaffolding, and damage to Spring’s relationships with its customers, all stemming from
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the false perception held by consumers, due to Urban’s false advertising, that Urban has exclusive
rights in the scaffolding industry that Spring does not.
157. Spring is therefore entitled to judgment against Urban for violation of New York
General Business Law § 350.
COUNT V: DEFAMATION
158. Spring re-alleges and incorporates all of the preceding paragraphs as if fully set
forth herein.
159. Urban has knowingly and maliciously made false statements of and about Spring
and Spring’s products and services, specifically, that Spring’s goods and services infringe the ’412
Patent, other unnamed patents, and the Asserted Trade Dress.
160. Through the Tortious Letters and the Tortious Newsletter, Urban made written
defamatory factual statements concerning Spring and Spring’s goods and services.
161. Urban published these false claims of infringement to Spring’s customers and the
recipients of Urban’s newsletters.
162. Urban knew that the false claims of infringement were, in fact, false and defamatory
statements at the time they were made.
163. Urban’s statements are defamatory per se because they maliciously impugn
Spring’s business reputation and practices in Spring’s trade and profession.
164. Upon information and belief, Urban’s denigrating of the quality and/or legality of
Spring’s goods and services were malicious and done with the intent to eliminate Spring’s lawful
competition with Urban.
165. As a direct result of Urban’s willful, intentional, and false acts of commercial
defamation, Spring has suffered loss of goodwill and brand and reputational damage.
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166. As a direct and proximate result of Urban’s commercial defamation, Spring has
suffered damage in an amount to be determined at trial.
COUNT VI: DECLARATION OF NON-INFRINGEMENT OF THE ASSERTED TRADE
DRESS
167. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs
as if fully set forth herein.
168. On multiple occasions, including in the Tortious Newsletter and Tortious Letters,
Urban has repeatedly (a) threatened Spring and its customers with litigation for the sale and/or use
of Spring’s sidewalk sheds and scaffolding, (b) claimed that the manufacture and sale of Spring’s
sidewalk sheds and scaffolding infringes the Asserted Trade Dress, and (c) demanded, inter alia,
that Spring immediately cease the advertising, installation, and sale of Spring’s sidewalk sheds
and scaffolding.
169. On information and belief, Urban does not have a federal trademark registration for
the Asserted Trade Dress. Urban therefore has the burden to: (a) identify the unregistered trade
dress with specificity; (b) demonstrate that its unregistered trade dress is distinctive; and (c)
demonstrate that its unregistered trade dress is non-functional. Urban cannot demonstrate any
element required for trade dress protection.
170. Urban has failed to identify any purported trade dress with the requisite specificity,
Preview
FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 NYSCEF DOC. NO. 15 RECEIVED NYSCEF: 01/05/2024 EXHIBIT E FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 1 RECEIVED of 32 PageID #: 809 NYSCEF: 01/05/2024 IN THE UNITED STATES DISTRICT COURT FOR THE EASTERN DISTRICT OF NEW YORK URBAN INTELLIGENCE INC., ) CIVIL ACTION NO.: ) 23-cv-1789 (RPK)(PK) Plaintiff, ) ) v. ) ) SPRING SCAFFOLDING LLC, ) ) Defendant. ) ANSWER AND AFFIRMATIVE DEFENSES Defendant Spring Scaffolding LLC (“Spring”), by and through its counsel, hereby answers Plaintiff Urban Intelligence Inc.’s (“Urban”) Second Amended Complaint (“SAC”) [ECF 39]. Any allegations not specifically admitted herein are denied. NATURE OF THE ACTION 1. Spring admits the allegations in Paragraph 1 only insofar as it states that Urban has brought claims under the Lanham Act, 15 U.S.C. § 1051 et seq. and unfair competition arising under the common law of the State of New York. Spring denies the remainder of the allegations in Paragraph 1. 2. Spring admits the allegations in Paragraph 2. 3. Spring admits the allegations in Paragraph 3. JURISDICTION AND VENUE 4. Paragraph 4 states legal conclusions to which no responsive pleading is required. To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 4. 5. Paragraph 5 states legal conclusions to which no responsive pleading is required. To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 5. 1 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 2 RECEIVED of 32 PageID #: 810 NYSCEF: 01/05/2024 6. Paragraph 6 states legal conclusions to which no responsive pleading is required. To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 6. 7. Paragraph 7 states legal conclusions to which no responsive pleading is required. To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 7. 8. Paragraph 8 states legal conclusions to which no responsive pleading is required. To the extent a responsive pleading is required, Spring denies the allegations in Paragraph 8. FACTUAL BACKGROUND A. URBAN UMBRELLA ORIGINS AND ITS UNIQUE SIDEWALK SHED 9. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 9 and, therefore, denies the allegations in Paragraph 9. 10. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 10 and, therefore, denies the allegations in Paragraph 10. 11. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 11 and, therefore, denies the allegations in Paragraph 11. 12. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 12 and, therefore, denies the allegations in Paragraph 12. B. THE URBAN UMBRELLA TRADE DRESS 13. Spring denies the allegations in Paragraph 13. 14. Spring denies the allegations in Paragraph 14. 15. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 15 and, therefore, denies the allegations in Paragraph 15. 16. Spring denies that Urban has a valid and protectable trade dress in its scaffolding products and, therefore, Spring denies the allegations in Paragraph 16. 2 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 3 RECEIVED of 32 PageID #: 811 NYSCEF: 01/05/2024 17. Spring denies the allegations in Paragraph 17. 18. Spring denies the allegations in Paragraph 18. 19. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 19 and, therefore, denies the allegations in Paragraph 19. 20. Spring denies the allegations in Paragraph 20. 21. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 21 and, therefore, denies the allegations in Paragraph 21. 22. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 22 and, therefore, denies the allegations in Paragraph 22. 23. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 23 and, therefore, denies the allegations in Paragraph 23. 24. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 24 and, therefore, denies the allegations in Paragraph 24. 25. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 25 and, therefore, denies the allegations in Paragraph 25. 26. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 26 and, therefore, denies the allegations in Paragraph 26. 27. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 27 and, therefore, denies the allegations in Paragraph 27. 28. Spring denies the allegations in Paragraph 28. C. DEFENDANT AND ITS INFRINGING ACTS 29. Spring admits the allegations in Paragraph 29. 30. Spring admits the allegations in Paragraph 30. 3 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 4 RECEIVED of 32 PageID #: 812 NYSCEF: 01/05/2024 31. Spring denies the allegations in Paragraph 31. 32. Spring denies the allegations in Paragraph 32. 33. Spring denies the allegations in Paragraph 33. 34. Spring denies the allegations in Paragraph 34. 35. Spring denies the allegations in Paragraph 35. 36. Spring denies the allegations in Paragraph 36. 37. Spring admits the allegations in Paragraph 37 only insofar as they serve to identify images of Spring and Urban’s respective products. Spring denies the remaining allegations in Paragraph 37. 38. Spring denies the allegations in Paragraph 38 as Spring has not used or otherwise copied any valid or protectable trade dress rights allegedly owned by Urban. 39. Spring denies the allegations in Paragraph 39 as Spring has not used or otherwise copied any valid or protectable trade dress rights allegedly owned by Urban. 40. Spring admits the allegations in Paragraph 40 only insofar as it states that Urban sent Spring a cease-and-desist letter alleging infringement of Urban’s purported trade dress and demanding Spring cease certain conduct. Spring denies the remainder of the allegations in Paragraph 40. 41. Spring admits the allegations in Paragraph 41 only insofar as it states Urban sent Spring a second cease-and-desist letter on November 8, 2022. Spring denies the remainder of the allegations in Paragraph 41. 42. Spring denies the allegations in Paragraph 42. FIRST CAUSE OF ACTION (15 U.S.C. § 1125(a) – Trade Dress Infringement) 4 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 5 RECEIVED of 32 PageID #: 813 NYSCEF: 01/05/2024 43. Spring repeats and realleges the responses in each of the preceding paragraphs as if fully set forth herein. 44. Spring admits the allegations in Paragraph 44 only insofar as it states that Urban brings a claim under the Lanham Act, 15 U.S.C. § 1051 et seq. and has alleged false designations of origin, false descriptions, and false representations. Spring denies the remaining allegations in Paragraph 44. 45. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 45 and, therefore, denies the allegations in Paragraph 45. 46. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 46 and, therefore, denies the allegations in Paragraph 46. 47. Spring denies the allegations in Paragraph 47. 48. Spring admits the allegations in Paragraph 48 only insofar as it states in or about 2020 and until the present Spring began offering, selling, renting, and installing white scaffolding without Urban’s authorization as no authorization was needed because Spring has not used or otherwise copied any valid or protectable trade dress rights allegedly owned by Urban. Spring denies the remaining allegations in Paragraph 48. 49. Spring denies the allegations in Paragraph 49. 50. Spring denies the allegations in Paragraph 50. 51. Spring denies the allegations in Paragraph 51. 52. Spring denies the allegations in Paragraph 52. 53. Spring denies the allegations in Paragraph 53. SECOND CAUSE OF ACTION (Common Law Trade Dress Infringement and Unfair Competition) 5 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 6 RECEIVED of 32 PageID #: 814 NYSCEF: 01/05/2024 54. Spring repeats and realleges the responses in each of the preceding paragraphs as if fully set forth herein. 55. Spring denies that Urban has any valid or protectable trade dress rights and therefore denies the allegations in Paragraph 55. 56. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 56 and, therefore, denies the allegations in Paragraph 56. 57. Spring lacks sufficient knowledge and information to admit or deny the allegations in Paragraph 57 and, therefore, denies the allegations in Paragraph 57. 58. Spring denies the allegations in Paragraph 58. 59. Spring denies the allegations in Paragraph 59. 60. Spring denies the allegations in Paragraph 60. 61. Spring denies the allegations in Paragraph 61. 62. Spring denies the allegations in Paragraph 62. In response to the WHEREFORE paragraph and Subparagraphs A through H, Spring denies that Urban is entitled to any of the relief requested therein; Spring respectfully requests that the Second Amended Complaint be dismissed with prejudice, that the Court enter Judgment finding for Spring in all respects and ordering that Urban take nothing in relation to this matter, granting Spring its costs, including attorneys’ fees, incurred in relation to this matter, and granting Spring such other relief as the Court finds just and proper. DEFENSES AND AFFIRMATIVE DEFENSES First Defense 63. The Second Amended Complaint fails to state a claim upon which relief can be granted. 6 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 7 RECEIVED of 32 PageID #: 815 NYSCEF: 01/05/2024 Second Defense 64. The claims are barred by the doctrine of unclean hands. Third Defense 65. The claims are barred as the asserted trade dress is non-distinctive, lacks secondary meaning, is not identified with specificity, and/or is functional. Fourth Defense 66. The claims are barred by the doctrine of laches. Fifth Defense 67. The claims are barred by fair use. Sixth Defense 68. The claims are barred as the asserted trade dress is not infringed. Seventh Defense 69. The claims have been waived by Urban. Reservation of Rights 70. Spring reserves all rights to assert further defenses as they become known during the course of discovery or otherwise become available or applicable, and to amend this Answer accordingly. COUNTERCLAIMS Counterclaim Plaintiff Spring Scaffolding LLC (“Spring”), by and through its attorneys, hereby allege for their Counterclaims against Urban Intelligence Inc. (“Urban”) on personal knowledge as to their own activities and on information and belief as to all other matters, as follows: NATURE OF THE ACTION 7 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 8 RECEIVED of 32 PageID #: 816 NYSCEF: 01/05/2024 71. Spring is in the business of designing, manufacturing, selling, renting out, and installing sidewalk sheds and scaffolding to its customers. 72. The sidewalk shed and scaffolding industry is highly competitive, particularly in New York City where many storefronts and businesses require scaffolding. 73. Urban is also in the business of sidewalk sheds and scaffolding, in which Spring and Urban are competitors. 74. Urban operates primarily in the City of New York. 75. Spring operates primarily in the City of New York. 76. This is an action for declaratory judgment arising under the Declaratory Judgment Act, 28 U.S.C. §§ 2201 and 2202 for non-infringement and invalidity of Urban’s purported trade dress and patents and for declarations of unenforceability of Urban’s patents, and for tortious interference with prospective economic advantage, violation of New York General Business Law §§ 349 and 350, defamation, and trade libel. 77. In a clear attempt to neutralize lawful competition in the sidewalk shed and scaffolding business, Urban has conducted an aggressive campaign of harassing and bullying businesses, including Spring, into submission, preventing lawful business activity that competes with Urban. 78. Specifically, Urban has sent letters to Spring and many of Spring’s customers, with whom Spring has active contracts for the construction and/or rental of sidewalk scaffolding, in which Urban summarily accuses Spring of violating Urban’s intellectual property rights in its purported trade dress and patent. 79. Spring has thus been forced to file these counterclaims to vindicate its rights. PARTIES 8 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 Case NYSCEF DOC. 1:23-cv-01789-RPK-PK NO. 15 Document 60 Filed 09/29/23 Page 9 RECEIVED of 32 PageID #: 817 NYSCEF: 01/05/2024 80. Counterclaim Plaintiff Spring Scaffolding LLC is a New York limited liability company with a principal place of business located at 49-30 31st Place, Long Island City, New York, 11101. 81. Upon information and belief, Counterclaim Defendant Urban Intelligence Inc. is a Delaware corporation with a principal place of business located at 20 Harrison Street, New York, New York, 10013. JURISDICTION AND VENUE 82. This action arises under the Declaratory Judgment Act, 28 U.S.C. § 2201 and 2202, New York General Business Law Sections 349 and 350, and under the common laws of the State of New York, due to Urban’s false and malicious assertions of (1) patent infringement of U.S. Patent No. D958,412 entitled “Building Scaffolding Brace Assembly (the “’412 Patent”), and other patents, and (2) Urban’s purported trade dress in its sidewalk scaffolding (the “Asserted Trade Dress”) against Spring, related to Spring’s lawful manufacturing, rental, and sales of Spring’s own sidewalk scaffolding and sheds. 83. Subject matter jurisdiction over the claims is conferred upon this Court by 28 U.S.C. § 2201 and 2202 (declaratory judgment), 28 U.S.C. § 1331 (federal question jurisdiction), and 28 U.S.C. § 1367 (supplemental jurisdiction). 84. This Court also has personal jurisdiction over Urban because, upon information and belief, Urban maintains continuous and systematic contacts within New York, derives substantial revenue from New York, and has committed acts giving rise to this action within New York and within this District, including, inter alia, accusing Spring of patent and trade dress infringement and related claims by directing multiple letters to Spring’s customers in this District. 9 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 10RECEIVED of 32 PageID #: 818 NYSCEF: 01/05/2024 85. The exercise of personal jurisdiction comports with Urban’s right to due process because Urban has purposefully availed itself of the privilege of conducting activities within the Eastern District of New York, such that Urban should reasonably anticipate being haled into court here. 86. Venue is proper in this District pursuant to 28 U.S.C. § 1391(b) and (c) at least because Urban has directed its enforcement activities at Spring in this District, and a substantial part of the events giving rise to the claim occurred in this District. STATEMENT OF FACTS 87. Over the past several years, Spring has built a very successful business by designing, manufacturing, selling, renting out, and installing sidewalk sheds and scaffolding to its customers. 88. On or about October 19, 2022, Urban sent Spring a cease-and-desist letter claiming, in sum and substance, that Spring’s sidewalk scaffolding and sheds infringe Urban’s intellectual property rights, including Urban’s purported trade dress and patents. 89. The October 19, 2022 letter from Urban asserted that Spring’s sidewalk scaffolding and sheds “constitute, among other things, (i) copyright infringement under 17 U.S.C. § 501, (ii) potential patent infringement under 35 U.S.C. § 271, and a violation of §§ 3307.6.4.11 and 3307.4.7.9 of the NYC Building Code 2022.” 90. On or about June 12, 2023, Urban sent threatening letters to many of Spring’s clients, alleging that the sidewalk sheds and/or scaffolding constructed by Spring for its clients violates the ’412 Patent and Asserted Trade Dress (the “Tortious Letters”). 10 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 11RECEIVED of 32 PageID #: 819 NYSCEF: 01/05/2024 91. Spring does not yet know the number of its customers that Urban sent the Tortious Letters to. As of the filing of the instant Answer and Counterclaims, Urban has sent the Tortious Letters to at least five (5) of Spring’s customers. 92. In the Tortious Letters, Urban summarily asserts that the scaffolding systems provided by Spring “unlawfully infringes upon Urban Umbrella’s patent and trade dress, which may result in federal litigation.” 93. Further, at a time presently unknown to Spring but no later than June 20, 2023, Urban published an industry newsletter again accusing Spring of unlawful activity (the “Tortious Newsletter”). 94. In the Tortious Newsletter, Urban states that Spring “has engaged in the illegal installation of white scaffolding, deliberately copying Urban Umbrella’s patented design elements.” 95. The Tortious Newsletter further states that “[t]his unauthorized replication of the Urban Umbrella’s distinctive appearance constitutes trade dress infringement under federal and common law.” ACTUAL CASE OR CONTROVERSY 96. There is an actual controversy between the parties to this litigation within the jurisdiction of this Court under 28 U.S.C. § 2201 and 2202. 97. Spring denies that any of its products or services infringe any of Urban’s alleged intellectual property rights. 98. Beyond the Tortious Letters and Tortious Newsletter, Urban brought a frivolous claim for design patent infringement against Spring alleging infringement of the ’412 Patent. 11 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 12RECEIVED of 32 PageID #: 820 NYSCEF: 01/05/2024 99. While Urban ultimately withdrew its frivolous claim of design patent infringement regarding the ’412 Patent, Urban did so without prejudice and has indicated its potential intent to bring the same claim again in the future. 100. On August 11, 2023, Urban notified Spring of its intent to withdraw the design patent infringement claim. 101. Despite Urban’s statement that it would withdraw the design patent infringement claim, four days later, on August 15, 2023, Urban sent yet another tortious letter to one of Spring customers, once again falsely accusing Spring of infringing “Urban Umbrella’s patents[.]” 102. Like the previous Tortious Letters, the accusations in the August 15 letter were not limited to the ’412 Patent. 103. Based on the foregoing, a justiciable controversy exists between Spring and Urban as to whether Spring’s products and/or services infringe Urban’s alleged intellectual property rights, including the ’412 Patent and Asserted Trade Dress. 104. Given Urban’s willingness to falsely claim that Spring’s products infringe upon the ’412 Patent, and the ambiguity in the Tortious Letters as to which patent is allegedly infringed by Spring’s products and services, a justiciable controversy exists between Spring and Urban as to whether Spring’s products and/or services infringe Urban’s other similar patents; specifically, U.S. Patent Nos. D958,410 entitled “Building Scaffolding Assembly” (the “’410 Patent”) and D958,411 entitled “Building Scaffolding Column Assembly” (the “’411 Patent” and, collectively with the ’412 Patent and ’410 Patent, “Urban’s Patents”). 105. Absent a declaration of non-infringement, Urban will continue to wrongfully allege that Spring’s products and services infringe Urban’s intellectual property rights, including Urban’s 12 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 13RECEIVED of 32 PageID #: 821 NYSCEF: 01/05/2024 Patents and the Asserted Trade Dress, and can continue to bring frivolous claims of patent infringement against Spring, thereby causing irreparable injury and damage to Spring. 106. Absent such a declaration, Urban will continue to engage in abusive processes of bullying competing businesses into submission in its attempt to monopolize a market to which it has no right to do so. 107. Absent such a declaration, Urban will continue to interfere with Spring’s long- standing reputable business relationships, including its reputation with its clients and in the scaffolding industry as a whole, causing irreparable harm to Spring’s reputation with its business partners, and impeding Spring’s lawful sales of its goods and services based on Urban’s baseless, bad faith infringement allegations, and permanently tarnishing Spring’s ability to trade on its reputation. INVALIDITY OF URBAN’S PATENTS 108. Each of Urban’s Patents is invalid and unenforceable for failure to comply with one or more of the conditions for patentability set forth in 35 U.S.C. §§ 102, 103, 112 and/or 171. 109. Specifically, each of Urban’s Patents should be declared invalid and unenforceable because, inter alia, they are anticipated by and/or obvious over the prior art under Sections 102 and 103, respectively. 110. The prior art at issue is Urban’s own product–a sidewalk shed previously located at 434 Broadway, New York, New York 10013 (the “434 Broadway Shed”), depicted below: 13 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 14RECEIVED of 32 PageID #: 822 NYSCEF: 01/05/2024 111. The 434 Broadway Shed, offered for sale at least as early as June of 2019, was comprised of components substantially identical to the ’410, ’411, and ’412 Patents. 112. Urban’s Patents should be declared invalid and unenforceable for the additional reason that they are each directed to a set of functional features. 113. Urban cannot legally own or assert design patent rights to a functional design. COUNT I: TORTIOUS INTERFERENCE WITH PROSPECTIVE ECONOMIC ADVANTAGE 14 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 15RECEIVED of 32 PageID #: 823 NYSCEF: 01/05/2024 114. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs as if fully set forth herein. 115. Urban has baldly asserted its alleged rights under the ’412 Patent, other unnamed patents, and Asserted Trade Dress, knowing that neither are infringed by Spring. 116. Asserting a trade dress and/or patent known to not be the subject of infringement constitutes bad faith. 117. Due at least to its offering of its products for sale to numerous customers, Spring has created strong relationships and goodwill with its customers and has built its reputation in the scaffolding industry to a high regard. Spring continues to develop its economic relationships with its sales channels and customers and intends to continue manufacturing, selling and/or renting out, offering for sale, and installing its sidewalk sheds and scaffolding. 118. Further, Spring has a reasonable expectation of entering into future contracts with its existing customers. 119. Urban possessed full knowledge of Spring’s reasonable expectations of entering into future contracts with its customers to continue selling products, as Urban engages in similar practices. 120. Urban’s communications with Spring’s customers and within the scaffolding industry, including its baseless infringement allegations against Spring via the Tortious Letters and Tortious Newsletter, were made solely out of malice, and used dishonest, unfair, and improper means. 121. Urban’s communications with Spring’s customers were threats of litigation and false allegations of infringement. 15 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 16RECEIVED of 32 PageID #: 824 NYSCEF: 01/05/2024 122. Urban, in contacting Spring’s customers, intended to cause disruption and/or termination of the relationship between Spring and its customers. 123. Due to Urban’s actions as described herein, Spring’s relationships with its customers have been harmed. 124. Spring’s relationships with its customers and within the scaffolding industry community have been permanently tarnished due to Urban’s false infringement allegations. 125. Spring has suffered and will continue to suffer damages due to Urban’s tortious interference with its prospective economic advantages. COUNT II: TRADE LIBEL 126. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs as if fully set forth herein. 127. Urban knowingly, and without justification, made and/or caused to be made materially false representations in writing to third parties, including to Spring’s customers, by which Urban falsely stated that Spring’s sidewalk sheds and scaffolding infringe the ’412 Patent, other unnamed patents, and Asserted Trade Dress. 128. Such statements, including but not limited to the Tortious Letters and Tortious Newsletter, are materially false. 129. Urban’s statements were false in that, among other things, Spring’s products do not infringe the ’412 Patent nor the Asserted Trade Dress. 130. Urban’s materially false representations were calculated to impugn Spring’s business reputation and that of its products sold in competition with Urban’s, and to dissuade others from doing business with Spring and were calculated to otherwise interfere with Spring’s business relationships. 16 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 17RECEIVED of 32 PageID #: 825 NYSCEF: 01/05/2024 131. Urban made and/or caused to be made such false communications regarding Spring knowingly, intentionally, in bad faith, and motivated solely by unrestrained self-interest, malice and/or disinterested malevolence, without legal or social justification. 132. Urban’s willful and intentional misconduct, without Spring’s knowledge or consent, irreparably injured and caused damage to Spring in its business reputation. 133. As a result of Urban’s aforesaid acts and conduct, Spring has been irreparably injured in its business and in its good name and character. Spring’s standing in its business has also been seriously impaired. 134. The false statements affected Spring in its trade, business, and profession. 135. As discussed in more detail above, at the time it made the false statements, Urban knew that such statements to third parties were false or were made with reckless disregard for the truth in that Urban knew that Spring’s products and services do not infringe the ’412 Patent, other unnamed patents, nor the Asserted Trade Dress. 136. Urban’s statements were not mere statements of opinion. 137. Spring is entitled to damages in an amount no less than $1,000,000 but which amount is to be determined at trial. 138. Spring is entitled to an award of punitive damages in an amount sufficient to punish and deter Urban from engaging in further knowing acts of trade libel. COUNT III: VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 349 139. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs as if fully set forth herein. 140. Urban engaged in consumer-directed conduct through their business as a seller of goods who offers for sale and sells products to consumers and the general public. 17 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 18RECEIVED of 32 PageID #: 826 NYSCEF: 01/05/2024 141. Urban’s conduct in making the false statements in the Tortious Newsletter and the Tortious Letters was materially misleading as to the nature and quality of the goods offered for sale by Spring. 142. Upon information and belief, and considering Urban’s clear goal of eliminating competition, Urban’s deceptive conduct was willful and knowing. 143. As described herein, Urban’s deceptive conduct has damaged Spring in the form of damage to its business relationships, damage to its standing and goodwill as a provider of sidewalk sheds and scaffolding, and damage to Spring’s relationships with its customers. 144. Spring is therefore entitled to judgment against Urban for violation of New York General Business Law § 349. COUNT IV: VIOLATION OF NEW YORK GENERAL BUSINESS LAW § 350 145. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs as if fully set forth herein. 146. By way of the acts alleged herein, Urban has been and is engaged in consumer- oriented advertising and marketing that is false and misleading in material respects in violation of New York General Business Law § 350. 147. In addition to the deceptive acts described above, Urban advertises and promotes its scaffolding products in part by falsely stating that Urban is the only scaffolding company who is allowed to use the color white on their products in New York City and the only company who is permitted to use transparent decking in its scaffolding by virtue of Chapter 33 of the New York City Department of Buildings Code. 148. Upon information and belief, Urban makes these false representations in every pitch they put on for consumers. 18 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 19RECEIVED of 32 PageID #: 827 NYSCEF: 01/05/2024 149. At all relevant times, Urban engaged in a scheme of knowingly and falsely advertising itself as having special privileges, purportedly awarded by New York City, that other scaffolding companies do not have. 150. Urban’s acts of false advertising have misled consumers and have intentionally diverted customers from Spring. 151. For example, in a pitch to potential customers, Urban states that it is “[t]he only company allowed to produce alternate-color sidewalk bridging and construction fencing” and “[t]he only company allowed to . . . utilize transparent decking.” Neither of these statements are true. 152. Urban knew, or in the exercise of reasonable care should have known, that its misrepresentations as to Urban’s exclusive right to use the color white and transparent decking were false, misleading, and/or deceptive. 153. Indeed, Chapter 33 section 3307.6.4.11 of the New York City Building Code clearly states that “[s]idewalk sheds that are of a model whose prototype won a design competition recognized by the city may be white in color.” 154. New York City has held multiple design competitions with different winners, and companies whose scaffolding products resemble a model whose prototype won a competition may use the color white. 155. Upon information and belief, and considering Urban’s clear goal of eliminating competition, Urban’s false advertising was willful and knowing. 156. As described herein, Urban’s false advertising has damaged Spring in the form of harm to its business relationships, damage to its standing and goodwill as a provider of sidewalk sheds and scaffolding, and damage to Spring’s relationships with its customers, all stemming from 19 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 20RECEIVED of 32 PageID #: 828 NYSCEF: 01/05/2024 the false perception held by consumers, due to Urban’s false advertising, that Urban has exclusive rights in the scaffolding industry that Spring does not. 157. Spring is therefore entitled to judgment against Urban for violation of New York General Business Law § 350. COUNT V: DEFAMATION 158. Spring re-alleges and incorporates all of the preceding paragraphs as if fully set forth herein. 159. Urban has knowingly and maliciously made false statements of and about Spring and Spring’s products and services, specifically, that Spring’s goods and services infringe the ’412 Patent, other unnamed patents, and the Asserted Trade Dress. 160. Through the Tortious Letters and the Tortious Newsletter, Urban made written defamatory factual statements concerning Spring and Spring’s goods and services. 161. Urban published these false claims of infringement to Spring’s customers and the recipients of Urban’s newsletters. 162. Urban knew that the false claims of infringement were, in fact, false and defamatory statements at the time they were made. 163. Urban’s statements are defamatory per se because they maliciously impugn Spring’s business reputation and practices in Spring’s trade and profession. 164. Upon information and belief, Urban’s denigrating of the quality and/or legality of Spring’s goods and services were malicious and done with the intent to eliminate Spring’s lawful competition with Urban. 165. As a direct result of Urban’s willful, intentional, and false acts of commercial defamation, Spring has suffered loss of goodwill and brand and reputational damage. 20 FILED: NEW YORK COUNTY CLERK 01/05/2024 10:04 PM INDEX NO. 159748/2023 CaseNO. NYSCEF DOC. 1:23-cv-01789-RPK-PK 15 Document 60 Filed 09/29/23 Page 21RECEIVED of 32 PageID #: 829 NYSCEF: 01/05/2024 166. As a direct and proximate result of Urban’s commercial defamation, Spring has suffered damage in an amount to be determined at trial. COUNT VI: DECLARATION OF NON-INFRINGEMENT OF THE ASSERTED TRADE DRESS 167. Spring re-alleges and incorporates the allegations of all of the preceding paragraphs as if fully set forth herein. 168. On multiple occasions, including in the Tortious Newsletter and Tortious Letters, Urban has repeatedly (a) threatened Spring and its customers with litigation for the sale and/or use of Spring’s sidewalk sheds and scaffolding, (b) claimed that the manufacture and sale of Spring’s sidewalk sheds and scaffolding infringes the Asserted Trade Dress, and (c) demanded, inter alia, that Spring immediately cease the advertising, installation, and sale of Spring’s sidewalk sheds and scaffolding. 169. On information and belief, Urban does not have a federal trademark registration for the Asserted Trade Dress. Urban therefore has the burden to: (a) identify the unregistered trade dress with specificity; (b) demonstrate that its unregistered trade dress is distinctive; and (c) demonstrate that its unregistered trade dress is non-functional. Urban cannot demonstrate any element required for trade dress protection. 170. Urban has failed to identify any purported trade dress with the requisite specificity,