I’ve been made aware that Invicta has actually filed suit against Plasticase now.  (See THIS POST for the back-story.)  I haven’t had a chance to review the pleadings in depth, but the complaint is based on Plasticase’s alleged “false marking” of its cases.  False marking occurs when someone marks an item as “Patented” when, in fact, it is not covered by a patent.  See statute HERE.

False marking is the current hot topic in patent law since there is uncertainty over whether the false marking statute allows for a penalty based on each individual item that was falsely marked or whether the penalty applies to the occurrence (i.e. a single penalty for an entire manufacturing run).  Also, the statute allows anyone to file suit, so suing under the statute is like a new flavor of patent trolling.

I know where I’m going for my next cleaning.

As I noticed, the attorney who filed the case wasn’t admitted to the Florida Bar, and the defendants’ attorneys pointed that out in the first motion to dismiss.  Yes, I said their first motion to dismiss. Three months in, and we already have two motions to dismiss with two orders!  (Local counsel has now appeared, and the original attorney has been admitted temporarily for this case.)

While I called the complaint a “doozy” in my original post, the judge gave it the kiss of death by calling it a shotgun pleading (fitting for an outlaw?).  This is a style of drafting a complaint where each claim incorporates all of the factual allegations preceding the claim.  Many complaints are drafted this way despite the fact that they are improper.  For example, if the second and third claims in a complaint both re-allege all of the preceding factual allegations, then the defendant technically doesn’t know which allegations belong to a specific claim – and that violates the federal rules of procedure.

The defendants’ attorneys picked up on this (and other issues in the original complaint) and filed a short and sweet motion to dismiss.  The judge agreed (on the same day!) and gave the plaintiff permission to file an amended complaint.

Guess what happened?  The plaintiff must have had a double-barreled shotgun because they did it again!  Not only that, but they also added on this nugget – which makes a First Amendment attorney such as myself cringe.  In the prayer for relief, the plaintiff has asked that the court to:

Order all Defendants to abstain from in any way discussing, commenting upon, or mentioning Plaintiffs in this action in public, in performances, or in any other public venue;

What!?  So, plaintiff wants, say, Henry Paul, to be legally prohibited from mentioning not only the case, but the mere existence of Outlawlessness Productions in public?

Plaintiff, meet the Streisand Effect.

Defendants’ First Motion to Dismiss (3/23/2010)

Order on First Motion to Dismiss (3/23/2010)

Amended Complaint (4/7/2010)

Defendants’ Second Motion to Dismiss (4/22/2010)

Order on Second Motion to Dismiss (4/23/2010)

Invicta was served with the Complaint on April 8th.  An answer or other motion tolling the time to answer should be filed in the next couple of days.

Apparently Invicta’s registered agent (the person listed with the Florida Department of State as responsible for accepting a summons) is deceased, so Invicta’s “Financial Controller” accepted service of the complaint.

Invicta’s corporate information via the Department of State showing David Feldman as registered agent.

Copy of the proof of service.

Video capture from 4/11/2010

Me – I’ve grown tired of the typical home shopping TV doublespeak.  “One time only” prices that magically get lower the next month; “limited editions” that are offered again and again with slight deviations in design; a “Reserve” line that was supposed to be, uh, reserved, for extra-premium timepieces that now cost less than the non-Reserve line.  I could go on.  And on.

The Invicta shows on ShopNBC do make for an entertaining evening at home.  Whether it’s the host’s thinly-veiled, juvenile jokes about “brown eye” dials and “slapping a beaver” on your wrist, or the feigned astonishment and gasps that precede “that price must be a mistake,” you can’t beat live home-shopping TV.

So I might be biased as I write about this new lawsuit against Invicta.  I take it personally.  Invicta’s CEO, Eyal Lalo, seems to be a pretty ethical guy.  Back when the host of ShopNBC’s watch shows was known as “OompaLupah” on a watch forum that I frequented, Eyal personally responded to customer questions and even sent a bunch of us a fancy Invicta watch box.  (I’ll sell mine to anyone interested if the price is right…)

Eyal also constantly remarks about how he is the named inventor on multiple patents covering the designs of Invicta watches.  He recognizes the importance of patents, and he should.  The Invicta Lupah design is widely copied by other manufacturers.

So, that’s why reading this Complaint is so tough.  Despite my love/hate relationship with Invicta and its marketing channels, I tend to support the brand overall.

A few months ago they started selling a new watch design with several interchangeable straps and bracelets.  The whole thing was packaged in a “submarine case.”  If my memory is correct, they also use a little animation that looked like a CAD drawing of the case opening up to reveal the watch and straps.  They also offer the case by itself, and I believe that several other Invicta models are shipped out in this style case now.

Imagine my surprise, then, when I saw:

Plasticase, Inc. v. Invicta Watch Company of America

(Complaint HERE, Exhibits HERE)

Damn.  The case was filed April 6, 2010 in the United States District Court for the Southern District of Florida.

The allegations are straightforward.  Eyal calls company to see about having some plastic storage cases customized for use with watches.  Company sends sample cases to Eyal.  Eyal never responds with an order or “no thanks.”  Company sees its patented case design on national TV.  Company calls Eyal to see if he intends to order any cases based on the samples.  Eyal says he is “passing on the opportunity.”  Oops.

If true, the allegations paint a very disappointing picture of this watch company and its charismatic CEO.  Plasticase is basically saying that Eyal ordered some sample cases then, rather than order from the company that designed the cases, he shipped them off to China to have them made cheaper.

As you already know from reading this blog, fairly recent changes have occurred in the infringement analysis for design patents.  In a “knockoff” case like this, the patentee-friendly Egyptian Goddess standard might not even matter.  If the case doesn’t settle soon, Plasticase should get everything it needs for a slam dunk via discovery requests.  Invoices from China and Eyal’s own conduct in ordering the samples is 80% of this case.  Add in plaintiff’s design patents and proper marking of the cases, and this should be over.

Of course, Invicta hasn’t answered yet, and the Complaint is obviously slanted to one side.  Invicta is innocent until proven guilty.  This is definitely one case that I’ll be following with interest.

I’ll even make this deal – if the case goes in Plasticase’s favor on summary judgment or via a jury verdict, via multiple choice, I’ll let my readers choose the fate of one of my Invicta watches, and I’ll post a video of the destruction.

The case involved design patent infringement and was one of the first cases in Florida to handle the Federal Circuit’s Egyptian Goddess opinion.

This is text from my original post.  I thought the Southern District misapplied the Contessa precedent:

In addition to that technicality(?), I think the court missed the overall point of Contessa.  The court used Contessa to justify excluding the insoles of the sandals from the comparison of the designs.  The reasoning was that “when a shoe is in use, it’s[sic] insole is, obviously, hidden by the user’s foot…[a]s such, this Court will not consider any aspects of the insoles of the shoes, but will consider the sole of the shoes as those are visible during use.”  Uh, except when someone happens to be WALKING ON THE SOLES!

The Court also stated that “the law requires a court to consider only those portions of the product that are visible during normal use, regardless of whether those portions are visible during the point of sale.”  While this might be true, in the case of Crocs-like shoes, I believe that the sole and insole are both visible during normal use – INCLUDING at the point of sale.  All of the Crocs and Crocs-like shoes I’ve seen for sale are hanging on a rack without boxes, thus, all sides and features are visible.  Because a feature that is more visible at the point of sale might be less visible later does not mean that the feature should be excluded.  Contessa said that the analysis should include “all ornamental features visible at any time during the normal use of the product.”  (emphasis added).  To me, this would include when the owner has the sandals sitting next to him or her on the beach, in which case the insole would be visible.

So, imagine my delight when I found out that on December 17, 2009, the United States Court of Appeals for the Federal Circuit agreed! (Fed. Cir. opinion HERE.)  Note that appeals of patent cases go directly to the Federal Circuit – that’s why we’re not discussing the 11th Circuit here.  (I also have to apologize for letting this slip through the cracks for so long.  I honestly missed the appeal.  I found out about it at the Florida Bar 1st Annual IP Symposium last week in Tampa.)

From the Federal Circuit’s opinion:

The district court here misconstrued Contessa as requiring that the normal use of a clog be limited to the time when it is worn. Contessa did not exclude the point of sale from the normal use of a product. Rather, it emphasized that normal use should not be limited to only one phase or portion of the normal use lifetime of an accused product. Id. at 1380 (citing KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed. Cir. 1993)). The sale of a clog occurs after it has been manufactured and before it is ultimately destroyed. Thus, the point of sale for a clog clearly occurs during its normal use lifetime. At the point of sale, the insole is visible to potential purchasers when the clog is displayed on a shelf or rack and when the clog is picked up for examination. Similarly, removing a clog from a wearer’s foot also occurs after manufacture and before destruction of the clog, so it also falls squarely within the clog’s normal use lifetime. The wearer may remove the clog temporarily to stretch out his or her toes, leave the clogs on the beach to go for a swim, or engage in countless other activities that would leave the insole exposed.

Ok, who thinks the appellate court reads Florida IP Trends?  Me neither, but it’s still great to see the same analysis show up in the appellate opinion!

This:

Image from hardlycool.com

And this:

Jon Gosselin

And this:

Fashionistas?

You see, Ed Hardy clothing has become the “uniform of the douche.”  Fair or not, that’s what has happened.  I won’t get into the psychology of it all, but you can find plenty of analysis online.  A simple Google search for “ed hardy douche” will point you in the right direction.  Here, I’ve done it for you.

I’m sure Mr. Hardy had no idea that a simple licensing agreement designed to bring in some extra cash would turn into this, but if you want some $140 jeans with “Ed Hardy” on the ass, proceed to the checkout.  Thank you, Christian Audigier (who may be the ultimate douche in all of this).

Given my respect for Hardy and my keen awareness of what has happened to the brand, I wasn’t really surprised when I saw this new complaint filed in the United States District Court for the Middle District of Florida.

• The case is Hardy Way, LLC v. A.J. Nails, Inc. and Johnny P. Tran.  Complaint HERE.

I have to admit that when I saw “A.J. Nails” as a defendant, I figured the case might involve some awesome airbrushed fingernail allegations.  I was wrong.  This is actually a fairly typical complaint concerning counterfeit goods – specifically, bogus Ed Hardy clothing.

Trying Too Hard

The complaint spends half of its 12 pages praising Hardy’s talent, and Hardy Way’s marketing skill.  It’s actually a very nice wiki-esque explanation of how the licensing deal came about.  We are even treated to a list of goods that bear the Ed Hardy trademarks, including, but not limited to, shoes, hats, jewelry, beverages, home goods, skateboards, snowboards, mobile digital content, fragrances, tanning products (ed: biting tongue), toys, and, drumroll please…. limited edition Smart Cars, which, tellingly, come autographed by Christian Audigier, not Ed Hardy.

I predict that Don Ed Hardy clothing will be in the clearance bins soon – these ultra-trendy brands all share the same fate.  Von Dutch, FUBU, Ed Hardy – the rich and famous wear them for awhile and then the (orchestrated) coolness wanes while the next $140 pair of jeans is being stitched up overseas.

Anyway, until that time, enjoy Don Ed Hardy’s enforcement of its brand via this new lawsuit.

(Note:  no matter how “douchetastic” a brand may have become, the owner of the mark still has a duty to police its mark and prevent infringement and dilution of that mark.  In that regard, if the allegations in this complaint are true, then Hardy Way deserves the remedies it seeks.)

The Orlando Sentinel posted this comparison of the logos:

Logo comparison via the Orlando Sentinel

Oops.  More coverage HERE.

The University of South Carolina.  My grandfather ran track as a student and went on to coach the swimming team for years.  My mom went there.  I met my wife there, and we were even married at the Alumni House on campus.  My blood is garnet and black (Pantone’s® PMS 202 for the garnet – if you’re picky…)

Classy garnet & black USC hat with McDonald's-themed Southern Cal hat

The Court of Appeals for the Federal Circuit has just affirmed a Trademark Trial and Appeal Board decision in favor of the University of Southern California based on a trademark opposition proceeding they initiated against USC.  (PDF of the decision HERE.)  The original TTAB decision was in 2008, and this new decision is merely the result of South Carolina’s appeal of that decision.  MP3 of the oral argument available HERE.  Basically, USC wanted to register the interlocking stylized SC logo as shown in the top hat in the picture to the left.  Southern California has a trademark registration for SC in “standard character form” for similar goods.  This essentially allows them to prevent any other company or university from using “SC” in any font for goods that are similar to those in Southern California’s registration.

In the wake of the appellate decision, the sports blogs and media outlets have been running with the story.  See HERE, HERE, HERE, HERE.  (John Welch of the excellent TTABlog® also commented HERE.)

Sadly, one of the most talked-about things in this whole case is the University of Southern California’s attorney’s attempt to be funny in remarking on the ruling.  The Los Angeles Times is reporting that attorney Scott Edelman suggested that the interlocking SC logo was a better fit for the Trojan’s warrior image as opposed to USC’s “goofy little chicken” and that it was “totally understandable” that USC would want to move way from the Gamecock logo (which USC isn’t doing BTW).  Say what?   If we must use “chicken” at all, we prefer the phrase “ass-kickin’ chicken” to “goofy little chicken,”  but the comment was just rude and unnecessary.  I’m sure all the Tommy Trojans out there will be high-fiving Edelman for his disrespect.

On one hand I think it’s great that people are talking about trademarks and the opposition process, but on the other hand, it’s painful to see the misinformation about that process.  I have seen several articles that suggest USC will not be able to use any “SC” logos anymore.  This is not true.

I’m directing you to a post that my law school Trademarks professor happened to write just the other day concerning the difference between opposing a trademark application and suing someone for trademark infringement.  There is a big difference, and the fact that USC might not be able to register the interlocking SC logo does not necessarily mean that they can’t still use it.  To prevent USC from using it, Southern Cal. would have to initiate and win an infringement lawsuit – a lawsuit which would be decided based on whether or not the consuming public is likely to be confused by the logos.  So, onward to Professor Randazza’s post.

NOTE: According to the oral argument, USC and S.Cal. have an agreement providing for both schools to have USC registrations.  A registration is very valuable when negotiating licenses because it shows the potential licensee that the trademark has been vetted by the USPTO – which, in theory, means the chance of a lawsuit over the trademark is diminished.

Ironically, if you would like more information about the University of South Carolina, please visit www.SC.edu.