Something smells shrimpy in the Southern District

If you remember the very first post on Florida IP Trends, you’ll know that one of the things I’m interested in tracking is how Florida courts will be handling the Egyptian Goddess decision.

It looks like we have our first contender:




This is a recent Southern District case that granted a defendant’s motion for summary judgment concerning the validity of several design patents.  A more thorough analysis of the case is forthcoming, but the basic facts are that the Defendant, Walgreens Corporation, was sued for design patent infringement by the owner of several design patents relating to sandals similar to those squishy ones that Chef Mario Batali wears.  Love ’em or hate ’em, we’re talking about Crocs.  And it’s actually Crocs that bit the Plaintiff as prior art which invalidated its patents, thus Defendant’s Crocs knockoffs couldn’t infringe Plaintiff’s Crocs knockoffs.

But – the reason for this post is different.  In its analysis of which features of the designs should be compared, the court used the widely-cited case of Contessa Food Products v. Conagra, IncContessa is often cited for the proposition that when comparing a patented design to an accused design for purposes of similarity, only those features that are visible during normal use should be considered.  Features that are concealed during use should not be considered.

Now, as the name of the case hints, “Contessa Foods” had something to do with food.  In fact, the design at issue was a shrimp platter.  We’ve all seen them at the grocery store – the round plastic  container with a domed lid with scores of shrimp lined up and waiting for some cocktail sauce.

Contessa is a well-known case – cited 101 times in other cases, and 140 times in law journals, motions, and other papers.  So it came as a pretty big surprise when the Southern District wrote:

Contessa Food involved a patent for cabinet doors. That court held that the interior hinge of the door was visible during the use of the product because, even though not always visible, the interior door hinges were visible when the cabinet doors were open.
Int’l Seaway Trading Corp. v. Walgreens Corp., 2009 U.S. Dist. LEXIS 6240 (S.D. Fla. Jan. 22, 2009)

Um, no it didn’t.  Contessa did cite to a different case that dealt with cabinet door hinges (Keystone), but Contessa Food most certainly did not “involve[] a patent for cabinet doors.”  I might just be being picky over a little mistake, but that seems like a pretty big “oops” to me.

sandal1In 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.

Like I said earlier, a more thorough discussion of how this case used Egyptian Goddess for anticipation purposes is forthcoming, but I had to post about the Contessa issues early because they were bothering me.

By the way – Plaintiff has appealed, so we should have some more fun with this one later.

4 thoughts on “Something smells shrimpy in the Southern District

  1. hbh March 23, 2009 / 12:14 am

    crocs are squishy. squishy things deserve greater IP protection. Its a rule. Pierre Leval says so.

  2. jrothman April 24, 2009 / 10:39 am

    I’m not familiar with the Leval, J. decision on squishiness. Could we get a cite?

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