I’ve been waiting for the right time to present this case, and I think the recent freezing temperatures in Florida provide the perfect backdrop for this trademark, copyright, and patent infringement lawsuit.

Superbowl XXXVII introduced the general public to the “nipple shield.”  Janet Jackson’s “wardrobe malfunction” created a huge controversy based on nine-sixteenths of a second’s worth of partially obscured nipple.

Despite this apparent trashing of our culture, the public was intrigued.  In fact, as this Google Trends graph shows, “nipple shield” searches spiked in the days following the February 1, 2004 game.

However, the nipple shield was old news to one Claudia Croft of St. Petersburg, Florida (and her company, Sheer Delight).  In June of 2003, Ms. Croft applied for a U.S. trademark registration for NIPPLE HUGGERS as applied to “jewelry – namely, wire jewelry for adorning the breast nipples of a wearer.”  She claimed a first use in commerce date of 8/21/2002.

Surprisingly, the trademark application sailed through the USPTO, and Croft simply had to disclaim “nipple.”  I would not have been surprised to see a rejection based on mere descriptiveness, but I do see how the mark is suggestive. (A trademark is merely descriptive of the goods if it “conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.” See In re Gyulay, 820 F.2d 1216 (Fed. Cir. 1987)).  While the jewelry does “hug” the wearer’s nipple, I suppose it takes some imagination to reach a conclusion as to the nature of the goods (which is one way we IP geeks try to argue around 2(e) refusals).  Regardless, there is a valid U.S. trademark registration for NIPPLE HUGGERS.

But that’s not all!  Ms. Croft is apparently a wise businesswoman, and not only is she armed with a federal trademark registration, but she also owns the patent rights for her nipple hugging jewelry Nipple Huggers®.  Even better, the patent isn’t a simple design patent – it’s an actual utility patent!  This means that Croft isn’t claiming the mere design or shape of the jewelry, rather, she is claiming specific functional features.  From the patent (I believe “pedal” should be “petal”):

1. A nipple hugger jewelry system for adorning a breast of a user in a non-piercing manner comprising, in combination:

a wire fabricated of a silver based alloy having a diameter of about 0.030 inches plus or minus 10 percent whereby the wire may be readily bent by a user applying a deforming force by hand and whereby the bent wire will retain its shape after the removal of the deforming force;

a plurality of primary pedal sections, preferably five pedal sections, formed from the wire with a nipple reception circle located between the pedal sections and with the circle having a center, each pedal section extending radially outwardly from the center of the circle and formed with an essentially semi-circular exterior with a radius of curvature of about 0.250 inches, each pedal section formed with an essentially semi-circular interior with a radius of curvature of about 0.094 inches, the exterior of each pedal being located about 1.5 inches from the center of the circle and the interior of each pedal section being located about 0.250 inch from the center of the circle;

a pair of end sections formed from the wire, each end section being in a spiral shape; and

two essentially straight stem sections, each stem section extending radially from the circle with an interior point about 0.250 inches from the center of the circle formed as extensions of adjacent pedal sections and with an exterior point about 0.500 inch from the center of the circle formed as extensions of the end sections, the pedal sections and the end sections and the stem sections lying oriented in a common plane prior to use but movable to an orientation with the end sections overlapped into a locking relationship when the circle encompasses the nipple of a user with the interiors of the pedal sections in holding contact at five spaced points around the nipple of the user.

How about them apples!

Woe unto defendants Be Wild, Inc. and Brian Cohen who are allegedly selling knockoff Nipple Hugger jewelry.  On May 8, 2009, Croft filed a complaint in the Tampa Division of the United States District Court for the Middle District of Florida.

Complaint HERE.  Exhibits HERE.

In addition to patent and trademark infringement, the complaint alleges copyright infringement (based on Croft’s copyright registration for the packaging and instructions, as well as trade dress infringement based on the packaging (this claim seems a little iffy to me).

The defendants are represented by counsel and have answered the complaint with standard denials and defenses.  The case appears to be in the discovery phase, and I haven’t seen any new substantive motions.  If there’s activity, I’ll be sure to report back.

Until then, let’s hope the ice thaws in Florida, because it has been as cold as a witch’s tit in a brass bra.  (Couldn’t resist.)

The above case seems to be a “knockoff/counterfeit” type of case – if the Defendant really did copy Plaintiff’s jewelry, packaging, instruction manual, etc., then it’s probably an open and shut case.

Ms. Croft has more recently pursued a simple trademark infringement claim against a new defendant.  This defendant, PHS International, doesn’t seem to be creating jewelry that infringes Croft’s patent or copyrights.  Instead, there is only one claim in the complaint, and that’s for trademark infringement.

Complaint and Exhibits HERE.

This case is a little bit more interesting because it looks to me as if the Defendant is using the phrase “nipple hugger” in a descriptive manner to describe its nipple-hugging jewelry and not as a trademark.  Based on that, there are several ways this case could go – including attempting to cancel the NIPPLE HUGGERS trademark based on mere descriptiveness and/or asserting a fair use defense.  I look forward to seeing the pleadings and motions as they are filed.

One of the main features of the Florida IP Trends blog is a focused look at Florida intellectual property cases. I plan to provide a weekly list of IP cases filed in the Northern, Middle, and Southern District Courts in Florida. From those cases, I’ll pick one or two per month as the Featured Case.

I’ll also provide documents and commentary related to these cases as a service to fellow attorneys and the public. The Featured Cases will contain interesting legal claims, procedural issues, or other “standout” topics that will be of interest to those tracking IP cases in Florida.

With that, here is Florida IP Trend’s first Featured Case:

Great Neck Saw Manufacturers, Inc. v. Iron Bridge Tools, Inc., et. al., Case No. 1:08-cv-23266

[Download a copy of the Complaint HERE]

Plaintiff Great Neck Saw Manufacturers (“Great Neck”) is a New York corporation and the assignee of U.S. Patent Nos. 7,040,022 (the ‘022 patent), D495,039 (the ‘039 patent), D501,782 (the ‘782 patent), D510,250 (the ‘250 patent), D526,877 (the ‘877 patent), D528,895 (the ‘895 patent), and D543,822 (the ‘822 patent) – all which are allegedly infringed by the Defendants’ knives. Great Neck also alleged trade dress infringement, false designation of origin, unfair competition, unprivileged imitation, and passing off.

Defendants Iron Bridge and Black Pearl are Florida corporations while Defendant Everpower is a Chinese corporation. Defendants allegedly infringed Great Neck’s utility and design patents for folding utility knives, including knives sold under the HUSKY brand name.

I’m tracking this case in part due to the design patent claims. There are very few reported design patent infringement cases post-Egyptian Goddess, which set out the new “familiar ordinary observer” standard. At least one of the cases interpreting the new test seems to have used the “three-way test” (in which the prior art, accused design, and patented design are simply compared against one another) despite stating that its analysis was based on the familiar ordinary observer test. See Arc’Teryx Equip., Inc. v. Westcomb Outerwear, Inc., 2008 U.S. Dist. LEXIS 90228 (D. Utah Nov. 3, 2008).

Another interesting aspect to this case is the trade dress infringement claim. In order for trade dress to be protectable, the asserted features must not be functional, rather, they must be ornamental in nature. In reciting the trade dress in the utility knives, Great Neck stated in its Complaint:

Great Neck’s trade dress consists of the non-functional features and appearance of its utility knives comprising the shapes, size and appearance of the various parts of the utility knives.

At least one court in Florida has dismissed a trade dress claim for such an ambiguous description of a product’s trade dress. In Knights Armament v. Optical Sys. Tech., the Middle District chastised the Plaintiff with:

[Plaintiff] alleges that its trade dress is not functional and is distinctive, with respect to finish, shape, and exterior design, but does not explain why it is distinctive and nonfunctional, nor what actually comprises the trade dress or how the Knights Defendants infringe on it … These sparse facts and conclusory allegations constitute a mere recitation of the elements of the cause of action for trade dress infringement, which is insufficient to survive a motion to dismiss. Twombly, 127 S. Ct. at 1965. Thus, the Court holds that OSTI’s claim of trade dress infringement is dismissed without prejudice.
– Knights Armament Co. v. Optical Sys. Tech., 568 F. Supp. 2d 1369, 1376-1377 (M.D. Fla. 2008)

I’ll update this post as new developments occur, and I look forward to seeing how Florida courts begin to interpret the recent Egyptian Goddess decision.

Posted by: Kevin Wimberly