Featured Case: Rudolph and Me, Inc. v. Timmy Woods Beverly Hills, Ltd. et al

It’s time for another Featured Case on Florida IP Trends.  This case was filed in the Middle District on April 28, 2009.  This is admittedly a little early to be a featured case (no Answer has been filed), but the facts are fun, and I spotted an interesting side issue that I would like to explore.

Rudolph and Me, Inc. v. Timmy Woods Beverly Hills, Ltd. et al, Case No.8:2009-cv-00796 (M.D. FL)

Complaint | Exhibit A | Exhibit B

The main issue in Rudolph and Me is copyright infringement.  I have recruited my colleague, Amber Neilson, to write an article about the copyright issues, and her post is forthcoming.

The basic facts are that the Plaintiff, Rudolph and Me, Inc., designs and sells Christmas ornaments.  While attending a trade show earlier this year they spotted Defendant Timmy Woods selling a purse that looks remarkably similar to one of Plaintiff’s ornaments.

The copyright analysis will be posted shortly, but while I was exploring the Timmy Woods website, I noticed that Ms. Woods also designed an “Obama Bag” using the ubiquitous “Obama ‘O’ Logo.”  For more on that, check out this post.

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:

INTERNATIONAL SEAWAY TRADING CORPORATION, Plaintiff,

v.

WALGREENS CORPORATION and TOUCHSPORT FOOTWEAR USA, INC., Defendants.

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.

Featured Case – Great Neck Saw Manufacturers

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