Floridians Perking Up As Cold Spell Retreats

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.

Nipple Shields

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.

Figure from Croft's patent

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!

Croft's NIPPLE HUGGERS

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.

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.

Vessel Hull Design Protection Act – What the hull?

Florida is the Sunshine State, and along with all that sunshine comes an inordinate amount of love for boats.  We love boats so much that our lawmakers even tried to create a law protecting the manufacturers of boats from unauthorized copying of their boat hull designs.  The U.S. Supreme Court didn’t take kindly to that, and a little thing called the Supremacy Clause of the U.S. Constitution settled the matter.  That case was the 1988 case of Bonito Boats v. Thunder Craft Boats, and Justice O’Connor, writing for a unanimous Court, stated that Florida’s law was in essence a competing intellectual property protection scheme to the U.S. Patent and Copyright laws.  As such, it failed.

But, the case did open a can of sunshine on the issue, and Congress responded to the concerns of boat manufacturers by including the Vessel Hull Design Protection Act (“VHDPA”) within the Digital Millennium Copyright Act of 1998.  As with Florida’s invalidated statute, the VHDPA intended to curb the practice of “splashing” boat hulls.  Splashing occurs when a manufacturer takes a finished boat hull and dips it into some mold-making compound to produce a mold of the hull.  Imagine filling a pan with modeling compound (such as Play-Doh® brand), sticking your hand into the compound to create an impression, and then filling the void with resin to create a duplicate of your hand – you have just “splashed” your hand.

Although the VHDPA protects designs, it is administered by the U.S. Copyright Office and codified at 17 U.S.C. § 1301, et. al.  Boat manufacturers now have a trifecta of protection for the design of hulls:  1) design patent protection under the Patent Act, 2) trade dress protection under the Lanham Act, and 3) “original design” protection under the Copyright Act.  (While this article is not intended to weigh the pros and cons of the different protection mechanisms, it is interesting to note the hybrid nature of VHDPA protection.)

Is My Design Eligible?

In order for your boat design to qualify for VHDPA registration, you must seek registration within 2 years of the date the design was first made public.  A design is made public “when an existing useful article embodying the design is anywhere publicly exhibited, publicly distributed, or offered for sale or sold to the public by the owner of the design or with the owner’s consent.”  17 U.S.C.  § 1310.

The design must also be original, not a staple or commonplace design, and ornamental (i.e. not utilitarian).  The issuance of a design patent will also cancel and/or prevent registration under the VHDPA.

How Does it Work?

Assuming your design is eligible, the VHDPA gives protection to “the design of a vessel hull, deck, or combination of a hull and deck, including a plug or mold…”  “Hull” is defined as “the exterior frame or body of a vessel, exclusive of the deck, superstructure, masts, sails, yards, rigging, hardware, fixtures, and other attachments,” and a “deck” is defined as “the horizontal surface of a vessel that covers the hull, including exterior cabin and cockpit surfaces…”

In order to receive protection, you must fill out Form D-VH, attach “deposit material” (pictures of your boat), and pay the fee (currently $200).

Once you submit the required material, the Copyright Office will examine the application and determine if the design meets the statutory standards for registration.  If so, the design will be registered and published.  The publication date will serve as the date of registration.

You are also required to mark the hull and/or deck in some manner to show that it has been registered.  The Copyright Office requires the words “Protected Design”, the abbreviation “Prot’d Des.”, a “circle D” symbol similar to the ® for a registered trademark, or the symbol “*D*”.  You must also include the year protection commenced and the name of the owner or the generally accepted alternative designation of the owner.  The “generally accepted alternative designation of the owner” is interesting in that it requires the owner to record such a designation with the Copyright Office.  This is all a fancy way to describe your logo.  If your boat company operates under a logo, you can record the logo with the Copyright Office and use that “alternative designation” when marking the boat with the “Protected Design” designation.  So, “Kevin Wimberly, *D* 2009” would satisfy the marking requirement as would “[Your logo as recorded at the C0pyright Office’, *D* 2009.”

As of today, only 11 logos/designations have been recorded with the Copyright Office.  See them HERE.

What Benefit Does It Give Me?

A registered vessel hull or deck design is protected for 10 years from the earlier of the date of registration or the date the design is first made public.  17 U.S.C. § 1304.  The protection gives the registrant the exclusive right to make, have made, import, sell, and/or distribute any useful article embodying the registered design.

If someone does infringe the design, assuming the design was properly marked upon receiving a registration, the registrant may recover actual damages, the infringer’s profits, attorney’s fees, and an injunction requiring the infringer to cease infringing and to destroy any molds and devices used to create infringing hulls.  Note that if the registrant did NOT mark the vessel in accordance with 17 U.S.C. § 1306, the recovery of damages will only accrue from the time the registrant put the alleged infringer on notice, such as via a cease and desist letter which asserts the registration.

Why Are You Writing About It in 2009?

Good question.  Late last year (October 16, 2008 to be precise), the Vessel Hull Design Protection Amendments of 2008 were approved and signed into law by President Bush.  These amendments closed a loophole by which some manufacturers took advantage of loose definitions in the original VHDPA.  Prior to the Amendments, the definition of “hull” included the deck, which meant that a manufacturer could splash the hull of a competitor’s boat and simply change the features of the deck and not infringe under the VHDPA.  As shown above, the VHDPA now differentiates between the hull and the deck of a vessel, and both are protected individually or in combination.

Is the VHDPA For Me?

It could be.  That depends on your specific circumstances, and you should consult an attorney to help you make that determination.  The general concensus is that registrations under the Vessel Hull Design Protection Act are fewer than anticipated.  This may be because of the aforementioned loophole.  Given that the loophole was only recently closed, it may take some time for manufacturers to begin registering their designs again.  The most recent design on the Copyright Office’s website is from October 8, 2008.  You can view the entire library of registered vessel designs HERE.

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