When Is A Couch, Just A ... Sofa

The New York Times recently ran article focusing on couch style and quality. The article, written by Steven Kurtz, may be found here. Kurtz does a superb job of explaining the of what's "under the hood" on a couch and what separates a $13,000 sofa from $599 couch. Included is a great graphic on sofa construction. While Kurtz doesn't expressly address legal issues, the article's discussion of the work and effort put into high-end sofas explains why high-end manufacturers protect their product. The protection may take the form of design patents as well as policing the marketplace for any comparative advertising that misleads the consumer.

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U.S. Opens Door to International Application for Industrial Designs

Guest post by Womble Carlyle attorney David Crowe.

The U.S. is now set to become a member of the Geneva Act of the Hague Agreement Concerning the International Registration of Industrial Designs.  The ‘Hague Agreement’ provides a system of international registration for industrial designs.  Once the U.S. becomes a party, U.S. inventors of designs will be able to file a single application with the World Intellectual Property Organization (WIPO) that will have the effect of a registration in the member states selected by the applicant. 

The goal of this single application system is to increase efficiency and reduce costs for the applicant.  Efficiency is increased by filing a single application; instead of the need to file individual applications in each country the inventor seeks protection.  At the very least, this should save on attorney fees related to these individual filings, but such foreign filings have proven rare with the U.S. furniture industry thus far.  Whether the inventor sees a reduction in costs related to filing fees will depend on the number of countries being designated.  Using the fee calculator (found here) on the WIPO website, a single design having 6 views and described in 150 words will cost over $3,000 in fees to protect in every member state.  Designating only the European Union brings the cost down to around $700.

It is important to remember that the Hague Agreement is primarily procedural.  Each designated country is tasked with providing an examination of the design.  “In fact, one of the main features of the Hague system lies in the possibility for the Office of each designated Contracting Party to refuse protection, in its territory, to an industrial design which does not fulfill the substantive conditions of protection provided for by its domestic legislation.” (See here).  Further, once registered, the industrial design is protected to the extent of the law in each individual country, producing a wide range of breadth of protection, enforceability and potential to recover damages.

The jury remains out on the benefits and drawbacks the Hague Agreement will have on the protection of designs for the U.S. furniture industry.  First, it remains to be seen how the USPTO will integrate the Hague Agreement into their operations.  With the USPTO requiring an issue fee of $990 for a large entity (not including the filing, search and examination fees), there appear to be potential cost saves with using the Hague Agreement and designating only a small number of countries, possibly only the U.S.  However, it would seem that the PTO will be trying to find a way to recoup any loss of fees resulting from the use of the Hague Agreement, possibly by requiring an application from a U.S. inventor to be filed via the PTO and including a processing fee of some kind.

Second, the present list of member countries to the agreement is relatively small, only 61 once the U.S. joins.  Notably, many of the exporter countries from which the furniture industry rely are have not signed onto the agreement.  Therefore the Hague Agreement does not provide a path to protection in countries of origin such as China or others in Southeast Asia (with the exception of Singapore).  This is important because these same countries are the most prevalent in the manufacture of knock-off goods.  Therefore unless industry members are looking to sell their goods in Europe or Africa, continuing to focus on Design Patents from the USPTO may remain the best opinion for furniture companies trying to protect their designs.

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So, Can You Make A Barcelona Chair Now?

We had a reader inquire recently about the status of the litigation involving Knoll and its claim to trade dress rights in the iconic Ludwig Mies van der Rohe Barcelona chair. Our past post on the litigation can be found here. Here's an image of Knoll's chair:

We checked the docket in the Knoll case and report that it settled in 2010 with a stipulated permanent injunction that prohibits the accused infringers from making, selling, or importing into the U.S. any products that are configured like or "substantially identical" to the products shown in Knoll's asserted trademark registrations. The image for the Barcelona chair trade dress registration is:

So, to answer the question: can you make the Barcelona chair? Probably not without risk of an enforcement action from Knoll. However, the sheer number of Barcelona chairs available today (just Google "Barcelona Chair") raises questions about the validity of Knoll's trade dress registration.

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Your Hotel Desk Chair May Be Patented

On February 13, 2013, Global Allies, LLC brought an infringement action against Charter Furniture Corp. for infringement of U.S. Design Patent No. D622,987. Case No. C-13-0651 (JCS) (N.D. Cal.). A figure from the '897 patent is shown below.

The '897 patent is a reminder that even seemingly utilitarian items, such as "task chairs," can potentially be subject to design patent protection. However, the utilitarian nature of any design might limit the scope of the design patent or, in a worse case scenario for the patentee, render the patent invalid. The innovative designer will work with patent counsel to determine what components can and should be patented. In the mean time, you may want to check if your hotel desk chair is patented!

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Textile Company Slams Furniture Manufacturer and Retailers with Copyright Infringement Suit

On February 7, 2013, textile company Swavelle/Mill Creek Fabrics (New York, NY), along with related entities Textile Fabric Associates, LLC and Swavelle Trading (Shanghai) Co., Ltd., sued furniture manufacturer Jackson Furniture Industries, Inc. (Cleveland, TN), three named retailers (Bob's Discount Furniture, Inc.; Corner Furniture Discount Center, Inc.; and Elizabeth Furniture & Mattress Corp.), and "John Doe Retail Stores Nos. 1-50" for copyright infringement, tortious interference with prospective economic advantage, and unfair competition under New York common law. Case No. 1:13-cv-911-VM.

In its complaint, Swavelle alleges that Jackson Furniture had regularly purchased textiles from Swavelle in the past to manufacturer its furniture. Notwithstanding that past relationship, Jackson Furniture allegedly manufactured furniture with fabric patterns that infringe at least five different copyright protected fabrics owned by Swavelle. Based on the complaint, Swavelle has registrations on three of the five fabric patterns. The complaint does not allege that Swavelle has pending applications for the other two fabric patterns or if an application on such works was ever filed and rejected. However, Swavelle's copyright infringement claims only allege infringement of the three registered works.

The case represents an aggressive enforcement action by a copyright holder against a manufacturer and retailers. Typically we see right-holders going after other "knock-off" manufacturers. Only in aggressive circumstances do we see retailers named as defendants.

Permalink: http://www.womblefurniturelaw.blogspot.com/2013/02/textile-company-slams-furniture.html

Federal Circuit Addresses Pleading Standard for Design Patents

In Hall v. Bed Bath & Beyond, Inc., et al., the United States Court of Appeals for the Federal Circuit ("CAFC") addressed the standard for pleading infringement of a design patent. Case No. 2011-1165, 2011-1235 (Jan. 25, 2013). In Hall, the district court dismissed plaintiff/patentee's infringement claim for failure to state a claim. The Federal Circuit reversed that decision and remanded.

Hall invented a large tote towel with bindings, zippered pockets, and a cloth loop. He provided samples of the product to Bed Bath & Beyond ("BB&B") marked as "patent pending." Hall contends that BB&B copied the towel design and manufactured and sold copies. Hall sued BB&B, one of its executives in his personal capacity, and a BB&B supplier for design patent infringement once his application issued as U.S. Design Patent No. D596,439. The defendants raised various defenses and counterclaims. The district court dismissed all of Hall's claims on defendants' motion under Rule 12(b)(6) for failure to state a claim.

The district court stated that Hall's patent infringement complaint did not contain "any allegations to show what aspects of the Tote Towel merit design patent protection, or how each Defendant has infringed the protected patent claim." The CAFC outlined five elements of a patent infringement pleading:

1. allege ownership of the patent
2. name each defendant
3. cite the patent that is allegedly infringed
4. state the means by which the defendant allegedly infringes
5. point to the section of the patent law invoked

The district court required more, however, including for Hall to answer the question "[w]hat is it about Plaintiff's towel that he claims is 'new, original and ornamental,' meriting the protection of a design patent?" The CAFC held that neither the Federal Rules of Civil Procedure, Twombly, or Iqbal require a design patent plaintiff to set forth such specific information in the complaint. The CAFC also noted that the district court erred as Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) only requires infringement of a design patent "as a whole," and not on any "points of novelty." The CAFC held the district court erred by requiring the complaint to identify "new, original, and ornamental" aspects of the design. However, the CAFC affirmed the dismissal of the claims against the executives in their personal capacity as the alleged acts taken the by executive occurred before the patent issued. The CAFC noted that the district court did not address the executive's personal liability for inducing infringement under 35 U.S.C. §271(b).

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Second Circuit Affirms Dismissal of Copyright Claim in Use of Images of "High-End" Furniture

In a summary order handed down December 23, 2012, the United States Court of Appeal for the Second Circuit affirmed the district court's dismissal of plaintiff-appellant Heptagon Creations Ltd's complaint for unfair competition and trade dress infringement, common law unfair competition, and copyright infringement for failing to state a claim. Heptagon Creations Ltd. v. Core Group Marketing LLC, Pleskow & Rael Corp., and Thomas Rael, No. 12-317-cv.

Heptagon, a designer and marketer of high-end custom home furnishings and provider of interior design services, sued defendants for copyright infringement of its ANDRE JOYAU brand furniture. Specifically, Heptagon sued defendants for using images of the ANDRE JOYAU furniture in a reality television show about marketing high-value condominiums in New York City after Heptagon refused to provide actual pieces of furniture for the show. The complaint explains how Heptagon provided images of its furniture to defendants but required an insurance policy before it would lend the furniture itself. Defendants refused to purchase the policy and Heptagon refused to lend the furniture. Defendants created a "virtual" presentation of a condominium with images of ANDRE JOYAU furniture throughout the property. The furniture pieces  involved included: Cocoon Chair, Cross Table, Form Table, Meshu Floor Lamp, Shimne Vase, Sylvan Floor Lamp, Yasu Floor Lamp, Z Stool, and Tate Chaise (several images of which are show below). The amended complaint, which was dismissed, includes a description of each piece, such as this for the Cross Table: "[t]he splintered, unfinished wood of the Cross Table represent non-functional artistic elements which are distinctive of the ANDRE JOYAU 'modern repurposed' style."

Heptagon submitted an application for copyright registration for the ANDRE JOYAU collection. The Copyright Office rejected the application on the basis of functionality, contending that the objects are utilitarian and contain no separable authorship. The amended complaint details the allegedly non-functional aspects of the furniture.

The district court dismissed the complaint based on Heptagon's failure to adequately allege that it owns a valid copyright in the furniture. Specifically, the district court and the Second Circuit found the amended complaint did not "distinguish clearly between physical and conceptual separability." The district court found the amended complaint lacked a clear delineation between physical and conceptual separability. The district court also dismissed the trade dress claims for failing to establish secondary meaning.

The Copyright Office's rejection of Heptagon's application clearly played a role in the district court and Second Circuit's opinion. Heptagon does not appear to have asserted infringement of the two-dimensional images but instead limited its claim to the three-dimensional aspects of the furniture.

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