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Wednesday, March 26, 2014, 4:27 PM

Michael Sullivan to Speak on Regulatory & Compliance Issues for Furniture Industry

HIGH POINT, N.C.—Womble Carlyle Mass Torts attorney Michael Sullivan will discuss “Compliance to the Letter of the Law” at the Furniture Today 2014 Regulatory & Compliance Summit. The event takes place April 23rd on the campus of High Point University.
In his presentation, Sullivan will share steps that home furnishings companies should take now to demonstrate their commitment to safe products and a safe workplace. He also will discuss regulations, industry standards and warnings, with an emphasis on identifying what is truly important.
Clients turn to Michael Sullivan for senior-level strategic guidance in mass tort product liability litigation and other large-scale commercial litigation. Sullivan brings nearly three decades of experience in “bet-the-company” cases. He serves in the role of “outside General Counsel” or Coordinating Counsel, providing big-picture advice to craft successful litigation strategies, increase efficiencies and contain costs. Sullivan collaborates with clients on a wide range of high-end business problems, including mass tort litigation.

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Wednesday, October 2, 2013, 1:35 PM

Federal Circuit Clarifies Test for Obviousness of Design Patents

Who gets to decide when a design patent is obvious? There was some confusion on that topic until the Federal Circuit handed down its opinion in High Point Designs LLV v. Buyers Direct, Inc., No. 2012-1455 (Fed. Cir. Sept. 11, 2013) (a copy of the opinion can be found here).

In the opinion, the panel of Judges O'Malley, Schall, and Wallach confirmed that the obviousness of a design patent is to be determined through the eyes of an "ordinary designer," not an "ordinary observer." What's the difference? A big one actually. The ordinary design test requires the court to engage in a more sophisticated analysis that can rely on expert testimony (but does not have to). Typically when the obviousness analysis is elevated to a more sophisticated level, the "gap" between the prior art and the claimed design is easier to overcome because of the skill set and knowledge attributed to the hypothetical designer. This could make it easier to invalidate design patents on obviousness grounds. However, it most likely means courts will be less likely to rule design patents invalid on summary judgment as competing facts (and perhaps competing experts) will create fact issues for a jury to determine. In any event, this decision expressly cleans up the confusion created by International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1240 (Fed. Cir. 1990) that stated the obviousness determination was to be made by the "ordinary observer."

As for the facts in the High Point case, the Federal Circuit reversed summary judgment of obviousness of the slipper design below, Fig. 1 from the design patent in suit:

in view of the prior art Woolrich product:

The case was sent back to the district court for reconsideration in view of the clarified standard.

A final note: the court chided the district court for failing to translate the design of the patent into a verbal description. This runs counter to Federal Circuit precedent indicating that claim construction is not necessary with design patents. It will be interesting to see how this language is interpreted by the district courts. This panel clearly wanted more analysis from this district court judge. Some district courts may, however, take this recommendation too far and engage in unnecessary claim construction of a design patent.

Tuesday, September 17, 2013, 10:38 PM

Copyright + Trade Dress = Solid Combination For Furniture Manufacturers

Furniture manufacturers have a varied arsenal when it comes to protecting their intellectual property. A single item of furniture can be protected by a utility patent (assuming there is functionality), design patent, copyright, and trade dress. If the item or its collection has a name, trademark rights may be available too. Even though there are many tools, the copyright and trade dress combination is a dependable pairing that provides a formidable offense.

Amini Innovation Corporation ("AICO") recently deployed this one-two punch against McFerran Home Furnishings. See Civil Action No. 2:13-cv-6496 (C.D. Cal. Sept. 5, 2013). In its complaint, AICO alleges copyright and trade dress infringement for two items of furniture, including the heavily advertised Villa Valencia Bed (AICO's shown above McFerran's allegedly infringing bed):

The copyright-plus-trade dress strategy allows a furniture manufacturer to assert a statutory claim (copyright) and essentially a common law claim (trade dress). Manufacturers can apply for and obtain a copyright certificate at any time, unlike with patents, which can time-barred by public disclosures and sales. One can sell a product for a while and then get a copyright registration, including after the discovery of an infringer. Be careful, however, because statutory damages are only available to those that obtain a registration before the infringement starts. The trade dress claim allows the manufacturer put on evidence of its wide-spread advertising and marketing, all of which can greatly influence a judge or jury.

Used together, the copyright-plus-trade dress combination is an effective set of litigation tools for the furniture manufacturer with innovative designs.

Wednesday, June 5, 2013, 9:31 AM

Stop Infringement At The Border

In today's home furnishings marketplace, the importation of goods is a reality that every manufacturer deals with whether they import or not. The importers are often blamed for bringing infringing goods into this country (a reputation that is not altogether undeserved). For manufacturers or importers, it is important to remember that proceedings before the International Trade Commission ("ITC") are an important tool to stopping infringing items from ever entering this country.

ITC proceedings are instigated in Washington, D.C. by the holder of intellectual property rights. The ITC has jurisdiction under Section 337 of the Tariff Act of 1930 to investigate claims that imported goods are infringing U.S. patents, trademarks, or copyrights or otherwise constitutes unfair competition. ITC proceedings can result in an exclusion order that prevents infringing goods from entering the country. ITC proceedings are often faster than traditional litigation in the federal district courts and require some additional work up front to ensure the petitioner's case moves smoothly.

Home furnishings lend themselves to protection under several different forms of intellectual property, including design patents, trade dress, and copyright. Recently, Twin Star International, Inc. received a limited exclusion order banning the importation of certain electric fireplaces that violate Twin Star's copyright and trade secrets. The infringing products violated the copyright on an electric fireplace insert and the contents of their manuals. The action successfully stopped two Chinese manufacturers from importing infringing goods into the U.S.

There are many considerations that go into whether to institute an ITC proceeding or traditional district court action. The plaintiff needs to consider the source of the infringing product, its distribution within the U.S., the urgency of obtaining injunctive relief, whether U.S. district courts would have jurisdiction over foreign entities, and costs. However, it's a powerful tool that right holders should consider when faced with the importation of infringing goods.

Thursday, March 7, 2013, 10:09 PM

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.

Wednesday, March 6, 2013, 10:01 PM

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.

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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