Furniture Law Blog

Jack Hicks To Speak On Leahy-Smith America Invents Act (AIA)

noreply@blogger.com (The Womble Carlyle Team) — Fri, 25 May 2012 19:17:00 +0000

KANNAPOLIS, N.C.—Womble Carlyle attorney Jack Hicks will discuss the Leahy-Smith America Invents Act (AIA) at the Spring CLE of the Carolina Patent, Trademark, & Copyright Law Association. The discussion will take place on June 15th at the North Carolina Research Campus in Kannapolis, N.C.

Go Ahead -- Make My Chair!

noreply@blogger.com (Jake Wharton) — Fri, 13 Apr 2012 17:34:00 +0000

The Hollywood Reporter is reporting Clint Eastwood has sued furniture retailer Evofurniture and furniture website inmod for improperly using Mr. Eastwood's name to sell furniture. In a complaint filed in Los Angeles Superior Court, Mr. Eastwood claims that stores have referenced him and his movies in marketing materials, such as:

"When you're invited into a person's home, you get to see the good, the bad and the ugly. When visitors come to your home, the Clint 47'' Entertainment Center makes your family room alone look like you live in a perfect world of a million dollar baby"

and

"Whether your favorite movies are westerns from the 1970s or dramas from the 2000s, you need a comfortably stylish place to hang out and watch them. If you're planning on having friends over for Dirty Harry marathons, then you definitely need something hip and modern. What you need is the Clint 71'' Entertainment Center."

The bolded portions appear that way in the complaint. The use of Mr. Eastwood's name and reference to his movies, if true, is bold and rather blatant. The suit is a good reminder that right of publicity can be a powerful cause of action. Many states have statutes that provide for injunctive relief and that relief can often be obtained without having to show damages, only unauthorized use of a name. That type relief can quickly shut down a product line or marketing campaign. Before any marketing campaign and product names are finalized, it is always a good idea to review the use of another's name, especially Mr. Eastwood's name.

The Hollywood Reporter story may be found here.

You say "Visco" and I say "Iso" - What's in a Name?

noreply@blogger.com (Jake Wharton) — Thu, 01 Mar 2012 15:10:00 +0000

On February 23, 2012 Michael Rothbard and Sleep Studio, LLC filed an action in the United States District Court for the Southern District of New York against Carpenter, Co. alleging trademark infringement. (Case No. 1:12-cv-01347-RJS) (S.D.N.Y. Feb. 23, 2012). Sleep Studio alleges that its VISCOFRESH mark is infringed by Carpenter's use of ISOFRESH in conjunction with pillows, mattresses, mattress toppers, and other sleep related products. Products sold by both companies allegedly help eliminate odors.

Interestingly, plaintiffs allege one similarity in the marks is that ISOFRESH merely removes two letters from VISCOFRESH. Of course, removing or adding letters is not the test for trademark infringement. Rather, it is whether the marks are confusingly similar to the relevant consuming public. While the marks are close, plaintiffs have an uphill battle because the "fresh" component is arguably suggestive and the ISO and VISCO components do not sound or look the same.

Thanks to Furniture Today's Bedding Editor David Perry for breaking the news about the lawsuit. David's article can be found here.

“Career GPS for In-House Counsel” with members of the Washington Metropolitan Area Corporate Counsel Association

noreply@blogger.com (Jake Wharton) — Tue, 14 Feb 2012 16:19:00 +0000

Womble Carlyle Chief Leadership and Executive Development Officer Vandana Allman will participate in a discussion of “Career GPS for In-House Counsel” with members of the Washington Metropolitan Area Corporate Counsel Association (WMACCA). The luncheon takes place from noon-2 p.m. on Feb. 29th at the Tysons Corner Marriott, 8028 Leesburg Pike in Tysons Corner, Virginia. The “Career GPS For In-House Counsel” presentation will provide a guidance system for in-house counsel who want to design and implement professional-growth routes that will help them reach their destination as quickly and efficiently as possible.
WMACCA’s Career GPS for In-House Counsel is 12-2 p.m. Feb. 29 at Tysons Corner Marriott http://bit.ly/yzHfMJ. Register today.

Simmons/Leggett & Platt Hit With $5 Million Damages Award

noreply@blogger.com (Jake Wharton) — Tue, 07 Feb 2012 14:51:00 +0000

On January 24, 2012, a jury in the United States District Court for the Central District of California returned a verdict in favor of plaintiff Imaginal Systematic, LLC against Simmons Bedding Company and Leggett & Platt, Inc. for infringement of three patents owned by Imaginal Systematic. The court had already entered summary judgment of infringement of at least one claim of each patent. The trial was held to determine willfulness and defendants' equitable defenses.

The Imaginal Systematic patents concern machines and processes that automate "the toughest job in the bedding factory" (Imaginal's Trial Brief at 2), the stapling of the wire portion of a box spring to a wood frame. Imaginal's case was based on the defendants misappropriating the patented technology after the inventor disclosed a version to Leggett & Platt, who turned his offer down but allegedly later developed its own version of the machinery.

Interestingly, the unredacted jury verdict form is not publicly available. The redacted jury verdict form merely states that defendants are liable for $5 million in damages (with Simmons responsible for $3 million). Although the jury verdict forms are redacted, it can be assumed that the jury found willful infringement and the court rejected defendants' equitable defenses.

Imagainal Systematic was represented by Sheppard Mullin Richter & Hampton LLP. Simmons Bedding and Leggett & Platt were represented by Haynes & Boone LLP. The case is Civil Action No. 2:10-cv-07416-RGK-SS (C.D. Cal.).

No Copyright Coverage of Digital Images of Useful Items (Furniture)

noreply@blogger.com (Jake Wharton) — Thu, 12 Jan 2012 16:30:00 +0000

Copyright covers original, non-useful works of authorship; including pictoral, sculptural and graphic works, fixed in a tangible medium of expression. So shouldn't a digital image of a useful item, say high-end designer furniture, be afforded copyright protection? A digitially created image is really no different than a photograph and photographs of useful items have long been afforded copyright protection. Unfortunately, the plaintiff in a December 22, 2011 decision from the United States Disrict Court for the Southern District of New York failed to present the right question to the court and wound up defeating its copyright claims.

In Heptagon Creations, Ltd. v. Core Group Marketing LLC, et al., No. 11 Civ. 01794 (S.D.N.Y. Dec. 22, 2011), the court granted defendants' Rule 12(b)(6) motions to dismiss for failure to state a claim. In Heptagon, plaintiff filed an amended complaint alleging copyright infringement under 17 U.S.C. § 501, unfair competition and trade dress infringement under 15 U.S.C. § 1125(a), and common law unfair competition. Heptagon's claims were based on defendants' use of images of plaintiff's "Andre Joyau" modern designer furniture in marketing material for the sale of an unfurnished $5.9 million condominium in New York City. The rub here is that defendants, a real estate firm and interior design firm, originally requested to use actual pieces of furniture to furnish the condominium in exchange for the publicity the furniture would receive as a result of the condominium being featured in Home and Garden Television's ("HGTV") show "Selling New York." When defendants refused to purchase an insurance policy for plaintiff's furniture, plaintiff refused to provide the furniture. However, plaintiff had already provided defendants with images of the furniture so defendants used the image to create marketing materials with images of the furniture depicted as within the condominium.

In ruling on defendants' motion to dismiss for failure to state a claim, the court held that Heptagon failed to properly plead that it owns valid copyright. First, the court noted that the Copyright Office rejected Heptagon's application for copyright certificates for the several items of furniture depicted by defendants because "the objects are utilitarian and contain no seperable authorship." However, because Heptagon now asserted copyright in the furniture, the court had to independently assess the copyrightability of the furniture. The court turned to the amended complaint to see if Heptagon adequately pled factual allegations sufficient to support a finding of copyrightability for each of the nine asserted pieces of furniture.

The Court found that Heptagon's complaint failed to adequate allege facts sufficient to demonstrate that the design elements of the furniture are physically or conceptually separable from the furniture's utilitarian elements. Essentially, the complaint failed to distinctly identify the non-utilitarian design elements that are either physically or conceptually separable from the utilitarian elements. For example, arched base and arm rest elements in the "Cocoon Chair" could not be removed from the seating area without adversely affecting the utility of the chair. The court also held Heptagon failed to adequately describe its trade dress, describe the non-functional elements, plead secondary meaning, or a likelihood of confusion.

Cocoon Chair

Did the court get it wrong? Not necessarily; the court was really given the wrong question. Heptagon would have been much better off claiming copyright in the images it gave to defendants, not in the designs of the furniture. The court dove headlong into a complicated "separability" analysis when it truly wasn't necessary. Moreover, Heptagon likely ruined the chances for ever protecting this furniture by pursuing the wrong type copyright claim. The lesson here is to properly assess the medium in which copyright can be claimed, whether there are multiple media to claim, and to assert those that are most likely to succeed, keeping in mind that sculptural works may be protected by other forms of media, such as photography and digital images.

Don't Forget The Unfair and Deceptive Trade Practices Claim

noreply@blogger.com (Jake Wharton) — Tue, 10 Jan 2012 16:25:00 +0000

In a straight forward copyright infringement case the plaintiff cannot usually also assert a claim under North Carolina Gen. Stat. 75-1.1 because the claim is preempted by federal copyright law. See, e.g., Iconbazaar, L.L.C. v. Am. Online, Inc., 308 F. Supp. 2d 630, 636-37 (M.D.N.C. 2004); Vogel v. Wolters Kluwer Health, Inc., 630 F. Supp. 2d 585, 593 (M.D.N.C. 2008). For a state unfair competition claim to survive, it must usually be based on conduct not related to the allegations of copyright infringement, for example, fraud. However, when the tables are turned and the lawsuit is a declaratory judgment ("DJ") action, then the claim is likely appropriate.

Take for example the recently filed case of Culp, Inc. v. Design Legacy by Kelly O'Neal, Case No. 1:12-cv-22 (M.D.N.C. Jan. 5, 2012). It its complaint, Culp accuses Design Legacy of threatening copyright litigation over Culp's alleged infringement of a Design Legacy copyright protected design. The complaint alleges Design Legacy accused Culp's "Birdsong" fabric pattern of infringing the copyright in Design Legacy's "Blue Heron" design, which is the subject of a pending copyright application. Culp filed a DJ action seeking a declaratory judgment its Birdsong fabric did not infringe any of Design Legacy's copyrights. Culp also lodged a claim for unfair and deceptive trade pratices under North Carolina Gen. Stat. 75-1.1, et seq. Because Culp is not bringing an infringement claim, and the conduct Culp complains of consists of Design Legacy's threats to Culp's business, there is a good chance the unfair competition claim would survive a motion to dismiss based on federal preemption.

What's the benefit of such a claim? The statutory cause of action provides for possible treble damages and attorneys' fees should Culp be successful. It is a powerful weapon to wield in the face of copyright infringement claims.

When Is A DJ Action Appropriate For Trademark Infringement?

noreply@blogger.com (Jake Wharton) — Mon, 09 Jan 2012 21:43:00 +0000

Many are familiar with a declaratory judgment action in the context of patent infringement. The typical scenario involves demand letters from a patentee and the desire of another person or company to develop, market, and sell a product that is the subject of those letters. This often results in a declaratory judgment or "DJ" action filed by the recipient of the letters seeking an order that the accused product does not infringe the asserted patent. The action may also seek an order that the patent asserted is invalid and unenforceable.

The same scenario can unfold with respect to trademarks although the occurence of DJ actions involving trademarks appears to be less than with patents. One reason for that may be that it is often easier to determine priority of use with respect to trademarks instead of complicated claim construction and infringement analyses involved with patents. However, there are situations where the parties do not contest priority and that issue is not dispositive of the dispute. The parties likely dispute whether there is a likelihood of confusion with respect to the relevant consuming public. When that is the case, the party receiving demand letters may be well off to file a DJ action seeking to clear the air over whether they can continue to use a mark.

In a case filed January 4, 2012 in the Middle District of Georgia, Turner Furniture Holding Corp. ("TFH") filed a DJ action after receiving multiple demand letters from Turner Furniture Company of Tifton, Inc. ("TFCT") (Civil Action No. 7:12-cv-0004). This case involves descendants of the original "Mr. Turner" both claiming rights to the Turner name in conjunction with furniture. TFH brought the DJ action after (it alleges) TFCT began issuing demand letters to TFH's clients and business contact and thus interfering with its business relationships. If such situations arise, that might be the tipping point at which a threatened party begins to notice a real-world effect of the demands and a DJ action is approrpriate. In the Turner Furniture case, the DJ complaint seeks a declaration that the plaintiff's rights are valid and enforceable while the defendant's rights are invalid and not enforceable. The complaint also seeks a declaratory judgment that the plaintiff TFH's use of the Turner name does not infringe any of defendant's rights, to the extent they exist.

Thus, when a company needs to "clear the air" on the use of its trademark, a DJ action may the right course of action.

A.B.C. Carpet Trademark Action Against ABCHomestore.com

noreply@blogger.com (Jake Wharton) — Mon, 19 Dec 2011 14:55:00 +0000

New York City-based A.B.C. Carpet, Inc. and A.B.C. Home, Inc. (d/b/a ABC Carpet & Home) filed an action on November 16, 2011 against ABCHomestore.com (Bronx, NY) for trademark infringement, unfair competition, cybersquatting, and related state claims. Plaintiffs own federally registered trademarks for ABC, ABC Home, and ABC (with design) among other trademark rights for retail store services featuring home furnishings, carpets and rugs. Plaintiffs maintain a website at <abchome.com>. Defendant operates a website at <abchomestore.com> selling various home furnishings.

While the complaint itself is not unusual, it underscores the ability of a business with federally registered marks to make a strong case for infringement. If plaintiffs in this case were relying on common law rights or perhaps state registrations, they would face a significant evidentiary burden to prove validity and ownership of a mark - ABC - that is widespread for a variety of goods and services. Any business that has developed a brand name that is arguably weak should consider filing an application for a federal trademark registration. That certificate may make all the difference when a cybersquatting infringer shows up.

The case is No. 1:11-cv-8292 (S.D.N.Y.).

Serta Challenges Oleg Cassini's Right To "Cassini" Name

noreply@blogger.com (Jake Wharton) — Tue, 29 Nov 2011 15:22:00 +0000

On November 10, 2011, Serta, Inc. filed a declaratory judgment action in the United States District Court for the Northern District of Illinois seeking to clear its use of the "Cassini" moniker on its line of Perfect Day mattresses.

In the complaint, Serta alleges that it has been selling the Perfect Day line of mattresses since 2005 and that Serta currently sells 75 different models of Perfect Day mattresses, each with a different name. The Perfect Day Cassini mattress was being sold at J.C. Penny department stores. Serta also used other outer space-related names including Eclipse, Gemini, Moonscape, Onyx Moon, Orion, Pisces, Sirius, Stellar, Taurus, and Nebula. The Cassini model was alleged to have been inspired by Giovanni Domenico Cassini, a famous Italian/French astronomer who lived from 1625-1712 and the famous NASA Cassini spacecraft and solstice mission. Serta also alleges the name Cassini has been used in association with a variety of other goods, such as various food products, a lunar crater, and a web server.

Serta's complaint states that it received multiple letters from Oleg Cassini claiming the Perfect Day Cassini mattress infringed Oleg Cassini's trademark rights in the name "Cassini." Serta agreed to stop selling the mattress under the Cassini name but Oleg Cassini continued to threaten litigation. Serta then brought the declaratory judgment action claiming that its use of the Cassini name would not create a likelihood of confusion among consumers that Serta's mattresses were affiliated with or originated from Oleg Cassini.

Serta is represented by Quarles & Brady, LLP. No one has yet to enter an appearance on behalf of Oleg Cassini.

The case is Serta, Inc. v. Oleg Cassini, Inc., No. 1:11-cv-08004 (N.D. Ill.). A copy of the complaint can be found here.

Registration of Marks for Furniture Collections Important Factor for Protection

noreply@blogger.com (Jake Wharton) — Fri, 05 Aug 2011 13:58:00 +0000

Furniture companies routinely protect their house mark, i.e., the name of the company. However, unlike house marks, which are usually well-established (e.g., Thomasville, La-Z-Boy) or an inherently strong mark (e.g., Century Furniture), collection names are not necessarily strong marks. In fact, some collection names are used repeatedly by numerous furniture companies (e.g., Central Park). Thus, what's a furniture company to do?

One step is to file trademark applications on collection names. Granted, collections have a limited life but a trademark application can be useful even before a registration issues. For example, Commercial Furniture Group (Newport, TN) recently sued Keilhauer (Ontario, Canada) for infringing several collection names, including MOSS, CHILL, MOSS-CHILL, and MOSS-NOOK. (Civil No. 3:11-cv-00656 (S.D. Il.). The fact that Commercial Furniture has pending trademark applications for several of these collection names may bolster its chance of success since the applications may mature into registrations during the pendency of the litigation.

If a collection will be or is a hot seller, or if the name of the collection is unique, furniture companies should consider filing a trademark application to help protect the name. The costs are relatively minimal and the benefits are tremendous should an infringer pop up.

Rugs Form Basis For Copyright Turf Battle

noreply@blogger.com (Jake Wharton) — Fri, 10 Jun 2011 14:40:00 +0000

Unlike with most furniture, the rug designer really only has one arrow in their quiver and that is copyright protection. The home furnishings industry has seen a number of intellectual property cases recently with a number of utility patent cases concerning mattress technology. That is not surprising as mattresses have become increasingly more technologically complex. However, simple copyright protection gets the job done for protecting rug designs. This is borne out in a series of copyright infringement cases concerning rug designs over the last few years.

In fact, just recently on June 7, 2008 Portland, Maine based Angela Adams Designs filed a copyright infringement action against Target Corporation, Wal-Mart Stores, Inc., Wal-Mart.com, Inc., and Mohawk Industries. In the complaint, Angela Adams alleges that Mohawk manufactured, and that the other defendants are selling, rugs that infringe Angela Adams' copyrighted "Manfred" design (shown below):

The Mohawk/Wal-Mart rug:

The Mohawk/Target rug:

Now, Angela Adams does not have a slam dunk here as substantial similarity is the test for copyright infringement. However, Angela Adams alleges that it showed its Manfred design to Mohawk several years before Mohawk released the allegedly infringing rugs so Angela Adams can, at the least, likely establish access and then put forth their case on copying.

Furniture Today's David Perry Talks Bedding Lawsuits

noreply@blogger.com (Jake Wharton) — Fri, 03 Jun 2011 15:22:00 +0000

Furniture Today's Bedding Editor David Perry recently posted a podcast regarding two high profile intellectual property lawsuits involving major bedding manufacturers. Listen by clicking here.

Furniture Manufacturers: Advertising Your Intellectual Property?

noreply@blogger.com (Jake Wharton) — Sat, 28 May 2011 02:27:00 +0000

Perhaps furniture companies are becoming more innovative or perhaps just because spring is in the air, but in any event several manufacturers are touting intellectual property with respect to their furniture. Bedding producer Eclipse International announced it received a patent on its "Zoned Quilt Technology" for mattresses. According to Eclipse, the technology eliminates body impressions and provides additional support in the center-third of the mattress. Moving from bedding to recliners, Barcalounger announced recently that it is seeking patent protection on one chair in its new Surround Lounge collection. Barcalounger says the chair is similar to a business class airline seat (is this a selling point?) and that the chair received rave reviews at the April High Point Market. Interestingly, Barcalounger does not indicate whether it is seeking utility and/or design patents on the chair.

So, what's the point of all this? Whenever you receive a patent or apply for a patent it may be worth tooting your own horn. For example, announcing that you applied for a patent on a piece that you believe may be knocked off is may be a way saying "hey - back off!" Similarly, announcing that you received a patent may be a good marketing tool. In either event, you get additional mileage out the rights bestowed by the patents themselves.

Hollander Not Comfortable With La-Z-Boy Over "Live Life Comfortably" Slogan

noreply@blogger.com (Jake Wharton) — Wed, 25 May 2011 13:18:00 +0000

On May 23, 2011, Boca Raton-based Hollander Home Fashions, LLC sued La-Z-Boy, Inc. in the United States District Court for the Southern District of Florida for trademark infringement (Civil Action No. 9:11-cv-80605). The suit also asks the court to instruct the United States Patent and Trademark Office to deny La-Z-Boy's pending trademark application for "LIVE LIFE COMFORTABLY."

In the complaint, Hollander alleges that it uses the trademark LIVE COMFORTABLY in conjunction with its sale of bedding including pillows, comforters, blankets, and mattress pads. Hollander has two federal registrations, one for LIVE COMFORTABLY and the other for LA VIE DOUILLETTE (the French translation of "live comfortably") for bedding products. Hollander alleges La-Z-Boy is using the phrase LIVE LIFE COMFORTABLY in conjunction with sofas, chairs, recliners, loveseats, sectionals, lift chairs, and sleepers. In addition, Hollander alleges that La-Z-Boy uses LIVE LIFE COMFORTABLY in connection with sleepers on which bedding such as pillows, blankets and sheets are located. Hollander further alleges that La-Z-Boy markets and/or licenses bedding products and uses or has authorized use of LIVE LIFE COMFORTABLY in conjunction with those products. Hollander asserts claims of federal trademark infringement, unfair competition, trademark dilution, and common law unfair competition.

Hollander's allegations raises the question of whether the presence of incidental goods (i.e., bedding) in the sale of one's primary products (i.e., furniture) can give rise to trademark infringement. That may be a stretch if La-Z-Boy is not selling the bedding in the marketing material for its furniture. Conversely, the sale of bedding in conjunction with LIVE LIFE COMFORTABLY fits the traditional mold for a trademark infringement action which will require a determination of whether La-Z-Boy's use is likely to cause consumer confusion. Hollander has gone out on a limb with the dilution claim as it will have to prove its mark is famous, and not just famous within a niche, e.g., the bedding industry.

Unique Event! Join NC Attorney General Roy Cooper & Womble Carlyle for the CLE Symposium for Top NC Legal Counsel on May 5

noreply@blogger.com (The Womble Carlyle Team) — Tue, 12 Apr 2011 17:52:00 +0000

Womble Carlyle CLE Symposium for Top NC Legal Counsel
A full-day CLE event for in-house counsel
May 5, 2011 -- 8:30-4:30 p.m.
10 CLE Sessions, Lunch and Keynote Address by North Carolina Attorney General Roy Cooper

On May 5, Womble Carlyle will offer CLE sessions on such topics as:

political contributions/lobbying

data management

economic development

crisis/catastrophic event planning

employee defection/personnel departures

outsourcing agreements

intellectual property minefields

legal project management

the China market

‘green’ strategies

Event information

Location: Proximity Hotel
704 Green Valley Road
Greensboro, NC 27408
(800) 379-8200
http://www.proximityhotel.com/
Reference this event when booking overnight stay to receive special rate.

RSVP: There is no fee to attend but seating is limited.
Please RSVP by Friday, April 22nd, using one of the following methods:
phone: (336) 433-5699
email: greensbororsvp@wcsr.com

Click here for information on the ten panels that are being offered to top legal counsel in North Carolina.

Register today!

Simmons Strikes First Against L&G Patent

noreply@blogger.com (Jake Wharton) — Tue, 05 Apr 2011 14:01:00 +0000

On March 30, 2011, Simmons Bedding Co. and The Simmons Manufacturing Co., LLC (collectively "Simmons") brought a declaratory judgment action against Leggett & Platt, Inc. and L&P Property Management Co. (collectively "L&G") seeking a declaration that Simmons does not infringe L&G's patent, U.S. Patent No. 5,868,383 ("the '383 patent") titled "Multiple Rate Coil Spring Assembly."

In its complaint, Simmons alleges that L&G has threatened suit over the '383 for Simmons' sale of products incorporating a spring marketed as the SMART RESPONSE coil. Claim 1 of the '383 patent states:

1. An automated method for the manufacture of a coil spring assembly comprising inserting coil springs into respective individual pockets of a continuous pocket strip in a predetermined order wherein at least one of said coil springs has predetermined multiple spring rates.

Simmons is seeking a declaration for noninfringement and invalidity of the '383 patent. The case is Civil Action No. 11-cv-232 (W.D. Wis.).

The choice of venue, the Western District of Wisconsin, is interesting. While Simmons is based in Georgia, and L&G in Carthage, MO, the choice of the W.D. Wisconsin suggests Simmons wants to fast track the litigation. Venues with "rocket dockets" such as W.D. Wisconsin and the E.D. Virginia are traditionally chosen by plaintiffs asserting infringement. The selection of a rocket docket by a declaratory judgment plaintiff signals a new use of those venues to absolve a business from potential patent infringement liability.

"Slogan Infringement" Covered, Product Name Not Slogan

noreply@blogger.com (Jake Wharton) — Mon, 04 Apr 2011 15:29:00 +0000

Following up on a topic of insurance coverage for trademark infringement claims (recently covered on this blog), the U.S. District Court for the Western District of Missouri recently denied Hostess Bakeries' request for summary judgment in which the bakery sought a declaration that its insurer, Onebeacon, must provide coverage in a trademark infringement suit brought by Flowers Bakeries Brands, Inc. In the infringement suit, which is still pending, Flowers alleges Hostess infringes Flowers' "Nature's Own" mark by using "Nature's Pride" and "Nature's Choice" on bread.

Interestingly, the policy at issue covers "slogan" and "title" infringement but not general trademark infringement. The district court sided with Onebeacon's interpretation of "slogan" and "title" finding that Flower's suit did not allege "slogan" or "title" infringement, but rather just standard trademark infringement. Hostess plans to appeal to Eighth Circuit. The case is Interstate Bakeries Corp. v. Onebeacon Insurance Co., Civil Action 4:09-cv-809 (W.D. Mo.).

The case underscores the need to analyze the "advertising injury" clauses of general commercial liability policies. Any limitations, such as to "slogan" or "title" infringement, should be explored in detail to determine if you have adequate coverage. In addition, such terms should be defined in the policy - something that did not happen in Hostess' case.

Real Property Hot Topic At Market

noreply@blogger.com (Jake Wharton) — Sat, 02 Apr 2011 20:13:00 +0000

While this blog is dedicated to intellectual property issues related to furniture, one of the hot topics in High Point this market is real property. The maneuvering to control major showroom buildings in High Point is apparently not over, with only the Merchandise Mart finding a definite buyer as of April 1 (no joke). Here is a round-up of recent news items related to the real estate activity and general market news:

High Point MMPI properties sold for $139.5 million (Furniture Today)

High Point places tax liens on seven showroom properties (Furniture Today)

Economy likely to overshadow ownership issues at the furniture market (Winston-Salem Journal)

Las Vegas furniture market building goes into receivership (Winston-Salem Journal)

A King Sized Battle Between Mattress Manufacturers

noreply@blogger.com (Jake Wharton) — Thu, 24 Mar 2011 10:29:00 +0000

On March 17, 2010, Mebane, North Carolina based Kingsdown, Inc. filed suit against King Koil Licensing Company, Inc. accusing King Koil of patent infringement, federal trademark infringement and unfair competition, and common law trademark and unfair competition. All claims relate to Kingsdown's "BEDMATCH" bedding diagnostic system.

The dispute arose after two Kingsdown employees left to join King Koil. Kingsdown accuses King Koil of using the competitive knowledge of the two employees to create a bedding diagnostic system that infringes Kingsdown's patent, U.S. Patent No. 6,585,328 ("the '328 patent"), and using a name for the King Koil system that infringes Kingsdown's "BODY" and "MATCH" family of marks. The '328 patent is directed to a "Customized Mattress Evaluation System" that allows a retail mattress store to collect data from a sensor pad positioned on top of a support surface to generate a pressure profile for a customer. Figure 1 from the '328 patent graphically depicts the system:

Figure 2 shows a sample report:

Kingsdown's trademark claims are based on King Koil's attempts to register BODYMATCH, SLEEPMATCH, DATAMATCH, and even BEDMATCH, Kingsdown's mark.

The case is Civil Action No. 1:11-cv-220 (M.D.N.C.).

4th Circuit Limits Insurer's Duty In Furniture Trademark Case

noreply@blogger.com (Jake Wharton) — Tue, 01 Mar 2011 20:11:00 +0000

The United States Court of Appeals for the Fourth Circuit affirmed a district court decision holding that Hartford Casualty Insurance Co. had no duty to defend furniture-maker representative Marvin J. Perry against Perry & Wilson's claims of trademark infringement. The case is Perry Inc. v. Hartford Casualty Insurance Co. (Case No. 09-1639).

The dispute arose after Marvin J. Perry ("MJP") sold the tradename "Marvin J. Perry & Associates" to Perry & Wilson ("P&W") and MJP began using the name again, allegedly in violation of a 1993 agreement between the companies. P&W sued MJP for unfair competition and trademark infringement in 2005. That case settled in 2007. MJP then sought recovery of its defense costs from its insurer, Hartford.

Hartford denied coverage, claiming that MJP's policy specifically excluded injuries related to intellectual property rights. MJP countered that P&W's claims were directed to MJP's advertising activities and thus should be covered by the advertising injury clause of the policy. The United States District Court for the District of Maryland sided with P&W and denied coverage. On appeal, the Fourth Circuit affirmed, finding that P&W's complaint identified customer confusion as giving rise to its claim thus implicating the Lanham Act and violation of P&W's intellectual property.

The case is a good reminder for companies to check the scope of their general commercial liability policy for intellectual property exclusions and evaluate whether an "IP rider" is warranted. In addition, the case lays a strategic map for litigation when the plaintiff wants to craft a complaint that either avoids or implicates insurance coverage for a defendant.

Nebraska Furniture Mart Makes Preemptive Strike Against NPE

noreply@blogger.com (Jake Wharton) — Fri, 04 Feb 2011 14:56:00 +0000

On February 3, 2011 Nebraska Furniture Mart filed a complaint in the United States District Court in Delaware seeking a declaratory judgment against Kelora Systems, LLC. The complaint seeks a declaration that U.S. Patent No. 6,275,821 ("the '821 patent") is invalid and not infringed. The '821 patent, entitled "Method and system for executing a guided parametric search." Kelora is considered by many to be a non-practicing entity, or NPE. NPE's are sometimes referred to as "patent trolls" for collecting licensing fees without actually commercially exploiting patented technology.

In October 2007 Kelora's predecessor-in-interest filed suit in federal court in the Eastern District of Texas against six companies, including eBay, Yahoo!, and Microsoft. That case was transferred to the Northern District of California and in August 2009, that court entered summary judgment that claims 1 and 2 of the '821 patent invalid under the on-sale bar (35 U.S.C. 102(b)). Even after that ruling, Kelora apparently continued to assert the '821 patent against numerous parties, including sending a demand letter to NFM on January 20, 2011 seeking a $100,000 licensing fee. Based on this history, NFM is seeking fees and costs.

The case, and its history, demonstrates how the quick assessment of a patent troll and their history can allow for a strategic and efficient response. As Congress considers patent reform legislation that would, among other things, revise the damages provisions of the patent laws, patent trolls will likely look to file infringement actions early. Companies dealing with these nuisance demands and lawsuits are wise to assess the facts, then move quickly to obtain jurisdictional advantages and position themselves as plaintiff in a declaratory judgment action.

WEEKENDS No Time Off For Arkansas Furniture Retailers

noreply@blogger.com (Jake Wharton) — Thu, 06 Jan 2011 18:13:00 +0000

Two Jonesboro, Arkansas furniture retailers are in litigation over the use of the term "WEEKENDS" in their store names. On December 17, 2010, Christopher Gamble, owner of a furniture store doing business as "Weekends" sued Furniture Row, LLC and Furniture Row USA, LCC for adding the term "Weekends" to the name of their store approximately six miles from Gamble's store thus naming the store "Weekends at Furniture Row." (Civil Action No. 3:10-cv-323 (E.D. Ark.)).

The complaint reveals that Gamble does not have a federal trademark registration and only obtained a state registration after defendants changed their store's name. While without the benefits of a federal registration, Gamble apparently has collected over 30 instances of actual confusion. Presuming those instances of confusion are admissible, this case demonstrates how a common law mark can potentially be protected without a federal registration. Of course, the better course of action is seek and obtain a federal registration in most cases.

FBI Strikes Back Against Non-Practicing Entity

noreply@blogger.com (Jake Wharton) — Thu, 06 Jan 2011 17:58:00 +0000

On December 14, 2010, St. Louis, MO based Furniture Brands International filed a declaratory judgment action against Webvention Holdings, LLC in the United States District Court for the District of Delaware (Civil Action No. 1:10-cv-1090). As with 11 other cases filed against Webvention in Delaware, the complaint seeks a declaration of noninfringement or unenforceability of U.S. Patent No. 5,251,294 ("the '294 patent"). Webvention is a non-practicing entity (a/k/a "patent trolls") that has sued numerous well-known entities in the Eastern District of Texas for infringement of the '294 patent, entitled "Accessing, Assembling, and Using Bodies of Information."

Webvention has been served and its response to the complaint is due Feb. 17, 2011. This case, along with the 11 other related cases, will be watched closely as it will affect Webvention's infringement cases in Texas and Webvention's ability to continue collecting licensing fees.

DMCA Infringement Notices Results In Finding Of Utilitarian Copyright Claims

noreply@blogger.com (Jake Wharton) — Sat, 20 Nov 2010 11:45:00 +0000

On Oct. 21, 2010, the United States District Court for the Eastern District of California, Civil Action No. 2:10-cv-2765 (Judge Wm. B. Shubb) entered a temporary restraining order prohibiting Zen Path, LLC from submitting infringement notices to eBay claiming that Design Furnishings, Inc.'s wicker furniture infringes Zen Path's copyrights in numerous articles of wicker furniture.

Zen Path and Design Furnishings both sell wicker furniture from the same Chinese manufacturer on eBay. Zen Path requested that Design Furnishings stop selling the furniture, claiming copyright and patent violations. Design Furnishings refused unless presented with proof of Zen Path's intellectual property protection for the furniture. Zen Path then filed for copyright applications for (1) a round sectional wicker furniture collection, (2) a U-shaped sectional wicker furniture collection, (3) a modern boxy sectional wicker furniture collection, and (4) a Capri sectional wicker furniture collection. The applications identified the works as "sculpture/3-D artwork, Ornamental Design" and attached black and white photocopies of pictures of the furniture "some more viewable than others" (according to the court's order).

Zen Path then notified eBay that Design Furnishings was selling furniture within the scope of Zen Path's copyrights. Pursuant to eBay's policies, eBay then suspended Design Furnishing's account based on the claim of infringement resulting in the termination of 35 auctions and preventing Design Furnishings from listing new items, even non-furniture items. In total, Zen Path submitted 63 notices of infringement to eBay.

In its complaint against Zen Path, originally filed in state court, Design Furnishings alleged (1) misrepresentation of intellectual property infringement in violation of 17 U.S.C. 512(f) of the Digital Millennium Copyright Act ("DMCA"), (2) tortious interference with a contract, (3) tortious interference with prospective economic advantage, (4) violation of California's unfair competition law, and (5) declaratory and injunctive relief. The state court denied Design Furnishing's request to order Zen Path to notify eBay that Design Furnishings had not infringed Zen Path's intellectual property rights. Zen Path then removed the action to federal court.

In ruling on Design Furnishing's request for a TRO, the federal court assessed Zen Path's likelihood of success on its copyright infringement claims and analyzed whether Zen Path's copyright extends to the furniture shown in the photographs attached to its copyright appplications. The court, relying heavily on the Fourth Circuit's recent holdings in Universal Furniture Int'l., Inc. v. Collezione Europa USA, Inc., Nos. 07-2180, 09-1437, 2010 WL 3278404 (4th Cir. Aug. 20, 2010), held that:

defendant's applications for copyright protection claimed the works were sculptures or 3-D artwork or ornamental designs, indicating that defendant knew the limits of copyright protection. The pictures of the furniture, though, suggest that defendant impermissibly sought protection of the 'industrial design' of the furniture. Moreover, the internal contradiction in the applications raises a strong inference that defendant subjectively knew it did not have a copyright infringement claim when it notified eBay.

The court then held that Zen Path did not have a likelihood of success on the merits of its copyright infringement claims and granted Design Furniture's TRO after considering the other factors. The court, in particular, focused on how the DMCA notices to eBay effectively shut down a competitor's business without any proof of infringement.

The decision is a good reminder of the need to properly claim copyright in furniture and to be careful when sending out DMCA take-down notices. You never know where such notices will lead!