Furniture Law Blog

Williams-Sonoma Brings Lawsuit Against Amazon

noreply@blogger.com (Unknown) — Wed, 30 Jan 2019 14:31:00 +0000

If you’ve been following Williams-Sonoma’s lawsuit against Amazon alleging, among other things, that the online retailer copied design patent and trademark rights then you’ll want to hear what our own Jack Hicks has to say about it. Hicks, a veteran intellectual property attorney who has long served the home furnishings industry, recently shared his thoughts on the federal lawsuit in an interview with Furniture, Lighting & Decor.

The case was filed in December 2018. Amazon is expected to file its response by February 5, 2019. A copy of the complaint and exhibits may be found here.

Jack Hicks has more than 30 years of experience guiding home furnishing and design companies through all stages of the intellectual property process. He has written and prosecuted patents, trademarks, and copyrights on literally hundreds of furniture-related designs. Hicks’ proximity to High Point, N.C., the capital of the U.S. furniture industry, helps him better serve U.S. and international manufacturers and distributors for the home furnishings industry. Hicks is a frequent author and speaker on furniture- and design-related intellectual property issues.

No Time to Relax for Inflatable Lounger Companies

noreply@blogger.com (Unknown) — Mon, 19 Sep 2016 18:32:00 +0000

Guest Post by David R. Crowe

With their newly issued design patent in hand, Fatboy the Original B.V. and Fatboy USA have quickly acted to defend their place on the sand.

(Photo Source: https://www.fatboy.com/lamzac, accessed 9/13/16)

The Lamzac® lounger uses an “air scooping” action to fill a pair of separate chambers, which when filled, creates an easily inflated lounger that can be transported and set up anywhere without the need for a pump. The act of rolling up the open end of the lounger appears to take up the slack to give the lounger its desired level of firmness.

Prior to launching the Lamzac® lounger for sale in February 2015, Fatboy, sought a European Community Design registration in January 2015, which was used to provide a priority claim to a U.S. design patent application filed in July 2015. On August 30, 2016 the USPTO granted to Fatboy U.S. Patent D764,823, protecting the ornamental design of the Lamzac® lounger. Images from the ‘823 design patent are shown below. In a search of documents assigned to Fatboy, no utility patents or published utility patent applications for the method of making or inflating this product were found as of this post.

When the ‘823 Patent was granted, Fatboy was ready. The very next day, a suit was filed against EMRG, LLC, the alleged manufacturer or distributor of the PouchCouch^TM. (www.pouchcouch.com) The case alleges infringement of the ‘823 Patent and was filed in the Northern District of Texas, the home district of Fatboy USA. The case is currently awaiting an answer from EMRG. The case is Fatboy the Original B.V. and Fatboy USA, LLC v. EMRG, LLC NDTX 3:16-cv-02520-K.

The PouchCouch^TM

(Photo Source: Complaint filed by Fatboy in NDTX 3:16-cv-02520-K)

The PouchCouch^TM is apparently not be the only product allegedly similar to the Lamzac® lounger. Only two days after asserting infringement against the PouchCouch^TM, Fatboy was at it again, this time filing suit against Value Max Products, LLC. Value Max is alleged to have harmed Fatboy with the “Aero Lounger” product shown in the advertisement below. In this second suit, not only does Fatboy allege infringement of the ‘823 Patent, but also raises issues of unfair competition and copyright infringement based on allegations that the marketing materials below where taken from Fatboy as well. This case, also in the Northern District of Texas, is Fatboy the Original B.V. and Fatboy USA, LLC v. Value Max Products, LLC NDTX 3:16-cv-02544-M.

(Photo Source: Complaint filed by Fatboy in NDTX 3:16-cv-02544-M)

EPA Issues Final Rule on Formaldehyde Emission Standards for Composite Wood Products

noreply@blogger.com (Unknown) — Thu, 04 Aug 2016 02:30:00 +0000

Guest post by Whitney Passmore and Michael Sullivan

On Wednesday, July 27, 2016, the Environmental Protection Agency (“EPA”) released a prepublication version of its final rule on Formaldehyde Emission Standards for Composite Wood Products. The authority for the rule comes from the Toxic Substance Control Act (“TSCA”). The EPA’s rule relies heavily on the formaldehyde emissions rules set by the California Air Resources Board (“CARB”) as part of California’s Phase 2 formaldehyde emissions standards, and the EPA’s emissions standards are identical to those set by CARB.

Who will be affected by the new rule?

This rule will affect manufacturers, importers, distributors, and retailers of products containing composite wood, which is defined as hardwood plywood, medium-density fiberboard, and particleboard.

What is required under the new rule?

The EPA’s final rule sets out detailed record-keeping, labeling, and testing requirements for composite wood and products containing composite wood. Below are three major areas of concern that manufacturers, importers, distributors, and retailers of finished goods containing composite wood should be aware of as they prepare to comply with the national formaldehyde emissions standards.

Record-keeping and labeling: One year after publication of the final rule in the Federal Register, manufacturers of finished goods containing composite wood (called “fabricators” under the CARB and EPA rules), importers, distributors, and retailers will have to comply with new record keeping and labeling requirements.

With regard to record keeping, manufacturers, importers, distributors, and retailers will be required to “take reasonable precautions” to ensure the products they sell comply with the emissions standards. As part of taking “reasonable precautions,” a company must obtain documentation, such as bills of lading or invoices, from suppliers of composite wood products that includes a written statement that the products are either compliant with formaldehyde emissions standards or were produced prior to the rule taking effect. Companies must keep this documentation for three years – a year longer than required by CARB.

Importers face an additional record keeping requirement. If requested to do so by the EPA, importers must provide records identifying either (1) the composite wood panel producer and the date the composite wood products were produced or (2) the supplier of the composite wood products (if different than the producer), component parts, or finished goods and the date of purchase. Importers will have to provide this information to the EPA within 30 days of a request, and documentation must be kept for three years.

Finally, manufacturers of finished goods containing composite wood products must label each finished good or box or bundle containing finished goods with the manufacturer’s name, the date the good was produced, and a statement that the finished goods are compliant with the TSCA. If a manufacturer chooses to label the box or bundle of goods, importers, distributors, and retailers of those goods must keep the label from the box or bundle and keep track of which products are identified with the label. Importers, distributors, and retailers must make the label information available to potential customers if requested.

Importer Certification: Two years after the final rule is published in the Federal Register, importers will be required to certify that imported composite wood or products containing composite wood comply with the TSCA.

Testing requirements: Beginning seven years after the publication of the final rule in the Federal Register, manufacturers of laminated products will have to comply with third-party testing and certification requirements that apply to manufacturers of hardwood plywood panels. The EPA defines “laminated product” to include only those products with a wood or woody grass veneer, so the testing requirements will not apply to synthetic laminates such as plastic or vinyl. The EPA’s decision to require third party testing and certification by manufacturers of laminated products is a significant departure from the CARB rules.

Fortunately, there are a number of ways companies can lessen or avoid the burdens of a costly testing program. First, the EPA exempts two types of laminated products from the definition of “hardwood plywood”: (1) Laminated products made by attaching a wood or woody grass veneer with a phenol-formaldehyde resin to a compliant platform; and (2) laminated products made by attaching a wood or woody grass veneer with a resin formulated with no-added formaldehyde (“NAF”) as part of the resin cross-linking structure to a compliant platform. Accordingly, a manufacturer using NAF or phenol-formaldehyde resins will not be subject to the testing and certification requirements. Instead, these manufacturers must keep records showing their products are made with the appropriate resins and a compliant platform. Notably, the EPA has left the door open for interested parties to petition for additional exemptions.

Second, manufacturers of laminated products can apply for an exemption from the testing and certification requirements based on use of ultra low-emitting formaldehyde (“ULEF”) resins. To qualify for a ULEF exemption from the testing and certification requirements, a company must undergo a limited (6 months) testing program to show its product complies with emissions limits. Additional limited testing is required to renew the exemption every two years.

Contact Information

Womble Carlyle's Furniture Industry Team and Environmental, Energy & Toxic Tort Litigation Team counsels clients on regulatory matters including compliance and supply chain management. If you have any questions about the EPA's rule on Formaldehyde Emission Standards for Composite Wood Products, please contact Whitney Passmore at 336.721.3532 or WPassmore@wcsr.com, Michael Sullivan at 404.879.2438 or MSullivan@wcsr.com, or any member of the aforementioned teams.

EPA Issues Final Rule to Protect the Public from Exposure to Formaldehyde

noreply@blogger.com (Unknown) — Thu, 28 Jul 2016 02:14:00 +0000

Today the EPA issued its final rule related to formaldehyde emissions standards. This rule will affect manufacturers, importers, distributors, and retailers of furniture manufactured with composite woods (hardwood plywood made with a veneer or composite core, medium-density fiberboard, and/or particleboard). A copy of the final rule can be found at: https://www.epa.gov/sites/production/files/2016-07/documents/formaldehyde_frn_final-prepub_07.26.2016_0.pdf

Womble Carlyle Attorneys Working with Furniture Industry on Improving Safety Standards

noreply@blogger.com (Unknown) — Wed, 22 Jun 2016 17:27:00 +0000

HIGH POINT, N.C.—The furniture industry is examining the dangers to children posed by “tip-overs”—and Womble Carlyle attorneys Michael Sullivan and Whitney Passmore are part of the conversation to improve safety standards.

The ASTM Furniture Safety Subcommittee is proposing two updates to the Standard Safety Specification for Clothing Storage Units. These proposed changes come in response to a Consumer Product Safety Commissioner’s comments that the existing introduction to the standard includes a loophole that could create ambiguity. From a legal liability standpoint, furniture manufacturers must be aware of potential tip-over lawsuits or possible product recalls.

Continue reading...(WCSR.com)

Jake Wharton Interviewed by Bentley Tolk on the Legal Marketing Launch Podcasts

noreply@blogger.com (Unknown) — Sun, 04 Oct 2015 20:46:00 +0000

I was the latest guest on Legal Marketing Launch, a podcast hosted by attorney and legal marketing guru Bentley Tolk. We discussed leveraging a legal blog in a narrow niche (furniture law). I thank Bentley for the opportunity and the good discussion.

Click here to listen to the interview.

Is "New Vintage" On the Way Out?

noreply@blogger.com (Unknown) — Sat, 01 Aug 2015 10:49:00 +0000

The furniture business is constantly evolving. New trends come and go. Some stick around for a while, and some burn bright for what constitutes a fleeting second in the industry. The New Times reports that "New Vintage" is on the decline and a new lighter aesthetic is taking its place. Find the article here.

Remember that with good design comes the need for design protection. With cleaner, more minimalist lines, modern furniture design lends itself to design patent protection in certain cases. With a modest upfront expense, and relatively short pending periods, design patents are an ideal form of protection for some designs or particular aspects of those designs.

Design patents continue to issue weekly on furniture designs. Here is a just a sampling of design patents on more modern furniture designs:

U.S. Des. Pat. No. 610844

U.S. Des. Pat. No. 493983

U.S. Des. Pat. No. 617117

Don't Name Your Furniture Store After A Grocery Store

noreply@blogger.com (Unknown) — Tue, 19 May 2015 13:15:00 +0000

On May 14, 2015, Aldi Inc., the grocery store chain, sued Aldis Furniture Inc. for contempt of a 2002 consent decree. See Aldi Inc. v. Aldsi Furniture Inc., et al., 2:15-cv-2696 (N.D. Ill.). The parties tussled before and the obvious and inevitable trademark infringement action brought by the grocer against the retailer resulted in a 2002 agreement. The retailer, however, apparently thought 13 years was long enough and opened a new furniture retail store named:

The whole affair falls into the "duh" category by the defendant. However, it underscores a trend in furniture retailing. Furniture is being sold everywhere--including grocery stores. Next time you are at your neighborhood large chain grocery store look around. I bet you will find at least some outdoor furniture for sale. In the meantime, let's hope that the Aldi's Furniture folks are wise enough to quickly change their name (again).

Jack Hicks Talks Defending Innovation, IP Rights in the Home Furnishings Industry with Furniture Today

noreply@blogger.com (Unknown) — Thu, 18 Dec 2014 22:07:00 +0000

GREENSBORO, N.C. – Even in the face of copycats, innovation remains the lifeblood of the home furnishings industry, and innovators have legal remedies to protect their designs.

So says Womble Carlyle’s Jack Hicks, a veteran IP attorney who has served the home furnishings industry for more than 25 years. Hicks recently spoke on “Innovation, Impersonation or Infringement?” at the Furniture Today Leadership Conference, and Furniture Today was on hand to cover his presentation.

“It is easy to knock someone off and knock off a bestseller, but if you want to come up with a one-of-a-kind product, we have laws to protect that,” Hicks said. “If you innovate, the law will protect you.”

Click here to read the full article in Furniture Today.

Jack Hicks has more than 25 years of experience guiding home furnishing and design companies through all stages of the intellectual property process. He has written, prosecuted and litigated patents, trademarks and copyrights throughout the world on literally hundreds of furniture-related designs. A registered patent attorney, Jack is frequently invited to speak at the US and Global Patent Academies, Universities and trade groups on the line between protectable original designs and public domain trends. He is listed in The Best Lawyers in America, North Carolina Super Lawyers and North Carolina Legal Elite. Jack also is an Adjunct Professor, teaching courses on intellectual property law and international law and business at the Elon University School of Law. He is the Chair of the Solutions Partners Division of the AHFA and practices in Womble Carlyle’s Greensboro, N.C. office.

Plugged-In Furniture - What's Past Is Prologue

noreply@blogger.com (Unknown) — Wed, 08 Oct 2014 13:22:00 +0000

As furniture becomes more and more tech-driven (e.g., USB ports, chargers, coolers, etc.) we can sometimes forget that claims to advancements in the basic sofa have been around for some time. Today's Westlaw's "Headnote of the Day" e-mail contained the case headnote "Sitting on a couch is not exercise." This got my attention and warranted a deeper look.

The headnote comes from Stauffer Laboratories, Inc. v. F.T.C., 343 F.2d 75 (9th Cir. 1965). In Stauffer, the Ninth Circuit was asked to review a preliminary injunction directing Stauffer Labs and its principal officer from making claims that use of the "Magic Couch" or "Posture-Rest" sofa results in weight loss. The sofa consisted of a central oscillating section measuring 10 by 15 inches and two larger sections that are attached to opposite sides of the central section. The couch user lies upon it with his head on one attached portion and his legs on another while the central portion of his body is given what was called "effortless exercise" through oscillation of the central portion. The user was also to follow a low-calorie diet! The Ninth Circuit affirmed, finding that ads touting the sofa's ability to reduce "inches and pounds" were deceptive.

Have things changed that much today? Do you know of any "technologically advanced" pieces of furniture that make exceptional claims?

The full text of the "Magic Couch" ads:

‘GET SLIM

STAY SLIM

insist on STAUFFER the only home plan backed by 20 years of reducing success The Stauffer principle has helped more than 5 million women remake their figures.

It's a complete figure-beautifying plan of effortless exercise and calorie reduction.

Stauffer's ‘Magic Couch’— The Posture-Rest unit— provides controlled rhythmic motion.

Helps take off excess weight, remove unwanted inches.

No starvation diets. No strenuous exercise.'

‘Exercise comes first with Stauffer. But it's effortless exercise—without work or strain— on Stauffer's Magic Couch. This exercise does away with inches * * * tones and firms hard-to-reach problem areas * * * improves posture * * * even reproportions. When you want to lose both inches and pounds, exercise on the Magic Couch is combined with sensible calorie reduction. This brings about results you just can't get from diet alone. And every woman who reduces with Stauffer does it with the help and encouragement of another woman * * * a trained Stauffer counselor.’

‘Greet Summer

With a lovelier figure

How you'll look in a swimsuit depends on how you REDUCE. No longer need heavy hips, thighs, legs and waistline ‘rolls' embarrass you. Beautify your posture, reproportion your figure into more youthful looking, lovelier lines by trimming away unwanted inches with the famous STAUFFER HOME REDUCING PLAN of effortless exercise and calorie reduction. * * *’

‘* * * The Magic Couch (Posture Rest) is the heart of the Stauffer Home Reducing Plan of effortless exercise and calorie reduction. * * *’

‘You lose unwanted pounds.

You lose inches where you need to— from hips, tummy, thighs.

You achieve a graceful, lifted posture.

Your skin fits smoothly— sagging tissue is firmed and toned. * * *‘

‘There is more to the Stauffer Home Plan than just reducing. Rather, it is a complete program of scientific figure control. It not only takes off excess weight, but also removes hard-to-lose inches from ankles, thighs, hips and tummy.

‘For a woman, it tones and firms sagging muscles, beautifies posture for a lovelier carriage, and gives her a more youthful-looking figure.’

Amini Sues Yuan Tai Enterprises - Again

noreply@blogger.com (Unknown) — Mon, 07 Jul 2014 21:19:00 +0000

Amini Innovation Corporation ("AICO") filed suit on June 30, 2014 in the United States District Court for the Central District of California (AICO's home court) again Yuan Tai Enterprises, Inc., a Texas corporation. The lawsuit involves two of several tools available to furniture manufacturers to defend its designs: namely patents and copyright. AICO is suing Yuan Tai again after Yuan Tai allegedly violated a 2007 agreement that settled earlier litigation. AICO is suing on 21 copyright registrations and 14 design patents. This approach highlights the one-two punch that copyright registrations and design patents provide. While the scope of protection under the copyright registrations may overlap with the design patent protection, there is a different standard for infringement (substantially similar (copyright) versus whether a consumer would confuse one with the other (design patent)). Armed with both copyright registrations and design patents, a furniture manufacturer has potentially strong tools at its disposal to enforce its rights. The case is: Amini Innovation Corporation v. Yuan Tai Furniture, Inc. a/k/a Yuan Tai Enterprises, Inc., Case No. 2:14-cv-05071. An image of one of the protected AICO pieces is shown below:

NC Begins Work On Patent Troll Bill

noreply@blogger.com (Unknown) — Sun, 27 Apr 2014 10:13:00 +0000

Guest Authored by David Boaz

Recently, a joint legislative committee sent a report to the North Carolina General Assembly that recommended passing an anti-troll bill during the legislature’s 2014 Short Session. A copy of the bill may be found here. The proposed bill, titled “Patent Abuse Bill,” would create a civil and criminal cause of action aimed at preventing bad faith assertions of patent infringement. The bill also make it extortion to obtain or attempt to obtain property through a bad faith assertion of patent infringement. Extortion is a Class F felony under North Carolina law.

On the civil side, the bill would make it an unfair or deceptive trade practice to assert patent infringement in bad faith. Persons entitled to bring a claim are either the N.C. Attorney General or a person called a “Target,” i.e., a person who receives a demand letter that alleges infringement, is threatened with litigation or sued for infringement, or has customers who have received a demand letter asserting that the person’s product or service has infringed a patent.

The bill provides a number of factors to aid in determining whether a patentee has asserted a claim in bad faith, including whether the patentee compared the claims in the patent to the accused product, whether the patentee made an unreasonable licensing demand, whether the patentee knew or should have known its claims would be barred by prosecution history estoppel, and whether the patentee knew or should have known that its claims were meritless. Enumerated factors indicating good faith include whether the patentee responds to an accused infringer’s requests for information regarding the patent within a reasonable time, whether the patentee substantially invests in the active practice of the patent, and whether the patentee has demonstrated good faith business practices or has been successful in previous efforts to enforce the same/similar patent.

If a court finds a reasonable likelihood of a bad faith assertion, the court must require the claimant to post a bond estimated to equal the costs and fees to litigate the claim, unless the claimant has assets equal to the amount of the proposed bond. The bill also provides for equitable remedies, costs, attorneys’ fees, and treble damages. If the claimant has no substantial interest in the patent other than the assertion of infringement, a court is permitted to join “Interested Parties,” whom the court can hold jointly and severally liable if the claimant is unable to pay. An “Interested Party” is defined as a person other than the claimant who is an assignee of the asserted patent, has a right to enforce or sublicense the patent, or has a direct financial interest in the patent.

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

noreply@blogger.com (Unknown) — Wed, 26 Mar 2014 20:27:00 +0000

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 23^rd 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.

Federal Circuit Clarifies Test for Obviousness of Design Patents

noreply@blogger.com (Unknown) — Wed, 02 Oct 2013 17:35:00 +0000

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.

Copyright + Trade Dress = Solid Combination For Furniture Manufacturers

noreply@blogger.com (Unknown) — Wed, 18 Sep 2013 02:38:00 +0000

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.

Stop Infringement At The Border

noreply@blogger.com (Unknown) — Wed, 05 Jun 2013 13:31:00 +0000

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.

When Is A Couch, Just A ... Sofa

noreply@blogger.com (Unknown) — Fri, 08 Mar 2013 03:09:00 +0000

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.

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

noreply@blogger.com (Unknown) — Thu, 07 Mar 2013 03:01:00 +0000

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?

noreply@blogger.com (Unknown) — Thu, 07 Mar 2013 02:40:00 +0000

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.

Your Hotel Desk Chair May Be Patented

noreply@blogger.com (Unknown) — Thu, 21 Feb 2013 01:03:00 +0000

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!

Textile Company Slams Furniture Manufacturer and Retailers with Copyright Infringement Suit

noreply@blogger.com (Unknown) — Wed, 13 Feb 2013 20:46:00 +0000

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.

Federal Circuit Addresses Pleading Standard for Design Patents

noreply@blogger.com (Unknown) — Fri, 08 Feb 2013 17:43:00 +0000

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:

allege ownership of the patent
name each defendant
cite the patent that is allegedly infringed
state the means by which the defendant allegedly infringes
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).

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

noreply@blogger.com (Unknown) — Mon, 21 Jan 2013 17:21:00 +0000

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.

Online Retailers Not Immune From Trademark Infringement

noreply@blogger.com (Unknown) — Sat, 24 Nov 2012 19:27:00 +0000

Online retailer Wayfair, LLC, d/b/a www.wayfair.com, filed a trademark infringement action against The Furniture Authority for using Wayfair's house mark, WAYFAIR, and its WILDON HOME mark, both of which are federally registered on The Furniture Authority's website. Civil Action No. 1:12-cv-12155 (D. Mass) (Nov. 19, 2012). According to the complaint, a search of The Furniture Authority's website using "Wayfair" produces two hits for products that include the Wayfair name and a search using "Wildon Home" produces 671 results.

With the dismissal and settlement of the Google-Rosetta Stone case, the use of another's trademark in advertising is still undecided. However, using another's trademark directly on your website is actionable and this case shows that online retailers need to guard their trademarks just as much as traditional brick-and-mortar retailers.

What's The "Best" Trademark?

noreply@blogger.com (Unknown) — Fri, 23 Nov 2012 12:34:00 +0000

Best Selling Home Decor Furniture, LLC (Canoga Park, CA) ("BSHDF") has filed a declaratory judgment lawsuit against Best Chairs, Inc. (Ferdinand, IN) seeking a judgment that BSHDF's use of "Best" as a corporate name does not infringe any trademark rights of Best Chairs. Civil Action No. 2:12-cv-9568 (C.D. Cal.). The complaint alleges that Best Chairs' attorney sent a letter to BSHDF demanding that BSHDF stop using "Best" as a trademark or trade name and to withdraw its U.S. trademark application for:

Best Chair has yet to respond to BSHDF's complaint. The case exemplifies the need to select a unique identifier for a company trademark. In some cases, a company can take a descriptive word and make it a trademark (e.g., Fine Furniture Design). In other cases, selection of a word like "best" is destined to cause these type disputes.