Furniture Law Blog

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

2012-01-12T11:30:00.000-05:00

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

2012-01-10T11:25:00.003-05:00

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?

2012-01-09T16:43:00.000-05:00

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

2011-12-19T09:55:00.000-05:00

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

2011-11-29T10:22:00.001-05:00

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

2011-08-05T09:58:00.001-04:00

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

2011-06-10T10:40:00.000-04:00

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

2011-06-03T11:22:00.000-04:00

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?

2011-05-27T22:27:00.000-04:00

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

2011-05-25T09:18:00.000-04:00

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

2011-04-12T13:52:00.001-04:00

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

2011-04-05T10:01:00.000-04:00

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

2011-04-04T11:29:00.000-04:00

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

2011-04-02T16:13:00.000-04:00

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

2011-03-24T06:29:00.000-04:00

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

2011-03-01T15:11:00.001-05:00

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

2011-02-04T09:56:00.001-05:00

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

2011-01-06T13:13:00.000-05:00

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

2011-01-06T12:58:00.000-05:00

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

2010-11-20T06:45:00.005-05:00

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!

Jack Hicks To Speak At AIPLA

2010-10-18T21:01:00.001-04:00

GREENSBORO, N.C.—Womble Carlyle patent attorney Jack Hicks will speak at the nation’s largest gathering of intellectual property attorneys.

Hicks is among the presenters at the 2010 American Intellectual Property Law Association Annual Meeting, taking place Oct. 21-23 in Washington, D.C. He will address international patent issues as part of a panel on design law. Design protection for many industries, from aerospace to furniture, is becoming increasingly important as consumers and customers have a heightened value for aesthetics as they impact product acceptance.

Joining Hicks will be Pedro Rodinger and Etienne Sanz de Acedo of the Office for Harmonization in the Internal Market in Alicante, Spain. Hicks spent the summer working with patent attorneys at the European Union’s headquarters of Community Design protection in Alicante. This assignment involved studying how Europe protects original designs for all types of industries, and Hicks, Rodinger and Sanz de Acedo will discuss these issues with U.S. patent attorneys at the AIPLA meeting.

In addition, Hicks spent part of his summer at the European Patent Office in Munich, Germany. During this time, he prepared a module entitled “Tips for U.S. Patent Practitioners in Europe,” which will be published later this year.

Jack Hicks has more than 20 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. He is a frequent author and speaker on patent issues. Hicks practices in Womble Carlyle’s Greensboro office.

Persian Carpet Files Copyright Suit On "Ginko" Rug

2010-09-04T06:05:00.004-04:00

On August 6, 2010, The Persian Carpet, Inc. (a Durham, North Carolina based company) filed a copyright infringement action in the United States District Court for the Middle District of North Carolina (Civil Action No. 1:10-cv-604) against Tashi Dhan Galaicha Udhyog (a business in Nepal) and Phurbu Nyima Sherpa (a principal of Tashi Dhan and a resident of New York) alleging infringement of its copyright in "The Ginko" rug.

The Persian Carpet is owner of Certificate of Registration No. VA 1-638-497. The complaint alleges that defendants sold the allegedly infringing rugs to L. & J.G. Stickley and "disseminated, and sold hundreds of rugs which are copies of The Ginko rug ...." The Persian Carpet's Ginko rug is shown below. Defendants have not been served as of the date of this posting.

The Dangers of Delivering Furniture

2010-09-04T05:54:00.002-04:00

OK, so this isn't exactly about intellectual property law and furniture, but the story caught our attention.

On August 30, 2010, Furniture Today reported that two furniture delivery men were taken hostage in Chattanooga, Tennessee when making a delivery. Apparently, the delivery men were held at gunpoint by a 76-year old man angry about an error with the furniture delivered to his house. The man, Thomas Gunn (yes, that's his real name), took the delivery men to the Select Comfort store at Hamilton Place Mall in an attempt to resolve the error.

Law enforcement spotted the three men, including Mr. Gunn's handgun, as they entered the mall and Mr. Gunn was taken into custody. Mr. Gunn has been charged with kidnapping, aggravated assault, and carrying an unlawful weapon.

Furniture Today's article may be found here.

Kickin' It Old School

2010-09-04T05:20:00.005-04:00

On August 5, 2010, Schoolhouse Furniture, Inc. and Artco-Bell Corporation filed a patent infringement action against School Specialty, Inc. for the alleged infringement of U.S. Design Patent No. D566,979. Artco-Bell is the exclusive licensee of the '979 Patent. The patent covers a relatively simple chair. Comparisons of the figures from the '979 Patent and photographs of School Specialty's chairs are below. The '979 Patent is a good example of how design patents can protect furniture designs that are not subject to copyright protection.

Plaintiffs are represented by Brinks Hofer Gilson & Lione.

Sotheby's Sues For Trademark Infringement

2010-09-04T04:54:00.003-04:00

On August 2, 2010, world-famous international auction house Sotheby's filed an action in United States District Court for the Southern District of New York (Civil Action No. 1:10-cv-5752) against Paris Lighting, Inc., a New York corporation, and two New York City residents for trademark infringement, false designation of origin, trademark dilution, and unfair competition arising out of defendants' use of the SOTHESBY mark in connection with the sale of furniture and lighting.

SOTHESBY has several federal trademark registrations for furniture ("wood and metal furniture") and services related to furniture ("providing information via the global computer network in the field of furniture ...," "appraisal services for others for fine furniture ...," and "conservation and restoration services in the field of fine furniture ..."). Defendants are alleged to be operating a wholesale and retail furniture and lighting fixture store doing business as "European Crystal Chandelier" in New York, New York and using the SOTHESBY mark in connection with the sale of furniture and lighting. Defendants also filed a trademark application to register the trademark SOTHESBY in connection with various types of furniture.

Sotheby's is represented by Cowan Liebowitz & Latman. A Google Maps street view photo of defendants' store is below.

Fourth Circuit Strengthens Copyright Protection For Furniture

2010-08-26T14:03:00.006-04:00

On August 20, 2010, the Fourth Circuit Court of Appeals affirmed the Middle District of North Carolina's rulings on liability and damages against Collezione Europa. The decision brings to a close litigation originally filed in 2004.

The case is primarily a copyright case with an interesting twist that brings trademark and unfair and deceptive trade practices law into play. Universal sold two collections, the Grand Inheritance Collection and the English Manor Collection. Although Universal's designer admitted to consulting public domain sources, and combining elements from the public domain, Universal filed copyright applications claiming the "decorative sculptural designs on furniture; adaptation of preexisting decorative designs on furniture; compilation of decorative designs on suites of furniture." The Copyright Office issued registrations to Universal on the same day it received the applications.

At the request of a customer, Collezione agreed to design furniture collections that mimicked Universals' collections. Collezione believed that the Universal designs were not entitled to copyright protection. At the High Point Market, Collezione displayed Universal furniture with its labels removed in its showroom when it introduced its collections.

The district court awarded Universal a permanent injunction prohibit Collezione from producing or displaying derivative works of Universal's copyrighted collections and from selling the infringing products. The district court awarded Universal $11 million, representing Collezione's gross revenues on the infringing items. Collezione failed to produce an accurate accounting of its expenses. Collezione appealed the liability and damages decisions.

On appeal, the Fourth Circuit affirmed. The appellate court found that Universal owned valid copyrights that protected sufficiently original and conceptually separable elements in Universal's collections. The court noted the copyright applications only claim decorative sculptural designs and compilations of decorative designs and that such designs meet the threshold for originality even if they consist of a compilation of public domain design elements. The designer still selected and arranged them in an original manner. The court also found that the sculptural elements on Universal's collection were conceptually separable from the utilitarian features.

As in interesting side note, the district court originally denied Universal's motion for a preliminary injunction and the Fourth Circuit affirmed that denial. The district court originally found the claimed designs were not conceptually separable from the furniture's utilitarian function, rendering them unprotectable. In its opinion, the Fourth Circuit noted this tension in the record and commented that the earlier decision was based on a "sparse record" and that it was not the court's intention to "categorically exclude Universal's and other comparable design compilations from copyright protection."

A copy of the decision may be found here.

Custom Furniture: Innovative Plan or Illegal Imitation?

2010-08-26T09:50:00.005-04:00

Today's Wall Street Journal, San Francisco Bay Area edition, includes a very interesting article on start up furniture companies whose business model includes reproducing popular furniture designs on a custom basis. The article describes two businesses: Sphere Design and Furniture Envy, both based in San Francisco. The companies custom build furniture based on designs from Pottery Barn, Crate & Barrel, Room & Board, and others. Customers bring the designs to the companies who recreate the design or something similar.

While the companies claim to deliver product that is as good or better than the name-brand versions, the business practice raises the issue of whether such reproductions are an innovative way to boost domestic furniture production, provide U.S. jobs, and deliver quality product or possibly infringe upon the intellectual property rights of the companies whose furniture is being copied. Without concrete examples of an original and a reproduction, it is impossible to answer that question. In addition, such model arguably takes royalties away from the original independent designers who stand to profit from the sell of the branded furniture, even if there is no intellectual property protection of the furniture.

Furniture designs can be protected by design patents, copyright, and trade dress rights. An "oldie but goodie" primer on furniture law may be found here. These start ups would be well advised to study up on how furniture can be protected and conduct a reasonable investigation into pieces before recreating them. In addition, the customers who bring these designs to the companies could potentially be liable for inducing infringement. A similar scenario plays out when a customer brings copyright-protected blueprints and drawings to an architect or builder who slavishly reproduces them. This lands the architect or builder and the homeowner in legal hot water, i.e., a copyright infringement action. It will be interesting to see if the business model of these new custom furniture companies makes it and if they can avoid tangling with the companies whose designs they are recreating.

"X-frame" Chair Design Not Protected Trade Dress

2010-08-18T08:47:00.004-04:00

The United States Court of Appeals for the Seventh Circuit ruled August 11, 2010 that Greenwich Industries, LP's "x-frame" folding chair design was functional and thus ineligible for protection even as a common law trademark.

The case began in the United States District Court for the Northern District of Illinois. The district court invalidated Greenwich's registered trade dress rights upon the request of competitor Specialized Seating, Inc in a declaratory judgment action filed in 2005. The Seventh Circuit affirmed the district court's holding that the x-frame construction was designed to optimize the chair's strength-to-weight ratio, rather than create a distinctive appearance that would help consumers distinguish it from similar brands. The appellate court held that "[i]t looks the way it does in order to be a better chair, not in order to be a better way of identifying who made it." In addition to its functionality argument, Specialized argued that Greenwich withheld as many as four expired patents covering the x-frame design from the U.S. Patent and Trademark Office thereby misrepresenting that its design was not functional.

The case is Specialized Seating, Inc. v. Greenwich Industries LP, case number 07-1435, U.S. Court of Appeals for the Seventh Circuit. The Seventh Circuit's decision may found by clicking here.

Greenwich's registered trade dress (now invalid):

Award Winning Logo

2010-08-17T08:23:00.002-04:00

Thomas & Gray's new logo was recently named one of the top 10 logos of the year by 2010 How Magazine Logo Design Awards. The mark, shown below, emphasizes that furniture companies need to establish brand recognition on the brand level and then extend that to collections and even pieces. This can be coupled with celebrity licensing (e.g., Thomasville's Hemingway collection) to further protect the name and brand identity of the furniture company and its collections.

Home Meridian Sues Baby's Dream Furniture

2010-08-17T06:06:00.005-04:00

On August 13, 2010, Home Meridian International, Inc. ("HMI") filed suit in the Middle District of North Carolina against Baby's Dream Furniture, Inc. ("Baby's Dream") (Civil Action NO. 1:10-CV-625 (M.D.N.C.). The suit accuses Baby's Dream of secretly obtaining one or more pieces of HMI's distinctive Summer's Evening collection of baby furniture, copying the furniture, and thereafter selling an unlicensed "knockoff." HMI's suit alleges trade dress infringement and unfair competition.

Baby's Dream collection:

HMI's Summer's Evening collection:

Collection Against Collezione

2010-08-17T05:57:00.002-04:00

Two items of interest in the on-going saga of intellectual property enforcement against bankrupt Collezione Europa and its principals, Paul and Leonard Frankel.

AICO/Amini recently settled with the Frankels at the end of July after first bringing copyright and design patent infringement claims against Collezione Europa in federal court in New Jersey. The terms of that settlement are confidential but AICO's approach represents an aggressive strategy. When Collezione filed for bankruptcy in 2008, AICO went after the personal assets of the Frankels for their involvement in Collezione's infringing activities. The strategy paid off to some degree, although it sounds like AICO was not terribly thrilled with the dollar amount they got at the end of the day.

In another matter, Universal Furniture is continuing to pursue the individual assets of the Frankels in federal court in North Carolina, again after Collezione filed for bankruptcy. In the North Carolina case, Paul Frankel challenged the court's personal jurisdiction but his motion was denied. Leonard Frankel did not respond to the complaint and default has been entered against him. From the docket, it looks like the case is in the discovery phase now. The case is Civil Action No. 1:08-cv-395 (MDNC).

Although the strength of an infringement claim is of paramount importance in any patent, copyright, or trademark case, one should not forget that a judgment may be worth little if the defendant is judgment-proof.

Two Men And A Lawsuit

2010-08-16T21:26:00.005-04:00

Well, actually, it's one guy and a lawsuit.

Popular franchisor Two Men and a Truck/International, Inc. recently filed suit against an individual in Raleigh, NC doing business as "Furniture Cab" over the use of the "Two Men and Truck" name in his Internet advertising (shown below). The suit was filed in the Eastern District of North Carolina. The suit is a useful reminder that trademark law covers services as well as goods. In some circumstances, a company will want a registration covering goods that it offers, and a registration on the same mark for services that it offers.

Pan-American Products Sues Rooms to Go

2010-07-12T10:12:00.003-04:00

On July 2, 2010, Pan-American Product & Holdings, LLC (Guilford Co., NC) sued Rooms to Go and several related entities for copyright infringement, breach of contract, unjust enrichment, conversion and misappropriation, unfair competition and unfair and deceptive trade practices. The case is was filed in the United States District Court for the Middle District of North Carolina.

Pan-American alleges rights in certain aspects of the "Retro Collection," including (1) a collection of panels with alternating grains in order to create a sense of depth and visual tension; and (2) tapered appliques. The designer of the Retro Collection met with representatives of RTG and it was agreed that RTG would sell the Retro Collection and use Pan-American as a broker in acquiring the furniture from manufacturers. As part of this agreement, samples of the Retro Collection were provided to RTG. After further negotiations, the deal stalled.

Several years later, RTG released the "Chaplin Collection." Pan-American alleges that the Chaplin Collection infringes its rights in the Retro Collection and RTG did not use Pan-American as the broker. RTG's Chaplin Collection is shown below:

Ex-Cell Sues Carnation Home Fashions

2010-07-12T09:42:00.004-04:00

On July 2, 2010, Ex-Cell Home Fashions, Inc. sued Carnation Home Fashions in the United States District Court for the Western District of North Carolina for false designation of origin, trade dress infringement, and design patent infringement. For its claims, Ex-Cell alleges that Carnation is infringing its trade dress in hang tags used in connection with shower curtains and liners. Ex-Cell identifies its trade dress as the "distinctive appearance of the total image and overall appearance of the EXCELL Shower Curtain package, including the size, shape, color combination, and texture, and serves to identify such products as emanating from Plaintiff." Ex-Cell further alleges that Carnation is selling counterfeit shower curtains with the EXCELL mark and confusingly similar hang tags. Ex-Cell also alleges infringement of U.S. Design Patent No. D611,330 for an ornamental shower curtain hook. A figure from the '330 patent is below:

Century America Sues On Three Design Patents

2010-06-21T09:33:00.004-04:00

On June 10, 2010, cabinet and hardware designer and retailer Century America, LLC (Grand Rapids, Michigan) sued Knobs and Pulls.com, Inc. (Nampa, Idaho) and Pride Industrial, LLC (Cincinnati, Ohio) in the United States District Court for the Western District of Michigan for infringement of United States Design Patent Nos. D553,944; D558,557; and D574,216. The design patents cover cabinet handles and pulls. Fig. 8 from the '944 patent and Fig. 1 from the '557 patent are shown below.

Naos Sues On Extendable Table Patent

2010-06-21T09:11:00.003-04:00

On June 8, 2010, Italian design company Naos, SRL (Florence, Italy) filed a patent infringement action against Sunset International Trade, LLC, CSN Stores, LLC, and Wal-Mart Stores, Inc. for infringing United States Patent No. 5,458,070, entitled "Extendable Table With Two Rotating Elements, For Use As A Piece Of Furniture." A copy of the complaint may be found by clicking here.

A figure from the '070 patent is shown below:

Wal-Mart's version of the table:

True Innovations Sues On Design Patent

2010-06-21T09:00:00.005-04:00

On June 1, 2010, True Innovations, Inc. filed a complaint in the Northern District of California against Marco Group, Inc. (Missouri) and Zhejiang Qianglong Seating Co. (China) alleging infringement of United States Design Patent No. D494,791 entitled "Chair Arm Support" (Civil Action No. 10-cv-2499-EDL). A copy of the complaint may be found by clicking here.

The '791 patent is a good example of claiming just a portion of an item of furniture. The solid lines in the drawings define the scope of the claims. Here, the patentee True Innovations is claiming just the arm support. The support may appear on any chair and still infringe the '791 patent. A copy of the '791 patent is attached to the complaint and Fig. 1 is reproduced below:

Fabric Printing Company Loses Bid To Enforce Design Based On "Clip Art"

2010-06-14T11:58:00.003-04:00

Fabric printing company L.A. Printex sued clothing retailer Aeropostale and its supplier for infringing Printex's copyright registration for a textile design entitled "Geometric" in the Central District of California. The registration include 13 distinct patterns. The allegedly infringed pattern consists of a series of identically-sized snowflakes arranged in a heart-shaped pattern. Printex's designer copies the design for the snowflakes from Adobe Photoshop 7.0's "clip art" collection.

In its summary judgment motion, Aeropostale argued: (1) the Adobe End User License Agreement prevented Printex from registering derivative works based on clip art; (2) Printex fraudulently misled the Copyright Office by failing to disclose the Adobe clip art; and (3) Printex's registration is for a group and Printex failed to offer evidence that it published the patterns as a "single unit" as the Copyright Act requires.

The court rejected the first two arguments, holding that the EULA only prohibited users from asserting rights in the software and because of that, Printex had not failed to disclose a fact that might have prevented the Copyright Office from issuing the registration. However, the court held that Printex failed to submit any evidence that it published the snowflake design independent of the other designs in the registration. Noting that the Copyright Office has not promulgated regulations allowing for group registrations of fabric patterns, the court held that Printex did not have a valid registration in the snowflake design alone.

The opinion underscores the need to evaluate the material for which protection is sought, and how to craft the appropriate protections for those materials. The full opinion may be found here.

Sleepy's Files Trademark Action Over Macy's Use Of "Mattress Professionals"

2010-05-21T07:39:00.003-04:00

New York based Sleepy's LLC filed suit against department-store chain Macy's for infringing Sleepy's trademark "the mattress professionals." The case was filed in United States District Court for the Southern District of New York (Civil Action No. 10-cv-3982). In its complaint, Sleepy's seeks an injunction against Macy's use of the phrases "Ask Our Mattress Pros" and "Factory-Trained Mattress Professionals."

Round Up of Recent Furniture Cases

2010-05-18T10:40:00.008-04:00

Several new furniture IP cases were filed within the last month or so. Here is a summary:

1. Nood Fashions, LLC v. Nood Furniture and Design Ltd., 4:10-cv-49 (N.D. Ga.) - Plaintiff Nood Fashions, LLC brought suit against defendant Nood Furniture and Design Ltd. for trademark infringement and unfair competition. Plaintiff Nood Fashions manufactures and distributes carpet and flooring using the "NOOD" mark. Defendants Nood Furniture and Design Ltd. is a Canadian company is using the "NOOD" mark for and on its website - http://www.nooddesign.com/ - in connection with furniture and other home furnishings. Defendant is using a very similar logo:

2. On April 23, 2010, Jangsoo Industry Co., Ltd., a Korean company, and its exclusive U.S. distributor brought an action in the United States District Court for the Northern District of Georgia against Jangsoo Furniture Land, Inc. for trademark infringement and unfair competition under federal and state law (Civil Action No. 1:10-cv-01225). Jangsoo Industry manufacturers and, through its distributor, sells heated electric mattresses and stone beds, mainly to the Korean community in and around Atlanta. Plaintiff is the owner of over a dozen marks involving the component JANGSOO in connection with beds. Plaintiff alleges that defendant was a former licensee that had been terminated but continues to use the JANGSOO marks. Plaintiff filed for a preliminary injunction along with its complaint. It appears that defendants have not responded.

3. On April 14, 2010, Herman Miller sued multiple defendants, including an unknown company in China, in the United States District Court for the Northern District of California (Civil Action No. 3:10-cv-01608). In its complaint, Herman Miller alleges that defendants have engaged in trademark infringement, trade dress infringement, and unfair competition for the production and sale of "knockoff EAMES trademark in Lounge Chairs and Ottomans" and "knockoff EAMES Aluminum Group and Soft Pad" furniture. The federal trademark registration held by Herman Miller for one of the Eames chairs is below.

MIG Enterprises Sues For Misappropriation Of Website Content And Cyber Attacks

2010-03-25T14:11:00.006-04:00

Online furniture retailer MIG Enterprises ("MIG") sued several defendants for what MIG claims to be malicious attacks on its website and misappropriation of its website's content. MIG's complaint was filed March 22, 2010 in the United States District Court for the Eastern District of Pennsylvania (Case No. 2:10-cv-1249). A copy of the complaint may be found here.

In its complaint, MIG alleges that defendants misppropriated content from MIG website, http://www.furniturexo.com/, by copying product image files, copyrighted metadata, copyrighted text, graphics files, and custom-created metadata associated with specific products. MIG alleges that the misappropriated content is being used at http://www.mazeltovfurniture.com/. MIG argues that in addition to misappropriating its intellectual property, defendants have been unjustly enriched by benefitting from the man hours put in to optimize MIG's website. In addition, MIG alleges that defendants have launched "sustained denial-of-service" attacks on MIG's website that render it unavailable to the public.

It will be interesting to see how this plays out in view of the Google Adwords cases.

Jack Hicks Speaks On IP Issues To High Point University Home Furnishings Class

2010-03-25T14:07:00.001-04:00

Womble Carlyle's Jack Hicks recently discussed "IP Protection for the Home Furnishings Industry" with Professor Richard Bennington's Home Furnishings Marketing Class at High Point University.

Jack has discussed this key industry topic with Professor Bennington's class several times in recent years. He is a frequent author and presenter on intellectual property and patent issues relating to the furniture industry. For example, Jack has given several recent presentations on how companies can deal with knock-off furniture designs.

Womble Carlyle's Jack Hicks Named First VP Of AHFA's Suppliers Division

2010-03-22T21:20:00.002-04:00

Womble Carlyle attorney Jack Hicks has been named the First Vice President of the American Home Furnishings Alliance's Suppliers Division. In this capacity, Jack will participate in the AHFA Board of Directors meetings, including the Board's upcoming meeting in Washington with elected officials.

The Suppliers Division works to improve the effectiveness of suppliers and manufacturers serving the furniture industry by addressing issues, building communications between suppliers and buyers and sponsoring programs that promote the furniture industry.

Jack spent 2009 as the Division's Second Vice President. He is a patent attorney in Womble Carlyle's Greensboro office with extensive experience counseling clients on intellectual property issues.

Kingsdown Sues Spring Air On "Automatic Mattress Selection System" Patent

2010-03-18T10:14:00.004-04:00

Mebane, North Carolina based Kingsdown, Inc. filed a patent infringement action against Spring Air International, LLC of Chelsea, Massachusetts on March 16, 2010 in the United States District Court for the Middle District of North Carolina (Civil Action No. 1:10-cv-00212).

The complaint alleges infringement of U.S. Patent No. 6,741,950 ("the '950 patent"), entitled "Automatic Mattress Selection System." A copy of the patent may be found by clicking [here]. The '950 patent is directed to a method and system for selection of mattresses, primarily through a pressure-mapping system involving a pressure-sensitive air mattress connected to a computer system. Kingsdown's complaint alleges that Spring Air's "Comfort Silhouette Imaging" system consitutes "contributory and/or induced infringement" as well as direct infringement. Under recent case law applying the Supreme Court's Iqbal decision, it is doubtful that Kingsdown's contributory and induced infringement claim would withstand a motion to dismiss as it fails to identify the other parties involved in the infringement and how Kingsdown induces or contributes towards their infringement.

Kingsdown is represented by Mark Thomas of Williams Mullen.

Jack Hicks To Discuss Design Protection & Copyrights At Global Intellectual Property Academy

2010-03-16T10:54:00.003-04:00

Womble Carlyle attorney and Furniture Law Blog Co-Author Jack Hicks is among the speakers at the Global Intellectual Property Academy Patent Industrial Design Program. The three-day international event (March 16-19) is organized by the U.S. Patent and Trademark Office.

Mr. Hicks will be speaking on "Design Protection Through U.S. Copyrights: Industrial Design or Applied Art?" His presentation is scheduled for March 19th.

The Patent Industrial Design Program will be held in the Global Intellectual Property Academy office, located in the James Madison Building, in Alexandria, Virginia. The event draws intellectual property law experts from all over the globe - for example, other presenters hail from Costa Rica, Pakistan, Slovakia, Jamaica and Bulgaria, just to name a few nations represented at the event.

Jack Hicks is a licensed patent attorney who assists clients in determining the type and scope of intellectual property protection that is best suited for their business goals. Named as one of The Best Lawyers in America, Mr. Hicks counsels clients in a wide range of industries, including those involving furniture, home furnishings, general mechanical, electro-mechanical, manufacturing processes, chemical and "business methods." He is a frequent speaker and author on patent issues. Mr. Hicks practices in Womble Carlyle's Greensboro, North Carolina office.

Federal Circuit Clarifies Test For Design Patent Infringement – Factoring Out Functional Elements

2010-03-15T14:32:00.006-04:00

On March 9, 2010, the United States Court of Appeals for the Federal Circuit issued its opinion in Richardson v. Stanley Works, Inc. (Case No. 2009-1354) (Lourie, J.). In its opinion, the court clarified the claim construction process when the claimed design includes functional elements. In doing so, the court confirmed that the infringement analysis still involves a comparison of the overall designs.

In Richardson, the plaintiff/patentee filed an infringement action against tool manufacturer Stanley alleging that Stanley’s "Fubar" design infringes U.S. Patent No. D507,167 ("the '167 patent") for Richardson’s "Stepclaw" tool. The '167 patent claims the ornamental design of the tool depicted in figures 1 and 2, shown below:

Stanley obtained U.S. Patent No. D562,101 ("the '101 patent”) on the basic Fubar design. All versions of Stanley’s Fubar are built about Stanley’s patented design. Figures 1 and 5 of Stanley’s '101 patent are shown below:

After a bench trial, the district court entered judgment of noninfringement in favor of Stanley. In its order, and as part of claim construction, the district court distinguished the ornamental aspects from the functional aspects of Richardson's design and then determined that an ordinary observer, after discounting the functional elements of Richardson’s design, would not be deceived into thinking that the Fubar tools were the same as Richardson’s Stepclaw. Richardson appealed.

On appeal, Richardson claimed that the district court erred in its claim construction by separating the functional aspects of the design from the ornamental ones, rather than considering the design as a whole, citing Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008). Richardson contended that a design element is purely functional only when the function encompassed by that element cannot be performed by any other design. Further, Richardson contended that the overall design of the '167 patent is not dictated by the useful elements found in the tool, and that the functional parts of its design remain relevant to the scope of the patented claim.

The Federal Circuit disagreed with Richardson. The Federal Circuit affirmed the district court’s claim construction, holding that where a design contains both functional and non-functional elements, the scope of the claim must be construed in order to identify the non-functional aspects of the design as shown in the patent. In addressing Richardson’s interpretation of Egyptian Goddess, the Federal Circuit stated that in that case, which abandoned the point of novelty test, the ordinary observer test should serve as the sole test for infringement. Although Egyptian Goddess proposes that the preferable course ordinarily for a district court is not to attempt to construe a design patent claim, there are a number of claim scope issues on which the court's guidance is useful to the fact finder. Among them is the distinction between the functional and ornamental aspects of a design.

The Federal Circuit held that with respect to the ‘167 patent, the district court properly factored out the functional aspects of Richardson’s design as part of its claim construction. Recognizing that a multi-function tool, such as the Stepclaw, has several functional components, the court made clear that only the non-functional ornamental designs of the article are eligible for design patent protection. The design of several elements of the Stepclaw, such as the handle, hammer-head, jaw, and crowbar, are dictated by their functional purpose and thus are properly separated out during claim construction. Further, the court added that while drawings are of "decisive importance" in design patent cases, district court's may use the drawings to explain functional and ornamental features.

Applying that claim construction, the Federal Circuit held that the district court properly held that the Stanley Fubar did not infringe the ‘167 patent. The court rejected Richardson’s contention that had the district court conducted a three-way comparison between the prior art, the patented design, and the accused products, it would have found the accused product design to be substantially the same as the patented one. Rather, the Federal Circuit agreed with Stanley’s contention that the only similarities between the patented design and the accused Fubar tools were those of unprotectable functional elements. However, the court stated that for infringement, the test is whether deception arises as a result of the similarities in the overall design, not of similarities in ornamental features in isolation. With respect to the Fubar and the '167 patent, the court found the design (non-functional) elements of the Fubar are significantly different from the '167 patent's ornamental elements. Thus, the "accused products embody an overall effect that cannot be found in the '167 patent design and hence cannot cause market confusion."

A copy of the decision may be found by clicking [here].

Bernhardt Files Declaratory Judgment Action

2010-03-04T06:25:00.003-05:00

Bernhardt Furniture Company, based in Lenoir, North Carolina, filed a declaratory judgment action against patentee Dario Cesar Antonioni in the United States District Court for the Western District of North Carolina (Statesville Division) (Case No. 3:10-cv-81) on Mar. 1, 2010. Bernhardt filed the case in North Carolina after Antonioni filed an infringement action in the United States District Court for the Central District of California on Feb. 10, 2010.

The declaratory judgment action sets forth an interesting chronology of events. While Antonioni claims to be the sole inventor on U.S. Design Patent No. D527,196, filed Sept. 23, 2004, Bernhardt claims that independent furniture designer Jeffrey Bennett designed Bernhardt's accused furniture, the Balance collection. Bernhardt further alleges that it has documentary evidence the predates the '196 Patent's earliest claimed priority date and that Antonioni was provided with documents that should have been provided to the Patent Office. In addition, Bernhardt alleges that the '196 Patent is invalid for leaving off a co-inventor.

An image from the '196 Patent is below:

Jack Hicks Speaks On Knockoff Furniture Designs In Magazine Interview

2010-02-18T14:54:00.001-05:00

Womble Carlyle attorney Jack Hicks shares his thoughts on fighting knockoff furniture designs in the current issue of Casual Living magazine.

Mr. Hicks, a patent attorney who represents some of the biggest clients in the furniture industry, says knockoff designs are on the rise, due to the faltering economy. But Mr. Hicks says there are legal avenues for companies who feel their designs are being copied by competitors.

"Intellectual property laws exist in large part to reward companies who take a risk with new designs," Mr. Hicks tells the maganize. "And when you hit a home run, it rewards them by giving them exclusivity."

Mr. Hicks is a frequent author and speaker on intellectual property issues pertaining to the furniture industry and is co-author of this blog.

Casual Living is a maganize covering the casual furnishings industry.

Gum Tree - Culp Battle Over Fabric Copyright Protection

2010-01-31T07:02:00.002-05:00

On August 21, 2009, High Point based fabric and ticking supplier Culp, Inc. sued Gum Tree Fabrics, Inc. of Tupelo, Mississippi for copyright infringement, unfair competition, and unfair and deceptive trade practices under North Carolina law. (Case No. 1:09-cv-648-NCT-LPA) The complaint is based on Gum Tree's continuing sales of its "Ringo" fabric, which Culp claims infringes its copyright on its "Palamino" fabric.

The parties were apparently trying to settle the matter. However, settlement talks have failed and Gum Tree appears ready to litigation. Gum Tree's answer to the complaint is now due Feb. 18, 2010.

Furniture Today's report may be found by clicking [here].

This is not the first time Culp has enforced its copyright rights. In April 2009 Culp filed several copyright infringement actions based on its fabric designs.

Federal Circuit Updates Design Patent Invalidity Standards

2010-01-23T11:52:00.007-05:00

In 2008 the United States Court of Appeals for the Federal Circuit issued its landmark decision in Egyptian Goddess, Inc. v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) (en banc) in which the court eliminated the point of novelty test for design patent infringement, stating:

[W]e conclude that the point of novelty test, as a second and free-standing requirement for proof of design patent infringement, is inconsistent with the ordinary observer test laid down in Gorham, is not mandated by Whitman Saddle or precedent from other courts, and is not needed to protect against unduly broad assertions of design patent rights.

Egyptian Goddess, 543 F.3d at 672. After Egyptian Goddess the test for determining infringement of design patents has been clear. However, the decision in Egyptian Goddess left open the question of how to determine invalidity of design patents under 35 U.S.C. §§ 102 or 103 since before Egyptian Goddess, the test for invalidity involved both the ordinary observer test and the point of novelty test. The patent bar and design patent holders were facing one standard for infringement and a different standard for validity. This disparity contradicted long standing maxims of patent law, such as "that which infringes, if later, would anticipate if earlier." Door-Master Corp. v. Yorktowne, Inc., 256 F. 3d 1308, 1312 (Fed. Cir. 2001) (citing Peters v. Active Mfg. Co., 129 U.S. 530, 537 (1889)). This uncertainty was recently resolved in International Seaway Trading Corp. v. Walgreens Corp., 589 F. 3d 1233 (Fed. Cir. 2009).

In International Seaway plaintiff sued for infringement of three design patents covering clogs, U.S. Patent Nos. D529,263, D545,032 and D545,033. Fig. 1 from the '263 Patent is shown below and illustrates a representative sample of the designs.

The district court granted summary judgment for defendants, finding that the three Seaway patents were invalid under 35 U.S.C. § 102 as anticipated by a patent assigned to Crocs, Inc. The district court did not rule on defendants' motion for summary judgment of obviousness. On appeal, Seaway contended that the district court erred by basing its invalidity determination solely on the ordinary observer test and not including the "point of novelty" test. On this question the Federal Circuit affirmed the district court's use of the ordinary observer test alone.

In addressing Seaways contention that the district court should have applied the point of novelty test during its anticipation analysis, the Federal Circuit first noted that:

Our decision Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), changed the test for infringement. In doing so, we held that the 'point of novelty' test should no longer be used in the analysis of a claim of design patent infringement and that the 'ordinary observer' test should be the sole test for determining whether a design patent has been infringed. [ ] The issue remains whether Egyptian Goddess also requires a similar change in the test for invalidity.

Seaway, 589 F.3d 1237 (internal quotations omitted). The Federal Circuit then reaffirmed the maxim that the same test for infringement should apply for validity and confirmed that this rule extends to design patent. Id. at 1239. Thus, "the ordinary observer test is the sole test for infringent" and "the ordinary observer test must logically be the sole test for anticipation as well." Id. Eliminating the "point of novelty" test for validity should, in many cases, allow more references to constitute invalidating prior art. This balances the holding in Egyptian Goddess that, in many cases, makes it easier to prove infringement.

Despite not having the issue of obviousness before it on appeal, the Federal Circuit went on to articulate that the ordinary observer test applies to the determination of obviousness. However, for design patents, the role of one of ordinary skill in the art is limited to "determining whether to combine earlier references to arrive at a single piece of art for comparison with the potential design or to modify a single prior art reference." Id. at 1240. Once a combined prior art design is constructed, "obviousness, like anticipation, requires application of the ordinary observer test, not the view of one skilled in the art." Id.

This new analysis for obviousness appears to conflict with 35 U.S.C. § 103, which states that a patent may not be obtained "if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains." Further, the design patent statute, 35 U.S.C. § 171 states that "The provisions of this title relating to patents for inventions shall apply to patents for designs ...." Thus, under the statute, obviousness should be determined by "a person having ordinary skill in the art," not the ordinary observer. It will be interesting to see how the case law develops around this aspect of the Seaway holding.

Strength Of Design Patents Seen In Case On Shower Rod

2010-01-23T11:21:00.005-05:00

A recently filed case in the United States District Court for the Eastern District of Pennsylvania demonstrates the power of design patents to protect design elements that are not eligible for copyright protection. In Zenith Products Corp. v. Design Home Solutions, LLC (Case No. 2:10-cv-00148-LS), Zenith Products alleges that defendant is infringing U.S. Patent No. D542,897, entitled "Curved Shower Rod." The '897 Patent covers a simple curved shower rod that could not be protected under copyright law. Ohter than the circular mounts located on each end, the only design element on the bar itself appears to be five rings around that bar that are likely joints. Home furnishing designers are well advised to consider design patents as a quick and inexpensive format for protecting relatively simple designs. The figures from the '897 Patent are shown below.

Sleepy's Awoken By Trademark Infringer

2010-01-23T10:35:00.003-05:00

On January 8, 2010, mega-mattress retailer Sleepy's filed a trademark infringement action against Mattress & Furniture Outlet Inc. in the United States District Court for the District of New Jersey (Case No. 2:10-cv-00108-FSH-PS). In its complaint, Sleepy's alleges that the Jersey City based defendant is offering mattresses, bedding, and furniture under the marks or names "SLEEPYZ," SLEEPYZ MATTRESS & FURNITURE OUTLET" and "SLEEPY'Z" as well as operating a website at http://www.sleepyzonline.com/. A visit to the website on January 23, 2010 indicates that defendant has already stopped use of the website. Sleepy's complaint alleges trademark infringement under 15 U.S.C. 1114, false designation of origin under (15 U.S.C. 1125(a), trademark dilution under 15 U.S.C. 1125(c), common law trademark infringement and unfair competition, dilution under New Jersey Stat. Ann. 56:3-13.20, and unfair competition under New Jersey Stat. Ann. 56:4-1.

NHFA Adds Glossary Of Furniture Terms

2010-01-23T10:30:00.002-05:00

The National Home Furnishings Association (NHFA) has added a glossary of furniture terms to its consumer-based website http://www.homefurnishings.com/. The glossary should be useful for consumers, the industry, as well as patent lawyers looking for an authoritative definition. The glossary may be viewed by clicking [here].

Kids II Sues Bright Start Furniture and Idea Nuova For Trademark Infringement

2009-12-29T10:37:00.003-05:00

Kids II, Inc. sued Bright Start Furniture, Inc. and Idea Nuova, Inc. for a host of trademark, unfair competition, and anti-cybersquatting claims under federal and state law on December 22, 2009 in the United States District Court for the Northern District of Georgia (Case No. 1:09-cv-3599-RWS). In its complaint, Kids II accuses defendants of misappropriating and misusing Kids II's BRIGHT STARTS federally registered trademark in connection with children's furniture and in domain names (http://www.brightstartfurniture.com/ and http://www.bsfbaby.com/ (now taken down)).

Kids II is headquartered in Alpharetta, Georgia and is represented by Alston + Bird, LLP. Defendants are located in New York City.

The mark used by defendants on at least one website is shown below:

Pottery Barn Protecting Names And Images

2009-12-13T07:32:00.001-05:00

Williams Sonoma, on behalf of subsidiary Pottery Barn, has sued an online home furnishings retailer, New Era, for trademark and copyright infringement as well as unfair competition under California law. See Williams Sonoma, Inc. v. Erika I. Almaguer Rodriguez d/b/a New Era Home Furnishings, 09-CV-5720 (N.D. Cal. Dec. 4, 2009). According to Pottery Barn's complaint, New Era is using the names and images of Pottery Barn furniture on its website. New Era did not help itself by expressly mentioning on its website that "[m]any styles sells [sic] are knock-offs of popular retail styles."

Furniture Manufacturer Directory - From A to Z

2009-11-28T06:16:00.001-05:00

I found a link to a list of furniture manufacturers' websites the other day. The list can be hehlpful to those looking to find a particular furniture company or that company's website.

The list may be found by clicking [here].

Former Collezione Executives Named As Defendants In AICO Case

2009-11-20T06:02:00.005-05:00

In a development similar to cases filed in North Carolina, the United States District Court for the District of New Jersey has named former Collezione Europa USA executives Paul and Leonard Frankel as defendants in AICO's copyright and patent infringement case against Collezione. The Frankels may now be held personally liable for the alleged copyright and patent infringement upon a proper showing of culpability. In its case, AICO seeks $2 million in damages from the defendants, which now include the Frankels.

AICO sought to add the Frankels as individual defendants after Collezione filed for bankruptcy in February 2008. The development tracks the naming of the Frankels as defendants in a spin-off lawsuit that resulted from copyright litigation brought by Universal Furniture. In the spin-off case against the Frankels, Universal seeks to recover the $11,225,777.10 judgment obtained against Collezione in the main case directly from the Frankels. The $11 million judgment against Collezione came down in February 2009 and precipiated Collezione's bankruptcy filing. In the spin-off case, Leonard Frankel has defaulted. The court denied Paul Frankel's motion to dismiss for lack of jurisdiction or, in the alternative, to transfer the case to New Jersey. The spin-off case is now proceeding to the discovery phase.

Becker Designed Sues Seven For Design Patent Infringement

2009-11-09T15:41:00.003-05:00

Becker Designed, Inc. ("BDI") sued International Prorduct Marketing, LLC, Evinco, Inc., One Way Furniture, Inc., Cymax Stores USA, Inc., Mattress USA, Inc., Improvement Direct, Inc., Evofurniture, LLC, and Living Comforts Etc., LLC for infringement of two design patents, U.S. Patent No. D522,773 and D528,827. The suit was filed Nov. 4, 2009 in the United States District Court for the Eastern District of Virginia (Case No. 2:09-cv-0554-RGD-FBS). Both patents are entitled "Enclosed Cabinet for Audio/Video Components."

Images from the design patents and BDI's related commercial embodiments are shown below.

Fate of Barcelona Chair Still In Air

2009-10-21T06:57:00.002-04:00

As previously reported on here, the legal protections afforded the Barcelona Chair were moving towards a jury decision in August 2009. It appears that the case, Alphaville Design, Inc. v. Knoll, Inc., Civil No. 07-cv-5569 (N.D. Cal.), is still headed for trial after denial of summary judgment motions and an apparently failed settlement conference.

With Furniture Market Comes A New Round Of Suits (And One Settlement!)

2009-10-20T21:10:00.009-04:00

For this Fall 2009 Furniture Market, we have nice variety of cases involving intellectual property and furniture (I'll save the settlement news for last):

1. Hillsdale Furniture, LLC v. Trade Masters, LLC, Civil No. 09-cv-798 (M.D.N.C.) (filed Oct. 13, 2009) - In its complaint, Hillsdale Furniture alleges copyright infringement, breach of contract, unfair/unfair competition/palming off under North Carolina common law, and violation of North Carolina Unfair and Deceptive Trade Practices Act. Hillsdale alleges that Trade Master infringes its rights in its "Milan Collection." The breach of contract claim arises out of Trade Master's alleged breach of an agreement to cease selling alleged infringements in March 2008. The Milan Collection includes dining tables, chairs, and bar stools, an example of which is shown below:

2. Amini Innovation Corporation v. Acme Furniture Industries, Inc., Civil No. 09-cv-7427 (C.D. Cal.) (filed Oct. 13, 2009) - In its complaint, Amini alleges that Acme is engaging in trademark infringement under the Lanham Act, federal and state common law trademark infringement, federal unfair competition, and state unfair competition among other allegations. Amini's complaint centers around Acme's use of the names "Monte Carlo," "Eden," "Tuscan," "Tuscany," "Torino," and "Venetian" in conjunction with Acme's furniture collections. Amini owns federal trademark registrations for "Monte Carlo Collection," "Torino Collection," "Tuscano Collection," and "Venetian Collection" (with "Collection" having been disclaimed).

3. Knoll, Inc. v. Richard Racana, Jr. & Associates, Inc. d/b/a European Furniture Importers, Civil No. 09-cv-8585 (S.D.N.Y.) (filed Oct. 8, 2009) - In its complaint, Knoll accuses Racana of trademark infringement and false designation of origin under the Lanham along with the usual New York state law claims. The thrust of Knoll's allegations is that Racana is importing infringing versions of the Barcelon Chair, Barcelona Stool, Barcelona Couch, Barcelona Table, the Flat Brno Chair. Knoll has federal trademark registrations on the Barcelona Chair, Barcelona Couch, and the Barcelona Table. Images of the Barcelona collection and Brno Chair are below:

And, now for the settlement:

Furniture Today reports that Casana Furniture and Coaster Co. have settled a patent infringement lawsuit filed in the United States District Court for the Middle District of North Carolina. In the complaint, Casana alleged patent infringement, trade dress infringement, unfair competition, and unfair and deceptive trade pratices. Interestingly, the settlement allows Coaster to continue making the accused designs without change. More information on the settlement may be found here.

Pew Patent Reminder Of Usefulness Of Utility Patents For Furniture

2009-10-12T08:17:00.003-04:00

On October 7, 2009 Sauder Manufacturing Company of Archbold, Ohio sued Souter, Inc. d/b/a Covenant Church Manufacturing ("Covenant") of Ozark, Missouri for infringement of U.S. Patent No. 5,890,761 entitled "Pew Having Discrete Seating Portions" ("the ''761 Patent"). (See Case No. 3:09-cv-2325 (N.D. Ohio)). The '761 patent claims a standard church pew having two removable seating portions positioned on the bench. Each seating portion has a predetermined width. Covenant has yet to respond.

The '761 Patent is a good reminder that utility patents serve a vital role in protecting furniture design. In the case of the Sauder pew, the improvement is modest but Sauder nonetheless took the time and expended the resources necessary to secure a utility patent. The furniture company that uses the correct mix of utlity and design patents, in combination with copyright and trade dress, will have the upper hand in the marketplace. Of course, for those companies already using intellectual property to protect their furniture I'm merely preaching to the choir.

No word from the clergy or from the man upstairs on the merits of this case.

Figure 4 from Sauder's '761 Patent is below:

The New Pleading Standards And Furniture Trade Dress Cases

2009-10-06T09:44:00.004-04:00

It was only a matter of time before the new pleading standards set forth in Twombly v. Bell Atl. Corp., 550 U.S. 544 (2007) and Ashcroft v. Iqbal, 129 S.Ct. 1937 (2009) were interpreted through the lens of a furniture trade dress case. That is what happened recently in Heller Inc. v. Design Within Reach, No. 09 Civ. 1909 (JGK), 2009 WL 2486054 (S.D.N.Y. Aug. 14, 2009). In Heller, the plaintiff Heller Inc. sued defendant Design Within Reach ("DWR") for various claims including trademark dilution and trade dress infringement, in violation of the Lanhan Act § 43, 15 U.S.C. § 1125 and New York Gen. Bus. Law § 360-l. DWR moved to dismiss Heller's federal dilution claim and trade dress claims as they relate to federal unfair competition, state injury to business reputation, and common law trade dress infringement and unfair competition.

Heller makes and sells the "Bellini Chair" and has done so since 1998. The Bellini Chair has won several prestiguous awards, including the Compasso d'Oro in 2001, and is part of the permanent collection of the Metropolitan Museum of Art in New York City. Since 1998, Heller sold more than 180,00 units of the Bellini Chair, generating sales of over $9 million. Heller asserted that the Bellini Chair acquired secondary meaning among the trade and the public as being identified exclusively with Heller.
In 2007 Heller received a trade dress registration from the United States Patent and Trademark Office. The PTO issued the registration without requiring Heller to show proof of acquired secondary meaning. DWR's founder and former director submitted a declaration in support of Heller's trade dress application in which he stated that "the relevant public interested in contemporary furniture understands the source of the Bellini Chair to be Heller Design, Inc."

DWR sells a chair that is identical to the Bellini Chair except for a small crescent-shaped opening in the back of the chair. The DWR chair has a lower retail price than the Bellini Chair and, according to Heller, is of inferior quality.

The court examined the history and requirements of the Trademark Dilution Revision Act before turning its attention to the sufficiency of Heller's pleadings. In considering the TDRA, the court held that the act "reject[ed] dilution claims based on 'niche' fame." The court continued by questioning how a plaintiff can sufficiently plead "fame" under the new pleading standard:

It remains unclear whether the plaintiff may be capable of pleading in goodfaith that its mark is 'famous' within the meaning of the statute, with sufficient factual allegations to make such a claim plausible.

2009 WL 2486054, at * 4.

In its complaint, Heller alleged that the Bellini Chair trademark is wellk known to the "relevant public interested in contemporary furniture." The court pointed out that the TDRA requires that a trademark must be famous to the "general consuming public of the United States," not merely the contemporary furniture nich of the population. The court concluded that Heller did not make an adequate showing on teh question of fame and dismissed the federal dilution cause of action with leave to file an amended claim.

As to Heller's trade dress claims, the court dismissed them for only offering a vague description of the the trade dress; describing it merely as an "ornamental and sculptural chair" and appending two images of the chair as exhibits, one of which was the image in Heller's trade dress registration. The court stated that the "plaintiff includes no additional details regarding which elements of the plaintiff's trade dress design are distinctive, much less how certain elements are distinctive." Id. at *6. The court rejected Heller's "a picture is worth a thousand words" argument, requiring that a plaintiff articulate the dinstinctive features of claimed trade dress. Id. The court furhter rejected Heller's argument that the trade dress registration provides the necessary details. Here, the court held that while the registration may be prima facie evidence of the validity of the registered mark, it does not provide clarity of its scope. Id. The court granted Heller leave to amend the trade dress claims as well.

The take-away lesson is that the trade dress plaintiff must certainly articulate the scope of its alleged trade dress and not merely rely on images. Likewise, the wise plaintiff pursuing a dilution claim will correctly pleading the level of fame required by the TDRA.

Luxo Tells Disney "Lights Out"

2009-09-09T08:31:00.004-04:00

On Thursday, September 3, 2009, Norwegian lighting design company Luxo ASA filed a complaint in the United States District Court for the Southern District of New York alleging that Walt Disney Co.'s plans to market its own version of the iconic lamp used in Pixar Animation Studio's first short film would cause confusion in the market and cause Luxo unspecified damages (Case No. 09-cv-07689).

Luxo further alleges that Disney's proposed version of the Luxo lamp are made by an unknown manufacturer and are of inferior quality, thus putting Luxo's goodwill and reputation at risk. In addition to seeking damages, Luxo seeks attorneys' fees, and for Disney's lamps, packaging, and markings, as well as the materials used to make them, be destroyed.

The Luxo lamp has a dome-shaped head, round base and two posts joined at the center. The light is a design icon and the Luxo name, which Disney is using on its lamps, is protected by at least Trademark Reg. No. 1314484.

Luxo's lamp

Pixar's well-known introduction

Fate Of "Barcelona Chair" Moving To Jury

2009-08-03T22:58:00.004-04:00

The iconic Barcelona chair designed by Ludwig Mies van der Rohe lies at the heart of a dispute between Fremont, CA based Alphaville Design and Knoll, Inc. Both manufacturers sell Bauhuas style furniture. The legal conflict began in November 2007 with Alphaville filing an action seeking a declaratory judgment that its marketing and and sell of its Mies Barcelona chair does not infringe any valid and enforceable right allegedly held by Knoll. Knoll counterclaimed for trademark infringement, alleging trade dress rights in the Barcelona chair. The court recently denied cross motions for summary judgment thus sending the issue of whether Knoll has trademark rights in the chair to trial. In denying summary judgment, the court held that "[i]t is debatable whether Knoll has actually used any of the pieces as trademarks to a substantial extent, but this is a fair issue for trial." The court has not yet set a trial date.

Alphaville Chair:

Knoll Chair:

Lifetime Products Sues Five Chinese Companies For Patent Infringement

2009-05-08T10:32:00.003-04:00

Lifetime Products, Inc., a Utah corporation that manufactures folding tables and chairs among other items, filed suit on May 5, 2009 against five difference Chinese companies alleging infringement of 18 utility patents. The complaint may be found here. A figure from one of the patents is shown below.

Innovation USA Files Design Patent Action Against Ido Furniture

2009-04-29T16:08:00.003-04:00

Innovations U.S.A., Inc. filed an action in the United States District Court for the Eastern District of New York (Case No. 09-cv-1727) against Ido Furniture (U.S.A.) Corp. and Zhuhai Furniture Co., Ltd. alleging that defendants infringe U.S. Design Patent Nos. 583,585 and 490,996. Images from the asserted patents are below.

Raymour & Flanigan Sues Retailer For Use Of Name

2009-04-28T06:39:00.003-04:00

On April 22, 2009, northeast U.S. retailer Raymour & Flanigan filed an action against Huffman Koos furniture and related entities and individuals alleging that defendants used the famous Raymour & Flanigan. Raymour alleges that defendants hung large banners, sometimes more than 30' in length, across defendants' several store fronts that bore the Raymour & Flanigan name. Apparently, after several demand letters did result in the banners' removal, Raymour sued. The case number is 1:09-cv-3999. Raymour also filed a motion for a preliminary injunction with its complaint. Defendants have yet to respond.

High Point University Publishes Newsletter Timed For Market

2009-04-23T14:48:00.003-04:00

The Department of Furnishings and Design at High Point University has begun publishing a newsletter entitled "The Home Front" that is focused on home furnishings research. The newsletter is slated for release at the beginning of the Spring and Fall High Point Markets each year. The inaugural issue was just released and may be found here. To receive an electronic copy of the newsletter or join HPU's Research Panel you may contact them at thehomefront@highpoint.edu.

Culp Settles One Action And Files Another

2009-04-21T21:47:00.006-04:00

Culp, Inc., a mattress and upholstery fabric supplier, announced last week that it has settled its copyright infringement action against SRA in which Culp alleged that SRA infringed Culp's copyrighted Congo fabric by selling a fabric called "Viper." Wasting no time, Culp filed suit on April 16, 2009 against Dorrell Fabrics Co. for violating the same copyright and for also selling "Viper" fabric. (Case No. 1:09-cv-291)

La-Z-Boy Files Suit Against Holland House

2009-04-03T11:08:00.004-04:00

La-Z-Boy Greensboro, Inc. brought suit against The H.T. Hackney Co., d/b/a Holland House Furniture on March 30, 2009 in the United States District Court Middle District of North Carolina. In its complaint, La-Z-Boy alleges infringement of U.S. Design Patent Nos. D484,329, D490,626, D504,037, and D505,805 along with trade dress infringement and unfair competition. La-Z-Boy's design patents are based on the designs of fashion designer Jessica McClintock and cover a line of girl's youth furniture. The collection is sold through La-Z-Boy's Lea Industries division as part of the Jessica McClintock Romance Collection and the Jessica McClintock Heirloom Collection. The accused collection is Holland House's "LA BELLE" collection. An image from the '329 Patent and the La Belle collection are below.

HFB Publishes "E-Market Preview"

2009-04-03T10:47:00.003-04:00

Home Furnishings Business released its comprehensive "E-Market Preview- High Point Edition" on Thursday, April 2, 2009. The on-line guide is an impressive collection of interactive pages featuring many of the home furnishing companies participating in this April 2009 High Point Market. The guide may be found by clicking HERE. Anyone attending Market (or just interested in Market) should spend a few minutes checking out this guide.

Edsal Sues Whalen On Shelving Patent

2009-04-01T21:58:00.002-04:00

Edsal Manufacturing Company, Inc., a manufacturer and supplier of storage and workplace furniture, filed an action on March 25, 2009 in the Northern District of Illinois (1:09-cv-1870) against Whalen Furniture Manufacturing, Inc. alleging infringement of U.S. Patent No. 7,128,225 entitled "Cargo Rack." The '225 Patent covers a shelving unit and structural beams in the shelving unit.

Twin Star Settles Three Copyright Suits

2009-03-17T22:22:00.002-04:00

Twin Star International, maker of Classic Flame electric fireplaces, announced that it has settled three copyright infringement actions against The Philip Reinisch Co., SteinWorld LLC, and Hargrove Manufacturing Corp. Each company agreed to stop producing the designs in question, and Twin-Star received royalties from the accused models. SteinWorld LLC agreed to remove themselves completely from the electric fireplace business for at least 18 months.

Home Furnishings Business reports the following statement from Twin Star's President:

“Our in-house design team and the award winning products they develop are a testament to their creativity and Twin-Star’s commitment to bring innovative designs to market," said Mark Asofsky, president of Twin-Star. "We plan to stand by and protect the over 1,000 designs currently under our belt and will continue to fight plagiarism.”Twin-Star said it is serious about putting in the time and effort that it takes to protect its intellectual property. In addition to copyright, the company patent protects its fireplace designs and rigorously enforces its intellectual property rights against companies that attempt to misappropriate Twin-Star’s property.

The full story from Home Furnishings Business may be found by clicking here.

Marge Carson Settles Suit Against Schnadig

2009-03-17T22:10:00.003-04:00

Marge Carson, Inc. announced on Monday, March 16, 2009 that is has settled a design patent infringement action it brought against Schnadig Corporation for an undisclosed amount. The lawsuit alleged infringement of U.S. Patent No. D549,997. A figure from the '997 Patent is produced below:

Home Furnishings Business reports the following statement from the President of Marge Carson:

"Marge Carson's position as a design leader within our industry is one we take very serious. A tremendous amount of effort is put forth by our design team to create elegant and original designs," said Will Sharp, president of Marge Carson. "As such, we will continue to aggressively protect our intellectual properties and the design
integrity of our collections to insure success for both Marge Carson and our dealer base."Many of Marge Carson's designs and brands are protected by the laws governing design patents, copyrights, trademarks and trade dress.

The full HFB story can be found by clicking here.

Who Knew Going Out Of Business Was Copyright Protected?

2009-03-04T20:48:00.003-05:00

Lynch Sales Company and Lynch Brothers Licensing Corporation filed an action on February 25, 2009 in the United States District Court for the Middle District of Florida (Orlando) against Hudson's Furniture Showroom, Inc., Hudson's Broyhill Furniture Gallery, Inc. and C. Fred Hudson, III for copyright infringement, false designation of origin, common law trademark and trade dress claims, violation of Michigan Consumer Protection Act, and several other claims. The complaint alleges that the defendants used sales and advertising (such as the one below) without plaintiff's authorization. Plaintiff also apparently holds copyrights to several other "Going out of business!" advertisements as well. Just what you need when you are trying to wind things down - a copyright infringement action.

Mark Sampson to Present Webinar on New FMLA Rules

2009-02-25T20:57:00.002-05:00

Mark Sampson, a noted labor and employment attorney with Womble Carlyle Sandridge & Rice, PLLC, will be the guest speaker at Home Furnishings Business' March 10 Webinar. The the Department of Labor has issued an entirely new set of regulations on the Family and Medical Leave Act (FMLA), which became effective Jan. 16. These regulations substantially revise the process employers must follow when employees request FMLA leave. In fact, a whole new set of postings, forms, and policies are now required.

The regulations also address such topics as:

Eligibility for FMLA leave;
The new categories of military family leave;
Changes to the definition of serious health condition;
An employer's obligations in responding to requests for leave;
The new process for certifying an employee's need for leave; and
Direct contact with an employee's health care provider.

These are changes with which every employer should be familiar. The March 10 Webinar will discuss these changes and provide practical guidelines for complying with the new regulations.

More information can be found by clicking here ....

UPDATE: Universal v. Collezione

2009-02-25T20:51:00.001-05:00

A copy of Judge Osteen, Jr.'s order regarding damages may be found here.

Universal Furniture Awarded $11.2 Million Judgment Against Collezione Europa

2009-02-19T13:14:00.003-05:00

The United States District Court for the Middle District of North Carolina has awarded Universal Furniture an $11.2 million judgment against Collezione Europa. The ruling caps a two-year copyright infringement battle that culminated in Collezione filing a Chapter 11 bankruptcy filing.

More can be found at Furniture Today [LINK].

Furniture Store Owner Faces Up To 50 Years In Prison

2009-02-17T13:05:00.002-05:00

Charles Thomas Ingram, III, the former owner of High Point Furniture in Gulfport, Mississippi, has pleaded guilty to five counts of false pretense after bilking customers of thousands of dollars. Prosecutors say Ingram opened a store that appeared legitimate but was found to be merely taking advantage of people trying to recover from hurricane damage. Ingram sold, but never delivered, furniture to a number of customers. Ingram faces up to 50 years in prison and more than $116,000 in restitution. Sentencting is set for May 5, 2009.

No Sleep In Brooklyn

2009-02-17T12:44:00.002-05:00

On February 11, 2009 SINT, LLC filed suit in the United States District Court for the Eastern District of New York (Brooklyn) (09-0575) against Sleepy's Furniture & Mattress Corp., I Am Sleepy Too Corp., New Linen N Things II Corp., and John Does 1-10 alleging that defendants are using the mark "SLEEPY'S" in a manner likely to cause confusion with SINT's trademarks. SINT is the IP holding company for Sleepy's, a well-known mattress and bedding store with locations in 11 states. SINT claims ownership of SLEEPY'S and various other marks using the term SLEEPY'S in connection with mattresses and other bedding items. Defendants apparently operate a mattress and bedding store just down the block from a Sleepy's store where defendants have prominently used the name "Sleepy's." Along with its complaint, SINT sought a temporary restraining order. On February 13, 2009, the court held a hearing on SINT's motion for a TRO. Defendants failed to appear and thus the court granted SINT's motion for a TRO.

Wynwood Successfully Settles Infringement Against Endura

2009-02-02T21:31:00.001-05:00

Wynwood Furniture, a wholly owned division of DMI Furniture, Inc., and Flexsteel Industries, Inc., announced today it has successfully settled its copyright and trade dress infringement lawsuit against Endura, Inc. Wynwood brought the lawsuit against Endura based upon the infringement of Wynwood's long running and successful Cordoba, Antiquo Blanco, and Granada home furnishings collections. With regard to the settlement, Joseph G. Hill, President and COO of Wynwood, stated, “We do not hesitate to resort to legal action to protect our designs, but at the same time we are glad to have resolved this matter amicably.”

“We are pleased that the intellectual property laws reward companies like Wynwood who take the time and effort to produce new and original designs," said Hill. Wynwood works hard to provide their retailers exclusive designs not available from others in the marketplace. Hill continued, "We will continue to take aggressive action where necessary to protect ourselves and our dealers.”

As part of the settlement, Endura and other defendants recently added to the lawsuit who are believed to be officers of Endura include Unang Wijaya, Soenandar Santosa Gani, and Dan Mocias, agreed to immediately stop production of the Endura Seville and Barcelona collections that Wynwood asserted as infringing. Endura also agreed to make a monetary payment to Wynwood. In exchange, Wynwood agreed to a dismissal of the lawsuit although expressly reserved rights to bring legal action against any future designs it believes infringes upon its valuable rights. Wynwood declined further comment on the settlement.

NOTE: Womble Carlyle represented Wynwood in this case.

Lifestyle Enterprises Sues Former President and CEO

2009-02-02T13:06:00.002-05:00

Lifestyle Enterprises, Inc. filed an action on January 27, 2009 against Gregory Noe, Lifestyle's former President and CEO. The complaint, filed in Superior Court, Guilford County, N.C. (High Point), alleges that Noe's leaving of Lifestyle in December 2008 and joining of Samuel Lawrence Furniture thereafter results in Noe breaching his fiduciary duties and actual and threatened inevitable trade secret disclosure. In particular, Lifestyle alleges that Noe's detailed knowledge of its overseas sources, namely Vietnam and Malaysia, constitutes trade secrets that Noe will inevitably disclose and use while at Samuel Lawrence. Lifestyle is the parent company to High Point's Forbidden City, LLC and Shanghai Leather, LLC.

Internet Furniture Retailer Sentenced To 14 Years For Fraud

2009-02-02T12:51:00.002-05:00

Wilmington, North Carolina's Star News reports that a U.S. District Judge has sentenced Henry Rayford Privette, 55, of Johns Island, S.C. to 14 years in prison, three years of supervised release, and ordered to pay more than $1.1 million in restitution for defrauding customers out of millions of dollars through an Internet-based furniture business in Calabash, N.C.

Privette was convicted on wire fraud charges based on taking orders over the Internet and requiring deposits but failing to deliver the furniture or provide a refund. Privette operated under the websites www.carolinafurniture.com and www.millerburnsfurniture.com.

The complete Star New report can be read here.

Renaissance Takes Vendor On Not-So-Magic Carpet Ride

2009-01-30T06:57:00.003-05:00

Renaissance Carpet & Tapestries, Inc., a New York based design, manufacturer, importer, and seller of carpets, filed an action in the United States District Court for the Eastern District of New York (Brooklyn) on January 26, 2009 alleging that defendants Classic Furniture and Germans Bolotnikovs infringe Renaissance's copyright rights. Classic Furniture is allegedly a sole proprietorship in Brooklyn run by Germans Bolotnikovs, an individual. Renaissance alleges infringement of four registered copyrights that cover its Savonnerie Carpets. In addition to the copyright claim, Renaissance alleges unfair competition and false designation of origin, and false copyright management information; the latter based on defendants' alleged use of a copyright notice on the offending carpets.

An image of a Savonnerie rug is not available - alas, it's copyright protected on Renaissance's website.

Jack Hicks to Present at Las Vegas Furniture Market

2009-01-15T11:04:00.002-05:00

Jack Hicks, a noted intellectual property attorney with Womble Carlyle Sandridge & Rice, PLLC., will be speaking at the upcoming Las Vegas Furniture Market. Hicks' presentation will be on, "Are You Selling a Design Knockoff? Get Ready to Be Sued!"

The intellectual property laws of the United States protect the owners of original furniture designs against unauthorized manufacture, sale, importation and even use. This is true even if the "knockoff" piece of furniture is made overseas. And recent industry changes mean that retailers, manufacturers and distributors who violate these trademark, patent and/or copyright laws are increasingly likely to be sued.

Click here for more information...

Thomasville Settles Lawsuit Against Lifestyle Enterprises

2009-01-12T09:49:00.003-05:00

Furniture Brands International reports that it has settled a patent infringement lawsuit with High Point's Lifestyle Enterprise. In the lawsuit, Furniture Brands claimed that Lifestyle infringed on Thomasville's long-running Irving Park collection.

The terms of the settlement involve Lifestyle agreeing to a "limited phase-out" of existing inventory to select customers and making a payment to FBI company Thomasville Furniture Inds. "We are pleased to have resolved this matter amicably, and at the same time in a manner that reinforces Thomasville's steadfast commitment to its brands and distinctive designs," said Thomasville President Ed Teplitz.

Amini Sues Cosmos For Copyright And Design Patent Infringement

2008-12-29T12:13:00.003-05:00

Amini Innovation Corporation filed suited on November 26, 2008 against Cosmos Furniture Ltd. and Does 1-10 in the United States District Court for the Central District of California, Case No. 08-cv-7855. In its complaint Amini alleges copyright and design patent infringement. Specifically, Amini alleges infringement of designs in its Cortina bedroom collection, Tresor bedroom collection, Tuscano dining room collection, Windsor Court bedroom and dining room collections, and Oppulente bedroom collection. Amini asserts 18 registered copyrights and 15 design patents. "Does 1-10" are alleged to be corporate employees and agents of Cosmos that facilitated and propagated the alleged infringement. An image from one of the design patents (D561,505) is shown below:

Chicago Furniture Company Also Selling Senate Seats

2008-12-29T12:04:00.003-05:00

Chicago-area furniture store LeatherCreations ran an advertisement in the Chicago Tribune on Thursday mocking troubled Illinois governor Rod Blagojevich, who has been accused offering for sale president-elect Barack Obama's senate seat. The quarter-page ad proclaims "We sell more seats than the Governor! ... and our Senate seat only costs $1,999 (Plus this sofa lasts much longer than 6 years)"

Casana Sues Again Over Valencia Trade Dress

2008-12-29T11:18:00.002-05:00

This time around, the Canadian furniture company formed from Palliser's casegoods division, Casana Furniture Co., Ltd., has asserted its alleged trade dress rights in its Valencia collection against Ashley Furniture Industries, Inc.'s Kira Series. The complaint does not specify which items of furniture purportedly include trade dress that identifies the piece as emanating from Casana. The complaint, Case No. 08-cv-908, was filed December 16, 2008 in the United States District Court for the Middle District of North Carolina and alleges statutory and common law trade dress infringement as well as statutory and common law unfair and deceptive trade practices. Casana is represented by attorneys in Alston & Bird's Charlotte, North Carolina office. Ashely has not yet been served with the complaint and summons.

Casana previously asserted its trade dress rights in the Valencia collection against Coaster Company of America (previously reported on by this blog on Oct. 19, 2008). In that case, Coaster has moved to transfer the case to the Central District of California. The motion is currently pending, awaiting Coaster's reply brief. In that case, Casana also asserts infringement of a design patent.

Relief-Mart Sues On "Ventilated Mattress" Patent

2008-12-23T05:47:00.003-05:00

On December 17, 2008, Relief-Mart, Inc. filed a patent infringement action against Fredman Bros. Furniture Co., Inc. and "Does 1-10" in United States District Court, Central District of California. Relief-Mart alleges that Fredman infringes U.S. Patent No. 7,334,280. The '280 Patent describes and claims a ventilated mattress having a top foam layer with a plurality of holes resting upon a bottom foam layer having a convoluted upward projecting surface.

AHFA Offers Webinar On Customs and Border Protection

2008-12-23T05:24:00.002-05:00

American Home Furnishings Alliance is offering a webinar entitled "Customs and Border Protection (CBP) New '10+2' Importer Security Filing ('ISF') Rule: What Importers Need to Know" on January 21, 2009. The webinar will discuss the new CBP rule and the data elements that importers must now furnish to CBP for all ocean shipments. For more information and to sign up, click here.

Technical Furniture Group - Smartdesks Sues For Control Of Patents

2008-12-23T04:56:00.003-05:00

Technical Furniture Group, LLC and Smartdesks, Inc., manufacturers of computer furniture products, fired another salvo at CBT Supply and Jeffrey Korber over ownership rights in a utility patent, two patent applications, and a design patent. The complaint also alleges that Korber is improperly listed as inventor on several patent applications and that Korber pulled the old "bait and switch" to convice a principal with plaintiffs to unwittingly sign an assignment of patent ownership rights. The dispute involves Smartdesks popular "FlipIt" design:

Plaintiffs seeks $20,000,000 in monetary damages. The action follows a state court action and several earlier actions filed in federal district court. The case was filed in United States District Court for the District of Maryland.

Comfort Research Sues Over "Frameless Chair" Patent

2008-12-04T04:35:00.004-05:00

On November 10, 2008, Comfort Research, LLC filed a patent infringement action against Markos & Widly, Inc. d/b/a American Furniture Alliance in the United States District Court for the Western District of Michigan Southern Division (1:06-cv-1054). Comfort Research alleges that American Furniture Alliance infringes U.S. Patent No. 6,732,391 B2 ("the '391 Patent") entitled "Frameless Chair." The '391 Patent covers a frameless chair comprising a gas permeable outer liner filled with polyurethane foam pieces. The '391 Patent apparently protects Comfort Research's popular "Fuf Chair" shown above. American Furniture Alliance has yet to be served as of the date of this posting. Comfort Research is represented by William Louis King, III of King & Partners PLC in Holland, MI.

District Court Tells Art Van To Wrap It Up

2008-10-29T17:04:00.002-04:00

U.S. District Judge Victoria Roberts has ordered Warren, MI-based furniture retailer Art Van Furniture to stop promoting a truck design that shows a sofa being unwrapped from a chocolate bar wrapper. Hershey's moved for a temporary restraining order and preliminary injunction. Art Van has said that they will continue their promotion of soliciting on-line votes for new truck designs - just without the "candy bar sofa" design as one possible choice.

A visit to Art Van's website reveals that it has removed the image.

Click here to read the Detroit News article.

Hershey Goes On A Tear Over Image On Furniture Delivery Truck

2008-10-24T06:18:00.004-04:00

On Tuesday, October 21, 2008 Hershey Co. filed an action in United States District Court for the Eastern District of Michigan claiming that the image of a couch emerging from a candy bar wrapper infringes Hershey's intellectual property.

The spat began when Michigan's largest furniture retailer posted several images of delivery trucks on its website in an online voting forum asking for visitors to the site to select their favorite design. Hershey clearly disfavored the image of a dark leather couch partially wrapped in a candy bar wrapper. Voting ends Oct. 31, 2008. Art Van claims the chocolate bar truck has not yet hit the road.

Hershey's action, 2:08-cv-14463, alleges federal statutory trademark and trade dress infringement, false association and sponsorship, trademark dilution and tarnishment, unfair competition, and conversion. Hershey is seeking a temporary restraining order and preliminary injunction. Art Van submitted opposition papers on Oct. 22 and Hershey submitted its reply on Oct. 23. In its opposition, Art Van claims the image is a parody. In addition, a visit to Art Van's website shows that Art Van changed the color of the wrapper from brown to red. The chocolate bar truck is apparently also getting the most votes in Art Van's online voting. The matter appears fully briefed so watch for an order from U.S. District Judge Victoria A. Roberts on this matter soon.

Hershey's is represented by Francis R. Ortiz of Dickinson Wright PLLC (Detroit, MI) and Jonathan G. Polak, Amy L. Wright, and Trent J. Sandifur, of Taft Stettinus & Hollister LLP (Indianapolis, IN).

The matter was reported on by The Detroit News and Forbes among others.

Father-Son Accused In Knock-Off Case

2008-10-19T11:42:00.003-04:00

Furnitre Today reports a criminal action involving the application of brand-name labels to cheaper furniture:

A father and son who own the furniture store Fine Interiors here were arraigned in court last week on charges they sold knock-off furniture. Douglas Morse and Benjamin Morse each face three counts of trademark counterfeiting, a felony charge, on charges that they removed name-brand tags on furniture, put them on cheaper versions and then sold the knock-offs at the price of the more expensive furniture, according to the northern Ohio News-Herald.

A link to Furniture Today's story may be found here. A link to the News-Herald story may be found here.

As Furniture Market Opens, Four New Law Suits Filed

2008-10-19T08:23:00.004-04:00

As the High Point Market is set to open (Oct. 20-26, 2008), four new intellectual property law suits involving furniture have been filed in the United States District Court for the Middle District of North Carolina. Design patents are involved in all three and perhaps signal a new wave of design patents in view of the Federal Circuit recently strengthening design patents (see posting of Sept. 23, 2008 regarding the Egyptian Goddess case).

The first suit was filed Oct. 13, 2008 by Marge Carson, Inc. v. Schnadig Corporation. In this patent infringement action, Marge Carson asserts United States Patent No. D549,997 (the '997 Patent).

The accused product is the Bellini-A Room couch.

Addition views of the Bellini A Room couch may be found here.

One drawing from Marge Carson's '997 Patent shows the following design:

Marge Carson seeks preliminary and permanent relief, destruction of infringing products, and unspecified damages. The Marge Carson suit is Case No. 08-cv-737 (M.D.N.C.).

We note that Womble Carlyle represents plaintiff Marge Carson in this action.

Three additional actions were filed on Oct. 15, 2008. All three involve design patents. The first is Palliser Furniture, Ltd. v. Coaster Company of America, Case No. 08-cv-743 (M.D.N.C.) in which Palliser asserts infringement of United States Design Patent D493,966 along with statutory trade dress infringement, common law trade dress infringement, violation of North Carolina Unfair and Deceptive Trade Practices Act, and Unfair Competition. The complaint alleges that Coaster infringes Palliser's intellectual property rights in its "Tracer Ottoman."

The second suit is Casana Furniture, Ltd. v. Coaster Company of America, Case No. 08-cv-744 (M.D.N.C.). In this action, Casana Furniture, a new furniture company created from Palliser's casegoods division, asserts infringement of its intellectual property rights in its VALENCIA through infringement of United States Design Patent D474,615, along with claims of statutory trade dress infringement, common law trade dress infringement, violation of North Carolina Unfair and Deceptive Trade Practices Act, and Unfair Competition.

In the third action, Casana Furniture Company, Ltd. v. SLF, Inc. f/k/a Samuel Lawrence Furniture Company, Case No. 08-cv-746 (M.D.N.C.) asserts United States Design Patent No. D485,098, along with claims of statutory trade dress infringement, common law trade dress infringement, violation of North Carolina Unfair and Deceptive Trade Practices Act, and Unfair Competition.

Will A Stake From Your Competitor's Patent Pierce Your Plans?

2008-10-14T07:13:00.001-04:00

The excitement of a new furniture collection can quickly turn to disappointment when the sheriff or U.S. Marshals deliver a Temporary Restraining Order to your business or showroom. The disappointment quickly falls into the depths of despair if federal court litigation follows. With the possibility looming of a large judgment, the time required by your key employees in depositions and document production and finally, and possibly most painful of all, the mounting legal fees resulting from our complex federal court system and adversaries tactics. How, you will be asked repeatedly, could this have been avoided? How can you avoid this next time?

One great advantage of the patent and trademark legal system that protects our new ideas and brands is the fact that most all of such rights are a matter of public record. While there are a few exceptions - trade secrets and unpublished patent applications, a targeted search of often-free electronic databases can yield a wealth of information, and identify land mines you may want to avoid.

The published and issued patents by the United States and most developed countries are available online in searchable databases. Patents can be searched by inventor (“P. Bagwell”); key words (e.g., “sofa bed”), subject matter classification (“Class 5 Beds/Subclass 12.1 Sofa Bed”), assignee or patent owner (“LANEVENTURE”), and of course patent number (such as the one you see on your competitor’s product!). Specifically, US patents can be searched at this site and European patents can be searched at this site. The resulting “hits” can be analyzed by patent counsel, who will identify both mine fields and even areas that might be in a void you want to rush to fill.

Conducting a clearance study also is vitally important prior to launching your new brand. Although conducting a search engine (e.g., Google®) inquiry on your own is invaluable, many governmental trademark databases also are available and must be searched for trademarks that share a look, sound or meaning with your proposed new word mark or logo. For example, US trademarks are searchable at this link. Your trademark attorney can help interpret the results, as well as suggest additional database for other possible conflict searches, e.g., trademarks registered only at the state level.

Spending some time and efforts searching for conflicts prior to launch can end up saving you tremendous headaches and legal fees later, and possibly avoid a visit from your local sheriff or friendly (or not so friendly!) U.S. Marshal.

French Heritage, Ethan Allen Settle Suit

2008-10-14T06:44:00.002-04:00

We reported on September 2, 2008 that the business interference suit brought by French Heritage against Ethan Allen was set to begin trial. Furniture Today now reports that the parties have settled the dispute without disclosing details due to a confidentiality agreement. Furniture Today reports:

French Heritage, a manufacturer of case goods and accent furniture, had claimed it had an exclusivity agreement with Indonesian manufacturer PT Alis Jaya Ciptatama regarding the sourcing of Ethan Allen products. French Heritage also said it had formed a joint venture with the same factory called PT Alis French Heritage.

It claimed that Ethan Allen ended up sourcing goods directly from the factory without approval from French Heritage. It also said that Ethan Allen ultimately cut it out of the joint venture relationship, which French Heritage said ultimately represented a loss between $3 million and $4 million worth of production.

The case went to trial here Sept. 3 but French Heritage withdrew it Sept. 25, according to an official with Stamford Superior Court.

The full article may be found here.

Publicizing Patent Application Filings

2008-10-06T05:08:00.002-04:00

With the recent expansion of the protections afforded by design patents (see post from Sept. 23, 2008 regarding the Egyptian Godess case), and the strength and leverage that utility patents afford, it makes sense for furniture companies to publicize when patents are issued. At least one furniture company has taken it a step further an announced the filing of a patent application.

Home Furnishings Business reports that the U.S. Patent and Trademark Office has accepted the application of Signature Home Furnishings of Cerritos, California, for a utility patent for the case case goods vendor's premium dresser mirror. The dresser and mirror apparently accommodates home entertainment functions with a motorized mirror that sinks into the dresser, revealing a flat-screen television as the mirror lowers. More on the piece can be found here.

Publicizing the filing and issuance of both design and utility patent applications can assist in the protection of furniture designs and innovations. In particular, publicizing the filing of a patent application may allowed for enhanced damages in later infringement actions.

NOTE: The Signature Home Furnishings application is not yet available on the Patent Office's website.