Generally speaking, the Hague Agreement establishes an international registration system which facilitates protection of industrial designs (i.e., design patents) in member countries and intergovernmental organizations (“Contracting Parties”) by way of a single, “standardized” international design application filed either directly with the International Bureau of WIPO or indirectly through an applicant’s Contracting Party.
Deckers Outdoor Corporation (“Deckers”) is known for its famous UGG® sheepskin and suede boots, among other products, sold online and at retail stores throughout the U.S. According to Deckers, its UGG® line of boots began a metaphorical ascent into the stratosphere after being featured on Oprah Winfrey’s television show in 2000, when Oprah supposedly “emphatically declared … how much she ‘LOOOOOVES her UGG boots.’” See First Amended Complaint, Doc. 18, ¶ 12. This ascent continued, as many well-heeled celebrities embraced the boots and were photographed wearing them. With such a stamp of fashion approval, one can easily understand that Deckers would do whatever it could to protect its valuable image, brand, and products from harm by imitators seeking to capitalize on Deckers’ success.
In particular, previously finding certain respondents in default, the ITC issued (1) a limited exclusion order against respondents' infringing products, and (2) cease and desist orders directed against each of the Defaulting Respondents. The following Toyo design patents, directed to tire tread designs and tire sidewall designs, formed the basis for the orders:
- US D487,424;
- US D610,976;
- US D610,977;
- US D626,913; and
- US D458,214.
Previously reported here, the orders followed Toyo's complaint filed August 14, 2013 and the ITC's subsequent decision to institute an investigation on September 16, 2013. As summarized in the Notice, the supplemented complaint alleged violation of section 337 by reason of infringement of the above-indicated design patents, as well as US D610,975; US D615,031; and US D653,200. The complaint and notice were subsequently amended to add Shandong Hengyu Science & Technology Co., Ltd. as a respondent, and several respondents were terminated from the investigation based on settlement agreements and consent orders.
It is important to remember that patent marking applies to design patents as well as utility patents. The Federal Circuit made this clear in Nike Inc. v. Wal-Mart Stores, 138 F.3d 1437 (Fed. Cir. 1998), by holding that the term “damages” as it appears in the marking statute, 35 U.S.C. § 287(a) applies to recovering the infringer’s profit under 35 U.S.C. § 289 as well as to the recovery of damages under 35 U.S.C. § 284.
In reaching their decision, the Court reviewed the statutory history of the damages and profits statutes for both design and utility patents, as well as the statutory history of the marking statutes. The Court found that the Patent Act of 1887, which was specific to design patents and removed the apportionment requirement when recovery of the infringer’s profit was sought, “was enacted to overcome the allocation problem for designs, and did not deplete the remedies available for either utility or design patent infringement.” Id. at 1441-43. Additionally, the Court found that the history of the marking statute supported the “conclusion that the marking statute with its use of the word ‘damages’ applies broadly to include recovery of the infringer’s profits under the special provision for design patent infringement.” Id. at 1445.
Consequently, the new America Invents Act (“AIA”) virtual marking provision, 35 U.S.C. § 287(a), is useful for design patent owners. The virtual marking provision states:
[p]atentees, and persons making, offering for sale, or selling within the United States any patented article for or under them, or importing any patented article into the United States may give notice to the public that the same is patented, either by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with the number of the patent, or by fixing thereon the word ‘patent’ or the abbreviation ‘pat.’ together with an address of a posting on the Internet, accessible to the public without charge for accessing the address . . .
35 U.S.C. § 287(a) (emphasis added). Thus, an article covered by one or more patents, including design patents, need not list each individual patent that covers a product. Instead, the product can be marked with the word “pat.” and list a website where the patents applicable to the article in question may be listed.
Finally, design patent owners should also be aware that the false marking statute, 35 U.S.C. § 292, applies to design patents. See e.g. Marvellous Day Elec. (S.Z.) Co. v. Ace Hardware Corp., No. 11-8756, 2013 U.S. Dist. LEXIS 122212 (N.D. Ill. Aug. 27, 2013) (assessing whether Ace intended to deceive consumers into believing that Christmas lights advertised as “patented” were made or sold by Marvellous Day); Buehlhorn v. Universal Valve Co., Inc., No. 10-559, 2011 U.S. Dist. LEXIS 34429 (S.D. Ill. Mar. 31, 2011) (determining whether Universal Valve Co intended to deceive consumers by marking its products with an expired design patent number). Accordingly, it is important to remember to not mark products with a design patent number that does not cover the product or with the number of an invalid or expired patent.
Skechers USA filed a complaint against Fila in the Central District of California-Western Division, alleging infringement of US D661,884 and US D688,446, both directed to slip-on shoes, and alleging unfair competition and trade dress infringement of trade dress rights in Skechers Go Walk(R) shoe.
The complaint states a letter providing written notice of infringement was sent to Fila in July 2013, and in August 2013, Fila agreed to cease making the allegedly infringing shoe, the Amazen Memory Moc (referred to as "Version 1"). Allegedly, Fila stated it redesigned the Amazen Memory Moc (the redesign referred to as "Version 2") and agreed to cease manufacture of Version 1. However, the Complaint states Version 1 "is still available for purchase nearly one year after Skechers' written notice." Complaint, pages 3 and 20.
Version 1 is alleged to infringe the trade dress of the Skechers Go Walk(R) shoe as well as both US D661,884 and US D688,446, while Version 2 is alleged to infringe only US D661,884. Images from the complaint embodying the allegations are reproduced below:
[Trade Dress illustration: Skechers Go Walk(R) (top); Fila Amazen Memory Moc (Version 1) (bottom)]