Lindby Custom successfully enforces a design for motorcycle parts, but would the proposed PARTS legislation have affected the court’s ruling?
On February 15, 2012, the U.S. District Court for the Central District of California entered Default Judgment in the matter of Lindby Custom, Inc. v. AMI Group (case no. 8:10-cv-01779). In its Complaint, Lindby Custom alleged infringement of U.S. Design Patent D548,142 (“the D142 patent”), in addition to trade dress and unfair competition claims.
The D142 patent claims “the ornamental design for the combined engine guard and highway peg” for motorcycles, shown below.
In its Default Judgment order, the court ordered AMI to pay Lindby Custom compensatory damages of $285,000, and attorneys’ fees and costs of $9,800, in addition to ordering a permanent injunction against continued infringement.
The court’s ruling follows less than two weeks after introduction of a bill in Congress, H.R. 3889, intended to create exceptions to acts of design patent infringement under 35 USC § 271 for certain component parts of motor vehicles, as we previously reported. In turn, we thought it would be interesting to consider whether the proposed legislation could have affected the Lindby Custom v. AMI Group ruling, had the legislation been in effect.
As a threshold question we considered whether the Lindby case involves:
"a design patent that claims a component part of a motor vehicle as originally manufactured."
H.R. 3889 (emphasis added). The answer to this question may depend on an issue of statutory construction.
First, if the clause "as originally manufactured" modifies only the term "a motor vehicle," then the proposed legislation might only apply to design patents that claim parts installed on a motor vehicle as it leaves the manufacturer's assembly line. Accordingly, under this first interpretation, the proposed legislation might not apply to the D142 patent because there is no evidence that Lindby Custom provided engine guards for "motor vehicle[s] as originally manufactured."
However, in the alternative, if the clause "as originally manufactured" modifies the term "a component part," then the proposed legislation might apply to all motor vehicle component parts, as the component parts themselves are originally manufactured. Under this second interpretation, the proposed legislation would likely apply more broadly to include design patents for aftermarket parts, such as the D142 patent, even if those parts were never installed on a motor vehicle as part of that motor vehicle's original manufacture. Thus, under this second interpretation, the proposed legislation may have acted to diminish the damages award in the Lindby case by providing an exception to infringement for acts intended "for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured." H.R. 3889.