New proposed legislation to create design patent infringement exceptions for motor vehicle parts

On February 2, 2012, Representatives Darrell Issa (R-Calif.) and Rep. Zoe Lofgren (D-Calif.), members of the House Judiciary Committee, introduced H.R. 3889, a bill entitled the Promoting Automotive Repair, Trade, and Sales (PARTS) Act.

The proposed bill would create exceptions from acts of infringement under 35 USC 271 for certain component parts of motor vehicles.  Under the PARTS Act, with respect to a design patent that claims a component part of a motor vehicle as originally manufactured, “it shall not be an act of infringement of such design patent to make or offer to sell within the United States, or import into the United States, any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.”

Further, “after the expiration of a period of 30 months beginning on the first day on which any such component part is first offered to the public for sale as part of a motor vehicle in any country, it shall not be an act of infringement of such design patent to use or sell within the United States any article of manufacture that is similar or the same in appearance to the component part that is claimed in such design patent if the purpose of such article of manufacture is for the repair of a motor vehicle so as to restore such vehicle to its appearance as originally manufactured.”

Similar bills have been previously proposed, without success.  Supporters of such reform argue that such legislation will lower cost for automobile repairs.  Not surprisingly, the insurance industry endorses such efforts.  Opponents of such bills point to the cost of developing quality parts, well designed to safely function as needed and to appeal to consumers at the same time.  The opponents believe that allowing anyone to knock off these parts would not help the auto industry in this country.

Lamborghini takes on Vegas

As reported in the Washington Post (by the Associated Press), Lamborghini has filed a trademark infringment suit against a Las Vegas casino concerning logos used at the entrance of businesses (reportedly the Dal Toro Exotic Car Showroom, Dal Toro Merchandise Gallery and Dal Toro Il Ristorante Italiano) inside the Palazzo Las Vegas Resort are imitations of the Lamborghini’s logos.

Below is the Dal Toro logo, as presented on their Facebook profile page, next to the Lamborghini logo, as presented on their website.

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders

Chrysler’s ITC Complaint alleging Design Patent Infringement of a Concept Vehicle Results in Settlement, Cease and Desist Orders and Limited Exclusion Orders

See our posting on the ITC 337 Law Blog of March 16, 2011.

The Jeep Hurricane is a 4x4 concept vehicle which was unveiled at the North American International Auto Show in Detroit, Michigan in 2005, by Jeep, a division of Chrysler Group LLC.  Chrysler obtained U.S. Design Patent No. D513,395 (the ‘395 patent) on January 3, 2006, which is directed to an automobile body corresponding to the Jeep Hurricane.

Chrysler filed a 337 complaint in the ITC regarding certain automotive vehicles on May 14, 2010 (see our ITC 337 Law Blog posting of May 18, 2010), and the ITC instituted an investigation (337-TA-722) regarding certain automotive vehicles on June 11, 2010 (see our ITC 337 Law Blog posting of June 15, 2010).

On October 12, 2010, Chrysler and respondents including Xingyue Group Co., Ltd. filed an amended joint motion to terminate the pending investigation on the basis of a consent order, and the ALJ issued an order on October 27, 2010, granting the joint motion for termination.  The joint motion to terminate was based on a settlement agreement these respondents will not import, sell, etc. the accused XYJK800 vehicle manufactured by Xingyue, which was alleged to infringe the ‘395 patent.

On October 29, 2010, Chrysler filed declarations requesting immediate relief against the then defaulting respondents (Vehicles Online, Inc. and Shanghai Tandem).  Having determined that the statutory requirements were met, the ITC issued a notice ordering relief on March 10, 2011. 

The relief included (1) cease and desist orders against Vehicles Online, Inc. and Shanghai Tandem concerning automotive vehicles and designs therefor that infringe the ‘395 patent, and (2) a limited exclusion order prohibiting unlicensed entry of automotive vehicles and designs therefor that infringe the ‘395 patent, which are manufactured abroad or imported by or on behalf of Shanghai Tandem (namely, the accused Tandem TDUV800-2).  Since no other issues remained pending, the ITC terminated the investigation.

Figure 1 of U.S. D513,395

Jeep Hurricane (www.jeep.com)

Alleged Infringer Xingyue XYJK800 (source)

Alleged Infringer Tandem TDUV800-2 (source)