By Colin B. Harris and David Nguyen
| May 9, 2016
Bayerische Motoren Werke AG, BMW of North America, LLC, Rolls-Royce Motor Cars Limited, and Rolls-Royce Motor Cars NA, LLC (collectively “BMW Group”) filed suit against TurboSquid, Inc. (“TurboSquid”) on May 3, 2016 in the United States District Court for the District of New Jersey, alleging infringement of BMW Group’s design patents, trademarks, and trade dress.

BMW Group is seeking a permanent injunction for infringement, destruction of products, advertisements, and packaging in TurboSquid’s possession or control bearing BMW Group’s trademarks or trade dress, and recovery of TurboSquid’s profits from the alleged infringement, treble actual damages, and reasonable expenses.

The design patents detailed in the suit include six BMW Group design patents pertaining to BMW, Mini, and Rolls-Royce branded vehicles produced by BMW Group. These are design patents D473,165, D639,209, D664,896, D714,190, D714,687, and D724,495. The ’165 patent is titled “Surface configuration of a vehicle, toy and miscellaneous consumer products incorporating the design,” and the other patents are each titled “Vehicle, toy, and/or replicas thereof.” For illustrative purposes, images from the design patents are shown below.

In the complaint, BMW Group alleges TurboSquid infringes these design patents by selling unauthorized virtual 3D models of BMW Group vehicle designs on the TurboSquid website. TurboSquid advertises itself as “the world’s largest library of real-time 3D assets for games, virtual reality, augmented reality and real-time apps.” Although TurboSquid advertises “3D assets,” it appears that the allegedly infringing designs are not 3D physical vehicles or toys.

It will be interesting to see if such virtual 3D models are covered by BMW Group’s design patents.