Wine Enthusiast, Inc. v. Vinotemp International Corporation
Filing
42
CORRECTED OPINION AND ORDER.....Wine Enthusiasts March 12 motion to dismiss is granted in part. Vinotemps counterclaim for patent infringement of U.S. Patent No. D711,936 is dismissed; its counterclaim for trade dress infringement is not. (Signed by Judge Denise L. Cote on 7/19/2018) (gr)
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UNITED STATES DISTRICT COURT
SOUTHERN DISTRICT OF NEW YORK
-------------------------------------WINE ENTHUSIAST, INC.,
Plaintiff,
-vVINOTEMP INTERNATIONAL CORPORATION,
Defendant.
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17cv6782(DLC)
CORRECTED OPINION
AND ORDER
APPEARANCES:
For Wine Enthusiast:
Eric J. Shimanoff
Mark Montague
Joelle A. Milov
Cowan, Liebowitz & Latman, P.C.
114 West 47th Street
New York, New York 10036
For Vinotemp:
Michael Hurey
Kleinberg & Lerner, LLP
1875 Century Park, Ste 1150
Los Angeles, CA 90067
DENISE COTE, District Judge:
Faced with an assertion of patent and trade dress
infringement claims, Wine Enthusiast, Inc. (“Wine Enthusiast”)
commenced this declaratory judgment action on September 6, 2017.
Defendant Vinotemp International Corporation (“Vinotemp”) has
responded with three counterclaims.
Wine Enthusiast moved to
dismiss two of the three counterclaims on March 12.
For the
Case 1:17-cv-06782-DLC Document 42 Filed 07/19/18 Page 2 of 15
reasons that follow, Wine Enthusiast’s motion is granted in
part.
BACKGROUND
Wine Enthusiast has moved to dismiss the counterclaims that
assert that its wine storage systems infringe Vinotemp’s United
States Patent No. D711,936 (the “D936 Patent”) and Vinotemp’s
asserted trade dress in a wine storage unit.
The following
facts are drawn from the defendant’s counterclaims, the patent
at issue, and photographs of Wine Enthusiast’s competing
products submitted by Wine Enthusiast in support of its motion.
Vinotemp has not objected to consideration of those photographs
and they illuminate the assertions in the counterclaims and the
parties’ arguments in their motion papers.1
construed in favor of Vinotemp.
The facts below are
See Keiler v. Harlequin Enters.
Ltd., 751 F.3d 64, 68 (2d Cir. 2014).
Vinotemp designs, manufactures, and sells wine
refrigeration and storage units.
Vinotemp owns the D936 Patent,
which was issued on August 26, 2014, and which claims the
“ornamental design for a black wine rack face, as shown and
described” in the patent (“Rack Face”).
Vinotemp’s opposition to Wine Enthusiast’s motion relies on and
reproduces the images provided by Wine Enthusiast.
1
2
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Figure 1 of the patent is a “top perspective of a black
wine rack face within a wine cabinet[.]”
All but one of the remaining six figures in the patent
provide detailed illustrations of the “black wine rack face of
[Figure] 1.”
As demonstrated in those figures, the Rack Face
sits flush with the shelf to which it is attached.
When looking
at the Rack Face from the side, it appears it resembles an
upside-down “J.”
The Rack Face is thin in comparison to its height.
When viewing
the Rack Face from above, as in Figures 4 and 6, it appears that
it is designed to be a slim cover to the front of the shelf.
3
As
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shown in Figure 3, when looking at the Rack Face head-on, it
obscures the elements of the shelf behind it.
In its counterclaims, Vinotemp describes its trade dress as
follows:
Vinotemp claims a unique trade dress for wine storage units
such as a wine rack or a refrigerator. The storage units
have a glass front. There are individual shelves inside
the units holding the bottles in a horizontal position,
with the bases of the bottles facing outward. Each of the
shelves has a black front. The black front is high enough
to cover most of the bottom half of each bottle. This
arrangement gives the impression the bottles are “floating”
within the storage unit.
Wine Enthusiast also manufactures and sells wine storage
and refrigeration units and wine racks.
Vinotemp asserts that
Wine Enthusiast’s Evolution series of refrigerators infringe
Vinotemp’s products.
The photographs of the Evolution series,
which the parties agree accurately reflect the alleged
infringing products, include a photograph of a wine storage unit
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with a glass front door and horizontal shelving.
The shelf
fronts are visible through the glass doors, as pictured here:
In support of its motion, Wine Enthusiast has also
submitted photographs of the shelves that indicate that its
shelf fronts do not attach to the sides of the shelf, do not
curve over the shelf sides, and do not cover any top part of the
shelf to which they are attached.2
The shelf fronts are thick:
they have a height approximately two times their depth, as
pictured below:
Vinotemp’s opposition to the motion to dismiss its
counterclaims generally accepts as true the differences noted by
Wine Enthusiast, which are described here.
2
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PROCEDURAL HISTORY
On July 31, 2017, Vinotemp sent a letter to Wine Enthusiast
alleging that the Evolution Series wine refrigerator units were
infringing Vinotemp’s D936 Patent and Vinotemp’s trade dress.
On September 6, Wine Enthusiast filed this action seeking a
judgment declaring that it has not infringed Vinotemp’s patent
or trade dress rights, that Vinotemp lacks any trade dress
rights, and that the D936 Patent is invalid.
With its Amended Answer, filed December 13, Vinotemp
asserts three counterclaims.
In two of the counterclaims,
Vinotemp asserts that Wine Enthusiast infringed the D396 Patent
and Vinotemp’s trade dress rights.3
The Court held an initial
pretrial conference with the parties on December 15.
Wine
Enthusiast moved to dismiss those two counterclaims on March 12,
2018.
The motion became fully submitted on April 6.
Vinotemp also claims that Wine Enthusiast’s N’FINITY VinoView
Display Rack infringes another patent, U.S. Patent No.
7,882,967. Wine Enthusiast has not moved to dismiss that
counterclaim.
3
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DISCUSSION
When a party moves to dismiss for failure to state a claim
upon which relief can be granted under Fed. R. Civ. P. 12(b)(6),
a court must “accept all allegations in the complaint as true
and draw all inferences in the non-moving party's favor.”
LaFaro v. N.Y. Cardiothoracic Grp., PLLC, 570 F.3d 471, 475 (2d
Cir. 2009) (citation omitted).
The complaint will survive the
motion to dismiss as long as it contains “sufficient factual
matter, accepted as true, to state a claim to relief that is
plausible on its face.”
Ashcroft v. Iqbal, 556 U.S. 662, 678
(2009) (citation omitted).
Rule 12(b) applies equally to
claims, counterclaims, cross-claims and third-party claims, see
Fed. R. Civ. P. 12(b), and plaintiff's motion to dismiss
defendant's counterclaims are evaluated under these same
standards.
I. Design Patent Infringement
“A design patent is directed to the appearance of an
article of manufacture.”
L.A. Gear, Inc. v. Thorn McAn Shoe
Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993).
Accordingly, a
“design patent, unlike a utility patent, limits protection to
the ornamental design of the article.”
Richardson v. Stanley
Works, Inc., 597 F.3d 1288, 1293 (Fed. Cir. 2010).
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The Federal Circuit "has not required that the trial court
attempt to provide a detailed verbal description of the claimed
design, as is typically done in the case of utility patents."
Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 679 (Fed.
Cir. 2008).
Rather, "a design is better represented by an
illustration than it could be by any description and a
description would probably not be intelligible without the
illustration."
Id. (citation omitted).
“[D]esign patents have almost no scope beyond the precise
images shown in the drawings.”
MRC Innovations, Inc. v. Hunter
Mfg., LLP, 747 F.3d 1326, 1333 n.1 (Fed. Cir. 2014) (citation
omitted).
1988).
See also In re Mann, 861 F.2d 1581, 1582 (Fed. Cir.
Thus, when the patent claim is for an ornamental design
“as shown and described”, the claimed design extends only to the
ornaments as depicted in the drawings.
See Elmer v. ICC
Fabricating, Inc. 67 F.3d 1571, 1577-78 (Fed. Cir. 1995)
(applying the “as shown and described” language in a design
patent to “limit[] the scope of [a] patent claim”).
“In determining whether an accused product infringes a
patented design . . . court[s] appl[y] the ‘ordinary observer’
test . . . .”
Crocs, Inc. v. Intl. Trade Com’in, 598 F.3d 1294,
1303 (Fed. Cir. 2010) (citation omitted).
When applying the
ordinary observer test, a court assesses whether “the claimed
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design and the accused design will be sufficiently distinct that
it will be clear without more that the patentee has not met its
burden of proving the two designs would appear substantially the
same to the ordinary observer . . . .”
F.3d at 678.
Egyptian Goddess, 543
The context in which this comparison is made may
be supplied by “the background prior art,” which may provide a
“frame of reference.”
Id. at 677.
Where the ordinary observer
would consider the designs substantially similar, the alleged
infringer may identify relevant prior art to inform a comparison
of the designs.
Id. at 678.
Neither party has identified any
relevant prior art for this purpose.
The ordinary observer test
“applies to the patented design in its entirety, as it is
claimed.”
Crocs, 598 F.3d at 1303.
A court applying the test
should not concentrate on “minor differences between the
patented design and the accused products to prevent a finding of
infringement.”
Id.
The ordinary observer test is applied “giving such
attention as a purchaser usually gives[.]”
543 F.3d at 670 (citation omitted).
Egyptian Goddess,
Further, the analysis is
not “limited to those features visible during only one phase or
portion of the normal use lifetime of an accused product.”
Contessa Food Prods., Inc. v. Conagra, Inc., 282 F.3d 1370, 1380
(Fed. Cir. 2002).
“Instead, the comparison must extend to all
ornamental features visible during normal use of the product,
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i.e., beginning after completion of manufacture or assembly and
ending with the ultimate destruction, loss, or disappearance of
the article.”
Id. (citation omitted).
Wine Enthusiast is entitled to dismissal of Vinotemp’s
claim of patent infringement.
No ordinary observer using the
Vinotemp’s wine rack would think, when considering the patented
design features of the Rack Face as a whole and in the normal
course of such use, that the Rack Face was substantially similar
in design to Wine Enthusiast’s shelf front on its wine racks.
It is true that both wine racks have a black front or face,
but the D936 Patent is not so limited.
It claims protection for
a black wine Rack Face with particular design features.
A
comparison of those features, taken individually and as a whole,
with the accused product’s features establish, as a matter of
law, that the wine racks are not substantially similar designs.
The ornamental features of Vinotemp’s Wine rack face include its
“J” shape at the top, its thinness, and its method of attachment
to the shelf.
these features.
Wine Enthusiast’s shelf fronts do not imitate
Wine Enthusiast’s shelf front has no “J” shape;
it has no curves at all.
Wine Enthusiast’s shelf front is
significantly thicker; its ratio of height to depth is
approximately two versus Vinotemp’s six.
Finally, while
Vinotemp’s Rack Face attaches flush to the wine rack (its sides,
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top, and bottom), the shelf front on Wine Enthusiast’s wine rack
does not.
The Wine Enthusiast shelf front juts out slightly on
the sides of the shelf.
rack.
It does not attach to the sides of the
It attaches to the rack face with about a quarter of the
face siting below the rack.
Figure 5 from the Patent and a photograph of the Wine
Enthusiast wine rack illustrate some of these differences, as do
Figure 6 from the Patent and another photograph of the Wine
Enthusiast shelf front.
Vinotemp acknowledges that each of the differences
described above exist, but argues that these differences between
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its Rack Face and Wine Enthusiast’s shelf front are minor.
While a concentration on small, isolated differences may not
distract from the overall impression of the designs, when
considering the scope of the D936 Patent, it is apparent that
these design differences are not minor.
Indeed, together, these
features constitute the entirety of the claimed design except
for its color.
Vinotemp does not claim rights simply in the
face of a wine rack.
Finally, Vinotemp argues that in both designs the wine rack
face is “uniformly visible” and covers the entire front of the
wine rack.
But, the D936 Patent, even if valid, does not give
Vinotemp monopoly rights over all black structures affixed to
the front of wine racks.
design of a Rack Face.
It seeks protection for a particular
Vinotemp has not plausibly pled that
Wine Enthusiast’s shelf front infringes the D936 Patent.
II. Trade Dress Infringement
Vinotemp brings a claim under Section 43(a) of the Lanham
Act for trade dress infringement.4
Under Section 43 of the
Lanham Act:
Any person who, on or in connection with any goods
. . . uses in commerce any word, term, name, symbol,
or device, or any combination thereof, or any false
designation of origin . . . which . . . is likely to
4
Vinotemp has not registered its claimed trade dress.
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cause confusion, or to cause mistake, or to deceive
as to the affiliation, connection, or association of
such person with another person, or as to the
origin, sponsorship, or approval of his or her
goods, services, or commercial activities by another
person . . . shall be liable in a civil action by
any person who believes that he or she is or is
likely to be damaged by such act.
15 U.S.C. § 1125(a)(1)(A).
Trademark infringement claims under Section 43(a) of the
Lanham Act are analyzed in two stages.
Christian Louboutin S.A.
v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 216 (2d
Cir. 2012).
First, plaintiff must establish that its mark is
entitled to protection.
Id.
A plaintiff asserting trade dress
rights in the design of a product must show that the trade dress
is non-functional, has secondary meaning, and is not overbroad
or generic.
See Yurman Design, Inc. v. PAJ, Inc., 262 F.3d 101,
115–16 (2d Cir. 2001).
Second, a plaintiff must plead that the
defendant’s use of a similar mark is likely to cause consumer
confusion.
In any claim of trade dress infringement, the plaintiff
must offer “a precise expression of the character and scope of
the claimed trade dress.”
Landscape Forms, Inc. v. Columbia
Cascade Co., 113 F.3d 373, 381 (2d Cir.1997).
A plaintiff must
specify its trade dress by “articulat[ing] the design elements
that compose” it.
Yurman, 262 F.3d at 116.
The “focus on the
overall look of a product does not permit a plaintiff to
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dispense with an articulation of the specific elements which
comprise its distinct dress.”
Landscape, 113 F.3d at 381.
The
Second Circuit “exercise[s] particular caution when extending
protection to product designs” because “trade dress claims raise
a potent risk that relief will impermissibly afford a level of
protection that would hamper efforts to market competitive
goods.” Yurman, 262 F.3d at 114-15 (citation omitted).
Without
a precise expression of the trade dress, courts are “unable to
evaluate how unique and unexpected the design elements are in
the relevant market.”
Landscape, 113 F.3d at 381.
Vinotemp’s description of its trade dress is recited above.
Wine Enthusiast argues that this description is too indefinite,
that the articulated trade dress is an unprotectable generic
trade dress, that the counterclaim’s allegations of secondary
meaning are too conclusory, and that there is no explicit
pleading that the trade dress is non-functional.
Vinotemp has
plausibly alleged a claim of trade dress infringement.
The
arguments made to dismiss this claim are more appropriately made
in the context of a summary judgment motion or at trial.
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CONCLUSION
Wine Enthusiast’s March 12 motion to dismiss is granted in
part.
Vinotemp’s counterclaim for patent infringement of U.S.
Patent No. D711,936 is dismissed; its counterclaim for trade
dress infringement is not.
Dated:
New York, New York
July 19, 2018
____________________________
DENISE COTE
United States District Judge
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