What do Paris Hilton and patent law have in common? Well, virtually nothing really, or at least not until a couple days before Christmas at least. Yes, as hard as it may seem to believe Paris Hilton finds herself connected by the foot to patent law, having been alleged to infringe a design patent owned by Brooke Hollow, Inc., which does business as Gwyneth Shoes. The patent in question is United States Design Patent No. D579,642, which was filed on June 12, 2007 and issued on November 4, 2008.
Interestingly, Brooke Hollow is a New York corporation with its principal place of business in Brooklyn, New York. Defendant Antebi Footwear Group, LLC, the company that has partnered with Paris Hilton to design the Paris Hilton Footwear Line Collection, is a New York limited liability company with its principal place of business in New York, New York. Paris, of course, is a resident of Los Angeles County in the State of California. That being the case you probably would expect this case to have been brought either in the Southern District of New York, or maybe the Central District of California. Neither are correct. This patent infringement lawsuit, which also alleges a couple trademark causes of action, was filed in the United States District Court for the Western District of Washington, which is located in Seattle, Washington.
The complaint, which appeared in my inbox today in the daily e-mail newsletter provided courtesy of Docket Report, says that the jurisdiction and venue are proper in Seattle, Washington, even though none of the plaintiffs or defendants reside in Washington or are incorporated there. Just over one year ago, on December 29, 2008, the United States Court of Appeals for the Federal Circuit put a cramp in the style of those who seek to file a patent infringement suit anywhere they believe they can get a favorable result, requiring that the choice of venue needs to have more than a merely tangential relationship with the parties and lawsuit. The case was TS Tech, and it was based on Fifth Circuit law, which will not be applicable in this case. With Congress AWOL (i.e., absent without leave) on the issue of patent reform, there is only so much the Federal Circuit can do to make sense of process and procedure, which can vary from Circuit to Circuit. It would seem likely that a motion to transfer will be filed, and we may be in store for more development of this area by the Federal Circuit. Time will tell.
In any event, paragraphs 6 and 7 of the complaint explain the theory as to why jurisdiction and venue are believed to be appropriate. It says:
6. This Court has jurisdiction over the parties because the Defendants conduct commerce within the judicial boundaries of this Court at least by offering to sell or selling infringing products at national department stores with branches located in Washington, including Macy’s located at 800 Stewart St., Seattle, Washington, by advertising and selling infringing products on the Internet in a manner designed to reach customers in Washington, and by contributing to and inducing patent infringement in the state of Washington. Among other things, this Court has personal jurisdiction over Defendants pursuant to Wash. Rev. Code. § 4.28.185.
7. Venue is proper in this district under 28 U.S.C. § 1391(b) because it is the judicial district in which a substantial part of the events giving rise to the claims occurred and in which a substantial part of the property that is the subject of this action is situated. Also, venue is proper in this judicial district under 28 U.S.C. § 1391(c) because Antebi Footwear Group is a corporation, and Paris Hilton is a person, subject to personal jurisdiction in this district.
Although the complaint, filed says the patent is titled “Shoe Sock Having a Heart Shaped Pad,” the patent is actually titled only “Shoe Sock.” The design patents does not seem to cover what an ordinary observer would characterize as a sock, but rather a sole of a shoe. Below is a representative image from the design patent, along with an image of the Gwyneth Shoes product and the allegedly infringing Paris Hilton shoe.
Those familiar with patent law know that design patents, once the weak step-sister in the patent world, have become more valuable since the Federal Circuit issued its decision during the Fall of 2008 in the Egyptian Goddess case. Design patents cover only the way a product appears, and prior to the Egyptian Goddess case in order to prove design patent infringement the jury would be instructed to focus on the unique aspects of the design and determine whether the unique aspects, or the aspects of the design that made it possible to obtain a design patent, were misappropriated by the alleged copier. Since Egyptian Goddess the test changed to one much more like the copyright infringement analysis, which asks the jury to look at the design patent and then look at the allegedly infringing device. Upon comparing the two if an ordinary observer would believe the accused device copied the design patent then there is infringement. This has made it much easier to prove design patent infringement, and consequently made design patents much more valuable, and is why all inventors should strongly consider filing for and obtaining design patent protection if their invention has a unique visual appearance.
Design patents are cheaper to get than a utility patent, and they issue extremely quickly, typically within a year. A utility patent should not be ignored, because a utility patent will always remain stronger than a design, but sometimes a utility patent cannot be obtained because the functionality of the invention is not unique. This case, as well as other high profile cases, such as the Nike design patent lawsuit against Walmart, demonstrate the increased strength of design patents and why inventors should consider them. They are increasingly becoming an important part of any patent portfolio.
In this case, upon comparing the Paris Hilton shoe and the design patent, it would seem that the Paris Hilton shoe does copy the design patent. In any patent case, including design patent cases, plaintiffs can rest assured that the patent itself will be brought into question by the defendant and allegations made that the patent should never have issued because it is not new or is obvious. Such challenges question the validity of the patent claim. If the design patent in this case remains valid upon challenge it would seem likely that Paris Hilton and her partner company will be found liable for design patent infringement.
Whether this case ever gets to a jury (which was requested) or goes much beyond preliminary motions and posturing remains to be seen. The plaintiff is, however, seeking both a preliminary and permanent injunction, which is quite common and certainly not out of the ordinary. Among other things, the plaintiff is also requesting the district court to order the defendants to cease using the heart-shaped shoe cushion or any other shoe cushion that infringes and/or is substantially similar to Gwyneth Shoes’ ‘642 Patent; cease using the heart-shaped shoe cushion or any other shoe cushion that is confusingly similar to Plaintiff’s heart-shaped shoe sock; deliver to Plaintiff or its designated representatives all goods, signs, advertising, and promotional materials relating to the Paris Hilton Footwear Line Collection containing a heart-shaped shoe cushion; and cease infringing Gwyneth Shoes’ patent and trademark rights in the heartshaped shoe sock.
Join the Discussion
10 comments so far.
Chris McGeehanJanuary 8, 2010 02:03 am
I think this case will be transferred to LA. or Paris will be dropped as a defendant. Paris isn’t subject to venue in Washington state under 28 USC 1400(b).
Courts apply the “regular and established place of business” prong rigorously when natural persons are named as defendants in a patent case.
I had the misfortune of learning this in a trade show case where the accused infringer turned out to be a dba (individual doing business under an assumed name) and since he lived and worked in another state, the site of the infringement (the show site) was a temporary place of business.
Gena777January 2, 2010 11:12 pm
Though I hate to say it, perhaps we should all thank Paris Hilton. This latest alleged misstep of hers is likely to bring patent law (and particularly design patents) into more mainstream discussion. Maybe then, with the world watching, meaningful patent reform can finally happen. On the other hand, I doubt that anything meaningful could result from anything that Paris Hilton does.
American CowboyDecember 31, 2009 01:30 pm
Patent is invalid as claiming a structure that is functional. Everyone knows the soul resides in the heart.
Gene QuinnDecember 31, 2009 12:49 pm
I had not seen that previously. Thanks for bringing it to my attention. I think the findability of patents and references is a real problem. With the digital age I cannot understand why all of this information isn’t online, free and searchable. I think we need to rethink what we consider hidden prior art, and the IP Offices around the world need to invest in having information be findable by the masses. That would be a tremendous contribution to the advancement of technology.
Gene QuinnDecember 31, 2009 12:36 pm
I think you are right, at least to some extent. I am sure all of this will come up if it move forward. Perhaps they are just looking for a deal and given the similarity if the deal is reasonable Paris should pay and get the rights to the patent to prevent others from encroaching.
This is very dated, but by some estimates 7 out of 10 design patents are invalid. They are very difficult to search, so they are not only weak in terms of scope but much easier to challenge. Having said that, if you have a product with a visual ornamentation and get 10 design patents covering various aspects that makes what you have quite strong. Which 3 will remain? I have seen bulk design patents effectively scare off competitors.
I personally think it was a mistake to migrate to an ordinary observer copyright standard, but since they did inventors should at least consider design patents now, particularly if it is a piece of an overall portfolio.
Gene QuinnDecember 31, 2009 12:31 pm
Don’t look at what is different, look at what is the same. Clearly, the Paris Hilton shoe has many different elements not present in the design patent. The question is whether the Paris Hilton shoe incorporates what is in the design patent. Patent infringement is an all elements test, which asks whether the allegedly infringing device has taken each and every aspect of what is in a patent claim. With design patents the claim is basically “we claim what is shown in the drawings.” So does the Paris Hilton shoe take all of the design patent? I think the answer is yes, at least within the loosened design patent test that asks whether an ordinary observer would believe the accused product copied the design patent.
patent leatherDecember 31, 2009 11:27 am
First Paris goes to jail for DWI, and now this…
MikeDecember 31, 2009 09:42 am
The design patent is to the shoe sock with a raised heart in the ball of the shoe sock (must be a term of the art for the sole of the shoe).
Paris’s sole appears to be recessed not raised which may be enough to distinguish. We’ll see what other shoe designs existed before this. (Had a hard time retrieving the JP patent/application).
I did find this article where the shoes are more closely related. They also say that Gwyneth shoes is a Seattle company, maybe the business has a corporate headquarters in NY and does most of it’s business in Seattle?
The Mad HatterDecember 31, 2009 08:22 am
Totally off topic, but have you seen this?
The Mad HatterDecember 30, 2009 10:30 pm
OK. They look alike to you. They don’t look alike to me. What am I missing?