Friday, January 25, 2013

CAFC in Hall v. Bed Bath and Beyond mainly reverses SDNY; BB&B loses

The CAFC case Hall v Bed Bath and Beyond comes out badly for Bed Bath and Beyond.

One gets the gist of matter early on:

On March 20, 2009, while the ’439 patent application was pending, Mr. Hall contacted Bed Bath & Beyond (“BB&B”) to discuss whether BB&B would provide retail sales of the Tote Towel. At a business meeting, Mr. Hall left samples of his packaged Tote Towel with BB&B. Both the package and the towel were marked “patent pending.” BB&B then, through a supplier West Point Home, Inc., had copies of the Hall towel manufactured in Pakistan, for retail sale by BB&B. The patent duly issued, and Mr. Hall sued BB&B, West Point Home, and several executives of BB&B, for patent in- fringement, for unfair competition under the Lanham Act, and for misappropriation under New York statutory and common law.

The outcome

We conclude that the counts of patent infringement, unfair competition, and misappropriation were not subject to dismissal on the pleadings, but affirm the district court’s dismissal of the counts against the BB&B executives who had been sued in their personal capacity

The term "common sense" appears

“Determining whether a complaint states a plausible claim for relief [is] a context-specific task that requires the reviewing court to draw on its judicial experience and common sense.” Ashcroft v. Iqbal, 556 U.S. 662, 679 (2009).

The first year Civ Pro case of Conley v. Gibson appears:

The district court stated that the complaint should have included answers to questions such as: “What is it about Plaintiff’s towel that he claims is ‘new, original and ornamental,’ meriting the protection of a design patent?” Order at 16. The Federal Rules, and the Court in Twombly and Iqbal, do not so require. In Twombly the Court stated that “Federal Rule of Civil Procedure 8(a)(2) requires only ‘a short and plain statement of the claim showing that the pleader is entitled to relief,’ in order to ‘give the defendant fair notice of what the . . . claim is and the grounds upon which it rests.’” Twombly, 550 U.S. at 555 (quoting Conley v. Gibson, 355 U.S. 41, 47 (1957)). Here the defendants never stated that they were not apprised of Hall’s infringement claim and its grounds.

As to design patents

In addition, the district court erred in its view of design patent law, for, as confirmed in Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), infringement of a design patent is based on the design as a whole, not on any “points of novelty.” As stated in L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1125 (Fed. Cir. 1993), “[i]n conducting [infringement] analysis the patented design is viewed in its entirety, as it is claimed.” See Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528 (1871) (infringement is determined by visual comparison of the pictured design and the accused article).

False advertising arose

The Second Circuit has explained that “the text of the Lanham Act makes it clear that a false advertising claim can properly be brought against a defendant who misrepresents the quality of its own goods as well.” Société Des Hotels Meridien v. LaSalle Hotel Operating P’ship, L.P., 380 F.3d 126, 132 (2d Cir. 2004). (...)
Precedent guides that if BB&B’s advertising state- ment is literally false, it may be actionable “without reference to the advertisement’s impact on the buying public.” Tiffany, 600 F.3d at 112 (quoting McNeil-P.C.C., Inc. v. Bristol-Myers Squibb Co., 938 F.2d 1544, 1549 (2d Cir. 1991)). If the statement is not literally false but is merely misleading, remedy may still be available, but the evidentiary burden is higher. In Tiffany the court ex- plained that to prevail on a likelihood-of-confusion theory based on false advertising, the plaintiff must demonstrate through “extrinsic evidence” that a “statistically significant” portion of the consumer base would be confused.


Post a Comment

<< Home