Rosco, Inc. v. Mirror Lite Co.
| Decision Date | 31 January 2001 |
| Docket Number | No. CV-96-5658 (CPS).,CV-96-5658 (CPS). |
| Citation | 139 F.Supp.2d 287 |
| Parties | ROSCO, INC., Plaintiff, v. MIRROR LITE COMPANY, Defendant. |
| Court | U.S. District Court — Eastern District of New York |
Ostrolenk Faber Gerb & Soffen, LLP, New York City, for plaintiff.
Plunkett & Cooney, P.C., Bloomfield Hills, MI, Thomas M. Furth, New York City, for defendant.
This is an action brought by plaintiff, Rosco, Inc. ("Rosco"), against defendant Mirror Lite Company ("Mirror Lite"), asserting claims of design patent infringement, trade dress infringement, false designation of origin, false description, tortious interference with business relations, and trademark infringement in violation of 15 U.S.C. § 1125(a), as well as a claim of patent invalidity. In addition to damages, plaintiff seeks declaratory and injunctive relief pursuant to 28 U.S.C. §§ 2201 and 2202. Mirror Lite has asserted a counterclaim of patent infringement in violation of 15 U.S.C. § 1125(a). The matter was tried before the undersigned sitting without a jury on March 6 through 10, 2000.
For the reasons set forth below, I conclude that Rosco is not entitled to judgment on its claims of design patent infringement, trade dress infringement, false designation of origin, false description, tortious interference with business relations, and trademark infringement. The Mirror Lite patent at issue in this lawsuit is invalid and Mirror Lite is not entitled to judgment on its claim of patent infringement.
What follows sets forth the Court's findings of fact and conclusions of law on which that decision is based as required by Rule 52(a) of the Federal Rules of Civil Procedure.
Plaintiff Rosco is a corporation located in Jamaica, New York that manufactures and sells a variety of mirrors and sunvisors for, among other motor vehicles, school buses. Solomon Englander purchased Rosco in 1961. Currently, the company is owned jointly by Benjamin Englander, Rosco's vice president of engineering, Daniel Englander, Rosco's vice president of finance, Gertrude Englander, and Solomon Englander, Rosco's president. (Tr. at 5, 479, Pl.'s Ex. 47.)1 Defendant Mirror Lite is a corporation located in Rockwood, Michigan, that also manufactures various types of mirrors for school buses, among other motor vehicles. William Schmidt is the owner and president of Mirror Lite. (Tr. at 376, Def.'s Exs. D-P.)
The products in dispute in this lawsuit are "cross-view" mirrors for the school bus industry. These mirrors are convex, three-dimensional, curved surface mirrors that are generally mounted on the front fender of a school bus. So mounted, the mirrors allow the bus driver to view the front and "passenger" side of a school bus. In 1990, Mirror Lite developed and sold a cross-view mirror named the "Bus Boy."2 Shortly afterward, Rosco developed and sold a cross-view mirror named the "Tiger Eye." In the fall of 1991, Rosco and Mirror Lite settled a litigation involving the competing "Bus Boy" and "Tiger Eye" mirrors, as a result of which Rosco agreed to stop making the "Tiger Eye" mirror. In addition to this lawsuit, there is currently another patent infringement lawsuit between the parties pending in the Eastern District of Michigan.
Following Rosco's decision to stop producing the "Tiger Eye" cross-view mirror in the late fall of 1991, Solomon Englander began to design a new cross-view mirror. After Solomon Englander came up with a design for an oval cross-view mirror, he worked with Benjamin Englander to produce a three-dimensional, computer-generated image of the mirror as a basis for producing a prototype. According to the Englanders, the unique aspect of the new design was its oval shape. On December 23, 1991, Rosco sent a fax of the computer-generated image of the oval cross-view mirror to Mir-Acryl, a company that manufactures acrylic mirror products, so as to obtain a lens for a prototype mirror. Rosco thereafter corresponded with Mir-Acryl several times in January and February 1992 on the same subject.
Rosco sought a design patent for its newly designed cross-view mirror on April 14, 1992, and began manufacturing the new mirrors under the name "Eagle Eye" in May 1992. The new cross-view mirror was manufactured with two different mounting systems: product number 2360, consisting of the oval cross-view mirror with a tunnel mounting structure, and product number 2365, consisting of the oval cross-view mirror with a ball-stud mounting structure. The tunnel mounting structure uses a long, cylindrical opening on the mount that receives the tubular arm on which the mirror rests. The ball-stud, or ball-swivel, mounting structure consists of a ball joint with a threading stud at its end that receives the mirror mounting.
In early 1993, after embarking on an aggressive marketing and sales campaign, Rosco decided to seek to trademark the name "Eagle Eye" for its oval cross-view mirror. Rosco was, however, unable to obtain such a trademark because a Taiwanese company was already selling an unspecified automotive product under the "Eagle Eye" trademark. On December 22, 1993, Rosco received a cease and desist letter from Mirror Lite's attorneys, stating that Mirror Lite had a registered trademark for a school bus mirror it sold under the brand name "Eagle" and requesting that Rosco cease the use of the product name "Eagle Eye" in conjunction with its new school bus mirror. As a result of the difficulty it experienced in registering the name "Eagle Eye," Rosco changed the name of its cross-view mirror to "Hawk Eye."
On April 26, 1994, Rosco obtained United States Design Patent No. 346,357 ("'357 Patent") for the Hawk Eye mirror. (Pl.'s Ex. 1.) The '357 Patent protects the Hawk Eye's ornamental design as described in the patent drawings. The patent drawings and physical exhibits of the mirror show a highly convex, curved-surface, three-dimensional, oval mirror with a black, flat, metal backing. Attached to the flat backing are three support ridges and a bracket mount for attaching the mirror to a support arm, representing the tunnel mounting system. Ten visible screws hold the bracket to the flat backing. The support ridges on the back of the mirror provide structural rigidity to the backing. Plaintiff's Trial Exhibit 111 represents the "Hawk Eye" mirror, with the same dimensions as Trial Exhibit 110 but features the ball-stud mounting system.
Theresa Martin, the plant manager at Mirror Lite, testified at trial that in November 1991 she had been asked by Frank Hutchinson, an owner of Mirror Lite, to physically assemble a prototype model of an oval elliptical mirror in November 1991. (Tr. at 376, 523-24.) Karen Botkin, Mirror Lite's vice president, testified that Mirror Lite not only designed but assembled and exhibited the prototype of the oval elliptical mirror at a trade show in November 1991 in Nashville, Tennessee before plaintiff had obtained its prototype. Mirror Lite's prototype was not, however, produced at trial because Botkin testified that, at the end of the trade show, she gave the prototype away. Botkin also testified that Mirror Lite produced six or seven prototypes of an oval elliptical mirror and displayed at least one of them at another trade show sometime in early 1992. No explanation was forthcoming at trial concerning what happened to the "six or seven" Mirror Lite prototypes that were not given away.
Schmidt testified that sometime in August 1992 he saw the advertisement for Rosco's "Eagle Eye" mirror in the August/September issue of a trade publication covering the school bus industry. Schmidt testified that, appearance to the contrary, he took the Rosco mirror to be circular in shape, not oval. Other than seeing the Rosco "Eagle Eye" ad in August 1992, Schmidt testified that he was unaware of the Rosco mirror during any point in the development and production of Mirror Lite's oval cross-view mirror. On September 9, 1992, Mirror Lite filed for a utility patent for its oval cross-view mirror.
The United States Patent Office issued United States Patent No. 5,589,984 ("'984 Patent") on December 31, 1996. (Pl.'s Ex. 2.) The patent drawings and physical exhibits show an oval elliptical mirror with a generally convex reflective surface secured by a rubber gasket. The mirror features a black rubber gasket connected by a "splice joint," a manner of connecting two ends of the gasket that results in a slight extrusion on the gasket. The mirror has a flat, black, plastic backing that features two oval protrusions and a mounting system similar to the Rosco ball-stud mounting system. Schmidt testified that he added the two protrusions as a way of distinguishing the Mirror Lite mirror. After obtaining the '984 Patent, Mirror Lite began selling the oval mirror to school bus manufacturers. To date, Mirror Lite has sold only 400 units of its oval cross-view mirror.
Sometime in November 1996, Benjamin Englander first observed the Mirror Lite oval cross-view mirror at a trade show in Nashville, Tennessee. On November 25, 1996, Mirror Lite issued a brochure entitled "Mirror Lite Co.1996 Interchange List" ("Interchange"), which described patents generally and explained that Mirror Lite holds thirty patents. (Pl.'s Ex. 52.) The Interchange stated that "[u]nfortunately Mirror Lite will be forced to vigorously enforce their patents in the coming months" because it "will not allow anyone to manufacture, sell, or buy a copy of one of [its] products." (Id.) The remainder of the Interchange is a two-column list of products, one labeled "Genuine Mirror Lite Products" and the other column labeled "Generic" in a circle with a line through it. (Id.) The Generic column includes Rosco's Hawk Eye mirrors, listed under Rosco product numbers 2360 and 2365, respectively. (Id.) The corresponding "Genuine Mirror...
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