Herbko Intern., Inc. v. Gemmy Industries Corp., 95 Civ. 9848 (SHS).

• Decision Date: 26 February 1996
• Docket Number: No. 95 Civ. 9848 (SHS).,95 Civ. 9848 (SHS).
• Citation: 916 F. Supp. 322
• Parties: HERBKO INTERNATIONAL, INC., Plaintiff, v. GEMMY INDUSTRIES CORP., Defendant.
• Court: U.S. District Court — Southern District of New York

916 F. Supp. 322

HERBKO INTERNATIONAL, INC., Plaintiff, v. GEMMY INDUSTRIES CORP., Defendant.

No. 95 Civ. 9848 (SHS).

United States District Court, S.D. New York.

February 26, 1996.

COPYRIGHT MATERIAL OMITTED

Michael Aschen, Abelman Frayne & Schwab, New York City, for plaintiff.

Gerard F. Dunne, New York City, for defendant.

OPINION AND ORDER

STEIN, District Judge.

Herbko International, Inc. brought this action against Gemmy Industries Corp. alleging, among other claims, that Gemmy's "CROSSWORD CADDY" game board infringed the design patent and trade dress of Herbko's "CROSSWORD COMPANION" game board and that Gemmy engaged in false advertising as well. By order to show cause dated December 8, 1995, Herbko moved for a preliminary injunction prohibiting the continuation of those alleged violations. Oral argument on that motion, including the submission of evidence, took place on February 2, 1996. After reviewing the evidence, the Court finds that Herbko has failed to meet its burden for a preliminary injunction. Accordingly, plaintiff's motion for a preliminary injunction is denied.

I. BACKGROUND

In January of 1994, Herbko began marketing a hand held game board identified by its registered trademark "CROSSWORD COMPANION." (Sternberg Aff., ¶ 5.) The game contains a scroll of New York Times crossword puzzles within a plastic body that is designed to permit users to work on the puzzles anywhere. (Plaintiff's Exhibit 1.) When a puzzle is completed, or the player despairs of doing so, he or she can advance the scrolling device to reveal the answers to the puzzle and begin a new puzzle. Herbko's "CROSSWORD COMPANION" became available in retail stores in October of 1994 and had retail sales of approximately $3 million during the remainder of the year and approximately $12 million during 1995. (Sternberg Aff., ¶ 1; Sternberg Reply Aff., ¶ 3.) A design patent was issued to Herbko in October of 1995. (Sternberg Aff., ¶¶ 2, 4.)

Herbko became aware of Gemmy's product in approximately July of 1995 and wrote letters to its retailers expressing concern about a potential infringer. (Sternberg Aff., ¶ 11 & Exhibit 6.) Herbko requested that Gemmy forward a prototype of its product to Herbko for comparison and offered to inform Gemmy of its conclusions regarding infringement. (Sternberg Aff., ¶ 9; Defendant's Exhibit F.) Gemmy forwarded its product to Herbko and Herbko then brought this action and moved for a preliminary injunction. The parties subsequently agreed to waive the presentation of live witnesses and have plaintiff's motion decided based upon their motion papers and the evidentiary submissions and legal arguments made on February 2, 1996.

II. DISCUSSION

A. Design Patent Infringement

Herbko claims that Gemmy's "CROSSWORD CADDY" infringes upon Herbko's design patent for its "CROSSWORD COMPANION" and that it is entitled to injunctive relief pursuant to 35 U.S.C. § 283. In deciding a motion for a preliminary injunction in a patent infringement action, a district court should take into account the following factors: (1) the likelihood of success on the merits; (2) the likelihood of irreparable harm if an injunction were not granted; (3) the balance of hardships caused by granting or denying an injunction; and (4) the impact, if any, of an injunction on the public interest. Payless Shoesource, Inc. v. Reebok Int'l Ltd., 998 F.2d 985, 988 (Fed.Cir. 1993) (citing Hybritech Inc. v. Abbott Labs., 849 F.2d 1446, 1451 (Fed.Cir.1988)); We Care, Inc. v. Ultra-Mark Int'l Corp., 930 F.2d 1567, 1570 (Fed.Cir.1991). Because, as set forth below, Herbko has failed to show that it is likely to succeed on the merits of this action, its motion is being denied insofar as it alleges infringement of its design patent.

A design patent "protects the nonfunctional aspects of an ornamental design as shown in the patent." Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed.Cir. 1995) (citing KeyStone Retaining Wall Sys., Inc. v. Westrock, Inc., 997 F.2d 1444, 1450 (Fed.Cir.1993)). Design patent infringement requires a two pronged showing: first, the allegedly infringing design must be "substantially the same" as the patented design and second, the accused design must "appropriate the novelty that distinguished the patented design from the prior art." L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1124-25 (Fed.Cir.), cert. denied, ___ U.S. ___, 114 S.Ct. 291, 126 L.Ed.2d 240 (1993); Avia Group Int'l, Inc. v. L.A. Gear Cal., Inc., 853 F.2d 1557, 1565 (Fed.Cir.1988). Both tests, though often intertwined, must be satisfied in order to find infringement of a design patent. Shelcore, Inc. v. Durham Indus., Inc., 745 F.2d 621, 628 n. 16 (Fed.Cir. 1984).

The oft repeated test for determining whether an allegedly infringing product is "substantially the same" as a design patent, originally pronounced by the Supreme Court, is as follows:

If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

Elmer, 67 F.3d at 1577 (quoting Gorham Co. v. White, 81 U.S. (14 Wall.) 511, 528, 20 L.Ed. 731 (1871)); see also Payless Shoesource, 998 F.2d at 990; Braun Inc. v. Dynamics Corp. of Am., 975 F.2d 815, 819-20 (Fed.Cir.1992); Avia Group Int'l, 853 F.2d at 1565. The test for infringement, however, does not compare the commercial embodiments of the two products; instead, the allegedly infringing product is compared only to the patented design. Sun Hill Indus., Inc. v. Easter Unlimited, Inc., 48 F.3d 1193, 1196 (Fed.Cir. 1995).

In analyzing the visual similarity, a court may only consider whether an ordinary consumer would be deceived by the nonfunctional aspects of the design patent. Elmer, 67 F.3d at 1577 (quoting Read Corp. v. Portec, Inc., 970 F.2d 816, 825 (Fed.Cir.1992)). More specifically, the similarity must be attributed to the features protected by the patent — that is, the nonfunctional features that distinguish the patented device from the prior art. Litton Sys., Inc. v. Whirlpool Corp., 728 F.2d 1423, 1444 (Fed.Cir.1984); see also Sun Hill Indus., 48 F.3d at 1197; Avia Group Int'l, 853 F.2d at 1565; FMC Corp. v. Hennessy Indus., Inc., 650 F.Supp. 688, 702 (N.D.Ill.1986), aff'd in relevant part, 836 F.2d 521, 527-28 (Fed.Cir.1987); Black & Decker, Inc. v. North American Philips Corp., 632 F.Supp. 185, 191-92 (D.Conn. 1986); cf. Knitwaves, Inc. v. Lollytogs Ltd., 71 F.3d 996, 1002 (2d Cir.1995) (discussing the substantial similarity test for copyright infringement).

Herbko claims that three features of its "CROSSWORD COMPANION" were both protected by its design patent and appropriated by Gemmy's "CROSSWORD CADDY": (1) the two "detents" on each end of the game holder that are shaped as elongated rounded depressions; (2) the concentric knobs on one side of both ends of the game board; and (3) the drawer outline which is positioned between the knobs. Even assuming that these features were protected (a point disputed by Gemmy and discussed below), the combination of these three features alone is insufficient to show a likelihood of success on the merits of Herbko's design patent infringement claim because an ordinary consumer is not likely to be deceived simply by these similarities. If an ordinary consumer were to be deceived, the deception would result from shared features of the products that are not protected by the design patent, including: (1) features that are not included in Herbko's patent, such as the color, size and material (plastic) of the two products; (2) aspects that are functional, such as the mechanism of advancing crossword puzzles and the crossword puzzles themselves; and (3) aspects that are included in the prior art, such as the screen and the general body design (but not the "dog bone" shape of Herbko's product). See Sun Hill Indus., 48 F.3d at 1196-97; FMC Corp., 650 F.Supp. at 688.

Furthermore, Gemmy claims that the three allegedly appropriated features are not even protected by Herbko's design patent because they are either functional or contained in the prior art, or both. Although Gemmy's proof on these allegations is short of compelling, it does raise sufficient issues to decrease the likelihood that Herbko would prevail in showing that Gemmy appropriated protected aspects of Herbko's design patent. The end detents are allegedly functional because they facilitate opening and closing the game board in order to replace the scrolls containing the crossword puzzles. Similarly, Gemmy argues that the drawer outline is functional because the drawer holds pencils and erasers and its size maximizes the usable space available between the knobs. (Sternberg Deposition, pp. 62-64.) Gemmy claims that the test for functionality is whether a feature performs any function at all. Although a feature that is "primarily functional" is not protected by a design patent, see Avia Group Int'l, 853 F.2d 1557, Gemmy's overly broad definition of functionality is not supported by the case law. Not all features that perform functions are primarily functional; rather, the test is whether the "function dictates a design," and that requires a court to determine whether the function performed by the features in question could be accomplished by other designs. Id.

It is clear that the detents could have been designed differently while still serving the same function. In fact, Gemmy itself provided proof of their nonfunctionality by presenting two additional versions of the "CROSSWORD CADDY" that do not have the same detents. (Defendant's Exhibits C & D.) One version has detents in a slightly different shape and the other has no detents at all. Gemmy claims that only 15 percent of its current inventory has the same detents as the "CROSSWORD COMPANION." (Tr. at 72-73.) Thus the design of the detents on ...