525 F.Supp.3d 826
N.D. Ohio2021Background
- Gold Crest owns two design patents for a desk lamp (D769,512 and D787,735) and alleges trademark/trade dress goodwill from marketing those designs.
- Defendants are three Ohio LLCs (Project Light, Prospetto Light, Prospetto Lighting) that share addresses/websites and an individual, Sam Avny, alleged to be their managing member and controlling actor.
- Gold Crest alleges the corporate defendants displayed an accused lamp at a 2017 trade show and offered an accused model (catalog item D63) for sale on www.projectlightinc.com, pictured next to Gold Crest’s patent drawings.
- Gold Crest asserts direct and indirect design-patent infringement (35 U.S.C. § 271) and unfair competition (15 U.S.C. § 1125), plus claims of personal, contributory, and vicarious liability against Avny.
- Procedural posture: Prospetto Light, Prospetto Lighting, and Avny moved to dismiss under Fed. R. Civ. P. 12(b)(6); Project Light answered. The court granted the motion in part and denied it in part.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Direct design-patent infringement by the Corporate Defendants | Gold Crest alleged ownership, identified accused product (trade-show and D63 online), and included photos comparing accused product to patent drawings | Group pleading and insufficient description of the means of infringement; some views of the patent not compared | Denied — direct infringement claims against corporate defendants are plausible and survive Rule 12(b)(6) |
| Indirect (induced & contributory) infringement by the Corporate Defendants | Alleged that defendants induced/contributed to infringement via agents and sales | Allegations are conclusory and fail to identify who was induced, what acts infringed, or components lacking noninfringing uses | Granted — indirect-infringement claims dismissed for failure to plead required factual particulars |
| Unfair competition (15 U.S.C. § 1125) against the Corporate Defendants | Alleged illegal passing off, misappropriation of trade dress/trademarks based on common website and marketing | Defendants argued same pleading defects as patent claims (briefly) | Denied — court refused to resolve adequacy because briefing was inadequate; claim remains pending |
| Avny’s personal liability (direct, vicarious, contributory/induced) | Avny is the managing member/controlling force; therefore personally liable for corporate acts; pleaded control facts and public filings | Defendants say no factual allegations show Avny personally committed infringing acts or that veil piercing is warranted | Mixed: Denied as to Avny’s personal/vicarious liability for corporate direct infringement (veil-piercing allegations sufficient at pleading stage); Granted as to Avny’s and corporate indirect (induced/contributory) liability (those claims dismissed) |
Key Cases Cited
- Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007) (established plausibility pleading standard under Rule 8)
- Ashcroft v. Iqbal, 556 U.S. 662 (2009) (applied and clarified Twombly plausibility standard)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (ordinary-observer test governs design-patent infringement)
- Gorham Mfg. Co. v. White, 81 U.S. 511 (1871) (foundational articulation of the ordinary-observer test)
- Crocs, Inc. v. Int'l Trade Comm'n, 598 F.3d 1294 (Fed. Cir. 2010) (design comparison considers the design as a whole)
- K-Tech Telecomms., Inc. v. Time Warner Cable, Inc., 714 F.3d 1277 (Fed. Cir. 2013) (patent pleadings must put accused infringer on notice of the accused activity/device)
- Rotec Indus., Inc. v. Mitsubishi Corp., 215 F.3d 1246 (Fed. Cir. 2000) (offer-to-sell analyzed by traditional contract norms)
- Commil USA, LLC v. Cisco Sys., Inc., 575 U.S. 632 (2015) (direct infringement is strict liability; knowledge is relevant for indirect liability)
- DSU Med. Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (standards for induced infringement)
- Ricoh Co. v. Quanta Computer Inc., 550 F.3d 1325 (Fed. Cir. 2008) (elements of contributory infringement)
- Manville Sales Corp. v. Paramount Sys., Inc., 917 F.2d 544 (Fed. Cir. 1990) (officers generally shielded from personal liability for corporate direct infringement absent veil piercing)
- Belvedere Condo. Unit Owners’ Ass’n v. R.E. Roark Co., Inc., 617 N.E.2d 1075 (Ohio 1993) (three-part Ohio test for piercing the corporate veil)