Kitsch LLC v. Deejayzoo, LLC
2:19-cv-02556
C.D. Cal.Dec 21, 2023Background
- Kitsch LLC sued DeeJayZoo, LLC seeking declarations of invalidity and non-infringement of DeeJayZoo's design patent (D792) and trademarks related to shower caps.
- DeeJayZoo counterclaimed for infringement of its D792 design patent, THE SHOWER CAP REINVENTED registered trademark, and the unregistered SHHHOWERCAP mark.
- After a jury trial, the jury found no infringement by Kitsch on the patent or trademarks, found THE SHOWER CAP REINVENTED mark invalid as merely descriptive, but upheld the validity of the SHHHOWERCAP mark while finding no infringement.
- Post-trial, DeeJayZoo moved for judgment as a matter of law or a new trial, and Kitsch moved for attorneys’ fees and costs.
- The court addressed evidence issues, expert testimony admissibility, jury instructions, and the impact of new decisions (notably, Columbia Sportswear), as well as the appropriateness of trademark cancellation and fee awards.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether THE SHOWER CAP REINVENTED mark had acquired secondary meaning | Jury erred; mark had secondary meaning due to use and copying | No compelling evidence of secondary meaning; insufficient consumer perception data | Jury’s finding reasonable; no secondary meaning; no overturn |
| Admissibility of design expert (Choklat) testimony | Expert’s opinion not helpful, should be excluded | Expert testimony helps jury; expert qualified and cross-examined | Admission appropriate; no error in allowing testimony |
| Appropriateness of jury instructions on copying and prior art in design patent law | Jury should have been instructed that copying matters for infringement | Copying process not relevant; objective test governs | No requirement to instruct on copying; instructions adequate |
| Trademark cancellation (THE SHOWER CAP REINVENTED) | Registration should not be canceled based on trial findings | Jury’s verdict compels cancellation; secondary meaning at relevant time not shown | Cancellation appropriate under law and facts |
| Attorneys’ fees award | DeeJayZoo’s conduct made case exceptional | No exceptional circumstances; only minor inconsistencies | No attorneys’ fees; not exceptional |
Key Cases Cited
- Harper v. City of Los Angeles, 533 F.3d 1010 (9th Cir. 2008) (standard for judgment as a matter of law: substantial evidence must support jury verdict)
- Zobmondo Ent., LLC v. Falls Media, LLC, 602 F.3d 1108 (9th Cir. 2010) (secondary meaning and presumption of validity for descriptive marks)
- Filipino Yellow Pages, Inc. v. Asian J. Publications, Inc., 198 F.3d 1143 (9th Cir. 1999) (methods for proving secondary meaning)
- Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (ordinary observer test for design patent infringement)
- Converse, Inc. v. Int'l Trade Comm'n, 909 F.3d 1110 (Fed. Cir. 2018) (timing of secondary meaning for trademark validity)