UGG® DECKERS OUTDOOR CORPORATION v. TOMMY HILFIGER RETAIL, LLC

Nike, Inc. (“Nike”) on April 9, 2021 filed a dismissal with prejudice at the United States District Court, Eastern District of New York, “EDNY”) its trademark infringement claims against MSCHF Product Studio, Inc., (“MSCHF”) with each party bearing its own costs and attorneys’ fees, pursuant to Federal Rule of Civil Procedure (“FRCP”).  As to be expected, the temporary restraining order issued by Honorable Judge Eric Komitee, on April 1, 2021, was dissolved and Nike was released from its obligation to file a bond.

Prior to the dismissal, MSCHF having a situs in Brooklyn, New York, had decided not to run with Satan and settled a trademark infringement complaint filed against them by the Oregon based sneaker king Nike.  Many news outlets, including Reggie Wade, a writer for Yahoo!  announced that Nike had settled its legal battle with MSCHF.  Please, check out, Reggie Wade’s article and video. In addition, IP360’s Hannah Albarazi, told us a Nike spokesperson, said, “As part of the settlement, Nike has asked MSCHF, and MSCHF has agreed, to initiate a voluntary recall to buy back any Satan Shoes and Jesus Shoes for their original retail prices, in order to remove them from circulation.”

Turning to the original complaint at the EDNY, Nike filed the trademark infringement complaint on March 29, 2021, in the United States District Court, Eastern District of New York, Case: 1:21-cv-01679, against MSCHF alleging MSCHF was currently taking orders for shoes it refers to as “Satan Shoes”.  MSCHF is the New York product design studio behind rapper Lil Nas X’s (Legal Name: Montero Lamar Hill) Satan Shoes.  The Satan Shoe was promoted in connection of a marketing strategy for Lil Nas X’s song, titled: “Montero (Call Me By Your Name)” as reported by NBC Palm Springs.

The “Satan Shoes” are customized Nike Air Max 97 shoes that MSCHF had materially altered to prominently feature a satanic theme. These material alterations and alleged unlawful activities were configured and manufactured without Nike’s approval or authorization. Nike asserted in the Complaint that Nike is in no way connected with the material alterations to their Nike Air Max 97 shoes. MSCHF marketing goal was to manufacture and sell a limited edition of 666 pairs of Satan Shoes individually numbered for a satanical price of $1,018.00 containing 60cc ink and 1 drop of HUMAN BLOOD, according to a tweet published on March 26, 2021 by a Twitter account focused on sneakers and popular culture, please, see tweet, reproduced, below, directly from Case: 1:21-cv-01679. (See, Pacer). 

Nike sought a judgment and order alleging MSCHF of:

• Willful infringement of Nike’s Trademarks pursuant to 15 U.S.C.  1114;
• False designations of origin in violation of 15 U.S.C. § 1125(a); 
• Dilution of Nike’s Trademarks in violation of 15 U.S.C. §1125(c); and
• Violation of Nike’s Common Law Rights in Nike’s Trademarks.

In a Letter, respectfully, submitted by MSCHF, addressed to Honorable Eric Komitee, U.S. District Court Judge of the Eastern District of New York, MSCHF requested Judge Komitee to deny the temporary restraining order in Nike’s complaint explaining that the Satan Shoe – “These are not typical sneakers, but rather individually – numbered works of art that were sold to collectors for $1,018.00 each…”. Further, stating, in part, that there is no imminent or immediate threat of irreparable harm related to the Satan Shoes because all but one pair of the Satan Shoes had already been sold and shipped, and MSCHF did not have intentions of issuing additional pairs of Satan Shoes.  The Letter emphasizes to Judge Komitee, “More significantly, these shoes are works of art that are intended to criticize the ever popular “collab culture,” where brands like Nike collaborate with anyone willing, to make a splash.” MSCHF rationalized because “…Lil Nas X’s most recent video prominently features Satan, [Lil Nas X] is, thus, the perfect collaborator for these shoes, which are, also, portrayed as a collaboration with Satan himself.” Noteworthy, MSCHF argues given the artistic expression at the core of the Satan Shoes, Nike could not prevail on its Trademark infringement or dilution complaint where the First Amendment protects artistic expression and would bar Nike relief, citing Cliff Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 494 – 95 (2d Cir. 1989) quoting: “works of artistic expression that include trademarks are protected under the First Amendment so long as the use is (1) artistically relevant, and (2) not explicitly misleading); VIP Prods, LLC v. Jack Daniel’s Props., Inc., 953 F. 3d 1170, 1176 (9^th Cir. 2020) quoting: “works that contain some protected expression are “noncommercial” and, therefore, non – actionable under the dilution act”; and Mattel Inc., v. Walking Mt. Prods., 353 F.3d 792, 806 – 12 (9^th Cir. 2003) quoting: “photographs of Barbie dolls that offered critique of the objectification of women was artistic, protected speech that outweighed Mattel’s right in its Barbie trademarks and trade dress.”

On April 01, 2021, Honorable Judge Eric Komitee ran with Nike’s position alleging MSCHF’s alleged violations of Nike’s Trademarks under federal law and common law related to NSCHF’s marketing of the “Satan Shoe” bearing Nike’s trademarks and granted a temporary restraining order (“TRO”) pending resolution of Nike’s motion for a preliminary injunction pursuant to the Lanham Act, 15 U.S.C. § 1125; and Rule 65 of the Federal Rules of Civil Procedure (“FRCP”), and, thereby, deflecting the sales of the 666 pairs of Satan Shoes. The court ordered MSCHF enjoined from:

a.  fulfilling any orders for MSCHF’s Satan Shoes;

b.  using the Nike word mark or the Nike Swoosh mark or any mark that is confusingly similar to Nike’s marks, or is a derivation or colorable imitation thereof regardless of whether used alone or with other terms;

c. referring to or using any of Nike’s marks in any advertising, marketing, or promotion; and

d. instructing, assisting, aiding, or abetting any other person or business entity in engaging in or performing any of the activities referred to in the allegations asserted by Nike.  

Judge Eric Komitee further ordered MSCHF to appear before the Court on April 14, 2021 to show cause why, pursuant to FRCP 65, a preliminary injunction should not be issued.

Please, see, below is an image of the genuine Nike Air Max 97 shoe next to MSCHF’s customized Satan Shoe.

As noted in the Complaint, on March 26, 2021, a Twitter account focused on sneakers and popular culture published the following tweet announcing MSCHF’s Satan Shoes.

Following the publication of the tweet, numerous media outlets reported on the satanic theme of the shoes and that MSCHF would be releasing a limited edition of 666 individually numbered “Satan Shoes” having a NIKE AIR MAX 97 as the body of the Satan Shoe, and as depicted in the images reproduced, below, including:

• red ink;
• a drop of literal human blood incorporated into the sole of each Satan Shoe; 
• a side of the Satan Shoe featuring in red embroidered text that recites “LUKE 10:18” (New International Version translation of the Bible Verse Luke 10:18 recites: “He replied, ‘I saw Satan fall like lightning from Heaven’”;
• embroidered in red on a side of the Satan Shoe the number “6/666”;
• a circular pendant including a pentagram attached to the laces of each Satan Shoe;
• an image of a pentagram imprinted inside the Satan Shoe at the heel;
• a red inverted cross depicted at the top of the tongue of each of the Satan Shoe; and
• an air bladder in the sole of each Satan Shoe appears to be filled with red liquid;
• the left Satan Shoe displays the letters “MSCHF” which identifies MSCHF Product Studio; and the right Satan Shoe displays the letters “LIL NAS X” identifying the rap artist who apparently collaborated with MSCHF on the design of the Satan Shoes.

Nike asserted all of the above identified material alterations to the NIKE AIR MAX 97 are associated with “satanism or demonic activity”.

KATE SPADE, LLC, New York, N.Y. was issued a Design Patent for a BAG CLASP on March 30, 2021 which was invented by NICOLA GLASS of Brooklyn, New York. The term of the Design Patent is 15 years.

Please, see below, the ornamental design for the BAG CLASP, as illustrated in the Design Patent, D914,366, and the BAG CLASP, as it came to life, designed as a palmary “TWISTLOCK” to open and close the KATE SPADE bags, wallets, air pod case, watch case, and more, as a prominent Heart ornament twists and locks into a Spade shaped opening!!

PLEASE NOTE: This is not an advertisement or endorsement of KATE SPADE products. This post is intended to provide teaching materials to the inventor, the entrepreneur, who has an idea – where the idea can be taken through the innovative journey of a place of let’s get creative – to let’s go to the United States Patent and Trademark Office – to let’s start a business and bring the idea to market!!!

U.S. Design Patent D912,801

And, please see, “Etsy” at Natalie Mills – Rhinestone Crystal Destiny Face Mask in Gorgeous Colors, as depicted below:

 

The ornamental design for a MASK, as shown and described, below, was issued as a Design Patent on March 9, 2021. The inventor is Natalie – Dale Mills who filed her Design Patent Application on August 4, 2020 represented by her Patent Attorney, Michael D. Eisenberg. The ornamental design is a stylish fashionable design and striking accessory to wear as a masking barrier, perhaps, to the spike proteins carried on Covid Virus – 19.

What is interesting about this Design Patent is that the Applicant prevailed in a patent prosecution battle at the U.S. Patent Office where the Patent Examiner initially rejected the claim to the ornamental design in a first action on the merits. The Patent Examiner asserted a rejection under 35 U.S.C. § 102(a)(1) which recites anticipation of the ornamental design based on found prior art referencing BDTTBZ Reusable Bling Crystal Face Mask with a prior public availability date of May 23, 2020 as depicted on the “Amazon” e-commerce marketplace which was disclosed before the effective filing date, i.e., August 4, 2020, of the claimed ornamental design of the Applicant’s MASK.  The Patent Examiner, further, asserted a second rejection under 35 U.S.C. §102(a)(1) as being anticipated by BLING FACE MASK being sold on the e-commerce marketplace “Etsy” by Luxe Masks with a “review date” of August 3, 2020 which was prior to the filing date of the Applicant’s Design Patent Application. The Patent Examiner concluded that the Reusable Bling Crystal Face Mask and the Luxe Masks being sold on “Amazon” and “Etsy”, respectively, rendered the Applicant’s claimed invention as described in a printed publication, or in public use, and on sale or otherwise available to the public before the effective filing dated of the Applicant’s claimed invention.

In a remarkable concatenation (Dictionary.com – word of the day, March 25, 2021) delivered in the Applicant’s response to the Patent Examiner’s Non Final Office Action, the Applicant relied on the statutory framework of the 35 U.S.C. §102(a)(1) rejection which sports an exception dressed in a 1 year Grace Period under 35 U.S.C. §102(b)(1)(A) stating, generally, a disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention under §102(a)(1) if the disclosure was made by the inventor, here, Natalie – Dale Mills, or a joint inventor, or by another person who obtained the subject matter of the MASK disclosed directly or indirectly from the inventor, or a joint inventor, or under 35 U.S.C. §102(b)(1)(B) stating, generally, the subject matter of the MASK disclosed had, before such disclosure, been publicly disclosed by the inventor, or a joint inventor, who obtained the subject matter disclosed directly or indirectly from the inventor, or a joint inventor if there is an identified joint inventor.

The Applicant respectfully denied the Patent Examiner’s rejection under 35 U.S.C. §102(a)(1) based on the Amazon posting of the BDTTBZ Reusable Bling Crystal Face Mask with a prior public availability date of May 23, 2020. The Applicant was able to show that Amazon listing dates are not mutable with a printed publication under 35 U.S.C. §102(a)(1). The Applicant provided evidence that Amazon allows for multiple material changes to be made to an Amazon listing without any update to the date first available which does not constitute a publication date in the same way a printed publication is dated under 35 U.S.C. §102(a)(1).  Patent Attorney Eisenberg who responded on behalf of the Applicant, stated: “In fact, many Amazon sellers take advantage of the fact that a mature listing may have gained a certain visibility on the Amazon platform, will change the listing to sell a new item, and benefit the new item with the same visibility gained by a previous item.” With this rationale, perhaps, the Amazon e-commerce marketplace is favorable to Trademark holders rather than to Patent holders. In addition, the Applicant provided evidence that she had disclosed the MASK to the public as early as May 22, 2020 thereby invoking the exception under 35 U.S.C. §102(b)(1)(A) 1 year grace period allowing a disclosure made by (1) inventor, here, Natalie – Dale Mills; (2) joint inventor; or (3) by another, who obtained the subject matter directly or indirectly from the inventor or joint inventor. The Applicant’s arguments were successful, the Patent Examiner allowed the claim to the ornamental design of the MASK, and, subsequently, the Design Patent issued on March 9, 2021.

This Post is not an Advertisement or an Endorsement. I have chosen to post the link to the Inventor Natalie Mills’ ecommerce site on “Etsy” with the intent to spread the United States Patent Office’s mission of promoting innovation, creativity, and novel discoveries gaining protection from a U.S. Patent, where American industries can flourish, even where the industry is powered by the individual inventor, and, in particular a woman inventor.

Natalie Mills – Rhinestone Crystal Destiny Face Mask in Gorgeous Colors found at: https://www.etsy.com/listing/986931461/natalie-mills-rhinestone-crystal-destiny?ga_order=most_relevant&ga_search_type=all&ga_view_type=gallery&ga_search_query=natalie+mills+mask&ref=sc_gallery-1-3&plkey=db8057f6a45071be99c9903a7614374e044ca3a9%3A986931461&pro=1&frs=1&col=1.

References: USPTO at Public Pair at Patent D912,801 at NonFinal Office Action; Amendment and Remarks.

Website: Patentpending, PLLC owner Elizabeth Reilly and ISSUED TM.

The Tieks’ case just happens to provide a colorful case study in Fashion Law which expertly details patent design infringement; trade dress; unfair trade practices, and false advertising where Soto Massini and founder Thomas Pichler (“Defendants”) actively peddled the blue – turquoise pekkaboo soled shoe, “Terzetto Milano” which decidedly infringed the ornamental design for the Tieks’ shoe with a blue outpatch sole, and an ornamental design for a split – sole shoe. Gavrieli Brands walked away in the green amounting to a Delaware federal jury award in the amount of  $2.1 million in damages.

Defendants had the claimed designs of the Patents-in- Suit, without Gavrieli’s permission, in their “Terzetto Milano” ballet flats, as evidenced in the exhibit above, that Defendants have made, used, offered for sale, sold, and/or imported into the United States.

The Case:

The case, in sum: Gavrieli Brands, LLC who is the shoe maker for Tieks foorwear accused Soto Massini, an Italian Limited Co., and Thomas Pichler the founder of Soto Massini, for patent infringement arising under the laws of the United States, 35 U.S.C. § 101 et seq., trade dress infringement arising under the Federal Trademark Act of 1946, known as the Lanham Act, 15 U.S.C. § 1051 et seq., unfair trade practices arising under the laws of the state of California, Cal. Bus. Prof. Code § 17200 et seq., false advertising arising under the Lanham Act, 15 U.S.C. § 1125 et seq., and false advertising under the laws of the state of California, Cal. Bus. Prof. Code § 17500 et seq. Gavrieli is the owner of all right, title, and interest in United States Design Patents Nos. D781,035 (the “’035 patent”), D781,032 (the “’032 patent, D781,034 (the “’034 patent”), D681,927 (the “’927 patent”), and D761,538 (the “’538 patent”), as well as the distinctive trade dress associated with Tieks®.

Pichler and Soto Massini (“Defendants”)have used and continue to use the claimed designs of the Patents-in- Suit, without Gavrieli’s permission, in their “Terzetto Milano” ballet flats that Defendants have made, used, offered for sale, sold, and/or imported into the United States. Gavrieli Brands, LLC who is the shoe maker for Tieks footwear accused Soto Massini, an Italian Limited Co., and Thomas Pichler the founder of Soto Massini, for patent infringement arising under the laws of the United States, 35 U.S.C. § 101 et seq., trade dress infringement arising under the Federal Trademark Act of 1946, known as the Lanham Act, 15 U.S.C. § 1051 et seq., unfair trade practices arising under the laws of the state of California, Cal. Bus. Prof. Code § 17200 et seq., false advertising arising under the Lanham Act, 15 U.S.C. § 1125 et seq., and false advertising under the laws of the state of California, Cal. Bus. Prof. Code § 17500 et seq.

Gavrieli is the owner of all right, title, and interest in United States Design Patents Nos. D781,035 (the “’035 patent”), D781,032 (the “’032 Case 1:18-cv-00462-GMS Document 27 Filed 05/22/18 Page 1 of 65 PageID #: 506 2 patent”), D781,034 (the “’034 patent”), D681,927 (the “’927 patent”), and D761,538 (the “’538 patent”) (collectively, the Patents-in-Suit,” attached hereto as Exs. A-E), as well as the distinctive trade dress (the “Trade Dress”) associated with Tieks®. 2. Defendants have used and continue to use the claimed designs of the Patents-in- Suit, without Gavrieli’s permission, in their “Terzetto Milano” ballet flats that Defendants have made, used, offered for sale, sold, and/or imported into the United States.Gavrieli Brands, LLC who is the shoe maker for Tieks foorwear accused Soto Massini, an Italian Limited Co., and Thomas Pichler the founder of Soto Massini,  for patent infringement arising under the laws of the United States, 35 U.S.C. § 101 et seq., trade dress infringement arising under the Federal Trademark Act of 1946, known as the Lanham Act, 15 U.S.C. § 1051 et seq., unfair trade practices arising under the laws of the state of California, Cal. Bus. Prof. Code § 17200 et seq., false advertising arising under the Lanham Act, 15 U.S.C. § 1125 et seq., and false advertising under the laws of the state of California, Cal. Bus. Prof. Code § 17500 et seq. Gavrieli is the owner of all right, title, and interest in United States Design Patents Nos. D781,035 (the “’035 patent”), D781,032 (the “’032 patent”), D781,034 (the “’034 patent”), D681,927 (the “’927 patent”), and D761,538 (the “’538 patent”) as well as the distinctive trade dress (the “Trade Dress”) associated with Tieks®. 

Defendants had the claimed designs of the Patents-in- Suit, without Gavrieli’s permission, in their “Terzetto Milano” ballet flats that Defendants have made, used, offered for sale, sold, and/or imported into the United States.

Please, see Gavrieli Brands LLC v. Soto Massini (USA) Corp., an Italian Limited Co., and Thomas Pichler, an Individual, case no. 1:18-cv-00462, U.S. District of Delaware for a great visual presentation of the case.

U.S. Patent D840,149 Inventor Alice Lemaire, Paris (FR), Assignee: LOUIS VUITTON MALLETIER

Alice Lemaire redesigns the iconic Louis Vuitton® hatbox into an artfully crafted handbag.

This is not an advertisement or endorsement for Louis Vuitton ®. This post provides educational information exemplifying the simple lines of a design patent reimagined and crafted as an artful handbag. Please see, #Louisvuitton.com, #USPTO.

Design Patent U.S. D827,993 SHOE Inventor Stefano Sassi, Milan, IT  Assigned To Valentino, S.p.A., Milan, IT

 

For only the second time in a hundred years, the United States Patent and Trademark Office (USPTO) has redesigned the patent grant cover. Often decorated with an iconic ribbon and seal, patent covers are what are generally thought of as the physical award document issued to inventors.

The U.S. Patent and Trademark Office unveiled a new design for U.S. patents at a ceremony at the SXSW Interactive Festival in Austin, TX. The new design debuts on patent number 10,000,000. It is only the second time the patent design has changed in 100 years. L-R: Robert Metcalfe, inventor of Ethernet; Drew Hirshfeld, USPTO Commissioner for Patents; Andrei Iancu, Director of the USPTO; and Susann Keohane, IBM Master Inventor. (Jay Premack/USPTO)

ELI LILLY AND COMPANY, EISAI INC., UPSHER-SMITH LABORATORIES, INC., PFIZER INC., AND ETIOMETRY, INC. file BRIEF FOR AMICI CURIAE.

The patent-in-suit is U.S. Patent No. 6,258,540, Lo et al.

NON – INVASIVE PRENATAL DIAGNOSIS

What is claimed is: 1.  A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises amplifying a paternally inherited nucleic acid from the serum or plasma sample and detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

No. 15-1182

FILED APRIL 1, 2016

In the Supreme Court of the United States

SEQUENOM, INC.,

V.

ARIOSA DIAGNOSTICS, INC., ET AL,

 QUESTION  PRESENTED The Patent Act contains a set of statutory patentability requirements. In addition to these statutory requirements,  the Court has imposed a non- statutory “implicit exception” to patentability. This implicit exception was judicially imposed in part to assure that patents cannot be granted for concepts— or afford exclusive rights that may dominate or oth- erwise preempt access to concepts. Concepts, in this sense, refer to laws of nature, natural phenomena, or ideas, including abstract ideas. The implicit excep- tion similarly bars patents directed or relating to natural products and entirely mental processes. The Court has applied the implicit exception as part of a “threshold test” for patentability that operates before other patentability requirements may be considered. The exception, however, does no more than duplicate the statute’s effects when statutory provisions would also invalidate the same patent. As a threshold test, it has not taken account of the manner in which today’s statutory requirements have evolved to fully address any policy justification for maintaining the exception. When other patent- limiting laws fully vindicate the policies that under- lie the implicit  exception,  judicial  restraint  might demand outright abrogation of the exception. Given the current explicit statutory limitations on patenting in the Patent Act—and the proper interpretation of those limitations—should the Court’s judicially imposed implicit exception to subject matter considered to be eligible for patenting be abrogated, such that patentability and patent validity are to be determined solely under such explicit statutory provisions?

Amicus-Brief-of-Eli-Lilly

Supreme Court Justices heard oral arguments in willful infringement

• Halo Electronics, Inc. v. Pulse Electronics, Inc., et al. (14-1513)
• Stryker Corporation, et al. v. Zimmer, Inc., et al. (14-1520)

Issue: (1) Whether the Federal Circuit erred by applying a rigid, two-part test for enhancing patent infringement damages under 35 U.S.C. § 284, that is the same as the rigid, two-part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc. for imposing attorney fees under the similarly-worded 35 U.S.C. § 285.