DCT
2:18-cv-00503
Color Image Apparel Inc v. Namastetics Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Color Image Apparel, Inc. (California)
- Defendant: Namastetics, Inc. (Canadian)
- Plaintiff’s Counsel: Thoits Law
- Case Identification: 2:18-cv-00503, C.D. Cal., 01/19/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant purposefully directs business activities to the district by offering for sale and selling the accused products to residents through its website, including calculating and collecting California sales tax.
- Core Dispute: Plaintiff alleges that Defendant’s "Fusion" line of athletic leggings infringes a design patent covering the ornamental appearance of exercise pants with an integrated legwarmer.
- Technical Context: This dispute resides in the competitive "athleisure" apparel market, where the ornamental and aesthetic design of garments like yoga pants is a significant driver of brand identity and commercial value.
- Key Procedural History: The complaint notes that Plaintiff sent cease-and-desist letters to Defendant on August 29, 2017, and November 7, 2017, putting Defendant on notice of the patent and infringement allegations prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2014-05-30 | '346 Patent Priority Date (Application Filing) |
| 2016-09-06 | '346 Patent Issue Date |
| 2017-08-29 | Plaintiff sends first cease-and-desist letter |
| 2017-11-07 | Plaintiff sends follow-up letter |
| 2017-12-04 | Counsel for Defendant responds to Plaintiff |
| 2018-01-19 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D765,346 - EXERCISE PANTS WITH INTEGRATED LEGWARMER
- Patent Identification: U.S. Design Patent No. D765,346, EXERCISE PANTS WITH INTEGRATED LEGWARMER, issued September 6, 2016.
The Invention Explained
- Problem Addressed: The complaint asserts that the patented design was an "innovative concept" that "revolutionized the area of sports leggings" by combining the function of athletic wear with a distinct aesthetic (Compl. ¶¶ 12, 22). The design sought to merge the "athletic nature of leggings with the aesthetic of more ballet-inspired pants" (Compl. ¶22).
- The Patented Solution: The patent protects the specific ornamental design for exercise pants, not their function (D'346 Patent, Claim). The claimed design, illustrated in figures such as FIG. 1 and FIG. 2, features a form-fitting upper portion covering the thigh, a visual transition point near the knee, and a lower portion with a looser, bunched appearance that evokes a legwarmer worn over a legging (D'346 Patent, Figs. 1-2). The single claim is for the overall visual appearance "as shown and described" in the patent's drawings (D'346 Patent, Claim).
- Technical Importance: The complaint alleges this design became a "hallmark" of the Plaintiff's ALO Yoga® brand, known for its "distinctive appearance and ornamental legwarmer design" (Compl. ¶¶ 4, 12).
Key Claims at a Glance
- Design patents contain a single claim, which is directed to the ornamental design as depicted in the patent's figures.
- The asserted claim is for: "The ornamental design for exercise pants with integrated leg warmer, as shown and described" (D'346 Patent, Claim). Key visual features that constitute the overall design include the combination of a smooth, fitted thigh section with a gathered or ruched lower leg section, and the seam lines that define the transitions between these areas.
III. The Accused Instrumentality
Product Identification
- Defendant's "Fusion" line of leggings (the "Accused Products") (Compl. ¶14).
Functionality and Market Context
- The Accused Products are athletic leggings offered for sale to U.S. customers through Defendant's website and social media channels (Compl. ¶¶ 18, 21). The complaint provides visual evidence, including a side-by-side comparison table, depicting the Accused Products as having a two-tone, two-texture design with a smooth upper portion and a gathered, contrasting lower portion that covers the calf and ankle (Compl. pp. 5-7). The complaint alleges these products copy Plaintiff's distinctive design (Compl. ¶3). Table 1 in the complaint presents a side-by-side visual comparison between figures from the patent and photographs of the accused "Fusions-Black" leggings (Compl. p. 5).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," giving the level of attention a typical purchaser would, would find the two designs to be "substantially the same," such that they might be deceived into purchasing one while believing it is the other. The complaint alleges that this standard is met (Compl. ¶16).
D765346 Infringement Allegations
| Key Ornamental Feature (from '346 Patent Figures) | Alleged Infringing Functionality (from Accused Product Photos) | Complaint Citation |
|---|---|---|
| An overall design for an exercise pant featuring a fitted upper thigh portion and a distinct, gathered lower leg portion creating the appearance of an integrated legwarmer. | The Accused Products are leggings with a smooth, dark-colored upper portion and a contrasting, gathered, light-colored lower portion. | ¶17, pp. 5-7 |
| A transition point, defined by seam lines, between the upper and lower portions located generally around the thigh or knee area. | The accused leggings feature a visible seam separating the upper black fabric from the lower grey fabric at approximately the lower thigh. | ¶17, pp. 5-7 |
| A gathered, bunched, or ruched texture in the lower leg portion, suggesting a separate, looser-fitting garment. | The lower portion of the accused leggings is shown with significant horizontal gathering and bunching from the knee to the ankle. | ¶17, pp. 5-7 |
Identified Points of Contention
- Scope Questions: The primary dispute will concern the "ordinary observer" test. A key question is whether the overall visual impression of the Accused Products is "substantially the same" as the patented design, or if differences in seam placement, color blocking, and the specific character of the fabric ruching are sufficient to distinguish the two designs in the mind of a typical consumer.
- Technical Questions: A question for the court will be which elements of the design are ornamental versus purely functional. The defense may argue that certain similarities, such as the bunching at the ankle, are a functional result of creating an extra-long legging and not an appropriation of a protected ornamental feature. The complaint pre-emptively addresses this by describing certain attributes as "non-functional" (Compl. ¶22).
V. Key Claim Terms for Construction
In design patent cases, the claim is the drawing, but courts may provide a verbal description. The patent's title can influence this description.
- The Term: "integrated leg warmer"
- Context and Importance: This phrase from the patent's title and claim gives a conceptual label to the visual design. The parties' dispute may focus on what specific visual features are necessary to constitute the look of an "integrated leg warmer." Practitioners may focus on this term because its interpretation will frame the comparison between the patent drawings and the accused product for the ordinary observer.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent shows multiple embodiments with different seam lines (e.g., straight across in FIG. 2, angled in FIG. 9, v-shaped in FIG. 16), which may support the view that the core protected concept is the general appearance of a two-part legging, not a specific seam configuration.
- Evidence for a Narrower Interpretation: The defense could argue that the term requires a clear visual demarcation that mimics two separate garments. The consistent depiction of a seam line between the upper and lower portions across all patent figures could support an interpretation that this visible transition is a required element of the claimed design.
VI. Other Allegations
- Indirect Infringement: The complaint alleges that Defendant induces infringement by selling the Accused Products to customers with the specific intent that the customers will use them in an infringing manner (i.e., by wearing them) (Compl. ¶19). It also alleges contributory infringement, stating the products are "especially made or especially adapted for use in an infringement" and have no substantial non-infringing use (Compl. ¶20).
- Willful Infringement: The complaint alleges Defendant had knowledge of the '346 patent and its infringement "at least as early as August 29, 2017" as a result of a cease-and-desist letter (Compl. ¶25). The continuation of allegedly infringing conduct after this date is the basis for the willfulness claim. The prayer for relief seeks enhanced damages and attorneys' fees, consistent with a willfulness allegation (Compl. p. 11, ¶¶ 9, 12).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be one of overall visual impression: Does the Defendant's "Fusion" legging create an ornamental appearance substantially the same as the '346 patent's design in the eyes of an ordinary purchaser of athletic apparel, or are the differences in color, seam placement, and fabric texture sufficient to create a distinct design?
- The case may also turn on the boundary between ornament and function: To what extent can the Defendant argue that the visual similarities between its product and the patented design are dictated by the function of creating a long, scrunchable legging, rather than by an appropriation of protected ornamental features?