DCT
2:18-cv-02192
Color Image Apparel Inc v. Fitcapri
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Color Image Apparel, Inc. (California)
- Defendant: FitCapri (Australian corporation, with alleged principal place of business in California)
- Plaintiff’s Counsel: Thoits Law
- Case Identification: 2:18-cv-02192, C.D. Cal., 05/22/2018
- Venue Allegations: Plaintiff alleges venue is proper because Defendant purposefully directs business activities to the district, including offering for sale and selling the accused products to residents via its website, and because a substantial part of the events giving rise to the claim occurred in the district.
- Core Dispute: Plaintiff alleges that Defendant’s "Racer Leggings" infringe a design patent covering the ornamental appearance of Plaintiff's "Moto Legging" product.
- Technical Context: The dispute is in the popular "athleisure" apparel market, where functional athletic wear incorporates distinctive stylistic and ornamental designs.
- Key Procedural History: Plaintiff alleges it sent a cease-and-desist letter to Defendant on August 30, 2017, and a follow-up letter on November 7, 2017. The complaint states that Defendant did not respond to either letter, which may form the basis for the willfulness allegation.
Case Timeline
| Date | Event |
|---|---|
| 2015-10-13 | ’731 Patent Application Filing Date |
| 2016-12-27 | ’731 Patent Issue Date |
| 2017-08-30 | Plaintiff sends first cease-and-desist letter to Defendant |
| 2017-11-07 | Plaintiff sends second cease-and-desist letter to Defendant |
| 2018-05-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D774,731 - "Exercise Leggings" (Issued Dec. 27, 2016)
The Invention Explained
- Problem Addressed: Design patents protect the ornamental appearance of an article of manufacture rather than its utilitarian function. The complaint alleges that Plaintiff's innovation was to create an exercise legging with "motorcycle pant stylings" that "revolutionized the athletic wear market" by combining athletic functionality with a distinctive aesthetic (Compl. ¶12, ¶22).
- The Patented Solution: The patent claims the specific ornamental design for leggings as depicted in its figures ('731 Patent, Claim). Key features of the design include a series of raised, horizontal ridge panels across the front of the thigh and shin areas, and on the back of the calves, combined with specific seam lines and a flat front panel at the top (Compl. ¶22; ’731 Patent, FIG. 1, 2, 3). The design creates a "total image and overall appearance" intended to evoke "moto" leggings (Compl. ¶22).
- Technical Importance: The complaint asserts that this ornamental "moto" design became "one of the hallmarks of the ALO Yoga® brand" due to its distinctive appearance (Compl. ¶2).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "The ornamental design for exercise leggings, as shown and described." ('731 Patent, Claim). This claim protects the overall visual appearance of the leggings as depicted in the patent's seven figures.
III. The Accused Instrumentality
Product Identification
- Defendant FitCapri’s "Racer Leggings" (Compl. ¶14).
Functionality and Market Context
- The complaint identifies the Accused Product as athletic leggings offered for sale and sold to customers in the United States through Defendant's website and social media advertisements (Compl. ¶14, ¶18). The complaint alleges the Accused Product copies the distinctive ornamental design of Plaintiff's patented "Moto Legging" (Compl. ¶3). The complaint includes a photograph of the accused "Racer Leggings," which are black leggings featuring textured paneling on the thigh and shin areas (Compl. p. 5, Table 1).
IV. Analysis of Infringement Allegations
Design patent infringement is determined by the "ordinary observer" test, which asks whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design. The complaint alleges that the overall appearance of the patented design and the accused product are "substantially the same" (Compl. ¶15, ¶16). The complaint provides a side-by-side visual comparison to support its allegations (Compl. ¶17). A table in the complaint shows the patent's front-view drawing from Figure 2 next to a photograph of a model wearing the accused "Racer Leggings" (Compl. p. 5, Table 1).
'731 Patent Infringement Allegations
| Claimed Ornamental Feature (from '731 Patent Figures) | Alleged Corresponding Feature in Accused "Racer Leggings" | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for exercise leggings as shown in the patent figures. | The overall design of the "Racer Leggings," which allegedly creates a confusingly similar appearance to the patented design. | ¶15, ¶29 | FIG. 1-7 |
| A paneled region on the upper thigh with a series of horizontal ridges or ribs. | The accused leggings feature a paneled region on the upper thigh with horizontal texturing, as shown in the provided photographs. | p. 5, Table 1 | FIG. 1, 2 |
| A paneled region on the shin with a series of horizontal ridges or ribs. | The accused leggings feature a paneled region on the shin with similar horizontal texturing, as depicted in side-by-side comparisons. | p. 5, Table 1 | FIG. 1, 2 |
| A distinctive pattern of seam lines separating the main body of the leggings from the ridged panels and a top waistband. | The seam lines on the accused leggings appear to follow a similar pattern, separating the textured panels from the rest of the garment. | p. 6, Table 1 | FIG. 5 |
| A paneled region on the rear calf area with horizontal ridges or ribs. | The complaint's visual comparison includes a rear view showing the accused product has a textured panel on the rear calf. | p. 6, Table 1 | FIG. 3 |
- Identified Points of Contention:
- Scope Questions: The central question for the court will be whether an ordinary observer, taking into account the prior art, would find the accused "Racer Leggings" and the patented design to be substantially the same. The dispute will likely focus on the overall visual effect created by the combination of the panels, ridges, and seam lines, rather than on any single element in isolation.
- Technical Questions: While not a "technical" issue in a utility patent sense, a key factual question will be the degree of similarity between the respective designs. The court may need to consider factors such as the number of ridges in each panel, the exact angle and placement of the seams, and the texture of the fabric in the panels to determine if any differences are significant enough to defeat the infringement claim or are merely trivial.
V. Key Claim Terms for Construction
In design patent litigation, there are typically no textual claim terms to construe. The "claim" is the visual design itself, as depicted in the drawings. The scope of the claim is defined by what is shown in solid lines in the patent figures.
- The Term: The "ornamental design for exercise leggings."
- Context and Importance: The analysis will not focus on construing words but on determining the overall visual impression of the patented design. The court's interpretation of the design's scope will be critical. A broader interpretation focusing on the general "moto" look (ribbed panels on thighs/shins) could encompass more products, while a narrower interpretation focusing on the precise number, size, and placement of every ridge and seam could limit the patent's reach.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party might argue that the core, protectable concept is the overall impression of motorcycle-style paneling on an exercise legging, and minor variations in seam placement or rib count do not change this essential appearance. The repeated use of similar panels on the thigh, shin, and calf could be argued to establish a broad design motif ('731 Patent, FIG. 1, 3).
- Evidence for a Narrower Interpretation: A party could argue that the design is defined by the specific arrangement shown in the drawings, including the exact number of horizontal ridges in each panel, the specific curvature of the seams, and the proportions of the panels relative to the rest of the legging ('731 Patent, FIG. 2, 4, 5). Any deviation from this precise visual recipe would place a product outside the patent's scope.
VI. Other Allegations
- Indirect Infringement: The complaint alleges induced infringement, stating that FitCapri acts with the "specific intent to induce infringement" by selling the Accused Product to customers, whose use constitutes direct infringement (Compl. ¶19). It also alleges contributory infringement by stating the Accused Product is "especially made or especially adapted for use in an infringement" and is not a staple article suitable for substantial non-infringing use (Compl. ¶20).
- Willful Infringement: The complaint alleges that Defendant had knowledge of the '731 Patent and its infringement "at least as early as August 30, 2017" as a result of a cease-and-desist letter sent by Plaintiff's counsel (Compl. ¶25). The complaint further notes a follow-up letter was sent on November 7, 2017, and alleges no response was received to either letter (Compl. ¶26, ¶27). This alleged pre-suit notice and subsequent inaction is the stated basis for the willfulness claim and request for enhanced damages (Compl. ¶25; Prayer ¶9).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The central issue is one of visual comparison: would an ordinary observer, viewing the accused "Racer Leggings," be deceived into thinking they are the product embodying the design in the '731 Patent, particularly when considering other legging designs in the prior art?
- Significance of Differences: A key factual question will be whether the visual differences between the patented design and the accused product are trivial or substantial. The outcome may depend on how a fact-finder weighs the similarities in the overall "moto" appearance against any potential minor differences in panel shape, seam placement, or ridge count.
- Willfulness and Intent: Given the explicit allegation that Defendant was notified of the '731 Patent via two unanswered cease-and-desist letters nearly a year before the suit was filed, a critical question will be whether Defendant’s continued sales constituted willful infringement, which could expose it to enhanced damages and attorneys' fees.