DCT
2:18-cv-08532
Kitsch LLC v. CM National Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Kitsch LLC (California)
- Defendant: CM National Inc. (California), Noam Krasniansky, and Irene Krasniansky
- Plaintiff’s Counsel: Brooks Kushman P.C.
- Case Identification: 2:18-cv-08532, C.D. Cal., 10/04/2018
- Venue Allegations: Venue is asserted based on one or more defendants being located in the district and a substantial part of the events giving rise to the claims occurring in the district.
- Core Dispute: Plaintiff seeks a declaratory judgment that its hair coil products do not infringe Defendant's design patent and that the patent is invalid and unenforceable.
- Technical Context: The technology involves coiled, telephone-cord-style hair ties designed to secure hair without leaving creases, a popular product in the fashion and hair accessory market.
- Key Procedural History: The complaint alleges that Defendants filed infringement complaints with Amazon against Plaintiff in August 2017 and again in September 2018, leading Amazon to remove Plaintiff's products. Plaintiff claims it informed Defendants that the patent was invalid and not infringed after the first complaint, which Defendants then allegedly withdrew before filing a second, similar complaint a year later.
Case Timeline
| Date | Event |
|---|---|
| 2012-04-13 | U.S. Design Patent No. D698,996 Application Filing Date |
| 2014-02-04 | U.S. Design Patent No. D698,996 Issue Date |
| 2017-08-XX | Defendants file first infringement complaint with Amazon against Kitsch |
| 2017-10-20 | Kitsch sends letter to Defendants asserting non-infringement/invalidity |
| 2017-11-XX | Defendants withdraw first Amazon complaint |
| 2018-09-07 | Defendants file second infringement complaint with Amazon against Kitsch |
| 2018-09-24 | Kitsch demands Defendants withdraw the second complaint |
| 2018-09-27 | Defendants refuse to withdraw the complaint |
| 2018-10-04 | Complaint for Declaratory Judgment filed by Kitsch |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D698,996 - Cylindrical Hair Band
- Patent Identification: U.S. Design Patent No. D698,996, “Cylindrical Hair Band,” issued February 4, 2014.
The Invention Explained
- Problem Addressed: Design patents protect ornamental appearance, not function. The patent does not explicitly state a problem, but its purpose is to claim a new, original, and ornamental design for a hair accessory.
- The Patented Solution: The patent discloses a specific visual design for a "cylindrical hair band" (’996 Patent, Title). The claimed design, illustrated in the patent's figures, consists of a telephone-cord-like coil formed into a continuous ring, creating a distinct visual impression through the shape, spacing, and arrangement of the coils (’996 Patent, FIG. 1-3).
- Technical Importance: The complaint suggests that the underlying coiled structure is functionally important because it "uses multiple coils to hold hair of different lengths and textures in place without leaving a crease or dent" (Compl. ¶9). This alleged functionality is central to Plaintiff's invalidity arguments.
Key Claims at a Glance
- The patent contains a single claim: "The ornamental design for a cylindrical hair band, as shown and described" (’996 Patent, Claim).
- The essential visual elements of this design claim, as depicted in the patent's figures, include:
- A toroidal or ring-like overall shape.
- A continuous, helically coiled structure forming the ring.
- The specific proportion, curvature, and spacing of the individual coils.
- The complaint does not assert any claims, but seeks a declaration of non-infringement and invalidity of this single design claim (Compl. ¶¶ 28, 31).
III. The Accused Instrumentality
Product Identification
- Plaintiff's "hair coil" products, sold under the "Kitsch" brand name (Compl. ¶¶ 9, 11).
Functionality and Market Context
- The complaint describes the accused products as hair accessories that use "multiple coils to hold hair" (Compl. ¶9). They are alleged to be among Kitsch's best-selling products on Amazon.com, having earned "Amazon's Choice" badges and high rankings in sales categories (Compl. ¶11). Figure 1 of the complaint provides a screenshot from Amazon.com showing Kitsch's transparent and black hair coil products, illustrating their appearance and commercial success (Compl. p. 4, Fig. 1).
IV. Analysis of Infringement Allegations
This is a declaratory judgment action where the Plaintiff (Kitsch) alleges its products do not infringe. The following table summarizes Kitsch's asserted basis for non-infringement. The central test for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into purchasing the accused product believing it is the patented design.
’996 Patent Non-Infringement Allegations
| Claim Element (from the single design claim) | Kitsch's Alleged Non-Infringing Design | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a cylindrical hair band, as shown and described. | Kitsch alleges its hair coils are "different" from the patented design and fall "outside the scope of the '996 Design Patent." | ¶18 | ’996 Patent, Claim; FIG. 1-3 |
| Specific number of coils as a feature of the overall design. | The complaint alleges a key difference is the number of coil rings. It states the patented design discloses "22 coil rings," whereas the "Kitsch hair coils are different." | ¶18 | ’996 Patent, FIG. 2 |
- Identified Points of Contention:
- Scope Questions: The primary dispute will turn on the scope of the patented design. A central question is whether the overall visual impression of the patented design is defined by its general "telephone-cord" appearance, or if it is limited to the specific number of coils (allegedly 22), proportions, and spacing shown in the patent's figures.
- Technical Questions: A threshold issue is one of functionality. The complaint alleges the design is "entirely functional" (Compl. ¶16). The court will need to determine whether the claimed design is dictated by its function (holding hair without creasing) or if it contains ornamental aspects not required by that function. If the design is found to be primarily functional, it is not protectable by a design patent and the '996 patent would be invalid.
V. Key Claim Terms for Construction
In a design patent case, the "claim" is the visual design itself rather than a series of text-based limitations. The construction analysis focuses on the scope of the visual appearance.
- The Term: "the ornamental design for a cylindrical hair band, as shown"
- Context and Importance: The entire infringement analysis depends on the scope of the claimed design. The key question is how much variation from the patent's drawings is permissible before a product is no longer "substantially the same" in the eyes of an ordinary observer. Practitioners may focus on whether the design is limited to its precise illustrated details or covers the broader concept of a coiled hair tie.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party arguing for broader scope would contend that the "overall visual impression" is what is protected. They would argue that minor variations, such as the exact number of coils, do not change the overall aesthetic appeal and that an ordinary observer would still be deceived. The patent’s title, “Cylindrical Hair Band,” is general and does not limit the design to a specific coil count (’996 Patent, Title).
- Evidence for a Narrower Interpretation: A party arguing for narrower scope (here, Kitsch) would point to the specific details in the drawings as limitations on the claim. The complaint's focus on the "22 coil rings spaced as indicated in the patent" suggests it will argue that these details are not optional, but are integral to the claimed "ornamental design" (Compl. ¶18). The patent's figures consistently show a specific number and density of coils, which could be argued to define the metes and bounds of the claim (’996 Patent, FIG. 1-3).
VI. Other Allegations
- Indirect Infringement: The complaint seeks a declaration that Kitsch "is not infringing, and has not infringed, directly, by inducement, contributorily, or in any way" (Compl. ¶30). No specific facts are alleged beyond a general denial of all forms of infringement.
- Willful Infringement: Willfulness is not alleged against Kitsch. Instead, Kitsch alleges that the Defendants' actions in filing "baseless complaints" with Amazon were "deliberate and willful" (Compl. ¶23). This allegation supports Kitsch's separate state-law claims for economic interference and its request for attorneys' fees under 35 U.S.C. § 285, which is awarded in "exceptional cases" (Compl. ¶¶ 34, 39; Prayer ¶h).
VII. Analyst’s Conclusion: Key Questions for the Case
The resolution of this declaratory judgment action will likely depend on the court's findings on three central questions:
- Functionality: A threshold issue is whether the claimed design is invalid because it is dictated primarily by its utilitarian function of holding hair, as Plaintiff alleges. If the coiled structure is essential for the product to work as advertised, it may not be protectable as an "ornamental" design.
- Infringement Scope: Assuming the patent is valid, a key question for the infringement analysis will be one of visual similarity. Does the "ordinary observer" test focus on the general concept of a coiled hair tie, or is it constrained by specific, illustrated details like the number and spacing of the coils?
- Patent Misuse and Enforcement: An independent question is whether Defendants' repeated use of Amazon's infringement reporting system, particularly after being put on notice of Plaintiff's non-infringement and invalidity arguments, constitutes patent misuse or unfair competition, regardless of the ultimate outcome of the patent claims.