DCT
2:19-cv-01235
Albert Kirakosian v. Sonic Imports Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Albert Kirakosian; Kiraco, LLC d/b/a Apple on Top (California)
- Defendant: Sonics Imports, Inc. d/b/a US Global Imports, d/b/a VAP Master (California)
- Plaintiff’s Counsel: Karish & Bjorgum PC
- Case Identification: 2:19-cv-01235, C.D. Cal., 02/19/2019
- Venue Allegations: Venue is alleged to be proper in the Central District of California because the Defendant has its principal place of business in the District, and sells and markets the accused products within the District.
- Core Dispute: Plaintiff alleges that Defendant is selling counterfeit hookah bowls that infringe a U.S. design patent and associated trademarks and trade dress.
- Technical Context: The dispute concerns the ornamental design of hookah accessories, specifically the hookah "head" or bowl, which holds the tobacco and charcoal during use.
- Key Procedural History: The complaint alleges that Plaintiff owns registered trademarks for "AOT" and "APPLEONTOP" and that the accused products are "counterfeit" copies that are "identical" to Plaintiff's products. It is also alleged that the accused counterfeit products include a "patent pending" claim on the bottom of the product.
Case Timeline
| Date | Event |
|---|---|
| 2012-12-19 | D'366 Patent Application Filed (Priority Date) |
| 2013-02-11 | Plaintiff's first use of APPLEONTOP mark |
| 2013-05-30 | Plaintiff's first use of AOT mark |
| 2015-04-07 | U.S. Patent No. D726,366 Issues |
| 2018-01-01 | Plaintiff allegedly became aware of Defendant's sales (approximate date) |
| 2019-02-19 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D726,366 - "Hookah Pipe Head"
- Patent Identification: U.S. Design Patent No. D726,366, "Hookah Pipe Head," issued April 7, 2015.
The Invention Explained
- Problem Addressed: The complaint states that the inventor’s goal was to create a "small, sleek hookah 'head'" that could deliver a "full Hookah experience" while taking up less space than traditional bowls (Compl. ¶¶ 1, 4).
- The Patented Solution: The patent protects the specific ornamental appearance of a hookah head, not its functional aspects. The design, as shown in the patent's figures, consists of a two-part assembly: a base shaped like an apple with horizontal ridges and a removable top pan, which holds the charcoal, featuring a single, leaf-like tab for handling (D'366 Patent, Figs. 1, 2). The complaint describes the patented product as being in the shape of "an apple with a metal puncture bowel/pan sitting on its top" (Compl. ¶12).
- Technical Importance: The complaint alleges the design is a "distinctive, creative design" that is "non-functional" and has obtained secondary meaning as an identifier of the AOT brand (Compl. ¶12).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for the hookah pipe head, as shown and described" (D'366 Patent, p. 1, CLAIM).
- The essential visual elements of the design as "shown" in the patent figures include:
- A rounded, apple-shaped body with prominent, evenly-spaced horizontal ridges.
- A removable, shallow top pan with a perforated floor.
- A single tab, shaped like a leaf with a stem, extending horizontally from the rim of the top pan.
III. The Accused Instrumentality
Product Identification
- "Counterfeit AOT Bowls" (Compl. ¶18).
Functionality and Market Context
- The complaint alleges the accused products are "counterfeit" and "appear identical to Plaintiffs' products and packaging in all material respects" (Compl. ¶19). It further alleges that these products are not manufactured by the Plaintiff and do not use the same "high-grade material" (Compl. ¶20). A photograph attached to the complaint as Exhibit E purports to show these "Infringing Products" (Compl. ¶13). The Defendant is alleged to sell these products through its website and a storefront in Los Angeles (Compl. ¶¶ 6, 13).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused products infringe the single claim of the D'366 patent. In design patent cases, infringement is determined from the perspective of an "ordinary observer." The core allegation is that the accused products are visually identical to the patented design.
D'366 Patent Infringement Allegations
| Claim Element (from the single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental appearance of a hookah head, as shown, comprising an apple-shaped body with horizontal ridges. | The complaint alleges that the Defendant's infringing products "resemble the shape of an apple with rubber ridges." | ¶50 | Figs. 1-6 |
| The ornamental design, as shown, including a removable top pan with perforations. | The infringing products are alleged to feature a "metal puncture bowel/pan" that sits on top of the apple-shaped body. | ¶¶12, 50 | Figs. 1, 2, 7 |
| The ornamental design, as shown, including a single leaf-shaped tab extending from the side of the top pan. | The infringing products are alleged to have a "single rubber leaf for handling." | ¶50 | Figs. 1, 5-7 |
- Identified Points of Contention:
- Factual Question: The primary factual question is whether the products sold by the Defendant are visually, from the perspective of an ordinary observer, substantially the same as the design shown in the D'366 Patent. The complaint's allegation that the products are "counterfeit" and "identical" suggests this may be a direct copying case rather than one of close, but not identical, design (Compl. ¶¶ 18, 19).
- Scope Questions (Functionality): A potential dispute may arise over whether the patented design is primarily ornamental or functional. A defendant may argue that features like the apple shape, the ridges (for grip), and the leaf-shaped tab (as a handle) are dictated by function and are therefore not protectable by a design patent. The complaint itself notes the leaf allows for "easy access to the coals," a functional purpose (Compl. ¶4).
V. Key Claim Terms for Construction
In design patent litigation, formal claim construction of specific words is less common than in utility patent cases, as the claim is defined by the drawings. The key analysis will involve determining the overall scope of the patented design and what is ornamental versus functional.
- The Term: "The ornamental design for a hookah pipe head, as shown and described."
- Context and Importance: The entire infringement analysis rests on a visual comparison. The scope of the protected "ornamental design" will be critical, specifically whether certain features are considered functional and thus outside the scope of protection.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent's description notes that "The broken lines in the drawings illustrate portions of the hookah pipe head and form no part of the claimed design" (D'366 Patent, p. 1, DESCRIPTION). In Figure 8, the small holes in the bottom of the base are shown in broken lines, which suggests that the specific pattern and number of those holes are not part of the claimed design, potentially broadening its scope to cover bases with different hole configurations.
- Evidence for a Narrower Interpretation: The specific visual elements shown in solid lines—the apple-like curvature, the precise horizontal ribbing, and the particular shape of the leaf tab—define the boundaries of the claim (D'366 Patent, Figs. 1-7). A defendant could argue the design is limited to this exact aesthetic. Further, a defendant may argue that any feature with a practical utility, such as the leaf tab described in the complaint as a handle (Compl. ¶4), must be factored out of the infringement analysis as a functional element.
VI. Other Allegations
- Indirect Infringement: The complaint pleads direct, contributory, and induced infringement (Compl. ¶32). The prayer for relief seeks to enjoin all three forms of infringement (Compl. p. 15, ¶2). The factual basis for indirect infringement appears to be the Defendant's alleged sale of the counterfeit products to end-users (Compl. ¶¶ 18, 21).
- Willful Infringement: Willfulness is explicitly alleged (Compl. ¶24). This allegation is supported by claims that the infringement was "deliberate," that the products are "counterfeit," and that Defendant's actions were undertaken with "full knowledge" of Plaintiff's rights (Compl. ¶¶ 24, 52). The allegation that the infringing products themselves bear a "patent pending" notice may be used to argue that Defendant was aware of the intellectual property associated with the product's design (Compl. ¶19).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to center on allegations of outright counterfeiting. The central questions for the court will likely be:
- A core factual question will be one of visual identity: Do the accused products sold by the Defendant appear, in the eyes of an ordinary observer, to be substantially the same as the ornamental design claimed in the D'366 patent, as the "counterfeit" and "identical" allegations suggest?
- A key legal question will be the validity of the design patent: Can the defendant demonstrate that the design's prominent features—the apple shape, the ridged body, and the leaf-like tab—are primarily functional, rather than ornamental, and that the patent is therefore invalid for claiming functional subject matter?