DCT
2:20-cv-02757
Claire's Stores v. Noam Krasniansky
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Claire’s Stores, Inc. (Florida)
- Defendant: Noam Krasniansky (California) and CM National, Inc. (California)
- Plaintiff’s Counsel: Baker Hostetler LLP
- Case Identification: 2:20-cv-02757, C.D. Cal., 03/25/2020
- Venue Allegations: Venue is asserted based on Defendants' residence and business operations within the Central District of California, as well as the district being where a substantial part of the relevant events occurred.
- Core Dispute: Plaintiff, a retailer, seeks a declaratory judgment that its spiral hair tie products do not infringe Defendants' design patent and that the patent is invalid in view of prior art.
- Technical Context: The dispute concerns the ornamental design of coiled, telephone-cord-style hair ties, a common consumer hair accessory.
- Key Procedural History: The complaint was filed in response to demand letters sent by Defendants to Plaintiff and its retail partner, CVS, on December 18, 2019, and March 10, 2020, alleging infringement. Plaintiff's invalidity case relies on several alleged prior art references, including designs publicly known for over a century.
Case Timeline
| Date | Event |
|---|---|
| 1874-06-04 | U.S. Patent No. 204,548 (alleged prior art) issued |
| 2006-05-09 | Alleged prior art publication date (skooldays.com article) |
| 2008-06-21 | Alleged prior art availability date (bugbutton.com product) |
| 2009-11-01 | Alleged prior art publication date (nouveaucheap.blogspot.com article) |
| 2012-04-13 | D667,996 Patent Priority Date |
| 2012-09-25 | D667,996 Patent Issue Date |
| 2019-12-18 | Defendants send infringement allegation letters to Claire's and CVS |
| 2020-03-10 | Defendants' counsel sends second letter to CVS's counsel |
| 2020-03-25 | Complaint for Declaratory Judgment filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D667,996 - "Convex Hair Band"
- Patent Identification: U.S. Design Patent No. D667,996, "Convex Hair Band," issued September 25, 2012.
The Invention Explained
- Problem Addressed: As a design patent, the D'996 Patent does not articulate a technical problem; its purpose is to protect the ornamental appearance of an article of manufacture ('D'996 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a "convex hair band" as depicted in its figures ('D'996 Patent, col. 1:20-22). The design consists of a continuous, coiled filament formed into a circular band, resembling a classic telephone cord ('D'996 Patent, FIG. 1-3). The figures illustrate the overall shape from perspective, front, and side views, defining the visual appearance of the claimed design ('D'996 Patent, col. 1:24-27).
- Technical Importance: The complaint alleges that the use of coiled "phone cord designs as fashion accessories was well-known long before 2012," suggesting the aesthetic was part of an existing trend rather than a novel introduction (Compl. ¶19).
Key Claims at a Glance
- Design patents contain a single claim, which is directed to the ornamental design as shown in the drawings.
- The single claim of the 'D'996 Patent recites: "the ornamental design for a convex hair band, as shown and described" ('D'996 Patent, col. 1:20-22). The scope of this claim is defined by the visual appearance of the hair band depicted in Figures 1, 2, and 3.
III. The Accused Instrumentality
Product Identification
- The complaint identifies "certain spiral hair ties—Product Nos. 94015-3, 15279-3, 61082-4" sold by Claire's as the Accused Products (Compl. ¶1).
Functionality and Market Context
- The products are hair ties, functional items used to hold hair (Compl. ¶1). The complaint notes that these products are supplied by Claire's to its "concessions partner, CVS," suggesting wide commercial distribution (Compl. ¶2). The dispute centers on the products' ornamental design, not their utilitarian function. The complaint does not provide images of the Accused Products themselves, instead focusing on images of alleged prior art.
IV. Analysis of Infringement Allegations
As this is a complaint for declaratory judgment of non-infringement, it does not contain a traditional infringement claim chart. The complaint's allegations focus primarily on reasons for invalidity. It makes a broad assertion that the "Accused Products are not infringing, and have not infringed, directly, by inducement, contributorily, or in any way... any valid and enforceable claims of D667996" (Compl. ¶28).
The complaint's primary argument against infringement is implicit in its invalidity contentions: it alleges the existence of a crowded field of prior art, which may serve to narrow the scope of the patented design. The complaint displays an image of a coiled wire bracelet from an 1874 patent, which it alleges taught the design 138 years before the 'D'996 patent (Compl. ¶18). This image from U.S. Patent No. 204,548 shows a circular band formed from a coiled wire, presenting a visual comparison point for an invalidity argument (Compl. ¶18, p. 5). The complaint also presents photographic evidence of a "SwirlyDo/SwirliDo" hair tie product, allegedly sold since 2009, which it claims has "the substantially same design as D667,996" (Compl. ¶20, 21). The provided image shows coiled hair ties that are visually similar to the patented design (Compl. ¶21, p. 6).
- Identified Points of Contention:
- Scope Questions: The central infringement question will be how an "ordinary observer," informed by the alleged prior art, perceives the patented design. Does the existence of numerous similar prior designs, as alleged by the Plaintiff, narrow the scope of the D'996 patent's claim to only its precise visual embodiment, or does the design retain a broader scope?
- Technical Questions: The complaint does not provide sufficient detail for analysis of technical differences. The key question for the court will be a visual one: Would an ordinary observer be deceived into purchasing one of Claire's hair ties, believing it to be the patented design, particularly in light of the prior art references cited in the complaint (Compl. ¶18, 21, 22)?
V. Key Claim Terms for Construction
In design patent cases, the claim is defined by the drawings, but descriptive terms in the title or specification may inform the scope.
- The Term: "Convex" (from the title "Convex Hair Band")
- Context and Importance: This is the sole adjective describing the hair band's physical form in the patent's text ('D'996 Patent, Title). The interpretation of "convex" could be critical for distinguishing the patented design from prior art and the accused products. Practitioners may focus on this term because if the prior art consists of coiled bands with flat or non-convex profiles, the scope of the claim could hinge on the specific curvature implied by this term.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patent does not provide a textual definition for "convex," which could support an argument that the term should be given its plain and ordinary meaning of being generally curved or rounded outward, rather than being limited to a specific profile ('D'996 Patent, col. 1:20-27).
- Evidence for a Narrower Interpretation: A party could argue that the meaning of "convex" is defined and limited by the specific visual representation in the patent's figures. The particular shading and contours shown in Figures 1-3 could be asserted as defining the precise "convex" shape that is protected by the patent ('D'996 Patent, FIG. 1-3).
VI. Other Allegations
- Indirect Infringement: The complaint includes a conclusory denial of any indirect infringement, stating the Accused Products have not infringed "by inducement, contributorily, or in any way" (Compl. ¶28). No specific facts are provided to support this denial.
- Willful Infringement: The complaint makes no allegation of willfulness. However, it establishes that Defendants provided Plaintiff with actual notice of the D'996 patent and their infringement allegations via a letter dated December 18, 2019 (Compl. ¶1). This fact could form the basis for a potential counterclaim of willful infringement by the Defendants for any infringement occurring after that date.
VII. Analyst’s Conclusion: Key Questions for the Case
This declaratory judgment action appears poised to turn on the validity of the D'996 patent in a crowded field of similar designs.
- A core issue will be one of validity: Is the ornamental design claimed in the D'996 patent anticipated or rendered obvious under 35 U.S.C. §§ 102 and 103 by the prior art cited in the complaint, such as coiled-wire bracelets from 1874, insect-repelling wristbands from 2008, and commercially available "SwirliDo" hair ties from 2009? (Compl. ¶18-22).
- A key question for both infringement and validity will be design scope: Given the volume of alleged prior art, what is the scope of the claimed design? The court will need to determine whether the D'996 patent protects the general concept of a coiled-cord hair tie or is limited to the specific, "convex" visual appearance detailed in its drawings, and whether the accused products fall within that scope.