DCT
2:22-cv-00416
Lights Out Productions LLC v. Triller Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Lights Out Productions, LLC and BYB Extreme Fighting Series, LLC (Florida)
- Defendant: Triller, Inc. (Delaware), Triller Fight Club, LLC (Delaware), Flipps Media, Inc. d/b/a FITE TV (Delaware), and Ryan Kavanaugh (Individual)
- Plaintiff’s Counsel: Friedland Vining, P.A.
- Case Identification: 2:22-cv-00416, M.D. Fla., 11/18/2021
- Venue Allegations: Venue is based on allegations that Defendants conduct substantial business in the district, including maintaining an office in Orlando, and promoting, selling, and hosting combat sports events in Florida.
- Core Dispute: Plaintiffs allege that Defendants’ triangular fighting ring, used for "TRIAD COMBAT" events, infringes a design patent for a "Fighting Cage," in addition to related copyright and trade dress claims.
- Technical Context: The lawsuit concerns the ornamental, non-functional design of fighting surfaces within the professional combat sports promotion industry.
- Key Procedural History: The complaint alleges a prior business relationship where Defendant Flipps Media broadcasted Plaintiffs' events. Plaintiffs also allege sending a cease-and-desist letter identifying the patent-in-suit to Defendants on October 22, 2021, prior to the scheduled infringing event, and that informal licensing discussions took place.
Case Timeline
| Date | Event |
|---|---|
| 2015-06-05 | '596 Patent Priority Date |
| 2015-06 | Plaintiff BYB holds first event using alleged '596 Patent embodiment |
| 2017-12-19 | '596 Patent Issue Date |
| 2020-03 | Plaintiff BYB launches its "TRIGON" triangle-shaped ring design |
| 2021-09 | Plaintiffs and Defendant Kavanaugh allegedly discuss potential licensing |
| 2021-10 | Defendants announce "Triad Combat" event with accused triangular ring |
| 2021-10-22 | Plaintiffs send cease-and-desist letter to Defendants regarding '596 Patent |
| 2021-11-18 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D805,596 - "FIGHTING CAGE", issued December 19, 2017
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems; they protect the novel, non-functional, ornamental appearance of an article of manufacture.
- The Patented Solution: The patent claims the specific ornamental design for a "Fighting Cage" as depicted in the patent's figures ('596 Patent, Claim). The claimed design, shown in solid lines, consists of a triangular platform base with vertical support posts at its corners and along its sides ('596 Patent, Figs. 4, 6). The patent explicitly disclaims the material shown in dashed lines—including "stairs and screens of the walls and the door"—as unclaimed environment, meaning they are not part of the protected design ('596 Patent, col. 2:13-17).
- Technical Importance: The complaint suggests the design provided a visually distinct appearance for combat sports venues, intended to be a "revolutionizing" alternative to traditional four-sided or octagonal enclosures (Compl. ¶47).
Key Claims at a Glance
- The patent asserts a single claim: "The ornamental design for a fighting cage, as shown and described."
- The essential visual elements of this claim are:
- An overall triangular shape when viewed from above.
- A raised platform structure.
- The specific number and arrangement of vertical posts at the corners and along the sides of the triangle, as depicted in the solid-line drawings.
III. The Accused Instrumentality
Product Identification
- The "specially designed triangular ring" created for and used in Defendants' "TRIAD COMBAT" events (Compl. ¶¶ 55, 58).
Functionality and Market Context
- The accused instrumentality is the fighting surface for a new combat sports format promoted by Defendants, which combines boxing and MMA rules (Compl. ¶58). The complaint alleges this triangular ring is a central marketing feature of the "TRIAD COMBAT" series, which was launched with a high-profile event featuring the band Metallica and broadcast live on pay-per-view (Compl. ¶¶ 56, 57). A rendering of the accused ring design was featured in an October 16, 2021, Instagram post by @fitetv promoting the upcoming event (Compl. p. 18).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused design is "substantially the same" as the patented design in the eyes of an ordinary observer, thereby meeting the legal test for design patent infringement (Compl. ¶69). The complaint provides a direct side-by-side comparison of the accused "TRIAD COMBAT" ring and an embodiment of Plaintiffs' design to support its allegations (Compl. ¶60, p. 21).
'596 Patent Infringement Allegations
| Claim Element (from the Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a fighting cage, as shown and described. | The complaint alleges that the Defendants' "TRIAD COMBAT" fighting surface is a "triangle-shaped fighting surface" that appropriates the ornamental design shown in the '596 Patent. It further alleges that the "only discernable difference" is the number of posts used to support the enclosure. | ¶64, ¶68 | col. 2:1-17; Figs. 1-6 |
- Identified Points of Contention:
- Scope Questions: A primary question will be whether the patented design for a "Fighting Cage" can be infringed by a structure that Defendants describe as a triangular "ring" (Compl. ¶58). The defense may argue that in the context of combat sports, a "cage" (implying mesh or fence walls) and a "ring" (implying ropes) are distinct articles of manufacture, placing the accused product outside the patent's scope.
- Visual Questions: The infringement analysis will turn on whether an ordinary observer would find the two designs to be substantially the same. The complaint's assertion that the "only discernable difference" is the number of support posts (Compl. ¶64) frames a key factual question: is this difference, and potentially the use of ropes instead of screens, significant enough to create a different overall visual impression, or does the distinctive triangular framework dominate the design, making the two appear deceptively similar?
V. Key Claim Terms for Construction
- The Term: "Fighting Cage"
- Context and Importance: Practitioners may focus on this term because the scope of a design patent is limited to the specific "article of manufacture" identified in the claim. The definition of "Fighting Cage" is therefore critical, as it could determine whether the accused roped "ring" is a covered article.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiffs may argue that "Fighting Cage" is a general descriptor for a combat enclosure and that the patent's protection resides in the ornamental shape applied to that article, not its specific wall construction (e.g., ropes vs. mesh). The focus, from this perspective, is on the claimed visual features shown in the solid-line drawings.
- Evidence for a Narrower Interpretation: The defense could argue that the common meaning of "cage" in combat sports implies an enclosure with screen or fence-like walls, distinct from a roped "ring." This interpretation could be supported by the patent's own depiction of "screens" in dashed lines as a potential environment for the claimed design ('596 Patent, Fig. 5), suggesting the inventors contemplated a cage-like structure.
VI. Other Allegations
- Willful Infringement: The complaint alleges willful infringement of the '596 Patent (Compl. ¶72). This allegation is based on claims of Defendants' pre-suit knowledge, arising from: (1) a prior business relationship broadcasting Plaintiffs' events featuring the design; (2) promotional materials on Defendants' own platform describing Plaintiffs' design as "patented"; (3) alleged licensing discussions between the parties; and (4) Plaintiffs' cease-and-desist letter dated October 22, 2021, which provided actual notice of the '596 Patent before the accused infringing event (Compl. ¶¶ 47, 54, 73).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual similarity: In the eye of an ordinary observer, does the overall ornamental appearance of Defendants' "TRIAD COMBAT" ring look substantially the same as the claimed design of the '596 Patent, or are the differences in the number of posts and the type of enclosure (ropes vs. screens) sufficient to distinguish them?
- A key threshold question will be one of definitional scope: Is the accused roped "triangular ring" considered the same "article of manufacture" as the patented "Fighting Cage" for the purposes of design patent infringement, or are they considered distinct products within the combat sports industry?