DCT
2:23-cv-03252
RBW Studio LLC v. Canoe Hospitality LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RBW Studio, LLC (Delaware and New York)
- Defendant: Canoe Hospitality, LLC (California); The Studio Collective, LLC (California); and Proper Hospitality, LLC (California)
- Plaintiff’s Counsel: Davidson Law Group, ALC; Saidman DesignLaw Group, LLC
- Case Identification: 2:23-cv-03252, C.D. Cal., 04/28/2023
- Venue Allegations: Venue is alleged to be proper because all Defendants are California corporations with regular and established places of business within the Central District of California, where they are alleged to have committed acts of patent infringement.
- Core Dispute: Plaintiff alleges that Defendants' sconce light fixtures, installed as part of a luxury hotel renovation, infringe a design patent covering the ornamental appearance of Plaintiff's own "Brim" sconce.
- Technical Context: The dispute is set in the high-end commercial and hospitality lighting market, where the unique ornamental design of fixtures is a primary driver of value for architects and interior designers.
- Key Procedural History: The complaint alleges that Plaintiff provided samples and a price quote for its patented light fixture to Defendants in 2018 for the hotel project. It further alleges that Defendants subsequently sourced and installed "knockoff" fixtures instead. Plaintiff also alleges it sent a cease-and-desist letter in January 2022, but the infringing use continued.
Case Timeline
| Date | Event |
|---|---|
| 2018-03-15 | Studio Collective design specification sheet lists Plaintiff's product |
| 2018-06-20 | Plaintiff provides samples of its Brim sconce to Defendants |
| 2018-11-13 | '616 Patent Priority Date (Application Filing Date) |
| 2018-11-13 | Plaintiff provides a price quote for 599 Brim sconces to Defendant Canoe |
| 2020-06-16 | '616 Patent Issue Date |
| 2021-10-14 | Awards magazine representative contacts Plaintiff about its "contribution" |
| 2022-01-26 | Plaintiff sends cease-and-desist letter to Defendant Studio Collective |
| 2023-04-28 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D887,616 - LIGHT
- Patent Identification: U.S. Design Patent No. D887,616, titled LIGHT, issued on June 16, 2020.
The Invention Explained
- Problem Addressed: In the market for high-end architectural lighting, there is a commercial need for aesthetically distinct and original designs that can serve as signature elements within a space (Compl. ¶1, ¶5).
- The Patented Solution: The '616 Patent protects the purely ornamental appearance of a light fixture. The design, as shown in the patent's figures, consists of a wall-mounted sconce featuring a cylindrical base from which the lighting element emerges, partially enveloped by a U-shaped shade with a distinct, multi-faceted profile (D'616 Patent, Figs. 1-7). The claim covers the visual impression created by the fixture’s shape, contours, and proportions, as depicted in the solid lines of the drawings (D’616 Patent, Claim, Description).
- Technical Importance: The importance of the design is not functional but aesthetic; it provides a unique visual identity for a lighting product intended for use by architects and designers in luxury settings (Compl. ¶4, ¶11).
Key Claims at a Glance
- The patent contains a single claim for: "The ornamental design for a light, as shown and described."
- The scope of a design patent claim is defined by its drawings. The complaint's allegations appear to focus on the embodiment shown in Figures 1-7 of the patent.
III. The Accused Instrumentality
Product Identification
- The "Accused Light Fixtures" are sconce lights installed in the guest rooms of the Hotel June West LA (Compl. ¶3, ¶20).
Functionality and Market Context
- The complaint alleges the Accused Light Fixtures are "knockoff" or "deceptively-similar look-alike" copies of Plaintiff's "Brim" sconce (Compl. ¶1, ¶6, ¶22). They were allegedly designed, sourced, and installed as part of a multi-million dollar renovation of a luxury hotel after Defendants had initially considered and received a quote for Plaintiff's authentic product (Compl. ¶5, ¶17, ¶19). The complaint provides a photograph of the accused fixture as installed in a hotel room, which it alleges Defendant Studio Collective used to promote its own design work (Compl. p.7, ¶21; p.10, ¶30).
IV. Analysis of Infringement Allegations
The complaint provides a direct visual comparison to support its infringement claim. This side-by-side comparison shows patent drawings next to photographs of the Accused Light Fixtures (Compl. p.8).
- Claim Chart Summary:
Note: As this is a design patent, the "claim elements" are the holistic ornamental features shown in the drawings, rather than distinct textual limitations.
| Key Ornamental Feature (from Figures 1-7) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a light fixture. | The Accused Light Fixtures are alleged to be "substantially the same in overall appearance" as the claimed design, such that an ordinary observer would be induced to purchase one believing it to be the other. | ¶22, ¶27 | D'616 Patent, Claim |
| A specific visual appearance comprising a faceted, U-shaped shade partially surrounding a light source, mounted to a cylindrical base. | The Accused Light Fixtures, as depicted in complaint photographs, embody a visually similar configuration of a faceted U-shaped shade, light source, and cylindrical wall mount. | ¶22 (p.8) | D'616 Patent, Fig. 1 |
| The front-view profile, showing the proportions and contours of the faceted shade. | The front-view photograph of the Accused Light Fixture is alleged to show a profile that is substantially the same as that depicted in the patent's front-view drawing. | ¶22 (p.8) | D'616 Patent, Fig. 2 |
- Identified Points of Contention:
- Scope Questions: The central legal question in a design patent case is the application of the "ordinary observer" test. The dispute will likely focus on whether an ordinary observer, taking into account the prior art, would find the accused design substantially the same as the patented design. The scope of the '616 Patent's design will be defined by its points of novelty over prior art lighting fixtures.
- Visual Comparison Questions: The case may turn on a detailed visual analysis. A key question will be whether any differences in proportion, curvature, or surface finish between the Accused Light Fixtures and the patent drawings are significant enough to prevent an ordinary observer from being deceived, or if they are merely minor variations.
V. Key Claim Terms for Construction
As a design patent, the '616 Patent's single claim is for the ornamental design as depicted in the drawings. It does not contain textual terms that are subject to the claim construction process used for utility patents. The legal analysis will not focus on defining words but on comparing the overall visual appearance of the accused product to the patented design from the perspective of an "ordinary observer."
VI. Other Allegations
- Indirect Infringement: The complaint does not contain a separate count for indirect infringement. However, it alleges facts that could potentially support such a claim. For example, it alleges that Defendants Studio Collective and Canoe designed, sourced, and sold the Accused Light Fixtures to Defendant Proper Hospitality for its use, and that this use constitutes direct infringement (Compl. ¶19, ¶23, ¶28). These allegations raise the question of whether Studio Collective and Canoe could be liable for inducing Proper's infringement.
- Willful Infringement: The complaint alleges facts to support willfulness based on both pre- and post-suit knowledge. It alleges Defendants had knowledge of Plaintiff's specific design by receiving samples and a price quote in 2018 (Compl. ¶15, ¶17). It further alleges that infringement continued after Plaintiff sent a cease-and-desist letter on January 26, 2022, identifying the infringement at the Hotel June (Compl. ¶29, ¶30).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of "visual identity": From the perspective of an ordinary observer in the lighting market, is the overall ornamental appearance of the Accused Light Fixtures substantially the same as the design claimed in the '616 Patent, or are there sufficient visual differences to distinguish them?
- A second central question will concern "intent and willfulness": Do the allegations that Defendants first considered Plaintiff’s authentic product for the project and then procured a visually similar, less expensive alternative constitute evidence of deliberate copying, which could support a finding of willful infringement and lead to enhanced damages?
- Finally, if infringement is found, a key question for damages will be the "application of infringer's profits": To what extent can the total profits of the Defendants be attributed to the infringing design, a remedy available under 35 U.S.C. §289 specifically for design patent infringement?