DCT
2:23-cv-04834
Everglory Creations Inc v. Kitsch LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Everglory Creations, Inc. and Mr. Kai-Mou Tsai (Taiwan)
- Defendant: Kitsch LLC (California)
- Plaintiff’s Counsel: Lambert Shortell & Connaughton; HamiltonCross, P.C.
- Case Identification: 2:23-cv-04834, C.D. Cal., 06/20/2023
- Venue Allegations: Venue is asserted based on the Defendant’s corporate location within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendant’s hair clips infringe two design patents, asserting these claims alongside breach of contract and unjust enrichment claims for unpaid goods that allegedly embody the patented designs.
- Technical Context: The technology at issue involves the ornamental design of consumer hair accessories, a market where aesthetic appearance is a primary product differentiator.
- Key Procedural History: The complaint’s allegations are rooted in a commercial dispute, asserting that the parties had an established business relationship for the supply of hair clips, which Defendant allegedly ceased paying for in June 2019 while continuing to sell the products.
Case Timeline
| Date | Event |
|---|---|
| 2011-01-07 | D'829 and D'413 Patents Priority Date |
| 2011-06-21 | U.S. Patent No. D640,413 S Issued |
| 2011-06-28 | U.S. Patent No. D640,829 Issued |
| 2019-06-01 | Alleged Start of Infringement / Constructive Knowledge |
| 2023-06-20 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D640,829 - “Hair Clip”
- Patent Identification: U.S. Design Patent No. D640,829, titled “Hair Clip,” issued on June 28, 2011.
The Invention Explained
- Problem Addressed: As a design patent, the specification does not articulate a technical problem; rather, it protects a new, original, and ornamental design for an article of manufacture (D'829 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a hair clip as depicted in its figures (D'829 Patent, Claim). The design's primary visual feature is an elongated, generally elliptical top portion with a smooth, slightly convex surface, which is attached to what appears to be a standard alligator-style clip mechanism (D'829 Patent, Figs. 1-3).
- Technical Importance: The patent protects the aesthetic appearance of the hair clip, which can serve as a key visual differentiator in the competitive consumer accessories market.
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a hair clip, as shown and described" (D'829 Patent, Claim).
- The essential elements are the visual characteristics of the hair clip, including:
- The overall elongated, elliptical shape of the top member.
- The smooth, unadorned surface of the top member.
- The specific profile and proportions of the clip as shown in the perspective, top, bottom, and side views.
U.S. Patent No. D640,413 S - “Hair Clip”
- Patent Identification: U.S. Design Patent No. D640,413 S, titled “Hair Clip,” issued on June 21, 2011.
The Invention Explained
- Problem Addressed: The patent protects a novel ornamental design for a hair clip, not a technical solution to a problem (D’413 Patent, Claim).
- The Patented Solution: The patent claims the ornamental design for a hair clip illustrated in its figures (D’413 Patent, Claim). The design is characterized by a top portion with a distinctive, symmetrical inward curvature at its midpoint, creating a "bow-tie" or "hourglass" silhouette (D’413 Patent, Figs. 1-2). This ornamental top is affixed to a clip mechanism.
- Technical Importance: The patent secures rights to a specific aesthetic configuration for a hair clip, aiming to distinguish the product in the consumer marketplace based on its unique shape.
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a hair clip, as shown and described" (D’413 Patent, Claim).
- The essential elements are the visual characteristics of the hair clip, including:
- The overall "bow-tie" or "hourglass" shape of the top member.
- The smooth surface and specific proportions of the top member.
- The combination of this top member with the underlying clip structure as depicted in the various views.
III. The Accused Instrumentality
Product Identification
The accused products are hair clips sold by Defendant Kitsch, which the complaint identifies as the "Accused Product" (Compl. ¶25, 33). The complaint alleges these are the same goods ("Accepted Goods") that were manufactured and delivered by Plaintiff Everglory to Defendant (Compl. ¶25, 33).
Functionality and Market Context
The complaint alleges that Defendant imported, distributed, offered for sale, and sold the Accused Products to customers within the United States, including via its website (Compl. ¶25, 33). The complaint provides a photograph of a hair clip, described as the infringing product manufactured by Plaintiff, with a dark, bow-tie shaped ornamental top (Compl. p. 7). A separate photograph shows a hair clip with a smooth, oval-shaped top being used in a person's hair (Compl. p. 5).
IV. Analysis of Infringement Allegations
D'829 Patent Infringement Allegations
| Claim Element (from the Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a hair clip, as shown and described. | The Accused Product is a hair clip with an elongated, elliptical top portion attached to a clip mechanism. The complaint alleges the visual appearance of this product is the same as the patented design through a side-by-side comparison. | ¶26; p. 5 | Figs. 1-7 |
D'413 Patent Infringement Allegations
| Claim Element (from the Single Design Claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a hair clip, as shown and described. | The Accused Product is a hair clip featuring a top member with a "bow-tie" or "hourglass" silhouette. The complaint alleges the visual appearance of this product is the same as the patented design through a side-by-side comparison. | ¶34; p. 7 | Figs. 1-7 |
Identified Points of Contention
- Scope Questions: The central infringement question for both patents will be the application of the "ordinary observer" test. The court will need to determine if an ordinary observer, familiar with the prior art, would believe the accused hair clips have the same overall ornamental design as shown in the patents.
- Technical Questions: A key factual question is whether the products sold by Defendant are the same products that were supplied by Plaintiff, as the complaint alleges (Compl. ¶25, 33). The dispute may focus on the chain of custody and identity of the specific goods sold by Kitsch. The low-resolution images in the complaint may not be sufficient to resolve whether subtle but potentially material differences exist between the accused products and the patent drawings.
V. Key Claim Terms for Construction
The central issue in a design patent case is not the construction of a specific term but the scope of the claimed design as a whole, which is determined by the patent's figures.
- The Term: "The ornamental design for a hair clip"
- Context and Importance: The entire infringement analysis depends on the visual scope of the claimed designs. The core question is what visual features are included in the protected design and how similar an accused product must be to infringe. Practitioners may focus on distinguishing the claimed ornamental features from any underlying functional aspects of the hair clip mechanism.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: A party may argue that the claim covers the overall visual impression and aesthetic appeal of the designs (the elliptical shape of the D’829 patent; the "bow-tie" shape of the D’413 patent), and that minor differences in proportion or manufacturing do not avoid infringement. The solid lines in the drawings represent the claimed design in its entirety (D'829 Patent, Figs. 1-7; D'413 Patent, Figs. 1-7).
- Evidence for a Narrower Interpretation: A party may argue that the claim is limited to the exact proportions, curvatures, and specific appearance shown in the drawings. Any deviation in the accused product's shape or profile could be argued as a basis for non-infringement. The largely conventional and functional nature of the underlying clip mechanism may be argued to limit the scope of protection to the ornamental top portion only.
VI. Other Allegations
- Indirect Infringement: The prayer for relief requests a declaration that Defendant "induced others to infringe" (Relief ¶A). However, the factual allegations focus on direct infringement through Defendant's own acts of importing, offering for sale, and selling the accused hair clips (Compl. ¶25, 33). The complaint does not plead specific facts to support a claim for active inducement of a third party.
- Willful Infringement: The complaint alleges that Defendant was "well-aware of the patented status" of the hair clips and had "known of" the patents-in-suit (Compl. ¶28-29, 36-37). It further alleges constructive knowledge of infringement since June 1, 2019, based on the sale of what is alleged to be the commercial embodiment of the patented designs (Compl. ¶30, 38).
VII. Analyst’s Conclusion: Key Questions for the Case
- A central issue will be the interplay between contract and patent law: The case presents a hybrid dispute over unpaid goods that are also the subject of patent infringement claims. This raises the question of whether defenses such as patent exhaustion or an implied license may apply to goods that were delivered by the patent owner to the accused infringer, even if they were not paid for.
- A core infringement question will be the application of the "ordinary observer" test: Do the accused hair clips create a visual impression so substantially similar to the designs in the D'829 and D'413 patents that an ordinary purchaser would be deceived, or are there sufficient visual differences to distinguish them?
- A key evidentiary question will be one of product identity: What evidence will be required to establish that the specific hair clips sold by Kitsch are the very same products that were supplied by Everglory and which embody the patented designs, as the complaint alleges?