2:24-cv-06649
TA3 Inc v. Cupshe LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: TA3, Inc. d/b/a TA3 Swim (Delaware)
- Defendant: Cupshe, LLC (New Jersey) and Nanjing Kapeixi Network Technology Co., Ltd. d/b/a www.cupshe.com (China)
- Plaintiff’s Counsel: Osha Bergman Watanabe & Burton LLP
- Case Identification: 2:24-cv-06649, C.D. Cal., 08/06/2024
- Venue Allegations: Venue is alleged to be proper for the Chinese defendant, Nanjing Kapeixi, as a foreign entity, and for the U.S. defendant, Cupshe, LLC, based on its alleged business operations, employee locations, and transactions within the Central District of California.
- Core Dispute: Plaintiff alleges that Defendants’ one-piece swimsuits infringe a design patent covering the ornamental design for a "Body Sculpting Garment."
- Technical Context: The dispute is set in the competitive swimwear and apparel market, focusing on the specific ornamental appearance of a garment designed to create a distinctive silhouette.
- Key Procedural History: The complaint alleges Plaintiff sent a notice letter to Defendants on February 22, 2024, identifying its then-pending patent rights. The patent-in-suit issued on August 6, 2024, the same day the complaint was filed. The pre-issuance notice may be relevant to the allegations of willful infringement.
Case Timeline
| Date | Event |
|---|---|
| 2023-01-20 | Defendant's VP allegedly orders Plaintiff's product |
| 2023-07-12 | '606 Patent Priority Date (Application Filing Date) |
| 2024-02-22 | Plaintiff sends notice of pending patent rights to Defendant |
| 2024-08-06 | U.S. Design Patent D1,037,606 issues |
| 2024-08-06 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,037,606 - “Body Sculpting Garment”
- Patent Identification: U.S. Design Patent No. D1,037,606, entitled “Body Sculpting Garment,” issued on August 6, 2024. (Compl. ¶8; ’606 Patent, front page).
The Invention Explained
- Problem Addressed: Design patents address the problem of creating a new, original, and ornamental appearance for an article of manufacture, rather than solving a technical problem. (Compl. ¶27; ’606 Patent, Claim).
- The Patented Solution: The patent claims the specific ornamental design for a one-piece garment. The design’s key visual features, as shown in the patent figures, include a square neckline, wide shoulder straps, contoured side seams that create an hourglass effect, and a prominent criss-cross lacing system down the center of an open back. (Compl. ¶17; ’606 Patent, Figs. 1-2). The patent's description notes that stippling illustrates shading to define the garment's contours, while dashed lines for stitching are disclaimed from the design. (’606 Patent, col. 2:39-44).
- Technical Importance: The complaint alleges the patented design is "award-winning" and creates a "generally hour-glass appearance," suggesting its value lies in its aesthetic appeal in the swimwear market. (Compl. ¶17).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is for "The ornamental design for a body sculpting garment, as shown and described." (’606 Patent, Claim).
- The ornamental features protected by the claim are the visual characteristics depicted in the solid lines of the patent's drawings, including:
- The overall configuration of a one-piece swimsuit.
- A square-shaped front neckline.
- Contoured side paneling.
- A low-cut back featuring a central, criss-cross lacing system.
- The visual appearance of the shoulder straps and their hardware.
III. The Accused Instrumentality
Product Identification
The accused products are swimsuits named "The Reverie Land Square Neck Slim & Sculpt One Piece" and "Square Neck Back Tie Tummy Control One-Piece," along with their variations in other colors. (Compl. ¶¶14, 32, 36).
Functionality and Market Context
The complaint describes the accused products as one-piece swimsuits possessing a design that includes a square neckline, contoured vertical lines, adjustable shoulder straps, and a criss-cross lace-up back closure. (Compl. ¶20, 32). A screenshot included in the complaint shows one of the accused swimsuits listed as a "best seller" on the TikTok shop, with over 32,100 units sold, suggesting significant market presence. (Compl. ¶22, p. 8).
IV. Analysis of Infringement Allegations
The complaint alleges that the accused swimsuits are "substantially the same as the design of the ’606 Patent" in the eye of an ordinary observer. (Compl. ¶36). The complaint provides a side-by-side visual comparison of the patented design and photographs of the accused products. (Compl. p. 14-15).
'606 Patent Infringement Allegations
| Claim Element (Key Ornamental Features) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a garment featuring a square front neckline. | The accused swimsuits are depicted with a square neckline that is visually similar to the patented design. | ¶20 | Fig. 1 |
| Contoured side panels contributing to an hourglass silhouette. | The accused swimsuits feature side seam-lines and shaping alleged to create a similar hourglass visual effect. The complaint's visual shows one accused product with color-blocked side panels. | ¶20, p. 14 | col. 2:39-41; Fig. 1 |
| A low-cut back with a central, criss-cross lacing system. | The accused swimsuits feature a low back with a prominent, centrally-located criss-cross lacing system that is alleged to be a copy of the patented design's back view. | ¶20, p. 15 | Fig. 2 |
| The overall visual impression created by the combination of the claimed ornamental features. | Plaintiff alleges the combination of features in the accused products creates a design that an ordinary observer would find substantially the same as the patented design. | ¶37 | Figs. 1-4 |
Identified Points of Contention
- Scope Questions: The central legal question for design patent infringement is whether an ordinary observer would find the designs substantially the same, such that they would be deceived into purchasing one believing it was the other. The court will consider whether differences between the accused products and the patent drawings—such as the color-blocking on one accused model—are sufficient to create a different overall visual impression.
- Technical Questions: A potential issue is whether any similarities are dictated purely by function. A defendant may argue that elements like a lace-up back are primarily functional for adjusting fit, and thus should be discounted in the infringement analysis. The court would have to distinguish between the purely functional aspects and the ornamental way in which those aspects are implemented.
V. Key Claim Terms for Construction
In design patent litigation, the "claim" is primarily defined by the drawings, not words. However, the title of the article of manufacture can be relevant.
- The Term: "body sculpting garment"
- Context and Importance: This term from the patent's title and claim defines the article of manufacture to which the ornamental design is applied. Practitioners may focus on this term to argue the scope of the patent's coverage.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue the term is merely a title and does not import functional limitations. The claim protects the ornamental design for the article, meaning the patent's scope is defined by the visual appearance shown in the drawings, regardless of whether the garment has actual body-sculpting properties.
- Evidence for a Narrower Interpretation: A defendant may argue that the term limits the design to garments whose appearance achieves a "sculpting" effect. The patent description notes that shading "defines the contours of the design," which could be argued to tie the claimed design to this specific visual effect. (’606 Patent, col. 2:39-41).
VI. Other Allegations
Indirect Infringement
The complaint focuses on allegations of direct infringement under 35 U.S.C. §§ 271(a) and 289, which provides a remedy against those who apply a patented design to an article of manufacture for the purpose of sale. (Compl. ¶¶38-40). The complaint does not plead separate counts for indirect infringement.
Willful Infringement
The complaint alleges that Defendants' infringement was willful. (Compl. ¶41). This allegation is based on several asserted facts, including: (1) an alleged purchase of Plaintiff's product by a Cupshe executive prior to launching the accused products (Compl. ¶18); (2) Plaintiff sending a notice letter about its pending patent rights in February 2024, allegedly putting Defendants on notice (Compl. ¶29); (3) Defendants' alleged continuation of sales and marketing after receiving the notice letter (Compl. ¶30); and (4) alleged bidding on Plaintiff’s trademarks as search-engine keywords. (Compl. ¶26). This screenshot shows sponsored search results for "Cupshe.com" appearing for the search term "ta3 squarey." (Compl. p. 9).
VII. Analyst’s Conclusion: Key Questions for the Case
- The Ordinary Observer Test: The case will fundamentally depend on a visual comparison. Is the overall ornamental appearance of the accused Cupshe swimsuits "substantially the same" as the design claimed in the '606 Patent in the eyes of an ordinary swimsuit purchaser?
- Willfulness and Damages: A critical issue will be whether Defendants’ alleged conduct—particularly their actions after receiving a notice letter regarding the pending patent—rises to the level of willful infringement. A finding of willfulness could expose Defendants to enhanced damages, and the special remedies for design patents under 35 U.S.C. § 289 could allow for an award of the infringer's total profits.
- Dissecting Design from Function: A likely defense will be to argue that key similarities, such as the lace-up back, are functional and should not be considered part of the protected ornamental design. The court's determination of which elements are ornamental versus functional will be crucial to the infringement analysis.