DCT
8:24-cv-02577
Little Catholic LLC v. Specialized Top Advisory Services Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: The Little Catholic, LLC ("TLC") and Priscilla Durant (California)
- Defendant: Specialized Top Advisory Services, Inc. d/b/a Guadalupe Gifts (Florida)
- Plaintiff’s Counsel: The Kearney Firm, APC
- Case Identification: 8:24-cv-02577, C.D. Cal., 11/25/2024
- Venue Allegations: Venue is asserted based on allegations that Defendant conducts business, has committed acts giving rise to the action, and has committed acts of patent infringement within the Central District of California.
- Core Dispute: Plaintiffs allege that Defendant’s religious-themed jewelry infringes two design patents and associated copyrights related to an ornamental design of the "three hearts of the Holy Family."
- Technical Context: The dispute is in the field of consumer products, specifically religious jewelry, where distinct ornamental designs can be a significant market differentiator.
- Key Procedural History: Plaintiffs allege sending a cease-and-desist letter to Defendant on October 31, 2024, putting Defendant on notice of the asserted intellectual property rights prior to the filing of this lawsuit.
Case Timeline
| Date | Event |
|---|---|
| 2021-05-17 | Earliest Priority Date for '750 and '407 Patents |
| 2024-01-30 | U.S. Design Patent No. D1,012,750 Issued |
| 2024-09-23 | Date of Screenshots of Allegedly Infringing Jewelry |
| 2024-09-24 | U.S. Design Patent No. D1,043,407 Issued |
| 2024-10-31 | Plaintiffs Sent Cease and Desist Letter to Defendant |
| 2024-11-01 | Defendant Received Cease and Desist Letter via FedEx |
| 2024-11-18 | Defendant Responded to Cease and Desist Letter |
| 2024-11-25 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D1,012,750 - Jewelry Article
- Patent Identification: U.S. Design Patent No. D1,012,750, titled Jewelry Article, issued January 30, 2024.
The Invention Explained
- Problem Addressed: The complaint alleges that prior to this invention, no three-dimensional jewelry pieces depicted the three hearts of the Holy Family (Jesus, Mary, and Joseph) strung together as a single ornamental unit (Compl. ¶16).
- The Patented Solution: The patent claims a new, original, and ornamental design for a jewelry article ('750 Patent, Claim). As illustrated in the patent’s figures, the design consists of three distinct, conjoined heart-shaped elements arranged horizontally. The figures depict specific surface ornamentation on each heart: one with a band of roses, a central one with a cross and a crown of thorns, and a third with a lily plant and a sword piercing it ('750 Patent, FIG. 1-2).
- Technical Importance: The complaint posits that this invention created an "original three-dimensional jewelry design" in the field of Catholic merchandise, distinguishing it from prior two-dimensional paintings of similar subject matter (Compl. ¶¶ 16, 21-22).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a jewelry article, as shown and described" ('750 Patent, Claim).
- The protected design encompasses the overall visual impression created by the combination of the following features shown in solid lines in the patent's figures:
- The arrangement of three heart-shaped elements in a side-by-side configuration.
- The specific surface ornamentation applied to each of the three hearts.
- The overall shape, contour, and three-dimensional appearance of the article.
U.S. Design Patent No. D1,043,407 - Jewelry Article
- Patent Identification: U.S. Design Patent No. D1,043,407, titled Jewelry Article, issued September 24, 2024.
The Invention Explained
- Problem Addressed: As with the '750 Patent, the invention addresses the creation of a novel ornamental design for religious jewelry (Compl. ¶¶ 16, 74).
- The Patented Solution: This patent, a division of the application that led to the '750 Patent, claims an ornamental design for a jewelry article comprising two conjoined heart-shaped elements ('407 Patent, FIG. 1-2). The figures show one heart with a band of roses and a second heart with a cross and crown of thorns, appearing to correspond to two of the three hearts shown in the '750 Patent ('407 Patent, FIG. 2).
- Technical Importance: This design appears to be a variation of the three-heart concept, offering a different visual presentation within the same product category (Compl. ¶74; '407 Patent, FIG. 1).
Key Claims at a Glance
- The single claim asserted is for "The ornamental design for a jewelry article, as shown and described" ('407 Patent, Claim).
- The protected design encompasses the overall visual impression created by the features shown in the patent's figures, including:
- The arrangement of two heart-shaped elements in a side-by-side configuration.
- The specific surface ornamentation applied to each of the two hearts.
- The overall shape and three-dimensional appearance of the two-heart article.
III. The Accused Instrumentality
Product Identification
The accused products are necklaces sold by Defendant under names including "Dainty Gold Vermeil Three Hearts of the Holy Family Necklace" and "Three Hearts of the Holy Family Sterling Silver Pendant" (Compl. ¶23).
Functionality and Market Context
The accused instrumentality is jewelry featuring a pendant with three heart-shaped elements strung together on a chain (Compl. ¶22). Exhibit C provides a screenshot from Defendant's website showing a necklace with three heart-shaped pendants that Plaintiffs identify as the "Infringing Jewelry" (Compl. ¶23, Ex. C). The complaint alleges that Defendant markets and sells this jewelry to consumers of Catholic merchandise throughout the United States via its website (Compl. ¶¶ 5, 10).
IV. Analysis of Infringement Allegations
D1,012,750 Infringement Allegations
| Claim Element (from the single design claim) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a jewelry article consisting of three conjoined hearts arranged in a specific order. | Defendant's jewelry allegedly "replicates this exact order of the hearts in its design." | ¶¶ 25, 79 | '750 Patent, FIG. 1-2 |
| The specific artistic modifications to public domain elements, including the removal of flames from two hearts. | Defendant's "Infringing Jewelry similarly depicts the Sacred Heart of Mary and Sacred Heart of Jesus with the flames removed, copying Plaintiffs’ exact artistic changes." | ¶¶ 26, 79 | '750 Patent, FIG. 2 |
| The specific artistic modification of replacing a lily with a rose on the third heart. | Defendant's "Infringing Jewelry makes this exact same alteration, replacing the lily with a rose on the Most Chaste Heart of Joseph." | ¶¶ 27, 79 | '750 Patent, FIG. 2 |
| The overall visual appearance of the three-heart design. | Defendant's jewelry allegedly "embodies designs that are substantially similar to TLC’s patented designs" and "copies the unique design elements." | ¶¶ 75, 79 | '750 Patent, FIG. 1-7 |
- Identified Points of Contention:
- Scope Questions: The complaint preemptively raises the issue of prior art scope, arguing that two-dimensional paintings of the Holy Family hearts are not proper comparison prior art for a three-dimensional jewelry article (Compl. ¶¶ 21-22). A central dispute may be whether an ordinary observer, viewing the patented design and the accused product in light of the proper prior art, would find the designs substantially the same.
D1,043,407 Infringement Allegations
- Identified Points of Contention: The complaint does not provide sufficient detail for a full claim chart analysis specific to the '407 Patent.
- Technical Questions: A primary question for the court will be whether the '407 Patent, which claims an ornamental design for a two-heart article, can be infringed by the accused product, which is a three-heart article. The infringement analysis will turn on whether an ordinary observer would find the overall visual appearance of the accused product to be substantially the same as the claimed two-heart design, which may raise complex questions about partial or component-level infringement in design patent law.
V. Key Claim Terms for Construction
- The Term: "jewelry article"
- Context and Importance: This term from the patent titles and claims defines the scope of the protected design and the field of relevant prior art. Practitioners may focus on this term because Plaintiff's non-infringement argument relies heavily on distinguishing its patented "jewelry article" from prior art in other fields, such as two-dimensional paintings (Compl. ¶¶ 21-22). The construction of this term will influence which prior art designs are considered in the "ordinary observer" infringement test.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: The patents use the general term "jewelry article" in the title and claim, without further limitation to a specific type of jewelry (e.g., pendant, brooch, or earring) ('750 Patent, Title, Claim).
- Evidence for a Narrower Interpretation: The figures in both patents depict an article with loops for stringing on a chain or cord, and Figure 8 of the '750 Patent explicitly shows the article as a pendant on a necklace ('750 Patent, FIG. 8). This may suggest the intended and claimed article is specifically a pendant or charm.
VI. Other Allegations
- Indirect Infringement: The complaint focuses on allegations of direct infringement and does not plead specific facts to support claims of induced or contributory infringement (Compl. ¶76).
- Willful Infringement: The complaint alleges willful infringement based on both pre-suit and ongoing conduct. It alleges Defendant had pre-suit knowledge of the patents based on a cease-and-desist letter sent on October 31, 2024 (Compl. ¶32). Willfulness is also alleged based on intentional copying, supported by claims that Defendant had access to Plaintiffs' designs via social media and replicated specific "precise artistic choices" (Compl. ¶¶ 79-80).
VII. Analyst’s Conclusion: Key Questions for the Case
Prior Art and the "Article of Manufacture": A central validity question will be whether prior art is limited to other three-dimensional jewelry, as Plaintiffs argue, or if it can include two-dimensional depictions of the same religious iconography. The resolution will depend on the court's interpretation of the claimed "article of manufacture" and its role in the design patent infringement analysis.
Scope of Design Patent Claims: A key infringement issue, particularly for the '407 Patent, will be one of partial design similarity: can a design patent claiming a two-heart arrangement be infringed by a product that incorporates that arrangement into a larger three-heart design? This raises a fundamental question about whether infringement can be found when the accused product contains the patented design but also includes additional ornamental features.
Evidence of Copying and Willfulness: A significant evidentiary battle may focus on whether Plaintiffs can prove that Defendant intentionally copied non-functional, "artistic" modifications from their design. Such evidence would be critical to their claim for willful infringement and any potential award of enhanced damages.