DCT
3:23-cv-01688
Trueing Studio LLC v. Serpentine Jewels LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Trueing Studio LLC (New York)
- Defendant: Serpentine Jewels, LLC (New York)
- Plaintiff’s Counsel: Getz Balich LLC
- Case Identification: 3:23-cv-01688, D. Conn., 12/28/2023
- Venue Allegations: Venue is alleged to be proper in the District of Connecticut because the Defendant operates a jewelry showroom, transacts business, and has allegedly committed acts of infringement at its Greenwich, Connecticut location.
- Core Dispute: Plaintiff alleges that a lighting fixture used by Defendant in its jewelry showroom infringes a design patent for a high-end, contemporary lighting fixture.
- Technical Context: The dispute is in the field of luxury interior design, specifically concerning the ornamental design of high-end lighting fixtures where aesthetic appearance is a primary driver of value.
- Key Procedural History: The complaint details pre-suit communications, including an alleged inquiry from an interior designer representing the Defendant about purchasing Plaintiff's authentic product, a subsequent cease-and-desist letter sent by the Plaintiff, and a response from Defendant's counsel asserting the fixture was purchased from a third-party seller on Etsy.
Case Timeline
| Date | Event |
|---|---|
| 2020-05-08 | U.S. Patent No. D952,232 Priority Date (Application Filing Date) |
| 2022-05-17 | U.S. Patent No. D952,232 Issues |
| 2022-07-21 | Designer for Serpentine allegedly requests pricing for Trueing's fixture |
| 2022-08-02 | Serpentine allegedly purchases the accused fixture via Etsy |
| 2023-02-12 | Serpentine allegedly posts image of accused fixture on Instagram |
| 2023-09-15 | Trueing sends Cease and Desist letter to Serpentine |
| 2023-10-17 | Serpentine's counsel responds to Cease and Desist letter |
| 2023-12-28 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Patent No. D952,232, “Lighting Fixture,” issued May 17, 2022.
The Invention Explained
- Problem Addressed: Design patents do not address a technical "problem" in the manner of utility patents. Rather, they protect a new, original, and ornamental design for an article of manufacture (Compl. ¶ 11; ’D232 Patent, Claim). The patent aims to provide a novel aesthetic appearance for a lighting fixture.
- The Patented Solution: The patent discloses a specific ornamental design for a lighting fixture characterized by a series of stylized, interconnected, C-shaped links forming a chain that suspends a spherical light element (’D232 Patent, Figs. 1-7). The scope of the design is defined by the elements shown in solid lines in the patent figures; portions shown in broken lines, such as the ceiling mount and internal wiring connections, are explicitly disclaimed and form no part of the patented design (’D232 Patent, Description).
- Technical Importance: The design represents an entry in the "ultra high-end, contemporary lighting" market, where unique and recognizable ornamental designs are a key component of commercial value and brand identity (Compl. ¶ 2).
Key Claims at a Glance
- The patent contains a single claim for: "The ornamental design for a lighting fixture, as shown and described" (’D232 Patent, Claim).
- In a design patent, the "claim" is a reference to the visual representations in the drawings. The key ornamental features protected by the claim include:
- The overall configuration of a chain suspending a light source.
- The specific C-shape, thickness, and proportions of the individual chain links.
- The manner in which the links interconnect.
- The attachment of a single, spherical globe to the terminal link of the chain.
III. The Accused Instrumentality
Product Identification
- A lighting fixture installed and used in Defendant Serpentine's Greenwich, Connecticut jewelry showroom (Compl. ¶ 16).
Functionality and Market Context
- The accused instrumentality is a chandelier that functions as a light source and decorative centerpiece in the showroom (Compl. ¶ 16).
- The complaint alleges the accused fixture is a "low-quality knockoff" of Plaintiff's CERINE® product line (Compl. ¶ 27). The complaint includes a photograph of the accused fixture installed in the Defendant's showroom, which it alleges contains "ornamental features directly infringing the D232 patent" (Compl. ¶ 16, Fig. 5).
- Plaintiff alleges that the Defendant's showroom and its own business target a similar affluent consumer base in the same geographic area, creating a "significant cross-over between Trueing's limited consumer base and Serpentine's customers" (Compl. ¶ 14).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether an "ordinary observer," giving the level of attention a typical purchaser would, would find the design of the accused product to be "substantially the same" as the patented design, such that they would be deceived into purchasing one believing it to be the other (Compl. ¶ 25). The complaint alleges this standard is met.
’D232 Patent Infringement Allegations
| Claim Element (from "as shown and described") | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| An ornamental design for a lighting fixture comprising a chain-like structure | The accused fixture is a chandelier comprising a chain-like structure that suspends light sources. This is depicted in an image of the Defendant's showroom. (Compl. Fig. 5) | ¶16 | ’D232 Patent, Figs. 1-7 |
| A series of interconnected, stylized, C-shaped links | The chain of the accused fixture is composed of interconnected links that, like the patented design, have a distinct C-shape and open-sided appearance. The image provided shows these features. (Compl. Fig. 5) | ¶16, ¶24 | ’D232 Patent, Figs. 1-2 |
| A spherical light-emitting element suspended from the chain | The accused fixture, as shown in the complaint's photograph, includes multiple spherical globes suspended from its chains, which Plaintiff alleges appropriates this ornamental feature of the patented design. (Compl. Fig. 5) | ¶16, ¶24 | ’D232 Patent, Fig. 1 |
| The overall visual impression of the combined elements | The complaint alleges that the overall non-functional ornamental design of the accused fixture is "substantially the same" as the patented design in the eye of an ordinary observer, with "resemblance such as to deceive an ordinary observer." The complaint juxtaposes images of the patent and the accused product. | ¶25 | ’D232 Patent, Claim, Figs. 1-7 |
Identified Points of Contention
- Scope Questions: The infringement analysis will depend on the scope of the patented design as a whole. A key question is whether the differences between the single-pendant design shown in the patent and the multi-pendant swag configuration of the accused fixture are sufficient to prevent a finding of substantial similarity in the eyes of an ordinary observer.
- Technical Questions: A factual question for the court will be a direct visual comparison. Do minor differences in the curvature, thickness, or finish of the accused product's links, when compared to the patent drawings, create a different overall visual impression? The complaint provides a single, angled photograph of the accused product, which may raise questions about its complete appearance from other perspectives (Compl. ¶ 16, Fig. 5).
V. Key Claim Terms for Construction
In design patent cases, claim construction focuses on the overall visual impression of the design as shown in the drawings, rather than on specific textual terms. The primary "construction" issue is determining the scope of the claimed design.
- The Term: "The ornamental design for a lighting fixture, as shown and described"
- Context and Importance: The scope of the design is defined by what is shown in solid lines versus what is disclaimed in broken lines. Practitioners may focus on this distinction because the Defendant may argue that the overall visual impression of its multi-pendant chandelier is different from the single-pendant fixture depicted in the patent, attempting to narrow the scope of protection to the exact configuration shown.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the core ornamental feature is the design of the individual links and their interconnection, and that this feature is copied repeatedly in the accused product. The patent claims the design for "a" lighting fixture, which could be argued to not be limited to the single embodiment shown.
- Evidence for a Narrower Interpretation: The patent explicitly states that what is claimed is the design "as shown and described" (’D232 Patent, Claim). Defendant may argue this language, combined with the consistent depiction of a single-chain, single-pendant fixture across all seven figures, limits the protected design to that specific arrangement. The patent’s description explicitly disclaims other parts of the fixture, reinforcing that the claim is tied to the specific visual elements depicted (’D232 Patent, Description).
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement. The primary allegation is direct infringement by "using" the accused fixture in Defendant's showroom (Compl. ¶ 26).
- Willful Infringement: The complaint alleges willful infringement. The stated basis is that Defendant continued to use the accused fixture after having "knowledge of its actual infringement," which it allegedly obtained no later than October 17, 2023, the date of its counsel's response to Plaintiff's cease-and-desist letter (Compl. ¶ 30).
VII. Analyst’s Conclusion: Key Questions for the Case
- Infringement and the Ordinary Observer: The central issue will be one of visual comparison: is the ornamental design of the accused multi-pendant chandelier "substantially the same" as the patented single-pendant design in the eyes of an ordinary purchaser of high-end lighting? The outcome will depend on whether the shared design of the chain links outweighs the differences in the overall fixture configuration.
- Willfulness and Knowledge: A key factual question will be the Defendant's state of mind. The complaint alleges that the Defendant was aware of Plaintiff's products and intentionally purchased a "knockoff" (Compl. ¶ 27). The court will likely examine the circumstances of the purchase from the third-party Etsy seller and whether continued use of the fixture after receiving the cease-and-desist letter constitutes willful infringement.
- Damages and Market Harm: Given the allegations of overlapping, high-end consumer bases and potential customer confusion (Compl. ¶ 14, ¶ 28), a significant question will be whether Plaintiff can prove it suffered lost profits or other damages from the display of the accused fixture in a direct competitor's luxury retail environment.