Kitsch LLC v. Hicober Direct

I. Executive Summary and Procedural Information

• Parties & Counsel:
  • Plaintiff: Kitsch LLC (Delaware)
  • Defendant: The Partnerships and Unincorporated Corporations Identified on Schedule “A” (China)
  • Plaintiff’s Counsel: Franklin, Greenswag, Channon & Capilla, LLC
• Case Identification: 1:24-cv-12721, N.D. Ill., 12/11/2024
• Venue Allegations: Venue is asserted on the basis that the Defendants are foreign individuals or entities based in China.
• Core Dispute: Plaintiff, an exclusive licensee, alleges that numerous foreign entities operating e-commerce storefronts on Amazon are infringing a U.S. design patent covering an ornamental design for a hair towel.
• Technical Context: The case concerns consumer beauty accessories, specifically microfiber hair towels, sold through major online retail platforms.
• Key Procedural History: The complaint frames the Defendants as part of a network of online infringers who use tactics to conceal their identities and evade enforcement. Plaintiff notes that an analysis of PayPal transaction logs from previous similar cases indicates a pattern of moving funds to offshore accounts.

Case Timeline

Date	Event
2018-11-05	D939,812 Patent Priority Date (Filing Date)
2022-01-04	D939812 Patent Issue Date
2024-12-11	Complaint Filing Date

II. Technology and Patent(s)-in-Suit Analysis

• Patent Identification: U.S. Design Patent No. D939,812, "Hair Towel," issued January 4, 2022.
• The Invention Explained:
  • Problem Addressed: Design patents do not articulate a technical problem and solution in the manner of utility patents. Instead, they protect the novel, non-functional, ornamental appearance of an article of manufacture (Compl. ¶22).
  • The Patented Solution: The patent claims the specific ornamental design for a hair towel. Key visual features of the design, as illustrated in Figures 1-5, include the shape of the towel as it appears when twisted and secured on a person’s head, featuring a prominent frontal twist, a tapering body that wraps around the head, and a gathered elasticized edge. Figures 6 and 7 show the design in an unfolded state, revealing a specific asymmetrical, pocket-like shape (’812 Patent, Figs. 1, 6, 7). The patent explicitly disclaims the human figure shown in broken lines, as well as other features depicted in broken or dash-dot lines, indicating they do not form part of the claimed design (’812 Patent, Description).
  • Technical Importance: The complaint alleges that Plaintiff's own hair towels embodying the patented design are "well-established on Amazon and enjoy quality customer reviews and high ratings," suggesting the design's commercial significance and consumer appeal (Compl. ¶11).
• Key Claims at a Glance:
  • The complaint asserts infringement of the patent's single claim (Compl. ¶22).
  • Design patents contain a single claim, which reads: "The ornamental design for a hair towel, as shown and described." (’812 Patent, Claim).

III. The Accused Instrumentality

• Product Identification: The accused instrumentalities are “Hair Towels” sold by Defendants through various Amazon storefronts (the “Seller Aliases”) (Compl. ¶2).
• Functionality and Market Context:
  • The complaint alleges the Defendants sell infringing hair towels under different brand names and color schemes but with "identical shapes and features" and using similar product imagery and descriptions (Compl. ¶9).
  • Plaintiff alleges these products are offered to consumers in the United States, including Illinois, through "fully interactive, commercial Seller Aliases" (Compl. ¶4). The complaint characterizes Defendants as an "interrelated group of infringers working in active concert" who use tactics like fictitious names and multiple Amazon listings to conceal their identities and evade enforcement (Compl. ¶13, ¶14).

IV. Analysis of Infringement Allegations

The complaint does not contain a formal claim chart. The central allegation is that, to an ordinary observer, the Defendants' products are substantially the same as the patented design (Compl. ¶22). The infringement test for a design patent is a visual one, focusing on the overall appearance of the accused product compared to the claimed design.

The complaint provides a side-by-side comparison of a patent figure and a photograph of an accused product as worn by a model. This image juxtaposes the line drawing from the ’812 Patent with a product image allegedly from one of the Defendants' storefronts to argue for a finding of substantial similarity (Compl. p. 7). A second visual comparison shows the patented design laid flat next to an image of an accused product, also laid flat, to demonstrate the similarity in the products' unfolded shape and construction (Compl. p. 8).

• Identified Points of Contention:
  • Scope Questions: A primary question for the court will be the scope of the patented design in light of any prior art. The infringement analysis will depend on whether the design is a pioneering one or a modest improvement over existing hair towel designs. The similarities between the accused products and the claimed design must be evaluated against the backdrop of what was already known in the field.
  • Technical Questions: The core question is one of visual comparison: would an ordinary observer, familiar with the prior art, be deceived into purchasing one of the Defendants' towels believing it was the patented design? The analysis will focus on the overall visual impression created by the products, not on a simple tally of similarities and differences.

V. Key Claim Terms for Construction

In design patent litigation, there are no traditional "claim terms" to construe. The "claim" is the visual design itself as depicted in the patent's figures. The central issue is determining the overall scope of the claimed design.

• The Term: "The ornamental design for a hair towel"
• Context and Importance: The scope of this design is the crux of the infringement case. The analysis will focus on what visual elements are protected and what features are disclaimed or functional. Practitioners may focus on distinguishing the purely ornamental aspects of the design from any potentially functional features of a hair towel.
• Intrinsic Evidence for Interpretation:
  • Evidence for a Broader Interpretation: The patent claims the overall visual impression of the hair towel. A court could find that the combination of the frontal twist, the specific taper, and the overall silhouette when worn creates a distinctive look that constitutes the core of the claimed design, regardless of minor variations.
  • Evidence for a Narrower Interpretation: The patent’s description explicitly disclaims portions of the drawings shown in broken lines, including the human form and a tab feature (’812 Patent, Description). This limits the scope of protection to only the elements shown in solid lines. The specific contours and proportions shown in Figures 6 and 7 for the unfolded towel could be argued to confine the design's scope to a very specific shape and construction.

VI. Other Allegations

• Indirect Infringement: The complaint's prayer for relief seeks to enjoin Defendants from "aiding, abetting, contributing to, or otherwise assisting anyone in infringing upon the Patent" (Compl. p. 9, ¶1(b)). However, the factual allegations focus on Defendants' own direct infringement through selling and offering for sale (Compl. ¶18, ¶22).
• Willful Infringement: Willfulness is explicitly alleged. The complaint asserts that Defendants have "knowingly and willfully" sold products that infringe the patent and that their infringement is willful (Compl. ¶18, ¶19). The basis appears to be the alleged direct copying of a design associated with a commercially successful product.

VII. Analyst’s Conclusion: Key Questions for the Case

1. Scope and Infringement: A central issue will be one of visual comparison: considering the scope of the claimed design in light of the prior art, would an ordinary observer perceive the accused hair towels as "substantially the same" as the ornamental design claimed in the ’812 Patent?

2. Enforcement and Jurisdiction: A key practical question, and a dominant theme of the complaint, will be procedural viability: can the Plaintiff successfully establish personal jurisdiction, effect service of process, and ultimately enforce a potential judgment against a network of allegedly anonymous foreign entities that operate through shifting online storefronts and may move assets offshore? (Compl. ¶14, ¶17).