1:19-cv-11007
J W Reilly LLC v. Bally Americas Inc
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: J W Reilly LLC (Massachusetts)
- Defendant: Bally Americas Inc. (Delaware); Bally International AG (Switzerland); Bally Schuhfabriken AG (Switzerland)
- Plaintiff’s Counsel: Goulston & Storrs PC; Goldberg Kohn, Ltd.
- Case Identification: 1:19-cv-11007, D. Mass., 04/29/2019
- Venue Allegations: Venue is alleged to be proper in the District of Massachusetts because Defendants transact business in the Commonwealth, including through the operation of a Bally retail store in Boston from which the accused products were allegedly sold.
- Core Dispute: Plaintiff alleges that the ornamental buckles on several of Defendant’s high-end women's shoe models infringe its U.S. design patent.
- Technical Context: The dispute is in the field of fashion and luxury accessories, where the ornamental, non-functional appearance of a product component like a buckle can be a key driver of consumer appeal and brand identity.
- Key Procedural History: The complaint alleges a specific history of interaction, asserting that Plaintiff disclosed its patented buckle design to Defendant in 2013 during a proposal for a charitable partnership. The complaint further alleges that after Defendant declined the partnership, it began selling shoes incorporating a nearly identical buckle design. Plaintiff claims it later attempted to resolve the matter amicably beginning in 2017 but was rebuffed, which forms the basis for its willfulness allegations.
Case Timeline
| Date | Event |
|---|---|
| 2011-06-03 | Plaintiff's application for the '212 Patent filed |
| 2012-09-18 | U.S. Design Patent No. D667,212 ('212 Patent) issued |
| 2013-11-04 | Plaintiff allegedly discloses patented design to Defendant |
| 2014-04-26 | Defendant allegedly informs Plaintiff it is not interested in partnership |
| 2017-10-03 | Plaintiff sends letter to Defendant regarding alleged infringement |
| 2019-04-29 | Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
- Patent Identification: U.S. Design Patent No. D667,212, titled “SHOE BUCKLE,” issued on September 18, 2012 (the "'212 Patent").
- The Invention Explained:
- Problem Addressed: Design patents protect ornamental appearance rather than functional utility. The '212 Patent addresses the creation of a new, original, and ornamental design for a shoe buckle, distinct from prior designs in the fashion accessories field (Compl. ¶12).
- The Patented Solution: The patent claims the specific visual appearance of a shoe buckle as depicted in its seven figures ('212 Patent, Figs. 1-7). The design features a generally rectangular, horizontally-oriented buckle with rounded corners and a distinct, gentle convex curve across its front face ('212 Patent, Figs. 1, 4). The sides of the buckle appear to wrap around to a rear attachment structure, contributing to its overall three-dimensional shape ('212 Patent, Fig. 1).
- Technical Importance: In the fashion industry, a unique hardware design can serve as a signature element for a product line, contributing to its aesthetic appeal and commercial value (Compl. ¶12).
- Key Claims at a Glance:
- The '212 Patent contains a single claim for "The ornamental design for a shoe buckle, as shown and described" ('212 Patent, Claim).
- As a design patent, the "elements" of the claim are the collective visual characteristics of the buckle as illustrated in the patent's drawings, including:
- The overall shape, proportions, and surface curvature shown in the front perspective and elevational views (Figs. 1-2).
- The profile and depth shown in the side, top, and bottom views (Figs. 4-7).
III. The Accused Instrumentality
- Product Identification: The accused products are at least three styles of Bally-branded women's shoes sold under the names "Heline," "Holga," and "Harmoni" (Compl. ¶22).
- Functionality and Market Context: The relevant feature of the accused products is the ornamental buckle affixed to the vamp of each shoe. The complaint alleges these are "high-end women's shoes" that were "commercially successful" (Compl. ¶3, ¶22). The complaint provides a side-by-side visual comparison of the patented design and photographs of the accused buckles. For example, a photograph of the "Bally Harmoni" shoe shows a silver-toned buckle on a black shoe (Compl. p. 6). Another photograph shows the "Bally Heline" with a similar buckle on what appears to be a dark blue leather shoe (Compl. p. 6).
IV. Analysis of Infringement Allegations
The central test for design patent infringement is whether, in the eye of an "ordinary observer," the accused design is substantially the same as the claimed design, such that the observer would be deceived into purchasing the accused product supposing it to be the patented one.
'212 Patent Infringement Allegations
| Claim Element (from Claim 1) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a shoe buckle, as shown and described. | The ornamental design of the buckles on the Accused Products, which are alleged to be "nearly identical" and "substantially the same" as the patented design. The complaint provides photographic evidence to support this comparison. | ¶22, ¶24, p. 6-7 | '212 Patent, Figs. 1-7 |
Identified Points of Contention
- Overall Visual Impression: The primary legal and factual question is whether the overall visual impression of the Bally buckles is "substantially the same" as the '212 Patent design from the perspective of an ordinary observer familiar with the prior art. The complaint's side-by-side photographic comparisons are presented as direct evidence of this similarity (Compl. p. 6-7).
- Impact of Branding: The photographs show that the accused buckles are engraved with the "BALLY" brand name (Compl. p. 6-7). A potential point of contention is whether this added surface ornamentation creates a visually distinct design or is an inconsequential modification to an otherwise infringing overall shape and form.
V. Key Claim Terms for Construction
As this is a design patent, the claim consists of the drawings themselves rather than textual limitations. Therefore, claim construction in the traditional sense of defining specific words or phrases is not applicable. The analysis will focus on a visual comparison between the overall appearance of the patented design and the accused products.
VI. Other Allegations
- Indirect Infringement: The complaint does not allege indirect infringement (inducement or contributory infringement). The allegations are for direct infringement under 35 U.S.C. § 271(a) (Compl. ¶28).
- Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge. It alleges that Bally had actual pre-suit knowledge of the '212 Patent as of November 2013, when Plaintiff allegedly sent a proposal that included a photograph of the buckle marked with the patent number (Compl. ¶19). The allegation is that Bally "intentionally copied the design" after this disclosure (Compl. ¶23). The complaint further alleges post-suit knowledge based on correspondence sent to Bally beginning in October 2017 to resolve the matter (Compl. ¶25, ¶26).
VII. Analyst’s Conclusion: Key Questions for the Case
The "Ordinary Observer" Test: Will an ordinary observer, viewing the accused Bally buckles in the context of the prior art, find their overall ornamental appearance to be substantially the same as the design claimed in the '212 Patent? The outcome of the case hinges on this holistic visual comparison.
The Legal Effect of Branding: A significant issue for the court may be the role of the "BALLY" logo engraved on the accused buckles. The key question is whether this branding is sufficient to create a distinct overall visual impression that avoids infringement, or if it is merely minor surface ornamentation on a design whose fundamental shape and form have been copied.
Willfulness and Damages: Given the complaint’s detailed narrative of pre-suit disclosure and alleged copying, a central dispute will likely be willfulness. If infringement is found, the court will have to assess the evidence of Bally's alleged knowledge and intent to determine whether enhanced damages are warranted and whether Plaintiff is entitled to recover Defendant's total profits from the infringing articles under 35 U.S.C. § 289.