DCT
2:18-cv-13531
Cram v. Fanatic Group LLC
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Michael Cram, d/b/a Pacific Productions (California)
- Defendant: The Fanatic Group, LLC (New Jersey)
- Plaintiff’s Counsel: Law Offices of Bradley S. Rothschild, LLC
- Case Identification: 2:18-cv-13531, D.N.J., 09/04/2018
- Venue Allegations: Venue is alleged to be proper in the District of New Jersey because Defendant is a New Jersey limited liability company and the claims of infringement against Plaintiff arose in the district.
- Core Dispute: Plaintiff alleges that Defendant’s musical pens infringe a U.S. design patent covering the ornamental design for a writing pen.
- Technical Context: The dispute concerns consumer novelty products, specifically musical ballpoint pens, which are often branded with collegiate and professional sports team logos and sold as fan merchandise.
- Key Procedural History: The complaint does not mention any prior litigation or post-grant proceedings involving the patent-in-suit. It does allege, however, that Plaintiff’s products have been subject to extensive licensing deals with major sports leagues and schools, suggesting a significant market presence for the product type.
Case Timeline
| Date | Event |
|---|---|
| 2006-03-17 | U.S. Patent No. D553,678S Priority Date (Filing Date) |
| 2007-10-23 | U.S. Patent No. D553,678S Issued |
| c. 2016-03 | Plaintiff alleges it became aware of Defendant's accused products |
| 2018-09-04 | Complaint Filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Design Patent No. D553,678S - "Writing Pen"
- Patent Identification: U.S. Design Patent No. D553,678S, "Writing Pen," issued October 23, 2007.
The Invention Explained
- Problem Addressed: Design patents do not solve technical problems but rather protect the ornamental appearance of an article of manufacture. The patent claims the particular aesthetic and non-functional visual characteristics of a writing pen (D'678S Patent, CLAIM).
- The Patented Solution: The patent protects the specific ornamental design for a writing pen as depicted in its figures. Key features of the design include the overall shape and proportions of the pen, which consists of a two-part cylindrical barrel that tapers towards the writing tip, a distinctively shaped plunger-style actuator, and an integrated pocket clip with a specific elongated form (D'678S Patent, Figs. 1-3).
- Technical Importance: The complaint alleges that the design is "unique and distinctive" and that the products embodying the design have been "extremely successful," having been licensed to numerous major sports organizations and studios (Compl. ¶¶11, 14).
Key Claims at a Glance
- Design patents contain a single claim. The asserted claim is: "the ornamental design for a writing pen, as shown and described." (D'678S Patent, CLAIM).
- The scope of this claim is defined by the visual representations in the patent's drawings. The key ornamental elements depicted are:
- The overall configuration and profile of the pen.
- A two-part barrel assembly with a wider upper portion and a narrower, shorter lower portion.
- A plunger top with a defined shape.
- A pocket clip of a particular form and its placement on the upper barrel.
III. The Accused Instrumentality
Product Identification
Defendant's "various musical pens displaying various sport teams, both professional and on the collegiate level" (Compl. ¶28).
Functionality and Market Context
The accused products are retractable ballpoint pens that play a sound, such as a college fight song, when the top button is pressed (Compl. Ex. C, p. 44). These products are marketed as novelty merchandise to sports fans through various retail channels, including online stores (Compl. ¶¶28, 30). The complaint asserts that the accused pens are "practically identical knock-offs" of Plaintiff’s products (Compl. ¶29). The complaint includes an image from an online retailer of Plaintiff’s "USC (University of Southern California) Musical Pen" (Compl. Ex. C, p. 34). It also provides an image of an accused product, the "Michigan State Musical Ballpoint Pen," to support its infringement allegations (Compl. Ex. C, p. 31).
IV. Analysis of Infringement Allegations
The standard for design patent infringement is whether an "ordinary observer," familiar with the prior art, would be deceived into believing the accused design is the same as the patented design. The complaint alleges that Defendant's musical pens create a visual impression that is substantially the same as the claimed design.
D'678S Patent Infringement Allegations
| Ornamental Feature (from D'678S Patent Drawings) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The overall ornamental design for a writing pen, as a whole. | Defendant's accused musical pens are alleged to be "practically identical knock-offs" and a "colorable imitation" of the patented design, such that an ordinary observer would be confused. | ¶¶29, 43 | D'678S Patent, Figs. 1-3 |
| A two-part cylindrical barrel, tapering toward the writing tip. | The accused pens, such as the "Utah Utes Musical Pen" shown in an exhibit, feature a two-part barrel with a similar taper and proportions to the patented design. | ¶28; Ex. C, p. 32 | D'678S Patent, Fig. 2 |
| A plunger-style actuator cap of a particular shape and proportion relative to the barrel. | The accused pens feature a plunger-style top that is alleged to be visually similar in shape and size to the actuator cap shown in the patent drawings. | ¶28; Ex. C, p. 32 | D'678S Patent, Fig. 2 |
| A pocket clip of a specific elongated shape, integrated into the upper barrel. | The accused pens incorporate a pocket clip that allegedly mimics the shape, length, and placement of the clip element in the patented design. An image of an accused pen with such a clip is included in Exhibit C to the complaint. | ¶28; Ex. C, p. 44 | D'678S Patent, Fig. 3 |
- Identified Points of Contention:
- Scope Questions: A central issue will be the scope of the D'678S patent's design in view of the prior art. The patent cites numerous earlier pen designs (D'678S Patent, "References Cited"). The court will need to determine how different the patented design is from these prior designs. This analysis will dictate whether the minor differences between the patented design and the accused pens are sufficient to avoid infringement.
- Technical Questions: A key question for the fact-finder will be whether the addition of surface ornamentation (e.g., team logos, specific colors) on the accused pens creates a different overall visual impression from the unadorned design claimed in the patent's line drawings. The dispute may turn on whether an ordinary observer focuses on the underlying shape claimed in the patent or the surface graphics applied to the accused products.
V. Key Claim Terms for Construction
In a design patent case, the single claim is for the "ornamental design... as shown and described." Claim construction, in the traditional sense of defining words, is not typically a central issue. The "claim" is understood to be the design depicted in the patent's drawings. The scope of the design patent is not determined by construing terms, but by comparing the patented design to the prior art and the accused product from the perspective of an ordinary observer. Therefore, the focus of the case will likely be on the visual comparison of the designs rather than disputes over the meaning of claim terms.
VI. Other Allegations
- Indirect Infringement: The complaint does not contain allegations of indirect infringement (inducement or contributory infringement) for the patent count.
- Willful Infringement: The complaint alleges that Defendant’s infringement was willful (Compl. ¶45). It asserts that Defendant "knew of Plaintiff's exclusive rights in the patented design" and proceeded with "malicious disregard" for Plaintiff’s rights. The factual basis for this allegation appears to be constructive knowledge, based on the assertion that a "reasonable investigation would have revealed that the designs were and are proprietary" and that Plaintiff and his products are well-known in the market (Compl. ¶¶27, 32). Plaintiff seeks treble damages under 35 U.S.C. §284 and Defendant's total profits under 35 U.S.C. §289 (Compl. ¶¶45-46).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of design patent scope: How broad is the protection afforded to the D'678S patent's design when viewed in light of the prior art? The degree of novelty over prior pen designs will determine whether the visual differences between the accused pens and the patented design are substantial enough to avoid infringement.
- A key evidentiary question will be one of visual impression: From the perspective of an ordinary observer, do the accused pens, which feature prominent team branding and colors not shown in the patent's line drawings, create a substantially different overall appearance from the claimed design, or is the underlying shape sufficiently similar to cause confusion?
- Finally, the claim for willfulness raises a question of knowledge: What evidence will Plaintiff be able to present to prove that Defendant had actual, pre-suit knowledge of the D'678S patent itself, as opposed to general awareness of Plaintiff's competing products, to meet the standard for willful infringement?