DCT
1:23-cv-01789
Urban Intelligence Inc v. Spring Scaffolding LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: Urban Intelligence Inc. (Delaware)
- Defendant: Spring Scaffolding LLC, Spring Venture Holding LLC, and John Kalafatis (New York)
- Plaintiff’s Counsel: Tarter Krinsky & Drogin LLP
- Case Identification: 1:23-cv-01789, E.D.N.Y., 09/22/2025
- Venue Allegations: Venue is alleged to be proper as multiple defendants reside in the district, and a substantial part of the events giving rise to the claims occurred there.
- Core Dispute: Plaintiff alleges that Defendants' "Clear Vision Sheds" sidewalk scaffolding infringes upon Plaintiff's unregistered trade dress rights in its unique scaffolding design, which is also the subject of an associated design patent.
- Technical Context: The dispute centers on the aesthetic design of sidewalk scaffolding, an area that has seen efforts to move beyond purely utilitarian structures to more visually appealing designs for use in dense urban environments.
- Key Procedural History: The complaint alleges that Plaintiff sent multiple cease-and-desist letters to Defendant Spring Scaffolding between October 2022 and January 2023, putting Defendants on notice of the alleged infringement prior to filing suit.
Case Timeline
| Date | Event |
|---|---|
| 2009 | urbanSHED Design Competition began |
| 2010 | Plaintiff's "Urban Umbrella" design won the competition |
| 2011-12-07 | NYC Mayor's Office issued press release praising the design |
| 2020-11-30 | U.S. Design Patent No. D958,412 Priority Date |
| 2022-07-19 | U.S. Design Patent No. D958,412 Issue Date |
| 2022-10-19 | Plaintiff sent first cease-and-desist letter |
| Late 2022 | Alleged commencement of infringing activity |
| 2022-11-08 | Plaintiff sent second cease-and-desist letter |
| 2022-12-06 | Plaintiff sent third cease-and-desist letter |
| 2023-01-27 | Plaintiff sent fourth cease-and-desist letter |
| 2025-09-22 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D958,412 - "Building Scaffolding Brace Assembly"
- Patent Identification: U.S. Design Patent No. D958,412, "Building Scaffolding Brace Assembly", issued July 19, 2022 (the "D'412 Patent").
The Invention Explained
- Problem Addressed: The complaint describes traditional sidewalk scaffolding as a long-standing "eyesore for New Yorkers" (Compl. ¶14). The goal of the city-sponsored design competition that Plaintiff won was to create a "safe, attractive, and pedestrian conscious alternative to traditional sidewalk scaffolding" (Compl. ¶12).
- The Patented Solution: The D'412 Patent claims the ornamental design for a specific scaffolding brace. The design features a smooth, continuous arch that connects a vertical support column to an overhead beam, as depicted in various views (D’412 Patent, FIGs. 2-4). When assembled in series, these braces create the repeating "umbrella-like arches" that form the core of the aesthetic claimed as trade dress (Compl. ¶16).
- Technical Importance: The design was selected as the winner from 164 submissions in an international competition hosted by the New York City Department of Buildings, signaling its significance as an aesthetic improvement over conventional designs (Compl. ¶¶12-13).
Key Claims at a Glance
- The D'412 Patent contains a single claim for "The ornamental design for a building scaffolding brace assembly, as shown and described" (D’412 Patent, Claim).
- The claimed design consists of the visual characteristics of the brace assembly as depicted in the patent's figures, including:
- The overall arched shape and contour of the brace.
- The specific proportional relationship between the vertical, horizontal, and curved portions of the brace.
- The smooth transitions between the constituent parts of the brace.
- The broken lines in the figures, such as the mounting plates and the surrounding scaffolding structure, illustrate the environment but do not form part of the claimed design (D’412 Patent, FIG. 1).
III. The Accused Instrumentality
Product Identification
- The accused products are sidewalk sheds marketed and installed by Defendants under the name "Clear Vision Sheds" (Compl. ¶32).
Functionality and Market Context
- The complaint alleges that the Clear Vision Sheds are direct commercial competitors to Plaintiff's Urban Umbrella product (Compl. ¶30). The accused sheds are described as featuring a combination of "white colored scaffolding and sidewalk sheds with umbrella-like arches and without cross bracing" (Compl. ¶39). The complaint provides photographic examples of the accused sheds installed at numerous locations throughout New York City (Compl. pp. 9-11). For instance, a photograph shows a "Clear Vision Shed" installed at 180 Madison Avenue (Compl. p. 9).
IV. Analysis of Infringement Allegations
While the complaint asserts trade dress infringement rather than design patent infringement, the factual allegations map directly to the features protected by the D’412 Patent. The core of the dispute is the visual appearance of the scaffolding. A side-by-side comparison photograph is provided to illustrate the alleged similarity between Plaintiff's and Defendants' products (Compl. p. 12).
| Trade Dress Element (from Compl. ¶16) | Alleged Infringing Functionality | Complaint Citation | Correspondence to D’412 Design |
|---|---|---|---|
| umbrella-like arches/braces | Defendants' "Clear Vision Sheds" utilize curved structural braces that create a repeating archway effect, which Plaintiff alleges mimics its design. | ¶39, p. 12 | The D'412 Patent claims the specific ornamental design for a brace assembly that produces this "umbrella-like" arch appearance (D’412 Patent, FIGs. 1-2). |
| sidewalk scaffolding with no cross bracing | The accused sheds, as depicted in photographs, achieve structural support using the arched braces without conventional X-shaped cross-bracing. | ¶39, p. 12 | The design of the brace claimed in the D'412 Patent is integral to a system that does not require traditional cross-bracing, enabling a more open and aesthetic appearance. |
| use of white for the scaffolding | The complaint alleges that the accused sheds are white, mimicking a key color element of the Urban Umbrella Trade Dress. | ¶39, pp. 9-10 | Color is not claimed in the D'412 Patent, which consists of line drawings. |
| the placement and proportion of these elements | Plaintiff alleges the overall visual impression of the accused sheds is confusingly similar to its own due to the combination and arrangement of the design elements. | ¶37, p. 12 | The infringement test for a design patent considers the "design as a whole," focusing on whether the overall visual appearance is substantially the same. |
Identified Points of Contention
- Scope Questions: The complaint's trade dress allegations include color, which is not part of the D'412 Patent claim. A key question will be whether the combination of the shape (covered by the D'412 Patent) and color (part of the alleged trade dress) is necessary to establish a likelihood of consumer confusion.
- Technical Questions: A central issue for both the design patent and trade dress claims may be functionality. The court will have to consider whether the "umbrella-like arch" is a primarily ornamental feature or whether its shape is dictated by its structural function. The availability of alternative, functional, non-infringing brace designs could be a significant factor.
V. Key Claim Terms for Construction
In design patent litigation, claim construction focuses on the scope of the claimed design as a whole rather than on specific text.
The Term
- "The ornamental design for a building scaffolding brace assembly."
Context and Importance
- The entire case hinges on the scope of the claimed design and its similarity to the accused product. The determination of what an "ordinary observer" would perceive as the substance of the design will be critical. Practitioners may focus on this analysis because it defines the boundaries of the intellectual property right at issue.
Intrinsic Evidence for Interpretation
- Evidence for a Broader Interpretation: The patent figures use solid lines to claim the overall shape, curvature, and proportions of the brace assembly. A party could argue that the claim covers any brace with a substantially similar arched profile and visual impression, regardless of minor manufacturing or material differences.
- Evidence for a Narrower Interpretation: The precise contours and transitions shown in Figures 2-8 of the D'412 Patent could be argued to limit the claim's scope. Further, the broken lines in the figures constitute a disclaimer of subject matter, explicitly carving out the mounting plates and surrounding structure from the claimed design, which could be used to argue for a narrower interpretation focused only on the brace itself.
VI. Other Allegations
Indirect Infringement
- The complaint does not contain allegations of patent infringement, and therefore does not plead indirect patent infringement.
Willful Infringement
- The complaint alleges Defendants acted with "express intent to cause confusion and mistake" and that their copying was "intentional and calculated" (Compl. ¶¶36, 49). The basis for pre-suit knowledge is established by allegations that Plaintiff sent four separate cease-and-desist letters to Defendants between October 2022 and January 2023, which Defendants allegedly ignored (Compl. ¶¶40-42).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of scope and functionality: can the "umbrella-like arch," central to both the asserted trade dress and the D'412 Patent, be successfully defended as a primarily ornamental, source-identifying feature, or will it be deemed functional and therefore unprotectable as a design patent or trade dress?
- A key evidentiary question will be one of visual identity: considering the side-by-side photographic evidence (Compl. p. 12), is the total visual appearance of the Defendants' "Clear Vision Sheds" substantially the same as the Plaintiff's design in the eyes of an ordinary observer (the design patent test) and likely to cause consumer confusion as to source (the trade dress test)?