DCT

1:23-cv-04409

Walker v. Monica Rich Kosann

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I. Executive Summary and Procedural Information

  • Parties & Counsel:
  • Case Identification: 1:23-cv-04409, S.D.N.Y., 03/26/2024
  • Venue Allegations: Plaintiff alleges venue is proper because Defendants conduct business in the district and have committed or contributed to acts of infringement within the district.
  • Core Dispute: Plaintiff alleges that a wide range of products—including toys, jewelry, and animated media content—offered by the Defendants infringe a design patent for a "Fragrant Oil Burning Lamp."
  • Technical Context: The patent-in-suit protects the ornamental, non-functional aesthetic of a decorative bottle-like lamp intended for the home and garden product market.
  • Key Procedural History: The complaint alleges that Plaintiff sent cease and desist letters to the Defendants prior to filing suit, putting them on notice of the alleged infringement.

Case Timeline

Date Event
2008-12-15 U.S. Patent No. D593,191 Filing Date
2009-05-26 U.S. Patent No. D593,191 Issue Date
2023-09-21 Date of Plaintiff's order for accused "Nickelodeon Shimmer and Shine Danglers"
2024-01-XX Date of Plaintiff's cease and desist letter to Defendant Kroger
2024-03-26 Amended Complaint Filing Date

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

U.S. Design Patent No. D593,191, Fragrant Oil Burning Lamp, issued May 26, 2009

The Invention Explained

  • Problem Addressed: The patent does not address a functional problem but instead seeks to provide a "unique and ornamental" aesthetic design for a consumer product (Compl. ¶24).
  • The Patented Solution: The patent protects the specific visual appearance of a "fragrant oil burning lamp" (D’191 Patent, Title). The design consists of a bottle-like object with three primary sections: a bulbous, vertically-fluted base; a long, slender neck featuring a raised spiral wrapping and segmented rings; and a decorative, pointed cap or finial. The patent figures illustrate these elements from multiple perspectives and include an exploded view showing the top portion is removable from the base (D’191 Patent, FIG. 1-8; Compl. ¶24). The single claim is for "the ornamental design for a fragrant oil burning lamp, as shown and described" (D’191 Patent, Claim).
  • Technical Importance: The complaint alleges the design's distinctive aesthetic characteristics contribute to its novelty and value in the home and garden product market (Compl. ¶24).

Key Claims at a Glance

  • The patent contains a single claim for the ornamental design as depicted in its figures.
  • The essential visual elements of the claimed design include:
    • A multi-section, bottle-like overall configuration.
    • A bulbous base with vertical surface indentations.
    • An elongated neck with a spiral-wrapped texture.
    • A pointed, decorative top element.

III. The Accused Instrumentality

Product Identification

The complaint accuses a broad and diverse set of instrumentalities, primarily centered around the "Shimmer and Shine" media franchise and other "genie bottle" themed products (Compl. ¶19, 25). These include:

  • Animated depictions of lamps, bottles, and pendants within the "Shimmer and Shine" television series produced by Defendant Nickelodeon (Compl. ¶25.b).
  • Physical toys and merchandise associated with the "Shimmer and Shine" series, such as dolls, playsets, and party favors manufactured by Defendant Fisher-Price and sold by retailers like Walmart and Kmart (Compl. ¶25.c-d).
  • Jewelry items, such as pendants and charms, sold by Defendants including Disney, Monica Rich Kosann, and Provenance Gems (Compl. ¶13, 17, 20).

Functionality and Market Context

The accused instrumentalities are alleged to "replicate or substantially embody the unique design features protected by the D191 Patent" (Compl. ¶3). The complaint presents visual evidence of these products, such as a screenshot of a Fisher-Price "Wish & Spin, Shine" toy that includes a bottle-shaped accessory (Compl. p. 34). Another image shows the packaging for "Nickelodeon Shimmer and Shine Danglers," party decorations that feature cutouts of the bottle design (Compl. p. 20, 30). The complaint alleges that these products are sold through major online and retail channels, including Walmart, eBay, and Amazon (Compl. ¶14, 15, 21).

IV. Analysis of Infringement Allegations

For a design patent, infringement occurs if, 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 believing it to be the patented one. The analysis compares the overall ornamental appearance.

D’191 Patent Infringement Allegations

Key Ornamental Features of the Patented Design (from D'191 Patent, FIG. 1-8) Alleged Infringing Appearance in Accused Products Complaint Citation Patent Citation
The overall ornamental design for a fragrant oil burning lamp, characterized by a bulbous base, an elongated, textured neck, and a decorative, pointed top. The complaint alleges that various products embody a substantially similar overall design. This includes the bottle-shaped accessory with the Fisher-Price "Shimmer and Shine" toy, the "Aladdin Genie Charm" sold by Disney, and animated bottles depicted in the Nickelodeon cartoon series. A screenshot from the "Shimmer and Shine" series shows animated bottles with a similar profile to the patented design (Compl. p. 33). ¶25, 32 FIG. 1-8
A bulbous base with ornamental surface features (e.g., vertical fluting). The accused "Disney by Couture Kingdom Aladdin Genie Charm" is depicted with a rounded, bulbous base (Compl. p. 36). The Fisher-Price toy accessory also features a prominent rounded base (Compl. p. 34). ¶25.c FIG. 2
An elongated, slender neck with surface ornamentation (e.g., a spiral wrap). The Disney charm and Fisher-Price toy accessory both feature elongated necks above their respective bases, which the complaint alleges mimic the patented design (Compl. p. 34, 36). ¶25.c FIG. 2, 5
A distinct, decorative top element or finial. The accused products are depicted with decorative tops. For example, a product listing for an "Infringing product sold by eBay" shows a charm with a distinct top piece that closes the bottle shape (Compl. p. 19). ¶25.c FIG. 1
  • Identified Points of Contention:
    • Scope Questions: A central question will be whether the patented design for a "fragrant oil burning lamp" can be infringed by designs for different articles of manufacture, such as a toy accessory, a jewelry charm, or a two-dimensional animated image. The defendants may argue that the ordinary observer test is not met when comparing products across such different categories and functions.
    • Technical Questions: The infringement analysis will depend on a visual comparison of the products to the patent's figures. A key question will be whether the accused designs are "substantially similar" in overall appearance, or if differences in proportion, specific ornamentation, and fine details are sufficient to differentiate them in the eye of an ordinary observer.

V. Key Claim Terms for Construction

In a design patent case, the single claim is typically construed by reference to the figures. The court does not construe claim terms in the same way as in a utility patent case. The analysis focuses on the overall visual impression of the design as a whole. However, the parties' arguments will likely center on the scope and importance of specific visual features.

  • The Term: The Ornamental Design "as shown and described."
  • Context and Importance: The scope of the design as a whole is the central issue. Practitioners may focus on whether the design is limited to the exact proportions and combination of features shown, or if it covers a broader "genie bottle" aesthetic. This determination will be informed by the prior art, which establishes the context for what aspects of the design are truly novel and non-obvious.
  • Intrinsic Evidence for Interpretation:
    • Evidence for a Broader Interpretation: A party could argue that the core protected design is the overall visual impression of a bottle with a bulbous base, long neck, and decorative stopper, and that minor variations in the surface ornamentation (e.g., the specific type of fluting or spiral) do not defeat infringement. The patent's title, "Fragrant Oil Burning Lamp," could be argued to describe the intended use but not to limit the protected aesthetic to only that article.
    • Evidence for a Narrower Interpretation: A party could argue that protection is limited to the specific combination of all depicted elements: the vertical fluting on the base, the specific spiral wrap and rings on the neck, and the precise shape of the finial, all in the proportions shown (D’191 Patent, FIG. 2-5). The description of a "top portion removable from a base portion" and an "oil reservoir tube" could be used to argue that the design is inextricably linked to the functional configuration of a multi-part, refillable lamp, narrowing its scope (D’191 Patent, Description of FIG. 1).

VI. Other Allegations

  • Indirect Infringement: The complaint alleges that Defendants induced infringement under 35 U.S.C. § 271(b) by "actively encouraging or facilitating the sale, use, or manufacture of infringing products" (Compl. ¶37). It also alleges contributory infringement under § 271(c), stating Defendants sold products that were "especially made or adapted to infringe" (Compl. ¶41). For example, Nickelodeon and Disney are alleged to have created and distributed infringing animated content, which then induced Fisher-Price to manufacture, and Walmart to sell, infringing physical merchandise (Compl. ¶25.b-d).
  • Willful Infringement: The complaint alleges willful infringement based on Defendants' continued infringing activities after receiving notice of the D’191 patent via cease and desist letters (Compl. ¶26, 45). A copy of a letter to Defendant Kroger is included in the complaint, alleging it provides the requisite knowledge for willfulness (Compl. p. 29-32).

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

  1. Cross-Category Infringement: A core issue will be one of scope and application: can the ornamental design for a "fragrant oil burning lamp" be infringed by the visual appearance of different articles of manufacture, including toys, jewelry, and two-dimensional animated images? The court’s application of the "ordinary observer" test across these disparate product categories will be dispositive.
  2. Ornamental vs. Functional Elements: A key legal question will be the dissection of ornamental versus functional features. The court will need to determine which aspects of the patented design are purely aesthetic and protected, and which are dictated by the object's function as a lamp (e.g., the bottle shape for holding fluid, the removable top for filling). The scope of protection attaches only to the ornamental aspects.
  3. The Role of Prior Art: The ultimate determination of infringement and validity will hinge on the prior art landscape. The novelty and non-obviousness of the patented design, when compared to pre-existing decorative bottle and lamp designs, will define the breadth of its enforceable scope against the accused products.