1:24-cv-03188
RBW Studio LLC v. Stonehill & Taylor Architects
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiff: RBW Studio, LLC (Delaware/New York)
- Defendant: Stonehill & Taylor Architects, P.C. (New York); Michaelis Boyd, Inc. (New York); The Lightstone Group, LLC (New York); Bowery Street Associates, LLC (Delaware); PTY Lighting, Inc. (New Jersey); HPG International, Inc. (California)
- Plaintiff’s Counsel: Bushell, Sovak, Kane & Sash LLP; Saidman Designlaw Group, LLC
- Case Identification: 1:24-cv-03188, S.D.N.Y., 06/17/2024
- Venue Allegations: Venue is alleged to be proper based on Defendants' continuous and systematic contacts with New York, having principal places of business or incorporation in New York, and committing alleged torts within the state. For the patent claim specifically, the complaint alleges that Defendants Lightstone and Bowery maintain a regular and established place of business in the district where they have used the accused products.
- Core Dispute: Plaintiff alleges that Defendants' "knock-off" light fixtures, installed and used in a luxury hotel, infringe its design patent for a wall sconce.
- Technical Context: The dispute is in the field of ornamental design for high-end lighting fixtures, specifically those used in commercial and hospitality interior design.
- Key Procedural History: The complaint alleges that after Plaintiff's design patent application was filed, Defendants obtained samples of Plaintiff's "Pastille" sconce, referenced it in hotel design specifications, obtained a price quote for the authentic products, and then engaged other parties to manufacture and install cheaper, infringing copies. Plaintiff sent cease and desist letters in January 2024, prior to the patent issuing in March 2024.
Case Timeline
| Date | Event |
|---|---|
| 2018-11-13 | Patent application filed (priority date for '048 Patent) |
| 2019-10 | Plaintiff sells samples of the Pastille™ sconce to Defendant Bowery Street |
| 2020-10-12 | Non-party contractor obtains quote for 647 authentic RBW sconces |
| 2022-11-02 | Hospitality Design Magazine features the Moxy Hotel |
| 2024-01-17 | Plaintiff sends cease and desist letters to certain Defendants |
| 2024-03-26 | U.S. Patent No. D1,020,048 issues |
| 2024-06-17 | First Amended Complaint filed |
II. Technology and Patent(s)-in-Suit Analysis
U.S. Patent No. D1,020,048 - Light
Issued March 26, 2024
The Invention Explained
The complaint suggests the goal was not to solve a technical problem but to create a novel and aesthetically pleasing lighting design with a distinctive appearance (Compl. ¶27). The design is described as having "Art Deco sensibilities" (Compl. ¶27).
The patent protects the ornamental design for a light fixture. The core visual features, as shown in the patent's figures, are a vertically oriented, elongated backplate upon which three evenly spaced, globe-like light elements are mounted ('048 Patent, Figs. 1, 6; Compl. ¶63). The patent's drawings define the specific proportions, contours, and overall visual appearance of the claimed design ('048 Patent, Figs. 1-7).
As a design patent, its importance is aesthetic. The complaint positions the underlying product as an "award-winning" design that is part of a brand for architects and designers seeking "high quality light fixtures" (Compl. ¶26).
Key Claims at a Glance
The patent asserts a single claim: "The ornamental design for a light, as shown and described" ('048 Patent, "CLAIM").
The visual elements protected by this claim include:
- The overall configuration of a vertical fixture with three distinct light sources.
- The specific shape and proportions of the elongated backplate.
- The particular rounded, contoured shape of the three lighting elements.
- The relative size and spacing of the lighting elements on the backplate.
III. The Accused Instrumentality
Product Identification
The "Accused Light Fixtures" are sconces installed and used in the guest rooms of the Moxy NYC Lower East Side hotel (Compl. ¶3, 7). The complaint identifies them as "vanity lights" and "bedside sconces" (Compl. ¶41, p.9).
Functionality and Market Context
The complaint alleges the accused fixtures are unauthorized "knock-off copies" of RBW's Pastille™ sconce (Compl. ¶44). The fixtures are shown in complaint photographs mounted vertically in bathroom and bedroom settings within the hotel. One photograph shows an accused fixture installed next to a bathroom vanity mirror (Compl. p. 10). The complaint alleges these fixtures were intentionally sourced as "cheaper substitutes" for the authentic RBW product for use in a luxury hotel project that later won an industry award (Compl. ¶37, 40).
IV. Analysis of Infringement Allegations
The infringement test for a design patent is whether an ordinary observer, familiar with the prior art, would be deceived into purchasing the accused product believing it to be the patented design. The complaint alleges the accused fixtures are "substantially the same in overall appearance" as the patented design (Compl. ¶43, 48).
'048 Patent Infringement Allegations
| Claim Element (Visual Feature from '048 Patent) | Alleged Infringing Functionality | Complaint Citation | Patent Citation |
|---|---|---|---|
| The ornamental design for a light, as shown and described. | The Accused Light Fixtures, shown in photographs installed at the Moxy Hotel, are alleged to be "substantially the same in overall appearance" and a "colorable imitation" of the patented design. This is based on a visual comparison between the patent drawings and photographs of the accused product. A photograph from the Moxy Hotel's website shows the accused fixture installed in a guest room. (Compl. p. 12). | ¶43, 48, 53 | N/A |
Identified Points of Contention
- Scope Questions: The central issue is whether the overall visual impression of the Accused Light Fixtures is "substantially the same" as the design claimed in the '048 Patent from the perspective of an ordinary observer. The analysis will depend on comparing the holistic appearance, not just isolated features.
- Technical Questions: A key question for the court will be whether any visual differences between the specific contours and proportions shown in the patent's drawings and the physical Accused Light Fixtures are significant enough to avoid infringement. The patent notes that its shading "illustrates contour" ('048 Patent, DESCRIPTION), making those illustrated shapes a potentially critical aspect of the comparison.
V. Key Claim Terms for Construction
In design patent cases, there are typically no claim terms to construe. The analysis focuses on the scope of the design as depicted in the drawings.
- The Term: "The ornamental design for a light, as shown and described."
- Context and Importance: The scope of the design shown in the drawings is the central issue of the infringement analysis. Practitioners may focus on this "term" because the entire dispute hinges on comparing the overall visual appearance of the accused product to the patented design. The outcome will depend on whether the fact-finder perceives the designs as substantially similar.
- Intrinsic Evidence for Interpretation:
- Evidence for a Broader Interpretation: Plaintiff may argue that the claim protects the overall aesthetic and visual "gestalt" of the design, which includes the combination of a long backplate with three globes in that specific arrangement ('048 Patent, Fig. 1). From this perspective, minor variations in dimension or finish that do not alter the overall visual effect may not be sufficient to avoid infringement.
- Evidence for a Narrower Interpretation: Defendants may argue that the claim is limited to the exact visual details shown in the solid lines of the drawings. The patent's description notes that the broken lines depict unclaimed environment and that "surface shading...illustrates contour" ('048 Patent, DESCRIPTION). This suggests the specific illustrated contours are a definitive part of the claimed design, and any deviation in the accused product could be argued as a substantial difference.
VI. Other Allegations
- Indirect Infringement: The complaint's formal infringement count is for direct infringement by use and is asserted against Defendants Lightstone and Bowery (Compl. ¶43). The complaint's narrative, however, alleges that other Defendants (Stonehill, Boyd, PTY, HPG) were involved in designing, manufacturing, specifying, sourcing, and selling the accused products (Compl. ¶37, 44, 46).
- Willful Infringement: The complaint alleges willful infringement based on both pre- and post-suit knowledge. It alleges Defendants had pre-suit knowledge of RBW's design because they obtained samples, explicitly referenced the RBW product in design specifications for the Moxy Hotel, and received a quote for the authentic product before allegedly seeking a "knock-off" (Compl. ¶33, 35, 37, 66). It further alleges that infringement continued after Plaintiff sent cease and desist letters on January 17, 2024, notifying Defendants of the pending patent rights (Compl. ¶50, 52).
VII. Analyst’s Conclusion: Key Questions for the Case
- A core issue will be one of visual comparison: Under the "ordinary observer" test, is the overall ornamental design of the accused hotel light fixtures substantially the same as the specific design claimed in the '048 Patent? The outcome will depend on a holistic assessment of the products' appearances, likely informed by any prior art designs the defendants introduce.
- A key evidentiary question will concern the impact of the copying narrative: The complaint lays out a detailed story of alleged intentional copying. A central question is how, if at all, evidence supporting this narrative will influence the objective legal test for design patent infringement, which focuses on the visual similarity between the designs themselves.
- A third question involves the scope of liability and damages: While the formal patent infringement count is directed at the end-user defendants, the complaint alleges a coordinated effort among all defendants to create and deploy the accused fixtures. A significant issue will be whether liability, particularly for willful infringement and damages, can be extended from the direct infringers to the architects, manufacturer, and purchasing agent who allegedly orchestrated the infringement.