DCT
1:25-cv-05546
Roll & Hill LLC v. HPG Intl LLC
Key Events
Amended Complaint
I. Executive Summary and Procedural Information
- Parties & Counsel:
- Plaintiffs: Roll & Hill, LLC (New York) and Ladies & Gentleman Studio, Inc. (Washington)
- Defendant: HPG International, LLC (California)
- Plaintiff’s Counsel: Becker & Poliakoff, P.A.
- Case Identification: 1:25-cv-05546, S.D.N.Y., 09/10/2025
- Venue Allegations: Venue is alleged as proper in the Southern District of New York because the injury sustained from Defendant’s alleged acts occurred within the district.
- Core Dispute: Plaintiffs allege that Defendant engaged in unfair competition and deceptive trade practices under New York law by procuring a sample of Plaintiffs' proprietary "Krane Fixture" lighting design under the pretense of a bulk purchase, and then using that sample to create and sell inexpensive imitations for a hotel project.
- Technical Context: The dispute concerns the market for high-end, original designer lighting fixtures, where unique ornamental appearance and brand identity are significant commercial assets.
- Key Procedural History: While no patent infringement is alleged, the complaint references U.S. Design Patent No. D824,077, which covers the ornamental design of the "Krane Fixture," as evidence of Plaintiffs' proprietary rights. The central allegations are rooted in the business dealings between the parties, where Plaintiffs provided Defendant with a sample fixture, drawings, and specifications for a potential project, which Defendant then allegedly used to source "knockoff" products from an overseas manufacturer after negotiations failed.
Case Timeline
| Date | Event |
|---|---|
| 2010 | Plaintiff L&G design studio established |
| 2017 (Approx.) | "Krane Fixture" design created |
| 2017-03-27 | U.S. Design Patent D824,077 Priority Date |
| 2018-07-24 | U.S. Design Patent D824,077 Issued |
| 2019-10 | Defendant HPG first contacted Plaintiffs about the Krane Fixture |
| 2019-10-22 | Defendant ordered a sample Krane Fixture |
| 2019-11-05 | Sample Krane Fixture shipped to Defendant |
| 2022 (Late) | Moxy Hotel opened to the public with accused fixtures |
| 2025-09-10 | Complaint Filing Date |
II. Technology and Patent(s)-in-Suit Analysis
Although the complaint does not allege patent infringement, it identifies a design patent that is central to the plaintiffs’ asserted rights in the disputed lighting fixture design.
U.S. Patent No. D824,077 - "Lighting Fixture"
- Patent Identification: U.S. Design Patent No. D824,077, titled “Lighting Fixture,” issued July 24, 2018 (the “D’077 Patent”).
The Invention Explained
- Problem Addressed: The complaint does not describe a specific technical problem, as is typical for design patents. Instead, the focus is on creating a unique ornamental appearance for a lighting fixture.
- The Patented Solution: The D’077 Patent protects the specific visual, non-functional design of the “Krane Fixture” (Compl. ¶16). The design, as shown in the patent’s figures, consists of a slim, arched arm supporting a suspended, bowl-shaped shade. A distinctive feature is the visible electrical cord that runs from the shade up through the arch and down the vertical portion of the arm, terminating in a cylindrical counterweight (D’077 Patent, FIG. 1). The complaint describes the design as drawing "inspiration from a crane, mimicking its functionality, with cords that glide through the arch with ease to raise or lower the shade" (Compl. ¶15).
- Technical Importance: The design creates a distinct aesthetic that combines industrial inspiration with minimalist forms, contributing to its recognition in the high-end interior design market (Compl. ¶¶13, 15).
Key Claims at a Glance
- The D’077 Patent contains a single claim: "The ornamental design for a lighting fixture, as shown and described" (D’077 Patent, Claim).
- The scope of this claim is defined by the solid lines in the patent's drawings (D’077 Patent, FIGS. 1-14).
III. The Accused Instrumentality
Product Identification
- The accused products are "knockoff Krane Fixtures" allegedly produced by a Chinese manufacturer and procured by Defendant HPG for installation in the Moxy Hotel in New York City (Compl. ¶¶32, 37).
Functionality and Market Context
- The complaint alleges that the accused fixtures are "cheaper Krane imitations" and "inauthentic versions" of Plaintiffs' product, intended to serve as "cheap substitutes" (Compl. ¶¶1, 32, 36).
- The complaint provides a photograph of an accused fixture installed in a Moxy Hotel guest room, which Plaintiffs allege is visually indistinguishable from their authentic product to a casual observer (Compl. p. 9; ¶53). The complaint alleges this use misleads hotel guests and the public into believing the hotel features authentic, high-end designs from Plaintiffs, thereby trading on Plaintiffs' goodwill (Compl. ¶38).
IV. Analysis of Design Similarity Allegations
The complaint does not contain a count for patent infringement. However, the state law claims for unfair competition and "palming off" are predicated on the substantial visual similarity between the patented design and the accused product. The following table breaks down the core ornamental features of the patented design and compares them to the visual evidence of the accused product provided in the complaint.
D'077 Patent Design Similarity Allegations
| Key Ornamental Feature (from D'077 Patent) | Alleged Corresponding Feature in Accused Product | Complaint Citation | Patent Citation |
|---|---|---|---|
| A single, continuous arched arm extending vertically and then curving horizontally over the light source. | The accused fixture shown installed in the hotel room features a visually identical slim, arched black arm. | ¶33; p. 9 | FIGS. 1, 2 |
| A suspended, hemispherical or bowl-shaped shade hanging from the end of the arched arm. | The accused fixture incorporates a suspended, bowl-shaped shade that appears to be of the same shape and proportion as the authentic fixture. | ¶33; p. 9 | FIGS. 1, 3 |
| A visible electrical cord running from the shade, through the arm, and down parallel to the vertical support, terminating in a cylindrical counterweight. | The provided image shows a visible cord and counterweight element consistent with the patented design and the authentic product. | p. 6; p. 9 | FIGS. 1, 2 |
| The overall visual impression of a balanced, crane-like structure. | The complaint alleges the accused product is a "knockoff" that creates a confusingly similar overall visual impression to Plaintiffs' design. The visual evidence provided, such as a photograph of the authentic Krane Fixture, supports this allegation by showing the similarity. (Compl. p. 6). | ¶¶33, 53 | FIGS. 1-14 |
Identified Points of Contention
- Scope Questions: A central question for the "palming off" claim will be whether an ordinary observer—in this case, a hotel guest or consumer—would be confused as to the source of the lighting fixture. The dispute will likely focus on the degree of similarity in the overall visual impression, rather than on minor differences.
- Technical Questions: While not a patent case, a factual question will be the extent to which Defendant used Plaintiffs' proprietary information. The complaint alleges Defendant used a physical sample, drawings, and specifications to create the accused product (Compl. ¶¶32, 34). Evidence of this direct copying, if produced, may strengthen the misappropriation claim.
V. Key Claim Terms for Construction
For a design patent, there are no "terms" to construe as in a utility patent. The analysis focuses on the claimed design as a whole, as depicted in the patent drawings.
- The "Claim": The ornamental design for a lighting fixture.
- Context and Importance: The legal test for design patent infringement, which is analogous to the "likelihood of confusion" test in unfair competition, is the "ordinary observer" test. The question 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. In this case, the court will need to assess whether the accused fixture is so similar to the D’077 patented design that it would likely cause confusion as to its source or origin. Practitioners may focus on the overall visual effect and whether any differences between the designs are sufficient to dispel this confusion in the mind of an ordinary consumer.
- Intrinsic Evidence for Interpretation: The primary evidence is the drawings of the D’077 Patent itself. The solid lines in FIGS. 1-14 define the scope of the protected design, while broken lines depict environmental structure not claimed. The visual comparison between these drawings and the accused product will be the central inquiry.
VI. Other Allegations
- Unfair Competition (Misappropriation): The complaint alleges that Defendant misappropriated Plaintiffs' labor, skill, and investment by using a sample fixture and confidential design information, obtained under the pretense of a legitimate business inquiry, to create a competing product (Compl. ¶¶43, 46-47). The claim rests on the allegation that Defendant acted in bad faith to exploit Plaintiffs' proprietary design for its own commercial benefit without compensation (Compl. ¶48).
- Unfair Competition (Palming Off / Passing Off): Plaintiffs allege that by selling and displaying fixtures that are confusingly similar to the authentic Krane Fixture, Defendant is misleading the public as to the source and origin of the products (Compl. ¶¶51-52). This alleged conduct is claimed to cause consumer confusion and divert sales and goodwill from Plaintiffs (Compl. ¶57).
- Violation of New York General Business Law § 349: This count frames the alleged conduct as a consumer-oriented deceptive practice. The complaint argues that by furnishing the Moxy Hotel with imitation fixtures, Defendant materially misleads hotel guests and the public into believing they are genuine, high-quality artistic creations, thereby damaging Plaintiffs' brand and reputation (Compl. ¶¶61-62).
VII. Analyst’s Conclusion: Key Questions for the Case
This case appears to turn less on the nuances of patent law and more on the application of New York's unfair competition doctrines to a specific set of alleged business torts. The central questions for the court are likely to be:
- A core issue will be one of bad faith misappropriation: Did the Defendant's alleged actions—soliciting design information and a physical sample for a purported project, and then using that information to source a visually similar, cheaper alternative after negotiations failed—constitute an improper misappropriation of Plaintiffs' commercial advantage and investment under New York law?
- A key evidentiary question will be one of likelihood of confusion: Is the ornamental design of the accused lighting fixture so similar to Plaintiffs' "Krane Fixture" that it is likely to confuse an ordinary consumer, such as a hotel guest, about the product's origin, quality, or affiliation with the Plaintiffs, thereby supporting the "palming off" and deceptive trade practice claims?