Thursday, October 1, 2015

In Hunter's Edge v. Primos, The Ordinary Observer is Clearly No Turkey...

Perhaps we should have waited until Thanksgiving to share this case, but some things just can't wait. On Tuesday, Judge Myron Thompson of the Middle District of Alabama granted Primos' motion for summary judgment of no infringement in the case of Hunter's Edge v. Primos.  The case represents strong precedent that two-dimensional design patents cannot be infringed by three-dimensional articles of manufacture.  However, the case may be just as interesting for the issues that were left undecided, such as whether Hunter's Edge's design patent represents an unpatentable "design of nature."  You be the judge, after the jump.  

This case comes to us from the Middle District of Alabama, where few things are as important (or apparently as contentious) as a turkey shoot.  In this case, Hunter's Edge was asserting its U.S. Design Patent No. 560,745 (pictured above) directed to a "Turkey Feather and Head Fan Decoy" against Primos' "Killer B" turkey hunting decoy (above, at left).  

Early in the case, Primos moved for summary judgment on three grounds:
  1. “the patents are invalid because they do not include a new, original design, but only photographic reproductions of actual turkey tail feather fans already existing in nature and widely known in the prior art”
  2. “the asserted patents are invalid as a matter of law because they are either anticipated or would have been obvious to one of ordinary skill in designing turkey decoys” and
  3. Defendant’ products do not infringe Plaintiff’s design patents because Defendant’s products “are lifelike full sized, three-dimensional turkey decoys” which no ordinary observer would purchase thinking it to be Plaintiff’s patented design. 
Because the Court was persuaded that the decoys were too dissimilar for the case to proceed to a jury trial, the Court only considered non-infringement.  In general, the Court found that infringement here was not possible, at least because the asserted design patents are two-dimensional, whereas the accused design was three-dimensional:
Upon viewing the pictorial depictions of Plaintiff’s claimed designs and Defendant’s accused products, the undersigned is of the conviction that no reasonable fact-finder could find that any ordinary observer could be induced to purchase one of the accused products thinking it to be Plaintiff’s claimed design. Plaintiff’s claimed designs are flat, two-dimensional photographic reproductions of a turkey’s tail feather fan both with and without a turkey head superimposed over the fan. Defendant’s accused products are lifelike three-dimensional model decoys featuring molded plastic bodies to which a component tail feather fan is attached. Simply put, no ordinary observer—that is, a turkey hunter intending to purchase a turkey decoy—would confuse the accused products with Plaintiff’s designs. 
In terms of infringement, this case seems rather straightforward, and it seems clear that, unless the "ordinary observer" in this case was determined to be an actual turkey, nobody would fail to distinguish between this claimed design and the accused product. 

However, the more interesting issue here appears to be whether Hunter's Edge's design patents are valid at all.  For example, the design patents appear to claim photographs of actual turkeys cutout and applied to a fan structure.  As Primos argued, this likely implicates the "designs of nature" exception to design patent protection, which we have posted about before.  Here, because the claimed design was created by evolution, there does not appear to be any inventive contribution to the claimed design, other than sticking it onto an unclaimed fan:

The issue of naturally occurring designs is even more relevant here, given the Court's claim construction, which interpreted the design as being naturally occurring:
The ‘745 patent should be construed as designs comprising a semi-circular shaped photographic reproduction of a natural turkey tail feather fan and turkey’s head.  (emphasis in original). 
Kuddos to Primos for picking up on this often-overlooked and misunderstood doctrine in design patent law.  

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