Amazon Sued For Design Patent Infringement

Back in December, Mint, Inc. sued Shokomoko and Amazon.com for infringing its copyright, design patent, and trade dress rights. Mint is the owner of U.S. Design Patent No. D464,532, on a "spice shaker":



Shokomoko sells hugging salt and pepper shakers through the Amazon.com Marketplace:



(You can see one of Shokomoko’s listings here.)

At first glance, Shokomoko appears to have a problem. Putting aside the substantive for a moment, though, there are some interesting procedural issues that bear mentioning as well.

For example, Mint filed the suit in the U.S. District Court for the Southern District of New York. Yet it failed to allege that Shokomoko had sold any infringing products in the district. Therefore, the Court (apparently sua sponte) ordered the parties to “submit a (compelling) letter to the Court [. . .] setting forth the reasons why venue is proper in the Southern District of New York.” When no compelling reasons were offered, the case was transferred to the Southern District of Washington, where Amazon is headquartered. (Shokomoko is based in Israel.)

Had Mint been able to allege that a "substantial part" of its sales were in the Southern District of New York, venue would have been proper. (Considering that Manhattan is served by the Southern District of New York, that shouldn’t have been hard to do.)

At any rate, my guess is that this case will settle before it goes much further, given the striking similarity between Shokomo’s product and Mint’s patented design.

Interesting Designs

Product-centric Patenting: An Approach to Protecting the “Look and Feel” of Software Products

When asked why they wish to secure intellectual property rights, inventors often provide a succinct response: they wish to protect the “look and feel” of their product. The advantages of such protection are particularly pronounced in the realm of software implemented inventions, where interface design can make or break a product. Inexperienced attorneys often find fashioning protection for the look and feel of software products to be a vexing problem. Contributing to this difficulty is the fact that attorneys are trained to draft applications directed toward a single (or set of closely related) concepts. When presented with the bundle of ideas embodied in a single software product, it can be difficult to determine where to begin.

Fortunately, a combination of utility and design patents can often be employed to efficiently weave a web of protection for the look and feel of a product. Design patents lend themselves well to protecting the “look” of software implemented inventions. As discussed in a previous Ordinary Observer post (by Matthew Grady), design patents are increasingly being utilized to protect a variety of user interface elements. More specifically, design patents can be used to protect icons and other static graphical elements. In addition, the United States Patent and Trademark Office is presently issuing design patents that cover the movement and animation of these graphical elements. With these tools in hand, user interface innovations can be cost effectively protected using design patents.

Further, under a product-centric patenting methodology, utility patents can be used to augment and complement these design patents. Utility patents are well-suited to protect the “feel” of a software product by protecting both the innovative functions performed by the software product and, in some cases, the manner in which the functions are implemented. Utility patents can be used to cover a number of processes that, for example, lower the latency within the user interface, interoperate with other software products or efficiently store data to decrease the physical footprint of the hardware executing the software product. Thus, utility patents can be used to protect commercially valuable “under the cover” aspects of software products.

While protecting the complexity and innovation present within some software products can be a daunting challenge, careful use of design and utility patents can be used to create a web of protection for the look and feel of a software product in a cost effective manner.

Update: Fashion Design Protection

As discussed here a while back, Congress has been mulling over the idea of amending Section 1301 of the copyright statute - which currently only protects vessel hull and deck designs - to include fashion designs.

Well, things are starting to look up for the fashion industry. Yesterday, Senate Bill S.3728 (also known as the Innovative Design Protection and Piracy Prevention Act), which was introduced by Sen. Schumer of New York on August 5, was passed by the Senate Judiciary Committee. The bill, with minor modifications, now moves on for consideration by the full Senate.

Here are some highlights:

• Protects appearance as a whole of an article of apparel, including its ornamentation


• Covers clothing, undergarmets, outerwear, handbags, suitcases, belts and eyeglass frames, among others


• Must be original and unique


• Employs a "substantially identical" infringement standard, similar to trademark


• 3-year term of protection (10 years for vessel hulls)


• 3 year public disclosure bar (no registration required)


• Home Sewing Exception: a person may make a single copy of a protected design for home use only


• As with all things copyright, there is an independent creation defense (using a totality of the circumstances analysis)


• Does not protect illustrations or pictures of the design, such as in advertising (or, dare I say, virtual design representations)

I know many people have been pushing for this (and some not so much), so let's hope for the best balanced outcome.

Interesting Designs

Probably inspired by too much late night advertising.



Who can't appreciate a good cup of joe?



As a parent of three anything that makes meals
more interesting ...



And last, I'm really not looking forward to winter.

Expanding Scope of Design Patent Protection

As noted on a recent Ordinary Observer post (here – by Michael Mathaisel), Apple recently made headlines over a patent infringement loss and the near simultaneous grant of a design patent covering, arguably, the same technology.

The design patent that just issued to Apple, D624,932 was an eye opener from my perspective. I had some experience with design patents being issued on icons within a user interface. My colleague wrote an article on this very topic (here – by Thomas McGinnis) referencing for example D608,366 directed to the appearance of a display screen.

The use of design patents for static computer icons appears to lead directly to the applicability of design patents to animated icons. (See M.P.E.P. §1504.01(a) Computer-Generated Icons, Sec. IV). The ability to protect the display of animated icons on a computer display screen suggests that any display or animation within a computer screen is also protectable. Apple appears to be an early adopter of such an approach, filing design patents at a brisk pace. (Some recently issued Apple Design Patents may be found here).

I recently filed a number of design patents on virtualizations of physical designs for display on a smart phone (in conjunction with design applications on the objects themselves). The iPhone, Android, and other smart phone devices have given rise to a plethora of virtualized objects that could be covered by design patent. An interesting article (here), touches upon the use of design patents to protect the virtualization of physical objects, for example in the electronic gaming space. The virtualization of designs in that setting amount to what the authors dub as “design theft” by incorporating known designs – a virtual Ford Mustang into Grand Theft Auto, for example. The authors touch upon filing separate design patent applications to cover both the physical object and the virtualized object as is would be displayed on a computer screen. The approach is described as a “non-traditional” method of hedging bets. The “virtual” design patent helps to deflect an argument that a design patent covering a physical object does not necessarily protect a virtualization of the same object.

Of course every situation is fact specific, but it would appear from a litigation perspective that eliminating a potential argument with the relatively inexpensive filing of a design application directed to the virtual design would have significant value. In addition, I expect there to be increasing numbers of design application filed on “changeable computer generated icons,” as smart phones adoption and adoption of similar devices increases. Further, with industry participants like Apple leading the way, I expect to see the boundaries defined by the “changeable computer icon” to be expanded into the virtualization and animation of almost any display shown on any computer system.

New Designs of the Week

Now on the National Register of Historic Places, the ubiquitous Welcome to Fabulous Las Vegas sign was never copyrighted by its creator, Betty Willis, and has been reproduced on everything from keychains to Nevada license plates to...slot machines (or whatever this is supposed to be)!

Hay, hay, get out of the way!

Time to make a connection.

I'm thinking this would be perfect for camping.

Who stole my cupcake!

Strange, but still cool.

Fun for all ages.