You can keep your curtains: Judge Schofield denies preliminary injunction | Patterson Belknap Webb & Tyler LLP

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On May 26, 2021, United States District Judge Lorna G. Schofield (SDNY) refuse a preliminary injunction motion from the plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC and Zahner Design Group, Ltd. (collectively, the “Applicants”). The plaintiffs allege that the defendant Maytex Mills, Inc. (“the defendant”) infringed their design patent and trade dress by selling a hookless shower curtain.

Zahner Design Group, Ltd. (“Zahner”) is the owner of U.S. Design Patent No. 668,091 (“the D091 Patent”), which claims a “shower curtain with reinforcing rings containing a slit”. The slot allows the curtain to be installed without having to remove the curtain rods already installed. Zahner also has two utility patents which cover a method of installing shower curtains having reinforcing rings containing a slot on a rod where the slots allow installation without removing an installed curtain rod.

In July 2020, the defendant began selling shower curtains under the label “Glacier Bay” (“the accused product”). In March 2021, the plaintiffs filed a complaint alleging, among other things, that the defendant’s Glacier Bay curtains infringed the D091 patent. The plaintiffs sought a preliminary injunction based on the alleged infringement of the D091 patent.

A party seeking a preliminary injunction must establish each of the following four factors: 1) a likelihood of success on the merits; 2) a likelihood of irreparable harm in the absence of redress; 3) the balance of the shares tilts in its favor; and 4) that an injunction is in the public interest. To establish a probability of success in a design patent infringement, a patentee must show that, as seen by an ordinary observer, the patented and accused designs are “substantially the same”. Both models are shown below, with the patent numbers on the left and the accused product on the right:

The Court concluded that the defendant raised “a substantial question as to whether it is more likely than not that an ordinary observer, applying the level of attention normally accorded to a purchase, would conclude that the design of the D091 patent and the products charged are much the same. ” Although the Court recognized that there were high-level similarities to “shower curtains with built-in rings and slits”, it was the extent of the similarities. The Court noted that “the front of the defendant’s rings have a rounded beveled edge which differs from the flat rings of Zahner’s D091 patent.” The backs of the two “designs also differ[ed] significantly, “including the hooks on the back of the rings of the accused products.” The differences between the two designs are significant and obvious for all to see. “

The Court also found that the plaintiffs were unlikely to succeed in their trade dress claims because “the key characteristics of the claimed trade dress are likely dictated by the functional and utilitarian aspects of the plaintiffs’ products and are not are therefore not eligible for protection under the Trademark Law. “The Court noted the teachings of the two utility patents as extolling the functional and utilitarian aspects of using reinforcing rings containing slits. According to the Court,”[t]he [utility] the patents themselves explain how these features are driven by their functionality. “

The case is Sure Fit Home Products, LLC v Maytex Mills, Inc., n ° 21 civ. 2169 (LGS) (SDNY May 26, 2021).

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