On February 19, 2016, District Judge Paul A. Crotty granted defendant Attilio Giusti Leombruni S.P.A.’s (“AGL’s”) motion to dismiss the patent infringement claim of plaintiff Lori Silverman and her company Lsil. Col. (“Plaintiffs”).  Plaintiffs had alleged that two models of AGL shoes, the “Double Sole Oxford” and the “Lace Up Oxford Flats,” infringed U.S. Design Patent No. D740,005 (“the ‘005 Patent”) for the shoes’ “camouflage design”:

Patented Design:

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Accused Product:

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The Court disagreed, holding that the accused products are “plainly dissimilar” from the design patent for three reasons.

First, the accused designs are on different types of shoes – in the case of the patented design, the design appears on a woman’s high-heeled dress shoe, while in the case of the accused product, the design appears on women’s oxford shoes.  While the patent claims only the design on the sole of the shoe (as indicated by the solid lines), the Court noted that the claim could not be viewed in isolation from its “environment,” which included the dotted lines of a high-heeled shoe.   The Court noted that the different shoe types have an effect on how the design is viewed: in the case of a high heeled shoe, the design while worn is generally visible from the rear; in the case of an oxford shoe, the design while worn is generally visible only from a side view.

Second, unlike the patented design, which has a camouflage pattern covering the middle of the shoe, the accused products have camouflage patterns covering the whole shoe.  As the Court noted, “[t]he distinction between patterns covering only the middle, visible portion of the sole of a woman’s high-heeled shoe has significance in the woman’s luxury shoe industry” (citingChristian Louboutin S.A. v. Yves Saint Laurent Am. Holdings, Inc., 696 F.3d 206, 227 (2d Cir. 2012) (holding that the color red on only the middle, visible portion of the soles of Louboutin high-heeled shoes is a “distinctive symbol that qualifies for trademark protection.”)).

Third, the actual camouflage design pattern is different between the patented design and the accused products.  Remarking that there are ten distinct camouflage patterns used by the U.S. military, the Judge stated that “[t]he patented camouflage uses curvy areas of various shapes and sizes, whereas the accused camouflage design uses smaller polygons with generally straight edges and hard corners.”

Considering these differences as a whole, the Court held that the patented and accused designs are plainly dissimilar and granted the defendant’s motion to dismiss the patent infringement count of the complaint.

Case: Silverman, et al. v. Attilio Giusti Leombruni S.P.A., et al., No. 15-CV-2260 (PAC), 2016 BL 49089 (S.D.N.Y. Feb. 19, 2016). The patent in suit is U.S. Design Patent No. D740,005.