District Judge Katherine Forrest granted plaintiff High Point and third party defendants’ motions for summary judgment of invalidity due to anticipation and non-infringement of U.S. Design Patent D598,183 S (“the ’183 patent”). The court also granted High Point and third party defendants’ motion to dismiss a trade dress claim, and denied defendant BDI’s motion for leave to amend its trade dress claim. The ’183 patent is a design patent for a fuzzy slipper. High Point, which sells a fuzzy slipper known as the “Fuzzy Babba,” sued BDI seeking declaratory judgment that the ’183 patent is invalid and not infringed by the Fuzzy Babba. BDI counterclaimed for infringement and protectable trade dress.

In determining that the prior art anticipated the ’183 patent, the court applied the “ordinary observer” test: “To show infringement under the proper test, an ordinary observer, familiar with the prior art designs, would be deceived into believing that the accused product is the same as the patented design.” The court explained that “[t]he test focuses on the overall design; minor variations are insufficient to preclude a finding of anticipation.” The court found that two prior art slippers anticipated the ’183 patent, noting that BDI obtained the ’183 patent “for reasons the Court frankly cannot fathom,” since “[t]he slipper design appears to be like that of many slippers which have been commercially available for years.”

The court also found that High Point’s Fuzzy Babba slipper did not infringe the ’183 patent, again applying the ordinary observer test. Comparing the Fuzzy Babba slipper to the ’183 patent, the court found that “[t]he two convey significantly different visual effects” such that “[a] consumer would not confuse the two.” “The Fuzzy Babba conveys the visual effect of an entirely soft and malleable body with an indistinguishable sole; it is soft and malleable all around,” while “the visual effect of the ’183 Patent is of a formed body and sole with some solidity; and a body distinct from the sole.”

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The court then granted High Point and third party defendants’ motion to dismiss BDI’s protectable trade dress infringement claim, and denied BDI’s motion for leave to amend that claim. The court noted that BDI failed to adequately plead trade dress infringement under Second Circuit precedent that required BDI to (1) offer a precise expression of the scope and character of the trade dress; (2) allege that the claimed trade dress was non-functional; (3) allege that the claimed trade dress has secondary meaning; and (4) allege that there is a likelihood of confusion between High Point’s Fuzzy Babba and BDI’s SNOOZIES slippers. The court denied BDI’s motion to amend its trade dress claim because “BDI was on explicit notice of an asserted deficiency of its trade dress claim,” yet failed to address the issue within the time allowed by a case management and scheduling order.

Case: High Point Design, LLC v. Buyer’s Direct Inc., No. 11 Civ. 4530 (KBF), 2014 BL 82695 (S.D.N.Y. Mar. 26, 2014)