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ROSCO, INC. v. MIRROR LITE CO.
January 31, 2001
ROSCO, INC., PLAINTIFF,
MIRROR LITE COMPANY, DEFENDANT.
The opinion of the court was delivered by: Sifton, Senior District Judge.
MEMORANDUM DECISION AND ORDER
This is an action brought by plaintiff, Rosco, Inc. ("Rosco"),
against defendant Mirror Lite Company ("Mirror Lite"), asserting
claims of design patent infringement, trade dress infringement,
false designation of origin, false description, tortious
interference with business relations, and trademark infringement
in violation of 15 U.S.C. § 1125(a), as well as a claim of patent
invalidity. In addition to damages, plaintiff seeks declaratory
and injunctive relief pursuant to 28 U.S.C. § 2201 and 2202.
Mirror Lite has asserted a counterclaim of patent infringement in
violation of 15 U.S.C. § 1125(a). The matter was tried before the
undersigned sitting without a jury on March 6 through 10, 2000.
For the reasons set forth below, I conclude that Rosco is not
entitled to judgment on its claims of design patent infringement,
trade dress infringement, false designation of origin, false
description, tortious interference with business relations, and
trademark infringement. The Mirror Lite patent at issue in this
lawsuit is invalid and Mirror Lite is not entitled to judgment on
its claim of patent infringement.
What follows sets forth the Court's findings of fact and
conclusions of law on which that decision is based as required by
Rule 52(a) of the Federal Rules of Civil Procedure.
Plaintiff Rosco is a corporation located in Jamaica, New York
that manufactures and sells a variety of mirrors and sunvisors
for, among other motor vehicles, school buses. Solomon Englander
purchased Rosco in 1961. Currently, the company is owned jointly
by Benjamin Englander, Rosco's vice president of engineering,
Daniel Englander, Rosco's vice president of finance, Gertrude
Englander, and Solomon Englander, Rosco's president. (Tr. at 5,
479, Pl.'s Ex. 47.)*fn1 Defendant Mirror Lite is a corporation
located in Rockwood, Michigan, that also manufactures various
types of mirrors for school buses, among other motor vehicles.
William Schmidt is the owner and president of Mirror Lite. (Tr.
at 376, Def.'s Exs. D-P.)
Following Rosco's decision to stop producing the "Tiger Eye"
cross-view mirror in the late fall of 1991, Solomon Englander
began to design a new cross-view mirror. After Solomon Englander
came up with a design for an oval cross-view mirror, he worked
with Benjamin Englander to produce a three-dimensional,
computer-generated image of the mirror as a basis for producing a
prototype. According to the Englanders, the unique aspect of the
new design was its oval shape. On December 23, 1991, Rosco sent a
fax of the computer-generated image of the oval cross-view mirror
to Mir-Acryl, a company that manufactures acrylic mirror
products, so as to obtain a lens for a prototype mirror. Rosco
thereafter corresponded with Mir-Acryl several times in January
and February 1992 on the same subject.
Rosco sought a design patent for its newly designed cross-view
mirror on April 14, 1992, and began manufacturing the new mirrors
under the name "Eagle Eye" in May 1992. The new cross-view mirror
was manufactured with two different mounting systems: product
number 2360, consisting of the oval cross-view mirror with a
tunnel mounting structure, and product number 2365, consisting of
the oval cross-view mirror with a ball-stud mounting structure.
The tunnel mounting structure uses a long, cylindrical opening on
the mount that receives the tubular arm on which the mirror
rests. The ball-stud, or ball-swivel, mounting structure consists
of a ball joint with a threading stud at its end that receives
the mirror mounting.
In early 1993, after embarking on an aggressive marketing and
sales campaign, Rosco decided to seek to trademark the name
"Eagle Eye" for its oval cross-view mirror. Rosco was, however,
unable to obtain such a trademark because a Taiwanese company was
already selling an unspecified automotive product under the
"Eagle Eye" trademark. On December 22, 1993, Rosco received a
cease and desist letter from Mirror Lite's attorneys, stating
that Mirror Lite had a registered trademark for a school bus
mirror it sold under the brand name "Eagle" and requesting that
Rosco cease the use of the product name "Eagle Eye" in
conjunction with its new school bus mirror. As a result of the
difficulty it experienced in registering the name "Eagle Eye,"
Rosco changed the name of its cross-view mirror to "Hawk Eye."
On April 26, 1994, Rosco obtained United States Design Patent
No. 346,357 ("'357 Patent") for the Hawk Eye mirror. (Pl.'s Ex.
1.) The '357 Patent protects the Hawk Eye's ornamental design as
described in the patent drawings. The patent drawings and
physical exhibits of the mirror show a highly convex,
curved-surface, three-dimensional, oval mirror with a black,
flat, metal backing. Attached to the flat backing are three
support ridges and a bracket mount for attaching the mirror to a
support arm, representing the tunnel mounting system. Ten visible
screws hold the bracket to the flat backing. The support ridges
on the back of the mirror provide structural rigidity to the
backing. Plaintiff's Trial Exhibit 111 represents the "Hawk Eye"
mirror, with the same dimensions as Trial Exhibit 110 but
features the ball-stud mounting system.
Theresa Martin, the plant manager at Mirror Lite, testified at
trial that in November 1991 she had been asked by Frank
Hutchinson, an owner of Mirror Lite, to physically assemble a
prototype model of an oval elliptical mirror in November 1991.
(Tr. at 376, 523-24.) Karen Botkin, Mirror Lite's vice president,
testified that Mirror Lite not only designed but assembled and
exhibited the prototype of the oval elliptical mirror at a trade
show in November 1991 in Nashville, Tennessee before plaintiff
had obtained its prototype. Mirror Lite's prototype was not,
however, produced at trial because Botkin testified that, at the
end of the trade show, she gave the prototype away. Botkin also
testified that Mirror Lite produced six or seven prototypes of an
oval elliptical mirror and displayed at least one of them at
another trade show sometime in early 1992. No explanation was
forthcoming at trial concerning what happened to the "six or
seven" Mirror Lite prototypes that were not given away.
Schmidt testified that sometime in August 1992 he saw the
advertisement for Rosco's "Eagle Eye" mirror in the
August/September issue of a trade publication covering the school
bus industry. Schmidt testified that, appearance to the contrary,
he took the Rosco mirror to be circular in shape, not oval. Other
than seeing the Rosco "Eagle Eye" ad in August 1992, Schmidt
testified that he was unaware of the Rosco mirror during any
point in the development and production of Mirror Lite's oval
cross-view mirror. On September 9, 1992, Mirror Lite filed for a
utility patent for its oval cross-view mirror.
The United States Patent Office issued United States Patent No.
5,589,984 ("'984 Patent") on December 31, 1996. (Pl.'s Ex. 2.)
The patent drawings and physical exhibits show an oval elliptical
mirror with a generally convex reflective surface secured by a
rubber gasket. The mirror features a black rubber gasket
connected by a "splice joint," a manner of connecting two ends of
the gasket that results in a slight extrusion on the gasket. The
mirror has a flat, black, plastic backing that features two oval
protrusions and a mounting system similar to the Rosco ball-stud
mounting system. Schmidt testified that he added the two
protrusions as a way of distinguishing the Mirror Lite mirror.
After obtaining the '984 Patent, Mirror Lite began selling the
oval mirror to school bus manufacturers. To date, Mirror Lite has
sold only 400 units of its oval cross-view mirror.
Sometime in November 1996, Benjamin Englander first observed
the Mirror Lite oval cross-view mirror at a trade show in
Nashville, Tennessee. On November 25, 1996, Mirror Lite issued a
brochure entitled "Mirror Lite Co. 1996 Interchange List"
("Interchange"), which described patents generally and explained
that Mirror Lite holds thirty patents. (Pl.'s Ex. 52.) The
Interchange stated that "[u]nfortunately Mirror Lite will be
forced to vigorously enforce their patents in the coming months"
because it "will not allow anyone to manufacture, sell, or buy a
copy of one of [its] products." (Id.) The remainder of the
Interchange is a two-column list of products, one labeled
"Genuine Mirror Lite Products" and the other column labeled
"Generic" in a circle with a line through it. (Id.) The Generic
column includes Rosco's Hawk Eye mirrors, listed under Rosco
product numbers 2360 and 2365, respectively. (Id.) The
corresponding "Genuine Mirror Lite" mirrors are listed under
product numbers 51-2360 and 51-2365, respectively. (Id.)
Procedural History of the Lawsuit
On November 19, 1996, Rosco filed a complaint alleging five
counts of patent and trade dress infringement and violations of
related laws. Rosco amended the complaint on December 27, 1996.
Each count of the amended complaint is described below.
Count One alleges that defendant began manufacturing and
selling a duplicate of Rosco's Hawk Eye mirror in violation of
Rosco's '357 Patent as protected by the Patent Act.*fn3
Count Two of the amended complaint alleges that Mirror Lite
duplicated Rosco's distinctive trade dress and non-functional
design of its Hawk Eye mirrors in violation of
15 U.S.C. § 1125(a).
Count Three alleges that Rosco adopted a distinctive product
identification scheme for its Hawk Eye mirrors by giving its
products a numerical designation of 2360 and 2365. The defendant,
in adopting product identification numbers of 51-2360 and 51-2365
for its own mirrors, constituted a false designation of origin or
false description in violation of 15 U.S.C. § 1125(a).
Count Four of the amended complaint alleges that Mirror Lite
obtained a prototype of Rosco's Hawk Eye mirror and prepared a
patent application based upon the specifications of the Rosco
mirror. Once Mirror Lite had filed the fraudulent patent
application, it informed potential customers that Rosco's mirrors
infringed upon the Mirror Lite patent and that Mirror Lite would
seek to enjoin Rosco from selling the mirrors. Rosco alleges that
such conduct constitutes tortious interference with business
relationships in violation of 15 U.S.C. § 1125(a) and New York
Count Five alleges that Mirror Lite disseminated a news
advisory and bulletins which falsely asserted that only the
installation of an identical replacement mirror on a school bus
would comply with federal safety standards. Rosco alleges that
Mirror Lite's actions constitute misrepresentation in violation
of 15 U.S.C. § 1125(a) and New York law.
On February 13, 1997, I denied defendant's motion to dismiss
the complaint for lack of personal jurisdiction and ...