The opinion of the court was delivered by: Naomi Reice Buchwald United States District Judge
Plaintiff Telebrands Corp. ("Telebrands") commenced this action against Del Laboratories, Inc., Coty US, LLC, and Coty, Inc. (collectively, "Coty"), asserting claims for patent infringement, registered trademark infringement, federal unfair competition, copyright infringement, common law unfair competition under New York law, and statutory unfair competition under section 360-k of the New York General Business Law. In June 2010, this Court granted in part Coty's motion to dismiss, dismissing all claims except a claim for patent infringement under the Patent Act, 35 U.S.C. §§ 271, 289, and a claim for registered trademark infringement under Section 32(1) of the Lanham Act, 15 U.S.C. § 1114(1).
Presently before the Court is Coty's motion for summary judgment on the two remaining claims. In its motion, Coty contends that Telebrands has sought to protect functional features of its foot file and, as a result, those features are not subject to protection under design patent or trademark law.
For the reasons stated herein, Coty's motion for summary judgment is denied.
Telebrands manufactures and sells a foot care implement known as the Ped Egg, which is a foot file designed to remove calluses and dead skin from a user's feet.*fn1 (R. 56.1 ¶¶ 1-2.) Before introducing the Ped Egg, Telebrands sought to distribute the Microplane foot file, an oval-shaped, molded plastic foot file that was designed to remove calluses and dead skin with a metal rasp. (R. 56.1 ¶ 4.) Ultimately, Telebrands did not distribute the Microplane; instead, it designed its own ovoid-shaped product, which it named the "Ped Egg."*fn2 (R. 56.1 ¶ 5.) Telebrands introduced the Ped Egg in October 2007. (R. 56.1 ¶ 2.)
The body of the Ped Egg has three separate components: (i) a base; (ii) a cartridge with a metal file; and (iii) a top bearing the Ped Egg design mark printed in blue ink. (R. 56.1 ¶ 11.) The base and the top have curvilinear outer edges, which meet to form a curved line when the product is assembled. (R. 56.1 ¶ 11.) The top of the Ped Egg serves as the handle when the foot file is in use. (R. 56.1 ¶ 11.) Additionally, when assembled, the Ped Egg is a symmetrical, elliptical ovoid shape.
(R. 56.1 ¶ 6.) Both the tapered shape of a chicken egg and the symmetrical ellipsoid are basic geometric forms. (R. 56.1 ¶ 7.)
The plastic body of the Ped Egg is manufactured in Hong Kong using a process known as thermoset plastic injection molding.*fn3 (R. 56.1 ¶¶ 12, 14.) The molded plastic body of the Ped Egg has been available for purchase in various colors, including white, black, purple, pink, and blue. (R. 56.1 ¶ 8.)
B. The Pedi-Perfect Foot Care Set
In November 2008, Coty introduced the Sally Hansen Pedi-Perfect foot care set. The Pedi-Perfect set includes a white plastic foot file, toenail clippers, and pink, foot-shaped toe spacers. (R. 56.1 ¶ 16.) The foot file consists of three components: (i) a cartridge with a metal file; (ii) a cartridge with a pink ceramic buffer; and (iii) a top bearing the Sally Hansen house mark molded in plastic. (R. 56.1 ¶ 17.) The top of the Pedi-Perfect has two molded finger indentions and serves as the handle of the foot file when the file is in use. (R. 56.1 ¶¶ 17, 19.) The buffer cartridge of the Pedi-Perfect foot file serves as the bottom of the foot file when it is assembled for storage. (R. 56.1 ¶ 17.) The buffer and the cartridges have flat outer edges. (R. 56.1 ¶ 19.)
Like the Ped Egg, the plastic body of the Pedi-Perfect foot file is manufactured by thermoset injection molding. (R. 56.1 ¶ 21.) The molded plastic body of the Pedi-Perfect is available for purchase in white. (R. 56.1 ¶¶ 16, 20.)
C. Telebrands' Rights in the Ped Egg
Telebrands is the exclusive licensee of International Edge, an entity that owns the intellectual property rights in the Ped Egg. (R. 56.1 ¶ 23.) For the purpose of this motion, Coty does not dispute that Telebrands stands in the shoes of International Edge. (R. 56.1 ¶ 23.)
International Edge possesses patent and trademark rights in the Ped Egg. Specifically, International Edge obtained U.S. Trademark Reg. No. 3,633,750 for the configuration of the Ped Egg on June 9, 2009. (R. 56.1 ¶ 24; DX-42 ("The mark consists of the configuration of a foot file implement, specifically, the entire implement.").) The registered design is a drawing of the assembled handle and base of the Ped Egg. (R. 56.1 ¶ 24.) On July 21, 2009, International Edge obtained Design Patent No. D596,802 for "[t]he ornamental design for a foot microfile."
(R. 56.1 ¶ 25; DX-43.) Cooper & Dunham LLP ("Cooper & Dunham"), counsel for Telebrands in this action, represented International Edge in connection with the both the trademark and design patent applications. (R. 56.1 ¶¶ 24, 25.)
On March 4, 2008, Cooper & Dunham filed a utility patent application for the claimed inventions embodied in the Ped Egg ("Application"). The Application was filed on behalf of A.J. Khubani ("Khubani"), the President of Telebrands, Jun Yang, an employee of Troika, and their assignee, International Edge. (R. 56.1 ¶ 26.) The Application discloses that the Ped Egg configuration has "an ergonomic design to increase comfort and prevent fatigue in the user's hand while the device is being used." (R. 56.1 ¶ 27.) Additionally, the Application discloses that:
[i]n one embodiment, the handle 22 has an ergonomic shape such that the skin removing device 10 can be comfortably held by a user while removing skin with file 18. In another embodiment, the skin removing device 10 is designed such that the handle 22 and the cover 30 have an ergonomic shape when connected so that the skin removing device 10 can be comfortably held by a user while removing skin with abrasive surface 34. One such shape is the egg or generally ovoid shape shown in FIGs. 1-7. (R. 56.1 ¶ 27.)
The U.S. Patent and Trademark Office ("PTO") issued a "Non- Final Rejection" of the Application on November 25, 2009. In that correspondence, the PTO rejected all of the claims in the Application on multiple grounds, including on obviousness grounds. (R. 56.1 ¶ 29.)
On February 1, 2010, Cooper & Dunham sent a communication to the PTO concerning the pending Application. The correspondence stated that: "[a]pplicants  note that one key aspect of the subject invention is that the skin removing device has an 'ergonomic shape' when the covers are connected so that the device can be 'comfortably held by a user' . . ." (R. 56.1 ¶ 28.) However, on March 17, 2010, the PTO issued a "Final Rejection," again concluding that all of the claims in the Application should be rejected on obviousness grounds. (R. 56.1 ¶ 29.)
Following the rejection of the Application, Khubani, the President of Telebrands, submitted a declaration to the PTO to demonstrate that the Ped Egg was a great commercial success.
(R. 56.1 ¶ 30.) Specifically, Khubani declared under penalty of perjury that one of the "key features [that is]  a significant contributor to the success of the Ped Egg product" is "having an ergonomic or egg shape." (R. 56.1 ¶ 31; DX-49.) In his declaration, Khubani contends that because the Ped Egg has enjoyed great commercial success, a utility patent should issue notwithstanding the PTO's obviousness rejection. (R. 56.1 ¶ 30.)
In August 2010, Cooper & Dunham submitted an amendment to the Application on behalf of its client, International Edge. That amendment included a request that all references to "ergonomics" be stricken from the Application. (R. 56.1 ¶ 32; DX-50.) Thereafter, Cooper & Dunham submitted an Information Disclosure Statement, which disclosed potential prior art to the PTO. Among the disclosed references are: various pumice stones, Silly ...