IP Law Daily, PATENT—W.D. Wash.: Judgment on pleadings granted in chandelier design dispute, (Dec 18, 2024)

By Kevin M. Finson

Claims for design patent infringement based on photographs of a replica work appearing in advertising did not amount to “use” or an “offer to sell” because there was no price term or communication that a consumer could reasonably interpret as an offer which he or she need merely assent to in order to create a binding agreement.

A designer of chandeliers failed to state claims for patent infringement and unfair competition against a company that copied its work before the relevant design patents issued, the U.S. District Court in Seattle has held. The designer failed to allege post-issuance infringement because it was not infringing for the competitor to include photographs of the chandelier in its advertising without an offer to sell (RBW Studio, LLC v. Rushing Company, LLC, No. 2:24-cv-00763-JHC (W.D. Wash. Dec. 17, 2024)).

RBW Studio, LLC (RBW) was a designer and manufacturer of unique light fixtures. On March 9, 2017, RBW applied for a design patent for its Cinema chandelier, a triple-tiered light fixture with spherical bulbs. On June 18, 2019, the USPTO issued U.S. Patent No. D851,806 (the ’806 patent) for the chandelier and on November 7, 2023 issued U.S. Patent No. D1,004,180 (the ’180 patent) for the spherical bulbs. Late in 2017, while the patent application was pending, RBW provided a quote for the Cinema chandelier to The Rushing Company, LLC (Rushing) and other defendants, all of whom were engaged in the redevelopment of a hotel. Prior to the patents issuing, Rushing and the other defendants had contractors design and install a cheaper replica. Rushing additionally used photographs of the hotel, including the replica light fixture, in advertising its architectural and interior design work. RBW brought suit against Rushing for patent infringement under federal law, and for unfair competition under Washington’s Consumer Protection Act (WCPA). Rushing moved for judgment on the pleadings.

Patent infringement. It was undisputed that the sale of the replica light fixture itself could not be an infringing act because it took place prior to the issuance of either patent. RBW argued instead that Rushing infringed its design patents by using photographs of the replica light fixture to promote its architectural and interior design services. The court held that this was not a sufficient allegation of “use” or of an “offer to sell” under the patent statute. Displaying a product alone did not amount to use in the patent context, and it was not alleged that Rushing offered a price or otherwise made an offer to sell the replica chandelier.

Washington Consumer Protection Act. Rushing argued that the particular application of the WCPA for an unfair competition claim in this case was preempted by federal patent law. The court found that RBW’s allegations of “bad faith” and “misappropriation” were conclusory, and that the state law claim was essentially trying to create patent-like protection for the Cinema chandelier outside of the protection created by federal patent law. Absent a plausibly-alleged allegation of an independent unfair or deceptive practice, this claim was preempted.

The court granted Rushing’s motion for judgment on the pleadings and dismissed the case without prejudice and with leave to amend.

The Case is No. 2:24-cv-00763-JHC.

Judge: Chun, J.

Attorneys: Perry Saidman (Saidman Design Law Group LLC) for RBW Studio LLC. Charles J. Meyer (Woodard Emhardt Henry Reeves & Wagner LLP) for The Rushing Co. LLC.

Companies: RBW Studio LLC; The Rushing Co. LLC

Cases: Patent WashingtonNews