Telebrands Corp v. Del Laboratories, Inc. -

Decision Date: September 8, 2011 -

Court: S.D. New York -

Patents: D596,802 -

Holding: Coty’s motion for summary judgment of invalidity denied -

Opinion: Plaintiff Telebrands Corp sued Del Laboratories, Inc., Coty US, LLC, and Coty, Inc. for infringement of U.S. Design Patent D596,802, entitled Foot Micro File. Telebrands manufactures and sells the Ped Egg, an oval-shaped foot file used to remove dry skin. Coty sells a three-piece pedicure set called the Sally Hansen Pedi-Perfect, which includes an oval-shaped foot file. The court denied Coty’s request for summary judgment of invalidity based on functionality.

In order to determine whether Coty was entitled to summary judgment, the Court first needed to determine whether there was a question of “material fact that the claimed design is functional.” To do this, the court relied on the Morton Norwich factors, which are “(1) the existence of a utility patent disclosing the utilitarian advantages of the design; (2) advertising materials in which the originator of the design touts the design’s utilitarian advantages; (3) the availability to competitors of functionally equivalent designs; and (4) facts indicating that the design results in a comparatively simple or cheap method of manufacturing the product.”