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You Can Keep Your Curtains: Judge Schofield Denies Preliminary Injunction

On May 26, 2021, United States District Judge Lorna G. Schofield (S.D.N.Y.) denied a preliminary injunction request from Plaintiffs Sure Fit Home Products, LLC, SF Home Décor, LLC, and Zahner Design Group, Ltd. (collectively, "Plaintiffs"). Plaintiffs allege that Defendant Maytex Mills, Inc. ("Defendant") infringes their design patent and trade dress by selling a hookless shower curtain.

Zahner Design Group, Ltd. ("Zahner") is the owner of U.S. Design Patent No. 668,091 ("the D091 patent"), which claims a "shower curtain with reinforcing rings containing a slit." The slit allows the curtain to be installed without having to remove already installed curtain rods. Zahner also owns two utility patents that cover a method of installing shower curtains having reinforcing rings containing a slit on a rod where the slits allow for installation without removing an installed curtain rod.

In July 2020, Defendant began selling shower curtains under the label "Glacier Bay" ("the Accused Product"). In March 2021, Plaintiffs filed suit alleging, among other things, that Defendant's Glacier Bay curtains infringed the D091 patent. Plaintiffs sought a preliminary injunction based on the alleged infringement of the D091 patent.

A party seeking a preliminary injunction must establish each of four factors: 1) a likelihood of success on the merits; 2) a likelihood of irreparable harm in the absence of relief; 3) the balance of equities tips in his favor; and 4) that an injunction is in the public interest.  To establish a likelihood of success for infringement of a design patent, a patentee mush show that when viewed by an ordinary observer, the patented and accused designs are “substantially the same.”  The two designs are shown below, with the patent figures on the left and the Accused Product on the right:

The Court found that Defendant has raised "a substantial question as to whether it is more likely than not that an ordinary observer, applying the level of attention normally given to a purchase, would conclude that the design of the D091 patent and the Accused Products are substantially the same." While the Court acknowledged there were high-level similarities with "shower curtains containing embedded rings and slits," that was the extent of the similarities. The Court noted that "the front of Defendant's rings has a rounded beveled edge that differs from the flat rings in Zahner’s D091 patent." The back of the two designs "also differ[ed] significantly," including the hooks at the back of the rings of the Accused Products. "The differences between the two designs are significant and obvious upon plain view."

The Court also found that Plaintiffs were not likely to succeed on their trade dress claims because "the key features of the Asserted Trade Dress are likely dictated by functional, utilitarian aspects of Plaintiffs' products, and are thus ineligible for protection under the trademark statute." The Court pointed to the teachings of the two utility patents as touting the functional and utilitarian aspects of using reinforcing rings containing slits.  According to the Court, “[t]he [utility] patents themselves explain how these features are driven by their functionality."

The case is Sure Fit Home Products, LLC v. Maytex Mills, Inc., No. 21 civ. 2169 (LGS) (S.D.N.Y. May 26, 2021).