Design Infringement Defense in New York Case

The alleged design infringement centered on several smartphone case models sold over the previous year. 

Although the products were supplied by an independent manufacturer, New York courts can still impose liability on sellers who distribute infringing goods, making early intervention critical.
 

We reviewed invoices, product catalogs, design specifications, and the plaintiff’s registration documents to identify whether substantial similarity existed. 

Design infringement requires a showing that an ordinary observer would find the accused product substantially similar in overall visual impression—not merely sharing isolated functional elements. 

Our investigation confirmed that most variations were significantly distinct.

At the outset, the plaintiff demanded a broad injunction covering nearly all product lines, alleging that the registered design applied to multiple phone models.

They also sought destruction of inventory and extensive damages.
 

We immediately assessed our client’s potential exposure, including risks under federal design protection doctrine and applicable New York unfair competition principles. 

This early analysis helped shape a proactive defense and prevent the plaintiff from setting the narrative on design infringement.

Design infringement requires careful evaluation of the dominant visual features that define a registered design. 

Under prevailing legal standards, functional or non-creative elements fall outside the protected scope.
 

Our analysis showed that many of the plaintiff’s asserted elements(camera hole placement, functional curves, button openings, and structural reinforcements) served purely functional purposes. 

Because design infringement cannot be based on functional elements, we argued that only the ornamental, non-functional portions were relevant.

By applying this framework, we demonstrated that only a small subset of our client’s products shared any resemblance to the plaintiff’s protected features.
 

We retained design experts to compare the accused products with the registered design using recognized industry methodology. 

This included side-by-side comparisons, proportional analysis, and evaluation of overall aesthetic impressions.

The findings established clear visual differences in the majority of the designs. 

New York courts emphasize overall visual impression, not isolated details, when evaluating design infringement. 

Our expert testimony significantly weakened the plaintiff’s claims and supported narrowing the case to only a limited number of product models.

We performed a full audit of invoices, sales reports, and tax filings to determine the actual period during which the accused products were sold. 

This analysis revealed that sales lasted approximately three months, not 11 months

Because damages in design infringement cases must be based on actual, proven sales, we argued that the plaintiff’s claim was speculative and unsupported.

An additional weakness emerged: the plaintiff was not the sole rights holder of the registered design. 

As a co-owner, the plaintiff could seek damages only for their pro-rata share, not the full amount demanded.
 

By raising this issue under applicable design rights and ownership rules, we further reduced the potential liability owed by our client.

Ultimately, the court awarded damages representing only about 3% of what the plaintiff originally sought.

This outcome spared the client from catastrophic financial harm and preserved the client’s ability to continue selling key product lines without disruption. 

The ruling underscores the importance of challenging overbroad claims in design infringement cases and relying on precise legal and technical analysis.