On March 20, 2008, performance eyewear maker Oakley, Inc. brought a design patent infringement suit in the Central District of California against movie studio Twentieth Century Fox Film Corp., comic book publisher Marvel Characters Inc., and United Kingdom publisher RDP Ltd. The claim alleges that defendants, without a license, sold knock-offs of Oakley’s “Penny”® sunglasses in a Fantastic 4: Rise of the Silver Surfer promotional gift set sold in Costco and other retail outlets. The trade dress suit, packaged as a design patent infringement suit, focuses on defendants’ alleged copying of the design of Oakley’s U.S. Design Patent No. D470,166, approved in February 2003 and claiming the invention “eyeglass components,” which the “Penny”® sunglasses embody. One of the main characters in the Fantastic 4 movie wears “Penny”® sunglasses, although it is unclear whether they are genuine Oakley sunglasses or a copy. The disputed gift set apparently includes two DVDs, a Fantastic 4 t-shirt, and a copy of the sunglasses featured in the movie.

Oakley alleges that defendants had notice of the eyewear maker’s proprietary rights, and that the design patent infringement was therefore willful. Oakley further alleges that the sale of these knock-off “Penny”® sunglasses resulted in lost sales, reduced profit, and reputational injury to Oakley due to the inferior quality of the copy sunglasses. In the complaint, Oakley requests a jury trial and asks the court for a declaratory judgment, permanent injunctive relief, damages at least in the amount of lost profits, and destruction of all existing copies of the allegedly infringing sunglasses.

Arent Fox is currently monitoring this case for further developments. For more information, please contact:

Anthony V. Lupo
lupo.anthony@arentfox.com
202.857.6353

Loni J. Sherwin*
sherwin.loni@arentfox.com
202.715.8581