Oakley's Sunglasses and Design Patents

Oakley recently sued Fox, Marvel, and others for infringement of its design sunglasses design patent No. D470,166. According to the complaint, the movie industry has knocked-off Oakley’s design to promote Silver Surfer DVDs.

Oakley owns over 100 design patents on its various sunglass designs. Since 2004, the fashion trend-setter has filed over 30 complaints against accused infringers.

Apparently, Mardsen wore genuine Oakley in his role as Cyclops. What damages if they had been fakes?

Comments

[Blaise Mouttet]

I wonder if patent design examiners ever search comic books for prior art? Given that many futuristic and non-traditional designs can be found in comics they may actually be a good source of prior art.

[Captain Obviousness]

Without the incentive of a design patent, Oakley never would have invested the billions of dollars in R&D required to come up with that little bump on the bottom edge of the rim, which seems to be the only feature that distinguishes it from 1000's of other sunglasses.

[Captain Obviousness]

Also - how is it infringement to sell a movie in which an actor wears patented sunglasses? Don't they have every right to "use" the sunglasses if they bought them? Or perhaps movie patrons get 3D Oakley knock-offs with their tickets??? What am I missing here?

[Captain Obviousness]

n/m - I see they accuse them of selling knockoffs.

[coast]

TITLE 35

§ 271. Infringement of patent
How Current is This?
(a) Except as otherwise provided in this title, whoever without authority makes, USES, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.

[Professor X]

But if Cyclops used this particular design of sunglasses to prevent uncontrolled optic bursts from his eyes, do the sunglasses not exhibit utility thus making this particular design ineligible for design patent protection?

[examiner#6k]

^ That ladies and gents is why he's prof x and you're not.

[examiner#6k]

^ That ladies and gents is why he's prof x and you're not.

[Malcolm Mooney]

"patent design examiners"

BWAHAAHAHAHAAHAHAHAHAHA!!!!!!!!

That's funny.

Besides, anyone can see just by looking at those sunglasses that they are totally original and like nothing else that came before.

[CaveMan]

I guess everyone except Mooney, who for some reason remains a favorite of the blog sponsor, must be civil. Makes you wonder.

[Just an ordinary inventor(TM)]

Dear Malcolm,

I never knew anyone who disliked design patents as much as you.

I was waiting for your comment – I bet you would.
I won the bet, thank you.
Now I can retire for the evening.

Happy Easter.

[Just an ordinary inventor(TM)]

Dear Malcolm,

I never knew anyone who disliked design patents as much as you.

I was waiting for your comment – I bet you would.
I won the bet, thank you.
Now I can retire for the evening.

Happy Easter.

[TMan]

"Use" - If you buy a patented article - you can use it. If Cyclops wore genuine Oakley, Marvel had a right (i.e. with authority, implicit license, at minimum) to use (under patent law).

Can you imagine the result in movies - otherwise! Think about it!!

[TMan]

"Use" - If you buy a patented article - you can use it. If Cyclops wore genuine Oakley, Marvel had a right (i.e. with authority, implicit license, at minimum) to use (under patent law).

Can you imagine the result in movies - otherwise! Think about it!!

[Steven Sereboff]

Dennis, if you posted the complaint there wouldn't be so much noise about the case. The complaint makes out a pretty ordinary counterfeiting case. Fantastic 4 gift packs sold at Costco include the DVD and a pair of sunglasses. Sure the protection might be thin, but if they are exact dupes of the Oakleys, it seem legit. As to abuses in design patents, I believe that the PTO should require written claims.

[Rob Mazzarese]

I'm pretty sure that if you go to the store and buy a pair of (legitimate) sunglasses, you can wear them in a movie or anywhere else. That's referred to as 'exhaustion' of patent rights by the patent owner, which occurs upon sale (unless Oakley has moved to the software model of licensing patented sunglasses rather than selling them).

Which is why the money in these situations usually flows the other way -- I'm sure Oakley happily paid some serious $$ to have their glasses featured in a major motion picture. It's called product placement, and tobacco companies have been doing it for years.

[Keeley]

Perhaps Oakley should consider supporting H.R. 2033.

[Malcolm Mooney]

The filing of the lawsuit, by itself, can sometimes be a useful way of getting a plaintiff's brand name injected into the public sphere, especially if the story is picked up by newspapers, online magazines, blogs, etc.

But I'm certain that no serious corporation would ever stoop to such tactics.

[metoo]

I have not read the complaint, but I doubt that Oakley paid to have their sunglasses in this movie (i.e., product placement) - if they did, it seems likely that Oakley and the producer/studio would have dealt with the issue of using the sunglasses in promoting the movie. For anyone who has read the complaint, what claims does it include besides design patent infringement (I'm sure there is more than just that one)?

As for Oakley seeking publicity, I doubt that's what's behind this. The case was filed on March 20th, and I don't think there is a single news story about the case. If Oakley was seeking publicity, it would have been in the news by now - even the usual PR sites have nothing about the case. Not sure if Malcolm was suggesting that Oakley was not a "serious corporation" - FWIW, they were acquired by Luxottica last year for around $2Bn.

[Malcolm Mooney]

"The case was filed on March 20th, and I don't think there is a single news story about the case."

It's early.

"Not sure if Malcolm was suggesting that Oakley was not a "serious corporation""

On the contrary.

[metoo]

Sorry, but it's not early if Oakley's motives were as you suggested. If they were interested in the publicity, the press release would have gone out the day the case was filed. Thus far, I don't think Oakley has said one word about their lawsuit.

[Anon E. Mouse]

Oakley was started by a guy selling handlebar grips for motocross motorcycles out of the back of his pickup in the 1970s. He expanded to selling grips for BMX bicycles. Moved into apparel including gloves and goggles. Did quite well in those communities. Didn't really go mainstream until his sunglasses started getting noticed by the general public--lots of folks have been shelling out big bucks for Oakleys.

He just sold the company (as the other poster noted) for $2BN. Lots of hard work, lots of talent, and maybe some luck paid off....but my point is that there's *something* to Oakley's designs that get people to spend well over $100 for sunglasses that most other people can't seem to do.

I don't "get" it, but it is there. And since every transaction is value enhancing--people are willing to shell out $100 despite a vigorous market in $10 sunglasses--society is enriched overall at very low cost. If it wasn't for design patent protection, Oakley would still be a small business making grips, goggles, and gloves for motocrossers and bicyclers.

I don't see why it deserves derision, MM.

[Mouse E. Anon]

There is the ornamental design embodied in a product (the actual sun glasses) and the copyright of the design for use of photographs of the image. It seems like Oakley is trying to use its make-use-sell design patent protection to seek copying copyright damages. If Oakley is trying to get $$$ from the studios for the actual in public wearing knockoffs of the Oakley glasses, how much could that really be? $10,000 at most. The image of the knockoffs in nation wide advertising is where the big $$$$ damage is, but that will have to come from copyright 'cause it ain't gonna come from Oakley's design patent.

[metoo]

There would generally be no copyright protection available for Oakley sunglasses - and certainly not the ones in question here. 17 USC 101: "the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article." Where on earth did you get the idea that copyright had anything to do with this case?

[Sailor]

It's just amazing......

[Oakley Sunglasses]

Oakley Sunglasses is the best....

[Jack Addition]

Great blog. Some very interesting information.

[PeterAddision]

Thanks for the links, found them useful! keep up the good work

[cheap sunglasses]

Hi,
This glasses looking really simple.
Please convey more information.
I am keen to know.

[Oakley Goggles]

Oakley sunglasses are simply best and i don't think that doing design infringement can make others successful.

[Josh]

Oakely make the best sports sunglasses hands down.