United States District Court, D. Minnesota
T. Nikolai and Peter G. Nikolai, Nikolai & Mersereau,
P.A., appeared for Magnolia and Vine Inc.
Beth Kothari, Will J. Orlady, and David Brandon Conrad, Fish
& Richardson P.C., appeared for Tapestry, Inc., and Kate
N. ERICKSEN United States District Judge
an action for patent infringement brought by Magnolia and
Vine Inc. against Tapestry, Inc., and Kate Spade, LLC. Six of
the seven patents in suit are design patents. As to those
six, Tapestry and Kate Spade moved to dismiss Magnolia and
Vine's infringement claims for failure to state a claim.
See Fed. R. Civ. P. 12(b)(6). Tapestry and Kate
Spade argued that the design patents are invalid, that the
accused products do not infringe, and that Magnolia and Vine
failed to properly plead willful infringement or induced
infringement. For the reasons set forth below, the Court
denies Tapestry and Kate Spade's motion.
and Vine “designs and sells a variety of fashion
accessories including jewelry, sunglasses, footwear, caps,
mittens and gloves.” Am. Compl. ¶ 1. It
“also sells purses, handbags, wallets and a collection
of handbags adapted to be used with a wide variety of accent
covers, tassels and straps purchased by [its] customers to
customize the look of the handbags.” Am. Compl. ¶
formerly known as Coach, Inc., “sells premium handbags
and lifestyle accessories.” Am. Compl. ¶ 2. It
completed its acquisition of Kate Spade in July 2017. Am.
Compl. ¶ 4. According to a Form 10-K filed by Coach with
the United States Securities and Exchange Commission for the
fiscal year ending July 1, 2017, “Coach owns all of the
material worldwide trademark rights used in connection with
the production, marketing, distribution and sale of all
branded products for Coach, Stuart Weitzman and Kate
Spade.” Am. Compl. ¶ 4.
and Vine owns U.S. Patent No. D613, 062; U.S. Patent No.
D637, 399; U.S. Patent No. D611, 705; U.S. Patent No. D636,
988; U.S. Patent No. D637, 810; U.S. Patent No. D638, 627;
and U.S. Patent No. 9, 198, 489. Am. Compl. ¶ 22. It
asserted that Tapestry and Kate Spade infringe the patents
by, for example, selling products “as part of their
‘Make it Mine Candace' collection offered under the
Kate Spade trademark”; that “the sales are made
by Kate Spade, but controlled by [Tapestry] because
[Tapestry], as the owner of the trademark, now controls the
products advertised and sold under that trademark”; and
that sales of the infringing products take place in retail
stores and through websites. Am. Compl. ¶ 23. Examples
of the “Make it Mine Candace” collection appear
in the following photos.
Compl. ¶ 25.
'062 Patent and the '399 Patent are entitled
“Interchangeable handbag cover.” Each claims
“[t]he ornamental design for an interchangeable handbag
cover, as shown and described.” In each patent, Figure
3 “is an isolated, perspective view of the handbag
cover in the closed position.” In the '399 Patent,
“[t]he claimed design is shown broken away to indicate
indeterminate length.” Figure 3 of each patent appears
'627 Patent, which is entitled “Handbag with
interchangeable handbag cover, ” claims “[t]he
ornamental design for an handbag with interchangeable handbag
cover, as shown and described.” Figure 1 “is a
top perspective view of an handbag with interchangeable
handbag cover in a partially attached conformation about an