Case 6:21-cv-01954-PGB-DCI Document 20 Filed 01/14/22 Page 1 of 31 PageID 237

UNITED STATES DISTRICT COURT

MIDDLE DISTRICT OF FLORIDA, ORLANDO DIVISION

LIGHTS OUT PRODUCTIONS, LLC,

and BYB EXTREME FIGHTING
SERIES, LLC,

Plaintiffs, Case No.: 6:21-cv-01954

v. Honorable Paul G. Byron

TRILLER, INC., TRILLER FIGHT [Oral Argument Requested]

CLUB, LLC, FLIPPS MEDIA, INC.,
and RYAN KAVANAUGH,

Defendants.

DEFENDANTS’ MOTION TO DISMISS

PLAINTIFFS’ PATENT AND COPYRIGHT CLAIMS
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TABLE OF CONTENTS

I. INTRODUCTION .................................................................................................. 1
II. BACKGROUND .................................................................................................... 2
III. LEGAL STANDARD ............................................................................................. 4
IV. ARGUMENT .......................................................................................................... 5
A. Plaintiffs’ design patent claims fail, and amendment cannot
save them ..................................................................................................... 5
1. Design patent claim construction ................................................. 6
(a) Legal standards for design patent claim
construction ........................................................................... 6
(b) Construction of the D596 design patent ........................... 8
2. The accused design does not infringe the D596 patent ........... 12
(a) Legal standards for design patent infringement ........... 12
(b) The accused design does not infringe the D596
patent.................................................................................... 14
(i) A “ring” design is not a “cage” design ................ 14
(ii) The claimed and accused designs are
“plainly dissimilar”................................................. 15
(iii) 3-way visual comparison among the
claimed and accused designs, and the
closest prior art also supports dismissal .............. 19
B. Plaintiffs’ copyright claim should also be dismissed with
prejudice because no infringement can plausibly be found .............. 21
1. Copyright infringement legal standards ................................... 21
2. Plaintiffs’ copyrighted image is not substantially similar
to Defendants’ accused design .................................................... 23
V. CONCLUSION .................................................................................................... 25

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TABLE OF AUTHORITIES

Page(s)

Federal Cases

Amgen Inc. v. Coherus Biosciences, Inc.,

No. 17-cv-546, 2018 U.S. Dist. Lexis 56320 (D. Del. Mar. 28, 2018) .................... 10

Anderson v. Kimberly-Clark Corp.,

No. 12-cv-1979, 2013 U.S. Dist. LEXIS 188222 (W. D. Wa. Sept. 25,
2013), aff’d, 570 Fed. Appx. 927 (Fed. Cir. 2014),
cert. denied, 136 S. Ct. 142 (2015) ................................................................................ 5

Anderson v. Kimberly-Clark Corp.,

570 Fed. Appx. 927 (Fed. Cir. 2014) ................................................................ 4, 5, 16

Ashcroft v. Iqbal,
556 U.S. 662 (2009) ....................................................................................................... 4

Bell Atl. Corp. v. Twombly,

550 U.S. 544 (2007) ....................................................................................................... 4

Buyer’s Direct Inc. v. Dick’s Sporting Goods, Inc.,

No. 18-CV-597, 2019 U.S. Dist. LEXIS 185275 (E.D.N.C. Oct. 23,
2019) ...................................................................................................................... 16, 18

Colida v. Nokia, Inc.,

347 Fed. Appx. 568 (Fed. Cir. 2009) ................................................................. passim

Contessa Food Prods. v. Conagra, Inc.,

282 F.3d 1370 (Fed. Cir. 2002) .................................................................................... 7

Crocs, Inc. v. ITC,

598 F.3d 1294 (Fed. Cir. 2010) .................................................................................. 13

Egyptian Goddess, Inc. v. Swisa, Inc.,

543 F.3d 665 (Fed. Cir. 2008) (en banc) ............................................................. passim

Ethicon Endo-Surgery, Inc. v. Covidien, Inc.,

796 F.3d 1312 (Fed. Cir. 2015) ................................................................ 14, 15, 16, 19

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Gonzalez v. Planned Parenthood of L.A.,

759 F.3d 1112 (9th Cir. 2014) ...................................................................................... 4

Gorham Co. v. White,

81 U.S. 511 (1872) ....................................................................................................... 13

L.A. Gear, Inc. v. Thom McAn Shoe Co.,

988 F.2d 1117 (Fed. Cir. 1993) .................................................................................... 6

Lanard Toys, Ltd. v. Dolgencorp LLC,

958 F.3d 1337 (Fed. Cir. 2020) .................................................................... 5, 7, 12, 16

Lanard Toys Ltd. v. Toys “R” US-Delaware, Inc.,

No. 15-cv-849, 2019 U.S. Dist. LEXIS 46911 (M.D. Fla. Mar. 21,
2019), aff’d sub nom, Lanard Toys 958 F.3d 1337 (Fed. Cir. 2020) ..................... 6, 22

In re Maatita,
900 F.3d 1369 (Fed. Cir. 2018) .............................................................................. 6, 11

In re Mann,
621 F.2d at 1582 ............................................................................................................ 6

Marshall v. Ross Stores, Inc.,

20-cv-4703, 2020 U.S. Dist. LEXIS 248050 (C.D. Cal. Oct. 14, 2020) ..................... 4

MSA Prods. v. Nifty Home Prods.,

883 F. Supp. 2d 535 (D.N.J. 2012) ............................................................................ 16

Nirvana, LLC v. Mark Jacobs Int’l, LLC,

18-cv-20743, 2019 U.S. Dist. Lexis 225708 (C. D. Cal. Nov. 8, 2019)..................... 5

OddzOn Prods., Inc. v. Just Toys, Inc.,

122 F.3d 1396 (Fed. Cir. 1997) ........................................................................... passim

P.S. Prods. v. Activision Blizzard, Inc.,

140 F. Supp. 3d 795 (E.D. Ark. 2014) ...................................................................... 16

Performance Designed Prods. LLC v. Mad Catz, Inc.,

No. 16-cv-629, 2016 U.S. Dist. LEXIS 84848 (S.D. Cal. June 29,
2016) ...................................................................................................................... 16, 18

Curver Lux., SARL v. Home Expressions Inc.,

938 F.3d 1334 (Fed. Cir. 2019) ........................................................................... passim

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Silverman v. Attilio Giusti Leombruni S.P.A.,

15-cv-2260, 2016 U.S. Dist. LEXIS 20775 (S.D.N.Y. Feb. 19, 2016) ............ 6, 16, 18

Sport Dimension, Inc. v. Coleman Co.,

820 F.3d 1316 (Fed. Cir. 2016) .................................................................................. 12

Wine Enthusiast, Inc. v. Vinotemp Int’l Corp.,

317 F. Supp. 3d 795 (S.D.N.Y. 2018) ........................................................................ 16

Other Authorities

Fed. R. Civ. P. 12(b)(6) .............................................................................................. 1, 2, 4

MPEP § 1503.02 ............................................................................................................... 11

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I. INTRODUCTION

Plaintiffs’ design patent and copyright infringement claims at Counts I-II of

the Complaint should be dismissed pursuant to Fed. R. Civ. P. 12(b)(6). These

claims are not plausible on their face and amendment cannot save them.

There can be no design patent infringement if the “overall appearance” of

the claimed and accused designs are “plainly dissimilar.” Design patent claims are

defined by the patent’s figures. As detailed below, Plaintiffs’ allegations of

infringement of U.S. Patent No. D805,596 (“D596 patent”) fail as a matter of law

because the overall appearances of the claimed and accused designs are plainly

dissimilar. The only even arguable similarity is the non-patentable and functional

triangle-shaped ring. Because this is clear from the design patent figures and the

Complaint’s images of the accused design, and because nothing can change what

the designs look like, an amendment to the Complaint cannot save this incurable

design patent infringement claim. As such, it should be dismissed with prejudice.

Plaintiffs’ copyright claim suffers similar fatal flaws that no amendment can

save. As an initial matter, copyright protection does not extend to geometric

shapes, such as a triangle, or any functional/utilitarian aspect of a design, such

using a triangle as a ring. Except for unprotectable elements, the accused design

looks nothing like Plaintiffs’ asserted U.S. Copyright Reg. No. VA-2-274-269 (“269

copyright”), so this claim also fails and should be dismissed with prejudice.

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II. BACKGROUND

The asserted D596 patent is entitled “Fighting Cage” and claims the

“ornamental design for a fighting cage.” D596 patent at cover.1 The D596 patent

has a total of 6 figures, 2 of which are shown below for illustrative purposes along

with quotations of the patent’s description of them.

Fig. 6: “perspective view from left Fig. 5: “front elevation view of the
front side of the fighting cage” fighting cage”

The patent says “[t]he dashed lines indicating stairs and screens of the walls and

the door are for the purpose of illustrating unclaimed environment of the design

and form no part of the claimed design,” but this language refers only to the

screens of the cage walls and door, instead of to “the door” itself. See id. at cover.

Indeed, the door very clearly is drawn in solid lines in all of the patent’s figures

showing the door. See id. at Figs. 1-3, 5-6.

1 The version of the D596 patent Plaintiffs chose to attach as Ex. A to their Complaint is a low-
resolution version that is grainy making it hard to see the lines in detail. Attached as Ex. 1 hereto
is a full resolution version of the D596 patent from the U.S. Patent Office’s official website.

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The asserted 269 copyright (Ex. B to Compl.) is entitled “Trigon Triangle

Fighting Surface Design,” and it claims the “2-d artwork” shown below. There are

9 images included in the 296 copyright, and Plaintiffs have said the 3 below are

“[r]epresentative examples.” See Compl. at ¶44.

Plaintiffs allege Defendants’ have infringed the D596 patent and 269

copyright in connection with Defendants’ “triangle ring design” (hereinafter,

“accused design”). Compl. at ¶64-65. A side-by-side comparison is below:

D596 patent claimed design Accused design

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269 copyright design Accused design

III. LEGAL STANDARD

“To survive a motion to dismiss under Fed. R. Civ. P. 12(b)(6), a complaint

must contain sufficient factual matter, accepted as true, to state a claim to relief

that is plausible on its face.” Marshall v. Ross Stores, Inc., 20-cv-4703, 2020 U.S. Dist.

LEXIS 248050, at *3 (C.D. Cal. Oct. 14, 2020). To survive dismissal, plaintiff must

provide “more than labels and conclusions, and a formulaic recitation of the

elements of a cause of action will not do.” Bell Atl. Corp. v. Twombly, 550 U.S. 544,

546 (2007). “[T]hreadbare recitals of a cause of action’s elements, supported by

mere conclusory statements” is insufficient. Ashcroft v. Iqbal, 556 U.S. 662, 678

(2009) (citing Twombly, 550 U.S. at 555). The factual allegations must raise a right

to relief above the speculative level. Twombly, 550 U.S. at 545.

Courts need not accept as true allegations that contradict matters properly

subject to judicial notice or shown from the exhibits to the complaint. Anderson v.

Kimberly-Clark Corp., 570 Fed. Appx. 927, 931 (Fed. Cir. 2014); Gonzalez v. Planned

Parenthood of L.A., 759 F.3d 1112, 1115 (9th Cir. 2014). A court may also rely on

documents outside the pleadings if they are integral to plaintiff’s claims and their

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authenticity is not in question. Anderson, 570 Fed. Appx. at 932. In design patent

and copyright cases, images of the accused design can be considered because they

are central to plaintiff’s allegations. Anderson v. Kimberly-Clark Corp., 12-cv-1979,

2013 U.S. Dist. LEXIS 188222, at *5 (W. D. Wa. Sept. 25, 2013), aff’d, 570 Fed. Appx.

927 (Fed. Cir. 2014), cert. denied, 136 S. Ct. 142 (2015); Nirvana, LLC v. Mark Jacobs

Int’l, LLC, 18-cv-20743, 2019 U.S. Dist. Lexis 225708, at *8 (C. D. Cal. Nov. 8, 2019).

IV. ARGUMENT

A. Plaintiffs’ design patent claims fail, and amendment

cannot save them

Plaintiffs’ design patent infringement claim must be dismissed because the

Complaint’s allegations do not “‘raise a right to relief above the speculative level’

and ‘cross the line from conceivable to plausible.’” Colida v. Nokia, Inc., 347 Fed.

Appx. 568, 570 (Fed. Cir. 2009) (citation omitted). “Determining whether a design

patent has been infringed is a two-part test: (1) the court first construes the claim

to determine its meaning and scope; (2) the fact finder then compares the properly

construed claim to the accused design.” Lanard Toys, Ltd. v. Dolgencorp LLC, 958

F.3d 1337, 1341 (Fed. Cir. 2020).

Design patent infringement is determined under the ordinary observer test.

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 678 (Fed. Cir. 2008) (en banc). “A

district judge is an ordinary observer, and courts may therefore conduct the

ordinary-observer test without referring to some hypothetical ordinary observer.”

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Silverman v. Attilio Giusti Leombruni S.P.A., 15-cv-2260, 2016 U.S. Dist. LEXIS 20775,

at *4 (S.D.N.Y. Feb. 19, 2016) (internal quotation marks and citations omitted); see

also Colida, 347 Fed. Appx. at 570 (affirming judge’s application of the ordinary

observer test to dismiss design patent infringement claim).

1. Design patent claim construction

(a) Legal standards for design patent claim construction

“A design patent is directed to the appearance of an article of manufacture.”

L.A. Gear, Inc. v. Thom McAn Shoe Co., 988 F.2d 1117, 1123 (Fed. Cir. 1993). It covers

the “[ornamental] design applied to an article of manufacture, and not a design per

se.” Curver Lux., SARL v. Home Expressions Inc., 938 F.3d 1334, 1340 (Fed. Cir. 2019).

“‘Design patents have almost no scope.’” Lanard Toys Ltd. v. Toys “R” US-Delaware,

Inc., No. 15-cv-849, 2019 U.S. Dist. LEXIS 46911, at *60 (M.D. Fla. Mar. 21, 2019),

aff’d sub nom, Lanard Toys 958 F.3d 1337 (Fed. Cir. 2020) (quoting In re Mann, 861

F.2d 1581, 1582 (Fed. Cir. 1988)). They are limited to what is shown in the figures,

In re Mann, 621 F.2d at 1582, and the patent’s description can also further limit the

scope of a design patent, Curver, 938 F.3d at 1343. In the figures, “the solid lines. . .

show the claimed design,” whereas the broken lines show structure that is not part

of the claimed design, but that is important context to illustrate the “environment

in which the design is embodied.” In re Maatita, 900 F.3d 1369, 1372 (Fed. Cir. 2018)

(citing Manual of Patent Examining Procedure (“MPEP”) § 1503.02).

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“[T]he scope of the claimed design encompasses, ‘its visual appearance as a

whole,’ and in particular ‘the visual impression it creates.’” Contessa Food Prods. v.

Conagra, Inc., 282 F.3d 1370, 1376 (Fed. Cir. 2002) (quoting Durling v. Spectrum

Furniture Co., 101 F.3d 100, 104-05 (Fed. Cir. 1996)). Put another way, the scope of

a design patent claim is “limited to the ornamental aspects of the design, and does

not extend to ‘the broader general design concept.’” OddzOn Prods., Inc. v. Just

Toys, Inc., 122 F.3d 1396, 1405 (Fed. Cir. 1997). A design patent can include

elements that have function, but “‘[w]here a design contains both functional and

non-functional elements, the scope of the claim must be construed in order to

identify the non-functional aspects of the design as shown in the patent.’” Lanard

Toys, 958 F.3d at 1342 (quoting Sport Dimension, Inc. v. Coleman Co., 820 F.3d 1316,

1320 (Fed. Cir. 2016) and OddzOn, 122 F.3d at 1405).

Courts need not “provide a detailed verbal description of the claimed

design, as is typically done in the case of utility patents.” Egyptian Goddess, 543

F.3d at 679. Indeed, “the preferable course ordinarily will be for a district court not

to attempt to ‘construe’ a design patent claim by providing a detailed verbal

description of the claimed design.” Id. “[A] design is better represented by an

illustration ‘than it could be by any description and a description would probably

not be intelligible without the illustration.’” Id. (quoting Dobson v. Dornan, 118 U.S.

10, 14 (1886)).

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(b) Construction of the D596 design patent

As noted above, the D596 patent is entitled “Fighting Cage,” and it claims

the “ornamental design for a fighting cage, as shown and described.” D596 patent

at cover. Figs. 6, 5, 4, and 1 are shown below with the patent’s descriptions of them.

Fig. 6: “perspective view from left Fig. 5: “front elevation view of the
front side of the fighting cage” fighting cage”

Fig. 4: “top plan view of the ghting Fig 1: “front elevational view of a
cage” ghting cage”

As the figures show, the overall visual impression created by the claimed design

is of an unadorned, plain triangular fighting cage positioned on top of an

unadorned, plain significantly raised stage. See id. Figs. 1, 5, 6. The frame of the

cage has a prominent door on one side and the cage frame is taller than the height

of a fighter who would pass through the door to fight in the ring enclosed inside

the high walls of the cage. See id. The cage sits flush on top of the stage. See id. The

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cage frame is tall and wide such that a mesh/bars could span between the top and

bottom of the cage frame. See id. The cage frame and door frame are pole/tubular

shaped with cuboid shaped joints, there are square shaped posts at the triangle’s

vertices that connect without gaps or turnbuckles to the sides of the frame to

enclose the ring inside the cage’s high walls, square shaped posts also serve as

door jambs, and the “pole/tube and cube” cage and door frames are inset above a

wider rectangular shaped trim where the bottom of the cage meets the top of the

stage. See id. Figs. 1, 3, 5, 6. Overall the design is minimalistic with unadorned,

plain, flat faces on all sides and no decorations, except the “circle in a square”

elements near the bottom and top of the three posts at the triangle’s vertices on the

outside and inside of the cage. See id. The design has a DIY feel to it. See id.

Fig. 6 (in part): zoomed to show pole/tube frame and cube joints

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That the cage and door frames are pole/tubular shapes connected by cuboid

joints is made clear by the figures, zoomed-in versions of which with color

annotations added are above. The presence of these pole/tube and cube shapes

also is confirmed by the prosecution history. See D596 prosecution history (Ex. 2

hereto) at 34, 87 (examiner referring to the “pole-like” and “tubular” portions

making up the frame of the cage, and the “cuboid” elements serving as joints).2

The “circle in a square” elements are on the outside and inside of the cage,

as the zoomed-in portion of Fig. 6 above on p. 9 shows for the back left post. As

shown below, there are two “circle in a square” elements on the outside of the cage

at the bottom of the posts and one at the top. The prosecution history also confirms

the presence, number, and location of these “circle in a square” decorations. See

Ex. 2 at 87 (referring to “circular element” in Figs. 1, 5, and 6).3

2 It is appropriate to rely on the prosecution history to construe the scope of a design patent’s
claims at the motion to dismiss stage. See, e.g., Amgen Inc. v. Coherus Biosciences, Inc., No. 17-cv-
546, 2018 U.S. Dist. Lexis 56320, *9-10 (D. Del. Mar. 28, 2018) (granting motion to dismiss relying
on, among other things, the prosecution history).
3 At the time during prosecution, Fig. 6 did not clearly show the circular element that was
apparently present as shown in Figs. 1 and 5, but applicants updated Fig. 6 to make clear there
are two “circle in a square” elements at the bottom of the posts. See id. at 87, 95, 100-01.

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Fig. 1 (left) and Fig. 6 (right; in part): showing “circle in a square” decorations

Plaintiffs seem to argue the “door” is shown in “dashed lines” and so is not

part of the claimed design. This is wrong. All of the drawings of the door have

always been shown in solid lines, not dashed lines. See Ex. 2 at 9-11, 52-54, 62-67,

74-79, 93-98, 103-108. The dash lines refer only to the screens of the cage walls and

screens of the door. Applicant also confirmed during prosecution that “[t]he []

drawings do not contain any [] broken lines . . . .” Id. at 55. The door – which, again,

has always been and is shown in solid lines – is thus part of the claimed design.

See In re Maatita, 900 F.3d at 1372; MPEP § 1503.02 (both confirming solid lines

show the claimed design). Based on the figures, patent’s title and description, and

the prosecution history, the claimed design must include a door on the cage.

Finally, to the extent Plaintiffs purport to own design patent rights in the

general design concept of a triangular fighting cage, design patent rights simply

“do[] not extend to ‘the broader general design concept.’” See OddzOn, 122 F.3d at

1405. Neither can Plaintiffs patent fighting in a triangle because design patent

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protection does not extend to an “idea.” Lanard Toys, 958 F.3d at 1346 (citing 17

U.S.C. § 102(b)). Similar to plaintiff in Lanard Toys who did not own the idea of a

design for a pencil-shaped chalk holder, Plaintiffs here cannot own the idea of

fighting in a triangle either. See id. at 1346. Additionally, the triangular shape is a

functional element of the D596 patent, rather than an ornamental feature, because

the triangle ring makes the fight more exciting by allowing the fighters to be more

easily backed into a corner that they cannot easily slip out of (as opposed to a

traditional square boxing ring), leading to sustained combat striking. This Court

must factor out these functional aspects of the triangle design when construing the

D596 patent. See Sport Dimension, 820 F.3d at 1322-23 (factoring out functional

elements of a design patent for a life vest and noting that “[b]ecause of the design’s

many functional elements and its minimal ornamentation, the overall claim scope

of the claim is accordingly narrow”).

2. The accused design does not infringe the D596 patent

(a) Legal standards for design patent infringement

A design patent is only infringed “‘[i]f, in the eye of an ordinary observer,

giving such attention as a purchaser usually gives, two designs are substantially

the same, if the resemblance is such as to deceive such an observer, inducing him

to purchase one supposing it to be the other, the first one patented is infringed by

the other.” Egyptian Goddess, 543 F.3d at 677 (quoting Gorham Co. v. White, 81 U.S.

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511, 528 (1872)). The ordinary observer test is the sole test for design patent

infringement, and it must be applied to the patented design in its entirety. Curver,

938 F.3d at 1338 (citing Gorham, 81 U.S. at 528; Egyptian Goddess, 543 F.3d at 672).

In other words, “[i]t is the appearance of a design as a whole which is controlling

in determining infringement. There can be no infringement based on the similarity

of specific features if the overall appearance[s] of the designs are dissimilar.”

OddzOn, 122 F.3d at 1405.4

Design patent infringement analysis has two steps. First, “[i]n some

instances, the claimed design and the accused design will be sufficiently distinct

that it will be clear without more that the patentee has not met its burden of

proving the two designs would appear ‘substantially the same’ to the ordinary

observer, as required by Gorham.” Egyptian Goddess, 543 F.3d at 678. At step 1,

“[t]he proper comparison requires a side-by-side view comparison of the

drawings of the [asserted design patent] and the accused products.” Crocs, Inc. v.

ITC, 598 F.3d 1294, 1304 (Fed. Cir. 2010).

Second, “when the claimed and accused designs are not plainly dissimilar,

resolution of the question whether the ordinary observer would consider the two

designs to be substantially the same will benefit from a comparison of the claimed

4 All emphasis in quotation is added unless otherwise noted.

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and accused designs with the prior art.” Egyptian Goddess, 543 F.3d at 678. This

step-2 comparison of the claimed and accused designs with the prior art is not

necessary if the claimed and accused designs are plainly dissimilar at step 1. See

Ethicon Endo-Surgery, Inc. v. Covidien, Inc., 796 F.3d 1312, 1337 (Fed. Cir. 2015)

(citing Egyptian Goddess, 543 F.3d at 678). If a step-2 analysis is needed, it is done

by making a 3-way “visual comparison between the patented design, the accused

design, and the closest prior art.” Egyptian Goddess, 543 F.3d at 672.

(b) The accused design does not infringe the D596 patent

(i) A “ring” design is not a “cage” design

As an initial matter, the accused design is plainly dissimilar from the

claimed design without the need for an intensive visual analysis. The accused

design is a fighting ring, not a fighting cage as required by the claimed design. No

ordinary observer – especially someone who ordinarily watches these kinds of

fight events – would ever be deceived into believing that a fighting “ring” is a

fighting “cage,” and no ordinary observer would ever mistake a “cage” design for

a “ring” design supposing one to be the other.

The Federal Circuit’s recent decision in Curver is

directly on point. In Curver, the claimed design was the

“Y” design “pattern for a chair,” and the accused

design was the basket, both shown at right. 938 F.3d at 1336-38.

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The Federal Circuit held there could be no

infringement as a matter of law because a “basket” is

not a “chair.” Id. at 1343. Likewise here, the accused

“ring” is not a “cage,” so the accused ring cannot

infringe the D596 patent for a “cage.” See id.

(ii) The claimed and accused designs are “plainly

dissimilar”

Visual analysis of the “appearance of [the] design as a whole” also confirms

the claimed and accused designs are “plainly dissimilar” and “sufficiently

distinct,” such that no ordinary observer could find the “two designs would

appear substantially the same”. See Egyptian Goddess, 543 F.3d at 678; Ethicon, 796

F.3d at 1337; OddzOn, 122 F.3d at 1405.

Courts have dismissed a plaintiff’s design patent claims because the claimed

and accused designs were plainly dissimilar and those

decisions have been affirmed on appeal. For example, in

Colida, the Federal Circuit affirmed dismissal because the

infringement claims were facially implausible and

provided no basis to reasonably infer that an ordinary observer would confuse the

claimed cell phone design with the accused Nokia phone design (comparison

shown at left). Colida, 347 Fed. Appx. at 570. Likewise, the Federal Circuit has

found surgical device designs “plainly dissimilar” as a matter of law because they

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“simply d[id] not look alike except for the

fact that both are hand-held surgical

devices with open trigger handles.”

Ethicon, 796 F.3d at 1335 (granting

summary judgment; comparison at right). There are numerous other examples of

design patent claims being found plainly dissimilar on the pleadings.5

In the instant case, the only arguable similarity between Plaintiffs’ claimed

design and Defendants’ accused design is “based on the similarity of specific

features” (e.g., both have a triangle as part of the design), but the Federal Circuit

has made it clear that similarity between features in isolation cannot show

infringement if the “overall appearance of the designs [is] dissimilar.” See OddzOn,

122 F.3d at 1405; see also Lanard Toys, 958 F.3d at 1334.

As shown in the side-by-side comparisons below, there are at least 7 striking

and significant differences in the visual appearance of the designs as a whole and

the overall visual impressions they create.

5See also Ex. 3 hereto providing full-page illustrations for the foregoing Curver, Colida, and Ethicon
cases and also for MSA Prods. v. Nifty Home Prods., 883 F. Supp. 2d 535, 541-42 (D.N.J. 2012) (MTD
granted); Silverman, 2016 U.S. Dist. LEXIS 20775, at *5-6 (same); Wine Enthusiast, Inc. v. Vinotemp
Int’l Corp., 317 F. Supp. 3d 795, 801-02 (S.D.N.Y. 2018) (same); Performance Designed Prods. LLC v.
Mad Catz, Inc., No. 16-cv-629, 2016 U.S. Dist. LEXIS 84848, at *9-15 (S.D. Cal. June 29, 2016) (same);
P.S. Prods. v. Activision Blizzard, Inc., 140 F. Supp. 3d 795, 803 (E.D. Ark. 2014) (same); Anderson,
570 F. App’x at 929 (affirmed MJP); Buyer’s Direct Inc. v. Dick’s Sporting Goods, Inc., No. 18-CV-
597, 2019 U.S. Dist. LEXIS 185275, at *6-8 (E.D.N.C. Oct. 23, 2019) (MJP granted).

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Full-page versions of these comparisons are attached as Ex. 4 hereto

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The significant differences in overall visual impression and design at least include:

# D596 patent claimed design Accused design

1. Tall, wide cage frame forming high No cage, cage frame, or ring
walls to enclose a fighter in the cage. enclosed by high cage walls.
2. Minimalistic design with Not minimalistic design. The face of
unadorned, plain, flat faces and no the stage is contoured, not flat.
decorations, except at the top and Highly decorated on all sides with
bottom of the posts. Muted, basic studded shapes, a vertical slashed
design impression, as if DIY built. ring skirt, and accent lines. The
design creates the impression of
triangles rising to accentuate the
ring.
3. Cage flush with the stage and is Stage not flush with the ring, and
significantly elevated. not significantly elevated.
4. Door with jambs. No door and no jambs.

5. Square posts with no gap in the cage Round posts with turnbuckles and
walls and no turnbuckles. open gaps.
6. Pole/tube shaped cage frame and Flexible ropes, not tube framing for
door with cube joints. a cage with a door. No cube joints.
7. “Circle in a square” elements on the No “circle in a square” elements on
inside and outside of the top and the inside and outside of posts.
bottom of posts.

No ordinary observer could correctly conclude the designs are “substantially the

same,” such that the observer would be deceived by the resemblance between the

two designs and would believe one design to be the other. See, e.g., Colida, Inc., 347

Fed. Appx. at 570; Silverman, 2016 U.S. Dist. LEXIS 20775, at *5-6; Performance

Designed, 2016 U.S. Dist. LEXIS 84848, at *9-15; Buyer’s Direct, 2019 U.S. Dist. LEXIS

185275, at *6-8; see also Ex. 4 showing claimed and accused designs in these cases.

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(iii) 3-way visual comparison among the claimed and

accused designs, and the closest prior art also
supports dismissal

No doubt remains that the claimed and accused designs could not be found

“substantially the same” in the eyes of an ordinary observer.6 Even if there was

scintilla of doubt, it is quickly extinguished by a 3-way comparison among the

claimed and accused designs, and closest prior art cited during prosecution. See

Egyptian Goddess, 543 F.3d at 672.

The closest prior art cited during prosecution

was the U.S. Pat. App. No. 2013/0017895 to

Mechling (Ex. 5 hereto) for a “hybrid fighting

cage/boxing ring” shown at right. See D596 Patent

at p. 2 (cited prior art). It depicts a combination of a

fighting “cage” 30 made from a chain-linked fence 31,

and a boxing “ring” 20 enclosed by ropes 21. There are

6 vertical pole shaped posts 13. A 5-sided polygon

shaped floor forms the fighting surface. The cage 30 does not have ropes and the

cage frames are flush with the vertical posts 13. See Mechling at ¶¶24-25, 27.

6As noted above in § IV.A.2(a), the Court need not proceed to this second step of infringement
analysis if it determines the claimed and accused designs are “plainly dissimilar” and
“sufficiently distinct” such that no ordinary observer could find them to be “substantially the
same.” See, e.g., Ethicon, 796 F.3d at 1337 (citing Egyptian Goddess, 534 F.3d at 678).

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As shown below, a 3-way comparison confirms the overall visual

impressions of the claimed design, accused design, and the prior art are

completely different. Indeed, the accused design is more aligned with the prior art

boxing ring instead of the claimed cage design, as both the accused design and

prior art use ropes and pole shaped posts common in traditional boxing rings. The

claimed design has neither ropes nor pole-shaped posts. The prior art and the

claimed design are similar in that they both use a high wall/fence and cage frame,

which the accused design lacks. In short, the similarity between the accused design

and the prior art does not exist in the claimed design, and the similarity between

the claimed design and the prior art does not exist in the accused design.

Claimed design Accused design Closest prior art

It is beyond dispute that the differences noted above sufficiently

demonstrate that the overall appearances of the claimed and accused designs are

plainly dissimilar. Plaintiffs’ patent infringement claim is facially and legally

implausible, and thus, should be dismissed with prejudice.

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B. Plaintiffs’ copyright claim should also be dismissed with prejudice

because no infringement can plausibly be found

1. Copyright infringement legal standards

“Copyright infringement has two elements: (1) ownership of a valid

copyright, and (2) copying of [protectable] elements.” Home Design Servs., Inc. v.

Turner Heritage Homes Inc., 825 F.3d 1314, 1320 (11th Cir. 2016) (modification

original); Skidmore v. Led Zeppelin, 952 F.3d 1051, 1064 (9th Cir. 2020) (same).

A copyright is only infringed if there is “substantial similarity in protectable

expression.” Skidmore, 952 F.3d at 1064; Home Design, 825 F.3d at 1321. Geometric

shapes alone, such as a triangle or tube shape, are not copyrightable. Alper Auto.

V. Day to Day Imps., No. 18-cv-81753, 2020 U.S. Dist. Lexis 170628, *11-12 (S. D. Fla.

July 13, 2020); Hoberman Designs, Inc. v. Gloworks Imps., Inc., No. 14-cv-6743, 2015

U.S. Dist. LEXIS 176117, at *14-15 (C.D. Cal. Nov. 3, 2015). Copyright also does not

extend to utilitarian or functional aspects of a work. See Star Athletica, LLC v.

Varsity Brands, Inc., 137 S. Ct. 1002, 1008 (2017); Alper, 2020 U.S. Dist. Lexis 170628,

*11-12 (citing Star Athletica); Lanard Toys, 2019 U.S. Dist. LEXIS 46911 at *77 (citing

Baby Buddies, Inc. v. Toys ‘R’ Us, Inc., 611 F.3d 1308, 1317 (11th Cir. 2010)); Hoberman,

2015 U.S. Dist. LEXIS 176117, at *15-16.

Under the proper circumstances, it is appropriate for courts to determine

the issue of substantial similarity for purposes of copyright infringement at the

motion to dismiss stage. See Sieger Suarez Architectural P’ship, Inc. v. Arquitectonica

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Int’l Corp., 998 F. Supp. 2d 1340, 1349 (S.D. Fla. Feb. 14, 2014); Anton Int’l v.

Chunhong Zhang, No. 21-cv-120, 2021 U.S. Dist. LEXIS 79709, at *6-8 (C.D. Cal. Apr.

26, 2021). At the motion to dismiss stage, courts look only to the operative

complaint and any documents referenced therein and integral to the issues. See id.

Whether there is substantial similarity in copyrighted and accused works is based

upon a comparison of the works at issue. See id.

“Copyright infringement is based on substantial similarity as perceived by

the ‘average lay observer.’” Lanard Toys, 2019 U.S. Dist. LEXIS 46911 at *24, *65

(citing Leigh v. Warner Bros., Inc., 212 F.3d 1210, 1214 (11th Cir. 2000)). In both the

Eleventh and Ninth Circuits, the “substantial similarity” has (1) an extrinsic,

objective component and (2) an intrinsic, subjective component. See Oravec v.

Sunny Isles Luxury Ventures, L.C., 527 F.3d 1218, 1224 & n.5 (11th Cir. 2008);

Skidmore, 952 F.3d at 1064. “[A] plaintiff’s claim must pass the extrinsic test in order

to survive a motion to dismiss.“ Anton, 2021 U.S. Dist. LEXIS 79709 at *6. Under

the extrinsic, objective component of the substantial similarity test, courts first

factor out the unprotectable elements (e.g., basic shapes, ideas, concepts) and then

“compare[] the objective similarities of the two works.” Id.; see also Cortes v.

Universal Music Latino, 477 F. Supp. 3d 1290, 1297 (S.D. Fla. 2020) (same).

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2. Plaintiffs’ copyrighted image is not substantially similar to

Defendants’ accused design

Plaintiffs’ claim for copyright infringement is not plausible because no

protectable elements of the 296 copyright are substantially similar to the accused

design. A comparison of Plaintiffs’ 269 copyright and the accused design (shown

below) demonstrates that nothing from the accused design is similar to any

protectable elements of the 269 copyright, much less “substantially similar.”

269 copyright design Accused design

The triangle shape and tubular ropes are not elements protectable by copyright, as

they are either a geometric shape or serve a functional/utilitarian purpose. See

Alper Auto., 2020 U.S. Dist. Lexis 170628 at *11-12 (citing Star Athletica, 137 S. Ct. at

1008); Hoberman, 2015 U.S. Dist. LEXIS 176117, at *15-16.

Aside from unprotectable elements, the accused design lacks every single

other element of the 269 copyright, including at least:

# 269 copyright design Accused design

1. Large fist logo at center of ring. No fist logo.

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# 269 copyright design Accused design

2. Second large red and black No large second triangle.
triangle at center of ring
around fist logo.
3. Text “BYB,” “EXTREME,” and No similar text.
“BARE KNUCKLE.”
4. No fighter in ring. Fighter figure in ring.

5. No decorations at ring edges. Prominent round, vertical, and

horizontal decorations at ring edges.
6. No stairs to enter ring. Stairs to enter ring.

7. Blue ring on red circle Grey ring on black square background.

background.
8. Flat stage. Tiered stage of nested triangles rising to
accentuate the ring.
9. White ring ropes with no Red, white, and blue ropes with
shadows. shadows.
10. White posts with red, white, Red posts with no corner padding.
and blue corner padding.

Court decisions granting motions to dismiss involving much more similar

designs make it plain that no reasonable trier of fact could find Plaintiffs’ 269

copyright substantially similar to Defendants’ accused design, thus warranting

dismissal of Plaintiffs’ copyright claims with prejudice. For example, in Anton the

court dismissed a copyright claim dealing with these unicorn designs:

Copyrighted designs Accused design

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The court found the accused unicorn design could not Copyrighted design

infringe the copyrighted unicorn designs because of

“glaringly obvious difference[s];” both designs were

unicorns, but the copyrighted designs were pink and blue

and the accused design was “patterned with colors in a

rainbow order.”7 See Anton, 2021 U.S. Dist. LEXIS 79709 at

Accused design
*9. The court also dismissed a copyright claim on the

rainbow patterns at right because “the two designs have

different expressive elements;” namely, the copyrighted

design “contains only four colors: red, yellow, and blue,

separated by thin white stripe,” but the accused design is

a “full rainbow spectrum,” so expresses “a different idea: a natural rainbow.” Id.

at *9-10. There is no way Defendants’ accused design could infringe Plaintiffs’ 269

copyright given that these much more similar rainbow designs required dismissal.

V. CONCLUSION

Plaintiffs cannot monopolize the idea of using a functional, geometric shape

like a triangle as a fighting ring. Design patent and copyright protection simply

does not extend to such ideas. Plaintiffs’ patent and copyright claims should be

dismissed with prejudice because what the designs look like will not change.

7 The images are from the complaint (Dkt. 2) in Anton, No. 21-cv-120 (C.D. Cal. filed Jan. 22, 2021).

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Dated: January 14, 2022 Respectfully submitted,

/s/Joshua D. Curry
Joshua D. Curry, Esq.
Florida Bar No. 36925
Lewis Brisbois Bisgaard & Smith LLP
600 Peachtree St. NE, Suite 4700
Atlanta, GA 30308
Phone: 404.348.8585
josh.curry@lewisbrisbois.com

Jonathan G. Kepko, Esq.

Florida Bar No. 67375
Lewis Brisbois Bisgaard & Smith LLP
401 E. Jackson Street, Suite 3400
Tampa, FL 33602
Phone: 813.739.1975
jonathan.kepko@lewisbrisbois.com

Attorneys for Defendants

CERTIFICATE OF SERVICE

The undersigned hereby certifies that on the date indicated below the
foregoing document with any attachments was filed using the Court’s CM/ECF
System, which caused counsel of record for the parties to be served by electronic
mail, as more fully reflected on the notice of electronic filing.

Dated: January 14, 2022 /s/Joshua D. Curry

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