C&A Marketing (a New Jersey Corp.) is the exclusive manufacturer, distributor, and marketer of Polaroid brand mountable actions cameras. In January 2014, it launched, in cooperation with Ammunition, LLC (the studio responsible, among others, for industrial designs like the Beats headphones), the Polaroid Cube. It's a new kind of point-of-view, mountable, and wearable action camera with an iconic cubic shape. In July 2015, GoPro Inc. (a Delaware Corp.) launched the GoPro Hero4 Session, its smallest camera maodel yet.

C&A Marketing protected its cubic action camera design through a U.S. design patent (U.S. design patent No. D730,423, (filed Jan. 5, 2014: the D'423 patent). GoPro was also granted at the USPTO a patent (but not a design patent) for a "camera housing for a square-profile camera" (U.S. patent No. 8,992,102, filed Jan. 6, 2014). This latter patent was (by coincidence) filed the day after C&A Marketing's design patent.

On November 3, 2015, C&A Marketing filed a complaint for patent infringement and request for injunction relief at the US District Court for the District of New Jersey, alleging that its D'423 patent had been infringed by GoPro.

A picture is worth a thousand words, here is a side-by-side representation of the wearable cameras. On the left, the figure on the face of the '423 patent and on the right side the GoPro Hero4 Session.

C&A Marketing alleges, in its complaint that "GoPro has infringed and continues to infringe the '423 patent by using, selling and/or offering to sell in the United States, and/or importing into the United States, the Hero4 Session discussed in this Complaint, which embodies the design covered by the '423 design patent. GoPro's infringing activities violate 35 U.S.C. § 271 (Infringement of patent).  Under 35 U.S.C. § 283, C&A Marketing is entitled to an injunction barring GoPro from further infringement of the '423 patent".

This is the first cube-shaped product for GoPro. As shown in the picture below, the predecessor to this product (the GoPro Hero4 qnd the GoPro Hero 3+) share a design common to all GoPro predecessor camera back to the original. GoPro will most likely argue that the similarities are limited to the basic or functional elements in the design patent; or cover the structural aspects of the article. A defence based on the lack of evidence of actual deception of consumers could also be raised (but it will be a hard shot).

Although customers do believe in change and friendly and easier cameras, one cannot ignore the resemblance with the (design) patent litigations between Samsung Electronics Co., Ltd, and Apple Inc. in the smartphone area. Following the iPhone, Samsung suddenly made a new device that was rectangular in form and had rounded corners. Following the Polaroid Cube ...

 Stay tuned!

Written for the Class 99 design law weblog by Thomas Dubuisson (@tdubuisson)