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Reverse passing off claim FUBAR'ed

By Rebecca Tushnet

Richardson v. Stanley Works, Inc., 2008 WL 4838708 (D. Ariz.)

Richardson sued Stanley for patent infringement and common-law unfair competition. Richardson allegedly invented and received a design patent on a hammer that can also be used as a step for overhead work, the StepClaw. (? Okay.) Richardson solicited Stanley and other companies to buy the rights; they didn?t. But Stanley then put the FuBar on the market. (? Hee.) The FuBar is a demolition tool derived from a hammer, with a design allegedly substantially similar to the StepClaw. Two articles in the popular press credit Stanley employees with the design. Allegedly, Richardson has been unable to license the StepClaw because of confusion over whether Stanley is authorized to sell Richardson?s design and whether Richardson invented the design.

State unfair competition laws are preempted by federal law when they interfere with the federal patent scheme. They need an extra element different from patent infringement to survive. False designation of origin and false advertising generally have that extra element. But failure to credit isn?t false designation of origin or false advertising. Articles not written by Stanley employees can?t form the basis of a claim against Stanley. And a claim that Stanley misrepresents the FuBar as its own product, when really Richardson owns the design patent, is barred by Dastar. Even though Richardson alleged consumer confusion, the claim is still preempted. Patent law provides the only protection Richardson can get against confusion over the source of the design.

Full post as published by 43(B)log on November 12, 2008 (boomark / email).