Guangzhou Caizhi E-Commerce Co., Ltd. (广州财智电子商务有限公司) on May 20 sued Canadian company Framar International, Inc. and other defendants collectively identified as Partnerships and Unincorporated Associations for infringement of its design patent U.S. Patent No. D918,473 covering a hair clip. The plaintiff and all defendants are all third-party sellers on Amazon.com.
According to a complaint filed in Chicago federal court, Niagara Falls, Ontario-based Framar is in the business of selling hair tools and accessories to hair salons, stylists, and consumers in the U.S., including the State of Illinois, through its own website and on Amazon.com. The complaint also shows all the other defendants are individuals and business entities residing overseas, such as in China, and conducting business throughout the U.S., including within Illinois, through the operation of the fully interactive, commercial online marketplaces operating under their internet stores.
The hair clip that the asserted patent is directed to is specifically termed as claw clip or jaw clip to accentuate the pronged teeth on the clip to effectively keep hair in place. As the data of Google Trends show, claw clips’ resurgence in popularity, as part of a revival of some fashion trends from the 90s and 2000s, began in 2020 and is still going on unabated. It is hard to name a single person or brand responsible for claw clips’ 90s-era claim to fame, and its design was likely inspired by the 1980s banana clip. The patent US20040226574A1 covering a claw clip was abandoned by its assignee Trippie Klipz, Inc. in 2014. The patented technology utilized in the production of claw clips was believed to have entered the public domain before the revelation of the patent in the lawsuit. Some similar cases have been initiated these two years where assumed public domain patents were applied for afresh by certain Amazon sellers to be weaponized against rival sellers.
Caizhi was incorporated in Guangzhou city, Guangdong province in 2018. Not merely coinciding with claw clips’ stylish comeback, one of Caizhi’s shareholders Xiao Zikang filed an application for the asserted design patent with the United States Patent and Trademark Office (USPTO) in 2020 and obscured the grant in 2021.
Caizhi does business as Tocess on Amazon and has registered the brand Tocess as a trademark with the USPTO. Claw clips in great varieties are the only offerings on its Amazon storefront. Caizhi also secured a design patent No. 008470710-0001 relating to the hair clip in the European Union in 2021. With the lawsuit brought by Caizhi being pending, no claw clips are seen available on defendant Framar’s Amazon storefront.
Online retail giant Amazon in recent years has taken a more active role in judging intellectual property disputes between merchants on its platform. Utility patent issues are complex, and more difficult to resolve quickly than trademark or copyright claims. Amazon’s policy is not to remove products that allegedly infringe a utility patent without a determination by a court or the International Trade Commission, but the court complaints say the e-commerce giant took down products almost immediately after receiving a complaint—including some utility-patent complaints—with little if any investigation. And design patent disputes will trigger even quicker removal. In this event, many more claw clip makers and sellers on Amazon, other than the defendants in the lawsuit, might be affected.
In the complaint, Caizhi asks the court to affirm the validity of the asserted patent, enjoin the defendants from selling infringing products on Amazon as well as other online marketplace platforms such as iOffer, eBay, AliExpress, Alibaba, and award damages from them.
The case is Guangzhou Caizhi E-Commerce Co., Ltd. v. Framar International, Inc. et al, U.S. District Court for the Northern District of Illinois, No. 1:22-CV-02677.