Leszczynski v. Kitchen Cube LLC, 2024 WL 1829620, No. 8-23-cv-01698-MEMF-ADS (C.D. Cal. Apr. 17, 2024)
Leszczynski invented a measuring cube that combines various measuring volumes into a single cubical structure. He posted the Cube design and 3D print files on Thingiverse.com, the largest site for 3D print objects. The Cube file was provided under a Creative Commons, non-commercial, no derivatives license.
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| Thingiverse cube |
Kitchen Cube made and sold copies
of the Cube. It advertised “This device was one of the most popular items on a
popular 3D printing website with over 20,000 unique downloads” on its website,
at a time when Leszczynski’s Thingiverse page displayed that his Cube had been
downloaded 20,000 times. Kitchen Cube also stated on its website that “we
designed and manufactured every kitchen measuring device in one easy to use
gadget.” Kitchen Cube filed a patent application for the Cube. Other defendants
manufactured and sold the Cube with their unique branding through Kitchen Cube’s
affiliate program.
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| Kitchen Cube cube |
After dealing with
jurisdiction/proof of service, the court dismissed the copyright infringement
claim because no registration had yet been received.
The breach of
contract claim survived. Kitchen Cube argued that mutual consent and
consideration were missing, but defendants’ act of downloading or utilizing the
Cube file from Leszczynski’s Thingiverse page could constitute acceptance. Consideration
was also alleged because the design conferred benefits to defendants, and
Leszczynski received reputational benefits as a result of making the design
available.
Even though the
copyright was unregistered, Leszczynski could still have one. The court also
found, at this stage, separability under Star Athletica, essentially because it
was a 3D object (and thus could be made at a scale that would make it useless
as a measuring device). I still don’t think that can be the test; that isn’t in
fact imagining the design separately from the useful article, just imagining
the useful article at a useless scale, like a skyscraper-sized shovel.
At this stage,
Leszczynski sufficiently alleged that manufacturing and selling the Cube
constituted commercial use of the Cube, and was prohibited under the Creative
Commons license. He pled that his actual damages from the breach and/or the
copyright infringement can be measured by multiplying the number of units sold
by each defendant by $10 per unit, which sufficed. He could seek a remedy other
than termination of the license, since the license didn’t exclude the right to
seek damages.
False advertising:
Only ok against Kitchen Cube. At this stage, Leszczynski sufficiently alleged
that “Kitchen Cube’s behavior misleads the public regarding the Cube’s origin
which affects Leszczynski’s market.” This claim of reputational injury seems to
require secondary meaning, which seems like it would only be allowed under §(a)(1)(A),
which would then generate a pretty significant Dastar problem—even
under (B), the “origin” here is not physical origin.
The alleged
falsehoods: (1) that Kitchen Cube “designed and manufactured” the Cube; and (2)
that Kitchen Cube filed a patent application on the Cube. Kitchen Cube argued that
Leszczynski admits that the alleged first false statements are true, as his
copyright infringement claim is about Kitchen Cube’s manufacturing of the Cube,
and that Kitchen Cube made a change to the original Cube design.
But he clearly
alleged that the statement Kitchen Cube “designed and manufactured [the Cube]” was
misleading because Kitchen Cube did not design it, but rather used
Leszczynski’s design without authorization, even if it also made changes.
(Somebody really needs to mention Dastar.) He also properly alleged a
misstatement in the patent application because Kitchen Cube falsely claimed to
have invented the Cube (which is not in “commercial advertising or promotion”).
The court also didn’t discuss materiality (further suggesting this is really a
§43(a)(1)(A) claim).
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