Measuring device (c)able under Star Athletica; ignoring Dastar, court also allows false advertising claim

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.

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.

Kitchen Cube cube

Leszczynski sued for (1) copyright infringement; (2) violation of Creative Commons license terms; and (3) false advertising and misrepresentation.

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).