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

Leszczynski v. KitchenCube LLC, 2024 WL 1829620, No. 8-23-cv-01698-MEMF-ADS (C.D. Cal. Apr. 17, 2024)

Leszczynski inventeda measuring cube that combines various measuring volumes into a single cubicalstructure. He posted the Cube design and 3D print files on Thingiverse.com, thelargest site for 3D print objects. The Cube file was provided under a CreativeCommons, non-commercial, no derivatives license.

Thingiverse cube

Kitchen Cube made and sold copiesof the Cube. It advertised “This device was one of the most popular items on apopular 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 beendownloaded 20,000 times. Kitchen Cube also stated on its website that “wedesigned and manufactured every kitchen measuring device in one easy to usegadget.” Kitchen Cube filed a patent application for the Cube. Other defendantsmanufactured and sold the Cube with their unique branding through Kitchen Cube’saffiliate program.

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

After dealing withjurisdiction/proof of service, the court dismissed the copyright infringementclaim because no registration had yet been received.

The breach ofcontract claim survived. Kitchen Cube argued that mutual consent andconsideration were missing, but defendants’ act of downloading or utilizing theCube file from Leszczynski’s Thingiverse page could constitute acceptance. Considerationwas also alleged because the design conferred benefits to defendants, andLeszczynski received reputational benefits as a result of making the designavailable.

Even though thecopyright was unregistered, Leszczynski could still have one. The court alsofound, at this stage, separability under Star Athletica, essentially because itwas a 3D object (and thus could be made at a scale that would make it uselessas a measuring device). I still don’t think that can be the test; that isn’t infact imagining the design separately from the useful article, just imaginingthe useful article at a useless scale, like a skyscraper-sized shovel.

At this stage,Leszczynski sufficiently alleged that manufacturing and selling the Cubeconstituted commercial use of the Cube, and was prohibited under the CreativeCommons license. He pled that his actual damages from the breach and/or thecopyright infringement can be measured by multiplying the number of units soldby each defendant by $10 per unit, which sufficed. He could seek a remedy otherthan termination of the license, since the license didn’t exclude the right toseek damages.

False advertising:Only ok against Kitchen Cube. At this stage, Leszczynski sufficiently allegedthat “Kitchen Cube’s behavior misleads the public regarding the Cube’s originwhich affects Leszczynski’s market.” This claim of reputational injury seems torequire secondary meaning, which seems like it would only be allowed under §(a)(1)(A),which would then generate a pretty significant Dastar problem—evenunder (B), the “origin” here is not physical origin.

The allegedfalsehoods: (1) that Kitchen Cube “designed and manufactured” the Cube; and (2)that Kitchen Cube filed a patent application on the Cube. Kitchen Cube argued thatLeszczynski admits that the alleged first false statements are true, as hiscopyright 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 clearlyalleged that the statement Kitchen Cube “designed and manufactured [the Cube]” wasmisleading because Kitchen Cube did not design it, but rather usedLeszczynski’s design without authorization, even if it also made changes.(Somebody really needs to mention Dastar.) He also properly alleged amisstatement in the patent application because Kitchen Cube falsely claimed tohave 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).