Out-Law / Your Daily Need-To-Know

Oakley sues over Fantastic Four sunglasses promotion

Out-Law News | 26 Mar 2008 | 5:28 pm | 1 min. read

A UK company is being sued alongside comic firm Marvel and film producer Twentieth Century Fox over promotional sunglasses that mimic those in the film Fantastic Four: The Rise Of The Silver Surfer.

Oakley's design patentRDP Limited is a London-based company which sources promotional film merchandise. It lists items connected to Star Wars, Batman and Spider-Man in its list of past products.

Sports clothing and equipment firm Oakley is suing all three companies over a pair of sunglasses included in a gift pack produced to promote the Fantastic Four film. It claims that the sunglasses violate rights it holds in the design through a US design patent.

"The defendants, individually and collectively, are selling sunglasses that copy the [Oakley] design," said the company in its lawsuit. "The 'Penny' copy sunglass sold by Defendants embody the subject matter claimed in Oakley's design patents…without any license."

Actor James Marsden wore a specially-made pair of Oakley sunglasses when he played Cyclops in the film X-Men.

"On information and belief, defendants are using the copy sunglasses to promote the "Fantastic 4 Rise of the Silver Surfer" movie," say Oakley's court papers.

The patent design in question protects "the ornamental design of an eyeglass front embodied by Oakley's 'Penny' eyewear," said Oakley's papers.

A design patent exists in the US but not in the UK, where a design for sunglasses could be protected through registration with the UK Designs Registry, part of the UK Intellectual Property Office.

Oakley wants the court to award it an injunction stopping the three companies from making any sunglasses that infringe on its design patent in the future. It also wants the companies to transfer to it any profits it made on the sale of the sunglasses as well as damages in compensation for its lost profits due to the activity and a royalty on sales already made.

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