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Image: Balenciaga

Ever since they have shown up on everyone from Kim Kardashian and Jennifer Lopez to Ruth Bader Ginsburg, Hillary Clinton, and Millie Bobby Brown’s Stranger Things character Eleven to the models in Balenciaga’s 2018 resort lookbook, scrunchies have been itching for a proper post-1980s comeback. But while the throwback hair accessory has been swiftly finding favor amongst the fashion crowd (Vogue recently called it “the unlikely power accessory of the season”), it has also found its way into the center of a new lawsuit.

Yes, scrunchies are the focal point in a new declaratory judgment action that a Chinese Amazon seller has initiated, alleging that a “substantial controversy” exists in light of a Michigan-based company’s assertion that the two companies’ velvet hair scrunchies are a bit too similar for comfort.

According to the complaint that Handong Honghui Food Machinery Co., Ltd dba Seven Style (“Seven Style”) filed in a federal court in Los Angeles last week against Wouldn’t It Be Nice LLC (“WIBN LLC”), Shandong-based Seven Style claims that it received an email from Amazon in June “stating that their listing for [their Premium Velvet Hair Scrunchies] was removed based on a third-party complaint for the potential intellectual property infringement.” The intellectual property at issue? A design patent for the ornamental design of a scrunchie held by WIBN LLC.

 WIBN LLC’s scrunchie (left) & Seven Style’s scrunchie (right) WIBN LLC’s scrunchie (left) & Seven Style’s scrunchie (right)

Seven Style asserts that despite WIBN LLC’s “complaint to Amazon” in furtherance of which it is seeking to “prevent [Seven Style] from making, using, selling, and/or offering to sell the [allegedly infringing scrunchies] in the U.S. and through Amazon.com,” it is not running afoul of the law.

In fact, Seven Style argues that its scrunchies – ones that are sold and fulfilled by Amazon, which is not named as a defendant in the case – look nothing like WIBN LLC’s products. To be exact, Seven Style claims that unlike WIBN LLC’s “distinct petal-shaped” scrunchies, its own scrunchies are “similar to regular hair scrunchies” in that they have “an unfixed shape and is hard to form into a petal like shape.” WIBN LLC’s patent-protected scrunchies, on the other hand, “retain [their] petal-like shape at all times.”

This difference and others “establish that [Seven Style] did not infringe, either directly or indirectly,” WIBN LLC’s patent, thereby giving rise to a controversy that requires court intervention, according to Seven Style. As a result, the scrunchie-seller is asking the court to determine – and formally declare – that it is not infringing WIBN LLC’s patent.

As for the strength of Seven Style’s case against WIBN LLC, design patent expert and University of Oklahoma College of Law professor Sarah Burstein says, “This strikes me as a very strong non-infringement claim” due to the visual dissimilarities between the two companies’ scrunchies, she Burstein believes are “plainly dissimilar as a matter of law.”

More than that, Burstein claims that “if WIBN LLC’s patent is broad enough to cover the accused product,” (i.e., Seven Style’s scrunchies), “then I definitely wore some invalidating prior art back in the day.” In other words, if the protections afforded by WIBN LLC’s patent are so expansive that the patent extends to its petal-shaped scrunchies, as well as Seven Style’s products, which are of an unfixed shape, then the scope of the patent is likely too broad to be valid given patent law’s novelty requirement. After all, patent law will not protect something if it was known to the public – by way of prior art – before the applicant filed for patent protection. And as anyone who lived through the 80s knows, scrunchies of an unfixed shape are hardly a “novel” invention.

UPDATED (October 28, 2019): Prior to filing an answer or motion to dismiss, Shandong Honghui Food Machinery Co. filed a motion to voluntarily dismiss the case, indicating that the parties resolved the matter outside of court. At least one of the company’s listings for scrunchies remains live on Amazon, while others have been removed.

*The case is Shandong Honghui Food Machinery Co., Ltd dba Seven Style, a China Limited Company, v. Wouldn’t It Be Nice LLC, 2:19-cv-07347 (C.D.Cal).