May 7, 2024
New Lawsuit Alleges "Knockoff" Fixtures at NYC Moxy Hotel
Lighting manufacturer sues architect and others for using counterfeit fixture
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| RBW Pastille™ |
In a recently filed legal dispute surrounding the Moxy NYC Lower East Side hotel, lighting manufacturer RBW has launched a lawsuit targeting Stonehill & Taylor Architects and three other parties. The complaint centers on RBW's assertion that Stonehill & Taylor, the project's lead architect, intentionally directed the installation of counterfeit or “knockoff” light fixtures mimicking RBW's patented Pastille™ sconces in the hotel's design. PTY Lighting is alleged to have manufactured the replicas at the request of the defendants. The legal action seeks to address what RBW claims is clear infringement on their patented lighting design.
Key stakeholders in this controversy include The Lightstone Group, which owns and operates the Moxy NYC Lower East Side hotel, and Bowery Street Associates, which was involved in procuring samples of the patented sconces for evaluation. Michaelis Boyd, Inc., another defendant, is believed to have been instrumental in designing the hotel's interiors, collaborating closely with Stonehill & Taylor and Bowery Street Associates on the project.
Above: Guest room photo of Moxy Lower East Side. Source: marriott.com
It is important to note that while the Moxy brand is affiliated with Marriott International and the hotel leverages Marriott’s marketing channels, Marriott itself is not implicated in any wrongdoing in the lawsuit.
RBW, a New York based maker of design-driven luminaires, alleges that the use of these knockoff fixtures has caused significant damage, both financially and reputationally. The company argues that it spent substantial time and resources developing the patented design, which it considers one of its flagship products.
"We are humbled and grateful to see many successful partnerships and installations when our design partners and their clients choose RBW. However, we have encountered many bad actors in the industry who allegedly offer 'value engineering services' or in this case, 'bespoke' copycats that can harm our community by allegedly deliberately copying, misappropriating, and 'knocking off' high-quality, design-level lighting products protected by United States patents to maximize profits for companies engaged in the construction of luxury hotels."
- Charles Brill, Managing Partner, RBW
We reached out to Stonehill & Taylor Architects for comment on the matter, but they did not respond immediately before our deadline.
The timeline, according to RBW:
| 2018: | RBW begins developing the design for the Pastille™ sconce. |
| November 13, 2018: | RBW files an application for a design patent related to the Pastille™ sconce. |
| October 2019: | RBW provides samples of the Pastille™ sconce to Bowery Street Associates, LLC for evaluation for use in the Moxy Hotel. |
| October 12, 2020: | Luparello & Sons, fulfilling a request of the defendants, requests a quote from RBW for 647 Pastille™ sconces, receiving a quote for $434,784. |
| January 17, 2024: | RBW sends cease and desist letters to HPG, PTY, and Marriott International, demanding information about the alleged infringing light fixtures. |
| March 26, 2024: | RBW's U.S. Patent No. D1,020,048 is issued, protecting the design of the Pastille™ sconce. |
| April 26, 2024: | RBW files a lawsuit in the U.S. District Court for the Southern District of New York against Stonehill & Taylor Architects, The Lightstone Group, Bowery Street Associates, and Michaelis Boyd, alleging patent infringement and unfair competition. |
Details of the Complaint
Quoting for Light Fixtures: The lawsuit states that in October 2020, Long Island-based project distributor Luparello & Sons requested a quote from RBW for 647 Pastille™ sconces. The quoted amount was $434,784.
Sample Provision and Specification Reference: Before the design patent was issued, RBW provided samples of the Pastille™ sconces to Bowery Street Associates, another defendant in the lawsuit, for evaluation. The complaint claims that the sconces were specifically referenced in a design specification for the hotel, with a link to RBW’s website showcasing the fixture.
Above: A note in the lighting fixture schedule specifically calls out the RBW fixture as being “used for design influence” for fixture Type SW.14, but cites another manufacturer’s product in the specification.
Misappropriation of Design: After evaluating the samples, the defendants allegedly decided to reproduce the design instead of purchasing from RBW. They reportedly instructed PTY Lighting to create unauthorized replicas, which were then installed in the hotel.
Legal Accusations
Patent Infringement: The defendants are accused of violating RBW’s U.S. Patent No. D1,020,048 by creating, importing, selling, and installing light fixtures that closely resemble the patented Pastille™ sconce. The lawsuit asserts that the replica fixtures could lead to consumer confusion due to their similarity to the original design.
Unfair Competition: The defendants are also accused of unfair competition for allegedly copying the design before the design patent was granted. The lawsuit claims that the defendants copied the Pastille™ sconce’s design, which RBW invested significant time and resources in developing.
Willful Infringement: Finally, the complaint alleges that the defendants continued using the infringing fixtures despite receiving cease and desist letters from RBW, indicating willful infringement. If proven in court, this could result in enhanced damages.
In a similar case filed in 2023, RBW filed a lawsuit against Canoe Hospitality, Studio Collective, and Hotel June, alleging that imitation versions of its patented Brim sconces were used in a California hotel remodel instead of the genuine product. The case was dismissed after the parties reached a settlement.
The latest Moxy lawsuit, filed in the U.S. District Court for the Southern District of New York, highlights some of the complexities of project procurement and intellectual property rights in design, construction and lighting industries.
