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Trade Dress, Design Patent and Copyright:
Strategies to Maximize Protection, Challenge
and Defeat Infringement
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WEDNESDAY, MAY 16, 2018
Presenting a live 90-minute webinar with interactive Q&A
Jonathan M. Gelchinsky, Partner, Pierce Atwood, Portland, Maine
Rachel M. Hofstatter, Of Counsel, Steptoe & Johnson, Washington, D.C.
Robert D. Litowitz, Partner, Kelly IP, Washington, D.C.
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Design Patent Protection
Robert D. Litowitz Kelly IP, LLP
Washington, DC
202-808-3572
Rob.litowitz@kelly-ip.com
Design Patent Evolution
6
Design Patent Evolution
• 1988
– “Design patents have
almost no scope.”
– In re Mann, 861 F.2d
1581 (Fed. Cir. 1988)
• Today
– Apple and Samsung in
third trial to determine
damages for design
patent infringement, after
initial award of $500
million and Supreme
Court decision on
meaning of “article of
manufacture” in 35
U.S.C. §289
7
What’s Patentable
• 35 U.S.C. §171. Patents for Designs
• Whoever invents any new, original and ornamental
design for an article of manufacture may obtain a
patent therefore, subject to the conditions and
requirements of this title
• The provisions of this title relating to patents for
inventions shall apply to patents for designs, except
as otherwise provided
8
What’s Covered?
• Shape and/or Surface ornamentation—how
something looks
9
What’s not covered?
• New and useful processes, machines, or composition of
matters, or any new and useful improvement thereof, i.e., how
the thing works –Utility Patent 35 U.S.C. 171(a).
• Source of Goods (word, name, symbol, or design, or any
combination thereof) –Trademark 15 U.S.C. §1127.
• Expression of an idea (literary, dramatic, musical, architectural,
cartographic, choreographic, pantomimic, pictorial, graphic,
sculptural, and audiovisual creations) -Copyright
10
Design Patent vs. Trade Dress
• Product design can be protected by
either or both
– Different requirements and tests for what’s eligible, what’s
valid, and what’s infringed
11
What rights are granted?
• The right to exclude others from making,
using, selling, offering for sale, or importing
articles to which the patented design is
applied. 35 U.S.C. §271.
12
Term of protection
• In general, 15 years after the date of issuance
of the patent.
13
Requirements for Patentability
• Novel -- does not already exist (not in “prior art”)
• Nonobvious -- to a designer of ordinary skill who designs
articles of the type involved (not ordinary consumer)
• Ornamental –cannot be entirely functional or dictated by the
article’s purpose, e.g., design for “key,” dictated by need to fit
lock, devoid of any decorative or aesthetic feature
– If a variety of designs could achieve the same function, the design is
ornamental.
14
Requirements for Trade Dress
• Use in commerce
• Secondary meaning
• Non-functional
– essential to the use or purpose of the article or
[that] affects the cost or quality of the article,'
that is, if exclusive use of the feature would put
competitors at a significant non-reputation-related
disadvantage
• Qualitex v. Jacobson Prods., 514 US 159 (1995)
15
Apple iPhone
• Trade dress--functional • Design patent—not
functional
16
One Year Statutory Bar
17
Design Patent Applications
• Specification--Brief Description of the Figures.
• Disclaimer of unclaimed subject matter
– Broken lines used to define boundary/environment
18
Drawings Reign Supreme
• Drawings = the Design Claim.
• Front, Rear, and Top, perspective(s)
• “Clear and complete . . . Nothing left to
conjecture” MPEP 1503.02
19
Drawings Define the
Scope of Patent
20
Why Get U.S. Design Patents?
• Inexpensive: $2,000-4,000, with no post-grant fees
• Quick: Can be obtained in as quickly as 3-6 months
with advance planning and expedited examination (1-
2 years standard)
• No “use in commerce” requirement
• No requirement for secondary meaning
• Functionality rarely a problem (compare trade dress)
21
Examples of Design Patents
22
More examples
23
Born with a silver spoon? Gorham v. White, 81 U.S. 14 Wall. 511 511 (1871)
24
Gorham’s Ordinary Observer Test for
Infringement
• If, in the eye of an ordinary
observer, giving such
attention as a purchaser
usually gives, two designs
are substantially the same --
if the resemblance is such as
to deceive such an observer
and sufficient to induce him
to purchase one supposing
it to be the other -- the one
first patented is infringed by
the other.
25
The Modern Test For Infringement
of a Design Patent
• The Gorham “ordinary observer” test +
– Whether an ordinary observer, familiar with
the prior art, would be deceived into thinking
that the accused design was the same as the
patented design.
• Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.
2008) (modifying Gorham v. White, 81 U.S. 511 (1871)).
– Jettisoned “Point of Novelty” test
26
Infringement Example
• Crocs, Inc. v. Int’l Trade Comm’n (Fed. Cir. 2010)
27
Crocs, Inc. v. Int’l Trade Comm’n (Fed. Cir. 2010)
– “[M]inor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement.” Instead, ordinary observer must compare “overall impression or effects” of the designs.
28
Infringement Examples
• Microsoft Corporation v. Corel Corporation, et al.,
2018 WL 2183268 (N.D. Cal. 2018) (design
patents on graphical user interfaces had been
infringed)
• Apple Inc. v. Samsung Elecs. Co., 2018 WL 1586276
(N.D. Cal. 2018) (Samsung was held to have
infringed Apple’s design patent, new trial taking
place to determine damages)
29
Infringement Examples
• Hafco Foundry & Mach. Co., Inc. v. GMS Mine Repair
& Maint., Inc., 2018 WL 1786588 (S.D.W. Va. 2018)
(design patent holder for Rock Dust Blower won
permanent injunction)
• Auto. Body Parts Ass'n v. Ford Glob. Techs., LLC, 293 F.
Supp. 3d 690, 707 (E.D. Mich. 2018) (ruling in
favor of design patent holder for car parts) – ON
APPEAL
30
Infringement Examples
• SATA GmbH & Co. KG v. NingBo Genin Indus. Co.,
2017 WL 6003055 (D. Nev. 2017) (injunction
granted in favor of design patent holder for paint
spray gun)
• Govino, LLC v. WhitePoles LLC, 2017 WL 6442187
(N.D. Cal. 2017), report and recommendation
adopted, 2017 WL 6442188 (N.D. Cal. 2017)
(default judgment granted for trade dress and
design patent holders for wine glasses)
31
Infringement Examples
• BMW of N. Am., LLC v. Mazz Auto Grp., Inc., 2017
WL 4736688 (C.D. Cal. 2017) (permanent
injunction granted in favor of design patent and
trademark holder BMW)
• Boostnatics, LLC. v. I Max Trading, Inc., 2017 WL
5592891 (C.D. Cal. 2017) (court issued judgment
stating that defendant had infringed plaintiff ’s
design patent for keychain)
32
Infringement Examples
• Capbran Holdings, LLC v. Firemall LLC, 2017 WL
4769434 (C.D. Cal. 2017) (summary judgment
granted in regards to design patent holder’s claim
of infringement on blender)
• Origami Owl LLC v. Mayo, 2017 WL 413075 (D.
Ariz. 2017) (summary judgment and permanent
injunction granted for design patent and
trademark holder for lockets)
33
Infringement Examples
• Oakley, Inc. v. Moda Collection, LLC, 2016 WL
7495837 (C.D. Cal. 2016) (permanent injunction
granted in favor of design patent holder for
glasses)
• Columbia Sportswear N. Am., Inc. v. Seirus Innovative
Accessories, 202 F. Supp. 3d 1186 (D. Or. 2016)
(court held that defendant infringed plaintiff ’s
design patent on heat reflection material)
34
Infringement Examples
• Gillette Co. v. Save & Disc. LLC, 2016 WL 3745764
(S.D. Ohio 2016) (injunction and damages
awarded in favor of design patent holder for
razors)
• Gryphon Mobile Elecs., LLC v. Brookstone, Inc., 2016
WL 7637987 (C.D. Cal. 2016) (injunction and
damages awarded in favor of design patent holder
for a mobile charging device)
35
Infringement Examples
• Kryptek Outdoor Grp., LLC v. Salt Armour, Inc., 2016
WL 7757267 (E.D. Tex. 2016) (plaintiff received
damages for defendant’s infringement of its design
patent for sheet material with a camouflage
pattern)
• D.light Design, Inc. v. Boxin Solar Co., 2015 WL
7731781 (N.D. Cal. 2015) (permanent injunctions
and damages awarded to holder of design patents
in solar powered lights)
36
Infringement Examples
• Orbit Irr. Prod. v. Sunhills Int'l, 2015 WL 1393232 (D.
Utah 2015) (court granted permanent injunction
for holder of design patents on hose nozzles)
• Rubbermaid Commercial Prod., LLC v. Tr. Commercial
Prod., 2014 WL 4987881 (D. Nev. 2014)
(permanent injunction granted in favor of design
patent holder on carts)
37
Infringement Examples
• Deckers Outdoor Corp. v. Ozwear Connection Pty Ltd.,
2014 WL 4679001 (C.D. Cal. 2014) (court
granted permanent injunction and damages in
favor of design patent holder for boot tops); see
also Deckers Outdoor Corp. v. TKM Forest Hills, LLC,
2014 WL 4536715 (E.D.N.Y. Sept. 11, 2014);
Deckers Outdoor Corp. v. Superstar Int'l, Inc., 2014
WL 12588480 (C.D. Cal. 2014)
• Conair Corp. v. K & A Beauty, LLC, 2014 WL
4385635 (M.D. Fla. 2014) (permanent injunction
granted in favor of design patent holder for hair
styling apparatus)
38
Impact of Prior Art on Infringement Issue
39
Fed. Circuit’s Test for Design Patent
Obviousness
• whether the claimed design would have been
obvious to a designer of ordinary skill who
designs articles of the type involved
– Primary reference—”basically the same” design
characteristics
– Secondary references, so related to the primary
reference that skilled designers would be
motivated to combine them to create same
overall visual appearance as the claimed design
40
Obviousness illustrated by K9 Sports JerseysMRC Innovations, Inc. v. Hunter Manufacturing, 747 F.3d 1326 (Fed. Cir. 2014),
• Eagles Jersey: Primary reference—
basically the same overall look as
patented design;
• V2 Jersey: related enough to
primary to be secondary
reference
• the “striking similarity [between
all three] would have motivated a
skilled designer to combine
features from one with features
of another.”
41
Have You Heard About
Apple v. Samsung???
V.
42
Apple v. Samsung Design Patent Battle
• In April 2011, Apple sued Samsung alleging that twenty-eight Samsung products
infringed the patents below:
– Design Patent No. D618,677 (the “D’677” patent)
– Design Patent No. D593,087(the “D’087” patent)
– Design Patent No. D604,305 (the “D’305” patent)
• Samsung countersued, alleging that Apple’s iPhone and iPad products infringed
various Samsung utility patents.
43
Case History
• 2012 jury verdict
• Samsung infringed “D’677, D’087, D’305, utility patents and trade dress
• $1,049 billion in damages/reduced to app. $600m/new trial ordered on utility and design patent damages
• 2013 trial--$290m award for design and utility patents
• 2015 Federal Circuit—upheld verdict on design/utility patents. Vacated jury verdict as to trade dress claims—found trade dress “functional.”
• 2015—partial final judgment entered for $548m
• 2016—SCOTUS grants certiorari: “Where design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?”
44
Damages
• 35 U.S.C. 284. Damages
– Same damages as for utility patents
– Injunction, money damages, attorney’s fees
– Reasonable royalty, price erosion, incremental profit
• 35 U.S.C. 289. Additional Remedy…
– Infringer’s total profit from sales of any “article of manufacture” to which the patented design has been applied
– Not less than $250
– Cannot recover profit twice—in other words you can’t get 284 and 289 damages
45
What’s the article?
• SCOTUS Apple v. Samsung 137 S.Ct. 429
(2016):
• “Article of manufacture” “encompasses both a
product sold to a consumer and a component
of that product . . . whether sold separately or
not.”
• Declined to set out test for identifying the
relevant article
46
Retrial: Four-Factor Test
• Factor 1: The scope of the design claimed in the patent,
including the drawing and written description
• Factor 2: The relative prominence of the design within the
product as a whole
• Factor 3: Whether the design is conceptually distinct from
the product as a whole
• Factor 4: The physical relationship between the patented
design and the rest of the product, including whether the
design pertains to a component that a user or seller can
physically separate for the product as a whole, or whether the
design is embodies in a component that is manufactured
from the rest of the product, or if the component can be sold
separately.
47
Design Patent Take-Away
• Once a bit player • Now a star with clout
48
TRADE DRESS BASICS
Rachel Hofstatter, Steptoe & Johnson LLP
202-429-3903 rhofstatter@steptoe.com
May 16, 2018
What is Trade Dress?
▪ Trade dress refers to the total or overall image and appearance of a
product or its packaging.
– Product design
– Product packaging
▪ Can refer to part of an image or all of an image
50
What is Trade Dress?
▪ The Supreme Court quoted the Eleventh Circuit: “Trade dress involves
the total image of a product and may include features such as size,
shape, color or color combinations, texture, graphics, or even particular
sales techniques.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763
(1992).
51
Examples of Trade Dress
52
Product Design vs. Product Packaging
▪ Product design refers to the shape or appearance of a product itself.
Also known as product configuration.
– Examples
• Design of a medical instrument
• Shape of a sneaker
• The Maker’s Mark wax bottle top configuration
• Teddy bear appearance
▪ Product packaging refers to the labels, wrappers and containers used in
packaging a product
– Examples
• Coca Cola Bottle
• Design of a fitness facility
• Restaurant interior or exterior
53
What Is Not Trade Dress?
▪ Courts have found that product design or packaging can be barred from
protection as “generic”:
– Mere theme or style of business/concept
• Jeffrey Milstein, Inc. v. Greger, Lawlor, Roth, Inc., 58 F.2d 27 (2d Cir. 1995) (idea of
creating greeting cards out of die-cut photographs not protected as trade dress).
– Ordinary shapes
• Kendall-Jackson Winery, Ltd. v. E. & J. Gallo Winery, 150 F.3d 1042 (9th Cir. 1998)
(purple grapes appearing on a wine bottle used by many competitors and considered
generic and not protected trade dress).
• Glassbaby, LLC v. Provide Gifts, Inc., 102 U.S.P.Q.2d 1155 (W.D. Wash. 2001) (claimed
trade dress of the shape of a round glass container with convex sides, thick clear base
and wide mouth for votive candles generic).
54
Test for Infringement
▪ Three elements of a trade dress infringement claim:
– 1. Plaintiff owns a protectable trade dress in a clearly articulated design or
combination of elements that is either inherently distinctive or has acquired
distinctiveness through secondary meaning
– 2. Plaintiff’s trade dress is not functional
• Benefit to federal registration of trade dress: The Lanham Act places the burden of
showing nonfunctionality on the plaintiff if the trade dress is not registered. A federal
registration is presumptive evidence of non-functionality, and it is the defendant’s
burden to prove functionality. (Lanham Act Section 43(a)(3))
– 3. The accused design creates a likelihood of confusion as to source,
sponsorship, affiliation or connection.
Defined Trade Dress
Distinctive Likelihood of Infringement
Not Functional Confusion
55
Defined Trade Dress
▪ A court needs to know the exact elements claimed to be protected for
two reasons:
– 1. To determine whether the trade dress is protectable; and
– 2. To determine whether the accused trade dress infringes the plaintiff’s.
– Bryant v. Matvieshen, 904 S. Supp. 2d 1034 (E.D. Cal. 2012) (description of
website’s overall appearance insufficient to define trade tress; “the [plaintiff]
needs to clearly define the specific elements that constitute the trade dress”)
▪ Fairness: McCarthy has stated, and courts have agreed, that the “law of
trade dress should not be used as an anti-competitive weapon based
upon undefined claims of ‘trade dress.’” McCarthy on Trademarks and
Unfair Competition Section 8:3.
– Unfair to defendants to defend against claims of exclusivity that are of
unknown dimensions. See Planet Hollywood Inc. v. Hollywood Casino Corp.,
80 F. Supp. 2d 815 (N.D. Ill. 1999) (unfair to defendant to define the plaintiff’s
trade dress as a general “Hollywood theme”).
56
Were these descriptions protectable trade dress?▪ Hummers: “the exterior appearance and styling of the vehicle design which includes the grille,
slanted and raised hood, split windshield, rectangular doors, squared edges, etc.” General Motors
Corp. v. Lanard Toys, Inc., 468 F.3d 405 (6th Cir. 2006), cert. denied, 128 S. Ct. 356 (U.S. 2001).
▪ David Yurman jewelry: “the artistic combination of cable [jewelry] with other elements” for a line of 18
kinds of jewelry such as rings, bracelets and earrings. Yurman Design, Inc. v. PAJ, Inc., 262 F.3d
101 (2d Cir. 2001).
▪ Marilyn Monroe Wine: “high quality, distinctive photographs of Marilyn Monroe in various poses
taken at different times during her career that show her, [sic] beauty, glamour and sex appeal.”
Nova Wines, Inc. v. Adler Fels Winery LLC, 467 F. Supp. 2d 965 (N.D. Cal. 2006).
▪ Legal Website: Legal website features, “includ[ing], but…not limited to: A blue header bar listing
topics in white type relating to personal injury and mass torts, separated by white vertical bars…. B.
Directly above (A) on the left is the firm name, logo, and the descriptive line, “A National Law Firm.”
C. Directly below (A) is an element of scrolling images and news headlines with back, pause and
forward buttons. D. Directly below (C) is a shaded box containing links to current drugs, products
and legal issues, with just headers and no additional description. E. A blue footer bar of
approximately ten lines repeating the element (B). F. A brightly colored side banner form allowing
visitors to input: (i) their personal information; (ii) the date of their incident; (iii) the name of the drug,
device or accident description; and (iv) a description of their case, with a larger white text heading
that states: “FREE CASE REVIEW NO COST NO OBLIGATION” G. A blue, floating side banner,
addressed to visitors with a question, which states in white type “FREE CASE REVIEW” and clicks
through to a page with a case submission form. H. Topic pages that click through from (A) and list
subtopic pages on numerous liability issues. Parker Waichman LLP v. Gilman Law, 2013 WL
3863928 (E.D.N.Y. July 24, 2013).
57
Distinctiveness: Inherent or Acquired
▪ Trade dress can be inherently distinctive, as the Supreme Court ruled in Taco
Cabana, except:
– Product design can never be inherently distinctive and requires proof of
acquired distinctiveness. Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529
U.S. 205, (2000)
– “Look and feel” (e.g. of a website) requires proof of secondary meaning
given conceptual similarity to “design.” Ingrid & Isabel, LLC v. Baby Be
Mine, LLC, 70 F. Supp. 3d 1105 (N.D. Cal. 2014)
– Color is not inherently distinctive and requires proof of acquired
distinctiveness. Qualitex Co. v. Jacobson Products, Inc., 514 U.S. 159
(1995)
▪ Close calls: When in doubt, courts err on the side of product design requiring
evidence of acquired distinctiveness.
58
U.S Trademark Registration 4,021,593 by Apple Inc. for
retail store configuration
Inherent Distinctiveness for Product Packaging
▪ How does a court decide if product packaging is inherently distinctive?
– Trade dress requires a different evaluation than trademarks for inherent
distinctiveness. The Abercrombie fanciful/arbitrary/suggestive/descriptive
spectrum does not apply.
– The Seabrook test:
• (1) whether the design or shape is a common, basic shape or design;
• (2) whether it was not unique or unusual in a particular field;
• (3) whether it was a mere refinement of a commonly-adopted and well-known form of
ornamentation for a particular class of goods which consumers would view as mere
ornamentation.
• If the trade dress fails any of these factors, it is not inherently distinctive. Seabrook
Foods, Inc. v. Bar-Well Foods Ltd., 568 F.2d 1342 (C.C.P.A. 1977).
59
Inherent Distinctiveness for Product Packaging
▪ Examples
– In re Chippendales USA, Inc., 622 F.3d 1346 (Fed. Cir. 2010): Chippendales
uniform not inherently distinctive because it was a mere refinement of the
Playboy trade dress of a bunny suit with cuffs and collar that was used for
decades before the applicant’s trade dress.
– Amazing Spaces, Inc. v. Metro Mini Storage, 608 F.3d 225 (5th Cir. 2010):
finding a star within a circle design not inherently distinctive because evidence
showed many similar or identical designs; this design was not unique.
– AmBrit, Inc. v. Kraft, Inc., 805 F.2d 974 (11th Cir. 1986), cert. denied, 481 U.S.
1041 (1987): under Seabrook test, an ice cream wrapper with a pebbled
texture, image of a polar bear and sunburst, bright coloring and square shape
was found inherently distinctive.
– In re Frankish Enters., 113 U.S.P.Q.2d 1964 (TTAB 2015): finding that
prehistoric animal design on monster truck was inherently distinctive
under the Seabrook test
▪ Cases indicate that designs need to be unique in the market
and prominent to be inherently distinctive.
60
Acquired Distinctiveness: Product Design/Color
▪ In 2000, the Supreme Court made it harder for plaintiffs to prove trade
dress infringement of product design by ruling that product design can
never be inherently distinctive in Wal-Mart.
▪ Consumers must recognize that the trade dress identifies a single
source of the product, whether or not the source is known by name.
▪ Heavy burden on the plaintiff
– In re MGA Entertainment, Inc., 84 U.S.P.Q.2d 1743 (TTAB 2007): finding the
applicant’s burden heavier where the claimed mark is a box design used to
identify boxes [product design], as opposed to a box design used to identify the
contents of the box [product packaging].
▪ Assumption is that consumers do not usually perceive a product’s
design to identify and distinguish source.
▪ Benefit to registration: Once a registration of a trade dress is
incontestable, lack of distinctiveness is not challengeable. While
contestable, the trade dress is presumed valid with secondary meaning,
but the presumption may be rebutted.
61
Factors to Show Acquired Distinctiveness
▪ Advertising expenditures
▪ Consumer studies linking the mark to the source
▪ Unsolicited media coverage of the product
▪ Sales success
▪ Attempts to plagiarize the mark
▪ Length of exclusivity of the mark’s use
▪ “Look for” advertising
62
Acquired Distinctiveness Example
▪ Christian Louboutin, S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d
206 (2d Cir. 2012) (reversing District Court).
63
– Red outsole for shoes of a contrasting color had acquired
distinctiveness as a mark – indicates Louboutin as the source
• Use since 1992
• Red placed in a context considered “unusual”
• CEO of YSL’s parent admitted “distinctive signature”
• Substantial investment in building the reputation in the
mark
• Red carpet coverage, press, use in popular media
• Survey evidence
– Red outsole for red shoes had not acquired distinctiveness as
a mark
• Only 4 of hundreds of photos of Louboutin shoes were
monochromatic
• Survey evidence
Functionality
▪ Trade dress is not protected if it is de jure functional – incapable of serving as a
source indicator.
▪ McCarthy explains it in one sentence: “[S]omething is “functional” if it works better
in this shape.” McCarthy Section 7.63.
▪ Competitive need test: In re Morton Norwich Prods., Inc., 213 USPQ 9 (CCPA
1982).
– Is the product design the best or one of a few superior designs such that excluding
others from using it will hurt competition?
– 4 factors:
• Existence of utility patent disclosing the utilitarian advantages of the design
• Advertising materials touting the utilitarian advantages of the design
• Availability of functionally equivalent designs
• Facts indicating the design results in a comparatively simple or cheap method of
manufacturing a product.
▪ Parties have criticized their own products to argue non-functionality. See
Specialized Seating, Inc. v. Greenwich Industries, LP, 616 F.3d 722, 727 (7th Cir.
2010) (chair maker argued that other folding chair designs are stronger and less
likely to collapse).
64
Functionality
▪ The “traditional rule”: TrafFix Devices, Inc. v. Marketing Displays, Inc.,
532 U.S. 23 (2001)
– Reaffirms the rule from Inwood Labs, Inc. v. Ives Labs, Inc., 456 U.S. 844
(1982)
– A product feature is functional if it is essential to the use or purpose of the
article or if it affects the cost or quality of the article.
• If de jure functional under this test, there is no need to use the comparative needs test.
• Exception: aesthetic functionality, inquiring into whether protection of the trade dress
would put competitors at a “significant, non-reputation-related disadvantage” is relevant.
– The Federal Circuit in Valu Engineering, Inc. v. Rexnord Corp., 61 USPQ 2d
1422 (Fed. Cir. 2002), read TrafFix as not removing the competitive needs test
entirely. Rather, it is ok to still consider whether there are alternate designs
available, i.e., a competitive need, as part of the overall mix. But, there is no
need to do so if the court finds the design functional under Inwood’s test.
– The Seventh Circuit reads the traditional rule broadly: “a design need not be
‘the only way to do things to be functional’; it need only ‘represent[ ] one of
many solutions to a problem’…. [T]he the bar for functionality is so low that it
can often be decided as a matter of law.” Arlington Specialties, Inc. v. Urban
Aid, Inc., 847 F.3d 415, 419 (7th Cir. 2017).
65
Functionality: Utility Patent Kills Trade Dress
▪ Under TrafFix, existence of a utility patent is “strong evidence that the
features claimed therein are functional.”
▪ Georgia-Pacific Consumer Products LP v. Kimberly-Clark Corp., 647 F3d 723 (7th
Cir. 2012). “[W]e find that the “central advance” claimed in the utility patents is
embossing a quilt-like diamond lattice filled with signature designs that improves
(perceived) softness and bulk, and reduces nesting and ridging. This is the same
“essential feature” claimed in the trademarks. Thus, the language of the patents—the
claims, abstracts, and preferred embodiment—is “strong evidence” that the Quilted
Diamond Design is functional, and Georgia-Pacific has failed to offer evidence that the
design is merely incidental.”
66
Examples of Functional Designs
67
White band at the bottom portion of an insulated
paper cup that is created due to the positioning of
the outer layer and the insulating layer vis-à-vis the
inner cup layer is functional based on both layer’s
function in insulating and holding warm beverages.
Dixie Consumer Products, LLC v. Huhtamaki
Americas, Inc., 691 F. Supp. 2d 1372, 1378 (N.D.
Ga. 2010)
Five-sided speaker
enclosure which
conforms to the shape of
the sound matrix is an
efficient and superior
design as an enclosure
and, thus, de jure
functional. In re Bose
Corp., 772 F.2d 866,
873 (Fed. Cir. 1985)
“Orange-flavor” cannot serve as trade
dress for anti-depressant pills since
flavor performs a utilitarian function that
cannot be monopolized without
hindering competition in the
pharmaceutical trade. In Re N.V.
Organon, 79 U.S.P.Q.2d 1639 (T.T.A.B.,
June 14, 2006)
Round tablet shape and the colors
blue and orange used in conjunction
with “AD” marking on pills are
functional and cannot serve as trade
dress for off-patent pharmaceutical
drug. Shire US Inc. v. Barr Labs.,
Inc., 329 F.3d 348, 350 (3d Cir.
2003)
The functionality of a flared, kite-shaped
outside front pane design for a baby carrier
is evidenced by utility patents and
advertisements promoting comfort and
safety of the design. In Re Baby Bjorn Ab,
2004 WL 2750196 (T.T.A.B., Nov. 18, 2004)
Functionality: Advertising Utility Kills Trade Dress
▪ In re Gibson Guitar Corp., 61 USPQ 2d 1948 (TTAB 2001). The design
of a guitar was not entitled to registration as trade dress.
– “The new Epiphone Advanced JumboTM (AJ) acoustics are different from any
other ordinary dreadnought guitar. Our AJ body shape not only looks more like
a bell, but also rings like a bell. The more rounded upper bout produces
sweeter highs while the broader waist and wider lower bout creates more
powerful lows. Combined with a solid Sitka spruce top, mahogany back and
sides, reverse-bellyTM rosewood bridge and AJ scalloped top bracing, this
unique body shape creates a sound which is much more balanced and less
“muddy” than other ordinary dreadnought acoustics.”
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Aesthetic Functionality
▪ Most courts follow competitive need test. In Christian Louboutin, the
Second Circuit stated the test below, but did not rule on the merits.
– 1. Is the design essential to the use or purpose of the product;
– 2. Does the design affect the cost or quality of the product
– 3. If necessary, will the design have a significant effect on competition
▪ Examples
– Maker’s Mark Distillery, Inc. v. Diageo North America, Inc., 679 F.3d 410 (6th
Cir. 2012) (red dripping wax seal on MAKER’S MARK bourbon whiskey bottle
not aesthetically functional because it served no utilitarian purpose, there were
alternative ways to appealingly seal a bottle, and competitors were not put to a
competitive disadvantage by not using the red dripping wax seal).
– In re Florists’ Transworld Delivery, Inc., 2013 TTAB LEXIS 115 (TTAB 2013)
(there is a competitive need in the floral industry to use the color black for floral
packaging, such as for floral arrangements associated with stylish or formal
events, funerals, or Halloween).
69
70
Which of these qualify for trade dress protection?
Why?
Plush toys characterized by large heads,
specially-designed large round eyes with
large black pupils and colored borders, and
recognizable stitching patterns are
aesthetically functional and, without
secondary meaning, cannot constitute trade
dress. Aurora World, Inc. v. Ty Inc., 719 F.
Supp. 2d 1115, 1122 (C.D. Cal. 2009)
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Water bottle packaging featuring square shape, three-
dimensional labeling effect, and tropical motif was
inherently distinctive and had acquired secondary meaning.
Fiji Water Co., LLC v. Fiji Mineral Water USA, LLC, 741 F.
Supp. 2d 1165, 1176 (C.D. Cal. 2010)
Packaging with arbitrary
combination of colors and
graphic elements that is
neither essential to use of the
goods nor relevant to their
cost or quality are sufficiently
distinctive. Djarum v. Dhanraj
Imports, Inc., 876 F. Supp. 2d
664, 668 (W.D.N.C. 2012)
The size, color, and shape of
spherical ice cream balls is
functional and cannot qualify as
trade dress. Dippin' Dots, Inc. v.
Frosty Bites Distribution, LLC,
369 F.3d 1197, 1203 (11th Cir.
2004)
Jacket design
incorporating logo is
merely ornamental
and not inherently
distinctive. In Re
Lululemon Athletica
Canada Inc, 105
U.S.P.Q.2d 1684
(Trademark Tr. & App.
Bd. Jan. 11, 2013)
Octagonal shaped watch face with eight
hexagonal screw-heads is non-functional
and is protectable based on secondary
meaning. Audemars Piguet Holding S.A.
v. Swiss Watch Int'l, Inc., 12 CIV. 5423
HB, 2014 WL 47465 (S.D.N.Y. Jan. 6,
2014)
XX X
√
√√
Which of these qualify for trade dress protection?
Why?
Likelihood of Confusion
▪ “A likelihood of confusion exists when consumers viewing the
defendant's trade dress probably would assume that the product it
represents is associated with the source of a different product identified
by the plaintiff's similar trade dress.” McNeil Nutritionals, LLC v.
Heartland Sweeteners, LLC, 511 F.3d 350 (3d Cir. 2007) (store brand
artificial sweetener packaging not confusingly similar with Splenda
packaging).
▪ Factor-based test, varies by circuit. Example of factor list (6th Cir.):
– Strength of the plaintiff’s mark
– Relatedness of the goods or services
– Similarity of the marks
– Evidence of actual confusion
– Marketing channels used
– Likely degree of purchaser care
– Defendant’s intent in selecting its mark
– Likelihood of expansion of the product lines
72
Infringement Found - Example
▪ Maker’s Mark:
– Wax-like coating covering the cap of the bottle and trickling down the neck of
the bottle in a freeform irregular pattern. (Conceded in case enforced only in
red color.) Defendant’s Jose Cuervo tequila bottle had a red dripping wax seal.
– Likelihood of Confusion Analysis
• Conceptually and commercially strong trade dress
• Facially similar seals, although other marks on the bottles differed
• Goods “somewhat” related
• Some similar marketing channels and some different
• Careful purchasers (expensive tequila)
• No bad intent
• No actual confusion (neutral factor),
• Likelihood of expanding product lines neutral factor
– “The balance of the factors compels a finding of infringement. Excluding the neutral factors, the
majority of the factors—strength, relatedness of the goods, similarity, and marketing channels—
favor Maker's Mark. The district court found that Maker's Mark's trademark is “extremely strong,”
and we have adopted that finding. Further, we have said that the “most important Frisch factors”
are similarity and strength of the mark; both of these factors favor Maker’s Mark.”
73
Remedies for Infringement
▪ Injunction (preliminary and/or permanent)
– Can enjoin the use of the offending trade dress, require corrective advertising,
destruction of inventory, etc.
▪ Defendant’s profits
▪ Damages sustained by the plaintiff
▪ Costs of the action
▪ Attorneys’ fees in exceptional cases
▪ Treble damages available for willful infringement
▪ Statutory damages for counterfeits
74
Trade Dress Infringement Can Give Big Payouts
▪ Mixed Chicks LLC v. Sally Beauty Supply, et al., SACV11-00452 AG
(FMOx) (C.D. Ca. 2012).
– MIXED CHICKS hair products sold in translucent bottles and pumps with
orange lettering and different colors for different products
– MIXED SILK hair products sold in translucent bottles of the same shape, with
the same orange lettering and the same color products.
▪ Jury verdict:
– $839,535 actual damages
– $7.275 million punitive damages
Photo from case study, http://www.haynesboone.com/files/Uploads/Documents/
Newsletters/IP-Case-Study-Mixed-Chicks.pdf
75
Final Thoughts – Benefits to Trade Dress
▪ Indefinite in duration – as long as the trade dress continues to be used
▪ Relatively inexpensive to apply, but costs increase if there is a need to
show acquired distinctiveness
▪ Benefits to registration
– Presumptions and shifting burdens of proof (Principal Register)
• Presumption of validity (incontestable after 5 years)
• Presumption of non-functionality
– Constructive notice to third parties of the trade dress
– Federal court jurisdiction without needing to prove diversity of citizenship or
amount in controversy
– Damages available
– Ability to use ® registration symbol, providing further notice to potential
infringers that you claim trade dress rights
76
Copyright Protection for Product Designs
Jonathan M. Gelchinsky
Copyright Protection
• Copyright protects original works of authorship fixed in any tangible medium of expression, including literary works, musical works, and “pictorial, graphic, and sculptural works” (§ 102)
• “Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. (§ 101)
78
Proving Copyright Infringement
• Ownership of copyright, and
• Copying
• Direct evidence, or
• Access to the work + substantial similarity
– One definition of “substantial similarity”: “Whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Baby Buddies Inc. v. Toys “R” Us Inc., 611 F.3d 1308, 1315 (11th Cir. 2010).
79
Copyright Act - 17 U.S.C. § 101
• A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.
• Copyright law protects a “useful article” if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.
80
Separability
• Conceptual: can artistic material be conceptually separated from utilitarian aspects of the design?
• Physical: can artistic material be physically separated from utilitarian aspects of the design, and leave a still-functional design behind?
81
Separability
• Conceptual: can artistic material be conceptually separated from utilitarian aspects of the design?
• Physical: can artistic material be physically separated from utilitarian aspects of the design, and leave a still-functional design behind?
82
Conceptual Separability Tests
• Primary v. subsidiary: The primary artistic aspect of the belt buckle vs. the buckle’s subsidiary utilitarian function. Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989, 993 (2d Cir. 1980).
• Marketability: Would the article still be marketable to some significant segment of the community simply because of its aesthetic qualities? 1 Nimmer on Copyright § 2.08[B][3], at 2-101 (2014).
• Evokes separate concept: The article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. Carol Barnhart Inc. v. Economy Cover Corp. 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J., dissenting).
• Design-process approach: Whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences. Brandir International, Inc. v. Cascade Pacific Lumber Co. 834 F.2d 1142, 1145 (2d Cir. 1987).
83
Conceptual Separability Tests
• Primary v. subsidiary: The primary artistic aspect of the belt buckle vs. the buckle’s subsidiary utilitarian function. Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989, 993 (2d Cir. 1980).
• Marketability: Would the article still be marketable to some significant segment of the community simply because of its aesthetic qualities? 1 Nimmer on Copyright § 2.08[B][3], at 2-101 (2014).
• Evokes separate concept: The article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. Carol Barnhart Inc. v. Economy Cover Corp. 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J., dissenting).
• Design-process approach: Whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences. Brandir International, Inc. v. Cascade Pacific Lumber Co. 834 F.2d 1142, 1145 (2d Cir. 1987).
84
Example 1 – Statuette Lamp Base
85
Mazer v. Stein, 347 U.S. 201 (1954)
• Dancing figure statuettes used as lamp base
• “It is clear Congress intended the scope of the copyright statute to include more than the traditional fine arts.”
• “We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.”
86
Example 2 – Jeweled Belt Buckles
87
Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)
• The “primary vs. subsidiary” test
• “The primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function.”
88
Example 3 – Mannequin’s Face
89
Pivot Point Int’l, Inc. v. Charlene Prods., Inc.,372 F.3d 913 (7th Cir. 2004)
• Mannequin face (“Mara”)
• “Thus, because Mara was the product of a creative process unfettered by functional concerns, its sculptural features ‘can be identified separately from, and are capable of existing independently of,’ its utilitarian aspects.”
90
Example 4 – Outdoor Furniture
91
Design Furnishings, Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. Dec. 23, 2010)
92
• “The industrial design of the furniture clearly may not be copyrighted. Defendant has not sufficiently identified any aspect of the furniture that physically or conceptually could stand alone as a piece of art traditionally conceived.”
• “Defendant has never been able to point to what can be copyrighted.”
Example 5 – Pacifier Holder
93
• Ribbon tether, clip and snap components = utilitarian, not protectable by copyright
• Plastic teddy bear and ribbon bow = physically separable, eligible for protection
• Ribbon bow = too generic/unoriginal, not protected by copyright
• Placement of bear/ribbon at end of tether = also driven by function, not protectable
• Court compared plastic teddy bears, held no similarities apart from general idea of a bear (ears, eyes, nose, mouth, arms legs)
94
Baby Buddies Inc. v. Toys “R” Us Inc., 611 F.3d 1308 (11th Cir. 2010)
Baby Buddies
Toys “R” Us
95
Example 6 – Cheerleader Uniforms
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
96
• Circuit courts, Copyright Office, and academics have proposed at least 10 different tests to analyze separability
• Cert granted to clarify test to determine when a feature of a useful article is protectable under §101 of the Copyright Act
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
97
• Test: We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature:
1. can be perceived as a two- or three-dimensional work of art separate from the useful article, and
2. would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
98
• First prong (separate identification) - satisfied:
- Surface decorations on cheerleading uniforms are
features with PGS qualities
• Second prong (independent existence) -satisfied:
- If arrangement of colors, shapes, stripes and
chevrons were separated from uniform and applied in
other medium, e.g., painter’s canvas, would qualify as
2D works of art, and wouldn’t replicate uniform itself
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
99
• Separability question focuses on the extracted feature, not aspects of useful article that remain after extraction
• Physical/conceptual separability doctrine is abandoned
• No assessments based on designer’s artistic judgment exercised independently of function (Brandir)
• No determination based on marketability
• Design patent and copyright are not mutually exclusive
Example 7 – Hookahs
100
Inhale, Inc. v. Starbuzz Tobacco, Inc., 2017 WL 4163990 (C.D. Cal. May 8, 2017)
• Pre-SA, C.D. Cal. and 9th Cir. held that utilitarian and artistic features of hookahs not physically or conceptually separable (2012-2014); Inhale moved in 2017 for reconsideration in view of SA
• Denied:
• Inhale failed to point out sculptural feature of hookah or a set of features that may serve as the predicate for application of the SA test
• Combining two or three of these common geometric shapes together does little to improve the situation—the components of the water container at issue are simply not works of art in even the broadest, most liberal sense
101
Example 8 – Teardrop String Lights
102
Jetmax Ltd. v. Big Lots, Inc., 2017 WL 3726756 (S.D.N.Y. Aug. 28, 2017)
Application of SA test:
1. Separate identification – Satisfied: light set undoubtedly has 3-dimensional decorative covers that have sculptural qualities
2. Independent existence – Satisfied: The decorative covers are sculptural works capable of existing apart from the utilitarian aspect of the light set, i.e. the light bulbs and other components that cause them to light a room. The primary purpose of the cover is artistic; once the covers are removed, remainder is a functioning but unadorned light string.
103
Comparison of IP LawsType Term Benefits Drawbacks
Design Patent 15 years No need to prove secondary meaning
Exclusivity can provide time to build up secondary meaning for trade dress protection
Provides evidence of non-functionality, helping with eventual trade dress protection
Must be novel and non-obvious
Non-functional
Registration required
Limited duration
Trade Dress As long as use is continued
No minimal level of creativity or originality
Registration helpful, but not required
Must show secondary meaning
Non-functional
Challenges defining the trade dress
Copyright Life of author + 70, or 95 years from publication
Level of creativity is low
No secondary meaning required
Registration relatively simple, only required if pursuing federal claim
Must be original
Artistic features must be separable from utilitarian aspects
Independent creation defense
104
Merrill’s Wharf254 Commercial StreetPortland, ME 04101
Jonathan M. GelchinskyJGelchinsky@pierceatwood.com
PH /207-791-1203
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