DESIGN PATENTS

STATUTORY SUBJECT MATTER35 USC § 171: Patents for designs.

a) In general. Whoever invents any new, original and ornamental design for an article of manufacture may obtain a patent therefor, subject to the conditions and requirements of this title [35 USCS §§ 1 et seq.].

b) Applicability of this title. The provisions of this title [35 USCS §§ 1 et seq.] relating to patents for inventions shall apply to patents for designs, except as otherwise provided.

c) Filing date. The filing date of an application for patent for design shall be the date on which the specification as prescribed by section 112 [35 USCS § 112] and any required drawings are filed.

Articles of Manufacture Courts generally are generous with what is or is not an “article of manufacture.” “Anything made by

the hands of man” is valid subject matter. In re Hruby. This can include designs that require something outside what is described in the design to have

a complete visual effect: lamps without lampshades and fountain designs without waterspouts are still valid articles of manufacture. In re Hruby.

Similarly, an ornamental design can be a part of an article of manufacture without necessarily being the entirety of it. A company can opt to patent the design of the shank portion of a drill bit, for example, even when the shank does not exist independently from the rest of the bit. In re Zahn.

Surface ornamentation, however, is not patent-eligible. Designs must be attached in some way to an article of manufacture. While things like computer icons can be patented, they must be patented as ornamentation for a computer display (an article of manufacture) and not presented separately. Ex parte Striljand.

In re Hruby, 373 F.2d 997, 153 USPQ 61 (C.C.P.A. 1967)The full display of a design requiring something outside itself (a lampshade without an included lamp, or, as in this case, a decorative fountain that includes the waterspouts as part of the design) does not make the design something other than an “article of manufacture” and thus ineligible subject matter. The argument that it was a “fleeting design” and ineligible is rejected; “anything made by the hands of man” is valid subject matter.

In re Zahn, 617 F.2d 261, 204 USPQ 988 (C.C.P.A. 1980)An ornamental design can be a part of an article of manufacture rather than necessarily being the entirety of it. (In this case, the intended design patent was for the shank portion of a drill bit.)

Ex parte Strijland, 26 USPQ2d 1259 (Bd. Pat. App. & Int. 1992)Graphical user interfaces are patentable subject matter so long as they are presented as ornamentation for a computer display, an example of which is also included & described. (Rejected in this case because not paired with a computer display, and as such was mere surface ornamentation rather than a design to be attached to an article of manufacture)

DESIGN PATENTS

Ornamentality Functionality. Aspects of an article of manufacture that are obvious based on its functional design

do not qualify as “ornamental.” In re Carletti. This includes articles of manufacture that only have a particular functional design because of

creative and arbitrary design decisions made when designing another article of manufacture. An example would be a key functionally designed to fit a lock pattern; though either separately might qualify, the design of one is dictated by the design of the other. Best Lock.

However, an ornamental design can have functional advantages over other potential designs. A design for a rear-vision mirror that turns out to offer functional advantages over other models in terms of field of view still may be considered to be ornamental if the design was not dictated by functionality. Rosco.

Test for functionality: (PHG Technologies)

Requirement If yes If noIs there any ornamentation? ↓ X…that is not required to be there to perform the article’s function? ↓ XDo other designs share the function? ↓ X(Post-PHG) Is the device not primarily functional? ↓ XResult: (patentable

)(invalid)

Hidden-in-use test. Generally, if the design of an article of manufacture is intended to be seen at any point in its life, even if the article is not intended to be seen in its intended use, it may be protected by a design patent. A hip replacement, which may be seen in a product catalog but not when it has been implanted, is eligible for a design patent. In re Webb.

In re Carletti, 328 F.2d 1020 (C.C.P.A. 1964)Ornamental design of the article of manufacture (a gasket) was obvious based on its functional design, and therefore it is not eligible for a design patent. (Specifically, the only differences between the claimed design and the prior art were functional, and the gasket in question was standardized according to military specifications that dictated the exact position, dimensions, and tolerances of all aspects of the part, without any suggestion that these requirements were intended in whole or in part to serve as ornamentation.) “For a design to be ornamental, it must be created for purposes of ornamenting.”

Best Lock Corp. v. Ilco Unican Corp., 94 F.3d 1563 (Fed. Cir. 1996)BestLock wants a royalty from key copying. They had already patented their keyway, and sought a patent on the corresponding key.Validity of design patent must be limited to the article of manufacture in question, not the totality of the patents owned by the same party. A design patent for a keyway that dictates a specific functional design for the key does not mean that the key is more than a functional design.

Rosco, Inc. v. Mirror Lite Company, 304 F.3d 1373 (Fed. Cir. 2002)A design having particular functional benefits over another design (in this case, a design for a mirror with a superior field of view) does not necessarily mean that the superior design was dictated by functionality.

PHG Technologies, L.L.C. v. St. John Companies, Inc., 469 F.3d 1361 (Fed. Cir. 2006)

DESIGN PATENTS

Test for whether functionality or ornamentality dominates (only second patentable subject matter) is whether alternatives adversely affect utility of the article of manufacture. (Also presence/absence of advertising & its content – which is troublesome, because almost anything can be advertised as a useful feature even if it was not intended to be - or any utility patents that cover the same material.)

In re Webb, 916 F.2d 1553 (Fed. Cir. 1990)Appellants seek review of a USPTO decision rejecting their design patent application for a “grooved femoral hip stem prosthesis.” The USPTO held that the design was unpatentable because it was purely functional & because it was concealed from view in its normal use.Court held that the “general rule of thumb” that an otherwise-ornamental object that will not be observed in its final use is not eligible for a design patent is not a per se rule. (“general rule” from In re Cornwall, a CCPA case about the patentability of the design of an ornamental vent tube intended to be placed inside the wall of a house.)The “normal and intended use” of a product, including commercial sales, allowing ornamentality to be observed is sufficient. Hip replacements, designs of chewable vitamins, etc. are eligible subject matter.

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NOVELTY

Novelty Fundamentally, the test for novelty is the same as it is for utility patents, and both stem from the

same statute: 35 USC §102. An article of manufacture is nonnovel if it is anticipated, if it was in public use, and if it cannot qualify as an experimental use (which no design described in a design patent ever has).

Anticipation. Post-Egyptian Goddess, a design is anticipated if a design that if created later would infringe it had been created earlier. It is sufficient for the designs to be substantially the same, such that an ordinary observer exercising ordinary care when shopping for the product would be deceived into mistaking one design for the other. Door-Master. The test for anticipation can also focus on just select components of the design, if they are the

only differences of note between the two designs. An example would be a comparison of two shoes where the only substantial difference between the two is the soles. Int’l Seaway.

Prior art in a different field than that the article of manufacture is in can anticipate a design. For example, the design of a car door can anticipate a similar design on a model car. See generally Green Lane.

Hupp v. Siroflex of America, Inc., 122 F.3d 1456 (Fed. Cir. 1997)Test for anticipation is fundamentally the same as for utility patents; if the claimed material was described in a printed publication, in public use, or was on sale more than a year prior to the filing date, the design patent is anticipated. (However, if the design is described in a publication, the publication must show the same subject matter as that of the patent, and must be identical in all material respects. Similarity, as in this case, is insufficient.)

Door-Master Corporation v. Yorktowne, Inc., 256 F.3d 1308 (Fed. Cir. 2001)A design that would infringe a design patent if created later would anticipate it if created earlier. For this, it is sufficient for the designs to be substantially the same, such that an ordinary observer exercising ordinary care when shopping for the product would be deceived into mistaking one design for the other.(Must, however, use the entire patent as a basis for comparison; not sufficient to pick & choose specific features.)

Int’l Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233 (Fed. Cir. 2009)Ordinary observer test described by Door-Master is, post-Egyptian Goddess, now the sole test for anticipation. (A design that would infringe if after anticipates if before.)(The test as applied here differs from the one applied in Door-Master; Door-Master looked at the patented design as a whole, and this case did not. Possible reconciliation is that the only major difference between the two shoe designs was the sole, which is not immediately visible to the casual observer.)

Green Lane Products Ltd v. PMS International Group plc [2008] EWCA Civ 358 (23 April 2008)UK OPINION: A design patent for a product may be anticipated by prior art in a completely different field than the one the design patent is intended to protect.(“You can’t change the title of your design patent and not be anticipated.” In the US, the design is specifically separated from the article of manufacture – hence things like car doors being prior art for a model car door.)

DESIGN PATENTS

Public use The display of an article of manufacture to the public more than one year before the application for

patent is filed renders it ineligible for patentability. 35 USC §102. This includes circumstances where the product is being displayed for something other than its

intended use; for example, a wrought iron table that was displayed at a trade show in something other than its “natural and intended way” was still considered to be in public use. In re Mann.

However, if the design is shown to a limited group of people who are restricted by an understanding of confidentiality or a confidentiality agreement, then the use is not “public” and the design may be patented. Bernhardt.

Experimental use. While utility patents offer an exception to the public use disqualification in §102, no designs have ever been found to have been in experimental use. Theoretically, based on how the exception is constructed in the case of utility patents, the following factors as laid out in Tone Bros. should be considered by the court as a means of determining whether the use was for a bona fide experimental purpose:

the length of the test period and number of tests as compared with a similar type of test on a similar type of design;

whether a user made any payment for the device; whether a user agreed to use secretly; whether records were kept of the progress of the test; and whether persons other than the designer conducted the asserted experiments.

Furthermore, as a general matter, later “tweaking” of a design once commercial exploitation has already started is not sufficient for a determination of experimental use to be asserted. The article of manufacture must only come on the market once it has been satisfactorily redesigned. Continental Plastic.

In re Mann, 861 F.2d 1581 (Fed. Cir. 1988)The product at issue here was a wrought iron table. Appellant argued that the display of this product at a trade show more than one year before the application for patent was filed did not qualify was a public use, because the table was not used in its natural and intended way. (Experimental use exception)Judge Rich held that, since design patents have almost no scope and any nontrivial change in the design in response to market research is the basis for a new design patent anyway, there is no clear way in which an ornamental design for an article of manufacture can fall under this exception.

Bernhardt v. Collezione Europa USA, Inc., 386 F.3d 1371 (Fed. Cir. 2004)“Public use” of a claimed design required to be public; showing at an industry conference in which there is an understanding of confidentiality, or a confidentiality agreement, is not sufficient to meet this standard.(However, the designs were found to be on sale more than a year before the critical date.)

Tone Bros., Inc. v. Sysco Corp., 28 F.3d 1192 (Fed. Cir. 1994), cert. den., 514 U.S. 1015 (1995)Experimentation directed at functional features of a product also containing an ornamental design is not necessarily public use. Requirement is finding that use was for a bona fide experimental purpose, with specific factors of interest being:(1) the length of the test period and number of tests as compared with a similar type of test on a similar type of design;(2) whether a user made any payment for the device;

DESIGN PATENTS

(3) whether a user agreed to use secretly; (4) whether records were kept of the progress of the test; and (5) whether persons other than the designer conducted the asserted experiments.(Summary judgment overturned, & case remanded)

Continental Plastic Containers v. Owens-Brockway Plastic Products, Inc., 141 F.3d 1073, 46 USPQ2d 1277 (Fed Cir. 1998)Later “tweaking” of a design once commercial exploitation has already begun is not sufficient to allow experimental use to be asserted.

DESIGN PATENTS

OBVIOUSNESSObviousness Test The standard to be applied for obviousness is whether the design would have been obvious to a

designer of ordinary skill of the articles involved. In re Rosen. The designer functions essentially akin to the “skilled mechanic” or “person of skill in the art”

that sees use in other standards; they are envisioned to have all the skill necessary to implement something that would be a matter of routine but to lack the “spark of creativity” necessary to deviate from what has been explicitly described by others. In re Nalbandian.

While other standards use the opinion likely to be held by a reasonable purchaser of the article of manufacture (whether a routine customer or an industry-specific buyer), this does not apply when considering obviousness.

Secondary considerations, such as those applicable to utility patents, also apply to a determination of obviousness for design patents. A new design that has spectacular market success is unlikely to be obvious, because if it was, someone else would have preempted it. High Point Designs.

There is also a requirement that there be some form of primary reference that directly inspires the design. This reference, a “Rosen reference,” needs to be nearly identical to the new design or on the verge of anticipating it to be applicable. An example might be In re Borden, where the article of manufacture, a container for iced tea, was essentially identical to a prior work except for its use of a filleted rectangle in place of a normal one. The degree to which the Rosen reference needs to match the new design depends on factors

like the initial complexity of the design. When the product design is relatively simple, then greater similarity is needed from the Rosen reference.

A Rosen reference cannot be cobbled together from a variety of independent designs, in contrast to prior art searches for utility patents. No reference swarming. Even if all features that might be part of the final design of an article of manufacture have been described somewhere else beforehand, design law recognizes to a much greater degree that there is nothing truly new under the sun and that a successful design is not just an assembly of features. In re Glavas, L.A. Gear.

Furthermore, a design is a visual work; what is being protected is the appearance of the work, not its conceptual underpinnings. Any comparison of a claimed ornamental design with the prior art must focus on overall appearances and not uses or “design concepts.” For example, though a vase shaped like a rectangular prism and a vase shaped like a pentagonal one may conceptually be very similar, this is immaterial if the visual effect they convey is distinct. In re Harvey.

Rosen references are also restricted to the same or similar fields to that that the article of manufacture is in. A design for an air freshener that strongly resembles the design of a metal ball anode is not rendered obvious merely for that reason. In re Butera. However, a design is not original if it merely simulates an item in another field. An air

freshener design intended to simulate a metal ball anode would presumably not be patentable. Durdin.

A patent may likewise be obvious based on private communications as well as on prior art. The point of an obvious determination is to ensure that the patentee is the originator of the design, and if private communications from another party sufficiently describe/enable the patented design then the design is rendered obvious. OddzOn.

In re Rosen, 673 F.2d 388 (C.C.P.A. 1982)

DESIGN PATENTS

Standard to be applied for obviousness is whether the design would have been obvious to a designer (as distinct from a potential purchaser) of ordinary skill in the articles involved.It is also a requirement that there be a reference, the design characteristics of which are “basically the same as the claimed design.” (Design law does not allow obvious determination from selecting individual features from prior art and combining them.)

In re Harvey, 12 F.3d 1061 (Fed. Cir. 1993)As a patented ornamental design has no use other than its visual appearance, and its scope is limited to what is shown in the application drawings, any comparison of a claimed ornamental design with the prior art must focus on overall appearances and not uses or “design concepts.”(The combination of a vase with a geometrical solid – a rectangular prism in one case, and a pentagonal one in the other – isn’t specific enough for obviousness. Things like the depth of the vase, the type of solid it intersects, etc. are all important to the design and the image it creates. It is also important to look at how each is actually described – maybe one is described as a rotational solid and the other is described as intersecting shapes. It also depends on the field; in a more crowded field, less substantive differences are more important.)

In re Borden: an iced tea container that has a filleted rectangle instead of a normal one, and no other differences of any significance, is clearly obvious.

Durling v. Spectrum Furniture Co., 101 F.3d 100, 40 USPQ2d 1788 (Fed. Cir. 1996)An obviousness analysis for a design patent requires that the prior art be searched for a primary reference that creates “basically the same” visual impression, and that the judge find whether or not the item claimed in the design patent does in fact have an essentially similar visual impression. (District court erroneously interpreted based on design concepts instead.)

High Point Designs, LLC v. Buyers Direct, Inc., Slip Op. 2012-1455, (Fed. Cir. Sep. 11, 2013)“In addressing a claim of obviousness in a design patent, ‘the ultimate inquiry . . . is whether the claimed design would have been obvious to a designer of ordinary skill who designs articles of the type involved.’” (Expert opinion is, however, not controlling, and determination requires a finding of what an imaginary “ordinary designer” would think.) (Overturned International Seaway “ordinary observer” standard; that one was effectively accidental and did not last long.)Additionally, secondary considerations similar to those applicable to utility patents apply to an obviousness determination. (For example, did the new design have spectacular market success – if so, that suggests that if anyone else could’ve thought of it, they would have)

In re Nalbandian, 661 F.2d 1214 (C.C.P.A. 1981)The “ordinary designer” standard assumes the existence of POSA with all of the training of a creative designer but with none of the creative ability, similar to that for an “ordinary mechanic” in utility patent obviousness determinations.

In re Glavas, 230 F.2d 447 (C.C.P.A. 1956)A claimed design with a shape or visual impression that is not shown in any single reference is one that meets the standard of novelty, even if its component features may be individually old.

In re Butera, 1 F.3d 1252 (Fed. Cir. 1993) (unpub.)A prior design is of the type claimed if it has the same general use as that claimed in the design patent application. Although the two products share a similar scalloped spherical design, plaintiff's design is for

DESIGN PATENTS

air fresheners and insect repellents, while the one in the prior art is for metal ball anodes (an entirely different field), so there is no obviousness determination.

Durdin v. Kuryakyn Holdings, Inc., 440 F.Supp.2d 921 (W.D. Wis. 2006)The patent in question, a motorcycle clutch lever in the shape of a nude woman, is “a product of inventive faculty” rather than mere simulation because it has been applied to a motorcycle part, and has been altered to omit the head, neck, and arms.

OddzOn Products, Inc. v. Just Toys, Inc., 122 F.3d 1396 (Fed. Cir. 1997)Football with attached tail fin. Issue is whether confidential materials (in this case, designs similar to those of the football at issue) can be prior art despite not being known to the public. (Core hallmark of prior art has generally been to give the public actual or constructive knowledge of patentable subject matter.)Section §102(f) provides that a person shall not be entitled to a patent if they themselves did not invent the subject matter sought to be patented. This means that a person may not obtain a patent that is obvious based on prior art, but also may not obtain a patent that is obvious based off of private, confidential communications that they've received.

L.A. Gear, Inc. v. Thom McAn Shoe Company, Inc.,988 F.2d 1117, 1124 (Fed. Cir. 1993)Patent at issue is for an athletic shoe. Alleged to be obvious based on a showing of elements from twenty-two prior art references; this reconstruction of known elements was not held to invalidate the design patent, because there was no specific suggestion of the claimed design in the prior art swarm.(Unclear how many references are needed to invalidate a patent, but 22 is far beyond this)

DESIGN PATENTS

INFRINGEMENTOrdinary Observer Test for Infringement If, in the eye of an ordinary observer, giving such attention as a purchaser normally gives, the two

designs are substantially the same (enough so the observer can purchase one believing it to be the other), one infringes the other. Gorham Co. Notably, this is different from the standard used for patentability. While expert testimony from

potential designers is often useful, it is not dispositive. How much distinction between designs there needs to be depends on the prior art. If a field is

particularly crowded, designs for similarly-functional articles of manufacture are very similar, and a reasonable purchaser would be expected to be on the lookout for these differences, then the standard for similarity is high. If designs are few and far between, then the standard for similarity is lower. The broadest standard is presumptively used, and this can be narrowed based on prior art evidence introduced by the alleged infringer. Egyptian Goddess.

The “ordinary observer” is specifically a purchaser of the item and not an observer of the product in use. Two walls formed from two different brick designs may look essentially the same when they have been put together, but since the bricks themselves have different designs that can be easily distinguished there is no infringement. Keystone. If the product is designed exclusively for sale to a certain industry, then the standard of

expertise held by a theoretical ordinary observer can be higher because the entities purchasing the articles of manufacture are assumed to be more sophisticated. Compare Contessa (where the product is designed for sale to the lay consumer) and Arminak (where the product is an unfinished component of another product that would not be bought by laymen).

Gorham Co. v. White, 81 U.S. (14 Wall.) 511 (1871)Gorham & Company obtained a patent in 1861 for a new design for the handles of tablespoons and forks, the “cottage pattern.” Mr. White obtained a patent for a design for silverware handles in 1867, and another in 1868, both of which he alleged to be original. White manufactured & sold a number of these, and the issue is whether White’s designs infringed.A number of experts contended that the designs were extremely similar – e.g. “not one man in fifty” could tell the designs apart - and that the ordinary observer would be deceived into buying White’s silverware when they intended to buy Gorham’s. The Supreme Court established that, for two designs to have the same substantial identity, the two must have the same effect on the eye from the standpoint of an ordinary observer or purchaser of the item, which was established by the record. (By this reasoning, it found infringement.)

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), cert. den., 129 S.Ct. 1917 (2009)“Point of novelty” test for infringement rejected. The “ordinary observer” test, requiring comparison of the two designs from the standpoint of an ordinary observer (generally a customer of the product), is to be the only test for obviousness.(The product at issue, a nail buffer, was asserted to have a “point of novelty” in the combination of four elements: (1) an open and hollow body, (2) a square cross-section, (3) raised rectangular buffer pads, and (4) exposed corners. The lower courts found that there was no infringement, because the prior art contains a triangular nail buffer with all of these traits, and the point of novelty of the EGI patent – a fourth side without a pad – is not duplicated by the allegedly infringing patent.)

DESIGN PATENTS

(It is noted that this test will require a great deal more comparison between the design described in the patent and the prior art. The burden of proof for production of prior art evidence is on the accused infringer.)

Keystone Retaining Wall Systems, Inc. v. Westrock, Inc.,997 F.2d 1444 (Fed. Cir. 1993)Patent at issue is for a mortarless retaining wall block design. (Block is designed such that a number of them can be assembled in an interlocking wall that does not require cement; can instead be filled with soil to reduce strain on concrete)The problem here is that, when the patented blocks and the allegedly infringing blocks are each assembled into a wall, they appear to be the same to an ordinary observer. However, the “ordinary observer” here is the purchaser of a patented brick, not an unpatented wall, and the designs of the individual bricks cannot be confused.

Contessa Food Products, Inc. v. Conagra, Inc., 282 F.3d 1370 (Fed. Cir. 2002)Design patent for a serving tray with shrimp is allegedly infringed. District Court limited the infringement inquiry to just the visible side of the tray, omitting the underside. District Court also limited comparison to what tray would look like at time of sale, not time of normal and intended use (in the first case it would be covered with shrimp; in the second, the specific design of the tray could be observed and what was on the bottom of it would be visible to an ordinary observer.)This was held to be clear error. There is no piecemeal analysis of similarity of effect, and one must consider everything.

Arminak & Assoc., Inc. v. Saint-Gobain Calmar, Inc., 501 F.3d 1314 (Fed. Cir. 2007), cert. den., 553 U.S. 1102, 128 S.Ct. 2906 (2008)Patent at issue was for a sprayer nozzle that could be screwed onto a bottle. Was not intended for retail consumers, but for industrial buyers (companies that make cleaning agent, etc.) who more regularly purchased sprayer nozzles not connected to any reservoir. As such, the ordinary observer was properly construed to be an industrial buyer (who would not likely be confused by the somewhat subtle differences between the two designs.).

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LITIGATION; DAMAGES & OTHER REMEDIESSummary Judgment This works essentially the same way as it does in any other patent case. Based on the evidence

presented, viewed in the most favorable light, could a reasonable jury find a certain outcome? Avia.

Avia Group Int'l., Inc. v. L.A. Gear California, Inc., 853 F.2d 1557 (Fed. Cir. 1988) Summary judgment in design patent cases is fundamentally similar to summary judgment in any other case. The question for the court is, is there a genuine issue of material fact? Defendant in this case attempted to show that designs were functional rather than ornamental, and did not meet burden of proof to be able to prove that they were functional even viewing all evidence in most favorable light.

Injunctive Relief The standard test used to determine whether a permanent injunction is appropriate is the

“traditional four-factor test” outlined in eBay. This test requires the plaintiff to demonstrate: That it has suffered an irreparable injury; that remedies available at law, such as monetary damages, are inadequate to compensate

for that injury; that, considering the balance of hardships between the plaintiff and defendant, a remedy in

equity is warranted; and that the public interest would not be disserved by a permanent injunction.

The test for whether to make available a preliminary injunction is also a four-part test (as outlined in Titan Tire) and requires the plaintiff to demonstrate:

that he is likely to succeed on the merits; that he is likely to suffer irreparable harm in the absence of preliminary relief; that the balance of equities tips in his favor; and that an injunction is in the public interest.

A preliminary injunction is issued at the court’s discretion and review of this decision uses the abuse of discretion standard. If a patentee clearly fails to show one of the four components of the test, then a preliminary injunction order can be overturned. Apple.

Since these are all patent matters within the purview of the Federal Circuit, Federal Circuit law for injunctions always applies. Revision.

eBay Inc. v. MercExchange, LLC., 547 U.S. 388 (2006)Patent for a method of conducting online sales infringed; issue regards issuance of a permanent injunction. “Traditional four-factor test” is applicable. (The patent at issue is not a design, but the same methodology would apply to a design patent.)Plaintiff must demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law, such as monetary damages, are inadequate to compensate for that injury; (3) that, considering the balance of hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction.(Main effect: No automatic permanent injunction when an IP right has been infringed.)

Titan Tire Corp. v. Case New Holland, Inc., 566 F.3d 1372 (Fed. Cir. 2009) Design for a tire. Trial court denied preliminary injunction on the grounds that a preliminary injunction requires, for it to be issued, that the plaintiff show that his/her action has a reasonable likelihood of success. In this case, the plaintiff did not establish a likelihood of success on the issue of patent validity.

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There is likewise a four-factor test for preliminary injunctions: plaintiff must establish [1] that he is likely to succeed on the merits, [2] that he is likely to suffer irreparable harm in the absence of preliminary relief, [3] that the balance of equities tips in his favor, and [4] that an injunction is in the public interest.” (This means that the core issues of obviousness and validity must be resolved to at least some extent before the trial even starts.)

Apple, Inc. v. Samsung Electronics Co., Ltd., 678 F.3d 1314 (Fed. Cir. 2012) Review of a district court's decision to issue a preliminary injunction uses the abuse of discretion standard. (In this case, Apple clearly failed to show irreparable harm, and thus the trial court abused its discretion in issuing one of the preliminary injunctions.)

Revision Military, Inc. v.Balboa Manufacturing Co., 700 F.3d 524 (Fed. Cir. 2012)Infringement action for design of protective goggles. Preliminary injunction requested. Issue of what law applied (the Second Circuit has a heightened standard for preliminary injunctions).The Federal Circuit held that Federal Circuit law applied. Considerations of injunctions concern issues unique to patent law, which is the purview of the Federal Circuit.

Damages A court may opt to award damages in the amount of the infringer’s total profit from the sale of

goods (minimum $250). 35 USC § 289. The profits awarded are pre-tax, and may be taken from multiple infringers in a chain (though not in excess of the total amount of profits that the infringers have collectively made). Bergstrom. “Profits” may be converted into “damages” in the event that infringement is found to be willful,

with the major distinction being that damages are eligible to be trebled at the discretion of the court. Even a partial award of damages requires that the infringing party have been notified that their use is infringing, and a full award of damages requires that the product be marked (either on the product itself, or, if impractical, on the product packaging) as having been patented. §287, Braun.

Profit calculations may be based on a reasonable industry standard or approximation thereof rather than requiring extensive calculations and examination of documentation and tax records. Typically, it is “reasonable” to expect a profit margin of about 40% of gross income from the sale of the product. Bergstrom. Other cases have used 33%; the precise value often varies by industry. Schnadig.

A court may alternatively opt to award damages based on a reasonable royalty that the court calculates. This likewise may be trebled in the event that infringement is willful. §284. This is often used under circumstances where the use of the design contributes indirectly to the infringee’s profits (for example, the use of an innovative design for an eyeglass rack in Trans-World assisted in their sales, but was not itself sold). Opting for a reasonable royalty precludes collection of damages based on profits. Catalina.

Supplemental damages may be awarded by a court, most commonly in the event that a jury uses a known methodology to calculate damages but applies it incorrectly (for example, if the jury only considers sales before or after a certain date without a sound basis for doing so). In that case, the court will attempt to mimic the jury’s methodology and apply it to the damaging conduct that the jury did not consider. Apple. A jury merely opting to award damages that are peculiarly low is not a basis for an award of

supplemental damages. (An award that is too high might be the basis for a new trial.)

35 USC § 289

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Infringer liable to the infringee to the extent of their total profit, but not less than $250.This statute stated that it would not “prevent, lessen, or impeach” any other remedies that the infringee had, but that they could not “twice recover the profit” from the infringement.Having the award be based on profits means litigation gets really hairy; discovery, etc. can place a huge burden on alleged infringer.It's also pre-tax profits that matter (since you can write off a judgment against you on your taxes, anything else would allow infringer to double-dip)

35 USC § 284Provides for a “reasonable royalty” to be provided by the infringer to the infringee as a minimum for damages for infringement. Allows for the court to treble damages under select circumstances (specifically, when the infringement is willful) and allows the court to receive expert testimony to aid in this.

35 USC § 287Establishes requirements for marking (notice of a product being patented). Provided that a product permits it, the product must have a label indicating that it is patented and the patent number (or a web address at which the patent number can be found). If the product does not permit it (for example, the notice would mar the design of the product, or would not be visible on the product’s surface; jewelry offers a good example of when both would be applicable) then the notice can go on the package instead.(If product is not marked properly, then damages (again, different from profits) may only be awarded after the defendant is notified that the product is patented; this can be as late as when the lawsuit is filed.)

Bergstrom v. Sears, Roebuck & Co., 496 F. Supp. 476 (D. Minn. 1980)The patent at issue here is for a tubular fireplace grate, a heat exchanger that sits in a fireplace and provides greater air circulation for the room. Bergstrom invented a specific design for one, and Cardinal made its own device after obtaining a copy of Bergstrom’s. Bergstrom sued both Cardinal and Cardinal’s biggest distributor, Sears (which accounted for about a third of Cardinal’s total sales).The pertinent question before the court was whether Bergstrom could recover profits from both the direct infringer (Cardinal) and the contributory infringer (Sears), and the court found that it could, since both benefited separately.There was also an attempt by Cardinal to dodge around direct infringement on the basis that they did not sell the offending product directly, but instead sold kits that could be assembled into the product. The court did not find this persuasive, as the kits were obviously intended to be assembled (which resulted in a direct infringement).This case also established that there is no “litmus test” for calculation of profit, and the Court relied on both plaintiff's & defendant's estimations of it as well as the testimony of its own expert. “Reasonable” to take 40% of gross income from sale of product, with 60% of the cost representing fixed costs inherent in the production of the product.

Nike, Inc. v. Wal-Mart Stores, Inc., 1996 WL 754076, 41 USPQ2d 1146 (E.D.Va.1996)Damages for infringing a patent on a shoe design were calculated based on the net profits of the infringer from selling that product.

Nike, Inc. v. Wal-Mart Stores, Inc., 138 F.3d 1437 (Fed. Cir. 1998), cert. den.,528 U.S. 946 (1999)

DESIGN PATENTS

A lack of marking on the plaintiff’s product (such as “Patent #12345”) limits the plaintiff’s recovery for infringement to profits only and not for damages. (Essentially the only difference between the two sums is that damages may be trebled for infringement, while profits may not be.)

Trans-World Mfg. Corp. v. Al Nyman & Sons, Inc., 750 F.2d 1552 (Fed. Cir. 1984)Infringement suit for design patent for eyeglass rack. Relevant sections are those dealing with damages.Court finds that the profits from defendant’s sale of eyeglasses that do not themselves infringe cannot be used directly to determine damages, but the effect of the defendant using the infringing design to sell other products can be a factor considered when determining a reasonable royalty.

Braun Inc. v. Dynamics Corporation of America, 975 F.2d 815, 824 (Fed. Cir. 1992)Infringement case for a hand-held blender. Review of the case found that while there was substantial evidence to support the jury’s conclusion that the defendant’s product infringed the plaintiff’s, there was not sufficient evidence to support the finding of willful infringement. As such, damages were limited to profits, and the award of treble damages was reversed.

Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277 (Fed. Cir. 2002)Infringement suit for a lamp design. Question of damages: there are two statutes allowing for recovery, § 289 (which allows for recovery of profits the infringer obtained from their sales of the infringing items) and § 284 (allowing for a “reasonable royalty”). There is, however, no provision allowing for a double recovery or for these to be added sequentially; the “reasonable royalty” found by the court is a lower bound for what the damages must be, and since the awarded profits were higher than this value then the profits should be awarded as damages alone.

Apple, Inc. v. Samsung Electronics Co., Ltd., Slip Op. 11-CV-01846-LHK, (N.D. Dist Cal. Order March 1, 2013) Damages order for the Apple-Samsung case. Several issues of note for us:Supplemental damages may be awarded for infringing sales that are not considered by the jury. An example of when this might be made is when the jury only considers sales before or after a certain date without a sound basis for doing so. (In that case, as done here, the court will attempt to apply the jury's methodology or calculated royalty rate to the damaging conduct that the jury did not consider.)However, under circumstances where the jury did consider the sales in question and made a damages award that was not within the bounds suggested by the two parties to the case (in this case, the jury awarded damages for several infringing products that were below even the estimates set by the Samsung damages expert) these damages awards may not be supplemented unless there is good cause to vacate them.(If awarded damages are significantly in excess of what was claimed – for example, if the jury bases their calculations of a reasonable award on a time estimate for when the product was sold that is factually incorrect – then this may be the basis for a new trial.)Prejudgment interest awarded (generally should always be absent some justification for withholding such an award, but in many cases it's not worth worrying about) and pegged to 52-week T-bill rate.(Recall that basing damages on the infringer's profits is impermissible in cases where only utility patents have been infringed)

DESIGN PATENTS

CONSTRUCTION; RULES & GUIDELINESClaim Construction This is a two-step process, similar to those set out in Markman for utility patents. In the first stage,

the court conducts what it determines to be proper interpretation of the claims, and in the second, the court determines whether the limitations of the claims as properly interpreted are met by the prior art. The scope of the claims is limited to what is shown in the drawing; there is often no written

description at all. However, since the protections of the design patent are limited to the novel, ornamental elements in the design, these must be isolated by the court. Colgate. However, since what is functional or nonfunctional is a question of fact, courts have argued

that using Markman hearings as the foundation for interpreting these questions is a violation of the Seventh Amendment. Colgate.

It is suggested that courts describe their own analysis of the claimed design’s features to the jury and guide it in the decision-making process. For example, a court may opt to note for the jury that in the patented design only three sides have buffers attached, while in the accused product, all of the sides have buffers attached. Egyptian Goddess. This is favored in cases where it appears particularly difficult to separate the functional elements from the ornamental elements, particularly in cases where the whole of the design is heavily influenced by utility. Richardson.

However, the designs themselves are considered “as a whole,” without excluding the functional elements of the design, even if those functional elements are not protected (assuming, of course, that the patent is constructed in such a way that it includes these elements). For example, in Elmer, the patentee had a triangular sign that was distinguishable from the accused infringer by its use of an internal support; while the patentee accurately identified this as a functional element, the patentee had the option to use different functional elements or merely use dotted lines on their patent where the functional elements could go.

A court will generally not allow a patentee to attack their own claims. (A patentee might desire to exclude certain elements of their patent as functional elements to broaden its scope, as happened in Elmer.)

A court may use models and physical representation of articles of manufacture when interpreting a claim, so long as these articles of manufacture accurately embody the design disclosed in the patent. Lee. However, if the patentee’s embodiment does not accurately match their design, it is not useful to reference the physical embodiment. Sun Hill.

Elmer v. ICC Fabricating, Inc., 67 F.3d 1571 (Fed. Cir. 1995)Claim construction is broadly an issue of validity. Two-step process; the first involves proper interpretation of the claims, and the second involves determining whether the limitations of the claims as properly interpreted are met by the prior art. (Essentially the standard as set out in Markman for regular patent law.)In the case at issue, dealing with an apparatus for displaying an advertisement on top of a vehicle (envision a triangular pizza company sign), an “upstanding brace means” was interpreted to coincide with the structure disclosed in the patent: a vertical brace that extends into and through the sign body. (It seems that the prior art sign did not have such a brace; perhaps the load was borne by the rigid sides of the sign instead.) Since the prior art sign did not meet the brace limitation under this interpretation, a grant of JMOL was improper as a jury could have conceivably found for validity.(Patentee tried to massage the claims. The most striking differences between the patented sign and the allegedly infringing sign – the internal and external supports – have a functional purpose. The court

DESIGN PATENTS

blocks the patentee from construing their claim in this way, based on the reasoning that the purpose of a published patent is notice and allowing the patentee to attack elements of their own claims in this way allows them to surprise competitors who would otherwise not be infringing.)

Colgate-Palmolive Co. v. Ranir, L.L.C.,No. 06-417, 2007 WL 2225888 (D. Del. July 31, 2007)Patents at issue for ornamental designs of toothbrushes or portions thereof. Same two-step process as above.Functionally, however, interpretation of design patents uses a slightly different methodology. Scope of claim is what is shown in the drawing; there sometimes is no accompanying written description at all. The scope of a “claimed design encompasses ‘its visual appearance as a whole,’ and in particular ‘the visual impression it creates.’ “ Additionally, only the novel, ornamental features of the patented design are protected, so these must be isolated. (Since the question of what is a functional and what is a nonfunctional part of the design is one of fact, the court suggests that applying Markman hearings to design patents could be a Seventh Amendment violation.)(Functionally, the holding of this case is that broken lines indicate portions of the design patent that are unclaimed.)

Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir. 2008) (en banc), cert. den., 129 S.Ct. 1917 (2009)As before. The select part of the case that is relevant here is the inquiry into whether district courts should perform formal claim constructions in design patent cases.There is not a written requirement for design patents, and SC recognized that a design is better represented by an illustration “than it could be by any description and a description would probably not be intelligible without the illustration.” Court should thus not attempt to fully construe the patent, but it is acceptable for a court to describe its own analysis of the claimed design's features to the jury and guide its decision-making process (for example, the court may indicate that in the patented design only three sides have buffers attached, while in the accused product, all of the sides have buffers attached).

Richardson v. Stanley Works, Inc., 597 F.3d 1288 (Fed. Cir. 2010) Patent at issue is for a multi-function tool, a necessarily functional piece of hardware. Issue of claim construction revolves around distinguishing the functional elements from the ornamental ones.This is a claim scope issue where a court's guidance would be useful to the fact-finder, and it is a proper exercise of judicial power for a District Court to factor out the functional aspects of the design when there are a number of elements (like a handle, hammer-head, crowbar...) driven purely by utility.The overall effect of the two designs is different (notably, the allegedly infringing design, the Stanley “Fubar,” has a consistent streamlined appearance) and cannot be said to be deceptively similar.

Lee v. Dayton-Hudson Corp., 838 F. 2d 1186 (Fed. Cir. 1988)Plaintiff appealed finding of noninfringement, on the basis that the lower court compared a model of the patented device to the allegedly infringing device (and found no infringement) rather than relying solely on the drawing in the patent document.Higher court found that it was not error for the trial court to make the comparison based on the plaintiff’s own physical embodiment as well as on the plaintiff’s design patent.

Sun Hill Industries, Inc. v. Easter Unlimited, Inc.,48 F.3d 1193 (Fed. Cir. 1995)Trial court had made finding of infringement where the plaintiff’s and defendant’s embodiments (decorative pumpkin bags) were substantially similar, but where the defendant’s embodiment and the plaintiff’s design patent were not necessarily so. Appellate court overturned; “The test for infringement

DESIGN PATENTS

is not whether the accused product is substantially similar to the patentee's commercial embodiment of the claimed design.”

Inventorship Design patents may be obtained only by the inventor of the work: "whoever invents any new,

original and ornamental design for an article of manufacture." An inventor may envision a work and request assistance from an artist or designer in order to commit the work to paper, and will not lose inventorship by doing so. Hoop.

The standard of evidence for another party to adversely have themselves named as a co-inventor of a design is “clear & convincing.” Junker.

Hoop v. Hoop, 279 F.3d 1004 (Fed. Cir. 2002)Inventors had conceived of designs of a pair of eagle-shaped motorcycle fairing guards, but received help from other parties in actually reducing their designs to practice. Both the inventors and the designers independently apply for design patents for their work.Court recognizes that design patents may be obtained by the inventor of the work; "whoever invents any new, original and ornamental design for an article of manufacture." One does not qualify as a joint inventor merely by assisting in reducing the invention to practice; must assist in conception of the claimed invention. Insignificant differences between inventors’ vision and claimed design, so designers are not eligible to be co-inventors.

Junker v. Eddings, 396 F.3d 1359, 73 USPQ2d 1850 (Fed. Cir. 2005), cert. den.,545 U.S. 1128 (2005) Junker was inventor of a design for an introducer sheath for medical catheters. Corporate defendant, Galt, made a number of revisions of the design before applying for a design patent. Dispute is effectively over who is inventor (both filed for patents; Junker suing for infringement). Defendant, however, did not introduce clear and convincing evidence that it was the first to invent many of the potentially ornamental features that it claimed (leaving aside whether or not the revisions it allegedly made would be enough to make it an inventor) and jury properly found infringement.

DESIGN PATENTS

PROSECUTION STRATEGIESAmending Claims A claim may be broadened by amendment from the design that is explicitly disclosed if the

application filed reasonably conveys the design that is in the altered application. An example of this would be the design in In re Daniels, a “leecher” device used to hold bait for leeches that had a metallic leaf superfluously added to its surface when it was initially claimed; this leaf could be removed by amendment to broaden the claim because there was no question that Daniels had the leafless design available to him. However, in cases where it is less clear that the designer had the specific invention in question

available to them at the time of filing, courts are less generous. For example, an attempt by a designer to cut off their design at an arbitrary boundary, replacing such with a dotted line allowing them to claim their disclosure as affixed to any arbitrary material, would be disallowed. In re Owens.

The following cases have dealt with later amendment of claims: Racing Strollers : materials filed during initial prosecution (utility drawings and the like) can

serve as a valid basis for amending the claim. In re Salmon : the requested change (a square seat into a round one) did not reflect a

disclosure that had been made during initial prosecution, so the request to do this was denied.

In re Daniels : If it could be reasonably anticipated that the designer was in possession of the desired invention, even if such was not explicitly disclosed, they may broaden their application.

In re Owens : Reasonable anticipation focuses on specific inventions; if there is a clear “top half” and “bottom half” to the design, then broadening the application to cover just one of those is acceptable because a reasonable observer might have seen those as two subdesigns that were joined at a natural boundary.

Grant of an earlier filing date. A utility patent application that is modified into a design patent application, as in Racing Strollers, or a design patent application that is modified into a utility one, as in Vas-Cath, can gain the benefit of the earlier filing date of their original application. However, utility patents and design patents aren’t “stacking” protections; generally it is

impermissible to try to seek a design patent on an article that is nearing the end of its utility patent protection in order to artificially extend said utility patent protection. See Metrokane.

In re Daniels, 144 F.3d 1452 (Fed. Cir. 1998)Daniels had claimed a design (a “leecher,” a device for trapping leeches) with an ornamental leaf pattern, then filed a continuation application in which he claimed the same design but with the leaf pattern removed. (No other changes were made.) PTO board denied application, citing the fact that he had altered his design; court reversed this, holding that there was no question that “Mr. Daniels possessed the invention that is claimed in the continuation application,” and that consequently the design could be claimed.

In re Owens, 710 F.3d 1362 (Fed. Cir. 2013)Mr. Owens, a representative of Proctor & Gamble, filed a design patent application for a mouthwash bottle in 2004, and then followed it with a continuation application for a similar design in 2006. The

DESIGN PATENTS

original application extended to the whole bottle, while the continuation sought to broaden the scope of the claimed design by adding a boundary line near the top of the bottle and explicitly claiming only the material on top of the boundary line. (The idea was apparently to make it so that different base designs could be claimed under the same patent while still allowing P&G to take advantage of the 2004 filing date, as products falling under the scope of the design patent had been on sale for more than a year at the time the continuation was filed.)The PTO denied this continuation, because the boundary created by the line was not a natural one and adding it added a new trapezoidal shape to the design that was not originally disclosed and which would not have been recognized as uniquely patentable by a skilled artisan. The Court affirmed on essentially the same basis, relying on Ariad (which already said that you can’t do this for utility patents).

Metrokane, Inc. v. Wine Enthusiast, 185 F. Supp. 2d 321 (S.D.N.Y. 2002)In this case, the plaintiff’s drawing/specific claimed subject matter were apparently formulated after observing a competing product in stores (both products are lever-operated cork removers; the plaintiff’s is called the “Rabbit” and is apparently stylized somewhat like a rabbit, while the defendant’s is called the “Insta-Pull.”). The claim was also apparently restricted to just the material common to each, with a dotted line drawn around just this material (an “egg-shaped bulge” and a functional triangular fixture) and the rest of the described design being described as “environmental material.”Despite all this, the overall visual impressions created by the entire products at issue are different enough that the court still does not find infringement.

COPYRIGHT

STATUTORY SUBJECT MATTERCopyright Protections of Designs All pictoral, graphical, or sculptural works can be copyrighted. This extends to a number of designs,

or aspects of designs. 17 USC §102. Similarly to design patents, utilitarian articles are not eligible for copyright protection. However,

if an independently copyrightable article happens to have a functional use – for example, if a statuette model is used as the base for a decorative lamp - then that article remains protected. Mazer.

Articles of manufacture where the functionality of the design is an aesthetic one (for example, a display stand or model, as in Superior Form Builders) are eligible for copyright protection without any issue.

Furthermore, the ornamentation on a functional design can be protected if it is “conceptually separable” from the rest of the design; an example would be a belt buckle with decorative engraving that does not materially impact its function as a belt buckle, and which could conceptually be removed without impeding that utilitarian function. Keiselstein.

However, if the artistic design of the work was found to be nontrivially based on functional considerations, the design is not protected by copyright law. Generally, if the product was redesigned or was designed from the ground up to suit a utilitarian function, it fails the conceptual separability test (Brandir), but trivial alterations to suit some utilitarian end do not result in a loss of copyright protection (Gay Toys).

Copyright attaches immediately, but a design must be registered with the Copyright Office before any statutory damages can be obtained. The term of copyright protection is long, but its coverage is not; a competitor who independently creates the same or a similar design can use their independent creation as a defense. The Copyright Office has some discretion in what it registers, and may opt not to register

something with a functional purpose even if that purpose is not dominant. OddzOn. Copyright Office allows for mass registration of works under some circumstances. If the work is

of a type where it is necessarily part of a group (daily newsletters, automated databases, etc.) the group may be registered under 17 USC §408(c) (the “group registration”). Otherwise, if single works are included within a “single unit of publication” (like a product catalog) and share the same copyright claimant, the works may be registered en masse under the single work registration regulation. Kay Berry.

17 USC 102Copyright extends to all pictoral, graphical, or sculptural works.

17 USC 107The boundaries of copyright protection are somewhat more limited than design patent protection offers; one key example is that copyright protection allows for a fair use defense to infringement. Independent derivation is also an absolute defense in copyright law (though this is defeated if you have access to the work in question); this is most emphatically not the case in design patent law.

17 USC 302In all cases, the term of copyright protection is far in excess of what might be available with a design patent.

17 USC 504

COPYRIGHT

Requirement of registration with the copyright office before you can get statutory damages.

Mazer v. Stein, 347 U.S. 201, 74 S.Ct. 460, 98 L.Ed. 630 (1954)Statuettes copyrighted as works of art, and then later incorporated as decorative parts of a lamp; issue is whether the statuettes, having a functional purpose, can be copyrighted. Court finds that an independently copyrightable article having a use in industry does not bar or invalidate the copyright registration (even though Congress may not have intended this specifically), and that the article can still represent the necessary creative expression.

Keiselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989 (2nd Cir. 1980)Infringement case for decorative belt buckles. Buckles were functional, but with a high degree of ornamentation; copyright challenged on the basis that they were utilitarian articles ineligible for copyright.Court articulated the concept of “conceptual separability:” that if the ornamentation on an article was of a sort that could be conceptually separated from the rest of the article without impeding the subsidiary utilitarian function, then the article could be copyrighted. (The belt buckles met this standard.) Gay Toys, Inc. v. Buddy L Corp., 703 F.2d 970 (6th Cir. 1983).Infringement case for a toy airplane. Issue is whether or not a toy airplane could be copyrighted when an airplane qualifies as a “useful article.” The court identified the airplane as essentially a work of sculpture, that portrays a real airplane but which has no intrinsic utilitarian function on its own, and which thus qualifies as copyrightable subject matter. (As a pure toy that was designed as such, it is fundamentally no different than a doll. If it was intended to fly, though, it becomes a useful article.)Additionally, while some functional considerations made their way into the design (specifically, the toy airplane was redesigned to make it more economical to ship) this consideration was found to be irrelevant to the determination of whether or not the airplane was a “useful article.”

Brandir International, Inc. v. Cascade Pacific Lumber, Co., 834 F.2d 1142 (2nd Cir. 1987). Copyright/trademark infringement case for a bicycle rack design that began life as a wire sculpture. The court adopted the “Denicola test” of conceptual separability to determine whether or not the structure was copyrightable; this test focuses on whether the aesthetic elements of the design are subordinate to the utilitarian aspects, or whether the reverse is true.(Specifically: if design elements reflect a merger of aesthetic and functional considerations, the artistic aspects of a work cannot be said to be conceptually separable from the utilitarian elements. Conversely, where design elements can be identified as reflecting the designer's artistic judgment exercised independently of functional influences, conceptual separability exists.)In this case, because the designer made a number of alterations to the design of its “RIBBON Rack” to better suit its intended utilitarian function, it fails the conceptual separability test and is not copyrightable.

OddzOn Products, Inc. v. Register of Copyrights, 924 F.2d 346 (D.C. Cir. 1991) Appeal of a Copyright Office decision not to register a work of soft sculpture with a functional purpose (a KOOSH ball). (Did not actually weigh in on whether or not the work was copyrightable, just that it was not abuse of discretion for the Copyright Office to refuse to register the claim.)(Copyright Office appears to have used the Brandir standard, and under this standard, the fact that the KOOSH ball was designed with utilitarian aspects in mind is enough to render it ineligible for copyright protection.)

COPYRIGHT

Superior Form Builders, Inc. v. Dan Chase Taxidermy Supply Co., Inc.,74 F.3d 488 (4th Cir. 1996), cert. den., 519 U.S. 809 (1996) Issue is whether animal mannequins used by taxidermists to mount animal skins are, having a utilitarian function, copyrightable. The court finds that they are, since the utilitarian purpose is an aesthetic one; the sculptures are intended to function as a permanent portrayal of the animal, and this purpose is not impeded by the work having a potential utilitarian function (acting as a display stand for skins, etc.)

Kay Berry, Inc. v. Taylor Gifts, Inc., 421 F.3d 199 (3d Cir. 2005)Controversy was over a sculptural rock intended for a garden. (Rock etched with a poem in the public domain.) Work had not been separately registered, but a catalog containing a number of sculptures – of which the rock was one – had been.In this case, court found that the rock was protectable subject matter – plaintiff “selected an inspirational poem from the public domain, adapted that poem to make it visually and rhythmically appealing, and then cast it on its own sculptural work” – and that the registration of the work was proper under the “single work exception.”(Related works included in a single unit of publication may be registered as one work.) The work also had the requisite level of creativity to be copyrightable.

Fashion Articles of clothing are “useful articles” and are thus not eligible for copyright protection. Jovani.

Protection may be offered to only those elements of the clothes that are conceptually separable from the rest of the design. Galiano.

Jovani Fashion, Ltd. v. Fiesta Fashions, 500 F. App'x 42 (2d Cir. 2012)Articles of clothing are “useful articles” and not protected by copyright.

Galiano v. Harrah's Operating Co., Inc., 416 F.3d 411 (5th Cir. 2005)Galiano obtained copyright protection for, among other things, several uniform designs it had previously made for Harrah’s (casino company). Sued Harrah’s for continuing to use & order Galiano’s copyrighted designs (even though order & arrangement with supplier made several years before).Court identified a two-part test for “pictoral, graphical, or sculptural works” like maps, design documents, etc. If clothing design not useful, no obstacle. If it is, must decide whether the design incorporates specific PGS elements that are distinct from, and can be separated from, the useful bits. “Conceptual separability test.” No showing that the uniforms are marketable aside from their use as casino uniforms; therefore, not protected.

TRADEMARK & TRADE DRESS

DEFINITIONS AND STATUTES“Trade dress:” The trade dress of a business consists of the total image and appearance of a business, and may be protected under the section 43(a) of the Trademark Act.

“Secondary meaning:” A trade dress has acquired a secondary meaning if it has a unique association with a specific source. Used interchangeably with “acquired distinctiveness;” means the same thing.(Effectively, in the words of the court, to acquire a secondary meaning in the minds of the buying public, an article of merchandise when shown to a prospective customer must prompt the affirmation, "That is the article I want because I know its source," and not the negative inquiry as to "Who makes that article?" In other words, the article must proclaim its identification with its source, and not simply stimulate inquiry about it.)

Federal trademark protection arises out of the Lanham Act, which restricts “using in commerce any word, term, name, symbol, or device” that is likely to cause confusion or deceive.

Trademark protection generally lasts a much longer time than does a design patent; trademarks are on the supplemental register for five years (during which time they are readily challengeable), then go on the main register (where there is a presumption of validity). Trademarks can be renewed indefinitely; for example, Converse shoes have held trade dress protection since 1920.

A general flowchart for the process of securing trademark protection for a product is as follows: Does the product have some sort of trade dress? If so, is the product’s trade dress inherently distinctive? If the product has no trade dress, or if it is not sufficiently distinctive, has the product configuration

acquired a secondary meaning? If (2) or (3), then the product is eligible for trade dress protection and can receive such provided that

the dress is not functional; if not, it’s dead (the ease with which trade dress protection can be lost means that a company must vigilantly

police their marks, lest they lose them. Problem of “genericide:” product name being applied as a generic term, which results in the loss of the trademark. Kleenex, etc.)

Examples of what is eligible for trade dress protection are: Total image/overall appearance Packaging Product configuration Color Various other features like size, shape, etc.

TRADEMARK & TRADE DRESS

DISTINCTIVENESSDistinctiveness Identifying marks can receive protection if they are either inherently distinctive or have acquired

distinctiveness through secondary meaning. Two Pesos. Product designs are not entitled to trademark rights just because they are inherently distinctive.

Must show that they have acquired some secondary meaning. Wal-Mart. Secondary meaning is shown by a number of factors, these being (possibly nonexhaustively)

consumer studies/surveys, advertising expenditures, unsolicited media coverage, sales success, attempts to copy, and length/exclusivity of use.

Likelihood of confusion is shown via a similar eight-factor test as outlined in Ferrari.

Two Pesos, Inc. v. Taco Cabana, Inc.,505 U.S. 763 (1992)An identifying mark is distinctive and capable of being protected if it either (1) is inherently distinctive or (2) has acquired distinctiveness through secondary meaning. (This extends to both trade dress and to trademarks.)The trade dress of the taco-themed restaurant in this case was sufficiently distinctive to meet the threshold required by this requirement, so there was no need for the restaurant’s trade dress to have also acquired secondary meaning.

Duraco Products, Inc. v. Joy Plastic Enterprises, Ltd., 40 F.3d 1431 (3rd Cir. 1994)The design of a product could be treated as inherently distinctive where the product configuration was unusual and memorable, conceptually separable from the product, and primarily served as a designator of product origin. The product would then be eligible for trade dress protection.(The plaintiff in this case failed to meet the threshold requirement of distinctiveness for his plastic planter design, and failed to establish secondary meaning.)(This is not good law anymore following Wal-Mart)

Wal-Mart Stores, Inc. v. Samara Brothers, Inc., 529 U.S. 205, 120 S.Ct. 1339 (2000)A distinctive design is one that is arbitrary (“Camel” cigarettes), fanciful (“Kodak” film), or suggestive (“Tide” laundry detergent). While some categories of mark/trade dress, like a certain color scheme for products, can never be inherently distinctive, over time they can acquire the requisite secondary meaning to make the product eligible for trade dress protection.(In the event that the product is unregistered, only a showing that it has acquired secondary meaning can render it so eligible.)

Ferrari SPA Esercizio Fabriche v. Roberts, 944 F.2d 1235, 20 USPQ2d 1001 (6th Cir. 1991)Roberts had been producing “kit-cars” that, when assembled, would mimic the designs of Ferrari automobiles. The court found that these infringed Ferrari’s trade dress, because Ferrari’s vehicles had acquired secondary meaning in the eyes of the public; the association that the public would tend to make on viewing a Ferrari is “oh hey, that’s a Ferrari” rather than “that’s a neat product; I wonder who makes it?” (Further, the defendant’s admission that it had intentionally duplicated Ferrari’s designs gave weight to this conclusion.)(The court also found that there was a likelihood of confusion; this was necessary to prove infringement.)

TRADEMARK & TRADE DRESS

The court employed an eight-factor test for “likelihood of confusion,” the “Frisch factors.”1. Strength of the mark Ferrari has a strong mark->Ferrari2. Relatedness of the goods Ferrari3. Similarity of the marks Ferrari4. Evidence of actual confusion No evidence5. Marketing channels used Roberts6. Likely degree of purchaser care Roberts7. Roberts' intent in selecting “mark” Ferrari8. Likelihood of expansion of product lines. No evidence

FUNCTIONALITYFunctionality Product trade dresses that are functional are not protectable, because it would be anti-competitive

to allow one company to lock up the most efficient design. In re Morton. However, this requirement is not met when a product merely has a functional use; the product design must be as it is for clearly functional reasons. It is not a requirement that other designs must offer lesser functionality if the product design is

as it is for clearly functional reasons. In re Bose Corp. However, design choices for functional features (like the choice of a particular shape for a functional end cap, when the shape itself has no function) are protected. Specialized Seating.

Those elements that are functional are not protected by trade dress protection. TrafFix. The court has also recognized “aesthetic functionality;” a company cannot keep a lock on a

particular design if it happens to be the most aesthetically pleasing option available (because this is likewise anti-competitive), even if the design offers no utilitarian functional advantages. Eco Mfg. The test for this is, effectively, “do the aesthetics of the trademark significantly impair competition?” or “Is it essential to use or purpose of the article, or does it affect cost or quality?” For example, while a color may be a valid trademark, this is only the case if the color offers no

competitive advantages within the market. One could trademark red ironing boards, but not red stop signs or red clothing. Qualitex, Christian Louboutin.

Shape is also a valid target; one can’t lock up the circle for one’s own use, though more esoteric shapes may be allowable. Jay Franco. This is especially the case if you advertise your circular design as being particularly efficient. (In general, nonfunctional features should not be advertised as such if you want to assert

trade dress protection over them) Functionality tests in general: (Maker’s Mark)

Comparable alternative test: does the mark leave a pool of comparable alternative features that competitors may use to compete in the market?

Effective competition test: would the trade dress hinder the ability of potential competitors to effectively compete?

In re Morton-Norwich Prod's, Inc., 671 F.2d 1332 (C.C.P.A. 1982)

TRADEMARK & TRADE DRESS

The requirement of “functionality” that would render a product ineligible for trade dress protection is not met when a product has a functional use. It is required that the product design be dictated by functionality; which was not the case here; the PTO failed to establish that the product at issue (a spray bottle) was required to be as it was for any functional reason, and a number of shapes would offer the same functionality.(Fundamentally, the reason for this is to ensure competitors are not threatened by one company locking up the most efficient design)

In re Bose Corp.,772 F.2d 866 (Fed. Cir. 1985)Bose attempted to register for trademark protection a five-sided speaker enclosure that had become distinctive of Bose’s goods after they sold millions of dollars’ worth of those and similar loudspeaker systems. The PTO board found, and the court affirmed, that but for the five-sided shape of the speaker enclosures, there was nothing out of the ordinary in the design that would cause the public to identify the speakers as Bose’s. This unique feature was designed for functional reasons (increasing portability of the speaker) and, as such, even though alternative designs could be constructed that also offered the same advantage, Bose’s speaker enclosure was determined to be ineligible for trade dress protection.

TrafFix Devices, Inc. v. Marketing Displays, Inc., 121 S.Ct. 1255; 532 U.S. 23 (2001)Trade dress protection extends only to the parts of a product (in this case, a sign that had been fitted with springs so that it could restore itself upright in high winds) that are nonfunctional. Since the only unique and infringed aspect of the design in this case was the set of springs used to do this, the respondent had no trade dress claim against the petitioner.

Eco Mfg. LLC v. Honeywell Intern. Inc., 357 F.3d 649, 69 USPQ2d 1296 (7th Cir. 2003)A mark that is unchallenged for a period of five years becomes an “incontestable” one with much greater protections. However, the mark may still be invalidated if it is found (as in this case, with Honeywell’s round thermostats) that the mark is functional. The record may have shown (and it was unclear in this case) that “consumers' desire for circular thermostats comes from more than familiarity with a shape that Honeywell made famous.”

Qualitex v. Jacobson, 514 U.S. 159 (1995)Qualitex, petitioner, had sued for trademark infringement of its distinctive green-and-gold dry cleaning pads. Won in District Court, but had this set aside by the Court of Appeals on the basis that a trademark could not be obtained on a color alone. Supreme Court held that a color, to the extent that it otherwise meets the requirements to be registered as a trademark (distinctiveness, etc.) may be registered as a trademark. If the color is functional, then the mark must be examined to determine whether or not the mark would interfere with legitimate competition.Functionality dictated certain requirements about the color (must be able to hide stains, etc.) but not the specific shade of green-gold used, and trademark law therefore protects Qualitex’s product.

Maker's Mark Distillery v. Diageo North America, 679 F. 3d 410 (6th Cir. 2012)Maker’s Mark Bourbon had characteristically sealed its bottles with red wax, and Diageo began sealing its bottles with similar wax in a way reminiscent of how Maker’s Mark did it. Sued for trademark infringement. Court upheld trademark.Court found that there was no functional competitive advantage in red wax or in sealing a bottle with wax in the manner that Maker’s Mark used, and that there would be a likelihood of confusion between the two products.

TRADEMARK & TRADE DRESS

Comparable alternative test: does the mark leave a pool of comparable alternative features that competitors may use to compete in the market?Effective competition test: would the trade dress hinder the ability of potential competitors to effectively compete?

Christian Louboutin SA, v. Yves Saint Laurent America Holding, Inc., 696 F.3d 206 (2nd Cir. 2012)Fashion house had obtained a trademark for red, lacquered outsoles on the bottom of shoes, and sought to use this trademark to enjoin competitor from creating a red shoe.Appellate court found that while the use of a contrasting red, lacquered outsole had acquired the requisite secondary meaning to warrant trademark protection, a monochrome shoe had not gained that meaning. Doctrine of "aesthetic functionality:” mark is “aesthetically functional” and thus invalid if it prohibits competitors from competing in the same market (like for clothing of a certain color)

Jay Franco & Sons, Inc. v. Clemens Franek, 615 F.3d 855, 96 USPQ2d 1404 (7th Cir. 2010)The defendant, Franek, had trademarked a round beach towel, which was pitched as an accessory for lazy sunbathers; you could rotate your body on the towel as the sun moved across the sky without having to pick the towel up. He later discovered that the plaintiff company was selling round beach towels, and sued for trademark infringement; Franco countersued to invalidate the mark. The mark had been in continuous use and was incontestable, so Franco sought to invalidate it on functionality grounds.A round towel is the most efficient shape for the product the two were selling – a towel for lazy sunbathers – and the trademark design was dictated by this functionality. Under the court’s test, a design is functional when it is “essential to the use or purpose of the device or when it affects the cost or quality of the device,” and the towel met the latter standard because it used less material than other designs and probably cost less.The court also held that, since a circle is such a basic, rudimentary element of design, allowing a round beach towel to be trademarked would unduly restrict design options for competitors, even though a more unusual shape like an irregular hexagon might be the valid subject of a trademark.

(*OP)Specialized Seating, Inc. v. Greenwich Indus. LP, 616 F.3d 722 (7th Cir. 2010)Trademark dispute over the X-frame folding chair. Defendant’s mark is incontestable but is challenged on functionality grounds.District court found that the shape of the chair was functional (and that parts of the chair had even been redesigned expressly on functionality grounds) and invalidated the mark. Since functionality is a finding of fact, this must stand. (While a product whose overall appearance is distinctive can be protected under the trademark laws, even though most of the product's constituent elements serve some function, this was not the case here; that requires the product to have at least some non-functional elements. As an example, a letter tray might have to have an end cap, but the shape of said end cap does not necessarily have to be a hexagon; the choice of a hexagon would create a protectable element.)

In-class: In re HersheyTrademark examiner refused trademark on Hershey candy, noting that the distinctive shape was in part the result of score lines. TTAB reversed, finding acquired distinctiveness; people recognized the Hershey shape, and there was no evidence that this particular combination of recessed rectangles with a raised border is used by other candy makers or that the overall design is in any way functional.

OTHER DESIGN PROTECTIONS

UTILITY PATENTSUtility Patents There is some overlap between utility & design patents; the two use many of the same standards

and same statutes, notably §102 & §103 (novelty & obviousness). There are aesthetically-driven utility patents, or patents where the design/appearance of an article

can constitute a new, non-obvious, and useful design (see, e.g., Vas-Cath) A design that turns out to be useful, even though the patentee did not necessarily intend it to be

so, is eligible for a utility patent. The designer does not necessarily have to understand the principles behind which it works. Diamond Heads.

A design constructed in a fashion that is exclusively intended to make it more salable (for example, a stocking with a false seam, Scott) is not eligible for utility patent protection. However, a design whose utility comes partially from its mimicry (like imitation wood flooring, or imitation hamburger, Juicy Whip) is patent-eligible. The distinction may be that the former is intended to mislead the customer, while the latter products are intended to allow the customer to mislead others.

The “use” ascribed to a primarily aesthetic patent does not have to be a compelling one, so long as it meets the utility requirements; an example is a decorative tire sidewall design that could not be protected easily with a design patent (as an infringer could simply make a different pattern). The “use” in that case was hiding tire blemishes. “You’re paying the fees; your funeral.” This can, however, also be used to attack a design patent on the grounds that there is a

utility patent on the same or similar material.