Trade Dress, Design Patent and Copyright: Strategies to Maximize Protection, Challenge...

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

[email protected]

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


• 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


• 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


• 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


• 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


• 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


• 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


• 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


• 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


• 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 [email protected]

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).

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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

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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.”

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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

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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

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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

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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)

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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).

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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.

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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?

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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?

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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).

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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).

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Example 1 – Statuette Lamp Base

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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.”

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Example 2 – Jeweled Belt Buckles

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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.”

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Example 3 – Mannequin’s Face

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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.”

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Example 4 – Outdoor Furniture

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Design Furnishings, Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. Dec. 23, 2010)

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• “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

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• 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)

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Baby Buddies Inc. v. Toys “R” Us Inc., 611 F.3d 1308 (11th Cir. 2010)

Baby Buddies

Toys “R” Us

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Example 6 – Cheerleader Uniforms

Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)

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• 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


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• 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.


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• 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


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• 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

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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

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Example 8 – Teardrop String Lights

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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.

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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

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Merrill’s Wharf254 Commercial StreetPortland, ME 04101

Jonathan M. [email protected]

PH /207-791-1203

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