Presenting - Strafford

Presenting a live 90-minute webinar with interactive Q&A
Trade Dress and Design Patent: Leveraging
Recent Court Decisions to Maximize Protection
Trademark, Patent and Copyright Strategies to Challenge and Defeat Infringement Claims
WEDNESDAY, MAY 18, 2016
1pm Eastern
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12pm Central | 11am Mountain
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10am Pacific
Today’s faculty features:
Jonathan M. Gelchinsky, Partner, Pierce Atwood, Portland, Maine
Rachel M. Hofstatter, Of Counsel, Steptoe & Johnson, Washington, D.C.
Robert D. Litowitz, Partner, Kelly IP, Washington, D.C.
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Design Patent Protection
Robert D. Litowitz
Kelly IP, LLP
Washington, DC
202-808-3572
Rob.litowitz@kelly-ip.com
What Does a Design Patent Protect?
• Protects the way an article of manufacture
looks
– Product shape/configuration
and/or
– Surface ornamentation
6
What Is 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
7
Requirements for Patentability
• Novel -- does not already exist (no “prior art”)
• Original -- not the same as novelty – can’t just imitate
something that already exists (replicas)
• Nonobvious -- to a designer of ordinary skill who designs
articles of the type involved (not ordinary consumer)
• Ornamental – must be primarily ornamental, cannot be
entirely functional
8
Functionality and Form
• Not completely functional
– Some significant aspect of the design must not
dictated by function alone – are there alternatives?
• Article of manufacture
– Impression, print, or picture applied to an article of
manufacture
– Not an image by itself
9
Unique Requirements
• Not offensive to any race, religion, sex, ethnic group,
or nationality
• Perceived as an ornamental design
– If not visible in final intended use, the ornamental
design must be a “matter of concern” at some time
during its commercial life
– Examples—hip joint, toner cartridge, internal
component that is not sold as a replacement part
10
Design Patents v. Utility Patents
• Appearance rather than function
• The scope of the design patent claim is the drawings,
instead of focusing on the description
• Design patent applications are examined for novelty,
ornamentality, and nonobviousness—in reality
examination focuses primarily on the clarity of the
drawings or photographs
• No PCT design patent applications
• No multiple designs
11
A Design Patent
12
Drawings Define the
Scope of Patent
13
Why Get U.S. Design Patents?
• Easy: Only one out of three design patents
declared invalid
• 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)
• Duration: Lasts 14 years from issuance
14
Patenting Product Designs
• DESIGN PATENT -- an inexpensive way to:
– Control the product configuration
– Control the sale of replacement parts
– Create a barrier to market entry by a competitor
– Create the possibility of creating perpetual trade
dress rights that can protect the product
configuration forever
15
Important Issues
• Four things to remember:
1. The patented design cannot be entirely functional
2. The drawings define the scope of the claim
3. Unnecessary elements in design patent drawings
provide unnecessary non-infringement positions
4. Design patents can give your client the time to
create trade dress rights (secondary meaning)
16
The Test For Infringement
of a Design Patent
• The “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)).
17
Infringement Examples
• Crocs, Inc. v. Int’l Trade Comm’n (Fed. Cir. 2010)
– Federal Circuit emphasized reliance on patent design
figures, instead of verbal claim construction, in finding
infringement. Courts must do a side-by-side comparison
of the accused design with the patent figures.
18
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.
19
Infringement of a Design Patent Examples
• The omission of a depicted element
– When the alleged infringing product does not
include a feature depicted in the design patent
drawing a court may find that there is no
infringement.
– Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)
– Analogous to the “all elements” rule in utility
patents
20
Elmer v. ICC Fabricating, Inc., 67 F.3d 1571, 1577 (Fed. Cir. 1995)
• The omission of a depicted element:
– “If…the vertical ribs and upper protrusion were functional, not
ornamental, features, [patentee] could have omitted these features
from its patent application drawings. [Patentee] did not do so,
however, and thus effectively limited the scope of the patent claim by
including those features in it.”
» Patented Design
Alleged Infringing Design
21
Application of the Egyptian Goddess
Ordinary Observer Test
22
Application of the Egyptian Goddess
Ordinary Observer Test
• Chef ’n v. Trudeau
– Lines “depict change in curvature or slope of a surface.”
Trudeau steamer has only one change in slope.
– The ‘503 patent has a “small, depressed ring at the center.” Not
present in Trudeau steamer (other than hole pattern, which is
irrelevant because of disclaimed elements).
23
Have You Heard About
Apple v. Samsung???
V.
24
Apple v. Samsung Design Patent Battle
Source: Prafulla.net. “Samsung vs Apple Phone Patent Fight:
Apple wins $1 billion in patent suit. “ Aug. 25, 2012
25
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. D504,889 (the “D’889” patent)
Samsung countersued, alleging that Apple’s iPhone and iPad products infringed
various Samsung utility patents.
26
Samsung Smartphones
BEFORE iPhone
Apple’s iPhone
(announced Jan. 2007)
Samsung Smartphones
AFTERiPhone
Source: www.ZD.net. “Samsung’s case against
Apple is bogus, here’s why. “ Aug. 3, 2012
27
Outcome
• After three weeks of trial and three days of deliberations a
jury unanimously found that:
– Samsung had willfully infringed Apple’s patents (including all
three design patents) for the iPhone
– Samsung’s Galaxy Tab 10.1 WiFi and Galaxy Tab 10.1 4G
LTE did not infringe Apple’s design patents
– Apple had not infringed any of Samsung’s patents
• Damages assessed at $1.05 billion
• Slashed on appeal--Samsung paid $548 million
• Supreme Ct. has granted cert.
28
High Point Design, LLC v. Buyers Direct, Inc.,
2013 WL 4826282 (Sept. 11, 2013)
• Background:
– Buyers Direct owns U.S. Design Patent No. D598,183 (“D’183”)
– The patent claims “the ornamental design for a slipper, as shown
and described” in two drawings:
29
High Point Design, LLC v. Buyers Direct, Inc.,
2013 WL 4826282 (Sept. 11, 2013)
• Background:
– The D’183 Patent also discloses 2 additional design features for
soles (a smooth bottom sole and a raised dotted sole):
30
High Point Design, LLC v. Buyers Direct, Inc.
• Buyers Direct sells Snoozies®
• High Point Design manufactured
which it asserted is an
and distributed FUZZY BABA®
embodiment of the D’183 patent:
slippers:
31
High Point Design, LLC v. Buyers Direct, Inc.
• High Point sued for a declaratory judgment “(1)that the manufacturing and
sale of FUZZY BABA® slippers did not infringe on the D’183 Patent and (2)
that the patent was invalid and/or unenforceable”
• The district court granted the motion for summary judgment, holding the
′183 patent invalid on the ground that the design claimed in it was both (1)
obvious in light of the prior art and (2) primarily functional rather than
primarily ornamental.
Prior Art:
Buyer’s Direct Patent
32
High Point Design, LLC v. Buyers Direct, Inc.
• The Federal Circuit reversed the district court’s grant of summary
judgment finding the following errors:
• The district court failed to translate the design into a verbal description
for purposes of comparison with the prior art,
• District Court’s description was too abstract
– Remanded for a verbal description sufficient to “evoke a visual image”
– No guidance on how much detail would be sufficient
• Conflict with Egyptian Goddess Inc. v. Swisa, Inc. where Federal Circuit
warned against verbal claim construction of design patents for purpose of
infringement analysis?
33
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 for sale of an article including the
design
– Not less than $250
– Cannot recover profit twice—in other words you can’t get
284 and 289 damages
34
Wallace v. Ideavillage Products Corp., No. 20151077, 2016 WL 850860 (Fed. Cir. Mar. 3, 2016)
• Giving design patent the brush off
• Products held were dissimilar
– Prior art disclosed bath brushes with a generally rounded
head and roughly cylindrical handle were prior art
– an ordinary observer viewing both designs would not
confuse one product for the other
35
TRADE DRESS BASICS
Rachel Hofstatter, Steptoe & Johnson LLP
202-429-3903 rhofstatter@steptoe.com
May 18, 2016
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
37
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).
38
Examples of Trade Dress
39
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
40
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).
41
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
Not Functional
Confusion
42
Infringement
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.
– Sleep Science Partners v. Lieberman, 2010 WL 1881770 (N.D. Cal. 2010)
(overall “look and feel” of a website is too indefinite; the plaintiff needed to
define the elements of the website that it sought to protect)
 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”).
43
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).
44
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)
– 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.
U.S Trademark Registration 4,021,593 by Apple Inc. for
retail store configuration
45
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).
46
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.
 Cases indicate that designs need to be unique in the market and
prominent to be inherently distinctive.
47
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 USPQ2d 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.
48
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
49
Acquired Distinctiveness Example
 Christian Louboutin, S.A. v. Yves Saint Laurent America Holding, Inc., 696 F.3d
206 (2d Cir. 2012) (reversing District Court).
– 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
50
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.
51
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.
52
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.”
53
Examples of Functional Designs
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)
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)
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)
54
“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)
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.”
55
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
– Abercrombie & Fitch Stores, Inc. v. American Eagle Outfitters, Inc., 280 F.3d
619 (6th Cir. 2002) (solid, plaid, stripe designs on casual clothing made from
cotton, wool, twill fabrics found aesthetically functional because giving
protection would prevent competition in the market for casual clothing aimed at
young people).
– 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).
56
Which of these qualify for trade dress protection?
Why?
57
Which of these qualify for trade dress protection?
Why?
√
X
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)
X
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)
√
X
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)
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)
√
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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)
Water bottle packaging featuring square shape, threedimensional 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)
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
63
Copyright Protection for Product Designs
Jonathan M. Gelchinsky
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 “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
• Physical: can artistic material be
physically separated from utilitarian
aspects of the design?
• Conceptual: can artistic material be
conceptually separated from utilitarian
aspects of the design?
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Separability
• What are the utilitarian aspects of the
useful article?
•
Do not consider aspects that merely portray the
appearance of the article or convey information. 17
U.S.C. § 101 (defining “useful article”)
•
Is serving a “decorative function” a utilitarian aspect?
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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. KieselsteinCord 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
69
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.”
70
Example 2 – Jeweled Belt Buckles
71
Kieselstein-Cord v. Accessories by
Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)
• Jeweled belt buckles
• “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
73
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
75
Design Furnishings, Inc. v. Zen Path LLC, 2010
WL 5418893 (E.D. Cal. Dec. 23, 2010)
• Furniture
• “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.”
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Example 5 – Cheerleader Uniforms
77
Varsity Brands, Inc. v. Star Athletica, LLC, 799
F.3d 468 (6th Cir. 2015)
•
•
Majority: “The graphic features of Varsity’s designs can be
identified separately from, and are capable of existing
independently of, the utilitarian aspects of cheerleading
uniforms.”
•
“The top and skirt are still easily identified as cheerleading uniforms
without any stripes, chevrons, zigzags, or color-blocking.”
•
“more like fabric design than dress design”
Dissent: “Clothing provides many functions, but a uniform at its
core identifies its wearer as a member of a group.”
•
“Without stripes, braids, and chevrons, we are left with a blank white
pleated skirt and crop top [that] the reasonable observer would not
associate . . . with cheerleading.”
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Star Athletica, LLC v. Varsity Brands, Inc.
Supreme Court granted cert petition on May 2, 2016
Question presented:
Under the Copyright Act, a “useful article” such as a chair, a
dress, or a uniform cannot be copyrighted. 17 U.S.C. § 101. The article’s
component features or elements cannot be copyrighted either, unless
capable of being “identified separately from, and . . . existing
independently of, the utilitarian aspects of the article.” Id. Circuit courts,
the Copyright Office, and academics have proposed at least nine different
tests to analyze this separability. The Sixth Circuit rejected them all and
created a tenth. . . .
What is the appropriate test to determine when a feature of a
useful article is protectable under § 101 of the Copyright Act?
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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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Example 6 – Pacifier Holder
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Baby Buddies Inc. v. Toys “R” Us Inc., 611
F.3d 1308 (11th Cir. 2010)
• Ribbon tether, clip and snap components =
utilitarian, not protectable by copyright
• Plastic teddy bear and ribbon bow = physically
separable, eligible for protection
Baby Buddies
• 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)
Toys “R” Us
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Comparison of IP Laws
Type
Term
Benefits
Drawbacks
Design Patent
14 years
No need to prove secondary meaning
Must be novel and non-obvious
Exclusivity can provide time to build
up secondary meaning for trade dress
protection
Non-functional
Provides evidence of nonfunctionality, helping with eventual
trade dress protection
Limited duration
No minimal level of creativity or
originality
Must show secondary meaning
Trade Dress
As long as use is
continued
Registration required
Non-functional
Registration helpful, but not required
Challenges defining the trade
dress
Copyright
Life of author +
70, or 95 years
from publication
Level of creativity is low
Must be original
No secondary meaning required
Artistic features must be
separable from utilitarian aspects
Registration relatively simple, only
required if pursuing federal claim
Independent creation defense
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Jonathan M. Gelchinsky
JGelchinsky@pierceatwood.com
Merrill’s Wharf
254 Commercial Street
Portland, ME 04101
PH /207-791-1203