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Trade Dress, Design Patent, and Copyright:

Strategies to Maximize Protection, Challenge

and Defeat Infringement

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WEDNESDAY, NOVEMBER 20, 2019

Presenting a live 90-minute webinar with interactive Q&A

Roberta Jacobs-Meadway, Board Member, SeniorLAW Center, Philadelphia

Robert D. Litowitz, Partner, Kelly IP, Washington, D.C.

Meredith M. Wilkes, Partner, Jones Day, Cleveland

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Design Patent Protection

Robert D. Litowitz Kelly IP, LLP

Washington, DC

202-808-3572

[email protected]

Design Patent Evolution

6

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

7

What’s Covered?

• Shape and/or Surface ornamentation—how

something looks

8

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

9

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.

10

Term of protection

• In general, 15 years after the date of issuance

of the patent

– The Constitution giveth, the Constitution limits

• “To promote the progress of science and useful arts, by

securing for limited times to authors and inventors the

exclusive right to their respective writings and

discoveries.”

11

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

12

Compare to

trade dress

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., grooves of a 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.

13

Design Patent vs. Trade Dress

• Product design can be protected by

either or both

Sooner Later

14

Requirements for Trade Dress

• Use in commerce

• Secondary meaning—use + time

• Non-functional (different from DP standard)– “‘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)

– Evidentiary effect of utility patent vs. design patent

on trade dress functionality

15

Novelty and Non-obviousness

• High rate of allowance: > 90%

• Few rejections based on prior art: < 2%

• Difficult to challenge validity in court

High Point Design LLC v. Buyers

Direct, Inc., 730 F.3d 1301 (Fed.

Cir. 2013); 621 Fed. App’x 632

(2015)

16

Non-obviousness continued

Claimed design for

“pocket key organizer”

Prior design

Key-Bar, LLC v. Curv Brands, LLC, 2017 WL 1096586 (Patent

Trial and Appeal Board, March 22, 2017)

17

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

18

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.”

19

Ornamentality – low bar

• “The overall appearance of the article—the claimed design viewed in its

entirety—is the basis of the relevant inquiry, not the functionality of

elements of the claimed design viewed in isolation.” Ethicon Endo-Surgery,

Inc. v. Covidien, Inc., 796 F.3d 1312, 1329 (Fed. Cir. 2015)

Sheet of labels

Exhaust pipe

Door hinge

20

One Year Statutory Bar

21

Examples of Design Patents

22

Design Patent Applications

• Specification--Brief Description of the Figures.

• Disclaimer of unclaimed subject matter

– Broken lines used to define boundary/environment

23

Drawings Reign Supreme

• Drawings = the Design Claim.

• Front, Rear, and Top perspective(s)

• “Clear and complete . . . Nothing left to conjecture” MPEP 1503.02

• A design patent is indefinite “if one skilled in the art, viewing the design as

would an ordinary observer, would not understand the scope of the design

with reasonable certainty based on the claim and visual disclosure.” In re

Maatita, 900 F.3d 1369, 1377 (Fed. Cir. 2018).

24

Drawings Define the

Scope of Patent

25

Inconsistency in Drawings Renders Design

Patents Indefinite

• Times Three Clothier, LLC v. Spanx, Inc., 2014

WL 1688130 (S.D.N.Y. 2014)

Straight line in Figs. 1 and 2 versus angled line in

Figs. 3-6 rendered patent indefinite

26

Born with a silver spoon? Gorham v. White, 81 U.S. 14 Wall. 511 511 (1871)

27

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.

28

Whirlpool’s addition to the Gorham

Ordinary Observer test

• In Litton v. Whirlpool, the Federal Circuit added the

requirement that the accused design must feature the

“point of novelty” of the patented design. 728 F.2d

1423 (Fed. Cir. 1984).

Whirlpool microwave Litton microwave

29

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 Whirlpool’s “Point of Novelty” test

30

Infringement Examples

• Crocs, Inc. v. Int’l Trade Comm’n (Fed. Cir. 2010)

31

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.

32

Fuzzy Wuzzy Wasn’t Infringing

33

Impact of Prior Art on Infringement Issue

Wing Shing Products

(BVI) Co. Ltd. v.

Sunbeam Products,

Inc., 665 F. Supp. 2d

357 (S.D.N.Y. 2009),

affirmed 374 Fed.

App’x 956 (Fed. Cir.

2010)

34

Wing Shing Products

• Maker of coffee machine obtained design patent and sued

rival for infringement

• Rival defended on the basis that prior art showed the

same design

• Court noted the prior art showed a crowded field of

coffee maker designs and concluded an ordinary

observer familiar with the prior art would not believe

the accused design was the same as the patented design

• Holding: No infringement

35

Have You Heard About

Apple v. Samsung???

V.

36

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.

37

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

38

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” but did not find design patents invalid for functionality

• 2015—partial final judgment entered for $548m based on total iPhone profits

• 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?”

39

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

40

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 embodied in a component that is manufactured

from the rest of the product, or if the component can be sold

separately.

41

Columbia v. Seirus S.D. Cal. Verdict; Fed. Cir. appeal pending

42

First Post-Apple Verdict

43

Where Do We Go From Here?

44

TRADE DRESS, DESIGN PATENT, AND COPYRIGHT: STRATEGIES TO MAXIMIZE PROTECTION, CHALLENGE AND DEFEAT

INFRINGEMENTPART II—TRADE DRESS

45

Meredith M. Wilkes, Esq.

OVERVIEW

• Proving Trade Dress Rights

• Functionality considerations

• Secondary meaning

• Coexistence with Design Patents and Copyrights

• Advantages/Disadvantages of Trade Dress Protection

• Best Practices for Protection


46

PROVING TRADE DRESS RIGHTS


47

-Section 43(a) of the

Lanham Act extends

protection to any word,

term, name, symbol, or

device, or combination

thereof

- Cannot be functional,

must have acquired

secondary meaning

“PRODUCT DESIGN” VERSUS “PACKAGING”


48

FUNCTIONALITY

• Essential to use or purpose

• Affects cost or quality

• Burden on applicant, enforcer


49

AESTHETIC FUNCTIONALITY

• Buying something because of how it looks-- the design is “functional”

• The ultimate test of “aesthetic functionality” is whether the recognition

of trademark rights would significantly hinder competition (Restatement

(Third) of Unfair Competition 17, Comment c) .


50

DESCRIBING WITH PARTICULARITY


51

• The mark consists of the configuration of the square shaped

bottle container for the goods, having an embossed ridge or

scalloped design on the neck portion of the bottle, and an

embossed signature design comprised of the words "JACK

DANIEL".



52

• The mark consists of "REESE'S" in yellow stylized script letters outlined

in the color brown above the words "2 PEANUT BUTTER CUPS" in

yellow letters, a stylized partial design logo of an elongated side of a

peanut butter cup, a partially eaten stylized design of a peanut butter

cup, and the words "MILK CHOCOLATE" all on an orange background.

The mark consists of the colors orange, brown, yellow and beige with

the color orange appearing as background for the entire mark, the color

brown appearing in the partial stylized design of a peanut butter cup, in

the elongated side view of a stylized peanut butter cup, and in the

words "MILK CHOCOLATE"; the color yellow appearing in "REESE'S"

and in the words "2 PEANUT BUTTER CUPS"; with the color beige

appearing in the design of the peanut butter cup filling.



53

• The mark consists of the design and layout of a retail store. The store

features a clear glass storefront surrounded by a paneled facade consisting

of large, rectangular horizontal panels over the top of the glass front, and two

narrower panels stacked on either side of the storefront. Within the store,

rectangular recessed lighting units traverse the length of the store's ceiling.

There are cantilevered shelves below recessed display spaces along the

side walls, and rectangular tables arranged in a line in the middle of the store

parallel to the walls and extending from the storefront to the back of the

store. There is multi-tiered shelving along the side walls, and a oblong table

with stools located at the back of the store, set below video screens flush

mounted on the back wall. The walls, floors, lighting, and other fixtures

appear in dotted lines and are not claimed as individual features of the mark;

however, the placement of the various items are considered to be part of the

overall mark.

SECONDARY MEANING


54

• Trade dress never inherently distinctive

• Distinctiveness must exist as the time rights are

claimed (i.e. when infringer enters the market)

• “Serious burden” and “not an invitation to shotgun

litigation” EZ Pedo, Inc. v. Mayclin Dental Stuido, Inc.,

284 F. Supp. 3d 1065,1071 (E.D.Cal. 2018).

SECONDARY MEANING—MAKING A CONNECTION


55

Factors considered:

• Testimony of consumers

• Type and amount of advertising

• Surveys

• Length, nature, and exclusivity of use

• Evidence of intentional copying

• Sales and number of buyers

• Established position in market

SURVEYS AND SECONDARY MEANING—FACTORS TO CONSIDER


56

• Methods should mirror the situation in which the ordinary

person would encounter the trademark

• Circumstances will dictate which survey format is most

appropriate

SURVEYS AND SECONDARY MEANING—FACTORS TO CONSIDER


57

• Surveys in the ordinary course, contemporaneous with

launch and thereafter, are reliable − best evidence of

acquired distinctiveness at the relevant time

• But − early studies may not be sufficient and are likely

discoverable

• Backward looking issues

EXAMPLES OF WHAT WORKED—AND WHAT DID NOT


58

EFFECT OF REGISTRATION?

-Not required for trade dress enforcement

- Registration entitles the owner to a

presumption of validity that shifts the

burden to the infringer

-Presumption of validity does not apply to

infringement that began before registration


59

MULTIPLE LAYERS OF PROTECTION?

• Trade dress, design patent and copyright can coexist in one product


60

• Trademark = Nike Swoosh

• Copyright = Fabric Pattern

• Design Patent = Shox Sole

ADVANTAGES OF TRADE DRESS PROTECTION

61

• Infinite monopoly

• Novelty/non-obviousness not required

• No on-sale bar

• Registration not required to acquire rights

• Injunctive relief


CLAIMING PROTECTION—BEST PRACTICES

• Choose designs that are not similar to those already in use.

• Omit non-distinctive, functional features in defining the mark.

• Avoid overlap between utility patent claims and the design feature for which

you seek trademark protection.

• Draw attention to the design feature as a mark in advertising − “look for”

advertising.


62

THANK YOU

Meredith M. Wilkes

[email protected]

63

Copyright law as an alternative

Copyright as an alternative means to protect product packaging, features and configurations.

Roberta Jacobs-Meadway

SeniorLAW Center

[email protected]

Why consider copyright as a vehicle to protect productfeatures and configurations and packaging, rather thantrademark/trade dress?

• No requirement for use in commerce

• No requirement for secondary meaning

• Nothing precludes later/other claim of trademark/trade dress rights

• Length of copyright term is generally sufficient

• Potential for an award of statutory damages as well as fees with timely application for registration

65

ISSUES TO BE CONSIDERED IN CLAIMING COPYRIGHT RIGHTS

• Who is the author for purpose of the copyright claim

• Copyright claimant may or may not be the same as theentity who can claim trademark/trade dress rights

• Is the work in which copyright is claimed a derivative work or one otherwise potentially infringing rights of another

• Role of clip art• Stock photos• Works of “inspiration” or homage

66

In looking at copyright protection for product design and configuration, and packaging there are three main areas of focus:

• Originality

• Whether there is a merger of idea and expression that defeats a copyright claim

• Conceptual separability of the expressive work from the utilitarian aspect of the product or package element in which copyright is claimed

67

ISSUES IN DETERMINING IF COPYRIGHT RIGHTS ARE AVAILABLE

• Is the work original and creative?• n.b. the threshold for sufficient expression and

originality is low

• What is the idea, what is the expression• Is there more than an idea which is not capable of being

expressed in different ways

• Is there an artistic work that is conceptually separable from the useful article of which it is a part or with which it is used?

68

PACKAGE DESIGNS MAY OR MAY NOT BE SUBJECT TO COPYRIGHT

PROTECTION

• It depends

• It depends on whether the package art incorporates a drawing or photograph or enough graphic elements or the like which as a whole are original enough to support a copyright claim

69

Complex as equivalent to creative?

• Where the package design or fabric pattern consists of some few ordinary shapes and perhaps a frame and some descriptive text, none of which individually would support a copyright claim, it is necessary to establish that the selection and arrangements of such elements is creative enough, complex enough, to warrant protection.

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

70

Lack of complexity, lack of authorship?• Packaging designs will be denied copyright

protection if lacking sufficient authorship. See, e.g. the Copyright Office decision rejecting a claim to registration of the LARABAR wrapper depicted below:

71

THE CORB OPINIONS IDENTIFY THE PREREQUISITES FOR COPYRIGHT

PROTECTION FOR PACKAGING

• A mere simplistic arrangement of non-protectable elements does notdemonstrate the level of creativity necessary to warrant protection.

• The Work is a combination of words, simple shapes, and a set of basiccolor schemes. The applicant does not appear to dispute the Office’sconclusion that none of the individual elements are eligible forcopyright protection. Rather, General Mills argues that “the selection, coordination, and arrangement of the various design elements” are sufficiently creative.

• But the number of choices an author makes in combining simple shapes, fonts, and colors must be “sufficiently high” if that combination is going to weigh in favor of copyrightability. Batiste v. Najm, 28 F. Supp 3d 595, 603 (E.D. La. 2014). The Work before the Board does not satisfy that threshold.

72

WHAT LEVEL OF COMPLEXITY SUFFICES

• The question is whether the combination of elements results in a design that, on its face, is copyrightable even though the individual elements are not.

• An example from the Compendium of a wrapping paper design found eligible for registration “combines multiple types of geometric shapes in a variety of sizes and colors.” COMPENDIUM (THIRD) Sec. 9061). A depiction of the wrapping paper design follows:

73

Randomness indicates creativity?

• The wrapping paper design includes: stars of five or six different sizes and in at least eight different colors; circles of four or five different sizes; and triangles of four or five different sizes. Some of the shapes are stretched horizontally, others vertically; one triangle sits at an angle that parallels no edge, while the others all have a side that parallels an edge. And the various shapes are all arranged in a pattern that appears random.

• In short, the wrapping paper design was found to exhibit sufficient creative authorship for copyright protection.

74

See, the Copyright Office Compendium• It may be unique in the sense that LARABAR is the

only package design that uses this exact layout, but the general arrangement is common and any creative contribution is de minimis.

• COMPENDIUM (THIRD) Sec. 310.1 (“The fact that a work may be novel, distinctive, innovative, or even unique is irrelevant to this analysis . . . Conversely, the fact that a work is new, innovative, or even unique does not necessarily mean that it contains a sufficient amount of creative expression to satisfy the originality requirement.

75

What determines creativity in expression?• Indeed, the better analogy for the Work from

section 906.1 of the Compendium is the painting with a purple background and evenly spaced white circles, the combination of which “does not contain a sufficient amount of creative expression to warrant registration.” COMPENDIUM (THIRD)” Sec.906.1. A depiction of the painting follows:

76

Originality – the bar is low,but there is a bar

• Universal Furniture Inc. v Collezione Europa USA (4th

Cir.):

While even aesthetically pleasing furniture design may not be subject to copyright protection, the

selection

coordination

adaptation

arrangement

of design elements resulted in a “unique” arrangementof elements that crossed the low threshold for originality

77

Does the order of design matter?

• The court found significant that the designer had developed the shape of the furniture before turning to the ornamentation, and that the role of many of the decorative elements (shells, leaves) was aesthetic, not utilitarian.

78

How many common elements suffice?• In the opinion of the Copyright Review Board, some

combinations of common or standard design elements may be sufficiently creative in how they are juxtaposed or arranged to support a copyright

• Not every combination or arrangement meets this test. In the context of jewelry design, it appears that the more complicated the design, meaning the more elements that are contained in the overall work, the more likely the Copyright Office will register the copyright in the work.

79

Does some text added to commonplace design suffice?Whether elements are “complicated” enough or numerous enough or arbitrary enough seems to be a subjective standard.

Where choices are relatively few and the arrangement is deemed commonplace, the choices made by the author may not meet even the modest creativity requirement of the copyright law.

• E.g., Sorry Boys, My Daddy Says I Can’t Date ‘Til I’m30 – CORB Id:1-A63T21 (February 9, 2012)

80

Merger, and the idea-expression dichotomyMerger, the idea-expression dichotomy, and the question of sufficient authorship/originality

The issue of whether there are so few ways to depict an object found in nature that according copyright protection in the depiction would impermissibly afford protection to the idea of the object has been resolved in different ways depending on:

• The degree of artistic work displayed, and

• The persuasiveness of the evidence made of record

81

In Hart v. Dan Chase Taxidermy Supply Co.

The court did say that if “all realistic fish mannequins, no matter how artistic they might be, will necessarily be substantially similar,” then no fish mannequin can be copyrighted because the idea and expression have merged completely.

82

Facts presented/found matter

• On remand, the district court rejected the plaintiff’s argument that there are an endless number of ways to express a lifelike fish and concluded that the only element of the fish mannequin not necessitated by the idea was the “cant or swish” of the tail; however, there was an extremely limited number of ways to design the tail.

83

When are fish unlike dogs?

• The district court held that there are so few ways to express a realistic fish mannequin that the merger doctrine precluded copyright protection.

• Note the consequence would deny copyright protection to duck decoys and would appear contrary to F.W. Woolworth Co. v. Contemporary Arts, 344 U.S. 222 (1952) which involved copyright rights in statuettes of a cocker spaniel in show position.

• Note also decisions according protection

84

Prestige Floral v. California Artificial Flower Co.

The U.S. District Court for the Southern District of New York granted a preliminary injunction to amanufacturer of a “molded polyethylene flower in the form of a Charles lilac” to prevent a competingartificial flower manufacturer from producing a verysimilar product.

85

When is a flower not like a fish?

• The court concluded that “though a flower . . . Is acreation of nature, likeness of it may becopyrighted.”

• The court stated that this result was especially proper here because creating the plastic lilacinvolved “ numerous and detailed decisions as to proportion, form, contour, configuration, and conformation” and a “substantial degree of skilland independent judgment.”

86

Sunset Lamp Corp. v Alsy Corp.

The case concerned whether a banana leaf design on a lamp was sufficiently original to qualify for copyright protection.

The court rejected the argument that sculpture that imitates nature is not copyrightable.

As for the plaintiff’s banana leaf design, the court held that it surpassed the threshold requirement for originality.

It was more than an imitation of nature: the leaves were elongated, stylized, and “twist[ed] and intertwine[ed]” in an unnatural fashion.

87

Animal Fair, Inc. v. AMFESCO Industries, Inc.

The court found that a bear-shaped slipper intended to be worn at home was entitled to copyright protection.

It was it was not a “realistic representation of a bear’s paw.”

The court found that the “plaintiff [sought] only to protect what may be properly copyrighted under the law: the particular artistic expression embodied in its novelty slipper.”

88

Wildlife Exp. Corp. v. Carol Wright Sales, Inc., 18 F.3d 502, 507 n.3 (1994)

The distinction was drawn between the duffle bagitself, which is a ‘useful article,’ and the animal head and tail attached to the ends of the bag, which are artistic designs found to be entitled to copyright protection.

See 17 U.S.C. Sec. 102(a)(5).

89

SAVATA V. LOWRY (9TH Cir. 2003)

90

Satava v. Lowry

The Ninth Circuit concluded that a glass-in-glass sculpture of lifelike jellyfish “possesse[d] a thin copyright that protects against only virtually identical copying.”

The defendant began creating glass-in-glass jellyfish sculptures after seeing a picture of plaintiff’s work, and his sculptures were remarkably similar.

91

“Thin” protection vs none

The plaintiff, however, was unable to prevent blatant copying.

The court found that his sculpture consisted of “unprotectable ideas and standard elements,” and his selection and arrangement of the elements was not original.

The court reasoned that there was no protection for “the idea of producing a glass-in-glass jellyfish sculpture or to elements of expression that naturally follow from the idea of such a sculpture,” and the plaintiff could “not prevent others from copying aspects of his sculptures resulting from . . . jellyfish physiology,” such as tendril-like tentacles, rounded bells, or bright colors.

92

Beaudin v. Ben & Jerry’s Homemade

The Second Circuit found that the idea/expression distinction precluded the possibility of enforcing a registered copyright in the design of white hats with black spots, intended to evoke the appearance of Holstein cows:

93

Commonplace ornamentation as idea• Protecting Beaudin’s particular renderings of black

splotches on a white background against identical copying would run the risk of infringement liability for anyone else who happened to see one of his hand-painted articles, and, despite having no intent to replicate, in fact created a fabric design that was indistinguishable from the Beaudin “original.”

94

Costumes, uniforms and other apparel• According to the Copyright Office, “fanciful”

costumes should be treated no differently from other “useful articles”:

95

Protection for separable elements

• In accordance with the copyright principles applying to useful articles, fanciful costumes will be registered if they contain separable pictorial or sculptural authorship.

• The separable authorship may be physically separable, meaning that the work of art can be physically removed from the costume, or conceptually separable, meaning that the pictorial or sculptural work is independently recognizable and capable of existence apart from the overall utilitarian shape of the useful article.

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Pictorial reprsentations on apparelThe Copyright Office has taken the position in theregistration context that “apparel” would receive no copyright protection beyond that already recognized in the case law: “[G]arment designs (excluding separately identifiable pictorial representations of designs impose upon the garment) will not be registered even if they contain ornamental features, or are intended to be used as historical or period dress.”

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Conceptual separability

• Mazer

• Walmart v Samara

• Star Athletica

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Lamp bases as sculptural works

• The Supreme Court, in its 1954 decision in Mazer v Stein, held that a sculptural work in the shape of a dancer, designed to be used as a mass-produced lamp base, was copyrightable despite the“utilitarian” function to which it was dedicated.

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What is the reach of Mazer?

• Post – 1954, it might have seemed obvious that copyright could be a vehicle to protect product configurations that would not (yet) be recognized as protectable trade dress

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From lamps to buckles to…

• Decisions based on the statute precluding copyright protection for useful articles continued to block many efforts to seek relief from copying of product features and configurations on the basis of copyright

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Dual protection as an approach

• That a work is embodied in a useful article will not bar copyright protection

• Trifari, Krussman & Fishel, Inc. v Charel Co. 134 F. Supp 551 (SDNY 1955) addressed copyright protection for costume jewelry.

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Concepts overlap and divergeCostume jewelry may express the artistic conception of its author no less than a painting or a statute . . . A necklace, like a circus poster or a book, is not to be denied the benefits of the Copyright Act because it may not attain the same recognition as is accorded the work of a renowned artist.So long as the material for which copyright is sought exhibits some degree of individuality so that the court is convinced that the author has created an original, tangible expression of an idea rather than a merely pleasing form dictated solely by functional considerations, copyright registration is available.

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The Copyright Act protectscommercial work and “fine art”• Simply because it is a commonplace fashion

accessory, not an expression of ‘pure’ or ‘fine’ art does not preclude a finding that plaintiff’s copyrighted article [costume jewelry] is a work of art within the meaning and intendment of the Act.

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Star Athletica – revival rather than change?• Before Star Athletica there was Samara. That

decision is best known for its holding that product configuration can not be inherently distinctive.

• There is another aspect to the case

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Samara Bros. v Wal-Mart Stores 165 F.3d 120, 132 (2d Cir. 1998), abrogated on other grounds, 529 U.S. 205 (2000)

• Each of the challenged copyrights is registered with the U.S.Register of Copyrights. A certificate of registration“constitutes prima facie evidence of the validity of acopyright, 17 U.S.C. Sec. 410(c), though that presumptionmay be rebutted.

• In Folio Impressions this Court awarded protection to a design of a series of roses, a common shape, placed in straight lines on an ornate background and turned so that the roses faced in various directions. We first recognized protection for the rose design itself separate from its arrangement on the background. Although the rose is a common shape, we noted that because there was a validregistration, the rose had a “presumption of validity” and the defendants “offered no proof at trial to overcome thispresumption.”

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Could the appliques ever be distinctive?We must find the Samara designs similarly original. Their registrations provide a presumption of validity which Wal-Mart has failed to overcome. Wal-Mart provided no evidence at trial challenging the validity of the copyright registrations. It failed to adduce evidence to show that the works were not“independently created by its author, and not copied from someone else’s work.”

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Scope of protection remains an issue. . . . copyrights depicting familiar objects, such as the hearts, daisies and strawberries in Samara’s copyrights, are entitled to very narrow protection. It is only the virtually identical copying, such as the copying in this case, which will result in a successful claim of infringement of familiar objects.

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How close must the “copy” be?

• That is, the designs applied to the product were conceptually separate from the apparel itself and subject to copyright protection.

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“useful” vs functional

The requirement of conceptual separability stems from the fact that copyright is not intended to protect useful articles. The ornamental aspect of useful articles is the province of design patents.

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Could the uniforms be distinctive?

Star Athletica “revives” copyright as a basis forprotecting product configuration, features andpackaging

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Copyright and common geometric shapes/patternsStar Athletica was a dispute between two manufacturers of cheerleader uniforms. The accused copier countered by arguing that the designs could not be subject to copyright protection because they were not “separable” from the utilitarian purpose of the clothing.

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The issues, restated

Pursuant to Star Athletica, the issues are:

1. Can the design feature be perceived as a two or three dimensional work of art separate from the useful article?

2. If so, would that feature qualify as a protectable work – on its own or in some other tangible medium of expression – if imagined separately from the useful article into which it is incorporated?

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What Star Athletica did not do

• While you can perceive of the stripes and chevrons that make up the design as a work of two-dimensional art separate from the useful article (the piece of clothing), the Court did not decide whether that separately imagined design could qualify as a protectable work.

• Was it sufficiently original?

• The settlement of the case meant the second issue would not be decided.

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After Star Athletica

• After Star Athletica, the first CORB decision to cite the new test was in re Pizza Slice Pool Float (https://www.copyright.gov/rulings-filings/review-board/docs/pizza-slice-pool-float.pdf), decided in July 2017.

• The case involved the copyrightability of a rectangular inflatable pool float with a pepperoni pizza slice design. CORB affirmed the refusal to register on the grounds that the design was not sufficiently original, but noted in dicta that the two-dimensional pizza design, although unoriginal, was easily separable from the object’s function under the Star Athletica test.

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https://www.copyright.gov/rulings-filings/review-board/docs/pizza-slice-pool-float.pdf

Post Star Athletica, more efforts to register, with some successSince Star Athletica, the Copyright Office has been more ready to issue registrations for product configurations and features

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Light fixtures (Trilliane Strand) (CORB 7/27/17)

Because it is a light fixture, Swarovski acknowledges that the Work is a useful article that cannot be protected by copyright as such. See 17 U.S.C. Sec. 101; First Request at 2; Second Request at 3.In its correspondence with the Copyright Office, however, Swarovski states that it “does not claim copyright in the overall shape or industrial design of the Trilliane Strand . ..light fixture . . . but rather the artistic expressionreflected in the sculptural features of the work.”

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Light fixtures (AMACA)) (CORB 7/27/17)

• The sculptural features Swarovski seeks to registerare limited to the “crystal crown” and “curtain ofcrystal strands” specifically identified in its requests for reconsideration. First Request at 5-7; Second Request at 5-7, 8 (also describing these features as “the crystal collar and curtain of crystal strands,”which are “sculptural adornments that embellish the underlying shape of ‘ the light fixture).

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Light fixtures (Pendant Lamp) (CORB 4/4/18)

• The Work’s three-dimensional design of metal mesh interspersed with crystals is an artistic feature that can be perceived as a freestanding work of art that does not recreate the lighting fixture when imaginatively removed from the useful article.

• Additionally, the Board finds that the Work’s intricate crystal and mesh design contains sufficient creative expression to be copyrightable under the threshold articulated in Feist Publications, Inc. v. Rural telephone Services Co., 499 U.S. 340, 363 (1991).

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Seriously?

• The Work is a glass sculpture in a shape resembling the face of a bisected globe, with a pattern of filaments imbedded in the glass; an internally-mounted LED is included to illuminate the globe and filaments.

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How far can this be taken?

• The Board finds that the Work’s glass sculpture andimbedded filaments meet the test set forth in StarAthletica and therefore constitute artistic expressionthat is separable from the Work’s utilitarian function ofillumination.

• The Work’s three-dimensional design of glass formedinto a half globe and imbedded with filament wires canbe perceived as a standalone work of art without theinternally mounted LED that makes the Work a useful article.

• Additionally, and significantly, the Board finds thatthese separable elements contain sufficient creative expression to be copyrightable.

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Wearing Apparel (Wonderer Kimono) (CORB 11/28/17)The Work, a kimono, includes a combination of preexisting lace patterns incorporated into the bottom half of the kimono as well as beige lace trim decorating its back and sleeves. The particular two-dimensional artistic features identified by Sisco for registration include the placement of vertical strips of lace, “the use of three different flower designs,” “the arrangement of one row of one flower design, followed by six rows of another flower design, allinterspersed with a third, smaller flower design,” and“the inconsistency in the shape of the bottom trim ofthe kimono.”

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Wearing Apparel (Wonderer Kimono) (CORB 11/28/17)• It is well-established that “items of clothing are, as a

general rule, uncopyrightable ‘useful articles.’” Morrisv. Buffalo Chips Bootery, Inc., 160 F.Supp.2d 701, 720 (S.D.N.Y. 2001).

• However, an artistic feature applied on or incorporatedinto a useful article may be elegible for copyrightprotection if it: “(1) can be perceived as a two- orthree-dimensional work of art separate from the usefularticle and (2) would qualify as a protectable pictorial,graphic, or sculptural work – either on its own or fixedin some other tangible medium of expression – if itwere imagined separately from the useful article intowhich it is incorporated.” Star Athletica, 137 S. Ct. at1007, 1016.

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Wearing Apparel (Wonderer Kimono) (CORB 11/28/17)• The overall presence and placement of several

distinct, albeit preexisting design elements (namely, lace flower patterns placed in combnation with circle and honeycomb lace patterns and vertical lace trim), taken as a whole, contains sufficient creative expression to be copyrightable under the threshold articulated in Feist Publication. Inc. v Rural Telephone Services Co., 499 U.S. 340 363 (1991).

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Wearing Apparel (Wonderer Kimono) (CORB 11/28/17)• At the same time, the Board notes that the individual lace

elements, namely, the band of beige lace trim, and three types offlower types and flower designs, are preexisting elements notindividually protectable under copyright law. See Application(noting that lace elements were preexisting).

• Moreover, they appear to be standard elements. See Express, LLC v. Fetish Group, Inc., 424 F.Supp.2d 1211, 1223-25).

• Accordingly, the Board concludes that the Work possesses a smallbut sufficient amount of creativity beyond the combination ofstandard elements to establish thin copyright protection, but notenough creativity to qualify for broad protection. See, e.g., id. At1223-27 (similar, evaluating three-flower lace embroiderypattern); Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003)(describing level of creativity required when the expressive aspectof work consists of the combination of standard elements).“Thin” copyright protection affords the holder only protectionagainst virtually identical copying. Satava, 323 F.3d at 811.

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Floor Liner (CORB 4/19/18)

The Review Board ruled on Quadratec, Inc.’s (“Quadratec”) second request for reconsideration of the refusal to register a sculpture claim in the work titled “Floor Liner” (“Work”).

The Work, a black floor liner, is a quadrilateral with raised edges and slight indentations, shaped to fit on the floor of a vehicle. The top surface of the Work is embossed with a pattern of various raised, non-standard geometric shapes.The Work is depicted below.

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Floor mats?

• Quadratic was found to be entitled to copyright registration for the “decorative raised pattern comprising various shapes and orientations” that “appears on the floor liner.”

• Note that the decision was predicted on the applicant’s submission that the pattern did not serve a utilitarian function, and evidencecontradicting that submission could be fatal to anyenforcement effort.

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How much authorship is needed?

• Copyright law does not protect useful articles as such. 17 U.S.C. Sec. 101. Under the Copyright Act, 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” and “[a]n article that is normally a part of a useful article is [also]considered a ‘useful article.’” Id. Importantly, however, an artisticfeature applied on or incorporated into a useful article may beeligible for copyright protection if it: “(1) can be perceived as atwo- or three-dimensional work of art separate from the usefularticle and (2) would qualify as a protectable pictorial, graphic, or sculptural work – either on its own or fixed in some other tangible medium of expression – if it were imagined separately from the useful article into which it is incorporated.” Star Athletica, 137 S. Ct. at 1007, 1016 (holding that two dimensional graphic designs on the surface of cheerleading uniforms satisfied this test and were, therefor, separable features).

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How many various shapes suffice?

• The Board finds that the Work contains separable artistic features from the overall useful article. Specifically, the Work’s raised, decorative pattern of various shapes can be identified as a two-dimensional work of art separate from the floor liner. Such features would qualify as a protectable pictorial, graphic, or sculptural work if imagined separately from the useful article; moreover, they do not replicate the floor liner itself or “an articlethat is normally a part of” a floor liner when so imaginatively removed. Star Athletica, 137 S.Ct. at 1012-14.

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The CORB can revoke registrations

• Note that copyright registration, once granted, may be revoked by the Copyright Office should it become aware of facts not initially available.

• See, e.g., Sorry Boys…CORB Id: 1-A63T21, where the revocation of copyright registration was done after the Office learned that the art which was a part of the design was clip art, not original art, leaving only a short slogan presented in a stylized manner adjacent the clip art.

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Complexity of design may determine what protection to seek

• Packaging designs may more readily be protected as trade dress but note there the issue of whether the package elements are background design, mere ornamentation, or actually function as signifiers of source.

• Compare the kind bar package and that of a Snickers Bar.

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Risks in Seeking Registration and Being DeniedThere is no ability to bring a claim in court absent either a registration or a refusal of registration.

The refusal of registration will weigh heavily in any litigation against the copyright claimant.

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Questions?

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Documents

Trade Dress, Design Patent, and Copyright: Strategies to ...media.straffordpub.com/products/trade-dress-design... · 11/20/2019 · utility and design patent damages • 2013 trial--$290m