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FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS James Juo (jjuo@fulpat.com) Scott Hansen (shansen@fulpat.com)

DESIGN PATENTS, TRADE DRESS & COPYRIGHTS

Non-functionality requirement Design Patent Not dictated by use or purpose of the article. Trade Dress Not essential to use or purpose of the article, or affect cost or quality of the article. Copyright Separability of the aesthetic from utilitarian elements of the design.

Distinctiveness requirement Design Patent Novel and nonobvious over prior art Trade Dress Secondary meaning Copyright Original

Acquired differently Design Patents Filing and examination by USPTO. Trade Dress Actual use in commerce. Copyright Fixation in a tangible medium.

Different infringement tests Design Patents Ordinary observer would find the designs substantially the same. Trade Dress Likelihood of confusion by consumers as to source. Copyright Copying (e.g., access and substantial similarity).

TYPES OF PATENTS Design Patent Protects how an invention looks (ornamental features) Utility Patent Protects how an invention works Plant patent Protects asexually reproducing plants

UTILITY PATENT What most people think of as a patent. Protects Structure, Function, and/or Use of an Invention. Term of 20 years from earliest filing date Scope of Protection Is Defined By Claims written at the end of the patent.

Claim 1. A system for engaging shoes with a hitch means to permit a person standing on a stage surface to lean forwardly beyond his or her center of gravity, comprising: at least one shoe having a heel with a first engagement means, said first engagement means comprising a recess formed in a heel of said shoe covered with a heel slot plane located at a bottom region of said heel, said heel slot plate having a slot formed therein with a relatively wide opening at a leading edge of said heel and a narrower terminal end rearward of said leading edge, said recess being larger in size above said terminal end of said slot than is said terminal end of said slot; and a second engagement means, detachably engageable with said first engagement means, comprising a hitch member having an enlarged head portion connected by a narrower shank portion to a means for raising and lowering said head of said hitch member above and substantially level with or below said stage surface, said head portion being larger in size than said terminal end of said slot and said shank portion being narrower than said terminal end of said slot, wherein said hitch member can be moved through apertures in said stage surface between a projecting position raised above said stage surface and a retracted position at or below the stage surface, and when said head portion of said hitch member is raised above said stage surface, said first engagement means can be detachably engaged with said projecting hitch member, thereby allowing a person wearing the shoes to lean forwardly with his or her normal center of gravity beyond a front region of said shoes, and maintain said forward lean. “ Method And Means For Creating Anti-Gravity Illusion”

DESIGN PATENT Protects ornamental appearance. Examples include shoes, jewelry, cars, toys, costumes, and computer icons. Term of 14 years from issuance. Scope of Protection is defined by the drawings.

Other Design Patents 2 years 3 years

http://www.patentlyo.com/patent/2010/01/design-patent-application-pendency.html

Use of Phantom or Dashed Lines

Patent Validity A design patent is presumed valid because it �� is issued after examination by the Patent Office Invalidity requires that the accused infringer present “clear and convincing” evidence to prove that a patent is invalid.

Filing Date is Critical A public disclosure of the design more than one year before the filing date is a statutory bar. A patent should not remove that which is already in the public domain. Kimberly-Clark Corp. v. Johnson & Johnson , 745 �� F.2d 1437 (Fed. Cir. 1984) “ That which infringes if later, invalidates if earlier.” Peters v. Active Mfg. Co. ,129 U.S. 530 (1883)

Invalidity may be based on prior art. Prior Art includes printed publications and offers for sale before the filing date. Disclosure of the design in a printed publication; Offer for sale of a product embodying the design; or Public use of a product embodying the design. Design must be novel and non-obvious over prior art

Design Patent Infringement Ordinary Observer Test Gorham Co. v. White, 81 U.S. 511 (1871) “ We hold therefore, that 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, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

What Is “observed”? “ [T]he focus is on the overall ornamental appearance of the claimed design, not selected ornamental features.” Elmer v. ICC Fabricating, Inc. , 67 F.3d 1571 (Fed. �� Cir. 1995) (emphasis in original). All drawing figures in the design patent are used to determine the claimed design.

Who is the “Ordinary Observer”? One who is “a purchaser of things of similar design” or “one interested in the subject.” Gorham v. White , 81 U.S. 511 (1871) The ordinary observer is not an expert. Gorham , 81 U.S. at 527 (Patent protection would be “destroyed” if infringement could be avoided based on differences “observable by experts.”) Not necessarily the end consumer.

Egyptian Goddess, Inc. v. Swisa, Inc ., 543 �� F.3d 665 (Fed. Cir. 2008) (en banc) The ordinary observer test is the sole test for design patent infringement. The Court abolished the separate “point of novelty” test That is, whether the accused device had appropriated the novelty in the patented design that distinguished it from the prior art.

What does the Ordinary Observer know of the Prior Art? An ordinary observer with reasonable familiarity with the prior art An ordinary observer “will attach importance to differences between the claimed design and the prior art depending on the overall effect of those differences on the design.” Egyptian Goddess, Inc. v. Swisa, Inc ., 543 F.3d 665 (Fed. Cir. 2008) (en banc)

3-Buffer Prior Art 4-Buffer Prior Art Accused 4-Buffer Product Patented 3-Buffer Design No Infringement

Crocs, Inc. v. ITC , 598 F.3d 1294 (Fed. �� Cir. 2010) (post- Egyptian Goddess ) Side-by-side comparison between design patent and accused product. Infringement

Patent-In-Suit Accused Product Richardson v. Stanley Works , 597 F.3d 1288 (Fed. �� Cir. 2010) (post- Egyptian Goddess ) No Infringement

Minor differences in detail may not be enough to avoid infringement. But differences that appear minor in the abstract may become significant for an ordinary observer in view of the prior art. Scope of a design patent may depend on how “crowded” the prior art is.

DESIGN PATENTS AND TRADE DRESS

SIMULTANEOUS TRADEMARK AND DESIGN PATENT PROTECTION A design patent does not preclude federal trademark registration. In re Mogen David Wine Corp. , 328 F.2d 925 (CCPA 1964), later reaffirmed by the same court at 372 F.2d 539 (CCPA 1967)

iPod Design Patent iPod TM Registration

Paris Hilton Shoe Litigation Design-Patent-in-suit Accused Shoe Designs

Complaint: Causes of Action Design Patent Infringement US Patent D579,642 for “Shoe Sock” Lanham Act 43(a) “ The heart-shaped shoe sock … is source indicating.” Promoted at trade shows Plaintiff’s heart-shaped shoe sock

Trade Dress: prevents consumer confusion w.r.t. indicators of source Consumer behavior in the marketplace Design Patents Indication of source irrelevant Is design NEW and NOT OBVIOUS?

HOW LONG PROTECTION LASTS Trade dress: potentially indefinite term w/use in commerce Design patents expire in 14 years Buys enough time to develop secondary meaning?

Lotus v. Hennessey Performance Engineering

INTERNATIONAL TRADE COMMISSION: “EXCLUSION ORDER”

Copyright: protects “useful article” if aesthetic features identified separately from & can exist independently of utilitarian aspects. Design Patent: protects ornamental appearance (not functional features) Functional when appearance dictated by the use or purpose Alternative designs: evidence design not functional

Design Patent v. Copyright: Blank Label Sheets

Design Patent v. Copyright: Medical Devices

DESIGN PATENTS: DON’T NEED TO PROVE COPYING Do not need to prove copying for design patent infringement “ Independent Creation" is not a defense in design patent cases Copying may be relevant to willful infringement

HOW LONG PROTECTION LASTS Copyright term: life of author plus 70 years work-for-hire: shorter of 95 years from the first publication, or 120 years Design Patents:14 years from date of patent issuance Typically more expensive and takes longer to obtain a design patent than a copyright registration

COPYRIGHT & TRADEMARK: COMIC BOOK

KA-POW !!!! BATMAN DESIGN PATENT Prior Art

Design Patents, Trade Dress, Copyright Different distinctiveness requirements Different non-functionality requirements Different test(s) for infringement Use together to maximize IP protection

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FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS

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FROM APPLE TO GOOGLE TO BATMAN: DESIGN PATENTS FOR AESTHETIC DESIGNS

Editor's Notes