On demand 1h 15m 57s Intermediate

Design Law: A Layered Approach to IP Protection for Commercial Products

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Design Law: A Layered Approach to IP Protection for Commercial Products

Design law utilizes the copyright, trade dress, and design patent regimes to help manufacturers protect the design of useful products in multiple market segments. It requires navigating the often ambiguous boundaries between form and function under each legal doctrine. After an introduction to the commercial value of design, the course reviews the law that provides the foundation for a comprehensive design law strategy. The law is then applied to two commercial products – heavy industry and consumer - to help participants synthesize the disparate doctrines. The course presumes familiarity with copyright, trademark, and patent law.

Transcript

Hi, my name is Flann Lippincott. I am a design law attorney, and I'm a design law attorney because I ran my own consumer products company for 11 years, targeted the luxury and mass market segments. And during that time, I held my own IP, copyrights, trademarks, and a design patent, which I had to defend the entire 14 years of that patent, and that experience taught me deeply. The deep effect taught me the value of design patents. This product also was covered by some trade dress and copyright as well, and that's where my active use of the different IP regimes led me to end up having that be the focus of my practice once I became an attorney. So this program might be a little bit different than your normal CLEs in that it does, at least the second half, takes a very client-centric view of design law and gives you an idea of the questions to ask your client and how to get your client involved in the process of protecting their products of manufacture through design law. Now, some of these slides, some of the quotes are a little bit long, and in those slides, I will tell you just to read the slide yourself, 'cause I think it's pretty annoying for me to be reading aloud while you're reading it as well. So we'll give that a try throughout at least the first half of this program. So let us begin. So the first, I'm going to do a quick introduction to the value of design, and then do an overview of design patents, and then trade dress and copyright, as they pertain to the overall strategy of design law. And then, you will apply those legal principles to examples from industry. The first one will be business to business, and the second will be business to consumer, and then a brief summary. Design is a verb, is an activity, that examines and improves relationships between people, systems, and things. It's actually a very complex area to manage, especially for large corporations. Design as a noun is much more specific. It is the surface of the human-made environment, the look of the surface, the feel of the surface of the human-made environment. It's pretty vast. Designers craft that surface using a combination of art, engineering, and social science to create value for commercial enterprises. Increasingly, also, neuroscience as being used as well to provide data to help companies target their sweet spots for their consumers and customers. Value. What we mean by value? In 2015, the 16 most design-centric, public companies that use best practices in design management showed a 211% return over the Standard and Poor's 500. This design value index was created by the Design Management Institute, which is a great organization if you need data for your work to support, whether it's a brief, or consulting with your clients. Great data on design management. I did not find an update to this chart, so this was published in 2016, but it shows, for these very design-centric companies, the degree to which design can actually enhance the bottom line. These numbers come from the patent office with the numbers of design patents granted to the top companies that use design patents heavily. And this is just a sheet of data from the U.S. PTO. You can find a lot of interesting data there in their database as to companies that hold design patents, how many, et cetera. Apple, which everybody knows is a very design-centric company, the market cap, in 2015, at the time of that survey, was $750, and now, just seven years later, it's $2.31 trillion. So design is probably fueling some of that growth, indeed. The journal Product Innovation Management is another great non-legal journal that also can provide some really interesting and helpful data for some of your work for your design clients and manufacturing clients. Research finds that the social value and emotional value that design provides to consumers have a greater effect on brand affection than purely transactional value, such as the functional value or economic value of a product. And Gianfranco Zaccai, a very famous industrial designer who worked for Herman Miller, wrote the following. I will let you read this on your own. And I think this quote gives a sense of the scope of what's involved for a manufacturer to be able to come up with the aesthetic designs for manufactured products that really appeal to consumers such that they can beat up the competition. So how does one protect the immense skill, talent, creativity, time, money, management structure, and risk that produces commercially successful aesthetic designs? It's called design law, a combination of design patent, trademark is somewhat, but really trade dress and aspects of copyright to protect the surfaces or the appearance of these valuable, tangible, and digital articles of manufacture. So GUIs and other digital products can be included within design law as well. Design law, I will say, it's quite a specialty because one has to keep up with the law in all three areas: design patents, trademark, trade dress, and copyright. So it's a pretty vast amount of law to keep track of. But typically, the Supreme Court provides the, and the court of federal appeals provides the primary benchmarks for this area of law. But it may take a couple different departments in your firm to get together and coordinate if you have some clients who need all aspects of IP to protect their products. This graph you're going to see quite a few times in this presentation, so do not try to memorize it, et cetera. It just does provide a general layout of the most important aspects of creating a design law strategy. So again, the fields of law, design patents, trade dress, and copyright. Design patents protect articles of manufacture. Trade dress protects other product configuration or design and packaging, copyright, works of authorship. And then, we'll go into some of the other aspects as we go through this presentation. One thing to keep in mind and note throughout this, I'm gonna say this is what you need your client to understand, is how design law is, optimally, a long-term strategy, starting with design patents, provided the product is non-obvious and novel and qualifies for a design patent. The term currently for design patents and protection is 15 years. Now, once that design patent ends, that's when trade dress can take over and provide potentially perpetual protection for that product. And copyright, as well, also, has a very long term, can protect some articles outright or sometimes can protect different aspects of the article, such as photographs of the article or technical drawings, et cetera, and we'll look at that as well. But this, I don't know what the ratio is now, but maybe 1% of products at a large manufacturer that gets through product development, actually, is a big commercial success. So kind of having a sense of which, which products may have a really long commercial life is important to identify early on, and this is why the client should be involved in this process from the very beginning, somewhere in the product development stage. So the basic restrictions and thresholds that I'm going to focus on in this presentation, 'cause to me, it's really key and it's really important for the client to understand this major threshold that the product must overcome when they are deciding how to allocate their IP dollars. And the main issue is functionality. Is this article functional? And that's because each field of law has certain boundaries and the courts like to police those boundaries and don't want too much overlap between, say, the design patent regime and the trade dress regime and the copyright regime. So that's why one has to keep abreast of all areas of law so that one could always be aware of where these boundaries are and where they're moving and which jurisdictions, et cetera. So design patents, they must be ornamental. They are articles of manufacture. They are inherently useful articles, but overall the design must be ornamental to qualify for a design patent. Trade dress, trade dress. Product configuration or packaging must not be functional. And for copyright, the word used is utilitarian. The product must not be utilitarian. And we'll take a look at those more in depth. So for design patents, design must be ornamental. This comes out of the Patent Act. Utility patents, whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, et cetera, make it a patent. And for design patents, whoever invents any new, original, and ornamental design for an article of manufacture may obtain a design patent. So useful versus ornamental. The seminal case for design patents that is still quoted in litigation is Gorham v. White, where the Supreme Court determined that a patentable design gives a peculiar or distinctive appearance to the manufacturer or article to which it may be applied or to which it gives form. So either an applied design or the form of the article itself. Here's an example of a KEEN shoe. Do not read this in detail. I just wanna show you. If you're not familiar with utility patents, the claims are written out in great detail. Every feature that is claimed is called out in the drawings. And I just wanna mention here, number 110 is a toe cover and number 146 is a debris shield in the toe of this sporting shoe, kayaking shoe, or sailing shoe. Now, it's common practice for design patents to file multiple design patents on the same day for the same article. Some will claim portions of the design, and then some of the patent applications will claim the entire design. In design patents, the claim is the drawing and solid lines, which you see here, form the claim. But anything that's dotted, which is the rest of that shoe in that figure, is not claimed. Only the toe is claimed. On the right, you can see that, on this patent, the entire upper of the shoe is claimed. The sole is not claimed, nor are some of the laces. They're not claimed in this particular design patent. And then, compare the design patent to the utility patent drawing. And here, you can see that the toe piece that is claimed is also claimed in the utility patent. And we'll see why that's important in a bit. The courts really struggle with this issue of the functionality or utility of an article of manufacture that also has a design element that's claimed. So we go to the courts to get some tests to help evaluate functionality, and the courts have really, really struggled with this. And in this case, this is a child's flotation device, and these are drawings from the patent of the plaintiff in this case with a piece that goes around the torso and then the two arm bands and the strap across the front. In design patent litigation, the accused, infringing design is compared to the design patent drawings, not the patented article typically but the drawings themselves. Now, here, you can see some differences where the front of the jacket has got more to it than the drawing and there's also a shoulder piece too, so that the child can wear this as a top. The court noted that the district court claimed construction and they approached it somewhat as a utility patent, eliminated almost the entire claimed design by carving out what they thought was purely functional. They excluded the arm bands and the tapering on the sides as well. The court said, ultimately, a design patent is invalid if it's overall appearance is dictated by its function. As long as the design is not primarily functional, the design claim is not invalid, even if certain elements have functional purposes. So the phrase to take away from this when looking at design patents, the quick phrase you can tell your clients is, is the overall appearance dictated by function? And if it's not, then it should be eligible for a design patent. Here are the factors from this case, whether the protected design represents the best design, whether alternative designs would adversely affect the utility of the specified article. And this is a key test, a key factor, if there are other alternative designs, is where you can inform your client when you're developing this, make sure you save all the other iterations of this product. And of course, there's probably a library of research in that area of art of that product during product development that would show how unique or original, novel, the design is compared to other designs that are already out in the market or that could be possible. Whether there are any utility patents. This is also key. Whether there is advertising that touts particular features of the design as having specific utility, and this is where sometimes the marketing department must be involved. This factor has undermined some pretty big damages awards when the advertising says, "Well, no, this is a great design and it also serves this function." And finally, whether there are any elements in the design or an overall appearance clearly not dictated by function. So between these shoes, and I'm not showing an infringing article, I'm showing these shoes, 'cause the client would be trying to protect this product in every way possible with design patents and with utility patents. You have to be careful to ensure that the utility patent is not going to knock out the design patent eventually, and you'll see more of that later on. So best design, alternative designs, utility patents, advertising, and is the design dictated by function? Those are the key factors to take away when working on new products with your clients. The term is 15 years for a design patent. So when that 15 years is up, under certain conditions, one might be able to get trade dress protection on the product itself. Apart from a design trademark, they could be perpetual as long as the, it's all managed. The trademarks are living, breathing creatures. Once they're in the commercial marketplace, it does take good management, and I'll touch on all of those elements as well. Trade dress is either the product configuration or product shape, design, or packaging. It must not be functional, and it must have secondary meaning. There are two main factors that a court will look at, or even the Trademark Office first, when evaluating a claim for trade dress, which is, is the design distinctive and is it functional? I do wanna talk about distinctiveness because it is important. So under the Lanham Act, trademarks, symbols, device, or any combination of those to identify and distinguish goods from those goods of others and to indicate the source of the goods, even if that source is unknown. So marks must be distinctive. It must be able to be distinctive compared to what the competitors have as their trademarks. The Supreme Court, in 2000, in Wal-Mart case, expanded, definitively, the definition of a trademark. It can include trade dress, packaging, and product design. I'll let you read the quote right now. Courts have assumed, often without discussion, that trade dress constitutes a symbol or device and we conclude likewise. Now, under the Trademark Act in section 2f is where applications specifically for trade dress are filed, except as expressly excluded. Nothing in this chapter shall prevent the registration of a mark used by the applicant, which has become distinctive of the applicant's goods and commerce. So this is interpreted now by the term inherently distinctive. So some marks that are non-distinctive on their own can become distinctive over time, at least five years, and with proof of substantially exclusive and continuous use as a mark in commerce. I must say that these two standards are very high. It can take millions and millions of dollars. It can take decades of time to overcome this bar, the 2f bar. Apple might be able to claim trade dress relatively quickly, but because its products are, or have been, so distinctive, but some companies have had products on the market for decades but they have been turned down under section 2f for not being inherently distinctive. The Supreme Court went further and wrote that a mark has acquired distinctiveness, even if it is not inherently distinctive, if it has developed secondary meaning. It occurs when, in the minds of the public, the primary significance of a mark is to identify the source of the product rather than the product itself. So non-inherently distinctive marks can acquire distinctiveness through secondary meaning. What the client needs to really understand that the product has to identify the source, where the product came from. It doesn't have to be the name of the company that produced it. They really have to associate that product with a certain manufacturer and a certain quality. What I find that I explain to clients, this is a very different perspective than patents and trademarks, which are looked at through the perspective of the inventor or the author. The purpose of those clauses in the constitution for patents and trademarks is to protect their investment in their innovations and original works. The trademark will generally exist to benefit the public. So trademarks need to always be looked at from the perspective of the customer or the consumer. It's really important to make sure that your client understands that. So if the mark is not distinctive, not even inherently distinctive, it can acquire distinctiveness if it has secondary meaning, which means that it's gonna stand in for a brand. And in this case, the court was very specific, writing that courts must draw difficult lines between product-design and product-packaging trade dress. To the extent that there are close cases, we believe that courts should err on the side of caution and classify ambiguous trade dress as product design, thereby requiring secondary meaning. So if you can't tell if something is the packaging or the product, it's going to have to meet the higher standard than kind of product packaging has to be, which is proving secondary meaning. And again, that can get extremely expensive with surveys and proof of extensive sales, reach, publications. This case, in particular, was about unregistered trade dress, which is quite common, but at least it did include unregistered trade dress as well as registered trade dress in the definition of distinctiveness of product design. So it requires secondary meaning. Product design trade dress is not distinctive. It's not inherently distinctive. It can acquire distinctiveness over time, giving it secondary meaning if it identifies the source of the product. Functionality. Section e5 of the Trademark Act provides that no trademark will be refused registration unless, as a whole, it is functional. What does that mean? Qualitex's case was about a dry cleaning pad and particularly a 1970s version of gold green. This was a case about color, but regardless, it provided some guidelines. A product feature is functional and cannot serve as a trademark if it is essential to the use or purpose of the article, or if it affects the cost or quality of the article. So if it's essential, affects cost or quality, it is functional, and for competition reasons, cannot be used to protect consumers, it cannot be used or filed as trade dress. And as with design patents, a utility patent is strong evidence that any features that are claimed in trade dress are functional, even if the patent is expired. The Federal Circuit, in 2012, also really clarified how one determines functionality in trade dress. The existence of a utility patent that discloses the utilitarian advantages of the design sought to be registered, advertising by the applicant, facts pertaining to the availability of alternative designs or facts pertaining to whether the design results are comparatively simple or inexpensive method of manufacture. There's also a term that the courts created, unhelpfully, called aesthetic functionality. I believe it's still used in some circuits. It has to do, often, with color. And the court wrote that, as with utilitarian features, in general, when the color applied to goods serves a primarily utilitarian purpose, it's not subject to protection as a trademark. So black on outboard motors is functional because it's compatible with a wide variety of boat colors and makes the motor appear smaller. I really wonder about that one because when I've seen motor boats, powerboats, sometimes the more motors, the merrier, and they wanna make them look as big as possible. So I'd love to see a case like that again and see what the courts say with better data. The green color of John Deere farm machinery. Customers want their farm machinery to match. So they may copy the green color of John Deere farm machinery. So that's where green could be aesthetically functional. And farmers are quite brand loyal. I've lived on farms most of my life, and they're either Deere, or they're red, or green typically, although alternatives may be possible. Black and gray for technical equipment. So sometimes the Trademark Office will consider color just ornamentation and they'll say that the color trade dress is really just for decoration and not for the identity of the source. And an example of a color that would be a source identifier, we think of pink housing insulation, the name of the manufacturer, the source of the manufacturer, probably springs to mind, along with a pink cartoon character, the panther, which is totally non-functional, totally arbitrary, and therefore, a very strong color association and color mark for a very utilitarian product. So trade dress must not be functional, must have secondary meaning. And if your client can achieve those two thresholds, the term can be perpetual. Let's take a quick look at copyright. Copyright or works of authorship. You're probably familiar with what that encompasses. The works must be original. So copyright protection subsists in original works of authorship that are fixed, et cetera. We're gonna focus on here, what's applicable are the pictorial, graphic, and sculptural works that are eligible for copyright protection. And it's important to note that in no case does copyright protection for an original work of authorship extend to any idea, procedure, process, system, method of operation, et cetera, which is a clear statutory bright line between copyright protection and utility patent protection. Pictorial, graphic, and sculptural works include 2 and 3D works of fine, graphic, and applied art, photographs, prints, art repros, maps, globes, charts, diagrams, models, technical drawings, and architectural plans. There are many other products that are covered now by copyright, which I will introduce later. Also, works of artistic craftsmanship insofar as their form but not their mechanical or utilitarian aspects are concerned. So that is particularly called out. This is how, through this statutory provision, aids in the protection of certain pictorial, graphic, and sculpture works. Now, the design of a useful article shall be considered a pictorial, graphic, and sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, and sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article. And it took the Supreme Court to basically just restate this and say it's the law. And we'll get there in a minute. The scope of exclusive rights is outlined in the Copyright Act. And this is important to note, Section 113. The exclusive right to reproduce a copyrighted, photographic, or sculpture work in copies includes the right to reproduce the work in or on any kind of article, including a useful article. So a photograph of a sunset, a copyrighted photograph, pictorial work, can be reproduced on a t-shirt, on a plate, on a towel. Even so, it's clearly separable from the useful article, so that's fine. However, and I did not highlight this in orange, I should have, the title does not afford to the owner of copyright in a work that portrays a useful article as such, any greater or lesser rights with respect to that useful article. So portrayed. Which basically means that, for example, a copyrightable photograph of a useful article, let's say a car, does not provide the owner of the photograph any copyrights in the car. And this is something that clients can have a really hard time understanding and giving them examples is really helpful. So because sometimes there's some products that can't afford a design patent or the product maybe isn't eligible for a design patent, maybe there's prior art, and they'd like to... Oh, we have photos of the product and they're original photos so they're subject to copyright protection. The product isn't just on a white background, but there's some design choices in the portrayal of the object in the photograph. So the photograph is copyrightable. But if the object in that photograph is not copyrightable in and of itself, it's still not protected by the copyright in the photograph. It's a very important concept to convey to clients. So the definition of useful article is in the Copyright Act, an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information. Is it a picture, or is it words basically, or a sculpture, or is it words, or that kind information? So let's apply these principles in an important case here. The Supreme Court, Mazer v. Stein, tackled this head-on and this is a table lamp. So lamps, you can see it on the left there, are considered useful articles. And the base, in the picture of the base itself, is a sculpture of a ballerina. The question presented was, can statutes be protected by copyright when the copyright applicant intended primarily to use the statutes in the form of lamp bases to be made and sold in quantity and carried the intentions into effect. So this is intended to be a commercial article. This was not intended to be a sculpture to be put into a museum collection or just to be sold as a decoration on a mantle piece, and the court answered yes. We do hold that the patentability of the statutes, fitted as lamps or unfitted, does not bar copyright as works of art. Neither the Copyright Statute nor any other says that because a thing is patentable, it may not be copyrighted. We should not so hold. So here the Supreme Court said, clearly, that just because an article is subject to a design patent does not mean that it cannot be copyright. Filled in that explicit blank in the copyright statute. An interesting case to understand in design law, I found this case fascinating when I was in law school, and it really brought home some of the really interesting issues that can arise in design law. So in Brandir, the Second Circuit wrote about a merger and conceptual separability. So in this case, the artist or sculptor created some wire models, small wire models of this general shape and made a little sculpture of a bicycle as a little kind of mock-up design study of a bike rack. And it ended up as this beautiful, elegant, most elegant industrial design solution ever created where form follows function. And that was fatal to the copyrightability of this sculpture. The court said that we find that the rack is not copyrightable. It seems clear that the form of the rack is influenced in significant measure by utilitarian concerns unless any aesthetic elements cannot be said to be conceptually separable from the utilitarian elements. Had Brandir merely adopted one of the existing sculptures as a bicycle rack, neither the application to a utilitarian end nor commercialization of that use would've caused the object to forfeit its copyrighted status. So for example, if this serpentine sculpture were swung 90 degrees on its end and say installed on the front lawn in front of an art museum, it'd be a sculpture, a pure sculpture. I mean, maybe birds could perch on it, but otherwise it's not a bird. It wasn't designed for birds. It was a sculpture, so that would be copyrightable. Someone goes, "Oh, that's a cool sculpture. Let me put it down 90 degrees on the ground. Look, it can hold bicycles." Not copyrightable. This is a really interesting area to play with with your clients and can open up some opportunities as well for protection for certain products and take these kinds of informed aesthetic and utilitarian discussions with your clients. The most recent and important case on the separability of the original, non-functional aspects of a utilitarian article for copyright protection with Star Athletica. This case was about cheerleading uniforms and the court granted cert to resolve widespread disagreement over the proper test for implementing Section 101's separate identification and independent existence requirements. There's a big circuit split on this issue. Again, because the courts really struggle. Judges, especially those who don't have backgrounds in design, really struggle with this topic. We hold that a feature incorporated into the design of useful article is eligible for copyright protection only if the feature can be perceived as a two or three-dimensional work of art separate from the useful article and would qualify as a protectable PGS work if it were imagined separately from the useful article into which it's incorporated. Just basically the original definition, but just clarified by the Supreme Court, and it eliminated some very questionable tests developed by some of the circuit courts. So is the copyrightable design separable from utilitarian article? That's the question here. The Copyright Office Royalty Board that looks at copyright applications. There's, of course, a surge in applications for useful articles after Star Athletica. These are just a few that arose in the few years after that case. So here, on the left, is a pool float in the design of a pizza slice. The design was held separable from the float itself but not original. And if you Google pizza pool floats, you'll see that there are a million pool floats out there, many, each with their own, and arguably, more original pizza topping designs on them. In re Pendant Lamps, kind of hard to tell what's going on here, but this is considered separable artistic expression. I will say that, until Star Athletica, lighting fixture is really hard to get copyright protection for. In re Floor Liner, separable artistic features, based on the applicant's representation of a purely aesthetic purpose. Again, marketing needs to be involved in the entire process of the product development process. We note that, here, in this floor liner, the pattern really looks like a modified tire tread design, which would be appropriate. The tire tread is the opposite function of a floor tray. Tire tread is to expel water. The design here is to, it helps trap water so it is functional, but it also is an aesthetic design and there could be other designs as well. So that floor liner is copyrightable, design patentable. And if that becomes, based on the available, like for a Ford product, it could even become iconic, or in other words, trade dress. On the right is a placemat where the design is intricate metal lacework. The design actually is all over throughout, actually created the placemat itself. The design there is not separable from the placemat. The design is the placemat. Now, if that placemat were hung on the wall as wall art, that would be copyrightable. Lots to work on there with your claim. In re Box Design 1, a circle on the solidly-colored rectangle is separable but not original. And here's another lighting case. The outer, colored glass elements were separate from the lighting element itself and were sculptural and so could be copyrightable. And then, finally, district of New Jersey and Kangaroo, a very large company for novelty and toys. This banana costume and costumes are... And along came Rasta Imposta, which was arguably a better banana. But still, the court determine that the cutout holes perform a solely utilitarian function, but the other features can be identified separately from and are capable of existing independently of those holes. However, if that costume looked exactly like a banana, then arguably the application would've been rejected for not being original and just looking like something that already exists in nature. This is a list of other categories of products that are considered now pictorial, graphic, and sculptural works. So this list is gradually growing over time, and arguably, so there's more overlap with design patents as well, protectable patents or design patents as well. Artificial flowers and plants, dolls, mazes, toys, games, puzzles, holograms, laser artwork. That's a really interesting area. Jewelry, masks, hats for costumes but not costumes themselves, but that's changing, mosaics, needlework and craft kits, lace and weaving designs. So copyright, the part that you wanna protect must not be utilitarian, but it can reside on the utilitarian. So that's a very quick overview of the law. And now, we are going to apply those principles to two examples from industry. Let's see how that goes. The B2 Bomber, oops, is protected by design patent. You'd be surprised to know the patent date is February 5th, 1991. Here are the other pages from the design patent. Clearly, the B2 Bomber Spirit is an article of manufacture. It was certainly novel at the time and nor was the design obvious. The question is, is the design ornamental? the test, the best design, and the alternative designs, and the utility patents, advertising. Is the overall appearance dictated by function? Best design, alternative designs, utility patents, advertising, appearance not dictated by function. So looking at the details of the patent, it was filed in class D12 Transportation and the subclasses aircraft, spacecraft, or fuselage, horizontal stabilizer. Plural distinct engine air intakes on fuselage flanks. So these are categories within the design patent classification system. Clearly, planes are considered eligible for design patents as articles of manufacture. But is it ornamental? Gorham v. White, the Supreme Court case wrote, does the design give a peculiar or distinctive appearance to the form? Yes. Under Sport Dimension, is the design dictated by its function? And to some extent, all planes are, yet there is variety. This is why it's important to educate your clients, because design patents have no scale. Now, design patents should be filed in the proper class. So the product on the left will be filed under Class D3, subclass 207 for key chains. But sometimes, you could use the same drawings for the actual aircraft as you use for other line extensions of the primary product. And this is where there could be some efficiencies when it comes to preparing the patents and the drawings, et cetera. It's something to keep in mind of the long-term plans that your client has for the primary product, the subject of the initial design patent. So the ornamental design is patentable because we saw the patent, the article of manufacture, it's ornamental enough, and it's non-obvious and novel. Trade dress. Does the B2 Stealth Bomber, can it be protected by trade dress? Well, the first question is, is it product configuration, packaging? What do you think? The shape is packaging the interior of the aircraft. But what's important here? What does the client want to protect? Do they wanna protect the shape of the product or just what the product does? So these are some initial questions you can find. You also have to realize that when one files a trade dress application, you can only file, generally, one image of the product. So it's fairly restricted and it's better for symmetrical products. It can be supplemented, but still. So in this case, using this plan as an example is, do you wanna get protection for this or this view, which is of the plane, which is quite different from a consumer perspective. Consumers typically aren't gonna see this as much as they're gonna see this when they go to airplane shows, et cetera. Next question. Is a trade dress functional for aircraft? This diagram shows the radar reflection angles from the shape of the wings. That shape, for trade dress purposes, looks pretty functional. So unlikely to get trade dress protection for the shape of the plane itself as a plane. And I couldn't find it. I looked. So maybe it's there but I didn't find it. So again, the determination of functionality. Is there a utility patent? Is there advertising? Are there alternative designs? And are there facts pertaining to whether the design results from a simple or inexpensive method of manufacture that could affect the competition? So looking at it again, is the shape functional for aircraft? Arguably, yes. So it would not be eligible for trade dress. We also have to ask, is the shape distinctive? Clearly, the shape is distinctive, but you have to have both if you wanna get trade dress, distinctiveness and lack of functionality. So this is where straight design marks can be used and design marks can also be used... You can also get trade dress protection sometimes, but for different articles. So here's a trademark registration and by Northrop Grumman. Interestingly, this was the first... So this is for the silhouette of the plane and used for housewares and glass, namely cups, mugs, bottles sold empty, plastic water bottles sold empty, et cetera. First use, May 1st, 1991. The design patent for the plane was dated February 5th, 1991. So it does appear that Northrop Grumman had fully intended to use the distinctive shape of the plane on other products where the shape would not be deemed functional. So in this case, as a mark on housewares. And here, as a mark for tie pins, not of precious metal, in class 14. Also, for cloth patches, including patches with insignia, embroidered emblems, et cetera, in class 26, under this registration. And the description of a mark is for a design mark. The language that you use can actually influence whether, in a way, it's considered trade dress of the product itself. So for purposes of a tie clip, this could be considered trade dress. The mark consists of a silhouette of the stealth aircraft. That's the description here of this mark. So again, it can't protect the plane itself, but it can protect an article that's not a functional plane. And here, again, this registration owned by Northrop Grumman is for metal goods, namely metal key chains, in class 6. So this is actually vinyl, but clearly the shape is identical. Again, the mark consists of a silhouette of a stealth aircraft. Note, this is a sculptural item. It's a three-dimensional article, the blue, plain shape. So we now have product configuration here. And so this design is protecting the configuration of this product itself. Metal goods, namely key chains. And this is a reminder to make sure it's clear what aspect of the trade dress has secondary meaning to the public. Because this image of Spirit is likely not nearly as recognizable as the prior images are, looking at the plane from below. So you really have to look at the product as a whole and analyze it, and what aspect of the product is going to instantly identify it in the minds of consumers or customers with the source of the product itself. So you could get trade dress protection for the aircraft silhouette for goods other than the aircraft. Let's take a look at copyright. Apply copyright to Spirit. Again, artwork applied to useful articles under Section 113 is okay. So the design itself is original enough, probably, to merit copyright protection. But is the plane itself a pictorial, graphic, or sculptural work? What do you think? Probably not. Because is the plane utilitarian? Yeah, and solely utilitarian. The plane itself is not a sculpture. Eventually, it may be a sculpture, a lawn ornament outside or inside the Air and Space Museum. Maybe, it's there now. But otherwise, it's still a utilitarian article. Is a photo of the plain utilitarian? No, it's a photo. It conveys information. It shows the appearance. So it is not utilitarian. The photo itself is copyrightable. But because the plane is not copyrightable, the photo does not protect the plane under the copyright regime, and that is really important for your clients to understand. Can a photo of the plane protect the plane itself? No. Can a photo of the plane protect derivative works? The derivative works are huge, and there's a Supreme Court case about to come out about derivative works. Very important. But arguably, that photo of the plane could be easily turned into that photo on the box. The photo of the box would, therefore, be considered a derivative work. So yes, the photo of the plane could protect other pictorial representations of the plane, even if they're derivative works. Can a photo of the plane protect derivative works such as this? Well, let's take a look at that key chain. That plane itself on the key chain is a little sculptural work. It's not functional as an airplane, so that you know it's utilitarian. At least some of the design can be separable. You don't even need to apply the separability analysis here because it is just a sculptural work. And so can the photo of the plane itself protect you from a competitor who might be making those key chains? Well, the plane's not copyrightable, but the photo is, and you've copied that photo when you made that key chain. So it could be copyright infringement. Is a model of the plane, a pictorial, graphic, or sculptural work? The answer should be pretty clear there. Yes, it's a sculptural work. Is it utilitarian? No, it's just acting as a model, as a toy, so that would be copyrightable. And then, another aspect, which is really important to get involved in at the beginning is to get your clients to, of course, mark all graphic materials related to any product, generally, with confidential marks, with copyright marks, and to consider copywriting all their technical drawings, et cetera, before they ever leave the studio, ever leave the building, set out to any manufacturers bids. Because this could be quite a powerful tool that people don't think about, the graphic works that can accompany any article of manufacture. Very important to, I believe, file copyright applications of all this material, which just, at least, would be pretty annoying for infringer to receive a whole stack of copyright registrations for drawings that they copied in order to make an appealing product. And here are the design patent drawings, which are clearly graphic, non-utilitarian. They're original. And I added a copyright notice down there at the bottom. Some people do that. They actually copyright the patent drawings to just, at least, say, "Hey, we're paying attention and better think twice before you copy our designs." You need to ask your client the right questions and make sure they know the right questions to ask you when it comes to looking at these three different regimes to protect their article of manufacture. Here's another little quiz for you. This is a cookie cutter, which were you to file design patent would be filed under Class D7, sub-class 672. And would these drawings work? No, I'd have to have other drawings when it comes to, is this cookie cutter design patentable on its own? Sure, Northrop Grumman could get a design patent on that. It's useful article that's got an ornamental design. There are a million designs for cookie cutters. Looking at trade dress. With the trade dress, any registration at the Trademark Office, the design must be used exactly as represented in the registration. So the design and application would have to be different if the product is gonna look like this, on the left, the cookie cutter. However, the cookie cutter may be considered too functional, utilitarian, to actually qualify for trade dress protection. So it's very much on a product-by-product basis. You have to make this analysis. Will it pass the Trademark Office, as being... Has it got secondary meaning? Is it functional as a whole? Is it the only design? Is it central to the cost of quality? Are there utility patents, advertising, et cetera? But again, the alternate design test is big for trade dress. There are many alternate designs for cookie cutters. So jury's out on this one. And then, copyright. Copyright could clearly protect other products that may have nothing to do with the original drawings. So always keep that in mind. This is a tree ornament, which were there to be a design patent filed to protect it, which probably wouldn't be cost effective, but for academic purposes, tree ornaments would be classified in D11, sub-class 131. And again, it might have to have its own drawings, but it's an article of manufacture. But there are alternative designs for tree ornaments. There would be no utility patents on this. And the overall appearance of this ornament is not dictated by its function. Again, the trade dress, the same questions, really, that you ask as one asks in the design patent analysis. Are there ultimate designs? What does the advertising say or the utility patents? Obviously not. Is it essential the design to the product? No, it's not. Does the product have secondary meaning? Arguably, that shape has likely acquired distinctiveness and has secondary meaning, provided that it's Northrop Grumman who is producing that tree ornament. And for copyright, again, clearly, copyright could be a really broad weapon or mode of defense for covering some useful articles, especially in a shape as distinctive as the Spirit. An example from industry number two. that is. Here is the design patent which was applied for in 1937. The term of the patent was 14 years at the time. Once that patent expires, you wanna be able to get trade dress protection. But when you look at the Coke bottle, or any bottle, is the protected design, is it the best design? Are there alternative designs that would adversely affect the utility of the article? No. Are there any utility patents for that design? What about the advertising? Does it tout particular features of the design as having specific utility? And are there any elements of the design or the overall appearance that are not clearly not dictated by function? Again, these factors, you want clients to be familiar with them, to help them, again, with their budgeting of their applications. Generally, bottles are going to be protectable by design patents if they're novel and non-obvious. Under trade dress, this is really key. Is the bottle design product configuration or product packaging? What do you think? I'll let you read this quote on your own. So as you can see, this is a really interesting area, especially for litigation and coming up with arguments that support your client, whichever side of the aisle you're on. The language, again, as I mentioned previously, should be specific when, and there are guidelines now for if you're claiming product configuration or product packaging. It should generally include configuration. This reads that trademark consists of the distinctively-shaped contour or confirmation and design of the bottle is shown. And again, this is trade dress, because this could be perpetual. But you still have to ask whether, even if there's secondary meaning, which clearly there is, is the bottle configuration functional? What do you think? And you could imagine what surveys would be required to prove that either that configuration is or isn't functional. And here, the bottle acquired had been used as early as 1916. This was registered in 1960. Obviously, there's acquired distinctiveness and secondary meaning in the bottle. Let's look at copyright. Is the bottle a pictorial, graphic, or a sculptural work? We'll look at the Star Athletica case. Is a sculptural aspect separable from the utilitarian? What do you think? It could go either way. Look at the other aspect of copyright. Is a photo of the bottle original? The photo of the bottle itself against white is not. That would not protect any copyrightable aspects of the bottle, if there are any. And finally, technical drawings. Again, remember, those can be a really effective way to at least give manufacturers or licensees heads up that you're watching and you're protecting your assets, and you're gonna make it really difficult for them if they try to copy your product, especially from the technical drawings and models and mockups that your client may provide. So the bottle can be protected through design patent and trade dress. Probably, not through copyright as a bottle. Though, maybe those ribbed elements are separable. Worth a try, if necessary. And infringers can be thwarted by copywriting all graphics and images that the infringer might use to produce non-copyrightable work. In summary, there is a tension between surface aesthetics and the functionality of articles of manufacture and to educate clients about how functionality affects the ability to protect the product in all three IP regimes. Educate the client about critical dates of each IP category, and ensure applications are filed before public disclosure. Instruct the client to create and gather information to support a later claim of trade dress. It is extensive. All the heavy lifting that goes into bringing a product to market and maintaining it there. And certainly, get the client involved in the product development stage. Thank you.

Presenter(s)

FL
Flann Lippincott
Attorney
Lippincott IP LLC

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