Archive for the ‘Design Patents’ Category

Ask Dr. Copyright…

Friday, September 28th, 2012
copyright question

Dear Doc:

I have heard that there is something called “trade dress” that can be legally protected, and that it’s different from trade mark and also from design patent and copyright?¬† What gives?


Sam Sung

Dear Sam:

Trade dress is pretty broadly defined as the visual impression created by the sum of all elements used in packaging or presenting a good or service for sale, and which gives the product or service a distinctive and recognizable appearance to the purchaser. Some trade dress may even become so associated with the product and its producer that it acquires “secondary meaning” entitling it to registration as a trade mark.

You’ve no-doubt seen trade dress in stores: as you wander down the detergent aisle, if you see a bright orange box or bottle, you probably think, “TIDE”. If you see ceramic items that are light blue with white accents, you may think, “Wedgewood”, and if you see a soda bottle with a narrow “wasp waist” you may recognize it as Coca Cola. Each of these is the products’ trade dress.

In order to be protected as trade dress, the elements must be recognizable as denoting the product or its source, and must be non-functional (that is, aesthetic).  Thus, the color blue for certain little pills for men is protected, as is the shape and appearance of the Ferrari 365 GTB/4 sports car.

In a very recent case, Apple, Inc. prevailed over a certain Korean electronics company when the jury found that Apple’s iPhone trade dress had been infringed. The amount of damages awarded was many hundreds of millions of dollars. The Korean company has just filed a motion to have that verdict overturned by the judge. The motion says that the overall appearance of the Apple iPhone and its packaging is not trade dress because its function is simply to be beautiful. They claimed that the iPhone was thus unprotectable because it has “aesthetic functionality”.¬† They cited testimony that customers, “lust after the [iPhone] because it’s so gorgeous.”

Where will this end up? Who knows? Certainly not the Doc!¬† But one thing is certain…if trade dress, like design patents and copyrights, protects things that are nonfunctional, and a court finds that being beautiful is a function, then the Doc is going to have to go back to his college aesthetics professor and demand his money back!

— Lawrence Husick, Esq.

APPLE v SAMSUNG – Design Patent Law Moves Closer to Trademark Law

Thursday, May 31st, 2012

Home Design Patent A ‘design patent’ is a monopoly granted by the government to make, use and sell a product having a particular appearance.¬† Design patents protect how a product looks, not what it does.¬† A person who copies a product protected by a patent, including a product protected by a design patent, will be ordered to stop infringing by a court only if the patent owner can demonstrate that the patent owner will suffer ‘irreparable harm’ due to the infringement that cannot be compensated by money damages.¬† Such a court ‘injunction’ against an infringer is difficult to obtain under this standard.

On the other hand, a ‘trademark’ indicates the source of a particular type of goods.¬† If a trademark becomes ‘famous’ (for example, Coca-Cola¬ģ) then a court will order a trademark infringer not to use the famous trademark for other types of goods if the use will ‘dilute’ the famous trademark; that is, if the use will reduce the stature of the famous trademark in the eyes of the public.¬† It is easier to obtain an injunction stopping infringement under the famous trademark standard than under the patent standard.

Apple and Samsung are in a worldwide battle over the alleged copying of Apple’s patented smartphone and tablet computer designs by Samsung.¬† In a case before the Federal Circuit Court of Appeals, Apple argued that Samsung should be enjoined from selling its Galaxy smartphones because Samsung’s copying of the patented Apple design amounts to ‘design dilution.’¬†¬† The argument is that Apple is ‘irreparably harmed’ for purposes of a preliminary injunction because Samsung’s product will ‘dilute’ the Apple design in the eyes of the public.¬† This argument blends the trademark concept of dilution into patent law.¬† The trial court rejected the argument for lack of evidence.¬† The Federal Circuit affirmed the trial court’s conclusion that the argument was not supported by evidence, but concluded that it “would have been improper” to reject the argument outright.¬†¬† The Federal Circuit Court’s decision leaves Apple free to renew the argument with more evidence when the case comes to trial.

The Apple v Samsung case blurs the distinction between trademark and design patent law and potentially will ease the burden of a design patent owner in stopping an infringer.

— Robert Yarbrough, Esq.