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Slides to accompany talk by James Juo and Scott Hansen, partners at Fulwider Patton LLP in Los Angeles, covering design patent, trade dress and copyright protection as three legal tools to protect …

Slides to accompany talk by James Juo and Scott Hansen, partners at Fulwider Patton LLP in Los Angeles, covering design patent, trade dress and copyright protection as three legal tools to protect intellectual property

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  • Hello, my name is James Juo, and [CLICK]
  • How Design Patents Overlap With Trade Dress And Copyright We are here to discuss Design Patents, Trade Dress and Copyrights. We will first cover some overlapping aspects, before moving on to discuss specifics for each. I will focus on design patents, while my colleague Scott Hansen will focus more on trade dress and copyrights.
  • Obtaining a design patent may be used as evidence of non-functionality for trade dress.
  • Now, how do they overlap? Well, all have a distinctiveness requirement. Of the three, copyright has the lowest threshold for showing distinctiveness. As Scott will discuss in more detail later, a Design patent can complement trade dress protection. Indeed, a Design patent may serve as a supplement for trade dress protection until secondary meaning is developed in the marketplace. 
  • Also, registration is not required to obtain rights to trade dress or copyright. However, examination by the Patent Office (or USPTO) is required for a design patent. But there is no requirement that the design have actually been used in a product. Trade Dress May be registered by USPTO if secondary meaning is established. Registration with US Copyright Office is required to enforce copyrights in court. There appears to be no election doctrine for registration at the FEDERAL agency level. For example, the Copyright Office will no longer refuse to register a copyright because the Patent Office issued a design patent, and vice versa.
  • The various infringement tests share some similarities, but, as Scott and I discuss each, we will find that each has a different focus. One of the tests for substantial similarity in copyright infringement asks whether, in comparing two works, “the ordinary observer, unless he set out to detect the disparities, would be disposed to overlook them, and regard their aesthetic appeal as the same.” Hamil America, Inc. v. GFI, 193 F.3d 92, 100 (2d Cir. 1999)
  • OK. So, let’s talk about patents.
  • Backing up a moment, what are the different types of patents? Click to cover up plant patents (which we will not be discussing here) According to recent AIPLA survey: Average attorney fees for preparing a design patent is $1,500 (compared to about $10,000 for utility patent) – not including filing fees or a search. COMPARE--Average attorney fees of trademark registration is $700. Average attorney fees copyright registration is $350.
  • CLICK to show patent title Michael Jackson’s patent for the dance shoe used in the Smooth Criminal video.
  • This is the patent claim for the shoe Michael Jackson used in for his dance routine in Smooth Criminal [ CLICK for dance picture] If a film producer were to have a prop made according to the patent for a movie, there could be infringement for its making, and its use during filming. While probably not infringement for the showing of the move, it is something of an unsettled question
  • Article of Manufacture Here is a design patent for a “head dress” based on Bob Ringwood’s Batman costume. Applications for design patents are kept confidential until the patent issues. A design patent has a term of 14 years from its issuance. The scope of protection is defined primarily by the drawings. Now let’s look at the drawings …
  • Here we have some brief descriptive text and the drawings which define the scope of the design patent. In addition to this Batman costume, other examples include … CLICK to move to other drawings of design patent
  • A design patent on a car. And a design patent on a tire rim. Nike D348765 was found infringed in prior litigation
  • A design patent on a car. And a design patent on a tire rim. Nike D348765 was found infringed in prior litigation
  • Toy spaceships Paramount stopped applying for Star Trek design patents in the mid-1980’s Possibly because the average pendency for design patents back in 1980’s was nearly 3 years [CLICK to next slide] – now it is averaging less than 18 months, and many issue within 1 year.
  • As you can see, there has been a steep drop in pendency (the time between filing and issuance) since 1990’s. Currently, pendency is about 15 months, which is less than half of what it was in 1990. And many issue within 1 year. This shorter pendency makes design patents more attractive now.
  • Design patent D600,241 for the iPhone Apple also has design patents on the icons on the iPhone interface Filed in April 2008, and issued in September 2009
  • Design patent D600,241 for the iPhone Apple also has design patents on the icons on the iPhone interface Filed in April 2008, and issued in September 2009
  • The iPhone design patent was filed in April 2008, and issued in September 2009. This year-and-a-half pendency is near the average for that time
  • Google design patent for search interface Because Google tends to advocate aggressive fair use positions on copyright law, it is no surprise for Google to file design patents on its search interface to augment its copyright position. Note that Google is still claiming copyright at bottom. Click to Blow up the patent drawing. Note the use of dashed lines so that the design is not limited to using the Google name.
  • Design Patent A is a slam-dunk infringement Design Patent B has a more difficult case
  • A design patent is presumed valid, but there is no patent right until it is issued by the Patent Office. [ CLICK ] One reason the “presumption of validity” is significant is that it requires the higher standard of “clear and convincing” evidence overcome the presumption and prove invalidity. But infringement only requires a preponderance of the evidence. Clear and convincing evidence is somewhere between a preponderance and beyond a reasonable doubt.
  • There is no analogous statutory bar to copyright or trade dress protection. Two patent concepts Now let’s move on to some comparisons of designs with the prior art
  • Showing the design at a trade show could be prior art. Having the design disclosed in a catalog also could be prior art Can skip the last three bullet points .
  • Let us return to the Star Trek design patent… Original Starship Enterprise (top right) is prior art. It is outside the scope of the design patent (otherwise, the patent would be invalid). The model at lower right would be covered by the design patent. It looks much more like what is shown in the design patent than the prior art
  • Returning now to the Google design patent, the design patent has to be distinct from its 2003 interface (otherwise invalid). However, Google may have a difficult time showing that its current website is covered by its design patent because it has moved the hyperlinks from directly above the search bar to the top left corner of screen in 2010. But I am sure that Google has other design patent applications pending to cover variations of its search interface. Design patent applications are kept confidential by the Patent Office until they are issued
  • Consider the following: The patented design is on the left [CLICK], and the two accused designs are on the right The two accused handle designs were found to have infringed the patented design. These were the designs at issue in the Supreme Court decision of Gorham v White, which we will now discuss
  • 1871—Gorham v White Set forth the ordinary observer test for design patent infringement Paraphrase—infringement if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, finds two designs to be substantially the same.
  • As you may recall, earlier we discussed how a design patent may be drafted using dashed lines to exclude features from the claimed design (so that the solid lines focus on the design features you want to protect).
  • The “ordinary observer” is a purchaser and not an expert. The “ordinary observer” may be someone other than the end consumer. Currently, The “ordinary observer” may be someone who will see the design anytime during its lifecycle from when it is manufactured to when it is destroyed.
  • The Federal Circuit recently handed down a major decision on design patents—Egyptian Goddess. The ordinary observer test is now the sole test for design patent infringement.
  • In other words, one familiar with the prior art will know which features are the important ones to focus on. As we observed earlier with our earlier examples, knowledge of the prior art can significantly impact the scope of a design patent
  • Both are hollow, rectangular designs. The look pretty similar, except for the fact that one has 3 buffer pads, and the other has 4 buffer pads. Click to bring up prior art designs. Defendant argued that the prior art differentiated between 3-Buffer and 4-Buffer designs, and that an ordinary observer would not mistake a 3-buffer design for a 4-buffer design. CLICK --No infringement between a 3-Buffer design and a 4-Buffer design.
  • No. 2008-1596 This is a case involving Crocs—or what my wife calls the ugliest shoe she loves to wear This was an appeal by Crocs from the ITC (or International Trade Commission). For those who are unfamiliar with the ITC, it is a federal agency located back in Washington DC, with jurisdiction over imports. The ITC can issue orders to stop the importation of products that would infringe a patent—Scott will discuss the ITC in more detail later. Here, Crocs sought to stop the importation of knock-offs that infringed its patents. The ITC found no infringement of the design patents (using the pre-Egyptian Goddess test), and the Federal Circuit reversed on appeal. The Federal Circuit has now endorsed using side-by-side comparisons in determining design patent infringement. The danger of a side-by-side comparison is that you may start studying the differences between the designs if you stare at it for too long. For example [ CLICK to focus on the shoes], note the various rectangular holes on the right versus the uniform round holes in the patented design. New restatement of the ordinary observer test--If the claimed design and the accused designs were “mixed up randomly,” could an ordinary observer restore them to their original order without careful and prolonged effort? As noted earlier, the Federal Circuit would “leave it to future cases to further develop the application of this standard,” and we will have to wait and see how this formulation develops. Marks are not compared on side-by-side basis, but are considered as customer with imperfect recollection would recall them. Here, the Federal Circuit found infringement, so the side-by-side comparison worked out for Crocs.
  • Separate the functional and ornamental aspects for infringement Hammer; Claw; Crow bar while it is proper to factor out the functional aspects of various design elements, that discounting of functional elements must not convert the overall infringement test to an element-by-element comparison According to Court, accused device (FUBAR) had a streamlined and rounded appearance with fewer blunt edges than the patented design. Tapered hammer-head, streamlined crow-bar, a triangular neck with rounded surfaces, and a smoothly contoured handled. Court again endorse the use of a side-by-side comparison
  • Here is an example taken from a complaint filed in Nike v Wal-Mart where a side-by-side claim chart was used
  • While it has its limits, a side-by-side comparison can be very effective.
  • Apple v Samsung
  • The take-away is that whether a difference is considered to be minor or significant, may be significantly affected by the prior art. Here, “Crowded” means that there are a large number of similar designs.
  • Apple has several iPod design patents, including U.S. Pat. No. D538,820 filed Aug 24 2005, and issued on Mar. 20, 2007, that appears identical to Apple’s U.S. Reg. No. 3,365,816 (filed Jul. 2006, and issued Jan. 2008).  The design patent issued about a year before the trademark registration. Apple was able to make the required showing of secondary meaning for its trade dress based on its sales, advertising, industry recognition for its design, and declarations from “customers.”
  • Paris Hilton is being sued for design patent infringement US Patent No. D579,642 for a “shoe sock” on left side Paris Hilton Shoes both on right side [CLICK] for picture of patented design on right
  • Shoe in lower right corner is the patented design product by Brooke Hollow, Inc. d/b/a Gwyneth Shoes Complaint i llustrates the overlapping protection between design patent infringement and trade dress Design Patent covers heart-shaped shoe sock. Trade Dress for heart-shaped shoe sock was alleged to be either inherently distinctive or to have acquired secondary meaning as a result of advertising and promotion at trade shows since July 2007 NOW SETTLED
  • What features would be trade dress?
  • Design patents on shoes – among the most litigated design patents Recent Complaints Asserting D. Patent & Trade Dress Handbag, light fixture, wireless router, surgical implant, sunglasses, athletic shoes, toy rocket, flashlight, lamp, luggage, wheel rims, watch, earloop receiver, helicopter design Among Biggest Holders of D. Patents: Sony, Samsung
  • Forms are not subject to copyright, but the layout of a blank form of labels may be the subject of a design patent
  • Need to separate the aesthetic features from the functional features for copyright on an article Apart from the “Mach 5” markings, is it possible to separate the styling of the automobile design from its utilitarian aspects (for example, aerodynamics)? Generally difficult to find conceptual separability in the design of utilitarian items such as automobiles.
  • More pronounced and elongated ears in prior art comic book art But chest emblem still separate from rest of mask
  • Prior art TV show costume had shorter ears, and chest emblem was separate from mask The Adam West batman mask was cited as prior art during prosecution Copyright protection is available for masks
  • Note design features of ears, scalloped shoulder portion, and connected chest emblem
  • Would this be copyright infringement with a different emblem (a snail instead of a bat)? Is it a parody? Is this transformative? But these are not defenses to infringement of a design patent
  • Design patents can complement trade dress protection under trademark law. Design patents may serve as a preliminary substitute for future trade dress protection based as secondary meaning is developed in the marketplace. 


  • 3.
    • 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.
  • 4.
    • Distinctiveness requirement
      • Design Patent
        • Novel and nonobvious over prior art
      • Trade Dress
        • Secondary meaning
      • Copyright
        • Original
  • 5.
    • Acquired differently
      • Design Patents
        • Filing and examination by USPTO.
      • Trade Dress
        • Actual use in commerce.
      • Copyright
        • Fixation in a tangible medium.
  • 6.
    • 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).
  • 8.
      • Design Patent
        • Protects how an invention looks (ornamental features)
      • Utility Patent
        • Protects how an invention works
      • Plant patent
        • Protects asexually reproducing plants
  • 9.
      • 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.
  • 10.
    • 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”
  • 11.
      • 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.
  • 12.  
  • 13. Other Design Patents
  • 14. Other Design Patents
  • 15. Other Design Patents 2 years 3 years
  • 16.
  • 17. Other Design Patents
  • 18. Other Design Patents
  • 19.
  • 20. Other Design Patents
  • 21. Use of Phantom or Dashed Lines
  • 22.
    • 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.
  • 23.
    • 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)
  • 24.
    • 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
  • 25. Scope Prior Art
  • 26. © 2011 © 2001 © 2004
  • 27.  
  • 28.
    • 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.”
  • 29.
    • 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.
  • 30.
    • 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.
  • 31.
    • 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.
  • 32.
    • 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)
  • 33. 3-Buffer Prior Art 4-Buffer Prior Art Accused 4-Buffer Product Patented 3-Buffer Design No Infringement
  • 34.
    • Crocs, Inc. v. ITC , 598 F.3d 1294 (Fed.   Cir. 2010) (post- Egyptian Goddess )
      • Side-by-side comparison between design patent and accused product.
  • 35. Patent-In-Suit Accused Product
    • Richardson v. Stanley Works , 597 F.3d 1288 (Fed.   Cir. 2010) (post- Egyptian Goddess )
    No Infringement
  • 36.  
  • 37.  
  • 38.  
  • 39.  
  • 40.  
  • 41.
    • 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.
    • 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)
  • 45. iPod Design Patent iPod TM Registration
  • 46. Paris Hilton Shoe Litigation Design-Patent-in-suit Accused Shoe Designs
  • 47.
    • 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
  • 48.
    • 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?
    • Trade dress: potentially indefinite term w/use in commerce
    • Design patents expire in 14 years
      • Buys enough time to develop secondary meaning?
  • 50. Lotus v. Hennessey Performance Engineering
  • 54.
    • 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
  • 55. Design Patent v. Copyright: Blank Label Sheets
  • 56. Design Patent v. Copyright: Medical Devices
  • 57. Protecting Speed Racer
    • 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
    • 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
  • 61. KA-POW !!!! BATMAN DESIGN PATENT Prior Art
  • 62. Patented Product
  • 63.  
  • 64. SUMMARY
  • 65. Design Patents, Trade Dress, Copyright
      • Different distinctiveness requirements
      • Different non-functionality requirements
      • Different test(s) for infringement
      • Use together to maximize IP protection