2021 AIPLA Virtual Spring Meeting

1. Protecting Designs Without
Design Patents
Presented by: James J. Aquilina
PHONE: 202-780-2637
EMAIL: james.aquilina@quarles.com
WEB: www.quarles.com
www.linkedin.com/in/jjaquilina

2. - Copyright
- separable portions of useful articles
having sufficient originality
- Trade Dress
- product configurations/ elements
- packaging configurations
- applied color(s) / color(s) per se
Without Design Patents, how else can we
attempt to protect useful objects that contain
design elements?

3. Copyright "Hurdles"
- Separability
- often dictated by the creative process itself
- can the artistic work be perceived apart from a mental re-
creation of the useful article itself?
- Originality
- low bar; typically not a significant hurdle to protectability

4. Copyright Separability Doctrine
for Useful Articles
17 U.S.C. § 102 (a): “Copyright protection subsists … in original works of
authorship fixed in any tangible medium of expression ….
Works of authorship include …
(5) pictorial, graphic, and sculptural works”.
17 U.S.C. § 102 (b): In no case does copyright protection for an original work of
authorship extend to any idea, procedure, process, system, method of
operation, concept, principle, or discovery….
The problem: many useful articles incorporate artistic works, but how does
copyright law ensure the protectability of these pictorial, graphic, or sculptural
(PGS) works without extending protection to the utility of these articles?

5. Copyright Separability Doctrine
for Useful Articles
The solution (also a problem):
17 U.S.C. § 101:
“[PGS] works include two-dimensional and three-
dimensional works of fine, graphic, and applied art ….
Such works shall include works of artistic craftsmanship
insofar as their form but not their mechanical or utilitarian
aspects are concerned; the design of a useful article …
shall be considered a [PGS] work only if, and only to
the extent that, such design incorporates pictorial,
graphic, or sculptural features that can be identified
separately from, and are capable of existing
independently of, the utilitarian aspects of the article.”

6. “Ballet Dancer” lamp bases at issue in
Mazer v. Stein, 347 U.S. 201 (1954)

7. Cheerleading uniforms at issue in
Varsity Brands v. Star Athletica
137 S.Ct. 1002 (2017)

8. Varsity Brands v. Star Athletica
137 S.Ct. 1002 (2017)
(1) can the design be perceived as a two or three-
dimensional work of art separate from the useful
article?
(2) would the design 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?

9. OLD separability test:
Can the artistic
feature and the useful
article both exist side
by side and be
perceived as fully
realized, separate
works — one an
artistic work and the
other a useful article?
NEW separability test:
Focus only on “the
extracted feature”
because the “statute
does not require the
decisionmaker to
imagine a fully
functioning useful
article without the
artistic feature.”
Star Athletica, 137 S.Ct. at 1013.

10. Can one visually perceive of
the 2D or 3D work of art in a
way that doesn’t involve
creating a mental image of the
entire useful article?

11. “In re Pendant Lamp – 76”
Copyright Office Review Board
April 4, 2018

12. “In re Floor Liner”
Copyright Office Review Board
April 19, 2018

13. “In re Yeezy Boost” – Versions 1 and 2
Copyright Office Review Board
May 8, 2019
Version 1 Version 2

14. “In re Wilderness Survival Card”
Copyright Office Review Board
December 23, 2019

15. Trade Dress "Hurdles"
- Functionality
- avoid throwaway "useful," "makes it cheap," or "makes it easy to
manufacture" statements in utility patents/advertisements
- Lack of exclusive use
- use design patent(s) to elbow out competition while
distinctiveness being established?
- Lack of acquired distinctiveness
- employ targeted "look for" advertising

16. Trade Dress Functionality
15 U.S.C. § 1052: “No trademark by which the goods of the
applicant may be distinguished from the goods of others
shall be refused registration on the principal register on
account of its nature unless it—
(e)(5) comprises any matter that, as a whole, is functional.”
15 U.S.C. § 1091(c): functional marks are not registrable on
the Supplemental Register either.

17. Trade Dress Functionality
Utilitarian functionality
• essential to the use or purpose of the article OR
• affects the cost of the article OR
• affects the quality of the article (Inwood Labs)
Aesthetic functionality
• exclusive use of the feature would put competitors at a significant non-
reputation-related disadvantage (Qualitex)
• requires a finding of competitive need or customer desirability?
• aesthetic functionality ≠ ornamentality
De facto functionality = the mere existence of utility
De jure functionality = a superior degree of design utility (In re Morton-Norwich)
the product has a particular shape “because it works
better in this shape” (In re Smith)

18. Trade Dress Functionality
Non-exclusive factors for determining functionality:
• the existence of a utility patent that discloses the
utilitarian advantages of the design;
• advertising by the applicant that touts the utilitarian
advantages of the design;
• facts pertaining to the availability of alternative designs;
• facts pertaining to whether the design results from a
comparatively simple or inexpensive method of
manufacture.
In re Morton-Norwich Prods.
671 F.2d 1332, 1340-1341 (C.C.P.A. 1982)

19. TrafFix Devices, Inc. v. Mktg. Displays, Inc.
532 U.S. 23 (2001)

20. Qualitex Co. v. Jacobson Prods Co.
514 U.S. 159 (1995)
* Color
registrable
– not
functional

21. * Product
configuration
not registrable
because
functional

22. * Product
configuration
not registrable
because non-
distinctive
Serial No. 86/634,819

23. Product configurations registrable with
acquired distinctiveness claims
Reg. No. 5,708,907
mattresses, beds, etc.
Reg. No. 5,877,430
Payment terminals

24. Product configurations registrable with
acquired distinctiveness claims
Reg. No. 6,242,431
Motor vehicles; parts therefor
Reg. No. 6,219,645
Luxury Shoes

25. Packaging configurations registrable without
acquired distinctiveness claims
Reg. No. 6,338,723
Hard Seltzer
Reg. No. 6,152,357
Whiskey

26. Questions?

27. Thank You
James J. Aquilina
PHONE: 202.780.2637
EMAIL: james.aquilina@quarles.com
www.linkedin.com/in/jjaquilina
@jjaquilina