

A Very Short Primer on Design Patents and Trade Dress

by Michael Risch

Associate Professor of Law

Villanova University School of Law Here is a very short rule-of-thumb primer for Groklaw readers that might focus some of the areas to look for as you follow the Apple v. Samsung litigation:



1. Design Patents: These cover non-functional inventions in design. Unlike copyrights, they are enforceable against third parties even if the third party developed the infringing design independently. As such, you must have novelty and non-obviousness in the design. The test for infringement is the "ordinary observer" test, but where the ordinary observer is aware of the prior art. However, you have to look at the design as a whole, and not the "points of novelty." Here is a good article on this. So, here's what to look for. First, are the patents valid in light of all the prior art? If so, then how narrowly do we consider the patent as compared to the infringing device? It need not be identical, but to the extent the device looks like the prior art and not the patent, then that will be a defense. Note also, that you must have non-functionality (which I will discuss below as well). This is why there were questions about the shape of icons, etc., because Apple desperately wants to convince the jury that square icons (and a dock of 4) has no basis in functionality. It's one reason why the iPad has only 4 icons across the bottom despite the ridiculous waste of empty space on a big tablet. 2. Trade Dress. Trade Dress is not really a "subset" of trademark law. It is trademark law. Lanham Act Section 43 allows protection against any use of a mark or device that might confuse as to origin of goods or sponsorship. Trade dress is that device, so if the trade dress causes confusion, then it will generally be actionable. But the story doesn't end there. You must have distinctiveness. For product design, distinctiveness means that users generally think of one product and one product only when they see the design. Some marks can be inherently distinctive -- see, e.g. Xerox, which was a made-up term. You don't think of anything else. You also don't have to spend a lot of time proving customers think of one product. However, to be distinctive in product design, the distinctiveness must be earned -- it cannot be distinctive from the get-go. What this means for Apple is that even though the product debuted in 2006 or whenever, it had to wait until it could show that customers thought of *Apple* when they saw the design. That might have taken some real advertising and market penetration. Because Apple tends to wait until just prior to release to announce products, it doesn't get a lot of pre-release advertising to support it. Furthermore, distinctiveness must not be functionally based. One way we think of functionality is genericness. That is, I can't sell an automobile with the name "CAR." This is because car serves a function -- it is the name of the general products, and thus cannot serve a specific purpose. Note that I am simplifying a tad here for the purpose of analogy -- most people don't think of genericness as functionality, but I think it is helpful, because it helps situate trade dress in with the rest of trademark law. So, when we get to product design, functionality becomes critical, because -- you know -- it's the product. So, what the courts do is look at whether something serves a function. In the past, courts have favored plaintiffs, and most academics think this area is a mess. Here's a good background and a summary of cases. There are two kinds of functionality. First is operable functionality -- how the product works. Second is aesthetic functionality -- customer demand for aesthetic design features that create the need for similar product design. Think about Owens Corning pink fiberglass. The color of the product design has no basis in the product's function. Because it is not visible in the final home, there is no aesthetic functionality. Compare this with John Deere green. Because the company has such a strong mark for tractors, farmers will want their accessories to match. As such, there is a good argument that John Deere cannot own green for tractor accessories, because aesthetic functionality will demand otherwise. However, as I note above, the courts are not great at consistently applying this defense with theoretical precision. Summing Up: What to Look For. Here's what to look for, then. To what extent does the product design get driven by actual function? Does the dock provide function that you can't protect, even if you were the first? For that matter, is it even distinctive? When you see 4 icons across, do you think of Apple only? Or is that a "generic" or "functional" feature? If Android implemented the four icons right away, then that aspect might well have never been associated exclusively with Apple, and secondary meaning never formed. That's why Apple is relying on its design patent for that as well, because the patent doesn't require secondary meaning. Similar is the shape of the design. Was the iPad shape distinctive to Apple at release? If not, how long after? A perusal of the Samsung opening argument looks like Samsung wants to show that iPad never really garnered secondary meaning. If everyone copied it right away, it may never have obtained distinctiveness in consumer minds. Further, we have to look at operable functionality -- does the fact that touch screens got better and cheaper mean that iPad looks the way it does for functional purposes? Apple will surely argue that the technology got better because Apple's new design forced the technology to get better, but I'm not sure that's enough. Similar is the rectangle shape (screens have always been rectangle) and thin profile (customers always want thinner, don't they?). There are also reasons to have curved corners (aesthetically, and also actual function -- like not poking or breaking on impact). Or maybe not. On the other hand, the circular button is probably protectable -- it is distinctive, and a) functionality does not dictate round, and b) one button is really less functional than multiple buttons. This is the type of argument and testimony to look for as the trial goes on. Confusion. A final issue is how to think about confusion. There is likely no confusion at the time of purchase. So, the real question is whether there is post-sale confusion and whether that confusion is the kind of thing that causes any damage. This is an area that has garnered a lot of academic attention, and is still debated. In sum, Samsung's key pivots: 1. The design is not distinctive to Apple -- customers don't associate features only with Apple 2. The design is functional -- operation and/or aesthetic demands drive the design 3. There is no confusion in the consumer market. Regards, Michael Risch

Associate Professor of Law

Villanova University School of Law