The Protection of Designs under U.S. Law

(IPRinfo 4/2008)

Graeme B. Dinwoodie
Professor of Law, Associate Dean, and Director, Program in Intellectual Property Law, Chicago-Kent College of Law; Professor of Intellectual Property Law, Queen Mary College, University of London

This article is part of an essay by Professor Dinwoodie ”The Protection of Designs under U.S. Law”, in which he covers thoroughly the history, case law and various aspects of design protection.
The concept of a design patent is the least known to European IP specialists. Therefore, it was chosen as the main theme of this article even though its significance as a protection method even in the USA is not very noticeable. The entire essay will be published on the web site of IPR University Center (Publications/Articles).

The United States protects designs through a mish-mash of copyright, trade dress and design patent.

The design may fit within traditional theories of copyright protection, patent protection or trademark protection. Different countries place design into different parts of their overall intellectual property scheme, which may include not only those three regimes but also utility model or petty patent rights, registered and unregistered design codes, and varying laws of unfair competition including a prohibition against slavish imitation.

In recent years, protection of designs in the United States has been achieved most effectively under trademark and unfair competition law. In the early years of the U.S. trademark statute, the Lanham Act, disputes under the Act largely involved producers claiming rights in words and two-dimensional logos that identified the source of their products and distinguished them from the goods of others.

Over time, however, the categories of subject-matter protected as trademarks grew to encompass the packaging or receptacles in which products were contained. This is sometimes called ”trade dress”, but the term has for all intents and purposes come to mean the same as trademark.

Trademark protection for designs is stronger than copyright
Trademark protection of designs has been restricted in different ways in recent years. However, it does remain an important way of protecting designs in the United States, in part because of the weaknesses of the alternatives, design patent and copyright.

Copyright protection of the design of useful articles is significantly restricted in U.S. law by the requirement that, to be protected, the artistic elements of the design features must be separable from the utilitarian features of the article. This requirement was introduced into the U.S. copyright statute in 1976. Coincidentally, this was the same year that the federal appellate courts decided to protect product design under the trademark statute.

It is the historical background in the United States against which recent developments have occurred: a design patent system that offers protection too slowly and to too few designs; a copyright system that largely denies protection to designs that (like most successful designs) embody a blend of form and function; a failure to enact effective sui generis design protection laws; and a trademark law pressed into service to fill these gaps and protect producers against imitation designs.

A design patent must be new and non-obvious
Design patents are available for new and non-obvious ornamental designs. The system has never fully fulfilled its more explicit promise to protect designs because of its costly and lengthy registration process and its high thresholds (novelty and nonobviousness) to protection, which are intentionally linked to thresholds used for utility patent grants.

The combination of these variables for many years caused few producers to seek design patents. And those who did found their patents largely invalidated by the courts. The situation improved somewhat with the creation of the specialist patent appeal court in 1982, but designs patents remain essentially useless for many industries.

The U.S. patent system encompasses two types of patent regimes: the utility patent regime and the design patent regime. As the Supreme Court has explained, ”[t]o qualify for [design patent] protection, a design must present an aesthetically pleasing appearance that is not dictated by function alone, and must satisfy the other criteria of patentability.” That is to say, design patent protection is granted to new and non-obvious ornamental designs. And a design patent applicant must also demonstrate the non-functionality of its design.

Obtaining a design patent is costly and slow
The same institutions that have primary responsibility for overseeing the U.S. utility patent system also have similar responsibility for the design patent system. The U.S. Patent and Trademark Office (USPTO) receives design patent applications, examines them in an ex parte process to determine whether they comply with substantive patentability requirements and other procedural requirements, and issues them as design patents if they do comply.

Situating design patents within the substantive statute and institutional apparatus that operates the utility patent system has contributed to their ineffectiveness as a protection system. Design patent documents are less elaborate than utility patent documents, including only a single, pro forma claim, which in turn refers to the drawings. However, there is still an examination process, which can take 18 months, and protection begins only when the patent is issued. This is too long for many fast-paced dynamic industries. Copyright and trade dress, which do not require registration, are thus attractive alternatives.

Protection begins only after the patent issued
Moreover, the application of the substantive standards of utility patents to designs makes the system a bad option. There are some substantive differences between utility patents and design patents. For example, design patents protect the way an article looks, not the way an article works. Thus, a design patent must not be functional; it must be ornamental.

But because design patents are largely subject to the same rigorous thresholds as utility patents, historically U.S. design patent law has been relatively ineffective (especially as compared with foreign design laws) in protecting designs. The thresholds of novelty and non-obviousness are linked to those thresholds used for utility patent grants. But design is not in the nature of radical groundbreaking discoveries and inventions. It is consciously a process of tinkering, problem-solving.

Moreover, an important additional limitation on the patentability of designs is that they must be primarily ornamental in character. If the design is dictated by performance of the article, then it is judged to be functional and ineligible for design patent protection. And this standard, which does not apply to utility patents, has also arguably been made harder of late.
Classically, the courts have held that a design is functional for design patent purposes only if the design is dictated solely by its function, which is not the case if alternatives designs for this article are available.

However, in a recent case, PHG Technologies LLC v. St. John Companies Inc., the Federal Circuit arguably tightened the functionality requirement. In that case, the patentee claimed rights in the design of medical patient identification labels.
The Court appeared to revive an older, stricter test that looks at a number of factors, including ”whether alternative designs would adversely affect the utility of the specified article.” One could read this case, some critics have feared, as holding that in order to escape a conclusion of functionality, the patentee must show not only that alternative designs exist, but that those alternative designs would perform the function of the article equally as well.

Mere alternative designs will not, of themselves, be sufficient to sustain a finding of non-functionality. Thus, the functionality doctrine in design patent law appears to be moving toward the stricter trademark doctrine.

Two tests to show infringement of a design patent
What is left of design patent protection is also currently under attack in the context of infringement. Patent infringement occurs most commonly when a party makes, uses, sells, or offers to sell a patented invention in the U.S., imports a patented invention into the U.S., without the patent owner’s permission during the term of the patent (14 years in the case of design patents). Because the statute defines acts of infringement so broadly, most disputes in patent infringement cases revolve around whether the alleged infringer’s acts in fact involve the claimed invention.

Infringement of a design patent occurs if ”the designs have the same general visual appearance, such that it is likely that the purchaser (or the ordinary observer) would be deceived into confusing the design of the accused article with the patented design.”

This basic question has been elaborated on in modern design patent case law, creating two tests, both which must be satisfied for a showing of infringement: the ordinary observer test and the point of novelty test. The ”ordinary observer test” was first enunciated by the Supreme Court inGorham Manufacturing Co. v. White, 81 U.S. 511 (1871) and looks at the external similarity of the products:
”[I]f 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.” The correctness of this basic Gorham test has not really been challenged in the courts.

The ”point of novelty test” is more technical in nature. It requires proof that the accused design appropriated the novelty which distinguishes the patented design from the prior art. A court must compare the construed claims to the accused design to determine whether the accused design has ”appropriated” the points of novelty from the patented design.

In Lawman Armor Corp. v. Winner Int’l, LLC, 449 F3d 1190 (Fed. Cir. 2006), the Court of Appeals for the Federal Circuit made the point of novelty requirement a larger hurdle by rejecting the argument that the overall design can be a point of novelty. In Lawman, the patentee listed eight points of novelty for its steering wheel lock design, but every one of these eight points of novelty was shown in prior art patents.

Instead, the patentee claimed that the combination of the eight points in a single design was a ninth point of novelty. The court rejected that argument, though the nature of industrial design is often in the nature of this type of incremental activity.
Indeed, the point of novelty requirement is becoming such a large hurdle that, in an amicus curiae brief in a case pending before the en banc Court of Appeals for the Federal Circuit, Egyptian Goddess, Inc. v. Swisa, Inc., Apple Computer has asked the court to abolish that requirement and return to Gorham.

It is argued that the point of novelty test has posed problems with regard to claim construction because designs are difficult to verbalize unequivocally and is unnecessary in light of, and indeed inconsistent with, the Gorham test. Apple’s brief points out that the point of novelty test – requiring the plaintiff to verbalize its design – is frequently used by the defendant to obtain summary judgment without the Gorham inquiry ever getting to the jury.

Designers lack legal certainty for protecting their works
But this is the problem of the continual analogy to utility patents. In utility patent law, the Supreme Court’s Markman decision compels the involvement of the court in defining the claims as a matter of law. The Gorham test, instead, is much more impressionistic and fact-based.

But, of course, that is precisely the nature of visual impression; it should be more impressionistic. Thus, argues Apple, the court should have less of a role in giving guidance as a matter of law in infringement of a design patent, and thus there really is no need for the point of novelty analysis, which is where courts have typically tried to offer that guidance.

We await the decision of the Egyptian Goddess, which is the first time the Federal Circuit has sat en banc in a design patent case. But, almost regardless of the outcome, design patents remain a largely ineffective way of protecting designs.

As has been the case for the last century and a half, the United States protects designs through a mish-mash of copyright, trade dress and design patent. Hardly a recipe, unfortunately, for legal certainty.

Note (on September 23, 2008/phh)
In the unanimous judgement of 22 September 2008 on the /Egyptian Goddess/, the 12 judges of the Court of Appeals for the Federal Circuit rejected the point of novelty test. To determine whether a design patent has been infringed, the only test should be that of an ”ordinary observer”. In spite of its different approach, however, the Court did not change the decision or the District Court.