Trade Dress, Design Patent and Copyright: Strategies to Maximize Protection, Challenge and Defeat Infringement Today’s faculty features: 1pm Eastern | 12pm Central | 11am Mountain | 10am Pacific The audio portion of the conference may be accessed via the telephone or by using your computer's speakers. Please refer to the instructions emailed to registrants for additional information. If you have any questions, please contact Customer Service at 1-800-926-7926 ext. 1. WEDNESDAY, MAY 16, 2018 Presenting a live 90-minute webinar with interactive Q&A Jonathan M. Gelchinsky, Partner, Pierce Atwood, Portland, Maine Rachel M. Hofstatter, Of Counsel, Steptoe & Johnson, Washington, D.C. Robert D. Litowitz, Partner, Kelly IP, Washington, D.C.
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– Different requirements and tests for what’s eligible, what’s
valid, and what’s infringed
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What rights are granted?
• The right to exclude others from making,
using, selling, offering for sale, or importing
articles to which the patented design is
applied. 35 U.S.C. §271.
12
Term of protection
• In general, 15 years after the date of issuance
of the patent.
13
Requirements for Patentability
• Novel -- does not already exist (not in “prior art”)
• Nonobvious -- to a designer of ordinary skill who designs
articles of the type involved (not ordinary consumer)
• Ornamental –cannot be entirely functional or dictated by the
article’s purpose, e.g., design for “key,” dictated by need to fit
lock, devoid of any decorative or aesthetic feature
– If a variety of designs could achieve the same function, the design is
ornamental.
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Requirements for Trade Dress
• Use in commerce
• Secondary meaning
• Non-functional
– essential to the use or purpose of the article or
[that] affects the cost or quality of the article,'
that is, if exclusive use of the feature would put
competitors at a significant non-reputation-related
disadvantage
• Qualitex v. Jacobson Prods., 514 US 159 (1995)
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Apple iPhone
• Trade dress--functional • Design patent—not
functional
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One Year Statutory Bar
17
Design Patent Applications
• Specification--Brief Description of the Figures.
• Disclaimer of unclaimed subject matter
– Broken lines used to define boundary/environment
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Drawings Reign Supreme
• Drawings = the Design Claim.
• Front, Rear, and Top, perspective(s)
• “Clear and complete . . . Nothing left to
conjecture” MPEP 1503.02
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Drawings Define the
Scope of Patent
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Why Get U.S. Design Patents?
• Inexpensive: $2,000-4,000, with no post-grant fees
• Quick: Can be obtained in as quickly as 3-6 months
with advance planning and expedited examination (1-
2 years standard)
• No “use in commerce” requirement
• No requirement for secondary meaning
• Functionality rarely a problem (compare trade dress)
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Examples of Design Patents
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More examples
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Born with a silver spoon? Gorham v. White, 81 U.S. 14 Wall. 511 511 (1871)
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Gorham’s Ordinary Observer Test for
Infringement
• 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
and sufficient to induce him
to purchase one supposing
it to be the other -- the one
first patented is infringed by
the other.
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The Modern Test For Infringement
of a Design Patent
• The Gorham “ordinary observer” test +
– Whether an ordinary observer, familiar with
the prior art, would be deceived into thinking
that the accused design was the same as the
patented design.
• Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665 (Fed. Cir.
2008) (modifying Gorham v. White, 81 U.S. 511 (1871)).
– Jettisoned “Point of Novelty” test
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Infringement Example
• Crocs, Inc. v. Int’l Trade Comm’n (Fed. Cir. 2010)
27
Crocs, Inc. v. Int’l Trade Comm’n (Fed. Cir. 2010)
– “[M]inor differences between a patented design and an accused article’s design cannot, and shall not, prevent a finding of infringement.” Instead, ordinary observer must compare “overall impression or effects” of the designs.
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Infringement Examples
• Microsoft Corporation v. Corel Corporation, et al.,
2018 WL 2183268 (N.D. Cal. 2018) (design
patents on graphical user interfaces had been
infringed)
• Apple Inc. v. Samsung Elecs. Co., 2018 WL 1586276
(N.D. Cal. 2018) (Samsung was held to have
infringed Apple’s design patent, new trial taking
place to determine damages)
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Infringement Examples
• Hafco Foundry & Mach. Co., Inc. v. GMS Mine Repair
& Maint., Inc., 2018 WL 1786588 (S.D.W. Va. 2018)
(design patent holder for Rock Dust Blower won
permanent injunction)
• Auto. Body Parts Ass'n v. Ford Glob. Techs., LLC, 293 F.
Supp. 3d 690, 707 (E.D. Mich. 2018) (ruling in
favor of design patent holder for car parts) – ON
APPEAL
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Infringement Examples
• SATA GmbH & Co. KG v. NingBo Genin Indus. Co.,
2017 WL 6003055 (D. Nev. 2017) (injunction
granted in favor of design patent holder for paint
spray gun)
• Govino, LLC v. WhitePoles LLC, 2017 WL 6442187
(N.D. Cal. 2017), report and recommendation
adopted, 2017 WL 6442188 (N.D. Cal. 2017)
(default judgment granted for trade dress and
design patent holders for wine glasses)
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Infringement Examples
• BMW of N. Am., LLC v. Mazz Auto Grp., Inc., 2017
WL 4736688 (C.D. Cal. 2017) (permanent
injunction granted in favor of design patent and
trademark holder BMW)
• Boostnatics, LLC. v. I Max Trading, Inc., 2017 WL
5592891 (C.D. Cal. 2017) (court issued judgment
stating that defendant had infringed plaintiff ’s
design patent for keychain)
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Infringement Examples
• Capbran Holdings, LLC v. Firemall LLC, 2017 WL
4769434 (C.D. Cal. 2017) (summary judgment
granted in regards to design patent holder’s claim
of infringement on blender)
• Origami Owl LLC v. Mayo, 2017 WL 413075 (D.
Ariz. 2017) (summary judgment and permanent
injunction granted for design patent and
trademark holder for lockets)
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Infringement Examples
• Oakley, Inc. v. Moda Collection, LLC, 2016 WL
7495837 (C.D. Cal. 2016) (permanent injunction
granted in favor of design patent holder for
glasses)
• Columbia Sportswear N. Am., Inc. v. Seirus Innovative
Accessories, 202 F. Supp. 3d 1186 (D. Or. 2016)
(court held that defendant infringed plaintiff ’s
design patent on heat reflection material)
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Infringement Examples
• Gillette Co. v. Save & Disc. LLC, 2016 WL 3745764
(S.D. Ohio 2016) (injunction and damages
awarded in favor of design patent holder for
razors)
• Gryphon Mobile Elecs., LLC v. Brookstone, Inc., 2016
WL 7637987 (C.D. Cal. 2016) (injunction and
damages awarded in favor of design patent holder
for a mobile charging device)
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Infringement Examples
• Kryptek Outdoor Grp., LLC v. Salt Armour, Inc., 2016
WL 7757267 (E.D. Tex. 2016) (plaintiff received
damages for defendant’s infringement of its design
patent for sheet material with a camouflage
pattern)
• D.light Design, Inc. v. Boxin Solar Co., 2015 WL
7731781 (N.D. Cal. 2015) (permanent injunctions
and damages awarded to holder of design patents
in solar powered lights)
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Infringement Examples
• Orbit Irr. Prod. v. Sunhills Int'l, 2015 WL 1393232 (D.
Utah 2015) (court granted permanent injunction
for holder of design patents on hose nozzles)
• Rubbermaid Commercial Prod., LLC v. Tr. Commercial
Prod., 2014 WL 4987881 (D. Nev. 2014)
(permanent injunction granted in favor of design
patent holder on carts)
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Infringement Examples
• Deckers Outdoor Corp. v. Ozwear Connection Pty Ltd.,
2014 WL 4679001 (C.D. Cal. 2014) (court
granted permanent injunction and damages in
favor of design patent holder for boot tops); see
also Deckers Outdoor Corp. v. TKM Forest Hills, LLC,
2014 WL 4536715 (E.D.N.Y. Sept. 11, 2014);
Deckers Outdoor Corp. v. Superstar Int'l, Inc., 2014
WL 12588480 (C.D. Cal. 2014)
• Conair Corp. v. K & A Beauty, LLC, 2014 WL
4385635 (M.D. Fla. 2014) (permanent injunction
granted in favor of design patent holder for hair
styling apparatus)
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Impact of Prior Art on Infringement Issue
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Fed. Circuit’s Test for Design Patent
Obviousness
• whether the claimed design would have been
obvious to a designer of ordinary skill who
designs articles of the type involved
– Primary reference—”basically the same” design
characteristics
– Secondary references, so related to the primary
reference that skilled designers would be
motivated to combine them to create same
overall visual appearance as the claimed design
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Obviousness illustrated by K9 Sports JerseysMRC Innovations, Inc. v. Hunter Manufacturing, 747 F.3d 1326 (Fed. Cir. 2014),
• Eagles Jersey: Primary reference—
basically the same overall look as
patented design;
• V2 Jersey: related enough to
primary to be secondary
reference
• the “striking similarity [between
all three] would have motivated a
skilled designer to combine
features from one with features
of another.”
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Have You Heard About
Apple v. Samsung???
V.
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Apple v. Samsung Design Patent Battle
• In April 2011, Apple sued Samsung alleging that twenty-eight Samsung products
infringed the patents below:
– Design Patent No. D618,677 (the “D’677” patent)
– Design Patent No. D593,087(the “D’087” patent)
– Design Patent No. D604,305 (the “D’305” patent)
• Samsung countersued, alleging that Apple’s iPhone and iPad products infringed
• $1,049 billion in damages/reduced to app. $600m/new trial ordered on utility and design patent damages
• 2013 trial--$290m award for design and utility patents
• 2015 Federal Circuit—upheld verdict on design/utility patents. Vacated jury verdict as to trade dress claims—found trade dress “functional.”
• 2015—partial final judgment entered for $548m
• 2016—SCOTUS grants certiorari: “Where design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?”
artificial sweetener packaging not confusingly similar with Splenda
packaging).
▪ Factor-based test, varies by circuit. Example of factor list (6th Cir.):
– Strength of the plaintiff’s mark
– Relatedness of the goods or services
– Similarity of the marks
– Evidence of actual confusion
– Marketing channels used
– Likely degree of purchaser care
– Defendant’s intent in selecting its mark
– Likelihood of expansion of the product lines
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Infringement Found - Example
▪ Maker’s Mark:
– Wax-like coating covering the cap of the bottle and trickling down the neck of
the bottle in a freeform irregular pattern. (Conceded in case enforced only in
red color.) Defendant’s Jose Cuervo tequila bottle had a red dripping wax seal.
– Likelihood of Confusion Analysis
• Conceptually and commercially strong trade dress
• Facially similar seals, although other marks on the bottles differed
• Goods “somewhat” related
• Some similar marketing channels and some different
• Careful purchasers (expensive tequila)
• No bad intent
• No actual confusion (neutral factor),
• Likelihood of expanding product lines neutral factor
– “The balance of the factors compels a finding of infringement. Excluding the neutral factors, the
majority of the factors—strength, relatedness of the goods, similarity, and marketing channels—
favor Maker's Mark. The district court found that Maker's Mark's trademark is “extremely strong,”
and we have adopted that finding. Further, we have said that the “most important Frisch factors”
are similarity and strength of the mark; both of these factors favor Maker’s Mark.”
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Remedies for Infringement
▪ Injunction (preliminary and/or permanent)
– Can enjoin the use of the offending trade dress, require corrective advertising,
destruction of inventory, etc.
▪ Defendant’s profits
▪ Damages sustained by the plaintiff
▪ Costs of the action
▪ Attorneys’ fees in exceptional cases
▪ Treble damages available for willful infringement
▪ Statutory damages for counterfeits
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Trade Dress Infringement Can Give Big Payouts
▪ Mixed Chicks LLC v. Sally Beauty Supply, et al., SACV11-00452 AG
(FMOx) (C.D. Ca. 2012).
– MIXED CHICKS hair products sold in translucent bottles and pumps with
orange lettering and different colors for different products
– MIXED SILK hair products sold in translucent bottles of the same shape, with
the same orange lettering and the same color products.
▪ Jury verdict:
– $839,535 actual damages
– $7.275 million punitive damages
Photo from case study, http://www.haynesboone.com/files/Uploads/Documents/
Newsletters/IP-Case-Study-Mixed-Chicks.pdf
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Final Thoughts – Benefits to Trade Dress
▪ Indefinite in duration – as long as the trade dress continues to be used
▪ Relatively inexpensive to apply, but costs increase if there is a need to
show acquired distinctiveness
▪ Benefits to registration
– Presumptions and shifting burdens of proof (Principal Register)
• Presumption of validity (incontestable after 5 years)
• Presumption of non-functionality
– Constructive notice to third parties of the trade dress
– Federal court jurisdiction without needing to prove diversity of citizenship or
amount in controversy
– Damages available
– Ability to use ® registration symbol, providing further notice to potential
infringers that you claim trade dress rights
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Copyright Protection for Product Designs
Jonathan M. Gelchinsky
Copyright Protection
• Copyright protects original works of authorship fixed in any tangible medium of expression, including literary works, musical works, and “pictorial, graphic, and sculptural works” (§ 102)
• “Pictorial, graphic, and sculptural works” include two-dimensional and three-dimensional works of fine, graphic, and applied art, photographs, prints and art reproductions, maps, globes, charts, diagrams, models, and technical drawings, including architectural plans. (§ 101)
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Proving Copyright Infringement
• Ownership of copyright, and
• Copying
• Direct evidence, or
• Access to the work + substantial similarity
– One definition of “substantial similarity”: “Whether an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Baby Buddies Inc. v. Toys “R” Us Inc., 611 F.3d 1308, 1315 (11th Cir. 2010).
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Copyright Act - 17 U.S.C. § 101
• A “useful article” is an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.
• Copyright law protects a “useful article” 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.
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Separability
• Conceptual: can artistic material be conceptually separated from utilitarian aspects of the design?
• Physical: can artistic material be physically separated from utilitarian aspects of the design, and leave a still-functional design behind?
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Separability
• Conceptual: can artistic material be conceptually separated from utilitarian aspects of the design?
• Physical: can artistic material be physically separated from utilitarian aspects of the design, and leave a still-functional design behind?
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Conceptual Separability Tests
• Primary v. subsidiary: The primary artistic aspect of the belt buckle vs. the buckle’s subsidiary utilitarian function. Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989, 993 (2d Cir. 1980).
• Marketability: Would the article still be marketable to some significant segment of the community simply because of its aesthetic qualities? 1 Nimmer on Copyright § 2.08[B][3], at 2-101 (2014).
• Evokes separate concept: The article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. Carol Barnhart Inc. v. Economy Cover Corp. 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J., dissenting).
• Design-process approach: Whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences. Brandir International, Inc. v. Cascade Pacific Lumber Co. 834 F.2d 1142, 1145 (2d Cir. 1987).
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Conceptual Separability Tests
• Primary v. subsidiary: The primary artistic aspect of the belt buckle vs. the buckle’s subsidiary utilitarian function. Kieselstein-Cord v. Accessories by Pearl, Inc. 632 F.2d 989, 993 (2d Cir. 1980).
• Marketability: Would the article still be marketable to some significant segment of the community simply because of its aesthetic qualities? 1 Nimmer on Copyright § 2.08[B][3], at 2-101 (2014).
• Evokes separate concept: The article stimulates in the mind of the beholder a concept that is separate from the concept evoked by its utilitarian function. Carol Barnhart Inc. v. Economy Cover Corp. 773 F.2d 411, 422 (2d Cir. 1985) (Newman, J., dissenting).
• Design-process approach: Whether the design elements can be identified as reflecting the designer’s artistic judgment exercised independently of functional influences. Brandir International, Inc. v. Cascade Pacific Lumber Co. 834 F.2d 1142, 1145 (2d Cir. 1987).
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Example 1 – Statuette Lamp Base
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Mazer v. Stein, 347 U.S. 201 (1954)
• Dancing figure statuettes used as lamp base
• “It is clear Congress intended the scope of the copyright statute to include more than the traditional fine arts.”
• “We find nothing in the copyright statute to support the argument that the intended use or use in industry of an article eligible for copyright bars or invalidates its registration.”
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Example 2 – Jeweled Belt Buckles
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Kieselstein-Cord v. Accessories by Pearl, Inc., 632 F.2d 989 (2d Cir. 1980)
• The “primary vs. subsidiary” test
• “The primary ornamental aspect of the Vaquero and Winchester buckles is conceptually separable from their subsidiary utilitarian function.”
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Example 3 – Mannequin’s Face
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Pivot Point Int’l, Inc. v. Charlene Prods., Inc.,372 F.3d 913 (7th Cir. 2004)
• Mannequin face (“Mara”)
• “Thus, because Mara was the product of a creative process unfettered by functional concerns, its sculptural features ‘can be identified separately from, and are capable of existing independently of,’ its utilitarian aspects.”
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Example 4 – Outdoor Furniture
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Design Furnishings, Inc. v. Zen Path LLC, 2010 WL 5418893 (E.D. Cal. Dec. 23, 2010)
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• “The industrial design of the furniture clearly may not be copyrighted. Defendant has not sufficiently identified any aspect of the furniture that physically or conceptually could stand alone as a piece of art traditionally conceived.”
• “Defendant has never been able to point to what can be copyrighted.”
Example 5 – Pacifier Holder
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• Ribbon tether, clip and snap components = utilitarian, not protectable by copyright
• Plastic teddy bear and ribbon bow = physically separable, eligible for protection
• Ribbon bow = too generic/unoriginal, not protected by copyright
• Placement of bear/ribbon at end of tether = also driven by function, not protectable
• Court compared plastic teddy bears, held no similarities apart from general idea of a bear (ears, eyes, nose, mouth, arms legs)
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Baby Buddies Inc. v. Toys “R” Us Inc., 611 F.3d 1308 (11th Cir. 2010)
Baby Buddies
Toys “R” Us
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Example 6 – Cheerleader Uniforms
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
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• Circuit courts, Copyright Office, and academics have proposed at least 10 different tests to analyze separability
• Cert granted to clarify test to determine when a feature of a useful article is protectable under §101 of the Copyright Act
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
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• Test: We hold that an artistic feature of the design of a useful article is eligible for copyright protection if the feature:
1. can be perceived as a two- or three-dimensional work of art separate from the useful article, and
2. would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
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• First prong (separate identification) - satisfied:
- Surface decorations on cheerleading uniforms are
features with PGS qualities
• Second prong (independent existence) -satisfied:
- If arrangement of colors, shapes, stripes and
chevrons were separated from uniform and applied in
other medium, e.g., painter’s canvas, would qualify as
2D works of art, and wouldn’t replicate uniform itself
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017)
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• Separability question focuses on the extracted feature, not aspects of useful article that remain after extraction
• Physical/conceptual separability doctrine is abandoned
• No assessments based on designer’s artistic judgment exercised independently of function (Brandir)
• No determination based on marketability
• Design patent and copyright are not mutually exclusive
Example 7 – Hookahs
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Inhale, Inc. v. Starbuzz Tobacco, Inc., 2017 WL 4163990 (C.D. Cal. May 8, 2017)
• Pre-SA, C.D. Cal. and 9th Cir. held that utilitarian and artistic features of hookahs not physically or conceptually separable (2012-2014); Inhale moved in 2017 for reconsideration in view of SA
• Denied:
• Inhale failed to point out sculptural feature of hookah or a set of features that may serve as the predicate for application of the SA test
• Combining two or three of these common geometric shapes together does little to improve the situation—the components of the water container at issue are simply not works of art in even the broadest, most liberal sense
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Example 8 – Teardrop String Lights
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Jetmax Ltd. v. Big Lots, Inc., 2017 WL 3726756 (S.D.N.Y. Aug. 28, 2017)
Application of SA test:
1. Separate identification – Satisfied: light set undoubtedly has 3-dimensional decorative covers that have sculptural qualities
2. Independent existence – Satisfied: The decorative covers are sculptural works capable of existing apart from the utilitarian aspect of the light set, i.e. the light bulbs and other components that cause them to light a room. The primary purpose of the cover is artistic; once the covers are removed, remainder is a functioning but unadorned light string.
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Comparison of IP LawsType Term Benefits Drawbacks
Design Patent 15 years No need to prove secondary meaning
Exclusivity can provide time to build up secondary meaning for trade dress protection
Provides evidence of non-functionality, helping with eventual trade dress protection
Must be novel and non-obvious
Non-functional
Registration required
Limited duration
Trade Dress As long as use is continued
No minimal level of creativity or originality
Registration helpful, but not required
Must show secondary meaning
Non-functional
Challenges defining the trade dress
Copyright Life of author + 70, or 95 years from publication
Level of creativity is low
No secondary meaning required
Registration relatively simple, only required if pursuing federal claim
Must be original
Artistic features must be separable from utilitarian aspects
Independent creation defense
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