CHAPTER 8 - § 8.02

• Jurisdiction: United States

§ 8.02 CONSIDERING THE IP TRIFECTA

Very few companies have the resources that Apple employs in protecting its intellectual property. Apple's "carefully thought-out and unique" strategy requires "collaboration from various functional areas within the firm, for example, research and development, design, manufacturing, legal and marketing."⁸³ This high level of collaboration, ingenuity, and expertise is not available to all companies. Moreover, "Apple executes an overlapping and layering strategy of intellectual property integration that spans utility patents, design patents, and trademarks."⁸⁴ Apple's significant investments in patents bolster its intellectual property portfolio and comes with the knowledge and expectation that the company will engage in patent litigation.

However, a company does not necessarily need to file the large number of intellectual property applications filed by Apple, or even contemplate yearly patent litigation, in order to effectively protect its intellectual property interests. When one considers the substantial cost associated with patent litigation, the search for a viable enforcement alternative becomes paramount. One alternative is to seek and enforce intellectual property protection for the particular "look and feel" of a new product, as opposed to its function. For example, the specific shape or configuration of a product may be protected through trade dress. In addition to the iPod, discussed above, some well-known examples of product configuration trade dress include the shape of a Coke bottle, a container of Fantastik cleaner,⁸⁵ and a Weber charcoal grill.⁸⁶ Unique product configurations such as these may be protected not only by trade dress but also by copyrights and design patents (as discussed in Chapter 7). In many cases, this "IP Trifecta"—copyright, design patent, and trade dress registration—provides a powerful enforcement alternative that has the stopping power of patents, without the associated cost of patent litigation.

Before implementing a protection and enforcement strategy like the one described above, it is important to understand the legal setting in which each of the rights in the IP Trifecta resides. The essence of design patent protection is based in a bargain—an inventor discloses his idea to the public in exchange for a period of limited exclusivity (e.g., fourteen years from grant). Alternatively, copyright law protects the original expressions of a particular idea and grants the originator protection for his lifetime and beyond (or, in the case of companies, for around one hundred years). Like patents, copyrights must also be disclosed to the public. However, patent applications can be kept secret for at least eighteen months (and sometimes longer), whereas copyright applications are available for public inspection almost immediately. Finally, trademark and trade dress protection aim to avoid customer confusion—Company A can prevent Company B from selling a product or service that the public would likely believe originates with Company A. One key difference is that trademark law does not protect products merely because they are original. Rather, trademark protection is derived from the manner in which a product or service is sold in commerce.

As discussed in Chapter 5, the Supreme Court decided two landmark cases that helped clarify the scope of trade dress protection for product configurations versus other forms of intellectual property. In Walmart,⁸⁷ the Supreme Court held that product configurations can be protected only through a showing of "secondary meaning," overturning the widely held belief that product configuration trade dress could be "inherently distinctive."⁸⁸ Less than a year later the Supreme Court again addressed the product configuration trade dress issue in TrafFix Devices, where prior utility patent protection and functionality were the key issues.⁸⁹ The Court explained that "a product feature is functional, and cannot serve as a trademark, if it is essential to the use or purpose of the article or if it affects the cost or quality of the article."⁹⁰ The Court went further and held that product features described in a prior utility patent are presumptively functional.⁹¹

What the Supreme Court failed to address in Walmart and TrafFix Devices was the impact of a prior design patent on the scope of product configuration trade dress. The Court also failed to consider the interplay of the two types of protection with copyright law. Accordingly, certain questions are left open. Is obtaining a design patent on a product detrimental to a simultaneous or later claim for product configuration trade dress? Does the answer change if the design patent is expired? Can copyright protection be used to bridge the gap between patents and trade dress? These questions can only be answered through a review of the relevant case law and a comparison of scope of the different types of protection.

The current majority view is that product configuration trade dress and design patent protection can peacefully coexist.⁹² Courts have repeatedly noted that the patent and trademark laws were designed to safeguard different interests and therefore that the protections offered by each are separate and distinct. However, there has been some recent, unsuccessful opposition to this view, stemming from the so-called "right to copy" doctrine (previously discussed in Chapter 7).⁹³

Several district courts have addressed the conflict between utility patents and product configuration trade...