CHAPTER 8 - § 8.01

• Jurisdiction: United States

§ 8.01 HOW APPLE PROTECTS INTELLECTUAL PROPERTY

[1]—Overall Strategy

Apple Inc.'s strategy for protecting its intellectual property has been described as "carefully thought-out and unique."¹ One commentator states, "Apple executes an overlapping and layering strategy of intellectual property integration that spans utility patents, design patents, and trademarks."² He summarizes Apple's strategy as follows:

[O]btaining a unique name and iconic logo for the device, obtaining design patents for the unique aesthetically pleasing elements, claiming non-aesthetic elements with utility patents, securing many design patents on the basic design concept, and investing in a marketing campaign that highlights the shape so customers associate the shape with the firm and then applying for the shape trademark.³

Such a strategy requires "collaboration from various functional areas within the firm, for example, research and development, design, manufacturing, legal and marketing."⁴ Apple employed this strategy "to secure trade dress differentiation for its iPod media player" and is employing it toward its iPhone and iPad devices.⁵

[2]—Apple's Trade Dress

Apple has filed for and secured various trade dress registrations with the U.S. Patent and Trademark Office (USPTO). In fact, Apple has sought and obtained trade dress protection for virtually every iteration of the iPod (see below).

Apple has also filed trade dress applications on the look of its retail stores, on the iPhone, and on the look of its proprietary connectors.

In addition to these applications and registrations, Apple claims trade dress protection in the overall look and feel of their products and packaging. Recently, Apple utilized some of those trade dress rights in filing a Complaint against Samsung Electronics Co. Ltd. over the design of Samsung's Galaxy Series phones and tablets. Below are examples of the trade dress as expressed by Apple in the Complaint: the iPhone 4,⁶ the iPhone packaging,⁷ the iPod Touch,⁸ the iPad,⁹ and the iPad packaging.¹⁰

Chances are that most readers can identify the source of these products merely by looking at the above images. This is no accident—Apple works very hard to achieve a strong association between its products and the company. This association in the minds of customers is a critical element of trade dress protection. The two major components of Apple's "cross-disciplinary approach" to achieving this association are discussed more fully below.¹¹

[3]—Marketing/Advertising

Apple's marketing and advertising campaigns are as essential to the protection of its intellectual property as its patents and trade dress registrations are. Indeed, Apple uses this component of its "cross-disciplinary approach" to set the foundation on which many of its intellectual property rights are based:¹² "Marketing and advertising are ... critical aspects of [Apple's] strategy because the advertising campaigns specifically highlight the unique product shape and build secondary meaning in the minds of consumers."¹³ Apple then parlays this created "secondary meaning and aesthetic appeal" into "the legal basis for securing a product shape trademark."¹⁴

Recall any recent Apple commercial. Most likely, that commercial was extremely sparse: a white or black background; the device (iPod, iPhone, or iPad) prominently displayed in the center of the screen; sometimes hands holding the device; a catchy tune and/or a simple voiceover; and, always, the Apple logo and product name at the end. Below are a few screenshots from recent Apple commercials for the iPod Touch,¹⁵ the iPhone 4,¹⁶ and the iPad 2.¹⁷

Undeniably, Apple's commercials have a certain style and are often readily identifiable. The device is always the star of the commercial.¹⁸ The use of human hands educates viewers as to the shape and size of the product. The commercial highlights the device's various capabilities. And the commercial always ends with the Apple logo right beside the product name. Whenever a voiceover is used, it also highlights the uniqueness of Apple's product. Below is the voiceover text from the iPhone 4 commercial illustrated above:

If you don't have an iPhone, you don't have iBooks. So you don't have your favorite books in your pocket. And you don't have the iBooks store. An entire bookstore in your pocket. So whether you're looking for a certain author or a New York Times best seller, a good book is just a tap away. Yep, if you don't have an iPhone, well, you don't have an iPhone.¹⁹

Apple runs essentially the same commercial for other features of the iPhone in addition to "iBooks," such as "the App Store," "an iPod in your phone," "Game Center," or "the retina display."²⁰ Apple's website ads²¹ employ similar tactics (as shown below).

Note the clean presentation and predominance of the device.²² This particular advertisement incorporates two other Apple products—"iPod and iTunes"—with this ever important distinction: "Only iPhone has an iPod and iTunes built in."²³

Apple's marketing and advertising strategies for its iPod, iPhone, and iPad devices are cleverly orchestrated to highlight the "look and feel" of device as well as its unique capabilities. This strategy helped earn Apple a product configuration trademark for the iPod on January 8, 2008. One commentator summarizes Apple's marketing for the iPod:

The marketing department developed an advertising campaign that specifically avoided touting the iPod's functionality. As mentioned in the trademark application, the premeditated advertising strategy was designed to minimize ad information content and instead prominently display the iPod shape to build secondary meaning. This advertising strategy generated secondary meaning, as attested to by several affidavits Apple submitted to the USPTO trademark examiner.²⁴

The iPod product configuration trademark registration is for a "design of a portable and handheld digital electronic media device comprised of a rectangular casing displaying circular and rectangular shapes therein arranged in an aesthetically pleasing manner."²⁵ Apple has subsequently acquired three additional product configuration trademark registrations for the iPhone,²⁶ which Apple has asserted in the Samsung litigation.²⁷

[4]—Intellectual Property Registration

Apple uses its marketing and advertising strategy to set the foundation for intellectual property protection. In doing so, Apple utilizes the full spectrum of intellectual property, which includes utility patents, design patents, trade dress registrations, trademarks, and copyrights.²⁸ One commentator suggests that "Apple's strategy relies on knowledge of intellectual property law to guide investments in design that are meant to result in aesthetic design patent protection."²⁹ Below is a sampling of Apple's registered intellectual property.

[a]—Utility Patents³⁰

The United States Patents listed below relate to the technology that powers Apple's iPod, iPhone, and iPad devices:

Patent Number	Title
7,812,828 ("the '828 patent")	Ellipse Fitting for Multi-Touch Surfaces
7,669,134 ("the "'134 patent")	Method and Apparatus for Displaying Information During an Instant Messaging Session
6,493,002 ("the "'002 patent")	Method and Apparatus for Displaying and Accessing Control and Status Information in a Computer System
7,469,381 ("the "'381 patent")	List Scrolling and Document Translation, Scaling, and Rotation on a Touch-Screen Display
7,844,915 ("the "'915 patent")	Application Programming Interfaces for Scrolling Operations
7,853,891 ("the "'891 patent")	Method and Apparatus for Displaying a Window for a User Interface
7,863,533 ("the "'533 patent")	Cantilevered Push Button Having Multiple Contacts and Fulcrums

[b]—Design Patents³¹

Below are some of Apple's United States Design Patents for the iPhone.

[c]—Trade Dress Registrations

The three United States Registrations below concern "the design and configuration" of the iPhone.³²

Reg. No. 3,470,983	Overall design, including the rectangular shape, rounded corners, silver edges, black face, and display of sixteen colorful icons.
Reg. No. 3,475,327	Configuration of a rectangular handheld mobile digital electronic device with rounded corners.
Reg. No. 3,475,327	Rectangular handheld mobile digital electronic device with a gray rectangular portion in the center, a black band above and below the gray rectangle and on the curved corners, and a silver outer border and side.

[d]—Trademarks

Apple has also sought and obtained trademarks for the icons "used in the interface in the iPhone, iPod touch, and iPad products—icons that are consistently used in the Apple family of mobile products."³³ Some of these registered marks are represented below.³⁴

[5]—Enforcement

Apple does not acquire intellectual property rights just for the sake of having them; the company vigorously enforces and defends those rights through litigation. For example, from 2007 to 2012, Apple filed more than eight hundred (800) cases with the USPTO, in most cases to prevent others from registering intellectual property that would conflict with Apple's interests.³⁵ In addition to the Samsung litigation, Apple has also filed in various U.S. federal courts, and with international courts, to protect its intellectual property assets. With vast resources, Apple can afford to use litigation as a strategy for protecting its intellectual property and for deterring companies with lesser resources from manufacturing products that risk garnering Apple's attention. In fact, the Samsung case is a great example of that dual effect. On one hand, Apple puts a major competitor into litigation over top-selling phones and tablets, and on the other Apple serves notice on all other phone and tablet manufacturers that they will not stand for competitors getting close to their intellectual property rights.

In Samsung, Apple filed a complaint for trade dress...