Functional signs and decanters of wine: how trade dress protection unconstitutionally extends expired design patents.

• Author: Jackson, Tyler

INTRODUCTION I. THE OVERLAP BETWEEN DESIGN PATENT AND TRADE DRESS A. Design Patent Protection B. Trade Dress Protection II. THE RIGHT TO COPY SAGA A. The Supreme Court Creates A New Hope For The Right To COPY B. The CCPA Strikes Back At The Right To Copy C. The return of the right to copy? III. TRAFFIX DID NOT DO ENOUGH TO SAVE RIGHT TO COPY, BUT THERE IS HOPE IV. TRADE DRESS UNCONSTITUTIONALLY EXTENDS DESIGN PATENTS CONCLUSION INTRODUCTION

The ability to protect a design with trade dress that either is also protected by a design patent or was previously protected by a now expired design patent unconstitutionally extends the protection of new, original, and ornamental designs. Even further, the ability to receive indefinite trade dress protection for an unpatented, but patentable, design unconstitutionally allows indefinite protection of patentable subject matter. The right to copy an invention claimed by an expired utility or design patent stems from the language and intent of the Intellectual Property ("IP") Clause, and there is substantial Supreme Court and other precedent that supports the right to copy doctrine. For the past forty years, however, the right to copy doctrine has all but disappeared from the supreme Court's language. In fact, the Federal Circuit has explicitly abandoned the right to copy doctrine. (1) Instead, in the TrafFix decision, the Supreme Court has resorted to the functionality doctrine to prevent the term extension of a utility patent through trade dress protection. (2) The lower courts, before and after TrafFix, have made the same determination that the functionality doctrine prevents any conflict between trade dress and patent protection. (3)

The functionality doctrine, however, does not address the conflict between design patent and trade dress protection. In fact, the functionality doctrine has inflated the problem since TrafFix. TrafFix stands for the proposition that a utility patent is presumptive evidence of functionality for a trade dress analysis. (4) Courts have since interpreted this to mean the converse for a design patent; namely, that a design patent is presumptive, but not dispositive, evidence of non-functionality for a trade dress analysis. (5) This is because a design patent would also be invalid if the design was functional and not ornamental. (6) Therefore, it is more likely that a design will receive trade dress protection if that same design is or has been the subject of a design patent.

This Comment will argue that the ability to receive trade dress protection on a design that has been or could be the subject of a design patent is unconstitutional. The first section of this Comment will discuss the overlap between design patent and trade dress protection and how it leads to products receiving protection in both areas. The second section will discuss the right to copy doctrine, its root in the Constitution, and its development through Supreme Court and Federal Circuit precedent. The third section will discuss the TrafFix decision and the role it has played in preventing the extension of utility patent terms, but bolstered the extension of design patent terms, through trade dress protection. The fourth section will argue that this unconstitutionally allows for indefinite protection of designs covered by expired or unexpired design patents and products that are unpatented but patentable under design patents. Finally, this Comment will argue that the only solution is to not allow trade dress protection for designs that are patentable as design patents. Some argue that merely forcing a choice between trade dress and design patent protection is sufficient; (7) however, if the subject matter of design patents is properly within the scope of patent protection, then allowing such designs to bypass the constitutional limitations of patent protection by calling them trade dress is still an unconstitutional term for a monopoly on a design.

1. THE OVERLAP BETWEEN DESIGN PATENT AND TRADE DRESS

   Design patent and trade dress protections have significant overlap. While not identical, the subject matter and tests for validity and infringement are very similar. Product configurations often qualify for both or either types of protection, and claims for both are often asserted in the same litigation. However, the overlap is such that the subject matter of expired design patents can be indefinitely protected under trade dress. This Comment will argue that this unconstitutionally extends the protection for new, original, and ornamental designs beyond a limited time and unconstitutional inhibits the right to copy.

   1. Design Patent Protection

   Design patents protect the "new, original and ornamental design for an article of manufacture." (8) An ornamental design can be surface ornamentation on an article of manufacture, the configuration of an article of manufacture, or a combination of both. (9) An article of manufacture, unlike the subject of copyright protection, must necessarily serve a utilitarian purpose. (10) Both design and utility patents may be obtained on an article "if invention resides both in its utility and ornamental appearance." (11) However, like trade dress, articles of manufacture that are functional cannot receive design patent protection.

   An article of manufacture is functional, according to design patent parlance, if it is dictated by the use or purpose of the article.12 To determine whether a design is dictated by its use, the Court must ask whether the claimed design is "the only possible form of the article that could perform its function."13 If "there are several ways to achieve the function of an article of manufacture, the design of the article is more likely to serve a primarily ornamental purpose."14 Put another way, "if other designs could produce the same or similar functional capabilities, the design of the article in question is likely ornamental, not functional." (15) Although certain features of an article of manufacture can be functional,

   a distinction exists between the functionality of an article or features thereof and the functionality of the particular design of such article or features thereof that perform a function. Were that not true, it would not be possible to obtain a design patent on a utilitarian article of manufacture, ... or to obtain both design and utility patents on the same article[.] (16) The Federal Circuit has similarly stated "that the design of a particular article is related to the article's use may not defeat patentability." (17) The ultimate question is "whether functional considerations demand only this particular design or whether other designs could be used." (18)

   The court in Richardson I went on to list the following additional considerations for analyzing whether a design is primarily ornamental:

   (1) whether the protected design represents the best design;

   (2) whether alternative designs would adversely affect the utility of the specified article;

   (3) whether there are any concomitant utility patents;

   (4) whether the advertising touts particular features of the design as having specific utility; and

   (5) whether there are any elements in the design or an overall appearance clearly not dictated by function. (19)

   The test for infringement of a design patent is the ordinary observer test. The Supreme Court declared the test as follows:

   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, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other. (20) B. Trade Dress Protection

   Trade dress protects "the total image and overall appearance of a product or business as reflected in such features as size, shape, color or color combinations, design of a label, texture, graphics or sales techniques." (21) Generally, trade dress protection includes the packaging or design of a product. (22) To qualify for protection, the design of the product must be distinctive. (23) The distinctiveness of a design for a product (trade dress) can be established "only upon a showing of secondary meaning." (24)

   The doctrine of secondary meaning for trade dress asks whether the design of a product "has come through use to be uniquely associated with a specific source." (25) The Supreme Court stated that "[t]o establish secondary meaning, a manufacturer must show that, in the minds of the public, the primary significance of a product feature or term is to identify the source of the product rather than the product itself." (26) Secondary meaning has no counter-part in design patent law.

   Like design patents, the design of a product is entitled to trade dress protection only if it is nonfunctional. (27) Functionality in trade dress parlance, like in design patent parlance, has a specific meaning that does not necessarily comport with the ordinary, every-day meaning of the term. Similar to design patent functionality, a design is not functional under trade dress law merely because it serves a function. (28) Rather, unlike design patent law, the focus of trade dress functionality is competition, and a design is functional if "free competition would be unduly hindered by according the design trademark protection." (29) Put another way, a design is functional if "the feature is one that competitors would find necessary to incorporate into their product in order to be able to compete effectively." (30) According to the Supreme Court, the relevant inquiry is whether the design "is essential to the use or purpose of the article or if it affects the cost or quality of the article." (31) The Supreme Court expanded upon this meaning by observing that a functional feature is one the exclusive use of which would be competitors at a significant non-reputation-related disadvantage. (32) While the functionality doctrines in trade dress and design patent law are...