The Role of Design Patents, Copyright and Trade Dress in Protecting the Next Generation of Inventions

• Publication year: 2015
• Author: SARAH SHELDON BROOKS Stradling Yocca Carlson & Rauth

The Role of Design Patents, Copyright and Trade Dress in Protecting the Next Generation of inventions

SARAH SHELDON BROOKS Stradling Yocca Carlson & Rauth

SALIL BALI Stradling Yocca Carlson & Rauth

INTRODUCTION

In 2014, the Supreme Court issued six patent related decisions, more than in any previous year dating at least back to 1952.¹ These decisions included easing the standard in awarding attorney's fees in patent cases,² lowering the standard for invalidating patent claims as indefinite,³ and clarifying that direct infringement by a single party is an underlying requirement for induced infringement.⁴ Most notably, however, was the Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l,⁵ which had and is having a profound effect on patent law. The Court in Alice held that Alice Corp.'s method claims relating to mitigating settlement risk were invalid under 35 U.S.C. § 101 as covering a patent ineligible abstract idea. in the wake of these Supreme Court decisions, patent procurement and enforcement are facing significant changes. in fact, in the six months following the Court's decision in Alice, district courts invalidated nearly 74% of patents, which faced § 101 challenges.⁶ in the same period, of seven § 101 challenges, the Federal Circuit also found six out of seven times in favor of invalidity.⁷ Many of these post-Alice decisions concern utility patents for software and business method inventions. Patent holders with existing software and business method patent portfolios are being forced to take hard looks at those portfolios to evaluate their enforceability and value in a post-Alice world.

In this context, it is important for IP owners to look for alternative means to protect assets. For example, copyright, design patents, and even trade dress, can bolster utility-patent heavy portfolios, even in industries like computer software. Below, we consider the various means of IP protection available, the benefits and weaknesses of each form of protection, whether an IP owner can recover damages for asserting multiple forms of IP protection and some emerging areas for the application of these alternative means of IP protection.

REVIEWING THE SCOPE OF PROTECTION FOR EACH IP RIGHT

Before deciding how to protect intellectual property (IP) assets, it is important to understand the scope and some key differences between design patents, copyrights and trade dress.

Design patents are awarded for any "new, original and ornamental design for an article of manufacture."⁸ Design patents were created to promote progress in decorative arts and therefore cover the appearance of how an article of manufacture looks, including particular shapes or configurations and the surface ornamentations applied to the article. The design patent does not need to be directed to the entire article.⁹ For example, if the article of manufacture is a shoe, the design patent may cover a particular aspect of the shoe, like the sole or the upper part of the shoe. Further, as explained further below, design patents may only cover non-functional aspects of the article.

The language "new, original and ornamental design for an article of manufacture" set forth in 35 U.S.C. § 171 has been interpreted by the case law to include at least three kinds of designs: (a) a design for an ornament, impression, print, or picture applied to or embodied in

[Page 5]

an article of manufacture (surface indicia); (B) a design for the shape or configuration of an article of manufacture; and (C) a combination of the first two categories.¹⁰

Copyrights, on the other hand, are awarded for "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device."¹¹ People traditionally think of copyright as covering works of fine art, literature, film and music. However, copyrights can also protect logos, software, advertising, packaging graphics, catalogs, and operating manuals. Generally the copyrighted aspects of a design should be a conceptually separate feature of the design.¹² In other words, the copyrightable element should be separable from the underlying product, such that even without the copyrightable elements the product would still exist. One example is a dress having a particular copyrighted pattern or design imprinted on its fabric. With or without the fabric patterns, the underlying product—here the dress—still exists. Thus, the pattern in the fabric is likely to be protectable under copyright law because it is "separable from the underlying product."¹³

Meanwhile, the area of trade dress is a subset or offshoot of trademark law. In general, trademark law protects the public from confusion relating to the origin of a particular good or service and protects the trademark owner from unfair competition. Trade dress is a natural expansion of those protections where the look and feel of a product or service has come to indicate the source of origin to the consuming public. Trade dress "involves the total image of a product and may include features such as size, shape, color or color combinations, texture, graphics, or even particular sales techniques."¹⁴ As with design patents, trade dress can only be used to protect non-functional aspects of a product. In the trade dress context, an aspect is considered functional "if it is essential to the use or purpose of the article or if it affects the cost and quality of the article."¹⁵ Another key in establishing a trade dress right is for the claimed dress to serve "a source-identifying role either because it is inherently distinctive or has acquired secondary meaning...."¹⁶

KEY DIFFERENCES IN THESE SIMILAR RIGHTS

While design patents, copyrights and trade dress all protect non-functional aesthetic features of a product, there are several fundamental differences between these forms of protection.

These differences can be seen by looking at the discrete goals for each of these rights. As set forth in the U.S. Constitution, both patent and copyright laws are designed to promote the Progress of Science and useful Arts" by allowing the author/inventor an exclusive property right for a limited period of time.¹⁷ Trademark law, in contrast, is designed to protect consumers from confusion and unfair competi-tion.¹⁸ These goals in turn influence the duration of each type of right. Design patents, once granted, now allow the owner to exclude others from making the design during a fifteen-year term.¹⁹ A copyrighted work is protected from the moment of its creation and lasts through the author's life plus an additional 70 years.²⁰ In contrast to design patents and copyrights, a trade dress right can be held in perpetuity as long as it remains in use and if registered, the registrations are timely renewed.

Trade dress rights, unlike patent or copyright, can also exist under common law and do not need to be registered.²¹ The trade dress rights attach through use in commerce and consumer impression, rather than federal registration.²² Though copyright can also attach at the time the authors fix the work of authorship in a tangible medium, like patent rights a copyright remains unenforceable until at least a federal application for registration is filed.²³

Further, though all three rights do not protect functional features of a product, the applicable tests for functionality under design patent law and trademark law differ. In the design patent context a design is deemed ornamental so long as the overall appearance of the claimed design is not dictated solely by its function or deemed "primarily functional rather than primarily ornamental."²⁴ However, under trademark/trade dress law "a product feature is functional ...if it is essential to the use or purpose of the article or if it...